Intellectual Property Law AUF School of Law

PRIORITY IN ADOPTION AND USE/ EXCLUSIVE USE

Atty. Eric Recalde From 1946 to 1955 Ng Kian Giab's family merely bought ready made
polo shirts and undershirts to each of which they then sewed the label "Marca Pia"
before resale to the public. In 1955 the father transferred the business to Ng
Kian Kee, who put up a factory the Hongkong T-Shirt Manufacturer and started
producing undershirts bearing the trademark. When he decided to continue his
studies in 1957, he, in turn, transferred the business to respondent. Decision of
the Director of Patents Director of Patents, however, declared that neither of
them "satisfactorily adduced definite and conclusive proof of their asserted dates
of first use of the trademark "Marca Pia"; and relying on the rule that "in inter
plates cases, when neither of the parties have (has) satisfactorily proven the date
of first use alleged in their applications, such date shall be confined to the
filing date of the said application, and granted the application of senior party
applicant Ng Kian Giab. Respondent Director disregarded all the evidence
submitted by both parties and relied exclusively on the filing dates of the
applications in reaching his conclusion as to the dates of first use by the senior
party applicant and the junior party applicant, respectively. Director of Patents
gave due course to the application of Ng Kian Giab for registration of the
trademark "Marca Pia" and representation thereof, and rejected Chung Te's own
application for registration of the same trademark and a similar representation.
Issue/ Answer: Who between Chu Teng and Ng Kian Gab should be allowed to register
the trademark "Marca Pia"? / Chung Te Ratio Decidendi: Where an applicant for
registration of a trademark states under oath the date of his earliest use, and
later on he wishes to carry 1

CHUNG TE vs. NG KIAN GIAB and THE HONORABLE DIRECTOR OF PATENTS G.R. No. L-23791.
November 23, 1966 Facts: Chung Te's contention: March 13, 1957 an application for
the registration of the same trademark "MARCA PIA. and Representation" was filed
by Chung Te (Application No. 5544), although it was subsequently considered
abandoned by reason of his failure to answer the communication of the Principal
Trademark Examiner dated September 25, 1957. Chung Te claims that since January
8, 1951 he had been using the trademark on undershirts (de hilo), T-shirts, and
baby dresses. For a long time petitioner was the purchasing agent for his father-
in-law, who owned the Liong Bee Shirt Factory. Afterwards he decided to go into the
same business for himself. His father-in-law, who theretofore had been using the tr
the factory became a member of the Philippine Chinese Underwear Manufacturers
Association. According to Juanito Vitug, secretary of the association, before a
firm was admitted as member it was required to inform the association of the
trademark it was using to identify its products; and he found that among the files
of the association the sample labels "Marca Pia" submitted by petitioner when he
applied for membership were included. Petitioner also applied for business permit
(LIONG SUN Shirt Factory) It appears from his application that he had commenced
business on February 1, 1952. Ng Kian Giab's contention: Ng Kian Giab stated in
his application that he had been using the trademark on undershirts since December
6, 1955. At the hearing he sought to prove that his family had been using it
since 1946. Jmvdg

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Intellectual Property Law AUF School of Law back his first date of use to an
earlier date he then takes on the greater burden of presenting "clear and
convincing evidence" of adoption and use as of that earlier date. testimonial
evidence presented by Ng Kian Giab and their witnesses falls short of the kind of
proof required of respondent. It is doubtful that respondent's father would pay
Genoveva Santos as high as P0.02 per label (which did not even bear his name) on
polo shirts which he had purchased readymade, and which he could very well have
sold without any label. The documentary evidence show clearly that respondent's use
began only in 1955. petitioner has established prior use and adoption of the
questioned trademark, for which reason he and not respondent Ng Giab is the one
entitled to registration thereof. the decision of the Director of Patents is
reversed. Petitioner is adjudged prior user of the trademark MARCA PIA and
representation thereof, and its registration in his name is ordered Where the
testimonial evidence for both parties has been entirely disregarded, and reliance
is placed solely on the filing dates of the applications as proof of the respective
dates of first use, then the abandoned application filed by the junior party
applicant becomes cogent evidence to show that he first used the trademark as of
the date of its filing SY CHANG vs. GAW LIU G.R. No. L-29123. March 29, 1972 Facts:
a petition was filed by Sy Chang to cancel a certificate of registration No.
10637, of a trademark, LION and TIGER issued by the Philippines Patent Office on
December 12, 1963 in favor of respondent Gaw Liu grounds: he had previously used
such a trademark since 1952 on aniline basic colors or goods similar to those
manufactured or sold by respondent whom Jmvdg Atty. Eric Recalde he accused of
fraudulently appropriating and registering the same with full knowledge that he was
not the owner. The application was filed on February 20 of that year, the use of
such trademark on his product consisting of dyestuffs allegedly dating back to
1956. His firm allegedly is engaged in the manufacture of dyestuff, crayone,
stationery, and school supplies, and in the sale of dyestuff the trademark LION and
TIGER label has been adopted since 1952. The witness identified a LION-TIGER
label being used by Petitioner. It was designed for Venus Commercial in 1952 by Mr.
Gaudencio Eugenio, a free lance artist who confirmed this fact by testifying that
around June, 1952, upon request of Sy Chang, he designed a label for dyestuff, the
LION & TIGER label, for which he was duly compensated. The design was in turn
first printed by Majestic Press owned by the other witness, Antonio T. Cheng, who
affirmed that he knew Venus Commercial because of a printing job in 1952 pertaining
to the 10,000 pieces of LION-TIGER label. Gaw Liu's contention: Gaw Liu himself
testified that he was engaged in chemical manufacturing since the Japanese
occupation, with offices at Magdalena St., Manila. in 1947, he used and adopted
the brand TIGER for his dyestuff and later, he allegedly adopted LION & TIGER, made
some sales, as shown by an invoice dated December 10, 1951 issued to Pue Chong Beng
of Zamboanga. He confirmed having known Venus Commercial in 1951 or 1952 through
the owner he knew only as 'Mr. Cao' who used to offer him discarded materials such
as dyestuff and empty cans. He also admitted knowing witness Sy Chang who worked
for Venus Commercial, but only after 1952, but he had never been inside the firm's
establishment; neither had he received any 2

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Intellectual Property Law AUF School of Law calendar from said firm. According to
him, Venus Commercial sold dyestuff in 1950, or 1951, or 1952, using another brand
he described as a lady carrying on her back two children holding two rotating small
drums. After it stopped selling dyestuff of the 'Lady' brand, they started using
the LION brand in 1952 or 1953. Asked how he advertised his trademark LION-TIGER,
the Respondent said that it was a small business so he did not advertise it either
by newspaper, radio, or handbills, but he sold it cheaper to convince people to use
it both parties admitted that there was an arranged meeting between them to reach
an amicable settlement with regard the trademark Lion & Tiger, but such meeting
never pushed through as Gaw Liu is asking for 80,000 as value for the trademark
which was then registered in his name Atty. Eric Recalde facts as presented though,
the conclusion reached is that the presumption had been rebutted, petitioner having
shown "that at the time the respondent filed his application for registration and
for years prior thereto, he was not the exclusive user of the trademark LION-TIGER.
The burden of going forward is thus shifted to the respondent who must show that
the subject matter of registration is, in fact, distinctive of his goods. the
record is wanting in proof sufficient to show that Respondent-Registrant has
actually and substantially adopted and used the trademark so as to show that his
firm was the source or origin of his dyestuff. it has been admitted by respondent
that he never advertised the trademark, either by newspaper, radio or handbills. He
was not able to show extensive sales, except those made by him to Pua Chong Beng,
which, however, may be considered as negligible and sporadic. No further sales were
made as the record eloquently shows. These matters are necessary especially when
Respondent alleges use on a date earlier than that alleged in his application, in
which case his evidence, testimonial or documentary, must be definite, clear, and
free from doubt or inconsistencies. Under the Rules of Practice in Trademark Cases
(Rule 173), in all inter partes proceedings, the allegation of date of use in the
application for registration of the applicant or of the registrant cannot be used
as evidence in behalf of the party making the same. In case no testimony is taken
as to the date of use, the party will be limited to the filing of the application
as the date of his first use. because the Respondent was not able to prove his date
of first use in commerce of the trademark LION-TIGER he is deemed to have used it
on the filing date of his application which is February 20, 1963 the superior right
of petitioner in view of

Issue: WON Gaw Liu had proven that he has prior use of the trademark Lion and
Tiger as oppose to the claim of Sy Chang Answer: negative. He never presented
proof required by law to invest him with exclusive, continuous adoption and use of
the trademark which should consist in, inter alia, considerable sale since his
adoption thereof combined with promotional work suitable to popularize the
trademark. Ratio Decidendi: Gaw Liu was asked to explain why he claimed to have
used the trademark in 1947 when, according to his application he first used it in
commerce on June 10, 1956. He explained that it was because the Patent Office
required two months use at the time the application was filed Where the
rebuttable character of the validity of registration of the trademark registered in
the name of respondent is put in issue, the evidentiary burden of proving
invalidity rests upon the petitioner. From the Jmvdg

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3
Intellectual Property Law AUF School of Law what the decision called "the chain of
circumstances" favorable to him namely his "use thereof in commerce, and a
systematic preservation of the records to support his claim of continuous use, such
as the making of the design, the printing of the design on labels, the actual use
on the goods, advertising in calendars, and other acts of dominion, such as the
filing of this petition for cancellation. The Certificate of Registration No. 10637
issued to Gaw Liu for the trademark LION & TIGER is "ordered cancelled. Atty. Eric
Recalde 1975, that Kaisha filed a petition for cancellation after a lapse of almost
seven (7) years. CA held that the equitable principles of laches, estoppel and
acquiescence would not apply in this case for it has not been shown that Kaisha
abandoned the use of the trademark CA further held that Pagasa knew of the use of
trademark "YKK" by respondent which are the initials of the company, and
notwithstanding this knowledge it later on sought trade registration of the same
trademark in its favor. Issue/Answer: WON it is correct to say that the equitable
principles of laches, estoppel and acquiescence cannot be applied in the instant
case/ negative (Sec. 9, Trademark Law) WON it is the fact of registration that
vests one's right to a trademark/ negative (there must be prior commercial use)
Ratio Decidendi: The Director of Patents, stressed in his order of cancellation
that the trademarks in question are "confusingly similar". However, the discussion
made by the Senior Trademark Examiner of the Patents Office regarding the
registrability of the mark revealed that "the concurrent registration of subject
mark is not likely to cause purchasers confusion, mistake or deception," since the
"over-all commercial impression of the marks are grossly different and used on
goods not only falling under different classification, but also possessing
different descriptive properties. The products are sold through different trade
channels or cutlets and are noncompeting. The Trademark Law is very clear. It
requires actual commercial use of the mark prior to its registration. There is no
dispute that respondent corporation was the first registrant, yet it failed to
fully substantiate its claim that it used in trade or business in the 4

PAGASA INDUSTRIAL CORPORATION vs. CA G.R. No. L-54158. November 19, 1982 Facts:
Sometime on November 9, 1961, the Philippines Patent Office issued Certificate of
Registration No. 9331 in favor of respondent Kaisha covering the trademark "YKK"
(Yoshida Kogyo Kabushiki) for slide fasteners and zippers in class 41. 5 1/2
years after respondent's registration Pagasa filed an application for registration
of exactly the same or identical trademark of "YKK" for zippers under class 41
which was allowed on April 4, 1968 with Certificate of Registration No. 13756.
Alleging that both trademark ("YKK") are confusingly similar, being used on similar
products under the same classification of goods, respondent Kaisha filed with the
Director of Patents a petition for cancellation of petitioner's registration of
exactly the same trademark "YKK". Director of Patents cancelled Registration No.
13756 in the name of Pagasa based on Section 4 (d) of RA 166, as amended (An Act to
Provide for the Registration and Protection of Trade-Marks, Trade Names and
Service-Marks; etc.) on appeal to CA, Pagasa argued that there was laches on the
part of Kaisha considering that notwithstanding the fact that the trademark was
registered for the use of petitioner, it was not until January 23,

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Intellectual Property Law AUF School of Law Philippines the subject mark; it did
not present proof to invest it with exclusive, continuous adoption of the trademark
which should consist among others, of considerable sales since its first use. The
invoices submitted by respondent which were dated way back in 1957 show that the
zippers sent to the Philippines were to be used as "samples" and "of no commercial
value." The evidence for respondent must be clear, definite and free from
inconsistencies. An unreasonable length of time had already passed before
respondent asserted its right to the trademark. There is a presumption of neglect
already amounting to "abandonment" of a right after a party had remained silent for
quite a long time during which petitioner had been openly using the trademark in
question. Such inaction on the part of respondent entitles petitioner to the
equitable principle of laches. respondent wanted goodwill and a wide market
established at the expense of the petitioner but for its benefit. It is precisely
the intention of the law, including a provision on equitable principle to protect
only the vigilant, not those guilty of laches. It is most unfair if at anytime, a
previous registrant, even after a lapse of more than five (5) years, can ask for
the cancellation of a similar or the same trademark, the registration of which was
never opposed by the prior registrant. Equity and justice, therefore, demand that
petitioner should be allowed to continue the use of the subject mark and the mark
which was supposedly registered under the name of respondent be deemed cancelled.
Provision in question:
Section 4 (d) of RA 166 "Sec. 4. Registration of trade-marks, tradenames, and
service marks on the principal register. There is hereby established a register
of trademarks, tradenames and service marks which shall be known as the principal
register. The owner of a trademark, tradename or service mark used to distinguish
his goods, business or services from the goods. business or services of others
shall have the right to register the same on the principal register unless it:

Atty. Eric Recalde

xxx xxx xxx "(d) Consists of or comprises a mark or trade name which so resembles a
mark or trade name registered in the Philippines or a mark trade name previously
used in the Philippines by another and not abandoned as to be likely, when applied
to or used in connection with the goods, business or services of the applicant, to
cause confusion or mistake or to deceive purchasers; or x x x section 2, Trademark
Law see page 11 Section 9-A of the Trademark Law "Equitable principles to govern
proceedings: In opposition proceedings and all other inter partes proceedings in
the Patent Office under this Act, equitable principle of laches, estoppel and
acquiescence where applicable, may be considered applied."

dissenting opinion: (Aquino) He who comes to court must come with clean hands
Pagasa acted in bad faith in registering the YKK trademark as it knows of the
existence of Yoshida Kogyo Kabushiki and the latter's engineers even helped Pagasa
with respect to business UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL MILLING
CORPORATION G.R. No. L-28554. February 28, 1983 Facts: On December 11, 1962,
respondent General Milling Corporation filed an application for the registration of
the trademark "All Montana" to be used in the sale of wheat flour. As the same
trademark had been previously registered in favor of Unno, the Chief Trademark
Examiner declared an interference proceeding between General Milling's application
(Serial No. 9732), as Junior/Party-Applicant, and Unno's registration (Registration
No. 9589), as Senior Party-Applicant to determine which party has previously
adopted and used the trademark "All Montana. General Milling Corp's contention:
alleged that it started using the trademark "All Montana" on August 31, 1955 and 5

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Intellectual Property Law AUF School of Law subsequently was licensed to use the
same by Centennial Mills, Inc. by virtue of a deed of assignment executed on
September 20, 1962. Unno Commercial Enterprise's contention: argued that the same
trademark had been registered in its favor on March 8, 1962 asserting that it
started using the trademark on June 30, 1956, as indentor or broker for S.H. Huang
Bros. & Co., a local firm. various shipments, documents, invoices and other
correspondence of Centennial Mills, Inc., shipping thousand of bags of wheat flour
bearing the trademark "All Montana" were shown by petitioner and maintained that
anyone, whether he is only an importer, broker or indentor can appropriate, use and
own a particular mark of its own choice although he is not the manufacturer of the
goods he deals with. Director of Patents' decision the Junior Party-Applicant is
adjudged prior user of the trademark ALL MONTANA, but because it is primarily
geographically descriptive, the application is remanded to the Chief Trademark
Examiner for proper proceeding before issuance of the certificate of registration.
Issue/Answer: WON Unno, as a mere indentor can apply for the registration of the
trademark of its principal / negative. Only owners of the trademark can apply for
its registration. Ratio Decidendi: The right to register trademark is based on
ownership. When the applicant is not the owner of the trademark being applied for,
he has no right to apply for the registration of the same. Under the Trademark
Law only the owner of the trademark, trade name or service mark used to distinguish
his goods, business or service from the goods, business or service of others is
entitled to register the same. The term owner does not include the importer of
the goods bearing the trademark, trade name, service mark, or Jmvdg Atty. Eric
Recalde other mark of ownership, unless such importer is actually the owner thereof
in the country from which the goods are imported. A local importer, however, may
make application for the registration of a foreign trademark, trade name or service
mark if he is duly authorized by the actual owner of the name or other mark of
ownership. The Deed of Assignment itself constitutes sufficient proof of General
Milling Corporation's ownership of the trademark "All Montana," showing that
Centennial Mills was a corporation duly organized and existing under and by virtue
of the laws of the State of Oregon, U.S.A. and the absolute and registered owner of
several trademarks for wheat flour all of which were assigned by it to respondent
General Milling Corporation. Unno Commercial Enterprises, Inc. merely acted as
exclusive distributor of All Montana wheat flour in the Philippines. Only the owner
of a trademark, trade name or service mark may apply for its registration and an
importer, broker, indentor or distributor acquires no rights to the trademark of
the goods he is dealing with in the absence of a valid transfer or assignment of
the trade mark. Inasmuch as it was not the owner of the trademark, the Senior Party
could not be regarded as having used and adopted it, and had no right to apply for
its registration. a mere importer and distributor acquires no rights in the mark
used on the imported goods by the foreign exporter in the absence of an assignment
of any kind Trademarks used and adopted on goods manufactured or packed in a
foreign country in behalf of a domestic importer, broker, or indentor and
distributor are presumed to be owned by the manufacturer or packer, unless there is
a written agreement clearly showing that ownership vests in the importer, broker,
indentor or distributor. ownership of a trademark is not acquired by the mere fact
of registration alone. 6

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Intellectual Property Law AUF School of Law Registration merely creates a prima
facie presumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use thereof.
Registration does not perfect a trademark right. The Court affirms respondent
Director of Patent's decision declaring respondent General Milling Corporation as
the prior user of the trademark "All Montana" on wheat flour in the Philippines and
ordering the cancellation of the certificate of registration for the same trademark
previously issued in favor of petitioner Unno Commercial Enterprises, Under Rule
178 of the Rules of the Patent Office in Trademark Cases, 14 the Director of
Patents is expressly authorized to order the cancellation of a registered mark or
trade name or name or other mark of ownership in an inter partes case, such as the
interference proceeding at bar. provision in question:
Section 2-A of the Trademarks Law (Republic Act 166), see page 11 herein

Atty. Eric Recalde that CANON can be used by private respondent for its sandals
because the products of these two parties are dissimilar. Issue/ Answer: WON the
use of the tradename CANON by defendant would cause prejudice to petitioner /
negative Ratio Decidendi: the ownership of a trademark or tradename is a property
right that the owner is entitled to protect as mandated by the Trademark Law.
However, when a trademark is used by a party for a product in which the other party
does not deal, the use of the same trademark on the latter's product cannot be
validly objected to. since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff),
private respondent can use the trademark CANON for its goods classified as class 25
(sandals). Clearly, there is a world of difference between the paints, chemical
products, toner, and dyestuff of petitioner and the sandals of private respondent.
petitioner failed to attach evidence that would convince the Court that
petitioner has also embarked in the production of footwear products. In Faberge,
Incorporated vs. Intermediate Appellate Court, the Court held: since the senior
user has not ventured in the production of briefs, an item which is not listed in
its certificate of registration, the senior user, cannot and should not be allowed
to feign that the junior user had invaded the senior user's exclusive domain. The
certificate of registration confers upon the trademark owner the exclusive right to
use its own symbol only to those goods specified in the certificate, subject to the
conditions and limitations stated therein. the exclusive right of petitioner in
this case to use the trademark CANON is limited to the products covered by its
certificate of registration. 7

CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORPORATION G.R. No. 120900. July 20,
2000 Facts: On January 15, 1985, private respondent NSR Rubber Corporation filed
an application for registration of the mark CANON for sandals in the BPTTT. A
Verified Notice of Opposition was filed by petitioner alleging that it will be
damaged by the registration of the trademark CANON in the name of NSR Rubber Corp.
The BPTTT declared NSR Rubber Corp in default for failure to file Answer within
the prescribed period and allowed petitioner to present its evidence ex-parte. On
November 10, 1992, the BPTTT issued its decision dismissing the opposition of
petitioner and giving due course to private respondent's application for the
registration of the trademark CANON. CA affirmed the BPTTT decision and held
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Intellectual Property Law AUF School of Law the two classes of products in this
case flow through different trade channels. The products of petitioner are sold
through special chemical stores or distributors while the products of private
respondent are sold in grocery stores, sari-sari stores and department stores.
Thus, the evident disparity of the products of the parties in the case at bar
renders unfounded the apprehension of petitioner that confusion of business or
origin might occur if private respondent is allowed to use the mark CANON. The
term "trademark" is defined by RA 166, the Trademark Law, as including "any word,
name, symbol, emblem, sign or device or any combination thereof adopted and used by
a manufacturer or merchant to identify his goods and distinguish them for those
manufactured, sold or dealt in by others." the Paris Convention, of which both
the Philippines and Japan, the country of petitioner, are signatories, 29 is a
multilateral treaty that seeks to protect industrial property consisting of
patents, utility models, industrial designs, trademarks, service marks, trade names
and indications of source or appellations of origin, and at the same time aims to
repress unfair competition. Regarding the applicability of Article 8 of the Paris
Convention, this Office believes that there is no automatic protection afforded an
entity whose tradename is alleged to have been infringed through the use of that
name as a trademark by a local entity. Based on the memorandum by Ongpin,
Petitioner failed to comply with the third requirement of the said memorandum that
is the mark must be for use in the same or similar kinds of goods. Provision in
question:
Article 8 of the Paris Convention, to wit: "A tradename shall be protected in all
the countries of the Union without the obligation of filing or registration,
whether or not it forms part of a trademark." Article 6bis of the Paris Convention
states:

Atty. Eric Recalde

(1) The countries of the Union undertake, either administratively if their
legislation so permits, or at the request of an interested party, to refuse or to
cancel the registration and to prohibit the use of a trademark which constitutes a
reproduction, imitation or translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use to be
wellknown in that country as being already the mark of a person entitled to the
benefits of the present Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a
reproduction of any such well-known mark or an imitation liable to create confusion
therewith. (2) A period of at least five years from the date of registration shall
be allowed for seeking the cancellation of such a mark. The countries of the Union
may provide for a period within which the prohibition of use must be sought. (3) No
time limit shall be fixed for seeking the cancellation or the prohibition of the
use of marks or used in bad faith." Memorandum dated 25 October 1983 to the
Director of Patents by Hon. Roberto V. Ongpin a) the mark must be internationally
known; b) the subject of the right must be a trademark, not a patent or copyright
or anything else; IESDCH c) the mark must be for use in the same or similar kinds
of goods; and d) the person claiming must be the owner of the mark (The Parties
Convention Commentary on the Paris Convention. Article by Dr. Bogsch, Director
General of the World Intellectual Property Organization, Geneva, Switzerland,
1985)'

EMERALD GARMENT MFTG. CORP vs. CA, BOP and H.D. LEE COMPANY, INC G.R. No. 100098.
December 29, 1995 Facts: On 18 September 1981 H.D. Lee Co., Inc., (Delaware,
U.S.A.) filed with the BPTTT a Petition for Cancellation of Registration No. SR
5054 (Supplemental Register) for the trademark "STYLISTIC MR. LEE" used on skirts,
jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and
lingerie under Class 25, issued on 27 October 1980 in the name of Emerald Garment
(Philippines) H.D. Lee Co. invokes Sec. 37 of R.A. No. 166 (Trademark Law) and
Art. VIII of the Paris Convention for the Protection of Industrial Property,
averred that petitioner's
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Intellectual Property Law AUF School of Law trademark "so closely resembled its own
trademark, 'LEE' as previously registered and used in the Philippines, and not
abandoned, as to be likely, when applied to or used in connection with petitioner's
goods, to cause confusion, mistake and deception on the part of the purchasing
public as to the origin of the goods." the Director of Patents rendered a
decision granting H.D. Lee's petition for cancellation and opposition to
registration. using the test of dominancy, Director of Patents declared that
petitioner's trademark was confusingly similar to private respondent's mark because
"it is the word 'Lee' which draws the attention of the buyer and leads him to
conclude that the goods originated from the same manufacturer. It is undeniably the
dominant feature of the mark." CA affirmed the Director of Patents' decision
Emerald contends that H.D. Lee is estopped from instituting an action for
infringement before the BPTTT under the equitable principle of laches pursuant to
Sec. 9-A of R.A. No. 166, otherwise known as the Law on Trade-marks, Trade-names
and Unfair Competition Emerald alleges that it has been using its trademark
"STYLISTIC MR. LEE" since 1 May 1975, yet, it was only on 18 September 1981 that
private respondent filed a petition for cancellation of petitioner's certificate of
registration for the said trademark. Issue/ Answer: WON H. D. Lee's prior
registration is enough to confer upon it the exclusive ownership of the trademark
Lee in opposition to Emerald's / negative Ratio Decidendi: the reckoning point of
ownership of Emerald is 27 October 1980, 20 the date the certificate of
registration SR No. 5054 was published in the Official Gazette and issued to
petitioner and not May 1, 1975. It was only on the date of publication and
issuance of the registration certificate that Jmvdg Atty. Eric Recalde private
respondent may be considered "officially" put on notice that petitioner has
appropriated or is using said mark, which, after all, is the function and purpose
of registration in the supplemental register. 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." Colorable imitation refers to such similarity in
form, content, words, sound, meaning, special arrangement, or general appearance of
the trademark or tradename with that of the other mark or tradename in their over-
all presentation or in their essential, substantive and distinctive parts as would
likely mislead or confuse persons in the ordinary course of purchasing the genuine
article. 2 tests: test of dominancy: if the competing trademark contains the main
or essential or dominant features of another by reason of which confusion and
deception are likely to result, then infringement takes place; that duplication or
imitation is not necessary, a similarity in the dominant features of the trademark
would be sufficient. The likelihood of confusion is further made more probable by
the fact that both parties are engaged in the same line of business. It is well to
reiterate that the determinative factor in ascertaining whether or not the marks
are confusingly similar to each other is not whether the challenged mark would
actually cause confusion or deception of the purchasers but whether the use of such
mark would likely cause confusion or mistake on the part of the buying

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Intellectual Property Law AUF School of Law public. Holistic test: mandates that
the entirety of the marks in question must be considered in determining confusing
similarity. The trademarks in their entirety as they appear in their respective
labels or hang tags must also be considered in relation to the goods to which they
are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order
that he may draw his conclusion whether one is confusingly similar to the other.
the trademarks involved as a whole and 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 the products involved in the case at bar are, in the
main, various kinds of jeans. the average Filipino consumer generally buys his
jeans by brand. the ordinary purchaser is not the "completely unwary consumer"
but is the "ordinarily intelligent buyer" considering the type of product involved.
"LEE" is primarily a surname. Private respondent cannot, therefore, acquire
exclusive ownership over and singular use of said term. private respondent failed
to prove prior actual commercial use of its "LEE" trademark in the Philippines
before filing its application for registration with the BPTTT and hence, has not
acquired ownership over said mark. Actual use in commerce in the Philippines is an
essential prerequisite for the acquisition of ownership over a trademark Atty.
Eric Recalde The Trademark Law is very clear. It requires actual commercial use of
the mark prior to its registration. There is no dispute that respondent corporation
was the first registrant, yet it failed to fully substantiate its claim that it
used in trade or business in the Philippines the subject mark; it did not present
proof to invest it with exclusive, continuous adoption of the trademark which
should consist among others, of considerable sales since its first use. For lack
of adequate proof of actual use of its trademark in the Philippines prior to
petitioner's use of its own mark and for failure to establish confusing similarity
between said trademarks, private respondent's action for infringement must
necessarily fail. Provisions in question:
Sec. 9-A of R.A. No. 166, otherwise known as the Law on Trade-marks, Trade-names
and Unfair Competition SEC. 9-A. Equitable principles to govern proceedings. In
opposition proceedings and in all other inter partes proceedings in the patent
office under this act, equitable principles of laches, estoppel, and acquiescence,
where applicable, may be considered and applied. SEC. 22. Infringement, what
constitutes. Any person who shall use, without the consent of the registrant, any
reproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or advertising of any
goods, business or services on or in connection with which such use is likely to
cause confusion or mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark or trade-name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services, shall be liable to a civil action
by the registrant for any or all of the remedies herein provided. Sec. 4 of R.A.
No. 166, particularly paragraph 4(e): CHAPTER II-A. The Principal Register SEC.
4. Registration of trade-marks, trade-names and service-marks on the principal
register. There is hereby established a register of trade-marks, trade-names and
service-marks which shall be known as the principal register. The owner of a trade-
mark, trade-name or servicemark used to distinguish his goods, business or services
from the goods, business or services of others shall have

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Intellectual Property Law AUF School of Law
the right to register the same on the principal register, unless it: xxx xxx xxx.
(e) Consists of a mark or trade-name which, when applied to or used in connection
with the goods, business or services of the applicant is merely descriptive or
deceptively misdescriptive of them, or when applied to or used in connection with
the goods, business or services of the applicant is primarily geographically
descriptive or deceptively misdescriptive of them, or is primarily merely a surname
Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166) which explicitly
provides that: CHAPTER II. Registration of Marks and Trade-names. SEC. 2. What are
registrable. Trade-marks, tradenames, and service marks owned by persons,
corporations, partnerships or associations domiciled in the Philippines and by
persons, corporations, partnerships, or associations domiciled in any foreign
country may be registered in accordance with the provisions of this act: Provided,
That said trade-marks, trade-names, or service marks are actually in use in
commerce and services not less than two months in the Philippines before the time
the applications for registration are filed: And Provided, further, That the
country of which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines, and such fact is
officially certified, with a certified true copy of the foreign law translated into
the English language, by the government of the foreign country to the Government of
the Republic of the Philippines. SEC. 2-A. Ownership of trade-marks, trade-names
and service-marks; how acquired. Anyone who lawfully produces or deals in
merchandise of any kind or who engages in lawful business, or who renders any
lawful service in commerce, by actual use hereof in manufacture or trade, in
business and in the service rendered; may appropriate to his exclusive use a trade-
mark, a trade-name, or a service-mark not so appropriated by another, to
distinguish his merchandise, business or services from others. The ownership or
possession of trade-mark, tradename, service-mark, heretofore or hereafter
appropriated, as in this section provided, shall be recognized and protected in the
same manner and to the same extent as are other property rights to the law. Sec. 20
of the Trademark Law SEC. 20. Certificate of registration prima facie evidence of
validity. A certificate of registration of a mark or tradename shall be a prima
facie evidence of the validity of the registration, the registrant's ownership of
the mark or trade-name, and of the registrant's exclusive right to use the same in
connection with the goods, business or services specified in the certificate,
subject to any conditions and limitations stated therein.

Atty. Eric Recalde

REGISTRABILITY

ANA L. ANG vs. TORIBIO TEODORO G.R. No. 48226. December 14, 194 Facts: Toribio
Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a tradename,
in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910.
He formally registered it as a trade-mark on September 29, 1915, and as a trade-
name on January 3, 1933. 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. Teodoro filed a complaint against Ang RTC
rendered decision in faor of Ang on the grounds that the two trade-marks are
dissimilar and are used on different and non-competing goods CA reversed the RTC
decision and ruled that by uninterrupted and exclusive use since 1910 in the
manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary
meaning; that the goods or articles on which the two trademarks are used are
similar or belong to the same class; and that the use by petitioner of said trade-
mark constitutes a violation of sections 3 and 7 of Act No. 666. Issue/Answer:
WON the trademark and tradename Ang Tibay is a descriptive word which will bar
its registration. / negative Ratio Decidendi: The phrase "Ang Tibay" is an
exclamation denoting admiration of strength or durability. The phrase "ang tibay"
is never used adjectively to define or describe an object. "Ang Tibay" is not a
descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or
coined phrase which may properly and legally be appropriated as a trade-mark or
trade-name. 11

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Intellectual Property Law AUF School of Law Issue on who is the lawful registrant:
Teodoro Doctrine of secondary meaning: This doctrine is to the effect that a
word or phrase originally incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product. the
same trade-mark, used on unlike goods, could not cause confusion in trade and that,
therefore, there could be no objection to the use and registration of a well-known
mark by a third party for a different class of goods. Although two noncompeting
articles may be classified under two 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 trade-marks would be likely to cause
confusion as to the origin, or personal source, of the second user's 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 the first user made the second user's goods. It is certainly not
farfetched to surmise that the selection by petitioner of the same trade-mark for
pants and shirts was motivated by a desire to get a free ride on the reputation and
selling power it has acquired at the hands of the respondent. As observed in
another case, 3 the field from which a person may select a trade-mark is
practically unlimited, and hence there is no excuse for impinging upon or even
closely Atty. Eric Recalde approaching the mark of a business rival. ANG SI HENG
and SALUSTIANA DEE vs. WELLINGTON DEPT STORE INC G.R. No. L-4531. January 10, 1953
Facts: Si Heng & Dee are engaged in the business of manufacturing shirts, pants,
drawers, and other articles of wear for men, women, and children. They have been in
that business since the year 1938, having obtained the registration for the said
articles the trademark of "Wellington." Benjamin Chua applied for the
registration of the business name "Wellington Department Store" on May 7, 1946. His
application therefor was approved by the Bureau of Commerce, and a certificate
issued in his favor. Petitioners allege that the use of the words "Wellington
Department Store" as a business name and as a corporate name by the defendant-
appellee deceives the public into buying defendant corporation's goods under the
mistaken belief that the names are the plaintiff's or have the same source as
plaintiffs' goods, thereby resulting in damage to them. Defendants raises the
defense of dissimilarity of the goods that they deal in court a quo dismissed the
complaint and held that Wellington Co. has not been used by any enterprise.
Issue/Answer: WON Wellington, bing a geographical can be registered - negative
WON defendant is guilty of unfair competition - negative Ratio Decidendi: mere
geographical names are ordinarily regarded as common property, and it is a general
rule that the same cannot be appropriated as the subject of an exclusive trademark
or tradename. As the term cannot be appropriated as a trademark or a tradename,
no action for violation thereof can be maintained, as 12

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Intellectual Property Law AUF School of Law none is granted by the statute in such
cases. no action may lie in favor of the plaintiffsappellants herein for damages
or injunctive relief for the use by the defendantsappellees of the name
"Wellington." issue of unfair competition: While there is similarity between the
trademark or tradename "Wellington Company" and that of "Wellington Department
Store," no confusion or deception can possibly result or arise from such similarity
because the latter is a "department store," while the former does not purport to be
so. Neither can the public be said to be deceived into the belief that the goods
being sold in defendant's store originate from the plaintiffs, because the evidence
shows that defendant's store sells no shirts or wear bearing the trademark
"Wellington," but other trademarks doctrine in Ang vs Teodoro cannot be applied
because the evidence submitted by the appellants did not prove that their business
has continued for so long a time that it has become of consequence and acquired a
goodwill of considerable value, such that its articles and products have acquired a
well-known reputation, and confusion will result by the use of the disputed name by
the defendants' department store. plaintiffs- appellants have not been able to
show the existence of a cause of action for unfair competition against the
defendantsappellees. ANDRES ROMERO vs. MAIDEN FORM BRASSIERE CO., INC G.R. No. L-
18289. March 31, 1964 Facts: On February 12, 1957, respondent company, a foreign
corporation, filed with respondent Director of Patents an application for
registration (pursuant to Republic Act No. 166) of the trademark Atty. Eric Recalde
'Adagio" for the Brassieres manufactured by it. In its application, respondent
company alleged that said trademark was first used by it in the United States on
October 26, 1937, and in the Philippines on August 31, 1946 Director, on August
13, 1957, approved for publication in the Official Gazette said trademark of
respondent company, in accordance with Section 7 of Republic Act No. 166 (Trademark
Law), having found, inter alia, that said trademark is "a fanciful and arbitrary
use of a foreign word adopted by applicant as a trademark for its product; that it
is neither a surname nor a geographical term, nor any that comes within the purview
of Section 4 of Republic Act No. 166; petitioner filed with respondent Director a
petition for cancellation of said trademark, on the grounds that it is a common
descriptive name of an article or substance on which the patent has expired
Appellant claims that the trademark "Adagio" has become a common descriptive name
of a particular style of brassiere and is, therefore, unregistrable. It is urged
that said trademark had been used by local brassiere manufacturers since 1948,
without objection on the part of respondent company. Director of Patents (of
January 17, 1961) dismissed Romero's petition for cancellation of the registration
of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form
Brassiere Co., Inc. Issue/Answer: WON Adagio is a descriptive word incapable of
registration / negative Ratio Decidendi: The evidence shows that the trademark
"Adagio" is a musical term, which means slowly or in an easy manner, and was used
as a trademark by the owners thereof (the Rosenthals of Maiden Form Co., New York)
because they are musically inclined. Being a musical term, it is used in an 13

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Intellectual Property Law AUF School of Law arbitrary (fanciful) sense as a
trademark for brassieres manufactured by respondent company. It also appears that
respondent company has, likewise, adopted other musical terms such as "Etude",
"Chansonette", "Prelude", "Over-ture", and "Concerto", to identify, as a trademark,
the different styles or types of its brassieres. On the other hand, respondent
company's long and continuous use of the trademark "Adagio" has not rendered it
merely descriptive of the product. On abandonment of trademark by private
defendant: "To work an abandonment, the disuse must be permanent and not
ephemeral; it must be intentional and voluntary, and not involuntary or even
compulsory. There must be a thoroughgoing discontinuance of any trade-mark use of
the mark in question" "Non-use because of legal restrictions is not evidence of
an intent to abandon. respondent Director of Patents did not err in dismissing
the present petition for cancellation of the registered trademark of appellee
company, and the decision appealed from is therefore hereby affirmed, with costs
against the appellant. Provisions in question:
Section 2 of Republic Act No. 166 as amended by Section 1 of Republic Act 865 see
page 11 herein

Atty. Eric Recalde for perfume, lipstick, and nail polish as opposed to Chua Che's
use which was admittedly only in 1957. Director of Patents held: The products of
the parties, while specifically different, are products intended for use in the
home and usually have common purchasers. Furthermore, the use of X-7 for laundry
soap is but a natural expansion of business of the opposer. Issue/ Answer: WON
allowing Chua Che to register the same mark for laundry soap would likely to cause
confusion on the purchasers of X-7 products by SY Tou / affirmative. Ratio
Decidendi: while it is no longer necessary to establish that the goods of the
parties possess the same descriptive properties, as previously required under the
Trade Mark Act of 1905, registration of a trademark should be refused in cases
where there is a likelihood of confusion, mistake, or deception, even though the
goods fall into different categories The products of appellee are common
household items now-a-days, in the same manner as laundry soap. The likelihood of
purchasers to associate these products to a common origin is not far-fetched. Both
from the standpoint of priority of use and for the protection of the buying public
and, of course, appellee's rights to the trademark "X-7", it becomes manifest that
the registration of said trademark in favor of applicant-appellant should be
denied. STERLING PRODUCTS INT'L INC. vs. FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT
and ALLIED MANUFACTURING AND TRADING CO., INC. G.R. No. L-19906. April 30, 1969
Facts: each of the principal suitors, namely, Sterling Products International,
Inc., (SPI on medicine) and defendant Farbenfabriken

CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO G.R. No. L-18337. January 30, 1965
Facts: Under date of October 30, 1958, Chua Che presented with the Philippines
Patent Office a petition praying for the registration in his favor the trade name
of "X-7" Director of Patents denied the application for use on soap Class 51,
being manufactured by said Chua Che, upon the opposition of respondent Sy Tuo. Sy
Tuo claims that he owns the tademark and had been using it since 1951 as mark Jmvdg

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Intellectual Property Law AUF School of Law Bayer Aktiengesellschaft, (FBA on
insecticides) seeks to exclude the other from use in the Philippines of the
trademarks BAYER and BAYER CROSS IN CIRCLE. The trial court declared itself "in
favor of the solution that favors division of the market rather than monopoly." But
to avoid confusion, it directed defendants "to add a distinctive word or words in
their mark to indicate that their products come from Germany." The word BAYER was
the surname of Friedrich Bayer, a German, who, on August 1, 1863, organized a drug
company bearing his name Friedr. Bayer et comp. at Barmen, Germany. The company
was at first engaged in the manufacture and sale of chemicals. At about the year
1888 it started to manufacture pharmaceutical preparations also. FFB is the
original owner of the name and mark. FFB was based in Germany and had a subsidiary
company in New York. When the war broke out, the subsidiary in New York was
declared as an enemy controlled corp so its assets were sold to Sterling Corp.
disputes with regard the ownership of the name and mark were resolved by 2
agreements between Winthrop's and FFB U.S. District Court for Southern New York
held that: The Bayer contract of 1923, the Bayer contract of 1926, and any and all
amendments or supplements thereto are declared and adjudged to be unlawful under
the Anti-Trust Laws of the United States, and the defendants Bayer and Sterling,
and their respective successors and subsidiaries, or any of them, be and they are
hereby enjoined and restrained from carrying out or enforcing any of the aforesaid
contracts, or any supplements, amendments or modifications thereof, or from paying
to I.G. Farben, its subsidiaries, successors or assigns, any royalties or share of
profits pursuant to said contracts Atty. Eric Recalde with respect to sales
following the effective date of this decree.Provided, however, that nothing herein
contained in this Sec. III shall:
Affect in any way the rights or title of the defendants Bayer, its successors,
subsidiaries or assigns, in or to the name 'Bayer' and the 'Bayer Cross' mark or
registrations thereof, or. Affect or diminish any right, title or interest of said
defendants, their successors, subsidiaries or assigns, in or to or under any
heretofore acquired and presently existing patents, patent applications, patent
licenses, trademarks, trade-names (such as the name 'Bayer' and the 'Bayer Cross'
mark and registrations thereof), processes or formulae relating to the
manufacturing, processing, use or sale of aspirin, aspirin compounds,
pharmaceutical or other drug or chemical products, or impair any rights or remedies
of said defendants, their successors, subsidiaries or assigns, provided by statute
or convention, and by suits for damages, injunction or other remedy with respect to
any such patents, patent applications, patent licenses or trademarks"

The trademarks BAYER and BAYER CROSS IN CIRCLE were then registered in the
Philippines under the old Trademark Law (Act 666) by The Bayer Co., Inc.: the BAYER
CROSS IN CIRCLE trademark on April 18, 1939 for which it was issued Certificate of
Registration No. 13081 These trademark rights were assigned to SPI on December 30,
1942 and the assignment was recorded in the Philippines Patent Office on March 5,
1947. SPI was issued by the Philippines Patent Office on June 18, 1948 two new
certificates of registration: No. 1260-S for BAYER CROSS IN CIRCLE; No. 1262-S for
BAYER. The registration of these trademarks was only for "Medicines." AMATCO)
started selling FBA's products especially "Folidol," a chemical insecticide which
bears the BAYER CROSS IN CIRCLE trademark. On November 18, 1959, FBA applied for
the registration of the BAYER CROSS IN CIRCLE trademark with the Philippines Patent
Office for animal and plant

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Intellectual Property Law AUF School of Law destroying agents. On February 25,
1960, FBA was issued a certificate of registration in the Supplemental Register,
SR-304. Issue/Answer: Ratio Decidendi: actual use in commerce or business is a
prerequisite to the acquisition of the right of ownership over a trademark. This
rule is spelled out in our Trademark Law adoption alone of a trademark would not
give exclusive right thereto. Such right "grows out of their actual use The BAYER
trademarks registered in the Philippines to which plaintiff SPI may lay claim are
those which cover medicines only. For, it was on said goods that the BAYER
trademarks were actually used by it in the Philippines. Therefore, the certificates
of registration for medicines issued by the Director of Patents upon which the
protection is enjoyed are only for medicines. Nothing in those certificates recited
would include chemicals or insecticides. if the certificate of registration were
to be deemed as including goods not specified therein, then a situation may arise
whereby an applicant may be tempted to register a trademark on any and all goods
which his mind may conceive even if he had never intended to use the trademark for
the said goods. Neither will the 1927 registration in the United States of the
BAYER trademark for insecticides serve plaintiff any. Registration in the United
States is not registration in the Philippines. two types of confusion confusion
of goods "in which event the ordinarily prudent purchaser would be induced to
purchase one product in the belief that he was purchasing the other. confusion of
business: "Here though the goods of the parties are different, the defendant's
product is such as might reasonably be assumed to originate with the plaintiff, and
the public would then Jmvdg Atty. Eric Recalde be deceived either into that
belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist. Although two noncompeting articles may
be classified under two 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 user's goods. (relate Ang Tibay
case) It was not plaintiff's predecessor but defendant's namely Farbenfabriken or
Bayer Germany that first introduced the medical products into the Philippine market
and household with the Bayer mark half a century ago Plaintiff cannot now say
that the present worth of its BAYER trademarks it owes solely to its own efforts;
it is not insulated from the charge that as it marketed its medicines it did so
with an eye to the goodwill as to quality that defendants' predecessor had
established. Plaintiff is not the first user thereof in the Philippines. The
trademarks do not necessarily link plaintiff with the public. But defendants ask
us to delist plaintiff's BAYER trademarks for medicine from the Principal Register,
claiming right thereto for said use. Said trademarks had been registered since 1939
by plaintiff's predecessor, The Bayer Co., Inc. Defendants' claim is stale; it
suffers from the defect of non-use. plaintiff may hold on to its BAYER trademarks
for medicines. And defendants may continue using the same trademarks for
insecticides and other chemicals, not medicines. provision:
Sec. 2-A, RA 166 see page ii herein

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Intellectual Property Law AUF School of Law CRISANTA Y. GABRIEL vs. DR. JOSE R.
PEREZ G.R. No. L-24075. January 31, 1974 Facts: Dr. Jose R. Perez filed with the
Patents Office on February 23, 1961 an application for registration of the
trademark "WONDER" in the Supplemental Register. On October 19, 1962, petitioner
Crisanta Y. Gabriel claiming that he had been using the subject mark since 1959
filed with the Patent Office a petition for cancellation of the trademark "WONDER
from the supplemental register alleging that the registrant was not entitled to
register the said trademark at the time of his application for registration In
support of her petition, she further alleged the written contract between her and
the registrant (respondent) wherein, according to her, the latter has recognized
her right of use and ownership of said trademark; and that the labels submitted by
the registrant are the very containers bearing the trademark "WONDER" which are
owned by her and which she has been exclusively and continuously using in commerce
after Dr. Perz had perfected his research and obtained a certificate of label, he
made an agreement (January, 1959) with a certain company named 'Manserco' for the
distribution of his soap. It was then being managed by Mariano S. Yangga who
happens to be the brother of the Petitioner Crisanta Y. Gabriel "Because the
corporation was allegedly going bankrupt and the members were deserting, the
Respondent terminated the agreement in July, 1959, and thereafter he asked the
Petitioner to become the distributor of his products Director of Patents rendered
his decision denying the petition of Gabriel to cancel the certificate of
registration Issue/Answer: WON Gabriel, as a mere distributor have the right to
register the subject mark in her Jmvdg Atty. Eric Recalde own name/ negative Ratio
Decidendi: "Because the corporation was allegedly going bankrupt and the members
were deserting, the Respondent terminated the agreement in July, 1959, and
thereafter he asked the Petitioner to become the distributor of his products
Crisanta Y. Gabriel appears to be a mere distributor of the product by contract
with the manufacturer, respondent Dr. Jose R. Perez and the same was only for a
term. Under Sections 2 and 2-A of the Trademark Law, Republic Act No. 166, as
amended, the right to register trademark is based on ownership and a mere
distributor of a product bearing a trademark, even if permitted to use said
trademark, has no right to and cannot register the said trademark Petitioner
urges that the agreement of exclusive distributorship executed by and between her
and respondent vested in her the exclusive ownership of the trademark "WONDER". But
a scrutiny of the provisions of said contract does not yield any right in favor of
petitioner other than that expressly granted to her to be the sole and exclusive
distributor of respondent Dr. Perez' product. the agreement never mentioned
transfer of ownership of the trademark. It merely empowers the petitioner as
exclusive distributor to own the package and to create a design at her pleasure,
but not the right to appropriate unto herself the sole ownership of the trademark
so as to entitle her to registration in the Patent Office. The exclusive
distributor does not acquire any proprietary interest in the principal's trademark.
the trademark "WONDER" has long been identified and associated with the product
manufactured and produced by the Dr. Jose R. Perez Cosmetic Laboratory.
Petitioner's act in defraying substantial expenses in the promotion of the 17

Trademark Cases
Intellectual Property Law AUF School of Law Respondent's goods and the printing of
the packages are the necessary or essential consequences of Paragraph 6 of the
agreement because, anyway, those activities are normal in the field of sale and
distribution, as it would redound to her own benefit as distributor, and those acts
are incumbent upon her to do. PHILIPPINE REFINING CO., INC.vs. NG SAM G.R. No. L-
26676. July 30, 1982 Facts: Private respondent filed with the Philippine Patent
Office an application for registration of the trademark "CAMIA" for his product,
ham, which falls under Class 47 (Foods and Ingredients of Food). Petitioner opposed
the application claiming that it first used said trademark on his products: lard,
butter, cooking oil, abrasive detergents, polishing materials and soap of all
kinds, some of which are likewise classified under Class 47. The trademark
"CAMIA" was first used in the Philippines by petitioner on its products in 1922 and
registered the same in 1949 On November 25, 1960, respondent Ng Sam, a Chinese
citizen residing in Iloilo City, filed an application with the Philippine Patent
Office for registration of the identical trademark "CAMIA" for his product, ham,
which likewise falls under Class 47. Alleged date of first use of the trademark by
respondent was on February 10, 1959. Director of Patents rendered a decision
allowing registration of the trademark "CAMIA" in favor of Ng Sam.finding that `the
goods of the parties are not of a character which purchasers would be likely to
attribute to a common origin. Issue/Answer: WON the product of respondent Ng Sam,
which is ham, and those of petitioner consisting of lard, butter, cooking oil and
soap are so related that the use of the same trademark "CAMIA'' on said goods would
likely result in confusion as to their source Atty. Eric Recalde or origin. /
negative Ratio Decidendi: the right to a trademark is a limited one, in the sense
that others may use the same mark on unrelated goods. 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 articles of a different description.
where no confusion is likely to arise, as in this case, registration of a similar
or even identical mark may be allowed. The term "CAMIA" is descriptive of a whole
genus of garden plants with fragrant white flowers. A trademark is designed to
identify the user. But it should be so distinctive and sufficiently original as to
enable those who come into contact with it to recognize instantly the identity of
the user. "It must be affirmative and definite, significant and distinctive,
capable to indicate origin. if a mark is so commonplace that it cannot be readily
distinguished from others, then it is apparent that it cannot identify a particular
business; and he who first adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will not be deceived." While
ham and some of the products of petitioner are classified under Class 47 (Foods and
Ingredients of Food), this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods. Emphasis should be on the
similarity of the products involved and not on the arbitrary classification or
general description of their properties or characteristics. Opposer's products
are ordinary day-to-day household items whereas ham is not necessarily so. Thus,
the goods of the parties are not of a character which purchasers would be likely to
attribute to a common origin." the business of the parties are non18

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Intellectual Property Law AUF School of Law competitive and their products so
unrelated that the use of identical trademarks is not likely to give rise to
confusion, much less cause damage to petitioner. provision:
Section 4(d) of Trademark law "a mark which consists of or comprises a mark or
tradename which so resembles a mark or tradename registered in the Philippines or a
mark or tradename previously used in the Philippines by another and not abandoned,
as to be likely, when applied to or used in connection with the goods, business
services of the applicant, to cause confusion or mistake or to deceive purchasers."

Atty. Eric Recalde offering for sale, or advertising of any goods, business or
services on or in connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of such goods
or services, or identity of such business; or reproduce, counterfeit, copy or
colorably imitate any such mark or tradename and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection
with such goods, business or services." Implicit in this definition is the concept
that the goods must be so related that there is a likelihood either of confusion of
goods or business. 1 It is undisputed that the goods on which petitioner uses the
trademark ESSO, petroleum products, and the product of respondent, cigarettes, are
non-competing. non-competing goods may be those which, though they are not in
actual competition, are so related to each other that it might reasonably be
assumed that they originate from one manufacturer. Goods are related when they
belong to the same class or have the same descriptive properties; when they possess
the same physical attributes or essential characteristics with reference to their
form, composition, texture or quality. the goods are obviously different from each
other with "absolutely no iota of similitude" They are so foreign to each other
as to make it unlikely that purchasers would think that petitioner is the
manufacturer of respondent's goods. 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. 2 The products of
each party move along and are disposed through different channels of distribution.
19

ESSO STANDARD EASTERN, INC vs.CA and UNITED CIGARETTE CORPORATION G.R. No. L-29971.
August 31, 1982 Facts: Esso filed a case against United Cigarette Corp for
trademark infringement alleging that after the latter had acquired in November,
1963 the business, factory and patent rights of La Oriental Tobacco Corporation, it
began to use the trademark ESSO on its cigarettes, the same trademark used by
petitioner in its quality petroleum products which was likely to cause confusion or
deception on the part of the purchasing public as to its origin or source, to the
detriment of its own products. In its answer, private respondent admitted the use
of the trademark ESSO on its own product of cigarettes but claimed that these were
not identical to those produced and sold by the petitioner The trial court found
United Cigarette Corp guilty of infringement of trademark. On appeal, the
judgment was reversed and the complaint was dismissed. Issue/Answer: WON United
Cigarette Corp can be held liable for trademark infringement / negative Ratio
Decidendi: The law defines infringement as the use without consent of the
trademark owner of any "reproduction, counterfeit, copy or colorable imitation of
any registered mark or tradename in connection with the sale, Jmvdg

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Intellectual Property Law AUF School of Law
3

Atty. Eric Recalde for registration of the trademark in question. Knowing,

therefore, that the word "CONVERSE" belongs to and is being used by petitioner, and
is in fact the dominant word in petitioner's corporate name, respondent has no
right to appropriate the same for use on its products which are similar to those
being produced by petitioner. Appropriation by another of the dominant part of a
corporate name is an infringement The unexplained use by respondent of the dominant
word of petitioner's corporate name lends itself open to the suspicion of
fraudulent motive to trade upon petitioner's reputation. The sales of 12 to 20
pairs a month of petitioner's rubber shoes cannot be considered insignificant,
considering that they appear to be of high expensive quality, which not too many
basketball players can afford to buy. Another factor why respondent's application
should be denied is the confusing similarity between its trademark "UNIVERSAL
CONVERSE AND DEVICE" and petitioner's corporate name and/or its trademarks "CHUCK
TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing public to the
prejudice of petitioner. The determinative factor in ascertaining whether or not
marks are confusingly similar to each other "is not whether the challenged mark
would actually cause confusion or deception of the purchasers but whether the use
of such mark would likely cause confusion or mistake on the part of the buying
public When the law speaks of "purchaser," the reference is to ordinary average
purchasers a foreign corporation which has never done any business in the
Philippines and which is unlicensed and unregistered to do business here, but is
widely and favorably known in the Philippines through the use therein of its
products bearing its corporate and 20

A comparison of the labels of the samples of the goods submitted by the parties
shows a great many differences on the trademarks used. CA decision affirmed.

CONVERSE RUBBER CORP. vs. UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE
G.R. No. L-27906. January 8, 1987 Facts: Respondent Universal Rubber Products,
Inc. filed an application with the Philippine Patent office for registration of the
trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers.
Petitioner Converse Rubber Corporation filed its opposition to the application
for registration Director of Patents dismissed the opposition of the petitioner
and gave due course to respondent's application. Issue/Answer: WON the
respondent's partial appropriation of petitioner's corporate name is of such
character that it is calculated to deceive or confuse the public to the injury of
the petitioner to which the name belongs./ affirmative Ratio Decidendi: The
ownership of a trademark or tradename is a property right which the owner is
entitled to protect "since there is damage to him from confusion or reputation or
goodwill in the mind of the public as well as from confusion of goods. CONVERSE"
is the dominant word which identifies petitioner from other corporations engaged in
similar business. Respondent, in the stipulation of facts, admitted petitioner's
existence since 1946 as a duly organized foreign corporation engaged in the
manufacture of rubber shoes. This admission necessarily betrays its knowledge of
the reputation and business of petitioner even before it applied Jmvdg

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Intellectual Property Law AUF School of Law tradename, has a legal right to
maintain an action in the Philippines to restrain the residents and inhabitants
thereof from organizing a corporation therein bearing the same name as the foreign
corporation, when it appears that they have personal knowledge of the existence of
such a foreign corporation, and it is apparent that the purpose of the proposed
domestic corporation is to deal and trade in the same goods as those of the foreign
corporation. Provision:
Article 8 of Paris Convention provides that "a trade name [corporate name] shall be
protected in all the countries of the Union without the obligation of filing or
registration, whether or not it forms part of the trademark. Sec. 37 of RA No. 166,
otherwise known as the Trademark Law: "Sec. 37. Rights of Foreign Registrants-
Persons who are nationals of, domiciled in, or have a bona fide or effective
business or commercial establishment in any foreign country, which is a party to an
international convention or treaty relating to marks or tradenames on the
repression of unfair competition to which the Philippines may be a party, shall be
entitled to the benefits and subject to the provisions of this Act . . .
"Tradenames of persons described in the first paragraph of this section shall be
protected without the obligation of filing or registration whether or not they form
parts of marks."

Atty. Eric Recalde Corporation, organized and existing in and under the laws of the
state of Pennsylvania, U.S.A., filed a petition with the Philippine Patent Office
for the cancellation of the trademark "Puritan" registered in the name of General
Garments Corporation, Ratio Decidendi: It should be postulated at this point that
respondent is not suing in our courts "for the recovery of any debt, claim or
demand," for which a license to transact business in the Philippines is required by
Section 69 of the Corporation Law, "A foreign corporation which has never
done . . . business in the Philippine Islands and which is unlicensed and
unregistered to do business here, but is widely and favorably known in the Islands
through the use therein of its products bearing its corporate and trade name has a
legal right to maintain an action in the Islands. "The purpose of such a suit is
to protect its reputation, corporate name and goodwill which has been established
through the natural development of its trade for a long period of years, in the
doing of which it does not seek to enforce any legal or contract rights arising
from, or growing out of any business which it has transacted in the Philippine
Islands. "The right to the use of the corporate or trade name is a property
right, a right in rem, which it may assert and protect in any of the courts of the
world even in jurisdictions where it does not transact business just the same
as it may protect its tangible property, real or personal against trespass or
conversion." Republic Act No. 638, inserting Section 21-A in the Trademark Law,
allows a foreign corporation or juristic person to bring an action in Philippine
courts for infringement of a mark or trade-name, for unfair competition, or false
designation of origin and false description, "whether or not it has been licensed
to do business in the Philippines under Act Numbered Fourteen

CAPACITY TO SUE OF FOREIGN ENTITIES

central issue: WON the foreign company not doing business nor registered in the
Philippines has the standing to sue a Philippine domiciled business entity for
infringement before Philippine courts. Answer: affirmative GENERAL GARMENTS CORP
vs. DIRECTOR OF PATENTS and PURITAN SPORTSWEAR G.R. No. L-24295. September 30, 1971
Facts: GGC is the owner of the trademark "Puritan," under Registration No. 10059
issued on November 15, 1962 by the Philippine Patent Office, for assorted men's
wear, such as sweaters, shirts jackets, undershirts and briefs. On March 9, 1964
the Puritan Sportswear Jmvdg

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21
Intellectual Property Law AUF School of Law hundred and fifty-nine, as amended,
otherwise known as the Corporation Law, at the time it brings complaint." In any
event, respondent in the present case is not suing for infringement or unfair
competition under Section 21-A, but for cancellation under Section 17, on one of
the grounds enumerated in Section 4. The first kind of action, it may be stated,
is cognizable by the Courts of First Instance (Sec. 27); the second partakes of an
administrative proceeding before the Patent Office (Sec. 18, in relation to Sec.
8). while a suit under Section 21-A requires that the mark or tradename alleged
to have been infringed has been "registered or assigned" to the suing foreign
corporation, a suit for cancellation of the registration of a mark or tradename
under Section 17 has no such requirement. Provisions:
"Section 17(c) and Section 4(d) of the Trade Law provide respectively as follows:
"SEC. 17. Grounds for cancellation. Any person, who believes that he is or will
be damaged by the registration of a mark or trade-name, may, upon the payment of
the prescribed fee, apply to cancel said registration upon any of the following
grounds: xxx xxx xxx (c) That the registration was obtained fraudulently or
contrary to the provisions of section four, Chapter II thereof; . . ." "SEC. 4.
Registration of trade-marks, trade-names and service-marks which shall be known as
the principal register. The owner of a trade-mark, trade-name or servicemark used
to distinguish his goods, business or services from the goods, business or services
of others shall have the right to register the same on the principal register,
unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade-name which so
resembles a mark or trade-name registered in the Philippines or a mark or trade-
name previously used in the Philippines by another and not abandoned, as to be
likely, when applied to or used in connection with goods, business or services of
the applicant, to cause confusion or mistake or to deceive purchasers; or . . ."

Atty. Eric Recalde LA CHEMISE LACOSTE, S. A. vs. FERNANDEZ and GOBINDRAM HEMANDAS
G.R. Nos. 63796-97. May 21, 1984 Facts: In 1975, Hemandas & Co., a duly licensed
domestic firm applied for and was issued Reg. No. SR-2225 (SR stands for
Supplemental Register) for the trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by
the Philippine Patent Office for use on T-shirts, sportswear and other garment
products of the company. Two years later, it applied for the registration of the
same trademark under the Principal Register. Hemandas & Co. assigned to
respondent Gobindram Hemandas all rights, title, and interest in the trademark
"CHEMISE LACOSTE & DEVICE". On November 21, 1980, the petitioner filed its
application for registration of the trademark "Crocodile Device" (Application
Serial No. 43242) and "Lacoste" (Application Serial No. 43241). The former was
approved for publication while the latter was opposed by Games and Garments On
March 21, 1983, the petitioner filed with the National Bureau of Investigation
(NBI) a letter-complaint alleging therein the acts of unfair competition being
committed by Hemandas and requesting their assistance in his apprehension and
prosecution. Search warrants based on violation of Art. 189 of RPC were issued
against Hemandas Hemandas filed a motion to quash the search warrants and the
same was granted by the respondent court Ratio Decidendi: As early as 1927, this
Court was, and it still is, of the view that a foreign corporation not doing
business in the Philippines needs no license to sue before Philippine courts for
infringement of trademark and unfair competition. Since it is the trade and not
the mark that is to be protected, a trade-mark acknowledges no territorial
boundaries of municipalities or 22

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Intellectual Property Law AUF School of Law states or nations, but extends to every
market where the trader's goods have become known and identified by the use of the
mark. The case filed by petitioner is a criminal case. Since the violation is
against the State, petitioner's capacity to sue would become, therefore, of not
much significance. We cannot allow a possible violator of our criminal statutes to
escape prosecution upon a far-fetched contention that the aggrieved party or victim
of a crime has no standing to sue. upholding the right of the petitioner to
maintain the present suit before our courts for unfair competition or infringement
of trademarks of a foreign corporation, is recognizing our duties and the rights of
foreign states under the Paris Convention for the Protection of Industrial Property
to which the Philippines and France are parties. a treaty or convention is not a
mere moral obligation to be enforced or not at the whims of an incumbent head of a
Ministry. It creates a legally binding obligation on the parties founded on the
generally accepted principle of international law of pacta sunt servanda which has
been adopted as part of the law of our land. petitioner is the owner of the
trademarks "LACOSTE", "CHEMISE LACOSTE", the crocodile or alligator device, and the
composite mark of LACOSTE and the representation of the crocodile or alligator. Any
pretensions of the private respondent that he is the owner are absolutely without
basis The records show that the goodwill and reputation of the petitioner's
products bearing the trademark LACOSTE date back even before 1964 when LACOSTE
clothing apparels were first marketed in the Philippines. To allow Hemandas to
continue using the trademark Lacoste for the simple reason that he was the first
registrant in the Supplemental Register of a trademark used Atty. Eric Recalde in
international commerce and not belonging to him is to render nugatory the very
essence of the law on trademarks and tradenames. Issue of probable cause:
Probable cause has traditionally meant such facts and circumstances antecedent to
the issuance of the warrant that are in themselves sufficient to induce a cautious
man to rely upon them and act in pursuance thereof probable cause "presupposes
the introduction of competent proof that the party against whom it is sought has
performed particular acts, or committed specific omissions, violating a given
provision of our criminal laws True, the lower court should be given the
opportunity to correct its errors, if there be any, but the rectification must be
based on sound and valid grounds. In this case, there was no compelling
justification for the about face. Supplemental Registration A certificate of
registration in the Supplemental Register is not prima facie evidence of the
validity of registration, of the registrant's exclusive right to use the same in
connection with the goods, business, or services specified in the certificate. Such
a certificate of registration cannot be filed, with effect, with the Bureau of
Customs in order to exclude from the Philippines, foreign goods bearing
infringement marks or trade names (Rule 124, Revised Rules of Practice Before the
Phil. Pat. Off. in Trademark Cases) Section 19-A of Republic Act 166 as amended
not only provides for the keeping of the supplemental register in addition to the
principal register but specifically directs that: "The certificates of
registration for marks and trade names registered on the supplemental register
shall be conspicuously different from certificates issued for marks and trade names
23

Jmvdg
Trademark Cases
Intellectual Property Law AUF School of Law registered on the principal register."
The registration of a mark upon the supplemental register is not, as in the case
of the principal register, prima facie evidence of... the validity of
registration; the registrant's ownership of the mark and the registrant's
exclusive right to use the mark. It is not subject to opposition, although it may
be cancelled after its issuance. Neither may it be the subject of interference
proceedings. Registration on the supplemental register is not constructive notice
of registrant's claim of ownership. A supplemental register is provided for the
registration of marks which are not registrable on the principal register because
of some defects prejudicial question The proceedings pending before the Patent
Office involving IPC Co. 1658 do not partake of the nature of a prejudicial
question which must first be definitely resolved. The case which suspends the
criminal prosecution must be a civil case which is determinative of the innocence
or, subject to the availability of other defenses, the guilt of the accused. The
pending case before the Patent Office is an administrative proceeding and not a
civil case. In the case at bar, the Minister of Trade, as 'the competent
authority of the country of registration,' has found that among other well-known
trademarks 'Lacoste' is the subject of conflicting claims. For this reason,
applications for its registration must be rejected or refused, pursuant to the
treaty obligation of the Philippines. Provisions
RPC: Art. 189. Unfair competition, fraudulent registration of trade-mark, trade-
name or service mark, fraudulent designation of origin, and false description.
The penalty provided in the next proceeding article shall be imposed upon:

Atty. Eric Recalde

1. Any person who, in unfair competition and for the purposes of deceiving or
defrauding another of his legitimate trade or the public in general, shall sell his
goods giving them the general appearance of goods of another manufacturer or
dealer, either as to the goods themselves, or in the wrapping of the packages in
which they are contained or the device or words thereon or in any other features of
their appearance which would be likely to induce the public to believe that the
goods offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer or shall give other persons a chance or opportunity to do
the same with a like purpose. 2. Any person who shall affix, apply, annex or use in
connection with any goods or services or any container or containers for goods a
false designation of origin or any false description or representation and shall
sell such goods or services. 3. Any person who by means of false or fraudulent
representation or declarations orally or in writing or by other fraudulent means
shall procure from the patent office or from any other office which may hereafter
be established by law for the purposes the registration of a trade-name, trade-mark
or service mark or of himself as the owner of such trade-name, trade-mark or
service mark or an entry respecting a trade-name, trade-mark or service mark.
Section 21-A of Republic Act No. 166 "Sec. 21-A. Any foreign corporation or
juristic person to which a mark or tradename has been registered or assigned under
this Act may bring an action hereunder for infringement, for unfair competition, or
false designation of origin and false description, whether or not it has been
licensed to do business in the Philippines under Act numbered Fourteen Hundred and
Fifty-Nine, as amended, otherwise known as the Corporation Law, at the time it
brings the complaint; Provided, That the country of which the said foreign
corporation or juristic person is a citizen, or in which it is domiciled, by
treaty, convention or law, grants a similar privilege to corporate or juristic
persons of the Philippines." Rule I, Sec 1 (g) Omnibus Investment Code(1) A
foreign firm which does business through middlemen acting on their own names, such
as indentors, commercial brokers or commission merchants, shall not be deemed doing
business in the Philippines. But such indentors, commercial brokers or commission
merchants shall be the ones deemed to be doing business in the Philippines. "(2)
Appointing a representative or distributor who is domiciled in the Philippines,
unless said representative or distributor has an independent status, i.e., it
transacts business in its name and for its account, and not in the name or for the
account of a principal. Thus, where a foreign firm is represented by a person or
local company which does not act in its name but in the name of the foreign firm,
the latter is doing business in the Philippines."

Jmvdg

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24
Intellectual Property Law AUF School of Law
Section 5 of Rule 111 of the Rules of Court "A petition for the suspension of the
criminal action based upon the pendency of a pre-judicial question in a civil case,
may only be presented by any party before or during the trial of the criminal
action."

Atty. Eric Recalde KABUSHI KAISHA ISETAN vs. IAC and ISETANN DEPARTMENT STORE, INC.
G.R. No. 75420. November 15, 1991 Facts: Petitioner's contention: Kabushi Kaisha
Isetan 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. It
states that the trademark is a combination of "Ise" taken from "Iseya" the first
name of the rice dealer in Kondo, Tokyo in which the establishment was first
located and "Tan" which was taken from "Tanji Kosuge the First". The trademark
"Isetan" and "Young Leaves Design" were registered in Japan covering more than 34
classes of goods. On October 3, 1983, the petitioner applied for the registration
of "Isetan" and "Young Leaves Design" with the Philippine Patent Office under
Permanent Serial Nos. 52422 and 52423 respectively, Defendant's contention:
Private respondent, Isetann Department Store, on the other handclaims 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 suffix "Tann"
means an altar, the place of offering in Chinese and this was adopted to harmonize
the corporate name and the corporate logo of two hands in cup that symbolizes the
act of offering to the Supreme Being for business blessing. respondent registered
"Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine
Patent Office under SR. Reg. Nos. 4701 and 4714, respectively, as well as with the
Bureau of Domestic Trade under Certificate of Registration No. 32020. actions On
November 28, 1980, the petitioner filed with the Phil. Patent Office two (2)
petitions for the cancellation of Certificates of 25

PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., vs. IAC and MIL-ORO MANUFACTURING
CORPORATION G.R. No. 75067 February 26, 1988 Facts: Puma filed a complaint for
infringement of patent or trademark with a prayer for the issuance of a writ of
preliminary injunction against Mil-Oro On July 31, 1985, the trial court issued a
temporary restraining order, restraining the private respondent and the Director of
Patents from using the trademark "PUMA' or any reproduction, counterfeit copy or
colorable imitation thereof, and to withdraw from the market all products bearing
the same trademark. the Court of Appeals reversed the order of the trial court
and ordered the respondent judge to dismiss the civil case filed by the petitioner
and further held that petitioner has no legal capacity to sue under Sec. 21A of RA
166 Ratio Decidendi: supra, as in cases of La Chemise Lacoste and Converse Rubber
Corp. issue of lis pendens for lis pendens to be a valid ground for the dismissal
of a case, the other case pending between the same parties and having the same
cause must be a court action. Action means an ordinary suit in a court of justice
by which one party prosecutes another for the enforcement or protection of alright,
or the prevention or redress of a wrong. Every other remedy is a special
proceeding. the Court of Appeals likewise erred in holding that the requisites of
lis pendens were present so as to justify the dismissal of the case

Jmvdg

Trademark Cases
Intellectual Property Law AUF School of Law Supplemental Registration Nos. SR-4717
and SR-4701 the petitioner also filed with the Securities and Exchange Commission
(SEC) a petition to cancel the mark "ISETAN" as part of the registered corporate
name of Isetann Department Store, Inc. this was however denied by the SEC
Director of Patents dismissed the suit for cancellation of registration filed by
petitioner IAC likewise dismissed the case Ratio Decidendi: A fundamental
principle of Philippine Trademarks Law is that actual use in commerce in the
Philippines is a prerequisite to the acquisition of ownership over a trademark or a
tradename. Adoption alone of a trademark would not give exclusive right thereto.
Such right grows out of their actual use. Adoption is not use. One may make
advertisements, issue circulars, give out price lists on certain goods; but these
alone would not give exclusive right of use. For trademark is a creation of use.
The records show that the petitioner 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. Under the law, it has no
right to the remedy it seeks. Any goodwill, reputation, or knowledge regarding
the name Isetann is purely the work of the private respondent. Isetann Department
Store, Inc. is the name of a store and not of products sold in various parts of the
country. There is no product with the name "Isetann" popularized with that brand
name in the Philippines. The records show that among Filipinos, the name cannot
claim to be internationally well-known. The mere origination or adoption of a
particular tradename without actual use thereof in the market is insufficient to
give Jmvdg Atty. Eric Recalde any exclusive right to its use Indeed, the
Philippines is a signatory to this Treaty and, hence, we must honor our obligation
thereunder on matters concerning internationally known or well known marks.
However, this Treaty provision clearly indicated the conditions which must exist
before any trademark owner can claim and be afforded rights such as the Petitioner
herein seeks and those conditions are that: the mark must be internationally
known or well known; the subject of the right must be a trademark, not a patent
or copyright or anything else; the mark must be for use in the same or similar
kinds of goods, and the person claiming must be the owner of the mark.
provisions:
Sec. 2 RA 5343 SECTION 2. Appeals to Court of Appeals. Appeals to the Court of
Appeals shall be filed within fifteen (15) days from notice of the ruling, award,
order, decision or judgment or from the date of its last publication, if
publication is required by law for its effectivity; or in case a motion for
reconsideration is filed within that period of fifteen (15) days, then within ten
(10) days from notice or publication, when required by law, of the resolution
denying the motion for reconsideration. No more than one motion for reconsideration
shall be allowed any party. If no appeal is filed within the periods here fixed,
the ruling, award, order, decision or judgment shall become final and may be
executed as provided by existing law. RA 166 SECTION 2. & Section 2-A see page 11
herein

PHILIP MORRIS, et. Al vs. CA and FORTUNE TOBACCO CORP G.R. No. 91332. July 16, 1993
Facts: petitioner's contention: Philip Morris and the 2 other companies as
subsidiaries of Philip Morris. The last 2 are suing on isolated transactions As
registered owners of "MARK VII", "MARK TEN", and "LARK" per certificates of
registration issued by the Philippine Patent 26

Trademark Cases
Intellectual Property Law AUF School of Law Office on April 26, 1973, May 28, 1964,
and March 25, 1964, plaintiffs-petitioners asserted that defendant Fortune Tobacco
Corporation has no right to manufacture and sell cigarettes bearing the allegedly
identical or confusingly similar trademark "MARK" in contravention of Section 22 of
the Trademark Law, and should, therefore, be precluded during the pendency of the
case from performing the acts complained of via a preliminary injunction
defendant's contention: Fortune Tobacco Corporation admitted petitioners'
certificates of registration with the Philippine Patent Office subject to the
affirmative and special defense on misjoinder of party plaintiffs it claims that
the word mark is a common word which cannot be exclusively appropriated Ratio
Decidendi: there is no proof whatsoever that any of plaintiffs' products which
they seek to protect from any adverse effect of the trademark applied for by
defendant, is in actual use and available for commercial purposes anywhere in the
Philippines. Secondly, as shown by plaintiffs' own evidence furnished by no less
than the chief of Trademarks Division of the Philippine Patent Office, Atty.
Enrique Madarang, the abandonment of an application is of no moment, for the same
can always be refiled. He said there is no specific provision in the rules
prohibiting such refiling The petitioner will not be prejudiced nor stand to
suffer irreparably as a consequence of the lifting of the preliminary injunction
considering that they are not actually engaged in the manufacture of the cigarettes
with the trademark in question and the filing of the counterbond will amply answer
for such damages. a foreign corporation not doing business in the Philippines may
have the right to sue before Philippine Courts, but existing adjective axioms
require that qualifying Atty. Eric Recalde circumstances necessary for the
assertion of such right should first be affirmatively pleaded it is not sufficient
for a foreign corporation suing under Section 21-A to simply allege its alien
origin. Rather, it must additionally allege its personality to sue. Relative to
this condition precedent, it may be observed that petitioners were not remiss in
averring their personality to lodge a complaint for infringement especially so when
they asserted that the main action for infringement is anchored on an isolated
transaction Given these confluence of existing laws amidst the cases involving
trademarks, there can be no disagreement to the guiding principle in commercial law
that foreign corporations not engaged in business in the Philippines may maintain a
cause of action for infringement primarily because of Section 21-A of the Trademark
Law when the legal standing to sue is alleged, which petitioners have done in the
case at hand. the fact that international law has been made part of the law of the
land does not by any means imply the primacy of international law over national law
in the municipal sphere. Under the doctrine of incorporation as applied in most
countries, rules of international law are given a standing equal, not superior, to
national legislative enactments A fundamental principle of Philippine Trademark Law
is that actual use in commerce in the Philippines is a prerequisite to the
acquisition of ownership over a trademark or a tradename. In other words,
petitioners may have the capacity to sue for infringement irrespective of lack of
business activity in the Philippines on account of Section 21-A of the Trademark
Law but the question of whether they have an exclusive right over their symbol as
to justify issuance of the controversial writ will depend on actual use of their
trademarks in the Philippines in line

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Trademark Cases

27
Intellectual Property Law AUF School of Law with Sections 2 and 2-A of the same
law. It is thus incongruous for petitioners to claim that when a foreign
corporation not licensed to do business in the Philippines files a complaint for
infringement, the entity need not be actually using its trademark in commerce in
the Philippines. Such a foreign corporation may have the personality to file a suit
for infringement but it may not necessarily be entitled to protection due to
absence of actual use of the emblem in the local market. In view of the explicit
representation of petitioners in the complaint that they are not engaged in
business in the Philippines, it inevitably follows that no conceivable damage can
be suffered by them not to mention the foremost consideration heretofore discussed
on the absence of their "right" to be protected. Petition dismissed separate
opinion: Justice FELICIANO: dissenting issues: is there a clear legal right to
the relief asked by petitioners in the form of a preliminary injunction to restrain
private respondent from manufacturing, selling and distributing cigarettes under
the trademark "MARK"? are private respondent's acts complained of by petitioners
causing irreparable injury to petitioners' rights in the premises? Ratio: -I the
legal effects of registration of a trademark in the Principal Register in the
Office of the Director of Patents. Section 20 of R.A. No. 166, as amended, sets out
the principal legal effects of such registration: "Sec. 20. Certificate of
registration prima facie evidence of validity. A certificate of registration of a
mark or trade name shall be prima facie evidence of the validity of the
registration, the registrant's ownership of the mark or trade name, and of the
registrant's exclusive right to use the Jmvdg Atty. Eric Recalde same in
connection with the goods, business or services specified in the certificate,
subject to any conditions and limitations stated therein." Registration in the
Principal Register gives rise to a presumption of the validity of the registration,
the registrant's ownership of the mark, and his right to the exclusive use
thereof . There is no such presumption in registrations in the Supplemental
Register. Registration in the Principal Register is limited to the actual owner of
the trademark (Unno Commercial Enterprises v. Gen. Milling Corp., 120 SCRA 804
[1983]) and proceedings therein pass on the issue of ownership, which may be
contested through opposition or interference proceedings, or after registration, in
a petition for cancellation. Registration in the Principal Register is constructive
notice of the registrant's claims of ownership, while registration in the
Supplemental Register is merely proof of actual use of the trademark and notice
that the registrant has used or appropriated it. registration in the Principal
Register is a basis for an action for infringement, while registration in the
Supplemental Register is not. In application for registration in the Principal
Register, publication of the application is necessary. This is not so in
applications for registration in the Supplemental Register. Certificates of
registration under both Registers are also different from each other. Proof of
registration in the Principal Register may be filed with the Bureau of Customs to
exclude foreign goods bearing infringing marks while it does not hold true for
registrations in the Supplemental Register." a mere application for registration
cannot be a sufficient reason for denying injunctive relief, whether preliminary or
definitive. - II foreign corporations and corporations domiciled in a foreign
country are not disabled from bringing suit in Philippine 28

Trademark Cases
Intellectual Property Law AUF School of Law courts to protect their rights as
holders of trademarks registered in the Philippines. Article 2, paragraph 1 of the
Paris Convention embodies the principle of "national treatment" or "assimilation
with nationals," one of the basic rules of the Convention. Article 2 paragraph 2 of
the Paris Convention restrains the Philippines from imposing a requirement of local
incorporation or establishment of a local domicile as a pre-requisite for granting
to foreign nationals the protection which nationals of the Philippines are entitled
to under Philippine law in respect of their industrial property rights. a corporate
national of a member country of the Paris Union is entitled to bring in Philippine
courts an action for infringement of trademarks, or for unfair competition, without
necessity for obtaining registration or a license to do business in the
Philippines, and without necessity of actually doing business in the Philippines.
That petitioners are not doing business and are not licensed to do business in the
Philippines, does not by any means mean either that petitioners have not complied
with the requirements of Section 12 of R.A. No. 166 relating to affidavits of
continued use, or that petitioners' trademarks are not in fact used in trade and
commerce in the Philippines. - III That petitioners are not doing business and are
not licensed to do business in the Philippines, does not necessarily mean that
petitioners are not in a position to sustain, and do not in fact sustain, damage
through trademark infringement on the part of a local enterprise. The damage which
petitioners claim they are sustaining by reason of the acts of private respondents,
are not limited to impact upon the volume of actual imports into the Philippines of
petitioners' cigarettes. Petitioners urge that private respondent's Atty. Eric
Recalde use of its confusingly similar trademark "MARK" is invasive and destructive
of petitioners' property right in their registered trademarks Modern authorities on
trademark law view trademarks as symbols which perform three (3) distinct
functions: first, they indicate origin or ownership of the articles to which they
are attached; second, they guarantee that those articles come up to a certain
standard of quality; third, they advertise the articles they symbolize. "Modern
law recognizes that the protection to which the owner of a trade-mark is entitled
is not limited to guarding his goods or business from actual market competition
with identical or similar products of the parties, but extends to all cases in
which the use by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusing of source, as where prospective purchasers would be misled into
thinking that the complaining party has extended his business into the field (see
148 ALR 56 et seq; 52 Am. Jur. 576) or is in any way connected with the activities
of the infringer; or when it forestalls the normal potential expansion of his
business Damages are irreparable within the meaning of the rule relative to the
issuance of injunction where there is no standard by which their amount can be
measured with reasonable accuracy

Jmvdg

Trademark Cases

29