1 KKK

LIP Case Digest 2nd Batch
Protection of Trademarks
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1. Converse Rubber Corporation & Edwardson Manufacturing Corp. vs Jacinto Rubber &
Plastics Co., and Ace Rubber & Plastics Corp.
G.R. Nos. L27425 & L30505. April 28, 1980
BARREDO, J.:
Petitioner: Converse Rubber Corporation
Goods: Canvas rubber shoes
Tradename: Converse Chuck Taylor All Star
Trademark: In the Phil: Chuck Taylor / March 3, 1966
Respondent: Jacinto Rubber & Plastics Co.
Goods: Canvas rubber shoes
Tradename: Custombuilt Viscount Custombuilt Challenger and Customebuilt Jaysons
Trademark: Custombuilt Jaysons / November 29, 1957
Facts:
Plaintiff Converse, an American Corporation, manufacturer of canvas rubber shoes under
the trade name Converse Chuck Taylor All Star. Converse is the owner of trademarks and
patent, registered with United States Patent Office, covering the words All Star, the
representation and design of a fivepointed star, and the design of the sole. The trademark Chuck
Taylor was registered by plaintiff Converse with the Philippines Patent Office on March 3,
1966. Since 1946, Chuck Taylor is being sold in the Philippines. Defendant Jacinto Rubber &
Plastics Company, Inc., a local corporation, likewise, manufactures and sells canvas rubber
shoes. Its trademark Custombuilt Jaysons was registered by the Philippines Patent Office on
November 29, 1957.
In 1963, Converse and Jacinto entered into protracted negotiations for a licensing agreement
whereby Jacinto would be the exclusive licensee of Converse in the Phil for the manufacture and
sale of the Chuck Taylor shoes but with the right to continue manufacturing and selling its own
products. Converse insisted on the condition that defendant Jacinto change the design of
Custombuilt shoes so as to give Custombuilt a general appearance different from Chuck
Taylor.; it submitted to plaintiff Converse for the latters approval a sketch of a new design for
Custombuilt. This design was accepted by plaintiff Converse. Defendant Jacinto Rubber then
proposed that the licensing agreement be made in favor of its affiliates, defendant Ace Rubber.
However, the licensing agreement did not materialize, because Hermogenes Jacinto refused to
sign the guarantee. Converse and plaintiff Edwardson then executed licensing agreement.
In 1966, Converse sent a written demand to Jacinto to stop selling Custombuilt shoes of
identical appearance as Chuck Taylor. Jacinto did not reply. Hence, this suit.
Contentions:
Plaintiff:

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Converse contends that Jacinto is guilty of UNFAIR COMPETITION. Plaintiffs

contend that Custombuilt shoes are identical in design and general appearance to
Chuck Taylor and, claiming prior identification of Chuck Taylor in the mind of the
buying public in the Philippines.
Defendant:
Jacinto insist that there is no similarity in design and general appearance between
Custombuilt and Chuck Taylor, pointing out that Custombuilt is readily identifiable
by the tradename
Custombuilt appearing on the ankle patch, the heel patch, and on the sole.
The registration of defendant Jacinto Rubbers trademark Custombuilt being prior to the
registration in the Philippines of plaintiff Converse Rubbers trademark Chuck Taylor,
plaintiffs have no cause of action.
Trial court: Ruled in favor of Converse.

As to the similarity in appearance: The lower court found that the competing products are
identical in appearance except for the trade names. The casual buyer is thus liable to mistake one
for the other. Only by a closeexamination and by paying attention to the trade names will the
ordinary buyer be able to tell that the product is either Custombuilt or Chuck Taylor, as the
case may be.
That defendants are fully aware that Custombuilt is identical in design and appearance to
Chuck Taylor has conclusively been admitted by them in their correspondence with plaintiff
Converse leading to the submission by defendants to plaintiff Converse of a sketch of a new
design that would give Custombuilt an appearance different from that of Chuck Taylor.
Furthermore, Chuck Taylor (sold in the Phil. Market since 1946), was ahead of Custombuilt
(appeared in the market in 1962) in the Philippines market and has been enjoying a high
reputation for quality and style.
As to prior registration of Jacinto: Priority in registration in the Philippines of a trademark is not
material in an action for unfair competition as distinguished from an action for infringement of
trademark. The basis of an action for unfair competition is confusing and misleading
similarity in general appearance, not similarity of trademarks.
*Direct appeal to the SC:
Plaintiff: with respect to reduction by the trial court of prayed compensatory damages of 30% of
Jacintos annual gross sales to 1% of annual gross sales.

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Defendant: failed to establish a case of unfair competition because inasmuch as the former
(Converse Chuck Taylor) was not sold in the local markets from 1949 to 1967, no competition,
fair or unfair, could have been offered to it by the latter product (Custombuilt Challenger) during
the said period.
Issue: Is Jacinto & Co. guilty of unfair competition
Held: YES.
SEC. 29. of R.A. 166: Unfair competition, rights and remedies:
following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general appearance of
goods of another manufacturer or dealer..
The SC held that shoes manufactured by defendants to contain, as found by the trial
court, practically all the features of those of the plaintiff Converse except for their
respective brands, of course. The respective designs, shapes, the colors of the ankle
patches, the bands, the toe patch and the soles of the two products are exactly the
same . . . (such that) at a distance of a few meters, it is impossible to distinguish
Custombuilt from Chuck Taylor. These elements are more than sufficient to serve
as basis for a charge of unfair competition. Even if not all the details just mentioned
were identical, with the general appearances alone of the two products, any ordinary, or
even perhaps even a not too perceptive and discriminating customer could be deceived,
and, therefore, Custombuilt could easily be passed off for Chuck Taylor.
SEC. 29: A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others, whether or not a
mark or trade name is employed, has a property right in the goodwill of the said goods,
business or services so identified, which will be protected in the same manner as other
property rights
The fact that the shoes manufactured by Converse were not sold in local markets from
1949 to 1967 does not mean that one cannot be held guilty of unfair competition for
manufacturing products that appear similar as the Converses product. It denominates as

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unfair competition any acts calculated to result in the passing off of other goods for
those of the one having established such goodwill. Singularly absent is a requirement
that the goodwill sought to be protected in an action for unfair competition must have
been established in an actual competitive situation. Nor does the law require that the
deception or other means contrary to good faith or any acts calculated to pass off other
goods for those of one who has established a goodwill must have been committed in an
actual competitive situation. Indeed, goodwill established in other than a competitive
milieu is no less a property right that deserves protection from unjust appropriation or
injury.
*As to the Damages: it was increased by the SC to 15% of the 75% of the gross sales of
defendant.
2. DELMONTVSCA
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3. Bristol vs. Director of Patents

Facts: A petition for registration in the Principal Register of the Patent Office of the trademark
BIOFERIN" was filed on October 21, 1957 by United American Pharmaceuticals, Inc. Said

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domestic corporation first used the aforestated trademark in the Philippines on August 13, 1957.
It covers medicines used in the treatment of common colds, influenza and other febrile diseases
with capillary hemmorrhagic tendencies.
Bristol Myers Co. filed an opposition to the application. Said oppositor is the owner in the
Philippines of the trademark BUFFERIN" issued by the Philippine Patent Office on March 3,
1954. Its trademark is also registered in the United States issued on November 4, 1952. It was
first used in the Philippines on May 13, 1953. It covers medicines for simple headaches,
neuralgia, colds, menstrual pain and minor muscular aches.
Petitioner contended that it violate its rights and interests in its registered trademark
BUFFERIN" as well as mislead and confuse the public as to the source and origin of the goods
covered by the respective marks, in view of the allegedly practically the same spelling,
pronunciation and lettertype design of the two trademarks covering goods of the same class.
Director of Patents rendered a decision granting the petition for registration and dismissing the
opposition, on the ground that, all factors considered, the trademarks in question are not
confusingly similar, so that the damage feared by the oppositor will not result.
Issue: Are the trademarks BIOFERIN" and BUFFERIN", as presented to the public in their
respective labels, confusingly similar?
Held: No. In determining whether two trademarks are confusingly similar, the test is not simply
to take their words and compare the spelling and pronunciation of said words. Rather, it is to
consider the two marks in their entirety, as they appear in the respective labels, in relation to the
goods to which they are attached.
the same suffix and

prefixes, they appear in
labels with strikingly
and surroundings, as to
Furthermore, product
chances
of
being
therefore all the more
Director of Patents
did not err in finding no
confusing similarity. For
though the words BIOFERIN" and
BUFFERIN"
have
similar
sounding
their
respective
different backgrounds
color, size and design.
of the applicant is expressly stated as
dispensable only upon
doctors prescription, while that of oppositor
does not require the same. The
confused into purchasing one for the other are
rendered negligible.

