G.R. No.

115758 March 19, 2002

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY, petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM CHAY, respondents.

DE LEON, JR., J.:

Before us is a petition for review on certiorari of the Decision1 dated May 24, 1993 of the Court of Appeals setting aside and declaring as null
and void the Orders2 dated February 10, 1992 and March 19, 1992 of the Regional Trial Court, Branch 90, of Quezon City granting the issuance
of a writ of preliminary injunction.

The facts of the case are as follows:

On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of
preliminary injunction, docketed as Civil Case No. Q-91-10926, against the respondents Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.

The petitioner's complaint alleges that petitioner, doing business under the name and style of KEC Cosmetics Laboratory, is the registered
owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358
and No. 0-3678; that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same
from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980 under
Registration Certificate No. 4529; that respondent Summerville advertised and sold petitioner's cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the decline in the petitioner's business sales
and income; and, that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner.

The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer and
distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental
agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification; and, that the
authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Suproducts in the Philippines
had already been terminated by the said Taiwanese Manufacturing Company.

After due hearing on the application for preliminary injunction, the trial court granted the same in an Order dated February 10, 1992, the
dispositive portion of which reads:

ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business under the style of KEC Cosmetic Laboratory, for preliminary injunction,
is hereby granted. Consequentially, plaintiff is required to file with the Court a bond executed to defendants in the amount of five hundred
thousand pesos (P500,000.00) to the effect that plaintiff will pay to defendants all damages which defendants may sustain by reason of the
injunction if the Court should finally decide that plaintiff is not entitled thereto.

SO ORDERED.3

The respondents moved for reconsideration but their motion for reconsideration was denied by the trial court in an Order dated March 19,
1992.4

On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals, docketed as CA-G.R. SP No. 27803, praying for the
nullification of the said writ of preliminary injunction issued by the trial court. After the respondents filed their reply and almost a month after
petitioner submitted her comment, or on August 14 1992, the latter moved to dismiss the petition for violation of Supreme Court Circular No.
28-91, a circular prohibiting forum shopping. According to the petitioner, the respondents did not state the docket number of the civil case in
the caption of their petition and, more significantly, they did not include therein a certificate of non-forum shopping. The respondents
opposed the petition and submitted to the appellate court a certificate of non-forum shopping for their petition.

On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of the respondents, the dispositive portion
of which reads:

WHEREFORE, the petition is hereby given due course and the orders of respondent court dated February 10, 1992 and March 19, 1992
granting the writ of preliminary injunction and denying petitioners' motion for reconsideration are hereby set aside and declared null and void.
Respondent court is directed to forthwith proceed with the trial of Civil Case No. Q-91-10926 and resolve the issue raised by the parties on
the merits.

SO ORDERED.5

In granting the petition, the appellate court ruled that:

The registration of the trademark or brandname "Chin Chun Su" by KEC with the supplemental register of the Bureau of Patents, Trademarks
and Technology Transfer cannot be equated with registration in the principal register, which is duly protected by the Trademark
Law.1âwphi1.nêt

xxx xxx xxx

As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, 393:

"Registration in the Supplemental Register, therefore, serves as notice that the registrant is using or has appropriated the trademark. By the
very fact that the trademark cannot as yet be on guard and there are certain defects, some obstacles which the use must still overcome
before he can claim legal ownership of the mark or ask the courts to vindicate his claims of an exclusive right to the use of the same. It would
be deceptive for a party with nothing more than a registration in the Supplemental Register to posture before courts of justice as if the
registration is in the Principal Register.

The reliance of the private respondent on the last sentence of the Patent office action on application Serial No. 30954 that 'registrants is
presumed to be the owner of the mark until after the registration is declared cancelled' is, therefore, misplaced and grounded on shaky
foundation. The supposed presumption not only runs counter to the precept embodied in Rule 124 of the Revised Rules of Practice before the
Philippine Patent Office in Trademark Cases but considering all the facts ventilated before us in the four interrelated petitions involving the
petitioner and the respondent, it is devoid of factual basis. As even in cases where presumption and precept may factually be reconciled, we
have held that the presumption is rebuttable, not conclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30, 1958, Unreported). One may be
declared an unfair competitor even if his competing trademark is registered (Parke, Davis & Co. v. Kiu Foo & Co., et al., 60 Phil 928; La Yebana
Co. v. chua Seco & Co., 14 Phil 534)."6

The petitioner filed a motion for reconsideration. This she followed with several motions to declare respondents in contempt of court for
publishing advertisements notifying the public of the promulgation of the assailed decision of the appellate court and stating that
genuine Chin Chun Su products could be obtained only from Summerville General Merchandising and Co.

In the meantime, the trial court went on to hear petitioner's complaint for final injunction and damages. On October 22, 1993, the trial court
rendered a Decision7 barring the petitioner from using the trademark Chin Chun Su and upholding the right of the respondents to use the
same, but recognizing the copyright of the petitioner over the oval shaped container of her beauty cream. The trial court did not award
damages and costs to any of the parties but to their respective counsels were awarded Seventy-Five Thousand Pesos (P75,000.00) each as
attorney's fees. The petitioner duly appealed the said decision to the Court of Appeals.

On June 3, 1994, the Court of Appeals promulgated a Resolution 8 denying the petitioner's motions for reconsideration and for contempt of
court in CA-G.R. SP No. 27803.

Hence, this petition anchored on the following assignment of errors:

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN
FAILING TO RULE ON PETITIONER'S MOTION TO DISMISS.

II

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN
REFUSING TO PROMPTLY RESOLVE PETITIONER'S MOTION FOR RECONSIDERATION.

III

IN DELAYING THE RESOLUTION OF PETITIONER'S MOTION FOR RECONSIDERATION, THE HONORABLE COURT OF APPEALS DENIED
PETITIONER'S RIGHT TO SEEK TIMELY APPELLATE RELIEF AND VIOLATED PETITIONER'S RIGHT TO DUE PROCESS.

IV

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN
FAILING TO CITE THE PRIVATE RESPONDENTS IN CONTEMPT.9

The petitioner faults the appellate court for not dismissing the petition on the ground of violation of Supreme Court Circular No. 28-91. Also,
the petitioner contends that the appellate court violated Section 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed
to rule on her motion for reconsideration within ninety (90) days from the time it is submitted for resolution. The appellate court ruled only
after the lapse of three hundred fifty-four (354) days, or on June 3, 1994. In delaying the resolution thereof, the appellate court denied the
petitioner's right to seek the timely appellate relief. Finally, petitioner describes as arbitrary the denial of her motions for contempt of court
against the respondents.
We rule in favor of the respondents.

Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the grounds for the issuance of a writ of preliminary injunction is
a proof that the applicant is entitled to the relief demanded, and the whole or part of such relief consists in restraining the commission or
continuance of the act or acts complained of, either for a limited period or perpetually. Thus, a preliminary injunction order may be granted
only when the application for the issuance of the same shows facts entitling the applicant to the relief demanded. 10 This is the reason why we
have ruled that it must be shown that the invasion of the right sought to be protected is material and substantial, that the right of
complainant is clear and unmistakable, and, that there is an urgent and paramount necessity for the writ to prevent serious damage. 11

In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the ground that she is entitled to the use of the
trademark on Chin Chun Su and its container based on her copyright and patent over the same. We first find it appropriate to rule on whether
the copyright and patent over the name and container of a beauty cream product would entitle the registrant to the use and ownership over
the same to the exclusion of others.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any
visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods.12 In relation thereto, a trade name means the name or designation identifying or distinguishing an
enterprise.13 Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of their creation. 14 Patentable inventions, on the other hand, refer to any technical
solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable.15

Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a
beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before
anybody else did. The petitioner's copyright and patent registration of the name and container would not guarantee her the right to the
exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary
injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container
to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

We cannot likewise overlook the decision of the trial court in the case for final injunction and damages. The dispositive portion of said
decision held that the petitioner does not have trademark rights on the name and container of the beauty cream product. The said decision
on the merits of the trial court rendered the issuance of the writ of a preliminary injunction moot and academic notwithstanding the fact that
the same has been appealed in the Court of Appeals. This is supported by our ruling in La Vista Association, Inc. v. Court of Appeals 16, to wit:

Considering that preliminary injunction is a provisional remedy which may be granted at any time after the commencement of the action and
before judgment when it is established that the plaintiff is entitled to the relief demanded and only when his complaint shows facts entitling
such reliefs xxx and it appearing that the trial court had already granted the issuance of a final injunction in favor of petitioner in its decision
rendered after trial on the merits xxx the Court resolved to Dismiss the instant petition having been rendered moot and academic. An
injunction issued by the trial court after it has already made a clear pronouncement as to the plaintiff's right thereto, that is, after the same
issue has been decided on the merits, the trial court having appreciated the evidence presented, is proper, notwithstanding the fact that the
decision rendered is not yet final xxx. Being an ancillary remedy, the proceedings for preliminary injunction cannot stand separately or
proceed independently of the decision rendered on the merit of the main case for injunction. The merit of the main case having been already
determined in favor of the applicant, the preliminary determination of its non-existence ceases to have any force and effect. (italics supplied)

La Vista categorically pronounced that the issuance of a final injunction renders any question on the preliminary injunctive order moot and
academic despite the fact that the decision granting a final injunction is pending appeal. Conversely, a decision denying the
applicant-plaintiff's right to a final injunction, although appealed, renders moot and academic any objection to the prior dissolution of a writ
of preliminary injunction.

The petitioner argues that the appellate court erred in not dismissing the petition for certiorari for non-compliance with the rule on forum
shopping. We disagree. First, the petitioner improperly raised the technical objection of non-compliance with Supreme Court Circular No.
28-91 by filing a motion to dismiss the petition for certiorari filed in the appellate court. This is prohibited by Section 6, Rule 66 of the Revised
Rules of Civil Procedure which provides that "(I)n petitions for certiorari before the Supreme Court and the Court of Appeals, the provisions of
Section 2, Rule 56, shall be observed. Before giving due course thereto, the court may require the respondents to file their comment to, and
not a motion to dismiss, the petition xxx (italics supplied)". Secondly, the issue was raised one month after petitioner had filed her
answer/comment and after private respondent had replied thereto. Under Section 1, Rule 16 of the Revised Rules of Civil Procedure, a motion
to dismiss shall be filed within the time for but before filing the answer to the complaint or pleading asserting a claim. She therefore could no
longer submit a motion to dismiss nor raise defenses and objections not included in the answer/comment she had earlier tendered. Thirdly,
substantial justice and equity require this Court not to revive a dissolved writ of injunction in favor of a party without any legal right thereto
merely on a technical infirmity. The granting of an injunctive writ based on a technical ground rather than compliance with the requisites for
the issuance of the same is contrary to the primary objective of legal procedure which is to serve as a means to dispense justice to the
deserving party.

The petitioner likewise contends that the appellate court unduly delayed the resolution of her motion for reconsideration. But we find that
petitioner contributed to this delay when she filed successive contentious motions in the same proceeding, the last of which was on October
27, 1993, necessitating counter-manifestations from private respondents with the last one being filed on November 9, 1993. Nonetheless, it is
well-settled that non-observance of the period for deciding cases or their incidents does not render such judgments ineffective or void. 17With
respect to the purported damages she suffered due to the alleged delay in resolving her motion for reconsideration, we find that the said
issue has likewise been rendered moot and academic by our ruling that she has no right over the trademark and, consequently, to the
issuance of a writ of preliminary injunction.1âwphi1.nêt

Finally, we rule that the Court of Appeals correctly denied the petitioner's several motions for contempt of court. There is nothing
contemptuous about the advertisements complained of which, as regards the proceedings in CA-G.R. SP No. 27803 merely announced in plain
and straightforward language the promulgation of the assailed Decision of the appellate court. Moreover, pursuant to Section 4 of Rule 39 of
the Revised Rules of Civil Procedure, the said decision nullifying the injunctive writ was immediately executory.

WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals dated May 24, 1993 and June 3, 1994, respectively,
are hereby AFFIRMED. With costs against the petitioner.

SO ORDERED.

G.R. No. 222366, December 04, 2017

W LAND HOLDINGS, INC., Petitioner, v. STARWOOD HOTELS AND RESORTS WORLDWIDE, INC., Respondent.

DECISION

PERLAS-BERNABE, J.:

Assailed in this petition for review on certiorari1 are the Decision2 dated June 22, 2015 and the Resolution3dated January 7, 2016 of the Court
of Appeals (CA) in CA-G.R. SP No. 133825 affirming the Decision4 dated January 10, 2014 of the Intellectual Property Office (IPO) - Director
General (IPO DG), which, in turn, reversed the Decision 5 dated May 11, 2012 of the IPO Bureau of Legal Affairs (BLA) in Inter Partes Case No.
14-2009-00143, and accordingly, dismissed petitioner W Land Holdings, Inc.'s (W Land) petition for cancellation of the trademark "W"
registered in the name of respondent Starwood Hotels and Resorts, Worldwide, Inc. (Starwood).

The Facts

On December 2, 2005, Starwood filed before the IPO an application for registration of the trademark "W" for Classes 43 6 and 447 of the
International Classification of Goods and Services for the Purposes of the Registration of Marks 8 (Nice Classification).9 On February 26, 2007,
Starwood's application was granted and thus, the "W" mark was registered in its name.10 However, on April 20, 2006, W Land applied11 for
the registration of its own "W" mark for Class 36,12 which thereby prompted Starwood to oppose the same.13 In a Decision14 dated April 23,
2008, the BLA found merit in Starwood's opposition, and ruled that W Land's "W" mark is confusingly similar with Starwood's mark,15 which
had an earlier filing date. W Land filed a motion for reconsideration16 on June 11, 2008, which was denied by the BLA in a Resolution17 dated
July 23, 2010.

On May 29, 2009, W Land filed a Petition for Cancellation18 of Starwood's mark for non-use under Section 151.119 of Republic Act No. 8293 or
the "Intellectual Property Code of the Philippines" (IP Code),20 claiming that Starwood has failed to use its mark in the Philippines because it
has no hotel or establishment in the Philippines rendering the services covered by its registration; and that Starwood's "W" mark application
and registration barred its own "'W" mark application and registration for use on real estate. 21

In its defense,22 Starwood denied having abandoned the subject mark on the ground of non-use, asserting that it filed with the Director of
Trademarks a notarized Declaration of Actual Use23 (DAU)24 with evidence of use on December 2, 2008,25 which was not rejected. In this
relation, Starwood argued that it conducts hotel and leisure business both directly and indirectly through subsidiaries and franchisees, and
operates interactive websites for its W Hotels in order to accommodate its potential clients worldwide. 26 According to Starwood, apart from
viewing agents, discounts, promotions, and other marketing fields being offered by it, these interactive websites allow Philippine residents to
make reservations and bookings, which presuppose clear and convincing use of the "W'' mark in the Philippines. 27

The BLA Ruling

In a Decision28 dated May 11, 2012, the BLA ruled in W Land's favor, and accordingly ordered the cancellation of Starwood's registration for
the "W" mark. The BLA found that the DAU and the attachments thereto submitted by Starwood did not prove actual use of the "W" mark in
the Philippines, considering that the "evidences of use" attached to the DAU refer to hotel or establishments that are located abroad.29 In this
regard, the BLA opined that "the use of a trademark as a business tool and as contemplated under [Section 151.1 (c) of RA 8293] refers to the
actual attachment thereof to goods and services that are sold or availed of and located in the Philippines."30

Dissatisfied, Starwood appealed31 to the IPO DG.

