Republic of the Philippines SUPREME COURT Manila EN BANC

G.R. No. L-26557 February 18, 197 !MER"C!N #"RE $ C!%LE COMP!N&, petitioner, vs. '"RECTOR OF P!TENTS a() CENTR!L %!N!*!# "N'USTR"ES, respondents. Sotero H. Laurel and Florencio Z. Sioson for petitioner. Celso P. Mariano for respondents.

RE&ES, +.%.L., J.: Appeal filed by the American Wire Cable Company, o!ner of the re"istered trademar# $%RA&'E( for electric !ires, )uestionin" the correctness of the decision of the $irector of Patents *in +nter Partes Case No. ,-./ holdin" that the label $0NA&'E( and $evice for electric !ires, sou"ht to be re"istered by the Central Banaha! +ndustries, +nc., is not similar to herein appellant1s patented mar#. 2n , 3une 4-5,, Central Banaha! +ndustries, +nc., applied !ith the $irector of Patents for re"istration of the trademar# $0NA&'E( and $evice to be used in connection !ith electric !ires, class ,., !hich mar# applicant alle"edly had been usin" since ,- March 4-5,. 6he American Wire and Cable Co., +nc., another domestic corporation and authori7ed user since 4. April 4-89 of the re"istered trade mar# $%RA&'E( and :lobe representation, for electric !ires, apparatus, machines and supplies, class ,., opposed the application on the "round that applicant1s use of the trade mar# $0NA&'E( !ould cause confusion or result in mista#e to purchasers intendin" to buy $%RA&'E( electric !ires and "oods, the mar# bein" re"istered alle"edly havin" practically the same spellin", pronunciation and sound, and coverin" the same "ood, as that of the opposer. Besides, opposer contended that there has been no continuous use in commerce of the applicant1s mar#. After due hearin", the $irector of Patents rendered decision holdin" the applicant1s mar# $0NA&'E( not to be similar to the previously re"istered trademar# $%RA&'E(. Conse)uently, the application of Central Banaha! +ndustries for re"istration of $0NA&'E( !as "iven due course and the opposition thereto by American Wire Cable Company dismissed. 6he latter interposed the present appeal. 6he issue to be resolved in this proceedin" is simple; !hether or not the mar# $0NA&'E( and $evice is re"istrable as label for electric !ires, class ,., considerin" that the trademar# $%RA&'E( and :lobe representation also for electric !ires, machines and supplies under class ,., has been re"istered more than < years earlier. +n rulin" in favor of the herein application, the $irector of Patents said; ... 6he applicant1s trademar# is a composite mar# consistin" of the !ord $0NA&'E( printed in small letters of the En"lish alphabet e=cept that letter >$> is capitali7ed, !ithin a fanciful device, on top of !hich is the encircled initials, in do!n!ard se)uence, of the Respondent1s corporate name, and ?uttin" out on t!o sides of the circle are bolts of li"htnin", symbolic of electricity. 2n the other hand, 2pposer1s trademar# is $%RA&'E( in Capitali7ed print, e=cept that one cross piece of the letter ( is in the form of a bolt of li"htnin". 6he !ord slants sli"htly up!ard, traversin" the center of a fi"ure of the earth or "lobe. Resortin" no! to the semantics of the !ords, it is clear that both mar#s are suffi=ed by the !ord &'E(. 6he !ord appears in any dictionary havin" as common meanin" >to bend.> +n Webster1s +nternational $ictionary, it is used by the British on electric cord. @o!ever, one mar# *Respondent1s/ is prefi=ed !ith $0NA su""estin" po!er. +t is not in itself a root!ord but it has been commonly associated !ith any source of po!er. At most, it could have been derived from the :ree# !ord >$ynamis> and, "enerally, the root !ords commonly derived therefrom are 11dynam11 and >dynamo>. 6he other *2pposer1s/ is prefi=ed !ith $%RA, su""estin" durability, stren"th and endurance. Based on the fore"oin" comparisons, the trademar#s of the parties are different in appearance, meanin", sound and connotation and hence, are not confusin"ly similar. 6he pertinent la!, Republic Act 455, as amended, on re"istrability of trademar#s, prescribes; AEC. <. B 6he o!ner of a trademar#, trade name or serviceCmar# used to distin"uish his "oods, business or services from the "oods, business or services of others shall have the ri"ht to re"ister the same, unless it; === === === *d/ Consists of or comprises a mar# or trade name !hich so resembles a mar# or tradeCname re"istered in the Philippines by another and not abandoned, as to be likely, !hen applied to or used in connection !ith the "oods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers. *Emphasis supplied/ +t is clear from the aboveC)uoted provision that the determinative factor in a contest involvin" re"istration of trade mar# is not !hether the challen"ed mar# !ould actually cause confusion or deception of the purchasers but !hether the use of such mar# !ould likely cause confusion or mista#e on the part of the buyin" public. +n short, to constitute an infrin"ement of an e=istin" trademar# patent and !arrant a denial of an application for re"istration, the la! does not re)uire that the competin" trademar#s must be so identical as to produce actual error or mista#eD it !ould be sufficient, for purposes of the la!, that the similarity bet!een the t!o labels is such that there is a possibility or li#elihood of the purchaser of the older brand mista#in" the ne!er brand for it.

6he )uestion is, !hen is a trademar# li#ely to confuse or cause the public to mista#e one for anotherE Earlier rulin"s of the Court seem to indicate its reliance on the dominancy test or the assessment of the essential ordominant features in the competin" labels to determine !hether they are confusin"ly similar.1 2n this matter, the Court said; +t has been consistently held that the )uestion of infrin"ement of a trademar# is to be determined by the test ofdominancy. Aimilarity in si7e, form, and color, !hile relevant, is not conclusive. +f the competin" trademar# contains the main or essential or dominant features of another, and confusion and deception is li#ely to result, infrin"ement ta#es place. $uplication or imitation is not necessary, nor is it necessary that the infrin"in" label should su""est an effort to imitate *C. Neilman Bre!in" Co. vs. +ndependent Bre!in" Co., 4-4 &. <9-, <-8, citin" Ea"le White 'ead Co. vs. Pflu"h FCCG 49. &ed. 8H-/. 6he )uestion at issue in cases of infrin"ement of trademar#s is !hether the use of the mar#s involved !ould be li#ely to cause confusion or mista#es in the mind of the public or deceive purchasers.> *:o 6ion" vs. $irector of Patents, -8 Phil. 4, cited in 'im @oa vs. $irector of Patents, 4.. Phil. ,4</.2 +n fact, even their similarity in sound is ta#en into consideration, !here the mar#s refer to merchandise of the same descriptive properties, for the reason that trade idem sonans constitutes a violation of trade mar# patents. , 6hus, in he case of Marvex Commercial Co. vs. Ha pia ! Co."- the re"istration of the trademar# >'ionpas> for medicated plaster !as denied for bein" confusin"ly similar in sound !ith >Aalonpas>, a re"istered mar# also for medicated plaster, the Court sayin"; 6!o letters of >AA'2NPAA> are missin" in >'+2NPAA> the first letter a and the letter s. Be that as it may, !hen the t!o !ords are pronounced, the sound effects are confusin"ly similar. And !here "oods are advertised over the radio, similarity in sound is of especial si"nificance *Co 6ion" Aa vs. $irector of Patents, -8 Phil. 4, citin" Nims, 6he 'a! of %nfair Competition and 6rademar#s, <th ed., vol. ,, pp. 5H9C5H-/. >6he importance of this rule is emphasi7ed by the increase of radio advertisin" in !hich !e are deprived of help of our eyes and must depend entirely on the ear *2perators, +nc. vs. $irector of Patents, supra./ Alon" the same line are the rulin"s denyin" re"istration of a mar# containin" the picture of a fish *BaI"us/, as label for soy sauce, for bein" similar to another re"istered brand of soy sauce that bears the picture of the fish carpD 5 or that of the mar# bearin" the picture of t!o roosters !ith the !ord >Bantam>, as label for food seasonin" *vetsin/, !hich !ould confuse the purchasers of the same article bearin" the re"istered mar# >@en Brand> that features the picture of a hen.6 6he present case is "overned by the principles laid do!n in the precedin" cases. 6he similarity bet!een the competin" trademar#s, $%RA&'E( and $0NA&'E(, is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference e=ists only in t!o out of the ei"ht literal elements of the desi"nations. Coupled !ith the fact that both mar#s cover insulated fle=ible !ires under class ,.D that both products are contained in bo=es of the same material, color, shape and si7eD that the dominant elements of the front desi"ns are a red circle and a dia"onal 7i"7a" commonly related to a spar# or flash of electricityD that the bac# of both bo=es sho! similar circles of bro#en lines !ith arro!s at the center pointin" out!ard, !ith the identical le"end >Cut 2ut Rin"> >$ra! &rom +nside Circle>, no difficulty is e=perienced in reachin" the conclusion that there is a deceptive similarity that !ould lead the purchaser to confuse one product !ith the other. 6he $irector of Patents has predicated his decision mostly on the semantic difference and connotation of the prefi=es >$ura> and >$yna> of the competin" trademar#s, unfortunately for"ettin" that the buyers are less concerned !ith the etymolo"y of the !ords as !ith their sound and the dominant features of the desi"n. 2f course, as pointed out in the decision no! on appeal there are some differences in the mar# on the front portion of the bo=. But they pale into insi"nificance in vie! of the close resemblance in the "eneral appearance of the bo= and the tradenames of the articles. +ndeed, measured a"ainst the dominantCfeature standard, applicant1s mar# must be disallo!ed. &or, undeniably, the dominant and essential feature of the article is the trademar# itself. %nli#e in the case of commodities that are ordinarily pic#ed up by the purchaser himself from the "rocery or mar#et counters, electric !ires are purchased not by their appearance but by the si7e *volta"e/ and len"th and, most importantly, by brand. +t is even !ithin layman1s #no!led"e that different brands of !ire have different characteristics and propertiesD and for an essential buildin" item as electric !ires and supplies, the o!ner of the buildin" !ould not dare ris# his property, perhaps his life, on an un#no!n or untested brand. @e !ould only demand for !hat is reco"ni7ed to be the best. Relyin" on the doctrine enunciated in the Etepha case7 and the earlier rulin" in Lim Hoa vs. #irector of Patents,8applicantCappellee contends that the $0NA&'E( mar# !ould not confuse or deceive the buyers and subscribers of the $%RA&'E( brand, because electrical !ires are of "reat value and the purchasers thereof are "enerally intelli"ent B the architects, en"ineers and buildin" contractors. +t must be reali7ed, ho!ever, that e=cept perhaps in bi" constructions, the desi"nin" architect or en"ineer, or the contractor !ho !ill underta#e the !or# of buildin", does not himself purchase or place the order for the purchase of the materials to be used therein. 6he tas# is oftentimes dele"ated to another. Nor are said technical men the ones personally layin" do!n the !irin" system in the buildin" that they could possibly chec# on !hether or not the correct !ires are bein" used. Ao that even if the en"ineer or contractor !ill specify in the bill of materials the particular brand of !ires needed, there is no certainty that the desired product !ill be ac)uired. &or, unli#e the pharmacists or dru""ists, the dispensers of hard!are or electrical supplies are not "enerally #no!n to pay as much concern to the brand of articles as#ed for by the customer and of a person !ho #no!s the name of the brand but is not ac)uainted !ith it is appearance, the li#elihood of the $0NA&'E( product bein" mista#en for $%RA&'E( is not remote. 2f course, as in all other cases of colorable imitations, the unans!ered riddle is !hy, of the millions of terms and combinations of letters and desi"ns available, the appellee had to choose those so closely similar to another1s trademar# if there !as no intent to ta#e advanta"e of the "ood!ill "enerated by the other mar#. &2R 6@E &2RE:2+N: C2NA+$ERA6+2NA, the decision appealed from is hereby set aside, and the application for re"istration of the trademar# $0NA&'E( for electric !ires, class ,., is ordered denied. No costs. Concepcion" C.$." #i%on" Makalintal" Zaldivar" Sanche%" Castro Fernando" &arredo and 'illamor" $$." concur. (eehankee" $." took no part.

Republic of the Philippines

SUPREME COURT Manila 6@+R$ $+J+A+2N

G.R. No. 91,,2 +u.y 16, 199, P*"L"P MORR"S, "NC., %ENSON $ *E'GES /C!N!'!0, "NC., !N' F!%R"1UES OF T!%!C REUN"ES, S.!., petitioners vs. T*E COURT OF !PPE!LS !N' FORTUNE TO%!CCO CORPOR!T"ON, respondents. )uasha" *sperilla" *ncheta" Pe+a ! ,olasco La -ffice for petitioners. (eresita .andionco/-ledan for private respondent.

MELO, J.: +n the petition before us, petitioners Philip Morris, +nc., Benson and @ed"es *Canada/, +nc., and &abri)ues of 6abac Reunies, A.A., are ascribin" !himsical e=ercise of the faculty conferred upon ma"istrates by Aection 5, Rule 89 of the Revised Rules of Court !hen respondent Court of Appeals lifted the !rit of preliminary in?unction it earlier had issued a"ainst &ortune 6obacco Corporation, herein private respondent, from manufacturin" and sellin" >MARK> ci"arettes in the local mar#et. Ban#in" on the thesis that petitioners1 respective symbols >MARK J++>, >MARK 6EN>, and >'ARK>, also for ci"arettes, must be protected a"ainst unauthori7ed appropriation, petitioners t!ice solicited the ancillary !rit in the course the main suit for infrin"ement but the court of ori"in !as unpersuaded. Before !e proceed to the "enerative facts of the case at bar, it must be emphasi7ed that resolution of the issue on the propriety of liftin" the !rit of preliminary in?unction should not be construed as a pre?ud"ment of the suit belo!. A!are of the fact that the discussion !e are about to enter into involves a mere interlocutory order, a discourse on the aspect infrin"ement must thus be avoided. With these caveat, !e shall no! shift our attention to the events !hich spa!ned the controversy. As averred in the initial pleadin", Philip Morris, +ncorporated is a corporation or"ani7ed under the la!s of the Atate of Jir"inia, %nited Atates of America, and does business at 4.. Par# Avenue, Ne! 0or#, Ne! 0or#, %nited Atates of America. 6he t!o other plaintiff forei"n corporations, !hich are !hollyCo!ned subsidiaries of Philip Morris, +nc., are similarly not doin" business in the Philippines but are suin" on an isolated transaction. As re"istered o!ners >MARK J++>, >MARK 6EN>, and >'ARK> per certificates of re"istration issued by the Philippine Patent 2ffice on April ,5, 4-HL, May ,9, 4-5<, and March ,8, 4-5<, plaintiffsCpetitioners asserted that defendant &ortune 6obacco Corporation has no ri"ht to manufacture and sell ci"arettes bearin" the alle"edly identical or confusin"ly similar trademar# >MARK> in contravention of Aection ,, of the 6rademar# 'a!, and should, therefore, be precluded durin" the pendency of the case from performin" the acts complained of via a preliminary in?unction *p. H8, Court of Appeals 0ollo in ACC:.R. AP No. 4L4L,/. &or its part, &ortune 6obacco Corporation admitted petitioners1 certificates of re"istration !ith the Philippine Patent 2ffice sub?ect to the affirmative and special defense on mis?oinder of party plaintiffs. Private respondent alle"ed further that it has been authori7ed by the Bureau of +nternal Revenue to manufacture and sell ci"arettes bearin" the trademar# >MARK>, and that >MARK> is a common !ord !hich cannot be e=clusively appropriated *p.489, Court of Appeals 0ollo in A.C.C:.R. AP No. 4L4L,/. 2n March ,9, 4-9L, petitioners1 prayer for preliminary in?unction !as denied by the Presidin" 3ud"e of Branch 455 of the Re"ional 6rial Court of the National Capital 3udicial Re"ion stationed at Pasi", premised upon the follo!in" propositions; Plaintiffs admit in para"raph , of the complaint that >. . . they are not doin" business in the Philippines and are suin" on an isolated transaction . . .>. 6his simply means that they are not en"a"ed in the sale, manufacture, importation, e=porFtGation and advertisement of their ci"arette products in the Philippines. With this admission, defendant as#s; >. . . ho! could defendant1s >MARK> ci"arettes cause the former >irreparable dama"e> !ithin the territorial limits of the PhilippinesE> Plaintiffs maintain that since their trademar#s are entitled to protection by treaty obli"ation under Article , of the Paris Convention of !hich the Philippines is a member and ratified by Resolution No. 5- of the Aenate of the Philippines and as such, have the force and effect of la! under Aection 4,, Article (J++ of our Constitution and since this is an action for a violation or infrin"ement of a trademar# or trade name by defendant, such mere alle"ation is sufficient even in the absence of proof to support it. 6o the mind of the Court, precisely, this is the issue in the main case to determine !hether or not there has been an invasion of plaintiffs1 ri"ht of property to such trademar# or trade name. 6his claim of plaintiffs is disputed by defendant in para"raphs 5 and H of the Ans!erD hence, this cannot be made a basis for the issuance of a !rit of preliminary in?unction. 6here is no dispute that the &irst Plaintiff is the re"istered o!ner of trademarF#G >MARK J++> !ith Certificate of Re"istration No. 49H,L, dated April ,5,4-HL !hile the Aecond Plaintiff is li#e!ise the re"istered o!ner of trademar# >MARK 6EN> under Certificate of Re"istration No. 444<H, dated May ,9, 4-5L and the 6hird Plaintiff is a re"istrant of trademar# >'ARK> as sho!n by Certificate of Re"istration No. 4.-8L dated March ,L, 4-5<, in addition to a pendin" application for re"istration of trademar# >MARK J++> filed on November ,4, 4-9. under Application Aerial No. <L,<L, all in the Philippine Patent 2ffice. +n same the manner, defendant has a pendin" application for re"istration of the trademar# >'ARK> ci"arettes !ith the Philippine Patent 2ffice under Application Aerial No. <<..9. $efendant contends that since plaintiffs are >not doin" business in the Philippines> coupled the fact that the $irector of Patents has not denied their pendin" application for re"istration of its trademar# >MARK>, the "rant of a !rit of preliminary in?unction is premature. Plaintiffs contend that this act*s/ of defendant is but a subterfu"e to "ive semblance of "ood faith intended to deceive the public and patroni7ers into buyin" the products and create the impression that defendant1s "oods are identical !ith or come from the same source as plaintiffs1 products or that the defendant is a licensee of plaintiffs !hen in truth and in fact the former is not. But the fact remains that !ith its pendin" application, defendant has embar#ed in the manufacturin", sellin", distributin" and advertisin" of >MARK> ci"arettes. 6he )uestion of "ood faith or bad faith on the part of defendant

