Prosource v Horphag(PCO-GENOLS andPYCOGENOLS case)Respondent Horphag Research Management SA is the owner of trademark PYCNOGENOL, a food supplement. Respondent later discovered that petitioner Prosource International, Inc. was also distributing a similar food supplement using the mark PCO-GENOLS from 1996 to 2000, prompting respondent to demand that petitioner cease and desist from using the aforesaid mark. Without notifying respondent, petitioner discontinued the use of, and withdrew from the market, the products under the name PCO-GENOLS as of June 19, 2000. It likewise changed its mark from PCO-GENOLS to PCO-PLUS.ARE the trademarks PYCNOGENOL and PCO-GENOLS, both used for food supplements, confusingly-similar?The Supreme Court ruled that there was confusing similarity and affirmed the finding that both the words PYCNOGENOL and PCO-GENOLS have the same suffix GENOL which on evidence, appears to be merely descriptive and furnish no indication of the origin of the article. Although the letters Y between P and C, N between O and C and S after L are missing in Prosources mark PCO-GENOLS, nevertheless, when the two words are pronounced, the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public consumers. And although there were dissimilarities in the trademarks due to the type of letters used as well as the size, color, and design employed on their individual packages/bottles, still the close relationship of the competing products name in sounds as they were pronounced, clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common source and manufacturer.

246 Corp v DawayFACTS:Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device, filed against 246 Corporation the instant suit for trademark infringement and damages with prayer for the issuance of a restraining order or writ of preliminary injunction before the RTC of QCOn July 1996, 246 adopted and, since then, has been using without authority the mark Rolex in its business name Rolex Music Lounge as well as in its newspaper advertisements as Rolex Music Lounge, KTV, Disco & Party Club.246 answered in special affirmative defences, stating that no confusion would arise from the use by petitioner of the mark Rolex considering that its entertainment business is totally unrelated to the items catered by respondents such as watches, clocks, bracelets and parts thereof.The RTC: quashed the subpoena ad testificandum and denied petitioners motion for preliminary hearing on affirmative defenses with motion to dismissThis decision was affirmed by the CA.ISSUE: W/N RTC performed a grave abuse of discretionHELD: NO. The petition was denied and the RTCs decision was affirmedThe issue of whether or not a trademark infringement exists, is a question of fact that could best be determined by the trial court.Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293) states that: (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interest of the owner of the registered mark are likely to be damaged by such useSection 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to respondents business involving watches, clocks, bracelets, etc. However, the Court cannot yet resolve the merits of the present controversy considering that the requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly require determination facts of which need to be resolved at the trial court. The existence or absence of these requisites should be addressed in a full blown hearing and not on a mere preliminary hearing. The respondent must be given ample opportunity to prove its claim, and the petitioner to debunk the same.

SEHWANI, INCORPORATED vs IN-N-OUT BURGER,Petitioner Sehwani, Inc. alleged that respondent lack the legal capacity to sue because it was not doing business in the Philippines and that it has no cause of action because its mark is not registered or used in the Philippines.They claimed that as the registered owner of the "IN-N-OUT" mark, it enjoys the presumption that the same was validly acquired and that it has the exclusive right to use the mark. Moreover, petitioners argued that other than the bare allegation of fraud in the registration of the mark, respondent failed to show the existence of any of the grounds for cancellation thereof under the IP Code.Respondents contended that petitioners committed a violation of intellectual property rights when they refused to accede to the demand in desisting from claiming ownership of the mark "IN-N-OUT" and to voluntarily cancelling its Trademark Registration. They argued that they have been the owner of the tradename "IN-N-OUT" and trademarks "IN-N-OUT," "IN-N-OUT Burger & Arrow Design" and "IN-N-OUTBurger Logo," which are used in its business since 1948 up to the present. These trade name and trademarks were registered in the United States as well as in other parts of the worldIssue: W/n respondent has the legal capacity to sue for the protection of its trademarks, albeit it is not doing business in the PhilippinesHeld: YES.Section 160 in relation to Section 3 of R.A. No. 8293, provides for the Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. In addition, Articles 6bis and 8 of The Paris Convention, wherein both the United States and the Philippines are signatories. State that "A trade name shall be protected in all countries of the Union without the obligation of filing or registration whether or not it forms part of a trademark." Article 6bis which governs the protection of well-known trademarks, is a self-executing provision and does not require legislative enactment to give it effect in the member country. The question of whether or not respondents trademarks are considered "well-known" is factual in nature. Considering the factual findings of the BLA-IPO, the SC is inclined to favor the declaration of the mark "IN-N-OUT" as an internationally well-known mark on the basis of "registrations in various countries around the world and its comprehensive advertisements therein." The fact that respondents marks are neither registered nor used in the Philippines is of no moment.DEL MONTE CORPORATION VS. COURT OF APPEALS

Del Monte Corporation is an American corporation which is not engaged in business in the Philippines. Though not engaging business here, it has given authority to Philippine Packing Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del Monte also authorized PPC to register with the Patent Office the Del Monte catsup bottle configuration. Philpack was issued a certificate of trademark registration under the Supplemental Register.Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte bottles in selling its products and that Sunshine Sauces logo is similar to that of Del Monte. The RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the trademarks used between the two are different in designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs Insular Petroleum: selling oil in containers of another with markings erased, without intent to deceive, was not unfair competition.

ISSUE: Whether or not there is unfair competition and infringement in the case at bar.

HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that side by side comparison is not the final test of similarity. Sunshine Sauces logo is a colorable imitation of Del Montes trademark. The word catsup in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. The person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive.The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte bottles in the Philippines because Philpacks patent was only registered under the Supplemental Register and not with the Principal Register. Under the law, registration under the Supplemental Register is not a basis for a case of infringement because unlike registration under the Principal Register, it does not grant exclusive use of the patent. However, the bottles of Del Monte do say in embossed letters: Del Monte Corporation, Not to be Refilled. And yet Sunshine Sauce refilled these bottles with its catsup products. This clearly shows the Sunshine Sauces bad faith and its intention to capitalize on the Del Montes reputation and goodwill and pass off its own product as that of Del Monte.

Lyceum v CAFACTS:Petitioner is an educational institution duly registered with the SEC since Sept 1950. Before the case at bar, Petitioner commenced a proceeding against Lyceum of Baguio with the SEC to require it to change its corporate name and adopt a new one not similar or identical to the Petitioner. SEC granted noting that there was substantial because of the dominant word Lyceum. CA and SC affirmed. Petitioner filed similar complaint against other schools and obtain a favorable decision from the hearing officer. On appeal, SEC En banc reversed the decision and held that the word Lyceum have not become so identified with the petitioner and that the use thereof will cause confusion to the general public.

ISSUE:

1. Whether or not the corporate names of the private respondents are identical with or deceptively similar to that of the petitioner.2. Whether or not the use by the petitioner of Lyceum in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (Doctrine of Secondary meaning).

RULING: NO to both.True enough, the corporate names of the parties carry the word Lyceum but confusion and deception are precluded by the appending of geographic names. Lyceum generally refers to a school or an institution of learning and it is natural to use this word to designate an entity which is organized and operating as an educational institution.Doctrine of Secondary meaning is a word of phrase originally incapable of exclusive appropriation, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.Lyceum of the Philippines has not gained exclusive use of Lyceum by long passage of time. The number alone of the private respondents suggests strongly that the use of Lyceum has not been attended with the exclusivity essential for the applicability of the doctrine. It may be noted that one of the respondents Western Pangasinan Lyceum used such term 17 years before the petitioner registered with the SEC. Moreover, there may be other schools using the name but not registered with the SEC because they have not adopted the corporate form of organization.

Coffee Partners v San Francisco Coffee Facts:Facts: Coffee Partners holds a business in maintaining coffee shops in the Philippines. It is registered with the Securities and Exchange Commission in January 2001. In its franchise agreement with Coffee Partners Ltd, it carries the trademark San Francisco Coffee. Respondent is engaged in the wholesale and retail sale of coffee that was registered in SEC in May 1995 under a registered business name of San Francisco Coffee &Roastery, Inc. It entered into a joint venture with Boyd Coffee USA to study coffee carts in malls.When respondent learned that petitioner will open a coffee shop they sent a letter to the petitioner demanding them to stop using the name San Francisco Coffee as it causes confusion to the minds of the public. A complaint was also filed by respondents before the Bureau of Legal Affairs of the Intellectual Property Office for infringement and unfair competition with claims for damages. Petitioners contend that there are distinct differences in the appearance of their trademark and that respondent abandoned the use of their trademark when it joined venture with Boyd Coffee USA. The Bureau of Legal Affairs of the IPO held that petitioners trademark infringed on the respondents trade name as it registered its business name first with the DTI in 1995 while petitioner only registered its trademark in 2001, and that respondent did not abandon the use of its trade name upon its joint venture with Boyd Coffee USA since in order for abandonment to exist it must be permanent, intentional and voluntary. It also held that petitioners use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of appealed contending that the respondents trade name is not registered therefore a suit for infringement is not available.

Issue:Whether or not the petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with the Intellectual Property Office (IPO).

Ruling:

Registration of a trademark before the IPO is no longer a requirement to file an action for infringement as provided in Section 165.2 of RA 8293. All that is required is that the trade name is previously used in trade or commerce in the Philippines. There is no showing that respondent abandoned the use of its trade name as it continues to embark to conduct research on retailing coffee, import and sell coffee machines as among the services for which the use of the business name has been registered.

Shangrila v CAFacts:On June 21, 1988, the Shangri-La International Hotel Management, Ltd.,Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and KuokPhilippine Properties, Inc., filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the cancellation of the registration ofthe Shangri-La mark and S device/logo issued to the Developers Group of Companies Inc., on the ground that the same was illegally and fraudulently obtained and appropriated for the latters restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975, much earlier than the alleged first use by the Developers Group in 1982. Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo. The Developers Group filed an opposition to theapplication. Almost three (3) years later, the Developers Group instituted with the RTC a complaint for infringement and damages with prayer for injunction. When the Shangri-La Group moved for the suspension of the proceedings, the trial court denied such in a Resolution. The Shangri-La Group filed a petition for certiorari before the CA but the CA dismissed the petition for certiorari. Hence, the instant petition.

Issue:Whether or not the infringement case should be dismissed or at least suspended

Held:There can be no denying that the infringement case is validly pass upon the right of registration. Section 161 of Republic Act No. 8293 provides to wit: SEC. 161. Authority to Determine Right to Registration In any action involving a registered mark the court may determine the right to registration, order the cancellation of the registration, in whole or in part, and otherwise rectify the register with respect to the registration of any party to the action in the exercise of this. Judgment and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Bureau, and shall be controlled thereby.(Sec. 25, R.A. No. 166a). (Emphasis provided)To provide a judicious resolution of the issues at hand, the Court find it apropos to order the suspension of the proceedings before the Bureau pending final determination of the infringement case, where the issue of the validity of the registration of the subject trademark and logo in the name of Developers Group was passed upon.