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G.R. No. 113388. September 5, 1997.]  ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION, respondents.

 Petitioner’s claim: 

Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of Letters PatentNo. UM-4609 for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New United

Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). Petitioner alleged that (a) the utility model covered by the letterspatent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the letters patent did not comply with therequirements of Sec. 14, RA No. 165, as amended; (c) respondent Melecia Madolaria was not the original, true and actual inventor nor did she deriveher rights from the original, true and actual inventor of the utility model covered by the letters patent; and, (d) the letters patent was secured by means

of fraud or misrepresentation. In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by the letterspatent of respondent had been known or used by others in the Philippines for more than one (1) year before she filed her application for letters patenton 9 December 1979; (b) the products which were produced in accordance with the utility model covered by the letters patent had been in public useor on sale in the Philippines for more than one (1) year before the application for patent therefor was filed.

 Respondent’s claim: 

Private respondent, through one witness, Rolando Madolaria, who testified, among others, that he was the General Supervisor of theUNITED FOUNDRY in the foundry, machine and buffing section; that in his early years with the company, UNITED FOUNDRY was engaged in

the manufacture of different kinds of gas stoves as well as burners based on sketches and specifications furnished by customers; that the companymanufactured early models of single-piece types of burners where the mouth and throat were not detachable; that in the latter part of 1978 respondentMelecia Madolaria confided in him that complaints were being brought to her attention concerning the early models being manufactured; that he wasthen instructed by private respondent to cast several experimental models based on revised sketches and specifications; that private respondent again

made some innovations; that after a few months, private respondent discovered the solution to all the defects of the earlier models and, based on herlatest sketches and specifications, he was able to cast several models incorporating the additions to the innovations introduced in the models. Varioustests were conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. RolandoMadolaria testified that private respondent decided to file her application for utility model patent in December 1979. 

 Issue:

Whether to grant the application for cancellation of the issued patent utility model to Melecia Madolaria for an „LPG Burner‟ 

 Ruling:

NO. In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an “LPG Burner” on 22 July 1981, the Philippine Patent Office foundher invention novel and patentable. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that thepatentee was the original and first inventor.

On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56 denying the petition for cancellation and holding thathe evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. Not one of the

various pictorial representations of business clearly and convincingly showed that the devices presented by petitioner was identical or substantiallyidentical with the utility model of the respondent. The decision also stated that even assuming that the brochures depicted clearly each and everyelement of the patented gas burner device so that the prior art and patented device became identical although in truth they were not, they could not

serve as anticipatory bars for the reason that they were undated. The dates when they were distributed to the public were not indicated and, thereforewere useless prior art references. The records and evidence also do not support the petitioner‟s contention that Letters Patent No. UM-4609 waobtained by means of fraud and/or misrepresentation. No evidence whatsoever was presented by petitioner to show that the then applicant MeleciaMadolaria withheld with intent to deceive material facts which, if disclosed, would have resulted in the refusal by the Philippine Patent Office to

issue the Letters Patent under inquiry.The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the Court of Appeals, are conclusive on

this Court when supported by substantial evidence. Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions othe Patent Office and the Court of Appeals.

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G.R. No. 91332. July 16, 1993.]  PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A., petitioners, vs. THECOURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents.

 Petitioner’s Claim: 

Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac Reunies, S.A., are ascribing whimsical exerciseof 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.

Banking on the thesis that petitioners' respective symbols "MARK VII", "MARK TEN", and "LARK", also for cigarettes, must beprotected against unauthorized appropriation, petitioners twice solicited the ancillary writ in the course the main suit for infringement but the court o

origin was unpersuaded.

 Respondent’s Claim: 

Fortune Tobacco Corporation admitted petitioners' certificates of registration with the Philippine Patent Office subject to the affirmative

and special defense on misjoinder of party plaintiffs. Private respondent alleged further that it has been authorized by the Bureau of Internal Revenueto manufacture and sell cigarettes bearing the trademark "MARK", and that "MARK" is a common word which cannot be exclusively appropriated.

 Issue:

Whether to grant the petition of Philip Morris questioning the lifting of the preliminary injunction by the Court of Appeals

 Held:

NO. In point of adjective law, the petition has its roots on a remedial measure which is but ancillary to the main action for infringement still

pending factual determination before the court of origin. It is virtually needless to stress the obvious reality that critical facts in an infringement caseare not before us more so when even Justice Feliciano's opinion observes that "the evidence is scanty" and that petitioners "have yet to submit copieor photographs of their registered marks as used in cigarettes" while private respondent has not, for its part, "submitted the actual labels or packagingmaterials used in selling its "Mark" cigarettes." Petitioners therefore, may not be permitted to presume a given state of facts on their so called right to

the trademarks which could be subjected to irreparable injury and in the process, suggest the fact of infringement. Such a ploy would practicallyplace the cart ahead of the horse.

