1, ELIDAD KHO and VIOLETA KHO versus HON. ENRICO LANZANAS, 2.
2. Declaring plaintiff to have the right to use the copyright claim on OVAL FACIAL
G.R. No. 150877
Facts:
Shun Yih Chemistry Factory (SYCF), a business existing and operating in Taiwan and
engaged in the manufacture and sale of Chin Chun Su Creams/Cosmetics, appointed
Young Factor Enterprises in the Philippines, owned and operated by Quintin Cheng
also known as Kho Seng Hiok, as its distributor of Chin Chun Su products in the
Philippines for a term of two years. Quintin Cheng registered with the Bureau of Food
and Drugs (BFAD) as distributor of Chin Chun Su products. Quintin Cheng
subsequently secured a supplemental registration for Chin Chun Su and device.[2]
This supplemental registration was ordered cancelled by the Bureau of Patents,
Trademarks and Technology Transfer[3] on the ground of failure of the registrant to
file the required affidavit of non-use as required by Section 12 of Republic Act No.
166, as amended
Notwithstanding this cancellation, Quintin Cheng executed on 30 January 1990 an
Assignment of a Registered Trademark and a Supplementary Deed of Assignment
dated 25 November 1991 wherein he sold all his right, title, interest and goodwill in
the trademark Chin Chun Su and device to petitioner Elidad Kho.
Animosity arose between SYCF and Quintin Cheng resulting in the termination of
their distributorship agreement on 30 October 1990.
Consequently, on 30 November 1990, SYCF appointed respondent Summerville
General Merchandising, represented by Ang Tiam Chay and Victor Chua, as its
exclusive importer, re-packer and distributor of Chin Chun Su products in the
Philippines[8] for a period of five years or until May 2005.
Elidad Kho/KEC Laboratory filed a Complaint for Injunction and Damages against Ang
Tiam Chay and Summerville General Merchandising before the RTC Plaintiff therein
Elidad Kho/KEC Laboratory sought to enjoin defendants Ang Tiam Chay and
Summerville General Merchandising from using the name Chin Chun Su in their
cream products.
On 22 January 1993, a decision in Civil Case No. Q-91-10926 was rendered, the
dispositive portion of which provides:
ACCORDINGLY, judgment is hereby rendered:
1. Declaring that plaintiff is not legally authorized to use the trademark CHIN CHUN
SU and upholding the right of defendant Summerville General Merchandising & Co. to
use said trademark as authorized by Shun Yih Chemistry Factory of Taiwan;
CREAM CONTAINER/CASE by virtue of Certificate of Copyright Registration No.
3687 issued by the National Library on May 23, 1991;
Both parties to pay proportionate fees.[10]
Both parties appealed the RTC decision to the Court of Appeals, docketed as CA-
G.R. CV NO. 48043 entitled, Elidad C. Kho, doing business under the style of KEC
Cosmetic Laboratory v. Summerville General Merchandising and Co., et al. In a
decision[11] dated 22 November 1999, the appellate court affirmed in toto the
decision of the trial court.[12] Elidad Kho elevated the case to this Court, In a
resolution dated 28 August 2000,
Issue:
The issue is who, between petitioner Elidad C. Kho and respondent Summerville
General Merchandising and Company has the better right to use the trademark Chin
Chun Su on their facial cream product?
Ruling:
we denied the petition. We held that: We agree with both the Court of Appeals and the
trial court that Summerville General Merchandising and Company has the better right
to use the trademark Chin Chun Su on its facial cream product by virtue of the
exclusive importation and distribution rights given to it by Shun Yih Chemistry Factory
of Taiwan on November 20, 1990 after the latter cancelled and terminated on October
30, 1990 its Sole Distributorship Agreement with one Quintin Cheng, who assigned
and transferred his rights under said agreement to petitioner Elidad C. Kho on
January 31, 1990.
As correctly held by the Court of Appeals, petitioner Kho is not the author of the
trademark Chin Chun Su and his only claim to the use of the trademark is based on
the Deed of Agreement executed in his favor by Quintin Cheng. By virtue thereof, he
registered the trademark in his name. The registration was a patent nullity because
petitioner is not the creator of the trademark Chin Chun Su and, therefore, has no
right to register the same in his name. Furthermore, the authority of Quintin Cheng to
be the sole distributor of Chin Chun Su in the Philippines had already been terminated
by Shun Yih Chemistry of Taiwan. Withal, he had no right to assign or to transfer the
same to petitioner Kho.
WHEREFORE, the instant petition is hereby denied due course.[13]
2. Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No.
126627, August 14, 2003
Facts:
Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed
on October 8, 1976 as assignee before the Bureau of Patents an application for
patent on its invention called Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate. A Letters
of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years.
The patent provides that the patented invention consists of Methyl 5 Propylthio-2-
Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal
parasites and lung worms in animals. The respondent Tryco Pharma manufactures,
distributes and sells veterinary product, one of which is the Impregon, a drug having
Albendazole as its active ingredient effective against gastrointestinal worms in
animals. Petitioner now sues the respondent for patent infringement and unfair
competition before the RTC as it claims that their patent includes the substance
Albendazole used by the respondent and they sold and used the drug Impregon
without the petitioners authorization and committed unfair competition for selling as
its own the drug that substantially functions to achieve the same result. Petitioner
further contends that under the doctrine of equivalents in determining patent
infringement, the active substance Albendazole used by the respondent is
substantially the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by
its patent with the same use of combating worm infestations in animals. It prodded the
court to go beyond the literal words used in the Letter of Patent issued to them to
consider that the words Methyl 5 Propylthio-2-Benzimidazole Carbanate and
Albendazole are the same. Respondent avers that the Letter of Patents issued to
petitioner does not cover Albendazole in that the word does not appear on it. Even if
the patent were to include Albendazole it is unpatentable. They secured approval from
the Bureau of Foods and Drugs to manufacture and market Impregon with the
Albendazole as its active ingredients. The petitioner has no proof that they passed
their veterinary products as that of the petitioner.
Issue:
Whether or not respondent is guilty of patent infringement?
Ruling:
The Supreme Court held that it did not. When the language of the claim is clear and
distinct, the patentee is bound thereby and may not claim anything beyond them. The
language of the Letter of Patents issued to the petitioner failed to yield anything that it
includes Albendazole. The doctrine of equivalents does not apply in the case at bar
because it requires that for infringement to take place, the device should appropriate
a prior invention by incorporating its innovative concept and although there are some
modifications and change they perform substantially the same results. The petitioners
evidence failed to adduce that substantial sameness on both the chemicals they
used. While both compounds produce the same effects of neutralizing parasites in
animals, the identity of result does not amount to infringement. The petitioner has the
burden to show that it satisfies the function-means-and-result-test required by the
doctrine of equivalents. Nothing has been substantiated on how Albendazole can
weed the parasites out from animals which is similar to the manner used by the
petitioner in using their own patented chemical compound.
3. Ching v. Salinas, Sr. (G.R. No. 161295) Jun 8
by Jai Cdn
Facts:
P is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as Leaf Spring Eye Bushing for
Automobile made up of plastic, which was issued by the National Library Certificates
of Copyright Registration and Deposit.
P requested the NBI for police/investigative assistance for the apprehension and
prosecution of illegal manufacturers, producers and/or distributors of the works. After
due investigation, the NBI filed applications for SWs against R alleging that the latter
therein reproduced and distributed the said models penalized under R.A. No. 8293.
RTC granted the application and issued SWs for the seizure of the aforecited articles.
R filed a motion to quash the search warrants averring that the works covered by the
certificates issued by the National Library are not artistic in nature; they are
considered automotive spare parts and pertain to technology. They aver that the
models are not original, and as such are the proper subject of a patent, not copyright.
RTC quashed the SW. Ps MR having been denied; he filed a petition for certiorari in
the CA. The petition was dismissed.
Issues:
(1) Whether or not Ps certificate of copyright registration over said utility models are
valid; and
(2) Whether or not Ps utility models can be considered literary and artistic works
subject to copyright protection.
Ruling:
(1) The petition has no merit. To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its absence, other evidence. A
copyright certificate provides prima facie evidence of originality which is one element
of copyright validity. It constitutes prima facie evidence of both validity and ownership
and the validity of the facts stated in the certificate. The presumption of validity to a
certificate of copyright registration merely orders the burden of proof. The applicant
should not ordinarily be forced, in the first instance, to prove all the multiple facts that
underline the validity of the copyright unless the respondent, effectively challenging
them, shifts the burden of doing so to the applicant.
A certificate of registration creates no rebuttable presumption of copyright validity
where other evidence in the record casts doubt on the question. In such a case,
validity will not be presumed. No copyright granted by law can be said to arise in favor
of the petitioner despite the issuance of the certificates of copyright registration and
the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
(2) We agree with the contention of the petitioner (citing Section 171.10 of R.A. No.
8293), that the authors intellectual creation, regardless of whether it is a creation with
utilitarian functions or incorporated in a useful article produced on an industrial scale,
is protected by copyright law. However, the law refers to a work of applied art which
is an artistic creation. It bears stressing that there is no copyright protection for works
of applied art or industrial design which have aesthetic or artistic features that cannot
be identified separately from the utilitarian aspects of the article. Functional
components of useful articles, no matter how artistically designed, have generally
been denied copyright protection unless they are separable from the useful article.
In this case, the petitioners models are not works of applied art, nor artistic works.
They are utility models, useful articles, albeit with no artistic design or value. Being
plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion are not ornamental. They lack the decorative quality or value that must
characterize authentic works of applied art. They are not even artistic creations with
incidental utilitarian functions or works incorporated in a useful article. In actuality, the
personal properties described in the search warrants are mechanical works, the
principal function of which is utility sans any aesthetic embellishment.
In this case, the bushing and cushion are not works of art. They are, as the petitioner
himself admitted, utility models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack
of merit. The assailed Decision and Resolution of the CA are AFFIRMED.
4. Philip Morris, Inc. vs. Fortune Tobacco Corporation
G.R. No. 158589. June 27, 2006
Facts:
Petitioner Philip Morris, Inc. a corporation organized under the laws of the state of
Virginia, USA, is the registered owner of the trademark
MARK VII
For cigarettes. Benson and Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc.,
is the registered owner of the trademark
MARK TEN for cigarettes. Another subsidiary of Philip Morris, Inc. the Swiss
Company Fabriques de Tabac Reunies, S.A., is the assignee of the trademark
LARK. All are evidenced by Trademark Certicate of Registration. On the other hand,
Fortune Tobacco Corporation, a company organized in the Philippines, manufactures
and sells cigarettes using the trademark
MARK.
Philip Morris, Inc. led a complaint for trademark infringement and damages against
Fortune Tobacco Corporation. The complaint was dismissed by the RTC Pasig City in
its decision dated January 21, 2003. Maintaining to have the standing to sue in the
local forum and that respondent has committed trademark infringement, petitioners
went on appeal to the CA but CA armed the trial courts decision. The CA found that
MARK VII,MARK TEN and LARK do not qualify as well-known marks entitled to
protection even without the benet of actual use in the local market and that the
similarities in the trademarks in question are insucient as to cause deception or
confusion tantamount to infringement. With the motion for reconsideration denied in
the CA, the petitioners led apetition for review with the Supreme Court.
Issues:
1.)Whether or not petitioners, as Philippine registrants of trademarks, areentitled to
enforce trademark rights in the country.
2.)Whether or not respondent has committed trademark infringement against
petitioners by its use of the mark
MARK for its cigarettes, hence liable for damages.
Ruling:
 A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof adopted and used by a manufacturer or merchant on his goods
to identify and distinguish them from those manufactured, sold, or dealt in by others.
Inarguably, trademark deserves protection. It is for this reason that the petitioners
recourse for their entitlement to enforce trademark rights in this country and also the
right to sue for trademark infringement in Philippine courts and be accorded protection
against unauthorized use of the Philippine-registered trademarks is understandable.
Their standing to sue in Philippine courts had been recognized by the CA but such
right to sue does not necessarily mean protection of their trademarks in the absence
of actual use in the Philippines. But the petitioners are still foreign corporations. They
may not sue on that basis alone of their respective certicates of registration of
trademarks unless their country grants similar rights and privileges to Filipino citizens
pursuant to Section21-A of R.A. No. 166. This reciprocity requirement is a condition to
le a suit by a foreign corporation as ruled in
Leviton Industries v. Salvador.
The respective home country of the petitioner, namely, the United States,
Switzerland and Canada, together with the Philippines are members of the Paris
Union. Philippines adherence to the Paris Convention obligates the country to honor
and enforce its provisions, however, this does not automatically entitle petitioners to
the protection of their trademark in our country without actual use of the marks in local
commerce and trade because any protection accorded has to be made subject to the
limitations of Philippine laws. Signicantly, registration in the Philippines of trademarks
does not convey an absolute right or exclusive ownership thereof. In Shangri-la v.
Development Group of Companies, the Court emphasized that trademark is a
creation of use and, therefore, actual use is a prerequisite to exclusive ownership;
registration is only an administrative conrmation of the existence of the right of
ownership of the mark, but does not perfect such right. With the foregoing
perspective, it may be stated right o that the registration of a trademark
unaccompanied by actual use in the country accords the registrants only the standing
to sue for infringements in Philippine Courts but entitlement to protection of such
trademark in the country is entirely dierent matter. On the main issue of infringement,
the court, relying on the holistic test ruled against the likelihood of confusion resulting
in infringement arising from the respondents use of the trademark MARK for its
particular cigarette product. The striking dissimilarities are signicant enough to warn
any purchaser that one is dierent from the other. This is upon considering the entire
marking as a whole For lack of convincing proof on the part of the petitioners of actual
use of their registered trademark prior to respondents use of its mark and for
petitioners failure to demonstrate confusing similarity between said trademarks, the
dismissal of their basic complaint of infringement and the plea for damages are
armed. The petition is denied. The assailed decision and resolution of the Court of
Appeals are armed
5. CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
G.R. No. 120900, July 20, 2000
FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation filed an
application for registration of the mark CANON for sandals in the Bureau of Patents,
Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a
Verified Notice of Opposition alleging that it will be damaged by the registration of the
trademark CANON in the name of private respondent since they were using the same
trademark for their footwear line of products. The private respondent will also use the
name Canon for its footwear products.
Based on the records, the evidence presented by petitioner consisted of its
certificates of registration for the mark CANON in various countries covering goods
belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also
submitted in evidence its Philippine Trademark Registration No. 39398, showing its
ownership over the trademark CANON.
The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the
trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals
that eventually affirmed the decision of the BPTTT.
ISSUE:
Is the use of trademark, CANON, by the private respondent affects the
business of Canon Kabushiki Kaisha who has an existing ownership of a trademark
also known as CANON?
HELD:
The Supreme Court says that ordinarily, the ownership of a trademark or
tradename is a property right that the owner is entitled to protect as mandated by the
Trademark Law. However, when a trademark is used by a party for a product in which
the other party does not deal, the use of the same trademark on the latter's product
cannot be validly objected to.
The BPTTT correctly ruled that since the certificate of registration of petitioner
for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff),
private respondent can use the trademark CANON for its goods classified as class 25
(sandals). Clearly, there is a world of difference between the paints, chemical
products, toner, and dyestuff of petitioner and the sandals of private respondent.
6. BERRIS AGRICULTURAL CO., INC., vs. NORVY ABYADANG, G.R. No. 183404
October 13, 2010
Facts:
On January 16, 2004, Norvy A. Abyadang (Abyadang), proprietor of NS Northern
Organic
Fertilizer, filed with the Intellectual Property Office (IPO) a trademark application for
the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active
ingredient 80 Mancozeb. The application, was given due course and was published in
the IPO e-Gazette for opposition on July 28, 2005. On August 17, 2005, petitioner
Berris Agricultural Co., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO-
BLA) an Opposition allegedly because "NS D-10 PLUS" is similar and/or confusingly
similar to its registered trademark "D-10 80 WP," also used for Fungicide (Class 5)
with active ingredient 80% Mancozeb. On April 28, 2006, the IPO-BLA issued a
decision sustaining the opposition. Abyadang filed a motion for reconsideration, which
was denied. Abyadang filed an appeal on August 22, 2006 with the Office of the
Director General, Intellectual Property Philippines (IPPDG), was also
denied. Abyadang filed a petition for review before the CA, which reversed the IPPDG
decision. Based on their proffered pieces of evidence, both Berris and Abyadang
claim to be the prior user of their respective marks.
Issues:
1. Wether or not, Berris opposition to Abyadangs application for trademark is proper?
(PRIOR USE/DAU)
2. Whether or not Berris use of the characters D-10 in its trademark, confers
exclusivity to use the same? ( RIGHTS OF A TRADEMARK)
3. Whether or not both the mark of Berris and Abyadang will create confusion to the
buying
public and defeat the protection of the trademark? (HOLISTIC TEST)
Ruling:
1. YES. Berris opposition to Abyadangs trademark application is proper because the
former was able to prove prior use and prior registration of its trademark.
R.A. No. 8293, requires the applicant for registration or the registrant to file a
declaration of actual use (DAU) of the mark, with evidence to that effect, within
three (3) years from the filing of the application for registration; otherwise, the
application shall be refused or the mark shall be removed from the register. Berris
was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002,
even before it filed for its registration with the IPO on November 29, 2002, as shown
by its DAU which was under oath and notarized, bearing the stamp of the Bureau of
Trademarks of the IPO on April 25, 2003, with attachment as Annex "B" sales invoices
and official receipts of goods bearing the mark. Furthermore, according to Section
123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a
registered mark belonging to a different proprietor with an earlier filing or priority date,
with respect to: (1) the same goods or services; (2) closely related goods or services;
or (3) near resemblance of such mark as to likely deceive or cause confusion.
2. YES. The "D-10" is the dominant feature, being at the beginning of the mark, is
what is most remembered of it. As such, Berris has in its favor the rights conferred by
Section 147 of R.A. No. 8293, which provides The owner of a registered mark
shall have the exclusive right to prevent all third parties not having the owners
consent from using in the course of trade identical or similar signs or containers for
goods or services which are
identical or similar to those in respect of which the trademark is registered where such
use would result in a likelihood of confusion.
3. YES. Both marks belong to the same classification of goods under R.A. No. 8293.
The likelihood of confusion and mistake is made more manifest when the Holistic
Test is applied, taking into consideration the packaging, for both use the same type of
material (foil type) and have identical color schemes (red, green, and white); and the
marks are both predominantly red in color, with the same phrase "BROAD
SPECTRUM FUNGICIDE" written underneath. Considering these striking similarities,
predominantly the "D-10," the buyers of both products, mainly farmers, may be misled
into thinking that
"NS D-10 PLUS" could be an upgraded formulation of the "D-10 80 WP."
7. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG
(formerly BIRKENSTOCK ORTHOPAEDIE GMBH),
Petitioner, vs. PHILIPPINE SHOE EXPO MARKETING
CORPORATION, Respondent.
G.R. No. 194307
November 20, 2013
Facts:
Petitioner, BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly
BIRKENSTOCK ORTHOPAEDIE GMBH) (Birks for short), is a corporation duly
organized and existing under the laws of Germany, applied for various trademark
registrations before the IPO, namely:
(a) "BIRKENSTOCK" under Trademark Application Serial No. (TASN) 4-1994091508
for goods falling under Class 25 of the International Classification of Goods and
Services (Nice Classification) with filing date of March 11, 1994;
(b) "BIRKENSTOCK BAD HONNEF -RHEIN & DEVICE COMPRISING OF
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEA M" under TASN 4-1994-091509 for goods falling under Class 25 of the
Nice Classification with filing date of March 11, 1994; and
(c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEAM" under TASN 4-1994-095043 for goods falling under Class 10 of the
Nice Classification with filing date of September 5, 1994 (subject applications).
Note: NICE Classification 9th Edition based on the IPO site Class 10 - Surgical,
medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and
teeth; orthopedic articles; suture materials. Class 25 - Clothing, footwear, headgear.
However, registration proceedings of the subject applications were suspended in
view of an existingregistration of the mark "BIRKENSTOCK AND
DEVICE" under Registration No. 56334 dated October 21, 1993 (Registration No.
56334) in the name of ShoeTown International and Industrial Corporation, the
predecessor-in-interest of respondent Philippine Shoe
Expo Marketing Corporation.
Petitioner filed a petition for cancellation of Registration No. 56334
on the ground that it is the lawful and rightful owner of the Birkenstock marks
(Cancellation Case).
During its pendency, however, respondent and/or its predecessor-ininterest failed to
file the required 10th Year Declaration of Actual Use (10th Year DAU) for Registration
No. 56334 on or before October
21, 2004, thereby resulting in the cancellation of such mark.
Accordingly, the cancellation case was dismissed for being moot and
academic. In response, respondent filed three (3) separate verified notices of
oppositions to the subject applications, claiming, inter alia, that:
(a) it, together with its predecessor-in-interest, has been using Birkenstock
marks in the Philippines for more than 16 years through the mark
"BIRKENSTOCK AND DEVICE";
(b) the marks covered by the subject applications are identical to the one
covered by Registration No. 56334 and thus, petitioner has no right to the
registration of such marks;
(c) on November 15, 1991, respondents predecessor-in-interest likewise
obtained a Certificate of Copyright Registration No. 0-11193 for the word
"BIRKENSTOCK" ;
(d) while respondent and its predecessor-in-interest failed to file the 10th
Year DAU, it continued the use of "BIRKENSTOCK AND DEVICE" in
lawful commerce; and
(e) to record its continued ownership and exclusive right to use the
"BIRKENSTOCK" marks, it has filed TASN 4-2006-010273 as a " reapplication " of its
old registration, Registration No. 56334.
The Ruling of the BLA
The BLA of the IPO sustained respondents opposition, thus, ordering the
rejection of the subject applications.
The Ruling of the IPO Director General
The IPO Director General reversed and set aside the ruling of the BLA, thus
allowing the registration of the subject applications.
Ruling of the CA
The CA reversed and set aside the ruling of the IPO Director General and
reinstated that of the BLA. It disallowed the registration of the subject applications on
the ground that the marks covered by such applications "are confusingly similar, if not
outright identical" with respondents mark. It equally held that respondents failure to
file the 10th Year DAU for Registration No. 56334 "did not deprive petitioner of its
ownership of theBIRKENSTOCK mark since it has submitted substantial evidence
showing its continued use, promotion and advertisement thereof up to the present."
Issue:
Whether or not the subject marks should be allowed
registration in the name of petitioner.
Ruling:
The petition is meritorious.
1. Failure of the respondent to file the DAU within the requisite period results in the
automatic cancellation of registration of a trademark.
2. Respondent already lost any right or interest over the said mark.
3. Petitioner has duly established its true and lawful ownership of the mark
"BIRKENSTOCK."
4. Respondent was in bad faith.
Registration and ownership of "BIRKENSTOCK
1. Failure of the respondent to file the DAU within the requisite period results in the
automatic cancellation of registration of a trademark. Such failure is tantamount to the
abandonment or withdrawal of any right or interest the registrant has over his
trademark. Republic Act No. (RA) 166, the governing law for Registration No. 56334,
requires the filing of a DAU on specified periods, to wit: Section 12. Duration. Each
certificate of registration shall remain in force for twenty years: Provided, That
registrations under the provisions of this Act shall
be cancelled by the Director, unless within one year following the fifth, tenth and
fifteenth anniversaries of the date of issue of the certificate of registration, the
registrant shall file in the Patent Office an affidavit showing that the mark or trade-
name is still in use or showing that its non-use is due to special circumstance which
excuse such non-use and is not due to any intention to abandon the same, and pay
the required fee.
The Director shall notify the registrant who files the above- prescribed affidavits
of his acceptance or refusal thereof and, if a refusal, the reasons therefor .
2. Respondent cannot invoke Section 236 of the IP Code which pertains to intellectual
property rights obtained under previous intellectual property laws
because it already lost any right or interest over the said mark. Sec. 236. Preservation
of Existing Rights. Nothing herein shall adversely affect the rights on the
enforcement of rights in patents, utility models, industrial designs, marks and works,
acquired in good faith prior to the effective date of this Act.
3. Petitioner has duly established its true and lawful ownership of the
mark "BIRKENSTOCK. Petitioner was able to establish that it is the owner of the
mark "BIRKENSTOCK." It submitted evidence relating to the origin and history of
"BIRKENSTOCK" and its use in commerce long before respondent was able to
register the same here in the Philippines .It has sufficiently proven that
"BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann
Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous
generations of his kin continuously engaged in the manufacture and sale of shoes
and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known
as the petitioner. Petitioner also submitted various certificates of registration of the
mark "BIRKENSTOCK" in various countries and that it has used such mark in
different countries worldwide, including the Philippines.
Section 2 of RA 166, the law governing the subject applications:
In order to register a trademark, one must be the owner thereof,
must have actually used the mark in commerce in the Philippines for two (2) months
prior to the application for registration
the actual use in commerce is also the test of ownership, however
the mark must not have been so appropriated by another Significantly, to be an
owner, Section 2-A does not require that the actual use of a trademark must be within
the Philippines.
Registration of a trademark, by itself, is not a mode of acquiring ownership.
Registration merely creates a prima facie presumption of the validity of the
registration, of the registrants ownership of the trademark, and of the exclusive right
to the use thereof. Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give way toevidence to the
contrary.
It is not the application or registration of a trade mark that vests ownership thereof,
but it is the ownership of a trademark that confers the right to register the same.
A trademark is an industrial property over which its owner is entitled to property
rights which cannot be appropriated by unscrupulous entities that, in one way or
another, happen to register such trademark ahead of its true and lawful owner.
The presumption of ownership accorded to a registrant must then necessarily yield
to superior evidence of actual and real ownership of a trademark.
4. Respondent was in bad faith.
BIRKENSTOCK, obviously of German origin, is a highly distinct and arbitrary mark. It
is very remote that two persons did coin the same or identical marks. To come up with
a highly distinct and uncommon mark previously appropriated by another, for use in
the same line of business, and without any plausible explanation, is incredible. The
field from which a person may select a trademark is practically unlimited.
As in all other cases of colorable imitations, the unanswered riddle is why, of the
millions of terms and combinations of letters and designs available, [respondent]had
to come up with a mark identical or so closely similar to the [petitioners] if there was
no intent to take advantage of the goodwill generated by the [petitioners] mark.
Being on the same line of business, it is highly probable that the [respondent] knew
of the existence of BIRKENSTOCK and its use by the [petitioner], before[respondent]
appropriated the same mark and had it registered in its name.
8. Shangri-La International Hotel Management, LTD., Shangri-La Properties Inc.,
Makati Shangri-La Hotel & Resort Inc., and Kuok Philippines Properties, Inc vs
Developers Group of Companies, Inc.
