Case Digest (G.R. No. L-28499)
Facts:
Victorias Milling Company, Inc. sought cancellation of the certificate of registration of ONG Su for the trademark “VALENTINE” and design covering refined sugar, asserting long use and distinctiveness of “VICTORIAS” with a diamond design, likely confusion from similarity in packaging, and alleged fraud and deceptive suggestion of “Saint Valentine.” ONG Su, who had registered “VALENTINE” and design on June 20, 1961, denied confusion and claimed prior and continuous use before and after World War II, including on repacked sugar.The Director of Patents denied the petition, holding that the diamond design had no shown secondary meaning, the literal portions (“VICTORIAS” vs. “VALENTINE”) were dissimilar, colors alone did not function as a trademark absent a distinct arbitrary design, and that matters sounding in unfair competition were beyond the Patent Office’s jurisdiction. The petitioner elevated the adverse ruling by petition to review.
Issues:
- Whether the diamond design in
Case Digest (G.R. No. L-28499)
Facts:
- Parties and their trademark registrations
- Victoria Milling Company, Inc. (petitioner) was a domestic corporation engaged in the manufacture and sale of refined granulated sugar.
- Petitioner owned the trademark “VICTORIAS” and diamond design, registered in the Philippines Patent Office on November 9, 1961.
- Ong Su (respondent) was engaged in the repacking and sale of refined sugar.
- Respondent owned the trademark “VALENTINE” and design, registered in the Philippines Patent Office on June 20, 1961.
- Respondent’s registration was issued through the Philippines Patent Office certificate of registration dated June 20, 1961.
- Petitioner’s petition to cancel respondent’s trademark
- On October 4, 1963, petitioner filed in the Philippines Patent Office a petition to cancel the registration of respondent’s trademark “Valentine.”
- Petitioner alleged that “Victorias” and diamond design had become distinctive of its sugar long before respondent used “Valentine.”
- Petitioner alleged that registration of “Valentine” and design had caused and would cause great damage because of mistake, confusion, or deception among purchasers.
- Petitioner alleged that respondent fraudulently obtained the registration of “Valentine.”
- Petitioner alleged that “Valentine” falsely suggested a connection with Saint Valentine or an institution or belief connected therewith.
- Respondent’s answer and theory of non-confusion
- Respondent averred that he did business under the name and style “Valentine Packaging.”
- Respondent stated he registered his trademark “Valentine” with a design for sugar and was issued Certificate of Registration No. 8891 dated June 20, 1961.
- Respondent asserted that “Valentine” and “Victorias” with diamond design were two different marks.
- Respondent averred that there was absolutely no likelihood of confusion, mistake, or deception to purchasers due to concurrent use of petitioner’s “Victorias” mark with a diamond and respondent’s “Valentine” mark with a diamond.
- Evidence presented before the Director of Patents
- Petitioner’s witness
- Petitioner’s only witness was Pacifco V. Vijandre, petitioner’s vice-president and stockholder.
- Vijandre testified that petitioner used since 1947 the trademark “Victorias” and diamond design with colors red and black on sacks of sugar with variable weights and sizes: 5 lbs., 10 lbs., 25 lbs., 50 lbs., and 100 lbs.
- Vijandre stated petitioner had transactions or sales with local dealers including Kim Kee, Chu Yu & Co., Lumouan & Co., Luzon Merchandising Corp., and ARCA.
- Vijandre testified the average sale from 1958 to 1962 was P30,000,000, and the total sale for 1962 was P46,000,000.
- Vijandre testified he came to know that “Valentine” appeared in the market in 1962 through reports by petitioner’s field agents.
- Vijandre testified that, except for the words “Valentine” and “Victorias,” the design and wordings of the bags were practically the same.
- Respondent’s testimony and witness
- Respondent declared he adopted and began using the “Valentine” and design before and continuously after World War II in the Philippines, particularly on paper bags used as containers for starch, coffee, and sugar.
- Respondent testified that since January 1955 he continued using “Valentine” on repacked sugar.
- Arturo Chicano, respondent’s witness and distribution agent, testified he traveled widely but never encountered an instance when respondent’s product was mistaken for petitioner’s product.
- Chicano testified diamond designs were common when combined with other words used as trademarks as background or to enhance appearance, such as “DIAMOND” and design, “EAGLE” and design, and “SUNRISE” and design, which were used on repacked sugar by various sugar dealers.
- Chicano testified the designs and the color of the lines were not regarded as trademarks but as mere ornamentation.
- Director of Patents ruling denying cancellation
- The Director of Patents denied petitioner’s petition to cancel respondent Ong Su’s certificate of registration covering “Valentine” and design.
- Literal word marks
- The Director held the trademarks were different as to literal designation: one was “VALENTINE” and the other “VICTORIAS.”
- The Director found no dispute as to dissimilarity in sound and connotation.
- Diamond design component and secondary meaning
- The Director found petitioner relied heavily on its diamond design, color scheme, and printing sequence or arrangement such as weight, contents, and manufacturer or packer.
- The Director ruled the diamond portion “has not bolstered” petitioner’s cause.
- The Director stated that common geometric shapes like diamonds ordinarily are not indicia of origin unless they have acquired secondary meaning.
- The Director found no satisfactory evidence that the triangle/diamond design had acquired secondary meaning with respect to petitioner’s sugar business.
- The Director reasoned that when a registrant relies upon registration for likelihood of confusion, the registrant assumes the burden to show purchasers recognize the design standing alone as indicating goods emanating from the registrant.
- The Director cited Bausch & Lomb Optical Co., v. Overseas Finance & Trading Co., Inc. (ComrPats) 112 USPQ 6.
- Likelihood of confusion assessment
- The Director considered petitioner failed to establish the diamond design acquired secondary meaning.
- The Director found literal portions had no similarity.
- The Director concluded there was no reasonable likelihood of purchaser confusion resulting from respondent using “VALENTINE” within a diamond and petitioner using “VICTORIAS” within a diamond.
- Colors
- The Director held color alone does not function as a trademark unless displayed in a distinct or arbitrary design.
- The Director found black and red were not displayed in a distinct or arbitrary design by petitioner.
- The Director considered black and red as primary colors commonly and freely used in printing.
- Printing sequence and “dress of the goods” and jurisdiction
- The Director ruled printing sequences or arrangement of legends pertaining to weight, contents, and manufacturer or packer were a matter of the “dress of the goods.”
- The Director ruled it involved unfair competition over which the Patent Office had no jurisdiction.
- The Director cited Menzi & Co., Inc. vs. Andres Co, Rec. No. 59 dated Oct. 31, 1952, Dir. of Paten...(Subscriber-Only)
Issues:
- Whether the Director of Patents erred in ruling that petitioner’s registered diamond design was not an index of origin
- Whether petitioner’s diamond design functioned as an indicium of origin absent proof that purchasers recognized the design standing alone.
- Whether petitioner was required to establish secondary meaning and whether it did so
- Whether secondary meaning was required for the diamond design to be treated as an indicia of origin.
- Whether petitioner proved that the diamond design acquired secondary meaning with respect to its sugar business.
- Whether cancellation was warranted due to likelihood of confusion between “VICTORIAS” and “VALENTINE” marks
- Whether the diamond designs and overall packaging similarities created a reasonable likelihood of purchaser confusion.
- Whether the Director properly assessed differences in literal word marks and design features.
- Whether any alleged similarities were substantial enough to justify cancellation.
- Whether the Patent Office had jurisdiction over “unfair competition” aspects
- Whether the Director correctly ruled that certain features of petitioner’s alleged imitations were matters of the “dress of the goods,” involving unfair competition beyond the Patent Office’s jurisdiction.
- Whether...(Subscriber-Only)