GSIS Family Bank vs.

BPI Family Bank

Under the facts of this case, the word "family" cannot be

separated from the word "bank." In asserting their claims before
the SEC up to the Court of Appeals, both petitioner and
respondent refer to the phrase "Family Bank" in their
submissions. This coined phrase, neither being generic nor
descriptive, is merely suggestive and may properly be regarded
as arbitrary.
EAST PACIFIC MERCHANDISING CORP. VS. DIRECTOR
OF PATENTS
G.R. No. L-14377, 29 December 1960

ISSUE ON DESCRIPTIVE TERM:

The term "Verbena" is descriptive of a whole genus of garden

plants with fragrant flowers used in connection with cosmetic
products. Regardless of other connotations of the word, the use
of the term cannot be denied to other traders using such extract
or oils in their own products. It follows that the Director of
Patents correctly held the term to be non-registerable in the
sense that petitioner company would be entitled to appropriate
its use to the exclusion of others legitimately entitled, such as
oppositor Pellicer.

IN THE ISSUE OF SECONDARY SIGNIFICANCE:

The claim that the petitioner is entitled to registration because

the term "Verbena" has already acquired a secondary
significance is without merit. The provisions of law (Rep. Act
No. 166, sec. 4) require that the trademark applied for must have
"become distinctive of the applicant's goods", and that a prima
facie proof of this fact exists when the applicant has been in the
"substantially exclusive and continuous use thereof as a mark or
tradename, for five years next preceding the date of the filing of
the application for its registration".
ANG VS. TEODORO
G.R. No. L-48226, 14 December 1942

The phrase “Ang Tibay” is an exclamation denoting the

administration of strength or durability. For instance, one who
tries hard but fails to break an object exclaims, “Ang tibay!”
(How strong!”) The phrase “ang tibay” is never used adjectively
to define or describe an object. One does not say, “ang tibay
sapatos” or “sapatos ang tibay” is never used adjectively to
define or describe an object. One does not say, “ang tibay
sapatos” or “sapatos ang tibay” to mean “durable shoes,” but
“matibay na sapatos” or “sapatos na matibay.” From all of this
we deduce that “Ang Tibay” is not a descriptive term within the
meaning of the Trade-Mark Law but rather a fanciful or coined
phrase which may properly and legally be appropriated as a
trademark or tradename. In this connection we do not fail to note
that when the petitioner herself took the trouble and expense of
securing the registration of these same words as a trademark of
her products she or her attorney as well as the Director of
Commerce was undoubtedly convinced that said words (Ang
Tibay) were not a descriptive term and hence could be legally
used and validly registered as a trademark.
SOCIETE DES PRODUITS NESTLE SA VS. PUREGOLD
PRICECLUB INC.

The word "COFFEE" is the common dominant feature between

Nestle's mark "COFFEE-MATE" and Puregold's mark
"COFFEE MATCH." However, following Section 123,
paragraph (h) of RA 8293 which prohibits exclusive registration
of generic marks, the word "COFFEE" cannot be exclusively
appropriated by either Nestle or Puregold since it is generic or
descriptive of the goods they seek to identify. In Asia Brewery,
Inc. v. Court of Appeals, Supreme Court held that generic or
descriptive words are not subject to registration and belong to
the public domain. Consequently, we must look at the word or
words paired with the generic or descriptive word, in this
particular case "-MATE" for Nestle's mark and "MATCH" for
Puregold's mark, to determine the distinctiveness and
registrability of Puregold's mark "COFFEE MATCH."
Lyceum Case
De La Salle Montessori International of Malolos, Inc. v De La
Salle Brothers, et al

ISSUE: Whether the word la salle is a generic term.

RULING: No

Contrary to De La Salle Montessori’s claim, the word “salle”

only means "room" in French. The word la, on the other hand, is
a definite article ("the") used to modify salle. Thus, since salle is
nothing more than a room, La Salle Group’s use of the term is
actually suggestive.

Generic terms are those which constitute "the common

descriptive name of an article or substance," or comprise the
"genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods,"
or "characters," or "refer to the basic nature of the wares or
services provided rather than to the more idiosyncratic
characteristics of a particular product," and are not legally
protectable. It has been held that if a mark is so commonplace
that it cannot be readily distinguished from others, then it is
apparent that it cannot identify a particular business; and he who
first adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will not be
deceived.

A suggestive mark is therefore a word, picture, or other symbol

that suggests, but does not directly describe something about the
goods or services in connection with which it is used as a mark
and gives a hint as to the quality or nature of the product.
Suggestive trademarks therefore can be distinctive and are
registrable.

The appropriation of the term"la salle"to associate the words

with the lofty ideals of education and learning is in fact
suggestive because roughly translated, the words only mean "the
room." Thus, the room could be anything - a room in a house, a
room in a building, or a room in an office.
Philippine Refining Co., Inc. v Ng Sam

ISSUE: whether or not the product of Ng Sam, which is ham,

and those of PRCI consisting of lard, butter, cooking oil and
soap are so related that the use of the same trademark "CAMIA"
on said goods would likely result in confusion as to their source
or origin.

RULING: No

The right to a trademark is a limited one, in the sense that others

may used the same mark on unrelated goods. 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 articles of a different description. Under Section 4(d)
of the law, registration of a trademark which so resembles
another already registered or in use should be denied, where to
allow such registration could likely result in confusion, mistake
or deception to the consumers. Conversely, where no confusion
is likely to arise, as in this case, registration of a similar or even
identical mark may be allowed.

A trademark is designed to Identify the user. But it should be so

distinctive and sufficiently original as to enable those who come
into contact with it to recognize instantly the identity of the user.
" It must be affirmative and definite, significant and distinctive,
capable to indicate origin. If a mark is so commonplace that it
cannot be readily distinguished from others, then it is apparent
that it cannot Identify a particular business; and he who first
adopted it cannot be injured by any subsequent appropriation or
imitation by others, and the public will not be deceived.

“CAMIA" as a trademark is far from being distinctive. By itself,

it does not Identify PRCI as the manufacturer or producer of the
goods upon which said mark is used. The trademark "CAMIA"
is used by PRCI on a wide range of products: lard, butter,
cooking oil, abrasive detergents, polishing materials and soap of
all kinds. Ng Sam desires to use the same on his product, ham.
While ham and some of the products of PRCI are classified
under Class 47 (Foods and Ingredients of Food), this alone
cannot serve as the decisive factor in the resolution of whether
or not they are related goods.

The particular goods of the parties are so unrelated that

consumers would not in any probability mistake one as the
source or origin of the product of the other. Confusion of goods
is not so extensive as to be applicable to cases where the public
would not reasonably expect the plaintiff to make or sell the
same class of goods as those made or sold by the defendant.
McDonald’s Corp v Macjoy Fastfood Corp

ISSUE: