OK Hotdog Inasal is not an OK trademark for SC

The Supreme Court (SC) has ordered the Intellectual Property Office (IPO) to deny the
trademark application of OK Hotdog Inasal Cheese Hotdog Flavor.

In a recent 13-page decision, the SC 3rd Division granted the petition of Mang Inasal
Philippines, Inc., to overturn the IPO and the Court of Appeals (CA) acceptance of IFP
Manufacturing Corporations trademark application.

The High Court cited the similarity in the marks of the Mang Inasal restaurant chain and
the OK Hotdog Inasal curl snack.
Both marks prominently feature the word inasal in bold red typeface against a black
outline and yellow background with staggered design.

Being the sole dominant element, the word INASAL, as stylized in the Mang Inasal
mark, is also the most distinctive and recognizable feature of the said mark, the
decision noted.

Since both marks visually depict the word inasal in similar ways, the SC held that OK
Hotdog Inasal is a colorable imitation of Mang Inasal.

The SC also noted that IFP sought to trademark OK Hotdog Inasal for goods that are
related to Mang Inasals business, as both sell food items.

To our mind, it is not unlikely that such buyer would be led into the assumption that
the curls are of petitioner [Mang Inasal] and that [it] has ventured into snack
manufacturing or, if not, that the petitioner has supplied the flavorings, explained the
decision penned by Associate Justice Presbitero Velasco Jr.

REPUBLIC GAS CORPORATION, ARNEL U. TY, MARI ANTONETTE

N. TY, ORLANDO REYES, FERRER SUAZO and ALVIN U. TY,
petitioners, vs. PETRON CORPORATION, PILIPINAS SHELL
PETROLEUM CORPORATION, and SHELL INTERNATIONAL
PETROLEUM COMPANY LIMITED, respondents.

Petitioner: Regasco entity duly licensed to engage in, conduct and carry on, the
business of refilling, buying, selling, distributing and marketing at wholesale and retail of
Liquefied Petroleum Gas ("LPG"). petitioners filed the instant Petition for Review on
Certiorari after CA denied their MOR when CA reversed the Resolution of Sec. of DOJ
affirming the dismissal of the complaint against the petitioners

Respondents: ("Petron" for brevity) and Pilipinas Shell

Petroleum Corporation ("Shell" for brevity) are two of the largest bulk
suppliers and producers of LPG in the Philippines. Petron is the registered
owner in the Philippines of the trademarks GASUL and GASUL cylinders used
for its LPG products. It is the sole entity in the Philippines authorized to allow
refillers and distributors to refill, use, sell, and distribute GASUL LPG
containers, products and its trademarks. Pilipinas Shell, on the other hand, is
the authorized user in the Philippines of the tradename, trademarks,
symbols or designs of its principal, Shell International Petroleum Company
Limited, including the marks SHELLANE and SHELL device in connection with
the production, sale and distribution of SHELLANE LPGs. It is the only
corporation in the Philippines authorized to allow refillers and distributors to
refill, use, sell and distribute SHELLANE LPG containers and products.
The surveillance revealed that REGASCO LPG
Refilling Plant in Malabon was engaged in the refilling and sale of LPG
cylinders bearing the registered marks of the petitioners without authority
from the latter.

Issue: whether probable cause exists to hold petitioners liable for the crimes of
trademark
infringement and unfair competition as defined and penalized under Sections 155
and 168, in relation to Section 170 of Republic Act (R.A.) No. 8293.

Ruling: 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 of 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

Here, petitioners have actually committed trademark infringement when they

refilled, without the respondents' consent, the LPG containers bearing the registered
marks of the respondents. As noted by respondents, petitioners' acts will inevitably
confuse the consuming public, since they have no way of knowing that the gas
contained in the LPG tanks bearing respondents' marks is in reality not the latter's
LPG product after the same had been illegally refilled. The public will then be led to
believe that petitioners are authorized refillers and distributors of respondents' LPG
products, considering that they are accepting empty containers of respondents and
refilling them for resale.
In the present case, respondents pertinently observed that by refilling and selling
LPG cylinders bearing their registered marks, petitioners are selling goods by giving
them the general appearance of goods of another manufacturer.
the CA correctly pointed out that there is a showing that the
consumers may be misled into believing that the LPGs contained in the cylinders
bearing the marks "GASUL" and "SHELLANE" are those goods or products of the
petitioners when, in fact, they are not. Obviously, the mere use of those LPG
cylinders bearing the trademarks "GASUL" and "SHELLANE" will give the LPGs sold
by REGASCO the general appearance of the products of the petitioners.
SONIC STEEL INDUSTRIES, INC., complainant , vs. ATTY.
NONNATUS P. CHUA, respondent .

