1
Shangri-la International Hotel Management v. Developers Group of Companies (G.R.
No. 159938)
Facts:
Respondent DGCI applied for and was granted registration of the Shangri-La mark and
S logo in its restaurant business. Petitioner Shangri-La, chain of hotels and establishments
owned by the Kuok family worldwide, moved to cancel the registration of the mark on the
ground that it was illegally and fraudulently obtained and appropriated by respondents.
Petitioner also moved to register the mark and logo in its own name. Later, respondent
DGCI filed before the trial court a complaint for infringement against petitioner alleging
that DGCI had been the prior exclusive user and the registered owner in the Philippines of
said mark and logo. Petitioner Shangri-La argued that respondent had no right to apply for
the registration because it did not have prior actual commercial use thereof. The trial court
found for respondent. CA affirmed.
Issue:
Whether or not respondents prior use of the mark is a requirement for its registration.
Ruling: YES.
While the present law on trademarks has dispensed with the requirement of prior actual use
at the time of registration, the law in force at the time of registration must be applied. Under
the provisions of the former trademark law, R.A. No. 166, as amended, hence, the law in
force at the time of respondents application for registration of trademark, the root of
ownership of a trademark is actual use in commerce. Section 2 of said law requires that
before a trademark can be registered, it must have been actually used in commerce and
service for not less than two months in the Philippines prior to the filing of an application
for its registration. Trademark is a creation of use and therefore actual use is a pre-requisite
to exclusive ownership and its registration with the Philippine Patent Office is a mere
administrative confirmation of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a
registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-month
actual use requirement. What is worse, DGCI was not even the owner of the mark. For it to
have been the owner, the mark must not have been already appropriated (i.e., used) by
someone else. At the time of respondent DGCIs registration of the mark, the same was
already being used by the petitioners, albeit abroad, of which DGCIs president was fully
aware.
Prosource INT Vs Horphag
FACTS:
Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent
later discovered that petitioner was also distributing a similar food supplement using the
mark PCO-GENOLS since 1996. This prompted respondent to demand that petitioner cease
and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary
Injunction against petitioner, in using the name PCO-GENOLS for being confusingly
similar. Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-
GENOLS have the same suffix "GENOL" which appears to be merely descriptive and thus
open for trademark registration by combining it with other words and concluded that the
marks, when read, sound similar, and thus confusingly similar especially since they both
refer to food supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court
explained that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively
similar to PYCNOGENOL.
ISSUE: Whether the names are confusingly similar.
RULING:
Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two
test to prove such.
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
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.
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. Not only
on the predominant words should be the focus 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.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on
evidence, appears to be merely descriptive and furnish no indication of the origin of the
article and hence, open for trademark registration by the plaintiff through combination with
 2

another word or phrase. 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.
(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.
RA 8293, which took effect on 1 January 1998, 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.

It is the likelihood of confusion that is the gravamen of infringement. Applying the

dominancy test or the holistic test, petitioners SAN FRANCISCO COFFEE trademark is
Coffee Partners v. San Francisco Coffee & Roastery (G.R. No. 169504) a clear infringement of respondents SAN FRANCISCO COFFEE & ROASTERY, INC.
trade name. The descriptive words SAN FRANCISCO COFFEE are precisely the
Facts: 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
Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to higher in cases where the business of one corporation is the same or substantially the same
operate coffee shops in the country using the trademark San Francisco Coffee. as that of another corporation. In this case, the consuming public will likely be confused as
Respondent on the other hand, is a local corporation engaged in the wholesale and retail to the source of the coffee being sold at petitioners coffee shops.
sale of coffee and uses the business name San Francisco Coffee & Roastery registered
with the DTI. Later, respondent filed an infringement and/or unfair competition complaint
against petitioner alleging that the latter was about to open a coffee shop under the name
San Francisco Coffee causing confusion in the minds of the public as it bore a similar
name and is engaged also in selling of coffee. Petitioner contended no infringement would
arise because respondents tradename was not registered.

Issue:

Whether or not petitioners trademark would infringe respondents tradename.

Ruling: 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;
 3

G.R. No. 169440 November 23, 2011 G.R. No. 194062 June 17, 2013

GEMMA ONG A.K.A. Maria Teresa Gemma Catacutan, REPUBLIC GAS CORPORATION, ARNEL U. TY, MARI ANTONETTE N. TY,
Petitioner,vs. ORLANDO REYES, FERRER SUAZO and ALVIN U. TV, Petitioners,
PEOPLE OF THE PHILIPPINES, vs.
Respondent. PETRON CORPORATION, PILIPINAS SHELL PETROLEUM CORPORATION, and
FACTS: SHELL INTERNATIONAL PETROLEUM COMPANY LIMITED, Respondents.
On September 2003, the Regional Trial Court of Manila convicted Gemma Ong forInfringement under Sec.
155 in relation to Sec. 170 of Republic Act. No. 8293 or the IntellectualProperty Code. This decision was
DECISION
assailed based on facts established that Gemma Ong wasengaged in the distribution, sale and offering for sale of
counterfeit Marlboro cigarettes which caused confusion and deception to public and without permit or authority
from the Telengtan Brothers and Sons Inc., the exclusive manufacturer of Malboro cigarette in the Philippines PERALTA, J.:
and from the Philip Morris Products, Inc. (PMPI) which is the registered owner and proprietor of
theMARLBORO trademark.The decision of the RTC Manila was affirmed by the Court of Appeals and hence This resolves the Petition for Review on Certiorari under Rule 45 of the Rules of Court
thisappeal by certiorari by Gemma Ong praying that the decision of RTC and CA to be set aside andreverse. filed by petitioners seeking the reversal of the Decision1 dated July 2, 2010, and Resolution2
ISSUE: dated October 11, 2010 of the Court of Appeals (CA) in CA-G.R. SP No. 106385.
Whether or not Gemma Ong, setting aside the issue of alleged mistaken identity, is guiltybeyond reasonable
doubt of Infringement under the Intellectual Property Code. Stripped of non-essentials, the facts of the case, as summarized by the CA, are as follows:
RULING:
The Supreme Court AFFIRMED the decision of Court of Appeals.I Petitioners Petron Corporation ("Petron" for brevity) and Pilipinas Shell Petroleum
n McDonalds Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger, Corporation ("Shell" for brevity) are two of the largest bulk suppliers and producers of LPG
Inc., Supreme Court held:To establish trademark infringement, the following elements must be shown: in the Philippines. Petron is the registered owner in the Philippines of the trademarks
(1) the validity of plaintiffs mark; GASUL and GASUL cylinders used for its LGP products. It is the sole entity in the
(2) theplaintiffs ownership of the mark; and Philippines authorized to allow refillers and distributors to refill, use, sell, and distribute
(3) the use of the mark or its colorable imitation by the alleged infringer results in "likelihood of confusion." Of GASUL LPG containers, products and its trademarks.
these, it is the element of likelihood of confusion that is the gravamen of trademark infringement. A mark is
valid if it is distinctive and not barred from registration. Once registered, not only the
Pilipinas Shell, on the other hand, is the authorized user in the Philippines of the tradename,
marks validity, but also the registrants ownership of the mark is prima facie presumed.
trademarks, symbols or designs of its principal, Shell International Petroleum Company
Anent the element of confusion, both the RTC and the Court of Appeals have correctly
Limited, including the marks SHELLANE and SHELL device in connection with the
held that
production, sale and distribution of SHELLANE LPGs. It is the only corporation in the
the counterfeit cigarettes seized from Gemmas possession were intended to confuse and
Philippines authorized to allow refillers and distributors to refill, use, sell and distribute
deceive the public as to the origin of the cigarettes intended to be sold, as they not only bore
SHELLANE LGP containers and products. Private respondents, on the other hand, are the
PMPIs mark, but they were also packaged almost exactly as PMPIs products.
directors and officers of Republic Gas Corporation ("REGASCO" for brevity), an entity
The prosecution was able to establish that the trademark "Marlboro" was not only valid forbeing neither generic
duly licensed to engage in, conduct and carry on, the business of refilling, buying, selling,
nor descriptive, it was also exclusively owned by PMPI, as evidenced bythe certificates of registration issued by
distributing and marketing at wholesale and retail of Liquefied Petroleum Gas ("LPG").
the Intellectual Property Office of the Department of Trade and Industry.

LPG Dealers Associations, such as the Shellane Dealers Association, Inc., Petron Gasul
Dealers Association, Inc. and Totalgaz Dealers Association, received reports that certain
entities were engaged in the unauthorized refilling, sale and distribution of LPG cylinders
bearing the registered tradenames and trademarks of the petitioners. As a consequence, on
February 5, 2004, Genesis Adarlo (hereinafter referred to as Adarlo), on behalf of the
aforementioned dealers associations, filed a letter-complaint in the National Bureau of
Investigation ("NBI") regarding the alleged illegal trading of petroleum products and/or
underdelivery or underfilling in the sale of LPG products.

Acting on the said letter-complaint, NBI Senior Agent Marvin E. De Jemil (hereinafter
referred to as "De Jemil") was assigned to verify and confirm the allegations contained in
the letter-complaint. An investigation was thereafter conducted, particularly within the areas
of Caloocan, Malabon, Novaliches and Valenzuela, which showed that several persons

and/or establishments, including REGASCO, were suspected of having violated provisions
of Batas Pambansa Blg. 33 (B.P. 33). The surveillance revealed that REGASCO LPG
Refilling Plant in Malabon was engaged in the refilling and sale of LPG cylinders bearing
the registered marks of the petitioners without authority from the latter. Based on its
General Information Sheet filed in the Securities and Exchange Commission, REGASCOs
members of its Board of Directors are: (1) Arnel U. Ty President, (2) Marie Antoinette Ty
Treasurer, (3) Orlando Reyes Corporate Secretary, (4) Ferrer Suazo and (5) Alvin Ty
(hereinafter referred to collectively as private respondents).
De Jemil, with other NBI operatives, then conducted a test-buy operation on February 19,
2004 with the former and a confidential asset going undercover. They brought with them
four (4) empty LPG cylinders bearing the trademarks of SHELLANE and GASUL and
included the same with the purchase of J&S, a REGASCOs regular customer. Inside
REGASCOs refilling plant, they witnessed that REGASCOs employees carried the empty
LPG cylinders to a refilling station and refilled the LPG empty cylinders. Money was then
given as payment for the refilling of the J&Ss empty cylinders which included the four
LPG cylinders brought in by De Jemil and his companion. Cash Invoice No. 191391 dated
February 19, 2004 was issued as evidence for the consideration paid.
After leaving the premises of REGASCO LPG Refilling Plant in Malabon, De Jemil and the
other NBI operatives proceeded to the NBI headquarters for the proper marking of the LPG
cylinders. The LPG cylinders refilled by REGASCO were likewise found later to be
underrefilled.
Thus, on March 5, 2004, De Jemil applied for the issuance of search warrants in the
Regional Trial Court, Branch 24, in the City of Manila against the private respondents
and/or occupants of REGASCO LPG Refilling Plant located at Asucena Street, Longos,
Malabon, Metro Manila for alleged violation of Section 2 (c), in relation to Section 4, of
B.P. 33, as amended by PD 1865. In his sworn affidavit attached to the applications for
search warrants, Agent De Jemil alleged as follows:
"x x x.
"4. Respondents REGASCO LPG Refilling Plant-Malabon is not one of those entities
authorized to refill LPG cylinders bearing the marks of PSPC, Petron and Total Philippines
Corporation. A Certification dated February 6, 2004 confirming such fact, together with its
supporting documents, are attached as Annex "E" hereof.
6. For several days in the month of February 2004, the other NBI operatives and I
conducted surveillance and investigation on respondents REGASCO LPG refilling Plant-
Malabon. Our surveillance and investigation revealed that respondents REGASCO LPG
Refilling Plant-Malabon is engaged in the refilling and sale of LPG cylinders bearing the
marks of Shell International, PSPC and Petron.
x x x.
8. The confidential asset and I, together with the other operatives of the NBI, put together a
test-buy operation. On February 19, 2004, I, together with the confidential asset, went
4
undercover and executed our testbuy operation. Both the confidential assets and I brought
with us four (4) empty LPG cylinders branded as Shellane and Gasul. x x x in order to have
a successful test buy, we decided to "ride-on" our purchases with the purchase of Gasul and
Shellane LPG by J & S, one of REGASCOs regular customers.
9. We proceeded to the location of respondents REGASCO LPG Refilling Plant-Malabon
and asked from an employee of REGASCO inside the refilling plant for refill of the empty
LPG cylinders that we have brought along, together with the LPG cylinders brought by J &
S. The REGASCO employee, with some assistance from other employees, carried the
empty LPG cylinders to a refilling station and we witnessed the actual refilling of our
empty LPG cylinders.
10. Since the REGASCO employees were under the impression that we were together with
J & S, they made the necessary refilling of our empty LPG cylinders alongside the LPG
cylinders brought by J & S. When we requested for a receipt, the REGASCO employees
naturally counted our LPG cylinders together with the LPG cylinders brought by J & S for
refilling. Hence, the amount stated in Cash Invoice No. 191391 dated February 19, 2004,
equivalent to Sixteen Thousand Two Hundred Eighty-Six and 40/100 (Php16,286.40),
necessarily included the amount for the refilling of our four (4) empty LPG cylinders. x x x.
11. After we accomplished the purchase of the illegally refilled LPG cylinders from
respondents REGASCO LPG Refilling Plant-Malabon, we left its premises bringing with
us the said LPG cylinders. Immediately, we proceeded to our headquarters and made the
proper markings of the illegally refilled LPG cylinders purchased from respondents
REGASCO LPG Refilling Plant-Malabon by indicating therein where and when they were
purchased. Since REGASCO is not an authorized refiller, the four (4) LPG cylinders
illegally refilled by respondents REGASCO LPG Refilling Plant-Malabon, were without
any seals, and when weighed, were underrefilled. Photographs of the LPG cylinders
illegally refilled from respondents REGASCO LPG Refilling Plant-Malabon are attached
as Annex "G" hereof. x x x."
After conducting a personal examination under oath of Agent De Jemil and his witness, Joel
Cruz, and upon reviewing their sworn affidavits and other attached documents, Judge
Antonio M. Eugenio, Presiding Judge of the RTC, Branch 24, in the City of Manila found
probable cause and correspondingly issued Search Warrants Nos. 04-5049 and 04-5050.
Upon the issuance of the said search warrants, Special Investigator Edgardo C. Kawada and
other NBI operatives immediately proceeded to the REGASCO LPG Refilling Station in
Malabon and served the search warrants on the private respondents. After searching the
premises of REGASCO, they were able to seize several empty and filled Shellane and
Gasul cylinders as well as other allied paraphernalia.
Subsequently, on January 28, 2005, the NBI lodged a complaint in the Department of
Justice against the private respondents for alleged violations of Sections 155 and 168 of
Republic Act (RA) No. 8293, otherwise known as the Intellectual Property Code of the
Philippines.

