Elidad Kho vs Court of Appeals

of the same for the reason that they are not appropriate subjects of the said

379 SCRA 410 Mercantile Law Intellectual Property Law on Copyright

intellectual rights. Consequently, a preliminary injunction order cannot be

issued for the reason that the petitioner has not proven that she has a clear

Proper Subjects of Copyright

right over the said name and container to the exclusion of others, not having
Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the
holder

of

copyrights

over Chin

Chun

Su and its Oval

Facial

Cream

Container/Case. She also bought the patent rights over the Chin Chun Su &
Device and Chin Chun Su for medicated cream from one Quintin Cheng, who
was the assignee of Shun Yi Factory a Taiwanese factory actually
manufacturing Chin Chun Su products.
Kho filed a petition for injunction against Summerville General Merchandising
and Company to enjoin the latter from advertising and selling Chin Chun Su
products, in similar containers as that of Kho, for this is misleading the
public and causing Kho to lose income; the petition is also to enjoin
Summerville from infringing upon Khos copyrights.
Summerville in their defense alleged that they are the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products;
that Shun Yi even authorized Summerville to register its trade name Chin
Chun Su Medicated Cream with the Philippine Patent Office; that Quintin
Cheng, from whom Kho acquired her patent rights, had been terminated
(her services) by Shun Yi.
ISSUE: Whether or not Kho has the exclusive right to use the trade name
and its container.
HELD: No. Kho has no right to support her claim for the exclusive use of the
subject trade name and its container. The name and container of a beauty
cream product are proper subjects of a trademark (not copyright like what
she registered for) inasmuch as the same falls squarely within its definition.
In order to be entitled to exclusively use the same in the sale of the beauty
cream product, the user must sufficiently prove that she registered or used
it before anybody else did. Khos copyright and patent registration of the
name and container would not guarantee her the right to the exclusive use

proven that she has registered a trademark thereto or used the same before
anyone did.

Definition of trademarks (Sec. 121.1)

Distilleria Washington v. CA, 263 SCRA 303 (1996)
FACTS: La Tondea Distillers, Inc. filed before the Regional Trial Court for
the recovery, under its claim of ownership, of possession or replevin against
Distilleria Washington, Inc. or Washington Distillery, Inc. (Distilleria
Washington) of 18,157 empty "350 c.c. white flint bottles" bearing the
blown-in marks of "La Tondea Inc." and "Ginebra San Miguel," averring that
Distilleria Washington was using the bottles for its own "Gin Seven" products
without the consent of Distilleria Washington in violation of Republic Act 623.
The trial court dismissed the complaint, upholding Distilleria Washington's
contention that a purchaser of liquor pays only a single price for the liquor
and the bottle and is not required to return the bottle at any time. The Court
of Appeals reversed the trial court's decision, ruling that under Republic Act
623, the use of marked bottles by any person other than the manufacturer,
bottler or seller, without the latter's written consent, is unlawful.
It emphasized that the marks of La Tondea's ownership stamped or
blown-in to the bottles are sufficient notice to the public that the bottles are
La Tondea's property; hence, Distilleria Washington cannot be considered a
purchaser in good faith. On October 17, 1996, the Supreme Court affirmed
with modification the Court of Appeals' decision and acknowledged that there
was a valid transfer of the bottles to Distilleria Washington, except that its
possession of the bottles without the written consent of La Tondea gives
rise to a prima facie presumption of illegal use under R.A. 623.
In seeking reconsideration of the decision of the SC, petitioner
advances that (1) There is no showing and it cannot be assumed that if
Distilleria Washington would have possession of the bottles, it will exercise
the other attributes of ownership, along with the applicable jus lex over the
"marks of ownership stamped or marked" on the bottles; and (2) The
provision in Sec. 3 of Republic Act 623 to the effect that the use by any
person other than the registered manufacturer, bottler or seller without the
written permission of the latter of any such bottle, etc. shall give rise to a
prima facie presumption that such use or possession is unlawful, does not
arise in the instant case because the Court has itself found Section 5 of the
same law applicable.

