LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
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G.R. No. 159938 March 31, 2006
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT,
LTD., SHANGRI-LA PROPERTIES, INC., MAKATI SHANGRI-
LA HOTEL & RESORT, INC., AND KUOK PHILIPPINES
PROPERTIES, INC., Petitioners, vs. DEVELOPERS GROUP
OF COMPANIES, INC., Respondent.
FACTS: Respondent Developers Group of Companies, Inc.
(DGCI) caused the registration of the trademark Shangri-La"
mark and "S" logo on October 18, 1982. Petitioner Shangri-la
International Hotel Management, Ltd. (SIHM) et.al. contested
the said registration in view of its apparent widespread use of
the Shangri-La mark and “s” logo on its hotels around the
world.
SIHM started the use of the mark and the logo since 1969. As
far back as 1962, it adopted the name "Shangri-La" as part of
the corporate names of all companies organized under the
aegis of the Kuok Group of Companies (the Kuok Group). The
logo was first used by the Shangri-La Hotel Singapore when it
commissioned a Singaporean design artist, a certain Mr.
William Lee, to conceptualize and design the logo of the
Shangri-La hotels. SIHM begins its hotel business operations in
the Philippines only on 1987.
On the other hand, DGCI thru its President and Chairman,
Ramon Syhunliong reiterated the conception of the mark and
the logo as follows: “The ‘S-logo’ was one of two (2) designs
given to him in December 1982, scribbled on a piece of paper
by a jeepney signboard artist with an office somewhere in
Balintawak. The unnamed artist supposedly produced the two
designs after about two or three days from the time he
(Syhunliong) gave the idea of the design he had in mind.” He
also said that he visited one of the SIHM hotels as early as
August 1982.
In this case, the RTC of Quezon City and the CA upheld the
registration of the DGCI before the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT). It solely based
its decision on the “prior use” and registration of the mark and
logo in the Philippines in contrast with the use of the SIHM
which is widespread but not in the Philippines not until 1987.
ISSUE: Whether or not the “prior use” and registration should
be the sole basis in determining the proper recipient of a
trademark. NO.
HELD: Under the provisions of the former trademark law, R.A.
No. 166, as amended, which was in effect up to December 31,
1997, hence, the law in force at the time of respondent's
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.
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Registration, without more, does not confer upon the
registrant an absolute right to the registered mark. The
certificate of registration is merely a prima facie proof that
the registrant is the owner of the registered mark or trade
name. Evidence of prior and continuous use of the mark or
trade name by another can overcome the presumptive
ownership of the registrant and may very well entitle the
former to be declared owner in an appropriate case.
Among the effects of registration of a mark, as catalogued
by the Court in Lorenzana v. Macagba, are:
1. Registration in the Principal Register gives rise to a
presumption of the validity of the registration, the
registrant's ownership of the mark, and his right to the
exclusive use thereof. x x x
2. Registration in the Principal Register is limited to the
actual owner of the trademark and proceedings therein
pass on the issue of ownership, which may be contested
through opposition or interference proceedings, or, after
registration, in a petition for cancellation. xxx
Ownership of a mark or trade name may be acquired not
necessarily by registration but by adoption and use in
trade or commerce. As between actual use of a mark
without registration, and registration of the mark without
actual use thereof, the former prevails over the latter. For
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 pre-requisite to the acquisition
of the right of ownership.
By itself, registration is not a mode of acquiring ownership.
When the applicant is not the owner of the trademark
being applied for, he has no right to apply for registration
of the same. Registration merely creates a prima facie
presumption of the validity of the registration, of the
registrant's ownership of the trademark and of the
exclusive right to the use thereof.20 Such presumption,
just like the presumptive regularity in the performance of
official functions, is rebuttable and must give way to
evidence to the contrary.
Here, respondent's own witness, Ramon Syhunliong,
testified that a jeepney signboard artist allegedly
commissioned to create the mark and logo submitted his
designs only in December 1982. This was two-and-a-half
months after the filing of the respondent's trademark
application on October 18, 1982 with the BPTTT. It was
also only in December 1982 when the respondent's
restaurant was opened for business. Respondent cannot
now claim before the Court that the certificate of
registration itself is proof that the two-month prior use
requirement was complied with, what with the fact that its
very own witness testified otherwise in the trial court. And
because at the time (October 18, 1982) the respondent
filed its application for trademark registration of the
"Shangri-La" mark and "S" logo, respondent was not using
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
these in the Philippines commercially, the registration is void.
G.R. No. 158589 June 27, 2006
PHILIP MORRIS, INC., BENSON & HEDGES (CANADA),
INC., and FABRIQUES DE TABAC REUNIES, S.A., (now
known as PHILIP MORRIS PRODUCTS S.A.), Petitioners,
vs.
FORTUNE TOBACCO CORPORATION, Respondent.
FACTS: Philip Morris, Inc., a corporation organized under the
laws of the State of Virginia, United States of America, is the
registered owner of the trademark “MARK VII” for cigarettes.
Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris,
Inc., is the registered owner of the trademark “MARK TEN” for
cigarettes. and another subsidiary of Philip Morris, Inc., the
Swiss company Fabriques de Tabac Reunies, S.A., is the
assignee of the trademark “LARK,” which was originally
registered in 1964 by Ligget and Myers Tobacco Company.
On the other hand, respondent Fortune Tobacco Corporation, a
company organized in the Philippines, manufactures and sells
cigarettes using the trademark “MARK.”
Petitioners would insist on their thesis of infringement since
respondent’s mark “MARK” for cigarettes is confusingly or
deceptively similar with their duly registered “MARK VII,”
“MARK TEN” and “LARK” marks likewise for cigarettes. To
them, the word “MARK” would likely cause confusion in the
trade, or deceive purchasers, particularly as to the source or
origin of respondent’s cigarettes.
The “likelihood of confusion” is the gravamen of trademark
infringement. But likelihood of confusion is a relative concept,
the particular, and sometimes peculiar, circumstances of each
case being determinative of its existence. Thus, in trademark
infringement cases, more than in other kinds of litigation,
precedents must be evaluated in the light of each particular
case.
Fortune Maintains, the registration of trademark cannot be
deemed conclusive as to the actual use of such trademark in
local commerce. As it were, registration does not confer upon
the registrant an absolute right to the registered mark. The
certificate of registration merely constitutes prima facie
evidence that the registrant is the owner of the registered mark.
Evidence of non-usage of the mark rebuts the presumption of
trademark ownership, as what happened here when petitioners
no less admitted not doing business in this country.
ISSUE: (1) whether or not petitioners, as Philippine registrants
of trademarks, are entitled to enforce trademark rights in this
country (YES)
(2) whether or not respondent has committed trademark
infringement against petitioners by its use of the mark “MARK”
for its cigarettes, hence liable for damages. (NO)
HELD: As a condition, their trademarks in this country must
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show proof, that their country grants substantially similar
rights and privileges to Filipino Citizens. The actual use of
the marks in local commerce and trade before they may
be registered, as to ownership is required. Mere selling
are the allegations of petitioners in their complaint as well
as in every petition filed in the Supreme Court indicating
that they are not doing business in the Philis. Such
allegations are not constituted as breach of such right.
Thus, there is no infringement.
Note: In determining similarity and likelihood of confusion,
jurisprudence has developed two tests: the dominancy
test and the holistic test.
The dominancy test, sets sight on the similarity of the
prevalent features of the competing trademarks that might
cause confusion and deception, thus constitutes
infringement. Under this norm, the question at issue turns
on whether the use of the marks involved would be likely
to cause confusion or mistake in the mind of the public or
deceive purchasers.
In contrast, the holistic test entails a consideration of the
entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing
similarity.
G.R. No. 76193 November 9, 1989
UNITED FEATURE SYNDICATE, INC., petitioner,
vs.
MUNSINGWEAR CREATION MANUFACTURING
COMPANY, respondent.
FACTS: Petitioner filed a petition to cancel the registration
of respondent Munsingwear. The Patent Office ruled in
favor of Munsingwear in holding that a copyright
registration like that of the name and likeness of CHARLIE
BROWN may not provide a cause of action for the
cancellation of a trademark registration.
United filed an appeal of the above decision but it was
dismissed for being filed out of time. The case was then
raised to the CA which upheld the Patent Office’s decision
that the appeal was filed late. It was further elevated to
the SC on a petition for review on certiorari.
ISSUE: WON petitioner has a cause of action against
respondent in the latter’s use of its comic character in its
ready to wear products. (YES)
RULING: PREMISES CONSIDERED, the Resolutions of
the Court of Appeals dated September 16, 1985 and
October 14, 1986 dismissing petitioner's appeal are
hereby SET ASIDE and Certificate of Registration no. SR-
424 issued to private respondent dated September 12,
1979 is hereby CANCELLED.
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
HELD: Pertinently, Section 2 of Presidential Decree No. 49,
otherwise known as the "Decree on Intellectual Property",
provides:
Section 2. The rights granted by this Decree shall, from
the moment of creation, subsist with respect to any of
the following classes of works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies,
labels, tags and box wraps. ...
Therefore, since the name "CHARLIE BROWN" and its pictorial
representation were covered by a copyright registration way
back in 1950 the same are entitled to protection under PD No.
49.
Aside from its copyright registration, petitioner is also the owner
of several trademark registrations and application for the name
and likeness of "CHARLIE BROWN" which is the duly
registered trademark and copyright of petitioner United Feature
Syndicate Inc. as early as 1957 and additionally also as TV
SPECIALS featuring the "PEANUTS" characters "CHARLIE
BROWN"
It is undeniable from the records that petitioner is the actual
owner of said trademark due to its prior registration with the
Patent's Office.
Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez &
Gobindram Hemandas Sujanani v. Hon. Roberto V. Ongpin, et
al. 129 SCRA 373 [1984]), the Court declared.
In upholding the right of the petitioner to maintain the
present suit before our courts for unfair competition or
infringement of trademarks of a foreign corporation, we
are moreover recognizing our duties and the rights of
foregoing states under the Paris Convention for the
Protection of Industrial Property to which the
Philippines and (France) U.S. are parties. We are
simply interpreting a solemn international commitment
of the Philippines embodied in a multilateral treaty to
which we are a party and which we entered into
because it is in our national interest to do so.
G.R. No. L-63796-97 May 2, 1984
LA CHEMISE LACOSTE, S.A., petitioner,
vs.
HON. OSCAR C. FERNANDEZ, respondent.
FACTS: The petitioner is a foreign corporation, organized and
existing under the laws of France and not doing business in the
Philippines, It is undeniable from the records that it is the actual
owner of the abovementioned trademarks used on clothings
and other goods specifically sporting apparels sold in many
parts of the world and which have been marketed in the
Philippines since 1964, The main basis of the private
respondent's case is its claim of alleged prior registration.
In 1975, Hemandas & Co., a duly licensed domestic firm
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applied for and was issued Reg. No. SR-2225 (SR stands
for Supplemental Register) for the trademark "CHEMISE
LACOSTE & CROCODILE DEVICE" by the Philippine
Patent Office for use on T-shirts, sportswear and other
garment products of the company. Two years later, it
applied for the registration of the same trademark under
the Principal Register. The Patent Office eventually issued
an order dated March 3, 1977 which states that:
... Considering that the mark was already
registered in the Supplemental Register in favor of
herein applicant, the Office has no other recourse
but to allow the application, however, Reg. No.
SR-2225 is now being contested in a Petition for
Cancellation docketed as IPC No. 1046, still
registrant is presumed to be the owner of the mark
until after the registration is declared cancelled.
Thereafter, Hemandas & Co. assigned to respondent
Gobindram Hemandas all rights, title, and interest in the
trademark "CHEMISE LACOSTE & DEVICE".
On November 21, 1980, the petitioner filed its application
for registration of the trademark "Crocodile Device"
(Application Serial No. 43242) and "Lacoste" (Application
Serial No. 43241).The former was approved for publication
while the latter was opposed by Games and Garments.
On March 21, 1983, the petitioner filed with the National
Bureau of Investigation (NBI) a letter-complaint alleging
therein the acts of unfair competition being committed by
Hemandas and requesting their assistance in his
apprehension and prosecution. The NBI conducted an
investigation and subsequently filed with the respondent
court two applications for the issuance of search warrants
which would authorize the search of the premises used
and occupied by the Lacoste Sports Center and Games
and Garments both owned and operated by Hemandas.
The respondent court issued Search Warrant. Hemandas
filed a motion to quash the search warrants alleging that
the trademark used by him was different from petitioner's
trademark and that pending the resolution of IPC No. 1658
before the Patent Office, any criminal or civil action on the
same subject matter and between the same parties would
be premature.
The respondent court was, however, convinced that there
was no probable cause to justify the issuance of the
search warrants.
ISSUE: WON Hemandas may allow to continue using the
trademark Lacoste for the simple reason that he was the
first registrant in the Supplemental Register of a
trademark. (NO)
HELD: A certificate of registration in the Supplemental
Register is not prima facie evidence of the validity of
registration, of the registrant's exclusive right to use the
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
same in connection with the goods, business, or services
specified in the certificate. Such a certificate of registration
cannot be filed, with effect, with the Bureau of Customs in order
to exclude from the Philippines, foreign goods bearing
infringement marks or trade names
Section 19-A of Republic Act 166 as amended not only
provides for the keeping of the supplemental register in addition
to the principal register but specifically directs that:
The certificates of registration for marks and trade
names registered on the supplemental register shall be
conspicuously different from certificates issued for
marks and trade names on the principal register.
Registration in the Supplemental Register, therefore, serves as
notice that the registrant is using or has appropriated the
trademark. By the very fact that the trademark cannot as yet be
entered in the Principal Register, all who deal with it should be
on guard that there are certain defects, some obstacles which
the user must Still overcome before he can claim legal
ownership of the mark or ask the courts to vindicate his claims
of an exclusive right to the use of the same. It would be
deceptive for a party with nothing more than a registration in
the Supplemental Register to posture before courts of justice
as if the registration is in the Principal Register.
The reliance of the private respondent on the last sentence of
the Patent office action on application Serial No. 30954 that
"registrant is presumed to be the owner of the mark until after
the registration is declared cancelled" is, therefore, misplaced
and grounded on shaky foundation, The supposed presumption
not only runs counter to the precept embodied in Rule 124 of
the Revised Rules of Practice before the Philippine Patent
Office in Trademark Cases but considering all the facts
ventilated before us in the four interrelated petitions involving
the petitioner and the respondent, it is devoid of factual basis.
And even in cases where presumption and precept may
factually be reconciled, we have held that the presumption is
rebuttable, not conclusive,
We have carefully gone over the records of all the cases filed in
this Court and find more than enough evidence to sustain a
finding that the petitioner is the owner of the trademarks
"LACOSTE", "CHEMISE LACOSTE", the crocodile or alligator
device, and the composite mark of LACOSTE and the
representation of the crocodile or alligator. Any pretensions of
the private respondent that he is the owner are absolutely
without basis. Any further ventilation of the issue of ownership
before the Patent Office will be a superfluity and a dilatory
tactic.
The purpose of the law protecting a trademark cannot be
overemphasized. They are to point out distinctly the origin or
ownership of the article to which it is affixed, to secure to him,
who has been instrumental in bringing into market a superior
article of merchandise, the fruit of his industry and skill, and to
prevent fraud and imposition (Etepha v. Director of Patents, 16
SCRA 495).
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The law on trademarks and tradenames is based on the
principle of business integrity and common justice' This
law, both in letter and spirit, is laid upon the premise that,
while it encourages fair trade in every way and aims to
foster, and not to hamper, competition, no one, especially
a trader, is justified in damaging or jeopardizing another's
business by fraud, deceipt, trickery or unfair methods of
any sort. This necessarily precludes the trading by one
dealer upon the good name and reputation built up by
another (Baltimore v. Moses, 182 Md 229, 34 A (2d) 338).
The records show that the goodwill and reputation of the
petitioner's products bearing the trademark LACOSTE
date back even before 1964 when LACOSTE clothing
apparels were first marketed in the Philippines. To allow
Hemandas to continue using the trademark Lacoste for
the simple reason that he was the first registrant in the
Supplemental Register of a trademark used in
international commerce and not belonging to him is to
render nugatory the very essence of the law on
trademarks and tradenames.
G.R. No. L-26966 October 30, 1970
DE LA RAMA STEAMSHIP CO., plaintiff-appellee,
vs.
NATIONAL DEVELOPMENT CO., defendant-appellant.
FACTS: De la Rama Steamship Co. Inc. and NDC entered
into an agreement whereby De la Rama undertook the
management of the three vessels known as "Doña
Aurora," "Doña Nati" and "Doña Alicia" which had been
purchased by the Philippine Government from Japan.
However, NDC filed a case to cancel upon the general
agency granted Dela Rama which the SC granted. (G.R.
No. L-8784)
The right of NDC to cancel the management contract
having been upheld by the SC, De la Rama then filed a
case against NDC demanded the latter to refrain from
using the names "Doña Aurora," "Doña Nati" and "Doña
Alicia" on the three vessels subject of the original action,
claiming that it had acquired exclusive property right to the
use of said names of the three vessels as trade names.
In its answer, NDC denied De la Rama's exclusive right to
use the names "Doña Aurora," "Doña Nati" and "Doña
Alicia" on the vessels upon the ground that said names
represented names of wives of former Presidents of the
Philippines and could not be approriated by a private
individual.
De la Rama, on the other hand alleged that the names
"Doña Aurora," "Doña Nati" and "Doña Alicia" were its
property, having used the name "Doña" on its vessels in
its shipping business even before the last war and had
acquired a vested right on that trade name.
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
The trial court issued an order Enjoining and restraining
NDC perpetually from using the 'Doña' name or title on any of
its vessels. Hence this petition.
ISSUES: (1) W/N De la Rama has no exclusive right to use
the names "Doña Aurora," "Doña Nati" and "Doña Alicia" on the
vessels upon the ground that said names represented names
of wives of former Presidents of the Philippines and could not
be approriated by a private individual. (It has exclusive right)
(2) W/N Delarama having used the name "Doña" on its vessels
in its shipping business even before the last war and had
acquired a vested right on that trade name.
RULING: (1) Under Section 4(c) of Rep. Act No. 166 as
amended, which apparently is the basis of the contention of
NDC, what is prohibited from being appropriated and being
registered are trade-names consisting of, or comprising, a
name identifying a particular living individual, or the name of a
deceased President of the Philippines. The names of
deceased wives of Presidents are not included in the
prohibition. Moreover, Section 4(f) of said Act does not
prohibit the registration, and hence appropriation, of a trade-
name that has become distinctive and the substantial and
exclusive use of a trade-name for five years accepted as prima
facie proof that the trade-name has become distinctive. And
this Court has said, in Ang vs. Teodoro, that even a name or
phrase not capable of appropriation as a trade name may, by
long and exclusive use by a business with reference thereto of
to its products, acquire a proprietary connotation, such that, to
the purchasing public, the name or phrase becomes associated
with the service or the products of the business, and so it is
entitled to protection against unfair competition.
(2) NDC does not dispute the fact that the "Doña" names had
been originally used by De la Rama, and according to the lower
court De la Rama had been using the "Doña" names even
before the war, and that said names have acquired goodwill
and reputation. Goodwill is protected by the law on unfair
competition. Goodwill is easily damaged, and is easily
vulnerable to assault, through the brand which symbolizes it.
When a person has established a trade or business in which he
has used a name or device to designate his goods, he will be
protected in the use of the name or device. "Such person has a
right to complain when another adopts this symbol or manner
of making of his goods so as to mislead the public into
purchasing the same as and for the goods of the complainant."
The goodwill in business is a valuable asset, and in
modern commercial life it is frequently built upon a
trade-name. Any trade-mark or name ... which has
become of a pecuniary value or a business advantage,
becomes a property right, and, as such, is entitled to
the protection afforded by the courts (American
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Agricultural Chemical Co. v. Moore, 17 F (2d) 196,
199.)
In Ang v. Teodoro this Court said:.
The owner of a trade-mark or trade-name has a
property right in which he is entitled to protection,
since there is damage to him from confusion of
reputation or goodwill in the mind of the public as
well as confusion of goods. The modern trend is to
give emphasis to the unfairness of the acts and to
treat the issue as a fraud.
To permit NDC to continue using the "Doña" names would
be to countenance the unlawful appropriation of the
benefit of a goodwill which De la Rama has acquired as a
result of continued usage and large expense; it would be
tantamount to permitting NDC to grab the reputation or
goodwill of the business of another. We find that the
decision of the trial court on this matter is in accordance
with the law on unfair competition.
G.R. No. 112012 April 4, 2001
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE
PHILIPPINES, INC., petitioners,
vs.
COURT OF APPEALS and CFC CORPORATION.,
respondents.
FACTS: Private respondent CFC Corporation filed with the
BPTTT an application for the registration of the trademark
"FLAVOR MASTER" for instant coffee.
Petitioner Societe Des Produits Nestle, S.A., a Swiss
company registered under Swiss laws and domiciled in
Switzerland, filed an unverified Notice of Opposition,
claiming that the trademark of private respondent’s
product is "confusingly similar to its trademarks for coffee
and coffee extracts, to wit: MASTER ROAST and
MASTER BLEND." Likewise, a verified Notice of
Opposition was filed by Nestle Philippines, Inc., a
Philippine corporation and a licensee of Societe Des
Produits Nestle S.A., against CFC’s application for
registration of the trademark FLAVOR MASTER. Nestle
claimed that the use, if any, by CFC of the trademark
FLAVOR MASTER and its registration would likely cause
confusion in the trade; or deceive purchasers and would
falsely suggest to the purchasing public a connection in
the business of Nestle, as the dominant word present in
the three (3) trademarks is "MASTER"; or that the goods
of CFC might be mistaken as having originated from the
latter.
CFC argued that its trademark, FLAVOR MASTER, is not
confusingly similar with the former’s trademarks, MASTER
ROAST and MASTER BLEND, alleging that, "except for
the word MASTER (which cannot be exclusively
appropriated by any person for being a descriptive or
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
generic name), the other words that are used respectively with
said word in the three trademarks are very different from each
other – in meaning, spelling, pronunciation, and sound". CFC
further argued that its trademark, FLAVOR MASTER, "is clearly
very different from any of Nestlé’s alleged trademarks MASTER
ROAST and MASTER BLEND, especially when the marks are
viewed in their entirety, by considering their pictorial
representations, color schemes and the letters of their
respective labels."
The BPTTT denied CFC’s application for registration. CFC
elevated the matter to the Court of Appeals.
ISSUE: "Does appellant CFC’s trade dress bear a striking
resemblance with appellee’s trademarks as to create in the
purchasing public’s mind the mistaken impression that both
coffee products come from one and the same source?"
RULING: Yes. A trademark has been generally defined as "any
word, name, symbol or device adopted and used by a
manufacturer or merchant to identify his goods and distinguish
them from those manufactured and sold by others."
A manufacturer’s trademark is entitled to protection. As Mr.
Justice Frankfurter observed in the case of Mishawaka Mfg.
Co. v. Kresge Co.:
The protection of trade-marks is the law’s recognition
of the psychological function of symbols. If it is true that
we live by symbols, it is no less true that we purchase
goods by them. A trade-mark is a merchandising short-
cut which induces a purchaser to select what he wants,
or what he has been led to believe he wants. The
owner of a mark exploits this human propensity by
making every effort to impregnate the atmosphere of
the market with the drawing power of a congenial
symbol. Whatever the means employed, the aim is the
same --- to convey through the mark, in the minds of
potential customers, the desirability of the commodity
upon which it appears. Once this is attained, the trade-
mark owner has something of value. If another
poaches upon the commercial magnetism of the
symbol he has created, the owner can obtain legal
redress.
The law prescribes a more stringent standard in that there
should not only be confusing similarity but that it should not
likely cause confusion or mistake or deceive purchasers.
Hence, the question in this case is whether there is a likelihood
that the trademark FLAVOR MASTER may cause confusion or
mistake or may deceive purchasers that said product is the
same or is manufactured by the same company. In other
words, the issue is whether the trademark FLAVOR MASTER
is a colorable imitation of the trademarks MASTER ROAST and
MASTER BLEND.
Colorable imitation denotes such a close or ingenious imitation
as to be calculated to deceive ordinary persons, or such a
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resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually
gives, as to cause him to purchase the one supposing it to
be the other. In determining if colorable imitation exists,
jurisprudence has developed two kinds of tests - the
Dominancy Test and the Holistic Test. The test of
dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause
confusion or deception and thus constitute infringement.
On the other side of the spectrum, the holistic test
mandates that the entirety of the marks in question must
be considered in determining confusing similarity.
Nestle points out that the dominancy test should have
been applied to determine whether there is a confusing
similarity between CFC’s FLAVOR MASTER and Nestle’s
MASTER ROAST and MASTER BLEND. We agree.
As the Court of Appeals itself has stated, "[t]he
determination of whether two trademarks are indeed
confusingly similar must be taken from the viewpoint of the
ordinary purchasers who are, in general, undiscerningly
rash in buying the more common and less expensive
household products like coffee, and are therefore less
inclined to closely examine specific details of similarities
and dissimilarities between competing products."21
The basis for the Court of Appeals’ application of the
totality or holistic test is the "ordinary purchaser" buying
the product under "normally prevalent conditions in trade"
and the attention such products normally elicit from said
ordinary purchaser. An ordinary purchaser or buyer does
not usually make such scrutiny nor does he usually have
the time to do so. The average shopper is usually in a
hurry and does not inspect every product on the shelf as if
he were browsing in a library.22
The Court of Appeals held that the test to be applied
should be the totality or holistic test reasoning, since what
is of paramount consideration is the ordinary purchaser
who is, in general, undiscerningly rash in buying the more
common and less expensive household products like
coffee, and is therefore less inclined to closely examine
specific details of similarities and dissimilarities between
competing products.
This Court cannot agree with the above reasoning. If the
ordinary purchaser is "undiscerningly rash" in buying such
common and inexpensive household products as instant
coffee, and would therefore be "less inclined to closely
examine specific details of similarities and dissimilarities"
between the two competing products, then it would be less
likely for the ordinary purchaser to notice that CFC’s
trademark FLAVOR MASTER carries the colors orange
and mocha while that of Nestle’s uses red and brown. The
application of the totality or holistic test is improper since
the ordinary purchaser would not be inclined to notice the
specific features, similarities or dissimilarities, considering
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
that the product is an inexpensive and common household
item.
It must be emphasized that the products bearing the
trademarks in question are "inexpensive and common"
household items bought off the shelf by "undiscerningly rash"
purchasers. As such, if the ordinary purchaser is
"undiscerningly rash", then he would not have the time nor the
inclination to make a keen and perceptive examination of the
physical discrepancies in the trademarks of the products in
order to exercise his choice.
WHEREFORE, the decision of the Court of Appeals is
REVERSED and SET ASIDE.
G.R. No. 120900 July 20, 2000
CANON KABUSHIKI KAISHA, petitioner,
vs.
COURT OF APPEALS and NSR RUBBER CORPORATION,
respondents.
GONZAGA-REYES, J.:
FACTS: On January 15, 1985, private respondent NSR Rubber
Corporation (private respondent) filed an application for
registration of the mark CANON for sandals in the Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT). A
Verified Notice of Opposition was filed by petitioner, a foreign
corporation duly organized and existing under the laws of
Japan, alleging that it will be damaged by the registration of the
trademark CANON in the name of private respondent.
On November 10, 1992, the BPTTT issued its decision
dismissing the opposition of petitioner and giving due course to
private respondent's application for the registration of the
trademark CANON. On February 16, 1993, petitioner appealed
the decision of the BPTTT with public respondent Court of
Appeals that eventually affirmed the decision of BPTTT. Hence,
this petition for review.
ISSUE: Whether the trademark Canon filed by the Private
Respondents could be registered? (YES, the company’s goods
are different from the products of the petitioner)
RULING: The BPTTT and the Court of Appeals share the
opinion that the trademark "CANON" as used by petitioner for
its paints, chemical products, toner, and dyestuff, can be used
by private respondent for its sandals because the products of
these two parties are dissimilar. Petitioner protests the
appropriation of the mark CANON by private respondent on the
ground that petitioner has used and continues to use the
trademark CANON on its wide range of goods worldwide.
Allegedly, the corporate name or tradename of petitioner is also
used as its trademark on diverse goods including footwear and
other related products like shoe polisher and polishing agents.
To lend credence to its claim, petitioner points out that it has
branched out in its business based on the various goods
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carrying its trademark CANON3, including footwear which
petitioner contends covers sandals, the goods for which
private respondent sought to register the mark CANON.
For petitioner, the fact alone that its trademark CANON is
carried by its other products like footwear, shoe polisher
and polishing agents should have precluded the BPTTT
from giving due course to the application of private
respondent.
We find the arguments of petitioner to be
unmeritorious.
Ordinarily, the ownership of a trademark or
tradename is a property right that the owner is
entitled to protect4 as mandated by the Trademark
Law.5 However, when a trademark is used by a party
for a product in which the other party does not deal,
the use of the same trademark on the latter's product
cannot be validly objected to.6
The BPTTT correctly ruled that since the certificate of
registration of petitioner for the trademark CANON covers
class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods
classified as class 25 (sandals). Clearly, there is a world of
difference between the paints, chemical products, toner,
and dyestuff of petitioner and the sandals of private
respondent.
Petitioner counters that notwithstanding the dissimilarity of
the products of the parties, the trademark owner is entitled
to protection when the use of by the junior user "forestalls
the normal expansion of his business".7 Petitioner's
opposition to the registration of its trademark CANON by
private respondent rests upon petitioner's insistence that it
would be precluded from using the mark CANON for
various kinds of footwear, when in fact it has earlier used
said mark for said goods.
We do not agree. Even in this instant petition, except for
its bare assertions, petitioner failed to attach evidence that
would convince this Court that petitioner has also
embarked in the production of footwear products.
We reiterated the principle that the certificate of
registration confers upon the trademark owner the
exclusive right to use its own symbol only to those
goods specified in the certificate, subject to the
conditions and limitations stated therein.11 Thus, the
exclusive right of petitioner in this case to use the
trademark CANON is limited to the products covered by its
certificate of registration.
Petitioner further argues that the alleged diversity of its
products all over the world makes it plausible that the
public might be misled into thinking that there is some
supposed connection between private respondent's goods
and petitioner. Petitioner is apprehensive that there could
be confusion as to the origin of the goods, as well as
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
confusion of business, if private respondent is allowed to
register the mark CANON. In such a case, petitioner would
allegedly be immensely prejudiced if private respondent would
be permitted to take "a free ride on, and reap the advantages
of, the goodwill and reputation of petitioner Canon".12 In
support of the foregoing arguments, petitioner invokes the
rulings in Sta. Ana vs. Maliwat13 , Ang vs. Teodoro14 and
Converse Rubber Corporation vs. Universal Rubber Products,
Inc.15.
The likelihood of confusion of goods or business is a
relative concept, to be determined only according to the
particular, and sometimes peculiar, circumstances of each
case.16 Indeed, in trademark law cases, even more than in
other litigation, precedent must be studied in the light of the
facts of the particular case.17 Contrary to petitioner's
supposition, the facts of this case will show that the cases of
Sta. Ana vs. Maliwat,, Ang vs. Teodoro and Converse Rubber
Corporation vs. Universal Rubber Products, Inc. are hardly in
point. The just cited cases involved goods that were
confusingly similar, if not identical, as in the case of Converse
Rubber Corporation vs. Universal Rubber Products, Inc. Here,
the products involved are so unrelated that the public will not
be misled that there is the slightest nexus between petitioner
and the goods of private respondent.
In cases of confusion of business or origin, the question
that usually arises is whether the respective goods or
services of the senior user and the junior user are so
related as to likely cause confusion of business or origin,
and thereby render the trademark or tradenames
confusingly similar.18 Goods are related when they belong
to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential
characteristics with reference to their form, composition, texture
or quality.19 They may also be related because they serve the
same purpose or are sold in grocery stores.20
Thus, in Esso Standard Eastern, Inc. vs. Court of Appeals, this
Court ruled that the petroleum products on which the petitioner
therein used the trademark ESSO, and the product of
respondent, cigarettes are "so foreign to each other as to make
it unlikely that purchasers would think that petitioner is the
manufacturer of respondent's goods"21. Moreover, the fact that
the goods involved therein flow through different channels of
trade highlighted their dissimilarity.
Undoubtedly, the paints, chemical products, toner and dyestuff
of petitioner that carry the trademark CANON are unrelated to
sandals, the product of private respondent. We agree with the
BPTTT, following the Esso doctrine, when it noted that the
two classes of products in this case flow through different
trade channels.
Other Doctrine:
The term "trademark" is defined by RA 166, the Trademark
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Law, as including "any word, name, symbol, emblem, sign
or device or any combination thereof adopted and used by
a manufacturer or merchant to identify his goods and
distinguish them for those manufactured, sold or dealt in
by others."26 Tradename is defined by the same law as
including "individual names and surnames, firm names,
tradenames, devices or words used by manufacturers,
industrialists, merchants, agriculturists, and others to
identify their business, vocations, or occupations; the
names or titles lawfully adopted and used by natural or
juridical persons, unions, and any manufacturing,
industrial, commercial, agricultural or other organizations
engaged in trade or commerce."27 Simply put, a trade
name refers to the business and its goodwill; a trademark
refers to the goods.28
The Convention of Paris for the Protection of Industrial
Property, otherwise known as the Paris Convention, of
which both the Philippines and Japan, the country of
petitioner, are signatories29, is a multilateral treaty that
seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service
marks, trade names and indications of source or
appellations of origin, and at the same time aims to
repress unfair competition.30 We agree with public
respondents that the controlling doctrine with respect to
the applicability of Article 8 of the Paris Convention is that
established in Kabushi Kaisha Isetan vs. Intermediate
Appellate Court.31 As pointed out by the BPTTT:
"Regarding the applicability of Article 8 of the
Paris Convention, this Office believes that
there is no automatic protection afforded an
entity whose tradename is alleged to have
been infringed through the use of that name
as a trademark by a local entity.
In Kabushiki Kaisha Isetan vs. The Intermediate
Appellate Court, et. al., G.R. No. 75420, 15
November 1991, the Honorable Supreme Court
held that:
'The Paris Convention for the Protection
of Industrial Property does not
automatically exclude all countries of the
world which have signed it from using a
tradename which happens to be used in
one country. To illustrate – if a taxicab or
bus company in a town in the United
Kingdom or India happens to use the
tradename "Rapid Transportation", it does
not necessarily follow that "Rapid" can no
longer be registered in Uganda, Fiji, or
the Philippines.
This office is not unmindful that in the Treaty of
Paris for the Protection of Intellectual Property
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
regarding well-known marks and possible application
thereof in this case. Petitioner, as this office sees it, is
trying to seek refuge under its protective mantle,
claiming that the subject mark is well known in this
country at the time the then application of NSR Rubber
was filed.
However, the then Minister of Trade and Industry, the
Hon. Roberto V. Ongpin, issued a memorandum dated
25 October 1983 to the Director of Patents, a set of
guidelines in the implementation of Article 6bis (sic) of
the Treaty of Paris. These conditions are:
a) the mark must be internationally known;
b) the subject of the right must be a trademark,
not a patent or copyright or anything else;
c) the mark must be for use in the same or
similar kinds of goods; and
d) the person claiming must be the owner of
the mark (The Parties Convention
Commentary on the Paris Convention. Article
by Dr. Bogsch, Director General of the World
Intellectual Property Organization, Geneva,
Switzerland, 1985)'
From the set of facts found in the records, it is ruled
that the Petitioner failed to comply with the third
requirement of the said memorandum that is the mark
must be for use in the same or similar kinds of goods.
The Petitioner is using the mark "CANON" for products
belonging to class 2 (paints, chemical products) while
the Respondent is using the same mark for sandals
(class 25). Hence, Petitioner's contention that its mark
is well-known at the time the Respondent filed its
application for the same mark should fail. "32
WHEREFORE, in view of the foregoing, the instant petition for
review on certiorari is DENIED for lack of merit.
SO ORDERED.
G.R. No. 101897. March 5, 1993.
LYCEUM OF THE PHILIPPINES, INC., petitioner,
vs.
COURT OF APPEALS, LYCEUM OF APARRI, LYCEUM OF
CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM
OF LALLO, INC., LYCEUM OF TUAO, INC., BUHI LYCEUM,
CENTRAL LYCEUM OF CATANDUANES, LYCEUM OF
SOUTHERN PHILIPPINES, LYCEUM OF EASTERN
MINDANAO, INC. and WESTERN PANGASINAN LYCEUM,
INC., respondents.
FACTS: The Lyceum of the Philippines, Inc. is an educational
institution duly registered with the Securities and Exchange
Commission, using said corporate name since its first
registration with the latter.
LPI commenced in the SEC a proceeding against Lyceum of
Baguio, Inc. to require it to change its corporate name and to
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adopt another name “not similar to or identical with” that of
LPI.
Associate Commissioner Julio Sulit held that the corporate
name of LPI and LBI were substantially identical because
of the presence of a "dominant" word (Lyceum), the name
of the geographical location of the campus being the only
word which distinguished one from the other. The SEC
also noted that LPI had registered as a corporation ahead
of LBI and ordered the latter to change its name to another
name "not similar or identical with" the names of
previously registered entities.
LBI assailed the SEC’s order before the Supreme Court,
which denied the same.
Armed with said SC resolution, LPI wrote to all the
educational institutions it could find using the word
"Lyceum" as part of their corporate name, advising them to
discontinue such use of "Lyceum".
LPI claimed proprietary right over the word “Lyceum” and
instituted proceedings before the SEC to compel Lyceum
of Aparri, Lyceum of Cabagan, Lyceum of Camalanuigan,
Inc., Lyceum of Lallo, Inc., Lyceum of Tuao, Inc., Buhi
Lyceum, Central Lyceum of Catanduanes, Lyceum of
Southern Philippines, Lyceum of Eastern Mindanao, Inc.,
and Western Pangasinan Lyceum, Inc., also educational
institutions, to delete the word "Lyceum" from their
corporate names and to permanently enjoin them from
using "Lyceum" as part of their respective names.
The SEC hearing officer ruled in favor of LPI, relying upon
the SEC’s ruling in the LBI case and holding that the word
"Lyceum" was capable of appropriation, LPI having
acquired an enforceable exclusive right to the use of that
word.
On appeal, the SEC En Banc reversed and set aside the
hearing officer’s decision, not considering the word
"Lyceum" to have become so identified with LPI as to
render use thereof by other institutions as productive of
confusion about the identity of the schools concerned in
the mind of the general public and holding that the
attaching of geographical names to the word "Lyceum"
served sufficiently to distinguish the schools from one
another.
The Court of Appeals affirmed the SEC En Banc’s ruling
ISSUE: WON the word “Lyceum” (1) can be appropriated
by LPI to the exclusion of others and (2) acquired a
secondary meaning in relation to LPI.
HELD: (1) NO. The Articles of Incorporation of a
corporation must set out the name of the corporation.
Section 18 of the Corporation Code establishes a
restrictive rule insofar as corporate names are concerned:
"SECTION 18. Corporate name. — No corporate
name may be allowed by the Securities and
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
Exchange Commission if the proposed name is
identical or deceptively or confusingly similar to that of
any existing corporation or to any other name already
protected by law or is patently deceptive, confusing or
contrary to existing laws. When a change in the
corporate name is approved, the Commission shall
issue an amended certificate of incorporation under the
amended name."
The policy underlying the prohibition in Section 18 against the
registration of a corporate name which is "identical or
deceptively or confusingly similar" to that of any existing
corporation or which is "patently deceptive" or "patently
confusing" or "contrary to existing laws," is the avoidance of
fraud upon the public which would have occasion to deal with
the entity concerned, the evasion of legal obligations and
duties, and the reduction of difficulties of administration and
supervision over corporations.
The corporate names of LA, et. al. not are "identical with, or
deceptively or confusingly similar" to that of LPI. The corporate
names of LA, et. al. all carry the word "Lyceum", but confusion
and deception are effectively precluded by the appending of
geographic names to the word "Lyceum".
Etymologically, the word "Lyceum" is the Latin word for the
Greek lykeion, which refers to a locality on the river Ilissius in
ancient Athens "comprising an enclosure dedicated to Apollo
and adorned with fountains and buildings erected by
Pisistratus, Pericles and Lycurgus frequented by the youth for
exercise and by the philosopher Aristotle and his followers for
teaching." In time, the word "Lyceum" became associated with
schools and other institutions providing public lectures and
concerts and public discussions. Today, the word "Lyceum"
generally refers to a school or an institution of learning.
"Lyceum" is in fact as generic in character as the word
"university." In the name of LPI, "Lyceum" appears to be a
substitute for "university". In other places, "Lyceum", or "Liceo",
or "Lycee", denotes a secondary school or a college. It may be
that the use of the word "Lyceum" may not yet be as
widespread as the use of "university," but it is clear that a not
inconsiderable number of educational institutions have adopted
"Lyceum" or "Liceo" as part of their corporate names. Since
"Lyceum" or "Liceo" denotes a school or institution of learning,
it is not unnatural to use this word to designate an entity which
is organized and operating as an educational institution.
(2) NO. LPI claimed that the word "Lyceum" has acquired a
secondary meaning in relation to it, hence, appropriable by it to
the exclusion of other institutions.
The doctrine of secondary meaning originated in the field of
trademark law. Its application has been extended to corporate
names, since the right to use a corporate name to the exclusion
of others is based upon the same principle which underlies the
right to use a particular trademark or tradename. In Philippine
Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of
secondary meaning was elaborated thus:
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" . . . a word or phrase originally incapable of
exclusive appropriation with reference to an article
on the market, because geographically or
otherwise descriptive, might nevertheless have
been used so long and so exclusively by one
producer with reference to his article that, in that
trade and to that branch of the purchasing public,
the word or phrase has come to mean that the
article was his product."
No evidence was ever presented in the hearing before the
Commission which sufficiently proved that the word
'Lyceum' has indeed acquired secondary meaning in favor
of LPI. If there was any of this kind, the same tend to
prove only that LPI had been using the disputed word for a
long period of time. Nevertheless, LPI’s exclusive use of
the word “Lyceum” was never established or proven, as in
fact the WPLI was already using the word “Lyceum”
seventeen (17) years prior to the date LPI started using
the same word in its corporate name. Furthermore,
educational institutions of the Roman Catholic Church had
been using the same or similar word ('Liceo de Manila,'
'Liceo de Baleno', 'Liceo de Masbate,' 'Liceo de Albay')
long before LPI started using the word 'Lyceum'. LPI also
failed to prove that the word “Lyceum” has become so
identified with its educational institution that confusion will
surely arise in the minds of the public if the same word
were to be used by other educational institutions.
While LPI may have proved that it had been using the
word “Lyceum” for a long period of time, this fact alone did
not amount to mean that the said word had acquired
secondary meaning in its favor because LPI failed to prove
that it had been using the same word all by itself to the
exclusion of others. More so, there was no evidence
presented to prove that confusion will surely arise if the
same word were to be used by other educational
institutions.
THUS: LPI is not entitled to a legally enforceable exclusive
right to use the word "Lyceum" in its corporate name and
other institutions may use "Lyceum" as part of their
corporate names. To determine whether a given corporate
name is "identical" or "confusingly or deceptively similar"
with another entity's corporate name, it is not enough to
ascertain the presence of "Lyceum" or "Liceo" in both
names. One must evaluate corporate names in their
entirety and when the name of petitioner is juxtaposed
with the names of LA, et. al., they are not reasonably
regarded as "identical" or "confusingly or deceptively
similar" with each other.
LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
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G.R. No. 143993 August 18, 2004

MCDONALD'S CORPORATION and MCGEORGE FOOD
INDUSTRIES, INC., petitioners,
vs.
L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA
A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO,
ARACELI AYCARDO, and GRACE HUERTO,
respondents.

FACTS: McDonald's Corporation, a corporation organized

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 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
under the laws of Delaware, United States, operates, by itself
or through its franchisees, a global chain of fast-food
restaurants.
McGeorge Food Industries, a domestic corporation, is
MC's Philippine franchisee.
L.C. Big Mak Burger, Inc., a domestic corporation,
operates fast-food outlets and snack vans in Metro Manila and
nearby provinces, which menu includes hamburger sandwiches
and other food items.
Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy,
Jesus Aycardo, Araceli Aycardo, and Grace Huerto are the
incorporators, stockholders and directors of LCBMBI.
MC owns a family of marks, including the "Big Mac"
mark for its "double-decker hamburger sandwich," which it
registered with the U.S. Trademark Registry (October 16,
1979).
MC applied for the registration of said mark in the
Principal Register of the then Philippine Bureau of Patents,
Trademarks and Technology (now the Intellectual Property
Office).
Pending approval of its application, MC introduced its
"Big Mac" hamburger sandwiches in the Philippine market
(September 1981).
The PBPTT allowed registration of the "Big Mac" mark
in the Principal Register (July 18, 1985).
MC displayed the "Big Mac" mark in the items and
paraphernalia in its restaurants and in its outdoor and indoor
signages.
MC spent P10.5 million in advertisement (1982 to
1990) for "Big Mac" hamburger sandwiches alone.
LCBMBI applied with the PBPTT for the registration of
the "Big Mak" mark for its hamburger sandwiches.
MC opposed LCBMBI's application on the ground that
"Big Mak" was a colorable imitation of its registered "Big Mac"
mark for the same food products. MC also informed LCBMBI of
its exclusive right to the "Big Mac" mark and requested it to
desist from using the "Big Mak" mark or any similar mark.
LCBMBI having made no reply, MC sued (June 6, 1990) the
former in the Regional Trial Court for trademark infringement
and unfair competition.
The RTC issued a temporary restraining order (July 11,
1990) against LCBMBI, enjoining it from using the "Big Mak"
mark in the operation of their business in the National Capital
Region. Subsequently, the RTC issued a writ of preliminary
injunction (August 16, 1990) replacing the TRO.
LCBMBI: (1) It has been using the name "Big Mak Burger" for
their fast-food business. (2) MC does not have an exclusive
right to the "Big Mac" mark or to any other similar mark. (3) The
Isaiyas Group of Corporations had already registered (March
13, 1979) the same mark for hamburger sandwiches with the
PBPTT. (4) Rodolfo Topacio had similarly registered (June 24,
1983) the same mark. (5) It is not liable for trademark
infringement or for unfair competition, as the "Big Mak" mark
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they sought to register does not constitute a colorable
imitation of the "Big Mac" mark. (6) It did not fraudulently
pass off their hamburger sandwiches as those of MC's
“Big Mac” hamburgers.
MC: (1) It denied LCBMBI's claim that it is not the
exclusive owner of the "Big Mac" mark. (2) While IGC and
Topacio registered the "Big Mac" mark ahead of it, the IGC
did so only in the Supplemental Register of the PBPTT,
which registration does not provide any protection, and it
had acquired Topacio's rights to his registration in a Deed
of Assignment (May 18, 1981).
RTC (September 5, 1994): LCBMBI is liable for trademark
infringement and unfair competition. Trademark
Infringement – The mark "Big Mac" is a registered
trademark for MC and, as such, is entitled to protection
against infringement. There exist some distinctions
between the names "Big Mac" and "Big Mak" as appearing
in the respective signages, wrappers and containers of the
food products of the parties. But infringement goes beyond
the physical features of the questioned name and the
original name. There are still other factors to be
considered. The parties are both in the business of fast-
food chains and restaurants. An average person who is
hungry and wants to eat a hamburger sandwich may not
be discriminating enough to look for a MC restaurant and
buy a "Big Mac" hamburger. Once he sees a stall selling
hamburger sandwiches, in all likelihood, he will dip into his
pocket and order a "Big Mak" hamburger sandwich. MC's
fast-food chain has attained wide popularity and
acceptance by the consuming public so much so that its
air-conditioned food outlets and restaurants will perhaps
not be mistaken by many to be the same as LCBMBI's
mobile snack vans located along busy streets or
highways. But the thing is that what is being sold by both
parties is a food item – a hamburger sandwich – which is
for immediate consumption, so that a buyer may easily be
confused or deceived into thinking that the "Big Mak"
hamburger sandwich he bought is a food-product of MC,
or a subsidiary or allied outlet thereof. Surely, LCBMBI has
its own secret ingredients to make its hamburger
sandwiches as palatable and as tasty as the other brands
in the market, considering the keen competition among
mushrooming hamburger stands and multinational fast-
food chains and restaurants. Hence, the trademark "Big
Mac" has been infringed by LCBMBI when it used the
name "Big Mak" in its signages, wrappers, and containers
in connection with its food business. Unfair Competition
– Any conduct may be said to constitute unfair competition
if the effect is to pass off on the public the goods of one
man as the goods of another. The choice of "Big Mak" as
tradename by LCBMBI is not merely for sentimental
reasons but was clearly made to take advantage of the
reputation, popularity and the established goodwill of MC.
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
As stated in Section 29, a person is guilty of unfair competition
who in selling his goods shall give 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 likely
influence purchasers to believe that the goods offered are
those of a manufacturer or dealer other than the actual
manufacturer or dealer.
CA (November 26, 1990): The RTC’s decision is reversed.
Trademark infringement – No colorable imitation exists. It is
not sufficient that a similarity exists in both names, but, more
importantly, the over-all presentation, or their essential,
substantive and distinctive parts, is such as would likely
MISLEAD or CONFUSE persons in the ordinary course of
purchasing the genuine article. (1) MC’s trademark is used to
designate only one product, a double decker sandwich, while
LCBMBI’s trademark is used not as a trademark for its food
product but a business or corporate name. (2) LCBMBI’s
corporate or business name, appearing in the food packages
and signages, are (a) written in silhouette red-orange letters
with the "b" and "m" in upper case letters, (b) above the words
"Big Mak" are the upper case letter "L.C.," (c) below the words
"Big Mak" are the words "Burger, Inc." spelled out in upper
case letters, and (d) said corporate or business name,
appearing in such food packages and signages, is always
accompanied by the company mascot – a young chubby boy
named Maky, who wears a red T-shirt with the upper case "m"
and a blue lower garment. (3) MC’s product is sold in a
styrofoam box with the "McDonalds" logo, while LCBMBI’s food
packages are made of plastic material. (4) MC’s price is more
expensive than LCBMBI’s comparable food products. (5) In
order to buy a "Big Mac", a customer needs to visit an air-
conditioned "McDonald's" restaurant usually located in a
nearby commercial center, advertised and identified by its logo
- the umbrella "M", and its mascot – "Ronald McDonald," while
LCBMBI sells their goods through snack vans. Unfair
competition – Unfair competition is defined as "the
employment of deception or any other means contrary to good
faith by which a person shall pass off the goods manufactured
by him or in which he deals, or his business, or service, for
those of another who has already established good will for his
similar goods, business or services, or any acts calculated to
produce the same result." To constitute unfair competition,
there must be malice and bad faith. The mere suspected
similarity in the sound of LCBMBI's corporate name with MC’s
trademark is not sufficient evidence to conclude unfair
competition. LCBMBI explained that the name "Mak" in their
corporate name was derived from both the first names of the
mother and father of Francis Dy, whose names are Maxima
and Kimsoy. With this explanation, it is up to MC to prove bad
faith on the part of LCBMBI. It is a settled rule that the law
always presumes good faith such that any person who seeks to
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be awarded damages due to acts of another has the
burden of proving that the latter acted in bad faith or with
ill motive.
ISSUE: WON (1) there is trademark infringement [MC
claimed that (1) LCBMBI use the words "Big Mak" as
trademark for their products and not merely as their
business or corporate name, and (2) as a trademark,
LCBMBI’s' "Big Mak" is undeniably and unquestionably
similar to MC’s "Big Mac" trademark based on the
dominancy test and the idem sonans test, resulting
inexorably in confusion on the part of the consuming
public.] and (2) there is unfair competition. [BOTH YES.]
HELD: TRADEMARK INFRINGEMENT [YES.]: Section
22 of R.A. No. 166, as amended, defines trademark
infringement as follows: Infringement, what constitutes. —
Any person who [1] shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in
connection with the sale, offering for sale, or advertising of
any goods, business or services on or in connection with
which such use is likely to cause confusion or mistake or
to deceive purchasers or others as to the source or origin
of such goods or services, or identity of such business; or
[2] reproduce, counterfeit, copy, or colorably imitate any
such mark or trade-name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such
goods, business or services, shall be liable to a civil action
by the registrant for any or all of the remedies herein
provided. To establish trademark infringement, the
following elements must be shown: (1) the validity of
plaintiff's mark; (2) the plaintiff's ownership of the mark;
and (3) the use of the mark or its colorable imitation by the
alleged infringer results in "likelihood of confusion." Of
these, it is the element of likelihood of confusion that is the
gravamen of trademark infringement.
On the validity of the "Big Mac"mark and MC’s
ownership of such mark: A mark is valid if it is
"distinctive" and thus not barred from registration under
Section 4 of R.A. No. 166. However, once registered, not
only the mark's validity but also the registrant's ownership
of the mark is prima facie presumed.1
1
Section 20, R.A. No. 166. Certificate of registration prima facie
evidence of validity. — A certificate of registration of a mark or trade-
name shall be prima facie evidence of the validity of the registration, the
registrant's ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods, business or
services specified in the certificate, subject to any conditions and
limitations stated therein.This has been superseded by Section 138, R.A.
No. 8293. Neither R.A. No.166 nor R.A. No. 8293 provides when the
presumption of validity and ownership becomes indubitable. Under the
Lanham Act, as amended, such takes place once the trademark has
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
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LCBMBI: Of the two words in the "Big Mac" mark, it is only the
word "Mac" that is valid because the word "Big" is generic and
descriptive, which is proscribed and, thus, "incapable of
exclusive appropriation." [NO MERIT.]
SC: The "Big Mac" mark, which should be treated in its entirety
and not dissected word for word, is neither generic nor
descriptive. Generic marks are commonly used as the name or
description of a kind of goods. Descriptive marks, on the other
hand, convey the characteristics, functions, qualities or
ingredients of a product to one who has never seen it or does
not know it exists. "Big Mac" falls under the class of fanciful or
arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly
distinctive and thus valid. MC has duly established its
exclusive ownership of the "Big Mac" mark. Although Topacio
and IGC registered the "Big Mac" mark ahead of MC, Topacio
had already assigned his rights to MC. IGC, on the other hand,
registered its trademark only in the Supplemental Register. A
mark which is not registered in the Principal Register, and thus
not distinctive, has no real protection. Registration in the
Supplemental Register is not even a prima facie evidence of
the validity of the registrant's exclusive right to use the mark on
the goods specified in the certificate.
On types of confusion: Section 22 covers two types of
confusion arising from the use of similar or colorable imitation
marks, namely, confusion of goods (product confusion) and
confusion of business (source or origin confusion). In Sterling
Products International, Incorporated v. Farbenfabriken Bayer
Aktiengesellschaft, et al.:
x x x confusion of goods, "in which event the ordinarily
prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other."
x x x confusion of business, "where, though the goods
of the parties are different, the defendant's product is
such as might reasonably be assumed to originate with
the plaintiff, and the public would then be deceived
either into that belief or into the belief that there is
some connection between the plaintiff and defendant
which, in fact, does not exist."
While there is confusion of goods when the products
are competing, confusion of business exists when the products
are non-competing but related enough to produce confusion of
affiliation.53
On whether confusion of goods and confusion of business
are applicable: LCBMBI used the "Big Mak" mark on the same
goods, i.e. hamburger sandwiches, that MC’s "Big Mac" mark is
used, hence, trademark infringement through confusion of
become "incontestable" i.e. after the mark owner files affidavits stating that the
mark is registered and has been in continuous use for five consecutive years;
that there is no pending proceeding; and that there has been no adverse
decision concerning the registrant's ownership or right to registration. Both R.A.
No 166 (Section 12) and R.A. No. 8293 (Section 145) require the filing of the
affidavit attesting to the continuous use of the mark for five years and, under
Section 145, failure to file such affidavit will result in the removal of the mark
from the Register.
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goods is a proper issue herein. LCBMBI admitted that
their business includes selling hamburger sandwiches, the
same food product that MC sells using the "Big Mac"
mark, thus, trademark infringement through confusion of
business is also a proper issue herein.
LCBMBI: (1) Their "Big Mak" hamburgers cater mainly to
the low-income group, while MC’s "Big Mac" hamburgers
cater to the middle and upper income groups. (2) MC uses
the "Big Mac" mark only on its double-decker hamburgers,
while LCBMBI use the "Big Mak" mark on hamburgers and
other products, i.e. siopao, noodles and pizza. (3) MC
sells their Big Mac double-deckers in a styrofoam box with
the "McDonald's" logo and trademark in red, block letters
at a price more expensive than the hamburgers of
LCBMBI, while the latter sells their Big Mak hamburgers in
plastic wrappers and plastic bags. (4) MC’s restaurants
are air-conditioned buildings with drive-thru service, while
LCBMBI uses mobile vans. [NO MERIT.]
SC: (1) The likelihood of confusion of business remains,
since the low-income group might be led to believe that
the "Big Mak" hamburgers are the low-end hamburgers
marketed by MC. MC has the exclusive right to use the
"Big Mac" mark. LCBMBI would benefit by associating
their low-end hamburgers, through the use of the "Big
Mak" mark, with MC’s high-end "Big Mac" hamburgers,
leading to likelihood of confusion in the identity of
business. (2, 3, and 4) These and other factors cannot
negate the undisputed fact that LCBMBI use their "Big
Mak" mark on hamburgers, the same food product that
MC sells with the use of their registered mark "Big Mac."
