1. ANG VS.

TEODORO

FACTS:

Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor,
has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and
sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark on
September 29, 1915, and as trade-name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11,
1932, and established a factory for the manufacture of said articles in the year 1937.

PROCEDURAL HISTORY:

Teodoro filed a complaint against Ang. The Court of First Instance of Manila absolved Anna Ang
on the grounds that the two trademarks are dissimilar and are used on different and non-competing
goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that there had been no
fraud in the use of the said trade-mark by the defendant because the goods on which it is used are
essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to cancel the
registration of the trade-mark "Ang Tibay" in favor of petitioner, and perpetually enjoining the latter from
using said trade-mark on goods manufactured and sold by her.

Ang filed this instant petition for certiorari.

JUDGMENT:

The pants and shirts are goods closely similar to shoes and slippers. They belong to the same
class of merchandise as shoes and slippers. They are closely related goods.

The Supreme Court affirmed the judgment of the Court of Appeals and added that although two
non-competing articles may be classified under to different classes by the Patent Office because they are
deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts
to belong to the same class if the simultaneous use on them of identical or closely similar trademarks
would be likely to cause confusion as to the origin, or personal source, of the second users goods. They
would be considered as not falling under the same class only if they are so dissimilar or so
foreign to each other as to make it unlikely that the purchaser would
think that the first user made the second users goods.

2. ETEPHA VS. DIRECTOR OF PATENTS

FACTS:

On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought
registration of trademark "Atussin" x x x used in the treatment of cough". The trademark is used
exclusively in the Philippines since January 21, 1959.1

Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claims that
it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued
on September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be
misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.

PROCEDURAL HISTORY:

Petitioner filed a case of infringement on the premise that Atussin so resembles Pertussin "as to
be likely, when applied to or used in connection with the goods ... of the applicant, to cause confusion or
mistake or to deceive purchasers".

JUDGMENT:

The validity of a cause for infringment is predicated upon colorable imitation. The phrase
colorable imitaion denotes such a close or ingenious imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention
as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

While tussin by itself cannot thus be used exclusively to identify ones goods, it may properly
become the subject of a trademark by combination with another word or phrase.
 The two labels are entirely different in colors, contents, arrangement of words theeon, sizes,
shapes and general appearance. The contrasts in pictorial effects and appeals to the eye is so
pronounced that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar
with the two trademarks.

We cannot escape notice of the fact that the two words do not sound alike when pronounced.

3. KABUSHI KAISHA VS IAC

FACTS:

Petitioner Kabushi Kaisha Isetan is a foreign corporation organized under the laws of Japan. It is
the owner of the trademark "Isetan" and the "Young Leaves Design". The petitioner alleges that it first
used the trademark Isetan on November 5, 1936.

Private respondent, Isetann Department Store, on the other hand, is a domestic corporation
organized and existing under the laws of the Philippines. It claims that it used the word "Isetann" as part
of its corporated name and on its products particularly on shirts in Joymart Department Store sometime in
January 1979.

The private respondent registered "Isetann Department Store, Inc." and Isetann and Flower
Design in the Philippine Patent Office under SR. Reg. No. 4701 and 4714, respectively, as well as with
the Bureau of Domestic Trade under Certificate of Registration No. 32020.

PROCEDURAL HISTORY:

The petitioner also filed with the Securities and Exchange Commission (SEC) a petition to cancel
the mark "ISETAN." The petition was dismissed. Therefore, the Petitioner filed this present Motion for
Reconsideration.

JUDGMENT:

A fundamental principle of Philippine Trademark Law is that actual use in commerce in the
Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.

The records show that the petitioner Kabushi Kaisha has never conducted any business in the
Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no
business goodwill in the Philippines. It is unknown to Filipinos except the very few who may have noticed
it while travelling abroad. It has never paid a single centavo of tax to the Philippine government. Under the
law, it has no right to the remedy it seeks.

4. ARCE SONS & CO.

FACTS:

Selecta Biscuit Company, Inc., hereinafter referred to as respondent, filed with the Philippine
Patent Office a petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery
products. ." Its petition was referred to an examiner for study who found that the trade-mark sought to be
registered resembles the word "SELECTA" used by the Acre and Sons and Company, hereinafter referred
to as petitioner, in its milk and ice cream products so that its use by respondent will cause confusion as to
the origin of their respective goods. The Patent Office ordered the publication of the application for
purposes of opposition.

PROCEDURAL HISTORY:

Acre & Sons Co., filed its opposition thereto contending that the mark "SELECTA" had been
continuously used by petitioner in the manufacture and sale of its products. Also, it opposed on the
ground that the respondent is using the word "SELECTA" as a trade-mark as bakery products in unfair
competition with the products of petitioner thus resulting in confusion in trade.

The Director of Patents rendered decision dismissing petitioner's opposition and stating that the
registration of the trade-mark "SELECTA" in favor of applicant Selecta Biscuits Company, Inc. will not
cause confusion or mistake nor will deceive the purchasers as to the cause damage to petitioner. Hence,
petitioner interposed the present petition for review.

JUDGMENT:

A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular

producer or manufacturer may be distinguished from that of others, and its sole function is to designate
distinctively the origin of the products to which it is attached."

