INTELLECTUAL PROPERTY CODE registered or used it before anybody else did.

The petitioner’s copyright

and patent registration of the name and container would not guarantee
01 – Kho v. CA, Summerville, and Ang Tiam Chay (2002) her the right to the exclusive use of the same for the reason that they are
TOPIC: Intellectual Property in General not appropriate subjects of the said intellectual rights.
DOCTRINE/S: Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged with one another. Consequently, a preliminary injunction order cannot be issued for the
1. A trademark is any visible sign capable of distinguishing the reason that the petitioner has not proven that she has a clear right over
goods (trademark) or services (service mark) of an enterprise the said name and container to the exclusion of others, not having proven
and shall include a stamped or marked container of goods. In that she has registered a trademark thereto or used the same before
relation thereto, a trade name means the name or designation anyone did.
identifying or distinguishing an enterprise.
2. The scope of a copyright is confined to literary and artistic 02 – Creser Precision Systems v. CA (1998)
works which are original intellectual creations in the literary Topic: Ownership, grant, and limitations of a patent
and artistic domain protected from the moment of their Doctrine: There can be no infringement of a patent until a patent has
creation. been issued since the right one has over the invention covered by the
3. Patentable inventions refer to any technical solution of a patent arises from the grant of the patent alone. Therefore, a person who
problem in any field of human activity which is new, involves has not been granted letter of patent over an invention has not acquired
an inventive step and is industrially applicable. right or title over the invention and thus has no cause of action for
infringement.
EMERGENCY RECIT
Petitioner filed a complaint with prayer for issuance of a writ of EMERGENCY RECIT:
preliminary injunction against respondents. She alleges that she is the Floro was granted a Letter of Patent for its aerial fuze in January 1990.
registered owner of the copyrights Chin Chun Su and Oval Facial Cream Later, it discovered that Creser Precisions submitted samples of its aerial
Container/Case and the patent rights on Chin Chun Su & Device and fuze to the AFP. Hence, Floro sent a letter to Cresent regarding its
Chin Chun Su for medicated cream. She claimed that respondents patented aerial fuze. Cresent then filed a case against Floro contending
advertised and sold her cream products under the brand name Chin that Cresent is the actual true inventor of the aerial fuze since 1981. The
Chun Su, in similar containers that she uses, thereby misleading the SC ruled that Cresent has no cause of action to file a case because [See
public, and resulting in the decline in petitioner’s business sales. Thus, doctrine]. Further, Floro having a Letter of Patent over the aerial fuze, it
respondents should be enjoined from infringing on petitioner’s copyrights has in its favor not only the presumption of validity of its patent, but that
and patents. The issue is whether petitioner’s copyright and patent of a legal and factual first and true inventor of the invention.
registration of the name and container would entitle her the right to the
exclusive use of the same. The SC held no because the name and Facts:
container of a beauty cream product are proper subjects of a trademark.  Floro International Corp is a domestic corp. engaged in the
In order to be entitled to exclusively use the same in the sale of the manufacture, production, distribution and sale of military
beauty cream product, the user must sufficiently prove that she armaments, munitions, airmunitions and other similar
registered or used it before anybody else did. Here, petitioner has not materials.
proven that she has registered a trademark thereto or used the same  January 1990 - Floro was granted by the Bureau of Patents,
before anyone did. Thus, she is not entitled to the use and ownership Trademarks and Technology Transfer (BPTTT), a Letter of
over the name and container of the beauty cream product to the Patent for its aerial fuze.
exclusion of others.  November 1993 - Floro discovered that Creser Precision
Systems submitted samples of its patented aerial fuze to the
FACTS Armed Forces of the Philippines (AFP) for testing. He learned
1. Petitioner Elidad Kho, doing business under the name and that Creser was claiming the aforesaid aerial fuze as its own
style of KEC Cosmetic Laboratory, filed a complaint for and planning to bid and manufacture the same commercially
injunction and damages with prayer for issuance of a writ of without license or authority from private respondent.
preliminary injunction, against the respondents Summerville  Floro, to protect its rights, sent a letter to Cresent advising it
General Merchandising and Co. (Summerville) and Ang Tiam for its existing patent and its rights thereunder, warning
Chay. She alleges that she is the registered owner of the petitioner of a possible court action should it proceed with the
copyrights Chin Chun Su and Oval Facial Cream scheduled testing by the military.
Container/Case; that she also has patent rights on Chin Chun  In response, Cresent filed a complaint for injunction and
Su & Device and Chin Chun Su for medicated cream. She damages arising from the alleged infringement before the
claims that Summerville advertised and sold her cream RTC.
products under the brand name Chin Chun Su, in similar  The complaint alleged, among others:
containers that petitioner uses, thereby misleading the public, o that Cresent is the first, true and actual inventor of
and resulting in the decline in the petitioner’s business sales an aerial fuze denominated as Fuze, PDR 77 CB4
and income. She claims that the respondents should be which is developed as early as December 1981
enjoined from allegedly infringing on the copyrights and under the Self-Reliance Defense Posture Program
patents of the petitioner. (SRDP) of the AFP;
2. Respondents countered that Summerville is the exclusive and o that sometime in 1986, petitioner began supplying
authorized importer, repacker and distributor of Chin Chun Su the AFP with the said aerial fuze;
products manufactured by Shun Yi Factory of Taiwan; that the o that private respondents aerial fuze is identical in
said Taiwanese manufacturing company authorized every respect to the petitioners fuze;
Summerville to register its trade name Chin Chun Su o and that the only difference between the two fuzes
Medicated Cream with the Philippine Patent Office and other are miniscule and merely cosmetic in nature.
appropriate governmental agencies. Petitioner prayed that a temporary restraining order and/or writ
3. RTC granted the preliminary injunction. of preliminary injunction be issued enjoining private
4. CA ruled in favor of respondents and declared that the Order respondent including any and all persons acting on its behalf
of the RTC is null and void. from manufacturing, marketing and/or profiting therefrom,
and/or from performing any other act in connection therewith
ISSUE: Whether the copyright and patent over the name and container or tending to prejudice and deprive it of any rights, privileges
of a beauty cream product would entitle petitioner, as its registrant, to the and benefits to which it is duly entitled as the first, true and
use and ownership over the same to the exclusion of others. actual inventor of the aerial fuze.
 RTC – issued TRO.
HELD: NO.
 Floro submitted its memorandum alleging:
The name and container of a beauty cream product are proper subjects
o that petitioner has no cause of action to file a
of a trademark inasmuch as the same falls squarely within its definition.
complaint of infringement against it since it has no
In order to be entitled to exclusively use the same in the sale of the
beauty cream product, the user must sufficiently prove that she
 patent for the aerial fuze which it claims to have by the Bureau of Patents, it has in its favor not only the
invented; presumption of validity of its patent, but that of a legal and
o that petitioners available remedy is to file a petition factual first and true inventor of the invention.
for cancellation of patent before the Bureau of
Patents; 3 Smith Kline Eckman Corp vs CAl (2003)
o that private respondent as the patent holder cannot Topic: Patent infringement
be stripped of its property right over the patented Doctrine: The doctrine of equivalents provides that an infringement also
aerial fuze consisting of the exclusive right to takes place when a device appropriates a prior invention by incorporating
manufacture, use and sell the same and that it its innovative concept and, although with some modification and change,
stands to suffer irreparable damage and injury if it is performs substantially the same function in substantially the same way
enjoined from the exercise of its property right over to achieve substantially the same result. Yet again, a scrutiny of
its patent. petitioner's evidence fails to convince this Court of the substantial
 RTC – issued a writ of preliminary injunction against Floro. sameness of petitioner's patented compound and Albendazole. While
 CA – reversed RTC. both compounds have the effect of neutralizing parasites in animals,
identity of result does not amount to infringement of patent unless
Issue: W/N an action for infringement can be filed not as a patentee Albendazole operates in substantially the same way or by substantially
but as an entity in possession of a right, title or interest in and to the same means as the patented compound, even though it performs the
the patented invention? –NO. same function and achieves the same result. In other words, the principle
or mode of operation must be the same or substantially the same. The
Held: doctrine of equivalents thus requires satisfaction of the function-means-
 Section 42 of R.A. 165, otherwise known as the Patent Law, and-result test, the patentee having the burden to show that all three
explicitly provides: components of such equivalency test are met.
 SECTION. 42. Civil action for infringement. Any patentee, or
anyone possessing any right, title or interest in and to the Emergency Recit: Petitioner Smith Kline Beckman Corporation (SKBC)
patented invention, whose rights have been infringed, may was granted by the Philippine Patent Office Letters Patent No. 14561
bring a civil action before the proper Court of First Instance over an invented compound entitled “Methods and Compositions for
(now Regional Trial court), to recover from the infringer Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
damages sustained by reason of the infringement and to Benzimidazole Carbamate.” Such compound is claimed to be an active
secure an injunction for the protection of his right. x x x ingredient in fighting various parasites in certain types of domestic and
 Under the aforequoted law, only the patentee or his livestock animals. Respondent Tryco Pharma (Tryco) sells veterinary
successors-in-interest may file an action for infringement. The products including a drug Impregon which contains Albendazole as an
phrase anyone possessing any right, title or interest in and to active ingredientwhich fights against parasites in animals. Petitioner
the patented invention upon which petitioner maintains its SKBC then filed an action against respondent Tryco for patent
present suit, refers only to the patentees successors-in- infringement Issue: Whether or not respondent is guilty of patent
interest, assignees or grantees since actions for infringement infringement? SC: The Supreme Court held that it did not. When the
of patent may be brought in the name of the person or persons language of the claim is clear and distinct, the patentee is bound thereby
interested, whether as patentee, assignees or grantees, of the and may not claim anything beyond them. The language of the Letter of
exclusive right. Patents issued to the petitioner failed to yield anything that it includes
 [See doctrine] Albendazole. The doctrine of equivalents does not apply in the case at
 Petitioner admits it has no patent over its aerial fuze. bar because it requires that for infringement to take place, the device
Therefore, it has no legal basis or cause of action to institute should appropriate a prior invention by incorporating its innovative
the petition for injunction and damages arising from the concept and although there are some modifications and change they
alleged infringement by private respondent. While petitioner perform substantially the same results. The petitioner’s evidence failed
claims to be the first inventor of the aerial fuze, still it has no to adduce that substantial sameness on both the chemicals they used.
right of property over the same upon which it can maintain a While both compounds produce the same effects of neutralizing
suit unless it obtains a patent therefor. Under American parasites in animals, the identity of result does not amount to
jurisprudence, and inventor has no common-law right to a infringement. The petitioner has the burden to show that it satisfies the
monopoly of his invention. He has the right to make, use and function-means-and-result-test required by the doctrine of equivalents.
vend his own invention, but if he voluntarily discloses it, such
as by offering it for sale, the world is free to copy and use it Facts: Petitioner, the registered patent holder of Letters Patent No.
with impunity. A patent, however, gives the inventor the right 14561, filed a complaint for infringement of patent against private
to exclude all others. As a patentee, he has the exclusive right respondent alleging that private respondent appropriated for its drug
of making, using or selling the invention. Impregon, the active ingredient of Albendazole, which is substantially the
same as Methyl 5 Propylthio-2-Benzimidazole Carbamate covered by
 Further, the remedy of declaratory judgment or injunctive suit
petitioner's patent since both of them are meant to combat worm or
on patent invalidity relied upon by petitioner cannot be likened
parasite infestation in animals. Petitioner also pointed out that its
to the civil action for infringement under Section 42 of the
application for a patent in the Philippine Patent Office on account of
Patent Law. The reason for this is that the said remedy is
which it was granted Letters Patent No. 14561 was merely a divisional
available only to the patent holder or his successors-in-
application of a prior application in the U.S. which granted a patent for
interest. Thus, anyone who has no patent over an invention
Albendazole. Both the trial court and the CA held that the respondent
but claims to have a right or interest thereto can not file an
was not liable for any infringement of the patent of petitioner in light of
action for declaratory judgment or injunctive suit which is not
the latter's failure to show that Albendazole is the same as the compound
recognized in this jurisdiction. Said person, however, is not left
subject of Letters Patent No. 14561.
without any remedy. He can, under Section 28 of the
aforementioned law, file a petition for cancellation of the patent
Issue: Whether or not respondent is guilty of patent infringement? - NO
within three (3) years from the publication of said patent with
the Director of Patents and raise as ground therefor that the
Held:
person to whom the patent was issued is not the true and
The Court held that petitioner's evidence failed to show the substantial
actual inventor. Hence, petitioners remedy is not to file an
sameness of petitioner's patented compound and Albendazole. While
action for injunction or infringement but to file a petition for
both compounds have the effect of neutralizing parasites in animals, the
cancellation of private respondent patent. Petitioner however
identity of result does not amount to infringement of patent unless
failed to do so. As such, it can not now assail or impugn the
Albendazole operates in substantially the same way as the patented
validity of the private respondents letters patent by claiming
compound, even though it performs the same function or the same result.
that it is the true and actual inventor of the aerial fuze.
As for the concept of divisional applications proffered by petitioner, what
 Thus, as correctly ruled by the respondent Court of Appeals in
this only means is that petitioner's Methyl 5 Prophylthio-2-Benzimidazole
its assailed decision: since the petitioner (private respondent
Carbamate is an invention distinct from the other inventions claimed in
herein) is the patentee of the disputed invention embraced by
the original application divided out, Albendazole being one of those other
letters of patent UM No. 6938 issued to it on January 23, 1990
inventions. Otherwise, Methyl 5 Propylthio-2-Benzimidazole Carbamate
would not have been the subject of a divisional application if a single  The Bureau of Legal Affairs-IP Office (BLA-IPO) held that
patent could have been issued for it as well as Albendazole. CPI’s trademark infringed on SFCR’s trade name. The right to
the exclusive use of a trade name with freedom of infringement
When the language of its claims is clear and distinct, the patentee is by similarity is determined by priority of adoption. Since SFCR
bound thereby and may not claim anything beyond them. And so are the registered its business name with the DTI in 1995 and CPI
courts bound which may not add to or detract from the claims matters registered its trademark with the IPO in 2001, then SFCR must
not expressed or necessarily implied, nor may they enlarge the patent be protected from infringement of its trade name. Furthermore,
beyond the scope of that which the inventor claimed and the patent office CPI’s use of “San Francisco Coffee” will likely cause
allowed, even if the patentee may have been entitled to something more confusion. On the issue of unfair competition, the BLA-IPO
than the words it had chosen would include. It bears stressing that the absolved CPI from liability as there was no evidence of intent
mere absence of the word Albendazole in Letters Patent No. 14561 is to defraud on its part.
not determinative of Albendazole’s non-inclusion in the claims of the  The Office of the Director General-IP Office (ODG-IPO)
patent. reversed the BLA-IPO. It ruled that SFCR had stopped using
its trade name after it entered into a joint venture with Boyd
The doctrine of equivalents provides that an infringement also takes Coffee USA in 1998 while CPI continuously used the
place when a device appropriates a prior invention by incorporating its trademark since June 2001 when it opened its first shop in
innovative concept and, although with some modification and change, Quezon City.
performs substantially the same function in substantially the same way  The CA reinstated the BLA-IPO’s finding of infringement.
to achieve substantially the same result. Yet again, a scrutiny of SKBC’s  CPI comes before the SC, contending that when a trade name
evidence fails to convince the Court of the substantial sameness of is not registered, a suit for infringement is not available.
SKBC’s patented compound and Albendazole. While both compounds
have the effect of neutralizing parasites in animals, identity of result does Issue: WON CPI’s use of the trademark “San Francisco Coffee”
not amount to infringement of patent unless Albendazole operates in constituted infringement of SFCR’s trade name even if the same is not
substantially the same way or by substantially the same means as the registered with the IPO?
patented compound, even though it performs the same function and
achieves the same result. Held: YES.
In other words, the principle or mode of operation must be the same or  A trade name need not be registered with the IPO before an
substantially the same. The doctrine of equivalents thus requires infringement suit may be filed by its owner against the owner
satisfaction of the function-means-and-result test, the patentee having of an infringing mark. All that is required is that the trade name
the burden to show that all three components of such equivalency test is previously used in trade or commerce in the Philippines.
are met.  Sec. 165.2 of the Intellectual Property Code states that trade
names shall be protected, even prior to or without registration
4 – Coffee Partners, Inc. v. San Francisco Coffee & Roastery (2010) with the IPO, against any unlawful act including any
Topic: Definition of Marks, Collective Marks, Trade Names subsequent use of the trade name by a third party, whether as
Doctrine: A trade name need not be registered with the IPO before an a trade name or a trademark likely to mislead the public.
infringement suit may be filed against its owner of an infringing  It is the likelihood of confusion that is the gravamen of
trademark. All that is required is that the trade name is previously used infringement. But there is no absolute standard for likelihood
in trade or commerce in the Philippines. of confusion. Only the particular, and sometimes peculiar,
circumstances of each case can determine its existence.
Emergency Recit: SFCR filed a complaint for infringement against CPI, Thus, in infringement cases, precedents must be evaluated in
alleging that CPI’s trademark infringed on SFCR’s trade name due to the the light of each particular case.
use of “San Francisco Coffee”. CPI argued that the complaint should not
 In determining similarity and likelihood of confusion, two tests
prosper since SFCR’s trade name, “San Francisco Coffee & Roastery”,
are applied: the dominancy test and the holistic test.
was not registered with the IPO. The SC held that a trade name need not
o The dominancy test focuses on the similarity of the
be registered with the IPO before an infringement suit may be filed
prevalent features of the competing trademarks that
against its owner of an infringing trademark. All that is required is that the
might cause confusion and deception, thus
trade name is previously used in trade or commerce in the Philippines.
constituting infringement. If the competing
Furthermore, applying either the dominancy test or the holistic test, CPI’s
trademark contains the main, essential, and
“San Francisco Coffee” trademark is a clear infringement of SFCR’s “San
dominant features of another, and confusion or
Francisco Coffee & Roastery, Inc.” trade name.
deception is likely to result, infringement occurs.
Exact duplication or imitation is not required. The
Facts:
question is whether the use of the marks involved is
 Petitioner Coffee Partners, Inc. (CPI) is a local corporation likely to cause confusion or mistake in the mind of
engaged in the business of establishing and maintaining the public or to deceive consumers.
coffee shops in the country, and registered with the SEC in o The holistic test entails a consideration of the
January 2001. It has a franchise agreement with Coffee entirety of the marks as applied to the products,
Partners Ltd. (CPL), a business entity organized and existing including the labels and packaging, in determining
under the laws of British Virgin Islands, for a non-exclusive confusing similarity. The discerning eye of the
right to operate coffee shops in the Philippines using observer must focus not only on the predominant
trademarks designed by CPL such as “San Francisco Coffee”. words but also on the other features appearing on
 Respondent San Francisco Coffee & Roastery (SFCR) is a both marks in order that the observer may draw his
local corporation engaged in the wholesale and retail of coffee, conclusion whether one is confusingly similar to the
and registered with the SEC in May 1995. It likewise registered other.
the business name “San Francisco Coffee & Roastery, Inc.”  Applying either the dominancy test or the holistic test, CPI’s
with the DTI in June 1995. “San Francisco Coffee” trademark is a clear infringement of
 In 1998, SFCR formed a joint venture with Boyd Coffee USA SFCR’s “San Francisco Coffee & Roastery, Inc.” trade name.
under the company name Boyd Coffee Company Philippines, The descriptive words “San Francisco Coffee” are precisely
Inc. (BCCPI). the dominant features of SFCR’s trade name. Both parties are
 In 2001, SFCR discovered that CPI was about to open a coffee engaged in the same business of selling coffee, whether
shop under the name “San Francisco Coffee” in Quezon City, wholesale or retail. The likelihood of confusion is higher in
hence, it sent a letter to CPI demanding that the latter stop cases where the business of one corporation is the same or
using the name “San Francisco Coffee”. A complaint was also substantially the same as that of another corporation.
filed with the Bureau of Legal Affairs-Intellectual Property  CPI’s argument that “San Francisco” is just a proper name
Office (BLA-IPO) for infringement and/or unfair competition. referring to the famous city in California and that “coffee” is
 CPI argues that its mark could not be confused with the simply a generic term, is untenable. SFCR has acquired an
SFCR’s trade name because of the notable distinction in their exclusive right to the use of the trade name “San Francisco
appearances.
 Coffee & Roastery, Inc.” since its registration with the DTI in  Two letters of "SALONPAS" are missing in "LIONPAS".
1995.  When the two words are pronounced, the sound effects are
 This does not mean, however, that SFCR has exclusive use confusingly similar. And where goods are advertised over the
of the geographic word “San Francisco” or the generic word radio, similarity in sound is of especial significance. Similarity
“coffee.” Geographic or generic words are not, per se, subject of sound is sufficient ground for this Court to rule that the two
to exclusive appropriation. It is only the combination of the marks are confusingly similar when applied to merchandise of
words “San Francisco Coffee,” which is SFCR’s trade name in the same descriptive properties.
its coffee business, that is protected against infringement on 
matters related to the coffee business to avoid confusing or
deceiving the public. 6 - Arce & Sons v Selecta 110 Phil 858 (1961)
Topic: Doctrine of secondary meaning
5 – Marvex Commercial v. Petra Hawpia (1966) Doctrine:
Topic: Registrable v. unregistrable marks TRADEMARKS AND TRADE NAMES; SECONDARY MEANING OF
Doctrine: The right to register trademarks, tradenames and service BUSINESS NAME. — Although the word "SELECTA" may be an
marks is based on ownership. ordinary or common word in the sense that it may be used or employed
by any one in promoting his business or enterprise, once adopted or
Emergency Recit: Petra Hawpia applied for the registration of a coined in connection with one’s business as an emblem, sign or device
trademark. Although registration was initially granted, the Supreme Court to characterize its products, or as a badge or authenticity, it may acquire
overruled the same. It was not proven that Petra Hawpia was the true a secondary meaning as to be exclusively associated with its products
owner of the trademark. and business. In this sense, its use by another may lead to confusion in
trade and cause damage to its business.
Facts: Petra Hawpia, a partnership, filed a petition for the registration of
the trademark "LIONPAS" used on medicated plaster. To prove WHEN REASON FOR USE OR SAME NAME BY ANOTHER NOT
ownership over the mark, it showed a letter sent to it by Osaka Boeki, TENABLE. — The suggestion that the name "SELECTA" was chosen
the alleged owner of the trademark. The letter showed that Osaka Boeki merely as a translation from a Chinese word "Ching Suan" meaning
conveyed all its rights, interests, and goodwill in the tradename "mapili" in the dialect is betrayed by the very manner of its selection, for
“LIONPAS” in favor of Petra Hawpia. Such letter was supported by an if the only purpose is to make an English translation of that word and not
affidavit that Osaka Boeki was the owner of the trademark. Marvex to compete with the business of petitioner, why choose the word
Commercial filed an opposition thereto, alleging that the registration of "SELECTA", a Spanish word, and not "SELECTED", the English
such trademark would violate its right to and interest in its trademark equivalent thereof, as was done by the other well-known enterprises?
"SALONPAS" which is used on another medicated plaster, and that both
trademarks when used on medicated plaster would mislead the public as ER: Respondent Selecta Biscuit Company applied for the registration of
they are confusingly similar. the word ‘SELECTA’ to be used in its bakery products. Petitioner Arce
Sons opposed on the ground it had continuously used the mark
Director of Patents: Granted the petition. ‘SELECTA’ and that it has already become identified with petitioner’s
name and business. Petitioner further contends that the marks are
Issues: confusingly similar. Petitioner then filed before the court a complaint of
1. Whether or not the trademark “LIONPAS” is registrable by unfair competition against respondent which ruled in its favor. On the
Petra Hawpia? [relevant] other hand, the Director of Patents dismissed petitioner’s opposition. SC
2. Whether or not “LIONPAS” and “SALONPAS” are confusingly ruled in favor of petitioner Arce Sons.
similar?
Facts:
Held: In 1955, Selecta Biscuit Company, Inc. (respondent) filed with the
1. NO. Secs. 2 and 2-A, Trade Mark Law: The right to register Philippine Patent Office a petition for the registration of the word
trademarks, tradeoames and service marks x x x is based on "SELECTA" as trade-mark to be use in its bakery products alleging that
ownership x x x. it is in actual use thereof for not less than two months before said date
and that "no other persons, partnership, corporation or association has
In this case: the right to use said trade-mark in the Philippines, either in the identical
 The letter revealed that "OSAKA BOEKI KAISHA, LTD." is form or in any such near resemblance thereto, as might be calculated to
merely a representative of the manufacturer "ASUNARO deceive." Its petition was referred to an examiner for study who found
PHARMACEUTICAL INDUSTRY CO.," the real owner of the that the trade-mark sought to be registered resembles the word
tradename “LIONPAS”. There is no proof that as such "SELECTA" used by the Acre and Sons and Company (petitioner) in its
representative, the former has been authorized by the latter to milk and ice cream products so that its use by respondent will cause
sell the trademark in question. confusion as to the origin of their respective goods.
 The letter appears to have been signed by someone whose
position in the company is not specifically described, and his Petitioner filed its opposition thereto on several grounds, among which
signature is not legible. are: (1) that the mark "SELECTA" had been continuously used by
 The letter did not contain the required acknowledgment for petitioner in the manufacture and sale of its products, including cakes,
transfer of trademarks under Sec. 37 in relation to Sec. 31, bakery products, milk and ice cream from the time of its organization and
par. 2 of RA 166. even prior thereto by its predecessor-in-interest, Ramon Arce; (2) that
 Other evidence shows that Petra Hawpia is only an exclusive the mark "SELECTA" has already become identified with name of the
distributor of the “LIONPAS” plaster. petitioner and its business; (3) that petitioner had warned respondent not
to use said mark because it was already being used by the former, but
Therefore, Petra Hawpia cannot seek registration of the trademark that the latter ignored said warning; (4) that respondent is using the word
“LIONPAS”. "SELECTA" as a trade-mark as bakery products in unfair competition
with the products of petitioner thus resulting in confusion in trade; (5) that
2. YES. the mark to which the application of respondent refers has striking
resemblance, both in appearance and meaning, to petitioner's mark as
The opinion of the Director of Patents on the matter of similarity or to be mistaken therefor by the public and cause respondent's goods to
dissimilarity of trademarks and tradenames is not conclusive upon this be sold as petitioner's; and (6) that actually a complaint has been filed
Court which may pass upon such determination. by the petitioner against respondent for unfair competition in the Court of
 Both these words have the same suffix, "PAS", which is used First Instance of Manila asking for damages and for the issuance of a
to denote a plaster that adhered to the body with curative writ of injunction against respondent enjoining the latter for continuing
powers. "PAS”, being merely descriptive, furnishes no with the use of said mark.
indication of the origin of the article and therefore is open for
appropriation by anyone and may properly become the subject Court of First Instance of Manila rendered decision in the unfair
of a trademark by combination with another word or phrase. 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 all the profits it may  Upon appeal to the CA, CA affirmed the decision of the
have realized by the use of said name. The Director of Patents rendered Director of Patents since there is hardly any variance in the
decision dismissing petitioner's opposition and stating that the appearance of the marks ‘GOLD TOP’ and ‘GOLD TOE’ since
registration of the trade-mark "SELECTA" in favor of applicant Selecta both show a representation of a man’s foot wearing a sock,
Biscuits Company, Inc. will not cause confusion or mistake nor will and the marks are printed in identical lettering.
deceive the purchasers as to the cause damage to petitioner. Hence,  Hence, this petition, Petitioner points out that the director of
petitioner interposed the present petition for review. patents erred in his application of the idem sonans rule,
claiming that the two trademarks “Gold Toe” and “Gold Top”
Issue: Whether or not petitioner’s mark has acquired secondary do not sound alike and are pronounced differently. It avers that
meaning in its favor. since the words gold and toe are generic, respondent has no
right to their exclusive use.
Ruling: YES.
ISSUE: W/N there has been a confusing similarity between the
The word ‘SELECTA’, it is true, may be an ordinary or common word in trademarks of petitioner Amigo and respondent Cluett
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 HELD: Yes.
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 True, it would not be guilty of infringement on the basis alone of the
be exclusively associated with its products and business. In this sense, similarity in the sound of petitioner’s “Gold Top” with that of respondent’s
its use by another may lead to confusion in trade and cause damage to “Gold Toe.” Admittedly, the pronunciations of the two do not, by
its business. And this is the situation of petitioner when it used the word themselves, create confusion. The Bureau of Patents, however, did not
‘SELECTA’ as a trade-mark. In this sense, the law gives its protection rely on the idem sonans test (similarity in sound) alone in arriving at its
and guarantees its use to the exclusion of all others. conclusion. The test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks which might cause
The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” confusion or deception and thus constitutes infringement, while the
which this Court has considered not merely as a descriptive term within holistic test mandates that the entirety of the marks in question must be
the meaning of the Trade-mark Law but as a fanciful or coined phrase, considered in determining confusing similarity.
or a trade-mark. And holding that respondent was entitled to protection
in the use of that trade-mark, this Court made the following comment: If the competing trademark contains the main or essential or dominant
Even if ‘Ang Tibay’, therefore, were not capable of exclusive features of another, and confusion and deception is likely to result,
appropriation as a trade-mark, the application of the doctrine of infringement takes place. Duplication or imitation is not necessary; nor is
secondary meaning could nevertheless be fully sustained because, in it necessary that the infringing label should suggest an effort to imitate.
any event, by respondent’s long and exclusive appropriation with The question at issue in cases of infringement of trademarks is whether
reference to an article on the market, because geographically or the use of the marks involved would be likely to cause confusion or
otherwise descriptive, might nevertheless have been used so long and mistakes in the mind of the public or deceive purchasers. On the other
exclusively by one producer with reference to his article that, in that trade side of the spectrum, the holistic test mandates that the entirety of the
and to that branch of the purchasing public, the word or phrase has come marks in question must be considered in determining confusing
to mean that article was his product.” (Ang v. Teodoro, supra.) similarity.

MISSING CASE #7 In this case, the mark ‘GOLD TOP & DEVICE’ is confusingly similar with
the mark ‘GOLD TOE’. The difference in sound occurs only in the final
8. Amigo Mfg v Cluett Peabody Co letter at the end of the marks. For the same reason, hardly is there any
Topic: Dominancy test variance in their appearance. ‘GOLD TOE’ and ‘GOLD TOP’ are printed
DOCTRINE: The test of dominancy focuses on the similarity of the in identical lettering. Both show [a] representation of a man’s foot wearing
prevalent features of the competing trademarks which might cause a sock. ‘GOLD TOP’ blatantly incorporates petitioner’s ‘LINENIZED’
confusion or deception and thus constitutes infringement, while the which by itself is a registered mark.”
holistic test mandates that the entirety of the marks in question must be
considered in determining confusing similarity. Admittedly, there are some minor differences between the two sets of
marks. The similarities, however, are of such degree, number and quality
FACTS that the overall impression given is that the two brands of socks are
 Respondent Cluett Peabody Co., Inc., a New York deceptively the same, or at least very similar to each another. An
corporation, filed before the Bureau of Patents a complaint examination of the products in question shows that their dominant
against Petitioner Amigo Manufacturing Inc. (a Philippine features are gold checkered lines against a predominantly black
corporation) for cancellation of trademark for the following background and a representation of a sock with a magnifying glass. In
trademark devices used as men’s socks addition, both products use the same type of lettering. Both also include
a) GOLD TOE, under Certificate of Registration No. 6797 a representation of a man’s foot wearing a sock and the word “linenized”
dated September 22, 1958; with arrows printed on the label. Lastly, the names of the brands are
b)DEVICE, representation of a sock and magnifying similar—“Gold Top” and “Gold Toe.” Moreover, it must also be
glass on the toe of a sock, under Certificate of considered that petitioner and respondent are engaged in the same line
Registration No. 13465 dated January 25, 1968; of business.
c)DEVICE, consisting of a’plurality of gold colored lines
arranged in parallel relation within a triangular area of The Bureau considered the drawings and the labels, the appearance of
toe of the stocking and spread from each other by lines the labels, the lettering, and the representation of a man’s foot wearing
of contrasting color of the major part of the stocking’ a sock. Obviously, its conclusion is based on the totality of the similarities
under Certificate of Registration No. 13887 dated May between the parties’ trademarks and not on their sounds alone.
9, 1968; and
d)LINENIZED, under Certificate of Registration No. [OTHER SIDE ISSUE RELATING TO IP]
15440 dated April 13, 1970.
 In this case, the petitioner Amigo’s trademark and device Registration and Prior Use (Under RA 166- Old Law)
‘GOLD TOP, Linenized for Extra Wear’ has the dominant color Petitioner contends that they were in prior use of the said trademark
‘white’ at the center and a ‘blackish brown’ background with a “Gold Top and Device” on September 1956, while respondent only used
magnified design of the sock’s garter, and is labeled ‘Amigo the said mark on May 15, 1962.
Manufacturing Inc., Mandaluyong, Metro Manila, Made in the
Philippines.’ The registration of the above marks in favor of respondent constitutes
 The Bureau of Trademarks and Patents ruled the application prima facie evidence, which petitioner failed to overturn satisfactorily, of
of the rule of idem sonans and the existence of a confusing respondent’s ownership of those marks, the dates of appropriation and
similarity in appearance between two trademarks. the validity of other pertinent facts stated therein. Moreover, the validity
of the Certificates of Registration was not questioned. Neither did
petitioner present any evidence to indicate that they were fraudulently Yes.
issued. Consequently, the claimed dates of respondent’s first use of the The essential element of infringement under R.A. No. 8293 is that
marks are presumed valid. Clearly, they were ahead of petitioner’s the infringing mark is likely to cause confusion. In determining similarity
claimed date of first use of “Gold Top and Device” in 1958. and likelihood of confusion, jurisprudence has developed tests: the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test
Section 5-A of Republic Act No. 166 states that an applicant for a focuses on the similarity of the prevalent or dominant features of the
trademark or tradename shall, among others, state the date of first use. competing trademarks that might cause confusion, mistake, and
The fact that the marks were indeed registered by respondent shows that deception in the mind of the purchasing public. Given more consideration
it did use them on the date indicated in the Certificate of Registration. are the aural and visual impressions created by the marks on the buyers.
Furthermore, petitioner failed to present proof of the date of alleged first In contrast, the Holistic or Totality Test necessitates a consideration of
use of the trademark “Gold Top and Device.” Thus, even assuming that the entirety of the marks as applied to the products, including the labels
respondent started using it only on May 15, 1962, we can make no and packaging, in determining confusing similarity.
finding that petitioner had started using it ahead of respondent.
Applying the Dominancy Test to the case at bar, the Court held
In any case, absent any clear showing to the contrary, this Court accepts that the use of the stylized “S” by respondent in its Strong rubber shoes
the finding of the Bureau of Patents that it was respondent which had infringes on the mark already registered by petitioner with the IPO. While
prior use of its trademark, as shown in the various Certificates of it is undisputed that petitioner’s stylized “S” is within an oval design, the
Registration issued in its favor. dominant feature of the trademark is the stylized “S,” as it is precisely the
stylized “S” which catches the eye of the purchaser. Thus, even if
Paris Convention respondent did not use an oval design, the mere fact that it used the
Petitioner claims that the Court of Appeals erred in applying the Paris same stylized “S”, the same being the dominant feature of petitioner’s
Convention. Although respondent registered its trademark ahead, trademark, already constitutes infringement under the Dominancy Test.
petitioner argues that the actual use of the said mark is necessary in
order to be entitled to the protection of the rights acquired through Comparing petitioner’s Energy model and respondent’s Strong
registration. rubber shoes, respondent also used the color scheme of blue, white and
gray utilized by petitioner. Even the design and “wavelike” pattern of the
In the Paris Convention, the Philippines and the United States are midsole and outer sole of respondent’s shoes are very similar to
members. Respondent is domiciled in the United States and is the petitioner’s shoes, if not exact patterns thereof. The protection of
registered owner of the “Gold Toe” trademark. Hence, it is entitled to the trademarks as intellectual property is intended not only to preserve the
protection of the Convention. A foreign-based trademark owner, whose goodwill and reputation of the business established on the goods bearing
country of domicile is a party to an international convention relating to the mark through actual use over a period of time, but also to safeguard
protection of trademarks, is accorded protection against infringement or the public as consumers against confusion on these goods.
any unfair competition as provided in Section 37 of Republic Act 166, the
Trademark Law which was the law in force at the time this case was 10. Great White Shark Enterprises vs Caralde (2012)
instituted. Topic: Holistic Test
Doctrine:
9. Skechers USA Inc v InterPacific Industrial Trading Corp The Dominancy Test focuses on the similarity of the dominant features
Topic: Dominancy Test of the competing trademarks that might cause confusion, mistake, and
Doctrine: deception in the mind of the ordinary purchaser, and gives more
There is trademark infringement when the second mark used is likely to consideration to the aural and visual impressions created by the marks
cause confusion. There are two tests to determine this: on the buyers of goods, giving little weight to factors like prices, quality,
1. Dominancy Test – the court focuses on the similarity of the dominant sales outlets, and market segments.
features of the marks that might cause confusion in the mind of the
consumer. Duplication or imitation is not necessary. Even accidental In contrast, the Holistic or Totality Test considers the entirety of the
confusion may be cause for trademark infringement. More consideration marks as applied to the products, including the labels and packaging,
is given to the aural and visual impressions created by the marks on the and focuses not only on the predominant words but also on the other
buyers and less weight is given to factors like price, quality, sales outlets features appearing on both labels to determine whether one is
and market segments. confusingly similar to the other as to mislead the ordinary purchaser. The
"ordinary purchaser" refers to one "accustomed to buy, and therefore to
2. Holistic or Totality Test – the court looks at the entirety of the marks some extent familiar with, the goods in question."
as applied to the products, including the labels and packaging. You must
not only look at the dominant features but all other features appearing on FACTS:
both marks. Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark
application seeking to register the mark "SHARK & LOGO" for his
Facts: manufactured goods under Class 25, such as slippers, shoes and
Skechers, USA Inc. is the owner of the registered trademarks “Skechers” sandals.
and “S within an oval logo”.
Petitioner Great White Shark Enterprises, Inc., a foreign corporation the
Skechers filed a criminal case for trademark infringement against several application claiming to be the owner of the mark consisting of a
store-owners that were selling shoes branded as “Strong” and bearing a representation of a shark in color, known as "GREG NORMAN LOGO".
similar “S” logo. The Regional Trial Court (RTC) issued search warrants, It alleged that, being a world famous mark which is pending registration
allowing the National Bureau of Investigation (NBI) to raid the stores and before the BLA since February 19, 2002, the confusing similarity
confiscate 6,000 pairs of shoes. between the two marks is likely to deceive or confuse the purchasing
public into believing that Caralde's goods are produced by or originated
The accused moved to quash the warrants, saying that there was no from it, or are under its sponsorship, to its damage and prejudice.
confusing similarity between the “Skechers” and the “Strong” brands.
BLA Director rendered a Decision rejecting Caralde's application;
The RTC granted the motion to quash and ordered the NBI to return the The IPO Director General affirmed the final rejection of Caralde's
seized goods. The court said that the two brands had glaring differences application, ruling that the competing marks are indeed confusingly
and that an ordinary prudent consumer would not mistake one for the similar;
other. CA reversed and directed the IPO to grant Caralde's application for
registration of the mark "SHARK & LOGO." The CA found no confusing
On certiorari, the Court of Appeals (CA) affirmed the RTC ruling. similarity between the subject marks notwithstanding that both contained
the shape of a shark as their dominant feature
The matter was elevated to the Supreme Court (SC).
SC:
Issue: Whether or not there was trademark infringement. (in favor of Petitioner)
A trademark device is susceptible to registration if it is crafted fancifully The Dominancy Test focuses on the similarity of the prevalent features
or arbitrarily and is capable of identifying and distinguishing the goods of of the competing trademarks which might cause confusion or deception,
one manufacturer or seller from those of another. Apart from its and thus infringement. If the competing trademark contains the main,
commercial utility, the benchmark of trademark registrability is essential or dominant features of another, and confusion or deception is
distinctiveness. Thus, a generic figure, as that of a shark in this case, if likely to result, infringement takes place. Duplication or imitation is not
employed and designed in a distinctive manner, can be a registrable necessary; nor is it necessary that the infringing label should suggest an
trademark device, subject to the provisions of the IP Code. effort to imitate. The question is whether the use of the marks involved
is likely to cause confusion or mistake in the mind of the public or deceive
Section 123.1 (d) of the IP Code provides that a mark cannot be purchasers.
registered if it is identical with a registered mark belonging to a different
proprietor with On the other hand, the Holistic Test requires that the entirety of the marks
an earlier filing or priority date, with respect to the same or closely related in question be considered in resolving confusing similarity. Comparison
goods or services or has a near resemblance to such mark as to likely of words is not the only determining factor. The trademarks in their
deceive or cause confusion. entirety as they appear in their respective labels or hang tags must also
H be considered in relation to the goods to which they are attached. The
In determining similarity and likelihood of confusion, case law has discerning eye of the observer must focus not only on the predominant
developed the Dominancy Test and the Holistic or Totality Test. The words but also on the other features appearing in both labels in order
Dominancy Test focuses on the similarity of the dominant features of the that he may draw his conclusion whether one is confusingly similar to the
competing trademarks that might cause confusion, mistake, and other.
deception in the mind of the ordinary purchaser, and gives more
consideration to the aural and visual impressions created by the marks In comparing the resemblance or colorable imitation of marks, various
on the buyers of goods, giving little weight to factors like prices, quality, factors have been considered, such as the dominant color, style, size,
sales outlets, and market segments. form, meaning of letters, words, designs and emblems used, the
likelihood of deception of the mark or name's tendency to confuse and
In contrast, the Holistic or Totality Test considers the entirety of the the commercial impression likely to be conveyed by the trademarks if
marks as applied to the products, including the labels and packaging, used in conjunction with the respective goods of the parties.
and focuses not only on the predominant words but also on the other
features appearing on both labels to determine whether one is Applying the Dominancy and Holistic Tests, we find that the dominant
confusingly similar to the other as to mislead the ordinary purchaser. The feature of the GALLO cigarette trademark is the device of a large rooster
"ordinary purchaser" refers to one "accustomed to buy, and therefore to facing left, outlined in black against a gold background. The roosters
some extent familiar with, the goods in question." color is either green or red green for GALLO menthols and red for
GALLO filters. Directly below the large rooster device is the word
There is no confusing similarity between the subject marks. While both GALLO. The rooster device is given prominence in the GALLO cigarette
marks use the shape of a shark, the Court noted distinct visual and aural packs in terms of size and location on the labels.
differences between them. In Great White Shark's "GREG NORMAN
LOGO," there is an outline of a shark formed with the use of green, 12 Dermaline v Myra Pharmaceuticals, G.R. No. 190065 (2010)
yellow, blue and red lines/strokes Topic: Aural effects
Doctrine: In determining if there is confusing similarity to the trademarks
In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated of the parties, the tests are dominancy test and holistic test. In dominancy
in letters outlined in the form of a shark with the letter "S" forming the test there is greater consideration are the aural and visual impressions
head, the letter "H" forming the fins, the letters "A" and "R" forming the created by the marks in the public mind, giving little weight to factors like
body, and the letter "K" forming the tail. In addition, the latter mark prices, quality, sales outlets, and market segments. Section 155.1 of R.A.
includes several more elements such as the word "SHARK" in a different No. 8293 provides:155.1. Use in commerce any reproduction,
font underneath the shark outline, layers of waves, and a tree on the right counterfeit, copy, or colorable imitation of a registered mark or the same
side, and liberally used the color blue with some parts in red, yellow, container or a dominant feature thereof in connection with the sale,
green and white. offering for sale, distribution, advertising of any goods or services
including other preparatory steps necessary to carry out the sale of any
the visual dissimilarities between the two marks are evident and goods or services on or in connection with which such use is likely to
significant, negating the possibility of confusion in the minds of the cause confusion, or to cause mistake, or to deceive;
ordinary purchaser, especially considering the distinct aural difference
between the marks. Emergency Recit: Dermaline sought the registration of its trademark but
Finally, there being no confusing similarity between the subject marks, Myra opposed since it will be confusingly similar to its trademark
the matter of whether Great White Shark's mark has gained recognition Dermalin. The SC ruled that Dermaline’s registration should not be
and acquired goodwill becomes unnecessary. granted since there will be confusing similarity. The Court used the
Dominancy test and it determined that the marks were aurally similar. It
Notes: further ruled that even if the marks were in different classifications, the
Petitioner's Caralde’s Logo mark of Dermaline is the normal expansion of the business of Myra.
Hence, the Court did not allow the registration.

Facts:
1. Dermaline, Inc. Filed before the Intellectual Property Office
(IPO) for registration of the trademark DERMALINE
DERMALINE, INC. Myra Pharmaceuticals, Inc.opposed the
registration since it alleged that the trademark sought to be
registered resembles Myra’s DERMALIN and will cause
VS confusion, mistake, and deception to the purchasing public.
Myra alleged that this will be in violation Sec. 123 of the IP
Great White’s Logo Code and that the use of the mark will diminish the good will
of Myra’s DERMALIN.(which was registered July 8, 1986 and
renewed for 10 yes on 2006; it has been using the trademark
since 1977)
2. Myra claimed that, despite Dermaline’s attempt to differentiate
its applied mark, the dominant feature is the term
DERMALINE, which is practically identical with its own
DERMALIN, more particularly that the first eight (8) letters of
11. - Mighty Corporation v. E. & J. Gallo Winery (2004) the marks are identical, and that notwithstanding the additional
Topic: Confusion of Goods vs. Confusion of Business letter E by Dermaline, the pronunciation for both marks are
Doctrine: identical. Further, both marks have three (3) syllables each,
 with each syllable identical in sound and appearance, even if be drawn as to whether one is confusingly similar to
the last syllable of DERMALINE consisted of four (4) letters the other.
while DERMALIN consisted only of three (3).  There are also 2 types of confusion. (1) confusion of goods
3. It shall also be noted that Dermaline attempted to have the (product confusion), where the ordinarily prudent purchaser
same trademark registered on June 3, 2003 and this was would be induced to purchase one product in the belief that he
already denied. Myra argued that its intellectual property right was purchasing the other; and (2) confusion of business
over its trademark is protected under Section 147 of R.A. No. (source or origin confusion), where, although the goods of the
8293. Myra claims that the mark of Dermaline is aurally similar parties are different, the product, the mark of which registration
to its own mark and that they will be benefitted from Myra’s is applied for by one party, is such as might reasonably be
reputation, goodwill and advertising and will lead the public assumed to originate with the registrant of an earlier product,
into believing that Dermaline is connected to Myra. and the public would then be deceived either into that belief or
4. Even if the products of Myra is classified under Classification into the belief that there is some connection between the two
44 (skin treatment) while Dermaline is classified under parties, though inexistent.
Classification 5 (pharmaceutical products) they are still  Here, the Court used the Dominancy test in determining if
related. Dermaline contended that, in determining if the there will be confusing similarity. Dermaline’s insistence that
subject trademarks are confusingly similar, a comparison of its applied trademark DERMALINE DERMALINE, INC. had
the words is not the only determinant, but their entirety must differences too striking to be mistaken from Myra’s DERMALIN
be considered in relation to the goods to which they are cannot, therefore, be sustained. While it is true that the two
attached, including the other features appearing in both labels. marks are presented differently Dermaline’s mark is written
It claimed that there were glaring and striking dissimilarities with the first DERMALINE in script going diagonally upwards
between the 2 trademarks, such that its trademark from left to right, with an upper case D followed by the rest of
DERMALINE DERMALINE, INC. speaks for itself (Res ipsa the letters in lower case, and the portion DERMALINE, INC. is
loquitur). Dermaline further argued that there could not be any written in upper case letters, below and smaller than the long-
relation between its trademark for health and beauty services hand portion; while Myra’s mark DERMALIN is written in an
from Myras trademark classified under medicinal goods upright font, with a capital D and followed by lower case letters
against skin disorders. the likelihood of confusion is still apparent. This is because
5. The IPO did not grant the registration of Dermaline. The Office they are almost spelled in the same way, except for
of the Director General of IPO denied the same since it was Dermaline’s mark which ends with the letter E, and they are
filed out of time. The CA affirmed the ruling of the IPO. pronounced practically in the same manner in three (3)
syllables, with the ending letter E in Dermaline’s mark
Issue: WON the mark of Dermaline can be registered? pronounced silently. Thus, when an ordinary purchaser, for
example, hears an advertisement of Dermaline’s applied
Held: No. trademark over the radio, chances are he will associate it with
 A trademark is any distinctive word, name, symbol, emblem, Myra’s registered mark.
sign, or device, or any combination thereof, adopted and used  The Court also noted that even though they belong to different
by a manufacturer or merchant on his goods to identify and Classification (44 and 5) there can still be confusion since
distinguish them from those manufactured, sold, or dealt by pharmaceutical products of Dermaline falls under the normal
others. As Myra correctly posits, as a registered trademark expansion of business of Myra.
owner, it has the right under Section 147 of R.A. No. 8293 to
prevent third parties from using a trademark, or similar signs 13 Taiwan Kolin Corporation vs. Kolin Electronics, 209843 (2015)
or containers for goods or services, without its consent, Topic: NICE CLASSIFICATION (NCL) - INTERNATIONAL
identical or similar to its registered trademark, where such use CLASSIFICATION OF GOODS AND SERVICES
would result in a likelihood of confusion. Doctrine: The classification of the products under the NICE
 There are 2 tests to determine if there is likelihood of Classification of Laws1 (NCL) is merely part and parcel of the factors to
confusion: 1. Dominancy test and 2. Holistic test. be considered in ascertaining whether the goods are related
o The Dominancy Test focuses on the similarity of the
prevalent features of the competing trademarks that Facts:
might cause confusion or deception. It is applied 1. Taiwan Kolin filed with the IPO, then BPTTT a trademark
when the trademark sought to be registered application for the use of “KOLIN” on a combination of goods,
contains the main, essential and dominant features including:
of the earlier registered trademark, and confusion or a. colored televisions,
deception is likely to result. Duplication or imitation b. refrigerators,
is not even required; neither is it necessary that the c. window-type and split-type air conditioners
label of the applied mark for registration should d. Electric fans
suggest an effort to imitate. e. Water dispensers
o The important issue is whether the use of the marks 2. Taiwan Kolin elected Class 9 of the NICE Classification of
involved would likely cause confusion or mistake in Laws as the subject of its application, to wit:
the mind of or deceive the ordinary purchaser, or a. “Scientific, nautical, surveying, photographic,
one who is accustomed to buy, and therefore to cinematographic, optical, weighing, measuring,
some extent familiar with, the goods in question. signalling, checking (supervision), life-saving and
Given greater consideration are the aural and visual teaching apparatus and instruments; apparatus and
impressions created by the marks in the public instruments for conducting, switching, transforming,
mind, giving little weight to factors like prices, accumulating, regulating or controlling electricity;
quality, sales outlets, and market segments. apparatus for recording, transmission or
o On the other hand, the Holistic Test entails a reproduction of sound or images; magnetic data
consideration of the entirety of the marks as applied carriers, recording discs; automatic vending
to the products, including labels and packaging, in machines and mechanisms for coin-operated
determining confusing similarity. The scrutinizing apparatus; cash registers, calculating machines,
eye of the observer must focus not only on the data processing equipment and computers; fire-
predominant words but also on the other features extinguishing apparatus”
appearing in both labels so that a conclusion may

1 International Classification of Goods and Services also known as the Nice Classification good or service to choose from these classes as appropriate. Since the system is
was established by the Nice Agreement (1957),[1] is a system of classifying goods and recognized in numerous countries, this makes applying for trademarks internationally a
services for the purpose of registering trademarks. It is updated every five years and its more streamlined process. The classification system is specified by the World Intellectual
latest 11th[2] version of the system groups products into 45 classes (classes 1-34 include Property Organization (WIPO).
goods and classes 35-45 embrace services), and allows users seeking to trademark a
 3. Kolin electronics opposed the application of petitioner for the b. Taiwan Kolin’s television sets and DVD players perform
products of the latter being identical and confusingly similar distinct function and purpose from Kolin Electronics’ power
with the latter. Respondent’s products are: supply and audio equipment; and
a. voltage regulator, c. Taiwan Kolin sells and distributes its various home
b. converter, appliance products on wholesale and to accredited dealers,
c. recharger, whereas Kolin Electronics’ goods are sold and flow through
d. stereo booster, electrical and hardware stores.
e. AC-DC regulated power supply,
f. step-down transformer, and PA amplified AC-DC Clearly then, it was erroneous for respondent to assume over the CA to
4. The Bureau of Legal Affairs of the Intellectual Property Office conclude that all electronic products are related and that the coverage of
(BLA-IPO) denied the application of petitioner because one electronic product necessarily precludes the registration of a similar
respondent, as the registered owner of the mark “KOLIN” for mark over another. In this digital age wherein electronic products have
goods falling under Class 9 of the NCL, should be protected not only diversified by leaps and bounds, and are geared towards
against anyone who impinges its right interoperability, it is difficult to assert readily, as respondent simplistically
5. The IPO Director general reversed the BLA-IPO ruling on the did, that all devices that require plugging into sockets are necessarily
ground that product classification alone CANNOT serve as the related goods.
decisive factor in the resulution of WON the goods are related
and that emphasis should be on the similarity of the products Ratio: Verily, whether or not the products covered by the trademark
involved and not on the arbitrary classification of general sought to be registered by Taiwan Kolin, on the one hand, and those
description of their properties of characteristics. THE MERE covered by the prior issued certificate of registration in favor of Kolin
FACT THAT ONE PERSON HAS ADOPTED AND USED A Electronics, on the other, fall under the same categories in the NCL is
PARTICULAR TRADEMARK FOR HIS GOODS DOES NOT not the sole and decisive factor in determining a possible violation of
PREVENT THE ADOPTION AND USE OF THE SAME Kolin Electronics’ intellectual property right should petitioner’s application
TRADEMARK BY OTHERS ON ARTICLES OF A be granted. It is hornbook doctrine that emphasis should be on the
DIFFERENT DESCRIPTION similarity of the products involved and not on the arbitrary classification
6. CA reversed the IPO Director ruling or general description of their properties or characteristics. The mere fact
7. Hence, this Rule 45 petition that one person has adopted and used a trademark on his goods would
not, without more, prevent the adoption and use of the same trademark
Issues: by others on unrelated articles of a different kind.T he CA erred in
1. WON petitioner’s trademark registration should be denied on denying petitioner’s registration application
the ground that Kolin Electronics’ and Taiwan Kolin’s products
are closely-related not only because both fall under Class 9 of 14. Superior Commercial Enterprises Inc. v. Kunnan Enterprises
the NCL, but mainly because they both relate to electronic Topic: Distinguish Infringement of Trademark from Unfair Competition
products, instruments, apparatus, or appliances. Pushing the Doctrines:
point, respondent would argue that Taiwan Kolin and Kolin Section 22 of RA 166. Infringement, what constitutes.—Any person
Electronics’ goods are inherently similar in that they are all who [1] shall use, without the consent of the registrant, any reproduction,
plugged into electric sockets and perform a useful function counterfeit, copy or colorable imitation of any registered mark or
tradename in connection with the sale, offering for sale, or advertising of
Held: No. any goods, business or services on or in connection with which such use
is likely to cause confusion or mistake or to deceive purchasers or others
A certificate of trademark registration confers upon the trademark owner as to the source or origin of such goods or services, or identity of such
the exclusive right to sue those who have adopted a similar mark not business; or [2] reproduce, counterfeit, copy, or colorably imitate any
only in connection with the goods or services specified in the certificate, such mark or tradename and apply such reproduction, counterfeit, copy,
but also with those that are related thereto. or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection
In resolving one of the pivotal issues in this case––whether or not the with such goods, business or services, shall be liable to a civil action by
products of the parties involved are related––the doctrine in Mighty the registrant for any or all of the remedies herein provided.”
Corporation is authoritative. There, the Court held that the goods should
be tested against several factors before arriving at a sound conclusion To establish trademark infringement, the following elements must be
on the question of relatedness. Among these are: proven:
(a) the business (and its location) to which the goods belong; a. The validity of the plaintiff’s mark;
(b) the class of product to which the goods belong; b. The plaintiff’s ownership of the mark; and
(c) the product’s quality, quantity, or size, including the nature c. The use of the mark or its colorable imitation by the alleged infringer
of the package, wrapper or container; results in likelihood confusion.
(d) the nature and cost of the articles;
(e) the descriptive properties, physical attributes or essential Unfair competition has been defined as the passing off or attempting
characteristics with reference to their form, composition, to pass off upon the public of the goods and business of one person as
texture or quality; the goods or business of another with the end and probable effect of
(f) the purpose of the goods; deceiving the public.
(g) whether the article is bought for immediate consumption,
that is, day-to-day household items; The essential elements of unfair competition are:
(h) the fields of manufacture; a. Confusing similarity in the general appearance of the goods; and
(i) the conditions under which the article is usually purchased; b. Intent to deceive the public and defraud the competitor.
and
(j) the channels of trade through which the goods flow, how The True Test of Unfair Competition: Whether the acts of the
they are distributed, marketed, displayed and sold. defendant have the intent of deceiving or are calculated to deceive the
ordinary buyer making his purchases under the ordinary conditions of the
As mentioned, the classification of the products under the NCL is merely particular trade to which the controversy relates.
part and parcel of the factors to be considered in ascertaining whether
the goods are related. It is not sufficient to state that the goods involved Facts:
herein are electronic products under Class 9 in order to establish Kunnan appointed Superior as its exclusive distributor in the Philippines
relatedness between the goods, for this only accounts for one of many under a Distributorship Agreement which states that “Kunnan intends to
considerations enumerated in Mighty Corporation. In this case, credence acquire ownership of the Kennex Trademark registered by Superior
is accorded to petitioner’s assertions that: Commercial in the Philippines. Superior Commercial is desirious of being
a. Taiwan Kolin’s goods are classified as home appliances as appointed as the sole distributor of Kunnan products in the Philippines.”
opposed to Kolin Electronics’ goods which are power supply Superior’s President and General Manager misled Kunnan’s Officers into
and audio equipment accessories; believing that Kunnan could not acquire trademark rights in the
Philippines. Thus, Kunnan decided to assign its applications to register
“Pro Kennex” as a trademark to Superior, on condition that Superior Topic: Copyrightable v. Unprotected Works
acknowledged that Kunnan was still the real owner of the mark and Doctrine: Copyright, in the strict sense of the term, is purely a statutory
agreed to return to it to Kunnan on request. Upon termination of right. It is a new or independent right granted by the statute, and not
distributorship agreement with Superior, Kunnan appointed Sports simply a pre-existing right regulated by the statute. Being a statutory
Concept as its new distributor. Kunnan caused the publication of a grant, the rights are only such as the statute confers, and may be
Notice and Warning in the Manila Bulletin’s issue, stating that (1) it is the obtained and enjoyed only with respect to the subjects and by the
owner of the disputed trademarks; (2) it terminated its Distributorship persons, and on terms and conditions specified in the statute. Since
Agreement with Superior; and (3) it appointed Sports Concept as its copyright in published works is purely a statutory creation, a copyright
exclusive distributor. This notice prompted Superior to file its Complaint may be obtained only for a work falling within the statutory enumeration
for Infringement of Trademark and Unfair Competition against Kunnan. or description.
Prior to and during the pendency of the infringement and unfair
competition case before the RTC, Kunnan filed with the Bureau of Emergency Recit: BJPI holder of Rhonda and Me copyright filed a
Patents, Trademarks and Technology Transfer separate Petitions for the complaint against RPN 9’s show It’s a Date claiming that it violates their
Cancellation of Registration Trademarks involving the Kennex and Pro copyright. Sec. Of Justice Drilon requested the mastertapes be produced
Kennex trademarks. Kunnan filed the petition for cancellation on the in order to determine if there is a violation. BJPI refuses claiming that it
ground that Superior fraudulently registered and appropriated the is a product of their ingenuity and skill and thus entitled to copyright
disputed trademarks as mere distributor and not as lawful owner, and protection. SC rules, however, that copyrightable matters are only those
that it obtained the registrations and assignments of the disputed falling under Sec. 2 of PD 49 or Sec. 172 of IPC. TV show format, like
trademarks in violation of the terms of the Distributorship Agreement and Rhonda and Me, does not fall under the exclusive enumeration of said
Section 2-A and 17 of RA 166, as amended. Both the trial court and the laws. Thus, there is no copyright violation.
Court of Appeals ruled in favor of Kunnan.
Facts:
Issue: WON Superior, as a distributor, has true ownership over the BJ Productions, Inc. (BJPI) is the holder/grantee of a copyright dated
trademarks. Jan. 28, 1971, of Rhoda and Me, a dating game show aired from 1970
to 1977.
Held: No. An exclusive distributor does not acquire any proprietary
interest in the principal’s trademark and cannot register it, unless the Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an
owner has assigned the right. episode of Its a Date. Thus, he asked Gabriel M. Zosa, president and
general manager of IXL Productions, informing Zosa that BJPI had a
Trademark Infringement (see doctrine) copyright to Rhoda and Me and demanding that IXL discontinue airing
To establish trademark infringement, the following elements must be Its a Date.
proven:
a. The validity of the plaintiff’s mark; Zosa apologized to Joaquin and requested a meeting to discuss a
b. The plaintiff’s ownership of the mark; and possible settlement. IXL, however, continued airing Its a Date. In the
c. The use of the mark or its colorable imitation by the alleged infringer meantime, Zosa sought to copyright the first episode of Its a Date issued
results in likelihood confusion. by the National Library on Aug. 14, 1991.
Joaquin filed a complaint against Zosa together with officers of RPN
Based on these elements, the Court found it immediately obvious that Channel 9.
the second element was what the Registration Cancellation Case
decided with finality. On this element depended the validity of the Sec. of Justice Drilon reversed the finding of probable cause of the
registrations that, on their own, only gave rise to the presumption of, but prosecutors and moved to dismiss the case.
was not conclusive on, the issue of ownership. In no certain terms, the
appellate court in the Registration Cancellation Case ruled that Superior Joaquin claim that their failure to submit the copyrighted master
was a mere distributor and could not have been the owner, and was thus videotape of the television show Rhoda and Me was not raised in issue
an invalid registrant of the disputed trademarks. by Zosa et al., during the preliminary investigation and, therefore, it was
error for the Secretary of Justice to reverse the investigating prosecutors
The right to register a trademark is based on ownership, and therefore finding of probable cause on this ground.
only the owner can register it. In finding that Kunnan owned the marks,
the court considered the distributorship agreement and the so-called Drilon, however, claims that the master videotape should be presented
assignment agreement in their entirety; it confirmed that Superior had in order to determine whether there was probable cause for copyright
sought to be Kunnan’s exclusive distributor. infringement.

