1

Diaz vs People of the Philippines

G.R. No. 180677 February 18, 2013

Facts:

Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that Diaz was selling counterfeit LEVI’S
501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private investigation group to verify the
information. Surveillance and the purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the tailoring
shops of Diaz were counterfeit or imitations of LEVI’S 501. Levi’s Philippines then sought the assistance of the National Bureau of
Investigation (NBI) for purposes of applying for a search warrant against Diaz to be served at his tailoring shops. The search warrants
were issued in due course. Armed with the search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake
LEVI’S 501 jeans from them. Levi’s Philippines claimed that it did not authorize the making and selling of the seized jeans; that each of
the jeans were mere imitations of genuine LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate design,
the tab, and the leather patch; and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch. Diaz stated that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans
Tailoring” in the jeans that he made and sold; that the label “LS Jeans Tailoring” was registered with the Intellectual Property Office;
that his shops received clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or designs were done in
accordance with instructions of the customers; that since the time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily recognizable because the label “LS Jeans Tailoring,” and the
names of the customers were placed inside the pockets, and each of the jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;”
and that the leather patch on his jeans had two buffaloes, not two horses.

Issue:

Whether or not Diaz is liable for trademark infringement.

Held:

No. Section 155 of R.A. No. 8293 defines the acts that constitute infringement of trademark, viz:

Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in
a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes
place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether The
trademark being infringed is registered in the Intellectual Property Office;

there is actual sale of goods or services using the infringing material.

The elements of the offense of trademark infringement under the Intellectual Property Code are, therefore, the following:

1. The trademark being infringed is registered in the Intellectual Property Office;

2. The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the
infringing mark is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services;
4. The use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
5. The use or application of the infringing mark is without the consent of the trademark owner or the assignee thereof.
As can be seen, the likelihood of confusion is the gravamen of the offense of trademark infringement. There are two tests to
determine likelihood of confusion, namely: the dominancy test, and the holistic test. The contrasting concept of these tests was
explained in Societes Des Produits Nestle, S.A. v. Dy, Jr., thus:

x x x. The dominancy test focuses on the similarity of the main, prevalent or essential features of the competing trademarks that might
cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an
effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive purchasers.

The holistic test considers the entirety of the marks, including labels and packaging, in determining confusing similarity. The focus is not
only on the predominant words but also on the other features appearing on the labels.

The holistic test is applicable here considering that the herein criminal cases also involved trademark infringement in relation to jeans
products. Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in determining the likelihood
of confusion between them. The maong pants or jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular
in the Philippines. The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand and quite expensive. Such
jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diaz’s
as well as not acquired on a “made-to-order” basis. Under the circumstances, the consuming public could easily discern if the jeans
were original or fake LEVI’S 501, or were manufactured by other brands of jeans.

Given the foregoing, it should be plain that there was no likelihood of confusion between the trademarks involved. Thereby, the
evidence of guilt did not satisfy the quantum of proof required for a criminal conviction, which is proof beyond reasonable doubt.
According to Section 2, Rule 133 of the Rules of Court, proof beyond a reasonable doubt does not mean such a degree of proof as,
excluding possibility of error, produces absolute certainty. Moral certainty only is required, or that degree of proof which produces
conviction in an unprejudiced mind. Consequently, Diaz should be acquitted of the charges.

ABS-CBN Corp., petitioner vs. GMA Pres. and CEO Atty. Felipe Gozon, GMA Vice President and COO Gilberto Duavit Jr., Marissa L. Flores,
Jessica A. Soho, GMA Head of News Operations Grace Dela Peña-Reyes, GMA News Program Manager John Oliver Manalastas, et. al.,
respondents.
G.R. No. 195956, 1 March 2015
Ponente: Justice Marvic F. Leonen

FACTS:

On August 13, 2004, petitioner ABS-CBN filed a criminal complaint against respondent GMA for (alleged) act of copyright infringement
under Sections 177 and 211 of the Intellectual Property Code (RA 8293, as amended), because the respondent aired footage of the
arrival and homecoming of OFW Angelo dela Cruz at NAIA from Iraq without the petitioner's consent. ABS-CBN stated that it has an
agreement with Reuter's that the petition will contribute news and content that it owns and makes to Reuters in exchange of the latter's
news and video material, and Reuters will ensure that ABS-CBN's materials cannot be aired in the country. The respondent was a
subscriber of Reuter's and CNN live feeds. After it received the live feed of Angelo Dela Cruz's arrival and homecoming from Reuter's, it
immediately aired the video from that news feed. The respondent alleged that its news staff was not aware that there was (a news
embargo) agreement between ABSCBN and Reuters. Respondent alleged that it was not also aware that it aired petitioner's footage.
Assistant City Prosecutor Dindo Venturanza issued resolution on 3 December 2004 which found probable cause to indict Dela Peña-
Reyes and Manalastas. The respondents appealed the Prosccutor's resolution before DOJ. DOJ Secretary Raul M. Gonzalez ruled in favor
of respondents in his resolution dated 1 August 2005 and held that good faith may be raised as a defense in the case. Meanwhile, DOJ
Acting Secretary Alberto C. Agra issued a resolution on 29 June 2010 which reversed Sec. Gonzalez's resolution and found probable
cause to charge Dela Peña-Reyes, Manalastas, as well as to indict Gozon, Duavit, Jr., Flores, and Soho for violation of the Intellectual
Property Code (due to copyright infringement). The Court of Appeals rendered a decision on 9 November 2010, which granted the
Petition for Certiorari to reverse and set aside DOJ Sec. Alberto Agra's resolution and a prayer for issuance of a temporary restraining
order and/or Writ of Preliminary Injunction. The appellate court stated that the petitioner has copyright of its news coverage, but
respondents’ act of airing five (5) seconds of the homecoming footage without notice of the “No Access Philippines” restriction of the
live Reuter's video feed, was undeniably attended by good faith and thus, serves to exculpate from criminal liability under the Intellectual
Property Code.

ISSUES:

W/N there is probable cause to find respondents to be held liable criminally for the case of copyright infringement under the Intellectual
Property Law (RA 8293, as amended)?

HELD:

The Supreme Court PARTIALLY GRANTED ABS-CBN’s petition and ordered RTC Q.C. Branch 93 to continue with the criminal proceedings
against Grace Dela PeñaReyes and John Oliver Manalastas due to copyright infringement. The other respondents, Atty. Felipe Gozon,
Gilberto Duavit Jr., Marissa L. Flores, and Jessica A. Soho were held not liable for the (criminal) act of copyright infringement. The Court
held that their mere membership in GMA7's Board of Directors does not mean that they have knowledge, approval, or participation in
the criminal act of copyright infringement., as there is a need for their direct/active participation in such act. Also, there was lack of
proof that they actively participated or exercised moral ascendancy over Manalastas and Dela Cruz-Pena. Contrary to GMA’s contention,
the Supreme Court deemed GMA's mere act of rebroadcast of ABS-CBN’s news footage (arrival and homecoming of OFW Angelo dela
Cruz at NAIA from Iraq last 22 July 2004) for 2 mins and 40 secs. without the latter's authority creates probable cause to find GMA's
news personnel Manalastas and Dela Peña-Reyes criminally liable for violating provisions of Intellectual Property Code (Section 216-
217 of RA 8293, as amended) that imposes strict liability for copyright infringement, since they have not been diligent in their
functions to prevent that footage from being aired on television. They knew that there would be consequences in carrying ABS-CBN’s
footage in their broadcast – which is why they allegedly cut the feed from Reuters upon seeing ABS-CBN’s logo and reporter. The
difference of an act mala in se and mala prohibita was stated in the present case. Acts mala in se requires presence of criminal intent
and the person's knowledge of the nature of his/her act, while in acts mala prohibita, presence of criminal intent and the person's
knowledge is not necessary. The Court also stated that Philippine laws on copyright infringement does not require criminal intent (mens
rea) and does not support good faith as a defense. Thus, the act of infringement and not the intent is the one that causes the damage.
It held that ABS-CBN's video footage is copyrightable because it is under “audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any process for making audiovisual recordings.” It also stated that news or the
event itself is not copyrightable. The Court differentiated idea and expression – idea meant as “a form, the look or appearance of a
thing” while expression is its reality or the “external, perceptible world of articulate sounds and visible written symbols that others can
understand.” Thus, the Supreme Court stated that “only the expression of an idea is protected by copyright, not the idea itself”, citing
the US Supreme Court's decision in Baker vs Selden (101 U.S. 99). In the present case, expression applies to the event captured and
presented in a specific medium via cinematography or processes analogous to it. The Court also gave the four-fold test under the Fair
Use Doctrine (stated in section 185 of RA 8293 or the Intellectual Property Code, as amended) to determine fair use: a. The purpose
and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; b. The nature
of the copyrighted work; c. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and d. The
effect of the use upon the potential market for or value of the copyrighted work. Fair use, which is an exception to copyright owner’s
monopoly of the work's usage, was defined by the Supreme Court as privilege to use the copyrighted material in a reasonable manner
without the copyright owner's consent or by copying the material's theme or idea rather than its expression. It also said that
determination of whether the Angelo dela Cruz footage is subject to fair use is better left to the trial court where the proceedings are
currently pending.

EY Industrial Vs. Shen Dar

G.R. No. 184850, October 20, 2010

Facts:
 EY Industrial Sales is a domestic corporation engaged in the production, distribution and sale of air compressors.
 Shen Dar is a Taiwan-based foreign corporation engaged in the manufacture of compressors.
 From 1997-2004, EY Industrial imported air compressors from Shen Dar.
 In 1997, Shen Dar filed a Trademark Application with the Intellectual Property Office (IPO) for the mark “Vespa” for the use of air
compressors. It was approved in 2007.
 In 1999, EY Industrial filed a Trademark Application also for the mark “VESPA” for the use of air compressors. It was approved in
2004.
 Shen Dar filed a Petition for Cancellation of the Industrial’s EYES COR with the Bureau of Legal Affairs contending that: a. there was
a violation of Section 123.1 (D) of the Intellectual Property Code which provides that: A mark cannot be registered if it is identical
to a mark with an earlier filing or priority date. b. EY Industrial is only a distributor of the air compressors
 On the other hand, EY Industrial alleged that it is the sole assembler and fabricator of VESPA air compressors since the early 1990s
and that Shen Dar supplied them air compressors with the mark “SD” and not “VESPA”

Issues:
1. Who between EY Industrial and Shen Dar is entitled to the trademark “VESPA”. EY INDUSTRIAL SALES
2. WON the Bureau of Legal Affairs has the power to cancel the application of Shen Dar even if it is Shen Dar who filed the case? YES

Held:

1st: EY INDUSTRIAL has the right to the trademark.

Based on the evidence, EYIS owns the “VESPA” trademark; it has prior use, as shown by various sales invoices.

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. It is non sequitur to hold that porque EYIS is a distributor, it is no
longer the owner.

FIRST-TO-FILE RULE

Under Section 123.1 of IPO provision, the registration of a mark is prevented with the filing of an earlier application for registration.

This must not, however, be interpreted to mean that ownership should be based upon an earlier filing date. While RA 8293 (IPC)
removed the previous requirement of proof of actual use prior to the filing of an application for registration of a mark, proof of prior
and continuous use is necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to oppose the
registration of a mark.

When we talk about trademark, we are just talking about the mark. It does not include the product. Shen Dar is the manufacturer of the
product, but they did not name the product as VESPA. It was EY that named the VESPA, and used the VESPA, even though they were
only the distributors. 
It was EY that actually used the trademark through the use of receipts, and other documents.

The first to file rule – According to the SC that Shen Dar filed under the old IPC where prior use is the one applied. 


2nd: BLA has the power to cancel the application.

Shen Dar challenges the propriety of such cancellation on the ground that there was no petition for cancellation as required under Sec.
151 of RA 8293.

The IPO Director General stated that, despite the fact that the instant case was for the cancellation of the COR issued in favor of EYIS,
the interests of justice dictate, and in view of its findings, that the COR of Shen Dar must be cancelled.
The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative bodies are not bound by technical rules of
procedure. Such principle, however, is tempered by fundamental evidentiary rules, including due process.

The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude the cancellation of Shen Dar’s
COR. It must be emphasized that, during the hearing for the cancellation of EYIS’ COR before the BLA, Shen Dar tried to establish that
it, not EYIS, was the true owner of the mark “VESPA” and, thus, entitled to have it registered. Shen Dar had more than sufficient
opportunity to present its evidence and argue its case, and it did. It was given its day in court and its right to due process was
respected. The IPO Director General’s disregard of the procedure for the cancellation of a registered mark was a valid exercise of his
discretion.

Remember, EY’s application was the one granted, and it is Shen Dar’s application that was cancelled. 
It does not mean that even you
were the one who filed, it your application cannot be cancelled. The BLA, who has jurisdiction over the case, were able to determine
that it is Shen Dar’s trademark that should not have been issued with registration, even it is the plaintiff.

TAIWAN KOLIN CORPORATION v. KOLIN ELECTRONICS CO., GR No. 209843, 2015-03-25

Facts:

The assailed issuances effectively denied petitioner's trademark application for the use of "KOLIN" on its television and DVD players.

Taiwan Kolin filed with the Intellectual Property Office (IPO), then Bureau of Patents, Trademarks, and Technology Transfer, a trademark
application,... for the use of "KOLIN" on a combination of goods,... including colored televisions, refrigerators, window-type and split-
type air conditioners, electric fans and water dispensers. Said goods allegedly fall under Classes 9, 11, and 21 of the Nice Classification
(NCL).

Application... would eventually be considered abandoned for Taiwan Kolin's failure to respond to IPO's Paper No. 5 requiring it to elect
one class of good for its coverage. However, the same application was subsequently revived... with petitioner electing Class 9 as the
subject of its application, particularly: television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic
equipment, flat iron, vacuum cleaners, cordless handsets,... videophones, facsimile machines, teleprinters, cellular phones and
automatic goods vending machine. The application would in time be duly published.[... respondent Kolin Electronics Co., Inc. (Kolin
Electronics) opposed petitioner's revived application,... As argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly
similar, with its "KOLIN"... mark registered on November 23, 2003, covering the following products under Class 9 of the NCL: automatic
voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-
DC

"KOLIN" registration was, as it turns out, the subject of a prior legal dispute

In the said case, Kolin Electronics' own application was opposed by Taiwan Kolin,... being, as Taiwan Kolin claimed, the prior registrant
and user of the "KOLIN" trademark, having registered the same in Taipei, Taiwan

The Bureau of Legal Affairs of the IPO (BLA-IPO), however, did not accord priority right to Taiwan Kolin's Taipei... registration absent
evidence to prove that it has already used the said mark in the Philippines as early as 1988. On appeal, the IPO Director General affirmed
the BLA-IPO's Decision. Taiwan Kolin elevated the case to the CA, but without injunctive relief, Kolin

Electronics was able to register the "KOLIN" trademark on November 23, 2003 for its products.[6] Subsequently, the CA, on July 31,
2006, affirmed[7] the Decision of the Director General.

In answer to respondent's opposition... etitioner argued that it should be accorded the benefits of a foreign-registered mark under Secs.
3 and 131.1 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the

Philippines (IP Code);[8] that it has already registered the "KOLIN" mark in the People's Republic of China, Malaysia and Vietnam, all of
which are parties to the Paris Convention for the Protection of Industrial Property (Paris Convention) and the

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS);and that benefits accorded to a well-known mark should be
accorded to petitioner.
Ruling of the BLA-IPO... the BLA-IPO denied petitioner's application... hus, petitioner appealed the above Decision to the Office of the
Director General of the IPO.

Ruling of the IPO Director General... the IPO Director General rendered a Decision[15] reversing that of the BLA-IPO in the following
wise:... hereby GIVEN DUE COURSE subject to the use limitation or restriction for the goods "television and DVD player"

In so ruling, the IPO Director General ratiocinated that product classification alone cannot serve as the decisive factor in the resolution
of whether or not the goods are related and that emphasis should be on the similarity of the products involved and not on the arbitrary...
classification or general description of their properties or characteristics. As held, the mere fact that one person has adopted and used
a particular trademark for his goods does not prevent the adoption and use of the same trademark by others on articles of a different...
description.[16]

Aggrieved, respondent elevated the case to the CA.

he CA found for Kolin Electronics, on the strength of the following premises: (a) the mark sought to be registered by Taiwan Kolin is
confusingly similar to the one already registered in favor of Kolin Electronics; (b) there are no other designs,... special shape or easily
identifiable earmarks that would differentiate the products of both competing companies;[17] and (c) the intertwined use of television
sets with amplifier, booster and voltage regulator bolstered the fact that televisions can be... considered as within the normal expansion
of Kolin Electronics,[

Respondent avers that Kolin Electronics' and Taiwan Kolin's products are closely-related not only because both fall under Class 9 of the
NCL, but mainly because they both relate to electronic products, instruments, apparatus, or appliances.[34] Pushing the... point,
respondent would argue that Taiwan Kolin and Kolin Electronics' goods are inherently similar in that they are all plugged into electric
sockets and perform a useful function.[3

Issues:

The Issue

The primordial issue to be resolved boils down to whether or not petitioner is entitled to its trademark registration of "KOLIN" over its
specific goods of television sets and DVD players. Petitioner postulates, in the main, that its goods are not closely related to those of

Kolin Electronics. On the other hand, respondent hinges its case on the CA's findings that its and petitioner's products are closely-related.
Thus, granting petitioner's application for trademark registration, according to respondent, would cause confusion as to the... public.

Ruling:

The petition is impressed with merit.

Identical marks may be registered for... products from the same classification

The parties admit that their respective sets of goods belong to Class 9 of the NCL, which includes the following:[22]

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-
saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating,
regulating or... controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers,
calculating machines, data... processing equipment, computers; computer software; fire-extinguishing apparatus.

But mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears to be an identical
mark, if that be the case.

It is hornbook doctrine, as held in the above-cited cases, that emphasis should be on the similarity of the products... involved and not
on the arbitrary classification or general description of their properties or characteristics. The mere fact that one person has adopted
and used a trademark on his goods would not, without more, prevent the adoption and use of the same trademark by others on...
unrelated articles of a different kind.[2

Taiwan Kolin's goods are classified as home appliances as opposed to Kolin Electronics' goods which are power supply and audio
equipment accessories;

Taiwan Kolin's television sets and DVD players perform distinct function and purpose from Kolin Electronics' power supply and audio
equipment; and
Taiwan Kolin sells and distributes its various home appliance products on wholesale and to accredited dealers, whereas Kolin Electronics'
goods are sold and flow through electrical and hardware stores.

The ordinarily intelligent buyer... is not likely to be confused

While both competing marks refer to the word "KOLIN" written in upper case letters and in bold font, the Court at once notes the
distinct visual and aural differences between them: Kolin Electronics' mark is italicized and colored black while that of Taiwan Kolin is
white in... pantone red color background. The differing features between the two, though they may appear minimal, are sufficient to
distinguish one brand from the other.

The... products of the contending parties are relatively luxury items not easily considered affordable. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is
less... likely.[

All told, We are convinced that petitioner's trademark registration not only covers unrelated good, but is also incapable of deceiving the
ordinary intelligent buyer. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence
to be... able to see the differences between the two trademarks in question

WHEREFORE, in view of the foregoing, the petition is hereby GRANTED. The Decision and the Resolution of the Court of Appeals in CA-
G.R. SP No. 122565, dated April 30, 2013 and November 6, 2013, respectively, are hereby REVERSED and SET ASIDE.

Accordingly, the Decision of the Intellectual Property Office Director General in Inter Partes Case No. 14-2006-00096, dated November
23, 2011, is hereby REINSTATED.

Principles:

Citing Sec. 123(d) of the IP Code,[11] the BLA-IPO held that a mark cannot be registered if it is identical with a registered mark belonging
to a different proprietor in respect of the same or closely-related goods.

But mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears to be an identical
mark, if that be the case.

It is hornbook doctrine, as held in the above-cited cases, that emphasis should be on the similarity of the products... involved and not
on the arbitrary classification or general description of their properties or characteristics. The mere fact that one person has adopted
and used a trademark on his goods would not, without more, prevent the adoption and use of the same trademark by others on...
unrelated articles of a different kind.[27]... whether or not the products of the parties involved are related the doctrine in Mighty
Corporation is authoritative. There, the Court held that the goods should be tested against several factors before arriving at... a sound
conclusion on the question of relatedness. Among these are:

(a) the business (and its location) to which the goods belong;

(b) the class of product to which the goods belong;

(c) the product's quality, quantity, or size, including the nature of the package, wrapper or container;

(d) the nature and cost of the articles;

(e) the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or
quality;

(f) the purpose of the goods;

(g) whether the article is bought for immediate consumption, that is, day-to-day household items;

(h) the fields of manufacture;

(i) the conditions under which the article is usually purchased; and

(j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold.[3

Expensive and valuable items are normally bought only after deliberate, comparative and analytical... investigation. But mass products,
low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer
without great care x x x.(emphasis added)

5
 G.R. No. 188526, November 11, 2013

CENTURY CHINESE MEDICINE CO., et.,Petitioners vs. PEOPLE OF THE PHILIPPINES AND LING NA LAU

Facts:

Respondent Ling Na Lau, doing business under Worldwide Pharmacy, is the sole distributor and registered trademark owner
of TOP GEL T.G. & DEVICE OF A LEAF papaya whitening soap as shown by a Certificate of Registration issued to her by the Intellectual
Property Office (IPO) for a period of ten years from August 24, 2003.

On November 3, 2004, Lau’s representative, Ping Na Lau (Ping), requested the NBI for assistance for an investigation on several
drugstores that were selling counterfeit whitening papaya soaps bearing the general appearance of their products. Agent Furing of the
NBI assigned to the case executed an affidavit stating that they were able to buy whitening soaps bearing the mentioned trademark
from a list of drugstores which included herein petitioners. A search warrant was then issued by the RTC Branch 143, Makati, against
petitioners for Violations of Sections 168 and 155, both in relation to section 170 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines. Section 168, in relation to section 170, penalizes unfair competition while section 155, in
relation to section 170, punishes trademark infringement.

Petitioners then collectively filed their Motion to Quash the Search Warrants contending that their issuances violated the rule
against forum shopping; that Benjamin Yu (Yu) is the sole owner and distributor of the product known as TOP GEL and there was a
prejudicial question posed Civil Case No. 05-54747 filed by Yu against respondent for damages due to infringement of trademark/trade
name, unfair competition with prayer for the immediate issuance of a temporary restraining order and/or preliminary prohibitory
injunction.

Issue: Whether or not the motion to quash the Search Warrants should be sustained

Ruling: No.

The applications for the issuance of the assailed search warrants applications concern the trademark TOP GEL T.G. & DEVICE
OF A LEAF. Private respondent was issued a Certicate of Registration No. 4-2000-009881 of said trademark on August 24, 2003 by the
Intellectual Property Office, and is thus considered the lawful holder of the said trademark. Being the registrant and the holder of the
same, private respondent had the authority to enforce and protect intellectual property rights over it. Further, said applications for the
search warrants were granted after by Judge Laguilles after examining under oath the applicant Agent Furing of the NBI and his witnesses
Ping Na Lau and Junayd R. Ismael. It is therefore clear that the requisites for the issuance of the search warrants had been complied
with and that there is probable cause to believe that an offense had been committed by petitioners against respondent, as holder of
the trademark TOP GEL T.G. & DEVICE OF A LEAF.

Further, at the time the applications for the issuance of the search warrants, Civil Case No. Q-05-54747 which the petitioners
contend that a prejudicial question was raised, on June 10, 2005, because of the pendency of a case involving the same issues and
parties before the IPO and before the applications for the issuance of the assailed search warrants on November 21, 2005, the IPO had
issued a writ of preliminary injunction against Cu ordering him and his company to cease and desist using the trademark TOP GEL T.G.
& DEVICE OF A LEAF or any colorable imitation thereof on Papaya whitening soaps they manufacture, sell, and/or offer for sale.
Petitioners, having admitted that they have derived their TOP GEL products from Yu, are notified of such injunction as it was published
in The Philippine Star newspaper on October 30, 2005 and were therefore enjoined from selling the same.

More importantly, during the pendency of petitioners’ motion to quash in the RTC, a compromise agreement between
respondent and Yu was approved by the IPO, stating, among others, that Yu acknowledge that exclusive right of Lau over the subject
trademark for use on papaya whitening soap as evidenced by the Certificate of Registration and that Yu and his company now undertake
to voluntarily cease and desist from using the aforesaid tradename and trademark, and further undertake not to manufacture, sell and
distribute and otherwise compete with complainant, now and at anytime in the future.

Therefore, respondent, as owner of such registered trademark has the right to the issuance of the search warrants.

UFC PHILIPPINES v BARRIO FIESTA GR No. 198889

Facts:

Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organizedand existing under Philippine laws. It is the emergent
entity in a merger with UFC Philippines Inc. that was

completed on Feb. 11, 2009. On April 4, 2002, respondent Barrio Fiesta Manufacturing Coroporation filed for the mark “PAPA BOY &
DEVICE” for goods under Class 30, specifically for “lechon sauce.” TheIntellectual Property Office (IPO) published said application for
opposition in the IP Phil e-Gazette on Sept. 8 2006. Petitioner Nutri-asia filed with the IPO Bureau of Legal Affairs a Verified Notice of
Opposition to the application alleging that the mark “PAPA” is for use on banana catsup and other similar goods first used in 1954 by
Neri Papa. After using “PAPA” for 27 years, Neri Papa subsequently assigned the mark to Herman Reyes who filed an application to
register the said “PAPA” mark for use on banana catsup, chili sauce, achara, banana chips and instate ube powder.

On November 7, 2006 the registration was assigned to Nutri-Asia. The company has not abandoned the use of the mark “PAPA”
and the variations (such as “PAPA BANANA CATSUP label” and “PAPA KETSARAP”.) thereof as it continued the use of the mark up to the
present. Petitioner further allege that “PAPA BOY & DEVICE” is identical to the mark “PAPA” owned by Nutri-Asia and duly registered
in its favor. The petitioner contends that the use of “PAPA” by the respondent-applicant would likely result in confusion and deception.
The consuming public, particularly the unwary customers, will be deceived, confused, and mistaken into believing that respondent-
applicant's goods come from Nutri-Asia, which is particularly true since Southeast Asia Food Inc, sister company of Nutri-Asia, have been
major manufacturers and distributors of lechon sauce since 1965 under the registered mark “Mang Tomas”.

The IPO-BLA rejected Barrio Fiesta’s application for “PAPA BOY & DEVICE”. Respondent appealed before the IPO Director
General, but the appeal was denied. The CA, however, reversed the decision of the IPO-BLA and ruled to grant the application. Petitioner
brought the case before the Supreme Court, seeking the reversal of the decision and resolution of the CA.

Issue:

Whether or not by using the “dominant feature” of Nutri-Asia’s “PAPA” mark for “PAPA BOY & DEVICE” would constitute trademark
infringement.

Held:

Petition has merit.

In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 43 we defined trademark as "any distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them
from those manufactured, sold, or dealt by others." We held that a trademark is "an intellectual property deserving protection by law."
The Intellectual Property Code provides:

Section 147. Rights Conferred.

