UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner, The right to register trademark is based on ownership.

4 When the applicant

vs. is not the owner of the trademark being applied for, he has no right to apply
GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his for the registration of the same. 5 Under the Trademark Law only the owner
capacity as Director of Patents, respondents. of the trademark, trade name or service mark used to distinguish his goods,
business or service from the goods, business or service of others is entitled
FACTS : The Court affirms respondent Director of Patent's decision declaring to register the same. 6
respondent General Milling Corporation as the prior user of the trademark
"All Montana" on wheat flour in the Philippines and ordering the cancellation The term owner does not include the importer of the goods bearing the
of the certificate of registration for the same trademark previously issued in trademark, trade name, service mark, or other mark of ownership, unless
favor of petitioner Unno Commercial Enterprises, Incorporated, it appearing such importer is actually the owner thereof in the country from which the
that Unno Commercial Enterprises, Inc. merely acted as exclusive distributor goods are imported. A local importer, however, may make application for the
of All Montana wheat flour in the Philippines. Only the owner of a trademark, registration of a foreign trademark, trade name or service mark if he is duly
trade name or service mark may apply for its registration and an importer, authorized by the actual owner of the name or other mark of ownership. 7
broker, indentor or distributor acquires no rights to the trademark of the
goods he is dealing with in the absence of a valid transfer or assignment of Thus, petitioner's contention that it is the owner of the mark "All Montana"
the trade mark. because of its certificate of registration issued by the Director of Patents,
must fail, since ownership of a trademark is not acquired by the mere fact of
On December 11, 1962, respondent General Milling Corporation filed an registration alone. 9 Registration merely creates a prima facie presumption of
application for the registration of the trademark "All Montana" to be used in the validity of the registration, of the registrant's ownership of the trademark
the sale of wheat flour. In view of the fact that the same trademark was and of the exclusive right to the use thereof. 10 Registration does not perfect
previously, registered in favor of petitioner Unno Commercial Enterprises, a trademark right. 11 As conceded itself by petitioner, evidence may be
Inc.. Respondent General Milling Corporation, in its application for presented to overcome the presumption. Prior use by one will controvert a
registration, alleged that it started using the trademark "All Montana" on claim of legal appropriation, by subsequent users. In the case at bar, the
August 31, 1955 and subsequently was licensed to use the same by Director of Patents found that "ample evidence was presented in the record
Centennial Mills, Inc. by virtue of a deed of assignment executed on that Centennial Mills, Inc. was the owner and prior user in the Philippines of
September 20, 1962. On the other hand petitioner Unno Commercial the trademark 'All Montana' through a local importer and broker. Use of a
Enterprises, Inc. argued that the same trademark had been registered in its trademark by a mere importer, indentor or exporter (the Senior Party herein)
favor on March 8, 1962 asserting that it started using the trademark on June inures to the benefit of the foreign manufacturer whose goods are Identified
30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm. by the trademark. The Junior Party has hereby established a continuous
chain of title and, consequently, prior adoption and use" and ruled that
The Director of Patents, after hearing, ruled in favor of respondent General "based on the facts established, it is safe to conclude that the Junior Party
Milling Corporation. and rendered its decision as follows: has satisfactorily discharged the burden of proving priority of adoption and
use and is entitled to registration." It is well-settled that we are precluded
from making further inquiry, since the findings of fact of the Director of
ISSUE : Whether or not director of patents can issue cancellation of the
Patents in the absence of any showing that there was grave abuse of
certification of registration?
discretion is binding on us 12 and the findings of facts by the Director of
Patents are deemed conclusive in the Supreme Court provided that they are
HELD : The Court finds without merit petitioner's argument that the Director supported by substantial evidence. 13 Petitioner has failed to show that the
of Patents could not order the cancellation of' its certificate of registration in findings of fact of the Director of Patents are not substantially supported by
an interference proceeding and that the question of whether or not a evidence nor that any grave abuse of discretion was committed.
certificate of registration is to be cancelled should have been brought in
cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in
Trademark Cases, 14 the Director of Patents is expressly authorized to order
the cancellation of a registered mark or trade name or name or other mark of
ownership in an inter partes case, such as the interference proceeding at
bar.
Bata Industries v CA Digest MIRPURI vs. CA G.R. No. 114508, November 19, 1999
Facts: In 1970, Escobar filed an application with the Bureau of Patents for the
G.R. No. L-53672, May 31, 1982 registration of the trademark “Barbizon” for use in horsiers and ladies undergarments
