G.R. No.

158589             June 27, 2006 can be seen in Trademark Certificate of Registration No. 19053,
another subsidiary of Philip Morris, Inc., the Swiss company
PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., Fabriques de Tabac Reunies, S.A., is the assignee of the
and FABRIQUES DE TABAC REUNIES, S.A., (now known as trademark "LARK," which was originally registered in 1964 by
PHILIP MORRIS PRODUCTS S.A.), Petitioners, Ligget and Myers Tobacco Company. On the other hand,
vs. respondent Fortune Tobacco Corporation, a company organized
FORTUNE TOBACCO CORPORATION, Respondent. in the Philippines, manufactures and sells cigarettes using the
trademark "MARK."
DECISION
The legal dispute between the parties started when the herein
GARCIA, J.: petitioners, on the claim that an infringement of their respective
trademarks had been committed, filed, on August 18, 1982, a
Complaint for Infringement of Trademark and Damages against
Via this petition for review under Rule 45 of the Rules of Court,
respondent Fortune Tobacco Corporation, docketed as Civil Case
herein petitioners Philip Morris, Inc., Benson & Hedges (Canada)
No. 47374 of the Regional Trial Court of Pasig, Branch 166.
Inc., and Fabriques de Tabac Reunies, S.A. (now Philip Morris
Products S.A.) seek the reversal and setting aside of the following
issuances of the Court of Appeals (CA) in CA-G.R. CV No. The decision under review summarized what happened next, as
66619, to wit: follows:

1. Decision dated January 21, 2003 1 affirming an earlier In the Complaint xxx with prayer for the issuance of a preliminary
decision of the Regional Trial Court of Pasig City, Branch injunction, [petitioners] alleged that they are foreign corporations
166, in its Civil Case No. 47374, which dismissed the not doing business in the Philippines and are suing on an isolated
complaint for trademark infringement and damages transaction. xxx they averred that the countries in which they are
thereat commenced by the petitioners against respondent domiciled grant xxx to corporate or juristic persons of the
Fortune Tobacco Corporation; and Philippines the privilege to bring action for infringement, xxx
without need of a license to do business in those countries.
[Petitioners] likewise manifested [being registered owners of the
2. Resolution dated May 30, 2003 2 denying petitioners’
trademark "MARK VII" and "MARK TEN" for cigarettes as
motion for reconsideration.
evidenced by the corresponding certificates of registration and an
applicant for the registration of the trademark "LARK MILDS"].
Petitioner Philip Morris, Inc., a corporation organized under the xxx. [Petitioners] claimed that they have registered the
laws of the State of Virginia, United States of America, is, per aforementioned trademarks in their respective countries of origin
Certificate of Registration No. 18723 issued on April 26, 1973 by and that, by virtue of the long and extensive usage of the same,
the Philippine Patents Office (PPO), the registered owner of the these trademarks have already gained international fame and
trademark "MARK VII" for cigarettes. Similarly, petitioner Benson acceptance. Imputing bad faith on the part of the [respondent],
& Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the petitioners claimed that the [respondent], without any previous
registered owner of the trademark "MARK TEN" for cigarettes as consent from any of the [petitioners], manufactured and sold
evidenced by PPO Certificate of Registration No. 11147. And as cigarettes bearing the identical and/or confusingly similar
trademark "MARK" xxx Accordingly, they argued that xxx xxx xxx
[respondent’s] use of the trademark "MARK" in its cigarette
products have caused and is likely to cause confusion or mistake, After the termination of the trial on the merits xxx trial court
or would deceive purchasers and the public in general into buying rendered its Decision xxx dated November 3, 1999 dismissing the
these products under the impression and mistaken belief that complaint and counterclaim after making a finding that the
they are buying [petitioners’] products. [respondent] did not commit trademark infringement against the
[petitioners]. Resolving first the issue of whether or not
Invoking the provisions of the Paris Convention for the Protection [petitioners] have capacity to institute the instant action, the trial
of Industrial and Intellectual Property (Paris Convention, for court opined that [petitioners’] failure to present evidence to
brevity), to which the Philippines is a signatory xxx, [petitioners] support their allegation that their respective countries indeed
pointed out that upon the request of an interested party, a country grant Philippine corporations reciprocal or similar privileges by
of the Union may prohibit the use of a trademark which law xxx justifies the dismissal of the complaint xxx. It added that
constitutes a reproduction, imitation, or translation of a mark the testimonies of [petitioners’] witnesses xxx essentially declared
already belonging to a person entitled to the benefits of the said that [petitioners] are in fact doing business in the Philippines, but
Convention. They likewise argued that, in accordance with [petitioners] failed to establish that they are doing so in
Section 21-A in relation to Section 23 of Republic Act 166, as accordance with the legal requirement of first securing a license.