GR 159938, March 31, 2006
Facts:
Respondent claims ownership over the Shangri-La mark and s logo on the strength of
its prior use within the country. It filed with the bureau of patents, trademarks and
technology transfer an application for registration covering the subject mark and logo.
BPTTT issued the corresponding certificate of registration.
The Kuok family on the other hand owns a chain of hotels since 1969 and adopted
the name Shangri-La. The Kuok Family has opened EDSA Shangri-La and Makati
Shangri-La in the Philippines. Both hotels are incorporated in the Philippines.
The hotels owned by the Kuok family used the distinct marks of Shangri-La as part of
their trade name.
The Kuok Family filed with the BPTTT a petition for cancellation of the registration of
the Shangri-La mark used by respondent.The case was thereafter heard before the
RTC.
After trial on the merits, the RTC ruled in favor of DGCIOn appeal, the CA affirmed the
ruling of the RTC.On appeal to the SC, petitioner alleged that respondent cannot file
an application for registration of the Shangri-La mark because it did not have prior
actual commercial use as required by RA 166.
Issue:
Whether or not the trademark by DGCI cannot be registered?
Held:
Under RA 166 before a trademark can be registered, it must have been actually used
in commerce for not less than two months in the Philippines prior the filing of the
application for registration.
Registration does not confer upon the registrant an absolute right to the registered
mark. It is merely a prima facie proof that the registrant is the owner. Evidence of a
prior and continuous use by another can overcome such presumption.
Ownership of a mark or trade name may be acquired not by registration but by
adoption and use in trade and commerce.
Respondents own witness testified that the jeepney signboard artist commissioned to
create the mark and logo submitted his designs only two and a half months after the
filing of the trademark application. Hence respondent cannot claim that the certificate
of registration is proof that the two months prior use was complied with.
Also it was found that respondents president Ramon Syhunliong has been a guest in
one of the petitioners hotel. Hence there was a possibility that he may have copied
the idea there.
CA still gave him the benefit of the doubt; however upon scrutiny of the questioned
logos, it appears that the respondents logo has oriental overtones. By copying even
the exact font and lettering, there arises a certainty that the adoption was deliberate,
malicious, and in bad faith.
9.MCDONALDS CORPORATION VS. MACJOY FASTFOOD CORPORATION
G.R. NO. 166115, FEB. 2, 2007
Facts:
On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic corporation
engaged in the sale of Fast food products in Cebu city, filed with BPTT, now IPO, an
application for registration of the trademark MACJOY & DEVICE for fried chicken,
chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo
and steaks. Petitioner McDonalds Corporation, filed a verified Notice of Opposition
against the respondents application claiming that the trademark MACJOY &
DEVICE so resembles its corporate logo otherwise known as the Golden Arches or
M design, and its marks McDonalds, McChicken,MacFries,
BigMac,McDo,McSpaghetti,McSnack, and Mc, such that when used on
identical or related goods, the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or origin. On
Dec. 28, 1998, the IPO sustained the petitioners opposition and rejected the
respondents application. CA reversed.
Issue:
Whether or not respondents McJoy and Device marks are confusingly similar to
petitioners McDonalds marks?
Held:
Yes. In determining similarity and likelihood of confusion, jurisprudence has
developed two test-the dominancy test and the holistic test: The dominancy test
focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion or deception; the holistic test requires the court to consider the
entirety of the marks as applied to the products, including the labels and packaging.
Applying the dominancy test, McDonalds and MACJOY marks are confusingly
similar with each other such that an ordinary purchaser can conclude an association
or relation between the marks.
Respondent alleged that the word MACJOY is based on the name of its presidents
niece, Scarlett Yu Carcell. By its implausible and insufficient explanation as to how
and why out of the many choices of words if could have used for its trade name
and/or trademark, it chose the word MACJOY, the only logical conclusion deducible
therefrom is that the respondent would want to ride high on the establish reputation
and goodwill of the MCDONALDS marks, which, as applied to petitioners restaurant
business and food products, is undoubtedly beyond question.
10. PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH
MANAGEMENT SA
G.R. No. 180073, November 25, 2009
Facts:
Respondent Horphag Research Management is a corporation duly organized and
existing under the laws of Switzerland and the owner of trademark PYCNOGENOL, a
food supplement sold and distributed by Zuellig Pharma Corporation. Respondent
discovered that petitioner Prosource International was also distributing a similar food
supplement using the mark PCO-GENOLS since 1996 and was only discontinued in
2000. Respondent filed a complaint for Infringement of Trademark against petitioner,
praying that the latter cease and desist from using the brand PCO-GENOLS for being
confusingly similar with respondents trademark PYCNOGENOL. Petitioner
contended that the two marks were not confusingly similar and denied liability, since it
discontinued the use of the mark prior to the institution of the infringement case.
Issue:
Whether or not petitioners are liable for infringement of trademark.
confusion or deception is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the infringing label should suggest
an effort to imitate. 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 purchasers. Courts
will consider more the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets, and market
segments. In contrast, 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. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing on both labels in order
that the observer may draw his conclusion whether one is confusingly similar to the
other.
In the case at bar, the dominancy test was used in determining whether there was a
confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying
the test, the court found that:
Athough the letters "Y" between P and C, "N" between O and C and "S" after L are
missing PCO-GENOLS, nevertheless, when the two words are pronounced, the
sound effects are confusingly similar not to mention that they are both described by
their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of
letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products name in
sounds as they were pronounced, clearly indicates that purchasers could be misled
into believing that they are the same and/or originates from a common source and
manufacturer. This is not the first time that the court takes into account the aural
effects of the words and letters contained in the marks in determining the issue of
confusing similarity.

Held:
The court ruled in the positive. A trademark is any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others. The gravamen of trademark infringement is
the element of "likelihood of confusion" which must be examined from the particular,
and sometimes peculiar, circumstances of each case.
In determining similarity and likelihood of confusion, jurisprudence has developed two
tests: the Dominancy Test and the Holistic or Totality Test. The Dominancy Test
focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion and deception, thus constituting infringement. If the competing
trademark contains the main, essential and dominant features of another, and
11. Skechers, U.S.A. vs. Inter Pacific Industrial Trading Corporation, et.al. [GR
No. 164321, March 23, 2011]
FACTS: Petitioner Skechers USA has registered the trademark "Skechers" and the
trademark "S" (with an oval design) with the IPO. Pursuant to a search warrant, more
than 6,000 pairs of shoes bearing the "S" logo were seized. Respondents moved to
quash the search warrant arguing that there was no confusing similarity between
petitioner's "Skechers" rubber shoes and its "Strong" rubber shoes. RTC applying the
Holistic Test ordered the quashing of the warrant which was affirmed by the CA. RTC
noted the following differences: 1) the mark "S" is not enclosed in an oval design; 2)
the hang tags and labels bear the word "Strong" for respondent and "Skechers USA"
for petitioner; 3) Strong shoes are modestly priced compared to Skechers shoes.
ISSUE: Whether or not respondents are guilty of Infringement
RULING: Yes. Applying the Dominancy Test, even if respondents did not use the oval
design, the mere fact that it used the same stylized "S" (same font and size of the
lettering) the same being the dominant feature of petitioner's trademark constitutes
infringement. Applying the Holistic Test, the dissimilarities between the shoes are too
trifling and frivolous that it is indubitable that respondent's products will cause
confusion and mistakes in the eyes of the public. Respondent's shoes may not be an
exact replica of the petitioner's shoes, but the features and overall design are so
similar and alike that confusion is higly likely. Registered trademark owner may use its
mark on the same or similar products, in different segments of the market, and at
different price levels depending on variations of the products for specific segments of
the market. The purchasing public might be mistaken in thinking that petitioner had
ventured into a lower market segment which scenario is plausible especially since
both petitioner and respondent manufacture rubber shoes.
Yes, the accused is guilty of trademark infringement.
Under the IP Code (RA No. 8293), trademark infringement is committed when:
Remedies; Infringement. Any person who shall, without the consent of the owner of
the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark or the same container or a dominant feature thereof in connection
with the sale, offering for sale, distribution, advertising of any goods or services
including other preparatory steps necessary to carry out the sale of any goods or
services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive, shall be
liable in a civil action for infringement by the registrant for the remedies hereinafter set
forth: Provided, That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of whether
there is actual sale of goods or services using the infringing material. (emphasis
supplied)
There is trademark infringement when the second mark used is likely to cause
confusion. There are two tests to determine this:
1. Dominancy Test the court focuses on the similarity of the dominant features of the
marks that might cause confusion in the mind of the consumer. Duplication or
imitation is not necessary. Even accidental confusion may be cause for trademark
infringement. More consideration is given to the aural and visual impressions created
by the marks on the buyers and less weight is given to factors like price, quality, sales
outlets and market segments.
Applied to this case: The SC found that the use of the S symbol by Strong rubber
shoes infringes on the registered Skechers trademark. It is the most dominant feature
of the mark -- one that catches the buyers eye first. Even if the accused claims that
there was a difference because the S used by Skechers is found inside an oval, the
fact that the accused used the dominant S symbol already constitutes trademark
infringement.
The SC disagreed with the CA reasoning that the S symbol is already used for many
things, including the Superman symbol. Even if this is true, the fact that Strong used
same stylized S symbol as that of the Skechers brand makes this a case of
trademark infringement. The same font and style was used in this case. The
Superman S symbol is clearly different from the S in this case.
2. Holistic or Totality Test the court looks at the entirety of the marks as applied to
the products, including the labels and packaging. You must not only look at the
dominant features but all other features appearing on both marks.
Applied to this case: Both RTC and CA used the Holistic Test to rule that there was no
infringement. Both courts argued the following differences:
The mark S found in Strong Shoes is not enclosed in an oval design.
The word Strong is conspicuously placed at the backside and insoles.
The hang tags and labels attached to the shoes bears the word Strong for
respondent and Skechers U.S.A. for private complainant;
Strong shoes are modestly priced compared to the costs of Skechers Shoes.
Also using the Holistic Test, the SC corrected the lower courts and ruled that the
striking similarities between the products outweigh the differences argued by the
respondents:
Same color scheme of blue, white and gray;
Same wave-like pattern on the midsole and the outer sole;
Same elongated designs at the side of the midsole near the heel;
Same number of ridges on the outer soles (five at the back and six in front);
Same location of the stylized S symbol;
The words "Skechers Sport Trail" at the back of the Skechers shoes and "Strong
Sport Trail" at the back of the Strong shoes, using the same font, color, size, direction
and orientation;
Same two grayish-white semi-transparent circles on top of the heel collars.
The features and overall design of the two products are so similar that there is a high
likelihood of confusion.
Two products do not need to be identical, they just need to be similar enough to
confuse the ordinary buyer in order to constitute trademark infringement (Converse
Rubber Corporation v. Jacinto Rubber & Plastic Co., 186 Phil. 85 [1980]). Also, the
difference in price cannot be a defense in a case for trademark infringement
(McDonalds Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 [2004]).
There are two types of confusion:
Product Confusion where the ordinary prudent purchaser would be induced to
purchase on product in the belief that he was buying another.
Source or Origin Confusion although the goods are different, the use of the mark
causes the consumer to assume that both products originate from the same source.
Trademark law protects the owner not only from product confusion but also from
source confusion. Protection is not limited to the same or similar products but extends
to all cases where:
The consumer is misled into thinking that the trademark owner extended his business
into a new field;
The consumer is misled into thinking that the trademark owner is in any way
connected to the infringers activities; or
The infringement forestalls the normal potential expansion of the trademark owners
business.
Trademark law does not only protect the owners reputation and goodwill, it also
protects the consumers from fraud and confusion.
In this case, it is clear that there was an attempt to copy the trademark owners mark
and product design. In trademark infringement cases, you do not need to copy
another's mark or product exactly. Colorable imitation is enough.
12. TANDUAY DISTILLERS, INC. VS. GINEBRA SAN MIGUEL, INC. (2009)
TANDUAY DISTILLERS, INC., petitioner, vs.
GINEBRA SAN MIGUEL, INC., respondent.
G.R. No. 164324, August 14, 2009.
FACTS:
Tanduay developed a new gin product distinguished by its sweet smell, smooth taste,
and affordable price. The brand name eventually chosen for the gin product was
Ginebra Kapitan with the representation of a revolutionary Kapitan on horseback as
the dominant feature of its label. Tanduay points out that the label design of Ginebra
Kapital in terms of color scheme, size and arrangement of text, and other label
features were precisely selected to distinguish it from the leading gin brand in the
Philippine market, Ginebra San Miguel. Tanduay filed a trademark application for
Ginebra Kapitan with the Intellectual Property Office (IPO). After which, Tanduay
began selling Ginebra Kapitan in the Luzon areas including Metro Manila. Eventually,
Tanduay received a letter from San Miguel informing the former to immediately cease
and desist from using the mark Ginebra. San Miguel filed a complaint for trademark
infringement, unfair competition and damages, with applications for the issuance of a
TRO and a writ of preliminary injunction against Tanduay before the RTC of
Mandaluyong.
(Developments in the trial court and the CA I have laid out in bullet form for easy
reading. The events could get a little confusing from here.)
The trial court issued a TRO prohibiting Tanduay from manufacturing, selling
and advertising Ginebra Kapitan.
Tanduay filed a petition for certiorari with the CA and an Urgent Motion to
Defer Injunction Hearing before the trial court.
Despite the motion filed by San Miguel, the trial court conducted hearings for
Tanduay to show cause why no writ of preliminary injunction should be issued.
The trial court granted San Miguels application for issuance of a writ of
preliminary injunction.
Tanduay filed a supplemental petition in the CA assailing the injunction order.
The CA issued a TRO enjoining the trial court from implementing the injunction
order and further proceeding with the case.
Finally, the CA rendered a decision dismissing Tanduays petition for certiorari
and supplemental petition. Its motion for reconsideration was likewise denied.
ISSUE:
Whether San Miguel is entitled to the writ of preliminary injunction granted by the trial
court as affirmed by the CA
RULING:
No. (The Court decided to deal only with the questioned writ and not with the merits of
the case pending before the trial court. Please note that what was issued by the trial
court was a writ of preliminary injunction. It had not yet disposed of the issues on
unfair competition and trademark infringement.)
San Miguel contends that Ginebra can be appropriated as a trademark, and there
was no error in the trial courts provisional ruling based on the evidence on record.
Assuming that Ginebra is a generic word which is proscribed to be registered as a
trademark under Section 123.1(h) of Republic Act No. 8293 or the Intellectual
Property Code (IP Code), it can still be appropriated and registered as a trademark
under Section 123.1(j) in relation to Section 123.2 of the IP Code, considering that
Ginebra is also a mark which designates the kind of goods produced by San Miguel.
San Miguel alleges that although Ginebra, the Spanish word for gin, may be a term
originally incapable of exclusive appropriation, jurisprudence dictates that the mark
has become distinctive of San Miguels products due to its substantially exclusive and
continuous use as the dominant feature of San Miguels trademarks since 1834.
Hence, San Miguel is entitled to a finding that the mark is deemed to have acquired a
secondary meaning.
San Miguel states that Tanduay failed to present any evidence to disprove its claims;
thus, there is no basis to set aside the grant of the TRO and writ of preliminary
injunction.
San Miguel states that its disclaimer of the word Ginebra in some of its registered
marks is without prejudice to, and did not affect, its existing or future rights over
Ginebra, especially since Ginebra has demonstrably become distinctive of San
Miguels products.
Tanduay asserts that not one of the requisites for the valid issuance of a preliminary
injunction is present in this case. Tanduay argues that San Miguel cannot claim the
exclusive right to use the generic word Ginebra for its gin products based on its
registration of the composite marks Ginebra San Miguel, Ginebra S. Miguel 65, and
La Tondea Cliq! Ginebra Mix, because in all of these registrations, San Miguel
disclaimed any exclusive right to use the non-registrable word Ginebra for gin
products.
Tanduay explains that the word Ginebra, which is disclaimed by San Miguel in all of
its registered trademarks, is an unregistrable component of the composite mark
Ginebra San Miguel. Tanduay argues that this disclaimer further means that San
Miguel does not have an exclusive right to the generic word Ginebra. Tanduay states
that the word Ginebra does not indicate the source of the product, but it is merely
descriptive of the name of the product itself and not the manufacturer thereof.
Tanduay submits that it has been producing gin products under the brand names
Ginebra 65, Ginebra Matador, and Ginebra Toro without any complaint from San
Miguel. Tanduay alleges that San Miguel has not filed any complaint against other
liquor companies which use Ginebra as part of their brand names such as Ginebra
Pinoy, a registered trademark of Webengton Distillery; Ginebra Presidente and
Ginebra Luzon as registered trademarks of Washington Distillery, Inc.; and Ginebra
Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco &
Co., Inc. Tanduay claims that the existence of these products, the use and registration
of the word Ginebra by other companies as part of their trademarks belie San Miguels
claim that it has been the exclusive user of the trademark containing the word
Ginebra since 1834.
Tanduay argues that before a court can issue a writ of preliminary injunction, it is
imperative that San Miguel must establish a clear and unmistakable right that is
entitled to protection. San Miguels alleged exclusive right to use the generic word
Ginebra is far from clear and unmistakable. Tanduay claims that the injunction issued
by the trial court was based on its premature conclusion that Ginebra Kapitan
infringes Ginebra San Miguel.
The CA upheld the trial courts ruling that San Miguel has sufficiently established its
right to prior use and registration of the word Ginebra as a dominant feature of its
trademark. The CA ruled that based on San Miguels extensive, continuous, and
substantially exclusive use of the word Ginebra, it has become distinctive of San
Miguels gin products; thus, a clear and unmistakable right was shown.
We hold that the CA committed a reversible error. The issue in the main case is San
Miguels right to the exclusive use of the mark Ginebra. The two trademarks Ginebra
San Miguel and Ginebra Kapitan apparently differ when taken as a whole, but
according to San Miguel, Tanduay appropriates the word Ginebra which is a dominant
feature of San Miguels mark.
It is not evident whether San Miguel has the right to prevent other business entities
from using the word Ginebra. It is not settled (1) whether Ginebra is indeed the
dominant feature of the trademarks, (2) whether it is a generic word that as a matter
of law cannot be appropriated, or (3) whether it is merely a descriptive word that may
be appropriated based on the fact that it has acquired a secondary meaning.
The issue that must be resolved by the trial court is whether a word like Ginebra can
acquire a secondary meaning for gin products so as to prohibit the use of the word
Ginebra by other gin manufacturers or sellers. This boils down to whether the word
Ginebra is a generic mark that is incapable of appropriation by gin manufacturers.
In this case, a cloud of doubt exists over San Miguels exclusive right relating to the
word Ginebra. San Miguels claim to the exclusive use of the word Ginebra is clearly
still in dispute because of Tanduays claim that it has, as others have, also registered
the word Ginebra for its gin products. This issue can be resolved only after a full-
blown trial.
We find that San Miguels right to injunctive relief has not been clearly and
unmistakably demonstrated. The right to the exclusive use of the word Ginebra has
yet to be determined in the main case. The trial courts grant of the writ of preliminary
injunction in favor of San Miguel, despite the lack of a clear and unmistakable right on
its part, constitutes grave abuse of discretion amounting to lack of jurisdiction.
We believe that the issued writ of preliminary injunction, if allowed, disposes of the
case on the merits as it effectively enjoins the use of the word ginebra without the
benefit of a full-blown trial.
13. GREAT WHITE SHARK ENTERPRISES, INC., Petitioner,
vs.
DANILO M. CARALDE, JR., Respondent.
G.R. No. 192294 November 21, 2012
TOPIC: Registrability, Dominancy Test
FACTS:
Caralde, respondent, filed before the Bureau of Legal Affairs (BLA) IPO a trademark
application for SHARK & LOGO for his manufactured goods consisting of slippers,
shoes and sandals. This was opposed by the petitioner, Great White Shark
Enterprises, Inc. (Great White Shark), a foreign corporation domiciled in Florida, USA
and was issued a Certificate Registration for trademark application for clothing,
headgear and footwear, including socks, shoes and its components in the Philippines.
Petitioner alleges among other things that there is a confusing similarity between the
two (2) marks which is likely to deceive or confuse the purchasing public into believing
that respondents goods are produced by or originated from the petitioner, or are
under its sponsorship, to the petitioners damage and prejudice; that since petitioner
was first in applying for registration of the mark, the same should be favoured with
respondents mark to be denied of its application.
BLA Director ruled in favour of petitioner. The BLA observed that prominent in both
marks are the illustration of a shark, that although there are some differences,
dominant features are of such degree that overall it creates an impression of striking
similarity with one another.
IPO Director General on appeal by respondent, affirmed the decision by the BLA
Director that there is indeed confusing similarity between the two mark; that there is
similarity between the two marks as to content, word, sound and meaning barring
respondents registration under Sec 123.1(d) of RA 8293 of the IP Code.
The Court of Appeals, upon petition for review by respondent, reversed and set aside
the decision by the BLA Director and IPO Director General on its finding that there is
in fact no confusing similarity between the two marks; that respondents mark is more
fanciful and colourful and contains several elements which are easily distinguishable
from that on the petitioner.
The case was then elevated to the Supreme Court by petitioner, hence this petition.
ISSUES:
1 WON the two (2) marks can be considered identical, applying Sec. 123.1(d) of
the IP Code, which is likely to deceive or cause confusion.
HELD:
No. The two marks are not identical and there is no confusing similarity likely to
deceive or cause confusion between them.
A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily
and is capable of identifying and distinguishing the goods of one manufacturer or
seller from those of another. Apart from its commercial utility, the benchmark of
trademark registrability is distinctiveness. (Thus, a generic figure, as that of a shark
in this case, if employed and designed in a distinctive manner, can be a registrable
trademark device, subject to the provisions of the IP Code.)In connection with the
registrability of trademarks, Section 123.1(d) of the IP Code provides, among others,
a mark which cannot be registered, to wit:
Section 123. Registrability.
123.1 A mark cannot be registered if it:
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
xxx
The mark will therefore be registrable if it is distinct or if it does not nearly resembles
another mark to deceive or cause confusion.
The court used Dominancy Test (although Holistic or Totality Test was defined in
the case, this was not used in the analysis) for this purpose and confirmed that there
is no confusing similarity between the marks; that, further, there was a distinct visual
and aural differences between them.
In Great White Shark's "GREG NORMAN LOGO," there is an outline
of a shark formed with the use of green, yellow, blue and
red16lines/strokes; The shark in Caralde's "SHARK & LOGO" mark17 is
illustrated in l et t er s outlined in the form of a shark with the letter "S"
forming the head, the letter "H" forming the fins, the letters "A" and "R"
forming the body, and the letter "K" forming the tail. In addition, the
latter mark includes several more elements such as the word
"SHARK" in a different font underneath the shark outline, layers of
waves, and a tree on the right side, and liberally used the color blue
with some parts in red, yellow, green and white.18 The whole design is
enclosed in an elliptical shape with two linings.
The visual dissimilarities between the two (2) marks are evident and significant,
negating the possibility of confusion in the minds of the ordinary purchaser, especially
considering the distinct aural difference between the marks.
APPENDIX
1. Great White Shark (GWS) also alleged that its trademark is a world famous and
well-known mark since its mark registered in different countries, in order to better his
position that Caralde just copied GWSs mark to be able to ride on its goodwill. Both
BLA Director and IPO Director General however found the same without merit due to
insufficiency of evidence. IPO Dir-Gen further noted that it failed to meet the other
criteria under Rule 102 of the Rules and Regulations on Trademarks, Service
Marks, Trade Names and Marked or Stamped Containers to be considered as
well-known. Finally, SC no longer ruled on this matter (,being mooted,) since it
already found that there was no confusing similarity between the two marks.
2. The Dominancy Test focuses on the similarity of the dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the
mind of the ordinary purchaser, and gives more consideration to the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to
factors like prices, quality, sales outlets, and market segments.
The Holistic or Totality Test considers the entirety of the marks as applied to the
products, including the labels and packaging, and focuses not only on the
predominant words but also on the other features appearing on both labels to
determine whether one is confusingly similar to the other14 as to mislead the ordinary
purchaser. The "ordinary purchaser" refers to one "accustomed to buy, and therefore
to some extent familiar with, the goods in question."15
14. G.R. No. 188225 November 28, 2012
SHIRLEY F. TORRES, Petitioner, vs. IMELDA PEREZ and RODRIGO PEREZ,
Respondents.
Facts:
The RTC Orders had denied the Motion to Dismiss and/or Withdraw Information filed
against respondents for unfair competition (violation of Section 168 in relation to
Section 170)4 under Republic Act No. (R.A.) 8293 (Intellectual Property Code of the
Philippines).
Respondents Imelda and Rodrigo are spouses who own RGP Footwear
Manufacturing (RGP), which supplies ladies shoes to Shoe Mart (SM).8 They met
petitioner when she sold them business-class plane tickets to the United States in
2002.9 She was also interested in doing business with SM, and they suggested that
she form a partnership with their daughter Sunshine, nicknamed Sasay.10Petitioner
and Sunshine formed Sasays Closet Co. (SCC), a partnership registered with the
Securities and Exchange Commission on 17 October 2002. SCC was engaged in the
supply, trading, retailing of garments such as underwear, childrens wear, womens
and mens wear, and other incidental activities related thereto.11
For its products, SCC used the trademark "Naturals with Design," which it filed with
the Intellectual Property Office on 24 August 2005 and registered on 26 February
2007.12 These products were primarily supplied to SM,13 which assigned to them the
vendor code "190501" for purposes of identification.14SCC used the facilities and
equipment owned by RGP, as well as the latters business address (No. 72 Victoria
Subdivision, Barangay Dela Paz, Bian, Laguna), which was also the residential
address of respondents.15In August 2003, Sunshine pulled out of the partnership,
because she was hired to work in an international school.16 Respondent Imelda took
over Sunshines responsibilities in the partnership.17
Meanwhile, on 27 March 2006, petitioner established Tezares Enterprise, a sole
proprietorship engaged in supplying and trading of clothing and accessories except
footwear.23 Also in March 2006, she discovered that underwear products bearing the
brand "Naturals" were being sold in SM with vendor code "180195."24 This code was
registered to RGP,25 a fact confirmed by test buys conducted by her lawyers on 13
and 14 May 2006.26
On 5 June 2006, a search warrant for unfair competition under Section 168 in relation
to Section 170 of R.A. 8293 was issued by the RTC of Manila, Branch 24, against
respondents at their address.27 The search warrant called for the seizure of womens
undergarments bearing the brand "Naturals," as well as equipment and papers having
the vendor code "180195" or the inscription "RGP." The search warrant was
implemented on the same day. However, it was quashed by the same court on 20
October 2006 upon motion of respondents. The trial court ruled that respondents did
not pass off "Naturals" as the brand of another manufacturer. On the contrary, they
used the brand in the honest belief that they owned SCC, the owner of the brand.
