Intellectual Property Code

Patent

Phillips Seafood Philippines Corp. v. Tuna Processors, Inc., G.R. No.

AT A GLANCE:

The importance of patents as a tool for national development and economic advancement cannot
be overemphasized. They ensure the flow of knowledge and information by encouraging inventors
to disclose their discoveries to the public. In exchange, inventors are given market exclusivity or the
right to exclude others from making, using, offering for sale, selling, or importing a patented product
or product obtained from a patented process. However, like any other intellectual property right, the
exercise of this right is not without limitations. The extent of protection granted to patent holders is
limited to the claims of their patent.

Doctrine:

The burden of proving patent infringement rests on the plaintiff. But for process patents, the IP
Code creates a presumption that an identical product was obtained from the patented process if
(a) the product is new or (b) there is a substantial likelihood that the identical product was made by
the process, and the patentee was unable, despite reasonable efforts, to determine the process
actually used. Therefore, the burden of proving that the process to obtain the identical product is
different from the patented process rests on the defendant.

Facts of the Case:

Phillips, a local seafood processing company, is accused by Tuna Processors, Inc. (TPI), a foreign
corporation, of infringing on a patent for a method of curing fish and meat. TPI is the successor-in-
interest of Kanemitsu Yamaoka (Yamaoka).

Yamaoka stated in his Complaint that he is one of the patentees of Philippine Patent No. I-3113811
entitled “Method for Curing Fish and Meat by Extra Low Temperature Smoking” (Patent I-31138)12

The patent, held by Yamaoka, covers a process involving exposing tuna meat to cooled smoke for
preservation. Yamaoka alleges that Phillips hired a former employee of a company using the
patented process to build smoke machines for them, enabling Phillips to use the patented method.
Phillips denies infringement, claiming their process differs as it doesn’t use a cooling unit. They also
argue the patent is invalid due to lack of inventive step.

Issuance of TRO and WPI

Following a summary hearing on the application for a Temporary Restraining Order (TRO) and/or
Preliminary Injunction (PI), Yamaoka presented his first witness, Lacap, who testified about Phillips’
process, including the existence of a cooling unit. However, a subsequent ocular inspection by the
Intellectual Property Office’s Bureau of Legal Affairs (BLA) did not find evidence of this cooling unit.
Despite this, the BLA gave weight to Lacap’s testimony and issued a TRO against Phillips. Phillips’
motion for reconsideration was denied, with the BLA finding that Phillips’ process achieved the
same function and result as the patented method. A writ of preliminary injunction was later issued,
requiring Phillips to stop using the patented process on its tuna products for 90 days.
BLA Decision

The BLA dismissed Yamaoka’s complaint for patent infringement on October 30, 2006, stating that
Phillips’ process does not align with the specifications of Patent I-31138. It concluded there was no
literal infringement as Phillips’ process lacked key elements outlined in the patent. Furthermore, it
determined there was no infringement under the doctrine of equivalents since Phillips’ process did
not meet the function-means-and-result criteria, failing to perform substantially the same function
or operate in a similar manner as the patented method. Therefore, the BLA found that the two
processes could not achieve substantially the same result.

Appeal with ODG

Yamaoka appealed to the Office of the Director General (ODG), asserting that Phillips’ process
directly aligned with the claims of his patent and that the combination of steps in his patent claims
was equivalent to Phillips’ process. However, instead of forming a panel of experts, the ODG sought
the expertise of Professor Teresita P. Acevedo from the University of the Philippines. In her report,
Prof. Acevedo concluded that there were significant differences between Phillips’ process and
Patent I-31138 in terms of the curing process for the meat, including variations in filtration process,
smoke temperature, and introduction method. Consequently, she determined that the end
products of the two processes were distinct. Despite Yamaoka’s death, TPI was substituted in the
proceedings.

ODG Decision

On September 12, 2011, the ODG dismissed Yamaoka’s appeal. The ODG found no cogent reason
to reverse and set aside the BLA’s Decision dismissing Yamaoka’s complaint for patent
infringement. The ODG summarized the parties’ processes as follows:
Yamaoka’s Process/Claim

Philips’ Process

1. Burning a smoking material at 250°C to 400°C;

2. Passing the produced smoke through a filter to remove mainly tar therefrom;

3. Cooling the smoke passed through the filter in a cooling unit between 0° and 5°C; and

4. Smoking the tuna meat at extra-low temperatures by exposure to the smoke cooled between 0°
and 5°C.

1. Burning sawdust at 250° to 400°C;

2. Passing the produced smoke through a series of filters to remove tar, odor[,] and other impurities;

3. Storing the filtered smoke in a plastic bladder (canvass);

4. Transporting the plastic bladder to production area where the filtered smoke is transferred
through a compressor and injected to the raw tuna meat; and placing of the injected tuna into a
refrigeration unit with a temperature setting of -3°C.

TPI elevated the case to the CA through a Petition for Review on Certiorari. TPI maintained that
Phillips infringed its patent both literally and under the doctrine of equivalents.

Issue:

Whether or not Phillips Seafood Philippines Corporation (Phillips) is responsible for violating
Philippine Patent No. I-31138.

Ruling of the Court:

Phillips Seafood Philippines Corporation is not responsible for violating Philippine Patent No. I-
31138.
The burden of proving patent infringement rests on the plaintiff. But for process patents, the IP
Code creates a presumption that an identical product was obtained from the patented process if
(a) the product is new or (b) there is a substantial likelihood that the identical product was made by
the process, and the patentee was unable, despite reasonable efforts, to determine the process
actually used. Therefore, the burden of proving that the process to obtain the identical product is
different from the patented process rests on the defendant. Such is not the case here.

For one, smoked tuna fish is not a new product. For another, there is no substantial likelihood that
Phillips’ smoked tuna fish was made using the patented process because the use of filtered smoke
cooled to between 0° and 5°C is not the only way to produce smoked tuna fish. Conventional
smoking can be done in three temperature zones not covered by Patent I-31138. Ergo, the burden of
proof rests on TPI and its predecessors-in-interest.

Finally, an examination of Phillips’ process vis-á-vis Patent I-31138’s elements would show that the
all elements test was not satisfied. The equivalents of all the elements in Patent I-31138 are not
present in Phillips process. As mentioned, the four elements are: (a) burning of the smoking
material at 250° to 400 °C; (b) filtering of the produced smoke to remove mainly tar; (c) cooling of
the filtered smoke in a cooling unit to a temperature between 0° and 5°C while retaining ingredients
exerting highly preservative and sterilizing effects; and (d) smoking of tuna meat by exposing it to
the filtered smoke cooled to between 0° and 5°C. Unquestionably, the first two steps in Phillips’
process and the two elements in Claim 1 or Patent I-31138 are identical. As regards the last two
elements, TPI’s evidence is insufficient to establish that the eventual cooling of the ambient
temperature filtered smoke retained the ingredients which exert the same highly preservative and
sterilizing effects. Similarly, there is no evidence proving that the ambient temperature filtered
smoke cures the tuna meat in the same way as when the tuna meat is exposed to a filtered smoke
already cooled to between 0° and 5°C. Thus, the last two elements of Patent I-31138 are not
equivalent to the simultaneous cooling of the ambient temperature filtered smoke and tuna meat.
In all, TPI and its predecessors-in-interest failed to discharge their burden of proving that Phillips
appropriated the innovative concept of Patent I-31138. The evidence on record is insufficient to
establish that Phillips’ process cures the tuna meat in substantially the same way as Patent I-
31138.

Trademarks

ZUNECA PHARMACEUTICAL, AKRAM ARAIN AND/OR VENUS ARAIN, M.D., AND STYLE OF ZUNECA
PHARMACEUTICAL vs. NATRAPHARM, INC.

G.R. No. 211850

(November 06, 2020)

Facts:

Petitioner Zuneca Pharmaceutical has been engaged in the importation, marketing, and sale of
various kinds of medicines and drugs in the Philippines since 1999. Among the products it has been
selling is a drug called carbamazepine under the brand name "ZYNAPS", which is an anti-
convulsant used to control all types of seizure disorders of varied causes like epilepsy. Natrapharm,
on the other hand, is a domestic corporation engaged in the business of manufacturing, marketing,
and distribution of pharmaceutical products for human relief. One of the products being
manufactured and sold by Natrapharm is citicoline under the trademark "ZYNAPSE", which is
indicated for the treatment of cerebrovascular disease or stroke. The trademark "ZYNAPSE" was
registered with the Intellectual Property Office of the Philippines (IPO) on September 24, 2007 and
is covered by Certificate of Trademark Registration No. 4-2007-005596. Natrapham filed with the
RTC a Complaint against Zuneca for Injunction, Trademark Infringement, Damages and
Destruction with Prayer for TRO and/or Preliminary Injunction, alleging that Zuneca' s "ZYNAPS" is
confusingly similar to its registered trademark "ZYNAPSE" and the resulting likelihood of confusion
is dangerous because the marks cover medical drugs intended for different types of illnesses.

Zuneca claimed that it has been selling carbamazepine under the mark "ZYNAPS" since 2004 after
securing a Certificate of Product Registration on April 15, 2003 from the Bureau of Food and Drugs

The RTC ruled that the first filer in good faith defeats a first user in good faith who did not file any
application for registration. Hence, Natrapharm, as the first registrant, had trademark rights over
"ZYNAPSE" and it may prevent others, including Zuneca, from registering an identical or confusingly
similar mark.

CA affirmed RTC’s ruling. Hence, Zuneca filed the instant Petition.

Issue:

Whether or not NATRAPHARM has the right to prevent ZUNECA from using/registering the
trademark "ZYNAPS".

Ruling:

Under the IP Code, ownership of a mark is acquired through registration. While it is the fact of
registration which confers ownership of the mark and enables the owner thereof to exercise the
rights expressed in IP Code, the first-to-file rule nevertheless prioritizes the first filer of the
trademark application and operates to prevent any subsequent applicants from registering marks
under the IP Code.

There is a legislative intent to abandon the rule that ownership of a mark is acquired through use.

Natrapharm is the first-to-file registrant of "ZYNAPSE". Zuneca, on the other hand, is a prior user in
good faith of a confusingly similar mark, "ZYNAPS". Considering that a petition for review on
certiorari under Rule 45 should only raise questions of law, it is improper to put into issue at this
juncture the existence of bad faith in Natrapharm's registration.

The Supreme Court affirmed the factual findings of the lower courts. Zuneca failed to show that the
registration was made fraudulently or in bad faith. Since Natrapharm was not shown to have been
in bad faith, it is thus considered to have acquired all the rights of a trademark owner under the IP
Code upon the registration of the "ZYNAPSE" mark.

In any event, while Natrapharm is the owner of the "ZYNAPSE" mark, this does not, however,
automatically mean that its complaint against Zuneca for injunction, trademark infringement,
damages, and destruction with prayer for TRO and/or preliminary injunction should be granted. The
application of Section 159.1 of the IP Code in the case at bar results in Zuneca's exemption from
liability for trademark infringement.

Section 159.1 of the IP Code clearly contemplates that a prior user in good faith may continue to
use its mark even after the registration of the mark by the first-to-file registrant in good faith, subject
to the condition that any transfer or assigmnent of the mark by the prior user in good faith should be
made together with the enterprise or business or with that part of his enterprise or business in
which the mark is used. While there is no issue as to the likelihood of confusion between
"ZYNAPSE" and "ZYNAPS', the Court believes that the evil of medical switching will likely not arise,
considering that the law requires the generic names of drugs to be written in prescriptions.

To further reduce therefore, if not totally eliminate, the likelihood of switching in this case, the Court
hereby orders the parties to prominently state on the packaging of their respective products, in
plain language understandable by people with no medical background or training, the medical
conditions that their respective drugs are supposed to treat or alleviate and a warning indicating
what "ZYNAPS" is not supposed to treat and what "ZYNAPSE" is not supposed to treat, given the
likelihood of confusion between the two.

The Court declared –

1. Petitioners Zuneca et al as the prior users in good faith of the "ZYNAPS" mark and
accordingly protected under Section 159.1 of the IP Code.

2. Natrapharm as the lawful registrant of the "ZYNAPSE" mark under the IP Code.

3. Zuneca and Natrapharm are ordered indicate on their respective packaging, in plain
language understandable by people with no medical background or training, the medical
conditions that their respective drugs are supposed to treat or alleviate and a warning indicating
what "ZYNAPS" is not supposed to treat and what "ZYNAPSE" is not supposed to treat.

anuel T. Zulueta v. Cyma Greek Taverna Co. (G.R. No. 205699, January 23, 2023)

Zulueta claimed to have conceptualized the Greek restaurant “Cyma.” To set up the first branch of
the restaurant in Boracay, Zulueta supposedly invited Raoul Roberto P. Goco (Raoul Goco) to help
put together the menu. The Cyma Boracay restaurant was launched at D’Mall, Boracay, on
December 28, 2005. To formalize the arrangements, Zulueta formed a partnership with Raoul Goco
called “Cyma Greek Taverna Company” (Cyma Partnership) – herein respondent – which was
registered as a partnership with the Securities and Exchange Commission (SEC) in 2006. As Cyma
Boracay became successful, Zulueta and Raoul Goco decided to open a branch in Edsa Shangri-La
Plaza Mall. To manage this branch, “Cyma Greek Taverna Shangri-La Corporation” was formed and
was duly registered with the SEC.

