09 DISTILLERIA WASHINGTON, INC. or WASHINGTON DISTILLERY, INC.
vs. THE HONORABLE COURT OF APPEALS and LA TONDEA DISTILLERS,
INC.
[G.R. No. 120961. October 17, 1996]
TOPIC: Trademark
PONENTE: Vitug, J.AUTHOR: Danna
FACTS
1. La Tondea Distillers, Inc. (LTDI) sought to seize from
Distilleria Washington 18,157 empty 350 c.c. white flint bottles
bearing the blown-in marks of La Tondea Inc. and Ginebra San
Miguel. These bottles, it was averred, were being used by
Washington for its own Gin Seven products without the consent of
LTDI.
LTDIs contention: Being the owner and registrant of the bottles,
it was entitled to the protection so extended by R.A. No. 623 (AN
ACT TO REGULATE THE USE OF DULY STAMPED OR MARKED BOTTLES, BOXES,
CASKS, KEGS, BARRELS AND OTHER SIMILAR CONTAINERS), as amended,
notwithstanding its sale of the Ginebra San Miguel gin product that
was contained in the said bottles.
[Basically, theyre saying that what theyre selling is only the
gin (yung inumin inside the bottle); di kasama yung bottle sa
binebenta so sila yung owner ng bottles and bawal yun gamitin ni
Washington.]
The court, on application of LTDI, issued an order of replevin
for the seizure of the empty gin bottles from Washington.
2.Washington claims that it is the owner of the 18,157 empty
bottles.
Washingtons contention: R.A. No. 623 should not apply to gin, an
alcoholic beverage which is unlike that of soda water, mineral or
aerated water, ciders, milks, cream, or other lawful beverages
mentioned in [RA 623]; and that, in any case, ownership of the
bottles should be held lawfully transferred to the buyers upon the
sale of the gin and containers at a single price.
ISSUE/HELD
Whether or not there was an illegal use of the bottles (which
had blown-in marks of La Tondea Inc. and Ginebra San Miguel) by
Washington >> YES
The Court found it legally absurd to still allow Washington to
recover the bottles. The practical and feasible alternative is to
merely require the payment of just compensation to [Washington] for
the bottles seized from it by LTDI. Conventional wisdom, along with
equity and justice to both parties, dictates it.
RATIO
1.It is a fact that R.A. No. 623 extends trademark protection in
the use of containers duly registered with the Philippine Patent
Office.
(Republic Act No. 623, which governs the registration of marked
bottles and containers, merely requires that the bottles, in order
to be eligible for registration, must be stamped or marked with the
names of the manufacturers or the names of their principals or
products, or other marks of ownership. No drawings or labels are
required but, instead, two photographs of the container, duly
signed by the applicant, showing clearly and legibly the names and
other marks of ownership sought to be registered and a bottle
showing the name or other mark or ownership, irremovably stamped or
marked, shall be submitted.)
2.The instant suit is one for replevin (manual delivery) where
the claimant must be able to show convincingly that he is either
the owner or clearly entitled to the possession of the object
sought to be recovered. Replevin is a possessory action the gist of
which focuses on the right of possession that, in turn, is
dependent on a legal basis that, not infrequently, looks to the
ownership of the object sought to be replevied.
3.It is to be pointed out that a trademark refers to a word,
name, symbol, emblem, sign or device or any combination thereof
adopted and used by a merchant to identify, and distinguish from
others, his goods of commerce. It is basically an intellectual
creation that is susceptible to ownership and, consistently
therewith, gives rise to its own elements of jus posidendi, jus
utendi, jus fruendi, jus disponendi, and jus abutendi, along with
the applicable jus lex, comprising that ownership. The incorporeal
right, however, is distinct from the property in the material
object subject to it. Ownership in one does not necessarily vest
ownership in the other. Thus, the transfer or assignment of the
intellectual property will not necessarily constitute a conveyance
of the thing it covers, nor would a conveyance of the latter imply
the transfer or assignment of the intellectual right.
4.R.A. No. 623 evidently does not disallow the sale or transfer
of ownership of the marked bottles or containers. In fact, the
contrary is implicit in the law; thus
Sec. 5. No action shall be brought under this Act against any
person to whom the registered manufacturer, bottler or seller, has
transferred by way of sale, any of the containers herein referred
to, but the sale of the beverage contained in the said containers
shall not include the sale of the containers unless specifically so
provided.
5.[The industry practice in the sale of gin is as follows:] The
manufacturer sells the product in marked containers, through
dealers, to the public in supermarkets, grocery shops, retail
stores and other sales outlets. The buyer takes the item; he is
neither required to return the bottle nor required to make a
deposit to assure its return to the seller. He could return the
bottle and get a refund. A number of bottles at times find their
way to commercial users [like Washington. Ownership of the
containers does pass on to the consumer albeit subject to the
statutory limitation on the use of the registered containers and to
the trademark right of the registrant.]
6.The statement in Section 5 of R.A. 623 to the effect that the
sale of beverage contained in the said containers shall not include
the sale of the containers unless specifically so provided is not a
rule of proscription. It is a rule of construction that, in keeping
with the spirit and intent of the law, establishes at best a
presumption (of non-conveyance of the container) and which by no
means can be taken to be either interdictive or conclusive in
character.
7.LTDIs sales invoice, stipulating that the sale does not
include the bottles [which have the blow-in marks of ownership of
La Tondea Distillers], cannot affect those who are not privies
thereto.
8.While it may be unwarranted for LTDI to simply seize the empty
containers, this Court finds it to be legally absurd, however, to
still allow [Washington] to recover the possession thereof.
R.A. 623, as amended, in affording trademark protection to the
registrant, has additionally expressed a prima facie presumption of
illegal use by a possessor whenever such use or possession is
without the written permission of the registered manufacturer, a
provision that is neither arbitrary nor without appropriate
rationale.
The practical and feasible alternative is to merely require the
payment of just compensation to [Washington] for the bottles seized
from it by LTDI. Conventional wisdom, along with equity and justice
to both parties, dictates it.
CASE LAW/DOCTRINE
It is to be pointed out that a trademark refers to a word, name,
symbol, emblem, sign or device or any combination thereof adopted
and used by a merchant to identify and distinguish from others, his
goods of commerce. It is basically an intellectual creation that is
susceptible to ownership and, consistently therewith, gives rise to
its own elements of jus posidendi, jus utendi, jus fruendi, jus
disponendi, and jus abutendi, along with the applicable jus lex,
comprising that ownership.
The incorporeal right, however, is distinct from the property in
the material object subject to it. Ownership in one does not
necessarily vest ownership in the other. Thus, the transfer or
assignment of the intellectual property will not necessarily
constitute a conveyance of the thing it covers, nor would a
conveyance of the latter imply the transfer or assignment of the
intellectual right.
The statement Sale of beverage contained in the said containers
shall not include the sale of the containers unless specifically so
provided is not a rule of proscription, but establishes, at best, a
presumption of non-conveyance of the container.
001 ANA L. ANG, petitioner, vs.
TORIBIO TEODORO, respondent.
G.R. No. L-48226 December 14, 1942
Topic: TrademarkAUTHOR: Rhona Burs
Function of a trade-mark is to point distinctively, either by
its own meaning or by association, to the origin or ownership of
the wares to which it is applied.
FACTS:
1. Respondent Toribio Teodoro has continuously used "Ang Tibay,"
both as a trade-mark and as a trade-name, in the manufacture and
sale of slippers, shoes, and indoor baseballs since 1910.
2. He formally registered it as trade-mark on September 29,
1915, and as trade-name on January 3, 1933. The growth of his
business is a thrilling epic of Filipino industry and business
capacity.
3. Petitioner Ang (defendant below) registered the same
trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and
established a factory for the manufacture of said articles in the
year 1937.
4. The trial court absolved the defendant (Ms. Ang) from the
complaint on the grounds that the two trademarks are dissimilar and
are used on different and non-competing goods; that there had been
no exclusive use of the trade-mark by the plaintiff; and that there
had been no fraud in the use of the said trade-mark by the
defendant (Ang) because the goods on which it is used are
essentially different from those of the plaintiff.
5. The CA reversed that judgment, holding that by uninterrupted
an exclusive use since 191 in the manufacture of slippers and
shoes, respondent's trade-mark has acquired a secondary meaning;
that the goods or articles on which the two trade-marks are used
are similar or belong to the same class; and that the use by
petitioner of said trade-mark constitutes a violation of sections 3
and 7 of Act No. 666.
6. The CA directed the Director of Commerce to cancel the
registration of the trade-mark "Ang Tibay" in favor of petitioner
Ang, and perpetually enjoining the latter from using said
trade-mark on goods manufactured and sold by her.
The defendant Director of Commerce did not appeal from the
decision of the Court of Appeals.
7. Hence, this appeal by petitioner.
8. Petitioners contention: the phrase "Ang Tibay" as employed by
the respondent on the articles manufactured by him is a descriptive
term because, "freely translate in English," it means "strong,
durable, lasting." Petitioner invokes section 2 of Act No. 666,
which provides that words or devices, which related only to the
name, quality, or description of the merchandise, cannot be the
subject of a trade-mark.
9. Respondents contention: the words "Ang Tibay" are not
descriptive but merely suggestive and may properly be regarded as
fanciful or arbitrary in the legal sense.
ISSUE: 1. Whether or not the words Ang Tibay had acquired a
secondary meaning
2. WON the the words "Ang Tibay" are not descriptive but merely
suggestive
HELD:
1. It is unnecessary to apply here the doctrine of "secondary
meaning" in trade-mark parlance. The phrase "Ang Tibay," being
neither geographic nor descriptive, was originally capable of
exclusive appropriation as a trademark. But were it not so, the
application of the doctrine of secondary meaning made by the Court
of Appeals could nevertheless be fully sustained because, in any
event, by respondent's long and exclusive use of said phrase with
reference to his products and his business, it has acquired a
proprietary connotation.
2. "Ang Tibay" is not a descriptive term within the meaning of
the Trade-Mark Law but rather a fanciful or coined phrase, which
may properly and legally be appropriated as a trade-mark or
trade-name
RATIO:
1. We find it necessary to go into the etymology and meaning of
the Tagalog words "Ang Tibay" to determine whether they are a
descriptive term, i.e., whether they relate to the quality or
description of the merchandise to which respondent has applied them
as a trade-mark. The word "ang" is a definite article meaning "the"
in English. It is also used as an adverb, a contraction of the word
"anong" (what or how).
The phrase "Ang Tibay" is an exclamation denoting administration
of strength or durability.
2. We deduce that "Ang Tibay" is not a descriptive term within
the meaning of the Trade-Mark Law but rather a fanciful or coined
phrase, which may properly and legally be appropriated as a
trade-mark or trade-name. In this connection we do not fail to note
that when the petitioner herself took the trouble and expense of
securing the registration of these same words as a trademark of her
products she or her attorney as well as the Director of Commerce
was undoubtedly convinced that said words (Ang Tibay) were not a
descriptive term and hence could be legally used and validly
registered as a trade-mark. It seems stultifying and puerile for
her now to contend otherwise, suggestive of the story of sour
grapes.
3. Counsel for the petitioner says that the function of a
trade-mark is to point distinctively, either by its own meaning or
by association, to the origin or ownership of the wares to which it
is applied. That is correct, and we find that "Ang Tibay," as used
by the respondent to designate his wares, had exactly performed
that function for twenty-two years before the petitioner adopted it
as a trade-mark in her own business. Ang Tibay shoes and slippers
are, by association, known throughout the Philippines as products
of the Ang Tibay factory owned and operated by the respondent
Toribio Teodoro.
4. Petitioners other contention: Court of Appeals erred in
holding that the words "Ang Tibay" had acquired a secondary
meaning.
SC: it is unnecessary to apply here the doctrine of "secondary
meaning" in trade-mark parlance. This doctrine is to the effect
that a word or phrase originally incapable of exclusive
appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have
been used so long and so exclusively by one producer with reference
to his article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to mean that the
article was his product.
We have said that the phrase "Ang Tibay," being neither
geographic nor descriptive, was originally capable of exclusive
appropriation as a trademark. But were it not so, the application
of the doctrine of secondary meaning made by the Court of Appeals
could nevertheless be fully sustained because, in any event, by
respondent's long and exclusive use of said phrase with reference
to his products and his business, it has acquired a proprietary
connotation.
5. Petitioners contention: Court of Appeals erred in holding
that pants and shirts are goods similar to shoes and slippers
within the meaning of sections 3 and 7 of Act No. 666; there can be
no infringement then because those articles do not belong to the
same class of merchandise as shoes and slippers.
SC: In the present state of development of the law on
Trade-Marks, Unfair Competition, and Unfair Trading, the test
employed by the courts to determine whether noncompeting goods are
or are not of the same class is confusion as to the origin of the
goods of the second user. Although two noncompeting articles may be
classified under two different classes by the Patent Office because
they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the
same class if the simultaneous use on them of identical or closely
similar trade-marks would be likely to cause confusion as to the
origin, or personal source, of the second user's goods. They would
be considered as not falling under the same class only if they are
so dissimilar or so foreign to each other as to make it unlikely
that the purchaser would think the first user made the second
user's goods.
The courts have come to realize that there can be unfair
competition or unfair trading even if the goods are non-competing,
and that such unfair trading can cause injury or damage to the
first user of a given trade-mark, first, by prevention of the
natural expansion of his business and, second, by having his
business reputation confused with and put at the mercy of the
second user. Then noncompetitive products are sold under the same
mark, the gradual whittling away or dispersion of the identity and
hold upon the public mind of the mark created by its first user,
inevitably results. The original owner is entitled to the
preservation of the valuable link between him and the public that
has been created by his ingenuity and the merit of his wares or
services. Experience has demonstrated that when a well-known
trade-mark is adopted by another even for a totally different class
of goods, it is done to get the benefit of the reputation and
advertisements of the originator of said mark, to convey to the
public a false impression of some supposed connection between the
manufacturer of the article sold under the original mark and the
new articles being tendered to the public under the same or similar
mark.
The mere relation or association of the articles is not
controlling. As may readily be noted from what we have heretofore
said, the proprietary connotation that a trade-mark or trade-name
has acquired is of more paramount consideration.
The Court of Appeals found in this case that by uninterrupted
and exclusive use since 1910 of respondent's registered trade-mark
on slippers and shoes manufactured by him, it has come to indicate
the origin and ownership of said goods. It is certainly not
farfetched to surmise that the selection by petitioner of the same
trade-mark for pants and shirts was motivated by a desire to get a
free ride on the reputation and selling power it has acquired at
the hands of the respondent. As observed in another case, the field
from which a person may select a trade-mark is practically
unlimited, and hence there is no excuse for impinging upon or even
closely approaching the mark of a business rival.
CASE LAW/ DOCTRINE:
The owner of a trade-mark or trade-name has a property right in
which he is entitled to protection, since there is damage to him
from confusion of reputation or goodwill in the mind of the public
as well as from confusion of goods. The modern trend is to give
emphasis to the unfairness of the acts and to classify and treat
the issue as a fraud.
4. G.R. No. L-20635 March 31, 1966
ETEPHA, A.G., petitioner,
vs.
DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC.
in 1959, respondent Westmont Pharmaceuticals, Inc., a New York
corporation, sought registration of trademark "Atussin" placed on
its "medicinal preparation of expectorant antihistaminic,
bronchodilator sedative, ascorbic acid (Vitamin C) used in the
treatment of cough". The trademark is used exclusively in the
Philippines since january 1959.
Petitioner, Etepha, A. G., a Liechtenstin corporation, objected.
Petitioner claims that it will be damaged because Atussin is so
confusedly similar to its Pertussin (Registration No. 6089, issued
on September 25, 1957) used on a preparation for the treatment of
coughs, that the buying public will be misled into believing that
Westmont's product is that of petitioner's which allegedly enjoys
goodwill.
the purpose of their objection was said to be to prevent fraud
and imposition
the main issue is whether or not Atussin so resembles Pertussin
"as to be likely, when applied to or used in connection with the
goods ... of the applicant, to cause confusion or mistake or to
deceive purchasers
ISSUE: May trademark ATUSSIN be registered, given the fact that
PERTUSSIN, another trademark, had been previously registered in the
Patent Office?
The phrase "colorable imitation" denotes such a "close or
ingenious imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to deceive an
ordinary purchaser, giving such attention as a purchaser usually
gives, and to cause him to purchase the one supposing it to be the
other.
tussin is "the common practice in the drug and pharmaceutical
industries to 'fabricate' marks by using syllables or words
suggestive of the ailments for which they are intended and adding
thereto distinctive prefixes or suffixes".5 And appropriately to be
considered now is the fact that, concededly, the "tussin" (in
Pertussin and Atussin) was derived from the Latin root-word
"tussis" meaning cough.
"Tussin" is merely descriptive; it is generic; it furnishes to
the buyer no indication of the origin of the goods; it is open for
appropriation by anyone. It is accordingly barred from registration
as trademark.
Tussin can be added to another word or phrase for it to become
the subject of a trademark.
A practical approach to the problem of similarity or
dissimilarity is to go into the whole of the two trademarks
pictured in their manner of display. Inspection should be
undertaken from the viewpoint of a prospective buyer. The trademark
complained of should be compared and contrasted with the
purchaser's memory (not in juxtaposition) of the trademark said to
be infringed. Some such factors as "sound; appearance; form, style,
shape, size or format; color; ideas connoted by marks; the meaning,
spelling, and pronunciation, of words used; and the setting in
which the words appear" may be considered. For, indeed, trademark
infringement is a form of unfair competition.
