VOL. 15, OCTOBER 29, 1965 147 certain conditions enumerated in the same section are complied with.

rated 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
Operators, Inc. vs. Director of Patents AMBISCO, the evidence shows that it is owned by the American Biscuit Co., Inc., and
No. L-17901. October 29, 1965. not by petitioner Operators, Inc. Such evidence consists of the certif ication signed
OPERATORS, INCORPORATED, petitioner, vs. THE DIRECTOR OF PATENTS, ET jointly by Jorge B. Vargas and by Eu Chua Leh presidents of the said Corporations,
AL., respondents. respectively, as follows (Exh. 2):
Trademarks; Right to register based on ownership.—Where the applicant was "On September 26, 1953, and on June 12, 1954, the American Biscuit Co., Inc., and
not the owner of the trademark being applied for, he had no right to apply for registration the Operators Incorporated, both corporations organized under the laws of the
of the same., The right to register trademarks, tradenames and service marks is based Philippines, entered into contracts, and under such contracts, the Operators
on ownership. Incorporated is authorized by the American Biscuit Co., Inc. to operate the candy
Same; Power of patent office to consider questions not raised by the Parties.— business of the latter and among the various terms and stipulations in said contracts,
An application for registration under the Patent Law is not an ordinary litigious the Operators Incorporated agreed to distinctly label and display all products
controversy between private parties. Public interest is involved and all questions as to manufactured and sold by it as products of the American Biscuit Co., Inc. and that all
whether or not the law is satisfied may be considered by the Patent Office or by the the trademarks contained in such labels shall be considered as property of the
Court even though not specifically raised by either of the parties. American Biscuits Co., Inc."
Same; Infringement of trademarks, how determined.—The question of Petitioner objects to the consideration of the question of ownership of the trademark as
infringement of trademarks is to be determined by the test of dominancy. The an issue on the ground that it was not raised by respondent either in its opposition
dissimilarity in size, form and color of the label and the place where applied are not or in its memorandum filed after the parties bad adduced their evidence. In the first
conclusive. Duplication or exact imitation is not necessary; nor is it necessary that the place respondent could not have known at the outset that petitioner was not the owner
infringing label should suggest an effort to imitate. (Co Tiong Sa vs. Director of Patents, of the trademark it was seeking to register. That fact was brought out for the first time
95 Phil. 1, citing cases). when the certification quoted above was presented. Secondly, it was incumbent upon
PETITION for review of a decision of the Director of Patents. petitioner, as applicant, to prove that it had a right to register the trademark applied for
The facts are stated in the opinion of the Court. and consequently, to show compliance with all the legal requisites, including ownership
Rafael R. Lasam for petitioner. thereof. An application for registration under the Patent Law is not an ordinary litigious
Ponce Enrile, Siguion Reyna, Montecillo & Belo for respondent National Biscuit controversy between private parties. Public interest is involved and all questions as to
Company, whether or not the law is satisfied may be considered by the Patent Office or by the
Solicitor General for respondent Director of Patents. Court even though not specifically raised by either of the parties,
On the other issue, we find no cogent reason to disagree with the Director of
Patents that "considering the similarities in appearance and sound between the marks
MAKALINTAL, J.:
AMBISCO and NABISCO, the nature and similarity of the products of the parties
together with the fact that opposer's NABISCO has been used in commerce in the
Petitioner a domestic corporation, applied to the Philippine Patent Office for registration Philippines for more than fifty five (55) years before AMBISCO was adopted by
of AMBISCO as a trademark for its locally manufactured candy products. It has been applicant, confusion of purchasers is likely.
using said trademark since May 1956 by virtue of two contracts with the American In the case of Co Tiong vs. Director of Patents, 95 Phil. 1, this Court said:
Biscuit Company, also a domestic corporation. "x x x. If the competing trademark contains the main or essential or dominant features
The National Biscuit Company opposed the application, having previously of another, and confusion and deception is likely to result, infringement takes place
registered NABISCO as trademark for its own bakery goods, such as biscuits, crackers, Duplication or imitation is not necessary; nor is it necessary that the infringing label
cakes and wafers, The oppositor, a corporation organized in the United States, has had should suggest an effort to imitate. (G. Heilman Brewing Co. vs. Independent Brewing,
the said trademark registered in the Philippines since 1930, and renewed the Co., 191 F. 489, 495, citing Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579). x x x.
registration in 1948 under the latest trademark law, "x x x. The ordinary customer does not scrutinize the details of the label; he forgets
In his decision of September 20, 1960 the Director of Patents defined the issues in or overlooks these, but retains a general impression, or a central figure, or a dominant
this case to be: (1) whether or not the two trademarks aforesaid are so similar to each characteristic. The reason for the above has been explained in the following manner:
other as to cause confusion, mistake or deception of purchasers; and (2) whether or ' "x x x. This rule has a basis in experience, The average person usually will not, and
not the applicant had a right in the first place to apply for registration of AMBISCO as a often cannot take in at a casual glance all, or even a large part of the details of what he
trademark at all. And reaching an affirmative conclusion on the first issue, the Director looks at. What part or parts of two trademarks which are alleged to be similar does the
denied the application without considering it necessary to resolve the second. Petitioner average ordinary buyer see when he looks at them? What features of them are
moved to reconsider, and upon denial of the motion brought up the case to this Court remembered by the average buyer? We do not really hear all that is spoken in our
for review. hearing. Far from all we see or hear casually is retained sufficiently clearly or in
The second issue commands first consideration. Under section 2 of Republic Act sufficient detail for us to get a lasting impression of it which we can remember when we
No. 166, as amended by section 1 of Republic Act No. 865, trademarks, tradenames. encounter the mark again. The importance of this rule is emphasized by the increase
and service marks owned by persons, corporations partnerships or associations of radio advertising in which we are deprived of the help of our eyes and must depend
domiciled in the Philippines or in any foreign country may be registered here provided entirely on the ear. x x x x
 ' "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 isit
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 F. 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 (Sapolin Co. vs. Balmaceda, et al., 67
Phil. 705).
On the whole we find no reversible error in the decision appealed from and
therefore affirm the same, with costs.
Bengzon, C.J., Bautista Angelo, Concepcion, Regala.Bengzon,
J.P., and Zaldivar, JJ., concur.
Reyes, J.B.L., is on leave.
Dizon, J., took no part.
Decision affirmed.
Notes.—The ruling in the above case that the right to register trademarks,
tradenames and service marks is based on ownership was reiterated in Marvex
Commercial Co., Inc. vs. Petra Hawpia and Co., 18 SCRA 1178.
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. (Mead Johnson and Co. vs. N.V.J.,
Van Dorp, Ltd., 7 SCRA 768; Bristol Myers Co. vs. Director of Patents, 17 SCRA
128; Marvex Commercial Co. vs. Petra Hawpia and Co., supra).
See also the annotation on "Colorable Imitation of Trademarks, Tradenames,
Labors, Packages, Wrappers, etc, under Etepha vs. Director of Patents, 16 SCRA 502-
510; and the case of Recaro vs. Embison, 2 SCRA 598 and the notes thereunder.

_______________

© Copyright 2019 Central Book Supply, Inc. All rights reserved.