On January 15, 2006, Assistant City Prosecutor Armando C. Velasco recommended the
dismissal of the complaint. The prosecutor found that there was no proof introduced by the
petitioners that would show that private respondent REGASCO was engaged in selling
petitioners products or that it imitated and reproduced the registered trademarks of the
petitioners. He further held that he saw no deception on the part of REGASCO in the
conduct of its business of refilling and marketing LPG. The Resolution issued by Assistant
City Prosecutor Velasco reads as follows in its dispositive portion:
"WHEREFORE, foregoing considered, the undersigned finds the evidence against the
respondents to be insufficient to form a well-founded belief that they have probably
committed violations of Republic Act No. 9293. The DISMISSAL of this case is hereby
respectfully recommended for insufficiency of evidence."
On appeal, the Secretary of the Department of Justice affirmed the prosecutors dismissal of
the complaint in a Resolution dated September 18, 2008, reasoning therein that:
"x x x, the empty Shellane and Gasul LPG cylinders were brought by the NBI agent
specifically for refilling. Refilling the same empty cylinders is by no means an offense in
itself it being the legitimate business of Regasco to engage in the refilling and marketing
of liquefied petroleum gas. In other words, the empty cylinders were merely filled by the
employees of Regasco because they were brought precisely for that purpose. They did not
pass off the goods as those of complainants as no other act was done other than to refill
them in the normal course of its business.
"In some instances, the empty cylinders were merely swapped by customers for those which
are already filled. In this case, the end-users know fully well that the contents of their
cylinders are not those produced by complainants. And the reason is quite simple it is an
independent refilling station.
"At any rate, it is settled doctrine that a corporation has a personality separate and distinct
from its stockholders as in the case of herein respondents. To sustain the present
allegations, the acts complained of must be shown to have been committed by respondents
in their individual capacity by clear and convincing evidence. There being none, the
complaint must necessarily fail. As it were, some of the respondents are even gainfully
employed in other business pursuits. x x x." 3
Dispensing with the filing of a motion for reconsideration, respondents sought recourse to
the CA through a petition for certiorari.
In a Decision dated July 2, 2010, the CA granted respondents certiorari petition. The fallo
states:
WHEREFORE, in view of the foregoing premises, the petition filed in this case is hereby
GRANTED. The assailed Resolution dated September 18, 2008 of the Department of
Justice in I.S. No. 2005-055 is hereby REVERSED and SET ASIDE.
SO ORDERED.4
5
Petitioners then filed a motion for reconsideration. However, the same was denied by the
CA in a Resolution dated October 11, 2010.
Accordingly, petitioners filed the instant Petition for Review on Certiorari raising the
following issues for our resolution:
Whether the Petition for Certiorari filed by RESPONDENTS should have been denied
outright.
Whether sufficient evidence was presented to prove that the crimes of Trademark
Infringement and Unfair Competition as defined and penalized in Section 155 and Section
168 in relation to Section 170 of Republic Act No. 8293 (The Intellectual Property Code of
the Philippines) had been committed.
Whether probable cause exists to hold INDIVIDUAL PETITIONERS liable for the offense
charged.5
Let us discuss the issues in seriatim.
Anent the first issue, the general rule is that a motion for reconsideration is a condition sine
qua non before a certiorari petition may lie, its purpose being to grant an opportunity for the
court a quo to correct any error attributed to it by re-examination of the legal and factual
circumstances of the case.6
However, this rule is not absolute as jurisprudence has laid down several recognized
exceptions permitting a resort to the special civil action for certiorari without first filing a
motion for reconsideration, viz.:
(a) Where the order is a patent nullity, as where the court a quo has no jurisdiction;
(b) Where the questions raised in the certiorari proceedings have been duly raised
and passed upon by the lower court, or are the same as those raised and passed
upon in the lower court.
(c) Where there is an urgent necessity for the resolution of the question and any
further delay would prejudice the interests of the Government or of the petitioner
or the subject matter of the petition is perishable;
(d) Where, under the circumstances, a motion for reconsideration would be
useless;
(e) Where petitioner was deprived of due process and there is extreme urgency for
relief;
(f) Where, in a criminal case, relief from an order of arrest is urgent and the
granting of such relief by the trial court is improbable;

(g) Where the proceedings in the lower court are a nullity for lack of due process;
(h) Where the proceeding was ex parte or in which the petitioner had no
opportunity to object; and,
(i) Where the issue raised is one purely of law or public interest is involved. 7
In the present case, the filing of a motion for reconsideration may already be dispensed with
considering that the questions raised in this petition are the same as those that have already
been squarely argued and passed upon by the Secretary of Justice in her assailed resolution.
Apropos the second and third issues, the same may be simplified to one core issue: whether
probable cause exists to hold petitioners liable for the crimes of trademark infringement and
unfair competition as defined and penalized under Sections 155 and 168, in relation to
Section 170 of Republic Act (R.A.) No. 8293.
Section 155 of R.A. No. 8293 identifies the acts constituting trademark infringement as
follows:
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 of 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.8
From the foregoing provision, the Court in a very similar case, made it categorically clear
that the 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 or consumers can be considered as
trademark infringement.9
6
Here, petitioners have actually committed trademark infringement when they refilled,
without the respondents consent, the LPG containers bearing the registered marks of the
respondents. As noted by respondents, petitioners acts will inevitably confuse the
consuming public, since they have no way of knowing that the gas contained in the LPG
tanks bearing respondents marks is in reality not the latters LPG product after the same
had been illegally refilled. The public will then be led to believe that petitioners are
authorized refillers and distributors of respondents LPG products, considering that they are
accepting empty containers of respondents and refilling them for resale.
As to the charge of unfair competition, Section 168.3, in relation to Section 170, of R.A.
No. 8293 describes the acts constituting unfair competition as follows:
Section 168. Unfair Competition, Rights, Regulations and Remedies. x x x.
168.3 In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of
another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence purchasers to believe that
the goods offered are those of a manufacturer or dealer, other than the actual manufacturer
or dealer, or who otherwise clothes the goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or any subsequent vendor of such goods
or any agent of any vendor engaged in selling such goods with a like purpose;
xxxx
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 (50,000) to Two hundred thousand pesos (200,000),
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.
From jurisprudence, unfair competition has been 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. 10
Passing off (or palming off) takes place where the defendant, by imitative devices on the
general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors. Thus, 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. 11
In the present case, respondents pertinently observed that by refilling and selling LPG
cylinders bearing their registered marks, petitioners are selling goods by giving them the
general appearance of goods of another manufacturer.
 7

What's more, the CA correctly pointed out that there is a showing that the consumers may
be misled into believing that the LPGs contained in the cylinders bearing the marks
"GASUL" and "SHELLANE" are those goods or products of the petitioners when, in fact,
they are not. Obviously, the mere use of those LPG cylinders bearing the trademarks
"GASUL" and "SHELLANE" will give the LPGs sold by REGASCO the general
appearance of the products of the petitioners.

In sum, this Court finds that there is sufficient evidence to warrant the prosecution of
petitioners for trademark infringement and unfair competition, considering that petitioner
Republic Gas Corporation, being a corporation, possesses a personality separate and distinct
from the person of its officers, directors and stockholders. 12 Petitioners, being corporate
officers and/or directors, through whose act, default or omission the corporation commits a
crime, may themselves be individually held answerable for the crime. 13 Veritably, the CA
appropriately pointed out that petitioners, being in direct control and supervision in the
management and conduct of the affairs of the corporation, must have known or are aware
that the corporation is engaged in the act of refilling LPG cylinders bearing the marks of the
respondents without authority or consent from the latter which, under the circumstances,
could probably constitute the crimes of trademark infringement and unfair competition. The
existence of the corporate entity does not shield from prosecution the corporate agent who
knowingly and intentionally caused the corporation to commit a crime. Thus, petitioners
cannot hide behind the cloak of the separate corporate personality of the corporation to
escape criminal liability. A corporate officer cannot protect himself behind a corporation
where he is the actual, present and efficient actor.14

WHEREFORE, premises considered, the petition is hereby DENIED and the Decision
dated July 2, 2010 and Resolution dated October 11, 2010 of the Court of Appeals in CA-
G.R. SP No. 106385 are AFFIRMED.

SO ORDERED.

DIOSDADO M. PERALTA
Associate Justice

WE CONCUR: