1.

Berris vs Abyadang GR 183404

Facts:
Respondent Norvy A. Abyadang (Abyadang), proprietor of NS Northern Organic Fertilizer,... filed with the Intellectual Property Office (IPO) a trademark application for the mark "NS D-10 PLUS"
for use in connection... with Fungicide (Class 5) with active ingredient 80% Mancozeb. was given due course and was published in the IPO e-Gazette... petitioner Berris Agricultural Co., Inc.
(Berris)... filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of Opposition... allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to its registered trademark
"D-10 80 WP," also used for Fungicide (Class 5) with active ingredient 80% Mancozeb.
PO-BLA issued Decision... the dispositive portion of which reads--
WHEREFORE, viewed in the light of all the foregoing, this Bureau finds and so holds that Respondent-Applicant's mark "NS D-10 PLUS" is confusingly similar to the Opposer's mark and as such,
the opposition is hereby SUSTAINED.
Aggrieved, Abyadang filed an appeal... with the Office of the Director General... the IPPDG rendered a decision... ru... uling as follows--
Wherefore, premises considered[,] the appeal is hereby DENIED. Accordingly, the appealed Decision of the Director is hereby AFFIRMED.
he CA reversed the IPPDG decision
In sum, the petition should be granted due to the following reasons: 1) petitioner's mark "NS D-10 PLUS" is not confusingly similar with respondent's trademark "D-10 80 WP"; 2) respondent failed
to establish its ownership of the mark "D-10 80 WP" and 3)... respondent's trademark registration for "D-10 80 WP" may be cancelled in the present case to avoid multiplicity of suits.
Issues:
"Is Abyadang's mark NS D-10 PLUS' confusingly similar to that of Berris'D-10 80 WP' such that the latter can rightfully prevent the IPO registration of the former?"
Ruling:
In the instant case, both parties have submitted proof to support their claim of ownership of their respective trademarks.
Based on their proffered pieces of evidence, both Berris and Abyadang claim to be the prior user of their respective marks.
We rule in favor of Berris.
Berris was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002, even before it filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was
under oath and notarized, bearing the stamp of the Bureau of Trademarks of the IPO... on April 25, 2003,[40] and which stated that it had an attachment as Annex "B" sales invoices and official
receipts of goods bearing the mark. Indeed, the DAU, being a notarized document, especially when received in due course by the IPO, is evidence of the... facts it stated and has the presumption of
regularity, entitled to full faith and credit upon its face. Thus, the burden of proof to overcome the presumption of authenticity and due execution lies on the party contesting it, and the rebutting
evidence should be clear,... strong, and convincing as to preclude all controversy as to the falsity of the certificate.[41] What is more, the DAU is buttressed by the Certification dated April 21,
2006[42] issued by the Bureau of Trademarks that Berris'... mark is still valid and existing.
Therefore, Berris, as prior user and prior registrant, is the owner of the mark "D-10 80 WP." As such, Berris has in its favor the rights conferred by Section 147 of R.A. No. 8293
According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date, with
respect to: (1) the same goods or services; (2) closely related goods or... services; or (3) near resemblance of such mark as to likely deceive or cause confusion.
Applying the Dominancy Test, it cannot be gainsaid that Abyadang's "NS D-10 PLUS" is similar to Berris' "D-10 80 WP," that confusion or mistake is more likely to occur.
This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied, taking into consideration the packaging, for both use the same type of material (foil type) and have
identical color schemes (red, green, and white); and the marks are both... predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath.
onsidering these striking similarities, predominantly the "D-10," the buyers of both products, mainly farmers, may be misled into thinking that "NS D-10 PLUS" could be an upgraded formulation of
the "D-10 80 WP."
Con... what remains is the fact that Berris is the owner of the mark
"D-10 80 WP," inclusive of its dominant feature "D-10," as established by its prior use, and prior registration with the IPO. Therefore, Berris properly opposed and the IPO correctly rejected
Abyadang's application for registration of the mark "NS D-10 PLUS."
Principles:
R.A. No. 8293 defines a "mark" as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of
goods.[17] It also defines a "collective mark" as any... visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic,
including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of... the collective mark.[18]
On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant
on his goods to identify and distinguish them from those manufactured, sold, or dealt... by another.[19] A trademark, being a special property, is afforded protection by law. But for one to enjoy this
legal protection, legal protection ownership of the trademark should rightly be established.
The ownership of a trademark is acquired by its registration and its actual use by the manufacturer or distributor of the goods made available to the purchasing public. Section 122[20] of R.A. No.
8293 provides that the rights in a mark shall be... acquired by means of its valid registration with the IPO. A certificate of registration of a mark, once issued, constitutes prima facie evidence of the
validity of the registration, of the registrant's ownership of the mark, and of the registrant's exclusive right to use... the same in connection with the goods or services and those that are related thereto
specified in the certificate.[21] R.A. No. 8293, however, requires the applicant for registration or the registrant to file a declaration of actual use (DAU) of the... mark, with evidence to that effect,
within three (3) years from the filing of the application for registration; otherwise, the application shall be refused or the mark shall be removed from the register.[22] In other words, the prima facie...
presumption brought about by the registration of a mark may be challenged and overcome, in an appropriate action, by proof of the nullity of the registration or of non-use of the mark, except when
excused.[23] Moreover, the presumption may likewise be... defeated by evidence of prior use by another person, i.e., it will controvert a claim of legal appropriation or of ownership based on
registration by a subsequent user. This is because a trademark is a creation of use and belongs to one who first used it in trade or... commerce.[24]
The determination of priority of use of a mark is a question of fact. Adoption of the mark alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods,
but these alone will not inure to the claim of ownership of the... mark until the goods bearing the mark are sold to the public in the market. Accordingly, receipts, sales invoices, and testimonies of
witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain period of... time.[25]
As correctly held by the IPPDG in its decision on Abyadang's appeal, the question of whether or not Berris violated P.D. No. 1144, because it sold its product without prior registration with the FPA, is
a distinct and separate matter from the jurisdiction and... concern of the IPO.
Verily, the protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use
over a period of time, but also to safeguard the public as consumers against... confusion on these goods.

2. Shangrila vs Developers Group GR 159938

Facts:
Respondent DGCI applied for and was granted registration of the ‘Shangri-La’ mark and ‘S’ logo in its restaurant business. Petitioner Shangri-La, chain of hotels and establishments owned by the
Kuok family worldwide, moved to cancel the registration of the mark on the ground that it was illegally and fraudulently obtained and appropriated by respondents. Petitioner also moved to register
the mark and logo in its own name. Later, respondent DGCI filed before the trial court a complaint for infringement against petitioner alleging that DGCI had been the prior exclusive user and the
registered owner in the Philippines of said mark and logo. Petitioner Shangri-La argued that respondent had no right to apply for the registration because it did not have prior actual commercial use
thereof. The trial court found for respondent. CA affirmed.
Issue:
Whether or not respondent’s prior use of the mark is a requirement for its registration.
Ruling: YES.
While the present law on trademarks has dispensed with the requirement of prior actual use at the time of registration, the law in force at the time of registration must be applied. Under the provisions
of the former trademark law, R.A. No. 166, as amended, hence, the law in force at the time of respondent’s application for registration of trademark, the root of ownership of a trademark is actual use
in commerce. Section 2 of said law requires that before a trademark can be registered, it must have been actually used in commerce and service for not less than two months in the Philippines prior to
the filing of an application for its registration. Trademark is a creation of use and therefore actual use is a pre-requisite to exclusive ownership and its registration with the Philippine Patent Office is a
mere administrative confirmation of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-month actual use requirement.
What is worse, DGCI was not even the owner of the mark. For it to have been the owner, the mark must not have been already appropriated (i.e., used) by someone else. At the time of respondent
DGCI’s registration of the mark, the same was already being used by the petitioners, albeit abroad, of which DGCI’s president was fully aware.