(IPC No. 686). Private respondent reported Barbizon Corporation, a corporation
organized and doing business under the laws of New York, USA, opposed the
Facts:  application. It was alleged that its trademark is confusingly similar with that of Escobar
The respondent New Olympian Rubber Products sought to register the mark and that the registration of the said trademark will cause damage to its business
"BATA" for casual rubber shoe products, alleging it had used the said mark reputation and goodwill. In 1974, the Director of Patents gave due course to the
since the 1970s. The petitioner, a Canadian corporation opposed with its application. Escobar later assigned all his rights and interest over the trademark to
allegations that it owns and has not abandoned said trademark. The petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the
petitioner has no license to do business in the Philippines and the trademark trademark required under the Philippine Trademark Law. Due to this failure, the
has never been registered in the Philippines by any foreign entity. Bata Bureau cancelled Escobar’s certificate of registration. In 1981, Escobar and petitioner
Industries does not sell footwear under the said trademark in the Philippines separately filed this application for registration of the same trademark. (IPC 2049).
nor does it have any licensing agreement with any local entity to sell its Private respondent opposed again. This time it alleged (1) that the said trademark
was registered with the US Patent Office; (2) that it is entitled to protection as well-
product. known mark under Article 6 bis of the Paris Convention, EO 913 and the two
Memoranda of the Minister of Trade and Industry and (3) that its use on the same
Evidence show that earlier, even before the World War II, Bata shoes made class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC.
by Gerbec and Hrdina (Czech company) were already sold in the country. Petitioner raised the defense of Res Judicata.
Some shoes made by the petitioner may have been sold in the Philippines
ntil 1948. On the other hand, respondent spent money and effort to Issue: One of the requisites of res judicata is identical causes of action. Do IPC No.
popularize the trademark "BATA" since the 70's. Moreover, it also secures 3 686 and IPC No. 2049 involve the same cause of action?
copyright registrations for the word "BATA". The Philippine Patent Office
(PPO) dismissed the opposition by the petitioner while the Court of Appeals Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC
2049 raised the issue of ownership, the first registration and use of the trademark in
(CA) reversed said decision. However, a 2nd resolution by the CA affirmed the US and other countries, and the international recognition of the trademark
the PPO decision. established by extensive use and advertisement of respondents products for over 40
years here and abroad. These are different from the issues of confessing similarity
Issue: Does the petitioner have the right to protect its goodwill alleged and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but
to be threatened with the registration of the mark? this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems
from the respondents claims originator of the word and symbol “Barbizon”, as the first
NO. Bata Industries has no Philippine goodwill that would be damaged by the and registered user of the mark attached to its products which have been sold and
registration of the mark. advertised would arise for a considerable number of years prior to petitioner’s first
Any slight goodwill obtained by the product before World War II was application. Indeed, these are substantial allegations that raised new issues and
necessarily gave respondents a new cause of action.
completely abandoned and lost in the more than 35 years that passed since Moreover, the cancellation of petitioner’s certificate registration for failure to file the
Manila's liberation from Japan. The petitioner never used the trademark affidavit of use arose after IPC 686. This gave respondent another cause to oppose
either before or after the war. It is also not the successor-in-interest of the second application.
Gerbec & Hrdina and there there was no privity of interest between them, It is also to be noted that the oppositions in the first and second cases are based on
Furthermore, the Czech trademark has long been abandoned in different laws. Causes of action which are distinct and independent from each other,
Czechoslovakia. although out of the same contract, transaction, or state of facts, may be sued on
separately, recovery on one being no bar to subsequent actions on others. The mere
fact that the same relief is sought in the subsequent action will not render the
judgment in the prior action operating as res judicata, such as where the actions are
based on different statutes.
ANA L. ANG, petitioner, The doctrine of "secondary meaning" in trade-mark is to the effect
vs. that a word or phrase originally incapable of exclusive appropriation
TORIBIO TEODORO, respondent. with reference to an article of the market, because geographically or
otherwise descriptive, might nevertheless have been used so long
FACTS : Petitioner has continuously used “Ang Tibay” both as trademark and so exclusively by one producer with reference to his article
and tradename in manufacture and sale of slippers, shoes and indoor that, in that trade and to that branch of the purchasing public, the
baseballs since 1910 and paid for advertising expense for such. word or phrase has come to mean that the article was his product.
Respondent registered the same for pants and shirts on 1932 without
expending for advertisement. For such reason petitioner eventually filed a
case.

