Topic : Ordinary Purchase
Illustrative Case : Converse Rubber vs. Universal Rubber
G.R No. L-27906, January 8, 1987
Facts:
Respondent Universal Rubber applied for the registration of the trademark ‘Universal
Converse and Device’ used on its rubber shoes and rubber slippers. Petitioner Converse
opposed on the ground that the trademark sought to be registered is confusingly similar
to the word ‘Converse’ which is part of its corporate name ‘Converse Rubber Corporation’
and will likely deceive purchasers and cause irreparable injury to its reputation and
goodwill in the Philippines. Respondent argued that the trademarks petitioner uses on its
rubber shoes are ‘Chuck Taylor’ and ‘All Star Device.’ The Director of Patents gave due
course to respondent’s application. MR was denied.
Issue:
Whether or not there is confusing similarity between the two trademarks.
Ruling: YES.
The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in
a circular manner on the side of its rubber shoes. In the same manner, the trademark of
petitioner which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base
attached to the side of its rubber shoes. The determinative factor in ascertaining whether
or not marks are confusingly similar to each other “is not whether the challenged mark
would actually cause confusion or deception of the purchasers but whether the use of
such mark would likely cause confusion or mistake on the part of the buying public. It
would be sufficient, for purposes of the law that the similarity between the two labels is
such that there is a possibility or likelihood of the purchaser of the older brand mistaking
the new brand for it.” Even if not all the details just mentioned were identical, with the
general appearance alone of the two products, any ordinary, or even perhaps even [sic] a
not too perceptive and discriminating customer could be deceived … “
But even assuming, arguendo, that the trademark sought to be registered by
respondent is distinctively dissimilar from those of the petitioner, the likelihood of
confusion would still subsists, not on the purchaser’s perception of the goods but on the
origins thereof. By appropriating the word “CONVERSE,” respondent’s products are likely
to be mistaken as having been produced by petitioner. “The risk of damage is not limited
to a possible confusion of goods but also includes confusion of reputation if the public
could reasonably assume that the goods of the parties originated from the same source.
Topic : Doctrine of Secondary Meaning
Illustrative Case : Ang vs. Teodoro
74 Phil 50 (1942)
Facts:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-
mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor
baseballs since 1910. On September 29, 1915, he formally registered it as trade-mark
and as trade-name on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts
on April 11, 1932, and established a factory for the manufacture of said articles in the
year 1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the
grounds that the two trademarks are dissimilar and are used on different and non-
competing goods; that there had been no exclusive use of the trade-mark by the plaintiff;
and that there had been no fraud in the use of the said trade-mark by the defendant
because the goods on which it is used are essentially different from those of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director of Commerce
to cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured and
sold by her.
Thus, this case, a petition for certiorari.
Issue:
Are the goods or articles or which the two trademarks are used similar or belong
to the same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to the
same class of merchandise as shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and added that
“although two non-competing articles may be classified under to different classes by the
Patent Office because they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trademarks would be likely to
cause confusion as to the origin, or personal source, of the second user’s goods. They
would be considered as not falling under the same class only if they are so dissimilar or
so foreign to each other as to make it unlikely that the purchaser would think that the
first user made the second user’s goods”.
Topic :Patentability
Illustrative Case : Creser Precision Systems Inc. Vs. Court of Appeals
G.R No. 118708
FACTS:
Private respondent Floro is a domestic corporation engaged in the manufacture,
production, distribution and sale of military armaments, munitions, airmunitions and
other similar materials. OnJan. 23, 1990, private respondent Floro was granted by the
Bureau of Patents, Trademarks and Technology Transfer a Letters Patent covering an
aerial fuze.
However, Floro’s President, Mr. Gregory Floro discovered that petitioner Creser
submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP)
for testing and that petitioner is claiming the aerial fuze as its own and planning to bid
and manufacture it commercially.
Petitioner Creser contends that it is the first, true and actual inventor of an aerial
fuze denominated as which it developed as early as December 1981 under the Self-
Reliance Defense Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner
began supplying the AFP with the said aerial fuze; that private respondent's aerial fuze is
identical in every respect to the petitioner's fuze; and that the only difference between
the two fuzes are miniscule and merely cosmetic in nature.
Petitioner prayed that a temporary restraining order and/or writ of preliminary
injunction be issued enjoining private respondent including any and all persons acting on
its behalf from manufacturing, marketing and/or profiting therefrom, and/or from
performing any other act in connection therewith or tending to prejudice and deprive it of
any rights, privileges and benefits to which it is duly entitled as the first, true and actual
inventor of the aerial fuze.
RTC issued a TRO and later on granted the preliminary injunction filed by plaintiff
against private respondent. While CA reversed the RTC’s decision and dismissed the
complaint filed by petitioner.
ISSUE: Whether Petitioner can file an action for infringement not as a patentee but as an
entity in possession of a right, title or interest in and to the patented invention?
RULING:
NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing any right,
title or interest in and to the patented invention, whose rights have been infringed, may
bring a civil action before the proper Court of First Instance (now Regional Trial court), to
recover from the infringer damages sustained by reason of the infringement and to
secure an injunction for the protection of his right. . . .
There can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the patent arises alone
from the grant of patent. In short, a person or entity who has not been granted letters
patent over an invention and has not acquired any light or title thereto either as assignee
or as licensee, has no cause of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent.
Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal
basis or cause of action to institute the petition for injunction and damages arising from
the alleged infringement by private respondent. While petitioner claims to be the first
inventor of the aerial fuze, still it has no right of property over the same upon which it can
maintain a suit unless it obtains a patent therefor.
