Jessie Ching vs.

William Salinas

FACTS: Jessie Ching and Joseph Yu were issued by the National Library Certificates of Copyright
Registration and Deposit of the work described therein as Leaf Spring Eye Bushing for Automobile.
Ching requested the NBI for polic/investigative assistance for the apprehension and prosecution of
illegal manufacturers, producers and/or distributors of the works. As such, inventory items were seized
from Salinas for violating the provisions of RA 8293. He claims that RA 8293 provides in no uncertain
terms that copyright protection automatically attaches to a work by the sole fact of its creation,
irrespective of its mode or form of expression, as well as of its content, quality or purpose. The law gives
a non-inclusive definition of work as referring to original intellectual creations in the literary and
artistic domain protected from the moment of their creation; and includes original ornamental designs
or models for articles of manufacture, whether or not registrable as an industrial design and other works
of applied art under Section 172.1(h) of RA 8293. The petitioner insists, notwithstanding the
classification of the works as either literary and/or artistic, the said law, likewise, encompasses works
which may have a bearing on the utility aspect to which the petitioners utility designs were classified.
According to the petitioner, what the Copyright Law protects is the authors intellectual creation,
regardless whether it is one with utilitarian functions or incorporated in a useful article produced on an
industrial scale. The petitioner also maintains that the law does not provide that the intended use or use
in industry of an article eligible for patent bars or invalidates its registration under the Law on Copyright.
The respondents averred that the works covered by the certificates issued by the National
Library are not artistic in nature; they considered automotive spare parts and pertain to technology.
They aver that the models are not original, and as such are the proper subject of a patent, not copyright.
Respondents aver that the work of the petitioner is essentially a technical solution to the problem of
wear and tear in automobiles, the substitution of materials, i.e., from the rubber to plastic matter of
polyvinyl chloride, an oil resistant soft texture plastic material strong enough to endure pressure
brought about by the vibration of the counter bearing and thus brings bushings. Such work, the
respondents assert, is the subject of copyright under Section 172.1 of RA 8293. They insist that the
certificates issued by the National Library are only certifications that, at a point in time, a certain work
was deposited in the said office. Furthermore, the registration of copyrights does not provide for
automatic protection. The respondents maintain that a copyright exists only when the work is covered
by the protection of RA 8293.

ISSUE: W/N copyright granted by law can be said to arise in favor of the petitioner despite the issuance
of the certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion.

HELD: NO. As gleaned from the specifications appended to the application for a copyright certificate
filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model. These
are not literary or artistic works. They are not intellectual creations in the literary and artistic domain, or
works of applied art. They are certainly not ornamental designs or one having decorative quality or
value. The central inquiry is whether the article is a work of art. Works for applied art include all original
pictorials, graphics, and sculptural works that are intended to be or have been embodied in useful article
regardless of factors such as mass production, commercial exploitation, and the potential availability of
design patent protection. As gleaned from the description of the models and their objectives, these
articles are useful articles which are defined as one having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey information. Indeed, while works of applied
art, original intellectual, literary and artistic works are copyrightable, useful articles and works of
industrial design are not. A useful article may be copyrightable only if and only to the extent that such
designs incorporates pictorial, graphic, or sculptural features that can be identified separately from, and
are capable of existing independently of the utilitarian aspects of the article. The SC agrees with the
contention of the petitioner, that the authors intellectual creation, regardless of whether it is a creation
with utilitarian functions or incorporated in a useful article produced on an industrial scale, is protected
by copyright law. However, the law refers to a work of applied art which is an artistic creation. It bears
stressing that there is no copyright protection for works of applied art or industrial design which have
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of the
article. Functional components of useful articles, no matter how artistically designed, have generally
been denied copyright protection unless they are separable from the useful articles. In this case, the
petitioners models are not works of applied art, not artistic works. They are utility models, useful
articles, albeit with no artistic design or value.





Superior Commercial Enterprises, Inc. vs. Kunnan Enterprises Ltd and Sports Concept and
Distributor, Inc

FACTS: On Febraury 23, 1993, SUPERIOR filed a complaint for trademark infringement and unfair
completion with preliminary injunction against KUNNAN and SPORTS CONCEPT. In support of its
complaint, SUPERIOR first claimed to be the owner of the trademarks, trading styles, company names
and business names KENNEX, KENNEX & DEVICE, PRO KENNEX and PRO-KENNEX (disputed
trademarks). Second, it also asserted its prior use of these trademarks, presenting as evidence of
ownership the Principal and Supplemental Registrations of these trademarks in its name. Third,
SUPERIOR also alleged that it extensively sold and advertised sporting goods and products covered by its
trademark registrations. Finally, SUPERIOR presented as evidence of its ownership of the disputed
trademarks the preambular clause of the Distributor Agreement it executed with KUNNAN.
In its defense, KUNNAN disputed SUPERIORs claim of ownership and maintained that
SUPERIOR as mere distributor from October 6, 1982 until December 31, 1991 fraudulently registered
the trademarks in its name. KUNNAN alleged that it was incorporated in 1972, under the name KENNEX
Sports Corporation for the purpose of manufacturing and selling sportswear and sports equipment; it
commercially marketed its products in different countries, including the Philippines since 1972. It
created and first used PRO KENNEX, derived from its original corporate name, as distinctive trademark
for its product in 1976. KUNNAN alleged that it registered the PRO KENNEX trademark not only in the
Philippines but also in 31 countries, and widely promoted the KENNEX and PRO KENNEX trademarks
through worldwide advertisements in print media and sponsorships known tennis players. After the
expiration of its initial distributorship agreement with another company, KUNNAN appointed SUPERIOR
as its exclusive distributor in the Philippines under the Distributorship Agreement.
There being sufficient evidence to prove that KUNNAN is the prior user and owner of the
trademark PRO-KENNEX, the consolidated Petitions for Cancellation and the Notices of Opposition are
hereby GRANTED. The CA found the Certificates of Principal and Supplemental Registrations and the
Distributorship Agreement insufficient to support SUPERIORs claim of ownership over the disputed
trademarks.
The CA stressed that the SUPERIORs possession of the aforementioned Certificates of Principal
Registration does not conclusively establish its ownership of the disputed trademarks as dominion over
the trademarks is not acquired by the fact of registration alone; at best, registration merely raises a
presumption of ownership that can be rebutted by contrary evidence.

