1. MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E.J. GALLO WINERY and THE ANDRESONS GROUP, INC.

FACTS:

On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark and trade name infringement and unfair competition, with a prayer for damages and preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winerys and Gallo and Ernest & Julio Gallo trademarks established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winerys wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winerys wine were totally unrelated products. To wit:1. Gallo Winerys GALLO trademark registration certificates covered wines only, and not cigarettes;2. GALLO cigarettes and GALLO wines were sold through different channels of trade;3. the target market of Gallo Winerys wines was the middle or high-income bracket while Gallo cigarette buyers were farmers, fishermen, laborers and other low-income workers;4. the dominant feature of the Gallo cigarette was the rooster device with the manufacturers name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winerys wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

On April 21, 1993, the Makati RTC denied, for lack of merit, respondents prayer for the issuance of a writ of preliminary injunction.

On August 19, 1993, respondents motion for reconsideration was denied.

On February 20, 1995, the CA likewise dismissed respondents petition for review on certiorari.

After the trial on the merits, however, the Makati RTC, on November 26, 1998, held petitioners liable for, permanently enjoined from committing trademark infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTCs decision and subsequently denied petitioners motion for reconsideration.

ISSUE:

Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they were purportedly forms of vice.

HELD: Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:

the business (and its location) to which the goods belong the class of product to which the good belong the products quality, quantity, or size, including the nature of the package, wrapper or container the nature and cost of the articles the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality the purpose of the goods whether the article is bought for immediate consumption, that is, day-to-day household items the field of manufacture the conditions under which the article is usually purchased and the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order to be objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.

The petitioners are not liable for trademark infringement, unfair competition or damages.

WHEREFORE, petition is granted.

2. Pearl & Dean (Phil), Inc. vs Shoemart, Inc.409 SCRA 231 Mercantile Law Intellectual Property Law on Copyright Copyrightable SubjectPearl &Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising display units called light boxes. In January 1981, Pearl &Dean was able to acquire copyrights over the designs of the display units. In 1988, their trademark application for Poster Ads was approved; they used the same trademark to advertise their light boxes.In 1985, Pearl &Dean negotiated with Shoemart, Inc. (SM) so that the former may be contracted toinstalllight boxes in the ad spaces of SM. Eventually, SM rejected Pearl &Deans proposal.Two years later, Pearl & Dean received report that light boxes, exactly the same as theirs, were being used by SM in their ad spaces. They demanded SM to stop using the light boxes and at the same time asked for damages amounting to P20 M. SM refused to pay damages though they removedthe light boxes. Pearl &Dean eventually sued SM. SM argued that it did not infringe on Pearl &Deans trademark because Pearl &Deans trademark is only applicable to envelopes and stationeries and not to the type of ad spaces owned by SM. SM also averred that Poster Ads is a generic term hence it is not subject to trademark registration. SM also averred that the actual light boxes are not copyrightable. The RTC ruled in favor of Pearl &Dean. But theCourt of Appealsruled in favor of SM.ISSUE:Whether or not theCourt of Appealsis correct.HELD:Yes. The light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable; what was copyrighted were the technical drawings only, and not the light boxes themselves. In other cases, it was held that there is no copyright infringement when one who, without being authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright does not extend to the structures themselves.On the trademark infringement allegation, the words Poster Ads are a simple contraction of the generic term poster advertising.In the absence of any convincing proof that Poster Ads has acquired a secondary meaning in this jurisdiction, Pearl &Deans exclusive right to the use of Poster Ads is limited to what is written in its certificate of registration, namely, stationeries.3. Elidad Kho vs Court of Appeals379 SCRA 410 Mercantile Law Intellectual Property Law on Copyright Proper Subjects of CopyrightElidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder of copyrights overChin Chun SuanditsOval Facial Cream Container/Case.She also bought the patent rights over theChin Chun Su & DeviceandChin Chun Sufor medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory a Taiwanese factory actually manufacturingChin Chun Suproducts.Kho filed a petition for injunction against Summerville General Merchandising and Company to enjoin the latter from advertising and selling Chin Chun Su products, in similar containers as that of Kho, for this is misleading the public and causing Kho to lose income; the petition is also to enjoin Summerville from infringing upon Khos copyrights.Summerville in their defense alleged that they are the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products; that Shun Yi even authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office; that Quintin Cheng, from whom Kho acquired her patent rights, had been terminated (her services) by Shun Yi.ISSUE:Whether or not Kho has the exclusive right to use the trade name and its container.HELD:No. Kho 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 (not copyrightlike what she registered for) 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. Khos copyright and patentregistrationof 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.4. IN-N-OUT BURGER, INC. VS. SEHWANI INC., ET. ALIn-N-Out Burger, Inc. vs. Sehwani Inc., et. alFacts:Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of California. It is a signatory to the Convention of Paris on Protection of Industrial Property and the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has never engaged in business in the Philippines.Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the Philippines. Sometime in 1991, Sehwani filed with the BPTTT an application for the registration of the mark IN N OUT (the inside of the letter O formed like a star). Its application was approved and a certificate of registration was issued in its name on 1993. In 2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing Agreement, wherein the former entitled the latter to use its registered mark, IN N OUT.Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the Bureau of Trademarks for the IN-N-OUT and IN-N-OUT Burger & Arrow Design. In 2000, In-N-Out Burger found out that Sehwani, Incorporated had already obtained Trademark Registration for the mark IN N OUT (the inside of the letter O formed like a star). Also in 2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to cease and desist from claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark registration. Sehwani Inc. did not accede to In-N-Out Burgers demand but it expressed its willingness to surrender its registration for a consideration.In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and cancellation of trademark registration.Issues:Whether or not the Intellectual Property Office (an administrative body) have jurisdiction of cases involving provisions of the IPC (e.g. unfair competition).[1]Whether or not there was unfair competition.Held:FIRST ISSUE: Yes, the IPO (an administrative body) has jurisdiction in cases involving provisions of the IPC (e.g. unfair competition) due to the following reasons:Section 10 of the Intellectual Property Code specifically identifies the functions of the Bureau of Legal Affairs, thus:Section 10. The Bureau of Legal Affairs.The Bureau of Legal Affairs shall have the following functions:10.1 Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents and utility models, and industrial designs; and petitions for compulsory licensing of patents;10.2 (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights; Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided, futher, That availment of the provisional remedies may be granted in accordance with the Rules of Court. XxxXxx(vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year;Xxx(viii) The assessment of damages;

