Thursday, July 06, 2006
SC upholds dismissal of copyright suit v. local tobacco firm
THE Supreme Court (SC) on Wednesday maintained a ruling of the Court of Appeals (CA) junking the trademark infringement case filed by international cigarette brand Philip Morris Inc. and its two subsidiaries against tycoon Lucio Tan's Fortune Tobacco Corporation.
Associate Justice Cancio Garcia of the SC Second Division said petitioners Philip Morris and its subsidiaries Benson & Hedges (Canada) Inc. and Fabriques de Tabac Reunies, SA (now known as Philip Morris Products SA) failed to prove that the similarities in its trademark and that of Fortune "cause confusion and deception tantamount to infringement."
Garcia said the petitioners failed to support their claim that their respective marks are well-known and/or have acquired goodwill in the Philippines so as to be entitled to protection even without actual use in this country.
"For lack of convincing proof on the part of petitioners of actual use of their registered trademarks (in the Philippines) prior to respondent's use of its mark and for petitioners' failure to demonstrate confusing similarity between said trademarks, the dismissal of their basic complaint for infringement and the concomitant plea for damages must be affirmed. The law, the surrounding circumstances and equities of the situation call for this disposition," he said.
The SC ruled that there is no reason for the confusion since there was no actual commercial use of petitioners' trademarks in the country.
"While petitioners have registered the trademarks 'MARK VII,' 'MARK TEN,' and 'Lark' for cigarettes in the Philippines, prior actual commercial use thereof had not been proven. In fact, petitioner's judicial admission of not doing business in this country effectively belies any pretension to the contrary," the court said.
It further said that the registration of trademark cannot be deemed conclusive as to the actual use of such trademark in local commerce.
"As it were, registration does not confer upon the registrant an absolute right to the registered mark," the SC said.
The high court said to determine the similarity and likelihood of confusion, the jurisprudence has developed two tests: the dominancy test and the holistic test.
The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constitutes infringement. Under this test, the question turns on whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or deceive purchases.
In contrast, the holistic test entails a consideration of the entirety of the marks applied to the products, including the labels and packaging, in determining confusing similarity.
The SC said the appellate court was correct in finding that Fortune Tobacco's goods cannot be mistaken as any of the three cigarette brands of the petitioners, using the holistic test.
"But, even if the dominancy test were to be used, as urged by the petitioners, but bearing in mind that a trademark serves as a tool to point out distinctly the origin or ownership of the goods to which it is affixed, the likelihood of confusion tantamount to infringement appears to be farfetched," it said.
Since the word "MARK," be it alone or in combination with the word "TEN" and Roman numeral "VII" does not point to the origin or ownership of the cigarettes to which they apply, the local buying public could not possibly be confused to or deceived that respondent's "MARK" is the product of petitioners and/or originated from the US, Canada or Switzerland, the SC said.
Court record showed that a complaint was filed by Philip Morris and its subsidiaries on Aug. 18, 1982 before the Pasig Regional Trial Court (RTC) for infringement of trademark and damages against Fortune Tobacco for manufacturing and selling cigarettes bearing trademark "MARK" which they claimed is identical and confusingly similar to their trademarks.
The lower court dismissed the case on Nov. 3, 1999 and held that the trademarks of the petitioners "do not themselves or by association point distinctly to the origin or ownership of the cigarettes to which they refer, such that the buying public could not be deceived into believing that 'MARK' cigarettes originated either from the US, Canada, or Switzerland."
The CA upheld the lower court's ruling on Jan. 21, 2003, prompting petitioners to elevate the case with the SC. (ECV/Sunnex)
(July 6, 2006 issue)
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