Trademark Cases Flashcards
Facts:
Fredco Manufacturing Corporation (Fredco) filed a Petition for Cancellation of Registration No. 56561 with the Bureau of Legal Affairs of the Intellectual Property Office (IPO) on August 10, 2005.
The petition was against President and Fellows of Harvard College (Harvard University), a corporation based in Massachusetts.
Fredco claimed the mark “Harvard” for various clothing items was first used in the Philippines on January 2, 1982, by New York Garments Manufacturing & Export Co., Inc. (New York Garments), Fredco’s predecessor.
New York Garments registered the “Harvard” mark under Class 25 on December 12, 1988, but the registration was canceled on July 30, 1998, for failing to file an affidavit of use/non-use.
Fredco argued that the rights to the mark were maintained by New York Garments and later transferred to Fredco.
Harvard University asserted ownership of the “Harvard” mark, having registered it in multiple countries, including the Philippines, and using it commercially since 1872.
Harvard University discovered Fredco’s use of the mark in 2002 and filed a complaint for trademark infringement and/or unfair competition in 2004.
The Bureau of Legal Affairs initially canceled Harvard University’s registration for Class 25 goods but upheld it for other classes.
The Office of the Director General of the IPO reversed this decision, ruling in favor of Harvard University.
The Court of Appeals affirmed the decision of the Director General, prompting Fredco to file a petition for review before the Supreme Court.
Issue:
Did the Court of Appeals commit a reversible error in affirming the decision of the Office of the Director General of the IPO, which upheld Harvard University’s trademark registration for the mark “Harvard Veritas Shield Symbol” under Class 25?
Harvard University had established its use of the “Harvard” mark in commerce since 1872 and registered it in at least 50 countries.
New York Garments, Fredco’s predecessor, began using the mark in the Philippines only in 1982.
Harvard University’s registration was based on home registration, allowed under Section 37 of R.A. No. 166, which does not require prior use in the Philippines.
Fredco’s registration was canceled in 1998, and Fredco falsely suggested a connection with Harvard University by using the mark “Harvard” with “Cambridge, Massachusetts,” “Established 1936,” and “USA.”
This violated Section 4(a) of R.A. No. 166, which prohibits the registration of marks falsely suggesting a connection with institutions.
Under the Paris Convention, to which both the Philippines and the United States are signatories, Harvard University is entitled to protection of its trade name “Harvard” without the need for filing or registration.
“Harvard” was declared a well-known mark internationally and in the Philippines, warranting protection under both the Paris Convention and Philippine law.
Facts:
Fredco Manufacturing Corporation (Fredco) filed a Petition for Cancellation of Registration No. 56561 with the Bureau of Legal Affairs of the Intellectual Property Office (IPO) on August 10, 2005.
The petition was against President and Fellows of Harvard College (Harvard University), a corporation based in Massachusetts.
Fredco claimed the mark “Harvard” for various clothing items was first used in the Philippines on January 2, 1982, by New York Garments Manufacturing & Export Co., Inc. (New York Garments), Fredco’s predecessor.
New York Garments registered the “Harvard” mark under Class 25 on December 12, 1988, but the registration was canceled on July 30, 1998, for failing to file an affidavit of use/non-use.
Fredco argued that the rights to the mark were maintained by New York Garments and later transferred to Fredco.
Harvard University asserted ownership of the “Harvard” mark, having registered it in multiple countries, including the Philippines, and using it commercially since 1872.
Harvard University discovered Fredco’s use of the mark in 2002 and filed a complaint for trademark infringement and/or unfair competition in 2004.
The Bureau of Legal Affairs initially canceled Harvard University’s registration for Class 25 goods but upheld it for other classes.
The Office of the Director General of the IPO reversed this decision, ruling in favor of Harvard University.
The Court of Appeals affirmed the decision of the Director General, prompting Fredco to file a petition for review before the Supreme Court.
Issue:
Did the Court of Appeals commit a reversible error in affirming the decision of the Office of the Director General of the IPO, which upheld Harvard University’s trademark registration for the mark “Harvard Veritas Shield Symbol” under Class 25?
Harvard University had established its use of the “Harvard” mark in commerce since 1872 and registered it in at least 50 countries.
New York Garments, Fredco’s predecessor, began using the mark in the Philippines only in 1982.
Harvard University’s registration was based on home registration, allowed under Section 37 of R.A. No. 166, which does not require prior use in the Philippines.
Fredco’s registration was canceled in 1998, and Fredco falsely suggested a connection with Harvard University by using the mark “Harvard” with “Cambridge, Massachusetts,” “Established 1936,” and “USA.”
This violated Section 4(a) of R.A. No. 166, which prohibits the registration of marks falsely suggesting a connection with institutions.
Under the Paris Convention, to which both the Philippines and the United States are signatories, Harvard University is entitled to protection of its trade name “Harvard” without the need for filing or registration.
“Harvard” was declared a well-known mark internationally and in the Philippines, warranting protection under both the Paris Convention and Philippine law.
Facts:
The case involves Ana L. Ang (petitioner) and Toribio Teodoro (respondent) concerning the trade-mark “Ang Tibay.”
Teodoro had been using “Ang Tibay” since 1910 for slippers, shoes, and indoor baseballs.
Teodoro formally registered “Ang Tibay” as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933.
Ang registered the same trade-mark for pants and shirts on April 11, 1932, and started a factory for these items in 1937.
The Court of First Instance of Manila initially ruled in favor of Ang, stating the trade-marks were dissimilar and used on non-competing goods.
The Court of Appeals reversed this decision, holding that Teodoro’s trade-mark had acquired a secondary meaning and that the goods were similar or belonged to the same class.
The Court of Appeals directed the Director of Commerce to cancel Ang’s registration and enjoined her from using the trade-mark.
Issue:
Is the trade-mark “Ang Tibay” a descriptive term, and thus not subject to exclusive appropriation?
Has the trade-mark “Ang Tibay” acquired a secondary meaning?
Are pants and shirts similar to shoes and slippers within the meaning of the Trade-mark Law?
Does the use of the trade-mark “Ang Tibay” by the petitioner constitute unfair competition or infringement under the Trade-mark Law?
Ruling:
The Supreme Court ruled that “Ang Tibay” is not a descriptive term and is capable of exclusive appropriation as a trade-mark.
The Court held that even if “Ang Tibay” were not capable of exclusive appropriation, it had acquired a secondary meaning due to Teodoro’s long and exclusive use.
The Court found that pants and shirts are similar to shoes and slippers within the meaning of the Trade-mark Law.
The Court affirmed that the use of the trade-mark “Ang Tibay” by the petitioner constitutes unfair competition and infringement.
Ratio:
The Court delved into the etymology and meaning of the Tagalog words “Ang Tibay,” concluding that the phrase is not descriptive but rather fanciful or coined, making it eligible for exclusive appropriation as a trade-mark. The Court noted that the petitioner herself had registered the trade-mark, indicating her belief in its validity.
The Court explained the doctrine of secondary meaning, which allows a word or phrase to acquire a proprietary connotation through long and exclusive use. Teodoro’s use of “Ang Tibay” since 1910 had established it as a distinctive identifier of his products.
The Court applied a modern interpretation of the Trade-mark Law, emphasizing that the test for determining whether non-competing goods are of the same class is the likelihood of confusion regarding the origin of the goods. The Court found that the simultaneous use of “Ang Tibay” on pants and shirts and on shoes and slippers would likely cause such confusion.
The Court highlighted the principles of equity and fair dealing, noting that the use of a well-known trade-mark on non-competing goods can still constitute unfair competition. The Court emphasized that the original owner of a trade-mark has a property right that deserves protection from confusion and unfair trading practices.
The Supreme Court affirmed the decision of the Court of Appeals, with costs against the petitioner.
Facts:
McDonald’s Corporation, a Delaware corporation, owns the “Big Mac” trademark, registered in the U.S. in 1979 and in the Philippines in 1985.
McGeorge Food Industries, Inc., McDonald’s Philippine franchisee, is a petitioner in the case.
L.C. Big Mak Burger, Inc., a domestic corporation, operates fast-food outlets in Metro Manila and nearby provinces, using the “Big Mak” mark for their hamburger sandwiches.
On October 21, 1988, L.C. Big Mak applied to register the “Big Mak” mark.
McDonald’s opposed the registration, claiming “Big Mak” was a colorable imitation of “Big Mac.”
After L.C. Big Mak failed to respond, McDonald’s filed a lawsuit for trademark infringement and unfair competition in the RTC of Makati.
The RTC issued a temporary restraining order and a preliminary injunction against L.C. Big Mak.
The RTC ruled in favor of McDonald’s, finding L.C. Big Mak liable for trademark infringement and unfair competition, and awarded damages to McDonald’s.
The Court of Appeals reversed the RTC’s decision, finding no liability on L.C. Big Mak’s part and ordering McDonald’s to pay damages to the respondents.
McDonald’s petitioned for review in the Supreme Court.
Issue:
Whether the questions raised in the petition are proper for a petition for review under Rule 45.
Whether respondents used “Big Mak” not only as part of their corporate name but also as a trademark for their hamburger products.
Whether respondent corporation is liable for trademark infringement and unfair competition.
Ruling:
The Supreme Court ruled that respondent corporation is liable for trademark infringement and unfair competition, reinstating the RTC’s decision.
Ratio:
The Supreme Court accepted the petition for review under Rule 45 due to the conflicting findings of the RTC and the Court of Appeals, which is an exception to the rule that only questions of law may be raised.
Evidence showed that respondents used “Big Mak” on their hamburger packaging, likely causing confusion with McDonald’s “Big Mac” mark.
The Court applied the dominancy test, focusing on the similarity of the dominant features of the competing trademarks. The Court found “Big Mak” and “Big Mac” phonetically and visually similar, leading to a likelihood of confusion. The Court also found that respondents’ use of “Big Mak” intended to ride on the goodwill and reputation of McDonald’s “Big Mac” mark, constituting unfair competition. The Court reinstated the RTC’s decision, which included injunctive relief and monetary damages for McDonald’s.
Facts:
The case involves a trademark dispute between McDonald’s Corporation (petitioner) and MacJoy Fastfood Corporation (respondent).
On March 14, 1991, MacJoy Fastfood Corporation, based in Cebu City, applied to register the trademark “MACJOY & DEVICE” for food products under classes 29 and 30 of the International Classification of Goods.
McDonald’s Corporation, a Delaware-based company, opposed the application, arguing that “MACJOY & DEVICE” closely resembled its well-known trademarks, such as “McDonald’s,” “McChicken,” “MacFries,” “BigMac,” “McDo,” “McSpaghetti,” “McSnack,” and “Mc.”
McDonald’s claimed that the similarity would likely confuse consumers and dilute the distinctiveness of its marks.
The Intellectual Property Office (IPO) initially sided with McDonald’s, rejecting MacJoy’s application on December 28, 1998.
MacJoy’s motion for reconsideration was denied by the IPO on January 14, 2000.
MacJoy appealed to the Court of Appeals (CA), which reversed the IPO’s decision on July 29, 2004, and ordered the IPO to proceed with MacJoy’s application.
McDonald’s motion for reconsideration was denied by the CA on November 12, 2004, prompting McDonald’s to file a petition for review on certiorari with the Supreme Court.
Issue:
Is the “MACJOY & DEVICE” trademark confusingly similar to McDonald’s trademarks?
Did the Court of Appeals err in applying the holistic test instead of the dominancy test to determine the similarity between the trademarks?