On 9 June 2006, petitioner filed a criminal complaint for unfair competition against
respondents and Sunshine before the City Prosecution Office of Makati City.28
Assistant City Prosecutor Imelda P. Saulog found probable cause to indict
respondents for unfair competition.29 She ruled that they had clearly passed off the
"Naturals" brand as RGPs even if the brand was owned by SCC.
Issue:
Despite the extensive legal battle that petitioner and respondents have waged
heretofore, these petitions will be settled simply through a ruling on whether there
exists probable cause to indict respondents for unfair competition (violation of Section
168 in relation to Section 170) under R.A. 8293.
Ruling:
No probable cause to indict respondents
In positing that respondents were guilty of unfair competition, petitioner makes a lot of
the fact that they used the vendor code of RGP in marketing the "Naturals" products.
She argues that they passed off the "Naturals" products, which they marketed under
RGP, as those of SCC; thus, they allegedly prejudiced the rights of SCC as owner of
the trademark. She also claims that she has the personality to prosecute respondents
for unfair competition on behalf of SCC.1wphi1
When Judge Untalan denied the Motion to Dismiss and/or Withdraw Information filed
by the prosecution and thereby sustained the position of petitioner, his error lay in the
fact that his focus on the crime of unfair competition was unwarranted. In this case,
much more important than the issue of protection of intellectual property is the change
of ownership of SCC. The arguments of petitioner have no basis, because
respondents are the exclusive owners of SCC, of which she is no longer a partner.
Based on the findings of fact of the CA and the DOJ, respondents have completed the
payments of the share of petitioner in the partnership affairs. Having bought her out of
SCC, respondents were already its exclusive owners who, as such, had the right to
use the "Naturals" brand.
The use of the vendor code of RGP was resorted to only for the practical purpose of
ensuring that SMs payments for the "Naturals" products would go to respondents,
who were the actual suppliers.
Furthermore, even if we were to assume that the issue of protection of intellectual
property is paramount in this case, the criminal complaint for unfair competition
against respondents cannot prosper, for the elements of the crime were not present.
We have enunciated in CCBPI v. Gomez67 that the key elements of unfair
competition are "deception, passing off and fraud upon the public."68 No deception
can be imagined to have been foisted on the public through different vendor codes,
which are used by SM only for the identification of suppliers products.
WHEREFORE, finding lack of probable cause for respondents alleged violation of
Section 168 in relation to Section 170 of Republic Act No. 8293 (unfair competition),
are AFFIRMED. he Information against respondents for unfair competition is
DISMISSED.
15. LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., versus -
AUSTRIAMARTINEZ,
CALLEJO, TINGA, and CLINTON APPARELLE, INC. G.R. No. 138900 September
20,
2005
Facts:
This case stemmed from the Complaint for Trademark Infringement, Injunction and
Damages filed by petitioners LS & Co. and LSPI against respondent Clinton
Apparelle, Inc. (Clinton Aparelle) together with an alternative defendant, Olympian
Garments, Inc. (Olympian Garments). Petitioner LS & Co., a foreign corporation duly
organized and existing under the laws of the State of Delaware, U.S.A., and engaged
in the apparel business, is the owner by prior adoption and use since 1986 of the
internationally famous "Dockers and Design" trademark. This ownership is evidenced
by its valid and existing registrations in various member countries of the Paris
Convention. In the Philippines, it has a Certificate of Registration No. 46619 in the
Principal Register for use of said trademark on pants, shirts, blouses, skirts, shorts,
sweatshirts and jackets under Class 25. The "Dockers and Design" trademark was
first used in the Philippines in or about May 1988, by LSPI, a domestic corporation
engaged in the manufacture, sale and distribution of various products bearing
trademarks owned by LS & Co. To date, LSPI continues to manufacture and sell
Dockers Pants with the "Dockers and Design" trademark. LS & Co. and LSPI alleged
that they discovered the presence in the local market of jeans under the brand name
"Paddocks" using a device which is substantially, if not exactly, similar to the "Dockers
and Design" trademark owned by and registered in the name of LS & Co., without its
consent. Based on their information and belief, they added, Clinton Apparelle
manufactured and continues to manufacture such "Paddocks" jeans and other
apparel. Petitioner brought a suit against the respondents with a prayer of issuance of
a writ of preliminary injunction to enjoining defendants, their officers, employees,
agents, dealers, retailers, or assigns from manufacturing, distributing, selling, offering
for sale, advertising, jeans the design herein complained of as substantially, if not
exactly similar, to plaintiffs' "Dockers and Design" trademark. The lower court granted
the issuance of the said writ in favor of the petitioner. Thus, respondent Clinton
Apparelle filed with the Court of Appeals a Petition for certiorari , prohibition and
mandamus with prayer for the issuance of a temporary restraining order and/or writ of
preliminary injunction, assailing the orders of the trial court wherein the appellate
court, in its assailed Decision, granted Clinton Apparelle's petition. In return petitioners
appealed and filed a petition for review before the Supreme Court of the appellate
court's Decision and Resolution. The Supreme Court denied the petition and affirmed
the Decision of the Court of Appeals.
ISSUES:
1.) Whether or not the single registration of the trademark Dockers and Design
grants
the petitioner the exclusive right to use the assailed device and prevents the
respondent from using the same.
2.) Whether or not the act by the respondent to use a portion of the assailed device
but of a different word mark constitutes Trademark Infringement.
3.) Whether or not there is material and substantial invasion of the right of the
petitioner
to warrant the issuance of an injunctive writ for protection from trademark dilution.
RULING:
1.) No. Although Section 138 of Republic Act No. 8293 provides that Certificate of
Registration is prima facie evidence of the validity of the registration, the registrants
ownership of the mark and of the exclusive right to use the same in connection with
the goods or services and those that are related thereto specified in the certificate.
Section 147.1 of said law likewise grants the owner of the registered mark the
exclusive right to prevent all third parties not having the owners consent from using in
the course of trade identical or similar signs for goods or services which are identical
or similar to those in respect of which the trademark is registered if such use results in
a likelihood of confusion. However, given the single registration of the trademark
"Dockers and Design" and considering that respondent only uses the assailed device
but a different word mark, the right to prevent the latter from using the challenged
"Paddocks" device is far from clear. It could thus be said that respondent only
appropriates petitioners logo and not the word mark Dockers; it uses only a portion of
the registered trademark and not the whole. Stated otherwise, it is not evident
whether the single registration of the trademark "Dockers and Design" confers on the
owner the right to prevent the use of a fraction thereof in the course of trade. It is also
unclear whether the use without the owner's consent of a portion of a trademark
registered in its entirety constitutes material or substantial invasion of the owner's
right.
2.) No. It is likewise NOT SETTLED whether the wing-shaped logo, as opposed to the
word mark, is the dominant or central feature of petitioners' trademark the feature that
prevails or is retained in the minds of the public an imitation of which creates the
likelihood of deceiving the public and constitutes trademark infringement.
3.) No. Petitioners also FAILED to show proof that there is material and substantial
invasion of their right to warrant the issuance of an injunctive writ. Neither were
petitioners able to show any urgent and permanent necessity for the writ to prevent
serious damage. To be eligible for protection from dilution, there has to be a finding
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
respondent of "Paddocks and Design" began after the petitioners' mark became
famous; and (3) such subsequent use defames petitioners' mark. In the case at bar,
petitioners have yet to establish whether "Dockers and Design" has acquired a strong
degree of distinctiveness and whether the other two elements are present for their
cause to fall within the ambit of the invoked protection. The Trends MBL Survey
Report which petitioners presented in a bid to establish that there was confusing
similarity between two marks is not sufficient proof of any dilution that the trial court
must enjoin. Therefore, Injunction will not lie when the petitioners right to injunctive
relief has not
been clearly and unmistakably demonstrated and when the right has yet to be
determined.
16. Yao vs. People GR No. 168306,June 19, 2007
Facts:
NBI Agent Ritche Oblanca applied for 2 search warrants with RTC Cavite against
petitioners along with other occupants of MASAGANA compound for allegedly
violating the Intellectual Property rights of Petron and Pilipinas Shell with
attached affidavits stating the following:
1) NBI received a letter-complaint from Atty. Bienvenido Somera Jr. in behalf of
Petron and Shell requesting assistance in the investigation and if warranted,
prosecution of the persons/establishment in violation of their Intellectual Property
rights.
2) Prior to conducting investigations, Oblanca reviewed the trademark registrations
issued to Petron and Shell as well as other documents and evidence obtained
when Petron and company employed an investigative agency by Mr. Bernabe
Alajar.
3) MASAGANA Gas Corporation is not authorized to refill and sell and distribute
Gasul and Shellane products. Petitioners are the directors and stockholders
of said corporation.
4) Oblanca and Alajar conducted test-buys on 2 occasions, Feb. 13, 2003 and Feb.
27, 2003. After stating their intent to do business, were allowed inside the
MASAGANA refilling plant, receipts were issued and were assisted in choosing
empty Gasul cylinders. In their presence, the empty cylinders were refilled where
Oblanca noticed that there was no valve seal placed on the cylinders.
Oblanca furnished copies of photographs of the delivery trucks in his application for
the search warrant. RTC issued 2 search warrants for the search and seizure of
transaction records, the trucks used in the delivery of illegally refilled cylinders,
machinery and equipment being used or intended to be used in illegally refilling the
cylinders bearing the trademarks of Gasul and Shellane, and Gasul and Shellane
cylinders and any other items bearing their trademark.
Petitioners filed a Motion to Quash on the grounds that there is no probable cause,
that Oblanca and Alajar do not have the authority to apply for search warrant,
allegedly committing perjury when they submitted their sworn statements that they
conducted test-buys, that the area was not specified as the place to be searched
must be indicated with particularity and that the search warrant was general in nature
as the items seized were being used in the conduct of lawful business. Petitioners
also filed for a Motion for the Return of the Motor Compressor and the LPG Refilling
Machine as said items were being used in the conduct of lawful business as third-
party claimants.
Issues:
1) W/N there was probable cause.
2) W/N Oblanca has the authority to apply for the search warrant.
3) W/N the requirement of giving particular description of the place to be
searched was complied with.
4) W/N the search warrant was general in nature.
5) W/N the complaint was against MASAGANA [to not consider it as third party
claimant whose rights were violated as a result of the seizure].
Ruling:
I
As provided for by Art. III, Sec. 2 of the Constitution and Rule 126 of the Revised
Rules on Criminal Procedure regarding requisites of issuing search warrants.
According to these provisions, a search warrant can only be issued upon a finding of
probable cause. The facts and circumstances referred to pertain to facts and
information personally known to the applicant and the witness he may present.
As provided by Sec. 155 of RA 8293, mere unauthorized use of a container bearing a
registered trademark in connection with the sale, distribution or advertising of goods
or services which is likely to cause confusion, mistake or deception among the
buyers/consumers can be considered as trademark infringement.
Oblanca in his sworn affidavits stated that in reviewing the trademark registrations
issued by Philippine Intellectual Property Office to Petron and Pilipinas Shell, he
confirmed that MASAGANA is not authorized to sell, use, refill or distribute Gasul and
Shellane LPG cylinders.
Aside from the documentary evidence Oblanca submitted, both him and Alajar had
personal knowledge, stating in their affidavits that they used different names during
the test-buys to avoid suspicion and personally witnessed the refilling, of cylinders
bearing the marks Gasul and Shellane inside the plant and the deliveries of these
refilled containers to some outlets using mini-trucks.
Such facts and circumstances establish a sufficient probable cause. As the term
implies, probable cause is concerned with probability, not absolute or even moral
certainty. The standards of judgment are those of a reasonably prudent man, not the
exacting calibrations of a judge after a full blown trial. Using different names do not
negate the personal knowledge that Oblanca and Alajar have since it is the common
practice of officers of the law such as NBI agents during covert investigations to use
another name to conceal their true identities.
Oblanca having reviewed the trademark registrations issued to Petron ans Shell and
Alajar, a private investigator employed by both [Petron and Shell] to verify the reports
that MASAGANA is involved in the illegal refilling, selling and distribution of cylinders
bearing their trade marks cannot be said incompetent to testify on the trademarks
infringed by the petitioners.
As provided by Section 5 of the Revised Rules on Criminal Procedure, the searching
questions propounded to the applicant and the witnesses depend largely on the
discretion of the judge.
Reviewing the Transcript of Stenographic Notes of the preliminary examination, it was
found that the questions of Judge Sadang to be sufficiently probing, not at all
superficial and perfunctory. The reviewing court can overturn such findings only upon
proof that the judge disregarded the facts before him or ignored the clear dictates of
reason.
The items to be seized under the search warrants in question were sufficiently
described with particularity. Additionally, since the described items are clearly limited
only to those which bear direct relation to the offense, i.e., violation of section 155 of
Republic Act No. 8293, for which the warrant was issued, the requirement of
particularity of description is satisfied.
A fundamental principle of corporation law is that a corporation is a separate and
distinct entity from its stockholders, directors, or officers but when the notion of legal
entity is used to defeat public convenience, justify wrong, protect fraud, or defend
crime, the law will regard the corporation as an association of persons, or in the case
of two corporations merge them into one. Petitioners are directors and officers of
MASAGANA, using the entity to violate the intellectual property right of Petron and
Shell and so they should be considered one and the same for liability purposes.
The motor compressor and the LPG refilling machine were the corpus delicti or the
evidence of the commission of the trademark infringement, thus RTC denying the
return of said items was to prevent MASAGANA/petitioners from using it again in
trademark infringement.