Unquestionably, petitioners complaint, which seeks the cancellation of the disputed mark in the name of respondent Sehwani, Incorporated, and damages for violation of petitioners intellectual property rights, falls within the jurisdiction of the IPO Director of Legal Affairs.While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section states that the regular courts have sole jurisdiction over unfair competition cases, to the exclusion of administrative bodies.Sections 160 and 170, which are also found under Part III of the Intellectual Property Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition cases.These two provisions read:Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws.Section 170. Penalties. Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section168, and Subsection169.1.Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to decide the petitioners administrative case against respondents and the IPO Director General had exclusive jurisdiction over the appeal of the judgment of the IPO Director of Legal AffairsSECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita Frites were not using their registered trademark but that of In-n-Out Burger. Sehwani and Benita Frites are also giving their products the general appearance that would likely influence the purchasers to believe that their products are that of In-N-Out Burger. The intention to deceive may be inferred from the similarity of the goods as packed and offered for sale, and, thus, an action will lie to restrain unfair competition. The respondents frauduulent intention to deceive purchasers is also apparent in their use of the In-N-Out Burger in business signages.The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods and (2) intent to deceive the public and defraud a competitor. The confusing similarity may or may not result from similarity in the marks, but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown.5. Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17 November 2010 Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under the brand name Unasyn. Sometime in January and February 2003, Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals without the Pfizers consent. Pfizer then demanded that the hospitals cease and desist from accepting such bids. Pfizer also demanded that Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands. Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and forfeiture of the infringing products. A preliminary injunction effective for 90 days was granted by the IPOs Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the denial. While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) a complaint for infringement and unfair competition, with a prayer for injunction. The RTC issued a temporary restraining order, and then a preliminary injunction. Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping. Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted to the Director General. The CA denied all the motions. Pharmawealth filed a petition for review on Certiorari with the Supreme Court. Issues: a) Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed? b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office? Held: a) No. The provision of R.A. 165, from which the Pfizers patent was based, clearly states that "[the] patentee shall have the exclusive right to make, use and sell the patented machine, article or product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent; and such making, using, or selling by any person without the authorization of the patentee constitutes infringement of the patent." Clearly, the patentees exclusive rights exist only during the term of the patent. Since the patent was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to make, use, and sell the products covered by their patent. The CA was wrong in issuing a temporary restraining order after the cut-off date. b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction. 6. Smith Kline Beckman Corporation vs Court of Appeals409 SCRA 33 Intellectual Property Law Law on Patents Doctrine of EquivalentsSmith Kline is a UScorporationlicensed to do business in the Philippines. In 1981, a patent was issued to it for its invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The invention is a means to fight off gastrointestinal parasites from various cattles and pet animals.Tryco Pharma is a localcorporationengaged in the same business as Smith Kline.Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. And that Albendazole is actually patented under Smith Kline in the US.Tryco Pharma averred that nowhere in Smith Klines patentdoes it mention that Albendazole is present but even if it were, the same is unpatentable.Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical for in spite of the fact that the word Albendazole does not appear in Tryco Paharmas letters of patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.ISSUE: Whether or not there is patent infringement in this caseHELD:No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere in the patent isthe word Albendazole found. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. Further, there was a separate patent for Albendazole given by the US which implies that Albendazole is indeed separate and distinct from the patented compound here.A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same.The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met.7. 7. MIRPURI vs. CA G.R. No. 114508, November 19, 1999

