Esso Standard v CA Digest

G.R. No. L-29971

Facts of the Case: 

The petitioner Esso Standard is a foreign corporation duly licensed to do business in the philippines. it is engaged in the sale of petroleum products which are identified by the trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a business name with the Bureau of Commerce in 1962. United Cigarette is a domestic corporation engaged in the manufacture and sale of cigarettes. it acquired the business from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on its cigarettes.

The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an extent that the buying public would be deceived as ti the quality and origin of the said products to the detriment and disadvantage of its own products. The lower court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there was no infringment in this case.

Issue: Is there infringement committed?

Ruling: NONE. Infringement is defined by law as the use without the consent of the trademark owner of any reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename which would likely cause confusion or mistake or deceive purchasers or others as to the source or origin of such goods.

The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether trademark infringement exists depend on whether or not the goods are so related that the public may be or is actually deceived and misled that they come from the same maker. Under the Related Goods Theory, goods are related when they belong to the same class or have the same descriptive properties or when they have same physical attributes. In these case, the goods are absolutely different and are so foreign from each other it would be unlikely for purchasers to think that they came from the same source. Moreover, the goods flow from different channels of trade and are evidently different in kind and nature.