Case Summary (G.R. No. L-27906)
Stipulated Admissions
At pretrial, parties stipulated that petitioner’s corporate name is “Converse Rubber Corporation,” not licensed or doing business in the Philippines, manufacturing rubber shoes under “Chuck Taylor” and “All Star and Device.”
Evidence of Petitioner’s Use
Petitioner’s witness, Carmen B. Pacquing, testified she sold Converse rubber shoes since 1956 in Sta. Mesa Market and Davao City, averaging 12–20 pairs monthly, identified by the round “Converse Chuck Taylor” label stating “Made in U.S.A.” Invoices described the shoes as “Converse Chuck Taylor,” “Converse All Star,” “All Star Converse Chuck Taylor,” or “Converse Shoes Chuck Taylor.” She had no business relation with petitioner.
Evidence of Respondent’s Use
Respondent’s corporate secretary testified that Universal Rubber Products sold “Universal Converse” sandals since 1962 and shoes since 1963. Invoices evidenced these sales. The witness had no knowledge of the mark’s origin or of petitioner’s name.
Director of Patents’ Decision
The Director dismissed petitioner’s opposition, holding petitioner failed to prove that “Converse” alone identified it in the Philippines. The Office found sales by a single witness insufficient, noted petitioner was not licensed locally, and that petitioner used other trademarks on its products. It concluded no likelihood of confusion was shown.
Issue for Review
Whether respondent’s appropriation of the dominant word “Converse” from petitioner’s corporate name is of such character that it is likely to deceive or confuse the public, causing injury to petitioner.
Trade Name and Trademark Principles
A trade name identifies the business and its goodwill, while a trademark identifies the goods. Both constitute property rights protected against unfair competition, including confusing similarity and fraudulent appropriation.
Dominance and Knowledge
“Converse” is the dominant element of petitioner’s corporate name. Respondent, by stipulating petitioner’s existence since 1946, admitted awareness of petitioner’s business and reputation. Consequently, respondent had no right to appropriate “Converse” for similar products.
Inference of Fraudulent Intent
Respondent offered no explanation for selecting “Converse” in its mark, despite an ample field of alternative names. Such unexplained choice invites the inference of deliberate deception to trade on petitioner’s reputation.
Proof of Use and Goodwill
Petitioner’s invoices and customer testimony demonstrate actual sales and prolonged use of “Converse” in the Philippines, establishing a secondary meaning and goodwill. Monthly sales of 12–20 pairs, though by an independent retailer, suffice to show trademark use in commerce and support pre-emption rights.
Likelihood of Confusion
Both marks are circularly applied on shoe sides, creating visual similarity. Under the standard of the ordinary purchaser, the resemblance alone may cause confusion of origin. Even
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Facts of the Case
- Universal Rubber Products, Inc. filed with the Philippine Patent Office an application to register the trademark “UNIVERSAL CONVERSE AND DEVICE” for rubber shoes and slippers.
- Converse Rubber Corporation opposed, alleging confusion with “CONVERSE” in its corporate name and risk of injury to its business reputation and goodwill under Section 8, R.A. No. 166, as amended.
- Opposition grounds: likelihood of deception of unwary purchasers and irreparable damage to petitioner’s goodwill.
Stipulated Facts
- Converse Rubber Corporation has existed since July 31, 1946, organized under Massachusetts law at 392 Pearl St., Malden, Middlesex County, Massachusetts.
- Petitioner is not licensed or doing business in the Philippines on its own.
- Petitioner manufactures rubber shoes using the trademarks “CHUCK TAYLOR” and “ALL STAR AND DEVICE” only.
Trial Evidence
- Petitioner’s witness, Mrs. Carmen B. Pacquing, a private merchant, sold “CONVERSE” rubber shoes since 1956, averaging 12–20 pairs monthly, chiefly to basketball players from Ateneo, La Salle, and San Beda.
- Invoices described the shoes as “Converse Chuck Taylor,” “Converse All Star,” “All Star Converse Chuck Taylor,” or “Converse Shoes Chuck Taylor.”
- Mrs. Pacquing had no business ties with petitioner and identified the products by their “Made in U.S.A.” and trademark inscriptions.
- Respondent’s secretary testified wholesale sales of “Universal Converse” sandals began in 1962 and rubber shoes in 1963, submitted invoices, and denied knowledge of the “Converse” name before adopting it or any reason for selection.
Decision of the Director of Patents
- Dismissed petitioner’s opposition, allowing registration of “UNIVERSAL CONVERSE.”
- Held petitioner failed to prove that “CONVERSE” alone identif