1. SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD. vs.
DEVELOPERS GROUP OF (1) The trademark being infringed is registered in the Intellectual Property Office; however, in
COMPANIES, INC.
Facts:
Respondent DGCI applied for and was granted registration of the Shangri-La mark and S logo in its
restaurant business. Petitioner Shangri-La, chain of hotels and establishments owned by the Kuok
family worldwide, moved to cancel the registration of the mark on the ground that it was illegally and
fraudulently obtained and appropriated by respondents. Petitioner also moved to register the mark and
logo in its own name. Later, respondent DGCI filed before the trial court a complaint for infringement
against petitioner alleging that DGCI had been the prior exclusive user and the registered owner in the
Philippines of said mark and logo. Petitioner Shangri-La argued that respondent had no right to apply
for the registration because it did not have prior actual commercial use thereof. The trial court found
for respondent. CA affirmed.
Issue:
Whether or not respondents prior use of the mark is a requirement for its registration.
Ruling: YES.
While the present law on trademarks has dispensed with the requirement of prior actual use at the
time of registration, the law in force at the time of registration must be applied. Under the provisions of
the former trademark law, R.A. No. 166, as amended, hence, the law in force at the time of
respondents application for registration of trademark, the root of ownership of a trademark is actual
use in commerce. Section 2 of said law requires that before a trademark can be registered, it must
have been actually used in commerce and service for not less than two months in the Philippines prior
to the filing of an application for its registration. Trademark is a creation of use and therefore actual
use is a pre-requisite to exclusive ownership and its registration with the Philippine Patent Office is a
mere administrative confirmation of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant, neither did
respondent DGCI, since the latter also failed to fulfill the 2-month actual use requirement. What is
worse, DGCI was not even the owner of the mark. For it to have been the owner, the mark must not
have been already appropriated (i.e., used) by someone else. At the time of respondent DGCIs
registration of the mark, the same was already being used by the petitioners, albeit abroad, of which
DGCIs president was fully aware.
3. COFFEE PARTNERS V. SAN FRANCISCO COFFEE & ROASTERY
Facts:
Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to operate
coffee shops in the country using the trademark San Francisco Coffee. Respondent on the other hand,
is a local corporation engaged in the wholesale and retail sale of coffee and uses the business name
San Francisco Coffee & Roastery registered with the DTI. Later, respondent filed an infringement
and/or unfair competition complaint against petitioner alleging that the latter was about to open a
coffee shop under the name San Francisco Coffee causing confusion in the minds of the public as it
bore a similar name and is engaged also in selling of coffee. Petitioner contended no infringement
would arise because respondents tradename was not registered.
Issue:
Whether or not petitioners trademark would infringe respondents tradename.
Ruling: YES.
In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what
constitutes infringement of an unregistered trade name, thus:
infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the
infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or
in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake
or to deceive purchasers or others as to the goods or services themselves or as to the source or origin
of such goods or services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.
RA 8293, which took effect on 1 January 1998, has dispensed with the registration requirement.
Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or
without registration with the IPO, against any unlawful act including any subsequent use of the trade
name by a third party, whether as a trade name or a trademark likely to mislead the public.
It is the likelihood of confusion that is the gravamen of infringement. Applying the dominancy test or
the holistic test, petitioners SAN FRANCISCO COFFEE trademark is a clear infringement of
respondents SAN FRANCISCO COFFEE & ROASTERY, INC. trade name. The descriptive words SAN
FRANCISCO COFFEE are precisely the dominant features of respondents trade name. Petitioner and
respondent are engaged in the same business of selling coffee, whether wholesale or retail. The
likelihood of confusion is higher in cases where the business of one corporation is the same or
substantially the same as that of another corporation. In this case, the consuming public will likely be
confused as to the source of the coffee being sold at petitioners coffee shops.
4. GEMMA ONG A.K.A. Maria Teresa Gemma Catacutan vs. PEOPLE OF THE PHILIPPINES
Facts:
On September 10, 1998, the Senior Investigator III at the Intellectual Property Rights (IPR) Unit of the
Economic Intelligence and Investigation Bureau (EIIB), received reliable information that counterfeit
"Marlboro" cigarettes were being distributed and sold by two (2) Chinese nationals, Johnny Sia and
Jessie Concepcion, in the areas of Tondo, Binondo, Sta. Cruz and Quiapo, Manila. A mission team
formed by EIIB conducted surveillance operation to verify the report. EIIB agents did a "test-buy" on
the different sari-sari stores of Manila located in Quiapo, Tondo, Sta. Cruz and Blumentritt areas and
took samples of "Marlboro" cigarettes sold therein. During the surveillance, the container van delivering
the "Marlboro" packed in black plastic bags was seen parked at 1677 Bulacan corner Hizon Streets, Sta.
Cruz, Manila.They learned that the place is owned by Mr. Jackson Ong. Initial examination made by
Philip Morris, Inc. on those random sample purchases revealed that the cigarettes were indeed fake
products unauthorized by the company. Senior Investigator filed an application for search warrant
before the RTC of Dasmarias, Cavite, Branch 90. Said court issued a search warrant after finding
probable cause to believe that Mr. Jackson Ong has in his possession/control in the premises located at
1675-1677 Bulacan St. cor. M. Hizon St., Sta. Cruz, Manila, the following properties: "Substantial
number of fake locally made and imported fake cigarettes bearing the Marlboro brand, together with
the corresponding labels, cartons, boxes and other packaging as well as receipts, invoices and other
documents relative to the purchase, sale, and distribution of the aforesaid fake Marlboro cigarettes."
On September 25, 1998, the EIIB team implemented the search warrant. They proceeded to the
subject premises but Jackson Ong, the alleged owner was not there. It was the accused who
entertained them. The team was able to search the premises and found Marlboro cigarettes stocked in
several boxes containing fifty (50) reams inside each box which were packed in black plastic sacks like
in "balikbayan boxes." Thereafter, "Inventory" and "Certification In the Conduct of Search" were duly
accomplished and signed by the members of the EIIB and the other representatives present during the
actual search whereby the accused signed her name in the said documents as "Gemma Ong," as the
Owner/Representative, while a certain employee, Girlie Cantillo, also signed as witness. The EIIB filed a
case for Violation of Sections 155 and 168 in relation to Section 170 of Republic Act No. 8293 against
Jackson Ong who is not an authorized distributor of Marlboro products in the Philippines. The
prosecution presented Roger Sherman Slagle, the Director of Operations of Philip Morris Malaysia, and
Philip Morris Philippines, Inc.s (PMPI) product/brand security expert, to testify that according to his
examination, the products they seized at the subject premises were counterfeit cigarettes, as well as
those involved during the search operation. The defense filed a Demurrer to Evidence but the RTC
denied and thereafter, moved for a reconsideration but the same was denied. The accused denied that
she is the Gemma Ong, accused in this case and never having engaged in the manufacture and sale of
any kind of cigarettes and claimed that she could not even distinguish between a fake and a genuine
Marlboro cigarette. The defense claimed that there was a mistaken identity of the accused.
Issues:
Whether or not Gemma was guilty of violating Section 155 in relation to Section 170 of Republic Act
No. 8293, or the Intellectual Property Code of the Philippines.
Ruling:
The prosecution was able to establish that the trademark Marlboro was not only valid for being
neither generic nor descriptive, it was also exclusively owned by PMPI, as evidenced by the certificates
of registration issued by the Intellectual Property Office of the Department of Trade and Industry.
Anent the element of confusion, both the RTC and the Court of Appeals have correctly held that the
counterfeit cigarettes seized from Gemmas possession were intended to confuse and deceive the
public as to the origin of the cigarettes intended to be sold, as they not only bore PMPIs mark, but
they were also packaged almost exactly as PMPIs products.
A mark is valid if it is distinctive and not barred from registration. Once registered, not only the marks
validity, but also the registrants ownership of the mark is prima facie presumed.
5. Republic Gas Corporation (REGASCO), et. al. vs. Petron Corporation, et. al., G.R. No.
194062, June 17, 2013
Issue:
Whether or not the individual petitioners should be held liable for trademark infringement and unfair
competition, given that they are separate personalities from that of the REGASCO?
Ruling:
The Court in a very similar case, made it categorically clear that the mere unauthorized use of a
container bearing a registered trademark in connection with the sale, distribution or advertising of
goods or services which is likely to cause confusion, mistake or deception among the buyers or
consumers can be considered as trademark infringement. Here, petitioners have actually committed
trademark infringement when they refilled, without the respondents consent, the LPG containers
bearing the registered marks of the respondents. As noted by respondents, petitioners acts will
inevitably confuse the consuming public, since they have no way of knowing that the gas contained in
the LPG tanks bearing respondents marks is in reality not the latters LPG product after the same had
been illegally refilled. The public will then be led to believe that petitioners are authorized refillers and
distributors of respondents LPG products, considering that they are accepting empty containers of
respondents and refilling them for resale.
From jurisprudence, unfair competition has been defined as the passing off or attempting to pass off
upon the public of the goods or business of one person as the goods or business of another with the
end and probable effect of deceiving the public. Passing off (or palming off) takes place where the
defendant, by imitative devices on the general appearance of the goods, misleads prospective
purchasers into buying his merchandise under the impression that they are buying that of his
competitors. Thus, the defendant gives his goods the general appearance of the goods of his
competitor with the intention of deceiving the public that the goods are those of his competitor.
In the present case, respondents pertinently observed that by refilling and selling LPG cylinders bearing
their registered marks, petitioners are selling goods by giving them the general appearance of goods of
another manufacturer. Whats more, the CA correctly pointed out that there is a showing that the
consumers may be misled into believing that the LPGs contained in the cylinders bearing the marks
GASUL and SHELLANE are those goods or products of the petitioners when, in fact, they are not.
Obviously, the mere use of those LPG cylinders bearing the trademarks GASUL and SHELLANE will
give the LPGs sold by REGASCO the general appearance of the products of the petitioners.

Facts:
Respondents Petron Corporation (PETRON) and Pilipinas Shell PetroleumCorporation (SHELL) are two
of the largest bulk suppliers and producers of liquefied petroleum gas (LPG) in the Philippines. PETRON
owns the trademark GASUL cylinders used for its LPG products. It is the sole entity authorized to allow
refillers and distributors to refill, use, sell and distribute GASUL LPG containers, products and its
trademarks. SHELL, on the other hand, is the authorized user of SHELLANE cylinders inits production
and distribution of SHELLANE LPGs. The case commenced when LPG Dealers Association of which both
respondents SHELL and PETRON belong received reports that certain entities were engaged in
unauthorized refilling, sale and distribution of LPG cylinders, bearing their respective LPG cylinder trade
names. Thus, they filed a complaint before the NBI for an investigation regarding the illegal trading of
petroleum products. An investigation was then conducted which showed that several persons and
establishments, including petitioner Republic Gas Corporation (REGASCO) were suspected of violating
B.P. 33, or the law against illegal trading of petroleum products. Surveillance then revealed that
REGASCO unlawfully engaged in refilling the sale of LPG cylinders bearing the marks and trademarks
owned by PETRON and SHELL. During the course of the trial, the Court of Appeals held the corporation
as well as the individual petitioners guilty of the crimes of unfair competition and trademark
infringement; to which the corporate officers deny based on the fact that REGASCO is a separate
juridical entity from that of the corporate officers. Hence, this petition.
 6. Pilipinas Shell Petroleum, et al. vs. Romars Intl. GR 189669, Feb. 16, 2015
Facts:
Pilipinas Shell and Petron received information that Romas International Gases Corp (RIGC) was selling,
offering for sale, or distributing liquefied petroleum gas (LPG) by illegally refilling the steel cylinders
manufactured by and bearing the duly registered trademark and device of Petron. Pilipinas Shell and
Petron then requested the National Bureau of Investigation (NBI) to investigate said activities of RIGC
for the purpose of apprehending and prosecuting establishments conducting illegal refilling, distribution
and/or sale of LPG products using the same containers of Petron and Shell.
The NBI proceeded with their investigation and reportedly found commercial quantities of Petron Gasul
and Shellane cylinders stockpiled at RIGCs warehouse located in San Juan, Baao, Camarines Sur. The
NBI, in behalf of Petron and Shell, filed with the Regional Trial Court of Naga City (RTC-Naga), two
separate Applications for Search Warrants against RIGC and/or its occupants. The RTC-Naga City
issued an Order issuing the search warrants. On the same day, the NBI served the warrants at the
RIGCs premises in an orderly and peaceful manner, and articles or items described in the warrants
were seized. RIGC filed a Motion to Quash the search warrants. But the RTC-Naga denied the Motion to
Quash.
However, RIGC's new counsel filed an Appearance with Motion for Reconsideration (MR). It was only in
said motion where RIGC raised for the first time, the issue of the impropriety of filing the Application
for Search Warrant at the RTC-Naga City when the alleged crime was committed in a place within the
territorial jurisdiction of the RTC-Iriga City. The RTC-Naga granted the MR, thereby quashing the
search warrants. The Court of Appeals (CA) affirmed the RTC Order.
Ruling;
Violation of Section 168, in relation to Section 170 of Republic Act (R.A.) No. 8293, otherwise known as
the Intellectual Property Code of the Philippines.
SECTION 2. of R.A. No. 623, otherwise known as An Act To Regulate the Use of Duly Stamped or
Marked Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers.
It shall be unlawful for any person, without the written consent of the manufacturer, bottler
or seller who has successfully registered the marks of ownership in accordance with the provisions
of the next preceding section, to fill such bottles, boxes, kegs, barrels, or other similar containers
so marked or stamped, for the purpose of sale, or to sell, dispose of, buy, or traffic in, or wantonly
destroy the same, whether filled or not, or to use the same for drinking vessels or glasses or for
any other purpose than that registered by the manufacturer, bottler or seller. Any violation of this
section shall be punished by a fine or not more than one hundred pesos or imprisonment of not
more than thirty days or both.
Sec. 155. Remedies; Infringement
Any person who shall, without the consent of the owner of the registered mark: 155.1. Use
in commerce any reproduction, counterfeit, copy, or colourable imitation of a registered mark or
the same container or a dominant feature thereof in connection with the sale, offering for sale,
distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive.
9. LEVI STRAUSS (PHILS.), INC. vs. TONY LIM (G.R. No. 162311, December 4, 2008)
Facts:
Petitioner Levi Strauss (Phils.), Inc. Is a duly-registered domestic corporation. It is a wholly-owned
subsidiary of Levi Strauss & Co.(LS & Co.) A Delaware,USA company. In 1972, LS & Co. Granted
petitioner a non-exclusive license to use its registered trademarks and tradenames for the manufacture
and sale of various garment products, primarily pants, jackets, and shirts, in the Philippines.
Presently, it is the onlycompany that has authority to manufacture, distribute, and sell products bearing
the LEVIS trademarks or to use such trademarks inthe Philippines. These trademarks are registered in
over 130 countries, including the Philippines, and were first used in commerce inthe Philippines in
1946.Sometime in 1995, petitioner lodged a complaint before the Inter-Agency Committee on
Intellectual Property Rights,alleging that a certain establishment owned by respondent Tony Lim, doing
business under the name Vogue Traders Clothing Company, wasengaged in the manufacture, sale, and
distribution of products similar to those of petitioner and under the brand name LIVES, and was
grantedthe filing of an information against respondent.
Respondent then filed his own motion for reconsideration of the Bello resolution, the DOJ thenordered
the dismissal of the complaint. Dissatisfied with the DOJ rulings, petitioner sought recourse with the CA
via a petition for review under Rule 43 of the 1997 Rules of Civil Procedure.
On October 17, 2003, the appellate court affirmed the dismissal of the unfair competition complaint.
The CA pointed out that to determine the likelihood of confusion, mistake or deception, all relevant
factors and circumstances should be taken into consideration, such as the circumstances under which
the goods are sold, the class of purchasers, and the actual occurrence or absence of confusion.Thus,
the existence of some similarities between LIVES jeans and LEVIS garments would not ipso facto
equate to fraudulentintent on the part of respondent. The CA noted that respondent used affirmative
and precautionary distinguishing features in his products for differentiation. The appellate court
considered the spelling and pronunciation of the marks; the difference in the designs of the back
pockets; thedissimilarity between the carton tickets; and the pricing and sale of petitioners products in
upscale exclusive specialty shops. The CA alsodisregarded the theory of post-sale confusion
propounded by petitioner, relying instead on the view that the probability of deception must
bedetermined at the point of sale.
Issues:
I. The court of appeals gravely erred in ruling that actual confusion is necessary to sustain a charge of
unfair competition, and that there must be direct evidence or proof of intent to deceive the public.
II. The court of appeals gravely erred in ruling that respondents lives jeans do not unfairly compete
with levis jeans and/or that there is no possibility that the former will be confused for the latter,
considering that respondents lives jeans blatantly copy or colorably imitate no less than six (6)
trademarks of levis jeans.
Ruling:
Generally, unfair competition consists in employing deception or any other means contrary to good
faith by which any person 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 goodwill, or committing any acts
calculated to produce such result.
The elements of unfair competition under Article 189(1) of the Revised Penal Code are:
(a) That the offender gives his goods the general appearance of the goods of another manufacturer or
dealer;
(b) That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their
packages, or in the(3) device or words therein, or in (4) any other feature of their appearance;
(c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity
to do the samewith a like purpose; and
(d) That there is actual intent to deceive the public or defraud a competitor.
All these elements must be proven. In finding that probable cause for unfair competition does not exist,
the investigating prosecutor and Secretaries Guingona and Cuevas arrived at the same conclusion that
there is insufficient evidence to prove all the elements of the crime thatwould allow them to secure a
conviction. Secretary Guingona discounted the element of actual intent to deceive by taking into
consideration the differences in spelling, meaning, and phonetics between LIVES and LEVIS, as The respondents also filed motions for the return of their shells and to quash the search warrant. Coca-
well as the fact that respondent had registered his ownmark. While it is true that there may be unfair
competition even if the competing mark is registered in the Intellectual Property Office, it is equally
true that the same may show prima facie good faith.
Indeed, registration does not negate unfair competition where the goods are packedor offered for sale
and passed off as those of complainant. However, the marks registration, coupled with the stark
differences between thecompeting marks, negate the existence of actual intent to deceive, in this
particular case.Petitioner argues that the element of intent to deceive may be inferred from the
similarity of the goods or their appearance.
The argument is specious on two fronts. First, where the similarity in the appearance of the goods as
packed and offered for sale is so striking, intentto deceive may be inferred. However, as found by the
investigating prosecutor and the DOJ Secretaries, striking similarity between thecompeting goods is not
present. Second, the confusing similarity of the goods was precisely in issue during the preliminary
investigation.
As such, the element of intent to deceive could not arise without the investigating prosecutors or the
DOJSecretarys finding that such confusing similarity exists. Since confusing similarity was not found,
the element of fraud or deception could not be inferred.We cannot sustain Secretary Bellos opinion
that to establish probable cause, it is enough that the respondent gave to his product thegeneral
appearance of the product of petitioner. It bears stresing that that is only one element of unfair
competition. All others must be shown toexist. More importantly, the likelihood of confusion exists not
only if there is confusing similarity. It should also be likely to cause confusion or mistake or deceive
purchasers. Thus, the CA correctly ruled that the mere fact that some resemblance can be pointed out
between the marks used
10. Coca- Cola Bottlers Philippines, Inc. (CCBPI), Naga Plant vs. Quintin Gomez, et, al.,
G.R. No. 154491, November 14, 2008
Facts:
Coca-Cola applied for a search warrant against Pepsi for hoarding Coke empty bottles in Pepsis yard in
Concepcion Grande, Naga City, an act allegedly penalized as unfair competition under the IP Code.
Coca-Cola claimed that the bottles must be confiscated to preclude their illegal use, destruction or
concealment by the respondents. In support of the application, Coca-Cola submitted the sworn
statements of three witnesses: Naga plant representative Arnel John Ponce said he was informed that
one of their plant security guards had gained access into the Pepsi compound and had seen empty
Coke bottles; acting plant security officer Ylano A. Regaspi said he investigated reports that Pepsi was
hoarding large quantities of Coke bottles by requesting their security guard to enter the Pepsi plant and
he was informed by the security guard that Pepsi hoarded several Coke bottles; security guard
Edwin Lirio stated that he entered Pepsi's yard on July 2, 2001 at 4 p.m. and saw empty Coke bottles
inside Pepsi shells or cases.
MTC Executive Judge Julian C. Ocampo of Naga City, after taking the joint deposition of the witnesses,
issued Search Warrant No. 2001-01 to seize 2,500 Litro and3,000 eight and 12 ounces empty Coke
bottles at Pepsi's Naga yard for violation of Section168.3 (c) of the IP Code.
In their counter-affidavits, Galicia and Gomez claimed that the bottles came from various Pepsi retailers
and wholesalers who included them in their return to make up for shortages of empty Pepsi bottles;
they had no way of ascertaining beforehand the return of empty Coke bottles as they simply received
what had been delivered; the presence of the bottles in their yard was not intentional nor deliberate.
Cola opposed the motions as the shells were part of the evidence of the crime, arguing that Pepsi used
the shells in hoarding the bottles. It insisted that the issuance of warrant was based on probable cause
for unfair competition under the IP Code, and that the respondents violated R.A. 623, the law
regulating the use of stamped or marked bottles, boxes, and other similar containers. The MTC issued
the first assailed order denying the twin motions. It explained there was an exhaustive examination of
the applicant and its witnesses through searching questions and that the Pepsi shells are prima facie
evidence that the bottles were placed there by the respondents. The MTC denied the motion for
reconsideration in the second assailed order, explaining that the issue of whether there was unfair
competition can only be resolved during trial
Issue:
Whether the act charged - alleged to be hoarding of empty Coke bottles - constitutes an offense under
Section 168.3 (c) of the IP Code
Ruling:
The act alleged to violate the petitioners rights under Section 168.3 (c) is hoarding which we gather to
be the collection of the petitioners empty bottles so that they can be withdrawn from circulation and
thus impede the circulation of the petitioners bottled products. This, according to the petitioner, is an
act contrary to good faitha conclusion that, if true, is indeed an unfair act on the part of the
respondents. The critical question, however, is not the intrinsic unfairness of the act of hoarding; what
is critical for purposes of Section 168.3 (c) is to determine if the hoarding, as charged, Is of a nature
calculated to discredit the goods, business or services of the petitioner. We hold that it is not.
Hoarding as defined by the petitioner is not even an act within the contemplation of the IP Code
Articles 168.1 and 168.2, as quoted above, provide the concept and general rule on the denition of
unfair competition. The law does not thereby cover every unfair act committed in the course of
business; it covers only acts characterized by "deception or any other means contrary to good faith" in
the passing o of goods and services as those of another who has established goodwill in relation with
these goods or services, or any other act calculated to produce the same result. What unfair
competition is, is further particularized under Section 168.3 when it provides specics of what unfair
competition is "without in any way limiting the scope of protection against unfair competition". Part of
these particulars is provided under Section 168.3 (c) which provides the general "catch-all" phrase that
the petitioner cites. Under this phrase, a person shall be guilty of unfair competition "who shall commit
any other act contrary to good faith of a nature calculated to discredit the goods, business or services
of another". Deception, passing o and fraud upon the public are still the key elements that must be
present for unfair competition to exist
 12. Century Chinese Medicine Co., et al. Vs. People of the Philippines and Ling Na Lau

Facts:
Respondent Ling Na Lau, doing business under the name and style Worldwide Pharmacy, is the sole
distributor and registered trademark owner of TOP GEL T.G. & DEVICE OF A LEAF papaya whitening
soap for a period of ten years from 2003. Respondent claims that the petitioners in this case were
selling counterfeit whitening papaya soaps bearing the general appearance of their products. There
was an investigation, which led to seizures of the petitioner's products because the NBI ruled that it
was counterfeit.

Petitioners contend that the products seized from their respective stores cannot be the subject of the
search warrants and seizure as those Top Gel products are not fruits of any crime, infringed product
nor intended to be used in any crime; that they are legitimate distributors who are authorized to sell
the same, since those genuine top gel products bore the original trademark/tradename of TOP GEL
MCA, owned and distributed by Yu. Petitioners also claim that despite the RTC's order to release the
seized TOP GEL products, not one had been returned; that one or two samples from each petitioner's'
drugstore would have sufficed in case there is a need to present them in a criminal prosecution, and
that confiscation of thousands of these products was an overkill. Petitioners also argue that the issue
that the RTC erred in applying the rules on search and seizure in anticipation of a civil action was never
raised in the RTC.

Ruling:
The object of the violation of respondents intellectual property right is the alleged counterfeit TOP GEL
T.G. & DEVICE OF A LEAF papaya whitening soap being sold by petitioners, so there is a need to
confiscate all these articles to protect respondents right as the registered owner of such trademark.

The SC agrees with the CA that A.M. No. 02-1-06-SC, which provides for the Rules on the Issuance of
the Search and Seizure in Civil Actions for Infringement of Intellectual Property Rights, is not applicable
in this case as the search warrants were not applied based thereon, but in anticipation of criminal
actions for violation of intellectual property rights under RA 8293. - It was established that respondent
had asked the NBI for assistance to conduct investigation and search warrant implementation for
possible apprehension of several drugstore owners selling imitation or counterfeit TOP GEL T.G. &
DEVICE OF A LEAF papaya whitening soap.

The affidavits of NBI Agent Furing and his witnesses, Esmael and Ling, clearly showed that they are
seeking protection for the trademark "TOP GEL T.G. and DEVICE OF A LEAF" registered to respondent
by the IPO on 2003. While petitioners claim that the product they are distributing was owned by Yu
with the trademark TOP GEL MCA and MCA DEVISE, it was different from the trademark TOP GEL T.G.
and DEVICE OF A LEAF subject of the application.

In this case, the object of the violation of respondents intellectual property right is the alleged
counterfeit TOP GEL T.G. & DEVICE OF A LEAF papaya whitening soap being sold by petitioner.