31. Batistis vs. People of the Philippines; G.R. No. 181571; December 16, 2009; Ponente: Bersamin, J.

FACTS:
Allied Domecq Philippines, Inc., a Philippine corporation exclusively authorized to distribute
Fundador brandy products iimported from Spain, initiated a case against petitioner Batistis for
violations of Section 155, or the infringement of trademark, and Section 168, or the unfair
competition, under the Intellectual Property Code. Batistis was found out to be actively engaged in
the manufacture, sale, and distribution of counterfeit Fundador brandy products.
RTC of Manila found Batistis guilty beyond reasonable doubt of infringement of trademark and
unfair competition. Batista appealed to the CA, which affirmed his conviction for infringement of
trademark, but acquitted him of unfair competition for failure of the prosecution to prove to a moral
certainty the guilt of Batistis. After the CA denied his MR, Batistis brought this appeal before the SC.

ISSUE:
Whether petitioner Batistis was correctly convicted by the CA and RTC for acts constituting
infringement of trademark as set out in Section 155 of the Intellectual Property Code

HELD:
Yes. Both the RTC and the CA correctly appreciated the evidence against Batistis, and correctly
applied the pertinent law to their findings of fact. When Harvey Tan, Operation Manager of Domecq,
testified before the court, he asserted that the sized Fundador brandy from Batistis, when compared
with the genuine product, revealed several characteristics of counterfeiting. Where there is no
question that the accused exerted the effort to make the counterfeit products look genuine to
deceive the unwary public into regarding the products as genuine, he thereby committed acts
constituting infringement of trademark as set out in Section 155 of the Intellectual Property Code.
SC affirmed the decision of the CA.
32. Acoje Mining Co., Inc. vs. Director of Patents; G.R. No. L-28744; April 29, 1971; Ponente:
Fernando, J.

FACTS:

Acoje Mining Co., Inc., a domestic corporation, filed an application for registration of the trademark
LOTUS, used on Soy Sauce, Class 47. The Chief Trademark Examiner rejected the application by
reason of confusing similarity with the trademark LOTUS registered in the said Office under
Certificate of Registration No. 12476 issued in favour of Philippine Refining Co., Inc., another
domestic corporation. The cited mark is being used on edible oil, class 47.
When the case was elevated to respondent Director of Patents, the latter upheld the earlier view
and rejected the application of the petitioner on the ground that while there is a difference between
soy sauce and edible oil and there were dissimilarities in the trademarks due to type of letters used
as well as in the size, color and design employed, still the close relationship of the said products is
such “that purchasers would be misled into believing that they have a common source.”

ISSUE:
Whether petitioner Acoje Mining Company register for the purpose of advertising its product, soy
sauce, the trademark LOTUS, there being already in existence one such registered in favour of the
Philippine Refining Company for its product, edible oil, it being further shown that the trademark
applied for is in smaller type, colored differently, set on a background which is dissimilar as to yield a
distinct appearance

HELD:

Yes. The Supreme Court, in reversing the earlier decision of respondent Director of Patents,
reiterated in this case the decisive test as to whether an application for a trademark should be
affirmatively acted upon or not. To constitute an infringement of an existing trademark patent and
warrant a denial of an application for registration, the law does not require that the competing
trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for
purposes of the law, that the similarity between the two labels is such that there is a possibility or
likelihood of the purchaser of the older brand mistaking the newer brand for it.

In this case, the Supreme Court stated that there is quite a difference between soy sauce and edible
oil. Even on the rare occasions that a mistake does occur, it can easily be rectified. Moreover, there
is no denying that the possibility of confusion is remote considering the difference in the type used,
the coloring, the petitioner’s trademark being in yellow and red while that of the Philippine Refining
Company being in green and yellow, and the much smaller size of petitioner’s trademark.
33. Philippine Refining Co., Inc. vs. Ng Sam; G.R. No. L-26676; July 30, 1982; Ponente: Escolin, J.

FACTS:

The trademark “CAMIA” was first used in the Philippines by petitioner Philippine Refining Co., Inc. on
its products in 1922. In 1949, it caused the registration of said trademark before the Philippine
Patent Office, wherein the Certificate of Registration covers vegetable and animal fats, particularly
vegetable and animal fats. On the other hand, in 1960, respondent Ng Sam, a Chinese citizen, filed
an application before the same office for registration of the identical trademark “CAMIA” for his
product, ham, for which the alleged date of first use of the trademark was in 1959.

Upon knowing the said application, petitioner filed an opposition, in accordance with Section 8 of
the Trademark Law, on the basis of Section 4(d) of the same law, which provides as unregisterable “a
mark which consists of or comprise a mark or tradename which so resembles a mark or tradename
registered in the Philippines or a mark or tradename previously used in the Philippines by another
and not abandoned, as to be likely, when applied to or used in connection with the goods, business
services of the applicant, to cause confusion or mistake or to deceive purchasers.”

The Director of Patents rendered a decision allowing registration of the trademark “CAMIA” in
favour of Ng Sam. Hence, this petition.

ISSUE:
Whether the product of respondent Ng Sam, which is ham, and those of petitioner consisting of lard,
butter, cooking oil and soap are so related that the use of the same trademark “CAMIA” on said
goods would likely result in confusion as to their source or origin.