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4. PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR OF
PATENTS and the BARBIZON CORPORATION, respondents.
PUNO, J.:
Doctrine: Basically this case is about the application of Res Judicata in Intellectual
Property Cases and Repeal of the prior laws. Remember the two Inter partes Cases no. 686 and
2049. The arguments raised in these cases are different. In Inter partes Case 686 there was no
mention of Articles 188 and 189 of the RPC regarding unfair competition, it was only raised in
Inter partes Case 2049.
The Intellectual Property Code took effect on January 1, 1998 and by its express
provision, repealed the Trademark Law, the Patent Law, Articles 188 and 189 of the Revised
Penal Code, the Decree on Intellectual Property, and the Decree on Compulsory Reprinting of
Foreign Textbooks. The Code was enacted to strengthen the intellectual and industrial property
system in the Philippines as mandated by the country's accession to the Agreement Establishing
the World Trade Organization (WTO).
FACTS: In 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. 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 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.
This was docketed as Inter Partes Case No. 686 (IPC No. 686). On June 18, 1974, the Director
of Patents rendered judgment dismissing the opposition and giving due course to Escobar's
application. 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." 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, due to this failure, the Bureau of Patents cancelled Escobar's certificate of
registration.
In 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. The case was docketed
as Inter Partes Case No. 2049 (IPC No. 2049).

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In its opposition, private respondent alleged that:
(a) as early as 1933, it adopted the word "BARBIZON" as trademark on its products such as
robes, pajamas, lingerie, nightgowns and slips; (b) that the trademark "BARBIZON" was
registered with the United States Patent Office in 1934 and 1949; and that variations of the same
trademark, i.e., "BARBIZON" with Bee design and "BARBIZON" with the representation of a
woman were also registered with the U.S. Patent Office in 1961 and 1976; (c) that these marks
have been in use in the Philippines and in many countries all over the world for over forty years.
"Barbizon" products have been advertised in international publications and the marks registered
in 36 countries worldwide; (d) Escobar's registration of the similar trademark "BARBIZON" in
1974 was based on fraud; and this fraudulent registration was cancelled in 1979, stripping
Escobar of whatsoever right she had to the said mark; (e) Private respondent's trademark is
entitled to protection as a well-known mark under Article 6bis of the Paris Convention,
Executive Order No. 913, and the two Memoranda dated November 20, 1980 and October 25,
1983 of the Minister of Trade and Industry to the Director of Patents; (f) Escobar's trademark
is identical to private respondent's and its use on the same class of goods as the latter's
amounts to a violation of the Trademark Law and Article 189 of the Revised Penal Code.
Replying to private respondent's opposition, petitioner raised the defense of res
judicata.
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. On November 26, 1991, the DTI, Office of Legal Affairs, cancelled petitioner's certificate
of registration, and declared private respondent the owner and prior user of the business name
"Barbizon International."
Meanwhile, in IPC No. 2049, the evidence of both parties were received by the Director of
Patents. On June 18, 1992, the Director rendered a decision declaring private respondent's
opposition barred by res judicata and giving due course to petitioner's application for
registration.
Private respondent questioned this decision before the Court of Appeals. The Court of
Appeals 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. In a Resolution dated March 16, 1994, the Court of Appeals denied reconsideration
of its decision.[9] Hence, this recourse.
ISSUE: Whether or not private respondent is barred by Res Judicata.

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HELD: NO. Res judicata is an absolute bar to a subsequent action for the same cause; and its
requisites are: (a) the former judgment or order must be final; (b) the judgment or order must be
one on the merits; (c) it must have been rendered by a court having jurisdiction over the subject
matter and parties; (d) there must be between the first and second actions, identity of parties, of
subject matter and of causes of action.
On record, 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.
Undisputedly, IPC No. 686 and IPC No. 2049 involve the same parties and the same subject
matter. Petitioner herein is the assignee of Escobar while private respondent is the same
American corporation in the first case. The subject matter of both cases is the trademark
"Barbizon." Private respondent counter-argues, however, that the two cases do not have identical
causes of action. New causes of action were allegedly introduced in IPC No. 2049, such as the
prior use and registration of the trademark in the United States and other countries worldwide,
prior use in the Philippines, and the fraudulent registration of the mark in violation of Article 189
of the Revised Penal Code. Private respondent also cited protection of the trademark under the
Convention of Paris for the Protection of Industrial Property, specifically Article 6bis thereof,
and the implementation of Article 6bis by two Memoranda dated November 20, 1980 and
October 25, 1983 of the Minister of Trade and Industry to the Director of Patents, as well as
Executive Order (E.O.) No. 913.
The Villafuerte Memorandum was issued in 1980, i.e., fifteen (15) years after the adoption
of the Paris Convention in 1965. In the case at bar, the first inter partes case, IPC No. 686, was
filed in 1970, before the Villafuerte Memorandum but five (5) years after the effectivity of the
Paris Convention. Article 6bis was already in effect five years before the first case was
instituted.Private respondent, however, did not cite the protection of Article 6bis, neither did it
mention the Paris Convention at all. It was only in 1981 when IPC No. 2049 was instituted that
the Paris Convention and the Villafuerte Memorandum, and, during the pendency of the case, the
1983 Ongpin Memorandum were invoked by private respondent.
In the instant case, the issue of ownership of the trademark "Barbizon" was not raised in IPC
No. 686. Private respondent's opposition therein was merely anchored on: "confusing similarity"
of its trademark with that of Escobar's; that the registration of Escobar's similar trademark will
cause damage to private respondent's business reputation and goodwill; and that Escobar's use of
the trademark amounts to an unlawful appropriation of a mark previously used in the Philippines
which act is penalized under Section 4 (d) of the Trademark Law.
IPC No. 2049 raised the issue of ownership of the trademark, the first registration and use of the
trademark in the United States and other countries, and the international recognition and
reputation of the trademark established by extensive use and advertisement of private

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respondent's products for over forty years here and abroad. These are different from the issues of
confusing similarity and damage in IPC No. 686. The issue of prior use may have been raised in
IPC No. 686 but this claim was limited to prior use in the Philippines only. Respondent
corporation also introduced in the second case a fact that did not exist at the time the first case
was filed and terminated. The cancellation of petitioner's certificate of registration for failure to
file the affidavit of use arose only after IPC No. 686. It did not and could not have occurred in
the first case, and this gave respondent another cause to oppose the second application.Res
judicata extends only to facts and conditions as they existed at the time judgment was rendered
and to the legal rights and relations of the parties fixed by the facts so determined. When new
facts or conditions intervene before the second suit, furnishing a new basis for the claims and
defenses of the parties, the issues are no longer the same, and the former judgment cannot be
pleaded as a bar to the subsequent action.
It is also noted that the oppositions in the first and second cases are based on different
laws. The opposition in IPC No. 686 was based on specific provisions of the Trademark
Law, i.e., Section 4 (d) on confusing similarity of trademarks and Section 8 on the requisite
damage to file an opposition to a petition for registration. The opposition in IPC No. 2049
invoked the Paris Convention, particularly Article 6bis thereof, E.O. No. 913 and the two
Memoranda of the Minister of Trade and Industry. This opposition also invoked Article
189 of the Revised Penal Code which is a statute totally different from the Trademark Law.
Causes of action which are distinct and independent from each other, although arising out
of the same contract, transaction, or state of facts, may be sued on separately, recovery on
one being no bar to subsequent actions on others. The mere fact that the same relief is
sought in the subsequent action will not render the judgment in the prior action operative
as res judicata, such as where the two actions are based on different statute. Res
judicata therefore does not apply to the instant case and respondent Court of Appeals did
not err in so ruling.
The Intellectual Property Code took effect on January 1, 1998 and by its express
provision, repealed the Trademark Law, the Patent Law, Articles 188 and 189 of the
Revised Penal Code, the Decree on Intellectual Property, and the Decree on Compulsory
Reprinting of Foreign Textbooks. The Code was enacted to strengthen the intellectual and
industrial property system in the Philippines as mandated by the country's accession to the
Agreement Establishing the World Trade Organization (WTO).
5. MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC.,

petitioners, vs. L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B.
DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO, and GRACE
HUERTO, respondents.
G.R. No. 143993, August 18, 2004

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PETITIONER: MCDONALD'S CORPORATION
TRademark/Tradename: Big Mac
Goods/Services: Hamburger
Date of reg/ use: July 18, 1985 for Big Mac (Principal Register)
RESPONDENT: L.C. BIG MAK BURGER, INC.