Ruling:
Yes, the “MACJOY & DEVICE” trademark is confusingly similar to McDonald’s trademarks.
Yes, the Court of Appeals erred in applying the holistic test instead of the dominancy test.
Ratio:
The Supreme Court ruled in favor of McDonald’s Corporation, reinstating the IPO’s decision to reject MacJoy’s trademark application.
The Court emphasized the use of the dominancy test, which focuses on the dominant features of the trademarks in question.
The Court found that the dominant features of both trademarks, such as the “M” design and the prefixes “Mc” and “Mac,” were similar enough to cause confusion among consumers.
The Court noted that these similarities were more significant than the differences in color, design, and other details highlighted by the Court of Appeals.
The Court also pointed out that both trademarks were used for similar food products, increasing the likelihood of consumer confusion.
The Court dismissed MacJoy’s argument that it had used the “MACJOY” mark in good faith and had spent considerable sums on its promotion, stating that the protection of established trademarks and the prevention of consumer confusion were paramount.
The Court also rejected MacJoy’s claim that “Mac” is a common name that cannot be monopolized, noting that McDonald’s had established a strong reputation and goodwill associated with its marks.
The decision was based on the provisions of the 1987 Philippine Constitution and relevant trademark laws, including Republic Act No. 166 and the Paris Convention for the Protection of Indust
Facts:
The case involves Skechers, U.S.A., Inc. (petitioner) and Inter Pacific Industrial Trading Corp., along with its associated entities and individuals (respondents).
The dispute centers around trademark infringement, specifically the use of a stylized “S” on rubber shoes.
Skechers has registered the “SKECHERS” trademark and a stylized “S” within an oval design with the Intellectual Property Office (IPO).
Skechers filed an application for search warrants against the respondents’ outlet and warehouse located at S-7, Ed & Joe’s Commercial Arcade, No. 153 Quirino Avenue, Parañaque City.
The Regional Trial Court (RTC) of Manila issued two search warrants, resulting in the seizure of over 6,000 pairs of shoes bearing the “S” logo.
Respondents moved to quash the search warrants, arguing no confusing similarity existed between Skechers’ and their “Strong” rubber shoes.
The RTC agreed and quashed the warrants, directing the return of the seized goods.
Skechers filed a petition for certiorari with the Court of Appeals (CA), which affirmed the RTC’s ruling.
Skechers subsequently brought the case to the Supreme Court, which initially dismissed the petition.
Both Skechers and Trendworks International Corporation (petitioner-intervenor) filed motions for reconsideration, leading to the present resolution.
Issue:
Did the Court of Appeals commit grave abuse of discretion in considering matters of defense in a criminal trial for trademark infringement when determining the validity of the search warrant?
Did the Court of Appeals commit grave abuse of discretion in finding that respondents are not guilty of trademark infringement based on the existence of probable cause for issuing a search warrant?
Ruling:
The Supreme Court granted the motion for reconsideration, setting aside its earlier decision dated November 30, 2006.
The Court ruled in favor of Skechers, finding that the respondents’ use of the stylized “S” in their rubber shoes infringed on Skechers’ registered trademark.
Ratio:
The Supreme Court’s decision was based on the application of the Dominancy Test, which focuses on the similarity of the dominant features of the competing trademarks that might cause confusion among the purchasing public.
The Court found that the stylized “S” used by the respondents in their “Strong” rubber shoes was the same as the stylized “S” registered by Skechers, constituting trademark infringement.
The Court rejected the application of the Holistic Test by the RTC and CA, which had considered the overall appearance and dissimilarities between the shoes.
The Supreme Court emphasized that the dominant feature of the trademark, the stylized “S,” was likely to cause confusion, mistake, and deception among consumers.
The Court also noted that the differences in price and other minor dissimilarities did not outweigh the stark similarities in the general features of the shoes.
