[22] trademark “STYLISTIC MR.

LEE” since 1 May 1975, yet, it was only on 18

September 1981 that private respondent filed a petition for cancellation of petitioner’s
EMERALD GARMENT MANUFACTURING CORPORATION, petitioner, certificate of registration for the said trademark. We reject petitioner’s contention.
vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS Petitioner’s trademark is registered in the supplemental register. The Trademark Law
AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC., (R.A. No. 166) provides that “marks and tradenames for the supplemental register
respondents. shall not be published for or be subject to opposition, but shall be published on
registration in the Official Gazette.” The reckoning point, therefore, should not be 1
May 1975, the date of alleged use by petitioner of its assailed trademark but 27 October
1980, the date the certificate of registration SR No. 5054 was published in the Official
Gazette and issued to petitioner.

Same; Estoppel; Laches; Actions; To be barred from bringing suit on grounds of

estoppel and laches, the delay must be lengthy. —Corollarily, private respondent could
hardly be accused of inexcusable delay in filing its notice of opposition to petitioner’s
application for registration in the principal register since said application was
published only on 20 February 1984. From the time of publication to the time of filing
the opposition on 27 July 1984 barely five (5) months had elapsed. To be barred from
bringing suit on grounds of estoppel and laches, the delay must be lengthy.

Same; In the history of trademark cases in the Philippines, particularly in ascertaining

whether one trademark is confusingly similar to or is a colorable imitation of another,
no set rules can be deduced—each case must be decided on its own merits.—Practical
application of the provision of Section 22 of R.A. No. 166 (Trademark Law) is easier
said than done. In the history of trademark cases in the Philippines, particularly in
ascertaining whether one trademark is confusingly similar to or is a colorable imitation
of another, no set rules can be deduced. Each case must be decided on its own merits.

Same; Infringements; The essential element of infringement is colorable imitation.—

Proceeding to the task at hand, the essential element of infringement is colorable
imitation. This term has been defined as “such a close or ingenious imitation as to be
calculated to deceive ordinary purchasers, or such resemblance of the infringing mark
to the original as to deceive an ordinary purchaser giving such attention as a purchaser
usually gives, and to cause him to purchase the one supposing it to be the other.”

Same; Same; In determining whether colorable imitation exists, jurisprudence has

developed two kinds of tests—the Dominancy Test and the Holistic Test.—In
determining whether colorable imitation exists, jurisprudence has developed two kinds
Trademarks and Tradenames; The reckoning point for the filing of a petition for of tests—the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and
cancellation of certificate of registration of trademark is not from the alleged date of other cases and the Holistic Test developed in Del Monte Corporation v. Court of
use but from the date the certificate of registration was published in the Official Appeals and its proponent cases.
Gazette and issued to the registrant.—Petitioner alleges that it has been using its
Page 1 of 10
Same; Same; Dominancy Test and Holistic Test, Compared.— As its title implies, the are constrained to agree with petitioner’s contention that private respondent failed to
test of dominancy focuses on the similarity of the prevalent features of the competing prove prior actual commercial use of its “LEE” trademark in the Philippines before
trademarks which might cause confusion or deception and thus constitutes filing its application for registration with the BPTTT and hence, has not acquired
infringement. On the other side of the spectrum, the holistic test mandates that the ownership over said mark. Actual use in commerce in the Philippines is an essential
entirety of the marks in question must be considered in determining confusing prerequisite for the acquisition of ownership over a trademark pursuant to Sec. 2 and
similarity. 2-A of the Philippine Trademark Law (R.A. No. 166).

