7.

US v Kyburz 28 Phil 275

FACTS:

J. Kyburz, the defendant and appellant in this case, was convicted in the
lower court for violation of section 6 of Act No. 666 of the Philippine
Commission, which defines and penalizes the fraudulent use of trade-marks
and trade names, and was sentenced to pay a fine P200 and costs.

It can be recalled that during the period included between the 4th and the
22nd days of September, 1913, in the City of Manila, Philippine Islands, the
said J. Kyburz was a merchant and the proprietor of the business known as
the Manila Jewelry Store, engaged in the sale of watches, among other
things; That during the same period, and for a number of years prior thereto in
the said City of Manila, the commercial firm known by the name of
Greilsammer Hermanos, a partnership duly licensed to do business therein,
was also engaged in the sale of watches, including those known as Meridian
watches, the trade-mark in the Philippine Islands for which was then and there
owned and registered exclusively by the said firm of Greilsammer Hermanos,
under the laws of the Philippine Islands, which trade-mark consisted of a
sphere with the word Meridian in its center, applied to the case and
movements of the Meridian watches; and that during the aforesaid period, in
the said city of Manila, Philippine Islands, the said J. Kyburz, with intent to
defraud the public and the said firm of Greilsammer Hermanos, owner of the
above-described trade-mark, did then and there unlawfully, willfully, and
feloniously use the word Meridian on cards placed on in connection with his
watches, for the purpose of selling the same as genuine Meridian watches, at
his place of business, the said Manila Jewelry Store and with the intention of
the making purchasers believe that the said watches thus offered for sale and
sold by the said J. Kyburz, were genuine Meridian watches when in truth and
in fact they were watches of some other make, to the damage and prejudice
of the aforesaid Greilsammer Hermanos.

ISSUE:

WON trade-mark or trade name Meridian placed on the watches sold by

defendant constituted fraud and the lower court erred in its decision?

HELD:

Section 5 of the Act provides that: "A trade name is the name, device, or
mark by which is intended to be distinguished from that of others the
business, profession, trade, or occupation in which one may be engaged and
in which goods are manufactured or sold to the public, work is done for the
public, or professional services are rendered to the public. It is not essential
that the trade name should appear on the goods manufactured or dealt in by
the person owning or using the same. It is sufficient if the trade name is used
by way of advertisements, signs over the place of business, upon letter
heads, and in other ways to furnish to the public a method of distinguishing
the business, trade, or occupation of the person owning and using such
name. Property in trade names shall be as fully protected as property in a
trade-mark by the civil remedies provided in section three of this Act for the
protection of property in trade-marks."

Trade names are acquired by adoption and user, and belong to the one who
first uses them and gives them value. (Viano vs. Baccigalupo, 183 Mass.,
160; Chardron Opera house Co. vs. Loomer, 71 Neb., 785., Liebig's Extract of
Meat Co. vs. Liebig Extract Co., 172 Fed., 158.) We think that there can be no
doubt that Greilsammer Hermanos have acquired the exclusive ownership of
the trade name Meridian as applied to this class of watches, and that they are
clearly entitled to protection from the use of this trade name by others, not
only under the express provisions of section 6 of the Act, but also upon the
general grounds which afford protection against unfair competition.

WHEREORE, The High Court ruled that they find no error in the proceedings
prejudicial to the rights of the accused. The judgment entered in the court
below should therefore be affirmed, with the costs of this instance against the
appellant.

8. Chung Te v Ng Kian Giap 18 SCRA 747

FACTS:

Chung Te's contention:

M a r c h 1 3 , 1 9 5 7 a n a p p l i c a t i o n f o r r e g i s t r a t i o n of
the same trademark "MARCAP I Ñ A . a n d R e p r e s e n t a t i o n " w a s f i l e d
b y Chung Te (Application No. 5544), although it was subsequently
considered abandoned by r e a s o n o f h i s f a i l u r e t o a n s w e r
t h e c o m m u n i c a t i o n of the Principal Trademark Examiner dated
September 25, 1957.

