For anticipation to occur, the prior art must show that each element is found either

expressly or described or under principles of inherency in a single prior art reference or

that the claimed invention was probably known in a single prior art device or practice.
(Kalman v. Kimberly Clark, 218 USPQ 781, 789)”.

It is a settled doctrine that for res judicata to apply, the following requisites must
concur: 1) there must be a prior final judgment or order; 2) the court rendering the
judgment or order must have jurisdiction over the subject matter and over the
parties; 3) the judgment or order must be on the merits; and 4) there must be,
between the two (2) cases, the earlier and the instant, identity of parties, identity of
subject matter, and identity of cause of action.

Registration in the Principal Register is constructive notice of the registrant's claim

of ownership, while registration in the Supplemental Register is merely proof of
actual use of the trademark and notice that the registrant had used or appropriated
it. It is not subject to opposition although it may be cancelled after its issuance.
Registration in the Principal Register is a basis for an action for infringement while
registration in the Supplemental Register is not.

(1) Under Section 4(c) of Rep. Act No. 166 as amended, which apparently is the
basis of the contention of NDC, what is prohibited from being appropriated and
being registered are trade-names consisting of, or comprising, a name identifying
a particular living individual, or the name of a deceased President of the
Philippines. The names of deceased wives of Presidents are not included in the
prohibition. Moreover, Section 4(f) of said Act does not prohibit the registration,
and hence appropriation, of a trade-name that has become distinctive and the
substantial and exclusive use of a trade-name for five years accepted as prima
facie proof that the trade-name has become distinctive. And this Court has said,
in Ang vs. Teodoro, that even a name or phrase not capable of appropriation as
a trade name may, by long and exclusive use by a business with reference
thereto of to its products, acquire a proprietary connotation, such that, to the
purchasing public, the name or phrase becomes associated with the service or
the products of the business, and so it is entitled to protection against unfair
competition.
Goodwill is protected by the law on unfair competition. Goodwill is easily
damaged, and is easily vulnerable to assault, through the brand which
symbolizes it. When a person has established a trade or business in which he
has used a name or device to designate his goods, he will be protected in the
use of the name or device. "Such person has a right to complain when another
adopts this symbol or manner of making of his goods so as to mislead the public
into purchasing the same as and for the goods of the complainant."

To permit NDC to continue using the "Doña" names would be to countenance the
unlawful appropriation of the benefit of a goodwill which De la Rama has
acquired as a result of continued usage and large expense; it would be
tantamount to permitting NDC to grab the reputation or goodwill of the business
of another. We find that the decision of the trial court on this matter is in
accordance with the law on unfair competition.

1. Uy's declaration in his Comment and Memorandum before the Supreme Court
that he has not filed the DAU as mandated by the IP Code is a judicial admission
that he has effectively abandoned or withdrawn any right or interest in his
trademark.
2. The IP Code provides that: The applicant or the registrant shall file a
declaration of actual use of the mark with evidence to that effect, as prescribed
by the Regulations within three (3) years from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be removed from
the Register by the Director.

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 respondent’s 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 DGCI’s
registration of the mark, the same was already being used by the
petitioners, albeit abroad, of which DGCI’s president was fully aware.

YES.
Section 22 of R.A. No. 166, as amended, and Section 155 of R.A. No.
8293 define what constitutes trademark infringement, as follows:

Sec. 22. Infringement, what constitutes. – Any person who shall use,
without the consent of the registrant, any reproduction, counterfeit,
copy or colorable imitation of any registered mark or tradename in
connection with the sale, offering for sale, or advertising of any goods,
business or services on 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 reproduce, counterfeit, copy of colorably imitate any such
mark or tradename and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in
connection with such goods, business, or services, shall be liable to a
civil action by the registrant for any or all of the remedies herein
provided.

"Unfair competition," is now covered by Section 168 of the IP

Code as this Code has expressly repealed R.A. No. 165 and R.A. No.
166, and Articles 188 and 189 of the Revised Penal Code. The law
does not thereby cover every unfair act committed in the course of
business; it covers only acts characterized by "deception or any other
means contrary to good faith" in the passing off of goods and services
as those of another who has established goodwill in relation with these
goods or services, or any other act calculated to produce the same
result.

From jurisprudence, unfair competition has been defined as the

passing off (or palming off) or attempting to pass off upon the public
the goods or business of one person as the goods or business of
another with the end and probable effect of deceiving the public. It
formulated the "true test" of unfair competition: whether the acts of
defendant are such as are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions which prevail in
the particular trade to which the controversy relates.13 One of the
essential requisites in an action to restrain unfair competition is proof
of fraud; the intent to deceive must be shown before the right to
recover can exist.14 The advent of the IP Code has not significantly
changed these rulings as they are fully in accord with what Section
168 of the Code in its entirety provides. Deception, passing
off and fraud upon the public are still the key elements that must be
present for unfair competition to exist.

