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G.R. No. L-29971 August 31, 1982

ESSO STANDARD EASTERN, INC., petitioner,vs.THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE

CORPORATION, respondents.

&

TEEHANKEE, J .:1äwphï1.ñët

The Court affirms on the basis of controlling doctrine the appealed decision of the Courtof Appeals reversing that of the Court of First Instance of Manila and dismissing thecomplaint filed by herein petitioner against private respondent for trade infringement for using petitioner's trademark ESSO, since it clearly appears that the goods on which thetrademark ESSO is used by respondent is non-competing and entirely unrelated to the

products of petitioner so that there is no likelihood of confusion or deception on the partof the purchasing public as to the origin or source of the goods.

Petitioner Esso Standard Eastern, Inc., 1 then a foreign corporation duly licensed to dobusiness in the Philippines, is engaged in the sale of petroleum products which areIdentified with its trademark ESSO (which as successor of the defunct StandardVacuum Oil Co. it registered as a business name with the Bureaus of Commerce andInternal Revenue in April and May, 1962). Private respondent in turn is a domesticcorporation then engaged in the manufacture and sale of cigarettes, after it acquired inNovember, 1963 the business, factory and patent rights of its predecessor La OrientalTobacco Corporation, one of the rights thus acquired having been the use of the

trademark ESSO on its cigarettes, for which a permit had been duly granted by theBureau of Internal Revenue.

Barely had respondent as such successor started manufacturing cigarettes with thetrademark ESSO, when petitioner commenced a case for trademark infringement in theCourt of First Instance of Manila. The complaint alleged that the petitioner had been for many years engaged in the sale of petroleum products and its trademark ESSO hadacquired a considerable goodwill to such an extent that the buying public had alwaystaken the trademark ESSO as equivalent to high quality petroleum products. Petitioner asserted that the continued use by private respondent of the same trademark ESSO onits cigarettes was being carried out for the purpose of deceiving the public as to its

quality and origin to the detriment and disadvantage of its own products.

In its answer, respondent admitted that it used the trademark ESSO on its own productof cigarettes, which was not Identical to those produced and sold by petitioner andtherefore did not in any way infringe on or imitate petitioner's trademark. Respondentcontended that in order that there may be trademark infringement, it is indispensablethat the mark must be used by one person in connection or competition with goods of the same kind as the complainant's.



The trial court, relying on the old cases of Ang vs. Teodoro 2 and Arce & Sons, Inc. vs.Selecta Biscuit Company , 3 referring to related products, decided in favor of petitioner and ruled that respondent was guilty of infringement of trademark.

On appeal, respondent Court of Appeals found that there was no trademark

infringement and dismissed the complaint. Reconsideration of the decision having beendenied, petitioner appealed to this Court by way of certiorari to reverse the decision of the Court of Appeals and to reinstate the decision of the Court of First Instance of Manila. The Court finds no ground for granting the petition.

The law defines infringement as the use without consent of the trademark owner of any"reproduction, counterfeit, copy or colorable limitation of any registered mark or tradename in connection with the sale, offering for sale, or advertising of any goods,business or services on or in connection with which such use is likely to causeconfusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business; or reproduce, counterfeit, copy or

colorably imitate any such mark or tradename and apply such reproduction, counterfeit,copy or colorable limitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services." 4 Implicit in this definition is the concept that the goods must be so related thatthere is a likelihood either of confusion of goods or business. 5 But likelihood of confusion is a relative concept; to be determined only according to the particular, andsometimes peculiar, circumstances of each case. 6 It is unquestionably true that, asstated in Coburn vs. Puritan Mills, Inc . 7 "In trademark cases, even more than in other litigation, precedent must be studied in the light of the facts of the particular case.

It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum

products, and the product of respondent, cigarettes, are non-competing. But as towhether trademark infringement exists depends for the most part upon whether or notthe goods are so related that the public may be, or is actually, deceived and misled thatthey came from the same maker or manufacturer. For non-competing goods may bethose which, though they are not in actual competition, are so related to each other thatit might reasonably be assumed that they originate from one manufacturer. Non-competing goods may also be those which, being entirely unrelated , could not reasonably be assumed to have a common source. in the former case of related goods,confusion of business could arise out of the use of similar marks; in the latter case of non-related goods, it could not. 8 The vast majority of courts today follow the moderntheory or concept of "related goods" 9 which the Court has likewise adopted anduniformly recognized and applied. 10

Goods are related when they belong to the same class or have the same descriptiveproperties; when they possess the same physical attributes or essential characteristicswith reference to their form, composition, texture or quality. They may also be relatedbecause they serve the same purpose or are sold in grocery stores. 11 Thus, biscuitswere held related to milk because they are both food products. 12 Soap and perfume,lipstick and nail polish are similarly related because they are common household items



now a days. 13 The trademark "Ang Tibay" for shoes and slippers was disallowed to beused for shirts and pants because they belong to the same general class of goods. 14 Soap and pomade although non- competitive, were held to be similar or to belong to thesame class, since both are toilet articles. 15 But no confusion or deception can possiblyresult or arise when the name "Wellington" which is the trademark for shirts, pants,

drawers and other articles of wear for men, women and children is used as a name of adepartment store. 16

Thus, in Acoje Mining Co., Inc. vs. Director of Patents, 17 the Court, through now Chief Justice Fernando, reversed the patent director's decision on the question of "Maypetitioner Acoje Mining Company register for the purpose of advertising its product, soy sauce, the trademark LOTUS, there being already in existence one such registered infavor of the Philippine Refining Company for its product, edible oil , it being further shown that the trademark applied for is in smaller type, colored differently, set on abackground which is dissimilar as to yield a distinct appearance?" and ordered thegranting of petitioner's application for registration ruling that "there is quite a difference

between soy sauce and edible oil. If one is in the market for the former, he is not likelyto purchase the latter just because of the trademark LOTUS" and "when regard is hadfor the principle that the two trademarks in their entirety as they appear in their respective labels should be considered in relation to the goods advertised beforeregistration could be denied, the conclusion is inescapable that respondent Director ought to have reached a different conclusion. "

By the same token, in the recent case of Philippine Refining Co., Inc. vs. Ng Sam and Director of Patents, 18 the Court upheld the patent director's registration of the sametrademark CAMIA for therein respondent's product of ham notwithstanding its alreadybeing used by therein petitioner for a wide range of products: lard butter, cooking oil,

abrasive detergents, polishing materials and soap of all kinds. The Court, after notingthat the same CAMIA trademark had been registered by two other companies,Everbright Development Company and F. E. Zuellig, Inc. for their respective products of thread and yarn (for the former) and textiles, embroideries and laces (for the latter) ruledthat "while ham and some of the products of petitioner are classified under Class 47(Foods and Ingredients of Food), this alone cannot serve as the decisive factor in theresolution of whether or not they are related goods. Emphasis should be on thesimilarity of the products involved and not on the arbitrary classification or generaldescription of their properties or characteristics." The Court, therefore, concluded that"In fine, We hold that the businesses of the parties are non-competitive and their products so unrelated that the use of Identical trademarks is not likely to give rise toconfusion, much less cause damage to petitioner."

In the situation before us, the goods are obviously different from each other with"absolutely no iota of similitude" 19 as stressed in respondent court's judgment. They areso foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods.ït¢@lFº The mere fact that one person hasadopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. 20



Petitioner uses the trademark ESSO and holds certificate of registration of thetrademark for petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other various products such as plastics, chemicals, synthetics, gasolinesolvents, kerosene, automotive and industrial fuel, bunker fuel, lubricating oil, fertilizers,gas, alcohol, insecticides and the ESSO Gasul" burner, while respondent's business is

solely for the manufacture and sale of the unrelated product of cigarettes. The publicknows too well that petitioner deals solely with petroleum products that there is nopossibility that cigarettes with ESSO brand will be associated with whatever good namepetitioner's ESSO trademark may have generated. Although petitioner's products arenumerous, they are of the same class or line of merchandise which are non-competingwith respondent's product of cigarettes, which as pointed out in the appealed judgmentis beyond petitioner's "zone of potential or natural and logical expansion" 21 When atrademark is used by a party for a product in which the other party does not deal, theuse of the same trademark on the latter's product cannot be validly objected to. 22

Another factor that shows that the goods involved are non-competitive and non-related

is the appellate court's finding that they flow through different channels of trade, thus:"The products of each party move along and are disposed through different channels of distribution. The (petitioner's) products are distributed principally through gasolineservice and lubrication stations, automotive shops and hardware stores. On the other hand, the (respondent's) cigarettes are sold in sari-sari stores, grocery stores, and other small distributor outlets. (Respondent's) cigarettes are even peddled in the streets while(petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oiland tobacco, as well as between petroleum and cigarettes. Evidently, in kind and naturethe products of (respondent) and of (petitioner) are poles apart." 23

Respondent court correctly ruled that considering the general appearances of each

mark as a whole, the possibility of any confusion is unlikely. A comparison of the labelsof the samples of the goods submitted by the parties shows a great many differences onthe trademarks used. As pointed out by respondent court in its appealed decision, "(A)witness for the plaintiff, Mr. Buhay, admitted that the color of the "ESSO" used by theplaintiff for the oval design where the blue word ESSO is contained is the distinct andunique kind of blue. In his answer to the trial court's question, Mr. Buhay informed thecourt that the plaintiff never used its trademark on any product where the combination of colors is similar to the label of the Esso cigarettes," and "Another witness for theplaintiff, Mr. Tengco, testified that generally, the plaintiff's trademark comes all in either red, white, blue or any combination of the three colors. It is to be pointed out that noteven a shade of these colors appears on the trademark of the appellant's cigarette. Theonly color that the appellant uses in its trademark is green." 24

Even the lower court, which ruled initially for petitioner, found that a "noticeabledifference between the brand ESSO being used by the defendants and the trademarkESSO of the plaintiff is that the former has a rectangular background, while in that of theplaintiff the word ESSO is enclosed in an oval background."



In point of fact and time, the Court's dismissal of the petition at bar was presaged by itsResolution of May 21, 1979 dismissing by minute resolution the petition for review for lack of merit in the Identical case of Shell Company of the Philippines, Ltd vs. Court of

Appeals 25, wherein the Court thereby affirmed the patent office's registration of thetrademark SHELL as used in the cigarettes manufactured by therein respondent

Fortune Tobacco Corporation notwithstanding the therein petitioner Shell Company'sopposition thereto as the prior registrant of the same trademark for its gasoline andother petroleum trademarks, on the strength of the controlling authority of Acoje Mining Co. vs. Director of Patents, Supra, and the same rationale that "(I)n the Philippines,where buyers of appellee's (Fortune Corp.'s) cigarettes, which are low cost articles, canbe more numerous compared to buyers of the higher priced petroleum and chemicalproducts of appellant (Shell Co.) and where appellant (Shell) is known to be in thebusiness of selling petroleum and petroleum-based chemical products, and no others, itis difficult to conceive of confusion in the minds of the buying public in the sense it canbe thought that appellant (Shell) is the manufacturer of appellee's (Fortune's) cigarettes,or that appellee (Fortune) is the manufacturer or processor of appellant's (Shell's)

petroleum and chemical products."

26

ACCORDINGLY, the petition is dismissed and the decision of respondent Court of Appeals is hereby affirmed.



G.R. No. L-18337 January 30, 1965

CHUA CHE, petitioner,vs.

PHILIPPINES PATENT OFFICE and SY TUO, respondents.

Chipeco & Alcaraz, Jr. for petitioner.

Perfecto E. de Vera for respondents.

PAREDES, J.:

This is a petition to review the decision of the Director of Patents, in Inter Partes Case No. 161,

denying the application of petitioner Chua Che for the registration of "T.M. X-7" for use on soap

Class 51, being manufactured by said Chua Che, upon the opposition of respondent Sy Tuo.

Under date of October 30, 1958, Chua Che presented with the Philippines Patent Office a

petition praying for the registration in his favor the trade name "X-7". The petition, states:

The undersigned CHUA CHE, a citizen of China, a resident of 2804 Limay St., Tondo,

Manila, and doing business at same address, has adopted and used the trademark "X-7"shown in the accompanying Drawing.

In accordance with the requirements of law, the undersigned declares that this trademark —

1. Was first used by him on June 10, 1957.

2. Was first used by him in commerce in or with the Philippines on June 10, 1957.

3. Has been continuously used by him in trade in or with the Philippines for more than

one year.

4. Is, on the date of this application, actually used by him on the following goods,

classified according to the Official Classification of Goods (Rule 82):

Class 51 — Soap

5. Is applied to the goods or to the packages containing the same, by placing thereon a

printed label on which the trademark is shown, or by directly impressing the mark to thegoods.

The corresponding declaration, which was under oath, contained, among others, the following:

3. That he believes himself to be the lawful owner of the trademark sought to be

registered.



4. That the said trademark is in actual use in commerce in or with the Philippines not less

than two months before this application is filed.

5. That no other person, partnership, corporation, or association, to the best of his

knowledge and belief, has the right to use said trademark in the Philippines, either in the

identical form or in any such near resemblance thereto as might be calculated to deceive.

Under date of July 6, 1959, an Examiner of the Department of Commerce and Industry,

submitted a report recommending the allowance of the application, which report was approved by the Supervising TM Examiner. After the Notice of allowance was published in the Official

Gazette, as required, respondent Sy Tuo presented a "Notice of Opposition," dated October 15,

1959, anchoring said opposition on the following allegations:

1. The registration of the trademark "X-7" as applied for by CHUA CHE will not only

violate the rights and interests of the Oppositor over his registered trademark "X-7"covered by Certificate of Registration No. 5,000, issued April 21, 1951, but will also tend

to mislead the purchasing public and make it convenient for unscrupulous dealers to passoff the goods of the applicant CHUA CHE, for those of the oppositor SY TUO, to the

injury of both the oppositor and the public.

2. The registration of the said trademark "X-7" in the name of CHUA CHE will be inviolation of, and will run counter to, Section 4 (d) of Republic Act No. 166, as amended, because it is confusingly similar to the trademark "X-7" covered by Registration No.

5,000 previously registered to, and being used by the oppositor and is not abandoned.

The Oppositor SY TUO, doing business as the Western Cosmetic Laboratory will rely on

the following facts:

(a) Oppositor has prior use of the trademark "X-7" as he has been using it

extensively and continuously since July 31, 1952, while the applicant, Chua Che,allegedly used his trademark only since June 10, 1957.1äwphï1.ñët

(b) Oppositor's mark "X-7" is distinctive and his invented mark and not merely anordinary, common and weak mark.

(c) The oppositor and the applicant use the trademark "X-7" for allied and closelyrelated products.

(d) The oppositor has spent a huge amount by way of advertising and advertisinghis "X-7" brand.

(e) The oppositor has spent a big amount in expanding his business for themanufacture of toilet soap and crystal laundry soap with his already popular "X-

7" brand.



(f) The trademark applied for by the applicant Chua Che consists of the trademark

"X-7" and anyone is likely to be misled as to the source or origin by the close

resemblance or identity with the trademark "X-7" of the oppositor.

Attached to the Opposition were labels (samples) being used by oppositor on his products, which

clearly show "X-7".

Petitioner herein presented an Answer to Notice of Opposition, claiming among others that the

grounds of opposition are not correct, since although it is admitted that "X-7" is registered in thename of oppositor, said trademark is not being used on soap, but purely toilet articles. After the

presentation of the Answer the case was heard, wherein the parties presented their respective

evidence, both testimonial and documentary. In the memoranda of the contenders, they limitedthe principal issues, thus —

Oppositor SY TUO —

The registration of the trademark "X-7" in the name of applicant CHUA CHE will likelymislead the public so as to make them believe that said goods are manufactured or sponsored by or in some way in trade associated with opposer.

Applicant CHUA CHE —

In Inter Partes proceedings, the principal issue is "priority of adoption and use." Sinceopposer has not yet used "X-7" mark on soap, but will still use it, applicant should be

entitled to the registration of the same.

The Director of Patents rendered judgment on January 18, 1961, the pertinent portions of which

read:

Based on those facts there is no question that opposer's first use of the trademark X-7 on

July 31, 1953, is prior to applicant's first use of the mark on June 10, 1957. The only

question then in this case is whether or not purchasers of X-7 perfume, lipstick and nail

polish would likely upon seeing X-7 laundry soap, attribute common origin to the products or assume that there existed some kind of trade connection between applicant

and opposer.

Opposer's record shows that he has been using since July 31, 1953 the trademark X-7 on

perfume, lipstick and nail polish; that he has spent substantial amounts of money in

building upon the goodwill of this trademark through advertisements in all kinds of media — through newspapers of general circulation, by means of billboards in various

places in the Philippines, and also over the radio and television. In these advertisements

opposer has spent about P120,000.00. There is no question that opposer enjoys a valuablegoodwill in the trademark X-7.

The products of the parties, while specifically different, are products intended for use inthe home and usually have common purchasers. Furthermore, the use of X-7 for laundry



soap is but a natural expansion of business of the opposer. In fact, herein opposer in

1956, prior to the alleged date of first use by respondent-applicant of the trademark X-7

for laundry soap on June 10, 1957, had made steps in expanding the use of this trademark to granulated soap. Under these circumstances, it is concluded that the average purchasers

are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to

think that the products have common origin or sponsorship.

IN VIEW OF THE ABOVE FINDINGS, the opposition in this case should be as it is

hereby sustained and consequently Application Serial No. 6941, of Chua Che, is alsohereby rejected.

OPPOSITION SUSTAINED

The above judgment is now before Us, applicant-appellant claiming that it was error for the

Director to conclude that opposer SY TUO had priority to use the trademark in question, and thatthe use by appellant of the trademark "X-7" on granulated soap to be manufactured and sold by

him, would likely mislead purchasers.

At the very outset, we would like to state that in cases of the nature of the one at bar, only

questions of law should be raised, and the only exception to this rule, meaning that findings of

facts may be reviewed, is when such findings are not supported by substantial evidence (Sec. 2,Rule 44, Revised Rules). The finding of the Director of Patents Office to the effect that opposer-appellee Sy Tuo had priority of use and adoption of the trademark "X-7", is for all intents and

purposes, one of fact. This being the case, such finding becomes conclusive to this Court. Even

on this sole issue alone, the petition for review must fall.

However, there are other matters which must be clarified. For instance, the fact that appellee has

not yet used the trademark "X-7" on granulated soap, the product on which appellant wants touse the said trademark. The circumstance of non-actual use of the mark on granulated soap by

appellee, does not detract from the fact that he has already a right to such a trademark and

should, therefore, be protected. The observation of the Director of Patents to the effect that "theaverage purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail

polish or to think that the products have common origin or sponsorship," is indeed well taken. It

has been pointed out by appellant that the product upon which the trademark X-7 will be used(laundry soap) is different from those of appellee's, and therefore no infringement and/or

confusion may result. We find no merit in the above contention, for it has been held that while it

is no longer necessary to establish that the goods of the parties possess the same descriptive

properties, as previously required under the Trade Mark Act of 1905, registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake, or deception, even

though the goods fall into different categories. (Application of Sylvan Sweets Co., 205 F. 2nd,

207.) The products of appellee are common household items nowadays, in the same manner as

laundry soap. The likelihood of purchasers to associate those products to a common origin is notfar-fetched. Both from the standpoint of priority of use and for the protection of the buying

public and, of course, appellee's rights to the trademark "X-7", it becomes manifest that the

registration of said trademark in favor of applicant-appellant should be denied.



PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is hereby

affirmed in all respects, with costs against appellant CHUA CHE in both instances.



G.R. No. L-28744 April 29, 1971

ACOJE MINING CO., INC., petitioner-applicant,vs.THE DIRECTOR OF PATENTS, respondent.

Manuel M. Antonio and Roman G. Pacia for petitioner.

Office of the Solicitor General Antonio P. Barredo, Assistant Solicitor General Frine' C.Zaballero, Solicitor Antonio M. Martinez and Attorney Amado L. Marquez for respondent.

FERNANDO, J .:

The issue before us is simple and uncomplicated. May petitioner Acoje MiningCompany register for the purpose of advertising its product, soy sauce, the trademarkLOTUS, there being already in existence one such registered in favor of the PhilippineRefining Company for its product, edible oil, it being further shown that the trademarkapplied for is in smaller type, colored differently, set on a background which is dissimilar as to yield a distinct appearance? The answer of the Director of Patents was in thenegative. Hence this appeal which we sustain in the light of the controlling norm as setforth in the American Wire & Cable Co. care. 1 The facts as set forth in the appealeddecision follow: "On September 14, 1965, Acoje Mining Co., Inc. a domesticcorporation, filed an application for registration of the trademark LOTUS, used on SoySauce, Class 47. Use in commerce in the Philippines since June 1, 1965 is asserted.

The Chief trademark Examiner finally rejected the application by reason of confusingsimilarity with the trademark LOTUS registered in this Office under Certificate of Registration No. 12476 issued in favor of Philippine Refining CO., Inc., another domestic corporation. The cited mark is being used on edible oil, Class 47." 2 The matter was then elevated to respondent Director of Patents who, on January 31, 1968, upheldthe view of the Chief Trademark Examiner and rejected the application of Petitioner onthe ground that while there is a difference between soy sauce and edible oil and therewere dissimilarities in the trademarks due to type of letters used as well as in the size,color and design employed, still the close relationship of the products, soy sauce andedible oil, is such "that purchasers would be misled into believing that they have acommon source." 3

This petition for its review was filed with this Court on March 6, 1968. After thesubmission of the briefs on behalf of petitioner and respondent, the case was deemedsubmitted. As set forth at the outset the decision of respondent Director of Patents isreversed.

The decisive test as to whether an application for a trademark should be affirmativelyacted upon or not is clearly set forth in the decision already referred to, promulgated



barely a year ago. In the language of Justice J. B. L. Reyes, who spoke for the Court in American Wire & Cable Co. v. Director of Patents: 4 "It is clear from the above-quotedprovision that the determinative factor in a contest involving registration of trade mark isnot whether the challenging mark would actually cause confusion or deception of thepurchasers but whether the use of such mark would likely cause confusion or mistake

on the part of the buying public. In short, to constitute an infringement of an existingtrade-mark patent and warrant a denial of an application for registration, the law doesnot require that the competing trademarks must be so identical as to produce actualerror or mistake; it would be sufficient, for purposes of the law, that the similaritybetween the two labels, is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it." 5

Can it be said then that petitioner's application would be likely to cause confusion or mistake on the part of the buying public? The answer should be in the negative. It doesnot defy common sense to assert that a purchaser would be cognizant of the product heis buying. There is quite difference between soy sauce and edible oil. If one is in the

market for the former, he is not likely to purchase the latter just because of thetrademark LOTUS. Even on the rare occasions that a mistake does occur, it can easilybe rectified. Moreover, there is no denying that the possibility of confusion is remoteconsidering the difference in the type used, the coloring, the petitioner's trademarkbeing in yellow and red while that of the Philippine Refining Company being in greenand yellow, and the much smaller size of petitioner's trademark. When regard is had for the principle that the two trademarks in their entirety as they appear in their respectivelabels should be considered in relation to the goods advertised before registration couldbe denied, the conclusion is inescapable that respondent Director ought to havereached a different conclusion. Petitioner has successfully made out a case for registration. 6

WHEREFORE, the decision of respondent Director of Patents of January 31, 1968 isreversed and petitioner's application for registration of its trademark LOTUS granted.Without costs.



G.R. No. L-44707 August 31, 1982

HICKOK MANUFACTURING CO., INC., petitioner,vs.COURT OF APPEALS ** and SANTOS LIM BUN LIONG, respondents.

Sycip, Salazar, Feliciano, Hernandez & Castillo Law Offices for petitioner.

Tañada, Sanchez, Tafiada & Tanada Law Offices and George R. Arbolario for respondents.

&

TEEHANKEE, J .:1äwphï1.ñët

The Court affirms on the strength of controlling doctrine as reaffirmed in the companion

case of Esso Standard Eastern Inc. vs. Court of Appeals

1

promulgated also on this dateand the recent case of Philippine Refining Co., Inc. vs. Ng Sam and Director of Parents2 the appealed decision of the Court of Appeals reversing the patent director's decision

and instead dismissing petitioner's petition to cancel private respondent's registration of the trademark of HICKOK for its Marikina shoes as against petitioner's earlier registration of the same trademark for its other non-competing products.

On the basis of the applicable reasons and considerations extensively set forth in theabove-cited controlling precedents and the leading case of Acoje Mining Co., Inc. vs.Director of Patents 3

on which the appellate court anchored its decision at bar, saiddecision must stand affirmed, as follows: 1äwphï1.ñët

An examination of the trademark of petitioner-appellee and that of registrant-appellantconvinces us that there is a difference in the design and the coloring of, as well as in thewords on the ribbons, the two trademarks.

