Sta.Ana v. Maliwat Digest

G.R. No. L-23023 August 31, 1968

Facts of the Case: 

In 1962, Florentino Maliwat sought to register the trademark "FLORMANN" used on shirts, pants, jackets and shoes for ladies men and children. He claimed its first use in commerce in 1955. Also in the same year (1962), Jose P. Sta. Ana (Petitioner) filed an application for the registration of the trademark "FLORMEN" (used in ladies and children shoes). he claimed its first use in commerce in 1959. Due to the confusing similarity , the Director of the Patent Office ordered an interference. Maliwat's application was then granted due to his prior adoption and use while that of Sta. Ana was denied. It was stipulated by the parties that 'Flormann' was used as a trademark in 1953 and Maliwat used it on shoes in 1962.

Issue: Was there any trademark infringement committed?

Ruling: YES. Both products of the parties have the same descriptive properties, thus its trademark must be protected.

The law does not require that the goods of the previous user and the late user of the same mark should possess the same descriptive properties or should fall into the same categories in order to bar the latter from registering his amrk. The meat of the matter is the likelyhood of confusion, mistake or deception upon the purchase of the goods of the parties. Herein, the similarity of the mark 'FLORMANN' and the name 'FLORMEN', as well as the likelihood of confusion is admitted. As such, Maliwat as prior adopter has a better right to use the mark.