Petitioner: Complainant is corporation doing business as a manufacturer and distributor

of
zinc and aluminum-zinc coated metal sheets known in the market as Superzinc and
Superlume.

Respondent: STEELCORP is the exclusive licensee of and manufacturer in

the Philippines of "GALVALUME" metal sheet products, which are
coated with aluminum-zinc alloy, produced by using the technical
information and the patent on Hot Dip Coating of Ferrous Strands
petitioner's SUPERLUME metal sheet products, the
process by which they are manufactured and produced certainly
involves an assembly line that substantially conforms with the
technical information and registered patent licensed to
STEELCORP,
For his part, respondent counters that he never made an allegation or reservation
that STEELCORP owned Philippine Patent No. 16269. He asserts that he merely
reserved the right to present the trademark license exclusively licensed to
STEELCORP by BIEC International, Inc. which is composed of the technical
information and the patent used to produce GALVALUME metal sheet products, the
same technology being utilized by complainant without authority from STEELCORP.
Respondent further avers that the Complaint-Affidavit filed before the Department
of Justice did not categorically claim that STEELCORP is the owner of the patent, but
simply that STEELCORP is the exclusive licensee of the process by which
GALVALUME is produced

ISSUE: WON Atty. Chua violated his duties as a lawyer to

avoid dishonest and deceitful conduct and and to act with candor,
fairness and good faith claimed or made to appear that
STEELCORP was the licensee of the technical information and the patent on Hot Dip
Coating of Ferrous Strands or Philippine Patent No. 16269.

HELD: Yes. an extensive

investigation made by the IBP's Commission on Bar Discipline showed that
STEELCORP only has rights as a licensee of the technical information and not the
rights as a licensee of the patent,
respondent's words and crafted explanation, he claimed that
STEELCORP had rights as a licensee of the process, consisting of a
combination of the Technical Information and the Patent. Considering,
however, that STEELCORP's rights as a licensee of the process is
severable into (a) rights as licensee of the technical information and (b)
rights as a licensee of Patent No. 16269, respondent was less than candid
in asserting that STEELCORP had rights to the entire process during the
relevant periods
The expiration of the patent effectively negated and rendered
irrelevant respondent's defense of subsistence of the contract between
STEELCORP and BIEC International, Inc. during the filing of the application
for search warrant and filing of respondent's affidavit before the
Department of Justice. There is basis, therefore, to the claim that
respondent has not been "candid enough" in his actuations.

CHESTER UYCO, WINSTON UYCHIYONG, and CHERRY C. UYCOONG,

petitioners, vs. VICENTE LO, respondent .

Petitioner: they are the officers of Wintrade which

owns the subject trademarks and their variants. They alleged that Gasirel, not Lo, was
the real party-in-interest. They
allegedly derived their authority to use the marks from Casa Hipolito S.A. Portugal
through Wonder, their predecessor-in-interest. Moreover, PBMC had already ceased
to be a corporation and, thus, the licensing agreement between PBMC and Lo could
not be given effect, particularly because the agreement was not notarizedLo failed to
sufficiently prove that the burners bought from
National Hardware were those that they manufactured. But at the same time, they
also argued that the marks "Made in Portugal" and "Original Portugal" are merely
descriptive and refer to the source of the design and the history of manufacture.
Respondent: Respondent Vicente Lo and
Philippine Burners Manufacturing Corporation (PBMC) filed a complaint against the
officers of Wintrade Industrial Sales Corporation (Wintrade) , including petitioners
Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong, and of National Hardware,
including Mario Sy Chua, for violation of Section 169.1, in relation to Section 170, of
RA 8293.
Lo claimed that as the assignee for the trademarks, he
had not authorized Wintrade to use these marks, nor had Casa Hipolito S.A.
Portugal. The kerosene burners manufactured by Wintrade have caused confusion,
mistake and deception on the part of the buying public. Lo stated that the real and
genuine burners are those manufactured by its agent, PBMC

ISSUE: WON CA committed grave abuse of discretion in affirming the ruling of DOJ

Held: No. They allege that

the words "Made in Portugal" and "Original Portugal" refer to the origin of the
design and not to the origin of the goods. The admission in the petitioners' Joint Affidavit
is not in any way hypothetical, as
they would have us believe. They narrate incidents that have happened. They refer
to Wintrade's former association with Casa Hipolito S.A. Portugal; to their decision
to produce the burners in the Philippines; to their use of the disputed marks; and to
their justification for their use.
More
importantly, the products that Wintrade sold were admittedly produced in the
Philippines, with no authority from Casa Hipolito S.A. Portugal. The law on
trademarks and trade names precisely precludes a person from profiting from the
business reputation built by another and from deceiving the public as to the origins
of products. These facts support the consistent findings of the State Prosecutor, the
DOJ and the CA that probable cause exists to charge the petitioners with false
designation of origin.
The argument that the words "Made in Portugal" and "Original Portugal" refer to
the origin of the design and not to the origin of the goods does not negate the
finding of probable cause; at the same time, it is an argument that the petitioners
are not barred by this Resolution from raising as a defense during the hearing of the
case.

ROBERTO CO vs. KENG HUAN JERRY YEUNG AND EMMA YEUNG G.R. No.
212705, 10 September 2014

FACTS:

Ruivivar bought a bottle of Greenstone from Royal Chinese Drug Store in Binondo, Man
ila, owned by Ling Na Lau. However, he doubted its authenticity because it had a differe
nt smell, and the heat it produced was not as strong as the original Greenstone he freque
ntly used. He then informed his brother-in-
law Yeung, the owner of Greenstone Pharmaceutical. The latter went to Royal and found
7 bottles of counterfeit Greenstone on display for sale. He was told by Pinky Lau
the stores proprietor
that the items came from Co of KiaoAn Chinese Drug Store. According to Pinky, Co offe
red the products as Tienchi Fong Sap Oil Greenstone (Tienchi) which she eventually a
vailed from him.

Sps. Yeung filed a civil complaint for trademark infringement and unfair competition be
fore the RTC against Ling Na Lau, her sister Pinky Lau, and Co for allegedly conspiring i
n the sale of counterfeit Greenstone products to the public.

The RTC ruled in favor of Sps. Yeung. It found that the Sps. Yeung had proven by prepo
nderance of evidence that the Laus and Co committed unfair competition through their
conspiracy to sell counterfeit Greenstone products that resulted in confusion and decept
ion not only to the ordinary purchaser, like Ruivivar, but also to the public. It, however,
did not find the Laus and Co liable for trademark infringement as there was no showing
that the trademark Greenstone was registered at the time the acts complained of occur
red. CA affirmed the RTC Decision.

ISSUE:
Whether or not only suit for unfair competition will prosper considering the trademark
was not registered.

HELD:

Yes, the defendants cannot be liable for trademark infringement. In the case at bar, the
Court defined unfair competition as the passing off (or palming off) or attempting to pas
s off upon the public of the goods or business of one person as the goods or business of a
nother with the end and probable effect of deceiving the public. This takes place where t
he defendant gives his goods the general appearance of the goods of his competitor with
the intention of deceiving the public that the goods are those of his competitor.

Here, it has been established that Co conspired with the Laus in the sale/distribution of
counterfeit Greenstone products to the public, which were even packaged in bottles iden
tical to that of the original, thereby giving rise to the presumption of fraudulent intent.

Although liable for unfair competition, the Court deems it apt to clarify that Co was prop
erly exculpated from the charge of trademark infringement considering that the registra
tion of the trademark Greenstone
essential as it is in a trademark infringement case
was not proven to have existed during the time the acts complained of were committed.
In this relation, the distinctions between suits for trademark infringement and unfair co
mpetition prove useful: (a) the former is the unauthorized use of a trademark, whereas t
he latter is the passing off of ones goods as those of another; (b) fraudulent intent is unn
ecessary in the former, while it is essential in the latter; and (c) in the former, prior regis
tration of the trademark is a pre-
requisite to the action, while it is not necessary in the latter.
In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the trademark
application of Emerald Garment. Allegedly, the trademark Stylistic Mr. Lee sought to be
applied for by Emerald Garment is too confusingly similar with the brand Lee which has for its
variations Lee Riders, Lee Sures, and Lee Leens. The Director of Patents as well as the
Court of Appeals ruled in favor of H.D. Lee Co.

ISSUE: Whether or not the decision of the Court of Appeals is correct.

HELD: No. The Supreme Court considered that the trademarks involved as a whole and ruled
that Emerald Garments STYLISTIC MR. LEE is not confusingly similar to H.D. Lees LEE
trademark. The trademark Stylistic Mr. Lee, although on its label the word LEE is
prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and substantial enough to matter
especially in the light of the following variables that must be factored in.

First, the products involved in the case at bar are, in the main, various kinds of jeans. These are
not your ordinary household items like catsup, soysauce or soap which are of minimal cost.
Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be
more cautious and discriminating in and would prefer to mull over his purchase. Confusion and
deception, then, is less likely.

Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does
not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an
Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will
not easily be distracted.

Finally, in line with the foregoing discussions, more credit should be given to the ordinary
purchaser. Cast in this particular controversy, the ordinary purchaser is not the completely
unwary consumer but is the ordinarily intelligent buyer considering the type of product
involved.

There is no cause for the Court of Appeals apprehension that Emerald Garments products
might be mistaken as another variation or line of garments under H.D. Lees LEE
trademark. As one would readily observe, H.D. Lees variation follows a standard format
LEERIDERS, LEESURES and LEELEENS. It is, therefore, improbable that the public
would immediately and naturally conclude that petitioners STYLISTIC MR. LEE is but
another variation under H.D. Lees LEE mark.

The issue of confusing similarity between trademarks is resolved by considering the distinct
characteristics of each case. In the present controversy, taking into account these unique factors,
we conclude that the similarities in the trademarks in question are not sufficient as to likely cause
deception and confusion tantamount to infringement.

Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its LEE
trademark in the Philippines. H.D. Lee did show certificates of registrations for its brand but
registration is not sufficient. Actual use in commerce in the Philippines is an essential
prerequisite for the acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the
Philippine Trademark Law (R.A. No. 166).

A rule widely accepted and firmly entrenched because it has come down through the years is that
actual use in commerce or business is a prerequisite in the acquisition of the right of ownership
over a trademark.

It would seem quite clear that adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use. Adoption is not use. One may make
advertisements, issue circulars, give out price lists on certain goods; but these alone would not
give exclusive right of use. For trademark is a creation of use. The underlying reason for all these
is that purchasers have come to understand the mark as indicating the origin of the wares.
Flowing from this is the traders right to protection in the trade he has built up and the goodwill
he has accumulated from use of the trademark. Registration of a trademark, of course, has value:
it is an administrative act declaratory of a pre-existing right. Registration does not, however,
perfect a trademark right.

DELMONTE

Del Monte Corporation is an American corporation which is not engaged in business in the
Philippines. Though not engaging business here, it has given authority to Philippine Packing
Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various
agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del
Monte also authorized Philpack to register with the Patent Office the Del Monte catsup bottle
configuration. Philpack was issued a certificate of trademark registration under the Supplemental
Register.

Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte
bottles in selling its products and that Sunshine Sauces logo is similar to that of Del Monte. The
RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the
trademarks used between the two are different in designs and that the use of Del Monte bottles
by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs
Insular Petroleum: selling oil in containers of another with markings erased, without intent to
deceive, was not unfair competition.

ISSUE: Whether or not there is unfair competition and infringement in the case at bar.

HELD: Yes. The Supreme Court recognizes that there really are distinctions between the
designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that
side by side comparison is not the final test of similarity. Sunshine Sauces logo is a colorable
imitation of Del Montes trademark. The word catsup in both bottles is printed in white and the
style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure
nevertheless approximates that of a tomato. The person who infringes a trade mark does not
normally copy out but only makes colorable changes, employing enough points of similarity to
confuse the public with enough points of differences to confuse the courts. What is undeniable is
the fact that when a manufacturer prepares to package his product, he has before him a boundless
choice of words, phrases, colors and symbols sufficient to distinguish his product from the
others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same
colors and letters as those used by Del Monte though the field of its selection was so broad, the
inevitable conclusion is that it was done deliberately to deceive.

The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte
bottles in the Philippines because Philpacks patent was only registered under the Supplemental
Register and not with the Principal Register. Under the law, registration under the Supplemental
Register is not a basis for a case of infringement because unlike registration under the Principal
Register, it does not grant exclusive use of the patent. However, the bottles of Del Monte do say
in embossed letters: Del Monte Corporation, Not to be Refilled. And yet Sunshine Sauce
refilled these bottles with its catsup products. This clearly shows the Sunshine Sauces bad faith
and its intention to capitalize on the Del Montes reputation and goodwill and pass off its own
product as that of Del Monte.

Samson vs Daway
(GR No 160054-55, July 21, 2004)

Facts:
The petitioner allegedly sold or offers the sale of garment product using the
trademark Caterpillar to the prejudice of its previous user, private
respondent in this case. The respondent filed the case to the RTC. The
petitioner contended that the case should be filed with the MTC because
violation of unfair competition is penalized with an imprisonment not
exceeding 6 years under RA 7691.

Issue:
Where do you file a suit for unfair competition?

Held:
The SC held that under Sec 163 of the IPC, actions for unfair competition
shall be brought before the proper courts with appropriate jurisdiction under
existing laws. The law contemplated in Sec 163 of IPC is the Trademark Law.
Sec 27 of Trademark Law states that action for unfair competition shall be
filed with the CFI (now RTC). Since RA 7691 is a general law and IPC in
relation to Trademark law is a special law, the latter shall prevail. Actions for
unfair competition therefore should be filed with the RTC.
Mighty Corporation vs ENJ Gallo Winers
(GR No 154342, July 14, 2004, Corona)

Facts:
Respondent manufacture wines and uses the trademark Gallo for its
product. On the other hand, the petitioner is a manufacturer of cigarette and
also uses Gallo in its products.

Issue:
Is there infringement?

Held:
At the time the cause of action accrued in this case, the IPC was not yet
enacted so the relevant laws used were the Trademark Law and the Paris
Convention.
The SC held that there was no infringement. The use of the respondent of
the mark Gallo for its wine products was exclusive in nature. The court
mentioned two types of confusion in Trademark Infringement:

Confusion of Goods when an otherwise prudent purchaser is induced to

purchase one product in the belief that he is purchasing another, in which
case defendants goods are then brought as the plaintiffs and its poor
quality reflects badly on the plaintiffs reputation.
Confusion of Business wherein the goods of the parties are different but
the defendants product can reasonably (though mistakenly) be assumed to
originate from the plaintiff, thus deceiving the public into believing that there
is some connection between the plaintiff and defendant which, in fact, does
not exist.

In determining the likelihood of confusion, the Court must consider:

(a) the resemblance between the trademarks;
(b) the similarity of the goods to which the trademark is attached;
(c) the likely effect on the purchaser; and
(d) the registrants express or implied consent and other fair and equitable
considerations.
In this case, the SC employing the dominancy test, concluded that there is
no likelihood of confusion. They materially differ in color scheme, art works
and markings. Further, the two goods are not closely related because he
products belong to different classifications, form, composition and they have
different intended markets or consumers.

Smithklein Beckman vs CA
(Aug 14, 2003)

Facts:
Petitioner in this case filed an application for a patent of a drug used to kill
parasites in animals. Tyco Pharma opposed the application for patent
contending that the product of the petitioner proposed to be patented is
substantially the same as their product. The only difference is the use of one
ingredient. Tyco then contended that there is infringement of patent due to
violation of doctrine of equivalents.

Issue:
Is there infringement?

Held:
The SC in defining the Doctrine of Equivalents stated that infringement
also takes place when a particular devise appropriates a prior invention by
incorporating its innovative concept and although with some modification
and changes performs substantially the same function in substantially the
same way to achieve substantially the same result.

The SC held that this doctrine does not apply in the instant case because
Tyco Pharma failed to substantiate its claim that the two products works the
same way in fighting parasites in animals. Therefore, there was no
infringement.