Chung Te claims that since January 8, 1951h e h a d b e e n u s i n g

t h e t r a d e m a r k o n u n d e r s h i r t s ( d e h i l o ) , T- s h i r t s , a n d
baby dresses.
 F o r a l o n g t i m e p e t i t i o n e r w a s t h e
p u r c h a s i n g agent for his father-in-law, who owned t h e
Liong Bee Sh i r t F a c t o r y . Afterwards he decided to go into
the same business for himself. His father-in-law, who theretofore had been
using the trademark.

The factory became a member of the

Philippine C h i n e s e
U n d e r w e a r Manufacturers Association. According to
Juanito Vitug, secretary of the association, b e f o r e a f i r m w a s
a d m i t t e d a s m e m b e r i t was required to inform the association of the
t r a d e m a r k i t w a s u s i n g t o i d e n t i f y i t s products; and
he found that among the files of the association the sample labels
"MarcaP i ñ a " s u b m i t t e d b y p e t i t i o n e r w h e n h e applied for
membership were included.

Petitioner also applied for business permit (LIONG SUN Shirt

Factory) It appears from his a p p l i c a t i o n t h a t h e h a d c o m m e n c e d
b u s i n e s s on February 1, 1952.Ng Kian Giab's contention:

Ng Kian Giab stated in his application that he h a d b e e n

u s i n g t h e t r a d e m a r k o n u n d e r s h i r t s since December
6, 1955.

At the hearing he sought to prove that his family had been using it
since 1946.

F r o m 1 9 4 6 t o 1 9 5 5 N g K i a n G i a b ' s f a m i l y merely bought

ready made polo shirts and u n d e r s h i r t s t o e a c h o f w h i c h
t h e y t h e n sewed the label "Marca Piña" before resale to the public.

In 1955 the father transferred the business to Ng Kian Kee, who put
up a factory — the H o n g k o n g T - S h i r t M a n u f a c t u r e r — a n d
started producing undershirts bearing the trademark. When he decided
to continue his studies in 1957, he, in turn, transferred the business to
respondent.Decision of the Director of Patents

Director of Patents, however, declared that n e i t h e r o f t h e m

"satisfactorily adduced d e f i n i t e a n d c o n c l u s i v e p r o o f
o f t h e i r asserted dates of first use of the trademark "Marca Piña"; and
relying on the rule that "in i n t e r p l a t e s c a s e s , w h e n n e i t h e r o f
t h e parties have (has) satisfactorily proven the date of first use
alleged in their applications,such date shall be confined to the filing date o f
t h e s a i d a p p l i c a t i o n , ” a n d g r a n t e d t h e application of senior party
applicant Ng Kian Giab.

Respondent Director disregarded all the evidence

s u b m i t t e d b y b o t h p a r t i e s a n d relied exclusively on the filing
dates of the applications in reaching his conclusion as to t h e d a t e s o f
first use by the senior party applicant and the junior party
a p p l i c a n t , respectively.

Director of Patents gave due course to the application of Ng Kian

Giab for registration o f t h e t r a d e m a r k " M a r c a P i ñ a "
and representation thereof, and rejected Chung Te's own
application for registration of the s a m e t r a d e m a r k
a n d a s i m i l a r representation.

ISSUE:

1) Who between Chu Teng and Ng Kian Gab should be allowed to

register the trademark "Marca Piña"?

HELD:
:
W h e r e a n a p p l i c a n t f o r r e g i s t r a t i o n o f a trademark states
under oath the date of his earliest use, and later on he wishes to carry back
his first date of use to an earlier date h e t h e n t a k e s o n t h e
g r e a t e r b u r d e n o f presenting "clear and convincing evidence" of
adoption and use as of that earlier date.

Testimonial evidence presented by Ng Kian Giab and their

witnesses falls short of the k i n d o f p r o o f r e q u i r e d o f r e s p o n d e n t .
I t i s doubtful that respondent's father would pay G e n o v e v a
S a n t o s a s h i g h a s P 0 . 0 2 p e r label (which did not even bear his
name) on polo shirts which he had purchased ready- m a d e , a n d
w h i c h h e c o u l d v e r y w e l l h a v e sold without any label.

T h e d o c u m e n t a r y e v i d e n c e s h o w c l e a r l y that respondent's use

began only in 1955.

P e t i t i o n e r h a s e s t a b l i s h e d p r i o r u s e a n d adoption of the
questioned trademark, for w h i c h r e a s o n h e a n d n o t r e s p o n d e n t
N g G i a b i s t h e o n e e n t i t l e d t o r e g i s t r a t i o n thereof.

The decision of the Director of P a t e n t s i s reversed.

Petitioner is adjudged prior user o f the trademark
MARCA PIÑA and representation thereof, and its registration in
his name is ordered.

W h e r e t h e t e s t i m o n i a l e v i d e n c e f o r b o t h parties has been

entirely disregarded, and reliance is placed solely on the filing dates
of the applications as proof of the respective d a t e s o f f i r s t u s e , t h e n
t h e a b a n d o n e d application filed by the junior party applicant becomes
cogent evidence to show that he first used the trademark as of the date of
its filing.

9. Ed. A. Keller & Co. v Kinkua Marijasu Co. 57 Phil 262

10. Parke Davis & Co. v Kiu and Co. 60 Phil 928

11. Marvex Commercial Co. v Petra Hawpia & Co. 18 SCRA 1178

FACTS:

Petra Hawpia & Co., a partnership duly organized under the

laws o f t h e P h i l i p p i n e s f i l e d a p e t i t i o n f o r t h e r e g i s t r a t i o n o f t h e t r a d e m a
r k " L I O N PA S " u s e d o n m e d i c a t e d p l a s t e r , w i t h t h e P h i l i p p i n e P a t e n t O f f i
c e , asserting its continuous use in the Philippines since June 9, 1958. The Marvex Commercial
Co., Inc., a corporation also duly organized under the laws of the
Philippines, on July 24, 1959 filed an opposition thereto, alleging that th
e
registration of such trademark would violate its right to and interest in t
h e t r a d e m a r k "SALONPAS" used on another medicated plaster, which is registered its name
under Certificate of Registration 5486, issued by the Director of Patents on September 29, 1956, and that
both trademarks when used on medicated plaster would mislead the public as they are confusingly
similar.The Director of Patents dismissed the opposition and gave due course to the
petition, s t a t i n g i n p a r t t h a t " c o n f u s i o n , m i s t a k e , o r d e c e p t i o n a m o n g t h e
p u r c h a s e r s will not likely and reasonably occur" when both trademarks are applied
to medicated plaster.

ISSUES:

(1) Is the applicant the owner of the trademark "LIONPAS"?;

( 2 ) I s t h e t r a d e m a r k " L I O N PA S " c o n f u s i n g l y s i m i l a r t o t h
e t r a d e m a r k "SALONPAS"?

HELD:

On the 1st issue:

 The assignment must be in writing, acknowledged before a notary public or other officer authorized to
administer oaths or perform other notarial acts and certified under the hand and official seal of the notary
or other officer. (Sec. 31, par. 2)I n t h i s c a s e , a l t h o u g h a s h e e t o f p a p e r i s a t t a c h e d t o
e x h . 6 , o n w h i c h i s t y p e w r i t t e n a certification that the signatures of the presidents of the
two named companies (referring to the signatures in exh. 6) "have been duly written
by themselves",

We have thumbed the record in quest of any definitive evidence that it is a correct translation of the
Japanese characters found on another unmarked and un paged sheet, and have found none.The
documents are legally insufficient to prove that the applicant is the owner of the trademark in
question. As a matter of fact, the other evidence on record states that the applicant is
merely the "exclusive distributor" in the Philippines of the "LIONPAS" penetrative plaster;
describes the applicant as the " Philippine
sole d i s t r i b u t o r " o f " L I O N P A S " ; e x h . B s i m p l y s t a t e s t h a t " L I O N P
AS" is"manufactured exclusively for Petra Hawpia & Co. for dist
r i b u t i o n i n t h e P h i l i p p i n e s ." Not being the owner of the trademark "LIONPAS" but
being merely an importer and/or distributor of the said penetrative plaster, the applicant is not
entitled under the law to register it in its name.

On the 2ndissue:

The trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound.Both these
words have the same suffix, "PAS", which is used to denote a plaster that adheres to the body with
curative powers. "Pas, being merely descriptive,f u r n i s h e s n o i n d i c a t i o n o f t h e o r i g i n
o f t h e a r t i c l e a n d t h e r e f o r e i s o p e n f o r appropriation by anyone (Ethepa vs.
Director of Patents, L-20635, March 31, 1966) and may properly become the subject of a
trademark by combination with another word or phrase.Two letters of "SALONPAS" are missing in
"LIONPAS"; the first letter a and the letters. Be that as it may, when the two words are pronounced, the sound
effects are confusingly similar. And where goods are advertised over the radio, similarity in sound is of especial
significance (Co Tiong Sa vs. Director of Patents, 95 Phil.1 citing Nims, The Law of Unfair Competition
and Trademarks, 4th ed., vol. 2, pp.678-679). "The importance of this rule is emphasized by
the increase of radio advertising i n w h i c h w e a r e d e p r i v e d o f h e l p o f o u r
e y e s a n d m u s t d e p e n d e n t i r e l y on the ear" (Operators, Inc. vs. Director of Patents,
supra
).In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much
alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are
confusingly similar when applied to merchandise of the same descriptive properties
(see Celanese Corporation of America vs. E. I. Du Pont,154 F. 2d. 146, 148).The registration of
"LIONPAS" cannot therefore be given due course.Decision of the respondent Director of Patents is set aside, and the
petition of the respondent Petra Hawpia & Co. is hereby dismissed.

12. Unno Commercial Enterprises v General Milling Co. 120 SCRA 804
FACTS:

• On December 11, 1962, respondent General Milling Corporation filed an

application for the registration of the trademark "All Montana" to be used in the
sale of wheat flour.

• As the same trademark had been previously registered in favor of Unno, the Chief
Trademark Examiner declared an interference proceeding between General Milling's application
(Serial No. 9732), as Junior/Party-Applicant, and Unno's registration (Registration No. 9589), as
Senior Party-Applicant to determine which party has previously adopted and used the trademark
"All Montana.General Milling Corp's contention:

• Alleged that it started using the trademark "All Montana" on August 31, 1955 and
subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of
assignment executed on September 20, 1962. Unno Commercial Enterprise's contention:

• Argued that the same trademark had been registered in its favor on March 8, 1962 asserting
that it started using the trademark on June 30, 1956, as indentor or broker for S.H. Huang Bros. &
Co., a local firm.

• Various shipments, documents, invoices and other correspondence of Centennial Mills,

Inc., shipping thousand of bags of wheat flour bearing the trademark "All Montana" were shown
by petitioner and maintained that anyone, whether he is only an importer, broker or indentor can
appropriate, use and own a particular mark of its own choice although he is not the manufacturer
of the goods he deals with. Director of Patents' decision.

• The Junior Party-Applicant is adjudged prior user of the trademark ALL MONTANA, but
because it is primarily geographically descriptive, the application is remanded to the Chief
Trademark Examiner for proper
proceeding before issuance of the certificate of registration.

ISSUE:

• WON Unno, as a mere indentor can apply for the registration of the trademark of its
principal / negative. Only owners of the trademark can apply for its registration?

HELD:

• The right to register trademark is based on ownership. When the applicant is not the owner
of the trademark being applied for, he has no right to apply for the registration of the same.
 • Under the Trademark Law only the owner of the trademark, trade name or service mark
used to distinguish his goods, business or service from the goods, business or service of others is
entitled to register the same.

• The term owner does not include the importer of the goods bearing the
trademark, trade name, service mark, or other mark of ownership, unless such
importer is actually the owner thereof in the country from which the goods are imported.

• A local importer, however, may make application for the registration of a foreign trademark,
trade name or service mark if he is duly authorized by the actual owner of the name or other mark
of ownership.

• The Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's
ownership of the trademark "All Montana," showing that Centennial Mills was a corporation duly
organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. and the
absolute and registered owner of several trademarks for wheat flour all of which were
assigned by it to respondent General Milling Corporation.

• Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana
wheat flour in the Philippines. Only the owner of a trademark, trade name or service mark may
apply for its registration and an importer, broker, indentor or distributor acquires no rights to the
trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the
trade mark.

• Inasmuch as it was not the owner of the trademark, the Senior Party could not be regarded
as having used and adopted it, and had no right to apply for its registration.

• A mere importer and distributor acquires no rights in the mark used on the imported goods
by the foreign exporter in the absence of an assignment of any kind.

• Trademarks used and adopted on goods manufactured or packed in a foreign country in

behalf of a domestic importer, broker, or indentor and distributor are presumed to be owned by the
manufacturer or packer, unless there is a written agreement clearly showing that ownership vests
in the importer, broker, indentor or distributor.

