La Chemise Lacoste. VS.
Fernandez
G.R. No. L-63796-97, May 2, 1984
FACTS:
La chemise Lacoste is a French corporation and the actual
owner of the trademarks Lacoste, Chemise Lacoste,
Crocodile Device and a composite mark consisting of the
word Lacoste and a representation of a crocodile/alligator,
used on clothings and other goods sold in many parts of the
world and which has been marketed in the Philippines
(notably by Rustans) since 1964.
In 1975 and 1977, Hemandas Q. Co. was issued certificate
of registration for the trademark Chemise Lacoste and Q
Crocodile Device both in the supplemental and Principal
Registry. In 1980, La Chemise Lacoste SA filed for the
registration of the Crocodile device and Lacoste.
Games and Garments (Gobindram Hemandas, assignee of
Hemandas Q.Co.) opposed the registration of Lacoste. In
1983, La Chemise Lacoste filed with the NBI a letter-
complaint alleging acts of unfair competition committed by
Hemandas and requesting the agencys assistance.
A search warrant was issued by the trial court. Various
goods and articles were seized upon the execution of the
warrants. Hemandas filed motion to quash the warrants,
which the court granted. The search warrants were recalled,
and the goods ordered to be returned. La Chemise Lacoste
filed a petition for certiorari.
ISSUE:
Whether or not the trademark Chemise Lacoste and Q
Crocodile Device is registrable.
HELD:
No. Inasmuch as the goodwill and reputation of La Chemise
Lacoste products date back even before 1964, Hemandas
cannot be allowed to continue the trademark Lacoste for
the reason that he was the first registrant in the
Supplemental Register of a trademark used in international
commerce.
Registration in the Supplemental Register cannot be given a
posture as if the registration is in the Principal Register. It
must be noted that one may be declared an unfair competitor
even if his competing trademark is registered. La Chemise
Lacoste is world renowned mark, and by virtue of the 20
November 1980 Memorandum of the Minister of Trade to the
director of patents in compliance with the Paris Convention
for the protection of industrial property, effectively cancels
the registration of contrary claimants to the enumerated
marks, which include Lacoste.
MIGHTY CORP AND LA CAMPANA FABRICA DE
TABASO INC V E&J GALLO WINERY 200
FACTS:
On March 12, 1993, respondents sued petitioners in
the RTC-Makati for trademark and trade name infringement
and unfair competition, with a prayer for damages and
preliminary injunction.
They claimed that petitioners adopted the Gallo
trademark to ride on Gallo Winerys and Gallo and Ernest &
Julio Gallo trademarks established reputation and
popularity, thus causing confusion, deception and mistake
on the part of the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo trademarks
with Gallo Winerys wines.
In their answer, petitioners alleged, among other
affirmative defenses that: petitioners Gallo cigarettes and
Gallo Winerys wine were totally unrelated products. To wit:
1. Gallo Winerys GALLO trademark registration
certificates covered wines only, and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through
different channels of trade;
3. the target market of Gallo Winerys wines was the
middle or high-income bracket while Gallo cigarette buyers
were farmers, fishermen, laborers and other low-income
workers;
4. the dominant feature of the Gallo cigarette was the
rooster device with the manufacturers name clearly
indicated as MIGHTY CORPORATION, while in the case of
Gallo Winerys wines, it was the full names of the founders-
owners ERNEST & JULIO GALLO or just their surname
GALLO;
On April 21, 1993, the Makati RTC denied, for lack of merit,
respondents prayer for the issuance of a writ of preliminary
injunction.
On August 19, 1993, respondents motion for
reconsideration was denied.
On February 20, 1995, the CA likewise dismissed
respondents petition for review on certiorari.
After the trial on the merits, however, the Makati RTC, on
November 26, 1998, held petitioners liable for, permanently
enjoined from committing trademark infringement and unfair
competition with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTCs decision and
subsequently denied petitioners motion for reconsideration.
ISSUE:
Whether GALLO cigarettes and GALLO wines were
identical, similar or related goods for the reason alone that
they were purportedly forms of vice.
HELD:
Wines and cigarettes are not identical, similar,
competing or related goods.
In resolving whether goods are related, several
factors come into play:
the business (and its location) to which the goods
belong
the class of product to which the good belong
 the products quality, quantity, or size, including the nature
of the package, wrapper or container
the nature and cost of the articles
the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition,
texture or quality
the purpose of the goods
whether the article is bought for immediate consumption,
that is, day-to-day household items
the field of manufacture
the conditions under which the article is usually
purchased and
the articles of the trade through which the goods flow,
how they are distributed, marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the
deception of some persons in some measure acquainted
with an established design and desirous of purchasing the
commodity with which that design has been associated. The
simulation, in order to be objectionable, must be as appears
likely to mislead the ordinary intelligent buyer who has a
need to supply and is familiar with the article that he seeks
to purchase.
The petitioners are not liable for trademark infringement,
unfair competition or damages.
WHEREFORE, petition is granted.
Philip Morris Inc vs Court of Appeals
Doctrine of Incorporation
Philip Morris, Inc. and two other petitioners 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, from manufacturing and selling MARK
cigarettes in the local market. Banking on the thesis that
petitioners respective symbols MARK VII, MARK TEN,
and MARK, also for cigarettes, must be protected against
unauthorized appropriation.
All petitioners are not doing business in the Philippines but
are suing on an isolated transaction, They Invoked
provisions of the Paris Convention for the Protection of
Industrial and Intellectual Property. As corporate nationals of
member-countries of the Paris Union, they can sue before
Philippine courts for infringement of trademarks, or for unfair
competition, without need of obtaining registration or a
license to do business in the Philippines, and without
necessity of actually doing business in the Philippines.
Philip Morris and its subsidiaries filed the complaint for
infringement and damages against Fortune Tobacco before
the Pasig Regional Trial Court (RTC) for manufacturing and
selling cigarettes bearing the trademark Mark which is
identical and confusingly similar to Philip Morris trademarks.
The said act was dismissed. Hence, this petition at bar.
Issue/s:
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
Ruling/s:
No. There is no proof that any of petitioners 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.
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 trade
name.
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 absence of their
right to be protected.

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.
Facts:
This is a petition for review under Rule 45 of the Rules of
Court, to seek the reversal and setting aside of the following
issuances of the Court of Appeals (CA).
Whether or not there has been an invasion of plaintiffs right
of property to such trademark or trade name.
Discussions:
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. Withal, the fact that international law
has been made part of the law of the land does not by any