3. Ecole de cuisine bs le cordon bleu gr 185830

Facts:
Respondent Cointreau, a partnership registered under the laws of France, applied for the registration of the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De Cuisine opposed on the ground that it
is the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ used in its culinary activities and restaurant business and that the registration will create confusion to the public. Respondent
Cointreau answered claiming it is the true and lawful owner of the mark and had long been using it worldwide. The IPO Bureau of Legal Affairs sustained petitioner’s opposition stating that Cointreau
had no prior use of the mark in the Philippines to be entitled to a proprietary right over it. The IPO Director General reversed the decision and allowed the mark’s registration holding that under RA
No. 166, actual use in the Philippines is not necessary to acquire ownership of the mark.
Issue:
Whether or not respondent’s prior use of the mark is a requirement for its registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and must have actually used the mark in commerce in the Philippines for 2 months prior to the
application for registration. Section 2-A of the same law sets out to define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of
ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that Section 2-A does not require that the actual
use of a trademark must be within the Philippines. Thus, as correctly mentioned by the CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use the same in the Philippines for 2 months prior to registration. In the instant case, it is undisputed that Cointreau has been using the subject
mark in France, prior to Ecole’s averred first use of the same in the Philippines, of which the latter was fully aware thereof. On the other hand, Ecole has no certificate of registration over the subject
mark but only a pending application. Under the foregoing circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be said to have validly appropriated the same.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, as amended, has already dispensed with the requirement of
prior actual use at the time of registration. Thus, there is more reason to allow the registration of the subject mark under the name of Cointreau as its true and lawful owner.
Facts:
Cointreau, a partnership registered under the laws of France, filed before the (now defunct) Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of the Department of Trade and Industry
a trademark application for the mark "LE CORDON BLEU &
DEVICE
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition to the subject application, averring that: (a) it is the owner of the mark "LE CORDON BLEU, ECOLE DE
CUISINE MANILLE," which it has been using since 1948 in cooking and other culinary... activities, including in its restaurant business
Issues:
whether the CA was correct in upholding the IPO Director General's ruling that Cointreau is the true and lawful owner of the subject mark and thus, entitled to have the same registered under its name.
Ruling:
Ecole argues that it is the rightful owner of the subject mark, considering that it was the first entity that used the same in the Philippines. Hence, it is the one entitled to its registration and not
Cointreau.
In the instant case, it is undisputed that Cointreau has been using the subject mark in France since 1895, prior to Ecole's averred first use of the same in the Philippines in 1948, of which the latter was
fully aware thereof. In fact, Ecole's present directress, Ms. Lourdes L.
Dayrit (and even its foundress, Pat Limjuco Dayrit), had trained in Cointreau's Le Cordon Bleu culinary school in Paris, France. Cointreau was likewise the first registrant of the said mark under
various classes, both abroad and in the Philippines
On the other hand, Ecole has no certificate of registration over the subject mark but only a pending application covering services limited to Class 41 of the Nice Classification, referring to the
operation of a culinary school. Its application was filed only on February 24,... 1992, or after Cointreau filed its trademark application for goods and services falling under different classes in 1990.
Under the foregoing circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be said to have validly appropriated the... same.
It is thus clear that at the time Ecole started using the subject mark, the same was already being used by Cointreau, albeit abroad, of which Ecole's directress was fully aware, being an alumna of the
latter's culinary school in Paris, France. Hence, Ecole cannot claim any tinge... of ownership whatsoever over the subject mark as Cointreau is the true and lawful owner thereof.
As a final note, "the function of a trademark is to point out distinctly the origin or ownership of the goods (or services) to which it is affixed; to secure to him, who has been instrumental in bringing
into the market a superior article of merchandise, the fruit of his... industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the
manufacturer against substitution and sale of an inferior and different article as his product
As such, courts... will protect trade names or marks, although not registered or properly selected as trademarks, on the broad ground of enforcing justice and protecting one in the fruits of his toil.
Principles:
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, as amended, has already dispensed with the requirement of
prior actual use at the time of registration.

Matal interim vs tam

Syllabus

4. MATAL, INTERIM DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE v. TAM
certiorari to the united states court of appeals for the federal circuit
No. 15–1293. Argued January 18, 2017—Decided June 19, 2017
Simon Tam, lead singer of the rock group “The Slants,” chose this moniker in order to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. Tam sought federal
registration of the mark “THE SLANTS.” The Patent and Trademark Office (PTO) denied the application under a Lanham Act provision prohibiting the registration of trademarks that may “disparage
. . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C. §1052(a). Tam contested the denial of registration through the administrative appeals process, to no avail. He
then took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.
Held: The judgment is affirmed.
808 F. 3d 1321, affirmed.
Justice Alito delivered the opinion of the Court with respect to Parts I, II, and III–A, concluding:
1. The disparagement clause applies to marks that disparage the members of a racial or ethnic group. Tam’s view, that the clause applies only to natural or juristic persons, is refuted by the plain terms
of the clause, which uses the word “persons.” A mark that disparages a “substantial” percentage of the members of a racial or ethnic group necessarily disparages many “persons,” namely, members of
that group. Tam’s narrow reading also clashes with the breadth of the disparagement clause, which by its terms applies not just to “persons,” but also to “institutions” and “beliefs.” §1052(a). Had
Congress wanted to confine the reach of the clause, it could have used the phrase “particular living individual,” which it used in neighboring §1052(c). Tam contends that his interpretation is
supported by legislative history and by the PTO’s practice for many years of registering marks that plainly denigrated certain groups. But an inquiry into the meaning of the statute’s text ceases when,
as here, “the statutory language is unambiguous and the statutory scheme is coherent and consistent.” Barnhart v. Sigmon Coal Co., 534 U. S. 438 (internal quotation marks omitted). Even if resort to
legislative history and early enforcement practice were appropriate, Tam has presented nothing showing a congressional intent to adopt his interpretation, and the PTO’s practice in the years following
the disparagement clause’s enactment is unenlightening. Pp. 8–12.
2. The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech. Because the “Free Speech
Clause . . . does not regulate government speech,” Pleasant Grove City v. Summum, 555 U. S. 460 , the government is not required to maintain viewpoint neutrality on its own speech. This Court
exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government
could silence or muffle the expression of disfavored viewpoints.
The Federal Government does not dream up the trademarks registered by the PTO. Except as required by §1052(a), an examiner may not reject a mark based on the viewpoint that it appears to
express. If the mark meets the Lanham Act’s viewpoint-neutral requirements, registration is mandatory. And once a mark is registered, the PTO is not authorized to remove it from the register unless a
party moves for cancellation, the registration expires, or the Federal Trade Commission initiates proceedings based on certain grounds. It is thus far-fetched to suggest that the content of a registered
mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently. And
none of this Court’s government-speech cases supports the idea that registered trademarks are government speech. Johanns v. Livestock Marketing Assn., 544 U. S. 550 ; Pleasant Grove
City v. Summum, 555 U. S. 460 ; and Walker v. Texas Div., Sons of Confederate Veterans, Inc., 576 U. S. ___, distinguished. Holding that the registration of a trademark converts the mark into
government speech would constitute a huge and dangerous extension of the government-speech doctrine, for other systems of government registration (such as copyright) could easily be characterized
in the same way. Pp. 12–18.
Justice Alito, joined by The Chief Justice, Justice Thomas, and Justice Breyer, concluded in Parts III–B, III–C, and IV:
(a) The Government’s argument that this case is governed by the Court’s subsidized-speech cases is unpersuasive. Those cases all involved cash subsidies or their equivalent, e.g., funds to private
parties for family planning services in Rust v. Sullivan, 500 U. S. 173 , and cash grants to artists in National Endowment for Arts v. Finley, 524 U. S. 569 . The federal registration of a trademark is
nothing like these programs. The PTO does not pay money to parties seeking registration of a mark; it requires the payment of fees to file an application and to maintain the registration once it is
granted. The Government responds that registration provides valuable non-monetary benefits traceable to the Government’s resources devoted to registering the marks, but nearly every government
service requires the expenditure of government funds. This is true of services that benefit everyone, like police and fire protection, as well as services that are utilized by only some, e.g., the
adjudication of private lawsuits and the use of public parks and highways. Pp. 18–20.
(b) Also unpersuasive is the Government’s claim that the disparagement clause is constitutional under a “government-program” doctrine, an argument which is based on a merger of this Court’s
government-speech cases and subsidy cases. It points to two cases involving a public employer’s collection of union dues from its employees, Davenport v. Washington Ed. Assn., 551 U. S. 177 ,
and Ysursa v. Pocatello Ed. Assn., 555 U. S. 353 , but these cases occupy a special area of First Amendment case law that is far removed from the registration of trademarks. Cases in which
government creates a limited public forum for private speech, thus allowing for some content- and speaker-based restrictions, see, e.g., Good News Club v. Milford Central School, 533 U. S. 98 –
107; Rosenberger v. Rector and Visitors of Univ. of Va., 515 U. S. 819 , are potentially more analogous. But even in those cases, viewpoint discrimination is forbidden. The disparagement clause
denies registration to any mark that is offensive to a substantial percentage of the members of any group. That is viewpoint discrimination in the sense relevant here: Giving offense is a viewpoint. The
“public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”Street v. New York, 394 U. S. 576 . Pp. 20–23.
(c) The dispute between the parties over whether trademarks are commercial speech subject to the relaxed scrutiny outlined in Central Hudson Gas & Elect. v. Public Serv. Comm’n of N. Y., 447 U. S.
557 , need not be resolved here because the disparagement clause cannot withstand even Central Hudson review. Under Central Hudson, a restriction of speech must serve “a substantial interest” and
be “narrowly drawn.” Id., at 564–565 (internal quotation marks omitted). One purported interest is in preventing speech expressing ideas that offend, but that idea strikes at the heart of the First
Amendment. The second interest asserted is protecting the orderly flow of commerce from disruption caused by trademarks that support invidious discrimination; but the clause, which reaches any
trademark that disparages any person, group, or institution, is not narrowly drawn. Pp. 23–26.
Justice Kennedy, joined by Justice Ginsburg, Justice Sotomayor, and Justice Kagan, agreed that 15 U. S. C. §1052(a) constitutes viewpoint discrimination, concluding:
(a) With few narrow exceptions, a fundamental principle of the First Amendment is that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the
speech conveys. See Rosenberger v. Rector and Visitors of Univ. of Va., 515 U. S. 819 –829. The test for viewpoint discrimination is whether—within the relevant subject category—the government
has singled out a subset of messages for disfavor based on the views expressed. Here, the disparagement clause identifies the relevant subject as “persons, living or dead, institutions, beliefs, or
national symbols,” §1052(a); and within that category, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government’s disapproval of a subset of
messages it finds offensive, the essence of viewpoint discrimination. The Government’s arguments in defense of the statute are unpersuasive. Pp. 2–5.
(b) Regardless of whether trademarks are commercial speech, the viewpoint based discrimination here necessarily invokes heightened scrutiny. See Sorrell v. IMS Health Inc., 564 U. S. 552 . To the
extent trademarks qualify as commercial speech, they are an example of why that category does not serve as a blanket exemption from the First Amendment’s requirement of viewpoint neutrality. In
the realm of trademarks, the metaphorical marketplace of ideas becomes a tangible, powerful reality. To permit viewpoint discrimination in this context is to permit Government censorship. Pp. 5–7.
Alito, J., announced the judgment of the Court and delivered the opinion of the Court with respect to Parts I, II, and III–A, in which Roberts, C. J., and Kennedy, Ginsburg, Breyer, Sotomayor, and
Kagan, JJ., joined, and in which Thomas, J., joined except for Part II, and an opinion with respect to Parts III–B, III–C, and IV, in which Roberts, C. J., and Thomas and Breyer, JJ., joined. Kennedy,
J., filed an opinion concurring in part and concurring in the judgment, in which Ginsburg, Sotomayor, and Kagan, JJ., joined. Thomas, J., filed an opinion concurring in part and concurring in the
judgment. Gorsuch, J., took no part in the consideration or decision of the case.
Facts of the case
Simon Tam and his band, The Slants, sought to register the band’s name with the U.S. Trademark Office. The Office denied the application because it found that the name would likely be disparaging
towards “persons of Asian descent.” The office cited the Disparagement Clause of the Lanham Act of 1946, which prohibits trademarks that “[consist] of or [comprise] immoral, deceptive, or
scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
Tam appealed the trademark officer’s decision, and the name was refused a second time by a board comprised of members of the office. Tam appealed to a panel of judges on the U.S. Court of
Appeals for the Federal Circuit, which found that the trademark officials were within their rights to refuse the trademark application under the Disparagement Clause. The appellate court then
reviewed the case en banc and found that the trademark office was incorrect in refusing the trademark application and that the Disparagement Clause violated the First Amendment.
Question
Is the Disparagement Clause invalid under the First Amendment?
Conclusion
The Disparagement Clause prohibits trademarks that disparage the members of a racial or ethnic group and violates the Free Speech Clause of the First Amendment. Justice Samuel A. Alito, Jr.
delivered the opinion for the 8-0 majority. The Court held that, the plain meaning of the text clearly indicated that the Disparagement Clause applied to racial and ethnic groups, and therefore the
Clause applied to the mark at issue in this case. The Clause also facially discriminated based on viewpoint, as giving offense constitutes a viewpoint. Because the PTO simply approved trademarks,
they were not government speech--to which the First Amendment prohibitions on viewpoint regulation did not apply--and holding otherwise would constitute a massive and unwise expansion of the
government speech doctrine. Similarly, PTO approval of a trademark did not constitute government-provided subsidy, an area of cases in which viewpoint discrimination was sometimes determined to
be constitutional. The Disparagement Clause was also not a permissible regulation of commercial speech because it was not narrowly drawn to serve a substantial interest. Any asserted interest of
avoiding offense clearly contravened the purpose of the First Amendment’s protection of free speech, and the Clause was too broad to serve the government’s other stated interest of protecting the
orderly flow of commerce.
Justice Anthony M. Kennedy wrote an opinion concurring in part and concurring in the judgment in which he argued that the First Amendment’s protections against viewpoint discrimination clearly
applied in this case. There are very narrow and specific categories in which the government may regulate speech--such as fraud, defamation, and incitement--and the trademark at issue here did not
fall within these categories. Instead, the Disparagement Clause specifically singled out a subset of messages that the government determined to be offensive and prohibits them, which was plainly
unconstitutional viewpoint discrimination. Justice Kennedy also wrote that the majority opinion does not govern how any other provisions of the Lanham Act should be interpreted under the First
Amendment, nor was the government speech doctrine at issue in this case. Justice Ruth Bader Ginsburg, Justice Sonia Sotomayor, and Justice Elena Kagan joined in the opinion concurring in part and
concurring in the judgment. In his separate opinion concurring in part and concurring in the judgment, Justice Clarence Thomas wrote that all government regulation of commercial speech should be
analyzed under the strict scrutiny standard.

