Ipl Digests
Ipl Digests
Ipl Digests
GUILLERMO
BAXTER
ZOSIMO ZUAZUA, ET AL.,
AND
G.
GAXTER
&
CO.,
vs.
MAPA, J.:
TC: enjoined Zuazua from the further manufacture of toilet water based
upon the ground that
1.
2.
that the use of the said labels, words, and bottles was therefore
illegal, and constituted a violation of plaintiff's rights.
3.
the grant by the Government did not give the plaintiffs an exclusive
right to the use of the word "Kananga," but to the phrase "Agua de
Kananga;"
4.
FACTS: August 30, 1894: Guillermo Baxter (P) after complying with the
necessary formalities,had secured the right to use the trade-mark "Agua
de Kananga", as well as the labels annexed thereto.
July 23, 1901: Guillermo Baxter associated himself with certain
merchants in Manila for the purpose of organizing a limited partnership for
a period of 5 years, under the firm name and style of "Baxter &
Company," for manufacturing toilet water and perfume. Guillermo Baxter,
as the manager & administrator of the partnership, contributed the
business which is now the basis of that carried on by the said partnership.
Also, he contributed his title to certain trade-marks, among them the one
described as "Agua de Kananga." This trade-mark is actually used by the
plaintiffs to designate the ownership and origin of a certain toilet water
manufactured and sold by them under the said name of "Agua de
Kananga."
Zuazua alleged that the labels used on his goods differed from
The plaintiffs brought this action for unfair competition under those used by the plaintiffs as to the drawing, color, and general
section 7 of Act No. 666 of the Philippine Commission. It is alleged that
appearance of the design, and he denies emphatically that he had any
1. the (D) Zosimo Zuazua, for the purpose of imitating and intention to deceive the public thereby, alleging that the people clearly
fraudulently simulating the "Agua de Kananga" by selling a certain distinguished the goods of the plaintiffs from those of the defendants, the
toilet water under the name
of "Kananga Superior" and former being known from the picture on the bottle as the "Payo Brand" and
the latter as the "Seorita Brand."
"Kanangue"
2.
commerce for not less than two months in the Philippines prior to the filing
of an application for its registration. While Harvard University had actual
prior use of its marks abroad for a long time, it did not have actual prior
use in the Philippines of the mark "Harvard Veritas Shield Symbol" before
FACTS: Fredco Manufacturing Corporation (Fredco) filed before the Bureau its application for registration of the mark "Harvard" with the then
of Legal Affairs of the Philippine Intellectual Property Office a Petition for
Philippine Patents Office. However, Harvard University's registration of the
Cancellation of Registration No. 56561 issued to President and Fellows of
name "Harvard" is based on home registration which is allowed under
Harvard College (Harvard University) for the mark Harvard Veritas Shield Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Symbol under classes 16, 18, 21, 25 and 28.
Comment:
Fredco claimed that Harvard University had no right to register the mark in
class 25, since its Philippine registration was based on a foreign
registration. Thus, Harvard University could not have been considered as a
prior adopter and user of the mark in the Philippines.
Fredco explained that the mark was first used in the Philippines by its
predecessor-in-interest New York Garments as early as 1982, and a
certificate of registration was issued in 1988 for goods under class 25.
Although the registration was cancelled for the non-filing of an affidavit of
use, the fact remained that the registration preceded Harvard Universitys
use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark
Harvard was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, USA. The marks Harvard and Harvard
Veritas Shield Symbol, had been used in commerce since 1872, and was
registered in more than 50 countries.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the prior user
and adopter of the mark Harvard in the Philippines. On appeal, the Office
of the Director General of the Intellectual Property Office reversed the BLA
ruling on the ground that more than the use of the trademark in the
Philippines, the applicant must be the owner of the mark sought to be
registered. Fredco, not being the owner of the mark, had no right to
register it.
The Court Appeals affirmed the decision of the Office of the Director
General. Fredco appealed the decision with the Supreme Court. In its
appeal, Fredco insisted that the date of actual use in the Philippines should
prevail on the issue of who had a better right to the mark.
The Supreme Court ruled:
The petition has no merit.