TRademark/Tradename: LC Big Mak used as a Corporate Name and Name referring to its
Hamburgers as well.
Goods/Services: Hamburgers, Siopao etc.
Date of reg/ use: Oct. 21, 1988
FACTS: McDonald's Corporation ("McDonald's") is a US corporation that operates a global
chain of fast-food restaurants, with Petitioner McGeorge Food Industries ("McGeorge"), as the
Philippine franchisee. McDonald's owns the "Big Mac" mark for its "double-decker hamburger
sandwich." with the US Trademark Registry on 16 October 1979. Based on this Home
Registration, McDonald's applied for the registration of the same mark in the Principal Register
of the then Philippine Bureau of Patents, Trademarks and Technology ("PBPTT") (now IPO). On
18 July 1985, the PBPTT allowed registration of the "Big Mac."
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets
and snack vans in Metro Manila and nearby provinces. Respondent Corporations menu includes
hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the
"Big Mak" mark for its hamburger sandwiches, which was opposed by McDonald's on the
ground that Big Mak was a colorable imitation of its mark Big Mac. McDonald's also
informed LC Big Mak chairman of its exclusive right to the "Big Mac" mark and requested him
to desist from using the "Big Mac" mark or any similar mark. Having received no reply,
petitioners sued L.C. Big Mak Burger, Inc. and its directors before Makati RTC Branch 137
("RTC"), for trademark infringement and unfair competition.
Respondent contends that Mcdonalds has no exclusive right over the mark because Isaiyas
Group of Companies registered the same mark for hamburger on March 31, 1979.
Petitioners asserted on the other hand that such registration is only in the Supplemental
Register of Philippine Bureau of Patents which does not provide any protection.
Furthermore such registration has been transferred to Mcdonalds by virtue of a Deed of
Assignment.
RTC: RTC rendered a Decision finding respondent corporation liable for trademark
infringement and unfair competition.

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-
An average person who is hungry and wants to eat a hamburger sandwich may not be
discriminating enough to look for a McDonalds restaurant and buy a Big Mac
hamburger. Once he sees a stall selling hamburger sandwich, in all likelihood, he will dip
into his pocket and order a Big Mak hamburger sandwich. Plaintiff McDonalds fast-food
chain has attained wide popularity and acceptance by the consuming public so much so
that its air-conditioned food outlets and restaurants will perhaps not be mistaken by many
to be the same as defendant corporations mobile snack vans located along busy streets or
highways. But the thing is that what is being sold by both contending parties is a food
item a hamburger sandwich which is for immediate consumption, so that a buyer may
easily be confused or deceived into thinking that the Big Mak hamburger sandwich he
bought is a food-product of plaintiff McDonalds, or a subsidiary or allied outlet thereof.
CA: Reversed the judgment.

- This court is fully convinced that no colorable imitation exists. As the definition dictates,
it is not sufficient that a similarity exists in both names, but that more importantly, the
over-all presentation, or in their essential, substantive and distinctive parts is such as
would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing the
genuine article. A careful comparison of the way the trademark Big Mac is being used by
plaintiffs-appellees and corporate name L.C. Big Mak Burger, Inc. by defendantsappellants, would readily reveal that no confusion could take place, or that the ordinary
purchasers would be misled by it. As pointed out by defendants-appellants, the plaintiffsappellees trademark is used to designate only one product, a double decker sandwich sold
in a Styrofoam box with the McDonalds logo. On the other hand, what the defendantsappellants corporation is using is not a trademark for its food product but a business or
corporate name. They use the business name L.C. Big Mak Burger, Inc. in their restaurant
business which serves diversified food items such as siopao, noodles, pizza, and
sandwiches such as hotdog, ham, fish burger and hamburger. Secondly, defendantsappellants corporate or business name appearing in the food packages and signages are
written in silhouette red-orange letters with the b and m in upper case letters. Above the
words Big Mak are the upper case letter L.C.. Below the words Big Mak are the words
Burger, Inc. spelled out in upper case letters. Furthermore, said corporate or business
name appearing in such food packages and signages is always accompanied by the
company mascot, a young chubby boy named Maky who wears a red T-shirt with the
upper case m appearing therein and a blue lower garment. Finally, the defendantsappellants food packages are made of plastic material
1ST ISSUE: W/N respondent corporation is liable for trademark infringement and unfair
competition.
Ruling: Yes

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Section 22 of Republic Act No. 166, as amended, defines trademark infringement as follows:
Infringement, what constitutes. - Any person who [1] shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or advertising of any goods, business or
services on or in connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services, or identity of
such business; or [2] reproduce, counterfeit, copy, or colorably imitate any such mark or tradename and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services, shall be liable to a civil action by the registrant
for any or all of the remedies herein provided.
To establish trademark infringement, the following elements must be shown: (1) the validity of
plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in "likelihood of confusion." Of these, it is the
element of likelihood of confusion that is the gravamen of trademark infringement.
1st element:
A mark is valid if it is distinctive and not merely generic and descriptive.
The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is
neither generic nor descriptive. Generic marks are commonly used as the name or description of
a kind of goods, such as "Lite" for beer. Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to one who has never seen it or
does not know it exists, such as "Arthriticare" for arthritis medication. On the contrary, "Big
Mac" falls under the class of fanciful or arbitrary marks as it bears no logical relation to
the actual characteristics of the product it represents. As such, it is highly distinctive and
thus valid.
2nd element:
Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Prior
valid registrants of the said mark had already assigned his rights to McDonald's.
3rd element:
Section 22 covers two types of confusion arising from the use of similar or colorable imitation
marks, namely, confusion of goods (confusion in which the ordinarily prudent purchaser would
be induced to purchase one product in the belief that he was purchasing the other) and confusion
of business (though the goods of the parties are different, the defendant's product is such as
might reasonably be assumed to originate with the plaintiff, and the public would then be
deceived either into that belief or into the belief that there is some connection between the
plaintiff and defendant which, in fact, does not exist.
There is confusion of goods in this case since respondents used the "Big Mak" mark on the same
goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used. There is also
confusion of business due to Respondents' use of the "Big Mak" mark in the sale of hamburgers,
the same business that petitioners are engaged in, also results in confusion of business. The
registered trademark owner may use his mark on the same or similar products, in different

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segments of the market, and at different price levels depending on variations of the products for
specific segments of the market. The registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business.
Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy test
(similarity of the prevalent features of the competing trademarks that might cause confusion)
over the holistic test (consideration of the entirety of the marks as applied to the products,
including the labels and packaging). Applying the dominancy test, Respondents' use of the "Big
Mak" mark results in likelihood of confusion. Aurally the two marks are the same, with the first
word of both marks phonetically the same, and the second word of both marks also phonetically
the same. Visually, the two marks have both two words and six letters, with the first word of both
marks having the same letters and the second word having the same first two letters.
Lastly, since Section 22 only requires the less stringent standard of "likelihood of confusion,"
Petitioners' failure to present proof of actual confusion does not negate their claim of trademark
infringement.
2ND ISSUE: W/N Respondents committed Unfair Competition
Ruling: Yes.
Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:
Any person who will employ deception or any other means contrary to good faith by which he
shall pass off the goods manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be subject to an action
therefor.
The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods, and (2) intent to deceive the public and defraud a competitor.
In the case at bar, Respondents have applied on their plastic wrappers and bags almost the same
words that petitioners use on their styrofoam box. Further, Respondents' goods are hamburgers
which are also the goods of petitioners. Moreover, there is actually no notice to the public that
the "Big Mak" hamburgers are products of "L.C. Big Mak Burger, Inc." This clearly shows
respondents' intent to deceive the public.
6. SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD. V. COURT OF
APPEALS
G.R. No. 111580, June 21, 2001
Ynares-Santiago, J.
CASE:
Procedure; MERITS ON INFRINGEMENT CASE not the issue here
DOCTRINES:

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A prior cancellation proceeding before an administrative agency will not bar a subsequent case
for infringement before the regular court.
An infringement court can nevertheless rule on the validity of a registration and will thus render
moot and academic any pending cancellation proceeding before the administrative agency
concerned.
PARTIES:
PETITIONER: Shangri-law International Hotel Management, Ltd. (Shangri-La Group)
TM: Shangri-la with S logo
Service: Hotel business
Action: Cancellation of registration of the mark of Developers Group
RESPONDENT: Developers Group of Companies, Inc. (Developers Group)
TM: Shangri-la wth S logo
Service: Restaurant business
Action: Infringement case against the Shangri-la Group
FACTS:
PETITIONER SHANGRI-LA GROUP filed before the BPTTT an action for the
cancellation of the registration of the SHANGRI-LA mark and S logo issued to
RESPONDENT DEVELOPERS GROUP on the following grounds: a) that the same was
illegally and fraudulently obtained and appropriated for the latters restaurant business; b) that it
is the legal and beneficial owners of the subject mark and logo; and c) that it has been using the
said mark and logo for its corporate affairs and business since March 1962 and caused the same
to be specifically designed for their international hotels in 1975, much earlier than the alleged
first use by the respondents in 1982.
Simultaneously, RESPONDENT DEVELOPERS GROUP filed before the RTC a
complaint for infringement and damages against the petitioner.
Each party filed a motion to suspend the proceedings before their respective forums
in view of the pending casesPETITIONER SHANGRI-LA invoking the cancellation case
with the BPTTT before the RTC and RESPONDENT DEVELOPERS GROUP invoking the
iinfringement case with the RTC before the BPTTT.
Both the BPTTT and the RTC denied the motion to suspend the proceedings, thus
causing the cancellation proceedings and the infringement case to proceed. Both the
petitioner and the respondent consequently filed a petition for review on certiorari before the
Court of Appeals, which petitions were consolidated. The Court of Appeals dismissed the case
for lack of merit. Hence, this petition before the Supreme Court.
Supervening event:

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During the pendency of the case before the SC, the RTC rendered a decision on the
infringement case, ruling in favor of the RESPONDENT DEVELOPERS GROUP, which
decision is already pending appeal before the CA.
ISSUE: Does the institution of the cancellation proceedings before the BPTTT (now the
Intellectual Property Office) by one party bar a subsequent action for infringement before the
regular courts of justice by the adverse party in connection with the same registered mark?
HELD:
No, the petition for the cancellation of registration of a mark before the BPTTT does
not bar any subsequent action for infringement before the regular courts by the adverse
party.
Pertinent Law
Section 151.2 of R.A. No. 8293 provides:
Section 151.2. Notwithsatanding the foregoing provisions,
the court or the administrative agency vested with jurisdiction to
hear and adjudicate any action to enforece the rights to a registered
mar shall likewise exercise jurisdiction to determine whether the
registration of said mark may be cancelled. The filing of the suit to
enforce the registered mark with the proper court or administrative
agency shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same
mark. On the other hand, the earlier filing of petition to cancel
the mark with the Bureau of Legal Affairs shall not constitute a
prejudicial question that must be resolved before an action to
enforce the rights to the same registered mark may be decided.
(Emphasis supplied.)
Application to Facts
1.
The earlier instituttion of an Inter Partes case by the PETITIONER SHANGRI-LA
GROUP for the cancellation of the subject mark and logo cannot therefore effectively bar
the subsequent filing by the registrant RESPONDENT DEVELOPERS GROUP of an
infringement case.

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The certificate of registration of the respondent upon which the infringement case is
based remains valid and subsisting for as long as it has not been cancelled by the Bureau or
by an infringement court. It continues to remain as the prima facie evidence of the valiity of the
registration, the registrants ownership of the mark or tradename, and of the registrants exclusive
right to use the same in connection with the goods, business or services specified in the
certificate.
Since the certificate of the respondent still subsists, it may thus file a corresponding
infringement suit and recover damages from any person who infringes upon the formers rights.
.
Furthermore, the issue raised before the BPTTT is different from the issue raised in the
RTC. The one before the BPTTT is whether the mark of the respondent is subject to cancellation
based on the petitioners claim of prior ownership. On the other hand, the issue before the RTC is
whether or not there is infringement upon the rights of the respondent.
In Conrad and Company, Inc. v. Court of Appeals, the SC ruled that while an action for
the administrative cancellation of a registered trademark falls under the exclusive cognizance of
the BPTTT, an action for infringement or unfair competition, as well as the remedy of injunction
and damages, is within the competence and jurisdiction of ordinary courts.
2.
Nevertheless, the infringement court may validly pass upon the right of registration.
Section 161 of R.A. No. 166 provides that in any action involving a registered mark, the
court may determine the right to registration, order the cancellation of the registration, in whole
or in part, and otherwise rectify the register with respect to the registration of the party to the
action.
Here, the RTC in the infringement case went further and upheld the validity of the
registration of the RESPONDENT DEVELOPERS GROUP. Hence, the RTC decision
renders the cancellation case before the BPTTT as moot and academic. To allow the BPTTT
to proceed would lead to a possible result contradictory to that which the RTC has rendered ,
which situation is not in accord with the orderly administration of justice.
DISPOSITIVE:
The SC finds it apropros to order the suspension of the proceedings before the Bureau
pending the final determination of the infringement case, where the issue of the validity of the
registration of the mark and logo in the name of the respondent was passed upon.
9. ESPIRITU VS PETRON
FACTS:
Respondent Petron Corporation (Petron) sold and distributed liquefied petroleum gas (LPG) in
cylinder tanks that carried its trademark Gasul . Respondent Carmen J. Doloiras owned and
operated Kristina Patricia Enterprises (KPE), the exclusive distributor of Gasul LPGs in the
whole of Sorsogon. Jose Nelson Doloiras (Jose) served as KPEs manager.

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Bicol Gas Refilling Plant Corporation (Bicol Gas) was also in the business of selling and
distributing LPGs in Sorsogon but theirs carried the trademark Bicol Savers Gas. Petitioner
Audie Llona managed Bicol Gas.
In the course of trade and competition, any given distributor of LPGs at times acquired
possession of LPG cylinder tanks belonging to other distributors operating in the same
area. They called these captured cylinders. According to Jose, KPEs manager, in April 2001
Bicol Gas agreed with KPE for the swapping of captured cylinders since one distributor could
not refill captured cylinders with its own brand of LPG. At one time, in the course of
implementing this arrangement, KPEs Jose visited the Bicol Gas refilling plant. While there, he
noticed several Gasul tanks in Bicol Gas possession. He requested a swap but Audie Llona of
Bicol Gas replied that he first needed to ask the permission of the Bicol Gas owners. That
permission was given and they had a swap involving around 30 Gasul tanks held by Bicol Gas in
exchange for assorted tanks held by KPE.
KPEs Jose noticed, however, that Bicol Gas still had a number of Gasul tanks in its
yard. He offered to make a swap for these but Llona declined, saying the Bicol Gas owners
wanted to send those tanks to Batangas. Later Bicol Gas told Jose that it had no more Gasul
tanks left in its possession. Jose observed on almost a daily basis, however, that Bicol Gas trucks
which plied the streets of the province carried a load of Gasul tanks. He noted that KPEs volume
of sales dropped significantly from June to July 2001.
On August 4, 2001 KPEs Jose saw a particular Bicol Gas truck on theMaharlika
Highway. While the truck carried mostly Bicol Savers LPG tanks, it had on it one unsealed 50kg Gasul tank and one 50-kg Shellane tank. Jose followed the truck and when it stopped at a
store, he asked the driver, Jun Leorena, and the Bicol Gas sales representative, Jerome Misal,
about the Gasul tank in their truck. They said it was empty but, when Jose turned open its valve,
he noted that it was not. Misal and Leorena then admitted that the Gasul and Shellane tanks on
their truck belonged to a customer who had them filled up by Bicol Gas. Misal then mentioned
that his manager was a certain Rolly Mirabena.
Because of the above incident, KPE filed a complaint for violations of Republic Act
(R.A.) 623 (illegally filling up registered cylinder tanks), as amended, and Sections 155
(infringement of trade marks) and 169.1 (unfair competition) of the Intellectual Property Code
(R.A. 8293) against Bicol Gas.
Provl prosec- there was probable cause but only to four bicol gas employees and dropped
charge against stockholders and directors of company.
PetRev with Regl State Prosec- ordered filing of info with four employees for unfair
competition but not trademark infringement.
DOJ Sec-denied appeal of Petron and KPE
CA- reversed DOJ Sec and said that unfair competition does not necessarily absorb
trademark infringement. Consequently, the court ordered the filing of additional charges of
trademark infringement against the concerned Bicol Gas employees as well. Since the Bicol Gas
employees presumably acted under the direct order and control of its owners, the Court of