amended, they are entitled to relief in the form of damages xxx Hence, the court declared that [petitioners] are barred from
[and] the issuance of a writ of preliminary injunction which should maintaining any action in Philippine courts pursuant to Section
be made permanent to enjoin perpetually the [respondent] from 133 of the Corporation Code.
violating [petitioners’] right to the exclusive use of their
aforementioned trademarks. The issue of whether or not there was infringement of the
[petitioners’] trademarks by the [respondent] was likewise
[Respondent] filed its Answer xxx denying [petitioners’] material answered xxx in the negative. It expounded that "in order for a
allegations and xxx averred [among other things] xxx that name, symbol or device to constitute a trademark, it must, either
"MARK" is a common word, which cannot particularly identify a by itself or by association, point distinctly to the origin or
product to be the product of the [petitioners] xxx ownership of the article to which it is applied and be of such
nature as to permit an exclusive appropriation by one person".
xxx xxx xxx. Applying such principle to the instant case, the trial court was of
the opinion that the words "MARK", "TEN", "LARK" and the
lawphil.net

Meanwhile, after the [respondent] filed its Opposition (Records, Roman Numerals "VII", either alone or in combination of each
Vo. I, p. 26), the matter of the [petitioners’] prayer for the issuance other do not by themselves or by association point distinctly to the
of a writ of preliminary injunction was negatively resolved by the origin or ownership of the cigarettes to which they refer, such that
court in an Order xxx dated March 28, 1973. [The incidental issue the buying public could not be deceived into believing that
of the propriety of an injunction would eventually be elevated to [respondent’s] "MARK" cigarettes originated either from the USA,
the CA and would finally be resolved by the Supreme Court in its Canada, or Switzerland.
Decision dated July 16, 1993 in G.R. No. 91332]. xxx.
Emphasizing that the test in an infringement case is the likelihood
of confusion or deception, the trial court stated that the general
rule is that an infringement exists if the resemblance is so close local market and that the similarities in the trademarks in question
that it deceives or is likely to deceive a customer exercising are insufficient as to cause deception or confusion tantamount to
ordinary caution in his dealings and induces him to purchase the infringement. Consequently, as regards the third issue, there is
goods of one manufacturer in the belief that they are those of likewise no basis for the award of damages prayed for by the
another. xxx. The trial court ruled that the [petitioners] failed to appellants herein.4 (Word in bracket supplied)
pass these tests as it neither presented witnesses or purchasers
attesting that they have bought [respondent’s] product believing With their motion for reconsideration having been denied by the
that they bought [petitioners’] "MARK VII", "MARK TEN" or CA in its equally challenged Resolution of May 30, 2003,
"LARK", and have also failed to introduce in evidence a specific petitioners are now with this Court via this petition for review
magazine or periodical circulated locally, which promotes and essentially raising the following issues: (1) whether or not
popularizes their products in the Philippines. It, moreover, petitioners, as Philippine registrants of trademarks, are entitled to
elucidated that the words consisting of the trademarks allegedly enforce trademark rights in this country; and (2) whether or not
infringed by [respondent] failed to show that they have acquired a respondent has committed trademark infringement against
secondary meaning as to identify them as [petitioners’] products. petitioners by its use of the mark "MARK" for its cigarettes, hence
Hence, the court ruled that the [petitioners] cannot avail liable for damages.
themselves of the doctrine of secondary meaning.
In its Comment,5 respondent, aside from asserting the
As to the issue of damages, the trial court deemed it just not to correctness of the CA’s finding on its liability for trademark
award any to either party stating that, since the [petitioners] filed infringement and damages, also puts in issue the propriety of the
the action in the belief that they were aggrieved by what they petition as it allegedly raises questions of fact.
perceived to be an infringement of their trademark, no wrongful
act or omission can be attributed to them. xxx.3 (Words in The petition is bereft of merit.
brackets supplied)
Dealing first with the procedural matter interposed by respondent,
Maintaining to have the standing to sue in the local forum and we find that the petition raises both questions of fact and law
that respondent has committed trademark infringement, contrary to the prescription against raising factual questions in a
petitioners went on appeal to the CA whereat their appellate petition for review on certiorari filed before the Court. A question
recourse was docketed as CA-G.R. CV No. 66619. of law exists when the doubt or difference arises as to what the
law is on a certain state of facts; there is a question of fact when
Eventually, the CA, in its Decision dated January 21, 2003, while the doubt or difference arises as to the truth or falsity of alleged
ruling for petitioners on the matter of their legal capacity to sue in facts.6
this country for trademark infringement, nevertheless affirmed the
trial court’s decision on the underlying issue of respondent’s Indeed, the Court is not the proper venue to consider factual
liability for infringement as it found that: issues as it is not a trier of facts. 7 Unless the factual findings of
the appellate court are mistaken, absurd, speculative, conflicting,
xxx the appellants’ [petitioners’] trademarks, i.e., "MARK VII", tainted with grave abuse of discretion, or contrary to the findings
"MARK TEN" and "LARK", do not qualify as well-known marks culled by the court of origin, 8 we will not disturb them.
entitled to protection even without the benefit of actual use in the
It is petitioners’ posture, however, that their contentions should poaches upon the commercial magnetism of the symbol he has
created, the owner can obtain legal redress.
be treated as purely legal since they are assailing erroneous
conclusions deduced from a set of undisputed facts. It is thus understandable for petitioners to invoke in this recourse
their entitlement to enforce trademark rights in this country,
Concededly, when the facts are undisputed, the question of specifically, the right to sue for trademark infringement in
whether or not the conclusion drawn therefrom by the CA is Philippine courts and be accorded protection against
correct is one of law.9 But, even if we consider and accept as pure unauthorized use of their Philippine-registered trademarks.
questions of law the issues raised in this petition, still, the Court is
not inclined to disturb the conclusions reached by the appellate In support of their contention respecting their right of action,
court, the established rule being that all doubts shall be resolved petitioners assert that, as corporate nationals of member-
in favor of the correctness of such conclusions.10 countries of the Paris Union, they can sue before Philippine
courts for infringement of trademarks, or for unfair competition,
Be that as it may, we shall deal with the issues tendered and without need of obtaining registration or a license to do business
determine whether the CA ruled in accordance with law and in the Philippines, and without necessity of actually doing
established jurisprudence in arriving at its assailed decision. business in the Philippines. To petitioners, these grievance right
and mechanism are accorded not only by Section 21-A of
A "trademark" is any distinctive word, name, symbol, emblem, Republic Act (R.A.) No. 166, as amended, or the Trademark Law,
sign, or device, or any combination thereof adopted and used by but also by Article 2 of the Paris Convention for the Protection of
a manufacturer or merchant on his goods to identify and Industrial Property, otherwise known as the Paris Convention.
distinguish them from those manufactured, sold, or dealt in by
others.11 Inarguably, a trademark deserves protection. For, as Mr. In any event, petitioners point out that there is actual use of their
Justice Frankfurter observed in Mishawaka Mfg. Co. v. Kresge trademarks in the Philippines as evidenced by the certificates of
Co.:12 registration of their trademarks. The marks "MARK TEN" and
"LARK" were registered on the basis of actual use in accordance
The protection of trademarks is the law’s recognition of the with Sections 2-A13 and 5(a)14 of R.A. No. 166, as amended,
psychological function of symbols. If it is true that we live by providing for a 2-month pre-registration use in local commerce
symbols, it is no less true that we purchase goods by them. A and trade while the registration of "MARK VII" was on the basis of
trade-mark is a merchandising short-cut which induces a registration in the foreign country of origin pursuant to Section 37
purchaser to select what he wants, or what he has been led to of the same law wherein it is explicitly provided that prior use in
believe what he wants. The owner of a mark exploits this human commerce need not be alleged. 15
propensity by making every effort to impregnate the atmosphere
of the market with the drawing power of a congenial symbol. Besides, petitioners argue that their not doing business in the
Whatever the means employed, the aim is the same - to convey Philippines, if that be the case, does not mean that cigarettes
through the mark, in the minds of potential customers, the bearing their trademarks are not available and sold locally. Citing
desirability of the commodity upon which it appears. Once this is Converse Rubber Corporation v. Universal Rubber Products,
attained, the trade-mark owner has something of value. If another Inc.,16 petitioners state that such availability and sale may be
effected through the acts of importers and distributors.