The decision underscored the importance of protecting trademarks to preserve the goodwill and reputation of the business and to safeguard consumers against confusion.
Facts:
On September 15, 1988, San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for trademark infringement and unfair competition.
The dispute involved ABI’s BEER PALE PILSEN or BEER NA BEER product competing with SMC’s SAN MIGUEL PALE PILSEN in the local beer market.
The case, San Miguel Corporation vs. Asia Brewery Inc., was filed as Civil Case No. 56390 in the Regional Trial Court (RTC) Branch 166, Pasig, Metro Manila.
On August 27, 1990, the RTC, presided over by Judge Jesus O. Bersamira, dismissed SMC’s complaint, ruling that ABI had not committed trademark infringement or unfair competition.
Dissatisfied with the decision, SMC appealed to the Court of Appeals (CA-G.R. CV No. 28104).
On September 30, 1991, the Court of Appeals reversed the trial court’s decision, finding ABI guilty of trademark infringement and unfair competition.
The CA ordered ABI to cease using the infringing mark, recall its products, pay damages, and cover attorney’s fees.
ABI then appealed to the Supreme Court via a petition for certiorari under Rule 45 of the Rules of Court.
Issue:
Did ABI infringe SMC’s trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt Design?
Did ABI commit unfair competition against SMC?
Ruling:
The Supreme Court ruled that ABI did not infringe SMC’s trademark.
The Supreme Court ruled that ABI did not commit unfair competition against SMC.
Ratio:
The Supreme Court emphasized the “test of dominancy” in determining trademark infringement, which focuses on the dominant features of the trademarks rather than minor differences.
The Court found that the dominant feature of SMC’s trademark is the name “SAN MIGUEL PALE PILSEN,” while ABI’s trademark prominently features the name “BEER PALE PILSEN.”
The Court noted that the words “pale pilsen” are generic and descriptive, referring to a type of beer, and cannot be exclusively appropriated by SMC.
The Court highlighted several dissimilarities between the two products, including differences in bottle shape, label design, and the names of the manufacturers prominently displayed on the bottles.
The Court concluded that there was no likelihood of confusion between the two products.
Regarding unfair competition, the Court stated that unfair competition involves deception or conduct contrary to good faith, aimed at passing off one’s goods as those of another.
The Court found no evidence that ABI intended to deceive consumers or pass off its product as SMC’s.
The Court noted that the use of amber-colored steinie bottles and white labels by both companies did not constitute unfair competition, as these features are functional and commonly used in the industry.
The Court emphasized that consumers typically order beer by brand, reducing the likelihood of confusion.
The Court reinstated the trial court’s decision, dismissing SMC’s complaint and ruling in favor of ABI
Facts:
The case involves a trademark infringement dispute between Prosource International, Inc. (petitioner) and Horphag Research Management SA (respondent).
Horphag Research Management SA, a Swiss corporation, owns the trademark PYCNOGENOL, a food supplement distributed by Zuellig Pharma Corporation.
In 1996, Prosource International, Inc. began distributing a similar food supplement under the mark PCO-GENOLS.
Horphag demanded that Prosource cease using the mark PCO-GENOLS.
Prosource complied by rebranding to PCO-PLUS as of June 19, 2000.
Despite this, on August 22, 2000, Horphag filed a Complaint for Infringement of Trademark with a Prayer for Preliminary Injunction.
Horphag sought to stop Prosource from using PCO-GENOLS and claimed damages and attorney’s fees.
Prosource argued that Horphag was not the registered owner of PYCNOGENOL and that the marks were not confusingly similar.
The Regional Trial Court (RTC) ruled in favor of Horphag on January 16, 2006, finding the marks confusingly similar and awarding attorney’s fees.
Prosource’s motion for reconsideration was denied.
The Court of Appeals (CA) affirmed the RTC’s decision on July 27, 2007, and denied Prosource’s motion for reconsideration on October 15, 2007.
Prosource then filed a petition for review on certiorari under Rule 45 of the Rules of Court.
