EN BANC
[ G.R. No. 270575, January 28, 2026 ]
AUTOPHIL ZONE SALES CORPORATION v. DIRECTOR OF BUREAU OF TRADEMARKS +
AUTOPHIL ZONE SALES CORPORATION, PETITIONER, VS. DIRECTOR OF BUREAU OF TRADEMARKS, RESPONDENT.
D E C I S I O N
LOPEZ, J.:
Given the increasing complexities in intellectual property law, and in recognition that courts are not equipped with technical expertise, courts are implored to apply a more objective examination through the presentation of substantial evidence. The requirement to prove the likelihood of confusion through substantial evidence only applies when private parties are involved other than the applicant themselves. Verily, during the trademark application stage, trademark examiners of the Intellectual Property Office of the Philippines are not required to prove that their findings were anchored on substantial evidence, as examiners are guided not only by jurisprudence and existing rules, to make a well-informed conclusion to determine the likelihood of confusion.
This Court resolves a Petition for Review on Certiorari[1] assailing the Decision[2] of the Court of Appeals (CA), which upheld the Decision[3] of the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL). The Decision of the ODG affirmed the Decision[4] of the Director of the Bureau of Trademarks denying petitioner Autophil Zone Sales Corporation's (Autophil) registration for the mark "FUJI METAL STYLIZED."[5]
Antecedents
The instant controversy stemmed from a Trademark Application[6] filed by Autophil, a domestic corporation engaged in the importation and distribution of automotive spare parts, seeking to register its mark, "FUJI METAL STYLIZED."[7]
On September 27, 2017, Examiner Ana Maida J. Zamora (Examiner Zamora) issued a Registrability Report[8] denying Autophil's application as its mark resembled a previously registered mark "FUJI" under a certain Terrence Santos (Santos) and a mark then pending registration, also using the word "FUJI," under Leo Tire Manufacturing Corporation (Leo Tire).[9]
Autophil, through counsel, responded that its mark was not similar to those of Santos and Leo Tire, given its distinctive design and use of stylized lettering. If only, the sole similarity between the other marks was the use of the word "FUJI." In any event, Autophil raised that the word "FUJI" was diluted, having been incorporated in several registered trademarks in the Philippines. Finally, it added that confusion was highly unlikely, given that buyers of vehicles and automotive parts and accessories are particularly intelligent and would be capable of making a distinction between Autophil's products and the goods sold by the other owners of the other "FUJI" marks.[10]
On July 11, 2019, Examiner Zamora issued a Refusal[11] reiterating the denial of Autophil's application for registration. She explained that despite the distinctive elements of Autophil's mark, it fell short of curing the likelihood of confusion. A side-by-side comparison of the goods showed that they cover the same class of goods and cater to the same channels of trade and class of consumers.[12]
Aggrieved, Autophil appealed to the Director of the Bureau of Trademarks.[13]
On December 16, 2020, Director Leny B. Raz (Director Raz) of the Bureau of Trademarks rendered a Decision[14] affirming the denial of Autophil's application for registration. Contrary to Autophil's assertion, Director Raz ruled that its mark and the cited marks of Santos and Leo Tire nearly resemble each other in appearance and overall impression due to the word "FUJI" as the dominant feature. Thus, Director Raz opined that by merely looking at the marks, consumers would likely be confused as they would recall the name "FUJI," and not the distinctive elements raised by Autophil. To further affirm the application's denial, Director Raz also raised that the goods of the subject marks were closely related, all of which involve automotive parts.[15]
Expectedly, Autophil appealed to the ODG.[16]
On December 13, 2022, the ODG dismissed Autophil's appeal and sustained the findings of Director Raz.[17] Invoking the dominancy test, the ODG held that the dominant feature of Autophil's mark and the other cited marks, "FUJI," is unmistakable and would most likely cause consumer confusion. Thus, the ODG would not be inclined to register a mark with a dominant feature similar to existing registered marks.[18]
On January 13, 2023, Autophil elevated the case to the CA via a Petition for Review[19] under Rule 43 of the Rules of Court. In its Petition, Autophil urged the CA to reverse and set aside the Decision of the ODG and to approve its application for registration.[20]
In its Decision,[21] the CA denied the Petition filed by Autophil and affirmed the Decision of the ODG.[22] Aside from affirming the factual findings and expertise of the IPOPHL, the CA concurred that Autophil's mark cannot be registered for being a colorable imitation of other marks, which would most likely lead to confusion of ordinary purchasers.[23] Similarly invoking the dominancy test, the CA observed that the meaning and overall impression of the marks showed no stark difference between them, as the prevalent features of Autophil's mark were phonetically and aurally the same as that of Santos and Leo Tire.[24] Also agreeing with the ODG, the CA held that the likelihood of confusion was further bolstered due to the similarity of the goods covered by the marks.[25] The CA disposed in this wise:
In advocacy of its position, Autophil impugns reversible error on the assailed Decision of the CA. It insists that while the word "FUJI" appears as the dominant feature in Autophil's mark, it should not be a reason to bar its registrability, as to do otherwise would be tantamount to a denial of equal treatment and protection. Specifically, Autophil points out that the IPOPHL has previously allowed multiple and various trademark registrations that incorporate the word "FUJI" as the dominant element. Appropriately then, the same treatment and applications must be made for Autophil's mark.[28] Given that several registered trademarks have used the word "FUJI," Autophil further opines that the word has ceased to be distinctive as it has been used widely and publicly. Thus, an ordinary consumer would less likely be confused when such goods bearing the same word are found in the market.[29]
In its Comment,[30] the Office of the Solicitor General (OSG), in behalf of Director of the Bureau of Trademarks, maintains that the CA correctly upheld the ODG Decision, given its glaring similarity with the marks of Santos and Leo Tire.[31] Also applying the dominancy test, the OSG also finds that Autophil's mark were visually and aurally identical to the other registered marks containing the word "FUJI." In effect, the marks can reasonably be assumed by consumers to originate from a common source or that consumers might mistake one for the other.[32] Given the likelihood of confusion, the OSG prays that the denial of Autophil's registration be sustained.
Issue
The primordial issue to be resolved boils down to whether petitioner Autophil Zone Sales Corporation is entitled to its trademark registration, given that its mark could cause confusion to the public.
This Court's Ruling
The Petition lacks merit.