The IPO DG Ruling

In a Decision32 dated January 10, 2014, the IPO DG granted Starwood's appeal, 33 thereby dismissing W Land's Petition for Cancellation.
Contrary to the BLA's findings, the IPO DG found that Starwood's submission of its DAU and attachments, coupled by the acceptance thereof
by the IPO Bureau of Trademarks, shows that the "W" mark still bears a "registered" status. Therefore, there is a presumption that Starwood
sufficiently complied with the registration requirements for its mark.34 The IPO DG likewise held that the absence of any hotel or
establishment owned by Starwood in the Philippines bearing the "W" mark should not be equated to the absence of its use in the country,
opining that Starwood's pieces of evidence, particularly its interactive website, indicate actual use in the Philippines, 35 citing Rule 20536 of the
Trademark Regulations, as amended by IPO Office Order No. 056-13.37 Finally, the IPO DG stressed that since Starwood is the undisputed
owner of the "W" mark for use in hotel and hotel-related services, any perceived damage on the part of W Land in this case should be
subordinated to the essence of protecting Starwood's intellectual property rights. To rule otherwise is to undermine the intellectual property
system.38

Aggrieved, W Land filed a petition for review39 under Rule 43 of the Rules of Court before the CA.

The CA Ruling

In a Decision40 dated June 22, 2015, the CA affirmed the IPO DG ruling. At the onset, the CA observed that the hotel business is peculiar in
nature in that the offer, as well as the acceptance of room reservations or bookings wherever in the world is an indispensable element. As
such, the actual existence or presence of a hotel in one place is not necessary before it can be considered as doing business therein. 41 In this
regard, the CA recognized that the internet has become a powerful tool in allowing businesses to reach out to consumers in a given market
without being physically present thereat; thus, the IPO DG correctly held that Starwood's interactive websites already indicate its actual use in
the Philippines of the "W" mark.42 Finally, the CA echoed the IPO DG's finding that since Starwood is the true owner of the "W" mark - as
shown by the fact that Starwood had already applied for the registration of this mark even before W Land was incorporated - its registration
over the same should remain valid, absent any showing that it has abandoned the use thereof.43

Unperturbed, W Land moved for reconsideration,44 but was denied in a Resolution45 dated January 7, 2016; hence, this petition.

The Issue Before the Court

The essential issue for the Court's resolution is whether or not the CA correctly affirmed the IPO DG's dismissal of W Land's Petition for
Cancellation of Starwood's "W'' mark.

The Court's Ruling

The petition is without merit.

The IP Code defines a "mark" as "any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise."46 Case law explains that "[t]rademarks deal with the psychological function of symbols and the effect of these symbols on the
public at large."47 It is a merchandising short-cut, and, "[w]hatever the means employed, the aim is the same to convey through the mark, in
the minds of potential customers, the desirability of the commodity upon which it appears." 48 Thus, the protection of trademarks as
intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods or services bearing
the mark through actual use over a period of time, but also to safeguard the public as consumers against confusion on these goods or
services.49 As viewed by modern authorities on trademark law, trademarks perform three (3) distinct functions: (1) they indicate origin or
ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3)
they advertise the articles they symbolize.50

In Berris Agricultural Co., Inc. v. Abyadang,51 this Court explained that "[t]he ownership of a trademark is acquired by its registration and its
actual use by the manufacturer or distributor of the goods made available to the purchasing public. x x x. A certificate of registration of a mark,
once issued, constitutes prima facie evidence of the validity of the registration, of the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the
certificate."52 However, "the prima facie presumption brought about by the registration of a mark may be challenged and overcome, in an
appropriate action, by proof of[, among others,] non-use of the mark, except when excused."53

The actual use of the mark representing the goods or services introduced and transacted in commerce over a period of time creates that
goodwill which the law seeks to protect. For this reason, the IP Code, under Section 124.2,54 requires the registrant or owner of a registered
mark to declare "actual use of the mark" (DAU) and present evidence of such use within the prescribed period. Failing in which, the IPO DG
may cause the motu propio removal from the register of the mark's registration.55 Also, any person, believing that "he or she will be damaged
by the registration of a mark," which has not been used within the Philippines, may file a petition for cancellation. 56 Following the basic rule
that he who alleges must prove his case,57 the burden lies on the petitioner to show damage and non-use.

The IP Code and the Trademark Regulations have not specifically defined "use." However, it is understood that the "use" which the law
requires to maintain the registration of a mark must be genuine, and not merely token. Based on foreign authorities,58 genuine use may be
characterized as a bona fide use which results or tends to result, in one way or another, into a commercial interaction or transaction "in the
ordinary course of trade."59

What specific act or acts would constitute use of the mark sufficient to keep its registration in force may be gleaned from the Trademark
Regulations, Rule 205 of which reads:
 RULE 205. Contents of the Declaration and Evidence of Actual Use. — The declaration shall be under oath, must refer to
only one application or registration, must contain the name and address of the applicant or registrant declaring that the
mark is in actual use in the Philippines, list of goods where the mark is attached; list the name or names and the exact
location or locations of the outlet or outlets where the products are being sold or where the services are being rendered,
recite sufficient facts to show that the mark described in the application or registration is being actually used in the
Philippines and, specifying the nature of such use. The declarant shall attach five labels as actually used on the goods or
the picture of the stamped or marked container visibly and legibly showing the mark as well as proof of payment of the
prescribed fee. [As amended by Office Order No. 08 (2000)] (Emphases supplied)

The Trademark Regulations was amended by Office Order No. 056-13. Particularly, Rule 205 now mentions certain items which "shall be
accepted as proof of actual use of the mark:"

RULE 205. Contents of the Declaration and Evidence of Actual Use.—

(a) The declaration shall be under oath and filed by the applicant or registrant (or the authorized officer in case of a
juridical entity) or the attorney or authorized representative of the applicant or registrant. The declaration must refer to
only one application or registration, shall contain the name and address of the applicant or registrant declaring that the
mark is in actual use in the Philippines, the list of goods or services where the mark is used, the name/s of the
establishment and address where the products are being sold or where the services are being rendered. If the goods or
services are available only by online purchase, the website must be indicated on the form in lieu of name or address of the
establishment or outlet. The applicant or registrant may include other facts to show that the mark described in the
application or registration is actually being used in the Philippines. The date of first use shall not be required.

(b) Actual use for some of the goods and services in the same class shall constitute use for the entire class of goods and
services. Actual use for one class shall be considered use for related classes. In the event that some classes are not
covered in the declaration, a subsequent declaration of actual use may be filed for the other classes of goods or services
not included in the first declaration, provided that the subsequent declaration is filed within the three year period or the
extension period, in case an extension of time to file the declaration was timely made. In the event that no subsequent
declaration of actual use for the other classes of goods and services is filed within the prescribed period, the classes shall
be automatically dropped from the application or registration without need of notice to the applicant or registrant.

(c) The following shall be accepted as proof of actual use of the mark: (1) labels of the mark as these are used;
(2) downloaded pages from the website of the applicant or registrant clearly showing that the goods are being sold or
the services are being rendered in the Philippines; (3) photographs (including digital photographs printed on ordinary
paper) of goods bearing the marks as these are actually used or of the stamped or marked container of goods and of the
establishment/s where the services are being rendered; (4) brochures or advertising materials showing the actual use of
the mark on the goods being sold or services being rendered in the Philippines; (5) for online sale, receipts of sale of the
goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the
services are available in the Philippines or that the transaction took place in the Philippines; (6) copies of contracts for
services showing the use of the mark. Computer printouts of the drawing or reproduction of marks will not be accepted as
evidence of use.

(d) The Director may, from time to time, issue a list of acceptable evidence of use and those that will not be accepted by
the Office. (Emphases and underscoring supplied)

Office Order No. 056-13 was issued by the IPO DG on April 5, 2013, pursuant to his delegated rule-making authority under Section 7 of the IP
Code.60 The rationale for this issuance, per its whereas clauses, is to further "the policy of the [IPO] to streamline administrative procedures in
registering trademarks" and in so doing, address the need "to clarify what will be accepted as proof of use." In this regard, the parameters and
list of evidence introduced under the amended Trademark Regulations are thus mere administrative guidelines which are only meant to flesh
out the types of acceptable evidence necessary to prove what the law already provides, i.e., the requirement of actual use. As such, contrary
to W Land's postulation,61 the same does not diminish or modify any substantive right and hence, may be properly applied to "all pending and
registered marks,"62 as in Starwood's "W" mark for hotel / hotel reservation services being rendered or, at the very least, made available in
the Philippines.

Based on the amended Trademark Regulations, it is apparent that the IPO has now given due regard to the advent of commerce on the
internet. Specifically, it now recognizes, among others, "downloaded pages from the website of the applicant or registrant clearly showing
that the goods are being sold or the services are being rendered in the Philippines," as well as "for online sale, receipts of sale of the goods or
services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the
Philippines or that the transaction took place in the Philippines,"63 as acceptable proof of actual use. Truly, the Court discerns that these
amendments are but an inevitable reflection of the realities of the times. In Mirpuri v. CA,64 this Court noted that "[a]dvertising on the Net
and cybershopping are turning the Internet into a commercial marketplace:" 65

The Internet is a decentralized computer network linked together through routers and communications protocols that
enable anyone connected to it to communicate with others likewise connected, regardless of physical location. Users of
the Internet have a wide variety of communication methods available to them and a tremendous wealth of information
that they may access. The growing popularity of the Net has been driven in large part by the World Wide Web, i.e., a
 system that facilitates use of the Net by sorting through the great mass of information available on it. Advertising on the
Net and cybershopping are turning the Internet into a commercial marketplace.66 (Emphasis and underscoring supplied)

Thus, as modes of advertising and acquisition have now permeated into virtual zones over cyberspace, the concept of commercial goodwill
has indeed evolved:

In the last half century, the unparalleled growth of industry and the rapid development of communications technology
have enabled trademarks, tradenames and other distinctive signs of a product to penetrate regions where the owner does
not actually manufacture or sell the product itself. Goodwill is no longer confined to the territory of actual market
penetration; it extends to zones where the marked article has been fixed in the public mind through advertising.
Whether in the print, broadcast or electronic communications medium, particularly on the Internet, advertising has
paved the way for growth and expansion of the product by creating and earning a reputation that crosses over borders,
virtually turning the whole world into one vast marketplace.67 (Emphasis and underscoring supplied)

Cognizant of this current state of affairs, the Court therefore agrees with the IPO DG, as affirmed by the CA, that the use of a registered mark
representing the owner's goods or services by means of an interactive website may constitute proof of actual use that is sufficient to maintain
the registration of the same. Since the internet has turned the world into one vast marketplace, the owner of a registered mark is clearly
entitled to generate and further strengthen his commercial goodwill by actively marketing and commercially transacting his wares or services
throughout multiple platforms on the internet. The facilities and avenues present in the internet are, in fact, more prominent nowadays as
they conveniently cater to the modern-day consumer who desires to procure goods or services at any place and at any time, through the
simple click of a mouse, or the tap of a screen. Multitudinous commercial transactions are accessed, brokered, and consummated everyday
over websites. These websites carry the mark which represents the goods or services sought to be transacted. For the owner, he intentionally
exhibits his mark to attract the customers' interest in his goods or services. The mark displayed over the website no less serves its functions of
indicating the goods or services' origin and symbolizing the owner's goodwill than a mark displayed in the physical market. Therefore, there is
no less premium to recognize actual use of marks through websites than their actual use through traditional means. Indeed, as our world
evolves, so too should our appreciation of the law. Legal interpretation - as it largely affects the lives of people in the here and now - never
happens in a vacuum. As such, it should not be stagnant but dynamic; it should not be ensnared in the obsolete but rather, sensitive to
surrounding social realities.

It must be emphasized, however, that the mere exhibition of goods or services over the internet, without more, is not enough to constitute
actual use. To reiterate, the "use" contemplated by law is genuine use - that is, a bona fide kind of use tending towards a commercial
transaction in the ordinary course of trade. Since the internet creates a borderless marketplace, it must be shown that the owner has
actually transacted, or at the very least, intentionally targeted customers of a particular jurisdiction in order to be considered as having
used the trade mark in the ordinary course of his trade in that country. A showing of an actual commercial link to the country is therefore
imperative. Otherwise, an unscrupulous registrant would be able to maintain his mark by the mere expedient of setting up a website, or by
posting his goods or services on another's site, although no commercial activity is intended to be pursued in the Philippines. This type of token
use renders inutile the commercial purpose of the mark, and hence, negates the reason to keep its registration active. As the IP Code
expressly requires, the use of the mark must be "within the Philippines." This is embedded in Section 151 of the IP Code on cancellation,
which reads:

SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a mark under this Act may be filed with the
Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this
Act as follows:

(a) Within five (5) years from the date of the registration of the mark under this Act.

At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered,
or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is
being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection
with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is
(b)
registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to
be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service.
The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining
whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it
(c) to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. (Emphasis and
underscoring supplied)

The hotel industry is no stranger to the developments and advances in technology. Like most businesses nowadays, hotels are utilizing the
internet to drive almost every aspect of their operations, most especially the offering and accepting of room reservations or bookings,
regardless of the client or customer base. The CA explained this booking process in that the "business transactions commence with the placing
of room reservations, usually by or through a travel agent who acts for or in behalf of his principal, the hotel establishment. [The] reservation
is first communicated to the reservations and booking assistant tasked to handle the transaction. After the reservation is made, the specific
room reserved for the guest will be blocked and will not be offered to another guest. As such, on the specified date of arrival, the room
reserved will be available to the guest."68

In this accord, a hotel's website has now become an integral element of a hotel business. Especially with the uptrend of international travel
and tourism, the hotel's website is now recognized as an efficient and necessary tool in advertising and promoting its brand in almost every
part of the world. More so, interactive websites that allow customers or clients to instantaneously book and pay for, in advance,
accommodations and other services of a hotel anywhere in the world, regardless of the hotel's actual location, dispense with the need for
travel agents or hotel employees to transact the reservations for them. In effect, the hotel's website acts as a bridge or portal through which
the hotel reaches out and provides its services to the client/customer anywhere in the world, with the booking transaction completed at the
client/customer's own convenience. It is in this sense that the CA noted that the "actual existence or presence of a hotel in one place is not
necessary before it can be considered as doing business therein."69

As earlier intimated, mere use of a mark on a website which can be accessed anywhere in the world will not automatically mean that the
mark has been used in the ordinary course of trade of a particular country. Thus, the use of mark on the internet must be shown to result into
a within-State sale, or at the very least, discernibly intended to target customers that reside in that country. This being so, the use of the mark
on an interactive website, for instance, may be said to target local customers when they contain specific details regarding or pertaining to
the target State, sufficiently showing an intent towards realizing a within-State commercial activity or interaction. These details may
constitute a local contact phone number, specific reference being available to local customers, a specific local webpage, whether domestic
language and currency is used on the website, and/or whether domestic payment methods are accepted. 70 Notably, this paradigm of
ascertaining local details to evince within-state commercial intent is subscribed to by a number of jurisdictions, namely, the European Union,
Hong Kong, Singapore, Malaysia, Japan, Australia, Germany, France, Russia, and the United Kingdom. 71 As for the U.S. - where most of our
intellectual property laws have been patterned72 - there have been no decisions to date coming from its Trademark Trial and Appeal Board
involving cases challenging the validity of mark registrations through a cancellation action based on the mark's internet use. However,
in International Bancorp LLC v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco,73 it was ruled that mere advertising in the U.S.
combined with rendering of services to American customers in a foreign country constituted "use" for the purpose of establishing trademark
rights in the U.S.

In this case, Starwood has proven that it owns Philippine registered domain
names,74 i.e., www.whotels.ph, www.wreservations.ph, www.whotel.ph, www.wreservation.ph, for its website that showcase its mark. The
website is readily accessible to Philippine citizens and residents, where they can avail and book amenities and other services in any of
Starwood's W Hotels worldwide. Its website also readily provides a phone number 75 for Philippine consumers to call for information or other
concerns. The website further uses the English language76 - considered as an official language in this country77 - which the relevant market in
the Philippines understands and often uses in the daily conduct of affairs. In addition, the prices for its hotel accommodations and/or services
can be converted into the local currency or the Philippine Peso.78 Amidst all of these features, Starwood's "W" mark is prominently displayed
in the website through which consumers in the Philippines can instantaneously book and pay for their accommodations, with immediate
confirmation, in any of its W Hotels. Furthermore, it has presented data showing a considerably growing number of internet users in the
Philippines visiting its website since 2003, which is enough to conclude that Starwood has established commercially-motivated relationships
with Philippine consumers.79

Taken together, these facts and circumstances show that Starwood's use of its "W" mark through its interactive website is intended to
produce a discernable commercial effect or activity within the Philippines, or at the very least, seeks to establish commercial interaction with
local consumers. Accordingly, Starwood's use of the "W" mark in its reservation services through its website constitutes use of the mark
sufficient to keep its registration in force.

