Case Digest (G.R. No. L-5378)
Facts:
Co Tiong Sa v. Director of Patents, G.R. No. L-5378. May 24, 1954, the Supreme Court (Paras, C.J., Pablo, Bengzon, Montemayor, Reyes, A., Jugo, Bautista Angelo, and Concepcion, JJ., concurring), Labrador, J., writing for the Court. This is an appeal from a decision of the Director of Patents denying registration of the trademark "FREEDOM" and sustaining the opposition filed by Saw Woo Chiong & Co. against applicant-petitioner Co Tiong Sa under Section 4 of Republic Act No. 166.Petitioner had used the mark FREEDOM on undershirts and T-shirts since March 1947 and sought registration in the Patent Office (Serial No. 38). The application included facsimiles showing the word "FREEDOM" in hand-print with a right slant and, on various labels, additional small devices (a triangle with an "F", small letters "H.L.", or an "M" and the words "HIGH QUALITY") and rectangular enclosures. Oppositor's registered mark (first registered in the Bureau of Commerce in 1947 and re-registered in the Patent Office on September 22, 1948) was "FREEMAN", in a similar hand print with a right slant, accompanied by a vignette of a man in a top hat and the words "PERFECT WEAR"; it had been used since 1938 on shirts and related garments and extensively advertised.
The Director of Patents sustained the opposition and denied petitioner’s application on the ground of confusing similarity. Petitioner appealed, assigning error to the Director’s reliance on the central or dominant idea test for similarity, the conclusion that the words "FREEDOM" and "FREEMAN" give the same general impression, the view that registration of "FREEDOM" would damage oppositor even absent proof of actual confusion, and the denial of...(Subscriber-Only)
Issues:
- Is the oppositor required to present witness testimony to sustain an opposition to trademark registration, or may the Director determine similarity from the facsimiles alone?
- Is the test of dominancy (central or dominant idea) the correct legal standard for determining similarity of trademarks?
- Are the trademarks FREEDOM and FREEMAN confusingly similar under the applicable test so as to bar registration of "FREEDOM"?
- Must actual confusion or proof of damage be shown before registration may b...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)