Case Digest: Del Monte vs. CA

Del Monte vs. CA

G.R. L-78325

FACTS:

Del Monte sued respondent Sunshine Fruits Catsup for infringement, alleging that the latter was using a label having colorable similarity to petitioner’s label. Petitioner also assails the use of its bottles by respondent.

RULING:

The Court found Sunshine Fruits Catsup guilty of infringement, ruling that the Sunshine label is a colorable imitation of the Del Monte trademark. The Court stressed that what is of utmost consideration is not the side-by-side comparison of the two products with respect to every detail of similarity and difference but rather the general appearance of the products in the eyes of an average consumer. So much so that the imitation of the infringer might deceive a casual purchaser to believe that the two products are the same upon a simple glance. The Court ruled that the label used by the respondent would give such effect. Furthermore, facts of the case lead to the court’s conclusion that the usage of respondents of the bottles by petitioner gave rise to unfair competition. The fact that there was an inscription on the bottles not to be refilled showed bad faith on the part of respondents.

The Court also ruled that since Sunshine’s label was registered not in the Principal Register but only in the Supplemental Register where the presumption of the validity of the trademark, the registrant's ownership of the mark and his right to its exclusive use are all absent.

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Case Digest: Philippine Refining co vs. Ng Sam and Director of Patents

Philippine Refining co vs. Ng Sam and Director of Patents

G.R. No. L-26676 July 30, 1982

FACTS:

The sole issue raised in this petition for review of the decision of the Director of patents is whether or not the product of respondent, Ng Sam, which is ham, and those of petitioner consisting of lard, butter, cooking oil and soap are so related that the use of the same trademark "CAMIA" on said goods would likely result in confusion as to their source or origin.

RULING:

The Court held that the businesses of the parties are non-competitive and their products so unrelated that the identical use of the mark ‘Camia” was not likely to give rise to confusion, much less cause damage to petitioner. The particular goods of the parties are so unrelated that consumers would not in any probability mistake one as the source or origin of the product of the other. Petitioner’s goods are basically derived from vegetable oil and animal fats, while the product of respondent is processed from pig's legs.Furthermore, respondent had on his product the business name "SAM'S HAM AND BACON FACTORY" which would place no question on the origin of the product.

The Court also held that the term subject to the case is not uncommon in view of the fact that there were two others distinct businesses bearing the same name. A trademark must be affirmative and definite, significant and distinctive, capable to indicate origin. It was held that if a mark is so commonplace that it cannot be readily distinguished from others, then he who first adopted it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived. What then is to be reckoned with is the similarity of the products under the mark. The similarity is not on the classification of the property or character of the product but on the sameness of the actual product sold or manufactured. Such similarity is wanting in this case.

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Case Digest: Alexander & Co. vs Ang

Alexander & co vs. Ang

G.R. L-6706

May 31, 1955

 RULING:

The Court found respondents guilty of unfair competition for selling products (Aurora, Agatonica and Mayflower threads) which were, upon examination, similar in appearance to petitioner’s product (Alexander thread).

Citing jurisprudence, the court held that to rule ‘unfair competition’, the names need not use the same words. What is to be borne is the use of similar trademark presented in a similar manner so as to deceive innocent casual or average purchasers. The Court added that although respondents were not the manufacturers of the products, they were nonetheless punishable since Sec 29 punishes the selling of the same. Further, the Court held such as in many preceding cases, that one may be declared an unfair competitor even if he had the label registered. The registration might in some way minimize damages against the seller as showing good faith prima facie. But surely it does not preclude unfair competitive actions.

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Case Digest: PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF PATENTS

RULING:

G.R. No. L-26676 July 30, 1982

PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF PATENTS

FACTS:

The sole issue raised in this petition for review of the decision of the Director of patents is whether or not the product of respondent, Ng Sam, which is ham, and those of petitioner consisting of lard, butter, cooking oil and soap are so related that the use of the same trademark "CAMIA" on said goods would likely result in confusion as to their source or origin.

RULING:

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 articles of a different description. In fine, the Court hold that the business of the parties are non-competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion,much less cause damage to petitioner.

The records of this case disclose that the term "CAMIA" has been registered as a trademark notonly by petitioner but by two (2) other concerns.

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.

