CHUANCHOW SOY & CANNING CO., PETITIONER, VS. THE DIRECTOR OF PATENTS AND ROSARIO VILLAPANIA, RESPONDENTS.

This is a petition to review the decision of the Director of
Patents, dated May 16, 1953, dismissing the opposition of petitioner
Chuanchow Soy & Canning Co. to the application of respondent
Rosario Villapania to register the trademark “Bangos Brand”, on the
ground “that the trademark BANGOS and the trademark CARP and the
representation of a Carp fish do not resemble each other as to be
likely to cause confusion, mistake or to deceive the purchaser.”

The facts in the case are simple and not disputed. Both petitioner
Chuanchow Soy & Canning Co. and respondent Rosario Villapania are
engaged in the manufacture and sale of soy sauce. Since 1950,
petitioner had been using as trademark the words “Carp Brand Soy”,
printed in a distinctive style of lettering above the drawing of a fish
to distinguish its product, on labels affixed directly to the bottles
containing soy sauce, and on tissue paper in which these bottles were
wrapped (Exhibits B and C). In 1953, the Patent Office issued Trademark
Registration Certificate 4384 to it for its aforesaid trademark.

Respondent Villapania since 1956 had been using as trademark of her
soy sauce the name of “Bangos Brand” written in the same distinctive
style of lettering as that of the petitioner’s “Carp Brand”, above the
drawing of a fish similar to the fish drawing on the trademark of
petitioner, on labels also attached to the bottles containing her soy
sauce, and the bottles were wrapped also in tissue paper bearing a
similar design (Exhibits D and E).

On October 12, 1956, Villapania applied for registration of her
trademark as above-described. Upon examination of the trademark, the
examiner of the Office of the Director of Patents made the following
ruling:

“1. Examiner has taken into consideration a
previously registered mark: CARP BRAND & fish representation for
soy sauce of the Chuanchow Soy & Canning Co., Reg. No. 4384 dated
October 27, 1953, and found that the fish representation closely
resembles to applicant’s mark as presented in the drawing. In view
thereof, the applicant must submit new drawings and facsimiles for the
words: “BANGOS BRAND” only as shown in the labels submitted, excluding
SOY and fish representation.”

Complying with said ruling, respondent Villapania submitted a
drawing of the words “Bangos Brand” only, and the same was published in
the Official Gazette. However, she continued and is supposedly still
continuing to use the labels and wrappers Exhibits D and E on the
bottles containing her product, which as already stated, included not
only “Bangos Brand” but also the word “Soy” above the drawing of the
fish. So, on October 9, 1957, petitioner company filed its opposition
to respondent’s application. The case was submitted on a stipulation of
facts made verbally by them during the hearing. On May 16, 1958,
respondent Director of Patents rendered a decision dismissing
petitioner’s opposition to the application above-stated, which decision
is now on appeal.

The similarity and resemblance or lack of the same between the two
trademarks can be best appreciated by examining the same as they appear
in the record, particularly, the first page of the petition for review.
We have carefully and painstakingly examined the trademark or label of
petitioner, Exhibit B, and the trademark or label, Exhibit D, which
respondent Villapania sought to register, placed them side by side, and
compared them, and we note and observe a very close resemblance between
the two not only in the style of lettering of the words “Carp” and
“Brand” on Exhibit B and the words “Bangos Brand” on Exhibit D, not
only in the style of lettering, but also in the size of the letters, as
well as the word “Soy” and the Chinese characters underneath the said
three words, including the letters beneath the two fishes, all of which
words are correspondingly in the same color, to say nothing of the
similarity of the two fishes not only in their size but even in the
length and position of their respective tails and fins; so that we are
fully convinced of the intention and design of the respondent to
imitate as much as possible in her label, Exhibit D, that of
petitioner’s, Exhibit B, evidently to confuse, even to deceive
prospective purchasers of soy sauce and thereby taker advantage of and
appropriate to herself the goodwill previously acquired by petitioner
in the sale of its product. When two competing labels are placed
together for inspection and still they may confuse an ordinary person,
specially cooks and maids, who as a rule are the ones in charge of
buying such household article as soy sauce, there would be more
confusion and doubt when the two labels are not placed together for
comparison and the prospective purchaser is guided only by his memory
or recollection that the soy sauce he or she is planning to buy has as
its label the drawing of a fish with letters and Chinese characters,
written in a certain style of lettering and color. When, as in the
present case, one applies for the registration of a trademark or label
which is almost the same or very closely resembles one already used and
registered by another, the application should be rejected and dismissed
outright, even without any opposition on the part of the owner and user
of a previously registered label or trademark, this not only to avoid
confusion on the part of the public, but also to protect an already
used and registered trademark and an established goodwill. There should
be no halfway measures, as was done in this case by the ruling of the
examiner who directed the respondent to amend or modify the label or
trademark she sought to register by eliminating some portions thereof.
As a result, although the word “Soy” and the drawing of a fish were
eliminated, still, the word “Bangos” and the word “Brand” which are
similar to the style of lettering of the corresponding words in the
label, Exhibit B, of petitioner, could still create confusion or doubt
in the mind of prospective purchasers, to say nothing of the fact that
the words “Carp” and “Bangos” both indicate fish, and the additional
fact that both trademarks and labels refer to or advertize the same
product, namely, soy sauce.

In the case of Lim Hoa vs. Director of Patents, 101 Phil., 214; 52 Off. Gaz. (17) 7259, we had occasion to say the following:

“The danger of confusion in trademarks and brands
which are similar may not be so great in the case of commodities or
articles of relatively great value, such as, radio and television sets,
air conditioning units, machinery, etc., for the prospective buyer,
generally the head of the family or a businessman, before making the
purchase, reads the pamphlets and all literature available, describing
the article he is planning to buy, and perhaps even makes comparisons
with similar articles in the market. He is not likely to be deceived by
similarity in the trademarks because he makes a more or less thorough
study of the same and may even consult his friends about the relative
merit and performance of the article or machinery, as compared to
others also for sale. But in the sale of a food seasoning product a
kitchen article of everyday consumption, the circumstances are far
different. Said product is generally purchased by cooks and household
help, sometimes illiterate, who are guided by pictorial representations
and the sound of the word descriptive of said representation. The two
roosters appearing in the trademark of the applicant and the hen
appearing on the trademark of the oppositor, although of different
sexes, belong to the same family of the chicken, known as manok in all
the principal dialects of the Philippines, and when a cook or a
household-help or even a housewife buys a food seasoning product for
the kitchen, the brand of “Manok” or “Marca Manok” would most likely be
uppermost in her mind and would influence her in selecting the product,
regardless of whether the brand pictures a hen or a rooster or two
roosters. To her, they are all manok. Therein lies the confusion, even
deception. We do not see why applicant could not have stretched his
imagination even a little and extended his choice to other members of
the animal kingdom, as a brand to differentiate his product from
similar products in the market. * * *”

Why the respondent in the present case could not have selected as
the principal figure in her label some animal living on the surface of
the earth, like a dog, cat, monkey, etc., or an article or furniture,
like a table, chair, or if she was determined to select a creature
living in the sea, that of a crab, lobster, or octopus, is hard to
understand. She had to select fish, which as already stated, she
pictured in her label similar in size, shape and form as that appearing
in the already used and registered label of petitioner. The Director of
Patents should as much as possible discourage all attempts at imitation
of labels already used and registered, as already stated, to avoid
confusion, to protect the public from purchasing the wrong article or
brand and also to give protection to those who have established
goodwill, reputation and name in the manufacture and sale of their
products by means of a label of long standing and use and duly
registered.

Another circumstance against the registration of the trademark or
label of respondent is that she would appear not to have used the
amended or modified label she presented for registration, but continued
to use the original label or trademark which was refused registration
by the Director of Patents. This indicates not only her desire to
continue taking advantage of the goodwill acquired and established by
the petitioner, but it equally shows that she had not used the label or
trademark now being applied for by her, despite the fact that the law
requires at least two months previous use prior to application for
registration.^[1]

In view of the foregoing, the appealed decision is hereby reversed;
the opposition of petitioner to respondent’s application is hereby
sustained and respondent’s application for registration is denied, with
costs against respondent.

Paras, C. J., Bengzon, Bautista Angelo, Labrador, Concepcion, Reyes, J. B. L., Barrera, and Gutierrez David, JJ., concur.

Padilla, J., took no part.

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^[1] Sec. 2, Rep. Act No. 166, as amended by Rep. Act No. 865.