Justice Neil Gorsuch did not participate in the discussion or decision of this case.

5. Abercrombie vs hunting world

RULE:
Four different categories of terms have been identified with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of
protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are
compounded because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in
usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product.
FACTS:
For many years plaintiff used the mark "Safari" on articles of clothing sold by it in its sporting goods stores. Plaintiff filed an action for trademark infringement against defendant, which according to
the plaintiff, had engaged in the retail marketing of sporting apparel, some identified by use of "Safari" alone or by expressions such as "Minisafari" and "Safariland." The District Court for the
Southern District of New York dismissed the complaint and canceled all of plaintiff's trademark registrations for "Safari."

ISSUE:
Did the District Court err in dismissing plaintiff’s trademark infringement complaint against defendant?
ANSWER:
No.
CONCLUSION:
The Court ruled that although plaintiff for many years had used the mark "Safari" on articles of clothing sold, defendant established its rights to use similar derivations of the term in selling its own
line of sporting apparel. Specifically, the Court held that: (1) "Safari" had become a generic term and "Minisafari" could be used for a smaller brim hat; (2) "Safari" had not, however, become a
generic term for boots or shoes; it was either suggestive or merely descriptive and was a valid trademark even if merely descriptive because it had become incontestable under the Lanham Act; but (3)
in light of the justified finding that "Camel Safari," "Hippo Safari" and "Safari Chukka" were devoted by defendant to a purely descriptive use on its boots, defendant had a defense against a charge of
infringement on the basis of fair use.
Facts:
Plaintiff used the "Safari" registered trademark for almost 60 years quite successfully and formerly prosecuted cases successfully on it. Defendant also used the term for its clothing, so plaintiff sued.
Defendant counterclaimed.
Procedural History:
District court dismissed plaintiff's complaint and cancelled all of plaintiff's "Safari" trademarks.
Issue:
What class of terms do plaintiff's "Safari" trademarks fall under and can it enforce them against defendant?
Defendant's Argument:
The word "safari" is a generic, descriptive word understood by the public and is therefore not subject to the exclusivity of a trademark.
Rules:
• There are four classes of terms in regards to trademark protection. In order of ascending protection, they are:

1. Generic
▪ This means that it is the "common descriptive name" and affords no exclusive right to the mark.

2. Descriptive
▪ This means that it is "merely descriptive" and allows registration if there is "proof of substantially exclusive and continuous use of the mark applied to the applicant’s goods
for five years preceding the application". (If it acquires a secondary meaning.)

3. Suggestive
▪ This means that it "requires imagination, thought, and perception to reach a conclusion as to the nature of goods" and is entitled to registration without proof of secondary
meaning.

4. Arbitrary/Fanciful
• Generic terms referring to the type of product rather than the product cannot be trademarked, even if they acquire secondary meanings.
• Marks can shift between classes as language changes. If they become the common descriptive name of an article or substance, the trademark can be cancelled.
Reasoning:
"Safari" has become a generic term for certain clothing items. "Safariland" is permissible because of its focus on selling these genericized goods. This is not the case for footwear, where it is either
"suggestive" or "merely descriptive" and therefore incontestable. However, defendant had longer names for its footwear, like "Camel Safari" or "Hippo Safari." As defendant's parent company
embarks on African safaris, this could be justified fair use by being named such to associate it with the trips.
Holding:
Some of plaintiff's trademarks were generic and some were suggestive. Regardless, it cannot enforce them against defendant. Affirmed and modified.

6. Zatarains vs oakgrove
Brief Fact Summary. Zatarain’s (Plaintiff) claimed that its trademark was a “suggestive†term and that Oak Grove Smokehouse, Inc. (Defendant) should be liable for infringing it, but Oak Grove
(Defendant) claimed it was a “descriptive†term subject to a fair use exception.
Synopsis of Rule of Law. Descriptive terms are not protected by trademark without a showing of secondary meaning in the minds of the public.
Facts. Zatarain’s (Plaintiff) manufactured and distributed food products. It registered the terms “Fish-Fri†and “Chick-Fri†as trademarks for its batter mixes used to fry foods. Oak Grove
Smokehouse, Inc. (Defendant) began marketing a “fish fry†and a “chicken fry†in packages similar to those used by Plaintiff. Plaintiff brought suit for trademark infringement and unfair
competition under the Lanham Act. The district court held that Zatarain’s (Plaintiff) trademark “Fish-Fri†was a descriptive term with an established secondary meaning, but held that the alleged
infringers had a fair use defense to any asserted infringement of the term and that the registration of the term “Chick-Fri†should be canceled because it was a descriptive term that lacked any
secondary meaning. Plaintiff appealed, claiming that its trademark “Fish-Fri†was a suggestive term that was automatically protected upon registration and therefore not subject to the “fair
use†defense.