- 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect
of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be presumed. To determine the likelihood of confusion, the Rules of Procedure
for Intellectual Property Rights Cases, Rule 18, provides:

RULE 18 Evidence in Trademark Infringement and Unfair Competition Cases

SECTION 1.

Certificate of Registration.

- A certificate of registration of a mark shall be prima facie evidence of:

a) the validity of the registration;

b) the registrant's ownership of the mark; and

c) the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto

specified in the certificate.

SECTION 3.

Presumption of Likelihood of Confusion.

Likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or services.

SECTION 4.

Likelihood of Confusion in Other Cases. – In determining whether one trademark is confusingly similar to or is a colorable imitation of
another, the court must consider the general impression of the ordinary purchase buying under the normally prevalent conditions in
trade and giving the attention such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in controversy as they are

encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the
marks, these must be weighed against one another to see which predominates. In determining likelihood of confusion between marks
used on non-identical goods or services, several factors may be taken into account, such as, but not limited to:

a) the strength of plaintiffs mark;

b) the degree of similarity between the plaintiffs and the defendant's

marks;

c) the proximity of the products or services;

d) the likelihood that the plaintiff will bridge the gap;

e) evidence of actual confusion;

f) the defendant's good faith in adopting the mark;

g) the quality of defendant's product or service; and/or

h) the sophistication of the buyers.

"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a 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.

SECTION 5.

Determination of Similar and Dissimilar Goods or

Services. - Goods or services may not be considered as being similar or dissimilar to each other on the ground that, in any registration
or publication by the Office, they appear in different classes of the Nice Classification. On the other hand, R.A. No. 166 defines a
"trademark" as any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by another.
A trademark, being a special property, is afforded protection by law. But for one to enjoy this legal protection, legal protection ownership
of the trademark should right be established.
The ownership of a trademark is acquired by its registration and its actual use by the manufacturer or distributor of the goods made
available to the purchasing public. The prima facie presumption brought by the registration of a mark may be challenge in an appropriate
action. Moreover the protection may likewise be defeated by evidence of prior use by another person. This is because the trademark is
a creation of use and belongs to one who first used it in trade or commerce. The essential element of infringement under the law is
that the infringing mark is likely to cause confusion. There are two tests used to determine likelihood of confusion: the dominancy test
and the holistic test. The dominancy test applies to this case.

The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required
that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments.

xx xx

The Totality Test

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. The totality or holistic test only relies on visual comparison
between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons
and overallimpressions between the two trademarks. There are two types of confusion in trademark infringement: confusion of goods
and confusion of business.

In Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished the two types of
confusion: Callman notes two types of confusion. The first is the 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." In which case, "defendant's goods are then
bought as the plaintiff's, and the poorer quality of the former reflects adversely on the plaintiff's reputation." The other is the confusion
of business: "Here 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."

In relation to this, the court has held that 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 Court has recognized that the registered trademark owner enjoys protection in product and market areas that are the
normal potential expansion of his business. The scope of protection thus extends to protection from infringers with related goods.

It cannot be denied that since petitioner’s product, catsup, and respondent’s product, lechonsauce, are both household
products in similar packaging the public could think that petitioner Nutri-Asia has expanded its product mix to include lechon sauce,
which is not unlikely

considering the nature of petitioner’s business. Moreover, the CA erred in finding that “PAPA” is a common term of endearment for
“father” and therefore could not be claimed for exclusive use and ownership. What was registered was not “Papa” as denied in
dictionary, but “Papa” as the last name of the owner of the brand, making it a registrable mark.

Petition granted.

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS vs KONINKLIJKE PHILIPS ELECTRONICS N.V.

GR 186088 Marvh 22, 2017 CJ Sereno

Nature
Petition for review on certiorari assailing decision of CA reversing decision of IPP-ODG and IPP-BLA upholding the petitioner’s trademark
application.

Facts

In April 2000, PHILITES filed a trademark application covering its fluorescent bulb, incandescent light, starter and ballast. In 2006, after
publication, Philips filed a Verified Notice of Opposition alleging that use and registration of the trademark will mislead the public as to
origin, nature, quality and characteristic of the goods on which it is affixed because the letter P in the name of Philites is “identical and
confusingly similar mark” that clearly infringes upon the established rights of Philips over its internationally well-known mark.

PROCEEDINGS BEFORE THE SUPREME COURT:

IPP-BLA (Bureau of Legal Affairs): In November 2006, IPP-BLA Director denied the opposition and granted the application and held that:

1. there should have been prior determination of whether the mark was “identical and confusingly similar mark” that clearly
infringes upon the established rights of Philips;
2. from the evidence presented, the marks are so unlike both visually and aurally;
3. no confusion was likely to occur making the following observations:
a. the four stars and three wavy lines inside a circle in the Philips mark did not appear in Philites
b. the name Philips is named after its founders while Philites is a combination of “Philippines and lights” and since it has no
dictionary meaning, the combination is an arbitrary word capable of being made a trademark
c. even the pronunciation is observed to be dissimilar
d. color alone does not function as a trademark
e. there were phrases in the packaging that are not present in the opposer’s package and besides, these terms used are of
the nature that can be appropriated by anyone

IPP-DG: on appeal, the IPP-DG affirmed the decision of IPP-BLA noting that:

1. the difference in the second syllables provided the variance of the 2 marks both visually and aurally
2. there were glaring differences in design and general appearance of both marks
3. the issue that petitioner used a drawing in its packaging different to what is submitted is not under the remedy of opposing an
application but filing an action for trademark infringement and/or unfair competition

CA: reversed the decision of IPP-DG and held that PHILITES wanted to ride on the long-established reputation and goodwill of
respondent’s trademark.

Issues:

1. Whether or not respondent’s mark is a registered and well known mark in the Philippines
2. Whether or not the mark applied for by the Philites is identical or confusingly similar to Philips

Held

1. YES. As to first issue, it was held that Philips mark is already registered and a well-known mark in the Philippines. The CA ruling
is affirmed as to registration of Philip’s and Philip’s shield emblem as evidenced by Certificate of Registration and not only that
it’s registered here in PH but also is well-known internationally as well.

A trademark is an intellectual property consisting of "any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from
those manufactured, sold, or dealt by others” and "susceptible to registration if it is crafted fancifully or arbitrarily and is
capable of identifying and distinguishing the goods of one manufacturer or seller from those of another."

Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark shall be acquired through
registration validly done in accordance with the provisions of this law. Corollary to that rule, Section 123 provides which marks
cannot be registered specifically those that is identical with another proprietor with an earlier filing or priority date in respect
 of same goods or services, closely-related goods or if it nearly resembles a mark as likely to deceive or confuse, or a mark that
is known internationally and in the Philippines whether such mark is registered in PH.

2. YES. PHILITES seeks to register a mark nearly resembling that of the respondent, which is likely to deceive or cause confusion
among consumers. Two tests have been developed the dominancy test, and the holistic or totality test. The dominancy test
focuses on similarity of prevalent or dominant features of the competing trademarks that might cause confusion giving more
consideration as to aural and visual impressions created by the marks. On the other hand, holistic or totality test necessitates
a consideration of the entirety of marks as applied to products, including the labels and packaging, in determining confusing
similarity which focuses not only on predominant words but also to other features appearing on both labels.

Applying the dominancy test, the SC held that the PHILITES mark bears an uncanny resemblance or confusing similarity with
PHILIPS because:
1. the first five letters P-H-I-L-I is so prevalent that the consuming the public who doesn’t have the luxury of time to ruminate
the phonetic sounds of the trademarks and to find out which one has a short or long vowel sound.
2. In addition to that, both trademarks are used in the sale of same goods.

Applying the holistic test, there is a confusing similarity in the packaging and labels of the products since both uses light bulbs
in the pictures of their packaging. The use and hue or color, according to SC affirming the CA, is of no moment because it will
likely to cause confusion or deception to the ordinary purchaser.

Disposition: PETITION is DISMISSED. CA decision is AFFIRMED.

8
GEMMA ONG AKA MARIA GEMMA CATACUTAN vs. PEOPLE OF THE PHILIPPINES

GR 169440 November 23, 2011 Justice Leonardo-De Castro

Nature

Petition for review on certiorari under Rule 45 to set aside and reverse CA decision affirming decision of RTC convicting Gemma of the
crime Infringement of Intellectual Property.

Facts

On September 2003, the Regional Trial Court of Manila convicted Gemma Ong for Infringement under Sec. 155 in relation to Sec. 170
of Republic Act. No. 8293 or the Intellectual Property Code. This decision was assailed based on facts established that Gemma Ong was
engaged in the distribution, sale and offering for sale of counterfeit Marlboro cigarettes which caused confusion and deception to public
and without permit or authority from the Telengtan Brothers and Sons Inc., the exclusive manufacturer of Marlboro cigarette in the
Philippines and from the Philip Morris Products, Inc. (PMPI) which is the registered owner and proprietor of the MARLBORO trademark.

After the issuance of a search warrant, the search was executed and in the premises was Gemma Ong, the common law wife of the
owner of the warehouse where Marlboro cigarettes were confiscated and were confirmed to be fake or counterfeit.

PROCEEDINGS BEFORE THE SUPREME COURT:

RTC: Convicted Gemma Ong despite her denial of the crime trademark infringement (Section 155 in relation to Section 170)

CA: affirmed the decision of RTC.

Issue/s:

Whether or not Gemma, setting aside the issue of alleged mistaken identity, is guilty beyond reasonable doubt of Infringement under
the Intellectual Property Code.

Held: YES.
Section 155 in relation to Section 170 of RA 8293 provides that Infringement takes place if any person without the consent of the owner
of a registered mark uses in commerce any reproduction, counterfeit or copy a registered mark including other preparatory steps
necessary to carry out the sale of any counterfeit goods or services which are likely to deceive or confuse regardless of whether there
is actual sale or not.

Section 170 provides the penalty of imprisonment from 2-5 years and fine of 50k-200k for persons guilty of Infringement.

In McDonald’s Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger, Inc., Supreme Court held that 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.
A mark is valid if it is distinctive and not barred from registration. Once registered, not only the mark’s validity, but also the registrant’s
ownership of the mark is prima facie presumed.

Anent the element of confusion, both the RTC and the Court of Appeals have correctly held that the counterfeit cigarettes seized from
Gemma’s possession were intended to confuse and deceive the public as to the origin of the cigarettes intended to be sold, as they not
only bore PMPI’s mark, but they were also packaged almost exactly as PMPI’s products.

The prosecution was able to establish that the trademark "Marlboro" was not only valid for being neither generic nor descriptive, it was
also exclusively owned by PMPI, as evidenced by the certificates of registration issued by the Intellectual Property Office of the
Department of Trade and Industry.

9
MANOLO SAMSON vs JUDGE DAWAY of RTC QC Branch 90, PEOPLE OF THE PHILIPPINES AND CATERPILLAR, INC.

GR 160054-55 July 21, 2004 Justice Ynares-Santiago

Nature

Assailed in this petition for certiorari is the March 26, 2003 Order of the RTC of Quezon City, which denied petitioners (1) motion to
quash the information; and (2) motion for reconsideration of the August 9, 2002 Order denying his motion to suspend the arraignment
and other proceedings in Criminal Case Nos. Q-02-108043-44. Petitioner also questioned its August 5, 2003 Order which denied his
motion for reconsideration.

Facts

On March 7, 2002, two informations for unfair competition under Section 168.3 (a), in relation to Section 170, of the Intellectual
Property Code (Republic Act No. 8293), were filed against petitioner Manolo P. Samson, the registered owner of ITTI Shoes.

The petitioner, owner/proprietor of ITTI Shoes/Mano Shoes Manufacturing Corporation, allegedly sold or offers the sale of garment
products using the trademark CATERPILLAR products such as footwear, garments, clothing, bags, accessories and paraphernalia which
are closely identical to and/or colorable imitations of the authentic Caterpillar products and likewise using trademarks, symbols and/or
designs as would cause confusion, mistake or deception on the part of the buying public to the damage and prejudice of CATERPILLAR,
INC, private respondent in this case.

PROCEEDINGS BEFORE THE SUPREME COURT:

RTC: The respondent filed the case with the RTC. Consequently, in an Order dated August 9, 2002, the trial court denied the motion to
suspend arraignment and other proceedings filed by the petitioner.
The petitioner filed a motion to quash by challenging the jurisdiction of the trial court over the offense charged contending that the
case should be filed with the MTC because violation of unfair competition is penalized with imprisonment not exceeding 6 years under
RA 7691. Hence, the instant petition alleging that respondent Judge gravely abused its discretion in issuing the assailed orders.

Issue/s:

Which court has jurisdiction over criminal and civil cases for violation of intellectual property rights?

Held: RTC has jurisdiction.

Section 170 of the Intellectual Property Code (IPC) provides the penalty for the crime of infringement which is 2-5 years imprisonment
and fine of 50k – 200k. Corollarily, Section 163 of the same code provides that actions for unfair competition shall be brought before
the proper courts with appropriate jurisdiction under existing laws. The “existing law” contemplated in Section 163 of IPC is RA 166
otherwise known as the Trademark Law.

Sec 27 of the Trademark Law provides that jurisdiction over cases for infringement of registered marks, unfair competition, false
designation of origin and false description or representation, is lodged with the Court of First Instance (now Regional Trial Court).

It was noted that RA 8293 did not entirely repeal RA 166 but only those provisions that are not harmonized with the new RA. SC held
that jurisdiction as provided in RA 8293 did not repeal and is very much consistent with jurisdiction provided in RA 166 which was
conferred to CFI now RTC.

Besides, since RA 7691 is a general law and IPC in relation to Trademark Law is a special law, the latter shall prevail pursuant to the
settled rule in statutory construction. Actions for unfair competition therefore should be filed with the RTC. Jurisdiction conferred by a
special law to Regional Trial Courts must prevail over that granted by a general law to Municipal Trial Courts.

Disposition: Petition is DISMISSED (not only because there was failure to establish grave abuse of discretion but also because there was
failure to attach documents relevant to the allegations that warrants the dismissal of the petition).

10

EMERALD GARMENT MANUFACTURING CORPORATION v. THE H.D. LEE COMPANY, INC.

GR. No. 210693, June 07, 2017

REYES, J.:

NATURE OF THE CASE

Before the Court is the Petition for Review on Certiorari1 filed by Emerald Garment Manufacturing Corporation (Emerald) against The
H.D. Lee Company, Inc. (H.D. Lee) to assail the Decision2 and Resolution3 of the Court of Appeals (CA), dated April 8, 2013 and January
6, 2014, respectively, in CA-G.R. SP No. 126253. The CA reversed the Decision 4 dated August 10, 2012, of the Intellectual Property
Office's (IPO) then Director General Ricardo R. Blancaflor (DG Blancaflor) in Inter Partes Case No. 14-2007-00054, approving H.D. Lee's
application for registration of the trademark "LEE & OGIVE CURVE DESIGN."

FACTS

On December 21, 2001, H.D. Lee filed before the IPO an application for the registration of the trademark, "LEE & OGIVE CURVE DESIGN."
H.D. Lee claimed that the said mark was first used in the Philippines on October 31, 1996.

Within three years from the filing of the application, H.D. Lee submitted to the IPO a Declaration of Actual Use of the mark.[5] H.D. Lee's
application was published in the Intellectual Property Philippines' Electronic Gazette for Trademarks, which was belatedly released on
January 5, 2007.[6]
Emerald opposed H.D. Lee's application. Emerald argued that the approval of the application will violate the exclusive use of its marks,
"DOUBLE REVERSIBLE WAVE LINE," and "DOUBLE CURVE LINES," which it has been using on a line of clothing apparel since October 1,
1973[7] and 1980, respectively.LEE & OGIVE CURVE DESIGN” is confusingly similar or identical to the "DOUBLE CURVE LINES" previously
registered in Emerald's name.

G. D. Lee maintained that it initially used the said mark on February 18, 1946, and registered the same in the United States of
America (USA) on April 10, 1984 under Registration No. 1,273,602. The mark has been commercially advertised and used all over the
world as well.

DG Blancaflor rendered a Decision reversing the findings of Atty. Abelardo based on the grounds cited as follows:

 That H.D. Lee has established by substantial evidence that it is the owner of LEE & OGIVECURVE DESIGN.

 That Emerald has trademark applications and/or registrations in the Philippines on marks similar to [H.D. Lee] and which were filed
and/or registered earlier than H.D. Lee's trademark application is not sufficient to overcome the pieces of evidence proving H.D.
Lee's ownership of LEE & OGIVE CURVE DESIGN. c. H.D. Lee has shown that LEE & OGIVE CURVE DESIGN is a well-known mark.

Furthermore, there is nothing in the records which explained how [Emerald] came to use a highly distinctive sign such as a "Back Pocket
Design" or the "Double Curve Lines" which are identical or confusingly similar to the well-known mark LEE & OGIVE CURVE DESIGN. The
absence of any explanation on how Emerald conceived these marks gives credence to the position that H.D. Lee is the owner and creator
of LEE & OGIVE CURVE DESIGN and is, therefore, entitled to the registration of this mark.

Emerald filed a petition for review under Rule 43 of the Rules of Court, which the CA denied in the herein assailed decision which ruled
that H.D. Lee substantially complied with the procedural requirements in filing before the IPO a petition for registration of the mark
"LEE & OGIVE CURVE DESIGN." Hence, the petition.

ISSUE

Whether or not the EMERALD GARMENT MANUFACTURING CORPORATION has the rights over the registration of the marks "DOUBLE
CURVE LINES' and "DOUBLE REVERSIBLE WAVE LINE' as against H.D. Lee's "OGIVE CURVE DESIGN.

RULING

The instant petition is impressed with merit. The reason for this is that litigation must end and terminate sometime and somewhere,
and it is essential to an effective and efficient administration of justice that, once a judgment has become final, the winning party be
not deprived of the fruits of the verdict. Courts must guard against any scheme calculated to bring about that result and must frown
upon any attempt to prolong the controversies. The Court also emphatically instructs anent the concept and application of res judicata,
viz.:"a final judgment or decree on the merits by a court of competent jurisdiction is conclusive of the rights of the parties or their privies
in all later suits on all points and matters determined in the former suit." The elements for res judicata to apply are as follows: (a) the
former judgment was final; (b) the court that rendered it had jurisdiction over the subject matter and the parties; (c) the judgment was
based on the merits; and (d) between the first and the second actions, there was an identity of parties, subject matters, and causes of
action.

H.D. Lee argues that the principle of conclusiveness of judgment does not apply since no identity of issue exists between the instant
petition, on one hand, and G.R. No. 195415, on the other. The Court finds the foregoing untenable as the issues all point to the
registrability of the confusingly similar marks "DOUBLE CURVE LINES," "DOUBLE REVERSIBLE WAVE LINE," and "OGIVE CURVE DESIGN."
Further, H.D. Lee's claim that the instant petition involves the mark "LEE & OGIVE CURVE DESIGN' and not "OGIVE CURVE DESIGN' is
specious and a clear attempt to engage into hair-splitting distinctions. A thorough examination of the pleadings submitted by H.D. Lee
itself shows that indeed, the focus is the "OGIVE CURVE DESIGN," which remains to be the dominant feature of the mark sought to be
registered.

The Court needs to stress that in G.R. No. 195415 and Inter Partes Case No. 3498 before the IPO, Emerald had already established with
finality its rights over the registration of the marks "DOUBLE CURVE LINES' and "DOUBLE REVERSIBLE WAVE LINE' as against H.D. Lee's
"OGIVE CURVE DESIGN."
 11

COCA-COLA BOTTLERS, PHILS., INC. (CCBPI), Naga Plant v. QUINTIN J. GOMEZ, a.k.a. "KIT" GOMEZ and DANILO E. GALICIA, a.k.a. "DANNY
GALICIA"

G.R. NO. 154491 : November 14, 2008

BRION, J.:

NATURE OF THE CASE

Bypassing the Court of Appeals, the petitioner asks us through this Petition for Review on Certiorari under Rule 45 of the Rules of Court
to reverse the decision of the RTC. Essentially, the petition raises questions against the RTC's nullification of the warrant when it found
no grave abuse of discretion committed by the issuing judge.

FACTS

CCBPI, the petitioner applied for a search warrant against Pepsi Cola Product Philippines, Inc. (PCPPI) for allegedly hoarding empty
bottles of Coke bottles which same act is punishable under the IP Code, and further claimed that the empty bottles be confiscated.
Following the search warrant, the police seized and brought to MTC 2,464 Litro and 4,036 of 12 oz. of empty coke bottle.

The petitioner, after seizing the bottles, filed with the Office of the City Prosecutor of Naga a complaint against two Pepsi officers,
namely Galicia and Gomez, for violation of Section 168.3 (c) in relation to Section 170 of the IP Code.

The respondents counter claim was, as represented by Galicia and Gomez, that the bottles came from various Pepsi retailers and
wholesalers who included them in their return to make up for their shortages of empty Pepsi bottles. They also had no way of
ascertaining before hand the return of empty coke bottles as they simple received what had been delivered; the presence of the bottles
in their yard was not intentional nor deliberate. The respondents also filed motions for the return of the seized bottles and quash the
search warrant for the warrant itself existed no probable cause to justify the issuance.

The petition was denied, both by the MTC and the RTC. Bypassing the Court of Appeals, the petitioner files a petition for review on
certiorari under Rule 45 of the Rules of Court to reverse the decision of the RTC.

ISSUE

Is the hoarding of a competitor's product containers punishable as unfair competition under the Intellectual Property Code (IP Code,
Republic Act No. 8293) that would entitle the aggrieved party to a search warrant against the hoarder?

RULING

As culled from the petitioner’s allegation, the provision shown below shows the law which Pepsi breached.

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. –

168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those
of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so
identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed
guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as
to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any
other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a 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. 168.4. The remedies provided by Sections 156, 157 and 161
shall apply mutatis mutandis. (Sec. 29,_x0016_ R.A. No. 166a)

The application of the principles of statutory construction giving particular attention, not so much to the focus of the IP Code generally,
but to the terms of Section 168 in particular. Under the principle of "noscitur a sociis," when a particular word or phrase is ambiguous
in itself or is equally susceptible of various meanings, its correct construction may be made clear and specific by considering the company
of words in which it is found or with which it is associated.

As basis for this interpretative analysis, we note that Section 168.1 speaks of a person who has earned goodwill with respect to his goods
and services and who is entitled to protection under the Code, with or without a registered mark. Section 168.2, refers to the general
definition of unfair competition. Section 168.3, on the other hand, refers to the specific instances of unfair competition, with Section
168.1 referring to the sale of goods given the appearance of the goods of another; Section 168.2, to the inducement of belief that his
or her goods or services are that of another who has earned goodwill; while the disputed Section 168.3 being a "catch all" clause whose
coverage the parties now dispute.

Under all the above approaches, we conclude that the "hoarding" - as defined and charged by the petitioner - does not fall within the
coverage of the IP Code and of Section 168 in particular. It does not relate to any patent, trademark, trade name or service mark that
the respondents have invaded, intruded into or used without proper authority from the petitioner. Nor are the respondents alleged to
be fraudulently "passing off" their products or services as those of the petitioner. The respondents are not also alleged to be undertaking
any representation or misrepresentation that would confuse or tend to confuse the goods of the petitioner with those of the
respondents, or vice versa. What in fact the petitioner alleges is an act foreign to the Code, to the concepts it embodies and to the acts
it regulates; as alleged, hoarding inflicts unfairness by seeking to limit the opposition's sales by depriving it of the bottles it can use for
these sales.

Based on the foregoing, we conclude that the RTC correctly ruled that the petitioner's search warrant should properly be quashed for
the petitioner's failure to show that the acts imputed to the respondents do not violate the cited offense. There could not have been
any probable cause to support the issuance of a search warrant because no crime in the first place was effectively charged. This
conclusion renders unnecessary any further discussion on whether the search warrant application properly alleged that the imputed
act of holding Coke empties was in fact a "hoarding" in bad faith aimed to prejudice the petitioner's operations, or whether the MTC
duly complied with the procedural requirements for the issuance of a search warrant under Rule 126 of the Rules of Court.

12

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC.

G. R. No. 154342 - July 14, 2004

CORONA, J.:

NATURE OF THE CASE

In this petition for review on certiorari under Rule 45, petitioners Mighty Corporation and La Campana Fabrica de Tabaco, Inc. (La
Campana) seek to annul, reverse and set aside: (a) the November 15, 2001 decision1 of the Court of Appeals (CA) in CA-G.R. CV No.
65175 affirming the November 26, 1998 decision,2 as modified by the June 24, 1999 order,3 of the Regional Trial Court of Makati City,
Branch 57 (Makati RTC) in Civil Case No. 93-850, which held petitioners liable for, and permanently enjoined them from, committing
trademark infringement and unfair competition, and which ordered them to pay damages to respondents E. & J. Gallo Winery (Gallo
Winery) and The Andresons Group, Inc. (Andresons); (b) the July 11, 2002 CA resolution denying their motion for reconsideration4 and
(c) the aforesaid Makati RTC decision itself.

FACTS

On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark and trade name infringement and unfair competition,
with a prayer for damages and preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s
established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had
always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine were
totally unrelated products. To wit:

1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;

2. GALLO cigarettes and GALLO wines were sold through different channels of trade;

3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo cigarette buyers were farmers,
fishermen, laborers and other low-income workers;

4. the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as MIGHTY
CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or
just their surname GALLO;

On April 21, 1993, the Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary injunction.

On August 19, 1993, respondent’s motion for reconsideration was denied.

On February 20, 1995, the CA likewise dismissed respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC, on November 26, 1998, held petitioners liable for, permanently enjoined from
committing trademark infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration

ISSUE

Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they were purportedly
forms of vice

RULING

Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:

 the business (and its location) to which the goods belong

 the class of product to which the good belong

  the product’s quality, quantity, or size, including the nature of the package, wrapper or container

 the nature and cost of the articles

 the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture
or quality

 the purpose of the goods

 whether the article is bought for immediate consumption, that is, day-to-day household items

 the field of manufacture

 the conditions under which the article is usually purchased and

 the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an established
design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order to be
objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the
article that he seeks to purchase

13

G.R. No. 161693. June 28, 2005.

MANOLO P. SAMSON, petitioner, vs. HON. VICTORIANO B. CABANOS, In his capacity as Acting Presiding Judge, Regional Trial Court of
Antipolo City, Branch 71, PEOPLE OF THE PHILIPPINES and CATERPILLAR, INC., respondents.

PETITION for review on certiorari of the orders of the Regional Trial Court of Antipolo City, Br. 71.

FACTS: Petitioner was charged with the crime of unfair competition before the RTC of Antipolo City in an Information that states: for
violation of Sec. 168.3 (a) in relation to Secs. 123.1 (e), 131.3 and 170 of RA 8293 otherwise known as the Intellectual Property Code of
the Philippines, committed as follows:

above-named accused, owner/proprietor of ITTI Shoes Corporation located at F.P. Felix Avenue, Cainta, Rizal, did then and there
willfully, unlawfully and feloniously distribute, sell and/or offer for sale CATERPILLAR products such as footwear, garments, clothing,
bags, accessories and paraphernalia which are closely identical to and/or colorable imitations of the authentic Caterpillar products and
likewise using trademarks, symbols and/or designs as would cause confusion, mistake or deception on the part of the buying public to
the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of the following internationally famous marks:
“CATERPILLAR”, “CAT”, “CATERPILLAR”, “CAT”, “CATERPILLAR & DESIGN”, “CAT AND DESIGN”, “WALKING MACHINES” and “TRACK-TYPE
TRACTOR & DESIGN”.

