Intellectual Property Law

Copyright
Trademark
Patent

Al-Emir Yusoph J. Balt

Carla Marie Alcos
INTELLECTUAL PROPERTY LAW OUTLINE
Introduction
1. Basis of the the Intellectual Property Law (R.A. 8293, as amended)
2. Amendments to R.A. 8293, as amended
- Republic Act No. 9150 (2001)
- Republic Act No. 9502 (2008)
- Republic Act No. 10372 (2013)
- Additional legislation relating to IPR
- Republic Act No. 10055 (2010)
3. Importance of Adopting Laws protecting Intellectual Property Rights
4. Philippine commitment to the GATT-TRIPS agreement

 Tañada vs. Angara, G.R. No. 118295, May 2, 1997

By its very title, Article II of the Constitution is a "declaration of principles and state policies."
The counterpart of this article in the 1935 Constitution is called the "basic political creed of the
nation" by Dean Vicente Sinco. These principles in Article II are not intended to be self-executing
principles ready for enforcement through the courts. They are used by the judiciary as aids or as
guides in the exercise of its power of judicial review, and by the legislature in its enactment of
laws. As held in the leading case of Kilosbayan, Incorporated v. Morato, the principles and state
policies enumerated in Article II and some sections of Article XII are not "self-executing
provisions, the disregard of which can give rise to a cause of action in the courts. They do not
embody judicially enforceable constitutional rights but guidelines for legislation."cralaw v

While the Constitution indeed mandates a bias in favor of Filipino goods, services, labor and
enterprises, at the same time, it recognizes the need for business exchange with the rest of the
world on the bases of equality and reciprocity and limits protection of Filipino enterprises only
against foreign competition and trade practices that are unfair. In other words, the Constitution
did not intend to pursue an isolationist policy. It did not shut out foreign investments, goods and
services in the development of the Philippine economy. While the Constitution does not
encourage the unlimited entry of foreign goods, services and investments into the country, it
does not prohibit them either. In fact, it allows an exchange on the basis of equality and
reciprocity, frowning only on foreign competition that is unfair.

5. Did RA 8293 repeal existing laws on intellectual property?

 Mirpuri vs. CA G.R. No. 114508, Nov. 19, 1999

The Intellectual Property Code of the Philippines declares that "an effective intellectual and
industrial property system is vital to the development of domestic and creative activity,
facilitates transfer of technology, it attracts foreign investments, and ensures market access for
our products." The Intellectual Property Code took effect on January 1, 1998 and by its express
provision, repealed the Trademark Law, the Patent Law, Articles 188 and 189 of the Revised
 Penal Code, the Decree on Intellectual Property, and the Decree on Compulsory Reprinting of
Foreign Textbooks. The Code was enacted to strengthen the intellectual and industrial property
system in the Philippines as mandated by the country's accession to the Agreement Establishing
the World Trade Organization (WTO).

 Samson vs. Daway, G.R. No. 106654. July 21, 2004

The repealing clause of R.A. No. 8293, reads –SEC. 239. Repeals. – 239.1. All Acts and parts of
Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic Act
No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree
No. 49, including Presidential Decree No. 285, as amended, are hereby repealed. (Emphasis
added) Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in its entirety,
otherwise, it would not have used the phrases "parts of Acts" and "inconsistent herewith;" and
it would have simply stated "Republic Act No. 165, as amended; Republic Act No. 166, as
amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49,
including Presidential Decree No. 285, as amended are hereby repealed." It would have
removed all doubts that said specific laws had been rendered without force and effect. The use
of the phrases "parts of Acts"and "inconsistent herewith" only means that the repeal pertains
only to provisions which are repugnant or not susceptible of harmonization with R.A. No.
8293.6 Section 27 of R.A. No. 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 have expressly stated so under
Section 163 thereof.

6. Intellectual Property Rights - Trademark, Copyright and Patents

- Sec. 4.1, R.A. 8293 Republic Act No. 8293 - Intellectual Property Law

Preliminary Matters

1. State Policy Declaration - Sec. 2

 Twentieth Century Music Corp. vs. Aiken, 422 U.S. 151

Under the Copyright Act, "[t]o perform the copyrighted work publicly for profit," since the radio
reception did not constitute a "performance" of the copyrighted songs. Fortnightly Corp. v.
United Artists, 392 U. S. 390; Teleprompter Corp. v. CBS, 415 U. S. 394. To hold that respondent
"performed" the copyrighted works would obviously result in a wholly unenforceable regime of
copyright law, and would also be highly inequitable, since (short of keeping his radio turned off)
one in respondent's position would be unable to protect himself from infringement liability.
Such a ruling, moreover, would authorize the sale of an untold number of licenses for what is
basically a single rendition of a copyrighted work, thus conflicting with the balanced purpose of
the Copyright Act of assuring the composer an adequate return for the value of his composition
while, at the same time, protecting the public from oppressive monopolies The limited scope of
the copyright holder's statutory monopoly, like the limited copyright duration required by the
Constitution, reflects a balance of competing claims upon the public interest: creative work is to
be encouraged and rewarded, but private motivation must ultimately serve the cause of
 promoting broad public availability of literature, music, and the other arts. The immediate effect
of our copyright law is to secure a fair return for an "author's" creative labor. But the ultimate
aim is, by this incentive, to stimulate artistic creativity for the general public good. "The sole
interest of the United States and the primary object in conferring the monopoly," this Court has
said, "lie in the general benefits derived by the public from the labors of authors."

 Feist Publications, Inc. vs. Rural Tele. Servs Co., 499 U.S. 340, 1991
A compilation is not copyrightable per se, but is copyrightable only if its facts have been
"selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes
an original work of authorship." § 101 (emphasis added). Thus, the statute envisions that some
ways of selecting, coordinating, and arranging data are not sufficiently original to trigger
copyright protection. Even a compilation that is copyrightable receives only limited protection,
for the copyright does not extend to facts contained in the compilation. § 103(b). Lower courts
that adopted a "sweat of the brow" or "industrious collection" test -- which extended a
compilation's copyright protection beyond selection and arrangement to the facts themselves --
misconstrued the 1909 Act and eschewed the fundamental axiom of copyright law that no one
may copyright facts or ideas.

2. Effect on International Conventions and on Principle of Reciprocity

- Sec. 3 & 231

 Mirpuri vs. CA, GR No. 114508, Nov. 19, 1999
The Convention was first signed by eleven countries in Paris on March 20, 1883. It underwent
several revisions — at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London
in 1934, at Lisbon in 1958, and at Stockholm in 1967. Both the Philippines and the United States
of America, herein private respondent's country, are signatories to the Convention. The United
States acceded on May 30, 1887 while the Philippines, through its Senate, concurred on May 10,
1965. The Philippines' adhesion became effective on September 27, 1965, and from this date,
the country obligated itself to honor and enforce the provisions of the Convention.

Art. 6bis was first introduced at The Hague in 1925 and amended in Lisbon in 1952. It is a self-
executing provision and does not require legislative enactment to give it effect in the member
country. It may be applied directly by the tribunals and officials of each member country by the
mere publication or proclamation of the Convention, after its ratification according to the public
law of each state and the order for its execution. The essential requirement under Article 6bis is
that the trademark to be protected must be "well-known" in the country where protection is
sought. The power to determine whether a trademark is well-known lies in the "competent
authority of the country of registration or use." This competent authority would be either the
registering authority if it has the power to decide this, or the courts of the country in question if
the issue comes before a court.

3. Coverage of Intellectual Property Rights/ Differences - Sec. 4.1

 Kho vs. CA, G.R. No. 115758, March 19, 2002

 Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable.

 Pearl & Dean Inc. vs. Shoemart Inc., G.R. No. 148222, August 15, 2003

P & D secured its copyright under the classification class "O" work. This being so, petitioner’s
copyright protection extended only to the technical drawings and not to the light box itself
because the latter was not at all in the category of "prints, pictorial illustrations, advertising
copies, labels, tags and box wraps. " Stated otherwise, even as we find that P & D indeed owned
a valid copyright, the same could have referred only to the technical drawings within the
category of "pictorial illustrations." It could not have possibly stretched out to include the
underlying light box. The president of P & D himself admitted that the light box was neither a
literary not an artistic work but an "engineering or marketing invention." Obviously, there
appeared to be some confusion regarding what ought or ought not to be the proper subjects of
copyrights, patents and trademarks. In the leading case of Kho vs. Court of Appeals,we ruled
that these three legal rights are completely distinct and separate from one another, and the
protection afforded by one cannot be used interchangeably to cover items or works that
exclusively pertain to the others:

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable.

3. The Intellectual Property Office - Sec. 5 to 16 as amended

 Pest Management Association of the Philippines. Vs. Fertilizer and Pesticide Authority, G.R.
No. 156041, February 21, 2007

There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise
known as the Intellectual Property Code of the Philippines. Section 5 thereof enumerates the
functions of the IPO. Nowhere in said provision does it state nor can it be inferred that the law
intended the IPO to have the exclusive authority to protect or promote intellectual property
rights in the Philippines. On the contrary, paragraph (g) of said Section even provides that the
 IPO shall "[c]oordinate with other government agencies and the private sector efforts to
formulate and implement plans and policies to strengthen the protection of intellectual
property rights in the country." Clearly, R.A. No. 8293 recognizes that efforts to fully protect
intellectual property rights cannot be undertaken by the IPO alone. Other agencies dealing with
intellectual property rights are, therefore, not precluded from issuing policies, guidelines and
regulations to give protection to such rights.

 In-N-Out Burger, Inc., v. Sehwani. Incorporated and/or Benita's Frites, Inc., G.R. No. 179127,
December 24, 2008

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition,
nothing in the said section states that the regular courts have sole jurisdiction over unfair
competition cases, to the exclusion of administrative bodies. On the contrary, Sections 160 and
170, which are also found under Part III of the Intellectual Property Code, recognize the
concurrent jurisdiction of civil courts and the IPO over unfair competition cases. These two
provisions read: Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark
Enforcement Action.–Any foreign national or juridical person who meets the requirements of
Section 3 of this Act and does not engage in business in the Philippines may bring a civil
or administrative action hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description, whether or not it is licensed to
do business in the Philippines under existing laws. x x x

Section 170. Penalties.–Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from
Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on
any person who is found guilty of committing any of the acts mentioned in Section 155,
Section168, and Subsection169.1. Based on the foregoing discussion, the IPO Director of Legal
Affairs had jurisdiction to decide the petitioner's administrative case against respondents and
the IPO Director General had exclusive jurisdiction over the appeal of the judgment of the IPO
Director of Legal Affairs.

 Phil Pharmawealth, Inc., v. Pfizer, Inc. and Pfizer (Phil.) Inc., G.R. No. 167715, November 17,
2010

It is true that under Section 7(b) of RA 8293, otherwise known as the Intellectual Property Code
of the Philippines, which is the presently prevailing law, the Director General of the IPO
exercises exclusive appellate jurisdiction over all decisions rendered by the Director of the BLA-
IPO. However, what is being questioned before the CA is not a decision, but an interlocutory
order of the BLA-IPO denying respondents' motion to extend the life of the preliminary
injunction issued in their favor.

RA 8293 is silent with respect to any remedy available to litigants who intend to question an
interlocutory order issued by the BLA-IPO. Moreover, Section 1(c), Rule 14 of the Rules and
Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property
Rights simply provides that interlocutory orders shall not be appealable. The said Rules and
Regulations do not prescribe a procedure within the administrative machinery to be followed in
assailing orders issued by the BLA-IPO pending final resolution of a case filed with them. Hence,
in the absence of such a remedy, the provisions of the Rules of Court shall apply in a suppletory
manner, as provided under Section 3, Rule 1 of the same Rules and Regulations. Hence, in the
present case, respondents correctly resorted to the filing of a special civil action
forCertiorari with the CA to question the assailed Orders of the BLA-IPO, as they cannot appeal
therefrom and they have no other plain, speedy and adequate remedy in the ordinary course of
law. This is consistent with Sections 1[20] and 4,[21] Rule 65 of the Rules of Court, as amended.
ADOPTION OF INTELLECTUAL PROPERTY POLICIES - Sec, 230 (New Provision
introduced by RA 10372)
The Law on Copyright
1. Definitions - Sec. 171-171.13 as amended by RA 10372

2. Protection, when commenced - Sec. 172.2

3. Idea/Expression Dichotomy - Sec. 175

4. Works Protected

a. Literary or Artistic Works - Sec. 172-172.2

 Columbia Pictures vs. CA. 261 SCRA 144 (1990)

As correctly pointed out by private complainants-oppositors, the Department of Justice

has resolved this legal question as far back as December 12, 1978 in its Opinion No. 191
of the then Secretary of Justice Vicente Abad Santos which stated that Sections 26 and
50 do not apply to cinematographic works and PD No. 49 “had done away with the
registration and deposit of cinematographic works” and that “even without prior
registration and deposit of a work which may be entitled to protection under the
Decree, the creator can file action for infringement of its rights.” He cannot demand,
however, payment of damages arising from infringement. The same opinion stressed
that “the requirements of registration and deposit are thus retained under the Decree,
not as conditions for the acquisition of copyright and other rights, but as prerequisites
to a suit for damages.” The statutory interpretation of the Executive Branch being
correct, is entitled (to) weight and respect. Furthermore, a closer review of Presidential
Decree No. 49 reveals that even with respect to works which are required under Section
26 thereof to be registered and with copies to be deposited with the National Library,
such as books, including composite and cyclopedic works, manuscripts, directories and
gazetteers; and periodicals, including pamphlets and newspapers; lectures, sermons,
addresses, dissertations prepared for oral delivery; and letters, the failure to comply
with said requirements does not deprive the copyright owner of the right to sue for
infringement. Such non-compliance merely limits the remedies available to him and
subjects him to the corresponding sanction. The reason for this is expressed in Section 2
of the decree which prefaces its enumeration of copyrightable works with the explicit
statement that “the rights granted under this Decree shall, from the moment of
creation, subsist with respect to any of the following classes of works.” This means that
under the present state of the law, the copyright for a work is acquired by an
intellectual creator from the moment of creation even in the absence of registration and
deposit. As has been authoritatively clarified: The registration and deposit of two
complete copies or reproductions of the work with the National Library within three
weeks after the first public dissemination or performance of the work, as provided for in
Section 26 (P.D. No. 49, as amended), is not for the purpose of securing a copyright of
 the work, but rather to avoid the penalty for non-compliance of the deposit of said two
copies and in order to recover damages in an infringement suit.