To be sure, Starwood's "W" mark is registered for Classes 43, i.e., for hotel, motel, resort and motor inn services, hotel reservation services,
restaurant, bar and catering services, food and beverage preparation services, cafe and cafeteria services, provision of conference, meeting
and social function facilities, under the Nice Classification.80 Under Section 152.3 of the IP Code, "[t]he use of a mark in connection with one
or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in
respect of all other goods or services of the same class." Thus, Starwood's use of the "W" mark for reservation services through its website
constitutes use of the mark which is already sufficient to protect its registration under the entire subject classification from non-use
cancellation. This, notwithstanding the absence of a Starwood hotel or establishment in the Philippines.

Finally, it deserves pointing out that Starwood submitted in 2008 its DAU with evidence of use which the IPO, through its Director of
Trademarks and later by the IPO DG in the January 10, 2014 Decision, had accepted and recognized as valid. The Court finds no reason to
disturb this recognition. According to jurisprudence, administrative agencies, such as the IPO, by means of their special knowledge and
expertise over matters falling within their jurisdiction are in a better position to pass judgment on this issue. 81 Thus, their findings are
generally accorded respect and finality, as long as they are supported by substantial evidence. In this case, there is no compelling basis to
reverse the IPO DG's findings - to keep Starwood's registration for the "W" mark in force - as they are well supported by the facts and the law
and thus, deserve respect from this Court.

WHEREFORE, the petition is DENIED. The Decision dated June 22, 2015 and the Resolution dated January 7, 2016 of the Court of Appeals in
CA-G.R. SP No. 133825 are hereby AFFIRMED.

SO ORDERED.
G.R. No. 185830, June 05, 2013

ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., Petitioner, v. RENAUIL COINTREAU & CIE AND LE CORDON BLEU
INT'L., B.V., Respondents.

DECISION

PERLAS-BERNABE, J.:

Assailed in.this petition for review on certiorari1 is the December 23, 2008 Decision2 of the Court of Appeals (CA) in CA-G.R. SP No. 104672
which· affirmed in toto the Intellectual Property Office (IPO) Director General's April 21, 2008 Decision 3 that declared respondent Renaud
Cointreau & Cie (Cointreau) as the true and lawful owner of the mark "LE CORDON BLEU & DEVICE" and thus, is entitled to register the same
under its name.

The Facts

On June 21, 1990, Cointreau, a partnership registered under the laws of France, filed before the (now defunct) Bureau of Patents, Trademarks,
and Technology Transfer (BPTTT) of the Department of Trade and Industry a trademark application for the mark "LE CORDON BLEU &
DEVICE".for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the International Classification of Goods and Services for the
Purposes of Registrations of Marks ("Nice Classification") (subject mark). The application was filed pursuant to Section 37 of Republic Act No.
166, as amended (R.A. No. 166), on the basis of Home Registration No. 1,390,912, issued on November 25, 1986 in France. Bearing Serial No.
72264, such application was published for opposition in the March-April 1993 issue of the BPTTT Gazette and released for circulation on May
31, 1993.4

On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition to the subject application, averring that: (a) it is the
owner of the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has been using since 1948 in cooking and other culinary activities,
including in its restaurant business; and (b) it has earned immense and invaluable goodwill such that Cointreau’s use of the subject mark will
actually create confusion, mistake, and deception to the buying public as to the origin and sponsorship of the goods, and cause great and
irreparable injury and damage to Ecole’s business reputation and goodwill as a senior user of the same. 5

On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful owner of the subject mark. It averred that: (a) it has filed
applications for the subject mark’s registration in various jurisdictions, including the Philippines; (b) Le Cordon Bleu is a culinary school of
worldwide acclaim which was established in Paris, France in 1895; (c) Le Cordon Bleu was the first cooking school to have set the standard for
the teaching of classical French cuisine and pastry making; and (d) it has trained students from more than eighty (80) nationalities, including
Ecole’s directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of being the exclusive owner of the subject mark is a
fraudulent misrepresentation.6

During the pendency of the proceedings, Cointreau was issued Certificates of Registration Nos. 60631 and 54352 for the marks "CORDON
BLEU & DEVICE" and "LE CORDON BLEU PARIS 1895 & DEVICE" for goods and services under classes 21 and 41 of the Nice Classification,
respectively.7

The Ruling of the Bureau of Legal Affairs

In its Decision8 dated July 31, 2006, the Bureau of Legal Affairs (BLA) of the IPO sustained Ecole’s opposition to the subject mark, necessarily
resulting in the rejection of Cointreau’s application.9 While noting the certificates of registration obtained from other countries and other
pertinent materials showing the use of the subject mark outside the Philippines, the BLA did not find such evidence sufficient to establish
Cointreau’s claim of prior use of the same in the Philippines. It emphasized that the adoption and use of trademark must be in commerce in
the Philippines and not abroad. It then concluded that Cointreau has not established any proprietary right entitled to protection in the
Philippine jurisdiction because the law on trademarks rests upon the doctrine of nationality or territoriality. 10

On the other hand, the BLA found that the subject mark, which was the predecessor of the mark "LE CORDON BLEU MANILLE" has been
known and used in the Philippines since 1948 and registered under the name "ECOLE DE CUISINE MANILLE (THE CORDON BLEU OF THE
PHILIPPINES), INC." on May 9, 1980.11

Aggrieved, Cointreau filed an appeal with the IPO Director General.

The Ruling of the IPO Director General

In his Decision dated April 21, 2008, the IPO Director General reversed and set aside the BLA’s decision, thus, granting Cointreau’s appeal and
allowing the registration of the subject mark.12 He held that while Section 2 of R.A. No. 166 requires actual use of the subject mark in
commerce in the Philippines for at least two (2) months before the filing date of the application, only the owner thereof has the right to
register the same, explaining that the user of a mark in the Philippines is not ipso facto its owner. Moreover, Section 2-A of the same law does
not require actual use in the Philippines to be able to acquire ownership of a mark.13

In resolving the issue of ownership and right to register the subject mark in favor of Cointreau, he considered Cointreau’s undisputed use of
such mark since 1895 for its culinary school in Paris, France (in which petitioner’s own directress, Ms. Lourdes L. Dayrit, had trained in 1977).
Contrarily, he found that while Ecole may have prior use of the subject mark in the Philippines since 1948, it failed to explain how it came up
with such name and mark. The IPO Director General therefore concluded that Ecole has unjustly appropriated the subject mark, rendering it
beyond the mantle of protection of Section 4(d)14 of R.A. No. 166.15

Finding the IPO Director General’s reversal of the BLA’s Decision unacceptable, Ecole filed a Petition for Review16 dated June 7, 2008 with the
CA.

Ruling of the CA

In its Decision dated December 23, 2008, the CA affirmed the IPO Director General’s Decision in toto.17It declared Cointreau as the true and
actual owner of the subject mark with a right to register the same in the Philippines under Section 37 of R.A. No. 166, having registered such
mark in its country of origin on November 25, 1986.18

The CA likewise held that Cointreau’s right to register the subject mark cannot be barred by Ecole’s prior use thereof as early as 1948 for its
culinary school "LE CORDON BLEU MANILLE" in the Philippines because its appropriation of the mark was done in bad faith. Further, Ecole had
no certificate of registration that would put Cointreau on notice that the former had appropriated or has been using the subject mark. In fact,
its application for trademark registration for the same which was just filed on February 24, 1992 is still pending with the IPO.19

Hence, this petition.

Issues Before the Court

The sole issue raised for the Court’s resolution is whether the CA was correct in upholding the IPO Director General’s ruling that Cointreau is
the true and lawful owner of the subject mark and thus, entitled to have the same registered under its name.

At this point, it should be noted that the instant case shall be resolved under the provisions of the old Trademark Law, R.A. No. 166, which
was the law in force at the time of Cointreau’s application for registration of the subject mark.

The Court’s Ruling

The petition is without merit.

In the petition, Ecole argues that it is the rightful owner of the subject mark, considering that it was the first entity that used the same in the
Philippines. Hence, it is the one entitled to its registration and not Cointreau.

Petitioner’s argument is untenable.

Under Section 220 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and must have actually used the mark in
commerce in the Philippines for two (2) months prior to the application for registration. Section 2-A21 of the same law sets out to define how
one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the
provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that
Section 2-A does not require that the actual use of a trademark must be within the Philippines. Thus, as correctly mentioned by the CA, under
R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to register such ownership here due to the
owner’s failure to use the same in the Philippines for two (2) months prior to registration. 22

Nevertheless, foreign marks which are not registered are still accorded protection against infringement and/or unfair competition. At this
point, it is worthy to emphasize that the Philippines and France, Cointreau’s country of origin, are both signatories to the Paris Convention for
the Protection of Industrial Property (Paris Convention).23 Articles 6bis and 8 of the Paris Convention state:

ARTICLE 6bis

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of
an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark
which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use to be well known in that
country as being already the mark of a person entitled to the benefits of this Convention and used
for identical or similar goods. These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well- known mark or an imitation liable to create confusion
therewith.

ARTICLE 8
 A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether
or not it forms part of a trademark. (Emphasis and underscoring supplied)

In this regard, Section 37 of R.A. No. 166 incorporated Article 8 of the Paris Convention, to wit:

Section 37. Rights of foreign registrants. - Persons who are nationals of, domiciled in, or have a bona fide or effective
business or commercial establishment in any foreign country, which is a party to any international convention or treaty
relating to marks or trade-names, or the repression of unfair competition to which the Philippines may be a party, shall be
entitled to the benefits and subject to the provisions of this Act to the extent and under the conditions essential to give
effect to any such convention and treaties so long as the Philippines shall continue to be a party thereto, except as
provided in the following paragraphs of this section.

xxxx

Trade-names of persons described in the first paragraph of this section shall be protected without the obligation of filing
or registration whether or not they form parts of marks.

xxxx

In view of the foregoing obligations under the Paris Convention, the Philippines is obligated to assure nationals of the signatory-countries that
they are afforded an effective protection against violation of their intellectual property rights in the Philippines in the same way that their
own countries are obligated to accord similar protection to Philippine nationals. 24 "Thus, under Philippine law, a trade name of a national of a
State that is a party to the Paris Convention, whether or not the trade name forms part of a trademark, is protected "without the obligation of
filing or registration.’"25

In the instant case, it is undisputed that Cointreau has been using the subject mark in France since 1895, prior to Ecole’s averred first use of
the same in the Philippines in 1948, of which the latter was fully aware thereof. In fact, Ecole’s present directress, Ms. Lourdes L. Dayrit (and
even its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu culinary school in Paris, France. Cointreau was likewise the
first registrant of the said mark under various classes, both abroad and in the Philippines, having secured Home Registration No. 1,390,912
dated November 25, 1986 from its country of origin, as well as several trademark registrations in the Philippines. 26

On the other hand, Ecole has no certificate of registration over the subject mark but only a pending application covering services limited to
Class 41 of the Nice Classification, referring to the operation of a culinary school. Its application was filed only on February 24, 1992, or after
Cointreau filed its trademark application for goods and services falling under different classes in 1990. Under the foregoing circumstances,
even if Ecole was the first to use the mark in the Philippines, it cannot be said to have validly appropriated the same.

It is thus clear that at the time Ecole started using the subject mark, the same was already being used by Cointreau, albeit abroad, of which
Ecole’s directress was fully aware, being an alumna of the latter’s culinary school in Paris, France. Hence, Ecole cannot claim any tinge of
ownership whatsoever over the subject mark as Cointreau is the true and lawful owner thereof. As such, the IPO Director General and the CA
were correct in declaring Cointreau as the true and lawful owner of the subject mark and as such, is entitled to have the same registered
under its name.

In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, as
amended, has already dispensed with the requirement of prior actual use at the time of registration. 27 Thus, there is more reason to allow the
registration of the subject mark under the name of Cointreau as its true and lawful owner.

As a final note, "the function of a trademark is to point out distinctly the origin or ownership of the goods (or services) to which it is affixed; to
secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to
assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product." 28 As such, courts will protect trade names or marks, although not
registered or properly selected as trademarks, on the broad ground of enforcing justice and protecting one in the fruits of his toil.29

WHEREFORE, the petition is DENIED. Accordingly, the December 23, 2008 Decision of the Court of Appeals in CA-G.R. SP No. 104672 is
hereby AFFIRMED in toto.

SO ORDERED.

FREDCO MANUFACTURING G.R. No. 185917

CORPORATION,

Petitioner, Present:
CARPIO, J., Chairperson,
NACHURA,

- versus - PERALTA,
ABAD, and
MENDOZA, JJ.

PRESIDENT AND FELLOWS

OF HARVARD COLLEGE Promulgated:

(HARVARD UNIVERSITY),

Respondents. June 1, 2011

x- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x

DECISION

CARPIO, J.:

The Case

Before the Court is a petition for review1 assailing the 24 October 2008 Decision2 and 8 January 2009 Resolution3 of the Court of Appeals in
CA-G.R. SP No. 103394.

The Antecedent Facts

On 10 August 2005, petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized and existing under the laws of the
Philippines, filed a Petition for Cancellation of Registration No. 56561 before the Bureau of Legal Affairs of the Intellectual Property Office (IPO)
against respondents President and Fellows of Harvard College (Harvard University), a corporation organized and existing under the laws of
Massachusetts, United States of America. The case was docketed as Inter Partes Case No. 14-2005-00094.

Fredco alleged that Registration No. 56561 was issued to Harvard University on 25 November 1993 for the mark Harvard Veritas Shield
Symbol for decals, tote bags, serving trays, sweatshirts, t-shirts, hats and flying discs under Classes 16, 18, 21, 25 and 28 of the Nice
International Classification of Goods and Services. Fredco alleged that the mark Harvard for t-shirts, polo shirts, sandos, briefs, jackets and
slacks was first used in the Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co., Inc. (New York Garments), a
domestic corporation and Fredcos predecessor-in-interest. On 24 January 1985, New York Garments filed for trademark registration of the
mark Harvard for goods under Class 25. The application matured into a registration and a Certificate of Registration was issued on 12
December 1988, with a 20-year term subject to renewal at the end of the term. The registration was later assigned to Romeo Chuateco, a
member of the family that owned New York Garments.

Fredco alleged that it was formed and registered with the Securities and Exchange Commission on 9 November 1995 and had since then
handled the manufacture, promotion and marketing of Harvard clothing articles. Fredco alleged that at the time of issuance of Registration
No. 56561 to Harvard University, New York Garments had already registered the mark Harvard for goods under Class 25. Fredco alleged that
the registration was cancelled on 30 July 1998 when New York Garments inadvertently failed to file an affidavit of use/non-use on the fifth
anniversary of the registration but the right to the mark Harvard remained with its predecessor New York Garments and now with Fredco.

Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark Harvard in numerous countries worldwide,
including the Philippines. Among the countries where Harvard University has registered its name and mark Harvard are:

1. Argentina 26. South Korea

2. Benelux4 27. Malaysia
3. Brazil 28. Mexico
4. Canada 29. New Zealand
5. Chile 30. Norway
6. China P.R. 31. Peru
7. Colombia 32. Philippines
8. Costa Rica 33. Poland
9. Cyprus 34. Portugal
10. Czech Republic 35. Russia
11. Denmark 36. South Africa
12. Ecuador 37. Switzerland
13. Egypt 38. Singapore
14. Finland 39. Slovak Republic
15. France 40. Spain
16. Great Britain 41. Sweden
17. Germany 42. Taiwan
18. Greece 43. Thailand
19. Hong Kong 44. Turkey
20. India 45. United Arab Emirates
21. Indonesia 46. Uruguay
22. Ireland 47. United States of America
23. Israel 48. Venezuela
24. Italy 49. Zimbabwe
25. Japan 50. European Community5

The name and mark Harvard was adopted in 1639 as the name of Harvard College6 of Cambridge, Massachusetts, U.S.A. The name and mark
Harvard was allegedly used in commerce as early as 1872. Harvard University is over 350 years old and is a highly regarded institution of
higher learning in the United States and throughout the world. Harvard University promotes, uses, and advertises its name Harvard through
various publications, services, and products in foreign countries, including the Philippines. Harvard University further alleged that the name
and the mark have been rated as one of the most famous brands in the world, valued between US $750,000,000 and US $1,000,000,000.
Harvard University alleged that in March 2002, it discovered, through its international trademark watch program, Fredcos website
www.harvard-usa.com. The website advertises and promotes the brand name Harvard Jeans USA without Harvard Universitys consent. The
websites main page shows an oblong logo bearing the mark Harvard Jeans USA, Established 1936, and Cambridge, Massachusetts. On 20 April
2004, Harvard University filed an administrative complaint against Fredco before the IPO for trademark infringement and/or unfair
competition with damages.

Harvard University alleged that its valid and existing certificates of trademark registration in the Philippines are:

1. Trademark Registration No. 56561 issued on 25 November 1993 for Harvard Veritas Shield Design for goods and services in Classes
16, 18, 21, 25 and 28 (decals, tote bags, serving trays, sweatshirts, t-shirts, hats and flying discs) of the Nice International
Classification of Goods and Services;
2. Trademark Registration No. 57526 issued on 24 March 1994 for Harvard Veritas Shield Symbol for services in Class 41; Trademark
Registration No. 56539 issued on 25 November 1998 for Harvard for services in Class 41; and
3. Trademark Registration No. 66677 issued on 8 December 1998 for Harvard Graphics for goods in Class 9. Harvard University further
alleged that it filed the requisite affidavits of use for the mark Harvard Veritas Shield Symbol with the IPO.
Further, on 7 May 2003 Harvard University filed Trademark
Application No. 4-2003-04090 for Harvard Medical
International & Shield Design for services in Classes 41 and 44.
In 1989, Harvard University established the Harvard Trademark
Licensing Program, operated by the Office for Technology and
Trademark Licensing, to oversee and manage the worldwide
licensing of the Harvard name and trademarks for various
goods and services. Harvard University stated that it never
authorized or licensed any person to use its name and mark
Harvard in connection with any goods or services in the
Philippines.

In a Decision7 dated 22 December 2006, Director Estrellita Beltran-Abelardo of the Bureau of Legal Affairs, IPO cancelled Harvard Universitys
registration of the mark Harvard under Class 25, as follows:

WHEREFORE, premises considered, the Petition for Cancellation is hereby GRANTED. Consequently, Trademark
Registration Number 56561 for the trademark HARVARD VE RI TAS SHIELD SYMBOL issued on November 25, 1993 to
PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY) should be CANCELLED only with respect to
goods falling under Class 25. On the other hand, considering that the goods of Respondent-Registrant falling under Classes
16, 18, 21 and 28 are not confusingly similar with the Petitioners goods, the Respondent-Registrant has acquired vested
right over the same and therefore, should not be cancelled.

Let the filewrapper of the Trademark Registration No. 56561 issued on November 25, 1993 for the trademark HARVARD
VE RI TAS SHIELD SYMBOL, subject matter of this case together with a copy of this Decision be forwarded to the Bureau of
Trademarks (BOT) for appropriate action.

SO ORDERED.8

Harvard University filed an appeal before the Office of the Director General of the IPO. In a Decision 9 dated 21 April 2008, the Office of the
Director General, IPO reversed the decision of the Bureau of Legal Affairs, IPO.

The Director General ruled that more than the use of the trademark in the Philippines, the applicant must be the owner of the mark sought to
be registered. The Director General ruled that the right to register a trademark is based on ownership and when the applicant is not the
owner, he has no right to register the mark. The Director General noted that the mark covered by Harvard Universitys Registration No. 56561
is not only the word Harvard but also the logo, emblem or symbol of Harvard University. The Director General ruled that Fredco failed to
explain how its predecessor New York Garments came up with the mark Harvard. In addition, there was no evidence that Fredco or New York
Garments was licensed or authorized by Harvard University to use its name in commerce or for any other use.

The dispositive portion of the decision of the Office of the Director General, IPO reads:

WHEREFORE, premises considered, the instant appeal is GRANTED. The appealed decision is hereby REVERSED and SET
ASIDE. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the
Director of Bureau of Legal Affairs for appropriate action. Further, let also the Directors of the Bureau of Trademarks and
the Administrative, Financial and Human Resources Development Services Bureau, and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records
purposes.

SO ORDERED.10

Fredco filed a petition for review before the Court of Appeals assailing the decision of the Director General.

The Decision of the Court of Appeals

In its assailed decision, the Court of Appeals affirmed the decision of the Office of the Director General of the IPO.

The Court of Appeals adopted the findings of the Office of the Director General and ruled that the latter correctly set aside the cancellation by
the Director of the Bureau of Legal Affairs of Harvard Universitys trademark registration under Class 25. The Court of Appeals ruled that
Harvard University was able to substantiate that it appropriated and used the marks Harvard and Harvard Veritas Shield Symbol in Class 25
way ahead of Fredco and its predecessor New York Garments. The Court of Appeals also ruled that the records failed to disclose any
explanation for Fredcos use of the name and mark Harvard and the words USA, Established 1936, and Cambridge, Massachusetts within an
oblong device, US Legend and Europes No. 1 Brand. Citing Shangri-La International Hotel Management, Ltd. v. Developers Group of
Companies, Inc.,11 the Court of Appeals ruled:

One who has imitated the trademark of another cannot bring an action for infringement, particularly against the true
owner of the mark, because he would be coming to court with unclean hands. Priority is of no avail to the bad faith
plaintiff. Good faith is required in order to ensure that a second user may not merely take advantage of the goodwill
established by the true owner.12
The dispositive portion of the decision of the Court of Appeals reads:

WHEREFORE, premises considered, the petition for review is DENIED. The Decision dated April 21, 2008 of the Director
General of the IPO in Appeal No. 14-07-09 Inter Partes Case No. 14-2005-00094 is hereby AFFIRMED.

SO ORDERED.13

Fredco filed a motion for reconsideration.

In its Resolution promulgated on 8 January 2009, the Court of Appeals denied the motion for lack of merit.

Hence, this petition before the Court.

The Issue
The issue in this case is whether the Court of Appeals committed a reversible error in affirming the decision of the Office of the Director
General of the IPO.

The Ruling of this Court

The petition has no merit.

There is no dispute that the mark Harvard used by Fredco is the same as the mark Harvard in the Harvard Veritas Shield Symbol of Harvard
University. It is also not disputed that Harvard University was named Harvard College in 1639 and that then, as now, Harvard University is
located in Cambridge, Massachusetts, U.S.A. It is also unrefuted that Harvard University has been using the mark Harvard in commerce since
1872. It is also established that Harvard University has been using the marks Harvard and Harvard Veritas Shield Symbol for Class 25 goods in
the United States since 1953. Further, there is no dispute that Harvard University has registered the name and mark Harvard in at least 50
countries.

On the other hand, Fredcos predecessor-in-interest, New York Garments, started using the mark Harvard in the Philippines only in 1982. New
York Garments filed an application with the Philippine Patent Office in 1985 to register the mark Harvard, which application was approved in
1988. Fredco insists that the date of actual use in the Philippines should prevail on the issue of who has the better right to register the marks.

Under Section 2 of Republic Act No. 166,14 as amended (R.A. No. 166), before a trademark can be registered, it must have been actually used
in commerce for not less than two months in the Philippines prior to the filing of an application for its registration. While Harvard University
had actual prior use of its marks abroad for a long time, it did not have actual prior use in the Philippines of the mark Harvard Veritas Shield
Symbol before its application for registration of the mark Harvard with the then Philippine Patents Office. However, Harvard Universitys
registration of the name Harvard is based on home registration which is allowed under Section 37 of R.A. No. 166. 15 As pointed out by
Harvard University in its Comment:

Although Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof
must prove that the same has been actually in use in commerce or services for not less than two (2) months in the
Philippines before the application for registration is filed, where the trademark sought to be registered has already been
registered in a foreign country that is a member of the Paris Convention, the requirement of proof of use in the commerce
in the Philippines for the said period is not necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this country.16

Indeed, in its Petition for Cancellation of Registration No. 56561, Fredco alleged that Harvard Universitys registration is based on home
registration for the mark Harvard Veritas Shield for Class 25.17

In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), 18 [m]arks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act x x x, which does not require actual prior use of the mark in the Philippines.
Since the mark Harvard Veritas Shield Symbol is now deemed granted under R.A. No. 8293, any alleged defect arising from the absence of
actual prior use in the Philippines has been cured by Section 239.2. 19 In addition, Fredcos registration was already cancelled on 30 July 1998
when it failed to file the required affidavit of use/non-use for the fifth anniversary of the marks registration. Hence, at the time of Fredcos
filing of the Petition for Cancellation before the Bureau of Legal Affairs of the IPO, Fredco was no longer the registrant or presumptive owner
of the mark Harvard.

There are two compelling reasons why Fredcos petition must fail.

First, Fredcos registration of the mark Harvard and its identification of origin as Cambridge, Massachusetts falsely suggest that Fredco or its
goods are connected with Harvard University, which uses the same mark Harvard and is also located in Cambridge, Massachusetts. This can
easily be gleaned from the following oblong logo of Fredco that it attaches to its clothing line:

Fredcos registration of the mark Harvard should not have been allowed because Section 4(a) of R.A. No. 166 prohibits the registration of a
mark which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs x x x. Section 4(a) of R.A. No. 166
provides:
 Section 4. Registration of trade-marks, trade-names and service- marks on the principal register. ‒ There is hereby
established a register of trade-mark, trade-names and service-marks which shall be known as the principal register. The
owner of a trade-mark, a trade-name or service-mark used to distinguish his goods, business or services from the goods,
business or services of others shall have the right to register the same on the principal register, unless it:

(a) Consists of or comprises immoral, deceptive or scandalous manner, or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or
disrepute;

(b) x x x (emphasis supplied)

Fredcos use of the mark Harvard, coupled with its claimed origin in Cambridge, Massachusetts, obviously suggests a false connection with
Harvard University. On this ground alone, Fredcos registration of the mark Harvard should have been disallowed.
Indisputably, Fredco does not have any affiliation or connection with Harvard University, or even with Cambridge, Massachusetts. Fredco or
its predecessor New York Garments was not established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo. Fredco offered no
explanation to the Court of Appeals or to the IPO why it used the mark Harvard on its oblong logo with the words Cambridge, Massachusetts,
Established in 1936, and USA. Fredco now claims before this Court that it used these words to evoke a lifestyle or suggest a desirable aura of
petitioners clothing lines. Fredcos belated justification merely confirms that it sought to connect or associate its products with Harvard
University, riding on the prestige and popularity of Harvard University, and thus appropriating part of Harvard Universitys goodwill without
the latters consent.
Section 4(a) of R.A. No. 166 is identical to Section 2(a) of the Lanham Act, 20 the trademark law of the United States. These provisions are
intended to protect the right of publicity of famous individuals and institutions from commercial exploitation of their goodwill by
others.21 What Fredco has done in using the mark Harvard and the words Cambridge, Massachusetts, USA to evoke a desirable aura to its
products is precisely to exploit commercially the goodwill of Harvard University without the latters consent. This is a clear violation of Section
4(a) of R.A. No. 166. Under Section 17(c)22 of R.A. No. 166, such violation is a ground for cancellation of Fredcos registration of the mark
Harvard because the registration was obtained in violation of Section 4 of R.A. No. 166.
Second, the Philippines and the United States of America are both signatories to the Paris Convention for the Protection of Industrial Property
(Paris Convention). The Philippines became a signatory to the Paris Convention on 27 September 1965. Articles 6bis and 8 of the Paris
Convention state:

ARTICLE 6bis

(i) The countries of the Union undertake either administratively if their legislation so permits, or at the request of an
interested party, to refuse or to cancel the registration and to prohibit the use of a trademark which constitutes a
reproduction, imitation or translation, liable to create confusion or a mark considered by the competent authority of the
country as being already the mark of a person entitled to the benefits of the present Convention and used for identical
or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any
such well-known mark or an imitation liable to create confusion therewith.

ARTICLE 8

A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether
or not it forms part of a trademark. (Emphasis supplied)

Thus, this Court has ruled that the Philippines is obligated to assure nationals of countries of the Paris Convention that they are afforded an
effective protection against violation of their intellectual property rights in the Philippines in the same way that their own countries are
obligated to accord similar protection to Philippine nationals. 23

Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No. 166, as follows:

Section 37. Rights of foreign registrants. Persons who are nationals of, domiciled in, or have a bona fide or effective
business or commercial establishment in any foreign country, which is a party to any international convention or treaty
relating to marks or trade-names, or the repression of unfair competition to which the Philippines may be a party, shall be
entitled to the benefits and subject to the provisions of this Act to the extent and under the conditions essential to give
effect to any such convention and treaties so long as the Philippines shall continue to be a party thereto, except as
provided in the following paragraphs of this section.
xxxx
 Trade-names of persons described in the first paragraph of this section shall be protected without the obligation of
filing or registration whether or not they form parts of marks.24

x x x x (Emphasis supplied)

Thus, under Philippine law, a trade name of a national of a State that is a party to the Paris Convention, whether or not the trade name forms
part of a trademark, is protected without the obligation of filing or registration.
Harvard is the trade name of the world famous Harvard University, and it is also a trademark of Harvard University. Under Article 8 of the
Paris Convention, as well as Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its trade name Harvard
even without registration of such trade name in the Philippines. This means that no educational entity in the Philippines can use the trade
name Harvard without the consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly or impliedly through the
use of the name and mark Harvard, that its products or services are authorized, approved, or licensed by, or sourced from, Harvard University
without the latters consent.

Article 6bis of the Paris Convention has been administratively implemented in the Philippines through two directives of the then Ministry
(now Department) of Trade, which directives were upheld by this Court in several cases. 25 On 20 November 1980, then Minister of Trade
Secretary Luis Villafuerte issued a Memorandum directing the Director of Patents to reject, pursuant to the Paris Convention, all pending
applications for Philippine registration of signature and other world-famous trademarks by applicants other than their original owners.26 The
Memorandum states:

Pursuant to the Paris Convention for the Protection of Industrial Property to which the Philippines is a signatory, you are
hereby directed to reject all pending applications for Philippine registration of signature and other world-famous
trademarks by applicants other than its original owners or users.

The conflicting claims over internationally known trademarks involve such name brands as Lacoste, Jordache, Vanderbilt,
Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la Renta, Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene,
Lanvin and Ted Lapidus.

It is further directed that, in cases where warranted, Philippine registrants of such trademarks should be asked to
surrender their certificates of registration, if any, to avoid suits for damages and other legal action by the trademarks
foreign or local owners or original users.

You are also required to submit to the undersigned a progress report on the matter.

For immediate compliance.27

In a Memorandum dated 25 October 1983, then Minister of Trade and Industry Roberto Ongpin affirmed the earlier Memorandum of
Minister Villafuerte. Minister Ongpin directed the Director of Patents to implement measures necessary to comply with the Philippines
obligations under the Paris Convention, thus:

1. Whether the trademark under consideration is well-known in the Philippines or is a mark already
belonging to a person entitled to the benefits of the CONVENTION, this should be established,
pursuant to Philippine Patent Office procedures in inter partes and ex parte cases, according to any of
the following criteria or any combination thereof:

(a) a declaration by the Minister of Trade and Industry that the trademark being considered is already well-known in the
Philippines such that permission for its use by other than its original owner will constitute a reproduction, imitation,
translation or other infringement;

(b) that the trademark is used in commerce internationally, supported by proof that goods bearing the trademark are sold
on an international scale, advertisements, the establishment of factories, sales offices, distributorships, and the like, in
different countries, including volume or other measure of international trade and commerce;

(c) that the trademark is duly registered in the industrial property office(s) of another country or countries, taking into
consideration the dates of such registration;
 (d) that the trademark has been long established and obtained goodwill and general international consumer recognition
as belonging to one owner or source;

(e) that the trademark actually belongs to a party claiming ownership and has the right to registration under the
provisions of the aforestated PARIS CONVENTION.