are matters !hich are evidentiary in character !hich have to be proven durin" the hearin" on the meritsD hence, until and unless the $irector of Patents has denied defendant1s application, the Court is of the opinion and so holds that issuance a !rit of preliminary in?unction !ould not lie. 6here is no )uestion that defendant has been authori7ed by the Bureau of +nternal Revenue to manufacture ci"arettes bearin" the trademar# >MARK> *'etter of Ruben B. Ancheta, Actin" Commissioner addressed to &ortune 6obacco Corporation dated April L, 4-94, mar#ed as Anne= >A>, defendant1s >2PP2A+6+2N, etc.> dated Aeptember ,<, 4-9,/. @o!ever, this authority is )ualified . . . that the said brands have been accepted and re"istered by the Patent 2ffice not later than si= *5/ months after you have been manufacturin" the ci"arettes and placed the same in the mar#et.> @o!ever, this "rant >. . . does not "ive you protection a"ainst any person or entity !hose ri"hts may be pre?udiced by infrin"ement or unfair competition in relation to your indicated trademar#sMbrands>. As aforestated, the re"istration of defendant1s application is still pendin" in the Philippine Patent 2ffice. +t has been repeatedly held in this ?urisdiction as !ell as in the %nited Atates that the ri"ht or title of the applicant for in?unction remedy must be clear and free from doubt. Because of the disastrous and painful effects of an in?unction, Courts should be e=tremely careful, cautious and conscionable in the e=ercise of its discretion consistent !ith ?ustice, e)uity and fair play. 6here is no po!er the e=ercise of !hich is more delicate !hich re)uires "reater caution, deliberation, and sound discretion, or *!hich is/ more dan"erous in a doubtful case than the issuin" of an in?unctionD it is the stron" arm of e)uity that never ou"ht to be e=tended unless to cases of "reat in?ury, !here courts of la! cannot afford an ade)uate or commensurate remedy in dama"es. 6he ri"ht must be clear, the in?ury impendin" or threatened, so as to be averted only by the protectin" preventive process of in?unction. *Bonaparte v. Camden, etc. N. Co., L &. Cas. No. 4, 54H, Bald!. ,.8, ,4H./ Courts of e)uity constantly decline to lay do!n any rule !hich in?unction shall be "ranted or !ithheld. 6here is !isdom in this course, for it is impossible to foresee all e=i"encies of society !hich may re)uire their aid to protect ri"hts and restrain !ron"s. *Merced M. :o v. &reemont, H :al. L4H, L,4D 59 Am. $ec. ,5,./ +t is the stron" arm of the courtD and to render its operation be"in and useful, it must be e=ercised !ith "reat discretion, and !hen necessary re)uires it. *AttorneyC:eneral v. %tica +nc. Co., P. 3ohn Ch. *N.0./ LH4./ @avin" ta#en a panoramic vie! of the positionFsG of both parties as vie!ed from their pleadin"s, the picture reduced to its minimum si7e !ould be this; At the crossroads are the t!o *,/ contendin" parties, plaintiffs vi"orously assertin" the ri"hts "ranted by la!, treaty and ?urisprudence to restrain defendant in its activities of manufacturin", sellin", distributin" and advertisin" its >MARK> ci"arettes and no! comes defendant !ho countered and refused to be restrained claimin" that it has been authori7ed temporarily by the Bureau of +nternal Revenue under certain conditions to do so as aforestated coupled by its pendin" application for re"istration of trademar# >MARK> in the Philippine Patent 2ffice. 6his circumstance in itself has created a dispute bet!een the parties !hich to the mind of the Court does not !arrant the issuance of a !rit of preliminary in?unction. +t is !ellCsettled principle that courts of e)uity !ill refuse an application for the in?unctive remedy !here the principle of la! on !hich the ri"ht to preliminary in?unction rests is disputed and !ill admit of doubt, !ithout a decision of the court of la! establishin" such principle althou"h satisfied as to !hat is a correct conclusion of la! upon the facts. 6he fact, ho!ever, that there is no such dispute or conflict does not in itself constitute a ?ustifiable "round for the court to refuse an application for the in?unctive relief. *@ac#ensac# +mpr. Commn. v. Ne! 3ersey Midland P. Co., ,, N.3. E". -<./ @ence, the status 1uo e=istin" bet!een the parties prior to the filin" of this case should be maintained. &or after all, an in?unction, !ithout reference to the parties, should be violent, vicious nor even vindictive. *pp. LL9CL<4, 0ollo in :.R. No. -4LL,./ +n the process of denyin" petitioners1 subse)uent motion for reconsideration of the order denyin" issuance of the re)uested !rit, the court of ori"in too# co"ni7ance of the certification e=ecuted on 3anuary L., 4-9< by the Philippine Patent 2ffice attestin" to the fact that private respondent1s application for re"istration is still pendin" appropriate action. Apart from this communication, !hat prompted the trial court ?ud"e to entertain the idea of prematurity and untimeliness of petitioners1 application for a !rit of preliminary in?unction !as the letter from the Bureau of +nternal Revenue date &ebruary ,, 4-9< !hich reads; MRA. 6EREA+6A :AN$+2N:C2 2'E$AN 'e"al Counsel &ortune 6obacco Corporation Madam; +n connection !ith your letter dated 3anuary ,8, 4-9<, reiteratin" your )uery as to !hether your label approval automatically e=pires or becomes null and void after si= *5/ months if the brand is not accepted and by the patent office, please be informed that no provision in the 6a= Code or revenue re"ulation that re)uires an applicant to comply !ith the aforementioned condition order that his label approved !ill remain valid and e=istin". Based on the document you presented, it sho!s that re"istration of this particular label still pendin" resolution by the Patent 2ffice. 6hese bein" so , you may therefore continue !ith the production said brand of ci"arette until this 2ffice is officially notified that the )uestion of o!nership of >MARK> brand is finally resolved. Jery truly yours,

6E2$2R2 $. PAREN2 Chief, Manufactured 6obacco 6a= $ivision 6ANCP58L4C$,9L.CAC5 *p. L<9, 0ollo./ +t appears from the testimony of Atty. Enri)ue Madaran", Chief of the 6rademar# $ivision of the then Philippine Patent 2ffice that &ortune1s application for its trademar# is still pendin" before said office *p. L44, 0ollo/. Petitioners thereafter cited supervenin" events !hich supposedly transpired since March ,9, 4-9L, !hen the trial court first declined issuin" a !rit of preliminary in?unction, that could alter the results of the case in that &ortune1s application had been re?ected, nay, barred by the Philippine Patent 2ffice, and that the application had been forfeited by abandonment, but the trial court nonetheless denied the second motion for issuance of the in?unctive !rit on April ,,, 4-9H, thus; &or all the proli=ity of their pleadin"s and testimonial evidence, the plaintiffsCmovants have fallen far short of the le"al re)uisites that !ould ?ustify the "rant of the !rit of preliminary in?unction prayed for. &or one, they did not even bother to establish by competent evidence that the products supposedly affected adversely by defendant1s trademar# no! sub?ect of an application for re"istration !ith the Philippine Patents 2ffice, are in actual use in the Philippines. &or another, they concentrated their fire on the alle"ed abandonment and forfeiture by defendant of said application for re"istration. 6he Court cannot help but ta#e note of the fact that in their complaint plaintiffs included a prayer for issuance preliminary in?unction. 6he petition !as duly heard, and thereafter matter !as assiduously discussed len"thily and resolved a"ainst plaintiffs in a 48Cpa"e 2rder issued by the undersi"ned1s predecessor on March ,9, 4-9L. Plaintiffs1 motion for reconsideration !as denied in another !ellCar"ued 9 pa"e 2rder issued on April 8, 4-9<,, and the matter !as made to rest. @o!ever, on the stren"th of supposed chan"es in the material facts of this case, plaintiffs came up !ith the present motion citin" therein the said chan"es !hich are; that defendant1s application had been re?ected and barred by the Philippine Patents 2ffice, and that said application has been deemed abandoned and forfeited. But defendant has refiled the same. Plaintiffs1 ar"uments in support of the present motion appear to be a mere rehash of their stand in the first aboveC mentioned petition !hich has already been ruled upon adversely a"ainst them. :rantin" that the alle"ed chan"es in the material facts are sufficient "rounds for a motion see#in" a favorable "rant of !hat has already been denied, this motion ?ust the same cannot prosper. +n the first place there is no proof !hatsoever that any of plaintiffs1 products !hich they see# to protect from any adverse effect of the trademar# applied for by defendant, is in actual use and available for commercial purposes any!here in the Philippines. Aecondly as sho!n by plaintiffs1 o!n evidence furnished by no less than the chief of 6rademar#s $ivision of the Philippine Patent 2ffice, Atty. Enri)ue Madaran", the abandonment of an application is of no moment, for the same can al!ays be refiled. @e said there is no specific provision in the rules prohibitin" such refilin" *6AN, November ,4, 4-95, pp. 5. 5<, Raviera/. +n fact, accordin" to Madaran", the refiled application of defendant is no! pendin" before the Patents 2ffice. @ence, it appears that the motion has no le" to stand on. *pp. L8.CL84, 0ollo in :. R. No. -4LL,./ Confronted !ith this rebuff, petitioners filed a previous petition for certiorari before the Court, doc#eted as :.R. No. H94<4, but the petition !as referred to the Court of Appeals. 6he Court of Appeals initially issued a resolution !hich set aside the court of ori"in1s order dated April ,,, 4-9H, and "ranted the issuance of a !rit of preliminary in?unction en?oinin" &ortune, its a"ents, employees, and representatives, from manufacturin", sellin", and advertisin" >MARK> ci"arettes. 6he late 3ustice Cacdac, spea#in" for the &irst $ivision of the Court of Appeals in CAC:.R. AP No. 4L4L,, remar#ed; 6here is no dispute that petitioners are the re"istered o!ners of the trademar#s for ci"arettes >MARK J++>, >MARK 6EN>, and >'ARK>.*Anne=es B, C and $, petition/. As found and reiterated by the Philippine Patent 2ffice in t!o *,/ official communications dated April 5, 4-9L and 3anuary ,<, 4-9<, the trademar# >MARK> is >confusin"ly similar> to the trademar#s of petitioners, hence re"istration !as barred under Aec. < *d/ of Rep. Act. No. 455, as amended *pp. 4.5, 4L-, ACA rollo/. +n a third official communication dated April 9, 4-95, the trademar# application of private respondent for the >MARK> under Aerial No. <<..9 filed on &ebruary 4L, 4-94 !hich !as declared abandoned as of &ebruary 45, 4-95, is no! deemed forfeited, there bein" no revival made pursuant to Rule -9 of the Revised Rules of Practitioners in 6rademar# Cases.> *p. 4.H, CA rollo/. 6he fore"oin" documents or communications mentioned by petitioners as >the chan"es in material facts !hich occurred after March ,9, 4-9L>, are not also )uestioned by respondents. Pitted a"ainst the petitioners1 documentary evidence, respondents pointed to *4/ the letter dated 3anuary L., 4-H- *p. 4LH, CA rollo/ of Conrado P. $ia7, then Actin" Commissioner of +nternal Revenue, temporarily "rantin" the re)uest of private respondent for a permit to manufacture t!o *,/ ne! brands of ci"arettes one of !hich is brand >MARK> filterCtype blend, and *,/ the certification dated Aeptember ,5, 4-95 of Cesar :. Aandico, $irector of Patents *p. 4L9, CA rollo/ issued upon the !ritten re)uest of private respondents1 counsel dated Aeptember 4H, 4-95 attestin" that the records of his office !ould sho! that the >trademar# MARK> for ci"arettes is no! the sub?ect of a pendin" application under Aerial No. 8-9H, filed on Aeptember 45, 4-95. Private respondent1s documentary evidence provides the reasons neutrali7in" or !ea#enin" their probative values. 6he penultimate para"raph of Commissioner $ia71 letter of authority reads; Please be informed further that the authority herein "ranted does not "ive you protection a"ainst any person or entity !hose ri"hts may be pre?udiced by infrin"ement or unfair competition in relation to your aboveCnamed brandsMtrademar#. !hile $irector Aandico1s certification contained similar conditions as follo!s;

6his Certification, ho!ever, does not "ive protection as a"ainst any person or entity !hose ri"ht may be pre?udiced by infrin"ement or unfair competition in relation to the aforesaid trademar# nor the ri"ht to re"ister if contrary to the provisions of the 6rademar# 'a!, Rep. Act No. 455 as amended and the Revised Rules of Practice in 6rademar# Cases. 6he temporary permit to manufacture under the trademar# >MARK> for ci"arettes and the acceptance of the second application filed by private respondent in the hei"ht of their dispute in the main case !ere evidently made sub?ect to the outcome of the said main case or Civil Case No. <HLH< of the respondent Court. 6hus, the Court has not missed to note the absence of a mention in the Aandico letter of Aeptember ,5, 4-95 of any reference to the pendency of the instant action filed on Au"ust 49, 4-9,. We believe and hold that petitioners have sho!n a prima facie case for the issuance of the !rit of prohibitory in?unction for the purposes stated in their complaint and subse)uent motions for the issuance of the prohibitory !rit. *Buayan Cattle Co. vs. Ouintillan, 4,8 ACRA ,H5/ 6he re)uisites for the "rantin" of preliminary in?unction are the e=istence of the ri"ht protected and the facts a"ainst !hich the in?unction is to be directed as violative of said ri"ht. *Buayan Cattle Co. vs. Ouintillan, supraD 2rti"as Co. vs. Rui7, 4<9 ACRA L,5/. +t is a !rit framed accordin" to the circumstances of the case commandin" an act !hich the Court re"ards as essential to ?ustice and restrainin" an act it deems contrary to e)uity and "ood conscience *Rosauro vs. Cuneta, 484 ACRA 8H./. +f it is not issued, the defendant may, before final ?ud"ment, do or continue the doin" of the act !hich the plaintiff as#s the court to restrain, and thus ma#e ineffectual the final ?ud"ment rendered after!ards "rantin" the relief sou"ht by the plaintiff *Calo vs. Roldan, H5 Phil. <<8/. :enerally, its "rant or denial rests upon the sound discretion of the Court e=cept on a clear case of abuse *Belish +nvestment &inance Co. vs. Atate @ouse, 484 ACRA 5L5/. Petitioners1 ri"ht of e=clusivity to their re"istered trademar#s bein" clear and beyond )uestion, the respondent court1s denial of the prohibitive !rit constituted e=cess of ?urisdiction and "rave abuse discretion. +f the lo!er court does not "rant preliminary in?unction, the appellate court may "rant the same. *Aervice Apecialists, +nc. vs. Aheriff of Manila, 4<8 ACRA 4L-/. *pp. 458C45H, 0ollo in :.R. No. -4LL,./ After private respondent &ortune1s motion for reconsideration !as re?ected, a motion to dissolve the disputed !rit of preliminary in?unction !ith offer to post a counterbond !as submitted !hich !as favorably acted upon by the Court of Appeals, premised on the filin" of a sufficient counterbond to ans!er for !hatever per2uicio petitioners may suffer as a result thereof, to !it; 6he private respondent see#s to dissolve the preliminary in?unction previously "ranted by this Court !ith an offer to file a counterbond. +t !as pointed out in its supplemental motion that lots of !or#ers employed !ill be laid off as a conse)uence of the in?unction and that the "overnment !ill stand to lose the amount of specific ta=es bein" paid by the private respondent. 6he specific ta=es bein" paid is the sum total of P4,.,4,., ,-8.-9 from 3anuary to 3uly 4-9-. 6he petitioners ar"ued in their comment that the dama"es caused by the infrin"ement of their trademar# as !ell as the "ood!ill it "enerates are incapable of pecuniary estimation and monetary evaluation and not even the counterbond could ade)uately compensate for the dama"es it !ill incur as a result of the dissolution of the bond. +n addition, the petitioner further ar"ued that doin" business in the Philippines is not relevant as the in?unction pertains to an infrin"ement of a trademar# ri"ht. After a thorou"h reCe=amination of the issues involved and the ar"uments advanced by both parties in the offer to file a counterbond and the opposition thereto, WE believe that there are sound and co"ent reasons for %A to "rant the dissolution of the !rit of preliminary in?unction by the offer of the private respondent to put up a counterbond to ans!er for !hatever dama"es the petitioner may suffer as a conse)uence of the dissolution of the preliminary in?unction. 6he petitioner !ill not be pre?udiced nor stand to suffer irreparably as a conse)uence of the liftin" of the preliminary in?unction considerin" that they are not actually en"a"ed in the manufacture of the ci"arettes !ith the trademar# in )uestion and the filin" of the counterbond !ill amply ans!er for such dama"es. While the rule is that an offer of a counterbond does not operate to dissolve an in?unction previously "ranted, nevertheless, it is e)ually true that an in?unction could be dissolved only upon "ood and valid "rounds sub?ect to the sound discretion of the court. As WE have maintained the vie! that there are sound and "ood reasons to lift the preliminary in?unction, the motion to file a counterbond is "ranted. *pp. 8LC8<, 0ollo in :.R. No. -4LL,./ Petitioners, in turn, filed their o!n motion for reCe=amination "eared to!ards reimposition of the !rit of preliminary in?unction but to no avail *p. 88, 0ollo in :.R. No. -4LL,/. @ence, the instant petition castin" three aspersions that respondent court "ravely abused its discretion tantamount to e=cess of ?urisdiction !hen; +. . . . it re)uired, contrary to la! and ?urisprudence, that in order that petitioners may suffer irreparable in?ury due to the liftin" of the in?unction, petitioners should be usin" actually their re"istered trademar#s in commerce in the PhilippinesD ++. . . . it lifted the in?unction in violation of section 5 of Rule 89 of the Rules of CourtD and +++. . . . after havin" found that the trial court had committed "rave abuse of discretion and e=ceeded its ?urisdiction for havin" refused to issue the !rit of in?unction to restrain private respondent1s acts that are contrary to e)uity and "ood conscience, it made a complete about face for le"ally insufficient "rounds and authori7ed the private respondent to continue performin" the very same acts that it had considered contrary to e)uity and "ood conscience, thereby i"norin" not only the mandates of the 6rademar# 'a!, the international commitments of the Philippines, the ?udicial admission of private respondent that it !ill have no more ri"ht to use the trademar# >MARK> after the $irector of Patents shall have re?ected the application to re"ister it, and the admonitions of the Aupreme Court. *pp. ,<C,8, PetitionD pp. ,8C,5, 0ollo./ 6o sustain a successful prosecution of their suit for infrin"ement, petitioners, as forei"n corporations not en"a"ed in local commerce, rely on section ,4CA of the 6rademar# 'a! readin" as follo!s; Aec. ,4CA. Any forei"n corporation or ?uristic person to !hich a mar# or tradeCname has been re"istered or assi"ned

under this act may brin" an action hereunder for infrin"ement, for unfair competition, or false desi"nation of ori"in and false description, !hether or not it has been licensed to do business in the Philippines under Act Numbered &ourteen hundred and fiftyCnine, as amended, other!ise #no!n as the Corporation 'a!, at the time it brin"s complaint; Provided, 6hat the country of !hich the said forei"n corporation or ?uristic person is a citi7en or in !hich it is domiciled, by treaty, convention or la!, "rants a similar privile"e to corporate or ?uristic persons of the Philippines. *As inserted by Aec. H of Republic Act No. 5L9./ to drive home the point that they are not precluded from initiatin" a cause of action in the Philippines on account of the principal perception that another entity is piratin" their symbol !ithout any la!ful authority to do so. 3ud"in" from a perusal of the afore)uoted Aection ,4CA, the conclusion reached by petitioners is certainly correct for the proposition in support thereof is embedded in the Philippine le"al ?urisprudence. +ndeed, it !as stressed in .eneral .arments Corporation vs. #irector of Patents *<4 ACRA 8. F4-H4G/ by then 3ustice *later Chief 3ustice/ Ma#alintal that; Parenthetically, it may be stated that the rulin" in the Mentholatum case !as subse)uently dero"ated !hen Con"ress, purposely to >counteract the effects> of said case, enacted Republic Act No. 5L9, insertin" Aection ,4CA in the 6rademar# 'a!, !hich allo!s a forei"n corporation or ?uristic person to brin" an action in Philippine courts for infrin"ement of a mar# or tradename, for unfair competition, or false desi"nation of ori"in and false description, >!hether or not it has been licensed to do business in the Philippines under Act Numbered &ourteen hundred and fiftyCnine, as amended, other!ise #no!n as the Corporation 'a!, at the time it brin"s complaint.> Petitioner ar"ues that Aection ,4CA militates a"ainst respondent1s capacity to maintain a suit for cancellation, since it re)uires, before a forei"n corporation may brin" an action, that its trademar# or tradename has been re"istered under the 6rademar# 'a!. 6he ar"ument misses the essential point in the said provision, !hich is that the forei"n corporation is allo!ed thereunder to sue >!hether or not it has been licensed to do business in the Philippines> pursuant to the Corporation 'a! *precisely to counteract the effects of the decision in the Mentholatum case/. *at p. 8H./ @o!ever, on May, ,4, 4-9<, Aection ,4CA, the provision under consideration, !as )ualified by this Court in La Chemise Lacoste S.*. vs. Fernande% *4,- ACRA LHL F4-9<G/, to the effect that a forei"n corporation not doin" business in the Philippines may have the ri"ht to sue before Philippine Courts, but e=istin" ad?ective a=ioms re)uire that )ualifyin" circumstances necessary for the assertion of such ri"ht should first be affirmatively pleaded *, A"bayani Commercial 'a!s of the Philippines, 4--4 Ed., p. 8-9D < Martin, Philippine Commercial 'a!s, Rev. Ed., 4-95, p. L94/. +ndeed, it is not sufficient for a forei"n corporation suin" under Aection ,4CA to simply alle"e its alien ori"in. Rather, it must additionally alle"e its personality to sue. Relative to this condition precedent, it may be observed that petitioners !ere not remiss in averrin" their personality to lod"e a complaint for infrin"ement *p. H8, 0ollo in ACC:.R. AP No. 4L4L,/ especially so !hen they asserted that the main action for infrin"ement is anchored on an isolated transaction *p. H8, 0ollo in ACC:.R. AP No. 4L4L,D Atlantic Mutual +ns. Co. vs. Cebu Atevedorin" Co., +nc., 4H ACRA 4.LH *4-55/, 4 Re"alado, Remedial 'a! Compendium, &ifth Rev. Ed., 4-99, p. 4.L/. Another point !hich petitioners considered to be of si"nificant interest, and !hich they desire to impress upon us is the protection they en?oy under the Paris Convention of 4-58 to !hich the Philippines is a si"natory. 0et, insofar as this discourse is concerned, there is no necessity to treat the matter !ith an e=tensive response because adherence of the Philippines to the 4-58 international covenant due to pact sunt servanda had been ac#no!led"ed in La Chemise *supra at pa"e L-./. :iven these confluence of e=istin" la!s amidst the cases involvin" trademar#s, there can be no disa"reement to the "uidin" principle in commercial la! that forei"n corporations not en"a"ed in business in the Philippines may maintain a cause of action for infrin"ement primarily because of Aection ,4CA of the 6rademar# 'a! !hen the le"al standin" to sue is alle"ed, !hich petitioners have done in the case at hand. +n assailin" the ?ustification arrived at by respondent court !hen it recalled the !rit of preliminary in?unction, petitioners are of the impression that actual use of their trademar#s in Philippine commercial dealin"s is not an indispensable element under Article , of the Paris Convention in that; *,/ . . . . no condition as to the possession of a domicile or establishment in the country !here protection is claimed may be re)uired of persons entitled to the benefits of the %nion for the en?oyment of any industrial property of any industrial property ri"hts. *p. ,9, PetitionD p. ,-, 0ollo in :.R. No. -4LL,./ 0et petitioners1 perception alon" this line is nonetheless resolved by Aections , and ,CA of the 6rademar# 'a! !hich spea# loudly, about necessity of actual commercial use of the trademar# in the local forum; Aec. ,. 3hat are re4istrable. B 6rademar#s, tradenames and service mar#s o!ned by persons, corporations, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any forei"n country may be re"istered in accordance !ith the provisions of this ActD Provided" (hat said trademarks" tradenames" or service marks are actually in use in commerce and services not less than t!o months in the Philippines before the time the applications for re"istration are filedD And provided, further, 6hat the country of !hich the applicant for re"istration is a citi7en "rants by la! substantially similar privile"es to citi7ens of the Philippines, and such fact is officially certified, !ith a certified true copy of the forei"n la! translated into the En"lish lan"ua"e, by the "overnment of the forei"n country to the :overnment of the Republic of the Philippines. *As amended by R.A. No. 958/. Aec. ,CA. 2!nership of trademar#s, tradenames and service mar#sD ho! ac)uired. B Anyone !ho la!fully produces or deals in merchandise of any #ind or !ho en"a"es in any la!ful business, or !ho renders any la!ful service in commerce, by actual use thereof in manufacture or trade" in business"and in the service rendered, may appropriate to his e=clusive use a trademar#, a tradename, or a service mar# not so appropriated by another, to distin"uish his merchandise, business or service from the merchandise, business or service of others. 6he o!nership or possession of a trademar#, tradename, service mar#, heretofore or hereafter appropriated, as in this section provided, shall be reco"ni7ed and protected in the same manner and to the same e=tent as are other property ri"hts #no!n to the la!. *As amended by R.A. No. 5L9/. *Kabushi Kaisha +setan vs. +ntermediate Appellate Court, ,.L ACRA 89L F4--4G, at pp. 89-C 8-.D emphasis supplied./ &ollo!in" universal ac)uiescence and comity, our municipal la! on trademar#s re"ardin" the re)uirement of actual use in the Philippines

must subordinate an international a"reement inasmuch as the apparent clash is bein" decided by a municipal tribunal *Mortensen vs. Peters, :reat Britain, @i"h Court of 3udiciary of Acotland, 4-.5, 9 Aessions -LD Paras, +nternational 'a! and World 2r"ani7ation, 4-H4 Ed., p. ,./. Withal, the fact that international la! has been made part of the la! of the land does not by any means imply the primacy of international la! over national la! in the municipal sphere. %nder the doctrine of incorporation as applied in most countries, rules of international la! are "iven a standin" e)ual, not superior, to national le"islative enactments *Aalon"a and 0ap, Public +nternational 'a!, &ourth ed., 4-H<, p. 45/. 6he afore)uoted basic provisions of our 6rademar# 'a!, accordin" to 3ustice :utierre7, 3r., in 5abushi 5aisha 6setan vs. 6ntermediate *ppellate Court *,.L ACRA 89L F4--4G/, have been construed in this manner; A fundamental principle of Philippine 6rademar# 'a! is that actual use in commerce in the Philippines is a preCre)uisite to the ac)uisition of o!nership over a trademar# or a tradename. === === === 6hese provisions have been interpreted in Sterlin4 *ctien4esellschaft *,H ACRA 4,4< F4-5-G/ in this !ay; Products 6nternational" 6nc. v. Farbenfabriken &ayer

A rule !idely accepted and firmly entrenched because it has come do!n throu"h the years is that actual use in commerce or business is a prere)uisite to the ac)uisition of the ri"ht of o!nership over a trademar#. === === === . . . Adoption alone of a trademar# !ould not "ive e=clusive ri"ht thereto. Auch ri"ht "ro!s out of their actual use. Adoption is not use. 2ne may ma#e advertisements, issue circulars, "ive out price lists on certain "oodsD but these alone !ould not "ive e=clusive ri"ht of use. &or trademar# is a creation of use. 6he underlyin" reason for all these is that purchasers have come to understand the mar# as indicatin" the ori"in of the !ares. &lo!in" from this is the trader1s ri"ht to protection in the trade he has built up and the "ood!ill he has accumulated from use of the trademar#. . . . +n fact, a prior re"istrant cannot claim e=clusive use of the trademar# unless it uses it in commerce. We ruleFdG in Pa4asa 6ndustrial Corporation v. Court of *ppeals *449 ACRA 8,5 F4-9,G/; L. (he (rademark la is very clear. 6t re1uires actual commercial use of the mark prior to its re4istration . 6here is no dispute that respondent corporation !as the first re"istrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the sub?ect mar#D it did not present proof to invest it !ith e=clusive, continuous adoption of the trademar# !hich should consist amon" others, of considerable sales since its first use. 6he invoices *E=hibits H, HCa, and 9Cb/ submitted by respondent !hich !ere dated !ay bac# in 4-8H sho! that the 7ippers sent to the Philippines !ere to be used as >samples> and >of no commercial value>. 6he evidence for respondent must be clear, definite and free from inconsistencies. *Ay Chin" v. :a! 'ui, << ACRA 4<9C4<-/ >Aamples> are not for sale and therefore, the fact of e=portin" them to the Philippines cannot be considered to be e)uivalent to the >use> contemplated by the la!. Respondent did not e=pect income from such >samples>. 6here !ere no receipts to establish sale, and no proof !ere presented to sho! that they !ere subse)uently sold in the Philippines. *Pa"asa +ndustrial Corp. v. Court of Appeals, 449 ACRA 8,5 F4-9,GD Emphasis Aupplied/ 6he records sho! that the petitioner has never conducted any business in the Philippines. +t has never promoted its tradename or trademar# in the Philippines. +t is un#no!n to &ilipino e=cept the very fe! !ho may have noticed it !hile travellin" abroad. +t has never paid a sin"le centavo of ta= to the Philippine "overnment. %nder the la!, it has no ri"ht to the remedy it see#s. *at pp. 89-C8-4./ +n other !ords, petitioners may have the capacity to sue for infrin"ement irrespective of lac# of business activity in the Philippines on account of Aection ,4CA of the 6rademar# 'a! but the )uestion !hether they have an e=clusive ri"ht over their symbol as to ?ustify issuance of the controversial !rit !ill depend on actual use of their trademar#s in the Philippines in line !ith Aections , and ,CA of the same la!. +t is thus incon"ruous for petitioners to claim that !hen a forei"n corporation not licensed to do business in Philippines files a complaint for infrin"ement, the entity need not be actually usin" its trademar# in commerce in the Philippines. Auch a forei"n corporation may have the personality to file a suit for infrin"ement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local mar#et. :oin" bac# to the first assi"ned error, !e can not help but notice the manner the ascription !as framed !hich carries !ith it the implied but un!arranted assumption of the e=istence of petitioners1 ri"ht to relief. +t must be emphasi7ed that this aspect of e=clusive dominion to the trademar#s, to"ether !ith the corollary alle"ation of irreparable in?ury, has yet to be established by petitioners by the re)uisite )uantum of evidence in civil cases. +t cannot be denied that our reluctance to issue a !rit of preliminary in?unction is due to ?udicial deference to the lo!er courts, involved as there is mere interlocutory order *Jillarosa vs. 6eodoro, Ar., 4.. Phil. ,8 F4-85G/. +n point of ad?ective la!, the petition has its roots on a remedial measure !hich is but ancillary to the main action for infrin"ement still pendin" factual determination before the court of ori"in. +t is virtually needless to stress the obvious reality that critical facts in an infrin"ement case are not before us more so !hen even 3ustice &eliciano1s opinion observes that >the evidence is scanty> and that petitioners >have yet to submit copies or photo"raphs of their re"istered mar#s as used in ci"arettes> !hile private respondent has not, for its part, >submitted the actual labels or pac#a"in" materials used in sellin" its >Mar#> ci"arettes.> Petitioners therefore, may not be permitted to presume a "iven state of facts on their so called ri"ht to the trademar#s !hich could be sub?ected to irreparable in?ury and in the process, su""est the fact of infrin"ement. Auch a ploy !ould practically place the cart ahead of the horse. 6o our mind, !hat appears to be the insurmountable barrier to petitioners1 portrayal of !himsical e=ercise of discretion by the Court of Appeals is the !ellCta#en remar# of said court that; 6he petitionerFsG !ill not be pre?udiced nor stand to suffer irreparably as a conse)uence of the liftin" of the preliminary in?unction considerin" that they are not actually en"a"ed in the manufacture of the ci"arettes !ith the trademar# in )uestion and the filin" of the counterbond !ill amply ans!er for such dama"es. *p. 8<. 0ollo in :.R. No. -4LL,./

More tellin" are the alle"ations of petitioners in their complaint *p. L4-, 0ollo :.R. No. -4LL,/ as !ell as in the very petition filed !ith this Court *p. ,, 0ollo in :.R. No. -4LL,/ indicatin" that they are not doin" business in the Philippines, for these fran# representations are inconsistent and incon"ruent !ith any pretense of a ri"ht !hich can breached *Article 4<L4, Ne! Civil CodeD Aection <, Rule 4,-D Aection L, Rule 89, Revised Rules of Court/. +ndeed, to be entitled to an in?unctive !rit, petitioner must sho! that there e=ists a ri"ht to be protected and that the facts a"ainst !hich in?unction is directed are violative of said ri"ht *Aearth Commodities Corporation vs. Court of Appeals, ,.H ACRA 5,, F4--,G/. +t may be added in this connection that albeit petitioners are holders of certificate of re"istration in the Philippines of their symbols as admitted by private respondent, the fact of e=clusive o!nership cannot be made to rest solely on these documents since dominion over trademar#s is not ac)uired by the mere fact of re"istration alone and does not perfect a trademar# ri"ht *%nno Commercial Enterprises, +nc. vs. :eneral Millin" Corporation, 4,. ACRA 9.< F4-9LG/. Even if !e disre"ard the candid statements of petitioners anent the absence of business activity here and rely on the remainin" statements of the complaint belo!, still, !hen these averments are ?u=taposed !ith the denials and propositions of the ans!er submitted by private respondent, the supposed ri"ht of petitioners to the symbol have thereby been controverted. 6his is not to say, ho!ever, that the manner the complaint !as traversed by the ans!er is sufficient to tilt the scales of ?ustice in favor of private respondent. &ar from it. What !e are simply conveyin" is another basic tenet in remedial la! that before in?unctive relief may properly issue, complainant1s ri"ht or title must be undisputed and demonstrated on the stren"th of one1s o!n title to such a de"ree as to un)uestionably e=clude dar# clouds of doubt, rather than on the !ea#ness of the adversary1s evidence, inasmuch as the possibility of irreparable dama"e, !ithout prior proof of trans"ression of an actual e=istin" ri"ht, is no "round for in?unction bein" mere damnum abs1ue in2uria *6alisayCAilay Millin" Co., +nc. vs. C&+ of Ne"ros 2ccidental, <, ACRA 8HH F4-H4GD &rancisco, Rules of Court, Aecond ed., 4-98, p. ,,8D L Martin, Rules of Court, 4-95 ed., p. 9,/. 2n the economic repercussion of this case, !e are e=tremely bothered by the thou"ht of havin" to participate in thro!in" into the streets &ilipino !or#ers en"a"ed in the manufacture and sale of private respondent1s >MARK> ci"arettes !ho mi"ht be retrenched and forced to ?oin the ran#s of the many unemployed and unproductive as a result of the issuance of a simple !rit of preliminary in?unction and this, durin" the pendency of the case before the trial court, not to mention the diminution of ta= revenues represented to be close to a )uarter million pesos annually. 2n the other hand, if the status )uo is maintained, there !ill be no dama"e that !ould be suffered by petitioners inasmuch as they are not doin" business in the Philippines. With reference to the second and third issues raised by petitioners on the liftin" of the !rit of preliminary in?unction, it cannot be "ainsaid that respondent court acted !ell !ithin its prero"atives under Aection 5, Rule 89 of the Revised Rules of Court; Aec. 5. .rounds for ob2ection to" or for motion of dissolution of in2unction. B 6he in?unction may be refused or, if "ranted ex parte, may be dissolved, upon the insufficiency of the complaint as sho!n by the complaint itself, !ith or !ithout notice to the adverse party. +t may also be refused or dissolved on other "rounds upon affidavits on the part of the defendants !hich may be opposed by the plaintiff also by affidavits. +t may further be refused or, if "ranted, may be dissolved, if it appears after hearin" that althou"h the plaintiff is entitled to the in?unction, the issuance or continuance thereof, as the case may be, !ould cause "reat dama"e to the defendant !hile the plaintiff can be fully compensated for such dama"es as he may suffer, and the defendant files a bond in an amount fi=ed by the ?ud"e conditioned that he !ill pay all dama"es !hich the plaintiff may suffer by the refusal or the dissolution of the in?unction. +f it appears that the e=tent of the preliminary in?unction "ranted is too "reat, it must be modified. %nder the fore"oin" rule, in?unction may be refused, or, if "ranted, may be dissolved, on the follo!in" instances; *4/ 6f there is insufficiency of the complaint as sho n by the alle4ations therein. Refusal or dissolution may be "ranted in this case !ith or !ithout notice to the adverse party. *,/ +f it appears after hearin" that althou"h the plaintiff is entitled to the in?unction, the issuance or continuance thereof !ould cause "reat dama"e to the defendant, !hile the plaintiff can be fully compensated for such dama"es as he may suffer. 6he defendant, in this case, must file a bond in an amount fi=ed by the ?ud"e conditioned that he !ill pay all dama"es !hich plaintiff may suffer by the refusal or the dissolution of the in?unction. *L/ 2n the other "rounds upon affidavits on the part of the defendant !hich may be opposed by the plaintiff also affidavits. Modification of the in?unction may also be ordered by the court if it appears that the e=tent of the preliminary in?unction "ranted is too "reat. *L Martin, Rules of Court, 4-95 ed., p. --D &rancisco,supra, at p. ,59./ +n vie! of the e=plicit representation of petitioners in the complaint that they are not en"a"ed in business in the Philippines, it inevitably follo!s that no conceivable dama"e can be suffered by them not to mention the foremost consideration heretofore discussed on the absence of their >ri"ht> to be protected. At any rate, and assumin" in 4ratia ar4umenti that respondent court erroneously lifted the !rit it previously issued, the same may be cured by appeal and not in the form of a petition for certiorari *Clar# vs. Philippine Ready Mi= Concrete Co., 99 Phil. <5. F4-84G/. Jerily, and mindful of the rule that a !rit of preliminary in?unction is an interlocutory order !hich is al!ays under the control of the court before final ?ud"ment, petitioners1 criticism must fall flat on the "round, so to spea#, more so !hen e=tinction of the previously issued !rit can even be made !ithout previous notice to the adverse party and !ithout a hearin" *Caluya vs. Ramos, H- Phil. 5<. F4-H<GD L Moran, Rules of Court, 4-H. ed., p. 94/. W@ERE&2RE, the petition is hereby $+AM+AAE$ and the Resolutions of the Court of Appeals dated Aeptember 4<, 4-9- and November ,-, 4-9- are hereby A&&+RME$. A2 2R$ERE$. &idin" $." concurs. #avide" $r." concurs in the result. 0omero" $. took no part.

Republic of the Philippines

SUPREME COURT Manila EN BANC G.R. No. L-62,5 Mar23 28, 1955

ONG !" GU" alias T!N !" GU", applicantCpetitioner, vs. 43e '5re24or o6 43e P35.5775(e8 Pa4e(4 O6652e, respondent. E. ". 'U PONT 'E NEMOURS !N' COMP!N&, intervenor. $ose P. Laurel for petitioner. Solicitor .eneral $uan 0. Li a4 and Solicitor Pacifico P. de Castro for respondent. $. *. 3olfson for intervenor. L!%R!'OR, J.9 2n November 9, 4-<9, 2n" Ai :ui alias 6an Ai :ui filed an application *No. 9.L/ !ith the $irector of Patents for the re"istration of the follo!in" tradeCname; >,.th Century Nylon Ahirts &actory.> +t is stated in connection !ith the application that the tradeCname !as used for the first time by the applicant on Aeptember 4,, 4-<4 for his business described as follo!s; >:eneral merchandise dealin" principally in te=tiles, haberdasheriesD also operatin" as manufacturer of shirts, pants and other men1s and !oman1s !ears.> %pon the filin" of the application, the same !as referred by the $irector to an e=aminer. 6he latter in a report dated Au"ust 49, 4-8. held that the !ords >shirts factory> are not re"istrableD so the applicant made a disclaimer of said !ords *shirts factory/ insertin" a statement to that effect in his ori"inal application. 2n Au"ust 4L, 4-84 the $irector ordered the publication of the tradeCname in the official :a7ette. Publication !as made but before the e=piration of the period for filin" opposition, Atty. 3. A. Wolfson, on behalf of E. +. $e Pont de Nemours and Company, presented on &ebruary ,H, 4-8,, an opposition on the "round that the !ord >nylon> !as a name coined by E. +. $u Pont de Nemours and Company as the "eneric name of a synthetic fabric material, invented, patented, manufactured and sold by it and that this !ord is a "eneric termD that the use of the name >nylon> is descriptive or deceptively misdescriptive of the "oods, business of manufactures of the applicantD that the use of the name !ould produce confusion in trade and !ould deceive the publicD and that >nylon> is not distinctive of applicant1s "oodsD business and manufactures and applicant does not claim that it has so become. 6his opposition, ho!ever, !as dismissed by the $irector on the "round that at the time it !as submitted Atty. 3. A. Wolfson did not have, nor did he submit, authority to file it *opposition/ in the corporate name, and that the subse)uent authori7ation from the corporation to that effect did not cure the "eneral defect in the opposition. But !hile he dismissed the opposition, the $irector ruled that the application must be disapproved unless the !ord >nylon> is also disclaimed. 6he "rounds for the disapproval of the application !ere as follo!s; >Nylon> is merely descriptive of the business of shirtCma#in" if the shirts are made of nylon. +t is deceptively misdescriptive of said business, if the shirts are not made of nylon. +n either case, its re"istration in the Principal Re"ister as a tradeCname, or as a part of a tradeCname, is e=pressly forbidden by subsection *e/ of Aection < of Republic Act No. 455, as amended by Aection , of Republic Act No. 5L9. === === ===

But even if the tradeCname here in )uestion !ere applied for under the said subsection *f/, >Nylon> !ould still have to be disclaimed. %sed in connection !ith shirtCma#in", >Nylon> can never become distinctive, can never ac)uire secondary meanin", because it is a "eneric term, li#e cotton, sil#, linen, or ramie. 3ust as no len"th of use and no amount of advertisin" !ill ma#e >cotton,> >sil#,> >linen,> or >ramie,> distinctive of shirts or of the business of ma#in" them, so no len"th of use and no amount of advertisin" !ill ma#e >nylon> distinctive of shirts or of the business of manufacturin" them.> A"ain the above decision applicant has filed an appeal to this Court. $urin" the pendency of this appeal, E. +. $u Pont de Nemours and Co. filed a petition to intervene, !hich petition !as "ranted. +t has also, throu"h counsel, filed a brief ans!erin" the ar"uments of the applicantC appellant and supportin" the decision appealed from. 6here are t!o main )uestions raised in the appeal, one le"al and the other procedural. 6he le"al )uestion is put up by the claim of the applicantCappellant that !hile he admits that the term >nylon> is by itself alone descriptive and "eneric, !hat he desires to re"ister is not the said !ord alone but the !hole combination of >,.th Century Nylon Ahirts &actory.> +t is to be noted in ans!er to this contention that the $irector of Patents has not completely denied the re"istration of the !hole tradeCname. @e has made a conditional denial only, permittin" the re"istration of the name but !ith the disclaimer of the terms >shirt factory> and >nylon.> 6he import of the decision is that the tradeCname may be re"istered, but applicantCappellant may not be entitled to the e=clusive use of the terms >shirts factory> and >nylon> as a"ainst any other !ho may subse)uently use the said terms, 2uris publici, incapable of appropriation by any sin"le individual to the e=clusion of others. 6his is supported by reason and authority. A !ord or a combination of !ords !hich is merely descriptive of an article of trade, or of its composition, characteristics, or )ualities, cannot be appropriated and protected as a trademar# to the e=clusion of its use by others. 6he reason for this is that inasmuch as all persons have an e)ual ri"ht to produce and vend similar articles, they also have the ri"ht to describe them properly and to use any appropriate to himself e=clusively any !ord or e=pression, properly descriptive of the article, its )ualities, in"redients, or characteristics, and thus limit other persons in the use of lan"ua"e appropriate to the description of their manufactures, the ri"ht to the use of such lan"ua"e bein" common to all. 6his rule e=cludin" descriptive terms has also been held to apply to tradeCnames. As to !hether !ords employed fall !ithin this prohibition, it is said that the true test is not !hether they are e=haustively descriptive of the article desi"nated, but !hether in themselves, and as they are commonly used by those !ho understand their meanin", they are reasonably indicative and descriptive of the thin" intended. +f they are thus descriptive, and not arbitrary, they cannot be appropriated from "eneral use and become the e=clusive property of anyone. *8, Am. 3ur. 8<,C8<L./ . . . . +f the tradeCname consists of a descriptive !ord, no monopoly of the ri"ht to use the same can be ac)uired. 6his is but a corollary of the proposition that a descriptive !ord cannot be the sub?ect of a trade mar#. :. C. Merriam Co. vs. Aalfield *C. C.

