CASE DIGESTS – COPYRIGHT CA RULING:

 Dismissed the petition due to failure to file on time

01 ABS-CBN PUBLISHING, INC., v. DIRECTOR OF THE BUREAU OF
 On the basis of the foregoing, and the prevailing jurisprudence, the Court
TRADEMARKS, (G.R. No. 217916, June 20, 2018 )
of Appeals consequently denied the petitioner's second motion for
FACTS: extension of time, and dismissed the petition for the petitioner's failure
 In 2004,3 the petitioner filed with the Intellectual Property Office of the to file its petition for review within the deadline.
Philippines (IPO) its application for the registration of its trademark ISSUES: WON the ODG was correct in refusing to register the applicant mark
"METRO" (applicant mark) under class 16 of the Nice classification, with for being identical and confusingly similar with the cited marks already
specific reference to "magazines."4 The case was assigned to Examiner registered with the IPO
Arlene M. Icban (Examiner Icban), who, after a judicious examination of SC RULING:
the application, refused the applicant mark's registration.  Court finds no merit in the petition.
 According to Examiner Icban, the applicant mark is identical with three  According to Section 123.1(d) of the Intellectual Property Code of the
other cited marks, and is therefore unregistrable according to Section Philippines (IPC), a mark cannot be registered if it is "identical with a
123.1(d) of the Intellectual Property Code of the Philippines (IPC). registered mark belonging to a different proprietor or a mark with an
 The cited marks were identified as (1) "Metro" (word) by applicant Metro earlier filing or priority date," in respect of the following: (i) the same
International S.A. (2) "Metro" (logo) also by applicant Metro International goods or services, or (ii) closely related goods or services, or (iii) if it nearly
S.A. and (3) "Inquirer Metro" by applicant Philippine Daily Inquirer, Inc. resembles such a mark as to be likely to deceive or cause confusion.
 To determine whether a mark is to be considered as "identical" or that
BUREAU OF TRADEMARKS RULING: which is confusingly similar with that of another, the Court has developed
 The petitioner appealed the assessment of Examiner Icban before the two (2) tests: the dominancy and holistic tests.
Director of the Bureau of Trademarks of the IPO, who eventually affirmed  DOMINANCY TEST:
Examiner Icban's findings. The decision averred that the applicant and  In using this test, focus is to be given to the dominant features of
cited marks were indeed confusingly similar, so much so that there may the marks in question.
not only be a confusion as to the goods but also a confusion as to the  If the competing trademark contains the main or essential or
source or origin of the goods. dominant features of another, and confusion and deception is
OFFICE OF THE DIRECTOR GENERAL (ODG) OF THE IPO RULING: likely to result, infringement takes place.
 Rendered a Decision which upheld Examiner Icban's assessment and the  In committing the infringing act, the infringer merely introduces
Bureau Director's decision negligible changes in an already registered mark, and then banks
 According to the ODG; there is no merit in the petitioner's appeal on these slight differences to state that there was no identity or
because: confusing similarity, which would result in no infringement. This
(1) the applicant and cited marks are identical and kind of act, which leads to confusion in the eyes of the public, is
confusingly similar; exactly the evil that the dominancy test refuses to accept.
(2) the petitioner's mark was deemed abandoned under the  In the present case, the dominant feature of the applicant mark is the
old Trademark Law, and thus, petitioner's prior use of the word "METRO" which is identical, both visually and aurally, to the cited
same did not create a vested right14 under the IPC, and; marks already registered with the IPO.
(3) the applicant mark has not acquired secondary meaning.  The dominant feature of the subject and cited marks is still clearly the
word "Metro", (sic) spelled and pronounced in exactly the same way. The
 identity between the marks would indubitably result in confusion of sale, offering for sale, and advertising of goods that are confusingly
origin as well as goods; similar to that of its registered trademark;
 The concurrent use by the parties of the word METRO is likely to cause  SMPFCI alleged that its "FIESTA" ham, first introduced in 1980, has been
confusion among purchasers as well as confusion of business or origin sold in countless supermarkets in the country, and is, therefore, a popular
hence, registration of this subject application is proscribed under R.A. fixture in dining tables during the Christmas season. Its registered
8293, Sec. 123.1(d); "FIESTA" mark has acquired goodwill to mean sumptuous ham of great
 The applicant mark, "METRO," is identical to and confusingly similar with taste, superior quality, and food safety, and its trade dress "FIESTA",
the other cited marks already registered, hence by authority of the Sec. combined with a figure of a partly sliced ham served on a plate with fruits
123.l(d) of the IPC, the applicant mark cannot be registered. on the side had likewise earned goodwill.
ABANDONMENT OF APPLICATION:  Sometime in 2006, however, Foodsphere introduced its "PISTA" ham and
 The petitioner itself admitted in its petition that its aggressively promoted it in 2007, claiming the same to be the real
application/registration with the IPO was already "deemed abandoned. premium ham.
 It remains a fact that once a trademark is considered abandoned, the  SMPFCI launched its "Dapat ganito ka-espesyal" campaign, meanwhile
protection accorded by the IPC, or in this case the old Trademark Law, is Foodsphere launched its "Make Christmas even more special" campaign,
also withdrawn. directly copying SMPFCI's "Dapat ganito ka-espesyal" campaign.
 This abandonment is the very reason why the petitioner lost its rights  Thus, according to SMPFCI, the striking similarities between the marks
over its trademark, and that it is also the reason why, after twenty years and products of Foodsphere with those of SMPFCI warrant its claim of
(20) from the initial application and after actual use of the applicant mark, trademark infringement on the ground of likelihood of confusion as to
the petitioner once again came before the IPO to apply for registration; origin, and being the owner of "FIESTA," it has the right to prevent
It must be emphasized that absolute certainty of confusion or even actual Foodsphere from the unauthorized use of a deceptively similar mark.
confusion is not required to refuse registration. Indeed, it is the mere  Moreover, "FIESTA" and "PISTA" are similarly pronounced, have the same
likelihood of confusion that provides the impetus to accord protection to number of syllables, share common consonants and vowels, and have the
trademarks already registered with the IPO. same general appearance in their respective product packages.
 Further, SMPFCI contends that Foodsphere's use, therefore, of the
02 FOODSPHERE vs SAN MIGUEL PUREFOODS COMPANY, INC. (2018) "PISTA" mark will mislead the public into believing that its goods
FACTS: originated from, or are licensed or sponsored by SMPFCI, or that
 The parties herein are both engaged in the business of the manufacture, Foodsphere is associated with SMPFCI, or its affiliate. The use of the
sale, and distribution of food products, with SMPFCI owning the "PISTA" trademark would not only result in likelihood of confusion, but in
trademark "PUREFOODS FIESTA HAM" while Foodsphere, Inc. products actual confusion.
(Foodsphere) bear the "CDO" brand.  Apart from trademark infringement, SMPFCI further alleged that
 SMPFCI filed a Complaint3 for trademark infringement and unfair Foodsphere is likewise guilty of unfair competition, because there is
competition with prayer for preliminary injunction and temporary confusing similarity in the general appearance of the goods of the parties
restraining order against Foodsphere before the Bureau of Legal Affairs and intent on the part of Foodsphere, to deceive the public and defraud
(BLA) of the Intellectual Property Office (IPO) pursuant to Sections 155 SMPFCI;
and 168 of Republic Act (R.A.) No. 8293, for using, in commerce, a FOODSPHERE’s CONTENTION:
colorable imitation of its registered trademark in connection with the  Foodsphere denied the charges of trademark infringement and
countered that the marks "PISTA" and "PUREFOODS FIESTA HAM" are not
 confusingly similar and are, in fact, visually and aurally distinct from each  Applying the 'Dominancy Test' and the 'Holistic Test' show that
other. This is because PISTA is always used in conjunction with its house Foodsphere cannot be held liable for trademark infringement due to the
mark "CDO" and that "PUREFOODS FIESTA HAM" bears the housemark fact that the marks are not visually or aurally similar and that the glaring
"PUREFOODS," rendering confusion impossible. differences in the presentation of these marks will prevent any likely
 Also, there are other products in supermarkets that bear the mark confusion, mistake, or deception to the purchasing public.
"FIESTA" such as "ARO FIESTA HAM," "ROYAL FIESTA," and "PUREGOLD  On the other hand, the Director General found Foodsphere to be guilty
FIESTA HAM," but SMPFCI has done nothing against those manufacturers, of unfair competition for it gave its "PISTA" ham the general appearance
making it guilty of estoppel in pais, and is, therefore, estopped from that would likely influence purchasers to believe that it is similar with
claiming that the use of other manufacturers of the mark "FIESTA" will SMPFCI's "FIESTA" ham. Moreover, its intention to deceive is inferred
result in confusion and/or damage to itself. from the similarity of the goods as packed and offered for sale.
 Foodsphere noted that it has been using "PISTA" since 2006 which is CA RULING:
earlier than SMPFCI's filing for registration of "FIESTA" in 2007; Confusion  CA denied SMPFCI's petition and affirmed the ruling of the Director
between the marks, moreover, is rendered impossible because the General on the absence of trademark infringement.
products are sold in booths manned by different "promodisers." Also,  CA likewise denied Foodsphere's petition, affirming the Director
hams are expensive products and their purchasers are well-informed not General's finding that Foodsphere was guilty of unfair competition. The
only as to their features but also as to the manufacturers thereof. CA held that the elements thereof are present herein.
BUREAU OF LEGAL AFFIARS: ISSUE/S: WON Foodsphere is liable for unfair competition
 NO INFRINGEMENT. NO UNFAIR COMPETITION. SC RULING:
 Rendered its Decision dismissing SMPFCI's complaint for lack of merit.  YES. FOODSPHERE IS LIABLE FOR UNFAIR COMPETITION.
 BLA held that there could be no trademark infringement because  This Court has held that unfair competition consists of the passing off (or
Foodsphere began using the "PISTA" mark in 2006 and even filed a palming off) or attempting to pass off upon the public of the goods or
trademark application therefor in the same year, while SMPFCI's business of one person as the goods or business of another with the end
application for trademark registration for "FIESTA" was filed and and probable effect of deceiving the public.
approved only in 2007. SMPFCI, thus, had no cause of action.  The "true test," therefore, of unfair competition has thus been "whether
 SMPFCI's complaint was filed beyond the four (4)-year prescriptive period the acts of the defendant have the intent of deceiving or are calculated
prescribed under the Rules and Regulation on Administrative Complaints to deceive the ordinary buyer making his purchases under the ordinary
for Violation of Law Involving Intellectual Property Rights. conditions of the particular trade to which the controversy relates.”
 Comparing the competing marks would not lead to confusion, much less  Essential elements of an action for unfair competition are:
deception of the public. (1) confusing similarity in the general appearance of the goods; and
 That SMPFCI failed to convincingly prove the presence of the elements of (2) intent to deceive the public and defraud a competitor.
unfair competition  The confusing similarity may or may not result from similarity in the
OFFICE OF THE DIRECTOR GENERAL: marks, but may result from other external factors in the packaging or
 NO INFRINGEMENT. BUT LIABLE FOR UNFAIR COMPETITION. presentation of the goods. The intent to deceive and defraud may be
 Partially granted SMPFCI's appeal, affirming the BLA's ruling on the inferred from the similarity of the appearance of the goods as offered for
absence of trademark infringement but finding Foodsphere liable for sale to the public.
unfair competition.  First of all, there exists a substantial and confusing similarity in the
packaging of Foodsphere's product with that of SMPFCI, which, as the
 records reveal, was changed by Foodsphere from a paper box to a paper  Respondent also denied any awareness of the existence of petitioner
ham bag that is significantly similar to SMPFCI's paper ham bag. and/or the registration of PAPER ONE, as the latter is a foreign
 Both packages use paper ham bags as the container for the hams, both corporation not doing business in the Philippines.
paper ham bags use the red color as the main colors, and both have the  While the business of respondent dealt with paper conversion such as
layout design appearing on the bags consisting of a partly sliced ham and manufacture of table napkins, notebooks and intermediate/collegiate
fruits on the front and other ham varieties offered at the back. Thus, writing pads, it did not use its corporate name PAPERONE on any of its
Foodsphere's packaging in its entirety, and not merely its "PISTA" mark products.
thereon, renders the general appearance thereof confusingly similar BUREAU OF LEGAL AFFAIRS:
with the packaging of SMPFCI's ham;  found respondent liable for unfair competition;
 Foodsphere's intent to deceive the public, to defraud its competitor, and  ordered respondent to cease and desist from using PAPERONE in its
to ride on the goodwill of SMPFCI's products is evidenced by the fact that corporate name, and to pay petitioner;
not only did Foodsphere switch from its old box packaging to the same  It ruled that petitioner was the first to use PAPER ONE in 1999 which had
paper ham bag packaging as that used by SMPFCI, it also used the same become a symbol of goodwill of its paper business. Respondent's use of
layout design printed on the same. PAPERONE in its corporate name was to benefit from the established
goodwill of petitioner.
03 ASIA PACIFIC RESOURCES INTERNATIONAL HOLDINGS, LTD. VS.  There was, however, no trademark infringement since PAPERONE was
PAPERONE, INC., registered in the Philippines only in 2003
FACTS: IPO DIRECTOR GENERAL: BLA decision was affirmed with modification insofar
PETITIONER’S CONTENTION: as the increase in the award of attorney's fees to P300,000.00.
 Petitioner is engaged in the production, marketing, and sale of pulp and CA RULING:
premium wood free paper.[5] It alleged that it is the owner of a well-  CA reversed and set aside the IPO Director General's decision.
known trademark, PAPER ONE, with Certificate of Registration No. 4-  It held that there was no confusing similarity in the general appearance
1999-01957 issued on September 5, 2003. The said trademark enjoyed of the goods of both parties. Petitioner failed to establish through
legal protection in different countries worldwide and enjoyed goodwill substantial evidence that respondent intended to deceive the public or
and high reputation because of aggressive marketing and promotion. to defraud petitioner.
 Petitioner claimed that the use of PAPERONE in respondent's corporate  Thus, the essential elements of unfair competition were not present.
name without its prior consent and authority was done in bad faith and ISSUES: WON RESPONDENT IS LIABLE FOR UNFAIR COMPETITION
designed to unfairly ride on its good name and to take advantage of its SC RULING:
goodwill. It was calculated to mislead the public into believing that  YES. THERE IS UNFAIR COMPETITION.
respondent's business and/or products were manufactured, licensed or  A careful scrutiny of the mark shows that the use of PAPERONE by
sponsored by petitioner. respondent would likely cause confusion or deceive the ordinary
RESPONDENT’S CONTENTION: purchaser, exercising ordinary care, into believing that the goods bearing
 Respondent, on its part, averred that it had no obligation to secure prior the mark are products of one and the same enterprise.
consent or authority from petitioner to adopt and use its corporate  This case falls under the second type of confusion: CONFUSION OF
name. The Department of Trade and Industry (DTI) and the SEC had BUSINESS
allowed it to use Paperone, Inc., thereby negating any violation on  Although we see a noticeable difference on how the trade name of
petitioner's alleged prior rights. respondent is being used in its products as compared to the trademark
 of petitioner, there could likely be confusion as to the origin of the "CITIBANKING", "CITICARD", "CITICORP", "CITIFINANCIAL", "CITIGOLD",
products. Thus, a consumer might conclude that PAPER ONE products are "CITIGROUP", "CITIPHONE BANKING'', and "CITISERVICE".
manufactured by or are products of Paperone, Inc.  On the other hand, sometime in the mid-nineties, a group of Filipinos and
 Although respondent claims that its products are not the same as Singaporean companies formed a consortium to establish respondent
petitioner's, the goods of the parties are obviously related as they are Citystate Savings Bank, Inc. The consortium included established
both kinds of paper products. Singaporean companies, specifically Citystate Insurance Group and
 Records will show that there was prior use and adoption by Complainant Citystate Management Group Holdings Pte, Ltd.
of the word "PaperOne." PaperOne was filed for trademark registration  In line with this, respondent filed an application for registration with the
on 22 March 1999 in the name of Complainant Asia Pacific Resources [Intellectual Property Office] on 21 June 2005 of the trademark "CITY
International Holdings, Ltd. and matured into registration on 10 February CASH WITH GOLDEN LION'S HEAD" for its ATM service;
2003.  Citigroup, Inc. (Citigroup) filed an opposition to Citystate's application.
 Factual circumstances were established showing that respondent Citigroup claimed that the "CITY CASH WITH GOLDEN LION'S HEAD" mark
adopted PAPERONE in its trade name even with the prior knowledge of is confusingly similar to its own "CITI" marks.
