ANG V. TEODORO (G.R. NO.

L-48226)

FACTS: Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the
manufacture and sale of its slippers, shoes and indoor baseballs when he formally registered it since
1910 and paid for advertising expense for such. Meanwhile, petitioner Ang registered the same trademark
‘Ang Tibay’ for its products of pants and shirts on 1932 without expending for advertisement.

The trial court ruled in favor of the respondent on the grounds that the two trademarks are dissimilar and
are used on different noncompeting goods.

Petitioner argues the validity of the mark being descriptive; that it had not acquired secondary meaning in
favor of respondent; and that there can be no infringement/unfair competition because the goods are not
similar.

ISSUES:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable. NO.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning. NO.

(3) Whether or not there is trademark infringement and/or unfair competition between unrelated goods.
YES.

HELD:

(1) The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. For
instance, one who tries hard but fails to break an object exclaims, “Ang tibay!” (How strong!”) The phrase
“ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay
sapatos” or “sapatos ang tibay” is never used adjectively to define or describe an object. One does not
say, “ang tibay sapatos” or “sapatos ang tibay” to mean “durable shoes,” but “matibay na sapatos” or
“sapatos na matibay.” From all of this we deduce that “Ang Tibay” is not a descriptive term within the
meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be
appropriated as a trademark or tradename. In this connection we do not fail to note that when the
petitioner herself took the trouble and expense of securing the registration of these same words as a
trademark of her products she or her attorney as well as the Director of Commerce was undoubtedly
convinced that said words (Ang Tibay) were not a descriptive term and hence could be legally used and
validly registered as a trademark.

(2) In view of the conclusion we have reached upon the first assignment of error, it is unnecessary to
apply here the doctrine of “secondary meaning” in trade-mark parlance. This doctrine is to the effect that
a word or phrase originally incapable of exclusive appropriation with reference to an article of the market,
because geographically or otherwise descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was his product. We have said
that the phrase “Ang Tibay,” being neither geographic nor descriptive, was originally capable of exclusive
appropriation as a trade-mark. But were it not so, the application of the doctrine of secondary meaning
made by the Court of Appeals could nevertheless be fully sustained because, in any event, by
respondent’s long and exclusive use of said phrase with reference to his products and his business, it has
acquired a proprietary connotation.

(3) In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair
Trading, the test employed by the courts to determine whether noncompeting goods are or are not of the
same class is confusion as to the origin of the goods of the second user. Although two noncompeting
articles may be classified under two different classes by the Patent Office because they are deemed not
to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to
the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely
to cause confusion as to the origin, or personal source, of the second user’s goods. They would be
considered as not falling under the same class only if they are so dissimilar or so foreign to each other as
to make it unlikely that the purchaser would think the first user made the second user’s goods. The Court
of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent’s
registered trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and
ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the
same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and
selling power it has acquired at the hands of the respondent.

Etepha vs. Director of Patents

ETEPHA, A.G., petitioner, vs. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC.,
respondents.

FACTS: On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought
registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic,
bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used
exclusively in the Philippines since January 21, 1959.

Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claims that it will be
damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on
September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be
misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.

To the question: May trademark ATUSSIN be registered, given the fact that PERTUSSIN, another
trademark, had been previously registered in the Patent Office? — the Director of Patents answered
affirmatively. Hence this appeal.

ISSUE: Whether or not ATUSSIN may be registered?

HELD: We are to be guided by the rule that the validity of a cause for infringement is predicated upon
colorable imitation. The phrase "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, and to cause him to purchase the one
supposing it to be the other.

A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two
trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a
prospective buyer. The trademark complained of should be compared and contrasted with the
purchaser's memory (not in juxtaposition) of the trademark said to be infringed. 10 Some such factors as
"sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning,
spelling, and pronunciation, of words used; and the setting in which the words appear" may be
considered. 11 For, indeed, trademark infringement is a form of unfair competition.
Confusion is likely between trademarks, however, only if their over-all presentations in any of the
particulars of sound, appearance, or meaning are such as would lead the purchasing public into believing
that the products to which the marks are applied emanated from the same source. In testing this issue,
fixed legal rules exist — if not in harmony, certainly in abundance — but, in the final analysis, the
application of these rules in any given situation necessarily reflects a matter of individual judgment largely
predicated on opinion. There is, however, and can be no disagreement with the rule that the purchaser is
confused, if at all, by the marks as a whole.

