IP: Emerald Garment vs Ca; Mirpuri vs. CA
Emerald Garment vs CA
GR 100098
Facts:
HD Lee Co., a foreing corpo, seeks the cancellation of a patent in favor of Emerald Garment Manufacturing (domiciled in the Phil) for the trademark “Stylistic Mr. Lee,” which according to HD Lee Co. closely resembled its own trademark “Lee” and thus would cause confusion, mistake and deception to the purchasing public. The Director of Patents granted the cancellation on the ground that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark. The CA affirmed.
Issue: WON the trademark “Stylistic Mr. Lee” tends to mislead or confuse the public and constitutes an infringement of the trademark “Lee.”
Held: Negative for lack of adequate proof of actual use of its trademark in the Philippines prior to Emeralds use of its own mark and for failure to establish confusing similarity between said trademarks, HD Lee Co’s action for infringement must necessarily fail.
Ratio:
Emerald’s “Stylistic Mr. Lee” is not confusingly similar to private respondent's "LEE" trademark. Colorable imitation DOES NOT APPLY because:
1. Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in, among others:
a. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation; and
b. The average Filipino consumer generally buys his jeans by brand.
2. "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term.
3. After a meticulous study of the records, the SC observes that the Director of Patents and the Court of Appeals relied mainly on the registration certificates as proof of use by HD Lee Co of the trademark "LEE" which are not sufficient.
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Colorable imitation defined: "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.”
Mirpuri vs. CA
GR 114508
Facts:
Barbizon Corp (foreign corp) has adopted the trademark “Barbizon.” Thus, upon finding that Mirpuri (domiciled in the Phil) seeks to register the same trademark in the Philippines, Barbizon Corp filed its opposition. Barbizon Corp alleges its trademark is qualified as well-known and is therefore protected by the Convention of Paris for the Protection of Intellectual Property which the Philippines has bound to enforce. The Director of Patents rendered a decision giving due course to the patent application of Mirpuri. The CA, however, reversed this decision.
Issue: Whether or not 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: Affirmative. The Philippines and the United States of America have acceded to the WTO Agreement x x x Conformably, the State must reaffirm its commitment to the global community and take part in evolving a new international economic order at the dawn of the new millennium.
Thus, the first paragraph of Article 6bis of the Paris Convention is applicable in the instant case:
This Article governs protection of well-known trademarks. Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark of a person entitled to the benefits of the Convention, and used for identical or similar goods.
It is a self-executing provision and does not require legislative enactment to give it effect in the member country.
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Trademark in R.A. No. 8293, the Intellectual Property Code of the Philippines: defines as "any visible sign capable of distinguishing goods." In Philippine jurisprudence, the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.