Facts:In 1970, Escobar filed anapplicationwith the Bureau of Patents for theregistrationofthe trademarkBarbizon for use in horsiers and ladies undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doingbusinessunder the laws of New York, USA, opposed theapplication. It was alleged that itstrademarkis confusingly similar with that of Escobar and that theregistrationof the saidtrademarkwill cause damage to itsbusinessreputation and goodwill. In 1974, the Director of Patents gave due course to theapplication. Escobar later assigned all his rights and interest overthe trademarkto petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use ofthe trademarkrequired under thePhilippineTrademarkLaw. Due to this failure, the Bureau cancelled Escobars certificate ofregistration. In 1981, Escobar and petitioner separately filed thisapplicationforregistrationof the sametrademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that the saidtrademarkwas registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister ofTrade and Industryand (3) that its use on the same class of goods amounts to a violation ofthe TrademarkLaw and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue:One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held:No. The issue of ownership ofthe trademarkwas not raised in IPC 686. IPC 2049 raised the issue of ownership, the firstregistrationand use ofthe trademarkin the US and other countries, and the international recognition ofthe trademarkestablished by extensive use and advertisement of respondentsproductsfor over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in thePhilippinesonly. Prior use in IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as the first and registered user ofthe markattached to itsproductswhich have been sold and advertised would arise for aconsiderablenumber of years prior to petitioners firstapplication. Indeed, these are substantial allegations that raised new issues and necessarily gave respondents a new cause of action.

Moreover, the cancellation of petitioners certificateregistrationfor failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose the secondapplication.

It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the actions are based on different statutes.8. BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG, G.R. No. 183404, October 13, 2010

Facts:Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris Agricultural Co., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of Oppositionagainst the mark under application allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to its registered trademark "D-10 80 WP," also used for Fungicide (Class 5) with active ingredient 80% Mancozeb.

Director Estrellita Beltran-Abelardo of the IPO-BLA decided in favor of Berris. However, Abyadang appealed to the CA which reversed the decision.

Issues:1. W/N there exists no confusing similarity between the marks2. W/N the cancellation of Petitioners duly registered and validly existing trademark in the absence of a properly filed Petition for Cancellation before the Intellectual Property Office is not in accord with the Intellectual Property Code and applicable Decisions of the Supreme Court.

Held:

First Issue

The determination of priority of use of a mark is a question of fact. Adoption of the mark alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but these alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain period of time.

In the instant case, both parties have submitted proof to support their claim of ownership of their respective trademarks. Berris presented the following evidence: (1) its trademark application dated November 29, 2002with Application No. 4-2002-0010272; (2) its IPO certificate of registration dated October 25, 2004 and July 8, 2004 as the date of registration; (3) a photocopy of its packagingbearing the mark "D-10 80 WP"; (4) photocopies of its sales invoices and official receipts;and (5) its notarized DAU dated April 23, 2003,stating that the mark was first used on June 20, 2002, and indicating that, as proof of actual use, copies of official receipts or sales invoices of goods using the mark were attached as Annex "B."

Abyadangs proofs consisted of the following: (1) a photocopy of the packagingfor his marketed fungicide bearing mark "NS D-10 PLUS"; (2) Abyadangs Affidavit dated February 14, 2006,stating among others that the mark "NS D-10 PLUS" was his own creation derived from: N for Norvy, his name; S for Soledad, his wifes name; D the first letter for December, his birth month; 10 for October, the 10th month of the year, the month of his business name registration; and PLUS to connote superior quality; that when he applied for registration, there was nobody applying for a mark similar to "NS D-10 PLUS" (3) Certification dated December 19, 2005issued by the FPA, stating that "NS D-10 PLUS" is owned and distributed by NS Northern Organic Fertilizer, registered with the FPA since May 26, 2003, and had been in the market since July 30, 2003;

Berris is the prior user of the mark. Berris was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002, even before it filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was under oath and notarized, bearing the stamp of the Bureau of Trademarks of the IPO on April 25, 2003,and the DAU, being a notarized document, especially when received in due course by the IPO, is evidence of the facts it stated and has the presumption of regularity, entitled to full faith and credit upon its face. The DAU is supported by the Certification dated April 21, 2006issued by the Bureau of Trademarks that Berris mark is still valid and existing.

According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to: (1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such mark as to likely deceive or cause confusion.

Comparing Berris mark "D-10 80 WP" with Abyadangs mark "NS D-10 PLUS," as appearing on their respective packages, one cannot but notice that both have a common component which is "D-10." On Berris package, the "D-10" is written with a bigger font than the "80 WP." Admittedly, the "D-10" is the dominant feature of the mark. The "D-10," being at the beginning of the mark, is what is most remembered of it. Although, it appears in Berris certificate of registration in the same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands since the difference in the form does not alter its distinctive character.

Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-10 PLUS" is similar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur. Undeniably, both marks pertain to the same type of goods fungicide with 80% Mancozeb as an active ingredient and used for the same group of fruits, crops, vegetables, and ornamental plants, using the same dosage and manner of application. They also belong to the same classification of goods under R.A. No. 8293. Both depictions of "D-10," as found in both marks, are similar in size, such that this portion is what catches the eye of the purchaser. Undeniably, the likelihood of confusion is present.

This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied, taking into consideration the packaging, for both use the same type of material (foil type) and have identical color schemes (red, green, and white); and the marks are both predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath.

Considering these striking similarities, predominantly the "D-10," the buyers of both products, mainly farmers, may be misled into thinking that "NS D-10 PLUS" could be an upgraded formulation of the "D-10 80 WP."

As to the Second Issue

IPO, by reason of their special knowledge and expertise over matters falling under their jurisdiction, are in a better position to pass judgment on matters regarding intellectual property.Thus, their findings of fact in that regard are generally accorded great respect, if not finality by the courts, as long as they are supported by substantial evidence, even if such evidence might not be overwhelming or even preponderant.It is not the task of the appellate court to weigh once more the evidence submitted before the administrative body and to substitute its own judgment for that of the administrative agency in respect to sufficiency of evidence. Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris, and because the same should not have been cancelled by the CA, we consider it proper not to belabor anymore the issue of whether cancellation of a registered mark may be done absent a petition for cancellation.

9. COFFEE PARTNERS, INC. v. SAN FRANCISCO COFFEE AND ROASTERY, INC.,G.R. NO. 169504, March 3, 2010[edited property block a digest]THE CASENote: Since the topic is jurisdiction, heres the nature of the case / procedural history: This is a petition for reviewof the 15 June 2005 Decisionand the 1 September 2005 Resolutionof the Court of Appeals in CA-G.R. SP No. 80396. In its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003 Decisionof the Office of the Director General-Intellectual Property Office and reinstated the 14 August 2002 Decisionof the Bureau of Legal Affairs-Intellectual Property Office. In its 1 September 2005 Resolution, the Court of Appeals denied petitioner's motion for reconsideration and respondent's motion for partial reconsideration.

FACTS Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It has a franchise agreement with Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks SAN FRANCISCO COFFEE. Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered the business name SAN FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and Industry (DTI) in June 1995. Respondent had since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willys, and other coffee companies. In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc. (BCCPI). In June 2001, respondent discovered that petitioner was about to open a coffee shop under the name SAN FRANCISCO COFFEE in Libis, Quezon City. Respondent sent a letter to petitioner demanding that the latter stop using the name SAN FRANCISCO COFFEE. Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition with claims for damages Ruling of the Bureau of Legal Affairs-Intellectual Property Office Petitioners trademark infringed on respondents trade name. the right to the exclusive use of a trade name with freedom from infringement by similarity is determined from priority of adoption Since respondent registered its business name with the DTI in 1995 and petitioner registered its trademark with the IPO in 2001 in the Philippines and in 1997 in other countries, then respondent must be protected from infringement of its trade name. BLA-IPO also held that respondent did not abandon the use of its trade name as substantial evidence indicated respondent continuously used its trade name in connection with the purpose for which it was organized. Petitioners use of the trademark SAN FRANCISCO COFFEE will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words which is the dominant portion of respondents trade name and petitioners trademark. No significant difference resulted even with a diamond-shaped figure with a cup in the center in petitioner's trademark because greater weight is given to words. On the issue of unfair competition, the BLA-IPO absolved petitioner from liability; there was no evidence of intent to defraud on the part of petitioner. The Office of the Director General Intellectual Property Office (ODG-IPO) reversed the BLA-IPO.

