Ip Law Cases.docx

On January 18, 1984, CFC Corporation filed an application for the registration of the trademark "FLAVOR MASTER" for instant coffee. The application was published in the Official Gazette.

Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test.

Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of CFC Corporation “FLAVOR MASTER” is "confusingly similar to its trademarks for coffee and coffee extracts, to wit: MASTER ROAST and MASTER BLEND."

The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity.

Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation and a licensee of Societe Des Produits Nestle S.A., against CFC’s application for registration of the trademark FLAVOR MASTER. Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three (3) trademarks is "MASTER"; or that the goods of CFC might be mistaken as having originated from the latter.

The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks.

SOCIETE DES PRODUITS NESTLE VS. CA GR 112012 (2001)

Thus, the Supreme Court applied the Dominancy Test in this case. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. Further, the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. This can be gleaned from the fact that Robert Jaworski and Atty. Ric Puno Jr.., the personalities engaged to promote the product, are given the titles Master of the Game and Master of the Talk Show, respectively. In due time, because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the opposer’s goods.

CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with Nestle’s trademarks, MASTER ROAST and MASTER BLEND, alleging that, "except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning, spelling, pronunciation, and sound". CFC further argued that its trademark, FLAVOR MASTER, "is clearly very different from any of Nestle’s alleged trademarks MASTER ROAST and MASTER BLEND, especially when the marks are viewed in their entirety, by considering their pictorial representations, color schemes and the letters of their respective labels."

In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term cannot be invalidated as a trademark and, therefore, may be legally protected.

Issue: Whether or not the trademark “FLAVOR MASTER” is a colorable imitation of the trademarks “MASTER ROAST” and “MASTER BLEND”. – Yes.

SHANGRI-LA VS. CA GR 111580 (2001)

Rule: The Supreme Court applied Section 4 (d) of Republic Act No. 166 or the Trademark Law, as amended, which was in force at the time. Said provision provides that the owner of a trademark shall have the right to register the same unless it: xxx

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Shangri-La is the operator and owner of Shangri-La hotels which originated in Singapore. It uses the term “Shangri-La” in its hotels together with the S logo. Developers Group of Companies, Inc. (DGC) was able to register the term “Shangri-La” in the Philippines together with the S logo for its Chinese restaurant business at the time when Shangri-La has not yet registered any of its trademarks in the Philippines.

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(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers; The law prescribes a more stringent standard in that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers.

When Shangri-La wanted to build a hotel in the Philippines, it found out that the term “Shangri-La” and the “S” logo was already registered under the name of DGC. Thus, Shangri-La group filed a petition for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc., on the ground

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that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business.

long as it has not been cancelled by the Bureau or by an infringement court. As such, Developers Group's Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate." Since the certificate still subsists, Developers Group may thus file a corresponding infringement suit and recover damages from any person who infringes upon the former's rights.

At the same time, Shangri-La group started to construct its hotel, the EDSA Shangri-La Hotel wherein they used that same name and “S” logo. Pending the petition for cancellation against DGC, Shangri-La Group filed its own application for registration of the subject mark and logo. The Developers Group filed an opposition to the application. Because of the use of Shangri-La group of the term “Shangri-La” and the “S” logo in its EDSA Hotel, DGC filed an infringement case against the Shangri-La group.

While the two cases may proceed independently of each other, Section 161 of the RA 8293 provides that:

In summary, Shangri-La vs. DGC (Cancellation Case) Filed on June 21, 1988 when Shangri-La group found out that DGC was able to register the trademarks. 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 thereof by the Developers Group in 1982.

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.

DGC vs. Shangri-La (Infringement Case) Filed on April 15, 1991 when Shangri-La used the term “Shangri-La” and the “S” logo in its EDSA Hotel similar to that registered under DGC. DGC alleged that it is the registered owner of the trademark and is entitled to protect its rights excluding others from using its registered trademark.

Section 161 merely emphasized that both cases may proceed independently of each other. However, the Special Commercial Court has the power to order the cancellation of the trademark or uphold its validity. Should it uphold the validity of the trademark, the cancellation case pending before the Bureau of Legal Affairs will become moot. The proper remedy then is to appeal the decision of the Regional Trial Court with the Court of Appeals.

Shangri-La moved for the suspension of the proceeding in the infringement case on the ground that its cancellation case is still pending. Issue: Can the two cases (the cancellation case and the infringement case) proceed at the same. – Yes. Rule: The cancellation case is filed with the Bureau of Legal Affairs of the Intellectual Property Office to cancel the existing trademark of DGC. On the other hand, the infringement case is filed before the Special Commercial Court. Section 151.2 of Republic Act 8293 provides that “the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided.” In the case at bar, the filing of the cancellation case by the Shangri-La Group for the cancellation of the "ShangriLa" mark and "S" device/logo cannot effectively bar the subsequent filing of an infringement case by registrant Developers Group. The Certificate of Registration from which the infringement case is based remains valid and subsisting for as

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