 Ching vs. Salinas, G.R. No. 161295, June 29, 2005

It is worthy to state that the works protected under the Law on Copyright are: literary or
artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing
and Vehicle Bearing Cushion fall on neither classification. Being plain automotive spare
parts that must conform to the original structural design of the components they seek
to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental.
They lack the decorative quality or value that must characterize authentic works of
applied art. They are not even artistic creations with incidental utilitarian functions or
works incorporated in a useful article. In actuality, the personal properties described in
the search warrants are mechanical works, the principal function of which is utility sans
any aesthetic embellishment. Neither are we to regard the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion as included in the catch-all phrase “other literary, scholarly,
scientific and artistic works” in Section 172.1(a) of R.A. No. 8293. Applying the principle
of ejusdem generis which states that “where a statute describes things of a particular
class or kind accompanied by words of a generic character, the generic word will usually
be limited to things of a similar nature with those particularly enumerated, unless there
be something in the context of the state which would repel such inference,”[46] the
Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of
the same kind and nature as the works enumerated in Section 172 of R.A. No. 8293

b. Derivative Works - Sec. 173

 Laktaw vs. Paglinawan, 44 Phil. 855 (1918)

Article 7 of the Law of January 10, 1879, on Intellectual Property: Nobody may
reproduce another person's work without the owner's consent, even merely to
annotate or add anything to it, or improve any edition thereof. . It is not necessary that
a work should be an improper copy of another work previously published. It is enough
that another's work has been reproduced without the consent of the owner, even
though it be only to annotate, add something to it, or improve any edition thereof.

c. Published Edition of Work -Sec. 174

5. Works Not Protected

Sec. 175

a. Unprotected Subject Matter - Sec. 175

 Joaquin, Jr. vs. Drilon, 302 SCRA 225 (1999)

The format or mechanics of a television show is not included in the list of protected works in §2
of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended to cover them.
The essence of copyright infringement is the copying, in whole or in part, of copyrightable materials as
defined and enumerated in Section 2 of PD. No. 49. Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is, in the opinion of this Office, a non-copyrightable
material. Ideas, concepts, formats, or schemes in their abstract form clearly do not fall within the class
of works or materials susceptible of copyright registration as provided in PD. No. 49. Copyright, in the
strict sense of the term, is purely a statutory right. It is a new or independent right granted by the
statute, and not simply a pre-existing right regulated by the statute. Being a statutory grant, the rights
are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the statute. P.D. No. 49, §2, in
enumerating what are subject to copyright, refers to finished works and not to concepts. The copyright
does not extend to an idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such
work. What then is the subject matter of petitioners’ copyright? The Court is of the opinion that
petitioner BJPI’s copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling
within the class of works mentioned in P.D. 49, §2(M), to wit: Cinematographic works and works
produced by a process analogous to cinematography or any process for making audiovisual recordings;

b. Works of Government Sec. 176: 171.11

6. Copyright or Economic Rights: Ownership

a. Copyright or Economic Rights - Ser

Pearl & Dean Inc., supra

 Filipino Society of Composers vs. Tan. 148 SCRA 461 (1987)

The playing of music in dine and dance establishment which was paid for by the public
in purchases of food and drink constituted "performance for profit" within a Copyright
Law (Buck, et al. v. Russon No. 4489 25 F. Supp. 317). The Supreme Court has ruled that
"Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated
September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating
to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165,
provides among other things that an intellectual creation should be copyrighted thirty
(30) days after its publication, if made in Manila, or within the (60) days if made
elsewhere, failure of which renders such creation public property." (Santos v.
McCullough Printing Company, 12 SCRA 324- 325 [1964]. Indeed, if the general public
has made use of the object sought to be copyrighted for thirty (30) days prior to the
copyright application the law deems the object to have been donated to the public
domain and the same can no longer be copyrighted. A careful study of the records
reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 (Brief for
Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration
(TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on
January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years
prior to 1968, (the year of the hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the
songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on
July 10, 1966, appear to have been known and sang by the witnesses as early as 1965 or
three years before the hearing in 1968. The testimonies of the witnesses at the hearing
of this case on this subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30).

 Malang Santos vs. McCullough Printing, 12 SCRA 321 (1964)

Art. 721. By intellectual creation, the following persons acquire ownership: (1) The
author with regard to his literary, dramatic, historical, legal, philosophical, scientific or
other work; (2) The composer; as to his musical composition; (3) The painter, sculptor,
or other artist, with respect to the product of his art; (4) The scientist or technologist or
any other person with regard to his discovery or invention. (n) Art. 722. The author and
the composer, mentioned in Nos. 1 and 2 of the preceding article, shall have the
ownership of their creations even before the publication of the same. Once their works
are published, their rights are governed by the Copyright laws. The painter, sculptor or
other artist shall have dominion over the product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before
it is patented. (n) Held 1st issue: The Supreme Court found that plaintiff is not entitled
to a protection, the provision of the Civil Code, notwithstanding. Paragraph 33 of Patent
Office Administrative Order No. 3 (as amended dated September 18, 1947) entitled
"Rules of Practice in the Philippines Patent Office relating to the Registration of
Copyright Claims" promulgated pursuant to Republic Act 165, provides, among others,
that an intellectual creation should be copyrighted thirty (30) days after its publication,
if made in Manila, or within sixty (60) day's if made elsewhere, failure of which renders
such creation public property. In the case at bar, even as of this moment, there is no
copyright for the design in question. 2nd issue: We are not also prepared to accept the
contention of appellant that the publication of the design was a limited one, or that
there was an understanding that only Ambassador Neri should, have absolute right to
use the same. In the first place, if such were the condition then Ambassador Neri would
be the aggrieved party, and not the appellant. In the second place, if there was such a
limited publication or prohibition, the same was not shown on the face of the design.
When the purpose is a limited publication, but the effect is general publication,
irrevocable rights thereupon become vested in the public, in consequence of which
enforcement of the restriction becomes impossible (Nutt vs. National Institute, 31 F [2d]
236). It has been held that the effect of offering for sale a dress, for example
manufactured in accordance with an original design which is not protected by either a
copyright or a patent, is to divest the owner of his common law rights therein by virtue
of the publication of a 'copy' and thereafter anyone is free to copy the design or the
dress (Fashion Originators Guild of America v. Federal Trade Commission, 114 F [2d] 80).
When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff
lost control of his design and the necessary implication was that there had been a
general publication, there having been no showing of a clear indication that a limited
publication was intended. The author of a literary composition has a light to the first
publication thereof. He has a right to determine whether it shall be published at all, and
if published, when, where, by whom, and in what form. This exclusive right is confined
to the first publication. When once published, it is dedicated to the public, and the
author loses the exclusive right to control subsequent publication by others, unless the
 work is placed under the protection of the copyright law. (See II Tolentino's Comments
on the Civil Code, p. 433, citing Wright v. Eisle 83 N.Y. Supp. 887.) 3rd issue: Art. 722.
The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall
have the ownership of their creations even before the publication of the same. Once
their works are published, their rights are governed by the Copyright laws. The painter,
sculptor or other artist shall have dominion over the product of his art even before it is
copyrighted. The scientist or technologist has the ownership of his discovery or
invention even before it is patented. (n)

b. Copyright Ownership - Sec. 178, 179; Art. 723 (NCC)

7. Transfer/Assignment or Licensing of Copyright - Sec. 180 to 180.5 to Sec. 182

8. Designation of Society - Sec. 183

9. Limitations of Copyright

a. Limitations On Copyright - Sec. 184: 184.1 (a) to (1); 184.2

b. Fair Use of Copyright Work - Sec. 185 as amended

 A&M Records Inc. vs. Napster Inc. No. 00-16401 (U.S. Court Decision)

The court also examined Napster’s fair use claims using the four fair use factors:
purpose and character of the use, nature of the use, portion used, effect of use on the
market. The court decided that Napster’s argument for sampling did not hold, because
the “samples” were in fact permanent and complete files on the users’ hard drives. Also,
Napster’s space-shifting argument did not hold, because the users were not just simply
converting their media between formats for storage, but were sharing the files as well.
No decision was made on the argument of permissive reproduction, because the
plaintiffs did not challenge this use. Finally, the court rejected Napster’s request for a
compulsory license, citing that such a device would provide Napster with an “easy out”
while seemingly punishing the copyright holders.

 Habana vs. Robles G.R. No. 131522. July 19, 1999

A perusal of the records yields several pages of the book DEP that are similar if not
identical with the text of CET. The court finds that respondent Robles' act of lifting from
the book of petitioners substantial portions of discussions and examples, and her failure
to acknowledge the same in her book is an infringement of petitioners' copyrights. In
the case at bar, the least that respondent Robles could have done was to acknowledge
petitioners Habana et. al. as the source of the portions of DEP. The final product of an
author's toil is her book. To allow another to copy the book without appropriate
acknowledgment is injury enough.

c. Work of Architecture - Sec. 186

d. Reproduction of Published Work --Sec. 187-187.2

e. Reprographic Reproduction by Libraries - Sec. 188

 f. Reproduction of Computer Program - Sec. 189

g. Importation for Personal Purposes - Sec. 190 as amended (Sec. 190.1 &190.2 are already

deleted by RA 10372)

10. Registration and Deposit with National Library and Supreme Court Library - Sec. 191 (as

amended): 192, 227; 228

11. Moral Rights

a. Scope of Moral Rights - Sec. 193

b. Breach of Contract - Sec. 194

c. Waiver of Moral Rights - Sec. 195

d. Contribution to Collective Work - Sec. 196

e. Term of Moral Rights - Sec, 198 as amended; 199, 226

12. Rights to Proceed in Subsequent Transfers

a. Sale or Lease of Work - Sec. 200; 201

13. Rights of Performers, Producers of Sound Recordings and Broadcasting Organizations

a. Definitions - Sec. 202- 202.8

b. Scope of Performers' Rights - Sec. 203 as amended

C. Moral Rights of Performers - Sec. 204; 204.1 as amended

d. Limitation on Performers' Rights - Sec. 205, 205.2

e. Additional Remuneration for Subsequent communications or Broadcasts - Sec. 206

f. Contract Terms - Sec. 207

g. Scope and Limitation of Right on Sound Recordings - Sec. 208 as amended; 210

h. Communication to the Public on Sound Recordings --Sec. 209

i. Scope of Right of Broadcasting Organizations - Sec. 211

j. Limitations on Rights - Sec. 212

 ABS-CBN vs. Phil. Multi-Media System Inc., G.R. No. 175769-70, Jan. 19, 2009

The use made of a work by or under the direction or control of the Government, by the
National Library or by educational, scientific or professional institutions where such use
is in the public interest and is compatible with fair use

14. Term of Protection in General

 a. Term of Protection - Sec. 213

Joint Authorship - Sec. 213.2

Anonymous or Pseudonymous Works - Sec. 213.3

Works of Applied Art - Sec. 213.4

Photographic Works - Sec. 213.5

Audio-visual Works - Sec. 213.6

Calculation of Terms --Sec. 214

b. Term of Protection for Performers, Producers and Broadcasting Organizations - Sec.

215,215.2

15. Infringement

a. How committed - Sec. 216 (new provision added by RA 10372)

 Microsoft Corp. vs. Hwang, G.R. No. 147043, June 21, 2005

Respondents’ contention that the 12 CD-ROMs Sacriz and Samiano purchased cannot be traced
to them because the receipt for these articles does not indicate its source is unavailing. The
receipt in question should be taken together with Microsoft’s claim that Sacriz and Samiano
bought the CD-ROMs from respondents.56 Together, these considerations point to respondents
as the vendor of the counterfeit CD-ROMs. Respondents do not give any reason why the Court
should not give credence to Microsoft’s claim. For the same reason, the fact that the receipt for
the CPU does not indicate "[s]oftware hard disk" does not mean that the CPU had no pre-
installed Microsoft software. Respondents Keh and Chua admit in their counter-affidavit that
respondents are the "source" of the pre-installed MS-DOS software.

Microsoft Corp. vs. Maxicorp Inc., 438 SCRA 224

b. Remedies for Infringement --Sec. 216.1 amendment: 216.2

Habana vs. Robles, 310 SCRA 522 (1999) supra

Columbia Pictures Inc. vs. CA, supra

c. Criminal Penalties - Sec. 217 as amended

d. Affidavit Evidence - Sec 218 as amended

e. Presumption of Authorship - Sec. 219; 219.2

 Bayanihan Music Phils., Inc. vs BMG Records, G.R. No. 166337, March 7, 2005
We have constantly reminded courts that there is no power, the exercise of which is more
delicate and requires greater caution, deliberation and sound discretion, or which is more
dangerous in a doubtful case, than the issuance of an injunction. A court should, as much as
possible, avoid issuing the writ which would effectively dispose of the main case without trial.

Here, nothing is more evident than the trial court's abiding awareness of the
extremely difficult balancing act it had to perform in dealing with petitioner's
prayer for injunctive reliefs. Conscious, as evidently it is, of the fact that there is
manifest abuse of discretion in the issuance of an injunctive writ if the following
requisites provided for by law are not present: (1) there must be a right in
esse or the existence of a right to be protected; and (2) the act against which the
injunction is to be directed is a violation of such right, the trial court threaded
the correct path in denying petitioner's prayer therefor. For, such a writ should
only be granted if a party is clearly entitled thereto.
f. international Registration of Works - Sec. 220

g. Disclosure of Information - Sec. 2204

16. Points of Attachment of Rights

a. For Literary and Artistic Works and Derivative Works - Sec. 221; 221.1

Pearl & Dean Inc. vs. Shoemart Inc., G.R. No. 148222, August 15, 2003 Supra

b. For Performers - Sec. 222

c. Of Sound Recordings - Sec. 223

d. For Broadcast - Sec. 224; 224.2

The Law on Trademarks, Service Marks and Trade Names
1. Purpose of the Trademark Law

 Philip Morris Inc. vs. Fortune Tobacco Corp. G.R. No. 158589, June 27, 2006

A fundamental principle of Philippine Trademark Law is that actual use in commerce in the
Philippines is a pre-requisite to the acquisition of ownership over a trademark or a trade name.

2. Historical Development

 Mirpuri vs. CA, G.R. No. 114508, Nov. 19, 1999

RA 8293 defines trademark as any visible sign capable of distinguishing goods. The Paris
Convention is a multilateral treaty that seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service marks, trade names and indications of
source or appellations of origin, and at the same time aims to repress unfair competition. In
short, foreign nationals are to be given the same treatment in each of the member countries as
that country makes available to its own citizens. Nationals of the various member nations are
thus assured of a certain minimum of international protection of their industrial property.

3. Definition of marks, service marks & collective marks

Sec. 121, 121.1; 121.2 Mirpuri vs. CA, supra

 Canon Kabushiki Kaisha vs. CA. GR No. 120900. July 20, 2000

The ownership of a trademark or trade name is a property right that the owner is entitled to
protect as mandated by the Trademark Law. However, when a trademark is used by a party for a
product in which the other party does not deal, the use of the same trademark on the latter's
product cannot be validly objected to

 Societe des Produits vs. CA, GR No. 112012, April 4, 2001

The word “MASTER” is neither a generic nor a descriptive term. As such, said term cannot be
invalidated as a trademark and, therefore, may be legally protected. Generic terms are those
which constitute “the common descriptive name of an article or substance,” or comprise the
“genus of which the particular product is a species,” or are “commonly used as the name or
description of a kind of goods,” or “imply reference to every member of a genus and the
exclusion of individuating characters,” or “refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a particular product,” and are
not legally protectable. On the other hand, a term is descriptive and therefore invalid as a
trademark if, as understood in its normal and natural sense, it “forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has never seen it and
does not know what it is,” or “if it forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods,” or if it clearly denotes what goods or services are
provided in such a way that the consumer does not have to exercise powers of perception or
imagination. Rather, the term “MASTER” is a suggestive term brought about by the advertising
scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require
 “imagination, thought and perception to reach a conclusion as to the nature of the goods.” Such
terms, “which subtly connote something about the product,” are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of shedding “some light”
upon certain characteristics of the goods or services in dispute, they nevertheless involve “an
element of incongruity,” “figurativeness,” or ” imaginative effort on the part of the observer.” In
associating its coffee products with the term “MASTER” and thereby impressing them with the
attributes of said term… x x x The term “MASTER”, therefore, has acquired a certain connotation
to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle

4. Functions of a Trademark

 Mirpuri vs. CA, supra

In Philippine jurisprudence, the function of a trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to secure to him, who has been instrumental in
bringing into the market a superior article of merchandise, the fruit of his industry and skill; to
assure the public that they are procuring the genuine article; to prevent fraud and imposition;
and to protect the manufacturer against substitution and sale of an inferior and different article
as his product. Modern authorities on trademark law view trademarks as performing three
distinct functions: (1) they indicate origin or ownership of the articles to which they are
attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3)
they advertise the articles they symbolize.

 Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676. July 30, 1982

The right to a trademark is a limited one, hence, others may use the same mark on unrelated
goods if no confusion would arise. A trademark is designed to identify the user, hence, it should
be so distinctive and sufficiently original so as to enable those who see it to recognize instantly
its source or origin. A trademark must be affirmative and definite, significant and distinctive and
capable of indicating origin.

5. Nature of a Trademark Right

 Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 (1961)

The word ‘SELECTA’, it is true, may be an ordinary or common word in the sense that may be
used or employed by anyone in promoting his business or enterprise, but once adopted or
coined in connection with 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 be exclusively
associated with its products and business. In this sense, its use by another may lead to confusion
in trade and cause damage to its business. And this is the situation of petitioner when it used
the word ‘SELECTA’ as a trade-mark. In this sense, the law gives its protection and guarantees its
use to the exclusion of all others. And it is also in the sense that the law postulates that “The
ownership or possession of a trademark,. . . shall be recognized and protected in the same
 manner and to the same extent, as are other property rights known to the law,” thereby giving
to any person entitled to the exclusive use of such trade-mark the right to recover damages in a
civil action from any person who may have sold goods of similar kind bearing such trade-mark

 Converse Rubber vs. Universal Rubber, G.R. No. L-27906, Jan. 8, 1987

From a cursory appreciation of the Converse Rubber’s corporate name “CONVERSE RUBBER
CORPORATION” it is evident that the word “CONVERSE” is the dominant word which identifies
Converse Rubber from other corporations engaged in similar business. Universal Rubber, in the
stipulation of facts, admitted Converse Rubber’s existence since 1946 as a duly organized foreign
corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its
knowledge of the reputation and business of petitioner even before it applied for registration of
the trademark in question. Knowing, therefore, that the word “CONVERSE” belongs to and is
being used by Converse Rubber, and is in fact the dominant word in its corporate name,
Universal Rubber has no right to appropriate the same for use on its products which are similar
to those being produced by Converse Rubber.

