Philip Morris, Inc. et.al. v.

Fortune Tobacco Corporation manifested [being registered owners of the trademark

526 Phil. 300 "MARK VII" and "MARK TEN" for cigarettes as
evidenced by the corresponding certificates of
registration and an applicant for the registration of the
GARCIA, J.: trademark "LARK MILDS"]. xxx. [Petitioners] claimed
that they have registered the aforementioned trademarks
Via this petition for review under Rule 45 of the Rules of in their respective countries of origin and that, by virtue
Court, herein petitioners Philip Morris, Inc., Benson & of the long and extensive usage of the same, these
Hedges (Canada) Inc., and Fabriques de Tabac Reunies, trademarks have already gained international fame and
S.A. (now Philip Morris Products S.A.) seek the reversal acceptance.  Imputing bad faith on the part of the
and setting aside of the following issuances of the Court [respondent],  petitioners claimed that the [respondent],
of Appeals (CA) in CA-G.R. CV No. 66619, to wit: without any previous consent from any of the
[petitioners], manufactured and sold cigarettes bearing
1. Decision dated January 21, 2003 [1] affirming an the identical and/or confusingly similar trademark
earlier decision of the Regional Trial Court of "MARK" xxx Accordingly, they argued that
Pasig City, Branch 166, in its Civil Case No. [respondent's] use of the trademark "MARK" in its
47374, which dismissed the complaint for cigarette products have caused and is likely to cause
trademark infringement and damages thereat confusion or mistake, or would deceive purchasers and
commenced by the petitioners against the public in general into buying these products under
respondent Fortune Tobacco Corporation; and the impression and mistaken belief that they are buying
2. [petitioners']  products.
3. Resolution dated May 30, 2003 [2] denying
petitioners' motion for reconsideration. Invoking the provisions of the Paris Convention for the
Protection of Industrial and Intellectual Property (Paris
Convention, for brevity), to which the Philippines is a
Petitioner Philip Morris, Inc., a corporation organized
signatory xxx, [petitioners] pointed out that upon the
under the laws of the State of Virginia, United States of
request of an interested party, a country of the Union
America, is, per Certificate of Registration No. 18723
may prohibit the use of a trademark which constitutes a
issued on April 26, 1973 by the Philippine Patents Office
reproduction, imitation, or translation of a mark already
(PPO), the registered owner of the trademark "MARK
belonging to a person entitled to the benefits of the said
VII" for cigarettes. Similarly, petitioner Benson &
Convention. They likewise argued that, in accordance
Hedges (Canada), Inc., a subsidiary of Philip Morris,
with Section 21-A in relation to Section 23 of Republic
Inc., is the registered owner of the trademark "MARK
Act 166, as amended, they are entitled to relief in  the
TEN" for cigarettes as evidenced by PPO Certificate of
form of damages xxx [and] the issuance of a writ of
Registration No. 11147. And as can be seen in Trademark
preliminary injunction which should be made permanent
Certificate of Registration No. 19053, another subsidiary
to enjoin perpetually the [respondent] from violating
of Philip Morris, Inc., the Swiss company Fabriques de
[petitioners'] right to the exclusive use of their
Tabac Reunies, S.A., is the assignee of the trademark
aforementioned trademarks.
"LARK," which was originally registered in 1964 by
Ligget and Myers Tobacco Company. On the other hand,
[Respondent] filed its Answer xxx denying [petitioners']
respondent Fortune Tobacco Corporation, a company
material allegations and xxx averred [among other
organized in the Philippines, manufactures and sells
things] xxx that "MARK" is a common word, which
cigarettes using the trademark "MARK."
cannot particularly identify a product to be the product
of the [petitioners] xxx
The legal dispute between the parties started when the
herein petitioners, on the claim that an infringement of
their respective trademarks had been committed, filed, xxx    xxx    xxx.
on August 18, 1982, a Complaint for Infringement of
Trademark and Damages against respondent Fortune Meanwhile, after the [respondent] filed
Tobacco Corporation,  docketed as Civil Case No. 47374 its Opposition (Records, Vo. I, p. 26), the matter of the
of the Regional Trial Court  of Pasig, Branch 166. [petitioners'] prayer for the issuance of a writ of
preliminary injunction was negatively resolved by the
The decision under review summarized what happened court in an Order xxx dated March 28, 1973.  [The
next, as follows: incidental issue of the propriety of an injunction would
In the Complaint xxx with prayer for the issuance of a eventually be elevated to the CA and would finally be
preliminary injunction, [petitioners] alleged that they resolved by the Supreme Court in its Decision dated July
are foreign corporations not doing business in the 16, 1993 in G.R. No. 91332]. xxx.
Philippines and are suing on an isolated transaction.  xxx
they averred that the countries in which they are xxx    xxx    xxx
domiciled grant xxx to corporate or juristic persons of
the Philippines the privilege to bring action for After the termination of the trial on the merits  xxx trial
infringement, xxx without need of a license to do court rendered its Decision xxx dated November 3, 1999
business in those countries.  [Petitioners] likewise dismissing the complaint and counterclaim after making
a finding that the [respondent] did not commit
trademark infringement against the [petitioners].  of their trademark, no wrongful act or omission can be
Resolving first the issue of whether or not [petitioners] attributed to them.  xxx.[3] (Words in brackets supplied)
have capacity to institute the instant action, the trial Maintaining to have the standing to sue in the local
court opined that [petitioners'] failure to present forum and that respondent has committed trademark
evidence to support their allegation that their respective infringement, petitioners went on appeal to the CA
countries indeed grant Philippine corporations whereat their appellate recourse was docketed as CA-
reciprocal or similar privileges by law xxx justifies the G.R. CV No. 66619.
dismissal of the complaint xxx. It added that the
testimonies of [petitioners'] witnesses xxx essentially Eventually, the CA, in its Decision dated January 21,
declared that [petitioners] are in fact doing business in 2003, while ruling for petitioners on the matter of their
the Philippines, but [petitioners] failed to establish that legal capacity to sue in this country for trademark
they are doing so in accordance with the legal infringement, nevertheless affirmed the trial court's
requirement of first securing a license.  Hence, the court decision on the underlying issue of respondent's liability
declared that [petitioners] are barred from maintaining for infringement as it found that:
any action in Philippine courts pursuant to Section 133 xxx the appellants' [petitioners'] trademarks, i.e.,
of the Corporation Code. "MARK VII", "MARK TEN" and "LARK", do not qualify
as well-known marks entitled to protection even without
The issue of whether or not there was infringement of the benefit of actual use in the local market and that the
the [petitioners'] trademarks by the [respondent] was similarities in the trademarks in question are insufficient
likewise answered xxx in the negative.  It expounded that as to cause deception or confusion tantamount to
"in order for a name, symbol or device to constitute a infringement.  Consequently, as regards the third issue,
trademark, it must, either by itself or by association, there is likewise no basis for the award of damages
point distinctly to the origin or ownership of the article prayed for by the appellants herein. [4] (Word in bracket
to which it is applied and be of such nature as to permit supplied)
an exclusive appropriation by one person".  Applying With their motion for reconsideration having been
such principle to the instant case, the trial court was of denied by the CA in its equally challenged Resolution of
the opinion that the words "MARK", "TEN", "LARK" and May 30, 2003, petitioners are now with this
the Roman Numerals "VII", either alone or in Court via this petition for review essentially raising the
combination of each other do not by themselves or by following issues: (1) whether or not petitioners, as
association point distinctly to the origin or ownership of Philippine registrants of trademarks, are entitled to
the cigarettes to which they refer, such that the buying enforce trademark rights in this country; and (2)
public could not be deceived into believing that whether or not respondent has committed trademark
[respondent's] "MARK" cigarettes originated either from infringement against petitioners by its use of the mark
the USA, Canada, or Switzerland. "MARK" for its cigarettes, hence liable for damages.