The trial court ruled in favor of the respondent on the grounds that the
two trademarks are dissimilar and are used on different noncompeting
goods.

ISSUE: Whether or not respondent is guilty of infringement?

HELD : The courts have come to realize that there can be unfair
competition or unfair trading even if the goods are non-competing,
and that such unfair trading can cause injury or damage to the first
user of a given trade-mark, first, by prevention of the natural
expansion of his business and, second, by having his business
reputation confused with and put at the mercy of the second user.
Then noncompetitive products are sold under the same mark, the gradual
whittling away or dispersion of the identity and hold upon the public mind
of the mark created by its first user, inevitably results. The original owner
is entitled to the preservation of the valuable link between him and the
public that has been created by his ingenuity and the merit of his wares
or services. Experience has demonstrated that when a well-known trade-
mark is adopted by another even for a totally different class of goods, it is
done to get the benefit of the reputation and advertisements of the
originator of said mark, to convey to the public a false impression of
some supposed connection between the manufacturer of the article sold
under the original mark and the new articles being tendered to the public
under the same or similar mark. As trade has developed and commercial
changes have come about, the law of unfair competition has expanded to
keep pace with the times and the element of strict competition in itself
has ceased to be the determining factor. The owner of a trade-mark or
trade-name has a property right in which he is entitled to protection, since
there is damage to him from confusion of reputation or goodwill in the
mind of the public as well as from confusion of goods. The modern trend
is to give emphasis to the unfairness of the acts and to classify and treat
the issue as a fraud.
 Trademarks Sta. Ana vs. Maliwat

CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO

G.R. No. L-18337. January 30, 1965
FACTS:
Facts:
 On 21 June 1962, Florentino Maliwat filed with the Patent Office an
On October 30, 1958, Chua Che presented with the Philippines Patent Office application for registration of the trademark FLORMANN, which is
a petition for the registration in his favor the trade name of "X-7". Chua Che used on shirts, pants, jackets and shoes for ladies, men, and children,
declares that the trade name was used by him in commerce within the claiming first use in commerce of the said mark on 15 January 1962.
Philippines on June 10, 1957, and had been continuously used by him in
o The claim of first use was subsequently amended to 6 July
trade in the Philippines for more than one year.
1955.
Sy Tuo opposed, claiming that he owns the trademark and had been using it  On 18 September 1962, Jose P. Sta. Ana filed an application for the
since 1951 as mark for perfume, lipstick, and nail polish as opposed to Chua registration of the tradename FLORMEN SHOE
Che's use which was admittedly only in 1957. MANUFACTURERS which is used in the business of manufacturing
ladies' and children's shoes. His claim of first use in commerce of the
The Director of Patents denied the application for use on soap Class 51, said tradename is 8 April 1959.
being manufactured by said Chua Che, upon the opposition of respondent Sy  In view of the admittedly confusing similarity between the trade-
Tuo. The Director of Patents held that the products of the parties, while mark FLORMANN and the tradename FLORMEN, the Director of
specifically different, are products intended for use in the home and usually Patents declared an interference.
have common purchasers. Furthermore, the use of X-7 for laundry soap is  Director: Gave due course to Maliwat's application and denied that
but a natural expansion of business of the opposer. of Sta. Ana.

Issue:
ISSUE + RULING:
WON allowing Chua Che to register the same mark for laundry soap would
likely to cause confusion on the purchasers of X-7 products by SY Tou.

Ruling:
Whether or not Maliwat was the prior adopter and user of the mark? - YES
Yes. 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  An application for registration is not bound by the date of first use as
though the goods fall into different categories stated by him in his application, but is entitled to carry back said
stated date of first use to a prior date by proper evidence; but in
The products of appellee are common household items now-a-days, in the order to show an earlier date of use, he is then under a heavy
same manner as laundry soap. The likelihood of purchasers to associate burden, and his proof must be clear and convincing
these products to a common origin is not far-fetched. Both from the  In the case at bar, the proof of date of first use (1953), earlier than
standpoint of priority of use and for the protection of the buying public and that alleged in Maliwat's application (1962), can be no less than clear
appellee's rights to the trademark "X-7", it becomes manifest that the and convincing because the fact was stipulated and no proof was
registration of said trademark in favor of applicant-appellant should be needed.
denied. o There was an agreement in the stipulation of facts by the
parties that Maliwat has been engaged in the manufacture
and sale of men's wear, shirts, polo shirts, and pants, since
 1953, using FLORMANN as its trademark. That Mr. tendency of tailors and haberdashers to expand their business into
Florentino Maliwat began using the trademark FLORMANN shoemaking, are not controlling.
on shoes on January 1962 and the firm name FLORMANN  The meat of the matter is the likelihood of confusion, mistake or
SHOES under which these shoes with the trademark deception upon purchasers of the goods of the junior user of the
FLORMANN were manufactured and sold was first used on mark and the goods manufactured by the previous user.
January 1962, having also been registered with the Bureau of
Commerce on January 1962 DISPOSITION: Director of Patent’s decision AFFIRMED.
 Maliwat would confine Sta. Ana’s use of the mark FLORMANN to
tailoring and haberdashery only, but not on shoes, on the ground
that he had used the name FLORMEN on shoes since 1959, while the
Sta. Ana used his mark on shoes only in 1962.
 Modern law recognizes that the protection to which the owner of a
trademark is entitled is not limited to guarding his goods or business
from actual market competition with identical or similar products of
the parties, but extends to all cases in which the use by a junior
appropriator of a trademark or tradename is likely to lead to a
confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his
business into the field or is in any way connected with the activities
of the infringer; or when it forestalls the normal potential expansion
of his business
o Director of Patents: I believe that it is now the common
practice among local tailors and haberdashers to branch out
into articles of manufacture which have, one way or another,
some direct relationship with or appurtenance to garments
or attire to complete one's wardrobe such as belts, shoes,
handkerchiefs, and the like, xxx. It goes without saying that
shoes on one hand and shirts, pants and jackets on the other,
have the same descriptive properties for purposes of our
Trademark Law.
 Mere dissimilarity of goods should not preclude relief where the
junior user's goods are not too different or remote from any that the
owner would be likely to make or sell; and in the present case,
wearing apparel is not so far removed from shoes as to preclude
relief, any more than the pancake flour is from syrup or sugar cream
or baking powder from baking soda or cosmetics and toilet goods
from ladies' wearing apparel and costume jewelry
 Republic Act No. 166, as amended, provides:
 The provision does not require that the articles of manufacture of the
previous user and the late user of the mark should possess the same
descriptive properties or should fall into the same categories as to
bar the latter from registering his mark in the principal register
 Therefore, whether or not shirts and shoes have the same descriptive
properties, or whether or not it is the prevailing practice or the
Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, Esso Standard v CA Digest
July 30, 1982 Facts of the Case: 

