1. SKECHERS USA INC. v. INTER PACIFIC INDUSTRIAL TRADING
Such reasoning, however, misses the entire
CORP.
FACTS: The present controversy arose when petitioner filed with Branch 24
of the RTC Manila an application for the issuance of search warrants against
an outlet and warehouse operated by respondents for infringement of
trademark under Section 155, in relation to Section 170 of Republic Act No.
8293, otherwise known as the Intellectual Property Code of the Philippines.
In the course of its business, Petitioner has registered the trademark
SKECHERS and the trademark S (within an oval design) with the IPO.
2 search warrants were issued by the RTC and were served on the premises
of respondents. As a result of the raid, more than 6,000 pairs of shoes
bearing the S logo were seized.
Later, respondents moved to quash the search warrants, arguing that there
was no confusing similarity between petitioners Skechers rubber shoes and
its Strong rubber shoes.
 RTC issued an Order quashing the search warrants and directing the
NBI to return the seized goods. The RTC agreed with respondent’s
view that Skechers rubber shoes and Strong rubber shoes have
glaring differences such that an ordinary prudent purchaser would
not likely be misled or confused in purchasing the wrong article.
 CA – affirmed RTC
ISSUE: WON respondent is guilty of trademark infringement?
RULING: Yes, applying the Dominancy Test to the case at bar, this Court
finds that the use of the stylized S by respondent in its Strong rubber shoes
infringes on the mark already registered by petitioner with the IPO. While it is
undisputed that petitioners stylized S is within an oval design, to this Courts
mind, the dominant feature of the trademark is the stylized S, as it is
precisely the stylized S which catches the eye of the purchaser. Thus, even if
respondent did not use an oval design, the mere fact that it used the same
stylized S, the same being the dominant feature of petitioner’s trademark,
already constitutes infringement under the Dominancy Test.
This Court cannot agree with the observation of the CA that the use of the
letter S could hardly be considered as highly identifiable to the products of
petitioner alone. The CA even supported its conclusion by stating that the
letter S has been used in so many existing trademarks, the most popular of
which is the trademark S enclosed by an inverted triangle, which the CA says
1 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
is identifiable to Superman.
point, which is that respondent had used a stylized S, which is the
same stylized S which petitioner has a registered trademark for. The letter S
used in the Superman logo, on the other hand, has a block-like tip on the
upper portion and a round elongated tip on the lower portion. Accordingly,
the comparison made by the CA of the letter S used in the Superman
trademark with petitioners stylized S is not appropriate to the case at bar.
Furthermore, respondent did not simply use the letter S, but it appears to this
Court that based on the font and the size of the lettering, the stylized S
utilized by respondent is the very same stylized S used by petitioner; a
stylized S which is unique and distinguishes petitioner’s trademark.
Indubitably, the likelihood of confusion is present as purchasers will
associate the respondent’s use of the stylized S as having been authorized
by petitioner or that respondent’s product is connected with petitioners
business.
While there may be dissimilarities between the appearances of the shoes, to
this Courts mind such dissimilarities do not outweigh the stark and blatant
similarities in their general features. As can be readily observed by simply
comparing petitioners Energy model and respondents Strong rubber shoes,
respondent also used the color scheme of blue, white and gray utilized by
petitioner. Even the design and wavelike pattern of the midsole and outer
sole of respondent’s shoes are very similar to petitioners shoes, if not exact
patterns thereof. At the side of the midsole near the heel of both shoes are
two elongated designs in practically the same location. Even the outer soles
of both shoes have the same number of ridges, five at the back and six in
front. On the side of respondents shoes, near the upper part, appears the
stylized S, placed in the exact location as that of the stylized S on petitioners
shoes. On top of the "tongue" of both shoes appears the stylized S in
practically the same location and size. Moreover, at the back of petitioner’s
shoes, near the heel counter, appears Skechers Sport Trail written in white
lettering. However, on respondent’s shoes appears Strong Sport Trail
noticeably written in the same white lettering, font size, direction and
orientation as that of petitioners shoes. On top of the heel collar of petitioners
shoes are two grayish-white semi-transparent circles. Not surprisingly,
respondent’s shoes also have two grayish-white semi-transparent circles in
the exact same location.
Based on the foregoing, this Court is at a loss as to how the RTC and the
CA, in applying the holistic test, ruled that there was no colorable imitation,
when it cannot be any more clear and apparent to this Court that there is
PROPERTY LAW 
colorable imitation. The dissimilarities between the shoes are too trifling and
frivolous that it is indubitable that respondent’s products will cause confusion
and mistake in the eyes of the public. Respondents shoes may not be an
exact replica of petitioner’s shoes, but the features and overall design are so
similar and alike that confusion is highly likely.
2. GABRIEL v. PEREZ
FACTS: On October 19, 1962, Petitioner (Crisanta Y. Gabriel) 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; that the
trademark was not used and has not been actually used by registrant at the
time he applied for its registration; that it was thru fraud and
misrepresentation that the registration was procured by the registrant; and
that it was she who has been actually using the said trademark since March,
1959, and as such is the rightful and recognized owner thereof and therefore
entitled to its 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
Respondent (Dr. Jose R. Perez) in due time, duly filed his answer denying
each and every ground for cancellation alleged in the said petition, and
further averring that there is pending in the Court of First Instance of Bulacan
a civil case (No. 2422) for unfair competition with injunction and damages
filed by him against herein petitioner involving the manufacture of beauty
soap and the use of the trademark "WONDER"; that a writ of preliminary
injunction has been issued on September 7, 1961 by the said court against
herein petitioner restraining her "from making, manufacturing and producing
'Wonder Bleaching Beauty Soap' with the same labels and chemical
ingredients as those of the plaintiff, and from advertising, selling and
distributing the same products"; and that no right of petitioner had been
violated and therefore no cause of action exists in favor of petitioner.
 DP – denied the petition to cancel the registration
ISSUE: WON Private Respondent is the originator and manufacturer of the
product?
2 |A D D I T I O N A L CASES FOR MIDTERMS- INTELLECTUAL
RULING: Yes, Respondent is the originator and manufacturer of the so-
called "Dr. Perez Wonder Beauty Soap," a phrase clearly coined by, and
associated with, the Respondent. As such, the connotation in itself is
sufficient to clothe the product as an item or a commodity emanating from a
particularly identified source who is none other than Dr. Jose R. Perez. The
words serve as an indication of origin, and the product identified by the words
can never be regarded as having emanated or originated from another
individual, typical of which is the Petitioner, mere distributor." Under Section
2 and 2-A of the Trademark Law, Republic Act No. 166, 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
right to and cannot register the said trademark.
At the time of the analysis of the soap product of private respondent Dr. Jose
R. Perez, there was already a label or trademark known as "Dr. Perez'
WONDER Beauty Soap" as shown and supported by Exhibit "5" which is a
Certificate of Label Approval dated June 6, 1958 and Exhibit "6" another
Certificate of Label Approval dated August 10, 1959 both issued by the
Bureau of Health to Dr. Jose R. Perez as manager of the Dr. Jose R. Perez
Cosmetic Laboratory. Both certificates identified the product covered as "Dr.
Perez' Wonder Beauty Soap" and further indicated that said product
emanated from the Dr. Jose R. Perez Cosmetic Laboratory. Furthermore, the
certificates show that the Bureau of Health referred to and relied on the
said label or trademark of the product as the basis for its certification that the
same (product) "was found not adulterated nor misbranded."
It is not denied that private respondent Dr. Jose R. Perez was the originator,
producer and manufacturer of the soap product identified as "DR. JOSE R.
PEREZ WONDER BEAUTY SOAP." This fact, furthermore, is clearly shown
in Exhibits "5" and "6" which, as already adverted to, point out that said
product emanated from the Dr. Jose R. Perez Cosmetic
Laboratory.<äre||anº•1àw> The very boxes-containers used in packing the
said product also exhibit this fact.
It has been repeatedly said that the objects of a trademark are "to point out
distinctly the origin or ownership of the goods to which it is affixed, to secure
to him, who has been instrumental in bringing into market a superior article of
merchandise, the fruit of his industry and skill, and to prevent fraud and
imposition. 52 Am. Jur., p. 50, citing cases." Necessarily, therefore, a
trademark can only be used in connection with the sale of the identical article
that has been sold under the trademark or tradename to the extent
necessary to establish them as such.
PROPERTY LAW 
In this instant case, the trademark "WONDER" has long been identified and
associated with the product manufactured and produced by the Dr. Jose R.
Perez Cosmetic Laboratory. It would thus appear that the decision under
review is but in consonance with the sound purposes or objects of a
trademark. Indeed, a contrary ruling would have resulted in the cancellation
of the trademark in question and in granting the pending application of herein
petitioner to register the same trademark in her favor to be used on her
bleaching soap, which is of the same class as that of respondent (bleaching
and beauty soap). And the effect on the public as well as on respondent Dr.
Jose R. Perez would have been disastrous. Such a situation would sanction
a false implication that the product to be sold by her (petitioner) is still that
manufactured by respondent.
3. ARCE AND SONS COMPANY v. SELECTA
FACTS: On August 31, 1955, Selecta Biscuit Company, Inc., referred to as
respondent, filed with the Philippine Patent Office a petition for the
registration of the word "SELECTA" as trade-mark to be use in its bakery
products alleging that it is in actual use thereof for not less than two months
before said date and that "no other persons, partnership, corporation or
association ... has the right to use said trade-mark in the Philippines, either in
the identical form or in any such near resemblance thereto, as might be
calculated to deceive." Its petition was referred to an examiner for study who
found that the trade-mark sought to be registered resembles the word
"SELECTA" used by the Acre and Sons and Company, hereinafter referred
to as petitioner, in its milk and ice cream products so that its use by
respondent will cause confusion as to the origin of their respective goods.
Consequently, he recommended that the application be refused. However,
upon reconsideration, the Patent Office ordered the publication of the
application for purposes of opposition.
In due time, petitioner filed its opposition thereto on several grounds, among
which are: (1) that the mark "SELECTA" had been continuously used by
petitioner in the manufacture and sale of its products, including cakes, bakery
products, milk and ice cream from the time of its organization and even prior
thereto by its predecessor-in-interest, Ramon Arce; (2) that the mark
"SELECTA" has already become identified with name of the petitioner and its
business; (3) that petitioner had warned respondent not to use said mark
because it was already being used by the former, but that the latter ignored
said warning; (4) that respondent is using the word "SELECTA" as a trade-
mark as bakery products in unfair competition with the products of petitioner
thus resulting in confusion in trade; (5) that the mark to which the application
3 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
of respondent refers has striking resemblance, both in appearance and
meaning, to petitioner's mark as to be mistaken therefor by the public and
cause respondent's goods to be sold as petitioner's; and (6) that actually a
complaint has been filed by the petitioner against respondent for unfair
competition in the Court of First Instance of Manila asking for damages and
for the issuance of a writ of injunction against respondent enjoining the latter
for continuing with the use of said mark.
CFI Manila and DP’S RULING: At the outset one cannot but note that in the
two cases appealed before us which involve the same parties and the same
issues of fact and law, the Court a quo and the Director of Patents have
rendered contradictory decisions. While the former is of the opinion that the
word 'SELECTA' has been used by the petitioner, or its predecessor-in-
interest, as a trade-mark in the sale and distribution of its dairy and bakery
products as early as 1933 to the extent that it has acquired a proprietary
connotation so that to allow respondent to use it now as a trade-mark in its
business would be an usurpation of petitioner's goodwill and an infringement
of its property right, the Director of Patents entertained a contrary opinion. He
believes that the word as used by the petitioner functions only to point to the
place of business or location of its restaurant while the same word as used
by respondent points to the origin of the products its manufactures and sells
and he predicates this distinction upon the fact that while the goods of
petitioner are only served within its restaurant or sold only on special orders
in the City of Manila, respondent's goods are ready-made and are for sale
throughout the length and breadth of the country. He is of the opinion that the
use of said trade-mark by respondent has not resulted in confusion in trade
contrary to the finding of the court a quo. Which of this opinions is correct is
the issue now for determination.
ISSUE: (1) Who is the rightful owner of the trademark? And (2) Does the
word “SELECTA” acquired its secondary meaning?
RULING:
1. Petitioner.
2. No, it is only a fanciful phrase just like in the case of Ang Tibay.
It appears that Ramon Arce, predecessor-in-interest of petitioner, started his
milk business as early as 1933. He sold his milk products in bottles covered
with caps on which the words 'SELECTA FRESH MILK' were inscribed.
Expanding his business, he established a store at Lepanto Street, City of
Manila, where he sold, in addition to his products, ice cream, sandwiches
and other food products, placing right in front of his establishment a
PROPERTY LAW 
signboard with the name 'SELECTA' inscribed thereon. Special containers
made of tin cans with the word 'SELECTA' written on their covers were used
for his products. Bottle with the same word embossed on their sides were
used for his milk products. The sandwiches he sold and distributed were
wrapped in carton boxes with covers bearing the same name. He used
several cars and trucks for delivery purposes on the sides of which were
written the same word. As new products were produced for sale, the same
were placed in containers with the same name written on their covers. After
the war, he added to his business such items as cakes, bread, cookies,
pastries, and assorted bakery products. Then his business was acquired by
petitioner, a co-partnership organized by his sons, the purposes of which are
"to conduct a first class restaurant business; to engage in the manufacture
and sale of ice cream, milk, cakes and other products; and to carry on such
other legitimate business as may produce profit."