2. The word trademark, as used in this MEMORANDUM, shall include tradenames, service marks, logos, signs, emblems,
insignia or other similar devices used for identification and recognition by consumers.
3. The Philippine Patent Office shall refuse all applications for, or cancel the registration of, trademarks which constitute a
reproduction, translation or imitation of a trademark owned by a person, natural or corporate, who is a citizen of a
country signatory to the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY.

x x x x28 (Emphasis supplied)

In Mirpuri, the Court ruled that the essential requirement under Article 6bis of the Paris Convention is that the trademark to be protected
must be well-known in the country where protection is sought.29 The Court declared that the power to determine whether a trademark is
well-known lies in the competent authority of the country of registration or use.30 The Court then stated that the competent authority would
either be the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before the
courts.31

To be protected under the two directives of the Ministry of Trade, an internationally well-known mark need not be registered or used in the
Philippines.32 All that is required is that the mark is well-known internationally and in the Philippines for identical or similar goods, whether or
not the mark is registered or used in the Philippines. The Court ruled in Sehwani, Incorporated v. In-N-Out Burger, Inc.:33

The fact that respondents marks are neither registered nor used in the Philippines is of no moment. The scope of
protection initially afforded by Article 6bis of the Paris Convention has been expanded in the 1999 Joint Recommendation
Concerning Provisions on the Protection of Well-Known Marks, wherein the World Intellectual Property Organization
(WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark should
be protected in a country even if the mark is neither registered nor used in that country. Part I, Article 2(3) thereof
provides:

(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition for determining whether a
mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark
has been filed in or in respect of, the Member State:

(ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark
has been filed in or in respect of, any jurisdiction other than the Member State; or

(iii) that the mark is well known by the public at large in the Member State.34 (Italics in the original decision; boldface
supplied)

Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that a mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, cannot be registered by another in
the Philippines. Section 123.1(e) does not require that the well-known mark be used in commerce in the Philippines but only that it be
well-known in the Philippines. Moreover, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or
Stamped Containers, which implement R.A. No. 8293, provides:

Rule 102. Criteria for determining whether a mark is well-known. In determining whether a mark is well-known, the
following criteria or any combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical
area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the
goods and/or services to which the mark applies;
 (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

(c) the degree of the inherent or acquired distinction of the mark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in the world;

(f) the exclusivity of registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and

(l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or
services and owned by persons other than the person claiming that his mark is a well-known mark. (Emphasis supplied)

Since any combination of the foregoing criteria is sufficient to determine that a mark is well-known, it is clearly not necessary that the mark
be used in commerce in the Philippines. Thus, while under the territoriality principle a mark must be used in commerce in the Philippines to
be entitled to protection, internationally well-known marks are the exceptions to this rule.

In the assailed Decision of the Office of the Director General dated 21 April 2008, the Director General found that:

Traced to its roots or origin, HARVARD is not an ordinary word. It refers to no other than Harvard University, a recognized
and respected institution of higher learning located in Cambridge, Massachusetts, U.S.A. Initially referred to simply as the
new college, the institution was named Harvard College on 13 March 1639, after its first principal donor, a young
clergyman named John Harvard. A graduate of Emmanuel College, Cambridge in England, John Harvard bequeathed about
four hundred books in his will to form the basis of the college library collection, along with half his personal wealth worth
several hundred pounds. The earliest known official reference to Harvard as a university rather than college occurred in
the new Massachusetts Constitution of 1780.

Records also show that the first use of the name HARVARD was in 1638 for educational services, policy courses of
instructions and training at the university level. It has a Charter. Its first commercial use of the name or mark HARVARD
for Class 25 was on 31 December 1953 covered by UPTON Reg. No. 2,119,339 and 2,101,295. Assuming in arguendo, that
the Appellate may have used the mark HARVARD in the Philippines ahead of the Appellant, it still cannot be denied that
the Appellants use thereof was decades, even centuries, ahead of the Appellees. More importantly, the name HARVARD
was the name of a person whose deeds were considered to be a cornerstone of the university. The Appellants logos,
emblems or symbols are owned by Harvard University. The name HARVARD and the logos, emblems or symbols are
endemic and cannot be separated from the institution.35

Finally, in its assailed Decision, the Court of Appeals ruled:

 Records show that Harvard University is the oldest and one of the foremost educational institutions in the United States, it
being established in 1636. It is located primarily in Cambridge, Massachusetts and was named after John Harvard, a
puritan minister who left to the college his books and half of his estate.

The mark Harvard College was first used in commerce in the United States in 1638 for educational services, specifically,
providing courses of instruction and training at the university level (Class 41). Its application for registration with the
United States Patent and Trademark Office was filed on September 20, 2000 and it was registered on October 16, 2001.
The marks Harvard and Harvard Ve ri tas Shield Symbol were first used in commerce in the the United States on December
31, 1953 for athletic uniforms, boxer shorts, briefs, caps, coats, leather coats, sports coats, gym shorts, infant jackets,
leather jackets, night shirts, shirts, socks, sweat pants, sweatshirts, sweaters and underwear (Class 25). The applications
for registration with the USPTO were filed on September 9, 1996, the mark Harvard was registered on December 9, 1997
and the mark Harvard Ve ri tas Shield Symbol was registered on September 30, 1997.36

We also note that in a Decision37 dated 18 December 2008 involving a separate case between Harvard University and Streetward
International, Inc.,38 the Bureau of Legal Affairs of the IPO ruled that the mark Harvard is a well-known mark. This Decision, which cites among
others the numerous trademark registrations of Harvard University in various countries, has become final and executory.

There is no question then, and this Court so declares, that Harvard is a well-known name and mark not only in the United States but also
internationally, including the Philippines. The mark Harvard is rated as one of the most famous marks in the world. It has been registered in at
least 50 countries. It has been used and promoted extensively in numerous publications worldwide. It has established a considerable goodwill
worldwide since the founding of Harvard University more than 350 years ago. It is easily recognizable as the trade name and mark of Harvard
University of Cambridge, Massachusetts, U.S.A., internationally known as one of the leading educational institutions in the world. As such,
even before Harvard University applied for registration of the mark Harvard in the Philippines, the mark was already protected under Article
6bis and Article 8 of the Paris Convention. Again, even without applying the Paris Convention, Harvard University can invoke Section 4(a) of
R.A. No. 166 which prohibits the registration of a mark which may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs x x x.

WHEREFORE, we DENY the petition. We AFFIRM the 24 October 2008 Decision and 8 January 2009 Resolution of the Court of Appeals in
CA-G.R. SP No. 103394.

SO ORDERED.

BERSAMIN, J.:

The case concerns the cancellation of the registration of the trademark SAKURA for the goods of Uni-Line Multi Resources, Inc. (Phils.) (Uni-
-Line) being sought by Kensonic, Inc. (Kensonic) on the ground that the latter had prior use and registration of the SAKURA mark.

The Case

Under consideration are the consolidated appeals urging the review and reversal of the decision promulgated on July 30, 2013[1] and the
amended decision promulgated on March 19, 2014,[2] whereby the Court of Appeals (CA) affirmed the decision rendered on June 11, 2012 by
the Director General of the Intellectual Property Office (IPO) upholding the cancellation of the application of Uni-Line for the registration of
the SAKURA mark for goods falling under Class 09 of the Nice International Classification of Goods (Nice Classification), and allowing the
registration of Uni-Line's SAKURA mark registration for goods falling under Class 07 and Class 11 of the Nice Classification.[3]

Antecedents

The CA summarized the following factual and procedural antecedents, viz.:

On June 15, 1999, Uni-Line filed an application for the registration of the mark "SAKURA" for amplifier, speaker, cassette,
cassette disk, video cassette disk, car stereo, television, digital video disk, mini component, tape deck, compact disk
charger, VHS, and tape rewinder falling under Class 9 of the Nice International Classification of Goods. Kensonic opposed
Uni-Line's application which was docketed as IPC No. 14-2004-00160 (IPC 1). The Director of the Bureau of Legal Affairs
(BLA) rendered Decision No. 2005-01 dated November 29, 2005 finding that Kensonic was the first to adopt and use the
mark SAKURA since 1994 and thus rejecting Uni-Line's application. On January 19, 2006, said Decision became final and
executory.
 While IPC Case 1 was pending, Uni-Line filed an application and was issued a certificate of registration for the mark
"SAKURA & FLOWER DESIGN" for use on recordable compact disk (CD-R) computer, computer parts and accessories falling
under Class 9. On September 7, 2006, Kensonic filed a petition for cancellation docketed as IPC No. 14-2006-00183 (IPC 2)
of Uni-Line's registration. In Decision No. 08-113 dated August 7, 2008, the BLA Director held that Uni-Line's goods are
related to Kensonic's goods and that the latter was the first user of the mark SAKURA used on products under Class 9. The
BLA Director thus cancelled Uni-Line's certificate of registration. Uni-Line moved for reconsideration of the BLA Director's
Decision which is pending resolution to date.

On June 6, 2002, Uni-Line filed an application for the registration of the trademark SAKURA for use on the following:

Goods Nice Classification

Washing machines, high pressure washers, vacuum cleaners, floor

Class 07
polishers, blender, electric mixer, electrical juicer

Television sets, stereo components, DVD/VCD players, voltage

Class 09
regulators, portable generators, switch breakers, fuse

Refrigerators, air conditioners, oven toaster, turbo broiler, rice cooker,

microwave oven, coffee maker, sandwich/waffle maker, electric stove,
Class 11
electric fan, hot & cold water dispenser, airpot, electric griller and
electric hot pot

Uni-Line's application was thereafter published, and there being no opposition thereto, Certificate of Registration No.
4-2002-004572 for the mark SAKURA effective March 18, 2006 was issued.

On September 7, 2006, Kensonic filed with the BLA a Petition for Cancellation of Uni-Line's Certificate of Registration
alleging that in October 1994, it introduced the marketing of SAKURA products in the Philippines and that it owned said
SAKURA products and was the first to use, introduce and distribute said products. Kensonic also alleged that in IPC 1, it
opposed Uni-Line's application to register SAKURA and was already sustained by the Director General, which Decision is
now final and executory. Kensonic further alleged that it is the owner of a copyright for SAKURA and that since 1994, has
maintained and established a good name and goodwill over the SAKURA products.

Kensonic filed its Supplemental Petition for Cancellation and its Reply to Uni-Line's Answer. Uni-Line filed its Rejoinder
thereto.[4]

Decision of the Bureau of Legal Affairs (BLA), IPO

After due proceedings, the BLA issued Decision No. 2008-149 dated August 11, 2008,[5] whereby it ruled in favor of Kensonic and against Uni-
-Line, and directed the cancellation of Registration No. 4-2002-004572 of the latter's SAKURA mark. It observed that an examination of the
SAKURA mark of Kensonic and that of Uni-Line revealed that the marks were confusingly similar with each other; that the goods sought to be
covered by the SAKURA registration of Uni-Line were related to the goods of Kensonic, thereby necessitating the cancellation of the
registration of Uni-Line's mark; and that considering that Kensonic had used the SAKURA mark as early as 1994 in Class 09 goods (namely:
amplifiers, speakers, cassette disks, video cassette disks, car stereos, televisions, digital video disks, mini components, tape decks, compact
disk chargers, VHS and tape rewinders), Kensonic had acquired ownership of the SAKURA mark, and should be legally protected thereon. The
dispositive portion reads:

WHEREFORE, premises considered, the Verified Petition for Cancellation is hereby GRANTED. Accordingly, Certificate of
Registration No. 4-2002-004572 issued on 18 March 2006 for the trademark "SAKURA" in the name of Uni-Line Multi
Resources, Inc. Phils., is hereby ordered CANCELLED.

Let the file wrapper of this case be forwarded to the Bureau of Trademark (BOT) for appropriate action in accordance with
this Decision.

SO ORDERED.[6]

Decision of the Director General, IPO

On appeal,[7] the Director General of the IPO modified the decision of the BLR by upholding Uni-Line's registration of the SAKURA mark as to
goods classified as Class 07 and Class 11, thereby effectively reversing the BLR, but affirmed the BLR as regards the treatment of the SAKURA
mark that covered the goods falling under Class 09. The Director General clarified that the marks of Uni-Line and Kensonic were similar if not
identical; that considering that Inter Partes Case No. 14-2004-00160 (IPC 1) already effectively ruled that the products registered by Uni-Line
were goods related to those covered by the registration of Kensonic, the registration of Uni-Line insofar as those products sought to be
registered under Class 09 were concerned (i.e., television sets, stereo components, DVD/VCD players, voltage regulators, portable generators,
switch breakers, fuse) was correctly cancelled; that the registration of products of Uni-Line falling under Class 07 and Class 11 should not be
cancelled because the products were different from the goods registered under Class 09 in the name of Kensonic; that there should be
evidence showing how the continued registration of the SAKURA mark of Uni-Line would cause damage to Kensonic; and that the goods
covered by the SAKURA registration of Uni-Line and the SAKURA registration of Kensonic should be distinguished because:

In addition, the ordinary purchaser must be thought of, as having, and credited with, at least a modicum of intelligence. It
does not defy common sense to assert that a purchaser would be cognizant of the product he is buying. As a general rule,
an ordinary buyer does not exercise as much pendence in buying an article for which he pays a few centavos as he does in
purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative
and analytical investigation.

In this instance, the products of the Appellants under Classes 7 and 11 are home appliances which are not the ordinary
everyday goods the public buys and consumes. These products are not inexpensive items and a purchaser would ordinarily
examine carefully the features and characteristics of the same. It is, therefore, farfetched that the purchasing public would
be misled or be deceived as to the source or origin of the products. Furthermore, there is nothing in the records that
indicate any plans by the Appellee to enter into business transactions or to the manufacture and distribution of goods
similar to the products of the Appellants under Classes 7 and 11.[8]

The Director General of the IPO decreed as follows:

Wherefore, premises considered, the appeal is hereby dismissed in so far as the cancellation of the Appellant's Cert. of
Reg. No. 4-2002- 004572 for goods enumerated and falling under Class 9 is concerned. However, the appeal is hereby
granted in so far as the cancellation of Cert. of Reg. No. 4-2002-004572 for goods enumerated and falling under Classes 7
and 11 is concerned.

Accordingly, Cert. of Reg. No. 4-2002-004572 issued in favor of the Appellant for the mark SAKURA is hereby amended.
The registration of goods enumerated under Class 9, namely television sets, stereo components, DVD/VCD players,
voltage regulators, portable generators, switch breakers, fuse is hereby cancelled.

Let a copy of this Decision as well as the records of this case be furnished and returned to the Director of the Bureau of
Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and the library of
Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information,
guidance, and records purposes.

SO ORDERED.[9]

Judgment of the CA

Both parties appealed to the CA, which promulgated its decision on July 30, 2013 dismissing the appeal of Kensonic (C.A.-G.R. SP No. 125420)
and granting Uni-Line's appeals (C.A.-G.R. SP No. 125424). The CA upheld Kensonic's ownership of the SAKURA mark based on its showing of
its use of the mark since 1994, but ruled that despite the identical marks of Kensonic and Uni-Line, Kensonic's goods under Class 09 were
different from or unrelated to Uni-Line's goods under Class 07 and Class 11. It observed that the protection of the law regarding the SAKURA
mark could only extend to television sets, stereo components, DVD and VCD players but not to Uni-Line's voltage regulators, portable
generators, switch breakers and fuses due to such goods being unrelated to Kensonic's goods; that Kensonic's registration only covered
electronic audio-video products, not electrical home appliances; and that the similarity of the marks would not confuse the public because the
products were different and unrelated. It ruled:

WHEREFORE, the Petition filed by Kensonic, Inc., in C.A.G.R. SP No. 125420 is DENIED and the Petition filed by Uni-Line
Multi Resources, Inc. (Phils.) is GRANTED.