the existence of PAPER ONE as a trademark of petitioner. BUREAU OF LEGAL AFFAIRS:
 Concluded that the dominant features of the marks were the words "CITI"
04 CITIGROUP, INC., v. CITYSTATE SAVINGS BANK, INC. and "CITY," which were almost the same in all aspects.
FACTS:  It further ratiocinated that Citigroup had the better right over the mark,
 In the late 1970s, Citibank N.A., a wholly-owned subsidiary of petitioner considering that 'its "CITI" and "CITI"-related marks have been registered
Citigroup, Inc., installed its first automated teller machines in over a with the Intellectual Property Office, as well as with the United States
hundred New York City branches. Patent and Trademark Office, covering "financial services" under Class 36
 In 1984, Citibank N.A., Philippine Branch, began the development of its of the International Classification of Goods;
domestic Automated Teller Machine (ATM) network, and started  Application was denied.
operating ATMs and issuing ATM cards in the Philippines. Citibank N.A., OFFICE OF DIRECTOR GENERAL OF IPO:
Philippine Branch then joined Bancnet Inc. ("Bancnet") in 1990, the first  Reversed the Decision of the Director of the Bureau of Legal Affairs and
year Bancnet commenced operations. gave due course to Citystate's trademark application.
 In 2005, Citibank Savings, Inc. became an indirect wholly-owned  He made a visual comparison of the parties' respective marks and
subsidiary of Citibank, N.A. As a pre-existing thrift bank, it offered ATM considered the golden lion head device to be the prominent or dominant
services in the Philippines in 1995 and joined Bancnet in 2005. feature of Citystate's mark, and not the word "CITY." Thus, Citystate's
 The ATM cards issued by Citibank N.A., Philippine Branch and Citibank mark did not resemble Citigroup's mark such that deception or confusion
Savings, Inc. are labelled "CITICARD". The trademark CITICARD is owned was likely.
by Citibank N.A. and is registered in the [Intellectual Property Office] of CA RULING:
the Philippines;  Dismissed the appeal.
 In addition, petitioner or Citibank N.A., a wholly-owned subsidiary of  It found that Citystate's mark was not confusingly or deceptively similar
petitioner, owns the following other trademarks currently registered to Citigroup's marks;
with the Philippine [Intellectual Property Office], to wit: "CITI and arc  Appellate court held that:
design", "CITIBANK", "CITIBANK PAYLINK", "CITIBANK SPEEDCOLLECT",  [Citystate's] trademark is the entire "CITY CASH WITH GOLDEN
LION'S HEAD". Although the words "CITY CASH" are prominent,
 the entirety of the trademark must be considered, and focus  Application of registration of trademark by Respondent Citystate should
should not be made solely on the phonetic similarity of the words be allowed.
"CITY" and "CITI".
 The products or services involved are not the ordinary everyday
products that one can just pick up in a supermarket or grocery
stores (sic). These products generally require sales
representatives explaining to their prospective customers the
features of and entitlements thereto.
 Which means that the person is wel[l]informed and thus, cannot
be misled into believing that the product or service is that of
[Citystate] when in fact it is different from [Citigroup's].
ISSUES: WON Citystate is liable for trademark infringement
SC RULING:
 NO TRADEMARK INFRINGEMENT.
 This Court denies the Petition.
 This Court finds that the use of the "CITY CASH WITH GOLDEN LION'S
HEAD" mark will not result in the likelihood of confusion in the minds of
customers.
 Court agrees with the observation of Director General Cristobal that the
most noticeable part of this mark is the golden lion's head device, and
finds that after noticing the image of the lion's head, the words "CITY"
and "CASH" are equally prominent.
 The only similar feature between respondent's mark and petitioner's
collection of marks is the word "CITY" in the former, and the "CITI" prefix
found in the latter. This Court agrees with the findings of the Court of
Appeals that this similarity alone is not enough to create a likelihood of
confusion. The dis[s]imilarities between the two marks are noticeable
and substantial.
 Verily, the variations in the appearance of the "CITI" marks by petitioner,
when conjoined with other words, would dissolve the alleged similarity
between them and the trademark of respondent.
 This Court also agrees with the Court of Appeals that the context where
respondent's mark is to be used, namely, for its ATM services, which
could only be secured at respondent's premises and not in an open
market of ATM services, further diminishes the possibility of confusion
on the part of prospective customers.