The observation and conclusion of the Director of Patents are correct. The particular goods of the parties are so unrelated that consumers would not in any probability mistake one as thesource or origin of the product of the other. "Ham" is not a daily food fare for the average consumer. One purchasing ham would exercise a more cautious inspection of what he buys onaccount of it price. Seldom, if ever, is the purchase of said food product delegated to householdhelps, except perhaps to those who, like the cooks, are expected to know their business.Besides, there can be no likelihood for the consumer of respondent's ham to confuse its sourceas anyone but respondent. The facsimile of the label attached by him on his product, his business name "SAM'S HAM AND BACON FACTORY" written in bold white letters against a reddish orange background, is certain to catch the eye of the class of consumers to which he caters.

In addition, the goods of petitioners are basically derived from vegetable oil and animal fats,while the product of respondent is processed from pig's legs. A consumer would not reasonably assume that, petitioner has so diversified its business as to include the product of respondent.

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Case Digest: Kho vs. CA

Kho vs CA 

[G.R. No. 115758. March 19, 2002]

FACTS:

 In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the ground that she is entitled to the use of the trademark on Chin Chun Su and its container based on her copyright and patent over the same. The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies Issue: WON Petitioner has the right to support her claim for the exclusive use of the subject trade name and its container.

HELD: 

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.

Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

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Case Digest: 246 Corporation (Rolex Music Lounge) vs. Daway

G.R. No. 157216             November 20, 2003

246 CORPORATION, doing business under the name and style of ROLEX MUSIC LOUNGE

vs.

HON. REYNALDO B. DAWAY, in his capacity as Presiding Judge of Branch 90 of the Regional Trial Court of Quezon City, MONTRES ROLEX S.A. and ROLEX CENTRE PHIL. LIMITED

FACTS:

Respondents sued Petitioner for violation of the Trademark Law, contending that the use of the mark “Rolex” in “Rolex Music Lounge” by 246 Corporation was an infringement on the rights of respondents to the mark. Petitioner’s defense state that there could be no infringement since respondent and petitioner dealt with goods and services entirely different from one another, thus, confusion to consumers and injury to respondent would unlikely occur.

RULING:

The Court noted the veracity of the claim of petitioner that there is no infringement in the use of a ‘junior user of the registered mark on the entirely different goods as stated in Sec 123.1 (f) of RA 8293. The court however stressed the limitation of the provision such as when the mark used is one that is internationally well-known or is attributable to a well-known licensee or registrant of the said mark. So much so that the use of it by another would affect the reputation of the registrant or its products and/or services due to association by mark usage to junior user. The Court however held that before Sec 123.1 and its limitation are applied in the present case, the criteria to determine whether mark is well-known must first be proven to have been met. The Court said that for such to be established, a full-blown hearing on the merits must first be had. 

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Case Digest: Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Inc

Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Inc. et. al. CA- G. R. CVNo. 53351

FACTS:

Petitioner was the owner of the “Shangri-La” and the “S” Logo since 1962 and is internationally well-known but is not doing business in the Philippines since early 1980s. Respondent, on the other hand, was the registered owner of the Shangri-la and S logo since 1983 and is using them since then. Petitioner prayed for the granting of its application for registration in the Philippines while respondent filed for infringement against petitioner.

RULING: 

Since IPC of 1988 (RA 8293) did not provide for retroactive application, the Court held that petitioner cannot claim protection under the Paris Convention and ruled that provisions under RA 166 should be applied. Thus, for not meeting the requirement of actual use of commerce in the Philippines(Sec 2, RA 166, requirement for registration), petitioner’s registration cannot be granted.

The Court also ruled that respondent also failed to meet the same requirement when it had the marks registered. Not only that, respondent could not even be deemed the owner of the mark since ownership under Sec 2-A of RA 166 require that the name or mark used must not be appropriated to another and it does not require actual use of a trademark within the Philippines in contradistinction to Sec2. Petitioner was proven to be the owner and originator of the marks even if petitioner failed to comply with Sec2 since it had been using said marks earlier and longer than respondent; such fact respondent knew. Petitioner could not, therefore, be guilty of infringement for a mark which originally came from it.

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Case Digest: Philip Morris v. Court of Appeals and Fortune Tobacco corporation

G.R. No. 91332 July 16, 1993

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A.,petitioners 

vs.

THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION

Philip Morris v. Court of Appeals and Fortune Tobacco corporation 

[GR 91332. July 16, 1993]

FACTS:

Respondent contends that petitioner was not in danger of sustaining irreparable damage by the usage of the former of the product name “MARK”, same as that of petitioner’s product, since petitioner was not doing business in the Philippines.

RULING:

Court ruled that petitioner, although not doing business in the Philippines, has the legal right to sue for infringement anyone who uses their duly registered mark. Sec 2 of RA 166 provides that foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine courts to protect their rights as holders of trademarks registered in the Philippines. It was further reinforced by the Paris convention which affords foreign signatories to the said treaty the advantages and protections which Philippine law grants to Philippine nationals. There is no legal requirement that the foreign registrant itself manufacture and sell its products here. All the statute requires is the use in trade and commerce in the Philippines. 

The trademark infringement by a local company may, for one thing, affect the volume of importation into the Philippines of cigarettes bearing petitioners' trademarks by independent or third party traders. The Court was led to believe there was a prima facie basis for holding, as the Patent Office had held and as the Court of Appeals did originally hold, that private respondent's "MARK" infringes upon petitioners' registered trademarks in view of the fact that out of all the words in the English language, respondents chose the word "mark" to refer to its cigarettes. 

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Case Digest: Asia Brewery vs. Court of Appeals

Asia Brewery vs. CA

GR 103543, 5 July 1993

FACTS:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market. 

RULING:

The Court ruled that petitioner ABI was guilty of neither infringement nor unfair comepetition. The Court reasoned that neither the sound, spelling or appearance of Beer Pale Pilsen be said to be confusingly similar to San Miguel Pale Pilsen. The dominant feature of SMC’s trademark is “San Miguel Pale Pilsen” while ABI’s is “Beer Pale Pilsen”. The word “Beer” does not appear in SMC’s product, nor the words “San Miguel” appear in ABI’s product. The difference outweigh the similarity, which the court believed could not possibly create confusion in consumers. The words “Beer”, “pale” and “pilsen” are generic and/or descriptive words, which could not be exclusively attributable to one company(Sec4(e), IPR).

The Court also ruled that ABI did not sell its products, passing them off as though they were from respondent company. There was no showing that ABI’s Beer Pale Pilsen was sold so as to deceive its consumers as to its origin. Therefore, ABI could not be guilty of unfair competition.

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Case Digest: Mcdonalds vs L.C. Big Mak Burger

Mcdonald’s Corporation et.al. vs. L.C. Big Mak Burger, Inc., et. al., G.R. No. 143993, August 18, 2004

FACTS:

The court ruled that the use of the respondents of the “Big Mak” mark infringed the trademark of that of petitioner McDonald’s “Big Mac”. Using the dominancy test, the court reasoned that both marks are closely similar (visually and orally). The law prohibits usage of marks which might cause confusion and mistake or might deceive/mislead consumers as to the origin, general appearance, nature, and kind, among others, of their products and/or services (Sec 155.1, ICP).

RULING:

The court not only ruled on the confusion of similar goods but also on the issue of confusion of business. The Court found that petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark and that usage of respondents of the “Big Mak” mark has unjustly created the impression that its business is approved and sponsored by, or affiliated with petitioners.

The court also found respondents guilty of unfair competition, reasoning that respondents passed off their products as though they were of petitioner’s. Had respondents gave due notice as to who clearly sells the products, they would have only been guilty of infringement.

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Case Digest: Ong Ai Gui vs. the Director of Patent Office, E.I. Du Pont De Nemours and Company

G.R. No. L-6235             March 28, 1955

ONG AI GUI alias TAN AI GUI, applicant-petitioner, 

vs.the Director of the Philippines Patent Office, respondent. 

E. I. DU PONT DE NEMOURS AND COMPANY, intervenor.

FACTS:

Applicant-petitionerTan Ai gui filed an application with the Director of Patents for the registration of the following tradename: "20th Century Nylon Shirts Factory, which the latter denied.

RULING: 

The Court upheld the Director of Patents reasoning that a word or a combination of words, in this case “nylon” and “shirt factory”, 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. 

Furthermore, the use of the term "nylon" in the tradename 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 articles he produces and sells. Not to mention, the word “nylon” is a general term which is not distinctive and, thus, cannot be afforded secondary meaning attributable petitioner’s business so as to permit registration.

Applicant petitioner was not entitled to the exclusive use of the terms

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