Issue:
Did the Court of Appeals err in affirming the RTC’s ruling that Prosource’s trademark PCO-GENOLS infringed on Horphag’s trademark PYCNOGENOL?
Did the Court of Appeals err in affirming the award of attorney’s fees to Horphag Research Management SA
Ruling:
The Supreme Court ruled that the Court of Appeals did not err in affirming the RTC’s decision that Prosource’s trademark PCO-GENOLS infringed on Horphag’s trademark PYCNOGENOL.
The Supreme Court also upheld the award of attorney’s fees to Horphag Research Management SA.
Ratio:
The Supreme Court found that the marks PYCNOGENOL and PCO-GENOLS were confusingly similar, particularly when applying the Dominancy Test.
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks.
Both marks share the suffix “GENOL,” and despite differences in letters and design, the aural and visual impressions created by the marks were likely to cause confusion among consumers.
The Court emphasized that the likelihood of confusion is the gravamen of trademark infringement.
The similarity in sound and the fact that both products are food supplements contributed to the likelihood of confusion.
The Court noted that factual determinations by the trial court, concurred in by the CA, are final and binding.
Regarding attorney’s fees, the Court found that Horphag was compelled to litigate due to Prosource’s actions.
This justified the award under Article 2208 of the Civil Code.
The Court affirmed the CA’s decision, finding no reversible error in the grant of attorney’s fees
Facts:
The case involves 246 Corporation, operating as “Rolex Music Lounge,” and respondents Montres Rolex S.A. and Rolex Centre Phil., Limited, owners of the “Rolex” trademark.
On November 26, 1998, the respondents filed a suit for trademark infringement and damages against the petitioner in the RTC of Quezon City, Branch 90.
Respondents claimed that since July 1996, the petitioner used the “Rolex” mark in its business name and advertisements without authorization.
The petitioner argued there was no trademark infringement due to the unrelated nature of their entertainment business to the respondents’ products (watches, clocks, bracelets).
The petitioner also contended that the complaint was improperly verified and certified against forum shopping.
The trial court denied the petitioner’s motion for preliminary hearing on its affirmative defenses and motion to dismiss.
The Court of Appeals dismissed the petition for certiorari filed by the petitioner and denied the motion for reconsideration, leading to the present petition before the Supreme Court.
Issue:
Did the trial court deny both the petitioner’s motion for preliminary hearing on its affirmative defenses and its motion to dismiss?
Did the trial court gravely abuse its discretion in denying the petitioner’s motions?
Did the trial court gravely abuse its discretion in quashing the subpoena ad testificandum issued against Atty. Alonzo Ancheta?
Ruling:
Yes, the trial court denied both the petitioner’s motion for preliminary hearing on its affirmative defenses and its motion to dismiss.
No, the trial court did not gravely abuse its discretion in denying the petitioner’s motions.
No, the trial court did not gravely abuse its discretion in quashing the subpoena ad testificandum issued against Atty. Alonzo Ancheta.
Ratio:
The Supreme Court held that the trial court’s order dated October 27, 2000, denied both the motion for preliminary hearing and the motion to dismiss.
The trial court ruled on the merits of the petitioner’s motion to dismiss in conjunction with the respondents’ opposition.
A preliminary hearing on affirmative defenses is discretionary, not mandatory, as indicated by the procedural rules.
The Court of Appeals correctly found no abuse of discretion by the trial court in denying the motion for preliminary hearing and motion to dismiss.
Trademark infringement can occur even with unrelated goods or services if it indicates a connection to the well-known mark and damages the owner’s interests.
The requisites for applying this provision require a full trial to determine the facts.
The issue of verification and certification against forum shopping should be resolved during the trial.
The trial court’s decision to quash the subpoena ad testificandum against Atty. Ancheta was appropriate, given the denial of the motion for preliminary hearing and motion to dismiss.
