Professional Documents
Culture Documents
SECOND DIVISION
[G.R. No. 113074. January 22, 1997]
ALFRED HAHN, petitioner, vs. COURT OF APPEALS and
BAYERISCHE MOTOREN WERKE
AKTIENGESELLSCHAFT (BMW), respondents.
Facts:
Petitioner is a Filipino citizen doing business under the name of
Hahn-Manila. Private respondent BMW is a non-resident
corporation incorporated in Germany.
BMW moved to dismiss the case contending that the trial court did
not acquire jurisdiction over it through the service of summons on
DTI because BMW is a foreign corporation and is not doing business
in the Philippines.
The trial court deferred the resolution of the motion for dismissal
until after trial on the merits for the reason that the grounds advanced
by BMW did not seem indubitable. BMW appealed said order to the
CA. The CA resolved that BMW was not doing business in the
country and therefore jurisdiction over it could not have been
acquired through the service of summons on DTI and it dismissed
the petition.
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invoices and forms of BMW. Moreover, the Court distinguished an
agent from a broker.
Philippine Nut in its answer stated that its registered label is not
confusingly similar to that of Standard Brands as the latter alleges.
G. License Contracts
H. Cancellation
Philippine Nut Industry, Inc. v. Standard Brands Incorporated
and Evalle
Philippine Nut, a domestic corporation, obtained from the Patent
Office a Certificate of Registration covering the trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used
on its product of salted peanuts. Standard Brands, a foreign
corporation, then filed with the Director of Patents an Inter Partes
Case asking for the cancellation of Philippine Nut's certificate of
registration on the ground that "the registrant was not entitled to
register the mark at the time of its application for registration
thereof" for the reason that it (Standard Brands) is the owner of the
trademark "PLANTERS COCKTAIL PEANUTS".
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The word PLANTERS printed across the upper portion of the label
in bold letters easily attracts and catches the eye of the ordinary
consumer and it is that word and none other that sticks in his mind
when he thinks of salted peanuts it is the word PLANTERS which
draws the attention of the buyer and leads him to conclude that the
salted peanuts contained in the two cans originate from one and the
same manufacturer.
Philippine Nut also used in its label the same coloring scheme of
gold, blue, and white, and basically the same lay-out of words such
as "salted peanuts" and "vacuum packed" with similar type and size
of lettering as appearing in Standard Brands' own trademark, all of
which result in a confusing similarity between the two labels.
Lastly, the applicability of the doctrine of secondary meaning to the
situation is appropriate because there is oral and documentary
evidence showing that the word PLANTERS has been used by and
closely associated with Standard Brands for its canned salted peanuts
since 1938.
152.2. The use of the mark in a form different from the form in
which it is registered, which does not alter its distinctive
character, shall not be ground for cancellation or removal of the
mark and shall not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the
mark is registered shall prevent its cancellation or removal in
respect of all other goods or services of the same class.
152.4. The use of a mark by a company related with the
registrant or applicant shall inure to the latters benefit, and
such use shall not affect the validity of such mark or of its
registration:
Provided, That such mark is not used in such manner as to
deceive the public. If use of a mark by a person is
controlled by the registrant or applicant with respect to the
nature and quality of the goods or services, such use shall
inure to the benefit of the registrant or applicant. (n)
5
World Intellectual Property Organization
PhilippinesRegulations on Interpartes Proceedings
Any person who shall, without the consent of the owner of the
registered mark:
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copyright complaint against respondent Sunshine Sauce
Manufacturing Industries (SSMI), also a maker of catsup and other
kitchen sauces. In its complaint, Del Monte alleged that SSMI are
using bottles and logos identical to the petitioner, to which is
deceiving and misleading to the public.
In its answer, Sunshine alleged that it had ceased to use the Del
Monte bottle and that its logo was substantially different from the
Del Monte logo and would not confuse the buying public to the
detriment of the petitioners.
The RTC of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties
nor on the continued use of Del Monte bottles. The decision was
affirmed in toto by the Court of Appeals.
ISSUE:
Did SSMI commit an infringement against Del Monte in the use of
its logos and bottles?
RULING:
Yes.
In determining whether two trademarks are confusingly similar, the
two marks in their entirety as they appear in the respective labels
must be considered in relation to the goods to which they are
attached; the discerning eye of the observer must focus not only on
the precognizant words but also on the other features appearing on
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pants under the brand name Europress with back pockets bearing a
design similar to the arcuate trademark of private respondents,
thereby causing confusion on the buying public, prejudiced to private
respondents goodwill and property right.
Sambar filed a separate answer. He admitted that copyright
Registration No. 1-1998 was issued to him, but he denied using it.
He said he did not authorize anyone to use the copyrighted design.
Trial court issued a writ of preliminary injunction enjoining CVSGIC
and petitioner from manufacturing, advertising and selling pants with
the arcuate design on their back pockets.
Private respondents moved for reconsideration praying for the
cancellation of petitioners copyright registration.
Trial court granted the prayer.
Petitioner appealed to the Court of Appeals which affirmed the ruling
of the trial court.
Both the trail court and the Court of Appeals found there was
infringement.
HELD:
ISSUE:
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Held: Petition dismissed
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE,
the lone similar word is FRUIT.
WE agree with the respondent court that by mere pronouncing the
two marks, it could hardly be said that it will provoke a confusion, as
to mistake one for the other. Standing by itself, FRUIT OF THE
LOOM is wholly different from FRUIT FOR EVE. WE do not agree
with petitioner that the dominant feature of both trademarks is the
word FRUIT for even in the printing of the trademark in both hang
tags, the word FRUIT is not at all made dominant over the other
words.
The similarities of the competing trademarks in this case are
completely lost in the substantial differences in the design and
general appearance of their respective hang tags.
WE have examined the two trademarks as they appear in the hang
tags submitted by the parties and We are impressed more by the
dissimilarities than by the similarities appearing therein. WE hold
that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE
do not resemble each other as to confuse or deceive an ordinary
purchaser.
The ordinary purchaser must be thought of as having, and credited
with, at least a modicum of intelligence (Carnation Co. vs. California
Growers Wineries, 97 F. 2d 80; Hyram Walke and Sons vs. PennMaryland Corp., 79 F. 2d 836) to be able to see the obvious
differences between the two trademarks in question.
Furthermore, We believe that a person who buys petitioner's products
and starts to have a liking for it, will not get confused and reach out
for private respondent's products when she goes to a garment store.
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WON there is Trademark Infringement.
HELD/RATIO:
Yes.
A trademark has been generally defined as "any word, name, symbol
or device adopted and used by a manufacturer or merchant to
identify his goods and distinguish them from those manufactured and
sold by others."
Colorable imitation 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, as to cause him to purchase the one
supposing it to be the other.
In determining if colorable imitation exists, jurisprudence has
developed two kinds of tests - the Dominancy Test and the Holistic
Test.
The test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion
or deception and thus constitute infringement.
On the other side of the spectrum, the holistic test mandates that the
entirety of the marks in question must be considered in determining
confusing similarity.
The determination of whether two trademarks are indeed confusingly
similar must be taken from the viewpoint of the ordinary purchasers
who are, in general, undiscerningly rash in buying the more common
and less expensive household products like coffee, and are therefore
less inclined to closely examine specific details of similarities and
dissimilarities between competing products.
This Court cannot agree that totality test is the one applicable in this
case.
Rather, this Court believes that the dominancy test is more suitable to
this case in light of its peculiar factual milieu.
If the ordinary purchaser is "undiscerningly rash" in buying such
common and inexpensive household products as instant coffee, and
would therefore be "less inclined to closely examine specific details
of similarities and dissimilarities" between the two competing
products, then it would be less likely for the ordinary purchaser to
notice that CFCs trademark FLAVOR MASTER carries the colors
orange and mocha while that of Nestles uses red and brown.
The application of the totality or holistic test is improper since the
ordinary purchaser would not be inclined to notice the specific
features, similarities or dissimilarities, considering that the product is
an inexpensive and common household item.
SKECHERS, U.S.A., INC. V. INTER PACIFIC INDUSTRIAL
TRADING CORP., ET.AL., G.R. NO. 164321 November 30, 2006
Trademark Infringement; Finding that there was no colourable
imitation of petitioners trademark is merely preliminary and did not
finally determine the merits of the possible criminal proceedings that
may be instituted by petitioner.
FACTS:
Petitioner is a foreign corporation existing under the laws of
California engaged in the manufacture of footwear that filed
before the trial court to protect its intellectual property
rights.
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trademark S (within an oval design) both used in footwear
namely shoes, boots and slippers of all kinds, clothing tshirts, sweat shirts, sweat pants, socks, shorts, and hats.
ISSUE(S):
WHETHER OR NOT The imitation of S by Strong shoes
constitute Trademark Infringement. NO.
RATION/RULING:
Based on the evidence presented, particularly the sample of both the
shoes, the appropriation of the symbol S on their rubber shoes
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shirts, in the Philippines. Presently, it is the only company that has
authority to manufacture, distribute, and sell products bearing the
LEVIS trademarks or to use such trademarks in the Philippines.
(4) a red tab, made of fabric, attached at the left seam of the
right back pocket of petitioners standard five-pocket jeans, also
appears at the same place on LIVES jeans;
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CA= RULE 43 (DENIED)
Prosource v. Horphag
GR. 180073
Nov. 25, 2009
FACTS:
Horphag Research Management SA is a Swiss corporation and the
owner of trademark PYCOGENOL, a food supplement distributed
by Zuellig Pharma Corporation. Prosource International is a
domestic corporation which distributed a similar food supplement
using the mark PCO-GENOLS since 1996.
Horphag demanded that Prosource cease and desist from using the
trademark. Without notifying Horphag, Prosource stopped using
PCO-GENOLS and changed its mark to PCO-PLUS, as of June
2000. Nonetheless, on August 2000, Horphag filed a complaint for
infringement, preliminary injunction, actual and nominal damages
and attorneys fees. On January 2006, the RTC ruled in favor of
Horphag. It observed that PYCNOGENOL and PCOGENOLS have
the same suffix GENOL which appears to be merely descriptive and
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thus open for trademark registration by combining it with other
words.
The trial court, likewise, concluded that the marks, when read, sound
similar, and thus confusingly similar especially since they both refer
to food supplements.
The court added that Prosources liability was not negated by its act
of pulling out of the market the products bearing the questioned mark
since the fact remains that from 1996 until June 2000, Prosource had
infringed Horphags product by using the trademark PCOGENOLS.
As Horphag manifested that it was no longer interested in recovering
actual damages, Prosource was made to answer only for attorneys
fees amounting to P50,000.00. For lack of sufficient factual and legal
basis, the court dismissed petitioners counterclaim. Prosources
motion for reconsideration was likewise denied. CA affirmed.
15
We affirm the conviction, but we modify the penalty by imposing an
indeterminate sentence, conformably with the Indeterminate
Sentence Law and pertinent jurisprudence.
Facts
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same code a judgment of ACQUITTAL is hereby rendered in his
favor.
Issue
THE REGIONAL TRIAL COURT ERRED IN CONVICTING THE
ACCUSED ON THE BASIS OF THE SELF-SERVING
AFFIDAVITS AND TESTIMONIES OF THE POLICE OFFICERS
WHO CONDUCTED THE RAID ON THE HOUSE OF THE
ACCUSED.
He submits that the only direct proofs of his guilt were the selfserving testimonies of the NBI raiding team; that he was not present
during the search; that one of the NBI raiding agents failed to
immediately identify him in court; and that aside from the two
bottles of Fundador brandy, the rest of the confiscated items were not
found in his house.
Ruling
The petition for review has no merit. Appeal confined only to
Questions of Law. Accordingly, we reject the appeal for the
following reasons: The petition for review replicates Batistis
appellant's brief filed in the CA,19 a true indication that the errors he
submits for our review and reversal are those he had attributed to the
RTC.
He thereby rests his appeal on his rehashed arguments that the CA
already discarded. His appeal is, therefore, improper, considering
that his petition for review on certiorari should raise only the errors
committed by the CA as the appellate court, not the errors of the
RTC.
To accord with the established doctrine of finality and bindingness of
the trial courts findings of fact, we do not disturb such findings of
fact of the RTC, particularly after their affirmance by the CA, for
Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc.
Facts:
The petitioner holds a business in maintaining coffee shops in
the Philippines. It is registered with the Securities and Exchange
Commissionin January 2001.
In its franchise agreement with Coffee Partners Ltd, it carries the
trademark San Francisco Coffee.
Respondent is engaged in the wholesale and retail sale of coffee that
was registered in SEC in May 1995 under a registered business
name of San Francisco Coffee &Roastery, Inc. It entered into a
joint venture with Boyd Coffee USA to study coffee carts in malls.
When respondent learned that petitioner will open a coffee shop in
Libis, Q.C. they sent a letter to the petitioner demanding them to stop
using the name San Francisco Coffee as it causes confusion to the
minds of the public.
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A complaint was also filed by respondents before the Bureau of
Legal Affairs of the Intellectual Property Office for infringement and
unfair competition with claims for damages. Petitioners contend that
there are distinct differences in the appearance of their trademark and
that respondent abandoned the use of their trademark when it joined
venture with Boyd Coffee USA.
The Bureau of Legal Affairs of the IPO held that petitioners
trademark infringed on the respondents trade name as
it registered its business name first with the DTI in 1995 while
petitioner only registered its trademark in 2001.
Furthermore, it ruled that the respondent did not abandon the use of
its trade name upon its joint venture with Boyd Coffee USA since in
order for abandonment to exist it must be permanent, intentional and
voluntary.
It also held that petitioners use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion because of the
exact similarity in sound, spelling, pronunciation, and commercial
impression of the words "SAN FRANCISCO" which is the dominant
portion of respondents trade name and petitioners trademark. Upon
appeal before the office of the Director General of the IPO, the
decision of its legal affairs was reversed declaring there was no
infringement. The Court of Appeals however set aside its decision
and reinstated the IPO legal affairs decision. Petitioner contends that
the respondents trade name is not registered therefore a suit for
infringement is not available.
Issue:
Whether or not the petitioners use of the trademark "SAN
FRANCISCO COFFEE" constitutes infringement of respondents
trade name"SAN FRANCISCO COFFEE & ROASTERY, INC.,"
even if the trade name is not registered with the Intellectual Property
Office (IPO).
Ruling:
Registration of a trademark before the IPO is no longer
a requirement to file an action for infringement as provided in
Section 165.2 of RA 8293.
All that is required is that the trade name is previously used in trade
or commerce in the Philippines. There is no showing that respondent
abandoned the use of its trade name as it continues to embark to
conduct research on retailing coffee, import and sell coffee
machines as among the services for which the use of the business
name has been registered.
The court also laid down two tests to determine similarity and
likelihood of confusion.
The dominancy test focuses on similarity of the prevalent features of
the trademarks that could cause deception and confusion that
constitutes infringement. Exact duplication or imitation is not
required. The question is whether the use of the marks involved is
likely to cause confusion or mistake in the mind of the public or to
deceive consumers. the holistic test entails a consideration of the
entirety of the marks as applied to the products, including the labels
and packaging, in determining confusing similarity.15 The discerning
eye of the observer must focus not only on the predominant words
but also on the other features appearing on both marks in order that
the observer may draw his conclusion whether one is confusingly
similar to the other.
Applying either the dominancy test or the holistic test, petitioners
"SAN FRANCISCO COFFEE" trademark is a clear infringement of
respondents "SAN FRANCISCO COFFEE & ROASTERY, INC."
trade name.
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19
in favour of Kunnan by the BPTTT and the Court of Appeals. This
decision became final.
Issue: WON Superior, as a distributor, is the true and rightful owner
of the trademarks
Held: No. An exclusive distributor does not acquire any proprietary
interest in the principals trademark and cannotregister it, unless the
owner has assigned the right.
Trademark infringement
To establish trademark infringement, the following elements must be
proven:
(1) the validity of plaintiffs mark;
(2) the plaintiffs ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged
infringer results in likelihood of confusion.
Based on these elements, we find it immediately obvious that the
second element the plaintiffs ownership of the mark was what
the Registration Cancellation Case decided with finality.
On this element depended the validity of the registrations that, on
their own, only gave rise to the presumption of, but was not
conclusive on, the issue of ownership. In no uncertain terms, the
appellate court in the Registration Cancellation Case ruled that
SUPERIOR was a mere distributor and could not have been the
owner, and was thus an invalid registrant of the disputed trademarks.
The right to register a trademark is based on ownership, and
therefore only the owner can register it.
In finding that Kunnan owned the marks, the court considered
the distributorship agreement and the so-called assignment
agreement in their entirety; it confirmed that Superior had sought to
be Kunnans exclusive distributor.
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to the identity of the goods sold or of the manufacturer of the goods
sold.
GANCAYCO, J.:
Facts:
On July 1, 1965 ARMCO Steel Corporation, a corporation organized
in Ohio, U.S.A., hereinafter called ARMCO-OHIO, obtained from
the Philippine Patent Office, Certificate of Registration No. 11750
for its trademark consisting of the word "ARMCO", pursuant to
trademark rules, the petitioner filed with the said patent office an
"Affidavit of Use" for said trademark, which was subsequently
accepted and for which the Patent.
21
A manifestation and motion was filed by respondent informing SEC
that it had already changed its corporate name with the approval of
the SEC to ARMCO Structures, Inc.
Petitioners then filed a comment to said manifestation alleging that
the change of name of said respondent was not done in good faith
and is not in accordance with the order of the Commission of
February 14, 1975 so that drastic action should be taken against the
respondent and its officers.
SEC thus said respondent, its directors, and officers were ordered
within ten (10) days from notice to comply with the order of
February 14, 1975.
An appeal was interposed by the respondent to the SEC en banc. The
Commission en banc in an order of December 14, 1979 dismissed
the appeal for lack of merit.
Issue:
WHETHER OR NOT SHOULD AMCRO PHILIPPINES SHOULD
CHANGE ITS CORPORATE NAME PERSUANT TO SECS
ORDER
Held:
YES.The order of the public respondent SEC of February 14, 1975
which has long become final and executory clearly spells out that
petitioner must "take out ARMCO and substitute another word in
lieu thereof in its corporate name by amending the articles of
incorporation to that effect, ... " Far from complying with said order
petitioner amended its corporate name into ARMCO Structures, Inc.,
and secured its approval by the SEC on March 22, 1976.
The Order of February 14, 1975, cannot but be clearer than what
it purports to require or demand from respondent. Under in no
distinct terms, it enjoins the removal or deletion of the word
'Armco' from respondent's corporate name, which was not so
complied with. The Commission, therefore, cannot give its
imprimatur to the new corporate name because there was no
compliance at all.
The fact that the Securities and Exchange Commission issued its
certificate of filing of amended articles of incorporation on March
22, 1976, is nothing but an illusory approval of the change of
corporate name and a self-induced protection from the Commission
to further exact compliance of the Order of February 14, 1975.
Craftily, the Securities and Exchange Commission and/or its
administrative personnel were made to issue such certificate during
its unguarded moment. Verily, the certificate could not have been
issued were it not for such lapses or had respondent been in good
faith by making the proper disclosures of the circumstances which
led it to amend its articles of incorporation.
It is indisputable that ARMCO-STEEL-OHIO, having patented the
term 'Armco' as part of its trademark on its steel products, is entitled
to protection in the use thereof in the Philippines. The term "Armco"
is now being used on the products being manufactured and sold in
this country by Armco-Marsteel by virtue of its tie-up with ARMCOSTEEL-OHIO. Clearly, the two companies have the right to the
exclusive use and enjoyment of said term.
ARMCO STEEL-PHILIPPINES, has not only an Identical name
but also a similar line of business, as shown above, as that of
ARMCO STEEL- OHIO. People who are buying and using
products bearing the trademark "Armco" might be led to
believe that such products are manufactured by the respondent,
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when in fact, they might actually be produced by the petitioners.
Thus, the goodwill that should grow and inure to the benefit of
petitioners could be impaired and prejudiced by the continued
use of the same term by the respondent.
Obviously, the petition for review is designed to further delay if not
simply evade compliance with the said final and executory SEC
order. Petitioner also seeks a review of the orders of execution of the
SEC of the said February 14, 1975 order. An order or resolution
granting execution of the final judgment cannot be appealed 9
otherwise there will be no end to the litigation.
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already appropriated by a senior corporation while an individuals
name is thrust upon him.
Facts:
Respondent Refractories Corporation of the Philippines (RCP) is a
corporation duly organized on October 13, 1976 for the purpose of
engaging in the business of manufacturing, producing, selling,
exporting and otherwise dealing in any and all refractory bricks, its
by-products and derivatives. On June 22, 1977, it registered its
corporate and business name with the Bureau of Domestic Trade.
Petitioner IRCP on the other hand, was incorporated on August 23,
1979 originally under the name Synclaire Manufacturing
Corporation. It amended its Articles of Incorporation on August 23,
1985 to change its corporate name to Industrial Refractories Corp. of
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the Philippines. It is engaged in the business of manufacturing all
kinds of ceramics and other products, except paints and zincs.
Issue:
Whether or not the Respondents corporate name is confusingly
similar with that of petitioners?
Ruling:
Petitioners argument is untenable, that there is no confusing or
deceptive similarity between petitioner and respondent RCPs
corporate names.
Section 18 of the Corporation Code expressly prohibits the use
of a corporate name which is identical or deceptively or confusingly
similar to that of any existing corporation or to any other name
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(c) patently deceptive, confusing or contrary to existing law. As
regards the first requisite, it has been held that the right to the
exclusive use of a corporate name with freedom from
infringement by similarity is determined by priority of
adoption.
the
identical
words
26
The petitioners filed a motion that the said items be turned over to
the custody of the Bureau of Food and Drugs (BFAD) for
examination, which the court granted.
The respondents then filed an "Urgent Motion to Quash the Search
Warrant or to Suppress Evidence" and asserted that the NBI officers
seized Disudrin and Inoflox products which were not included in the
list of properties to be seized in the search warrant.
Thus, the court granted the motion of the respondents and issued an
advisory that the seized articles could no longer be admitted in
evidence against the respondents in any proceedings, as the search
warrant had already been quashed.
The petitioners argue that the seizure of the said items were valid in
accordance with the plain view doctrine.
In this case, Disudrin and/or Inoflox were not listed in the search
warrant issued by the court a quo as among the properties to be
seized by the NBI agents.
No, because it is not enough to prove that the sealed boxes were in
the plain view of the NBI agents;
evidence should have been adduced to prove the existence of all the
essential requirements for the application of the doctrine during the
hearing of the respondents motion to quash, or at the very least,
during the hearing of the NBI and the petitioners motion for
reconsideration on April 16, 2004.
In sum then, the Court finds and so hold that the petitioner and the
NBI failed to prove the essential requirements for the application of
the plain view doctrine.