CO TIONG SA, applicant-petitioner vs.

DIRECTOR OF PATENTS, infringement of a trademark is to be determined by the test of

respondent, SAW WOO CHIONG AND CO., oppositor dominancy.
 Similarity in size, form, and color, while relevant, is not conclusive.
If the competing trademark contains the main or essential or
FACTS: dominant features of another, and confusion and deception is likely
to result, infringement takes place. Duplication or limitation is not
 The trademark sought to be registered by applicant-petitioner is necessary; nor is it necessary that the infringing label should
“FREEDOM”. It has used the trademark on undershirts and T-shirts suggest an effort to imitate.
since March 1947.  The average buyer usually seeks a sign, special, easily remembered
 Oppositor-respondent has a trademark of “FREEMAN” which was earmarks of the brand he has in mind. It may be the color, sound,
registered in 1947 in the Bureau of Commerce and re-registered in design, or a peculiar shape or name. Once his eyes see or his ear
the Patent Office in 1948. This trademark is used not only on shirts, hears, he is satisfied. An unfair competitor need not copy the entire
but also on polo shirts, undershirts, pajamas, skippers, and T-shirts. mark to accomplish his fraudulent purpose. It is enough if he takes
This trademark has been used since 1938, and it had been the one feature which the average buyer is likely to remember.
advertised extensively in newspapers, magazines, etc.  The question of infringement is to be determined by the test of
 Director of Patents sustained the opposition of respondent and dominancy. The dissimilarity in size, form and color of the label
denied the application of trademark registration by applicant- and the place where applied are not conclusive. If the competing
petitioner. label contains the trademark of another, and confusion or deception
 Hence, this appeal filed by applicant-petitioner. is likely to result, infringement takes place, regardless of the fact
that the accessories are dissimilar. Duplication or exact imitation is
not necessary; nor is it necessary that the infringing label should
ISSUE: suggest an effort to imitate.
 In order to constitute infringement, it is not necessary that the
 WON "FREEDOM" and "FREEMAN" convey the same general
trademark be literally copied. Neither is it necessary that every
impression, hence must be adjudged to be confusingly similar
word be appropriated. There may be infringement where the
substantial and distinctive part of the trademark is copied or
imitated. Dissimilarity in size, form and color of the label and place
HELD: YES. The decision of the Director of Patents sustaining the where it is applied are not conclusive against infringement. The
opposition and denying the application must, therefore, be affirmed. resemblances may so far dominate the differences as to be likely to
 When would a trademark cause confusion in the mind of the public deceive ordinary purchasers.
or in those unwary customers or purchasers? It must be remembered  Upon examination of the trademark of the oppositor-respondent,
that infringement of a trademark is a form of unfair competition and one will readily see that the dominant feature is the word
unfair competition is always a question of fact. The universal test "FREEMAN". These dominant features or characteristics of
has been said to be whether the public is likely to be deceived. oppositor's trademarks are reproduced or imitated in applicant's
 The question in cases of infringement of trademarks is whether the trademark. The word "FREEDOM" conveys a similar idea as the
use of the marks involved would be likely to cause confusion or word "FREEMAN". The style in which both capital "F" is written
mistake in the mind of the public or to deceive purchasers. are similar. The print and slant of the letters are also similar.
 Differences of variations in the details of one trademark and of  An ordinary purchaser or an unsuspecting customer who has seen
another are not the legally accepted tests of similarity in the oppositor's label sometime before will not recognize the
trademarks. It has been consistently held that the question of difference between that label and applicant's label. He may notice
some variations, but he will ignore these, believing that they are
 variations of the same trademark to distinguish one kind or quality
of goods from another. FABERGE, INC. vs. INTERMEDIATE APPELLATE COURT
Etepha vs. Director of Patents, G.R. No. L-20635, 31 March 1966 FACTS:

Facts:  The Director of Patents authorized private respondent to register the trademark "BRUTE"
for the briefs manufactured and sold by his Corporation in the domestic market  vis-a-
vis petitioner's opposition grounded on similarity of said trademark with petitioner's own
 Respondent Westmont Pharmaceuticals, an American corporation, symbol "BRUT" which it previously registered for after shave lotion, shaving cream,
sought registration of trademark deodorant, talcum powder, and toilet soap. 
 Thereafter, respondent court, through Justice Gopengco with Justices Patajo and Racela,
“Atussin” placed on its medicinal preparation for the treatment of Jr. concurring, was initially persuaded by petitioner's plea for reversal directed against the
coughs. permission granted by the Director of Patents, but the decision of the Second Special
 Petitioner Etepha, owner of the trademark “Pertussin” placed also on Cases Division handed down on April 29, 1983 was later reconsidered in favor of herein
preparation for cough treatment, objected claiming that it will be private respondent.
damaged since the 2 marks are confusingly similar.  Petitioner put emphasis on American jurisprudential doctrines to the effect that sale of
cosmetics and wearing apparel under similar marks is likely to cause confusion. Instead of
 The Director of Patents gave due course to the application. applying the ESSO, PRC and Hickok cases, petitioner continues to asseverate, the rule as
announced in Ang vs. Teodoro (74 Phil. 50 [1942]) as reiterated in Sta. Ana vs. Maliwat
ISSUE: WoN “Atussin” is registrable as a trademark. and Evalle (24 SCRA (1968) 101) should be applied.
RULING: Yes. Issue: Whether trademark “Brut” can be used by private respondent for the briefs manufactured
and sold by his corporation.
 The validity of a cause for infringment is predicated upon colorable
imitation. The phrase “colorable imitaion” denotes such a “close or Ruling:
ingenious imitation as to be calculated to deceive ordinary persons, or The Court ruled in favour of the private respondent.
such a resemblance to the original as to deceive an ordinary purchaser
Having thus reviewed the laws applicable to the case before Us, it is not difficult to discern from the
giving such attention as a purchaser usually gives, and to cause him to
foregoing statutory enactments that private respondent may be permitted to register the trademark
purchase the one supposing it to be the other.” "BRUTE" for briefs produced by it notwithstanding petitioner's vehement protestations of unfair
 While “tussin” by itself cannot thus be used exclusively to identify one’s dealings in marketing its own set of items which are limited to: after-shave lotion, shaving cream,
goods, it may properly become the subject of a trademark “by deodorant, talcum powder and toilet soap. In as much as petitioner has not ventured in the
combination with another word or phrase.” production of briefs, an item which is not listed in its certificate of registration, petitioner cannot and
should not be allowed to feign that private respondent had invaded petitioner's exclusive domain.
 The two labels are entirely different in colors, contents, arrangement of
words the eon, sizes, shapes and general appearance. The contrasts The SC now reconcile the apparent conflict between Section 4(d) which was relied upon by Justice
in pictorial effects and appeals to the eye is so pronounced that the JBL Reyes in the Sta. Ana case and Section 20. It would seem that Section 4(d) does not require that
the goods manufactured by the second user be related to the goods produced by the senior user while
label of one cannot be mistaken for that of the other, not even by
Section 20 limits the exclusive right of the senior user only to those goods specified in the certificate
persons unfamiliar with the two trademarks. of registration. But the rule has been laid down that the clause which comes later shall be given
 We cannot escape notice of the fact that the two words do not sound paramount significance over an anterior proviso upon the presumption that it expresses the latest and
alike – when pronounced. dominant purpose. It ineluctably follows that Section 20 is controlling and, therefore, private
respondent can appropriate its symbol for the briefs it manufactures.

The glaring discrepancies between the two products had been amply portrayed to such an extent that
indeed, "a purchaser who is out in the market for the purpose of buying respondent's BRUTE brief
would definitely be not mistaken or misled into buying BRUT after shave lotion or deodorant" as
categorically opined in the decision of the Director of Patents relative to the inter-partes case.

Petitioner's bid to persuade the court into accepting the doctrines announced in the aforementioned
cases of Sta. Ana vs. Maliwat and Ang vs. Teodoro hardly inspire belief. In Sta Ana, it was
admitted that the marks were confusingly similar which is not so in the case at bar. In the 1942 case
of Ang vs. Teodoro, Justice Ozaeta noted that pants and shirts are similar to shoes and slippers EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT
within the meaning of Sections 3, 7, 11, 13 and 20 of Act No. 666 which was the old Trademark
Law enacted on March 6, 1903 prior to the present law. Obviously, the conclusion reached by OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY
the ponente in the Ang case may not now be utilized by analogy to the case at bar due to variance in TRANSFER and H.D. LEE COMPANY, INC.
the factual and legal milieu. Neither can we agree with petitioner that the ruling in La Chemise
Lacoste, S.A.  is applicable to the controversy at hand. The case adverted to by petitioner involved G.R. No. 100098,
the same mark for the same class of shirts manufactured by the parties therein.
December 29, 1995
Facts:
HD Lee Co., a foreign corpo, seeks the cancellation of a patent in favor of
Emerald Garment Manufacturing (domiciled in the Phil) for the trademark
“Stylistic Mr. Lee,” which according to HD Lee Co. closely resembled its
own trademark “Lee” and thus would cause confusion, mistake and
deception to the purchasing public. The Director of Patents granted the
cancellation on the ground that petitioner’s trademark was confusingly
similar to private respondent’s mark because “it is the word ‘Lee’ which
draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant
feature of the mark. The CA affirmed.
Issue: WON the trademark “Stylistic Mr. Lee” tends to mislead or confuse
the public and constitutes an infringement of the trademark “Lee.”
Ruling:

 Negative for lack of adequate proof of actual use of its trademark

in the Philippines prior to Emeralds use of its own mark and for
failure to establish confusing similarity between said trademarks,
HD Lee Co’s action for infringement must necessarily fail.
 Emerald’s “Stylistic Mr. Lee” is not confusingly similar to private
respondent’s "LEE” trademark. Colorable imitation DOES NOT
APPLY because:
 Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although
on its label the word “LEE” is prominent, the trademark should be
considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and
substantial enough to matter especially in the light of the following
variables that must be factored in, among others: a. Expensive and
valuable items are normally bought only after deliberate,
 comparative and analytical investigation; and b. The average Holistic Test.—In determining whether colorable imitation exists,
Filipino consumer generally buys his jeans by brand. jurisprudence has developed two kinds of tests—the Dominancy
 “LEE” is primarily a surname. Private respondent cannot, Test applied in Asia Brewery, Inc. v. Court of Appeals and other
therefore, acquire exclusive ownership over and singular use of cases and the Holistic Test developed in Del Monte Corporation v.
said term. 3. After a meticulous study of the records, the SC Court of Appeals and its proponent cases.
observes that the Director of Patents and the Court of Appeals  Dominancy Test and Holistic Test, Compared.—As its title implies,
relied mainly on the registration certificates as proof of use by HD the test of dominancy focuses on the similarity of the prevalent
Lee Co of the trademark “LEE” which are not sufficient features of the competing trademarks which might cause
 Petitioner alleges that it has been using its trademark “STYLISTIC confusion or deception and thus constitutes infringement. On the
MR. LEE” since 1 May 1975, yet, it was only on 18 September 1981 other side of the spectrum, the holistic test mandates that the
that private respondent filed a petition for cancellation of entirety of the marks in question must be considered in
petitioner’s certificate of registration for the said trademark. We determining confusing similarity.
reject petitioner’s contention. Petitioner’s trademark is registered  The products involved in the case at bar are, in the main, various
in the supplemental register. The Trademark Law (R.A. No. 166) kinds of jeans. These are not your ordinary household items like
provides that “marks and tradenames for the supplemental catsup, soy sauce or soap which are of minimal cost. Maong pants
register shall not be published for or be subject to opposition, but or jeans are not inexpensive. Accordingly, the casual buyer is
shall be published on registration in the Official Gazette.” The predisposed to be more cautious and discriminating in and would
reckoning point, therefore, should not be 1 May 1975, the date of prefer to mull over his purchase. Confusion and deception, then, is
alleged use by petitioner of its assailed trademark but 27 October less likely.
1980, the date the certificate of registration SR No. 5054 was  “Ordinary Purchaser,” Defined. —The definition laid down in Dy
published in the Official Gazette and issued to petitioner. Emerald Buncio v. Tan Tiao Bok is better suited to the present case. There,
Garment Manufacturing Corporation vs. Court of Appeals, 251 the “ordinary purchaser” was defined as one “accustomed to buy,
SCRA 600, G.R. No. 100098 December 29, 1995 and therefore to some extent familiar with, the goods in
 To be barred from bringing suit on grounds of estoppel and laches, question. The test of fraudulent simulation is to be found in the
the delay must be lengthy. likelihood of the deception of some persons in some measure
 In the history of trademark cases in the Philippines, particularly in acquainted with an established design and desirous of purchasing
ascertaining whether one trademark is confusingly similar to or is a the commodity with which that design has been associated. The
colorable imitation of another, no set rules can be deduced—each test is not found in the deception, or the possibility of deception,
case must be decided on its own merits of the person who knows nothing about the design which has been
 The essential element of infringement is colorable imitation.— counterfeited, and who must be indifferent between that and the
Proceeding to the task at hand, the essential element of other. The simulation, in order to be objectionable, must be such
infringement is colorable imitation. This term has been defined as as appears likely to mislead the ordinary intelligent buyer who has
“such a close or ingenious imitation as to be calculated to deceive a need to supply and is familiar with the article that he seeks to
ordinary purchasers, or such resemblance of the infringing mark purchase.”
to the original as to deceive an ordinary purchaser giving such  A personal name or surname may not be monopolized as a
attention as a purchaser usually gives, and to cause him to trademark or tradename as against others of the same name or
purchase the one supposing it to be the other.” surname.—“LEE” is primarily a surname. Private respondent
 In determining whether colorable imitation exists, jurisprudence cannot, therefore, acquire exclusive ownership over and singular
has developed two kinds of tests—the Dominancy Test and the use of said term . . .
 Actual use in commerce in the Philippines is an essential SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE
prerequisite for the acquisition of ownership over a trademark.— PHILIPPINES, INC. petitioners, vs. COURT OF APPEALS and CFC
In addition to the foregoing, we are constrained to agree with CORPORATION. respondents.
petitioner’s contention that private respondent failed to prove G.R. No. 112012 | 2001-04-04
prior actual commercial use of its “LEE” trademark in the
Philippines before filing its application for registration with the FACTS:
BPTTT and hence, has not acquired ownership over said mark.  Petitioner Societe Des Produits Nestle, S.A., a Swiss company
Actual use in commerce in the Philippines is an essential registered under Swiss laws and domiciled in Switzerland, filed an
unverified Notice of Opposition,[3] claiming that the trademark of
prerequisite for the acquisition of ownership over a trademark
private respondent's product is "confusingly similar to its
pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A.
trademarks for coffee and coffee extracts, to wit: MASTER ROAST
No. 166). and MASTER BLEND."
 The credibility placed on a certificate of registration of one’s  A verified Notice of Opposition was filed by Nestle Philippines,
trademark, or its weight as evidence of validity, ownership and Inc., a Philippine corporation and a licensee of Societe Des Produits
exclusive use, is qualified. A registration certificate serves merely Nestle S.A., against CFC's application for registration of the
as prima facie evidence. It is not conclusive but can and may be trademark FLAVOR MASTER.[4] Nestle claimed that the use, if
rebutted by controverting evidence. any, by CFC of the trademark FLAVOR MASTER and its
 Moreover, the aforequoted provision applies only to registrations registration would likely cause confusion in the trade; or deceive
in the principal register. Registrations in the supplemental register purchasers and would falsely suggest to the purchasing public a
do not enjoy a similar privilege. A supplemental register was connection in the business of Nestle, as the dominant word present
created precisely for the registration of marks which are not in the three (3) trademarks is "MASTER"; or that the goods of CFC
registrable on the principal register due to some defects. might be mistaken as having originated from the latter.
 In answer to the two oppositions, CFC argued that its trademark,
FLAVOR MASTER, is not confusingly similar with the former's
trademarks, MASTER ROAST and MASTER BLEND, alleging
that, "except for the word MASTER (which cannot be exclusively
appropriated by any person for being a descriptive or generic
name), the other words that are used respectively with said word in
the three trademarks are very different from each other - in
meaning, spelling, pronunciation, and sound". CFC further argued
that its trademark, FLAVOR MASTER, "is clearly very different
from any of Nestle's alleged trademarks MASTER ROAST and
MASTER BLEND, especially when the marks are viewed in their
entirety, by considering their pictorial representations, color
schemes and the letters of their respective labels."
 BPTTT – denied CFC’s application for registration
 CA – reversed BPTTT; ordered the Director of Patents to approve
CFC's application

ISSUE: Whether the trademark FLAVOR MASTER is a colorable

imitation of the trademarks MASTER ROAST and MASTER BLEND.
 Court believes that the dominancy test is more suitable to this case
HELD: YES. in light of its peculiar factual milieu.
 It is sufficiently established that the word MASTER is the dominant
feature of opposer's mark. The word MASTER is printed across the
middle portion of the label in bold letters almost twice the size of
the printed word ROAST. Further, the word MASTER has always
been given emphasis in the TV and radio commercials and other
advertisements made in promoting the product. This can be gleaned
from the fact that Robert Jaworski and Atty. Ric Puno Jr.., the
personalities engaged to promote the product, are given the titles
Master of the Game and Master of the Talk Show, respectively. In
due time, because of these advertising schemes the mind of the
buying public had come to learn to associate the word MASTER
with the opposer's goods. The term "MASTER", therefore, has
acquired a certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by Nestle. As
such, the use by CFC of the term "MASTER" in the trademark for
its coffee product FLAVOR MASTER is likely to cause confusion
or mistake or even to deceive the ordinary purchasers.
 Colorable imitation denotes such a close or ingenious imitation as
to be calculated to deceive ordinary persons, or such a resemblance
to the original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, as to cause him to purchase
the one supposing it to be the other.[9] In determining if colorable
imitation exists, jurisprudence has developed two kinds of tests -
the Dominancy Test and the Holistic Test.[10] The test of
dominancy focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception
and thus constitute infringement. On the other side of the spectrum,
the holistic test mandates that the entirety of the marks in question
must be considered in determining confusing similarity.
 The test of similarity is to consider the two marks in their entirety,
as they appear in the respective labels, in relation to the goods to
which they are attached. The mark must be considered as a whole
and not as dissected. If the buyer is deceived, it is attributable to the
marks as a totality, not usually to any part of it.
 The application of the totality or holistic test is improper since the
ordinary purchaser would not be inclined to notice the specific
features, similarities or dissimilarities, considering that the product
is an inexpensive and common household item.  This Court cannot
agree that totality test is the one applicable in this case. Rather, this
 UNITED STATES, plaintiff-appellee vs. VICENTE MANUEL, appearance of the respective labels not being strikingly similar or
defendant-appellant. dissimilar.
Trial Court: convicted the accused of "unfair competition," and sentenced
FACTS: him to pay a fine of $50, gold, and the costs of the trial, and to subsidiary
imprisonment in case of insolvency and nonpayment of the fine.
 The accused is charged with unfair competition, defined and
penalized in Act No. 666 of the Philippine Commission.
 A.S. Watson and Company, Limited is a corporation duly organized ISSUE:
under the laws of Great Britain and registered in the Mercantile
Register of the Philippines and was extensively engaged in the city  WON defendant is guilty of unfair competition
of Manila in the business of manufacturing and selling soda water,
lemonade, ginger ale, and other aerated waters.
 It registered with the Bureau of Patents, Copyrights, and HELD: YES. The decision of the Lower Court must, therefore, be
Trademarks a trademark consisting of the words "A. S. Watson and affirmed.
Company, Limited," together with the figure of a unicorn and
 The defendant, in selling his aerated waters in bottle with the design
dragon on either side of a Chinese pagoda, which had been adopted blown on the side as described above, gave his goods the general
and appropriated as their trademark for many years prior to its appearance of aerated waters manufactured by A. S. Watson.
registry.  While it is true that a cautious purchaser who was acquainted with
 The aerated waters manufactured by A. S. Watson were sold in the English language need not have been deceived if he took the
bottles, specially made for the purpose, with their trademark blown pains to read the printed matter on the label, nevertheless the
on the side in large, raised letters and figures, these letters and difference in the general appearance of the labels is not sufficient to
figures being so strikingly and prominently displayed that they protect from mistake the ordinary purchaser who is unacquainted
forcibly attract the attention of the eye and arouse the sense of touch with the English language, unless he took the extraordinary
on the most superficial examination. precaution of having with him a sample of the label of A. S. Watson
 It was the custom of the said A. S. Watson and Co., Limited, to give to make a comparison, on each occasion when he bought a bottle of
the purchaser of its aerated waters what was called a deposit slip aerated water.
with each case of such goods sold, obligating themselves to refund  The true test of unfair competition is whether certain goods have
a stipulated amount on the return of the empty bottles together with been clothed with an appearance which is likely to deceive the
this deposit slip. ordinary purchaser exercising ordinary care, and not whether a
 Defendant, Vicente Manuel, manufactured and sold a number of certain limited class of purchasers with special knowledge not