Issue. Are descriptive terms protected by trademark without a showing of secondary meaning in the minds of the public?
Held. (Goldberg, J.) No. Descriptive terms are not protected by trademark without a showing of secondary meaning in the minds of the public. The district court was correct in applying the four
prevailing tests of descriptiveness: 1) the dictionary definition, 2) the imagination test; usefulness of the term to competitors, and 4) actual use of the term by other merchants, in finding that “Fish-
Fri†was a descriptive term identifying a function of the product being sold. Proof of secondary meaning is an issue only with respect to descriptive marks, and the burden of proof rests at all times
with the plaintiff to establish such a meaning. The district court found that Plaintiff’s evidence established a secondary meaning for the term in the New Orleans area. However, Plaintiff has no legal
claim to an exclusive right in the original, descriptive sense of the term. Therefore, Defendant is still free to use the words “fish fry†in the ordinary, descriptive sense, so long as such use will not
tend to confuse customers as to the source of the goods. The record contains plenty of evidence to support the district court’s determination that Oak grove’s (Defendant) use of the term was fair and
in good faith. Affirmed.
Discussion. The trademark “fair use†defense is different from the copyright law fair use doctrine. In the trademark law, a junior user is not liable of infringement of a senior user’s established
trademark meaning if the mark is being used in its descriptive sense. This defense is only available to infringers of “descriptive†marks.
RULE:
A descriptive term identifies a characteristic or quality of an article or service, such as its color, odor, function, dimensions, or ingredients. Descriptive terms ordinarily are not protectable as
trademarks, § 2(e)(1) of the Lanham Act, 15 U.S.C.S. § 1052(e)(1); they may become valid marks, however, by acquiring a secondary meaning in the minds of the consuming public. §§ 1052(e)(1)
and (f). The distinction has important practical consequences, however; while a descriptive term may be elevated to trademark status with proof of secondary meaning, a generic term may never
achieve trademark protection. A suggestive term suggests, rather than describes, some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the
imagination in order to draw a conclusion as to the nature of the goods and services. A suggestive mark is protected without the necessity for proof of secondary meaning. Arbitrary or fanciful terms
bear no relationship to the products or services to which they are applied. Like suggestive terms, arbitrary and fanciful marks are protectable without proof of secondary meaning.
FACTS:
Zatarain’s (Plaintiff) manufactured and distributed food products. It registered the terms “Fish-Fri” and “Chick-Fri” as trademarks for its batter mixes used to fry foods. Oak Grove Smokehouse, Inc.
(Defendant) began marketing a “fish fry” and a “chicken fry” in packages similar to those used by Plaintiff. Plaintiff brought suit for trademark infringement and unfair competition under the Lanham
Act. The district court held that Zatarain’s (Plaintiff) trademark “Fish-Fri” was a descriptive term with an established secondary meaning, but held that the alleged infringers had a fair use defense to
any asserted infringement of the term and that the registration of the term “Chick-Fri” should be canceled because it was a descriptive term that lacked any secondary meaning. Plaintiff appealed,
claiming that its trademark “Fish-Fri” was a suggestive term that was automatically protected upon registration and therefore not subject to the “fair use” defense.
ISSUE: Are descriptive terms protected by trademark without a showing of secondary meaning in the minds of the public?
ANSWER:
No.
CONCLUSION:
Descriptive terms are not protected by trademark without a showing of secondary meaning in the minds of the public. The district court was correct in applying the four prevailing tests of
descriptiveness: 1) the dictionary definition, 2) the imagination test; usefulness of the term to competitors, and 4) actual use of the term by other merchants, in finding that “Fish-Fri”was a descriptive
term identifying a function of the product being sold. Proof of secondary meaning is an issue only with respect to descriptive marks, and the burden of proof rests at all times with the plaintiff to
establish such a meaning. The district court found that Plaintiff’s evidence established a secondary meaning for the term in the New Orleans area. However, Plaintiff has no legal claim to an exclusive
right in the original, descriptive sense of the term. Therefore, Defendant is still free to use the words “fish fry” in the ordinary, descriptive sense, so long as such use will not tend to confuse customers
as to the source of the goods. The record contains plenty of evidence to support the district court’s determination that Oak grove’s (Defendant) use of the term was fair and in good faith. Affirmed.

7. Shang properties vs st francis development corp gr 190706

Facts:
Respondent a domestic corporation engaged in the real estate business and the developer of the St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center, Mandaluyong
City, Metro Manila (Ortigas Center)[4] filed separate... complaints against petitioners before the IPO - Bureau of Legal Affairs (BLA), namely: (a) an intellectual property violation case for unfair
competition, false or fraudulent declaration, and damages arising from petitioners' use and filing of applications... for the registration of the marks "THE ST. FRANCIS TOWERS" and "THE ST.
FRANCIS SHANGRI-LA PLACE," docketed as IPV Case No. 10-2005-00030 (IPV Case); and (b) an inter partes case opposing the petitioners' application for registration of the... mark "THE ST.
FRANCIS TOWERS" for use relative to the latter's business, particularly the construction of permanent buildings or structures for residential and office purposes, docketed as Inter Partes Case No.
14-2006-00098 (St. Francis Towers IP Case); and
(c) an inter partes case opposing the petitioners' application for registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE," docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP
Case).
Issues: the sole issue thus left for the Court's resolution is whether or not petitioners are guilty of unfair competition in using the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS
SHANGRI-LA
PLACE."
Ruling:
The "true test" of unfair competition has thus been "whether the acts of the defendant have the intent of deceiving or are... calculated to deceive the ordinary buyer making his purchases under the
ordinary conditions of the particular trade to which the controversy relates."
Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair competition.
The CA's contrary conclusion was faultily premised on its impression that respondent had the right to the exclusive use of the mark "ST. FRANCIS," for which the latter had... purportedly established
considerable goodwill. What the CA appears to have disregarded or been mistaken in its disquisition, however, is the geographically-descriptive nature of the mark "ST. FRANCIS" which thus bars its
exclusive appropriability, unless a secondary meaning is... acquired.
A 'geographically descriptive term' is any noun or adjective that designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of the
goods or services.
secondary meaning is established when a descriptive mark no longer causes the public to associate the goods with a particular place, but to associate the... goods with a particular source.
Under Section 123.2[34] of the IP Code, specific requirements have to be met in order to conclude that a geographically-descriptive mark has acquired secondary meaning, to wit: (a) the secondary
meaning must have arisen as a result of... substantial commercial use of a mark in the Philippines; (b) such use must result in the distinctiveness of the mark insofar as the goods or the products are
concerned; and (c) proof of substantially exclusive and continuous commercial... use in the Philippines for five (5) years before the date on which the claim of distinctiveness is made.
In fact, even on the assumption that secondary meaning had been acquired, said finding only accords respondents protectional qualification under Section 168.1 of the IP Code as above quoted. Again,
this does not automatically trigger the concurrence of the fraud element required... under Section 168.2 of the IP Code,... Hence, for all the reasons above-discussed, the Court hereby grants the instant
petition, and, thus, exonerates petitioners from the charge of unfair competition in the IPV Case.
Principles:
In order to determine whether or not the... geographic term in question is descriptively used, the following question is relevant: (1) Is the mark the name of the place or region from which the goods
actually come? If the answer is yes, then the geographic term is probably used in a descriptive sense, and secondary... meaning is required for protection.

8. Ey industrial vs shendar gr 184850

Facts:
▪ EY Industrial Sales is a domestic corporation engaged in the production, distribution and sale of air compressors.
▪ Shen Dar is a Taiwan-based foreign corporation engaged in the manufacture of compressors.
▪ From 1997-2004, EY Industrial imported air compressors from Shen Dar.
▪ In 1997, Shen Dar filed a Trademark Application with the Intellectual Property Office (IPO) for the mark “Vespa” for the use of air compressors. It was approved in 2007.
▪ In 1999, EY Industrial filed a Trademark Application also for the mark “VESPA” for the use of air compressors. It was approved in 2004.
▪ Shen Dar filed a Petition for Cancellation of the Industrial’s EYES COR with the Bureau of Legal Affairs contending that: a. there was a violation of Section 123.1 (D) of the Intellectual
Property Code which provides that: A mark cannot be registered if it is identical to a mark with an earlier filing or priority date. b. EY Industrial is only a distributor of the air compressors
▪ On the other hand, EY Industrial alleged that it is the sole assembler and fabricator of VESPA air compressors since the early 1990s and that Shen Dar supplied them air compressors with the
mark “SD” and not “VESPA”
Issues:
1. Who between EY Industrial and Shen Dar is entitled to the trademark “VESPA”. EY INDUSTRIAL SALES
2. WON the Bureau of Legal Affairs has the power to cancel the application of Shen Dar even if it is Shen Dar who filed the case? YES
Held:
1st: EY INDUSTRIAL has the right to the trademark.
Based on the evidence, EYIS owns the “VESPA” trademark; it has prior use, as shown by various sales invoices.
Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and use in trade or commerce. As between actual use of a mark without registration, and
registration of the mark without actual use thereof, the former prevails over the latter.