ISSUE: W/N there exist trademark infringement and unfair competition.

HELD: In the present case, no evidence exists showing that KUNNAN ever attempted to pass off the
goods it sold (i.e. sportswear, sporting goods and equipment) as those of SUPERIOR. In addition, there is
no evidence of bad faith or fraud imputable to KUNNAN in using the disputed trademarks. Specifically,
SUPERIOR failed to adduce any evidence to show that KUNNAN by the above-cited acts intended to
deceive the public as to the identity of the goods sold or of the manufacturer of the goods sold. Finally,
with the established ruling that KUNNAN is the rightful owner of the trademarks of the goods that
SUPERIOR asserts are being unfairly sold by KUNNAN under trademarks registered in SUPERIORs name,
the latter is left with no effective right to make a claim. In other words, with the CAs final ruling in the
Registration Cancellation Case, SUPERIORs case no longer presents a valid cause of action. For this
reason, the unfair competition aspect of the SUPERIOR s case likewise fails.



















BERRIES AGRICULTURAL CO., INC. vs. NORVY ABYADANG
FACTS: Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in
connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris Agricultural Co., Inc.
(Berris), filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of Opposition against the
mark under application allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to its
registered trademark "D-10 80 WP," also used for Fungicide(Class 5) with active ingredient 80%
Mancozeb.Director Estrellita Beltran-Abelardo of the IPO-
BLA decided in favor of Berris. However,Abyadang appealed to the CA which reversed the decision.

ISSUES:
1.W/N there exists no confusing similarity between the marks
2.W/N the cancellation of Petitioners duly registered and validly existing trademark in the absence of a
properly filed Petition for Cancellation before the Intellectual Property Office is not in accord with the
Intellectual Property Code and applicable Decisions of the Supreme Court.

HELD:
First Issue: The determination of priority of use of a mark is a question of fact. Adoption of the mark
alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain
goods, but these alone will not inure to the claim of ownership of the mark until the goods bearing the
mark are sold to the public in the market. Accordingly, receipts, sales invoices, and testimonies of
witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce
during a certain period of time. In the instant case, both parties have submitted proof to support their
claim of ownership of their respective trademarks. Admittedly, the "D-10" is the dominant feature of
the mark. The "D-10," being at the beginning of the mark, is what is most remembered of it.
Although, it appears in Berris certificate of registration in the same font size as the "80
WP," its dominancy in the "D-10 80 WP" mark stands since the difference in the form does not
alter its distinctive character. Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-
10 PLUS" is similar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur.
Undeniably, both marks pertain to the same type of goods fungicide with 80% Mancozeb as an active
ingredient and used for the same group of fruits, crops, vegetables, and ornamental plants, using the
same dosage and manner of application. They also belong to the same classification of goods under R.A.
No. 8293. Both depictions of "D-10," as found in both marks, are similar in size, sucht hat this portion is
what catches the eye of the purchaser. Undeniably, the likelihood of confusion is present. This likelihood
of confusion and mistake is made more manifest when the Holistic Test is applied, taking into
consideration the packaging, for both use the same type of
material(foiltype) and have identical color schemes (red, green, and white); and the marks are both pred
ominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath.
Considering these striking similarities, predominantly the "D-10," the buyers of both products, mainly
farmers, may be misled into thinking that "NS D-10 PLUS" could be an upgraded formulation of the "D-
10 80 WP."

As to the Second Issue:
IPO, by reason of their special knowledge and expertise over matters falling under
their jurisdiction, are in a better position to pass judgment on matters regarding intellectual property.
Thus, their findings of fact in that regard are generally accorded great respect, if not
finality by the courts, as long as they are supported by substantial evidence, even if such evidence
might not be overwhelming or even preponderant. It is not the task of the appellate court
to weigh once more the evidence submitted before the administrative body and to substitute its own
judgment for that of the administrative agency in respect to sufficiency of evidence. In as much as the
ownership of the mark D-10 80 WP fittingly belongs to Berris, and because the same should
not have been cancelled by the CA, we consider it proper not to belabor anymore the issue of whether
cancellation of a registered mark may be done absent a petition for cancellation.