GR L 17901; (October, 1965) (Digest)
G.R. No. L-17901 October 29, 1965
OPERATORS, INCORPORATED, petitioner, vs. THE DIRECTOR OF PATENTS, ET AL., respondents.
FACTS
Petitioner Operators, Incorporated, a domestic corporation, applied to the Philippine Patent Office for registration of the trademark “AMBISCO” for its locally manufactured candy products. It had been using said trademark since May 1956 by virtue of two contracts with the American Biscuit Company, also a domestic corporation. Respondent National Biscuit Company, a corporation organized in the United States, opposed the application. The oppositor had previously registered “NABISCO” as a trademark for its bakery goods (biscuits, crackers, cakes, wafers) in the Philippines since 1930, with registration renewed in 1948. The Director of Patents denied the application, finding the trademarks “AMBISCO” and “NABISCO” to be so similar as to cause confusion among purchasers. The Director did not resolve the secondary issue of whether petitioner had the right to apply for registration of “AMBISCO,” as it was owned by the American Biscuit Co., Inc., per a certification from the corporations’ presidents stating that all trademarks used by petitioner under their contracts were considered property of the American Biscuit Co., Inc. Petitioner moved for reconsideration, which was denied, prompting this review.
ISSUE
1. Whether petitioner had the right to apply for registration of the trademark “AMBISCO” given the question of ownership.
2. Whether the trademarks “AMBISCO” and “NABISCO” are so similar as to cause confusion, mistake, or deception of purchasers.
RULING
The Supreme Court affirmed the decision of the Director of Patents, denying the application for registration.
1. On the issue of ownership, the Court held that the right to register a trademark under Republic Act No. 166 is based on ownership. The evidence, specifically a joint certification from the presidents of American Biscuit Co., Inc. and Operators, Incorporated, established that the trademark “AMBISCO” was owned by the American Biscuit Co., Inc., not by petitioner. The Court ruled that public interest is involved in trademark registration, and it is incumbent upon the applicant to prove compliance with all legal requisites, including ownership, even if not specifically raised by the parties.
2. On the issue of similarity, the Court agreed with the Director of Patents that considering the similarities in appearance and sound between “AMBISCO” and “NABISCO,” the nature and similarity of the parties’ products, and the fact that opposer’s “NABISCO” had been used in commerce in the Philippines for over 55 years before “AMBISCO” was adopted, confusion of purchasers is likely. Applying the test of dominancy and citing precedents (Co Tiong vs. Director of Patents, Celanese Corp. of America vs. Du Pont, Sapolin Co. vs. Balmaceda), the Court held that duplication or exact imitation is not necessary for infringement; likelihood of confusion or deception is sufficient.