Respondent's label underscores the trademark Atussin in bold,
block letters horizontally written. In petitioner's, on the other
hand, Pertussin is printed diagonally upwards and across in
semiscript style with flourishes and with only the first letter "P"
capitalized. Each label plainly shows the source of the medicine:
petitioner's at the foot bears "Etepha Ltd. Schaan Fl", and on top,
"Apothecary E. Taeschner's"; respondent's projects "Westmont
Pharmaceuticals, Inc. New York, USA" at the bottoms, and on the
lower left side the word "Westmont" upon a white diamond shaped
enclosure and in red ink a color different from that of the words
above and below it. Printed prominently along the left, bottom and
right edges of petitioner's label are indications of the use: "for
bronchial catarrh whopping-cough coughs and asthma". Respondent's
for its part briefly represents what its produce actually is - a
"cough syrup". The two labels are entirely different in colors,
contents, arrangement of words thereon, sizes, shapes and general
appearance. The contrasts in pictorial effects and appeals to the
eye is so pronounced that the label of one cannot be mistaken for
that of the other, not even by persons unfamiliar with the two
trademarks.
only if their over-all presentations in any of the particulars
of sound, appearance, or meaning are such as would lead the
purchasing public into believing that the products to which the
marks are applied emanated from the same source. In testing this
issue, fixed legal rules exist if not in harmony, certainly in
abundance but, in the final analysis, the application of these
rules in any given situation necessarily reflects a matter of
individual judgment largely predicated on opinion. There is,
however, and can be no disagreement with the rule that the
purchaser is confused, if at all, by the marks as a whole.
One look is enough to denude the mind of that illuminating
similarity so essential for a trademark infringement case to
prosper.
As we take up Pertussin and Atussin once again, we cannot escape
notice of the fact that the two words do not sound alike when
pronounced. There is not much phonetic similarity between the two.
The Solicitor General well-observed that in Pertussin the
pronunciation of the prefix "Per", whether correct or incorrect,
includes a combination of three letters P, e and r; whereas, in
Atussin the whole starts with the single letter A added to suffix
"tussin". Appeals to the ear are disimilar. And this, because in a
word combination, the part that comes first is the most
pronounced.
In the solution of a trademark infringement problem, regard too
should be given to the class of persons who buy the particular
product and the circumstances ordinarily attendant to its
acquisition.The medicinal preparation clothed with the trademarks
in question, are unlike articles of everyday use such as candies,
ice cream, milk, soft drinks and the like which may be freely
obtained by anyone, anytime, anywhere. Petitioner's and
respondent's products are to be dispensed upon medical
prescription. The respective labels say so. An intending buyer must
have to go first to a licensed doctor of medicine; he receives
instructions as to what to purchase; he reads the doctor's
prescription; he knows what he is to buy. He is not of the
incautious, unwary, unobservant or unsuspecting type; he examines
the product sold to him; he checks to find out whether it conforms
to the medical prescription. The common trade channel is the
pharmacy or the drugstore. Similarly, the pharmacist or druggist
verifies the medicine sold. The margin of error in the acquisition
of one for the other is quite remote
003 PRIBHDAS J. MIRPURI, petitioner, vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.
[G.R. No. 114508November 19, 1999]
TOPIC: Trademarks
PONENTE: PUNO, J.AUTHOR: Ernest
FACTS:
1.Lolita Escobar, the predecessor-in-interest of petitioner
Pribhdas J. Mirpuri, filed an application with the Bureau of
Patents for the registration of the trademark "Barbizon" for use in
brassieres and ladies undergarments. Escobar alleged that she had
been manufacturing and selling these products under the firm name
"L & BM Commercial" since March 3, 1970.
2.Barbizon Corporation, a corporation organized and doing
business under the laws of New York, U.S.A., opposed the
application on the ff grounds:
a)The mark BARBIZON of respondent-applicant is confusingly
similar to the trademark BARBIZON which opposer owns and has not
abandoned.
b)That opposer will be damaged by the registration of the mark
BARBIZON and its business reputation and goodwill will suffer great
and irreparable injury.
c)That the respondent-applicant's use of the said mark BARBIZON
which resembles the trademark used and owned by opposer,
constitutes an unlawful appropriation of a mark previously used in
the Philippines and not abandoned and therefore a statutory
violation of Section 4 (d) of Republic Act No. 166, as amended.
3.The Director of Patents rendered judgment dismissing the
opposition and giving due course to Escobar's application, which
became final on Sep 11, 1974.
4.Escobar later assigned all her rights and interest over the
trademark to petitioner Pribhdas J. Mirpuri who, under his firm
name then, the "Bonito Enterprises," was the sole and exclusive
distributor of Escobar's "Barbizon" products.
5.Escobar failed to file with the Bureau of Patents the
Affidavit of Use of the trademark required under Section 12 of
Republic Act (R.A.) No. 166, the Philippine Trademark Law. Due to
this failure, the Bureau of Patents cancelled Escobar's certificate
of registration.
6.Escobar reapplied for registration of the cancelled trademark.
Mirpuri filed his own application for registration of Escobar's
trademark. Escobar later assigned her application to herein
petitioner and this application was opposed by private respondent
on the ground that the trademark applied for by respondent
applicant is identical to Opposer's BARBIZON trademark and
constitutes the dominant part of Opposer's two other marks namely,
BARBIZON and Bee design and BARBIZON and a Representation of a
Woman.
Director rendered a decision declaring private respondent's
opposition barred by res judicata and giving due course to
petitioner's application for registration.
Court of Appeals reversed the Director of Patents finding that
IPC No. 686 was not barred by judgment in IPC No. 2049 and ordered
that the case be remanded to the Bureau of Patents for further
proceedings. Hence petition.
ISSUE: The Convention of Paris for the Protection of Industrial
Property is a multi-lateral treaty which the Philippines bound
itself to honor and enforce in this country. Hence, whether or not
the treaty affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar
trademark.
HELD/RATIO:
Yes. The essential requirement under Article 6bis is that the
trademark to be protected must be "well-known" in the country where
protection is sought. The power to determine whether a trademark is
well-known lies in the "competent authority of the country of
registration or use." This competent authority would be either the
registering authority if it has the power to decide this, or the
courts of the country in question if the issue comes before a
court.
In the Villafuerte Memorandum, the Minister of Trade instructed
the Director of Patents to reject all pending applications for
Philippine registration of signature and other world-famous
trademarks by applicants other than their original owners or users.
The Minister enumerated several internationally-known trademarks
and ordered the Director of Patents to require Philippine
registrants of such marks to surrender their certificates of
registration.
In the Ongpin Memorandum, the Minister of Trade and Industry did
not enumerate well-known trademarks but laid down guidelines for
the Director of Patents to observe in determining whether a
trademark is entitled to protection as a well-known mark in the
Philippines under Article 6bis of the Paris Convention. This was to
be established through Philippine Patent Office procedures in inter
partes and ex parte cases pursuant to the criteria enumerated
therein. The Philippine Patent Office was ordered to refuse
applications for, or cancel the registration of, trademarks which
constitute a reproduction, translation or imitation of a trademark
owned by a person who is a citizen of a member of the Union. All
pending applications for registration of world-famous trademarks by
persons other than their original owners were to be rejected
forthwith. The Ongpin Memorandum was issued pursuant to Executive
Order No. 913 dated October 7, 1983 of then President Marcos which
strengthened the rule-making and adjudicatory powers of the
Minister of Trade and Industry for the effective protection of
consumers and the application of swift solutions to problems in
trade and industry.
Both the Villafuerte and Ongpin Memoranda were sustained by the
Supreme Court in the 1984 landmark case ofLa Chemise Lacoste, S.A.
v. Fernandez. This court ruled therein that under the provisions of
Article 6bis of the Paris Convention, the Minister of Trade and
Industry was the "competent authority" to determine whether a
trademark is well-known in this country.
DOCTRINES:
A "trademark" is defined under R.A. 166, the Trademark Law, as
including "any word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a manufacturer or merchant
to identify his goods and distinguish them from those manufactured,
sold or dealt in by others. This definition has been simplified in
R.A. No. 8293, the Intellectual Property Code of the Philippines,
which defines a "trademark" as "any visible sign capable of
distinguishing goods." 12 In Philippine jurisprudence, the function
of a trademark is to point out distinctly the origin or ownership
of the goods 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.
Today, the trademark is not merely a symbol of origin and
goodwill; it is often the most effective agent for the actual
creation and protection of goodwill. It imprints upon the public
mind an anonymous and impersonal guaranty of satisfaction, creating
a desire for further satisfaction. In other words, the mark
actually sells the goods. 28 The mark has become the "silent
salesman," the conduit through which direct contact between the
trademark owner and the consumer is assured. It has invaded popular
culture in ways never anticipated that it has become a more
convincing selling point than even the quality of the article to
which it refers.
DISPOSITIVE: IN VIEW WHEREOF, the petition is denied and the
Decision and Resolution of the Court of Appeals in CA-G.R. SP No.
28415 are affirmed. SO ORDERED.
