#60 purchasers.

Courts will consider more the aural and visual impressions created by the
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.
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.

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 #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.
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.

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
#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.
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.

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