Petitioner relying on Section 20 of AM No 02-1-06 SC is not tenable because it is not
applicable in the present case as it governs only searches and seizure in civil actions
whereas this case is for criminal violation of RA 8293.
RA 8293 Intellectual Property Code of the Philippines
Section 155. Remedies; Infringement. - Any person who shall, without the consent of
the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark or the same container or a dominant feature thereof in connection
with the sale, offering for sale, distribution, advertising of any goods or services
including other preparatory steps necessary to carry out the sale of any goods or
services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive, shall be
liable in a civil action for infringement by the registrant for the remedies hereinafter set
forth: Provided, That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of whether
there is actual sale of goods or services using the infringing material. (Sec. 22, R.A.
No 166a)
Section 170. Penalties. - Independent of the civil and administrative sanctions
imposed by law, a criminal penalty of imprisonment from two (2) years to five (5)
years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred
thousand pesos(P200,000), shall be imposed on any person who is found guilty of
committing any of the acts mentioned in Section 155, Section 168 and Subsection
169.1. (Arts. 188 and 189, Revised Penal Code)
A.M. No. 02-1-06-SC - RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS FOR
INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS
Section 20. Failure to file complaint. - The writ shall also. Upon motion of the
expected adverse party, be set aside and the seized documents and articles returned
to the expected adverse party if no case is filed with the appropriate court or authority
within thirty-one (31) calendar days from the date of issuance of the writ.
Probable cause for search warrant means such facts and circumstances which would
lead a reasonably discreet and prudent man to believe that an offense has been
committed and that the objects sought in connection with the offense are in the place
to be searched.
> Probable cause is the existence of such facts and circumstances as would excite
the belief in a reasonable mind, acting on the facts within the knowledge of the
prosecutor, that the person charged was guilty of the crime for which he was
prosecuted
> Based on the evidence that would be adduced by the parties
17. Manuel C. Espiritu, Jr., et. Al who are the officers and directors of Bicol Gas
Refilling Plant Corporation vs Petron Corporation and Carmen J. Doloiras,
doing business under the name Kristina Patricia Enterprises
GR No. 170981, November 4, 2009
Facts:
Petron Corporation sold and distributed LPG in cylinder tanks that carried its
trademark GASUL and Carmen Dolorias owned and operated Kristina Patricia
Enterprises, the exclusive distributor of Gasul LPG in the whole Sorsogon.
On the hand, Bicol Gas was also in the business of selling and distributing LPG in
Sorsogon but theirs carried the trademark Bicol Savers Gas.
In the course of trade and competition, any given distributor of LPGs at times
acquired possession of LPG cylinder tanks belonging to other distributors operating in
the same area. They called these captured cylinders. What KPE is doing is that
they swap the cylinder tanks with Bicol Gas involving 30 tanks of Gasul with the
permission of the Bicol Gas owners. While doing such transaction, KPEs Manager
noticed that Bicol Gas still has a number of Gasul tanks in its yard. It requested that
those tanks be returned. But the latter refused because those tanks will be sent to
Batangas.
However, during the day to day delivery of Bicol Gas in the town of Sorsogon, KPEs
Manager noticed that the truck carrying mostly of Bicol Savers LPG tanks has one
unsealed 50-kg Gasul and one 50-kg Shellane tank. When Jose, KPEs Manager,
inquired, the driver said that it was empty but when it was checked, it was not. As a
result, Petron and KPE filed a complaint for violation of RA 623 (illegally filing up
registered cylinder tanks) , section 155 (infringement of trademarks) and section
169.1 (unfair competition) of the Intellectual Property Code.
Issues:
Whether or not the facts of the case warranted the filing of charges against the Bicol
Gas people for:
a) Filing up the LPG tanks registered to another manufacturer without the latters
consent in violation of RA 623 as amended
b) Trademark infringement consisting in Bicol Gas use of trademark that is
confusingly similar to Petrons registered Gasul trademark in violation of Section 155
of RA 8293
c) Unfair competition consisting in passing off Bicol Gas- produced LPGs fro
Petron produced Gasul LPG in violation of Section 168.3 of RA 8293
Held:
a) The complaint adduced at the preliminary investigation shows that one 50 kg
Petron Gasul LPG found in the Bicol Gas truck belonged to their customer who had
the same filled up by Bicol Gas. RA 623 as amended punishes any person who
without the written consent of the manufacturer or seller of gases contained in duly
registered steel cylinder tanks, fills the steel cylinder or tanks for the purpose of sale,
disposal or trafficking, other than the purpose for which the manufacturer or seller
registered the same. Consequently, they may be prosecuted for that purpose.
b) But as for the crime of trademark infringement, section 155 of RA 8293
provides its enumeration. However, KPE and Petron failed to prove that Bicol Gas
painted on its own tanks Petrons Gasul trademark or confusingly similar version to
deceive its customers and cheat Petron.
c) As for the charge of unfair competition under section 168.3 of RA 8293, there
is no showing that Bicol has been giving its LPG tanks the general appearance of the
tanks of Petrons Gasul. As already stated, the truck full of Bicol Gas tank that the
KPE manager apprehended on the road in Sorsogon just have mixed up with the one
authentic Gasul tank that belong to Petron.
Lastly, Bicol Gas is a Corporation. It is an entity separate and distinct from persons of
its officer, directors and stockholders. It has been held however, that corporate officers
and employees through whose act, default or omission of the crime, they will be held
answerable for the crime but respondents failed to show that Bicol Gas officers and
stockholders participated in the crime.
18. Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc..
G.R. No. 169504 : March 3, 2010

Facts:
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of
establishing and maintaining coffee shops in the country. It has a franchise
agreement6ca with Coffee Partners Ltd. (CPL), a business entity organized and
existing under the laws of British Virgin Islands, for a non-exclusive right to operate
coffee shops in the Philippines using trademarks designed by CPL such as "SAN
FRANCISCO COFFEE." Respondent is a local corporation engaged in the wholesale
and retail sale of coffee. It registered with the SEC in May 1995. It registered the
business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with the
Department of Trade and Industry (DTI) in June 1995. Respondent formed a joint
venture company with Boyd Coffee USA under the company name Boyd Coffee
Company Philippines, Inc. (BCCPI), which is engaged in the processing, roasting, and
wholesale selling of coffee.
In 2001, respondent discovered that petitioner was about to open a coffee shop under
the name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to
respondent, petitioners shop caused confusion in the minds of the public as it bore a
similar name and it also engaged in the business of selling coffee. Respondent also
filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-
IPO) for infringement and/or unfair competition. Petitioner denied the allegations in
the complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO)
applications for registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for
class 42 in 1999 and for class 35 in 2000.
BLA-IPO rendered a decision favourable to the respondents and found herein
petitioners guilty of trademark ingfringement. ODG-IPO; however reversed the
decision of the Bureau which lead respondents to appeal. CA again reversed the
decision of the Office of the Director General and affirmed the BLA-IPOs finding,
hence this petition.
Issue:
Whether 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).
Held:
In Prosource International, Inc. v. Horphag Research Management SA, this Court laid
down what constitutes infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office;
however, in infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or trade
name is applied to labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with such goods, business,
or services;
(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of
such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.
Clearly, a trade name need not be registered with the IPO before an infringement suit
may be filed by its owner against the owner of an infringing trademark. All that is
required is that the trade name is previously used in trade or commerce in the
Philippines. Section 22 of Republic Act No. 166,12ca as amended, required
registration of a trade name as a condition for the institution of an infringement suit.
However, RA 8293, Section 165.2 of RA 8293 categorically states that trade names
shall be protected, even prior to or without registration with the IPO, against any
unlawful act x x x. Also, applying 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.
Yes. In Prosource International, Inc. v. Horphag Research Management SA, this Court
laid down what constitutes infringement of an unregistered trade name, thus:
1. The trademark being infringed is registered in the Intellectual Property Office;
however, in infringement of trade name, the same need not be registered;
2. The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
3. The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or trade
name is applied to labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with such goods, business,
or services;
4. The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of
such
business; and
5. It is without the consent of the trademark or trade name owner or the assignee
thereof. Clearly, a trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of an infringing
trademark. All that is required is that the trade name is previously used in trade or
commerce in the Philippines. Section 22 of Republic Act No. 166 as amended,
required registration of a trade name as a condition for the institution of an
infringement suit, however, RA 8293, has dispensed with the registration requirement.
Section 165.2 of RA 8293 categorically states that trade names shall be protected,
even prior to or without registration with the IPO, against any unlawful act including
any subsequent use of the trade name by a third party, whether as a trade name or a
trademark likely to mislead the public.
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. The descriptive words San Francisco coffee are precisely the
dominant features of respondents trade name. Petitioner and Respondent are
engaged in the same business of selling coffee, whether wholesale or retail. The
likelihood of confusion is higher in cases where the business of one corporation is the
same or substantially the same as that of another corporation. In this case, the
consuming public will likely be confused as to the source of the coffee being sold at
petitioners coffee shops. Petitioners argument that San Francisco is just a proper
name referring to the famous city in California and that coffee is simply a generic
term, is untenable. Respondent has acquired an exclusive right to the use of the trade
name San Francisco Coffee & Roastery, Inc. since the registration of the business
name with the DTI in 1995. Thus,
respondents use of its trade name from then on must be free from any infringement
by similarity.
Of course, this does not mean that respondent has exclusive use of the geographic
word San Francisco or the generic word coffee. Geographic or generic words are not,
per se, subject to exclusive appropriation. It is only the combination of the words San
Francisco coffee, which is respondents trade name in its coffee business, that is
protected against infringement on matters
related to the coffee business to avoid confusing or deceiving the public.
19. Societe Des Produits Nestle v. Dy, Jr. (G.R. No. 172276)
Gr no. 172276 August 8, 2010
Facts:
P, is a foreign corporation organized under the laws of Switzerland, which
manufactures food products and beverages and owns the NAN trademark for its line
of infant powdered milk products, consisting of PRE-NAN, NAN-H.A., NAN-1, and
NAN-2. NAN is classified under Class 6 diatetic preparations for infant feeding In Prosource International, Inc. v. Horphag Research Management SA, the Court laid
and is distributed and sold all over the Philippines.
R owns 5M Enterprises and imports Sunny Boy powdered milk from Australia and
repacks the powdered milk into three sizes of plastic packs bearing the name
NANNY. NANNY is is also classified under Class 6 full cream milk for adults in
[sic] all ages and is distributed and sold in Dumaguete, Negros Oriental, Cagayan de
Oro, and parts of Mindanao.
P requested R to refrain from using NANNY and to undertake that he would stop
infringing the NAN trademark. R did not act on Ps request.
P filed before the RTC a complaint for TMI which later on was dismissed. P appealed
to the CA which set aside the order and remanded the case to the RTC for further
proceedings. P moved to transfer the case to a special court for intellectual property
rights.
The RTC found R liable for TMI holding that Rs NANNY belongs to the same
class as that of Ps NAN because both are food products, and that Rs use of
NANNY would imply that it came from the manufacturer of NAN, and that since
nanny means childs nurse, there might result the not so remote probability that Rs
NANNY may be confused with infant formula NAN despite the apparent disparity
between the features of the two products.
R appealed to the CA which reversed the trial courts decision holding that the mark
NANNY is not confusingly similar to NAN and that R not is liable for TMI. P filed a MR
but was denied.
Issue:
WON there was trademark infringement
Whether or not there is TMI and R is liable.
Ruling:
Yes.
The court applied the dominancy test when it found out that Nanny is confusingly
similar to Nan. Nan is the prevalent feature of Nestle's line of infant powdered milk
products. The first 3 letters of Nanny is the same as the letters of Nan. When both are
pronounced, the aural effect is confusingly similar. Furthermore, Nan and Nanny have
the same classification, descriptive properties and physical attributes. Both are
classified under Class 6, both are milk products, and both are powdered in form. They
are also displayed in the milk section.
Finally, the trademark owner is not only protected by law in guarding his goods or
business from actual market competition with identical or similar products of the
parties but also extends to all cases as it would likely confuse the public into thinking
that the complaining party has extended his business into the field or is in any way
connected with the activities of the infringer.
The petition is meritorious.
down the elements of infringement under R.A. Nos. 166 and 8293:
In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and
20 thereof, the following constitute the elements of trademark infringement:
(a) A trademark actually used in commerce in the Philippines and registered
in the principal register of the Philippine Patent Office[;]
(b) [It] is used by another person in connection with the sale, offering for sale,
or advertising of any goods, business or services or in connection with which such
use is likely to cause confusion or mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or identity of such business; or such
trademark is reproduced, counterfeited, copied or colorably imitated by another
person and such reproduction, counterfeit, copy or colorable imitation is applied
to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services as
to likely cause confusion or mistake or to deceive purchasers[;]
(c) [T]he trademark is used for identical or similar goods[;] and
(d) [S]uch act is done without the consent of the trademark registrant or assignee.
On the other hand, the elements of infringement under R.A. No. 8293 are as follows:
(1) The trademark being infringed is registered in the Intellectual Property Office;
however, in infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or
trade name is applied to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business
or services;
(4)The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the idenity of
such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.
Among the elements, the element of likelihood of confusion is the gravamen of
trademark infringement.
Applying the dominancy test in the present case, the Court finds that NANNY is
confusingly similar to NAN. NAN is the prevalent feature of Nestles line of or services, without its consent, identical or similar to its registered trademark, where
infant powdered milk It is written in bold letters and used in all products. The line
consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, NANNY contains the
prevalent feature NAN. The first three letters of NANNY are exactly the
same as the letters of NAN. When NAN and NANNY are pronounced, the competing trademarks that might cause confusion or deception. Duplication or
aural effect is confusingly similar.
The scope of protection afforded to registered trademark owners is not limited to
protection from infringers with identical goods. The scope of protection extends to
protection from infringers with related goods, and to market areas that are the normal
expansion of business of the registered trademark owners.
NANNY and NAN have the same classification, descriptive properties and physical
attributes. Both are classified under Class 6, both are milk products, and both are in
powder form. Also, NANNY and NAN are displayed in the same section of stores
the milk section. The Court agrees with the lower courts that there are differences
between NAN and NANNY: (1) NAN is intended for infants while NANNY is intended
for children past their infancy and for adults; and (2) NAN is more expensive than
NANNY. However, as the registered owner of the NAN mark, Nestle should be free
to use its mark on similar products, in different segments of the market, and at
different price levels.
The registered trademark owner may use his mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations
of the products for specific segments of the market. The Court has recognized that
the registered trademark owner enjoys protection in product and market areas that
are the normal potential expansion of his business.
WHEREFORE, we GRANT the petition. We SET ASIDE the decision of the CA and
REINSTATE the decision of the RTC.
20. Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No. 190065, August 16,
2010
Facts:
Dermaline filed with the IPO an application to register the trademark Dermaline.
Myra opposed this alleging that the trademark resembles its trademark Dermalin
and will cause confusion, mistake and deception to the purchasing public. Dermalin
was registered way back 1986 and was commercially used since 1977. Myra claims
that despite attempts of Dermaline to differentiate its mark, the dominant feature is the
term Dermaline to which the first 8 letters were identical to that of Dermalin. The
pronunciation for both is also identical. Further, both have 3 syllables each with
identical sound and appearance.
Issue: W/N the IPO should allow the registration of the trademark Dermaline. NO
Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to
prevent third parties from using a trademark, or similar signs or containers for goods
such use would result in a likelihood of confusion. In determining confusion, case law
has developed two (2) tests, the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features of the
imitation is not even required; neither is it necessary that the label of the applied mark
for registration should suggest an effort to imitate. Relative to the question on
confusion of marks and trade names, jurisprudence noted two (2) types of confusion,
viz: (1) confusion of goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he was
purchasing the other; and (2) confusion of business (source or origin confusion),
where, although the goods of the parties are different, the product, the mark of which
registration is applied for by one party, is such as might reasonably be assumed to
originate with the registrant of an earlier product, and the public would then be
deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.
Using this test, the IPO declared that both confusion of goods and service and
confusion of business or of origin were apparent in both trademarks. While it is true
that the two marks are presented differently, they are almost spelled in the same way,
except for Dermalines mark which ends with the letter "E," and they are pronounced
practically in the same manner in three (3) syllables, with the ending letter "E" in
Dermalines mark pronounced silently. Thus, when an ordinary purchaser, for
example, hears an advertisement of Dermalines applied trademark over the radio,
chances are he will associate it with Myras. When one applies for the registration of a
trademark or label which is almost the same or that very closely resembles one
already used and registered by another, the application should be rejected and
dismissed outright, even without any opposition on the part of the owner and user of a
previously registered label or trademark.
Further, Dermalines stance that its product belongs to a separate and different
classification from Myras products with the registered trademark does not eradicate
the possibility of mistake on the part of the purchasing public to associate the former
with the latter, especially considering that both classifications pertain to treatments for
the skin.
21. Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc.
G.R. No. 180677 February 18, 2003
Facts:
Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After receiving
information that Diaz was selling counterfeit LEVIS 501 jeans in his tailoring shops in
Almanza and Talon, Las Pias City, Levis Philippines hired a private investigation
group to verify the information. Surveillance and the purchase of jeans from the
tailoring shops of Diaz established that the jeans bought from the tailoring shops of
Diaz were counterfeit or imitations of LEVIS 501. Armed with search warrants, NBI
agents searched the tailoring shops of Diaz and seized several fake LEVIS 501 jeans
from them. Levis Philippines claimed that it did not authorize the making and selling
of the seized jeans; that each of the jeans were mere imitations of genuine LEVIS
501 jeans by each of them bearing the registered trademarks, like the arcuate design,
the tab, and the leather patch; and that the seized jeans could be mistaken for original
LEVIS 501 jeans due to the placement of the arcuate, tab, and two-horse leather
patch.
On his part, Diaz admitted being the owner of the shops searched, but he denied any
criminal liability. Diaz stated that he did not manufacture Levis jeans, and that he
used the label LS Jeans Tailoring in the jeans that he made and sold; that the label
LS Jeans Tailoring was registered with the Intellectual Property Office; that his shops
received clothes for sewing or repair; that his shops offered made-to-order jeans,
whose styles or designs were done in accordance with instructions of the customers;
that since the time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily
recognizable because the label LS Jeans Tailoring, and the names of the customers
were placed inside the pockets, and each of the jeans had an LSJT red tab; that
LS stood for Latest Style; and that the leather patch on his jeans had two
buffaloes, not two horses.
Issue:
Whether there exists a likelihood of confusion between the trademarks of Levis and
Diaz.
Held:
The Court held, through the application of the holistic test, that there was no likelihood
of confusion between the trademarks involved. Accordingly, the jeans trademarks of
Levis Philippines and Diaz must be considered as a whole in determining the
likelihood of confusion between them. The maongpants or jeans made and sold by
Levis Philippines, which included LEVIS 501, were very popular in the Philippines.
The consuming public knew that the original LEVIS 501 jeans were under a foreign
brand and quite expensive. Such jeans could be purchased only in malls or boutiques
as ready-to-wear items, and were not available in tailoring shops like those of Diazs
as well as not acquired on a made-to-order basis. Under the circumstances, the
consuming public could easily discern if the jeans were original or fake LEVIS 501, or
were manufactured by other brands of jeans.
Diaz used the trademark LS JEANS TAILORING for the jeans he produced and sold
in his tailoring shops. His trademark was visually and aurally different from the
trademark LEVI STRAUSS & CO appearing on the patch of original jeans under the
trademark LEVIS 501. The word LS could not be confused as a derivative from
LEVI STRAUSS by virtue of the LS being connected to the word TAILORING,
thereby openly suggesting that the jeans bearing the trademark LS JEANS
TAILORINGcame or were bought from the tailoring shops of Diaz, not from the malls
or boutiques selling original LEVIS 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the two horse design of the
petitioner-private complainant but the evidence will show that there was no such
design in the seized jeans. Instead, what is shown is buffalo design. Again, a horse
and a buffalo are two different animals which an ordinary customer can easily
distinguish.
The prosecution further alleged that the red tab was copied by the accused. However,
evidence will show that the red tab used by the private complainant indicates the word
LEVIS while that of the accused indicates the letters LSJT which means LS
JEANS TAILORING. Again, even an ordinary customer can distinguish the word
LEVIS from the letters LSJT.
In terms of classes of customers and channels of trade, the jeans products of the
private complainant and the accused cater to different classes of customers and flow
through the different channels of trade. The customers of the private complainant are
mall goers belonging to class A and B market group while that of the accused are
those who belong to class D and E market who can only afford Php 300 for a pair of
made-to-order pants.
22. ARNEL U. TY, MARIE ANTONETTE TY, JASON ONG, WILLY DY, and ALVIN
TY, - versus - NBI SUPERVISING AGENT MARVIN E. DE JEMIL, PETRON GASUL
DEALERS ASSOCIATION, and TOTALGAZ DEALERS ASSOCIATION, G.R. No.
182147, December 15, 2010
Facts:
Petitioners are stockholders of Omni Gas Corporation ("Omni"). They are
being suspected of engaging in illegal trading of petroleum products and underfilling
of branded LPG cylinders in violation of B.P. 33, as amended by P.D. 1865. NBI
Agents Marvin De Jemil and Edgardo Kawada conducted surveillance operations on
Omni. On 15 April 2004, the NBI Agents carried out a test-buy. Using eight branded
LPG cylinders from Shell, Petron and Total, they went to Omni for refilling. Omni
refilled the cylinders. The NBI agents paid more than P1500. LPG Inspector Noel
Navio found that the LPG cylinders were without LPG valve seals and one of the
cylinders was actually underfilled.
On 28 April 2004, Agent De Jemil obtained a search warrant from Pasig RTC
branch 167. The NBI seized several items from Omni's premises. Subsequently,
Agent De Jemil filed his Complaint-Affidavit before the DOJ. The Assistant City
Prosecutor of Pasig found probable cause for violation of BP 33. This was later
approved by Chief State Prosecutor Jovencito Zuno.
Petitioners appealed the decision to the Secretary of Justice, who later
reversed the decision of the Office of the Chief State Prosecutor. NBI Agent De Jemil
moved for reconsideration. Denied. He thus filed a petition for certiorari under Rule 65
with the Court of Appeals.
The Court of Appeals affirmed the decision of Secretary of Justice. It later
reversed itself and reinstated the Resolution of the Chief State Prosecutor.
Issues:
(1) Whether the petition for certiorari with the Court of Appeals was proper
even if Agent De Jemil did not appeal to the Office of the President?
(2) Whether probable cause exists against petitioners for violations of Sec. 2
(a) and (c) of BP 33, as amended?
(3) Whether petitioners can be held liable therefor?
Held:
(1) YES. The determination of probable cause by the public prosecutor, and,
later on, by the Secretary of Justice, is subject to judicial review where it is
established that grave abuse of discretion tainted the determination. The aggrieved
party need not resort to the Office of the President before availing of judicial remedies
because the Secretary of Justice is an alter ego of the President who may opt to
exercise or not to exercise his or her power of review over the formers determination
in criminal investigation cases. Also, under the doctrine of qualified political agency,
the determination of probable cause by the Secretary of Justice is presumably that of
the Chief Executive unless disapproved or reprobated by the latter.
(2) YES. The test-buy conducted on 15 April 2004 tends to show that Omni
illegally refilled the eight branded cylinders. Such act is a clear violation of Sec. 2 (a),
in relation to Secs. 3 (c) and 4 of BP 33, as amended.
Omni has no authority to refill LPG cylinders as shown by the certifications
provided by Shell, Petron and Total. The seized items also show that Omni has no
authority to refill the cylinders. It shows that Omni really refilled branded cylinders
without authorization. Omnis unauthorized refilling of branded LPG cylinders,
contrary to Sec. 2 (a) in relation to Sec. 3 (c) of BP 33, as amended.
Granting arguendo that the customers already owned the LPG cylinders, such
fact does give Omni authority to refill the cylinders without authorization from the
brand owners. Only the duly authorized dealers and refillers of the brand owners may
refill the branded LPG cylinders. The offense of refilling a branded LPG cylinder
without the written consent of the brand owner constitutes the offense regardless of
the buyer or possessor of the branded LPG cylinder.
 Petitioner's contention that they are not liable because the underfilling that
took place during the test-buy is an isolated event is UNTENABLE. A single
underfilling under BP 33 is already a criminal act.
(3) Only Arnel Ty, as President of Omni, is liable. The other petitioners, who
are members of Omni's Board of Directors, are not liable. Sec. 4 of BP 33 enumerates
the persons who may be held liable, viz: (1) the president, (2) general manager, (3)
managing partner, (4) such other officer charged with the management of the
business affairs of the corporation or juridical entity, or (5) the employee responsible
for such violation. The Board of Directors is primarily a policy-making body of the
Corporation who doesn't concern itself with day-to-day operations.
Fourth. The issue of ownership of the seized branded LPG cylinders is
irrelevant and hence need no belaboring. BP 33, as amended, does not require
ownership of the branded LPG cylinders as a condition sine qua non for the
commission of offenses involving petroleum and petroleum products. Verily, the
offense of refilling a branded LPG cylinder without the written consent of the brand
owner constitutes the offense regardless of the buyer or possessor of the branded
LPG cylinder.
After all, once a consumer buys a branded LPG cylinder from the brand owner
or its authorized dealer, said consumer is practically free to do what he pleases with
the branded LPG cylinder. He can simply store the cylinder once it is empty or he can
even destroy it since he has paid a deposit for it which answers for the loss or cost of
the empty branded LPG cylinder. Given such fact, what the law manifestly prohibits is
the refilling of a branded LPG cylinder by a refiller who has no written authority from
the brand owner. Apropos, a refiller cannot and ought not to refill branded LPG
cylinders if it has no written authority from the brand owner.
Besides, persuasive are the opinions and pronouncements by the DOE: brand
owners are deemed owners of their duly embossed, stamped and marked LPG
cylinders even if these are possessed by customers or consumers. The Court
recognizes this right pursuant to our laws, i.e., Intellectual Property Code of
the Philippines. Thus the issuance by the DOE Circular No. 2000-05-007,[61] the letter-
opinion[62] dated December 9, 2004 of then DOE Secretary Vincent S. Perez
addressed to Pilipinas Shell, the June 6, 2007 letter[63] of then DOE Secretary
Raphael P.M. Lotilla to the LPGIA, and DOE Department Circular No. 2007-10-
0007[64] on LPG Cylinder Ownership and Obligations Related Thereto issued on
October 13, 2007 by DOE Secretary Angelo T. Reyes.
Fifth. The ownership of the seized branded LPG cylinders, allegedly owned by
Omni customers as petitioners adamantly profess, is of no consequence.