Dealing first with the procedural matter interposed by the OSG, it is necessary to stress that in a petition for review on certiorari, only questions of law may be raised, as questions of fact are not a proper subject of an appeal by certiorari.[33] Whether the denial of petitioner's application was proper due to the likelihood of confusion is indubitably a question of fact, as it requires this Court to conduct its own independent analysis by reexamining the evidence previously passed upon. Certainly, this Court is not duty-bound to review facts, as it is not its function to "analyze or weigh all over again evidence already considered in the proceedings below."[34]
While jurisprudence recognizes certain exceptions[35] to this rule, none are obtaining in this case. Consequently, this Court is hard-pressed to sustain the factual findings of respondent.
At any rate, this Court finds no reason to disturb the findings of the CA, having been made in accordance with law and jurisprudence. Verily, the denial of petitioner's registration is deemed proper.
Trademark is defined in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.[36] as "any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others."[37] As intellectual property, it is deserving of protection by law.[38] Citing the United States case of Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.,[39] this Court, in Philip Morris, Inc. v. Fortune Tobacco Corp.,[40] underscored the rationale for trademark protection, viz.:
Materially, it is the registration of a trademark that entitles an owner to protection. Pertinent to this case, Section 147[43] of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, grants trademark owners protection against third parties from using their trademark, or those identical or similar to their registered trademark, where such use would result in a likelihood of confusion. As emphasized in Zulueta v. CYMA Greek Taverna Co.,[44] trademarks are sought to be protected "to safeguard the public as consumers against confusion on these goods or services."[45] This scope of protection includes the proscription of the registration of marks that may cause confusion when compared to previously registered marks. Section 123.1(d) of Republic Act No. 8293 is clear:
To determine the likelihood of confusion, regardless of whether it arises from a confusion of goods or a confusion of business, the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases[49] instructs that courts must take into consideration the general impression of the ordinary purchaser, buying under prevalent conditions and the visual, aural and connotative comparisons of the trademarks in question. To be specific, this Court laid down a spectrum of factors in Rule 18, Section 5 of the abovementioned Rule, such as but not limited to:
Measured against the crucible of these two factors, petitioner's mark causes the likelihood of confusion.
In assessing the resemblance of marks, jurisprudence has fashioned two tests, namely, the Dominancy Test and the Holistic or the Totality Test. As expounded in Dy v. Court of Appeals:[52]
For ease of reference, the subject marks are reproduced in the following table:
Discernibly, the word "FUJI," all written out in plain block upper case letters, appears as the prevalent feature of all three marks. However, this Court observes that Santos's mark encloses the word "FUJI" in a colored rectangle, in contrast to the marks of petitioner and Leo Tire which are not laid out against any shape or color.[58] This minute difference is immaterial and should be disregarded. A simple comparison between the marks reveals that such distinction makes no perceptible difference in terms of appearance, sound, connotation, or overall impression, given that the word "FUJI" itself is the subject of registration.
For another, petitioner's argument that the addition of the word "METAL" to negate any impression of confusion does little for its cause.
The case of Societe Des Produits, Nestle, S.A. v. Puregold Price Club, Inc.[59] finds particular application in this case. In Societe, the respondent sought to register its trademark, "COFFEE MATCH" with the IPOPHL for its coffee products. Petitioner filed an opposition, alleging that it was the exclusive owner of an internationally well-known mark, "COFFEE-MATE."[60] This Court, making direct reference to Section 123.1(h)[61] of Republic Act No. 8293, held that while the respondent's mark may be subject to registration, the word "COFFEE" as part of its mark may not be considered in determining distinctiveness for being generic and descriptive. By definition, generic terms are those which constitute "the common descriptive name of an article or substance," or those which "refer to the basic nature of the wares or services provided[.]"[62] Accordingly, these terms are part of the public domain and cannot be exclusively appropriated or registered by the parties, nor can it be monopolized as a trademark.[63] This Court, in assessing registrability, thus, concluded that it may only consider the other elements of petitioner's mark as paired with the generic word in determining the likelihood of confusion.
In the instant case, it is plain that the word "METAL" is not subject to registration for being generic and descriptive of the goods that it seeks to identify-in this case, automobile spare parts. Effectually, neither may it be considered nor even used as a determining factor to distinguish petitioner's mark in relation to that of Santos and Leo Tire. Without any clear-cut element to distinguish petitioner's mark, there is nothing that would eradicate the possibility of mistake or confusion due to the marks' resemblance.
This visible resemblance between the marks was even further amplified by the relatedness of the goods involved.
In determining relatedness, this Court points out that pursuant to its ruling in Kolin, it had already abandoned the use of product or service classification as a factor in determining relatedness or nonrelatedness, given that it serves an administrative purpose, to provide trademark offices worldwide with an efficient manner to organize trademark applications. Instead, this Court has shifted to applying the factors laid down in Mighty Corporation v. E. & J. Gallo Winery[64] in analyzing relatedness, thus:
According to petitioner's trademark application form, the goods under the mark "FUJI METAL STYLIZED" pertain to automotive parts and fittings, including "leaf spring, U-bolt and radiator, pinion ring gear, and crank shaft."[66] On the other hand, Santos's mark "FUJI" covers automobile parts, such as: "wiper linkage, wiper motor, transmission filters, collar and lock rings, flywheel ring gears, main drive retainer assembly, main shaft assembly, synchronizer assembly, counter gear assembly, counter gear haft, counter gear pilot bearing, counter gear thrust washer, doorlock, timing belt, timing belt idler bearing, timing beat idler bearing with bracket assembly[,]"[67] to name a few. On the other hand, Leo Tire's mark "FUJI" involves "[m]otorcycle, bicycle, and automobile tires and interior."[68] Taken together, it is plain that the goods all involve automotive parts, and, thus, belong to the same class of products and serve the same purpose. More, it may be found in the same channels of trade, and may appeal to the same purchasers. It is therefore not difficult to imagine that ordinary purchasers would safely presume that these goods come from the same business or source.
In addition to the factors introduced in Mighty Corporation, another basis for finding relatedness is complementarity.