Accordingly, the Decision dated June 11, 2012 of Director General Ricardo R. Blancaflor of the Intellectual Property Office
is MODIFIED such that Uni-Line's Appeal insofar as the cancellation of its Certificate of Registration No. 4-2002-004572 for
goods enumerated and falling under Class 9 is GRANTED but DELETING therefrom the goods television sets, stereo
components, DVD players and VCD players. The Decision dated June 11, 2012 of the Director General is
hereby UPHELD insofar as it granted Uni-Line's Appeal on the cancellation of its Certificate of Registration No.
4-2002-004572 for goods enumerated and falling under Class 7 and Class 11.

SO ORDERED.[10]

Kensonic sought partial reconsideration, submitting that voltage regulators, portable generators, switch breakers and fuse were closely
related to its products; that maintaining the two SAKURA marks would cause confusion as to the source of the goods; and that Uni-Line's
goods falling under Class 07 and Class 11 were closely related to its goods falling under Class 09.
In the assailed amended decision promulgated on March 19, 2014,[11] the CA sided with Kensonic, and reverted to the ruling by the Director
General of IPO cancelling the registration of the SAKURA mark covering all the goods of Uni-Line falling under Class 09 on the basis that all the
goods belonged to the general class of goods. The CA decreed:

WHEREFORE, the Motion for Partial Reconsideration filed by Kensonic Inc. is PARTIALLY GRANTED. Uni-Line is prohibited
from using the mark SAKURA for goods falling under Class 9, but is allowed to use the mark SAKURA for goods falling
under Classes 7 and 11. Thus, the DENlAL of Uni-Line's Appeal insofar as the cancellation of its Certificate of Registration
No. 4-2002-004572 for goods enumerated and falling under Class 9 is UPHELD. The Decision dated June 11, 2012 of the
Director General is AFFIRMEDin toto.

SO ORDERED.[12]

Issues

Hence, this appeal by both parties.

Kensonic (G.R. Nos. 211820-21) insists that the CA erred in not considering that Uni-Line's goods under Class 07 and Class 11 were related to
its goods falling under Class 09; and that all the agencies below were unanimous in declaring that the marks were identical, and, as such, the
use of the SAKURA marks would lead to confusion about the source of the goods.

Uni-Line (G.R. Nos. 211834-35) contends that the SAKURA mark could not be appropriated because it simply referred to cherry blossom in
Japanese and was thus a generic name that was not copyrightable; that it was grave error for the IPO and the CA to rule that Kensonic owned
the mark; and that voltage regulators, portable generators, switch breakers and fuse were unrelated to Kensonic's products because
Uni-Line's products were not electronic.

The following issues are, therefore, to be resolved:

(1) Is the SAKURA mark capable of appropriation?

(2) Are Kensonic's goods falling under Class 09 related to UniLine's goods falling under Class 07 and Class 11?; and

Are Uni-Line's goods falling under Class 9, namely: voltage regulators, portable generators, switch breakers and fuses, related to
(3)
Kensonic's goods falling under Class 9?

Ruling of the Court

The appeal of Kensonic in G.R. Nos. 211820-21 is dismissed but the petition in G.R. Nos. 211834-35 is partially granted.

I.

The SAKURA mark can be appropriated

Uni-Line's opposition to Kensonic's ownership of the SAKURA mark insists that the: SAKURA mark is not copyrightable for being generic. Such
insistence is unacceptable.

To be noted is that the controversy revolves around the SAKURA mark which is not a copyright. The distinction is significant. A mark is any
visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise, and includes a stamped or marked
container of goods.[13] In contrast, a copyright is the right to literary property as recognized and sanctioned by positive law; it is an intangible,
incorporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he or she is invested, for a
specific period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them.[14] Obviously, the
SAKURA mark is not an artistic or literary work but a sign used to distinguish the goods or services of one enterprise from those of another.

An examination of the pertinent laws also reveals that Uni-Line mistakenly argues that the SAKURA mark was not capable of registration for
being generic.

Section 123(h) of the Intellectual Property Code prohibits the registration of a trademark that consists exclusively of signs that are generic for
the goods or services that they seek to identify. It is clear from the law itself, therefore, that what is prohibited is not having a generic mark
but having such generic mark being identifiable to the good or service. In Asia Brewery, Inc., v. Court of Appeals,[15] the Court ruled that there
was no infringement of San Miguel Brewery's Pale Pilsen trademark because Pale Pilsen could not be appropriated. The Court explained:
 The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark:
SAN MIGUEL PALE PILSEN, for "pale pilsen" 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 in Czechoslovakia and became
famous in the Middle Ages. (Webster's Third New International Dictionary of the English Language, Unabridged Edited by
Philip Babcock Gove. Springfield, Mass.: G & C Merriam Co., c) 1976, page 1716.) "Pilsen" is a "primarily geographically
descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by Sec. 2 of R.A. No. 638) hence, non-registerable
and not appropriable by any beer manufacturer. The Trademark Law provides:

"Sec. 4.... The owner of trade-mark, trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to register the
same [on the principal register], unless it:

xxx xxx xxx

"(e) Consists of a mark or trade-name which, when applied to or used in connection with the goods,
business or services of the applicant is merely descriptive or deceptively misdescriptive of them, or
when applied to or used in connection with the goods, business or services of the applicant is primarily
geographically descriptive or deceptively misdescriptive of them, or is primarily merely a surname."
(Emphasis supplied.)"

The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered
trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive words as "evaporated milk," "tomato ketchup,"
"cheddar cheese," "com flakes" and "cooking oil" may be appropriated by any single manufacturer of these food products,
for no other reason than that he was the first to use them in his registered trademark. In Masso Hermanos, S.A. vs.
Director of Patents, 94 Phil. 136, 139 (1953), it was held that a dealer in shoes cannot register "Leather Shoes" as his
trademark because that would be merely descriptive and it would be unjust to deprive other dealers in leather shoes of
the right to use the same words with reference to their merchandise. No one may appropriate generic or descriptive
words. They belong to the public domain (Ong Ai Gui vs. Director of Patents, 96 Phil. 673, 676 [1955]).

"A word or a combination of words which is merely descriptive of an article of trade, or of its
composition, characteristics, or qualities, cannot be appropriated and protected as a trademark to the
exclusion of its use by others . . . inasmuch as all persons have an equal right to produce and vend
similar articles, they also have the right to describe them properly and to use any appropriate
language or words for that purpose, and no person can appropriate to himself exclusively any word or
expression, properly descriptive of the article, its qualities, ingredients or characteristics, and thus limit
other persons in the use of language appropriate to the description of their manufactures, the right to
the use of such language being common to all. This rule excluding descriptive terms has also been held
to apply to trade-names. As to whether words employed fall within this prohibition, it is said that the
true test is not whether they are exhaustively descriptive of the article designated, but whether in
themselves, and as they are commonly used by those who understand their meaning, they are
reasonably indicative and descriptive of the thing intended. If they are thus descriptive, and not
arbitrary, they cannot be appropriated from general use and become the exclusive property of anyone.
(52 Am. Jur. 542-543.)

". . . Others may use the same or similar descriptive word in connection with their own wares,
provided they take proper steps to prevent the public being deceived. (Richmond Remedies Co. vs. Dr.
Miles Medical Co., 16 E. [2d] 598.)

". . . A descriptive word may be admittedly distinctive, especially if the user is the first creator of the
article. It will, however, be denied protection, not because it lacks distinctiveness, but rather because
others are equally entitled to its use. (2 Callman, Unfair Competition and Trademarks, pp. 869-870.)"

This, however, is not the situation herein. Although SAKURA refers to the Japanese flowering cherry[16] and is, therefore, of a generic nature,
such mark did not identify Kensonic's goods unlike the mark in Asia Brewery, Inc., v. Court of Appeals. Kensonic's DVD or VCD players and
other products could not be identified with cherry blossoms. Hence, the mark can be appropriated.

Kensonic's prior use of the mark since 1994 made it the owner of the mark, and its ownership cannot anymore be challenged at this stage of
the proceedings. Seeking the review of Kensonic's ownership would entail the examination of facts already settled by the lower tribunals.
Uni-Line's challenge to the ownership of the SAKURA mark should stop here because the Court cannot act on a factual matter in this appeal by
petition for review on certiorari, which is limited to the consideration of questions of law. Section 1, Rule 45 of the Rules of Court specifically
so provides:
 Section 1. Filing of petition with Supreme Court. - A party desiring to appeal by certiorari from a judgment or final order or
resolution of the Court of Appeals, the Sandiganbayan, the Court of Tax Appeals, the Regional Trial Court or other courts
whenever authorized by law, may file with the Supreme Court a verified petition for review on certiorari. The petition may
include an application for a writ of preliminary injunction or other provisional remedies and shall raise only questions of
law which must be distinctly set forth. The petitioner may seek the same provisional remedies by verified motion filed in
the same action or proceeding lat any time during its pendency.

The distinction between a question of law and a question of fact is well defined. According to Tongonan Holdings and Development
Corporation v. Escaño, Jr.:[17]

A question of law arises when there is doubt as to what the law is on a certain state of facts, while there is a question of
fact when the doubt arises as to the truth or falsity of the alleged facts. For a question to be one of law, the same must
not involve an examination of the probative value of the evidence presented by the litigants or any of them. The
resolution of the issue must rest solely on what the law provides on the given set of circumstances. Once it is clear that
the issue invites a review of the evidence presented, the question posed is one of fact. Thus, the test of whether a
question is one of law or of fact is not the appellation given to such question by the party raising the same; rather, it is
whether the appellate court can determine the issue raised without reviewing or evaluating the evidence, in which case, it
is a question of law; otherwise it is a question of fact.

It is timely to remind, too, that the Court is not a trier of facts. Hence, the factual findings of the quasi-judicial body like the IPO, especially
when affirmed by the CA, are binding on the Court.[18] Jurisprudence has laid down certain exceptions to the rule of bindingness,[19] but,
alas, Uni-Line did not discharge its burden to show how its urging for a review of the factual findings came within any of the exceptions.

II.

Uni-Line's goods classified under Class 07 and Class 11 were not related to Kensonic's goods registered under Class 09

The CA did not err in allowing the registration of Uni-Line's products falling under Class 07 and Class 11, for, indeed, those products - as found
by the lower tribunals were unrelated to the goods of Kensonic registered under Class 09.

Still, Kensonic contends that the goods of Uni-Line classified under Class 07 and Class 11 were covered by the prohibition from registration for
being within the normal potential expansion of Kensonic.

The contention is unwarranted.

The prohibition under Section 123 of the Intellectual Property Code extends to goods that are related to the registered goods, not to goods
that the registrant may produce in the future. To allow the expansion of coverage is to prevent future registrants of goods from securing a
trademark on the basis of mere possibilities and conjectures that may or may not occur at all. Surely, the right to a trademark should not be
made to depend on mere possibilities and conjectures.

In Mighty Corporation v. E. & J. Gallo Winery,[20] the Court has identified the different factors by which to determine whether or not goods
are related to each other for purposes of registration:

Non-competing goods may be those which, though they are not in actual competition, are so related to each other that it
can reasonably be assumed that they originate from one manufacturer, in which case, confusion of business can arise out
of the use of similar marks. They may also be those which, being entirely unrelated, cannot be assumed to have a common
source; hence, there is no confusion of business, even though similar marks are used. Thus, there is no trademark
infringement if the public does not expect the plaintiff to make or sell the same class of goods as those made or sold by
the defendant.

In resolving whether goods are related, several factors come into play:

(a) the business (and its location) to which the goods belong

(b) the class of product to which the goods belong

(c) the product's quality, quantity, or size, including the nature of the package, wrapper or container
 (d) the nature and cost of the articles

(e) the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality

(f) the purpose of the goods

(g) whether the article is bought for immediate consumption, that is, day-to-day household items

(h) the fields of manufacture

(i) the conditions under which the article is usually purchased and

(j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold. (Citations omitted)

An examination of the foregoing factors reveals that the goods of Uni-Line were not related to the goods of Kensonic by virtue of their
differences in class, the descriptive attribues, the purposes and the conditions of the goods.

In Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc.,[21] the Court has opined that the mere fact that goods belonged to the same
class does not necessarily mean that they are related; and that the factors listed in Mighty Corporation v. E. & J. Gallo Winery should be taken
into consideration, to wit:

As mentioned, the classification of the products under the NCL is merely part and parcel of the factors to be considered in
ascertaining whether the goods are related. It is not sufficient to state that the goods involved herein are electronic
products under Class 9 in order to establish relatedness between the goods, for this only accounts for one of many
considerations enumerated in Mighty Corporation. xxx

Clearly then, it was erroneous for respondent to assume over the CA to conclude that all electronic products are related
and that the coverage of one electronic product necessarily precludes the registration of a similar; mark over another. In
this digital age wherein electronic products have not only diversified by leaps and bounds, and are geared towards
interoperability, it is difficult to assert readily, as respondent simplistically did, that all devices that require plugging into
sockets are necessarily related goods.

It bears to stress at this point that the list of products included in Class 9 can be sub-categorized into five (5) classifications,
namely: (1) apparatus and instruments for scientific or research purposes, (2) information technology and audiovisual
equipment, (3) apparatus and devices for controlling the distribution and use of electricity, (4) optical apparatus and
instruments, and (5) safety equipment. From this subclassification, it becomes apparent that petitioner's products, i.e.,
televisions and DVD players, belong to audiovisual equipment, while that of respondent, consisting of automatic voltage
regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified
AC-DC, generally fall under devices for controlling the distribution and use of electricity.

Based on the foregoing pronouncement in Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc., there are other sub-classifications
present even if the goods are classified under Class 09. For one, Kensonic's goods belonged to the information technology and audiovisual
equipment subclass, but Uni-Line's goods pertained to the apparatus and devices for controlling the distribution of electricity sub-class. Also,
the Class 09 goods of Kensonic were final products but Uni-Line's Class 09 products were spare parts. In view of these distinctions, the Court
agrees with Uni-Line that its Class 09 goods were unrelated to the Class 09 goods of Kensonic.

WHEREFORE, the Court DENIES the petition for review on certiorari in G.R. No. 211820-21; PARTIALLY GRANTS the petition for review
on certiorari in G.R. No. 211834-35; REVERSES and SETS ASIDE the amended decision promulgated on March 19, 2014; PARTIALLY
REINSTATES the decision promulgated on July 30, 2013 insofar as it allowed the registration by Uni-Line Multi-Resources, Inc. under the
SAKURA mark of its voltage regulators, portable generators, switch breakers and fuses; and ORDERSKensonic, Inc. to pay the costs of suit.
SO ORDERED.

G.R. No. 186088

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS, Petitioner

vs
KONINKLIJKE PHILIPS ELECTRONICS, N.V., Respondent

DECISION

SERENO, CJ.:

This Petition for Review on Certiorari1 filed by petitioner Wilton Dy and/or Philites Electronic & Lighting Products ("PHILITES") assails the
Decision2 and Resolution3 of the Court of Appeals (CA) in CA-G.R. SP No. 103350. The appellate court reversed and set aside the Decision4 of
the IPP Office of the Director General (IPP-DG), which affirmed the Decision5 of the Intellectual Property Philippines Bureau of Legal Affairs
(IPP-BLA) upholding petitioner's trademark application.

THE ANTECEDENT FACTS

On 12 April 2000, petitioner PHILITES filed a trademark application (Application Serial Number 4-2000-002937) covering its fluorescent bulb,
incandescent light, starter and ballast. After publication, respondent Koninklijke Philips Electronics, N .V. ("PHILIPS") filed a Verified Notice of
Opposition on 17 March 2006, alleging the following:

(a) The approval of Application Serial No. 4-2000-002937 is contrary to the following provisions of Republic Act No. [RAJ 8293 or the
Intellectual Property Code of the Philippines (IP Code): Sections 123.l(d), (i) and (iii), 123.l(e), 147, and 168.

(b) The approval of Application Serial No. 4-2000-002937 will cause grave and irreparable damage and injury to oppose.

(c) The use and registration of the applied for mark by [petitioner] will mislead the public as to the origin, nature, quality, and characteristic of
the goods on which it is affixed;

(d) [Petitioner's] application for registration is tantamount to fraud as it seeks to register and obtain legal protection for an identical or
confusingly similar mark that clearly infringes upon the established rights of the [respondent] over its registered and internationally
well-known mark.

(e) The registration of the trademark PHILITES & LETTER P DEVICE in the name of the [petitioner] will violate the proprietary rights and
interests, business reputation and goodwill of the [respondent] over its trademark, considering that the distinctiveness of the trademark
PHILIPS will be diluted.

(t) The registration of the applied for mark will not only prejudice the Opposer, but will also cause [petitioner] to unfairly profit commercially
from the goodwill, fame and notoriety of Opposer's trademark and reputation.

(g) [Petitioner's] registration and use of the applied for mark in connection with goods under Class 11 will weaken the unique and distinctive
significance of mark PHILIPS and will tarnish, degrade or dilute the distinctive quality of Opposer's trademark and will result in the gradual
attenuation or whittling away of the value of Opposer's trademark, in violation of Opposer's proprietary rights. 6

On 8 August 2006, petitioner filed a Verified Answer, stating that its PHILITES & LETTER P DEVICE trademark and respondent's PHILIPS have
vast dissimilarities in terms of spelling, sound and meaning.7

At the conclusion of the hearing, on 9 November 2006, IPP-BLA Director Estrellita Beltran-Abelardo rendered a Decision8 denying the
Opposition filed by respondent PHILIPS. The dispositive portion of the Decision reads:
 WHEREFORE, premises considered the OPPOSITION filed by Koninklijke Philips Electronics, N.V. is
hereby DENIED. Accordingly, Application Serial no. 4-2000-002937 filed by Respondent-Applicant, Wilton Dy and/or
Philites Electronic & Lighting Products on 12 April 2000 for the mark "PHILITES & LETTER P DEVICE" used on fluorescent
bulb, incandescent light starter, ballast under class 11, is as it is, hereby GRANTED.

Let the filewrapper of "PHILITES & LETTER P DEVICE," subject matter of this case together with this Decision be forwarded
to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

In upholding petitioner's trademark application, the IPP-BLA stated that assuming respondent's mark was well-known in the Philippines, there
should have been prior determination of whether or not the mark under application for registration was "identical with, or confusingly similar
to, or constitutes a translation of such well-known mark in order that the owner of the well-known mark can prevent its registration."9 From
the evidence presented, the IPP-BLA concluded that the PHILIPS and PHILITES marks were so unlike, both visually and aurally. It held that no
confusion was likely to occur, despite their contemporaneous use, based on the following observations:

The Philips shield mark has four stars in different sizes located at the north east and south west portions inside a circle
within the shield. There are three wavy lines dissecting the middle of the circle. None of these appear in the respondent's
mark.

[Respondent] declares that the word Philips is the surname of the brothers who founded the Philips company engaged in
manufacturing and selling lighting products. [Petitioner] on the other hand has testified that the word Philites is coined
from the word 'Philippines' and 'lights,' hence 'Philites.' This Bureau finds that there is no dictionary meaning to the
[petitioner's] mark. It is a coined and arbitrary word capable of appropriation as a trademark. x x x

Moreover, by mere pronouncing the two marks, the phonetic sounds produced when each mark is uttered are not the
same. The last syllable of respondent's mark is uttered in a long vowel sound, while the last vowel of the opposer's mark is
not.

x x x. This Bureau believes that opposer has no monopoly over the color or diameter or shape of a light bulb or packaging
shape unless registrations were secured to protect the same. The images of the packages are reproduced below for
reference.

x x x. For one, respondent adopts a yellow to light yellow dominant color while the oppose uses an orange yellow hue. The
mark "Philites" is printed in yellow with light blue background as compared to the "Philips" mark typed in white against a
black background.

It is fundamental in trademark jurisprudence that color alone, unless displayed in an arbitrary design docs not function as
a trademark.

Secondly, there appears to be other advertising slogans that appear in respondent's package such as the words, "new",
"prolong lite life", "E-coat finished" and "with additional 35% more than ordinary". These phrases are absent in opposer's
package. These phrases can be considered in the nature of descriptive terms that can be appropriated by anyone.10

Upon appeal, the IPP-DG rendered a Decision11 on 16 April 2008, affirming the ruling of the IPP-BLA as follows:

WHEREFORE, premises considered, that instant appeal is hereby DISMISSED for lack of merit. Accordingly, Decision No.
2006-125 of the Director of the Bureau of Legal Affairs dated 09 November 2006, is hereby AFFIRMED.

Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of
Bureau of Legal Affairs for appropriate action. Further, let also the Directors of the Bureau of Trademarks, the
Administrative, Pinancial and Human Resources Development Services Bureau, and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance and records
purposes.

SO ORDERED.
In so ruling, the IPP-DG noted that "[t]he dominant feature of the [respondent's] trademark is 'PHILIPS' while that of the [petitioner's]
trademark is 'PHILITES.' While the first syllables of the marks are identical - 'PHI' - the second syllables are not. The differences in the last
syllable accounted for the variance of the trademarks visually and aurally." 12 Moreover, there were "glaring differences and dissimilarities in
the design and general appearance of the Philips shield emblem mark and the letter 'P' of Philites mark." 13 Thus, "even if the [petitioner's]
products bearing the trademark PHILIPS are placed side by side with other brands, the purchaser would not be confused to pick up the
[petitioner's] product if this is his choice or preference, unless the resemblance in the appearance of the trademarks is so glaring which [it] is
not in this case."14

As regards the issue of petitioner submitting a trademark drawing different from that used in the packaging, the IPP-DG noted that this case
involved an opposition to the registration of a mark, while labels and packaging were technically not a part thereof. 15 At best, respondent
supposedly had the remedy of filing a case for trademark infringement and/or unfair competition. 16

Upon intermediate appellate review, the CA rendered a Decision 17 on 7 October 2008. The dispositive portion herein reads:

WHEREFORE, premises considered, the Petition for Review is GRANTED. The Decision dated 16 April 2008 of the Director
General of the Intellectual Property Office in Appeal No. 14-06-28; IPC No. 14-2006- 00034 is REVERSED and SET ASIDE.
The application for trademark registration (Application Serial Number 4-2000-002937) of respondent Wilton Dy and/or
Philites Electronic & Lighting Products is DISMISSED. Costs against respondent.

SO ORDERED.

In so ruling, the CA reasoned that the "drawing of the trademark submitted by [petitioner] has a different appearance from that of
[petitioner's] actual wrapper or packaging that contain the light bulbs, which We find confusingly similar with that of [respondent's] registered
trademark and packaging."18 Moreover, it found to be "self-serving [petitioner's] asseveration that the mark 'PHILITES' is a coined or arbitrary
mark from the words 'Philippines' and 'lights.' Of all the marks that [petitioner] could possibly think of for his light bulbs, it is odd that
[petitioner] chose a mark with the letters 'PHILI,' which are the same prevalent or dominant five letters found in [respondent's] trademark
'PHILIPS' for the same products, light bulbs."19 Hence, the appellate court concluded that petitioner had intended to ride on the
long-established reputation and goodwill of respondent's trademark.20

On 25 October 2008, petitioner filed a Motion for Reconsideration, which was denied in a Resolution 21 issued by the CA on 18 December
2008.

Hence, this petition.

Respondent filed its Comment22 on 23 June 2009, and petitioner filed its Reply23 on 10 November 2009.

THE ISSUES

From the foregoing, we reduce the issues to the following:

1. Whether or not respondent's mark is a registered and well-known mark in the Philippines; and

2. Whether or not the mark applied for by petitioner is identical or confusingly similar with that of respondent.

OUR RULING

The Petition is bereft of merit.

A trademark is "any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by othcrs." 24 It is
"intellectual property deserving protection by law,"25 and "susceptible to registration if it is crafted fancifully or arbitrarily and is capable of
identifying and distinguishing the goods of one manufacturer or seller from those of another."26

Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark shall be acquired through registration
validly done in accordance with the provisions of this law.27 Corollary to that rule, Section 123 provides which marks cannot be registered.

Respondent opposes petitioner's application on the ground that PHILITES' registration will mislead the public over an identical or confusingly
similar mark of PHILIPS, which is registered and internationally well-known mark. Specifically, respondent invokes the following provisions of
Section 123:

Section 123. Registrability. - 123 .1. A mark cannot be registered if it:

 xxx

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in
respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark whid1 is considered by the competent
authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at large, including knowledge in the Philipines which has been
obtained as a result of the promotion of the mark.28

Respondent's mark is a registered and well-known mark in the

Philippines

There is no question that respondent's mark PHILIPS is already a registered and well-known mark in the Philippines.

As we have said in Fredco Manufacturing Corporation v. Harvard University,29 "[i]ndeed, Section 123.l(e) of R.A. No. 8293 now categorically
states that 'a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines,
whether or not it is registered here,' cannot be registered by another in the Philippines. "30

Rule l00(a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers defines "competent
authority" in the following manner:

(c) "Competent authority" for purposes of determining whether a mark is well-known, means the Court, the Director
General, the Director of the Bureau of Legal Affairs, or any administrative agency or office vested with quasi-judicial or
judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark.

We thus affirm the following findings of the CA, inasmuch as the trademark of PHILIPS is a registered and well-known mark, as held in the
Supreme Court Decision in Philips Export B. V, v. CA:31

Petitioner (PHILIPS) is the registered owner in the Philippines of the "PHILIPS" and "PHILIPS SHIELD EMBLEM" trademarks,
as shown by Certificates of Registration Nos. 42271 and 42270. The Philippine trademark registrations of petitioner's
"PHILIPS" and "PHILIPS SHIELD EMBLEM" are also evidenced by Certificates of Registration Nos. R- 1651, R-29134, R-1674,
and R-28981. The said registered trademarks "PHILIPS" and "PHILIPS SHIELD EMBLEM" cover classes 7, 8, 9, 10, 11, 14, and
16. The assailed Decision itself states that "(T)he Appellant's trademark is already registered and in use in the Philippines".
It also appears that worldwide, petitioner has thousands of trademark registrations x x x in various countries. As found by
the High Court in Philips Export B.V. vs Court of Appeals, PHILIPS is a trademark or trade name which was registered as far
back as 1922, and has acquired the status of a well-known mark in the Philippines and internationally as well.32

Petitioner seeks to register a mark

nearly resembling that of respondent,
which may likely to deceive or cause
confusion among consumers.

Despite respondent's diversification to numerous and varied industries, 33 the records show that both parties are engaged in the same line of
business: selling identical or similar goods such as fluorescent bulbs, incandescent lights, starters and ballasts.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or totality
test.34

On one hand, the dominancy test focuses on "the similarity of the prevalent or dominant features of the competing trademarks that might
cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required
that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by
the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. " 35
On the other hand, the holistic or totality test necessitates a "consideration of the entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant
words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly
similar to the other."361âwphi1

Applying the dominancy test to this case requires us to look only at the mark submitted by petitioner in its application, while we give
importance to the aural and visual impressions the mark is likely to create in the minds of the buyers. We agree with the findings of the CA
that the mark "PHILITES" bears an uncanny resemblance or confusing similarity with respondent's mark "PHILIPS," to wit:

Applying the dominancy test in the instant case, it shows the uncanny resemblance or confusing similarity between the
trademark applied for by respondent with that of petitioner's registered trademark. An examination of the trademarks
shows that their dominant or prevalent feature is the five-letter "PHILI", "PHILIPS" for petitioner, and "PHILITES" for
respondent. The marks are confusingly similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks. The consuming public does not have the luxury of time to ruminate the
phonetic sounds of the trademarks, to find out which one has a short or long vowel sound. At bottom, the letters "PHILI''
visually catch the attention of the consuming public and the use of respondent's trademark will likely deceive or cause
confusion. Most importantly, both trademarks are used in the sale of the same goods, which are light bulbs.37

The confusing similarity becomes even more prominent when we examine the entirety of the marks used by petitioner and respondent,
including the way the products are packaged. In using the holistic test, we find that there is a confusing similarity between the registered
marks PHILIPS and PHILITES, and note that the mark petitioner seeks to register is vastly different from that which it actually uses in the
packaging of its products. We quote with approval the findings of the CA as follows:

Applying the holistic test, entails a consideration of the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. A comparison between petitioner's registered trademark
"PHILIPS'' as used in the wrapper or packaging of its light bulbs and that of respondent's applied for trademark "PHILITES"
as depicted in the container or actual wrapper/packaging of the latter's light bulbs will readily show that there is a strong
similitude and likeness between the two trademarks that will likely cause deception or confusion to the purchasing public.
The fact that the parties' wrapper or packaging reflects negligible differences considering the use of a slightly different
font and hue of the yellow is of no moment because taken in their entirety, respondent's trademark "PHILITES" will likely
cause confusion or deception to the ordinary purchaser with a modicum of intelligence.38

WHEREFORE, in view of the foregoing, the Petition for Review on Certiorari is hereby DENIED. The 7 October 2008 Decision and 18 December
2008 Resolution of the Court of Appeals in CA-G.R. SP No. 103350 are hereby AFFIRMED. SO ORDERED.

G.R. No. 221717

MANG INASAL PHILIPPINES, INC., Petitioner

vs.
IFP MANUFACTURING CORPORATION, Respondent

DECISION

VELASCO, JR., J.:

Before us is a Petition for Review on Certiorari under Rule 45 of the Rules of Court of the Resolutions dated June 10, 2015 1 and December 2,
2015 2 of the Court of Appeals (CA) in CA-G.R. SP No. 139020.

The Facts

The Trademark Application and the Opposition Respondent IFP Manufacturing Corporation is a local manufacturer of snacks and beverages.

On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an application 3 for the registration of the mark "OK Hotdog
Inasal Cheese Hotdog Flavor Mark" (OK Hotdog Inasal mark) in connection with goods under Class 30 of the Nice Classification.4 The said mark,
which respondent intends to use on one of its curl snack products, appears as follows:

The application of respondent was opposed 5 by petitioner Mang Inasal Philippines, Inc.
Petitioner is a domestic fast food company and the owner of the mark "Mang Inasal, Home of Real Pinoy Style Barbeque and Device" (Mang
Inasal mark) for services under Class 43 of the Nice Classification. 6 The said mark, which was registered with the IPO in 2006 7 and had been
used by petitioner for its chain of restaurants since 2003, 8 consists of the following Insignia:

Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog Inasal mark is prohibited under Section 123.l (d)(iii) of
Republic Act No. (RA) 8293. 9 Petitioner averred that the OK Hotdog Inasal mark and the Mang Inasal mark share similarities-both as to their
appearance and as to the goods or services that they represent which tend to suggest a false connection or association between the said
marks and, in that regard, would likely cause confusion on the part of the public. 10 As petitioner explained:

1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the same dominant element-i.e., the
word "INASAL"-printed and stylized in the exact same manner, viz:

a. In both marks, the word "INASAL" is spelled using the same font style and red color;

b. In both marks, the word "INASAL" is placed inside the same black outline and yellow background; and

c. In both marks, the word "INASAL" is arranged in the same staggered format.

2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack products) are also closely related to
the services represented by the Mang Inasal mark (i.e., fast food restaurants). Both marks cover inasal or inasal-flavored
food products.

Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for hearing and disposition.

Decisions of the IPO-BLA and the IPO-DG

On September 19, 2013, after due proceedings, the IPO-BLA issued a Decision 11 dismissing petitioner's opposition. The dispositive portion of
the Decision reads:

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the filewrapper [sic] of Trademark
Application Serial No. 4-2011-006098 be returned, together with a copy of this Decision, to the Bureau of Trademarks for
further information and appropriate action.

