(1) ANG V. TEODORO (G.R. NO. L-48226) article was his product.
article was his product. We have said that the phrase “Ang Tibay,” being neither
FACTS: Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark
and tradename in the manufacture and sale of its slippers, shoes and indoor
baseballs when he formally registered it.
- Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’ for its
products of pants and shirts. Respondent moved to cancel the registration of
petitioner’s mark. The trial court found for petitioner Ang. CA reversed the judgment.
Petitioner argues the validity of the mark being descriptive; that it had not acquired
secondary meaning in favor of respondent; and that there can be no
infringement/unfair competition because the goods are not similar.
ISSUES:
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.
(3) Whether or not there is trademark infringement and/or unfair competition between
unrelated goods.
HELD:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength
or durability. For instance, one who tries hard but fails to break an object exclaims,
“Ang tibay!” (How strong!”) The phrase “ang tibay” is never used adjectively to define
or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” is
never used adjectively to define or describe an object. One does not say, “ang tibay
sapatos” or “sapatos ang tibay” to mean “durable shoes,” but “matibay na sapatos” or
“sapatos na matibay.” From all of this we deduce that “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 trademark or tradename. In this
connection we do not fail to note that when the petitioner herself took the trouble and
expense of securing the registration of these same words as a trademark of her
products she or her attorney as well as the Director of Commerce was undoubtedly
convinced that said words (Ang Tibay) were not a descriptive term and hence could
be legally used and validly registered as a trademark.
(2) NO. In view of the conclusion we have reached upon the first assignment of error,
it is unnecessary to apply here the doctrine of “secondary meaning” in trade-mark
parlance. This doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article of 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
1|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
geographic nor descriptive, was originally capable of exclusive appropriation as a
trade-mark. But were it not so, the application of the doctrine of secondary meaning
made by the Court of Appeals could nevertheless be fully sustained because, in any
event, by respondent’s long and exclusive use of said phrase with reference to his
products and his business, it has acquired a proprietary connotation.
(3) YES. In the present state of development of the law on Trade-Marks, Unfair
Competition, and Unfair Trading, the test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion as to the
origin of the goods of the second user. 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. The Court of Appeals found in this case that by uninterrupted and exclusive
use since 1910 of respondent’s registered trade-mark on slippers and shoes
manufactured by him, it has come to indicate the origin and ownership of said 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.
(2) LIM HOA v. Director of Patents
FACTS: Petitioner Lim Hoa filed with the Patent office an application for the
registration of a trademark, consisting of a representation of 2 midget roosters in an
attitude of combat with the word “Bantam” printed above them. This he claimed that
he had used the said trademark on food seasoning product.
- The application was published in the Official Gazette and was circulated in 1953.
The Agricom Development Co. opposed the application stating that the trademark
sought to be registered was confusingly similar to its register mark consisting of a hen
with the words “Hen Brand” and “Marca Manok” which was also used in a food
seasoning product before the use of the trademark by the applicant.
- Since 1946, Advincula Family has been using the trademark. In 1948, an addition
was made to the brand with words “Ve-Tsin”, “Hen Brand” & “Marca Manok” and
since then labels were used in different colors but bearing the same representation of
a hen.
Director of Patents: He found and held that to allow registration of the applicant’s
trademark would likely cause confusion or mistake or deceive purchasers and he
refused registration of said trademark.
ISSUE: Whether or not there is an infringement of trademark.
HELD: YES. In cases of infringement of trademarks, the main question is whether the
use of the marks involved would likely to cause confusion or mistakes in the mind of
the public or deceive purchaser. In the case at bar, there is such similarity between
the 2 brands as to cause confusion in the mind of the public that buys the food
seasoning product on the strength and on the indication of the trademark or brand
identifying or distinguishing the same.
- The 2 roosters appearing on the trademark of the applicant and the hen appearing
on the trademark of the oppositor, although of different sexes, belong to the same
family of chicken, known as manok in all the principal dialects of the Philippines. The
similarity may compel a person to buy one product thinking that it is the other.
Moreover, with all the animals in the ocean, air and land, the court couldn’t phatom
why the plaintiff chose 2 roosters facing each other knowing that a similar trademark
is used by another establishment producing the same product.
(3) CHUANCHOW SOY & CANNING CO. vs DIRECTOR OF PATENTS AND
VILLAPANA
FACTS: Petitioner Chuanchow Soy & Canning Co. and respondent Rosario
Villapania are engaged in the manufacture and sale of soy sauce. Since 1950,
petitioner had been using as trade mark the words "Carp Brand Soy", printed in a
distinctive style of lettering above the drawing of a fish to distinguish its product, on
labels affixed directly to the bottles containing soy sauce, and on tissue paper in
which these bottles were wrapped. The Patent Office issued Trademark Registration
Certificate 4384 to it for its aforesaid trademark.
Respondent Villapania since 1956 had been using as trademark of her soy sauce the
name of "Bangos Brand" written in the same distinctive style of lettering as that of the
petitioner's "Carp Brand", above the drawing of the fish similar to the fish drawing on
the trademark of petitioner, on labels also attached to the bottles containing her soy
sauce, and the bottles were wrapped also in tissue paper bearing a similar design.
On October 12, 1956, Villapania applied for registration of her trademark as above-
described. Upon examination of the trademark, the examiner of the Office of the
Director of Patents made the following ruling:
2|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
1. Examiner has taken into consideration a previously registered mark:
CARP BRAND & fish representation for soy sauce of the Chuanchow
Soy & Caning Co., Reg. No. 4384 dated October 27, 1953, and found
that the fish representation closely resembles to applicant's mark as
presented in the drawing. In view thereof, the applicant must submit
new drawings and facsimiles for the word: "BANGOS BRAND" only as
shown in the labels submitted, excluding SOY and fish representation.
Respondent Villapania submitted a drawing of the word "Bangos Brand" only, the
same was published in the Official Gazette. However, she continued and is
supposedly still continuing to use the labels and wrappers Exhibits D and E on the
bottles containing her product, which as already stated, included not only "Bangos
Brand" but also the word "Soy" above the drawing of the fish. So, on October 9, 1957,
petitioner company filed its opposition to respondent's application. The case was
submitted on a stipulation of facts made verbally by them during the hearing.
The case was submitted on a stipulation of facts made verbally by them during the
hearing. Respondent Director of Patents rendered a decision dismissing petitioner's
opposition to the application above-stated, which decision is now on appeal.
ISSUE: W/N the application for registration of respondent must denied.
HELD: Yes, the application for registering Respondent’s trademark must be
denied as it resembles to Petitioner’s trademark and would likely to cause
confusion.
As in the present case, one applies for the registration of a trademark or label which
is almost the same or very closely resembles one already used and registered by
another, the application should be rejected and dismissed outright, even without any
opposition on the part of the owner and user of a previously registered label or
trademark, this not only to avoid confusion on the part of the public, but also to protect
an already used and registered trademark and an established goodwill. There should
be no halfway measures, as was done in this case by the ruling of the examiner who
directed the respondent to amend or modify the label or trademark she sought
to register by eliminating some portions thereof. As a result, although the word
"Soy" and the drawing of a fish were eliminated, still, the word "Bangos" and the word
"Brand" which are similar to the style of lettering of the corresponding words in the
label, Exhibit B, of petitioner, could still create confusion or doubt in the mind of
prospective purchasers, to say nothing of the fact that the words "Carp" and "Bangos"
both indicate fish, and the additional fact that both trademarks and labels refer to or
advertize the same product, namely, soy sauce.
Why the respondent in the present case could not have selected as the principal
figure in her label some animal living on the surface of the earth, like a dog, cat,
monkey, etc., or an article or furniture, like a table, chair, or if she was determined to
select a creature living in the sea, that of a crab, lobster, or octopus, is hard to
understand. She had to select fish, which as already stated, she pictured in her label
similar in size, shape and form as that appearing in the already used and registered
label of petitioner. The Director of Patents should as much as possible discourage all
attempts at imitation of labels already used and registered, as already stated, to avoid
confusion, to protect the public from purchasing the wrong article or brand and also to
give protection to those who have established goodwill, reputation and name in the
manufacture and sale of their products by means of a label of long standing and use
and duly registered.
Another circumstance against the registration of the trademark or label of
respondent is that she would appear not to have used the amended or modified
label she presented for registration, but continued to use the original label or
trademark which was refused registration by the Director of Patents. This
indicates not only her desire to continue taking advantage of the goodwill acquired
and established by the petitioner, but it equally shows that she had not used the label
or trademark now being applied for by her, despite the fact that the law requires at
least two months previous use prior to application for registration.
(4) ASARI YOKO CO., LTD. V. KEE BOC
FACTS: Respondent, Kee Boc, a Chinese citizen, filed a petition for the registration
of the trade mark "RACE" and design to be used in shirts and undershirts
manufactured by him. He claims to have first used the trade mark in commerce on
May 17, 1952, basing the design on a movie picture he had seen with Domingo
Cabatingan, his employee, who corroborated to this fact.
On the other hand, this was opposed by Petitioner, Asari Yoko Co., Ltd., a
Japanese corporation, on the ground that it is the owner if the trade mark because the
same is registered in Japan and in the Philippines, registration in the latter having
been made in August, 1929, under the provisions of Act No. 666 and is valid for 30
years; that the trade mark has been in continuous use in commerce in, and trade with
the Philippines since its registration until the early part of 1942, and then again after
the liberation of the Philippines up to the present; that the trade mark was ever
abandoned by the registrant and that it will be damaged by the registration of the
same.
 Director of Patents - dismissed the opposition and adjudged Petitioner as the
owner the trade mark.
ISSUE: Who is "first user" of the subject trade dent Kee Boc mark in the Philippines?
HELD: The Court ruled that Petitioner was the first user of the trade mark in
question in the Philippines. The very facsimile of the trade mark filed by the
Respondent before the director in connection with his petition for registration, was
taken from a mark actually used on goods imported from Japan to the Philippines,
except that the former does not contain the inscriptions "REGISTERED TRADE
3|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
MARK" and "Made in Occupied Japan", because the inscriptions are covered by a
thin piece of paper pasted on the inscriptions. The trade mark sought to be registered
already belongs to Kojiro Asari, as shown by the certificate of registration thereof in
Tokyo, Japan on February 27, 1987 and June 11, 1937. The trade mark sought to be
registered is actually used an boxes of shirts and undershirts imported to the
Philippines from Japan. Shirts and undershirts bearing said trade mark appear to
have been imported to the Philippines as early as 1949. Shirts and undershirts
bearing said trade mark were also imported by Wan Lian Trading of Manila
subsequently, as evidenced by shipping document dated October 27, 1953, and
shipping documents dated September 11, 1953
5. MEAD JOHNSON and COMPANY, petitioner, vs. N. V. J.
VAN DORP, LTD., ET AL., respondents
FACTS: N. V. J. Van Dorp, Ltd. a corporation organized under the laws of
Netherlands, located and doing business at Gouda, Netherlands, filed an application
for the registration of the trademark “ALASKA and pictorial representation of a Boy’s
Head within a rectangular design (ALASKA disclaimed).” The trademark was
published in an issue of the Official Gazette which was officially released on June 5,
1956.
- Mead Johnson & Company, a corporation organized under the laws of Indiana,
U.S.A., being the owner of the trademark “ALACTA” used for powdered half­skim
milk, which was registered with the Patent Office on June 12, 1951, filed an
opposition on the ground that it will be damaged by the said registration as the
trademark “ALASKA” and pictorial representation of a Boy’s Head within a rectangular
design (ALASKA disclaimed), used for milk, milk products, dairy products and infant’s
foods, is confusingly similar to its trademark “ALACTA”.
- The applicant alleged that its trademark and product “ALASKA” are entirely different
from oppositor’s trademark and product “ALACTA”, since applicant’s product covers
milk, milk products, dairy products and infant’s foods which fall under Class 47 Foods
and Ingredients of Foods, while oppositor’s products cover pharmaceutical
preparations for nutritional needs which fall under Class 6, which refers to Medicines
and Pharmaceutical Preparations.
- Director of the Patent Office: Dismissing the opposition and holding that the
trademark sought to be registered does not sufficiently resemble oppositor’s mark.
- Petitioner's contention: In appearance and sound the trademarks “ALASKA” and
“ALACTA” are sufficiently close. The three vowels are the same in both and the public
would pronounce them short accenting on the second syllable. Both marks have the
same number of letters and the vowels are placed on th same position. The general
form and sound of the words are of marked similarity so as to suggest the likelihood
of confusion. While “ALACTA” and “ALASKA” differ entirely in meaning, they are
confusingly similar in appearance. The three letter prefixes of both marks are
identical. Both marks end with the same letter “A”. The only difference lies in the
letters “CT” in “ALACTA” and “SK” in “ALASKA”
Respondent: The two marks in their entirety and the goods they cover should be 6. CHUA CHE, petitioner, vs. PHILIPPINES PATENT OFFICE and SY
considered and carefully compared to determine whether petitioner’s opposition to the TUO, respondents
registration is capricious or well-taken.

ISSUE: Whether the mark which respondent seeks to register resembles petitioner’s FACTS: Under date of October 30, 1958, Chua Che presented with the Philippines
mark as to be likely when applied to the goods to cause confusion or mistake or to Patent Office a petition praying for the registration in his favor the trade name "X-7".
deceive purchasers. The corresponding declaration, which was under oath, contained, among others, the
following:
Petitioner Respondent
3. That he believes himself to be the lawful owner of the trademark sought to
Size of one pound container three sizes: 14-ounce tin of full
containers condensed full cream milk; be registered.
14-1/2-ounce tin of evaporated milk;
and 6- ounce tin of evaporated milk. 4. That the said trademark is in actual use in commerce in or with the
Philippines not less than two months before this application is filed.

Color one single background
color, to wit: light blue;
the other has two
background colors, pink
and white
Mark ALACTA” has only the
first letter capitalized and
is written in black.
two color bands, yellowish white and
red.
“ALASKA” has all the letters capitalized
written in white except that of the
condensed full cream milk which is in
red.
5. That no other person, partnership, corporation, or association, to the best
of his knowledge and belief, has the right to use said trademark in the
Philippines, either in the identical form or in any such near resemblance
thereto as might be calculated to deceive.
Under date of July 6, 1959, an Examiner of the Department of Commerce and
Industry, submitted a report recommending the allowance of the application, which
report was approved by the Supervising TM Examiner. After the Notice of allowance
was published in the Official Gazette, as required, respondent Sy Tuo presented a
"Notice of Opposition," dated October 15, 1959, anchoring said opposition on the
following allegations:

HELD: NO. The trademarks in their entirety as they appear in the respective labels
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.
Thus we find the following dissimilarities in the two marks:
As per Certificate of Registration, their Goods:
1. The registration of the trademark "X-7" as applied for by CHUA CHE will
not only violate the rights and interests of the Oppositor over his registered
trademark "X-7" covered by Certificate of Registration No. 5,000, issued
April 21, 1951, but will also tend to mislead the purchasing public and make
it convenient for unscrupulous dealers to pass off the goods of the applicant
CHUA CHE, for those of the oppositor SY TUO, to the injury of both the
oppositor and the public.

Petitioner
cover medicinal and pharmaceutical
preparations that are to be used as
prescribed by physicians.
Respondent 2. The registration of the said trademark "X-7" in the name of CHUA CHE
will be in violation of, and will run counter to, Section 4 (d) of Republic Act
cover “milk, milk products, dairy products No. 166, as amended, because it is confusingly similar to the trademark "X-
and infant’s foods” 7" covered by Registration No. 5,000 previously registered to, and being
used by the oppositor and is not abandoned.

4|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
Attached to the Opposition were labels (samples) being used by oppositor on his
products, which clearly show "X-7".
Petitioner herein presented an Answer to Notice of Opposition, claiming
among others that the grounds of opposition are not correct, since although
it is admitted that "X-7" is registered in the name of oppositor, said
trademark is not being used on soap, but purely toilet articles. After the
presentation of the Answer the case was heard, wherein the parties
presented their respective evidence, both testimonial and documentary.
The Director of Patents rendered judgment on January 18, 1961, the pertinent
portions of which read:
Based on those facts there is no question that opposer's first use of the
trademark X-7 on July 31, 1953, is prior to applicant's first use of the mark
on June 10, 1957.
ISSUE: WON it was error for the Director to conclude that opposer SY TUO had
priority to use the trademark in question, and that the use by appellant of the
trademark "X-7" on granulated soap to be manufactured and sold by him, would likely
mislead purchasers.
HELD: The fact that appellee has not yet used the trademark "X-7" on granulated
soap, the product on which appellant wants to use the said trademark. The
circumstance of non-actual use of the mark on granulated soap by appellee, does not
detract from the fact that he has already a right to such a trademark and should,
therefore, be protected. The observation of the Director of Patents to the effect that
"the average purchasers are likely to associate X-7 laundry soap with X-7 perfume,
lipstick and nail polish or to think that the products have common origin or
sponsorship," is indeed well taken. It has been pointed out by appellant that the
product upon which the trademark X-7 will be used (laundry soap) is different from
those of appellee's, and therefore no infringement and/or confusion may result. We
find no merit in the above contention, for it has been held that 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.
(Application of Sylvan Sweets Co., 205 F. 2nd, 207.) The products of appellee are
common household items nowadays, in the same manner as laundry soap. The
likelihood of purchasers to associate those 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
5|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
that the registration of said trademark in favor of applicant-appellant should be
denied.
(7) OPERATORS, INC v. DIRECTOR OF PATENTS, ET.AL.
FACTS: Petitioner, a domestic corporation, applied to Philippine Patent Office for
registration of AMBISCO as a trademark for its locally manufactured candy products.
It has been using the trademark since May 1956 by virtue of 2 contracts with
American Biscuit Company.
- The National Biscuit Company opposed the application having previously registered
NABISCO as a trademark for it own bakery goods. This corporation (oppositor) is
organized in the U.S. and had the trademark registered in the Philippines since 1948
under the last trademark law.
ISSUES:
(1) Whether or not the 2 trademarks are so similar to each other as to cause
confusion. Mistake or deception of purchasers;
(2) Whether or not the applicant had a right in the first place to apply for registration of
AMBISCO as a trademark.
HELD:
(1) YES. The Director of Patents denied the application. The Court finds no cogent
reason to disagree with the Director considering the similarities in appearance and
sound between the marks AMBISCO and NABISCO, the nature and similarity of the
products of the parties together with the facts that the opposer’s NABISCO has been
used in commerce for 55 years in the Philippines before AMBISCO was adopted by
the applicant, confusion is likely.
-The test of infringement is to be determined by dominancy. The dissimilarity in size,
form and color of the label and the lace where applied are not conclusive. If the
competing label is likely to result confusion and deception, there is infringement. In
this case, the similarity in sound of AMBISCO and NABISCO causes confusion.
(2) NO. Under Section 2 of the Republic Act No. 166, asa mended by RA No. 865,
trademarks, tradenames and service marks, owned by persons, corporations,
partnerships or associations domiciled in the Philippines or in any foreign country may
be registered here provided certain conditions enumerated in the same section are
complied with.
- The right to register is based on ownership. In the case of trademark AMBISCO, the
evidence shows that it is owned by the American Biscuit Co., Inc. and not by the
petitioner. Such is evidenced by a certification signed jointly by Vargas and Eu Cha
Leh, presidents of said corporations.
(8) BRISTOL MYERS CO. vs DIRECTOR OF PATENT
FACTS: Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on
January 6, 1959 an opposition to the application. Said oppositor is the owner in the
Philippines of the trademark "BUFFERIN" under Certificate of Registration No. 4578
issued by the Philippine Patent Office on March 3, 1954. Its trademark is also
registered in the United States under Certificate of Registration No. 566190 issued on
November 4, 1952. It was first used in the Philippines on May 13, 1953. The product
covered by "BUFFERIN" also belongs to Class 6, Medicines and Pharmaceutical
Preparations. Designated as "Antacid analgesic", it is intended for relief in cases of
"simple headaches, neuralgia, colds, menstrual pain and minor muscular aches."
The thrust of oppositor's contention was that the registration of the applicant's
trademark "BIOFERIN would violate its rights and interests in its registered trademark
"BUFFERIN" as well as mislead and confuse the public as to the source and origin of
the goods covered by the respective marks, in view of the allegedly practically the
same spelling, pronunciation and letter-type design of the two trademarks covering
goods of the same class.
Parties filed a joint petition stipulating as to the facts and submitting the case upon the
issue of whether or not, considering all the factors involved, in both trademarks — as
the parties would discuss in their memoranda,— there will be such confusing
similarity between the two trademarks as will be likely to deceive the purchasing
public.
The Director of Patents rendered a decision granting the petition for registration and
dismissing the opposition, on the ground that, all factors considered the trademarks in
question are not confusingly similar, so that the damage feared by the oppositor will
not result.
Hence, this petition.
ISSUE: W/N trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in
their respective labels, confusingly similar.
HELD: No, the trademarks are not confusingly similar.
In determining whether two trademarks are confusingly similar, the test is not simply
to take their words and compare the spelling and pronunciation of said words. Rather,
it is to consider the two marks in their entirety, as they appear in the respective labels,
in relation to the goods to which they are attached.
6|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
Applying this test to the trademarks involved in this case, it is at once evident that the
Director of Patents did not err in finding no confusing similarity. For though the words
"BIOFERIN" and "BUFFERIN" have the same suffix and similar sounding prefixes,
they appear in their respective labels with strikingly different backgrounds and
surroundings, as to color , size and design.
Accordingly, taken as they will appear to a prospective customer, the trademark in
question are not apt to confuse. Furthermore, the product of the applicant is
expressly stated as dispensable only upon doctor's prescription, while that of
oppositor does not require the same. The chances of being confused into purchasing
one for the other are therefore all the more rendered negligible. Although oppositor
avers that some drugstores sell "BIOFERIN" without asking for a doctor's
prescription, the same if true would be an irregularity not attributable to the
applicant, who has already clearly stated the requirement of a doctor's prescription
upon the face of the label of its product.
9. CHUNG TE v. NG KIAN GIAB
FACTS: Petitioner filed his application alleging therein that since January 8, 1951 he
had been using the trademark on undershirts (de hilo), T-shirts, and baby dresses.
Because of the confusing similarity between said trademark and that applied for on
July 16, 1957 by Respondent, Ng Kian Giab, interference was declared as existing
between the two applications. Respondent stated in his application that he had been
using the trademark on undershirts since December 6, 1955.
At the hearing both parties presented testimonial as well as documentary
evidence to prove their respective claims of priority of adoption and use.
 Director of Patents – ruled in favour of Respondent
Petitioner avers that respondent Director erred (1) in not giving due weight to his
documentary evidence which tends to prove that he has been using the trademark
since 1951; (2) in not finding that respondent Ng Kian Giab had admitted he first used
the trademark only in 1955; (3) in disregarding petitioner's prior application No. 5544,
and thus finding that respondent had filed his application earlier than petitioner; and
(4) in declaring respondent as the prior user when there is no substantial evidence in
support thereof.
ISSUE: WON 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?
HELD: The Court ruled in favour of the Petitioner. The documentary evidence
show clearly that Respondent's use began only in 1955. The business tax receipt in
the name of Ng Kian Kee is dated October 18, 1955. In his application for original
registration of the business name "Hongkong T-Shirt Manufacturer," Ng Kian Kee
stated that his business was that of manufacturing T-shirts, and that as of that date,
October 25, 1955, the same was not yet in operation. It seems that it actually started
operations on December 3, 1955, the date of its receipt No. when it sold its first half
dozen undershirts bearing the trademark on December 5, 195. Noteworthy is the fact
that in his statement attached to the application respondent alleged that he first used
the trademark "on or about December 6, 1955," which statement appears to be the
truth.
10. MARVEX COMMERCIAL Co., INC., petitioner, vs. PETRA HAWPIA :& Co.,
and THE DIRECTOR OF PATENTS, respondents.
FACTS: On Oct. 14, 1958, Petra Hawpia :& Co., a partnership duly organized under
the laws of the Philippines and doing business at 543 M. de Santos (Botica Divisoria),
Manila filed a petition for the registration of the trademark "LIONPAS" used on
medicated plaster, with the Philippine Patent Office, asserting its continuous use in
the Philippines since June 9, 1958.
- The Marvex Commercial Co., Inc. (domestic corp.) filed an opposition thereto,
alleging that the registration of such trademark would violate its right to and interest in
the trademark "SALONPAS" used on another medicated plaster.
- Director of Patents: Dismissed the opposition.
ISSUES:
1. Is the applicant the owner of the trademark "LIONPAS?"
2. Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?
HELD:
1. No.
Under sections 1) and 2-A of the Trade Mark Law, as amended, the right to register
trademarks, tradenames and service marks by any person, corporation, partnership
or association domiciled in the Philippines or in any foreign country, is based on
ownership, and the burden is upon the applicant to prove such ownership.
- Applicant failer to prove ownership. A letter dated June 20, 1958, sent by "OSAKA
BOEKI KAISHA, LTD.” to the applicant which tends to show that the former, for a $1
consideration, has assigned, ceded, and conveyed all its "rights, interests and
goodwill in the tradename LIONPAS Medicated Plaster x x x" in favor of the latter.
- A careful scrutiny o the lette will reveal, however, that the sender of the letter,
"OSAKA BOEKI KAISHA, LTD.", and which appears to be the seller, is merely a
representative of the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY
CO." There is no proof that as such representative, the former has been authorized
by the latter to sell the trademark in question. Moreover, on its face appears to have
been signed only by someone whose position in the company's "Sundries Dept." is
not described; the signature is not legible.
7|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
- Furthermore, the letter and a joint affidavit contradict each other. While the letter
shows that "OSAKA BOEKI KAISHA, LTD." is a representative of "ASUNARO
PHARMACEUTICAL INDUSTRY CO.";the affidavit asserts that the former is not a
respresentative of the latter, but that it is the owner of the trademark "LIONPAS".
- Not being the owner of the trademark "LIONPAS" but being merely an importer
and/or distributor of the said penetrative plaster, the applicant is not entitled under the
law to register its name.
2. Yes. The trademark "Lionpas" for medicated plaster cannot be registered because
it is confusingly similar to "Salonpas," a registered trademark also for medicated
plaster. Both words have the same suffix, "pas" which denotes a plaster, with curative
powers, that adheres to the body. However, as "pas" is merely descriptive and
furnishes no indication of the origin of the article, it is open for appropriation by
anyone and may properly become the subject of a trademark by combination with
another word or phrase. Although two letters of "Salonpas" are missing in "Lionpas,"
nevertheless, when the two words are pronounced, the sound effects are confusingly
similar. Where goods are advertised over the radio, similarity in sound is of special
significance. Similarity of sound is a sufficient ground for holding that the two marks
are confusingly similar when applied to merchandise of the same descriptive
properties.
11. Sta.Ana v. Maliwat
G.R. No. L-23023 August 31, 1968
FACTS: In 1962, Florentino Maliwat sought to register the
trademark "FLORMANN" used on shirts, pants, jackets and shoes for ladies men and
children. He claimed its first use in commerce in 1955. Also in the same year (1962),
Jose P. Sta. Ana (Petitioner) filed an application for the registration of the
trademark "FLORMEN" (used in ladies and children shoes). he claimed its first use in
commerce in 1959. Due to the confusing similarity , the Director of the Patent Office
ordered an interference. Maliwat's application was then granted due to his prior
adoption and use while that of Sta. Ana was denied. It was stipulated by the parties
that 'Flormann' was used as a trademark in 1953 and Maliwat used it on shoes in
1962.
ISSUE: Was there any trademark infringement committed?
HELD: YES. Both products of the parties have the same descriptive properties, thus
its trademark must be protected.
The law does not require that the goods of the previous user and the late user of the
same mark should possess the same descriptive properties or should fall into the
same categories in order to bar the latter from registering his amrk. The meat of the
matter is the likelyhood of confusion, mistake or deception upon the purchase of the
goods of the parties. Herein, the similarity of the mark 'FLORMANN' and the name
'FLORMEN', as well as the likelihood of confusion is admitted. As such, Maliwat as
prior adopter has a better right to use the mark.
(12) LIM KIAH v. THE KAYNEE COMPANY and the DIRECTOR OF PATENTS,
ET.AL.
FACTS: Petitioner Lim Kiah filed an application with the Philippines Patent Office to
register such a trademark allegedly being used by him on undershirts, polo shorts, t-
shirts, pants, sporting wear and handkerchief, asserting further that the date of first
use went back to 1957.
- Such application was opposed by the Kaynee Company, one of the herein
respondents wherein it claimed ownership by virtue of registration which was as early
as 1913 with the U.S. Patent Office. It alleged that it had used the same in the
Philippines as far back as 1951 on goods similar to those sold by the applicant.
- The oppositor further alleged that such a trademark became exceedingly popular in
the Philippines enjoying tremendous amount of goodwill from newspaper and media.
- Both testimonial and documentary evidence were introduced before the Philippine
Patent Office where respond Kaynee Company adduced prrof to the effect that late in
1949 or early 1950, the Aguinaldo’s Department Store sold therein knitted shirts as
wells as polo shirts and the like coming from it. Kaynee products were advertised in
the Philippines.
- The applicant testified taht as of 1957 he had started using such trademark on his
products, the word in chines, according to him, being equivalent to “fast” in English
and “mabilis” in Tagalog.
Director of Patents: From the facts presented, the opposition by Kaynee company
was without merit. The opposer’s witnesses testified that it had never used the
trademark in the Philippines through its own initiative but because of the Aguinaldo’s
Department Store’s importation and retail activities. There was no distributorship
agreement between the Kaynee Company and Aguinaldo’s or for that matter, any
local outlet.
- The opposition was dismissed. But the application of Lim Kiah is rejected ex parte.
ISSUE: Whether or not the construction fastened on Section 4(d) of RA No. 166 by
respondent Director of Patents ignored other relevant sections.
HELD: NO. Construction and Interpretation come only after it has been demonstrated
that application is impossible and inadequate without them. Such a principle has
since then commended itself for acceptance and has been invariably followed.
- Here, petitioner engaged in manufacturing and selling the same kind of products
would rely on a trademark, which undeniably was previously registered abroad and
which theretofore had been used and advertised extensively by the Aguinaldo’s
Department Store.
8|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
13) AMERICAN WIRE & CABLE CO. vs DIRECTOR OF PATENTS
FACTS: Petitioner American Wire and Cable Company (American) is the owner of
the registered trademark DURAFLEX and Device for electric wires. On June 1962,
private respondent/applicant Central Banahaw (Central) sought to register the label
DYNAFLEX for electric wires.
Petitioner opposed on the ground that Central’s use of the trademark DYNAFLEX
would confuse purchasers looking for DURAFLEX. The mark sought to be registered
allegedly having practically the same spelling, pronunciation and sound, and covering
the same good, but had not been in use continuously, unlike DURAFLEX which was
in use since 1958.
Director of Patents held that DYNAFLEX was not similar to DURAFLEX, since the
logo design was dissimilar, the DURAFLEX logo being in all caps while DYNAFLEX
was in miniscule, and thus gave Central’s application to trademark DYNAFLEX due
course.
ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for
electric wires, class 20, considering that the trademark DURAFLEX and Globe
representation also for electric wires, machines and supplies under class 20, has
been registered more than 4 years earlier.
HELD: NO, the mark sought to be registered failed to “dominancy test”
The pertinent law, Republic Act 166, as amended, on registrability of trademarks,
prescribes:
SEC. 4. — The owner of a trademark, trade name 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, unless it:
(d) Consists of or comprises a mark or trade name which so
resembles a mark or trade-name registered 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.
It is clear from the above-quoted provision that the determinative factor in a contest
involving the registration of trademark is whether the use of such mark would likely
cause confusion or mistake on the part of the buying public. The test of “likelihood” is
the “dominancy test” or the assessment of the essential or dominant features in the
competing labels to determine whether they are confusingly similar. In fact, even
their similarity in sound is taken into consideration, where the marks refer to
merchandise of the same descriptive properties, for the reason that trade idem
sonans constitutes a violation of trade mark patents.
The court found:
The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is
apparent. Not only are the initial letters and the last half of the appellations identical,
but the difference exists only in two out of the eight literal elements of the
designations. Coupled with the fact that both marks cover insulated flexible wires
under class 20; that both products are contained in boxes of the same material, color,
shape and size; that the dominant elements of the front designs are a red circle and a
diagonal zigzag commonly related to a spark or flash of electricity; that the back of
both boxes show similar circles of broken lines with arrows at the center pointing
outward, with the identical legend "Cut Out Ring" "Draw From Inside Circle", no
difficulty is experienced in reaching the conclusion that there is a deceptive similarity
that would lead the purchaser to confuse one product with the other.
The Director of Patents has predicated his decision mostly on the semantic difference
and connotation of the prefixes "Dura" and "Dyna" of the competing trademarks,
unfortunately forgetting that the buyers are less concerned with the etymology of the
words as with their sound and the dominant features of the design.
The court further explained that "unlike the pharmacists or druggists, the dispensers
of hardware or electrical supplies are not generally known to pay as much concern to
the brand of articles asked for by the customer and of a person who knows the name
of the brand but is not acquainted with it is appearance, the likelihood of the
DYNAFLEX product being mistaken for DURAFLEX is not remote."
Thus the request to register this trademark must be denied.
14. KEE KEE BOC v. DIRECTOR OF PATENTS
FACTS: (NOTE: connected siya sa 4th case natin mga mamshie )
- This is a petition for review assailing the validity of a decision of Respondent
Director of Patents granting the application of the other Respondent Far Eastern Shirt
Factory to register a trademark and dismissing the opposition of Petitioner. The
grounds relied upon are its lack of support in the substantial evidence of record and
its failure to conform to the applicable law. Petitioner in pressing his opposition before
the Director of Patents had to surmount the obstacle posed by a decision of this Court
in Asari Yako Co. Ltd. v. Kee Boc, which rightfully could be not ignored by respondent
Director because of its relevance and pertinence.