In the case at bar, R.A. No. 8293 and R.A. No. 166 are special
laws conferring jurisdiction over violations of intellectual property
rights to the Regional Trial Court. They should therefore prevail over
R.A. No. 7691, which is a general law.9 Hence, jurisdiction over the
instant criminal case for unfair competition is properly lodged with the
Regional Trial Court even if the penalty therefor is imprisonment of less
than 6 years, or from 2 to 5 years and a fine ranging from P50, 000.00
to P200, 000.00.

doctrine of equivalents, which implies that the two substances substantially do

the same function in substantially the same way to achieve the same results,
thereby making them truly identical for in spite of the fact that the word
Albendazole does not appear in TrycoPaharma’s letters of patent.
The doctrine of equivalents thus requires satisfaction of the function-means-and-
result test, the patentee having the burden to show that all three components of
such equivalency test are met.

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. Smith
Kline’s 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 principle or mode of operation must be the same or
substantially the same. Smith Kline 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.

Yes. Sec 35 of P.D. 1263, amending portions of RA 165 reads: “GRANT OF

LICENSE.—(1) If the Director finds that a case for the grant of a license under Sec. 34
hereof has been made out, he shall within 180 days from the date the petition was filed,
order the grant of an appropriate license. The order shall state the terms and conditions of
the license which he himself must fix in default of an agreement on the matter manifested
or submitted by the parties during the hearing.” CA found that 2.5% royalty fixed by the
Director 'is just and reasonable.' This is based on Par 3, Sec 35-B, RA 165, as amended
by PD 1263: “A compulsory license shall only be granted subject to the payment of
adequate royalties commensurate with the extent to which the invention is worked.
However, royalty payments shall not exceed 5% of the net wholesale price… If…in an
industrial project… the royalty… shall not exceed 3% of the net wholesale price…”

Applying either the dominancy test or the holistic test, petitioner’s "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondent’s "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words
"SAN FRANCISCO COFFEE" are precisely the dominant features of
respondent’s 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
petitioner’s coffee shops. Petitioner’s 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, respondent’s
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 respondent’s
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.

Under Sec. 55 of The Patent Law a utility model shall not be considered new
if before the application for a patent it has been publicly known or publicly used
in this country or has been described in a printed publication or publications
circulated within the country, or if it is substantially similar to any other utility
model so known, used or described within the country. Respondent Corporation
failed to present before the trial court competent evidence that the utility models
covered by the Letters Patents issued to petitioner were not new.

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 patented 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.

Respondent Corporation failed to present before the trial court a clear,

competent and reliable comparison between its own model and that of
petitioner. Clearly, both petitioners and respondents 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 favour
during the pendency of the main suit for damages resulting from the alleged
infringement.

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 petitioner’s 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 certificates of registration of
trademarks unless their country grants similar rights and privileges to
Filipino citizens pursuant to Section 21-A of R.A. No. 166. This
reciprocity requirement is a condition to file a suit by a foreign
corporation as ruled in Leviton Industries v. Salvador.
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 respondent’s use of the trademark MARK for its
particular cigarette product. The striking dissimilarities are significant
enough to warn any purchaser that one is different from the other. This
is upon considering the entire marking as a whole

We cannot sustain petitioner. Section 7 of RA No. 165, as amended, which is

the law on patents, expressly provides -
Sec. 7. Inventions patentable. Any invention of a new and useful machine,
manufactured product or substance, process or an improvement of any of the
foregoing, shall be patentable.

Further, Sec. 55 of the same law provides –

Sec. 55. Design patents and patents for utility models. - (a) Any new, original
and ornamental design for an article of manufacture and (b) any new model of
implements or tools or of any industrial product or of part of the same, which
does not possess the quality of invention, but which is of practical utility by
reason of its form, configuration, construction or composition, may be
protected by the author thereof, the former by a patent for a design and the
latter by a patent for a utility model, in the same manner and subject to the
same provisions and requirements as relate to patents for inventions insofar
as they are applicable except as otherwise herein provided.

The element of novelty is an essential requisite of the patentability of an

invention or discovery. If a device or process has been known or used by others
prior to its invention or discovery by the applicant, an application for a patent
therefor should be denied; and if the application has been granted, the court, in a
judicial proceeding in which the validity of the patent is drawn in question, will hold
it void and ineffective.[2] It has been repeatedly held that an invention must possess
the essential elements of novelty, originality and precedence, and for the patentee to
be entitled to the protection the invention must be new to the world.[3]

YES.

