FABERGE, INCORPORATED, PETITIONER, VS. THE INTERMEDIATE APPELLATE COURT AND CO BENG KAY, RESPONDENTS.

The Director of Patents authorized herein private respondent Co Beng
Kay to register the trademark “BRUTE” for the briefs manufactured and
sold by his Corporation in the domestic market vis-a-vis petitioner’s
opposition grounded on similarity of said trademark with petitioner’s own
symbol “BRUT” which it previously registered for after shave lotion,
shaving cream, deodorant, talcum powder, and toilet soap. Thereafter, respondent court, through
Justice Gopengco with Justices Patajo and Racela, Jr. concurring, was initially
persuaded by petitioner’s plea for reversal directed against the permission
granted by the Director of Patents, but the decision of the Second Special
Cases Division handed down on April 29, 1983 was later reconsidered in favor of
herein private respondent (pp. 46-54; pp. 34-36, Rollo).

Hence, the petition at bar assailing the action of respondent
court in affirming the ruling of the
Director of Patents (Page 7, Petition; Page 16, Rollo).

In essence, it appears that in the course of marketing
petitioner’s “BRUT” products and during the pendency of its application
for registration of the trademark “BRUT 33 and DEVICE” for anti?perspirant,
personal deodorant, cream shave, after shave/shower lotion, hair spray, and
hair shampoo (page 236, Rollo), respondent Co Beng Kay of Webengton Garments
Manufacturing applied for registration of the disputed emblem “BRUTE”
for briefs. Opposition raised by
petitioner anchored on similarity with its own symbol and irreparable injury to
the business reputation of the first user was to no avail. When the legal tussle was elevated to
respondent court, Justice Gopengco remarked that:

“Indeed, a look at the marks “BRUT,” “BRUT
33” and “BRUTE” shows that such marks are not only similar in
appearance but they are even similar in sound and in the style of
presentation. It is reasonable to
believe that this similarity is sufficient to cause confusion and even mistake
and deception in the buying public as to the origin or source of the goods
bearing such trademarks. It should be
considered that, although the mark “BRUTE” was applied for, only for
briefs, yet such product has the same outlet – such as department stores and
haberdashery stores in the Philippines – as the goods covered by the trademarks
“BRUT” and “BRUTE 33” so that such confusion, mistake or
deception is not unlikely to occur. The
argument of appellee, that in modern marketing, goods of similar use are
grouped in one section of the supermarket and thus it is unlikely that
cosmetics be mixed with textile or wearing apparel, is hardly convincing
enough, for a look at the modern department stores shows that merchandise
intended for the use of men are now placed in a section which is then labelled
“Men’s Accessories.” It is not unlikely, therefore, that in said
section, appellant’s products, which are cosmetics for men’s use, be placed
beside appellee’s product, and cause such confusion or mistake as to the source
of the goods displayed inthe section. To avoid this, the Director of Patents held:

“The marks KEYSTON (on shirts) and KEYSTONE (on shoes and
slippers), the latter having been previously registered are clearly similar in
sound and appearance that confusion or mistake, or deception among purchasers
as to origin and source of goods is likely to occur. Shirts and shoes are both wearing apparel and there is no gainsaying
the truth that these items are ordinarily displayed in the same manner and sold
through the same retail outlets such as department and haberdashery stores in
the Philippines.” (Ex-Parte Keystone Garment Manufacturing Co., Decision
No. 245 of the Director of Patents, January 25, 1963.)

It is also not disputed that on account of the considerable length
of time that appellant has marketed its products bearing the trademarks
“BRUT” and “BRUT 33,” and its maintenance of high quality
of its products through the years, appellant has earned and established immense
goodwill among its customers. We agree
with appellant that should appellee be allowed to use the trademark
“BRUTE” on the briefs manufactured by him, appellee would be cashing
in on the goodwill already established by appellant, because, as already stated
above, appellant’s cosmetics and appellee’s briefs are not entirely unrelated
since both are directed to the fashion trade and in the marketing process, they
may find themselves side by side in the “men’s Accessories Section”
of the market, thus easily leading the buying public to believe that such
briefs come from the same source as
appellant’s cosmetics, and be induced to buy said briefs, to the undue advantage
of appellee. Again, if after purchasing
such briefs, the public finds them to be of non- competitive quality, or not of
the high quality expected of appellant’s products, then appellant’s reputation
and goodwill will be ruined, to its damage and prejudice. Thus, for the protection of the goodwill
already established by a party, the Supreme Court held:

“When 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.” (Chuanchow Soy & Cannning Co.
vs. Dir. of Patents and Villapanta, 108 Phil. 833, 836.)

