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Republic of the Philippines Congress of the Philippines Metro Manila Tenth Congress Republic Act No.

8293 June 6, 1997

a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS). 4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. 4.3. The term "Office" refers to the Intellectual Property Office created by this Act. 4.4. The term "IPO Gazette" refers to the gazette published by the Office under this Act. (n) Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To administer and implement the State policies declared in this Act, there is hereby created the Intellectual Property Office (IPO) which shall have the following functions: a) Examine applications for grant of letters patent for inventions and register utility models and industrial designs; b) Examine applications for the registration of marks, geographic indication, integrated circuits; c) Register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer; d) Promote the use of patent information as a tool for technology development;

AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND FUNCTIONS, AND FOR OTHER PURPOSES Be it enacted by the Senate and House of Representatives of the Philippines in Congress assembled:: PART I THE INTELLECTUAL PROPERTY OFFICE Section 1. Title. - This Act shall be known as the "Intellectual Property Code of the Philippines." Section 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. (n) Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. (n) Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of:

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e) Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; f) Administratively adjudicate contested proceedings affecting intellectual property rights; and g) Coordinate 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. 5.2. The Office shall have custody of all records, books, drawings, specifications, documents, and other papers and things relating to intellectual property rights applications filed with the Office. (n) Section 6. The Organizational Structure of the IPO. - 6.1. The Office shall be headed by a Director General who shall be assisted by two (2) Deputies Director General. 6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and assisted by an Assistant Director. These Bureaus are: a) The Bureau of Patents; b) The Bureau of Trademarks; c) The Bureau of Legal Affairs; d) The Documentation, Information and Technology Transfer Bureau; e) The Management Information System and EDP Bureau; and f) The Administrative, Financial and Personnel Services Bureau. 6.3. The Director General, Deputies Director General, Directors and Assistant Directors shall be appointed by the President, and the other officers and employees of the Office by the Secretary of Trade and Industry, conformably with and under the Civil Service Law. (n) Section 7. The Director General and Deputies Director General. - 7.1. Functions. The Director General shall exercise the following powers and functions: a) Manage and direct all functions and activities of the Office, including the promulgation of rules and regulations to implement the objectives, policies, plans, programs and projects of the Office: Provided, That in the exercise of the authority to propose policies and standards in relation to the following: (1) the effective, efficient, and economical operations of the Office requiring statutory enactment; (2) coordination with other agencies of government in

relation to the enforcement of intellectual property rights; (3) the recognition of attorneys, agents, or other persons representing applicants or other parties before the Office; and (4) the establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or mark or a collective mark, geographic indication and other marks of ownership, and for all other services performed and materials furnished by the Office, the Director General shall be subject to the supervision of the Secretary of Trade and Industry; b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, and the Director of the Documentation, Information and Technology Transfer Bureau. The decisions of the Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, and the Director of Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of the Director of Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry; and c) Exercise original jurisdiction to resolve disputes relating to the terms of a license involving the author's right to public performance or other communication of his work. The decisions of the Director General in these cases shall be appealable to the Secretary of Trade and Industry. 7.2. Qualifications. - The Director General and the Deputies Director General must be natural born citizens of the Philippines, at least thirty-five (35) years of age on the day of their appointment, holders of a college degree, and of proven competence, integrity, probity and independence: Provided, That the Director General and at least one (1) Deputy Director General shall be members of the Philippine Bar who have engaged in the practice of law for at least ten (10) years: Provided further, That in the selection of the Director General and the Deputies Director General, consideration shall be given to such qualifications as would result, as far as practicable, in the balanced representation in the Directorate General of the various fields of intellectual property. 7.3. Term of Office. - The Director General and the Deputies Director General shall be appointed by the President for a term of five (5) years and shall be eligible for reappointment only once: Provided, That the first Director General shall have a first term of seven (7) years. Appointment to any vacancy shall be only for the unexpired term of the predecessor. 7.4. The Office of the Director General. - The Office of the Director General shall consist of the Director General and the Deputies Director General, their immediate staff and such Offices and Services that the Director General will set up to support directly the Office of the Director General. (n) Section 8. The Bureau of Patents. - The Bureau of Patents shall have the following functions:

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8.1. Search and examination of patent applications and the grant of patents; 8.2. Registration of utility models, industrial designs, and integrated circuits; and 8.3. Conduct studies and researches in the field of patents in order to assist the Director General in formulating policies on the administration and examination of patents. (n) Section 9. The Bureau of Trademarks. - The Bureau of Trademarks shall have the following functions: 9.1. Search and examination of the applications for the registration of marks, geographic indications and other marks of ownership and the issuance of the certificates of registration; and 9.2. Conduct studies and researches in the field of trademarks in order to assist the Director General in formulating policies on the administration and examination of trademarks. (n) Section 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the following functions: 10.1. Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents; 10.2. (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided further, That availment of the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings. (n) (b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following administrative penalties: (i) The issuance of a cease and desist order which shall specify the acts that the respondent shall cease and desist from and shall require him to submit a compliance report within a reasonable time which shall be fixed in the order; (ii) The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed. Such voluntary assurance may include one or more of the following:

(1) An assurance to comply with the provisions of the intellectual property law violated; (2) An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the formal investigation; (3) An assurance to recall, replace, repair, or refund the money value of defective goods distributed in commerce; and (4) An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the Bureau of Legal Affairs. The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and file a bond to guarantee compliance of his undertaking; (iii) The condemnation or seizure of products which are subject of the offense. The goods seized hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions, exportation, recycling into other goods, or any combination thereof, under such guidelines as he may provide; (iv) The forfeiture of paraphernalia and all real and personal properties which have been used in the commission of the offense; (v) The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand pesos (P1,000) shall be imposed for each day of continuing violation; (vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year; (vii) The withholding of any permit, license, authority, or registration which is being secured by the respondent from the Office; (viii) The assessment of damages; (ix) Censure; and

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Educate the public and build awareness on intellectual property through the conduct of seminars and lectures. and other services relating to the licensing and promotion of technology. and all patent grants. contracts with firms. Provide management information support and service to the Office. employment records and reports. collected by the Office under this Act and the other laws that the Office will be mandated to administer. for 4 . 13. geographic indication. provide for present and future manpower needs of the organization. testing of systems. The Director General may by Regulations establish the procedure to govern the implementation of this Section. Establish working relations with research and development institutions as well as with local and international intellectual property professional groups and the like. 11. 11. Provide technical. (b) Collect maintenance fees.3. and the like. certificate of registrations issued by the office. Use of Intellectual Property Rights Fees by the IPO. and carry out an efficient and effective program for technology transfer. . messengerial work.8.1. and (c) Publish patent applications and grants. office maintenance.The Documentation. provide for an effective monitoring system of the financial operations of the Office. and registration of marks. utility models. Establish networks or intermediaries or regional representatives. For a more effective and expeditious implementation of this Act. and (c) Hold in custody all the applications filed with the office. and 9. and 11. (n) Section 12. The Human Resource Development Service shall design and implement human resource development plans and programs for the personnel of the Office. 8. licenses. The Management Information Services and EDP Bureau.1. The Administrative. issue certified copies of documents in its custody and perform similar other activities. user consultation. The Documentation. trademark applications. maintain high morale and favorable employee attitudes towards the organization through the continuing design and implementation of employee development programs.2.6. cashiering. (c) Maintain search files and search rooms and reference libraries. The Administrative Service shall: (a) Provide services relative to procurement and allocation of supplies and equipment. Information and Technology Transfer Bureau. royalties and other charges.3. and lay-out-designs of integrated circuits registrations.2. transportation.13.(x) Other analogous penalties or sanctions. 11.14. 11. fines. Conduct automation planning.4. . Financial and Human Resource Development Service Bureau. Perform state-of-the-art searches. 6. and comply with government regulatory requirements in the areas of performance appraisal. and subject only to the existing accounting and auditing rules and regulations. Promote the use of patent information as an effective tool to facilitate the development of technology in the country. research and development.The Management Information Services and EDP Bureau shall: 12. purchase and maintenance of equipment. advisory. design and maintenance of systems. (n) Section 13. and settle disputes involving technology transfer payments. mergings. (Secs. contracting. The Financial Service shall formulate and manage a financial program to ensure availability and proper utilization of funds. and other similar activities. (n) Section 14. . and the like.3. proper safety and security. (n) Section 11. industrial designs. and (d) Adapt and package industrial property information. and 12. (b) Receive all applications filed with the Office and collect fees therefor.1. The Patent and Trademark Administration Services shall perform the following functions among others: (a) Maintain registers of assignments. all the fees. 11. Information and Technology Transfer Bureau shall have the following functions: 11. Register technology transfer arrangements. 913 [1983]a) 10. (b) Provide advisory services for the determination of search patterns.5. and bibliographic on patents and trademarks.2. without need of a separate approval from any government agency. Executive Order No. and 13. payment of salaries and other Office's obligations. and other utility services. 7.1. the Director General shall be authorized to retain. 13. .4. 11. compensation and benefits. Support the search and examination activities of the Office through the following activities: (a) Maintain and upkeep classification systems whether they be national or international such as the International Patent Classification (IPC) system.7.

subject to the approval of the Secretary of Trade and Industry. "Bureau" means the Bureau of Patents. (n) Section 15. This provision shall not apply to products and composition for use in any of these methods. including corporations owned.2. R. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. Discoveries. Definition of Terms Used in Part II. The Law on Patents. shall be deposited and maintained in a separate account or fund. where "application" means an application for a utility model and an industrial design. design registration. 3. If so. other pertinent laws. . the provisions of said Subsection 14. any patent or utility model. agencies and instrumentalities of the Government.3. controlled or operated by the Government. the form and design of which shall be approved by the Director General. (n) CHAPTER II PATENTABILITY Section 21. R. .5. 22. "Regulations" means the Rules of Practice in Patent Cases formulated by the Director of Patents and promulgated by the Director General. among others. 5. . it shall retain all the fees and charges it shall collect under the same conditions indicated in said Subsection 14. (Sec. or process. pamphlet copies of this Act. No. . and 20. 165a) Section 17. 22. No. 20.2. equipment outlay. respectively. 20. It may be. After five (5) years from the coming into force of this Act. scientific theories and mathematical methods.All officers and employees of the Office shall not apply or act as an attorney or patent agent of an application for a grant of patent. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. No.1 hereof that the Office shall collect are sufficient to meet its budgetary requirements. (Sec. and programs for computers. if not. "Examiner" means the patent examiner.A. "Priority date" means the date of filing of the foreign application for the same invention referred to in Section 31 of this Act. which shall be in addition to the Office's annual budget. title or interest therein during their employment and for one (1) year thereafter. except by hereditary succession. Patentable Inventions. 22.1 shall continue to apply until such time when the Director General. for the registration of a utility model. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection: 5 .1 but shall forthwith. Disqualification of Officers and Employees of the Office. . The IPO Gazette. or may relate to. "Director" means the Director of Patents. 165a) PART II THE LAW ON PATENTS CHAPTER I GENERAL PROVISIONS Section 20. or mark or any right. certifies that the above-stated fees and charges the Office shall collect are enough to fund its operations. R. (Sec.A.A. the Director General shall.All matters required to be published under this Act shall be published in the Office's own publication to be known as the IPO Gazette. Publication of Laws and Regulations. Special Technical and Scientific Assistance. 7. to improve the delivery of its services to the public. .4. 165a) Section 18. offices. and the acquisition of the appropriate office space. 4. cease to receive any funds from the annual budget of the National Government.Any technical solution of a problem in any field of human activity which is new. bureaus.4.1.The Office shall have a seal. 165a) Section 16. which may be used or disbursed directly by the Director General. when deemed necessary in the consideration of any matter submitted to the Office relative to the enforcement of the provisions of this Act.The Director General is empowered to obtain the assistance of technical. the following terms shall have the following meanings: 20. R. like upgrading of its facilities. determine if the fees and charges mentioned in Subsection 14.The following shall be excluded from patent protection: 22. (Sec.1. Schemes. R.6. . 77.The Director General shall cause to be printed and make available for distribution. 14. playing games or doing business. This provision shall not apply to micro-organisms and non-biological and microbiological processes. executive orders and information circulars relating to matters within the jurisdiction of the Office.use in its operations. rules and methods of performing mental acts.3.As used in Part II. human resource development. industrial design or mark nor acquire. (Sec.2. (n) Section 19. Non-Patentable Inventions. involves an inventive step and is industrially applicable shall be Patentable. a product. scientific or other qualified officers and employees of other departments. "Patent application" or "application" means an application for a patent for an invention except in Chapters XII and XIII. This amount. 20. No. 20. . subject to the approval of the Secretary of Trade and Industry.A. No. or an improvement of any of the foregoing.A. Seal of Office. 165a) Section 22.

The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent. .5. . The whole contents of an application for a patent.6. filed or effective in the Philippines. the earliest priority date. unless there is an agreement.A. For the purposes of Subsection 25. 30. (Sec. facilities and materials of the employer. 165a) Section 29.1. (c) Drawings necessary for the understanding of the invention. 10. R. (b) A description of the invention. . with a filing or priority date that is earlier than the filing or priority date of the application: Provided. (Sec. Sec.The right to a patent belongs to the inventor. or where two or more applications are filed for the same invention. The Application.If two (2) or more persons have made the invention separately and independently of each other.22. The person who commissions the work shall own the patent. and 22. published in accordance with this Act. or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor.A. (b) A patent office and the information was contained (a) in another application filed by the inventor and should not have been disclosed by the office.A.32. (n) CHAPTER III RIGHT TO A PATENT Section 28. Industrial Applicability.A. shall be prior art with effect as of the filing date of such earlier application: Provided further. had the right to the patent. 9. or (c) A third party which obtained the information directly or indirectly from the inventor. (3rd sentence. it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. if the inventive activity is not a part of his regular duties even if the employee uses the time.2. . (n) Section 31. having regard to prior art. No.25. .30. . (Sec. 165a) Section 23. That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act. and 24.An invention involves an inventive step if. (n) Section 26.2. . (b) The employer. R. 15. "inventor" also means any person who. shall be considered as filed as of the date of filing the foreign application: Provided. That the applicant or the inventor identified in both applications are not one and the same. . Aesthetic creations.1. before the filing date or the priority date of the application claiming the invention. Novelty. No. 10. R.An invention shall not be considered new if it forms part of a prior art. Right to a Patent.An invention that can be produced and used in any industry shall be industrially applicable. the right to a patent shall belong to them jointly. No. When two (2) or more persons have jointly made an invention. (n) Section 27. First to File Rule. (b) it is filed within twelve (12) months from the date the earliest foreign application was filed. 8. 165a) Section 24. That: (a) the local application expressly claims priority. or industrial design registration. . or law affords similar privileges to Filipino citizens. and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. Prior Art. . R.A. the right to the patent shall belong to the person who filed an application for such invention.1. at the filing date of application. if the invention is the result of the performance of his regularly-assigned duties. . unless otherwise provided in the contract. Inventions Created Pursuant to a Commission. his heirs. Non-Prejudicial Disclosure.Prior art shall consist of: 24. In case the employee made the invention in the course of his employment contract. 9.A.) Section 30. No. the patent shall belong to: (a) The employee. No. Anything which is contrary to public order or morality. (Sec. to the applicant who has the earliest filing date or. 165a) Section 25. Inventive Step. or assigns.An application for patent filed by any person who has previously applied for the same invention in another country which by treaty. utility model. R. 165a. . . 6 . 25. (Sec. R. to the contrary. Everything which has been made available to the public anywhere in the world.2. The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by: (a) The inventor. 165a) CHAPTER IV PATENT APPLICATION Section 32.1. No. Right of Priority.1. express or implied. convention.

Disclosure.38.2. . . and such material is not available to the public. (Sec. Where the application concerns a microbiological process or the product thereof and involves the use of a microorganism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art.36. 14. otherwise the application shall be considered withdrawn. the gist of the solution of that problem through the invention. No. the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period. Unity of Invention. According a Filing Date. (n) Section 37. 32. Disclosure and Description of the Invention. The Abstract. (n) Section 41. R. the name and other data of the applicant.A.A. If several independent inventions which do not form a single general inventive concept are claimed in one application.3. 38. That each divisional application shall not go beyond the disclosure in the initial application. the application shall be supplemented by a deposit of such material with an international depository institution. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application: Provided. 165a) Section 36. (n) Section 35. the Director may require that the application be restricted to a single invention.An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for judicial or administrative procedure relating to the application for patent or the patent may be served.2. 36.42. claims and drawings in preferably not more than one hundred fifty (150) words. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements: (a) An express or implicit indication that a Philippine patent is sought. and (c) Description of the invention and one (1) or more claims in Filipino or English.A. the application shall be considered withdrawn. R. (n) Section 42. Formality Examination. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. 38. the inventor and the agent and the title of the invention. not exceeding four (4) months. . at the request of the Director. (n) CHAPTER V PROCEDURE FOR GRANT OF PATENT Section 40.2. . 11. The abstract shall merely serve for technical information. The Request.1. .1. 165a) Section 34. 40. hereafter referred to as the "foreign application. .The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. No. If any of these elements is not submitted within the period set by the Regulations.35. and (e) An abstract. The applicant shall. (Sec. and the principal use or uses of the invention. . the applicant shall be given an opportunity to correct the deficiencies in accordance with the implementing Regulations.The request shall contain a petition for the grant of the patent. The Regulations shall prescribe the manner of the presentation of claims. as may be granted: Provided further. Filing Date Requirements. 7 . Description. The Claims. 17. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept.The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing as provided in Section 40 hereof. Appointment of Agent or Representative.1. 165a) Section 39.1. No patent may be granted unless the application identifies the inventor. Information Concerning Corresponding Foreign Application for Patents. That the later application is filed within four (4) months after the requirement to divide becomes final or within such additional time." relating to the same or essentially the same invention as that claimed in the application filed with the Office and other documents relating to the foreign application. (n) Section 38. R. R.1. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations. Each claim shall be clear and concise.(d) One or more claims. If the deficiencies are not remedied within the prescribed time limit.2. the Office may require him to submit said authority. and shall be supported by the description. No. 13.The abstract shall consist of a concise summary of the disclosure of the invention as contained in the description. No. . The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground to cancel the patent. If the applicant is not the inventor. (Sec. furnish him with the date and number of any application for a patent filed by him abroad. .2. If the application does not contain all the elements indicated in Section 40.The Regulations shall prescribe the contents of the description and the order of presentation. 165a) Section 33. (Sec. .40. the filing date should be that date when all the elements are received. the application shall be considered withdrawn. It must be drafted in a way which allows the clear understanding of the technical problem.A. 35. If the date of filing cannot be accorded. . (b) Information identifying the applicant.

. (n) Section 45. Such observations shall be communicated to the applicant who may comment on them. To maintain the patent application or patent.2. 165a) Section 55.A. . The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations. . (n) Section 46. (Secs. 50.44. The Director General subject to the approval of the Secretary of Trade and Industry. . R.The applicant shall have all the rights of a patentee under Section 76 against any person who. . 165a) Section 43. Refusal of the Application. (n) Section 48. as if a patent had been granted for that invention: Provided. 18. R.51.3. and drawings.2. (Sec. 48.1. Observation by Third Parties.3. The patent application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any documents that reflect prior art. No. any interested party may inspect the application documents filed with the Office.1. and all related documents. Rights Conferred by a Patent Application After Publication.1.A patent application.The patent shall be issued in the name of the Republic of the Philippines under the seal of the Office and shall be signed by the Director. No.1. any person may present observations in writing concerning the patentability of the invention. an annual fee shall be paid upon the expiration of four (4) years from the date the application was published pursuant to Section 44 hereof.2.An application that has complied with the formal requirements shall be classified and a search conducted to determine the prior art. to do so would be prejudicial to the national security and interests of the Republic of the Philippines. 50. Any interested party may inspect the complete description. after the expiration of eighteen ( 18) months from the filing date or priority date. (Sec. . No. Term of Patent. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act. 165a) Section 54. 165a) Section 53. Request for Substantive Examination. Publication of Patent Application. 19 and 20. .55. (Sec. Contents of Patent. the Office shall grant the patent: Provided. claims. 18. may prohibit or restrict the publication of an application. in books and records of the Office. 44. Publication Upon Grant of Patent.1. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee.Following the publication of the patent application. The Regulations shall determine the procedure for the re-examination and revival of an application as well as the appeal to the Director of Patents from any final action by the examiner. Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided. Amendment of Application. 51. (n) Section 50.50.A. shall not be made available for inspection without the consent of the applicant. (Sec.2.A. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. .A. R.The term of a patent shall be twenty (20) years from the filing date of the application. Confidentiality Before Publication. and registered together with the description. That the said person had: 46. R. .42. That the action may not be filed until after the grant of a patent on the published application and within four (4) years from the commission of the acts complained of. 16. (n) Section 49. 21.A.52. 165a) Section 51. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41. Actual knowledge that the invention that he was using was the subject matter of a published application. That all the fees are paid on time. if any. No.1. a written request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time. Classification and Search. Grant of Patent. . A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. If the required fees for grant and printing are not paid in due time. (n) Section 44.An applicant may amend the patent application during examination: Provided. without his authorization. . . (n) Section 52. 52. and on each subsequent anniversary of such date.2. Payment may be made within three (3) months before the 8 . or 46. and drawings of the patent on file with the Office.2.2.1.48. the application shall be deemed to be withdrawn. exercised any of the rights conferred under Section 71 of this Act in relation to the invention claimed in the published patent application. . 44. Annual Fees. No. if in his opinion. which has not yet been published. R. That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. claims. After publication of a patent application. If the application meets the requirements of this Act. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken. (n) Section 47.

165a) Section 62.On request of any interested person and payment of the prescribed fee. 59. without fee. he may accept the offer and.2.An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction. . (Sec. No. and other supporting documents mentioned in the petition shall be attached thereto. No. the Director is authorized to correct any mistake in a patent of a formal and clerical nature. on any of the following grounds: (a) That what is claimed as the invention is not new or Patentable. 24. . petition to cancel the patent or any claim thereof. which have been recorded in the Office. 165) 9 . as from the day when notice of his acceptance is published in the IPO Gazette. R. (Sec.A. Surrender of Patent. 165) CHAPTER VI CANCELLATION OF PATENTS AND SUBSTITUTION OF PATENTEE Section 61. any mistake in a patent incurred through the fault of the Office when clearly disclosed in the records thereof. Correction of Mistakes of the Office. No. The obligation to pay the annual fees shall terminate should the application be withdrawn.1. and filed with the Office. 56.The Director shall have the power to correct.due date. (n) Section 60. R. R.3. (Sec. If the annual fee is not paid. with the consent of all persons having grants or licenses or other right. The owner of a patent shall have the right to request the Bureau to make the changes in the patent in order to: (a) Limit the extent of the protection conferred by it. as published. . upon payment of the prescribed surcharge for delayed payment.3. (Sec.1. 55. (Secs.2. and if he does so. if not in the English language. where the change would result in the disclosure contained in the patent going beyond the disclosure contained in the application filed. . 165) Section 58. 59. No change in the patent shall be permitted under this section. Requirement of the Petition. authenticated by the seal of the Office and signed by the Director. The owner of the patent. Copies of printed publications or of patents of other countries. 165a) Section 59. 25. the Bureau shall notify the proprietor of the patent and determine the question. not incurred through the fault of the Office. may surrender his patent or any claim or claims forming part thereof to the Office for cancellation. No. Form and Publication of Amendment.A. (Sec. include a statement of the facts to be relied upon. upon payment of the required fee.A. title or interest in and to the patent and the invention covered thereby. No. 30. it shall publish the same.The petition for cancellation shall be in writing. the patent shall cease to have effect. No. together with the translation thereof in English. R. 56. 26. Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the Office shall include a copy of the certificate of amendment or correction. If.A. and (c) Correct mistakes or errors. (b) Correct obvious mistakes or to correct clerical errors. the patent application shall be deemed withdrawn or the patent considered as lapsed from the day following the expiration of the period within which the annual fees were due. . made in good faith: Provided.2. 165a) Section 57. 165a) Section 56. That where the change would result in a broadening of the extent of protection conferred by the patent. and to the extent to which the Office changes the patent according to this section. 55. R.61.1. A grace period of six (6) months shall be granted for the payment of the annual fee. refused. If the Office is satisfied that the patent may properly be surrendered.2. A notice that the application is deemed withdrawn or the lapse of a patent for non-payment of any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of the Office. . Changes in Patents. to make the patent conform to the records. (b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art. or parts of the claim. 22. (Sec. or (c) That the patent is contrary to public order or morality. 61. cancellation may be effected to such extent only. Correction of Mistake in the Application. specify the grounds upon which it is based.A. No. 27. or cancelled. no request may be made after the expiration of two (2) years from the grant of a patent and the change shall not affect the rights of any third party which has relied on the patent. 28 and 29. R. verified by the petitioner or by any person in his behalf who knows the facts. which certificate shall be attached to the patent. A person may give notice to the Office of his opposition to the surrender of a patent under this section. other than those referred to in letter (b).56. Cancellation of Patents.59.3.A. Any interested person may. R. but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention before that day for the services of the government. . Where the grounds for cancellation relate to some of the claims or parts of the claim.A.

