Gemma Ong A.K.A. Maria Teresa Gemma Catacutan v.

People of the Philippines

Facts: Gemma Ong was convicted on September 2003 by the trial court of Manila for
Infringement under Sec. 155 in relation to Sec. 170 of R.A. 8293 or the Intellectual Property
Code. It was established as facts that Gemma Ong was engaged in the distribution, sale and
offering for sale of counterfeit Marlboro cigarretes which caused confusion and deception to
public and without permit or authority from the Telengtan Brothers and Sons Inc., the
exclusive manufacturer of Marlboro cigarette in the Philippines and from Philip Morris
Products, Inc. (PMPI) which is the registered owner and proprietor of the MARLBORO
trademark. The decision of the RTC Manila was affirmed by the Court of Appeals and hence
this appeal by certiorari by Gemma Ong praying that the decision of RTC and CA be reverse
and set aside.
Issue: Whether or not Gemma Ong, setting aside the issue of alleged mistaken identity, is
guilty beyond reasonable doubt of Infringement under the Intellectual Property Code.
Ruling: The Supreme Court affirmed the decision of the CA.
In McDonald's Corporation and McGeorge Food Industries, Inc. V. L.C. Big Mak Burger,
Inc., Supreme Court held:
To establish trademark infringement, the following elements must be shown:
(1.) The validity of plaintiff's mark;
(2.) The plaintiff's ownership of the mark; and
(3.) The use of the mark or its colorable imitation by the alleged infringer results in
"likelihood of confusion." Of these, it is the element of likelihood of confusion that is
gravamen of trademark infringement.
A mark is valid if it is distinctive and not barred from registration. Once registered, not only
the mark validity, but also the registrant's ownership of the mark is prima facie presumed.
Anent the element of confusion, both the RTC and the CA have correctly held that the
counterfeit cigarettes seized from Gemma's possession were intended to confuse and deceive
the public as to the origin of the cigarettes intended to be sold, as they not only bore PMPI's
mark, but they were also packed almost exactly as PMPI's products.
The prosecution was able to establish that the trademark "Marlboro" was not only valid for
being neither generic nor descriptive, it was also exclusively owned by PMPI, as evidenced
by the certificates of registration issued by the Intellectual Property Office of the Department
of Trade and Industry.