A./ 4-9, L5-. 2ther may use the same or similar descriptive !ord in connection !ith their o!n !ares, provided they ta#e proper steps to prevent the public bein" deceived. . . . *Richmond Remedies Co. vs. $r. Miles Medical Co., 45 E. *sd/ 8-9./ . . . 6he soCcalled descriptive terms, !hich may be used to described the product ade)uately, can not be monopoli7ed by a sin"le user and are available to all. +t is only natural that the trade !ill prefer those mar#s !hich bear some reference to the article itself. 6herefore, even those descriptive mar#s !hich are distinctive by themselves can be appropriated by others !ith impunity. A descriptive !ord may be admittedly distinctive, especially if the user is the first creator of the article. +t !ill, ho!ever, be denied protection, not because it lac#s distinctiveness, but rather because others are e)ually entitled to its use. . . *, Callman. %nfair Competition and 6rade Mar#s, pp. 95-C9H../ 6he claim that a combination of !ords may be re"istered as a tradeCname is no ?ustification for not applyin" the rules or principles hereinabove mentioned. 6he use of a "eneric term in a tradeCname is al!ays conditional, i. e., sub?ect to the limitation that the re"istrant does not ac)uire the e=clusive ri"ht to the descriptive or "eneric term or !ord. . . . A combination of mar#s or !ords may constitute a valid trademar# or *in the case of !ords/ a tradename even thou"h some of the constituent portions thereof !ould not be sub?ect, separately, to e=clusive appropriation as such. 6hus, althou"h a !ord may be descriptive and not sub?ect to e=clusive use as a trademar#, it may properly become the sub?ect of a trademar# by combination !ith another !ord or term !hich is nondescriptive, althou"h no e=clusive ri"ht to then descriptive !ord or term id created . . . *8, Am. 3ur. 88L./ 6he citation of appellant himself supports the decision thus; >. . . althou"h perhaps not entitled to protection a"ainst infrin"ement by the use of the descriptive matter by another.> *&rost vs. Rinds#opt, <, &ed. <.9./ +t must also be noted that no claim is made in the application that the tradeCname sou"ht to be re"istered has ac)uired !hat is #no!n as a secondary meanin" !ithin the provisions of para"raph *f/ of section < of Republic Act No. 455. All that the applicant declares in his statement accompanyin" his application is that the said tradeCname has been continuously used by it in business in the Philippines for about seven years, !ithout alle"ation or proof that the tradeCname has become distinctive of the applicant1s business or services. &urthermore, the use of the term >nylon> in the tradeCname is both >descriptive> and >deceptively and misdescriptive> of the applicantCappellant1s business, for apparently he does not use nylon in the manufacture of the shirts, pants and !ears that he produces and sells. @o! can a secondary meanin" be ac)uired if appellant1s products are not made of nylonE Certainly no e=clusive ri"ht can be ac)uired by deception of fraud. 6he procedural )uestion arises from the fact that after the $irector had ordered publication and not!ithstandin" dismissal of an opposition, the $irector nevertheless conditionally denied the application after its publication and failed to "ive applicant opportunity for a hearin", as specifically re)uired by section H of Republic Act No. 455. +t is ar"ued that after approval of the findin"s of the commissioner to !hom the application id referred and "ivin" of the order of publication, it becomes the ministerial duty of the $irector to issue the correspondin" certificate of re"istration and that his po!er is confined to this issuance alone. 6he ans!er to this ar"ument is the fact that the la! allo!s oppositions to be filed after publication, thus; Aec. 9. -pposition. B Any person !ho believes that he !ould be dama"ed by the re"istration of a mar# or tradeCname may, upon payment of the re)uired fee and !ithin thirty days after the publication under the first para"raph of section seven hereof, file !ith the $irector an opposition to the application. Auch opposition shall be in !ritin" and verified by the oppositor, or by any person on his behalf !ho #no!s the facts, and shall specify the "rounds on !hich it is based and include a statement of the facts relied upon. Copies of certificates of re"istration of mar#s or tradeCnames re"istered in other countries or other supportin" documents mentioned in the opposition shall be filed there!ith, to"ether !ith the translation thereof into En"lish, if not in the En"lish lan"ua"e. &or "ood cause sho!n and upon payment of the re)uired surchar"e, the time for filin" an opposition may be e=tended for an additional thirty days by the $irector, !ho shall notify the applicant of such e=tension. *Republic Act No. 455./ 2f !hat use is the period "iven to oppositors to re"ister their oppositions if such oppositions are not to be "iven consideration at all, because the $irector has only the ministerial duty after publication to issue the certificate of re"istrationD the first is that conducted in the 2ffice of the $irector and ta#in" place prior to publication, and the second, that conducted after publication, in !hich the public is "iven the opportunity to contest the application. +n the first, the application is referred to an e=aminer, !ho, after study and investi"ation ma#es a report and recommendation to the $irector !ho, upon findin" that applicant is entitled to re"istration, orders publication of the publication. *Aec. H, Rep. Act No. 455./ +f he finds that applicant is not entitled to re"istration, he may then and there dismiss the application. +n the second, opportunity is offered the public or any interested party to come in and ob?ect to the petition *Aec. 9, 6d./, "ivin" proofs and reasons for the ob?ection, applicant bein" "iven opportunity also to submit proofs or ar"uments in support of the application. *Aec. -, 6d./ +t is the decision of the $irector, "iven after this hearin", or opportunity to every interested party to be heard, that finally terminates the proceedin"s and in !hich the re"istration is finally approved or disapproved. 6hereafter, notice of the issuance of the certificate of re"istration is published. *Aec. 4., 6d./ +t is evident that the decision of the $irector after the first step, orderin" publication, can not have any finality. 2f !hat use is the second step in the proceedin"s, if the $irector is bound by his first decision, "ivin" course to the publicationE @is first decision is merely provisional, in the sense that the application appears to be meritorious and is entitled to be "iven course leadin" to the more formal and important second step of hearin" and trial, !here the public and interested parties are allo!ed to ta#e part. 6he ar"ument that the $irector failed to comply !ith para"raph , of section H, Republic Act No. 455 cannot be raised in the case at bar, because the $irector did not find that the applicant is not entitled to re"istration. @e actually found that he is entitled to re"istration and that is !hy an order for the publication of the application !as issued. @o! can the $irector comply !ith the provisions of said para"raph , if he did not disapprove the applicant1s petition for re"istrationE We, therefore, find that the errors assi"ned in the appeal have not been committed id hereby respondent $irector of Patents. @is decision is hereby affirmed, !ith costs a"ainst the applicantCappellant. Paras" C. $." Pablo" &en4%on" Padilla" 0eyes" *." $u4o" &autista *n4elo" Concepcion" and 0eyes" $. &. L." $$." Republic of the Philippines SUPREME COURT Manila

EN BANC G.R. No. L--5,1 +a(uary 1 , 195,

!NG S" *ENG a() S!LUST"!N! 'EE, plaintiffsCappellants, vs. #ELL"NGTON 'EP!RTMENT STORE, "NC., %EN+!M"N C*U!, S.R. MEN'"NUETO, a() FEL"MON COS"O, defendantsCappellees. )uisumbin4" Sycip" )uisumbin4 and Sala%ar for appellants. Fabian Millar and *ntonio Fa. )uesada for appellees. L!%R!'OR, J.9 6he plaintiffsCappellants herein are en"a"ed in the business of manufacturin" shirts, pants, dra!ers, and other articles of !ear for men, !omen, and children. 6hey have been in that business since the year 4-L9, havin" obtained the re"istration for the said articles the trademar# of >Wellin"ton.> +n the year 4-<. they re"istered the business name >Wellin"ton Company,> and this re"istration of the name !as rene!ed on 3une 44, 4-<5. 6heir invoices, stationery, and si"nboard bear the trade name >Wellin"ton Company,> and in ne!spaper advertisements they described their business as >Wellin"ton Ahirt &actory.> +t does not appear, ho!ever, that their trademar# for their articles of !ear !as a"ain re"istered after Au"ust ,H, 4-L9, nor their trade name re"istered after 4-<5. $efendant Ben?amin Chua applied for the re"istration of the business name >Wellin"ton $epartment Atore> on May H, 4-<5. @is application therefor !as approved by the Bureau of Commerce, and a certificate issued in his favor. 2n 3une 9, 4-<5, this business name !as transferred to Wellin"ton $epartment Atore, +nc., of !hich he is the president. +t does not appear, ho!ever, that his application !ith the Bureau of Commerce for the re"istration of the business name >Wellin"ton $epartment Atore> has been rene!ed, and neither does it appear that the business name >Wellin"ton Company> applied for by plaintiffsCappellants has also been rene!ed. 6he plaintiffsCappellants alle"e that the use of the !ords >Wellin"ton $epartment Atore> as a business name and as a corporate name by the defendantCappellee deceives the public into buyin" defendant corporation1s "oods under the mista#en belief that the names are the plaintiff1s or have the same source as plaintiffs1 "oods, thereby resultin" in dama"e to them. 6hey, therefore, pray that the defendant corporation be en?oined from usin" the business name >Wellin"ton $epartment Atore> and the corporate name >Wellin"ton $epartment Atore, +nc>D that the $irector of Commerce be ordered to cancel the re"istration of said business name, and the Aecurities and E=chan"e Commissioner be also ordered to cancel the corporate name >Wellin"ton $epartment Atore, +nc.> +n their ans!er the defendants Wellin"ton $epartment Atore, +nc., and Ben?amin Chua alle"e, by !ay of special defense, that the plaintiffs are en"a"ed in the manufacture or production of shirts, pants, dra!ers, and other articles of !ear for men, !omen, and children, and #eep a dry "oods store for the sale of the same, !hereas they *the defendants/ are not en"a"ed in the same business or in the manufacture or sale of articles !ith the trademar# >Wellin"ton,> and that they are #eepin" a store for articles such as shoes, hats, toys, perfumes, ba"s, apparels, and the li#e, most of !hich are different from those manufactured and sold by plaintiffsCappellants. %pon the above issues the parties !ent to trial, and thereafter the court a 1uo dismissed the complaint and absolved the defendants therefrom, holdin" that the corporate name >Wellin"ton $epartment Atore +nc.,> has not been previously ac)uired and appropriated by any person or corporation, citin" the case of Compa+ia .eneral de (abacos vs. *lhambra Ci4ar ! etc. Co ., LL Phil., <98, and 3alter 7. -lsen ! Co. vs. Lambert, <, Phil., 5LL. A"ainst this decision the plaintiffs have prosecuted this appeal, contendin" that the appellees1 business is similar and identical to that of the appellantsD that the use of the business name >Wellin"ton $epartment Atore, +nc.,> misleads and confuses the publicD that plaintiffsCappellants have ac)uired a property ri"ht in the name >Wellin"tonD> and that if the defendantsCappellees are not liable for any infrin"ement of tradename, at least they are liable for unfair competition. 6he term >Wellin"ton> is either a "eo"raphical name *see Webster1s +nternational $ictionary, !here it is said to be the capital of Ne! PealandD urban district of Ahropshire, En"land and of Aomersetshire, En"landD co. seat, of Aummer co., Kans, etc./, or the surname of a person. But mere "eo"raphical names are ordinarily re"arded as common property, and it is a "eneral rule that the same cannot be appropriated as the sub?ect of an e=clusive trademar# or trade name. *8, Am. 3ur., 8<9./ Even if Wellin"ton !ere a surname, !hich is not even that of the plaintiffsCappellants, it cannot also be validly re"istered as a trade name. *Aection <, Para"raph *e/, Republic Act. No. 455./ As the term cannot be appropriated as a trademar# or a trade name, no action for violation thereof can be maintained, as none is "ranted by the statute in such cases. 6he ri"ht to dama"es and for an in?unction for infrin"ement of a trademar# or a trade name is "ranted only to those entitled to the e=clusive use of a re"istered trademar# or trade name. *Aection ,L, Republic Act No. 455./ +t is evident, therefore, that no action may lie in favor of the plaintiffsCappellants herein for dama"es or in?unctive relief for the use by the defendantsCappellees of the name >Wellin"ton.> 6he complaint, ho!ever, alle"es that the defendantsCappellees have the actual intent to mislead the public and to defraud the plaintiffs, as by the use of the name >Wellin"ton $epartment Atore, >they have deceived the public into buyin" its "oods under the mista#en belief that the same are the plaintiffs1 or have the same source as the plaintiffs1 "oods. 6he action is evidently one for unfair competition, !hich is defined in Chapter J+, Aection ,-, of Republic Act No. 455, not one for violation of a trademar# or a tradename. +n order to determine !hether defendants are liable in this respect and have deceived the public into believin" that the "oods they sell are of plaintiffs1 manufacture or proceed from the same source as plaintiffs1 "oods, all the surroundin" circumstances must be ta#en into account, especially the identity or similarity of their business, ho! far the names are a true description of the #ind and )uality of the articles manufactured or the business carried on, the e=tent of the confusion !hich may be created or produced, the distance bet!een the place of business of one and the other party, etc. *Chas A. @i""ins Co. vs. @i""ins Aoap Co., 4<< N.0. <5,, L- N.E. <-., ,H '.R.A. <,, <L Am. At. Rep. H5-./ While there is similarity bet!een the trademar# or trade name >Wellin"ton $epartment Atore,> no confusion or deception can possibly result or arise from such similarity because the latter is a >department store,> !hile the former does purport to be so. 6he name >Wellin"ton> is admittedly the name of the trademar# on the shirts, pants, dra!ers, and other articles of !ear for men, !omen and children, !hereas the name used by the defendant indicates not these manufactured articles or any similar merchandise, but a department store. Neither can the public be said to be deceived into the belief that the "oods bein" sold in defendant1s store ori"inate from the plaintiffs, because the evidence sho!s that defendant1s store sells no shirts or !ear bearin" the trademar# >Wellin"ton,> but other trademar#s. Neither could such deception be by any possibility produced because defendant1s store is situated on the Escolta, !hile plaintiffs1 store or place of business is located in another business district far a!ay from the Escolta. 6he mere fact that t!o or more customers of the plaintiffs thou"ht of the probable identity of the products sold by one and the other is not sufficient proof of the supposed confusion that the public has been led into by the use of the name adopted by the defendants. No evidence has been submitted that customers of the plaintiffsCappellants had actually been misled into

purchasin" defendant1s articles and merchandise, for the very !itnesses !ho have supposedly noted the use of plaintiffs1 trade name do not claim to have actually purchased any articles from defendant1s store. 6he concept of unfair competition has received the attention of this Court in t!o previous cases, that of *n4 vs. (eodoro4 *, 2ff. :a7., No. H, 5HL/ and (eodoro 5ala ,4 5he vs. Lever &rothers Co ., *:.R. No. <594H, promul"ated on April 49, 4-<4./ +n the first case this Court stated that even a name or phrase not capable of appropriation as trademar# or trade name may, by lon" and e=clusive use by a business !ith reference thereto or to its products, ac)uire a proprietary connotation, such that the name or phrase to the purchasin" public becomes associated !ith the business or the products and entitled to protection a"ainst unfair competition. But in the case at bar, the principle therein enunciated cannot be made to apply because the evidence submitted by the appellants did not prove that their business has continued for so lon" a time that it has become of conse)uence and ac)uired a "ood!ill of considerable value, such that its articles and products have ac)uired a !ellC#no!n reputation and confusion !ill result by the use of the disputed name by the defendants1 department store. +t is true that appellants business appears to have been established a fe! years before the !ar and appellees1 after liberation, yet it seems appellees1 business and "ood!ill are the products of their o!n individual initiative, not !rested by unfair competition from appellants1 business and "ood!ill. +n the case of 5ala ,4 5he vs. Lever &rothers Co ., this Court citin" a !ellCconsidered opinion of the Court of Appeals published in L- 2ff. :a7., 4<H-C4<95, No. 5,, May ,4, 4-<4, declared that it is not necessary that the articles of the petitioner be e=actly similar to those handled by respondents in order that unfair competition may be said to arise, and that it is sufficient for the articles to fall under the "eneral cate"ory of toilet articles. +t mi"ht be true that, inasmuch as appellees1 department store deals on shirts and other articles of !ear !hile appellants produce the same articles, some competition !ould arise bet!een them. +t is not, ho!ever, competition that the la! see#s to prevent, but unfair competition, !herein a ne!comer in business tries to "rab or steal a!ay the reputation or "ood!ill of the business of another. As the court stated in said case, >the tendency of the courts has been to !iden the scope of protection in the field of unfair competition. 6hey have held that there is no fetish in the !ord >competition,> and that the invocation of e)uity rest more vitally on the element of unfairness.> As !e have stated, appellant have not sho!n any !ellCestablished reputation or "ood!ill previous to the establishment of appellees1 business, such that it can be said that somethin" !as unfairly ta#en by the use of such reputation by the appellees1 department store. We a"ree, therefore, !ith the trial court that plaintiffsCappellants have not been able to sho! the e=istence of a cause of action for unfair competition a"ainst the defendantsCappellees. 6he ?ud"ment appealed from is, therefore, affirmed, !ith costs a"ainst the plaintiffsCappellants. Paras" C.$." Pablo" &en4%on" (uason" Montemayor" $u4o and &autista *n4elo" $$." concur. Republic of the Philippines Supreme Court Manila EN BANC ISABELITA C. VINUYA, VICTORIA C. DELA E!A, "ER#INI"ILDA #ANI#BO, LEONOR ". SU#A$ANG, CANDELARIA L. SOLI#AN, #ARIA L. %UILANTANG, #ARIA L. #AGISA, NATALIA #. ALON&O, LOURDES #. NAVARO, 'RANCISCA #. ATENCIO, ERLINDA #ANALASTAS, TARCILA #. SA# ANG, ESTER #. ALACIO, #A(I#A R. DELA CRU&, BELEN A. SAGU#, 'ELICIDAD TURLA, 'LORENCIA #. DELA E!A, EUGENIA #. LALU, )ULIANA G. #AGAT, CECILIA SANGUYO, ANA ALON&O, RU'INA . #ALLARI, ROSARIO #. ALARCON, RU'INA C. GULA A, &OILA B. #ANALUS, CORA&ON C. CAL#A, #ARTA A. GULA A, TEODORA #. "ERNANDE&, 'ER#IN B. DELA E!A, #ARIA DELA A& B. CULALA, ES ERAN&A #ANA OL, )UANITA #. BRIONES, VERGINIA #. GUEVARRA, #A(I#A ANGULO, E#ILIA SANGIL, TEO'ILA R. UN&ALAN, )ANUARIA G. GARCIA, ERLA B. BALINGIT, BELEN A. CULALA, ILAR %. GALANG, ROSARIO C. BUCO, GAUDENCIA C. DELA E!A, RU'INA %. CATACUTAN, 'RANCIA A. BUCO, ASTORA C. GUEVARRA, VICTORIA #. DELA CRU&, ETRONILA O. DELA CRU&, &ENAIDA . DELA CRU&, CORA&ON #. SUBA, E#ERINCIANA A. VINUYA, LYDIA A. SANC"E&, ROSALINA #. G.R. No. 162230

Present: PUNO, C. J., CARPIO, CORONA, CARPIO MORALES, VELASCO, R!, NAC"URA, LEONAR#O$#E CAS%RO, &RION, PERAL%A, &ERSAMIN, #EL CAS%ILLO, A&A#, VILLARAMA, R!, PERE', an( MEN#O'A, JJ.

BUCO, ATRICIA A. BERNARDO, LUCILA ". AYA$AL, #AGDALENA LI$AG, ESTER C. BALINGIT, )OVITA A. DAVID, E#ILIA C. #ANGILIT, VERGINIA #. BANGIT, GUILLER#A S. BALINGIT, TERECITA ANGILINAN, #A#ERTA C. UNO, CRISENCIANA C. GULA A, SE'ERINA S. TURLA, #A(I#A B. TURLA, LEONICIA G. GUEVARRA, ROSALINA #. CULALA, CATALINA Y. #ANIO, #A#ERTA T. SAGU#, CARIDAD L. TURLA, et *+. I, t-e.r /*p*/.t0 *,1 *2 mem3er2 o4 t-e /#*+*0* Lo+*2 Or5*,.6*t.o,7, Petitioners, - 0ersus -

Pro)ul*ate(: April +,, +-.-

T"E "ONORABLE E(ECUTIVE SECRETARY ALBERTO G. RO#ULO, T"E "ONORABLE SECRETARY O' 'OREIGN A''AIRS DELIA DO#INGO8 ALBERT, T"E "ONORABLE SECRETARY O' )USTICE #ERCEDITAS N. GUTIERRE&, *,1 T"E "ONORABLE SOLICITOR GENERAL AL'REDO L. BENI AYO, Respondents! 1$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$1 DECISION DEL CASTILLO, J.: %he %reat2 of Peace 3ith apan, insofar as it barre( future clai)s such as those asserte( b2 plaintiffs in these actions, e1chan*e( full co)pensation of plaintiffs for a future peace! "istor2 has 0in(icate( the 3is(o) of that bar*ain! An( 3hile full co)pensation for plaintiffs4 har(ships, in the purel2 econo)ic sense, has been (enie( these for)er prisoners an( countless other sur0i0ors of the 3ar, the i))easurable bount2 of life for the)sel0es an( their posterit2 in a free societ2 an( in a )ore peaceful 3orl( ser0ices the (ebt!5.6

%here is a broa( ran*e of 0itall2 i)portant areas that )ust be re*ularl2 (eci(e( b2 the E1ecuti0e #epart)ent 3ithout either challen*e or interference b2 the u(iciar2! One such area in0ol0es the (elicate arena of forei*n relations! It 3oul( be stran*e in(ee( if the courts an( the e1ecuti0e spo7e 3ith (ifferent 0oices in the real) of forei*n polic2! Precisel2 because of the nature of the 8uestions presente(, an( the lapse of )ore than 9- 2ears since the con(uct co)plaine( of, 3e )a7e no atte)pt to la2 (o3n *eneral *ui(elines co0erin* other situations not in0ol0e( here, an( confine the opinion onl2 to the 0er2 8uestions necessar2 to reach a (ecision on this )atter!

Factual Antecedents

%his is an ori*inal Petition for Certiorari un(er Rule 9: of the Rules of Court 3ith an application for the issuance of a 3rit of preli)inar2 )an(ator2 in;unction a*ainst the Office of the E1ecuti0e Secretar2, the Secretar2 of the #epart)ent of <orei*n Affairs =#<A>, the Secretar2 of the #epart)ent of ustice =#O >, an( the Office of the Solicitor ?eneral =OS?>!

Petitioners are all )e)bers of the MALA@A LOLAS, a non$stoc7, non$profit or*aniAation re*istere( 3ith the Securities an( E1chan*e Co))ission, establishe( for the purpose of pro0i(in* ai( to the 0icti)s of rape b2 apanese )ilitar2 forces in the Philippines (urin* the Secon( Borl( Bar!

Petitioners narrate that (urin* the Secon( Borl( Bar, the apanese ar)2 attac7e( 0illa*es an( s2ste)aticall2 rape( the 3o)en as part of the (estruction of the 0illa*e! %heir co))unities 3ere bo)be(, houses 3ere loote( an( burne(, an( ci0ilians 3ere publicl2 torture(, )utilate(, an( slau*htere(! apanese sol(iers forcibl2 seiAe( the 3o)en an( hel( the) in houses or cells, 3here the2 3ere repeate(l2 rape(, beaten, an( abuse( b2 apanese sol(iers! As a result of the actions of their apanese tor)entors, the petitioners ha0e spent their li0es in )iser2, ha0in* en(ure( ph2sical in;uries, pain an( (isabilit2, an( )ental an( e)otional sufferin*!5+6 Petitioners clai) that since .CC,, the2 ha0e approache( the E1ecuti0e #epart)ent throu*h the #O , #<A, an( OS?, re8uestin* assistance in filin* a clai) a*ainst the apanese officials an( )ilitar2 officers 3ho or(ere( the establish)ent of the /co)fort 3o)enD stations in the Philippines! "o3e0er, officials of the E1ecuti0e #epart)ent (ecline( to assist the petitioners, an( too7 the position that the in(i0i(ual clai)s of the co)fort 3o)en for co)pensation ha( alrea(2 been full2 satisfie( b2 apanEs co)pliance 3ith the Peace %reat2 bet3een the Philippines an( apan!

I22ue2

"ence, this petition 3here petitioners pra2 for this court to =a> (eclare that respon(ents co))itte( *ra0e abuse of (iscretion a)ountin* to lac7 or e1cess of (iscretion in refusin* to espouse their clai)s for the cri)es a*ainst hu)anit2 an( 3ar cri)es co))itte( a*ainst the)F an( =b> co)pel the respon(ents to espouse their clai)s for official apolo*2 an( other for)s of reparations a*ainst apan before the International Court of ustice =IC > an( other international tribunals!

Petitioners arguments

Petitioners ar*ue that the *eneral 3ai0er of clai)s )a(e b2 the Philippine *o0ern)ent in the %reat2 of Peace 3ith apan is 0oi(! %he2 clai) that the co)fort 3o)en s2ste) establishe( b2 apan, an( the brutal rape an( ensla0e)ent of petitioners constitute( a cri)e a*ainst hu)anit2,5G6 se1ual sla0er2,5H6 an( torture!5:6 %he2 alle*e that the prohibition a*ainst these international cri)es is jus cogens nor)s fro) 3hich no (ero*ation is possibleF as such, in 3ai0in* the clai)s of <ilipina co)fort 3o)en an( failin* to espouse their co)plaints a*ainst apan, the Philippine *o0ern)ent is in breach of its le*al obli*ation not to affor( i)punit2 for cri)es a*ainst hu)anit2! <inall2, petitioners assert that the Philippine *o0ern)entEs acceptance of the /apolo*iesD )a(e b2 apan as 3ell as fun(s fro) the Asian Bo)enEs <un( =AB<> 3ere contrar2 to international la3!

Respondents Arguments

Respon(ents )aintain that all clai)s of the Philippines an( its nationals relati0e to the 3ar 3ere (ealt 3ith in the San <rancisco Peace %reat2 of .C:. an( the bilateral Reparations A*ree)ent of .C:9!596

Article .H of the %reat2 of Peace5I6 pro0i(es:

Article .H! Clai)s an( Propert2 a> It is reco*niAe( that apan shoul( pa2 reparations to the Allie( Po3ers for the (a)a*e an( sufferin* cause( b2 it (urin* the 3ar! Ne0ertheless it is also reco*niAe( that the resources of apanare not presentl2 sufficient, if it is to )aintain a 0iable econo)2, to )a7e co)plete reparation for all such (a)a*e an( sufferin* an( at the present ti)e )eet its other obli*ations!

b> E1cept as other3ise pro0i(e( in the present %reat2, the Allie( Po3ers 3ai0e all reparations clai)s of the Allie( Po3ers, other clai)s of the Allie( Po3ers an( their nationals arisin* out of an2 actions ta7en b2 apan an( its nationals in the course of the prosecution of the 3ar, an( clai)s of the Allie( Po3ers for (irect )ilitar2 costs of occupation!

In a((ition, respon(ents ar*ue that the apolo*ies )a(e b2 apan5,6 ha0e been satisfactor2, an( that apan ha( a((resse( the in(i0i(ual clai)s of the 3o)en throu*h the atone)ent )one2 pai( b2 the Asian Bo)enEs <un(!

Historical Background

%he co)fort 3o)en s2ste) 3as the tra*ic le*ac2 of the Rape of Nan7in*! In #ece)ber .CGI, apanese )ilitar2 forces capture( the cit2 of Nan7in* in China an( be*an a /barbaric ca)pai*n of terrorD 7no3n as the Rape of Nan7in*, 3hich inclu(e( the rapes an( )ur(ers of an esti)ate( +-,--- to ,-,--- Chinese 3o)en, inclu(in* 2oun* *irls, pre*nant )others, an( el(erl2 3o)en!5C6

In reaction to international outcr2 o0er the inci(ent, the apanese *o0ern)ent sou*ht 3a2s to en( international con(e)nation5.-6 b2 establishin* the /co)fort 3o)enD s2ste)! Un(er this s2ste), the )ilitar2 coul( si)ultaneousl2 appease sol(iers4 se1ual appetites an( contain sol(iers4 acti0ities 3ithin a re*ulate( en0iron)ent!5..6 Co)fort stations 3oul( also pre0ent the sprea( of 0enereal (isease a)on* sol(iers an( (iscoura*e sol(iers fro) rapin* inhabitants of occupie( territories!5.+6

#ail2 life as a co)fort 3o)an 3as /un)iti*ate( )iser2!D5.G6 %he )ilitar2 force( 0icti)s into barrac7s$st2le stations (i0i(e( into tin2 cubicles 3here the2 3ere force( to li0e, sleep, an( ha0e se1 3ith as )an2 G- sol(iers per (a2!5.H6 %he G- )inutes allotte( for se1ual relations 3ith each sol(ier 3ere G-$)inute incre)ents of uni)a*inable horror for the 3o)en!5.:6 #isease 3as ra)pant!5.96 Militar2 (octors re*ularl2 e1a)ine( the 3o)en, but these chec7s 3ere carrie( out to pre0ent the sprea( of 0enereal (iseasesF little notice 3as ta7en of the fre8uent ci*arette burns, bruises, ba2onet stabs an( e0en bro7en bones inflicte( on the 3o)en b2 sol(iers!

<e3er than G-J of the 3o)en sur0i0e( the 3ar!5.I6 %heir a*on2 continue( in ha0in* to suffer 3ith the resi(ual ph2sical, ps2cholo*ical, an( e)otional scars fro) their for)er li0es! So)e returne( ho)e an( 3ere ostraciAe( b2 their fa)ilies! So)e co))itte( suici(e! Others, out of sha)e, ne0er returne( ho)e!5.,6

Efforts to Secure Reparation

%he )ost pro)inent atte)pts to co)pel the apanese *o0ern)ent to accept le*al responsibilit2 an( pa2 co)pensator2 (a)a*es for the co)fort 3o)en s2ste) 3ere throu*h a series of la3suits, (iscussion at the Unite( Nations =UN>, resolutions b2 0arious nations, an( the Bo)enEs International Cri)inal %ribunal! %he apanese *o0ern)ent, in turn, respon(e( throu*h a series of public apolo*ies an( the creation of the AB<!5.C6

La suits

In #ece)ber .CC., Ki) "a7$Sun an( t3o other sur0i0ors file( the first la3suit in apan b2 for)er co)fort 3o)en a*ainst the apanese *o0ern)ent! %he %o72o #istrict Court ho3e0er (is)isse( their case!5+-6 Other suits follo3e(,5+.6 but the apanese *o0ern)ent has, thus far, successfull2 cause( the (is)issal of e0er2 case!5++6

Un(oubte(l2 frustrate( b2 the failure of liti*ation before apanese courts, 0icti)s of the co)fort 3o)en s2ste) brou*ht their clai)s before the Unite( States =US>! On Septe)ber .,, +---, .: co)fort 3o)en file( a class action la3suit in the US #istrict Court for the #istrict of Colu)bia5+G6 Lsee7in* )one2 (a)a*es for 5alle*e(l26 ha0in* been sub;ecte( to se1ual sla0er2 an( torture before an( (urin* Borl( Bar II,L in 0iolation of Lboth positi0e an( custo)ar2 international la3!L %he case 3as file( pursuant to the Alien %ort Clai)s Act =/A%CAD>,5+H6 3hich allo3e( the plaintiffs to sue the apanese *o0ern)ent in a US fe(eral (istrict court!5+:6 On October H, +--., the (istrict court (is)isse( the la3suit (ue to lac7 of ;uris(iction o0er apan, statin* that /5t6here is no 8uestion that this court is not the appropriate foru) in 3hich plaintiffs )a2 see7 to reopen 1 1 1 (iscussions nearl2 half a centur2 later 1 1 1 5E60en if apan (i( not en;o2 so0erei*n i))unit2, plaintiffs4 clai)s are non$;usticiable an( )ust be (is)isse(!D

%he #istrict of Colu)bia Court of Appeals affir)e( the lo3er court4s (is)issal of the case!5+96 On appeal, the US Supre)e Court *rante( the 3o)enEs petition for 3rit of certiorari, 0acate( the ;u(*)ent of the #istrict of Colu)bia Court of Appeals, an( re)an(e( the case!5+I6 On re)an(, the Court of Appeals affir)e( its prior (ecision, notin* that /)uch as 3e )a2 feel for the pli*ht of the appellants, the courts of the US si)pl2 are not authoriAe( to hear their case!D5+,6 %he 3o)en a*ain brou*ht their case to the US Supre)e Court 3hich (enie( their petition for 3rit of certiorari on <ebruar2 +., +--9!

Efforts at t!e "nited #ations

In .CC+, the Korean Council for the Bo)en #rafte( for Militar2 Se1ual Sla0er2 b2 apan =KCBS>, sub)itte( a petition to the UN "u)an Ri*hts Co))ission =UN"RC>, as7in* for assistance in in0esti*atin* cri)es co))itte( b2 apan a*ainst Korean 3o)en an( see7in* reparations for for)er co)fort 3o)en!5+C6 %he UN"RC place( the issue on its a*en(a an( appointe( Ra(hi7a Coo)aras3a)2 as the issue4s special in0esti*ator! In .CC9, Coo)aras3a)2 issue( a Report reaffir)in* apan4s responsibilit2 in forcin* Korean 3o)en to act as se1 sla0es for the i)perial ar)2, an( )a(e the follo3in* recommendations:

A! .GI!

At the national le0el %he ?o0ern)ent of apan shoul(:

=a> Ac7no3le(*e that the s2ste) of co)fort stations set up b2 the apanese I)perial Ar)2 (urin* the Secon( Borl( Bar 3as a 0iolation of its obli*ations un(er international la3 an( accept le*al responsibilit2 for that 0iolationF =b> Pa2 co)pensation to in(i0i(ual 0icti)s of apanese )ilitar2 se1ual sla0er2 accor(in* to principles outline( b2 the Special Rapporteur of the Sub$Co))ission on Pre0ention of #iscri)ination an( Protection of Minorities on the ri*ht to restitution, co)pensation an( rehabilitation for 0icti)s of *ra0e 0iolations of hu)an ri*hts an( fun(a)ental free(o)s! A special a()inistrati0e tribunal for this purpose shoul( be set up 3ith a li)ite( ti)e$fra)e since )an2 of the 0icti)s are of a 0er2 a(0ance( a*eF =c> Ma7e a full (isclosure of (ocu)ents an( )aterials in its possession 3ith re*ar( to co)fort stations an( other relate( acti0ities of the apanese I)perial Ar)2 (urin* the Secon( Borl( BarF =(> Ma7e a public apolo*2 in 3ritin* to in(i0i(ual 3o)en 3ho ha0e co)e for3ar( an( can be substantiate( as 3o)en 0icti)s of apanese )ilitar2 se1ual sla0er2F =e> Raise a3areness of these issues b2 a)en(in* e(ucational curricula to reflect historical realitiesF

=f> I(entif2 an( punish, as far as possible, perpetrators in0ol0e( in the recruit)ent an( institutionaliAation of co)fort stations (urin* the Secon( Borl( Bar!

?a2 ! Mc#ou*al, the Special Rapporteur for the UN Sub$Co))ission on Pre0ention of #iscri)ination an( Protection of Minorities, also presente( a report to the Sub$ Co))ittee on une ++, .CC, entitle( Contemporary Forms of Slavery: Systematic Rape, Sexual Slavery and Slavery-li e Practices !uring "rmed Conflict. %he report inclu(e( an appen(i1 entitled "n "nalysis of t#e $egal $ia%ility of t#e &overnment of Japan for 'Comfort (omen Stations' esta%lis#ed during t#e Second (orld (ar, 5G-6 3hich containe( the follo3in* fin(in*s:

9,! %he present report conclu(es that the apanese ?o0ern)ent re)ains liable for *ra0e 0iolations of hu)an ri*hts an( hu)anitarian la3, 0iolations that a)ount in their totalit2 to cri)es a*ainst hu)anit2! %he apanese ?o0ern)entEs ar*u)ents to the contrar2, inclu(in* ar*u)ents that see7 to attac7 the un(erl2in* hu)anitarian la3 prohibition of ensla0e)ent an( rape, re)ain as unpersuasi0e to(a2 as the2 3ere 3hen the2 3ere first raise( before the Nure)ber* 3ar cri)es tribunal )ore than :- 2ears a*o! In a((ition, the apanese ?o0ern)entEs ar*u)ent that apan has alrea(2 settle( all clai)s fro) the Secon( Borl( Bar throu*h peace treaties an( reparations a*ree)ents follo3in* the 3ar re)ains e8uall2 unpersuasi0e! %his is (ue, in lar*e part, to the failure until 0er2 recentl2 of the apanese ?o0ern)ent to a()it the e1tent of the apanese )ilitar2Es (irect in0ol0e)ent in the establish)ent an( )aintenance of these rape centres! %he apanese ?o0ern)entEs silence on this point (urin* the perio( in 3hich peace an( reparations a*ree)ents bet3een apan an( other Asian ?o0ern)ents 3ere bein* ne*otiate( follo3in* the en( of the 3ar )ust, as a )atter of la3 an( ;ustice, preclu(e apan fro) rel2in* to(a2 on these peace treaties to e1tin*uish liabilit2 in these cases! 9C! %he failure to settle these clai)s )ore than half a centur2 after the cessation of hostilities is a testa)ent to the (e*ree to 3hich the li0es of 3o)en continue to be un(er0alue(! Sa(l2, this failure to a((ress cri)es of a se1ual nature co))itte( on a )assi0e scale (urin* the Secon( Borl( Bar has a((e( to the le0el of i)punit2 3ith 3hich si)ilar cri)es are co))itte( to(a2! %he ?o0ern)ent of apan has ta7en so)e steps to apolo*iAe an( atone for the rape an( ensla0e)ent of o0er +--,--- 3o)en an( *irls 3ho 3ere brutaliAe( in /co)fort stationsD (urin* the Secon( Borl( Bar! "o3e0er, an2thin* less than full an( un8ualifie( acceptance b2 the ?o0ern)ent of apan of le*al liabilit2 an( the conse8uences that flo3 fro) such liabilit2 is 3holl2 ina(e8uate! It )ust no3 fall to the ?o0ern)ent of apan to ta7e the necessar2 final steps to pro0i(e a(e8uate re(ress!

%he UN, since then, has not ta7en an2 official action (irectin* apan to pro0i(e the reparations sou*ht!

$omen%s &nternational $ar 'rimes

(ri)unal

%he Bo)en4s International Bar Cri)es %ribunal =BIBC%> 3as a /people4s tribunalD establishe( b2 a nu)ber of Asian 3o)en an( hu)an ri*hts or*aniAations, supporte( b2 an international coalition of non$*o0ern)ental or*aniAations!5G.6 <irst propose( in .CC,, the BIBC% con0ene( in %o72o in +--- in or(er to /a(;u(icate apan4s )ilitar2 se1ual 0iolence, in particular the ensla0e)ent of co)fort 3o)en, to brin* those responsible for it to ;ustice, an( to en( the on*oin* c2cle of i)punit2 for 3arti)e se1ual 0iolence a*ainst 3o)en!D

After e1a)inin* the e0i(ence for )ore than a 2ear, the /tribunalD issue( its 0er(ict on #ece)ber H, +--., fin(in* the for)er E)peror "irohito an( the State of apan *uilt2 of cri)es a*ainst hu)anit2 for the rape an( se1ual sla0er2 of 3o)en!5G+6 It bears stressin*, ho3e0er, that althou*h the tribunal inclu(e( prosecutors, 3itnesses, an( ;u(*es, its ;u(*)ent 3as not le*all2 bin(in* since the tribunal itself 3as or*aniAe( b2 pri0ate citiAens!

