Hickok Manufacturing Co., Inc. v. Court of Appeals
REITERATIONFacts
The Antecedents: Petitioner Hickok Manufacturing Co., Inc. (petitioner) sought to cancel the trademark registration of respondent Santos Lim Bun Liong (respondent) for the trademark HICKOK used for shoes. Petitioner itself had earlier registered the same trademark HICKOK for its non-competing products such as leather wallets, key cases, money folds, belts, men's briefs, neckties, handkerchiefs, and men's socks. Procedural History: The Director of Patents initially dismissed petitioner's petition for cancellation. However, the Court of Appeals reversed this decision, dismissing petitioner's petition. The Petition: Petitioner appealed the decision of the Court of Appeals to the Supreme Court, arguing that the registration of the same trademark for shoes by respondent should be cancelled due to its prior registration for other goods.
Issue(s)
Whether the Court of Appeals erred in reversing the Director of Patents' decision and dismissing petitioner's petition to cancel respondent's trademark registration; and whether the trademark HICKOK used for shoes is confusingly similar to the trademark HICKOK used for other non-competing products, thereby causing likelihood of confusion among purchasers.
Ruling
The Supreme Court affirmed the decision of the Court of Appeals, dismissing the petition and upholding the registration of the trademark HICKOK for shoes by respondent Santos Lim Bun Liong. The Court found no error in the appellate court's conclusion that the two trademarks, when considered in their entirety and in relation to the goods to which they are attached, are not confusingly similar, and that the products are unrelated and non-competing.
Ratio Decidendi
On the issue of trademark similarity and likelihood of confusion: The Court reiterated the established doctrine that for a trademark infringement or unfair competition claim to prosper, there must be not only resemblance between the trademarks but also similarity of the goods to which they are attached. The law does not require that competing trademarks be identical, but the two marks must be considered in their entirety as they appear on the respective labels, in relation to the goods to which they are attached. In this case, an examination of the trademarks revealed differences in design, coloring, and wording. Petitioner's trademarks for handkerchiefs, underwear, and briefs featured the word 'HICKOK' in specific color schemes and with phrases like 'POSITIVELY FINER,' while respondent's trademark for shoes displayed 'HICKOK' with the word 'SHOES' below it, and a ribbon with the words 'QUALITY AT YOUR FEET.' The Court emphasized that the possibility of confusion is remote, especially considering the distinct nature of the products. The Court cited Acoje Mining Co., Inc. vs. Director of Patents and Philippine Refining Co., Inc. vs. Ng Sam to support the principle that the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. The Court noted that the emphasis should be on the similarity of the products involved and not on their arbitrary classification or general description. Since petitioner's trademark was used for various men's wear and accessories, while respondent's was exclusively for shoes, which have different channels of trade, the Court concluded that the Director of Patents ought to have reached a different conclusion. The Court further relied on Esso Standard Eastern, Inc. v. Court of Appeals, stating that the possibility of confusion is remote when the trademarks are used on unrelated articles of a different kind. The Court found that petitioner's goods, manufactured by a licensee, were labeled to suggest foreign manufacture, whereas respondent's shoes were clearly labeled as 'Made in Marikina, Rizal, Philippines.' Therefore, no error could be attributed to the appellate court in upholding respondent's registration for his unrelated and non-competing product.
Main Doctrine
The registration of the same trademark for unrelated articles of a different kind, which do not compete and have different channels of trade, does not constitute infringement or unfair competition, as the possibility of confusion among purchasers is remote.