Unfair competition To further their argument, Joaquin claims that the format of Rhoda and
Unfair competition has been defined as the passing off or attempting to Me is a product of ingenuity and skill and is thus entitled to copyright
pass off upon the public of the goods and business of one person as the protection. The presentation of a point-by-point comparison of the
goods or business of another with the end and probable effect of formats of the two shows clearly demonstrates the nexus between the
deceiving the public. The essential elements of unfair competition are: 1) shows and hence establishes the existence of probable cause for
Confusing similarity in the general appearance of the goods; and 2) copyright infringement. Such being the case, they did not have to
Intent to deceive the public and defraud the competitor. produce the master tape.

The True Test of Unfair Competition: Whether the acts of the Issue: W/N Joaquin has copyright over the show format Rhonda and Me
defendant have the intent of deceiving or are calculated to deceive the
ordinary buyer making his purchases under the ordinary conditions of the Held: No. The format of the show is not copyrightable. Sec. 2 of P.D. No.
particular trade to which the controversy relates. 49, otherwise known as Decree of Intellectual Property, which is
substantially similar to Sec. 172 of Intellectual Property Code,
In the case, no evidence exist showing that Kunnan ever attempted to enumerates the classes of work entitled to copyright protection, to wit:
pass off goods it sold as those of Superior and that there is no bad faith
or fraud imputable to Kunnan in using the disputed trademarks. Superior Section 2. The rights granted by this Decree shall, from the moment of
failed to adduce any evidence to show that Kunnan by the above-cited creation, subsist with respect to any of the following classes of works:
acts intended to deceive the public as to the identity of the goods sold or (A) Books, including composite and cyclopedic works,
of the manufacturer of the goods sold. manuscripts, directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
There can be trademark infringement without unfair competition such as (C) Lectures, sermons, addresses, dissertations prepared for oral
when the infringer discloses on the labels containing the mark that he delivery;
manufactures the goods, thus preventing the public from being deceived (D) Letters;
that the goods originate from the trademark owner. (E) Dramatic or dramatico-musical compositions; choreographic
works and entertainments in dumb shows, the acting form of
15 - Joaquin, Jr., v. Drilon which is fixed in writing or otherwise;
 (F) Musical compositions, with or without words; sculptural work only if, and only to the extent that, such design
(G) Works of drawing, painting, architecture, sculpture, engraving, incorporates pictorial, graphic, or sculptural features that can be
lithography, and other works of art; models or designs for identified separately from, and are capable of existing independently of,
works of art; the utilitarian aspects of the article.
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of Facts: Petitioners are officers and directors of Metrotech while
manufacture, whether or not patentable, and other works of respondent Lim is the chairman of LEC Steel Manufacturing Corporation
applied art; (LEC). LEC was invited by the architects of the Manansala Project, a
(J) Maps, plans, sketches, and charts; high-end residential building in Rockwell, to submit design/drawings and
(K) Drawings or plastic works of a scientific or technical character; specifications for interior and exterior hatch doors. The final shop
(L) Photographic works and works produced by a process plans/drawings were submitted by LEC and thereafter copied and
analogous to photography; lantern slides; transferred to the title block of SKI-FB, the Project's contractor, and then
(M) Cinematographic works and works produced by a process stamped approved for construction. LEC was thereafter subcontracted
analogous to cinematography or any process for making by SKI-FB, to manufacture and install interior and exterior hatch doors
audio-visual recordings; for the 7th to 22nd floors of the Project based on the final shop
(N) Computer programs; plans/drawings. Sometime thereafter, LEC learned that Metrotech was
(O) Prints, pictorial illustrations advertising copies, labels, tags, also subcontracted to install interior and exterior hatch doors for the
and box wraps; Project's 23rd to 41st floors. LEC demanded Metrotech to cease from
(P) Dramatizations, translations, adaptations, abridgements, infringing its intellectual property rights. Metrotech, however, insisted that
arrangements and other alterations of literary, musical or no copyright infringement was committed because the hatch doors it
artistic works or of works of the Philippine government as manufactured were patterned in accordance with the drawings provided
herein defined, which shall be protected as provided in Section by SKI-FB. LEC sought assistance from the NBI and raided petitioners.
8 of this Decree. Lim then filed a Complaint-Affidavit before the DOJ against the
(Q) Collections of literary, scholarly, or artistic works or of works petitioners for copyright infringement.
referred to in Section 9 of this Decree which by reason of the
selection and arrangement of their contents constitute Issue: Are the hatch doors copyrightable?
intellectual creations, the same to be protected as such in
accordance with Section 8 of this Decree. Held: No. [See Doctrine]. LEC's hatch doors bore no design elements
(R) Other literary, scholarly, scientific and artistic works. that are physically and conceptually separable, independent and
distinguishable from the hatch door itself. The allegedly distinct set of
Copyright, in the strict sense of the term, is purely a statutory right. It is hinges and distinct jamb, were related and necessary hence, not
a new or independent right granted by the statute, and not simply a pre- physically or conceptually separable from the hatch door's utilitarian
existing right regulated by the statute. Being a statutory grant, the rights function as an apparatus for emergency egress. Without them, the hatch
are only such as the statute confers, and may be obtained and enjoyed door will not function. More importantly, they are already existing articles
only with respect to the subjects and by the persons, and on terms and of manufacture sourced from different suppliers. Based on the records,
conditions specified in the statute. Since copyright in published works is it is unrebutted that: (a) the hinges are similar to those used in truck
purely a statutory creation, a copyright may be obtained only for a work doors; (b) the gaskets were procured from a company
falling within the statutory enumeration or description. named Pemko and are not original creations of LEC; and (c) the locking
device are ordinary drawer locks commonly used in furniture and office
PD No. 49, Sec. 2 in enumerating what are subject to copyright, refers desks.
to finished works and not to concepts. The copyright does not extend to
an idea, procedure, process, system, method of operation, concept, Being articles of manufacture already in existence, they cannot be
principle, or discovery, regardless of the form in which it is described, deemed as original creations. As earlier stated, valid copyright
explained, illustrated, or embodied in such work. ownership denotes originality of the copyrighted material. Originality
means that the material was not copied, evidences at least minimal
In Sec. 175 of IPC which provides: Unprotected Subject Matter. - creativity and was independently created by the author. 70 It connotes
Notwithstanding the provisions of Sections 172 and 173, no protection production as a result of independent labor.71 LEC did not produce the
shall extend, under this law, to any idea, procedure, system, method or door jambs and hinges; it bought or acquired them from suppliers and
operation, concept, principle, discovery or mere data as such, even if thereafter affixed them to the hatch doors. No independent original
they are expressed, explained, illustrated or embodied in a work; news creation can be deduced from such acts.
of the day and other miscellaneous facts having the character of mere
items of press information; or any official text of a legislative, MISSING CASE #17, 18
administrative or legal nature, as well as any official translation thereof.
19 - Habana v. Robles
The copyright does not extend to the general concept or format of its Topic: Infringement and Remedies
dating game show. Mere description by words of the general format of DOCTRINE: If so much is taken that the value of the original work is
the two dating game shows is insufficient; the presentation of the master substantially diminished, there is an infringement of copyright and to an
videotape in evidence was indispensable to the determination of the injurious extent, the work is appropriated.
existence of probable cause
EMERGENCY RECIT: Petitioners filed a complaint for Infringement
As observed by Sec. of Justice Drilon; A television show includes more and/or unfair competition with damages against private respondents for
than mere words can describe because it involves a whole spectrum of the latter’s act in lifting substantial portions of the former’s book without
visuals and effects, video and audio, such that no similarity or their (petitioner’s) consent. The RTC and CA found no infringement but
dissimilarity may be found by merely describing the general the SC held otherwise. The SC also stated that it does not necessarily
copyright/format of both dating game shows. require that the entire copyrighted work, or even a large portion of it, be
copied to constitute substantial reproduction. But if so much is taken that
16. Olano v. Lim the value of the original work is substantially diminished, there is an
Doctrine: A "useful article" defined as an article "having an intrinsic infringement of copyright and to an injurious extent, the work is
utilitarian function that is not merely to portray the appearance of the appropriated.
article or to convey information" is excluded from copyright eligibility.
Facts:
The only instance when a useful article may be the subject of copyright Petitioners are authors and copyright owners of duly issued certificates
protection is when it incorporates a design element that is physically or of copyright registration covering their published works, produced
conceptually separable from the underlying product. This means that the through their combined resources and efforts, entitled COLLEGE
utilitarian article can function without the design element. In such an ENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and
instance, the design element is eligible for copyright protection. WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.

The design of a useful article shall be considered a pictorial, graphic, or

Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author, if appearing on the work are mentioned; (Sec. 11 third par. P.D.
author/publisher and distributor/seller of another published work entitled 49)
DEVELOPING ENGLISH PROFICIENCY (DEP for brevity), Books 1 and (xxx)
2 (1985 edition) which book was covered by copyrights issued to them.
(e) The inclusion of a work in a publication, broadcast, or other
In the course of revising their published works, petitioners scouted and communication to the public, sound recording of film, if such inclusion is
looked around various bookstores to check on other textbooks dealing made by way of illustration for teaching purposes and is compatible with
with the same subject matter. By chance they came upon the book of fair use: Provided, That the source and the name of the author, if
respondent Robles and upon perusal of said book they were surprised appearing in the work is mentioned;
to see that the book was strikingly similar to the contents, scheme of
presentation, illustrations and illustrative examples in their own book, In the above quoted provisions, “work” has reference to literary and
CET. artistic creations and this includes books and other literary, scholarly and
scientific works. A perusal of the records yields several pages of the book
After an itemized examination and comparison of the two books (CET DEP that are similar if not identical with the text of CET. In several other
and DEP), petitioners found that several pages of the respondent’s book pages the treatment and manner of presentation of the topics of DEP are
are similar, if not all together a copy of petitioners’ book, which is a case similar if not a rehash of that contained in CET.
of plagiarism and copyright infringement.
The SC believes that respondent Robles’ act of lifting from the book of
Petitioners then made demands for damages against respondents and petitioners substantial portions of discussions and examples, and her
also demanded that they cease and desist from further selling and failure to acknowledge the same in her book is an infringement of
distributing to the general public the infringed copies of respondent petitioners’ copyrights.
Robles’ works.
When is there a substantial reproduction of a book? It does not
However, respondents ignored the demands so petitioners filed with the necessarily require that the entire copyrighted work, or even a large
RTC a complaint for Infringement and/or unfair competition with portion of it, be copied. If so much is taken that the value of the original
damages against private respondents. work is substantially diminished, there is an infringement of copyright and
to an injurious extent, the work is appropriated.
In the complaint, petitioners alleged that in 1985, respondent Felicidad
C. Robles being substantially familiar with the contents of petitioners’ In determining the question of infringement, the amount of matter copied
works, and without securing their permission, lifted, copied, plagiarized from the copyrighted work is an important consideration. To constitute
and/or transposed certain portions of their book CET. The textual infringement, it is not necessary that the whole or even a large portion of
contents and illustrations of CET were literally reproduced in the book the work shall have been copied. If so much is taken that the value of the
DEP. original is sensibly diminished, or the labors of the original author are
substantially and to an injurious extent appropriated by another, that is
Despite the demands of the petitioners for respondents to desist from sufficient in point of law to constitute piracy. Infringement of a copyright
committing further acts of infringement and for respondent to recall DEP is a trespass on a private domain owned and occupied by the owner of
from the market, respondents refused. the copyright, and, therefore, protected by law, and infringement of
copyright, or piracy, which is a synonymous term in this connection,
Respondent denies the allegations of plagiarism. Respondent stressed consists in the doing by any person, without the consent of the owner of
that (1) the book DEP is the product of her independent researches, the copyright, of anything the sole right to do which is conferred by
studies and experiences, and was not a copy of any existing valid statute on the owner of the copyright.
copyrighted book; (2) DEP followed the scope and sequence or syllabus
which are common to all English grammar writers as recommended by The respondents claim that their similarity in style can be attributed to
the Association of Philippine Colleges of Arts and Sciences (APCAS), so the fact that both of them were exposed to the APCAS syllabus and their
any similarity between the respondents book and that of the petitioners respective academic experience, teaching approach and methodology
was due to the orientation of the authors to both works and standards are almost identical because they were of the same background.
and syllabus; and (3) the similarities may be due to the authors’ exercise
of the „right to fair use of copyrighted materials, as guides. However, we believe that even if petitioners and respondent Robles were
of the same background in terms of teaching experience and orientation,
The TC dismissed the petition. The CA rendered a decision in favor of it is not an excuse for them to be identical even in examples contained
respondents. in their books. The similarities in examples and material contents are so
obviously present in this case. How can similar/identical examples not
Issue: W/N the CA erred in holding that there was no copyright be considered as a mark of copying?
infringement done by the respondent?
The SC considers as an indicia of guilt or wrongdoing the act of
Held: Yes. respondent Robles of pulling out from Goodwill bookstores the book DEP
Section 177 provides for the copy or economic rights of an owner of a upon learning of petitioners’ complaint while pharisaically denying
copyright as follows: petitioners’ demand. It was further noted that when the book DEP was
Sec. 177. Copy or Economic rights.·Subject to the provisions of chapter re-issued as a revised version, all the pages cited by petitioners to
VIII, copyright or economic rights shall consist of the exclusive right to contain portion of their book College English for Today were eliminated.
carry out, authorize or prevent the following acts:
177.1 Reproduction of the work or substantial portion of the work; (xxx); In cases of infringement, copying alone is not what is prohibited. The
copying must produce an “injurious effect.” Here, the injury consists in
The law also provided for the limitations on copyright, thus: that respondent Robles lifted from petitioners’ book materials that were
Sec. 184.1 Limitations on copyright.·Notwithstanding the provisions of the result of the latter’s research work and compilation and
Chapter V, the following acts shall not constitute infringement of misrepresented them as her own. She circulated the book DEP for
copyright: commercial use and did not acknowledge petitioners as her source.
Hence, there is a clear case of appropriation of copyrighted work for her
(a) the recitation or performance of a work, once it has been lawfully benefit that respondent Robles committed.
made accessible to the public, if done privately and free of charge or if
made strictly for a charitable or religious institution or society; [Sec. 10(1), 20– DEL MONTE CORP. v CA and Sunshine Sauce Manufacturing
P.D. No. 49] Industries (1990)
Topic: Infringement and remedies
(b) The making of quotations from a published work if they are Doctrine: To determine whether a trademark has been infringed, we
compatible with fair use and only to the extent justified for the purpose, must consider the mark as a whole and not as dissected.
including quotations from newspaper articles and periodicals in the form
of press summaries; Provided, that the source and the name of the Emergency Recit: Del Monte is a foreign corporation organized under
the laws of the US and not engaged in business in the PH. Philpack, a
domestic corporation was granted the right to manufacture, distribute HELD: YES. While the Court does recognize that there are distinctions
and sell in the Philippines various agricultural products, including catsup between the two products, it does not agree with the conclusion that
under the Del Monte trademark and logo. Philpack registered the Del there was no infringement or unfair competition. The question is not
Monte catsup bottle before the Philippine Patent Office, for which it was whether the two articles are distinguishable by their label when set side
granted Certificate of Trademark Registration. Sunshine is engaged in by side but whether the general confusion made by the article upon the
the manufacture, packing, distribution and sale of various kinds of sauce, eye of the casual purchaser who is unsuspicious and off his guard, is
identified by the logo Sunshine Fruit Catsup. The logo of Sunshine was such as to likely result in his confounding it with the original.
registered in the Supplemental Register. The product of Sunshine was
contained in various bottles, including Del Monte bottle. Del Monte filed To determine whether a trademark has been infringed, we must consider
a case against Sunshine because it was using Del Monte bottles and its the mark as a whole and not as dissected. If the buyer is deceived, it is
logo is confusingly similar with Del Monte’s logo. The Court held that attributable to the marks as a totality, not usually to any part of it. The
Sunshine committed infringement. As previously stated, the person who court therefore should be guided by its first impression for a buyer acts
infringes a trade mark does not normally copy out but only makes quickly and is governed by a casual glance, the value of which may be
colorable changes, employing enough points of similarity to confuse the dissipated as soon as the court assumes to analyze carefully the
public with enough points of differences to confuse the courts. Even if respective features of the mark.
the labels were analyzed together it is not difficult to see that the
Sunshine label is a colorable imitation of the Del Monte trademark. The A confusing similarity will justify the intervention of equity. The judge
predominant colors used in the Del Monte label are green and red- must also be the fact that usually a defendant in cases of infringement
orange, the same with Sunshine. The word “catsup” in both bottles is does not normally copy but makes only colorable changes. Well has it
printed in white and the style of the print/letter is the same. Although the been said that the most successful form of copying is to employ enough
logo of Sunshine is not a tomato, the figure nevertheless approximates points of similarity to confuse the public with enough points of difference
that of a tomato. Sunshine however is not guilty of infringement for to confuse the courts.
having used the Del Monte bottle. The reason is that the configuration of
the said bottle was merely registered in the Supplemental Register. At that, even if the labels were analyzed together it is not difficult to see
Although Del Monte has actual use of the bottle’s configuration, the that the Sunshine label is a colorable imitation of the Del Monte
petitioners cannot claim exclusive use thereof because it has not been trademark. The predominant colors used in the Del Monte label are
registered in the Principal Register. However, we find that Sunshine, green and red- orange, the same with Sunshine. The word “catsup” in
despite the many choices available to it and notwithstanding that the both bottles is printed in white and the style of the print/letter is the same.
caution “Del Monte Corporation, Not to be Refilled” was embossed on Although the logo of Sunshine is not a tomato, the figure nevertheless
the bottle, still opted to use the petitioners’ bottle to market a product approximates that of a tomato.
which Philpack also produces. This clearly shows the private
respondent’s bad faith and its intention to capitalize on the latter’s As previously stated, the person who infringes a trade mark does not
reputation and goodwill and pass off its own product as that of Del Monte. normally copy out but only makes colorable changes, employing enough
points of similarity to confuse the public with enough points of differences
FACTS: to confuse the courts. What is undeniable is the fact that when a
 Petitioner Del Monte Corporation is a foreign company manufacturer prepares to package his product, he has before him a
organized under the laws of the US and not engaged in boundless choice of words, phrases, colors and symbols sufficient to
business in the Philippines. Petitioner Philippine Packing Corp distinguish his product from the others. When as in this case, Sunshine
(Philpack) is a domestic corporation duly organized under the chose, without a reasonable explanation, to use the same colors and
laws of the Philippines. letters as those used by Del Monte though the field of its selection was
 Del Monte granted Philpack the right to manufacture, distribute so broad, the inevitable conclusion is that it was done deliberately to
and sell in the Philippines various agricultural products, deceive.
including catsup, under the Del Monte trademark and logo.
 Del Monte authorized Philpack to register with the Philippine Sunshine however is not guilty of infringement for having used the Del
Patent Office under the Supplemental Register the Del Monte Monte bottle. The reason is that the configuration of the said bottle was
catsup bottle configuration, for which it was granted Certificate merely registered in the Supplemental Register. Although Del Monte has
of Trademark Registration. Del Monte also obtained two actual use of the bottle’s configuration, the petitioners cannot claim
registration certificates for its trademark “DEL MONTE” and its exclusive use thereof because it has not been registered in the Principal
logo. Register. However, we find that Sunshine, despite the many choices
 Respondent Sunshine Sauce Manufacturing Industries available to it and notwithstanding that the caution “Del Monte
(Sunshine) was issued a Certificate of Registration by the Corporation, Not to be Refilled” was embossed on the bottle, still opted
Bureau of Domestic Trade to engage in the manufacture, to use the petitioners’ bottle to market a product which Philpack also
packing, distribution and sale of various kinds of sauce, produces. This clearly shows the private respondent’s bad faith and its
identified by the logo Sunshine Fruit Catsup. The logo was intention to capitalize on the latter’s reputation and goodwill and pass off
registered in the Supplemental Register. The product itself its own product as that of Del Monte.
was contained in various bottles, including the Del Monte
bottle, which the private respondent bought from the junk As Sunshine’s label is an infringement of the Del Monte’s trademark, law
shops for recycling. and equity call for the cancellation of the private respondent’s registration
 Del Monte received reports that Sunshine was using its bottles and withdrawal of all its products bearing the questioned label from the
and its logo was confusingly similar with Del Monte. Thus, it market. With regard to the use of Del Monte’s bottle, the same
filed a complaint against Sunshine for infringement of constitutes unfair competition; hence, the respondent should be
trademark and unfair competition. permanently enjoined from the use of such bottles.
 Sunshine alleged that it had long ceased to use the Del Monte
bottle and that its logo was substantially different from Del NOTE:
Monte logo would not confuse the buying public. The following distinctions between infringement of trademark and unfair
 RTC of Makati dismissed the complaint. It held that there were competition: (1) Infringement of trademark is the unauthorized use of a
substantial differences between the logos or trademarks of the trademark, whereas unfair competition is the passing off of one’s goods
parties; that the defendant Sunshine had ceased using the as those of another. (2) In infringement of trademark fraudulent intent is
bottles; and that the defendant became the owner of the unnecessary, whereas in unfair competition fraudulent intent is essential.
bottles upon its purchase from the junkyards. It likewise held (3) In infringement of trademark the prior registration of the trademark is
that the complaints failed to establish malice or bad faith, a prerequisite to the action, whereas in unfair competition registration is
which was an essential element of infringement of trademark not necessary.
or unfair competition.
21 – RUBBER CORP. v. Jacinto Rubber and Plastics (2009)
 CA affirmed the judgment of the RTC.
Topic: Infringement and Remedies
Doctrine: We fully agree with the trial court that „the respective designs,
ISSUE: Whether or not Sunshine committed infringement?
shapes, the colors of the ankle patches, the bands, the toe patch and the
soles of the two products are exactly the same . . . (such that) at a
distance of a few meters, it is impossible to distinguish “Custombuilt” of its program line-up ABS-CBN Channels 2 and 23, among others. ABS-
from “Chuck Taylor” These elements are more than sufficient to serve as CBN demanded for PMSI to cease and desist from rebroadcasting
basis for a charge of unfair competition. Even if not all the details just Channels 2 and 23. PMSI replied that the rebroadcasting was in
mentioned were identical, with the general appearances alone of the two accordance with the authority granted it by National Telecommunications
products, any ordinary, or even perhaps even a not too perceptive and Commission (NTC) and its obligation under NTC Memorandum Circular
discriminating customer could be deceived, and, therefore, Custombuilt which requires all cable television system operators to carry the
could easily be passed off for Chuck Taylor. Jurisprudence supports the television signals of the authorized television broadcast stations. ABS-
view that under such circumstances, the imitator must be held liable. CBN filed with the IPO a complaint for Violation of Laws Involving
Property Rights, with Prayer for the Issuance of a Temporary Restraining
Emergency Recit: Petitioner Converse (U.S.A) filed a case for unfair Order and/or Writ of Preliminary Injunction. It alleged that PMSIs
competition against respondent for manufacturing shoes under the brand unauthorized rebroadcasting of Channels 2 and 23 infringed on its
“Custombuilt”. Petitioner was alleging that their product “chuck taylor” is broadcasting rights and copyright.
deceptively similar with the “custombuilt” shoes of respondent. Issue in
this case is WON respondent is guilty of unfair competition. SC said Yes. Issue: WON PMSI infringed on ABS CBN’s copyright.
The respective designs, the shapes and the color of the ankle patch, the
bands, the toe patch and the sole of the two products are exactly the Held: NO.
same. At a distance of a few meters, it is impossible to distinguish
“Custombuilt” from “Chuck Taylor”. The casual buyer is thus liable to The law on copyright is not absolute. The IP Code provides that:
mistake one for the other. SC also held that RTC has jurisdiction in this
case. Sec. 184. Limitations on Copyright. -
184.1. X x x, the following acts shall not constitute infringement
Facts: Plaintiff Converse Rubber Corporation, (is) an American of copyright:
Corporation, manufacturer (of) canvas rubber shoes under the trade xxxx
name “Converse Chuck Taylor All Star”; in the Philippines, it has an (h) The use made of a work by or under the direction or control
exclusive licensee, plaintiff Edwardson Manufacturing Corporation, for of the Government, x x x.
the manufacture and sale in the Philippines of its product.
In 1963, plaintiff Converse and defendant Jacinto entered into protracted The carriage of ABS-CBNs signals by virtue of the must-carry rule in
negotiations for a licensing agreement whereby defendant Jacinto would Memorandum Circular is under the direction and control of the
be the exclusive license of plaintiff Converse in the Philippines for the government though the NTC which is vested with exclusive jurisdiction
manufacture and sale of “Chuck Taylor” shoes but with the right to to supervise, regulate and control telecommunications and broadcast
continue manufacturing and selling its own products. services/facilities in the Philippines. The imposition of the must-carry rule
is within the NTCs power to promulgate rules and regulations, as public
Issue: WON respondent is guilty of Unfair Competition safety and interest may require, to encourage a larger and more effective
use of communications, radio and television broadcasting facilities, and
Held: YES. to maintain effective competition among private entities in these activities
The Court sees no difficulty in finding that the competing products are whenever the Commission finds it reasonably feasible. Accordingly, the
identical in appearance except for the trade names. The respective Must-Carry Rule under NTC Circular falls under the foregoing category
designs, the shapes and the color of the ankle patch, the bands, the toe of limitations on copyright.
patch and the sole of the two products are exactly the same. At a
distance of a few meters, it is impossible to distinguish Custombuilt from 23. Prosource International, Inc. Vs. Horphag Research
Chuck Taylor. The casual buyer is thus liable to mistake one for the Management, SA
other. Only by a close-examination and by paying attention to the trade Topic: [Trademark] Infringement & Remedies
names will the ordinary buyer be able to tell that the product is either
Custombuilt or Chuck Taylor, as the case may be. Doctrine:
It is the element of “likelihood of confusion” that is the gravamen of
Issue: WON Ph court has jurisdiction trademark infringement; In trademark infringement cases, precedents
must be evaluated in the light of each particular case.
Held: Yes. in light of the explicit provision of Section 21 (a) of Republic
Act No. 166, as amended, that a foreign corporation, whether or not In determining similarity and likelihood of confusion, jurisprudence has
licensed to transact business in the Philippines may bring an action for developed two tests: the Dominancy Test and the Holistic or Totality
unfair competition provided the country of which it is a citizen, or in which Test.
it is domiciled, by treaty, convention or law, grants a similar privilege to
juristic persons in the Philippines. The Convention of Paris for the The Dominancy Test focuses on the similarity of the prevalent features
Protection of Industrial Property, to which the Philippines adheres, of the competing trademarks that might cause confusion and deception,
provides, on a reciprocal basis that citizens of a union member may file thus constituting infringement.
an action for unfair competition and infringement of trademarks, patents,
etc. (61 O. G. 8010) in any of the union members. In contrast, the Holistic Test entails a consideration of the entirety of the
The United States of America, of which Converse Rubber is a citizen, is marks as applied to the products, including the labels and packaging, in
also a signatory to this Convention. Section 1126 (b) and (h) of Public determining confusing similarity.
Law 489 of the United States of America allows corporations organized
under the laws of the Philippines to file an action for unfair competition in Facts:
the United States of America, whether or not it is licensed to do business Respondent Horphag is a foreign corporation (incorporated under the
in the United States. laws of Switerzerland), and owner of the trademark PYCNOGENOL, a
food supplement sold and distributed by Zuellig Pharma Corporation.
22. - ABS CBN v. PMSI (2009) Petitioner Prosource is a domestic corporation.
Topic: Doctrine of Fair Use; Infringement and remedies
Doctrine: The law on copyright is not absolute. The IP Code provides At some point in time, Respondent discovered that petitioner Prosource
limitations on copyright --- the use made of a work by or under the International, Inc. was also distributing a similar food supplement using
direction or control of the Government, among others. Accordingly, the the mark PCO-GENOLS since 1996. Thus, the former demanded the
Must-Carry Rule under NTC Circular falls under the foregoing category latter to stop using the said mark. Subsequently and without notifying
of limitations on copyright. respondent, petitioner discontinued the use of, and withdrew from the
market, the products under the name PCO-GENOLS as of June 19,
Facts: 2000. It, likewise, changed its mark from PCO-GENOLS to PCO-PLUS.
Petitioner ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed to
engage in television and radio broadcasting. Respondent Philippine Respondent (as plaintiff) then filed a complaint with the RTC against
Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting Petitioner for Infringement of Trademark. In its Answer, petitioner
System. It delivers digital direct-to-home (DTH) television via satellite contended that respondent could not file the infringement case
(cable service) to its subscribers all over the Philippines. it offered as part considering that the latter is not the registered owner of the trademark
PYCNOGENOL, but one Horphag Research Limited. It, likewise,
claimed that the two marks were not confusingly similar. Finally, it denied
liability, since it discontinued the use of the mark prior to the institution of
the infringement case. Petitioner thus prayed for the dismissal of the
complaint.

RTC: Ruled in favor of Respondent Horphag. It observed that

PYCNOGENOL and PCO-GENOLS have the same suffix GENOL which
appears to be merely descriptive and thus open for trademark
registration by combining it with other words. The trial court, likewise,
concluded that the marks, when read, sound similar, and thus
confusingly similar especially since they both refer to food supplements.
The court added that petitioners liability was not negated by its act of
pulling out of the market the products bearing the questioned mark since
the fact remains that from 1996 until June 2000, petitioner had infringed
respondents product by using the trademark PCO-GENOLS.

CA: Ruled in favor of Respondent Horphag. The appellate court

explained that under the Dominancy or the Holistic Test, PCO-GENOLS
is deceptively similar to PYCNOGENOL.

Issue & Held: Did Petitioner Prosource commit Trademark

Infringement?

YES. The SC found no reason to depart from the ruling of the CA which
sustained that of the RTC. It held that The trial and appellate courts
applied the Dominancy Test in determining whether there was a
confusing similarity between the marks PYCNOGENOL and PCO-
GENOL. Applying the test, the trial court found, and the CA affirmed,
that:

Both the word[s] PYCNOGENOL and PCO-

GENOLS have the same suffix GENOL which on
evidence, appears to be merely descriptive and
furnish no indication of the origin of the article and
hence, open for trademark registration by the
plaintiff thru combination with another word or
phrase such as PYCNOGENOL, Exhibits A to A-3.
Furthermore, although the letters Y between P and
C, N between O and C and S after L are missing in
the [petitioners] mark PCO-GENOLS, nevertheless,
when the two words are pronounced, the sound
effects are confusingly similar not to mention that
they are both described by their manufacturers as a
food supplement and thus, identified as such by
their public consumers. And although there were
dissimilarities in the trademark due to the type of
letters used as well as the size, color and design
employed on their individual packages/bottles, still
the close relationship of the competing products
name in sounds as they were pronounced, clearly
indicates that purchasers could be misled into
believing that they are the same and/or originates
from a common source and manufacturer

Furthermore, the SC held that: Finally, we reiterate that the issue of

trademark infringement is factual, with both the trial and appellate courts
finding the allegations of infringement to be meritorious. As we have
consistently held, factual determinations of the trial court, concurred in
by the CA, are final and binding on this Court. Hence, petitioner is liable
for trademark infringement.