The law does not require that the property to be seized should be owned by
the person against whom the search warrants is directed. Ownership, therefore, is of
no consequence, and it is sufficient that the person against whom the warrant is
directed has control or possession of the property sought to be seized.[65] Petitioners
cannot deny that the seized LPG cylinders were in the possession of Omni, found as
they were inside the Omni compound.
In fine, we also note that among those seized by the NBI are 16 LPG cylinders
bearing the embossed brand names of Shellane, Gasul and Totalgaz but were
marked as Omnigas. Evidently, this pernicious practice of tampering or changing the
appearance of a branded LPG cylinder to look like another brand violates the brand
owners property rights as infringement under Sec. 155.1 of RA 8293. Moreover,
tampering of LPG cylinders is a mode of perpetrating the criminal offenses under BP
33, as amended, and clearly enunciated under DOE Circular No. 2000-06-010 which
provided penalties on a per cylinder basis for each violation.
Foregoing considered, in the backdrop of the quantum of evidence required to
support a finding of probable cause, we agree with the appellate court and the Office
of the Chief State Prosecutor, which conducted the preliminary investigation, that
there exists probable cause for the violation of Sec. 2 (a) in relation to Sec. 3 (c) of BP
33, as amended. Probable cause has been defined as the existence of such facts and
circumstances as would excite belief in a reasonable mind, acting on the facts within
the knowledge of the prosecutor, that the person charged was guilty of the crime for
which he was prosecuted.[66] After all, probable cause need not be based on clear and
convincing evidence of guilt, as the investigating officer acts upon reasonable
beliefprobable cause implies probability of guilt and requires more than bare suspicion
but less than evidence which would justify a conviction.[67]
23. Superior Commercial Enterprises Inc. vs. Kunnan Enterprises
GR No. 169974, April 25, 2010
SUPERIOR COMMERCIAL ENTERPRISES INC. v. KUNNAN ENTERPRISES LTD.
AND SPORTS CONCEPT & DISTRBUTOR, INC. G.R. No. 16974, 20 April 2010;
Brion, J. FACTS: Kunnan appointed Superior as its exclusive distributor in the
Philippines under a Distributorship Agreement which states that Kunnan intends to
acquire ownership of the Kennex Trademark registered by Superior Commercial in
the Philippines. Superior Commercial is desirious of being appointed as the sole
distributor of Kunnan products in the Philippines. Superiors President and General
Manager misled Kunnans Officers into believing that Kunnan could not acquire
trademark rights in the Philippines. Thus, Kunnan decided to assign its applications to
register Pro Kennex as a trademark to Superior, on condition that Superior
acknowledged that Kunnan was still the real owner of the mark and agreed to return
to it to Kunnan on request. Upon termination of distributorship agreement with
Superior, Kunnan appointed Sports Concept as its new distributor. Kunnan caused
the publication of a Notice and Warning in the Manila Bulletins issue, stating that (1) it
is the owner of the disputed trademarks; (2) it terminated its Distributorship
Agreement with Superior; and (3) it appointed Sports Concept as its exclusive
distributor. This notice prompted Superior to file its Complaint for Infringement of
Trademark and Unfair Competition against Kunnan. Prior to and during the
pendency of the infringement and unfair competition case before the RTC, Kunnan
filed with the Bureau of Patents, Trademarks and Technology Transfer separate
Petitions for the Cancellation of Registration Trademarks involving the Kennex and
Pro Kennex trademarks. Kunna filed the petition on the ground that Superior
fraudulently registered and appropriated the disputed trademarks as mere distributor
and not as lawful owner. Both the trial court and the Court of Appeals ruled in favor
of Kunnan. ISSUES: WON Superior, as a distributor, has true ownership over the
trademarks. RULING: No. An exclusive distributor does not acquire any proprietary
interest in the principals trademark and cannot register it, unless the owner has
assigned the right. 1. To establish trademark infringement, the following elements
must be proven: a. The validity of the plaintiffs mark; b. The plaintiffs ownership of
the mark; and c. The use of the mark or its colorable imitation by the alleged infringer
results in likelihood confusion. Based on these elements, the Court found it
immediately obvious that the second element 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 certain 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. Gabriel v. Perez provided that a mere distributor of a product bearing a
trademark, even if permitted to use said trademark has no right to and cannot register
the said trademark. 2. Unfair competition has been defined as the passing off or
attempting to pass off upon the public of the goods and business of one person as the
goods or business of another with the end and probable effect of deceiving the public.
The essential elements of unfair competition are: a. Confusing similarity in the general
appearance of the goods; and b. Intent to deceive the public and defraud the
competitor. The True Test of Unfair Competition: Whether the acts of the defendant
have the intent of deceiving or are calculated to deceive the ordinary buyer making
his purchases under the ordinary conditions of the particular trade to which the
controversy relates. In the hereby case, no evidence exist showing that Kunnan
ever attempted to pass off goods it sold as those of Superior and that there is no bad
faith or fraud imputable to Kunnan in using the disputed trademarks. Superior failed
to adduce any evidence to show that Kunnan by the above-cited acts intended to
deceive the public as to the identity of the goods sold or of the manufacturer of the
goods sold.
24. REPUBLIC GAS CORPORATION, ARNEL U. TY, MARIANTONETTE N.
TY,ORLANDO REYES, FERRERSUAZO and ALVIN U. TY; petitioners, v.
PETRONCORPORATION, PILIPINAS SHELL PETROLEUMCORPORATION, and
SHELL INTERNATIONALPETROLEUM COMPANY LIMITED, respondents.Docket
Number:G.R. No. 194062 (2013)Ponente:J. Peralta
FACTS:
Respondents Petron Corporation (PETRON) and Pilipinas Shell
PetroleumCorporation (SHELL) are two of the largest bulk suppliers and producers of
liquefiedpetroleum gas (LPG) in the Philippines.PETRONowns the trademark GASUL
cylinders used for its LPG products. Itis the sole entity authorized to allow refillers and
distributors to refill, use, sell anddistribute GASUL LPG containers, products and its
trademarks.SHELL, on the other hand, is theauthorized user of SHELLANE cylinders
inits production and distribution of SHELLANELPGs.The casecommencedwhen LPG
Dealers Association of which bothrespondentsSHELLand
PETRONbelongreceivedreports that certain entities wereengaged in unauthorized
refilling, sale and distribution of LPG cylinders, bearing theirrespectiveLPG cylinder
tradenames.Thus, they filed a complaint before the NBI foraninvestigation
regardingtheillegal trading of petroleum products.An investigation was thenconducted
which showed that several persons andestablishments, including petitioner Republic
Gas Corporation (REGASCO) weresuspected of violating B.P. 33, or the law against
illegal trading of petroleum products.Surveillancethenrevealed
thatREGASCOunlawfullyengaged in refilling the sale ofLPG cylinders bearing the
marks and trademarks owned byPETRON and SHELL.During thecourse of thetrial,
theCourtof Appeals held the corporationaswell as the individual petitioners guilty of
the crimes of unfair competition andtrademark infringement; to which the corporate
officers deny based on the fact thatREGASCO is a separate juridical entity from that
of the corporate officers.Hence, this petition.
ISSUE:
(Corporation Law issue)
One of the issues raised in this case is whether or notthe individual petitioners
namely: ArnelUy, Mari AntonetteUy, Orlando Reyes, FerrerSuazo and Alvin Uy should
also be held liable for trademark infringement and unfaircompetition, given that they
are separate personalities from that of the REGASCO?
COURT RULING:
The Court ruled in favor of respondents PETRON and SHELL, and heldREGASCO
guilty of trademark infringement and unfair competition.However, with respect to the
above-stated issue, the Courtalsoheld theindividual petitionersguilty based on the
premise thatcorporate officers,who,through their act, default and omission, also
committed a crime, may themselves beheld individually liable for the crime.In the
case at bar, the Court based its proposition on the sole fact thatthatthese corporate
officers(individual petitioners in this case), being in direct control andsupervision in the
management and conduct of the affairs of theREGASCO, must haveknown or should
have been aware that the corporation itself is engaged in the act ofrefilling LPG
cylinders bearing the marks SHELLANE and GASUL from bothtrademark owners
SHELL and PETRON.The existence of corporate entity does not shield from
prosecution thecorporate agents who knowingly and intentionally caused the
corporation itself tocommit a crime. (In this case, the crime committed was trademark
infringement andunfair competition). Further, a corporate officer cannot hide behind
the cloak ofseparate corporate personality of the corporation to escape criminal
liability.A corporateofficer cannot protect himself behind a corporation where he is the
actual, present andefficient actor.
25. G.R. No. 212705, September 10, 2014, ROBERTO CO, PETITIONER, VS.
KENG HUAN JERRY YEUNG AND EMMA YEUNG, RESPONDENTS.
Unfair Competition Is Defined As The Passing Off (Or Palming Off) Or Attempting To
Pass Off Upon The Public Of The Goods Or Business Of One Person As The Goods
Or Business Of Another With The End And Probable Effect Of Deceiving The Public
Facts:
KengHuan Jerry (Yeung) is the owner of Greenstone Pharmaceutical, a Chinese
traditional medicine company operating in Hongkong, and produces Greenstone
Medicated Oil Item No. 18, which in turn is exclusively distributed in the Philippines by
Taka Trading, owned by Yeungs wife, Emma Yeung. In their civil complaint for
trademark infringement and unfair competition filed before the RTC of Manila against
Ling Na Lau, her sister Pinky and Roberto (Co), they alleged that the three conspired
in selling counterfeit Greenstone products to the public, which they discovered when
Jose, Emmas sister bought a bottle of Greenstone from Royal Chinese Drug Store in
Binondo owned by Ling Na Lau. When he used the product, it had a different smell
and the heat it produced was not as strong as the original. Jerry and his son then
proceeded to the drugstore to investigate and found therein 7 bottles of Greenstone,
which he learned came from KiaoAn Chinese Drug Store owned by Roberto and
marketed as Tienchi Fong Sap Oil Greenstone, and it was there that Pinky bought
the items. In their defense, Roberto denied supplying the counterfeit products and
said all his stocks came from Taka; Ling on the other hand averred that the 7 bottles
were left by an unidentified man at the counter; while Pinky averred that she was
forced to sign the note. The RTC found the defendants liable for damages by
committing unfair competition and ordered them to pay moral and exemplary
damages, attorneys fees, and costs of suit. It dismissed the case for trademark
infringement as there was no showing that Greenstone was registered as a
trademark at the time of the filing of the case. The RTC refused to reconsider its
decision and the Court of Appeals affirmed the RTC decision hence the defendants,
petitioners herein elevated the case to the Supreme Court, on the issue of whether
they should be held liable for damages.
Issue
The sole issue for the Courts resolution is whether or not the CA correctly upheld
Cos liability for unfair competition.
The Courts ruling:
The petition is without merit.
The Courts review of the present case is via a petition for review under Rule 45 of the
Rules of Court, which generally bars any question pertaining to the factual issues
raised. The well-settled rule is that questions of fact are not reviewable in petitions for
review under Rule 45, subject only to certain exceptions, among them, the lack of
sufficient support in evidence of the trial courts judgment or the appellate courts
misapprehension of the adduced facts[1].
Co, who mainly interposes a denial of the acts imputed against him, fails to convince
the Court that any of the exceptions exists so as to warrant a review of the findings of
facts in this case. Factual findings of the RTC, when affirmed by the CA, are entitled
to great weight and respect by the Court and are deemed final and conclusive when
supported by the evidence on record[2]. The Court finds that both the RTC and the
CA fully considered the evidence presented by the parties, and have adequately
explained the legal and evidentiary reasons in concluding that Co committed acts of
unfair competition.
Unfair competition is defined as the passing off (or palming off) or attempting to pass
off upon the public of the goods or business of one person as the goods or business
of another with the end and probable effect of deceiving the public. This takes place
where the defendant gives his goods the general appearance of the goods of his
competitor with the intention of deceiving the public that the goods are those of his
competitor[3].
Here, it has been established that Co conspired with the Laus in the sale/distribution
of counterfeit Greenstone products to the public, which were even packaged in bottles
identical to that of the original, thereby giving rise to the presumption of fraudulent
intent[4]. In light of the foregoing definition, it is thus clear that Co, together with the
Laus, committed unfair competition, and should, consequently, be held liable therefor.
To this end, the Court finds the award of P300,000.00 as temperate damages to be
appropriate in recognition of the pecuniary loss suffered by Sps. Yeung, albeit its
actual amount cannot, from the nature of the case, as it involves damage to goodwill,
be proved with certainty[5]. The awards of moral and exemplary damages, attorneys
fees, and costs of suit are equally sustained for the reasons already fully-explained by
the courts a quo in their decisions.
while it is essential in the latter; and (c) in the former, prior registration of the
trademark is a pre-requisite to the action, while it is not necessary in the latter[6].
WHEREFORE, the petition is DENIED. The Decision dated September 16, 2013 and
the Resolution dated May 29, 2014 of the Court of Appeals in CA-G.R. CV No. 93679
are hereby AFFIRMED.
SO ORDERED.

Although liable for unfair competition, the Court deems it apt to clarify that Co was
properly exculpated from the charge of trademark infringement considering that the
registration of the trademark Greenstone essential as it is in a trademark
infringement case was not proven to have existed during the time the acts
complained of were committed, i.e., in May 2000.In this relation, the distinctions
between suits for trademark infringement and unfair competition prove useful: (a) the
former is the unauthorized use of a trademark, whereas the latter is the passing off of
ones goods as those of another; (b) fraudulent intent is unnecessary in the former,