Hickok Manufacturing Co., Inc. vs. Court of Appeals

A trademark registration for one class of goods does not bar the registration and use of the identical mark by another on unrelated, non-competing articles of a different kind, where the marks in their entirety are visually distinct and the products move in separate trade channels, thereby eliminating any likelihood of confusion.

Hickok Manufacturing Co., Inc., a foreign corporation, registered the trademark “HICKOK” in the Philippines for a range of men’s accessories — leather wallets, key cases, money folds, belts, men’s briefs, neckties, handkerchiefs, and socks — all manufactured locally by its licensee, Quality House, Inc., but labelled to convey the impression of foreign manufacture. Santos Lim Bun Liong subsequently obtained a separate registration of the identical word “HICKOK” as a trademark for shoes, which were clearly marked “Made in Marikina, Rizal, Philippines.” Hickok Manufacturing sought cancellation of the shoe trademark, claiming a likelihood of confusion with its prior registration.

• The Petitioner’s Trademarks: Hickok Manufacturing Co., Inc. held Philippine registrations for the trademark “HICKOK” used on various men’s accessories, all manufactured locally by its licensee Quality House, Inc. under a royalty arrangement, but labelled to suggest foreign (stateside) origin. The registered marks featured the word “HICKOK” in red with a white background flanked by two branches of laurel in light or dark gold, with a ribbon below bearing the words “POSITIVELY FINER” in gold. A variant for briefs displayed “HICKOK” in white against a red background, with laurel branches in dark gold with white edges and the same ribbon wording in dark gold.
• The Respondent’s Trademark: Santos Lim Bun Liong’s registered mark for shoes depicted the word “HICKOK” in white against a gold background, surrounded by two branches of laurel in red. Below the word “HICKOK” appeared the word “SHOES” in red, and a red ribbon beneath carried the words “QUALITY AT YOUR FEET,” also in red. The shoes were unmistakably labelled “Made in Marikina, Rizal, Philippines.”
• The Dispute: Petitioner sought to cancel respondent’s shoe trademark on the ground that its prior registration of “HICKOK” for men’s wear should preclude registration of the same mark for footwear, asserting a likelihood of confusion. Petitioner had never manufactured or traded in shoes, and respondent had never produced any of the accessories covered by petitioner’s registration.

• Likelihood of Confusion: Petitioner maintained that the use of the identical word “HICKOK” on shoes was likely to cause confusion, mistake, or deception among purchasers, given the established reputation of its mark on men’s accessories. It invoked H.E. Heacock Co. v. American Trading Co. for the proposition that similarity of marks alone warranted cancellation.
• Priority of Registration: Petitioner contended that its prior registration of “HICKOK” for a line of men’s wear conferred an exclusive right over the mark that should bar registration of the same mark by any other party, regardless of the specific goods involved.

• Non-Competing Goods: Respondent countered that shoes are a product wholly unrelated to petitioner’s line of men’s accessories; the goods do not compete, and they move in entirely different channels of trade. No reasonable purchaser would mistake one for the other.
• Dissimilarity of Marks: Respondent emphasized that the competing marks were appreciably different in their overall design, coloring, and the accompanying ribbon inscriptions. When viewed in their entirety, no confusion could result.

• Likelihood of Confusion: Whether the respondent’s use of the trademark “HICKOK” on shoes was likely to cause confusion, mistake, or deception among ordinary purchasers in light of petitioner’s prior registration of the same mark for men’s accessories.
• Non-Competing Goods: Whether the registration of an identical trademark on unrelated, non-competing articles of a different kind may be cancelled on the basis of an earlier registration for dissimilar goods that travel in separate trade channels.

