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VOL. 13, JANUARY 30, 1965 67

Chua Che vs. Philippines Patent Office

No. L-18337. January 30, 1965.

CHUA CHE, petitioner, vs. PHILIPPINES PATENT

OFFICE and SY TUO, respondents.

Patents; Appeal from decisions of Director of Patents

ordinarily allowed only on questions of law.—Ordinarily, only
questions of law should be raised in appeals from decisions of the
Director of Patents. The only exception to this rule is when the
findings of fact in the decision are not supported by substantial
evidence.
Same; Same; Finding of priority of use and adoption of
trademark is one of fact.—The finding of the Director of Patents to
the effect that the oppositor had priority of use and adoption of
the trademark in question is, for all intents and purposes, one of
fact.
Same; Registration of trademark refused where it will cause
confusion with similar mark on goods of different cate-

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Chua Che vs. Philippines Patent Office

gory.—Registration of a trademark should be refused in cases -

where there is a likelihood of confusion, mistake, or deception,
even though the goods fall under different categories.

PETITION for review of a decision of the Director of

Patents.

The facts are stated in the opinion of the Court.

     Chipeco & Alcaraz, Jr. for petitioner.
     Perfecto E. de Vera for respondents.

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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

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Chua Che vs. Philippines Patent Office

the trademark is shown, or by directly impressing- the

mark to the goods.”

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.
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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 pass
off 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 in violation 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”

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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.
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(b) Oppositor’s mark “X-7” is distinctive and his

invented mark and not merely an ordinary,
common and weak mark,
(c) The oppositor and the applicant use the trademark
“X-7” for allied and closely related products.
(d) The oppositor has spent a huge amount by way of
advertising and popularizing his “X-7” brand.
(e) The oppositor has spent a big amount in expanding
his business for the manufacture 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 the name 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 limited the principal
issues, thus—

Oppositor SY TUO—

The registration of the trademark “X-7” in the name of

applicant CHUA CHE will likely mislead 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.” Since opposer has not yet used “X-7”

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Chua Che vs. Philippines Patent Office

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
valuable goodwill in the trademark X-7.
“The products of the parties, while specifically different, are
products intended for use in the 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 also hereby 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 that the use by appellant of the trade-

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mark “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 to use 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 lias
already a right to such a trademark and should, therefore,
be protected. The observation of the Director of Patents to
the effect 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,” 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

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VOL. 13, JANUARY 30, 1965 73

Cayetano vs. Ceguerra

associate those products to a common origin is not

farfetched. Both from the standpoint of priority of use and
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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.

          Bengzon, C.J., Bautista Angelo, Reyes, J.B.L.,

Barrera, Dizon, Regala, Makalintal, Bengzon, J.P., and
Zaldivar, JJ., concur.
     Concepcion, J., took no part.

Decision affirmed.

________________

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