G.R. No.

91332 July 16, 1993

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF
TABAC REUNIES, S.A.,petitioners
vs.
THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents.
Quasha, Asperilla, Ancheta, Pea & Nolasco Law Office for petitioners.
Teresita Gandionco-Oledan for private respondent.
MELO, J.:
In the petition before us, petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc.,
and Fabriques of Tabac Reunies, S.A., are ascribing whimsical exercise of the faculty
conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when
respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued
against Fortune Tobacco Corporation, herein private respondent, from manufacturing and
selling "MARK" cigarettes in the local market.
Banking on the thesis that petitioners' respective symbols "MARK VII", "MARK TEN", and
"LARK", also for cigarettes, must be protected against unauthorized appropriation, petitioners
twice solicited the ancillary writ in the course the main suit for infringement but the court of
origin was unpersuaded.
Before we proceed to the generative facts of the case at bar, it must be emphasized that
resolution of the issue on the propriety of lifting the writ of preliminary injunction should not be
construed as a prejudgment of the suit below. Aware of the fact that the discussion we are
about to enter into involves a mere interlocutory order, a discourse on the aspect infringement
must thus be avoided. With these caveat, we shall now shift our attention to the events which
spawned the controversy.
As averred in the initial pleading, Philip Morris, Incorporated is a corporation organized under
the laws of the State of Virginia, United States of America, and does business at 100 Park
Avenue, New York, New York, United States of America. The two other plaintiff foreign
corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., are similarly not
doing business in the Philippines but are suing on an isolated transaction. As registered
owners "MARK VII", "MARK TEN", and "LARK" per certificates of registration issued by the
Philippine Patent Office on April 26, 1973, May 28, 1964, and March 25, 1964, plaintiffspetitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture

and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in
contravention of Section 22 of the Trademark Law, and should, therefore, be precluded
during the pendency of the case from performing the acts complained of via a preliminary
injunction (p. 75, Court of Appeals Rollo in AC-G.R. SP No. 13132).
For its part, Fortune Tobacco Corporation admitted petitioners' certificates of registration with
the Philippine Patent Office subject to the affirmative and special defense on misjoinder of
party plaintiffs. Private respondent alleged further that it has been authorized by the Bureau
of Internal Revenue to manufacture and sell cigarettes bearing the trademark "MARK", and
that "MARK" is a common word which cannot be exclusively appropriated (p.158, Court of
Appeals Rollo in A.C.-G.R. SP No. 13132). On March 28, 1983, petitioners' prayer for
preliminary injunction was denied by the Presiding Judge of Branch 166 of the Regional Trial
Court of the National Capital Judicial Region stationed at Pasig, premised upon the following
propositions:
Plaintiffs admit in paragraph 2 of the complaint that ". . . they are
not doing business in the Philippines and are suing on an isolated
transaction . . .". This simply means that they are not engaged in the
sale, manufacture, importation, expor[t]ation and advertisement of their
cigarette products in the Philippines. With this admission, defendant
asks: ". . . how could defendant's "MARK" cigarettes cause the former
"irreparable damage" within the territorial limits of the Philippines?"
Plaintiffs maintain that since their trademarks are entitled to protection by
treaty obligation under Article 2 of the Paris Convention of which the
Philippines is a member and ratified by Resolution No. 69 of the Senate
of the Philippines and as such, have the force and effect of law under
Section 12, Article XVII of our Constitution and since this is an action for
a violation or infringement of a trademark or trade name by defendant,
such mere allegation is sufficient even in the absence of proof to support
it. To the mind of the Court, precisely, this is the issue in the main case to
determine whether or not there has been an invasion of plaintiffs' right of
property to such trademark or trade name. This claim of plaintiffs is
disputed by defendant in paragraphs 6 and 7 of the Answer; hence, this
cannot be made a basis for the issuance of a writ of preliminary
injunction.
There is no dispute that the First Plaintiff is the registered owner of
trademar[k] "MARK VII" with Certificate of Registration No. 18723, dated
April 26,1973 while the Second Plaintiff is likewise the registered owner
of trademark "MARK TEN" under Certificate of Registration No. 11147,
dated May 28, 1963 and the Third Plaintiff is a registrant of trademark
"LARK" as shown by Certificate of Registration No. 10953 dated March
23, 1964, in addition to a pending application for registration of

trademark "MARK VII" filed on November 21, 1980 under Application

Serial No. 43243, all in the Philippine Patent Office. In same the manner,
defendant has a pending application for registration of the trademark
"LARK" cigarettes with the Philippine Patent Office under Application
Serial No. 44008. Defendant contends that since plaintiffs are "not doing
business in the Philippines" coupled the fact that the Director of Patents
has not denied their pending application for registration of its trademark
"MARK", the grant of a writ of preliminary injunction is premature.
Plaintiffs contend that this act(s) of defendant is but a subterfuge to give
semblance of good faith intended to deceive the public and patronizers
into buying the products and create the impression that defendant's
goods are identical with or come from the same source as plaintiffs'
products or that the defendant is a licensee of plaintiffs when in truth and
in fact the former is not. But the fact remains that with its pending
application, defendant has embarked in the manufacturing, selling,
distributing and advertising of "MARK" cigarettes. The question of good
faith or bad faith on the part of defendant are matters which are
evidentiary in character which have to be proven during the hearing on
the merits; hence, until and unless the Director of Patents has denied
defendant's application, the Court is of the opinion and so holds that
issuance a writ of preliminary injunction would not lie.
There is no question that defendant has been authorized by the Bureau
of Internal Revenue to manufacture cigarettes bearing the trademark
"MARK" (Letter of Ruben B. Ancheta, Acting Commissioner addressed to
Fortune Tobacco Corporation dated April 3, 1981, marked as Annex "A",
defendant's "OPPOSITION, etc." dated September 24, 1982). However,
this authority is qualified . . . that the said brands have been accepted
and registered by the Patent Office not later than six (6) months after you
have been manufacturing the cigarettes and placed the same in the
market." However, this grant ". . . does not give you protection against
any person or entity whose rights may be prejudiced by infringement or
unfair competition in relation to your indicated trademarks/brands". As
aforestated, the registration of defendant's application is still pending in
the Philippine Patent Office.
It has been repeatedly held in this jurisdiction as well as in the United
States that the right or title of the applicant for injunction remedy must be
clear and free from doubt. Because of the disastrous and painful effects
of an injunction, Courts should be extremely careful, cautious and
conscionable in the exercise of its discretion consistent with justice,
equity and fair play.

There is no power the exercise of which is more

delicate which requires greater caution, deliberation,
and sound discretion, or (which is) more dangerous
in a doubtful case than the issuing of an injunction; it
is the strong arm of equity that never ought to be
extended unless to cases of great injury, where
courts of law cannot afford an adequate or
commensurate remedy in damages. The right must
be clear, the injury impending or threatened, so as to
be averted only by the protecting preventive process
of injunction. (Bonaparte v. Camden, etc. N. Co., 3 F.
Cas. No. 1, 617, Baldw. 205, 217.)
Courts of equity constantly decline to lay down any
rule which injunction shall be granted or withheld.
There is wisdom in this course, for it is impossible to
foresee all exigencies of society which may require
their aid to protect rights and restrain wrongs.
(Merced M. Go v. Freemont, 7 Gal. 317, 321; 68 Am.
Dec. 262.)
It is the strong arm of the court; and to render its
operation begin and useful, it must be exercised with
great discretion, and when necessary requires it.
(Attorney-General v. Utica Inc. Co., P. John Ch.
(N.Y.) 371.)
Having taken a panoramic view of the position[s] of both parties as
viewed from their pleadings, the picture reduced to its minimum size
would be this: At the crossroads are the two (2) contending parties,
plaintiffs vigorously asserting the rights granted by law, treaty and
jurisprudence to restrain defendant in its activities of manufacturing,
selling, distributing and advertising its "MARK" cigarettes and now comes
defendant who countered and refused to be restrained claiming that it
has been authorized temporarily by the Bureau of Internal Revenue
under certain conditions to do so as aforestated coupled by its pending
application for registration of trademark "MARK" in the Philippine Patent
Office. This circumstance in itself has created a dispute between the
parties which to the mind of the Court does not warrant the issuance of a
writ of preliminary injunction.
It is well-settled principle that courts of equity will
refuse an application for the injunctive remedy