Petitioner moved to quash the information on the ground that the court has no jurisdiction over the offense charged in the
Information. He argued that Section 170 of Republic Act (R.A.) No. 8293 4 provides that the penalty for violation of Section 168 thereof
is imprisonment from two (2) to five (5) years and a fine ranging from fifty thousand pesos (P50,000.00) to two hundred thousand pesos
(P200,000.00), and R.A. No. 76915 amending Batas Pambansa (B.P.) Blg.129 vested the Metropolitan Trial Courts (MTC) exclusive original
jurisdiction over all offenses punishable with imprisonment not exceeding six (6) years irrespective of the amount of the fine.7

ISSUE: Which court has jurisdiction over criminal and civil cases for violation of intellectual property rights?
HELD: THE RTC. Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal penalty for infringement of
registered marks, unfair competition, false designation of origin and false description or representation, is imprisonment from 2 to 5
years and a fine ranging from Fifty Thousand Pesos to Two Hundred Thousand Pesos, to wit:

Section 163 of the same Code states that actions (including criminal and civil) under Sections 150, 155, 164, 166, 167, 168 and 169
shall be brought before the proper courts with appropriate jurisdiction under existing laws, thus—

SEC. 163. Jurisdiction of Court.—All actions under Sections 150, 155, 164 and 166 to 169 shall be brought before the proper courts with
appropriate jurisdiction under existing laws. (Emphasis supplied)

The existing law referred to in the foregoing provision is Section 27 of R.A. No. 166 (The Trademark Law) which provides that jurisdiction
over cases for infringement of registered marks, unfair competition, false designation of origin and false description or representation,
is lodged with the Court of First Instance (now Regional

Trial Court)—

SEC. 27. Jurisdiction of Court of First Instance.—All actions under this Chapter [V - Infringement] and Chapters VI [Unfair Competition]
and VII [False Designation of Origin and False Description or Representation], hereof shall be brought before the Court of First Instance.

We find no merit in the claim of petitioner that R.A. No. 166 was expressly repealed by R.A. No. 8293. The repealing clause of R.A.
No. 8293, reads—

SEC. 239. Repeals.—239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic
Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree
No. 285, as amended, are hereby repealed. (Emphasis added)

Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in its entirety, otherwise, it would not have used the phrases
“parts of Acts” and “inconsistent herewith;” and it would have simply stated “Republic Act No. 165, as amended; Republic Act No. 166,
as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as
amended are hereby repealed.” It would have removed all doubts that said specific laws had been rendered without force and effect.
The use of the phrases “parts of Acts” and “inconsistent herewith” only means that the repeal pertains only to provisions which are
repugnant or not susceptible of harmonization with R.A. No. 8293. Section 27 of R.A. No. 166, however, is consistent and in harmony
with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction over violations of intellectual property rights with the
Metropolitan Trial Courts, it would have expressly stated so under Section 163 thereof.

Moreover, the settled rule in statutory construction is that in case of conflict between a general law and a special law, the latter
must prevail. Jurisdiction conferred by a special law to Regional Trial Courts must prevail over that granted by a general law to Municipal
Trial Courts.

In the case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations of intellectual property
rights to the Regional Trial Court. They should therefore prevail over R.A. No. 7691, which is a general law. Hence, jurisdiction over the
instant criminal case for unfair competition is properly lodged with the Regional Trial Court even if the penalty therefor is imprisonment
of less than 6 years, or from 2 to 5 years and a fine ranging from P50,000.00 to P200,000.00.

In fact, to implement and ensure the speedy disposition of cases involving violations of intellectual property rights under R.A. No.
8293, the Court issued A.M. No. 02-1-11-SC dated February 19, 2002 designating certain Regional Trial Courts as Intellectual Property
Courts. On June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to hear and decide Intellectual Property Code
and Securities and Exchange Commission cases in specific Regional Trial Courts designated as Special Commercial Courts.

IN VIEW WHEREOF, the petition is DISMISSED. The temporary restraining order issued by this Court on February 18, 2004 is hereby
LIFTED.

14

Great White Shark Enterprises, Inc., petitioner vs. Daniel Caralde, respondent.
(G.R. No. 192294, 21 November 2012)

Ponente – Justice Estela M. Perlas-Bernabe

Facts – Respondent Daniel Caralde filed on 31 July 2002 before Intellectual Property Office’s Bureau of Legal Affairs (BLA) a trademark
application which sought to register the mark "SHARK & LOGO" for his manufactured goods under Class 25, such as slippers, shoes and
sandals.

Petitioner Great White Shark Enterprises, Inc. (Great White Shark), a foreign corporation domiciled in Florida, USA, opposed his
application where it claimed to be owner of the mark known as "GREG NORMAN LOGO" which consisted of representation of a shark in
color, (associated with apparel worn and promoted by Australian golfer Greg Norman). It alleged that being a world famous mark which
is pending registration before the BLA since 19 February 2002, the confusing similarity between the two (2) marks is likely to deceive or
confuse the purchasing public into believing that Caralde's goods are produced by or originated from it, or are under its sponsorship, to
its damage and prejudice.

In response, the respondent explained that the two marks are distinctively different from one another and easily distinguishable. When
compared, the only similarity in the marks is in the word "shark" alone, differing in other factors such as appearance, style, shape, size,
format, color, ideas counted by marks, and even in the goods carried by the parties.
The Director of Intellectual Property Office’s Bureau of Legal Affairs rendered decision on 14 June 2007 which rejected the respondent's
application:

“Prominent in both competing marks is the illustration of a shark. The dominant feature in opposer's mark is the illustration of a shark
drawn plainly. On the other hand, the dominant feature in respondent's mark is a depiction of shark shaded darkly, with its body
designed in a way to contain the letters "A" and "R" with the tail suggestive of the letter "K." Admittedly, there are some differences
between the competing marks. Respondent's mark contains additional features which are absent in opposer's mark. Their dominant
features, i.e., that of an illustration of a shark, however, are of such degree that the overall impression it create [sic] is that the two
competing marks are at least strikingly similar to each another [sic], hence, the likelihood of confusion of goods is likely to occur.”

On the respondent’s appeal, the IPO Director General affirmed final rejection of respondent’s application, ruling that his mark and that
of petitioner’s mark are indeed confusingly similar. Great White Shark's mark is used in clothing and footwear, among others, while his
mark is used on similar goods like shoes and slippers. Moreover, Great White Shark was first in applying for registration of the mark on
19 February 2002, followed by Caralde on 31 July 2002. Furthermore, Great White Shark’s mark consisted of an illustration of a shark
while Caralde's mark had a composite figure forming a silhouette of a shark. Thus, as to content, word, sound and meaning, both marks
are similar, barring registration of Caralde's mark under Section 123.1(d) of Republic Act No. 8293, otherwise known as the Intellectual
Property Code. Nonetheless, while Great White Shark submitted evidence of the registration of its mark in several other countries, the
IPO Director General considered its mark as not well-known for failing to meet the other criteria laid down under Rule 102 of the Rules
and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers.

However, after a petition for review filed by the respondent, the CA reversed and set aside the decision of Intellectual Property Office’s
Director General and directed the IPO to grant respondent's application for registration of the mark "SHARK & LOGO", as it found no
confusing similarity between the two marks notwithstanding both contained the shape of a shark as dominant feature.

The appellate court observed that the respondent's mark is more fanciful and colorful, and contains several elements which are easily
distinguishable from that of the Great White Shark. It further opined that considering their price disparity, there is no likelihood of
confusion as they travel in different channels of trade.

Legal Provisions – Section 123.1 (d) of Intellectual Property Code of the Philippines (Rep. Act 8293, as amended) states that a mark
cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority
date, in respect of:

i. The same goods or services, or

ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion

Rule 102 under the 1998 Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers states
the following criteria to determine whether a mark is well-known:
a. the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to
which the mark applies;
b. the market share, in the Philippines and in other countries, of the goods and/or services to which the mark is applied;
c. the degree of the inherent or acquired distinction of the mark;
d. the quality-image or reputation acquired by the mark;
e. the extent to which the mark has been registered in the world;
f. the exclusivity of registration attained by the mark in the world;
g. the extent to which the mark has been used in the world;
h. the exclusivity of use attained by the mark in the world;
i. the commercial value attributed to the mark in the world;
j. the record of successful protection of the rights in the mark;
k. the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and,
l. the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned
by persons other than the person claiming that his mark is a well-known mark.

Issue – W/N there is confusing similarity between the marks of Caralde and Great White Shark Enterprises, notwithstanding that both
marks contained the shape of a shark as dominant feature?

Held – The Supreme Court held that there is no confusing similarity between the marks of petitioner Great White Shark Enterprises and
that mark sought to be registered by respondent Caralde.
Doctrine – A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and
distinguishing the goods of one manufacturer or seller from those of another. Apart from its commercial utility, the benchmark of
trademark registrability is distinctiveness. Thus, a generic figure, as that of a shark in this case, if employed and designed in a distinctive
manner, can be a registrable trademark device, subject to the provisions of the IP Code.
Corollarily, Section 123.1(d) of the IP Code provides that a mark cannot be registered if it is identical with a registered mark belonging
to a different proprietor with an earlier filing or priority date, with respect to the same or closely related goods or services, or has a near
resemblance to such mark as to likely deceive or cause confusion.
In determining similarity and likelihood of confusion, case law has developed the Dominancy Test and the Holistic or Totality Test. The
Dominancy Test focuses on the similarity of the dominant features of the competing trademarks that might cause confusion, mistake,
and deception in the mind of the ordinary purchaser, and gives more consideration to the aural and visual impressions created by the
marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. In contrast, the
Holistic or Totality Test considers the entirety of the marks as applied to the products, including the labels and packaging, and focuses
not only on the predominant words but also on the other features appearing on both labels to determine whether one is confusingly
similar to the other as to mislead the ordinary purchaser. The "ordinary purchaser" refers to one "accustomed to buy, and therefore to
some extent familiar with, the goods in question.

15
GR 174379 August 31, 2016 J. Leonen
E.I. Dupont De Nemours and Co. (assignee of inventors David Carino, Jonas Duncia and Pancras Wong) v. IPO Director Emma Francisco,
Bureau of Patents Director Efipanio Velasco, Therapharma, Inc.

FACTS
 Petitioner is a Delaware- based corporation. In 1987, petitioner filed an application for PH patent before Bureau of Patents.

 Said application was for Angiotensin II Receptor Blocking Imidazole (losartan), an invention related to the treatment of hypertension
and congestive heart failure. The product (under the brandnames Cozaar and Hyzaar) was produced and marketed by Merck,
Sharpe, and Dohme Corporation, licensee of petitioner.

 Said application was handled by a Filipino lawyer, Atty. Nicanor Mapili.

 In 2000, petitioner’s new counsel, Ortega, et al., sent the IPO a letter requesting that an office action be issued on the petitioner’s
patent application.

 On January 30, 2002, IPO Patent Examiner sent an office action (Paper No. 2) stating that there were no documents shown that the
authority to prosecute the patent application was transferred from Atty. Mapili to Ortega, et al. Hence, an official revocation of
Power of Attorney of Atty. Mapili and appointment of Ortega, et al. by petitioner is required before further action can be undertaken
 on the patent application. Also, it was noted by the Examiner that the application was deemed abandoned since it took 13 years
for petitioner to request for an office action.

 On May 29, 2002, petitioner replied to Paper No. 2 by submitting a Power of Attorney authorizing Ortega, et al. to handle its patent
application.

 Petitioner also filed petition for revival of its patent application.

 In its petition, they argued that it was only in 1996 that they became aware of Atty. Mapili’s death when its senior-level lawyer
visited PH, and that it was only on January 30, 2002, that it received a notice of abandonment sent by IPO (Paper No. 2).
 On April 18, 2002, Director of Patents denied the petition for revival for having been filed out of time. It ruled that although it
appears that Atty. Mapili was remiss in his obligations as counsel for the petitioner, the abandoned application cannot be revived
because of the limitations provided in Rule 115 of Revised Rules of Practice.

 Petitioner appealed to Director-General of IPO. On August 26, 2002, said appeal was denied.

 On November 21, 2003, petitioner appealed to CA.

 On August 31, 2004, CA granted the appeal allowing the revival of the patent application. CA believed that petitioner should be
accorded some relief from the gross negligence of its former counsel, Atty. Mapili.

 IPO moved to reconsider. Meanwhile, Therapharma moved for leave to intervene arguing that CA’s decision affected its “vested”
rights to sell its own product. Therapharma alleged that it was granted application by BFAD for a losartan product “Lifezar,” a
medication for hypertension, and that prior to its application, it made sure that no patent application for similar products exists
and that petitioner’s application was considered abandoned by the Bureau of Patents.

 In January 2006, CA granted the motion for leave to intervene of Therapharma.

 Petitioner moved to reconsider. In August 2006, CA reversed its August 31, 2004 decision ruling that the public interest would be
prejudiced by the revival of petitioner’s patent application. CA held that petitioner and Atty. Mapili were inexcusably negligent. CA
also found that Therapharma had already invested P20M to develop its own losartan product.

 On October 19, 2006, petitioner filed the present case. Petitioner argues that it was not negligent in the prosecution of its patent
application since it was Atty. Mapili or his heirs who failed to inform it of crucial developments with regard to its patent application.
It argues that as a client in a foreign country, it does not have immediate supervision over its local counsel so it should not be bound
by its counsel's negligence.

ISSUE/RULING
WON the patent application of petitioner should be revived – NO
 Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice, a patent application is deemed abandoned if the applicant
fails to prosecute the application within 4 months from the date of the mailing of the notice of the last action by the Bureau of
Patents, Trademarks, and Technology Transfer, and not from applicant's actual notice.

 Sec. 113 of 1962 Revised Rules of Practice, an abandoned patent application may only be revived within 4 months from the date of
abandonment, provided it is shown to the satisfaction of the Director that the delay was unavoidable. An application not revived
within the specified period shall be deemed forfeited.

 Sec. 113 has since been superseded by Section 133.4 of the Intellectual Property Code, Rule 930 of the Rules and Regulations on
Inventions, and Rule 929 of the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Design. The
period of four (4) months from the date of abandonment, however, remains unchanged.

 According to the records of the Bureau of Patents, Trademarks, and Technology Transfer Chemical Examining Division, petitioner
filed its patent application on July 10, 1987. It was assigned to an examiner on June 7, 1988. An Office Action was mailed to Atty.
Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable period, the application was deemed abandoned
on September 20, 1988. Under Sec. 113, petitioner had until January 20, 1989 to file for a revival of the patent application. Its
Petition for Revival, however, was filed on May 29, 2002, 13 years after the date of abandonment.
  Even if the delay was unavoidable, or the failure to prosecute was due to fraud, accident, mistake, or excusable negligence, or the
petition was accompanied by a complete proposed response, or all fees were paid, the same would still be denied since these
regulations only provide a 4-month period within which to file for the revival of the application. The rules do not provide any
exception that could extend this four (4)-month period to 13 years. Petitioner’s patent application, therefore, should not be revived
since it was filed beyond the allowable period.

 Even assuming that the 4-month period could be extended, petitioner was inexcussably negligent in the prosecution of its patent
application. Negligence is inexcusable if its commission could have been avoided through ordinary diligence and prudence. It is
also settled that negligence of counsel binds the client as this "ensures against the resulting uncertainty and tentativeness of
proceedings if clients were allowed to merely disown their counsels' conduct."
 Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond to the Office Action sent by the Bureau of
Patents, Trademarks, and Technology Transfer on June 19, 1988. Because of his negligence, petitioner's patent application was
declared abandoned. He was again negligent when he failed to revive the abandoned application within 4 months from the date of
abandonment.

 Petitioner tries to disown Atty. Mapili 's conduct by arguing that it was not informed of the abandonment of its patent application
or of Atty. Mapili's death. By its own evidence, however, petitioner requested a status update from Atty. Mapili only on July 18,
1995, 8 years after the filing of its application. It alleged that it only found out about Atty. Mapili 's death sometime in March 1996,
as a result of its senior patent attorney's visit to the Philippines. Although it was in petitioner's discretion as a foreign client to put
its complete trust and confidence on its local resident agent, there was a correlative duty on its part to be diligent in keeping itself
updated on the progress of its patent applications. Its failure to be informed of the abandonment of its patent application was
caused by its own lack of prudence.

 In Bernardo v. CA, "no prudent party will leave the fate of his case entirely to his lawyer. It is the duty of a party-litigant to be in
contact with his counsel from time to time in order to be informed of the progress of his case." Even if Atty. Mapili's death prevented
petitioner from submitting a petition for revival on time, it was clearly negligent when it subsequently failed to immediately apprise
itself of the status of its patent application.
 Furthermore, contrary to the posturing of petitioner, Schuartz is applicable. Petitioner attempts to distinguish itself from Schuartz
by arguing that the petitioners in Schuartz had actual notice of abandonment while petitioner here was only able to have actual
notice when it received Paper No. 2.

 The 4-month period in Sec. 111 of the 1962 Revised Rules of Practice, however, is not counted from actual notice of abandonment
but from mailing of the notice. Since it appears from the Intellectual Property Office's records that a notice of abandonment was
mailed to petitioner's resident agent on July 19, 1988, the time for taking action is counted from this period. Petitioner's patent
application cannot be revived simply because the period for revival has already lapsed and no extension of this period is provided
for by the 1962 Revised Rules of Practice.

 Moreover, Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its petition for revival is granted. Even
without a pending patent application and the absence of any exception to extend the period for revival, petitioner was already
threatening to pursue legal action against Therapharma if it continued to develop and market its losartan product, Lifezar. Once
petitioner is granted a patent for its losartan products, Cozaar and Hyzaar, the loss of competition in the market for losartan
products may result in higher prices. For the protection of public interest, petitioner’s patent application should be considered a
forfeited patent application.

WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and the Amended Decision dated August 30, 2006 of the
Court of Appeals are AFFIRMED. SO ORDERED.

16

Hon Ne Chan v Honda Motors

Nature of the Petition

PETITION for review on certiorari of the decision and resolution of the Court of Appeals.

DOCTRINE

The validity of the issuance of a search warrant rests upon the following factors:
 (1) it must be issued upon probable cause;

(2) the probable cause must be determined by the judge himself and not by the applicant or any other person;

(3) in the determination of probable cause, the judge must examine, under oath or affirmation, the complainant and such
witnesses as the latter may produce; and

(4) the warrant issued must particularly describe the place to be searched and persons or things to be seized.

Search warrants are not issued on loose, vague or doubtful basis of fact, or on mere suspicion or belief.

Probable cause, as far as the issuance of a search warrant is concerned, has been uniformly defined as such facts and circumstances
which would lead a reasonable, discreet and prudent man to believe that an offense has been committed, and that the objects sought
in connection with the offense are in the place sought to be searched.

FACTS:

 On 14 November 2003, the National Bureau of Investigation (NBI), through Special Investigator (SI) Glenn Lacaran, applied for
search warrants with the RTC
against petitioners for alleged violation of Section 168 in relation to Section 170 of Republic Act No. 8293 or the Intellectual Property
Code of the Philippines
 On the same date, RTC Judge Artemio S. Tipon issued two (for Hon Ne Chan and Yunji Zeng) search warrants.
 On the strength of these search warrants, NBI agents conducted a search of petitioners’ premises and seized items from the
petitioner.
 Motion to Quash Search Warrants and to Return Illegally Seized Items, averring therein that the search warrants were issued despite
the absence of probable cause and that they were in the nature of general search warrants.
 Trial court ordered the NBI to return to petitioners the articles seized
 CA reversed the RTC

ISSUES with RULING/RATIO:

The validity of the issuance of a search warrant rests upon the following factors:

(1) it must be issued upon probable cause;

(2) the probable cause must be determined by the judge himself and not by the applicant or any other person;

(3) in the determination of probable cause, the judge must examine, under oath or affirmation, the complainant and such
witnesses as the latter may produce; and

(4) the warrant issued must particularly describe the place to be searched and persons or things to be seized.

1) Whether probable cause existed in the issuance of the subject search warrants. NO

Petitioners Argue:

The statement “[Lacaran] has information and verily believes that (petitioners) are in possession or has in their control
properties” failed to meet the condition that probable cause must be shown to be within the personal knowledge of the
complainant or the witnesses he may produce and not based on mere hearsay

Court:

Next paragraph of the above quoted application for search warrant states that “Lacaran „personally verified the report and
found [it] to be a fact.”

Probable cause, as far as the issuance of a search warrant is concerned, has been uniformly defined as such facts and
circumstances which would lead a reasonable, discreet and prudent man that an offense has been committed, and that the
 objects sought in connection with the offense are in the place sought to be searched to believe that an offense has been
committed, and that the objects sought in connection with the offense are in the place sought to be searched.

Microsoft Corporation and Lotus Development Corporation v. Maxicorp, Inc: “The determination of probable cause does not
call for the application of rules and standards of proof that a judgment of conviction requires after trial on the merits. As implied
by the words themselves, probable cause is concerned with probability, not absolute or even moral certainty. The prosecution
need not present at this stage reasonable doubt. The standards of judgment are those of a reasonably prudent man, not the
exacting calibrations of a judge after a full-blown trial.”

2) Whether said search warrants were in the nature of general search warrants and therefore null and void

NO.

Petitioners Argue:

The search warrants in question partook the nature of general search warrants in that they included motorcycles bearing the
model name “WAVE.”

Court

It is elemental that in order to be valid, a search warrant must particularly describe the place to be searched and the things to
be seized. It is not, however, required that the things to be seized must be described in precise and minute detail as to leave
no room for doubt on the part of the searching authorities.

3) Whether there existed an offense to which the issuance of the search warrants was connected. YES.

Petitioners Argue:

The search warrants were issued in relation to no particular offense.

Court

Application for Search Warrant filed by NBI SI Lacaran, it is clearly stated that what respondents are complaining about was
the alleged violation of the goodwill they have established. It is quite obvious then that their cause of action arose out of the
intrusion intotheir established goodwill involving the two motorcycle models and not patent infringement

17

PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.

G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For Today (CET). Respondent
Felicidad Robles was the author of the book Developing English Proficiency (DEP). Petitioners found that several pages of the
respondent's book are similar, if not all together a copy of petitioners' book. Habana et al. filed an action for damages and injunction,
alleging respondent’s infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially
familiar with the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed
certain portions of their book CET.

On the other hand, Robles contends that the book DEP is the product of her own intellectual creation, and was not a copy of any existing
valid copyrighted book and that the similarities may be due to the authors' exercise of the "right to fair use of copyrighted materials, as
guides."

The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of Appeals rendered judgment in favor
of respondents Robles and Goodwill Trading Co., Inc. In this appeal, petitioners submit that the appellate court erred in affirming the
trial court's decision.
ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. The court finds
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.

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.

18

G.R. No. 181571 December 16, 2009 JUNO BATISTIS, Petitioner, vs. PEOPLE OF THE PHILIPPINES, Respondent.

FACTS:

Manila RTC convicted herein petitioner Juno Batistis for violations of Section 155 (infringement of trademark) and Section 168 (unfair
competition) of the Intellectual Property Code (Republic Act No. 8293) after the authorities found in his possession counterfeit Fundador
products.

The Court of Appeals (CA) affirmed the conviction for infringement of trademark, but reversed the conviction for unfair competition for
failure of the State to prove guilt beyond reasonable doubt.

The CA affirmed the decision of the RTC imposing the ” penalty of imprisonment of TWO (2) YEARS and to pay a fine of FIFTY THOUSAND
( 50,000.00) PESOS.”

Batistis now appeals via petition for review on certiorari to challenge the CA’s affirmance of his conviction for infringement of trademark.

ISSUE:

Whether or not the CA erred in affirming the RTC’s decision to convict Juno for infringement of trademark and whether or not the CA
erred in giving a straight sentence

RULING:

The Supreme Court affirm the conviction, but modified the penalty by imposing an indeterminate sentence, conformably with the
Indeterminate Sentence Law and pertinent jurisprudence.

The straight penalty the CA imposed was contrary to the Indeterminate Sentence Law, whose Section 1 requires that the penalty of
imprisonment should be an indeterminate sentence.

Section 170 of the Intellectual Property Code provides the penalty for infringement of trademark, to wit:

Section 170. Penalties. – Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from
two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos(P200,000), shall
be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section 168 and Subsection
169.1. (Arts. 188 and 189, Revised Penal Code).

Indeed, the imposition of an indeterminate sentence is mandatory although an exception was enunciated in People v. Nang Kay.

There, the Court sustained the straight penalty of five years and one day imposed by the trial court because the application of the
Indeterminate Sentence Law would be unfavorable to the accused by lengthening his prison sentence. Yet, we cannot apply the Nang
Kay exception herein, even if this case was a prosecution under a special law like that in Nang Kay.

Firstly, the trial court in Nang Kay could well and lawfully have given the accused the lowest prison sentence of five years because of the
mitigating circumstance of his voluntary plea of guilty, but, herein, both the trial court and the CA did not have a similar circumstance
to justify the lenity towards the accused.
Secondly, the large number of Fundador articles confiscated from his house (namely, 241 empty bottles of Fundador, 163 Fundador
boxes, a half sack full of Fundador plastic caps, and two filled bottles of Fundador Brandy) clearly demonstrated that Batistis had been
committing a grave economic offense over a period of time, thereby deserving for him the indeterminate, rather than the straight and
lower, penalty.

19
TANDUAY DISTILLERS, INC. VS. GINEBRA SAN MIGUEL, INC. (2009)
G.R. No. 164324, August 14, 2009.

FACTS:
Tanduay developed a new gin product distinguished by its sweet smell, smooth taste, and affordable price. The brand name eventually
chosen for the gin product was Ginebra Kapitan with the representation of a revolutionary Kapitan on horseback as the dominant feature
of its label. Tanduay points out that the label design of Ginebra Kapital in terms of color scheme, size and arrangement of text, and other
label features were precisely selected to distinguish it from the leading gin brand in the Philippine market, Ginebra San Miguel. Tanduay
filed a trademark application for Ginebra Kapitan with the Intellectual Property Office (IPO). After which, Tanduay began selling Ginebra
Kapitan in the Luzon areas including Metro Manila. Eventually, Tanduay received a letter from San Miguel informing the former to
immediately cease and desist from using the mark Ginebra. San Miguel filed a complaint for trademark infringement, unfair competition
and damages, with applications for the issuance of a TRO and a writ of preliminary injunction against Tanduay before the RTC of
Mandaluyong.

