Phil Refining v, Ng Sam Digest

Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, July 30, 1982Facts of the Case: The petitioner Philippine Refining Co. first used'Camia' as trademark for its products in 1922. In 1949, it caused the registration of the said trademark for its lard, butter, cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam filed an application for 'Camia' for its ham product (Class 47), alleging its first use in 1959. The petitioner opposed the said application but the Patent Office allowed the registration of Ng Sam.Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the trademark 'Camia' on said goods would result to confusion as to their origin?HELD: NO. The businesses of the parties are non-competitive and the products are so unrelated that the use of the same trademark will not give rise to confusion nor cause damage to the petitioner. The right to a trademark is a limited one, hence, others may use the same mark on unrelated goods if no confusion would arise.A trademark is designed to identify the user, hence, it should be so distinctive 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, significant and distinctive and capable of indicating origin.'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner as the manufacturer of producer of the goods upon which said mark is used. If a mark is so commonplace, it is apparent that it 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 will not be deceived.Mere classification of the goods cannot serve as the decisive factor in the resolution of whether or not the goods a related. Emphasis should be on the similarity of products involved and not on arbitrary classification of general description of their properties or characteristics.

-----Esso Standard v CA Digest

G.R. No. L-29971

Facts of the Case: The petitioner Esso Standard is a foreign corporation duly licensed to do business in the philippines. it is engaged in the sale of petroleum products which are identified by the trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a business name with the Bureau of Commerce in 1962. United Cigarette is a domestic corporation engaged in the manufacture and sale of cigarettes. it acquired the business from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on its cigarettes.The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an extent that the buying public would be deceived as ti the quality and

origin of the said products to the detriment and disadvantage of its own products. The lower court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there was no infringment in this case.Issue: Is there infringement committed?Ruling: NONE. Infringement is defined by law as the use without the consent of the trademark owner of any reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename which would likely cause confusion or mistake or deceive purchasers or others as to the source or origin of such goods.The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether trademark infringement exists depend on whether or not the goods are so related that the public may be or is actually deceived and misled that they come from the same maker. Under the Related Goods Theory, goods are related when they belong to the same class or have the same descriptive 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.----

CANON KABUSHIKI KAISHA vs. COURT OF APPEALS G.R. No. 120900, July 20, 2000

FACTS:

On January 15, 1985, private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition alleging that it will be damaged by the registration of the trademark CANON in the name of private respondent since they were using the same trademark for their footwear line of products. The private respondent will also use the name Canon for its footwear products.

Based on the records, the evidence presented by petitioner consisted of its certificates of registration for the mark CANON in various countries covering goods belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its Philippine Trademark Registration No. 39398, showing its ownership over the trademark CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of petitioner and giving due course to NSR's application for the registration of the trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually affirmed the decision of the BPTTT.

ISSUE:

Is the use of trademark, CANON, by the private respondent affects the business of Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON?

HELD:

The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to.

The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent.-->American Wire Cable

Of course, as pointed out in the decision now on appeal there are some differences in the mark on the front portion of the box. But they pale into insignificance in view of the close resemblance in the general appearance of the box and the tradenames of the articles. Indeed, measured against the dominant-feature standard, applicant's mark must be disallowed. For, undeniably, the dominant and essential feature of the article is the trademark itself. Unlike in the case of commodities that are ordinarily picked up by the purchaser himself from the grocery or market counters, electric wires are purchased not by their appearance but by the size (voltage) and length and, most importantly, by brand. It is even within layman's knowledge that different brands of wire have different characteristics and properties; and for an essential building item as electric wires and supplies, the owner of the building would not dare risk his property, perhaps his life, on an unknown or untested brand. He would only demand for what is recognized to be the best.

Relying on the doctrine enunciated in the Etepha case7 and the earlier ruling in Lim Hoa vs. Director of Patents,8 applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the buyers and subscribers of the DURAFLEX brand, because electrical wires are of great value and the purchasers thereof are generally intelligent — the architects, engineers and building contractors. It must be realized, however, that except perhaps in big constructions, the designing architect or engineer, or the contractor who will undertake the work of building, does not himself purchase or place the order for the purchase of the materials to be used therein. The task is oftentimes delegated to another. Nor are said technical men the ones personally laying down the wiring system in the building that they could possibly check on whether or not the correct wires are being used. So that even if

the engineer or contractor will specify in the bill of materials the particular brand of wires needed, there is no certainty that the desired product will be acquired. For, unlike the pharmacists or druggists, the dispensers of hardware or electrical supplies are not generally known to pay as much concern to the brand of articles asked for by the customer and of a person who knows the name of the brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote.