where the principle of law on which the right to

preliminary injunction rests is disputed and will admit
of doubt, without a decision of the court of law
establishing such principle although satisfied as to
what is a correct conclusion of law upon the facts.
The fact, however, that there is no such dispute or
conflict does not in itself constitute a justifiable
ground for the court to refuse an application for the
injunctive relief. (Hackensack Impr. Commn. v. New
Jersey Midland P. Co., 22 N.J. Eg. 94.)
Hence, the status quo existing between the parties prior to the filing of
this case should be maintained. For after all, an injunction, without
reference to the parties, should be violent, vicious nor even vindictive.
(pp. 338-341, Rollo in G.R. No. 91332.)
In the process of denying petitioners' subsequent motion for reconsideration of the order
denying issuance of the requested writ, the court of origin took cognizance of the certification
executed on January 30, 1984 by the Philippine Patent Office attesting to the fact that private
respondent's application for registration is still pending appropriate action. Apart from this
communication, what prompted the trial court judge to entertain the idea of prematurity and
untimeliness of petitioners' application for a writ of preliminary injunction was the letter from
the Bureau of Internal Revenue date February 2, 1984 which reads:

cigarette until this Office is officially notified that the question of

ownership of "MARK" brand is finally resolved.
Very truly yours,
TEODORO D. PAREO
Chief, Manufactured Tobacco
Tax Division
TAN-P6531-D2830-A-6It appears from the testimony of Atty. Enrique
Madarang, Chief of the Trademark Division of the then Philippine Patent
Office that Fortune's application for its trademark is still pending before
said office (p. 311, Rollo).
Petitioners thereafter cited supervening events which supposedly transpired since March 28,
1983, when the trial court first declined issuing a writ of preliminary injunction, that could alter
the results of the case in that Fortune's application had been rejected, nay, barred by the
Philippine Patent Office, and that the application had been forfeited by abandonment, but the
trial court nonetheless denied the second motion for issuance of the injunctive writ on April
22, 1987, thus:

Madam:

For all the prolixity of their pleadings and testimonial evidence, the
plaintiffs-movants have fallen far short of the legal requisites that would
justify the grant of the writ of preliminary injunction prayed for. For one,
they did not even bother to establish by competent evidence that the
products supposedly affected adversely by defendant's trademark now
subject of an application for registration with the Philippine Patents
Office, are in actual use in the Philippines. For another, they
concentrated their fire on the alleged abandonment and forfeiture by
defendant of said application for registration.

In connection with your letter dated January 25, 1984, reiterating your
query as to whether your label approval automatically expires or
becomes null and void after six (6) months if the brand is not accepted
and by the patent office, please be informed that no provision in the Tax
Code or revenue regulation that requires an applicant to comply with the
aforementioned condition order that his label approved will remain valid
and existing.

The Court cannot help but take note of the fact that in their complaint
plaintiffs included a prayer for issuance preliminary injunction. The
petition was duly heard, and thereafter matter was assiduously
discussed lengthily and resolved against plaintiffs in a 15-page Order
issued by the undersigned's predecessor on March 28, 1983. Plaintiffs'
motion for reconsideration was denied in another well-argued 8 page
Order issued on April 5, 1984,, and the matter was made to rest.

Based on the document you presented, it shows that registration of this

particular label still pending resolution by the Patent Office. These being
so , you may therefore continue with the production said brand of

However, on the strength of supposed changes in the material facts of

this case, plaintiffs came up with the present motion citing therein the
said changes which are: that defendant's application had been rejected
and barred by the Philippine Patents Office, and that said application has

MRS. TERESITA GANDIONGCO OLEDAN

Legal Counsel
Fortune Tobacco Corporation

been deemed abandoned and forfeited. But defendant has refiled the
same.
Plaintiffs' arguments in support of the present motion appear to be a
mere rehash of their stand in the first above-mentioned petition which
has already been ruled upon adversely against them. Granting that the
alleged changes in the material facts are sufficient grounds for a motion
seeking a favorable grant of what has already been denied, this motion
just the same cannot prosper.
In the first place there is no proof whatsoever that any of plaintiffs'
products which they seek to protect from any adverse effect of the
trademark applied for by defendant, is in actual use and available for
commercial purposes anywhere in the Philippines. Secondly as shown
by plaintiffs' own evidence furnished by no less than the chief of
Trademarks Division of the Philippine Patent Office, Atty. Enrique
Madarang, the abandonment of an application is of no moment, for the
same can always be refiled. He said there is no specific provision in the
rules prohibiting such refiling (TSN, November 21, 1986, pp. 60 & 64,
Raviera). In fact, according to Madarang, the refiled application of
defendant is now pending before the Patents Office. Hence, it appears
that the motion has no leg to stand on. (pp. 350-351, Rolloin G. R. No.
91332.)
Confronted with this rebuff, petitioners filed a previous petition for certiorari before the Court,
docketed as G.R. No. 78141, but the petition was referred to the Court of Appeals.
The Court of Appeals initially issued a resolution which set aside the court of origin's order
dated April 22, 1987, and granted the issuance of a writ of preliminary injunction enjoining
Fortune, its agents, employees, and representatives, from manufacturing, selling, and
advertising "MARK" cigarettes. The late Justice Cacdac, speaking for the First Division of the
Court of Appeals in CA-G.R. SP No. 13132, remarked:
There is no dispute that petitioners are the registered owners of the
trademarks for cigarettes "MARK VII", "MARK TEN", and "LARK".
(Annexes B, C and D, petition). As found and reiterated by the Philippine
Patent Office in two (2) official communications dated April 6, 1983 and
January 24, 1984, the trademark "MARK" is "confusingly similar" to the
trademarks of petitioners, hence registration was barred under Sec. 4 (d)
of Rep. Act. No. 166, as amended (pp. 106, 139, SCA rollo). In a third
official communication dated April 8, 1986, the trademark application of
private respondent for the "MARK" under Serial No. 44008 filed on

February 13, 1981 which was declared abandoned as of February 16,

1986, is now deemed forfeited, there being no revival made pursuant to
Rule 98 of the Revised Rules of Practitioners in Trademark Cases." (p.
107, CA rollo). The foregoing documents or communications mentioned
by petitioners as "the changes in material facts which occurred after
March 28, 1983", are not also questioned by respondents.
Pitted against the petitioners' documentary evidence, respondents
pointed to (1) the letter dated January 30, 1979 (p. 137, CA rollo) of
Conrado P. Diaz, then Acting Commissioner of Internal Revenue,
temporarily granting the request of private respondent for a permit to
manufacture two (2) new brands of cigarettes one of which is brand
"MARK" filter-type blend, and (2) the certification dated September 26,
1986 of Cesar G. Sandico, Director of Patents (p. 138, CA rollo) issued
upon the written request of private respondents' counsel dated
September 17, 1986 attesting that the records of his office would show
that the "trademark MARK" for cigarettes is now the subject of a pending
application under Serial No. 59872 filed on September 16, 1986.
Private respondent's documentary evidence provides the reasons
neutralizing or weakening their probative values. The penultimate
paragraph of Commissioner Diaz' letter of authority reads:
Please be informed further that the authority herein
granted does not give you protection against any
person or entity whose rights may be prejudiced by
infringement or unfair competition in relation to your
above-named brands/trademark.
while Director Sandico's certification contained similar conditions as
follows:
This Certification, however, does not give protection
as against any person or entity whose right may be
prejudiced by infringement or unfair competition in
relation to the aforesaid trademark nor the right to
register if contrary to the provisions of the Trademark
Law, Rep. Act No. 166 as amended and the Revised
Rules of Practice in Trademark Cases.
The temporary permit to manufacture under the trademark "MARK" for
cigarettes and the acceptance of the second application filed by private

respondent in the height of their dispute in the main case were evidently
made subject to the outcome of the said main case or Civil Case No.
47374 of the respondent Court. Thus, the Court has not missed to note
the absence of a mention in the Sandico letter of September 26, 1986 of
any reference to the pendency of the instant action filed on August 18,
1982. We believe and hold that petitioners have shown a prima
facie case for the issuance of the writ of prohibitory injunction for the
purposes stated in their complaint and subsequent motions for the
issuance of the prohibitory writ. (Buayan Cattle Co. vs. Quintillan, 125
SCRA 276)
The requisites for the granting of preliminary injunction are the existence
of the right protected and the facts against which the injunction is to be
directed as violative of said right. (Buayan Cattle Co. vs.
Quintillan, supra; Ortigas & Co. vs. Ruiz, 148 SCRA 326). It is a writ
framed according to the circumstances of the case commanding an act
which the Court regards as essential to justice and restraining an act it
deems contrary to equity and good conscience (Rosauro vs. Cuneta, 151
SCRA 570). If it is not issued, the defendant may, before final judgment,
do or continue the doing of the act which the plaintiff asks the court to
restrain, and thus make ineffectual the final judgment rendered
afterwards granting the relief sought by the plaintiff (Calo vs. Roldan, 76
Phil. 445). Generally, its grant or denial rests upon the sound discretion
of the Court except on a clear case of abuse (Belish Investment &
Finance Co. vs. State House, 151 SCRA 636). Petitioners' right of
exclusivity to their registered trademarks being clear and beyond
question, the respondent court's denial of the prohibitive writ constituted
excess of jurisdiction and grave abuse discretion. If the lower court does
not grant preliminary injunction, the appellate court may grant the same.
(Service Specialists, Inc. vs. Sheriff of Manila, 145 SCRA 139). (pp. 165167, Rollo in G.R. No. 91332.)
After private respondent Fortune's motion for reconsideration was rejected, a motion to
dissolve the disputed writ of preliminary injunction with offer to post a counterbond was
submitted which was favorably acted upon by the Court of Appeals, premised on the filing of
a sufficient counterbond to answer for whatever perjuicio petitioners may suffer as a result
thereof, to wit:

The private respondent seeks to dissolve the preliminary injunction

previously granted by this Court with an offer to file a counterbond. It was
pointed out in its supplemental motion that lots of workers employed will
be laid off as a consequence of the injunction and that the government
will stand to lose the amount of specific taxes being paid by the
private respondent. The specific taxes being paid is the sum total of
P120,120, 295.98 from January to July 1989.
The petitioners argued in their comment that the damages caused by the
infringement of their trademark as well as the goodwill it generates are
incapable of pecuniary estimation and monetary evaluation and not even
the counterbond could adequately compensate for the damages it will
incur as a result of the dissolution of the bond. In addition, the petitioner
further argued that doing business in the Philippines is not relevant as
the injunction pertains to an infringement of a trademark right.
After a thorough re-examination of the issues involved and the
arguments advanced by both parties in the offer to file a counterbond
and the opposition thereto, WE believe that there are sound and cogent
reasons for US to grant the dissolution of the writ of preliminary
injunction by the offer of the private respondent to put up a counterbond
to answer for whatever damages the petitioner may suffer as a
consequence of the dissolution of the preliminary injunction.
The petitioner will not be prejudiced nor stand to suffer irreparably as a
consequence of the lifting of the preliminary injunction considering that
they are not actually engaged in the manufacture of the cigarettes with
the trademark in question and the filing of the counterbond will amply
answer for such damages.
While the rule is that an offer of a counterbond does not operate to
dissolve an injunction previously granted, nevertheless, it is equally true
that an injunction could be dissolved only upon good and valid grounds
subject to the sound discretion of the court. As WE have maintained the
view that there are sound and good reasons to lift the preliminary
injunction, the motion to file a counterbond is granted. (pp. 5354, Rollo in G.R. No. 91332.)
Petitioners, in turn, filed their own motion for re-examination geared towards reimposition of
the writ of preliminary injunction but to no avail (p. 55, Rollo in G.R. No. 91332).

Hence, the instant petition casting three aspersions that respondent court gravely abused its
discretion tantamount to excess of jurisdiction when:
I. . . . it required, contrary to law and jurisprudence, that in order that
petitioners may suffer irreparable injury due to the lifting of the injunction,
petitioners should be using actually their registered trademarks in
commerce in the Philippines;
II. . . . it lifted the injunction in violation of section 6 of Rule 58 of the
Rules of Court; and
III. . . . after having found that the trial court had committed grave abuse
of discretion and exceeded its jurisdiction for having refused to issue the
writ of injunction to restrain private respondent's acts that are contrary to
equity and good conscience, it made a complete about face for legally
insufficient grounds and authorized the private respondent to continue
performing the very same acts that it had considered contrary to equity
and good conscience, thereby ignoring not only the mandates of the
Trademark Law, the international commitments of the Philippines, the
judicial admission of private respondent that it will have no more right to
use the trademark "MARK" after the Director of Patents shall have
rejected the application to register it, and the admonitions of the
Supreme Court. (pp. 24-25, Petition; pp. 25-26,Rollo.)
To sustain a successful prosecution of their suit for infringement, petitioners, as foreign
corporations not engaged in local commerce, rely on section 21-A of the Trademark Law
reading as follows:
Sec. 21-A. Any foreign corporation or juristic person to which a mark or
trade-name has been registered or assigned under this act may bring an
action hereunder for infringement, for unfair competition, or false
designation of origin and false description, whether or not it has been
licensed to do business in the Philippines under Act Numbered Fourteen
hundred and fifty-nine, as amended, otherwise known as the Corporation
Law, at the time it brings complaint: Provided, That the country of which
the said foreign corporation or juristic person is a citizen or in which it is
domiciled, by treaty, convention or law, grants a similar privilege to
corporate or juristic persons of the Philippines. (As inserted by Sec. 7 of
Republic Act No. 638.)
to drive home the point that they are not precluded from initiating a cause
of action in the Philippines on account of the principal perception that

another entity is pirating their symbol without any lawful authority to do

so. Judging from a perusal of the aforequoted Section 21-A, the
conclusion reached by petitioners is certainly correct for the proposition
in support thereof is embedded in the Philippine legal jurisprudence.
Indeed, it was stressed in General Garments Corporation vs. Director of Patents (41 SCRA
50 [1971]) by then Justice (later Chief Justice) Makalintal that:
Parenthetically, it may be stated that the ruling in the Mentholatum case
was subsequently derogated when Congress, purposely to "counteract
the effects" of said case, enacted Republic Act No. 638, inserting Section
21-A in the Trademark Law, which allows a foreign corporation or juristic
person to bring an action in Philippine courts for infringement of a mark
or tradename, for unfair competition, or false designation of origin and
false description, "whether or not it has been licensed to do business in
the Philippines under Act Numbered Fourteen hundred and fifty-nine, as
amended, otherwise known as the Corporation Law, at the time it brings
complaint."
Petitioner argues that Section 21-A militates against respondent's
capacity to maintain a suit for cancellation, since it requires, before a
foreign corporation may bring an action, that its trademark or tradename
has been registered under the Trademark Law. The argument misses the
essential point in the said provision, which is that the foreign corporation
is allowed thereunder to sue "whether or not it has been licensed to do
business in the Philippines" pursuant to the Corporation Law (precisely to
counteract the effects of the decision in the Mentholatum case). (at p.
57.)
However, on May, 21, 1984, Section 21-A, the provision under consideration, was qualified by
this Court in La Chemise Lacoste S.A. vs. Fernandez (129 SCRA 373 [1984]), to the effect
that a foreign corporation not doing business in the Philippines may have the right to sue
before Philippine Courts, but existing adjective axioms require that qualifying circumstances
necessary for the assertion of such right should first be affirmatively pleaded (2 Agbayani
Commercial Laws of the Philippines, 1991 Ed., p. 598; 4 Martin, Philippine Commercial Laws,
Rev. Ed., 1986, p. 381). Indeed, it is not sufficient for a foreign corporation suing under
Section 21-A to simply allege its alien origin. Rather, it must additionally allege its personality
to sue. Relative to this condition precedent, it may be observed that petitioners were not
remiss in averring their personality to lodge a complaint for infringement (p. 75,Rollo in ACG.R. SP No. 13132) especially so when they asserted that the main action for infringement is
anchored on an isolated transaction (p. 75, Rollo in AC-G.R. SP No. 13132; Atlantic Mutual
Ins. Co. vs. Cebu Stevedoring Co., Inc., 17 SCRA 1037 (1966), 1 Regalado, Remedial Law
Compendium, Fifth Rev. Ed., 1988, p. 103).

Another point which petitioners considered to be of significant interest, and which they desire
to impress upon us is the protection they enjoy under the Paris Convention of 1965 to which
the Philippines is a signatory. Yet, insofar as this discourse is concerned, there is no
necessity to treat the matter with an extensive response because adherence of the
Philippines to the 1965 international covenant due to pact sunt servanda had been
acknowledged in La Chemise (supra at page 390).
Given these confluence of existing laws amidst the cases involving trademarks, there can be
no disagreement to the guiding principle in commercial law that foreign corporations not
engaged in business in the Philippines may maintain a cause of action for infringement
primarily because of Section 21-A of the Trademark Law when the legal standing to sue is
alleged, which petitioners have done in the case at hand.
In assailing the justification arrived at by respondent court when it recalled the writ of
preliminary injunction, petitioners are of the impression that actual use of their trademarks in
Philippine commercial dealings is not an indispensable element under Article 2 of the Paris
Convention in that:
(2) . . . . no condition as to the possession of a domicile or establishment
in the country where protection is claimed may be required of persons
entitled to the benefits of the Union for the enjoyment of any industrial
property of any industrial property rights. (p. 28, Petition; p. 29, Rollo in
G.R. No. 91332.)
Yet petitioners' perception along this line is nonetheless resolved by Sections 2 and 2-A of the
Trademark Law which speak loudly, about necessity of actual commercial use of the
trademark in the local forum:
Sec. 2. What are registrable. Trademarks, tradenames and service
marks owned by persons, corporations, partnerships or associations
domiciled in the Philippines and by persons, corporations, partnerships
or associations domiciled in any foreign country may be registered in
accordance with the provisions of this Act; Provided, That said
trademarks, tradenames, or service marks are actually in use in
commerce and services not less than two months in the
Philippines before the time the applications for registration are filed; And
provided, further, That the country of which the applicant for registration
is a citizen grants by law substantially similar privileges to citizens of the
Philippines, and such fact is officially certified, with a certified true copy of
the foreign law translated into the English language, by the government
of the foreign country to the Government of the Republic of the
Philippines. (As amended by R.A. No. 865).

Sec. 2-A. Ownership of trademarks, tradenames and service marks; how

acquired. Anyone who lawfully produces or deals in merchandise of
any kind or who engages in any lawful business, or who renders any
lawful service in commerce, by actual use thereof in manufacture or
trade, in business,and in the service rendered, may appropriate to his
exclusive use a trademark, a tradename, or a service mark not so
appropriated by another, to distinguish his merchandise, business or
service from the merchandise, business or service of others. The
ownership or possession of a trademark, tradename, service mark,
heretofore or hereafter appropriated, as in this section provided, shall be
recognized and protected in the same manner and to the same extent as
are other property rights known to the law. (As amended by R.A. No.
638). (Kabushi Kaisha Isetan vs. Intermediate Appellate Court, 203
SCRA 583 [1991], at pp. 589-590; emphasis supplied.)
Following universal acquiescence and comity, our municipal law on trademarks regarding the
requirement of actual use in the Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen vs.
Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras,
International Law and World Organization, 1971 Ed., p. 20). Withal, the fact that international
law has been made part of the law of the land does not by any means imply the primacy of
international law over national law in the municipal sphere. Under the doctrine of
incorporation as applied in most countries, rules of international law are given a standing
equal, not superior, to national legislative enactments (Salonga and Yap, Public International
Law, Fourth ed., 1974, p. 16).
The aforequoted basic provisions of our Trademark Law, according to Justice Gutierrez, Jr.,
in Kabushi Kaisha Isetan vs. Intermediate Appellate Court (203 SCRA 583 [1991]), have been
construed in this manner:
A fundamental principle of Philippine Trademark Law is that actual use in
commerce in the Philippines is a pre-requisite to the acquisition of
ownership over a trademark or a tradename.
xxx xxx xxx
These provisions have been interpreted in Sterling Products
International, Inc. v. Farbenfabriken Bayer Actiengesellschaft (27 SCRA
1214 [1969]) in this way:
A rule widely accepted and firmly entrenched
because it has come down through the years is that

actual use in commerce or business is a prerequisite

to the acquisition of the right of ownership over a
trademark.
xxx xxx xxx
. . . Adoption alone of a trademark would not give
exclusive right thereto. Such right grows out of their
actual use. Adoption is not use. One may make
advertisements, issue circulars, give out price lists
on certain goods; but these alone would not give
exclusive right of use. For trademark is a creation of
use. The underlying reason for all these is that
purchasers have come to understand the mark as
indicating the origin of the wares. Flowing from this
is the trader's right to protection in the trade he has
built up and the goodwill he has accumulated from
use of the trademark. . . .
In fact, a prior registrant cannot claim exclusive use of the trademark
unless it uses it in commerce.
We rule[d] in Pagasa Industrial Corporation v. Court of Appeals (118
SCRA 526 [1982]):

3. The Trademark law is very clear. It requires actual commercial use of

the mark prior to its registration. There is no dispute that respondent
corporation was the first registrant, yet it failed to fully substantiate its
claim that it used in trade or business in the Philippines the subject mark;
it did not present proof to invest it with exclusive, continuous adoption of
the trademark which should consist among others, of considerable sales
since its first use. The invoices (Exhibits 7, 7-a, and 8-b) submitted by
respondent which were dated way back in 1957 show that the zippers
sent to the Philippines were to be used as "samples" and "of no
commercial value". The evidence for respondent must be clear, definite
and free from inconsistencies. (Sy Ching v. Gaw Lui, 44 SCRA 148-149)
"Samples" are not for sale and therefore, the fact of exporting them to
the Philippines cannot be considered to be equivalent to the "use"
contemplated by the law. Respondent did not expect income from such
"samples". There were no receipts to establish sale, and no proof were
presented to show that they were subsequently sold in the Philippines.
(Pagasa Industrial Corp. v. Court of Appeals, 118 SCRA 526 [1982];
Emphasis Supplied)
The records show that the petitioner has never conducted any business
in the Philippines. It has never promoted its tradename or trademark in
the Philippines. It is unknown to Filipino except the very few who may
have noticed it while travelling abroad. It has never paid a single centavo
of tax to the Philippine government. Under the law, it has no right to the
remedy it seeks. (at pp. 589-591.)
In other words, petitioners may have the capacity to sue for infringement irrespective of lack
of business activity in the Philippines on account of Section 21-A of the Trademark Law but
the question whether they have an exclusive right over their symbol as to justify issuance of
the controversial writ will depend on actual use of their trademarks in the Philippines in line
with Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that
when a foreign corporation not licensed to do business in Philippines files a complaint for
infringement, the entity need not be actually using its trademark in commerce in the
Philippines. Such a foreign corporation may have the personality to file a suit for infringement
but it may not necessarily be entitled to protection due to absence of actual use of the
emblem in the local market.
Going back to the first assigned error, we can not help but notice the manner the ascription
was framed which carries with it the implied but unwarranted assumption of the existence of
petitioners' right to relief. It must be emphasized that this aspect of exclusive dominion to the
trademarks, together with the corollary allegation of irreparable injury, has yet to be
established by petitioners by the requisite quantum of evidence in civil cases. It cannot be
denied that our reluctance to issue a writ of preliminary injunction is due to judicial deference

to the lower courts, involved as there is mere interlocutory order (Villarosa vs. Teodoro, Sr.,
100 Phil. 25 [1956]). In point of adjective law, the petition has its roots on a remedial measure
which is but ancillary to the main action for infringement still pending factual determination
before the court of origin. It is virtually needless to stress the obvious reality that critical facts
in an infringement case are not before us more so when even Justice Feliciano's opinion
observes that "the evidence is scanty" and that petitioners "have yet to submit copies or
photographs of their registered marks as used in cigarettes" while private respondent has not,
for its part, "submitted the actual labels or packaging materials used in selling its "Mark"
cigarettes." Petitioners therefore, may not be permitted to presume a given state of facts on
their so called right to the trademarks which could be subjected to irreparable injury and in
the process, suggest the fact of infringement. Such a ploy would practically place the cart
ahead of the horse. To our mind, what appears to be the insurmountable barrier to petitioners'
portrayal of whimsical exercise of discretion by the Court of Appeals is the well-taken remark
of said court that:
The petitioner[s] will not be prejudiced nor stand to suffer irreparably as a
consequence of the lifting of the preliminary injunction considering that
they are not actually engaged in the manufacture of the cigarettes with
the trademark in question and the filing of the counterbond will amply
answer for such damages. (p. 54. Rollo in G.R. No. 91332.)
More telling are the allegations of petitioners in their complaint (p. 319, Rollo G.R. No. 91332)
as well as in the very petition filed with this Court (p. 2, Rollo in G.R. No. 91332) indicating
that they are not doing business in the Philippines, for these frank representations are
inconsistent and incongruent with any pretense of a right which can breached (Article 1431,
New Civil Code; Section 4, Rule 129; Section 3, Rule 58, Revised Rules of Court). Indeed, to
be entitled to an injunctive writ, petitioner must show that there exists a right to be protected
and that the facts against which injunction is directed are violative of said right (Searth
Commodities Corporation vs. Court of Appeals, 207 SCRA 622 [1992]). It may be added in
this connection that albeit petitioners are holders of certificate of registration in the Philippines
of their symbols as admitted by private respondent, the fact of exclusive ownership cannot be
made to rest solely on these documents since dominion over trademarks is not acquired by
the mere fact of registration alone and does not perfect a trademark right (Unno Commercial
Enterprises, Inc. vs. General Milling Corporation, 120 SCRA 804 [1983]).
Even if we disregard the candid statements of petitioners anent the absence of business
activity here and rely on the remaining statements of the complaint below, still, when these
averments are juxtaposed with the denials and propositions of the answer submitted by
private respondent, the supposed right of petitioners to the symbol have thereby been
controverted. This is not to say, however, that the manner the complaint was traversed by the
answer is sufficient to tilt the scales of justice in favor of private respondent. Far from it. What
we are simply conveying is another basic tenet in remedial law that before injunctive relief
may properly issue, complainant's right or title must be undisputed and demonstrated on the