The test of confusing similarity which would preclude the
registration of a trademark 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, the law does not require that the
competing marks 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 be such that
there is a possibility or likelihood of the purchaser of the older brand
mistaking the newer brand for it. (Gopengco, Mercantile Law Compendium, 1983 ed., p. 684; Acoje Mining
Co., Inc. vs. Director of Patents, 38 SCRA 480).” (pp. 3-6, Decision; pp.
48-51, Rollo

On June 5, 1984, respondent’s Motion for Reconsideration merited
the nod of approval of the appellate court brought about by private
respondent’s suggestion that the controlling ruling is that laid down in Philippine
Refining Co., Inc. vs. Ng Sam (115 SCRA 472
[1982]), ESSO Standard Eastern, Inc. vs. Court
of Appeals (116 SCRA 336 [1982]); Hickok Manufacturing
Co., Inc. vs. CA (116 SCRA 387 [1982]), and Acoje
Mining Co., Inc. vs. Director of Patents
(38 SCRA 480 [1971], to the effect that the identical trademark can be used by
different manufacturers for products that are non-competing and unrelated. (pp. 34-36, Rollo)

Petitioner is of the impression that respondent court could not
have relied on the rulings of this Court in the ESSO and the PRC
cases when the original decision was reconsidered since respondent court
already expressed the opinion in the text of the previous discourse that the
facts in said cases “are not found in the case at bar” (Page 12,
Brief for the Petitioner, Page 202, Rollo). Petitioner likewise emphasizes American jurisprudential doctrines to the
effect that sale of cosmetics and wearing apparel under similar marks is likely
to cause confusion. Instead of applying
the ESSO, PRC and Hickok cases, petitioner continues to
asseverate, the rule as announced in Ang vs. Teodoro (74
Phil. 50 [1942]) as reiterated in Sta. Ana vs. Maliwat
and Evalle (24 SCRA (1968) 101) should be applied.

In addition, it seems that petitioner would want this Court to
appreciate petitioner’s alleged application for registration of the trademark
“BRUT 33 DEVICE” for briefs as an explicit proof that petitioner
intended to expand its mark ”BRUT” to other goods, following the
sentiment expressed by Justice J.B.L. Reyes in the Sta. Ana case
(supra, at page 1025) that relief is available where the Junior user’s
goods are not remote from any product that the senior user would be likely to
make or sell (Pages 26-27, Brief for the Petitioner).

Besides, petitioner insists that in view of the repeal of
Republic Act No. 166 (which advocated the related goods theory) by Republic Act
No. 666 which deleted the phrase found in the old law that the merchandise must
be of substantially the same descriptive properties, respondent Court should
have heeded the pronouncement in the Ang case that there can be unfair
competition even if the goods are noncompeting (supra, at page 54).

On the other hand, private respondent echoes the glaring
differences in physical appearance of its products with petitioner’s own goods
by stressing the observations of the Director of Patents on May 3, 1978:

“Considered in their entireties as depicted in the parties’
sample box and can containers, the involved trademarks are grossly different
in their overall appearance that even at a distance
a would­-be purchaser could easily distinguish what is BRUTE brief and what is
BRUT after shave lotion, lotion and the like. Opposer’s mark BRUT or BRUT 33, as shown in Exhibit “6”, is
predominantly colored green with a blue and white band at the middle portion of
the container. Also appearing therein
in bold letters is opposer’s name “FABERGE” and a notation
“Creme Shave”. On the other
hand, respondent’s mark as shown in Exh. “4-A” prominently displays
the representation of muscular man, underneath of which appears the trademark
BRUTE with a notation “Bikini Brief”. Equally visible at the other portions of respondent’s labels are
the pictorial representation of “briefs” which unmistakably suggest
that the product contained in the box container is that of a man’s brief. The fact therefore is obvious that the goods
upon which the conflicting trademarks are used are clearly different and the
intended purpose of such goods are likewise not the same. Accordingly, 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 instead opposer’s BRUT after shave lotion or
deodorant.

“Additionally, the meaning or connotation of the bare word
marks of opposer, BRUT, and BRUTE of respondent, are clearly different and not
likely to be confused with each other. BRUT simply means “dry”, and also, “to browse”;
while BRUTE means “ferocious, sensual”, and in Latin, it signifies
“heavy”. Gleaned from the
respective meanings of the two marks in question, they both suggest the
resultant effects of the application of the products, upon which the
said trademarks are employed, which fact all the more renders confusion or
deception of purchasers a remote possibility.”

The products covered by petitioner’s trademarks “BRUT”
and “BRUT 33 & Device” enjoying its so-called
“goodwill” are after-shave lotion, shaving cream, deodorant, talcum
powder, toilet soap, anti­-perspirant, personal deodorant, cream shave, after
shave/shower lotion, hair spray and hair shampoo. Petitioner has never applied for, registered nor used its
trademarks for briefs in commerce or trade in the Philippines. Private respondent seeks to register his
trademark “BRUTE” only for briefs which is a product non?competitive
to and entirely unrelated with petitioner’s aforementioned products.” (pp.
3-4, Brief for the Respondents)

in order to impress upon Us that the
controlling norm is the comparison of the trademarks in their entirety as they
appear in their labels to determine whether there is confusing similarity.

Moreover, private respondent asserts that briefs and cosmetics do
not belong to the same class nor do they have the same descriptive properties
such that the use of a trademark on one’s goods does not prevent the adoption
and use of the same trademark by others on unrelated articles of a different
nature in line with the ruling of this Court in Hickok Manufacturing
Co., Inc. vs. Court of Appeals (116
SCRA 387 [1982]). Furthermore,
respondent belies petitioner’s claim that the latter had applied for
registration of the trademark “BRUT 33 DEVICE” for briefs
since the documents on file with the Director of Patents attached to
respondent’s legal Brief does not include the so-called application by
petitioner of the alleged trademark for briefs.

To the legal query of whether private respondent may appropriate
the trademark “BRUTE” for the briefs it manufactures and sells to the
public albeit petitioner had previously registered the symbol “BRUT”
and “BRUT 33” for its own line of items, it is but apropos to
shift Our attention to the pertinent provisions of the new Civil Code vis-a-vis
Republic Act No. 166, as amended, the special law patterned after the United
States Trademark Act of 1946 (Director of Patents, Circular Release No. 36, 45
O.G. 3704; Martin, Commentaries and Jurisprudence on the Philippine
Commercial Laws, 1986 Revised Edition, Volume 2, page 489), thus:

“ART. 520. A
trade-mark or trade-name duly registered in the proper government bureau or
office is owned by and pertains to the person, corporation, or firm registering
the same, subject to the provisions of special laws.

“ART. 521. The goodwill
of a business is property, and may be transferred together with the right to
use the name under which the business is conducted.

“ART. 522. Trade-marks
and trade-names are governed by special laws.”

x x x

x x x

x x x

“SECTION 2. What are registrable.
– Trade-marks, trade-names, and service-marks owned by persons, corporations,
partnerships or associations domiciled in the Philippines and by persons,
corporations, partnerships or associations domiciled in any foreign country may
be registered in accordance with the provisions of this Act; Provided, That
said trade-marks, trade-names, or service­-marks, are actually in use in
commerce and services not less than two months in the Philippines before the
time the applications for registration are filed: And provided, further, That the country of which the applicant
for registration is a citizen grants by law substantially similar privileges to
citizens of the Philippines, and such fact is officially certified, with a
certified true copy of the foreign law translated into the English language, by
the government of the foreign country to the Government of the Republic of the Philippines. (As amended by Rep. Act No. 865).

“SECTION 2-A. Ownership of trade?marks, trade-names and service-marks; how acquired.
– Anyone who lawfully produces or deals in merchandise of any kind or who
engages in any lawful business or who renders any lawful service in commerce,
by actual use thereof in manufacture or trade, in business, and in the service
rendered, may appropriate to his exclusive use a trade-mark, a trade-name, or a
service-mark not so appropriated by another, to distinguish his merchandise,
business or service from the merchandise, business or services of others. The ownership or possession of a trade-mark,
trade-name, service-mark, heretofore or hereafter appropriated, as in this
section provided, shall be recognized and protected in the same manner and to
the same extent as are other property rights known to the law. (As inserted by Sec. 1 of Rep. Act 638).

x x x

x x x

x x x

“SECTION 4. Registration of trade­-marks, trade-names and service-marks on the
principal register. –

x x x The owner of trademark, trade?name or service-mark used
to distinguish his goods, business or services from the goods, business or
services of others shall have the right to register the same on the principal
register, unless it:

x x x

x x x

x x x

“4(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.