For a rule widely accepted and firmly entrenched, because it has come down through the years, is that actual use in commerce or business is a pre-requisite to the acquisition of the right of ownership.
It is non sequitur to hold that porque EYIS is a distributor, it is no longer the owner
FIRST-TO-FILE RULE
Under Section 123.1 of IPO provision, the registration of a mark is prevented with the filing of an earlier application for registration.
This must not, however, be interpreted to mean that ownership should be based upon an earlier filing date. While RA 8293 (IPC) removed the previous requirement of proof of actual use prior to the
filing of an application for registration of a mark, proof of prior and continuous use is necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to oppose the
registration of a mark.
When we talk about trademark, we are just talking about the mark. It does not include the product. Shen Dar is the manufacturer of the product, but they did not name the product as VESPA. It was
EY that named the VESPA, and used the VESPA, even though they were only the distributors. 
It was EY that actually used the trademark through the use of receipts, and other documents.
The first to file rule – According to the SC that Shen Dar filed under the old IPC where prior use is the one applied. 

2nd: BLA has the power to cancel the application.
Shen Dar challenges the propriety of such cancellation on the ground that there was no petition for cancellation as required under Sec. 151 of RA 8293.
The IPO Director General stated that, despite the fact that the instant case was for the cancellation of the COR issued in favor of EYIS, the interests of justice dictate, and in view of its findings, that
the COR of Shen Dar must be cancelled.
The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative bodies are not bound by technical rules of procedure. Such principle, however, is tempered by fundamental
evidentiary rules, including due process.
The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude the cancellation of Shen Dar’s COR. It must be emphasized that, during the hearing for the
cancellation of EYIS’ COR before the BLA, Shen Dar tried to establish that it, not EYIS, was the true owner of the mark “VESPA” and, thus, entitled to have it registered. Shen Dar had more than
sufficient opportunity to present its evidence and argue its case, and it did. It was given its day in court and its right to due process was respected. The IPO Director General’s disregard of the
procedure for the cancellation of a registered mark was a valid exercise of his discretion.

Remember, EY’s application was the one granted, and it is Shen Dar’s application that was cancelled. 
It does not mean that even you were the one who filed, it your application cannot be cancelled.
The BLA, who has jurisdiction over the case, were able to determine that it is Shen Dar’s trademark that should not have been issued with registration, even it is the plaintiff.

9. Nestle vs ca gr 112012
FACTS:
CFC corporation filed with Bureau of Patents a registration of the Trademark “FLAVOR MASTER”for instant coffee. Petitioner Societe Des Produits Nestle filed an unverified Notice of Opposition,
claiming that the trademark of respondent’s product is confusingly similar to its Trademarks for coffee: “MASTER ROAST AND MASTER BLEND”. Nestle Philippines also filed notice of
opposition against the registration Petitioners argued that it would cause confusion in trade, or deceive purchasers and would falsely suggest to the public a connection between the two marks.
ISSUE: Is the TM, FLAVOR MASTER, a colorable imitation of the TMs MASTER ROAST and MASTER BLEND?
RULING:
YES. The TM sought to be registered is likely to cause confusion.
A trademark has been generally defined as any word, name, symbol, or device adopted and used by a merchant to identify his goods and distinguish them from those sold by others. Such is entitled to
protection
Under the Philippine Trademark Law, the owner of a TM cannot register if it resembles a mark or trade-name registered in the Philippines or a mark previously used and not abandoned WHICH IS
LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO DECEIVE PURCHASERS.
The law prescribes a stringent standard proscribes registration if it causes confusing similarity, and if it is likely to cause confusion or mistake or deceive purchasers. Colorable imitation denotes a
close imitation as to be calculated to deceive ordinary persons as to cause him to purchase the one supposing it to be the other
In determining colorable imitation there are two tests: Dominancy Test and Holistic Test.
The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks; the holistic test mandates the entirety of the marks in question must be considered in
determining confusing similarity
The Dominancy test should be applied as it relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two TMs.
· The word MASTER is the dominant feature which is neither a generic nor a descriptive term. As such said term cannot be invalidated as a trademark and therefore, may be protected.
· Generic terms are those which constitute the common descriptive name of an article or substance and are not legally protectable.
· The term MASTER is a suggestive which require imagination, thought, and perception to reach a conclusion as to the nature of the goods.
The term MASTER has acquired a certain connotation to mean the coffee products MASTER ROAST and Master Blend produced by NESTLE. AS SUCH the use of CFC of the term “MASTER” is
likely to cause confusion or mistake.
Facts:
Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a domestic corporation licensee of
Societe, opposed on the ground that it is confusingly similar to its trademark for coffee and coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that the dominant word
MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER cannot be exclusively appropriated being a descriptive or generic term. BPTTT denied CFC’s application.
CA held otherwise.
Issue:
Whether or not the word MASTER is descriptive or generic term incapable of exclusive appropriation.
Ruling: NO.
The word “MASTER” is neither a generic nor a descriptive term. As such, said term cannot be invalidated as a trademark and, therefore, may be legally protected. Generic terms are those which
constitute “the common descriptive name of an article or substance,” or comprise the “genus of which the particular product is a species,” or are “commonly used as the name or description of a kind
of goods,” or “imply reference to every member of a genus and the exclusion of individuating characters,” or “refer to the basic nature of the wares or services provided rather than to the more
idiosyncratic characteristics of a particular product,” and are not legally protectable. On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and
natural sense, it “forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is,” or “if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the goods,” or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise
powers of perception or imagination.
Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require “imagination, thought
and perception to reach a conclusion as to the nature of the goods.” Such terms, “which subtly connote something about the product,” are eligible for protection in the absence of secondary meaning.
While suggestive marks are capable of shedding “some light” upon certain characteristics of the goods or services in dispute, they nevertheless involve “an element of incongruity,” “figurativeness,”
or ” imaginative effort on the part of the observer.” The term “MASTER”, therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND
produced by Nestle. As such, the use by CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the
ordinary purchasers.
 10. Emerald vs ca gr 100098
FACTS:
On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR
5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the
name of petitioner Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines cause confusion, mistake and deception on
the part of the purchasing public as to the origin of the goods.
On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy,
declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant feature of the mark.
ISSUE:
Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which 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.
HELD:
The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and
leads him to conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is further made more probable by
the fact that both parties are engaged in the same line of business.

Although the Court decided in favor of the respondent, the appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to
protection from any infringement upon the same. The dissenting opinion of Justice Padilla is more acceptable.

11. La Chemise Lacoste v. Fernandez (G.R. No. L-63796-97)

Facts:

La chemise Lacoste is a French corporation and the actual owner of the trademarks “Lacoste,” “Chemise Lacoste,” “Crocodile Device” and a composite mark consisting of the word “Lacoste” and a
representation of a crocodile/alligator, used on clothings and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964.

In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark “Chemise Lacoste and Q Crocodile Device” both in the supplemental and Principal Registry. In 1980, La
Chemise Lacoste SA filed for the registration of the “Crocodile device” and “Lacoste”.

Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of “Lacoste.” In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of
unfair competition committed by Hemandas and requesting the agency’s assistance.

A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed motion to quash the warrants, which the court granted. The
search warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari.

Issue:

Whether or not petitioner’s trademark is a well-known mark protected under the Paris Convention.

Ruling: YES.

In upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our
duties and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which the Philippines and France are parties.

Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed to the Director of the Patents Office directing the latter to reject all pending applications for Philippine registration
of signature and other world famous trademarks by applicants other than its original owners or users. The conflicting claims over internationally known trademarks involve such name brands as
Lacoste, et. al. It is further directed that, in cases where warranted, Philippine registrants of such trademarks should be asked to surrender their certificates of registration, if any, to avoid suits for
damages and other legal action by the trademarks’ foreign or local owners or original users.

The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. Sadhwanidecision which we cite with approval sustained the power of the Minister of Trade to issue the implementing
memorandum and declared La Chemise Lacoste S.A. the owner of the disputed trademark, stating: “In the case at bar, the Minister of Trade, as ‘the competent authority of the country of registration,’
has found that among other well-known trademarks ‘Lacoste’ is the subject of conflicting claims. For this reason, applications for its registration must be rejected or refused, pursuant to the treaty
obligation of the Philippines.”

12. In-N-Out Burger, Inc. vs. Sehwani Inc., et. al

Facts:
Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of California. It is a signatory to the Convention of Paris on Protection of Industrial Property and the TRIPS
Agreement. It is engaged mainly in the restaurant business, but it has never engaged in business in the Philippines.

Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the Philippines. Sometime in 1991, Sehwani filed with the BPTTT an application for the registration of the
mark “IN N OUT (the inside of the letter “O” formed like a star). Its application was approved and a certificate of registration was issued in its name on 1993. In 2000, Sehwani, Incorporated and
Benita Frites, Inc. entered into a Licensing Agreement, wherein the former entitled the latter to use its registered mark, “IN N OUT.”

Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the Bureau of Trademarks for the “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design. In 2000, In-N-Out
Burger found out that Sehwani, Incorporated had already obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star).” Also in 2000, In-N-Out Burger
sent a demand letter directing Sehwani, Inc. to cease and desist from claiming ownership of the mark “IN-N-OUT” and to voluntarily cancel its trademark registration. Sehwani Inc. did not accede to
In-N-Out Burger’s demand but it expressed its willingness to surrender its registration for a consideration.

In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and cancellation of trademark
registration.

Issues:
• Whether or not the Intellectual Property Office (an administrative body) have jurisdiction of cases involving provisions of the IPC (e.g. unfair competition).[1]
• Whether or not there was unfair competition.
Held:
FIRST ISSUE: Yes, the IPO (an administrative body) has jurisdiction in cases involving provisions of the IPC (e.g. unfair competition) due to the following reasons:
• Section 10 of the Intellectual Property Code specifically identifies the functions of the Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.“The Bureau of Legal Affairs shall have the following functions:
10.1 Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents and utility models, and
industrial designs; and petitions for compulsory licensing of patents;
10.2 (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights; Provided, That its jurisdiction is limited to complaints where
the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided, futher, That availment of the provisional remedies may be granted in accordance with the
Rules of Court. Xxx
Xxx

(vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time as the Director
of Legal Affairs may deem reasonable which shall not exceed one (1) year;
Xxx

(viii) The assessment of damages;

Unquestionably, petitioner’s complaint, which seeks the cancellation of the disputed mark in the name of respondent Sehwani, Incorporated, and damages for violation of petitioner’s
intellectual property rights, falls within the jurisdiction of the IPO Director of Legal Affairs.

• While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section states that the regular courts have sole jurisdiction over unfair
competition cases, to the exclusion of administrative bodies.
• Sections 160 and 170, which are also found under Part III of the Intellectual Property Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition
 cases.
These two provisions read:

Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. Any foreign national or juridical person who meets the requirements of Section 3 of this Act
and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin
and false description, whether or not it is licensed to do business in the Philippines under existing laws.
Section 170. Penalties. Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty
thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section168, and
Subsection169.1.
Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to decide the petitioner’s administrative case against respondents and the IPO Director General had
exclusive jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.

SECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita Frites were not using their registered trademark but that of In-n-Out Burger. Sehwani and Benita Frites are also
giving their products the general appearance that would likely influence the purchasers to believe that their products are that of In-N-Out Burger. The intention to deceive may be inferred from the
similarity of the goods as packed and offered for sale, and, thus, an action will lie to restrain unfair competition. The respondents’ frauduulent intention to deceive purchasers is also apparent in their
use of the In-N-Out Burger in business signages.
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. The
confusing similarity may or may not result from similarity in the marks, but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may
be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown.

• [1] IPO – Director of Legal Affairs decision

• In-N-Out Burger has legal capacity to sue in the Philippines because the latter is a signatory of the Convention of Paris on Protection of Industrial Property.
• IN-N-OUT Burger, Inc. – right to use its tradename and mark to the exclusion of the others
• Respondents’ use of the petitioner’s mark was made in good faith and therefore they are not guilty of unfair competition.
• IPO – Director General’s Decision
• Respondents are guilty of unfair competition.
• The following are ordered to be paid to In-N-Out Burger, inc.
• Damages in the amount of PHP 212, 574.28
• Exemplary damages in the amount of PHP 500,000
• Attorney’s fees and expenses of litigation in the amount of PHP 500,000
• CA Decision
• Regular courts, and not the BLA-IPO, have sole jurisdiction to hear and decide cases involving provisions of the IPC.

13. Developers Group of Companies v. CA (G.R. No. 104583)

Facts:

Petitioner Developers Group of Companies filed an infringement case against respondent Shangri-La alleging that it was the registered owner of the trademark ‘Shangri-La’ and ‘S’ logo for its
restaurant services which respondent herein was illegally using to the prejudice of petitioner. Petitioner also moved to enjoin respondent from using the said mark and logo. Respondent Shangri-La
claimed that it was the legal owner of the mark and it had already filed an administrative case for the cancellation of the mark even before petitioner has filed its complaint. The trial court found for
petitioner and issued the injunction. CA set aside the order of the trial court.

Issue:

Whether or not the petitioner was entitled to the writ of preliminary injunction issued by the trial court.

Ruling: NO.

The conflicting claims of the parties to the subject service mark and logo give us the impression that the right claimed by the plaintiff as its basis for asking for injunctive relief is far from clear. The
prima facie validity of its registration has been put into serious question by the above-stated cases filed by Shangri-La in the Bureau of Patents three years ahead of the complaint. While it is not
required that Developer’s claimed right be conclusively established at this stage, it is nevertheless necessary to show, at least tentatively, that it exists and is not vitiated by any substantial challenge or
contradiction, such as has been made by the private respondent. In our view, the petitioner has failed to comply with this requirement. As for the alleged damages, we find that Developers has not
adduced any evidence of injury, either actual or imminent, resulting from the acts complained of against Shangri-La. There was no finding of the trial court affirming the claim for damages nor is there
any support for it in the record. Our conclusion is that Developers has not justified the issuance of the writ of preliminary injunction by proving that it has a legal right to the disputed mark and logo
and that it has sustained injury as a result of the use thereof by Shangri-La.

14. GEMMA ONG A.K.A. Maria Teresa Gemma Catacutan,

Petitioner,vs.
PEOPLE OF THE PHILIPPINES,
Respondent. G.R. No. 169440 November 23, 2011
FACTS:
On September 2003, the Regional Trial Court of Manila convicted Gemma Ong forInfringement under Sec. 155 in relation to Sec. 170 of Republic Act. No. 8293 or the Intellectual Property Code.
This decision was assailed based on facts established that Gemma Ong wasengaged in the distribution, sale and offering for sale of counterfeit Marlboro cigarettes whichcaused confusion and
deception to public and without permit or authority from the TelengtanBrothers and Sons Inc., the exclusive manufacturer of Malboro cigarette in the Philippines andfrom the Philip Morris Products,
Inc. (PMPI) which is the registered owner and proprietor of theMARLBORO trademark.The decision of the RTC Manila was affirmed by the Court of Appeals and hence thisappeal by certiorari by
Gemma Ong praying that the decision of RTC and CA to be set aside andreverse.
ISSUE:
Whether or not Gemma Ong, setting aside the issue of alleged mistaken identity, is guiltybeyond reasonable doubt of Infringement under the Intellectual Property Code.
RULING:
The Supreme Court AFFIRMED the decision of Court of Appeals.I
n McDonald’s Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger,
Inc., Supreme Court held: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. A mark is valid if it is distinctive and not barred from registration. Once registered, not only the mark’s validity, but also the registrant’s ownership of the mark is prima facie presumed.
Anent the element of confusion, both the RTC and the Court of Appeals have correctly held that the counterfeit cigarettes seized from Gemma’s possession were intended to confuse and deceive the
public as to the origin of the cigarettes intended to be sold, as they not only bore PMPI’s mark, but they were also packaged almost exactly as PMPI’s products.
The prosecution was able to establish that the trademark "Marlboro" was not only valid forbeing neither generic nor descriptive, it was also exclusively owned by PMPI, as evidenced bythe
certificates of registration issued by the Intellectual Property Office of the Department of Trade and Industry.
GEMMA ONG A.K.A. Maria Teresa Gemma Catacutanvs. PEOPLE OF THE PHILIPPINES G.R. No. 169440 November 23, 2011by April Dream M. Pugon
Facts:
On September 10, 1998, the Senior Investigator III at the Intellectual Property Rights (IPR) Unit of theEconomic Intelligence and Investigation Bureau (EIIB), received reliable information that
counterfeit "Marlboro"cigarettes were being distributed and sold by two (2) Chinese nationals, Johnny Sia and Jessie Concepcion, inthe areas of Tondo, Binondo, Sta. Cruz and Quiapo, Manila. A
mission team formed by EIIB conductedsurveillance operation to verify the report. EIIB agents did a "test-buy" on the different sari-sari stores of Manilalocated in Quiapo, Tondo, Sta. Cruz and
Blumentritt areas and took samples of "Marlboro" cigarettes soldtherein.During the surveillance, the container van delivering the "Marlboro" packed in black plastic bags wasseen parked at 1677
Bulacan corner Hizon Streets, Sta. Cruz, Manila.They learned that the place is owned byMr. Jackson Ong. Initial examination made by Philip Morris, Inc. on those random sample purchases
revealedthat the cigarettes were indeed fake products unauthorized by the company. Senior Investigator filed anapplication for search warrant before the RTC of Dasmariñas, Cavite, Branch 90. Said
court issued a searchwarrant after finding probable cause to believe that Mr. Jackson Ong has in his possession/control in thepremises located at 1675-1677 Bulacan St. cor. M. Hizon St., Sta. Cruz,
Manila, the following properties:"Substantial number of fake locally made and imported fake cigarettes bearing the Marlboro brand, togetherwith the corresponding labels, cartons, boxes and other
packaging as well as receipts, invoices and otherdocuments relative to the purchase, sale, and distribution of the aforesaid fake Marlboro cigarettes."On September 25, 1998, the EIIB team
implemented the search warrant. They proceeded to thesubject premises but Jackson Ong, the alleged owner was not there. It was the accused who entertained them.The team was able to search the
premises and found Marlboro cigarettes stocked in several boxes containingfifty (50) reams inside each box which were packed in black plastic sacks like in "balikbayan boxes."Thereafter,
"Inventory" and "Certification In the Conduct of Search" were duly accomplished and signed by themembers of the EIIB and the other representatives present during the actual search whereby the
accusedsigned her name in the said documents as "Gemma Ong," as the Owner/Representative, while a certainemployee, Girlie Cantillo, also signed as witness. The EIIB filed a case for Violation of
Sections 155 and 168in relation to Section 170 of Republic Act No. 8293 against Jackson Ong who is not an authorized distributor ofMarlboro products in the Philippines.The prosecution presented
Roger Sherman Slagle, the Director of Operations of Philip Morris Malaysia, and Philip Morris Philippines, Inc.’s (PMPI) product/brand security expert, to testify that according to his examination,
the products they seized at the subject premises were counterfeit cigarettes, as well as thoseinvolved during the search operation.The defense filed a Demurrer to Evidence but the RTC denied
and thereafter, moved for areconsideration but the same was denied. The accused denied that she is the Gemma Ong, accused in thiscase and never having engaged in the manufacture and sale of any
kind of cigarettes and claimed that shecould not even distinguish between a fake and a genuine Marlboro cigarette. The defense claimed that therewas a mistaken identity of the accused.
Issues:
Whether or not Gemma’s guilt was proven beyond reasonable doubt in light of her alleged mistaken identity.
Ruling:
Positive identification of a culprit is of great weight in determining whether an accused is guilty ornot. Gemma, in claiming the defense of mistaken identity, is in reality denying her involvement in
the crime. SChas held that the defense of denial is insipid and weak as it is easy to fabricate and difficult to prove; thus, itcannot take precedence over the positive testimony of the offended party. The
defense of denial is unavailingwhen placed astride the undisputed fact that there was positive identification of the accused.
Gemma’s defense consists of her claim of mistaken identity, her denial of her involvement in the crime,and her accusation against the prosecution witnesses of allegedly giving false testimonies and
committingperjury are all weak, unproven, and unfounded claims, and will not stand against the strong evidence againsther. Gemma is guilty of violating Section 155 in relation to Section 170 of
Republic Act No. 8293.WHEREFORE, SC DENIES the Petition. The Decision of the Court of Appeals in CA-G.R. CR No.28308 is AFFIRMED.