It ruled that petitioner's use of the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name. Also, it found that respondent had stopped using its trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it opened its first coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade name in good faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the latter. The Court of Appeals reversed the ODG-IPO decision and reinstated the decision of the BLA-IPO finding infringement. It denied petitioner's motion for reconsideration and respondent's motion for partial reconsideration.

ISSUE Whether petitioners use of the trademark SAN FRANCISCO COFFEE constitutes infringement of respondents trade name SAN FRANCISCO COFFEE & ROASTERY, INC., even if the trade name is not registered with the Intellectual Property Office (IPO) -- YES.

RULING In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes infringement of an unregistered trade name, thus: The trademark being infringed is registered in the IntellectualProperty Office; however, in infringement of trade name, the same need not be registered; The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services; The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and It is without the consent of the trademark or trade name owner or the assignee thereof. Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines.

11. Fredco v. Harvard University, G.R. No. 185917, June 1, 2011

Facts: In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before the Bureau of Legal Affairs of the Philippine Intellectual Property Office against the President and Fellows of Harvard College for the registration of its mark Harvard Veritas Shield Symbol under the Classes 16, 18, 21, 25 and 28 of the Nice International Classification of Goods an Services alleging that its predecessor-ininterest, New York Garments Manufacturing & Export Co., Inc., has been already using the mark Harvard since 1985 when it registered the same mark under Class 25 of the Nice Classification. Thus, Harvard University is not a prior user of the mark in the Philippines and, therefore, has no right to register the mark. On the other hand, Harvard University claimed that the mark Harvard has been adopted by Harvard University in Cambridge, Massachusetts, USA since 1639. Furthermore, it alleges that the name and mark Harvard and Harvard Veritas Shield Symbol is registered in more than 50 countries, including the Philippines, and has been used in commerce since 1872. In fact, the name and mark is rated as one of the top brands of the world, being worth between $750M and $1B. Decision of BLA-IPO The Bureau of Legal Affairs, IPO ruled in favour of Fredco ordering the cancellation of Harvard Universitys mark under Class 25 only because the other classes were not confusingly similar with respect to the goods and services of Fredco. Decision of ODG-IPO Harvard University appealed before the Office of the Director General of IPO wherein ODG-IPO reversed the decision of BLA-IPO. The Director General ruled that the applicant must also be the owner of the mark sought to be registered aside from the use of it. Thus, Fredco is not the owner of the mark because it failed to explain how its predecessor got the mark Harvard. There was also no evidence of the permission of Harvard University for Fredco to use the mark. Decision of the Court of Appeals Fredco appealed the decision of the Director General before the Court of Appeals, which then affirmed the decision of ODG-IPO considering the facts found by the Director General. CA ruled that Harvard University had been using the marks way before Fredco and the petitioners failed to explain its use of the marks bearing the words Harvard, USA, Established 1936 and Cambridge, Massachusetts within an oblong device.