The foregoing unmistakably show that petitioner, through its predecessor-in-
interest, had made use of the word "SELECTA" not only as a trade-name
indicative of the location of the restaurant where it manufactures and sells its
products, but as trade-mark is used. This is not only in accordance with its
general acceptation but with our law on the matter. "
Verily, the word 'SELECTA' has been chosen by petitioner and has been
inscribed on all its products to serve not only as a sign or symbol that may
indicate that they are manufactured and sold by it but as a mark of
authenticity that may distinguish them from the products manufactured and
sold by other merchants or businessmen. The Director of Patents, therefore,
erred in holding that petitioner made use of that word merely as a trade-
name and not as a trade-mark within the meaning of the law.1
The word 'SELECTA', it is true, may be an ordinary or common word in the
sense that may be used or employed by any one in promoting his business
or enterprise, but once adopted or coined in connection with one's business
as an emblem, sign or device to characterize its products, or as a badge of
authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. In this sense, its used by another
may lead to confusion in trade and cause damage to its business. And this is
the situation of petitioner when it used the word 'SELECTA' as a trade-mark.
In this sense, the law gives its protection and guarantees its used to the
exclusion of all others. And it is also in the sense that the law postulates that
"The ownership or possession of a trade-mark, . . . shall be recognized and
protected in the same manner and to the same extent, as are other property
rights known to the law," thereby giving to any person entitled to the
4 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
exclusive use of such trade-mark the right to recover damages in a civil
action from any person who may have sold goods of similar kind bearing
such trade-mark.
The term 'SELECTA' may be placed at par with the words "Ang Tibay" which
this Court has considered not merely as a descriptive term within the
meaning of the Trade-mark Law but as a fanciful or coined phrase, or a
trade-mark. In that case, this Court found that respondent has constantly
used the term "Ang Tibay" , both as a trade-mark and a trade-name, in the
manufacture and sale of slippers, shoes and indoor baseballs for twenty-two
years before petitioner registered it as a trade-name for pants and shirts so
that it has performed during that period the function of a trade-mark to point
distinctively, or by its own meaning or by association, to the origin or
ownership of the wares to which it applies.
4. MIRPURI v. CA
FACTS: On June 15, 1970, one Lolita Escobar, the predecessor-in-interest
of petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of
Patents for the registration of the trademark "Barbizon" for use in brassieres
and ladies undergarments. Escobar alleged that she had been manufacturing
and selling these products under the firm name "L & BM Commercial" since
March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing
business under the laws of New York, U.S.A., opposed the application. It
claimed that:
"The mark BARBIZON of respondent-applicant is confusingly similar to the
trademark BARBIZON which opposer owns and has not abandoned.
That opposer will be damaged by the registration of the mark BARBIZON
and its business reputation and goodwill will suffer great and irreparable
injury.
That the respondent-applicant's use of the said mark BARBIZON which
resembles the trademark used and owned by opposer, constitutes an
unlawful appropriation of a mark previously used in the Philippines and not
abandoned and therefore a statutory violation of Section 4 (d) of Republic Act
No. 166, as amended.”
 Director of Patents rendered judgment dismissing the opposition and
giving due course to Escobar's application.
PROPERTY LAW 
This decision became final and on September 11, 1974, Lolita Escobar was
issued a certificate of registration for the trademark "Barbizon." The
trademark was "for use in "brassieres and lady's underwear garments like
panties."[3]
Escobar later assigned all her rights and interest over the trademark to
petitioner Pribhdas J. Mirpuri who, under his firm name then, the "Bonito
Enterprises," was the sole and exclusive distributor of Escobar's "Barbizon"
products.
In 1979, however, Escobar failed to file with the Bureau of Patents the
Affidavit of Use of the trademark required under Section 12 of Republic Act
(R.A.) No. 166, the Philippine Trademark Law. Due to this failure, the Bureau
of Patents cancelled Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for registration of the cancelled
trademark. Mirpuri filed his own application for registration of Escobar's
trademark. Escobar later assigned her application to herein petitioner and
this application was opposed by private respondent.
(Note: please see full text for the grounds kasi ang haba)
On March 2, 1982, Escobar assigned to petitioner the use of the business
name "Barbizon International." Petitioner registered the name with the
Department of Trade and Industry (DTI) for which a certificate of registration
was issued in 1987.
Forthwith, private respondent filed before the Office of Legal Affairs of the
DTI a petition for cancellation of petitioner's business name.
 DTI, OLA - cancelled petitioner's certificate of registration, and
declared private respondent the owner and prior user of the business
name "Barbizon International.”
 CA - reversed the Director of Patents finding that IPC No. 686 was
not barred by judgment in IPC No. 2049 and ordered that the case
be remanded to the Bureau of Patents for further proceedings
ISSUE: WON the herein opposer would probably be damaged by the
registration of the trademark BARBIZON sought by the respondent-applicant
on the ground that it so resembles the trademark BARBIZON allegedly used
and owned by the former to be `likely to cause confusion, mistake or to
deceive purchasers?
5 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
RULING: There can be no doubt that respondent-applicant's sought-to-be-
registered trademark BARBIZON is similar, in fact obviously identical, to
opposer's alleged trademark BARBIZON, in spelling and pronunciation. The
only appreciable but very negligible difference lies in their respective
appearances or manner of presentation. Respondent-applicant's trademark
is in bold letters (set against a black background), while that of the opposer is
offered in stylish script letters.
It is opposer's assertion that its trademark BARBIZON has been used in
trade or commerce in the Philippines prior to the date of application for the
registration of the identical mark BARBIZON by the respondent-
applicant. However, the allegation of facts in opposer's verified notice of
opposition is devoid of such material information. In fact, a reading of the text
of said verified opposition reveals an apparent, if not deliberate, omission of
the date (or year) when opposer's alleged trademark BARBIZON was first
used in trade in the Philippines. Thus, it cannot here and now be ascertained
whether opposer's alleged use of the trademark BARBIZON could be prior to
the use of the identical mark by the herein respondent-applicant, since the
opposer attempted neither to substantiate its claim of use in local commerce
with any proof or evidence. Instead, the opposer submitted the case for
decision based merely on the pleadings.
On the other hand, respondent-applicant asserted in her amended
application for registration that she first used the trademark BARBIZON for
brassiere (or 'brasseire') and ladies underwear garments and panties as
early as March 3, 1970. Be that as it may, there being no testimony taken as
to said date of first use, respondent-applicant will be limited to the filing date,
June 15, 1970, of her application as the date of first use.
From the foregoing, I conclude that the opposer has not made out a case of
probable damage by the registration of the respondent-applicant's mark
BARBIZON.
(5) ETEPHA vs DIRECTOR OF PATENT
FACTS: Respondent Westmont Pharmaceuticals, Inc., a New York
corporation, sought registration of trademark "Atussin" placed on its
"medicinal preparation of expectorant antihistaminic, bronchodilator sedative,
ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is
used exclusively in the Philippines since January 21, 1959.
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected.
Petitioner claims that it will be damaged because Atussin is so confusedly
PROPERTY LAW 
similar to its Pertussin (Registration No. 6089, issued on September 25,
1957) used on a preparation for the treatment of coughs, that the buying
public will be misled into believing that Westmont's product is that of
petitioner's which allegedly enjoys goodwill.
ISSUE: Whether or not trademark ATUSSIN be registered, given the fact that
PERTUSSIN, another trademark, had been previously registered in the
Patent Office.
HELD: YES.
The objects of a trademark are "to point out distinctly the origin or ownership
of the articles to which it is affixed, to secure to him who has been
instrumental in bringing into market a superior article or merchandise the fruit
of his industry and skill, and to prevent fraud and imposition." Our over-all
task then is to ascertain whether or not Atussin so resembles Pertussin "as
to be likely, when applied to or used in connection with the goods ... of the
applicant, to cause confusion or mistake or to deceive purchasers". And, we
are to be guided by the rule that the validity of a cause for infringement is
predicated upon colorable imitation. The phrase "colorable imitation" denotes
such a "close or ingenious imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to deceive an ordinary
purchaser, giving such attention as a purchaser usually gives, and to cause
him to purchase the one supposing it to be the other."
That the word "tussin" figures as a component of both trademarks is nothing
to wonder at. The Director of Patents aptly observes that it is "the common
practice in the drug and pharmaceutical industries to 'fabricate' marks by
using syllables or words suggestive of the ailments for which they are
intended and adding thereto distinctive prefixes or suffixes". And
appropriately to be considered now is the fact that, concededly, the "tussin"
(in Pertussin and Atussin) was derived from the Latin root-word "tussis"
meaning cough.
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no
indication of the origin of the goods; it is open for appropriation by anyone. It
is accordingly barred from registration as trademark. With jurisprudence
holding the line, we feel safe in making the statement that any other
conclusion would result in "appellant having practically a monopoly" of the
word "tussin" in a trademark.
6 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
While "tussin" by itself cannot thus be used exclusively to identify one's
goods, it may properly become the subject of a trademark "by combination
with another word or phrase". And this union of words is reflected in
petitioner's Pertussin and respondent's Atussin, the first with prefix "Per" and
the second with Prefix "A".
A practical approach to the problem of similarity or dissimilarity is to go into
the whole of the two trademarks pictured in their manner of display.
Inspection should be undertaken from the viewpoint of a prospective buyer.
The two labels are entirely different in colors, contents, arrangement of words
thereon, sizes, shapes and general appearance. The contrasts in pictorial
effects and appeals to the eye is so pronounced that the label of one cannot
be mistaken for that of the other, not even by persons unfamiliar with the two
trademarks.
We now consider exclusively the two words — Pertussin and Atussin — as
they appear on the respective labels. As previously adverted to, these words
are presented to the public in different styles of writing and methods of
design. The horizontal plain, block letters of Atussin and the diagonally and
artistically upward writing of Pertussin leave distinct visual impressions. One
look is enough to denude the mind of that illuminating similarity so essential
for a trademark infringement case to prosper.
We concede the possibility that buyers might be able to obtain Pertussin or
Attusin without prescription. When this happens, then the buyer must be one
throughly familiar with what he intends to get, else he would not have the
temerity to ask for a medicine — specifically needed to cure a given ailment.
In which case, the more improbable it will be to palm off one for the other. For
a person who purchases with open eyes is hardly the man to be deceived.
(6) RECARO vs EMBISAN
FACTS: Paula Recaro, hereafter referred to as plaintiff, alleged that she is
doing business under the registered name and style of "BIG FIVE
PRODUCTS"; that she is the assignee and owner of the trademark "BIG
FIVE 5", which is duly registered with the Philippines Patent Office as per
Registry No. 3281 dated April 29, 1952; that since May 22, 1952, she had
been using and affixing said trade-mark on the printed labels (a facsimile of
which is appended to the complaint) of her products, namely in vegetable
PROPERTY LAW 
lard repacked for sale on retail, with which she is identified in the mind of the
public.
Nestor Embisan, doing business under the name and style "Nel-Coff
Products", is, likewise, engaged in the repacking of vegetable lard on which
he uses printed labels bearing the trademark "Big Three" (a facsimile of
which is, likewise, appended to the complaint) which is not registered with
said Patent Office and is but a reproduction, a counterfeit copy or colorable
imitation of plaintiff's aforementioned registered trade-mark, to such an extent
as is likely to cause confusion or mistake or to deceive purchasers or others
as to the source or origin of such repacked products, in gross and
unauthorized infringement of plaintiff's certificate of registration.
Defendant filed an answer stating that he has no knowledge or information
sufficient to form a belief as to the truth of plaintiff's allegations concerning
her personal circumstances, her alleged ownership of the "Big Five
Products", and of the trade-mark "BIG FIVE 5", as well as of the registration
and use thereof by plaintiff.
Soon thereafter, plaintiff filed a "petition for summary judgment and dismissal
of the complaint", upon the round that defendant's answer was such as to
raise no genuine issue as to any of the material allegations of the complaint;
that, as to its allegation which were denied by defendant for lack of
knowledge or information sufficient to form a belief, plaintiff annexed to the
petition her affidavit of merit, as well as a copy of the deed of assignment in
her favor of the right, title and interest in and to the trade-mark "BIG FIVE 5"
and of the certificate of registration thereof with the Philippines Patent Office.
the lower court held that said petition was well founded and rendered
judgment "enjoining the defendant permanently and perpetually from using
wrappings on his products containing the printed labels 'Big Three' and such
devices and words as to constitute infringement of patent and unfair
competition.
A reconsideration of said decision having been denied, defendant interposed
the present appeal, which was certified to us by the Court of Appeals, only
issues of law being raised in defendant's brief, namely, that the trial court
erred: (1) "in rendering summary judgment considering that there are
material issues of fact clearly presented for trial and in issuing a permanent
injunction"; (2) "in denying defendant-appellant's motion for reconsideration";
7 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
and (3) "in awarding appellee P100 for attorneys fees and in denying
appellant's counterclaim for damages."
ISSUE: Whether or not there is trademark infringement.
HELD: NO.
The affidavit and other documents, attached to plaintiff's petition for summary
judgment show that the trade-mark "BIG FIVE 5" was duly registered with the
Philippines Patent Office since April 29, 1952, for use in packing or wrapping
of Class 47, vegetable lard; that by virtue of an instrument, dated June 1,
1954, Sy Lin, the original owner of said trade-mark, had sold, assigned and
transferred his right, title and interest thereto and to the registration thereof,
together with the goodwill of the business in connection therewith, to plaintiff
herein; and that said deed of sale, assignment and transfer in favor of plaintiff
had been duly annotated and registered with the Philippines Patent Office,
and acknowledged by the same. Upon the other hand, defendant has
admitted that he is engaged in the repacking of vegetable lard and that he
has been using thereon "for sometime" printed labels bearing the trade-mark
"Nel's Big 3 Lard". What is more, defendant does not claim that the latter is
registered. Lastly, a comparison thereof with plaintiffs label readily shows
such of a resemblance in the general features of both as is likely on deceive
the ordinary purchaser, exercising ordinary are, and induce him to believe
that the goods bearing such labels are products of one and the same
enterprise, particularly plaintiff herein, she having been, evidently, in the
business of repacking vegetable lard before defendant herein.
Hence, there is no genuine issue about the fact that the use of the trade-
mark "Nel's Big 3" on vegetable lard repacked by the defendant constitutes
an infringement upon plaintiff's registered trade-mark "Big Five 5", which is
similarly used on repacked vegetable lard, and the lower court did not err in
granting, by summary judgment, the injunction prayed for by the plaintiff, in
dismissing defendant's counterclaim, and in refusing to reconsider said
judgment.
Defendant insists, however, that, he having alleged, in his answer, that he
has taken steps to substitute and has actually substituted his trade-mark
"Nel's Big 3 Lard" with that of "MARCA 3 LARD", the question raised in
plaintiff's complaint has become moot, and, consequently, the lower court
should not have granted the relief in prayed for. This contention is untenable.
PROPERTY LAW 
Firstly, it is based upon an allegation, which has not been established, not
even supported by affidavit. Secondly, the affidavit, annexed to plaintiff's
petition for summary judgment shows that said "MARCA 3 LARD" label is still
a colorable imitation of plaintiff's trade-mark. Thirdly plaintiff seeks and is
entitled to a permanent injunction, in the absence of which defendant might
resume the use of his former trade-mark "Nel's Big 3".
(7) ROMERO vs MAIDEN OF BRASSIERE
FACTS: Respondent company, a foreign corporation, filed with respondent
Director of Patents an application for registration (pursuant to Republic Act
No. 166) of the trademark "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; that it had been continuously used by it in trade in, or with
the Philippines for over 10 years; that said trademark "is on the date of this
application, actually used by respondent company on the following goods,
classified according to the official classification of goods (Rule 82) -
Brassieres, Class 40"; and that said trademark is applied or affixed by
respondent to the goods by placing thereon a woven label on which the
trademark is shown.
Acting on said application, respondent Director, on August 13, 1957,
approved for publication in the Official Gazette said trademark of respondent
company. Respondent Director issued to respondent company a certificate of
registration of with, trademark "Adagio".
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; that its registration was
obtained fraudulently or contrary to the provisions of Section 4, Chapter II of
Republic Act No. 166; and that the application for its registration was not filed
in accordance with the provisions of Section 37, Chapter XI of the same Act.
Petitioner also alleged that said trademark has not become distinctive of
respondent company's goods or business; that it has been used by
respondent company to classify the goods (the brassieres) manufactured by
it, in the same manner as petitioner uses the same; that said trademark has
been used by petitioner for almost 6 years; that it has become a common
8 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
descriptive name; and that it is not registered in accordance with the
requirements of Section 37(a), Chapter XI of Republic Act No. 166.
Director of Patent—dismissed the petition for cancellation.
ISSUE: Whether or not trademark "Adagio" has become a common
descriptive name of a particular style of brassiere and is, therefore,
unregistrable.
HELD: NO.
This claim is without basis in fact. 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 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" (Exh.
W-2), "Chansonette" (Exh. W-3), "Prelude" (Exh. W-4), "Over-ture" (Exh. W-
6), and "Concerto" (Exh. V), to identify, as a trademark, the different styles or
types of its brassieres. As respondent Director pointed out, "the fact that said
mark is used also to designate a particular style of brassiere, does not affect
its registrability as a trademark" (Kiekhaefer Corp. v. Willys-Overland Motors,
Inc., 111 USPQ 105).
It is not true that respondent company did not object to the use of said
trademark by petitioner and other local brassiere manufacturers. The records
show that respondent company's agent, Mr. Schwartz, warned the Valleson
Department Store to desist from the sale of the "Adagio" Royal Form
brassieres manufactured by petitioner (t.s.n., pp. 27-28, Oct. 7, 1958), and
even placed an advertisement (Exhs. 3 & 4) in the local newspapers (Manila
Daily Bulletin, Manila Times, Fookien Times, and others) warning the public
against unlawful use of said trademark (t.s.n., p. 15, Aug. 17, 1959). The
advertisement (Exh. U) in the Manila Times made by respondent company
on February 9, 1958, was brought to petitioner's attention (t.s.n., p. 24, Oct.
7, 1958), which must have prompted him to file this present petition for
cancellation, on February 26, 1958.
Appellant next contends that the trademark "Adagio at the time it was
registered (in the Philippines) on October 17, 1957, had long been used by
PROPERTY LAW 
respondent company, only "to designate a particular style or quality of
brassiere and, therefore, is unregistrable as a trademark. In support of the
contention, he alleges that the sentence "Maidenform bras are packaged for
your quick shopping convenience.
This contention is untenable. Said sentence appearing on the package (Exh.
W), standing alone, does not conclusively indicate that the trademark
"Adagio" is merely a style of brassiere. The testimony of Mr. Schwartz,
witness of respondent company, belies petitioner's claim.
(8) LYCEUM vs COURT OF APPEALS
FACTS: Petitioner is an educational institution duly registered with the
Securities and Exchange Commission ("SEC"). When it first registered with
the SEC on 21 September 1950, it used the corporate name Lyceum of the
Philippines, Inc. and has used that name ever since.
On 24 February 1984, petitioner instituted proceedings before the SEC to
compel the private respondents, which are also educational institutions, to
delete the word "Lyceum" from their corporate names and permanently to
enjoin them from using "Lyceum" as part of their respective names.
Petitioner had sometime before commenced in the SEC a proceeding (SEC-
Case No. 1241) against the Lyceum of Baguio, Inc. to require it to change its
corporate name and to adopt another name not "similar [to] or identical" with
that of petitioner. In an Order dated 20 April 1977, Associate Commissioner
Julio Sulit held that the corporate name of petitioner and that of the Lyceum
of Baguio, Inc. were substantially identical because of the presence of a
"dominant" word, i.e., "Lyceum," the name of the geographical location of the
campus being the only word which distinguished one from the other
corporate name. The SEC also noted that petitioner had registered as a
corporation ahead of the Lyceum of Baguio, Inc. in point of time, 1 and
ordered the latter to change its name to another name "not similar or
identical [with]" the names of previously registered entities.
The Lyceum of Baguio, Inc. assailed the Order of the SEC before the
Supreme Court in a case docketed as G.R. No. L-46595. In a Minute
Resolution dated 14 September 1977, the Court denied the Petition for
Review for lack of merit. Entry of judgment in that case was made on 21
October 1977.
9 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
Petitioner then wrote all the educational institutions it could find using the
word "Lyceum" as part of their corporate name, and advised them to
discontinue such use of "Lyceum." When, with the passage of time, it
became clear that this recourse had failed, petitioner instituted before the
SEC SEC-Case No. 2579 to enforce what petitioner claims as its proprietary
right to the word "Lyceum."
SEC—sustained that the Petitioner has an exclusive right over the worf
“Lyceum”
SEC En Banc—reversed and set aside the decision of the SEC Division.
CA—Affirmed the decision of the SEC EN Banc.
Hence, this petition.
ISSUE: Whether or not Lyceum as a generic word cannot be appropriated by
the petitioner to the exclusion of others.
HELD: NO.
"Under the doctrine of secondary meaning, a word or phrase originally
incapable of exclusive appropriation with reference to an article in the
market, because geographical or otherwise descriptive might nevertheless
have been used so long and so exclusively by one producer with reference to
this article that, in that trade and to that group of the purchasing public, the
word or phrase has come to mean that the article was his produce (Ana Ang
vs. Toribio Teodoro, 74 Phil. 56). This circumstance has been referred to as
the distinctiveness into which the name or phrase has evolved through the
substantial and exclusive use of the same for a considerable period of time.
Consequently, the same doctrine or principle cannot be made to apply where
the evidence did not prove that the business (of the plaintiff) has continued
for so long a time that it has become of consequence and acquired a good
will of considerable value such that its articles and produce have acquired a
well-known reputation, and confusion will result by the use of the disputed
name (by the defendant) (Ang Si Heng vs. Wellington Department Store,
Inc., 92 Phil. 448).
With the foregoing as a yardstick, [we] believe the appellant failed to satisfy
the aforementioned requisites. No evidence was ever presented in the
hearing before the Commission which sufficiently proved that the word
PROPERTY LAW 
'Lyceum' has indeed acquired secondary meaning in favor of the appellant. If
there was any of this kind, the same tend to prove only that the appellant had
been using the disputed word for a long period of time. Nevertheless, its
(appellant) exclusive use of the word (Lyceum) was never established or
proven as in fact the evidence tend to convey that the cross-claimant was
already using the word 'Lyceum' seventeen (17) years prior to the date the
appellant started using the same word in its corporate name. Furthermore,
educational institutions of the Roman Catholic Church had been using the
same or similar word like 'Liceo de Manila,' 'Liceo de Baleno' (in Baleno,
Masbate), 'Liceo de Masbate,' 'Liceo de Albay' long before appellant started
using the word 'Lyceum'. The appellant also failed to prove that the word
'Lyceum' has become so identified with its educational institution that
confusion will surely arise in the minds of the public if the same word were to
be used by other educational institutions.
In other words, while the appellant may have proved that it had been using
the word 'Lyceum' for a long period of time, this fact alone did not amount to
mean that the said word had acquired secondary meaning in its favor
because the appellant failed to prove that it had been using the same word
all by itself to the exclusion of others. More so, there was no evidence
presented to prove that confusion will surely arise if the same word were to
be used by other educational institutions. Consequently, the allegations of
the appellant in its first two assigned errors must necessarily fail.
(9) VICTORIAS MILLING COMPANY INC. v. ONG SU
FACTS: The petitioner, Victorias Milling Company, Inc., a domestic
corporation and engaged in the manufacture and sale of refined granulated
sugar is the owner of the trademark "VICTORIAS" and d design registered in
the Philippines Patent Office on November 9, 1961.
- The respondent Ong Su is engaged in the repacking and sale of refine
sugar and is the owner of the trademark "VALENTINE" and design registered
in the Philippines Patent Office on June 20, 1961.
- Victorias Mining Company, Inc. filed with the Philippine Patent Office a
petition to cancel the registration of the Ong Su trademark "Valentine." The
petitioner alleged that its trademark "Victorias" and diamond design has
10 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
distinctive of its sugar long before the respondent used its trademark; that the
registration of "Valentine" and design has caused and will cause great
damage to petitioner by reason of mistake, confusion, or deception among
the purchasers because it is similar to its "Victorias" trademark; that
registration was fradulently obtained by Ong Su and that "Valentine" faisely
suggests a connection with Saint Valentine or with an institution or belief
connected therewith.
- The respondent averred that he is doing business under the name and style
"Valentine Packaging" and has registered the trademark "Valentine" with a
design for sugar and was issued Certificate of Registration No. 8891 dated
June 20, 1961; that the trademark "Victorias" with diamond design and the
trademark "Valentine" with a design are two different marks; and that there is
absolutely no likelihood of confusion, mistake or deception to purchasers
through the concurrent use of the petitioner's mark "Victorias" with a diamond
design and the respondents' mark "Valentine" with a design in connection
with sugar.
- Arturo Chicane a witness for the respondent, testified that he was a
distribution agent of Ong Su that he travelled a lot but he river own across an
instance when the respondent Ong Su product was mistaken for the
petitioner's product; that he found the diamond design to be quite common in
combination with other words used as trademarks as a background or to
enhance their appearance, such as "DIAMOND" and design.
- The Director of Patents denied the petition to cancel the certificate of
registration of the respondent Ong Su covering the trademark "Valentine"
and design because: There is no question that as to their respective literal
designation the trademarks are different. One is VALENTINE while the other
is VICTORIAS. Thus, as to sound and connotation there is no dispute as to
their dissimilarity. Common geometric shapes such as circles, ovals,
squares, triangles, diamonds, and the like, when used as vehicles for display
on word marks, ordinarily are not retarded as indicia of origin for goods to
which the marks are applied, unless of course they have acquired secondary
meaning. I have scoured the records completely to ascertain if the petitioner
has submitted satisfactory evidence in this regard, but I find absolutely
nothing to base a ruling that the triangle (sic) design has acquired a
secondary meaning with respect to its sugar business.
PROPERTY LAW 
- The director further stated that considering herein that the petitioner failed
to establish that diamond design component of its mark has acquired a
secondary meaning and that the literal portion of the marks have no
similarity, there is no reasonable likelihood of purchaser confusion resulting
from registrant's use of VALENTINE within a diamond and petitioner's use of
VICTORIAS within a diamond. As regards the colors black and red used, it is
fundamental in trademark jurisprudence that color alone, unless displayed in
a distinct or arbitrary design, does not function as a trademark, inasmuch as
here, or elsewhere, the colors black and red are not so displayed by the
petitioner, and are primary colors commonly and freely used in the printing
business.
- Finally, as regards the printing sequences or arrangement of such legends
as weight, contents, and manufacturer or packer, I regard it as merely a
matter pertaining to the address of the goods' — a matter involving unfair
competition over which the Patent Office has no jurisdiction.
ISSUE: Whether or not Victorias is confusingly similar with Valentine.
HELD: NO. It seems clear that the words "Valentine" and "Victorias" and the
names and places of business of Victorias Milling Company, Inc. and Ong Su
are the dominant features of the trademarks in question.
- The petitioner has not established such a substantial similarity between the
two trademarks in question as to warrant the cancellation of the trademark
'Valentine'of the respondent Su. The Director of Patents correctly ruled that
he has no jurisdiction over the issue of unfair competition. Under Section 27
of the Trade Mark Law, Republic Act No. 166, after actions for unfair
competition shall be brought before the proper Court of First Instance.
- There is no evidence that the respondent Ong Su had obtained the
registration of his trademark "Valentine" and design by means of fraud. The
said trademark was registered in the Philippines Patent Office before the
petitioner registered its trademark.
The record and evidence show that Ong Su had also used in his business
the name Mariano Ang. Hence the licenses and permits in the name of Ong
Su and/or Mariano Ang were correctly admitted as evidence.
(10) ONG AI GUI v. DIRECTOR OF PATENTS
11 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
FACTS: Ong Ai Gui filed an application with the Director of Patents for the
registration of the following trade name: 20th Century Nylon Shirts Factory.
This was used for the first time by the applicant in 1941 for his business
described as follows: General Merchandise dealing principally in textiles,
haberdasheries; also operating as manufacturer of shirts, pants, and other
men and women’s wears.
- Upon filing of the application, the same was referred by the Director to an
examiner. The latter held that the words ‘’shirts factory’’ are not registrable,
so the applicant made a disclaimer of said words inserting a statement to that
effect in his original application.
- The Director ordered the publication of the trade name in the official
Gazette. Publication was made but before the expiration of the period of filing
opposition, Atty. Wolfson, on behalf of E.I. De Pont Nemours and Company
presented an opposition on the ground that the word ‘’Nylon’’ was a name
coined by E.I. Du Pont de Nemours and Company as a generic name of a
synthetic fabric material, that the use of the name "nylon" is descriptive or
deceptively misdescriptive of the goods, business of manufactures of the
applicant; that the use of the name would produce confusion in trade and
would deceive the public; and that "nylon" is not distinctive of applicant's
goods; business and manufactures and applicant does not claim that it has
so become.
- This opposition, however, was dismissed by the Director on the ground that
at the time it was submitted Atty. J. A. Wolfson did not have, nor did he
submit, authority to file it (opposition) in the corporate name, and that the
subsequent authorization from the corporation to that effect did not cure the
general defect in the opposition.
- While the Director dismissed the opposition, he ruled that the application
must be disapproved unless the word "nylon" is also disclaimed. The
grounds for the disapproval of the application were as follows:
"Nylon" is merely descriptive of the business of shirt-making if the
shirts are made of nylon. It is deceptively misdescriptive of said
business, if the shirts are not made of nylon. In either case, its
registration in the Principal Register as a trade-name, or as a part of
a trade-name, is expressly forbidden by subsection (e) of Section 4
PROPERTY LAW 
 of Republic Act No. 166, as amended by Section 2 of Republic Act
No. 638.
- The applicant has filed an appeal to this Court. During the pendency of this
appeal, E. I. Du Pont de Nemours and Co. filed a petition to intervene, which
petition was granted.
ISSUE: Whether or not NYLON is a generic term.
HELD: YES. The Court ruled that in connection with shirt-making, NYLON
can never become distinctive thus, can never acquire secondary meaning
because it is a generic term distinctive of shirts or of the business of making
them, so no length of use and no amount of advertising will make nylon
distinctive of shirts and of the business of manufacturing them.
- The court upheld the Director of Patents reasoning that a word or a
combination of words, in this case “nylon” and “shirt factory”, which is merely
descriptive of an article of trade, or of its composition, characteristics, or
qualities, cannot be appropriated and protected as a trademark to the
exclusion of its use by others.
- Furthermore, the use of the term "nylon" in the tradename is both
"descriptive" and "deceptively and misdescriptive" of the applicant-appellant's
business, for apparently he does not use nylon in the manufacture of the
articles he produces and sells. Not to mention, the word “nylon” is a general
term which is not distinctive and, thus, cannot be afforded secondary
meaning attributable petitioner’s business so as to permit registration. The
reason for this is that inasmuch as all persons have an equal right to produce
and vend similar articles, they also have the right to describe them properly
and to use any appropriate to himself exclusively any word or expression,
properly descriptive of the article, its qualities, ingredients, or characteristics,
and thus limit other persons in the use of language appropriate to the
description of their manufactures, the right to the use of such language being
common to all. This rule excluding descriptive terms has also been held to
apply to trade-names. As to whether words employed fall within this
prohibition, it is said that the true test is not whether they are exhaustively
descriptive of the article designated, but whether in themselves, and as they
are commonly used by those who understand their meaning, they are
reasonably indicative and descriptive of the thing intended. If they are thus
12 |A D D I T I O N A L CASES FOR MIDTERMS- INTELLECTUAL
descriptive, and not arbitrary, they cannot be appropriated from general use
and become the exclusive property of anyone.
- Applicant petitioner was not entitled to the exclusive use of the terms
(11) THE GEORGE W. LUFT COMPANY INC. v. NGO GUAN &
DIRECTOR OF PATENTS
FACTS: Petitioner George Luft Co., Inc. is the owner of the trademark
‘’Tangee’’ which it has allegedly used since 1928 and is covered by a
Certificate of registration of the Philippine Patent Office dated 1950. In 1959,
Ngo Guan applied for the registration of the trademark ‘’Tango’’ which he
claims to have used since 1958.
- Petitioner objected thereto alleging that Tango is likely to be mistaken for
Tangee upon the ground that the two trademarks are confusingly similar.
Director of Patents: Overruled the said opposition and granting Ngo Guan’s
application.
ISSUE: Whether or not the Tango trademark is confusingly similar with the
Tangee trademark.
HELD: NO. One of the factors essential therefor is whether or not there is a
general similarity in the appearance of the trademarks in question, which
cannot be determined with reasonable certainty without a physical
examination and comparison thereof. Petitioner has rendered such
examination impossible, by not introducing any evidence whatsoever as to
the appearance of Tangee trademark. Such omission suggests that its
appearance is not analogous to that of respondent’s Tango otherwise,
petitioner would not have failed to present a sample of its trademark, for
comparison with that of respondent Ngo Guan.
- The word Tango has a well-established meaning, for it describes a
particular dance that is well known in the Philippines. In fact, respondent’s
label includes a picture of a man and woman dancing. Tango is used for a
hair pomade in which petitioner does not deal. The trademark of petitioner
was used for specified chemicals, medical and pharmaceutical preparations-
which Ngo Guan does not intend to use its Tango on articles of that kind.
PROPERTY LAW 

12. MASSO HERMANOS, S.A., petitioner, vs. DIRECTOR OF
PATENTS, respondent.
Facts: Masso Hermanos, S.A., is the registered owner under Act No. 666 of
the trademark composed of the word "Cosmopolite" used on canned fish.
Said trademark was first registered and the certificate of registration No.
1881 issued therefor on March 16, 1917, by the Director of the Philippine
library and museum for a period of thirty years, under the provisions of Act
No. 666. A renewal of the certificate of registration was applied for and
issued on June 6, 1947 by the Director of the Bureau of Commerce also
under the provisions of said Act.
On June 14, 1948, the petitioner, Masso Hermanos, applied to the Director of
Patents for a new certificate of registration of said trademark under the
provisions of section 41 (a) of Republic Act No. 166.
A trademark examiner of the Patents Office denied the petition on the ground
that the word "Cosmopolite", as a trademark for canned fish is descriptive of
said goods and, therefore, could not have been legally registered as a
trademark under the provisions of Act No. 666 and, consequently, is not
entitled to registration under section 41 (a) of Republic Act No. 166. The
petitioner appealed from said ruling to the Director of Patents on the ground
that the examining officer was not authorized to re-examine certificates which
were originally issued under Act No. 666 and surrendered for re-registration
under section 41(a) of Republic Act No. 166. The Director of Patents affirmed
the ruling of the trademark examiner; hence, the present petition
for certiorari was filed in his court.
Issue: Is the word "Cosmopolite" descriptive?
Ruling: Section 13 of Act No. 666 provides that — ". . . But no alleged
trademark . . . shall be registered which is merely the name, quality or
description of the mechandise upon which it is to be used. In an application
for registration, the Director of the Bureau of Commerce shall decide the
presumptive lawfulness of claim to the alleged trademark.'
The word "Cosmopolite" does not give the name, quality or description of the
canned fish for which it is used. It does not even describe the place of origin,
for it does not indicate the country or place where the canned fish was
manufactured. it is a very general term which does not give the kind or
quality of the goods. For example, a dealer in shoes cannot register a
13 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
trademark "Leather Shoes" because that would be descriptive and it would
be right to use the same words with reference to their merchandise.
The court is, therefore, of the opinion that the registration of the trademark
"Cosmopolite" under Act No. 666 was valid and is subsisting. The Director of
Patents should not for light and unsubstantial reasons reverse the ruling of
the former officer in charge of trademark registration, which has been
accepted and in force since 1917 up to the present.
13. Societe vs. CA
Facts: Respondent CFC Corporation filed an application for the registration
of the trademark FLAVOR MASTER for instant coffee. Petitioners, a Swiss
company and a domestic corporation licensee of Societe, opposed on the
ground that it is confusingly similar to its trademark for coffee and coffee
extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that
the dominant word MASTER is present in the 3 trademarks. Respondent
CFC argued that the word MASTER cannot be exclusively appropriated
being a descriptive or generic term. BPTTT denied CFC’s application. CA
held otherwise.
Issue: Whether or not the word MASTER is descriptive or generic term
incapable of exclusive appropriation.
Ruling: NO. The word “MASTER” is neither a generic nor a descriptive term.
As such, said term cannot be invalidated as a trademark and, therefore, may
be legally protected. Generic terms are those which constitute “the common
descriptive name of an article or substance,” or comprise the “genus of which
the particular product is a species,” or are “commonly used as the name or
description of a kind of goods,” or “imply reference to every member of a
genus and the exclusion of individuating characters,” or “refer to the basic
nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product,” and are not legally protectable. On the
other hand, a term is descriptive and therefore invalid as a trademark if, as
understood in its normal and natural sense, it “forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has
never seen it and does not know what it is,” or “if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the goods,”
or if it clearly denotes what goods or services are provided in such a way that
the consumer does not have to exercise powers of perception or imagination.
Rather, the term “MASTER” is a suggestive term brought about by the
advertising scheme of Nestle. Suggestive terms are those which, in the
phraseology of one court, require “imagination, thought and perception to
reach a conclusion as to the nature of the goods.” Such terms, “which subtly
PROPERTY LAW 
connote something about the product,” are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of
shedding “some light” upon certain characteristics of the goods or services in
dispute, they nevertheless involve “an element of incongruity,”
“figurativeness,” or ” imaginative effort on the part of the observer.” The term
“MASTER”, therefore, has acquired a certain connotation to mean the coffee
products MASTER ROAST and MASTER BLEND produced by Nestle. As
such, the use by CFC of the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or even to
deceive the ordinary purchasers.
14. Philippine Refining vs. Ng Sam
Facts: The trademark "CAMIA" was first used ill the Philippines by petitioner
on its products in 1922. In 1949, petitioner caused the registration of said
trademark with the Philippine Patent Office under certificates of registration
Nos. 1352-S and 1353-S, both issued on May 3, 1949. Certificate of
Registration No. 1352-S covers vegetable and animal fats, particularly lard,
butter and cooking oil, all classified under Class 47 (Foods and Ingredients of
Food) of the Rules of Practice of the Patent Office, while certificate of
registration No. 1353-S applies to abrasive detergents, polishing materials
and soap of all kinds (Class 4).
On November 25, 1960, respondent Ng Sam, a 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.
After due publication of the application, petitioner filed an opposition, in
accordance with Section 8 of Republic Act No. 166, otherwise known as the
Trademark Law, as amended. Basis of petitioner's opposition was Section
4(d) of said law, which provides as unregistrable:
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,
14 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL
business services of the applicant, to cause confusion or
mistake or to deceive purchasers.
The parties submitted the case for decision without presenting any evidence:
thereafter the Director of patents rendered a decision allowing registration of
the trademark "CAMIA" in favor of Ng Sam.
Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related
that the use of the trademark 'Camia' on said goods would result to confusion
as to their origin?
Held: NO. The businesses of the parties are non-competitive and the
products are so unrelated that the use of the same trademark will not give
rise to confusion nor cause damage to the petitioner. The right to a
trademark is a limited one, hence, others may use the same mark on
unrelated goods if no confusion would arise.
A trademark is designed to identify the user, hence, it should be so distinctive
and sufficiently original so as to enable those who see it to recognize
instantly its source or origin. A trademark must be affirmative and definite,
significant and distinctive and capable of indicating origin.
'Camia' as a trademark is far from being distinctive, It in itself does not
identify the petitioner as the manufacturer of producer of the goods upon
which said mark is used. If a mark is so commonplace, it is apparent that it
can't identify a particular business and he who adopted it first cannot be
injured by any subsequent appropriation or imitation by others and the public
will not be deceived.
Mere classification of the goods cannot serve as the decisive factor in the
resolution of whether or not the goods a related. Emphasis should be on the
similarity of products involved and not on arbitrary classification of general
description of their properties or characteristics.
PROPERTY LAW 