Respondent San Miguel Corporation filed a complaint against petitioner Asia Brewery for trademark infringement and unfair competition on account of the latter’s BEER PALE PILSEN or BEER NA BEER product which has been competing with petitioner’s SAN MIGUEL PALE PILSEN for a share of the local beer market. The trial court dismissed the complaint. On appeal, CA found petitioner guilty of trademark infringement.
(1) Whether or not the words ‘pale pilsen’ may be exclusively appropriated and used by SMC;
(2) Whether or not there is confusing similarity between the two trademarks.
(1) NO. 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 is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. “Pilsen” is a “primarily geographically descriptive word,” hence, non-registrable and not appropriable by any beer manufacturer. The words “pale pilsen” may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark: SAN MIGUEL PALE PILSEN. No one may appropriate generic or descriptive words. They belong to the public domain.
(2) NO. There is hardly any dispute that the dominant feature of SMC’s trademark is the name of the product: SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber background across the upper portion of the rectangular design. On the other hand, the dominant feature of ABI’s trademark is the name: BEER PALE PILSEN, with the word “Beer” written in large amber letters, larger than any of the letters found in the SMC label.
The trial court perceptively observed that the word “BEER” does not appear in SMC’s trademark, just as the words “SAN MIGUEL” do not appear in ABI’s trademark. Hence, there is absolutely no similarity in the dominant features of both trademarks. Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving otherwise. There is no confusing similarity between the competing beers for the name of one is “SAN MIGUEL” while the competitor is plain “BEER” and the points of dissimilarity between the two outnumber their points of similarity.