CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORP

CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORP

G.R. NO. 120900

DATE: July 20, 2000

PONENTE: Gonzaga-Reyes, J.

FACTS: NSR Rubber Corp., filed an application for registration of the mark CANON for sandals (Class 25) in the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). The application was opposed by Canon Kabushiki Kaisha (CKK), a foreign corp. under the laws of Japan.

NSR was declared in default upon motion of CKK. CKK presented as its evidence certificates of registration for the mark CANON in various countries and in the Philippines covering goods belonging to Class 2 (paints, chemical products, toner and dyestuff).

Ruling of the BPTTT: denied the opposition of CKK and granted the application of NSR Rubber Corp.

CA: affirmed

Both lower courts ruled that there is a dissimilarity between the products of CKK and NSR, i.e. CKK: paints, chemical products, toner and dyestuff; while NSR: sandals

ISSUE/S:

1. WON CKK trademark is violated. NO.

2. WON CKK can exclusively use ‘CANON’ as protected by the Paris Convention. NO.

RULING:

Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter’s product cannot be validly objected to.

The certificates of registration for the trademark CANON in other countries and in the Philippines clearly showed that said certificates cover goods belonging to class 2 (paints, chemical products, toner, dyestuff). As such, NSR t can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff and sandals.

The certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to the conditions and limitations stated therein. Thus, the exclusive right of CKK to use the trademark CANON is limited to the products covered by its certificate of registration.

The likelihood of confusion of goods or business is a relative concept, to be determined only according to the particular, and sometimes peculiar, circumstances of each case. Indeed, in trademark law cases, even more than in other litigation, precedent must be studied in the light of the facts of the particular case.

Here, the products involved are so unrelated that the public will not be misled that there is the slightest nexus between petitioner and the goods of private respondent.

Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores.

Here, the paints, chemical products, toner and dyestuff of CKK that carry the trademark CANON are unrelated to sandals, the product of NSR. The two classes of products in this case flow through different trade channels. The products of CKK are sold through special chemical stores or distributors while the products of NSR are sold in grocery stores, sari-sari stores and department stores.

 A tradename refers to the business and its goodwill while a trademark refers to the goods.

Regarding the applicability of Article 8 of the Paris Convention (“A tradename shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.), there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a memorandum dated 25 October 1983 to the Director of Patents, a set of guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris.

These conditions are:

1.) the mark must be internationally known;

2.) the subject of the right must be a trademark, not a patent or copyright or anything else;

3.) the mark must be for use in the same or similar kinds of goods; and

4.) the person claiming must be the owner of the mark

CKK failed to comply with the third requirement of the said memorandum. CKK is using the mark “CANON” for products belonging to class 2 (paints, chemical products) while NSR is using the same mark for sandals (class 25).