On September 25, 2006, Zulueta filed, in his own name, a trademark application for the mark “”,
claiming that he had done so as he was certain that the mark was solely his own creation. On
March 13, 2007, the Cyma Partnership filed its own trademark application for the mark “CYMA
GREEK TAVERNA AND LOGO” or “”.

When Zulueta’s trademark application was published for opposition. It was opposed by Cyma
Partnership claiming that it had been copied from Cyma Partnership’s trademark which Raoul Goco
had created while on vacation in Greece.

In finding bad faith on the part of Zulueta, the Supreme Court ruled that although it was not
categorically stated, the IPOPHL’s factual findings show that Zulueta’s trademark application was
made in bad faith. As a partner, Zulueta was without a doubt aware of the prior use of the trademark
by the partnership, and that it had been Raoul Goco who conceptualized the mark for the
partnership while on vacation in Greece. Even if the court were to believe Zulueta’s version of story
– i.e., that it had been him and not Goco who had conceived the Cyma mark – it is clear from
Zulueta’s own narration that the mark had been conceived for the exclusive use of the partnership
and its sister company, Cyma Greek Taverna Shangri-La Corporation. As opined by the court a quo,
only Cyma Partnership had used the Cyma trademark in its commercial dealings, and Zulueta had
never used the same in his individual capacity. Despite the fact that Zulueta was the first to file a
trademark application, his knowledge of the prior use by Cyma Partnership of the trademark meant
that Zulueta’s trademark application was filed in bad faith.

Non-Registrable Marks

Kolin Electronics Co., Inc. vs. Kolin Philippines International., Inc.

gelcaspillo Law January 13, 2023 7 Minutes

G.R. No. 228165 | February 09, 2021

FACTS:

Two antecedent facts are involved in the present case: the KECI Ownership case and the Taiwan
Kolin case.

1. The KECI Ownership Case

In 1993, Kolin Electronics Industrial Supply (KEIS) owned by Miguel Tan filed an application for
Trademark registration for KOLIN, covering products under Class 9: automatic voltage regulator,
converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer and PA
amplifier AC-DC.

In 1995, Tan assigned in favor of Kolin Electronics Co., Inc. (KECI) all the assets and merchandise
stocks of KEIS, including its pending application for registration of the KOLIN mark.

In 1996, Taiwan Kolin Co., Ltd. (TKC) filed an application for Trademark registration for KOLIN
initially covering color television, refrigerator, window-type air conditioner, split-type air conditioner,
electric fan, and water dispenser.

TKC filed a verified Notice of Opposition in 1998 against KECI’s trademark application claiming that
it was the owner of Taiwan registrations for KOLIN and KOLIN SOLID series and that it has a pending
application for KOLIN. It would cause TKC grave and irreparable damage to its business reputation
and goodwill because KOLIN is identical, if not confusingly similar, to TKC’s marks. If granted, the
application would likely mislead the public as to the nature, quality, and characteristics of its goods
or products.

Ruling of the IPO-BLA

denied TKC’s opposition and gave due course to KECI’s trademark application for KOLIN. It ruled
that KECI proved its earlier adoption and use of KOLIN in 1989 which is ahead of TKC’s use in the
Philippines in 1996.

Ruling of the IPO Director General

sustained the ruling of IPO-BLA. TKC appealed the decision, but was affirmed by the IPO-DG. The
IPO eventually issued a Certificate of Registration for KOLIN in favor of KECI.

Ruling of the Court of Appeals

DISMISSED TKC’s petition for lack of merit and affirmed the IPO-DG’s decision.
The Trademark Law was applicable since it was still in effect at the time of the filing and during the
pendency of the trademark applications of both parties. There must be actual use thereof in
commerce to acquire ownership of a mark. The CA found that KEIS, the predecessor-in-interest of
KECI, had been using the KOLIN mark in the Philippines since 1989, prior to the filing of the
trademark application for KOLIN in 1993. While TKC claimed prior use of the mark in foreign
jurisdictions as early as 1986, the CA agreed with the IPO-BLA and IPO-DG that the concept of
actual use under the Trademark Law refers to use in the Philippines, and not abroad.

2. The Taiwan Kolin Case

To recall, the TKC filed an application for Trademark registration for KOLIN in 1996 initially covering
color television, refrigerator, window-type air conditioner, split-type air conditioner, electric fan, and
water dispenser. In 1999, the trademark examiner-­in-charge stated in Paper No. 5 that the goods
enumerated fall under Classes 9, 11, and 21 of the Nice Classification (NCL), thus, TKC was
required to elect one class of goods for its application for KOLIN. However, the application was
considered abandoned.

TKC filed a petition to revive the application and elected Class 9 for its application. Further, TKC
requested the inclusion of goods, namely cassette recorder, VCD, whoofer, amplifiers, camcorders
and other audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets,
videophones, facsimile machines, teleprinters, cellular phones, automatic goods vending
machines and other electronic equipment belonging to class 9. In 2001, the Bureau of Trademarks
granted TKC’s petition. Consequently, it was published in the IPO Electronic Gazette for
Trademarks. However, television sets was not included in the enumeration of goods published.

KECI filed an opposition in 2006 against TKC’s application stating that it is the registered owner of
the KOLIN mark, which it claimed was confusingly similar to TKC’s application for KOLIN.

TKC claimed that its Trademark Application includes television sets and that this trademark
application later became Trademark Application filed in 2002 when it was re-filed/revived after the
delayed submissions caused by the former handling lawyer.

Ruling of the IPO-BLA

SUSTAINED KECI’s opposition and rejected TKC’s application for KOLIN.

Ruling of the IPO Director General

GRANTED TKC’s appeal allowing the registration of TKC’s mark with limitation for the goods
television and DVD player.

TKC filed an Appeal Memorandum with the IPO­ DG, claiming that the IPO-BLA erred in denying its
application without any allowance for use limitation or restriction on televisions and DVD players.
Noting that TKC only wanted its KOLIN application to be given due course subject to the use
limitation or restriction for television and DVD player.

Ruling of the Court of Appeals

REVERSED and SET ASIDE IPO-DG’s decision and REINSTATED IPO-BLA decision.

