Republic of the Philippines

Department of Justice
OFFICE OF THE CITY PROSECUTOR
City of Marikina

CLARIE A. LEGASPI NPS Docket No.:

Complainant, XV-09-INV-16J-01206

-Versus- -For-

SHIRLEY TAN
Respondents.
Sec. 155 (Trademark Infringement),
Sec. 168 (Unfair Competition) in
relation to Sec. 170 of R.A. 8293
x-----------------------------------------x

RESOLUTION

This resolves the Complaint instituted by CLAIRE A. LEGASPI for trademark

infringement and unfair competition, in violation of R.A. No. 8293.

Complainant CLAIRE A. LEGASPI (hereinafter referred to as LEGASPI for

brevity) is the General Manager and duly authorized representative of Philippine
Leading Infinite Logistics, Inc. (PLILI), an affiliate of the La Filipina Uy Gongco
Corporation (LFUGC). Attached to the Complaint are the Secretary’s Certificate of
Philippine Leading Infinite Logistics, Inc. dated 12 September 2014 and the
Secretary’s Certificate of La Filipina Uy Gongco Corporation dated 11 September
2014, both authorizing LEGASPI to pursue the present case.

LFUGC is the registered owner of the trademark “La Filipina and Device”
which, as per the Certificate of Registration dated 22 March 2012, “Consists of a
yellow-orange orbit surrounding the brand name, “La Filipina,” with a visual of a
rising sun on the upper left corner. The words “La Filipina” are rendered in Criticize
type font, using blue for the word “La” and red for the word “Filipina.” This
trademark is used on La Filipina Luncheon Meat and La Filipina Corned Pork
products of PLILI.

The National Meat Inspection Services, on the other hand, had issued
Certificates of Product Registration dated 25 February 2014 and good for five years
to PLILI, for their “La Filipina Luncheon Meat” labeled products with the condition
that there would be no change in its formulation, labeling, and commercial
presentation without prior written approval. The label has a 2-tone background,
with the upper 2/3 portion of the label in white, and the lower 1/3 in purple. On the
upper white portion, an image of a plate with sliced of luncheon meat, scrambled
eggs, rice, and some vegetables appear. There is also an image of a plate with a
smiling face on it, and a spoon, fork, and napkin to its right. This image is still
undergoing registration at the Intellectual Property Office.

PLILI has been distributing its La Filipina Luncheon Meat products

nationwide since 2012, as evidenced by a list of its nationwide distributors, Sales
Invoices, marketing paraphernalia, and copies of print advertisements from 2013.

On 2 September 2014, MICHAEL M. LUNA, PLILI’s Regional Sales Manager,

visited an Easymart Superstore in Mandaluyong to check on PLILI products.
According to his affidavit attesting to the aforementioned visit, he was surprised to
see 350g luncheon meat cans with an almost similar label to PLILI’s La Filipina
Luncheon Meat but with the logo “Supreme.” He then purchased a can to be brought
to the office for further examination.
 To determine whether Supreme luncheon meat products were still being
sold at Easymart Mandaluyong, members of the LFUGC Legal Department, LEAN
FERRER and BLUCELLE J. PALOMO, visited separately. In their affidavit, they both
attested that the brand, with a label very similar to and almost identical with that of
La Filipina Luncheon Meat, was still being sold. To determine if it was being sold at
other Easymart outlets, RHIA H. LACHICA, another LFUGC legal staffer, and
BLUCELLE J. PALOMO visited the Sumulong Highway branch and found that it was
also being sold there. They attested to their findings in an affidavit.

They verified with Easymart store manager, CRESENCIA FELECIO, the status
of the products. In her affidavit, she confirmed that the Supreme Luncheon Meat
products were manufactured, packaged, and passed off to them ready for public
distribution by Wooden Meteor International Corporation owned by respondent
SHIRLEY TAN, (hereinafter referred to as TAN for brevity). Further, CRESENCIA
FELECIO clarified that Easymart had no hand in the creation, design, or distribution
of the Supreme Luncheon Meat products.

The Complaint contends that the visual appearance of the entire “Supreme”
label, including the logo, colors, design, symbols, words, and images are identical to
the La Filipina Luncheon Meat label and the La Filipina trademark.

In her Supplemental Complaint Affidavit, LEGASPI presented true and

accurate copies of both the Supreme Luncheon Meat and La Filipina Luncheon Meat
product labels in full. It was pointed out that the mark “Supreme” is a colorable
imitation of the registered mark “La Filipina” under Certificate of Registration No. 4-
2010-8514 and the labels also bear the exact same devices, images, and placement.
The only noted difference was that the word “La Filipina” was replaced with
“Supreme.”

Aside from the visually similar labels, the “Supreme” mark was also being
used for similar goods, i.e., Luncheon Meat. It was the averred that public confusion
between the two products is very likely.

The Supplemental Complaint also asserts that the copying by Supreme

Luncheon Meat of virtually the whole label of La Filipina Luncheon Meat clearly
shows intent to use in commerce or pass off the former for the latter. Moreover, it
was also stressed that the copying was done with deception and intent to profit
from the goodwill that La Filipina has earned in the market. The following copied
features were enumerated:

1. The exact same image of a smiling humanized plate with luncheon

meat, scrambled eggs, tomatoes, and garlic rice;
2. The exact same heart-shaped device with the logo “ZERO% TRANS-
FAT;”
 3. The exact same tagline “MAKE EVERY MEAR [sic] A SUPER MEAL,”
with the same font type;
4. The exact same tagline “SERVING YOU TASTY IDEAS FOR GREAT
MEAL TIMES AT HOME,” with the same font type;
5. The exact same white-colored circular device, with eyes, nose, and
mouth, and with a spoon and fork on the right side;
6. The exact same device of a yellow-orange orbit with a visual of a
rising sun on the upper left corner;
7. The exact size, font type, and position of the words “LUNCHEON
MEAT;”
8. A purple-shaded border around the circumference of the bottom
part of the label;
9. The exact same position of the table of nutrition facts, list of
ingredients, and bar code;
10. The exact same “BUY PINOY” logo;
11. Similar shape and size of the can, and same net weight of 350
grams; and
12. Similar white-colored band around the circumference of the label.

In her Counter-Affidavit, SHIRLEY TAN denied the charges filed against her.
She alleges that Complainant is using the trademark “La Filipina” but what is being
complained of is the trademark “Supreme,” a generic word. Moreover, she contends
that the Complaint merely relied on hearsay evidence regarding her alleged
participation in the sale of the products.

She also intimated that the goodwill La Filipina has supposedly earned in the
market was merely imaginary. In addition, “Luncheon Meat” is a generic product
that had long been in the Philippine market and that “La Filipina” is also a generic
Spanish word, which nobody should be able to acquire goodwill on. Finally, as to the
image of a rising sun, she argues that such is a generic symbol that had been used
for different purposes in different media.

In the Complainant’s Reply-Affidavit, she conceded that while the

aforementioned words and image are indeed generic, they have to be appreciated as
a whole. This is because the generic words and images taken together form part of
the trademark owned by LFUGC.

The Reply reiterated the glaring similarities of the two labels, stressing that
everything from the La Filipina Luncheon Meat label was copied, except for the
words “La Filipina” which was changed to “Supreme.” Thereby causing confusion to
the consumers, especially since it involves the exact same product – luncheon meat.

As regards the allegations of TAN that the Complaint was based on hearsay
evidence about her participation, LEGASPI pointed out that there was no denial
regarding the ownership of Wooden Meteor International Corporation and her
being its President. Further, there was also no denial of the fact that transactions
were made with Easymart Superstore, evidenced by invoices and delivery receipts.

In sum, it was maintained that TAN illegally used in commerce a colorable

imitation of a registered trademark and such use was likely to cause confusion and
would deceive the purchasing public. Further, it was also reasoned that TAN must
also be held liable for Unfair Competition for trying to pass off Supreme Luncheon
Meat as La Filipina Luncheon Meat at a much cheaper price, profiting from the
goodwill that LFUGC has earned.

TAN submitted a Rejoinder-Affidavit where she repeated her allegations in

the Counter-Affidavit and further argued that LEGASPI is not qualified to institute
the present complaint because she is neither an employee of LFUGC nor did she
have personal knowledge on the alleged goodwill of the trademark-owner. Further,
she also added that the alleged goodwill was never proven, with the brand La
Filipina Luncheon Meat still unfamiliar to the average consumer. The alleged
trademark was also not shown on the labels as a Registered Mark nor does it bear
the symbol ®.

TAN added and discussed several points that allegedly show that she is not
liable for the charges.

First, quoting Section 158 of R.A. 8293,

“Section 158. Damages; Requirement of Notice. – In any suit for infringement, the owner of
the registered mark shall not be entitled to recover profits or damages unless the acts
have been committed with knowledge that such imitation is likely to cause confusion, or
to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice
that his mark is registered by displaying with the mark the words “Registered Mark” or
the letter R within a circle or if the defendant had otherwise actual notice of the
registration.”

she argues that since no disclaimer was made by the registrant, knowledge could
not be attributed to her. According to her, the registrant should have first written a
letter to the possessors of the Supreme Luncheon Meat label and informed them of
the trademark. Further, she adds that the registrant had no originality in combining
the generic words and images and claiming it as already imbedded in the Filipino
consciousness.

Second, citing the Certificate of Registration, she claims that trademark

infringement may only exist if the word “la,” the word “Filipina,” and the image
applied for in the certificate were all present. She alleged that in the present case,
Supreme Luncheon Meat does not use the word “La Filipina” on its label, thus, not all
three components are present.
 Third, TAN asserted that “La Filipina” is still not well known as a brand on
food products. Therefore, there is no liability for Unfair Competition because there
is neither public recognition of the mark nor goodwill yet in the minds of the public.