HELD:

No. The Supreme Court, in affirming the Decision of the Director of Patents and dismissing the
Petition, highlighted that the rudimentary precept in trademark protection wherein “the right to a
trademark is a limited one, in the sense that others may use the same mark on unrelated goods.”
Thus, as pronounced by the United States Supreme Court in the case of American Foundries vs.
Robertson, “the mere fact that one person has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others on articles of a different
description.”

Such restricted right over a trademark is likewise reflected in our Trademark Law. Under Section 4(d)
of the law, registration of a trademark which so resembles another already registered or in use
should be denied, where to allow such registration could likely result in confusion, mistake or
deception to the consumers. Conversely, where no confusion is likely to arise, as in this case,
registration of a similar or even identical mark may be allowed.

In this case, “CAMIA”, being a generic and common term, its appropriation as a trademark, albeit in
a fanciful manner that it bears no relation to the product it identifies, is valid. Moreover, the
particular goods of the parties are so unrelated that consumers would not in any probability mistake
on as the source or origin of the product of the other. The business of the parties are non-
competitive and their products so unrelated that the use of identical trademarks is not likely to give
rise to confusion, much less cause damage to petitioner.
34. Hickok Manufacturing Co., Inc. vs. Court of Appeals; G.R. No. L-44707; August 31, 1982; Ponente:
Teehankee, J.

FACTS:

Petitioner Hickok Manufacturing Co., (HICKOK) is a foreign corporation, and a registrant of the
trademark HICKOK for its diverse articles of leather wallets, key cases, money folds made of leather,
belts, men’s briefs, neckties, handkerchiefs and men’s socks. On the other hand, private respondent
Lim Bun Liong is a registrant of a trademark of the same name HICKOK for its Markina shoes. HICKOK
filed a petition to cancel private respondent’s registration of the trademark. The Director of Patent
granted the pettion of HICKOK, but on appeal the Court of Appeals reversed the director’s decision
and dismissed the petition on the ground that the trademarks of petitioner and that of the registrant
were different in design and coloring of, as well as in the words on the ribbons.

ISSUE:

Whether the registration of private respondent’s trademark can be allowed

HELD:

Yes. The Supreme Court, in affirming the appealed decision of the Court of Appeals, stated that
registration of the same trademark but for unrelated and non-competing products are allowed.
Emphasis in registration of patent should be placed on the similarity of products involved, not on the
arbitrary classification or general description of their properties and characteristics.

In this case, taking into account the facts of record that petitioner, a foreign corporation registered
the trademark for its diverse articles of men’s wear which are all manufactured in the Philippines but
are so labelled as to give the misimpression that the said goods are of foreign manufacture and that
respondent secured its trademark registration exclusively for shoes (which neither petitioner nor the
licensee ever manufactured or traded in) and which are clearly labelled in block letters as “Made in
Marikina, Rizal, Philippines,” no error can be attributed to the CA in upholding respondent’s
registration of the same trademark for his unrelated and non-competing product.
35. Shell Company of the Philippines, Ltd. vs. Insular Petroleum Refining Co., Ltd.; G.R. L-19441; June
30, 1964; Ponente: Paredes, J.

FACTS:

Petitioner Shell is a corporation engaged in the sale of petroleum products, including lubricating oil.
The packages and containers of its goods bear its trademark. On the other hand, defendant Insular is
a limited partnership engaged in collecting used lubricating oil which, thru a scientific process, is
refined and marketed to the public at a price much lower than that of a new lubricating oil. In selling
its low-grade oil, respondent uses miscellaneous containers, which includes several drums, some
with marks on them belonging from different companies. Some of those miscellaneous containers as
the Shell containers. It was alleged by Donald Mead, Insular’s general manager that before filling the
empty drums, they obliterate the markings therein. However, in one transaction, which was
consummated with Conrado Uichangco, a dealer of petitioner’s gasoline and lubricating oil, the low-
grade oil that was sold to said operator was contained in a drum with the petitioner’s mark or brand
“Shell” still stencilled without having been erased. This brought about a case for unfair competition
and damages against Mead, Pedro Kayanan, and F. Tecson Lozano.

In the criminal case, the accused were acquitted, the Court having found that the element of deceit
was absent. While in the civil case, the CFI ruled in favour Shell. However, it was reversed by the CA.
Hence, this Petition.

ISSUE:

Whether the conduct of defendant in selling oil in containers of another with markings erased
amounts to unfair competition

HELD:

No. The Supreme Court stated that defendant’s practices in marketing its low-grade oil did not cause
actual or probable deception and confusion on the part of the general public. The practices do not
show a conduct to the end and probable effect to which is to deceive the public, or pass off its goods
as those of another. Proof of this may be clearly deduced from the fact that, with the exception of
the sale of one drum of low-grade oil by defendant’s agent to Uichangco, 110 other companies
whose drums or containers have been used by the defendant in its business have not filed any
complaint to protect against the practices of the defendant.

Moreover, in those cases where the use of another dealer’s container were deemed unfair
competition, the competing product involving the offending bottles, wrappers, packages or marks
reached the hands of the ultimate consumer so bottled, wrapped, packaged or marked, and passed
as those of plaintiff. The case at bar is different because the defendant’s oil in plaintiff’s container
were sold to plaintiff’s dealer, not an ultimate consumer, and represented to be as defendant’s, not
plaintiff’s oil.