bottles of areated waters in bottles identical in form and appearance possessed by the ordinary purchaser could avoid mistake by the
with those used by A. S. Watson, with the trademark of that firm exercise of this special knowledge. + Unfaircomp
blown on the side in the same manner in which it is blown on their  R. Heinishc's Sons Co. vs. Boker et al: In a suit to restrain unfair
bottles, there being no reasonable doubt that the bottles used by the use of trade of name, the criterion of unfair competition is whether
defendant were bottles which had been formerly used by A. S. ordinary purchasers, as distinguished from members of the
Watson in their business as manufacturers and vendors of these. particular trade, are deceived.
 On the bottles sold by the defendant there were pasted labels with  Even though the deposit of the bottles amounted in law to a sale, the
his name and the kind of aerated water contained therein, the right of ownership does not carry it the right to use the thing owned
printed matter contained in these labels being different from that for the purpose of deceiving the public and defrauding third parties.
contained in the bottles sold by A. S. Watson, and the general
  The defendant might have manufactured these bottles himself, in  A side-by-side comparison is not the final test of similarity. Such
which case there could have been no doubt as to his right of comparison requires a careful scrutiny to determine in what points the
ownership, and nevertheless, he would have had no moral or lawful labels of the products differ, as was done by the trial judge. The
right to use them as he did. ordinary buyer does not usually make such scrutiny nor does he
usually have the time to do so. The average shopper is usually in a
hurry and does not inspect every product on the shelf as if he were
Del Monte Corp. vs. Court of Appeals, G.R. No. 78325, 25 January browsing in a library.
1990  side-by-side comparison is not the final test of similarity. Such
comparison requires a careful scrutiny to determine in what points the
labels of the products differ, as was done by the trial judge. The
FACTS:
ordinary buyer does not usually make such scrutiny nor does he
usually have the time to do so. The average shopper is usually in a
 Sometime in 1965, Del Monte authorized Philpack to register with the hurry and does not inspect every product on the shelf as if he were
Philippine Patent Office the Del Monte catsup bottle configuration, for browsing in a library.
which it was granted Certificate of Trademark Registration by the  It has also been held that it is not the function of the court in cases of
Philippine Patent Office under the Supplemental Register.  In 1969, infringement and unfair competition to educate purchasers but rather
Del Monte granted Philpack the right to manufacture, distribute and sell to take their carelessness for granted, and to be ever conscious of the
in the Philippines various agricultural products, including catsup, under fact that marks need not be identical. A confusing similarity will justify
the Del Monte trademark and logo. In 1972, Del Monte also obtained the intervention of equity. The judge must also be aware of the fact
two registration certificates for its trademark “DEL MONTE” and its that usually a defendant in cases of infringement does not normally
logo. copy but makes only colorable changes. Well has it been said that the
 Respondent Sunshine Sauce Manufacturing Industries was issued a most successful form of copying is to employ enough points of
Certificate of Registration by the Bureau of Domestic Trade in 1980 to similarity to confuse the public with enough points of difference to
engage in the manufacture, packing, distribution and sale of various confuse the courts.
kinds of sauce, identified by the logo Sunshine Fruit Catsup. The logo  The court decided that there is infringement since the logo of the
was registered in the Supplemental Register in 1983. Sunshine respondent creates confusion upon the eye of the casual purchaser
Sauce’s product itself was contained in various kinds of bottles, who is unsuspicious, that the same is that of the petitioner Del Monte
including the Del Monte bottle, which it bought from the junk shops for Corporation. Since Sunshine's label is an infringement of the Del
recycling. Monte trademark, law and equity call for the cancellation of the private
 Philpack received reports that Sunshine Sauce was using its respondent's registration and withdrawal of all its products bearing the
exclusively designed bottles and a logo confusingly similar to Del questioned label from the market. With regard to the use of Del
Monte’s. Philpack warned Sunshine Sauce to desist from doing so on Monte's bottle, the same constitutes unfair competition; hence, the
pain of legal action. Thereafter, claiming that the demand had been respondent should be permanently enjoined from the use of such
ignored, Philpack and Del Monte filed a complaint against the bottles. As to the amount of damages, the court ruled that damages
Sunshine Sauce for infringement of trademark and unfair competition. cannot be granted since there was no proof presented as evidence to
 Sunshine alleged that (1) it had long ceased to use the Del Monte prove the amount thereof. The court only awarded nominal damages
bottle and that (2) its logo was substantially different from the Del to the petitioner.
Monte logo and would not confuse the buying public to the detriment of
the petitioners.

ISSUE: WoN SSMI is guilty of unfair competition.

RULING: Yes.
 which were marked as exhibits and presented to the Court would easily show that there was no
attempt on the part of the manufacturer or seller to pass these goods as products of Louis Vuitton.
From the price tags attached to a seized bag, it could be seen that the article carried a price tag of
ONE HUNDRED FORTY-SEVEN (P147.00) PESOS, whereas, upon examination of the expert
witness presented by the prosecution, he testified that a genuine bag of Louis Vuitton would cost
about FOUR THOUSAND (P4,000.00) PESOS to FIVE THOUSAND (P5,000.00) PESOS. It is
apparent that the seized articles did not come close to the appearance of a genuine Louis Vuitton
product. Further, the buckle of the bag also carries the logo of Gucci, another trade mark. From the
appearance of all the seized goods, it is very apparent that these goods were roughly done. The
quality and textures of the materials used are of low quality that an ordinary purchases exercising
ordinary [care] will easily determine that they were locally manufactured and will not pass as a
genuine Louis Vuitton products.

Elements of unfair competition

LOUIS VUITTON S.A. vs. Judge FRANCISCO VILLANUEVA
1. That the offender gives his goods the general appearance of the goods of another
FACTS: manufacturer or dealer;
2. That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping
 Jose Rosario, as owner/proprietor of Manila COD Department Store was accused by the of their packages, or in the (3) device or words therein, or in (4) any other feature of their
complainant of wilfully, unlawfully and feloniously manufacture, distribute, sell and offer appearance.
for sale lady's bags, should bags, wallets, purses and other similar goods made of leather
with the labels, trademarks and logo of "LOUIS VUITTON " and "LV", which are
exclusive trademarks owned and registered with the Philippine Patent Office in the name
of private complainant LOUIS VUITTON S.A.
 Thus, giving to them the general appearance of goods or products of said private
complainant, or such appearance which would be likely to induce the public to believe that
said goods offered are those of private complainant, in unfair competition and for the
purpose of deceiving or defrauding it of its legitimate trade or the public in general.
 The accused, on the other hand, claimed: that he is not the manufacturer or seller of the
seized articles; that the said articles were sold in the store by a concessionaire by the name
of Erlinda Tan who is doing business under the name of Hi-Tech Bags and wallets.

Issue: Whether Rosario is guilty of manufacturing, distributing, selling and offering for sale lady's
bags, should bags, wallets, purses and other similar goods made of leather with the labels,
trademarks and logo of "LOUIS VUITTON " and "LV.

Ruling:

From all the foregoing, considering that the accused denied being the manufacturer or seller of the
seized articles, it is incumbent upon the prosecution to prove that said articles are owned and being
sold by the accused. The prosecution relied as their evidence against the accused the inventory
which was signed by him (accused) with a notation under his signature "owner/representative". An
examination of the inventory . . . would show that the same was a prepared form of the NBI and that
the accused was made to sign only on the space on the typewritten word owner/representative. Aside
from this, no other evidence was presented by the prosecution to show that there is a link between
the Manufacturers of the seized goods and the accused. Further, when the case was filed the
Prosecutor's Office, it stated the name of the accused as the owner of the COD, but from the
evidence presented, it appears that the accused is not the owner by the stockholder and the
executive-vice president thereof.

With respect to the seized goods, the test of unfair competition is whether the goods have been made
to appear that will likely deceive the ordinary purchaser exercising ordinary care. The seized goods
 Prosecutor’s resolution finding probable cause to charge petitioner
with unfair competition.
 The TC judge denied the motion and arraignment ensued. 
Thereafter, Samson filed a motion to quash the informations
contending that since under Section 170 of R.A. No. 8293, the
penalty of imprisonment for unfair competition does not exceed
six years, the offense is cognizable by the Municipal Trial Courts
and not by the Regional Trial Court, per R.A. No. 7691. The TC
judge denied the motion. Hence, this petition for certiorari.

SAMSON V. DAWAY AND CATERPILLAR, INC. ISSUE/S:

G.R. NO. 160054-55 1. Which court has jurisdiction over criminal and civil cases for violation of
intellectual property rights?
July 21, 2004
2. Did the TC judge commit grave abuse of discretion when he refused to
YNARES-SANTIAGO
suspend the proceedings on the ground of existence of prejudicial
question and a pending petition for review before the Sec. of Justice on
the finding of probable cause for unfair competition?
FACTS: 

 Two information for unfair competition were filed against Samson,

the registered owner of ITTI shoes. The infomations state that RULING:
Samson did then and there willfully, unlawfully and feloniously
distribute, sell and/or offer for sale CATERPILLAR products such as 1. RTC. Under Section 170 of R.A. No. 8293, which took effect on January
footwear, garments, clothing, bags, accessories and paraphernalia 1, 1998, the criminal penalty for infringement of registered marks, unfair
which are closely identical to and/or colorable imitations of the competition, false designation of origin and false description or
authentic Caterpillar products and likewise using trademarks, representation, is imprisonment from 2 to 5 years and a fine ranging from
symbols and/or designs as would cause confusion, mistake or Fifty Thousand Pesos to Two Hundred Thousand Pesos. Corollarily, Section
deception on the part of the buying public to the damage and 163 of the same Code states that actions (including criminal and civil)
prejudice of CATERPILLAR, INC., the prior adopter, user and owner under Sections 150, 155, 164, 166, 167, 168 and 169 shall be brought
of the following before the proper courts with appropriate jurisdiction under existing laws.
internationally: “CATERPILLAR,” “CAT,” “CATERPILLAR &
DESIGN,” “CAT AND DESIGN,” “WALKING MACHINES” and “TRACK-
TYPE TRACTOR & DESIGN.”
The existing law referred to in the foregoing provision is Section 27 of R.A.
 Samson filed a motion to suspend the arraignment and other
No. 166 (The Trademark Law) which provides that jurisdiction over cases
proceedings in view of the existence of an alleged prejudicial
for infringement of registered marks, unfair competition, false
question involving a civil case for unfair competition pending with
the same branch, and also in view of the pendency of a petition for designation of origin and false description or representation, is lodged
review filed with the Secretary of Justice assailing the Chief State with the CFI (now RTC). We find no merit in the claim of Samson that R.A.
No. 166 was expressly repealed by R.A. No. 8293. The use of the Civil Case nor quote the pertinent portion thereof to prove the existence
phrases “parts of Acts” and “inconsistent herewith” only means that the of a prejudicial question. At any rate, there is no prejudicial question if
repeal pertains only to provisions which are repugnant or not the civil and the criminal action can, according to law, proceed
susceptible of harmonization with R.A. No. 8293.7 Section 27 of R.A. No. independently of each other.
166, however, is consistent and in harmony with Section 163 of R.A. No.
8293. Had R.A. No. 8293 intended to vest jurisdiction over violations of
intellectual property rights with the Metropolitan Trial Courts, it would In the case at bar, the common element in the acts constituting unfair
have expressly stated so under Section 163 thereof. competition under Section 168 of R.A. No. 8293 is fraud. Pursuant to
Article 33 of the Civil Code, in cases of defamation, fraud, and physical
injuries, a civil action for damages, entirely separate and distinct from the
Moreover, the settled rule in statutory construction is that in case of criminal action, may be brought by the injured party. Hence, Civil Case No.
conflict between a general law and a special law, the latter must prevail. Q-00-41446, which as admitted by Caterpilar also relate to unfair
Jurisdiction conferred by a special law to Regional Trial Courts must competition, is an independent civil action under Article 33 of the Civil
prevail over that granted by a general law to Municipal Trial Courts. In the Code. As such, it will not operate as a prejudicial question that will justify
case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring the suspension of the criminal cases at bar.
jurisdiction over violations of intellectual property rights to the Regional
Trial Court. They should therefore prevail over R.A. No. 7691, which is a
general law. Hence, jurisdiction over the instant criminal case for unfair While the pendency of a petition for review is a ground for suspension of
