Mighty Corporation and La Campana Fabrica
de Tobaco, Inc. v. E. & J. Gallo Winery and
Andersons Group, Inc.
G.R. No. 154342, July 14, 2004
FACTS:
On March 12, 1993, respondents sued
petitioners in the RTC-Makati for trademark and
trade name infringement and unfair
competition, with a prayer for damages and
preliminary injunction.
They claimed that petitioners adopted
the Gallo trademark to ride on Gallo Winery’s
and Gallo and Ernest & Julio Gallo trademark’s
established reputation and popularity, thus
causing confusion, deception and mistake on
the part of the purchasing public who had
always associated Gallo and Ernest and Julio &
Gallo trademarks with Gallo Winery’s wines.
In their answer, petitioners alleged,
among other affirmative defenses that:
petitioners Gallo cigarettes and Gallo Winery’s
wine were totally unrelated products. To wit:
1. Gallo Winery’s GALLO trademark
registration certificates covered wines only, and
not cigarettes;
2. GALLO cigarettes and GALLO wines were
sold through different channels of trade;
3. the target market of Gallo Winery’s wines
was the middle or high-income bracket while
Gallo cigarette buyers were farmers, fishermen,
laborers and other low-income workers;
4. the dominant feature of the Gallo cigarette
was the rooster device with the manufacturer’s
name clearly indicated as MIGHTY
CORPORATION, while in the case of Gallo
Winery’s wines, it was the full names of the
founders-owners ERNEST & JULIO GALLO or just
their surname GALLO;
On April 21, 1993, the Makati RTC denied, for
lack of merit, respondent’s prayer for the
issuance of a writ of preliminary injunction.
On August 19, 1993, respondent’s motion for
reconsideration was denied.
On February 20, 1995, the CA likewise
dismissed respondent’s petition for review on
certiorari.
After the trial on the merits, however, the
Makati RTC, on November 26, 1998, held
petitioners liable for, permanently enjoined
from committing trademark infringement and
unfair competition with respect to the GALLO
trademark.
On appeal, the CA affirmed the Makati RTC’s
decision and subsequently denied petitioner’s
motion for reconsideration.
ISSUE:
Whether GALLO cigarettes and GALLO wines
were identical, similar or related goods for the
reason alone that they were purportedly forms
of vice.
HELD: Wines and cigarettes are not identical,
similar, competing or related goods.
In resolving whether goods are related,
several factors come into play:
- the business (and its location) to which
the goods belong
- the class of product to which the good
belong
- the product’s quality, quantity, or size,
including the nature of the package,
wrapper or container
 - the nature and cost of the articles
- the descriptive properties, physical
attributes or essential characteristics
with reference to their form,
composition, texture or quality
- the purpose of the goods
- whether the article is bought for
immediate consumption, that is, day-to-
day household items
- the field of manufacture
- the conditions under which the article is
usually purchased and
- the articles of the trade through which
the goods flow, how they are
distributed, marketed, displayed and
sold.
The test of fraudulent simulation is to the
likelihood of the deception of some persons in
some measure acquainted with an established
design and desirous of purchasing the
commodity with which that design has been
associated. The simulation, in order to be
objectionable, must be as appears likely to
mislead the ordinary intelligent buyer who has a
need to supply and is familiar with the article
that he seeks to purchase.
The petitioners are not liable for trademark
infringement, unfair competition or damages.
WHEREFORE, petition is granted.
Pearl & Dean (Phil.) Inc. v. Shoemart, Inc. and
North Edsa Marketing Inc.,
G.R. No. 148222, August 15, 2003
FACTS:
Pearl and Dean is a corporation in the
manufacture of advertising display units also
known as light boxes, which were manufactured
by Metro Industrial Services. A copyright
Registration was obtained in 1981. These were
marketed in the name of "Poster Ads". They
also applied for a registration of trademark with
the Bureau of Patents in 1983, but was only
approved in 19988. In 1985, petitioner had n
agreement with respondent Shoemart Inc (SMI)
to install these light boxes in their Makati and
Cubao branch, Only the Makati branch was able
to sigh the agreement. In 1986, the contract
was rescinded unilaterally by SMI, and instead
contracted with Metro Industrial Services. They
installed these lightboxes in different SM city
branches, including Cubao and Makati, with
association with North Edsa Marketing Inc
(NEMI), SMI's sister company. Petitioner
requested SMI and NEMI to put down their
installations of the light boxes, and payment of
compensatory damages worth P20M. Claiming
that respondents failed to comply, they filed a
case for infringement of trademark and
copyright, unfair competition and damages. RTC
ruled in favor of petitioner, but CA reversed.
ISSUES:
(1) Whether there was a copyright infringement
(2) Whether there was a patent infringement
(3) Whether there was a trademark
infringement
(4) Whether there was unfair competition
RULING: No to all.
(1) Copyright is a statutory right, subject to the
terms and conditions specified in the statute.
Therefore, it can only cover the works falling
within the statutory enumeration or
description. Since the copyright was classified
under class "O" works, which includes "prints,
pictorial illustrations, advertising copies, labels,
tags and box wraps," and does not include the
light box itself. A lightbox, even admitted by the
president of petitioner company, was neither a
literary nor an artistic work but an engineering
or marketing invention, thus not included under
a copyright.
(2) Petitioner was not able to secure a patent
for its lightboxes, and cannot legally prevent
anyone from manufacturing or commercially
using the same. Patent has a three-fold
purpose: a) to foster and reward invention; b)
promotes disclosures of invention and permit
public to use the same upon expiration; c)
stringent requirements for patent protection to
ensure in the public domain remain there for
free use of the public. Since petitioner was not
able to go through such examination, it cannot
exclude others from manufacturing, or selling
such lightboxes. No patent, no protection.
(3) The certificate of registration issued by the
Director of Patents gives exclusive right to use
its own symbol only to the description specified
in the certificate. It cannot prevent others to
use the same trademark with a different
description.
(4) "Poster Ads" is a general term that cannot
be associated specifically to Pearl and Dean,
thus it cannot be considered to use such term
to be unfair competition against the petitioner.
Elidad C. Kho vs. Court of Appeals, Summerville
General Merchandising Company and Ang
Tiam Chay
G.R. No. 115758, March 19, 2002, 379 SCRA
410
FACTS: Petitioner‘s allegations are that they are
doing business under the name and style of KEC
Cosmetics Laboratory, registered owner of Chin
Chun Su and oval facial cream container/case,
and alleges that she also has patent rights on
Chin Chun Su and Device and Chin Chun Su
Medicated Cream after purchasing the same
from Quintin Cheng, the registered owner
thereof in the supplemental register of the
Philippine Patent Office and that Summerville
advertised and sold petitioner’s cream products
under the brand name Chin Chun Su, in similar
containers that petitioner uses, thereby
misleading the public, and resulting in the
decline in the petitioner’s business sales and
income; and, that the respondents should be
enjoined from allegedly infringing on the
copyrights and patents of the petitioner.
The respondents, on the other hand, alleged as
their defense that (1) Summerville is the
exclusive and authorized importer, re-packer
and distributor of Chin Chun Su products
manufactured by Shun Yi factory of Taiwan, (2)
that the said Taiwanese manufacturing
company authorized Summerville to register its
trade name Chin Chun Cu Medicated Cream
with the Philippine Patent office and Other
appropriate governmental agencies; (3) that
KEC Cosmetics Laboratory of the petitioner
obtained the copyrights through
misrepresentation and falsification; and, (4)
that the authority of Quintin Cheng, assignee of
the patent registration certificate, to distribute
and market Chin Chun Su products in the
Philippines had already terminated by the said
Taiwanese manufacturing company.
ISSUE:
Whether or not Kho has the sole right using the
package of Chin Chun Su products
RULING: new, involves an inventive step and is industrial
applicable.
Petitioner has no right to support her claim for
the exclusive use of the subject trade name and
its container. The name and container of a
beauty cream product are proper subjects of a
trademark in as much as the same falls squarely
within its definition. In order to be entitled to
exclusively use the same in the sale of the
beauty cream product, the user must
sufficiently prove that she registered or used it
before anybody else did. The petitioner’s
copyright and patent registration of the name
and container would not guarantee her right to
exclusive use of the same for the reason that
they are not appropriate subjects of the said
intellectual rights. Consequently, a preliminary
injunction order cannot be issued for the reason
that the petitioner has not proven that she has
a clear right over the said name and container
to the exclusion of others, not having proven
that she has registered a trademark thereto or
used the same before anyone did.

NOTE:

Trademark, copyright, and patents are different

intellectual property rights that cannot be
interchanged with one another. A trademark is
any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of
an enterprise and shall include stamped or
marked container goods. In relation thereto, a
trade name means the name or designation
identifying or distinguishing an enterprise.
Meanwhile, the scope of copyright is confined
to literary and artistic works which are original
intellectual creations in the literary and artistic
domain protected from the moment of their
creation. Patentable inventions, on the other
hand, refer to any technical solution of a
problem in any field of human activity which is