A. the patent and the invention to which it relates meet the requirement of this Act. 32. publish the abstract. prohibit and prevent any unauthorized person or entity from making. such person may. Rights Conferred by Patent. the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal. 71.The rights conferred by the patent or any specified claim or claims cancelled shall terminate. . (Sec.2. cancel the patent.4. is declared by final court order or decision as having the right to the patent. . the patent should be revoked. .A. title or interest in and to the patent and the invention covered thereby. which shall be published in the IPO Gazette within three (3) months from the date such order or decision became final and executory.2. (Sec.In cases involving highly technical issues. Cancellation of the Patent. 37. . selling or offering for sale. respectively. if one has already been issued. it may decide to maintain the patent as amended: Provided. Committee of Three. and shall be recorded in the register of the Office. to restrain. 33. within three (3) months after the decision has become final: (a) Prosecute the application as his own application in place of the applicant.A. 165a) Section 69. The decision of the committee shall be appealable to the Director General. No. 65.The court shall furnish the Office a copy of the order or decision referred to in Sections 67 and 68.2. If a person referred to in Section 29 other than the applicant. using. prevent or prohibit any unauthorized person or entity from using the process. No. as appears of record in the Office. selling or importing that product. .The owner of a patent has no right to prevent third parties from performing. (Sec. taking into consideration the amendment made by the patentee during the cancellation proceedings. If the fee for the printing of a new patent is not paid in due time. the acts referred to in Section 71 hereof in the following circumstances: 10 . .If a person. (Sec. the Director of Legal Affairs may order that the petition be heard and decided by a committee composed of the Director of Legal Affairs as chairman and two (2) members who have the experience or expertise in the field of technology to which the patent sought to be cancelled relates. and from manufacturing. or importing any product obtained directly or indirectly from such process. (c) Request that the application be refused. Patent owners shall also have the right to assign. Remedies of the True and Actual Inventor. (n) Section 70. R.71. Notice of Hearing.2 shall apply mutatis mutandis to a new application filed under Subsection 67. Unless restrained by the Director General. or transfer by succession the patent. 65. and to conclude licensing contracts for the same. to restrain. No.1. who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor. If the Committee finds that a case for cancellation has been proved.67. A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product. dealing in. using. . without his authorization.Section 63. If the Committee finds that. or (d) Seek cancellation of the patent.65. and award actual and other damages in his favor if warranted by the circumstances. Effect of Cancellation of Patent or Claim. representative claims and drawings indicating clearly what the amendments consist of. the court shall order for his substitution as patentee. (b) Where the subject matter of a patent is a process. 165a) Section 64. (n) Section 66. offering for sale.1.3.1. on motion of any party. at the same time as it publishes the mention of the cancellation decision. the Bureau shall. Notice of the filing of the petition shall be published in the IPO Gazette. R. Limitations of Patent Rights. . (b) File a new patent application in respect of the same invention. (n) Section 68. Time to File Action in Court. 165a) CHAPTER VII REMEDIES OF A PERSON WITH A RIGHT TO A PATENT Section 67. or at the option of the true inventor.A. . Notice of the cancellation shall be published in the IPO Gazette. 31.Upon filing of a petition for cancellation. it shall order the patent or any specified claim or claims thereof cancelled. The provisions of Subsection 38. . That the fee for printing of a new patent is paid within the time limit prescribed in the Regulations.2 hereof. No. the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or licenses. If the patent is amended under Subsection 65. (n) CHAPTER VIII RIGHTS OF PATENTEES AND INFRINGEMENT OF PATENTS Section 71. Publication of the Court Order. R. R. 1(b).The actions indicated in Sections 67 and 68 shall be filed within one (1) year from the date of publication made in accordance with Sections 44 and 51. Patent Application by Persons Not Having the Right to a Patent. or any other right. 67. and of notice of the date of hearing thereon on such persons and the petitioner. 65. . 165a) Section 72. (n) Section 65.

76. . 40. Using a patented product which has been put on the market in the Philippines by the owner of the product. (Sec.2. No.A. shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. may bring an action for infringement of patent. 76. in a pharmacy or by a medical professional. to recover from the infringer such damages sustained thereby.Any foreign national or juridical entity who meets the requirements of Section 3 and not engaged in business in the Philippines. (n) Section 76. R. as determined by the appropriate agency of the government.2. and to secure an injunction for the protection of his rights. whose rights have been infringed. national security. .1. 41. who.5. or importing a patented product or a product obtained directly or indirectly from a patented process.A. to the conditions set forth in Sections 95 to 97 and 100 to 102. or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided. (Sec. The use by the Government. 75. vessel. If the damages are inadequate or cannot be readily ascertained with reasonable certainty. . .5. plus attorney's fees and other expenses of litigation. selling.A. nutrition.75. 74. aircraft. Burden of Proof . A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: (a) The public interest. Use of Invention by Government. or third person authorized by the Government shall be subject.3. which are to be interpreted in the light of the description and drawings. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention. Prior User.3. Extent of Protection and Interpretation of Claims. The making. may bring a civil action before a court of competent jurisdiction. vessel. Where the act consists of the preparation for individual cases. 76. offering for sale. Process Patents. The court may.4. but also equivalents.73. due account shall be taken of elements which are equivalent to the elements expressed in the claims. The right of the prior user may only be transferred or assigned together with his enterprise or business. in particular. 76. No.1. That such invention is used exclusively for the needs of the ship.2. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. 72. 73. in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business. by the owner of the patent or his licensee is anti-competitive.1. 165a) Section 74. 72.A. without compensation. That the award does not exceed three (3) times the amount of such actual damages. 165a) Section 75. 72. the court may award by way of damages a sum equivalent to reasonable royalty. before the filing date or priority date of the application on which a patent is granted. The extent of protection conferred by the patent shall be determined by the claims. or (b) A judicial or administrative body has determined that the manner of exploitation.1. title or interest in and to the patented invention. mutatis mutandis. to which a patent has been granted or assigned under this Act. insofar as such use is performed after that product has been so put on the said market. order that the infringing goods. Any patentee. in its discretion. using.4. (Sec. The court may. 165a) Section 78. Infringement Action by a Foreign National. 165a) Section 73. so that a claim shall be considered to cover not only all the elements as expressed therein. No.If the subject matter of a patent is a process for obtaining a product.2. No. so requires. Where the act is done privately and on a non-commercial scale or for a noncommercial purpose: Provided. according to the circumstances of the case. (Secs.72. aircraft. That it does not significantly prejudice the economic interests of the owner of the patent. Civil Action for Infringement. or the use of a patented process without the authorization of the patentee constitutes patent infringement. award damages in a sum above the amount found as actual damages sustained: Provided. health or the development of other sectors. or anyone possessing any right. 38 and 39. or with his express consent.6. materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed. . R. Notwithstanding Section 72 hereof. any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is 11 . . R. 41-A. any prior user. 165a) Section 77. 76.2.A. No.1.74. 76. or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. 72. Where the invention is used in any ship. whether or not it is licensed to do business in the Philippines under existing law. For the purpose of determining the extent of protection conferred by the patent. (Sec. 42. or with that part of his enterprise or business in which the use or preparations for use have been made. of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared. R. R.

R. at the discretion of the court. 43. Jurisdiction to Settle Disputes on Royalties.3.1. including the fixing of appropriate amount or rate of royalty. or of permanently employing personnel indicated by the licensor. or had reasonable grounds to know of the patent. Defenses in Action for Infringement. raw materials. prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition and trade. 165) Section 80. on any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. 165a) Section 81. if the court shall find the patent or any claim to be invalid. 87. (Sec. .A. and other technologies.8. Requirement of Notice. and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court. 165) Section 82. 48. Those that contain restrictions regarding the volume and structure of production. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted. may show the invalidity of the patent. . Voluntary License Contract.In an action for infringement. 87. Information and Technology Transfer Bureau shall exercise quasijudicial jurisdiction in the settlement of disputes between parties to a technology transfer arrangement arising from technology transfer payments. or on the advertising material relating to the patented product or process.2. 165a) Section 84. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement. 87. shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. Criminal Action for Repetition of Infringement. upon conviction. Those that establish a full or partial purchase option in favor of the licensor.2. R. It is presumed that the infringer had known of the patent if on the patented product. shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100.A. 87.Except in cases under Section 91. or on the container or package in which the article is supplied to the public. the court shall adopt measures to protect. (Sec. No. all technology transfer arrangements shall comply with the provisions of this Chapter.5. in addition to other defenses available to him. (n) Section 86. it shall cancel the same. (Sec. 165a) CHAPTER IX VOLUNTARY LICENSING Section 85. R. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license. intermediate products. 83.7.A. 87.000) but not more than Three hundred thousand pesos (P300. 47. be criminally liable therefor and.A.substantial likelihood that the identical product was made by the process and the owner of the patent has been unable despite reasonable efforts. . as far as practicable.83. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime.The Director of the Documentation.1. Damages. 165a) Section 83. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology. are placed the words "Philippine Patent" with the number of the patent. R. his manufacturing and business secrets. The assessors shall be possessed of the necessary scientific and technical knowledge required by the subject matter in litigation. Those that require payment of royalties to the owners of patents for patents which are not used. . the offenders shall.6. the following provisions shall be deemed prima facie to have an adverse effect on competition and trade: 87.No damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement. No.4. No.A. which shall be awarded as part of his costs should he prevail in the action. No.To encourage the transfer and dissemination of technology. 87. 87. except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee. 44. (Sec. (Sec.Damages cannot be recovered for acts of infringement committed before the infringer had known. . 12 . No.000). Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement. .If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer. . R.In an action for infringement.A. to determine the process actually used. Limitation of Action for Damages. or any claim thereof. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by the complaining party. . No. 45. without prejudice to the institution of a civil action for damages. Patent Found Invalid May be Cancelled.9. (n) Section 79. Assessor in Infringement Action. Two (2) or more assessors may be appointed by the court. In ordering the defendant to prove that the process to obtain the identical product is different from the patented process. Prohibited Clauses. (Sec. (n) Section 87. Those which impose upon the licensee the obligation to acquire from a specific source capital goods. 46. 87. R. the defendant. . Either party may challenge the fitness of any assessor proposed for appointment.

In the absence of any provision to the contrary in the technology transfer arrangement. Period for Filing a Petition for a Compulsory License. as long as it does not impair the quality standards prescribed by the licensor.The Director of Legal Affairs may grant a license to exploit a patented invention. Those which restrict the research and development activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate research and development programs in connection with new products. regional dispersal of industries and/or substitution with or use of local raw materials. R. or 93. although capable of being worked. 87. Information and Technology Transfer Bureau.The licensee shall be entitled to exploit the subject matter of the technology transfer arrangement during the whole term of the technology transfer arrangement. . or in the case of Board of Investments.1.Technology transfer arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the Documentation. Rights of Licensor. Grounds for Compulsory Licensing.5 13 .A. Where the public interest.11. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive. 33-C (1).2. in particular. 87.10. In case of public non-commercial use of the patent by the patentee. 88. 165a) Section 91. employment generation. and 88. (Sec. nutrition.94.3. health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government. Other clauses with equivalent effects.14. Those which prevent the licensee from adapting the imported technology to local conditions. Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases.1. R.15. 33-C (2). and 87. .87. in favor of any person who has shown his capability to exploit the invention. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor. 165a) Section 90. . R. registered companies with pioneer status.12. or 93. the grant of a license shall not prevent the licensor from granting further licenses to third person nor from exploiting the subject matter of the technology transfer arrangement himself.4. under any of the following circumstances: 93. . exemption from any of the above requirements may be allowed by the Documentation. Mandatory Provisions. R. Non-Registration with the Documentation. In the event the technology transfer arrangement shall provide for arbitration. Non-conformance with any of the provisions of Sections 87 and 88. or introducing innovation to it. (Sec. 165a) Section 94. (n) Section 89. without satisfactory reason: Provided. Rights of Licensee.A. . Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier.3. national security.In exceptional or meritorious cases where substantial benefits will accrue to the economy. . 34-A. 34. even without the agreement of the patent owner. Exceptional Cases. If the patented invention is not being worked in the Philippines on a commercial scale.5. without satisfactory reason. however. unless said technology transfer arrangement is approved and registered with the Documentation.4. Information and Technology Transfer Bureau. That the importation of the patented article shall constitute working or using the patent. shall automatically render the technology transfer arrangement unenforceable.A. National emergency or other circumstances of extreme urgency. increase in foreign exchange earnings. 34-B.13. (n) CHAPTER X COMPULSORY LICENSING Section 93. 88. (Secs.2.The following provisions shall be included in voluntary license contracts: 88. 87. 33-B. A compulsory license may not be applied for on the ground stated in Subsection 93. 87. the venue shall be the proper court in the place where the licensee has its principal office. No. Information and Technology Transfer Bureau after evaluation thereof on a case by case basis. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation. the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country.A 165a) Section 88. (Sec. 93. 93. (n) Section 92. processes or equipment. such as high technology content. .1. so requires. termination arrangement. Those which require payments for patents and other industrial property rights after their expiration. Those which exempt the licensor for liability for non-fulfilment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement.

the statutory grounds upon which compulsory license is sought.1.1 shall not apply in the following cases: (a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anti-competitive. Terms and Conditions of Compulsory License. The license shall be non-assignable. 34-E. and 93. hereafter referred to as the "second patent. R. 95. the right holder shall be informed promptly. The resident agent or representative appointed in accordance with Section 33 hereof. knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government.3.4 and Section 97 may be applied for at any time after the grant of the patent. 100. . the notice shall be published by the said Office in a newspaper of general circulation. Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided. 165) Section 99. The scope and duration of such license shall be limited to the purpose for which it was authorized. 14 . subject to the following conditions: 97. Compulsory Licensing of Patents Involving Semi-Conductor Technology.3.4. 100. 100. In situations of national emergency or other circumstances of extreme urgency. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent.2. 165) Section 100. 95. (n) Section 96. or any other right. Notice of Hearing. The terms and conditions of Sections 95. Compulsory License Based on Interdependence of Patents. except with that part of the enterprise or business with which the invention is being exploited. (Sec.A. Form and Contents of Petition.A.In the case of compulsory licensing of patents involving semi-conductor technology. 96 and 98 to 100 of this Act. the license may only be granted in case of public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. That this limitation shall not apply where the grant of the license is based on the ground that the patentee's manner of exploiting the patent is determined by judicial or administrative process. . the ultimate facts constituting the petitioner's cause of action.2.2.A. The license shall be non-exclusive. (c) In cases of public non-commercial use. Upon filing of a petition.4. (Sec. where the government or contractor. . No.3. 95.2. and 97. without making a patent search. 99. It shall contain the name and address of the petitioner as well as those of the respondents.1. the right holder shall be notified as soon as reasonably practicable. and the relief prayed for. No.99. verified by the petitioner and accompanied by payment of the required filing fee.If the invention protected by a patent. title or interest in and to the patent and invention covered thereby as appears of record in the Office." granted on a prior application or benefiting from an earlier priority. Requirement to Obtain a License on Reasonable Commercial Terms. 97. 95.2. to be anticompetitive. the number and date of issue of the patent in connection with which compulsory license is sought. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent. .1.4.3.1. 34C.before the expiration of a period of four (4) years from the date of filing of the application or three (3) years from the date of the patent whichever period expires last. R.The petition for compulsory licensing must be in writing." within the country cannot be worked without infringing another patent. 165) Section 95. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent.2. In every case. No. . the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patent owner and all persons having grants or licenses. the name of the patentee. shall be bound to accept service of notice of the filing of the petition within the meaning of this Section. R. In the case of public non-commercial use. (n) Section 97. 34(1). (b) In situations of national emergency or other circumstances of extreme urgency. a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention. A compulsory license which is applied for on any of the grounds stated in Subsections 93. 34-D. and of notice of the date of hearing thereon. 93. hereafter referred to as the "first patent. 94. on such persons and petitioner. No. (Sec. once a week for three (3) consecutive weeks and once in the IPO Gazette at applicant's expense. 165a) Section 98. 97. The license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. (Sec. R.A. The requirement under Subsection 95.The basic terms and conditions including the rate of royalties of a compulsory license shall be fixed by the Director of Legal Affairs subject to the following conditions: 100. the title of the invention.

(Sec.If two (2) or more persons jointly own a patent and the invention covered thereby. No. No. . 101. No. R. and 100. Transmission of Rights. R. Licensee's Exemption from Liability. The original documents together with a signed duplicate thereof shall be filed. 35-B.100. the Director of Legal Affairs may amend the decision granting the compulsory license.A. use. sell. except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process. an authenticated copy thereof in duplicate may be filed. An assignment may be limited to a specified territory. notify the patentee. That neither of the joint owners shall be entitled to grant licenses or to assign his right. R. The licensee may surrender the license by a written declaration submitted to the Office.108. the Office shall retain the duplicate. (Sec. which are presented in due form to the Office for registration. to the registration of utility models. . Inventions and any right. This is without prejudice to the right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the license. or cancellation in the Register. 165) Section 106. (Sec. R. in which event the parties become joint owners thereof.A. The patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization. or of an undivided share of the entire patent and invention. no collusion with the licensor is proven.2. Recording. it is so recorded in the Office. No. licenses and other instruments relating to the transmission of any right. . 35-D. however.A.A. R. (Sec. 52.6. Upon the request of the patentee or the licensee. surrender. 51. title or interest in and to the patent and the invention covered thereby. Cancellation. 101. 165) CHAPTER XII REGISTRATION OF UTILITY MODELS Section 108. within three (3) months from the date of said instrument. and cause notice thereof to be published in the IPO Gazette.1. return the original or the authenticated copy to the party who filed the same and notice of the recording shall be published in the IPO Gazette. . or prior to the subsequent purchase or mortgage. . acknowledged before a notary public or other officer authorized to administer oath or perform notarial acts. No. upon proper showing of new facts or circumstances justifying such amendment.An assignment may be of the entire right.5. 53. R. 165a) Section 101. may be assigned or transmitted by inheritance or bequest or may be the subject of a license contract. The said Director shall cause the amendment. 101. the provisions governing patents shall apply. 106. Applicability of Provisions Relating to Patents. each of the joint owners shall be entitled to personally make. 50.1. title or interest or part thereof without the consent of the other owner or owners. No. 103. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice. the need to correct the anti-competitive practice may be taken into account in fixing the amount of remuneration.2. Patents or applications for patents and invention to which they relate.101. (Sec. Surrender of Compulsory License. (Sec. (Sec. That adequate protection shall be afforded to the legitimate interest of the licensee. (Sec.4. title or interest in and to inventions. 15 .A.A. and patents or application for patents or inventions to which they relate. 35-E. title or interest in and to patents and inventions covered thereby. 165a) Section 104.103. . 165a) Section 102.A. and/or the licensee. That in the case of voluntary licensing. Subject to Section 109. shall be protected in the same way as the rights of other property under the Civil Code. or import the invention for his own profit: Provided. Assignment of Inventions. mutatis mutandis. (b) If the licensee has neither begun to supply the domestic market nor made serious preparation therefor. Form of Assignment. The license may be terminated upon proper showing that circumstances which led to its grant have ceased to exist and are unlikely to recur: Provided. Amendment. R. No. R. substance and/or process under a license granted under this Chapter. Upon recording. . the said Director may cancel the compulsory license: (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur. 165a) Section 107. shall be free from any liability for infringement: Provided however. 54. to be anti-competitive. 165a) CHAPTER XI ASSIGNMENT AND TRANSMISSION OF RIGHTS Section 103. (c) If the licensee has not complied with the prescribed terms of the license.2. Upon the request of the patentee. .Any person who works a patented product. or without proportionally dividing the proceeds with such other owner or owners. in books and records kept for the purpose. and the contents thereof should be kept confidential.106. The Office shall record assignments. either by the issuance of the patent in their joint favor or by reason of the assignment of an undivided share in the patent and invention or by reason of the succession in title to such share. and certified under the hand and official seal of the notary or such other officer. 165) Section 105. Rights of Joint Owners.A. unless.1.1.The assignment must be in writing. If the original is not available. No.3.

1. upon payment of the prescribed fee. .A. Where the right to a patent conflicts with the right to a utility model registration in the case referred to in Section 29. R. Several Industrial Designs in One Application. at the end of the seventh year after the date of the filing of the application.3. convert his application into a patent application.4. 59. Prohibition against Filing of Parallel Applications. No.A. 55. In proceedings under Sections 61 to 64. An application may be converted only once. A utility model registration shall expire.2. . (d) A representation of the article of manufacture or handicraft by way of drawings. The Office shall accord as the filing date the date of receipt of the application containing indications allowing the identity of the applicant 16 . upon payment of the prescribed fee. 109.An applicant may not file two (2) applications for the same subject. Definition of Industrial Design. (Secs. Conversion of Patent Applications or Applications for Utility Model Registration. 165a) CHAPTER XIII INDUSTRIAL DESIGN Section 112.109. R.2. Special Provisions Relating to Utility Models. . shall apply except the reference to inventive step as a condition of protection. one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively. the utility model registration shall be canceled on the following grounds: (a) That the claimed invention does not qualify for registration as a utility model and does not meet the requirements of registrability. health or morals shall not be protected. which shall be accorded the filing date of the initial application. (b) That the description and the claims do not comply with the prescribed requirements.114. R. R. (b) Information identifying the applicant.A. 23. The application may be accompanied by a specimen of the article embodying the industrial design and shall be subject to the payment of the prescribed fee. Every application for registration of an industrial design shall contain: (a) A request for registration of the industrial design. an applicant for a utility model registration may. Substantive Conditions for Protection. 165a) Section 113.1. . (Sec. (c) An indication of the kind of article of manufacture or handicraft to which the design shall be applied. That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. No. without any possibility of renewal.116.1. . Contents of the Application. or where the applicant is not the creator. Only industrial designs that are new or original shall benefit from protection under this Act.110. (n) Section 114. No. That they relate to the same sub-class of the International Classification or to the same set or composition of articles.2. 114.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model.1. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order. 113. which shall be accorded the filing date of the initial application.108. (d) That the owner of the utility model registration is not the inventor or his successor in title. (c) That any drawing which is necessary for the understanding of the invention has not been furnished. 58. photographs or other adequate graphic representation of the design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which design protection is claimed. 109. (Sec.1 and Sections 22. Examination. (Sec. . 55. whether or not associated-with lines or colors: Provided. (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. At any time before the grant or refusal of a patent. 110.A. No.2.1. 165a) Section 110. "Patentable Inventions". . At any time before the grant or refusal of a utility model registration.An industrial design is any composition of lines or colors or any three-dimensional form.113. 55. 109.Two (2) or more industrial designs may be the subject of the same application: Provided. R. (Sec. No. convert his application into an application for registration of a utility model.(n) Section 115. an applicant for a patent may. and (e) The name and address of the creator. 165a) Section 109. . (b) Section 21. and 57. a statement indicating the origin of the right to the industrial design registration. 165a) Section 111.A. 56. 24 and 27. the said provision shall apply as if the word "patent" were replaced by the words "patent or utility model registration". in particular having regard to Subsection 109. (n) Section 116.

2. That the disclosure is contained in printed docum form. 117. (n) Section 120. with the request to record the change in the identity of the proprietor.2. Cancellation of Design Registration. Right of Priority: Provided. The Office shall examine whether the industrial design complies with requirements of Section 112 and Subsections 113.118.3. protection under this Chapter cannot be invoked against the injured party. The Term of Industrial Design Registration.1. Refusal of the Application. Sections 56 to 60 CHAPTER VII CHAPTER VIII CHAPTER XI - 119. by paying the renewal fee.2 and 113. . any person upon payment of the required fee.2. and Assignment and Transmission of Rights.4. 116. If the fee is not paid. Anyone may inspect the Register and the files of registered industrial designs including the files of cancellation proceedings.4.3. the applicant shall comply with the requirements of Section 114 within the prescribed period. Non-prejudicial Disclosure.117. However. the request shall be deemed not to have been filed. Application of Other Sections and Chapters. may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: 17 . At any time during the term of the industrial design registration. Right to a Patent.1. The Office shall record in the register any change in the identity of the proprietor of the industrial design or his representative. 117.3. If the essential elements of an industrial design which is the subject of an application have been obtained from the creation of another person without his consent. 117. it shall refuse the application. 118. the surcharge and other requirements regarding the recording of renewals of registration.3.2. 116. (n) Section 117. In such case. Registration. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. 118. First to File Rule. otherwise. 116.120. The following provisions relating to patents shall apply mutatis mutandis to an industrial design registration: Section 21 Section 24 Section 25 Section 27 Section 28 Section 29 Section 31 Section 33 Section 51 Novelty: Prior art: Provided.4. . Remedies of a Person with a Right to Patent.1 The registration of an industrial design shall be for a period of five (5) years from the filing date of the application.5. After the application has been accorded a filing date and the required fees paid on time.to be established and a representation of the article embodying the industrial design or a pictorial representation thereof. Where the Office finds that the conditions referred to in Section 113 are fulfilled. That the application for industrial design (6) months from the earliest filing date of the corresponding foreign Appointment of Agent or Representative. A fee shall be paid. If the application does not meet these requirements the filing date should be that date when all the elements specified in Section 105 are filed or the mistakes corrected. upon payment of a surcharge 118. . Surrender. if proof thereof is furnished to it. . the former proprietor and the former representative shall remain subject to the rights and obligations as provided in this Act. the application shall be considered withdrawn. Section 119. Inventions Created Pursuant to a Commission. it shall order that registration be effected in the industrial design register and cause the issuance of an industrial design certificate of registration. a grace period of six (6) months shall be granted for payment of the fees after such expiration. Registration shall be published in the form and within the period fixed by the Regulations. Rights of Patentees and Infringement of Patents. 117. That the name and address of the creator shall be mentioned in every case.1. The Regulations shall fix the amount of renewal fee. Otherwise if the requirements are not complied within the prescribed period.119. (n) Section 118. The form and contents of an industrial design certificate shall be established by the Regulations: Provided. Correction of and Changes in Patent. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each. otherwise the application shall be considered withdrawn.

