Samson vs Daway

(GR No 160054-55, July 21, 2004)

Facts:
The petitioner allegedly sold or offers the sale of garment product using the
trademark “Caterpillar” to the prejudice of its previous user, private
respondent in this case. The respondent filed the case to the RTC. The
petitioner contended that the case should be filed with the MTC because
violation of unfair competition is penalized with an imprisonment not
exceeding 6 years under RA 7691.

Issue:
Where do you file a suit for unfair competition?

Held:
The SC held that under Sec 163 of the IPC, actions for unfair competition
shall be brought before the proper courts with appropriate jurisdiction under
existing laws. The law contemplated in Sec 163 of IPC is the Trademark Law.
Sec 27 of Trademark Law states that action for unfair competition shall be
filed with the CFI (now RTC). Since RA 7691 is a general law and IPC in
relation to Trademark law is a special law, the latter shall prevail. Actions for
unfair competition therefore should be filed with the RTC.

Mighty Corporation vs ENJ Gallo Winers

(GR No 154342, July 14, 2004, Corona)

Facts:
Respondent manufacture wines and uses the trademark “Gallo” for its
product. On the other hand, the petitioner is a manufacturer of cigarette and
also uses “Gallo” in its products.

Issue:
Is there infringement?

Held:
At the time the cause of action accrued in this case, the IPC was not yet
enacted so the relevant laws used were the Trademark Law and the Paris
Convention.
The SC held that there was no infringement. The use of the respondent of
the mark “Gallo” for its wine products was exclusive in nature. The court
mentioned two types of confusion in Trademark Infringement:

Confusion of Goods – when an otherwise prudent purchaser is induced to

purchase one product in the belief that he is purchasing another, in which
case defendant’s goods are then brought as the plaintiff’s and its poor
quality reflects badly on the plaintiff’s reputation.
Confusion of Business – wherein the goods of the parties are different but
the defendant’s product can reasonably (though mistakenly) be assumed to
originate from the plaintiff, thus deceiving the public into believing that there
is some connection between the plaintiff and defendant which, in fact, does
not exist.

In determining the likelihood of confusion, the Court must consider:

(a) the resemblance between the trademarks;
(b) the similarity of the goods to which the trademark is attached;
(c) the likely effect on the purchaser; and
(d) the registrant’s express or implied consent and other fair and equitable
considerations.

In this case, the SC employing the dominancy test, concluded that there is
no likelihood of confusion. They materially differ in color scheme, art works
and markings. Further, the two goods are not closely related because he
products belong to different classifications, form, composition and they have
different intended markets or consumers.

Mc Donalds Corp vs LC Big Mak Burger Inc.

(GR No 143993, Aug 18, 2004)

The SC held that the respondent is liable for infringement because it violated
Sec 155.1 of the IPC which stated that any person who shall, without the
consent of the owner of the registered mark use in commerce any
reproduction, counterfeit, copy or colorable imitation of a registered mark or
the same container or a dominant feature thereof in connection with the
sale, offering for sale, distribution, advertising 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.

Addendum:
TEST OF TRADEMARK INFRINGEMENT
1) Dominancy Test – consists in seeking out the main, essential or dominant
features of a mark.
2) Holistic Test – takes stock of the other features of a mark, taking into
consideration the entirety of the marks.

DIFFERENTIATED FROM UNFAIR COMPETITION

1) Cause of action: in infringement, the cause of action is the unauthorized
use of a registered trademark; in unfair competition, it is the passing off of
one’s goods as those of another merchant.
2) Fraudulent intent is not necessary in infringement, but necessary in UC.
3) Registration of trademarks: in infringement, it is a pre-requisite; in UC, it
is not required.
4) Class of goods involved: in infringement, the goods must be of similar
class; in UC, the goods need not be of the same class.

v infringement is a form of unfair competition

REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK

a) Sue for damages (Sec. 156.1);
b) Have the infringing goods impounded (Sec. 156.2);
c) Ask for double damages (Sec. 156.3)
d) Ask for injunction (156.4)
e) Have the infringing goods disposed of outside the channels of commerce
(Sec. 157.1)
f) Have the infringing goods destroyed (Sec. 157.1)
g) File criminal action (Sec. 170);
h) Administrative Sanctions

Smithklein Beckman vs CA
(Aug 14, 2003)

Facts:
Petitioner in this case filed an application for a patent of a drug used to kill
parasites in animals. Tyco Pharma opposed the application for patent
contending that the product of the petitioner proposed to be patented is
substantially the same as their product. The only difference is the use of one
ingredient. Tyco then contended that there is infringement of patent due to
violation of doctrine of equivalents.

Issue:
Is there infringement?

Held:
The SC in defining the “Doctrine of Equivalents” stated that infringement
also takes place when a particular devise appropriates a prior invention by
incorporating its innovative concept and although with some modification
and changes performs substantially the same function in substantially the
same way to achieve substantially the same result.

The SC held that this doctrine does not apply in the instant case because
Tyco Pharma failed to substantiate its claim that the two products works the
same way in fighting parasites in animals. Therefore, there was no
infringement.

Posted by Lawstude at 10:08 AM 0 commented

Labels: Kabatas Komersyal