ACOJE MINING CO., INC., PETITIONER-APPLICANT, VS. THE DIRECTOR OF PATENTS, RESPONDENT.

The issue before us is simple and uncomplicated.  May petitioner Acoje
Mining Company register for the purpose of advertising its product, soy sauce,
the trademark LOTUS, there being already in existence one such registered in
favor of the Philippine Refining Company for its product, edible oil, it being
further shown that the trademark applied for is in smaller type, colored
differently, set on a background which is dissimilar as to yield a distinct
appearance?  The answer of the Director
of Patents was in the negative.  Hence
this appeal which we sustain in the light of the controlling norm as set forth
in the American Wire & Cable Co. case.^[1]
The facts as set forth in the appealed decision follow:  “On September 14, 1965, Acoje
Mining Co., Inc. a domestic corporation, filed an application for registration
of the trademark LOTUS, used on Soy Sauce, Class 47.  Use in commerce in the Philippines
since June 1, 1965 is
asserted.  The Chief Trademark Examiner
finally rejected the application by reason of confusing similarity with the
trademark LOTUS registered in this Office under Certificate of Registration No.
12476 issued in favor of Philippine Refining Co., Inc., another domestic
corporation.  The cited mark is being
used on edible oil, Class 47.”^[2]
The matter was then elevated to respondent Director of Patents who, on January
31, 1968, upheld the view of the Chief Trademark Examiner and rejected the
application of petitioner on the ground that while there is a difference
between soy sauce and edible oil and there were dissimilarities in the trademarks
due to type of letters used as well as in the size, color and design employed,
still the close relationship of the products, soy sauce and edible oil, is such
“that purchasers would be misled into believing that they have a common
source.”^[3]

This petition for its review was filed with this Court on March 6, 1968.  After the submission of the briefs on behalf
of petitioner and respondent, the case was deemed submitted.  As set forth at the outset, the decision of
respondent Director of Patents is reversed.

The decisive test as to whether an application for a trademark
should be affirmatively acted upon or not is clearly set forth in the decision,
already referred to, promulgated barely a year ago.  In the language of Justice J.B.L. Reyes, who
spoke for the Court in American Wire & Cable Co. v. Director of Patents:^[4]
“It is clear from the above-quoted provision that the determinative factor
in a contest involving registration of trade mark is not whether the challenged
mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on
the part of the buying public.  In short,
to constitute an infringement of an existing trade-mark patent and warrant a
denial of an application for registration, the law does not require that the
competing trademarks must be so identical as to produce actual error or
mistake; it would be sufficient, for purposes of the law, that the similarity
between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it.”^[5]

Can it be said then that petitioner’s application would be likely
to cause confusion or mistake on the part of the buying public?  The answer should be in the negative.  It does not defy common sense to assert that
a purchaser would be cognizant of the product he is buying.  There is quite a difference between soy sauce
and edible oil.  If one is in the market
for the former, he is not likely to purchase the latter just because of the
trademark LOTUS.  Even on the rare
occasions that a mistake does occur, it can easily be rectified.  Moreover, there is no denying that the
possibility of confusion is remote considering the difference in the type used,
the coloring, the petitioner’s trademark being in yellow and red while that of
the Philippine Refining Company being in green and yellow, and the much smaller
size of petitioner’s trademark.  When
regard is had for the principle that the two trademarks in their entirety as
they appear in their respective labels should be considered in relation to the
goods advertised before registration could be denied, the conclusion is
inescapable that respondent Director ought to have reached a different
conclusion.  Petitioner has successfully
made out a case for registration.^[6]

WHEREFORE, the decision of respondent Director of Patents
of January 31, 1968 is
reversed and petitioner’s application for the registration of its trademark
LOTUS granted.  Without costs.

Concepcion, C.J., Reyes, J.B.L., Dizon, Makalintal, Zaldivar, Castro, Teehankee, Villamor, and Makasiar, JJ., concur.

Barredo, J., did not take part.

^[1] L-26557,
Feb. 18, 1970, 31 SCRA 544.

^[2]
Appendix to the Brief for the Petitioner, pp. I and II.

^[3] Ibid,
p. IV.

^[4] L-26557,
Feb. 18, 1970, 31 SCRA 544.

^[5] Ibid,
pp. 547-548.

^[6]
Cf. Bristol Myers Co. v. Director of Patents, L-21587, May 19, 1966, 17 SCRA 128.