ROBERTO L. DEL ROSARIO, petitioner, vs.
COURT OF
APPEALS AND JANITO CORPORATION, respondents.
G.R. No. 115106. March 15, 1996
Facts:
Petitioner Roberto Del Rosario filed a complaint for
patent infringement against private respondent
Janito Corporation.
Petitioner alleged that he was a patentee of an audio
equipment and improved audio equipment
commonly known as the sing-along system or
karaoke under Letters Patent No- UM5269 as well as
UM6237 issued by the Director of Patents.
The effectivity of both Letters Patents was for
five(5) years and was extended for another five(5)
years.
Petitioner learned that private respondent was
manufacturing a sing-along system bearing the
trademark miyata or miyata karaoke substantially
similar if not identical to the sing-along system
covered by patents issued in his favor.
Petitioner sought from the trial court the issuance of
writ of preliminary injunction to enjoin private
respondents, from using, selling and advertising the
karaoke.
Trial Court issued a preliminary injunction.
Private respondent assailed the order directing the
issuance of writ by way of petition for certiorari
with prayer for the issuance of writ of preliminary
injection and a temporary restraining order before
respondent CA.
CA granted the writ and set aside questioned order
of the trial court. It expressed the view that there
was no infringement of the patents of the petitioner
because the karaoke system was a universal
product.
MR was denied.
Hence, this petition.
Facts:
Whether or not the CA erred in finding the trial
court to have committed grave abuse of discretion in
enjoining private respondent from manufacturing,
selling, and advertising the miyata karaoke brand?
Held:
Yes. The petitioner had established before the trial court
prima facie proof of violation of his rights as patentee
 to justify the issuance of a writ of preliminary
injunction in his favor during the pendency of the main
suit for damages resulting from the alleged
infringement.
It may be noted that respondent corporation failed to
present before the trial court a clear, competent and
reliable comparison between its own model and that of
petitioner, and disregarded completely petitioner's
Utility Model No. 6237 which improved on his first
patented model. Notwithstanding the differences cited
by respondent corporation, it did not refute and
disprove the allegations of petitioner before the trial
court that: (a) both are used by a singer to sing and
amplify his voice; (b) both are used to sing with a
minus-one or multiplex tapes, or that both are used to
play minus-one or standard cassette tapes for singing or
for listening to; (c) both are used to sing with a minus-
one tape and multiplex tape and to record the singing
and the accompaniment; (d) both are used to sing with
live accompaniment and to record the same; (e) both
are used to enhance the voice of the singer using echo
effect, treble, bass and other controls; (f) both are
equipped with cassette tape decks which are installed
with one being used for playback and the other, for
recording the singer and the accompaniment, and both
may also be used to record a speaker's voice or
instrumental playing, like the guitar and other
instruments, (g) both are encased in box-like cabinets;
and (h) both can be used with one or more
microphones. Clearly, therefore, both petitioner's and
respondent's models involve substantially the same
modes of operation and produce substantially the same
if not identical results when used. In view thereof, we
find that petitioner had established before the trial court
prima facie proof of violation of his rights as patentee
to justify the issuance of a writ of preliminary
injunction in his favor during the pendency of the main
suit for damages resulting from the alleged
infringement.
It is elementary that a patent may be infringed where
the essential or substantial features of the patented
invention are taken or appropriated, or the device,
machine or other subject matter alleged to infringe is
substantially identical with the patent invention. In
order to infringe a patent, a machine or device must
perform the same function, or accomplish the same
result by identical or substantially identical means and
the principle or mode of operation must be substantially
the same.
Emerald Garment Manufacturing Corp vs. Court of Appeals
GR No. 100098. December 29, 1995
KAPUNAN, J:
Facts:
Private respondent H.D. Lee Co., Inc. filed with the
Bureau of Patents, Trademarks & Technology
Transfer (BPTTT) a Petition for Cancellation of
Registration No. SR 5054 for the trademark
"STYLISTIC MR. LEE" in the name of petitioner
Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's
application for registration of trademark "so closely
resembled its own trademark, 'LEE' as previously
registered and used in the Philippines cause
confusion, mistake and deception on the part of
the purchasing public as to the origin of the goods.
The Director of Patents rendered a decision
granting private respondent's petition for
cancellation and opposition to registration.
The Director of Patents, using the test of
dominancy, declared that petitioner's trademark
was confusingly similar to private respondent's
mark because "it is the word 'Lee' which draws the
attention of the buyer and leads him to conclude
that the goods originated from the same
manufacturer.