(Developments in the trial court and the CA I have laid out in bullet form for easy reading. The events could get a little confusing from
here.)
 The trial court issued a TRO prohibiting Tanduay from manufacturing, selling and advertising Ginebra Kapitan.
 Tanduay filed a petition for certiorari with the CA and an Urgent Motion to Defer Injunction Hearing before the trial court.
 Despite the motion filed by San Miguel, the trial court conducted hearings for Tanduay to show cause why no writ of preliminary
injunction should be issued.
 The trial court granted San Miguel’s application for issuance of a writ of preliminary injunction.
 Tanduay filed a supplemental petition in the CA assailing the injunction order.
 The CA issued a TRO enjoining the trial court from implementing the injunction order and further proceeding with the case.
 Finally, the CA rendered a decision dismissing Tanduay’s petition for certiorari and supplemental petition. Its motion for
reconsideration was likewise denied.

ISSUE
The issue that must be resolved by the trial court is whether a word like Ginebra can acquire a secondary meaning for gin products so
as to prohibit the use of the word Ginebra by other gin manufacturers or sellers. This boils down to whether the word Ginebra is a
generic mark that is incapable of appropriation by gin manufacturers.

RULING:
In this case, a cloud of doubt exists over San Miguels exclusive right relating to the word Ginebra. San Miguels claim to the exclusive use
of the word Ginebra is clearly still in dispute because of Tanduays claim that it has, as others have, also registered the word Ginebra for
its gin products. This issue can be resolved only after a full-blown trial.

We find that San Miguels right to injunctive relief has not been clearly and unmistakably demonstrated. The right to the exclusive use
of the word Ginebra has yet to be determined in the main case. The trial courts grant of the writ of preliminary injunction in favor of
San Miguel, despite the lack of a clear and unmistakable right on its part, constitutes grave abuse of discretion amounting to lack of
jurisdiction.

We believe that the issued writ of preliminary injunction, if allowed, disposes of the case on the merits as it effectively enjoins the use
of the word ginebra without the benefit of a full-blown trial.

20
McDonald’s Corporation and McGeorge Food Industries, Inc. vs L.C. Big Mak Burger, Inc., et al
G.R. No. 143993, August 18, 2004

Facts:
McDonald’s is a corporation organized under the laws of Delaware which operates by itself or through its franchisees a global chain of
fast-food restaurants. It owns a family of marks including “Big Mac” for their “double-decker hamburger sandwich.” This trademark was
registered with the US Trademark Registry on October 16, 1979. Thus, McDonald’s displays the “Big Mac” mark in their items and
paraphernalia.

L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby
provinces. The menu includes hamburger sandwiches. On October 25, 1988, they applied for the registration of the “Big Mak” mark for
their hamburger sandwiches which McDonald’s opposed, the latter alleging that “Big Mak” was a colorable imitation of its registered
“Big Mac” mark for the same food products.

McDonald’s wrote to the chairman of the Board of Directors of L.C. Big Mak Burger requesting the latter to desist from using “Big Mac”
mark but there was no reply. McDonald’s then sued L.C. Big Mak for infringement and unfair competition.

Issue:
Whether or not L.C. Big Mak Burger, Inc. is liable for infringement and unfair competition.

Held:
Yes. The Court, in holding the respondents liable, relied on the dominancy test rather than holistic test. 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 theadoption 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.

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in likelihood of confusion. First, "Big
Mak" sounds exactly the same as "Big Mac." Second, the first word in "Big Mak" is exactly the same as the first word in "Big Mac." Third,
the first two letters in "Mak" are the same as the first two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds the same
as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is spelled "Kalookan."

In short, 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.
Clearly, respondents have 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.

21

CATERPILLAR, INC. vs. MANOLO P. SAMSON,

FACTS:

• Caterpillar is a foreign corporation engaged in the manufacture and distribution of footwear, clothing and related items, among
others. Its products are known for six core trademarks, namely, "CATERPILLAR", "CAT" "CATERPILLAR & DESIGN" "CAT AND
DESIGN", "WALKING MACHINES" and "TRACK-TYPE TRACTOR & DESIGN (Core Marks),7 all of which are alleged as internationally
known.

• Samson, doing business under the names and styles of Itti Shoes Corporation, Kolm's Manufacturing Corporation and Caterpillar
Boutique and General Merchandise, is the proprietor of various retail outlets in the Philippines selling footwear, bags, clothing,
and related items under the trademark "CATERPILLAR", registered in 1997 under Trademark Registration No. 64705 issued by the
Intellectual Property Office (IPO).8

• On July 26, 2000, upon application of the National Bureau of Investigation (NBI), the Regional Trial Court (RTC), Branch 56, in Makati
City issued Search Warrants Nos. 00-022 to 00-032, inclusive, all for unfair competition,9 to search the establishments owned,
controlled and operated by Samson. The implementation of the search warrants on July 27, 2000 led to the seizure of various
products bearing Caterpillar's Core Marks.

• Caterpillar filed against Samson several criminal complaints for unfair competition in the Department of Justice (DOJ),
• Additionally, on July 31, 2000, Caterpillar commenced a civil action against Samson and his business entities, with the IPO as a
nominal party10 - for Unfair Competition, Damages and Cancellation of Trademark with Application for Temporary Restraining
Order (TRO) and/or Writ of Preliminary Injunction

• Samson filed a petitions for review with the Office of the Secretary of Justice to appeal the joint resolutions in LS. Nos. 2000-1354
to 2000-1364 and LS. Nos. 2001-042 to 2001-067.

• the DOJ, through Secretary Hernando B. Perez, issued a resolution 26 denying Samson's petition for review in I.S. Nos. 2000-1354
to 2000-1364. Samson's motion for reconsideration was likewise denied on May 26, 2003

RTC granted Samson's Motion to Suspend Arraignment, and suspended the arraignment and all other proceedings in :

Court of appeals decision:

• Acting Justice Secretary Ma. Merceditas N. Gutierrez reversed and set aside the resolution issued by State Prosecutor Lim in
I.S. No. 2001-042 to 2001-067, and directed the Chief State Prosecutor to cause the withdrawal of the criminal informations
filed against Samson in court

• Acting Justice Secretary Gutierrez based her resolution on the order dated June 26, 2001, whereby the RTC of Valenzuela City,
Branch 172, had quashed the 26 search warrants upon motion of Samson. 34 Consequently, the goods seized and confiscated
by virtue of the quashed search warrants could no longer be admitted in evidence

ISSUES:

• whether or not the CA committed a reversible error in ruling that the trial court a quo did not commit grave abuse of discretion
in suspending the criminal proceedings on account of a prejudicial question; and

• whether or not the CA committed reversible error in upholding the decision of the Secretary of Justice finding that there was no
probable cause to charge Samson with unfair competition.

RULING:

FIRST ISSUE

• CATERPILLAR failed to substantiate his claim that there was a prejudicial question.

• there is no prejudicial question if the civil and the criminal action can, according to law, proceed independently of each other

• the common element in the acts constituting unfair competition under Section 168 of R.A. No. 8293 is fraud. Pursuant to Article
33 of the Civil Code, in cases of defamation, fraud, and physical injuries, a civil action for damages, entirely separate and distinct
from the criminal action, may be brought by the injured party. Hence, Civil Case No. Q-00-41446, which as admitted by SAMSON
also relate to unfair competition, is an independent civil action under Article 33 of the Civil Code. As such, it will not operate as a
prejudicial question that will justify the suspension of the criminal cases at bar

• Secondly, a civil action for damages and cancellation of trademark cannot be considered a prejudicial question by which to
suspend the proceedings in the criminal cases for unfair competition. A prejudicial question is that which arises in a civil case
the resolution of which is a logical antecedent of the issues to be determined in the criminal case. It must appear not only that
the civil case involves facts upon which the criminal action is based, but also that the resolution of the issues raised in the civil
action will necessarily be determinative of the criminal case.

• elements of a prejudicial question are provided in Section 7 of Rule 111, Rules of Court, to wit: (a) a previously instituted civil
action involves an issue similar to or intimately related to the issue raised in the subsequent criminal action, and (b) the
resolution of such issue determines whether or not the criminal action may proceed.

Cancellation of trademark

• An action for the cancellation of trademark like Civil Case No. Q-00-41446 is a remedy available to a person who
believes that he is or will be damaged by the registration of a mark.
 Unfair competition

• the criminal actions for unfair competition (Criminal Cases Nos. Q-02-108043-44) involved the determination of
whether or not Samson had given his goods the general appearance of the goods of Caterpillar, with the intent to deceive the
public or defraud Caterpillar as his competitor.

• registration was not a consideration necessary in unfair competition.

SUPREME COURT CITED: In not finding probable cause to indict Samson for unfair competition, State Prosecutor Abad

• It appears from the records that SAMSON started marketing his (class 25) products bearing the trademark Caterpillar as early
as 1992. In 1994, SAMSON caused the registration of the trademark "Caterpillar With A Triangle Device Beneath The Letter
[A]" with the Intellectual Property Office. Sometime on June 16, 1997, the IPO issued Certificate of Registration No. 64705
which appears to be valid for twenty (20) years, or up to June 16, 2017. Under the law, SAMSON’s operative act of registering
his Caterpillar trademark and the concomitant approval/issuance by the governmental entity concerned, conferred upon him
the exclusive right to use said trademark unless otherwise declared illegal. Otherwise stated and from the facts obtaining,
presumption of regularity lies, both from the standpoint of registration and use/passing on of the assailed Caterpillar products.

CATERPILLAR’s argument that Samson may still be held liable for unfair competition by reason of his having passed on five (5) other
Caterpillar products like "Cat", "Caterpillar", "Cat and Design", "Walking Machines" and "Track-Type Tractor Design. " is equally
difficult to sustain.

As may be gleaned from the records, Samson has been engaged in the sale and distribution of Caterpillar products since 1992
leading to the establishment of numerous marketing outlets. As such, it would be difficult to assail the presumption that SAMSON
has already established goodwill insofar as his registered Caterpillar products are concerned. On the other hand, CATERPILLAR’s
registration of the other Caterpillar products appears to have been caused only in 1995. In this premise, SAMSON may be considered
as prior user, while the latter, a subsequent one. Jurisprudence dictates that prior user of the trademark by one, will controvert the
claim by a subsequent one.

22

CIVIL SERVICE COMISSION v. NELI O. TAHANLANGIT 594 SCRA 124 (2009)

Courts have generally refrained from even expressing an opinion on cases where the issues have become moot and academic, there
being no more justiciable controversy to speak of, so that a determination thereof would be of no practical use or value. As a
consequence of the reorganization of the Bureau of Patents and Trademarks and Technology Transfer (BPTTT), pursuant to R.A. 8293,
into what is now known as the Intellectual Property Office (IPO), 137 incumbents therein, including respondent Nelia Tahanlangit, were
appointed to new positions in the approved staffing pattern of the IPO. Under the BPTTT plantilla, Tahanlangit occupied the position of
Trademark Principal Exmaniner I, a position said to be comparable to the item of Intellectual Property Rights Specialist I (IPRS-I) under
the new IPO plantilla to which said Tahanlangit was appointed. Petitioner Civil Service Commission‘s (CSC) NCR Office, however,
disapproved Tahanlangit‘s permanent appointment on the ground that the latter, for lack of the requisite educational qualifications, did
not qualify to the above-mentioned position to which she had been appointed. DTI Secretary Manuel Roxas II appealed the NCR Office
decision before the Civil Service Commission which it, however, affirmed. Insofar as Tahanlangit is concerned, CSC ruled that her
appointment as IPRS-I was correctly disapproved by the NCR Office. Tahanlangit thereafter filed an appeal before the Court of Appeals.
Pending resolution, however, she opted to retire optionally under R.A. 8291, otherwise known as the Government Service Insurance
System Act of 1997. The CA thus held that the challenged resolutions had been rendered moot and academic by Tahanlangit‘s
retirement from the government service pending resolution of her appeal. Further, the CA held that ―the ends of substantial justice
will be better served if herein respondent be allowed to retire from the service upholding that her permanent appointment be
considered valid and subsisting at the time of her retirement. To this ruling of the CA, CSC moved for reconsideration, but the same was
denied. Hence this petition.

ISSUE:

Whether or not Tahanlangit‘s optional retirement mooted the disapproval of her appointment as IPRS-I.

HELD:

When Tahanlangit retired from the service on August 31, 2003, CSC‘s Resolution No. 03-0237 of July 30, 2003 had not attained finality,
as it was pending appeal before the appellate court. Section 80 of CSC‘s Resolution No. 99-1936, ―The Uniform Rules on Administrative
Cases in the Civil Service, provide that a decision of the CSC or its Regional Office shall be immediately executory after fifteen (15) days
from receipt thereof, unless a motion for reconsideration is seasonably filed. Thus, when Tahanlangit was allowed to avail herself of
optional retirement under R.A. 8291, CSC‘s assailed resolutions have thus become moot and academic, at least, with respect to the
former‘s case. Courts have generally refrained from even expressing an opinion on cases where the issues have become moot and
academic, there being no more justiciable controversy to speak of, so that a determination thereof would be of no practical use or
value. In the present case, when Tahanlangit‘s appointment was disapproved by the CSC, Tahanlangit would still have been able to retire
under the applicable law, R.A. 8291, as the said law only requires that the employee concerned must have rendered at least 15 years of
service and must not have been receiving disability benefits at the time of retirement. Tahanlangit, having retired on August 31, 2003,
the position of IPRS I is presumed to have been already filled up and to be now occupied by one bearing the requisite qualifications.
Hence, passing on the disapproval of Tahanlangit‘s appointment no longer has any practical value.

23

24

25

G.R. No. 164321:March 28, 2011.

SKECHERS, USA, INC., Petitioner , v. INTER PACIFIC INDUSTRIALTRADING CORP., ET AL., Respondents.

FACTS:

Petitioner Skechers filed with the Regional Trial Court (RTC) of Manila an application for the issuance of search warrants (later granted)
against an outlet and warehouse operated by respondents for infringement of trademark under Section 155, in relation to Section 170
of Republic Act No.8293,otherwise known as the
Intellectual Property Code of the Philippines
. In the course of its business, petitioner has registered the trademark "SKECHERS" and the trademark "S" (within an oval design) with
the Intellectual Property Office (IPO).Later, the RTC issued an Order quashing the search warrants and directing the NBI to return the
seized goods. The RTC agreed with respondents view that Skechers rubber shoes and Strong rubber shoes (owned by respondent)
have glaring differences such that an ordinary prudent purchaser would not likely be misled or confused in purchasing the wrong
article. The CA and the SC dismissed the appeals. Petitioner now files a motion for reconsideration.

ISSUE
: Whether or not respondent is guilty of trademark infringement

HELD
:The motion is granted.

COMMERCIAL LAW: Trademark infringement.

The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion. In determining
similarity and likelihood of confusion, jurisprudence has developed tests the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required
that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. In
contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant
words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly
similar to the other.

Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized "S" by respondent in its Strong rubber
shoes infringes on the mark already registered by petitioner with the IPO. While it is undisputed that petitioners stylized "S" is within
an oval design, to this Courts mind, the dominant feature of the trademark is the stylized "S," as it is precisely the stylized "S" which
catches the eye of the purchaser. Thus, even if respondent did not use an oval design, the mere fact that it used the same stylized "S",
the same being the dominant feature of petitioners trademark, already constitutes infringement under the Dominancy Test.

In Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., Inc., this Court, in a case for unfair competition, had opined that even
if not all the details are identical, as long as the general appearance of the two products are such that any ordinary purchaser would
be deceived, the imitator should be liable.

While there may be dissimilarities between the appearances of the shoes, to this Courts mind such dissimilarities do not outweigh the
stark and blatant similarities in their general features. As can be readily observed by simply comparing petitioners Energy model and
respondents Strong rubber shoes, respondent also used the color scheme of blue, white and gray utilized by petitioner. Even the
design and "wavelike" pattern of the midsole and outer sole of respondents shoes are very similar to petitioners shoes, if not exact
patterns thereof. Other similarities on font, lettering, writings, are also present.

The dissimilarities between the shoes are too trifling and frivolous that it is indubitable that respondents products will cause
confusion and mistake in the eyes of the public. Respondents shoes may not be an exact replica of petitioners shoes, but the features
and overall design are so similar and alike that confusion is highly likely.

Motion is GRANTED.

26

WILLAWARE PRODUCTS CORPORATION v. JESICHRIS MANUFACTURING CORPORATION, GR No. 195549, 2014-09-03

Facts:
[Respondent] Jesichris Manufacturing Company ([respondent] for short) filed this present complaint for damages for unfair
competition with prayer for permanent injunction to enjoin [petitioner] Willaware Products Corporation ([petitioner] for short) from...
manufacturing and distributing plastic-made automotive parts similar to those of [respondent].
[Respondent] alleged that it is a duly registered partnership engaged in the manufacture and distribution of plastic and metal products
[Respondent] further alleged that in view of the physical proximity of [petitioner's] office to [respondent's] office, and in view of the
fact that some of the [respondent's] employees had transferred to [petitioner], [petitioner] had developed familiarity with
[respondent's]... products, especially its plastic-made automotive parts.
That sometime in November 2000, [respondent] discovered that [petitioner] had been manufacturing and distributing the same
automotive parts with exactly similar design, same material and colors but was selling these products at a lower price as [respondent's]
plastic-made... automotive parts and to the same customers.

Issues:
In essence, the issue for our resolution is: whether or not petitioner committed acts amounting to unfair competition under Article 28
of the Civil Code.

Ruling:
The concept of "unfair competition" under Article 28 is very much broader than that covered by intellectual property laws. Under the
present article, which follows the extended concept of "unfair competition" in American jurisdictions, the term covers even cases of
discovery of... trade secrets of a competitor, bribery of his employees, misrepresentation of all kinds, interference with the fulfillment
of a competitor's contracts, or any malicious interference with the latter's business.
Article 28 of the Civil Code provides that "unfair competition in agricultural, commercial or industrial enterprises or in labor through
the use of force, intimidation, deceit, machination or any other unjust, oppressive or high-handed method shall give rise to a right of
action... by the person who thereby suffers damage."
In order to qualify the competition as "unfair," it must have two characteristics: (1) it must involve an injury to a competitor or trade
rival, and (2) it must involve acts which are characterized as "contrary to good conscience," or "shocking to judicial sensibilities," or...
otherwise unlawful; in the language of our law, these include force, intimidation, deceit, machination or any other unjust, oppressive
or high-handed method. The public injury or interest is a minor factor; the essence of the matter appears to be a private wrong
perpetrated by... unconscionable means.
Here, both characteristics are present.
First, both parties are competitors or trade rivals, both being engaged in the manufacture of plastic-made automotive parts.
Second, the acts of the petitioner were clearly "contrary to good conscience" as petitioner admitted having employed respondent's
former... employees, deliberately copied respondent's products and even went to the extent of selling these products to respondent's
customers.
As aptly observed by the court a quo, the testimony of petitioner's witnesses indicate that it acted in bad faith in competing with the
business of respondent, to wit:
In sum, petitioner is guilty of unfair competition under Article 28 of the Civil Code.

Principles:
In order to qualify the competition as "unfair," it must have two characteristics: (1) it must involve an injury to a competitor or trade
rival, and (2) it must involve acts which are characterized as "contrary to good conscience," or "shocking to judicial sensibilities," or...
otherwise unlawful; in the language of our law, these include force, intimidation, deceit, machination or any other unjust, oppressive
or high-handed method. The public injury or interest is a minor factor; the essence of the matter appears to be a private wrong
perpetrated by... unconscionable means

27
246 Corporation V. Daway G.R. No. 157216. November 20, 2003

Lessons Applicable: Jurisdiction of Trial court, special affirmative defences on infringement

Laws Applicable:

FACTS:
• Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device, filed against 246 Corporation
the instant suit for trademark infringement and damages with prayer for the issuance of a restraining order or writ of preliminary
injunctionbefore the RTC of QC
o July 1996: 246 adopted and , since then, has been using without authority the mark “Rolex” in its business name “Rolex Music
Lounge” as well as in its newspaper advertisements as “Rolex Music Lounge, KTV, Disco & Party Club.”
• 246 answered special affirmative defences: no confusion would arise from the use by petitioner of the mark “Rolex” considering
that its entertainment business is totally unrelated to the items catered by respondents such as watches, clocks, bracelets and parts
thereof
• RTC: quashed the subpoena ad testificandum and denied petitioner’s motion for preliminary hearing on affirmative defenses
with motion to dismiss
• CA: affirmed

ISSUE: W/N RTC performed a grave abuse of discretion

HELD:
NO. petition denied. RTC affirmed
• The issue of whether or not a trademark infringement exists, is a question of fact that could best be determined by the trial
court.
• Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
o (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with
respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a
connection between those goods or services, and the owner of the registered mark: Provided, further, That the interest of the
owner of the registered mark are likely to be damaged by such use
• Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to respondents’ business involving
watches, clocks, bracelets, etc. However, the Court cannot yet resolve the merits of the present controversy considering that the
requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly require determination facts of
which need to be resolved at the trial court. The existence or absence of these requisites should be addressed in a full blown
hearing and not on a mere preliminary hearing. The respondent must be given ample opportunity to prove its claim, and the
petitioner to debunk the same.

28

Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc.

G.R. No. 167715
November 17, 2010

Facts:

Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under the brand name “Unasyn.”
Subsequently, Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals without
the Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist from accepting such bids. Pfizer also demanded that
Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and forfeiture of the infringing products. A
preliminary injunction effective for 90 days was granted by the IPO’s Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for
extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) a complaint for infringement and unfair
competition, with a prayer for injunction. The RTC issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping. Nevertheless, the CA issued a temporary
restraining order. Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed,
thus making the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted to the
Director General. The CA denied all the motions. Pharmawealth filed a petition for review on Certiorari with the Supreme Court.

Issue:
Whether or not an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already
lapsed?

Ruling:
Petitioner argues that respondents’ exclusive right to monopolize the subject matter of the patent exists only within the term of the
patent. Petitioner claims that since respondents’ patent expired on July 16, 2004, the latter no longer possess any right of monopoly
and, as such, there is no more basis for the issuance of a restraining order or injunction against petitioner insofar as the disputed patent
is concerned.

The Court agrees. Section 37 of Republic Act No. (RA) 165, which was the governing law at the time of the issuance of respondents’
patent, provides:

Section 37. Rights of patentees. A patentee shall have the exclusive right to make, use and sell the patented machine, article
or product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the
Philippines for the term of the patent; and such making, using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent. It is clear from the above-quoted provision of law that the exclusive right of
a patentee to make, use and sell a patented product, article or process exists only during the term of the patent.

In the instant case, the patent, which was the basis of respondents in filing their complaint with the BLA-IPO, was issued on July 16,
1987. This fact was admitted by respondents themselves in their complaint. They also admitted that the validity of the said patent is
until July 16, 2004, which is in conformity with Section 21 of RA 165, providing that the term of a patent shall be seventeen (17) years
from the date of issuance thereof. Section 4, Rule 129 of the Rules of Court provides that an admission, verbal or written, made by a
party in the course of the proceedings in the same case, does not require proof and that the admission may be contradicted only by
showing that it was made through palpable mistake or that no such admission was made. In the present case, there is no dispute as to
respondents’ admission that the term of their patent expired on July 16, 2004. Neither is there evidence to show that their admission
was made through palpable mistake. Hence, contrary to the pronouncement of the CA, there is no longer any need to present evidence
on the issue of expiration of respondents’ patent.
On the basis of the foregoing, the Court agrees with petitioner that after July 16, 2004, respondents no longer possess the exclusive
right to make, use and sell the articles or products covered by Philippine Letters Patent No. 21116.

29

SERI SOMBOONSAKDIKUL, Petitioner vs. ORLANE S.A., Respondent

G.R. No. 188996
February 1, 2017

Facts:

On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an application for registration of the mark LOLANE with the
IPO for goods classified under Class 3 (personal care products) of the International Classification of Goods and Services for the Purposes
of the Registration of Marks (International Classification of Goods). Orlane S.A. (respondent) filed an opposition to petitioner's
application, on the ground that the mark LOLANE was similar to ORLANE in presentation, general appearance and pronunciation, and
thus would amount to an infringement of its mark. Respondent alleged that: (1) it was the rightful owner of the ORLANE mark which
was first used in 1948; (2) the mark was earlier registered in the Philippines on July 26, 1967 under Registration No. 129961 with the
following goods: x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics, lotions for the hair, dentrifices, eyebrow
pencils, make-up creams, cosmetics & toilet preparations under Registration No. 12996 and (3) on September 5, 2003, it filed another
application for use of the trademark on its additional products.

Petitioner denied that the LOLANE mark was confusingly similar to the mark ORLANE. He averred that he was the lawful owner of the
mark LOLANE which he has used for various personal care products sold worldwide. He alleged that the first worldwide use of the mark
was in Vietnam on July 4, 1995. Petitioner also alleged that he had continuously marketed and advertised Class 3 products bearing
LOLANE mark in the Philippines and in different parts of the world and that as a result, the public had come to associate the mark with
him as provider of quality personal care products.

Petitioner maintained that the marks were distinct and not confusingly similar either under the dominancy test or the holistic
test.

The Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision dated February 27, 2007, finding that respondent's
application was filed, and its mark registered, much earlier. The BLA ruled that there was likelihood of confusion based on the following
observations: (1) ORLANE and LOLANE both consisted of six letters with the same last four letters - LANE; (2) both were used as label
for similar products; (3) both marks were in two syllables and that there was only a slight difference in the first syllable; and (4) both
marks had the same last syllable so that if these marks were read aloud, a sound of strong similarity would be produced and such would
likely deceive or cause confusion to the public as to the two trademarks.

Petitioner filed a motion for reconsideration but this was denied by the Director of the BLA on May 7, 2007. On appeal, the Director
General of the IPO affirmed the Decision of the BLA Director. Thus, petitioner filed a petition for review before the CA arguing that there
is no confusing similarity between the two marks. The Court of Appeals denied the petition and held that there exists colorable imitation
of respondent's mark by LOLANE. The CA accorded due respect to the Decision of the Director General and ruled that there was
substantial evidence to support the IPO's findings of fact. Applying the dominancy test, the CA ruled that LOLANE' s mark is confusingly
or deceptively similar to ORLANE.

Issue:

Whether or not there is confusing similarity between ORLANE and LOLANE which would bar the registration of LOLANE before the IPO.

Ruling:

No, there is no confusing similarity between ORLANE and LOLANE which would bar the registration of LOLANE before the IPO. The Court
ruled that the CA erred when it affirmed the Decision of the IPO.
There is no colorable imitation between the marks LOLANE and ORLANE which would lead to any likelihood of confusion to the ordinary
purchasers. A trademark is defined under Section 121.1 of RA 8293 as any visible sign capable of distinguishing the goods. It is susceptible
to registration if it is crafted fancifully or arbitrarily and is capable of identifying and distinguishing the goods of one manufacturer or
seller from those of another. Thus, the mark must be distinctive. The registrability of a trademark is governed by Section 123 of RA 8293.
Section 123.1 provides:

Section 123. 1. A mark cannot be registered if it:

xxx....
d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect
of: i) The same goods or services, or ii) Closely related goods or services, or iii) If it nearly resembles such a mark as to be likely
to deceive or cause confusion;

e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for identical or similar goods or services:
provided, that in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the
promotion of the mark; xxx.

In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks; [b] the similarity of
the goods to which the trademarks are attached; [c] the likely effect on the purchaser and [d] the registrant's express or implied consent
and other fair and equitable considerations. Likewise, the Court finding that LOLANE is not a colorable imitation of ORLANE due to
distinct visual and aural differences using the dominancy test, it no longer finds necessary to discuss the contentions of the petitioner
as to the appearance of the marks together with the packaging, nature of the goods represented by the marks and the price difference,
as well as the applicability of foreign judgments. The Court ruled that the mark LOLANE is entitled to registration. Hence, the petition is
GRANTED and the Decision of the Court of Appeals dated July 14, 2009 is REVERSED and SET ASIDE.

30

Skechers vs. Inter Pacific Industrial Trading Corp. G.R. No. 164321

March 23, 2011

Facts:

The present controversy arose when petitioner filed with Branch 24 of the Regional Trial Court (RTC) of Manila an application for the
issuance of search warrants against an outlet and warehouse operated by respondents for infringement of trademark under Section
155, in relation... to Section 170 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines. In the
course of its business, petitioner has registered the trademark "SKECHERS" and the trademark "S" (within... an oval design with the
Intellectual Property Office (IPO).

As a result of the raid, more than 6,000 pairs of shoes bearing the "S" logo were seized. Later, respondents moved to quash the search
warrants, arguing that there was no confusing similarity between petitioner's "Skechers" rubber shoes and its "Strong" rubber shoes.

The RTC issued an Order quashing the search warrants and directing the NBI to return the seized goods. The RTC agreed with
respondent's view that Skechers rubber shoes and Strong rubber shoes have glaring differences such that an ordinary prudent purchaser
would not likely be misled or confused in purchasing the wrong article.CA affirmed the ruling of the RTC.

Issue:

Whether or not respondent is guilty of trademark infringement.

Ruling:

The basic law on trademark, infringement, and unfair competition is Republic Act (R.A.) No. 8293. Specifically, Section 155 of R.A. No.
8293 states:

Remedies; Infringement. -- Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same
container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods
or services... including other preparatory steps necessary to carry out the sale of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used... in commerce upon or in connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or
to deceive, shall be liable in a civil action for... infringement by the registrant for the remedies hereinafter set forth: Provided,
That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed
regardless of whether there is actual sale of goods or services using the... infringing material.[15]

The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion.

Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized "S" by respondent in its Strong rubber
shoes infringes on the mark already registered by petitioner with the IPO. While it is undisputed that petitioner's stylized "S" is within
an oval... design, to this Court's mind, the dominant feature of the trademark is the stylized "S," as it is precisely the stylized "S" which
catches the eye of the purchaser. Thus, even if respondent did not use an oval design, the mere fact that it used the same stylized "S",
the... same being the dominant feature of petitioner's trademark, already constitutes infringement under the Dominancy Test.

Furthermore, respondent did not simply use the letter "S," but it appears to this Court that based on the font and the size of the
lettering, the stylized "S" utilized by respondent is the very same stylized "S" used by petitioner; a stylized "S" which is unique and...
distinguishes petitioner's trademark. Indubitably, the likelihood of confusion is present as purchasers will associate the respondent's
use of the stylized "S" as having been authorized by petitioner or that respondent's product is connected with petitioner's business.

While there may be dissimilarities between the appearances of the shoes, to this Court's mind such dissimilarities do not outweigh the
stark and blatant similarities in their general features.

WHEREFORE, premises considered, the Motion for Reconsideration is GRANTED. The Decision dated November 30, 2006 is
RECONSIDERED and SET ASIDE.

31

BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG vs PHILIPPINE SHOE EXPO MARKETING CORPORATION,

G.R. No. 194307. November 20, 2013

DOCTRINES:

• Under Section 2 of RA 166, which is also the law governing the subject applications, in order to register a trademark, one must
be the owner thereof and must have actually used the mark in commerce in the Philippines for two (2) months prior to the application
for registration. Section 2-A of the same law sets out to define how one goes about acquiring ownership thereof. Under the same
section, it is clear that actual use in commerce is also the test of ownership but the provision went further by saying that the mark must
not have been so appropriated by another. Significantly, to be an owner, Section 2-A does not require that the actual use of a trademark
must be within the Philippines. Thus, under RA 166, one may be an owner of a mark due to its actual use but may not yet have the right
to register such ownership here due to the owner’s failure to use the same in the Philippines for two (2) months prior to registration.

• It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not
the owner of the trademark, he has no right to apply for its registration. 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. Such
presumption, just like the presumptive regularity in the performance of official functions, is rebuttable and must give way to evidence
to the contrary.

• It is not the application or registration of a trademark that vests ownership thereof, but it is the ownership of a trademark that
confers the right to register the same. A trademark is an industrial property over which its owner is entitled to property rights which
cannot be appropriated by unscrupulous entities that, in one way or another, happen to register such trademark ahead of its true and
lawful owner. The presumption of ownership accorded to a registrant must then necessarily yield to superior evidence of actual and
real ownership of a trademark.

FACTS:

• Petitioner Birkenstock, a corporation duly organized and existing under the laws of Germany applied for various trademark
registrations before the Intellectual Property Office (IPO). However, the applications were suspended in view of the existing registration
of the mark “BIRKENSTOCK AND DEVICE” under Registration No. 56334 dated October 21, 1993 in the name of Shoe Town International
and Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing Corporation.

• On May 27, 1997, Birkinstock filed a petition (Cancellation Case) for cancellation of Registration No. 564334 on the ground that
it is the lawful and rightful owner of the Birkenstock marks. During its pendency, however, respondent Philippine Shoe Expo or it
predecessor-in-interest failed to file the required 10th Year Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or
before October 21, 2004, thereby resulting the cancellation of such mark. Accordingly, the cancellation case was dismissed for being
moot and academic thereby paving the way for the publication of the subject applications.

• In response, respondent Philippine Shoe Expo filed with the Bureau of Legal Affairs (BLA) of the IPO three separate verified
notices of opposition to the subject applications docketed as Inter Partes Cases claiming, among others, it, together with its predecessor-
in-interest, has been using the Birkenstock marks in the Philippines for more than 16 years through the mark “BIRKENSTOCK AND
DEVICE”.

• In its Decision, the BLA of the IPO sustained respondent’s opposition, thus ordering the rejection of the subject applications of
Petitioner. Aggrieved, petitioner Birkinstock appealed to the IPO Director General whereby in its decision, the latter reversed and set
aside the ruling of the BLA thus allowing the registration of the subject applications.

• Finding the IPO Director General’s reversal of the BLA unacceptable, respondent Philippine Shoe Expo filed a petition for review
with the Court of Appeals. In its decision dated June 25, 2010, the CA reversed and set aside the ruling of the IPO Director General and
reinstated that of the BLA. The petitioner Birkenstock filed a Motion for Reconsideration but was denied by the CA.

• Hence , this petition to the Supreme Court.

ISSUE:

1. Whether or not the subject marks should be allowed registration in the name of the petitioner?

RULING:

1. The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it provides that, “Each certificate of
registration shall remain in force for twenty years: Provided, that the registration under the provisions of this Act shall be cancelled by
the Director, unless within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of
registration, the registrant shall file in the Patent Office an affidavit showing that the mark or trade-name is still in use or showing that
its non-use is due to special circumstance which excuse such non-use and is not due to any intention to abandon the same, and pay the
required fee.”
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for Registration No. 56334 within the requisite period, or
on or before October 21, 2004. As a consequence, it was deemed to have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant
is not the owner of the trademark, he has no right to apply for its registration. Registration merely creates a prima facie presumption of
the validity of the registration. Such presumption, just like the presumptive regularity in the performance of official functions, is
rebuttable and must give way to evidence to the contrary. Besides, petitioner has duly established its true and lawful ownership of the
mark “BIRKENSTOCK”. It submitted evidence relating to the origin and history of “BIRKENSTOCK” and it use in commerce long before
respondent was able to register the same here in the Philippines. Petitioner also submitted various certificates of registration of the
mark “BIRKENSTOCK” in various countries and that it has used such mark in different countries worldwide, including the Philippines.

32

PEST MANAGEMENT G.R. NO. 156041 ASSOCIATION OF THE

PHILIPPINES (PMAP), V. FERTILIZER AND PESTICIDE AUTHORITY (FPA), SECRETARY

OF THE DEPARTMENT OF AGRICULTURE, FPA OFFICER- IN-CHARGE CESAR M. DRILON, AND FPA DEPUTY DIRECTOR DARIO C. SALUBARSE,

Facts: The case commenced upon petitioners filing of a Petition For Declaratory Relief With Prayer For Issuance Of A Writ Of Preliminary
Injunction And/Or Temporary Restraining Order with the RTC on January 4, 2002. Petitioner, a non-stock corporation duly organized
and existing under the laws of the Philippines, is an association of pesticide handlers duly licensed by respondent Fertilizer and Pesticide
Authority (FPA). It questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory Policies and Implementing Guidelines, which
provides thus:

3.12 Protection of Proprietary Data

Data submitted to support the first full or conditional registration of a pesticide active ingredient in the Philippines will be granted
proprietary protection for a period of seven years from the date of such registration. During this period subsequent registrants may rely
on these data only with third party authorization or otherwise must submit their own data.

Petitioner argued that the specific provision on the protection of the proprietary data in FPAs Pesticide Regulatory Policies and
Implementing Guidelines is unlawful for going counter to the objectives of Presidential Decree No. 1144 (P.D. No. 1144); for exceeding
the limits of delegated authority; and for encroaching on the exclusive jurisdiction of the Intellectual Property Office.

On November 5, 2002, the RTC dismissed the petition for declaratory relief for lack of merit. The RTC held that the FPA did not exceed
the limits of its delegated authority in issuing the aforecited Section 3.12 of the Guidelines granting protection to proprietary data x x x
because the issuance of the aforecited Section was a valid exercise of its power to regulate, control and develop the pesticide industry
under P.D. 1144[2] and the assailed provision does not encroach on one of the functions of the Intellectual Properly Office (IPO).[3]

Dissatisfied with the RTC Decision, petitioner resorted to filing this petition for review on certiorari where the following issues are raised:

Respondents, on the other hand, maintain that the provision on the protection of proprietary data in the FPA's Pesticide Regulatory
Policies and Implementing Guidelines is valid and legal as it does not violate the objectives of P.D. No. 1144; the proprietary data are a
substantial asset which must be protected; the protection for a limited number of years does not constitute unlawful restraint of free
trade; and such provision does not encroach upon the jurisdiction of the Intellectual Property Office.

Respondents expound that since under P.D. No. 1144, the FPA is mandated to regulate, control and develop the pesticide industry, it
was necessary to provide for such protection of proprietary data, otherwise, pesticide handlers will proliferate to the the detriment of
the industry and the public since the inherent toxicity of pesticides are hazardous and are potential environmental contaminants.
They also pointed out that the protection under the assailed Pesticide Regulatory Policies and Implementing Guidelines is warranted,
considering that the development of proprietary data involves an investment of many years and large sums of money, thus, the data
generated by an applicant in support of his application for registration are owned and proprietary to him. Moreover, since the protection
accorded to the proprietary data is limited in time, then such protection is reasonable and does not constitute unlawful restraint of
trade.

Lastly, respondents emphasize that the provision on protection of proprietary data does not usurp the functions of the Intellectual
Property Office (IPO) since a patent and data protection are two different matters. A patent prohibits all unlicensed making, using and
selling of a particular product, while data protection accorded by the FPA merely prevents copying or unauthorized use of an applicant's
data, but any other party may independently generate and use his own data. It is further argued that under Republic Act No. 8293 (R.A.
No. 8293), the grant of power to the IPO to administer and implement State policies on intellectual property is not exclusionary as the
IPO is even allowed to coordinate with other government agencies to formulate and implement plans and policies to strengthen the
protection of intellectual property rights.

Issues:

WHETHER OR NOT RESPONDENT FPA HAS ACTED BEYOND THE SCOPE OF ITS DELEGATED POWER WHEN IT GRANTED A SEVEN-YEAR
PROPRIETARY PROTECTION TO DATA SUBMITTED TO SUPPORT THE FIRST FULL OR CONDITIONAL REGISTRATION OF A PESTICIDE
INGREDIENT IN THE PHILIPPINES;

II

WHETHER OR NOT RESPONDENT FPA IS ENCROACHING ON THE EXCLUSIVE JURISDICTION OF THE INTELLECTUAL PROPERTY OFFICE
(IPO) WHEN IT INCLUDED IN ITS PESTICIDE REGULATORY POLICIES AND IMPLEMENTING GUIDELINES THE SUBJECT SEVEN-YEAR
PROPRIETARY DATA PROTECTION;

III

WHETHER OR NOT SAID PROPRIETARY DATA PROTECTION IS AN UNLAWFUL RESTRAINT OF FREE TRADE;

IV

WHETHER OR NOT SAID PROPRIETARY DATA PROTECTION RUNS COUNTER TO THE OBJECTIVES OF P.D. NO. 1144;

Ruling: The petition is devoid of merit.

The law being implemented by the assailed Pesticide Regulatory Policies and Implementing Guidelines is P.D. No. 1144, entitled Creating
the Fertilizer and Pesticide Authority and Abolishing the Fertilizer Industry Authority. As stated in the Preamble of said decree, there is
an urgent need to create a technically-oriented government authority equipped with the required expertise to regulate, control and
develop both the fertilizer and the pesticide industries.

Verily, in this case, the Court acknowledges the experience and expertise of FPA officials who are best qualified to formulate ways and
means of ensuring the quality and quantity of pesticides and handlers thereof that should enter the Philippine market, such as giving
limited protection to proprietary data submitted by applicants for registration.The Court ascribes great value and will not disturb the
FPA's determination that one way of attaining the purposes of its charter is by granting such protection, specially where there is nothing
on record which shows that said administrative agency went beyond its delegated powers.

Moreover, petitioner has not succeeded in convincing the Court that the provision in question has legal infirmities.
There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise known as the Intellectual Property Code
of the Philippines. Section 5 thereof enumerates the functions of the IPO. Nowhere in said provision does it state nor can it be inferred
that the law intended the IPO to have the exclusive authority to protect or promote intellectual property rights in the Philippines. On
the contrary, paragraph (g) of said Section even provides that the IPO shall [c]oordinate with other government agencies and the private
sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country.
Clearly, R.A. No. 8293 recognizes that efforts to fully protect intellectual property rights cannot be undertaken by the IPO alone. Other
agencies dealing with intellectual property rights are, therefore, not precluded from issuing policies, guidelines and regulations to give
protection to such rights.

There is also no evidence whatsoever to support petitioner's allegation that the grant of protection to proprietary data would result in
restraining free trade. Petitioner did not adduce any reliable data to prove its bare allegation that the protection of proprietary data
would unduly restrict trade on pesticides. Furthermore, as held in Association of Philippine Coconut Desiccators v. Philippine Coconut
Authority,[6] despite the fact that our present Constitution enshrines free enterprise as a policy, it nonetheless reserves to the
government the power to intervene whenever necessary to promote the general welfare. There can be no question that the unregulated
use or proliferation of pesticides would be hazardous to our environment. Thus, in the aforecited case, the Court declared that free
enterprise does not call for removal of protective regulations.[7] More recently, in Coconut Oil Refiners Association, Inc. v. Torres,[8]
the Court held that [t]he mere fact that incentives and privileges are granted to certain enterprises to the exclusion of others does not
render the issuance unconstitutional for espousing unfair competition. It must be clearly explained and proven by competent evidence
just exactly how such protective regulation would result in the restraint of trade.

In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and Implementing Guidelines granting protection to proprietary
data is well within the authority of the FPA to issue so as to carry out its purpose of controlling, regulating and developing the pesticide
industry

33

COFFEE PARTNERS, INC. VS. SAN FRANCISCO COFFEE AND ROASTERY, INC.

GR No. 169504, March 3, 2010

FACTS:

The petitioner holds a business in maintaining coffee shops in the Philippines. It is registered with the Securities and Exchange
Commission in January 2001. In its franchise agreement with Coffee Partners Ltd, it carries the trademark “San Francisco Coffee.”
Respondent is engaged in the wholesale and retail sale of coffee that was registered in SEC in May 1995 under a registered business
name of “San Francisco Coffee & Roastery, Inc.” It entered into a joint venture with Boyd Coffee USA to study coffee carts in malls.

When respondent learned that petitioner will open a coffee shop in Libis, Q.C. they sent a letter to the petitioner demanding them to
stop using the name “San Francisco Coffee” as it causes confusion to the minds of the public.

A complaint was also filed by respondents before the Bureau of Legal Affairs of the Intellectual Property Office for infringement and
unfair competition with claims for damages.

Petitioners contend that there are distinct differences in the appearance of their trademark and that respondent abandoned the use of
their trademark when it joined venture with Boyd Coffee USA.

The Bureau of Legal Affairs of the IPO held that petitioner’s trademark infringed on the respondent’s trade name as it registered its
business name first with the DTI in 1995 while petitioner only registered its trademark in 2001. Furthermore, it ruled that the respondent
did not abandon the use of its trade name upon its joint venture with Boyd Coffee USA since in order for abandonment to exist it must
be permanent, intentional and voluntary.

It also held that petitioner’s use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact similarity
in sound, spelling, pronunciation, and commercial impression of the words "SAN FRANCISCO" which is the dominant portion of
respondent’s trade name and petitioner’s trademark.
Upon appeal before the office of the Director General of the IPO, the decision of its legal affairs was reversed declaring there was no
infringement. The Court of Appeals however set aside its decision and reinstated the IPO legal affairs’ decision.

Petitioner contends that the respondent’s trade name is not registered therefore a suit for infringement is not available.

ISSUE:

Whether or not the petitioner’s use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondent’s trade name
"SAN FRANCISCO COFFEE & ROASTERY, INC." even if the trade name is not registered with the Intellectual Property Office (IPO).

HELD:

Petition denied. Registration of a trademark before the IPO is no longer a requirement to file an action for infringement as provided in
Section 165.2 of RA 8293. All that is required is that the trade name is previously used in trade or commerce in the Philippines. There is
no showing that respondent abandoned the use of its trade name as it continues to embark to conduct research on retailing coffee,
import and sell coffee machines as among the services for which the use of the business name has been registered.

The court also laid down two tests to determine similarity and likelihood of confusion. The dominancy test focuses on similarity of the
prevalent features of the trademarks that could cause deception and confusion that constitutes infringement. Exact duplication or
imitation is not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of
the public or to deceive consumers. 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.15 The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether
one is confusingly similar to the other.

Applying the dominancy test or the holistic test, petitioner’s "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondent’s
"SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SANFRANCISCO COFFEE" are precisely the dominant
features of respondent’s trade name. And because both are involved in coffee business there is always the high chance that the public
will get confused of the source of the coffee sold by the petitioner. Respondent has acquired an exclusive right to the use of the trade
name "SAN FRANCISCO COFFEE & ROASTERY,INC." since the registration of the business name with the DTI in 1995.

34

SHIRLEY F. TORRES, petitioner, vs. IMELDA PEREZ and RODRIGO PEREZ, respondents.
[G.R. No. 188225. November 28, 2012.]
SERENO, C.J p:

FACTS:
Respondents spouses Perez own RGP Footwear Manufacturing (RGP), which supplies ladies' shoes to Shoe Mart (SM). Petitioner and
Sunshine formed Sasay's Closet Co. (SCC), a partnership registered with the SEC. SCC was engaged in the supply, trading, retailing of
garments such as underwear, children's wear, women's and men's wear, and other incidental activities related thereto.
For its products, SCC used the trademark "Naturals with Design," which it filed with the Intellectual Property Office and registered. These
products were primarily supplied to SM, which assigned to them the vendor code "190501".
SCC used the facilities and equipment owned by RGP, as well as the latter's business address (No. 72 Victoria Subdivision, Barangay Dela
Paz, Biñan, Laguna), which was also the residential address of respondents.
Sunshine pulled out of the partnership and respondent Imelda took over Sunshine's responsibilities in the partnership.
Despite the objections of petitioner to the dissolution of SCC, various amounts were paid to her by respondents for her share in the
partnership assets.
Petitioner established Tezares Enterprise, a sole proprietorship engaged in supplying and trading of clothing and accessories except
footwear. 23 Also in March 2006, she discovered that underwear products bearing the brand "Naturals" were being sold in SM with
vendor code "180195." 24 This code was registered to RGP, 25 a fact confirmed by test buys conducted by her lawyers on 13 and 14
May 2006. 26
The trial court ruled that respondents did not pass off "Naturals" as the brand of another manufacturer. On the contrary, they used the
brand in the honest belief that they owned SCC, the owner of the brand.

ISSUE

Whether or not there exists probable cause to indict respondents for unfair competition.

HELD:

Here, we find that there was no probable cause to indict respondents, because the crime of unfair competition was not committed.
In positing that respondents were guilty of unfair competition, petitioner makes a lot of the fact that they used the vendor code of RGP
in marketing the "Naturals" products. She argues that they passed off the "Naturals" products, which they marketed under RGP, as
those of SCC; thus, they allegedly prejudiced the rights of SCC as owner of the trademark. She also claims that she has the personality
to prosecute respondents for unfair competition on behalf of SCC.
When Judge Untalan denied the Motion to Dismiss and/or Withdraw Information filed by the prosecution and thereby sustained the
position of petitioner, his error lay in the fact that his focus on the crime of unfair competition was unwarranted. In this case, much
more important than the issue of protection of intellectual property is the change of ownership of SCC. The arguments of petitioner
have no basis, because respondents are the exclusive owners of SCC, of which she is no longer a partner.
Based on the findings of fact of the CA and the DOJ, respondents have completed the payments of the share of petitioner in the
partnership affairs. Having bought her out of SCC, respondents were already its exclusive owners who, as such, had the right to use the
"Naturals" brand.
The use of the vendor code of RGP was resorted to only for the practical purpose of ensuring that SM's payments for the "Naturals"
products would go to respondents, who were the actual suppliers.
Furthermore, even if we were to assume that the issue of protection of intellectual property is paramount in this case, the criminal
complaint for unfair competition against respondents cannot prosper, for the elements of the crime were not present. We have
enunciated in CCBPI v. Gomez 67 that the key elements of unfair competition are "deception, passing off and fraud upon the
public." 68 No deception can be imagined to have been foisted on the public through different vendor codes, which are used by SM
only for the identification of suppliers' products.

35
SONY COMPUTER ENTERTAINMENT, INC., Petitioner,
vs.
SUPERGREEN, INCORPORATED

G.R. No. 161823 March 22, 2007

Facts:

Petitioner Sony Computer Entertainment, Inc., filed a case against respondent Supergreen, Incorporated in violation of Republic Act
No. 8293.

According to Sony, Respondent imitated the general appearance of petitioner’s goods and that respondent sold the goods allegedly
in Mandaluyong City, Metro Manila. Furthermore, the NBI found that respondent engaged in the reproduction and distribution of
counterfeit "PlayStation" game software, consoles and accessories in violation of Sony Computer’s intellectual property rights.

Thus, NBI applied with the Regional Trial Court (RTC) of Manila, Branch 1 for warrants to search respondent’s premises in Parañaque
City and Cavite and simultaneously served the search warrants on the subject premises and seized a replicating machine and several
units of counterfeit "PlayStation" consoles, joy pads, housing, labels and game software.

Respondent assails the validity of the warrant due to wrong venue and counters that the applications should be filed and provided the
territorial limitations on search warrants. Even granting that petitioner has compelling reasons, respondent maintains that petitioner
cannot file the application with the RTC of Manila because Cavite belongs to another judicial region. Respondent also argues that
the doctrine on continuing crime is applicable only to the institution of a criminal action, not to search warrant applications which
is governed by Rule 126, and in this case Section.

Issue:

Whether or not the offenses involved in the subject search warrants are "continuing crimes" .

Held:

We agree with petitioner that this case involves a transitory or continuing offense of unfair competition under Section 168 of Republic
Act No. 8293, which provides,

SEC. 168. Unfair Competition, Rights, Regulation and Remedies. – …

168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

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

(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as
to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any
other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a 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.

Pertinent too is Article 189 (1) of the Revised Penal Code that enumerates the elements of unfair competition, to wit:

(a) That the offender gives his goods the general appearance of the goods of another manufacturer or dealer;

(b) That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their packages, or in the (3) device or
words therein, or in (4) any other feature of their appearance;

(c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to do the same with a like
purpose; and

(d) That there is actual intent to deceive the public or defraud a competitor.

Respondent’s imitation of the general appearance of petitioner’s goods was done allegedly in Cavite. It sold the goods allegedly in
Mandaluyong City, Metro Manila. The alleged acts would constitute a transitory or continuing offense. Thus, clearly, under Section 2
(b) of Rule 126, Section 168 of Rep. Act No. 8293 and Article 189 (1) of the Revised Penal Code, petitioner may apply for a search
warrant in any court where any element of the alleged offense was committed, including any of the courts within the National Capital
Region (Metro Manila).

36

HELLO KITTY
 Sanrio Company Limited vs. Edgar C. Lim, doing business as ORIGNAMURA TRADING, respondent G.R. No. 168662 February 19,
2008

Facts of the case

Petitioner Sanrio Company Limited, a Japanese corporation, owns the copyright of various animated characters such as "Hello Kitty,"
"Little Twin Stars," "My Melody," "Tuxedo Sam" and "Zashikibuta" among others.4 While it is not engaged in business in the
Philippines, its products are sold locally by its exclusive distributor, Gift Gate Incorporated (GGI).5\

GGI entered into licensing agreements with JC Lucas Creative Products, Inc., Paper Line Graphics, Inc. and Melawares Manufacturing
Corporation.6 These local entities were allowed to manufacture certain products (bearing petitioner's copyrighted animated
characters) for the local market.

Due to the deluge of counterfeit Sanrio products, GGI asked IP Manila Associates (IPMA) to conduct a market research. The research's
objective was to identify those factories, department stores and retail outlets manufacturing and/or selling fake Sanrio items.After
conducting several test-buys in various commercial areas, IPMA confirmed that respondent's Orignamura Trading in Tutuban Center,
Manila was selling imitations of petitioner's products.

IPMA forwarded the said affidavit to the National Bureau of Investigation (NBI) which thereafter filed an application for the issuance
of a search warrant in the office of the Executive Judge of the Regional Trial Court of Manila.As a result thereof, they were able to
seize various Sanrio products.

Petitioner filed a complaint affidavit with the Task-Force on Anti-Intellectual Property Piracy (TAPP) of the Department of Justice (DOJ)
against respondent for violation of Section 217 of the Intellectual Property Code (IPC) but the same was dismissed by the DOJ due
to insufficiency of evidence. And affirmed by the Office of the Chief State Prosecutor of the DOJ.

Petitioner filed a petition for certiorari in the CA. but the appellate court dismissed the petition on the ground of
prescription.According to the CA, if no complaint was filed in court within two years after the commission of the alleged violation, the
offense had already prescribed.25

On the merits of the case, the CA concluded that the DOJ did not commit grave abuse of discretion in dismissing the petition for
review.26 To be criminally liable for violation of Section 217.3 of the IPC, the following requisites must be present:

1. possession of the infringing copy and

2. knowledge or suspicion that the copy is an infringement of the genuine article.