Of course, as in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, the appellee had to choose those so closely similar to another's trademark if there was no intent to take advantage of the goodwill generated by the other mark.

FOR THE FOREGOING CONSIDERATIONS, the decision appealed from is hereby set aside, and the application for registration of the trademark DYNAFLEX for electric wires, class 20, is ordered denied. No costs.------

FRUIT OF THE LOOM V. CA133 SCRA 405

FACTS:

1. Petitioner is a corporation duly organized and existing under the laws of the State of Rhode Island, USA. It is the registrant of the trademark FRUIT OF THE LOOM in the Philippine Patent Office and was issued two Certificates of Registration, one of which was in 1957 and the other in 1958.

2. Private Respondent, a domestic corporation, is the registrant of the trademark FRUIT FOR EVE in the Philippine Patent Office.

3. Both are involved in the merchandise of garments.

4. Petitioner filed a complaint for infringement of trademark and unfair competition against private respondent, alleging that: a. The latter’s trademark is confusingly similar to the former’s, both trademarks being used in women’s panties and other textile products. b. That the hang tags used by private respondent is a colorable imitation of those of the petitioner.

5. Private respondent alleged that there was no confusing similarity between the trademarks.

6. At the pre-trial, the following admissions were made:

a. That the registered trademark Fruit for Eve bears the notice “Reg. Phil. Pat. Off.” while that of Fruit of the Loom does not.b. That at the time of its registration, the plaintiff filed no opposition thereto.

7. The lower court rendered a decision in favor of the petitioner, permanently enjoining private respondent from using the trademark Fruit for Eve.

8. Both parties appealed to the former Court of Appeals: a. Petitioner questioned the lower court’s failure to award damages in its favor. b. Private respondent sought the reversal of the lower court’s decision.

9. The former Court of Appeals rendered a decision reversing the lower court’s decision and dismissing the petitioner’s complaint. The petitioner’s motion for reconsideration was denied.

HELD:

In cases involving infringement of trademark brought before this Court, it has been consistently held that there is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion where one is confusingly similar to the other. The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. We have examined the two trademarks as they appear in the hang tags submitted by the parties and We are impressed more by the dissimilarities than by the similarities appearing therein. We hold that the trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to confuse or deceive an ordinary purchaser. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question.

Etepha A.G. vs. Director of Patents16 SCRA 495 (1966)

FACTS: On April 23, 1959, private respondent Westmont Pharmaceuticals, Inc. sought registration of trademark “Atussin” This was objected to by petitioner Etepha, A.G. alleging that it will be detrimental on their part as it is confusingly similar to its Pertussin. Both products deal with the treatment of cough.

ISSUE: Whether or not Attusin may be registered as a trademark.

HELD:

Yes. x x x The validity of a cause for infringment is predicated upon colorable imitation. The phrase “colorable imitaion” denotes such a “close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.”

While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by combination with another word or phrase.”

The two labels are entirely different in colors, contents, arrangement of words theeon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar with the two trademarks.

We cannot escape notice of the fact that the two words do not sound alike – when pronounced.-----------

Lim HOa (protected, cannot copy but mao ni xa kadtong lahi ug brandname but ang picture was that of a Rooster and a Hen. SC said naay infringement kay would likely create confustion to ordinary buyers because Rooster and Hen although diff sexes belong to the same specie manok.

Facts!Lim Hoa fi'e( an a))'ication for re*istration of a tra(emar+ so-in* t-o mi(*et roostersin an attit#(e of combat -it te -or( /antam )rinte( above tem for a foo( seasonin* )ro(#ct. *ricom Deve'o)ment o., nc., o))ose( te a))'ication on te *ro#n(, tat tetra(emar+ so#*t to be re*istere( -as conf#sin*'% simi'ar to its re*ister mar+, consistin* of a )ictoria' re)resentation of a en -it te -or(s Hen /ran( an( $arca $ano+, -ic mar+ or bran( -as a'so #se( on a foo( seasonin* )ro(#ct, before te #se of te tra(emar+ b% tea))'icant. ss#e!s tere an infrin*ement of tra(emar+4--------ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATIONG.R. 103543 July 5, 1993

Facts:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI then filed a petition for certiorari.

Issue:

Are the words PALE PILSEN as part of ABI’s trademark constitute infringement of SMC’s trademark?

Ruling:

No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of ABI’s trademark, are generic words descriptive of the color (“pale“), of a type of beer (“pilsen”), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen, Czechislovakia and became famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark. No one may appropriate generic or descriptive words. They belong to the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE PILSEN product.-----DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES

G.R. No. L-78325 January 25, 1990

FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and manufacturer, PhilPack filed an infringement of copyright complaint against respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the petitioner, to which is deceiving and misleading to the public.