Petitioner appealed to CA, it filed with BPTTT a
motion to stay execution of the decision of Director of
Patents.
Private submitted his opposition. BPTTT issued
Resolution No. 88-33 granting petitioners motion to
stay execution.
CA affirmed the decision of Director of
Patents.Petitioner filed a MR on the decision of CA.
Private respondent opposed said motion on the ground
that it involves an impermissible change of theory on
appeal.
CA issued a resolution rejecting petitioners motion for
reconsideration.
Hence, this petition.
Issue:
Whether or not petitioners trademark stylistic
MR.LEE, is confusingly similar with the private
respondents trademark LEE or LEE RIDER, LEE
LEENS and LEE-SURES?
Held:
 NO. The Court taking into account the factual
circumstances of this case, considered the
trademarks involved as a whole and rule that
petitioner's "STYLISTIC MR. LEE" is not
confusingly similar to private respondent's "LEE"
trademark.
Petitioner's trademark is the whole "STYLISTIC
MR. LEE." Although on its label the word "LEE" is
prominent, the trademark should be considered as
a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous,
noticeable and substantial enough to matter
especially in the light of the following variables that
must be factored in.
In determining whether colorable imitation exists,
jurisprudence has developed two kinds of tests
the Dominancy Test applied in Asia Brewery,
Inc. v. Court of Appeals and other cases and the
Holistic Test.
Proceeding to the task at hand, the essential
element of infringement is colorable imitation. This
term has been defined as "such a close or
ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an
ordinary purchaser giving such attention as a
purchaser usually gives, and to cause him to
purchase the one supposing it to be the other."
Colorable imitation does not mean such similitude
as amounts to identity. Nor does it require that all
the details be literally copied. Colorable imitation
refers to such similarity in form, content, words,
sound, meaning, special arrangement, or general
appearance of the trademark or tradename with
that of the other mark or tradename in their over-
all presentation or in their essential, substantive
and distinctive parts as would likely mislead or
confuse persons in the ordinary course of
purchasing the genuine article.
The determination as to who is the prior user of
the trademark is a question of fact and it is this
Court's working principle not to disturb the findings
of the Director of Patents on this issue in the
absence of any showing of grave abuse of
discretion. The findings of facts of the Director of
Patents are conclusive upon the Supreme
Court provided they are supported by substantial
evidence.
PRIBHDAS J. MIRPURI, petitioner, vs.
COURT OF APPEALS, DIRECTOR OF
PATENTS and the BARBIZON
CORPORATION, respondents.
[G.R. No. 114508. November 19, 1999.]
PUNO, J : p
Facts:
Lolita Escobar filed an application with the
Bureau of Patents for the registration of the
trademark "Barbizon" docketed as Inter
Partes No. 686.
Private respondent Barbizon Corporation, a
corporation organized and doing business
under the laws of New York, U.S.A. filed an
opposition thereto based on Sections 4 (d)
and 8 of the Trademark law by claiming that
the mark BARBIZON of the applicant is
confusingly similar to the trademark
BARBIZON which opposer owns and has
not abandoned.
The Directorof Patents rendered judgment
dismissing the opposition and giving due
course to Escobar's application.
The decision became final, and Escobar was
issued a certificate of registration.
Later, Escobar assigned all her rights and
interests over the trademark to petitioner
Pribhdas J. Mirpuri.
In 1979, the Bureau of Patents cancelled
Escobar's certificate of registration for
failure to file with the Bureau of Patents the
Affidavit of Use of the Trademark as
required under Section 12 of the Philippine
Trademark Law.
Mirpuri reapplied for the registration of the
cancelled trademark of Barbizon docketed
as Inter Partes No. 2049.
Again, private respondent filed an
opposition by citing mainly the protection of
trademark under Article 6BIS is of the
Convention of Paris and stating that
opposer's goods bearing the trademark
BARBIZON have been used in many
countries including the Philippines for at
least 40 years and has enjoyed international
reputation and good will for their quality
and to allow such registration will also
violate Article 189 of the Revised Penal
Code.
Subsequently, the Director of Patents
rendered a decision declaring private
respondent's opposition barred by res
judicata and giving due course to petitioner's
reapplication for registration. On appeal, the
Court of Appeals reversed the decision of
the Director of Patents.HSCA