The CA agreed with the DOJ that petitioner failed to prove that respondent knew that the merchandise he sold was counterfeit.
Respondent, on the other hand, was able to show that he obtained these goods from legitimate sources.27 Petitioner moved for
reconsideration but it was denied.

ISSUE:

Whether or not the alleged violation of the IPC had prescribed?

HELD:

NO. Section 2 of Act 3326 provides that the prescriptive period for violation of special laws starts on the day such offense was
committed and is interrupted by the institution of proceedings against respondent (i.e., the accused).

Petitioner in this instance filed its complaint-affidavit on April 4, 2002 or one year, ten months and four days after the NBI searched
respondent's premises and seized Sanrio merchandise therefrom. Although no information was immediately filed in court,
respondent's alleged violation had not yet prescribed.
In the recent case of Brillantes v. Court of Appeals,3 we affirmed that the filing of the complaint for purposes of preliminary
investigation interrupts the period of prescription of criminal responsibility.Thus, the prescriptive period for the prosecution of the
alleged violation of the IPC was tolled by petitioner's timely filing of the complaint-affidavit before the TAPP.

The prosecutors in this case consistently found that no probable cause existed against respondent for violation of the IPC. They were
in the best position to determine whether or not there was probable cause. We find that they arrived at their findings after carefully
evaluating the respective evidence of petitioner and respondent. Their conclusion was not tainted with grave abuse of discretion.

WHEREFORE, the petition is hereby DENIED.

Costs against petitioner.

SO ORDERED.

37
SASOT VS. PEOPLE
GR NO. 143193, JUNE 29, 2005

FACTS:
The case subject of the present special civil action for certiorari is a criminal prosecution against petitioners for unfair competition
under Article 189 of the Revised Penal Code.
National Bureau of Investigation (NBI) conducted an investigation pursuant to a complaint by the NBA Properties, Inc., against
petitioners for possible violation of Article 189 of the Revised Penal Code on unfair competition. The report stated that petitioners are
engaged in the manufacture, printing, sale, and distribution of counterfeit NBA garment products.
Before arraignment, petitioners filed a Motion to Quash the Information on the following grounds:
I. THAT THE FACTS CHARGED DO NOT CONSTITUTE AN OFFENSE
II. AND THIS HONORABLE COURT HAD NO JURISDICTION OVER THE OFFENSE CHARGED OR THE PERSON OF THE ACCUSED
Petitioners contend that complainant is a foreign corporation not doing business in the Philippines, and cannot be protected by
Philippine patent laws since it is not a registered patentee. Petitioners aver that they have been using the business name ALLANDALE
SPORTSLINE, INC. since 1972, and their designs are original and do not appear to be similar to complainants, and they do not use
complainants logo or design.
The trial prosecutor of the RTC-Manila (Branch 1), Jaime M. Guray, filed his Comment/Opposition to the motion to quash, stating
that he has the original copy of the complaint, and that complainant has an attorney-in-fact to represent it.
The trial court sustained the prosecutions arguments and denied petitioners motion to quash in its Order dated March 5, 1999.
Petitioners filed a special civil action for certiorari with the Court of Appeals which was dismissed per its Decision. According to the
CA, the petition is not the proper remedy in assailing a denial of a motion to quash, and that the grounds raised therein should be raised
during the trial of the case on the merits.
Petitioners sought reconsideration of the Decision but this was denied by the CA.
Hence, the present petition for review on certiorari under Rule 45 of the Rules of Court,

ISSUE:

1. WHETHER A FOREIGN CORPORATION NOT ENGAGED AND LICENSE (sic) TO DO BUSINESS IN THE PHILIPPINES MAY MAINTAIN A
CAUSE OF ACTION FOR UNFAIR COMPETITION.

HELD:
 The crime of Unfair Competition punishable under Article 189 of the Revised Penal Code is a public crime. It is essentially an act
against the State and it is the latter which principally stands as the injured party. The complainants capacity to sue in such case becomes
immaterial.
In La Chemise Lacoste, S.A. vs. Fernandez, the Court succinctly ruled that:

“More important is the nature of the case which led to this petition. What preceded this petition for certiorari was a letter-
complaint filed before the NBI charging Hemandas with a criminal offense, i.e., violation of Article 189 of the Revised Penal Code. If
prosecution follows after the completion of the preliminary investigation being conducted by the Special Prosecutor the information shall
be in the name of the People of the Philippines and no longer the petitioner which is only an aggrieved party since a criminal offense is
essentially an act against the State. It is the latter which is principally the injured party although there is a private right violated. Petitioner's
capacity to sue would become, therefore, of not much significance in the main case. We cannot allow a possible violator of our criminal
statutes to escape prosecution upon a far-fetched contention that the aggrieved party or victim of a crime has no standing to sue.
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 foreign states under the Paris Convention
for the Protection of Industrial Property to which the Philippines and France are parties. We are simply interpreting and enforcing 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.

38
YAO V. PEOPLE
G.R. No. 168306, June 19, 2007

FACTS:

Petitioners William Yao, Sr. and several others were incorporators and officers of Masagana Gas Corporation.
In 2003, the NBI, acting on reports that petitioners unlawfully and in violation of intellectual property rights of Petron
Corporation and Pilipinas Shell, produce, sell, distribute LPG products using LPG cylinders owned by Petron and Shell and by virtue of
search warrants, raided the premises of Masagana and confiscated, among other things, the motor compressor and refilling machine
owned by Masagana.
Masagana Corporation intervened in the case and asked for the return of said pieces of equipment. It argued that even if the
same was being used by petitioners in their unlawful activity, the equipment cannot be confiscated because having a personality
separate and distinct from that of its incorporators, directors and officers, said properties are owned by the corporation and not by
the petitioners.
The court denied Masagana’s motion.

ISSUE:

Whether or not the doctrine of piercing the veil of corporate entity is applicable in the case.

RULING:

The Supreme Court reiterated that it is a fundamental principle of corporation law that a corporation is an entity separate
and distinct from its stockholders, directors or officers. However, when the notion of legal entity is used to defeat public convenience,
justify wrong, protect fraud or defend crime, the law will regard the corporation as an association of persons or in the case of two
corporations merge them into one. Hence, in this case, liability will attach personally or directly to the officers and stockholders.
The findings of the Court show that petitioners, as director/officers of Masagana were utilizing the corporation in violating
the intellectual property rights of Petron and Pilipinas Shell. As such, the doctrine of piercing the veil of corporate entity applies.

39.

ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC.,

vs.
RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V.,

GR NO. 185830 , JUNE 5, 2013

FACTS:

Respondent Cointreau, a partnership registered under the laws of France, applied for the registration of the mark ‘Le Cordon Bleu
& Device.’ Petitioner Ecole De Cuisine opposed on the ground that it is the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’
used in its culinary activities and restaurant business and that the registration will create confusion to the public. Respondent Cointreau
answered claiming it is the true and lawful owner of the mark and had long been using it worldwide. The IPO Bureau of Legal Affairs
sustained petitioner’s opposition stating that Cointreau had no prior use of the mark in the Philippines to be entitled to a proprietary
right over it. The IPO Director General reversed the decision and allowed the mark’s registration holding that under RA No. 166, actual
use in the Philippines is not necessary to acquire ownership of the mark.

Issue:

Whether or not respondent’s prior use of the mark is a requirement for its registration.

Ruling: YES

Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and must have actually used the
mark in commerce in the Philippines for 2 months prior to the application for registration. Section 2-A of the same law sets out to define
how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership
but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to
note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. Thus, as correctly mentioned
by the CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to register such
ownership here due to the owner’s failure to use the same in the Philippines for 2 months prior to registration. In the instant case, it is
undisputed that Cointreau has been using the subject mark in France, prior to Ecole’s averred first use of the same in the Philippines, of
which the latter was fully aware thereof. On the other hand, Ecole has no certificate of registration over the subject mark but only a
pending application. Under the foregoing circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be said
to have validly appropriated the same.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, as amended, has already dispensed with the requirement of prior actual use at the time of registration. Thus, there is more
reason to allow the registration of the subject mark under the name of Cointreau as its true and lawful owner.

40
ANDREA TAN Vs. BAUSCH & LOMB, INC
G.R. No.148420

Facts:

Assailed in this petition for review are the decision of the CA which set aside RTC decision denying the transfer of the Criminal Case to
Branch 9 RTC cebu city. This case is an information for violation of par 1, Article 189 of RPC against petitioners Tan and others.

BAUSCH (repsondent) -want to transfer the IP Case to RTC branch 9 pursuant to an admin order designating the branch to try and hear
IP cases.

TAN (accused)- filed a motion to quash assailing the admin orders and cited BP 129 arguing that according to the said law MTCC has
jurisdiction over the subject matter.

———————————————-
Information states that Tan and others conspired and are mutually liable for distributing RAY BAN sunglasses to the damage and
prejudice of BAUSCH AND LOMB, INC., the exclusive owner and user of trademark RAY BAN on sunglasses.On January 21, 1998,
respondent filed a motion to transfer the case to Branch 9, RTC, Cebu City. Administrative Order No. 113-95 (A.O. No. 113-95) designated
the said branch as the special court in Region VII to handle violations of intellectual property rights.On March 2, 1998, petitioners TAN
and others filed a motion to quash the information on the ground that the RTC had no jurisdiction over the offense charged against
them bcos (MTCC) has jurisdiction.On March 6, 1998, respondent filed an opposition to the motion to quash explaining that RTC had
jurisdiction by virtue of BP 129 and admin order. On December 22, 1998, the court a quo denied respondent’s motion to transfer the
case and granted petitioners’ motion to quash. It ruled:
Accused [wa]s charged for violation of Art. 189 of Revised Penal Code the penalty for which is prision correccional in its minimum period
or a fine ranging from P500.00 to P2,000.00, or both. Hence, within the jurisdiction of the metropolitan and municipal trial courts (Sec.
32(2), B.P. Blg. 129, as amended).

Administrative Orders Nos. 113-95 and 104-96, cited by plaintiff (BAUSH & LOMB, INC), cannot prevail over the express provisions of
Batas Pambansa Blg. 129, as amended, jurisdiction of courts being a matter of substantive law.

If this Court has no jurisdiction over the case, the same is true with Branch 9 of the same court, Therefore, the motion to transfer the
case to the latter should fail.

1. RTC granted the motion to quash and motion to transfer is denied.

WHEREFORE, premises considered, the motion to transfer is denied, while the motion to quash is granted. The case is thus dismissed.

2. CA- Gave due to course to the petition and SET ASIDE RTC RULING and ordered the transfer of criminal case to RTC branch 9

ISSUE

Whether or not the jurisdiction over the crime allegedly committed by petitioners is vested on the RTC. - YES

RULING:

Section 5 (5) of the 1987 Constitution empowers the Supreme Court to promulgate rules concerning pleading, practice and procedure
in all courts.

The limitations to this rule-making power are the following: the rules must (a) provide a simplified and inexpensive procedure for the
speedy disposition of cases; (b) be uniform for all courts of the same grade and (c) not diminish, increase or modify substantive rights.
As long as these limits are met, the argument used by petitioners that the Supreme Court, through A.O. Nos. 113-95 and 104-96,
transgressed on Congress’ sole power to legislate, cannot be sustained.

A.O. No. 113-95 designated special intellectual property courts to promote the efficient administration of justice and to ensure the
speedy disposition of intellectual property cases.

A.O. No. 104-96, on the other hand, was issued pursuant to Section 23 of BP 129 which transferred the jurisdiction over such crimes
from the MTC and MTCC to the RTC and which furthermore gave the Supreme Court the authority to designate certain branches of the
RTC to exclusively handle special cases in the interest of the speedy and efficient administration of justice. Accordingly, the RTC was
vested with the exclusive and original jurisdiction to try and decide intellectual property cases.

The transfer of jurisdiction from the MTC and MTCC to the RTC did not in any way affect the substantive rights of petitioners.

The administrative orders did not change the definition or scope of the crime of unfair competition with which petitioners were charged.

Thus, the appellate court correctly found that the court a quo committed grave abuse of discretion.

Furthermore, the order of the trial court was a patent nullity. In resolving the pending incidents of the motion to transfer and motion
to quash, the trial court should not have allowed petitioners to collaterally attack the validity of A.O. Nos. 113-95 and 104-96. We have
ruled time and again that the constitutionality or validity of laws, orders, or such other rules with the force of law cannot be attacked
collaterally.

There is a legal presumption of validity of these laws and rules. Unless a law or rule is annulled in a direct proceeding, the legal
presumption of its validity stands. The trial court’s order was consequently null and void.

The transfer of this case to Branch 9, RTC, Cebu City, however, is no longer possible. A.M. No. 03-03-03-SC consolidated the intellectual
property courts and commercial SEC courts in one RTC branch in a particular locality to streamline the court structure and to promote
expediency. The RTC branch so designated will try and decide cases involving violations of intellectual property rights, and cases formerly
cognizable by the Securities and Exchange Commission. It is now called a special commercial court. In Region VII, the designated special
commercial court is Branch 11, RTC, Cebu City. The transfer of this case to that court is therefore warranted.
WHEREFORE, the Court of Appeals decision dated October 20, 2000 is hereby AFFIRMED with the MODIFICATION that Criminal Case No.
CBU-45890 shall be transferred to Branch 11, RTC, Cebu City. Let the records of the case be transmitted thereto and the case tried and
decided with dispatch.
Costs against petitioners.

41

ESPIRITU v. PETRON CORPORATION

G.R. No. 170891

Topic: Criminal liability; civil liability for tort

Facts:
1. Petron Corporation (PETRON) sold and distributed liquefied petroleum gas (LPG) in cylinder tanks that carried its trademark
Gasul.
2. Carmen J. Doloiras owned and operated Kristina Patricia Enterprises (KPE), the exclusive distributor of Gasul LPGs in the whole
of Sorsogon, managed by Jose Nelson Doloiras (JOSE).
3. Bicol Gas Refilling Plant Corporation (BICOL GAS), also in the business of selling and distributing LPGs in Sorsogon, their tanks
carry the trademark Bicol Savers Gas, managed by Audie Llona (LLONA).
4. Due to trade and competition, any distributor of LPGs at times acquired possession of LPG cylinder tanks belonging to other
distributors operating in the same area (a.k.a. captured cylinders).
5. JOSE: April 2001 Bicol Gas agreed with KPE for the swapping of captured cylinders (one distributor could not refill captured
cylinders with its own brand of LPG).
6. In the course of implementing this arrangement, JOSE visited the BICOL GAS refilling plant --- he noticed several Gasul tanks in
Bicol Gas’ possession.
7. They agreed to have a swap (after LLONA was given permission for the swap) involving around 30 Gasul tanks held by Bicol Gas
in exchange for assorted tanks held by KPE.
8. JOSE noticed that Bicol Gas still had a number of Gasul tanks in its yard --- offered to make a swap for these but LLONA declined
--- Bicol Gas owners wanted to send those tanks to Batangas.
9. JOSE observed on almost a daily basis that Bicol Gas trucks carried a load of Gasul tanks (he noted that KPEs volume of sales
dropped significantly from June to July 2001).
10. August 4, 2001 - JOSE saw a Bicol Gas truck on the Maharlika Highway --- it had on it one unsealed 50-kg Gasul tank and one
50-kg Shellane tank.
11. JOSE followed the truck and when it stopped at a store, he asked the driver, Jun Leorena, and the Bicol Gas sales representative,
Jerome Misal, about the Gasul tank in their truck (JOSE found that it wasn’t empty) --- Misal and Leorena then admitted that
the Gasul and Shellane tanks on their truck belonged to a customer who had them filled up by Bicol Gas.
12. Because of the incident, KPE filed a complaint for violations of R.A. 623 (illegally filling up registered cylinder tanks), as amended,
and Sections 155 (infringement of trade marks) and 169.1 (unfair competition) of the Intellectual Property Code (R.A. 8293).

Provincial Prosecutor – Probable Cause only for violation of R.A. 623, only Mirabena, Misal, Leorena, and petitioner Llona, could be
charged.
Office of the Regional State Prosecutor, Region V (Pet. For Review) - ordered the filing of additional informations against the four
employees of Bicol Gas for unfair competition, no case for trademark infringement was present.
Secretary of Justice - denied appeal of Petron and KPE and their motion for reconsideration.
CA (certiorari) - reversed the Secretary of Justices ruling.
ISSUE: WON the corporation can be sued due to its owner’s/employee’s/stockholder’s criminal act/violation

RATIO:
 Bicol Gas is a corporation. As such, it is an entity separate and distinct from the persons of its officers, directors, and
stockholders. It has been held, however, that corporate officers or employees, through whose act, default or omission the
corporation commits a crime, may themselves be individually held answerable for the crime.
 The owners of a corporate organization are its stockholders and they are to be distinguished from its directors and officers. The
petitioners here, with the exception of Audie Llona, are being charged in their capacities as stockholders of Bicol Gas. But the
Court of Appeals forgets that in a corporation, the management of its business is generally vested in its board of directors, not
its stockholders. Stockholders are basically investors in a corporation. They do not have a hand in running the day-to-day business
operations of the corporation unless they are at the same time directors or officers of the corporation. Before a stockholder may
be held criminally liable for acts committed by the corporation, therefore, it must be shown that he had knowledge of the criminal
 act committed in the name of the corporation and that he took part in the same or gave his consent to its commission, whether
by action or inaction.
 The finding of the Court of Appeals that the employees could not have committed the crimes without the consent, [abetment],
permission, or participation of the owners of Bicol Gas is a sweeping speculation especially since, as demonstrated above, what
was involved was just one Petron Gasul tank found in a truck filled with Bicol Gas tanks. Although the KPE manager heard
petitioner LLONA say that he was going to consult the owners of Bicol Gas regarding the offer to swap additional captured
cylinders, no indication was given as to which Bicol Gas stockholders LLONA consulted. It would be unfair to charge all the
stockholders involved, some of whom were proved to be minors. No evidence was presented establishing the names of the
stockholders who were charged with running the operations of Bicol Gas. The complaint even failed to allege who among the
stockholders sat in the board of directors of the company or served as its officers.

42

AIR PHILIPPINES CORP V PENNSWELL INC

GR 172835

Trade secrets should receive greater protection from discovery, because they derive economic value from being generally unknown and
not readily ascertainable by the public.

Facts:

Petitioner Air Philippines Corporation is a domestic corporation engaged in the business of air transportation services. On the other
hand, respondent Pennswell, Inc. was organized to engage in the business of manufacturing and selling industrial chemicals, solvents,
and special lubricants.

Respondent delivered and sold to petitioner sundry goods in trade. Under the contracts, petitioner’s total outstanding obligation
amounted to P449,864.98 with interest at 14% per annum until the amount would be fully paid. For failure of the petitioner to comply
with its obligation under said contracts, respondent filed a Complaint for a Sum of Money on 28 April 2000 with the RTC.

In its Answer, petitioner alleged that it was defrauded in the amount of P592,000.00 by respondent for its previous sale of four items.
Petitioner asserted that it was deceived by respondent which merely altered the names and labels of such goods. Petitioner asseverated
that had respondent been forthright about the identical character of the products, it would not have purchased the items complained
of.

Moreover, petitioner alleged that when the purported fraud was discovered, a conference was held between petitioner and respondent
on 13 January 2000, whereby the parties agreed that respondent would return to petitioner the amount it previously paid. However,
petitioner was surprised when it received a letter from the respondent, demanding payment of the amount of P449,864.94, which later
became the subject of respondent’s Complaint for Collection of a Sum of Money against petitioner.

During the pendency of the trial, petitioner filed a Motion to Compel respondent to give a detailed list of the ingredients and chemical
components of the following products. The RTC rendered an Order granting the petitioner’s motion.

Respondent sought reconsideration of the foregoing Order, contending that it cannot be compelled to disclose the chemical
components sought because the matter is confidential. It argued that what petitioner endeavored to inquire upon constituted a trade
secret which respondent cannot be forced to divulge.

The RTC gave credence to respondent’s reasoning, and reversed itself. Alleging grave abuse of discretion on the part of the RTC,
petitioner filed a Petition for Certiorari under Rule 65 of the Rules of Court with the Court of Appeals, which denied the Petition and
affirmed the Order dated 30 June 2004 of the RTC. Petitioner’s Motion for Reconsideration was denied. Unyielding, petitioner brought
the instant Petition before SC.

Issue:

W/N CA erred in upholding RTC decision denying petitioner’s motion to subject respondent’s products to compulsory disclosure.

Held:

No. The products are covered by the exception of trade secrets being divulged in compulsory disclosure. The Court affirms the ruling
of the Court of Appeals which upheld the finding of the RTC that there is substantial basis for respondent to seek protection of the law
for its proprietary rights over the detailed chemical composition of its products.

The Supreme Court has declared that trade secrets and banking transactions are among the recognized restrictions to the right of the
people to information as embodied in the Constitution. SC said that the drafters of the Constitution also unequivocally affirmed that,
aside from national security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual Property Code
and other related laws) as well as banking transactions (pursuant to the Secrecy of Bank Deposits Act), are also exempted from
compulsory disclosure.

A trade secret is defined as a plan or process, tool, mechanism or compound known only to its owner and those of his employees to
whom it is necessary to confide it. The definition also extends to a secret formula or process not patented, but known only to certain
individuals using it in compounding some article of trade having a commercial value. American jurisprudence has utilized the following
factors to determine if an information is a trade secret, to wit:

(1) the extent to which the information is known outside of the employer’s business;

(2) the extent to which the information is known by employees and others involved in the business;

(3) the extent of measures taken by the employer to guard the secrecy of the information;

(4) the value of the information to the employer and to competitors;

(5) the amount of effort or money expended by the company in developing the information; and

(6) the extent to which the information could be easily or readily obtained through an independent source.

Rule 27 sets an unequivocal proviso that the documents, papers, books, accounts, letters, photographs, objects or tangible things that
may be produced and inspected should not be privileged. The documents must not be privileged against disclosure. On the ground of
public policy, the rules providing for production and inspection of books and papers do not authorize the production or inspection of
privileged matter; that is, books and papers which, because of their confidential and privileged character, could not be received in
evidence. Such a condition is in addition to the requisite that the items be specifically described, and must constitute or contain evidence
material to any matter involved in the action and which are in the party’s possession, custody or control.

In the case at bar, petitioner cannot rely on Section 77of Republic Act 7394, or the Consumer Act of the Philippines, in order to compel
respondent to reveal the chemical components of its products. While it is true that all consumer products domestically sold, whether
manufactured locally or imported, shall indicate their general make or active ingredients in their respective labels of packaging, the law
does not apply to respondent. Respondent’s specialized lubricants — namely, Contact Grease, Connector Grease, Thixohtropic Grease,
Di-Electric Strength Protective Coating, Dry Lubricant and Anti-Seize Compound — are not consumer products.

What is clear from the factual findings of the RTC and the Court of Appeals is that the chemical formulation of respondent’s products is
not known to the general public and is unique only to it. Both courts uniformly ruled that these ingredients are not within the knowledge
of the public. Since such factual findings are generally not reviewable by this Court, it is not duty-bound to analyze and weigh all over
again the evidence already considered in the proceedings below.

The revelation of respondent’s trade secrets serves no better purpose to the disposition of the main case pending with the RTC, which
is on the collection of a sum of money. As can be gleaned from the facts, petitioner received respondent’s goods in trade in the normal
course of business. To be sure, there are defenses under the laws of contracts and sales available to petitioner. On the other hand, the
greater interest of justice ought to favor respondent as the holder of trade secrets. Weighing the conflicting interests between the
parties, SC rules in favor of the greater interest of respondent. Trade secrets should receive greater protection from discovery, because
they derive economic value from being generally unknown and not readily ascertainable by the public.

43 (duplicate)

44

Dermaline Inc. vs. Myra Pharmaceuticals Inc.

GR No. 190065

Facts: Dermaline Inc. filed for the registration of the trademark Dermaline Dermaline, Inc. Myra Pharmaceuticals, Inc. opposed, on the
ground that it resembles its own trademark, Dermalin, and will likely cause confusion, mistake and deception to the purchasing public.
Myra claimed that the dominant feature is the term Dermaline which is practically identical with Dermalin as to the first 8 letters and
pronunciation.

Bureau of Legal Affairs rendered decision sustaining Myra’s opposition. Dermaline’s MR was denied. Its subsequent appeal to the CA
and MR were also denied.

Issue: W/N Dermaline’s trademark is confusingly similar with Myra’s Dermalin

Ruling: Yes. They are spelled in almost the same way and pronounced practically in the same manner. Even if they are presented
differently, the likelihood of confusion is still apparent. When an ordinary purchaser hears Dermaline’s advertisement, chances are he
will associate it with Myra’s registered mark.

45

ABS-CBN V PMSI
GR 175769

Facts:
ABS-CBN is engaged in television and radio broadcasting through wireless and satellite means while Philippine Multi-Media Systems Inc.
(“PMSI” for brevity), the operator of Dream Broadcasting System provides direct-to-home (DTH) television via satellite to its subscribers
all over the Philippines.

PMSI was granted legislative franchise under RA 8630 to install, operate and maintain a nationwide DTH satellite service and is obligated
under by NTC Memorandum Circular No. 4-08-88, Section 6.2 of which requires all cable television system operators operating in a
community within Grade “A” or “B” contours to carry the television signals of the authorized television broadcast stations (“must-carry
rule”).

ABS-CBN filed a complaint with Intellectual Property Office (IPO) for violation of laws involving property rights. It alleged that PMSI’s
unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright and that the NTC circular only
covers cable television system operators and not DTH satellite television operators. Moreover, NTC Circular 4-08-88 violates Sec. 9 of
Art. III of the Constitution because it allows the taking of property for public use without payment of just compensation.
PMSI argued that its rebroadcasting of Channels 2 and 23 is sanctioned by Memorandum Circular No. 04-08-88; that the must-carry
rule under the Memorandum Circular is a valid exercise of police power.

IPO and Court of Appeals ruled in favor of PMSI.

Issues:
(1) w/n PMSI infringed on ABS-CBN’s broadcasting rights and copyright

(2) w/n PMSI is covered by the NTC Circular (“must-carry rule”)

(3) Whether NTC Circular 4-08-88 violates Sec. 9 of Art. III of the Constitution because it allows the taking of property for public use
without payment of just compensation or it is a valid exercise of police power.

Held:

1. NO. PMSI does not infringe on ABS-CBN’s broadcasting rights under the IP Code as PMSI is not engaged in rebroadcasting of
Channels 2 and 23. Rebroadcasting, which is prohibited by the IP Code, is “the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization.” ABS-CBN creates and transmits its own signals; PMSI
merely carries such signals which the viewers receive in its unaltered form. PMSI does not produce, select, or determine the
programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin or author of such programs. Insofar
as Channels 2 and 23 are concerned, PMSI merely retransmits the same in accordance with NTC Memorandum Circular 04-08-
88.

2. YES. “DTH satellite tv operators” is covered under the NTC Circular which “requires all cable television system operators… to
carry the television signals of the authorized television broadcast stations”. The Director-General of the IPO and the Court of
Appeals correctly found that PMSI’s services are similar to a cable television system because the services it renders fall under
cable “retransmission”. Thus, PMSI, being a DTH Satellite TV operator is covered by the NTC Circular.