Issue: W/N CA erred in affirming the decision of ODG-IPO

Held:s The Petition has no merit. Although R.A. 166 Section 2 states that before a mark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior to filing an application for its registration, a trademark registered in a foreign country which is a member of the Paris Convention is allowed to register without the requirement of use in the commerce in the Philippines. Under Section 37 of R.A. 166, registration based on home certificate is allowed and does not require the use of the mark in the Philippines. Furthermore, R.A. 8293 Section 239.2 provides that marks which have been registered under R.A. 166 shall remain in force but shall be subject to the provisions of R.A. 8293, which does not require the prior use of the mark in the Philippines. Why the petition must fail? 1. The inclusion of the origin Cambridge, Massachusetts in Fredcos mark connotes that Fredco is associated with Harvard University, which is really not true. The registration of Fredcos mark should have been rejected. 2. The Philippines is a signatory of the Paris Convention, which provides for the protection against violation of intellectual property rights to all the member countries regardless of whether the trademarks is registered or not in a particular country. 1980, Luis Villafuerte issued a memo to the Director of Patents ordering the latter to reject all pending applications of marks which involves a well-known brand around the world by applicants other than the owner of the mark. 1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director of Patents to implement measures which will comply with the provisions of the Paris Convention. He provided criteria that should be considered to any marks that are wellknown in the Philippines or marks that belong to persons subject to the protection of the Convention. Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers provides for the criteria in determining a well-known mark. The use of the mark in commerce is not anymore required because it is enough that any combination of the criteria be met in order for a mark to be well-known. The ODG-IPO traced the origin of the mark Harvard. It ruled that Harvard University had been using the mark centuries before Fredco although the latter may have used the mark first in the Philippines before the former. Likewise, CA ruled that the name and mark Harvard and Harvard Veritas Shield Symbol were first used in the United States since 1953 under Class 25. Finally, the Supreme Court declared the mark Harvard to be well-known internationally, including the Philippines

12. Case Digest: McDonald's Corporation v. L.C. Big Mak Burger, Inc.MCDONALD'S CORPORATIONand MCGEORGE FOOD INDUSTRIES, INC., petitioners, vs.L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO, and GRACE HUERTO, respondents.

G.R. No. 143993, August 18, 2004.

Petitioner McDonald's Corporation ("McDonald's") is a US corporation that operates a global chain of fast-food restaurants, with Petitioner McGeorge Food Industries ("McGeorge"), as the Philippine franchisee.

McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with the US Trademark Registry on 16 October 1979.

Based on this Home Registration, McDonald's applied for the registration of the same mark in the Principal Register of the then Philippine Bureau of Patents, Trademarks and Technology ("PBPTT") (now IPO). On 18 July 1985, the PBPTT allowed registration of the "Big Mac."

Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Respondent corporation's menu includes hamburger sandwiches and other food items.

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big Mak" mark for its hamburger sandwiches, which was opposed by McDonald's. McDonald's also informed LC Big Mak chairman of its exclusive right to the "Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark.

Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors before Makati RTC Branch 137 ("RTC"), for trademark infringement and unfair competition.

RTC rendered a Decision finding respondent corporation liable for trademark infringement and unfair competition. CA reversed RTC's decision on appeal.

1ST ISSUE:W/N respondent corporation is liable for trademark infringement and unfair competition.

Ruling: YesSection 22 of Republic Act No. 166, as amended, defines trademark infringement as follows:Infringement, what constitutes. - Any person who [1] shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name 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 [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name 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, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in "likelihood of confusion." Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement.

1st element:

A mark is valid if it is distinctive and not merely generic and descriptive.

The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as "Lite" for beer. Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as "Arthriticare" for arthritis medication. On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive and thus valid.

2nd element:

Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Prior valid registrants of the said mark had already assigned his rights to McDonald's.

3rd element:

Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks, namely, confusion of goods (confusion in which the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other) and confusion of business (though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist).

There is confusion of goods in this case since respondents used the "Big Mak" mark on the same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used.

There is also confusion of business due to Respondents' use of the "Big Mak" mark in the sale of hamburgers, the same business that petitioners are engaged in, also results in confusion of business. The registered trademark owner may use his mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. The registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business.

Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy test (similarity of the prevalent features of the competing trademarks that might cause confusion) over the holistic test (consideration of the entirety of the marks as applied to the products, including the labels and packaging).

Applying the dominancy test, Respondents' use of the "Big Mak" mark results in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first two letters.

Lastly, since Section 22 only requires the less stringent standard of "likelihood of confusion," Petitioners' failure to present proof of actual confusion does not negate their claim of trademark infringement.

2ND ISSUE:W/N Respondents committed Unfair Competition

Ruling:Yes.Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:Any person who will employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods, and (2) intent to deceive the public and defraud a competitor.

In the case at bar, Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. Further, Respondents' goods are hamburgers which are also the goods of petitioners. Moreover, there is actually no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak Burger, Inc." This clearly shows respondents' intent to deceive the public.

13. McDonalds Corporation vs Macjoy Fastfood Corporation514 SCRA 95 Mercantile Law Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Dominancy Test vs Holistic TestSince 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. In 1991, MacJoy filed its application for trademark before the Intellectual Property Office (IPO). McDonalds opposedthe applicationas it alleged that MacJoy closely resembles McDonalds corporate logo such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin that the use and adoption in bad faith of the MacJoy and Device mark would falsely tend to suggest a connection or affiliation with McDonalds restaurant services and food products, thus, constituting a fraud upon the general public and further cause the dilution of the distinctiveness of McDonalds registered and internationally recognized McDonaldS marks to its prejudice and irreparable damage.The IPO ruled in favor of McDonalds. MacJoy appealed before the Court of Appeals and the latter ruled in favor of MacJoy. The Court of Appeals, in ruling over the case, actually used the holistic test (which is a test commonly used in infringement cases). The holistic test looks upon the visual comparisons between the two trademarks. In this case, the Court of Appeals ruled that other than the letters M and C in the words MacJoy and McDonalds, there are no real similarities between the two trademarks. MacJoy is written in round script while McDonalds is written in thin gothic. MacJoy is accompanied by a picture of a (cartoonish) chicken while McDonalds is accompanied by the arches M. The color schemes between the two are also different. MacJoy is in deep pink while McDonalds is in gold color.ISSUE:Whether or not MacJoy infringed upon the trademark of McDonalds.HELD:Yes. The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only looks at the visual comparisons between two trademarks but also the aural impressions created by the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that McDonalds and MacJoy marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. To begin with, both marks use the corporate M design logo and the prefixes Mc and/or Mac as dominant features. The first letter M in both marks puts emphasis on the prefixes Mc and/or Mac by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix Mc, an abbreviation of Mac, which visually and aurally catches the attention of the consuming public. Verily, the word MACJOY attracts attention the same way as did McDonalds, MacFries, McSpaghetti, McDo, Big Mac and the rest of the MCDONALDS marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the sale of fastfood products.Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the prefix Mac to be the dominant feature of the trademark. The prefix Mac and Macjoy has no relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the name of the niece of MacJoys president whom he said was the basis of the trademark MacJoy. By reason of the MacJoys implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark, it chose the word Macjoy, the only logical conclusion deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill of the McDonalds marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question14. LYCEUM OF THE PHILS. V. CA219 SCRA 610FACTS:1. Petitioner had sometime commenced before in the SEC a complaint against Lyceum of Baguio, to require it to change its corporate name and to adopt another name not similar or identical with that of petitioner. SEC decided in favor of petitioner. Lyceum of Baguio filed petition for certiorari but was denied forlack of merit.2. Armed with the resolution of the Court, petitioner instituted before the SEC to compel private respondents, which are also educational institutions, to delete word Lyceum from their corporate names and permanently to enjoin them from using such as part of their respective names.

3. Hearing officer sustained the claim of petitioner and held that the word Lyceum was capable of appropriation and that petitioner had acquired an enforceable right to the use of that word.

4. In an appeal, the decision was reversed by the SEC En Banc. They held that the word Lyceum to have become identified with petitioner as to render use thereof of other institutions as productive of consfusion about the identity of the schools concerned in the mind of the general public.

5. Petitioner went to appeal with the CA but the latter just affirmed the decision of the SEC En Banc.

HELD:Under the corporation code, no corporate name may be allowed by the SEC if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws. The policy behind this provision is to avoid fraud upon the public, which would have the occasion to deal with the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration and supervision over corporations.

The corporate names of private respondents are not identical or deceptively or confusingly similar to that of petitioners. Confusion and deception has been precluded by the appending of geographic names to the word Lyceum. Furthermore, the word Lyceum has become associated in time with schools and other institutions providing public lectures, concerts, and public discussions. Thus, it generally refers to a school or an institution of learning.Petitioner claims that the word has acquired a secondary meaning in relation to petitioner with the result that the word, although originally generic, has become appropriable by petitioner to the exclusion of other institutions.The doctrine of secondary meaning is a principle used in trademark law but has been extended to corporate names since the right to use a corporate name to the exclusion of others is based upon the same principle, which underlies the right to use a particular trademark or tradename. Under this doctrine, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used for so long and so exclusively by one producer with reference to this article that, in that trade and to that group of purchasing public, the word or phrase has come to mean that the article was his produce. The doctrine cannot be made to apply where the evidence didn't prove that the business has continued for so long a time that it has become of consequence and acquired good will of considerable value such that its articles and produce have acquired a well known reputation, and confusion will result by the use of the disputed name.Petitioner didn't present evidence, which provided that the word Lyceum acquired secondary meaning. The petitioner failed to adduce evidence that it had exclusive use of the word. Even if petitioner used the word for a long period of time, it hadnt acquired any secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others.15. DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES

G.R. No. L-78325 January 25, 1990

FACTS:Petitioner Del Monte Corporation (Del Monte), through its local distributor and manufacturer, PhilPack filed an infringement of copyright complaint against respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the petitioner, to which is deceiving and misleading to the public.