“TUSSIN” is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the
goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark. But
while “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the
subject of a trademark “by combination with another word or phrase”.

Pertussin and Atussin — as they appear on the respective labels, these words are presented to the public
in different styles of writing and methods of design. The horizontal plain, block letters of Atussin and the
diagonally and artistically upward writing of Pertussin leave distinct visual impressions. One look is
enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to
prosper. Moreover, the two words do not sound alike —Pertussin and Atussin when pronounced. There is
not much phonetic similarity between the two. The Solicitor General well-observed that in Pertussin the
pronunciation of the prefix "Per", whether correct or incorrect, includes a combination of three letters P, e
and r; whereas, in Atussin the whole starts with the single letter A added to suffix "tussin". Appeals to the
ear are disimilar. And this, because in a word combination, the part that comes first is the most
pronounced.

Mirpuri vs. Court of Appeals

FACTS: Lolita Escobar, the predecessor-in-interest of petitioner Mirpuri, filed an application for the
registration of the trademark "Barbizon" for use in brassieres and ladies’ undergarments. Escobar alleged
that she had been manufacturing and selling these products under the firm name "L & BM Commercial"
since 1970.

Private respondent Barbizon Corporation, a US corporation opposed the application, but the Director of
Patents rendered judgment dismissing the opposition and giving due course to Escobar's application.

Escobar later assigned all her rights and interest over the trademark to petitioner Mirpuri who, under his
firm name then, the "Bonito Enterprises," was the sole and exclusive distributor of Escobar's "Barbizon"
products.

In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of Use of the trademark
required under Section 12 of R.A. 166. Due to this failure, the Bureau of Patents cancelled Escobar's
certificate of registration.

Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his own application for
registration of Escobar's trademark. Escobar later assigned her application to herein petitioner and this
application was opposed by private respondent.

Petitioner raised the defense of res judicata. (another issue)

Escobar assigned to petitioner the use of the business name "Barbizon International." Petitioner
registered the name with the Department of Trade and Industry (DTI) for which a certificate of registration
was issued in 1987.

Private respondent filed before the Office of Legal Affairs of the DTI a petition for cancellation of
petitioner's business name. DTI, Office of Legal Affairs, cancelled petitioner's certificate of registration,
and declared private respondent the owner and prior user of the business name "Barbizon International."

Director rendered a decision declaring private respondent's opposition barred by res judicata, but CA
reversed the Director’s decision and ordered that the case be remanded to the Bureau of Patents for
further proceedings.

ISSUE: Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark.

HELD: YES. The Paris Convention, is a multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time aims to repress unfair competition. It
is essentially a compact among various countries which, as members of the Union, have pledged to
accord to citizens of the other member countries trademark and other rights comparable to those
accorded their own citizens by their domestic laws for an effective protection against unfair competition.
Both the Philippines and the United States of America, are signatories to the Convention.

Private respondent anchors its cause of action on the first paragraph of Article 6bis of the Paris
Convention, said Article governing protection of well-known trademarks.

Art. 6bis is a self-executing provision and does not require legislative enactment to give it effect in the
member country. It may be applied directly by the tribunals and officials of each member country by the
mere publication or proclamation of the Convention, after its ratification according to the public law of
each state and the order for its execution.

The essential requirement under Article 6bis is that the trademark to be protected must be "well-known" in
the country where protection is sought. The power to determine whether a trademark is well-known lies in
the "competent authority of the country of registration or use." This competent authority would be either
the registering authority if it has the power to decide this, or the courts of the country in question if the
issue comes before a court.

Pursuant to Article 6bis, then Minister Villafuerte of the Ministry of Trade issued a Memorandum
instructing Director of Patents to reject all pending applications for Philippine registration of signature and
other world-famous trademarks by applicants other than their original owners or users, enumerating
several internationally-known trademarks and ordered the Director of Patents to require Philippine
registrants of such marks to surrender their certificates of registration.

After, Minister Ongpin issued Memorandum which did not enumerate well-known trademarks but laid
down guidelines for the Director of Patents to observe in determining whether a trademark is entitled to
protection as a well-known mark in the Philippines under Article 6bis of the Paris Convention. All pending
applications for registration of world-famous trademarks by persons other than their original owners were
to be rejected forthwith.

The Supreme Court in the 1984 landmark case of La Chemise Lacoste, S.A. v. Fernandez ruled therein
that under the provisions of Article 6bis of the Paris Convention, the Minister of Trade and Industry was
the "competent authority" to determine whether a trademark is well-known in this country.

The Villafuerte Memorandum was issued in 1980. In the case at bar, the first inter partes case, was filed
in 1970, before the Villafuerte Memorandum but 5 years after the effectivity of the Paris Convention.
Private respondent, however, did not cite the protection of Article 6bis, neither did it mention the Paris
Convention at all. It was only in 1981 when second case was instituted that the Paris Convention and the
Villafuerte Memorandum, and, during the pendency of the case, the 1983 Ongpin Memorandum were
invoked by private respondent.

Zuneca Pharmaceuticals v. Natrapharm Inc.

Facts

Petitioner Zuneca Pharmaceutical has been engaged in the importation, marketing, and sale of various
kinds of medicines and drugs in the Philippines since 1999.9 It imports generic drugs from Pakistan and
markets them in the Philippines using different brand names.10 Among the products it has been selling is
a drug called carbamazepine under the brand name "ZYNAPS", which is an anti-convulsant used to
control all types of seizure disorders of varied causes like epilepsy.

Natrapharm, on the other hand, is a domestic corporation engaged in the business of manufacturing,
marketing, and distribution of pharmaceutical products for human relief.14 One of the products being
manufactured and sold by Natrapharm is citicoline under the trademark "ZYNAPSE", which is indicated
for the treatment of cerebrovascular disease or stroke.15 The trademark "ZYNAPSE" was registered with
the Intellectual Property Office of the Philippines (IPO) on September 24, 2007 and is covered by
Certificate of Trademark Registration No. 4-2007-005596.17

On November 29, 2007, Natrapharm filed with the RTC a Complaint against Zuneca for Injunction,
Trademark Infringement, Damages and Destruction with Prayer for TRO and/or Preliminary Injunction,
alleging that Zuneca's "ZYNAPS" is confusingly similar to its registered trademark "ZYNAPSE" and the
resulting likelihood of confusion is dangerous because the marks cover medical drugs intended for
different types of illnesses.

In its Answer (With Compulsory Counterclaim and Prayer for Preliminary Injunction), Zuneca claimed that
it has been selling carbamazepine under the mark "ZYNAPS" since 2004 after securing a Certificate of
Product Registration on April 15, 2003 from the Bureau of Food and Drugs (BFAD, now Food and Drug
Administration).21 It alleged that it was impossible for Natrapharm not to have known the existence of
"ZYNAPS" before the latter's registration of "ZYNAPSE" because Natrapharm had promoted its products,
such as "Zobrixol" and "Zcure", in the same publications where Zuneca had advertised
"ZYNAPS".22 Further, Zuneca pointed out that both Natrapharm and Zuneca had advertised their
respective products in identical conventions.23 Despite its knowledge of prior use by Zuneca of
"ZYNAPS", Natrapharm had allegedly fraudulently appropriated the "ZYNAPSE" mark by registering the
same with the IPO.24 As the prior user, Zuneca argued that it is the owner of "ZYNAPS" and the
continued use by Natrapharm of "ZYNAPSE" causes it grave and irreparable damage.25

Subsequently, after a summary hearing, the prayer for TRO was denied.29 The preliminary injunction and
counter preliminary injunction prayed for by the parties were likewise rejected.30

The RTC rendered in favor of [Natrapharm] and against [Zuneca]. The RTC ruled that the first filer in
good faith defeats a first user in good faith who did not file any application for registration.34 Hence,
Natrapharm, as the first registrant, had trademark rights over "ZYNAPSE" and it may prevent others,
including Zuneca, from registering an identical or confusingly similar mark.35 Moreover, the RTC ruled
that there was insufficient evidence that Natrapharm had registered the mark "ZYNAPSE" in bad
faith.36 The fact that "ZYNAPS" and Natrapharm's other brands were listed in the Philippine
Pharmaceutical Directory (PPD) was not sufficient to show bad faith since Zuneca's own witness admitted
to not having complete knowledge of the drugs listed in the PPD.37 Natrapharm should also therefore be
accorded the benefit of the doubt that it did not have complete knowledge of the other brand names listed
in the PPD.

In affirming the RTC, the CA stated that registration, not prior use, is the mode of acquiring ownership of
a trademark.

Issues:

1. Whether or not the the first-to-file trademark registrant in good faith defeats the right of the prior
user in good faith.
2. Whether or not [zuneca is] liable for trademark infringement and [is] enjoined from the use of the
trademark "zynaps" and marks similar thereto;

HELD: NO for both.

Under the law, the owner of the mark shall have the exclusive right to prevent all third parties not having
the owner's consent from using identical or similar marks for identical or similar goods or services where
such use would result in a likelihood of confusion.65

At present, as expressed in the language of the provisions of the IP Code, prior use no longer determines
the acquisition of ownership of a mark in light of the adoption of the rule that ownership of a mark is
acquired through registration made validly in accordance with the provisions of the IP Code. Accordingly,
the trademark provisions of the IP Code use the term "owner" in relation to registrations.

From the provision of IP Code itself, it can be gleaned that while the law recognizes the right of the prior
user in good faith to the continuous use of its mark for its enterprise or business, it also respects the
rights of the registered owner of the mark by preventing any future use by the transferee or assignee that
is not in conformity with Section 159.1 of the IP Code. Notably, only the manner of use by the prior user in
good faith - that is, the use of its mark tied to its current enterprise or business - is categorically
mentioned as an exception to an action for infringement by the trademark owner.

A plain reading of the above provisions reveals that that these remedies may only be ordered by the court
if there was a finding that a party had committed infringement. Here, because of the application of Section
159.1 of the IP Code, Zuneca is not liable for trademark infringement.

1. No. Indeed, directing the foregoing remedies despite a finding of the existence of a prior user in
good faith would render useless Section 159.1 of the IP Code, which allows the continued use
and, in certain situations, the transfer or assignment of its mark by the prior user in good faith
after the registration by the first-to-file registrant. To reiterate, Section 159.1 of the IP Code
contemplates a situation where the prior user in good faith and the first-to-file registrant in good
faith concurrently use identical or confusingly similar marks in the market, even if there is
likelihood of confusion.

While Section 147.1141 of the IP Code provides that the owner of a registered mark shall have the
exclusive right to prevent third parties' use of identical or similar marks for identical or similar goods where
such use would result in a likelihood of confusion, this provision should be interpreted in harmony with
Section 159.1 of the IP Code, especially the latter's proviso which allows the transfer or assignment of the
mark together with the enterprise or business of the prior user in good faith or with that part of his
enterprise or business in which the mark is used. The lawmakers intended for the rights of the owner of
the registered mark in Section 147.1 to be subject to the rights of a prior user in good faith contemplated
under Section 159.1. Essentially, therefore, Section 159.1 is an exception to the rights of the trademark
owner in Section 147.1 of the IP Code.

While there is no issue as to the likelihood of confusion between "ZYNAPSE" and "ZYNAPS", the Court
believes that the evil of medical switching will likely not arise, considering that the law requires the generic
names of drugs to be written in prescriptions.

To further reduce therefore, if not totally eliminate, the likelihood of switching in this case, the Court
hereby orders the parties to prominently state on the packaging of their respective products, in plain
language understandable by people with no medical background or training, the medical conditions that
their respective drugs are supposed to treat or alleviate and a warning indicating what "ZYNAPS"
is not supposed to treat and what "ZYNAPSE" is not supposed to treat, given the likelihood of confusion
between the two.

SC AFFIRMED insofar as they declared respondent NATRAPHARM, INC. as the lawful registrant of the