Case Digest (G.R. No. L-19906)
Facts:
Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft and Allied Manufacturing & Trading Co., Inc., G.R. No. L-19906. April 30, 1969, the Supreme Court En Banc, Sanchez, J., writing for the Court.Plaintiff Sterling Products International, Inc. (SPI) sued defendants Farbenfabriken Bayer Aktiengesellschaft (FBA) and Allied Manufacturing & Trading Co., Inc. (AMATCO) for trademark infringement and unfair competition, each seeking to exclude the other from using the marks BAYER and BAYER CROSS IN CIRCLE in the Philippines. SPI marketed medicines in the Philippines—Bayer Aspirin, Aspirin for Children and Cafiaspirina—using the BAYER marks; FBA (through AMATCO) distributed industrial and agricultural chemicals (not medicines), including Folidol, bearing a replica of the BAYER CROSS IN CIRCLE on containers and labels.
The BAYER CROSS IN CIRCLE mark traces to Germany (registered there in 1904, later reissued), and the BAYER name had been used internationally. After World War I the U.S. Alien Property Custodian sold The Bayer Co., Inc. of New York’s assets to Sterling Drug, Inc.; SPI’s predecessors thereafter registered the BAYER marks in the United States and in the Philippines. In the Philippines The Bayer Co., Inc. registered the BAYER marks in 1939; those registrations were assigned to SPI in 1942 and reissued in 1948 as registrations limited to “Medicines.”
FBA’s German predecessor had previously marketed Bayer-branded medical products in the Philippines before World War I; later, after I.G. Farbenindustrie was decartelized and Farbenfabriken Bayer reconstituted, FBA (through AMATCO) began selling chemicals bearing the Bayer cross in the Philippines about 1958. FBA applied in November 1959 for registration of BAYER CROSS IN CIRCLE for animal and plant destroying agents; despite the Patent Office examiner’s report noting similarity to SPI’s marks, FBA sought and was granted registration in the Supplemental Register (SR-304) on February 25, 1960.
At trial the court sought a market-division solution: it dismissed both the complaint and counterclaim, sustained SPI’s right to use the BAYER mark for medicines, sustained defendants’ right to use it for chemicals/insecticides (not medicines), and ordered defendants to add a distinctive word or words to their mark to indicate the products come from ...(Subscriber-Only)
Issues:
- Did SPI’s Philippine registrations and use of the BAYER marks give it an exclusive right to prevent defendants from using the same marks on chemicals and insecticides in the Philippines?
- Was FBA’s registration of the BAYER CROSS IN CIRCLE in the Supplemental Register for chemicals proper and subject to cancellation?
- Should defendants’ counterclaim to cancel SPI’s principal registrations of the BAYER marks for medicines succeed on grounds of prior rights or non-use?
- Was the trial court’s order requiring defendants to add a distinctive...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)