The Supreme Court concluded that the trial court did not act with grave abuse of discretion.
The Court of Appeals’ decision to dismiss the petition for certiorari was affirmed.
The petition for review on certiorari filed by the petitioner was denied
What are genetic terms?
Those which constitutes the ummm 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 N 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 waves or services provided rather than the more idiosperatic characteristics of a particular product and are not legally protectable.
Facts:
The case involves the Lyceum of the Philippines, Inc. (petitioner) and several other educational institutions (respondents) using the word “Lyceum” in their corporate names.
The petitioner was registered with the Securities and Exchange Commission (SEC) on September 21, 1950.
The petitioner sought to compel the respondents to delete “Lyceum” from their corporate names and to prevent future use.
Respondents include Western Pangasinan Lyceum, Lyceum of Cabagan, Lyceum of Lallo, Inc., Lyceum of Aparri, Lyceum of Tuao, Inc., Lyceum of Camalaniugan, Buhi Lyceum, Central Lyceum of Catanduanes, Lyceum of Eastern Mindanao, Inc., and Lyceum of Southern Philippines.
The petitioner had previously succeeded in a similar case against Lyceum of Baguio, Inc., which was ordered by the SEC to change its name.
In this case, the SEC En Banc reversed the hearing officer’s decision that favored the petitioner.
The Court of Appeals affirmed the SEC En Banc’s decision.
The petitioner then brought the case to the Supreme Court.
Issue:
Did the Court of Appeals err in holding that the Supreme Court’s resolution in G.R. No. L-46595 did not constitute stare decisis for this case?
Did the Court of Appeals err in holding that the word “Lyceum” has not acquired a secondary meaning in favor of the petitioner?
Did the Court of Appeals err in holding that the word “Lyceum” is generic and cannot be appropriated by the petitioner to the exclusion of others
Ruling:
The Supreme Court denied the petition for review.
The decision of the Court of Appeals dated June 28, 1991, was affirmed.
The Court ruled that the petitioner is not entitled to a legally enforceable exclusive right to use the word “Lyceum” in its corporate name.
Other institutions may use “Lyceum” as part of their corporate names.
Ratio:
The Supreme Court held that the corporate names of the respondents are not “identical with, or deceptively or confusingly similar” to that of the petitioner.
The addition of geographic names to “Lyceum” effectively distinguishes the respondents’ names from that of the petitioner, precluding confusion and deception.
The word “Lyceum” is generic and has not acquired a secondary meaning in favor of the petitioner.
The doctrine of secondary meaning requires that a word or phrase be used so long and exclusively by one entity that it becomes associated with that entity in the public’s mind.
The petitioner failed to prove such exclusivity, as other institutions had been using “Lyceum” long before the petitioner.
Corporate names must be evaluated in their entirety to determine whether they are confusingly or deceptively similar.
In this case, the names of the respondents were not reasonably regarded as identical or confusingly similar to that of the petitioner
Facts:
On September 15, 1988, San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for trademark infringement and unfair competition.
The dispute involved ABI’s BEER PALE PILSEN or BEER NA BEER product competing with SMC’s SAN MIGUEL PALE PILSEN in the local beer market.
The case, San Miguel Corporation vs. Asia Brewery Inc., was filed as Civil Case No. 56390 in the Regional Trial Court (RTC) Branch 166, Pasig, Metro Manila.
On August 27, 1990, the RTC, presided over by Judge Jesus O. Bersamira, dismissed SMC’s complaint, ruling that ABI had not committed trademark infringement or unfair competition.
Dissatisfied with the decision, SMC appealed to the Court of Appeals (CA-G.R. CV No. 28104).
On September 30, 1991, the Court of Appeals reversed the trial court’s decision, finding ABI guilty of trademark infringement and unfair competition.
The CA ordered ABI to cease using the infringing mark, recall its products, pay damages, and cover attorney’s fees.
ABI then appealed to the Supreme Court via a petition for certiorari under Rule 45 of the Rules of Court.