Same; Same; Maong pants and jeans are not inexpensive, and as the casual buyer is Same; Same; International Law; Conflict of Laws; Paris Convention for the
predisposed to be more cautious and discriminating in and would prefer to mull over Protection of Industrial Property; Following universal acquiescence and comity, our
his purchase, confusion and deception is less likely.—The products involved in the municipal law on trademarks regarding the requirements of actual use in the
case at bar are, in the main, various kinds of jeans. These are not your ordinary Philippines must subordinate an international agreement inasmuch as the apparent
household items like catsup, soy sauce or soap which are of minimal cost. Maong pants clash is being decided by a municipal tribunal.—The provisions of the 1965 Paris
or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more Convention for the Protection of Industrial Property relied upon by private respondent
cautious and discriminating in and would prefer to mull over his purchase. Confusion and Sec. 21-A of the Trademark Law (R.A. No. 166) were sufficiently expounded
and deception, then, is less likely. upon and qualified in the recent case of Philip Morris, Inc. v. Court of Appeals:
Following universal acquiescence and comity, our municipal law on trademarks
Same; Same; Words and Phrases; “Ordinary Purchaser,” Defined.—The definition regarding the requirement of actual use in the Philippines must subordinate an
laid down in Dy Buncio v. Tan Tiao Bok is better suited to the present case. There, the international agreement inasmuch as the apparent clash is being decided by a
“ordinary purchaser” was defined as one “accustomed to buy, and therefore to some municipal tribunal (Mortisen vs. Peters, Great Britain, High Court of Judiciary of
extent familiar with, the goods in question. The test of fraudulent simulation is to be Scotland, 1906, 8 Sessions, 93; Paras, International Law and World Organization,
found in the likelihood of the deception of some persons in some measure acquainted 1971 Ed., p. 20). Withal, the fact that international law has been made part of the law
with an established design and desirous of purchasing the commodity with which that of the land does not by any means imply the primacy of international law over national
design has been associated. The test is not found in the deception, or the possibility of law in the municipal sphere. Under the doctrine of incorporation as applied in most
deception, of the person who knows nothing about the design which has been countries, rules of international law are given a standing equal, not superior, to national
counterfeited, and who must be indifferent between that and the other. The simulation, legislative enactments.
in order to be objectionable, must be such as appears likely to mislead the ordinary
intelligent buyer who has a need to supply and is familiar with the article that he seeks Same; Evidence; A registration certificate serves merely as prima facie evidence—it
to purchase.” is not conclusive but can and may be rebutted by controverting evidence.—The
credibility placed on a certificate of registration of one’s trademark, or its weight as
Same; Same; A personal name or surname may not be monopolized as a trademark or evidence of validity, ownership and exclusive use, is qualified. A registration
tradename as against others of the same name or surname.—“LEE” is primarily a certificate serves merely as prima facie evidence. It is not conclusive but can and may
surname. Private respondent cannot, therefore, acquire exclusive ownership over and be rebutted by controverting evidence.
singular use of said term . . . It has been held that a personal name or surname may not
be monopolized as a trademark or tradename as against others of the same name or Same; Same; A supplemental register was created precisely for the registration of
surname. For in the absence of contract, fraud, or estoppel, any man may use his name marks which are not registrable on the principal register due to some defects.—
or surname in all legitimate ways. Thus, “Wellington” is a surname, and its first user Moreover, the aforequoted provision applies only to registrations in the principal
has no cause of action against the junior user of “Wellington” as it is incapable of register. Registrations in the supplemental register do not enjoy a similar privilege. A
exclusive appropriation. supplemental register was created precisely for the registration of marks which are not
registrable on the principal register due to some defects.
Same; Same; Actual use in commerce in the Philippines is an essential prerequisite
for the acquisition of ownership over a trademark.—In addition to the foregoing, we
Page 2 of 10
Same; Same; Administrative Law; The findings of fact of the Director of Patents are On 20 February 1984, petitioner caused the publication of its application for
conclusive upon the Supreme Court provided they are supported by substantial registration of the trademark "STYLISTIC MR. LEE" in the Principal Register."4
evidence.—The determination as to who is the prior user of the trademark is a question
of fact and it is this Court’s working principle not to disturb the findings of the Director On 27 July 1984, private respondent filed a notice of opposition to petitioner's
of Patents on this issue in the absence of any showing of grave abuse of discretion. application for registration also on grounds that petitioner's trademark was
confusingly similar to its "LEE" trademark.5 The case was docketed as Inter
The findings of facts of the Director of Patents are conclusive upon the Supreme Court
Partes Case No. 1860.
provided they are supported by substantial evidence.
On 21 June 1985, the Director of Patents, on motion filed by private
KAPUNAN, J.: respondent dated 15 May 1985, issued an order consolidating Inter Partes
Cases Nos. 1558 and 1860 on grounds that a common question of law was
In this petition for review on certiorari under Rule 45 of the Revised Rules of involved.6
Court, Emerald Garment Manufacturing Corporation seeks to annul the
decision of the Court of Appeals dated 29 November 1990 in CA-G.R. SP No. On 19 July 1988, the Director of Patents rendered a decision granting private
15266 declaring petitioner's trademark to be confusingly similar to that of respondent's petition for cancellation and opposition to registration.
private respondent and the resolution dated 17 May 1991 denying petitioner's
motion for reconsideration. The Director of Patents found private respondent to be the prior registrant of
the trademark "LEE" in the Philippines and that it had been using said mark in
The record reveals the following antecedent facts: the Philippines.7

On 18 September 1981, private respondent H.D. Lee Co., Inc., a foreign Moreover, the Director of Patents, using the test of dominancy, declared that
corporation organized under the laws of Delaware, U.S.A., filed with the petitioner's trademark was confusingly similar to private respondent's mark
Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for because "it is the word 'Lee' which draws the attention of the buyer and leads
Cancellation of Registration No. SR 5054 (Supplemental Register) for the him to conclude that the goods originated from the same manufacturer. It is
trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, undeniably the dominant feature of the mark."8
jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25,
issued on 27 October 1980 in the name of petitioner Emerald Garment On 3 August 1988, petitioner appealed to the Court of Appeals and on 8
Manufacturing Corporation, a domestic corporation organized and existing August 1988, it filed with the BPTTT a Motion to Stay Execution of the 19 July
under Philippine laws. The petition was docketed as Inter Partes Case No. 1988 decision of the Director of Patents on grounds that the same would cause
1558.1 it great and irreparable damage and injury. Private respondent submitted its
opposition on 22 August 1988.9
Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and
Art. VIII of the Paris Convention for the Protection of Industrial Property, On 23 September 1988, the BPTTT issued Resolution No. 88-33 granting
averred that petitioner's trademark "so closely resembled its own trademark, petitioner's motion to stay execution subject to the following terms and
'LEE' as previously registered and used in the Philippines, and not abandoned, conditions:
as to be likely, when applied to or used in connection with petitioner's goods,
to cause confusion, mistake and deception on the part of the purchasing public
as to the origin of the goods."2 1. That under this resolution, Respondent-Registrant is authorized
only to dispose of its current stock using the mark "STYLISTIC MR.
LEE";
In its answer dated 23 March 1982, petitioner contended that its trademark
was entirely and unmistakably different from that of private respondent and
that its certificate of registration was legally and validly granted. 3 2. That Respondent-Registrant is strictly prohibited from further
production, regardless of mode and source, of the mark in question
(STYLISTIC MR. LEE) in addition to its current stock;

Page 3 of 10
 3. That this relief Order shall automatically cease upon resolution of The appellee has sufficiently established its right to prior use and
the Appeal by the Court of Appeals and, if the Respondent's appeal registration of the trademark "LEE" in the Philippines and is thus entitled
loses, all goods bearing the mark "STYLISTIC MR. LEE" shall be to protection from any infringement upon the same. It is thus axiomatic
removed from the market, otherwise such goods shall be seized in that one who has identified a peculiar symbol or mark with his goods
accordance with the law. thereby acquires a property right in such symbol or mark, and if another
infringes the trademark, he thereby invokes this property right.
SO ORDERED.10
The merchandise or goods being sold by the parties are not that
On 29 November 1990, the Court of Appeals promulgated its decision affirming expensive as alleged to be by the appellant and are quite ordinary
the decision of the Director of Patents dated 19 July 1988 in all respects. 11 commodities purchased by the average person and at times, by the
ignorant and the unlettered. Ordinary purchasers will not as a rule
examine the small letterings printed on the label but will simply be
In said decision the Court of Appeals expounded, thus:
guided by the presence of the striking mark "LEE". Whatever
difference there may be will pale in insignificance in the face of an
Whether or not a trademark causes confusion and is likely to deceive the evident similarity in the dominant features and overall appearance of
public is a question of fact which is to be resolved by applying the "test of the labels of the parties.12
dominancy", meaning, if the competing trademark contains the main or
essential or dominant features of another by reason of which confusion and
deception are likely to result, then infringement takes place; that duplication On 19 December 1990, petitioner filed a motion for reconsideration of the
or imitation is not necessary, a similarity in the dominant features of the above-mentioned decision of the Court of Appeals.
trademark would be sufficient.
Private respondent opposed said motion on 8 January 1991 on grounds that it
The word "LEE" is the most prominent and distinctive feature of the involved an impermissible change of theory on appeal. Petitioner allegedly
raised entirely new and unrelated arguments and defenses not previously
appellant's trademark and all of the appellee's "LEE" trademarks. It is the
raised in the proceedings below such as laches and a claim that private
mark which draws the attention of the buyer and leads him to conclude that
respondent appropriated the style and appearance of petitioner's trademark
the goods originated from the same manufacturer. While it is true that there
are other words such as "STYLISTIC", printed in the appellant's label, such when it registered its "LEE" mark under Registration No. 44220.13
word is printed in such small letters over the word "LEE" that it is not
conspicuous enough to draw the attention of ordinary buyers whereas the On 17 May 1991, the Court of Appeals issued a resolution rejecting petitioner's
word "LEE" is printed across the label in big, bold letters and of the same motion for reconsideration and ruled thus:
color, style, type and size of lettering as that of the trademark of the appellee.
The alleged difference is too insubstantial to be noticeable. Even granting A defense not raised in the trial court cannot be raised on appeal for
arguendo that the word "STYLISTIC" is conspicuous enough to draw the first time. An issue raised for the first time on appeal and not raised
attention, the goods may easily be mistaken for just another variation or line timely in the proceedings in the lower court is barred by estoppel.
of garments under the ap appelle's "LEE" trademarks in view of the fact that
the appellee has registered trademarks which use other words in addition to The object of requiring the parties to present all questions and issues
the principal mark "LEE" such as "LEE RIDERS", "LEESURES" and "LEE to the lower court before they can be presented to this Court is to have
LEENS". The likelihood of confusion is further made more probable by the the lower court rule upon them, so that this Court on appeal may
fact that both parties are engaged in the same line of business. It is well to determine whether or not such ruling was erroneous. The purpose is
reiterate that the determinative factor in ascertaining whether or not the also in furtherance of justice to require the party to first present the
marks are confusingly similar to each other is not whether the challenged question he contends for in the lower court so that the other party may
mark would actually cause confusion or deception of the purchasers but not be taken by surprise and may present evidence to properly meet
whether the use of such mark would likely cause confusion or mistake on the issues raised.
the part of the buying public.

Page 4 of 10
 Moreover, for a question to be raised on appeal, the same must also MAY 5, 1989 OR MORE THAN EIGHT MONTHS AFTER THE
be within the issues raised by the parties in their pleadings. BUREAU OF PATENT'S DECISION DATED JULY 19, 1988.
Consequently, when a party deliberately adopts a certain theory, and
the case is tried and decided based upon such theory presented in the II. THE COURT OF APPEALS ERRED IN RULING THAT THE
court below, he will not be permitted to change his theory on appeal. DEFENSE OF ESTOPPEL BY LACHES MUST BE RAISED IN THE
To permit him to do so would be unfair to the adverse party. A question PROCEEDINGS BEFORE THE BUREAU OF PATENTS,
raised for the first time on appeal, there having opportunity to raise TRADEMARKS AND TECHNOLOGY TRANSFER.
them in the court of origin constitutes a change of theory which is not
permissible on appeal. III. THE COURT OF APPEALS ERRED WHEN IT CONSIDERED
PRIVATE RESPONDENT'S PRIOR REGISTRATION OF ITS
In the instant case, appellant's main defense pleaded in its answer TRADEMARK AND DISREGARDED THE FACT THAT PRIVATE
dated March 23, 1982 was that there was "no confusing similarity RESPONDENT HAD FAILED TO PROVE COMMERCIAL
between the competing trademark involved. On appeal, the appellant USE THEREOF BEFORE FILING OF APPLICATION FOR
raised a single issue, to wit: REGISTRATION.15

The only issue involved in this case is whether or not In addition, petitioner reiterates the issues it raised in the Court of Appeals:
respondent-registrant's trademark "STYLISTIC MR. LEE" is
confusingly similar with the petitioner's trademarks "LEE or I. THE ISSUE INVOLVED IN THIS CASE IS WHETHER OR
LEERIDERS, LEE-LEENS and LEE-SURES." NOT PETITIONER'S TRADEMARK SYTLISTIC MR. LEE, IS
CONFUSINGLY SIMILAR WITH THE PRIVATE
Appellant's main argument in this motion for reconsideration RESPONDENT'S TRADEMARK LEE OR LEE-RIDER, LEE-
on the other hand is that the appellee is estopped by laches LEENS AND LEE-SURES.
from asserting its right to its trademark. Appellant claims
although belatedly that appellee went to court with "unclean
II. PETITIONER'S EVIDENCES ARE CLEAR AND
hands" by changing the appearance of its trademark to make
SUFFICIENT TO SHOW THAT IT IS THE PRIOR USER AND
it identical to the appellant's trademark. ITS TRADEMARK IS DIFFERENT FROM THAT OF THE
PRIVATE RESPONDENT.
Neither defenses were raised by the appellant in the proceedings
before the Bureau of Patents. Appellant cannot raise them now for the
III. PETITIONER'S TRADEMARK IS ENTIRELY DIFFERENT
first time on appeal, let alone on a mere motion for reconsideration of
FROM THE PRIVATE RESPONDENT'S AND THE
the decision of this Court dismissing the appellant's appeal. REGISTRATION OF ITS TRADEMARK IS PRIMA FACIE
EVIDENCE OF GOOD FAITH.
While there may be instances and situations justifying relaxation of
this rule, the circumstance of the instant case, equity would be better IV. PETITIONER'S "STYLISTIC MR. LEE" TRADEMARK
served by applying the settled rule it appearing that appellant has not CANNOT BE CONFUSED WITH PRIVATE RESPONDENT'S
given any reason at all as to why the defenses raised in its motion for
LEE TRADEMARK.16
reconsideration was not invoked earlier.14
Petitioner contends that private respondent is estopped from instituting an
Twice rebuffed, petitioner presents its case before this Court on the following action for infringement before the BPTTT under the equitable principle of
assignment of errors: laches pursuant to Sec. 9-A of R.A. No. 166, otherwise known as the Law on
Trade-marks, Trade-names and Unfair Competition:
I. THE COURT OF APPEALS ERRED IN NOT FINDING THAT
PRIVATE RESPONDENT CAUSED THE ISSUANCE OF A FOURTH
Sec. 9-A. Equitable principles to govern proceedings. — In
"LEE" TRADEMARK IMITATING THAT OF THE PETITIONER'S ON
opposition proceedings and in all other inter partes
Page 5 of 10
 proceedings in the patent office under this act, equitable More crucial is the issue of confusing similarity between the two trademarks.
principles of laches, estoppel, and acquiescence, where Petitioner vehemently contends that its trademark "STYLISTIC MR. LEE" is
applicable, may be considered and applied. entirely different from and not confusingly similar to private respondent's "LEE"
trademark.
Petitioner alleges that it has been using its trademark "STYLISTIC MR. LEE"
since 1 May 1975, yet, it was only on 18 September 1981 that private Private respondent maintains otherwise. It asserts that petitioner's trademark
respondent filed a petition for cancellation of petitioner's certificate of tends to mislead and confuse the public and thus constitutes an infringement
registration for the said trademark. Similarly, private respondent's notice of of its own mark, since the dominant feature therein is the word "LEE."
opposition to petitioner's application for registration in the principal register was
belatedly filed on 27 July 1984.17 The pertinent provision of R.A. No. 166 (Trademark Law) states thus:

Private respondent counters by maintaining that petitioner was barred from Sec. 22. Infringement, what constitutes. — Any person who shall use,
raising new issues on appeal, the only contention in the proceedings below without the consent of the registrant, any reproduction, counterfeit,
being the presence or absence of confusing similarity between the two copy or colorable imitation of any registered mark or trade-name in
trademarks in question.18 connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which such use is likely
We reject petitioner's contention. to cause confusion or mistake or to deceive purchasers or others as
to the source or origin of such goods or services, or identity of such
Petitioner's trademark is registered in the supplemental register. The business; or reproduce, counterfeit, copy or colorably imitable any
Trademark Law (R.A. No. 166) provides that "marks and tradenames for the such mark or trade-name and apply such reproduction, counterfeit,
supplemental register shall not be published for or be subject to opposition, copy, or colorable imitation to labels, signs, prints, packages,
but shall be published on registration in the Official Gazette."19 The reckoning wrappers, receptacles or advertisements intended to be used upon or
point, therefore, should not be 1 May 1975, the date of alleged use by in connection with such goods, business or services; shall be liable to
petitioner of its assailed trademark but 27 October 1980,20 the date the a civil action by the registrant for any or all of the remedies herein
certificate of registration SR No. 5054 was published in the Official Gazette provided.
and issued to petitioner.
Practical application, however, of the aforesaid provision is easier said than
It was only on the date of publication and issuance of the registration certificate done. In the history of trademark cases in the Philippines, particularly in
that private respondent may be considered "officially" put on notice that ascertaining whether one trademark is confusingly similar to or is a colorable
petitioner has appropriated or is using said mark, which, after all, is the function imitation of another, no set rules can be deduced. Each case must be decided
and purpose of registration in the supplemental register.21 The record is bereft on its own merits.
of evidence that private respondent was aware of petitioner's trademark before
the date of said publication and issuance. Hence, when private respondent In Esso Standard Eastern, Inc. v. Court of Appeals,24 we held:
instituted cancellation proceedings on 18 September 1981, less than a year
had passed. . . . But likelihood of confusion is a relative concept; to be determined
only according to the particular, and sometimes peculiar,
Corollarily, private respondent could hardly be accused of inexcusable delay circumstances of each case. It is unquestionably true that, as stated
in filing its notice of opposition to petitioner's application for registration in the in Coburn vs. Puritan Mills, Inc.: "In trademark cases, even more than
principal register since said application was published only on 20 February in other litigation, precedent must be studied in the light of the facts of
1984.22 From the time of publication to the time of filing the opposition on 27 the particular case."
July 1984 barely five (5) months had elapsed. To be barred from bringing suit
on grounds of estoppel and laches, the delay must be Likewise, it has been observed that:
lengthy.23