In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners.

The Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties nor on the continued use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.

ISSUE:Whether or not SSMI committed infringement against Del Monte in the use of its logos and bottles.

HELD:Yes. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached; the discerning eye of the observer must focus not only on the precognizant words but also on the other features appearing on both labels. It has been correctly held that side-by-side comparison is not the final test of similarity. In determining whether a trademark has been infringed, we must consider the mark as a whole and not as dissected.

The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this case. The Sunshine label is a colorable imitation of the Del Monte trademark. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. Sunshine chose, without a reasonable explanation, to use the same colors and 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.

With regard to the bottle use, Sunshine despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte.

16. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC., vs, COURT OF APPEALS and CFC CORPORATION.G.R. No. 112012April 4, 2001356 SCRA 207 Mercantile Law Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Generic TermIn 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology Transfers an application for the registration of its trademark Flavor Master an instant coffee. Nestle opposed the application as it alleged that Flavor Master is confusingly similar to Nestle coffee products like Master Blend and Master Roast. Nestle alleged that in promoting their products, the word Master has been used so frequently so much so that when one hears the word Master it connotes to a Nestle product. They provided as examples the fact that theyve been using Robert Jaworski and Ric Puno Jr. as their commercial advertisers; and that in those commercials Jaworski is a master of basketball and that Puno is a master of talk shows; that the brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation on the other hand alleged that the word Master is a generic and a descriptive term, hence not subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic Test, reversed the said decision.ISSUE:Whether or not the Court of Appeals is correct.HELD:No. The proper test that should have been used is the Dominancy Test. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. The use of the word Master by Nestle in its products and commercials has made Nestle acquire a connotation that if its a Master product it is a Nestle product. As such, the use by CFC of the term MASTER in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.In addition, the word MASTER is neither a generic nor a descriptive term. As such, said term can not be invalidated as a trademark and, therefore, may be legally protected.Generic termsare those which constitute the common descriptive name of an article or substance, or comprise the genus of which the particular product is a species, or are commonly used as the name or description of a kind of goods, or imply reference to every member of a genus and the exclusion of individuating characters, or refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product, and are not legally protectable.On the other hand, a term is descriptiveand therefore invalid as a trademark if, as understood in its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is, or if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods, or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination.Rather, the term MASTER is a suggestive term brought about by the advertising scheme of Nestle. Suggestive termsare those which, in the phraseology of one court, require imagination, thought and perception to reach a conclusion as to the nature of the goods. Such terms, which subtly connote something about the product, are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding some light upon certain characteristics of the goods or services in dispute, they nevertheless involve an element of incongruity, figurativeness, or imaginative effort on the part of the observer.17. Asia Brewery, Inc. vs Court of Appeals224 SCRA 437 Mercatile Law Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Unfair CompetitionIn September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as San Miguel Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has committed unfair competition as Beer na Beer creates confusion between the two products. The RTC ruled in favor of Asia Brewery but theCourt of Appealsreversed the RTC.ISSUE:Whether or not Asia Brewery infringed upon the trademark of SMC.HELD:No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient differences between the two. As found by the Supreme Court, among others they are the following:1. The dominant feature of SMCs trademark are the words San Miguel Pale Pilsen while that of Asia Brewerys trademark is the word Beer. Nowhere in SMCs product can be seen the word Beer nor in Asia Brewerys product can be seen the words San Miguel Pale Pilsen. Surely, someone buying Beer na Beer cannot mistake it as San Miguel Pale Pilsen beer.2. The bottle designs are different. SMCs bottles have slender tapered neck while that of Beer na Beer are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape and design.3. In SMC bottles, the words pale pilsen are written diagonally while in Beer na Beer, the words pale pilsen are written horizontally. Further, the words pale pilsen cannot be said to be copied from SMC for pale pilsen are generic words which originated from Pilsen, Czechoslovakia. Pilsen is a geographically descriptive word and is non-registrable.4. SMC bottles have no slogans written on them while Asia Brewerys bottles have a copyrighted slogan written on them that is Beer na Beer.5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on the part of Asia Brewery to confuse the public and make it appear that Beer na Beer is a product of SMC, a long-established and more popular brand.Justice Cruz Dissenting:A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. (Del Monte vs CA & Sunshine Sauce)