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.