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 [G.R. No. 112012. April 4, 2001.] SOCIETE DES PRODUITS NESTLE v. CA and CFC CORPYNARES-SANTIAGO, J.:

FACTS: CFC Corp filed with the BPTTT an application for the registration of the trademark FLAVOR MASTER for instant coffee. Societe Des

Produits Nestle, a Swiss company registered under Swiss laws and domiciled in Switzerland, filed an Opposition claiming that the trademark isconfusingly similar to its trademarks for coffee and coffee extracts: MASTER ROAST and MASTER BLEND.

Likewise, an opposition was filed by Nestle Philippines, a Philippine corp and a licensee of Societe. Nestle claimed that the use by CFC of thetrademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the

purchasing public a connection in the business of Nestle, as the dominant word present in the 3 trademarks is MASTER; or that the goods of CFCmight be mistaken as having originated from the latter.

BPTTT denied CFC‟s application for registration applying the dominancy test. CA reversed applying the holistic test.

ISSUE: Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND and thusshould be denied registration.

HELD: YES applying the dominancy test. 

  Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons to purchase the one supposing i

to be the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and theHolistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause

confusion or deception and thus constitute infringement. The holistic test mandates that the entirety of the marks in question must be consideredin determining confusing similarity.

  In infringement or trademark cases in the Philippines, particularly in ascertaining whether one trademark is confusingly similar to or is a

colorable imitation of another, no set rules can be deduced. Each case must be decided on its own merits.

  The CA held that the test to be applied should be the totality or holistic test, since what is of paramount consideration is the ordinary purchaserwho is, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and is therefore less

inclined to closely examine specific details of similarities and dissimilarities between competing products.

  This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive

household products as instant coffee, and would therefore be "less inclined to closely examine specific details of similarities and dissimilaritiesbetween the two competing products, then it would be less likely for the ordinary p urchaser to notice that CFC‟s trademark FLAVOR MASTERcarries the colors orange and mocha while that of Nestle‟s uses red and brown. The application of the totality or holistic test is improper sincethe ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an

inexpensive and common household item.

  Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusingsimilarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in

controversy as they are encountered in the realities of the marketplace. The totality or holistic test only relies on visual comparison between twotrademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressionsbetween the two trademarks.

  This Court agrees with the BPTTT when it applied the test of dominancy. The word MASTER is the dominant feature of opposer‟s mark. It is

printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. Further, the word MASTER haalways been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. Robert Jaworski and

Atty. Ric Puno, the personalities engaged to promote the product, are given the titles Master of the Game and Master of the Talk Show,respectively. In due time, because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTERwith the opposer‟s goods.

  When one looks at the label bearing the trademark FLAVOR MASTER, one‟s attention is easily attracted to the word MASTER, rather than to

the dissimilarities that exist. Therefore, the possibility of confusion as to the goods which bear the competing marks or as to the origins thereofis not farfetched.

  The word "MASTER" is neither a generic nor a descriptive term. As such, it may be legally protected. Generic terms are those which constitute

"the common descriptive name of an article or substance," or comprise the "genus of which the particular product is a species," or are

"commonly used as the name or description of a kind of goods," or "imply reference to every member of a genus and the exclusion oindividuating characters," or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a

particular product," and are not legally protectable. A term is descriptive and therefore invalid as a trademark if, as understood in its normal andnatural sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does notknow what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods," or if it clearlydenotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination.

  The term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which require"imagination, thought and perception to reach a conclusion as to the nature of the goods." Such terms, "which subtly connote something about

the product," are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding "some light" uponcertain characteristics of the goods or services in dispute, they nevertheless involve "an element of incongruity," "figurativeness," or "imaginative effort on the part of the observer."

  The term "MASTER" has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by

Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusionor mistake or even to deceive the ordinary purchasers.

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Case Title: PRIBHDAS J. MIRPURI vs. COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON CORPORATION

Petitioner's claims: "Barbizon" products have been sold in the Philippines since 1970. Petitioner developed this market by working long hours and

spending considerable sums of money on advertisements and promotion of the trademark and its products. Almost 30 years later, private respondent,

a foreign corporation usurps the trademark and invades petitioner's market. Justice and fairness dictate that private respondent be prevented fromappropriating what is not its own. Legally, at the same time, private respondent is barred from questioning petitioner's ownership of the trademark because of res judicata in view of IPC No. 686.

