G.R. No. L-18337; January 30, 1965
CHUA CHE, petitioner, vs. PHILIPPINES PATENT OFFICE and SY TUO, respondents.

FACTS

Petitioner Chua Che filed an application with the Philippines Patent Office for registration of the trademark “X-7” for use on soap (Class 51), claiming first use on June 10, 1957. The application was recommended for allowance and published. Respondent Sy Tuo opposed the registration, alleging that he was the prior user and registered owner of the identical trademark “X-7” under Certificate of Registration No. 5,000 issued April 21, 1951, which he had used extensively and continuously since July 31, 1953, on perfume, lipstick, and nail polish. Sy Tuo argued that registration in favor of Chua Che would violate Section 4(d) of Republic Act No. 166 (the Trademark Law), cause confusion among the purchasing public, and infringe upon his established goodwill, supported by substantial advertising expenditures. Chua Che admitted Sy Tuo’s registration but contended that Sy Tuo had not used the mark on soap, whereas he (Chua Che) had used it on laundry soap since 1957, making him entitled to registration based on priority of adoption and use for that specific product. The Director of Patents sustained Sy Tuo’s opposition and rejected Chua Che’s application, finding that Sy Tuo had priority of use and that purchasers would likely associate “X-7” laundry soap with Sy Tuo’s “X-7” toilet articles, assuming common origin or trade connection.

ISSUE

Whether the Director of Patents erred in denying Chua Che’s application for registration of the trademark “X-7” on soap, based on Sy Tuo’s prior registration and use of the same mark on different but related products, and the likelihood of public confusion.

RULING

The Supreme Court affirmed the decision of the Director of Patents, denying Chua Che’s application. The Court held:
1. The finding of the Director of Patents that Sy Tuo had priority of use and adoption of the trademark “X-7” (since July 31, 1953, compared to Chua Che’s June 10, 1957) is a factual conclusion supported by substantial evidence and is thus conclusive on review.
2. Sy Tuo’s non-actual use of the mark on granulated (laundry) soap does not negate his right to protection, as he had already established valuable goodwill in the trademark through extensive use and advertising on allied products (perfume, lipstick, nail polish).
3. The products of both parties, though not identical, are common household items with overlapping purchasers. The use of “X-7” on laundry soap by Chua Che would be a natural expansion of Sy Tuo’s business, and the average purchaser would likely associate the soap with Sy Tuo’s products, leading to confusion as to origin or sponsorship.
4. Under trademark law, registration should be refused where there is a likelihood of confusion, mistake, or deception, even if the goods fall into different categories. Protection of Sy Tuo’s rights and the public interest outweigh Chua Che’s claim.
Costs were imposed on Chua Che.