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166),
before a trademark can be registered, it must have been actually used in
Although Section 2 of the Trademark law (R.A. 166) requires for the
registration of trademark that the applicant thereof must prove that the
same has been actually in use in commerce or services for not less than
two (2) months in the Philippines before the application for registration is
filed, where the trademark sought to be registered has already been
registered in a foreign country that is a member of the Paris Convention,
the requirement of proof of use in the commerce in the Philippines for the
said period is not necessary. An applicant for registration based on home
certificate of registration need not even have used the mark or trade name
in this country.
In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No.
8293), "[m]arks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act x x x,"
which does not require actual prior use of the mark in the Philippines.
Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
under R.A. No. 8293, any alleged defect arising from the absence of actual
prior use in the Philippines has been cured by Section 239.2.
The Supreme Court further ruled that Harvard University is entitled to
protection in the Philippines of its trade name Harvard even without
registration of such trade name in the Philippines. It explained:
There is no question then, and this Court so declares, that "Harvard" is a
well-known name and mark not only in the United States but also
internationally, including the Philippines. The mark "Harvard" is rated as
one of the most famous marks in the world. It has been registered in at
least 50 countries. It has been used and promoted extensively in numerous
publications worldwide. It has established a considerable goodwill
worldwide since the founding of Harvard University more than 350 years
ago. It is easily recognizable as the trade name and mark of Harvard
University of Cambridge, Massachusetts, U.S.A., internationally known as
one of the leading educational institutions in the world. As such, even
before Harvard University applied for registration of the mark "Harvard" in
the Philippines, the mark was already protected under Article 6bis and
Article 8 of the Paris Convention.
any
goods, business or services on or in
connection with which such use is likely to
cause confusion or mistake or to deceive
purchasers or others as to the source or
origin of such goods or services, or identity
of such business; or reproduce, counterfeit,
copy or colorably imitate any such mark or
tradename and apply such reproduction,
counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to
be used upon or in connection with such
goods, business or services."
Implicit in this definition is the concept that
the goods must be so related that there is a
likelihood either of confusion of goods or
business.
1 It is undisputed that the goods on which
petitioner uses the trademark ESSO,
petroleum products, and the product of
respondent, cigarettes, are non-competing.
non-competing goods may be those which,
though they are not in actual competition,
are so related to each other that it might
reasonably be assumed that they originate
from one manufacturer.
Goods are related when they belong to the
same class or have the same descriptive
properties; when they possess the same
physical attributes or essential
characteristics with reference to their form,
composition, texture or quality.
the goods are obviously different from each
other with "absolutely no iota of
similitude"
Canon Kabushiki Kaisha vs. Court of Appeals and NSR to protect industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names and indications
Rubber Corporation, G. R. No. 120900, 20 July 2000
Facts:
R NSR Rubber Corporation filed an application for registration of the mark
CANON for sandals.
that the controlling ruling is that laid down in ESSO Standard Eastern,
Inc. vs. Court of Appeals, to the effect that the identical trademark can be
used by different manufacturers for products that are non-competing and
unrelated.
Petitioner asserts that the alleged application for registration of the
trademark "BRUT 33 DEVICE" for briefs is an explicit proof that petitioner
intended to expand its mark "BRUT" to other goods, and that relief is
available where the junior user's goods are not remote from any product
that the senior user would be likely to make or sell.
When the legal tussle was elevated to respondent court, Justice Gopengco
remarked that a look at the marks "BRUT," "BRUT 33" and "BRUTE" shows
that such marks are not only similar in appearance but they are even
similar in sound and in the style of presentation; that it is reasonable to
believe that this similarity is sufficient to cause confusion and even mistake
and deception in the buying public as to the origin for source of the goods
bearing such trademarks.
Later, respondent's Motion for Reconsideration merited the nod of approval
of the appellate court brought about by private respondent's suggestion
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.
In short, paraphrasing Section 20 of the Trademark Law as applied to the
documentary evidence adduced by petitioner, the certificate of registration
issued by the Director of Patents can confer upon petitioner the exclusive
right to use its own symbol only to those goods specified in the certificate,
subject to any conditions and limitations stated therein. One who has
adopted and used a trademark on his goods does not prevent the adoption
and use of the same trademark by other for products which are of different
description.