It ruled in favor of KECI based on the following grounds:

(a) the KOLIN mark sought to be registered by TKC is confusingly similar to KECI’s KOLIN registration
since the only difference is KECI’S mark is italicized and colored black while that of TKC is in
pantone red color;

(b) there are no other designs, special shape or easily identifiable earmarks that would differentiate
the products of both competing companies;

(c) the intertwined use of television sets with amplifier, booster and voltage regulator bolstered the
fact that televisions can be considered as within the normal expansion of KECI, and is thereby
deemed covered by its trademark as explicitly protected under Section 138 of the IP Code; and

(d) the denial of TKC’s application would prevent the likelihood of confusion resulting from the use
of an identical mark to closely related goods.59 TKC moved to reconsider the decision, but this was
denied by the CA.

Ruling of the Supreme Court

REVERSED and SET ASIDE CA’s decision and reinstated IPO-DG’s decision.

The KECI’s trademark registration not only covers unrelated goods but is also incapable of
deceiving the ordinary buyer in relation to TKC’s application. The list of products under Class 9 can
be sub-categorized into five different classifications Confusion is unlikely because the products
involved are more expensive than ordinary consumable household items. Consumers will be more
careful in purchasing these products.

3. Present case

In 2006, Kolin Philippines International, Inc. (KPII), an affiliate of TKC, filed a Trademark Application
for the kolin mark under Class 9 covering televisions and DVD players. KECI filed an opposition
against KPII’s Trademark Application due to its earlier registration of the KOLIN mark it would cause
confusion among consumers.

In its defense, KPII claimed that its application for kolin cannot be denied based on the ruling in the
KECI ownership case because it was not a party thereto and it is not a res judicata. It asserted that
KECI’s trademark registration is only limited to goods specified in KECI’s certificate of registration
and those related therein. It insisted that televisions and DVD players are not related to the goods
covered by KECI’ registration.

Ruling of the IPO–BLA

SUSTAINED KECI’s opposition.

Buyers would be confused as to the origin of the products being. KECI received several customer e-
mails complaining against or seeking information about the products of KPII. Further, the KPII is an
instrumentality of TKC.

Ruling of the IPO Director General

DISMISSED KPII’s appeal.

It adopted the decision of the CA that TKC’s television sets and DVD players are related to KECI’s
goods covered by the latter’s certificate of registration for KOLIN.

Ruling of the Court of Appeals

GRANTED KPII’s appeal.

KPII may register its mark for television sets and DVD players and the doctrine of res judicata
forbids it from arriving at a contrary conclusion.

ISSUE:

Whether or not KPII should be allowed to register its kolin mark.

RULING:

NO. KPII is not allowed to register the kolin mark for televisions and DVD players.

I. Res Judicata does not apply

All the elements of res judicata are not present. The subject matter in this case and the Taiwan Kolin
case are different. The cause of action in the Taiwan Kolin case is also different from the cause of
action in the case at bar. Thus, there is no bar by prior judgment in this case.

Neither can res judicata in the concept of conclusiveness of judgment operate to prevent the Court
from determining the registrability of KPII’s trademark application. The issue involving KPII’s use of
another figurative or stylized version of kolin was not ruled in Taiwan Kolin case, thus, the principle
of conclusiveness of judgment cannot apply.

II. KPII’S TRADEMARK APPLICATION IS NOT REGISTRABLE BECAUSE IT WILL CAUSE DAMAGE TO
KECI
There is resemblance between KECI’s KOLIN and KPII’s kolin marks. It would cause likelihood of
confusion and KECI’s rights would be damaged. The goods covered are related, there is evidence of
actual confusion between the two marks, and the goods covered fall within the normal potential
expansion of business. The sophistication of buyers is not enough to eliminate confusion.
Moreover, KPII applied for kolin in bad faith.

Among the two tests to determine likelihood of confusion only the Dominancy Test has been
incorporated in the Intellectual Property Code. The legislative intent was explicit in adopting the
Dominancy Test and abandoning Holistic Test. Applying the Dominancy Test in the present case,
the Supreme Court ruled that KPII’s mark resembles KECI’s mark because the word KOLIN is the
prevalent feature of both marks. Phonetically or aurally, the marks are exactly the same.

Minor differences between the mark of KPII’s and KECI’s mark should be disregarded. The fact that
KPII’s application possesses special characteristics not present in KECI’s mark makes no difference
in terms of appearance, sound, connotation, or overall impression because the KOLIN word itself is
the subject of KECI’s registration.

The goods covered by KPII and KECI are related and it increases the likelihood of confusion of
business. Consumers might think that the goods come from the same source.

The existence of likelihood of confusion is already considered damage which is sufficient to sustain
the opposition and rejection of KPII’s trademark application. If the registration will be granted, KPII
would acquire exclusive rights over the stylized version of KOLIN for a range of goods and services
falling within the normal potential expansion of KPII’s business. This will curtail KECI’s right to freely
use and enforce the KOLIN mark, or any stylized version thereof. Based on Section 122 vis-a-vis
Section 236 of the Intellectual Property Code, the Supreme Court cannot give due course to KPII’s
trademark application for kolin.

DISPOSITION:

WHEREFORE, premises considered, the instant Petition is GRANTED. The assailed Decision dated
April 29, 2016 and Resolution dated November 4, 2016 of the Court of Appeals in CA-G.R. SP No.
131917 are REVERSED and SET ASIDE. Accordingly, the Decision of the Office of the Director
General of the Intellectual Property Office in IPC No. 14-2007-00167 is REINSTATED and AFFIRMED.

Consequently, the Trademark Application Serial No. 4-2006-010021 for kolin filed by respondent
Kolin Philippines International, Inc. under Class 9 for television and DVD players is REJECTED.
PROSEL PHARMACEUTICALS & DISTRIBUTORS, INC., VS. TYNOR DRUG HOUSE, INC.

CARANDANG, J.

FACTS

This case involves a complaint for trademark infringement filed by Tynor Drug House, Inc. against
Prosel Pharmaceuticals. Both parties are pharmaceutical companies.

Tynor Drug House, Inc. (Tynor) secured a trademark registration on its mark CHERIFER on July 8,
2004. On the other hand, Prosel Pharmaceuticals (Prosel) had been using the mark CEEGEEFER,
which is an improved version of its previous product, Selvon-C. Both products are over-the-counter
multivitamins promoting growth for children.

Prosel received tynor’s demand letter requiring the former to: (1) stop distributing CEEGEEFER
products; (2) recall CEEGEEFER products that were already distributed; and (3) execute an
undertaking to stop using or imitating tynor’s trademark and design. The demand letter claimed that
CEEGEEFER was confusingly similar to tynor’s multivitamin product, CHERIFER.

