CHUA CHE vs. PHILIPPINE PATENT OFFICE

G.R. No. L-18337 | January 30, 1965 | Paredes, J.

Petitioner: Chua Che

Respondents: Philippine Patent Office, SyTuo

Summary:

Chua Che wanted to register the trademark X-7 for use on his laundry soap products. SyTuo opposed the registration because he alleged that he used such trademark first, has already registered it and already spent heavily on advertising the mark. SyTuo uses it on perfumes, lipstick, and nail polish, and is now planning to produce granulated soap using the same mark. Chua Che argued that his registration should be granted because laundry soap is different from perfumes, lipstick, and nail polish. The Director of Patents ruled for SyTuo because even though the products are specifically different, they nevertheless have common purchasers, hence, confusion might arise. The Supreme Court agreed with the Driector of Patents, and said that while it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake, or deception, even though the goods fall into different categories.The products of SyTuo are common household items now-a-days, in the same manner as laundry soap. Registration should be denied.Facts:

On October 30, 1958, Chua Che filed a petition with the Phil. Patent Office praying for the registration of the trade name of X-7[wanted to use it for a soap]. The following are the pertinent portions of the petition: He is a Chinese citizen, resident of 2804 Limay St., Tondo, doing business at the same address, and has adopted and used the trademark X-7(accompanied by a drawing in the petition, but it was not described in the case). He first used the TM on June 10, 1957, in commerce in or with the Philippines. He has been continuously using it in trade for more than one year, and applied it to the goods by directly impressing the mark, or to packages containing the same by placing thereon a printed label. The TM is classified according to Rule 82 of the Official Classification of Goods as CLASS 51 SOAP. He believes that he is the lawful owner of the TM. That the said trademark is in actual use in commerce not less than two months before the application is filed. No other person, partnership, corporation, or association, to the best of his knowledge and belief, has the right to use said trademark in the Philippines, either in the identical form or in any such near resemblance thereto as might be calculated to deceive. An examiner of the Department of Commerce and Industry recommended the allowance of the application, and was approved [preliminarily] by the Supervising TM Examiner. After this, the notice of allowance was published in the Official Gazette. Respondent SyTuo saw such notice, and filed an opposition to the allowance of Chua Ches application. The following are the pertinent portions of the opposition. Chua Ches registration will violate the rights and interests of SyTuo over his registered trademark X-7 covered by Certificate of Reg. No. 5000 issued on April 21, 1951. Such registration will also tend to mislead the purchasing public and make it convenient for unscrupulous dealers to pass off the goods of Chua Che as that of SyTuos. Such registration will be in violation of Sec. 4(d) of R.A. No. 166 because it is confusingly similar to the trademark X-7 being used by SyTuo. SyTuo has not abandoned the TM yet. SyTuo, doing business as the Western Cosmetic Laboratory, relies on the following grounds: He has prior use of the TM X-7. He has been using it extensively and continuously since July 31, 1952, while Chua Che allegedly used his TM only since June 10, 1957. The X-7 mark, invented by SyTuo, is distinctive, and not merely an ordinary, common, and weak mark. SyTuo and Chua Che use the TM X-7 for allied and closely related products. SyTuo already spent a huge amount for advertising it, and has spent a big amount in expanding his business for the manufacture of toilet soap and crystal laundry soap with his already popular X-7 brand (CAUTION: X-7 is not yet being used on soap at this point. You will see later that it is being used on other articles. He only plans to use it on soap as well because X-7 is already popular). Anyone is likely to be misled as to the source of origin by the close resemblance or identity of both marks.

Chua Che countered, and claimed that the grounds of SyTuo are not correct, since although it is admitted that "X-7" is registered in the name of oppositor, said trademark is not being used on soap, but purely toilet articles. The Director of Patents ruled in favor of SyTuo and rejected the application of Chua Che. The following are the pertinent portions of his decision: There is not question that SyTuo first used the trademark on July 13, 1953, compared to Chua Ches first use on June 10, 1957. The only question in this case is WON purchasers of X-7 perfume, lipstick, and nail polish would likely upon seeing X-7 laundry soap, attribute common origin to the products/assume that there is some kind of trade connection between them. (Note: So ngayonlang to pinakita. SyTuo uses X-7 for perfumes, lipstick, and nail polish, while Chua Che uses it for Laundry Soap). SyTuo spent heavily on advertisement for the promotion of the mark. In these advertisements, SyTuo enjoys a valuable goodwill in the TM. The products of the parties, while specifically different, are products intended for use in the home and usually have common purchasers. Furthermore, the use of X-7 for laundry soap is but a natural expansion of business of SyTuo. In fact, SyTuo, in 1956, prior to the alleged date of first use by Chua Che, had made steps in expanding the use of this trademark to granulated soap. Under these circumstances, it is concluded that the average purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think that the products have common origin of sponsorship. Hence, this petition.Issue/Held

Whether or not the use of X-7 by Chua Che would likely mislead purchasers YES.

Dispositive Portion:

PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is hereby affirmed in all respects, with costs against appellant CHUA CHE in both instances.So Ordered.Ratio Preliminary: The finding of the Director of Patents to the effect that opposer-appellee SyTuo had priority of use and adoption of the trademark "X-7", is for all intents and purposes, one of fact. This being the case, such finding becomes conclusive to this Court Note that in this case, SyTuo has not yet used the trademark X-7 on soap. The circumstance of non-actual use of the mark "X-7" on granulated soap by SyTuo,does not detract from the fact that he has already a right to such a trademark and should, therefore, be protected. The observation of the Director of Patents to the effect that "the average purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think that the products have common origin or sponsorship," is indeed well taken.

The contention of Chua Che that the product upon which X-7 will be used (laundry soap) is different from that of SyTuos does not hold water. IMPT: MAIN DOCTRINE - While it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, as previously required under the Trade Mark Act of 1905, registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake, or deception, even though the goods fall into different categories. The products of SyTuo are common household items now-a-days, in the same manner as laundry soap.

The likelihood of purchasers to associate these products to a common origin is not far-fetched.

Both from the standpoint of priority of use and for the protection of the buying public and, of course, appellees rights to the trademark "X-7", it becomes manifest that the registration of said trademark in favor of Chua Che should be denied.