Justice JBL Reyes opined that the Section 4(d) of Republic Act No. 166, as
amended, "does not require that the articles of manufacture of the
previous user and late user of the mark should possess the same
descriptive properties or should fall into the same categories as to bar the
latter from registering his mark in the principal register." Yet, it is equally
true that as aforesaid, the protective mantle of the Trademark Law extends
only to the goods used by the first user as specified in the certificate of
registration following the clear message conveyed by section 20.
How do We now reconcile the apparent conflict between Section 4(d) which
was relied upon by Justice JBL Reyes in the Sta. Ana case and Section 20?
It would seem that Section 4(d) does not require that the goods
manufactured by the second user be related to the goods produced by the
senior user while Section 20 limits the exclusive right of the senior user
only to those goods specified in the certificate of registration. But the rule
has been laid down that the clause which comes later shall be given
paramount significance over an anterior proviso upon the presumption that
it expresses the latest and dominant purpose.. It ineluctably follows that
Section 20 is controlling and, therefore, private respondent can appropriate
its symbol for the briefs it manufactures.
The glaring discrepancies between the two products had been amply
portrayed to such an extent that indeed, "a purchaser who is out in the
market for the purpose of buying respondent's BRUTE brief would definitely
be not mistaken or misled into buying BRUT after shave lotion or
deodorant" as categorically opined in the decision of the Director of Patents
relative to the inter-partes case.
Disclaimer ng SC (apparently, confused din sila. Hehehe)
It would appear that as a consequence of this discourse, there still remains
hanging in mid-air the unanswered puzzle as to why an aspiring
commercial enterprise, given the infinite choices available to it of names
for the intend product, would select a trademark or trade name which
somewhat resembles an existing emblem that had established goodwill.
Our opinion hereinbefore expressed could even open the floodgates to
similar incursions in the future when we interpreted Section 20 of the
Trademark Law as an implicit permission to a manufacturer to venture into
the production of goods and allow that producer to appropriate the brand
name of the senior registrant on goods other than those stated in the
certificate of registration.
But these nagging and disturbing points cannot win the day for petitioner,
although We must hasten to add that in the final denouement, Our
apprehensions in this regard are not entirely irreversible since Section 4(d)
and 20 of the law in question may still be subjected to legislative
modification in order to protect the original user of the symbol.
HELD: YES. While the Court does recognize the distinctions between the
products of Del Monte and Sunshine, it does not agree with the conclusion
that there was no infringement or unfair competition. It seems to us that
the lower courts have been so pre-occupied with the details that they have
not seen the total picture.
The question is not whether the two articles are distinguishable by their
label when set side by side but whether the general confusion made by the
On October 27,1965, Del Monte authorized Philpack to register with the
article upon the eye of the casual purchaser who is unsuspicious and off his
Philippine Patent Office the Del Monte catsup bottle configuration, for which guard, is such as to likely result in his confounding it with the original. A
it was granted Certificate of Trademark Registration No. SR-913 by the
number of courts have held that to determine whether a trademark has
Philippine Patent Office under the Supplemental Register. On November 20, been infringed, we must consider the mark as a whole and not as
1972, Del Monte also obtained two registration certificates for its
dissected. If the buyer is deceived, it is attributable to the marks as a
trademark "DEL MONTE" and its logo.
totality, not usually to any part of it. The judge must be aware of the fact
that usually a defendant in cases of infringement does not normally copy
Respondent Sunshine Sauce Manufacturing Industries was issued a
but makes only colorable changes.
Certificate of Registration by the Bureau of Domestic Trade on April
17,1980, to engage in the manufacture, packing, distribution and sale of
At that, even if the labels were analyzed together it is not difficult to see
various kinds of sauce, identified by the logo Sunshine Fruit Catsup. This
that the Sunshine label is a colorable imitation of the Del Monte trademark.
logo was registered in the Supplemental Register on September 20,
The predominant colors used in the Del Monte label are green and red1983. The product itself was contained in various kinds of bottles,
orange, the same with Sunshine. The word "catsup" in both bottles is
including the Del Monte bottle, which the private respondent bought from
printed in white and the style of the print/letter is the same. Although the
the junk shops for recycling.
logo of Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato.
