FABERGE INC., VS. IAC & CO BENG KAY

FABERGE INC., VS. IAC & CO BENG KAY

G.R. NO. 711894

November, 1992

PONENTE: Melo, J.

FACTS:

Petitioner Faberge manufactures and sells after-shave lotion, shaving cream, deodorant, toilet soap, etc. under its registered trademark ‘BRUT’. On the other hand, respondent Co Beng Kay manufactures and sells briefs under the trademark ‘BRUTE.’

Petitioner tried to oppose the registration by respondent of the trademark ‘BRUTE’ for being confusingly similar with petitioner’s ‘BRUT’ but Director of Patents denied such opposition observing that considering the overall appearance of both trademarks, there are glaring differences which would unlikely cause a confusion among customers.

On appeal, the CA initially ruled in favor of petitioner stating that the products of the petitioner and the respondent have the same outlet (e,g, ‘Men’s accessories’ in a department store). Thus, even if the trademark ‘BRUTE’ was only applied for briefs, the similarity of the same with ‘BRUT’ would likely cause confusion to the buying public.

On respondent’s motion for reconsideration, the CA reversed itself in favor of respondent relying on the ESSO and PRC cases wherein the SC ruled that identical trademark can be used by different manufacturers for products that are non-competing and unrelated. Hence, this appeal.

Petitioner argues that the ruling in Teodoro which was reiterated in Sta. Ana where the SC ruled that a registration may be opposed if the junior user’s goods (Co Beng Kay’s in this case) are not remote from any product that the senior user (Faberge) would be likely to make or sell. To bolster this argument, petitioner presented an alleged application of the trademark ‘BRUT 33 Device’ for briefs.

ISSUE: WON the respondent is permitted to use the trademark ‘BRUTE’ for briefs.

RULING: YES. The provisions applicable to this case are the following:

            Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal register. —

. . . The owner of trademark, trade-name or service-mark used to distinguish his goods, business or services from the goods, business or services of others shall have right to register the same on the principal register, unless it:

                                                            xxx xxx xxx

4(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers.

                                                            xxx xxx xxx

Sec. 20. Certificate of registration prima facie evidence of validity. — A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate, subject to any conditions and limitations stated therein.

It is not difficult to discern from the foregoing statutory enactments that private respondent may be permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not ventured in the production of briefs, an item which is not listed in its certificate of registration, petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's exclusive domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called "eloquent proof that petitioner indeed intended to expand its mark "BRUT" to other goods. Even then, a mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate of registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein.