Coffee Partners vs.

San Francisco Generic or descriptive word as trademark The strength of trademark from being registered is derived from the signs, words or visible marks it consists, which are capable of distinguishing its goods from that of the other, and its services it renders in commerce, hence, generic or descriptive marks are not capable of appropriation. Meaning, these marks are very unlikely to be accepted for registration. However, even if generic or descriptive words are not per se subject to exclusive appropriation, the combination of these words, as in this case geographic and generic words, thus it becomes registrable. In this case, it is the combination of the words San Francisco Coffee which is SFCRIs trade name in its coffee business that is protected under the law. Infringement: confusingly similar A corporation has the exclusive right over the trade name and use it in commerce, thus, the right is protected by other from confusingly using it. Herein, both corporations are engaged in the same business of selling coffee whether wholesale or retail so the likelihood of confusion is higher. It is the likelihood of confusion that is the gravamen of the infringement. Holistic test In holistic test, it approaches the question as to whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers. Focus is made not only on the predominant words but shall consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. Dominancy test The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. It is enough that the features would probably lead the public to infer that goods are authentic and are belonging to one enterprise. Applying either the dominancy or holistic test CPIs San Francisco Coffee trademark is a clear infringement of SFCRIs San Francisco Coffee & Roastery Inc. trade name. The San Francisco Coffee is precisely the dominant features of SFCRIs trade name. The consuming public will likely be confused as to the source of the coffee being sold in CPIs coffee shops. Necessity of Registration and continued actual use Under the Intellectual Property Code, registration is not necessary since trade name is protected even before registration with the Intellectual Property Office, as long as the trademark was previously used in trade or in commerce in the Philippines. The law intends to protect the trademark from being subsequently used by any third person which will likely mislead the public.

Dermaline, Inc. v. Myra Pharmaceuticals, Inc. Infringement: confusingly similar or identical When one applies for the registration of a trademark or label which is almost the same or that very closely resembles one already used and registered by another, the likelihood of confusion between marks should be determined using the by comparing the prevalent features of the competing trademarks that might cause confusion or deception, as incorporated in Section 155 of the Intellectual Property Code. Holistic test Herein, the applicant relied on the holistic test by pointing out differences in the entirety of the two marks in relation to the goods as shown by other features appearing in the labels of the conflicting mark. Instead, it shall focus and consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity Dominancy test This test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. Duplication or imitation is not even required, neither is it necessary that the label of the applied mark for registration should suggest an effort to imitate. Confusion of goods It is also known as product confusion where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. Herein, even if the applicants product belongs to a separate and different classification from Myras products with the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter, especially considering that both classifications pertain to treatments for the skin. Confusion of business This is one which a kind of confusion where the source or origin confusion, where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.