(Sec.A. including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. (Sec. (f) Is identical with. "Examiner" means the trademark examiner. or confusingly similar to. during the life of his widow. as being already the mark of a person other than the applicant for registration. Registrability.5.A. No. particularly as to the nature. 120. (g) Is likely to mislead the public.As used in Part III. or portrait of a deceased President of the Philippines. or national symbols. portrait or signature identifying a particular living individual except by his written consent. (e) Is identical with. 166a) 121. if any. or (ii) Closely related goods or services. No. The restriction may be effected in the form of an alteration of the effected features of the design. (Sec. . 166a) Section 122.The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. 2-A. . No. That use of the mark in relation to those goods or services would indicate a connection between those goods or services. (Sec. R. (Sec.7. 166a) Section 123. (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions. institutions. signature. or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic. living or dead. Definitions. rather than of the public at large. Where the grounds for cancellation relate to a part of the industrial design.A. (n) PART III THE LAW ON TRADEMARKS. and used for identical or similar goods or services: Provided. or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph. 38. (b) If the subject matter is not new. How Marks are Acquired. R. SERVICE MARKS AND TRADE NAMES Section 121.6. or any simulation thereof. 121. or (c) If the subject matter of the industrial design extends beyond the content of the application as originally filed. 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. A mark cannot be registered if it: (a) Consists of immoral. or bring them into contempt or disrepute. characteristics or geographical origin of the goods or services. or matter which may disparage or falsely suggest a connection with persons. or the name.3. That the interests of the owner of the registered mark are likely to be damaged by such use. "Director" means the Director of Trademarks. No. "Regulations" means the Rules of Practice in Trademarks and Service Marks formulated by the Director of Trademarks and approved by the Director General. "Mark" means 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. deceptive or scandalous matter. (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date. 18 . 38. 166a) 121. the following terms have the following meanings: 121. cancellation may be effected to such extent only. and the owner of the registered mark: Provided further.A.2.4.1. R. No.2. "Bureau" means the Bureau of Trademarks. (c) Consists of a name. whether or not it is registered here. . including knowledge in the Philippines which has been obtained as a result of the promotion of the mark. in respect of: (i) The same goods or services. quality. "Trade name" means the name or designation identifying or distinguishing an enterprise.(a) If the subject matter of the industrial design is not registrable within the terms of Sections 112 and 113. 121. or of any foreign nation. 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. except by written consent of the widow. and 121. 166a) 121. or confusingly similar to. That in determining whether a mark is well-known. R A. beliefs. (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify.1.123. R. 40. 38. account shall be taken of the knowledge of the relevant sector of the public.

if the applicant is not domiciled in the Philippines. and (l) A signature by. he shall designate by a written document filed in the Office.3. together with the number of the class of the said Classification to which each group of goods or services belongs. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect. ii) The date on which the earlier application was filed. (h) Where the mark is a three-dimensional mark. (k). value. geographical origin. quality. the application shall be refused or the mark shall be removed from the Register by the Director.4. (b) The name and address of the applicant. (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind.3. in respect of each color. No. the law under which it is organized and existing. (e) The appointment of an agent or representative. (l) Consists of color alone. Otherwise. (Sec.2. (d) Where the applicant is a juridical entity. nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. 124. Address for Service. a statement to that effect as well as the name or names of the color or colors claimed and an indication. 124. R. (k) The names of the goods or services for which the registration is sought. Representation.A. the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application. (c) The name of a State of which the applicant is a national or where he has domicile. The application for the registration of the mark shall be in Filipino or in English and shall contain the following: (a) A request for registration. and (l). (i) One or more reproductions of the mark. if any.A. One (1) application may relate to several goods and/or services.124.2. R. or other characteristics of the goods or services. the applicant or his representative. 4. . and the name of a State in which the applicant has a real and effective industrial or commercial establishment. (g) Where the applicant claims color as a distinctive feature of the mark.If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines. As regards signs or devices mentioned in paragraphs (j). the name of that office. 166a) Section 125. 5. or (m) Is contrary to public order or morality.1. a statement to that effect. quantity. Requirements of Application. unless defined by a given form. The Office may accept as prima facie evidence that the mark has become distinctive. of the principal parts of the mark which are in that color. If during the examination of the application. . The nature of the goods to which the mark is applied will not constitute an obstacle to registration. or other self-identification of. it may require the applicant to submit sufficient evidence to remove the doubt. as prescribed in the Regulations. and iii) Where available. 123. (Sec. proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. time or production of the goods or rendering of the services. (f) Where the applicant claims the priority of an earlier application. the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. 124. grouped according to the classes of the Nice Classification. No. Such notices or services may be served upon the person so designated by 19 . whether they belong to one (1) class or to several classes of the Nice Classification.(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice. as used in connection with the applicant's goods or services in commerce. the application number of the earlier application. as prescribed by the Regulations within three (3) years from the filing date of the application. as prescribed in the Regulations. intended purpose. 166a) Section 124. an indication of: i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office. 123. (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value. (j) A transliteration or translation of the mark or of some parts of the mark.

such an application shall result in one registration. No. (b) The identity of the applicant. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant. Requirements.1.leaving a copy thereof at the address specified in the last designation filed. the owner of a well-known mark as defined in Section 123.A. legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs. . (n) Section 129. (c) Indications sufficient to contact the applicant or his representative. Where a signature is required. where required.1(e) of this Act. the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided. .4. 127.Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application. otherwise. it should be accompanied by an indication in letters of the name of the signatory. No filing date shall be accorded until the required fee is paid. that is not registered in the Philippines. The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority. the reproduction of the signature. That.2. appears. or petition the cancellation of its registration or sue for unfair competition. . 166a) Section 126.A. Division of Application. 166a) Section 132. such as a printed or stamped signature. (Sec. The Office shall examine whether the application satisfies the requirements for the grant of a filing date as provided in Section 127 and Regulations relating thereto." may be divided by the applicant into two (2) or more applications. abandoned. oppose its registration.2. Priority Right. Single Registration for Goods and/or Services. When communications are made by telefacsimile.Any application referring to several goods or services.1. or (b) The use of other forms of signature. will be required. without prejudice to availing himself of other remedies provided for under the law. (n) Section 128. such notice or process may be served upon the Director.The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter. nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods. Signature and Other Means of Self-Identification. In like manner and subject to the same conditions and requirements. No attestation. as a basis for claiming a right of priority.1. (Sec. if any. 20 . The original communications must be received by the Office within thirty (30) days from date of receipt of the telefacsimile. An application for registration of a mark filed in the Philippines by a person referred to in Section 3. 3. notwithstanding the foregoing. 131. (d) A reproduction of the mark whose registration is sought.A.2. the indication in letters of the name of the natural person whose seal is used. 166a) Section 127. 131. . That where a seal is used. Application Number and Filing Date. 37.The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino: (a) An express or implicit indication that the registration of a mark is sought. Filing Date. against an identical or confusingly similar mark. hereafter referred to as the "initial application. without having been laid open to public inspection and without leaving any rights outstanding. That any foreign application filed prior to such subsequent application has been withdrawn. . and has not served.1. nor thereafter shall serve. and (e) The list of the goods or services for which the registration is sought. No. shall be considered as filed as of the day the application was first filed in the foreign country. 130. (Sec.132. If the person so designated cannot be found at the address given in the last designation. the application shall be considered withdrawn.127. Disclaimers. 13.130. ." by distributing among the latter the goods or services referred to in the initial application. or by electronic means subject to the conditions or requirements that will be prescribed by the Regulations. business or services. No. or the reproduction of the seal together with.3.131. R. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided. authentication. (n) Section 131. or otherwise disposed of. The Office shall accept communications to it by telecopier. the Office shall notify the applicant who shall within a period fixed by the Regulations complete or correct the application as required.3. and who previously duly filed an application for registration of the same mark in one of those countries. . R. If the application does not satisfy the filing requirements. or the use of a seal instead of a hand-written signature: Provided. may. notarization. hereafter referred to as the "divisional applications. 130. where the signature concerns the surrender of a registration. the Office shall accept: (a) A hand-written signature. R. except. (n) Section 130. . 131.

. and the number.Upon the filing of an opposition.A. who shall notify the applicant of such extension. (Sec. and of 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. as filed. . (n) Section 133. Notice and Hearing. Registration of Mark and Issuance of a Certificate to the Owner or his Assignee. and of the date of the hearing thereof upon the applicant and the oppositor and all other persons having any right. title or interest in the mark covered by the application.A certificate of registration of a mark shall be prima facie evidence of the validity of the registration. reproducing all the particulars referred to in Subsection 137.1. Once the application meets the filing requirements of Section 127. or by the new owner. if priority is claimed. 165a) Section 135. if the registered owner's address is outside the country. That the assignment is recorded in the Office. Publication of Registered Marks. (Sec. . date and country of the application. upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133. the Office shall serve notice of the filing on the applicant. 8. or his representative.139. the registrant's ownership of the mark. notice thereof making reference to the publication of the application shall be published in the IPO Gazette. Issuance and Publication of Certificate. 137.1. R. 133. 166a) Section 134. the applicant is not entitled to registration for any reason. R. . Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts.137. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided.2. Examination and Publication. Inspection of Register.When the period for filing the opposition has expired. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment. his address for service within the country. in the form and within the period fixed by the Regulations. required to be recorded by virtue of this law. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner. 166a) Section 138. For good cause shown and upon payment of the required surcharge. shall issue the certificate of registration. R. it shall be numbered in the sequential order. No. The Regulations shall fix the maximum period of time within which to file the opposition. at his last recorded address for service.1. which shall then be re-examined.1 are fulfilled. and the applicant shall be informed of the application number and the filing date of the application will be deemed to have been abandoned. . Opposition. No. The applicant shall have a period of four (4) months in which to reply or amend his application. with the indication of the corresponding class or classes. in the order of their registration. upon good cause shown and the payment of the required fee. as appear of record in the Office.A. the list of goods or services in respect of which registration has been granted. 21 . and shall specify the grounds on which it is based and include a statement of the facts relied upon. 137. If after the examination. 7.133. issue to such assignee a new certificate of registration of the said mark in the name of such assignee. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith. Upon issuance of a certificate of registration. . 133. . the Office shall examine whether the application meets the requirements of Section 124 and the mark as defined in Section 121 is registrable under Section 123.3. the time for filing an opposition may be extended by the Director of Legal Affairs. No. 10.2. (Sec. 137. basis of the priority claims. The Office shall record any change of address. together with the translation in English. and all transactions in respect of each mark.5. which shall be notified to it by the registered owner. R.3. the name and address of the registered owner and. the dates of application and registration. 133. No. 165) Section 139.2. No. 20.4. The registration of a mark shall include a reproduction of the mark and shall mention: its number. file with the Office an opposition to the application. forthwith cause the application. numbered in the order of their registration.A. the Office upon payment of the required fee. the marks registered.2 Once an application meets the filing requirements of Section 127. 137. the Office shall advise the applicant thereof and the reasons therefor. 165) Section 136. Where the Office finds that the conditions referred to in Subsection 133.4. the Office shall at the written request signed by the owner. if not in the English language. to be published in the prescribed manner. 165) Section 137. 133. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. or his representative and upon a proper showing and the payment of the prescribed fee.5. (Sec. Certificates of Registration. at the same.132.A. and such other data as the Regulations may prescribe from time to time.A. or when the Director of Legal Affairs shall have denied the opposition. No. it shall upon payment of the prescribed fee. In case of a change of ownership. The Office shall maintain a Register in which shall be registered marks. (Sec.2. (Sec. or address for service. The Office shall publish.Any person who believes that he would be damaged by the registration of a mark may. In the absence of any provision to the contrary in this Act. 19. 9. an indication of this fact. R. and for the unexpired part of the original period. R.A. communications to be made to the registered owner by virtue of this Act shall be sent to him at his last recorded address and.

166a) 22 .A certificate of registration shall remain in force for ten (10) years: Provided.2. books. 166a) Section 145. shall be evidence in all cases wherein the originals would be evidence. or shall show valid reasons based on the existence of obstacles to such use. hereafter referred to as the "right holder". No. 15. the mark shall be removed from the Register by the Office. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. No.146. grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification. within one (1) year from the fifth anniversary of the date of the registration of the mark. . Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed. in any registration or publication by the Office.Whenever a material mistake in a registration incurred through the fault of the Office is clearly disclosed by the records of the Office. the Office for good cause may permit any registration to be amended or to be disclaimed in part: Provided. That the registrant shall file a declaration of actual use and evidence to that effect. . The request shall contain the following indications: (a) An indication that renewal is sought. Upon application of the registrant and payment of the prescribed fee.1.144. and upon cancellation the appropriate entry shall be made in the records of the Office.2. if said certificate is lost or destroyed. 146. 166a) Section 146. and any person who applies and pays the prescribed fee shall secure such copies. That the amendment or disclaimer does not alter materially the character of the mark. . . grouped according to the classes of the Nice Classification. recorded and a printed copy thereof shall be attached to each printed copy of the registration.3.A. Renewal. Cancellation upon Application by Registrant. as prescribed by the Regulations. (e) Where the right holder has a representative. Correction of Mistakes Made by the Office.2. R. That the correction does not involve any change in the registration that requires republication of the mark. a certificate stating the fact and nature of such mistake shall be issued without charge. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed.Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant.1. 146. the Office may issue a certificate upon the payment of the prescribed fee: Provided. No. and copies of registrations. the name and address of that representative. (n) Section 142.139. Correction of Mistakes Made by Applicant. This provision shall also be applicable to transactions recorded in respect of any registered mark. 6.Upon application of the registrant. 146. No. (Sec. Duration. (f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested. R.A. and (g) A signature by the right holder or his representative. R. Appropriate entry shall be made in the records of the Office upon the certificate of registration or. Such corrected registration shall thereafter have the same effect as the original certificate. it shall notify the registrant of his refusal and the reasons therefor. (Sec.Copies of any records. Each registration. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act. when authenticated by the seal of the Office and certified by the Director of the Administrative. 12. (Sec. Financial and Human Resource Development Service Bureau a new certificate of registration may be issued without charge. papers. (c) The registration number of the registration concerned. 144. . Amendment or Disclaimer of Registration. (n) Section 143. Sealed and Certified Copies as Evidence.A. and each group shall be preceded by the number of the class of that Classification to which that group of goods or services belongs. Marks registered at the Office may be inspected free of charge and any person may obtain copies thereof at his own expense. Financial and Human Resource Development Service Bureau or in his name by an employee of the Office duly authorized by said Director. the Office may permit any registration to be surrendered for cancellation. (b) The name and address of the registrant or his successor-in-interest. upon a certified copy thereof (Sec. Otherwise. All certificates of correction heretofore issued in accordance with the Regulations and the registration to which they are attached shall have the same force and effect as if such certificates and their issuance had been authorized by this Act. they appear in different classes of the Nice Classification. (n) Section 140. (d) The filing date of the application which resulted in the registration concerned to be renewed. R. . Classification of Goods and Services. 14. Goods or services may not be considered as being similar or dissimilar to each other on the ground that. presented in the order of the classes of the said Classification. 166) Section 141. or drawings belonging to the Office relating to marks. If the Office refuses to renew the registration. . and any publication of the Office which concerns an application or registration effected by the Office shall indicate the goods or services by their names. (n) Section 144. or in the discretion of the Director of the Administrative.A.4.

. 149. (b) At any time. of their goods or services: Provided. when registered.3. No. (n) 149.Section 147. the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. Assignments and transfers shall have no effect against third parties until they are recorded at the Office. and the mark. In case of the use of an identical sign for identical goods or services. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows: (a) Within five (5) years from the date of the registration of the mark under this Act. (n) (c) At any time. or an application therefor. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. characteristics.4. (n) Section 149. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.1. particularly as regards the nature. . source. A license contract shall be submitted to the Office which shall keep its contents confidential but shall record it and publish a reference thereto. The Regulations shall fix the procedure for the recording of the license contract.A. a geographical name.2.1. 166a) 23 . 147. or its registration was obtained fraudulently or contrary to the provisions of this Act. a likelihood of confusion shall be presumed. however. the license contract shall not be valid. on payment of the same fee. (Sec. 166a) Section 150. 149. the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. destination. shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used.150. 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. Any license contract concerning the registration of a mark. or with the permission of.2. 150. If the license contract does not provide for such quality control. That use of that 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. 17. . place of origin. Cancellation. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service.147. for which it is registered. Transfers by mergers or other forms of succession may be made by any document supporting such transfer.1(e) which is registered in the Philippines. the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. On the other hand. or of its registration. License Contracts. . If the registered mark becomes the generic name for less than all of the goods or services for which it is registered. Such assignment or transfer shall. or a portion thereof. assignment and transfers of applications for registration shall. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided.151. or time of production or of supply. quality. 151. or if such quality control is not effectively carried out. pseudonyms.5. .149.Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names. or its registration. manufacturing process. may be assigned or transferred with or without the transfer of the business using the mark.A. or suitability for their purpose. The assignment of the application for registration of a mark. An application for registration of a mark. (Sec. (n) Section 151. Rights Conferred. value. shall be in the name of the assignee or transferee. or if the registered mark is being used by. No.2.1. R. be null and void if it is liable to mislead the public. or has been abandoned. a petition to cancel the registration for only those goods or services may be filed. quantity. if the registered mark becomes the generic name for the goods or services. or exact indications concerning the kind. of the goods or services to which the mark is applied. Notwithstanding the foregoing provisions. if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines. A license contract shall have no effect against third parties until such recording is effected. (n) Section 148.2. R. 31. That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. That the interests of the owner of the registered mark are likely to be damaged by such use. The exclusive right of the owner of a well-known mark defined in Subsection 123. 149. or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. shall be in writing and require the signatures of the contracting parties. be provisionally recorded.1. Assignment and Transfer of Application and Registration. addresses.

That such mark is not used in such manner as to deceive the public. . (n) 156. 166) 156. No. No. The owner of a registered mark may recover damages from any person who infringes his rights. . 166a) Section 158. 166a) Section 155.Section 152. Cancellation of Registration.Insofar as applicable.4. No. or in the event such measure of damages cannot be readily ascertained with reasonable certainty. disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder. . R. or to cause mistake. the court may impound during the pendency of the action. shall be delivered up and destroyed. it shall order the cancellation of the registration. or to cause mistake. The use of a mark by a company related with the registrant or applicant shall inure to the latter's benefit. signs. may also be granted injunction. all plates. receptacles and advertisements in the possession of the defendant.If the Bureau of Legal Affairs finds that a case for cancellation has been made out.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. distribution. (Sec.A. counterfeit. counterfeit.A. offering for sale.A.1 In any action arising under this Act. or to deceive. (Sec. No. . without compensation of any sort. 19. Requirements of Petition.2. packages. 166a) 24 .2. Requirement of Notice.. first par. (Sec. That the infringement takes place at the moment any of the acts stated in Subsection 155. (Sec. Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Reproduce. (Sec. second par. packages.1. and notice and hearing shall be as provided in Section 135 hereof. the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion. (n) Section 153.A.A. (Sec. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. 21. in the discretion of the court. which does not alter its distinctive character. Notice of cancellation shall be published in the IPO Gazette. molds. The complainant. copy or colorable imitation thereof.152. R. or to deceive. any right conferred by such registration upon the registrant or any person in interest of record shall terminate. then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services. to permit the release of the goods into the channels of commerce.2. 157. or 155. the damages may be doubled. prints. or advertising of goods or services on or in connection with which such use is likely to cause confusion. 22. 23. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. Actions. No 166a) Section 156. counterfeit.A. such use shall inure to the benefit of the registrant or applicant. 152. The use of the mark in a form different from the form in which it is registered. The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class. In cases where actual intent to mislead the public or to defraud the complainant is shown. No. upon proper showing.2.157. 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. When the order or judgment becomes final. signs..Any person who shall. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration. In regard to counterfeit goods.3. or to deceive. offering for sale. . distribution. the court may order that goods found to be infringing be. prints.3.4. without the consent of the owner of the registered mark: 155. Damages. or destroyed.A.In any suit for infringement. Use in commerce any reproduction. R. No. in which a violation of any right of the owner of the registered mark is established. the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations. Power of Court to Order Infringing Material Destroyed. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided. Lack of funds shall not excuse non-use of a mark. Infringement. had the defendant not infringed his rights. Section 154. matrices and other means of making the same.156. and such use shall not affect the validity of such mark or of its registration: Provided. R. sales invoices and other documents evidencing sales. R. wrappers. or the profit which the defendant actually made out of the infringement.1. . Notice and Hearing. wrappers.1. and Damages and Injunction for Infringement. first par. R. counterfeit. the petition for cancellation shall be in the same form as that provided in Section 134 hereof. and all labels. 24. bearing the registered mark or trade name or any reproduction. or to cause mistake. 152. and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made. On application of the complainant. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. 166a) 156. 23. (Sec. . Remedies. 166a) Section 157. Non-use of a Mark When Excused. 23. 152.. copy. shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark. copy or colorable imitation to labels. R.

. 27. No. . No. any subsequent use of the trade name by a third party. unfair competition. (Sec. Goods Bearing Infringing Marks or Trade Names.2. such names shall be protected. Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name.1. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. shall be admitted to entry at any 25 . Action for False or Fraudulent Declaration. Notwithstanding the provisions of Section 155 hereof. the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper. infringement. 165. . The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. before the filing date or the priority date.4. magazine. (n) Section 160. Judgment and orders shall be certified by the court to the Director. the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159.No article of imported merchandise which shall copy or simulate the name of any domestic product. or that it is manufactured in any foreign country or locality other than the country or locality where it is in fact manufactured. . That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper. magazine. or false designation of origin and false description. who shall make appropriate entry upon the records of the Bureau.(a) Notwithstanding any laws or regulations providing for any obligation to register trade names. . Jurisdiction of Court.Any person who shall procure registration in the Office of a mark by a false or fraudulent declaration or representation.Section 159. The provisions of Subsections 149. in particular.2. 166) Section 164. magazines. was using the mark for the purposes of his business or enterprise: Provided. and shall be controlled thereby. or other similar periodicals or in future transmissions of such electronic communications. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put. 155. (n) Section 165. it is contrary to public order or morals and if. 166a) Section 161. R. in whole or in part. whether as a trade name or a mark or collective mark.All actions under Sections 150. or by any false means.3. and the latter shall endorse the same upon the filewrapper of the said registration or registrations and incorporate the same as a part of the contents of said filewrapper. cancellation. and otherwise rectify the register with respect to the registration of any party to the action in the exercise of this. shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof (Sec. to notify the Director in writing setting forth: the names and addresses of the litigants and designating the number of the registration or registrations and within one (1) month after the judgment is entered or an appeal is taken.A. Trade Names or Business Names. . 166) Section 163. 166a) Section 162. . 165.4 shall apply mutatis mutandis. 159. a registered mark shall have no effect against any person who. the court may determine the right to registration. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer. it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. against any unlawful act committed by third parties.Notwithstanding any other provision of this Act.A. (b) In particular.3. R. or any such use of a similar trade name or mark. the clerk of court shall give notice thereof to the Office.Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition. or manufacturer. or dealer. No. That his right may only be transferred or assigned together with his enterprise or business or with that part of his enterprise or business in which the mark is used. Notice of Filing Suit Given to the Director. 21-A. 26. or which shall copy or simulate a mark registered in accordance with the provisions of this Act. and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter.A.In any action involving a registered mark. or other similar periodical or in an electronic communication. 159. or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers. No. whether oral or in writing.It shall be the duty of the clerks of such courts within one (1) month after the filing of any action. (Sec.1. 25. or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines. The limitations of this subparagraph shall apply only to innocent infringers: Provided.2 to 149. or proceeding involving a mark registered under the provisions of this Act. order the cancellation of a registration. . or other similar periodical or an electronic communication containing infringing matter where restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication is customarily conducted in accordance with the sound business practice. likely to mislead the public. magazine. Authority to Determine Right to Registration. Limitations to Actions for Infringement. in good faith. even prior to or without registration. R.A.165. (Sec. R. Where the infringement complained of is contained in or is part of paid advertisement in a newspaper. 165. Section 166. whether or not it is licensed to do business in the Philippines under existing laws. 164. and 166 to 169 shall be brought before the proper courts with appropriate jurisdiction under existing laws. shall be deemed unlawful. the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing. suit.

