JOSE STA. ANA v.
FLORENTINO MALIWAT of use, he is then under a heavy burden, and his proof
GR No. L-23023 – Aug. 31, 1968 – Reyes, J.B.L. must be clear and convincing.
FACTS: In the case at bar, the proof of date of first use (1953),
On 21 June 1962, Florentino Maliwat (respondent) filed earlier than that alleged in respondent Maliwat’s
with the Patent Office an application for registration of application (1962), can be no less than clear and
the trademark FLORMANN (used on shirts, pants, jackets convincing because the fact was stipulated and no proof
and shoes for ladies, men and children) claiming first use was needed.
in commerce of the said mark on 15 January 1962.
2. No.
On 18 September 1962, Jose P. Sta. Ana (petitioner) filed RA 166, as amended, provides:
an application for the registration of the trade-name Sec. 4. x x x. The ower of a trade-mark, trade-
FLORMEN SHOE MANUFACTURERS (used in the business name or service-mark used to distinguish his
of manufacturing ladies’ and children’s shoes claiming goods, business or services from the goods,
first use in commerce of the said trade-name on 8 April business or services of others shall have the
1959. right to register the same on the principal
register, unless it:
The Director of Patents (DP), in view of the admittedly xxx
confusing similarity between the trade-mark FLORMANN (d) Consists of or comprises a mark or trade-
and the trade-name FLORMEN, declared an interference. name which resembles a mark or trade-name
After trial, the DP gave due course to Maliwat’s registered in the PH or a mark or trade-name
application and denied that of Sta. Ana. The DP, based on previously used in the PH by another and not
facts stipulated in the course of the trial, found that abandoned, as to be likely, when applied to or
Maliwat was the prior adopter and user of the mark. used in connection with the goods, business or
services of the applicant, to cause confusion or
Also, petitioner Sta. Ana alleged that respondent mistake or to deceive purchasers;
Maliwat’s use of the mark FLORMANN should be confined x x x.”
to tailoring and haberdashery only, but not on shoes, on
the ground that petitioner had used the name FLORMEN The abovementioned provision does not require that the
on shoes since 1959, while respondent used his mark on articles of manufacture of the previous used and the late
shoes only in 1962. However, the DP ruled that “it is now used of the mark should possess the same descriptive
the common practice among local tailors and properties or should fall into the same categories as to
haberdashers to branch out into articles of manufacture bar the latter from registering his mark in the principal
which have, one way or another, some direct relationship register.
with or appurtenance to garments or attire to complete
one's wardrobe such as belts, shoes, handkerchiefs, and Therefore, whether or not shirts and shoes have the same
the like, xxx. It goes without saying that shoes on one descriptive properties, or whether or not it is the
hand and shirts, pants and jackets on the other, have the prevailing practice or the tendency of tailors and
same descriptive properties for purposes of our haberdashers to expand their business into shoemaking,
Trademark Law” are not controlling. The meat of the matter is the
likelihood of confusion, mistake or deception upon
ISSUE: purchasers of the goods of the junior user of the mark
1. WON respondent Maliwat has the better right to the and the goods manufactured by the previous user.
use of the subject mark.
2. WON respondent Maliwat’s use of the mark In the case at bar, the resemblance or similarity of the
FLORMANN could be confined only to tailoring and mark FLORMANN and the name FLORMEN and the
haberdashery. likelihood of confusion, one to the other, is admitted;
hence, the prior adopted, respondent Maliwat, has the
HELD: better right to the use of the mark.
1. Yes.
An application for registration is not bound by the date of Conclusion: The decision of the Director of Patents is
first use as stated by him in his application, but is entitled affirmed.
to carry back said stated date of first use to a prior date
by proper evidence; but in order to show an earlier date
