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.

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.

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.