No.2 and 167. whether or not a registered mark is employed. to be recorded in books which shall be kept for this purpose in the Bureau of Customs. or (b) In commercial advertising or promotion. or to cause mistake. or as to the origin. No. (b) The registered owner of a collective mark shall notify the Director of any changes made in respect of the agreement referred to in paragraph (a). under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe. or association of such person with another person. any person who is entitled to the benefits of this Act. services. 167.1.2. 29. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. name. which: (a) Is likely to cause confusion. False Designations of Origin. or to deceive as to the affiliation. on or in connection with any goods or services. 35.A. Any goods marked or labelled in contravention of the provisions of this Section shall not be imported into the Philippines or admitted entry at any customhouse of the Philippines. or any false designation of origin. A person who has identified in the mind of the public the goods he manufactures or deals in.customhouse of the Philippines. R. No.4. or that he uses or permits its use in contravention of the agreements referred to in Subsection 166. or false or misleading representation of fact. In addition to the grounds provided in Section 149. or geographic origin of his or her or another person's goods. qualities. 167. shall be guilty of unfair competition. Regulation and Remedies. or any combination thereof. business or services of another. or the devices or words thereon. or approval of his or her goods.167. R. other than the actual manufacturer or dealer. Rights. or commercial activities. his business or services from those of others. characteristics. a copy of the certificate of registration of his mark or trade name. connection. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. 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.A. . R. term. or his registered mark or trade name. 168. The owner. importer. may require that his name and residence. False Description or Representation. Unfair Competition. R. the name of the locality in which his goods are manufactured. In order to aid the officers of the customs service in enforcing this prohibition. misrepresents the nature. 157 and 161 shall apply mutatis mutandis.1.3.A. Sections 122 to 164 and 166 shall apply to collective marks. 166a) 26 . and may furnish to the said Bureau facsimiles of his name. or any container for goods. 40. 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.A. 166a) Section 169.2. 166) Section 167. 30. The registration of a collective mark.168. 167. symbol. either as to the goods themselves or in the wrapping of the packages in which they are contained. or an application therefor shall not be the subject of a license contract. (Sec. 169. which will be protected in the same manner as other property rights. uses in commerce any word.3. and shall be subject to an action therefor. (Sec. who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer. (Sec.2. governing the use of the collective mark. except that references therein to "mark" shall be read as "collective mark". Collective Marks. shall be liable to a civil action for damages and injunction provided in Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to be damaged by such act. or in any other feature of their appearance. or services for those of the one having established such goodwill. 169. has a property right in the goodwill of the said goods. and thereupon the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each collector or to other proper officer of the Bureau of Customs.1. In particular.2 or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the goods or services concerned. services.4. 168. 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 commercial activities by another person.3. No. sponsorship. if any. .(a) An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the agreement. 168. false or misleading description of fact. 166a) Section 168. the following shall be deemed guilty of unfair competition: (a) Any person. The remedies provided by Sections 156. the Court shall cancel the registration of a collective mark if the person requesting the cancellation proves that only the registered owner uses the mark. (b) Any person who by any artifice. or his business. business or services so identified. or device. (Sec. Subject to Subsections 167. and the name of the locality in which his goods are manufactured. and without in any way limiting the scope of protection against unfair competition. Any person who. or who shall commit any acts calculated to produce said result. or consignee of goods refused entry at any customhouse under this section may have any recourse under the customs revenue laws or may have the remedy given by this Act in cases involving goods refused entry or seized. or device. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer.

D. A "computer" is an electronic or similar device having information-processing capabilities. 171. 171. with the consent of the authors. the showing of its images in sequence and the making of the sounds accompanying it audible. Section 168 and Subsection 169. "Published works" means works.1. models or designs for works of art. sermons. (d) Letters. sculpture. of causing the computer to perform or achieve a particular task or result. Literary and Artistic Works. 171.000). P. or at different places and/or at different times. in the case of an audiovisual work. which is capable when incorporated in a medium that the computer can read. A "collective work" is a work which has been created by two (2) or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified. for profit-making purposes. dancing. A "work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities. That availability of such copies has been such. (b) Periodicals and newspapers. pamphlets. (e) Dramatic or dramatico-musical compositions. 171. 41 (E). either directly or by means of any device or process. . addresses. "Public lending" is the transfer of possession of the original or a copy of a work or sound recording for a limited period. "Communication to the public" or "communicate to the public" means the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them. and where the performance can be perceived without the need for communication within the meaning of Subsection 171. "Author" is the natural person who has created the work.3.7. are made available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them: Provided. (g) Works of drawing. codes.11. "Public performance". in the case of a sound recording. choreographic works or entertainment in dumb shows.8. making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and that family's closest social acquaintances are or can be present. the following terms have the following meaning: 171. 171. lithography or other works of art.Independent of the civil and administrative sanctions imposed by law. CHAPTER II ORIGINAL WORKS Section 172. 49 a).6. shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155. and. 171. No. playing. 188 and 189.5. by an institution the services of which are available to the public. 171. painting. such as public library or archive. with or without words. 171. schemes or in any other form. (c) Lectures. hereinafter referred to as "works". in the case of a work other than an audiovisual work. including government-owned or controlled corporations as a part of his regularly prescribed official duties. 171. acting or otherwise performing the work. whether or not reduced in writing or other material form. and a "computer program" is a set of instructions expressed in words. 27 .Section 170.000) to Two hundred thousand pesos(P200.9. 171.1. whether made by hand or produced on an industrial scale. which. Penalties. Definitions. a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50.172.1. for non-profit purposes. is the recitation. Literary and artistic works.For the purpose of this Act.3. Revised Penal Code) PART IV THE LAW ON COPYRIGHT CHAPTER I PRELIMINARY PROVISIONS Section 171. are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (a) Books. articles and other writings. . (f) Musical compositions. A "work of applied art" is an artistic creation with utilitarian functions or incorporated in a useful article. as to satisfy the reasonable requirements of the public.4. "Reproduction" is the making of one (1) or more copies of a work or a sound recording in any manner or form (Sec. (Arts. architecture.2. irrespective of whether they are or can be present at the same place and at the same time. "Rental" is the transfer of the possession of the original or a copy of a work or a sound recording for a limited period of time.10. engraving. . having regard to the nature of the work. dissertations prepared for oral delivery.

authorize or prevent the following acts: 177. Works are protected by the sole fact of their creation. whether or not registrable as an industrial design. 9. arrangement or other transformation of the work. and (b) Collections of literary.173. no protection shall extend. translation. . or assigns. third par.Subject to the provisions of Chapter VIII. copyright or economic rights shall consist of the exclusive right to carry out. No. first par. (Sec. plans. scientific and artistic works. illustrated or embodied in a work. news of the day and other miscellaneous facts having the character of mere items of press information. (k) Photographic works including works produced by a process analogous to photography. prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. addresses. charts and three-dimensional works relative to geography. and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents.D. That such new work shall not affect the force of any subsisting copyright upon the original works employed or any part thereof.D. 9. nor shall publication or republication by the Government in a public document of any work in which copyright is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owner. topography. explained. adaptations. the Government is not precluded from receiving and holding copyrights transferred to it by assignment. impose as a condition the payment of royalties. in deliberative assemblies and in meetings of public character. to any idea. 49) 176. and other alterations of literary or artistic works. The author of speeches. architecture or science. sermons.Notwithstanding the provisions of Sections 172 and 173. (Sec. under this law. or to secure or extend copyright in such original works. sketches. . P. lectures. (l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audiovisual recordings.D. TRIPS) Section 174.2. rules and regulations. 172. No prior approval or conditions shall be required for the use of any purpose of statutes. Works of the Government. No. the publisher shall have a copyright consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work.176. irrespective of their mode or form of expression.(h) Original ornamental designs or models for articles of manufacture. 2. abridgment. No. 177. or any official text of a legislative. Notwithstanding the foregoing provisions.2.2. or be construed to imply any right to such use of the original works. arrangements. 49) 173. adaptation. P.3. concept. and speeches. [P] and [Q]. abridgments. addresses. The following derivative works shall also be protected by copyright: (a) Dramatizations. scholarly. (Sec.1. Published Edition of Work. and other works of applied art. Dramatization. even if they are expressed. and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works. P. principle. (m) Pictorial illustrations and advertisements.. Reproduction of the work or substantial portion of the work. 49. read or rendered in courts of justice. Derivative Works. before administrative agencies. Art. (j) Drawings or plastic works of a scientific or technical character. method or operation. his heirs.2. scholarly or artistic works. sermons. (Sec. P. quality and purpose. No copyright shall subsist in any work of the Government of the Philippines. (n) CHAPTER IV WORKS NOT PROTECTED Section 175. among other things.1. 10. 2. discovery or mere data as such. and (o) Other literary. However. bequest or otherwise. 8.D. as well as any official translation thereof (n) Section 176. The works referred to in paragraphs (a) and (b) of Subsection 173. lectures. (n) 176.. P. 49a) CHAPTER III DERIVATIVE WORKS Section 173. system.1.D. . 49) CHAPTER V COPYRIGHT OR ECONOMIC RIGHTS Section 177. and dissertations. as well as of their content. Unprotected Subject Matter. (i) Illustrations. procedure. . No. Copyright or Economic Rights. pronounced. (n) Computer programs. maps. . lantern slides.In addition to the right to publish granted by the author. translations. (Sec. Such agency or office may. 28 .1 shall be protected as new works: Provided however. administrative or legal nature.

magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright.3. the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright. if the work is the result of the performance of his regularlyassigned duties. 7.D. P. . P. However. however. 177. a compilation of data and other materials or a musical work in graphic form. a computer program. No. The submission of a literary. In the case of work created by an author during and in the course of his employment. the producer shall exercise the copyright to an extent required for the exhibition of the work in any manner. the film director. (Sec. No. the transfer or assignment of the copyright shall not itself constitute a transfer of the material object. and 178. in the case of original literary and artistic works. the author of each part shall be the original owner of the copyright in the part that he has created.1 Subject to the provisions of this section. their rights shall be governed by the rules on co-ownership.6. 177.D. 49a) Section 179.3. the composer of the music. subject to contrary or other stipulations among the creators.2. (b) The employer.D. No. P. In respect of letters. (Sec. No. Anonymous and Pseudonymous Works. In the case of audiovisual work. 49) Section 182. to the contrary.5. if the creation of the object of copyright is not a part of his regular duties even if the employee uses the time. 180. photographic or artistic work to a newspaper. (n) 177.2.180. 5. Copyright and Material Object. unless there is an agreement. the publishers shall be deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms. the person who so commissioned the work shall have ownership of the work. the co-authors shall be the original owners of the copyright and in the absence of agreement. If two (2) or more persons jointly own a copyright or any part thereof. Within the scope of the assignment. . D. 180. .5. Rights of Assignee. which are incorporated into the work. 49a) 29 . 49) CHAPTER VII TRANSFER OR ASSIGNMENT OF COPYRIGHT Section 180.6.1. or the pseudonyms or adopted name leaves no doubt as to the author's identity. a work of joint authorship consists of parts that can be used separately and the author of each part can be identified. copyright shall belong to the author of the work.For purposes of this Act. irrespective of the ownership of the original or the copy which is the subject of the rental. P. Other communication to the public of the work. .4. the copyright shall belong to the producer. Public performance of the work. 49a) Section 181. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership.An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose.4. 15. 178. with or without words. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention.The copyright is distinct from the property in the material object subject to it. Notice of the record shall be published in the IPO Gazette. If. a copy of the instrument shall be returned to the sender with a notation of the fact of record. Upon recording.D. and 177. (Sec. except for the right to collect performing license fees for the performance of musical compositions. unless the contrary appears. The copyright may be assigned in whole or in part. and the author of the work so adapted. 178.177.D. Consequently. 49a) CHAPTER VI OWNERSHIP OF COPYRIGHT Section 178. No. Rules on Copyright Ownership.7. facilities and materials of the employer. In the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission. In the case of works of joint authorship. (Sec. Public display of the original or a copy of the work. . or if the author of the anonymous works discloses his identity. express or implied. a work embodied in a sound recording. (Sec. the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code. the copyright shall belong to: (a) The employee. the author of the scenario. Filing of Assignment or License. but the copyright thereto shall remain with the creator. 6. P. 178. Rental of the original or a copy of an audiovisual or cinematographic work. neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. (Sec. 19. P.3. 178.Copyright ownership shall be governed by the following rules: 178. unless there is a written stipulation to the contrary. 16.

(Sec. comment. (c) The amount and substantiality of the portion used in relation to the copyrighted work as a whole. if appearing on the work.1. (f) The recording made in schools. .. That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work. further. or educational institutions of a work included in a broadcast for the use of such schools. (Sec. Notwithstanding the provisions of Chapter V. (b) The nature of the copyrighted work. third par. 11. Section 185. (i) The public performance or the communication to the public of a work. which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. P. scientific or professional institutions where such use is in the public interest and is compatible with fair use. once it has been lawfully made accessible to the public. (g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast. that the original or the copy displayed has been sold. 49) (c) The reproduction or communication to the public by mass media of articles on current political. 49) (b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose. in a place where no admission fee is charged in respect of such public performance or communication. which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided. given away or otherwise transferred to another person by the author or his successor in title.D. 12. No. are mentioned. including whether such use is of a commercial nature or is for non-profit educational purposes. and similar purposes is not an infringement of copyright.D. broadcast. the following acts shall not constitute infringement of copyright: (a) The recitation or performance of a work. That either the work has been published. by the National Library or by educational. addresses and other works of the same nature. No.184. Decompilation. subject to such other limitations as may be provided in the Regulations. (Sec. sound recording or film. 49) (d) The reproduction and communication to the public of literary. (h) The use made of a work by or under the direction or control of the Government. or other communication to the public. or. including quotations from newspaper articles and periodicals in the form of press summaries: Provided. In determining whether the use made of a work in any particular case is fair use. Fair Use of a Copyrighted Work. P. (Sec. No.185. (n) (j) Public display of the original or a copy of the work not made by means of a film.2. and (k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.D. Designation of Society.D. social. 10(1). 49) (e) The inclusion of a work in a publication. scientific or artistic works as part of reports of current events by means of photography. research. 11. The fair use of a copyrighted work for criticism. universities or educational institutions: Provided. 30 .Section 183. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interests. 32. That the source and of the name of the author. and (d) The effect of the use upon the potential market for or value of the copyrighted work. slide. P. No. the factors to be considered shall include: (a) The purpose and character of the use. scholarship. television image or otherwise on screen or by means of any other device or process: Provided. That the source and the name of the author. by a club or institution for charitable or educational purpose only. (Sec. 49a) CHAPTER VIII LIMITATIONS ON COPYRIGHT Section 184. No. teaching including multiple copies for classroom use.The copyright owners or their heirs may designate a society of artists. if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided. .1. That the source is clearly indicated. . whose aim is not profit making. writers or composers to enforce their economic rights and moral rights on their behalf. are mentioned. That such recording must be deleted within a reasonable period after they were first broadcast: Provided. news reporting. cinematography or broadcasting to the extent necessary for the purpose. if done privately and free of charge or if made strictly for a charitable or religious institution or society. 184. scientific or religious topic. P. economic. Limitations on Copyright. lectures. universities. P.D. if appearing in the work.

(Sec. and. 13. (n) Section 190.188. Notwithstanding the provision of Subsection 177.190. any library or archive whose activities are not for profit may. when this is considered expedient. or 31 . 189. and (b) Archival purposes. Reproduction of Published Work. .2. Importation for Personal Purposes.2. by law. or other owner of copyright in. in the permanent collection of another similar library or archive. destroyed or rendered unusable. Notwithstanding the provisions of Subsection 177. The permission granted under Subsection 187. Notwithstanding the above provisions.189. . replace a copy. Notwithstanding the provision of Section 177. 187.1.2.Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original: Provided.185. 49a) Section 189. where the reproduction is made by a natural person exclusively for research and private study. That every library which.1. a computer program. Notwithstanding the provisions of Section 177. for which the computer program has been obtained. to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them.6.1. and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. without the authorization of the owner of copyright in the work. (n) Section 188. or a substantial part thereof. it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works. 189.2. (n) Section 187. the private reproduction of a published work in a single copy. by the lawful owner of that computer program: Provided. is entitled to receive copies of a printed work. shall be permitted. destroyed or rendered unusable and copies are not available with the publisher. the work under the following circumstances: (a) When copies of the work are not available in the Philippines and: (i) Not more than one (1) copy at one time is imported for strictly individual use only. the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of.2. unless the volume. . without the authorization of the author of copyright owner. make a single copy of the work by reprographic reproduction: (a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form. the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted. when special reasons so require. (b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them. The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors.1 shall not extend to the reproduction of: (a) A work of architecture in the form of building or other construction.D. (d) A computer program except as provided in Section 189. and subject to the provisions of Subsection 187. Reprographic Reproduction by Libraries. or to replace. for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost. This provision shall be without prejudice to the application of Section 185 whenever appropriate. a copy which has been lost. without the authorization of the author of.6.1. and (c) Where the making of such a copy is in order to preserve and.2. and to the extent.187. or of a musical work in graphic form by reprographic means. if necessary in the event that it is lost. Section 186. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section. P. shall be entitled. That the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style as the original of a building to which that copyright relates. (b) An entire book. . Reproduction of Computer Program. Work of Architecture. but subject to the limitation under the Subsection 185. That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose. to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. tome or part is out of stock: Provided. or other owner of copyright in. destroyed or rendered unusable. and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. 188.3. (c) A compilation of data and other materials. .

Contribution to Collective Work.An author may waive his rights mentioned in Section 193 by a written instrument. or 195. and 193.D. 35. arranging or adaptation of such work. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. . P. Notice of Copyright. (Sec. or otherwise to make use of his reputation with respect to any version or adaptation of his work which. No. the required copies or reproductions are not delivered and the fee is not paid. . be registered and deposited with it. Editing. 193. or the title of his work. 49) Section 195.3. . or free public library in the Philippines.D. mutilation or other modification of.3 of this Act. but no such waiver shall be valid where its effects is to permit another: 195. 36. charitable.The author of a work shall.D.1. To require that the authorship of the works be attributed to him. (Sec.In the absence of a contrary stipulation at the time an author licenses or permits another to use his work. would substantially tend to injure the literary or artistic reputation of another author. for publication. . P. (Sec.An author cannot be compelled to perform his contract to create a work or for the publication of his work already in existence.(ii) The importation is by authority of and for the use of the Philippine Government. To make any alterations of his work prior to. (Sec. 49) Section 197. Subject to the approval of the Secretary of Finance. 32 .D. P. Breach of Contract.D. 49) Section 196. 193. the necessary editing. No. No. P. or is for the encouragement of the fine arts.1.D. No. in particular.Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner. 26. 49) CHAPTER IX DEPOSIT AND NOTICE Section 191. he may be held liable for damages for breach of such contract. 34. or other derogatory action in relation to. within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit. and the year of its first publication. Waiver of Moral Rights.4. No. However. . (b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided. . No.After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172. within three (3) weeks. the right that his name. the year of such death. because of alterations therein. 49a) CHAPTER X MORAL RIGHTS Section 193. the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. (Sec.2 and 172. P. is not for sale but for the use only of any religious. there shall. university.D.2. No. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act. his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. and. Arranging and Adaptation of Work. or to withhold it from publication. 190. or for any state school. 190. or educational society or institution duly incorporated or registered. in copies produced after the creator's death. and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor's right of action. 37. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library. To object to any distortion. To use the name of the author. 49) Section 194. P.When an author contributes to a collective work. Scope of Moral Rights. by personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe.3. If. independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right. and in connection with the public use of his work. 49a) Section 192. . 27. Registration and Deposit with National Library and the Supreme Court Library.2. To use the name of the author with respect to a work he did not create. That such copies do not exceed three (3). his work which would be prejudicial to his honor or reputation. college. or (iii) The importation.2. the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. 172. for the purpose of completing the records of the National Library and the Supreme Court Library. P. be indicated in a prominent way on the copies. have the right: 193. consisting of not more than three (3) such copies or likenesses in any one invoice. (Sec. 30.1. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. (Sec. as far as practicable.

or of the representations thereof. susceptible of being made visible and. subsequent to the first disposition thereof by the author. . . or the legal entity. That copies are offered to the public in reasonable quality. P. "Publication of a fixed performance or a sound recording" means the offering of copies of the fixed performance or the sound recording to the public.D.In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer. the Director of the National Library. declaim. otherwise than by broadcasting.1. "Person" shall mean any individual. 33 .198.For the purpose of this Act. the following terms shall have the following meanings: 202. reproduced or communicated through a device. 49) Section 199. and in default of the heirs. "Broadcasting" means the transmission by wireless means for the public reception of sounds or of images or of representations thereof. 202. performers shall enjoy the following exclusive rights: 203. . 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. who or which takes the initiative and has the responsibility for the first fixation of the sounds of a performance or other sounds. This right shall exist during the lifetime of the author and for fifty (50) years after his death. No. etchings. "Fixation" means the embodiment of sounds. or society. and 202.The provisions of this Chapter shall not apply to prints. works of applied art. (Sec. from which they can be perceived.D. 49) Section 198. dancers. No. or the representation of sounds. 202. . In addition. Sale or Lease of Work.broadcast. (Sec. or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. interpret. For purposes of Section 209. (Sec. No. play in. with the consent of the right holder: Provided. Enforcement Remedies. Definitions. . 202. of sounds of a performance or the representations of sounds fixed in a sound recording. An "audiovisual work or fixation" is a work that consists of a series of related images which impart the impression of motion.Subject to the provisions of Section 212. 202. 49) Section 201. 49) CHAPTER XII RIGHTS OF PERFORMERS. and in default of the heirs. partnership. by any medium. 38. (Sec. The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. with or without accompanying sounds. Works Not Covered. musicians. or otherwise perform literary and artistic work.8. singers. shall belong to the government. 5. use in a motion picture. Section 203. Nor shall complete destruction of a work unconditionally transferred by the author be deemed to violate such rights. or representation of sound. dramatization. where accompanied by sounds. 31. and other persons who act. or mechanical or electrical reproduction in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used.9 "Communication to the public of a performance or a sound recording" means the transmission to the public.2.Violation of any of the rights conferred by this Chapter shall entitle those charged with their enforcement to the same rights and remedies available to a copyright owner.D. 49) CHAPTER XI RIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS Section 200.7.1. damages which may be availed of under the Civil Code may also be recovered.4. "Sound recording" means the fixation of the sounds of a performance or of other sounds. shall not be deemed to contravene the author's rights secured by this chapter.3. For purposes of this Section. such enforcement shall devolve upon either the author's heirs.D. 40. The Director of the National Library may prescribe reasonable fees to be charged for his services in the application of provisions of this Section. 39. sing. The rights of an author under this chapter shall last during the lifetime of the author and for fifty (50) years after his death and shall not be assignable or subject to license. corporation. As regards their performances. Scope of Performers' Rights. . "Broadcasting organization" shall include a natural person or a juridical entity duly authorized to engage in broadcasting. P. other than in the form of a fixation incorporated in a cinematographic or other audiovisual work. association. the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). (Sec. the right of authorizing: (a) The broadcasting and other communication to the public of their performance. 33. 202. susceptible of being made audible. P. 198. "Performers" are actors. P D No. Term of Moral Rights. P.2. Any damage recovered after the creator's death shall be held in trust for and remitted to his heirs. engravings. 202. No. and (b) The fixation of their unfixed performance. "Producer of a sound recording" means the person. In default of such person or persons. "communication to the public" includes making the sounds or representations of sounds fixed in a sound recording audible to the public. 202.1.6. PRODUCERS OF SOUNDS RECORDINGS AND BROADCASTING ORGANIZATIONS Section 202.

No. 43.Sections 184 and 185 shall apply mutatis mutandis to the producer of sound recordings. (Sec. the provisions of Sections 203 shall have no further application.203.2. The right to authorize the first public distribution of the original and copies of their sound recordings through sale or rental or other forms of transferring ownership. 49) CHAPTER XV LIMITATIONS ON PROTECTION Section 212. The right to authorize the direct or indirect reproduction of their sound recordings. 208. (Sec.D. as regards his live aural performances or performances fixed in sound recordings. 49a) CHAPTER XIV BROADCASTING ORGANIZATIONS Section 211.4. .2. shall. No. Limitation of Right. 52. P.1 shall be maintained and exercised fifty (50) years after his death. and to object to any distortion. 42. .If a sound recording published for commercial purposes. broadcasting organizations shall enjoy the exclusive right to carry out. producers of sound recordings shall enjoy the following exclusive rights: 208. The right to authorize the commercial rental to the public of the original and copies of their sound recordings. in any manner or form. 47. have the right to claim to be identified as the performer of his performances. the government. No. . except where the omission is dictated by the manner of the use of the performance. 49a) Section 204. 205. and 203. (Sec. the right of authorizing the first public distribution of the original and copies of their performance fixed in the sound recording through sale or rental or other forms of transfer of ownership. (Sec. P. the performer shall be entitled to an additional remuneration equivalent to at least five percent (5%) of the original compensation he or she received for the first communication or broadcast.Subject to the provisions of Section 212. . in every communication to the public or broadcast of a performance subsequent to the first communication or broadcast thereof by the broadcasting organization.D. Scope of Right. in the absence of any agreement shall share equally.D. Limitations on Rights.3. including the making of films or the use of video tape. P. . Independently of a performer's economic rights. who. 204. No. in any manner or form. The use of such records for fresh transmissions or for fresh recording. or pursuant to the authorization by the performer. . Limitation on Right. Contract Terms. The right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings. once the performer has authorized the broadcasting or fixation of his performance. or a reproduction of such sound recording. the placing of these reproductions in the market and the right of rental or lending.3. 48. and in default of heirs.1. mutilation or other modification of his performances that would be prejudicial to his reputation. (Sec. . the performer. and 211. The right of authorizing the making available to the public of their performances fixed in sound recordings. P. of their broadcasts for the purpose of communication to the public of television broadcasts of the same. 49) Section 205.3.Subject to the provisions of Section 212. (Sec.D.2. even after distribution of them by. Subject to the provisions of Section 206.D. Communication to the Public.204.1.1. Scope of Right.Sections 203. The rebroadcasting of their broadcasts. The recording in any manner.2. No. (n) Section 206. 49a) Section 209.5. The rights granted to a performer in accordance with Subsection 203. Subject to the provisions of Section 206. and the producer of the sound recording shall be paid by the user to both the performers and the producer. and 208. 203. even after distribution by them by or pursuant to authorization by the producer. Additional Remuneration for Subsequent Communications or Broadcasts. authorize or prevent any of the following acts: 211. . (n) Section 207. The provisions of Section 184 and Section 185 shall apply mutatis mutandis to performers. (n) CHAPTER XIII PRODUCERS OF SOUND RECORDINGS Section 208. by wire or wireless means. 211. is used directly for broadcasting or for other communication to the public. P. 46.205. No. 203. by his heirs.Nothing in this Chapter shall be construed to deprive performers of the right to agree by contracts on terms and conditions more favorable for them in respect of any use of their performance. 49a) Section 210. The right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings.Unless otherwise provided in the contract. in such a way that members of the public may access them from a place and time individually chosen by them. or is publicly performed with the intention of making and enhancing profit.1.2. P. a single equitable remuneration for the performer or performers. where protection is claimed. . 208 and 209 shall not apply where the acts referred to in those Sections are related to: 34 . Moral Rights of Performers.D.

(c) Deliver under oath. (Sec. 212. but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them. P.1.D. the copyright shall be protected for fifty (50) years from the date on which the work was first lawfully published: Provided.D. (Sec.4. which the court may deem proper.3. Using short excerpts for reporting current events. In case of works of applied art the protection shall be for a period of twenty-five (25) years from the date of making. This rule also applies to posthumous works. 24(C). 24(C).216. upon such terms and conditions as the court may prescribe. the provisions of Subsections 213. the term shall be fifty (50) years from date of publication and. 55. P. 25. P. The court may also order the defendant to desist from an infringement. 49a) CHAPTER XVII INFRINGEMENT Section 216.2 to 213. 212.213. No. 49a) CHAPTER XVI TERM OF PROTECTION Section 213. . No. P.D. fifty (50) years from the end of the year in which the recording took place. No. further.3. Calculation of Term. from the date of making. in lieu of actual damages and profits. (Sec. all articles and their packaging alleged to infringe a copyright and implements for making them. 49a) 213.D. The rights granted to performers and producers of sound recordings under this law shall expire: (a) For performances not incorporated in recordings. . fifty (50) years from the end of the year in which the performance took place. In case of audio-visual works including those produced by process analogous to photography or any process for making audio-visual recordings.1. or other means for making such infringing copies as the court may order. 21. if unpublished. 49) 213.D. 49a) 213. among others.4. as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement. . P. (Sec. including the payment of moral and exemplary damages. 44. the copyright in works under Sections 172 and 173 shall be protected during the life of the author and for fifty (50) years after his death. (Sec. 35 . (e) Such other terms and conditions. sales invoices and other documents evidencing sales. No. as the case may be: Provided. and 212. and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims. wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case. immediately after customs clearance of such goods.2. P. In case of works of joint authorship. (b) Pay to the copyright proprietor or his assigns or heirs such actual damages.2 shall apply.5. The use by a natural person exclusively for his own personal purposes.D. . In case of broadcasts.212. including legal costs and other expenses. 49) 213. or. (Sec.D. 215. Remedies for Infringement. 24(B).1. the term shall be twenty (20) years from the date the broadcast took place. Any person infringing a right protected under this law shall be liable: (a) To an injunction restraining such infringement. the author's identity is revealed or is no longer in doubt. if unpublished. P. No. In case of photographic works. 49) Section 215. as well as all plates. The extended term shall be applied only to old works with subsisting protection under the prior law. P.D. Fair use of the broadcast subject to the conditions under Section 185. Term of Protection. In case of anonymous or pseudonymous works. (Sec. No. molds. first sentence. 49a) 213.215. Term of Protection for Performers.5. before the expiration of the said period. (Sec. to prevent the entry into the channels of commerce of imported goods that involve an infringement. (Sec. (d) Deliver under oath for destruction without any compensation all infringing copies or devices. and (b) For sound or image and sound recordings and for performances incorporated therein. fifty (50) years from the making.The term of protection subsequent to the death of the author provided in the preceding Section shall run from the date of his death or of publication. such damages which to the court shall appear to be just and shall not be regarded as penalty.6.1. for impounding during the pendency of the action. 21. the protection shall be for fifty (50) years from publication of the work and.2.1. Subject to the provisions of Subsections 213. P. 23. No. Producers and Broadcasting Organizations. That where. That such works if not published before shall be protected for fifty (50) years counted from the making of the work. No. 49a) Section 214.2. the economic rights shall be protected during the life of the last surviving author and for fifty (50) years after his death. and 213. Use solely for the purpose of teaching or for scientific research.D. second sentence.

.2. 219. or (c) Trade exhibit of the article in public. where the pseudonym leaves no doubt as to the identity of the author.216.000) for the first offense.000) for the third and subsequent offenses. 217. 36 . and (b) Where the subsistence of the copyright is established. copyright subsisted in the work or other subject matter.217. In determining the number of years of imprisonment and the amount of fine. (n) Section 219. 49a) Section 217. .A statement concerning a work.D. or hire. shall be construed as true until the contrary is proved except: 220.219. (c) Where the defendant. The natural person whose name is indicated on a work in the usual manner as the author shall.218. to be an infringing copy of the work for the purpose of: (a) Selling. No. . be presumed to be the author of the work.500.3. Criminal Penalties. or the ownership of copyright in such work or subject matter. be presumed to be the maker of said work. (n) Section 220. The person or body corporate whose name appears on a audio-visual work in the usual manner shall. shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. Presumption of Authorship.1.2. P. the court may direct that any costs to the defendant in respect of the action shall not be allowed by him and that any costs occasioned by the defendant to other parties shall be paid by him to such other parties.D. (b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos (P150. letting for hire. the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement. or by way of trade offering or exposing for sale.1.1. puts in issue the questions of whether copyright subsists in a work or other subject matter to which the action relates. (Sec. shall be admitted in evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters therein stated until the contrary is proved.000) to One million five hundred thousand pesos (P1. (c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from five hundred thousand pesos (P500. Affidavit Evidence. (b) He or the person named therein is the owner of the copyright. 49a) Section 218. . thereby occasioning unnecessary costs or delay in the proceedings. 218. No.2. recorded in an international register in accordance with an international treaty to which the Philippines is or may become a party. and the court before which such affidavit is produced shall assume that the affidavit was made by or on behalf of the owner of the copyright. (b) Distributing the article for purpose of trade. without good faith.1.2. subsidiary imprisonment in cases of insolvency. and (c) The copy of the work or other subject matter annexed thereto is a true copy thereof. (d) In all cases. In an action under this Chapter. In an action under this Chapter: (a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter. 28. the article. Any person who at the time when copyright subsists in a work has in his possession an article which he knows. In an infringement action. (Sec. Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by: (a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50. in the absence of proof to the contrary. 29.000) for the second offense. an affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that: (a) At the time specified therein. in the absence of proof to the contrary. the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership. 217. This provision shall be applicable even if the name is a pseudonym.000) to Five hundred thousand pesos (P500.000) to One hundred fifty thousand pesos (P150. Where the statement cannot be valid under this Act or any other law concerning intellectual property. the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. P. or ought to know. or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work. International Registration of Works.

and (b) Broadcasts transmitted from transmitters situated in the Philippines.1. or have their habitual residence in.1. 62. 61. Points of Attachment for Works under Sections 172 and 173. The provisions of this Act shall also apply to works that are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. (n) Section 223. . are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. . P. P. (Sec. the Philippines. and 223.The provisions of this Act on the protection of performers shall apply to: 222.2. Copyright Division.2. P.The Copyright Section of the National Library shall be classified as a Division upon the effectivity of this Act. (Sec. Performers who are not nationals of the Philippines but whose performances: (a) Take place in the Philippines.1. 49) Section 229. . Points of Attachment for Sound Recordings. Points of Attachment for Performers. (b) Audio-visual works the producer of which has his headquarters or habitual residence in the Philippines. and to producers of sound recordings and broadcasting organizations which. 58. (n) Section 222. .Without prejudice to the provisions of Subsection 7.1(c). 222. (Sec.2. P. The provisions of this Act shall also apply to performers who.All copies deposited and instruments in writing filed with the National Library and the Supreme Court Library in accordance with the provisions of this Act shall become the property of the Government. (n) CHAPTER XIX INSTITUTION OF ACTIONS Section 225. 221. P. .The section or division of the National Library and the Supreme Court Library charged with receiving copies and instruments deposited and with keeping records required under this Act and everything in it shall be opened to public inspection.220. 49) Section 228.224. (n) Section 224. . Points of Attachment for Broadcasts. such fees as may be promulgated by it from time to time subject to the approval of the Department Head. No. or (c) Which has not been fixed in sound recording but are carried by broadcast qualifying for protection under this Act.D. Sound recordings the producers of which are nationals of the Philippines.D. Where the statement is contradicted by another statement recorded in the international register.2.D. No. Jurisdiction. The protection afforded by this Act to copyrightable works under Sections 172 and 173 shall apply to: (a) Works of authors who are nationals of. for the discharge of its services under this Act. Public Records. Fees.D. (c) Works of architecture erected in the Philippines or other artistic works incorporated in a building or other structure located in the Philippines. Damages. (d) Works first published in the Philippines. 57.No damages may be recovered under this Act after four (4) years from the time the cause of action arose. Sound recordings that were first published in the Philippines. (Sec.221. and (e) Works first published in another country but also published in the Philippines within thirty days. No. (Sec. 49a) 37 . irrespective of the nationality or residence of the authors. . (n) CHAPTER XVIII SCOPE OF APPLICATION Section 221. The National Library shall have the power to collect. or (b) Are incorporated in sound recordings that are protected under this Act. 49) CHAPTER XX MISCELLANEOUS PROVISIONS Section 227. No. Ownership of Deposit and Instruments. The provisions of this Act on the protection of broadcasts shall apply to: (a) Broadcasts of broadcasting organizations the headquarters of which are situated in the Philippines. The Director of the National Library is empowered to issue such safeguards and regulations as may be necessary to implement this Section and other provisions of this Act. Performers who are nationals of the Philippines.D. 224. 49a) Section 226.The provisions of this Act on the protection of sound recordings shall apply to: 223.2. . actions under this Act shall be cognizable by the courts with appropriate jurisdiction under existing law.1. 60. .

Appeals from decisions of regular courts shall be governed by the Rules of Court. as amended. . and Technology Transfer. Unless restrained by a higher court. All Acts and parts of Acts inconsistent herewith. Trademarks and Technology Transfer at the effective date of this Act may be amended. Personnel not absorbed or transferred to the Office shall enjoy the retirement benefits granted under existing law.In all inter partes proceedings in the Office under this Act.3. (n) Section 233.The Philippines shall by proper compliance with the requirements set forth under the Appendix of the Berne Convention (Paris Act. (n) Section 234. . (n) Section 237. within Philippine jurisdiction. All applications for registration of marks or trade names pending in the Bureau of Patents. Trademarks and Technology Transfer shall be proceeded with and patents thereon granted in accordance with the Acts under which said applications were filed. fines. (n) Section 238.233. 232. (Sec. utility models. and Articles 188 and 189 of the Revised Penal Code. as amended. estoppel. shall be proceeded with in accordance with the provisions of this Act. Appeals. R. including Presidential Decree No. Presidential Decree No. Trademarks and Technology Transfer. All applications for patents pending in the Bureau of Patents. 6758.1 and 234 of this Act. the equitable principles of laches. Marks registered under Republic Act No. the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 9-A. 49. and said Acts are hereby continued in force to this extent for this purpose only. The provisions of this Act shall apply to works in which copyright protection obtained prior to the effectivity of this Act is subsisting: Provided. royalties and other charges collected by the Bureau for the calendar year pursuant to Sections 14. and Technology Transfer under the current General Appropriations Act and the fees.2.1. penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country. Applications Pending on Effective Date of Act. upon renewal shall be reclassified in accordance with the International Classification. the prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed.1. Exemption from the Salary Standardization Law and the Attrition Law. 1971) avail itself of the special provisions regarding developing countries. The Office shall be organized within one (1) year after the approval of this Act. 166. restriction. properties. Thereafter such sums as may be necessary for its continued implementations shall be included in the annual General Appropriations Act.Any condition.A. shall reciprocally be enforceable upon nationals of said country. 166 shall remain in force but shall be deemed to have been granted under this Act and shall be due for renewal within the period provided for under this Act and. marks and works. Reverse Reciprocity of Foreign Laws.The funds needed to carry out the provisions of this Act shall be charged to the appropriations of the Bureau of Patents. . (n) Section 239.2.2. Preservation of Existing Rights. Notification on Berne Appendix. No. Trademarks. 239.1. (n) 38 . acquired in good faith prior to the effective date of this Act. . more particularly Republic Act No. they shall be paid the equivalent of one month basic salary for every year of service. That applications for utility models or industrial designs pending at the effective date of this Act.235. royalties and other charges collected for the calendar year. Repeals. notwithstanding the foregoing general repeal thereof: Provided. or the equivalent nearest fractions thereof favorable to them on the basis of the highest salary received. 239. . 233. Trademarks. 285. 235. Unless expressly provided in this Act or other statutes. 166 shall remain in force but shall no longer be subject to renewal. fines. notwithstanding the foregoing general repeal thereof (n) Section 236. .2. and said Acts are hereby continued to be enforced. All unexpended funds and fees. The Office shall institute its own compensation structure: Provided. . diminution.PART V FINAL PROVISIONS Section 230. If such amendments are not made. It shall not be subject to the provisions of Republic Act No. equipment and records of the Bureau of Patents.The Bureau of Patents. That the application of this Act shall not result in the diminution of such protection.232. appeals from decisions of administrative officials shall be provided in the Regulations. Appropriations. . . Republic Act No. 7430. (n) Section 232. to this extent and for this purpose only. Equitable Principles to Govern Proceedings. . Organization of the Office. 165. may be considered and applied. Abolition of the Bureau of Patents. Trade names and marks registered in the Supplemental Register under Republic Act No. as amended.1. including provisions for licenses grantable by competent authority under the Appendix. requirement. and Technology Transfer under the Department of Trade and Industry is hereby abolished. and acquiescence where applicable. limitation.(n) Section 235. 165) Section 231. otherwise. unless the applicants elect to prosecute said applications in accordance with the Acts under which they were filed. Trademarks. That the Office shall make its own system conform as closely as possible with the principles provided for under Republic Act No. The prosecution of such applications so amended and the grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act.Nothing herein shall adversely affect the rights on the enforcement of rights in patents. and such personnel as may be necessary are hereby transferred to the Office. if practicable to bring them under the provisions of this Act. industrial designs. are hereby repealed.239.

the remainder of the Act shall not be affected thereby.This Act shall take effect on 1 January 1998. . 1997 39 . Effectivity. .Section 240.If any provision of this Act or the application of such provision to any circumstances is held invalid. (n) Approved: June 6. (n) Section 241. Separability.

New York. vs. form. and pronunciation. we feel safe in making the statement that any other conclusion would result in "appellant having practically a monopoly"7 of the word "tussin" in a trademark. ascorbic acid (Vitamin C) used in the treatment of cough". Inc. Each label plainly shows the source of the medicine: petitioner's at the foot bears "Etepha Ltd. it may properly become the subject of a trademark "by combination with another word or phrase".5 And appropriately to be considered now is the fact that. Hence this appeal..R. Sycip. indeed. bottom and right edges of petitioner's label are indications of the use: "for bronchial catarrh — whopping-cough — coughs and asthma". when applied to or used in connection with the goods . color. and to cause him to purchase the one supposing it to be the other. J. that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill. It is accordingly barred from registration as trademark. Taeschner's". McClure. Manalo.. the first with prefix "Per" and the second with Prefix "A". Respondent's label underscores the trademark Atussin in bold. The objects of a trademark are "to point out distinctly the origin or ownership of the articles to which it is affixed. USA" at the bottoms. 12 We take a casual look at the two labels — without spelling out the details — bearing in mind the easy-to-remember earmarks thereof. Salazar. That the word "tussin" figures as a component of both trademarks is nothing to wonder at. another trademark. shape. sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic. Inspection should be undertaken from the viewpoint of a prospective buyer. Pertussin is printed diagonally upwards and across in semiscript style with flourishes and with only the first letter "P" capitalized. respondent Westmont Pharmaceuticals.: To the question: May trademark ATUSSIN be registered. giving such attention as a purchaser usually gives.1 Petitioner. and on top. G."4 2. 10 Some such factors as "sound. 6089. style. and the setting in which the words appear" may be considered. of words used. had been previously registered in the Patent Office? — the Director of Patents answered affirmatively. Luna and Associates.8 While "tussin" by itself cannot thus be used exclusively to identify one's goods. The Director of Patents aptly observes that it is "the common practice in the drug and pharmaceutical industries to 'fabricate' marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes". Respondent's for its part briefly represents what its produce actually is . L-20635 March 31. to cause confusion or mistake or to deceive purchasers". appearance. bronchodilator sedative. SANCHEZ. it is generic. respondents. INC.G. Etepha. objected. With jurisprudence holding the line. and on the lower left side the word "Westmont" upon a white diamond shaped enclosure and in red ink — a color different from that of the words above and below it.1äwphï1. 1957) used on a preparation for the treatment of coughs.. trademark infringement is a form of unfair competition. spelling.3 And. "Apothecary E.. concededly.9 And this union of words is reflected in petitioner's Pertussin and respondent's Atussin. respondent's projects "Westmont Pharmaceuticals. of the applicant. 1959. Salas and Gonzalez.. block letters horizontally written. size or format. A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. In petitioner's.6 "Tussin" is merely descriptive. and to prevent fraud and imposition. issued on September 25. ETEPHA.ñët 3. 1959. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS. the meaning. 1. or such a resemblance to the original as to deceive an 40 . it furnishes to the buyer no indication of the origin of the goods. Inc. petitioner.a "cough syrup". for respondent. The trademark is used exclusively in the Philippines since January 21. ideas connoted by marks. A. 1966 ordinary purchaser. Schaan Fl". The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed."2 Our overall task then is to ascertain whether or not Atussin so resembles Pertussin "as to be likely.. No. The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons. Printed prominently along the left. it is open for appropriation by anyone. 11 For. on the other hand. a Liechtenstin (principality) corporation. a New York corporation.Republic of the Philippines SUPREME COURT Manila EN BANC G. A. Petitioner claims that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. given the fact that PERTUSSIN. On April 23. we are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill. for petitioner. the "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough.

6. then the buyer must be one throughly familiar with what he intends to get. unwary. contents. 13 On this point the following culled from a recent decision of the United States Court of Customs and Patent Appeals (June 15. the application of these rules in any given situation necessarily reflects a matter of individual judgment largely predicated on opinion. the part that comes first is the most pronounced. e and r. fixed legal rules exist — if not in harmony. For the reasons given. however. In the solution of a trademark infringement problem. in the final analysis. arrangement of words thereon. The horizontal plain. he reads the doctor's prescription. whether correct or incorrect. shapes and general appearance. For a person who purchases with open eyes is hardly the man to be deceived. regard too should be given to the class of persons who buy the particular product and the circumstances ordinarily attendant to its acquisition. An expositor of the applicable rule here is the decision in the Syrocol-Cheracol controversy. these words are presented to the public in different styles of writing and methods of design. Petitioner's and respondent's products are to be dispensed upon medical prescription. So ordered. sizes. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other. He is not of the incautious. the ruling is that trademark Syrocol (a cough medicine preparation) is not confusedly similar to trademark Cheracol (also a cough medicine preparation). appearance. We now consider exclusively the two words — Pertussin and Atussin — as they appear on the respective labels. and can be no disagreement with the rule that the purchaser is confused. if at all. 41 . the pharmacist or druggist verifies the medicine sold. 15 There. and that is not uncommon in names given drug compounds". And this. In which case. An intending buyer must have to go first to a licensed doctor of medicine. There is. and the "only similarity is in the last syllable. As we take up Pertussin and Atussin once again. he checks to find out whether it conforms to the medical prescription. he examines the product sold to him. The common trade channel is the pharmacy or the drugstore. are unlike articles of everyday use such as candies. There is not much phonetic similarity between the two. Appeals to the ear are disimilar. whereas. we cannot escape notice of the fact that the two words do not sound alike — when pronounced. the more improbable it will be to palm off one for the other.The two labels are entirely different in colors. by the marks as a whole. Reason: the two words "do not look or sound enough alike to justify a holding of trademark infringement". 16 The medicinal preparation clothed with the trademarks in question. or meaning are such as would lead the purchasing public into believing that the products to which the marks are applied emanated from the same source. anywhere. The Solicitor General well-observed that in Pertussin the pronunciation of the prefix "Per". When this happens. The respective labels say so. 4. unobservant or unsuspecting type. however. he knows what he is to buy. he receives instructions as to what to purchase. milk. anytime. certainly in abundance — but. because in a word combination. in Atussin the whole starts with the single letter A added to suffix "tussin". not even by persons unfamiliar with the two trademarks. else he would not have the temerity to ask for a medicine — specifically needed to cure a given ailment. In testing this issue. only if their overall presentations in any of the particulars of sound. We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription. includes a combination of three letters P. soft drinks and the like which may be freely obtained by anyone. the appealed decision of the respondent Director of Patents — giving due course to the application for the registration of trademark ATTUSIN is hereby affirmed. The margin of error in the acquisition of one for the other is quite remote. 1956) is persuasive: 14 Confusion is likely between trademarks. Costa against petitioner. Similarly. As previously adverted to. 5. block letters of Atussin and the diagonally and artistically upward writing of Pertussin leave distinct visual impressions. ice cream. One look is enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to prosper.

Petitioner Sehwani. 2003. for violation of intellectual property rights.Logo. desist from claiming ownership of October 15.A. [7] Hence. 2003-02 finding that respondent has the legal capacity to sue and that it is the owner of the internationally well-known trademarks. This petition for review assails the Decision [1] of the Court of Appeals in CA-G. Inc.) No. license to use for a period of five years the trademark “IN-N-OUT BURGER” in its restaurant in Pasig City. 8293.: the mark “IN-N-OUT” and to voluntarily cancel its Trademark Registration No. Inc. 1997. Moreover. Promulgated: trademarks were registered in the United States as well as in other parts of the world. respondent discovered that petitioner Sehwani. J.[8] Respondent IN-N-OUT Burger. These tradename and THIRD DIVISION SEHWANI. Respondent thus demanded that petitioner Sehwani. 2006 denying the motion for reconsideration. Petitioner. No. J. (Chairperson).S.” In the course of its application... Inc. Nachura. respondent filed a complaint for violation of intellectual property rights. 2007 x ---------------------------------------------------------------------------------------. . INC. filed before the Bureau of Legal Affairs of the IPO (BLA-IPO). SP No. JJ. which affirmed the December 7. 14-20040004 finding that petitioners’ appeal was filed out of time. Austria-Martinez. In their answer with counterclaim.R. INC.x DECISION YNARES-SANTIAGO.” “IN-N-OUT Burger & Arrow Design” and “IN-N-OUT Burger 42 . U. respondent applied with the IPO for the registration of its trademark “IN-N-OUT Burger & Arrow Design” and servicemark “IN-N-OUT. [4] On December 22. Bureau Director Estrellita Beltran-Abelardo rendered Decision No. Inc. [6] IN-N-OUT BURGER. in Appeal No. Inc. 88004 dated October 21. 56666 for the mark “IN N OUT” (THE INSIDE OF THE LETTER “O” FORMED LIKE A STAR) on December 17. INCORPORATED and/or BENITA’S FRITES. 56666. thus: Respondent alleged that it is the owner of the tradename “IN-N-OUT” and trademarks “IN-N-OUT.. however refused to accede to the demand and even entered into a Licensing Agreement granting its co-petitioner Benita’s Frites. Respondent. 2004 Order [2] of Director General Emma C. 171053 Present: Ynares-Santiago. an administrative complaint against petitioners Sehwani. Petitioner Sehwani. attorney’s fees and damages with prayer for the issuance of a restraining order or writ of preliminary injunction. and Benita’s Frites. it enjoys the presumption that the same was validly acquired and that it has the exclusive right to use the mark.A. she held that petitioners are not guilty of unfair competition. Francisco of the Intellectual Property Office (IPO). Inc. however. otherwise known as The Intellectual Property Code of the Philippines. a foreign corporation organized under the laws of California.[5] On June 2. Chico-Nazario. and not doing business in the Philippines. respondent failed to show the existence of any of the grounds for cancellation thereof under Section 151 of Republic Act (R.versus G. petitioners argued that other than the bare allegation of fraud in the registration of the mark. petitioners alleged that respondent lack the legal capacity to sue because it was not doing business in thePhilippines and that it has no cause of action because its mark is not registered or used in the Philippines. had obtained Trademark Registration No.R. 1993without its authority. Inc. 2005.” which are used in its business since 1948 up to the present. Inc. and Reyes. also claimed that as the registered owner of the “IN-N-OUT” mark.. as well as the Resolution [3] dated January 12.

thus. and that the action is barred by laches. that no ground for cancellation was duly proven. 14-2004-0004.Meanwhile. SO ORDERED. however. Complainant is the owner of the said mark. had rendered a Decision in Appeal 10-05-01 finding petitioners guilty of unfair competition. 43 . 2004[12] and Resolution No. and Benita’s Frites are hereby ordered to permanently cease and desist from using the mark “IN-N-OUT” and “IN-N-OUT BURGER LOGO” on its goods and in its business. [14] in Appeal No. Respondents Sehwani. NO COSTS. but a procedural remedy of statutory origin. its requirements must be strictly complied with.” AND (2) ORDERING PETITIONERS TO PERMANENTLY CEASE AND DESIST FROM USING THE SUBJECT MARK ON ITS GOODS AND BUSINESS ARE CONTRARY TO LAW AND/OR NOT SUPPORTED BY EVIDENCE. Consequently. the MOTION TO ADMIT COPY OF DECISION NO. hence. hence. that no ground for cancellation was duly proven. respondent filed a Manifestation with the Court of Appeals that With the foregoing disquisition. was received only on November 3. 200418 datedOctober 28. dismissing petitioners’ appeal for being filed out of time. 2005-05 dated April 25.[18] Petitioners filed a motion for reconsideration [10] insisting that respondent has no legal capacity to sue. considering that as earlier discussed. by prescription. SUBSTANTIAL JUSTICE WOULD BE BETTER SERVED IF THE COURT OF APPEALS AND THE IPO DIRECTOR GENERAL ENTERTAINED PETITIONERS APPEAL AS THE BUREAU OF LEGAL AFFAIR’S DECISION AND RESOLUTION (1) CANCELING PETITIONER SEHWANI’S CERTIFICATE OF REGISTRATION FOR THE MARK “IN-N-OUT. Respondents are also ordered to permanently cease and desist from using the mark Double-Double. Certificate of Registration No. 2005. 2004. 2004. Both. petitioners filed a petition before the Court of Appeals which was dismissed for lack of merit.[19] The petition has no merit. [16] non-legal staff assisting him. Petitioners contend that the Court of Appeals erred when it dismissed the petition on On separate dates. thus: memorandum with the Office of the Director General. denying the motion for reconsideration. and that the complaint is barred by laches. 2003 Decision and the October 28. 56666 dated 17 December 1993 for the mark “IN-N-OUT (the inside of the letter “O” formed like a star) issued in favor of Sehwani. they have until November 18. 2004. 2004within which to file an appeal WHEREFORE. [9] on December 23. besides.[17] Petitioners’ motion for reconsideration was denied. The appeal being filed out of time. They claim that they should not be prejudiced by their counsel’s mistake in computing the period to appeal. It held that the right to appeal is not a natural right or a part of due process. Director General Adrian S. They also reiterate their position that respondent has no legal capacity to sue. Cristobal. [15] rendered an Order dated December 7. premises considered. Inc. while respondent moved for partial reconsideration [11] assailing the finding that petitioners are not guilty of unfair competition. 2004 Orders of Bureau Director Beltran-Abelardo are now final and executory. the same is understandable and excusable as their counsel is a solo practitioner with only a handful of Aggrieved. Jr. The instant appeal. were denied in Resolution No. the parties appealed to the Office of the Director General which mere technicality which resulted in a miscarriage of justice and deprivation of intellectual property rights. the mark has been approved by this Office for publication and that as shown by the evidence. 2003-02 is hereby granted. Incorporated is hereby CANCELLED. They claim that their counsel believed in good faith that Resolution No. the December 22. With regard to mark “Double-Double”. 2005. 2004-18 dated October 28. the instant petition raising the following issues: THE COURT OF APPEALS COMMITTED GRAVE ERROR IN UPHOLDING THE IPO DIRECTOR GENERAL’S DISMISSAL OF APPEAL NO. 14-2004-0004 ON A MERE TECHNICALITY. [13] respectively. however. is hereby DISMISSED for having been filed out of time. if not.

Action on the Appeal Memorandum – The Director General shall: xxxx appears on the records of the BLA-IPO.The Court has invariably ruled that perfection of an appeal within the statutory or reglementary period is not only mandatory but also jurisdictional. within the same period. 15 November 2004. as affirmed by the Court of Appeals. 2004. in disposing of the instant case. and has become an all too familiar and ready excuse on the part of lawyers remiss in their bounden duty to comply with the mandatory periods. petitioners’ belated filing of an appeal memorandum rendered the December 22. that is.[23] This Court has always reminded the members of the legal profession that every case they handle deserves full and undivided attention. much less to entertain the appeal. If he fails to do so. Per records of the Bureau of Legal Affairs. negligence and mistakes. c) Dismiss the appeal for being patently without merit. the appellant or appellants has/have the balance of the period prescribed above within which to file the appeal. Thus. s. 12. said parties had a balance of 15 days from their receipt of the Resolution denying said motion within which to file the APPEAL MEMORANDUM. 44 . a motion for reconsideration is filed with the Bureau Director or an appeal to the Director General has been perfected. Since said date fell on a Saturday. in case the motion for reconsideration is denied. 2004 on November 3. [20] True. [25] This responsibility is imposed on all lawyers notwithstanding the presence or absence of staff assisting them in the discharge thereof. failure to do so renders the questioned decision/final order final and executory. that only one (1) motion for reconsideration of the decision or order of the Bureau Director shall be allowed. skill and competence. However. provided that the dismissal shall be outright if the appeal is not filed within the prescribed period or for failure of the appellant to pay the required fee within the period of appeal. The inadvertent computation of the period for one to file a pleading is inexcusable. diligence.[24] A lawyer has the responsibility of monitoring and keeping track of the period of time left to file pleadings and to see to it that said pleadings are filed before the lapse of the period. Hence the deadline for the filing of the APPEAL MEMORANDUM was on 13 November 2004.[22] (Underscoring supplied) Petitioners’ allegation that they honestly believed that they received Resolution No. this rule had been relaxed but only in highly meritorious cases to prevent a grave injustice from being done. Considering that the Respondent-Appellants received a copy of the appealed Decision on 15 January 2004 and filed their MOTION FOR RECONSIDERATION on 30 January 2004. as correctly held by the Court of Appeals. 2002) states that: Section 2. 2004and not on October 29. Appeal to the Director General. his client is bound by his conduct. the appeal should have been filed on the ensuing working day. 2003Decision and the October 28. is self-serving and unbelievable.[21] Such does not obtain in this case. the Respondents-Appellants received a copy of the Resolution on 29 October 2004. Section 5(c) of the Uniform Rules on Appeal provides: Section 5. we shall resolve the principal issues raised by petitioners. regardless of its importance. 2004 Order of Bureau Director Beltran-Abelardo final and executory. the Court could very well write finis to this petition. – The decisions or final orders of the Bureau Director shall become final and executory thirty (30) days after receipt of a copy thereof by the appellant or appellants unless. Section 2 of the Uniform Rules on Appeal (Office Order no. At this point. Provided. On this score. and. correctly held: [T]hat the appeal must be dismissed outright. 2004-18 dated October 28. as what Director General Francisco. and deprives the appellate court of jurisdiction to alter the judgment or final order.

are generally accorded not only respect. of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. provides: SECTION 160. or the courts of the country in question if the issue comes before a court. complainant presented its United States trademark registrations. to refuse or to cancel the registration. respondent has the legal capacity to sue for the protection of its trademarks.A. is a selfexecuting provision and does not require legislative enactment to give it effect in the member country. or a translation. 1. like the IPO. International Conventions and Reciprocity.[27] The question of whether or not respondent’s trademarks are considered “wellknown” is factual in nature. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention. 1988 for the shirts (Exhibit “L”). 1989 for milk and french-fried potatoes for consumption on or off the 45 .456 for the mark “IN-N-OUT Burger and Arrow Design” under Class 29. liable to create confusion.Contrary to petitioners’ argument. Article 6bis which governs the protection of well-known trademarks. The essential requirement under this Section 3 thereof provides: SECTION 3. ex officio if their legislation so permits. treaty or reciprocal law. namely: United States Trademark Registration No.[28] Director Beltran-Abelardo found that: Arguing mainly that it is the owner of an internationally wellknown mark. Section 160 in relation to Section 3 of R. Article 8 A tradename shall be protected in all countries of the Union without the obligation of filing or registration whether or not it forms part of a trademark. — Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition.” This competent authority would be either the registering authority if it has the power to decide this.[26] The Articles read: Article 6bis (1) The countries of the Union undertake. 8293. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. treaty or agreement relating to intellectual property rights or the repression of unfair competition. United States Trademark Registration No. to which the Philippines is also a party. but.689 for the mark “IN-N-OUT Burger and Arrow Design” under class 25 dated November 29.514. 1. wherein both the United States and the Philippines are signatories. after its ratification according to the public law of each state and the order for its execution. The power to determine whether a trademark is well-known lies in the “competent authority of the country of registration or use. at times. 30. which have acquired expertise because their jurisdiction is confined to specific matters. 32 and 42 dated March 7. x x x x. infringement. No. cancellation. or extends reciprocal rights to nationals of the Philippines by law. whether or not it is licensed to do business in the Philippines under existing laws. albeit it is not doing business in the Philippines. unfair competition. — Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention. Article is that the trademark to be protected must be "well-known" in the country where protection is sought. shall be entitled to benefits to the extent necessary to give effect to any provision of such convention. involving as it does the appreciation of evidence adduced before Respondent anchors its causes of action under Articles 6 bis and 8 of The Convention of Paris for the Protection of Industrial Property.528. or at the request of an interested party. in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. otherwise known as the Paris Convention. of a trademark which constitutes a reproduction. the BLA-IPO. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. and to prohibit the use. even finality if such findings are supported by substantial evidence. an imitation. or false designation of origin and false description. The settled rule is that the factual findings of quasi-judicial agencies.

premises, for hamburger sandwiches, cheeseburger sandwiches, hot coffee and milkshakes for consumption on or off the premises, lemonade and softdrinks for consumption on and off the premises, restaurant services respectively (Exhibit “M”); US Trademark Registration No. 1,101,638 for the mark “IN-N-OUT” under Class No. 30 dated September 5, 1978 for cheeseburgers, hamburgers, hot coffee and milkshake for consumption on or off premises (Exhibit “N”); US Trademark Registration No. 1,085,163 “IN-N-OUT” under Class 42 dated February 7, 1978 for Restaurant Services and carry-out restaurant services (Exhibit “Q”). For its mark “Double-Double” it submitted Certificates of Registration of said mark in several countries (Exhibits “MM” and submarkings). xxxx Moreover, complainant also cites our decision in Inter Pares Case No. 14-1998-00045 dated 12 September 2000, an opposition case involving the mark “IN-N-OUT” between IN-N-OUT Burger (herein complainant) and Nestor SJ Bonjales where we ruled: “And last but not the lease, the herein Opposer was able to prove substantially that its mark “IN-N-OUT Burger and Arrow Design” is an internationally well known mark as evidenced by its trademark registrations around the world and its comprehensive advertisements therein.” The nub of complainant’s reasoning is that the Intellectual Property Office as a competent authority had declared in previous inter partes case that “IN-N-OUT Burger and Arrow Design” is an internationally well known mark. In the aforementioned case, we are inclined to favor the declaration of the mark “IN-N-OUT” as an internationally well-known mark on the basis of “registrations in various countries around the world and its comprehensive advertisements therein.” The Ongpin Memorandum dated 25 October 1983 which was the basis for the decision in the previous inter partes case and which set the criteria for determining whether a mark is well known, takes into consideration the extent of registration of a mark. Similarly, the implementing rules of Republic Act 8293, specifically Section (e) Rule 102 Criteria for determining whether a mark is well known , also takes into account the extent to which the mark has been registered in the world in determining whether a mark is well known. Likewise, as shown by the records of the instant case, Complainant submitted evidence consisting of articles about “IN-N-OUT Burger” appearing in magazines, newspapers and print-out of what appears to be printed representations of its internet website (www.innout.com) (Exhibits “CCC” to “QQQ”), as well as object evidence consisting of videotapes of famous celebrities mentioning IN-N-

OUT burgers in the course of their interviews (Exhibits “EEEE” and “FFFF”) showing a tremendous following among celebrities. The quality image and reputation acquired by the complainant’s IN-N-OUT mark is unmistakable. With this, complainant’s mark have met other criteria set in the Implementing Rules of Republic Act 8293, namely, ‘a’ and ‘d’ of Rule 102, to wit: “Rule 102: (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 publicity and the presentation at fairs or exhibitions, of the goods and/or services to which the mark applies; xxxx (d) the quality image or reputation acquired by the mark” Hence, on the basis of evidence presented consisting of worldwide registration of mark “IN-N-OUT” almost all of which were issued earlier than the respondent’s date of filing of its application and the subsequent registration of the mark “IN-N-OUT” in this Office, as well as the advertisements therein by the complainant, this Office hereby affirms its earlier declaration that indeed, the mark “IN-N-OUT BURGER LOGO” is an internally well-known mark.[29]

We find the foregoing findings and conclusions of Director Beltran-Abelardo fully substantiated by the evidence on record and in accord with law.

The fact that respondent’s marks are neither registered nor used in the Philippines is of no moment. The scope of protection initially afforded by Article 6 bis of the Paris Convention has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks , wherein the World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in that country. Part I, Article 2(3) thereof provides:

46

(3) [Factors Which Shall Not Be Required ] (a) A Member State shall not require, as a condition for determining whether a mark is a wellknown mark: (i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, theMember State; (ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or (iii) that the mark is well known by the public at large in the Member State. (Underscoring supplied) Moreover, petitioners’ claim that no ground exists for the cancellation of their registration lacks merit. Section 151(b) of RA 8293 provides: SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows: xxxx (b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. x x x. The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger trademark for the name of their restaurant, but they also used identical or confusingly similar mark for their hamburger wrappers and french-fries receptacles, thereby effectively misrepresenting the source of the goods and services. [30] Finally, petitioner’s contention that respondent is precluded from asserting its claim by laches, if not by prescription, lacks basis. Section 151(b) of R.A. No. 8293 specifically provides that a petition to cancel the registration of a mark which is registered contrary to the provisions thereof, or which is used to misrepresent the source of the goods or services, may be filed at any time. Moreover, laches may not prevail against a specific provision of law, since equity, which has been defined as ‘justice outside legality’ is applied in the absence of and not against statutory law or rules of procedure. [31] Aside from the specific provisions of R.A. No. 8293, the Paris Convention and the WIPO Joint Recommendation have the force and

effect of law, for under Section 2, Article II of the Constitution, the Philippines adopts the generally accepted principles of international law as part of the law of the land. To rule otherwise would be to defeat the equitable consideration that no one other than the owner of the well-known mark shall reap the fruits of an honestly established goodwill. WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 88004, dated October 21, 2005 and January 16, 2006, affirming the December 7, 2004 Order of Director General Emma C. Francisco, in Appeal No. 14-20040004, and denying the motion for reconsideration, respectively, are AFFIRMED.

SO ORDERED.

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entirety, by considering their pictorial representations, color schemes and the letters of their respective labels.” FIRST DIVISION In its Decision No. 90-47 dated December 27, 1990, the BPTTT denied CFC’s application for registration.[5] CFC elevated the matter to the Court of Appeals, where it was docketed as CA-G.R. SP No. 24101. The Court of Appeals defined the issue thus: “Does appellant CFC’s trade dress bear a striking resemblance with appellee’s trademarks as to create in the purchasing public’s mind the mistaken impression that both coffee products come from one and the same source?” PHILIPPINES, and CFC As stated above, the Court of Appeals, in the assailed decision dated September 23, 1993, reversed Decision No. 90-47 of the BPTTT and ordered the Director of Patents to approve CFC’s application. The Court of Appeals ruled: Were We to take even a lackadaisical glance at the overall appearance of the contending marks, the physical discrepancies between appellant CFC’s and appellee’s respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other. Appellant CFC’s label (Exhibit “4”) is predominantly a blend of dark and lighter shade of orange where the words “FLAVOR MASTER”, “FLAVOR” appearing on top of “MASTER”, shaded in mocha with thin white inner and outer sidings per letter and identically lettered except for the slightly protruding bottom curve of the letter “S” adjoining the bottom tip of the letter “A” in the word “MASTER”, are printed across the top of a simmering red coffee cup. Underneath “FLAVOR MASTER” appears “Premium Instant Coffee” printed in white, slim and slanted letters. Appellees’ “MASTER ROAST” label (Exhibit “7”), however, is almost double the width of appellant CFC’s. At the top is printed in brown color the word “NESCAFE” against a white backdrop. Occupying the center is a square-shaped configuration shaded with dark brown and picturing a heap of coffee beans, where the word “MASTER” is inscribed in the middle. “MASTER” in appellees’ label is printed in taller capital letters, with the letter “M” further capitalized. The letters are shaded with red and bounded with thin gold-colored inner and outer sidings. Just above the word “MASTER” is a red window like portrait of what appears to be a coffee shrub clad in gold. Below the “MASTER” appears the word “ROAST” impressed in smaller, white print. And further below are the inscriptions in white: “A selection of prime Arabica and Robusta coffee.” With regard to appellees’ “MASTER BLEND” label (Exhibit “6”) of which only a xeroxed copy is submitted, the letters are bolder and taller as compared to appellant CFC’s and the word “MASTER” appears on top of the word “BLEND” and below it are the words “100% pure instant coffee” printed in small letters. From the foregoing description, while the contending marks depict the same product, the glaring dissimilarities in their presentation far outweigh and dispel any aspect of similitude. To borrow the words of the Supreme Court in American Cyanamid Co. v. Director of Patents (76 SCRA 568), appellant CFC’s and appellees’ labels are entirely different in size, background, colors, contents and pictorial arrangement; in short, the general appearances of the labels bearing the respective trademarks are so distinct from each other that appellees cannot assert that the dominant features, if any, of its trademarks were used or appropriated in appellant CFC’s own. The distinctions are so well-defined so as to foreclose any probability or likelihood of confusion or deception on the part of the normally intelligent buyer when he or she encounters both coffee products at the grocery shelf. The answer therefore to the query is a clear-cut NO.[6] Petitioners are now before this Court on the following assignment of errors:

[G.R. No. 112012. April 4, 2001]

SOCIETE DES PRODUITS NESTLE, INC. petitioners, vs. COURT CORPORATION. respondents.

S.A. OF

and NESTLE APPEALS

DECISION YNARES-SANTIAGO, J.: This is a petition for review assailing the Decision of the Court of Appeals in CA-G.R. SP No. 24101,[1] reversing and setting aside the decision of the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), [2] which denied private respondent’s application for registration of the trade-mark, FLAVOR MASTER. On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for the registration of the trademark “FLAVOR MASTER” for instant coffee, under Serial No. 52994. The application, as a matter of due course, was published in the July 18, 1988 issue of the BPTTT’s Official Gazette. Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and domiciled in Switzerland, filed an unverified Notice of Opposition, [3] claiming that the trademark of private respondent’s product is “confusingly similar to its trademarks for coffee and coffee extracts, to wit: MASTER ROAST and MASTER BLEND.” Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation and a licensee of Societe Des Produits Nestle S.A., against CFC’s application for registration of the trademark FLAVOR MASTER. [4] Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three (3) trademarks is “MASTER”; or that the goods of CFC might be mistaken as having originated from the latter. In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the former’s trademarks, MASTER ROAST and MASTER BLEND, alleging that, “except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning, spelling, pronunciation, and sound”. CFC further argued that its trademark, FLAVOR MASTER, “is clearly very different from any of Nestle’s alleged trademarks MASTER ROAST and MASTER BLEND, especially when the marks are viewed in their

48

. Section 4 (d) of Republic Act No. APPLIES TO THE CASE. Whatever the means employed. The mark must be considered as a whole and not as dissected. the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. Hence. (7 SCRA 768) AND AMERICAN CYANAMID CO. in general. A trademark has been generally defined as “any word. et al. In other words. TRADEMARKS AND TECHNOLOGY TRANSFER (BPTTT) DATED DECEMBER 27. held that: “The question is not whether the two articles are distinguishable by their labels when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard. to cause confusion or mistake or to deceive purchasers. the test of similarity is to consider the two marks in their entirety. CA. DIRECTOR OF PATENTS. v. V. 181 SCRA 410. unless it: xxx xxx xxx The law prescribes a more stringent standard in that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others. as they appear in the respective labels. name. not usually to 49 . RESPONDENT COURT ERRED IN INVOKING THE TOTALITY RULE APPLIED IN THE CASES OF BRISTOL MYERS V. 4. business or services of others shall have the right to register the same on the principal register. provides thus: Registration of trade-marks. Ltd. undiscerningly rash in buying the more common and less expensive household products like coffee. the general impression of the ordinary purchaser. [10] The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. ET AL. the trade-mark owner has something of value.” From this perspective. et al.the Dominancy Test and the Holistic Test. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants. in the minds of potential customers. On the other side of the spectrum. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY RULE. Once this is attained. or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. the question in this case is whether there is a likelihood that the trademark FLAVOR MASTER may cause confusion or mistake or may deceive purchasers that said product is the same or is manufactured by the same company. The petition is impressed with merit. Justice Frankfurter observed in the case of Mishawaka Mfg. 7 SCRA 768). (17 SCRA 128). citing Mead Johnson & Co. when applied to or used in connection with the goods.[11] In the case at bar. jurisprudence has developed two kinds of tests . NVJ Van Dorp. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. NVJ VAN DORF LTD. Kresge Co. Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons. The Supreme Court in Del Monte Corporation v. or what he has been led to believe he wants. the Court of Appeals held that: The determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are.There is hereby established a register of trade-marks. trade-name or service-mark used to distinguish his goods. 17 SCRA 128. as to cause him to purchase the one supposing it to be the other. V. If another poaches upon the commercial magnetism of the symbol he has created. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods. as amended. 1990. which was in force at the time.”[7] A manufacturer’s trademark is entitled to protection. Director of Patents. . MEAD JOHNSON & CO. 166 or the Trademark Law. the issue is whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND. it is attributable to the marks as a totality. RESPONDENT COURT ERRED IN FINDING THAT APPELLANT CFC’S TRADE DRESS IS BEYOND THE SCOPE OF THE PROSCRIPTION LAID DOWN BY JURISPRUDENCE AND THE TRADEMARK LAW. trade-names and service-marks on the principal register. is such as to likely result in his confounding it with the original.[9] In determining if colorable imitation exists.1. (d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned. 2. Co. business or services of the applicant. DIRECTOR OF PATENTS (76 SCRA 568). The owner of a trade-mark. is the touchstone. v. As observed in several cases. business or services from the goods. it is no less true that we purchase goods by them. in relation to the goods to which they are attached ( Bristol Myers Company v. RATHER THAN THE TEST OF DOMINANCY. the aim is the same --to convey through the mark.. the desirability of the commodity upon which it appears. If it is true that we live by symbols. xxx (Emphasis supplied) xxx xxx 3. as to be likely. the owner can obtain legal redress... trade-names and service marks which shall be known as the principal register.:[8] The protection of trade-marks is the law’s recognition of the psychological function of symbols. As Mr. RESPONDENT COURT GRAVELY ERRED IN REVERSING AND SETTING ASIDE THE DECISION (NO. 90-47) OF THE DIRECTOR OF THE BUREAU OF PATENTS. If the buyer is deceived.

the similarity ends there. undiscerningly rash in buying the more common and less expensive household products like coffee. as the former is derived from a combination of the syllables “SUL” which is derived from sulfa and “MET” from methyl. On the other hand. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. ALASKA refers to “Foods and Ingredients of Foods” falling under Class 47. Inc.[12] The Court of Appeals applied some judicial precedents which are not on all fours with this case. the differences between ALACTA and ALASKA are glaring and striking to the eye. In the same manner. each case must be studied according to the peculiar circumstances of each case. even more than in any other litigation. the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels. both products are not identical as SULMET’s label indicates that it is used in a drinking water solution while that of SULMETINE indicates that they are tablets. and does not require medical prescription. [14] we ruled that the likelihood of confusion is a relative concept. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case. to be determined only according to the particular. [15] The Court of Appeals’ application of the case of Del Monte Corporation v. It must be emphasized that in infringement or trademark cases in the Philippines. since what is of paramount consideration is the ordinary purchaser who is. the issue was about the alleged similarity of Del Monte’s logo with that of Sunshine Sauce Manufacturing Industries. in general. “[t]he determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are. circumstances of each case.[13] In Esso Standard. The said products are not the usual “common and inexpensive” household items which an “undiscerningly rash” buyer would unthinkingly buy. both products are for medicinal veterinary use and the buyer will be more wary of the nature of the product he is buying. In addition. and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. In the American Cyanamid case.[17] Mead Johnson & Co. jurisprudential precedents should be applied only to a case if they are specifically in point. perhaps. ALACTA refers to “Pharmaceutical Preparations which Supply Nutritional Needs. In trademark cases. and sometimes peculiar. one is dispensable only upon doctor’s prescription. Since Del Monte alleged that Sunshine’s logo was confusingly similar to or was a colorable imitation of the former’s logo. Also. the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products.any part of it (Del Monte Corp. undiscerningly rash in buying the more common and less expensive household products like coffee. the brands printed on the labels. the words or lettering on the labels or marks and the shapes and colors of the labels or marks. In determining whether two trademarks are confusingly similar.” falling under Class 6 of the official classification of Medicines and Pharmaceutical Preparations to be used as prescribed by physicians. for ALASKA. CA. What is being questioned here is the use by CFC of the trademark MASTER. the complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. in general. Court of Appeals. This Court held that the addition of the syllable “INE” in respondent’s label is sufficient to distinguish respondent’s product or trademark from that of petitioner.[19] The totality rule states that “the test is not simply to take their words and compare the spelling and pronunciation of said words. In the Mead Johnson case. Court of Appeals[16] is. In the above cases cited by the Court of Appeals to justify the application of the totality or holistic test to this instant case. the Court of Appeals erred in applying the totality rule as defined in the cases of Bristol Myers v. NVJ Van Dorp. We agree. 50 . both labels have strikingly different backgrounds and surroundings. The average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in a library. supra). no set rules can be deduced.” [20] As this Court has often declared. the factual circumstances are substantially different. judicial fora should not readily apply a certain test or standard just because of seeming similarities. In Del Monte. as what appellees would want it to be when they essentially argue that much of the confusion springs from appellant CFC’s use of the word “MASTER” which appellees claim to be the dominant feature of their own trademarks that captivates the prospective consumers. v. The same criteria. v. As this Court has pointed above. An ordinary purchaser or buyer does not usually make such scrutiny nor does he usually have the time to do so.. cannot be applied in the instant petition as the facts and circumstances herein are peculiarly different from those in the Del Monte case. Ltd. NVJ Van Dorf Ltd. therefore. Also. It cannot also be said that the products in the above cases can be bought off the shelf except. there was a need to go into the details of the two logos as well as the shapes of the labels or marks. v. misplaced. other than the fact that both Nestle’s and CFC’s products are inexpensive and common household items. The wisdom of the likelihood of confusion test lies in its recognition that each trademark infringement case presents its own unique set of facts. v. this Court held that although both BIOFERIN and BUFFERIN are primarily used for the relief of pains such as headaches and colds. there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable. and their names are practically the same in spelling and pronunciation. however. precedent must be studied in light of the facts of the particular case.” [21] The basis for the Court of Appeals’ application of the totality or holistic test is the “ordinary purchaser” buying the product under “normally prevalent conditions in trade” and the attention such products normally elicit from said ordinary purchaser. Indeed. while the other may be purchased over-the-counter.. both of which are chemical compounds present in the article manufactured by the contending parties.[22] The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning.[18] and American Cyanamid Co. Director of Patents. In the case at bar. In any case. Nestle points out that the dominancy test should have been applied to determine whether there is a confusing similarity between CFC’s FLAVOR MASTER and Nestle’s MASTER ROAST and MASTER BLEND. the word SULMET is distinguishable from the word SULMETINE. In the Bristol Myers case. Director of Patents. Each case must be decided on its own merits. v. Be it further emphasized that the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other (Mead Johnson & Co. supra). That is the reason why in trademark cases. As the Court of Appeals itself has stated. Both corporations market the catsup product which is an inexpensive and common household item.

Ric Puno Jr.” and are not legally protectable. then it would be less likely for the ordinary purchaser to notice that CFC’s trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s uses red and brown.Arabica for superior taste and aroma. in the phraseology of one court.” are eligible for protection in the absence of secondary meaning. Generic terms[25] are those which constitute “the common descriptive name of an article or substance.. a term is descriptive[26] and therefore invalid as a trademark if. can create. While this Court agrees with the Court of Appeals’ detailed enumeration of differences between the respective trademarks of the two coffee products. this Court cannot agree that totality test is the one applicable in this case. 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. For this reason.[24] In addition. promoted its products as “coffee perfection worthy of masters like Robert Jaworski and Ric Puno Jr. nothing equals Master Roast.Arabica for superior taste and aroma. this Court believes that the dominancy test is more suitable to this case in light of its peculiar factual milieu. therefore. In the art of coffee-making.. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST.” or “refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product. Rather.” This is evident from the advertising scheme adopted by Nestle in promoting its coffee products. if the ordinary purchaser is “undiscerningly rash”. the personalities engaged to promote the product.” Such terms.” or “if it forthwith conveys an immediate idea of the ingredients. functions. Confident. MASTER ROAST. similarities or dissimilarities. therefore. when one looks at the label bearing the trademark FLAVOR MASTER (Exh. the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. unmatched. Fast on his feet. rather than to the dissimilarities that exist.” or “ imaginative effort on the part of the observer. Therefore. Robusta for strength and body. Coffee perfection worthy of masters like Ric Puno Jr. Nestle advertised its products thus: Robert Jaworski. they nevertheless involve “an element of incongruity. x x x. This can be gleaned from the fact that Robert Jaworski and Atty. Thus. [29] The term “MASTER”. Living Legend. Ric Puno Jr. MASTER ROAST. it is sufficiently established that the word MASTER is the dominant feature of opposer’s mark. A true hard court hero. are given the titles Master of the Game and Master of the Talk Show. Rich and deeply satisfying. aural.This Court cannot agree with the above reasoning. is master. may be legally protected. In due time.” or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination. Truly distinctive and rich in flavor. A masterpiece only NESCAFE. Made from a unique combination of the best coffee beans . the world’s coffee masters. it “forthwith conveys the characteristics. As such. Witty. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace.” In associating its coffee products with the term “MASTER” and thereby impressing them with the attributes of said term.” or are “commonly used as the name or description of a kind of goods. Moreover. It must be emphasized that the products bearing the trademarks in question are “inexpensive and common” household items bought off the shelf by “undiscerningly rash” purchasers. A unique combination of the best coffee beans . Well-informed. the coffee masterpiece from Nescafe. While suggestive marks are capable of shedding “some light” upon certain characteristics of the goods or services in dispute. as understood in its normal and natural sense. A master strategist. the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched.” or “imply reference to every member of a genus and the exclusion of individuating characters. this Court agrees with the BPTTT when it applied the test of dominancy and held that: From the evidence at hand. Rather. As such. considering that the product is an inexpensive and common household item. over time. the word “MASTER” is neither a generic nor a descriptive term. qualities or ingredients of a product to one who has never seen it and does not know what it is. because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the opposer’s goods.” “figurativeness. qualities or characteristics of the goods. Nestle has. respectively. require “imagination. the use by 51 . As such. Robusta for strength and body. Further. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features. Equally unmatched. x x x. Coffee perfection worthy of masters like Robert Jaworski. Suggestive terms[27] are those which. [23] 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 overall impressions between the two trademarks. has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. and would therefore be “less inclined to closely examine specific details of similarities and dissimilarities” between the two competing products. 4) one’s attention is easily attracted to the word MASTER. thought and perception to reach a conclusion as to the nature of the goods. “which subtly connote something about the product. Master Roast. Sure in every shot he makes. In this case. the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle. In one word.” or comprise the “genus of which the particular product is a species. the world’s coffee masters. said term can not be invalidated as a trademark and. If the ordinary purchaser is “undiscerningly rash” in buying such common and inexpensive household products as instant coffee. It is the observation of this Office that much of the dominance which the word MASTER has acquired through Opposer’s advertising schemes is carried over when the same is incorporated into respondent-applicant’s trademark FLAVOR MASTER. On the other hand. [28] In the art of conversation. then he would not have the time nor the inclination to make a keen and perceptive examination of the physical discrepancies in the trademarks of the products in order to exercise his choice.

. 3200 and 3202 is REINSTATED. in view of the foregoing. .[30] to wit: Why it should have chosen a mark that had long been employed by [plaintiff] and had become known to the trade instead of adopting some other means of identifying its goods is hard to see unless there was a deliberate purpose to obtain some advantage from the trade that [plaintiff] had built up. SP No. the decision of the Court of Appeals in CAG. WHEREFORE. 24101 is REVERSED and SET ASIDE and the decision of the Bureau of Patents. Trademarks and Technology Transfer in Inter Partes Cases Nos. plagiarized the “make-up” of an earlier comer. it may not be amiss to quote the case of American Chicle Co. Inc.CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. [W]e feel bound to compel him to exercise his ingenuity in quarters further afield. 52 . v. SO ORDERED. it is generally true that. Indeed.R. as soon as we see that a second comer in a market has. . for no reason that he can assign. we need no more. Topps Chewing Gum. In closing..

when applied to or used in 53 . and those of petitioner consisting of lard. Business Address — 55 Rosario St. in accordance with Section 8 of Republic Act No. respondents. 1982 PHILIPPINE REFINING CO. its appropriation as a trademark. However. Ponce Enrile. as to be likely. 538 Date Filed — August 10. ham.connection with the goods.. which likewise falls under Class 47. petitioner.: The sole issue raised in this petition for review of the decision of the Director of patents is whether or not the product of respondent. NG SAM and THE DIRECTOR OF PATENTS. CAMIA Application No. No. which provides as unregistrable: a mark which consists of or comprises a mark or tradename which so resembles a mark or tradename registered in the Philippines or a mark or tradename previously used in the Philippines by another and not abandoned. Alleged date of first use of the trademark by respondent was on February 10. filed an application with the Philippine Patent office for registration of the Identical trademark "CAMIA" for his product. Conversely. J. a citizen residing in Iloilo City. 1946 Owner — F. petitioner filed an opposition. this petition. Basis of petitioner's opposition was Section 4(d) of said law. 3 The records of this case disclose that the term "CAMIA" has been registered as a trademark not only by petitioner but by two (2) other concerns. SR-320 Date Registered — May 26. The parties submitted the case for decision without presenting any evidence: thereafter the Director of patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam. After due publication of the application. in the sense that others may used the same mark on unrelated goods.R. which is ham. respondent Ng Sam. On November 25.. A rudimentary precept in trademark protection is that "the right to a trademark is a limited one. butter. while children refer to it as the butterfly flower because of its shape. A trademark is designed to Identify the user. but the same was denied. petitioner caused the registration of said trademark with the Philippine Patent Office under certificates of registration Nos. polishing materials and soap of all kinds (Class 4). 1959. while certificate of registration No. albeit in a fanciful manner in that it bears no relation to the product it Identifies. particularly lard." 1 Thus. 1960. 1945 Date Registered . 1960 Owner — Everbright Development Company Business Address — 310 M. Embroideries laces. vs. In 1949. Some people call the "CAMIA" the "white ginger plant" because of its tuberous roots. L-26676 July 30. 280 Registration No. Being a generic and common term. 1353-S applies to abrasive detergents. as in this case. business services of the applicant. "the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description. Inc. H. CAMIA and Representation Application No. Montecillo & Bello and Associates for petitioner. Ng Sam. Manila Class 43 — Particular Good on which mark is used: Textiles. as pronounced by the United States Supreme Court in the case of American Foundries vs. to cause confusion or mistake or to deceive purchasers. registration of a similar or even Identical mark may be allowed. 1352-S and 1353-S. Primitivo C. the degree of exclusiveness accorded to each user is closely restricted." Such restricted right over a trademark is likewise reflected in our Trademark law. But it should be so distinctive and sufficiently original as to enable those who come into contact with it to recognize ESCOLIN. Petitioner moved for a reconsideration. del Pilar Grace Park. Robertson 2. 1949. The trademark "CAMIA" was first used ill the Philippines by petitioner on its products in 1922. mistake or deception to the consumers. Bucasas for respondents. where no confusion is likely to arise. cooking oil and soap are so related that the use of the same trademark "CAMIA" on said goods would likely result in confusion as to their source or origin. butter and cooking oil. Certificate of Registration No. Caloocan City Class 4 — Thread and Yarn 2. as follows: 1.E. 166. both issued on May 3. Under Section 4(d) of the law. etc. otherwise known as the Trademark Law. is valid. The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. all classified under Class 47 (Foods and Ingredients of Food) of the Rules of Practice of the Patent Office. Siguion Reyna.. Hence. SECOND DIVISION G. Zuellig. where to allow such registration could likely result in confusion.April 20. registration of a trademark which so resembles another already registered or in use should be denied. 1352-S covers vegetable and animal fats. INC. as amended.

cooking oil.. They pertain to unrelated fields of manufacture. While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food). In his decision. Sec. "Kodak" or "Kotex". petitioner has so diversified its business as to include the product of respondent.3. JJ. polishing materials and soap of all kinds.instantly the Identity of the user. while the product of respondent is processed from pig's legs. 23. He opined and We quote: I have taken into account such factors as probable purchaser attitude and habits. and the public will not be deceived. One purchasing ham would exercise a more cautious inspection of what he buys on account of it price. Barredo (Chairman). if ever. his business name "SAM'S HAM AND BACON FACTORY" written in bold white letters against a reddish orange background 6. Aquino. 16 of the Trademark Act. I. capable to indicate origin. except perhaps to those who. polishing materials and soap of all kinds. In fine. in Section 80. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. and lard. abrasive detergents. oil. Abad Santos and De Castro. The observation and conclusion of the Director of Patents are correct. Inc. As the registered owner and prior user of the trademark. butter. then it is apparent that it cannot Identify a particular business. dissenting: I vote to grant the petition of the Philippine Refining Co. (p. and soap on the other are products that would not move in the same manner through the same channels of trade. Mr. SO ORDERED. This is true whether or not the trademarks are registered.. the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin. Besides. Costs against petitioner. WHEREFORE. might be distributed and marketed under dissimilar conditions. is certain to catch the eye of the class of consumers to which he caters. butter. By itself. Respondent desires to use the same on his product. marketing activities. "Ham" is not a daily food fare for the average consumer. confusion of business may arise between non-competitive interests as well. butter. much less cause damage to petitioner. 1121 of his book. is the purchase of said food product delegated to household helps. the Director of Patents enumerated the factors that set respondent's product apart from the goods of petitioner. there can be no likelihood for the consumer of respondent's ham to confuse its source as anyone but respondent. Separate Opinions DE CASTRO. p. VOL. abrasive detergents. I believe that ham on one hand. Runolf Callman. The particular goods of the parties are so unrelated that consumers would not in any probability mistake one as the source or origin of the product of the other. and are displayed separately even though they frequently may be sold through the same retail food establishments. " It must be affirmative and definite.. Thus. as contra-distinguished to trademarks derived from coined words such as "Rolex". are expected to know their business. and he who first adopted it cannot be injured by any subsequent appropriation or imitation by others. significant and distinctive. The facsimile of the label attached by him on his product." 5 The trademark "CAMIA" is used by petitioner on a wide range of products: lard. embraces competitive and non-competitive trademark infringement but it is not so extensive as to be applicable to cases where the public would not reasonably expect the plaintiff to make or sell the same class of goods as those made or sold by the defendant. if given the 54 . the respondent's ham which comes under the same classification of "Food and Ingredients of Foods" under which petitioner has registered its trademark. and commercial impression likely to be conveyed by the trademarks if used in conjunction with the respective goods of the parties. A consumer would not reasonably assume that. cooking oil. in referring to 'merchandise of substantially the same descriptive properties. like the cooks. it does not Identify petitioner as the manufacturer or producer of the goods upon which said mark is used. retail outlets. Rollo)." 4 It is evident that "CAMIA" as a trademark is far from being distinctive. "CAMIA" on a wide variety of products such as lard. J. In addition. 231 affirmed in toto. Guerrero. concur. Unfair Competition and Trade Marks. the instant petition is hereby dismissed and the decision of the Director of Patents in Inter Partes Case No. Jr. this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. (Emphasis supplied). Opposer's products are ordinary day-to-day household items whereas ham is not necessarily so. Seldom. It has been held that if a mark is so commonplace that it cannot be readily distinguished from others. where the litigants are actually in competition. Concepcion. the goods of petitioners are basically derived from vegetable oil and animal fats. We hold that the businesss of the parties are non-competitive and their products so unrelated that the use of Identical trademarks is not likely to give rise to confusion. ham. declare: While confusion of goods can only be evident.

The purpose of the law will be served better by not allowing the registration of the trademark "CAMIA" for respondent's ham. The purpose of the law will be served better by not allowing the registration of the trademark "CAMIA" for respondent's ham. the respondent's ham which comes under the same classification of "Food and Ingredients of Foods" under which petitioner has registered its trademark. butter. Separate Opinions DE CASTRO. Thus. Inc. the use of the same trademark on the ham would likely result in confusion as to the source or origin thereof. to the damage or detriment of the petitioner. "CAMIA" on a wide variety of products such as lard.same trademark. polishing materials and soap of all kinds. "CAMIA" is likely to confuse the public that the source of the ham is the petitioner. abrasive detergents. J. some measure of deception may take effect upon them. if the respondent's ham is of poor quality. as trademark for his product.. if given the same trademark. to the damage or detriment of the petitioner. cooking oil. Thus. the use of the same trademark on the ham would likely result in confusion as to the source or origin thereof. with such a limitless number of other words respondent may choose from. "CAMIA" is likely to confuse the public that the source of the ham is the petitioner. petitioner's business may thus be affected adversely as a result. if the respondent's ham is of poor quality. as trademark for his product. 55 . while from the standpoint of the purchasers. dissenting: I vote to grant the petition of the Philippine Refining Co. some measure of deception may take effect upon them. with such a limitless number of other words respondent may choose from. As the registered owner and prior user of the trademark. petitioner's business may thus be affected adversely as a result. while from the standpoint of the purchasers.

s. Aug. interposed this appeal. No. to identify. respondent Director issued to respondent company a certificate of registration of with. Evalle for respondent Director of Patents.. Petitioner also alleged that said trademark has not become distinctive of respondent company's goods or business. Willys-Overland Motors. and that the mark as used by respondent company convincingly shows that it identifies and distinguishes respondent company's goods from others. respondent Director. in accordance with Section 7 of Republic Act No. 24.. unregistrable. a foreign corporation. was brought to petitioner's attention (t. W-6). p.s. 1958). Inc. it is used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent company.. New York) because they are musically inclined.EN BANC G..: From the decision of the Director of Patents (of January 17. after hearing. J. Chapter XI of the same Act. "the fact that said mark is used also to designate a particular style of brassiere. 17. trademark "Adagio". pp. Petitioner filed a motion for reconsideration of said decision. warned the Valleson Department Store to desist from the sale of the "Adagio" Royal Form brassieres manufactured by petitioner (t. 166 (Trademark Law). INC. Class 40". 56 . Hence. and that said trademark is applied or affixed by respondent to the goods by placing thereon a woven label on which the trademark is shown. adopted other musical terms such as "Etude" (Exh. nor any that comes within the purview of Section 4 of Republic Act No.ñët It is not true that respondent company did not object to the use of said trademark by petitioner and other local brassiere manufacturers." On October 17... 166. Issues having been joined.. "Overture" (Exh.n. and that it is not registered in accordance with the requirements of Section 37(a). and "Concerto" (Exh. or with the Philippines for over 10 years. respondent company. without objection on the part of respondent company. V). that said trademark "is on the date of this application. 1959). Ross. that it has been used by respondent company to classify the goods (the brassieres) manufactured by it. It is urged that said trademark had been used by local brassiere manufacturers since 1948. The records show that respondent company's agent. 1961) dismissing his petition for cancellation of the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere Co. on August 13. Oct. 15. W-3). W-2). As respondent Director pointed out. petitioner Andres Romero. likewise. Inc. p. in the same manner as petitioner uses the same. BARRERA. 1957.Brassieres. and was used as a trademark by the owners thereof (the Rosenthals of Maiden Form Co. as a trademark. 1961) rendered the decision above adverted to. Fookien Times. 1958. approved for publication in the Official Gazette said trademark of respondent company. Chapter XI of Republic Act No. 1964 ANDRES ROMERO. the case was heard and. Manila Times.s. vs. Mr. Schwartz. Oct. On February 12. inter alia.R. Being a musical term. and even placed an advertisement (Exhs. U) in the Manila Times made by respondent company on February 9.. this appeal. classified according to the official classification of goods (Rule 82) . 166. that said trademark has been used by petitioner for almost 6 years. "Prelude" (Exh. that said trademark is "a fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its product. 1961. Inc. MAIDEN FORM BRASSIERE CO. "Chansonette" (Exh. 1957. This claim is without basis in fact. 166. therefore. and others) warning the public against unlawful use of said trademark (t. on the grounds that it is a common descriptive name of an article or substance on which the patent has expired.. It also appears that respondent company has. and (2) it is contrary to law.1äwphï1. In its application. The advertisement (Exh.n. actually used by respondent company on the following goods. respondents. and that the application for its registration was not filed in accordance with the provisions of Section 37. Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is. petitioner. 3 & 4) in the local newspapers (Manila Daily Bulletin. 1958. 1957. respondent company alleged that said trademark was first used by it in the United States on October 26. and THE DIRECTOR OF PATENTS. which means slowly or in an easy manner.n. 27-28. 111 USPQ 105). and in the Philippines on August 31. that its registration was obtained fraudulently or contrary to the provisions of Section 4. that it is neither a surname nor a geographical term. v. 166) of the trademark "Adagio" for the brassieres manufactured by it. petitioner filed with respondent Director a petition for cancellation of said trademark. that it had been continuously used by it in trade in. on the grounds that (1) it is contrary to the evidence. the different styles or types of its brassieres. Acting on said application. L-18289 March 31. 1937. that it has become a common descriptive name. W-4). does not affect its registrability as a trademark" (Kiekhaefer Corp. filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. Said motion was denied by respondent Director by resolution of March 7. 7.. Chapter II of Republic Act No. Office of the Solicitor General and Tiburcio S. Alafriz Law Office for petitioner. respondent Director (on January 17. Selph & Carrascoso for respondent Maiden Form Brassiere Co. having found. 1946. The evidence shows that the trademark "Adagio" is a musical term. On February 26.

only "to designate a particular style or quality of brassiere and. v. On the other hand. You state that you used to sell brassieres in the store in which you work. Well. and the fact that it is used on only one of several types or grades does not affect its registrability as a trade mark.S. of American. The mere fact that appellee uses "Adagio" for one type or style. belies petitioner's claim: Q. W).. Schwartz. This is a consequence of the long and continued use by the plaintiff of this trademark and is the result of its efforts to inform the profession and the public of its product. 111 USPQ 105.. Inc 200 Madison Avenue. respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. he alleges that the sentence "Maidenform bras are packaged for your quick shopping convenience. does not affect the validity of such word as a trademark. 41 S. This is a product sold primarily in the United States they have cold climate there. they are me conclusions of said witnesses. The testimony of Mr. 'There is a Maidenform for every type of figure'. on February 26. will you please tell us the reason why you said that those are styles? A. despite appellee's non-compliance with Section 37. Ct. Coca-Cola Co. W-5 (Maidenette). Willys-Overland Motors. He stated as follows: Q. 166 as amended by Section 1 of Republic Act 865 which reads as follows: 57 . Alloette are just attached to the bras just to distinguish the style: It is not the main brand. (Overture). 1958. Exhibits W-2 (Etude). and W-6. the applicant sought to register the letters "MM" in diagonal relationship within a circle." printed on the package (Exh. v. did not affect the validity of that word as a trademark. The Assistant Commissioner of Patents held: It clearly appears. shows that the trademark "Adagio" is used to designate a particular style or quality of brassiere. He also cites portions of the testimonies of his witnesses Bautista and Barro. are styles. Prelude. W-3 (Chansonette). N. I tell you there are so many types and certain types of people ask for certain brassiere. on the other hand. what are these types of figures this Exhibit W refer to? A. Koke Co. 55 L. 189. This contention flows from a misconception of the application for registration of trademark of respondent. that fact of itself would destroy a trademark. You know his brand like Adagio. 113. New York 16. If this argument were sound. W-4 (Prelude). it was held that widespread dissemination does not justify the defendants in the use of the trademark. In. Jacobs v.7. Veronal has been widely sold in this country by the plaintiff. 221 U. standing alone. he replied that the brand "Adagio" is attached distinguish the style. 143. had long been used by respondent company. respondent's application was filed under the provisions of Section 2 of Republic Act No. 254 U. V. As we see it. said that "Adagio" is a mark. Barro. This kind of bra very seldom comes here. the case of Kiekhaefer Corp. and a style to suit the climate and we have different here. She declared as follows: Q. 74 USPQ 235. In support of the contention. Ed. Alloette. (emphasis supplied. This type is very expensive and sold primarily in the United States. There is a statement at the bottom of Exhibit W which reads. when customers come to your store and ask for brassieres. Beecham. v. Brassieres are usually of different types or styles. is unregistrable as a trademark. Blackman (268 NYS 653). In Minnesota Mining Co. Ct. Applicant admitted that this mark was used only for its medium price and medium quality denture-base materials. For other popular Maidenform styles writ for free style booklet to: Maiden Form Brassiere Co. it was held that the fact that the word "Hurricane" was used to designate only one model of automobile. We do not sell it here. 1958). over 5. it is very expensive an import restrictions do not allow our dollar allocations for such sort. and appellee has used different trademarks for every type as shown by its labels. to the effect that said trademark refers to the style of brassieres sold in the stores of which they are salesmen. As you stated you are very familiar with these bras manufacture by Maidenform Brassiere Company. however.250. therefore. does not conclusively indicate that the trademark "Adagio" is merely a style of brassiere. 263. and so many kinds of marks. Appellant also claims that respondent Director erred in registering the trademark in question. As to the testimonies of Bautista and Barro. 729. which must have prompted him to file this present petition for cancellation. 65 L. witness of respondent company. what do they usually ask from you? A.) Appellant next contends that the trademark "Adagio at the time it was registered (in the Philippines) on October 17. Motloid Co. paragraphs 1 and 4 (a) of Republic Act No. Arbitrary trademarks cannot become generic in this way. that the mark serves to indicate origin of applicant's goods. You said that those bras mentioned by you such as Adagio. In Winthrop Chemical Co. This widespread dissemination does not justify the defendants in the use of this trademark. 555. 1957. 31 S. then every time a plaintiff obtained the result of having the public purchase its article.000 packages have been sold since 1919. 166. Ed. Note that when Bautista was asked why he considered the trademark "Adagio" as a style. W). This contention is untenable.S. There are people who ask for Royal Form Adagio and there are others who ask for Duchess Ideal Form.Y. Said sentence appearing on the package (Exh.

