246 CORPORATION vs. DAWAY AND MONTRES ROLEX S.A. and ROLEX CENTRE PHIL. LIMITED G.R. No.

157216. Nov !" # 2$% 2$$& 'ACTS( Private Respondents Montres Rolex S.A. and Rolex Centre Phil. Ltd. , proprietors of Rolex and Crown Device filed against Petitioner 24 Corporation for trade!ar" infringe!ent and da!ages with the R#C $%e&on Cit'. (t was alleged that said Petitioner %sed the !ar" )Rolex* in its na!e, Rolex M%sic Lo%nge, witho%t a%thorit'. Petitioner co%ntered that there is no trade!ar" infringe!ent +eca%se there arises no conf%sion fro! the %se of the !ar" )Rolex* +eca%se the entertain!ent +%siness is totall' %nrelated to the ite!s catered +' the Respondents s%ch as watches, cloc"s, +racelets and parts thereof. ISS)E( ,hether or not there is no trade!ar" infringe!ent on the gro%nd that the goods and services are totall' %nrelated and non-co!peting with each other. HELD( ./. #he r%le %nder the old #rade!ar" Law, that where the goods for which the identical !ar"s are %sed are %nrelated, there can +e no li"elihood of conf%sion and there is therefore no infringe!ent in the %se +' the 0%nior %ser of the registered !ar" on the entirel' different goods, has +een !odified +' Section 122.13f4 of the (ntellect%al Propert' Code 3Rep%+lic Act .o. 52624, which too" effect on 7an%ar' 1, 1665. 8nder the latter law, A !ar" cannot +e registered if it9 3f4 (s identical with, or conf%singl' si!ilar to, or constit%tes a translation of a !ar" considered well-"nown in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not si!ilar to those with respect to which registration is applied for9 Provided, #hat %se of the !ar" in relation to those goods or services wo%ld indicate a connection +etween those goods or services, and the owner of the registered !ar"9 Provided, further, #hat the interest of the owner of the registered !ar" are li"el' to +e da!aged +' s%ch %se: A 0%nior %ser of a well-"nown !ar" on goods or services which are not si!ilar to the goods or services, and are therefore %nrelated, to those specified in the certificate of registration of the well-"nown !ar" is precl%ded fro! %sing the sa!e on the entirel' %nrelated goods or services, s%+0ect to the following re;%isites, to wit9 1. #he !ar" is well-"nown internationall' and in the Philippines. 8nder R%le 1<2 of the R%les and Reg%lations on #rade!ar"s, Service Mar"s, #rade .a!es and

a4

+4 c4 d4 e4 f4 g4 h4 i4 04 "4 l4

Mar"ed or Sta!ped Containers, in deter!ining whether a !ar" is well "nown, the following criteria or an' co!+ination thereof !a' +e ta"en into acco%nt9 the d%ration, extent and geographical area of an' %se of the !ar", in partic%lar, the d%ration, extent and geographical area of an' pro!otion of the !ar", incl%ding advertising or p%+licit' and presentation, at fairs or exhi+itions, of the goods and=or services to which the !ar" applies: the !ar"et share in the Philippines and in other co%ntries, of the goods and=or services to which the !ar" applies: the degree of the inherent or ac;%ired distinction of the !ar": the ;%alit'-i!age or rep%tation ac;%ired +' the !ar": the extent to which the !ar" has +een registered in the world: the excl%sivit' of the registration attained +' the !ar" in the world: the extent to which the !ar" has +een %sed in the world: the excl%sivit' of %se attained +' the !ar" in the world: the co!!ercial val%e attri+%ted to the !ar" in the world: the record of s%ccessf%l protection of the rights in the !ar": the o%tco!e of litigations dealing with the iss%e of whether the !ar" is a well"nown !ar": and the presence of a+sence of identical or si!ilar !ar"s validl' registered for or %sed on identical or si!ilar goods or services and owned +' persons other than the person clai!ing that his !ar" is a well-"nown !ar".

2. #he %se of the well-"nown !ar" on the entirel' %nrelated goods or services wo%ld indicate a connection +etween s%ch %nrelated goods or services and those goods or services specified in the certificate of registration in the well "nown !ar". #his re;%ire!ent refers to the li"elihood of conf%sion of origin or +%siness or so!e +%siness connection or relationship +etween the registrant and the %ser of the !ar". 2. #he interests of the owner of the well-"nown !ar" are li"el' to +e da!aged. >or instance, if the registrant will +e precl%ded fro! expanding its +%siness to those %nrelated good or services, or if the interests of the registrant of the well-"nown !ar" will +e da!aged +eca%se of the inferior ;%alit' of the good or services of the %ser. ASIA *REWERY% INC. vs.THE HON. CO)RT O' APPEALS and SAN MIG)EL CORPORATION G.R. No. 1$&54& +,-. 5% 1//& 'ACTS( (n 1655, San Mig%el Corporation 3SMC4 filed against Asia ?rewer', (nc. 3A?(4 for infringe!ent of trade!ar" and %nfair co!petition on acco%nt of the latter@s Beer na Beer prod%ct, which has +een co!peting with the for!er@s San Mig%el Pale Pilsen in the local !ar"et.

#he trial co%rt dis!issed SMC@s co!plaint on the gro%nd that there was neither trade!ar" infringe!ent nor %nfair co!petition co!!itted +' A?(. /n appeal, the CA reversed the trial co%rt@s decision and held that A?( was g%ilt' of trade!ar" infringe!ent and %nfair co!petition. ISS)E( ,hether or not A?( co!!itted trade!ar" infringe!ent and %nfair co!petition against SMC. HELD( .o. No In0#1n2 ! n3 o0 T#ad !a#4 (nfringe!ent is deter!ined +' the Atest of do!inanc'A rather than +' differences or variations in the details of one trade!ar" and of another. Si!ilarit' in si&e, for! and color, while relevant, is not concl%sive. (f the co!peting trade!ar" contains the !ain or essential or do!inant feat%res of another, and conf%sion and deception is li"el' to res%lt, infringe!ent ta"es place. D%plication or i!itation is not necessar': nor it is necessar' that the infringing la+el sho%ld s%ggest an effort to i!itate. (n this case, the do!inant feat%re of SMCBs trade!ar" is the na!e of the prod%ct9 SA. M(C8DL PALD P(LSD., written in white Cothic letters with ela+orate serifs at the +eginning and end of the letters ASA and AMA on an a!+er +ac"gro%nd across the %pper portion of the rectang%lar design. /n the other hand, the do!inant feat%re of A?(Bs trade!ar" is the na!e9 ?DDR PALD P(LSD., with the word A?eerA written in large a!+er letters, larger than an' of the letters fo%nd in the SMC la+el. SMCBs +rand or trade!ar"9 ASA. M(C8DL PALD P(LSD.A is not infringed +' A?(Bs !ar"9 A?DDR .A ?DDRA or A?DDR PALD P(LSD..A A?( !a"es its own +ottle with a +%lging nec" to differentiate it fro! SMCBs +ottle, and prints A?(Bs na!e in three 324 places on said +ottle 3front, +ac" and +ottle cap4 to prove that it has no intention to pass of its A?DDRA as ASA. M(C8DL.A Also, the word A?DDRA does not appear in SMCBs trade!ar", 0%st as the words ASA. M(C8DLA do not appear in A?(Bs trade!ar". Eence, there is a+sol%tel' no si!ilarit' in the do!inant feat%res of +oth trade!ar"s. ?esides the dissi!ilarit' in their na!es, the Co%rt also noted other dissi!ilarities in the trade dress or appearance of the co!peting prod%cts. Also #he fact that the words pale pilsen are part of A?(Bs trade!ar" does not constit%te an infringe!ent of SMCBs trade!ar"9 SA. M(C8DL PALD P(LSD., for Apale pilsenA are generic words descriptive of the color 3ApaleA4, of a t'pe of +eer 3ApilsenA4, which is a light +ohe!ian +eer with a strong hops flavor that originated in the Cit' of Pilsen in C&echoslova"ia and +eca!e fa!o%s in the Middle Ages. #he words Apale pilsenA !a' not +e appropriated +' SMC for its excl%sive %se even if the' are part of its registered trade!ar"9 SA. M(C8DL PALD P(LSD., an' !ore than s%ch descriptive words as Aevaporated !il",A Ato!ato "etch%p,A Acheddar cheese,A Acorn fla"esA and

Acoo"ing oilA !a' +e appropriated +' an' single !an%fact%rer of these food prod%cts, for no other reason than that he was the first to %se the! in his registered trade!ar". #he Co%rt concl%ded that (n view of the visi+le differences +etween the two prod%cts, it is ;%ite %nli"el' that a c%sto!er of average intelligence wo%ld !ista"e a +ottle of ?DDR PALD P(LSD. for SA. M(C8DL PALD P(LSD.. No ,n0a1# 5o!6 313on 8nfair co!petition is the e!plo'!ent of deception or an' other !eans contrar' to good faith +' which a person shall pass off the goods !an%fact%red +' hi! or in which he deals, or his +%siness, or services, for those of another who has alread' esta+lished goodwill for his si!ilar goods, +%siness or services, or an' acts calc%lated to prod%ce the sa!e res%lt. 3Sec. 26, Rep%+lic Act .o. 1 , as a!ended.4 SMCBs apprehension that ?DDR PALD P(LSD. is +eing passed off as SA. M(C8DL PALD P(LSD. is %nli"el' to happen for cons%!ers or +%'ers of +eer generall' order their +eer +' +rand. (n s%per!ar"ets and tiendas, +eer is ordered +' +rand, and the c%sto!er s%rrenders his e!pt' replace!ent +ottles or pa's a deposit to g%arantee the ret%rn of the e!pties. (f his e!pties are SA. M(C8DL PALD P(LSD., he will get SA. M(C8DL PALD P(LSD. as replace!ent. (n sari-sari stores, +eer is also ordered fro! the tindera +' +rand. #he sa!e is tr%e in resta%rants, p%+s and +eer gardens F +eer is ordered fro! the waiters +' +rand. Considering f%rther that SA. M(C8DL PALD P(LSD. has virt%all' !onopoli&ed the do!estic +eer !ar"et for the past h%ndred 'ears, those who have +een drin"ing no other +eer +%t SA. M(C8DL PALD P(LSD. these !an' 'ears certainl' "now their +eer too well to +e deceived +' a newco!er in the !ar"et. (f the' gravitate to A?(Bs cheaper +eer, it will not +e +eca%se the' are conf%sed or deceived, +%t +eca%se the' find the co!peting prod%ct to their taste. DEL MONTE CORPORATION and PHILIPPINE PAC7ING CORPORATION vs. CO)RT O' APPEALS and S)NSHINE SA)CE MAN)'ACT)RING IND)STRIES G.R. No. L879&25 +an,a#. 25% 1//$

'ACTS( Petitioner Del Monte Corporation 3Del Monte4 is a foreign co!pan' organi&ed %nder the laws of the 8nited States and not engaged in +%siness in the Philippines. Petitioner Philippine Pac"ing Corporation 3Philpac"4 is a do!estic corporation d%l' organi&ed %nder the laws of the Philippines. (n 16 6, Del Monte granted Philpac" the right to !an%fact%re, distri+%te and sell in the Philippines vario%s agric%lt%ral prod%cts, incl%ding cats%p, %nder the Del Monte trade!ar" and logo. #he for!er also a%thori&e the latter to register the patent of the del Monte catsh%p +ottle config%ration in the Philippines.

Respondent S%nshine Sa%ce Man%fact%ring (nd%stries 3SSM(4, a do!estic corporation engage in the !an%fact%re, pac"ing, distri+%tion and sale of vario%s "inds of sa%ce, identified +' the logo S%nshine >r%it Catsh%p, was registered with the ?%rea% of Do!estic #rade in 165<. (ts prod%ct contained in vario%s "inds of +ottles, incl%ding +ottles of del Monte, which were +o%ght fro! 0%n"shops for rec'cling. Petitioners, after receiving reports that respondent is %sing its excl%sivel' designed +ottles and clai!ing that the de!and to the respondent to desist %sing said +ottles had +een ignored, filed with the R#C of Ma"ati a co!plaint for trade!ar" infringe!ent and %nfair co!petition with da!ages against respondent. #he #rial co%rt dis!issed the co!plaint on the gro%nds that there were s%+stantial differences +etween the logos or trade!ar"s of the parties: that the defendant had ceased %sing the petitionersB +ottles: and respondent +eca!e the owner of the said +ottles %pon its p%rchase thereof fro! the 0%n" 'ards. Said decision was affir!ed +' the Co%rt of Appeals. ISS)E( ,hether or not Respondent SSM( co!!itted infringe!ent of trade!ar" and %nfair co!petition co!!itted against Petitioner Del Monte and Philpac" HELD( Ges. #he Co%rt r%led that SSM( was g%ilt' of trade!ar" infringe!ent on the gro%nd that the SSM( la+el is a colora+le i!itation of the Del Monte trade!ar". #he predo!inant colors %sed in the Del Monte la+el are green and red-orange, the sa!e with S%nshine. #he word Acats%pA in +oth +ottles is printed in white and the st'le of the print=letter is the sa!e. Altho%gh the logo of S%nshine is not a to!ato, the fig%re nevertheless approxi!ates that of a to!ato. the person who infringes a trade !ar" does not nor!all' cop' o%t +%t onl' !a"es colora+le changes, e!plo'ing eno%gh points of si!ilarit' to conf%se the p%+lic with eno%gh points of differences to conf%se the co%rts. ,hat is %ndenia+le is the fact that when a !an%fact%rer prepares to pac"age his prod%ct, he has +efore hi! a +o%ndless choice of words, phrases, colors and s'!+ols s%fficient to disting%ish his prod%ct fro! the others. ,hen as in this case, S%nshine chose, witho%t a reasona+le explanation, to %se the sa!e colors and letters as those %sed +' Del Monte tho%gh the field of its selection was so +road, the inevita+le concl%sion is that it was done deli+eratel' to deceive. #he Co%rt also r%led that SSM(, in %sing the +ottle of del Monte does not constit%te trade!ar" infringe!ent +%t %nfair co!petition. Altho%gh del Monte has act%al %se of the +ottleBs config%ration, the petitioners cannot clai! excl%sive %se thereof +eca%se it has not +een registered in the Principal Register. Eowever, SSM(, despite the !an' choices availa+le to it and notwithstanding that the ca%tion ADel Monte Corporation, .ot to +e RefilledA was e!+ossed on the +ottle, still opted to %se the petitionersB +ottle to !ar"et a prod%ct which Philpac" also prod%ces. #his clearl' shows the private respondentBs +ad faith and its intention to capitali&e on the latterBs rep%tation and goodwill and pass off its own prod%ct as that of Del Monte.

#he Co%rt also notes the distinctions +etween infringe!ent of trade!ar" and %nfair co!petition9 a. (nfringe!ent of trade!ar" is the %na%thori&ed %se of a trade!ar", whereas %nfair co!petition is the passing off of oneBs goods as those of another. +. (n infringe!ent of trade!ar" fra%d%lent intent is %nnecessar' whereas in %nfair co!petition fra%d%lent intent is essential. c. (n infringe!ent of trade!ar" the prior registration of the trade!ar" is a prere;%isite to the action, whereas in %nfair co!petition registration is not necessar'. EMERALD GARMENT MAN)'ACT)RING CORPORATION vs. CO)RT O' APPEALS% *)REA) O' PATENTS% TRADEMAR7S AND TECHNOLOGY TRANS'ER and H.D. LEE COMPANY% INC. G.R. No. 1$$$/9% D 5 !" # 2/% 1//5 'ACTS( (n 1651, private respondent E.D. Lee Co., (nc. is a foreign corporation organi&ed %nder the laws of Delaware, 8.S.A. (t filed a Petition for Cancellation of Registration with the ?%rea% of Patents, #rade!ar"s H #echnolog' #ransfer 3?P###4 for the trade!ar" AS#GL(S#(C MR. LDDA %sed on s"irts, 0eans, +lo%ses, soc"s, +riefs, 0ac"ets, 0ogging s%its, dresses, shorts, shirts and lingerie %nder Class 2I %nder the na!e of Petitioner D!erald Car!ent Man%fact%ring Corporation, a do!estic corporation. #his is on the gro%nd that AS#GL(S#(C MR. LDDA closel' rese!+led its own trade!ar", BLDDB as previo%sl' registered and %sed in the Philippines, and not a+andoned, as to +e li"el', when applied to or %sed in connection with petitionerBs goods, to ca%se conf%sion, !ista"e and deception on the part of the p%rchasing p%+lic as to the origin of the goods. Petitioner co%ntered that its trade!ar" was entirel' and %n!ista"a+l' different fro! that of private respondent and that its certificate of registration was legall' and validl' granted. #he Director of Patents granted the petition %sing the test of do!inanc'. (t was declared that petitionerBs trade!ar" was conf%singl' si!ilar to private respondentBs !ar" +eca%se Ait is the word BLeeB which draws the attention of the +%'er and leads hi! to concl%de that the goods originated fro! the sa!e !an%fact%rer. (t is %ndenia+l' the do!inant feat%re of the !ar". #he Co%rt of Appeals affir!ed the said decision. ISS)E( ,hether or not there is a trade!ar" infringe!ent on the gro%nd that petitionerBs trade!ar" SG#L(S#(C MR. LDD, is conf%singl' si!ilar with the private respondentBs trade!ar" lee /R LDD-R(DDR, LDD-LDD.S and LDD-S8RDS. HELD( ./.

8nder the test of do!inanc', if the co!peting trade!ar" contains the !ain or essential or do!inant feat%res of another, and conf%sion and deception is li"el' to res%lt, infringe!ent ta"es place. D%plication or i!itation is not necessar': nor it is necessar' that the infringing la+el sho%ld s%ggest an effort to i!itate. Said test foc%ses on the si!ilarit' of the prevalent feat%res of the co!peting trade!ar"s which !ight ca%se conf%sion or deception and th%s constit%tes infringe!ent. (n consideration of the trade!ar"s involved as a whole, the Co%rt r%led that petitionerBs AS#GL(S#(C MR. LDDA is not conf%singl' si!ilar to private respondentBs ALDDA trade!ar". PetitionerBs trade!ar" is the whole AS#GL(S#(C MR. LDD.A Altho%gh on its la+el the word ALDDA is pro!inent, the trade!ar" sho%ld +e considered as a whole and not piece!eal. #he dissi!ilarities +etween the two !ar"s +eco!e conspic%o%s, noticea+le and s%+stantial eno%gh to !atter especiall' in the light of the following varia+les that !%st +e factored in. #he Co%rt f%rther r%led that ALDDA is pri!aril' a s%rna!e. Private respondent cannot, therefore, ac;%ire excl%sive ownership over and sing%lar %se of said ter!. (t has +een held that a personal na!e or s%rna!e !a' not +e !onopoli&ed as a trade!ar" or tradena!e as against others of the sa!e na!e or s%rna!e. >or in the a+sence of contract, fra%d, or estoppel, an' !an !a' %se his na!e or s%rna!e in all legiti!ate wa's. 'R)IT O' THE LOOM% INC. v:. CO)RT O' APPEALS and GENERAL GARMENTS CORPORATION G.R. No. L8&2747 Nov !" # 2/% 1/94 'ACTS( Petitioner >r%it of the Loo!, (nc. 3>L(4 is a foreign corporation organi&ed and existing %nder the laws of the State of Rhode (sland, 8SA, and a registrant of a trade!ar", )>r%it of the Loo!) in the Philippine Patent /ffice 3PP/4 for its !erchandise s%ch as !enBs, wo!enBs and childrenBs %nderwear, which incl%des wo!enBs panties. Private Respondent Ceneral Car!ents Corporation 3CCC4 is a do!estic corporation and a registrant of trade!ar", )>r%it of Dve*in the PP/ for its prod%cts li"e wo!enBs panties and pa0a!as. (n 16 I, Petitioner >L( filed with the #rial Co%rt a co!plaint for infringe!ent of trade!ar" and %nfair co!petition against respondent CCC on the gro%nd that its trade!ar" the latter@s trade!ar" >R8(# >/R DJD is conf%singl' si!ilar to its trade!ar" >R8(# /> #ED L//M %sed also on wo!enBs panties and other textile prod%cts. Also, it was alleged that the color get-%p and general appearance of respondentBs hang tag consisting of a +ig red apple is a colora+le i!itation to the hang tag of petitioner. #he Co%rt r%led in favor of Petitioner and ordered the ?%rea% of Patents to cancel the registration of the #rade!ar" A>r%it for DveA. ISS)E(

,hether or there is trade!ar" infringe!ent against Petitioner >L( on the gro%nd that Respondent@s )>r%it for Dve* and its hang tag are conf%singl' si!ilar to petitionerBs trade!ar" )>r%it of the Loo!* . HELD( .o. (n the trade!ar"s >R8(# /> #ED L//M and >R8(# >/R DJD, the lone si!ilar word is >R8(#. ,D agree with the respondent co%rt that +' !ere prono%ncing the two !ar"s, it co%ld hardl' +e said that it will provo"e a conf%sion, as to !ista"e one for the other. Standing +' itself, >R8(# /> #ED L//M is wholl' different fro! >R8(# >/R DJD. As to the design and coloring sche!e of the hang tags, #he Co%rt r%led that, while there are si!ilarities in the two !ar"s li"e the red apple at the center of each !ar", there are differences or dissi!ilarities which are glaring and stri"ing to the e'e s%ch as9 1. #he shape of petitionerBs hang tag is ro%nd with a +ase that loo"s li"e a paper rolled a few inches in +oth ends: while that of private respondent is plain rectangle witho%t an' +ase. 2. #he designs differ. PetitionerBs trade!ar" is written in al!ost se!i-circle while that of private respondent is written in straight line in +igger letters than petitionerBs. Private respondentBs tag has onl' an apple in its center +%t that of petitioner has also cl%sters of grapes that s%rro%nd the apple in the center. 2. #he colors of the hang tag are also ver' distinct fro! each other. PetitionerBs hang tag is fight +rown while that of respondent is pin" with a white colored center piece. #he apples which are the onl' si!ilarities in the hang tag are differentl' colored. PetitionerBs apple is colored dar" red, while that of private respondent is light red. #rade!ar"s >R8(# /> #ED L//M and >R8(# >/R DJD do not rese!+le each other as to conf%se or deceive an ordinar' p%rchaser. #he ordinar' p%rchaser !%st +e tho%ght of as having, and credited with, at least a !odic%! of intelligence.

LA CHEMISE LACOSTE% S. A. vs. HON. OSCAR C. 'ERNANDE; and GO*INDRAM HEMANDAS% G.R. No. L86&7/68/7 Ma. 2% 1/94 GO*INDRAM HEMANDAS S)+ANANI vs.HON. RO*ERTO <. ONGPIN% 1n =1: 5a6a513. a: M1n1:3 # o0 T#ad and Ind,:3#.% and HON. CESAR SAN DIEGO% 1n =1: 5a6a513. a: D1# 53o# o0 Pa3 n3: G.R. No. L86565/ Ma. 2-% 1/94 'ACTS(

Petitioner La che!ise Lacoste is a >rench corporation and the act%al owner of the trade!ar"s )Lacoste,* )Che!ise Lacoste,* )Crocodile Device* and a co!posite !ar" consisting of the word )Lacoste* and a representation of a crocodile=alligator, %sed on clothing and other goods sold in !an' parts of the world and which has +een !ar"eted in the Philippines since 16 4. (n 16KI and 16KK, Ee!andas $. Co. was iss%ed certificate of registration for the trade!ar" )Che!ise Lacoste and $ Crocodile Device* +oth in the s%pple!ental and Principal Registr'. (n 165<, La Che!ise Lacoste SA filed for the registration of the )Crocodile device* and )Lacoste*. Ca!es and Car!ents 3Co+indra! Ee!andas, assignee of Ee!andas $.Co.4 opposed the registration of )Lacoste.* (n 1652, La Che!ise Lacoste filed with the .?( a letter-co!plaint alleging acts of %nfair co!petition co!!itted +' Ee!andas and re;%esting the agenc'@s assistance. A search warrant was iss%ed +' the trial co%rt. Jario%s goods and articles were sei&ed %pon the exec%tion of the warrants. Ee!andas filed !otion to ;%ash the warrants, which the co%rt granted. #he search warrants were recalled, and the goods ordered to +e ret%rned. La Che!ise Lacoste filed a petition for certiorari. (SS8DS9 1. ,hether or not the proceedings +efore the patent office constit%te a pre0%dicial ;%estion that need to +e resolved +efore the cri!inal action for %nfair co!petition !a' +e p%rs%ed. 2. ,hether or not a foreign non-resident corporation !a' s%e for trade!ar" infringe!ent and %nfair co!petition in the Philippines. EDLD9 1. .o. #he proceedings pending +efore the Patent /ffice involving (PC Co. 1 I5 do not parta"e of the nat%re of a pre0%dicial ;%estion which !%st first +e definitel' resolved. #he case which s%spends the cri!inal prosec%tion !%st +e a civil case which is deter!inative of the innocence or, s%+0ect to the availa+ilit' of other defenses, the g%ilt of the acc%sed. #he pending case +efore the Patent /ffice is an ad!inistrative proceeding and not a civil case. #he decision of the Patent /ffice cannot +e finall' deter!inative of the private respondentBs innocence of the charges against hi!. #he goodwill and rep%tation of the petitionerBs prod%cts +earing the trade!ar" LAC/S#D date +ac" even +efore 16 4 when LAC/S#D clothing apparels were first !ar"eted in the Philippines. #o allow Ee!andas to contin%e %sing the trade!ar" Lacoste for the si!ple reason that he was the first registrant in the S%pple!ental Register of a trade!ar" %sed in international co!!erce and not +elonging to hi! is to render n%gator' the ver' essence of the law on trade!ar"s and tradena!es. 2. Ges. A foreign corporation which has never done an' +%siness in the Philippines and which is %nlicensed and %nregistered to do +%siness here, +%t is widel' and favora+l' "nown in the Philippines thro%gh the %se therein of its prod%cts +earing its corporate and trade na!e, has a legal right to !aintain an action in the Philippines to restrain the residents and inha+itants thereof fro! organi&ing a corporation therein +earing the sa!e na!e as the foreign corporation, when it appears that the' have personal "nowledge of

the existence of s%ch a foreign corporation, and it is apparent that the p%rpose of the proposed do!estic corporation is to deal and trade in the sa!e goods as those of the foreign corporation. Western Equipment and Supply Co. v. Reyes 3I1 Phil. 11I4. M5DONALD>S CORPORATION v. MAC+OY 'AST'OOD CORPORATION G.R. No. 166115, February 2, 2007 'a53:( Respondent Mac7o' >astfood Corporation 3Mac7o'4, a do!estic corporation engaged in the sale of fast food prod%cts in Ce+% Cit', filed with the then ?%rea% of Patents, #rade!ar"s and #echnolog' #ransfer 3?P##4, now the (ntellect%al Propert' /ffice 3(P/4, an application for the registration of the trade!ar" AMAC7/G H DDJ(CDA for fried chic"en, chic"en +ar+e;%e, +%rgers, fries, spaghetti, pala+o", tacos, sandwiches, halo-halo and stea"s in 1661. Petitioner McDonald@s Corporation, 3McDo4, a foreign corporation d%l' organi&ed and existing %nder the laws of the State of Delaware, 8SAfiled an /pposition against the respondent@s application clai!ing that the trade!ar" AMAC7/G H DDJ(CDA so rese!+les its corporate logo, otherwise "nown as the Colden Arches or AMA design, and its !ar"s AMcDonalds,A McChic"en,A AMac>ries,A etc. 3MCD/.ALD@S !ar"s4 s%ch that when %sed on identical or related goods, the trade!ar" applied for wo%ld conf%se or deceive p%rchasers into +elieving that the goods originate fro! the sa!e so%rce or origin. Petitioner McDo alleged that the respondent@s %se and adoption in +ad faith of the AMAC7/G H DDJ(CDA !ar" wo%ld falsel' tend to s%ggest a connection or affiliation with petitioner@s resta%rant services and food prod%cts, th%s, constit%ting a fra%d %pon the general p%+lic and f%rther ca%se the dil%tion of the distinctiveness of petitioner@s registered and internationall' recogni&ed MCD/.ALD@S !ar"s to its pre0%dice and irrepara+le da!age. (P/, %sing the do!inanc' test, r%led that the predo!inance of the letter AM,A and the prefixes AMac=McA in +oth the AMAC7/GA and the AMCD/.ALDSA !ar"s lead to the concl%sion that there is conf%sing si!ilarit' +etween the! especiall' since +oth are %sed on al!ost the sa!e. CA, however, reversed (P/@s decision, r%ling that there was no conf%sing si!ilarit' +etween the !ar"s AMAC7/GA and AMCD/.ALD@S on the following gro%nds9 a. +. #he word AMac7o'A is written in ro%nd script while the word AMcDonald@sA is written in single stro"e gothic: #he word AMac7o'A co!es with the pict%re of a chic"en head with cap and +owtie and wings spro%ting on +oth sides, while the word AMcDonald@sA co!es with an arches AMA in gold colors, and a+sol%tel' witho%t an' pict%re of a chic"en:

c. d.

#he word AMac7o'A is set in deep pin" and white color sche!e while AMcDonald@sA is written in red, 'ellow and +lac" color co!+ination: #he faLade of the respective stores of the parties are entirel' different. Respondent@s resta%rant is set also in the sa!e +old, +rilliant and noticea+le color sche!e as that of its wrappers, containers, c%ps, etc., while Petitioner@s resta%rant is in 'ellow and red colors, and with the !ascot of ARonald McDonaldA +eing pro!inentl' displa'ed therein.A

(SS8D9 ,hether or not the trade!ar" application of Respondent MAC7/G and DDJ(CD sho%ld +e denied on the gro%nd that it is conf%singl' si!ilar with the tradena!e of MCD/.ALD@S.

EDLD9 GDS.

#he (P/ was correct in re0ecting and den'ing the respondent@s application for registration of the trade!ar" )MAC7/G H DDJ(CD.*

#he predo!inant feat%res s%ch as the )M,* )Mc,* and )Mac* appearing in +oth McDonald@s !ar"s and the MAC7/G H DDJ(CD* easil' attract the attention of wo%ld-+e c%sto!ers. Dven non-reg%lar c%sto!ers of their fastfood resta%rants wo%ld readil' notice the predo!inance of the )M* design, )Mc=Mac* prefixes shown in +oth !ar"s. S%ch that the co!!on awareness or perception of c%sto!ers that the trade!ar"s McDonalds !ar" and MAC7/G H DDJ(CD are one and the sa!e, or an affiliate, or %nder the sponsorship of the other is not far-fetched. #he differences and variations in st'les as the device depicting a head of chic"en with cap and +owtie and wings spro%ting on +oth sides of the chic"en head, the heart-shaped )M,* and the st'listic letters in )MAC7/G H DDJ(CD:* in contrast to the arch-li"e )M* and the one-st'led gothic letters in McDonald@s !ar"s are of no !o!ent. #hese !in%sc%le variations are overshadowed +' the appearance of the predo!inant feat%res !entioned hereina+ove.

#h%s, with the predo!inance of the letter )M,* and prefixes )Mac=Mc* fo%nd in +oth !ar"s, the inevita+le concl%sion is there is conf%sing si!ilarit' +etween the trade!ar"s Mc Donald@s !ar"s and )MAC7/G A.D DDJ(CD* especiall' considering the fact that +oth !ar"s are +eing %sed on al!ost the sa!e prod%cts ,hen one applies for the registration of a trade!ar" or la+el which is al!ost the sa!e or ver' closel' rese!+les one alread' %sed and registered +' another, the application sho%ld +e re0ected and dis!issed o%tright, even witho%t an' opposition on the part of the owner and %ser of a previo%sl' registered la+el or trade!ar", this not onl' to avoid conf%sion on the part of the p%+lic, +%t also to protect an alread' %sed and registered trade!ar" and an esta+lished goodwill.