Verily, the word 'SELECTA' has been chosen by petitioner and has been inscribed on all its
products to serve not only as a sign or symbol that may indicate that they are manufactured and sold by it
but as a mark of authenticity that may distinguish them from the products manufactured and sold by other
merchants or businessmen. The Director of Patents, therefore, erred in holding that petitioner made use
of that word merely as a trade-name and not as a trade-mark within the meaning of the law.

In this sense, its used by another may lead to confusion in trade and cause damage to its
business. And this is the situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this
sense, the law gives its protection and guarantees its used to the exclusion of all others.

5. EMERALD GARMENT VS CA

FACTS:

Respondent H.D. Lee Co., Inc., a foreign corporation organized under the laws of Delaware, U.S.A., filed
a Petition for Cancellation of Registration for the trademark "STYLISTIC MR. LEE" in the name of
petitioner Emerald Garment Manufacturing Corporation, a domestic corporation organized and existing
under Philippine laws. Respondent asserts that petitioner's trademark tends to mislead and confuse the
public and thus constitutes an infringement of its own mark, since the dominant feature therein is the word
"LEE."

Petitioner contended that its trademark was entirely and unmistakably different from that of
private respondent and that its certificate of registration was legally and validly granted.

PROCEDURAL HISTORY:

The Director of Patents found private respondent to be the prior registrant of the trademark "LEE"
in the Philippines and that it had been using said mark in the Philippines.

Petitioner appealed to CA. The Court of Appeals promulgated its decision affirming the decision of
the Director of Patents in all respects. Petitioner filed MR but it was likewise rejected. Thus, this petition.

JUDGMENT:

The essential element of infringement is colorable imitation. This term has been defined as "such
a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of
the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, and to cause him to purchase the one supposing it to be the other."

We rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's
"LEE" trademark. Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the
word "LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter
especially in the light of the following variables that must be factored in.

As one would readily observe, private respondent's variation follows a standard format
"LEERIDERS," "LEESURES" and "LEELEENS." It is, therefore, improbable that the public would
immediately and naturally conclude that petitioner's "STYLISTIC MR. LEE" is but another variation under
private respondent's "LEE" mark.

As we have previously intimated the issue of confusing similarity between trademarks is resolved
by considering the distinct characteristics of each case. In the present controversy, taking into account
these unique factors, we conclude that the similarities in the trademarks in question are not sufficient as
to likely cause deception and confusion tantamount to infringement.
6. ESSO STANDARD VS. CA

FACTS:

The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
Philippines. It is engaged in the sale of petroleum products which are identified by the trademark 'Esso'.
Esso is a successor of Standard Vacuum Oil Co, it registered as a business name with the Bureau of
Commerce in 1962. United Cigarette is a domestic corporation engaged in the manufacture and sale of
cigarettes. It acquired the business from La Oriental Tobacco Corp including patent rights, once of which
is the use of 'Esso' on its cigarettes.

PROCEDURAL HISTORY:

The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an
extent that the buying public would be deceived as to the quality and origin of the said products to the
detriment and disadvantage of its own products. The lower court found United Cigarette guilty of
infringement. Upon appeal, the Court of Appeals ruled that there was no infringement in this case.
JUDGMENT:
Infringement is defined by law as the use without the consent of the trademark owner of any
reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename which would
likely cause confusion or mistake or deceive purchasers or others as to the source or origin of such
goods.

The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether trademark
infringement exists depend on whether or not the goods are so related that the public may be or is
actually deceived and misled that they come from the same maker. Under the Related Goods Theory,
goods are related when they belong to the same class or have the same descriptive properties or when
they have same physical attributes. In these case, the goods are absolutely different and are so foreign
from each other it would be unlikely for purchasers to think that they came from the same source.
Moreover, the goods flow from different channels of trade and are evidently different in kind and nature.

7. HICKOK MANUFACTURING VS CA

FACTS:

Petitioner Hickok Manufacturing is a foreign corporation and all its products are manufactured by
Quality House Inc. The latter pays royalty to the petitioner. Hickok registered the trademark 'Hickok'
earlier and used it in the sale of leather wallets, key cases, money folds, belts, mens underwear,
neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale of
Marikina shoes. Both products have different channels of trade.

PROCEDURAL HISTORY:

Petitioner filed a petition to cancel private respondent's registration of the trademark of HICKOK
for its Marikina shoes as against petitioner's earlier registration of the same trademark for its other non-
competing products. Patent Director granted the Petition but such decision was reversed by the CA.

JUDGMENT:

It is established doctrine that "emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their properties or characteristics" and that "the
mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption
and use of the same trademark by others on unrelated articles of a different kind."

An examination of the trademark of petitioner-appellee and that of registrant-appellant convinces

us that there is a difference in the design and the coloring of, as well as in the words on the ribbons, the
two trademarks. In petitioner-appellee's trademark for handkerchiefs, the word 'HICKOK' is in red with
white background in the middle of two branches of laurel in light gold. In contrast, in respondent-
appellant's trademark, the word 'HICKOK' is in white with gold background between the two branches of
laurel in red, with the word 'SHOES' also in red below the word 'HICKOK.
 While the law does not require that the competing trademarks be Identical, the two marks must
be considered in their entirety, as they appear in the respective labels, in relation to the goods to which
they are attached.