competition is properly lodged with the Regional Trial Court even if the the arraignment, the aforecited provision limits the deferment of the
penalty therefor is imprisonment of less than 6 years, or from 2 to 5 years arraignment to a period of 60 days reckoned from the filing of the petition
and a fine ranging from P50,000.00 to P200,000.00. with the reviewing office. It follows, therefore, that after the expiration of
said period, the trial court is bound to arraign the accused or to deny the
motion to defer arraignment.
In fact, to implement and ensure the speedy disposition of cases involving
violations of intellectual property rights under R.A. No. 8293, the Court
issued A.M. No. 02-1-11-SC dated February 19, 2002 designating certain In the instant case, Samson failed to establish that respondent Judge
Regional Trial Courts as Intellectual Property Courts. On June 17, 2003, the abused his discretion in denying his motion to suspend. His pleadings and
Court further issued a Resolution consolidating jurisdiction to hear and annexes submitted before the Court do not show the date of filing of the
decide Intellectual Property Code and Securities and Exchange petition for review with the Secretary of Justice.15Moreover, the Order
Commission cases in specific Regional Trial Courts designated as Special dated August 9, 2002 denying his motion to suspend was not appended to
Commercial Courts. the petition. He thus failed to discharge the burden of proving that he was
entitled to a suspension of his arraignment and that the questioned orders
are contrary to Section 11 (c), Rule 116 of the Revised Rules on Criminal
2. NO. Samson failed to substantiate his claim that there was a prejudicial Procedure. Indeed, the age-old but familiar rule is that he who alleges
question. He made no discussion in support of said prayer in his petition must prove his allegations.
and reply to comment. Neither did he attach a copy of the complaint in
 such as to influence the purchaser of the goods offered by the
defendants, to believe that the same are the goods of the plaintiff's
manufacture. So faithfully and closely has the appearance and
arrangement of plaintiff's packages of thread been followed by the
defendant, that the mind refuses to credit the possibility of
attributing the many points of identity to mere accidental
coincidence on the part of the defendant. (Brooks Bros. vs. Froelich
& Kuttner)
 For obvious reasons, it is not proper for us to say, as yet, that the
similarity in the general appearance of the two (2) labels involved
in the case at bar is such as to warrant the conclusion that the
defendant intended to engage in unfair competition. However, the
THE PEOPLE OF THE PHILIPPINES, PLAINTIFF-APPELLANT,
similarity between both is sufficient to require that the
VS. LIM HOA ALIAS LIM HOA TING DEFENDANT-APPELLEE.
determination of such question be deferred until after the trial and
G. R. No. L-10612, May 30, 1958
the submission of the case for decision on the merits.
 Pursuant to the information, the acts therein set forth were
FACTS:
performed by the accused in bad faith and with a fraudulent intent,
 Defendant Lim Hoa alias Lim Hoa Ting is accused of unfair
and tend to mislead the public into believing that his products and
competition in violation of Article 189 of the Revised Penal Code
those distributed by the complaint of is predicated upon the
for “deceiving or defrauding A Tung Chiongco Trading, an
opposite premise, namely, that the accused acted in good faith, and
authorized representative of Barrelson Inc., of its legitimate trade
that the public could not be misled into confusing or mistaking one
and/or the public in general and sell his goods, the Lantern Brand
product for the other.
Food Seasoning by then and there giving it the general appearance
 Again, although the certificate of registration of defendant's trade-
of a product named Oak Barrel Brand Food Seasoning being sold
mark is - in the language of the order appealed from - "prima facie
and distributed by said A. Tung Chingco Trading”
evidence of the validity" of such registration, such evidence is
 Defendant secured permission to withdraw his plea and moved to
rebutabble, not conclusive. In the case at bar, there is a factor that
quash the information, which was approved by the lower court.
weakens defendant's alleged "exclusive right" by virtue of said
Hence, this appeal.
registration: the fact that the "Oak Barrel" trade-mark was
registered - according to said order - on March 4, 1952, or more
ISSUE: Should the information be quashed?
than a year before the "Lantern" trade-mark. It is well settled, that
"one may be declared unfair competitor even if his competing trade-
HELD: NO.
mark is registered"
 We have examined the trade-marks or labels in question -
complaint's "Oak Barrel" and defendant's "Lantern"; Although there
are some points of difference between said labels, it cannot be, and
it is not, denied that the points of analogy specified in the
information exist.
 The similarity between the general appearance of the packages with
the labels imported and offered for sale by the defedant and those
sold by the plaintiff is so great as to require the closest scrutiny to
detect the difference, even to one wholly familiar with the packages
and wholly aware of the difference between them. The similarity is