3. The carriage of ABS-CBN’s signals by virtue of the must-carry rule in Memorandum Circular No. 04-08-88 is under the direction
and control of the government though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control
telecommunications and broadcast services/facilities in the Philippines. The imposition of the must-carry rule is within the
NTC’s power to promulgate rules and regulations, as public safety and interest may require, to encourage a larger and more
effective use of communications, radio and television broadcasting facilities, and to maintain effective competition among
private entities.

Section 202.7 of the IP Code defines broadcasting as “the transmission by wireless means for the public reception of sounds or of images
or of representations thereof; such transmission by satellite is also ‘broadcasting’ where the means for decrypting are provided to the
public by the broadcasting organization or with its consent.” On the other hand, rebroadcasting as defined in Article 3(g) of the
International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, otherwise known
as the 1961 Rome Convention, of which the Republic of the Philippines is a signatory, is “the simultaneous broadcasting by one
broadcasting organization of the broadcast of another broadcasting organization.” The Working Paper prepared by the Secretariat of
the Standing Committee on Copyright and Related Rights defines broadcasting organizations as “entities that take the financial and
editorial responsibility for the selection and arrangement of, and investment in, the transmitted content.” Evidently, PMSI would not
qualify as a broadcasting organization because it does not have the aforementioned responsibilities imposed upon broadcasting
organizations, such as ABS-CBN.
 46
Francisco G. Joaquin, Jr. and BJ Productions, Inc. vs. Franklin Drilon
G.R. No. 108946
January 28, 1999

Facts

BJ Productions, Inc. is the grantee of a copyright certificate over “Rhoda and Me,” a dating game show which aired from 1970 to 1977.
On June 1973, “It’s a Date” aired on RPN Channel 9. When this came to the attention of herein petitioner Joaquin, he sent the producers
of the show a letter informing them of the issued copyright over the material, and asked them to cease and desist from airing the said
show. Subsequently, an information for violation of copyright was filed before the court. However, IXL Productions (who produced the
latter show), moved for a review of the information before the DOJ, who, through secretary Franklin Drilon, moved for the information
to be discarded, contending that a particular format of a game show is non-copyrightable.

Issue(s)

Did IXL Productions violate copyright law in continuing to air “It’s a Date”?

Ruling

No. The format of a game show is not copyrightable. Philippine and U.S. law concur in the principle that there is no copyright except
that which is both created and secured by an act of Congress. Unfortunately for BJ Productions, the format of a particular television
program does not fall among those protected by section 2 of P.D. No. 49. What was registered therefore, were the episodes of “Rhoda
and Me,” but not an exclusive right to air any show with the same theme.

47

Shangri-la International Hotel Management v. Developers Group of Companies (G.R. No. 159938)

Facts: Respondent DGCI applied for and was granted registration of the ‘Shangri-La’ mark and ‘S’ logo in its restaurant business.
Petitioner Shangri-La, chain of hotels and establishments owned by the Kuok family worldwide, moved to cancel the registration of the
mark on the ground that it was illegally and fraudulently obtained and appropriated by respondents. Petitioner also moved to register
the mark and logo in its own name. Later, respondent DGCI filed before the trial court a complaint for infringement against petitioner
alleging that DGCI had been the prior exclusive user and the registered owner in the Philippines of said mark and logo. Petitioner Shangri-
La argued that respondent had no right to apply for the registration because it did not have prior actual commercial use thereof.

Issue: Whether or not respondent’s prior use of the mark is a requirement for its registration.

Ruling: Yes. While the present law on trademarks has dispensed with the requirement of prior actual use at the time of registration, the
law in force at the time of registration must be applied. Under the provisions of the former trademark law, R.A. No. 166, as amended,
hence, the law in force at the time of 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. Trademark
is a creation of use and therefore actual use is a pre-requisite to exclusive ownership and its registration with the Philippine Patent
Office is a mere administrative confirmation of the existence of such right. While the petitioners may not have qualified under Section
2 of R.A. No. 166 as a registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-month actual use requirement.
What is worse, DGCI was not even the owner of the mark. For it to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of respondent DGCI’s registration of the mark, the same was already being used
by the petitioners, albeit abroad, of which DGCI’s president was fully aware.

48
Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong v Vicente Lo G.R. No. 202423, January 28, 2013

Facts: Petitioners in this case are the officers of Wintrade Industrial Sales Corp (WINTRADE), seller of kerosene burners in the Philippines.
Vicente Lo, on the other hand, claims to be the asssignee of the disputed marks "HIPOLITO & SEA HORSE & TRIANGULAR DEVICE,"
"FAMA," and other related marks, service marks and trade names “Casa Hipolito S.A. Portugal”, to be used in kerosene burners as well.
Lo further alleged that the ultimate owner of said marks is the Portuguese Company GASIREL and that the latter executed a deed of
assignment in favor of Lo to use the marks in all countries except Europe and America. Lo subsequently authorized his agent Philippine
Burners Manufacturing Corporation (PBMC) to manufacture burners with the aforementioned marks and tradename “Casa Hipolito S.A.
Portugal”. During a test buy, Lo was able to purchase a burner with marked "Made in Portugal" and “Original Portugal”. He noted that
such burners were manufactured by WINTRADE. As such, Lo filed a complaint on the ground that the kerosene burners sold by
WINTRADE have caused confusion, mistake and deception on the part of the buying public as to the origin of goods. WINTRADE and its
officers contend that the marks "Made in Portugal" and “Original Portugal" refer to “origin of the design” and not “origin of the goods”
and that they have certificates of registration with the IPO for use of marks, derived their authority to use from WONDER, their
predecessor-in-interest and that PBMC’s licensing agreement with Lo is ineffective for being not notarised among others.

Issue: Whether or not WINTRADE and its officers are liable for violation of the law on trademarks, tradenames and false designation of
origin?

Held:Yes. WINTRADE and its officers are liable for violation of the law on trademarks and tradenames and for false designation of origin.
They placed the words "Made in Portugal" and "Original Portugal" with the disputed marks knowing fully well— because of their previous
dealings with the Portuguese company—that these were the marks used in the products of another. More importantly, they used the
marks without any authority from the owner notwithstanding that their products are, in reality, produced in the Philippines, not in
Portugal. Hence, probable cause exists to charge the petitioners with false designation of origin. Had they intended to refer to the source
of the design or the history of the manufacture, they should have explicitly said so in their packaging. The Supreme Court emphasized
that the law on trademarks and trade names precisely precludes a person from profiting from the business reputation built by another
and from deceiving the public as to the “origin” of products.

49

GR No. 166886, July 30 2008

Mattel inc., vs Emma Francisco

FACTS
Jimmy A. Uy (Uy) filed a trademark application with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) for
registration of the trademark "BARBIE" for use on confectionary products, such as milk, chocolate, candies, milk bar and chocolate
candies.

Mattel, Inc. (Mattel), filed a Notice of Opposition against Uy's "Barbie" trademark as the latter was confusingly similar to its
trademark on dolls, doll clothes and doll accessories, toys and other similar commercial products.

Public respondent Estrellita B. Abelardo, the Director of the Bureau of Legal Affairs, IPO, rendered a Decision dismissing Mattel's
opposition and giving due course to Uy’s application for the registration of the trademark "Barbie" used on confectionary products.
The Director held that there was no confusing similarity between the two competing marks because the goods were non-competing
or unrelated.

Mattel filed MR which was denied then it appealed the decision with the Director General.

Public respondent Emma C. Francisco, the Director General, rendered a Decision denying the appeal on the ground that there was
no proof on record that Mattel had ventured into the production of chocolates and confectionary products under the trademark
"Barbie" to enable it to prevent Uy from using an identical "Barbie" trademark on said goods; that the records were bereft of the
fact that the Director of the Bureau of Trademarks (BOT) had already declared the subject trademark application abandoned due to
the non-filing of the Declaration of Actual Use (DAU) by Uy.

ISSUE:

Whether or not the application is deemed withdrawn or abandoned for failure to file the Declaration of Actual Use.

HELD:

The petition is dismissed for being moot and academic. Uy's declaration in his Comment and Memorandum before this Court that he
has not filed the DAU as mandated by pertinent provisions of R.A. No. 8293 is a judicial admission that he has effectively abandoned
or withdrawn any right or interest in his trademark.

Section 124.2 of R.A. No. 8293 provides:

The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing date of the application. Otherwise, the applicant shall be refused or the marks shall
be removed from the Register by the Director.

Moreover, Rule 204 of the Rules and Regulations on Trademarks provides:

Declaration of Actual Use. The Office will not require any proof of use in commerce in the processing of trademark applications.
However, without need of any notice from the Office, all applicants or registrants, shall file a declaration of actual use of the mark
with evidence to that effect within three years, without possibility of extension, from the filing date of the application. Otherwise,
the application shall be refused or the mark shall be removed from the register by the Director motu propio.

Meanwhile, Memorandum Circular No. BT 2K1-3-04 dated March 29, 2001 of the IPO provides:

2. For pending applications prosecuted under R.A. 166 we distinguish as follows:2.1. Based on use – must submit DAU and evidence
of use on or before December 1, 2001, subject to a single six (6) month extension. (Sec. 3.2, Final Provisions of the Trademark
Regulations, R.A. 8293, IPO Fee Structure and MC. No. BT Y2K-8-02)
Uy's admission in his Comment and Memorandum of non-compliance with the foregoing requirements is a judicial admission and an
admission against interest combined. A judicial admission binds the person who makes the same. In the same vein, an admission
against interest is the best evidence which affords the greatest certainty of the facts in dispute. The rationale for the rule is based on
the presumption that no man would declare anything against himself unless such declaration is true. Thus, it is fair to presume that
the declaration corresponds with the truth, and it is his fault if it does not.
In the present case, Mattel is seeking a ruling on whether Uy's "Barbie" trademark is confusingly similar to it's (Mattel's) "Barbie"
trademark. Given Uy's admission that he has effectively abandoned or withdrawn any rights or interest in his trademark by his non-
filing of the required DAU, there is no more actual controversy, or no useful purpose will be served in passing upon the merits of the
case. It would be unnecessary to rule on the trademark conflict between the parties.

50

GR 192799

ROLEX RODRIGUEZ VS PEOPLE

FACTS:

RTC convicted Rolex Rodriguez of Unfair Competition. After promulgation of sentence, he filed for a motion for reconsideration
before the RTC on last day of the reglementary period to appeal. Fourteen days after receipt of the RTC denying his motion for
reconsideration, he filed his Notice of Appeal. Thus, the denial of his Notice of Appeal on the ground of its being filed out of time
under Sec. 6, Rule 122, Revised Rules of Criminal Procedure (29 days after promulgation).

Rodriguez asserted that the fresh period rule should be applied after the motion for new trial or reconsideration.

ISSUE: Whether the fresh period rule should apply.

RULING:

The SC held that the fresh period rule should also apply to criminal cases.

As was the decision in Yu v. Tatad, the fresh period rule should also apply to Rule 122, Sec. 6 of the Rules of Court. The SC said that
the privilege should also accord those in criminal cases and not just in civil cases.

51

Solid Triangle Sales Corporation and Robert Sitcho

vs
Sheriff of RTC QC Br.93, Sanly Corporation, Era Radio and Electrical Supply, LWT Co., Incorproated, Rod Castro, Victor Tupaz, and the
People of the Philippines

GR 144309, 23 November 2001

First Division
Ponente: KAPUNAN, J.

FACTS OF THE CASE:

Presiding Judge of RTC, upon application of the Economic Intelligence and Investigation Bureau (EIIB), issued Search Warrant
against Sanly Corporation for violation of Section 168 of RA 8293 (unfair competition). By virtue of Search Warrant EIIB agents seized
451 boxes of Mitsubishi photographic color paper from respondent.

Forthwith, Solid Triangle, filed with the Office of the City Prosecutor an affidavit complaint for unfair competition against the
members of the Board of Sanly and LWT Co., Inc. (LWT), alleging that ERA Radio and Electrical Supply (ERA), owned and operated by
LWT, is in conspiracy with Sanly in selling and/or distributing Mitsubishi brand photo paper to the damage and prejudice of Solid Triangle,
which claims to be the sole and exclusive distributor thereof, pursuant to an agreement with the Mitsubishi Corporation.

Respondents Sanly, LWT and ERA moved to quash the search warrant which was granted by the Respondent Judge and held that
there is doubt whether the act complained of (unfair competition) is criminal in nature.

Solid Triangle filed an MR contending that the quashal of the search warrant is not proper considering the pendency of the
preliminary investigation for unfair competition, wherein the seized items will be used as evidence.
 The appellate court held that there was no probable cause for the issuance of the search warrant. Accordingly, the evidence
obtained by virtue of said warrant was inadmissible in the preliminary investigation.

ISSUE OF THE CASE:

1. Whether the judge who issued a Search Warrant that has already been implemented cannot quash the warrant anymore.
2. Whether private respondents have committed unfair competition in violation of Section 168 of the Intellectual Property Code.

RULING OF THE COURT:

ON ISSUE NO.1
It is undisputed that only judges have the power to issue search warrants. This function is exclusively judicial. Article
III of the Constitution unequivocally states:

SECTION 2. The right of the people to be secure in their persons, houses, papers, and effects against unreasonable
searches and seizures of whatever nature and for any purpose shall be inviolable, and no search warrant or warrant of
arrest shall issue except upon probable cause to be determined personally by the judge after examination under oath
or affirmation of the complainant and the witnesses he may produce, and particularly describing the place to be
searched and the persons or things to be seized.

Inherent in the courts' power to issue search warrants is the power to quash warrants already issued. In this
connection, this Court has ruled that the motion to quash should be filed in the court that issued the warrant unless a criminal
case has already been instituted in another court.

The proceedings for the issuance/quashal of a search warrant before a court on the one hand, and the preliminary
investigation before an authorized officer on the other, are proceedings entirely independent of each other. One is not bound
by the other's finding as regards the existence of a crime. The purpose of each proceeding differs from the other. The first is
to determine whether a warrant should issue or be quashed, and the second, whether an information should be filed in court.

ON ISSUE NO.2
SECTION 168. Unfair Competition, Rights, Regulation —
168.1 A person who has identified in the mind of the public goods he manufactures or deals in, his business
or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill
of the said goods, business or services so identified, which will be protected in the same manner as other property
rights.

168.2 Any person who shall employ deception or any other means contrary to good faith by which he shall
pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having
established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefor.

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

(a) Any person, who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they
are contained, or the devices or words thereon, or in any other feature of their appearance, which would be
likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other
than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall
deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or
any agent of any vendor engaged in selling such goods with a lie purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false
belief that such person is offering the service of another who has identified such services in the mind of the
public; or
 (c) Any person who shall make any false statement in the course of trade or who shall commit any other act
contrary to good faith of a nature calculated to discredit the goods, business or services of another.

We disagree with petitioners and find that the evidence presented before the trial court does not prove unfair competition under
Section 168 of the Intellectual Property Code. Sanly Corporation did not pass off the subject goods as that of another. Indeed, it admits
that the goods are genuine Mitsubishi photographic paper, which it purchased from a supplier in Hong Kong. Petitioners also allege that
private respondents "made it appear that they were duly authorized to sell or distribute Mitsubishi Photo Paper in the Philippines."
Assuming that this act constitutes a crime, there is no proof to establish such an allegation.

WHEREFORE, the petition is GRANTED IN PART, Decision of the CA as well as its Resolution is AFFIRMED insofar as it holds that:
(1) RTC-QC Br 93 has the power to determine the existence of a crime in quashing a search warrant and,
(2) The evidence does not support a finding that the crime of unfair competition has been committed by respondents; and
REVERSED insofar as it holds that there are no grounds to warrant the issuance of a writ of preliminary attachment and

Petitioners are ordered to return to respondent Sanly Corporation the 451 boxes of Mitsubishi photographic color paper seized
by virtue of Search.

52

G. R. No. 158767 June 26, 2007

SUMMERVILLE GENERAL MERCHANDISING CO., Petitioner, vs.

HON. COURT OF APPEALS, HON. JUDGE ANTONIO EUGENIO, CHANG YU SHUI and JULIET LOPEZ, Respondents.

Facts:

Summerville General Merchandising Co. Sells Royal Playing Cards. Its President, Ang, complained to the authorities that Arotech
International Corporation had violated the Intellectual Property Code of the Philippines by engaging in unauthorized manufacturing,
distribution, and sale of Royal Playing Cards. The authorities applied for a search warrant against Arotech, which was granted. They were
able to acquire among others, Crown Playing Cards which used the plastic containers which were alleged to have infringed the
contatiners of the Royal Playing Cards.

Arotech moved for the return of the seized items, claiming that the cards that were seized were Crown , not Royal Playing Cards
and so could not have been subject of the offense. Moreover the warrant that was issued was a general search warrant because the
warrant failed to describe the things to be seized with particualrity.

The RTC then ordered that the seized Crown Playing Cards should be released to Arotech, leaving only the plastic containers in the
custody of Summerville, since the violation of the intellectual property right of SUmmerville was limited only to the plastic container
cases, which should have been the only items subject of the warrant. C.A. on appeal affirmed the RTC.

Issue:

Whether the cards inside the plastic containers are also “subject of the offense” and should not have been returned to Arotech.

Held:

NO. Summerville’s assertion that the Crown Playing Cards are “subject of the offense” is erroneous. The articles seized had little,
if any, evidentiary value for the criminal action of trademark infringement relating to the use if the plastic containers. Moreover,
Summerville does not dispute that the design and/or mark of the Crown Playing Cards is owned by Arotech. In fact, There is no allegation
that the design and/or mark of such playing cards is a reproduction, counterfeit, copy, or colorable imitation of another registered mark
legally owned by another; hence, no trademark infringement appears to have been committed or perpetrated to warrant the inference
that the Crown Playing Cards are “subject of the offense,” fruits of the offense, or used or intended to be used as means of committing
the offense.

53

September 6, 2017 G.R. No. 217194

SOCIETE DES PRODUITS, NESTLE, S.A., vs. PUREGOLD PRICE CLUB, INC.,,

Facts:

On 14 June 2007, Puregold filed an application for the registration of the trademark "COFFEE MATCH" with the lntellectual Property
Office (IPO). On 5 December 2008, Nestle filed an opposition against Puregold's application for registration. Nestle alleged that it is the
exclusive owner of the "COFFEE-MATE" trademark and that there is confusing similarity between the "COFFEE-MATE" trademark and
Puregold's "COFFEE MATCH" application. Nestle alleged that "COFFEE-MATE" has been declared an internationally well-known mark
and Puregold's use of "COFFEE MATCH" would indicate a connection with the goods covered in Nestle's "COFFEE-MATE" mark because
of its distinct similarity. Nestle claimed that it would suffer damages if the application were granted since Puregold's "COFFEE MATCH"
would likely mislead the public that the mark originated from Nestle.

Decision by the Bureau of Legal Affairs Intellectual Property Office (BLA-IPO) The BLA-IPO held that the word "COFFEE" as a mark, or as
part of a trademark, which is used on coffee and similar or closely related goods, is not unique or highly distinctive. Nestle combined
the word "COFFEE" with the word "-MATE," while Puregold combined the word "COFFEE" with the word "MATCH." The BLA-IPO ruled
that while both Nestle's "-MATE" and Puregold's "MATCH" contain the same first three letters, the last two in Puregold's mark rendered
a visual and aural character that makes it easily distinguishable from Nestle's "COFFEE-MATE." Also, the letter "M" in Puregold's mark is
written as an upper case character and the eyes of a consumer would not be confused or deceived by Nestle's "COFFEEMATE" where
the letter "M" is written in lower case. Consequently, the BLA-IPO held that the consumer cannot mistake the mark and the products of
Nestle as those of Puregold's.

The Decision of the ODG-IPO Office of the Director General of the Intellectual Property Office that the competing marks are not
confusingly similar and that consumers would unlikely be deceived or confused from Puregold's use of "COFFEE MATCH." The ODG-IPO
ruled that the common feature of "COFFEE" between the two marks cannot be exclusively appropriated since it is generic or descriptive
of the goods in question. The ODG-IPO ruled that there is no visual, phonetic, or conceptual similarity between the two marks. Visual
similarity is not present in the two marks, as Nestle's mark consists of a hyphenated word with the paired word being "MATE" while
Puregold's mark consists of the paired word "MATCH." While it is true that the first three letters "M," "A," and "T" are common in the
two marks, Puregold's mark, which are two separate words, with the capitalization of the letters "C" and "M," is readily apparent when
"COFFEE MATCH" and "COFFEE-MATE" are compared side by side.

Issues:

Whether Puregold’s trademark of "COFFEE MATCH" can be registered with the lntellectual Property Office and does not mislead the
public with Nestle’s "COFFEE-MATE".

Held:

Yes. A trademark is any distinctive word, name~ symbol, emblem, sign, or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.

The word "COFFEE" is the common dominant feature between Nestle's mark "COFFEE-MATE" and Puregold's mark "COFFEE MATCH."
However, following Section 123, paragraph (h) of RA 8293 which prohibits exclusive registration of generic marks, the word "COFFEE"
cannot be exclusively appropriated by either Nestle or Puregold since it is generic or descriptive of the goods they seek to identify

The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and
deception. If the competing trademark contains the main, essential, and dominant features of another, and confusion or deception is
likely to result, likelihood of confusion exists. The question is whether the use of the marks involved is likely to cause confusion or
mistake in the mind of the public or to deceive consumers.

We agree with the findings of the BLA-IPO and ODG-IPO. The distinctive features of both marks are sufficient to warn the purchasing
public which are Nestle's products and which are Puregold's products. While both "-MATE" and "MATCH" contain the same first three
letters, the last two letters in Puregold's mark, "C" and "H," rendered a visual and aural character that made it easily distinguishable
from Nestle's mark. Also, the distinctiveness of Puregold's mark with two separate words with capital letters "C" and "M" made it
distinguishable from Nestle's mark which is one word with a hyphenated small letter "-m" in its mark. In addition, there is a phonetic
difference in pronunciation between Nestle's "-MATE" and Puregold's "MATCH." As a result, the eyes and ears of the consumer would
not mistake Nestle's product for Puregold's product. Accordingly, this Court sustains the findings of the BLA-IPO and ODG-IPO that the
likelihood of confusion between Nestle's product and Puregold's product does not exist and upholds the registration of Puregold's mark.

54

FERDINAND TOMAS VS. CRIMINAL INVESTIGATION AND DETECTION GROUP (CIDG) – ANTI ORGANIZED CRIME DIVISION (AOCD) AND
MYRNA UY TOMAS

G.R. NO. 208090 NOVEMBER 9, 2016

Facts:

Myrna Uy Tomas filed 2 complaints against Ferdinand V. Tomas and 1 complaint each against Federico Ladines and Ryan T. Valdez for
violations of Sections 155 and 168 (Trademark Infringement and Unfair Competition) in relation to Section 170 of R.A. 8293. Upon
investigation, the Criminal Investigation and Detection Group (CIDG) of the Philippine National Police procured 4 search warrants to
search the premises of FMT Merchandising and 394 Cambayanan, which are both situated in Urdaneta City, Pangasinan. The search
warrants were signed by Police Chief Inspector Helsin B. Walin and approved by Police Director and CIDG Chief, Edgardo Doromal and
issued by Judge Reynaldo Ros from Branch 33 of the Regional Trial Court in Manila.

The search resulted to the confiscation of the following items: 1 piece of Pedrollo JSWm/8H 0.75 Water Pump from FMT Merchandising,
and 342 empty boxes of Pedrollo, 19 pieces of Pedrollo terminal box covers, 31 pieces of Pedrollo electric water pump, 3 pieces of
unserviceable Pedrollo water pump, and 21 pieces of Pedrollo gauge from 394 Cambayanan. Ferdinand filed a Motion to Quash the
Search Warrant and/or to Suppress the Evidence obtained by it, contending that all 4 search warrants were procured in violation of
Section 12, Chapter V of Administrative Matter No. 03-8-02 which directed that applications of search warrants in special criminal cases
filed in the Regional Trial Courts (RTC) of Manila and Quezon City should be personally endorsed by the head of the agency.

In this case, although the search warrants were approved by CIDG Chief Doromal, the signatory itself was by Chief Inspector Walin. The
RTC partially granted Ferdinand’s motion and quashed only two out of four of the search warrants. However, upon the filing of a motion
for reconsideration from Myrna, the court reversed itself and set aside the former decision. Ferdinand filed a Petition for Certiorari in
the Court of Appeals (CA) to question the RTC decision. The CA granted the Motion to Quash for all four search warrants, citing the rule
in Section 12, Chapter V of Administrative Matter No. 03-8-02.

Myrna’s motion for reconsideration was denied by the CA. Her subsequent petition for review on certiorari in the Supreme Court was
also dismissed for lack of sufficiency. Meanwhile, the Department of Justice (DOJ) issued a joint resolution which found that the
complaint against Ferdinand Tomas for Trademark Infringement and Unfair Competition has probable cause. Ferdinand then applied a
motion for reconsideration to the DOJ but it was denied. He filed a petition for review before the CA which was also denied. In that
same decision, the CA affirmed the findings of the DOJ on the presence of probable cause. Upon motion for reconsideration, the CA still
denied his petition.
ISSUES:

(1) Did the decision of the CA violate the fundamental rule on immutability of a final judgment when it affirmed the finding of probable
cause by the DOJ despite approving the Motion to Quash of the Search Warrants in an earlier decision?

(2) Did Ferdinand violate the rule against Forum Shopping when he filed for a Petition for Certiorari (for the Motion to Quash Search
Warrants) and a Petition for Review (for the DOJ’s finding of probable cause) in the CA?

RULING:

(1) Yes, there was a violation of the rule on immutability of final judgments in this case. The CA’s decision to quash the search warrants
in question already attained finality before the affirmation of the DOJ’s finding of probable cause. Therefore, the CA cannot later affirm
that same DOJ finding in its later petition. However, the Supreme Court in this case clarified that the Search Warrants should not have
been invalidated based on Administrative Matter No. 03-8-02 alone, as this only constitutes a minor defect that is not sufficient enough
to render them nugatory. Search Warrants can only be quashed on the grounds of (1) lack of specifications as to the place to be searched
and properties to be seized and (2) lack of probable cause.

(2) No, Ferdinand Tomas did not violate the rule against forum shopping because in his certificate of non-forum shopping, he was able
to notify the CA that the DOJ is also conducting a preliminary investigation. This decision however does not bar the DOJ from pursuing
a case against Ferdinand Tomas based on their findings for probable cause.

55

PHIL PHARMAWEALTH, INC. V. PFIZER, INC. & PFIZER (PHIL.), INC.

G. R. No. 167715, November 17, 2010

Facts:

Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under the brand name “Unasyn.”
Sometime in January and February 2003, Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin
to several hospitals without the Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist from accepting such bids.
Pfizer also demanded that Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the
hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and forfeiture of the infringing products.
A preliminary injunction effective for 90 days was granted by the IPO’s Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for
extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) a complaint for infringement and unfair
competition, with a prayer for injunction. The RTC issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping. Nevertheless, the CA issued a temporary
restraining order. Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of the case, had already
lapsed, thus making the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted to
the Director General. The CA denied all the motions. Pharmawealth filed a petition for review on Certiorari with the Supreme Court.