In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners.

The Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties nor on the continued use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.

ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of its logos and bottles.

HELD: Yes. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached; the discerning eye of the observer must focus not only on the precognizant words but also on the other features appearing on both labels. It has been correctly held that side-by-side comparison is not the final test of similarity. In determining whether a trademark has been infringed, we must consider the mark as a whole and not as dissected.

The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this case. The Sunshine label is a colorable imitation of the Del Monte trademark. 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. 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.

With regard to the bottle use, Sunshine despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte.----Case Digest: McDonald's Corporation v. L.C. Big Mak Burger, Inc.MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC., petitioners, vs. L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO, and GRACE HUERTO, respondents.

G.R. No. 143993, August 18, 2004.

CARPIO, J.:

Petitioner McDonald's Corporation ("McDonald's") is a US corporation that operates a global chain of fast-food restaurants, with Petitioner McGeorge Food Industries ("McGeorge"), as the Philippine franchisee.

McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with the US Trademark Registry on 16 October 1979.

Based on this Home Registration, McDonald's applied for the registration of the same mark in the Principal Register of the then Philippine Bureau of Patents, Trademarks and Technology ("PBPTT") (now IPO). On 18 July 1985, the PBPTT allowed registration of the "Big Mac."

Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Respondent corporation's menu includes hamburger sandwiches and other food items.

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big Mak" mark for its hamburger sandwiches, which was opposed by McDonald's. McDonald's also informed LC Big Mak chairman of its exclusive right to the "Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark.

Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors before Makati RTC Branch 137 ("RTC"), for trademark infringement and unfair competition.

RTC rendered a Decision finding respondent corporation liable for trademark infringement and unfair competition. CA reversed RTC's decision on appeal.

1ST ISSUE:W/N respondent corporation is liable for trademark infringement and unfair competition.

Ruling: YesSection 22 of Republic Act No. 166, as amended, defines trademark infringement as follows:Infringement, what constitutes. - Any person who [1] shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name 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 cause confusion 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 [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in "likelihood of

confusion." Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement.

1st element:

A mark is valid if it is distinctive and not merely generic and descriptive.

The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as "Lite" for beer. Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as "Arthriticare" for arthritis medication. On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive and thus valid.

2nd element:

Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Prior valid registrants of the said mark had already assigned his rights to McDonald's.

3rd element:

Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks, namely, confusion of goods (confusion in which the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other) and confusion of business (though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist).

There is confusion of goods in this case since respondents used the "Big Mak" mark on the same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used.

There is also confusion of business due to Respondents' use of the "Big Mak" mark in the sale of hamburgers, the same business that petitioners are engaged in, also results in confusion of business. 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 registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business.

Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy test (similarity of the prevalent features of the competing trademarks that might cause confusion) over the holistic test (consideration of the entirety of the marks as applied to the products, including the labels and packaging).

Applying the dominancy test, Respondents' use of the "Big Mak" mark results in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first two letters.

Lastly, since Section 22 only requires the less stringent standard of "likelihood of confusion," Petitioners' failure to present proof of actual confusion does not negate their claim of trademark infringement.

2ND ISSUE: W/N Respondents committed Unfair Competition

Ruling: Yes.Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:Any person who will employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods, and (2) intent to deceive the public and defraud a competitor.

In the case at bar, Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. Further, Respondents' goods are hamburgers which are also the goods of petitioners. Moreover, there is actually no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak Burger, Inc." This clearly shows respondents' intent to deceive the public.-----Faberge v IAC Digest

G.R. No. 71189, November 4, 1992

Facts of the Case:Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its underwear (briefs) products. The petitioner opposed on the ground that there is similarity with their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause injury to their business reputation. It must be noted that the petitioner never

applied for registration of said trademark for its brief products. The Patent Office allowed Co Beng Kay the registration and this was further affirmed by the Court of Appeals.Issue: Is there confusing similarity between the challenged marks and that its use would likely cause confusion on the part of the purchasers?HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual Property Law) is controlling. The certificate of registration issued confers the exclusive right to use its own symbol only to those goods specified by the first user in the certificate, subject to any conditions or limitations stated therein. Moreover, the two products are so dissimilar that a purchaser of one (a brief) would not be misled or mistaken into buying the other (such as an aftershave).----Hickok v CA Digest

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

Facts:Petitioner is a foreign corporation and all its products are manufactures by Quality House Inc. The latter pays royalty to the petitioner. Hickok registered the trademark 'Hickok' earlier and used it in the sale of leather wallets, key cases, money folds, belts, men’s underwear, neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale of Marikina shoes. Both products have different channels of trade. The Patent Office did not grant the registration, but the Court of Appeals reversed the PPO decision.

Issue: Is there infringement in this case?

NONE. Emphasis should be on the similarity of the products involves and not on the arbitrary classification or the general description of their properties or characteristics. Also, 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 by others on unrelated articles of different kind.There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in red with white background in the middle of 2 branches of laurel (in light gold) while the one used by Sam Bun Liong is the word 'Hickok ' in white with gold background between 2 branches of laurel in red with the word 'shoes' also in red placed below the word 'Hickok'.

-----Acoje Mining vs DP

ABout Lutos. There is infringement because Edible oil and soy sauce belong to diff class. DP decision reversed, reg granted.

----

Luft vs Ngu An : Tangee and Tango. Used for specified chemical , medical and pharmaceutical preparations eg lipstick etc and hair pomade respectively. Court affirmed decision of DP, no infringement. Petitioner unable to ... read on

The only issue for our determination is whether or not the "Tango" trademark is confusingly similar with the "Tangee" trademark, as contended by petitioner herein, as to be likely to be mistaken for the latter by the unsuspecting public.1 Petitioner, which has the burden of proving its contention, has not, however, done so.

To begin with, one of the factors essential therefor is whether or not there is a general similarity in the appearance of the trademarks in question, which can not be determined with reasonable certainty without a physical examination and comparison thereof. Petitioner has rendered such examination impossible, by not introducing any evidence whatsoever as to the appearance of the "Tangee" trademark. What is more, such omission suggests that its appearance is not analogous to that of respondent's "Tango", for, otherwise, petitioner would not have failed to present a sample of its trademark, for comparison with that of respondent Ngo Guan.

Moreover, the word "Tango" has a well established meaning, for it describes a particular dance that is well known in the Philippines. In fact, respondent's label includes the picture of a man and a woman dancing. Again, "Tango" is used by Ngo Guan for no other product than hair pomade, in which petitioner does not deal. Upon the other hand, petitioner's trademark is used for specified chemicals, medical and pharmaceutical preparations — namely: "lipstick, creme rouge, compact rouge, cleansing cream, day cream, night cream, massage cream, face lotion, astringent, face powder, powder compacts, cosmetics for lashes, brows, and hair, hair pencils, nail polish, perfumes, and toilet waters — and it is not claimed that Ngo Guan uses or intends to use its "Tango" trademark on articles of this kind.

WHEREFORE, the decision and the resolution appealed from are hereby affirmed, with costs against petitioner, George W. Luft, Inc. It is so ordered.

Reyes, J.B.L., Barrera, Dizon, Regala, Makalintal, Bengzon, J.P., Zaldivar, Sanchez and Castro, JJ., concur.-----EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC.G.R. No. 100098, December 29, 1995

FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts,

shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation.

Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods.

On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy, declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark.

ISSUE: Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy", meaning, if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result.

HELD: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business.

Although the Court decided in favor of the respondent, the appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to protection from any infringement upon the same. The dissenting opinion of Justice Padilla is more acceptable.-----MARVEX COMMERCIAL CO., INC.,petitioner,vs.PETRA HAWPIA and CO., and THE DIRECTOR OF PATENTS,respondents.Facts of the Case:Petra Hawpia & Co., a partnership duly organized under thelaws of the Philippines filed a petition for the registration of the trademark"LIONPAS" used on medicated plaster, with the Philippine Patent Office,asserting its continuous use in the Philippines since June 9, 1958. The MarvexCommercial Co., Inc., a corporation also duly organized under the laws of thePhilippines, on July 24, 1959 filed an opposition

thereto, alleging that theregistration of such trademark would violate its right to and interest in thetrademark "SALONPAS" used on another medicated plaster, which is registeredits name under Certificate of Registration 5486, issued by the Director of Patentson September 29, 1956, and that both trademarks when used on medicatedplaster would mislead the public as they are confusingly similar.The Director of Patents dismissed the opposition and gave due course to thepetition, stating in part that "confusion, mistake, or deception among thepurchasers will not likely and reasonably occur" when both trademarks areapplied to medicated plaster.Issues:(1) Is the applicant the owner of the trademark "LIONPAS"?;(2) Is the trademark "LIONPAS" confusingly similar to the trademark"SALONPAS"?Held:Is the applicant the owner of the trademark "LIONPAS?"On the 1stissue:The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer oaths or perform other notarial acts and certifiedunder the hand and official seal of the notary or other officer. (Sec. 31, par. 2)In this case, although a sheet of paper is attached to exh. 6, on which istypewritten a certification that the signatures of the presidents of the two namedcompanies (referring to the signatures in exh. 6) "have been duly written bythemselves",this sheet is unmarked, unpaged, unsigned, undated and---