Emphasizing that the test in an infringement case is the In its Comment,[5] respondent, aside from asserting the
likelihood of confusion or deception, the trial court correctness of the CA's finding on its liability for
stated that the general rule is that an infringement exists trademark infringement and damages, also puts in issue
if the resemblance is so close that it deceives or is likely the propriety of the petition as it allegedly raises
to deceive a customer exercising ordinary caution in his questions of fact.
dealings and induces him to purchase the goods of one
manufacturer in the belief that they are those of The petition is bereft of merit.
another.  xxx.  The trial court ruled that the [petitioners]
failed to pass these tests as it neither presented witnesses Dealing first with the procedural matter interposed by
or purchasers attesting that they have bought respondent, we find that the petition raises both
[respondent's] product believing that they bought questions of fact and law contrary to the prescription
[petitioners'] "MARK VII", "MARK TEN" or "LARK", and against raising factual questions in a petition for review
have also failed to introduce in evidence a specific on certiorari filed before the Court.  A question of law
magazine or periodical circulated locally, which exists when the doubt or difference arises as to what the
promotes and popularizes their products in the law is on a certain state of facts; there is a question of
Philippines.  It, moreover, elucidated that the words fact when the doubt or difference arises as to the truth or
consisting of the trademarks allegedly infringed by falsity of alleged facts.[6]
[respondent] failed to show that they have acquired a
secondary meaning as to identify them as [petitioners'] Indeed, the Court is not the proper venue to consider
products.  Hence, the court ruled that the [petitioners] factual issues as it is not a trier of facts. [7]  Unless the
cannot avail themselves of the doctrine of secondary factual findings of the appellate court are mistaken,
meaning. absurd, speculative, conflicting, tainted with grave abuse
of discretion, or contrary to the findings culled by the
As to the issue of damages, the trial court deemed it just court of origin,[8]  we will not disturb them.
not to award any to either party stating that, since the
[petitioners] filed the action in the belief that they were It is petitioners' posture, however, that their contentions
aggrieved by what they perceived to be an infringement should be treated as purely legal since they are  assailing
erroneous conclusions deduced from a set of undisputed
facts. the certificates of registration of their trademarks. The
marks "MARK TEN" and "LARK" were registered on the
Concededly, when the facts are undisputed, the question basis of actual use in accordance with Sections 2-A [13] and
of whether or not the conclusion drawn therefrom by the 5(a)[14] of R.A. No. 166, as amended, providing for a 2-
CA is correct is one of law.[9]  But, even if we consider and month pre-registration use in local commerce and trade
accept as pure questions of law the issues raised in this while the registration of "MARK VII" was on the basis of
petition, still, the Court is not inclined to disturb the registration in the foreign country of origin pursuant to
conclusions reached by the appellate court, the Section 37 of the same law wherein it is explicitly
established rule being that  all doubts shall be resolved in provided that prior use in commerce need not be alleged.
favor of the correctness of such conclusions. [10] [15]

Be that as it may, we shall deal with the issues tendered Besides, petitioners argue that their not doing business
and determine whether the CA ruled in accordance with in the Philippines, if that be the case, does not mean that
law and established jurisprudence in arriving at its cigarettes bearing their trademarks are not available and
assailed decision. sold locally. Citing Converse Rubber Corporation v.
Universal Rubber Products, Inc.,[16] petitioners state that
A "trademark" is any distinctive word, name, symbol, such availability and sale may be effected through the
emblem, sign, or device, or any combination thereof acts of importers and distributors.
adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those Finally, petitioners would press on their entitlement to
manufactured, sold, or dealt in by others. [11] Inarguably, a protection even in the absence of actual use of
trademark deserves protection.  For, as Mr. Justice trademarks in the country in view of the Philippines'
Frankfurter observed in Mishawaka Mfg. Co. v.  Kresge adherence to the Trade Related Aspects of Intellectual
Co.:[12] Property Rights or the TRIPS Agreement and the
The protection of trademarks is the law's recognition of enactment of R.A. No. 8293, or the Intellectual Property
the psychological function of symbols.  If it is true that Code (hereinafter the "IP Code"),  both of which provide
we live by symbols, it is no less true that we purchase that the fame of a trademark may be acquired through
goods by them.  A trade-mark is a merchandising short- promotion or advertising with no explicit requirement of
cut which induces a purchaser to select what he wants, or actual use in local trade or commerce.
what he has been led to believe what he wants.  The
owner of a mark exploits this human propensity by Before discussing petitioners' claimed entitlement to
making every effort to impregnate the atmosphere of the enforce trademark rights in the Philippines, it must be
market with the drawing power of a congenial symbol.  emphasized that their standing to sue in Philippine
Whatever the means employed, the aim is the same - to courts had been recognized, and rightly so, by the CA. It
convey through the mark, in the minds of potential ought to be pointed out, however, that the appellate
customers, the desirability of the commodity upon which court qualified its holding with a statement,
it appears.  Once this is attained, the trade-mark owner following G.R. No. 91332, entitled Philip Morris, Inc., et
has something of value.  If another poaches upon the al.  v. The Court of Appeals and Fortune Tobacco
commercial magnetism of the symbol he has created, the Corporation,[17] that such right to sue does not
owner can obtain legal redress. necessarily mean protection of their registered marks in
It is thus understandable for petitioners to invoke in this the absence of actual use in the Philippines.  