Issues:

a) Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed?

b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two seemingly different causes of action and yet pray for the same
relief?

Held:

a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that "[the] patentee shall have the exclusive
right to make, use and sell the patented machine, article or product, and to use the patented process for the purpose of industry or
commerce, throughout the territory of the Philippines for the term of the patent; and such making, using, or selling by any person
without the authorization of the patentee constitutes infringement of the patent."

Clearly, the patentee’s exclusive rights exist only during the term of the patent. Since the patent was registered on 16 July 1987, it
expired, in accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer
possessed the exclusive right to make, use, and sell the products covered by their patent. The CA was wrong in issuing a temporary
restraining order after the cut-off date.

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in
the CA concerns an interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy
regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily.
Under the Rules, a petition for certiorari to the CA is the proper remedy. This is consistent with the Rules of Court. Thus, the CA had
jurisdiction.

c) Yes. Forum shopping is defined as the act of a party against whom an adverse judgment has been rendered in one forum, of seeking
another (and possibly favorable) opinion in another forum (other than by appeal or the special civil action of certiorari), or the
institution of two (2) or more actions or proceedings grounded on the same cause on the supposition that one or the other court
would make a favorable disposition.

The elements of forum shopping are: (a) identity of parties, or at least such parties that represent the same interests in both actions;
(b) identity of rights asserted and reliefs prayed for, the reliefs being founded on the same facts; (c) identity of the two preceding
particulars, such that any judgment rendered in the other action will, regardless of which party is successful, amount to res judicata in
the action under consideration. This instance meets these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the rights allegedly violated and the acts allegedly
violative of such rights are identical, regardless of whether the patents on which the complaints were based are different. In both
cases, the ultimate objective of Pfizer was to ask for damages and to permanently prevent Pharmawealth from selling the contested
products. Relevantly, the Supreme Court has decided that the filing of two actions with the same objective, as in this instance,
constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a decision in one case will necessarily amount
to res judicata in the other action.

56

LEVI STRAUSS (PHILS.), INC., vs TONY LIM

G.R. No, 162311, December 4, 2008

Facts:

Petitioner Levi Strauss (Phils.), Inc. is a duly-registered domestic corporation. It is a wholly-owned subsidiary of Levi Strauss & Co.(LS &
Co.) A Delaware, USA company. In 1972, LS & Co. Granted petitioner a non-exclusive license to use its registered trademarks and
tradenames for the manufacture and sale of various garment products, primarily pants, jackets, and shirts, in the Philippines. Presently,
it is the only company that has authority to manufacture, distribute, and sell products bearing the LEVI’S trademarks or to use such
trademarks in the Philippines. These trademarks are registered in over 130 countries, including the Philippines, and were first used in
commerce in the Philippines in 1946.

Sometime in 1995, petitioner lodged a complaint before the Inter-Agency Committee on Intellectual Property Rights, alleging that a
certain establishment owned by respondent Tony Lim, doing business under the name Vogue Traders Clothing Company, was engaged
in the manufacture, sale, and distribution of products similar to those of petitioner and under the brand name “LIVE’S,” and was granted
the filing of an information against respondent. Respondent then filed his own motion for reconsideration of the Bello resolution, the
DOJ then ordered the dismissal of the complaint.. Dissatisfied with the DOJ rulings, petitioner sought recourse with the CA via a petition
for review under Rule 43 of the 1997 Rules of Civil Procedure. On October 17, 2003, the appellate court affirmed the dismissal of the
unfair competition complaint. The CA pointed out that to determine the likelihood of confusion, mistake or deception, all relevant
factors and circumstances should be taken into consideration, such as the circumstances under which the goods are sold, the class of
purchasers, and the actual occurrence or absence of confusion.Thus, the existence of some similarities between LIVE’S jeans and LEVI’S
garments would not ipso facto equate to fraudulent intent on the part of respondent. The CA noted that respondent used affirmative
and precautionary distinguishing features in his products for differentiation. The appellate court considered the spelling and
pronunciation of the marks; the difference in the designs of the back pockets; the dissimilarity between the carton tickets; and the
pricing and sale of petitioner’s products in upscale exclusive specialty shops. The CA also disregarded the theory of post-sale confusion
propounded by petitioner, relying instead on the view that the probability of deception must be determined at the point of sale.

Issues:

Petitioner submits that the CA committed the following errors:

1. The court of appeals gravely erred in ruling that actual confusion is necessary to sustain a charge of unfair competition, and that there
must be direct evidence or proof

of intent to deceive the public.

2. The court of appeals gravely erred in ruling that respondent’s live’s jeans do not unfairly compete with levi’s ® jeans and/or that there
is no possibility that the former will be confused for the latter, considering that respondent’s live’s jeans blatantly copy or colorably
imitate no less than six (6) trademarks of levi’s jeans.

Held:

Generally, unfair competition consists in employing deception or any other means contrary to good faith by which any person shall pass
off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established goodwill,
or committing any acts calculated to produce such result. The elements of unfair competition under Article 189(1) of the Revised Penal
Code are:

(a) That the offender gives his goods the general appearance of the goods of another manufacturer or dealer;

(b) That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their packages, or in the (3) device or
words therein, or in (4) any other feature of their appearance;

(c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to do the same with a like purpose;
and

(d) That there is actual intent to deceive the public or defraud a competitor.

All these elements must be proven. In finding that probable cause for unfair competition does not exist, the investigating prosecutor
Secretaries Guingona and Cuevas arrived at the same conclusion that there is insufficient evidence to prove all the elements of the
crime that would allow them to secure a conviction. Secretary Guingona discounted the element of actual intent to deceive by taking
into consideration the differences in spelling, meaning, and phonetics between “LIVE’S” and “LEVI’S,” as well as the fact that respondent
had registered his own mark. While it is true that there may be unfair competition even if the competing mark is registered in the
Intellectual Property Office, it is equally true that the same may show prima facie good faith. Indeed, registration does not negate unfair
competition where the goods are packed or offered for sale and passed off as those of complainant. However, the mark’s registration,
coupled with the stark differences between the competing marks, negate the existence of actual intent to deceive, in this particular
case.

Petitioner argues that the element of intent to deceive may be inferred from the similarity of the goods or their appearance. The
argument is specious on two fronts. First, where the similarity in the appearance of the goods as packed and offered for sale is so
striking, intent to deceive may be inferred. However, as found by the investigating prosecutor and the DOJ Secretaries, striking similarity
between the competing goods is not present. Second, the confusing similarity of the goods was precisely in issue during the preliminary
investigation. As such, the element of intent to deceive could not arise without the investigating prosecutor’s or the DOJ Secretary’s
finding that such confusing similarity exists. Since confusing similarity was not found, the element of fraud or deception could not be
inferred.

We cannot sustain Secretary Bello’s opinion that to establish probable cause, “it is enough that the respondent gave to his product the
general appearance of the product of petitioner. It bears stressing that that is only one element of unfair competition. All others must
be shown to exist. More importantly, the likelihood of confusion exists not only if there is confusing similarity. It should also be likely to
cause confusion or mistake or deceive purchasers. Thus, the CA correctly ruled that the mere fact that some resemblance can be pointed
out between the marks used does not in itself prove unfair competition. To reiterate, the resemblance must be such as is likely to
deceive the ordinary purchaser exercising ordinary care.

The consumer survey alone does not equate to actual confusion. We note that the survey was made by showing the interviewees actual
samples of petitioner’s and respondent’s respective products, approximately five feet away from them. From that distance, they were
asked to identify the jeans’ brand and state the reasons for thinking so. This method discounted the possibility that the ordinary
intelligent buyer would be able to closely scrutinize, and even fit, the jeans to determine if they were “LEVI’S” or not. It also ignored that
a consumer would consider the price of the competing goods when choosing a brand of jeans. It is undisputed that “LIVE’S” jeans are
priced much lower than “LEVI’S.” We find no reason to go beyond the point of sale to determine if there is probable cause for unfair
competition.

WHEREFORE, the petition is DENIED and the appealed Decision of the Court of Appeals AFFIRMED.

57

REPUBLIC GAS CORPORATION, ET AL. vs.

PETRON CORPORATION, PILIPINAS SHELL PETROLEUM CORPORATION, and SHELL INTERNATIONAL PETROLEUM COMPANY LIMITED

G.R. No. 194062, June 17, 2013

FACTS:

Respondents Petron Corporation (PETRON) and Pilipinas Shell Petroleum Corporation (SHELL) are two of the largest bulk suppliers and
producers of liquefied petroleum gas (LPG) in the Philippines.

PETRON owns the trademark GASUL cylinders used for its LPG products. It is the sole entity authorized to allow refillers and distributors
to refill, use, sell and distribute GASUL LPG containers, products and its trademarks.

SHELL, on the other hand, is the authorized user of SHELLANE cylinders in its production and distribution of SHELLANE LPGs.

The case commenced when LPG Dealers’ Association of which both respondents SHELL and PETRON belong received reports that certain
entities were engaged in unauthorized refilling, sale and distribution of LPG cylinders, bearing their respective LPG cylinder tradenames.
Thus, they filed a complaint before the NBI for an investigation regarding the illegal trading of petroleum products.

An investigation was then conducted which showed that several persons and establishments, including petitioner Republic Gas
Corporation (REGASCO) were suspected of violating B.P. 33, or the law against illegal trading of petroleum products.

The surveillance revealed that REGASCO LPG Refilling Plant in Malabon was engaged in the refilling and sale of LPG cylinders bearing
the registered marks of the petitioners without authority from the latter.

Issue:

Whether sufficient evidence was presented to prove that the crimes of Trademark Infringement and Unfair Competition as defined and
penalized in Section 155 and Section 168 in relation to Section 170 of Republic Act No. 8293 (The Intellectual Property Code of the
Philippines) had been committed.

Ruling:

Section 155 of R.A. No. 8293 identifies the acts constituting trademark infringement as follows:

Section 155. Remedies; Infringement. – Any person who shall, without the consent of the owner of the registered mark:

155.1 Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark of the same container or a
dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

155.2 Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used
in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by
the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated
in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing
material.

Here, petitioners have actually committed trademark infringement when they refilled, without the respondents' consent, the LPG
containers bearing the registered marks of the respondents. As noted by respondents, petitioners' acts will inevitably confuse the
consuming public, since they have no way of knowing that the gas contained in the LPG tanks bearing respondents' marks is in reality
not the latter's LPG product after the same had been illegally refilled. The public will then be led to believe that petitioners are authorized
refillers and distributors of respondents' LPG products, considering that they are accepting empty containers of respondents and refilling
them for resale. In the present case, respondents pertinently observed that by refilling and selling LPG cylinders bearing their registered
marks, petitioners are selling goods by giving them the general appearance of goods of another manufacturer. The CA correctly pointed
out that there is a showing that the consumers may be misled into believing that the LPGs contained in the cylinders bearing the marks
"GASUL" and "SHELLANE" are those goods or products of the petitioners when, in fact, they are not. Obviously, the mere use of those
LPG cylinders bearing the trademarks "GASUL" and "SHELLANE" will give the LPGs sold by REGASCO the general appearance of the
products of the petitioners.

58 Comelec Resolution

59 G.R. No. 139300. March 14, 2001

AMIGO MANUFACTURING, Inc., petitioner, vs. CLUETT PEABODY CO., INC., respondent

60
Petitioner: PROSOURCE INTERNATIONAL, INC.
Respondent: HORPHAG RESEARCH MANAGEMENT SA
G.R. No.: 180073
Promulgation: November 25, 2009

FACTS:

Respondent is a corporation and owner of trademark PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma
Corporation. Respondent later discovered that petitioner was also distributing a similar food supplement using the mark PCO-GENOLS
since 1996. This prompted respondent to demand that petitioner cease and desist from using the aforesaid mark. Respondent filed a
Complaint for Infringement of Trademark with Prayer for Preliminary Injunction against petitioner, in using the name PCO-GENOLS for
being confusingly similar. Petitioner appealed otherwise.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL" which
appears to be merely descriptive and thus open for trademark registration by combining it with other words and concluded that the
marks, when read, sound similar, and thus confusingly similar especially since they both refer to food supplements.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the Dominancy
or the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

ISSUE:

Whether or not the names are confusingly similar

RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause
confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or 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 is whether the use of the marks involved is
likely to cause confusion or mistake in the mind of the public or to deceive purchasers. 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.

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. Not only on the predominant words should be the focus but also on the other features
appearing on both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other.

SC applied the Dominancy Test. Both the words have the same suffix "GENOL" which on evidence, appears to be merely
descriptive and furnish no indication of the origin of the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the sound effects are confusingly similar not to
mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of letters used as well as the size, color and design
employed on their individual packages/bottles, still the close relationship of the competing products’ name in sounds as they were
pronounced, clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common
source and manufacturer.

61
Petitioner: NBI MICROSOFT CORPORATION & LOTUS DEVELOPMENT CORP.
Respondent: JUDY C. HWANG, BENITO KEH & YVONNE K. CHUA/BELTRON COMPUTER PHILIPPINES INC., et al
G.R. No.: 147043
Promulgation: June 21, 2005

FACTS:

Petitioner Microsoft Corp., owns the copyright and trademark to several computer software, while Private Respondents are
President/Managing Director, Gen. Manager, and Director of Beltron Computer Philippines, Inc. (Beltron) and Taiwan Machinery Display
& Trade Center, Inc. (TMTC), both domestic corporations. Microsoft and Beltron entered into a Licensing Agreement, authorizing Beltron
to reproduce and install no more than one copy of Microsoft software on each Customer System hard disk or Read Only Memory (ROM)
and distribute directly or indirectly and license copies of the Product.

Microsoft terminated the Agreement for Beltron’s non-payment of royalties. Afterwards, Microsoft learned that respondents
were illegally copying and selling Microsoft software. Hence, Microsoft hired the services of Pinkerton Consulting Services (PCS), a
private investigative firm and sought the assistance of the National Bureau of Investigation (NBI). The investigating agents, posing as
representatives of a computer shop, bought computer hardware and software from Respondents. The items contain Microsoft
Software, and the ROMs are encased in containers with Microsoft packaging. The Agents were not given the Microsoft end-user license
agreements, user’s manuals, registration cards or certificates of authenticity for the articles they purchased. Based on articles obtained,
Petitioner charged Respondents before the DOJ with Copyright Infringement and Unfair Competition. DOJ dismissed Microsoft’s
complaint for lack of merit and insufficiency of evidence. Hence, this petition.

ISSUE:

Whether or not private respondents are liable for copyright infringement and unfair competition

RULING:

YES. Section 5 of PD 49 enumerates the rights vested exclusively on the copyright owner. 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 under Section 5 without obtaining the copyright owners
prior consent renders himself civilly and criminally liable for copyright infringement.

Some of the counterfeit CD-ROMs bought from respondents were installer CD-ROMs containing Microsoft software only or
both Microsoft and non-Microsoft software. These articles are counterfeit per se because 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. 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 Microsoft products, namely, the Microsoft end-user license agreements, user’s manuals, registration cards or
certificates of authenticity.
 The counterfeit non-installer CD-ROMs that the Agents bought from respondents also suffice to support a finding of probable
cause to indict respondents for unfair competition under Article 189(1) of the Revised Penal Code for passing off Microsoft products.
From the pictures of the CD-ROMs packaging, 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 intent to deceive.

62

Petitioner: UNILEVER PHILIPPINES, INC

Respondent: MICHAEL TAN a.k.a. PAUL D. TAN
G.R. No.: 179367
Promulgation: January 29, 2014

FACTS:

On January 17, 2002, agents of NBI applied for the issuance of search warrants for the search of a warehouse and an office
located in Marikina City, allegedly owned by Michael Tan a.k.a. Paul D. Tan. The application alleged that Tan had in his possession
counterfeit shampoo products which were being sold, retailed, distributed, dealt with or intended to be disposed of, in violation of the
Intellectual Property Code of the Philippines. The application was granted and search warrants were issued. In the course of the search,
the NBI seized counterfeit Unilever shampoo products from the respondent’s office and warehouse. The NBI thereafter filed with the
DOJ a complaint against the respondent for violation of R.A. No. 8293, specifically Section 168 (unfair competition). The DOJ dismissed
the complaint for insufficiency of evidence. The CA also dismissed the petition on the ground that the petitioner failed to establish facts
and circumstances that would constitute acts of unfair competition under R.A. No. 8293. The CA took into account the insufficiency of
evidence that would link the respondent to the offense charged. Hence, the petition.

ISSUE:

Whether or not there exists probable cause in order to indict the respondent of unfair competition

RULING:

Yes. The result of the NBI’s search which yielded several boxes of counterfeit shampoo sachets and the NBI’s Joint Affidavits in
support of the application for search warrants serve as corroborating evidence. The striking similarities between the genuine Unilever
shampoo sachets and the counterfeit sachets seized by the NBI support the belief that the respondent had been engaged in dealing,
manufacturing, selling and distributing counterfeit Unilever shampoo products. A total of 1,238 assorted counterfeit Unilever products
were found at, and seized from, the respondent’s office. The huge volume and the location where these shampoos were found (inside
a box under a pile of other boxes located inside the respondent’s office) belie the respondent’s claim of personal consumption. Human
experience and common sense dictate that shampoo products (intended for personal consumption) will ordinarily and logically be found
inside the house, specifically, inside the bathroom or in a private room, not in the consumer’s office.

The failure to prove that the respondent is the owner of the warehouse located on Camia St., Marikina City, does not
automatically free him from liability. Proof of the warehouse’s ownership is not crucial to the finding of probable cause. In fact,
ownership of the establishment where the counterfeit products were found is not even an element of unfair competition. While the
respondent may not be its owner, this does not foreclose the possibility that he was the manufacturer or distributor of the counterfeit
shampoo products. Needless to say, what is material to a finding of probable cause is the commission of acts constituting unfair
competition, the presence of all its elements and the reasonable belief, based on evidence, that the respondent had committed it.

These pieces of evidence are sufficient to form a reasonable ground to believe that the crime of unfair competition was
committed and that the respondent was its author.

63
DIVINA PALAO VS. FLORENTINO INTERNATIONAL, INC.

G.R. NO.186967
 January 18, 2017

FACTS

Florentino International, Inc. filed a Petition for Cancellation of Letters Patent No. UM-7789, which the Intellectual Property
Office had issued in favor of Palao. Letters Patent No. UM-7789 pertained to "A Ceramic Tile Installation on Non-Concrete Substrate
Base Surfaces Adapted to Form Part of Furniture, Architectural Components and the Like. Florentino claimed that the utility model
covered by Letters Patent No. UM-7789 was not original, new, or patentable, as it had been publicly known or used in the Philippines
and had even been the subject of several publications. It added that it, as well as many others, had been using the utility model well
before Palao' s application for a patent.

The Bureau of Legal Affairs of the Intellectual Property Office denied Florentino's Petition for Cancellation. It noted that the
testimony and pictures, which Florentino offered in evidence, failed to establish that the utility model subject of Letters Patent No. UM-
7789 was publicly known or used before Palao' s application for a patent.

Florentino appealed to the Office of the Director General of the Intellectual Property Office. This appeal's Verification and
Certification of Non-Forum Shopping was signed but he failed to attach to its appeal a secretary's certificate or board resolution
authorizing the lawyers to sign the Verification and Certification of Non-Forum Shopping. Thus, the Office of the Director General issued
the Order requiring Florentino to submit proof that the lawyers representing him was authorized to sign the Verification and Certification
of Non-Forum Shopping.

Florentino filed a Compliance, but Intellectual Property Office Director General dismissed Florentino's appeal on the ground
that the Secretary's Certificate pertained to an August 14, 2008 Resolution issued by Florentino' s Board of Directors, and reasoned that
the same Certificate failed to establish the authority of Florentino's counsel to sign the Verification and Certification of Non-Forum
Shopping as of the date of the filing of Florentino's appeal. Florentino then filed before the Court of Appeals a Petition for Review under
Rule 43 of the 1997 Rules of Civil Procedure. The Court of Appeals faulted Director General for an overly strict application of procedural
rules. Thus, it reversed Director General’s Order and reinstated Florentino' s appeal.

ISSUE

Whether or not Court of Appeals erred in reversing the Order of Intellectual Property Office Director General and in reinstating
respondent’s appeal.

RULING

The Supreme Court held there is a need for a certification of non-forum shopping to be attached to respondent's appeal before
the Office of the Director General of the Intellectual Property Office. Section 3 of the Intellectual Property Office's Uniform Rules on
Appeal specifies the form through which appeals may be taken to the Director General: Section 3. Appeal Memorandum. - The appeal
shall be perfected by filing an appeal memorandum in three (3) legible copies with proof of service to the Bureau Director and the
adverse party, if any, and upon payment of the applicable fee, Reference Code 127 or 128, provided in the IPO Fee Structure.

These requirements notwithstanding, the Intellectual Property Office's own Regulations on Inter Partes Proceedings specify
that the Intellectual Property Office "shall not be bound by the strict technical rules of procedure and evidence. It was an error for the
Director General of the Intellectual Property Office to have been so rigid in applying a procedural rule and dismissing respondent's
appeal.

64
CHING VS. SALINAS

G.R. NO.161295
June 29, 2005

FACTS
 Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye Bushing for Automobile, for which he holds
certificates of copyright registration. Petitioner’s request to the NBI to apprehend and prosecute illegal manufacturers of his work led
to the issuance of search warrants against respondent Salinas, alleged to be reproducing and distributing said models in violation of the
IP Code. Respondent moved to quash the warrants on the ground that petitioner’s work is not artistic in nature and is a proper subject
of a patent, not copyright. Petitioner insists that the IP Code protects a work from the moment of its creation regardless of its nature or
purpose. The trial court quashed the warrants. Petitioner argues that the copyright certificates over the model are prima facie evidence
of its validity. CA affirmed the trial court’s decision.

ISSUES

Whether or not petitioner’s model is an artistic work subject to copyright protection.

Whether or not petitioner is entitled to copyright protection on the basis of the certificates of registration issued to it.

RULING

Petitioner’s model is not an artistic work subject to copyright protection. As gleaned from the specifications appended to the
application for a copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion
are merely utility models. 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.
Plainly, these are not literary or artistic works. They are not intellectual creations in the literary and artistic domain, or works of applied
art. They are certainly not ornamental designs or one having decorative quality or value. 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. In this case, the bushing and cushion
are not works of art. They are, as the petitioner himself admitted, utility models which may be the subject of a patent.

Petitioner is not entitled to copyright protection on the basis of the certificates issued to it. No copyright granted by law can
be said to arise in favor of the petitioner despite the issuance of the certificates of copyright registration and the deposit of the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v. Drilon and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated, the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute,
and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute.
Accordingly, it can cover only the works falling within the statutory enumeration or description.

Ownership of copyrighted material is shown by proof of originality and copyrightability. To discharge his burden, the applicant
may present the certificate of registration covering the work or, in its absence, other evidence. A copyright certificate provides prima
facie evidence of originality which is one element of copyright validity. It constitutes prima facie evidence of both validity and ownership
and the validity of the facts stated in the certificate.

65
KHO VS.LANZANAS

G.R. NO.150877
May 4, 2006

FACTS
 The petitioner alleged that she is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case
as evidenced by certificates of copyright registrations and patent rights on Chun Chun Su & Device and Chin Chun Su (medicated cream)
after she purchased it from Quintin Cheng (previous registered owner in the Philippine Patent Office [PPO]).

Meanwhile, there was a decline in the petitioner’s business income due to the advertisement and sale made by Summerville
on petitioner’s products under the same brand name and in similar containers. According to Summerville, they are the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan and that said
company authorized them to register its trade name “Chin Chun Su Mediated Cream” with the PPO.

The application for preliminary injunction filed by petitioner was granted. Hence, respondents moved for reconsideration,
which was denied. The respondents then moved for nullification of said preliminary injunction with the CA. The latter granted its
petition.

ISSUES

Whether or not the copyright and patent over the name and container of the beauty cream product entitle the registrant to its
exclusive use and ownership.

RULING

The petitioner has no right for the EXCLUSIVE use of the trade name and its container. In order to be entitled to its exclusive
use, the user must sufficiently prove that she registered or used it before anybody else did. This, petitioner failed to do.

“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 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”.

66

Harvard University vs. Harvard Jeans

September 29, 2011

Fredco Manufacturing Corporation v. President and Fellows of Harvard College

G.R. No. 185917, 1 June 2011

Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a
Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College (Harvard University) for the
mark “Harvard Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28.

Fredco claimed that Harvard University had no right to register the mark in class 25, since its Philippine registration was based on a
foreign registration. Thus, Harvard University could not have been considered as a prior adopter and user of the mark in the
Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest New York Garments as early as 1982,
and a certificate of registration was issued in 1988 for goods under class 25. Although the registration was cancelled for the non-filing
of an affidavit of use, the fact remained that the registration preceded Harvard University’s use of the subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name of Harvard
College of Cambridge, Massachusetts, USA. The marks “Harvard” and “Harvard Veritas Shield Symbol,” had been used in commerce
since 1872, and was registered in more than 50 countries.

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found Fredco to be the
prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the Director General of the Intellectual
Property Office reversed the BLA ruling on the ground that more than the use of the trademark in the Philippines, the applicant must
be the owner of the mark sought to be registered. Fredco, not being the owner of the mark, had no right to register it.

The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the Supreme Court.
In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue of who had a better right to the
mark.

The Supreme Court ruled:

“The petition has no merit.

Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be registered, it must have been actually
used in commerce for not less than two months in the Philippines prior to the filing of an application for its registration. While Harvard
University had actual prior use of its marks abroad for a long time, it did not have actual prior use in the Philippines of the mark
"Harvard Veritas Shield Symbol" before its application for registration of the mark "Harvard" with the then Philippine Patents Office.
However, Harvard University's registration of the name "Harvard" is based on home registration which is allowed under Section 37 of
R.A. No. 166. As pointed out by Harvard University in its Comment:

Although Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof must prove
that the same has been actually in use in commerce or services for not less than two (2) months in the Philippines before the
application for registration is filed, where the trademark sought to be registered has already been registered in a foreign country that
is a member of the Paris Convention, the requirement of proof of use in the commerce in the Philippines for the said period is not
necessary. An applicant for registration based on home certificate of registration need not even have used the mark or trade name in
this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered under Republic Act No. 166 shall
remain in force but shall be deemed to have been granted under this Act x x x," which does not require actual prior use of the mark in
the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under R.A. No. 8293, any alleged defect
arising from the absence of actual prior use in the Philippines has been cured by Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even
without registration of such trade name in the Philippines. It explained:

“There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark not only in the United States
but also internationally, including the Philippines. The mark "Harvard" is rated as one of the most famous marks in the world. It has
been registered in at least 50 countries. It has been used and promoted extensively in numerous publications worldwide. It has
established a considerable goodwill worldwide since the founding of Harvard University more than 350 years ago. It is easily
recognizable as the trade name and mark of Harvard University of Cambridge, Massachusetts, U.S.A., internationally known as one of
the leading educational institutions in the world. As such, even before Harvard University applied for registration of the mark
"Harvard" in the Philippines, the mark was already protected under Article 6bis and Article 8 of the Paris Convention.”

Numbers 67 and 68 have the same GR#10175. NO CASE found.