ISSUES: WON La Tondea Distillers, Inc. transfer ownership of its marked

bottles or containers when it sold its products in the market?
WON the marked bottles or containers part of the products sold to the
public?
WON the possession of the bottles without the written consent of La
Tondena gives rise to a prima facie presumption of illegal use under R.A.
623.
HELD: R.A. No. 623 does not disallow the sale or transfer of ownership of
the marked bottles or containers. In plain terms, therefore, La Tondea not
only sold its gin products but also the marked bottles or containers, as well.
And when these products were transferred by way of sale, then ownership
over the bottles and all its attributes(jus utendi, jus abutendi, just fruendi,
jus disponendi) passed to the buyer. It necessarily follows that the
transferee has the right to possession of the bottles unless he uses them in
violation of the original owner's registered or incorporeal rights. . After
practically saying that La Tondea has surrendered ownership and
consequently, possession of the marked bottles or container, it is
incongruous and, certainly, it does not seem fair and just to still allow La
Tondea, citing the prima facie presumption of illegal use under Sec. 3 of
R.A. 623., to retain possession of the seized bottles by simply requiring
payment of just compensation to petitioner.
In resolving that petitioner is the owner of the bottles, this Court
applied Section 5 of R.A. 623; and in withholding possession of the bottles
from the petitioner and in concluding that use or possession thereof without
the written permission of the registered owner would constitute prima facie
presumption of illegal use, this Court invoked Sections 2 and 3 of the same
law. A careful reading of Sections 2, 3 and 5 of R.A. 623 would lead to the
conclusion that they contemplate situations separate and distinct from each
other. Section 2 prohibits any person from using, selling or otherwise
disposing of registered containers without the written consent of the
registrant. Such rights belong exclusively to the registrant. Under Section 3,
mere possession of such registered containers without the written consent of
the registrant is prima facie presumed unlawful. It appears and this is the
critical point that Sections 2 and 3 apply only when the "filling" up of the
bottle or the "use" of the bottle is "without the written permission" of the
"registered manufacturer, bottler, or seller," who has registered the marks of
"ownership" of the bottles. It is thus implicit that Sections 2 and 3 apply only
when the "registered manufacturer, bottler, or seller" retain ownership of the
bottles. Upon the other hand, when the bottles have been "transferred by

way of sale," Section 5 applies, thereby precluding the institution of any

action "under this Act," meaning to say, any action under Sections 2 and 3.
Since the Court has found that the bottles have been transferred by way of
sale, then La Tondea has relinquished all its proprietary rights over the
bottles in favor of Distilleria Washington who has obtained them in due
course. Now as owner, it can exercise all attributes of ownership over the
bottles. This is the import of the decision that La Tondea had transferred
ownership over its marked bottles or containers when it sold its gin products
to the public. While others may argue that Section 5 is applicable only to the
immediate transferee of the marked bottles or container, this matter is best
discussed where the applicability of Sec. 5, R.A. 623 is squarely raised. It
must be recalled, however, that this is a case of replevin, not a violation of
the "trademark protection of the registrant" under R.A. 623 or of the
Trademark Law.

G.R. No. L-48226

different classes by the Patent Office because they are deemed not to

ANA ANG V TEODORO

possess the same descriptive properties, they would, nevertheless, be held

by the courts to belong to the same class if the simultaneous use on them of

December 14, 1942

identical or closely similar trademarks would be likely to cause confusion as

to the origin, or personal source, of the second users goods. They would be

Facts:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a
trade-mark and as a trade-name, in the manufacture and sale of slippers,
shoes, and indoor baseballs since 1910. On September 29, 1915, he
formally registered it as trade-mark and as trade-name on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants
and shirts on April 11, 1932, and established a factory for the manufacture
of
said
articles
in
the
year
1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang) on
the grounds that the two trademarks are dissimilar and are used on different
and non-competing goods; that there had been no exclusive use of the
trade-mark by the plaintiff; and that there had been no fraud in the use of
the said trade-mark by the defendant because the goods on which it is used
are
essentially
different
from
those
of
the
plaintiff.
The Court of Appeals reversed said judgment, directing the Director of
Commerce to cancel the registration of the trade-mark "Ang Tibay" in favor
of petitioner, and perpetually enjoining the latter from using said trade-mark
on
goods
manufactured
and
sold
by
her.
Thus,

this

case,

petition

for

certiorari.

considered as not falling under the same class only if they are so dissimilar
or so foreign to each other as to make it unlikely that the purchaser would
think that the first user made the second users goods.

ANA L. ANG v. TORIBIO TEODORO. G.R. No. L-48226. December 14,

1942
FACTS:

Ang appealed the CA's ruling to cancel the registration of the trade-mark
"Ang Tibay" in her favor preventing her from using the name on her goods.

Teodoro continuously used Ang Tibay as a trademark and tradename in his

sale of slippers, shoes, and indoor baseballs since 1910. He formally
registered it as trade-mark on September 29, 1915, and as trade-name on
January 3, 1933.

Issue:

Are the goods or articles or which the two trademarks are used similar or
belong to the same class of merchandise?