In petitioner-appellee's trademark for handkerchiefs (Exhibit 'Q'), the word 'HICKOK' is inred with white background in the middle of two branches of laurel in light gold. At thelower part thereof is a ribbon on which are the words 'POSITIVELY FINER' in light gold.In the trademark for underwear (Exhibit 'R'), the word 'HICKOK' is also in red with whitebackground in the middle of two branches of laurel in dark gold with similar ribbons andthe words 'POSITIVELY FINER' in dark gold. And in the trademark for briefs (Exhibit 'S'),the word 'HICKOK' is in white but with red background in the middle of two branches of laurel, the leaves being in dark gold with white edges, and with similar ribbon and words

'POSITIVELY FINER' in dark gold. In contrast, in respondent-appellant's trademark(Exhibit 'J'), the word 'HICKOK' is in white with gold background between the twobranches of laurel in red, with the word 'SHOES' also in red below the word'HICKOK'.ït¢@lFº The ribbon is in red with the words 'QUALITY AT YOUR FEET,'likewise in red.

While the law does not require that the competing trademarks be Identical, the two marksmust be considered in their entirety, as they appear in the respective labels, in relation tothe goods to which they are attached.



The case of H.E. Heacock Co. vs. American Trading Co ., 56 Phil. 763, cited by petitioner - appellee, is hardly applicable here, because the defendant in that case imported andsold merchandise which are very similar to, and precisely of the same designs as, thatimported and sold by the plaintiff. ...

In the recent case of Acoje Mining Co., Inc. vs. Director of Patents, 38 SCRA 480, 482-

483, the Supreme Court stated - 1äwphï1.ñët

Can it be said then that petitioner's application would be likely to causeconfusion or mistake on the part of the buying public? The answer should be in the negative. It does not defy common sense to assert thata purchaser would be cognizant of the product he is buying. There isquite a difference between soy sauce and edible oil. If one is in themarket for the former, he is not likely to purchase the latter just becauseon the trademark LOTUS. Even on the rare occasion that a mistake doesoccur, it can easily be rectified. Moreover, there is no denying that thepossibility of confusion is remote considering petitioner's trademark beingin yellow and red while that of the Philippine Refining Company being ingreen and yellow, and the much smaller size of petitioner's trademark.

When regard is had for the principle that the two trademarks in their entirety as they appear in their respective labels should be considered inrelation to the goods advertised before registration could be denied, theconclusion is inescapable that respondent Director ought to havereached a different conclusion. Petitioner has successfully made out acase for registration.

From the statements of the Supreme Court in the two cases aforementioned, we gather that there must be not only resemblance between the trademark of the plaintiff and that of the defendant, but also similarity of the goods to which the two trademarks arerespectively attached.

Since in this case the trademark of petitioner-appellee is used in the sale of leather

wallets, key cases, money folds made of leather, belts, men's briefs, neckties,handkerchiefs and men's socks, and the trademark of registrant-appellant is used in thesale of shoes, which have different channels of trade, the Director of Patents, as in thecase of Acoje Mining Co., Inc. vs. Director of Patents, supra, 'ought to have reached adifferent conclusion.

It is established doctrine, as held in the above-cited cases, that "emphasis should be onthe similarity of the products involved and not on the arbitrary classification or generaldescription of their properties or characteristics" 4

and that "the mere fact that oneperson has adopted and used a trademark on his goods does not prevent the adoptionand use of the same trademark by others on unrelated articles of a different kind." 5

Taking into account the facts of record that petitioner, a foreign corporation registered

the trademark for its diverse articles of men's wear such as wallets, belts and men'sbriefs which are all manufactured here in the Philippines by a licensee Quality House,Inc. (which pays a royalty of 1-1/2 % of the annual net sales) but are so labelled as togive the misimpression that the said goods are of foreign (stateside) manufacture andthat respondent secured its trademark registration exclusively for shoes (which neither petitioner nor the licensee ever manufactured or traded in) and which are clearlylabelled in block letters as "Made in Marikina, Rizal, Philippines," no error can be



attributed to the appellate court in upholding respondent's registration of the sametrademark for his unrelated and non-competing product of Marikina shoes. 6

ACCORDINGLY, the petition is dismissed and the appealed judgment of the Court of Appeals is hereby affirme

ipl_case2b

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