Issue:
Did ABI infringe SMC’s trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt Design?
Did ABI commit unfair competition against SMC
Ruling:
The Supreme Court ruled that ABI did not infringe SMC’s trademark.
The Supreme Court ruled that ABI did not commit unfair competition against SMC.
Ratio:
The Supreme Court emphasized the “test of dominancy” in determining trademark infringement, which focuses on the dominant features of the trademarks rather than minor differences.
The Court found that the dominant feature of SMC’s trademark is the name “SAN MIGUEL PALE PILSEN,” while ABI’s trademark prominently features the name “BEER PALE PILSEN.”
The Court noted that the words “pale pilsen” are generic and descriptive, referring to a type of beer, and cannot be exclusively appropriated by SMC.
The Court highlighted several dissimilarities between the two products, including differences in bottle shape, label design, and the names of the manufacturers prominently displayed on the bottles.
The Court concluded that there was no likelihood of confusion between the two products.
Regarding unfair competition, the Court stated that unfair competition involves deception or conduct contrary to good faith, aimed at passing off one’s goods as those of another.
The Court found no evidence that ABI intended to deceive consumers or pass off its product as SMC’s.
The Court noted that the use of amber-colored steinie bottles and white labels by both companies did not constitute unfair competition, as these features are functional and commonly used in the industry.
The Court emphasized that consumers typically order beer by brand, reducing the likelihood of confusion.
The Court reinstated the trial court’s decision, dismissing SMC’s complaint and ruling in favor of ABI
Facts:
The case involves a dispute between two real estate companies: Shang Properties Realty Corporation (formerly The Shang Grand Tower Corporation) and Shang Properties, Inc. (formerly EDSA Properties Holdings, Inc.) (petitioners) and St. Francis Development Corporation (respondent).
The respondent, a domestic corporation, developed the St. Francis Square Commercial Center in Ortigas Center, Mandaluyong City, Metro Manila, in 1992.
The respondent filed complaints against the petitioners before the Intellectual Property Office-Bureau of Legal Affairs (IPO-BLA) for unfair competition, false or fraudulent declaration, and damages due to the petitioners’ use and application for registration of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE.”
The IPO-BLA ruled partly in favor of the respondent, finding the petitioners guilty of unfair competition for using “THE ST. FRANCIS TOWERS” but not for “THE ST. FRANCIS SHANGRI-LA PLACE.”
The IPO Director-General affirmed the BLA’s decision but reversed the finding of unfair competition for “THE ST. FRANCIS TOWERS.”
The Court of Appeals (CA) later found the petitioners guilty of unfair competition for both marks and ordered them to cease using “ST. FRANCIS” and to pay a fine.
The petitioners elevated the case to the Supreme Court.
Issue:
Are the petitioners guilty of unfair competition in using the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE”?
Ruling:
The Supreme Court ruled in favor of the petitioners, reversing and setting aside the CA’s decision.
The Court reinstated the IPO Director-General’s decision, which found no unfair competition in the petitioners’ use of the marks.
Ratio:
The Supreme Court based its decision on Section 168 of Republic Act No. 8293, the Intellectual Property Code of the Philippines, which outlines the rules on unfair competition.
For unfair competition to be established, there must be an element of fraud or intent to deceive.
The mark “ST. FRANCIS” is geographically descriptive, referring to St. Francis Avenue and St. Francis Street in Ortigas Center, and thus cannot be exclusively appropriated unless it has acquired secondary meaning.
The respondent failed to prove that the mark had acquired secondary meaning, as its use was confined to a specific locality and did not result in a nationwide association with its real estate projects.
The petitioners’ use of the marks did not involve any deceptive practices or false statements that would mislead the public into believing that their projects were associated with the respondent.
The element of fraud necessary for unfair competition was not present.
The petitioners’ use of the marks was intended to identify their projects’ geographical location rather than to deceive the public
