G.R. No. L-44707 August 31, 1982 'POSITIVELY FINER' in light gold.

In the
trademark for underwear (Exhibit 'R'), the word
HICKOK MANUFACTURING CO., INC., petitioner, 'HICKOK' is also in red with white background in
vs. the middle of two branches of laurel in dark gold
COURT OF APPEALS ** and SANTOS LIM BUN with similar ribbons and the words 'POSITIVELY
LIONG, respondents. FINER' in dark gold. And in the trademark for
briefs (Exhibit 'S'), the word 'HICKOK' is in white
TEEHANKEE, J.: but with red background in the middle of two
branches of laurel, the leaves being in dark gold
with white edges, and with similar ribbon and
The Court affirms on the strength of controlling doctrine as
words 'POSITIVELY FINER' in dark gold. In
reaffirmed in the companion case of Esso Standard Eastern Inc.
contrast, in respondent-appellant's trademark
vs. Court of Appeals  1 promulgated also on this date and the
(Exhibit 'J'), the word 'HICKOK' is in white with
recent case of Philippine Refining Co., Inc. vs. Ng Sam and
gold background between the two branches of
Director of Parents  2 the appealed decision of the Court of
laurel in red, with the word 'SHOES' also in red
Appeals reversing the patent director's decision and instead
below the word 'HICKOK'.ït¢@lFº The ribbon is in
dismissing petitioner's petition to cancel private respondent's
red with the words 'QUALITY AT YOUR FEET,'
registration of the trademark of HICKOK for its Marikina shoes as
likewise in red.
against petitioner's earlier registration of the same trademark for
its other non-competing products.
While the law does not require that the competing
trademarks be Identical, the two marks must be
On the basis of the applicable reasons and considerations
considered in their entirety, as they appear in the
extensively set forth in the above-cited controlling precedents and
respective labels, in relation to the goods to which
the leading case of Acoje Mining Co., Inc. vs. Director of
they are attached.
Patents  3 on which the appellate court anchored its decision at
bar, said decision must stand affirmed, as follows: 1äwphï1.ñët
The case of H.E. Heacock Co. vs. American
Trading Co., 56 Phil. 763, cited by petitioner -
An examination of the trademark of petitioner-
appellee, is hardly applicable here, because the
appellee and that of registrant-appellant
defendant in that case imported and sold
convinces us that there is a difference in the
merchandise which are very similar to, and
design and the coloring of, as well as in the words
precisely of the same designs as, that imported
on the ribbons, the two trademarks.
and sold by the plaintiff. ...
In petitioner-appellee's trademark for
In the recent case of Acoje Mining Co., Inc. vs.
handkerchiefs (Exhibit 'Q'), the word 'HICKOK' is
Director of Patents, 38 SCRA 480, 482-483, the
in red with white background in the middle of two
Supreme Court stated
branches of laurel in light gold. At the lower part
thereof is a ribbon on which are the words
Can it be said then that petitioner's From the statements of the Supreme Court in the
application would be likely to two cases aforementioned, we gather that there
cause confusion or mistake on the must be not only resemblance between the
part of the buying public? The trademark of the plaintiff and that of the
answer should be in the negative. defendant, but also similarity of the goods to
It does not defy common sense to which the two trademarks are respectively
assert that a purchaser would be attached.
cognizant of the product he is
buying. There is quite a difference Since in this case the trademark of petitioner-
between soy sauce and edible oil. appellee is used in the sale of leather wallets, key
If one is in the market for the cases, money folds made of leather, belts, men's
former, he is not likely to purchase briefs, neckties, handkerchiefs and men's socks,
the latter just because on the and the trademark of registrant-appellant is used
trademark LOTUS. Even on the in the sale of shoes, which have different
rare occasion that a mistake does channels of trade, the Director of Patents, as in
occur, it can easily be rectified. the case of Acoje Mining Co., Inc. vs. Director of
Moreover, there is no denying that Patents, supra, 'ought to have reached a different
the possibility of confusion is conclusion.
remote considering petitioner's
trademark being in yellow and red It is established doctrine, as held in the above-cited cases, that
while that of the Philippine "emphasis should be on the similarity of the products involved
Refining Company being in green and not on the arbitrary classification or general description of
and yellow, and the much smaller their properties or characteristics" 4 and that "the mere fact that
size of petitioner's trademark. one person has adopted and used a trademark on his goods
When regard is had for the does not prevent the adoption and use of the same trademark by
principle that the two trademarks others on unrelated articles of a different kind." 5 Taking into
in their entirety as they appear in account the facts of record that petitioner, a foreign corporation
their respective labels should be registered the trademark for its diverse articles of men's wear
considered in relation to the goods such as wallets, belts and men's briefs which are all
advertised before registration manufactured here in the Philippines by a licensee Quality
could be denied, the conclusion is House, Inc. (which pays a royalty of 1-1/2 % of the annual net
inescapable that respondent sales) but are so labelled as to give the misimpression that the
Director ought to have reached a said goods are of foreign (stateside) manufacture and that
different conclusion. Petitioner has respondent secured its trademark registration exclusively for
successfully made out a case for shoes (which neither petitioner nor the licensee ever
registration. manufactured or traded in) and which are clearly labelled in block
letters as "Made in Marikina, Rizal, Philippines," no error can be
attributed to the appellate court in upholding respondent's
registration of the same trademark for his unrelated and non-
competing product of Marikina shoes. 6

ACCORDINGLY, the petition is dismissed and the appealed