Title
Victoria Milling Co., Inc. vs. Ong Su
Case
G.R. No. L-28499
Decision Date
Sep 30, 1977
Victorias Milling contested Ong Su's "Valentine" trademark, alleging confusion with its "Victorias" mark. Court ruled no likelihood of confusion, upheld "Valentine" registration, citing distinctiveness and lack of secondary meaning for common designs.
victoria milling co
ong su
trademarks
A

Case Summary (G.R. No. L-28499)

Factual Background: The Competing Trademarks

The petitioner alleged that its trademark “VICTORIAS” and diamond design had become distinctive of its sugar long before the respondent’s use of “VALENTINE.” It asserted that the respondent’s registration and use of “VALENTINE” and design caused, and would cause, great damage due to mistake, confusion, or deception among purchasers, given an alleged similarity in the marks and their presentation on sugar packaging. It further claimed that the respondent had fraudulently obtained the “VALENTINE” registration and that the mark falsely suggested a connection with Saint Valentine or an institution or belief connected therewith.

In his answer, the respondent averred that he was doing business under the name and style “Valentine Packaging” and that he had registered the trademark “Valentine” with a design for sugar, issued as Certificate of Registration No. 8891 dated June 20, 1961. He denied that the petitioner’s and respondent’s trademarks were confusingly similar, insisting that “Victorias” with diamond design and “Valentine” with a design were two different marks and that there was absolutely no likelihood of confusion, mistake, or deception among purchasers arising from their concurrent use on sugar.

Evidence Presented Before the Director of Patents

The petitioner presented one witness, Pacifico V. Vijandre, the petitioner’s vice-president and stockholder. He testified that the petitioner had used the trademark “Victorias” and diamond design, with red and black color schemes, on sacks of sugar of varying weights and sizes, including five pounds, ten pounds, twenty-five pounds, fifty pounds, and one hundred pounds. He stated that the petitioner had sales and transactions with local dealers and gave a figure of average sales from 1958 to 1962 of P30,000,000, and sales in 1962 of P46,000,000. He also testified that he learned of the appearance of “Valentine” on the market in 1962 through the report of the petitioner’s field agents. He claimed that, except for the words “Valentine” and “Victorias,” the design and wordings on the bags were practically the same.

The respondent, Ong Su, testified that he adopted and began using the “Valentine” trademark and design before and continuously after World War II in the Philippines, particularly on paper bags used as containers for starch, coffee, and sugar. He also stated that since January 1955, he had continued using the mark on repacked sugar. Arturo Chicano, the respondent’s witness, testified that he served as a distribution agent and that he never encountered instances where the respondent’s product was mistaken for the petitioner’s. He described the diamond design as common when combined with other word marks used by various sugar dealers. He added that the designs and colors were not regarded as trademarks but as ornamentation.

Director of Patents’ Decision

The Director of Patents denied the petition to cancel the respondent’s trademark registration. The Director held that, as to literal designation, the trademarks were different: one mark was “VALENTINE” while the other was “VICTORIAS.” The Director further found no dispute as to the marks’ dissimilarity in sound and connotation.

The Director then addressed the petitioner’s reliance on the diamond design, the color scheme, and the arrangement of legends such as weight, contents, and manufacturer or packer. He ruled that the diamond component did not bolster the petitioner’s case. He explained that common geometric shapes such as diamonds are ordinarily not treated as indicia of origin unless they acquire secondary meaning. He held that the petitioner failed to present satisfactory evidence that the diamond design had acquired secondary meaning in the sugar business. He emphasized that when a registrant relies upon the design portion of the mark in a cancellation proceeding based on likelihood of confusion, the registrant assumes the burden to show that purchasers recognize the design, standing alone, as indicating goods emanating from the registrant.

The Director also ruled that color alone, absent a distinct or arbitrary design, does not function as a trademark, and he characterized the colors black and red as primary colors commonly used in printing. Finally, he treated the petitioner’s complaints about printing sequences or the arrangement of legends as matters of the “dress of the goods,” which involve unfair competition beyond the Patent Office’s jurisdiction. He cited that unfair competition actions must be brought in the proper courts, and he concluded that the petitioner’s allegations regarding fraudulently obtained registration and the alleged misleading or descriptive character of the “VALENTINE” mark had no basis in law and fact.

Petitioner’s Assigned Errors on Review

The petitioner faulted the Director on multiple grounds, which in substance attacked (1) the Director’s treatment of the diamond design as not being an index of origin, (2) the supposed requirement of proof of secondary meaning and the Director’s finding that secondary meaning was not established, and (3) the Director’s characterization of imitated details as part of the “dress of the goods.” The petitioner also assigned error to the Director’s comparison of the marks and to the Director’s alleged refusal to take action in cases involving unfair competition due to lack of jurisdiction. Additional assigned errors challenged the ruling that the registered color design did not function as a trademark, the conclusion that the absence of literal similarity foreclosed likelihood of confusion, and the Director’s position that actual purchaser confusion need not be shown. The petitioner further alleged procedural due process violations in the limitation of rebuttal testimony, in the admission of respondent’s exhibits involving the name Mariano Ang as an alias, and in the Director’s conclusion that no fraud in obtaining registration existed.

Appellate Court’s Evaluation of the Diamond Design and Secondary Meaning

The Court held that the petitioner’s contention that its diamond design was an index of origin had no merit. It ruled that the petitioner had not shown that the diamond design had been used in a manner by which purchasers recognized it, standing alone, as indicating goods emanating from the registrant. The Court agreed with the Director that common geometric shapes ordinarily are not regarded as indicia of origin unless they acquire secondary meaning. It also found no evidence that the petitioner’s diamond design had acquired secondary meaning with respect to sugar.

The Court further emphasized the role of the word component as the dominant identifier. It held that the word “Victorias” was what identified the sugar in the bag as the petitioner’s product, and it noted that the petitioner had advertised its sugar in bags marked “Victorias” with oval, hexagon, and other designs.

Priority of Use and Absence of Imitation

The Court also considered priority and imitation. It observed that the evidence showed the respondent’s use of the “Valentine” trademark prior to the last World War and registration on June 20, 1961. By contrast, the petitioner’s witness testified that the petitioner started to use its trademark only in 1947, with registration on November 9, 1961. The Court therefore found no basis to conclude that the respondent had imitated the petitioner’s trademark.

Likelihood of Confusion: Comparison of the Marks as Used

In assessing the claimed likelihood of confusion, the petitioner pointed to multiple asserted similarities, including the diamond design with slight modifications to the lines’ configuration, the two-line structure of the design (outer and inner portions), the black and red colors, the presence of the word “PURE” inside the upper portion of the diamond, the placement and color of the words “VICTORIAS” and “VALENTINE” within the diamond, the identically placed letter “V,” and the arrangement of other descriptive words such as “REFINED SUGAR,” “FINE GRANULATED,” and “CANE SUGAR.” The petitioner maintained that both trademarks were used on refined sugar and that the shared words and arrangement created confusion.

The Court accepted the respondent’s position that the claimed points of similarity were minor and insignificant in the context of the petition. It specifically recognized that descriptive terms applied to sugar could not be exclusively appropriated by the petitioner. It also treated other alleged similarities—such as the two-line diamond structure, the black and red color scheme, the size of the diamond design, and the positioning and size of the letter “V”—as insufficient to establish a substantial similarity warranting cancellation.

The Court held that it was “clear” that the words “Valentine” and “Victorias” and the business names and places associated with each company were the dominant features of the trademarks. Since the petitioner had not established substantial similarity between the two trademarks as to warrant cancellation of the respondent’s trademark, the Court found no basis to disturb the Director’s conclusion.

Patent Office Jurisdiction and Unfair Competition

The Court confirmed that the Director of Patents correctly ruled that it had no jurisdiction over unfair competition issues. It invoked Section 27 of the Trade Mark Law, Republic Act No. 166, which provides that actions for unfair competition must be brought before the proper court of first instance. Thus, the Court treated disputes relating to the “dress of the goods” and unfair competition as matters beyond the Patent Office’s competence in the inter partes trademark cancellation proceeding.

Limitation of Rebuttal Testimony and Due Process

On the petitioner’s claim of procedural due process violations, the Court held that the petitioner could not complain. It reasoned that the petitioner’s proposed rebuttal questioning of Ong Su was essentially aimed at whether the respondent had judicial authority t

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