Document (16)

ASIA BREWERY, INC. VS. COURT OF APPEALS GR No. 103543, July 5 1993

FACTS: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN.

The trial court dismissed the complaint.

On appeal, the Court of Appeals reversed the decision of the trial court and found ABI guilty of infringement of trademark and unfair competition.

ISSUE: Whether or not Asia Brewery Inc. committed infringement of trademark and unfair competition against San Miguel Corporation.

HELD: No infringement. Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. If the competing trademark 1) contains the main or essential or dominant features of another, and 2) confusion and deception is likely to result, infringement takes place.

In the instant case, the dominant feature of SMC is the words “SAN MIGUEL PALE PILSEN” with elaborate serifs at the beginning and end of the letters "S" and "M." While the dominant feature of ABI's trademark is the name: “BEER PALE PILSEN” with the word "Beer" written in large amber letters. Besides the dissimilarity in their dominant feature, the following other dissimilarities in the appearance of the competing products abound:

San Miguel Beer na Beer Bottle has a slender tapered neck Fat, bulging neck.

Bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines" encircling the same Stamped with the name "BEER" in the center, surrounded by the words "Asia Brewery Incorporated Philippines.” "Bottled by the San Miguel Brewery, Philippines," "Especially brewed and bottled by Asia Brewery Incorporated, Philippines." With SMC logo No logo Price: P7.00 per bottle Price: P4.25 per bottle

Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance, Beer na Beer cannot be said to be similarly confusing with San Miguel Pale Pilsen. The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which originated in the City of Pilsen, Czechoslovakia. No unfair competition. Sec 29, Republic Act No. 166 as amended describes unfair competition as the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals, or his business, or services, for those of another who has already established goodwill for his similar goods, business or services, or any acts calculated to produce the same result. Therefore, the universal test question is whether the public is likely to be deceived.

In this case, the use of similar but unidentical bottle size, shape & color is not unlawful as aptly explained. The 320 ml capacity is the standard prescribed by the Dept of Trade. The amber color is a functional feature for it prevents transmission of light and provides the maximum protection to beer. Being of functional or common use, SMC’s being the first to use does not give SMC exclusive right to such use. The bottle shape is usually standardized just as a ketchup or vinegar bottle with its familiar elongated neck, thereby dismissing the attendance of bad faith or the intention to deceive the public by ABI.

Moreover, buyers generally order their beer by brand in the supermarket, sari-sari stores, restaurants; thus dismissing the idea that Beer na Beer can be passed off as San Miguel Beer. There can be no confusion or the likelihood of deception among the consumers.