Prosel differentiates the two products. According to Prosel, the products are not used in the sale of
the same goods: CEEGEEFER is a drug with vitamin C and CGF as its components while CHERIFER
is only a multivitamin without a vitamin C component.

Prosel insists that CEEGEEFER and CHERIFER are still not confusingly similar because the logos
are different. While both logos show a boy wearing a basketball jersey and cap doing a slam dunk,
Prosel enumerates the variances between the two logos, viz.:

Features of logo CEEGEEFER CHERIFER

Boy's built Fit Heavy

Boy's face Chiseled with a genuine smile Round with a fake smile

Boy's action Reverse slam dunk Ordinary slam dunk with feet curled up together

Boy's baseball cap Strapback cap with hook & loop fastener in reverse Fitted cap in reverse
Boy's hair Long with bangs reaching the nose Cannot be discerned/hidden in the baseball
cap

Boy's socks Low-cut and loosely fitted Mid-cut and fitted

Slogan "Healthy & Mighty" referring to the effect of taking the product "Height is Might" also
referring to the effect of taking the product

ISSUE

Whether Prosel Pharmaceuticals is guilty of trademark infringement.

RULING: YES.

The determining point in trademark infringement is a likelihood of confusion. Section 155 of the
Intellectual Property Code provides:

Section 155. Remedies; Infringement. - Any person who shall, without the consent of the owner of
the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary
to carry out the sale of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon
or in connection with the sale, offering for sale, distribution, or advertising of goods or services on
or in connection with which such use is likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)
In the case of ABS-CBN Publishing, Inc. v. Director of Bureau of Trademarks, This Court
acknowledged how "in committing the infringing act, the infringer merely introduces negligible
changes in an already registered mark, and then banks on these slight differences to state that
there was no identity or confusing similarity, which would result in no infringement." Given the
respective packages of CHERIFER and CEEGEEFER shown above, it is indubitable that the two
products are strikingly similar.

Both products are over-the-counter multivitamins that do not require a medical prescription. As
such, CEEGEEFER and CHERIFER may be easily obtained without the advice of another person.
Therefore, the parties' target market may be confused, mistaken, or deceived into thinking that
CEEGEEFER is the same as CHERIFER. Note, too, that different drug stores even displayed and sold
CEEGEEFER and CHERIFER products beside each other.

Given the phonetic and visual similarities between the two products (i.e., how the product names
are spelled, the sound of both product names, and the colors and shapes combination of the
products' respective packaging), it is obvious that Prosel attempted to pass CEEGEEFER as a
colorable imitation of CHERIFER.

Suyen Corporation v. Danjac LLC (G.R. No. 250800, July 6, 2021, published April 20, 2022).

Background. On February 16, 2010, Suyen Corporation, a Philippine conglomerate popularly known
for its clothing brand BENCH, filed an application for its trademark “Agent Bond” covering the goods
“hair refresher, hair gel, hair lotion, hair treatment, hair shampoo and hair conditioner.” Danjaq LLC,
a United States-based corporation opposed Suyen’s application for being confusingly similar to its
trademark “James Bond” and its associated “Bond” marks. Danjaq claimed that James Bond is a
fictional character, also known as Agent 007, who portrays himself as a British secret agent or spy,
and has been the star of 22 films since 1962 and has gained international popularity due to the
success of the James Bond films, and as such has prior use of the Agent Bond mark. Danjaq further
alleged that Suyen’s Agent Bond is an attempt to ride on the popularity of the James Bond marks.
The James Bond mark as registered in the Philippines covered the goods in Class 9, and the
services “education and entertainment” in Class 41. Danjaq argued that the use of the mark “Agent
Bond” causes confusion as to the origin making it appear that Danjaq approved Suyen’s use of the
mark “Agent Bond” and because “James Bond” is a well-known mark, any product bearing said
mark or other related marks is highly marketable.

Suyen’s defenses. Suyen operated beauty salons named “FIX Bench Salon”, and before that it
manufactured, advertised, distributed and sold hair products and other hair styling products under
the “FIX” trademark. One of the Agent Bond styling gums was placed on packaging materials with
the FIX trademark and has been marketed, advertised, distributed and sold since March 8, 2005.
Suyen contended that “Agent Bond” is only “a creative but non-descriptive way of making reference
to the function of the product – that the word ‘agent’ is used to convey that the product is a device,
while the word ‘bond’ refers to the product’s ingredients to hold or bind the hairstyle. It also argued
using the dominancy test that while both marks shared the common word “Bond” the terms
“Agent” in its mark, and “James” in Danjaq’s mark were equally prominent and there would be no
mistaking one for the other. Further, showing several trademarks with the word “Bond”, Suyen
claimed that the word “Bond” has been diluted, and Danjaq has no exclusive right to the word
“Bond”, and therefore, cannot over-extend the protection of its “James Bond” mark to include
“Agent Bond”.

IPOPHL’s Ruling. Since both marks contained the word “Bond”, the Bureau of Legal Affairs, the
adjudicating arm of the IPOPHL, made a closer scrutiny of the distinctive words “Agent” and
“James”. The Bureau of Legal Affairs concluded that since the word “Agent” was placed before
“Bond”, it gave the impression that it was connected to “James Bond” who is referred to as “Agent
007” or “Agent Bond”. The bureau also opined that there could be confusion of business if the
trademark application for “Agent Bond” were to be granted. There is confusion of business because
Agent Bond may be assumed to originate from Danjaq, causing the public to believe that Suyen’s
hair products are connected to Danjaq. The bureau then ruled that the mark Agent Bond is not
registrable for being confusingly similar to the mark James Bond. Dissatisfied, Suyen appealed to
the Office of the Director General (ODG) which sustained the Bureau of Legal Affairs decision.
Suyen then appealed to the Court of Appeals.

Court of Appeals’ Ruling. The Court of Appeals agreed with Danjaq that Agent Bond does not
describe a product that binds the hairstyle but refers to the fame of the James Bond franchise, and
consequently declared the mark James Bond on the basis of the following criteria under Rule 102 of
the IP Code: (a) extent and exclusivity of the worldwide registration of the mark James Bond; (b)
length and extent of use of James Bond worldwide; (c) the degree of the inherent or acquired
distinction of the mark; (d) the extent and promotion of the mark; and (e) the commercial value
attributed to the mark in the word.” Suyen appealed the Court of Appeals’ decision to the Supreme
Court.

Supreme Court’s Ruling. Based on the evidence, the Supreme Court held that there is confusing
similarity between the competing mark, that the use of Agent Bond would indicate a connection
with James Bond, and the use of Agent Bond will likely damage Danjaq’s interest over James Bond.
The Supreme Court upheld the Court of Appeals’ declaration of James Bond as a well-known mark
on the basis of substantial evidence on record, particularly, the certificates of registration of the
James Bond and other related “Bond” marks in at least 32 countries, the fame of the James Bond
movie franchise and Suyen’s own admission of the popularity of the fictional character James Bond.
On the issue of damages as relating to well-known marks, the Supreme Court, quoting the Levi
Strauss case, held that damages are present when there is trademark dilution. While Philippine
laws and jurisprudence have not distinguished the types of dilution, the Supreme Court referred to
American jurisprudence cited in the Levi Strauss case, and stated that dilution by blurring is present
in the instant case. Given all the above, the Supreme Court ruled that the mark Agent Bond is non-
registrable.

The Supreme Court found the occasion to say in this case that “the objects of a trademark are to
point out distinctly the origin or ownership of the articles to which it is affixed, to secure to him who
has been instrumental in bringing into market a superior article or merchandise the fruit of his
industry and skill, and to allow the original owner of the mark to expand his/her business without
the fear of a second user freely riding on the original owner’s goodwill.”

GINEBRA SAN MIGUEL, INC. vs. DIRECTOR OF THE BUREAU OF TRADEMARKS

et al.: A Landmark Case on Trademark Genericide and Distinctiveness in the Philippines”

Facts: The case revolves around the disputed trademark “GINEBRA” by Ginebra San

Miguel, Inc. (GSMI) against the Director of the Bureau of Trademarks and multiple petitions

involving Tanduay Distillers, Inc. (TDI). GSMI sought to register “GINEBRA” as a trademark

for its gin products, arguing that through continuous use since 1834, it had acquired

distinctiveness associated exclusively with GSMI. The case details a series of legal battles

on whether “GINEBRA” is a generic term for gin or a mark that had acquired secondary

meaning eligible for trademark protection.

The Bureau of Trademarks, IPO Director General, and the Court of Appeals (CA) rejected

GSMI’s application to register “GINEBRA,” ruling it as generic and therefore not

registrable. GSMI’s petitions for review and reconsideration were denied at multiple levels,

until the Supreme Court (SC) accepted the case, reinforcing its significance and the need

for a definitive ruling.

Parallel to this, GSMI launched complaints against TDI for unfair competition and

trademark infringement over the use of “GINEBRA” in TDI’s “GINEBRA KAPITAN” product.

Both the RTC and CA rulings in these related cases acknowledged the confusion created by

TDI’s use of “GINEBRA” and ultimately favored GSMI, highlighting the implicit

acknowledgment of GSMI’s prior and distinctive use of “GINEBRA.”

Issues:

1. Whether “GINEBRA” is a generic term incapable of trademark protection.

2. Whether “GINEBRA” has acquired a secondary meaning, making it distinctive and

eligible for trademark registration.

3. Whether TDI committed trademark infringement and unfair competition in using

“GINEBRA KAPITAN.”

Court’s Decision:

The SC notably overturned previous decisions by recognizing the acquired distinctiveness of

“GINEBRA” through GSMI’s extensive and continuous use, backed by survey evidence

showing the mark’s strong association with GSMI among the consuming public. The Court

applied the doctrine of secondary meaning and concluded that “GINEBRA,” while possibly

generic in origin, had indeed become distinctive of GSMI’s products. On the third issue, the

SC found TDI liable for trademark infringement and unfair competition due to the likelihood

G.R. No. 196372. August 09, 2022 (Case Brief / Digest)

© 2024 - [Link] | 2

of confusion between TDI’s “GINEBRA KAPITAN” and GSMI’s established “GINEBRA” mark.

Doctrine: This case reiterates the principle that a generic term can acquire protectable

distinctiveness through the doctrine of secondary meaning, where extensive and exclusive

use in commerce leads the consuming public to associate the term with a particular source.

Class Notes:

– Generic Terms: Terms that refer to the general category or class of products and are not

eligible for trademark protection due to their inability to distinguish the products of one

enterprise from those of another.

– Doctrine of Secondary Meaning: A legal doctrine that allows a descriptive or generic

term to be trademarked if it has acquired a unique meaning in the minds of the public that

identifies the products or services with a particular provider.

– Trademark Infringement: Occurs when a party uses a mark that is identical or

confusingly similar to a registered trademark owned by another party, in a manner that is

likely to cause confusion among consumers about the source of the products or services.

– Unfair Competition: Engaging in deceptive, misleading, or otherwise unethical behavior

that harms another business or consumer.

– Evidence in Trademark Cases: Importance of expert testimony and consumer surveys in

establishing trademark rights, distinctiveness, and likelihood of confusion.

Historical Background: The case underscores the complexities of trademark law in the

context of words that may be seen as generic in one language but have acquired brandspecific
meaning thro

W Land v. Starwood Hotels, G.R. 222366, December 4, 2017

FACTS: On December 2, 2005, Starwood filed before the IPO an application for registration of the
trademark "W". On February 26, 2007, Starwood's application was granted and thus, the "W" mark
was registered in its name. However, on April 20, 2006, W Land applied for the registration of its own
"W" mark which thereby prompted Starwood to oppose the same. In a Decision, the BLA ruled that
W Land's "W" mark is confusingly similar with Starwood's mark, which had an earlier filing date.

W Land filed a Petition for Cancellation of Starwood's mark for non-use under Section 151.1 of the
IP Code, claiming that Starwood has failed to use its mark in the Philippines because it has no hotel
or establishment in the Philippines rendering the services covered by its registration; and that
Starwood's "W" mark application and registration barred its own "'W" mark application and
registration for use on real estate.

W Land’s Argument: Starwood had failed to use its registered mark in the Philippines because it has
no hotel or establishment in the country.

Starwood Hotel’s Argument: It argued that it conducts hotel and leisure business both directly and
indirectly through subsidiaries and franchisees, and operates interactive websites for its W Hotels
to accommodate its potential clients worldwide.

ISSUE: WON Starwood has abandoned its use of the mark—NO

HELD: Under Section 152.3 of the IP Code, "the use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the mark is registered shall prevent its
cancellation or removal in respect of all other goods or services of the same class."

Thus, Starwood's use of the "W" mark for reservation services through its website constitutes use of
the mark which is already sufficient to protect its registration under the entire subject classification
from non-use cancellation. Starwood's "W" mark is prominently displayed in the website through
which consumers in the Philippines can instantaneously book and pay for their accommodations,
with immediate confirmation, in any of its W Hotels. This, notwithstanding the absence of a
Starwood hotel or establishment in the Philippines.

The facts and circumstances show that Starwood's use of its "W" mark through its interactive
website is intended to produce a discernable commercial effect or activity within the Philippines, or
at the very least, seeks to establish commercial interaction with local consumers. Accordingly,
Starwood's use of the "W" mark in its reservation services through its website constitutes use of the
mark sufficient to keep its registration in force.

Test : Dominancy and Holistic

KOLIN ELECTRONICS CO., INC., PETITIONER, VS. KOLIN PHILIPPINES INTERNATIONAL, INC.,
RESPONDENT.

FACTS:

The KECI Ownership Case

In 1993, Kolin Electronics Industrial Supply (KEIS) owned by Miguel Tan filed an application for
Trademark registration for KOLIN, covering products under Class 9: automatic voltage regulator,
converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer and PA
amplifier AC-DC.

In 1995, Tan assigned in favor of Kolin Electronics Co., Inc. (KECI) all the assets and merchandise
stocks of KEIS, including its pending application for registration of the KOLIN mark.

In 1996, Taiwan Kolin Co., Ltd. (TKC) filed an application for Trademark registration for KOLIN
initially covering color television, refrigerator, window-type air conditioner, split-type air conditioner,
electric fan, and water dispenser.

TKC filed a verified Notice of Opposition in 1998 against KECI’s trademark application claiming that
it was the owner of Taiwan registrations for KOLIN and KOLIN SOLID series and that it has a pending
application for KOLIN. It would cause TKC grave and irreparable damage to its business reputation
and goodwill because KOLIN is identical, if not confusingly similar, to TKC’s marks. If granted, the
application would likely mislead the public as to the nature, quality, and characteristics of its goods
or products.

Ruling of the IPO-BLA (Intellectual Property Office Bureau of Legal Affairs)

Denied TKC’s opposition and gave due course to KECI’s trademark application for KOLIN. It ruled
that KECI proved its earlier adoption and use of KOLIN in 1989 which is ahead of TKC’s use in the
Philippines in 1996.

Ruling of the IPO DG (Intellectual Property Office Director General)

Sustained the ruling of IPO-BLA. TKC appealed the decision, but was affirmed by the IPO-DG. The
IPO eventually issued a Certificate of Registration for KOLIN in favor of KECI.

Ruling of the Court of Appeals

DISMISSED TKC’s petition for lack of merit and affirmed the IPO-DG’s decision.

The Trademark Law was applicable since it was still in effect at the time of the filing and during the
pendency of the trademark applications of both parties. There must be actual use thereof in
commerce to acquire ownership of a mark. The CA found that KEIS, the predecessor-in-interest of
KECI, had been using the KOLIN mark in the Philippines since 1989, prior to the filing of the
trademark application for KOLIN in 1993. While TKC claimed prior use of the mark in foreign
jurisdictions as early as 1986, the CA agreed with the IPO-BLA and IPO-DG that the concept of
actual use under the Trademark Law refers to use in the Philippines, and not abroad.

The Taiwan Kolin Case

To recall, the TKC filed an application for Trademark registration for KOLIN in 1996 initially covering
color television, refrigerator, window-type air conditioner, split-type air conditioner, electric fan, and
water dispenser. In 1999, the trademark examiner-¬in-charge stated in Paper No. 5 that the goods
enumerated fall under Classes 9, 11, and 21 of the Nice Classification (NCL), thus, TKC was
required to elect one class of goods for its application for KOLIN. However, the application was
considered abandoned.

TKC filed a petition to revive the application and elected Class 9 for its application. Further, TKC
requested the inclusion of goods, namely cassette recorder, VCD, whoofer, amplifiers, camcorders
and other audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets,
videophones, facsimile machines, teleprinters, cellular phones, automatic goods vending
machines and other electronic equipment belonging to class 9. In 2001, the Bureau of Trademarks
granted TKC’s petition. Consequently, it was published in the IPO Electronic Gazette for
Trademarks. However, television sets was not included in the enumeration of goods published.

KECI filed an opposition in 2006 against TKC’s application stating that it is the registered owner of
the KOLIN mark, which it claimed was confusingly similar to TKC’s application for KOLIN.

TKC claimed that its Trademark Application includes television sets and that this trademark
application later became Trademark Application filed in 2002 when it was re-filed/revived after the
delayed submissions caused by the former handling lawyer.

Ruling of the IPO-BLA (Intellectual Property Office Bureau of Legal Affairs)

SUSTAINED KECI’s opposition and rejected TKC’s application for KOLIN.

Ruling of the IPO DG (Intellectual Property Office Director General)

GRANTED TKC’s appeal allowing the registration of TKC’s mark with limitation for the goods
television and DVD player.

TKC filed an Appeal Memorandum with the IPO¬ DG, claiming that the IPO-BLA erred in denying its
application without any allowance for use limitation or restriction on televisions and DVD players.
Noting that TKC only wanted its KOLIN application to be given due course subject to the use
limitation or restriction for television and DVD player.

Ruling of the Court of Appeals

REVERSED and SET ASIDE IPO-DG’s decision and REINSTATED IPO-BLA decision.

It ruled in favor of KECI based on the following grounds:

(a) The KOLIN mark sought to be registered by TKC is confusingly similar to KECI’s KOLIN
registration since the only difference is KECI’S mark is italicized and colored black while that of TKC
is in pantone red color;

(b) There are no other designs, special shape or easily identifiable earmarks that would differentiate
the products of both competing companies;

(c) The intertwined use of television sets with amplifier, booster and voltage regulator bolstered the
fact that televisions can be considered as within the normal expansion of KECI, and is thereby
deemed covered by its trademark as explicitly protected under Section 138 of the IP Code; and

(d) The denial of TKC’s application would prevent the likelihood of confusion resulting from the use
of an identical mark to closely related goods.59 TKC moved to reconsider the decision, but this was
denied by the CA.

Ruling of the Supreme Court

REVERSED and SET ASIDE CA’s decision and reinstated IPO-DG’s decision.

The KECI’s trademark registration not only covers unrelated goods but is also incapable of
deceiving the ordinary buyer in relation to TKC’s application. The list of products under Class 9 can
be sub-categorized into five different classifications Confusion is unlikely because the products
involved are more expensive than ordinary consumable household items. Consumers will be more
careful in purchasing these products.

Present case

In 2006, Kolin Philippines International, Inc. (KPII), an affiliate of TKC, filed a Trademark Application
for the kolin mark under Class 9 covering televisions and DVD players. KECI filed an opposition
against KPII’s Trademark Application due to its earlier registration of the KOLIN mark it would cause
confusion among consumers.

In its defense, KPII claimed that its application for kolin cannot be denied based on the ruling in the
KECI ownership case because it was not a party thereto and it is not a res judicata. It asserted that
KECI’s trademark registration is only limited to goods specified in KECI’s certificate of registration
and those related therein. It insisted that televisions and DVD players are not related to the goods
covered by KECI’ registration.

Ruling of the IPO–BLA

SUSTAINED KECI’s opposition.

Buyers would be confused as to the origin of the products being. KECI received several customer e-
mails complaining against or seeking information about the products of KPII. Further, the KPII is an
instrumentality of TKC.

Ruling of the IPO Director General

DISMISSED KPII’s appeal.

It adopted the decision of the CA that TKC’s television sets and DVD players are related to KECI’s
goods covered by the latter’s certificate of registration for KOLIN.

Ruling of the Court of Appeals

GRANTED KPII’s appeal.

KPII may register its mark for television sets and DVD players and the doctrine of res judicata
forbids it from arriving at a contrary conclusion.

ISSUE:

Whether or not KPII should be allowed to register its kolin mark.

RULING:

NO. KPII is not allowed to register the kolin mark for televisions and DVD players.

I. Res Judicata does not apply

All the elements of res judicata are not present. The subject matter in this case and the Taiwan Kolin
case are different. The cause of action in the Taiwan Kolin case is also different from the cause of
action in the case at bar. Thus, there is no bar by prior judgment in this case.

Neither can res judicata in the concept of conclusiveness of judgment operate to prevent the Court
from determining the registrability of KPII’s trademark application. The issue involving KPII’s use of
another figurative or stylized version of kolin was not ruled in Taiwan Kolin case, thus, the principle
of conclusiveness of judgment cannot apply.

II. KPII’S TRADEMARK APPLICATION IS NOT REGISTRABLE BECAUSE IT WILL CAUSE DAMAGE TO
KECI

There is resemblance between KECI’s KOLIN and KPII’s kolin marks. It would cause likelihood of
confusion and KECI’s rights would be damaged. The goods covered are related, there is evidence of
actual confusion between the two marks, and the goods covered fall within the normal potential
expansion of business. The sophistication of buyers is not enough to eliminate confusion.
Moreover, KPII applied for kolin in bad faith.

Among the two tests to determine likelihood of confusion only the Dominancy Test has been
incorporated in the Intellectual Property Code. The legislative intent was explicit in adopting the
Dominancy Test and abandoning Holistic Test. Applying the Dominancy Test in the present case,
the Supreme Court ruled that KPII’s mark resembles KECI’s mark because the word KOLIN is the
prevalent feature of both marks. Phonetically or aurally, the marks are exactly the same.

Minor differences between the mark of KPII’s and KECI’s mark should be disregarded. The fact that
KPII’s application possesses special characteristics not present in KECI’s mark makes no difference
in terms of appearance, sound, connotation, or overall impression because the KOLIN word itself is
the subject of KECI’s registration.

The goods covered by KPII and KECI are related and it increases the likelihood of confusion of
business. Consumers might think that the goods come from the same source.
The existence of likelihood of confusion is already considered damage which is sufficient to sustain
the opposition and rejection of KPII’s trademark application. If the registration will be granted, KPII
would acquire exclusive rights over the stylized version of KOLIN for a range of goods and services
falling within the normal potential expansion of KPII’s business. This will curtail KECI’s right to freely
use and enforce the KOLIN mark, or any stylized version thereof. Based on Section 122 vis-a-vis
Section 236 of the Intellectual Property Code, the Supreme Court cannot give due course to KPII’s
trademark application for kolin.

LEVI STRAUSS & CO. v ANTONIO SEVILLA AND ANTONIO L. GUEVARRA

GR No. 219744 March 01, 2021, SECOND DIVISION (Perlas-Bernabe, J.)

FACTS:

Levi Strauss & Co., a foreign corporation, is the owner of the word mark "LEVI'S" since 1946, and
has used the same on goods covered by Class 25 of the Nice Classification (NCL). In 1972,
petitioner granted Levi Strauss Phils., Inc. (LSPI) a non-exclusive license to use its registered
trademarks for the manufacture and sale of said goods in the Philippines.

On the other hand, Sevilla was the original registrant of the mark “LIVe’S” also covering goods under
Class 25 of the NCL. Later on, Sevilla assigned his rights over the “LIVe’S” mark to Guevarra a.k.a.
Tony Lim, doing business under the name and style Vogue Traders Clothing Company.

In 1995, a consumer survey codenamed "Project Cherokee 5" confirmed that the public indeed
strongly identified petitioner's "LEVI'S" mark with that of respondents' “LIVe’S” mark. Thus, on
December 13, 1995, petitioner filed before the then-Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT, now the IPO) a Petition for Cancellation of the trademark “LIVe’S”.
Guevarra rejected the idea that its “LIVe’S” mark is confusingly similar with petitioner's "LEVI'S"
mark, claiming that the probability of confusion arising from the alleged similarity of the two (2)
marks is negligible due to the attention given by the purchasers to the goods they are purchasing;
and besides, there are sufficient differences in the price, hand tags, and other markings of the
products.

ISSUE:

Should the petition for cancellation be granted on the ground of confusing similarity between
petitioner’s LEVI’s mark and respondents’ “LIVe’S” mark?
RULING:

Yes. Jurisprudence has developed two (2) tests to aid the Court in ascertaining the existence of
similarity and likelihood of confusion, namely, the Dominancy Test, and the Holistic or Totality Test.
The Holistic Test, however, has been abandoned in determining trademark resemblance.

The Dominancy test focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving little weight to factors like
prices, quality, sales outlets, and market segments.

In light of the foregoing, it is submitted that the Dominancy Test must be used in determining the
existence of confusing similarity between the LEVI’s and “LIVe’S” marks. The dominant feature of
petitioner "LEVI'S" marks is the word "LEVI’s”. The letter "E" is in lowercase format with the rest in
uppercase format. On the other hand, the dominant feature of respondents' “LIVe’S” stylized mark
is the word “LIVe’S”. The only difference with petitioner's marks is that the positioning of the letters
"E" and "I" are interchanged. The respondents' mark also depicts the letter "E" in lowercase format
with the rest in uppercase format.

From the foregoing, it is thus readily apparent that although petitioner's and respondents' marks are
neither spelled identically nor pronounced in the same way, nor possess the same meaning, they
both begin with the same letter and are in the possessive form as denoted by the apostrophe before
the letter "S" at the end, with only the second and fourth letters re-arranged. It would not be
farfetched to imagine that a buyer, when confronted with such striking similarity, would be led to
confuse one over the other. Thus, by simply applying the Dominancy Test, it can already be
concluded that there is a likelihood of confusion between the petitioner’s and respondents’ marks.