Action )* &ndi+idual ,o+ernments

On anuar2 G., +--I, US Representati0e Michael "on(a of California, alon* 3ith si1 co$sponsor representati0es, intro(uce( "ouse Resolution .+. 3hich calle( for apanese action in li*ht of the on*oin* stru**le for closure b2 for)er co)fort 3o)en! %he Resolution 3as for)all2 passe( on ul2 G-, +--I,5GG6 an( )a(e four (istinct

(e)an(s:

5I6t is the sense of the "ouse of Representati0es that the ?o0ern)ent of apan =.> shoul( for)all2 ac7no3le(*e, apolo*iAe, an( accept historical responsibilit2 in a clear an( une8ui0ocal )anner for its I)perial Ar)e( <orces4 coercion of 2oun* 3o)en into se1ual sla0er2, 7no3n to the 3orl( as /co)fort 3o)enD, (urin* its colonial an( 3arti)e occupation of Asia an( the Pacific Islan(s fro) the .CG-s throu*h the (uration of Borl( Bar IIF =+> 3oul( help to resol0e recurrin* 8uestions about the sincerit2 an( status of prior state)ents if the Pri)e Minister of apan 3ere to )a7e such an apolo*2 as a public state)ent in his official capacit2F =G> shoul( clearl2 an( publicl2 refute an2 clai)s that the se1ual ensla0e)ent an( traffic7in* of the /co)fort 3o)enD for the apanese I)perial Ar)2 ne0er occurre(F an( =H> shoul( e(ucate current an( future *enerations about this horrible cri)e 3hile follo3in* the reco))en(ations of the international co))unit2 3ith respect to the /co)fort 3o)en!D5GH6

In #ece)ber +--I, the European Parlia)ent, the *o0ernin* bo(2 of the European Union, (rafte( a resolution si)ilar to "ouse Resolution .+.!5G:6 Entitle(, /Justice for Comfort (omen,D the resolution (e)an(e(: =.> a for)al ac7no3le(*)ent of responsibilit2 b2 the apanese *o0ern)entF =+> a re)o0al of the le*al obstacles pre0entin* co)pensationF an( =G> unabri(*e( e(ucation of the past! %he resolution also stresse( the ur*enc2 3ith 3hich apan shoul( act on these issues, statin*: /the ri*ht of in(i0i(uals to clai) reparations a*ainst the *o0ern)ent shoul( be e1pressl2 reco*niAe( in national la3, an( cases for reparations for the sur0i0ors of se1ual sla0er2, as a cri)e un(er international la3, shoul( be prioritiAe(, ta7in* into account the a*e of the sur0i0ors!D

%he Cana(ian an( #utch parlia)ents ha0e each follo3e( suit in (raftin* resolutions a*ainst apan! Cana(a4s resolution (e)an(s the apanese *o0ern)ent to issue a for)al apolo*2, to a()it that its I)perial Militar2 coerce( or force( hun(re(s of thousan(s of 3o)en into se1ual sla0er2, an( to restore references in apanese te1tboo7s to its 3ar cri)es!5G96 %he #utch parlia)ent4s resolution calls for the apanese *o0ern)ent to uphol( the .CCG (eclaration of re)orse )a(e b2 Chief Cabinet Secretar2 @ohei Kono!

%he <orei*n Affairs Co))ittee of the Unite( Kin*(o)Es Parlia)ent also pro(uce( a report in No0e)ber, +--, entitle(, L&lo%al Security: Japan and )oreaL 3hich conclu(e( that apan shoul( ac7no3le(*e the pain cause( b2 the issue of co)fort 3o)en in or(er to ensure cooperation bet3een apan an( Korea!

Statements of Remorse made )* representati+es of t!e Japanese go+ernment

Various officials of the ?o0ern)ent of apan ha0e issue( the follo3in* public state)ents concernin* the co)fort s2ste):

a> State)ent b2 the Chief Cabinet Secretar2 @ohei Kono in .CCG:

%he ?o0ern)ent of apan has been con(uctin* a stu(2 on the issue of 3arti)e Lco)fort 3o)enL since #ece)ber .CC.! I 3ish to announce the fin(in*s as a result of that stu(2! As a result of the stu(2 3hich in(icates that co)fort stations 3ere operate( in e1tensi0e areas for lon* perio(s, it is apparent that there e1iste( a *reat nu)ber of co)fort 3o)en! Co)fort stations 3ere operate( in response to the re8uest of the )ilitar2 authorities of the (a2! %he then apanese )ilitar2 3as, (irectl2 or in(irectl2, in0ol0e( in the establish)ent an( )ana*e)ent of the co)fort stations an( the transfer of co)fort 3o)en! %he recruit)ent of the co)fort 3o)en 3as con(ucte( )ainl2 b2 pri0ate recruiters 3ho acte( in response to the re8uest of the )ilitar2! %he ?o0ern)ent stu(2 has re0eale( that in )an2 cases the2 3ere recruite( a*ainst their o3n 3ill, throu*h coa1in* coercion, etc!, an( that, at ti)es, a()inistrati0eM)ilitar2 personnel (irectl2 too7 part in the recruit)ents! %he2 li0e( in )iser2 at co)fort stations un(er a coerci0e at)osphere! As to the ori*in of those co)fort 3o)en 3ho 3ere transferre( to the 3ar areas, e1clu(in* those fro) apan, those fro) the Korean Peninsula accounte( for a lar*e part! %he Korean Peninsula3as un(er apanese rule in those (a2s, an( their recruit)ent, transfer, control, etc!, 3ere con(ucte( *enerall2 a*ainst their 3ill, throu*h coa1in*, coercion, etc! Un(eniabl2, this 3as an act, 3ith the in0ol0e)ent of the )ilitar2 authorities of the (a2, that se0erel2 in;ure( the honor an( (i*nit2 of )an2 3o)en! %he ?o0ern)ent of apan 3oul( li7e to ta7e this opportunit2 once a*ain to e1ten( its sincere apolo*ies an( re)orse to all those, irrespecti0e of place of ori*in, 3ho suffere( i))easurable pain an( incurable ph2sical an( ps2cholo*ical 3oun(s as co)fort 3o)en!

It is incu)bent upon us, the ?o0ern)ent of apan, to continue to consi(er seriousl2, 3hile listenin* to the 0ie3s of learne( circles, ho3 best 3e can e1press this senti)ent! Be shall face s8uarel2 the historical facts as (escribe( abo0e instea( of e0a(in* the), an( ta7e the) to heart as lessons of histor2! Be hereb2 reiterate( our fir) (eter)ination ne0er to repeat the sa)e )ista7e b2 fore0er en*ra0in* such issues in our )e)ories throu*h the stu(2 an( teachin* of histor2! As actions ha0e been brou*ht to court in apan an( interests ha0e been sho3n in this issue outsi(e apan, the ?o0ern)ent of apan shall continue to pa2 full attention to this )atter, inclu(in* pri0ate researche( relate( thereto!

b>

Pri)e Minister %o)iichi Mura2a)aEs State)ent in .CCH

On the issue of 3arti)e /co)fort 3o)enD, 3hich seriousl2 staine( the honor an( (i*nit2 of )an2 3o)en, I 3oul( li7e to ta7e this opportunit2 once a*ain to e1press )2 profoun( an( sincere re)orse an( apolo*iesD

c> Letters fro) the Pri)e Minister of apan to In(i0i(ual Co)fort Bo)en %he issue of co)fort 3o)en, 3ith the in0ol0e)ent of the apanese )ilitar2 authorities at that ti)e, 3as a *ra0e affront to the honor an( (i*nit2 of a lar*e nu)ber of 3o)en! As Pri)e Minister of apan, I thus e1ten( ane3 )2 )ost sincere apolo*ies an( re)orse to all the 3o)en 3ho en(ure( i))easurable an( painful e1periences an( suffere( incurable ph2sical an( ps2cholo*ical 3oun(s as co)fort 3o)en! I belie0e that our countr2, painfull2 a3are of its )oral responsibilities, 3ith feelin*s of apolo*2 an( re)orse, shoul( face up s8uarel2 to its past histor2 an( accuratel2 con0e2 it to future *enerations!

(> %he #iet = apanese Parlia)ent> passe( resolutions in .CC: an( +--:

Sole)nl2 reflectin* upon the )an2 instances of colonial rule an( acts of a**ression that occurre( in )o(ern 3orl( histor2, an( reco*niAin* that apan carrie( out such acts in the past an( inflicte( sufferin* on the people of other countries, especiall2 in Asia, the Me)bers of this "ouse hereb2 e1press (eep re)orse! =Resolution of the "ouse of Representati0es a(opte( on une C, .CC:>

e> Various Public State)ents b2 apanese Pri)e Minister ShinAo Abe I ha0e tal7e( about this )atter in the #iet sessions last 2ear, an( recentl2 as 3ell, an( to the press! I ha0e been consistent! I 3ill stan( b2 the Kono State)ent! %his is our consistent position! <urther, 3e ha0e been apolo*iAin* sincerel2 to those 3ho suffere( i))easurable pain an( incurable ps2cholo*ical 3oun(s as co)fort 3o)en! <or)er Pri)e Ministers, inclu(in* Pri)e Ministers KoiAu)i an( "ashi)oto, ha0e issue( letters to the co)fort 3o)en! I 3oul( li7e to be clear that I carr2 the sa)e feelin*! %his has not chan*e( e0en sli*htl2! =E1cerpt fro) Re)ar7s b2 Pri)e Minister Abe at an Inter0ie3 b2 N"K, March .., +--I>! I a) apolo*iAin* here an( no3! I a) apolo*iAin* as the Pri)e Minister an( it is as state( in the state)ent b2 the Chief Cabinet Secretar2 Kono! =E1cerpt fro) Re)ar7s b2 Pri)e Minister Abe at the &u(*et Co))ittee, the "ouse of Councilors, the #iet of apan, March +9, +--I>! I a) (eepl2 s2)pathetic to the for)er co)fort 3o)en 3ho suffere( har(ships, an( I ha0e e1presse( )2 apolo*ies for the e1tre)el2 a*oniAin* circu)stances into 3hich the2 3ere place(! =E1cerpt fro) %elephone Conference b2 Pri)e Minister Abe to Presi(ent ?eor*e B! &ush, April G, +--I>! I ha0e to e1press s2)path2 fro) the botto) of )2 heart to those people 3ho 3ere ta7en as 3arti)e co)fort 3o)en! As a hu)an bein*, I 3oul( li7e to e1press )2 s2)pathies, an( also as pri)e )inister of apan I nee( to apolo*iAe to the)! M2 a()inistration has been sa2in* all alon* that 3e continue to stan( b2 the Kono State)ent! Be feel responsible for ha0in* force( these 3o)en to *o throu*h that har(ship an( pain as co)fort 3o)en un(er the circu)stances at the ti)e! =E1cerpt fro) an inter0ie3 article LA Con0ersation 3ith ShinAo AbeL b2 the Bashin*ton Post, April ++, +--I>! 1 1 1 both personall2 an( as Pri)e Minister of apan, )2 heart *oes out in s2)path2 to all those 3ho suffere( e1tre)e har(ships as co)fort 3o)enF an( I e1presse( )2 apolo*ies for the fact that the2 3ere force( to en(ure such e1tre)e an( harsh con(itions! "u)an ri*hts are 0iolate( in )an2 parts of the 3orl( (urin* the +-th Centur2F therefore 3e )ust 3or7 to )a7e the +.st Centur2 a 3on(erful centur2 in 3hich no hu)an ri*hts are 0iolate(! An( the ?o0ern)ent of apan an( I 3ish to )a7e si*nificant contributions to that en(! =E1cerpt fro) Pri)e Minister Abe4s re)ar7s at the oint Press A0ailabilit2 after the su))it )eetin* at Ca)p #a0i( bet3een Pri)e Minister Abe an( Presi(ent &ush, April +I, +--I>!

(!e Asian $omen%s Fund

Establishe( b2 the apanese *o0ern)ent in .CC:, the AB< represente( the *o0ern)ent4s concrete atte)pt to a((ress its )oral responsibilit2 b2 offerin* )onetar2 co)pensation to 0icti)s of the co)fort 3o)en s2ste)!5GI6 %he purpose of the AB< 3as to sho3 atone)ent of the apanese people throu*h e1pressions of apolo*2 an( re)orse to the for)er 3arti)e co)fort 3o)en, to restore their honor, an( to (e)onstrate apanEs stron* respect for 3o)en!5G,6

%he AB< announce( three pro*ra)s for for)er co)fort 3o)en 3ho applie( for assistance: =.> an atone)ent fun( pa2in* N+ )illion =appro1i)atel2 O+-,---> to each 3o)anF =+> )e(ical an( 3elfare support pro*ra)s, pa2in* N+!:$G )illion =O+:,---$OG-,---> for each 3o)anF an( =G> a letter of apolo*2 fro) the apanese Pri)e Minister to each 3o)an! <un(in* for the pro*ra) ca)e fro) the apanese *o0ern)ent an( pri0ate (onations fro) the apanese people! As of March +--9, the AB< pro0i(e( NI-)illion =appro1i)atel2 OI )illion> for these pro*ra)s in South Korea, %ai3an, an( the PhilippinesF NG,- )illion =appro1i)atel2 OG!, )illion> in In(onesiaF an( N+H+ )illion =appro1i)atel2 O+!H )illion> in the Netherlan(s!

On anuar2 .:, .CCI, the AB< an( the Philippine *o0ern)ent si*ne( a Me)oran(u) of Un(erstan(in* for )e(ical an( 3elfare support pro*ra)s for for)er co)fort 3o)en! O0er the ne1t fi0e 2ears, these 3ere i)ple)ente( b2 the #epart)ent of Social Belfare an( #e0elop)ent!

Our Ru+.,5

Strippe( (o3n to its essentials, the issue in this case is 3hether the E1ecuti0e #epart)ent co))itte( *ra0e abuse of (iscretion in not espousin* petitionersE clai)s for official apolo*2 an( other for)s of reparations a*ainst apan!

%he petition lac7s )erit!

From a -omestic La Perspecti+e. t!e E/ecuti+e -epartment !as t!e e/clusi+e prerogati+e to determine !et!er to espouse petitioners claims against Japan.

*a er v. Carr5GC6 re)ains the startin* point for anal2sis un(er the political 8uestion (octrine! %here the US Supre)e Court e1plaine( that:

1 1 1 Pro)inent on the surface of an2 case hel( to in0ol0e a political 8uestion is foun( a te1tuall2 (e)onstrable constitutional co))it)ent of the issue to a coor(inate political (epart)ent or a lac7 of ;u(iciall2 (isco0erable an( )ana*eable stan(ar(s for resol0in* it, or the i)possibilit2 of (eci(in* 3ithout an initial polic2 (eter)ination of a 7in( clearl2 for non$;u(icial (iscretionF or the i)possibilit2 of a court4s un(erta7in* in(epen(ent resolution 3ithout e1pressin* lac7 of the respect (ue coor(inate branches of *o0ern)entF or an unusual nee( for un8uestionin* a(herence to a political (ecision alrea(2 )a(eF or the potentialit2 of e)barrass)ent fro) )ultifarious pronounce)ents b2 0arious (epart)ents on 8uestion!

In +a,ada v. Cuenco,5H-6 3e hel( that political 8uestions refer Lto those 8uestions 3hich, un(er the Constitution, are to be (eci(e( b2 the people in their so0erei*n capacit2, or in re*ar( to 3hich full (iscretionar2 authorit2 has been (ele*ate( to the le*islati0e or e1ecuti0e branch of the *o0ern)ent! It is concerne( 3ith issues (epen(ent upon the 3is(o), not le*alit2 of a particular )easure!L

Certain t2pes of cases often ha0e been foun( to present political 8uestions!5H.6 One such cate*or2 in0ol0es 8uestions of forei*n relations! It is 3ell$establishe( that L5t6he con(uct of the forei*n relations of our *o0ern)ent is co))itte( b2 the Constitution to the e1ecuti0e an( le*islati0e$$4the political4$$(epart)ents of the *o0ern)ent, an( the propriet2 of 3hat )a2 be (one in the e1ercise of this political po3er is not sub;ect to ;u(icial in8uir2 or (ecision!L5H+6 %he US Supre)e Court has further cautione( that (ecisions relatin* to forei*n polic2

are (elicate, co)ple1, an( in0ol0e lar*e ele)ents of prophec2! %he2 are an( shoul( be un(erta7en onl2 b2 those (irectl2 responsible to the people 3hose 3elfare the2 a(0ance or i)peril! %he2 are (ecisions of a 7in( for 3hich the u(iciar2 has neither aptitu(e, facilities nor responsibilit2!5HG6

%o be sure, not all cases i)plicatin* forei*n relations present political 8uestions, an( courts certainl2 possess the authorit2 to construe or in0ali(ate treaties an( e1ecuti0e a*ree)ents!5HH6 "o3e0er, the 8uestion 3hether the Philippine *o0ern)ent shoul( espouse clai)s of its nationals a*ainst a forei*n *o0ern)ent is a forei*n relations )atter, the authorit2 for 3hich is (e)onstrabl2 co))itte( b2 our Constitution not to the courts but to the political branches! In this case, the E1ecuti0e #epart)ent has alrea(2 (eci(e( that it is to the best interest of the countr2 to 3ai0e all clai)s of its nationals for reparations a*ainst apan in the %reat2 of Peace of .C:.! %he 3is(o) of such (ecision is not for the courts to 8uestion! Neither coul( petitioners herein assail the sai( (eter)ination b2 the E1ecuti0e #epart)ent via the instant petition for certiorari!

In the se)inal case of -S v. Curtiss-(rig#t .xport Corp!,5H:6 the US Supre)e Court hel( that /5t6he Presi(ent is the sole or*an of the nation in its e1ternal relations, an( its sole representati0e 3ith forei*n relations!D

It is 8uite apparent that if, in the )aintenance of our international relations, e)barrass)ent $$ perhaps serious e)barrass)ent $$ is to be a0oi(e( an( success for our ai)s achie0e(, con*ressional le*islation 3hich is to be )a(e effecti0e throu*h ne*otiation an( in8uir2 3ithin the international fiel( )ust often accor( to the Presi(ent a (e*ree of (iscretion an( free(o) fro) statutor2 restriction 3hich 3oul( not be a()issible 3here (o)estic affairs alone in0ol0e(! Moreo0er, he, not Con*ress, has the better opportunit2 of 7no3in* the con(itions 3hich pre0ail in forei*n countries, an( especiall2 is this true in ti)e of 3ar! "e has his confi(ential sources of infor)ation! "e has his a*ents in the for) of (iplo)atic, consular an( other officials! 1 1 1

%his rulin* has been incorporate( in our ;urispru(ence throu*h *ayan v. .xecutive Secretary5H96 an( Pimentel v. .xecutive SecretaryF5HI6 its o0erreachin* principle 3as, perhaps, best articulate( in =no3 Chief> ustice PunoEs (issent in Secretary of Justice v. $antion:5H,6

1 1 1 %he con(uct of forei*n relations is full of co)ple1ities an( conse8uences, so)eti)es 3ith life an( (eath si*nificance to the nation especiall2 in ti)es of 3ar! It can onl2 be entruste( to that (epart)ent of *o0ern)ent 3hich can act on the basis of the best a0ailable infor)ation an( can (eci(e 3ith (ecisi0eness! 1 1 1 It is also the Presi(ent 3ho possesses the )ost co)prehensi0e an( the )ost confi(ential infor)ation about forei*n countries for our (iplo)atic an( consular officials re*ularl2 brief hi) on )eanin*ful e0ents all o0er the 3orl(! "e has also unli)ite( access to ultra$sensiti0e )ilitar2 intelli*ence (ata! In fine, the presi(ential role in forei*n affairs is (o)inant an( the Presi(ent is tra(itionall2 accor(e( a 3i(er (e*ree of (iscretion in the con(uct of forei*n affairs! %he re*ularit2, na2, 0ali(it2 of his actions are a(;u(*e( un(er less strin*ent stan(ar(s, lest their ;u(icial repu(iation lea( to breach of an international obli*ation, rupture of state relations, forfeiture of confi(ence, national e)barrass)ent an( a plethora of other proble)s 3ith e8uall2 un(esirable conse8uences!

%he E1ecuti0e #epart)ent has (eter)ine( that ta7in* up petitionersE cause 3oul( be ini)ical to our countr2Es forei*n polic2 interests, an( coul( (isrupt our relations 3ith apan, thereb2 creatin* serious i)plications for stabilit2 in this re*ion! <or us to o0erturn the E1ecuti0e #epart)entEs (eter)ination 3oul( )ean an assess)ent of the forei*n polic2 ;u(*)ents b2 a coor(inate political branch to 3hich authorit2 to )a7e that ;u(*)ent has been constitutionall2 co))itte(!

In an2 e0ent, it cannot reasonabl2 be )aintaine( that the Philippine *o0ern)ent 3as 3ithout authorit2 to ne*otiate the %reat2 of Peace 3ith apan! An( it is e8uall2 true that, since ti)e i))e)orial, 3hen ne*otiatin* peace accor(s an( settlin* international clai)s:

1 1 1 5*6o0ern)ents ha0e (ealt 3ith 1 1 1 pri0ate clai)s as their o3n, treatin* the) as national assets, an( as counters, Pchips4, in international bar*ainin*! Settle)ent a*ree)ents ha0e lu)pe(, or lin7e(, clai)s (eri0in* fro) pri0ate (ebts 3ith others that 3ere inter*o0ern)ental in ori*in, an( concessions in re*ar( to one cate*or2 of clai)s )i*ht be set off a*ainst concessions in the other, or a*ainst lar*er political consi(erations unrelate( to (ebts!5HC6

In(ee(, e1cept as an a*ree)ent )i*ht other3ise pro0i(e, international settle)ents *enerall2 3ipe out the un(erl2in* pri0ate clai)s, thereb2 ter)inatin* an2 recourse un(er (o)estic la3! In (are v. /ylton,5:-6 a case brou*ht b2 a &ritish sub;ect to reco0er a (ebt confiscate( b2 the Co))on3ealth of Vir*inia (urin* the 3ar, ustice Chase 3rote:

I apprehen( that the treat2 of peace abolishes the sub;ect of the 3ar, an( that after peace is conclu(e(, neither the )atter in (ispute, nor the con(uct of either part2, (urin* the 3ar, can e0er be re0i0e(, or brou*ht into contest a*ain! All 0iolences, in;uries, or (a)a*es sustaine( b2 the *o0ern)ent, or people of either, (urin* the 3ar, are burie( in obli0ionF an( all those thin*s are i)plie( b2 the 0er2 treat2 of peaceF an( therefore not necessar2 to be e1presse(! "ence it follo3s, that the restitution of, or co)pensation for, &ritish propert2 confiscate(, or e1tin*uishe(, (urin* the 3ar, b2 an2 of the Unite( States, coul( onl2 be pro0i(e( for b2 the treat2 of peaceF an( if t#ere #ad %een no provision, respecting t#ese su%jects, in t#e treaty, the2 coul( not be a*itate( after the treat2, b2 the &ritish *o0ern)ent, )uch less b2 her sub;ects in courts of ;ustice! =E)phasis supplie(>!

%his practice of settlin* clai)s b2 )eans of a peace treat2 is certainl2 nothin* ne3! <or instance, in !ames 0 1oore v. Regan,5:.6 the US Supre)e Court hel(:

Not infre8uentl2 in affairs bet3een nations, outstan(in* clai)s b2 nationals of one countr2 a*ainst the *o0ern)ent of another countr2 are /sources of frictionD bet3een the t3o so0erei*ns! -nited States v. Pin , G.: U!S! +-G, ++:, 9+ S!Ct! ::+, :9G, ,9 L!E(! IC9 =.CH+>! %o resol0e these (ifficulties, nations ha0e often entere( into a*ree)ents settlin* the clai)s of their respecti0e nationals! As one treatise 3riter puts it, international a*ree)ents settlin* clai)s b2 nationals of one state a*ainst the *o0ern)ent of another /are establishe( international practice reflectin* tra(itional international theor2!D L! "en7in, <orei*n Affairs an( the Constitution +9+ =.CI+>! Consistent 3ith that principle, the Unite( States has repeate(l2 e1ercise( its so0erei*n authorit2 to settle the clai)s of its nationals a*ainst forei*n countries! 1 1 1 Un(er such a*ree)ents, the Presi(ent has a*ree( to renounce or e1tin*uish clai)s of Unite( States nationals a*ainst forei*n *o0ern)ents in return for lu)p$su) pa2)ents or the establish)ent of arbitration proce(ures! %o be sure, )an2 of these settle)ents 3ere encoura*e( b2 the Unite( States clai)ants the)sel0es, since a clai)ant4s onl2 hope of obtainin* an2 pa2)ent at all )i*ht lie in ha0in* his ?o0ern)ent ne*otiate a (iplo)atic settle)ent on his behalf! &ut it is also un(ispute( that the /Unite( States has so)eti)es (ispose( of the clai)s of its citiAens 3ithout their consent, or e0en 3ithout consultation 3ith the), usuall2 3ithout e1clusi0e re*ar( for their interests, as (istin*uishe( fro) those of the nation as a 3hole!D "en7in, supra, at +9+$+9G! Accor(, Restate)ent =Secon(> of <orei*n Relations La3 of the Unite( States Q +.G =.C9:> =Presi(ent /)a2 3ai0e or settle a clai) a*ainst a forei*n state 1 1 1 5e0en6 3ithout the consent of the 5in;ure(6 nationalD>! It is clear that the practice of settlin* clai)s continues to(a2!

Respon(ents e1plain that the Allie( Po3ers conclu(e( the Peace %reat2 3ith apan not necessaril2 for the co)plete atone)ent of the sufferin* cause( b2 apanese a**ression (urin* the 3ar, not for the pa2)ent of a(e8uate reparations, but for securit2 purposes! %he treat2 sou*ht to pre0ent the sprea( of co))unis) in apan, 3hich occupie( a strate*ic position in the <ar East! %hus, the Peace %reat2 co)pro)ise( in(i0i(ual clai)s in the collecti0e interest of the free 3orl(!

%his 3as also the fin(in* in a si)ilar case in0ol0in* A)erican 0icti)s of apanese sla0e labor (urin* the 3ar!5:+6 In a consoli(ate( case in the Northern #istrict of California,5:G6 the court (is)isse( the la3suits file(, rel2in* on the .C:. peace treat2 3ith apan,5:H6 because of the follo3in* polic2 consi(erations:

%he official recor( of treat2 ne*otiations establishes that a fun(a)ental *oal of the a*ree)ent 3as to settle the reparations issue once an( for all! As the state)ent of the chief Unite( Statesne*otiator, ohn <oster #ulles, )a7es clear, it 3as 3ell un(erstoo( that +e*9.,5 ope, t-e po22.3.+.t0 o4 4uture /+*.m2 :ou+1 3e *, u,*//ept*3+e .mpe1.me,t to * +*2t.,5 pe*/e:

Reparation is usuall2 the )ost contro0ersial aspect of peace)a7in*! %he present peace is no e1ception! On the one han(, there are clai)s both 0ast an( ;ust! apan4s a**ression cause( tre)en(ous cost, losses an( sufferin*! On the other han(, to )eet these clai)s, there stan(s a apan presentl2 re(uce( to four ho)e islan(s 3hich are unable to pro(uce the foo( its people nee( to li0e, or the ra3 )aterials the2 nee( to 3or7! 1 1 1 %he polic2 of the Unite( States that apanese liabilit2 for reparations shoul( be sharpl2 li)ite( 3as infor)e( b2 the e1perience of si1 2ears of Unite( States$le( occupation of apan! #urin* the occupation the Supre)e Co))an(er of the Allie( Po3ers =SCAP> for the re*ion, ?eneral #ou*las MacArthur, confiscate( apanese assets in con;unction 3ith the tas7 of )ana*in* the econo)ic affairs of the 0an8uishe( nation an( 3ith a 0ie3 to reparations pa2)ents! It 2oo, 3e/*me /+e*r t-*t )*p*,;2 4.,*,/.*+ /o,1.t.o, :ou+1 re,1er *,0 *55re22.9e rep*r*t.o,2 p+*, *, e<er/.2e ., 4ut.+.t0. #e*,:-.+e, t-e .mport*,/e o4 * 2t*3+e, 1emo/r*t./ )*p*, *2 * 3u+:*r= to /ommu,.2m ., t-e re5.o, .,/re*2e1. At the en( of .CH,, MacArthur e1presse( the 0ie3 that /5t6he use of reparations as a 3eapon to retar( the reconstruction of a 0iable econo)2 in apan shoul( be co)bate( 3ith all possible )eansD an( /reco))en(e( that the reparations issue be settle( finall2 an( 3ithout (ela2!D %hat this polic2 3as e)bo(ie( in the treat2 is clear not onl2 fro) the ne*otiations histor2 but also fro) the Senate <orei*n Relations Co))ittee report reco))en(in* appro0al of the treat2 b2 the Senate! %he co))ittee note(, for e1a)ple: Ob0iousl2 insistence upon the pa2)ent of reparations in an2 proportion co))ensurate 3ith the clai)s of the in;ure( countries an( their nationals 3oul( 3rec7 apan4s econo)2, (issipate an2 cre(it that it )a2 possess at present, (estro2 the initiati0e of its people, an( create )iser2 an( chaos in 3hich the see(s of (iscontent an( co))unis) 3oul( flourish! In short, 5it6 3oul( be contrar2 to the basic purposes an( polic2 of 1 1 1 the Unite( States 1 1 1!

Be thus hol( that, fro) a )unicipal la3 perspecti0e, that certiorari 3ill not lie! As a *eneral principle R an( particularl2 here, 3here such an e1traor(inar2 len*th of ti)e has lapse( bet3een the treat2Es conclusion an( our consi(eration R the E1ecuti0e )ust be *i0en a)ple (iscretion to assess the forei*n polic2 consi(erations of espousin* a clai) a*ainst apan, fro) the stan(point of both the interests of the petitioners an( those of the Republic, an( (eci(e on that basis if apolo*ies are sufficient, an( 3hether further steps are appropriate or necessar2!

(!e P!ilippines is not under an* international o)ligation to espouse petitioners claims.

In the international sphere, tra(itionall2, the onl2 )eans a0ailable for in(i0i(uals to brin* a clai) 3ithin the international le*al s2ste) has been 3hen the in(i0i(ual is able to persua(e a *o0ern)ent to brin* a clai) on the in(i0i(ualEs behalf!5::6 E0en then, it is not the in(i0i(ualEs ri*hts that are bein* asserte(, but rather, the stateEs o3n ri*hts! No3here is this position )ore clearl2 reflecte( than in the (ictu) of the Per)anent Court of International ustice =PCI > in the .C+H 1avrommatis Palestine Concessions Case:

&2 ta7in* up the case of one of its sub;ects an( b2 resortin* to (iplo)atic action or international ;u(icial procee(in*s on his behalf, a State is in realit2 assertin* its o2n rig#t to ensure, in the person of its sub;ects, respect for the rules of international la3! %he 8uestion, therefore, 3hether the present (ispute ori*inates in an in;ur2 to a pri0ate interest, 3hich in point of fact is the case in )an2 international (isputes, is irrele0ant fro) this stan(point! Once a State has ta7en up a case on behalf of one of its sub;ects before an international tribunal, in the e2es of the latter the State is sole clai)ant!5:96 Since the e1ercise of (iplo)atic protection is the ri*ht of the State, reliance on the ri*ht is 3ithin the absolute (iscretion of states, an( the (ecision 3hether to e1ercise the (iscretion )a2 in0ariabl2 be influence( b2 political consi(erations other than the le*al )erits of the particular clai)!5:I6 As clearl2 state( b2 the IC in *arcelona +raction:

%he Court 3oul( here obser0e that, 3ithin the li)its prescribe( b2 international la3, a State )a2 e1ercise (iplo)atic protection 30 :-*te9er me*,2 *,1 to :-*te9er e<te,t .t t-.,=2 4.t, 4or .t .2 .t2 o:, r.5-t t-*t t-e St*te .2 *22ert.,5. S-ou+1 t-e ,*tur*+ or +e5*+ per2o, o, :-o2e 3e-*+4 .t .2 */t.,5 /o,2.1er t-*t t-e.r r.5-t2 *re ,ot *1e>u*te+0 prote/te1, t-e0 -*9e ,o reme10 ., .,ter,*t.o,*+ +*:. All the2 can (o is resort to national la3, if )eans are a0ailable, 3ith a 0ie3 to furtherin* their cause or obtainin* re(ress! %he )unicipal le*islator )a2 la2 upon the State an obli*ation to protect its citiAens abroa(, an( )a2 also confer upon the national a ri*ht to (e)an( the perfor)ance of that obli*ation, an( clothe the ri*ht 3ith correspon(in* sanctions! "o3e0er, all these 8uestions re)ain 3ithin the pro0ince of )unicipal la3 an( (o not affect the position internationall2! 5:,6 =E)phasis supplie(>

%he State, therefore, is the sole ;u(*e to (eci(e 3hether its protection 3ill be *rante(, to 3hat e1tent it is *rante(, an( 3hen 3ill it cease! It retains, in this respect, a (iscretionar2 po3er the e1ercise of 3hich )a2 be (eter)ine( b2 consi(erations of a political or other nature, unrelate( to the particular case!

%he International La3 Co))issionEs =ILCEs> #raft Articles on #iplo)atic Protection full2 support this tra(itional 0ie3! %he2 =i> state that Lthe ri*ht of (iplo)atic protection belon*s to or 0ests in the State,D5:C6 =ii> affir) its (iscretionar2 nature b2 clarif2in* that (iplo)atic protection is a Lso0erei*n prero*ati0eL of the StateF59-6 an( =iii> stress that the state Lhas the ri*ht to e1ercise (iplo)atic protection on behalf of a national! It is un(er no (ut2 or obli*ation to (o so!L59.6

It has been ar*ue(, as petitioners ar*ue no3, that the State has a duty to protect its nationals an( act on hisMher behalf 3hen ri*hts are in;ure(!59+6 "o3e0er, at present, there is no sufficient e0i(ence to establish a *eneral international obli*ation for States to e1ercise (iplo)atic protection of their o3n nationals abroa(!59G6 %hou*h, perhaps (esirable, neither state practice nor opinio juris has e0ol0e( in such a (irection! If it is a (ut2 internationall2, it is onl2 a )oral an( not a le*al (ut2, an( there is no )eans of enforcin* its fulfill)ent!59H6

Be full2 a*ree that rape, se1ual sla0er2, torture, an( se1ual 0iolence are )orall2 reprehensible as 3ell as le*all2 prohibite( un(er conte)porar2 international la3! 59:6"o3e0er, petitioners ta7e 8uite a theoretical leap in clai)in* that these proscriptions auto)aticall2 i)pl2 that that the Philippines is un(er a non$(ero*able obli*ation to prosecute international cri)es, particularl2 since petitioners (o not (e)an( the i)putation of in(i0i(ual cri)inal liabilit2, but see7 to reco0er )onetar2 reparations fro) the state of apan! Absent the consent of states, an applicable treat2 re*i)e, or a (irecti0e b2 the Securit2 Council, there is no non$(ero*able (ut2 to institute procee(in*s a*ainst apan! In(ee(,precisel2 because of statesE reluctance to (irectl2 prosecute clai)s a*ainst another state, recent (e0elop)ents support the )o(ern tren( to e)po3er in(i0i(uals to (irectl2 participate in suits a*ainst perpetrators of international cri)es!5996 Nonetheless, not3ithstan(in* an arra2 of ?eneral Asse)bl2 resolutions callin* for the prosecution of cri)es a*ainst hu)anit2 an( the stron* polic2 ar*u)ents 3arrantin* such a rule, the practice of states (oes not 2et support the present e1istence of an obli*ation to prosecute international cri)es!59I6 Of course a custo)ar2 (ut2 of prosecution is i(eal, but 3e cannot fin( enou*h e0i(ence to reasonabl2 assert its e1istence! %o the e1tent that an2 state practice in this area is 3i(esprea(, it is in the practice of *rantin* a)nesties, i))unit2, selecti0e prosecution, or de facto i)punit2 to those 3ho co))it cri)es a*ainst hu)anit2!D59,6

E0en the in0ocation of jus cogens nor)s an( erga omnes obli*ations 3ill not alter this anal2sis! E0en if 3e si(estep the 8uestion of 3hether jus cogens nor)s e1iste( in .C:., petitioners ha0e not (ei*ne( to sho3 that the cri)es co))itte( b2 the apanese ar)2 0iolate( jus cogens prohibitions at the ti)e the %reat2 of Peace 3as si*ne(, or that the (ut2 to prosecute perpetrators of international cri)es is an erga omnes obli*ation or has attaine( the status of jus cogens.

%he ter) erga omnes =Latin: in relation to everyone> in international la3 has been use( as a le*al ter) (escribin* obli*ations o3e( b2 States to3ar(s the co))unit2 of states as a 3hole! %he concept 3as reco*niAe( b2 the IC in *arcelona +raction:

1 1 1 an essential (istinction shoul( be (ra3n bet3een the obli*ations of a State to3ar(s the international co))unit2 as a 3hole, an( those arisin* 0is$

S$0is another State in the fiel( of (iplo)atic protection! &2 their 0er2 nature, the for)er are the concern of all States! In 0ie3 of the i)portance of the ri*hts in0ol0e(, all States can be hel( to ha0e a le*al interest in their protectionF the2 are obli*ations erga omnes. Such obli*ations (eri0e, for e1a)ple, in conte)porar2 international la3, fro) the outla3in* of acts of a**ression, an( of *enoci(e, as also fro) the principles an( rules concernin* the basic ri*hts of the hu)an person, inclu(in* protection fro) sla0er2 an( racial (iscri)ination! So)e of the correspon(in* ri*hts of protection ha0e entere( into the bo(2 of *eneral international la3 T others are conferre( b2 international instru)ents of a uni0ersal or 8uasi$uni0ersal character!

%he Latin phrase, Uerga omnes,E has since beco)e one of the rall2in* cries of those sharin* a belief in the e)er*ence of a 0alue$base( international public or(er! "o3e0er, as is so often the case, the realit2 is neither so clear nor so bri*ht! Bhate0er the rele0ance of obli*ations erga omnes as a le*al concept, its full potential re)ains to be realiAe( in practice!59C6

%he ter) is closel2 connecte( 3ith the international la3 concept of jus cogens! In international la3, the ter) /jus cogensD =literall2, /co)pellin* la3D> refers to nor)s that co))an( pere)ptor2 authorit2, superse(in* conflictin* treaties an( custo)! Jus cogens nor)s are consi(ere( pere)ptor2 in the sense that the2 are )an(ator2, (o not a()it (ero*ation, an( can be )o(ifie( onl2 b2 *eneral international nor)s of e8ui0alent authorit2!5I-6

Earl2 strains of the jus cogens (octrine ha0e e1iste( since the .I--s,5I.6 but pere)ptor2 nor)s be*an to attract *reater scholarl2 attention 3ith the publication of Alfre( 0on Ver(ross4s influential .CGI article, <orbi((en %reaties in International La3!5I+6 %he reco*nition of jus cogens *aine( e0en )ore force in the .C:-s an( .C9-s 3ith the ILCEs preparation of the Vienna Con0ention on the La3 of %reaties =VCL%>!5IG6 %hou*h there 3as a consensus that certain international nor)s ha( attaine( the status of jus cogens,5IH6the ILC 3as unable to reach a consensus on the proper criteria for i(entif2in* pere)ptor2 nor)s! After an e1ten(e( (ebate o0er these an( other theories of jus cogens, the ILC conclu(e( ruefull2 in .C9G that /there is not as 2et an2 *enerall2 accepte( criterion b2 3hich to i(entif2 a *eneral rule of international la3 as ha0in* the character of jus cogens!D5I:6 In a co))entar2 acco)pan2in* the (raft con0ention, the ILC in(icate( that /the pru(ent course see)s to be to 1 1 1 lea0e the full content of this rule to be 3or7e( out in State practice an( in the ;urispru(ence of international tribunals!D5I96 %hus, 3hile the e1istence ofjus cogens in international la3 is un(ispute(, no consensus e1ists on its substance,5II6 be2on( a tin2 core of principles an( rules!5I,6

Of course, 3e *reatl2 s2)pathiAe 3ith the cause of petitioners, an( 3e cannot be*in to co)prehen( the uni)a*inable horror the2 un(er3ent at the han(s of the apanese sol(iers! Be are also (eepl2 concerne( that, in apparent contra0ention of fun(a)ental principles of la3, the petitioners appear to be 3ithout a re)e(2 to challen*e those that ha0e offen(e( the) before appropriate fora! Nee(less to sa2, our *o0ern)ent shoul( ta7e the lea( in protectin* its citiAens a*ainst 0iolation of their fun(a)ental hu)an ri*hts! Re*rettabl2, it is not 3ithin our po3er to order the E1ecuti0e #epart)ent to ta7e up the petitionersE cause! Ours is onl2 the po3er to urge an( e/!ort the E1ecuti0e #epart)ent to ta7e up petitionersE cause!

$"ERE'ORE, the Petition is hereb2 DIS#ISSED.

SO ORDERED! #ARIANO C. DEL CASTILLO "ssociate Justice

$E CONCUR?

REYNATO S. UNO Chief ustice

ANTONIO T. CAR IO Associate ustice

RENATO C. CORONA Associate ustice

CONC"ITA CAR IO #ORALES Associate ustice

RESBITERO ). VELASCO, )R. Associate ustice

ANTONIO EDUARDO B. NAC"URA Associate ustice

TERESITA ). LEONARDO8DE CASTRO Associate ustice

ARTURO D. BRION Associate ustice

DIOSDADO #. ERALTA Associate ustice

LUCAS . BERSA#IN Associate ustice

ROBERTO A. ABAD Associate ustice

#ARTIN S. VILLARA#A, )R. Associate ustice

)OSE ORTUGAL ERE& Associate ustice

)OSE CATRAL #ENDO&A Associate ustice

C E R T I ' I CAT I O N

Pursuant to Section .G, Article VIII of the Constitution, it is hereb2 certifie( that the conclusions in the abo0e #ecision ha( been reache( in consultation before the case 3as assi*ne( to the 3riter of the opinion of the Court!

REYNATO S. UNO C#ief Justice &+RA6 $+J+A+2N

:G.R. No. 11,,88. Se74e;ber 5, 1997<

!NGEL"T! M!N=!NO, petitioner, vs. COURT OF !PPE!LS, a() MELEC"! M!'OL!R"!, a8 !885>(or 4o NE# UN"TE' FOUN'R& M!NUF!CTUR"NG CORPOR!T"ON, respondents.

'EC"S"ON %ELLOS"LLO, J.9

6he primary purpose of the patent system is not the re!ard of the individual but the advancement of the arts and sciences. 6he function of a patent is to add to the sum of useful #no!led"e and one of the purposes of the patent system is to encoura"e dissemination of information concernin" discoveries and inventions. 6his is a matter !hich is properly !ithin the competence of the Patent 2ffice the official action of !hich has the presumption of correctness and may not be interfered !ith in the absence of ne! evidence carryin" thorou"h conviction that the 2ffice has erred. Aince the Patent 2ffice is an e=pert body preeminently )ualified to determine )uestions of patentability, its findin"s must be accepted if they are consistent !ith the evidence, !ith doubts as to patentability resolved in favor of the Patent 2ffice.F4G Petitioner An"elita Man7ano filed !ith the Philippine Patent 2ffice on 4- &ebruary 4-9, an action for the cancellation of 'etters Patent No. %MC<5.- for a "as burner re"istered in the name of respondent Melecia Madolaria !ho subse)uently assi"ned the letters patent to Ne! %nited &oundry and Manufacturin" Corporation *%N+6E$ &2%N$R0, for brevity/. Petitioner alle"ed that *a/ the utility model covered by the letters patent, in this case, an 'P: "as burner, !as not inventive, ne! or usefulD *b/ the specification of the letters patent did not comply !ith the re)uirements of Aec. 4<, RA No. 458, as amendedD *c/ respondent Melecia Madolaria !as not the ori"inal, true and actual inventor nor did she derive her ri"hts from the ori"inal, true and actual inventor of the utility model covered by the letters patentD and, *d/ the letters patent !as secured by means of fraud or misrepresentation. +n support of her petition for cancellation petitioner further alle"ed that *a/ the utility model covered by the letters patent of respondent had been #no!n or used by others in the Philippines for more than one *4/ year before she filed her application for letters patent on - $ecember 4-H-D *b/ the products !hich !ere produced in accordance !ith the utility model covered by the letters patent had been in public use or on sale in the Philippines for more than one *4/ year before the application for patent therefor !as filed. Petitioner presented the follo!in" documents !hich she correspondin"ly mar#ed as e=hibits; *a/ affidavit of petitioner alle"in" the e=istence of prior art, mar#ed E=h. QADR *b/ a brochure distributed by Manila :as Corporation disclosin" a pictorial representation of Ransome Burner made by Ransome 6orch and Burner Company, %AA, mar#ed E=h. Q$DR and, *c/ a brochure distributed by Esso :asul or Esso Atandard Eastern, +nc., of the Philippines sho!in" a picture of another similar burner !ith top elevation vie! and another perspective vie! of the same burner, mar#ed E=h. QE.R 6estifyin" for herself petitioner narrated that her husband 2n" Bun 6ua !or#ed as a helper in the %N+6E$ &2%N$R0 !here respondent Melecia Madolaria used to be affiliated !ith from 4-58 to 4-H.D that 2n" helped in the castin" of an 'P: burner !hich !as the same utility model of a burner for !hich 'etters Patent No. %MC<5.- !as issued, and that after her husbandSs separation from the shop she or"ani7ed Besco Metal Manufacturin" *BEAC2 ME6A', for brevity/ for the castin" of 'P: burners one of !hich had the confi"uration, form and component parts similar to those bein" manufactured by %N+6E$ &2%N$R0. Petitioner presented in evidence an alle"ed model of an 'P: burner mar#ed E=h. QKR and covered by the 'etters Patent of respondent, and testified that it !as "iven to her in 3anuary 4-9, by one of her customers !ho alle"edly ac)uired it from %N+6E$ &2%N$R0. Petitioner also presented in evidence her o!n model of an 'P: burner called QRansomeR burner mar#ed E=h. Q',R !hich !as alle"edly manufactured in 4-H< or 4-H8 and sold by her in the course of her business operation in the name of BEAC2 ME6A'. Petitioner claimed that this QRansomeR burner *E=h. Q'R/ had the same confi"uration and mechanism as that of the model !hich !as patented in favor of private respondent Melecia Madolaria. Also presented by petitioner !as a burner cup of an imported QRansomeR burner mar#ed E=h QMR !hich !as alle"edly e=istin" even before the patent application of private respondent. Petitioner presented t!o *,/ other !itnesses, namely, her husband 2n" Bun 6ua and &idel &rancisco. 2n" testified that he !or#ed as a helper in the %N+6E$ &2%N$R0 from 4-58 to 4-H. !here he helped in the castin" of 'P: burners !ith the same form, confi"uration and mechanism as that of the model covered by the 'etters Patent issued to private respondent. &rancisco testified that he had been employed !ith the Manila :as Corporation from 4-L. to 4-<4 and from 4-8, up to 4-5- !here he retired as supervisor and that Manila :as Corporation imported QRansomeR burners !ay bac# in 4-58 !hich !ere advertised throu"h brochures to promote their sale. Private respondent, on the other hand, presented only one !itness, Rolando Madolaria, !ho testified, amon" others, that he !as the :eneral Aupervisor of the %N+6E$ &2%N$R0 in the foundry, machine and buffin" sectionD that in his early years !ith the company, %N+6E$ &2%N$R0 !as en"a"ed in the manufacture of different #inds of "as stoves as !ell as burners based on s#etches and specifications furnished by customersD that the company manufactured early models of sin"leCpiece types of burners !here the mouth and throat !ere not detachableD that in the latter part of 4-H9 respondent Melecia Madolaria confided in him that complaints !ere bein" brou"ht to her attention concernin" the early models bein" manufacturedD that he !as then instructed by private respondent to cast several e=perimental models based on revised s#etches and specificationsD that private respondent a"ain made some innovationsD that after a fe! months, private respondent discovered the solution to all the defects of the earlier models and, based on her latest s#etches and specifications, he !as able to cast several models incorporatin" the additions to the innovations introduced in the models. Jarious tests !ere conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. Rolando Madolaria testified that

private respondent decided to file her application for utility model patent in $ecember 4-H-. 2n H 3uly 4-95 the $irector of Patents Cesar C. Aandie"o issued $ecision No. 95C85 denyin" the petition for cancellation and holdin" that the evidence of petitioner !as not able to establish convincin"ly that the patented utility model of private respondent !as anticipated. Not one of the various pictorial representations of business clearly and convincin"ly sho!ed that the devices presented by petitioner !as identical or substantially identical !ith the utility model of the respondent. 6he decision also stated that even assumin" that the brochures depicted clearly each and every element of the patented "as burner device so that the prior art and patented device became identical althou"h in truth they !ere not, they could not serve as anticipatory bars for the reason that they !ere undated. 6he dates !hen they !ere distributed to the public !ere not indicated and, therefore, !ere useless prior art references. 6he records and evidence also do not support the petitionerSs contention that 'etters Patent No. %MC<5.- !as obtained by means of fraud andMor misrepresentation. No evidence !hatsoever !as presented by petitioner to sho! that the then applicant Melecia Madolaria !ithheld !ith intent to deceive material facts !hich, if disclosed, !ould have resulted in the refusal by the Philippine Patent 2ffice to issue the 'etters Patent under in)uiry. Petitioner elevated the decision of the $irector of Patents to the Court of Appeals !hich on 48 2ctober 4--L affirmed the decision of the $irector of Patents. @ence, this petition for revie! oncertiorari alle"in" that the Court of Appeals erred *a/ in relyin" on ima"inary differences !hich in actuality did not e=ist bet!een the model of private respondent covered by 'etters Patent No. %MC<5.- and the previously #no!n model of Esso Atandard Eastern, +nc., and Manila :as Corporation, ma#in" such ima"inary differences "rounded entirely on speculation, surmises and con?ecturesD *b/ in renderin" ?ud"ment based on misapprehension of factsD *c/ in relyin" mainly on the testimony of private respondentSs sole !itness Rolando MadolariaD and, *d/ in not cancelin" 'etters Patent No. %MC<5.- in the name of private respondent. Petitioner submits that the differences cited by the Court of Appeals bet!een the utility model of private respondent and the models of Manila :as Corporation and Esso Atandard Eastern, +nc., are more ima"inary than real. Ahe alle"es that based on E=hs. QE,R QEC4,R Q&R and Q&C4R or the brochures of Manila :as Corporation and Esso Atandard Eastern, +nc., presented by petitioner, the cupCshaped burner mouth and threaded hole on the side are sho!n to be similar to the utility model of private respondent. 6he e=hibits also sho! a detachable burner mouth havin" a plurality of up!ardly e=istin" undulations adopted to act as "as passa"e !hen the cover is attached to the top of said cupC shaped mouth all of !hich are the same as those in the patented model. Petitioner also denies as substantial difference the short cylindrical tube of the burner mouth appearin" in the brochures of the burners bein" sold by Manila :as Corporation and the lon" cylindered tube of private respondentSs model of the "as burner. Petitioner ar"ues that the actual demonstration made durin" the hearin" disclosed the similarities in form, operation and mechanism and parts bet!een the utility model of private respondent and those depicted in the brochures. 6he findin"s of the Patent 2ffice and the Court of Appeals that the brochures of Manila :as Corporation and Esso Atandard Eastern, +nc., are undated cannot overcome the fact of their circulation before private respondent filed her application for utility model patent. Petitioner thus as#s this Court to ta#e ?udicial notice of the fact that Esso Atandard Eastern, +nc., disappeared before 4-H- and reappeared only durin" the Martial 'a! years as Petrophil Corporation. Petitioner also emphasi7es that the brochures indicated the telephone number of Manila :as Corporation as 8CH-C94 !hich is a five *8/ numbered telephone number e=istin" before 4-H8 because telephones in Metro Manila started to have si= *5/ numbers only after that year. Petitioner further contends that the utility model of private respondent is absolutely similar to the 'P: burner bein" sold by petitioner in 4-H8 and 4-H5, and also to the QRansomeR burner depicted in the old brochures of Manila :as Corporation and Esso Atandard Eastern, +nc., fabricated by Ransome 6orch and Burner Company of 2a#land, California, %AA, especially !hen considered throu"h actual physical e=amination, assembly and disassembly of the models of petitioner and private respondent. Petitioner faults the Court of Appeals for disre"ardin" the testimonies of 2n" Bun 6ua and &idel &rancisco for their failure to produce documents on the alle"ed importation by Manila :as Corporation of QRansomeR burners in 4-58 !hich had the same confi"uration, form and mechanism as that of the private respondentSs patented model. &inally, it is ar"ued that the testimony of private respondentSs lone !itness Rolando Madolaria should not have been "iven !ei"ht by the Patent 2ffice and the Court of Appeals because it contained mere afterCthou"hts and pretensions. We cannot sustain petitioner. Aection H of RA No. 458, as amended, !hich is the la! on patents, e=pressly provides C Sec! I! 3nventions patenta%le! An2 in0ention of a ne3 an( useful )achine, )anufacture( pro(uct or substance, process or an i)pro0e)ent of an2 of the fore*oin*, shall be patentable! <urther, Sec! :: of the sa)e la3 pro0i(es $ Sec! ::! !esign patents and patents for utility models! $ =a> An2 ne3, ori*inal an( orna)ental (esi*n for an article of )anufacture an( =b> an2 ne3 )o(el of i)ple)ents or tools or of an2 in(ustrial pro(uct or of part of the sa)e, 3hich (oes not possess the 8ualit2 of in0ention, but 3hich is of practical utilit2 b2 reason of its for), confi*uration, construction or co)position, )a2 be protecte( b2 the author thereof, the for)er b2 a patent for a (esi*n an( the latter b2 a patent for a utilit2 )o(el, in the sa)e )anner an( sub;ect to the sa)e pro0isions an( re8uire)ents as relate to patents for in0entions insofar as the2 are applicable e1cept as other3ise herein pro0i(e(! 6he element of novelty is an essential re)uisite of the patentability of an invention or discovery. +f a device or process has been #no!n or used by others prior to its invention or discovery by the applicant, an application for a patent therefor should be deniedD and if the application has been "ranted, the court, in a ?udicial proceedin" in !hich the validity of the patent is dra!n in )uestion, !ill hold it void and ineffective.F,G +t has been repeatedly held that an invention must possess the essential elements of novelty, ori"inality and precedence, and for the patentee to be entitled to the protection the invention must be ne! to the !orld.FLG

+n issuin" 'etters Patent No. %MC<5.- to Melecia Madolaria for an Q'P: BurnerR on ,, 3uly 4-94, the Philippine Patent 2ffice found her invention novel and patentable. 6he issuance of such patent creates a presumption !hich yields only to clear and co"ent evidence that the patentee !as the ori"inal and first inventor. 6he burden of provin" !ant of novelty is on him !ho avers it and the burden is a heavy one !hich is met only by clear and satisfactory proof !hich overcomes every reasonable doubt.F<G @ence, a utility model shall not be considered Qne!R if before the application for a patent it has been publicly #no!n or publicly used in this country or has been described in a printed publication or publications circulated !ithin the country, or if it is substantially similar to any other utility model so #no!n, used or described !ithin the country.F8G As found by the $irector of Patents, the standard of evidence sufficient to overcome the presumption of le"ality of the issuance of %MC <5.- to respondent Madolaria !as not le"ally met by petitioner in her action for the cancellation of the patent. 6hus the $irector of Patents e=plained his reasons for the denial of the petition to cancel private respondentSs patent C Scrutin2 of E1hs! /#D an( /ED rea(il2 re0eals that the utilit2 )o(el =LP? &urner> is not anticipate(! Not one of the 0arious pictorial representations of burners clearl2 an( con0incin*l2 sho3 that the (e0ice presente( therein is i(entical or substantiall2 i(entical in construction 3ith the aforesai( utilit2 )o(el! It is rele0ant an( )aterial to state that in (eter)inin* 3hether no0elt2 or ne3ness is ne*ati0e( b2 an2 prior art, onl2 one ite) of the prior art )a2 be use( at a ti)e! <or anticipation to occur, the prior art )ust sho3 that each ele)ent is foun( either e1pressl2 or (escribe( or un(er principles of inherenc2 in a sin*le prior art reference or that the clai)e( in0ention 3as probabl2 7no3n in a sin*le prior art (e0ice or practice! =)alman v. )im%erly Clar , +., USPV I,., I,C> E0en assu)in* gratia arguendi that the aforesai( brochures (o (epict clearl2 on all fours each an( e0er2 ele)ent of the patente( *as burner (e0ice so that the prior art an( the sai( patente( (e0ice beco)e i(entical, althou*h in truth the2 are not, the2 cannot ser0e as anticipator2 bars for the reason that the2 are un(ate(! %he (ates 3hen the2 3ere (istribute( to the public 3ere not in(icate( an(, therefore, the2 are useless prior art references! ==== <urther)ore, an( )ore si*nificantl2, the )o(el )ar7e( E1h! /KD (oes not sho3 3hether or not it 3as )anufacture( an(Mor cast before the application for the issuance of patent for the LP? burner 3as file( b2 Melecia Ma(olaria! Bith respect to E1h! /L,D petitioner clai)e( it to be her o3n )o(el of LP? burner alle*e(l2 )anufacture( so)eti)e in .CIH or .CI: an( sol( b2 her in the course of her business operation in the na)e of &esco Metal Manufacturin*, 3hich burner 3as (eno)inate( as /Ranso)eD burner ==== &ut a careful e1a)ination of E1h! /LD 3oul( sho3 that it (oes not bear the 3or( /Ranso)eD 3hich is the burner referre( to as the pro(uct bein* sol( b2 the Petitioner! %his is not the 3a2 to pro0e that E1h! /LD anticipates Letters Patent No! UM$H9-C throu*h E1hs! /CD an( /#!D Another factor 3or7in* a*ainst the PetitionerEs clai)s is that an e1a)ination of E1h! /LD 3oul( (isclose that there is no in(ication of the ti)e or (ate it 3as )anufacture(! %his Office, thus has no 3a2 of (eter)inin* 3hether E1h! /LD 3as reall2 )anufacture( before the filin* of the aforesai( application 3hich )ature( into Letters Patent No! UM$H9-C, sub;ect )atter of the cancellation procee(in*! At this ;uncture, it is 3orth3hile to point out that petitioner also presente( E1h! /MD 3hich is the alle*e( burner cup of an i)porte( /Ranso)eD burner! A*ain, this Office fin(s the sa)e as unreliable e0i(ence to sho3 anticipation! It obser0e( that there is no (ate in(icate( therein as to 3hen it 3as )anufacture( an(Mor i)porte( before the filin* of the application for issuance of patent of the sub;ect utilit2 )o(el! Bhat is )ore, so)e co)ponent parts of E1h! /MD are )issin*, as onl2 the cup 3as presente( so that the sa)e coul( not be co)pare( to the utilit2 )o(el =sub;ect )atter of this case> 3hich consists of se0eral other (etachable parts in co)bination to for) the co)plete LP? burner! ==== It )ust li7e3ise be pointe( out that On* &un %ua testifie( on the brochures alle*e(l2 of Manila ?as an( of Esso ?asul )ar7e( E1hs! /ED an( /<D an( on the alle*e( fact that Manila ?as Corporation 3as i)portin* fro) the Unite( States /Ranso)eD burners! &ut the sa)e coul( not be *i0en cre(ence since he hi)self a()itte( (urin* cross$ e1a)ination that he has ne0er been connecte( 3ith Manila ?as Corporation! "e coul( not e0en present an2 i)portation papers relatin* to the alle*e( i)porte( ranso)e burners! Neither (i( his 3ife!596 6he above findin"s and conclusions of the $irector of Patent !ere reiterated and affirmed by the Court of Appeals.FHG 6he validity of the patent issued by the Philippine Patent 2ffice in favor of private respondent and the )uestion over the inventiveness, novelty and usefulness of the improved model of the 'P: burner are matters !hich are better determined by the Patent 2ffice. 6he technical staff of the Philippine Patent 2ffice composed of e=perts in their field has by the issuance of the patent in )uestion accepted private respondentSs model of "as burner as a discovery. 6here is a presumption that the 2ffice has correctly determined the patentability of the modelF9G and such action must not be interfered !ith in the absence of competent evidence to the contrary. 6he rule is settled that the findin"s of fact of the $irector of Patents, especially !hen affirmed by the Court of Appeals, are conclusive on this Court !hen supported by substantial evidence. Petitioner has failed to sho! compellin" "rounds for a reversal of the findin"s and conclusions of the Patent 2ffice and the Court of Appeals. 6he alle"ed failure of the $irector of Patents and the Court of Appeals to accord evidentiary !ei"ht to the testimonies of the !itnesses of petitioner sho!in" anticipation is not a ?ustification to "rant the petition. Pursuant to the re)uirement of clear and convincin" evidence to overthro! the presumption of validity of a patent, it has been held that oral testimony to sho! anticipation is open to suspicion and if uncorroborated by co"ent evidence, as !hat occurred in this case, it may be held insufficient.F-G &inally, petitioner !ould !ant this Court to revie! all over a"ain the evidence she presented before the Patent 2ffice. Ahe ar"ues that

contrary to the decision of the Patent 2ffice and the Court of Appeals, the evidence she presented clearly proves that the patented model of private respondent is no lon"er ne! and, therefore, fraud attended the ac)uisition of patent by private respondent. +t has been held that the )uestion on priority of invention is one of fact. Novelty and utility are li#e!ise )uestions of fact. 6he validity of patent is decided on the basis of factual in)uiries. Whether evidence presented comes !ithin the scope of prior art is a factual issue to be resolved by the Patent 2ffice.F4.G 6here is )uestion of fact !hen the doubt or difference arises as to the truth or falsehood of alle"ed facts or !hen the )uery necessarily invites calibration of the !hole evidence considerin" mainly the credibility of !itnesses, e=istence and relevance of specific surroundin" circumstances, their relation to each other and to the !hole and the probabilities of the situation.F44G 6ime and a"ain !e have held that it is not the function of the Aupreme Court to analy7e or !ei"h all over a"ain the evidence and credibility of !itnesses presented before the lo!er tribunal or office. 6he Aupreme Court is not a trier of facts. +ts ?urisdiction is limited to revie!in" and revisin" errors of la! imputed to the lo!er court, its findin"s of fact bein" conclusive and not revie!able by this Court. #*EREFORE, the Petition is $EN+E$ . 6he $ecision of the Court of Appeals affirmin" that of the Philippine Patent 2ffice is A&&+RME$. Costs a"ainst petitioner. SO OR'ERE'. 'itu4" 5apunan" and Hermosisima" $r." $$." concur.