15. The New Kids on the Block v. News America Publishing

Facts ●The News Kids (plaintiffs) filed a lawsuit against News America Publishing (Defendants). The New Kids were a musical band that had trademarked their name along with having an extensive
merch portfolio their logo on the merchandise. News America put out polls and were having people call in for 90 cents and the money would be then donated to charity. However, New Kids said that
News America was was imposing trademark infringement, which only one claim of nine. Rule of Law
●The court ruled in favor of News America Publishing (defendants)
Issue: Whether the newspapers use of the New Kids trademark violates the Lanham Act
Ruling: No. (1) newspapers were entitled to nominative fair use defense (2) fact that newspapers used toll numbers to conduct poll which competed with services offered b group did not make df
unavailable (3) musical group did not have claim for intentional interference with respective economic advantage based on newspapers4 fair and reasonable use of mark.

16. MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC.

G.R. No. 143993
18 August 2004
PONENTE: CARPIO, J.
FACTS:
Petitioner McDonald’s Corporation is a corporation organized under the laws of Delaware, United States. McDonald’s operates a global chain of fast-food restaurants. McDonald’s own a family of
marks including the “Big Mac” mark for its double-decker hamburger sandwich.
McDonald’s registered this trademark with the United States 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 then then Philippine Bureau of Patents, Trademarks and Technology (PBPTT) – now the Intellectual Property Office (IPO).
Pending approval of its application, McDonald’s introduced its “Big Mac” hamburger sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed registration of
the “Big Mac” mark in the Philippine Register based on its Home Registration in the United States. From 1982 to 1990, McDonald’s spent P10.5 million in advertisement for “Big Mac” hamburger
sandwiches alone.
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. Its 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.
McDonald’s opposed respondent corporation’s application on the ground that “Big Mak” was a colorable imitation of its registered “Big Mac” mark for the same food products.
ISSUES:
1. Is the respondent guilty of trademark infringement and unfair competition?
2. Is the “Big Mac” mark valid and does McDonald’s have rightful ownership to the same?
RULING:
1. YES.
Trademark Infringement
RA 166 defines trademark infringement as “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 use is likely to CAUSE CONFUSION or otherwise 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 trade-name
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.”
Clearly, there is cause for confusion in the case at bar. By using the “Big Mak” mark on the same goods, i.e. hamburger sandwiches, that petitioners’ “Big Mac” mark is used, they have unjustly
created the impression that its business is approved and sponsored by, or affiliated with plaintiffs.
Furthermore, using the dominancy test (rather than the holistic test), wherein the dominant features in the competing marks are considered, Big Mak failed to show that there could be no confusion.
The Court found that respondents’ use of the “Big Mak” mark results in likelihood of confusion. First, “Big Mak” sounds exactly the same as “Big Mac.” Second, the first word in “Big Mak” is
exactly the same as the first word in “Big Mac.” Third, the first two letters in “Mak” are the same as the first two letters in “Mac.” Fourth, the last letter in “Mak” while a “k” sounds the same
as “c” when the word “Mak” is pronounced. Fifth, in Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan.” In short, aurally, the two marks are the same.
Unfair Competition
With regard to unfair competition, RA 166, Section 29 defines the same as 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.
Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. Trademark infringement is a form of unfair competition. Trademark
infringement constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable deception on the public because of the general appearance of the goods.
L.C. Big Mak tried to pass off their goods as though it were connected to “Big Mac.” The mark “B[ig] M[ac]” is used by plaintiff McDonald’s to identify its double decker hamburger sandwich. The
packaging material is a styrofoam box with the McDonald’s logo and trademark in red with block capital letters printed on it. All letters of the “B[ig] M[ac]” mark are also in red and block capital
letters. On the other hand, defendants’ “B[ig] M[ak]” script print is in orange with only the letter “B”and “M” being capitalized and the packaging material is plastic wrapper. x x x x Further,
plaintiffs’logo and mascot are the umbrella “M” and “Ronald McDonald’s,” respectively, compared to the mascot of defendant Corporation which is a chubby boy called “Macky” displayed or printed
between the words “Big” and “Mak.”(Emphasis supplied)

Respondents point to these dissimilarities as proof that they did not give their hamburgers the general appearance of petitioners’ “Big Mac” hamburgers.
The dissimilarities in the packaging are minor compared to the stark similarities in the words that give respondents’ “Big Mak” hamburgers the general appearance of petitioners’ “Big
Mac”hamburgers. Section 29(a) expressly provides that the similarity in the general appearance of the goods may be in the “devices or words” used on the wrappings. Respondents have applied on
their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. What attracts the attention of the buying public are the words “Big Mak” which are almost the same,
aurally and visually, as the words “Big Mac.” The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings.
YES.
A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA 166. However, once registered, not only the mark’s validity but also the registrant’s ownership of the
mark is prima facie presumed.
Respondents contend that of the two words in the “Big Mac” mark, it is only the word “Mac” that is valid because the word “Big” is generic and descriptive (proscribed under Section 4[e]), and
thus “incapable of exclusive appropriation.”
The contention has no merit. The “Big Mac” mark, which should be treated in its entirety and not dissected word for word,is neither generic nor descriptive.

17. Coca-Cola Bottlers Phils v Gomez GR 154491

18. Chester Uyco v. Vicente Lo

28 January 2013; Brion, J.
Digest prepared by Dianne Cadorna
I. Facts
1. The disputed marks in this case are the “HIPOLITO & SEA HORSE & TRIANGULAR DEVICE,” “FAMA,” and other related marks, service marks and trade names of Casa Hipolito S.A.
Portugal appearing in kerosene burners.
2. Respondent Vicente Lo and Philippine Burners Manufacturing Corporation (PBMC) filed a complaint against petitioners, officers of Wintrade Industrial SalesCorporation (Wintrade) and of
National Hardware for violation of Sec. 169.1, in relation to Sec. 170 of RA 8293, which punishes any person who uses in commerce any false designation of origin which is likely to
cause confusion or mistake as to the origin ofthe product.
3. Lo claimed that Gasirel-Industria de Comercio e Componentes para Gass, Lda.
(Gasirel), the owner of the disputed marks, assigned the above marks in his favor, to be used in all countries except for those in Europe and America. However, when Lo did a test buy of the kerosene
burners manufactured by Wintrade, it found that the said burners contained the subject marks and the designations “Made in Portugal” and “Original Portugal” in the wrappers, notwithstanding that as
the assignee for the trademarks, he had not authorized Wintrade to use these marks, nor had Casa Hipolito S.A. Portugal.
4. It appears that a prior authority to that effect was given to Wintrade’s predecessor-in-interest, Wonder Project & Development Corporation (Wonder); however, CasaHipolito S.A.
Portugal had already revoked this authority through a letter ofcancellation dated May 31, 1993.
5. Thus, law claimed that Wintrade’s kerosene burners have caused confusion, mistakeand deception on the part of the buying public.
6. Petitioners countered that Wintrade owns the subject trademarks and their variants, pursuant to certificates of registration issued by the IPO. They alleged that their authority to use
the marks from Casa Hipolito S.A. Portugal was derived from Wonder, their predecessor-in-interest. At the same time, they averred that that the products bought during the test buy
bearing the trademarks in question were not manufactured by, or in any way connected with, the petitioners and/or Wintrade. Finally, they argued that the marks “Made in Portugal” and “Original
Portugal” are merely descriptive and refer to the source of the design and the history of manufacture, and were not meant to cause deception among the public.
7. The Chief State Prosecutor found probable cause against petitioners. The DOJ affirmed.
8. The CA, and ultimately the SC affirmed. Thus, petitioners filed the instant MR, reiterating their earlier arguments. se of the Court’s discretionary power.
II. Issues
WON the finding of probable cause against petitioners for violation of Sec. 169.1 in relation to Sec. 170 of Ra 8293 should be reversed – NO.
III. Holding
MR denied.
IV. Ratio
1. Contrary to petitioners’ assertion, they made admissions in their joint affidavit, which, in effect, controvert their argument that they have not manufactured the products bearing the marks “Made
in Portugal” and “Original Portugal” that were bought by Lo during the test buy.
2. Said admissions show Wintrade’s former association with Casa Hipolito S.A. Portugal; their decision to produce the burners in the Philippines; their use of the
disputed marks; and their justification for their use.
3. Thus, the evidence shows that petitioners, who are officers of Wintrade, placed the words “Made in Portugal” and "Original Portugal" with the disputed marks knowing fully well — because of
their previous dealings with the Portuguese company — that these were the marks used in the products of Casa Hipolito S.A. Portugal.
4. More importantly, the products that Wintrade sold were admittedly produced in the Philippines, with no authority from Casa Hipolito S.A. Portugal.
5. The law on trademarks and trade names precisely precludes a person from profiting from the business reputation built by another and from deceiving the public as to the origins of products.
These facts support the consistent findings of the State Prosecutor, the DOJ and the CA that probable cause exists to charge the petitioners with false designation of origin.
6. The fact that the evidence did not come from Lo, but had been given by the petitioners, is of no significance.
7. The argument that the words “Made in Portugal” and “Original Portugal” refer to the origin of the design and not to the origin of the goods does not negate the finding of probable cause;
nevertheless, petitioners are not precluded from raising such argument as a defense during the hearing of the case on the merits.

19. KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by GEMMA DEMORAL-SAVAGE vs. JUDGE APRONIANO B. TAYPIN, Presiding
Judge, RTC-BR. 12, Cebu City, CEBU PROVINCIAL PROSECUTOR'S OFFICE, NATIONAL BUREAU OF INVESTIGATION, Region VII, Cebu City, JUANITA NG
MENDOZA, MENDCO DEVELOPMENT CORPORATION, ALFREDO SABJON and DANTE SOSMEÑA
G.R. No. 134217, May 11, 2000
FACTS: Petitioners Savage, seek to nullify the search warrant issued by respondent Judge Aproniano B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the seizure of certain
pieces of wrought iron furniture from the factory of petitioners located in Biasong, Talisay, Cebu.
The complaint was lodged by private respondent Eric Ng Mendoza, president and general manager of Mendco Development Corporation (MENDCO), alleging that Savage’s products are the object of
unfair competition involving design patents, punishable under Art. 189 of the Revised Penal Code as amended. Savage contends however, that there was no existence of offense leading to the issuance
of a search warrant and eventual seizure of its products.

ISSUE: Whether or not unfair competition involving design patents are punishable under Article 189 of the Revised Penal Code.
HELD: To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The repealing clause of the IPC provides that Articles 188 and 189 of the Revised Penal Code (RPC),
Presidential Decree No. 49, are hereby repealed The issue involving the existence of "unfair competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal Code, has
been rendered moot and academic by the repeal of the article. Hence, the search warrant cannot even be issued by virtue of a possible violation of the IPR Code.
There is no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the crime exists at
all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal Code.
The court is are prevented from applying these principles, along with the new provisions on Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts constitute
patent infringement as defined by the same Code
Although the case traces its origins to the year 1997 or before the enactment of the IPR Code, Article 22 of the Revised Penal Code provides that penal laws shall be applied retrospectively, if such
application would be beneficial to the accused. Since the IPR Code effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then RPC provisions must be applied.

20. Coffee Partners Inc. v. San Francisco Coffee

Facts:

Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to operate coffee shops in the country using the trademark ‘San Francisco Coffee.’ Respondent on the other
hand, is a local corporation engaged in the wholesale and retail sale of coffee and uses the business name ‘San Francisco Coffee & Roastery’ registered with the DTI. Later, respondent filed an
infringement and/or unfair competition complaint against petitioner alleging that the latter was about to open a coffee shop under the name ‘San Francisco Coffee’ causing confusion in the minds of
the public as it bore a similar name and is engaged also in selling of coffee. Petitioner contended no infringement would arise because respondent’s tradename was not registered.

Issue:

Whether or not petitioner’s trademark would infringe respondent’s tradename.

Ruling: YES.

In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services;

(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or
origin of such goods or services or the identity of such business; and

(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

RA 8293, which took effect on 1 January 1998, has dispensed with the registration requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or
without registration with the IPO, against any unlawful act including any subsequent use of the trade name by a third party, whether as a trade name or a trademark likely to mislead the public.

It is the likelihood of confusion that is the gravamen of infringement. Applying the dominancy test or the holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear infringement of
respondent’s “SAN FRANCISCO COFFEE & ROASTERY, INC.” trade name. The descriptive words “SAN FRANCISCO COFFEE” are precisely the dominant features of respondent’s trade name.
Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the business of one corporation is the
same or substantially the same as that of another corporation. In this case, the consuming public will likely be confused as to the source of the coffee being sold at petitioner’s coffee shops.

GR No. 169504, March 3, 2010

FACTS:

The petitioner holds a business in maintaining coffee shops in the Philippines. It is registered with the Securities and Exchange Commission in January 2001. In its franchise agreement with Coffee
Partners Ltd, it carries the trademark “San Francisco Coffee.” Respondent is engaged in the wholesale and retail sale of coffee that was registered in SEC in May 1995 under a registered business
name of “San Francisco Coffee & Roastery, Inc.” It entered into a joint venture with Boyd Coffee USA to study coffee carts in malls.

When respondent learned that petitioner will open a coffee shop in Libis, Q.C. they sent a letter to the petitioner demanding them to stop using the name “San Francisco Coffee” as it causes confusion
to the minds of the public.

A complaint was also filed by respondents before the Bureau of Legal Affairs of the Intellectual Property Office for infringement and unfair competition with claims for damages.

Petitioners contend that there are distinct differences in the appearance of their trademark and that respondent abandoned the use of their trademark when it joined venture with Boyd Coffee USA.
The Bureau of Legal Affairs of the IPO held that petitioner’s trademark infringed on the respondent’s trade name as it registered its business name first with the DTI in 1995 while petitioner only
registered its trademark in 2001. Furthermore, it ruled that the respondent did not abandon the use of its trade name upon its joint venture with Boyd Coffee USA since in order for abandonment to
exist it must be permanent, intentional and voluntary.

It also held that petitioner’s use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial
impression of the words "SAN FRANCISCO" which is the dominant portion of respondent’s trade name and petitioner’s trademark.

Upon appeal before the office of the Director General of the IPO, the decision of its legal affairs was reversed declaring there was no infringement. The Court of Appeals however set aside its decision
and reinstated the IPO legal affairs’ decision.

Petitioner contends that the respondent’s trade name is not registered therefore a suit for infringement is not available.

ISSUE:

Whether or not the petitioner’s use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondent’s trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." even if
the trade name is not registered with the Intellectual Property Office (IPO).

HELD:

Petition denied. Registration of a trademark before the IPO is no longer a requirement to file an action for infringement as provided in Section 165.2 of RA 8293. All that is required is that the trade
name is previously used in trade or commerce in the Philippines. There is no showing that respondent abandoned the use of its trade name as it continues to embark to conduct research on retailing
coffee, import and sell coffee machines as among the services for which the use of the business name has been registered.
The court also laid down two tests to determine similarity and likelihood of confusion. The dominancy test focuses on similarity of the prevalent features of the trademarks that could cause deception
and confusion that constitutes infringement. Exact duplication or imitation is not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of
the public or to deceive consumers. the holistic test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing
similarity.15 The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his
conclusion whether one is confusingly similar to the other.

Applying the dominancy test or the holistic test, petitioner’s "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondent’s "SAN FRANCISCO COFFEE & ROASTERY, INC."
trade name. The descriptive words "SANFRANCISCO COFFEE" are precisely the dominant features of respondent’s trade name. And because both are involved in coffee business there is always the
high chance that the public will get confused of the source of the coffee sold by the petitioner. Respondent has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE &
ROASTERY,INC." since the registration of the business name with the DTI in 1995.

19