CASE #: 10

LIM HOA vs DIRECTOR OF PATENTSG.R. No.L-8072.October 31,1956.FACTS:Lim Hoa, herein petitioner, filed an application for the registration of a trademark, consisting of a representation oftwo midget roosters in anattitude of combat with the word Bantam printed above them.The trademark being registered covered products consistingof food seasonings.Agricom Development Corp.,a domestic corporation, opposed the application on several grounds, among others, that the trademark sought to be registered was confusingly similar to its registered mark, consisting of a pictorial representation of a hen with the words Hen Brand and Marca Manok, which brand or mark was also used on a food seasoning product, before the use of the trademark by the applicant.Agricom likewise asserted that the trademark hadbeen adopted by its predecessor, the Advincula Family, since 1946 for saidfood seasoning.The Director of Patents disallowed the registrationof the Lim Hoas trademark becauseit would likelycause confusionor mistake or deceive purchasers.Hence, this present appeal by the petitioner.ISSUE: Whether or not there is similarity between the two trademarks as to cause confusion or mistake in the mind of the public.HELD:Yes.It has been consistently held that the questionof infringement of a trademark is to be determined by the test ofdominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate.The danger of confusion in trademarks and brands which are similar may not be so great in the case of commodities or articles of relatively great value, for the prospective buyer, generally the head of the family or a businessman, before making the purchase, reads the pamphlets and all literature available, describing the article he is planning to buy, and perhaps even makes comparisons with similar articles in the market.But in the sale of a food seasoning product, a kitchen article of everyday consumption, the circumstances are far different. Said product is generally purchased by cooks and household help, sometimes illiterate who are guided by pictorial representations and the sound of the word descriptive of said representation. The two roosters appearing in the trademark of the applicant and the hen appearing on the trademark of the Oppositor although of different sexes, belong to the same family of chicken, known as manok in all the principal dialects of the Philippines, and when a cook or a household help or even a housewife buys a food seasoning product for the kitchen the brand of Manok or Marca Manok would most likely be upper most in her mind and would influence her in selecting the product, regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even deception.

CASE #: 11JOSE P. STA. ANA vs. FLORENTINO MALIWAT and TIBURCIO S. EVALLEG.R.No.L-23023August31,1968FACTS:In 1962, Florentino Maliwat, respondent, filed an application for the registration of the trademarkFLORMANN, which is used on shirts, pants, jackets and shoes for ladies, men and children.He claimed that such mark was first used in commerce since the early part of that year.However, the claim of first use wasamended to 1953.Jose Sta. Ana, petitioner, in same year 1962, filed an application for the registration of the trade name FLORMEN SHOEMANUFACTURERS (SHOE MANUFACTURERS, disclaimed), which is used in the business of manufacturing ladies and childrens shoes.His claim offirst use incommerce of said tradename is 1959.In view ofthe admittedly confusing similarity between the trademark Flormann and the trade name Flormen, the Director of Patents declared interference.After trial, theDirector gave duecourse Maliwatsapplication and denied thatof Sta. Ana.In this present petition, Sta. Ana avers that the Director of Patents erred in declaring that Maliwat has a prior right to the use of his trademarkon shoes andsuch right may becarried back to the year1953 when Maliwat startedhis tailoring and haberdashery business.ISSUE: Whether or not Florentino Maliwat has aprior right to use the trademark Flormann.HELD:Yes.An application for registration is not bound by the date of first use asstated by him in his application, but is entitled to carry back said stated date of first use to a prior date by proper evidence; but in order to show an earlier date of use, he is then under a heavy burden, and his proof must be clear and convincing. In the case at bar, the proof of date of first use (1953), earlier than that alleged in respondent Maliwat's application (1962), can be no less than clear and convincing because thefact was stipulated and no proof was needed. The law does not require that the articles of manufacture of the previous user and the late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in theprincipal register.Therefore, whether or not shirts andshoes have the same descriptive properties, or whether or not it is the prevailing practice or the tendency of tailors and haberdashers to expand their business into shoes making, are not controlling. The meat of the matter is the likelihood of confusion, mistake or deception upon purchasers of the goods of the junior user of the mark and the goods manufactured by the previous user. Here, the resemblance or similarity of the mark FLORMANN and the name FLORMEN and the likelihood ofconfusion, one to the other, is admitted; therefore, the prior adopter, respondent Maliwat, has the better right to the use of the mark.

CASE #: 12ACOJE MINING CO., INC., vs. THE DIRECTOR OF PATENTS,G.R. No. L-28744 April 29, 1971

Facts:Acoje Mining Co., (petitioner) filed an application for registration of the trademark Lotus to be used on its soy sauceproduct.On the other hand, Philippine Refining Co., (PRC), another domestic corporation, was also usingthe sametrademark Lotus on its edible oil.The Chief of the trademark examiner rejected the application of Acoje due to itsconfusing similaritywith that of the trademark already registered in favour of the PRC.The Director of Patentsupheld the view of the trademark examiner on the ground that while there is a difference between soy sauce andedible oil and there were dissimilarities in the trademarks, still the close relationship of the products, soy sauce andedible oil, is such that purchasers would be misled into believing that they have a common source.Hence, thispresent petition for review.Issue:Whether or not Acoje Mining Co., may register for the purpose of advertising its product, soy sauce, the trademarkLotus.Held:The Court answered in theaffirmative and the decisionof the Director of Patents should be reversed.Thedeterminative factor in a contest involving registration of trademark is not whether the challenging mark wouldactually cause confusion or deception of the purchasers but whether the use of the mark would likely causeconfusion or mistake on the part of the buying public.The law does not require that the competing trademarks mustbe so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that thesimilarity between the two labels, is such that there is a possibility or likelihood of the purchaser of the older brandmistaking the newer brand for it.In the present case, there is quite difference between soy sauce and edible oil.If one is in the market for theformer, he is not likely topurchase the latter just because of the trademark Lotus.There is no denying thatthepossibility of confusion is remote considering the difference in the type used, the coloring, the petitioners trademarkbeing in yellow and red while that of the PRC being in green and yellow, and the much smaller size of petitionerstrademark.G.R. No. L-44707 August 31, 1982HICKOK MANUFACTURING CO., INC.,petitioner, vs.COURT OF APPEALS and SANTOS LIM BUN LIONG,respondents.TEEHANKEE,J.:Facts:Petitioner Hickok Manufacturing Co., (Hickok), is a foreign corporation, which the registered the trademark HICKOKfor its diverse articlesof leather wallets, key cases, money folds made of leather, belts, mens briefs, neckties,handkerchiefs and mens socks.On the other hand,Lim Bun Liong (respondent) is registrant of a trademark of thesame name HICKOK for its Marikina shoes.Hickok filed a petition to cancel the respondents registration of thetrademark.The Director of Patent granted the petition of Hickok, but on appeal the Court of Appeals reversed thedirectors decision and dismissedHickoks original petition for cancellation on the ground that the trademarks ofpetitioner and that of the registrant were different in design and coloring of, as well as in the words on the ribbons.Hence, this present appeal.Issue:Whether or not theregistration of Lim Bun Liongs trademark for his Hickok Marikina shoes can be allowed.Held:The Court affirmed the appellate courts decision.While the law does not require that the competing trademarks beidentical, the two marks must be considered in their entirety, as they appear in the respective labels, in relation tothe goods to which they are attached.Emphasis should be on the similarity of the products involved and not on the arbitrary classification orgeneral description of their properties or characteristics and that the mere fact that one person has adopted andused a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelatedarticles of a different kind.Petitioner, a foreign corporation registered the trademark for its diverse articles of men'swear such as wallets, belts and men's briefs which are all manufactured here in the Philippines but are so labelled asto give the misimpression that the said goods are of foreign (stateside) manufacture and that respondent secured itstrademark registration exclusively for shoes (which neither petitioner nor the licensee ever manufactured or tradedin) and which are clearly labelled in block letters as "Made in Marikina, Rizal, Philippines," no error can be attributedto the appellate court in upholding respondent's registration of the same trademark for his unrelated and non-competing product of Marikina shoes

G.R. No. 75067 February 26, 1988PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G.,petitioner, vs.THE INTERMEDIATE APPELLATE COURTand MIL-OROMANUFACTURING CORPORATION,respondents.GUTIERREZ, JR.,J.:Facts:Petitioner Puma Sportschuhfabriken, a foreign corporation duly organized under the existing laws of Germany, is amanufacturer and producer of Puma products.It filed a complaint for infringement of patent or trademark againstMil-Oro Manufacturing Corporation, which is a registrant of the trademark Puma and Device, with a prayer forissuance of writ of preliminary injunction.The trial courtgranted petitioners prayer and ordering Mil-Oro to restrainfrom using the trademark PUMAand to withdraw from themarket all products bearingthe same trademark.Onappeal, the CA reversed the order of the trial court on the ground that petitioner has no legal capacity to sue.Hence,this present petition for review.Both parties in this case maintainthat they are the rightful ownersof the trademarkPUMA for socks and belts such that both partiesseek the cancellation of the trademark ofthe other.Issue:Whether or not petitioner has legal capacity to sue in this jurisdiction.Held:The Court holds that the petitioner had the legal capacity to file an action in this jurisdiction.As early as 1927, theCourt was, and it still is, of the view that foreign corporation not doing business in the Philippines needs no license tosue before Philippine courtsfor infringement of trademark and unfair competition.A foreign corporation which hasnever done any business in the Philippines and which is unlicensed and unregistered to do business here, but iswidely and favorably known in the Philippines through the use therein of its products bearing its corporate and tradename, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof fromorganizing a corporation therein bearing the same name as the foreign corporation, when it appears that they havepersonal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of theproposed domestic corporation is to deal and trade in thesame goods as those of the foreign corporation