x x x

x x x

x x x

“SECTION 11. Issuance
and contents of the certificate. – Certificates of registration shall be issued
in the name of the Republic of the Philippines under the seal of the Patent
Office, and shall be signed by the Director, and a record thereof together with
a copy of the specimen or facsimile and the statement of the applicant, shall
be kept in books for that purpose. The
certificate shall reproduce the specimen or facsimile of the mark or
trade-name, contain the statement of the applicant and state that the mark or
trade-name is registered under this Act, the date of the first use in commerce
or business, the particular goods or services
for which it is registered, the number and
date of the registration, the term thereof, the date on which the application
for registration was received in the Patent Office, a statement of the
requirement that in order to maintain the registration, periodical affidavits
of use within the specified times hereinafter in section twelve provided, shall
be filed, and such other data as the rules and regulations may from time to
time prescribe.

x x x

x x x

x x x

“SECTION 20. Certificate of registration prima facie evidence validity.
– A certificate of registration of a mark or trade-name shall be 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, subject to any conditions and limitations
stated therein.”

Having thus reviewed the laws applicable to the case before Us,
it is not difficult to discern from the foregoing statutory enactments that
private respondent may be permitted to register the trademark “BRUTE”
for briefs produced by it notwithstanding petitioner’s vehement protestations
of unfair dealings in marketing its own set of items which are limited to: after-shave lotion, shaving cream,
deodorant, talcum powder and toilet soap. 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. This basic
point is perhaps the unwritten rationale of Justice Escolin in Philippine
Refining Co., Inc. vs. Ng Lam
(115 SCRA 472 [1982]), when he stressed the principle enunciated by the United
States Supreme Court in American Foundries vs. Robertson (269 U.S. 372, 381, 70
L ed 317, 46 Sct. 160) that one who has adopted and used a trademark on his
goods does not prevent the adoption and use of the same trademark by others for
products which are of a different description. Verily, this Court had the occasion to observe in the 1966 case of George
W. Luft Co., Inc. vs. Ngo Guan
(18 SCRA 944 [1966]) that no serious objection was posed by the petitioner
therein since the applicant utilized the emblem “Tango” for no other
product than hair pomade in which petitioner does not deal.

This brings Us back to the incidental issue raised by petitioner
which private respondent sought to belie as regards petitioner’s alleged
expansion of its business. It may be
recalled that petitioner claimed that it has a pending application for
registration of the emblem “BRUT 33” for briefs (page 25, Brief for
the Petitioner; page 202, Rollo) to impress upon Us the Solomonic wisdom
imparted by Justice JBL Reyes in Sta. Ana vs. Maliwat
(24 SCRA 1018 [1968]), to the effect that dissimilarity of goods will not
preclude relief if the junior user’s goods are not remote from any other
product which the first user would be likely to make or sell (vide, at
page 1025). Commenting on the former
provision of the Trademark Law now embodied substantially under Section 4(d) of
Republic Act No. 166, as amended, the erudite jurist opined that the law in
point “does not require that the articles of manufacture of the previous
user and late user of the mark should possess the same descriptive properties
or should fall into the same categories as to bar the latter from registering
his mark in the principal register.” (supra at page 1026).

Yet, it is equally true that as aforesaid, the protective mantle
of the Trademark Law extends only to the goods used by the first user as
specified in the certificate of registration following the clear message
conveyed by Section 20.

How do We now reconcile the apparent conflict between Section
4(d) which was relied upon by Justice JBL Reyes in the Sta. Ana
case and Section 20? It would seem that
Section 4(d) does not require that the goods manufactured by the second user be
related to the goods produced by the senior user while Section 20 limits the
exclusive right of the senior user only to those goods specified in the
certificate of registration. But the
rule has been laid down that the clause which comes later shall be given
paramount significance over an anterior proviso upon the presumption that it
expresses the latest and dominant purpose. (Graham Paper Co. vs. National Newspapers
Asso. (Mo. App.) 193 S.W. 1003; Barnett vs. Merchant’s
L. Ins. Co., 87 Okl. 42; State ex nel Atty.
Gen. vs. Toledo, 26 N.E., p. 1061; cited by Martin,
Statutory Construction Sixth ed., 1980 Reprinted, p. 144). It ineluctably follows that Section 20 is controlling
and, therefore, private respondent can appropriate its symbol for the briefs it
manufactures because as aptly remarked by Justice Sanchez in Sterling Products
International Inc., vs. Farbenfabriken Bayer
(27 SCRA 1214 [1969]):

“Really, if the certificate of registration were to be deemed
as including goods not specified therein, then a situation may arise whereby an
applicant may be tempted to register a trademark on any and all goods which his
mind may conceive even if he had never intended to use the trademark for the
said goods. We believe that such
omnibus registration is not contemplated by our Trademark Law.” (1226)

Withal, judging from the physical attributes of petitioner’s and
private respondent’s products, there can be no doubt that confusion or the
likelihood of deception to the average purchaser is unlikely since the goods
are non-competing and unrelated. In
upholding registration of the brand “ESSO for cigarettes inspite previous
appropriation of the same mark “ESSO” for petroleum products, then
Justice, later Chief Justice Teehankee in Esso Standard Eastern,
Inc. vs. Court of Appeals
(116 SCRA 336 [1982] said:

“The Court affirms on the basis of controlling doctrine the
appealed decision of the Court of Appeals reversing that of the Court of First
Instance of Manila and dismissing the complaint filed by herein petitioner
against private respondent for trade infringement for using petitioner’s
trademark ESSO, since it clearly appears that the goods on which the trademark
ESSO is used by respondent is non-competing and entirely unrelated to the
products of petitioner so that there is no likelihood of confusion or deception
on the part of the purchasing public as to the origin or source of the goods.

x x x

x x x

x x x

“The trial court, relying on the old cases of Ang vs. Teodoro
and Arce & Sons, Inc. vs. Selecta Biscuit Company, referring to related
products, decided in favor of petitioner and ruled that respondent was guilty
of infringement of trademark.

“On appeal, respondent Court of Appeals found that there was
no trademark infringement and dismissed the complaint. Reconsideration of the decision having been
denied, petitioner appealed to this court by way of certiorari to
reverse the decision of the Court of Appeals and to reinstate the decision of
the Court of First Instance of Manila. The Court finds no ground for granting the petition.

“The law defines infringement as the use without consent of
the trademark owner of any “reproduction, counterfeit, copy or colorable
imitation of any registered mark or tradename in connection with the sale,
offering for sale, or advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or reproduce, counterfeit, copy or
coorably imitate any such mark or tradename and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services.” Implicit in this
definition is the concept that the goods must be so related that there is a
likelihood either of confusion of goods or business. But likelihood of confusion is a relative concept; to be
determined only according to the particular, and sometimes peculiar,
circumstances of each case. It is
unquestionably true that, as stated in Coburn vs. Puritan Mills, Inc. “In
trademark cases, even more than in other litigation, precedent must be studied
in the light of the facts of the particular case.”

“It is undisputed that the goods on which petitioner uses the
trademark ESSO, petroleum products, and the product of respondent, cigarettes,
are non-competing. But as to whether
trademark infringement exists depends for the most part upon whether or not the
goods are so related that the public may be, or is actually, deceived and misled
that they came from the same maker or manufacturer. For non-competing goods may be those which, though they are not
in actual competition, are so related to each other that it might reasonably be
assumed that they originate from one manufacturer. Non-competing goods may also be those which, being entirely
unrelated, could not reasonably be assumed to have a common source. In the former case of related goods,
confusion of business could arise out of the use of similar marks; in the
latter case of non-related goods, it could not. The vast majority of courts today follow the modern theory or
concept of “related goods” which the Court has likewise adopted and
uniformly recognized and applied.

“Goods are related when they belong to the same class or have
the same descriptive properties; when they possess the same physical attributes
or essential characteristics with reference to their form, composition, texture
or quality.

“Thus, in Acoje Mining Co., Inc. vs. Director of Patents, the
Court, through now Chief Justice Fernando, reversed the patent director’s
decision on the question of “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?” and
ordered the granting of petitioner’s application for registration ruling that
“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”
and “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.”

“By the same token, in the recent case of Philippine Refining
Co., Inc. v. Ng Sam and Director of Patents, the Court upheld the patent
director’s registration of the same trademark CAMIA for therein respondent’s
product of ham notwithstanding its already being used by therein petitioner for
a wide range of products: lard, butter,
cooking oil, abrasive detergents, polishing materials and soap of all
kinds. The Court, after noting that the
same CAMIA trademark had been registered by two other companies, Everbright
Development Company and F.E. Zuellig, Inc. for their respective products of
thread and yarn (for the former) and textiles, embroideries and laces (for the
latter) ruled that “while ham and some of the products of petitioner are
classifed under Class 47 (Foods and Ingredients of Food), this alone cannot
serve as the decisive factor in the resolution of whether or not they are
related goods. Emphasis should be on
the similarity of the products involved and not on the arbitrary classification
or general description of their properties or characteristics.” The Court,
therefore, concluded that “In fine, We hold that the businesses of the
parties are noncompetitive and their products so unrelated that the use of
identical trademarks is not likely to give rise to confusion, much less cause
damage to petitioner.”

“In the situation before us, the goods are obviously different
from each other – with “absolutely no iota of similitude” as stressed
in respondent court’s judgment. They
are so foreign to each other as to make it unlikely that purchasers would think
that petitioner is the manufacturer of respondent’s goods. The mere fact that one person has adopted
and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others on unrelated articles of a different kind.

“Petitioner uses the trademark ESSO and holds certificate of
registration of the trademark for petroleum products, including aviation
gasoline, grease, cigarette lighter fluid and other various products such as
plastics, chemicals, synthetics, gasoline solvents, kerosene, automotive and
industrial fuel, bunker fuel, lubricating oil, fertilizers, gas, alcohol,
insecticides and the “ESSO Gasul” burner, while respondent’s business
is solely for the manufacture and sale of the unrelated product of
cigarettes. The public knows too well
that petitioner deals solely with petroleum products that there is no
possibility that cigarettes with ESSO brand will be associated with whatever
good name petitioner’s ESSO trademark may have generated. Although petitioner’s products are numerous,
they are of the same class or line of merchandise which are non-competing with
respondent’s product of cigarettes, which as pointed out in the appealed
judgment is beyond petitioner’s “zone of potential or natural and logical
expansion.” When a trademark is used by a party for a product in which the
other party does not deal, the use of the same trademark on the latter’s
product cannot be validly objected to.

x x x

x x x

x x x

“Respondent court correctly rule that considering the general
appearances of each mark as a whole, the possibility of any confusion is
unlikely. A comparison of the labels of
the samples of the goods submitted by the parties shows a great many
differences on the trademarks used. As
pointed out by respondent court in its appealed decision, “(A) witness for
the Plaintiff, Mr. Buhay, admitted that the color of the ‘ESSO’ used by the
plaintiff for the oval design where the blue word ESSO is contained is the
distinct and unique kind of blue. In
his answer to the trial court’s question, Mr. Buhay informed the court that the
plaintiff never used its trademark on any product where the combination of
colors is similar to the label of the Esso cigarettes,” and “Another
witness for the plaintiff, Mr. Tengco, testified that generally, the
plaintiff’s trademark comes all in either red, white, blue or any combination
of the three colors. It is to be
pointed out that not even a shade of these colors appears on the trademark of
the appellant’s cigarette. The only
color that the appellant uses in its trademark is green.” (339; 341-346)

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’s bid to persuade Us into accepting the doctrines
announced in the aforementioned cases of Sta.
Ana vs. Maliwat and Ang vs. Teodoro
hardly inspire belief. In Sta Ana,
it was admitted that the marks were confusingly similar which is not so in the
case at bar. In the 1942 case of Ang
vs. Teodoro, Justice Ozaeta noted that pants and shirts are
similar to shoes and slippers within the meaning of Sections 3, 7, 11, 13 and
20 of Act No. 666 which was the old Trademark Law enacted on March 6, 1903
prior to the present law. Obviously,
the conclusion reached by the ponente in the Ang case may not now be
utilized by analogy to the case at bar due to variance in the factual and legal
milieu. Neither can We agree with
petitioner that the ruling in La Chemise Lacoste, S.A. vs. Fernandez (129 SCRA 373
[1984]) is applicable to the
controversy at hand. The case adverted to
by petitioner involved the same mark for the same class of shirts manufactured
by the parties therein.

It would appear that as a consequence of this discourse, there
still remains hanging in mid-air the unanswered puzzle as to why an aspiring
commercial enterprise, given the infinite choices available to it of names for
the intended product, would select a trademark or tradename which somewhat
resembles an existing emblem that had established goodwill. Our opinion hereinbefore expressed could
even open the floodgates to similar incursions in the future when We
interpreted Section 20 of the Trademark Law as an implicit permission to a
manufacturer to venture into the production of goods and allow that producer to
appropriate the brand name of the senior registrant on goods other than those
stated in the certificate of registration.

But these nagging and disturbing points cannot win the day for
petitioner, although We must hasten to add that in the final denouement, Our
apprehensions in this regard are not entirely irreversible since Section 4(d)
and 20 of the law in question may still be subjected to legislative
modification in order to protect the original user of the symbol.

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

SO ORDERED.

Gutierrez, Jr., (Chairman), Bidin, Davide, Jr., and Romero, JJ., concur.