Whether a hamburger is single, double or triple-decker,
and whether wrapped in plastic or styrofoam, it remains
the same hamburger food product. Even LCBMBI’s use of
the "Big Mak" mark on non-hamburger food products
cannot excuse their infringement of MC’s registered mark,
otherwise registered marks will lose their protection under
the law. The registered trademark owner may use his
mark on the same or similar products, in different
segments of the market, and at different price levels
depending on variations of the products for specific
segments of the market. The registered trademark owner
enjoys protection in product and market areas that are the
“normal potential expansion of his business.”
On whether LCBMBI’s use of the "Big Mak" mark
results in likelihood of confusion: In determining
likelihood of confusion, jurisprudence has developed two
tests, the dominancy test and the holistic test. The
dominancy test focuses on the similarity of the prevalent
features of the competing trademarks that might cause
confusion, while the holistic test requires the court to
consider the entirety of the marks as applied to the
products, including the labels and packaging, in
determining confusing similarity.
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
LCBMBI: The CA’s application of the holistic test is correct and
in accord with prevailing jurisprudence. [NO MERIT.]
SC: The dominancy test considers the dominant features in the
competing marks in determining whether they are confusingly
similar. Under the dominancy test, courts give greater weight to
the similarity of the appearance of the product arising from the
adoption of the dominant features of the registered mark,
disregarding minor differences. Courts will consider more the
aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales
outlets and market segments. In Co Tiong Sa v. Director of
Patents:
x x x It has been consistently held that the question of
infringement of a trademark is to be determined by the
test of dominancy. Similarity in size, form and color,
while relevant, is not conclusive. If the competing
trademark contains the main or essential or
dominant features of another, and confusion and
deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is
it necessary that the infringing label should suggest an
effort to imitate. The question at issue in cases of
infringement of trademarks is whether the use of the
marks involved would be likely to cause confusion or
mistakes in the mind of the public or deceive
purchasers.
In Societe Des Produits Nestlé, S.A. v. Court of
Appeals:
The totality or holistic test is contrary to the elementary
postulate of the law on trademarks and unfair
competition that confusing similarity is to be
determined on the basis of visual, aural,
connotative comparisons and overall impressions
engendered by the marks in controversy as they
are encountered in the realities of the marketplace.
LCBMBI’s use of the "Big Mak" mark results in
likelihood of confusion: (1) "Big Mak" sounds exactly the same
as "Big Mac," (2) the first word in "Big Mak" is exactly the same
as the first word in "Big Mac," (3) the first two letters in "Mak"
are the same as the first two letters in "Mac," (4) the last letter
in "Mak" while a "k" sounds the same as "c" when the word
"Mak" is pronounced, and (5) in Filipino, the letter "k" replaces
"c" in spelling. Aurally, the two marks are the same, with the
first word of both marks phonetically the same, and the second
word of both marks also phonetically the same. Visually, the
two marks have both two words and six letters, with the first
word of both marks having the same letters and the second
word having the same first two letters. In spelling, considering
the Filipino language, even the last letters of both marks are
the same. LCBMBI has adopted in "Big Mak" not only the
dominant but also almost all the features of "Big Mac."
Applied to the same food product of hamburgers, the two
marks will likely result in confusion in the public mind. A person
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cannot distinguish "Big Mac" from "Big Mak" by their
sound. When one hears a "Big Mac" or "Big Mak"
hamburger advertisement over the radio, one would not
know whether the "Mac" or "Mak" ends with a "c" or a "k."
MC’s aggressive promotion of the "Big Mac" mark, as
borne by their advertisement expenses, has built goodwill
and reputation for such mark making it one of the easily
recognizable marks in the market today. This increases
the likelihood that consumers will mistakenly associate
MC’s hamburgers and business with those of LCBMBI’s.
LCBMBI’s claim that its "Big Mak" mark was inspired by
the first names of Dy's mother (Maxima) and father
(Kimsoy) is not credible – Dy could have arrived at a more
creative choice for a corporate name by using the names
of his parents, especially since he was allegedly driven by
sentimental reasons. For one, he could have put his
father's name ahead of his mother's, as is usually done in
this patriarchal society, and derived letters from said
names in that order. Or, he could have taken an equal
number of letters from each name, as is the more usual
thing done. Absent proof that LCBMBI’s adoption of the
"Big Mak" mark was due to honest mistake or was
fortuitous, the inescapable conclusion is that LCBMBI
adopted the "Big Mak" mark to "ride on the coattails" of the
more established "Big Mac" mark. This saves LCBMBI
much of the expense in advertising to create market
recognition of their mark and hamburgers.
UNFAIR COMPETITION [YES.]: Section 29, R.A. No. 166
defines unfair competition, thus: x x x Any person who will
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. The following shall be
deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give
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 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 like purpose;
(b) Any person who by any artifice, or device, or
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
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
(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.
The essential elements of an action for unfair
competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the public
and defraud a competitor. The confusing similarity may or may
not result from similarity in the marks, but may result from other
external factors in the packaging or presentation of the goods.
The intent to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered for sale to
the public. Actual fraudulent intent need not be shown. Unfair
competition is broader than trademark infringement and
includes passing off goods with or without trademark
infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair
competition when there is not merely likelihood of confusion,
but also actual or probable deception on the public because of
the general appearance of the goods. There can be trademark
infringement without unfair competition as when the infringer
discloses on the labels containing the mark that he
manufactures the goods, thus preventing the public from being
deceived that the goods originate from the trademark owner.
MC: (1) LCBMBI fraudulently passed off their hamburgers as
"Big Mac" hamburgers. (2) LCBMBI’s fraudulent intent can be
inferred from the similarity of the marks in question.
[MERITORIOUS.]
LCBMBI: (1) The mark "Big Mac" is used by MC to identify its
double decker hamburger sandwich. (2) MC’s packaging
material is a styrofoam box with the McDonald's logo and
trademark and “Big Mac” mark in red block capital letters, while
LCBMBI’s packaging material is a plastic wrapper with the “Big
Mak” script print in orange with only the letters "B" and "M"
being capitalized. (3) MC’s logo and mascot are the umbrella
"M" and "Ronald McDonald's", respectively, while LCBMBI’s
mascot is a chubby boy called "Macky", displayed or printed
between the words "Big" and "Mak." [NO MERIT.]
SC: 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. The dissimilarities in the packaging are minor
compared to the stark similarities in the words that give
LCBMBI’s "Big Mak" hamburgers the general appearance of
MC’s "Big Mac" hamburgers. Section 29(a) expressly provides
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that the similarity in the general appearance of the goods
may be in the "devices or words" used on the wrappings.
LCBMBI has applied on their plastic wrappers and bags
almost the same words that MC uses on their styrofoam
box. What attracts the attention of the buying public are
the words "Big Mak" which are almost the same, aurally
and visually, as the words "Big Mac." The dissimilarities in
the material and other devices are insignificant compared
to the glaring similarity in the words used in the wrappings.
Section 29(a) also provides that the defendant gives "his
goods the general appearance of goods of another
manufacturer." LCBMBI’s goods are hamburgers which
are also the goods of MC. If LCBMBI sold egg sandwiches
only instead of hamburger sandwiches, their use of the
"Big Mak" mark would not give their goods the general
appearance of MC’s "Big Mac" hamburgers. In such case,
there is only trademark infringement but no unfair
competition. However, since LCBMBI chose to apply the
"Big Mak" mark on hamburgers, just like MC’s use of the
"Big Mac" mark on hamburgers, the former has obviously
clothed their goods with the general appearance of MC’s
goods. Moreover, there is no notice to the public that the
"Big Mak" hamburgers are products of "L.C. Big Mak
Burger, Inc." LCBMBI introduced during the trial plastic
wrappers and bags with the words "L.C. Big Mak Burger,
Inc." to inform the public of the name of the seller of the
hamburgers. However, MC introduced during the
injunctive hearings plastic wrappers and bags with the
"Big Mak" mark without the name "L.C. Big Mak Burger,
Inc." LCBMBI’s belated presentation of plastic wrappers
and bags bearing the name of "L.C. Big Mak Burger, Inc."
as the seller of the hamburgers is an after-thought
designed to exculpate them from their unfair business
conduct. Thus, there is actually no notice to the public that
the "Big Mak" hamburgers are products of "L.C. Big Mak
Burger, Inc." and not those of MC who have the exclusive
right to the "Big Mac" mark. This clearly shows LCBMBI’s
intent to deceive the public. Had LCBMBI placed a notice
on their plastic wrappers and bags that the hamburgers
are sold by "L.C. Big Mak Burger, Inc.", then they could
validly claim that they did not intend to deceive the public.
In such case, there is only trademark infringement but no
unfair competition. LCBMBI, however, did not give such
notice.
REMEDIES: Under Section 232, in relation to Section 29,
2
Actions, and damages and injunction for infringement. — Any person
entitled to the exclusive use of a registered mark or trade-name may
recover damages in a civil action from any person who infringes his
rights, and the measure of the damages suffered shall be either the
reasonable profit which the complaining party would have made, had the
defendant not infringed his said rights, or the profit which the defendant
actually made out of the infringement, or in the event such measure of
damages cannot be readily ascertained with reasonable certainty, then
the court may award as damages a reasonable percentage based upon
the amount of gross sales of the defendant of the value of the services in
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
MON 7:30- 9:30
R.A. No. 166, a plaintiff who successfully maintains trademark
infringement and unfair competition claims is entitled to
injunctive and monetary reliefs. The injunctive writ is
indispensable to prevent further acts of infringement. Monetary
reliefs include actual damages, exemplary damages, attorney’s
fees and litigation expenses.
G.R. No. 103543 July 5, 1993
ASIA BREWERY, INC., petitioner,
vs.
THE HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION, respondents.
FACTS: San Miguel Corporation (SMC) filed a complaint
against Asia Brewery Inc. (ABI) for infringement of trademark
and unfair competition on account of the latter's BEER PALE
PILSEN or BEER NA BEER product which has been competing
with SMC's SAN MIGUEL PALE PILSEN for a share of the
local beer market.
A decision was rendered by the trial Court dismissing
SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC. SMC
appealed to the CA which reversed the ruling of the trial court
and ordered Asia Brewery Inc. to recall all its products bearing
the mark Beer Pale Pilsen from its retailers and deliver these
as well as all labels, signs, prints, packages, wrappers,
receptacles and advertisements bearing the infringing mark
and all plates, molds, materials and other means of making the
same to the CA. Hence, this petition.
ISSUE: Does ABI's BEER PALE PILSEN label infringe upon
SMC's SAN MIGUEL PALE PILSEN? (NO.)
HELD: The fact that the words pale pilsen are part of ABI's
trademark does not constitute an infringement of SMC's
trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen"
are generic words descriptive of the color ("pale"), of a
type of beer ("pilsen"), which is a light bohemian beer with
a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages.
(Webster's Third New International Dictionary of the English
Language, Unabridged. Edited by Philip Babcock Gove.
Springfield, Mass.: G & C Merriam Co., [c] 1976, page 1716.)
"Pilsen" is a "primarily geographically descriptive word," (Sec.
4, subpar. [e] Republic Act No. 166, as inserted by Sec. 2 of
R.A. No. 638) hence, non-registerable and not appropriable by
any beer manufacturer. The Trademark Law provides:
Sec. 4. . . .. The owner of trade-mark, trade-name or
service-mark used to distinguish his goods, business
connection with which the mark or trade-name was used in the infringement of
the rights of the complaining party. In cases where actual intent to mislead the
public or to defraud the complaining party shall be shown, in the discretion of
the court, the damages may be doubled.
The complaining party, upon proper showing, may also be granted injunction.
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or services from the goods, business or services
of others shall have the right to register the same
[on the principal register], unless it:
xxx xxx xxx
(e) Consists of a mark or trade-name which, when
applied to or used in connection with the goods,
business or services of the applicant is merely
descriptive or deceptively misdescriptive of them,
or when applied to or used in connection with the
goods, business or services of the applicant
isprimarily geographically descriptive or
deceptively misdescriptive of them, or is primarily
merely a surname." (Emphasis supplied.)
The words "pale pilsen" may not be
appropriated by SMC for its exclusive use even if they
are part of its registered trademark: SAN MIGUEL
PALE PILSEN, any more than such descriptive words
as "evaporated milk," "tomato ketchup," "cheddar
cheese," "corn flakes" and "cooking oil" may be
appropriated by any single manufacturer of these food
products, for no other reason than that he was the
first to use them in his registered trademark. In Masso
Hermanos, S.A. vs. Director of Patents, 94 Phil. 136, 139
(1953), it was held that a dealer in shoes cannot register
"Leather Shoes" as his trademark because that would be
merely descriptive and it would be unjust to deprive other
dealers in leather shoes of the right to use the same words
with reference to their merchandise. No one may
appropriate generic or descriptive words. They belong to
the public domain (Ong Ai Gui vs. Director of Patents, 96
Phil. 673, 676 [1955]):
A word or a combination of words which is merely
descriptive of an article of trade, or of its
composition, characteristics, or qualities, cannot
be appropriated and protected as a trademark to
the exclusion of its use by others. . . . inasmuch
as all persons have an equal right to produce and
vend similar articles, they also have the right to
describe them properly and to use any
appropriate language or words for that purpose,
and no person can appropriate to himself
exclusively any word or expression, properly
descriptive of the article, its qualities, ingredients
or characteristics, and thus limit other persons in
the use of language appropriate to the description
of their manufactures, the right to the use of such
language being common to all. This rule excluding
descriptive terms has also been held to apply to
trade-names. As to whether words employed fall
within this prohibition, it is said that the true test is
not whether they are exhaustively descriptive of
the article designated, but whether in themselves,
and as they are commonly used by those who
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
understand their meaning, they are reasonably
indicative and descriptive of the thing intended. If they
are thus descriptive, and not arbitrary, they cannot be
appropriated from general use and become the
exclusive property of anyone. (52 Am. Jur. 542-543.)
. . . . Others may use the same or similar descriptive
word in connection with their own wares, provided they
take proper steps to prevent the public being deceived.
(Richmond Remedies Co. vs. Dr. Miles Medical Co., 16
E. [2d] 598.)
. . . . A descriptive word may be admittedly distinctive,
especially if the user is the first creator of the article. It
will, however, be denied protection, not because it
lacks distinctiveness, but rather because others are
equally entitled to its use. (2 Callman. Unfair
Competition and Trademarks, pp. 869-870.)"
(Emphasis supplied.)
The circumstance that the manufacturer of BEER
PALE PILSEN, Asia Brewery Incorporated, has printed its
name all over the bottle of its beer product: on the label, on the
back of the bottle, as well as on the bottle cap, disproves
SMC's charge that ABI dishonestly and fraudulently intends to
palm off its BEER PALE PILSEN as SMC's product. In view of
the visible differences between the two products, the Court
believes it is quite unlikely that a customer of average
intelligence would mistake a bottle of BEER PALE PILSEN for
SAN MIGUEL PALE PILSEN.
The fact that BEER PALE PILSEN like SAN MIGUEL
PALE PILSEN is bottled in amber-colored steinie bottles of 320
ml. capacity and is also advertised in print, broadcast, and
television media, does not necessarily constitute unfair
competition.
ADDITIONAL:
TRADEMARK INFRINGEMENT
Infringement of trademark is a form of unfair
competition (Clarke vs. Manila Candy Co., 36 Phil. 100, 106).
Sec. 22 of Republic Act No. 166, otherwise known as the
Trademark Law, defines what constitutes infringement:
Sec. 22. Infringement, what constitutes. — Any person
who shall use, without the consent of the registrant,
any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in
connection with the sale, offering for sale, or
advertising of any goods, business or services on or in
connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or
services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark or
trade-name and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements
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intended to be used upon or in connection with
such goods, business or services, shall be liable
to a civil action by the registrant for any or all of
the remedies herein provided. (Emphasis
supplied.)
This definition implies that only registered
trade marks, trade names and service marks are
protected against infringement or unauthorized use by
another or others. The use of someone else's
registered trademark, trade name or service mark is
unauthorized, hence, actionable, if it is done "without
the consent of the registrant." (Ibid.)
TEST OF DOMINANCY
Infringement is determined by the "test of
dominancy" rather than by differences or variations in the
details of one trademark and of another. The rule was
formulated in Co Tiong Sa vs. Director of Patents, 95 Phil.
1, 4 (1954); reiterated in Lim Hoa vs. Director of Patents,
100 Phil. 214, 216-217 (1956), thus:
It has been consistently held that the question of
infringement of a trademark is to be determined
by the test of dominancy. Similarity in size, form
and color, while relevant, is not conclusive. If the
competing trademark contains the main or
essential or dominant features of another, and
confusion and deception is likely to result,
infringement takes place. Duplication or imitation
is not necessary; nor it is necessary that the
infringing label should suggest an effort to imitate.
[C. Neilman Brewing Co. vs. Independent Brewing
Co., 191 F., 489, 495, citing Eagle White Lead
Co., vs. Pflugh (CC) 180 Fed. 579]. The question
at issue in cases of infringement of trademarks is
whether the use of the marks involved would be
likely to cause confusion or mistakes in the mind
of the public or deceive purchasers. (Auburn
Rubber Corporation vs. Honover Rubber Co., 107
F. 2d 588; . . . .)
What are the dominant features of the competing
trademarks before us?
There is hardly any dispute that the dominant
feature of SMC's trademark is the name of the product:
SAN MIGUEL PALE PILSEN, written in white Gothic
letters with elaborate serifs at the beginning and end of the
letters "S" and "M" on an amber background across the
upper portion of the rectangular design.
On the other hand, the dominant feature of ABI's
trademark is the name: BEER PALE PILSEN, with the
word "Beer" written in large amber letters, larger than any
of the letters found in the SMC label.
The trial court perceptively observed that the word
"BEER" does not appear in SMC's trademark, just as the
words "SAN MIGUEL" do not appear in ABI's trademark.
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
Hence, there is absolutely no similarity in the dominant features
of both trademarks.
Neither in sound, spelling or appearance can BEER
PALE PILSEN be said to be confusingly similar to SAN
MIGUEL PALE PILSEN. No one who purchases BEER PALE
PILSEN can possibly be deceived that it is SAN MIGUEL
PALE PILSEN. No evidence whatsoever was presented by
SMC proving otherwise.
UNFAIR COMPETITION
The fact that BEER PALE PILSEN like SAN MIGUEL
PALE PILSEN is bottled in amber-colored steinie bottles of 320
ml. capacity and is also advertised in print, broadcast, and
television media, does not necessarily constitute unfair
competition.
Unfair competition is the employment of deception or
any other means contrary to good faith by which a person shall
pass off the goods manufactured by him or in which he deals,
or his business, or services, for those of another who has
already established goodwill for his similar goods, business or
services, or any acts calculated to produce the same result.
(Sec. 29, Republic Act No. 166, as amended.) The law further
enumerates the more common ways of committing unfair
competition, thus:
Sec. 29. . . .
In particular, and without in any way limiting the scope
of unfair competition, the following shall be deemed
guilty of unfair competition:
(a) Any person, who in selling his goods shall give
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 like
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 services 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.
The main thrust of SMC's complaint if not infringement
of its trademark, but unfair competition arising form the
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allegedly "confusing similarity" in the general appearance
or trade dress of ABI's BEER PALE PILSEN beside SMC's
SAN MIGUEL PALE PILSEN (p. 209, Rollo)
SMC claims that the "trade dress" of BEER PALE
PILSEN is "confusingly similar" to its SAN MIGUEL PALE
PILSEN because both are bottled in 320 ml. steinie type,
amber-colored bottles with white rectangular labels.
However, when as in this case, the names of
the competing products are clearly different and their
respective sources are prominently printed on the
label and on other parts of the bottle, mere similarity
in the shape and size of the container and label, does
not constitute unfair competition. The steinie bottle is a
standard bottle for beer and is universally used. SMC did
not invent it nor patent it.
Petitioner ABI has neither infringed SMC's
trademark nor committed unfair competition with the
latter's SAN MIGUEL PALE PILSEN product. While its
BEER PALE PILSEN admittedly competes with the
latter in the open market, that competition is neither
unfair nor fraudulent. Hence, we must deny SMC's
prayer to suppress it.
G.R. No. L-78325 January 25, 1990
DEL MONTE CORPORATION and PHILIPPINE
PACKING CORPORATION, petitioners,
vs.
COURT OF APPEALS and SUNSHINE SAUCE
MANUFACTURING INDUSTRIES, respondents.
FACTS: Del Monte Corporation is an entity doing business
in the United States and not registered in the Philippines.
In order to do business here, it authorized Philippine
Packing Corporation (PPC) to manufacture, distribute and
sell in the Philippines various agricultural products,
including catsup, under the Del Monte trademark and logo.
It further authorized PPC to register before the Patent
Office its Del Monte catsup bottle configuration.
Respondent Sunshine Sause Manufacturing
Industries (SSMI) on the other hand, was a registered
entity in the Philippines engaged in the manufacture,
packing, distribution and sale of various kinds of sauce,
identified by the logo Sunshine Fruit Catsup. This logo
was registered in the Supplemental Register on
September 20, 1983. The product itself was contained in
various kinds of bottles, including the Del Monte bottle,
which the private respondent bought from the junk shops
for recycling.
Having received reports of such unauthorized
usages of Del Monte catsup bottles for its own products,
PPC warned SSMI to desist from using the same. Based
on the claim by PPC of its continued use, it filed a case
against SSMI for trademark infringement. SSMI on the
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
other hand claimed that it had long ceased from using the
same, and its own trademark, was substantially different from
the Del Monte logo and would not confuse the buying public to
the detriment of the petitioners.
The Trial Court held that no infringement was
committed, because there were substantial differences
between the logos or trademarks of the parties. Also, defendant
became the owner of the said bottles upon its purchase thereof
from the junk yards. Furthermore, the complainants had failed
to establish the defendant's malice or bad faith, which was an
essential element of infringement of trademark or unfair
competition. The CA affirmed the decision of the Trial Court,
and hence, this present appeal.
ISSUE: (1) What are the differences between trademark
infringement and unfair competition? (2) Whether or not SSMI
infringed PPC’s trademark.
HELD: (1) The differences are as follows:
(1) Infringement of trademark is the unauthorized use
of a trademark, whereas unfair competition is the passing off of
one's goods as those of another.
(2) In infringement of trademark fraudulent intent is
unnecessary whereas in unfair competition fraudulent intent is
essential.
(3) In infringement of trademark the prior registration of
the trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary.
In the challenged decision, the respondent court cited the
following test laid down by this Court in a number of cases:
In determining whether two trademarks are confusingly
similar, the two marks in their entirety as they appear in the
respective labels must be considered in relation to the goods to
which they are attached; the discerning eye of the observer
must focus not only on the predorninant words but also on the
other features appearing on both labels.
And, in applying the same, Trial Court held that there
was no colorable imitation of the petitioners' trademark and
logo by the private respondent.
THERE IS A CASE OF INFRINGMENT
It has been correctly held that side-by-side comparison
is not the final test of similarity. Such comparison requires a
careful scrutiny to determine in what points the labels of the
products differ, as was done by the trial judge. The ordinary
buyer does not usually make such scrutiny nor does he usually
have the time to do so. The average shopper is usually in a
hurry and does not inspect every product on the shelf as if he
were browsing in a library. Where the housewife has to return
home as soon as possible to her baby or the working woman
has to make quick purchases during her off hours, she is apt to
be confused by similar labels even if they do have minute
differences. The male shopper is worse as he usually does not
bother about such distinctions.
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The question is not whether the two articles are
distinguishable by their label when set side by side but
whether the general confusion made by the article upon
the eye of the casual purchaser who is unsuspicious and
off his guard, is such as to likely result in his confounding it
with the original. 11 As observed in several cases, the
general impression of the ordinary purchaser, buying
under the normally prevalent conditions in trade and giving
the attention such purchasers usually give in buying that
class of goods is the touchstone.
It has been held that in making purchases, the
consumer must depend upon his recollection of the
appearance of the product which he intends to purchase.
13
The buyer having in mind the mark/label of the
respondent must rely upon his memory of the petitioner's
mark. 14 Unlike the judge who has ample time to minutely
examine the labels in question in the comfort of his sala,
the ordinary shopper does not enjoy the same opportunity.
A number of courts have held that to determine
whether a trademark has been infringed, we must
consider the mark as a whole and not as dissected. If the
buyer is deceived, it is attributable to the marks as a
totality, not usually to any part of it. 15 The court therefore
should be guided by its first impression, 16 for a buyer acts
quickly and is governed by a casual glance, the value of
which may be dissipated as soon as the court assumes to
analyze carefully the respective features of the mark. 17
It has also been held that it is not the function of
the court in cases of infringement and unfair competition to
educate purchasers but rather to take their carelessness
for granted, and to be ever conscious of the fact that
marks need not be identical. A confusing similarity will
justify the intervention of equity. 18 The judge must also be
aware of the fact that usually a defendant in cases of
infringement does not normally copy but makes only
colorable changes. 19 Well has it been said that the most
successful form of copying is to employ enough points of
similarity to confuse the public with enough points of
difference to confuse the courts. 20
THERE IS A COLORABLE IMITATION.
At that, even if the labels were analyzed together
it is not difficult to see that the Sunshine label is a
colorable imitation of the Del Monte trademark. The
predominant colors used in the Del Monte label are green
and red-orange, the same with Sunshine. The word
"catsup" in both bottles is printed in white and the style of
the print/letter is the same. Although the logo of Sunshine
is not a tomato, the figure nevertheless approximates that
of a tomato.
As previously stated, the person who infringes a
trade mark does not normally copy out but only makes
colorable changes, employing enough points of similarity
to confuse the public with enough points of differences to
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
confuse the courts. What is undeniable is the fact that when a
manufacturer prepares to package his product, he has before
him a boundless choice of words, phrases, colors and symbols
sufficient to distinguish his product from the others. When as in
this case, Sunshine chose, without a reasonable explanation,
to use the same colors and letters as those used by Del Monte
though the field of its selection was so broad, the inevitable
conclusion is that it was done deliberately to deceive.
RATIO FOR THE RULING:
It has been aptly observed that the ultimate ratio in
cases of grave doubt is the rule that as between a newcomer
who by the confusion has nothing to lose and everything to
gain and one who by honest dealing has already achieved
favor with the public, any doubt should be resolved against the
newcomer inasmuch as the field from which he can select a
desirable trademark to indicate the origin of his product is
obviously a large one.
SSMI NOT GUILTY OF INFRINGEMENT AS TO ITS USE OF
DEL MONTE’S CATSUP BOTTLE
The reason is that the configuration of the said bottle
was merely registered in the Supplemental Register.
It can be inferred from the foregoing that although Del Monte
has actual use of the bottle's configuration, the petitioners
cannot claim exclusive use thereof because it has not been
registered in the Principal Register. However, we find that
Sunshine, despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to
be Refilled" was embossed on the bottle, still opted to use the
petitioners' bottle to market a product which Philpack also
produces. This clearly shows the private respondent's bad faith
and its intention to capitalize on the latter's reputation and
goodwill and pass off its own product as that of Del Monte.
Anent the assumption that the Bureau of Patent had
considered other existing patents, it is reiterated that since
registration was only in the Supplemental Register, this did not
vest the registrant with the exclusive right to use the label nor
did it give rise to the presumption of the validity of the
registration.
SUNSHINE FRUIT CATSUP LOGO INFRINGED DEL MONTE
CATSUP LOGO.
As Sunshine's label is an infringement of the Del
Monte's trademark, law and equity call for the cancellation of
the private respondent's registration and withdrawal of all its
products bearing the questioned label from the market. With
regard to the use of Del Monte's bottle, the same constitutes
unfair competition; hence, the respondent should be
permanently enjoined from the use of such bottles.
G.R. No. L-29971 August 31, 1982
ESSO STANDARD EASTERN, INC., petitioner,
vs.
THE HONORABLE COURT OF APPEALS ** and UNITED
CIGARETTE CORPORATION, respondents.
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FACTS: Petitioner, Esso Standard Eastern, Inc. is an
international company engaged in the manufacturing of
fossil fuels, oils, lubricants and its by-products.
Respondent, United Cigarette Corp. on the other
hand is a domestic corporation engaged in the
manufacturing of cigarettes. It uses as its trademark the
mark “ESSO”, which is the same as the corporate name of
petitioner.
Petitioner filed a trade infringement case against
respondent. The CFI ruled in favor of petitioner.
Respondent won at the CA on appeal. The case was then
raised to the SC.
PETITIONER’S ARGUMENT: Petitioner alleged that it had
been for many years engaged in the sale of petroleum
products and its trademark ESSO had acquired a
considerable goodwill to such an extent that the buying
public had always taken the trademark ESSO as
equivalent to high quality petroleum products. Petitioner
asserted that the continued use by private respondent of
the same trademark ESSO on its cigarettes was being
carried out for the purpose of deceiving the public as to its
quality and origin to the detriment and disadvantage of its
own products.
ISSUE: WON there was an infringement of trademark.
(NO.)
RULING: ACCORDINGLY, the petition is dismissed and
the decision of respondent Court of Appeals is hereby
affirmed.
HELD: It is undisputed that the goods on which petitioner
uses the trademark ESSO, petroleum products, and the
product of respondent, cigarettes, are non-competing. But
as to whether trademark infringement exists depends for
the most part upon whether or not the goods are so
related that the public may be, or is actually, deceived and
misled that they came from the same maker or
manufacturer. For non-competing goods may be those
which, though they are not in actual competition, are so
related to each other that it might reasonably be assumed
that they originate from one manufacturer. Non-competing
goods may also be those which, being entirely unrelated,
could not reasonably be assumed to have a common
source. In the former case of related goods, confusion of
business could arise out of the use of similar marks; in the
latter case of non-related goods, it could not. The vast
majority of courts today follow the modern theory or
concept of "related goods" which the Court has likewise
adopted and uniformly recognized and applied.
Goods are related when they belong to the same
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
MON 7:30- 9:30
class or have the same descriptive properties; when they stations, automotive shops and hardware stores. On the
possess the same physical attributes or essential other hand, the (respondent's) cigarettes are sold in sari-
characteristics with reference to their form, composition, texture sari stores, grocery stores, and other small distributor
or quality. They may also be related because they serve the outlets. (Respondent's) cigarettes are even peddled in the
same purpose or are sold in grocery stores. 11 Thus, biscuits streets while (petitioner's) 'gasul' burners are not. Finally,
were held related to milk because they are both food products. there is a marked distinction between oil and tobacco, as
Soap and perfume, lipstick and nail polish are similarly related well as between petroleum and cigarettes. Evidently, in
because they are common household items nowadays. The kind and nature the products of (respondent) and of
trademark "Ang Tibay" for shoes and slippers was disallowed to (petitioner) are poles apart."
be used for shirts and pants because they belong to the same Respondent court correctly ruled that considering
general class of goods. Soap and pomade although non- the general appearances of each mark as a whole, the
competitive, were held to be similar or to belong to the same possibility of any confusion is unlikely. A comparison of the
class, since both are toilet articles. But no confusion or labels of the samples of the goods submitted by the
deception can possibly result or arise when the name parties shows a great many differences on the trademarks
"Wellington" which is the trademark for shirts, pants, drawers used. As pointed out by respondent court in its appealed
and other articles of wear for men, women and children is used decision, "(A) witness for the plaintiff, Mr. Buhay, admitted
as a name of a department store. that the color of the "ESSO" used by the plaintiff for the
In the situation before us, the goods are obviously oval design where the blue word ESSO is contained is the
different from each other with "absolutely no iota of similitude" distinct and unique kind of blue. In his answer to the trial
as stressed in respondent court's judgment. They are so court's question, Mr. Buhay informed the court that the
foreign to each other as to make it unlikely that purchasers plaintiff never used its trademark on any product where
would think that petitioner is the manufacturer of respondent's the combination of colors is similar to the label of the Esso
goods. The mere fact that one person has adopted and used a cigarettes," and "Another witness for the plaintiff, Mr.
trademark on his goods does not prevent the adoption and use Tengco, testified that generally, the plaintiff's trademark
of the same trademark by others on unrelated articles of a comes all in either red, white, blue or any combination of
different kind. the three colors. It is to be pointed out that not even a
Petitioner uses the trademark ESSO and holds shade of these colors appears on the trademark of the
certificate of registration of the trademark for petroleum appellant's cigarette. The only color that the appellant
products, including aviation gasoline, grease, cigarette lighter uses in its trademark is green."
fluid and other various products such as plastics, chemicals,
synthetics, gasoline solvents, kerosene, automotive and
industrial fuel, bunker fuel, lubricating oil, fertilizers, gas,
alcohol, insecticides and the ESSO Gasul" burner, while
respondent's business is solely for the manufacture and sale of
the unrelated product of cigarettes. The public knows too well
that petitioner deals solely with petroleum products that there is
no possibility that cigarettes with ESSO brand will be
associated with whatever good name petitioner's ESSO
trademark may have generated. Although petitioner's products
are numerous, they are of the same class or line of
merchandise which are non-competing with respondent's
product of cigarettes, which as pointed out in the appealed
judgment is beyond petitioner's "zone of potential or natural
and logical expansion". When a trademark is used by a party
for a product in which the other party does not deal, the use of
the same trademark on the latter's product cannot be validly
objected to.
Another factor that shows that the goods involved are
non-competitive and non-related is the appellate court's finding
that they flow through different channels of trade, thus: "The
products of each party move along and are disposed through
different channels of distribution. The (petitioner's) products are
distributed principally through gasoline service and lubrication

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G.R. No. 108946 January 28, 1999

FRANCISCO G. JOAQUIN, JR., and BJ
PRODUCTIONS, INC., petitioners,
vs.
HONORABLE FRANKLIN DRILON, GABRIEL ZOSA,
WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY
FRANCISCO, respondents.

FACTS: BJ Productions, Inc. is the holder/grantee of the

certificate of copyright of Rhoda and Me, a dating game
show.
BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the show's format and
style of presentation.
Francisco Joaquin, Jr., President of BJPI, saw on RPN
Channel 9 an episode of It's a Date, produced by IXL
Productions, Inc. Joaquin, Jr. wrote a letter to Gabriel M.
Zosa, President and General manager of IXLPI, informing
Zosa that BJPI had a copyright to Rhoda and Me and
demanding that IXLPI discontinue airing It's a Date.
Zosa, in a letter, apologized to Joaquin, Jr. and requested
a meeting to discuss a possible settlement. IXLPI,
however, continued airing It's a Date, prompting Joaquin,
Jr. to send a second letter reiterating his demand and
warned that, if IXLPI does not comply, he would endorse
the matter to his attorneys for proper legal action.
Zosa sought to register IXLPI's copyright to It's a Date for
which it was issued by the National Library a certificate of
copyright.
Joaquin, Jr., et. al. filed an information for violation of P.D.
No. 49 against Zosa and certain officers of RPN Channel

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 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
9, namely William Esposo, Felipe Medina, and Casey
Francisco, before the Regional Trial Court. Zosa sought a
review of the resolution of the Assistant City Prosecutor before
the Department of Justice.
Secretary of Justice Franklin M. Drilon reversed the ACP's
findings and directed him to move for the dismissal of the case
against Zosa, et. al.
ISSUE: WON there was copyright infringement.
HELD: NO. The format of a show is not copyrightable.
Under Section 172 of R.A. No. 8293 (Intellectual Property Code
of the Philippines), the following are the classes of work entitled
to copyright protection:
Sec. 2. The rights granted by this Decree shall, from
the moment of creation, subsist with respect to any of
the following classes of works:
(A) Books, including composite and cyclopedic works,
manuscripts, directories, and gazetteers:
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations
prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions;
choreographic works and entertainments in dumb
shows, the acting form of which is fixed in writing or
otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture,
engraving, lithography, and other works of art; models
or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of
manufacture, whether or not patentable, and other
works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical
character;
(I) Photographic works and works produced by a
process analogous to photography lantern slides;
(M) Cinematographic works and works produced by a
process analogous to cinematography or any process
for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies,
labels tags, and box wraps;
(P) Dramatizations, translations, adaptations,
abridgements, arrangements and other alterations of
literary, musical or artistic works or of works of the
Philippine government as herein defined, which shall
be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or
of works referred to in Section 9 of this Decree which
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by reason of the selection and arrangement of
their contents constitute intellectual creations, the
same to be protected as such in accordance with
Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic
works.
The format or mechanics of a television show is not
included in the list of protected works. For this
reason, the protection afforded by the law cannot be
extended to cover them.
The enumeration refers to finished works and not to
concepts. The copyright does not extend to an idea,
procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the
form in which it is described, explained, illustrated, or
embodied in such work. Section 175 of R.A. No. 8293
provides:
Sec. 175. Unprotected Subject Matter. —
Notwithstanding the provisions of Sections 172
and 173, no protection shall extend, under this
law, to any idea, procedure, system, method or
operation, concept, principle, discovery or mere
data as such, even if they are expressed,
explained, illustrated or embodied in a work; news
of the day and other miscellaneous facts having
the character of mere items of press information;
or any official text of a legislative, administrative or
legal nature, as well as any official translation
thereof.
BJPI's copyright covers audio-visual recordings of each
episode of Rhoda and Me, the same falling within:
Cinematographic works and works produced by a
process analogous to cinematography or any
process for making audio-visual recordings;
The copyright does not extend to the general concept or
format of its dating game show. There should be the
opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two
dating game shows is insufficient; the presentation of the
master videotape in evidence is indispensable to the
determination of the existence of probable cause.
ADDITIONAL (For recitation purposes):
As to the opinion of the Secretary of Justice:
SECRETARY OF JUSTICE’s OPINION: The essence of
copyright infringement is the copying, in whole or in part,
of copyrightable materials. Apart from the manner in which
it is actually expressed, however, the idea of a dating
game show is a non-copyrightable material. Ideas,
concepts, formats, or schemes in their abstract form
clearly do not fall within the class of works or materials
susceptible of copyright registration.
PETITIONERS’ STAND: The determination of the
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
question whether the format or mechanics of a show is entitled
to copyright protection is for the court, and not the Secretary of
Justice, to make.
SC’s STAND: It is indeed true that the question whether the
format or mechanics of petitioners television show is entitled to
copyright protection is a legal question for the court to make.
This does not, however, preclude the Secretary of Justice from
making a preliminary determination of this question in resolving
whether there is probable cause for filing the case in court.
As to the presentation of the master tape:
RESPONDENTS’ STAND: Petitioners failed to establish the
existence of probable cause due to their failure to present the
copyrighted master videotape of Rhoda and Me. BJPI's
copyright covers only a specific episode of Rhoda and Me.
Formats or concepts of dating game shows are not covered by
copyright protection.
PETITIONERS’ STAND: The parties presented sufficient
evidence which clearly establish "linkage between the copyright
show "Rhoda and Me" and the infringing TV show "It's a Date."
The format of Rhoda and Me is a product of ingenuity and skill
and is thus entitled to copyright protection. The presentation of
a point-by-point comparison of the formats of the two shows
clearly demonstrates the nexus between the shows and hence
establishes the existence of probable cause for copyright
infringement. They did not have to produce the master tape.
ACP’s STAND: The substance of the television productions is
that two matches are made between a male and a female, both
single, and the two couples are treated to a night or two of
dining and/or dancing at the expense of the show. The major
concepts of both shows is the same. Any difference appear
mere variations of the major concepts. That there is an
infringement on the copyright of the show "RHODA AND ME"
both in content and in the execution of the video presentation
are established because respondent's "IT'S A DATE" is
practically an exact copy of complainant's "RHODA AND ME"
because of substantial similarities as follows, to wit:
RHODA AND ME "IT'S A DATE"
Set 1 Set 1
a. Unmarried participant of one a. same
gender (searcher) appears on
one side of a divider, while three
(3) unmarried participants of the
other gender are on the other
side of the divider. This
arrangement is done to ensure
that the searcher does not see
the searchees.
b. Searcher asks a question to b. same
be answered by each of the
searchees. The purpose is to
determine who among the
searchees is the most
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compatible with the searcher.
c. Searcher speculates on the c. same
match to the searchee.
d. Selection is made by the use d. Selection is based on
of compute (sic) methods, or by the
the way questions are answered, answer of the
or similar methods. Searchees.
Set 2 Set 2
Same as above with the genders Same
of the searcher and searchees
interchanged.
SECRETARY OF JUSTICE’s OPINION: A television show
includes more than mere words can describe because it
involves a whole spectrum of visuals and effects, video
and audio, such that no similarity or dissimilarity may be
found by merely describing the general copyright/format of
both dating game shows.
SC’s STAND: Refer to the HELD portion.
G.R. No. 131522 July 19, 1999
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N.
FERNANDO, petitioners,
vs.
FELICIDAD C. ROBLES and GOODWILL TRADING
CO., INC., respondents.
FACTS: Petitioners are authors and copyright owners of
duly issued certificates of copyright registration covering
their published works, produced through their combined
resources and efforts, entitled COLLEGE ENGLISH FOR
TODAY (CET), Books 1 and 2, and WORKBOOK FOR
COLLEGE FRESHMAN ENGLISH, Series 1.
Respondent Felicidad Robles and Goodwill Trading Co.,
Inc. are the author/publisher and distributor/seller of
another published work entitled "DEVELOPING ENGLISH
PROFICIENCY" (DEP), Books 1 and 2 (1985 edition)
which book was covered by copyrights issued to them.
In the course of revising their published works, petitioners
scouted and looked around various bookstores to check
on other textbooks dealing with the same subject matter.
By chance they came upon the book of respondent Robles
and upon perusal of said book they were surprised to see
that the book was strikingly similar to the contents,
scheme of presentation, illustrations and illustrative
examples in their own book, CET.
Petitioners also found that several pages of the
respondent's book are similar, if not all together a copy of
petitioners' book, which is a case of plagiarism and
copyright infringement. Thus, they made demands for
damages against respondents and also demanded that
they cease and desist from further selling and distributing
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
MON 7:30- 9:30
to the general public the infringed copies of respondent Robles' provides for the copy or economic rights of an owner of a
works. copyright as follows:
However, respondents ignored the demands, hence, petitioners Sec. 177. Copy or Economic rights. —
filed a complaint for "Infringement and/or unfair competition Subject to the provisions of chapter VIII,
with damages" against private respondents. copyright or economic rights shall consist
PETITIONER'S CONTENTION: The plagiarism, incorporation of the exclusive right to carry out,
and reproduction of particular portions of the book CET in the authorize or prevent the following acts:
book DEP, without the authority or consent of petitioners, and 177.1 Reproduction of the work or
the misrepresentations of respondent Robles that the same substanlial portion of the work;
was her original work and concept adversely affected and 177.2 Dramatization, translation,
substantially diminished the sale of the petitioners' book and adaptation, abridgement, arrangement or
caused them actual damages by way of unrealized income. other transformation of the work;
RESPONDENT'S CONTENTION: Respondent stressed that 177.3 The first public distribution of the
(1) the book DEP is the product of her independent researches, original and each copy of the work by sale
studies and experiences, and was not a copy of any existing or other forms of transfer of ownership;
valid copyrighted book; (2) DEP followed the scope and 177.4 Rental of the original or a copy of
sequence or syllabus which are common to all English an audiovisual or cinematographic work, a
grammar writers as recommended by the Association of work embodied in a sound recording, a
Philippine Colleges of Arts and Sciences (APCAS), so any computer program, a compilation of data
similarity between the respondents book and that of the and other materials or a musical work in
petitioners was due to the orientation of the authors to both graphic form, irrespective of the
works and standards and syllabus; and (3) the similarities may ownership of the original or the copy
be due to the authors' exercise of the "right to fair use of which is the subject of the rental; (n)
copyrigthed materials, as guides." 177.5 Public display of the original or copy
RTC and CA RULING: Both the trial court and CA dismissed of the work;
the complaint stating that the similarity of the allegedly infringed 177.6 Public performance of the work;
work to the author's or proprietor's copyrighted work does not and
of itself establish copyright infringement, especially if the 177.7 Other communication to the public
similarity results from the fact that both works deal with the of the work 19
same subject or have the same common source, as in this The law also provided for the limitations on copyright,
case. thus:
Sec. 184.1 Limitations on copyright. —
ISSUE: Whether or not, despite the apparent textual, thematic Notwithstanding the provisions of Chapter
and sequential similarity between DEP and CET, respondents V, the following acts shall not constitute
committed no copyright infringement. (RESPONDENTS infringement of copyright:
COMMITTED COPYRIGHT INFRINGEMENT) (a) the recitation or
performance of a work,
HELD: WHEREFORE, the petition is hereby GRANTED. The once it has been lawfully
decision and resolution of the Court of Appeals in CA-G. R. CV made accessible to the
No. 44053 are SET ASIDE. The case is ordered remanded to public, if done privately
the trial court for further proceedings to receive evidence of the and free of charge or if
parties to ascertain the damages caused and sustained by made strictly for a
petitioners and to render decision in accordance with the charitable or religious
evidence submitted to it. institution or society;
[Sec. 10(1), P.D. No. 49]
RATIO: The complaint for copyright infringement was filed at (b) The making of
the time that Presidential Decree No. 49 was in force. At quotations from a
present, all laws dealing with the protection of intellectual published work if they are
property rights have been consolidated and as the law now compatible with fair use
stands, the protection of copyrights is governed by Republic Act and only to the extent
No. 8293. Notwithstanding the change in the law, the same justified for the purpose,
principles are reiterated in the new law under Section 177. It including quotations from
newspaper articles and

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 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
periodicals in the form of press
summaries; Provided, that the
source and the name of the
author, if appearing on the
work are mentioned; (Sec. 11
third par. P.D. 49)
xxx xxx xxx
(e) The inclusion of a work in a publication,
broadcast, or other communication to the
public, sound recording of film, if such inclusion
is made by way of illustration for teaching
purposes and is compatible with fair
use:Provided, That the source and the name
of the author, if appearing in the work is
mentioned; 20
In the above quoted provisions, "work" has reference to literary
and artistic creations and this includes books and other literary,
scholarly and scientific works. 21
A perusal of the records yields several pages of the book DEP
that are similar if not identical with the text of CET.
On page 404 of petitioners' Book 1 of College English for
Today, the authors wrote:
Items in dates and addresses:
He died on Monday, April 15, 1975.
Miss Reyes lives in 214 Taft Avenue,
Manila 22
On page 73 of respondents Book 1 Developing English Today,
they wrote:
He died on Monday, April 25, 1975.
Miss Reyes address is 214 Taft Avenue Manila 23
On Page 250 of CET, there is this example on parallelism or
repetition of sentence structures, thus:
The proposition is peace. Not peace through
the medium of war; not peace to be hunted
through the labyrinth of intricate and endless
negotiations; not peace to arise out of
universal discord, fomented from principle, in
all parts of the empire; not peace to depend on
the juridical determination of perplexing
questions, or the precise marking of the
boundary of a complex government. It is
simple peace; sought in its natural course, and
in its ordinary haunts. It is peace sought in the
spirit of peace, and laid in principles purely
pacific.
— Edmund Burke, "Speech on Criticism." 24
On page 100 of the book DEP 25, also in the topic of parallel
structure and repetition, the same example is foundin toto. The
only difference is that petitioners acknowledged the author
Edmund Burke, and respondents did not.
In several other pages 26 the treatment and manner of
presentation of the topics of DEP are similar if not a rehash of
that contained in CET.
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We believe that respondent Robles' act of lifting from
the book of petitioners substantial portions of
discussions and examples, and her failure to
acknowledge the same in her book is an infringement
of petitioners' copyrights.
When is there a substantial reproduction of a book? It
does not necessarily require that the entire copyrighted
work, or even a large portion of it, be copied. If so much is
taken that the value of the original work is substantially
diminished, there is an infringement of copyright and to an
injurious extent, the work is appropriated. 27
In determining the question of infringement, the amount of
matter copied from the copyrighted work is an important
consideration. To constitute infringement, it is not
necessary that the whole or even a large portion of the
work shall have been copied. If so much is taken that
the value of the original is sensibly diminished, or the
labors of the original author are substantially and to
an injurious extent appropriated by another, that is
sufficient in point of law to constitute piracy. 28
The essence of intellectual piracy should be essayed in
conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a
copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy,
which is a synonymous term in this connection, consists in
the doing by any person, without the consent of the owner
of the copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright.29
The respondents' claim that the copied portions of the
book CET are also found in foreign books and other
grammar books, and that the similarity between her style
and that of petitioners can not be avoided since they come
from the same background and orientation may be true.
However, in this jurisdiction under Sec 184 of Republic Act
8293 it is provided that:
Limitations on Copyright. Notwithstanding
the provisions of Chapter V, the following
shall not constitute infringement of
copyright:
xxx xxx xxx
(c) The making of quotations from a
published work if they are compatible with
fair use and only to the extent justified for
the purpose, including quotations from
newspaper articles and periodicals in the
form of press summaries: Provided, That
the source and the name of the author, if
appearing on the work, are mentioned.
A copy of a piracy is an infringement of the original, and it
is no defense that the pirate, in such cases, did not know
whether or not he was infringing any copyright; he at least
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
knew that what he was copying was not his, and he copied at
his peril. 30
The next question to resolve is to what extent can copying be
injurious to the author of the book being copied. Is it enough
that there are similarities in some sections of the books or large
segments of the books are the same?
In the case at bar, there is no question that petitioners
presented several pages of the books CET and DEP that more
or less had the same contents. It may be correct that the books
being grammar books may contain materials similar as to some
technical contents with other grammar books, such as the
segment about the "Author Card". However, the numerous
pages that the petitioners presented showing similarity in the
style and the manner the books were presented and the
identical examples can not pass as similarities merely because
of technical consideration.
The respondents claim that their similarity in style can be
attributed to the fact that both of them were exposed to the
APCAS syllabus and their respective academic experience,
teaching approach and methodology are almost identical
because they were of the same background.
However, we believe that even if petitioners and respondent
Robles were of the same background in terms of teaching
experience and orientation, it is not an excuse for them to be
identical even in examples contained in their books. The
similarities in examples and material contents are so obviously
present in this case. How can similar/identical examples not be
considered as a mark of copying?
We consider as an indicia of guilt or wrongdoing the act of
respondent Robles of pulling out from Goodwill bookstores the
book DEP upon learning of petitioners' complaint while
pharisaically denying petitioners' demand. It was further noted
that when the book DEP was re-issued as a revised version, all
the pages cited by petitioners to contain portion of their book
College English for Today were eliminated.
In cases of infringement, copying alone is not what is
prohibited. The copying must produce an "injurious
effect". Here, the injury consists in that respondent Robles
lifted from petitioners' book materials that were the result of the
latter's research work and compilation and misrepresented
them as her own. She circulated the book DEP for commercial
use did not acknowledged petitioners as her source.
Hence, there is a clear case of appropriation of
copyrighted work for her benefit that respondent Robles
committed. Petitioners' work as authors is the product of their
long and assiduous research and for another to represent it as
her own is injury enough. In copyrighting books the purpose is
to give protection to the intellectual product of an author. This is
precisely what the law on copyright protected, under Section
184.1 (b). Quotations from a published work if they are
compatible with fair use and only to the extent justified by the
purpose, including quotations from newspaper articles and
periodicals in the form of press summaries are allowed
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provided that the source and the name of the author, if
appearing on the work, are mentioned.
In the case at bar, the least that respondent Robles could
have done was to acknowledge petitioners Habana et.al.
as the source of the portions of DEP. The final product of
an author's toil is her book. To allow another to copy the
book without appropriate acknowledgment is injury
enough.
G.R. No. 148222 August 15, 2003
PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,
vs.
SHOEMART, INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED, Respondents.
FACTS: Pearl and Dean (Phil.), Inc. is a corporation
engaged in the manufacture of advertising display units
referred to as light boxes. These units utilize specially
printed posters sandwiched between plastic sheets and
illuminated with back lights. PD obtained a copyright ever
these illuminated display units. On account of the
advertising trademark “Poster Ads” it obtained a
Trademark Registration.
PD contracted with Shoemart Inc. (SMI) for the lease and
installation of these light boxes. The first agreement was
that the latter shall be installed in SM North Edsa, but
because the latter was still under construction, SMI offered
SM Makati and SM Cubao as alternative. When the
contracts were submitted towards SMI, only the contract of
SM Makati was returned signed. Later on, SMI unilaterally
rescinded its contract with PD as regards the installation
and lease of the light boxes over its SM Makati for an
alleged non-performance of its terms.
Two years later, Metro Industrial Services, the company
formerly contracted by Pearl and Dean to fabricate its
display units, offered to construct light boxes for
Shoemart’s chain of stores. SMI approved the proposal
and ten (10) light boxes were subsequently fabricated by
Metro Industrial for SMI. After its contract with Metro
Industrial was terminated, SMI engaged the services of
EYD Rainbow Advertising Corporation to make the light
boxes. Some 300 units were fabricated in 1991. These
were delivered on a staggered basis and installed at SM
Megamall and SM City.
Upon learning that similar light boxes were also installed in
SM Cubao, and the same products were also being sold
by the respondent in this case, the North Edsa Marketing
Inc. (NEMI) it demanded that the two companies to cease
using the subject light boxes and discontinue the use of
the trademark “poster Ads.” It asked for a 20 million pesos
compensatory damages in effect. SMI suspended the
leasing of the light bulb and NEMI took down the
advertisement “Poster Ads.” However, in their failure to
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
fulfill all the demands, PD brought up a case for copyright,
trademark infringement and unfair competition.
PD contention- it infringed its trademark “Poster Ads” and
violated its copyright over the light bulbs.
SMI defense - it independently developed its poster panels
using commonly known techniques and available technology,
without notice of or reference to Pearl and Dean’s copyright.
SMI noted that the registration of the mark "Poster Ads" was
only for stationeries such as letterheads, envelopes, and the
like. Besides, according to SMI, the word "Poster Ads" is a
generic term which cannot be appropriated as a trademark,
and, as such, registration of such mark is invalid. It alleged that
Pearl and Dean had no cause of action against it and that the
suit was purely intended to malign SMI’s good name.
NEMI’s contention – it denied having manufactured, installed or
used any advertising display units, nor having engaged in the
business of advertising.
RTC decision: Wherefore, defendants SMI and NEMI are found
jointly and severally liable for infringement of copyright under
Section 2 of PD 49, as amended, and infringement of
trademark under Section 22 of RA No. 166, as amended, and
are hereby penalized under Section 28 of PD 49, as amended,
and Sections 23 and 24 of RA 166, as amended.
Court of Appeals – REVERSED THE DECISION
Since the light boxes cannot, by any stretch of the imagination,
be considered as either prints, pictorial illustrations, advertising
copies, labels, tags or box wraps, to be properly classified as a
copyrightable class "O" work, we have to agree with SMI when
it posited that what was copyrighted were the technical
drawings only, and not the light boxes themselves,
ISSUE: 1. Whether or not there is a copyright, trademark,
patent infringement, or unfair competition (NONE ALL).
2. If the engineering or technical drawings of an advertis-
ing display unit (light box) are granted copyright protection
(copyright certificate of registration) by the National Library,
is the light box depicted in such engineering drawings ipso
facto also protected by such copyright (SC Issue)?
3. or should the light box be registered separately and
protected by a patent issued by the Bureau of Patents
Trademarks and Technology Transfer (now Intellectual
Property Office) — in addition to the copyright of the engi-
neering drawings (SC Issue)?
NOTE: THE MAIN ISSUE IS: Whether or not the right over the
technical drawing of the light bulb made by the PD to which it
has copyright is extendible to the ACTUAL PRODUCT when
the drawing was fabricated or manufactured. NO!
HELD: COPYRIGHT INFRINGEMENT: Obviously, petitioner’s
position was premised on its belief that its copyright over the
engineering drawings extended ipso facto to the light boxes
depicted or illustrated in said drawings. In ruling that there was
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no copyright infringement, the Court of Appeals held that
the copyright was limited to the drawings alone and not to
the light box itself. We agree with the appellate court.
First, petitioner’s application for a copyright certificate —
as well as Copyright Certificate No. PD-R2588 issued by
the National Library on January 20, 1981 — clearly stated
that it was for a class "O" work under Section 2 (O) of PD
49 (The Intellectual Property Decree) which was the
statute then prevailing. Said Section 2 expressly
enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the
following works:
(O) Prints, pictorial illustrations, advertising copies, labels,
tags, and box wraps;
Although petitioner’s copyright certificate was entitled
"Advertising Display Units" (which depicted the box-type
electrical devices), its claim of copyright infringement
cannot be sustained.
Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights are
limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the
statute.7 Accordingly, it can cover only the works falling
within the statutory enumeration or description.
P & D secured its copyright under the classification class
"O" work. This being so, petitioner’s copyright protection
extended only to the technical drawings and not to the
light box itself because the latter was not at all in the
category of "prints, pictorial illustrations, advertising
copies, labels, tags and box wraps." Stated otherwise,
even as we find that P & D indeed owned a valid
copyright, the same could have referred only to the
technical drawings within the category of "pictorial
illustrations." It could not have possibly stretched out to
include the underlying light box. The strict application9 of
the law’s enumeration in Section 2 prevents us from giving
petitioner even a little leeway, that is, even if its copyright
certificate was entitled "Advertising Display Units." What
the law does not include, it excludes, and for the good
reason: the light box was not a literary or artistic piece
which could be copyrighted under the copyright law. And
no less clearly, neither could the lack of statutory authority
to make the light box copyrightable be remedied by the
simplistic act of entitling the copyright certificate issued by
the National Library as "Advertising Display Units."
In fine, if SMI and NEMI reprinted P & D’s technical
drawings for sale to the public without license from P & D,
then no doubt they would have been guilty of copyright
infringement. But this was not the case. SMI’s and NEMI’s
acts complained of by P & D were to have units similar or
identical to the light box illustrated in the technical
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
drawings manufactured by Metro and EYD Rainbow
Advertising, for leasing out to different advertisers. Was this an
infringement of petitioner’s copyright over the technical
drawings? We do not think so.
PATENT INFRINGMENT: This brings us to the next point: if,
despite its manufacture and commercial use of the light boxes
without license from petitioner, private respondents cannot be
held legally liable for infringement of P & D’s copyright over its
technical drawings of the said light boxes, should they be liable
instead for infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a patent
for the light boxes. It therefore acquired no patent rights which
could have protected its invention, if in fact it really was. And
because it had no patent, petitioner could not legally prevent
anyone from manufacturing or commercially using the
contraption. In Creser Precision Systems, Inc. vs. Court of
Appeals,12 we held that "there can be no infringement of a
patent until a patent has been issued, since whatever right one
has to the invention covered by the patent arises alone from
the grant of patent. x x x (A)n inventor has no common law right
to a monopoly of his invention. He has the right to make use of
and vend his invention, but if he voluntarily discloses it, such as
by offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to
exclude all others. As a patentee, he has the exclusive right of
making, selling or using the invention.13 On the assumption that
petitioner’s advertising units were patentable inventions,
petitioner revealed them fully to the public by submitting the
engineering drawings thereof to the National Library.
To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a primordial
requirement. No patent, no protection. The ultimate goal of a
patent system is to bring new designs and technologies into the
public domain through disclosure.14 Ideas, once disclosed to
the public without the protection of a valid patent, are subject to
appropriation without significant restraint.
On one side of the coin is the public which will benefit from new
ideas; on the other are the inventors who must be protected. As
held in Bauer & Cie vs. O’Donnel,16 "The act secured to the
inventor the exclusive right to make use, and vend the thing
patented, and consequently to prevent others from exercising
like privileges without the consent of the patentee. It was
passed for the purpose of encouraging useful invention and
promoting new and useful inventions by the protection and
stimulation given to inventive genius, and was intended to
secure to the public, after the lapse of the exclusive privileges
granted the benefit of such inventions and improvements."
TRADEMARK INFRINGEMENT: Under the circumstances, the
Court of Appeals correctly cited Faberge Inc. vs. Intermediate
Appellate Court,23 where we, invoking Section 20 of the old
Trademark Law, ruled that "the certificate of registration issued
by the Director of Patents can confer (upon petitioner) the
exclusive right to use its own symbol only to those goods
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specified in the certificate, subject to any conditions and
limitations specified in the certificate x x x. One who has
adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by
others for products which are of a different description."24
Faberge, Inc. was correct and was in fact recently
reiterated in Canon Kabushiki Kaisha vs. Court of
Appeals.
UNFAIR COMPETITION: By the nature of things, there
can be no unfair competition under the law on copyrights
although it is applicable to disputes over the use of
trademarks. Even a name or phrase incapable of
appropriation as a trademark or tradename may, by long
and exclusive use by a business (such that the name or
phrase becomes associated with the business or product
in the mind of the purchasing public), be entitled to
protection against unfair competition.27 In this case, there
was no evidence that P & D’s use of "Poster Ads" was
distinctive or well-known. As noted by the Court of
Appeals, petitioner’s expert witnesses himself had testified
that " ‘Poster Ads’ was too generic a name. So it was
difficult to identify it with any company, honestly
speaking."28 This crucial admission by its own expert
witness that "Poster Ads" could not be associated with P &
D showed that, in the mind of the public, the goods and
services carrying the trademark "Poster Ads" could not be
distinguished from the goods and services of other
entities.
This fact also prevented the application of the doctrine of
secondary meaning. "Poster Ads" was generic and
incapable of being used as a trademark because it was
used in the field of poster advertising, the very business
engaged in by petitioner. "Secondary meaning" means
that a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market
(because it is geographically or otherwise descriptive)
might nevertheless have been used for so long and so
exclusively by one producer with reference to his article
that, in the trade and to that branch of the purchasing
public, the word or phrase has come to mean that the
article was his property.29 The admission by petitioner’s
own expert witness that he himself could not associate
"Poster Ads" with petitioner P & D because it was "too
generic" definitely precluded the application of this
exception.
COPYRIGHT, TRADEMARK and PATENT differentiated:
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade
name means the name or designation identifying or
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of
a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable.
WHEREFORE, the petition is hereby DENIED and the decision
of the Court of Appeals dated May 22, 2001 is AFFIRMED in
toto.
G.R. No. 161295 June 29, 2005
JESSIE G. CHING, petitioner,
vs.
WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR.,
JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS, ALONTO
SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M.
YABUT (Board of Directors and Officers of WILAWARE
PRODUCT CORPORATION), respondents.
FACTS: Jessie G. Ching is the maker and manufacturer of a
Utility Model, described as "Leaf Spring Eye Bushing for
Automobile" made up of plastic.
On September 4, 2001, Ching and Joseph Yu were issued by
the National Library Certificates of Copyright Registration and
Deposit of the said work described therein as "Leaf Spring Eye
Bushing for Automobile."
Petitioner Ching requested the NBI for assistance for the
apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.
After due investigation, the NBI filed applications for search
warrants in the RTC of Manila against William Salinas, Sr., et
al., herein respondents. It was alleged that the respondents
reproduced and distributed the said models penalized under
Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293.
Respondents filed a motion to quash the search warrants.
RESPONDENT’S AVERMENTS: That the works covered by
the certificates issued by the National Library are not artistic in
nature; they are considered automotive spare parts and pertain
to technology. The models are not original, and as such are
the proper subject of a patent, not copyright.
The lower court quashed and set aside the warrant which the
appellate court affirmed, hence, this petition for review on
certiorari.
PETITIONER’S ARGUMENT: The RTC committed a grave
abuse of its discretion when it declared that his works are not
copyrightable in the first place. He claims that R.A. No. 8293,
otherwise known as the Intellectual Property Code of the
Philippines, provides in no uncertain terms that copyright
protection automatically attaches to a work by the sole fact of
its creation, irrespective of its mode or form of expression, as
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well as of its content, quality or purpose. The law gives a
non-inclusive definition of "work" as referring to original
intellectual creations in the literary and artistic domain
protected from the moment of their creation; and includes
original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design and other works of applied art under Section
172.1(h) of R.A. No. 8293.
As such, the petitioner insists, notwithstanding the
classification of the works as either literary and/or artistic,
the said law, likewise, encompasses works which may
have a bearing on the utility aspect to which the
petitioner’s utility designs were classified. Moreover,
according to the petitioner, what the Copyright Law
protects is the author’s intellectual creation, regardless of
whether it is one with utilitarian functions or incorporated in
a useful article produced on an industrial scale.
Petitioner also maintains that the law does not provide that
the intended use or use in industry of an article eligible for
patent bars or invalidates its registration under the Law on
Copyright. The test of protection for the aesthetic is not
beauty and utility, but art for the copyright and invention of
original and ornamental design for design patents. In like
manner, the fact that his utility designs or models for
articles of manufacture have been expressed in the field of
automotive parts, or based on something already in the
public domain does not automatically remove them from
the protection of the Law on Copyright.
ISSUE: WON the Leaf Spring Eye Bushing for automobile
use is considered a “work of art”, and is therefore
registrable under the copyright law? (NO!)
RULING: Petition DENIED for lack of merit. Assailed
Decision and Resolution of the Court of Appeals are
AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402
issued on October 15, 2001 are ANNULLED AND SET
ASIDE. Costs against the petitioner.
HELD: The bushing and cushion are not works of art.
They are utility models which may be the subject of a
patent.
The focus of copyright is the usefulness of the artistic
design and not its marketability.—It bears stressing that
the focus of copyright is the usefulness of the artistic
design, and not its marketability. The central inquiry is
whether the article is a work of art. Works for applied art
include all original pictorials, graphics, and sculptural
works that are intended to be or have been embodied in
useful article regardless of factors such as mass
production, commercial exploitation, and the potential
availability of design patent protection.
While works of applied art, original intellectual, literary and
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
artistic works are copyrightable, useful articles and works of
industrial design are not.—As gleaned from the description of
the models and their objectives, these articles are useful
articles which are defined as one having an intrinsic utilitarian
function that is not merely to portray the appearance of the
article or to convey information. Indeed, while works of applied
art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are
not. A useful article may be copyrightable only if and only to the
extent that such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and
are capable of existing independently of the utilitarian aspects
of the article.
That the works of the petitioner may be the proper subject of a
patent does not entitle him to the issuance of a search warrant
for violation of copyright laws.—That the works of the petitioner
may be the proper subject of a patent does not entitle him to
the issuance of a search warrant for violation of copyright laws.
In Kho v. Court of Appeals and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated, the Court ruled that
“these copyright and patent rights are completely distinct and
separate from one another, and the protection afforded by one
cannot be used interchangeably to cover items or works that
exclusively pertain to the others.”
G.R. No. 147043 June 21, 2005
NBI - MICROSOFT CORPORATION & LOTUS
DEVELOPMENT CORP., petitioners,
vs.
JUDY C. HWANG, BENITO KEH & YVONNE K.
CHUA/BELTRON COMPUTER PHILIPPINES INC.,
JONATHAN K. CHUA, EMILY K. CHUA, BENITO T.
SANCHEZ, NANCY I. VELASCO, ALFONSO CHUA,
ALBERTO CHUA, SOPHIA ONG, DEANNA CHUA/TAIWAN
MACHINERY DISPLAY & TRADE CENTER, INC., and THE
SECRETARY OF JUSTICE, respondents.
FACTS: Petitioner Microsoft Corporation (“Microsoft”), a Dela-
ware, United States corporation, owns the copyright and trade-
mark to several computer software.[3] Respondents Benito Keh
and Yvonne Keh are the President/Managing Director and Gen-
eral Manager, respectively, of respondent Beltron Computer
Philippines, Inc. (“Beltron”), a domestic corporation.
Microsoft and Beltron entered into a Licensing Agreement
(“Agreement”). Under Section 2(a) of the Agreement, Microsoft
authorized Beltron, for a fee, to:
(i) xxx reproduce and install no more than one (1) copy of [Mi-
crosoft] software on each Customer System hard disk or Read
Only Memory (“ROM”); [and]
(ii) xxx distribute directly or indirectly and license copies of the
Product (reproduced as per Section 2(a)(i) and/or acquired
from Authorized Replicator or Authorized Distributor) in object
code form to end users[.] xxxx[5]
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The Agreement also authorized Microsoft and Beltron to
terminate the contract if the other fails to comply with any
of the Agreement’s provisions. Microsoft terminated the
Agreement for Beltron’s non-payment of royalties.[6]
Afterwards, Microsoft learned that respondents were ille-
gally copying and selling Microsoft software. Consequent-
ly, Microsoft, through its Philippine agent,[7] hired the ser-
vices of Pinkerton Consulting Services (“PCS”), a private
investigative firm. Microsoft also sought the assistance of
the National Bureau of Investigation (“NBI”).PCS employ-
ee John Benedic[8] Sacriz (“Sacriz”) and NBI agent Domi-
nador Samiano, Jr. (“Samiano”), posing as representatives
of a computer shop,[9] bought computer hardware (central
processing unit (“CPU”) and computer monitor) and soft-
ware (12 computer disks (“CDs”) in read-only memory
(“ROM”) format) from respondents. The CPU contained
pre-installed[10] Microsoft Windows 3.1 and MS-DOS soft-
ware. The 12 CD-ROMs, encased in plastic containers
with Microsoft packaging, also contained Microsoft soft-
ware.[11] At least two of the CD-ROMs were “installers,” so-
called because they contain several software (Microsoft
only or both Microsoft and non-Microsoft).[12] Sacriz and
Samiano were not given the Microsoft end-user license
agreements, user’s manuals, registration cards or certifi-
cates of authenticity for the articles they purchased. The
receipt issued to Sacriz and Samiano for the CPU and
monitor bore the heading “T.M.T.C. (PHILS.) INC. BEL-
TRON COMPUTER.”[13] The receipt for the 12 CD-ROMs
did not indicate its source although the name “Gerlie” ap-
pears below the entry “delivered by.”[14]
Based on the articles obtained from respondents, Micro-
soft and a certain Lotus Development Corporation (“Lotus
Corporation”) charged respondents before the Department
of Justice (“DOJ”) with copyright infringement under Sec-
tion 5(A) in relation to Section 29 of Presidential Decree
No. 49, as amended, (“PD 49”)[18] and with unfair competi-
tion under Article 189(1)[19] of the Revised Penal Code. In
its Complaint (“I.S. No. 96-193”), which the NBI indorsed,
Microsoft alleged that respondents illegally copied and
sold Microsoft software.[20]
Respondents denied the charges. Respondents Keh and
Chua alleged that: (1) Microsoft’s real intention in filing the
complaint was to pressure Beltron to pay its alleged un-
paid royalties, thus Microsoft should have filed a collection
suit instead of a criminal complaint; (2) TMTC bought the
confiscated 59 boxes of MS-DOS CDs from a Microsoft
dealer in Singapore; (3) respondents are not the “source”
of the Microsoft Windows 3.1 software pre-installed in the
CPU bought by Sacriz and Samiano, but only of the MS-
DOS software; (4) Microsoft’s alleged proof of purchase
(receipt) for the 12 CD-ROMs is inconclusive because the
receipt does not indicate its source; and (5) respondents
Benito Keh, Jonathan K. Chua, Alfonso Chua, Alberto
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
Chua, Judy K. Chua Hwang, Sophia Ong, and Deanna Chua
are stockholders of Beltron and TMTC in name only and thus
cannot be held criminally liable.[21]
In the Resolution of DOJ recommended the dismissal of Micro-
soft’s complaint for lack of merit and insufficiency of evidence.
ISSUE: Whether the DOJ acted with grave abuse of discretion
in not finding probable cause to charge respondents with copy-
right infringement and unfair competition.
HELD: The DOJ Acted with Grave Abuse of Discre-
tion in not Finding Probable Cause to Charge Re-
spondents with Copyright Infringement and Unfair
Competition
PD 49 and Article 189(1)
Section 5[39] of PD 49 (“Section 5”) enumerates the rights vest-
ed exclusively on the copyright owner. Contrary to the DOJ’s
ruling, the gravamen of copyright infringement is not merely the
unauthorized “manufacturing” of intellectual works but rather
the unauthorized performance of any of the acts covered by
Section 5. Hence, any person who performs any of the acts un-
der Section 5 without obtaining the copyright owner’s prior con-
sent renders himself civilly[40] and criminally[41] liable for copy-
right infringement.
We held in Columbia Pictures, Inc. v. Court of Appeals:[42]
Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, there-
fore, protected by law, and infringement of copyright, or piracy,
which is a synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of the
copyright, of anything the sole right to do which is conferred by
statute on the owner of the copyright. (Emphasis supplied)
Significantly, under Section 5(A), a copyright owner is vested
with the exclusive right to “copy, distribute, multiply, [and] sell”
his intellectual works.
On the other hand, the elements of unfair competition under Ar-
ticle 189(1)[43] of the Revised Penal Code are:
(a) That the offender gives his goods the general
appearance of the goods of another manufac-
turer 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 op-
portunity to do the same with a like purpose[;
and]
(d) That there is actual intent to deceive the public
or defraud a competitor.[44]
The element of intent to deceive may be inferred from the simi-
larity of the goods or their appearance.[45]
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On the Sufficiency of Evidence to
Support a Finding of Probable Cause
Against Respondents
First. Being the copyright and trademark owner of Micro-
soft software, Microsoft acted well within its rights in filing
the complaint based on the incriminating evidence ob-
tained from respondents. Hence, it was highly irregular for
the DOJ to hold, based on the RTC Order of 19 July 1996,
that Microsoft sought the issuance of Search Warrant Nos.
95-684 and 95-685, and by inference, the filing of the com-
plaint under I.S. No. 96-193, merely to pressure Beltron to
pay its overdue royalties to Microsoft. Significantly, in its
Decision in CA-G.R. CV No. 54600 dated 29 November
2001, the Court of Appeals set aside the RTC Order of 19
July 1996. Respondents no longer contested that ruling
which became final on 27 December 2001.
Second. There is no basis for the DOJ to rule that Micro-
soft must await a prior “resolution from the proper court of
(sic) whether or not the [Agreement] is still binding be-
tween the parties.” Beltron has not filed any suit to ques-
tion Microsoft’s termination of the Agreement. Microsoft
can neither be expected nor compelled to wait until Beltron
decides to sue before Microsoft can seek remedies for vio-
lation of its intellectual property rights.
Furthermore, some of the counterfeit CD-ROMs bought
from respondents were “installer” CD-ROMs containing
Microsoft software only or both Microsoft and non-Micro-
soft software. These articles are counterfeit per se be-
cause Microsoft does not (and could not have authorized
anyone to) produce such CD-ROMs. The copying of the
genuine Microsoft software to produce these fake CD-
ROMs and their distribution are illegal even if the copier or
distributor is a Microsoft licensee. As far as these installer
CD-ROMs are concerned, the Agreement (and the alleged
question on the validity of its termination) is immaterial to
the determination of respondents’ liability for copyright in-
fringement and unfair competition.
Lastly, Section 10(b)[48] of the Agreement provides that Mi-
crosoft’s “rights and remedies” under the contract are “not
xxx exclusive and are in addition to any other rights and
remedies provided by law or [the] Agreement.” Thus, even
if the Agreement still subsists, Microsoft is not precluded
from seeking remedies under PD 49 and Article 189(1) of
the Revised Penal Code to vindicate its rights.
Third. The Court finds that the 12 CD-ROMs (“installer”
and “non-installer”) and the CPU with pre-installed Micro-
soft software Sacriz and Samiano bought from respon-
dents and the 2,831 Microsoft CD-ROMs seized from re-
spondents suffice to support a finding of probable cause to
indict respondents for copyright infringement under Sec-
tion 5(A) in relation to Section 29 of PD 49 for unautho-
rized copying and selling of protected intellectual works.
The installer CD-ROMs with Microsoft software, to repeat,
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
are counterfeit per se. On the other hand, the illegality of the
“non-installer” CD-ROMs purchased from respondents and of
the Microsoft software pre-installed in the CPU is shown by the
absence of the standard features accompanying authentic Mi-
crosoft products, namely, the Microsoft end-user license agree-
ments, user’s manuals, registration cards or certificates of au-
thenticity.
On the 2,831 Microsoft CD-ROMs[49] seized from respondents,
respondent Beltron, the only respondent who was party to the
Agreement, could not have reproduced them under the Agree-
ment as the Solicitor General[50] and respondents contend. Bel-
tron’s rights[51] under the Agreement were limited to:
(1) the “reproduc[tion] and install[ation of] no more than one
copy of [Microsoft] software on each Customer System hard
disk or Read Only Memory (“ROM”)”; and
(2) the “distribut[ion] xxx and licens[ing of] copies of the [Micro-
soft] Product [as reproduced above] and/or acquired from
Authorized Replicator or Authorized Distributor) in object
code form to end users.”
The Agreement defines an authorized replicator as “a third par-
ty approved by [Microsoft] which may reproduce and manufac-
ture [Microsoft] Product[s] for [Beltron] xxx.”[52] An authorized
distributor, on the other hand, is a “third party approved by [Mi-
crosoft] from which [Beltron] may purchase
MED[53] Product.”[54] Being a mere reproducer/installer of one
Microsoft software copy on each customer’s hard disk or ROM,
Beltron could only have acquired the hundreds of Microsoft CD-
ROMs found in respondents’ possession from Microsoft distrib-
utors or replicators.
However, respondents makes no such claim. What respon-
dents contend is that these CD-ROMs were left to them for
safekeeping. But neither is this claim tenable for lack of sub-
stantiation. Indeed, respondents Keh and Chua, the only re-
spondents who filed counter-affidavits, did not make this claim
in the DOJ. These circumstances give rise to the reasonable in-
ference that respondents mass-produced the CD-ROMs in
question without securing Microsoft’s prior authorization.
The counterfeit “non-installer” CD-ROMs Sacriz and Samiano
bought from respondents also suffice to support a finding of
probable cause to indict respondents for unfair competition un-
der Article 189(1) of the Revised Penal Code for passing off Mi-
crosoft products. From the pictures of the CD-ROMs’ packag-
ing,[55] one cannot distinguish them from the packaging of CD-
ROMs containing genuine Microsoft software. Such replication,
coupled with the similarity of content of these fake CD-ROMs
and the CD-ROMs with genuine Microsoft software, implies in-
tent to deceive.
Respondents’ contention that the 12 CD-ROMs Sacriz and
Samiano purchased cannot be traced to them because the re-
ceipt for these articles does not indicate its source is unavail-
ing. The receipt in question should be taken together with Mi-
crosoft’s claim that Sacriz and Samiano bought the CD-ROMs
from respondents.[56] Together, these considerations point to re-
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spondents as the vendor of the counterfeit CD-ROMs. Re-
spondents do not give any reason why the Court should
not give credence to Microsoft’s claim. For the same rea-
son, the fact that the receipt for the CPU does not indicate
“[s]oftware hard disk” does not mean that the CPU had no
pre-installed Microsoft software. Respondents Keh and
Chua admit in their counter-affidavit that respondents are
the “source” of the pre-installed MS-DOS software.
G.R. No. 132604 March 6, 2002
VENANCIO SAMBAR, doing business under the name
and style of CVS Garment Enterprises, petitioner,
vs.
LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.),
INC., respondents.
FACTS: Private respondents demanded that CVS
Garment Enterprises (CVSGE) desist from using their
stitched arcuate design on the Europress jeans which
CVSGE advertised in the Manila Bulletin. Counsel of
CVSGE, replied that the arcuate design on the back
pockets of Europress jeans was different from the design
on the back pockets of Levi’s jeans. He further asserted
that his client had a copyright on the design it was using.
Private respondents filed a complaint against Sambar,
doing business under the name and style of CVSGE.
Private respondents amended their complaint to include
CVSGIC. When private respondents learned the
whereabouts of Sambar and CVSGE, the case was
revived. Private respondents alleged in their complaint that
Levi Strauss and Co. (LS&Co.), an internationally known
clothing manufacturer, owns the arcuate design trademark
which was registered under U.S. Trademark Registration,
and in the Principal Register of trademarks with the
Philippine Patent Office; that through a Trademark
Technical Data and Technical Assistance Agreement with
Levi Strauss (Phil.) Inc. (LSPI), LS&Co. granted LSPI a
non-exclusive license to use the arcuate trademark in its
manufacture and sale of Levi’s pants, jackets and shirts in
the Philippines; that, LS&Co. also appointed LSPI as its
agent and attorney-in-fact to protect its trademark in the
Philippines; and that sometime, CVSGIC and Venancio
Sambar, without the consent and authority of private
respondents and in infringement and unfair competition,
sold and advertised, and despite demands to cease and
desist, continued to manufacture, sell and advertise denim
pants under the brand name “Europress” with back
pockets bearing a design similar to the arcuate trademark
of private respondents, thereby causing confusion on the
buying public, prejudicial to private respondents’ goodwill
and property right.
CVSGIC admitted it manufactured, sold and advertised
and was still manufacturing and selling denim pants under
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
the brand name of “Europress”, bearing a back pocket design
of two double arcs meeting in the middle. However, it denied
that there was infringement or unfair competition because the
display rooms of department stores where Levi’s and
Europress jeans were sold, were distinctively segregated by
billboards and other modes of advertisement. CVSGIC avers
that the public would not be confused on the ownership of such
known trademark as Levi’s, Jag, Europress, etc.. Also,
CVSGIC claimed that it had its own original arcuate design, as
evidenced by Copyright Registration, which was very different
and distinct from Levi’s design.
Petitioner Venancio Sambar denied he was connected with
CVSGIC. He admitted that Copyright Registration was issued
to him, but he denied using it. He also said he did not
authorize anyone to use the copyrighted design Trial court
rendered its decision ordering the Director of the National
Library to cancel the Copyright Registration issued in the name
of Venancio Sambar. CA decided in favor of private
respondents.
ISSUE: 1. Did petitioner infringe on private respondents’
arcuate design? (Yes)
2. Must we hold petitioner solidarily liable with CVS Garments
Industrial Corporation? (Yes)
3. Are private respondents entitled to nominal, temperate and
exemplary damages and cancellation of petitioner’s copyright?
(Yes, except nominal)
RULING: (1) On the first issue, petitioner claims that he did not
infringe on private respondents’ arcuate design because there
was no colorable imitation which deceived or confused the
public. He cites Emerald Garment Manufacturing Corporation
vs. Court of Appeals, G.R. No. 100098, 251 SCRA 600 (1995),
as authority. He disagreed with the Court of Appeals that there
were confusing similarities between Levi’s and Europress’
arcuate designs, despite the trial court’s observation of
differences in them. Petitioner maintains that although the
backpocket designs had similarities, the public was not
confused because Levi’s jeans had other marks not found in
Europress jeans. Further, he says Levi’s long history and
popularity made its trademark easily identifiable by the public.
In its comment, private respondents aver that the Court of
Appeals did not err in ruling that there was infringement in this
case. The backpocket design of Europress jeans, a double arc
intersecting in the middle was the same as Levi’s’ mark, also a
double arc intersecting at the center. Although the trial court
found differences in the two designs, these differences were
not noticeable. Further, private respondents said, infringement
of trademark did not require exact similarity. Colorable
imitation enough to cause confusion among the public, was
sufficient for a trademark to be infringed. Private respondents
explained that in a market research they conducted with 600
respondents, the result showed that the public was confused by
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Europress trademark vis the Levi’s trademark.
We find that the first issue raised by petitioner is factual.
The basic rule is that factual questions are beyond the
province of this Court in a petition for review. Although
there are exceptions to this rule, this case is not one of
them. Hence, we find no reason to disturb the findings of
the Court of Appeals that Europress’ use of the arcuate
design was an infringement of the Levi’s design.
(2) On the second issue, petitioner claims that private
respondents did not show that he was connected with
CVSGIC, nor did they prove his specific acts of
infringement to make him liable for damages. Again, this
is a factual matter and factual findings of the trial court,
concurred in by the Court of Appeals, are final and binding
on this Court. Both the courts below found that petitioner
had a copyright over Europress’ arcuate design and that
he consented to the use of said design by CVSGIC. We
are bound by this finding, especially in the absence of a
showing that it was tainted with arbitrariness or palpable
error. It must be stressed that it was immaterial whether or
not petitioner was connected with CVSGIC. What is
relevant is that petitioner had a copyright over the design
and that he allowed the use of the same by CVSGIC.
Petitioner also contends that the Court of Appeals erred
when it said that he had the burden to prove that he was
not connected with CVSGIC and that he did not authorize
anyone to use his copyrighted design. According to
petitioner, these are important elements of private
respondents’ cause of action against him, hence, private
respondents had the ultimate burden of proof.
Pertinent is Section 1, Rule 131 of the Rules of Court
which provides that the burden of proof is the duty of a
party to prove the truth of his claim or defense, or any fact
in issue by the amount of evidence required by law. In
civil cases, the burden of proof may be on either the
plaintiff or the defendant. It is on the latter, if in his answer
he alleges an affirmative defense, which is not a denial of
an essential ingredient in the plaintiff’s cause of action, but
is one which, if established, will be a good defense – i.e.,
an “avoidance” of the claim, which prima facie, the plaintiff
already has because of the defendant’s own admissions in
the pleadings.
Petitioner’s defense in this case was an affirmative
defense. He did not deny that private respondents owned
the arcuate trademark nor that CVSGIC used on its
products a similar arcuate design. What he averred was
that although he owned the copyright on the Europress
arcuate design, he did not allow CVSGIC to use it. He
also said he was not connected with CVSGIC. These
were not alleged by private respondents in their pleadings,
and petitioner therefore had the burden to prove these.
(3) Petitioner insists that he had not infringed on the
arcuate trademark, hence, there was no basis for nominal
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
and temperate damages. Also, an award of nominal damages
precludes an award of temperate damages. He cites
Ventanilla vs. Centeno, G.R. No. L-14333, 1 SCRA 215 (1961)
on this. Thus, he contends, assuming arguendo that there was
infringement, the Court of Appeals still erred in awarding both
nominal and temperate damages.
Petitioner likewise said that the grant of exemplary damages
was inconsistent with the trial court’s finding that the design of
Europress jeans was not similar to Levi’s design and that no
pecuniary loss was suffered by respondents to entitle them to
such damages.
Lastly, petitioner maintains that as Europress’ arcuate design is
not a copy of that of Levi’s, citing the trial court’s findings that
although there are similarities, there are also differences in the
two designs, cancellation of his copyright was not justified.
On this matter, private respondents assert that the lower courts
found that there was infringement and Levi’s was entitled to
damages based on Sections 22 and 23 of RA No. 166
otherwise known as the Trade Mark Law, as amended, which
was the law then governing. Said sections define infringement
and prescribe the remedies therefor. Further, private
respondents aver it was misleading for petitioner to claim that
the trial court ruled that private respondents did not suffer
pecuniary loss, suggesting that the award of damages was
improper. According to the private respondents, the trial court
did not make any such ruling. It simply stated that there was
no evidence that Levi’s had suffered decline in its sales
because of the use of the arcuate design by Europress jeans.
They offer that while there may be no direct proof that they
suffered a decline in sales, damages may still be measured
based on a reasonable percentage of the gross sales of the
respondents, pursuant to Section 23 of the Trademark law.
Finally, regarding the cancellation of petitioner’s copyright,
private respondents deny that the trial court ruled that the
arcuate design of Europress jeans was not the same as Levi’s
arcuate design jeans. On the contrary, the trial court expressly
ruled that there was similarity. The cancellation of petitioner’s
copyright was justified because petitioner’s copyright cannot
prevail over respondents’ registration in the Principal Register
of Bureau of Patents, Trademarks, and Technology Transfer.
According to private respondents, the essence of copyright
registration is originality and a copied design is inherently non-
copyrightable. They insist that registration does not confer
originality upon a copycat version of a prior design.
From the foregoing discussion, it is clear that the matters raised
by petitioner in relation to the last issue are purely factual,
except the matter of nominal and temperate damages.
Petitioner claims that damages are not due private respondents
and his copyright should not be cancelled because he had not
infringed on Levi’s trademark. Both the trial court and the Court
of Appeals found there was infringement. Thus, the award of
damages and cancellation of petitioner’s copyright are
appropriate. Award of damages is clearly provided in Section
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23, while cancellation of petitioner’s copyright finds basis
on the fact that the design was a mere copy of that of
private respondents’ trademark. To be entitled to
copyright, the thing being copyrighted must be original,
created by the author through his own skill, labor and
judgment, without directly copying or evasively imitating
the work of another.
However, we agree with petitioner that it was error for the
Court of Appeals to affirm the award of nominal damages
combined with temperate damages by the Regional Trial
Court of Makati. What respondents are entitled to is an
award for temperate damages, not nominal damages. For
although the exact amount of damage or loss cannot be
determined with reasonable certainty, the fact that there
was infringement means they suffered losses for which
they are entitled to moderate damages. We find that the
award of P50,000.00 as temperate damages fair and
reasonable, considering the circumstances herein as well
as the global coverage and reputation of private
respondents Levi Strauss & Company and Levi Strauss
(Phil.), Inc.
G.R. No. L-36402 March 16, 1987
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND
PUBLISHERS, INC., plaintiff-appellant,
vs.
BENJAMIN TAN, defendant-appellee.
FACTS: Petitioner Filipino Society of Composers, Authors
and Pubishers, Inc. (FSCAP) s the owner of certain
musical compositions among which are the songs entitled:
"Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami
Ay Tao Lamang" and "The Nearness Of You."
On the other hand, defendant-appellee is the operator of a
restaurant known as "Alex Soda Foundation and
Restaurant" where a combo with professional singers,
hired to play and sing musical compositions to entertain
and amuse customers therein, were playing and singing
the above-mentioned compositions without any license or
permission from the appellant to play or sing the same.
Accordingly, appellant demanded from the appellee
payment of the necessary license fee for the playing and
singing of aforesaid compositions but the demand was
ignored. Hence, a complaint for copyright infringement.
ISSUE: Whether or not the playing and signing of musical
compositions which have been copyrighted under the
provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a
public performance for profit within the meaning and
contemplation of the Copyright Law of the Philippines.
HELD: Appellant anchors its claim on Section 3(c) of the
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
Copyright Law which provides:
SEC. 3. The proprietor of a copyright or his heirs or
assigns shall have the exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or
reproduce the copyrighted work in any manner or by
any method whatever for profit or otherwise; if not
reproduced in copies for sale, to sell any manuscripts
or any record whatsoever thereof;
xxx xxx xxx
The word "perform" as used in the Act has been applied to
"One who plays a musical composition on a piano, thereby
producing in the air sound waves which are heard as music ...
and if the instrument he plays on is a piano plus a broadcasting
apparatus, so that waves are thrown out, not only upon the air,
but upon the other, then also he is performing the musical
composition." (Buck, et al. v. Duncan, et al.; Same Jewell La
Salle Realty Co., 32F. 2d. Series 367).
In relation thereto, it has been held that "The playing of music
in dine and dance establishment which was paid for by the
public in purchases of food and drink constituted "performance
for profit" within a Copyright Law." (Buck, et al. v. Russon No.
4489 25 F. Supp. 317). Thus, it has been explained that while it
is possible in such establishments for the patrons to purchase
their food and drinks and at the same time dance to the music
of the orchestra, the music is furnished and used by the
orchestra for the purpose of inducing the public to patronize the
establishment and pay for the entertainment in the purchase of
food and drinks. The defendant conducts his place of business
for profit, and it is public; and the music is performed for profit
(Ibid, p. 319). In a similar case, the Court ruled that "The
Performance in a restaurant or hotel dining room, by persons
employed by the proprietor, of a copyrighted musical
composition, for the entertainment of patrons, without charge
for admission to hear it, infringes the exclusive right of the
owner of the copyright." (Herbert v. Shanley Co.; John Church
Co. v. Hillard Hotel Co., et al., 242 U.S. 590-591). In delivering
the opinion of the Court in said two cases, Justice Holmes
elaborated thus:
If the rights under the copyright are infringed only by a
performance where money is taken at the door, they
are very imperfectly protected. Performances not
different in kind from those of the defendants could be
given that might compete with and even destroy the
success of the monopoly that the law intends the
plaintiffs to have. It is enough to say that there is no
need to construe the statute so narrowly. The
defendants' performances are not eleemosynary. They
are part of a total for which the public pays, and the
fact that the price of the whole is attributed to a
particular item which those present are expected to
order is not important. It is true that the music is not the
sole object, but neither is the food, which probably
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could be got cheaper elsewhere. The object is a
repast in surroundings that to people having
limited power of conversation or disliking the rival
noise, give a luxurious pleasure not to be had
from eating a silent meal. If music did not pay, it
would be given up. If it pays, it pays out of the
public's pocket. Whether it pays or not, the
purpose of employing it is profit, and that is
enough. (Ibid., p. 594).
In the case at bar, it is admitted that the patrons of the
restaurant in question pay only for the food and drinks and
apparently not for listening to the music. As found by the
trial court, the music provided is for the purpose of
entertaining and amusing the customers in order to make
the establishment more attractive and desirable (Record
on Appeal, p. 21). It will be noted that for the playing and
singing the musical compositions involved, the combo was
paid as independent contractors by the appellant (Record
on Appeal, p. 24). It is therefore obvious that the expenses
entailed thereby are added to the overhead of the
restaurant which are either eventually charged in the price
of the food and drinks or to the overall total of additional
income produced by the bigger volume of business which
the entertainment was programmed to attract.
Consequently, it is beyond question that the playing and
singing of the combo in defendant-appellee's restaurant
constituted performance for profit contemplated by the
Copyright Law. (Act 3134 amended by P.D. No. 49, as
amended).
Nevertheless, appellee cannot be said to have infringed
upon the Copyright Law. Appellee's allegation that the
composers of the contested musical compositions waived
their right in favor of the general public when they allowed
their intellectual creations to become property of the public
domain before applying for the corresponding copyrights
for the same (Brief for Defendant-Appellee, pp. 14-15) is
correct.
The Supreme Court has ruled that "Paragraph 33 of
Patent Office Administrative Order No. 3 (as amended,
dated September 18, 1947) entitled 'Rules of Practice in
the Philippines Patent Office relating to the Registration of
Copyright Claims' promulgated pursuant to Republic Act
165, provides among other things that an intellectual
creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within the (60) days if
made elsewhere, failure of which renders such creation
public property." (Santos v. McCullough Printing Company,
12 SCRA 324-325 [1964]. Indeed, if the general public has
made use of the object sought to be copyrighted for thirty
(30) days prior to the copyright application the law deems
the object to have been donated to the public domain and
the same can no longer be copyrighted.
A careful study of the records reveals that the song "Dahil
 LAW IN INTELLECTUAL PROPERTY: CASE DIGESTS
MON 7:30- 9:30
Sa Iyo" which was registered on April 20, 1956 (Brief for
Appellant, p. 10) became popular in radios, juke boxes, etc.
long before registration (TSN, May 28, 1968, pp. 3-5; 25) while
the song "The Nearness Of You" registered on January 14,
1955 (Brief for Appellant, p. 10) had become popular twenty
five (25) years prior to 1968, (the year of the hearing) or from
1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat
Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both
registered on July 10, 1966, appear to have been known and
sang by the witnesses as early as 1965 or three years before
the hearing in 1968. The testimonies of the witnesses at the
hearing of this case on this subject were unrebutted by the
appellant. (Ibid, pp. 28; 29 and 30).
Under the circumstances, it is clear that the musical
compositions in question had long become public property, and
are therefore beyond the protection of the Copyright Law.

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