6. Trademark vs. Trade name

Sec. 121.3; 165

 Canon Kabushiki Kaisha, CA, supra

The term “trademark” is defined by RA 166, the Trademark Law, as including “any word, name,
symbol, emblem, sign or device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish them for those manufactured,
sold or dealt in by others.” Tradename is defined by the same law as including “individual names
and surnames, firm names, tradenames, devices or words used by manufacturers, industrialists,
merchants, agriculturists, and others to identify their business, vocations, or occupations; the
names or titles lawfully adopted and used by natural or juridical persons, unions, and any
manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or
commerce.” Simply put, a trade name refers to the business and its goodwill; a trademark refers
to the goods

7. Basis of the Right to a Mark

Sec. 122

 Puma Sportsshenfabriken vs. IAC, G.R. No. 75067, Feb. 26, 1988

The mandate of the aforementioned Convention finds implementation in Section 37 of RA No.

166, otherwise known as the trademark Law: Rights of Foreign Registrants. — Persons who are
nationals of, domiciled in, or have a bona fide or effective business or commercial establishment
in any foreign country, which is a party to an international convention or treaty relating to marks
or tradenames on the represssion of unfair competition to which the Philippines may be party,
shall be entitled to the benefits and subject to the provisions of this Act ...
 Tradenames of persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form part of marks.The Court,
therefore, hold that the petitioner had the legal capacity to file the action below.

After all,the right to register a trademark must be based on ownership thereof. Ownership of
the trademark is an essential requisite to be proved by the applicant either in a cancellation case
or in a suit for infringement of trademark. The relief prayed for by the parties in Inter Partes
Cases Nos. 1259, 1675 and 1945 and Civil Case No. 11189 before respondent court seek for the
cancellation of usurper's trademark, and the right of the legal owner to have exclusive use of
said trademark. From the totality of the obtaining circumstances, the rights of the respective
parties are dependent upon the resolution of a single issue, that is, the rightful ownership of the
trademark in question.

 Marvex Commercial Co., Inc. vs. Petra Hawpia& Co, L-16297, Dec. 22, 1926

Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to register trademarks,
tradenames and service marks by any person, corporation, partnership or association domiciled
in the Philippines or in any foreign country, is based on ownership, and the burden is upon the
applicant to prove such ownership. Not being the owner of the trademark "LIONPAS" but being
merely an importer and/or distributor of the said penetrative plaster, the applicant is not
entitled under the law to register it in its name

 Operators Inc. vs. Director of Patents, L-17901, Oct. 29, 1965

Under section 2 of Republic Act No. 166, as amended by section 1 of Republic Act No. 865,
trademarks, tradenames, and service marks, owned by persons, corporations, partnerships or
associations domiciled in the Philippines or in any foreign country may be registered here
provided certain conditions enumerated in the same section are complied with. The right to
register, as may be noted, is based on ownership. In the case of the trademark AMBISCO, the
evidence shows that it is owned by the American Biscuit Co., Inc., and not by petitioner
Operators, Inc. Petitioner objects to the consideration of the question of ownership of the
trademark as an issue on the ground that it was not raised by respondent either in its opposition
or in its memorandum filed after the parties had adduced their evidence. In the first place
respondent could not have known at the outset that petitioner was not the owner of the
trademark it was seeking to register. That fact was brought out for the first time when the
certification quoted above was presented. Secondly, it was incumbent upon petitioner, as
applicant, to prove that it had a right to register the trademark applied for and consequently, to
show compliance with all the legal requisites including ownership thereof. An application for
registration under the Patent Law is not an ordinary litigious controversy between private
parties. Public interest is involved and all questions as to whether or not the law is satisfied may
be considered by the Patent Office or by the Court even though not specifically raised by either
of the parties.

 Gabriel vs. Perez, G.R. No. L-24075, Jan. 31, 1974

 Under Section 2 and 2-A of the Trademark Law, Republic Act No. 166, amended, the right to
register trademark is based on ownership and a mere distributor of a product bearing a
trademark, even if permitted to use said trademark, has right to and cannot register the said
trademark. Thus, as stated in the decision under review: "Therefore, it cannot be denied that
the Respondent is the originator and manufacturer of the so-called "Dr. Perez Wonder Beauty
Soap," a phrase clearly coined by, and associated with, the Respondent. As such, the
connotation in itself is sufficient to clothe the product as an item or a commodity emanating
from a particularly identified source who is none other than Dr. Jose R. Perez. The words serve
as an indication of origin, and the product identified by the words can never be regarded as
having emanated or originated from another individual, typical of which is the Petitioner, mere
distributor."

 Unno vs. General Milling, G.R. No. L-28554, Feb. 28, 1983

Ownership of a trademark is not acquired by the mere fact of registration alone. Prior use of
trademark controverts a claim of legal appropriation by subsequent users.Registration merely
creates a prima facie presumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use thereof. Registration does not
perfect a trademark right. Ownership, basis of right to register trademark; Applicant has no right
to apply for registration of trademark if he is not the owner of the trademark applied for.

The right to register trademark is based on ownership. When the applicant is not the owner of
the trademark being applied for, he has no right to apply for the registration of the same. Under
the Trademark Law only the owner of the trademark, trade name or service mark used to
distinguish his goods, business or service from the goods, business or service of others is entitled
to register the same.

Term “owner” in Rule 37 of the Rules of Practice in Trademark Cases, defined.-The term owner
does not include the importer of the goods bearing the trademark, trade name, service mark, or
other mark of ownership, unless such importer is actually the owner thereof in the country from
which the goods are imported. A local importer, however, may make application for the
registration of a foreign trademark, trade name or service mark if he is duly authorized by the
actual owner of the name or other mark of ownership.

 Emerald Garments Mfg. Corp. v. Court of Appeals, GR No. 100098, December 29, 1995, 251
SCRA 600

"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership
over and singular use of said term.

. . . It has been held that a personal name or surname may not be monopolized as a
trademark or tradename as against others of the same name or surname. For in the
absence of contract, fraud, or estoppel, any man may use his name or surname in all
legitimate ways. Thus, "Wellington" is a surname, and its first user has no cause of
 action against the junior user of "Wellington" as it is incapable of exclusive
appropriation.

In addition to the foregoing, we are constrained to agree with petitioner's contention that
private respondent failed to prove prior actual commercial use of its "LEE" trademark in the
Philippines before filing its application for registration with the BPTTT and hence, has not
acquired ownership over said mark.

Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of
ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A.
No. 166)

Converse Rubber vs. Universal Rubber, GR No. L-27906, Jan. 8, 1987

A trade name is any individual name or surname, firm name, device or word used by
manufacturers, industrialists, merchants and others to Identify their businesses,
vocations or occupations. As the trade name refers to the business and its goodwill ...
the trademark refers to the goods." The ownership of a trademark or tradename is a
property right which the owner is entitled to protect "since there is damage to him from
confusion or reputation or goodwill in the mind of the public as well as from confusion
of goods. The modern trend is to give emphasis to the unfairness of the acts and to
classify and treat the issue as fraud. 10

From a cursory appreciation of the petitioner's corporate name "CONVERSE RUBBER

CORPORATION,' it is evident that the word "CONVERSE" is the dominant word which Identifies
petitioner from other corporations engaged in similar business. Respondent, in the stipulation of
facts, admitted petitioner's existence since 1946 as a duly organized foreign corporation
engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge
of the reputation and business of petitioner even before it applied for registration of the
trademark in question. Knowing, therefore, that the word "CONVERSE" belongs to and is being
used by petitioner, and is in fact the dominant word in petitioner's corporate name, respondent
has no right to appropriate the same for use on its products which are similar to those being
produced by petitioner.

 Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, G.R. No. L-

19906, April 30, 1969, 27 SCRA 1214

It would seem quite clear that adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use." Adoption is not use. One may make
advertisements, issue circulars, give out price lists on certain goods; but these alone would not
give exclusive right of use. For trademark is a creation of use. The underlying reason for all these
is that Purchasers have come to understand the mark as indicating the origin of the
wares. Flowing from this is the trader's right to protection in the trade he has built up and the
goodwill he has accumulated from use of the trademark. Registration of a trademark, of course,
has value: it is an administrative act declaratory of a pre-existing right. Registration does not,
however, perfect a trademark right.
  Berris Agricultural Co., Inc. v. Norby Abyudang, G.R. No. 183404, October 13, 2010

The ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. Section 122 of
R.A. No. 8293 provides that the rights in a mark shall be acquired by means of its valid
registration with the IPO. A certificate of registration of a mark, once issued, constitutes prima
facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and
of the registrant’s exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate. R.A. No. 8293, however, requires the
applicant for registration or the registrant to file a declaration of actual use (DAU) of the mark,
with evidence to that effect, within three (3) years from the filing of the application for
registration; otherwise, the application shall be refused or the mark shall be removed from the
register.

8. Prior Use of a Mark

Sec. 124.2 Sec. 152

Sec. 138

9. Who may apply for a mark?

Sec. 3

10. Registrability of a Mark

Sec. 123.1; 123.3

 Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December 29, 1995, 251
SCRA 600

Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of
ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A.
No. 166) which explicitly provides that:

CHAPTER II. Registration of Marks and Trade-names.

Sec. 2. What are registrable. — Trade-marks, trade-names, and service marks owned by
persons, corporations, partnerships or associations domiciled in the Philippines and by
persons, corporations, partnerships, or associations domiciled in any foreign country
may be registered in accordance with the provisions of this act: Provided, That said
trade-marks, trade-names, or service marks are actually in use in commerce and services
not less than two months in the Philippines before the time the applications for
registration are filed: And Provided, further, That the country of which the applicant for
registration is a citizen grants by law substantially similar privileges to citizens of the
Philippines, and such fact is officially certified, with a certified true copy of the foreign
law translated into the English language, by the government of the foreign country to
the Government of the Republic of the Philippines. (As amended.) (Emphasis ours.)
 The credibility placed on a certificate of registration of one's trademark, or its weight as
evidence of validity, ownership and exclusive use, is qualified. A registration certificate serves
merely as prima facie evidence. It is not conclusive but can and may be rebutted by
controverting evidence.

Moreover, the aforequoted provision applies only to registrations in the principal

register. Registrations in the supplemental register do not enjoy a similar privilege. A
supplemental register was created precisely for the registration of marks which are not
registrable on the principal register due to some defects.

The determination as to who is the prior user of the trademark is a question of fact and it is this
Court's working principle not to disturb the findings of the Director of Patents on this issue in
the absence of any showing of grave abuse of discretion. The findings of facts of the Director of
Patents are conclusive upon the Supreme Court provided they are supported by substantial
evidence.

In the case at bench, however, we reverse the findings of the Director of Patents and the Court
of Appeals. After a meticulous study of the records, we observe that the Director of Patents and
the Court of Appeals relied mainly on the registration certificates as proof of use by private
respondent of the trademark "LEE" which, as we have previously discussed are not sufficient.
We cannot give credence to private respondent's claim that its "LEE" mark first reached the
Philippines in the 1960's through local sales by the Post Exchanges of the U.S. Military Bases in
the Philippines based as it was solely on the self-serving statements of Mr. Edward Poste,
General Manager of Lee (Phils.), Inc., a wholly owned subsidiary of the H.D. Lee, Co., Inc., U.S.A.,
herein private respondent. Similarly, we give little weight to the numerous
vouchers representing various advertising expenses in the Philippines for "LEE" products. It is
well to note that these expenses were incurred only in 1981 and 1982 by LEE (Phils.), Inc. after it
entered into a licensing agreement with private respondent on 11 May 1981.

 Ang vs. Wellington, 92 Phil 448 (1953)

The term "Wellington" is either a geographical name (see Webster's International Dictionary,
where it is said to be the capital of New Zealand; urban district of Shropshire, England and of
Somersetshire, England; co. seat, of Summer co., Kans, etc.), or the surname of a person. But
mere geographical names are ordinarily regarded as common property, and it is a general rule
that the same cannot be appropriated as the subject of an exclusive trademark or trade name.
(52 Am. Jur., 548.) Even if Wellington were a surname, which is not even that of the plaintiffs-
appellants, it cannot also be validly registered as a trade name. (Section 4, Paragraph (e),
Republic Act. No. 166.) As the term cannot be appropriated as a trademark or a trade name, no
action for violation thereof can be maintained, as none is granted by the statute in such cases.
The right to damages and for an injunction for infringement of a trademark or a trade name is
granted only to those entitled to the exclusive use of a registered trademark or trade name.
(Section 23, Republic Act No. 166.) It is evident, therefore, that no action may lie in favor of the
plaintiffs-appellants herein for damages or injunctive relief for the use by the defendants-
appellees of the name "Wellington."

11. Identical with Prior Marks

 Chuanchow Soy & Canning Co. vs. Director of Patents, 108 Phil 833, 836

When two competing labels are placed together for inspection and still they may confuse an
ordinary person, specially cooks and maids, who as a rule are the ones in charge of buying such
household article as soy sauce, there would be more confusion and doubt when the two labels
are not placed together for comparison and the prospective purchaser is guided only by his
memory or recollection that the soy sauce he or she is planning to buy has as its label the
drawing of a fish with letters and Chinese characters, written in a certain style of lettering and
color.

When, as in the present case, one applies for the registration of a trademark or label which is
almost the same or very closely resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without any opposition on the part
of the owner and user of a previously registered label or trademark, this not only to avoid
confusion on the part of the public, but also to protect an already used and registered
trademark and an established goodwill. There should be no halfway measures, as was done in
this case by the ruling of the examiner who directed the respondent to amend or modify the
label or trademark she sought to register by eliminating some portions thereof. As a result,
although the word "Soy" and the drawing of a fish were eliminated, still, the word "Bangos" and
the word "Brand" which are similar to the style of lettering of the corresponding words in the
label, Exhibit B, of petitioner, could still create confusion or doubt in the mind of prospective
purchasers, to say nothing of the fact that the words "Carp" and "Bangos" both indicate fish, and
the additional fact that both trademarks and labels refer to or advertize the same product,
namely, soy sauce.

 Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676, July 30, 1982

The businesses of the parties are non-competitive and the products are so unrelated that the
use of the same trademark will not give rise to confusion nor cause damage to the petitioner.
The right to a trademark is a limited one, hence, others may use the same mark on unrelated
goods if no confusion would arise.

 Esso Standard Eastern Inc. vs. CA, G.R. No. L-29971, Aug. 31, 1982

Infringement is defined by law as the use without the consent of trademark owner of any
reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename
which would likely cause confusion or mistake or deceive purchasers or others as to the source
or origin of such goods. The products of both parties (petroleum and cigarettes) are non-
competing. But as to whether trademark infringement exists depend on whether or not the
goods are so related that the public may be or is actually deceived and misled that they come
from the same maker. Under the Related Goods Theory, goods are related when they belong to
the same class or have the same descriptive properties or when they have same physical
attributes. In this case, the goods are absolutely different and are so foreign from each other it
 would be unlikely for purchasers to think that they came from the same source. Moreover, the
goods flow from different channels of trade and are evidently different in kind and nature.

 Canon Kabushiki Kaisha vs. CA, G.R. No. 120900, July 20, 2000

The Supreme Court says that ordinarily, the ownership of a trademark or trade name is a
property right that the owner is entitled to protect as mandated by the Trademark Law.
However, when a trademark is used by a party for a product in which the other party does not
deal, the use of the same trademark on the latter's product cannot be validly objected to. The
BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark
CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use
the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of
difference between the paints, chemical products, toner, and dyestuff of petitioner and the
sandals of private respondent.