ARCE SONS AND COMPANY, petitioner, vs. SELECTA BISCUIT COMPANY,
INC., ET AL., respondents.
G.R. No. L-14761 January 28, 1961 Bautistta Angelo, J.
Facts:
1. Selecta Biscuit Company, Inc., hereinafter referred to as
respondent, filed with the Philippine Patent Office a petition for
the registration of the word "SELECTA" as trade-mark to be use in
its bakery products
a. Allegation: actual use thereof for not less than two months
before said date and that "no other persons, partnership,
corporation or association ... has the right to use said trademark
in the Philippines, either in the identical form or in any such
near resemblance thereto, as might be calculated to deceive."
2.Its petition was referred to an examiner for study who found
that the trade-mark sought to be registered resembles the word
"SELECTA" used by the Acre and Sons and Company, in its milk and
ice cream products
a.so that its use by respondent will cause confusion as to the
origin of their respective goods.
b.he recommended that the application be refused.
c.Upoen Reconsideration: Patent Office ordered the publication
of the application for purposes of opposition.
3.Petitioner filed its opposition thereto on several grounds
a.That the mark "SELECTA" had been continuously used by
petitioner in the manufacture and sale of its products, including
cakes, bakery products, milk and ice cream from the time of its
organization and even prior thereto by its predecessor-in-interest,
Ramon Arce;
b.That the mark "SELECTA" has already become identified with
name of the petitioner and its business
c.That petitioner had warned respondent not to use said mark
because it was already being used by the former, but that the
latter ignored said warning
d.That respondent is using the word "SELECTA" as a trade-mark as
bakery products in unfair competition with the products of
petitioner thus resulting in confusion in trade;
e.That the mark to which the application of respondent refers
has striking resemblance, both in appearance and meaning,
f.That actually a complaint has been filed by the petitioner
against respondent for unfair competition in the Court of First
Instance of Manila
4.Points raised by respondent:
a.That its products are biscuits, crackers, and cookies, wrapped
in cellophane packages, place in tin containers, and that its
products may last a year with out spoilage, while the ice cream,
milk, cakes and other bakery products which petitioner manufactures
last only for two or three days;
b.that the sale and distribution of petitioner's products are on
retail basis, limited to the City of Manila and suburbs, and its
place of business is localized at Azcarraga, corner of Lepanto
Street and at Dewey Blvd., Manila, while that of respondent is on a
wholesale basis, extending throughout the length and breadth of the
Philippines
c.that petitioner's signboard on its place of business reads
'SELECTA' and on its delivery trucks "Selecta, Quality Always,
Restaurant and Caterer, Azcarraga, Dewey Blvd., Balintawak and
Telephone number," in contrast with respondent's signboard on its
factory which reads "Selecta Biscuit Company, Inc.," and on its
delivery trucks "Selecta Biscuit Company, Inc., Tuason Avenue,
Malabon, Rizal, Telephone No. 2-13-27
d.that the business name of petitioner is different from the
business name of respondent
e.that petitioner has only a capital investment of P25,000.00
whereas respondent has a fully paid-up stock in the amount of
P234,000.00 out of the P500,000.00 authorized capital,
f.that the use of the name 'SELECTA' by respondent cannot lead
to confusion in the business operation of the parties.
5.CFI: rendered decision in the unfair competition case
perpetually enjoining respondent from using the name "SELECTA" as a
trade-mark on the goods manufactured and/or sold by it and ordering
it to pay petitioner by way of damages
6.Patent Office: rendered decision dismissing petitioner's
opposition and stating that the registration of the trade-mark
"SELECTA" in favor of applicant Selecta Biscuits Company, Inc. will
not cause confusion or mistake nor will deceive the purchasers as
to the cause damage to petitioner.
a.Director of Patents: He believes that the word as used by the
petitioner functions only to point to the place of business or
location of its restaurant while the same word as used by
respondent points to the origin of the products its manufactures
and sells and he predicates this distinction upon the fact that
while the goods of petitioner are only served within its restaurant
or sold only on special orders in the City of Manila, respondent's
goods are ready-made and are for sale throughout the length and
breadth of the country.
b.He is of the opinion that the use of said trade-mark by
respondent has not resulted in confusion in trade contrary to the
finding of the court a quo. Which of this opinions is correct is
the issue now for determination.
Issue: WON the adoption by the respondent of the word 'SELECTA'
is tantamount to unfair competition.
Held. Yes. The Director of Patents committed an error in
dismissing the opposition of petitioner and in holding that the
registration of the trade-mark 'SELECTA' in favor of respondent
will not cause damage to petitioner.
Ratio:
1. It appears that Ramon Arce, predecessor-in-interest of
petitioner, started his milk business as early as 1933.
a.He sold his milk products in bottles covered with caps on
which the words 'SELECTA FRESH MILK' were inscribed.
b.Expanding his business, he established a store at Lepanto
Street, City of Manila, where he sold, in addition to his products,
ice cream, sandwiches and other food products, placing right in
front of his establishment a signboard with the name 'SELECTA'
inscribed thereon.
c.Special containers made of tin cans with the word 'SELECTA'
written on their covers were used for his products. Bottle with the
same word embossed on their sides were used for his milk
products.
d.The sandwiches he sold and distributed were wrapped in carton
boxes with covers bearing the same name.
e.He used several cars and trucks for delivery purposes on the
sides of which were written the same word.
f.As new products were produced for sale, the same were placed
in containers with the same name written on their covers.
g.After the war, he added to his business such items as cakes,
bread, cookies, pastries, and assorted bakery products.
h.Then his business was acquired by petitioner, a copartnership
organized by his sons, the purposes of which are "to conduct a
first class restaurant business; to engage in the manufacture and
sale of ice cream, milk, cakes and other products; and to carry on
such other legitimate business as may produce profit."
2. The foregoing unmistakably show that petitioner, through its
predecessor-in-interest, had made use of the word "SELECTA" not
only as a trade-name indicative of the location of the restaurant
where it manufactures and sells its products, but as trade-mark is
used.
a.Trade-mark' or trade-name', distinction being highly
technical, is sign, device, or mark by which articles produced are
dealt in by particular person or organization are distinguished or
distinguishable from those produced or dealt in by other."
b.the word 'SELECTA' has been chosen by petitioner and has been
inscribed on all its products to serve not only as a sign or symbol
that may indicate that they are manufactured and sold by it but as
a mark of authenticity that may distinguish them from the products
manufactured and sold by other merchants or businessmen.
c.The Director of Patents, therefore, erred in holding that
petitioner made use of that word merely as a trade-name and not as
a trade-mark within the meaning of the law. The word 'SELECTA', it
is true, may be an ordinary or common word in the sense that may be
used or employed by any one in promoting his business or
enterprise, but once adopted or coined in connection with one's
business as an emblem, sign or device to characterize its products,
or as a badge of authenticity, it may acquire a secondary meaning
as to be exclusively associated with its products and business.
The term 'SELECTA' may be placed at par with the words "Ang
Tibay" which this Court has considered not merely as a descriptive
term within the meaning of the Trade-mark Law but as a fanciful or
coined phrase, or a trade-mark.
a.In that case, this Court found that respondent has constantly
used the term "Ang Tibay" , both as a trade-mark and a tradename,
in the manufacture and sale of slippers, shoes and indoor baseballs
for twenty-two years before petitioner registered it as a
trade-name for pants and shirts
b.The rationale in the Ang Tibay case applies on all fours to
the case of petitioner.
On respondent claims that it adopted the trade-mark 'SELECTA' in
good faith and not precisely to engage in unfair competition with
petitioner.
a.The suggestion that the name 'SELECTA' was chosen by the
organizers of respondent merely as a translation from a Chinese
word "Ching Suan" meaning "mapili" in the dialect is betrayed by
the very manner of its selection, for if the only purpose is to
make an English translation of that word and not to compete with
the business of petitioner, why chose the word 'SELECTA', a Spanish
word, and not "Selected", the English equivalent thereof, as was
done by other well-known enterprises?
b.In the words of petitioner's counsel, "Why with all the words
in the English dictionary and all the words in the Spanish
dictionary and all the phrases that could be coined, should
defendant-appellant (respondent) choose 'SELECTA' if its purpose
was not and is not to fool the people and to damage
plaintiff-appellee?"
c.The explanation given by Sy Hap, manager of the defendant,
that the word 'Selecta' was chosen for its bakery products by the
organizers of said company from the Chinese word 'Ching Suan'
meaning 'mapili', which in English translation , is to say the
least, very weak and untenable.
d.Sy Hap himself admitted that he had known Eulalio Arce, the
person managing plaintiff's business, since 1954
6. All of these circumstances tend to conspire in inducing one
to doubt defendant's motive for using the same word "Selecta" for
its bakery products.
a. To allow the defendant here to use the word "Selecta" in
spite of the fact that this word has already been adopted and
exploited by Ramon Arce and by his family thru the organization of
Arce Sons and Company, for the maintenance of its goodwill, for
which said plaintiff and its predecessor have spent time, effort
and fortune, is to permit business pirates and buccaneers to
appropriate for themselves and to their profit and advantage the
trade names and trade marks of well established merchants with all
their attendant good will and commercial benefit.
006 Philip Morris vs. CA
[G.R. No. 91332 July 16, 1993]
TOPIC: Acquisition of Trademark; Registration
PONENTE: Melo, J.
AUTHOR: Arthur Archie Tiu
NOTES:
Philip Morris is a US company (laws of Virginia) and does
business at the US. The other companies are subsidiaries of Philip
Morris and not doing business in the Philippines.
FACTS:
1.Petitioners Philip Morris, Benson and Hedges Inc., and
Fabriques Tabac Reunies are ascribing whimsical exercise of the
faculty conferred upon magistrates by Section 6, Rule 58 of the
Revised Rules of Court when respondent Court of Appeals lifted the
writ of preliminary injunction it earlier had issued against
Fortune Tobacco Corporation, herein private respondent, from
manufacturing and selling "MARK" cigarettes in the local
market.
2.Petitioners claim that the symbols "MARK VII", "MARK TEN", and
"LARK" must be protected against unauthorized appropriation.
3.respondent alleged that it has been authorized by the Bureau
of Internal Revenue to manufacture and sell cigarettes bearing the
trademark "MARK", and that "MARK" is a common word which cannot be
exclusively appropriated. They also admit to petitioners
certificates of registration with the IPO but sets up affirmative
and special defenses.
4.Petitioners claim that Fortune has no right to manufacture and
sell the cigarettes bearing confusingly similar trademark .
However, they are not doing business in the Philippines
ISSUE(S) Whether or not there has been an invasion on plaintiffs
right to trademark?
Whether or not there is a violation of the international
agreement on protection of trademark?
HELD: No
RATIO:
1.There is no proof whatsoever that any of plaintiffs products
which they seek to protect from any adverse effect of the trademark
applied for by defendant, is in actual use and available for
commercial purposes anywhere in the Philippines.
2.To sustain a successful prosecution of their suit for
infringement, petitioners, as foreign corporations not engaged in
local commerce, rely on Section 21-A of the Trademark Law reading
as follows:
SECTION 21-A. Any foreign corporation or juristic person to
which a mark or trade-name has been registered or assigned under
this act may bring an action hereunder for infringement, for unfair
competition, or false designation of origin and false description,
whether or not it has been licensed to do business in the
Philippines under Act Numbered Fourteen hundred and fifty-nine, as
amended, otherwise known as the Corporation Law, at the time it
brings complaint: Provided, That the country of which the said
foreign corporation or juristic person is a citizen or in which it
is domiciled, by treaty, convention or law, grants a similar
privilege to corporate or juristic persons of the Philippines. (As
inserted by Sec. 7 of Republic Act No. 638.) to drive home the
point that they are not precluded from initiating a cause of action
in the Philippines on account of the principal perception that
another entity is pirating their symbol without any lawful
authority to do so.
3.In view of the explicit representation of petitioners in the
complaint that they are not engaged in business in the Philippines,
it inevitably follows that no conceivable damage can be suffered by
them not to mention the foremost consideration heretofore discussed
on the absence of their "right" to be protected. At any rate, and
assuming in gratia argumenti that respondent court erroneously
lifted the writ it previously issued, the same may be cured by
appeal and not in the form of a petition for certiorari.
CASE LAW/ DOCTRINE:
DISSENTING/CONCURRING OPINION(S):
May dissenting Opinion si Feliciano, J.
Private respondent's claims concerning alleged damages both to
itself and to the Government, which obviously loomed very large in
the mind of the majority here, and of the Court of Appeals when it
lifted the injunction it had issued, appear to me to be extravagant
indeed. Petitioners cannot claim to be entitled to an injunction
which could restrain private respondent from manufacturing and
selling cigarettes completely; petitioner do not pretend to be so
entitled to such a comprehensive injunction. Petitioners seek only
the reinstatement of the original injunction issued by the Court of
Appeals, i.e., one that restrains private respondent from using the
trademark "MARK" on its cigarettes. There is nothing to prevent
private respondent from continuing to manufacture and sell
cigarettes under any of its already existing and registered
trademarks, of which it has several, or under some new and
specially created trademark(s). Realistically, private respondent,
if enjoined, would lose only the value of the packaging material
imprinted with the same trademark (which cigarettes and material
may well be amenable to re-cycling) and the cost of past
advertisements of "MARK" in media, if any. Thus, the apprehension
on the part of the majority which private respondent tried
diligently to foment that the Government would lose many millions
of pesos in tax revenues and that many employees would lose their
jobs, if an injunction is issued is more apparent than real. The
damages private respondent would sustain from reinstatement of the
preliminary injunction are clearly quantifiable in pesos.
My conclusion is that private respondent's claims concerning
damage which it would sustain if the petitioners were granted the
injunction they seek, did not constitute a sufficient basis for
overturning the original decision of the Court of Appeals. The
Resolution of the Court of Appeals granting private respondent's
Motion to Dissolve, in effect disregarded everything that Court had
set out in its original Decision. The mere offer and filing of a
counterbond does not, by itself, provide a sufficient basis for
lifting the preliminary injunction earlier granted. For all the
elements which supported the original issuance of a preliminary
injunction continued to exist. Private respondent's hyperbolic
claims concerning the damages that it and the Government would
sustain by reason of an injunction, had been made earlier both
before the trial court and the Court of Appeals. Finally, it is not
enough to say as private respondent says, that the Court of Appeals
in granting its Motion to Dissolve the preliminary injunction was
merely exercising its discretion; for the Court of Appeals
obviously was also exercising its discretion when it rendered its
original Decision granting the preliminary injunction.
007 E.Y. Industrial Sales v Shen Dar
G.R. No. 184850
TOPIC: First to file rule; Prior and Continuous User
PONENTE: Justice VelascoAUTHOR: Dann. M.
FACTS:
1.EYIS is a domestic corporation engaged in the production,
distribution and sale of air compressors and other industrial tools
and equipment.[5]
2.Petitioner Engracio Yap is the Chairman of the Board of
Directors of EYIS.[6]
3.Respondent Shen Dar is a Taiwan-based foreign corporation
engaged in the manufacture of air compressors.[7]
4.Both companies claimed to have the right to register the
trademark VESPA for air compressors.
5.From 1997 to 2004, EYIS imported air compressors from Shen Dar
through sales contracts. In the Sales Contract dated April 20,
2002,[8] for example, Shen Dar would supply EYIS in one (1) year
with 24 to 30 units of 40-ft. containers worth of air compressors
identified in the Packing/Weight Lists simply as SD-23, SD-29,
SD-31, SD-32, SD-39, SD-67 and SD-68. In the corresponding Bill of
Ladings, the items were described merely as air compressors.[9]
There is no documentary evidence to show that such air compressors
were marked VESPA.
6.On June 9, 1997, Shen Dar filed Trademark Application with the
IPO for the mark VESPA, Chinese Characters and Device for use on
air compressors and welding machines.[10]
7.On July 28, 1999, EYIS filed Trademark Application also for
the mark VESPA, for use on air compressors.[11]
8.On January 18, 2004, the IPO issued COR No. 4-1999-005393 in
favor of EYIS.[12] Thereafter, on February 8, 2007, Shen Dar was
also issued COR No. 4-1997-121492.[13]
9.In the meantime, on June 21, 2004, Shen Dar filed a Petition
for Cancellation of EYIS COR with the BLA.[14] In the Petition,
Shen Dar primarily argued that the issuance of the COR in favor of
EYIS violated Section 123.1 paragraphs (d), (e) and (f) of Republic
Act No. (RA) 8293, otherwise known as the Intellectual Property
Code (IP Code), having first filed an application for the mark.
Shen Dar further alleged that EYIS was a mere distributor of air
compressors bearing the mark VESPA which it imported from Shen Dar.
Shen Dar also argued that it had prior and exclusive right to the
use and registration of the mark VESPA in the Philippines under the
provisions of the Paris Convention.[15]
10.In its Answer, EYIS and Yap denied the claim of Shen Dar to
be the true owners of the mark VESPA being the sole assembler and
fabricator of air compressors since the early 1990s. They further
alleged that the air compressors that Shen Dar allegedly supplied
them bore the mark SD for Shen Dar and not VESPA. Moreover, EYIS
argued that Shen Dar, not being the owner of the mark, could not
seek protection from the provisions of the Paris Convention or the
IP Code.[16]
11.BLA = in favor of EYIS.
12.IPO = affirmed.
13.CA= reversed. The IPO failed to properly apply the provisions
of Sec. 123.1(d) of RA 8293, which prohibits the registration of a
trademark in favor of a party when there is an earlier filed
application for the same mark. Shen Dar should be considered to
have prior use of the mark based on the statements made by the
parties in their respective Declarations of Actual Use. EYIS is a
mere importer of the air compressors with the mark VESPA as may be
gleaned from its receipts which indicated that EYIS is an importer,
wholesaler and retailer, and therefore, cannot be considered an
owner of the mark.[22]
14.Hence, this appeal.
