Case Digest (G.R. No. 198889) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In UFC Philippines, Inc. (now merged with Nutri-Asia, Inc.) versus Barrio Fiesta Manufacturing Corporation, petitioner Nutri-Asia (successor to UFC) challenged respondent’s Application No. 4-2002-002757 filed on April 4, 2002 for the trademark “PAPA BOY & DEVICE” covering lechon sauce under Class 30. The IPO published the application on September 8, 2006. On December 11, 2006, petitioner filed a Verified Notice of Opposition, asserting prior use since 1954 of the surname-derived “PAPA” mark on banana ketchup and related goods, evidenced by successive registrations (No. 32416, SR-6282, No. 34681) and timely renewals, and warning of likely confusion with respondent’s proposed mark. Respondent answered that its mark’s dominant features are “PAPA BOY” and a hog device, that petitioner’s earlier registrations had expired or were limited in scope, and that banana sauce and lechon sauce serve different markets. The IPO Bureau of Legal Affairs (March 26, 2008) sustained the opposition a Case Digest (G.R. No. 198889) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties and Marks
- Petitioner
- UFC Philippines, Inc., merged into Nutri-Asia, Inc. in February 2009; successor in interest to a family of “PAPA” marks used since 1954 on banana ketchup and related condiments.
- Current registrations include:
- Reg. No. 32416 (“PAPA”) for Class 29 goods (re-registered via App. No. 4-2005-010788 for Classes 29 & 30).
- SR-6282 (“PAPA BANANA CATSUP LABEL”) on the Supplemental Register (re-registered as “PAPA LABEL DESIGN” under App. No. 4-2006-012364).
- Reg. No. 34681 (“PAPA KETSARAP”) for Class 30 goods (banana sauce), renewed in 2005.
- Respondent
- Fiesta Barrio Manufacturing Corp.
- Filed App. No. 4-2002-002757 (“PAPA BOY & DEVICE”) on April 4, 2002 for lechon sauce (Class 30); published September 8, 2006.
- Opposition Proceedings in the IPO
- Petitioner’s Verified Opposition (Dec. 11, 2006)
- Alleged confusing similarity between respondent’s “PAPA BOY & DEVICE” and petitioner’s “PAPA” marks.
- Asserted dominance of the word “PAPA,” same class of goods, likelihood of deception, bad faith.
- Respondent’s Verified Answer
- Contended petitioner’s earlier registrations (PAPA; PAPA BANANA CATSUP) had expired or were supplemental only.
- Argued dissimilar dominant features (“PAPA BOY” + device vs. “PAPA KETSARAP”), non-competing goods (lechon sauce vs banana sauce), first user of “PAPA BOY,” presence of other “PAPA” marks.
- IPO Decisions
- IPO-BLA Decision (Mar. 26, 2008) – Sustained opposition; rejected respondent’s application.
- IPO Director General Decision (Jan. 29, 2009) – Dismissed respondent’s appeal; affirmed IPO-BLA.
- Court of Appeals Proceedings
- Petition for certiorari (CA G.R. SP No. 107570)
- Grounds: expired petitioner marks; no confusing similarity; no cause of action.
- CA Decision (June 23, 2011)
- Found only “PAPA KETSARAP” valid; “PAPA BOY & DEVICE” not confusingly similar under holistic test; reversed IPO decisions.
- CA Resolution (Oct. 4, 2011) – Denied reconsideration.
- Supreme Court Petition
- Petitioner’s Rule 45 petition to annul CA decision and reinstate IPO rulings.
- Key contentions: proper use of dominancy test; relatedness of goods; arbitrary nature of “PAPA.”
Issues:
- Did the Court of Appeals err by applying the holistic test instead of the dominancy test to assess confusing similarity?
- Is there a likelihood of confusion—both goods and business—between respondent’s lechon sauce mark and petitioner’s ketchup/banana sauce marks?
- Can petitioner claim exclusive ownership of “PAPA” despite its generic or term-of-endearment meaning?
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)