Faberge, Inc. v. Intermediate Appellate Court
REITERATIONFacts
The Antecedents: Petitioner Faberge, Inc. opposed the registration of the trademark "BRUTE" for briefs by private respondent Co Beng Kay, alleging similarity with its registered trademark "BRUT" used for after-shave lotion, shaving cream, deodorant, talcum powder, and toilet soap. The Director of Patents initially authorized the registration. The Intermediate Appellate Court (IAC) initially favored Faberge but later reconsidered and affirmed the Director's ruling in favor of Co Beng Kay. Procedural History: The case reached the Supreme Court on a petition for review of the IAC's decision. The IAC's initial decision favored Faberge, but a subsequent motion for reconsideration led to a reversal, citing cases that allow identical trademarks for non-competing and unrelated products. The Petition: Faberge, Inc. assailed the IAC's action in affirming the Director of Patents' ruling, arguing that the marks "BRUT" and "BRUTE" are similar in appearance and sound, likely to cause confusion, and that Co Beng Kay would be cashing in on Faberge's established goodwill. Faberge also contended that the goods, though different, are directed to the fashion trade and may be displayed side-by-side, leading to confusion. Faberge cited American jurisprudence and the doctrine that unfair competition can exist even for non-competing goods.
Issue(s)
Whether the trademark "BRUTE" for briefs is confusingly similar to the trademark "BRUT" for toiletries, likely to cause confusion or deception among purchasers; and whether the use of the trademark "BRUTE" on briefs constitutes unfair competition, infringing upon the goodwill established by the trademark "BRUT" for toiletries. Whether the controlling legal principle is the "related goods theory" or the principle that identical trademarks can be used for non-competing and unrelated products.
Ruling
The petition is DISMISSED. The Intermediate Appellate Court's decision affirming the Director of Patents' ruling granting the registration of the trademark "BRUTE" for briefs is upheld.
Ratio Decidendi
On the issue of confusing similarity and unfair competition: The Court held that the exclusive right of a trademark registrant is limited to the goods specified in the certificate of registration. Section 20 of the Trademark Law is controlling, limiting the exclusive right to those goods specified in the certificate. While Section 4(d) of Republic Act No. 166, as amended, does not require that the goods be of the same descriptive properties, Section 20, being the later and dominant provision, limits the scope of protection. The Court found that the physical attributes and appearance of "BRUT" toiletries and "BRUTE" briefs, as well as their respective labels, are significantly different, making confusion or deception of the average purchaser unlikely. The Director of Patents' observation that a purchaser seeking "BRUTE" briefs would not be mistaken for "BRUT" after-shave lotion was given weight. The Court also noted that Faberge had not ventured into the production of briefs, and its certificate of registration did not include this product. Therefore, Faberge could not claim an invasion of its exclusive domain. The Court reiterated 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. On the controlling legal principle: The Court found that the principle allowing identical trademarks for non-competing and unrelated products, as laid down in cases like Esso Standard Eastern, Inc. v. Court of Appeals and Philippine Refining Co., Inc. v. Ng Sam, is controlling. These cases emphasize that if the goods are non-competing and unrelated, the use of identical trademarks is not likely to give rise to confusion or cause damage. The Court distinguished the present case from Ang v. Teodoro and Sta. Ana v. Maliwat, where the marks were found to be confusingly similar or the goods were considered related under the old Trademark Law. The Court also noted that Faberge failed to provide proof of its alleged intent to expand its "BRUT" mark to briefs, and even a pending application would not suffice to vest an exclusive right for goods not yet in commerce. The Court concluded that the goods in question are so different and unrelated that purchasers are unlikely to believe that Faberge is the manufacturer of Co Beng Kay's briefs.
Main Doctrine
The exclusive right of a trademark registrant is limited to the goods specified in the certificate of registration. Registration of a trademark for non-competing and unrelated goods is permissible if confusion or deception of purchasers is unlikely, even if the marks are similar.