Hickok v CA Digest

G.R. No. L-44707, August 31, 1982

Facts:

Petitioner is a foreign corporation and all its products are manufactures by Quality House Inc. The latter pays royalty to the petitioner. Hickok registered the trademark 'Hickok' earlier and used it in the sale of leather wallets, key cases, money folds, belts, men’s underwear, neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale of Marikina shoes. Both products have different channels of trade. The Patent Office did not grant the registration, but the Court of Appeals reversed the PPO decision.

Issue: Is there infringement in this case?

NONE. Emphasis should be on the similarity of the products involves and not on the arbitrary classification or the general description of their properties or characteristics. Also, 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 by others on unrelated articles of different kind.

There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in red with white background in the middle of 2 branches of laurel (in light gold) while the one used by Sam Bun Liong is the word 'Hickok ' in white with gold background between 2 branches of laurel in red with the word 'shoes' also in red placed below the word 'Hickok'.

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.

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.

Phil Refining v, Ng Sam Digest

Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, July 30, 1982

Facts of the Case: The petitioner Philippine Refining Co. first used'Camia' as trademark for its products in 1922. In 1949, it caused the registration of the said trademark for its lard, butter, cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam filed an application for 'Camia' for its ham product (Class 47), alleging its first use in 1959. The petitioner opposed the said application but the Patent Office allowed the registration of Ng Sam.

Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the trademark 'Camia' on said goods would result to confusion as to their origin?

HELD: NO. The businesses of the parties are non-competitive and the products are so unrelated that the use of the same trademark will not give rise to confusion nor cause damage to the petitioner. The right to a trademark is a limited one, hence, others may use the same mark on unrelated goods if no confusion would arise.

A trademark is designed to identify the user, hence, it should be so distinctive and sufficiently original so as to enable those who see it to recognize instantly its source or origin. A trademark must be affirmative and definite, significant and distinctive and capable of indicating origin.

'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner as the manufacturer of producer of the goods upon which said mark is used. If a mark is so commonplace, it is apparent that it can't identify a particular business and he who adopted it first cannot be injured by any subsequent appropriation or imitation by others and the public will not be deceived.

Mere classification of the goods cannot serve as the decisive factor in the resolution of whether or not the goods a related. Emphasis should be on the similarity of products involved and not on arbitrary classification of general description of their properties or characteristics.