J.A.B. Bulao & Associates

PLEASE DOWNLOAD THE FILE BELOW:

TRADEMARK CASE 0002-04 NOV 1992: G.R. NO. 71189- FABERGE INCORPORATED, PETITIONER, VS. THE INTERMEDIATE APPELLATE COURT AND CO BENG KAY, RESPONDENTS. (MELO, J.)

 DISPOSITIVE:

“WHEREFORE, the petition is hereby DISMISSED without pronouncement as to costs.

SO ORDERED.”

SUBJECTS/DOCTRINES/DIGEST:

WHAT HAPPENED IN THIS CASE?

PETITIONER REGISTERED ITS TRADEMARK “BRUT” FOR AFTER SHAVE LOTION, SHAVING CREAM, DEODORANT, TALCUM POWER AND TOILET SOAP. LATER RESPONDENT REGISTERED ITS TRADEMARK “BRUTE” FOR BRIEFS. THE SUPREME COURT RULED THAT THESE MARKS ARE NOT CONFUSINGLY SIMILAR BECAUSE OF THE GLARING DISCREPANCIES BETWEEN THE PRODUCTS OF PETITIONER AND THAT OF RESPONDENT.

WHAT IS THE CENTRAL RULING OF THE COURT ON THIS CASE?

“The glaring discrepancies between the two products had been amply portrayed to such an extent that indeed, “a purchaser who is out in the market for the purpose of buying respondent’s BRUTE brief would definitely be not mistaken or misled into buying BRUT after shave lotion or deodorant” as categorically opined in the decision of the Director of Patents relative to the inter-partes case. (supra, at page 7).”

PETITIONER SAID IT ALSO INTENDED TO USE ITS TRADEMARK ON “BRIEFS”. IS THIS GROUND VALID?

NO. ONLY THOSE PRODUCTS SPECIFIED IN THE CERTIFICATE ARE COVERED. SAID THE COURT:

“. . . . . . In as much as petitioner has not ventured in the production of briefs, an item which is not listed in its certificate of registration, petitioner can not and should not be allowed to feign that private respondent had invaded petitioner’s exclusive domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called “eloquent proof that petitioner indeed intended to expand its mark “BRUT” to other goods” (Page 27, Brief for the Petitioner; Page 202, Rollo). Even then, a mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate of registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein. . . . .”

TO READ THE DECISION, SEARCH THE CASE UNDER THE LAWPHIL PROJECT OF THE ARELLANO LAW FOUNDATION.

NOTE: TO RESEARCH ON A TOPIC IN YAHOO OR GOOGLE SEARCH  JUST TYPE “attybulao and the topic”. EXAMPLE: TO RESEARCH ON FORUM SHOPPING JUST  TYPE “attybulao and forum shopping”.

TRADEMARK CASE 0001: 10 JAN 1953-G.R. NO. L-4531- ANG SI HENG AND SALUSTIANA DEE, PLAINTIFFS-APPELLANTS,  VS. WELLINGTON DEPARTMENT STORE, INC., BENJAMIN CHUA, S.R. MENDINUETO, AND FELIMON COSIO, DEFENDANTS-APPELLEES (LABRADOR, J.)

DISPOSITIVE:

“The judgment appealed from is, therefore, affirmed, with costs against the plaintiffs-appellants.”

SUBJECTS/DOCTRINES/DIGEST:

WHAT HAPPENED IN THIS CASE?

PLAINTIFFS REGISTERED FIRST THE THE TRADEMARK “WELLINGTON” FOR MANUFACTURING SHIRTS, PANTS, DRAWERS, AND OTHER ARTICLES OF WEAR FOR MEN, WOMEN, AND CHILDREN. LATER, DEFENDANTS REGISTERED THE TRADEMARK “WELLINGTON DEPARTMENT STORE” FOR THEIR BUSINESS. PLAINTIFFS ARGUE THAT  THE USE OF THE WORDS “WELLINGTON DEPARTMENT STORE” AS A BUSINESS NAME AND AS A CORPORATE NAME BY THE DEFENDANT-APPELLEE DECEIVES THE PUBLIC INTO BUYING DEFENDANT CORPORATION’S GOODS UNDER THE MISTAKEN BELIEF THAT THE NAMES ARE THE PLAINTIFF’S OR HAVE THE SAME SOURCE AS PLAINTIFFS’ GOODS, THEREBY RESULTING IN DAMAGE TO THEM. ON THE OTHER HAND DEFENDANTS ARGUE THAT PLAINTIFFS ARE ONLY MANUFACTURING SHIRTS, PANTS, DRAWERS AND OTHER ARTICLES OF WEAR WHILE THEY ARE SELLING HATS, SHOES,  TOYS, PERFUMES, BAGS WHICH ARE NOT MANUFACTURED OR SOLD BY PLAINTIFFS AND WHILE THEY ALSO SELL  APPARELS THESE ARE DIFFERENT FROM THOSE MANUFACTURED AND SOLD BY PLAINTIFFS. THE SUPREME COURT RULED  IN FAVOR OF THE DEFENDANTS AND DECLARED THERE WAS  NO INFRINGEMENT.

IS THERE A SIMILARITY BETWEEN THE TRADEMARK “WELLINGTON” AND “WELLINGTON DEPARTMENT STORE”?

YES.

IS THERE CONFUSION OR DECEPTION?

NO, BECAUSE “WELLINGTON DEPARTMENT STORE” IS A DEPARTMENT STORE WHILE THE TRADEMARK “WELLINGTON” IS NOT A DEPARTMENT STORE.

FURTHERMORE, THE NAME “WELLINGTON” IS ADMITTEDLY THE NAME OF THE TRADEMARK ON THE SHIRTS, PANTS, DRAWERS, AND OTHER ARTICLES OF WEAR FOR MEN, WOMEN AND CHILDREN, WHEREAS THE NAME USED BY THE DEFENDANT INDICATES NOT THESE MANUFACTURED ARTICLES OR ANY SIMILAR MERCHANDISE, BUT A DEPARTMENT STORE.

CAN THE PUBLIC BE SAID TO BE DECEIVED INTO THE BELIEF THAT THE GOODS BEING SOLD IN DEFENDANT’S STORE ORIGINATE FROM THE PLAINTIFFS?

NO  BECAUSE THE EVIDENCE SHOWS THAT DEFENDANT’S STORE SELLS NO SHIRTS OR WEAR BEARING THE TRADEMARK “WELLINGTON,” BUT OTHER TRADEMARKS.

FURTHER, NO EVIDENCE HAS BEEN SUBMITTED THAT CUSTOMERS OF THE PLAINTIFFS-APPELLANTS HAD ACTUALLY BEEN MISLED INTO PURCHASING DEFENDANT’S ARTICLES AND MERCHANDISE.

TO READ THE DECISION, JUST CLICK/DOWNLOAD THE FILE BELOW. IF FILE DOES NOT APPEAR ON SCREEN GO TO DOWNLOAD. IT IS THE FIRST ITEM. OPEN IT.

TRADEMARK-0001-ANG SI HENG ET AL VS WELLINGTON DEPARTMENT STORE INC ET AL.doc 

NOTE: TO RESEARCH ON A TOPIC IN YAHOO OR GOOGLE SEARCH  JUST TYPE “attybulao and the topic”. EXAMPLE: TO RESEARCH ON FORUM SHOPPING JUST  TYPE “attybulao and forum shopping”.