Finding the ruling of the US Trademark Trial and Appeal Board in Hewlett Packard Development Company, L.P. v. Vudu, Inc.[69] logical and persuasive, this Court held in Kolin that the petitioner's goods consisting of "automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, PA amplified AC-DC"[70] in relation to the respondent's goods, "televisions, DVD players,"[71] are complementary and may be used together, thus, increasing the likelihood of confusion.[72] Notably, this factor of complementarity was similarly echoed in the later case of Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc.[73]
Applying this reasoning to the present dispute, this Court finds that by their descriptions, the goods covered by petitioner's mark are indeed complementary to those covered by the marks of Santos and Leo Tire, as they may be used for the same purpose, namely, for automobiles and other vehicles.
At this juncture, this Court is cognizant of its recent ruling in Innolab Industries, Inc. v. Unilab Laboratories, Inc.,[74] where it bared the realities of how courts assess the likelihood of confusion: owing perhaps to the growing complexities in the field of intellectual property law, courts have "had to resort to 'unsubstantiated assumptions and generalizations about consumers and their behavior, arbitrary categorizations of goods and services, and even outright derogatory classist stereotypes.'"[75]
Consequently then, this Court, in Innolab, citing the Separate Concurring Opinion of Senior Associate Justice Marvic Mario Victor F. Leonen, underscored the need for evidence-based standards to determine the likelihood of confusion, which may be "through testimonies of 'stringently qualified' witnesses, or market surveys 'conducted with the appropriate methodology, proper sampling and scope, and the relevant market conditions.'"[76] Thus, this Court concluded that parties opposing a mark sought to be registered must present substantial evidence, or "evidence a reasonable mind might accept as adequate to support a conclusion,"[77] as the quantum of evidence required in intellectual property cases.[78] In the same manner, courts or other hearing tribunals must likewise anchor their conclusions on substantial evidence thus, avoiding "making inferences," most especially "where no evidence has been put forth to prove it."[79]
To be sure, the onus to present substantial evidence to prove the likelihood of confusion only arises when private parties are involved other than the applicant themselves. Associate Justice Alfredo Benjamin S. Caguioa aptly points out that at the application stage, when the applicant is before the trademark examiners of the IPO, the trademark examiners are not required to prove their finding by substantial evidence, given that "the IPO acts as a specialized regulatory body tasked to, among other, protect the buying public from being deceived or confused on what products to purchase."[80] Verily, apart from the guiding principles laid down in jurisprudence, trademark examiners likewise adhere to the Association of Southeast Asian Nations Common Guidelines for the Substantive Examination of Trademarks (Common Guidelines).[81] The Common Guidelines recognize that while a trademark examiner's analysis and appreciation of each case to determine the likelihood of confusion involves a degree of subjectivity, it laid down the following standard examination criteria to consider, thus:
Further, given the lack of any distinct visual and aural differences of the marks upon the application of the Dominancy Test, and the clear relatedness of the items covered by the subject marks, this Court finds no reason to depart from respondent's findings and reject the registration of petitioner's mark.
ACCORDINGLY, the Petition is DENIED. The November 13, 2023 Decision of the Court of Appeals in CA-G.R. SP No. 176717 is AFFIRMED. Trademark Application No. 4-2017-00013013 filed by petitioner Autophil Zone Sales Corporation is DENIED.
SO ORDERED.
Gesmundo, C.J., Inting, Zalameda, Gaerlan, Rosario, Dimaampao, Marquez, Kho, Jr., and Villanueva, JJ., concur.
Leonen, SAJ., Caguioa, and Hernando, JJ., see concurring opinions.
Lazaro-Javier, J., with concurrence.
Singh,* J., on leave.
* On leave.
[1] Rollo, pp. 34-63.
[2] Id. at 11-33. The November 13, 2023 Decision in CA-G.R. SP No. 176717 was penned by Associate Justice Rex Bernardo L. Pascual and concurred in by Associate Justices Gabriel T. Robeniol and Tita Marilyn B. Payoyo-Villordon of the Special Ninth Division, Court of Appeals, Manila.
[3] Id. at 88-93. The December 13, 2022 Decision in Appeal No. 04-2021-0018 was penned by Director General Rowel S. Barba, Intellectual Property Office of the Philippines, Taguig City.
[4] Id. at 94-97. The December 16, 2020 Decision in Application No. 4-2017-00013013 was penned by Director Leny B. Raz, Bureau of Trademarks, Taguig City.
[5] Id.
[6] Id. at 101-103.
[7] Id.
[8] Id. at 105-107.
[9] Id.
[10] Id. at 109.
[11] Id. at 99.
[12] Id.
[13] Id. at 118-120.
[14] Id. at 94-97.
[15] Id. at 96.
[16] Id. at 156-173.
[17] Id. at 88-93.
[18] Id. at 93.
[19] Id. at 261-295.
[20] Id. at 289.
[21] Id. at 11-32.
[22] Id. at 31-32.
[23] Id. at 19-24.
[24] Id. at 24-25.
[25] Id. at 26.
[26] Id. at 31-32.
[27] Id. at 34-63.
[28] Id. at 47-51.
[29] Id. at 53.
[30] Id. at 543-566.
[31] Id. at 550-551.
[32] Id. at 556.
[33] See Gatan v. Vinarao, 820 Phil. 257, 266 (2017) [Per J. Leonardo-De Castro, First Division].
[34] Miro v. Vda. de Erederos, 721 Phil. 772, 785 (2013) [Per J. Brion, Second Division].
[35] Medina v. Mayor Asistio, Jr., 269 Phil. 225, 232 (1990) [Per J. Bidin, Third Division].
[36] 642 Phil. 503 (2010) [Per J. Nachura, Second Division].
[37] Id. at 510-511. (Citation omitted)
[38] Id. at 511.
[39] 316 U.S. 203 (1942).
[40] 526 Phil. 300 (2006) [Per J. Garcia, Second Division].
[41] Id. at 310.
[42] W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., 822 Phil. 23, 33 (2017) [Per J. Perlas-Bernabe, Second Division]. (Citation omitted)
[43] SECTION 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use.
[44] 934 Phil. 34 (2023) [Per J. Kho, Jr., Second Division].
[45] Id. at 41.
[46] Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838, 852 (1969) [Per J. Sanchez, En Banc].
[47] Id.
[48] Mang Inasal Philippines, Inc. v. IFP Manufacturing Corp., 811 Phil. 261, 272 (2017) [Per J. Velasco, Jr., Third Division]. (Citation omitted)
[49] SC A.M. No. 10-3-10-SC, October 19, 2020.
[50] 896 Phil. 190 (2021) [Per J. Caguioa, En Banc].
[51] Id. at 216.
