Commercial Law

Asia Brewery, Inc. vs Court of Appeals

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G.R. No. 103543 – 224 SCRA 437 – Mercantile Law – Intellectual Property Law – Law on Trademarks, Service Marks and Trade Names – Unfair Competition

In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as “San Miguel Pale Pilsen”; that Asia Brewery’s “Beer na Beer” product, by infringing upon SMC’s trademark has committed unfair competition as “Beer na Beer” creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC.

ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC.

HELD: No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient differences between the two. As found by the Supreme Court, among others they are the following:

1. The dominant feature of SMC’s trademark are the words “San Miguel Pale Pilsen” while that of Asia Brewery’s trademark is the word “Beer”. Nowhere in SMC’s product can be seen the word “Beer” nor in Asia Brewery’s product can be seen the words “San Miguel Pale Pilsen”. Surely, someone buying “Beer na Beer” cannot mistake it as “San Miguel Pale Pilsen” beer.

2. The bottle designs are different. SMC’s bottles have slender tapered neck while that of “Beer na Beer” are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape and design.

3. In SMC bottles, the words “pale pilsen” are written diagonally while in “Beer na Beer”, the words “pale pilsen” are written horizontally. Further, the words “pale pilsen” cannot be said to be copied from SMC for “pale pilsen” are generic words which originated from Pilsen, Czechoslovakia. “Pilsen” is a geographically descriptive word and is non-registrable.

4. SMC bottles have no slogans written on them while Asia Brewery’s bottles have a copyrighted slogan written on them that is “Beer na Beer”.

5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on the part of Asia Brewery to confuse the public and make it appear that “Beer na Beer” is a product of SMC, a long-established and more popular brand.

Justice Cruz Dissenting:

A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. (Del Monte vs CA & Sunshine Sauce)

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Visual Notes:

This is how SMC bottles are designed. The features of which are allegedly infringed upon by Asia Brewery in their Beer na Beer products.
This is how the old Beer na Beer looks like. Its design is allegedly meant to confuse the public into buying them and considering them as SMC products. PHOTO from
The new Beer na Beer design.
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