Professional Documents
Culture Documents
Vicente Lo
28 January 2013; Brion, J.
Digest prepared by Dianne Cadorna
I. Facts
1. The disputed marks in this case are the HIPOLITO & SEA HORSE &
TRIANGULAR DEVICE, FAMA, and other related marks, service marks
and trade names of Casa Hipolito S.A. Portugal appearing in kerosene
burners.
2. Respondent Vicente Lo and Philippine Burners Manufacturing Corporation
(PBMC) filed a complaint against petitioners, officers of Wintrade Industrial
Sales Corporation (Wintrade) and of National Hardware for violation of Sec.
169.1, in relation to Sec. 170 of RA 8293, which punishes any person who
uses in commerce any false designation of origin which is likely to cause
confusion or mistake as to the origin of the product.
3. Lo claimed that Gasirel-Industria de Comercio e Componentes para Gass,
Lda. (Gasirel), the owner of the disputed marks, assigned the above marks
in his favor, to be used in all countries except for those in Europe and
America. However, when Lo did a test buy of the kerosene burners
manufactured by Wintrade, it found that the said burners contained the
subject marks and the designations Made in Portugal and Original
Portugal in the wrappers, notwithstanding that as the assignee for the
trademarks, he had not authorized Wintrade to use these marks, nor had
Casa Hipolito S.A. Portugal.
4. It appears that a prior authority to that effect was given to Wintrades
predecessor-in-interest, Wonder Project & Development Corporation
(Wonder); however, Casa Hipolito S.A. Portugal had already revoked this
authority through a letter of cancellation dated May 31, 1993.
5. Thus, law claimed that Wintrades kerosene burners have caused
confusion, mistake and deception on the part of the buying public.
6. Petitioners countered that Wintrade owns the subject trademarks and their
variants, pursuant to certificates of registration issued by the IPO. They
alleged that their authority to use the marks from Casa Hipolito S.A.
Portugal was derived from Wonder, their predecessor-in-interest. At the
same time, they averred that that the products bought during the test buy
bearing the trademarks in question were not manufactured by, or in any
way connected with, the petitioners and/or Wintrade. Finally, they argued
that the marks Made in Portugal and Original Portugal are merely
descriptive and refer to the source of the design and the history of
manufacture, and were not meant to cause deception among the public.
7. The Chief State Prosecutor found probable cause against petitioners. The
DOJ affirmed.
8. The CA, and ultimately the SC affirmed. Thus, petitioners filed the instant
MR, reiterating their earlier arguments.
se of the Courts discretionary
power.
II. Issues
WON the finding of probable cause against petitioners for violation of Sec. 169.1
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