Canon Kabushiki Kaisha v.
CA
Different Nice Classiffication
Petitioner Argument:
Evidence presented by petitioner consisted of its certificates of registration for the mark
CANON in various countries covering goods belonging to class 2 (paints, chemical products,
toner, and dye stuff). Petitioner also submitted in evidence its Philippine Trademark
Registration No. 39398, showing its ownership over the trademark CANON also under class 2.
SC:
The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly,
there is a world of difference between the paints, chemical products, toner, and dyestuff of
petitioner and the sandals of private respondent.
“Forestalls Normal Expansion of Business”
Petitioner Argument:
Petitioner counters that notwithstanding the dissimilarity of the products of the parties, the
trademark owner is entitled to protection when the use of by the junior user "forestalls the
normal expansion of his business".
SC:
We do not agree. Even in this instant petition, except for its bare assertions, petitioner failed to
attach evidence that would convince this Court that petitioner has also embarked in the
production of footwear products.
It would be taxing one's credibility to aver at this point that the production of sandals could be
considered as a possible "natural or normal expansion" of its business operation"
Confusion of Goods and Business
Petitioner Argument:
Petitioner is apprehensive that there could be confusion as to the origin of the goods, as well as
confusion of business, if private respondent is allowed to register the mark CANON. In such a
case, petitioner would allegedly be immensely prejudiced if private respondent would be
permitted to take "a free ride on, and reap the advantages of, the goodwill and reputation of
petitioner Canon"
SC:
The likelihood of confusion of goods or business is a relative concept, to be determined only
according to the particular, and sometimes peculiar, circumstances of each case.
Here, the products involved are so unrelated that the public will not be misled that there is the
slightest nexus between petitioner and the goods of private respondent.
In cases of confusion of business or origin, the question that usually arises is whether the
respective goods or services of the senior user and the junior user are so related as to likely
cause confusion of business or origin, and thereby render the trademark or tradenames
confusingly similar.
They may also be related because they serve the same purpose or are sold in grocery stores.
Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the
trademark CANON are unrelated to sandals, the product of private respondent. We agree with
the BPTTT, following the Esso doctrine, when it noted that the two classes of products in this
case flow through different trade channels. The products of petitioner are sold through special
chemical stores or distributors while the products of private respondent are sold in grocery
stores, sari-sari stores and department stores. Thus, the evident disparity of the products of the
parties in the case at bar renders unfounded the apprehension of petitioner that confusion of
business or origin might occur if private respondent is allowed to use the mark CANON.
Protective Mantle of Paris Convention
Petitioner Argument:
Petitioner invokes the protective mantle of the Paris Convention. Petitioner asserts that it has the
exclusive right to the mark CANON because it forms part of its corporate name or tradename.
Petitioner questions the applicability of the guidelines embodied in the Memorandum of then Minister
of Trade and Industry Roberto Ongpin (Ongpin) dated October 25, 1983 which according to petitioner
implements Article 6bis of the Paris Convention, the provision referring to the protection of trademarks.
The memorandum reads:
"a) the mark must be internationally known;
b) the subject of the right must be a trademark, not a patent or copyright or anything else;
c) the mark must be for use in the same or similar class of goods;
d) the person claiming must be the owner of the mark."
According to petitioner, it should not be required to prove that its trademark is well-known and that the
products are not similar as required by the quoted memorandum. Petitioner emphasizes that the
guidelines in the memorandum of Ongpin implement Article 6bis of the Paris Convention, the provision
for the protection of trademarks, not tradenames.
SC:
From the set of facts found in the records, it is ruled that the Petitioner failed to comply with the third
requirement of the said memorandum that is the mark must be for use in the same or similar kinds of
goods. The Petitioner is using the mark "CANON" for products belonging to class 2 (paints, chemical
products) while the Respondent is using the same mark for sandals (class 25). Hence, Petitioner's
contention that its mark is well-known at the time the Respondent filed its application for the same
mark should fail. "
Automatic Trademark Protection from Tradenames?
Petitioner Argument:
As far as petitioner is concerned, the fact that its tradename is at risk would call for the protection
granted by Article 8 of the Paris Convention. Petitioner calls attention to the fact that Article 8, even as
embodied in par. 6, sec. 37 of RA 166, mentions no requirement of similarity of goods. Petitioner claims
that the reason there is no mention of such a requirement, is "because there is a difference between the
referent of the name and that of the mark " and that "since Art. 8 protects the tradename in the
countries of the Union, such as Japan and the Philippines, Petitioner's tradename should be protected
here.
SC:
We agree with public respondents that the controlling doctrine with respect to the applicability of
Article 8 of the Paris Convention is that established in Kabushi Kaisha Isetan vs. Intermediate Appellate
Court.
"Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is
no automatic protection afforded an entity whose tradename is alleged to have been infringed
through the use of that name as a trademark by a local entity.