recourse their entitlement to enforce trademark rights in
this country, specifically, the right to sue for trademark Thus clarified, what petitioners now harp about is their
infringement in Philippine courts and be accorded entitlement to protection on the strength of registration
protection against unauthorized use of their Philippine- of their trademarks in the Philippines. 
registered trademarks. 
As we ruled in G.R. No. 91332,[18]  supra, so it must be
In support of their contention respecting their right of here.
action, petitioners assert that, as corporate nationals of 
member-countries of the Paris Union, they can sue Admittedly, the registration of a trademark gives the
before Philippine courts for infringement of trademarks, registrant, such as petitioners, advantages denied non-
or for unfair competition, without need of obtaining registrants or ordinary users, like respondent.  But while
registration or a license to do business in the Philippines, petitioners enjoy the statutory presumptions arising
and without necessity of actually doing business in the from such registration,[19] i.e., as to the validity of the
Philippines. To petitioners, these grievance right and registration, ownership and the exclusive right to use the
mechanism are accorded not only by Section 21-A of registered marks, they may not successfully sue on the
Republic Act (R.A.) No. 166, as amended, or basis alone of their respective certificates of registration
the Trademark Law, but also by Article 2 of the Paris of trademarks. For, petitioners are still foreign
Convention for the Protection of Industrial Property, corporations. As such, they ought, as a condition to
otherwise known as the Paris Convention. availment of the rights and privileges vis-à-vis their
trademarks in this country, to show proof that, on top of
In any event, petitioners point out that there is actual use Philippine registration, their country grants substantially
of their trademarks in the Philippines as evidenced by similar rights and privileges to Filipino citizens pursuant
to Section 21-A[20] of R.A. No. 166. Trademark Law were sufficiently expounded upon and
qualified in the recent case of Philip Morris, Inc., et. al.
In Leviton Industries v. Salvador,[21]  the Court further vs. Court of Appeals:
held that the aforementioned reciprocity requirement is
a condition sine qua non to filing a suit by a foreign xxx    xxx    xxx
corporation which, unless alleged in the complaint,
would justify dismissal thereof, a mere allegation that Following universal acquiescence and comity, our
the suit is being pursued under Section 21-A of R.A. No. municipal law on trademarks regarding the
166 not being sufficient. In a subsequent case, requirements of actual use in the Philippines must
[22]
  however, the Court held that where the complainant subordinate an international agreement inasmuch as the
is a national of a Paris Convention- adhering country, its apparent clash is being decided by a municipal tribunal.
allegation that it is suing under said Section 21-A would Xxx.  Withal, the fact that international law has been
suffice, because the reciprocal agreement between the made part of the law of the land does not by any means
two countries is embodied and supplied by the Paris imply the primacy of international law over national law
Convention which, being considered  part of Philippine in the municipal sphere.  Under the doctrine of
municipal laws, can be taken judicial notice of in incorporation as applied in most countries, rules of
infringement suits.[23]  International Law are given a standing equal, not
superior, to national legislative enactments.
As well, the fact that their respective home countries,
namely, the United States, Switzerland and Canada, are, xxx    xxx    xxx
together with the Philippines, members of the Paris
Union does not automatically entitle petitioners to the In other words, (a foreign corporation) may have the
protection of their trademarks in this country absent capacity to sue for infringement ... but the question of
actual use of the marks in local commerce and trade. whether they have an exclusive right over their symbol as
to justify issuance of the controversial writ will depend
True, the Philippines' adherence to the Paris on actual use of their trademarks in the Philippines in
Convention[24] effectively obligates the country to honor line with Sections 2 and 2-A of the same law.   It is thus
and enforce its provisions [25] as regards the protection of incongruous for petitioners to claim that when a foreign
industrial property of foreign nationals in this country.  corporation not licensed to do business in the
However, any protection accorded has to be made Philippines files a complaint for infringement, the entity
subject to the limitations of Philippine laws. [26]  Hence, need not be actually using its trademark in commerce in
despite Article 2 of the Paris Convention which the Philippines.  Such a foreign corporation may have
substantially provides that (1) nationals of member- the personality to file a suit for infringement but it may
countries shall have in this country rights specially not necessarily be entitled to protection due to absence
provided by the Convention as are consistent with of actual use of the emblem in the local market.
