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    Esso Standard, Inc. vs. Ca

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    Alljun Serenado
    1) Esso Standard Eastern (ESC) sued United Cigarette Corporation (UCC) for trademark infringement, claiming that UCC's use of the trademark "ESSO" on cigarettes confused consumers and harmed ESC's goodwill in its ESSO petroleum products. 2) The trial court found infringement but the Court of Appeals disagreed, finding that petroleum products and cigarettes are non-competing goods that flow through different trade channels and bear distinct trademark appearances. 3) The Supreme Court affirmed, noting that for infringement the goods must be related such that consumers would reasonably assume a common source of manufacture, which is unlikely between entirely different products like petroleum and cigarettes.

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    Esso Standard, Inc. vs. Ca

    Uploaded by

    Alljun Serenado
    27 views2 pages
    1) Esso Standard Eastern (ESC) sued United Cigarette Corporation (UCC) for trademark infringement, claiming that UCC's use of the trademark "ESSO" on cigarettes confused consumers and harmed ESC's goodwill in its ESSO petroleum products. 2) The trial court found infringement but the Court of Appeals disagreed, finding that petroleum products and cigarettes are non-competing goods that flow through different trade channels and bear distinct trademark appearances. 3) The Supreme Court affirmed, noting that for infringement the goods must be related such that consumers would reasonably assume a common source of manufacture, which is unlikely between entirely different products like petroleum and cigarettes.

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    1) Esso Standard Eastern (ESC) sued United Cigarette Corporation (UCC) for trademark infringement, claiming that UCC's use of the trademark "ESSO" on cigarettes confused consumers and harmed ESC's goodwill in its ESSO petroleum products. 2) The trial court found infringement but the Court of Appeals disagreed, finding that petroleum products and cigarettes are non-competing goods that flow through different trade channels and bear distinct trademark appearances. 3) The Supreme Court affirmed, noting that for infringement the goods must be related such that consumers would reasonably assume a common source of manufacture, which is unlikely between entirely different products like petroleum and cigarettes.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    27 views2 pages

    Esso Standard, Inc. vs. Ca

    Uploaded by

    Alljun Serenado
    1) Esso Standard Eastern (ESC) sued United Cigarette Corporation (UCC) for trademark infringement, claiming that UCC's use of the trademark "ESSO" on cigarettes confused consumers and harmed ESC's goodwill in its ESSO petroleum products. 2) The trial court found infringement but the Court of Appeals disagreed, finding that petroleum products and cigarettes are non-competing goods that flow through different trade channels and bear distinct trademark appearances. 3) The Supreme Court affirmed, noting that for infringement the goods must be related such that consumers would reasonably assume a common source of manufacture, which is unlikely between entirely different products like petroleum and cigarettes.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    of 2

    ESSO STANDARD, INC. VS.

    CA

    FACTS:
    Esso Standard Eastern, Inc. (ESC), then a foreign corporation duly licensed to do business in
    the Philippines, is engaged in the sale of petroleum products which are identified with its trademark
    ESSO (which as successor of the defunct Standard Vacuum Oil Co. it registered as a business name with
    the Bureaus of Commerce and Internal Revenue.
    United Cigarette Corporation (UCC), is a domestic corporation then engaged in the manufacture
    and sale of cigarettes, after it acquired the business, factory and patent rights of its predecessor La
    Oriental Tobacco Corporation, one of the rights thus acquired having been the use of the trademark
    ESSO on its cigarettes, for which a permit had been duly granted by the Bureau of Internal Revenue.
    ESC commenced a case for trademark infringement against UCC. The complaint alleged that
    ESC had been for many years engaged in the sale of petroleum products and its trademark “ESSO” had
    acquired a considerable goodwill to such an extent that the buying public had always taken the
    trademark ESSO as equivalent to high quality petroleum products. ESC asserted that the continued use
    by private respondent of the same trademark “ESSO” on its cigarettes was being carried out for the
    purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its own
    products.
    In its answer, respondent admitted that it used the trademark ESSO on its own product of
    cigarettes, which was not identical to those produced and sold by petitioner and therefore did not in any
    way infringe on or imitate petitioner's trademark. Respondent contended that in order that there may
    be trademark infringement, it is indispensable that the mark must be used by one person in connection
    or competition with goods of the same kind as the complainant's.
    TC decided in favor of ESC and ruled that respondent was guilty of infringement of trademark.
    On appeal, respondent CA found that there was no trademark infringement and dismissed the complaint,
    as well as ESC’s MR.

    ISSUE: WON UCC is guilty of patent infringement. (NO CYST)

    RULING:
    The law defines infringement as the use without consent of the trademark owner of any
    "reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename in connection
    with the sale, offering for sale, or advertising of 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. But likelihood of confusion is a relative concept; to
    be determined only according to the particular, and sometimes peculiar, circumstances of each case.
    It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum
    products, and the product of respondent, cigarettes, are non-competing. But as to whether trademark
    infringement exists depends for the most part upon whether or not the goods are so related that the
    public may be, or is actually, deceived and misled that they came from the same maker or manufacturer.

    NON-COMPETING GOODS VS. RELATED GOODS


    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.
    Non-competing goods may also be those which, being entirely unrelated, could not reasonably be
    assumed to have a common source. In the former case of related goods, confusion of business could
    arise out of the use of similar marks; in the latter case of non-related goods, it could not. The vast
    majority of courts today follow the modern theory or concept of "related goods" which the Court has
    likewise adopted and uniformly recognized and applied.
    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. They may also be related because
    they serve the same purpose or are sold in grocery stores.
    In the situation before us, the goods are obviously different from each other — with "absolutely
    no iota of similitude" as stressed in respondent court's judgment. They are so foreign to each other as
    to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's
    goods. 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.
    Although petitioner's products are numerous, they are of the same class or line of merchandise
    which are noncompeting with respondent's product of cigarettes, which as pointed out in the appealed
    judgment is beyond petitioner's "zone of potential or natural and logical expansion." 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.

    DIFFERENT CHANNELS OF TRADE


    Another factor that shows that the goods involved are non-competitive and nonrelated is the
    appellate court's finding that they flow through different channels of trade. ESC products are distributed
    principally through gasoline service and lubrication stations, automotive shops and hardware stores. On
    the other hand, the UCC’s cigarettes are sold in sari-sari stores, grocery stores, and other small
    distributor outlets, they are even peddled in the streets while (petitioner's) 'gasul' burners are not.

    DIFFERENT APPEARANCES OF TRADEMARK


    Respondent court correctly ruled that considering the general appearances of each mark as a
    whole, the possibility of any confusion is unlikely. Generally, the plaintiff's trademark comes all in either
    red, white, blue or any combination of the three colors. It is to be pointed out that not even a shade of
    these colors appears on the trademark of the appellant's cigarette. The only color that the appellant
    uses in its trademark is green."

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