Having received reports that the private respondent was using its
exclusively designed bottles and a logo confusingly similar to Del Monte's,
As previously stated, the person who infringes a trade mark does not
Philpack warned it to desist from doing so on pain of legal action.
normally copy out but only makes colorable changes, employing enough
Thereafter, claiming that the demand had been ignored, Philpack and Del
points of similarity to confuse the public with enough points of differences
Monte filed a complaint against the private respondent for infringement of to confuse the courts. What is undeniable is the fact that when a
trademark and unfair competition, with a prayer for damages and the
manufacturer prepares to package his product, he has before him a
issuance of a writ of preliminary injunction. In its answer, Sunshine alleged boundless choice of words, phrases, colors and symbols sufficient to
that it had long ceased to use the Del Monte bottle and that its logo was
distinguish his product from the others. When as in this case, Sunshine
substantially different from the Del Monte logo and would not confuse the
chose, without a reasonable explanation, to use the same colors and
buying public to the detriment of the petitioners.
letters as those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately to deceive .
After trial, the Regional Trial Court of Makati dismissed the complaint. It
As for the unfair competition, private respondent Sunshine, despite the
held that there were substantial differences between the logos or
many choices available to it and notwithstanding that the caution "Del
trademarks of the parties; that the defendant had ceased using the
Monte Corporation, Not to be Refilled" was embossed on the bottle, still
petitioners' bottles; and that in any case the defendant became the owner opted to use the petitioners' bottle to market a product which Philpack also
of the said bottles upon its purchase thereof from the junk yards.
produces. This clearly shows the private respondent's bad faith and its
Furthermore, the complainants had failed to establish the defendant's
intention to capitalize on the latter's reputation and goodwill and pass off
malice or bad faith, which was an essential element of infringement of
its own product as that of Del Monte.
Plaintiffs Contention:
H.D. Lee Co., Inc., a foreign corporation organized under the laws of
Delaware, U.S.A., filed with the Bureau of Patents, Trademarks &
Technology Transfer (BPTTT) a Petition for Cancellation of Registration No.
SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. LEE"
used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits,
dresses, shorts, shirts and lingerie under Class 25, issued on 27 October
1980 in the name of petitioner Emerald Garment Manufacturing
Corporation, a domestic corporation organized and existing under
Philippine laws.
The company also invoked Sec. 37 of R.A. No. 166 (Trademark Law) and
Art. VIII of the Paris Convention for the Protection of Industrial Property,
averred that petitioner's trademark "so closely resembled its own
trademark, 'LEE' as previously registered and used in the Philippines, and
not abandoned, as to be likely, when applied to or used in connection with
petitioner's goods, to cause confusion, mistake and deception on the part
of the purchasing public as to the origin of the goods."
Defendants Contention:.
Emerald Garment contended that its trademark was entirely and
unmistakably different from that of private respondent and that its
certificate of registration was legally and validly granted.
Emerald Garment further alleges that it has been using its trademark
"STYLISTIC MR. LEE" since 1 May 1975, yet, it was only on 18 September
1981 that H.D. Lee Co. filed a petition for cancellation of Emeralds
certificate of registration for the said trademark.
RULING: The essential element of infringement is colorable imitation. This
term has been defined as "such a close or ingenious imitation as to be
calculated to deceive ordinary purchasers, or such resemblance of the
infringing mark 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." Colorable imitation does not mean
such similitude as amounts to identity. Nor does it require that all the
details be literally copied. Colorable imitation refers to such similarity in
form, content, words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of the other mark or
Finally, in line with the foregoing discussions, more credit should be given
to the "ordinary purchaser." Cast in this particular controversy, the ordinary
purchaser is not the "completely unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of product involved.
As we have previously intimated the issue of confusing similarity between
trademarks is resolved by considering the distinct characteristics of each
case. In the present controversy, taking into account these unique factors,
we conclude that the similarities in the trademarks in question are not
sufficient as to likely cause deception and confusion tantamount to
infringement.
Another way of resolving the conflict is to consider the marks involved from
the point of view of what marks are registrable. "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 the Philippine
Trademark Law (R.A. No. 166).
For lack of adequate proof of actual use of its trademark in the Philippines
prior to Emerald Garments use of its own mark and for failure to establish
confusing similarity between said trademarks, H.D. Lee Co's action for
infringement must necessarily fail.