Philippine laws, and enjoy the privileges that Philippine Contrary to what petitioners suggest, the registration of
laws now grant or may hereafter grant to its nationals, trademark cannot be deemed conclusive as to the actual
and (2) while no domicile requirement in the country use of such trademark in local commerce. As it were,
where protection is claimed shall be required of persons registration does not confer upon the registrant an
entitled to the benefits of the Union for the enjoyment of absolute right to the registered mark. The certificate of
any industrial property rights,[27] foreign nationals must registration merely constitutes prima facie evidence that
still observe and comply with the conditions imposed by the registrant is the owner of the registered mark.
Philippine law on its nationals. Evidence of non-usage of the mark rebuts the
presumption of trademark ownership,[34] as what
Considering that R.A. No. 166, as amended, specifically happened here when petitioners no less admitted not
Sections 2[28] and 2-A[29]  thereof, mandates actual use of doing business in this country. [35]
the marks and/or emblems in local commerce and trade
before they may be registered and ownership thereof Most importantly, we stress that registration in the
acquired, the petitioners cannot, therefore, dispense with Philippines of trademarks does not ipso facto convey an
the element of actual use. Their being nationals of absolute right or exclusive ownership thereof. To borrow
member-countries of the Paris Union does not alter the from Shangri-La International Hotel Management, Ltd.
legal situation. v. Development Group of Companies, Inc. [36] trademark
is a creation of use and, therefore, actual use is a pre-
In Emerald Garment Mfg. Corporation v. Court of requisite to exclusive ownership; registration is only an
Appeals,[30] the Court reiterated its rulings in Sterling administrative confirmation of the existence of the right
Products International, Inc. v. Farbenfabriken Bayer of ownership of the mark, but does not perfect such
Aktiengesellschaft,[31] Kabushi Kaisha Isetan v. right; actual use thereof is the perfecting ingredient. [37]
Intermediate Appellate Court,[32] and Philip Morris v.
Court of Appeals and Fortune Tobacco Corporation [33] on Petitioners' reliance on Converse Rubber
the importance of actual commercial use of a trademark Corporation[38] is quite misplaced, that case being cast in
in the Philippines notwithstanding the Paris Convention: a different factual milieu. There, we ruled that a foreign
The provisions of the 1965 Paris Convention ... relied owner of a Philippine trademark, albeit not licensed to
upon by private respondent and Sec. 21-A of the do, and not so engaged in, business in the Philippines,
may actually earn reputation or goodwill  for its goods in the dominancy test and the holistic test.[42]  The
[43]
the country. But unlike in the instant case, evidence of dominancy  test  sets sight on the similarity  of  the
actual sales of Converse rubber shoes, such as sales prevalent features of the competing trademarks that
invoices, receipts and the testimony of a legitimate might cause confusion and deception, thus constitutes
trader, was presented in Converse. infringement.  Under this norm, the question at issue
turns on whether the use of the marks involved would be
This Court also finds the IP Code and the TRIPS likely to cause confusion or mistake in the mind of the
Agreement to be inapplicable, the infringement public or deceive purchasers. [44]
complaint herein having been filed in August 1982 and
tried under the aegis of R.A. No. 166, as amended. The IP In contrast, the holistic test[45] entails a consideration of
Code, however, took effect only on January 1, 1998 the entirety of the marks as applied to the products,
without a provision as to its retroactivity. [39]  In the same including the labels and packaging, in determining
vein, the TRIPS Agreement was inexistent when the suit confusing similarity.
for infringement was filed, the Philippines  having
adhered thereto only on December 16, 1994. Upon consideration of the foregoing in the light of the
peculiarity of this case, we rule against the likelihood of
With the foregoing perspective, it may be stated right off confusion resulting in infringement arising from the
that the registration of a trademark unaccompanied by respondent's use of the trademark "MARK" for its
actual use thereof in the country accords the registrant particular cigarette product.
only the standing to sue for infringement in Philippine
courts. Entitlement to protection of such trademark in For one, as rightly concluded by the CA after comparing
the country is entirely a different matter. the trademarks involved in their entirety as they appear
on the products,[46] the striking dissimilarities are
This brings us to the principal issue of infringement. significant enough to warn any purchaser that one is
different from the other.  Indeed, although the perceived
Section 22 of R.A. No. 166, as amended, defines what offending word "MARK" is itself prominent in
constitutes trademark infringement, as follows: petitioners' trademarks "MARK VII" and "MARK TEN,"
Sec. 22.  Infringement, what constitutes. Any person who the entire marking system should be considered as a
shall use, without the consent of the registrant, any whole and not dissected, because a discerning eye would
reproduction, counterfeit, copy or colorable imitation of focus not only on the predominant word but also on the
any registered mark or tradename in connection with the other features appearing in the labels. Only then would
sale, offering for sale, or advertising of any goods, such discerning observer draw his conclusion whether
business or services on or in connection with which such one mark would be confusingly similar to the other and
use is likely to cause confusion or mistake or to deceive whether or not sufficient differences existed between the
purchasers or others as to the source or origin of such marks.[47]
goods or services, or identity of such business; or
reproduce, counterfeit, copy of color ably imitate any This said, the CA then, in finding that respondent's
such mark or tradename and apply such reproduction, goods cannot be mistaken as any of the three cigarette
counterfeit, copy or colorable imitation to labels, signs, brands of the petitioners, correctly relied on the holistic
prints, packages, wrappers, receptacles or test.
advertisements intended to be used upon or in
connection with such goods, business, or services, shall But, even if the dominancy test were to be used, as urged
be liable to a civil action by the registrant for any or all of by the petitioners, but bearing in mind that a trademark
the remedies herein provided. serves as a tool to point out distinctly the origin or
Petitioners would insist on their thesis of infringement ownership of the goods to which it is affixed, [48] the
since respondent's mark "MARK" for cigarettes is likelihood of confusion tantamount to infringement
confusingly or deceptively similar with their duly appears to be farfetched.  The reason for the origin
registered "MARK VII," "MARK TEN" and "LARK" and/or ownership angle is that unless the words or
marks likewise for cigarettes. To them, the word devices do so point out the origin or ownership, the
"MARK" would likely cause confusion in the trade, or person who first adopted them cannot be injured by any
deceive purchasers, particularly as to the source or origin appropriation or imitation of them by others, nor can the
of respondent's cigarettes. public be deceived.[49]

The "likelihood of confusion" is the gravamen of Since the word "MARK," be it alone or in combination
trademark infringement.[40]  But likelihood of confusion with the word "TEN" and the Roman numeral "VII,"
is a relative concept, the particular, and sometimes does not point to the origin or ownership of the
peculiar, circumstances of each case being determinative cigarettes to which they apply, the local buying public
of its existence. Thus, in trademark infringement cases, could not possibly be confused or deceived that
more than in other kinds of litigation, precedents must respondent's "MARK" is the product of petitioners
be evaluated in the light of each particular case. [41] and/or originated from the U.S.A., Canada or
Switzerland.  And lest it be overlooked, no actual
In determining similarity and likelihood of confusion, commercial use of petitioners' marks in local commerce
jurisprudence has developed two tests: was proven. There can thus be no occasion for the public
in this country, unfamiliar in the first place with services or in connection with which such use is likely to
petitioners' marks, to be confused. cause confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or
For another, a comparison of the trademarks as they services, or identity of such business; or such trademark
appear on the goods is just one of the appreciable is reproduced, counterfeited, copied or colorably
circumstances in determining likelihood of imitated by another person and such reproduction,
confusion.  Del Monte Corp. v. CA[50]  dealt with another, counterfeit, copy or colorable imitation is applied to
where we instructed to give due regard to the "ordinary labels, signs, prints, packages, wrappers, receptacles or
purchaser," thus: advertisements intended to be used upon or in
The question is not whether the two articles are connection with such goods, business or services as to
distinguishable by their label when set side by side but likely cause confusion or mistake or to deceive
whether the general confusion made by the article upon purchasers,
the eye of the casual purchaser who is unsuspicious and
off his guard, is such as to likely result in his (c) the trademark is used for identical or similar goods,
confounding it with the original.  As observed in several and
cases, the general impression of the ordinary purchaser,
buying under the normally prevalent conditions in trade (d) such act is done without the consent of the trademark
and giving the attention such purchasers usually give in registrant or assignee.
buying that class of goods is the touchstone.   As already found herein, while petitioners have
When we spoke of an "ordinary purchaser," the reference registered the trademarks "MARK VII," "MARK TEN"
was not to the "completely unwary customer" but to the and "LARK" for cigarettes in the Philippines, prior actual
"ordinarily intelligent buyer" considering the type of commercial use thereof had not been proven.  In fact,
product involved.[51] petitioners' judicial admission of not doing business in
this country effectively belies any pretension to the
It cannot be over-emphasized that the products involved contrary.
are addicting cigarettes purchased mainly by those who
are already predisposed to a certain brand. Accordingly, Likewise, we note that petitioners even failed to support
the ordinary buyer thereof would be all too familiar with their claim that their respective marks are well-known
his brand and  discriminating as well.  We, thus, concur and/or have acquired goodwill in the Philippines so as to
with the CA when it held, citing a definition found in Dy be entitled to protection even without actual use in this
Buncio v. Tan Tiao Bok,[52]  that the "ordinary country in accordance with Article 6bis [55] of the Paris
purchaser" in this case means "one accustomed to buy, Convention. As correctly found by the CA, affirming that
and therefore to some extent familiar with, the goods in of the trial court:
question." xxx the records are bereft of evidence to establish that
the appellants' [petitioners'] products are indeed well-
Pressing on with their contention respecting the known in the Philippines, either through actual sale of
commission of trademark infringement, petitioners the product or through different forms of advertising. 
finally point to Section 22 of R.A. No. 166, as amended. This finding is supported by the fact that appellants
As argued, actual use of trademarks in local commerce admit in their Complaint that they are not doing
is, under said section, not a requisite before an aggrieved business in the Philippines, hence, admitting that their
trademark owner can restrain the use of his trademark products are not being sold in the local market.  We
upon goods manufactured or dealt in by another, it being likewise see no cogent reason to disturb the trial court's
sufficient that he had registered the trademark or trade- finding  that  the appellants failed to establish that their
name with the IP Office. In fine, petitioners submit that products are widely known  by local purchasers as "(n)o
respondent is liable for infringement, having specific magazine or periodical published in the
manufactured  and sold cigarettes with the trademark Philippines, or in other countries but circulated locally"
"MARK" which, as it were, are identical and/or have been presented by the appellants during trial.  The
confusingly similar with their duly registered trademarks appellants also were not able to show the length of time
"MARK VII," "MARK TEN" and "LARK". or the extent of the promotion or advertisement made to
popularize their products in the Philippines.[56]
This Court is not persuaded. Last, but not least, we must reiterate that the issue of
trademark infringement is factual, with both the trial
In Mighty Corporation v. E & J Gallo Winery, [53]  the and appellate courts having peremptorily found
Court held that the following constitute the elements of allegations of infringement on the part of respondent to
trademark infringement in accordance not only with be without basis. As we said time and time again, factual
Section 22 of R.A. No. 166,  as amended, but also determinations of the trial court, concurred in by the CA,
Sections 2, 2-A, 9-A[54] and 20 thereof: are final and binding on this Court.[57]
(a) a trademark actually used in commerce in the
Philippines and registered in the principal register of the For lack of convincing proof on the part of the
Philippine Patent Office, petitioners of actual use of their registered trademarks
prior to respondent's use of its mark and for petitioners'
(b) is used by another person in connection with the sale, failure to demonstrate confusing similarity between said
offering for sale, or advertising of any goods, business or trademarks, the dismissal of their basic complaint for
infringement and the concomitant plea for damages
must be affirmed. The law, the surrounding
circumstances and the equities of the situation call for
this disposition.

WHEREFORE, the petition is hereby DENIED.

Accordingly, the assailed decision and resolution of the
Court of Appeals are AFFIRMED.

Costs against the petitioners.

SO ORDERED.

Puno, (Chairperson), Sandoval-Gutierrez,

Corona, and Azcuna, JJ., concur.