ISSUE: Whether EYIS is the true owner of the mark VESPA
RA 8293 espouses the first-to-file rule as stated under Sec.
123.1(d) which states:
Section 123. Registrability. - 123.1. A mark cannot be
registered if it:
x x x x
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to
deceive or cause confusion. (Emphasis supplied.)
Under this 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 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.
Sec. 134 of the IP Code provides that any person who believes
that he would be damaged by the registration of a mark x x x may
file an opposition to the application. The term any person
encompasses the true owner of the mark. the prior and continuous
user.
Notably, the Court has ruled that the prior and continuous use
of a mark may even overcome the presumptive ownership of the
registrant and be held as the owner of the mark. As aptly stated by
the Court in Shangri-la International Hotel Management, Ltd. v.
Developers Group of Companies, Inc.:[37]
Registration, without more, does not confer upon the registrant
an absolute right to the registered mark. The certificate of
registration is merely a prima facie proof that the registrant is
the owner of the registered mark or trade name. Evidence of prior
and continuous use of the mark or trade name by another can
overcome the presumptive ownership of the registrant and may very
well entitle the former to be declared owner in an appropriate
case.
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.
By itself, registration is not a mode of acquiring ownership.
When the applicant is not the owner of the trademark being applied
for, he has no right to apply for registration of the same.
Registration merely creates a prima facie presumption of the
validity of the registration, of the registrants ownership of the
trademark and of the exclusive right to the use thereof. Such
presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give way
to evidence to the contrary.
Here, the incontrovertible truth, as established by the evidence
submitted by the parties, is that EYIS is the prior user of the
mark. The exhaustive discussion on the matter made by the BLA
sufficiently addresses the issue:
More importantly, the private respondents prior adoption and
continuous use of the mark VESPA on air compressors is bolstered by
numerous documentary evidence consisting of sales invoices issued
in the name of respondent EY Industrial and Bills of Lading.
(Exhibits 4 to 375). Sales Invoice No. 12075 dated March 27, 1995
antedates petitioners date of first use in January 1, 1997
indicated in its trademark application filed in June 9, 1997 as
well as the date of first use in June of 1996 as indicated in the
Declaration of Actual Use submitted on December 3, 2001 (Exhibit
385). The use by respondent-registrant in the concept of owner is
shown by commercial documents, sales invoices unambiguously
describing the goods as VESPA air compressors. Private respondents
have sold the air compressors bearing the VESPA to various
locations in the Philippines, as far as Mindanao and the Visayas
since the early 1990s. We carefully inspected the evidence
consisting of three hundred seventy one (371) invoices and shipment
documents which show that VESPA air compressors were sold not only
in Manila, but to locations such as Iloilo City, Cebu City,
Dumaguete City, Zamboanga City, Cagayan de Oro City, Davao City to
name a few. There is no doubt that it is through private
respondents efforts that the mark VESPA used on air compressors has
gained business goodwill and reputation in the Philippines for
which it has validly acquired trademark rights. Respondent EY
Industrials right has been preserved until the passage of RA 8293
which entitles it to register the same. x x x[38]
On the other hand, Shen Dar failed to refute the evidence cited
by the BLA in its decision. More importantly, Shen Dar failed to
present sufficient evidence to prove its own prior use of the mark
VESPA. We cite with approval the ruling of the BLA:
[Shen Dar] avers that it is the true and rightful owner of the
trademark VESPA used on air compressors. The thrust of [Shen Dars]
argument is that respondent E.Y. Industrial Sales, Inc. is a mere
distributor of the VESPA air compressors. We disagree.
This conclusion is belied by the evidence. We have gone over
each and every document attached as Annexes A, A 1-48 which consist
of Bill of Lading and Packing Weight List. Not one of these
documents referred to a VESPA air compressor. Instead, it simply
describes the goods plainly as air compressors which is type SD and
not VESPA. More importantly, the earliest date reflected on the
Bill of Lading was on May 5, 1997. (Annex A-1). [Shen Dar] also
attached as Annex B a purported Sales Contract with respondent EY
Industrial Sales dated April 20, 2002. Surprisingly, nowhere in the
document does it state that respondent EY Industrial agreed to sell
VESPA air compressors. The document only mentions air compressors
which if genuine merely bolsters respondent Engracio Yaps
contention that [Shen Dar] approached them if it could sell the
Shen Dar or SD air compressor. (Exhibit 386) In its position paper,
[Shen Dar] merely mentions of Bill of Lading constituting
respondent as consignee in 1993 but never submitted the same for
consideration of this Bureau. The document is also not signed by
[Shen Dar]. The agreement was not even drafted in the letterhead of
either [Shen Dar] nor [sic] respondent registrant. Our only
conclusion is that [Shen Dar] was not able to prove to be the owner
of the VESPA mark by appropriation. Neither was it able to prove
actual commercial use in the Philippines of the mark VESPA prior to
its filing of a trademark application in 9 June 1997.[39]
As such, EYIS must be considered as the prior and continuous
user of the mark VESPA and its true owner. Hence, EYIS is entitled
to the registration of the mark in its name.
WHEREFORE, the petition is hereby GRANTED. The CAs February 21,
2008 Decision and October 6, 2008 Resolution in CA-G.R. SP No.
99356 are hereby REVERSED and SET ASIDE. The Decision dated May 25,
2007 issued by the IPO Director General in Inter Partes Case No.
14-2004-00084 and the Decision dated May 29, 2006 of the BLA
Director of the IPO are hereby REINSTATED.
FREDCO MANUFACTURING CORPORATION, petitioner, vs. PRESIDENT AND
FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY), respondents.
DOCTRINE:
Section 4(a) of R.A. No. 166 prohibits the registration of a
mark which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs x x x.
Under Article 8 of the Paris Convention, as well as Section 37
of R.A. No. 166, a trade name of a national of a State that is a
party to the Paris Convention, whether or not the trade name forms
part of a trademark, is protected without the obligation of filing
or registration.
Section 123.1(e) of R.A. No. 8293 now states that a mark which
is considered by the competent authority of the Philippines to be
well-known internationally and in the Philippines, whether or not
it is registered here, cannot be registered by another in the
Philippines.
Section 123.1(e) does not require that the well-known mark be
used in commerce in the Philippines but only that it be well-known
in the Philippines.
While under the territoriality principle a mark must be used in
commerce in the Philippines to be entitled to protection,
internationally well-known marks are the exceptions to this
rule.
FACTS:
1)Fredco Manufacturing Corporation (Fredco) was a domestic
corporation. Its predecessor-in-interest was known as New York
Garments Manufacturing & Export Co., Inc. (New York).
2)On 24 January 1985, New York Garments filed for trademark
registration of the mark Harvard for goods under Class 25 of the
Nice International Classification of Goods and Services. A
Certificate of Registration was issued on 12 December 1988, with a
20-year term subject to renewal at the end of the term.
3)On 25 November 1993, Harvard University was issued Trademark
Registration No. 56561 for Harvard Veritas Shield Design for goods
and services in Classes 16, 18, 21, 25 and 28 (decals, tote bags,
serving trays, sweatshirts, t-shirts, hats and flying discs) of the
Nice International Classification of Goods and Services.
4)In March 2002, Harvard University discovered Fredcos website
www.harvard-usa.com. The website advertises and promotes the brand
name Harvard Jeans USA without Harvard Universitys consent. The
websites main page shows an oblong logo bearing the mark Harvard
Jeans USA, Established 1936, and Cambridge, Massachusetts. [Please
note that Fredco was also manufacturing these logos and actually
placing them on garments which it manufactured]
5)On 20 April 2004, Harvard University filed an administrative
complaint against Fredco before the IPO for trademark infringement
and/or unfair competition with damages.
6)On 10 August 2005 Fredco filed a Petition for Cancellation of
Registration No. 56561 before the Bureau of Legal Affairs of the
Intellectual Property Office (IPO) against Harvard University.
Fredco filed this despite the fact that his registration had
already been cancelled on 30 July 1998 when it had failed to file
the required affidavit of use/non-use for the fifth anniversary of
the marks registration.
7)The 22 December 2006 decision of the Bureau of Legal Affairs
(BLA) of the IPO cancelled Harvard Universitys registration of the
mark Harvard under Class 25. Harvard then appealed to Office of the
Director General of the IPO. And the Director General reversed the
decision of the BLA.
8)Fredco appealed to CA, but CA affirmed the decision of the
Director General and even ruled that Harvard University was able to
substantiate that it appropriated and used the marks Harvard and
Harvard Veritas Shield Symbol in Class 25 way ahead of Fredco and
its predecessor New York Garments.
9)Fredco appealed to the SC.
ISSUE: Who has a better right over the mark Harvard? Answer:
Harvard University
HELD: There are two compelling reasons why Fredcos petition must
fail.
First, Fredcos registration of the mark Harvard and its
identification of origin as Cambridge, Massachusetts falsely
suggest that Fredco or its goods are connected with Harvard
University, which uses the same mark Harvard and is also located in
Cambridge, Massachusetts. This can easily be gleaned from the
following oblong logo of Fredco that it attaches to its clothing
line.
Fredcos registration of the mark Harvard should not have been
allowed because Section 4(a) of R.A. No. 166 prohibits the
registration of a mark which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs x x
x.
Fredco offered no explanation to the Court of Appeals or to the
IPO why it used the mark Harvard on its oblong logo with the words
Cambridge, Massachusetts, Established in 1936, and USA. Fredco now
claims before this Court that it used these words to evoke a
lifestyle or suggest a desirable aura of petitioners clothing
lines. Fredcos belated justification merely confirms that it sought
to connect or associate its products with Harvard University,
riding on the prestige and popularity of Harvard University, and
thus appropriating part of Harvard Universitys goodwill without the
latters consent.
Second, the Philippines and the United States of America are
both signatories to the Paris Convention for the Protection of
Industrial Property (Paris Convention).
Articles 6bis and 8 of the Paris Convention state:
ARTICLE 6bis
(i) The countries of the Union undertake either administratively
if their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration and to prohibit the
use of a trademark which constitutes a reproduction, imitation or
translation, liable to create confusion or a mark considered by the
competent authority of the country as being already the mark of a
person entitled to the benefits of the present Convention and used
for identical or similar goods. These provisions shall also apply
when the essential part of the mark constitutes a reproduction of
any such well-known mark or an imitation liable to create confusion
therewith.
ARTICLE 8
A trade name shall be protected in all the countries of the
Union without the obligation of filing or registration, whether or
not it forms part of a trademark. (Emphasis supplied)
The Philippines is obligated to assure nationals of countries of
the Paris Convention that they are afforded an effective protection
against violation of their intellectual property rights in the
Philippines in the same way that their own countries are obligated
to accord similar protection to Philippine nationals.
Article 8 of the Paris Convention has been incorporated in
Section 37 of R.A. No. 166. Under Philippine law, a trade name of a
national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is
protected without the obligation of filing or registration.
Harvard is the trade name of the world famous Harvard
University, and it is also a trademark of Harvard University. Under
Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the
Philippines of its trade name Harvard even without registration of
such trade name in the Philippines. This means that no educational
entity in the Philippines can use the trade name Harvard without
the consent of Harvard University. Likewise, no entity in the
Philippines can claim, expressly or impliedly through the use of
the name and mark Harvard, that its products or services are
authorized, approved, or licensed by, or sourced from, Harvard
University without the latters consent.
Section 123.1(e) of R.A. No. 8293 now categorically states that
a mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, cannot be
registered by another in the Philippines. Section 123.1(e) does not
require that the well-known mark be used in commerce in the
Philippines but only that it be well-known in the Philippines. To
be protected therefore all that is required is that the mark is
well-known internationally and in the Philippines for identical or
similar goods, whether or not the mark is registered or used in the
Philippines.
While under the territoriality principle a mark must be used in
commerce in the Philippines to be entitled to protection,
internationally well-known marks are the exceptions to this
rule.
In Mirpuri, 318 SCRA 516 (1999), the Court ruled that the
essential requirement under Article 6bis of the Paris Convention is
that the trademark to be protected must be well-known in the
country where protection is sought. The Court declared that the
power to determine whether a trademark is well-known lies in the
competent authority of the country of registration or use. The
Court then stated that the competent authority would either be the
registering authority if it has the power to decide this, or the
courts of the country in question if the issue comes before the
courts.
-----End-----
Rule 102 of the Rules and Regulations on Trademarks, Service
Marks, Trade Names and Marked or Stamped Containers, which
implement R.A. No. 8293, provides:
Rule 102. Criteria for determining whether a mark is well-known.
In determining whether a mark is well-known, the following criteria
or any combination thereof may be taken into account:
a)the duration, extent and geographical area of any use of the
mark, in particular, the duration, extent and geographical area of
any promotion of the mark, including advertising or publicity and
the presentation, at fairs or exhibitions, of the goods and/or
services to which the mark applies;
b)the market share, in the Philippines and in other countries,
of the goods and/or services to which the mark applies;
c)the degree of the inherent or acquired distinction of the
mark;
d)the quality-image or reputation acquired by the mark;
e)the extent to which the mark has been registered in the
world;
f)the exclusivity of registration attained by the mark in the
world;
g)the extent to which the mark has been used in the world;
h)the exclusivity of use attained by the mark in the world;
i)the commercial value attributed to the mark in the world;
j)the record of successful protection of the rights in the
mark;
k)the outcome of litigations dealing with the issue of whether
the mark is a well-known mark; and
l)the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services
and owned by persons other than the person claiming that his mark
is a well-known mark. (Emphasis supplied)
04 COFFEE PARTNERS, INC., Petitioner, vs. SAN FRANCISCO COFFEE
& ROASTERY, INC., Respondent.
G.R. No. 169504, March 3, 2010
PONENTE: CARPIO, J.:
NATURE: petition for review
AUTHOR: Loi La Chica
NOTES:
FACTS:
1.Coffee Partners, Inc. is a local corporation engaged in the
business of establishing and maintaining coffee shops in the
country. It registered with the Securities and Exchange Commission
(SEC) in January 2001.
2.It has a franchise agreement with Coffee Partners Ltd. (CPL),
a business entity organized and existing under the laws of British
Virgin Islands, for a non-exclusive right to operate coffee shops
in the Philippines using trademarks designed by CPL such as "SAN
FRANCISCO COFFEE."
3.San Francisco Coffee & Roastery is a local corporation
engaged in the wholesale and retail sale of coffee. It registered
with the SEC in May 1995. It registered the business name "SAN
FRANCISCO COFFEE & ROASTERY, INC." with the DTI in June 1995.
It built a customer base that included Figaro Company, Tagaytay
Highlands, Fat Willys, and other coffee companies.
4.1998 - R formed a joint venture company with Boyd Coffee USA
under the company name Boyd Coffee Company Philippines, Inc.
(BCCPI). BCCPI engaged in the processing, roasting, and wholesale
selling of coffee. Respondent later embarked on a project study of
setting up coffee carts in malls and other commercial
establishments in Metro Manila.
5.June 2001 - respondent discovered that petitioner was about to
open a coffee shop under the name "SAN FRANCISCO COFFEE" in Libis,
QC
6.It caused confusion in the minds of the public as it bore a
similar name and it also engaged in the business of selling
coffee.
7.R sent a letter to petitioner demanding that the latter stop
using the name "SAN FRANCISCO COFFEE." Respondent also filed a
complaint with the BLA-IPO for infringement and/or unfair
competition with claims for damages.
8.P answered:
-Denied the allegations in the complaint
-Filed with the IPO applications for registration of the mark
"SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for
class 35 in 2000
-Maintained its mark could not be confused with respondents
trade name because of the notable distinctions in their
appearances
-Argued that R stopped operating under the trade name "SAN
FRANCISCO COFFEE" when it formed a joint venture with Boyd Coffee
USA.
-R did not cite any specific acts that would lead one to believe
petitioner had, through fraudulent means, passed off its mark as
that of R, or that it had diverted business away from
respondent.
9.Mr. David Puyat, president of Coffee Partners, testified that
the coffee shop in Libis, Quezon City opened sometime in June 2001
and that another coffee shop would be opened in Glorietta Mall,
Makati City. It was pursuant to a franchise agreement executed in
January 2001 with CPL, a British Virgin Island Company owned by
Robert Boxwell.
10.Mr. Boxwell attested that the coffee shop "SAN FRANCISCO
COFFEE" has branches in Malaysia and Singapore. He added that he
formed CPL in 1997 along with two other colleagues, Shirley Miller
John and Leah Warren, who were former managers of Starbucks Coffee
Shop in the United States. He said they decided to invest in a
similar venture and adopted the name "SAN FRANCISCO COFFEE" from
the famous city in California where he and his former colleagues
once lived and where special coffee roasts came from.
11.BLA-IPO: Ps trademark infringed on respondents trade
name.
-The right to the exclusive use of a trade name with freedom
from infringement by similarity is determined from priority of
adoption: (Respondent registered in 1995, Petitioner registered in
2001 in the Ph. and 1997 in other countries)
-R did not abandon the use of its trade name, continuously used
its trade name in connection with the purpose for which it was
organized
-R continued making plans and doing research on the retailing of
coffee and the setting up of coffee carts
-Use of the trademark "SAN FRANCISCO COFFEE" will likely cause
confusion because of the exact similarity in sound, spelling,
pronunciation, and commercial impression which is the dominant
portion of Rs trade name and Ps trademark.
-No significant difference resulted even with a diamond-shaped
figure with a cup in the center in P's trademark because greater
weight is given to words the medium consumers use in ordering
coffee products.
-P is absolved from unfair competition It adopted the trademark
because it was authorized by its franchisor. No evidence of intent
to defraud on the part of P.