12. Confusingly Similar Marks

 American Wire Cable Co. vs. Director of Patents, G.R. No. L-26557, Feb. 18. 1970

It is clear from the above-quoted provision that the determinative factor in a contest involving
the registration of trademark is whether the use of such mark would likely cause confusion or
mistake on the part of the buying public. The test of “likelihood” is the “dominancy test” or the
assessment of the essential or dominant features in the competing labels to determine whether
they are confusingly similar. In fact, even their similarity in sound is taken into consideration,
where the marks refer to merchandise of the same descriptive properties, for the reason that
trade idem sonans constitutes a violation of trade mark patents.

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not
only are the initial letters and the last half of the appellations identical, but the difference exists
only in two out of the eight literal elements of the designations. Coupled with the fact that both
marks cover insulated flexible wires under class 20; that both products are contained in boxes of
the same material, color, shape and size; that the dominant elements of the front designs are a
red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back
of both boxes show similar circles of broken lines with arrows at the center pointing outward,
with the identical legend "Cut Out Ring""Draw From Inside Circle", no difficulty is experienced in
reaching the conclusion that there is a deceptive similarity that would lead the purchaser to
confuse one product with the other.

 Etepha vs. Director of Patents, GR No. L-20635, March 31, 1966

The validity of a cause for infringement is predicated upon colorable imitation. The phrase
“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, and to cause him to purchase the one
supposing it to be the other.” While “tussin” by itself cannot thus be used exclusively to identify
 one’s goods, it may properly become the subject of a trademark “by combination with another
word or phrase.” The two labels are entirely different in colors, contents, arrangement of words
thereon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to
the eye is so pronounced that the label of one cannot be mistaken for that of the other, not
even by persons unfamiliar with the two trademarks. We cannot escape notice of the fact that
the two words do not sound alike – when pronounced

 Rueda Hermanos vs. Paglinawan. G.R. No. 10738, Jan. 14, 1916

The true test of unfair competition is whether certain goods have been clothed with an
appearance which is likely to deceive the ordinary purchaser exercising ordinary care, and not
whether a certain limited class of purchasers with special knowledge not possessed by the
ordinary purchaser could avoid mistake by the exercise of this special knowledge.

If the contents of two packages are the same commodity, it is no defense to an action for unfair
competition to show minor differences in the size or shape of the packages or in the wording or
color of the labels or wrappers of the packages. If the exterior size, shape, color and description,
in other words, those things which go to make up the general outside appearances of the article,
are so substantially similar as to "likely deceive the ordinary purchaser exercising ordinary care,"
the defendant is guilty of unfair competition. A review of former cases decided fails to show a
single one wherein there were fewer differences in the general appearance of the packages put
up for sale by the respective parties that there are in the several packages presented as exhibits
in the case at bar.

13. Ordinary Purchaser

 Fruit of the Loom vs. CA, GR No. L-32747. Nov. 29, 1984

The trademarks “Fruit of the Loom” and “Fruit for Eve” do not resemble each other as to
confuse or deceive an ordinary purchaser. No confusion would arise in the pronunciation of the
two marks. Further, the similarities of the competing trademarks are completely lost in the
substantial difference in the design and general appearance of their respective hang tags. For
one to be confusingly similar to another, the discerning eye of the observer must focus not only
on the predominant words but also on the other features appearing in the labels

 Converse Rubber vs. Universal Rubber, supra

From a cursory appreciation of the Converse Rubber’s corporate name “CONVERSE RUBBER
CORPORATION” it is evident that the word “CONVERSE” is the dominant word which identifies
Converse Rubber from other corporations engaged in similar business. Universal Rubber, in the
stipulation of facts, admitted Converse Rubber’s existence since 1946 as a duly organized foreign
corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its
knowledge of the reputation and business of petitioner even before it applied for registration of
the trademark in question. Knowing, therefore, that the word “CONVERSE” belongs to and is
being used by Converse Rubber, and is in fact the dominant word in its corporate name,
 Universal Rubber has no right to appropriate the same for use on its products which are similar
to those being produced by Converse Rubber.

 Etepha vs. Director of Patents, L-20635 March 31, 1966

The validity of a cause for infringement is predicated upon colorable imitation. The phrase
“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, and to cause him to purchase the one
supposing it to be the other.” While “tussin” by itself cannot thus be used exclusively to identify
one’s goods, it may properly become the subject of a trademark “by combination with another
word or phrase.” The two labels are entirely different in colors, contents, arrangement of words
thereon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to
the eye is so pronounced that the label of one cannot be mistaken for that of the other, not
even by persons unfamiliar with the two trademarks. We cannot escape notice of the fact that
the two words do not sound alike – when pronounced

 Lim Hoa vs. Director of Patents, GR No. L-8072. Oct. 31, 1956

The danger of confusion in trademarks and brands which are similar may not be so great in the
case of commodities or articles of relatively great value, such as, radio and television sets for the
prospective buyer, generally the head of the family or a businessman, before making the
purchase, reads the pamphlets and all literature available, describing the article he is planning to
buy, and perhaps even makes comparisons with similar articles in the market. He is not likely to
be deceived by similarity in the trademarks because he makes a more or less thorough study of
the same. But in the sale of a food seasoning product, a kitchen article of everyday
consumption, the circumstances are far different. Said product is generally purchased by cooks
and household help, sometimes illiterate who are guided by pictorial representations and the
sound of the word descriptive of said representation. The two roosters appearing in the
trademark of the applicant and the hen appearing on the trademark of the Oppositor, although
of different sexes, belong to the same family of chicken, known as manok in all the principal
dialects of the Philippines, and when a cook or a household help or even a housewife buys a
food seasoning product for the kitchen the brand of “Manok” or “Marca Manok” would most
likely be upper most in her mind and would influence her in selecting the product, regardless of
whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok.
Therein lies the confusion, even deception.

 Asia Brewery Inc. vs. CA G.R. No. 103543. July 5. 1993

Infringement is determined by a test of dominancy. If the competing trademark contains the

main or essential or dominant features of another and confusion and deception is likely to
result, infringement takes place. A closer look at the trademark of both companies will show
that the dominant features of each absolutely bear no similarity to each other. SMC’s dominant
 trademark is the name of the product, “San Miguel Pale Pilsen” written in white Gothic letters
with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber
background while ABI’s is the name “Beer Pale Pilsen” with the word Beer written in large
amber letters, larger than any of the letter found in SMC label. The word “pale pilsen” on ABI’s
trademark does not constitute trademark infringement for it is a generic word descriptive of the
color of a type of beer. No one may appropriate generic or descriptive words for they belong to
the public domain. ABI is likewise not guilty of unfair competition for unfair competition is the
employment of deception or any other means contrary to good faith by which a person shall
pass off the goods manufactured by him for those of another who has already established
goodwill for his similar goods. The universal test for this is whether the public is likely to be
deceived.

Actual or probable deception and confusion on the part of the customers by reason of
defendant’s practices must appear. However, this is unlikely to happen in the case at bar for
consumers generally order beer by brand. Also, the fact that ABI also uses amber-colored steinie
bottles cannot constitute unfair competition for ABI did not copy SMC’s bottle. SMC did not
invent but merely borrowed the steinie bottle from abroad. Likewise, amber is the most
effective color in preventing transmission of light thus providing maximum protection to beer.
320 ml is likewise the standard prescribed under Metrication Circular No. 778. The fact that it is
the first to use the steinie bottle does not give SMC a vested 28 right to use it to the exclusion of
everyone else. Nobody can acquire any exclusive right to market articles supplying the simple
human needs in containers or wrappers of the general form, size and character commonly and
immediately used in marketing such articles. There is no confusing similarity between the
competing beers therefore ABI neither infringed SMC’s trademark nor did it commit unfair
competition.

 Del Monte Corp. vs. CA, 181 SCRA 410 (1990)

The predominant colors used in both labels are green and red orange. The word “catsup” in
both bottles is printed in white and the print/letter style is the same. Although the logo of
sunshine is not a tomato, it approximates that of a tomato. The person who infringes a
trademark does not normally copy out but only makes colorable changes, employing enough
points of similarity to confuse the public and enough points of differences to confuse the courts.
When a manufacturer prepares to package his product, he has before him a boundless choice of
words, phrases, color and symbols sufficient to distinguish his product from others. When
sunshine chose, without reasonable explanation, to use the same colors and letters as used by
Del Monte, when the field of selection is so broad, the inevitable conclusion is that it was done
deliberately to deceive. Further, despite the many choices available to it, Sunshine opted to use
Del Monte’s bottle to market a product which PhilPack also produces, notwithstanding the
caution “Del Monte Corporation, not to be refilled.” This shows Sunshine’s bad faith and its
intention to capitalize3 on the reputation of Del Monte, and pass off its product as that of the
latter.
14. Confusion of Goods vs. Confusion of Business

 Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, G.R. No. L-

19906, April 30, 1969, 27 SCRA 1214

Petitioner SPI’s certificates of registration as to the Bayer trademarks registered in the

Philippines cover medicines only. Nothing in the certificates include chemicals or insecticides.
SPI thus may not claim “first use” of the trademarks prior to the registrations thereof on any
product other than medicines. For if otherwise held, a situation may arise whereby an applicant
may be tempted to register a trademark on any and all goods which his mind may conceive even
if he had never intended to use the trademark for the said goods. Omnibus registration is not
contemplated by the Trademark Law. The net result of the decision is that SPI may hold on its
Bayer trademark for medicines and FBA may continue using the same trademarks for insecticide
and other chemicals, not medicine. The formula fashioned by the lower court avoids the
mischief of confusion of origin, and does not visit FBA with re-probation and condemnation. A
statement that its product came from Germany anyhow is but a statement of fact.

 McDonalds Corp. vs. L.C. Big Mak GR No. 143993, Aug. 18, 2004

The “Big Mac” mark, which should be treated in its entirety and not dissected word for word, is
neither generic nor descriptive. Generic marks are commonly used as the name or description of
a kind of goods, such as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink.
Descriptive marks, on the other hand, convey the characteristics, functions, qualities or
ingredients of a product to one who has never seen it or does not know it exists, such as
“Arthriticare” for arthritis medication. On the contrary, “Big Mac” falls under the class of fanciful
or arbitrary marks as it bears no logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid.

 Faberge Inc. vs. IAC, G.R. No. 71189, Nov. 4. 1992

Having thus reviewed the laws applicable to the case, private respondent may be permitted to
register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's vehement
protestations of unfair dealings in marketing its own set of items which are limited to: after-
shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner
has not ventured in the 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. To be sure, it is significant that petitioner failed to annex
in its Brief the so-called "eloquent proof that petitioner indeed intended to expand its mark
"BRUT" to other goods". Even then, a mere application by petitioner in this aspect does not
suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the
Trademark Law.

 Hickock Manufacturing vs. CA, G.R. No. L-44707, Aug. 31, 1982
 It is a established doctrine that emphasis should be on the similarity of the products involved
and not on the arbitrary classification or general description of their properties or
characteristics" (Phil. Refining Co. v. Ng Sam G.R. No. L-26676) and that "The mere fact that one
person has adopted and used a trademark on his goods does not prevent the adoption and use
of the same trademark by others on unrelated articles of a different kind" (Esso Standard
Eastern Inc., v. Court of Appeals, G.R. No. L-29971 Aug. 31, 1982). Taking into account the facts
of record that petitioner, a foreign corporation registered the trademark for its diverse articles
of men’s wear such as wallets, belts, and men’s briefs which are all manufactured here in the
Philippines by 22 licensee Quality House, Inc., but are so labelled as to give the misimpression
that said goods are of foreign manufacture and that respondent secured its trademark
registration exclusively for shoes and which are clearly labelled in block letters as ‘made in
Marikina, Rizal, Philippines’, no error can be attributed to the appellate court in upholding
respondent’s registration of the same trademark for his unrelated and non-competing product
of Marikina shoes.

 Acoje Mining Co. vs. Director of Patents GR No. L-28744, April 29, 1971

The determinative factor in a contest involving registration of trade mark is not whether the
challenging mark would actually cause confusion or deception of the purchasers but whether
the use of such mark would likely cause confusion or mistake on the part of the buying public. In
this case, there is quite a difference between soy sauce and edible oil. If one is in the market for
the former, he is not likely to purchase the latter just because of the trademark. LOTUS. Even on
the rare occasions that a mistake does occur, it can easily be rectified, Moreover, there is no
denying that the possibility of confusion is remote considering the difference in the type used,
the coloring, the petitioner's trademark being in yellow and red while that of the Philippine
Refining Company being in green and yellow, and the much smaller size of petitioner's
trademark. Decision of respondent Director of Patents is reversed and petitioner's application
for registration of its trademark LOTUS granted. Cigarettes are usually being sold in groceries or
supermarket while petroleum products are sold in gasoline stations however, there are some
instances wherein the court said that these goods are not confusingly similar

 Luft Co. Inc, Vs. Ngo Guan, G.R. No. L-21915, Dec. 17, 1900 1995, 251 SCRA 600

One of the essential factors is the general similarity in appearance of the trademarks in question
which cannot be determined with reasonable certainty unless physically examined and
compared. GWLCI had never introduced evidence for comparison. In addition, the word
"Tango" has a well-established meaning, for it describes a particular dance that is well known in
the Philippines. "Tango" is used by Ngo Guan for no other product than hair pomade, in which
GWLCI does not deal and it is not claimed that Ngo Guan uses or intends to use its "Tango"
trademark on articles of this kind.
 Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December 29,

The Supreme Court considered that the trademarks involved as a whole and ruled that Emerald
Garment’s “STYLISTICMR. LEE” is not confusingly similar to H.D. Lee’s “LEE” trademark. The
word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of
the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads
him to conclude that the goods originated from the same manufacturer. The alleged difference
is too insubstantial to be noticeable. The likelihood of confusion is further made more probable
by the fact that both parties are engaged in the same line of business.Although the Court
decided in favor of the respondent, the appellee has sufficiently established its right to prior use
and registration of the trademark "LEE" in the Philippines and is thus entitled to protection from
any infringement upon the same.

The issue of confusing similarity between trademarks is resolved by considering the distinct
characteristics of each case. In the presentcontroversy, taking into account these unique factors,
we conclude that the similarities in the trademarks in question are not sufficientas to likely
cause deception and confusion tantamount to infringement.

 Recaro vs. Embisan, G. R. No. L-17049, May 31, 1961

The affidavit and other documents, attached to plaintiff's petition for summary judgment show
that the trade-mark "BIG FIVE 5" was duly registered with the Philippines Patent Office since
April 29, 1952, for use in packing or wrapping of Class 47, vegetable lard; that by virtue of an
instrument, dated June 1, 1954, Sy Lin, the original owner of said trade-mark, had sold, assigned
and transferred his right, title and interest thereto and to the registration thereof, together with
the goodwill of the business in connection therewith, to plaintiff herein; and that said deed of
sale, assignment and transfer in favor of plaintiff had been duly annotated and registered with
the Philippines Patent Office, and acknowledged by the same.

Upon the other hand, defendant has admitted that he is engaged in the repacking of vegetable
lard and that he has been using thereon "for sometime" printed labels bearing the trade-mark
"Nel's Big 3 Lard". What is more, defendant does not claim that the latter is registered. Lastly, a
comparison thereof with plaintiffs label readily shows such of a resemblance in the general
features of both as is likely on deceive the ordinary purchaser, exercising ordinary are, and
induce him to believe that the goods bearing such labels are products of one and the same
enterprise, particularly plaintiff herein, she having been, evidently, in the business of repacking
vegetable lard before defendant herein.

Hence, there is no genuine issue about the fact that the use of the trade-mark "Nel's Big 3" on
vegetable lard repacked by the defendant constitutes an infringement upon plaintiff's registered
trade-mark "Big Five 5", which is similarly used on repacked vegetable lard, and the lower court
did not err in granting, by summary judgment, the injunction prayed for by the plaintiff, in
dismissing defendant's counterclaim, and in refusing to reconsider said judgment.
15. Actual Confusion

 McDonalds Corp. vs. L.C. Big Mak. G.R. No. 143993, Aug. 18, 2004

Petitioners' failure to present proof of actual confusion does not negate their claim of
trademark infringement. As noted in American Wire & Cable Co. v. Director of Patents Section
22 requires the less stringent standard of "likelihood of confusion" only. While proof
of actual confusion is the best evidence of infringement, its absence is inconsequential.

 American Wire Cable Co. vs. Director of Patents. G.R. No. L-26557, Feb. 18, 1970

The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes:

SEC. 4. — The owner of a trademark, trade name or service-mark used to distinguish his
goods, business or services from the goods, business or services of others shall have the
right to register the same, unless it:

xxx xxx xxx

(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-
name registered in the Philippines by another and not abandoned, as to be likely, when
applied to or used in connection with the goods, business or services of the applicant, to
cause confusion or mistake or to deceive purchasers. (Emphasis supplied)

It is clear from the above-quoted provision that the determinative factor in a contest involving
registration of trade mark is not whether the challenged mark would actually cause confusion or
deception of the purchasers but whether the use of such mark would likely cause confusion or
mistake on the part of the buying public. In short, to constitute an infringement of an existing
trademark patent and warrant a denial of an application for registration, the law does not
require that the competing trademarks must be so identical as to produce actual error or
mistake; it would be sufficient, for purposes of the law, that the similarity between the two
labels is such that there is a possibility or likelihood of the purchaser of the older brand
mistaking the newer brand for it.

 Acoje Mining Co. vs. Director of Patents, G.R. No. L-28744, April 29, 1971

The decisive test as to whether an application for a trademark should be affirmatively acted
upon or not is clearly set forth in the decision already referred to, promulgated barely a year
ago. In the language of Justice J. B. L. Reyes, who spoke for the Court in American Wire & Cable
Co. v. Director of Patents: "It is clear from the above-quoted provision that the determinative
factor in a contest involving registration of trade mark is not whether the challenging mark
would actually cause confusion or deception of the purchasers but whether the use of such
mark would likelycause confusion or mistake on the part of the buying public. In short, to
constitute an infringement of an existing trade-mark patent and warrant a denial of an
application for registration, the law does not require that the competing trademarks must be so
identical as to produce actual error or mistake; it would be sufficient, for purposes of the law,
 that the similarity between the two labels, is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it.

16. Test of Confusing similarity

1. Phonetic similarity

 Marvex Commercial Covs, Petra Haw Pia, L-16297, Dec. 22, 1926

It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar
in sound.

Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to
the body with curative powers. "Pas, being merely descriptive, furnishes no indication of the
origin of the article and therefore is open for appropriation by anyone (Ethepa vs. Director of
Patents, L-20635, March 31, 1966) and may properly become the subject of a trademark by
combination with another word or phrase.

Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be that as
it may, when the two words are pronounced, the sound effects are confusingly similar. And
where goods are advertised over the radio, similarity in sound is of especial significance (Co
Tiong Sa vs. Director of Patents, 95 Phil. 1 citing Nims, The Law of Unfair Competition and
Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is emphasized by the
increase of radio advertising in which we are deprived of help of our eyes and must depend
entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).

Sapoline Co., Inc vs. Balmaceda, No. 45502, May 3, 1939

the violation of the trade-mark is established by comparing it with the one allegedly
violated and by showing that the resemblance between the two — resemblance which
in the case at bar is admitted by the cross-defendant itself, is of such a nature that one
can be taken for the other; and it has also been stated that it is the said resemblance
and not identify that constitutes a sufficient violation, or better still, the test for the
detection of whether or not there is such a violation. (Forbes, Munn & Co. vs. Ang San
To, 40 Phil., 272.) To hold that there is a violation of a trade-mark, it is not necessary to
prove either that an exact copy thereof was made or that the same words appearing
therein were used. It will be sufficient to prove that its essential characteristics have
been imitated or copied.

Operators Inc. vs. Director of Patenst, L-17901, Oct. 29, 1965

The question of infringement is to be determined by the test of dominancy. The

dissimilarity in size, form and color of the label and the place where applied are not
conclusive. If the competing label contains the trademark of another, and confusion or
deception 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 suggest an effort to imitate. (G. Heilman
 Brewing Co. vs. Independent Brewing Co., 191 F. 489., 495, citing Eagle White Lead Co.
vs. Pflugh (C.C.), 180 P. 579."

Thus "Celdura" and "Corduara" were held to be confusingly similar in sound when applied to
merchandise of the same descriptive properties (Celanese Corp. of America vs. Du Pont, 154 F.
2nd 146, 148); and "Lusolin" was considered as an infringement of the trademark "Sapolin" for
the same reason

2. Holistic Test

 Bristol Myers vs. Director of Patents, 17 SCRA 128 (1966)

In determining whether two trademarks are confusingly similar, the test is not simply to take
their words and compare the spelling and pronunciation of said words. Rather, it 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. Applying this test to the trademarks involved in this case, it is at once
evident that the Director of Patents did not err in finding no confusing similarity. For though the
words "BIOFERIN" and "BUFFERIN" have the same suffix and similar sounding prefixes, they
appear in their respective labels with strikingly different backgrounds and surroundings, as to
color , size and design.

 Mead Johnson & Co., NW Van Dorf Ltd, & SCRA 768 (1963)

It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are
similarities in spelling, appearance and sound for both are composed of six letters of three
syllables each and each syllable has the same vowel, but in determining if they are confusingly
similar a comparison of said words is not the only determining factor. The two marks in their
entirety as they appear in the respective labels must also be considered in relation to the goods
to which they are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may
draw his conclusion whether one is confusingly similar to the other. Having this view in mind,
the Court believes that while there are similarities in the two marks there are also differences or
dissimilarities which are glaring and striking to the eye as the former.

 Del Monte Corp. vs. CA, 181 SCRA 410 (1990)

A number of courts have held that to determine whether a trademark has been infringed, we
must consider the mark 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 court therefore should
be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the
value of which may be dissipated as soon as the court assumes to analyze carefully the
respective features of the mark.

3. Dominancy Test
 Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993

Infringement is determined by a test of dominancy. If the competing trademark contains the

main or essential or dominant features of another and confusion and deception is likely to
result, infringement takes place. A closer look at the trademark of both companies will show
that the dominant features of each absolutely bear no similarity to each other. SMC’s dominant
trademark is the name of the product, “San Miguel Pale Pilsen” written in white Gothic letters
with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber
background while ABI’s is the name “Beer Pale Pilsen” with the word Beer written in large
amber letters, larger than any of the letter found in SMC label. The word “pale pilsen” on ABI’s
trademark does not constitute trademark infringement for it is a generic word descriptive of the
color of a type of beer. No one may appropriate generic or descriptive words for they belong to
the public domain. ABI is likewise not guilty of unfair competition for unfair competition is the
employment of deception or any other means contrary to good faith by which a person shall
pass off the goods manufactured by him for those of another who has already established
goodwill for his similar goods. The universal test for this is whether the public is likely to be
deceived.

Actual or probable deception and confusion on the part of the customers by reason of
defendant’s practices must appear. However, this is unlikely to happen in the case at bar for
consumers generally order beer by brand. Also, the fact that ABI also uses amber-colored steinie
bottles cannot constitute unfair competition for ABI did not copy SMC’s bottle. SMC did not
invent but merely borrowed the steinie bottle from abroad. Likewise, amber is the most
effective color in preventing transmission of light thus providing maximum protection to beer.
320 ml is likewise the standard prescribed under Metrication Circular No. 778. The fact that it is
the first to use the steinie bottle does not give SMC a vested 28 right to use it to the exclusion of
everyone else. Nobody can acquire any exclusive right to market articles supplying the simple
human needs in containers or wrappers of the general form, size and character commonly and
immediately used in marketing such articles. There is no confusing similarity between the
competing beers therefore ABI neither infringed SMC’s trademark nor did it commit unfair
competition.

 Phil. Nut Industry vs. Standard, L-23055, July 31, 1975

In the cases involving infringement of trademark brought before the Court it has been
consistently held that there is infringement of trademark when the use of the mark involved
would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers
as to the origin or source of the commodity; that whether or not a trademark causes confusion
and is likely to deceive the public is a question of fact which is to be resolved by applying the
"test of dominancy", meaning, if the competing trademark contains the main or essential or
dominant features of another by reason of which confusion and deception are likely to result,
then infringement takes pIace; that duplication or imitation is not necessary, a similarity in the
dominant features of the trademarks would be sufficient.

 American Wire Cable Co. vs. Director of Patents, G.R. No. L-26557, Feb. 18, 1970
 It has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. If the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes place.

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not
only are the initial letters and the last half of the appellations identical, but the difference exists
only in two out of the eight literal elements of the designations. Coupled with the fact that both
marks cover insulated flexible wires under class 20; that both products are contained in boxes of
the same material, color, shape and size; that the dominant elements of the front designs are a
red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back
of both boxes show similar circles of broken lines with arrows at the center pointing outward,
with the identical legend "Cut Out Ring""Draw From Inside Circle", no difficulty is experienced in
reaching the conclusion that there is a deceptive similarity that would lead the purchaser to
confuse one product with the other.

 Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December 29, 1995, 251
SCRA 600

The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception and thus constitutes infringement. If the
competing trademark contains the main or essential or dominant features of another, and
confusion and deception is likely to result, infringement takes place. Duplication or imitation is
not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. [C.
Neilman Brewing Co. v. Independent Brewing Co., 191 F., 489, 495, citing Eagle White Lead Co.,
vs. Pflugh (CC) 180 Fed. 579]. The question at issue in cases of infringement of trademarks is
whether the use of the marks involved would be likely to cause confusion or mistakes in the
mind of the public or deceive purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co.,
107 F. 2d 588; . . .)

 McDonald's Corporation v. MacJoy Fastfood Corp., G.R. No. 166115, February 2, 2007

The dominancy test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. Applying the dominancy test to the instant
case, the Court finds that herein petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks
are confusingly similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks.

To begin with, both marks use the corporate "M" design logo and the prefixes "Mc" and/or
"Mac" as dominant features. The first letter "M" in both marks puts emphasis on the prefixes
"Mc" and/or "Mac" by the similar way in which they are depicted i.e. in an arch-like, capitalized
and stylized manner.

17.Generic & Descriptive Marks

 Societe des Produits vs. CA, G.R. No. 112012, April 4, 2001
 Generic terms are those which constitute "the common descriptive name of an article or
substance," or comprise the "genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods," or "imply reference to every
member of a genus and the exclusion of individuating characters," or "refer to the basic nature
of the wares or services provided rather than to the more idiosyncratic characteristics of a
particular product," and are not legally protectable. On the other hand, a term is descriptive and
therefore invalid as a trademark if, as understood in its normal and natural sense, it "forthwith
conveys the characteristics, functions, qualities or ingredients of a product to one who has never
seen it and does not know what it is," or "if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods," or if it clearly denotes what goods or
services are provided in such a way that the consumer does not have to exercise powers of
perception or imagination.

 East Pacific Merchandising Corp. vs. Director of Patents, G.R. No. L-14377, Dec. 29, 1960

The term "Verbena" is descriptive of a whole genus of garden plants with fragrant flowers used
in connection with cosmetic products. Regardless of other connotations of the word, the use of
the term cannot be denied to other traders using such extract or oils in their own products. It
follows that the Director of Patents correctly held the term to be non-registerable in the sense
that petitioner company would be entitled to appropriate its use to the exclusion of others
legitimately entitled, such as oppositor Pellicer.

In a leading case, Caswell vs. Davis, 17 Am. Rep. 233, 241, 242, the court, on a similar issue, said:
There is no principle more firmly settled in the law of trademarks, than that words or phrases
which have been in common use and which indicate the character, kind, quality and
composition of the thing, may not be appropriated by any one to his exclusive use. In the
exclusive use of them the law will not protect. . . .

The claim that the petitioner is entitled to registration because the term "Verbena" has already
acquired a secondary significance is without merit. The provisions of law (Rep. Act No. 166, sec.
4) require that the trademark applied for must have "become distinctive of the applicant's
goods", and that a prima facie proof of this fact exists when the applicant has been in the
"substantially exclusive and continuous use thereof as a mark or tradename, for five years next
preceding the date of the filing of the application for its registration".

 Masso Hermanos vs. Director of Patents, G.R. No. L-3952, Dec. 29, 1953

The word "Cosmopolite" does not give the name, quality or description of the canned fish for
which it is used. It does not even describe the place of origin, for it does not indicate the country
or place where the canned fish was manufactured. it is a very general term which does not give
the kind or quality of the goods. For example, a dealer in shoes cannot register a trademark
"Leather Shoes" because that would be descriptive and it would be right to use the same words
with reference to their merchandise.

 Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676, July 30, 1982
 The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, cooking
oil, abrasive detergents, polishing materials and soap of all kinds. Respondent desires to use the
same on his product, ham. While ham and some of the products of petitioner are classified
under Class 47 (Foods and Ingredients of Food), this alone cannot serve as the decisive factor in
the resolution of whether or not they are related goods. Emphasis should be on the similarity of
the products involved and not on the arbitrary classification or general description of their
properties or characteristics. Mr. Runolf Callman, in Section 80.3, VOL. I, p. 1121 of his book,
Unfair Competition and Trade Marks, declare:

While confusion of goods can only be evident, where the litigants are actually in
competition, confusion of business may arise between non-competitive interests as
well. This is true whether or not the trademarks are registered. Sec. 16 of the Trademark
Act, in referring to 'merchandise of substantially the same descriptive properties,
embraces competitive and non-competitive trademark infringement but it is not so
extensive as to be applicable to cases where the public would not reasonably expect the
plaintiff to make or sell the same class of goods as those made or sold by the defendant.

 Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993

The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are
part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive
words as "evaporated milk,""tomato ketchup,""cheddar cheese,""corn flakes" and "cooking oil"
may be appropriated by any single manufacturer of these food products, for no other reason
than that he was the first to use them in his registered trademark. In Masso Hermanos, S.A. vs.
Director of Patents, 94 Phil. 136, 139 (1953), it was held that a dealer in shoes cannot register
"Leather Shoes" as his trademark because that would be merely descriptive and it would be
unjust to deprive other dealers in leather shoes of the right to use the same words with
reference to their merchandise. No one may appropriate generic or descriptive words. They
belong to the public domain (Ong Ai Gui vs. Director of Patents, 96 Phil. 673, 676 [1955]):

A word or a combination of words which is merely descriptive of an article of trade, or

of its composition, characteristics, or qualities, cannot be appropriated and protected as
a trademark to the exclusion of its use by others. . . . inasmuch as all persons have an
equal right to produce and vend similar articles, they also have the right to describe
them properly and to use any appropriate language or words for that purpose, and no
person can appropriate to himself exclusively any word or expression, properly
descriptive of the article, its qualities, ingredients or characteristics, and thus limit other
persons in the use of language appropriate to the description of their manufactures, the
right to the use of such language being common to all. This rule excluding descriptive
terms has also been held to apply to trade-names. As to whether words employed fall
within this prohibition, it is said that the true test is not whether they are exhaustively
descriptive of the article designated, but whether in themselves, and as they are
commonly used by those who understand their meaning, they are reasonably indicative
and descriptive of the thing intended. If they are thus descriptive, and not arbitrary,
they cannot be appropriated from general use and become the exclusive property of
anyone. (52 Am. Jur. 542-543.)
  Ong Ai Gui vs. Director of Patents, G.R. No. L-6235, March 28, 1955

The use of a generic term in a trade-name is always conditional, i. e., subject to the limitation
that the registrant does not acquire the exclusive right to the descriptive or generic term or
word."* * * A combination of marks or words may constitute a valid trademark or (in the case of
words) a tradename even though some of the constituent portions thereof would not be
subject, separately, to exclusive appropriation as such. Thus, although a word may be
descriptive and not subject to exclusive use as a trademark, it may properly become the subject
of a trademark by combination with another word or term which is nondescriptive, although no
exclusive right to the descriptive word or term is created" * * *. (52 Am. Jur. 553.)
The citation of appellant himself supports the decision thus: "* * * although perhaps not
entitled to protection against infringement by the use of the descriptive matter by another."
(Frost vs. Rindskopt, 42 Fed. 408.)
It must also be noted that no claim is made in the application that the trade-name sought to be
registered has acquired what is known, as a secondary meaning within the provisions of
paragraph (f) of section 4 of Republic Act No. 166. All that the applicant declares in his
statement accompanying his application is that the said trade-name has been continuously used
by it in business in the Philippines for about seven years, without allegation or proof that the
trade-name has become distinctive of the applicant's business or services. Furthermore, the use
of the term "nylon" in the trade- name is both "descriptive" and "deceptively and
misdescriptive" of the applicant-appellant's business, for apparently he does not use nylon in
the manufacture of the shirts, pants and wears that he produces and sells. How can a secondary
meaning be acquired if appellant's products are not made of nylon? Certainly no exclusive right
can be acquired by deception or fraud.

18. Doctrine of Secondary Meaning

 Phil. Nut Industry vs. Standard, L-23055, July 31, 1975

The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law, viz:

Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing
herein shall prevent the registration of a mark or trade-name used by the applicant
which has become distinctive of the applicant's goods, business or services. The Director
may accept as prima facie evidence that the mark or trade-name has become
distinctive, as applied to or used in connection with the applicant's goods, business or
services, proof of substantially exclusive and continuous use thereof as a mark or trade-
name by the applicant in connection with the sale of goods, business or services for the
five years next preceding the date of the filing of the application for its registration. (As
amended by Sec. 3, Rep. Act No. 638.)

The applicability of the doctrine of secondary meaning to the situation now before Us is
appropriate because there is oral and documentary evidence showing that the word PLANTERS
has been used by and closely associated with Standard Brands for its canned salted peanuts
 since 1938 in this country. Not only is that fact admitted by petitioner in the amended
stipulation of facts (see p. 2 of this Decision), but the matter has been established by testimonial
(tsn October 4, 1962, pp. 2-8) and documentary evidence consisting of invoices covering the sale
of "PLANTERS cocktail peanuts". (Exhibits C to C-4; D to D-10; E to E-10; F to F-2) In other words,
there is evidence to show that the term PLANTERS has become a distinctive mark or symbol
insofar as salted peanuts are concerned, and by priority of use dating as far back as 1938,
respondent Standard Brands has acquired a preferential right to its adoption as its trademark
warranting protection against its usurpation by another. Ubi jus ibi remedium. Where there is a
right there is a remedy. Standard Brands has shown the existence of a property right(Arce Sons
& Co. vs. Selecta Biscuit Co., Inc., supra, pp. 262-263) and respondent Director, has afforded the
remedy.

 Ang vs. Teodoro, 74 Phil 50 (1942)

The doctrine, secondary meaning is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article of the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product. (G. & C. Merriam
Co. vs. Salfield, 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neither
geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark.
But were it not so, the application of the doctrine of secondary meaning made by the Court of
Appeals could nevertheless be fully sustained because, in any event, by respondent's long and
exclusive use of said phrase with reference to his products and his business, it has acquired a
proprietary connotation. (Landers, Frary, and Clark vs. Universal Cooler Corporation, 85 F. [2d],
46.)

 Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 91961)

The word 'SELECTA', it is true, may be an ordinary or common word in 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 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 be exclusively
associated with its products and business. In this sense, its used by another may lead to
confusion in trade and cause damage to its business. And this is the situation of petitioner when
it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and
guarantees its used to the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F. 369,
373). And it is also in the sense that the law postulates that "The ownership or possession of a
trade-mark, . . . shall be recognized and protected in the same manner and to the same extent,
as are other property rights known to the law," thereby giving to any person entitled to the
exclusive use of such trade-mark the right to recover damages in a civil action from any person
who may have sold goods of similar kind bearing such trade-mark (Sections 2-A and 23, Republic
Act No. 166, as amended).

 Lyceum of the Philippines vs. Court of Appeals, G.R. 101897, March 5, 199
 The doctrine of secondary meaning originated in the field of trademark law. Its application has,
however, been extended to corporate names sine the right to use a corporate name to the
exclusion of others is based upon the same principle which underlies the right to use a particular
trademark or tradename. In Philippine Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of
secondary meaning was elaborated in the following terms: " . . . a word or phrase originally
incapable of exclusive appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article was his product.".
This circumstance has been referred to as the distinctiveness into which the name or phrase has
evolved through the substantial and exclusive use of the same for a considerable period of time.
. . . No evidence was ever presented in the hearing before the Commission which sufficiently
proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the
appellant. If there was any of this kind, the same tend to prove only that the appellant had been
using the disputed word for a long period of time. . . . In other words, while the appellant may
have proved that it had been using the word 'Lyceum' for a long period of time, this fact alone
did not amount to mean that the said word had acquired secondary meaning in its favor
because the appellant failed to prove that it had been using the same word all by itself to the
exclusion of others.

19. Well-known Marks

Sec. 123.1 Sec. 147.2 Rule 100 par. C, Trademark Regulations Rule 102

 246 Corp. vs. Daway, G.R. No. 157216, November 20, 2003

Under the old Trademark Law where the goods for which the identical marks are used are
unrelated, there can be no likelihood of confusion and there is therefore no infringement in the
use by the junior user of the registered mark on the entirely different goods. This ruling,
however, has been to some extent, modified by Section 123.1(f) of the Intellectual Property
Code (Republic Act No. 8293), which took effect on January 1, 1998. The said section reads:

Sec. 123. Registrability. – 123.1. A mark cannot be registered if it:

xxx xxx xxx

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those with respect to which
registration is applied for: Provided, That use of the mark in relation to those goods or services
would indicate a connection between those goods or services, and the owner of the registered
mark: Provided, further, That the interest of the owner of the registered mark are likely to be
damaged by such use; (Emphasis supplied)

A junior user of a well-known mark on goods or services which are not similar to the goods or
services, and are therefore unrelated, to those specified in the certificate of registration of the
 well-known mark is precluded from using the same on the entirely unrelated goods or services,
subject to the following requisites.

20. Trademark Infringement is a relative concept

 Canon Kabushiki Kaisha vs. CA, supra

The likelihood of confusion of goods or business is a relative concept, to be determined only

according to the particular, and sometimes peculiar, circumstances of each case. Indeed, in
trademark law cases, even more than in other litigation, precedent must be studied in the light
of the facts of the particular case. Contrary to petitioner's supposition, the facts of this case will
show that the cases of Sta. Ana vs. Maliwat,, Ang vs. Teodoro and Converse Rubber Corporation
vs. Universal Rubber Products, Inc. are hardly in point. The just cited cases involved goods that
were confusingly similar, if not identical, as in the case of Converse Rubber Corporation vs.
Universal Rubber Products, Inc. Here, the products involved are so unrelated that the public will
not be misled that there is the slightest nexus between petitioner and the goods of private
respondent.

 McDonald's Corp. vs MACJOY Fastfood Corp., G.R. No. 166115. February 2, 2007

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to

another, no set rules can be deduced because each case must be decided on its merits. In such
cases, even more than in any other litigation, precedent must be studied in the light of the facts
of the particular case. That is the reason why in trademark cases, jurisprudential precedents
should be applied only to a case if they are specifically in point.

21. Well-known marks

Sec: 123.1 (e) and I Sec 1472

 Mirpuri vs. CA, supra

The essential requirement under Article 6bis is that the trademark to be protected must be
"well-known" in the country where protection is sought. The power to determine whether a
trademark is well-known lies in the "competent authority of the country of registration or use."
This competent authority would be either the registering authority if it has the power to decide
this, or the courts of the country in question if the issue comes before a court.

In the Ongpin Memorandum, the Minister of Trade and Industry did not enumerate well-known
trademarks but laid down guidelines for the Director of Patents to observe in determining
whether a trademark is entitled to protection as a well-known mark in the Philippines under
Article 6bis of the Paris Convention. This was to be established through Philippine Patent Office
procedures in inter partes and ex parte cases pursuant to the criteria enumerated therein. The
Philippine Patent Office was ordered to refuse applications for, or cancel the registration of,
trademarks which constitute a reproduction, translation or imitation of a trademark owned by a
person who is a citizen of a member of the Union. All pending applications for registration of
world-famous trademarks by persons other than their original owners were to be rejected
forthwith. The Ongpin Memorandum was issued pursuant to Executive Order No. 913 dated
 October 7, 1983 of then President Marcos which strengthened the rule-making and adjudicatory
powers of the Minister of Trade and Industry for the effective protection of consumers and the
application of swift solutions to problems in trade and industry.

 McDonalds Corp. vs. L.C. Big Mak, supra

The "Big Mac" mark, which should be treated in its entirety and not dissected word for word is
neither generic nor descriptive. Generic marks are commonly used as the name or description of
a kind ofgoods, such as "Lite" for beer or "Chocolate Fudge" for chocolate soda drink.
Descriptive marks, on the other hand, convey the characteristics, functions, qualities or
ingredients of a product to one who has never seen it or does not know it exists,such as
"Arthriticare" for arthritis medication.On the contrary, "Big Mac" falls under theclass of fanciful
or arbitrary marks as it bears no logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid. Significantly, the trademark "Little
Debbie" for snack cakes was found arbitrary or fanciful1, 2011

 Fredco Manufacturing Corp. V. President and Fellows of Harvard College, G.R. No.185917

To be protected under the two directives of the Ministry of Trade, an internationally well-known
mark need not be registered or used in the Philippines. All that is required is that the mark is
well-known internationally and in the Philippines for identical or similar goods, whether or not
the mark is registered or used in the Philippines. The Court ruled in Sehwani, Incorporated v. In-
N-Out Burger, Inc.:

The fact that respondent’s marks are neither registered nor used in the Philippines is
of no moment. The scope of protection initially afforded by Article 6bis of the Paris Convention
has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection
of Well-Known Marks, wherein the World Intellectual Property Organization (WIPO) General
Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark
should be protected in a country even if the mark is neither registered nor used in that
country

Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that "a mark which is
considered by the competent authority of the Philippines to be well-known internationally and
in the Philippines, whether or not it is registered here," cannot be registered by another in the
Philippines. Section 123.1(e) does not require that the well-known mark be used in commerce in
the Philippines but only that it be well-known in the Philippines. Moreover, Rule 102 of the
Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped
Containers, which implement R.A. No. 8293 provides that "any combination" of the foregoing
criteria is sufficient to determine that a mark is well-known, it is clearly not necessary that the
mark be used in commerce in the Philippines. Thus, while under the territoriality principle a
mark must be used in commerce in the Philippines to be entitled to protection, internationally
well-known marks are the exceptions to this rule.

22. Trademark Dilution

 Levi Strauss v. Clinton Apparelle, Inc. GR No. 138900, September 20, 2005
 Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner
of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is entitled to an injunction
"against another person’s commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive quality of the
mark." This is intended to protect famous marks from subsequent uses that blur distinctiveness
of the mark or tarnish or disparage it.

Based on the foregoing, to be eligible for protection from dilution, there has to be a finding that:
(1) the trademark sought to be protected is famous and distinctive; (2) the use by respondent of
"Paddocks and Design" began after the petitioners’ mark became famous; and (3) such
subsequent use defames petitioners’ mark. In the case at bar, petitioners have yet to establish
whether "Dockers and Design" has acquired a strong degree of distinctiveness and whether the
other two elements are present for their cause to fall within the ambit of the invoked
protection. The Trends MBL Survey Report which petitioners presented in a bid to establish that
there was confusing similarity between two marks is not sufficient proof of any dilution that the
trial court must enjoin.

23. Formal Requirement for application of registration

- Sec. 124

24. Filing date

Sec. 127: 127.2

25. Priority Right of a Foreign Applicant - Sec. 131

26. Certificate of Registration - Sec. 138

 Canon Kabushiki Kaisha vs. CA, supra

The principle that the certificate of registration confers upon the trademark owner the exclusive
right to use its own symbol only to those goods specified in the certificate, subject to the
conditions and limitations stated therein. Thus, the exclusive right of petitioner in this case to
use the trademark CANON is limited to the products covered by its certificate of registration. On
this basis, the BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly,
there is a world of difference between the paints, chemical products, toner, and dyestuff of
petitioner and the sandals of private respondent.

 Faberge Inc. vs. IAC 215 SCRA 316 (1992)

The Director of patents allowed the junior user to use the trademark of the senior user on the
ground that the briefs manufactured by the junior user, the product for which the trademark
BRUTE was sought to be registered, was unrelated and non-competing with the products of the
 senior user consisting of after shave lotion, shaving cream, deodorant, talcum powder, and
toilet soap. The senior user vehemently objected and claimed that it was expanding its
trademark to briefs and argued that permitting the junior user to register the same trademark
would allow the latter to invade the senior user's exclusive domain. In sustaining the Director of
Patents, this Court said that since "(the senior user) has not ventured in the production of briefs,
an item which is not listed in its certificate of registration, (the senior user), cannot and should
not be allowed to feign that (the junior user) had invaded (the senior user's) exclusive domain."

27. Duration of the registration - Sec145, 146.2

28. Rights conferred with registration - Sec. 147 as amended by RA 9502

29. Limitation of rights - Sec. 148

 Canon Kabushiki Kaisha vs. CA

We reiterated the principle that the certificate of registration confers upon the trademark
owner the exclusive right to use its own symbol only to those goods specified in the certificate,
subject to the conditions and limitations stated therein. Thus, the exclusive right of petitioner in
this case to use the trademark CANON is limited to the products covered by its certificate of
registration. On this basis, the BPTTT correctly ruled that since the certificate of registration of
petitioner for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff),
private respondent can use the trademark CANON for its goods classified as class 25 (sandals).

30. Assignment and Transfer of Application and Registration - Sec 149, 149.2;149.4, 149.5

31. License Contracts - Sec. 150; 150.2

32. Cancellation of Registration-Sec. 151, 151.2

 Bata Industries Ltd vs. CA, 114 SCRA 318 (1982)

Bata Industries has no Philippine goodwill that would be damaged by the registration of the
mark. The evidence that any slight goodwill generated by the Czechoslovakian product during
the Commonwealth years was completely abandoned and lost in the more than 35 years that
have passed since the liberation of Manila from the Japanese troops.

The applicant-appellee has reproduced excerpts from the testimonies of the opposer-
appellant's witnesses to prove that the opposer-appellant was never a user of the trademark
BATA either before or after the war, that the appellant is not the successor-in-interest of Gerbec
and Hrdina who were not is representatives or agents, and could not have passed any rights to
the appellant, that there was no privity of interest between the Czechoslovakian owner and the
Canadian appellant and that the Czechoslovakian trademark has been abandoned in
Czechoslovakia.

 Emerald Garment Mfg., vs. CA, supra

The Trademark Law (R.A. No. 166) provides that "marks and tradenames for the supplemental
register shall not be published for or be subject to opposition, but shall be published on
 registration in the Official Gazette." The reckoning point, therefore, should not be 1 May 1975,
the date of alleged use by petitioner of its assailed trademark but 27 October 1980, the date the
certificate of registration SR No. 5054 was published in the Official Gazette and issued to
petitioner.

It was only on the date of publication and issuance of the registration certificate that private
respondent may be considered "officially" put on notice that petitioner has appropriated or is
using said mark, which, after all, is the function and purpose of registration in the supplemental
register. The record is bereft of evidence that private respondent was aware of petitioner's
trademark before the date of said publication and issuance. Hence, when private respondent
instituted cancellation proceedings on 18 September 1981, less than a year had passed.

33. Non-use of Mark when excused - Sec. 152 - 152.4

34. Infringement; Elements

 Prosource International, Inc., v. Horphag Research Management SA, G.R. No:

180073,November 25, 2009

In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20 thereof, the
following constitute the elements of trademark infringement:

(a) A trademark actually used in commerce in the Philippines and registered in the
principal register of the Philippine Patent Office[;]

(b) [It] is used by another person in connection with the sale, offering for sale, or
advertising of any goods, business or services or in connection with which such use is
likely to cause confusion or mistake or to deceive purchasers or others as to the source
or origin of such goods or services, or identity of such business; or such trademark is
reproduced, counterfeited, copied or colorably imitated by another person and such
reproduction, counterfeit, copy or colorable imitation is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services as to likely cause confusion or mistake
or to deceive purchasers[;]

(c) [T]he trademark is used for identical or similar goods[;] and

(d) [S]uch act is done without the consent of the trademark registrant or assignee. On
the other hand, the elements of infringement under R.A. No. 8293 are as follows:

(1) The trademark being infringed is registered in the Intellectual Property

Office; however, in infringement of trade name, the same need not be
registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or

colorably imitated by the infringer;
 (3) The infringing mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services;

(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or
services themselves or as to the source or origin of such goods or services or the
identity of such business; and

(5) It is without the consent of the trademark or trade name owner or the
assignee thereof.

In the foregoing enumeration, it is the element of "likelihood of confusion" that is the gravamen
of trademark infringement. But "likelihood of confusion" is a relative concept. The particular,
and sometimes peculiar, circumstances of each case are determinative of its existence. Thus, in
trademark infringement cases, precedents must be evaluated in the light of each particular case.

35. Remedies for Infringement - Sec. 155

36. Actions, Damages and Injunction for Infringement - Sec. 156 - 158, 170

 Shangri-la Int'l Hotel Management vs. CA, G.R. No. 111580, June 21, 2001

Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of
Appeals, the infringement case can and should proceed independently from the cancellation
case with the Bureau so as to afford the owner of certificates of registration redress and
injunctive writs. In the same light, so must the cancellation case with the BPTTT (now the Bureau
of Legal Affairs, Intellectual Property Office) continue independently from the infringement case
so as to determine whether a registered mark may ultimately be cancelled. However, the
Regional Trial Court, in granting redress in favor of Developers Group, went further and upheld
the validity and preference of the latter's registration over that of the Shangri-La Group.

There can be no denying that the infringement court may validly pass upon the right of
registration. Section 161 of Republic Act No. 8293 provides to wit –

SEC. 161. Authority to Determine Right to Registration – In any action involving a

registered mark the court may determine the right to registration, order the
cancellation of the registration, in whole or in part, and otherwise rectify the register
with respect to the registration of any party to the action in the exercise of
this. Judgement and orders shall be certified by the court to the Director, who shall
make appropriate entry upon the records of the Bureau, and shall be controlled
thereby. (Sec. 25, R.A. No. 166a). (Emphasis provided)
 With the decision of the Regional Trial Court upholding the validity of the registration of the
service mark "Shangri-La" and "S" logo in the name of Developers Group, the cancellation case
filed with the Bureau hence becomes moot. To allow the Bureau to proceed with the
cancellation case would lead to a possible result contradictory to that which the Regional Trial
Court has rendered, albeit the same is still on appeal. Such a situation is certainly not in accord
with the orderly administration of justice. In any event, the Court of Appeals has the
competence and jurisdiction to resolve the merits of the said RTC decision.

 Conrad and Company Inc. vs. CA, GR No. 115115, 246 SCRA 691[1995]

While an application for the administrative cancellation of a registered trademark on any of the
grounds enumerated in Section 17 of Republic Act No. 166, as amended, otherwise known as
the Trade-Mark Law, falls under the exclusive cognizance of BPTTT (Sec. 19, Trade-Mark Law), an
action, however, for infringement or unfair competition, as well as the remedy of injunction and
relief for damages, is explicitly and unquestionably within the competence and jurisdiction of
ordinary courts. Surely, an application with BPTTT for an administrative cancellation of a
registered trade mark cannot per se have the effect of restraining or preventing the courts from
the exercise of their lawfully conferred jurisdiction. A contrary rule would unduly expand the
doctrine of primary jurisdiction which, simply expressed, would merely behoove regular courts,
in controversies involving specialized disputes, to defer to the findings of resolutions of
administrative tribunals on certain technical matters. This rule, evidently, did not escape the
appellate court for it likewise decreed that for "good cause shown, the lower court, in its sound
discretion, may suspend the action pending outcome of the cancellation proceedings" before
BPTTT.

37. Limitations to Actions for Infringement - Sec. 159

38. Rights of Foreign Corporation to sue in Trademark or Service Mark Enforcement action- Sec. 160

 Leviton Industries vs. Salvador, 114 SCRA 420 (1982)

Republic Act No. 166, as amended, to wit:

Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has
been registered or assigned under this Act may bring an action hereunder for
infringement, for unfair competition, or false designation of origin and false description,
whether or not it has been licensed to do business in the Philippines under Act
numbered Fourteen Hundred and Fifty-Nine, as amended, otherwise known as the
Corporation Law, at the time it brings the complaint; Provided, That the country of
which the said foreign corporation or juristic person is a citizen, or in which it is
domiciled, by treaty, convention or law, grants a similar privilege to corporate or juristic
persons of the Philippines. (As amended by R.A. No. 638)

Undoubtedly, the foregoing section grants to a foreign corporation, whether or not licensed to
do business in the Philippines, the right to seek redress for unfair competition before Philippine
courts. But the said law is not without qualifications. Its literal tenor indicates as a condition sine
 qua non the registration of the trade mark of the suing foreign corporation with the Philippine
Patent Office or, in the least, that it be an asignee of such registered trademark. The said section
further requires that the country, of which the plaintiff foreign corporation or juristic person is a
citizen or domicilliary, grants to Filipino corporations or juristic entities the same reciprocal
treatment, either thru treaty, convention or law,

 General Garments vs. Director of Patents, 41 SCRA 50 (1971)

Section 37 of the Trademark Law, to wit:

SEC. 37. Rights of foreign registrants. — Persons who are nationals of, domiciled in, or
have a bona fide or effective business or commercial establishment in any foreign
country which is a party to any international convention or treaty relating to marks or
tradenames, or the repression of unfair competition to which the Philippines may be a
party, shall be entitled to the benefits and subject to the provisions of this Act to the
extent and under the conditions essential to give effect to any such convention and
treaties so long as the Philippines shall continue to be a party thereto, except as
provided in the following paragraphs of this section.

Section 37 of the Trademark Law will be operative only when the Philippines becomes a party
to such a convention or treaty. In the meantime, regardless of Section 37, aliens or foreign
corporations are accorded benefits under the law. Thus, under Section 2, for instance, the
trademarks, tradenames and service-marks owned by persons, corporations, partnerships or
associations domiciled in any foreign country may be registered in the Philippines, provided that
the country of which the applicant for registration is a citizen grants bylaw substantially similar
privileges to citizens of the Philippines.

 La Chemise Lacoste vs. Fernandez, supra

Even assuming the truth of the private respondent's allegation that the petitioner failed to
allege material facts in its petition relative to capacity to sue, the petitioner may still maintain
the present suit against respondent Hemandas. As early as 1927, this Court was, and it still is, of
the view that a foreign corporation not doing business in the Philippines needs no license to sue
before Philippine courts for infringement of trademark and unfair competition. Thus, in Western
Equipment and Supply Co. v. Reyes (51 Phil. 115), this Court held that a foreign corporation
which has never done any business in the Philippines and which is unlicensed and unregistered
to do business here, but is widely and favorably known in the Philippines through the use
therein of its products bearing its corporate and tradename, has a legal right to maintain an
action in the Philippines to restrain the residents and inhabitants thereof from organizing a
corporation therein bearing the same name as the foreign corporation, when it appears that
they have personal knowledge of the existence of such a foreign corporation, and it is apparent
that the purpose of the proposed domestic corporation is to deal and trade in the same goods
as those of the foreign corporation.

 Converse Rubber Corp. vs. Universal Rubber, supra

 That a foreign corporation has a right to maintain an action in the forum even if it is not
licensed to do business and is not actually doing business on its own therein has been
enunciated many times by this Court. In La Chemise Lacoste, S.A. vs. Fernandez, 129 SCRA 373,
this Court, reiterating Western Equipment and Supply Co. vs. Reyes, 51 Phil. 115, stated that:

... a foreign corporation which has never done any business in the Philippines and which
is unlicensed and unregistered to do business here, but is widely and favorably known in
the Philippines through the use therein of its products bearing its corporate and
tradename, has a legal right to maintain an action in the Philippines to restrain the
residents and inhabitants thereof from organizing a corporation therein bearing the
same name as the foreign corporation, when it appears that they have personal
knowledge of the existence of such a foreign corporation, and it is apparent that the
purpose of the proposed domestic corporation is to deal and trade in the same goods as
those of the foreign corporation.The ruling in the aforecited case is in consonance with
the Convention of the Union of Paris for the Protection of Industrial Property to which
the Philippines became a party on September 27, 1965. Article 8 thereof provides that
"a trade name [corporate name] shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or not it forms part of the
trademark. "

39. Trade names or business names - Sec. 165 - 165.4

 Converse Rubber vs. Universal Rubber, supra

A trade name is any individual name or surname, firm name, device or word used by
manufacturers, industrialists, merchants and others to Identify their businesses, vocations or
occupations. 8 As the trade name refers to the business and its goodwill ... the trademark refers
to the goods." 9 The ownership of a trademark or tradename is a property right which the owner
is entitled to protect "since there is damage to him from confusion or reputation or goodwill in
the mind of the public as well as from confusion of goods. The modern trend is to give emphasis
to the unfairness of the acts and to classify and treat the issue as fraud.The testimony of
petitioner's witness, who is a legitimate trader as well as the invoices evidencing sales of
petitioner's products in the Philippines, give credence to petitioner's claim that it has earned a
business reputation and goodwill in this country. The sales invoices submitted by petitioner's
lone witness show that it is the word "CONVERSE" that mainly Identifies petitioner's products,
i.e. "CONVERSE CHUCK TAYLOR, 14 "CONVERSE ALL STAR," 15 ALL STAR CONVERSE CHUCK
TAYLOR," 16 or "CONVERSE SHOES CHUCK and TAYLOR." 17 Thus, contrary to the determination
of the respondent Director of Patents, the word "CONVERSE" has grown to be Identified with
petitioner's products, and in this sense, has acquired a second meaning within the context of
trademark and tradename laws

 Philips Export vs. CA, 206 SCRA 457 (1992)

The law on trademarks and tradenames is based on the principle of business integrity and
common justice' This law, both in letter and spirit, is laid upon the premise that, while it
encourages fair trade in every way and aims to foster, and not to hamper, competition, no one,
especially a trader, is justified in damaging or jeopardizing another's business by fraud, deceipt,
 trickery or unfair methods of any sort. This necessarily precludes the trading by one dealer upon
the good name and reputation built up by another (Baltimore v. Moses, 182 Md 229, 34 A (2d)
338).

The records show that the goodwill and reputation of the petitioner's products bearing the
trademark LACOSTE date back even before 1964 when LACOSTE clothing apparels were first
marketed in the Philippines. To allow Hemandas to continue using the trademark Lacoste for the
simple reason that he was the first registrant in the Supplemental Register of a trademark used
in international commerce and not belonging to him is to render nugatory the very essence of
the law on trademarks and tradenames.

 Coffee Partners, Inc. v. San Francisco Coffee and Roastery, Inc, G.R. No. 169504, March 3, 2010

In this case, the consuming public will likely be confused as to the source of the coffee being
sold at petitioner’s coffee shops. Petitioner’s argument that "San Francisco" is just a proper
name referring to the famous city in California and that "coffee" is simply a generic term, is
untenable. Respondent has acquired an exclusive right to the use of the trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC." since the registration of the business name with the DTI
in 1995. Thus, respondent’s use of its trade name from then on must be free from any
infringement by similarity. Of course, this does not mean that respondent has exclusive use of
the geographic word "San Francisco" or the generic word "coffee." Geographic or generic words
are not, per se, subject to exclusive appropriation. It is only the combination of the words "SAN
FRANCISCO COFFEE," which is respondent’s trade name in its coffee business, that is protected
against infringement on matters related to the coffee business to avoid confusing or deceiving
the public.

In Philips Export B.V. v. Court of Appeals, this Court held that a corporation has an exclusive
right to the use of its name. The right proceeds from the theory that it is a fraud on the
corporation which has acquired a right to that name and perhaps carried on its business
thereunder, that another should attempt to use the same name, or the same name with a slight
variation in such a way as to induce persons to deal with it in the belief that they are dealing
with the corporation which has given a reputation to the name.

40. Goods bearing infringing marks of Trade Names - Sec. 166

41. Unfair competition, rights, regulations and remedies - Sec. 168

 Proline Sports Center vs. CA, 281 SCRA 162

The criminal complaint for unfair competition, including all other legal remedies incidental
thereto, was initiated by petitioners in their honest belief that the charge was meritorious. For
indeed it was. The law brands business practices which are unfair, unjust or deceitful not only as
contrary to public policy but also as inimical to private interests. In the instant case, we find
quite aberrant Sehwani's reason for the manufacture of 1,200 "Spalding" balls, i.e., the pending
application for trademark registration UNIVERSAL with the Patent Office, when viewed in the
light of his admission that the application for registration with the Patent Office was filed on 20
February 1981, a good nine (9) days after the goods were confiscated by the NBI. This
apparently was an afterthought but nonetheless too late a remedy. Be that as it may, what is
 essential for registrability is proof of actual use in commerce for at least sixty (60) days and not
the capability to manufacture and distribute samples of the product to clients.

Arguably, respondents' act may constitute unfair competition even if the element of selling has
not been proved. To hold that the act of selling is an indispensable element of the crime of
unfair competition is illogical because if the law punishes the seller of imitation goods, then with
more reason should the law penalize the manufacturer. In U.S. v. Manuel, 12 the Court ruled that
the test of unfair competition is whether certain goods have been intentionally clothed with an
appearance which is likely to deceive the ordinary purchasers exercising ordinary care. In this
case, it was observed by the Minister of Justice that the manufacture of the "Spalding" balls was
obviously done to deceive would-be buyers. The projected sale would have pushed through
were it not for the timely seizure of the goods made by the NBI. That there was intent to sell or
distribute the product to the public cannot also be disputed given the number of goods
manufactured and the nature of the machinery and other equipment installed in the factory.

 American Wire vs. Director of Patents, 31 SCRA 544

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not
only are the initial letters and the last half of the appellations identical, but the difference exists
only in two out of the eight literal elements of the designations. Coupled with the fact that both
marks cover insulated flexible wires under class 20; that both products are contained in boxes of
the same material, color, shape and size; that the dominant elements of the front designs are a
red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back
of both boxes show similar circles of broken lines with arrows at the center pointing outward,
with the identical legend "Cut Out Ring""Draw From Inside Circle", no difficulty is experienced in
reaching the conclusion that there is a deceptive similarity that would lead the purchaser to
confuse one product with the other.

The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately
forgetting that the buyers are less concerned with the etymology of the words as with their
sound and the dominant features of the design.

 In-N-Out Burger, Inc., v. Sehwani, Incorporated and/or Benita's Frites, Inc., G.R. No.179127.
December 24, 2008

The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to deceive the public and defraud a competitor.
The confusing similarity may or may not result from similarity in the marks, but may result from
other external factors in the packaging or presentation of the goods. The intent to deceive and
defraud may be inferred from the similarity of the appearance of the goods as offered for sale to
the public. Actual fraudulent intent need not be shown.
 With such finding, the award of damages in favor of petitioner is but proper. This is in
accordance with Section 168.4 of the Intellectual Property Code, which provides that the
remedies under Sections 156, 157 and 161 for infringement shall apply mutatis mutandis to
unfair competition. The remedies provided under Section 156 include the right to damages, to
be computed in the following manner:

Section 156. Actions, and Damages and Injunction for Infringement.–156.1

The owner of a registered mark may recover damages from any person who
infringes his rights, and the measure of the damages suffered shall be either the
reasonable profit which the complaining party would have made, had the
defendant not infringed his rights, or the profit which the defendant actually
made out of the infringement, or in the event such measure of damages cannot
be readily ascertained with reasonable certainty, then the court may award as
damages a reasonable percentage based upon the amount of gross sales of the
defendant or the value of the services in connection with which the mark or
trade name was used in the infringement of the rights of the complaining party.

Taking into account the deliberate intent of respondents to engage in unfair competition, it is
only proper that petitioner be awarded exemplary damages. Article 2229 of the Civil Code
provides that such damages may be imposed by way of example or correction for the public
good, such as the enhancement of the protection accorded to intellectual property and the
prevention of similar acts of unfair competition. However, exemplary damages are not meant to
enrich one party or to impoverish another, but to serve as a deterrent against or as a negative
incentive to curb socially deleterious action.50 While there is no hard and fast rule in
determining the fair amount of exemplary damages, the award of exemplary damages should be
commensurate with the actual loss or injury suffered.51 Thus, exemplary damages
of P500,000.00 should be reduced to P250,000.00 which more closely approximates the actual
damages awarded.

42. False Designations of Origin, False Description or Representation -Sec. 169

Law on Patents, Utility Models and Industrial Designs
1. Purpose of the Patent Law

 Manzano vs. CA, 278 SCRA 688 (1997)

The element of novelty is an essential requisite of the patentability of an invention or discovery.