[52] 807 Phil. 819 (2017) [Per C.J. Sereno, First Division].
[53] Id. at 830-831.
[54] 480 Phil. 402 (2004) [Per J. Carpio, First Division].
[55] Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., 896 Phil. 190, 218-220 (2021) [Per J. Caguioa, En Banc].
[56] Berris Agricultural Co., Inc. v. Abyadang, 647 Phil. 517, 533 (2010) [Per J. Nachura, Second Division].
[57] Rollo, pp. 102, 106-107.
[58] Id.
[59] 817 Phil. 1030 (2017) [Per Acting C.J. Carpio, Second Division].
[60] Id. at 1047.
[61] Republic Act No. 8293 (1997), sec. 123.1(h) states:
[63] See Societe Des Produits, Nestle, S.A. v. Puregold Price Club, Inc., 817 Phil. 1030, 1047 (2017) [Per Acting C.J. Carpio, Second Division].
[64] 478 Phil. 615 (2004) [Per J. Corona, Third Division].
[65] Id. at 662-663.
[66] Rollo, p. 102.
[67] Id. at 106.
[68] Id.
[69] Opposition No. 91185393, October 26, 2009, available at https://ttabvue.uspto.gov/ttabvue/ttabvue-91185393-OPP-15.pdf (last accessed on February 12, 2026).
[70] Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., 896 Phil. 190, 262 (2021) [Per J. Caguioa, En Banc].
[71] Id. at 263.
[72] Id.
[73] 907 Phil. 124 (2021) [Per J. Caguioa, First Division].
[74] G.R. No. 257075, August 5, 2025 [Per J. Kho, Jr., En Banc]. This pinpoint citation refers to the copy of the Decision uploaded to the Supreme Court website.
[75] Id. at 15. (Citation omitted)
[76] Id. at 15-16. (Citation omitted)
[77] Gloria Maris Shark's Fin Restaurant, Inc. v. Lim, 954 Phil. 363, 371 (2024) [Per J. Singh, Third Division].
[78] Id.
[79] Innolab Industries, Inc. v. Unilab Laboratories, Inc., G.R. No. 257075, August 5, 2025 [Per J. Kho, Jr., En Banc] at 16. This pinpoint citation refers to the copy of the Decision uploaded to the Supreme Court website.
[80] J. Caguioa, Concurring Opinion, p. 3.
[81] Common Guidelines for the Substantive Examination of Trademarks available at https://asean.org/wp-content/uploads/2021/08/ASEAN-Common-Guidelines-for-the-Substantive-Examination-of-Trademarks-Second-Edition-2020.pdf (last accessed on February 12, 2026).
[82] Id.
This Court resolves a Petition for Review on Certiorari[1] assailing the Decision[2] of the Court of Appeals (CA), which upheld the Decision[3] of the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL). The Decision of the ODG affirmed the Decision[4] of the Director of the Bureau of Trademarks denying petitioner Autophil Zone Sales Corporation's (Autophil) registration for the mark "FUJI METAL STYLIZED."[5]
The instant controversy stemmed from a Trademark Application[6] filed by Autophil, a domestic corporation engaged in the importation and distribution of automotive spare parts, seeking to register its mark, "FUJI METAL STYLIZED."[7]
On September 27, 2017, Examiner Ana Maida J. Zamora (Examiner Zamora) issued a Registrability Report[8] denying Autophil's application as its mark resembled a previously registered mark "FUJI" under a certain Terrence Santos (Santos) and a mark then pending registration, also using the word "FUJI," under Leo Tire Manufacturing Corporation (Leo Tire).[9]
Autophil, through counsel, responded that its mark was not similar to those of Santos and Leo Tire, given its distinctive design and use of stylized lettering. If only, the sole similarity between the other marks was the use of the word "FUJI." In any event, Autophil raised that the word "FUJI" was diluted, having been incorporated in several registered trademarks in the Philippines. Finally, it added that confusion was highly unlikely, given that buyers of vehicles and automotive parts and accessories are particularly intelligent and would be capable of making a distinction between Autophil's products and the goods sold by the other owners of the other "FUJI" marks.[10]
On July 11, 2019, Examiner Zamora issued a Refusal[11] reiterating the denial of Autophil's application for registration. She explained that despite the distinctive elements of Autophil's mark, it fell short of curing the likelihood of confusion. A side-by-side comparison of the goods showed that they cover the same class of goods and cater to the same channels of trade and class of consumers.[12]
Aggrieved, Autophil appealed to the Director of the Bureau of Trademarks.[13]
On December 16, 2020, Director Leny B. Raz (Director Raz) of the Bureau of Trademarks rendered a Decision[14] affirming the denial of Autophil's application for registration. Contrary to Autophil's assertion, Director Raz ruled that its mark and the cited marks of Santos and Leo Tire nearly resemble each other in appearance and overall impression due to the word "FUJI" as the dominant feature. Thus, Director Raz opined that by merely looking at the marks, consumers would likely be confused as they would recall the name "FUJI," and not the distinctive elements raised by Autophil. To further affirm the application's denial, Director Raz also raised that the goods of the subject marks were closely related, all of which involve automotive parts.[15]
Expectedly, Autophil appealed to the ODG.[16]
On December 13, 2022, the ODG dismissed Autophil's appeal and sustained the findings of Director Raz.[17] Invoking the dominancy test, the ODG held that the dominant feature of Autophil's mark and the other cited marks, "FUJI," is unmistakable and would most likely cause consumer confusion. Thus, the ODG would not be inclined to register a mark with a dominant feature similar to existing registered marks.[18]
On January 13, 2023, Autophil elevated the case to the CA via a Petition for Review[19] under Rule 43 of the Rules of Court. In its Petition, Autophil urged the CA to reverse and set aside the Decision of the ODG and to approve its application for registration.[20]
In its Decision,[21] the CA denied the Petition filed by Autophil and affirmed the Decision of the ODG.[22] Aside from affirming the factual findings and expertise of the IPOPHL, the CA concurred that Autophil's mark cannot be registered for being a colorable imitation of other marks, which would most likely lead to confusion of ordinary purchasers.[23] Similarly invoking the dominancy test, the CA observed that the meaning and overall impression of the marks showed no stark difference between them, as the prevalent features of Autophil's mark were phonetically and aurally the same as that of Santos and Leo Tire.[24] Also agreeing with the ODG, the CA held that the likelihood of confusion was further bolstered due to the similarity of the goods covered by the marks.[25] The CA disposed in this wise:
WHEREFORE, the instant Petition for Review dated January 13, 2023 is DENIED.Hence, Autophil filed this Petition.[27]
The Decision dated December 13, 2022 of the Office of the Director General of the Intellectual Property Office of the Philippines in Appeal No. 04-2021-0018, which upheld the Decision dated December 16, 2020 of the Director of the Bureau of Trademarks in Application No. 4-2017-00013013, is AFFIRMED.
Accordingly, being merely an adjunct to the main suit, the petitioner's prayer for the issuance of a temporary restraining order and/or writ of preliminary injunction is likewise DENIED.
SO ORDERED.[26] (Emphasis in the original)
In advocacy of its position, Autophil impugns reversible error on the assailed Decision of the CA. It insists that while the word "FUJI" appears as the dominant feature in Autophil's mark, it should not be a reason to bar its registrability, as to do otherwise would be tantamount to a denial of equal treatment and protection. Specifically, Autophil points out that the IPOPHL has previously allowed multiple and various trademark registrations that incorporate the word "FUJI" as the dominant element. Appropriately then, the same treatment and applications must be made for Autophil's mark.[28] Given that several registered trademarks have used the word "FUJI," Autophil further opines that the word has ceased to be distinctive as it has been used widely and publicly. Thus, an ordinary consumer would less likely be confused when such goods bearing the same word are found in the market.[29]
In its Comment,[30] the Office of the Solicitor General (OSG), in behalf of Director of the Bureau of Trademarks, maintains that the CA correctly upheld the ODG Decision, given its glaring similarity with the marks of Santos and Leo Tire.[31] Also applying the dominancy test, the OSG also finds that Autophil's mark were visually and aurally identical to the other registered marks containing the word "FUJI." In effect, the marks can reasonably be assumed by consumers to originate from a common source or that consumers might mistake one for the other.[32] Given the likelihood of confusion, the OSG prays that the denial of Autophil's registration be sustained.
The primordial issue to be resolved boils down to whether petitioner Autophil Zone Sales Corporation is entitled to its trademark registration, given that its mark could cause confusion to the public.
The Petition lacks merit.
Dealing first with the procedural matter interposed by the OSG, it is necessary to stress that in a petition for review on certiorari, only questions of law may be raised, as questions of fact are not a proper subject of an appeal by certiorari.[33] Whether the denial of petitioner's application was proper due to the likelihood of confusion is indubitably a question of fact, as it requires this Court to conduct its own independent analysis by reexamining the evidence previously passed upon. Certainly, this Court is not duty-bound to review facts, as it is not its function to "analyze or weigh all over again evidence already considered in the proceedings below."[34]
While jurisprudence recognizes certain exceptions[35] to this rule, none are obtaining in this case. Consequently, this Court is hard-pressed to sustain the factual findings of respondent.
At any rate, this Court finds no reason to disturb the findings of the CA, having been made in accordance with law and jurisprudence. Verily, the denial of petitioner's registration is deemed proper.
Trademark is defined in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.[36] as "any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others."[37] As intellectual property, it is deserving of protection by law.[38] Citing the United States case of Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.,[39] this Court, in Philip Morris, Inc. v. Fortune Tobacco Corp.,[40] underscored the rationale for trademark protection, viz.:
The protection of trademarks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut[,] which induces a purchaser to select what he wants, or what he has been led to believe what he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same - to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.[41]The protection of trademarks is all the more warranted as they fulfill a three-fold purpose: "(1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the articles they symbolize."[42]
Materially, it is the registration of a trademark that entitles an owner to protection. Pertinent to this case, Section 147[43] of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, grants trademark owners protection against third parties from using their trademark, or those identical or similar to their registered trademark, where such use would result in a likelihood of confusion. As emphasized in Zulueta v. CYMA Greek Taverna Co.,[44] trademarks are sought to be protected "to safeguard the public as consumers against confusion on these goods or services."[45] This scope of protection includes the proscription of the registration of marks that may cause confusion when compared to previously registered marks. Section 123.1(d) of Republic Act No. 8293 is clear:
The concept of confusion refers to either a confusion of goods, or when "the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other,"[46] or a confusion of business, when despite the difference in the goods of the parties, the product of one may be reasonably assumed to originate from the other, resulting in the public being deceived to believe that some connection between the two parties exist.[47] Regardless of form however, this confusion arises when the goods or services covered by the allegedly similar marks are "identical, similar, or related in some manner."[48]
- SECTION 123. Registrability. - 123.1. A mark cannot be registered if it:
- . . . .
- (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
- (i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion[.]
To determine the likelihood of confusion, regardless of whether it arises from a confusion of goods or a confusion of business, the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases[49] instructs that courts must take into consideration the general impression of the ordinary purchaser, buying under prevalent conditions and the visual, aural and connotative comparisons of the trademarks in question. To be specific, this Court laid down a spectrum of factors in Rule 18, Section 5 of the abovementioned Rule, such as but not limited to:
In Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc.,[50] this Court collectively referred to such criteria as the "multifactor test." Also, in Kolin, this Court identified two factors that are particularly relevant in trademark law: "resemblance of marks (the degree of similarity between the plaintiffs and the defendant's marks) and the relatedness of goods or services (the proximity of products or services)."[51]
Measured against the crucible of these two factors, petitioner's mark causes the likelihood of confusion.
In assessing the resemblance of marks, jurisprudence has fashioned two tests, namely, the Dominancy Test and the Holistic or the Totality Test. As expounded in Dy v. Court of Appeals:[52]
In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or totality test.While both tests have been heavily relied upon in the past, this Court, with finality, held in Kolin that the use of the Holistic Test should be abandoned. More than mere judicial preference, the recent trend of jurisprudence reveals that the Dominancy Test is now being applied, having been explicity incorporated by the legislature in Republic Act No. 8293. Citing its reasoning in McDonald's Corp. v. L.C. Big Mak Burger, Inc.,[54] this Court illumined:
On one hand, the dominancy test focuses on "the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments."
On the other hand, the holistic or totality test necessitates a "consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other."[53] (Citations omitted)
Needless to say, the current state of jurisprudence in deciding the resemblance of marks is unclear. Out of the two tests, however, only the Dominancy Test has been incorporated in the IP Code. This was discussed in McDonald's Corporation v. L.C. Big Mak Burger, Inc., where the Court also observed its own reliance on the dominancy test, thus:Applying the Dominancy Test in the present case, this Court finds no reason to depart from respondent's findings that petitioner's mark "FUJI METAL STYLIZED" is confusingly similar to the previously registered marks of Santos and Leo Tire. Respondent, as an administrative agency, is in a better position to pass judgment on matters within its expertise by reason of its specialized knowledge in matters of intellectual property. Indeed, "their findings of fact in that regard are generally accorded great respect, if not finality by the courts, so long as they are supported by substantial evidence, even if such evidence might not be overwhelming or even preponderant."[56]
This Court, however, has relied on the dominancy test rather than the holistic test. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the aural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets[,] and market segments.More than an indicator of a mere preference for the Dominancy Test, it appears that the legislative intent in explicitly adopting the Dominancy Test was to abandon the Holistic Test altogether, as can be seen in the legislative deliberations:
[. . . .]
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines infringement as the "colorable imitation of a registered mark [. . .] or a dominant feature thereof."
TrademarksConsidering the adoption of the Dominancy Test and the abandonment of the Holistic Test, as confirmed by the provisions of the IP Code and the legislative deliberations, the Court hereby makes it crystal clear that the use of the Holistic Test in determining the resemblance of marks has been abandoned.[55] (Emphasis in the original, citations omitted)
Part III of the Code is the new law on trademarks.
[. . . .]
To resolve the conflicting doctrines regarding what constitutes colorable imitation of a registered mark, the Code adopts the Dominancy Test so that any person who uses in commerce any colorable imitation of [a] registered mark or a dominant feature thereof shall be liable for damages for infringement.
[. . . .]
Policy Issues
We have summarized the basic features of the proposed Intellectual Property Code. Let me now try to identify provisions of the Code that may be the focus of policy debates.
Without being exclusive, they are the following:
[. . . .]
Trademarks
[. . . .]
8. The committee notes the varying decisions of the Supreme Court regarding colorable imitation of a registered mark. There are decisions which espouse the Dominancy Test, while there are others which use the Holistic Test. We, therefore, recommend the adoption of the Dominancy Test to resolve once and for all the debate.
For ease of reference, the subject marks are reproduced in the following table:
| Petitioner | Leo Tire Manufacturing Corporation |
Terence Santos | |
| Marks | (Image supposed to be here) | (Image supposed to be here) | (Image supposed to be here) |
| Application No. |
4/2017/013013 |
4/2016/00005166 |
4/2011/00009078 |
| Filing Date |
August 14, 2017 |
May 12, 2016 |
March 18, 2014 |
| Current Status |
Denied registration due to likelihood of confusion |
Registered |
Registered |
| Class Covered |
12 |
12 |
7 |
| Goods Covered |
Automotive parts and fittings, namely leaf spring, U-bolt and radiator, pinion ring gear and crank shaft |
Motorcycle, bicycle, and automobile tires and interior |
Wiper linkage, wiper motor, transmission filters, collar and lock rings, flywheel ring gears, main drive retainer assembly, main shaft assembly, synchronizer assembly, counter gear assembly, counter gear shaft, counter gear pilot bearing, counter gear thrust washer, doorlock, timing belt, timing belt idler bearing, timing belt idler bearing with bracket assembly, timing chain tensioner, timing drive gear, oil seal, timing cover for seal, transmission oil seal, differential oil seal, wheel hub oil seal, crankshaft oil seal, wheel oil seal, injection pump noozle tip, oil pump assembly, oil pump drive gear, oil cooler, oil pump (crankcase), drain plug, overhaul full set gasket, valve (grind set) gasket, valve cover gasket, intake manifold gasket, exhaust manifold gasket, manifold gasket, timing cover gasket, exhaust pipe gasket, oil pan (crankcase) gasket, oil filter, fuel filter, air filter, filter for cars and trucks.[57] |
Discernibly, the word "FUJI," all written out in plain block upper case letters, appears as the prevalent feature of all three marks. However, this Court observes that Santos's mark encloses the word "FUJI" in a colored rectangle, in contrast to the marks of petitioner and Leo Tire which are not laid out against any shape or color.[58] This minute difference is immaterial and should be disregarded. A simple comparison between the marks reveals that such distinction makes no perceptible difference in terms of appearance, sound, connotation, or overall impression, given that the word "FUJI" itself is the subject of registration.
For another, petitioner's argument that the addition of the word "METAL" to negate any impression of confusion does little for its cause.
The case of Societe Des Produits, Nestle, S.A. v. Puregold Price Club, Inc.[59] finds particular application in this case. In Societe, the respondent sought to register its trademark, "COFFEE MATCH" with the IPOPHL for its coffee products. Petitioner filed an opposition, alleging that it was the exclusive owner of an internationally well-known mark, "COFFEE-MATE."[60] This Court, making direct reference to Section 123.1(h)[61] of Republic Act No. 8293, held that while the respondent's mark may be subject to registration, the word "COFFEE" as part of its mark may not be considered in determining distinctiveness for being generic and descriptive. By definition, generic terms are those which constitute "the common descriptive name of an article or substance," or those which "refer to the basic nature of the wares or services provided[.]"[62] Accordingly, these terms are part of the public domain and cannot be exclusively appropriated or registered by the parties, nor can it be monopolized as a trademark.[63] This Court, in assessing registrability, thus, concluded that it may only consider the other elements of petitioner's mark as paired with the generic word in determining the likelihood of confusion.
In the instant case, it is plain that the word "METAL" is not subject to registration for being generic and descriptive of the goods that it seeks to identify-in this case, automobile spare parts. Effectually, neither may it be considered nor even used as a determining factor to distinguish petitioner's mark in relation to that of Santos and Leo Tire. Without any clear-cut element to distinguish petitioner's mark, there is nothing that would eradicate the possibility of mistake or confusion due to the marks' resemblance.
This visible resemblance between the marks was even further amplified by the relatedness of the goods involved.
In determining relatedness, this Court points out that pursuant to its ruling in Kolin, it had already abandoned the use of product or service classification as a factor in determining relatedness or nonrelatedness, given that it serves an administrative purpose, to provide trademark offices worldwide with an efficient manner to organize trademark applications. Instead, this Court has shifted to applying the factors laid down in Mighty Corporation v. E. & J. Gallo Winery[64] in analyzing relatedness, thus:
The evidence on record, and upon application of the factors mentioned above, yields to the conclusion that the goods covered by petitioner's mark and the marks of Santos and Leo Tire are related.
According to petitioner's trademark application form, the goods under the mark "FUJI METAL STYLIZED" pertain to automotive parts and fittings, including "leaf spring, U-bolt and radiator, pinion ring gear, and crank shaft."[66] On the other hand, Santos's mark "FUJI" covers automobile parts, such as: "wiper linkage, wiper motor, transmission filters, collar and lock rings, flywheel ring gears, main drive retainer assembly, main shaft assembly, synchronizer assembly, counter gear assembly, counter gear haft, counter gear pilot bearing, counter gear thrust washer, doorlock, timing belt, timing belt idler bearing, timing beat idler bearing with bracket assembly[,]"[67] to name a few. On the other hand, Leo Tire's mark "FUJI" involves "[m]otorcycle, bicycle, and automobile tires and interior."[68] Taken together, it is plain that the goods all involve automotive parts, and, thus, belong to the same class of products and serve the same purpose. More, it may be found in the same channels of trade, and may appeal to the same purchasers. It is therefore not difficult to imagine that ordinary purchasers would safely presume that these goods come from the same business or source.
In addition to the factors introduced in Mighty Corporation, another basis for finding relatedness is complementarity.
Finding the ruling of the US Trademark Trial and Appeal Board in Hewlett Packard Development Company, L.P. v. Vudu, Inc.[69] logical and persuasive, this Court held in Kolin that the petitioner's goods consisting of "automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, PA amplified AC-DC"[70] in relation to the respondent's goods, "televisions, DVD players,"[71] are complementary and may be used together, thus, increasing the likelihood of confusion.[72] Notably, this factor of complementarity was similarly echoed in the later case of Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc.[73]
Applying this reasoning to the present dispute, this Court finds that by their descriptions, the goods covered by petitioner's mark are indeed complementary to those covered by the marks of Santos and Leo Tire, as they may be used for the same purpose, namely, for automobiles and other vehicles.
At this juncture, this Court is cognizant of its recent ruling in Innolab Industries, Inc. v. Unilab Laboratories, Inc.,[74] where it bared the realities of how courts assess the likelihood of confusion: owing perhaps to the growing complexities in the field of intellectual property law, courts have "had to resort to 'unsubstantiated assumptions and generalizations about consumers and their behavior, arbitrary categorizations of goods and services, and even outright derogatory classist stereotypes.'"[75]
Consequently then, this Court, in Innolab, citing the Separate Concurring Opinion of Senior Associate Justice Marvic Mario Victor F. Leonen, underscored the need for evidence-based standards to determine the likelihood of confusion, which may be "through testimonies of 'stringently qualified' witnesses, or market surveys 'conducted with the appropriate methodology, proper sampling and scope, and the relevant market conditions.'"[76] Thus, this Court concluded that parties opposing a mark sought to be registered must present substantial evidence, or "evidence a reasonable mind might accept as adequate to support a conclusion,"[77] as the quantum of evidence required in intellectual property cases.[78] In the same manner, courts or other hearing tribunals must likewise anchor their conclusions on substantial evidence thus, avoiding "making inferences," most especially "where no evidence has been put forth to prove it."[79]
To be sure, the onus to present substantial evidence to prove the likelihood of confusion only arises when private parties are involved other than the applicant themselves. Associate Justice Alfredo Benjamin S. Caguioa aptly points out that at the application stage, when the applicant is before the trademark examiners of the IPO, the trademark examiners are not required to prove their finding by substantial evidence, given that "the IPO acts as a specialized regulatory body tasked to, among other, protect the buying public from being deceived or confused on what products to purchase."[80] Verily, apart from the guiding principles laid down in jurisprudence, trademark examiners likewise adhere to the Association of Southeast Asian Nations Common Guidelines for the Substantive Examination of Trademarks (Common Guidelines).[81] The Common Guidelines recognize that while a trademark examiner's analysis and appreciation of each case to determine the likelihood of confusion involves a degree of subjectivity, it laid down the following standard examination criteria to consider, thus:
To decide if there is a likelihood of confusion, both the earlier mark and the later mark should be assessed. To this effect:Given the foregoing, clear parameters have already been established for trademark examiners to reach a well-informed decision on whether an applicant's trademark is likely to cause confusion to consumers in relation to other existing trademarks. After all, trademark examiners are vested with the power to examine applications and determine whether they meet the requirements for application for registration and whether the mark is indeed registrable. More specifically, Section 133 of Republic Act No. 8293, otherwise known as the "Intellectual Property Code of the Philippines" provides:A likelihood of confusion should only be found after a global assessment of all the factors and circumstances that are relevant in each particular case. One single factor will not suffice to establish a likelihood of confusion in a particular case.
- The examiner should assess the distinctiveness of the earlier mark as a whole, on the understanding that an earlier registered mark is presumed to have a certain degree of distinctiveness.
- All the components of the earlier mark and of the later mark must be assessed, prioritizing the coinciding components.
A global assessment of all the relevant factors and circumstances does not exclude-but rather follows-a step-by-step analysis of those factors and circumstances as they apply to the signs under consideration.
The factors that are relevant to determine a likelihood of confusion are linked and interdependent, and include:
Here, there is no cogent reason to cast doubt on the findings of Examiner Zamora, given that she had clearly explained in the Registrability Report and Refusal why petitioner's mark would cause likelihood of confusion, given the existence of prior registered marks owned by Santos and Leo Tire.
- Section 133. Examination and Publication. - 133.1. Once the application meets the filing requirements of Section 127, the Office shall examine whether the application meets the requirements of Section 124 and the mark as defined in Section 121 is registrable under Section 123.
- 133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner.
133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.
133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee.
133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. [Section 7, Republic Act No. 166a]
Further, given the lack of any distinct visual and aural differences of the marks upon the application of the Dominancy Test, and the clear relatedness of the items covered by the subject marks, this Court finds no reason to depart from respondent's findings and reject the registration of petitioner's mark.
ACCORDINGLY, the Petition is DENIED. The November 13, 2023 Decision of the Court of Appeals in CA-G.R. SP No. 176717 is AFFIRMED. Trademark Application No. 4-2017-00013013 filed by petitioner Autophil Zone Sales Corporation is DENIED.
SO ORDERED.
Gesmundo, C.J., Inting, Zalameda, Gaerlan, Rosario, Dimaampao, Marquez, Kho, Jr., and Villanueva, JJ., concur.
Leonen, SAJ., Caguioa, and Hernando, JJ., see concurring opinions.
Lazaro-Javier, J., with concurrence.
Singh,* J., on leave.
* On leave.
[1] Rollo, pp. 34-63.
[2] Id. at 11-33. The November 13, 2023 Decision in CA-G.R. SP No. 176717 was penned by Associate Justice Rex Bernardo L. Pascual and concurred in by Associate Justices Gabriel T. Robeniol and Tita Marilyn B. Payoyo-Villordon of the Special Ninth Division, Court of Appeals, Manila.
[3] Id. at 88-93. The December 13, 2022 Decision in Appeal No. 04-2021-0018 was penned by Director General Rowel S. Barba, Intellectual Property Office of the Philippines, Taguig City.
[4] Id. at 94-97. The December 16, 2020 Decision in Application No. 4-2017-00013013 was penned by Director Leny B. Raz, Bureau of Trademarks, Taguig City.
[5] Id.
[6] Id. at 101-103.
[7] Id.
[8] Id. at 105-107.
[9] Id.
[10] Id. at 109.
[11] Id. at 99.
[12] Id.
[13] Id. at 118-120.
[14] Id. at 94-97.
[15] Id. at 96.
[16] Id. at 156-173.
[17] Id. at 88-93.
[18] Id. at 93.
[19] Id. at 261-295.
[20] Id. at 289.
[21] Id. at 11-32.
[22] Id. at 31-32.
[23] Id. at 19-24.
[24] Id. at 24-25.
[25] Id. at 26.
[26] Id. at 31-32.
[27] Id. at 34-63.
[28] Id. at 47-51.
[29] Id. at 53.
[30] Id. at 543-566.
[31] Id. at 550-551.
[32] Id. at 556.
[33] See Gatan v. Vinarao, 820 Phil. 257, 266 (2017) [Per J. Leonardo-De Castro, First Division].
[34] Miro v. Vda. de Erederos, 721 Phil. 772, 785 (2013) [Per J. Brion, Second Division].
[35] Medina v. Mayor Asistio, Jr., 269 Phil. 225, 232 (1990) [Per J. Bidin, Third Division].
[36] 642 Phil. 503 (2010) [Per J. Nachura, Second Division].
[37] Id. at 510-511. (Citation omitted)
[38] Id. at 511.
[39] 316 U.S. 203 (1942).
[40] 526 Phil. 300 (2006) [Per J. Garcia, Second Division].
[41] Id. at 310.
[42] W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., 822 Phil. 23, 33 (2017) [Per J. Perlas-Bernabe, Second Division]. (Citation omitted)
[43] SECTION 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use.
[44] 934 Phil. 34 (2023) [Per J. Kho, Jr., Second Division].
[45] Id. at 41.
[46] Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838, 852 (1969) [Per J. Sanchez, En Banc].
[47] Id.
[48] Mang Inasal Philippines, Inc. v. IFP Manufacturing Corp., 811 Phil. 261, 272 (2017) [Per J. Velasco, Jr., Third Division]. (Citation omitted)
[49] SC A.M. No. 10-3-10-SC, October 19, 2020.
[50] 896 Phil. 190 (2021) [Per J. Caguioa, En Banc].
[51] Id. at 216.
[52] 807 Phil. 819 (2017) [Per C.J. Sereno, First Division].
[53] Id. at 830-831.
[54] 480 Phil. 402 (2004) [Per J. Carpio, First Division].
[55] Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., 896 Phil. 190, 218-220 (2021) [Per J. Caguioa, En Banc].
[56] Berris Agricultural Co., Inc. v. Abyadang, 647 Phil. 517, 533 (2010) [Per J. Nachura, Second Division].
[57] Rollo, pp. 102, 106-107.
[58] Id.
[59] 817 Phil. 1030 (2017) [Per Acting C.J. Carpio, Second Division].
[60] Id. at 1047.
[61] Republic Act No. 8293 (1997), sec. 123.1(h) states:
SECTION 123. Registrability. - 123.1 A mark cannot be registered if it:[62] Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, 927 Phil. 355, 387 (2022) [Per C.J. Gesmundo, En Banc].. . . .
(h) Consists exclusively of signs that are generic for the good or services that they seek to identify[.]
[63] See Societe Des Produits, Nestle, S.A. v. Puregold Price Club, Inc., 817 Phil. 1030, 1047 (2017) [Per Acting C.J. Carpio, Second Division].
[64] 478 Phil. 615 (2004) [Per J. Corona, Third Division].
[65] Id. at 662-663.
[66] Rollo, p. 102.
[67] Id. at 106.
[68] Id.
[69] Opposition No. 91185393, October 26, 2009, available at https://ttabvue.uspto.gov/ttabvue/ttabvue-91185393-OPP-15.pdf (last accessed on February 12, 2026).
[70] Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., 896 Phil. 190, 262 (2021) [Per J. Caguioa, En Banc].
[71] Id. at 263.
[72] Id.
[73] 907 Phil. 124 (2021) [Per J. Caguioa, First Division].
[74] G.R. No. 257075, August 5, 2025 [Per J. Kho, Jr., En Banc]. This pinpoint citation refers to the copy of the Decision uploaded to the Supreme Court website.
[75] Id. at 15. (Citation omitted)
[76] Id. at 15-16. (Citation omitted)
[77] Gloria Maris Shark's Fin Restaurant, Inc. v. Lim, 954 Phil. 363, 371 (2024) [Per J. Singh, Third Division].
[78] Id.
[79] Innolab Industries, Inc. v. Unilab Laboratories, Inc., G.R. No. 257075, August 5, 2025 [Per J. Kho, Jr., En Banc] at 16. This pinpoint citation refers to the copy of the Decision uploaded to the Supreme Court website.
[80] J. Caguioa, Concurring Opinion, p. 3.
[81] Common Guidelines for the Substantive Examination of Trademarks available at https://asean.org/wp-content/uploads/2021/08/ASEAN-Common-Guidelines-for-the-Substantive-Examination-of-Trademarks-Second-Edition-2020.pdf (last accessed on February 12, 2026).
[82] Id.