Respondent's claims: The Opposer's goods bearing the trademark BARBIZON have been used in many countries, including the Philippines, for atleast 40 years and has enjoyed international reputation and good will for their quality. Their trademarks qualify as well-known trademarks entitled toprotection under Article 6bis of the Convention of Paris for the Protection of Industrial Property

Issues:1. Whether IPC No. 2049 is barred on the ground of res judicata2. Whether a treaty affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark.

Ruling:1.  IPC No. 2049 raised the issue of ownership of the trademark and the international recognition and reputation of the trademark for over 40

years here and abroad, different from the issues of confusing similarity and damage in IPC No. 686. There was also a new cause of action

arising from the cancellation of petitioner's certificate of registration for failure to file the affidavit of use. Also, the first and second casesare based on different laws, one on Trademark Law and the other on the Paris Convention, E.O. No. 913 and the two Memoranda of theMinister of Trade and Industry. Thus, res judicata does not apply to the instant case.

2.  The WTO is a common institutional framework for the conduct of trade relations among its members in matters related to the multilateral

and plurilateral trade agreements annexed to the WTO Agreement, one of which is the Agreement on Trade-Related Aspects of IntellectualProperty Rights or TRIPs. Members to this Agreement have agreed to adhere to minimum standards of protection set by severalConventions, including the Paris Convention. The Philippines and the US have acceded to the WTO Agreement. Conformably, the Statemust reaffirm its commitment to the global community and take part in evolving a new international economic order at the dawn of the new

millenium. The petition is denied.

MIRPURI vs. CA G.R. No. 114508, November 19, 1999

Thursday, January 29, 2009 Posted by Coffeeholic WritesLabels: Case Digests, Commercial Law

Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the trademark “Barbizon” for use in horsiers and ladies

undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of NewYork, USA, opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said

trademark will cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course to the application. Escobarlater assigned all his rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of thetrademark required under the Philippine Trademark Law. Due to this failure, the Bureau cancelled Escobar‟s certificate of registration. In 1981,

Escobar and petitioner separately filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed again. Thistime it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark underArticle 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use ofthe trademark in the US and other countries, and the international recognition of the trademark established by extensive use and advertisement of respondents products for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The

issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from

the respondents claims originator of the word and symbol “Barbizon”, as the first and registered user of the mark attached to its products which have

 been sold and advertised would arise for a considerable number of years prior to petitioner‟s first application. Indeed, these are substantial allegations

that raised new issues and necessarily gave respondents a new cause of action.

Moreover, the cancellation of petitioner‟s certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondentanother cause to oppose the second application.

It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independentfrom each other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar tosubsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior actionoperating as res judicata, such as where the actions are based on different statutes.

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G.R. No. 103543. July 5, 1993.]  ASIA BREWERY, INC. petitioner, vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents.

On September 15, 1988, San Miguel Corporation (smc) filed a complaint against (ABI) for infringentment of trademark and unfair competition on

account of the latter‟s BEER NA BEER product which has been competing with SMC‟s SAN MIGUEL PALE PILSEN‟S the local beer mark etSMC claims that the “trade dress” of BEER PILSEN is, “confusingly SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. steine typeamber-colored bottles with regular labels.

On August 27, 1990, RTC dismissed the complaint. SMC appealed to the Court of Appeal the lower court‟s decision. Upon a motio n foreconsideration filed by ABI, the decision was the time, ABI appealed to this court by a petition for certiorari under Rule 45 Rules of Court.

Issue: Does ABI‟s BEER PALE PILSEN label or “design” infringe upon that of SAN MIGUEL PALE PILSEN? 

Ruling: No.Only registered trade marks, trade names and service marks are protected against infringement authorized use by another or others. It has beenconsistently held that the question of infringement remark is to be determined by the test of dominancy. Similarity in size, form and color, while

relevant, inclusive. If the competing trademark contains the main or essential or dominant features of another, and command deception is likely toresult, infringement takes place. Duplication or imitation is not necessary; nor necessary that the infringing label should suggest an effort to imitate.The fact that the words pale pilsen are part of ABI‟s trademark does not constitute an infringement of SMC‟s trademark: SAN M IGUEL PALEPILSEN, for “pale pilsen” are generic words descriptive of color (“pale”), of a type of beer (“pilsen”), which is a light bohemian beer with strong

hops flavor that originate the City of Pilsen in Czechoslovakia and became famous in the Middle ages. “Pilsen” is a “primaril y geologicallydescriptive word”. 