If a device or process has been known or used by others prior to its invention or discovery by
the applicant, an application for a patent therefor should be denied; and if the application has
been granted, the court, in a judicial proceeding in which the validity of the patent is drawn in
question, will hold it void and ineffective. It has been repeatedly held that an invention must
possess the essential elements of novelty, originality and precedence, and for the patentee
to be entitled to the protection the invention must be new to the world.
However, the validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the improved
model of the LPG burner are matters which are better determined by the Patent Office. The
technical staff of the Philippine Patent Office composed of experts in their field has by the
issuance of the patent in question accepted private respondent’s model of gas burner as a
discovery. There is a presumption that the Office has correctly determined the patentability of
the model and such action must not be interfered with in the absence of competent evidence
to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when affirmed
by the Court of Appeals, are conclusive on this Court when supported by substantial evidence.
Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions
of the Patent Office and the Court of Appeals. Petition DISMISSED.

2. Patentability

a. Patentable Inventions - Sec. 21

Inventor - Sec. 25.2

Novelty - Sec. 23

Prior Art - Sec. 24

Priority Date - Sec 2006

Inventive Step -- Sec. 2626,2

-Graham v. John Deere Co. of Kansas City (383 US 1 1966)

Industrial Applicability - Sec. 27

Manzano vs. CA. 278 SCRA 688 (1997) Supra.

 Maguan vs. CA. 146 SCRA 107 (1986)

1) The first issue has been laid to rest in a number of cases where the Court ruled that "When a
patent is sought to be enforced, the questions of invention, novelty or prior use, and each of
them, are open to judicial examination." Under the present Patent Law, there is even less
reason to doubt that the trial court has jurisdiction to declare the patents in question invalid. A
patentee shall have the exclusive right to make, use and sell the patented article or product and
the making, using, or selling by any person without the authorization of the patentee
constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
infringed upon may bring an action before the proper CFI now (RTC) and to secure an injunction
for the protection of his rights.
2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But where
the plaintiff introduces the patent in evidence, and the same is in due form, there is created a
prima facie presumption of its correctness and validity. The decision of the Commissioner (now
Director) of Patent in granting the patent is presumed to be correct. The burden of going
forward with the evidence (burden of evidence) then shifts to the defendant to overcome by
competent evidence this legal presumption.
Under American Law from which our Patent Law was derived (Vargas v. F.M. Yaptico& Co.) it is
generally held that in patent cases a preliminary injunction will not issue for patent
infringement unless the validity of the patent is clear and beyond question. The issuance of
letters patent, standing alone, is not sufficient to support such drastic relief. In cases of
infringement of patent no preliminary injunction will be granted unless the patent is valid and
infringed beyond question and the record conclusively proves the defense is sham. In the same
manner, under our jurisprudence, as a general rule because of the injurious consequences a
writ of injunction may bring, the right to the relief demanded must be clear and unmistakable
and the dissolution of the writ is proper where applicant has doubtful title to the disputed
property.
The question then in the instant case is whether or not the evidence introduced by private
respondent herein is sufficient to overcome said presumption. After a careful review of the
evidence consisting of 64 exhibits and oral testimonies of five witnesses presented by private
respondents before the Court of First Instance before the Order of preliminary injunction was
issued as well as those presented by the petitioner, respondent Court of Appeals was satisfied
that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the
ground of lack of novelty.
As pointed out by said appellate court said evidence appeared not to have been considered at
all by the court a quo for alleged lack of jurisdiction, on the mistaken notion that such question
in within the exclusive jurisdiction of the patent office. It has been repeatedly held that an
invention must possess the essential elements of novelty, originality and precedence and for
the patentee to be entitled to protection; the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a patentee for more than two
years (now for more than one year only under Sec. 9 of the Patent Law) before the date of his
application for his patent, will be fatal to, the validity of the patent when issued. It will be noted
that the validity of petitioner's patents is in question for want of novelty. Private respondent
contends that powder puffs Identical in appearance with that covered by petitioner's patents
existed and were publicly known and used as early as 1963 long before petitioner was issued
the patents in question.
As correctly observed by respondent Court of Appeals, "since sufficient proofs have been
introduced in evidence showing a fair question of the invalidity of the patents issued for such
models, it is but right that the evidence be looked into, evaluated and determined on the merits
so that the matter of whether the patents issued were in fact valid or not may be resolved."
(Rollo, pp. 286-287). All these notwithstanding, the trial court nonetheless issued the writ of
preliminary injunction which under the circumstances should be denied. For failure to
determine first the validity of the patents before aforesaid issuance of the writ, the trial court
failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of
the right to be protected and the violation of said right. (Buayan Cattle Co., Inc. v. Quintillan,
128 SCRA 276).
Under the above established principles, it appears obvious that the trial court committed a
grave abuse of discretion which makes certiorari the appropriate remedy. As found by
respondent Court of Appeals, the injunctive order of the trial court is of so general a tenor that
petitioner may be totally barred from the sale of any kind of powder puff. Under the
circumstances, respondent appellate court is of the view that ordinary appeal is obviously
inadequate. Resolutions of the Court of Appeals are hereby AFFIRMED.

 Creser Precision Systems Inc. vs. Court of Appeals, G.R. No. 118708, Feb. 2. 1998

The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA
165) provides that only the patentee or his successors-in-interest may file an action against
infringement.
What the law contemplates in the phrase “anyone 53 possessing any right, title or interest in
and to the patented invention” refers only to the patentee’s successors-in-interest, assignees or
grantees since the action on patent infringement may be brought only in the name of the
person granted with the patent.
There can be no infringement of a patent until a patent has been issued since the right one has
over the invention covered by the patent arises from the grant of the patent alone. Therefore, a
person who has not been granted letter of patent over an invention has not acquired right or
title over the invention and thus has no cause of action for infringement.
Petitioner admitted to have no patent over his invention. Respondent’s aerial fuze is covered by
letter of patent issued by the Bureau of Patents thus it has in his favor not only the
presumption of validity of its patent but that of a legal and factual first and true inventor of the
invention.
Further, the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon
by petitioner cannot be likened to the civil action for infringement under Section 42 of the
Patent Law. The reason for this is that the said remedy is available only to the patent holder or
his successors-in-interest.
Thus, anyone who has no patent over an invention but claims to have a right or interest thereto
cannot file an action for declaratory judgment or injunctive suit which is not recognized in this
jurisdiction. Said person, however, is not left without any remedy. He can, under Section 28 of
the aforementioned law, file a petition for cancellation of the patent within three (3) years from
the publication of said patent with the Director of Patents and raise as ground therefor that the
person to whom the patent was issued is not the true and actual inventor. Hence, petitioners
remedy is not to file an action for injunction or infringement but to file a petition for
cancellation of private respondent patent.
Petitioner however failed to do so. As such, it cannot now assail or impugn the validity of the
private respondent’s letters patent by claiming that it is the true and actual inventor of the
aerial fuze. The validity of the patent issued by the Philippine Patent Office in favor of the
private respondent and the question over the investments, novelty and usefulness of the
improved process therein specified and described are matters which are better determined by
the Philippines patent Office, composed of experts in their field, have, by the issuance of the
patent in question, accepted the thinness of the private respondents new tiles as a discovery.
There is a presumption that the Philippine Patent Office has correctly determined the
patentability of the improvement by the private respondent of the process in question. Since
the petitioner is the patentee of the disputed invention embraced by letters of patent UM No.
6938 issued to it on January 23, 1990 by the Bureau of Patents, it has in its favor not only the
presumption of validity of its patent, but that of a legal and factual first and true inventor of the
invention. There is also a presumption that the Philippine Patent Office has correctly
determined the patentability of the improvement by the private respondent of the process in
question. Decision of the Court of Appeals is hereby AFFIRMED.

b. Non-Patentable Inventions - Sec. 22 as amended by RA 9502

c. Novelty and Non-Prejudicial Disclosure - Sec. 25

3. Right to Patent

a. Right to Patent - Sec. 28

b. "First to File" rule - Sec. 29

c. Inventions Created Pursuant to Commission - Sec. 30

d. Right of Priority - Sec. 31

4. Patent Application

a. Application - Sec. 32, 32.2; 33

 b. Disclosure and Description of Invention - Sec. 35

- Unity of Invention - Sec. 38

5. Procedure For Grant of Patent

a. Filing Date Requirements - Sec. 40

b. Examination Process - Sec. 42-48

c. Publication and Search - Sec. 44.1

- Confidentiality Before Publication - Sec. 45

d. Rights Conferred by Patent Application After Publication - Sec. 46

e. Grant of Patent --Sec. 50.3; 52.1

Manzano vs. CA, 278 SCRA 688 Supra

f. Annual Fees - Sec. 55.1; 55.2

6. Cancellation of Patents; Substitution of Patentee

a. Cancellation of Patents - Sec. 61.1; 61. 2

b. Effect of Cancellation - Sec. 66

7. Remedies of Person with Patent

a. Application by Persons Not Having Right to Patent- Sec. 67

b. Remedies of True and Actual Inventor - Sec. 68; 70

- Creser Precision Systems vs. CA, 286 SCRA 13 (1998) Supra

8. Rights of Patentees and Infringement of Patents

a. Rights Conferred by Patent -- Sec. 71; 71.2 and 103.2

Where Patent covers Product

- Where Patent is Process Assign and transfer Form of Assignment

- Sec. 104 Recording

- Sec. 106,2 Rights of Joint Owners

- Sec. 107

b. Doctrine of Equivalents

 Godines vs. CA, 226 SCRA 338

Tests have been established to determine infringement. These are (a) literal infringement; and
(b) the doctrine of equivalents. In using literal infringement as a test, “. . . resort must be had, in
the first instance, to the words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it.” To determine whether the particular item
falls within the literal meaning of the patent claims, the court must juxtapose the claims of the
patent and the accused product within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements. It appears from the
observation of the trial court that these claims of the patent and the features of the patented
utility model were copied by petitioner: In appearance and form, both the floating power tillers
of the defendant and the turtle power tiller of the plaintiff are virtually the same. Viewed from
any perspective or angle, the power tiller of the defendant is identical and similar to that of the
turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or
components thereof are virtually the same. In operation, the floating power tiller of the
defendant operates also in similar manner as the turtle power tiller of plaintiff.
Petitioner’s argument that his power tillers were different from private respondent’s is that of a
drowning man clutching at straws. Recognizing that the logical fallback position of one in the
place of defendant is to aver that his product is different from the patented one, courts have
adopted the doctrine of equivalents. Thus, according to this doctrine, “(a)n infringement also
occurs when a device appropriates a prior invention by incorporating its innovative concept
and, albeit with some modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result.” In this case, the trial court
observed: But a careful examination between the two power tillers will show that they will
operate on the same fundamental principles.
We are compelled to arrive at no other conclusion but that there was infringement.

 Smith Kline Beckman Corp. vs. Court of Appeals, G.R. No. 126627, Aug. 14, 2003

Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention.
Nowhere in the patent is the word Albendazole found. When the language of its claims is clear
and distinct, the patentee is bound thereby and may not claim anything beyond them. Further,
there was a separate patent for Albendazole given by the US which implies that Albendazole is
indeed separate and distinct from the patented compound here.
A scrutiny of Smith Kline’s evidence fails to prove the substantial sameness of the patented
compound and Albendazole. While both compounds have the effect of neutralizing parasites in
animals, identity of result does not amount to infringement of patent unless Albendazole
operates in substantially the same way or by substantially the same means as the patented
compound, even though it performs the 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 doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are
met.
 c. Limitation of Patent Rights - Sec. 72 as amended by RA 9502

d. Prior User - Sec. 72

e. Use of Invention of Government - Sec. 74 as amended

f. Civil Action for Infringement - Sec. 76 as amended

g. Limitation of Action for Damages - Sec. 79

h. Damages; Requirement of Notice - Sec. 80

 Del Rosario vs. CA, 255 SCRA 152 (1996)

The Patent Law expressly acknowledges that any new model of implements or tools of any
industrial product even if not possessed of the quality of invention but which is of practical
utility is entitled to a patent for utility model. Here, there is no dispute that the letters patent
issued to Del Rosario are for utility models of audio equipment. It is elementary that a patent
may be infringed where the essential or substantial features of the patented invention are
taken or appropriated, or the device, machine or other subject matter alleged to infringe is
substantially identical with the patented invention. In order to infringe a patent, a machine or
device must perform the same function, or accomplish the same result by identical or
substantially identical means and the principle or mode of operation must be substantially the
same. In the case at bar, miyata karaoke was proven to have substantial if not identical
functionality as that of the minus one karaoke which was covered by the second patent issued
to Del Rosario. Further, Janito failed to present competent evidence that will show that Del
Rosario’s innovation is not new.

Godines vs CA, 226 SCRA 338 Supra.

Tañada vs. Angara, 272 SCRA 18 (1997) Supra.

i. Infringement Action by Foreign National - Sec. 77

j. Defenses in Action for Infringement - Sec. 87

Patent Found Invalid for Infringement - Sec. 82

k. Criminal Action for Repetition of Infringement - Sec. 84

 Kenneth Roy Savage vs. Taypin, 331 SCRA 697 (2000)

To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The
repealing clause of the IPC provides that Articles 188 and 189 of the Revised Penal Code (RPC),
Presidential Decree No. 49, are hereby repealed The issue involving the existence of "unfair
competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal
Code, has been rendered moot and academic by the repeal of the article. Hence, the search
warrant cannot even be issued by virtue of a possible violation of the IPR Code.
There is no mention of any crime of "unfair competition" involving design patents in the
controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the
crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of
the Revised Penal Code.

The court is are prevented from applying these principles, along with the new provisions on
Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts
constitute patent infringement as defined by the same Code

Although the case traces its origins to the year 1997 or before the enactment of the IPR Code,
Article 22 of the Revised Penal Code provides that penal laws shall be applied retrospectively, if
such application would be beneficial to the accused. Since the IPR Code effectively obliterates
the possibility of any criminal liability attaching to the acts alleged, then RPC provisions must be
applied.

9. Voluntary Licensing

a Voluntary License Contract - Sec. 85

Technology Transfer Arrangements --Sec. 4.2

b. Prohibited Clauses - Sec. 87

C. Mandatory Provisions - Sec. 88

d. Rights of Licensor - Sec. 89

e. Rights of Licensee - Sec. 90

f. Exceptional Cases - Sec. 91

g. Non-Registration - Sec. 92

10. Compulsory Licensing

a. Grounds for Compulsory Licensing - Sec. 93 as amended

- Smith Kline vs. CA, G.R. No. 121267. October 23, 200 Supra.

b. Period for Filing a Petition for Compulsory License - Sec

c. Requirement to Obtain Licenseon Reasonable Commercial Terms - Sec. 95 as amended

 Parke Davis & Co. vs. Doctors' Pharmaceutical, 14 SCRA 1053 (1964)

The decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory
license to use the substance chloramphenicol is valid. The Supreme Court says that patents
issued to foods and medicines are not exclusive so as not to prevent the building up of patent
monopolies. Public benefit is foremost. The Court dismissed the contention of Parke Davies that
the Director of Patents erred in granting compulsory license. The decision appealed from is
affirmed, with costs against petitioner.

Smith Kline vs. CA, 276 SCRA 224 (1997) Supra.

d. Compulsory Licensing on Semi-Conductor Technology - Dec

e. Compulsory License Based on Interdependence of Patents –

f. Terms and Conditions of Compulsory License - Sec. 100

g. Amendment, Cancellation, Surrender of Compulsory License --

h. Licensee's Exemption from Liability - Sec. 102

11. Registration of Utility Models

a. Applicability of Provisions Relating to Patents - Sec. 108Sec. 108.2 Sec. 109.1 Patentable
Inventions Sec. 109.3

Del Rosario vs. CA, G.R. No. 115106, March 15, 1996; 255 SCRA 152 (1996) Supra.

b. Conversion of Patent Application for Utility Model Registration - Sec. 110.1; 110.2

c. Prohibition Against Filing of Parallel Applications - Sec. 111

12. Industrial Designs

a. Industrial Design - Sec. 112.1

b. Integrated Circuit - Sec. 112.2

c. Lay-out Design - Sec. 112.3

d. Substantial Conditions for Protection - Sec. 113.1; 113.3, 113.4; 113.2

e. Term of Industrial Design Registration - Sec. 118

f. Rights Conferred to Owner of Layout Design Registration - Sec. 119.4; Sec. 119.5

References:

Course Syllabus for Copyright and Intellectual Property Laws by Judge Marc Joseph Quirante

Intellectual Property Law by Aquino