Page 6 of 10
 In determining whether a particular name or mark is a "colorable The question at issue in cases of infringement of trademarks
imitation" of another, no all-embracing rule seems possible in view of is whether the use of the marks involved would be likely to
the great number of factors which must necessarily be considered in cause confusion or mistakes in the mind of the public or
resolving this question of fact, such as the class of product or business deceive purchasers. (Auburn Rubber Corporation vs.
to which the article belongs; the product's quality, quantity, or size, Honover Rubber Co., 107 F. 2d 588; . . .)32
including its wrapper or container; the dominant color, style, size, form,
meaning of letters, words, designs and emblems used; the nature of On the other side of the spectrum, the holistic test mandates that the entirety
the package, wrapper or container; the character of the product's of the marks in question must be considered in determining confusing
purchasers; location of the business; the likelihood of deception or the similarity.
mark or name's tendency to confuse;
etc.25 In determining whether the trademarks are confusingly
similar, a comparison of the words is not the only determinant
Proceeding to the task at hand, the essential element of infringement is factor. The trademarks in their entirety as they appear in their
colorable imitation. This term has been defined as "such a close or ingenious respective labels or hang tags must also be considered in
imitation as to be calculated to deceive ordinary purchasers, or such relation to the goods to which they are attached. The
resemblance of the infringing mark to the original as to deceive an ordinary discerning eye of the observer must focus not only on the
purchaser giving such attention as a purchaser usually gives, and to cause predominant words but also on the other features appearing
him to purchase the one supposing it to be the other."26 in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other.33
Colorable imitation does not mean such similitude as amounts
to identity. Nor does it require that all the details be literally Applying the foregoing tenets to the present controversy and taking into
copied. Colorable imitation refers to such similarity in form, account the factual circumstances of this case, we considered the trademarks
content, words, sound, meaning, special arrangement, or involved as a whole and rule that petitioner's "STYLISTIC MR. LEE" is not
general appearance of the trademark or tradename with that confusingly similar to private respondent's "LEE" trademark.
of the other mark or tradename in their over-all presentation
or in their essential, substantive and distinctive parts as would Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its
likely mislead or confuse persons in the ordinary course of label the word "LEE" is prominent, the trademark should be considered as a
purchasing the genuine article.27 whole and not piecemeal. The dissimilarities between the two marks become
conspicuous, noticeable and substantial enough to matter especially in the
In determining whether colorable imitation exists, jurisprudence has developed light of the following variables that must be factored in.
two kinds of tests — the Dominancy Test applied in Asia Brewery, Inc. v. Court
of Appeals 28 and other cases 29 and the Holistic Test developed in Del Monte First, the products involved in the case at bar are, in the main, various kinds of
Corporation v. Court of Appeals 30 and its proponent cases.31
jeans. These are not your ordinary household items like catsup, soysauce or
soap which are of minimal cost. Maong pants or jeans are not inexpensive.
As its title implies, the test of dominancy focuses on the similarity of the Accordingly, the casual buyer is predisposed to be more cautious and
prevalent features of the competing trademarks which might cause confusion discriminating in and would prefer to mull over his purchase. Confusion and
or deception and thus constitutes infringement. deception, then, is less likely. In Del Monte Corporation v. Court of Appeals, 34
we noted that:
. . . If the competing trademark contains the main or essential
or dominant features of another, and confusion and deception . . . Among these, what essentially determines the attitudes of
is likely to result, infringement takes place. Duplication or the purchaser, specifically his inclination to be cautious, is the
imitation is not necessary; nor it is necessary that the cost of the goods. To be sure, a person who buys a box of
infringing label should suggest an effort to imitate. [C. Neilman candies will not exercise as much care as one who buys an
Brewing Co. v. Independent Brewing Co., 191 F., 489, 495, expensive watch. As a general rule, an ordinary buyer does
citing Eagle White Lead Co., vs. Pflugh (CC) 180 Fed. 579]. not exercise as much prudence in buying an article for which
Page 7 of 10
 he pays a few centavos as he does in purchasing a more Another way of resolving the conflict is to consider the marks involved from the
valuable thing. Expensive and valuable items are normally point of view of what marks are registrable pursuant to Sec. 4 of R.A. No. 166,
bought only after deliberate, comparative and analytical particularly paragraph 4 (e):
investigation. But mass products, low priced articles in wide
use, and matters of everyday purchase requiring frequent CHAPTER II-A.— The Principal Register
replacement are bought by the casual consumer without great
care. . . . (Inserted by Sec. 2, Rep. Act No. 638.)

Second, like his beer, the average Filipino consumer generally buys his jeans Sec. 4. Registration of trade-marks, trade-names and service-marks
by brand. He does not ask the sales clerk for generic jeans but for, say, a on the principal register. — There is hereby established a register of
Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less trade-marks, trade-names and service-marks which shall be known as
knowledgeable and familiar with his preference and will not easily be the principal register. The owner of a trade-mark, trade-name or
distracted. service-mark used to distinguish his goods, business or services from
the goods, business or services of others shall have the right to
Finally, in line with the foregoing discussions, more credit should be given to register the same on the principal register, unless it:
the "ordinary purchaser." Cast in this particular controversy, the ordinary
purchaser is not the "completely unwary consumer" but is the "ordinarily (e) Consists of a mark or trade-name which, when applied to or used
intelligent buyer" considering the type of product involved. in connection with the goods, business or services of the applicant is
merely descriptive or deceptively misdescriptive of them, or when
The definition laid down in Dy Buncio v. Tan Tiao Bok 35 is better suited to the applied to or used in connection with the goods, business or services
present case. There, the "ordinary purchaser" was defined as one of the applicant is primarily geographically descriptive or deceptively
"accustomed to buy, and therefore to some extent familiar with, the goods in misdescriptive of them, or is primarily merely a surname; (Emphasis
question. The test of fraudulent simulation is to be found in the likelihood of ours.)
the deception of some persons in some measure acquainted with an
established design and desirous of purchasing the commodity with which that
"LEE" is primarily a surname. Private respondent cannot, therefore, acquire
design has been associated. The test is not found in the deception, or the
exclusive ownership over and singular use of said term.
possibility of deception, of the person who knows nothing about the design
which has been counterfeited, and who must be indifferent between that and
the other. The simulation, in order to be objectionable, must be such as . . . It has been held that a personal name or surname may
appears likely to mislead the ordinary intelligent buyer who has a need to not be monopolized as a trademark or tradename as against
supply and is familiar with the article that he seeks to purchase." others of the same name or surname. For in the absence of
contract, fraud, or estoppel, any man may use his name or
surname in all legitimate ways. Thus, "Wellington" is a
There is no cause for the Court of Appeal's apprehension that petitioner's
surname, and its first user has no cause of action against the
products might be mistaken as "another variation or line of garments under
junior user of "Wellington" as it is incapable of exclusive
private respondent's 'LEE' trademark".36 As one would readily observe, private
appropriation.37
respondent's variation follows a standard format "LEERIDERS," "LEESURES"
and "LEELEENS." It is, therefore, improbable that the public would
immediately and naturally conclude that petitioner's "STYLISTIC MR. LEE" is In addition to the foregoing, we are constrained to agree with petitioner's
but another variation under private respondent's "LEE" mark. contention that private respondent failed to prove prior actual commercial use
of its "LEE" trademark in the Philippines before filing its application for
registration with the BPTTT and hence, has not acquired ownership over said
As we have previously intimated the issue of confusing similarity between mark.
trademarks is resolved by considering the distinct characteristics of each case.
In the present controversy, taking into account these unique factors, we
conclude that the similarities in the trademarks in question are not sufficient as
to likely cause deception and confusion tantamount to infringement.
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Actual use in commerce in the Philippines is an essential prerequisite for the Ed., p. 20). Withal, the fact that international law has been made part
acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the of the law of the land does not by any means imply the primacy of
Philippine Trademark Law (R.A. No. 166) which explicitly provides that: international law over national law in the municipal sphere. Under the
doctrine of incorporation as applied in most countries, rules of
CHAPTER II. Registration of Marks and Trade-names. international law are given a standing equal, not superior, to national
legislative enactments.
Sec. 2. What are registrable. — Trade-marks, trade-names, and
service marks owned by persons, corporations, partnerships or In other words, (a foreign corporation) may have the capacity to sue
associations domiciled in the Philippines and by persons, for infringement irrespective of lack of business activity in the
corporations, partnerships, or associations domiciled in any foreign Philippines on account of Section 21-A of the Trademark Law but the
country may be registered in accordance with the provisions of this question of whether they have an exclusive right over their symbol as
act: Provided, That said trade-marks, trade-names, or service marks to justify issuance of the controversial writ will depend on actual use
are actually in use in commerce and services not less than two months of their trademarks in the Philippines in line with Sections 2 and 2-A of
in the Philippines before the time the applications for registration are the same law. It is thus incongruous for petitioners to claim that when
filed: And Provided, further, That the country of which the applicant for a foreign corporation not licensed to do business in the Philippines
registration is a citizen grants by law substantially similar privileges to files a complaint for infringement, the entity need not be actually using
citizens of the Philippines, and such fact is officially certified, with a its trademark in commerce in the Philippines. Such a foreign
certified true copy of the foreign law translated into the English corporation may have the personality to file a suit for infringement but
language, by the government of the foreign country to the Government it may not necessarily be entitled to protection due to absence of
of the Republic of the Philippines. (As amended.) (Emphasis ours.) actual use of the emblem in the local market.

Sec. 2-A. Ownership of trade-marks, trade-names and service-marks; Undisputably, private respondent is the senior registrant, having obtained
how acquired. — Anyone who lawfully produces or deals in several registration certificates for its various trademarks "LEE,"
merchandise of any kind or who engages in lawful business, or who "LEERIDERS," and "LEESURES" in both the supplemental and principal
renders any lawful service in commerce, by actual use hereof in registers, as early as 1969 to 1973.41 However, registration alone will not
manufacture or trade, in business, and in the service rendered; may suffice. In Sterling Products International, Inc. v. Farbenfabriken Bayer
appropriate to his exclusive use a trade-mark, a trade-name, or a Aktiengesellschaft,42 we declared:
service-mark not so appropriated by another, to distinguish his
merchandise, business or services from others. The ownership or A rule widely accepted and firmly entrenched because it has come
possession of trade-mark, trade-name, service-mark, heretofore or down through the years is that actual use in commerce or business is
hereafter appropriated, as in this section provided, shall be recognized a prerequisite in the acquisition of the right of ownership over a
and protected in the same manner and to the same extent as are other trademark.
property rights to the law. (As amended.) (Emphasis ours.)
It would seem quite clear that adoption alone of a trademark would not
The provisions of the 1965 Paris Convention for the Protection of Industrial give exclusive right thereto. Such right "grows out of their actual use."
Property 38 relied upon by private respondent and Sec. 21-A of the Trademark Adoption is not use. One may make advertisements, issue circulars,
Law (R.A. No. 166)39 were sufficiently expounded upon and qualified in the give out price lists on certain goods; but these alone would not give
recent case of Philip Morris, Inc. v. Court of Appeals:40 exclusive right of use. For trademark is a creation of use. The
underlying reason for all these is that purchasers have come to
Following universal acquiescence and comity, our municipal law on understand the mark as indicating the origin of the wares. Flowing
trademarks regarding the requirement of actual use in the Philippines from this is the trader's right to protection in the trade he has built up
must subordinate an international agreement inasmuch as the and the goodwill he has accumulated from use of the trademark.
apparent clash is being decided by a municipal tribunal (Mortisen vs. Registration of a trademark, of course, has value: it is an
Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 administrative act declaratory of a pre-existing right. Registration does
Sessions, 93; Paras, International Law and World Organization, 1971 not, however, perfect a trademark right.
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To augment its arguments that it was, not only the prior registrant, but also the On the other hand, petitioner has sufficiently shown that it has been in the
prior user, private respondent invokes Sec. 20 of the Trademark Law, thus: business of selling jeans and other garments adopting its "STYLISTIC MR.
LEE" trademark since 1975 as evidenced by appropriate sales invoices to
Sec. 20. Certificate of registration prima facie evidence of validity. — various stores and retailers.50
A certificate of registration of a mark or tradename shall be a prima
facie evidence of the validity of the registration, the registrant's Our rulings in Pagasa Industrial Corp. v. Court of Appeals 51 and Converse
ownership of the mark or trade-name, and of the registrant's exclusive Rubber Corp. v. Universal Rubber Products, Inc.,52 respectively, are
right to use the same in connection with the goods, business or instructive:
services specified in the certificate, subject to any conditions and
limitations stated therein. The Trademark Law is very clear. It requires actual commercial use of
the mark prior to its registration. There is no dispute that respondent
The credibility placed on a certificate of registration of one's trademark, or its corporation was the first registrant, yet it failed to fully substantiate its
weight as evidence of validity, ownership and exclusive use, is qualified. A claim that it used in trade or business in the Philippines the subject
registration certificate serves merely as prima facie evidence. It is not mark; it did not present proof to invest it with exclusive, continuous
conclusive but can and may be rebutted by controverting evidence. adoption of the trademark which should consist among others, of
considerable sales since its first use. The invoices submitted by
Moreover, the aforequoted provision applies only to registrations in the respondent which were dated way back in 1957 show that the zippers
principal register.43 Registrations in the supplemental register do not enjoy a sent to the Philippines were to be used as "samples" and "of no
similar privilege. A supplemental register was created precisely for the commercial value." The evidence for respondent must be clear,
registration of marks which are not registrable on the principal register due to definite and free from inconsistencies. "Samples" are not for sale and
some defects.44 therefore, the fact of exporting them to the Philippines cannot be
considered to be equivalent to the "use" contemplated by law.
Respondent did not expect income from such "samples." There were
The determination as to who is the prior user of the trademark is a question of
no receipts to establish sale, and no proof were presented to show
fact and it is this Court's working principle not to disturb the findings of the
Director of Patents on this issue in the absence of any showing of grave abuse that they were subsequently sold in the Philippines.
of discretion. The findings of facts of the Director of Patents are conclusive
upon the Supreme Court provided they are supported by substantial The sales invoices provide the best proof that there were
evidence.45 actual sales of petitioner's product in the country and that
there was actual use for a protracted period of petitioner's
In the case at bench, however, we reverse the findings of the Director of trademark or part thereof through these sales.
Patents and the Court of Appeals. After a meticulous study of the records, we
observe that the Director of Patents and the Court of Appeals relied mainly on For lack of adequate proof of actual use of its trademark in the Philippines prior
the registration certificates as proof of use by private respondent of the to petitioner's use of its own mark and for failure to establish confusing
trademark "LEE" which, as we have previously discussed are not sufficient. similarity between said trademarks, private respondent's action for
We cannot give credence to private respondent's claim that its "LEE" mark first infringement must necessarily fail.
reached the Philippines in the 1960's through local sales by the Post
Exchanges of the U.S. Military Bases in the Philippines46 based as it was solely WHEREFORE, premises considered, the questioned decision and resolution
on the self-serving statements of Mr. Edward Poste, General Manager of Lee are hereby REVERSED and SET ASIDE.
(Phils.), Inc., a wholly owned subsidiary of the H.D. Lee, Co., Inc., U.S.A.,
herein private respondent. 47 Similarly, we give little weight to the numerous SO ORDERED.
vouchers representing various advertising expenses in the Philippines for
"LEE" products. 48 It is well to note that these expenses were incurred only in
1981 and 1982 by LEE (Phils.), Inc. after it entered into a licensing agreement
with private respondent on 11 May 1981.49

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