Finally, petitioners would press on their entitlement to protection substantially similar rights and privileges to Filipino citizens
even in the absence of actual use of trademarks in the country in pursuant to Section 21-A20 of R.A. No. 166.
view of the Philippines’ adherence to the Trade Related Aspects
of Intellectual Property Rights or the TRIPS Agreement and the In Leviton Industries v. Salvador, 21 the Court further held that the
enactment of R.A. No. 8293, or the Intellectual Property Code aforementioned reciprocity requirement is a condition sine qua
(hereinafter the "IP Code"), both of which provide that the fame of non to filing a suit by a foreign corporation which, unless alleged
a trademark may be acquired through promotion or advertising in the complaint, would justify dismissal thereof, a mere allegation
with no explicit requirement of actual use in local trade or that the suit is being pursued under Section 21-A of R.A. No. 166
commerce. not being sufficient. In a subsequent case, 22 however, the Court
held that where the complainant is a national of a Paris
Before discussing petitioners’ claimed entitlement to enforce Convention- adhering country, its allegation that it is suing under
trademark rights in the Philippines, it must be emphasized that said Section 21-A would suffice, because the reciprocal
their standing to sue in Philippine courts had been recognized, agreement between the two countries is embodied and supplied
and rightly so, by the CA. It ought to be pointed out, however, that by the Paris Convention which, being considered part of
the appellate court qualified its holding with a statement, following Philippine municipal laws, can be taken judicial notice of in
G.R. No. 91332, entitled Philip Morris, Inc., et al. v. The Court of infringement suits.23
Appeals and Fortune Tobacco Corporation, 17 that such right to
sue does not necessarily mean protection of their registered As well, the fact that their respective home countries, namely, the
marks in the absence of actual use in the Philippines. United States, Switzerland and Canada, are, together with the
Philippines, members of the Paris Union does not automatically
Thus clarified, what petitioners now harp about is their entitlement entitle petitioners to the protection of their trademarks in this
to protection on the strength of registration of their trademarks in country absent actual use of the marks in local commerce and
the Philippines. trade.

As we ruled in G.R. No. 91332, 18 supra, so it must be here. True, the Philippines’ adherence to the Paris
Convention24 effectively obligates the country to honor and
Admittedly, the registration of a trademark gives the registrant, enforce its provisions25 as regards the protection of industrial
such as petitioners, advantages denied non-registrants or property of foreign nationals in this country. However, any
ordinary users, like respondent. But while petitioners enjoy the protection accorded has to be made subject to the limitations of
statutory presumptions arising from such registration, 19 i.e., as to Philippine laws.26 Hence, despite Article 2 of the Paris Convention
the validity of the registration, ownership and the exclusive right which substantially provides that (1) nationals of member-
to use the registered marks, they may not successfully sue on the countries shall have in this country rights specially provided by
basis alone of their respective certificates of registration of the Convention as are consistent with Philippine laws, and enjoy
trademarks. For, petitioners are still foreign corporations. As the privileges that Philippine laws now grant or may hereafter
such, they ought, as a condition to availment of the rights and grant to its nationals, and (2) while no domicile requirement in the
privileges vis-à-vis their trademarks in this country, to show proof country where protection is claimed shall be required of persons
that, on top of Philippine registration, their country grants entitled to the benefits of the Union for the enjoyment of any
industrial property rights,27 foreign nationals must still observe and
comply with the conditions imposed by Philippine law on its xxx xxx xxx
nationals.
In other words, (a foreign corporation) may have the capacity to
Considering that R.A. No. 166, as amended, specifically Sections sue for infringement … but the question of whether they have an
228 and 2-A29 thereof, mandates actual use of the marks and/or exclusive right over their symbol as to justify issuance of the
emblems in local commerce and trade before they may be controversial writ will depend on actual use of their trademarks in
registered and ownership thereof acquired, the petitioners cannot, the Philippines in line with Sections 2 and 2-A of the same law. It
therefore, dispense with the element of actual use. Their being is thus incongruous for petitioners to claim that when a foreign
nationals of member-countries of the Paris Union does not alter corporation not licensed to do business in the Philippines files a
the legal situation. complaint for infringement, the entity need not be actually using
its trademark in commerce in the Philippines. Such a foreign
In Emerald Garment Mfg. Corporation v. Court of Appeals, 30 the corporation may have the personality to file a suit for infringement
Court reiterated its rulings in Sterling Products International, Inc. but it may not necessarily be entitled to protection due to absence
v. Farbenfabriken Bayer Aktiengesellschaft, 31 Kabushi Kaisha of actual use of the emblem in the local market.
Isetan v. Intermediate Appellate Court, 32 and Philip Morris v. Court
of Appeals and Fortune Tobacco Corporation 33 on the importance Contrary to what petitioners suggest, the registration of trademark
of actual commercial use of a trademark in the Philippines cannot be deemed conclusive as to the actual use of such
notwithstanding the Paris Convention: trademark in local commerce. As it were, registration does not
confer upon the registrant an absolute right to the registered
The provisions of the 1965 Paris Convention … relied upon by mark. The certificate of registration merely constitutes prima facie
private respondent and Sec. 21-A of the Trademark Law were evidence that the registrant is the owner of the registered mark.
sufficiently expounded upon and qualified in the recent case of Evidence of non-usage of the mark rebuts the presumption of
Philip Morris, Inc., et. al. vs. Court of Appeals: trademark ownership,34 as what happened here when petitioners
no less admitted not doing business in this country.35
xxx xxx xxx
Most importantly, we stress that registration in the Philippines of
Following universal acquiescence and comity, our municipal law trademarks does not ipso facto convey an absolute right or
on trademarks regarding the requirements of actual use in the exclusive ownership thereof. To borrow from Shangri-La
Philippines must subordinate an international agreement International Hotel Management, Ltd. v. Development Group of
inasmuch as the apparent clash is being decided by a municipal Companies, Inc.36 trademark is a creation of use and, therefore,
tribunal. Xxx. Withal, the fact that international law has been actual use is a pre-requisite to exclusive ownership; registration is
made part of the law of the land does not by any means imply the only an administrative confirmation of the existence of the right of
primacy of international law over national law in the municipal ownership of the mark, but does not perfect such right; actual use
sphere. Under the doctrine of incorporation as applied in most thereof is the perfecting ingredient. 37
countries, rules of International Law are given a standing equal,
not superior, to national legislative enactments. Petitioners’ reliance on Converse Rubber Corporation 38 is quite
misplaced, that case being cast in a different factual milieu.
There, we ruled that a foreign owner of a Philippine trademark,
albeit not licensed to do, and not so engaged in, business in the colorable imitation to labels, signs, prints, packages, wrappers,
Philippines, may actually earn reputation or goodwill for its goods receptacles or advertisements intended to be used upon or in
in the country. But unlike in the instant case, evidence of actual connection with such goods, business, or services, shall be liable
sales of Converse rubber shoes, such as sales invoices, receipts to a civil action by the registrant for any or all of the remedies
and the testimony of a legitimate trader, was presented in herein provided.
Converse.
Petitioners would insist on their thesis of infringement since
This Court also finds the IP Code and the TRIPS Agreement to respondent’s mark "MARK" for cigarettes is confusingly or
be inapplicable, the infringement complaint herein having been deceptively similar with their duly registered "MARK VII," "MARK
filed in August 1982 and tried under the aegis of R.A. No. 166, as TEN" and "LARK" marks likewise for cigarettes. To them, the
amended. The IP Code, however, took effect only on January 1, word "MARK" would likely cause confusion in the trade, or
1998 without a provision as to its retroactivity. 39 In the same vein, deceive purchasers, particularly as to the source or origin of
the TRIPS Agreement was inexistent when the suit for respondent’s cigarettes.
infringement was filed, the Philippines having adhered thereto
only on December 16, 1994. The "likelihood of confusion" is the gravamen of trademark
infringement.40 But likelihood of confusion is a relative concept,
With the foregoing perspective, it may be stated right off that the the particular, and sometimes peculiar, circumstances of each
registration of a trademark unaccompanied by actual use thereof case being determinative of its existence. Thus, in trademark
in the country accords the registrant only the standing to sue for infringement cases, more than in other kinds of litigation,
infringement in Philippine courts. Entitlement to protection of such precedents must be evaluated in the light of each particular
trademark in the country is entirely a different matter. case.41

This brings us to the principal issue of infringement. In determining similarity and likelihood of confusion, jurisprudence
has developed two tests: the dominancy test and the holistic
Section 22 of R.A. No. 166, as amended, defines what constitutes test.42 The dominancy test43 sets sight on the similarity of the
trademark infringement, as follows: prevalent features of the competing trademarks that might cause
confusion and deception, thus constitutes infringement. Under
Sec. 22. Infringement, what constitutes. – Any person who shall this norm, the question at issue turns on whether the use of the
use, without the consent of the registrant, any reproduction, marks involved would be likely to cause confusion or mistake in
counterfeit, copy or colorable imitation of any registered mark or the mind of the public or deceive purchasers.44
tradename in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in In contrast, the holistic test45 entails a consideration of the entirety
connection with which such use is likely to cause confusion or of the marks as applied to the products, including the labels and
mistake or to deceive purchasers or others as to the source or packaging, in determining confusing similarity.
origin of such goods or services, or identity of such business; or
reproduce, counterfeit, copy of color ably imitate any such mark Upon consideration of the foregoing in the light of the peculiarity
or tradename and apply such reproduction, counterfeit, copy or of this case, we rule against the likelihood of confusion resulting
in infringement arising from the respondent’s use of the local commerce was proven. There can thus be no occasion for
trademark "MARK" for its particular cigarette product. the public in this country, unfamiliar in the first place with
petitioners’ marks, to be confused.
For one, as rightly concluded by the CA after comparing the
trademarks involved in their entirety as they appear on the For another, a comparison of the trademarks as they appear on
products,46 the striking dissimilarities are significant enough to the goods is just one of the appreciable circumstances in
warn any purchaser that one is different from the other. Indeed, determining likelihood of confusion. Del Monte Corp. v. CA 50 dealt
although the perceived offending word "MARK" is itself prominent with another, where we instructed to give due regard to the
in petitioners’ trademarks "MARK VII" and "MARK TEN," the "ordinary purchaser," thus:
entire marking system should be considered as a whole and not
dissected, because a discerning eye would focus not only on the The question is not whether the two articles are distinguishable
predominant word but also on the other features appearing in the by their label when set side by side but whether the general
labels. Only then would such discerning observer draw his confusion made by the article upon the eye of the casual
conclusion whether one mark would be confusingly similar to the purchaser who is unsuspicious and off his guard, is such as to
other and whether or not sufficient differences existed between likely result in his confounding it with the original. As observed in
the marks.47 several cases, the general impression of the ordinary purchaser,
buying under the normally prevalent conditions in trade and giving
This said, the CA then, in finding that respondent’s goods cannot the attention such purchasers usually give in buying that class of
be mistaken as any of the three cigarette brands of the goods is the touchstone.
petitioners, correctly relied on the holistic test.
When we spoke of an "ordinary purchaser," the reference was not
But, even if the dominancy test were to be used, as urged by the to the "completely unwary customer" but to the "ordinarily
petitioners, but bearing in mind that a trademark serves as a tool intelligent buyer" considering the type of product involved. 51
to point out distinctly the origin or ownership of the goods to
which it is affixed,48 the likelihood of confusion tantamount to It cannot be over-emphasized that the products involved are
infringement appears to be farfetched. The reason for the origin addicting cigarettes purchased mainly by those who are already
and/or ownership angle is that unless the words or devices do so predisposed to a certain brand. Accordingly, the ordinary buyer
point out the origin or ownership, the person who first adopted thereof would be all too familiar with his brand and discriminating
them cannot be injured by any appropriation or imitation of them as well. We, thus, concur with the CA when it held, citing a
by others, nor can the public be deceived.49 definition found in Dy Buncio v. Tan Tiao Bok, 52 that the "ordinary
purchaser" in this case means "one accustomed to buy, and
Since the word "MARK," be it alone or in combination with the therefore to some extent familiar with, the goods in question."