• Ownership of a trademark is not acquired by the mere fact of registration alone Registration
merely creates a prima facie presumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use thereof. Registration does not
perfect a trademark right.

• Under Rule 178 of the Rules of the Patent Office in Trademark Cases, 14 the Director of
Patents is expressly authorized to order the cancellation of a registered mark or trade name or
name or other mark of ownership in an inter partes case, such as the interference proceeding at
bar.Registration merely creates a prima facie presumption of the validity of the registration, of the
registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration
does not perfect a trademark right.

• The Court affirms respondent Director of Patent's decision declaring respondent General
Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the
Philippines and ordering the cancellation of the certificate of registration for the same trademark
previously issued in favor of petitioner Unno Commercial Enterprises,

13. Gabriel v Perez 55 SCRA 406

FACTS:

This is a case for a Petition for review of the decision dated July 18, 1964 of the
respondent Director of Patents denying the petition of herein petitioner Crisanta Y.
Gabriel to cancel and revoke certificate of registration No. SR-389 covering the
trademark "WONDER" used on beauty soap issued on May 11, 1961 to herein private
respondent Dr. Jose R. Perez..

On October 19, 1962, petitioner Crisanta Y. Gabriel filed with the Patent Office a
petition for cancellation of the trademark "WONDER from the supplemental register
alleging that the registrant was not entitled to register the said trademark at the time of
his application for registration; that the trademark was not used and has not been
actually used by registrant at the time he applied for its registration; that it was thru
fraud and misrepresentation that the registration was procured by the registrant; and
that it was she who has been actually using the said trademark since March, 1959, and
as such is the rightful and recognized owner thereof and therefore entitled to its
registration. In support of her petition, she further alleged the written contract between
her and the registrant (respondent) wherein, according to her, the latter has recognized
her right of use and ownership of said trademark; and that the labels submitted by the
registrant are the very containers bearing the trademark "WONDER" which are
owned by her and which she has been exclusively and continuously using in
commerce (pp. 24-25, Vol. I, rec.).

Respondent Dr. Jose R. Perez, in due time, duly filed his answer denying each
and every ground for cancellation alleged in the said petition, and further averring that
there is pending in the Court of First Instance of Bulacan a civil case (No. 2422) for
unfair competition with injunction and damages filed by him against herein petitioner
involving the manufacture of beauty soap and the use of the trademark "WONDER";
that a writ of preliminary injunction has been issued on September 7, 1961 by the said
court against herein petitioner restraining her "from making, manufacturing and
producing 'Wonder Bleaching Beauty Soap' with the same labels and chemical
ingredients as those of the plaintiff, and from advertising, selling and distributing the
same products"; and that no right of petitioner had been violated and therefore no
cause of action exists in favor of petitioner.

ISSUE:

1) WON trademark was not used and has not been actually used by registrant at
the time he applied for its registration?;
2) WON that it was thru fraud and misrepresentation that the registration was
procured by the registrant?; and

3) WON respondent Director of Patents is correct in his decision?

HELD:

The High Court ruled that their examination of the entire records of the present
case likewise revealed petitioner's disregard of the rudiments of fair dealing. Justice
Fernando, in behalf of the Court, stated in Lim Kiah vs. Kaynee Company, thus:... The
decision of the Director of Patents is not only sound in law but also commendable for
its consonance with the appropriate ethical standard which by no means should be
excluded from the business world as alien, if not a hostile, force. While in the fierce
competitive jungle which at time constitutes the arena of commercial transactions,
shrewdness and ingenuity are at a premium, the law is by no means called upon to
yield invariably its nod of approval to schemes frowned upon by the concept of
fairness. Here, petitioner engaged in manufacturing and selling the same kind of
products would rely on a trademark, which undeniably was previously registered
abroad and which theretofore had been used and advertised extensively by one of the
leading department stores in the Philippines. (25 SCRA 490.)

To our mind, the situation of herein petitioner is worse.

WHEREFORE, THE DECISION SOUGHT TO BE REVIEWED IS HEREBY

AFFIRMED AND THE PETITION IS HEREBY DISMISSED. WITH COSTS
AGAINST PETITIONER.