A word or a combination of words which is merely descriptive of an article of trade, or its composition, characteristics, or qualities, cannot be

appropriated and protected as a trademark to the exclusion its use by others inasmuch as all persons have an equal right to produce and vend similararticles, they also have the right to describe them properly and ot use any appropriate language or words for that purpose, and no person canappropriate to himself exclusively any word or expressions, properly descriptive of the article, its qualities, ingredients or characteristics, and thuslimit other persons in the use of language appropriate to the description of their manufacturers, the right to the use of such language being common to

all. This rule excluding descriptive term has also been held to apply to trade-means. As to whether words employed fall within this prohibition, it issaid that the true test is not whether they are exhaustively descriptive of the article designated, but whether in themselves and as they are commonlyused by those who understand their meaning, they are reasonably indicative and descriptive of the thing intended. If they are thus descriptive, and notarbitrary, they cannot be appropriated from general use and become the exclusive property of anyone. [52 Am Jur. 542-543].

The circumstance that the manufacturer of BEER PALE PILSEN, Asia Brewery Incorporated, has printed its name all over the bottle of its bee

 product: on the label, on the back of the botlle, as well as on the bottle cap, disproves SMC‟s charge that ABI dishonestly and fraudently intends to

 palm off its BEER PALE PILSEN as SMC‟s product. In view of the visible differences between the two products, the Court believes it‟s quiteunlikely that a customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN.

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G.R. No. L-27906. January 8, 1987.] CONVERSE RUBBER CORPORATION, petitioner, vs. UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE, DIRECTOROF PATENTS,

FERNAN, J.:

Universal Rubber Products, Inc. filed an application with the Philippine Patent office for registration of the trademark “UNI VERSAL CONVERSE

AND DEVICE” used on rubber shoes and rubber slippers.

PETITIONER‟s CONTENTION 

Converse Rubber Corporation filed its opposition to the application for registration on grounds that (a) the trademark sought to be registered is

confusingly similar to the word “CONVERSE” which is part of petitioner‟s corporate name “CONVERSE RUBBER CORPORATION” as to likely

deceive purchasers of products on which it is to be used to an extent that said products may be mistaken by the unwary public to be manufactured by

the petitioner; and, (b) the registration of respondent‟s trademark will cause great and irreparable injury to the business reputation and goodwill of

petitioner in the Philippines and would cause damage to said petitioner within the meaning of Section 8, RA 166, as amended.

RESPONDENT‟s CONTENTION 

1] The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in existence since July 31, 1946; it is duly organized

under the laws of Massachusetts, USA and doing business at 392 Pearl St., Malden, County of Middle sex, Massachusetts;

2] Petitioner is not licensed to do business in the Philippines and it is not doing business on its own in the Philippines; and,

3] Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCK TAYLOR "and "ALL STAR AND DEVICE".

The Director of Patents Evalle dismissed the opposition of Converse Rubber and gave due course to Universal Rubber‟s application. MR denied.

ISSUE: WHETHER OR NOT THE RESPONDENT'S PARTIAL APPROPRIATION OF PETITIONER'S CORPORATE NAME IS OF SUCH

CHARACTER THAT IT IS CALCULATED TO DECEIVE OR CONFUSE THE PUBLIC TO THE INJURY OF THE PETITIONER TO WHICH

THE NAME BELONGS.

HELD: YES. There is confusing similarity between its trademark “UNIVERSAL CONVERSE AND DEVICE” and Converse Rubber‟s corporate

name and/or its trademarks “CHUCK TAYLOR” and “ALL STAR DEVICE” which could confuse the purchasing public to the prejudice of

Converse Rubber. The trademark of “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on the side of its rubber  shoes. In

the same manner, the trademark of Converse Rubber which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the

side of its rubber shoes.

The determinative factor in ascertaining whether or not marks are confusingly similar to each other “is not whether the challenged mark would

actually cause commission or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of

the buying public. It would be sufficient, for purposes of the law, that the similarity between the two labels is such that there is a possibility or

likelihood of the purchaser of the older brand mistaking the new brand for it.” Even if not all the details just mentioned we re identical, with the

general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer could be

deceived.” 

A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name. Appropriation by another of the dominant part

of a corporate name is an infringement. From a cursory appreciation of the corporate name of “CONVERSE RUBBER CORPORATION,‟ it is

evident that the word “CONVERSE” is the dominant word which identifies Converse Rubber from other corporations engaged in sim ilar business

Universal Rubber admitted Converse Ru bber‟s existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubbe

shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the

trademark in question. Knowing, therefore, that the word “CONVERSE” belongs to and is being used by Converse Rubber, and is in f act the

dominant word in Converse Rubber‟s corporate name, Universal Rubber has no right to appropriate the same for use on its products which are similar

to those being produced by Converse Rubber.