strength of one's own title to such a degree as to unquestionably exclude dark clouds of
doubt, rather than on the weakness of the adversary's evidence, inasmuch as the possibility
of irreparable damage, without prior proof of transgression of an actual existing right, is no
ground for injunction being mere damnum absque injuria (Talisay-Silay Milling Co., Inc. vs.
CFI of Negros Occidental, 42 SCRA 577 [1971]; Francisco, Rules of Court, Second ed.,
1985, p. 225; 3 Martin, Rules of Court, 1986 ed., p. 82).
On the economic repercussion of this case, we are extremely bothered by the thought of
having to participate in throwing into the streets Filipino workers engaged in the manufacture
and sale of private respondent's "MARK" cigarettes who might be retrenched and forced to
join the ranks of the many unemployed and unproductive as a result of the issuance of a
simple writ of preliminary injunction and this, during the pendency of the case before the trial
court, not to mention the diminution of tax revenues represented to be close to a quarter
million pesos annually. On the other hand, if the status quo is maintained, there will be no
damage that would be suffered by petitioners inasmuch as they are not doing business in the
Philippines.
With reference to the second and third issues raised by petitioners on the lifting of the writ of
preliminary injunction, it cannot be gainsaid that respondent court acted well within its
prerogatives under Section 6, Rule 58 of the Revised Rules of Court:
Sec. 6. Grounds for objection to, or for motion of dissolution of
injunction. The injunction may be refused or, if granted ex parte, may
be dissolved, upon the insufficiency of the complaint as shown by the
complaint itself, with or without notice to the adverse party. It may also be
refused or dissolved on other grounds upon affidavits on the part of the
defendants which may be opposed by the plaintiff also by affidavits. It
may further be refused or, if granted, may be dissolved, if it appears after
hearing that although the plaintiff is entitled to the injunction, the
issuance or continuance thereof, as the case may be, would cause great
damage to the defendant while the plaintiff can be fully compensated for
such damages as he may suffer, and the defendant files a bond in an
amount fixed by the judge conditioned that he will pay all damages which
the plaintiff may suffer by the refusal or the dissolution of the injunction. If
it appears that the extent of the preliminary injunction granted is too
great, it must be modified.
Under the foregoing rule, injunction may be refused, or, if granted, may be dissolved, on the
following instances:

(1) If there is insufficiency of the complaint as shown by the allegations

therein. Refusal or dissolution may be granted in this case with or without
notice to the adverse party.
(2) If it appears after hearing that although the plaintiff is entitled to the
injunction, the issuance or continuance thereof would cause great
damage to the defendant, while the plaintiff can be fully compensated for
such damages as he may suffer. The defendant, in this case, must file a
bond in an amount fixed by the judge conditioned that he will pay all
damages which plaintiff may suffer by the refusal or the dissolution of the
injunction.
(3) On the other grounds upon affidavits on the part of the defendant
which may be opposed by the plaintiff also affidavits.
Modification of the injunction may also be ordered by the court if it
appears that the extent of the preliminary injunction granted is too great.
(3 Martin, Rules of Court, 1986 ed., p. 99; Francisco, supra, at p. 268.)

absence of their "right" to be protected. At any rate, and assuming in gratia argumenti that
respondent court erroneously lifted the writ it previously issued, the same may be cured by
appeal and not in the form of a petition for certiorari (Clark vs. Philippine Ready Mix Concrete
Co., 88 Phil. 460 [1951]). Verily, and mindful of the rule that a writ of preliminary injunction is
an interlocutory order which is always under the control of the court before final judgment,
petitioners' criticism must fall flat on the ground, so to speak, more so when extinction of the
previously issued writ can even be made without previous notice to the adverse party and
without a hearing (Caluya vs. Ramos, 79 Phil. 640 [1974]; 3 Moran, Rules of Court, 1970 ed.,
p. 81).
WHEREFORE, the petition is hereby DISMISSED and the Resolutions of the Court of
Appeals dated September 14, 1989 and November 29, 1989 are hereby AFFIRMED.
SO ORDERED.
Bidin, J., concurs.
Davide, Jr., concurs in the result.

In view of the explicit representation of petitioners in the complaint that they are not engaged
in business in the Philippines, it inevitably follows that no conceivable damage can be
suffered by them not to mention the foremost consideration heretofore discussed on the

Romero, J. took no part.

G.R. No. L-49112 February 2, 1979

FERNANDO, J.:

LEOVILLO C. AGUSTIN, petitioner,

vs.
HON. ROMEO F. EDU, in his capacity as Land Transportation Commissioner; HON.
JUAN PONCE ENRILE, in his capacity as Minister of National Defense; HON. ALFREDO
L. JUINIO, in his capacity as Minister Of Public Works, Transportation and
Communications; and HON: BALTAZAR AQUINO, in his capacity as Minister of Public
Highways, respondents.

The validity of a letter of Instruction 1 providing for an early seaming device for motor vehicles is

Leovillo C. Agustin Law Office for petitioner.

Solicitor General Estelito P. Mendoza, Assistant Solicitor General Ruben E. Agpalo and
Solicitor Amado D. Aquino for respondents.

assailed in this prohibition proceeding as being violative of the constitutional guarantee of due process
and, insofar as the rules and regulations for its implementation are concerned, for transgressing the
fundamental principle of non- delegation of legislative power. The Letter of Instruction is stigmatized by
petitioner who is possessed of the requisite standing, as being arbitrary and oppressive. A temporary
restraining order as issued and respondents Romeo F. Edu, Land Transportation Commissioner Juan
Ponce Enrile, Minister of National Defense; Alfredo L. Juinio, Minister of Public Works, Transportation and
Communications; and Baltazar Aquino, Minister of Public Highways; were to answer. That they did in a
pleading submitted by Solicitor General Estelito P. Mendoza. 2 Impressed with a highly persuasive quality, it
makes devoid clear that the imputation of a constitutional infirmity is devoid of justification The Letter of
Instruction on is a valid police power measure. Nor could the implementing rules and regulations issued by
respondent Edu be considered as amounting to an exercise of legislative power. Accordingly, the petition
must be dismissed.

The facts are undisputed. The assailed Letter of Instruction No. 229 of President Marcos,
issued on December 2, 1974, reads in full: "[Whereas], statistics show that one of the major
causes of fatal or serious accidents in land transportation is the presence of disabled, stalled

10

or parked motor vehicles along streets or highways without any appropriate early warning
device to signal approaching motorists of their presence; [Whereas], the hazards posed by
such obstructions to traffic have been recognized by international bodies concerned with
traffic safety, the 1968 Vienna Convention on Road Signs and Signals and the United Nations
Organization (U.N.); [Whereas], the said Vienna Convention which was ratified by the
Philippine Government under P.D. No. 207, recommended the enactment of local legislation
for the installation of road safety signs and devices; [Now, therefore, I, Ferdinand E. Marcos],
President of the Philippines, in the interest of safety on all streets and highways, including
expressways or limited access roads, do hereby direct: 1. That all owners, users or drivers of
motor vehicles shall have at all times in their motor vehicles at least one (1) pair of early
warning device consisting of triangular, collapsible reflectorized plates in red and yellow
colors at least 15 cms. at the base and 40 cms. at the sides. 2. Whenever any motor vehicle
is stalled or disabled or is parked for thirty (30) minutes or more on any street or highway,
including expressways or limited access roads, the owner, user or driver thereof shall cause
the warning device mentioned herein to be installed at least four meters away to the front and
rear of the motor vehicle staged, disabled or parked. 3. The Land Transportation
Commissioner shall cause Reflectorized Triangular Early Warning Devices, as herein
described, to be prepared and issued to registered owners of motor vehicles, except
motorcycles and trailers, charging for each piece not more than 15 % of the acquisition cost.
He shall also promulgate such rules and regulations as are appropriate to effectively
implement this order. 4. All hereby concerned shall closely coordinate and take such
measures as are necessary or appropriate to carry into effect then instruction. 3 Thereafter, on
November 15, 1976, it was amended by Letter of Instruction No. 479 in this wise. "Paragraph 3 of Letter of
Instruction No. 229 is hereby amended to read as follows: 3. The Land transportation Commissioner shall
require every motor vehicle owner to procure from any and present at the registration of his vehicle, one
pair of a reflectorized early warning device, as d bed of any brand or make chosen by mid motor vehicle .
The Land Transportation Commissioner shall also promulgate such rule and regulations as are appropriate
to effectively implement this order.'" 4 There was issued accordingly, by respondent Edu, the implementing
rules and regulations on December 10, 1976. 5 They were not enforced as President Marcos on January
25, 1977, ordered a six-month period of suspension insofar as the installation of early warning device as a
pre-registration requirement for motor vehicle was concerned. 6 Then on June 30, 1978, another Letter of
Instruction 7 the lifting of such suspension and directed the immediate implementation of Letter of
Instruction No. 229 as amended. 8 It was not until August 29, 1978 that respondent Edu issued
Memorandum Circular No. 32, worded thus: "In pursuance of Letter of Instruction No. 716, dated June 30,
1978, the implementation of Letter of Instruction No. 229, as amended by Letter of Instructions No. 479,
requiring the use of Early Warning Devices (EWD) on motor vehicle, the following rules and regulations are
hereby issued: 1. LTC Administrative Order No. 1, dated December 10, 1976; shall now be implemented
provided that the device may come from whatever source and that it shall have substantially complied with
the EWD specifications contained in Section 2 of said administrative order; 2. In order to insure that every
motor vehicle , except motorcycles, is equipped with the device, a pair of serially numbered stickers, to be
issued free of charge by this Commission, shall be attached to each EWD. The EWD. serial number shall
be indicated on the registration certificate and official receipt of payment of current registration fees of the
motor vehicle concerned. All Orders, Circulars, and Memoranda in conflict herewith are hereby
superseded, This Order shall take effect immediately. 9 It was for immediate implementation by respondent
Alfredo L. Juinio, as Minister of Public Works, transportation, and Communications. 10

Petitioner, after setting forth that he "is the owner of a Volkswagen Beetle Car, Model 13035,
already properly equipped when it came out from the assembly lines with blinking lights fore
and aft, which could very well serve as an early warning device in case of the emergencies
mentioned in Letter of Instructions No. 229, as amended, as well as the implementing rules
and regulations in Administrative Order No. 1 issued by the land transportation
Commission," 11 alleged that said Letter of Instruction No. 229, as amended, "clearly violates the
provisions and delegation of police power, [sic] * * *: " For him they are "oppressive, unreasonable,
arbitrary, confiscatory, nay unconstitutional and contrary to the precepts of our compassionate New
Society." 12 He contended that they are "infected with arbitrariness because it is harsh, cruel and
unconscionable to the motoring public;" 13 are "one-sided, onerous and patently illegal and immoral
because [they] will make manufacturers and dealers instant millionaires at the expense of car owners who
are compelled to buy a set of the so-called early warning device at the rate of P 56.00 to P72.00 per
set." 14 are unlawful and unconstitutional and contrary to the precepts of a compassionate New Society [as
being] compulsory and confiscatory on the part of the motorists who could very well provide a practical
alternative road safety device, or a better substitute to the specified set of EWD's." 15 He therefore prayed
for a judgment both the assailed Letters of Instructions and Memorandum Circular void and
unconstitutional and for a restraining order in the meanwhile.

A resolution to this effect was handed down by this Court on October 19, 1978: "L-49112
(Leovillo C. Agustin v. Hon. Romeo F. Edu, etc., et al.) Considering the allegations
contained, the issues raised and the arguments adduced in the petition for prohibition with
writ of p prohibitory and/or mandatory injunction, the Court Resolved to (require) the
respondents to file an answer thereto within ton (10) days from notice and not to move to
dismiss the petition. The Court further Resolved to [issue] a [temporary restraining order]
effective as of this date and continuing until otherwise ordered by this Court. 16
Two motions for extension were filed by the Office of the Solicitor General and granted. Then
on November 15, 1978, he Answer for respondents was submitted. After admitting the factual
allegations and stating that they lacked knowledge or information sufficient to form a belief as
to petitioner owning a Volkswagen Beetle car," they "specifically deny the allegations and
stating they lacked knowledge or information sufficient to form a belief as to petitioner owning
a Volkswagen Beetle Car, 17 they specifically deny the allegations in paragraphs X and XI (including its
subparagraphs 1, 2, 3, 4) of Petition to the effect that Letter of Instruction No. 229 as amended by Letters
of Instructions Nos. 479 and 716 as well as Land transportation Commission Administrative Order No. 1
and its Memorandum Circular No. 32 violates the constitutional provisions on due process of law, equal
protection of law and undue delegation of police power, and that the same are likewise oppressive,
arbitrary, confiscatory, one-sided, onerous, immoral unreasonable and illegal the truth being that said
allegations are without legal and factual basis and for the reasons alleged in the Special and Affirmative
Defenses of this Answer." 18 Unlike petitioner who contented himself with a rhetorical recital of his litany of
grievances and merely invoked the sacramental phrases of constitutional litigation, the Answer, in
demonstrating that the assailed Letter of Instruction was a valid exercise of the police power and
implementing rules and regulations of respondent Edu not susceptible to the charge that there was
unlawful delegation of legislative power, there was in the portion captioned Special and Affirmative
Defenses, a citation of what respondents believed to be the authoritative decisions of this Tribunal calling
for application. They are Calalang v. Williams, 19 Morfe v. Mutuc, 20 and Edu v. Ericta. 21 Reference was
likewise made to the 1968 Vienna Conventions of the United Nations on road traffic, road signs, and
signals, of which the Philippines was a signatory and which was duly ratified. 22 Solicitor General Mendoza

11

took pains to refute in detail, in language calm and dispassionate, the vigorous, at times intemperate,
accusation of petitioner that the assailed Letter of Instruction and the implementing rules and regulations
cannot survive the test of rigorous scrutiny. To repeat, its highly-persuasive quality cannot be denied.

3. The futility of petitioner's effort to nullify both the Letter of Instruction and the implementing
rules and regulations becomes even more apparent considering his failure to lay the
necessary factual foundation to rebut the presumption of validity. So it was held in ErmitaMalate Hotel and Motel Operators Association, Inc. v. City Mayor of Manila. 28 The rationale was

This Court thus considered the petition submitted for decision, the issues being clearly joined.
As noted at the outset, it is far from meritorious and must be dismissed.

clearly set forth in an excerpt from a decision of Justice Branders of the American Supreme Court, quoted
in the opinion: "The statute here questioned deals with a subject clearly within the scope of the police
power. We are asked to declare it void on the ground that the specific method of regulation prescribed is
unreasonable and hence deprives the plaintiff of due process of law. As underlying questions of fact may
condition the constitutionality of legislation of this character, the presumption of constitutionality must
prevail in the absence of some factual foundation of record in overthrowing the statute. 29

1. The Letter of Instruction in question was issued in the exercise of the police power. That is
conceded by petitioner and is the main reliance of respondents. It is the submission of the
former, however, that while embraced in such a category, it has offended against the due
process and equal protection safeguards of the Constitution, although the latter point was
mentioned only in passing. The broad and expansive scope of the police power which was
originally Identified by Chief Justice Taney of the American Supreme Court in an 1847
decision as "nothing more or less than the powers of government inherent in every
sovereignty" 23 was stressed in the aforementioned case of Edu v. Erictathus: "Justice Laurel, in the first
leading decision after the Constitution came into force, Calalang v. Williams, Identified police power with
state authority to enact legislation that may interfere with personal liberty or property in order to promote
the general welfare. Persons and property could thus 'be subjected to all kinds of restraints and burdens in
order to we the general comfort, health and prosperity of the state.' Shortly after independence in
1948, Primicias v. Fugoso reiterated the doctrine, such a competence being referred to as 'the power to
prescribe regulations to promote the health, morals, peace, education, good order or safety, and general
welfare of the people. The concept was set forth in negative terms by Justice Malcolm in a preCommonwealth decision as 'that inherent and plenary power in the State which enables it to prohibit all
things hurtful to the comfort, safety and welfare of society. In that sense it could be hardly distinguishable
as noted by this Court in Morfe v. Mutuc with the totality of legislative power. It is in the above sense the
greatest and most powerful at. tribute of government. It is, to quote Justice Malcolm anew, 'the most
essential, insistent, and at least table powers, I extending as Justice Holmes aptly pointed out 'to all the
great public needs.' Its scope, ever-expanding to meet the exigencies of the times, even to anticipate the
future where it could be done, provides enough room for an efficient and flexible response to conditions
and circumstances thus assuring the greatest benefits. In the language of Justice Cardozo: 'Needs that
were narrow or parochial in the past may be interwoven in the present with the well-being of the nation.
What is critical or urgent changes with the time.' The police power is thus a dynamic agency, suitably
vague and far from precisely defined, rooted in the conception that men in organizing the state and
imposing upon its government limitations to safeguard constitutional rights did not intend thereby to enable
an individual citizen or a group of citizens to obstruct unreasonably the enactment of such salutary
measures calculated to communal peace, safety, good order, and welfare." 24

2. It was thus a heavy burden to be shouldered by petitioner, compounded by the fact that the
particular police power measure challenged was clearly intended to promote public safety. It
would be a rare occurrence indeed for this Court to invalidate a legislative or executive act of
that character. None has been called to our attention, an indication of its being non-existent.
The latest decision in point, Edu v. Ericta, sustained the validity of the Reflector Law, 25 an
enactment conceived with the same end in view. Calalang v. Williams found nothing objectionable in a
statute, the purpose of which was: "To promote safe transit upon, and. avoid obstruction on roads and
streets designated as national roads * * *. 26 As a matter of fact, the first law sought to be nullified after the
effectivity of the 1935 Constitution, the National Defense Act, 27 with petitioner failing in his quest, was
likewise prompted by the imperative demands of public safety.

4. Nor did the Solicitor General as he very well could, rely solely on such rebutted
presumption of validity. As was pointed out in his Answer "The President certainly had in his
possession the necessary statistical information and data at the time he issued said letter of
instructions, and such factual foundation cannot be defeated by petitioner's naked assertion
that early warning devices 'are not too vital to the prevention of nighttime vehicular accidents'
because allegedly only 390 or 1.5 per cent of the supposed 26,000 motor vehicle accidents
that in 1976 involved rear-end collisions (p. 12 of petition). Petitioner's statistics is not backed
up by demonstrable data on record. As aptly stated by this Honorable Court: Further: "It
admits of no doubt therefore that there being a presumption of validity, the necessity for
evidence to rebut it is unavoidable, unless the statute or ordinance is void on its face, which
is not the case here"' * * *. But even as g the verity of petitioner's statistics, is that not reason
enough to require the installation of early warning devices to prevent another 390 rear-end
collisions that could mean the death of 390 or more Filipinos and the deaths that could
likewise result from head-on or frontal collisions with stalled vehicles?" 30 It is quite manifest then
that the issuance of such Letter of Instruction is encased in the armor of prior, careful study by the
Executive Department. To set it aside for alleged repugnancy to the due process clause is to give sanction
to conjectural claims that exceeded even the broadest permissible limits of a pleader's well known
penchant for exaggeration.

5. The rather wild and fantastic nature of the charge of oppressiveness of this Letter of
Instruction was exposed in the Answer of the Solicitor General thus: "Such early warning
device requirement is not an expensive redundancy, nor oppressive, for car owners whose
cars are already equipped with 1) blinking lights in the fore and aft of said motor vehicles,' 2)
"battery-powered blinking lights inside motor vehicles," 3) "built-in reflectorized tapes on front
and rear bumpers of motor vehicles," or 4) "well-lighted two (2) petroleum lamps (the Kinke) *
* * because: Being universal among the signatory countries to the said 1968 Vienna
Conventions, and visible even under adverse conditions at a distance of at least 400 meters,
any motorist from this country or from any part of the world, who sees a reflectorized
rectangular early seaming device installed on the roads, highways or expressways, will
conclude, without thinking, that somewhere along the travelled portion of that road, highway,
or expressway, there is a motor vehicle which is stationary, stalled or disabled which
obstructs or endangers passing traffic. On the other hand, a motorist who sees any of the
aforementioned other built in warning devices or the petroleum lamps will not immediately get
adequate advance warning because he will still think what that blinking light is all about. Is it

12

an emergency vehicle? Is it a law enforcement car? Is it an ambulance? Such confusion or

uncertainty in the mind of the motorist will thus increase, rather than decrease, the danger of
collision. 31
6. Nor did the other extravagant assertions of constitutional deficiency go unrefuted in the
Answer of the Solicitor General "There is nothing in the questioned Letter of Instruction No.
229, as amended, or in Administrative Order No. 1, which requires or compels motor vehicle
owners to purchase the early warning device prescribed thereby. All that is required is for
motor vehicle owners concerned like petitioner, to equip their motor vehicles with a pair of this
early warning device in question, procuring or obtaining the same from whatever source. In
fact, with a little of industry and practical ingenuity, motor vehicle owners can even personally
make or produce this early warning device so long as the same substantially conforms with
the specifications laid down in said letter of instruction and administrative order. Accordingly
the early warning device requirement can neither be oppressive, onerous, immoral, nor
confiscatory, much less does it make manufacturers and dealers of said devices 'instant
millionaires at the expense of car owners' as petitioner so sweepingly concludes * * *.
Petitioner's fear that with the early warning device requirement 'a more subtle racket may be
committed by those called upon to enforce it * * * is an unfounded speculation. Besides, that
unscrupulous officials may try to enforce said requirement in an unreasonable manner or to
an unreasonable degree, does not render the same illegal or immoral where, as in the instant
case, the challenged Letter of Instruction No. 229 and implementing order disclose none of
the constitutional defects alleged against it. 32
7 It does appear clearly that petitioner's objection to this Letter of Instruction is not premised
on lack of power, the justification for a finding of unconstitutionality, but on the pessimistic, not
to say negative, view he entertains as to its wisdom. That approach, it put it at its mildest, is
distinguished, if that is the appropriate word, by its unorthodoxy. It bears repeating "that this
Court, in the language of Justice Laurel, 'does not pass upon questions of wisdom justice or
expediency of legislation.' As expressed by Justice Tuason: 'It is not the province of the
courts to supervise legislation and keep it within the bounds of propriety and common sense.
That is primarily and exclusively a legislative concern.' There can be no possible objection
then to the observation of Justice Montemayor. 'As long as laws do not violate any
Constitutional provision, the Courts merely interpret and apply them regardless of whether or
not they are wise or salutary. For they, according to Justice Labrador, 'are not supposed to
override legitimate policy and * * * never inquire into the wisdom of the law.' It is thus settled,
to paraphrase Chief Justice Concepcion in Gonzales v. Commission on Elections, that only
congressional power or competence, not the wisdom of the action taken, may be the basis for
declaring a statute invalid. This is as it ought to be. The principle of separation of powers has
in the main wisely allocated the respective authority of each department and confined its
jurisdiction to such a sphere. There would then be intrusion not allowable under the
Constitution if on a matter left to the discretion of a coordinate branch, the judiciary would
substitute its own. If there be adherence to the rule of law, as there ought to be, the last
offender should be courts of justice, to which rightly litigants submit their controversy
precisely to maintain unimpaired the supremacy of legal norms and prescriptions. The attack

on the validity of the challenged provision likewise insofar as there may be objections, even if
valid and cogent on is wisdom cannot be sustained. 33
8. The alleged infringement of the fundamental principle of non-delegation of legislative
power is equally without any support well-settled legal doctrines. Had petitioner taken the
trouble to acquaint himself with authoritative pronouncements from this Tribunal, he would not
have the temerity to make such an assertion. An exempt from the aforecited decision of Edu
v. Ericta sheds light on the matter: "To avoid the taint of unlawful delegation, there must be a
standard, which implies at the very least that the legislature itself determines matters of
principle and lays down fundamental policy. Otherwise, the charge of complete abdication
may be hard to repel A standard thus defines legislative policy, marks its maps out its
boundaries and specifies the public agency to apply it. It indicates the circumstances under
which the legislative command is to be effected. It is the criterion by which legislative purpose
may be carried out. Thereafter, the executive or administrative office designated may in
pursuance of the above guidelines promulgate supplemental rules and regulations. The
standard may be either express or implied. If the former, the non-delegation objection is
easily met. The standard though does not have to be spelled out specifically. It could be
implied from the policy and purpose of the act considered as a whole. In the Reflector Law
clearly, the legislative objective is public safety. What is sought to be attained as in Calalang
v. Williams is "safe transit upon the roads.' This is to adhere to the recognition given
expression by Justice Laurel in a decision announced not too long after the Constitution
came into force and effect that the principle of non-delegation "has been made to adapt itself
to the complexities of modern governments, giving rise to the adoption, within certain limits,
of the principle of "subordinate legislation" not only in the United States and England but in
practically all modern governments.' He continued: 'Accordingly, with the growing complexity
of modern life, the multiplication of the subjects of governmental regulation, and the
increased difficulty of administering the laws, there is a constantly growing tendency toward
the delegation of greater powers by the legislature and toward the approval of the practice by
the courts.' Consistency with the conceptual approach requires the reminder that what is
delegated is authority non-legislative in character, the completeness of the statute when it
leaves the hands of Congress being assumed." 34
9. The conclusion reached by this Court that this petition must be dismissed is reinforced by
this consideration. The petition itself quoted these two whereas clauses of the assailed Letter
of Instruction: "[Whereas], the hazards posed by such obstructions to traffic have been
recognized by international bodies concerned with traffic safety, the 1968 Vienna Convention
on Road Signs and Signals and the United Nations Organization (U.N.); [Whereas], the said
Vionna Convention, which was ratified by the Philippine Government under P.D. No. 207,
recommended the enactment of local legislation for the installation of road safety signs and
devices; * * * " 35 It cannot be disputed then that this Declaration of Principle found in the Constitution
possesses relevance: "The Philippines * * * adopts the generally accepted principles of international law as
part of the law of the land * * *." 36 The 1968 Vienna Convention on Road Signs and Signals is impressed
with such a character. It is not for this country to repudiate a commitment to which it had pledged its word.

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The concept of Pacta sunt servanda stands in the way of such an attitude, which is, moreover, at war with
the principle of international morality.

Castro, C.J., Barredo, Antonio, Santos, Fernandez, Guerrero, Abad Santos, De Castro and
Melencio-Herrera, concur.

10. That is about all that needs be said. The rather court reference to equal protection did not
even elicit any attempt on the Part of Petitioner to substantiate in a manner clear, positive,
and categorical why such a casual observation should be taken seriously. In no case is there
a more appropriate occasion for insistence on what was referred to as "the general rule"
in Santiago v. Far Eastern Broadcasting Co., 37 namely, "that the constitutionality of a law wig not be

Makasiar, J, reserves the right to file a separate opinion.

considered unless the point is specially pleaded, insisted upon, and adequately argued." 38 "Equal
protection" is not a talismanic formula at the mere invocation of which a party to a lawsuit can rightfully
expect that success will crown his efforts. The law is anything but that.

Concepcion J., is on leave.

Aquino J., took no part.

Castro, C.J., certifies that Justice Concepcion concurs in their decision.

WHEREFORE, this petition is dismissed. The restraining order is lifted. This decision is
immediately executory. No costs.
G.R. No. L-2662

March 26, 1949

SHIGENORI KURODA, petitioner,

vs.
Major General RAFAEL JALANDONI, Brigadier General CALIXTO DUQUE, Colonel
MARGARITO TORALBA, Colonel IRENEO BUENCONSEJO, Colonel PEDRO TABUENA,
Major FEDERICO ARANAS, MELVILLE S. HUSSEY and ROBERT PORT, respondents.
Pedro Serran, Jose G. Lukban, and Liberato B. Cinco for petitioner.
Fred Ruiz Castro Federico Arenas Mariano Yengco, Jr., Ricardo A. Arcilla and S. Melville
Hussey for respondents.
MORAN, C.J.:
Shigenori Kuroda, formerly a Lieutenant-General of the Japanese Imperial Army and
Commanding General of the Japanese Imperial Forces in The Philippines during a period
covering 19433 and 19444 who is now charged before a military Commission convened by
the Chief of Staff of the Armed forces of the Philippines with having unlawfully disregarded
and failed "to discharge his duties as such command, permitting them to commit brutal
atrocities and other high crimes against noncombatant civilians and prisoners of the Imperial
Japanese Forces in violation of the laws and customs of war" comes before this Court
seeking to establish the illegality of Executive Order No. 68 of the President of the
Philippines: to enjoin and prohibit respondents Melville S. Hussey and Robert Port from
participating in the prosecution of petitioner's case before the Military Commission and to
permanently prohibit respondents from proceeding with the case of petitioners.

In support of his case petitioner tenders the following principal arguments.

First. "That Executive Order No. 68 is illegal on the ground that it violates not only the
provision of our constitutional law but also our local laws to say nothing of the fact (that) the
Philippines is not a signatory nor an adherent to the Hague Convention on Rules and
Regulations covering Land Warfare and therefore petitioners is charged of 'crimes' not based
on law, national and international." Hence petitioner argues "That in view off the fact that
this commission has been empanelled by virtue of an unconstitutional law an illegal order this
commission is without jurisdiction to try herein petitioner."
Second. That the participation in the prosecution of the case against petitioner before the
Commission in behalf of the United State of America of attorneys Melville Hussey and Robert
Port who are not attorneys authorized by the Supreme Court to practice law in the Philippines
is a diminution of our personality as an independent state and their appointment as
prosecutor are a violation of our Constitution for the reason that they are not qualified to
practice law in the Philippines.
Third. That Attorneys Hussey and Port have no personality as prosecution the United State
not being a party in interest in the case.
Executive Order No. 68, establishing a National War Crimes Office prescribing rule and
regulation governing the trial of accused war criminals, was issued by the President of the
Philippines on the 29th days of July, 1947 This Court holds that this order is valid and
constitutional. Article 2 of our Constitution provides in its section 3, that

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The Philippines renounces war as an instrument of national policy and adopts the
generally accepted principles of international law as part of the of the nation.
In accordance with the generally accepted principle of international law of the present day
including the Hague Convention the Geneva Convention and significant precedents of
international jurisprudence established by the United Nation all those person military or
civilian who have been guilty of planning preparing or waging a war of aggression and of the
commission of crimes and offenses consequential and incidental thereto in violation of the
laws and customs of war, of humanity and civilization are held accountable therefor.
Consequently in the promulgation and enforcement of Execution Order No. 68 the President
of the Philippines has acted in conformity with the generally accepted and policies of
international law which are part of the our Constitution.
The promulgation of said executive order is an exercise by the President of his power as
Commander in chief of all our armed forces as upheld by this Court in the case of
Yamashita vs. Styer (L-129, 42 Off. Gaz., 664) 1 when we said
War is not ended simply because hostilities have ceased. After cessation of armed
hostilities incident of war may remain pending which should be disposed of as in
time of war. An importance incident to a conduct of war is the adoption of measure
by the military command not only to repel and defeat the enemies but to seize and
subject to disciplinary measure those enemies who in their attempt to thwart or
impede our military effort have violated the law of war. (Ex parte Quirin 317 U.S., 1;
63 Sup. Ct., 2.) Indeed the power to create a military commission for the trial and
punishment of war criminals is an aspect of waging war. And in the language of a
writer a military commission has jurisdiction so long as a technical state of war
continues. This includes the period of an armistice or military occupation up to the
effective of a treaty of peace and may extend beyond by treaty agreement.
(Cowles Trial of War Criminals by Military Tribunals, America Bar Association
Journal June, 1944.)
Consequently, the President as Commander in Chief is fully empowered to consummate this
unfinished aspect of war namely the trial and punishment of war criminal through the
issuance and enforcement of Executive Order No. 68.
Petitioner argues that respondent Military Commission has no Jurisdiction to try petitioner for
acts committed in violation of the Hague Convention and the Geneva Convention because
the Philippines is not a signatory to the first and signed the second only in 1947. It cannot be
denied that the rules and regulation of the Hague and Geneva conventions form, part of and
are wholly based on the generally accepted principals of international law. In facts these rules
and principles were accepted by the two belligerent nation the United State and Japan who
were signatories to the two Convention, Such rule and principles therefore form part of the

law of our nation even if the Philippines was not a signatory to the conventions embodying
them for our Constitution has been deliberately general and extensive in its scope and is not
confined to the recognition of rule and principle of international law as continued inn treaties
to which our government may have been or shall be a signatory.
Furthermore when the crimes charged against petitioner were allegedly committed the
Philippines was under the sovereignty of United States and thus we were equally bound
together with the United States and with Japan to the right and obligation contained in the
treaties between the belligerent countries. These rights and obligation were not erased by our
assumption of full sovereignty. If at all our emergency as a free state entitles us to enforce the
right on our own of trying and punishing those who committed crimes against crimes against
our people. In this connection it is well to remember what we have said in the case of Laurel
vs. Misa (76 Phil., 372):
. . . The change of our form government from Commonwealth to Republic does not
affect the prosecution of those charged with the crime of treason committed during
then Commonwealth because it is an offense against the same sovereign
people. . . .
By the same token war crimes committed against our people and our government while we
were a Commonwealth are triable and punishable by our present Republic.
Petitioner challenges the participation of two American attorneys namely Melville S. Hussey
and Robert Port in the prosecution of his case on the ground that said attorney's are not
qualified to practice law in Philippines in accordance with our Rules of court and the
appointment of said attorneys as prosecutors is violative of our national sovereignty.
In the first place respondent Military Commission is a special military tribunal governed by a
special law and not by the Rules of court which govern ordinary civil court. It has already
been shown that Executive Order No. 68 which provides for the organization of such military
commission is a valid and constitutional law. There is nothing in said executive order which
requires that counsel appearing before said commission must be attorneys qualified to
practice law in the Philippines in accordance with the Rules of Court. In facts it is common in
military tribunals that counsel for the parties are usually military personnel who are neither
attorneys nor even possessed of legal training.
Secondly the appointment of the two American attorneys is not violative of our nation
sovereignty. It is only fair and proper that United States, which has submitted the vindication
of crimes against her government and her people to a tribunal of our nation should be
allowed representation in the trial of those very crimes. If there has been any relinquishment
of sovereignty it has not been by our government but by the United State Government which

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has yielded to us the trial and punishment of her enemies. The least that we could do in the
spirit of comity is to allow them representation in said trials.
Alleging that the United State is not a party in interest in the case petitioner challenges the
personality of attorneys Hussey and Port as prosecutors. It is of common knowledge that the
United State and its people have been equally if not more greatly aggrieved by the crimes
with which petitioner stands charged before the Military Commission. It can be considered a
privilege for our Republic that a leader nation should submit the vindication of the honor of its
citizens and its government to a military tribunal of our country.

The Military Commission having been convened by virtue of a valid law with jurisdiction over
the crimes charged which fall under the provisions of Executive Order No. 68, and having
said petitioner in its custody, this Court will not interfere with the due process of such Military
commission.
For all the foregoing the petition is denied with costs de oficio.
Paras, Feria, Pablo, Bengzon, Tuason, Montemayor and Reyes, JJ., concur.

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