SEHWANI% INCORPORATED and?o# *ENITA>S 'RITES% INC. v:. IN8N8O)T *)RGER% INC., C.R. .o. 1K1<I2: /cto+er 1I, 2<<K

>AC#S9 Respondent (.-.-/8# ?%rger, (nc. is a foreign corporation organi&ed %nder the laws of California, 8SA, not doing +%siness in the Philippines. Petitioners Sehwani, (ncorporated and ?enita >rites, (nc. are do!estic corporations organi&ed %nder Philippine Law. Respondent alleged that it is the owner of the tradena!e )(.-.-/8#* and trade!ar"s )(.-.-/8#,* )(.-./8# ?%rger H Arrow Design* and )(.-.-/8# ?%rger Logo,* which are %sed in its +%siness since 1645 %p to the present. (n 166K, Respondent applied with the (P/ for the registration of its trade!ar" )(.-.-/8# ?%rger H Arrow Design* and service !ar" )(.-.-/8#.* (n the co%rse of its application, respondent discovered that petitioner Sehwani, (nc. had o+tained #rade!ar" Registration for the !ar" )(. . /8#* witho%t its a%thorit'. (t filed an ad!inistrative co!plaint against petitioners +efore the ?%rea% of Legal Affairs of the (P/ 3?LA-(P/4 for violation of intellect%al propert'. Petitioners co%ntered that respondent lac" the legal capacit' to s%e +eca%se it was not doing +%siness in the Philippines and that it has no ca%se of action +eca%se its !ar" is not registered or %sed in the Philippines. Petitioner Sehwani, (nc. also clai!ed that as the registered owner of the )(.-.-/8#* !ar", it en0o's the pres%!ption that the sa!e was validl' ac;%ired and that it has the excl%sive right to %se the !ar". ?LA-(P/ rendered a decision finding that respondent has the legal capacit' to s%e and that it is the owner of the internationall' well-"nown trade!ar"s: however, she held that petitioners are not g%ilt' of %nfair co!petition. Petitioner appealed to the CA, +%t was denied. /n the respondents !anifestation filed in said co%rt, CA held that petitioner is g%ilt' of %nfair co!petition. Eence, this case.

(SS8D9 ,hether or not Respondent (.-.-/8# ?%rger, (nc, a foreign corporation not doing +%siness in the Philippines, has the legal capacit' to s%e for the protection of its trade!ar"s. EDLD9 Ges. respondent has the legal capacit' to s%e for the protection of its trade!ar"s, albeit it is not doing +%siness in the Philippines. Section 1 < in relation to Section 2 of R.A. .o. 5262, provides9

SDC#(/. 1 <. Right of Foreign Corporation to Sue in rademar! or Servi"e #ar! Enfor"ement $"tion. F An' foreign national or 0%ridical person who !eets the re;%ire!ents of Section 2 of this Act and does not engage in +%siness in the Philippines !a' +ring a civil or ad!inistrative action here%nder for opposition, cancellation, infringe!ent, %nfair co!petition, or false designation of origin and false description, whether or not it is licensed to do +%siness in the Philippines %nder existing laws. Respondent anchors its ca%ses of action %nder Articles +is and 5 of #he Convention of Paris for the Protection of (nd%strial Propert', otherwise "nown as the Paris Convention, wherein +oth the 8nited States and the Philippines are signatories. M2 N #he Articles read9

Article +is

314 #he co%ntries of the 8nion %nderta"e, ex officio if their legislation so per!its, or at the re;%est of an interested part', to ref%se or to cancel the registration, and to prohi+it the %se, of a trade!ar" which constit%tes a reprod%ction, an i!itation, or a translation, lia+le to create conf%sion, of a !ar" considered +' the co!petent a%thorit' of the co%ntr' of registration or %se to +e well "nown in that co%ntr' as +eing alread' the !ar" of a person entitled to the +enefits of this Convention and %sed for identical or si!ilar goods. #hese provisions shall also appl' when the essential part of the !ar" constit%tes a reprod%ction of an' s%ch well-"nown !ar" or an i!itation lia+le to create conf%sion therewith.

x x x x.

Article 5

A tradena!e shall +e protected in all co%ntries of the 8nion witho%t the o+ligation of filing or registration whether or not it for!s part of a trade!ar".

Article of #he Convention of Paris for the Protection of (nd%strial Propert', otherwise "nown as the Paris Convention, wherein +oth the 8nited States and the Philippines are signatories states that9

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well known mark or an imitation liable to create confusion therewith!.

Said provision which governs the protection of well-"nown trade!ar"s, is a selfexec%ting provision and does not re;%ire legislative enact!ent to give it effect in the !e!+er co%ntr'. (t !a' +e applied directl' +' the tri+%nals and officials of each !e!+er co%ntr' +' the !ere p%+lication or procla!ation of the Convention, after its ratification according to the p%+lic law of each state and the order for its exec%tion. #he essential re;%ire!ent %nder this Article is that the trade!ar" to +e protected !%st +e Awell-"nownA in the co%ntr' where protection is so%ght. #he power to deter!ine whether a trade!ar" is well-"nown lies in the )co!petent a%thorit' of the co%ntr' of registration or %se.* #his co!petent a%thorit' wo%ld +e either the registering a%thorit' if it has the power to decide this, or the co%rts of the co%ntr' in ;%estion if the iss%e co!es +efore a co%rt.