Topic: Trademark c.

The dissimilarities between the marks are so distinct, thus,

Case No.: G.R. No. 198889 | January 20, 2016 confusion is very unlikely: While Opposer's mark is a plain word
Case Name: UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, mark, Respondent-applicant's mark "PAPA BOY & DEVICE" is
INC., WITH NUTRI-ASIA, INC. AS THE SURVIVING ENTITY), Petitioner, v. much more intricate and distinctive such as Opposer's mark not
FIESTA BARRIO MANUFACTURING CORPORATION, Respondent. having the words "Lechon Sauce" printed inside a blue ribbon-like
Ponente: LEONARDO-DE CASTRO, J.: device which is illustrated below the words "PAPA BOY",
Opposer's mark not having a prominent smiling hog-like
Relevant Facts: character gesturing a thumbs-up sign and wearing a Filipino hat
 Barrio Fiesta filed an application with the IPO for the mark “PAPA and scarf stands beside the words "PAPA BOY", and Opposer's
BOY & DEVICE” for a “lechon sauce.” mark not having the words "Barrio Fiesta" albeit conspicuously
 UFC opposed the application. It contended that “PAPA BOY & displayed above the mark, all which leave no doubt in the
DEVICE” is confusingly similar with its “PAPA” marks and its consumer's mind on the product that he is purchasing;
variations inasmuch as the former incorporates the term “PAPA,” d. Both of their products are unrelated goods. One covers lechon
which is the dominant feature of petitioner’s “PAPA” marks. UFC sauce, while the other is banana ketchup sauce.
averred that the use of “PAPA BOY & DEVICE” mark for lechon
sauce product, if allowed, would likely lead the consuming public  The IPO-BLA rendered a Decision on March 26, 2008 sustaining
to believe that said lechon sauce product originates from or is petitioner's Opposition and rejecting respondent's application for
authorized by UFC, and that the “PAPA BOY & DEVICE” mark is a "PAPA BOY & DEVICE." On Appeal to the CA, said Court used the
variation or derivative of UFC’s “PAPA” marks. UFC argued that Holistic Test and ruled that PAPA BOY is not confusingly similar
this was especially true considering that UFC’s ketchup product to UFC’s PAPA KETSARAP, BANANA CATSUP etc. Although on its
and Barrio Fiesta’s lechon sauce product are related articles and label the word "PAPA" is prominent, the trademark should be
both fall under the same class which is Class 30 of the Nice taken as a whole and not piecemeal. The difference between the
Classifications. two marks are conspicuous and noticeable.
 Barrio Fiesta averred the following relevant contentions; Issue:
Whether or not PAPA BOY AND DEVICE is confusingly similar to UFC’s
a. Contrary to UFC's belief, the dominant features of Barrio Fiesta’s PAPA as to warrant the denial of Barrio Fiesta’s application to register
mark "PAPA BOY & DEVICE" are the words "PAPA BOY" and the said mark?
representation of a smiling hog-like character gesturing the
thumbs-up sign and wearing a traditional Filipino hat and scarf Ratio Decidendi:
while the dominant feature of Opposer's mark "PAPA KETSARAP" Yes.
are the words "Papa" and "Ketsarap", not the word "Papa"; and Supreme Court finds that the Court of Appeals erred in applying the
the word "Ketsarap " is more prominently printed and displayed holistic test and in reversing and setting aside the decision of the IPO-BLA
in the foreground than the word "Papa" for which reasons and that of the IPO Director General, both of which rejected respondent's
opposer's reference to the Dominancy Test fails; application for the mark "PAPA BOY & DEVICE."
b. Barrio Fiesta's mark "PAPA BOY & DEVICE" is neither identical
nor confusingly similar to UFC's mark "PAPA KETSARAP": Barrio Fiesta’s mark cannot be registered. The mark is related to a
Respondent-applicant's mark "PAPABOY & DEVICE" is an product, lechon sauce, an everyday all-purpose condiment and sauce, that
arbitrary mark which differs in overall sound, spelling, meaning, is not subjected to great scrutiny and care by the casual purchaser, who
style, configuration, presentation, and appearance from Opposer's knows from regular visits to the grocery store under what aisle to find it,
mark "PAPA KETSARAP"; in which bottle it is contained, and approximately how much it costs. Since
UFC’s product, catsup, is also a household product found on the same
grocery aisle, in similar packaging, the public could think that UFC had WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23,
expanded its product mix to include lechon sauce, and that the “PAPA 2011 Decision and the October 4, 2011 Resolution of the Court of
BOY” lechon sauce is now part of the “PAPA” family of sauces, which is not Appeals in CA-G.R. SP No. 107570, and REINSTATE the March 26, 2008
unlikely considering the nature of business that UFC is in. Thus, if allowed Decision of the Bureau of Legal Affairs of the Intellectual Property Office
registration, confusion of business may set in, and UFC’s hard-earned (IPO-BLA) and the January 29, 2009 Decision of the Director General of
goodwill may be associated to the newer product introduced by Barrio the IPO.
Fiesta, all because of the use of the dominant feature of UFC’s mark on
Barrio Fiesta’s mark, which is the word “PAPA.” The words “Barrio Fiesta”
are not included in the mark, and although printed on the label of Barrio
Fiesta’s lechon sauce packaging, still do not remove the impression that
“PAPA BOY” is a product owned by the manufacturer of “PAPA” catsup, by
virtue of the use of the dominant feature. It is possible that UFC could
expand its business to include lechon sauce, and that would be well within
UFC’s rights, but the existence of a “PAPA BOY” lechon sauce would
already eliminate this possibility and deprive UFC of its rights as an owner
of a valid mark included in the Intellectual Property Code.

Section 168. Unfair Competition, Rights, Regulation and Remedies. -

168.1. A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others,
whether or not a registered mark is employed, has a property right in
the goodwill of the said goods, business or services so identified, which
will be protected in the same manner as other property rights.

The registered trademark owner may use his mark on the same or
similar products, in different segments of the market, and at different
price levels depending on variations of the products for specific
segments of the market. The Court has recognized that the registered
trademark owner enjoys protection in product and market areas that are
the normal potential expansion of his business.

A scrutiny of petitioner's and respondent's respective marks would

show that the IPO-BLA and the IPO Director General correctly found the
word "PAPA" as the dominant feature of petitioner's mark "PAPA
KETSARAP." Contrary to respondent's contention, "KETSARAP" cannot
be the dominant feature of the mark as it is merely descriptive of the
product. Furthermore, it is the "PAPA" mark that has been in commercial
use for decades and has established awareness and goodwill among
consumers.

Dispositive Portion