Facts of the Case: The petitioner Philippine Refining Co. first used'Camia' as The petitioner Esso Standard is a foreign corporation duly licensed
trademark for its products in 1922. In 1949, it caused the registration of the to do business in the Philippines. it is engaged in the sale of
said trademark for its lard, butter, cooking oil, detergents, polishing materials petroleum products which are identified by the trademark 'Esso'.
and soap products. In 1960, Ng Sam filed an application for 'Camia' for its Esso is a successor of Standard Vacuum Oil Co, it registered as a
ham product (Class 47), alleging its first use in 1959. The petitioner opposed business name with the Bureau of Commerce in 1962. United
the said application but the Patent Office allowed the registration of Ng Sam. Cigarette is a domestic corporation engaged in the manufacture
and sale of cigarettes. it acquired the business from La Oriental
Issue: Is the product of Ng Sam (Ham) and those of the petitioner so
Tobacco Corp including patent rights, once of which is the use of
related that the use of the trademark 'Camia' on said goods would
'Esso' on its cigarettes.
result to confusion as to their origin?
The petitioner filed a trademark infringement case alleging that it
HELD: NO. The businesses of the parties are non-competitive and the
acquired goodwill to such an extent that the buying public would be
products are so unrelated that the use of the same trademark will not give
deceived as to the quality and origin of the said products to the
rise to confusion nor cause damage to the petitioner. The right to a
detriment and disadvantage of its own products. The lower court
trademark is a limited one, hence, others may use the same mark on
found United Cigarette guilty of infringement. Upon appeal, the
unrelated goods if no confusion would arise.
Court of Appeals ruled that there was no infringement in this case.
A trademark is designed to identify the user, hence, it should be so distinctive
Issue: Is there infringement committed?
and sufficiently original so as to enable those who see it to recognize
instantly its source or origin. A trademark must be affirmative and definite, Ruling: NONE. Infringement is defined by law as the use without
significant and distinctive and capable of indicating origin. the consent of the trademark owner of any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
'Camia' as a trademark is far from being distinctive, It in itself does not
tradename which would likely cause confusion or mistake or
identify the petitioner as the manufacturer of producer of the goods upon
deceive purchasers or others as to the source or origin of such
which said mark is used. If a mark is so commonplace, it is apparent that it
goods.
can't identify a particular business and he who adopted it first cannot be
injured by any subsequent appropriation or imitation by others and the public The products of both parties (Petroleum and cigarettes) are non-
will not be deceived. competing. But as to whether trademark infringement exists
depend on whether or not the goods are so related that the public
Mere classification of the goods cannot serve as the decisive factor in the
may be or is actually deceived and misled that they come from the
resolution of whether or not the goods a related. Emphasis should be on the
same maker. Under the Related Goods Theory, goods are related
similarity of products involved and not on arbitrary classification of general
when they belong to the same class or have the same descriptive
description of their properties or characteristics.
properties or when they have same physical attributes. In these
case, the goods are absolutely different and are so foreign from
each other it would be unlikely for purchasers to think that they
came from the same source. Moreover, the goods flow from
different channels of trade and are evidently different in kind and
nature.
 HICKOK MANUFACTURING CO., INC., petitioner, vs. respondent's registration of the same trademark for his unrelated and non-
COURT OF APPEALS and SANTOS LIM BUN LIONG, respondents. competing product of Marikina shoes.
Facts:
Petitioner Hickok Manufacturing Co., (Hickok), is a foreign corporation,
which the registered the trademark HICKOK for its diverse articles of leather
wallets, key cases, money folds made of leather, belts, men’s briefs,
neckties, handkerchiefs and men’s socks. On the other hand, Lim Bun Liong
(respondent) is registrant of a trademark of the same name HICKOK for its
Marikina shoes. Hickok filed a petition to cancel the respondent’s
registration of the trademark. The Director of Patent granted the petition of
Hickok, but on appeal the Court of Appeals reversed the director’s decision
and dismissed Hickok’s original petition for cancellation on the ground that
the trademarks of petitioner and that of the registrant were different in
design and coloring of, as well as in the words on the ribbons. Hence, this
present appeal.

Issue:
Whether or not the registration of Lim Bun Liong’s trademark for his Hickok
Marikina shoes can be allowed.

Held:
The Court affirmed the appellate court’s decision. While the law does not
require that the competing trademarks be identical, the two marks must be
considered in their entirety, as they appear in the respective labels, in
relation to the goods to which they are attached.

Emphasis should be on the similarity of the products involved and

not on the arbitrary classification or general description of their properties
or characteristics and that the mere fact that one person has adopted 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.
Petitioner, a foreign corporation registered the trademark for its diverse
articles of men's wear such as wallets, belts and men's briefs which are all
manufactured here in the Philippines but are so labelled as to give the
misimpression that the said goods are of foreign (stateside) manufacture
and that respondent secured its trademark registration exclusively for shoes
(which neither petitioner nor the licensee ever manufactured or traded in)
and which are clearly labelled in block letters as "Made in Marikina, Rizal,
Philippines," no error can be attributed to the appellate court in upholding