Prosource International, Inc

8/13/2019 Prosource International, Inc

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G.R. No. 180073

November 25, 2009


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Horphag Research Management SA is acorporation duly organized and existing

under the laws of Switzerland and the ownerof trademark PYCNOGENOL, a foodsupplement sold and distributed by ZuelligPharma Corporation.


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Horphag later discovered that petitionerProsource International, Inc. was also

distributing a similar food supplement usingthe mark PCO-GENOLS since 1996.Thisprompted respondent to demand thatpetitioner cease and desist from using theaforesaid mark


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Without notifying respondent, petitionerdiscontinued the use of, and withdrew from

the market, the products under the namePCO-GENOLS as of June 19, 2000. It,likewise, changed its mark from PCO-GENOLS to PCO-PLUS.


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1. Defendant [petitioner] is a corporation dulyorganized and existing under the laws of theRepublic of the Philippines with businessaddress at No. 7 Annapolis Street, Greenhills,San Juan, Metro Manila;2. The trademark PYCNOGENOL of the plaintiff

is duly registered with the Intellectual PropertyOffice but not with the Bureau of Food and Drug(BFAD).


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3. The defendants product PCO-GENOLS is dulyregistered with the BFAD but not with theIntellectual Property Office (IPO).4. The defendant corporation discontinued theuse of and had withdrawn from the market theproducts under the name of PCO-GENOLS as of

June 19, 2000, with its trademark changed fromPCO-GENOLS to PCO-PLUS.5. Plaintiff corporation sent a demand letter tothe defendant dated 02 June 2000


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1. If Prosource infringed the trademark ofHorphag; and

2. Is the companys respective trademarksPYCNOGENOLS to PCO-GENOL,confusingly similar with one another?


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The [petitioners] mark PCO-GENOLS,nevertheless, when the two words arepronounced, the sound effects areconfusingly similar not to mention that theyare both described by their manufacturers asa food supplement and thus, identified as

such by their public consumers.


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And although there were dissimilarities in thetrademark due to the type of letters used aswell as the size, color and design employedon their individual packages/bottles, still theclose relationship of the competing productsname in sounds as they were pronounced,

clearly indicates that purchasers could bemisled into believing that they are the sameand/or originates from a common source andmanufacturer.


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The elements of infringement under R.A. No. 8293:

(4) The use or application of the infringing mark or trade

name is likely to cause confusion or mistake or to deceivepurchasers or others as to the goods or servicesthemselves or as to the source or origin of such goods orservices or the identity of such business; and

(5) It is without the consent of the trademark or tradename owner or the assignee thereof


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The elements of infringement under RA 166

(a) A trademark actually used in commerce in the

Philippines and registered in the principal registerof the Philippine Patent Office[;](b) [It] is used by another person in connection withthe sale, offering for sale, or advertising of anygoods, business or services or in connection withwhich such use is likely to cause confusion ormistake or to deceive purchasers or others as to thesource or origin of such


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goods or services, or identity of such business;or such trademark is reproduced, counterfeited,copied or colorably imitated by another person

and such reproduction, counterfeit, copy orcolorable imitation is applied to labels, signs,prints, packages, wrappers, receptacles oradvertisements intended to be used upon or in

connection with such goods, business or servicesas to likely cause confusion or mistake or todeceive purchasers[;]


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(c) [T]he trademark is used for identical orsimilar goods[;] and

(d) [S]uch act is done without the consent of thetrademark registrant or assignee.


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Application of RA 16618 and RA 8293 Provisions of Republic Act (R.A.) No. 16618

for the acts committed until December 31,1997, and R.A. No. 829319for thosecommitted from January 1, 1998 until June19, 2000.
http://www.lawphil.net/judjuris/juri2009/nov2009/gr_180073_2009.htmlhttp://www.lawphil.net/judjuris/juri2009/nov2009/gr_180073_2009.htmlhttp://www.lawphil.net/judjuris/juri2009/nov2009/gr_180073_2009.htmlhttp://www.lawphil.net/judjuris/juri2009/nov2009/gr_180073_2009.html


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Both the word[s] PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL"

which on evidence, appears to be merelydescriptive and furnish no indication of theorigin of the article and hence, open fortrademark registration by the plaintiff thrucombination with another word or phrasesuch as PYCNOGENOL, Exhibits "A" to "A-3."


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Furthermore, although the letters "Y"between P and C, "N" between O and C and"S" after L are missing in the [petitioners]mark PCO-GENOLS, nevertheless, when thetwo words are pronounced, the sound effectsare confusingly similar not to mention that

they are both described by theirmanufacturers as a food supplement andthus, identified as such by their publicconsumers.


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And although there were dissimilarities in thetrademark due to the type of letters used aswell as the size, color and design employedon their individual packages/bottles, still theclose relationship of the competing productsname in sounds as they were pronounced,

clearly indicates that purchasers could bemisled into believing that they are the sameand/or originates from a common source andmanufacturer.


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G.R. No. 169504

March 3, 2010


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PETITIONER

A local corporation engaged in the business ofestablishing and maintaining coffee shops in thecountry.

Registered with SEC in Jan. 2001.

Has franchise agreement with Coffee Partners Ltd.

(CPL): a business entity organized under the existinglaws of British Virgin Islands. (For a non-exclusiveright to operate coffee shops in the Philippines usingTMs designed by CPL, like SAN FRANCISCO COFFEE.


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RESPONDENT

A local corporation engaged in the wholesale and

retail sale of coffee. Registered with SEC in May 1995

Registered business name of SAN FRANCISCO

COFFEE & ROASTERY, INC. with the DTI in June

1995.


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They have a customer base which includes:

Figaro, Tagaytay Highlands, Fat Willys and etc.

1998: Formed a joint venture company with Boyd

Coffee USA, under the company name: Boyd

Coffee Company Philippines, Inc. (BCCPI).

The BCCPI is engaged in the processing, roasting, and

wholesale selling of coffee. Later on embarked on a project study of setting up

coffee carts in malls and other commercialestablishments in Metro Manila.


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June 2001: respondent found out that thepetitioner was planning to open a coffee shop

in Libis, Quezon City, under the name, SanFrancisco Coffee. Respondent: Petitioners shop caused

CONFUSIONin the minds of the public,because they had similar name, and the sameline of business.


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Respondent sent a letter to the petitionerdemanding the latters shop to stop using

their name. Respondent also filed acomplaint to the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO)


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ANSWER (PETITIONER): Allegations? DENIED!They said that their applications for registrationof their mark were for Class 42 (Scientific and

technological services and research and designrelating thereto; industrial analysis andresearch services; design and development ofcomputer hardware and software)in 1999 and

35 (Advertising; business management;business administration; office functions)in2000.


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The petitioner didnt stop using the markbecause they said that it will not be confusedwith the respondents mark because of the

notable distinctions in their appearances. Theyalso said that since the joint venture with thecompany BOYD COFFEE USA, they stoppedoperating by the name SAN FRANCISCOCOFFEE.

They also contended that there were no specificacts that would lead the one person, even thepetitioner that the mark is not in use anymore.


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Mr. David Puyat (Petitioner) testified that thecoffee shop in Libis opened in June 2001, andanother in Glorietta will open soon.

The coffee shop was put up in pursuant to afranchise agreement executed in Jan. 2001 w/CPL, owned by ROBERT BOXWELL.

He also said that he was only involvedbecause of one ARTHUR GINDANG, whoinvited him to invest in a coffee shop andintroduced him to BOXWELL.


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BOXWELL said that there were branches ofSAN FRANCISCO COFFEE in Malaysia &

Singapore. He also formed the CPL in 1997with Miller John & Leah Warren (formermanagers of Starbucks Coffee Shop, USA).Also, he stated that the name was adoptedfrom a famous coffee shop in California,where he and his colleagues used to live inand where special coffee roasts came from.


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Petitioners trademark infringed onrespondents trade name. THE RIGHT TO

EXCLUSIVE USE OF A TRADE NAME WITHFREEDOM FROM INFRINGEMENT BYSIMILARITY IS DETERMINED FROMPRIORITY OF ADOPTION.


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Since the respondent registered its businessname with DTI in 1995 and petitioner

registered it with IPO in 2001 in thePhilippines, and 1997 in other countries, THERESPONDENT MUST BE PROTECTEDFROM INFRINGEMENT OF TRADE NAME.


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Respondent did not abandon the use of itstrade nameas substantial evidence indicated

respondent continuously use its trade namein connection with the purpose for which itwas organized.


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Though the respondent was no longerinvolved with blending, roasting, anddistribution of coffee because of the BCCPI,IT CONTINUED MAKING PLANS ANDDOING RESEARCH ON THE RETAILING OFCOFFEE AND SETTING UP OF COFFEE

CARTS.


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MORAL: For the abandonment to EXIST,the DISUSE must be PERMANENT,INTENTIONAL, and VOLUNTARY.

The use of the trademark by the petitionerCAUSES CONFUSION, because of the EXACTSIMILARITY IN SOUND, SPELLING,PRONUNCIATION, AND COMMERCIAL

IMPRESSION OF THE WORDS.(Which wasthe dominant portion of respondents tradename and petitioners trademark)


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Even though there were significant differenceslike: DIAMOND-SHAPED FIGURE IN THECENTER (PETITIONER), there is GREATERWEIGHTin the words.

UNFAIR COMPETITION: Petitioner is absolvedfrom liability. Petitioner was granted byfranchisor to use the trademark. Also, noevidence to show intention to defraud in the

part of the petitioner. Claim for actual damages and moral damages:

DISMISSED.


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The decision of the BLA-IPO is set aside. Thepetitioners use is not an infringement.

Respondent stopped the use of the tradename went they entered to the joint ventureBCCPI.


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The decision of the ODG-IPO is REVERSED. Respondents claim for actual damages:

DENIED. Petitioners motion for reconsideration and

respondents motion for partialreconsideration: DENIED.


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The use of the trademark (petitioner)constitutes infringement of the trade name

(respondent) even if the trade name is notregistered in the IPO.


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The petitioner has no merit, thus there isINFRINGEMENT.

Petitioner Respondent


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et t o e espo de tAlleges that when a trade name isnot registered, suit for

infringement is not availableClaims RA 8293 dispensed with theregistration of trade name with theIPO as a requirement for the filing

for an action for infringement

Requirement: Trade name is previously used in

trade or commerce inPhilippines

Respondents registration ofbusiness name expired June 16,

2000 and it was only in 2001(petitioner opened its coffee shopin Libis, Quezon City in June2001) when respondent renewed

its business registration

Never abandoned the use of tradename

Evidence: Letter to petitioner demanding

immediate discontinuation ofthe use of its trademark

And by filing the infringement

Respondents failure to continue No abandonment of trade name:


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pthe use of its trade name negates

any allegation of infringement BLA IPO found respondentcontinued to make plans and do

research about coffee shops andcoffee carts (which negatesabandonment)

CA found that while respondentstopped using the trade name inits business of selling coffee, itcontinued importing and sellingcoffee machines (which is one of

the services registered by therespondent with the use of its

business name)

No confusion is likely to Petitioners trademark is


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No confusion is likely tooccur

Wide divergence in the

channels of tradeo Petitioner: ready made

coffee

o Respondent: wholesale

blending, roasting, anddistribution of coffee

Petitioner s trademark isconfusingly similar to

respondents trade name

Ordinarily prudentconsumers are likely to be

mislead about the source,

affiliation or sponsorship

of petitioners coffee

Proper noun San Francisco

and generic word coffee

not capable of exclusive

appropriation


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The binding effect of the factual findings ofCA applies with greater force

when BLA IPO (quasi-judicial body) andCA are in complete agreement and without any circumstance requiring the

reversal of the factual conclusion made, by

the quas-judicial body and was affirmed bythe CA, the court necessarily upholds suchfindings of fact


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The trademark being infringed is registered inIPO, however, in infringement of trade

name, the same need not be registered. Trademark or trade name is reproduced,

counterfeited, copied, or colorably imitatedby the infringer


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used in connection with the sale, offeringfor sale applied to labels, signs, prints,

packages, wrappers, intended to be usedupon or in connection with such goods,business, or services

likely to cause confusion or mistake or to

deceive purchasers Without consent of the trademark or trade

name owner or the assignee


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required registration as a condition for the

institution of an infringement suit shall be liable to

a civil action by the registrant

Registration is not a necessity before filing a suit

by the owner, all that is required is it is previouslyused in trade or commerce in the Philippines


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(a) Notwithstanding any laws or regulationsproviding for any obligation to register trade

names, such names shall be protected, evenprior to or without registration, against anyunlawful act committed by third parties

(b) subsequent use likely to mislead the

public, shall be deemed unlawful Thus: REGISTRATION REQUIREMENT IS

DISPENSED.


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Applying either dominancy or holistic test,petitioners San Francisco Coffee trademark

is clearly an infringement of respondentsSan Francisco Coffee & Roastery Inc.,trade name

Descriptive words San Francisco are dominant

features


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Engaged in same business of selling coffee

(whether whole sale or retail)

Consuming public will likely to be confused as to the

source of the coffee being sold

San Francisco as a Proper Name and coffee asa Generic Term is untenable


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Respondent acquired exclusive right to usethe trade name since 1995 registration ofthe business to DTI

From then on, must be free from anyinfringement by similarity

But does not have exclusive use of thegeographic or generic word San Francisco and

coffee The combination of the words is being protected

against infringement to avoid confusing ordeceiving the public


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Court held that a corporation has an exclusiveright to the use of its name

Not allow someone to profit from an establishedname and act to deceive the public that they are

dealing with the same corporation which has given

reputation to the name


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Not only the law but equity considerationhold petitioner liable for infringement of

respondents trade name Court ruled that CA is correct in setting aside

decision of ODG-IPO and reinstating decisionof BLA-IPO (which is the petitioner has

committed infringement).

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