Ang registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles
in the year 1937. Her sales boomed from 1938 thereon.

Ruling:
Trial court favored

Ang on the grounds that the two trademarks are

Yes, pants and shirts are goods closely similar to shoes and slippers. They

dissimilar and are used on different and non-competing goods; that there

belong to the same class of merchandise as shoes and slippers. They are

had been no exclusive use of the trade-mark by the plaintiff; and that there

closely related goods.

had been no fraud in the use of the said trade-mark by the defendant

The Supreme Court affirmed the judgment of the Court of Appeals and
added that although two non-competing articles may be classified under to

because the goods on which it is used are essentially different from those of
the plaintiff. The CA reversed that judgment, citing that Teodoro acquired a
secondary meaning in his goods.

ISSUE: Whether the CA's decision should be reversed.

RULING:

No. Although Ang Tibay is a phrase that may not be appropriated by law, the
SC took note of the effort Teodoro did to register such name. The SC agrees
that the phrase Ang Tibay did point to the origin of the wares applied after
being used for twenty-two years.

SC found it unnecessary to apply the Doctrine of Secondary Meaning

because the phrase was neither geographic nor descriptive, was originally
capable of exclusive appropriation as a trade-mark. SC noted, though, that
even if so, Teodoro has used the phrase for so long, it has acquired a
proprietary connotation.

SC also points out that there can be unfair competition or unfair trading
even if the goods are non-competing, and that such unfair trading can cause
injury or damage to the first user of a given trade-mark, first, by prevention
of the natural expansion of his business and, second, by having his business
reputation confused with and put at the mercy of the second user. People
may not disagree that shoes and shirts are not as unrelated as fountain pens
and razor blades, for instance. The mere relation or association of the
articles is not controlling. So even if, Ang and Teodoro had different goods,
the phrase cannot still be used by Ang.

CASE DIGEST: Etepha A.G. vs. Director of Patents

16 SCRA 495 (1966)

FACTS:
On April 23, 1959, private respondent Westmont Pharmaceuticals,
Inc. sought registration of trademark Atussin This was objected to by
petitioner Etepha, A.G. alleging that it will be detrimental on their part as it
is confusingly similar to its Pertussin. Both products deal with the treatment
of cough.

ISSUE:
Whether or not Attusin may be registered as a trademark.

HELD:
Yes. x x x The validity of a cause for infringment is predicated upon
colorable imitation. The phrase colorable imitaion denotes such a close or
ingenious imitation as to be calculated to deceive ordinary persons, or such
a resemblance to the original as to deceive an ordinary purchaser giving
such attention as a purchaser usually gives, and to cause him to purchase
the one supposing it to be the other.

While tussin by itself cannot thus be used exclusively to identify

ones goods, it may properly become the subject of a trademark by
combination with another word or phrase.

The two labels are entirely different in colors, contents, arrangement

of words theeon, sizes, shapes and general appearance. The contrasts in
pictorial effects and appeals to the eye is so pronounced that the label of one
cannot be mistaken for that of the other, not even by persons unfamiliar with
the two trademarks.

We cannot escape notice of the fact that the two words do not sound
alike when pronounced.

Mirpuri vs CA, GR No. 114508, 19 November 1999, 318 SCRA 516

ISSUE

FACTS

Whether or not the treaty (Paris Convention) affords protection to a

foreign corporation against a Philippine applicant for the registration of a
similar trademark.

Lolita Escobar applied with the Bureau of Patents for the registration
of the trademark Barbizon, alleging that she had been manufacturing and
selling these products since 1970. private respondent Barbizon Corp opposed
the application in IPC No. 686. The Bureau granted the application and a
certificate of registration was issued for the trademark Barbizon. Escobar
later assigned all her rights and interest over the trademark to petitioner
Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of
the trademark. Due to his failure, the Bureau cancelled the certificate of
registration. Escobar reapplied and Mirpuri also applied and this application
was also opposed by private respondent in IPC No. 2049, claiming that it
adopted said trademark in 1933 and has been using it. It obtained a
certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled
petitioners registration and declared private respondent the owner and prior
user of the business name Barbizon International.

HELD
The Court held in the affirmative. RA 8293 defines trademark as any
visible sign capable of distinguishing goods. The Paris Convention is a
multilateral treaty that seeks to protect industrial property consisting of
patents, utility models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and at the same
time aims to repress unfair competition. In short, foreign nationals are to be
given the same treatment in each of the member countries as that country
makes available to its own citizens. Nationals of the various member nations
are thus assured of a certain minimum of international protection of their
industrial property.