[G.R.

PRO

No.
LINE

118192.
SPORTS

CORPORATION, petitioners,
ATHLETICS
INDUSTRIAL
SEHWANI,

October

CENTER,

vs.

COURT
PRODUCTS,

INC.,

23,
and

1997]
QUESTOR

OF APPEALS, UNIVERSAL
INC.,
and
MONICO

respondents.

After the prosecution rested its case, Sehwani filed a demurrer to

evidence arguing that the act of selling the manufactured goods was an
essential and constitutive element of the crime of unfair competition under
Art. 189 of the Revised Penal Code, and the prosecution was not able to
prove that he sold the products. In its Order of 12 January 1981 the trial
court granted the demurrer and dismissed the charge against Sehwani.

The existence of probable cause for unfair competition by

UNIVERSAL is derivable from the facts and circumstances of the case. The
affidavit of Graciano Lacanaria, a former employee of UNIVERSAL, attesting
to the illegal sale and manufacture of "Spalding" balls and seized "Spalding"
products and instruments from UNIVERSAL's factory was sufficient

prima

facie evidence to warrant the prosecution of private respondents. That a

corporation other than the certified owner of the trademark is engaged in the
unauthorized manufacture of products bearing the same trademark
engenders a reasonable belief that a criminal offense for unfair competition is
being
committed.

Petitioners PRO LINE and QUESTOR could not have been moved
by legal malice in instituting the criminal complaint for unfair competition
which led to the filing of the Information against Sehwani. Malice is an
inexcusable intent to injure, oppress, vex, annoy or humiliate. We cannot
conclude that petitioners were impelled solely by a desire to inflict needless
and unjustified vexation and injury on UNIVERSAL's business interests. A
resort to judicial processes is not per se evidence of ill will upon which a
claim for damages may be based. A contrary rule would discourage peaceful
recourse to the courts of justice and induce resort to methods less than
legal,
and
perhaps
even
violent.

We are more disposed, under the circumstances, to hold that PRO

LINE as the authorized agent of QUESTOR exercised sound judgment in
taking the necessary legal steps to safeguard the interest of its principal with
respect to the trademark in question. If the process resulted in the closure
and padlocking of UNIVERSAL's factory and the cessation of its business
operations, these were unavoidable consequences of petitioners' valid and
lawful exercise of their right. One who makes use of his own legal right does
no injury.

Qui jure suo utitur nullum damnum facit . If damage

damnum absque

results from a person's exercising his legal rights, it is

injuria.

Admittedly, UNIVERSAL incurred expenses and other costs in

defending itself from the accusation. But, as Chief Justice Fernando would
put it, "the expenses and annoyance of litigation form part of the social
burden of living in a society which seeks to attain social control through law."
Thus we see no cogent reason for the award of damages, exorbitant as it
may seem, in favor of UNIVERSAL. To do so would be to arbitrarily impose a
penalty
on
petitioners'
right
to
litigate.

The criminal complaint for unfair competition, including all other

legal remedies incidental thereto, was initiated by petitioners in their honest
belief that the charge was meritorious. For indeed it was. The law brands
business practices which are unfair, unjust or deceitful not only as contrary
to public policy but also as inimical to private interests. In the instant case,
we find quite aberrant Sehwani's reason for the manufacture of 1,200
"Spalding" balls, i.e., the pending application for trademark registration of
UNIVERSAL with the Patent Office, when viewed in the light of his admission
that the application for registration with the Patent Office was filed on 20
February 1981, a good nine (9) days after the goods were confiscated by the
NBI. This apparently was an afterthought but nonetheless too late a remedy.
Be that as it may, what is essential for registrability is proof of actual use in
commerce for at least sixty (60) days and not the capability to manufacture
and
distribute
samples
of
the
product
to
clients.

Arguably, respondents' act may constitute unfair competition

even if the element of selling has not been proved. To hold that the act of
selling is an indispensable element of the crime of unfair competition is
illogical because if the law punishes the seller of imitation goods, then with
more reason should the law penalize the manufacturer. In U. S. v. Manuel,
the Court ruled that the test of unfair competition is whether certain goods
have been intentionally clothed with an appearance which is likely to deceive
the ordinary purchasers exercising ordinary care. In this case, it was
observed by the Minister of Justice that the manufacture of the "Spalding"
balls was obviously done to deceive would-be buyers. The projected sale
would have pushed through were it not for the timely seizure of the goods
made by the NBI. That there was intent to sell or distribute the product to
the public cannot also be disputed given the number of goods manufactured
and the nature of the machinery and other equipment installed in the factory.

Solid Triangle Sales Corporation vs the Sheriff of RTC QC

370 scra 491
Nov. 23, 2001

FACTS: Judge Bruselas,Jr., Presiding Judge of RTC, Quezon City, upon

application of the Economic Intelligence and Investigation Bureau(EIIB),
issued a search warrant against herein private respondent Sanly Corporation
for violation of Sec. 168 of R.A No. 8293 for unfair competition.
The private respondent corporation contends that there is no unfair
competition being committed since the products that he sells, particularly
Mitsubishi photographic color paper, are genuine products of Mitsubishi that
he buys from Hong Kong while the complainant purchases the same kind of
paper from Japan.
ISSUE: whether or not there was probable cause that the crime of unfair
competition under the IPC Code has been committed by the respondents?
HELD: No. The SC disagreed with petitioners and find that the evidence
presented before the trial court does not prove unfair competition under
Section 168 of the Intellectual Property Code.
Under SEC. 168. Unfair Competition, Rights, Regulation and
Remedies. 168.1 A person who has identified in the mind of the
public goods he manufactures or deals in, his business or
services from those of others, whether or not a registered mark
is employed, has a property right in the goodwill of the said
goods, business or services so identified, which will be protected
in the same manner as other property rights.
168.2 Any person who shall employ deception or any other
means contrary to good faith by which he shall pass off the
goods manufactured by him or in which he deals, or his business,
or services for those of the one having established such goodwill,
or who shall commit any acts calculated to produce said result,
shall be guilty of unfair competition, and shall be subject to an
action therefor.
168.3 In particular, and without in any way limiting the scope of
protection against unfair competition, the following shall be
deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the
general appearance of goods of another manufacturer or dealer,

either as to the goods themselves or in the wrapping of the

packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would
be likely to influence purchasers to believe that the goods offered
are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and defraud another
of his legitimate trade, or any subsequent vendor of such goods
or any agent of any vendor engaged in selling such goods with a
lie purpose;
(b) Any person who by any artifice, or device, or who employs
any other means calculated to induce the false belief that such
person is offering the service of another who has identified such
services in the mind of the public; or
(c) Any person who shall make any false statement in the course
of trade or who shall commit any other act contrary to good faith
of a nature calculated to discredit the goods, business or services
of another.
168.4 The remedies provided by Sections 156, 157 and 161 shall
apply mutatis mutandis.
Sanly Corporation did not pass off the subject goods as that of
another. Indeed, it admits that the goods are genuine Mitsubishi
photographic paper, which it purchased from a supplier in Hong
Kong. Petitioners also allege that private respondents made it appear that
they were duly authorized to sell or distribute Mitsubishi Photo Paper in the
Philippines. Assuming that this act constitutes a crime, there is no proof to
establish such an allegation.

SONY COMPUTER ENTERTAINMENT, INC., vs Super Green

contained, or the devices or words thereon, or in any other feature of their

appearance, which would be likely to influence purchasers to believe that the

G.R.

goods

No.

161823

March

22,

2007

offered

are

those

of

manufacturer

or

dealer, other

than theactual manufacturer or dealer, or who otherwise clothes the goods

Facts: The case stemmed from the complaint filed with the National Bureau
of Investigation (NBI) by petitioner Sony Computer Entertainment, Inc.,
against respondent Supergreen, Incorporated.
The NBI found that
respondent engaged in the reproduction and distribution of counterfeit
PlayStation game software, consoles and accessories in violation of Sony
Computers

intellectual

property

legitimate trade, or any subsequent vendor of such goods or any agent

of anyvendor

engaged

in

(b) Any person

Nonetheless, we agree with petitioner that this case involves a transitory or

continuing offense of unfair competition under Section 168 of Republic Act
No.
8293,
which
provides,
168. Unfair
Remedies.
SEC.

Competition,

Rights,

Regulation

to good faith by which he shall pass off the goods manufactured by him or in
which he deals, or his business, or services for those of the one having
such

goodwill,

or

who shall commit any acts

calculated

to

produce said result, shall be guilty of unfair competition, and shall be subject
an

such

goods

with

like

purpose;

action therefor.

who

by any artifice,

or

device,

or

who employs any other means calculated to induce the false belief that such
person is offering the services of another who has identified such services in
the
mind
of
the
public;
or

and

168.2. Any person who shall employ deception or any other means contrary

established

selling

rights.

Ruling:

to

with such appearance as shall deceive the public and defraud another of his

(c) Any person who shall make any false statement in the course
of trade or who shall commit anyother act contrary to good faith of a nature
calculated to discredit the goods, business or services of another.
Pertinent too is Article 189 (1) of the Revised Penal Code that enumerates
the
elements
of
unfair
competition,
to
wit:
(a) That the offender gives his goods the general appearanceof the goods of
another

manufacturer

or

dealer;

(b) That the general appearance is shown in the (1) goods themselves, or in
the (2) wrappingof their packages, or in the (3) device or wordstherein, or in
(4)
any
other
featureof
their
appearance;

168.3. In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair
competition:

(c) That the offender offersto sell or sells those goods or gives other persons
a chance or opportunity to do the same with a like purpose; and
(d) That there is actual intent to deceive the public or defraud a competitor.
Respondents imitation of the general appearance of petitioners goods was

(a) Any person, who is selling his goods and gives them the general
appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are

done allegedly in Cavite. It sold the goods allegedly in Mandaluyong City,

Metro Manila. The alleged acts would constitute a transitory or continuing
offense. Thus, clearly, under Section 2 (b) of Rule 126, Section 168 of Rep.

Act No. 8293 and Article 189 (1) of the Revised Penal Code, petitioner may
apply for a search warrant in any court where any element of the alleged
offense was committed, including any of the courts within the National
Capital Region (Metro Manila).

GR 202423 JANUARY 28, 2013 CHESTER UYCO, WINSTON

UYCHIYONG AND CHERRY C. UYCO-ONG VS VICENTE LO
Brion,J.
The Supreme Court resolves the motion for consideration dated
Oct. 22, 2012 filed by petitioners Chester Uyco, Winston
Uychiyong and Cherry C. Uyco-Ong to set aside the Resolution
dated Sept. 12, 2012 of this Court, which affirmed the decision
dated Mar. 9, 2012 of the Court of Appeals. The CA affirmed the
resolution dated Sept. 1, 2008 of the Dept. of justice. Both the
CA and DOJ found probable cause to charge the petitioners with
false designation of origin, in violation of Sec.169.1, in relation
with Sec 170 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Phils.
FACTS: Respondent Lo and Philippine Burners Manufacturing
Corp. (PBMC) filed a complaint against the officers of Wintrade
Industrial Sales Corp. (Wintrade), including petitioners and of
National Hardware, including Mario Sy Chua, for violation of
Sec.169.1, in relation to Sec. 170 of RA 8293 for using the
marks Hipolito & Sea Horse & Triangular Device, Fama and
other related marks, service marks and trade names of Casa
Hipolito S.A. Portugal appearing in kerosene burners. Lo
claimed in his complaint that the Gasirel-Industria de Comercio
e Componentes pra Gass, Lda. (Gasirel), the owner of the
disputed marks executed a deed of assignment transferring
these marks in his favor, to be used in all countries except
Europe and America. In a test buy, Lo purchased from National
Hardware kerosene burners with the subject marks and
designations Made in Portugal and Original Portugal in the
wrappers. These products were manufactured by Wintrade. Lo
claimed that as the assignee for the trademarks, he had not
authorized Wintrade to use these marks, nor had Casa Hipolito
S.A. Portugal. While a prior authority was given to Wintrades
predecessor-in-interest, Wonder Project & Development Corp.
(Wonder), Casa Hipolito S.A. Portugal had already revoked this

authority through a letter of cancellation dated May 31, 1993.

The kerosene burners manufactured by Wintrade have caused
confusion, mistake and deception on the part of the buying
public. Lo stated that the real and genuine burners are those
manufactured by its agent, PBMC. Petitioners reply stated that
they own subject trademarks and variants and to prove this
assertion they submitted as evidence the certificates of
registration with the Intellectual Property Office. They allegedly
derived authority through Wonder, their predecessor-ininterest. They also argued that the marks are merely
descriptive and refer to the source of the design and the history
of the manufacture and not the origin of the goods. Chua in a
separate answer said that he was not aware of Wintrades loss
of authority, had he known he would not have dealt with them,
hence he could not be a part of the conspiracy. Chief Prosecutor
found probable cause to indict petitioners. The law seeks to
protect the public; thus even if Lo does not have the legal
capacity to sue, the State can still prosecute to prevent
damage and prejudice to the public. On appeal, DOJ issued a
resolution affirming finding of probable cause. The CA found no
grave abuse of discretion on the part of DOJ and affirmed.
Hence, this petition.
ISSUE: Whether or not there is finding of sufficient probable
cause to indict petitioners for violation of RA 8293.
HELD: Yes, the Supreme Court ruled that there is no reversible
error on the part of the CA and the DOJ to merit
reconsideration. The evidence shows that petitioners, who are
officers of Wintrade, placed the words made in Portugal and
original Portugal with the disputed marks knowing fully well,
because of their previous dealings with the Portugese
Company, that these were the marks used in products of Casa
Hipolito. More importantly, the products that Wintrade sold
were admittedly produced in the Philippines with no authority
form Casa Hipolito. The law on trademarks and trade names
precisely precludes a person from profiting from the business

reputation built by another and from deceiving the public as to

the origins of the products. These facts support the consistent
findings of the State Prosecutor, the DOJ and the CA that

probable cause exists to charge petitioners with

designation of design. Petition denied for lack of merit.

false