Because of the decision rendered, Petitioner is alleging that he would be
damaged by such registration as he has in his favor a certificate of registration on the
trademark SUN RAYS issued by the Philippine Patent Office on August 3, 1961
covering the same class of goods, namely, men’s undershirts. It was moreover
"confusingly similar" to the trademark RACE, the closeness of their identity in
appearance and pronunciation being quite marked. Mention was then made in the
9|AGUINALDO, MANGUERA, MORALES C., MORALES I.,UMANGAY - IPL CASE DIGESTS (AUG.25)
opposition that his trademark is well-known all over the Philippines and that applicant,
now respondent Far Eastern Shirt Factory, with prior knowledge thereof, deliberately
designed its own mark to bring about the confusion and to take advantage of the
fame, reputation and goodwill theretofore established by it at a tremendous cost
through advertising and by the superior quality of its product.
 Director of Patents - as between the two confusingly similar trademarks,
RACE was already in use long before the other party opposing adopted his
trademark SUN RAYS. In such case it is the Respondent (Far Eastern Shirt
Company) who would be damaged by the registration of SUN RAYS as it
has acquired, as a successor in interest, proprietary rights over the mark
RACE.
ISSUE: WON Petitioner will be damage by the application for registration of Far
Eastern Shirt Factory?
HELD: No, Petitioner will not be damage. The Court following the ruling of the
Director of Patents reiterated that it is the Respondent-Applicant who would be
damaged by the registration of SUN RAYS as it has acquired, as a successor in
interest, proprietary rights over the mark RACE.
If it were not for the above background facts that would indicate the
persistent and tenacious efforts on the part of petitioner Kee Boc to deprive Asari
Yoko Co., Ltd., formerly, and now respondent Far Eastern Shirt Factory of whatever
advantages might in here in the use of the trademark raised, then perhaps his stand
would have been impressed with a greater degree of plausibility. As it is however,
considering that he was a party to a litigation where this Court had recognized the
right of the predecessor-in-interest of respondent Far Eastern Shirt Factory to the use
of such trademark, it would seem that under an expansive view of the principle of the
law of the case, petitioner is not to be indulged insofar as his opposition would result
in diluting the effectiveness of the aforesaid decision rendered by us where he himself
was a party.
15. DE LA RAMA STEAMSHIP CO.,plaintiffappellee, vs.NATIONAL
DEVELOPMENT CO.,defendantappellant.
FACTS: This case is the outcome of an agreement entered into on October 26, 1949
between the De la Rama Steamship Co., Inc. and the National Development
Company, whereby De la Rama undertook the management of the three vessels
known as “Doña Aurora,” “Doña Nati” and “Doña Alicia” which had been purchased
by the Philippine
Government from Japan with the advise and technical supervision of De la Rama. In
the management contract,De la Rama had the option to buy the vessels at the fifth
year following the purchase and delivery of each of the vessels, at a price which is to
consist of the cost price of each vessel, plus such expenses as De la Rama may have
incurred in connection with the construction, outfitting, provisioning and operation
thereof; but should De la Rama fail to exercise the right of option it should be
reimbursed of the expenses it incurred.
- In the decision in G.R. No. L8784 this Court upheld the right of NDC to cancel the
management contract, and the option of De la Rama to purchase the vessels was
declared ineffective.
- De la Rama filed on August 21, 1956 a”Supplemental Pleading” in Civil Case No.
25161 then pending in the Court of First Instance of Manila. This supplemental
pleading, in the nature of a supplemental complaint, gave rise to the proceeding
which later brought Civil Case No. 25161 to this Court for the second time in G.R. No.
L25659.
- Under the first cause of action of the Supplemental Pleading,” De la Rama
demanded that
- NDC refrain from using the names “Doña Aurora” “Doña Nati” and “Doña Alicia” on
the three vessels subject of the original action, claiming that it had acquired exclusive
property right to the use of said names of the three vessels as trade names. De la
Rama sought the payment of P1,000,000.00 as damages on account of NDC’s
continued use of the names.
- In its answer, NDC denied De la Rama’s exclusive right to use the names “Doña
Aurora” “Doña Nati” and “Doña Alicia” on the vessels upon the ground that said
names (except Doña Nati) represented names of wives of former Presidents of the
Philippines and could not be appropriated by a private individual.
In its reply to NDC’s answer, De la Rama alleged that the names “Doña Aurora,”
“Doña Nati” and “Doña Alicia” were its property, having used the name “Doña” on its
vessels in its shipping business even before the last war and had acquired a vested
right on that trade name.
- NDC argues that as owner of the vessels it had registered the “Doña” names in the
Bureau of Customs with full knowledge and consent of De la Rama which, therefore,
is now estopped from questioning the right, or from denying the ownership, of NDC
over the “Doña” names (Art. 1431, Civil Code).
- In the amendatory decision, dated March 18, 1966, the lower court found that De la
Rama had been in the shipping business since 1933 and had adopted, prior to the
war in 1941, the word “Doña” in designating its vessels; that the three oceangoing
vessels that it operated under the management contract were named “Doña Nati”
after the wife of the late Don Esteban de la Rama, who was founder of the steamship
company; “Doña Alicia” after the late wife of former President Elpidio Quirino; and
“Doña Aurora” after the late widow of President Manuel Quezon;that there is
unrebuttted testimony that in the shipping business, goodwill and reputation are
inevitably acquired by the names given to a vessel.
ISSUE: Whether the names of deceased wives of Presidents are included in the
prohibition?