-Rs claim of actual damages (profit loss) dismissed.
12.Both parties moved for partial reconsideration.
-P: protested the finding of infringement
-R: questioned the denial of actual damages.
13.BLA-IPO: denied both
14.ODG-IPO:
-Reversed BLA-IPO
-R had stopped using its trade name after it entered into a
joint venture with Boyd Coffee USA in 1998
-P continuously used the trademark since June 2001 when it
opened its first coffee shop in Libis, QC.
-Used in good faith and a prior user had stopped using such
15.CA: Decision of Office of the Director Gen. IPO set aside.
Reinstated the BLA-IPO. Denied Coffee Partners MR and San
Franciscos motion for partial reconsideration.
ISSUE
Whether petitioners use of the trademark "SAN FRANCISCO COFFEE"
constitutes infringement of respondents trade name even if the
trade name is not registered with the IPO? YES
HELD
The petition has no merit. There is infringement of trade name.
Republic Act No. 8293 (RA 8293) dispensed with registration of a
trade name with the IPO as a requirement for the filing of an
action for infringement. All that is required is that the trade
name is previously used in trade or commerce in the
Philippines.
RATIO:
1.The law protects trade names from infringement even if not
registered with the IPO.
2.R never abandoned the use of its trade name as evidenced by
its letter to petitioner demanding immediate discontinuation of the
use of its trademark and by the filing of the infringement case. It
continued to make plans and do research on the retailing of coffee
and the establishment of coffee carts, which negates
abandonment.
3.Petitioners trademark is confusingly similar to respondents
trade name.
4.CA found that while R stopped using its trade name in its
business of selling coffee, it continued to import and sell coffee
machines, one of the services for which the use of the business
name has been registered.
5.What constitutes infringement of an unregistered trade name
(Prosource International, Inc. v. Horphag Research Management):
(1) The trademark being infringed is registered in the IPO;
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.
6.Clearly, a trade name need not be registered with the IPO
before an infringement suit may be filed by its owner against the
owner of an infringing trademark. All that is required is that the
trade name is previously used in trade or commerce in the
Philippines.
7.Section 22 of Republic Act No. 166, as amended, required
registration of a trade name as a condition for the institution of
an infringement suit. However, RA 8293, which took effect on 1
January 1998, has dispensed with the registration requirement.
8.In infringement cases, precedents must be evaluated in the
light of each particular case.
9.Two tests in determining similarity and likelihood of
confusion:
Dominancy test focuses on the similarity of the prevalent
features of the competing trademarks that might cause confusion and
deception, thus constituting infringement. If the competing
trademark contains the main, essential, and dominant features of
another, and confusion or deception is likely to result,
infringement occurs. 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.
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 (focusing 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).
10.Ps "SAN FRANCISCO COFFEE" trademark is a clear infringement
of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade
name.
11.The descriptive words "SAN FRANCISCO COFFEE" are precisely
the dominant features of respondents trade name. They are engaged
in the same business of selling coffee, whether wholesale or
retail. The likelihood of confusion is higher
12.R 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.
13.Geographic or generic words are not, per se, subject to
exclusive appropriation. It is only the combination of the words
"SAN FRANCISCO COFFEE," which is respondents trade name in its
coffee business, that is protected against infringement
14.Law and equity considerations hold petitioner liable for
infringement.
CASE LAW/DOCTRINE
NOTE
SEC. 165.2
(a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected,
even prior to or without registration, against any unlawful act
committed by third parties.
(b) In particular, any subsequent use of a trade name by a third
party, whether as a trade name or a mark or collective mark, or any
such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
017 KABUSHI KAISHA ISETAN vs. IAC
TOPIC: TRADEMARK
PONENTE: GUTIERREZ, JR., J.:AUTHOR:
NOTES:
FACTS:
Petitioner Kabushi Kaisha Isetan is a foreign corporation
organized and existing under the laws of Japan with business
address at 14-1 Shinjuku, 3-Chrome, Shinjuku, Tokyo, Japan. It is
the owner of the trademark "Isetan" and the "Young Leaves
Design".
The petitioner alleges that it first used the trademark Isetan
on November 5, 1936. It states that the trademark is a combination
of "Ise" taken from "Iseya" the first name of the rice dealer in
Kondo, Tokyo in which the establishment was first located and "Tan"
which was taken from "Tanji Kosuge the First".
The petitioner claims to have expanded its line of business
internationally from 1936 to 1974. The trademark "Isetan" and
"Young Leaves Design" were registered in Japan covering more than
34 classes of goods. On October 3, 1983, the petitioner applied for
the registration of "Isetan" and "Young Leaves Design" with the
Philippine Patent Office under Permanent Serial Nos. 52422 and
52423 respectively.
Private respondent, Isetann Department Store, on the other hand,
is a domestic corporation organized and existing under the laws of
the Philippines with business address at 423-430 Rizal Avenue, Sta.
Cruz, Manila, Philippines.
It claims that it used the word "Isetann" as part of its
corporated name and on its products particularly on shirts in
Joymart Department Store sometime in January 1979. The suffix
"Tann" means an altar, the place of offering in Chinese and this
was adopted to harmonize the corporate name and the corporate logo
of two hands in cup that symbolizes the act of offering to the
Supreme Being for business blessing.
On May 30, 1980 and May 20, 1980, the private respondent
registered "Isetann Department Store, Inc." and Isetann and Flower
Design in the Philippine Patent Office under SR. Reg. No. 4701 and
4714, respectively, as well as with the Bureau of Domestic Trade
under Certificate of Registration No. 32020.
On November 28, 1980, the petitioner filed with the Phil. Patent
Office two (2) petitions for the cancellation of Certificates of
Supplemental Registration Nos. SR-4714 and SR-4701 stating among
others that:
. . . except for the additional letter "N" in the word "Isetan",
the mark registered by the registrant is exactly the same as the
trademark ISETAN owned by the petitioner and that the young leaves
registered by the registrant is exactly the same as the young
leaves design owned by the petitioner.
The petitioner further alleged that private respondent's act of
registering a trademark which is exactly the same as its trademark
and adopting a corporate name similar to that of the petitioner
were with the illegal and immoral intention of cashing in on the
long established goodwill and popularity of the petitioner's
reputation, thereby causing great and irreparable injury and damage
to it (Rollo, p. 521). It argued that both the petitioner's and
respondent's goods move in the same channels of trade, and ordinary
people will be misled to believe that the products of the private
respondent originated or emanated from, are associated with, or are
manufactured or sold, or sponsored by the petitioner by reason of
the use of the challenged trademark.
The petitioner also invoked the Convention of Paris of March 20,
1883 for the Protection of Industrial Property of which the
Philippines and Japan are both members. The petitioner stressed
that the Philippines' adherence to the Paris Convention committed
to the government to the protection of trademarks belonging not
only to Filipino citizens but also to those belonging to nationals
of other member countries who may seek protection in the
Philippines.
Meanwhile, the petitioner also filed with the Securities and
Exchange Commission (SEC) a petition to cancel the mark "ISETAN" as
part of the registered corporate name of Isetann Department Store,
Inc. this petition was denied in a decision rendered by SEC's
Hearing Officer, Atty. Joaquin C. Garaygay.
On appeal, the Commission reversed the decision of the Hearing
Officer on February 25, 1986. It directed the private respondent to
amend its Articles of Incorporation within 30 days from finality of
the decision.
On April 15, 1986, however, respondent Isetann Department Store
filed a motion for reconsideration. And on September 10, 1987, the
Commission reversed its earlier decision dated February 25, 1986
thereby affirming the decision rendered by the Hearing Officer on
May 17, 1985. The Commission stated that since the petitioner's
trademark and tradename have never been used in commerce on the
petitioner's products marketed in the Philippines, the trademark or
tradename have not acquired a reputation and goodwill deserving of
protection from usurpation by local competitors.
On January 24, 1986, the Director of Patents after notice and
hearing rendered a joint decision in Inter Partes Cases Nos. 1460
and 1461, dismissing the petition.
On appeal, the IAC dismissed the appeal on the ground that it
was filed out of time.
ISSUE(S): whether or not ISETANN Violates the Philippine
Trademark Law.
HELD:
1.NO,
RATIO:
A fundamental principle of Philippine Trademark Law is that
actual use in commerce in the Philippines is a pre-requisite to the
acquisition of ownership over a trademark or a tradename.
The trademark Law, Republic Act No. 166, as amended, under which
this case heard and decided provides:
SEC. 2. What are registrable.- Trademark, tradenames and service
marks owned by persons, corporation, partnerships or associations
domiciled in the Philippines and by persons, corporations,
partnerships or associations domicided in any foreign country may
be registered in accordance with the provisions of this Act:
Provided, That said trademarks, tradenames, or service marks are
actually in use in commerce and services not less than two months
in the Philippines before the time the applications for
registration are filed: And provided, further, That the country of
which the applicant for registration is a citizen