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Appeals also ordered the inclusion of the stockholders of Bicol Gas in the various charges,
bringing to 16 the number of persons to be charged. The court denied the motion for
reconsideration of these employees and stockholders in its Resolution dated January 6, 2006,
hence, the present petition for review before this Court.
ISSUES:
w/n there was infringement and unfair competition
HELD:
The Court of Appeals held that under the facts of the case, there is probable cause that
petitioners Espiritu, et al. committed all three crimes: (a) illegally filling up an LPG tank
registered to Petron without the latters consent in violation of R.A. 623, as amended; (b)
trademark infringement which consists in Bicol Gas use of a trademark that is confusingly
similar to Petrons registered Gasul trademark in violation of Section 155 of R.A. 8293; and (c)
unfair competition which consists in petitioners Espiritu, et al. passing off Bicol Gas-produced
LPGs for Petron-produced Gasul LPG in violation of Section 168.3 of R.A. 8293.
(HINDI KO NA ININCLUDE UNG ra 623)
But, as for the crime of trademark infringement, Section 155 of R.A. 8293 provides that it
is committed by any person who shall, without the consent of the owner of the registered mark:
1. Use in commerce any reproduction, counterfeit, copy or colorable
imitation of a registered mark or the same container or a dominant feature thereof
in connection with the sale, offering for sale, distribution, advertising of any
goods or services including other preparatory steps necessary to carry out the sale
of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; or
2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake,
or to deceive.
KPE and Petron have to show that the alleged infringer, the responsible officers and staff
of Bicol Gas, used Petrons Gasul trademark or a confusingly similar trademark on Bicol Gas
tanks with intent to deceive the public and defraud its competitor as to what it is selling .
Examples of this would be the acts of an underground shoe manufacturer in Malabon producing

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Nike branded rubber shoes or the acts of a local shirt company with no connection to La Coste,
producing and selling shirts that bear the stitched logos of an open-jawed alligator.
Here, however, the allegations in the complaint do not show that Bicol Gas painted on its
own tanks Petrons Gasul trademark or a confusingly similar version of the same to deceive its
customers and cheat Petron. Indeed, in this case, the one tank bearing the mark of Petron Gasul
found in a truck full of Bicol Gas tanks was a genuine Petron Gasul tank, more of a captured
cylinder belonging to competition. No proof has been shown that Bicol Gas has gone into the
business of distributing imitation Petron Gasul LPGs.
As to the charge of unfair competition, Section 168.3 (a) of R.A. 8293 (also in relation to
Section 170) describes the acts constituting the offense as follows:
168.3. In particular, and without in any way limiting the scope of
protection against unfair competition, the following shall be deemed guilty of
unfair competition:
(a) Any person, who is selling his goods and gives them the
general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would
be likely to influence purchasers to believe that the goods offered
are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and defraud another of
his legitimate trade, or any subsequent vendor of such goods or any
agent of any vendor engaged in selling such goods with a like
purpose;
Essentially, what the law punishes is the act of giving ones goods the general appearance
of the goods of another, which would likely mislead the buyer into believing that such goods
belong to the latter. Examples of this would be the act of manufacturing or selling shirts bearing
the logo of an alligator, similar in design to the open-jawed alligator in La Coste shirts, except
that the jaw of the alligator in the former is closed, or the act of a producer or seller of tea bags
with red tags showing the shadow of a black dog when his competitor is producing or selling
popular tea bags with red tags showing the shadow of a black cat.

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Here, there is no showing that Bicol Gas has been giving its LPG tanks the general
appearance of the tanks of Petrons Gasul. As already stated, the truckfull of Bicol Gas tanks that
the KPE manager arrested on a road in Sorsogon just happened to have mixed up with them one
authentic Gasul tank that belonged to Petron.
11.
ETEPHA, A.G., petitioner, vs.DIRECTOR OF PATENTS and WESTMONT
PHARMACEUTICALS, INC., respondents.
SANCHEZ, J.:
PRIVATE RESPONDENT(APPLICANT)
Name: Westmont Pharmaceuticals
Trademark: Atussin
Goods: "a preparation for the treatment of coughs"
PETITIONER(OPPOSER)
Name: Etepha, A. G. Corporation
Trademark: Pertussin
Goods: "medicinal preparation used in the treatment of cough"
FACTS:
Respondent Westmont Pharmaceuticals, Inc. 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".
Petitioner Etepha, A. G. objected. It claims that it will be damaged because Atussin is so
confusedly similar to registered trademark, "Pertussin", 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.
The Director of Patents rendered decision giving due course to the application for the registration
of trademark ATTUSIN. The Director of Patents observed 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.
ISSUE:
W/N 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".
HELD:

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NO. 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." 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."
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".
I.) 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. 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".
II.) 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 trademark
complained of should be compared and contrasted with the purchaser's memory (not in
juxtaposition) of the trademark said to be infringed. Some such factors as "sound; appearance;
form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling, and
pronunciation, of words used; and the setting in which the words appear" may be considered.
Respondent's label underscores the trademark Atussin in bold, block letters horizontally written.
In petitioner's, on the other hand, Pertussin is printed diagonally upwards and across in
semiscript style with flourishes and with only the first letter "P" capitalized. Each label plainly
shows the source of the medicine: petitioner's at the foot bears "Etepha Ltd. Schaan Fl", and on
top, "Apothecary E. Taeschner's"; respondent's projects "Westmont Pharmaceuticals, Inc. New
York, USA" at the bottoms, and on the lower left side the word "Westmont" upon a white
diamond shaped enclosure and in red ink a color different from that of the words above and
below it. Printed prominently along the left, bottom and right edges of petitioner's label are
indications of the use: "for bronchial catarrh whopping-cough coughs and asthma".
Respondent's for its part briefly represents what its produce actually is - a "cough syrup". 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

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that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar with
the two trademarks.
III.) When pronounced, the two words do not sound alike.
- There is not much phonetic similarity between the two. The Solicitor General well-observed
that in Pertussin the pronunciation of the prefix "Per", whether correct or incorrect, includes a
combination of three letters P, e and r; whereas, in Atussin the whole starts with the single letter
A added to suffix "tussin". Appeals to the ear are disimilar. And this, because in a word
combination, the part that comes first is the most pronounced.
IV.) Regard should be given to the class of persons who buy the particular product and the
circumstances ordinarily attendant to its acquisition
- The medicinal preparation clothed with the trademarks in question, are unlike articles of
everyday use such as candies, ice cream, milk, soft drinks and the like which may be freely
obtained by anyone, anytime, anywhere.
Petitioner's and respondent's products are to be dispensed upon medical prescription. The
respective labels say so. An intending buyer must have to go first to a licensed doctor of
medicine; he receives instructions as to what to purchase; he reads the doctor's prescription; he
knows what he is to buy. He is not of the incautious, unwary, unobservant or unsuspecting type;
he examines the product sold to him; he checks to find out whether it conforms to the medical
prescription. The common trade channel is the pharmacy or the drugstore. Similarly, the
pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one
for the other is quite remote.
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.
DISPOSITION:
For the reasons given, the appealed decision of the respondent Director of Patents giving due
course to the application for the registration of trademark ATTUSIN is hereby affirmed.
12.
PHILIPPINE NUT INDUSTRY, INC., petitioner,
vs.
STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as Director of
Patents, respondents.
G.R. No. L-23035 July 31, 1975

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MUNOZ PALMA, J.:
Philippine Nut, a domestic corporation, obtained Certificate of Registration No. SR-416
covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its
product of salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation, filed Inter Partes Case No. 268
asking for the cancellation of Philippine Nut's certificate of registration on the following
grounds:
1 that "the registrant was not entitled to register the mark at the time of its application for
registration thereof" for the reason that it (Standard Brands) is the owner of the trademark
"PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. SR172, issued by the Patent Office on July 28, 1958.
2
that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"

closely resembles and is confusingly similar to its trademark "PLANTERS COCKTAIL
PEANUTS" used also on salted peanuts,
and that the registration of the former is likely to deceive the buying public and cause
damage to it.
Philippine Nut filed its answer invoking the special defense that its registered label is not
confusingly similar to that of Standard Brands as the latter alleges.
The following were contained in their stipulation of facts:
(1) that Standard Brands is the present owner of the trademark "PLANTERS COCKTAIL
PEANUTS" covered by Certificate of Registration No. SR-172 issued on July 28, 1958;
(2) that Standard Brands trademark was first used in commerce in the Philippines in December,
1938 and
(3) that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" was first
used in the Philippines on December 20, 1958 and registered with the Patent Office on August
10, 1961.
Director of Patents ordered the cancellation of Philippine Nut's Certificate of Registration No.
SR-416. The Director of Patents found and held that in the labels using the two trademarks in
question, the dominant part is the word "Planters", displayed "in a very similar manner" so much
so that "as to appearance and general impression" there is "a very confusing similarity," and he
concluded that Philippine Nut "was not entitled to register the mark at the time of its filing the
application for registration" as Standard Brands will be damaged by the registration of the same.
Its motion for reconsideration having been denied, Philippine Nut came up to this Court for a
review of said decision.
ISSUE: Is the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine
Nut on its label for salted peanuts confusingly similar to the trademark "PLANTERS

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COCKTAIL PEANUTS" used by Standard Brands on its product so as to constitute an
infringement of the latter's trademark rights and justify its cancellation?
HELD: YES.
There is infringement of trademark when the use of the mark involved would be likely to
cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or
source of the commodity; the question is to be resolved by applying the "test of dominancy",
meaning, if the competing trademark contains the main or essential or dominant features of
another by reason of which confusion and deception are likely to result, then infringement takes
pIace; that duplication or imitation is not necessary, a similarity in the dominant features of the
trademarks would be sufficient.
Petitioners 1st argument:
According to petitioner, PLANTERS cannot be considered as the dominant feature of the
trademarks in question because it is a mere descriptive term, an ordinary word which is defined
in Webster International Dictionary as "one who or that which plants or sows, a farmer or an
agriculturist."
SUPREME COURT:
The argument is without merit. While it is true that PLANTERS is an ordinary word,
nevertheless it is used in the labels not to describe the nature of the product, but to project the
source or origin of the salted peanuts contained in the cans. The word PLANTERS printed across
the upper portion of the label in bold letters easily attracts and catches the eye of the ordinary
consumer and it is that word and none other that sticks in his mind when he thinks of salted
peanuts.
Petitioners 2nd argument:
That respondent Director should not have based his decision simply on the use of the
term PLANTERS, and that what he should have resolved is whether there is a confusing
similarity in the trademarks of the parties.
SUPREME COURT:
It is quite obvious from the record, that respondent Director's decision is based not only
on the fact that petitioner herein adopted the same dominant mark of Standard Brands, that is, the
word PLANTERS, but that it also used in its label the same coloring scheme of gold, blue, and
white, and basically the same lay-out of words such as "salted peanuts" and "vacuum packed"
with similar type and size of lettering as appearing in Standard Brands' own trademark, all of
which result in a confusing similarity between the two labels. Thus, the decision states:
"Furthermore, as to appearance and general impression of the two trademarks, I find a
very confusing similarity."
Admittedly, no producer or manufacturer may have a monopoly of any color scheme or
form of words in a label. But when a competitor adopts a distinctive or dominant mark or feature
of another's trademark and with it makes use of the same color ensemble, employs similar words
written in a style, type and size of lettering almost identical with those found in the other
trademark, the intent to pass to the public his product as that of the other is quite obvious. Hence,
there is good reason for Standard Brands' to ask why did petitioner herein use the word
PLANTERS, the same coloring scheme, even almost identical size and contour of the cans, the
same lay-out of words on its label when there is a myriad of other words, colors, phrases,

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symbols, and arrangements to choose from to distinguish its product from Standard Brands, if
petitioner was not motivated to simulate the label of the latter for its own can of salted peanuts,
and thereby deceive the public?
Petitioner contends, however, that there are differences between the two trademarks, such
as, the presence of the word "Philippine" above PLANTERS on its label, and other phrases, to
wit: "For Quality and Price, Its Your Outstanding Buy", the address of the manufacturer in
Quezon City, etc., plus a pictorial representation of peanuts overflowing from a tin can, while in
the label of Standard Brands it is stated that the product is manufactured in San Francisco,
California, and on top of the tin can is printed "Mr. Peanut" and the representation of a
"humanized peanut". (pp. 30-33, petitioner's brief)
We have taken note of those alleged differences but We find them insignificant in the
sense that they are not sufficient to call the attention of the ordinary buyer that the labeled cans
come from distinct and separate sources.
It is not necessary, to constitute trademark "infringement", that every word of a trademark should be appropriated, but it is sufficient that enough be taken to deceive the public in the
purchase of a protected article.
Petitioners 3rd argument:
That it was error for respondent Director to have enjoined it from using PLANTERS in
the absence of evidence showing that the term has acquired secondary meaning. Asserting that
the first user of a tradename composed of common words is given no special preference unless it
is shown that such words have acquired secondary meaning, and this, respondent Standard
Brands failed to do when no evidence was presented to establish that fact.
SUPREME COURT:
The doctrine is to the effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of the purchasing public, the word or
phrase has come to mean that the article was his product.
The applicability of the doctrine of secondary meaning to the situation now before Us is
appropriate because there is oral and documentary evidence showing that the word PLANTERS
has been used by and closely associated with Standard Brands for its canned salted peanuts since
1938 in this country. Not only is that fact admitted by petitioner in the amended stipulation of,
but the matter has been established by testimonial and documentary evidence consisting of
invoices covering the sale of "PLANTERS cocktail peanuts". In other words, there is evidence
to show that the term PLANTERS has become a distinctive mark or symbol insofar as salted
peanuts are concerned, and by priority of use dating as far back as 1938, respondent Standard
Brands has acquired a preferential right to its adoption as its trademark warranting protection
against its usurpation by another.
Still on this point, petitioner contends that Standard Brands' use of the trademark
PLANTERS was interrupted during the Japanese occupation and in fact was discontinued when
the importation of peanuts was prohibited by Central Bank regulations effective July 1, 1953,
hence it cannot be presumed that it has acquired a secondary meaning. We hold otherwise.
Respondent Director correctly applied the rule that non-use of a trademark on an article of

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merchandize due to legal restrictions or circumstances beyond one's control is not to be
considered as an abandonment.
Non-use because of legal restrictions is not evidence of an intent to abandon. Non-use of
their ancient trade-mark and the adoption of new marks by the Carthusian Monks after they had
been compelled to leave France was consistent with an intention to retain their right to use their
old mark. Abandonment will not be inferred from a disuse over a period of years occasioned by
statutory restrictions on the name of liquor.
13. DERMALINE, INC. vs. MYRA PHARMACEUTICALS, INC.

G.R. No. 190065 August 16, 2010
Petitioner: DERMALINE, INC.
Trademark: DERMALINE DERMALINE, INC.
Goods: Various skin treatments/health and beauty services
Date of Reg.: October 21, 2006
Respondent: MYRA PHARMACEUTICALS, INC.
Trademark: DERMALIN
Date of Reg./Use: July 8, 1986/ October 31, 1977
Goods: Pharmaceutical products, medicinal goods against skin disorders
NACHURA, J.
FACTS: Petitioner Dermaline, Inc. filed before the Intellectual Property Office an application
for registration of the trademark DERMALINE DERMALINE, INC.
Respondent Myra Pharmaceuticals, Inc. filed a Verified Opposition alleging that the
trademark sought to be registered by Dermaline so resembles its trademark DERMALIN
and will likely cause confusion, mistake and deception to the purchasing public. Myra
said that the registration of Dermalines trademark will violate Section 123 of Republic
Act (R.A.) No. 8293 (Intellectual Property Code of the Philippines).
Myra claimed that, despite Dermalines attempt to differentiate its applied mark, the
dominant feature is the term DERMALINE, which is practically identical with its own
DERMALIN, more particularly that the first eight (8) letters of the marks are identical,
and that notwithstanding the additional letter E by Dermaline, the pronunciation for both
marks are identical. Further, both marks have three (3) syllables each, with each syllable
identical in sound and appearance, even if the last syllable of DERMALINE consisted of
four (4) letters while DERMALIN consisted only of three (3).
Myra asserted that the mark DERMALINE DERMALINE, INC. is aurally similar to its
own mark such that the registration and use of Dermalines applied mark will enable it to

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obtain benefit from Myras reputation, goodwill and advertising and will lead the public
into believing that Dermaline is, in any way, connected to Myra.
Dermaline countered that a simple comparison of the trademark DERMALINE

DERMALINE, INC. vis--vis Myras DERMALIN trademark would show that they have
entirely different features and distinctive presentation, thus it cannot result in confusion,
mistake or deception on the part of the purchasing public.
Dermaline contended that, in determining if the subject trademarks are confusingly

similar, a comparison of the words is not the only determinant, but their entirety must be
considered in relation to the goods to which they are attached, including the other
features appearing in both labels.
Dermaline further argued that there could not be any relation between its trademark for
health and beauty services from Myras trademark classified under medicinal goods
against skin disorders.
The IPO-Bureau of Legal Affairs rendered Decision sustaining Myras opposition

pursuant to Section 123.1(d) of R.A. No. 8293.
Aggrieved, Dermaline filed a motion for reconsideration, but it was denied.
Expectedly, Dermaline appealed to the Office of the Director General of the IPO.
However, the appeal was dismissed for being filed out of time.
Undaunted, Dermaline appealed to the CA, but it affirmed and upheld the rejection of
Dermalines application for registration of trademark. The CA likewise denied Dermalines
motion for reconsideration; hence, this petition for review on certiorari.
ISSUE: Whether the CA erred in upholding the IPOs rejection of Dermalines application for
registration of trademark.
RULING: No. As a registered trademark owner, one has the right under Section 147 of R.A. No.
8293 to prevent third parties from using a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its registered trademark, where such use
would result in a likelihood of confusion.
In determining likelihood of confusion, case law has developed two (2) tests, the Dominancy
Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. It is applied when the trademark sought to
be registered contains the main, essential and dominant features of the earlier registered

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trademark, and confusion or deception is likely to result. The important issue is whether the use
of the marks involved would likely cause confusion or mistake in the mind of or deceive the
ordinary purchaser, or one who is accustomed to buy, and therefore to some extent familiar with,
the goods in question.
On the other hand, the Holistic Test entails a consideration of the entirety of the marks as
applied to the products, including labels and packaging, in determining confusing similarity. The
scrutinizing eye of the observer must focus not only on the predominant words but also on the
other features appearing in both labels so that a conclusion may be drawn as to whether one is
confusingly similar to the other.
Relative to the question on confusion of marks, jurisprudence has noted 2 types of
confusion: (1) confusion of goods (product confusion) and (2) confusion of business (source or
origin confusion).
In rejecting the application of Dermaline for the registration of its mark DERMALINE
DERMALINE, INC., the IPO applied the Dominancy Test. It declared that both confusion of
goods and service and confusion of business or of origin were apparent in both trademarks. It
also noted that, per Bureau Decision No. 2007-179 dated December 4, 2007, it already sustained
the opposition of Myra involving the trademark DERMALINE of Dermaline under
Classification 5. The IPO also upheld Myras right under Section 138 of R.A. No. 8293, which
provides that a certification of registration of a mark is prima facie evidence of the validity of the
registration, the registrants ownership of the mark, and of the registrants exclusive right to use
the same in connection with the goods and those that are related thereto specified in the
certificate.
Dermalines insistence that its applied trademark DERMALINE DERMALINE, INC. had
differences too striking to be mistaken from Myras DERMALIN cannot, therefore, be sustained.
While it is true that the two marks are presented differently Dermalines mark is written with the
first DERMALINE in script going diagonally upwards from left to right, with an upper case D
followed by the rest of the letters in lower case, and the portion DERMALINE, INC. is written in
upper case letters, below and smaller than the long-hand portion; while Myras mark
DERMALIN is written in an upright font, with a capital D and followed by lower case letters the
likelihood of confusion is still apparent. This is because they are almost spelled in the same way,
except for Dermalines mark which ends with the letter E, and they are pronounced practically in
the same manner in three (3) syllables, with the ending letter E in Dermalines mark pronounced
silently. Thus, when an ordinary purchaser, for example, hears an advertisement of Dermalines
applied trademark over the radio, chances are he will associate it with Myras registered mark.
Verily, 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 application
should be rejected and dismissed outright, even without any opposition on the part of the owner
and user of a previously registered label or trademark. This is intended not only to avoid
confusion on the part of the public, but also to protect an already used and registered trademark
and an established goodwill.

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14. Amigo Manufacturing, Inc. vs Cluett Peabody Co., Inc.
G. R. No. 139300
March 14, 2001
Petitioner
Trademark: Gold Top, Linenized for Extra Wear
Goods: Socks
Date of Use: Not alleged
Respondent: Gold Toe and Device, Linenized
Goods: Socks
Date of Use: As early as 1952
Panganiban, J:
Facts: The mark in question consists of the image of a man's foot wearing a sock with a
magnifying glass. Respondent Cluett, a New York corporation, filed a case for cancellation of
registration agains petitioner Amigo, a Philippine corporation, claiming exclusive ownership
over the trademark and devices named as Gold Toe and Linenized before the Patent Office.
Respondent alleged that it was the successor-in-interest of the Great American Knitting Mills,
Inc. The Patent Office ruled in favor of the respondent on the ground of idem sonans and the
existence of a confusing similarity between the marks of the petitioner and respondent. On
appeal, the CA reversed the Patent Office's decision. Respondent filed a motion for
reconsideration which was granted thereby reviving the Patent Office's decision. Thus, petitioner
filed the present case contending that:
a. Petitioner claims that it started the actual use of the trademark Gold Top and Device in
September 1956, while respondent began using the trademark Gold Toe only on May 15, 1962. It
contends that the claim of respondent that it had been using the Gold Toe trademark at an earlier
date was not substantiated. The latter's witnesses supposedly contradicted themselves as to the
date of first actual use of their trademark, coming up with different dates such as 1952, 1947 and
1938.
b. Citing various differences between the two sets of marks, petitioner assails the finding of the
director of patents that its trademark is confusingly similar to that of respondent. Petitioner
points out that the director of patents erred in its application of the idem sonans rule, claiming
that the two trademarks Gold Toe and Gold Top do not sound alike and are pronounced
differently. It avers that since the words gold and toe are generic, respondent has no right to their
exclusive use.
c. Petitioner claims that the Court of Appeals erred in applying the Paris Convention. Although
respondent registered its trademark ahead, petitioner argues that the actual use of the said mark is
necessary in order to be entitled to the protection of the rights acquired through registration.

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Issues:
a. Did petitioner use the mark in question earlier than respondent?
b. Was there a confusing similarity between the marks of petitioner and respondent?
c. Was there a misapplication of the Paris Convention?
Held:
a. NO. Based on the evidence presented, this Court concurs in the findings of the Bureau of
Patents that respondent had actually used the trademark and the devices in question prior to
petitioners use of its own. During the hearing at the Bureau of Patents, respondent presented
Bureau registrations indicating the dates of first use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a
Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and d)
February 28, 1952, Linenized. The registration of the above marks in favor of respondent
constitutes prima facie evidence, which petitioner failed to overturn satisfactorily, of respondents
ownership of those marks, the dates of appropriation and the validity of other pertinent facts
stated therein. Moreover, the validity of the Certificates of Registration was not questioned.
Neither did petitioner present any evidence to indicate that they were fraudulently issued.
Consequently, the claimed dates of respondents first use of the marks are presumed valid.
Clearly, they were ahead of petitioners claimed date of first use of Gold Top and Device in 1958.
Section 5-A of Republic Act No. 166[10] states that an applicant for a trademark or trade name
shall, among others, state the date of first use. The fact that the marks were indeed registered by
respondent shows that it did use them on the date indicated in the Certificate of Registration.
On the other hand, petitioner failed to present proof of the date of alleged first use of the
trademark Gold Top and Device. Thus, even assuming that respondent started using it only on
May 15, 1962, we can make no finding that petitioner had started using it ahead of respondent.
Furthermore, petitioner registered its trademark only with the supplemental register. In La
Chemise Lacoste v. Fernandez, the Court held that registration with the supplemental register
gives no presumption of ownership of the trademark. As to the actual date of first use by
respondent of the four marks it registered, the seeming confusion may have stemmed from the
fact that the marks have different dates of first use. Clearly, however, these dates are indicated in
the Certificates of Registration. In any case, absent any clear showing to the contrary, this Court
accepts the finding of the Bureau of Patents that it was respondent which had prior use of its
trademark, as shown in the various Certificates of Registration issued in its favor. Verily,
administrative agencies findings of fact in matters falling under their jurisdiction are generally
accorded great respect, if not finality.
b. YES. With respect to the issue of confusing similarity between the marks of the petitioner and
that of the respondent-registrant applying the tests of idem sonans, the mark GOLD TOP &
DEVICE is confusingly similar with the mark GOLD TOE. The difference in sound occurs only
in the final letter at the end of the marks. For the same reason, hardly is there any variance in
their appearance. GOLD TOE and GOLD TOP are printed in identical lettering. Both show [a]

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representation of a mans foot wearing a sock. GOLD TOP blatantly incorporates petitioners
LINENIZED which by itself is a registered mark. The Bureau considered the drawings and the
labels, the appearance of the labels, the lettering, and the representation of a mans foot wearing a
sock. Obviously, its conclusion is based on the totality of the similarities between the parties
trademarks and not on their sounds alone. In Emerald Garment Manufacturing Corporation v.
Court of Appeals, this Court stated that in determining whether trademarks are confusingly
similar, jurisprudence has developed two kinds of tests, the Dominancy Test and the Holistic
Test. In the present case, a resort to either the Dominancy Test or the Holistic Test shows that
colorable imitation exists between respondent's Gold Toe and petitioner's Gold Top. A glance at
petitioners mark shows that it definitely has a lot of similarities and in fact looks like a
combination of the trademark and devices that respondent has already registered; namely, Gold
Toe, the representation of a sock with a magnifying glass, the Gold Toe representation and
linenized. Admittedly, there are some minor differences between the two sets of marks. The
similarities, however, are of such degree, number and quality that the overall impression given is
that the two brands of socks are deceptively the same, or at least very similar to each another. An
examination of the products in question shows that their dominant features are gold checkered
lines against a predominantly black background and a representation of a sock with a magnifying
glass. In addition, both products use the same type of lettering. Both also include a representation
of a mans foot wearing a sock and the word linenized with arrows printed on the label. Lastly,
the names of the brands are similar -- Gold Top and Gold Toe. Moreover, it must also be
considered that petitioner and respondent are engaged in the same line of business.
Petitioner cannot therefore ignore the fact that, when compared, most of the features of its
trademark are strikingly similar to those of respondent. In addition, these representations are at
the same location, either in the sock itself or on the label. Petitioner presents no explanation why
it chose those representations, considering that these were the exact symbols used in respondents
marks. Thus, the overall impression created is that the two products are deceptively and
confusingly similar to each other. Clearly, petitioner violated the applicable trademark provisions
during that time.
c. NO. As already discussed, respondent registered its trademarks under the principal register,
which means that the requirement of prior use had already been fulfilled. To emphasize, Section
5- A of Republic Act 166 requires the date of first use to be specified in the application for
registration. Since the trademark was successfully registered, there exists a prima facie
presumption of the correctness of the contents thereof, including the date of first use. Petitioner
has failed to rebut this presumption. Thus, applicable is the Union Convention for the Protection
of Industrial Property adopted in Paris on March 20, 1883, otherwise known as the Paris
Convention, of which the Philippines and the United States are members. Respondent is
domiciled in the United States and is the registered owner of the Gold Toe trademark. Hence, it is
entitled to the protection of the Convention. A foreign-based trademark owner, whose country of
domicile is a party to an international convention relating to protection of trademarks, is
accorded protection against infringement or any unfair competition as provided in Section 37 of
Republic Act 166, the Trademark Law which was the law in force at the time this case was
instituted.

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15. SKECHERS, U.S.A., INC., vs. INTER PACIFIC INDUSTRIAL TRADING CORP
G.R. No. 16432, March 23, 2011
PERALTA, J.:
Petitioner: Skechers, USA, INC.
Petitioner-Intervenor: Trendworks International Corporation
Trademark: (1) Skechers and (2) S (with an oval design)
Goods: shoes
Respondents: Inter Pacific Industrial Trading Corp
Trademark: Strong
Goods: shoes
FACTS:
The present controversy arose when petitioner filed with Regional Trial Court (RTC) of 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 Intellectual Property Office (IPO).
Two 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: Iissued an Order quashing the search warrants and directing the NBI to return the seized
goods. The RTC agreed with respondents 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 the decision of the RTC
In the meantime, petitioner-intervenor filed a Petition-in-Intervention with this Court claiming to
be the sole licensed distributor of Skechers products here in the Philippines.
SC: Petitioners elevated the case to the SC but the latter dismissed the petition. Petitioners filed a
motion for reconsideration the and it was given due course by the SC.
ISSUE: Whether or not respondent is guilty of trademark infringement.
HELD: YES. Motion for Reconsideration GRANTED
The basic law on trademark, infringement, and unfair competition is Republic Act (R.A.) No.

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8293. Specifically, Section 155 of R.A. No. 8293.
The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to
cause confusion. In determining similarity and likelihood of confusion, jurisprudence has
developed tests: the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving little weight to factors
like prices, quality, sales outlets, and market segments.
In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks
as applied to the products, including the labels and packaging, in determining confusing
similarity. The discerning eye of the observer must focus not only on the predominant words, but
also on the other features appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.
Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2)
types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing
the other; and (2) confusion of business (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.
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
petitioners 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
is identifiable to Superman. Such reasoning, however, misses the entire 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

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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 petitioners
trademark. Indubitably, the likelihood of confusion is present as purchasers will associate the
respondents use of the stylized "S" as having been authorized by petitioner or that respondents
product is connected with petitioners business.
Both the RTC and the CA applied the Holistic Test in ruling that respondent had not infringed
petitioners trademark. For its part, the RTC noted the following supposed dissimilarities
between the shoes, to wit:
1. The mark "S" found in Strong Shoes is not enclosed in an "oval design."
2. The word "Strong" is conspicuously placed at the backside and insoles.
3. The hang tags and labels attached to the shoes bears the word "Strong" for respondent and
"Skechers U.S.A." for private complainant;
4. Strong shoes are modestly priced compared to the costs of Skechers Shoes.
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 respondents
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
petitioners shoes, near the heel counter, appears "Skechers Sport Trail" written in white
lettering. However, on respondents 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, respondents 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 colorable imitation. The dissimilarities between the shoes are
too trifling and frivolous that it is indubitable that respondents products will cause confusion and
mistake in the eyes of the public. Respondents shoes may not be an exact replica of petitioners
shoes, but the features and overall design are so similar and alike that confusion is highly likely.
In Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., Inc., this Court, in a case for
unfair competition, had opined that even if not all the details are identical, as long as the general

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appearance of the two products are such that any ordinary purchaser would be deceived, the
imitator should be liable.
Neither can the difference in price be a complete defense in trademark infringement. In
McDonalds Corporation v. L.C. Big Mak Burger. Inc., this Court held:
Modern law recognizes that the protection to which the owner of a trademark is entitled
is not limited to guarding his goods or business from actual market competition with
identical or similar products of the parties, but extends to all cases in which the use by a
junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of
source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field or is in any way connected
with the activities of the infringer; or when it forestalls the normal potential expansion of
his business.
Indeed, the registered trademark owner may use its mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations of the
products for specific segments of the market. The purchasing public might be mistaken in
thinking that petitioner had ventured into a lower market segment such that it is not
inconceivable for the public to think that Strong or Strong Sport Trail might be associated or
connected with petitioners brand, which scenario is plausible especially since both petitioner
and respondent manufacture rubber shoes.

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LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

Converse contends that Jacinto is guilty of UNFAIR COMPETITION. Plaintiffs

Trial court: Ruled in favor of Converse.

LIP Case Digest 2nd Batch

SEC. 29. of R.A. 166: Unfair competition, rights and remedies:

following shall be deemed guilty of unfair competition:

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

3. Bristol vs. Director of Patents

LIP Case Digest 2nd Batch

the same suffix and

LIP Case Digest 2nd Batch

FACTS: In 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J.

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

5. MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC.,

LIP Case Digest 2nd Batch

RESPONDENT: L.C. BIG MAK BURGER, INC.

LIP Case Digest 2nd Batch

CA: Reversed the judgment.

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

13. DERMALINE, INC. vs. MYRA PHARMACEUTICALS, INC.

LIP Case Digest 2nd Batch

Dermaline countered that a simple comparison of the trademark DERMALINE

Dermaline contended that, in determining if the subject trademarks are confusingly

The IPO-Bureau of Legal Affairs rendered Decision sustaining Myras opposition

Aggrieved, Dermaline filed a motion for reconsideration, but it was denied.

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

LIP Case Digest 2nd Batch

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