The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is

imprinted in a circular manner on the side of its rubber shoes. In the
same manner, the trademark of petitioner which reads “CONVERSE
CHUCK TAYLOR” is imprinted on a circular base attached to the side of
its rubber shoes. The determinative factor in ascertaining whether or
not marks are confusingly similar to each other “is not whether the
challenged mark would actually cause confusion or deception of the
purchasers but whether the use of such mark would likely
cause confusion or mistake on the part of the buying public. It would
be sufficient, for purposes of the law that the similarity between the
two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the new brand for it.” Even if
not all the details just mentioned were identical, with the general
appearance alone of the two products, any ordinary, or even perhaps
even [sic] a not too perceptive and discriminating customer could be
deceived … “
But even assuming, arguendo, that the trademark sought to be
registered by respondent is distinctively dissimilar from those of the
petitioner, the likelihood of confusion would still subsists, not on the
purchaser’s perception of the goods but on the origins thereof. By
appropriating the word “CONVERSE,” respondent’s products are likely
to be mistaken as having been produced by petitioner. “The risk of
damage is not limited to a possible confusion of goods but also
includes confusion of reputation if the public could reasonably assume
that the goods of the parties originated from the same source.
YES.

The Convention of Paris for the Protection of Industrial Property,

otherwise known as the Paris Convention, is a multilateral treaty that
seeks to protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade names
and indications of source or appellations of origin, and at the same
time aims to repress unfair competition. The Convention is essentially
a compact among various countries which, as members of the Union,
have pledged to accord to citizens of the other member countries
trademark and other rights comparable to those accorded their own
citizens by their domestic laws for an effective protection against
unfair competition. Art. 6bis is a self-executing provision and does not
require legislative enactment to give it effect in the member country.
It may be applied directly by the tribunals and officials of each
member country by the mere publication or proclamation of the
Convention, after its ratification according to the public law of each
state and the order for its execution.
The Philippines and the United States of America have acceded to the
WTO Agreement. Conformably, the State must reaffirm its
commitment to the global community and take part in evolving a new
international economic order at the dawn of the new millennium.

NO, Infringement is determined by a test of dominancy. If the

competing trademark contains the main or essential or dominant
features of another and confusion and deception is likely to result,
infringement takes place. A closer look at the trademark of both
companies will show that the dominant features of each absolutely
bear no similarity to each other. SMC’s dominant trademark is the
name of the product, “San Miguel Pale Pilsen” written in white Gothic
letters with elaborate serifs at the beginning and end of the letters “S”
and “M” on an amber background while ABI’s is the name “Beer Pale
Pilsen” with the word Beer written in large amber letters, larger than
any of the letter found in SMC label.

The word “pale pilsen” on ABI’s trademark does not constitute

trademark infringement for it is a generic word descriptive of the color
of a type of beer. No one may appropriate generic or descriptive words
for they belong to the public domain.
ABI is likewise not guilty of unfair competition for unfair competition is
the employment of deception or any other means contrary to good
faith by which a person shall pass off the goods manufactured by him
for those of another who has already established goodwill for his
similar goods. The universal test for this is whether the public is likely
to be deceived. Actual or probable deception and confusion on the part
of the customers by reason of defendant’s practices must appear.
However, this is unlikely to happen in the case at bar for consumers
generally order beer by brand. Also, the fact that ABI also uses amber-
colored steinie bottles cannot constitute unfair competition for ABI did
not copy SMC’s bottle. SMC did not invent but merely borrowed the
steinie bottle from abroad. Likewise, amber is the most effective color
in preventing transmission of light thus providing maximum protection
to beer. 320 ml is likewise the standard prescribed under Metrication
Circular No. 778. The fact that it is the first to use the steinie bottle
does not give SMC a vested right to use it to the exclusion of everyone
else. Nobody can acquire any exclusive right to market articles
supplying the simple human needs in containers or wrappers of the
general form, size and character commonly and immediately used in
marketing such articles.

There is no confusing similarity between the competing beers therefore

ABI neither infringed SMC’s trademark nor did it commit unfair
competition.

The essential element of infringement under R.A. No. 8293 is that the infringing
mark is likely to cause confusion. In determining similarity and likelihood of
confusion, jurisprudence has developed tests the Dominancy Test and the
Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration
are 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.16
In contrast, the Holistic or Totality Test necessitates 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 so that the observer may draw conclusion on whether one is
confusingly similar to the other.17

While respondent’s shoes contain some dissimilarities with petitioner’s shoes,

this Court cannot close its eye to the fact that for all intents and purpose,
respondent had deliberately attempted to copy petitioner’s mark and overall
design and features of the shoes. Let it be remembered, that defendants in cases
of infringement do not normally copy but only make colorable changes.28The
most successful form of copying is to employ enough points of similarity to
confuse the public, with enough points of difference to confuse the courts.29