ISSUE: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS" used by Philippine Nut on its label for salted peanuts with the same
10 | A G U I N A L D O , M A N G U E R A , M O R A L E S C . , M O R A L E S I . , U M A N G A Y - I P L C A S E D I G E S T S ( A U G . 2 5 )
HELD: No.Under Section 4(c) of Rep. Act No. 166 as amended, which apparently is
the basis of the contention of NDC, what is prohibited from being appropriated and
being registered are trade names consisting of, or comprising, a name identifying a
particular living individual, or the name of a deceased President of the Philippines.
The names of deceased wives of Presidents are not included in the prohibition.
Moreover, Section 4(f) of said Act does not prohibit the registration, and hence
appropriation, of a Trade name that has become distinctive and the substantial and
exclusive use of a trade name for five years is accepted as prima facie proof that the
trade name has become distinctive.
- NDC does not dispute the fact that the “Doña” names had been originally used by
De la Rama, and according to the lower court De la Rama had been using the “Doña”
names even before the war, and that said names have acquired goodwill and
reputation.
- To permit NDC to continue using the “Doña” names would be to countenance the
unlawful appropriation of the benefit of a goodwill which De la Rama has acquired as
a result of continued usage and large expense; it would be tantamount to permitting
NDC to grab the reputation or goodwill of the business of another.
16. PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS
INCORPORATED and TIBURCIO S. EVALLE as Director of Patents
FACTS: Philippine Nut Industry Inc., a domestic corporation, obtained from the
Patent Office on August 10, 1961, a certificate covering the trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts.
- On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the
Director of Patent, asking for the cancellation of Philippine Nut's certificate of
registration on the ground that "the registrant was not entitled to register the mark at
the time of its application for registration thereof" for the reason that it (Standard
Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered
by Certificate of Registration No. SR-172, issued by the Patent Office on July 28,
1958.
- Thereafter, the Philippine Nut filed its answer invoking the special defense that its
registered label is not confusingly similar to that of Standard Brands as the latter
alleges.
- Respondent Director of Patents gave due course to Standard Brand's petition,
ordering the cancellation of Philippine Nut's Certificate of Registration.
- Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a
review, seeking the reversal of the Director of Patents’ decision.
coloring scheme and the same lay-out of words, confusingly similar to the trademark
"PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product.
HELD: Yes. As to appearance and general impression of the two trademarks, the
Supreme Court said it found a very confusing similarity.
The word PLANTERS printed across the upper portion of the label in bold letters
easily attracts and catches the eye of the ordinary consumer and it is that word and
none other that sticks in his mind when he thinks of salted peanuts.
The Supreme Court also held that although it is true that no producer or manufacturer
may have a monopoly of any color scheme or form of words in a label, but when a
competitor adopts a distinctive or dominant mark or feature of another's trademark
and with it makes use of the same color ensemble, employs similar words written in a
style, type and size of lettering almost identical with those found in the other
trademark, the intent to pass to the public his product as that of the other is quite
obvious. It deceives the public.
Hence, the decision of respondent Director of Patents was affirmed.
(17) AMERICAN CYANAMID COMPANY v. DIRECTOR OF PATENTS, ET AL.
FACTS: Respondent Tiu Chan filed an application for the registration of the
trademark SULMETINE used on medicine for the control of infectious coryza and for
the prevention of cold rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of
chicken and other domesticated birds.
- Petitioner filed a petition to cancel certificate of registration issued in favour of the
respondent for it claimed that it is the owner of the trademark SULMET which it had
used for many years in the U.S. since 1946 and was first used in the Philippines in
1950.
- SULMET is the trademark of a veterinary product used for the contro of outbreaks of
cecal and intestinal coccidios in turkeys and ducks. This trademark has become
popular and well-known and enjoys widespread reputation brought about by
extensive advertisement and promotion through media.
-Notwithstanding the above, respondent filed an application for registration of
SULMETINE as his trademark thereby making respondent’s product confusingly with
that of petitioner which is unfair and unjust to the label.
- Respondent opposed the petition for cancellation of his trademark.
11 | A G U I N A L D O , M A N G U E R A , M O R A L E S C . , M O R A L E S I . , U M A N G A Y - I P L C A S E D I G E S T S ( A U G . 2 5 )
Director of Patents: Denied the petition for cancellation of respondent’s certificate of
registration ont he grounds that:
(a) SULMET is used in the preparation for practically all domesticated
animals wheres, SULMETINE is limited only to chichen and other domesticated birds.
(b) On top of petitioner’s label, the word “CYANAMID” is printed in prominent
letters and at the bottom appears in bold letters the words “AMERICAN CYANAMID
COMPANY, NEW YORK” indicating the manufacturer of the product.
On top of respondent’s label appears the picture of 2 roosters with the word
“HENRY’S” in between and at the bottom, “HENRY’S LABORATORIES
PHILIPPINES”.
(c) Petitioner’s preparation consists of a drinking water solution and this is
clearly indicated in bold letters on the label whereas, the respondent’s consists of
tablets for veterinary use indicated in red letters.
- These differences were substantial and striking enough to prevent any confusing
similarity between the 2 which may lead a buyer to confuse one with the other.
ISSUE: Whether or not the respondent’s trademark would cause confusion or
mistakes in the mind of the public or deceive purchasers.
HELD: No. The Court affirmed the decision of the Director of Patents. The striking
differences between the two labels will prevent the public from confusion. Said labels
are entirely different in size, background, colors, contents and pictorial arrangement,
thus the general appearance bearing the respective trademarks are so distinct from
each other.
- Similarly, the word SULMET came from the combination of syllables “SUL” which is
derived from Sulfa and “MET” from methyl both of which are chemical compounds
used in the article manufactured by the parties. The addition of the syllable “INE” in
respondent’s label is sufficient to distinguish respondent’s product or trademark from
that of petitioner.