SO ORDERED.

Aggrieved, petitioner appealed the Decision of IPO-BLA to the Director General (DG) of the IPO. 12

On December 15, 2014, the IPO-DG rendered a Decision 13 dismissing the appeal of petitioner. The fallo of the Decision accordingly reads:

Wherefore, premises considered, the appeal is hereby dismissed. Let a copy of this Decision be furnished to the Director
of Bureau of Legal Affairs and the Director of Bureau of Trademarks for their appropriate action and information. Further,
let a copy of this Decision be furnished to the library of the Documentation, Information and Technology Transfer Bureau
for records purposes.

SO ORDERED.

Both the IPO-BLA and the IPO-DG were not convinced that the OK Hotdog Inasal mark is confusingly similar to the Mang Inasal mark. They
rebuffed petitioner's contention, thusly:

1. The OK Hotdog Inasal mark is not similar to the Mang !nasal mark. In terms of appearance, the only similarity between
the two marks is the word "INASAL." However, there are other words like "OK," "HOTDOG," and "CHEESE' and images like
that of curls and cheese that are found in the OK Hotdog Inasal mark but are not present in the Mang Inasal mark. 14

In addition, petitioner cannot prevent the application of the word "INASAL" in the OK Hotdog Inasal mark. No person or
entity can claim exclusive right to use the word "INASAL" because it is merely a generic or descriptive word that means
barbeque or barbeque products. 15
 Neither can the underlying goods and services of the two marks be considered as closely related. The products
represented by the two marks are not competitive and are sold in different channels of trade. The curl snack products of
the OK Hotdog Inasal mark are sold in sari-sari stores, grocery stores and other small distributor outlets, whereas the food
products associated with the Mang Inasal mark are sold in petitioner's restaurants. 16

Undeterred, petitioner appealed to the CA.

Resolutions of the CA and the Instant Appeal

On June 10, 2015, the CA issued a Resolution 17 denying the appeal of petitioner. Petitioner filed a motion for reconsideration, but this too
was denied by the CA through its Resolution18 dated December 2, 2015. The CA, in its Resolutions, simply agreed with the ratiocinations of
the IPOBLA and IPO-DG.

Hence, the instant appeal.

Here, petitioner prays for the reversal of the CA Resolutions. Petitioner maintains that the OK Hotdog Inasal mark is confusingly similar to the
Mang Inasal mark and insists that the trademark application of respondent ought to be denied for that reason.

Our Ruling

We have examined the OK Hotdog Inasal and Mang Inasal marks under the lens of pertinent law and jurisprudence. And, through it, we have
determined the justness of petitioner's claim. By our legal and jurisprudential standards, the respondent's OK Hotdog Inasal mark is, indeed,
likely to cause deception or confusion on the part of the public. Hence, contrary to what the IPO-BLA, IPO-DG, and the CA had ruled, the
respondent's application should have been denied.

We, therefore, grant the appeal.

The Proscription: Sec. 123.l(d)(iii) of RA 8293

A mark that is similar to a registered mark or a mark with an earlier filing or priority date (earlier mark) and which is likely to cause confusion
on the part of the public cannot be registered with the IPO. Such is the import of Sec. 123.l(d)(iii) of RA 8293:

SECTION 123. Registrability. –

123. 1. A mark cannot be registered if it:

xxxx

d. xxx:

1. x x x

11. x x x

iii. ... nearly resembles [a registered mark belonging to a different proprietor or a mark with an earlier filing or priority
date] as to be likely to deceive or cause confusion.

The concept of confusion, which is at the heart of the proscription, could either refer to confusion of goods or confusion of
business. In Skechers U.S.A., Inc. v. Trendworks International Corporation, 19 we discussed and differentiated both types of confusion, as
follows:

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz.:
(1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where,
although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is
such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be
deceived either into that belief or into the belief that there is some connection between the two parties, though
inexistent.
Confusion, in either of its forms, is, thus, only possible when the goods or services covered by allegedly similar marks are identical, similar or
related in some manner. 20

Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to deceive or cause confusion upon the purchasing public, a
prospective mark must be shown to meet two (2) minimum conditions:

1. The prospective mark must nearly resemble or be similar to an earlier mark; and

2. The prospective mark must pertain to goods or services that are either identical, similar or related to the goods or services represented by
the earlier mark.

The rulings of the IPO-BLA, IPO-DG, and the CA all rest on the notion that the OK Hotdog Inasal mark does not fulfill both conditions and so
may be granted registration.

We disagree.

II

The OK Hotdog Inasal Mark Is Similar to the Mang Inasal Mark

The first condition of the proscription requires resemblance or similarity between a prospective mark and an earlier mark. Similarity does not
mean absolute identity of marks. 21 To be regarded as similar to an earlier mark, it is enough that a prospective mark be a colorable imitation
of the former. 22 Colorable imitation denotes such likeness in form, content, words, sound, meaning, special arrangement or general
appearance of one mark with respect to another as would likely mislead an average buyer in the ordinary course of purchase. 23

In determining whether there is similarity or colorable imitation between two marks, authorities employ either the dominancy test or
the holistic test.24 In Mighty Corporation v. E. & J. Gallo Winery,25 we distinguished between the two tests as follows:

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause
confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant
features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not
necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use
of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers.

On the other hand, the Holistic Test requires that the entirety of the marks in question be considered in resolving
confusing similarity. Comparison of words is not the only determining factor. The trademarks in their entirety as they
appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached.
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 whether one is confusingly similar to the other.
(citations omitted and emphasis supplied)

There are currently no fixed rules as to which of the two tests can be applied in any given case. 26 However, recent case law on trademark
seems to indicate an overwhelming judicial preference towards applying the dominancy test. 27 We conform.

Our examination of the marks in controversy yielded the following findings:

1. The petitioner's Mang Inasal mark has a single dominant feature-the word "INASAL" written in a bold red typeface
against a black outline and yellow background with staggered design. The other perceptible elements of the mark-such as
the word "MANG" written in black colored font at the upper left side of the mark and the phrase "HOME OF REAL PINOY
STYLE BARBEQUF' written in a black colored stylized font at the lower portion of the mark-are not as visually outstanding
as the mentioned feature.

2. Being the sole dominant element, the word "INASAL," as stylized in the Mang Inasal mark, is also the most distinctive
and recognizable feature of the said mark.

3. The dominant element "INASAL," as stylized in the Mang Inasal mark, is different from the term "inasal' per se. The
term "inasal" per se is a descriptive term that cannot be appropriated. However, the dominant element "INASAL," as
stylized in the Mang Inasal mark, is not. Petitioner, as the registered owner of the Mang Inasal mark, can claim exclusive
use of such element.
 4. The respondent's OK Hotdog Inasal mark, on the other hand, has three (3) dominant features: (a) the
word "INASAL" written in a bold red typeface against a black and yellow outline with staggered design; (b) the
word "HOTDOG" written in green colored font; and (c) a picture of three pieces of curls. Though there are other
observable elements in the mark-such as the word "OK'' written in red colored font at the upper left side of the mark, the
small red banner overlaying the picture of the curls with the words "CHEESE HOTDOG FLAVOR" written on it, and the
image of a block of cheese beside the picture of the curls-none of those are as prevalent as the two features
aforementioned.

5. The dominant element "INASAL" in the OK Hotdog Inasal mark is exactly the same as the dominant element "INASAL" in
the Mang Inasal mark. Both elements in both marks are printed using the exact same red colored font, against the exact
same black outline and yellow background and is arranged in the exact same staggered format.

6. Apart from the element "INASAL," there appear no other perceivable similarities between the two marks.

Given the foregoing premises, and applying the dominancy test, we hold that the OK Hotdog Inasal mark is a colorable imitation of the Mang
Inasal mark.

First. The fact that the conflicting marks have exactly the same dominant element is key. It is undisputed that the OK Hotdog Inasal mark
copied and adopted as one of its dominant features the "INASAL" element of the Mang Inasal mark. Given that the "INASAL" element is, at the
same time, the dominant and most distinctive feature of the Mang Inasal mark, the said element's incorporation in the OK Hotdog Inasal mark,
thus, has the potential to project the deceptive and false impression that the latter mark is somehow linked or associated with the former
mark.

Second. The differences between the two marks are I trumped by the overall impression created by their similarity. The mere fact that there
are other elements in the OK Hotdog Inasal mark that are not present in the Mang Inasal mark actually does little to change the probable
public perception that both marks are linked or associated. It is worth reiterating that the OK Hotdog Inasal mark actually brandishes a
literal copy of the most recognizable feature of the Mang Inasal mark. We doubt that an average buyer catching a casual glimpse of the OK
Hotdog Inasal mark would pay more attention to the peripheral details of the said mark than it would to the mark's more prominent feature,
especially when the same invokes the distinctive feature of another more popular brand.

All in all, we find that the OK Hotdog Inasal mark is similar to the Mang Inasal mark.

III

The Goods for which the Registration of the OK Hotdog Inasal Mark Is Sought Are Related to the Services Being Represented by the Mang
Inasal Mark

The second condition of the proscription requires that the prospective mark pertain to goods or services that are either identical, similar or
related to the goods or services represented by the earlier mark. While there can be no quibble that the curl snack product for which the
registration of the OK Hotdog Inasal mark is sought cannot be considered as identical or similar to the restaurant services represented by the
Mang Inasal mark, there is ample reason to conclude that the said product and services may nonetheless be regarded as related to each
other.

Related goods and services are those that, though non-identical or non-similar, are so logically connected to each other that they may
reasonably be assumed to originate from one manufacturer or from economically-linked manufacturers. 28 In determining whether goods or
services are related, several factors may be considered. Some of those factors recognized in our jurisprudence are: 29

1. the business (and its location) to which the goods belong;

2. the class of product to which the goods belong;

3. the product's quality, quantity, or size, including the nature of the package, wrapper or container;

4. the nature and cost of the articles;

5. the descriptive properties, physical attributes or essential characteristics with reference to their form, composition,
texture or quality;

6. the purpose of the goods;

7. whether the article is bought for immediate consumption, that is, day-to-day household items;
 8. the fields of manufacture;

9. the conditions under which the article is usually purchased, and

10. the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold.

Relative to the consideration of the foregoing factors, however, Mighty Corporation 30 significantly imparted:

The wisdom of this approach is its recognition that each trademark infringement case presents its own unique set of facts.
No single factor is preeminent, nor can the presence or absence of one determine, without analysis of the others, the
outcome of an infringement suit. Rather, the court is required to sift the evidence relevant to each of the criteria. This
requires that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. It
is a weighing and balancing process. With reference to this ultimate question, and from a balancing of the determinations
reached on all of the factors, a conclusion is reached whether the parties have a right to the relief sought.

A very important circumstance though is whether there exists a likelihood that an appreciable number of ordinarily
prudent purchasers will be misled, or simply confused, as to the source of the goods in question. The "purchaser" is not
the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved he is
accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is
to be found in the likelihood of the deception of some persons in some measure acquainted with an established design
and desirous of purchasing the commodity with which that design has been associated. The test is not found in the
deception, or the possibility of deception, of the person who knows nothing about the design which has been
counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable,
must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the
article that he seeks to purchase. (citations omitted and emphasis supplied)

Mindful of the foregoing precepts, we hold that the curl snack product for which the registration of the OK Hotdog Inasal mark is sought is
related to the restaurant services represented by the Mang !nasal mark, in such a way that may lead to a confusion of business. In holding so,
we took into account the specific kind of restaurant business that petitioner is engaged in, the reputation of the petitioner's mark, and the
particular type of curls sought to be marketed by the respondent, thus:

First. Petitioner uses the Mang Inasal mark in connection with its restaurant services that is particularly known for its chicken inasal, i.e.,
grilled chicken doused in a special inasal marinade. 31 The inasal marinade is different from the typical barbeque marinade and it is what gives
the chicken inasal its unique taste and distinct orange color. 32 Inasal refers to the manner of grilling meat products using an inasal marinade.

Second. The Mang Inasal mark has been used for petitioner's restaurant business since 2003. The restaurant started in Iloilo but has since
expanded its business throughout the country. Currently, the Mang Inasal chain of restaurants has a total of 464 branches scattered
throughout the nation's three major islands. 33 It is, thus, fair to say that a sizeable portion of the population is knowledgeable of the Mang
Inasal mark.

Third. Respondent, on the other hand, seeks to market under the OK Hotdog Inasal mark curl snack products which it publicizes as having a
cheese hotdog inasal flavor. 34

Accordingly, it is the fact that the underlying goods and services of both marks deal with inasal and inasal-flavored products which ultimately
fixes the relations between such goods and services. Given the foregoing circumstances and the aforesaid similarity between the marks in
controversy, we are convinced that an average buyer who comes across the curls marketed under the OK Hotdog Inasal mark is likely to be
confused as to the true source of such curls. To our mind, it is not unlikely that such buyer would be led into the assumption that the curls are
of petitioner and that the latter has ventured into snack manufacturing or, if not, that the petitioner has supplied the flavorings for
respondent's product. Either way, the reputation of petitioner would be taken advantage of and placed at the mercy of respondent.

All in all, we find that the goods for which the registration of the OK Hotdog Inasal mark is sought are related to the services being
represented by the Mang Inasal mark.1âwphi1

IV
Conclusion

The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec. 123.l(d)(iii) of RA 8293. First, it is similar to the Mang
Inasal mark, an earlier mark. Second, it pertains to goods that are related to the services represented by such earlier mark. Petitioner was,
therefore, correct; and the IPO-BLA, IPO-DG, and the CA's rulings must be reversed. The OK Hotdog Inasal mark is not entitled to be registered
as its use will likely deceive or cause confusion on the part of the public and, thus, also likely to infringe the Mang Inasal mark. The law, in
instances such as this, must come to the succor of the owner of the earlier mark.

WHEREFORE, premises considered, the petition is hereby GRANTED. We hereby render a decision as follows:

1. REVERSING and SETTING ASIDE the Resolutions dated June 10, 2015 and December 2, 2015 of the Court of Appeals in
CA-G.R. SP No. 139020;

2. SETTING ASIDE the Decision dated December 15, 2014 of the Director General of the Intellectual Property Office in
Appeal No. 14-2013-0052;

3. SETTING ASIDE the Decision dated September 19, 2013 of the Director of the Bureau of Legal Affairs of the Intellectual
Property Office in IPC No. 14-2012-00369; and

4. DIRECTING the incumbent Director General and Director of the Bureau of Legal Affairs of the Intellectual Property
Office to DENY respondent's Application No. 4-2011-006098 for the registration of the mark "OK Hotdog Inasal Cheese
Hotdog Flavor Mark"

SO ORDERED.

A trademark is defined under Section 121.1 of RA 8293 as any visible sign capable of distinguishing the goods. It
is susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and distinguishing
the goods of one manufacturer or seller from those of another. Thus, the mark must be distinctive. The
65 66

registrability of a trademark is governed by Section 123 of RA 8293. Section 123.1 provides:

In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the
trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on
the purchaser and [d] the registrant's express or implied consent and other fair and equitable
considerations.

The word or phrase is arbitrary, fanciful, whimsical and distinctive, and thus legally
protectable.

Proceeding to the task at hand, the essential element of infringement is colorable imitation. This term has
been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such
resemblance of the infringing mark 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."

In determining colorable imitation, we have used either the dominancy test or the holistic or totality test. The
dominancy test considers the similarity of the prevalent or dominant features of the competing trademarks that
might cause confusion, mistake, and deception in the mind of the purchasing public. More consideration is given
on the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors
like process, quality, sales outlets, and market segments. On the other hand, the holistic test considers the
72

entirety of the marks as applied to the products, including the labels and packaging, in determining confusing
similarity. The focus is not only on the predominant words but also on the other features appearing on the labels.
In determining the existence of confusing similarity in corporate names, the test is
whether the similarity is such as to mislead a person using ordinary care and
discrimination. In so doing, the Court must look to the record as well as the names
themselves.

It is settled that proof of actual confusion need not be shown. It suffices that
confusion is probable or likely to occur