CANON KABUSHIKI KAISHA, petitioner,

vs.
COURT OF APPEALS and NSR RUBBER CORPORATION, respondents.

On January 15, 1985, respondent NSR Rubber Corporation filed an application for registration of the
mark CANON for sandals in the Bureau of Patents, Trademarks, and Technology Transfer
(BPTTT).

A Verified Notice of Opposition was filed by petitioner CANON KABUSHIKI KAISHA, a foreign
corporation duly organized and existing under the laws of Japan, alleging that it will be damaged by
the registration of the trademark CANON in the name of NSR Rubber.

Petitioner moved to declare private respondent in default for its failure to file its answer within the
prescribed period. The BPTTT then declared such and allowed petitioner to present its evidence ex-
parte.

The evidences consisted of its certificates of registration for the mark CANON in various
countries covering goods belonging to class 2 (paints, chemical products, toner, and dye
stuff) including Philippine Trademark Registration No. 39398, also under class 2

BPTTT dismissed the opposition of petitioner and gave due course to the application for the
registration of the trademark CANON. Petitioner appealed the decision with the Court of Appeals
which eventually affirmed the decision of BPTTT. Hence, this petition for review.

ISSUES:

1. W/N PETITIONER IS ENTITLED TO EXCLUSIVE USE OF THE MARK CANON BECAUSE IT IS

No. Petitioner failed to attach evidence that would convince the Court that they also embarked in the
production of footwear products

The SC agreed with BPTTT and the Court of Appeals that the trademark "CANON" as used by
petitioner for its paints, chemical products, toner, and dyestuff, can be used by private
respondent for its sandals because the products of these two parties are dissimilar. 

Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff and
sandals.

2. W/N they are entitled to protection because NSR as junior user will "forestall the normal
expansion of his business"

In Faberge, Incorporated vs. Intermediate Appellate Court, the Director of patents allowed
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the junior user to use the trademark of the senior user on the ground that the briefs
manufactured by the junior user, the product for which the trademark BRUTE was sought
to be registered, was unrelated and non-competing with the products of the senior user
consisting of after shave lotion, shaving cream, deodorant, talcum powder, and toilet
soap. T

he senior user vehemently objected and claimed that it was expanding its trademark to
briefs and argued that permitting the junior user to register the same trademark would
allow the latter to invade the senior user's exclusive domain. In sustaining the Director
of Patents, this Court said that since "(the senior user) has not ventured in the
production of briefs, an item which is not listed in its certificate of registration, (the
senior user), cannot and should not be allowed to feign that (the junior user) had
invaded (the senior user's) exclusive domain." We reiterated the principle that the
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certificate of registration confers upon the trademark owner the exclusive right to use
its own symbol only to those goods specified in the certificate, subject to the
conditions and limitations stated therein.
C) W/N they are entitled to protection TO PREVENT CONFUSION OF BUSINESS.

D) PETITIONER IS ALSO ENTITLED TO THE EXCLUSIVE USE OF CANON BECAUSE IT

Petitioner further argues that the alleged diversity of its products all over the world makes it plausible
that the public might be misled into thinking that there is some supposed connection between private
respondent's goods and petitioner. 

Petitioner claims that it is possible that the public could presume that petitioner would also produce a
wide variety of footwear considering the diversity of its products marketed worldwide.

in Esso Standard Eastern, Inc. vs. Court of Appeals, this Court ruled that the petroleum products on
which the petitioner therein used the trademark ESSO, and the product of respondent, cigarettes are
"so foreign to each other as to make it unlikely that purchasers would think that petitioner is the
manufacturer of respondent's goods" . Moreover, the fact that the goods involved therein flow
21 

through different channels of trade highlighted their dissimilarity

following the Esso doctrine, the two classes of products in this case flow through different
trade channels. The products of petitioner are sold through special chemical stores or
distributors while the products of private respondent are sold in grocery stores, sari-sari
stores and department stores. Thus, the evident disparity of the products of the parties in
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the case at bar renders unfounded the apprehension of petitioner that confusion of business
or origin might occur

Goods are related when they belong to the same class or have the same descriptive
properties; when they possess the same physical attributes or essential characteristics with
reference to their form, composition, texture or quality. They may also be related because
19 

they serve the same purpose. 20

3. W/N it has the exclusive right to the mark CANON because it forms part of its corporate
name or tradename, protected by Article 8 of the Paris Convention, to wit:

"A tradename 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."

Petitioner questions the applicability of the guidelines embodied in the Memorandum of then Minister
of Trade and Industry Roberto Ongpin (Ongpin) dated October 25, 1983 which according to
petitioner implements Article 6 of the Paris Convention.

The memorandum reads:

"a) the mark must be internationally known;

b) the subject of the right must be a trademark, not a patent or copyright or anything else;

c) the mark must be for use in the same or similar class of goods;

d) the person claiming must be the owner of the mark."

According to petitioner, it should not be required to prove that its trademark is well-known and that
the products are not similar as required by the quoted memorandum.
Petitioner emphasizes that the guidelines in the memorandum of Ongpin implement Article 6 of the
Paris Convention, the provision for the protection of trademarks, not tradenames.

Petitioner insists that what it seeks is the protection of Article 8 of the Paris Convention, the
provision that pertains to the protection of tradenames. Petitioner believes that the appropriate
memorandum to consider is that issued by the then Minister of Trade and Industry, Luis
Villafuerte, directing the Director of patents to:

"reject all pending applications for Philippine registration of signature and other world famous
trademarks by applicants other than the original owners or users."

Petitioner calls attention to the fact that Article 8, even as embodied in par. 6, sec. 37 of RA 166,
mentions no requirement of similarity of goods. As far as petitioner is concerned, the fact that its
tradename is at risk would call for the protection granted by Article 8 of the Paris Convention.

No. There is no automatic protection afforded an entity whose tradename is alleged to have been
infringed through the use of that name as a trademark by a local entity.

In Kabushiki Kaisha Isetan vs. The Intermediate Appellate Court, et. al., G.R. No. 75420, 15
November 1991, the Honorable Supreme Court held that:

'The Paris Convention for the Protection of Industrial Property does not automatically
exclude all countries of the world which have signed it from using a tradename which
happens to be used in one country. To illustrate – if a taxicab or bus company in a town in
the United Kingdom or India happens to use the tradename "Rapid Transportation", it does
not necessarily follow that "Rapid" can no longer be registered in Uganda, Fiji, or the
Philippines.

Petitioner assails the application of the case of Kabushi Kaisha Isetan vs. Intermediate Appellate
Court to this case. Petitioner points out that in the case of Kabushi Kaisha Isetan vs. Intermediate
Appellate Court, petitioner therein was found to have never at all conducted its business in the
Philippines unlike herein petitioner who has extensively conducted its business here and also had its
trademark registered in this country. Hence, petitioner submits that this factual difference renders
inapplicable our ruling in the case of Kabushi Kaisha Isetan vs. Intermediate Appellate Court that
Article 8 of the Paris Convention does not automatically extend protection to a tradename that is in
danger of being infringed in a country that is also a signatory to said treaty. 

This contention deserves scant consideration. Suffice it to say that the just quoted pronouncement in
the case of Kabushi Kaisha Isetan vs. Intermediate Appellate Court, was made independent of the
factual finding that petitioner in said case had not conducted its business in this country.

No. The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them for those manufactured, sold or dealt in by
others." Tradename is defined by the same law as including "individual names and surnames, firm
26 

names, tradenames, devices or words used by manufacturers, industrialists, merchants,

name refers to the business and its goodwill; a trademark refers to the goods. 28

Article 6bis of the Paris Convention states:

(1) 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, 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 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.

(2) A period of at least five years from the date of registration shall be allowed for seeking the
cancellation of such a mark. The countries of the Union may provide for a period within which
the prohibition of use must be sought.

(3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use of
marks or used in bad faith."