• Likelihood of Confusion: No likelihood of confusion was found. The two trademarks, considered in their entirety as they appear on the respective labels and in relation to the goods to which they are attached, were markedly distinct in design, color scheme, and the wording on the ribbons (“POSITIVELY FINER” versus “QUALITY AT YOUR FEET”). Moreover, the goods themselves — men’s accessories on one hand and shoes on the other — were unrelated and moved in separate channels of trade, making confusion remote. The reliance on H.E. Heacock was misplaced because that case involved merchandise very similar in design and character, unlike the present unrelated product lines.
• Non-Competing Goods: The earlier registration for men’s accessories did not bar the registration of the same mark for shoes. The controlling doctrine, as reiterated in Esso Standard Eastern Inc. v. Court of Appeals and Philippine Refining Co., Inc. v. Ng Sam, is that the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. In determining registrability, emphasis is placed on the similarity of the products involved, not on their arbitrary classification or general description. Because shoes and men’s accessories are distinctly different goods, the registration for shoes was properly allowed.

• Entirety Rule in Trademark Confusion — In assessing likelihood of confusion, the two trademarks must be considered in their entirety as they appear on the respective labels, in relation to the goods to which they are attached. Slight differences in design, color, and wording may, in combination, prevent confusion. The appellate court applied this principle by comparing the full visual presentation of each mark, noting the distinct colors, laurel depictions, and ribbon phrases, and concluding that the differences were sufficient to avoid public deception.
• Non-Competing Goods Doctrine — The adoption and registration of a trademark for one class of goods does not preclude another’s use and registration of the same mark on unrelated, non-competing articles of a different kind. The scope of protection is tied to the specific goods with which the mark is associated. This doctrine controlled the outcome: petitioner’s exclusive right in “HICKOK” for wallets, belts, and briefs did not extend to respondent’s entirely different product of shoes, especially given the absence of any competitive overlap.
• Product Similarity as Determinant — In resolving trademark disputes, emphasis should be on the similarity of the products involved, and not on the arbitrary classification or general description of their properties or characteristics. This rule, drawn from Philippine Refining Co. v. Ng Sam, directed the inquiry away from abstract cataloguing of goods and toward a practical assessment of whether the products compete or are likely to be confused by the buying public.

• “It is established doctrine, as held in the above-cited cases, that ‘emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics’ and that ‘the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind.’” — This passage encapsulates the twin doctrinal pillars upon which the decision rests: the requirement of product similarity and the non-competing goods rule.
• “Taking into account the facts of record that petitioner, a foreign corporation registered the trademark for its diverse articles of men’s wear … but are so labelled as to give the misimpression that the said goods are of foreign (stateside) manufacture and that respondent secured its trademark registration exclusively for shoes … and which are clearly labelled in block letters as ‘Made in Marikina, Rizal, Philippines,’ no error can be attributed to the appellate court in upholding respondent’s registration of the same trademark for his unrelated and non-competing product of Marikina shoes.” — The excerpt illustrates how the actual market presentation and labelling reinforced the separateness of the goods and negated any claim of consumer confusion.

• Acoje Mining Co., Inc. v. Director of Patents, 38 SCRA 480 (1971) — Followed as the leading case. It held that registration should not be denied where the competing goods (soy sauce and edible oil) were clearly different, the marks were visually distinct, and confusion was remote. The Court of Appeals anchored its decision on Acoje, and the Supreme Court affirmed that reliance.
• Esso Standard Eastern Inc. v. Court of Appeals, G.R. No. L-29971 (August 31, 1982) — Companion case promulgated on the same date, reaffirming the rule that trademark rights are limited to the specific goods for which the mark is used and do not extend to unrelated articles of a different kind.
• Philippine Refining Co., Inc. v. Ng Sam and Director of Patents, G.R. No. L-26676 (July 30, 1982) — Recent precedent emphasizing that product similarity, not arbitrary classification, governs the likelihood-of-confusion inquiry.
• H.E. Heacock Co. v. American Trading Co., 56 Phil. 763 — Distinguished. That case involved imported merchandise of very similar designs, whereas the present dispute concerned plainly unrelated products, making the citation inapposite.

• N/A — No specific statutory provision was cited; the decision rested entirely on jurisprudential doctrines developed under the applicable Trademark Law.

Justices Melencio-Herrera, Plana, Relova, and Gutierrez, Jr., concurred. Justice Makasiar was on leave. Justice Vasquez took no part.

None.