Mirpuri v.

CA

Facts: Lolita Escober, in 1970, filed an application with the Bureau of Patents for the registration of the trademark “Barbizon” for use in horsiers and ladies
undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of New York, USA,
opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said trademark will cause
damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course to the application. Escobar later assigned all his rights and interest
over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law.
Due to this failure, the Bureau cancelled Escobar’s certificate of registration. In 1981, Escobar and petitioner separately filed this application for registration of the
same trademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it
is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry
and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue: WON the Convention of Paris for the Protection of Intellectual Property affords protection to a foreign corporation against a Philippine applicant for the
registration of a similar trademark.

Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the
trademark in the US and other countries, and the international recognition of the trademark established by extensive use and advertisement of respondents products
for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised
in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims originator of the word and
symbol “Barbizon”, as the first and registered user of the mark attached to its products which have been sold and advertised would arise for a considerable number
of years prior to petitioner’s first application. Indeed, these are substantial allegations that raised new issues and necessarily gave respondents a new cause of
action.

Moreover, the cancellation of petitioner’s certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to
oppose the second application.

It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each
other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others.
The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the
actions are based on different statutes.

There are 3 distinct function of trademarks: Modern authorities on trademark law view trademarks as performing three distinct functions: (1) they indicate origin
or ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the
articles they symbolize.

Today, the trademark is not merely a symbol of origin and goodwill; it is often the most effective agent for the actual creation and protection of goodwill. It
imprints upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfaction. In other words, the mark actually
sells the goods. The mark has become the "silent salesman," the conduit through which direct contact between the trademark owner and the consumer is
assured. It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it
refers.

Sterling Products v. Farbenfabriken Bayer

Facts: The Bayer Cross in circle “trademark was registered in Germany in 1904 to Farbenfabriken vorm. Friedr. Bayer (FFB), successor to the original Friedr.
Bauyer et. Comp., and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2). The “Bayer, and “Bayer Cross in circle” trademarks were acquired by
sterling Drug Inc. when it acquired FFB’s subsidiary Bayer Co. of New York as a result of the sequestration of its assets by the US Alien Property Custodian
during World War I.

Bayer products have been known in Philippines by the close of the 19th century. Sterling Drugs, Inc., however, owns the trademarks “Bayer” in relation to
medicine. FBA attempted to register its chemical products with the “Bayer Cross in circle” trademarks. Sterling Products International and FBA seek to exclude
each other from use of the trademarks in the Philippines. The trial court sustained SPI’s right to use the Bayer trademark for medicines and directed FBA to add
distinctive word(s) in their mark to indicate their products come from Germany.” Both appealed.

Issue: Whether SPI’s ownership of the trademarks extends to products not related to medicine.

Held: No. SPI’s certificates of registration as to the Bayer trademarks registered in the Philippines cover medicines only. Nothing in the certificates include
chemicals or insecticides. SPI thus may not claim “first use” of the trademarks prior to the registrations thereof on any product other than medicines. For if
otherwise held, a situation may arise whereby an applicant may be tempte3d 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. Omnibus registration is not contemplated by the Trademark Law. The net result of the decision is that
SPI may hold on its Bayer trademark for medicines and FBA may continue using the same trademarks for insecticide and other chemicals, not medicine.

The formula fashioned by the lower court avoids the mischief of confusion of origin, and does not visit FBA with reprobation and condemnation. A statement that
its product came from Germany anyhow is but a statement of fact.

McDonald’s v. Macjoy Fastfood Corp.

Facts: Macjoy, a corporation selling fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks in Cebu City filed
with the BPTT-IPO an application for the registration of the trademark “MACJOY & DEVICE”. McDonald’s Corporation, a corporation organized under the laws
of Delaware, USA opposed against the respondent’s application claiming that such trademark so resembles its corporate logo (Golden Arches) design and its
McDonald’s marks such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods
originated from the same source or origin. Macjoy on the other hand averred that the it has used the mark “MACJOY” for the past many years in good faith and
has spent considerable sums of money for extensive promotions x x x.

The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the Macjoy and McDonald’s marks lead to the conclusion that
there is confusing similarity between them x x x. Therefore, Macjoy’s application was denied.
Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling over the case, actually used the holistic test (which is a
test commonly used in infringement cases). The holistic test looks upon the visual comparisons between the two trademarks. The justifications are the following:
1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke gothic;
2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides, while the word “McDonald’s”
comes with an arches “M” in gold colors, and absolutely without any picture of a chicken;
3. The word “MacJoy” is set in deep pink and white color scheme while the word “McDonald’s” is written in red, yellow, and black color combination;
4. The facade of the respective stores of the parties, are entirely different.

Issue: WON there is a confusing similarity between the McDonald’s marks of the petitioner and the respondent’s “MACJOY & DEVICE” trademark when it
applied to classes 29 ad 30 of the International Classification of Goods.

Ruling: Yes. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception while the holistic test requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Under the latter test, a comparison of the words is not the only determinant
factor.

The IPO, though they correctly used the dominancy, they should have taken more considerations. In recent cases, the SC has consistently used and applied the
dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. The CA, while seemingly applying the dominancy
test, in fact actually applied the holistic test.

Applying the dominancy test to the instant case, the Court both marks are confusingly similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks. The predominant features such as the "M," "Mc," and "Mac" appearing in both easily attract the attention of would-be
customers. Most importantly, both trademarks are used in the sale of fastfood products. The dominancy test not only looks at the visual comparisons between two
trademarks but also the aural impressions created by the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices,
quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy” marks are confusingly similar with each
other such that an ordinary purchaser can conclude an association or relation between the marks. To begin with, both marks use the corporate “M” design logo and
the prefixes “Mc” and/or “Mac” as dominant features. The first letter “M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in
which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix “Mc,” an abbreviation of “Mac,” which visually and aurally
catches the attention of the consuming public. Verily, the word “MACJOY” attracts attention the same way as did “McDonalds,” “MacFries,” “McSpaghetti,”
“McDo,” “Big Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used
in the sale of fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark was registered in 1977 while respondent only in 1991.

Tanada v. Angara
Facts: Petitioners prayed for the nullification, on constitutional grounds, of the concurrence of the Philippine Senate in the ratification by the President of the
Philippines of the Agreement Establishing the World Trade Organization and for the prohibition of its implementation and enforcement through the release and
utilization of public funds, the assignment of public officials and employees, as well as the use of government properties and resources by respondent-heads of
various executive offices concerned therewith.

They contended that WTO agreement violates the mandate of the 1987 Constitution to “develop a self-reliant and independent national economy effectively
controlled by Filipinos to give preference to qualified Filipinos and to promote the preferential use of Filipino labor, domestic materials and locally produced
goods” as (1) the WTO requires the Philippines “to place nationals and products of member-countries on the same footing as Filipinos and local products” and (2)
that the WTO “intrudes, limits and/or impairs” the constitutional powers of both Congress and the Supreme Court.

Issue: WON provisions of the Agreement Establishing the World Trade Organization unduly limit, restrict and impair Philippine sovereignty specifically the
legislative power which, under Sec. 2, Article VI, 1987 Philippine Constitution is ‘vested in the Congress of the Philippines

Held: No, the WTO agreement does not unduly limit, restrict, and impair the Philippine sovereignty, particularly the legislative power granted by the Philippine
Constitution. The Senate was acting in the proper manner when it concurred with the President’s ratification of the agreement.

While sovereignty has traditionally been deemed absolute and all-encompassing on the domestic level, it is however subject to restrictions and limitations
voluntarily agreed to by the Philippines, expressly or impliedly, as a member of the family of nations. Unquestionably, the Constitution did not envision a hermit-
type isolation of the country from the rest of the world. In its Declaration of Principles and State Policies, the Constitution “adopts the generally accepted
principles of international law as part of the law of the land, and adheres to the policy of peace, equality, justice, freedom, cooperation and amity, with all nations.”
By the doctrine of incorporation, the country is bound by generally accepted principles of international law, which are considered to be automatically part of our
own laws. One of the oldest and most fundamental rules in international law is pacta sunt servanda — international agreements must be performed in good faith.
“A treaty engagement is not a mere moral obligation but creates a legally binding obligation on the parties. A state which has contracted valid international
obligations is bound to make in its legislations such modifications as may be necessary to ensure the fulfillment of the obligations undertaken.”

By their inherent nature, treaties really limit or restrict the absoluteness of sovereignty. By their voluntary act, nations may surrender some aspects of their state
power in exchange for greater benefits granted by or derived from a convention or pact. After all, states, like individuals, live with coequals, and in pursuit of
mutually covenanted objectives and benefits, they also commonly agree to limit the exercise of their otherwise absolute rights. Thus, treaties have been used to
record agreements between States concerning such widely diverse matters as, for example, the lease of naval bases, the sale or cession of territory, the termination
of war, the regulation of conduct of hostilities, the formation of alliances, the regulation of commercial relations, the settling of claims, the laying down of rules
governing conduct in peace and the establishment of international organizations. The sovereignty of a state therefore cannot in fact and in reality be considered
absolute. Certain restrictions enter into the picture: (1) limitations imposed by the very nature of membership in the family of nations and (2) limitations imposed
by treaty stipulations.

The WTO reliance on “most favored nation,” “national treatment,” and “trade without discrimination” cannot be struck down as unconstitutional as in fact they are
rules of equality and reciprocity that apply to all WTO members. Aside from envisioning a trade policy based on “equality and reciprocity,” the fundamental law
encourages industries that are “competitive in both domestic and foreign markets,” thereby demonstrating a clear policy against a sheltered domestic trade
environment, but one in favor of the gradual development of robust industries that can compete with the best in the foreign markets. Indeed, Filipino managers and
Filipino enterprises have shown capability and tenacity to compete internationally. And given a free trade environment, Filipino entrepreneurs and managers in
Hong Kong have demonstrated the Filipino capacity to grow and to prosper against the best offered under a policy of laissez faire. Petition is dismissed for lack of
merit.