word "TEN" and the Roman numeral "VII," does not point to the
origin or ownership of the cigarettes to which they apply, the local Pressing on with their contention respecting the commission of
buying public could not possibly be confused or deceived that trademark infringement, petitioners finally point to Section 22 of
respondent’s "MARK" is the product of petitioners and/or R.A. No. 166, as amended. As argued, actual use of trademarks
originated from the U.S.A., Canada or Switzerland. And lest it be in local commerce is, under said section, not a requisite before an
overlooked, no actual commercial use of petitioners’ marks in
aggrieved trademark owner can restrain the use of his trademark (d) such act is done without the consent of the trademark
upon goods manufactured or dealt in by another, it being registrant or assignee. lawphil.net

sufficient that he had registered the trademark or trade-name with

the IP Office. In fine, petitioners submit that respondent is liable As already found herein, while petitioners have registered the
for infringement, having manufactured and sold cigarettes with trademarks "MARK VII," "MARK TEN" and "LARK" for cigarettes
the trademark "MARK" which, as it were, are identical and/or in the Philippines, prior actual commercial use thereof had not
confusingly similar with their duly registered trademarks "MARK been proven. In fact, petitioners’ judicial admission of not doing
VII," "MARK TEN" and "LARK". business in this country effectively belies any pretension to the
contrary.
This Court is not persuaded.
Likewise, we note that petitioners even failed to support their
In Mighty Corporation v. E & J Gallo Winery, 53 the Court held that claim that their respective marks are well-known and/or have
the following constitute the elements of trademark infringement in acquired goodwill in the Philippines so as to be entitled to
accordance not only with Section 22 of R.A. No. 166, as protection even without actual use in this country in accordance
amended, but also Sections 2, 2-A, 9-A54 and 20 thereof: with Article 6bis55 of the Paris Convention. As correctly found by
the CA, affirming that of the trial court:
(a) a trademark actually used in commerce in the
Philippines and registered in the principal register of the xxx the records are bereft of evidence to establish that the
Philippine Patent Office, appellants’ [petitioners’] products are indeed well-known in the
Philippines, either through actual sale of the product or through
(b) is used by another person in connection with the sale, different forms of advertising. This finding is supported by the fact
offering for sale, or advertising of any goods, business or that appellants admit in their Complaint that they are not doing
services or in connection with which such use is likely to business in the Philippines, hence, admitting that their products
cause confusion or mistake or to deceive purchasers or are not being sold in the local market. We likewise see no cogent
others as to the source or origin of such goods or reason to disturb the trial court’s finding that the appellants failed
services, or identity of such business; or such trademark to establish that their products are widely known by local
is reproduced, counterfeited, copied or colorably imitated purchasers as "(n)o specific magazine or periodical published in
by another person and such reproduction, counterfeit, the Philippines, or in other countries but circulated locally" have
copy or colorable imitation is applied to labels, signs, been presented by the appellants during trial. The appellants also
prints, packages, wrappers, receptacles or were not able to show the length of time or the extent of the
advertisements intended to be used upon or in connection promotion or advertisement made to popularize their products in
with such goods, business or services as to likely cause the Philippines.56
confusion or mistake or to deceive purchasers,
Last, but not least, we must reiterate that the issue of trademark
(c) the trademark is used for identical or similar goods, infringement is factual, with both the trial and appellate courts
and having peremptorily found allegations of infringement on the part
of respondent to be without basis. As we said time and time
again, factual determinations of the trial court, concurred in by the
CA, are final and binding on this Court.57

For lack of convincing proof on the part of the petitioners of actual

use of their registered trademarks prior to respondent’s use of its
mark and for petitioners’ failure to demonstrate confusing
similarity between said trademarks, the dismissal of their basic
complaint for infringement and the concomitant plea for damages
must be affirmed. The law, the surrounding circumstances and
the equities of the situation call for this disposition.

WHEREFORE, the petition is hereby DENIED. Accordingly, the

assailed decision and resolution of the Court of Appeals are
AFFIRMED. SO ORDERED.