.) Appellant next argues that respondent Director erred in declaring illegal the appropriation in the Philippines of the trademark in question by appellant and. 1269... cited by the defendant. we are of the opinion and so hold."SEC. with costs against the appellant. What are registrable — Trademarks. 63 L. Non-use because of legal restrictions is not evidence of an intent to abandon. (Circular Release No. it is necessary to show not only acts indicating a practical abandonment.S.. fail. the registration of the mark was made in accordance with the Trademark Law. it must be intentional and voluntary. But we have already shown that Section 37 is not the provision invoked by respondent because the Philippines is not as yet a party to any international convention or treaty relating to trademarks. 7 (45 L. 19. and voluntary. The Philippines has. such fact did not. 166.S. even when liberally construed. however not yet entered into any such treaty or convention and. 166. (Anheuser-Busch. To work an abandonment.. 8. 2. therefore. Granting that appellant used the mark when appellee stopped using it during the period of time that the Government imposed restrictions on importation of respondent's brassiere bearing the trademark. be created artificially by means of a treaty or convention with another country or countries. 21 S. corporations. Unfair Competition and Trademark. The case of United Drug Co. until she does. partnerships or associations domiciled .) IN VIEW OF ALL THE FOREGOING. Ct. 166 (incorporated as Rule 82 in the Rules of Practice for Registration of Trademarks) envisions the eventual entrance of the Philippines into such convention treaty. 60)." Section 37 of Republic Act No. 58 . 90. said appropriation did not affect appellee's right thereto and the subsequent registration thereof.. There being no evidence of use of the mark by others before 1932. and not involuntary or even compulsory. and the decision appealed from is therefore hereby affirmed. or that appellee abandoned use thereof. 245. Republic Act No. as heretofore stated. There must be a thorough-going discontinuance of any trademark use of the mark in question (Callman. in which the trade-mark sought to be registered need not be use in the Philippines. as the records show that appellee was the first user of the trademark in the Philippines. 179 U. 248 U. Non-use of their ancient trade-mark and the adoption of new marks by the Carthusian Monks after they had been compelled to leave France was consistent with an intention to retain their right to use their old mark. 166 can be availed of only where the Philippines is a party to an international convention or treaty relating to trademarks. Eisener & Mendelson Co. "The instances of the use by others of the term 'Budweiser. actual use in the Philippines of the trademark sought to be registered and allegation in the application of such fact.. That said trademarks. constitute abandonment of the trademark as to entitle anyone to its free use. because of non-compliance by appellee of Section 37 of Republic Act No. Ed. whereas appellant was the later user. The evidence record shows. (Nims Unfair Competition and Trade-Mark p. or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: . It is provided in said section that applications filed thereunder need not allege use in the Philippines of the trade mark sought to be registered. So ordered. on the other hand. to indicate an intention upon the part of the complainant to abandon its rights to that name. v. in any foreign country may be registered in accordance with the provisions of this Act: Provided. but an actual intention to abandon. trade-names. 39 S. Appellant urges that its appropriation of the trademark in question cannot be considered illegal under Philippine laws. is not applicable to the present case. 287 F. . will be required in all applications for original or renewal registration submitted to the Philippine Patent Office. such temporary non-use did not affect the rights of appellee because it was occasioned by government restrictions and was not permanent.. 'To establish the defense of abandonment. of course. intentional. Ct. contends that the registration the trademark in question was fraudulent or contrary Section 4 of Republic Act No. Abandonment will not be inferred from a disuse over a period of years occasioned by statutory restrictions on the name of liquor. Granting that appellant used the trade-mark at the time appellee stopped using it due to government restrictions on certain importations. There is no evidence to show that the registration of the trademark "Adagio" was obtained fraudulently by appellee. likewise. Budweiser Malt Products Corp. 141. v. Rectanus. The use of the trademark by other manufacturers did not indicate an intention on the part of appellee to abandon it. The applicability of Section 37 has been commented on by the Director of Patents. without actual use the trademark in this country can. that respondent Director of Patents did not err in dismissing the present petition for cancellation of the registered trademark of appellee company. Ed. Inc. p. Saxlehner v. 2nd Ed. in this wise: Trademark rights in the Philippines.. own by persons. Section 37 of the present Philippine Trademark Law. cited by appellant. that the trademark "Adagio" was first exclusively in the Philippines by a appellee in the year 1932. 1341). 48. the disuse must be permanent and not ephemeral.) Appellant.

INC. however. LYCEUM OF THE PHILIPPINES. vs. Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned: "Section 18. the word or phrase has come to mean that the article was his produce (Ana Ang vs. Petitioner's use of the word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions which registered G. ." We agree with the Court of Appeals. INC. We do not consider that the corporate names of private respondent institutions are "identical with. INC. among other things. v. respondents. More so. and WESTERN PANGASINAN LYCEUM. the allegations of the appellant in its first two assigned errors must necessarily fail. LYCEUM OF APARRI. is whether or not the use by petitioner of "Lyceum" in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (or at least that portion of the general public which has to do with schools). ." The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently confusing" or "contrary to existing laws. Its application has.. In Philippine Nut Industry. No evidence was ever presented in the hearing before the Commission which sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the appellant." is the avoidance of fraud upon the public which would have occasion to deal with the entity concerned. REGISTRATION OF PROPOSED NAME WHICH IS IDENTICAL OR CONFUSINGLY SIMILAR TO THAT OF ANY EXISTING CORPORATION. might nevertheless have been used so long and so exclusively by one producer with reference to his article that.. Torres & Evangelista Law Offices and Ambrosio Padilla for petitioner. the same tend to prove only that the appellant had been using the disputed word for a long period of time. and the reduction of difficulties of administration and supervision over corporations. INC.. or deceptively or confusingly similar" to that of the petitioner institution. therefore. PROHIBITED. has become appropriable by petitioner to the exclusion of other institutions like private respondents herein. although originally a generic. Toribio Teodoro. .. USE OF WORD "LYCEUM. LYCEUM OF EASTERN MINDANAO. No. 2. — The Articles of Incorporation of a corporation must. — No corporate name may be allowed by the Securities an Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive. — It is claimed. Corporate name. because geographically or otherwise descriptive. in that trade and to that branch of the purchasing public. SYLLABUS 1. 56). been extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename. True enough. INC. the Commission shall issue an amended certificate of incorporation under the amended name. however. 1993. CORPORATION LAW. there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions. Chato. This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. The Court of Appeals recognized this issue and answered it in the negative: "Under the doctrine of secondary meaning.THIRD DIVISION "Lyceum" but confusion and deception are effectively precluded by the appending of geographic names to the word "Lyceum. Froilan Siobal for Western Pangasinan Lyceum. March 5. the doctrine of secondary meaning was elaborated in the following terms: " . because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that. BUHI LYCEUM. or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of the Philippines. Antonio M.. CENTRAL LYCEUM OF CATANDUANES. by petitioner that the word "Lyceum" has acquired a secondary meaning in relation to petitioner with the result that word. the evasion of legal obligations and duties. 101897. ID. In other words. The doctrine of secondary meaning originated in the field of trademark law. DOCTRINE OF SECONDARY MEANING. LYCEUM OF CABAGAN." NOT ATTENDED WITH EXCLUSIVITY. . Inc." The question which arises." Thus. a word or phrase originally incapable of exclusive appropriation with reference to an article in the market. .R. LYCEUM OF CAMALANIUGAN. Chato. Standard Brands. COURT OF APPEALS. Quisumbing. The number alone of the private respondents in the case at bar suggests strongly that petitioner's use of the word "Lyceum" has not been attended with the exclusivity essential for applicability of the doctrine of secondary meaning. confusing or contrary to existing laws.. CORPORATE NAMES. the corporate names of private respondent entities all carry the word 59 . in that trade and to that group of the purchasing public. set out the name of the corporation. while the appellant may have proved that it had been using the word 'Lyceum' for a long period of time. . If there was any of this kind. ID.. LYCEUM OF TUAO. we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for the Lyceum of the Philippines. LYCEUM OF LALLO. Consequently. When a change in the corporate name is approved. . petitioner. Tarriela & Tan Law Offices for respondents. a word or phrase originally incapable of exclusive appropriation with reference to an article on the market. INC. this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. CONFUSION AND DECEPTION EFFECTIVELY PRECLUDED BY THE APPENDING OF GEOGRAPHIC NAMES TO THE WORD "LYCEUM". Inc. Nuyles and Purungan.. . LYCEUM OF SOUTHERN PHILIPPINES. the word or phrase has come to mean that the article was his product. 74 Phil.

On 24 February 1984. Inc. ID. 1241) against the Lyceum of Baguio. 2 Armed with the Resolution of this Court in G. 1 and ordered the latter to change its name to another name "not similar or identical [with]" the names of previously registered entities. and Lyceum of Southern Philippines Petitioner's original complaint before the SEC had included three (3) other entities: 1.with the SEC using "Lyceum" as part of their corporation names. The case against the Liceum of Araullo was dismissed when that school motu proprio change its corporate name to "Pamantasan ng Araullo. L-46595. Lyceum of Eastern Mindanao." The background of the case at bar needs some recounting. The Lyceum of Baguio. DECISION FELICIANO. assailed the Order of the SEC before the Supreme Court in a case docketed as G. it became clear that this recourse had failed. Inc. To determine whether a given corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name. "Lyceum. to require it to change its corporate name and to adopt another name not "similar [to] or identical" with that of petitioner.R. were substantially identical because of the presence of a "dominant" word. petitioner then wrote all the educational institutions it could find using the word "Lyceum" as part of their corporate name.e. Inc. to delete the word "Lyceum" from their corporate names and permanently to enjoin them from using "Lyceum" as part of their respective names. petitioner instituted proceedings before the SEC to compel the private respondents. Entry of judgment in that case was made on 21 October 1977. for failure to serve summons upon these two (2) entities.. it is not enough to ascertain the presence of "Lyceum" or "Liceo" in both names. i. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents. Inc. MUST BE EVALUATED IN THEIR ENTIRETY TO DETERMINE WHETHER THEY ARE CONFUSINGLY OR DECEPTIVELY SIMILAR TO ANOTHER CORPORATE ENTITY'S NAME. ID. petitioner instituted before the SEC SEC-Case No. Inc. — petitioner institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of their corporate names. which are also educational institutions. 3." When. and advised them to discontinue such use of "Lyceum." the name of the geographical location of the campus being the only word which distinguished one from the other corporate name. Central Lyceum of Catanduanes.R. and 3. it used the corporate name Lyceum of the Philippines. and has used that name ever since. No. Inc. Some of the private respondents actively participated in the proceedings before the SEC.. Inc. Inc. There may well be other schools using Lyceum or Liceo in their names. The Lyceum of Araullo The complaint was later withdrawn insofar as concerned the Lyceum of Malacanay and the Lyceum of Marbel. In a Minute Resolution dated 14 September 1977. with the passage of time. The SEC also noted that petitioner had registered as a corporation ahead of the Lyceum of Baguio. These are the following. — 26 March 1972 Lyceum of Aparri — 28 March 1972 Lyceum of Tuao. No. Associate Commissioner Julio Sulit held that the corporate name of petitioner and that of the Lyceum of Baguio. but not registered with the SEC because they have not adopted the corporate form of organization. in point of time. 2579 to enforce what petitioner claims as its 60 . they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other. When it first registered with the SEC on 21 September 1950.. J p: Petitioner is an educational institution duly registered with the Securities and Exchange Commission ("SEC"). The Lyceum of Marbel. The Lyceum of Malacanay. the Court denied the Petition for Review for lack of merit.. In an Order dated 20 April 1977. Petitioner had sometime before commenced in the SEC a proceeding (SEC-Case No. the dates of their original SEC registration being set out below opposite their respective names: Western Pangasinan Lyceum — 27 October 1950 Lyceum of Cabagan — 31 October 1962 Lyceum of Lallo. 2. — 28 March 1972 Lyceum of Camalaniugan — 28 March 1972 The following private respondents were declared in default for failure to file an answer despite service of summons: Buhi Lyceum. L-46595.

"Liceo de Manila.R.proprietary right to the word "Lyceum. we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for the Lyceum of the Philippines. 6 Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned: "SECTION 18. e. Pericles and Lycurgus frequented by the youth for exercise and by the philosopher Aristotle and his followers for teaching. When a change in the corporate name is approved.. Inc. case (SECCase No. True enough." Thus. the Court of Appeals affirmed the questioned Orders of the SEC En Banc. The Minute Resolution of the Court in G. the word "Lyceum" generally refers to a school or an institution of learning. 5 We will consider all the foregoing ascribed errors. Neither is stare decisis pertinent. The Court of Appeals erred in holding that the word Lyceum has not acquired a secondary meaning in favor of petitioner. The Articles of Incorporation of a corporation must. 3 Petitioner then went on appeal to the Court of Appeals. the word is also found in Spanish (liceo) and in French (lycee). however. As the Court of Appeals noted in its Decision. 61 . 7 We do not consider that the corporate names of private respondent institutions are "identical with. No. — No corporate name may be allowed by the Securities an Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive. among other things. While the Latin word "lyceum" has been incorporated into the English language. since there is no identity of parties. has become appropriable by petitioner to the exclusion of other institutions like private respondents herein. 4. "Liceo de Masbate. It is claimed. We begin by noting that the Resolution of the Court in G. though not necessarily seriatim. confusing or contrary to existing laws.R. Roman Catholic schools frequently use the term. especially in view of the fact that the campuses of petitioner and those of the private respondents were physically quite remote from each other. if only because the SEC En Banc itself has re-examined Associate Commissioner Sulit's ruling in the Lyceum of Baguio case. The Court of Appeals erred in holding that the Resolution of the Supreme Court in G. The Court of Appeals erred in holding that respondent Western Pangasinan Lyceum. without success. No. On appeal. L-46595 does not. the word "Lyceum" became associated with schools and other institutions providing public lectures and concerts and public discussions. by private respondents to the SEC En Banc. or deceptively or confusingly similar" to that of the petitioner institution. Etymologically." 9 "Lyceum" is in fact as generic in character as the word "university. it is not unnatural to use this word to designate an entity which is organized and operating as an educational institution. Unlike its hearing officer." The SEC hearing officer rendered a decision sustaining petitioner's claim to an exclusive right to use the word "Lyceum." is the avoidance of fraud upon the public which would have occasion to deal with the entity concerned." in other places. In its Decision dated 28 June 1991." or "Liceo" or "Lycee" frequently denotes a secondary school or a college.g. L-46595 was not a reasoned adoption of the Sulit ruling." 8 In time. the corporate names of private respondent entities all carry the word "Lyceum" but confusion and deception are effectively precluded by the appending of geographic names to the word "Lyceum." (Emphasis supplied) The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently confusing" or "contrary to existing laws. The Court of Appeals erred in holding that Lyceum as a generic word cannot be appropriated by the petitioner to the exclusion of others. however. No. the word "Lyceum" is the Latin word for the Greek lykeion which in turn referred to a locality on the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and adorned with fountains and buildings erected by Pisistratus. by petitioner that the word "Lyceum" has acquired a secondary meaning in relation to petitioner with the result that that word. Masbate)." but it is clear that a not inconsiderable number of educational institutions have adopted "Lyceum" or "Liceo" as part of their corporate names.R." In the name of the petitioner. 3. set out the name of the corporation. although originally a generic. L-46595 did not constitute stare decisis as to apply to this case and in not holding that said Resolution bound subsequent determinations on the right to exclusive use of the word Lyceum. The SEC En Banc did not consider the word "Lyceum" to have become so identified with petitioner as to render use thereof by other institutions as productive of confusion about the identity of the schools concerned in the mind of the general public. the Commission shall issue an amended certificate of incorporation under the amended name. Since "Lyceum" or "Liceo" denotes a school or institution of learning. the evasion of legal obligations and duties. of course. 1241) and held that the word "Lyceum" was capable of appropriation and that petitioner had acquired an enforceable exclusive right to the use of that word." "Liceo de Albay. It may be (though this is a question of fact which we need not resolve) that the use of the word "Lyceum" may not yet be as widespread as the use of "university. or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of the Philippines. Inc." The hearing officer relied upon the SEC ruling in the Lyceum of Baguio. Before this Court." "Liceo de Baleno" (in Baleno. was incorporated earlier than petitioner. Thus today. 2. the decision of the hearing officer was reversed and set aside. however. petitioner asserts that the Court of Appeals committed the following errors: 1. "Lyceum. 4 Petitioner filed a motion for reconsideration. and the reduction of difficulties of administration and supervision over corporations. the SEC En Banc held that the attaching of geographical names to the word "Lyceum" served sufficiently to distinguish the schools from one another. Corporate name. however. "Lyceum" appears to be a substitute for "university. constitute res adjudicata in respect of the case at bar.

a word or phrase originally incapable of exclusive appropriation with reference to an article on the market. which records had been destroyed during World War II. 62 . Inc. the allegations of the appellant in its first two assigned errors must necessarily fail. appears to us to be quite secondary in importance." 13 (Underscoring partly in the original and partly supplied) We agree with the Court of Appeals. but not registered with the SEC because they have not adopted the corporate form of organization. 11 the doctrine of secondary meaning was elaborated in the following terms: " . rather than the petitioner institution.. 10 In Philippine Nut Industry. while the appellant may have proved that it had been using the word 'Lyceum' for a long period of time. its (appellant) exclusive use of the word (Lyceum) was never established or proven as in fact the evidence tend to convey that the crossclaimant was already using the word 'Lyceum' seventeen (17) years prior to the date the appellant started using the same word in its corporate name.. 62. Inc. This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time." 12 The question which arises. [we] believe the appellant failed to satisfy the aforementioned requisites. Wellington Department Store. No pronouncement as to costs. Standard Brands. Inc. No.. been extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename. It may be noted also that at least one of the private respondents. registered with the SEC soon after petitioner had filed its own registration on 21 September 1950. It might be noted that the Western Pangasinan Lyceum. there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions. If there was any of this kind. the same tend to prove only that the appellant had been using the disputed word for a long period of time. Consequently. . Inc. however. No evidence was ever presented in the hearing before the Commission which sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the appellant. Masbate). and the Decision of the Court of Appeals dated 28 June 1991 is hereby AFFIRMED. Furthermore. the word or phrase has come to mean that the article was his product. because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that. In this connection. in that trade and to that group of the purchasing public. it is not enough to ascertain the presence of "Lyceum" or "Liceo" in both names. 92 Phil.. Nevertheless. educational institutions of the Roman Catholic Church had been using the same or similar word like 'Liceo de Manila. 448). in that trade and to that branch of the purchasing public.' 'Liceo de Baleno' (in Baleno. Its application has. Whether or not Western Pangasinan Lyceum. they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other.A. With the foregoing as a yardstick. v. . i. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents. 56). must be deemed to have lost its rights under its original 1933 registration. a word or phrase originally incapable of exclusive appropriation with reference to an article in the market. Petitioner's use of the word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions which registered with the SEC using "Lyceum" as part of their corporation names. is whether or not the use by petitioner of "Lyceum" in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (or at least that portion of the general public which has to do with schools). The Court of Appeals recognized this issue and answered it in the negative: "Under the doctrine of secondary meaning. Toribio Teodoro.' 'Liceo de Albay' long before appellant started using the word 'Lyceum'. and confusion will result by the use of the disputed name (by the defendant) (Ang Si Heng vs. this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. To determine whether a given corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name. therefore. the petitioner having failed to show any reversible error on the part of the public respondent Court of Appeals. In other words. The appellant also failed to prove that the word 'Lyceum' has become so identified with its educational institution that confusion will surely arise in the minds of the public if the same word were to be used by other educational institutions. Inc. 74 Phil. the Western Pangasinan Lyceum. the same doctrine or principle cannot be made to apply where the evidence did not prove that the business (of the plaintiff) has continued for so long a time that it has become of consequence and acquired a good will of considerable value such that its articles and produce have acquired a well-known reputation. We conclude and so hold that petitioner institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of their corporate names. Inc. petitioner argues that because the Western Pangasinan Lyceum. There may well be other schools using Lyceum or Liceo in their names. the word or phrase has come to mean that the article was his produce (Ana Ang vs. failed to reconstruct its records before the SEC in accordance with the provisions of R. 'Liceo de Masbate. Western Pangasinan Lyceum should be deemed to have lost all rights it may have acquired by virtue of its past registration. because geographically or otherwise descriptive." It follows that if any institution had acquired an exclusive right to the word "Lyceum. The number alone of the private respondents in the case at bar suggests strongly that petitioner's use of the word "Lyceum" has not been attended with the exclusivity essential for applicability of the doctrine of secondary meaning. Inc." that institution would have been the Western Pangasinan Lyceum. used the term "Lyceum" seventeen (17) years before the petitioner registered its own corporate name with the SEC and began using the word "Lyceum. might nevertheless have been used so long and so exclusively by one producer with reference to his article that. WHEREFORE. we refer to this earlier registration simply to underscore the fact that petitioner's use of the word "Lyceum" was neither the first use of that term in the Philippines nor an exclusive use thereof. Inc.e. the Petition for Review is DENIED for lack of merit. Consequently. More so.The doctrine of secondary meaning originated in the field of trademark law.

SO ORDERED. 63 .

Wolfson for intervenor. so the applicant made a disclaimer of said words (shirts factory) inserting a statement to that effect in his original application. presented on February 27." "linen. they also have the right to describe them properly and to use any appropriate to himself exclusively any word or expression. the right to the use of such language being common to all. 638." It is to be noted in answer to this contention that the Director of Patents has not completely denied the registration of the whole tradename. like cotton. The reason for this is that inasmuch as all persons have an equal right to produce and vend similar articles. the Director ruled that the application must be disapproved unless the word "nylon" is also disclaimed. and that "nylon" is not distinctive of applicant's goods. properly descriptive of the article. or ramie. nor did he submit. I. also operating as manufacturer of shirts. filed a petition to intervene. I. Laurel for petitioner. He has made a conditional denial only. patented. was dismissed by the Director on the ground that at the time it was submitted Atty. it is said that the true test is not whether 64 . one legal and the other procedural. 1941 for his business described as follows: "General merchandise dealing principally in textiles. E. Publication was made but before the expiration of the period for filing opposition. because it is a generic term. can never acquire secondary meaning. The grounds for the disapproval of the application were as follows: But even if the trade-name here in question were applied for under the said subsection (f). It has also. Ong Ai Gui alias Tan Ai Gui filed an application (No. however. J. As to whether words employed fall within this prohibition. 1948. permitting the registration of the name but with the disclaimer of the terms "shirt factory" and "nylon. silk. A. business and manufactures and applicant does not claim that it has so become. Wolfson. Just as no length of use and no amount of advertising will make "cotton. or characteristics. pants and other men's and woman's wears. 1952. In either case. J." or "ramie. that the use of the name "nylon" is descriptive or deceptively misdescriptive of the goods. haberdasheries. A word or a combination of words which is merely descriptive of an article of trade. But while he dismissed the opposition. xxx xxx xxx ONG AI GUI alias TAN AI GUI. Liwag and Solicitor Pacifico P. Du Pont de Nemours and Company as the generic name of a synthetic fabric material. but applicant-appellant may not be entitled to the exclusive use of the terms "shirts factory" and "nylon" as against any other who may subsequently use the said terms. if the shirts are not made of nylon. A." It is stated in connection with the application that the tradename was used for the first time by the applicant on September 12. cannot be appropriated and protected as a trademark to the exclusion of its use by others. what he desires to register is not the said word alone but the whole combination of "20th Century Nylon Shirts Factory. This rule excluding descriptive terms has also been held to apply to trade-names. Jose P. or of its composition. so no length of use and no amount of advertising will make "nylon" distinctive of shirts or of the business of manufacturing them. ingredients." "silk. This is supported by reason and authority. E. the Director of the Philippines Patent Office. It is deceptively misdescriptive of said business. that the use of the name would produce confusion in trade and would deceive the public." distinctive of shirts or of the business of making them. LABRADOR. DU PONT DE NEMOURS AND COMPANY. 1951 the Director ordered the publication of the trade-name in the official Gazette. applicant-petitioner. During the pendency of this appeal. 803) with the Director of Patents for the registration of the following trade-name: "20th Century Nylon Shirts Factory. business of manufactures of the applicant. manufactured and sold by it and that this word is a generic term." Again the above decision applicant has filed an appeal to this Court. characteristics. The latter in a report dated August 18. "Nylon" can never become distinctive. intervenor. the same was referred by the Director to an examiner. which petition was granted.R. 1950 held that the words "shirts factory" are not registrable. is expressly forbidden by subsection (e) of Section 4 of Republic Act No. Solicitor General Juan R. its registration in the Principal Register as a trade-name. on behalf of E. Wolfson did not have. and thus limit other persons in the use of language appropriate to the description of their manufactures. Used in connection with shirt-making. I. On August 13. an opposition on the ground that the word "nylon" was a name coined by E. incapable of appropriation by any single individual to the exclusion of others. I. There are two main questions raised in the appeal.: On November 8. L-6235 March 28. No. This opposition. respondent. J. filed a brief answering the arguments of the applicant-appellant and supporting the decision appealed from. A. and that the subsequent authorization from the corporation to that effect did not cure the general defect in the opposition. J.EN BANC G. authority to file it (opposition) in the corporate name. "Nylon" would still have to be disclaimed. as amended by Section 2 of Republic Act No. 1955 "Nylon" is merely descriptive of the business of shirt-making if the shirts are made of nylon. The legal question is put up by the claim of the applicant-appellant that while he admits that the term "nylon" is by itself alone descriptive and generic. its qualities. linen. juris publici. invented. 166. or qualities. through counsel. Du Pont de Nemours and Co. vs. Atty." The import of the decision is that the trade-name may be registered. De Pont de Nemours and Company. de Castro for respondent. or as a part of a trade-name." Upon the filing of the application.

Rindskopt. The answer to this argument is the fact that the law allows oppositions to be filed after publication. The use of a generic term in a trade-name is always conditional. Thus. (52 Am. provided they take proper steps to prevent the public being deceived. Dr. . he may then and there dismiss the application. All that the applicant declares in his statement accompanying his application is that the said trade-name has been continuously used by it in business in the Philippines for about seven years. separately. 408. 166. 166. upon payment of the required fee and within thirty days after the publication under the first paragraph of section seven hereof. . 9. after study and investigation makes a report and recommendation to the Director who. subject to the limitation that the registrant does not acquire the exclusive right to the descriptive or generic term or word. vs. In the second. or opportunity to every interested 65 . Furthermore. It will. i. for apparently he does not use nylon in the manufacture of the shirts. Salfield (C. . . but rather because others are equally entitled to its use..) It is the decision of the Director. Therefore. It is argued that after approval of the findings of the commissioner to whom the application id referred and giving of the order of publication. (sd) 598. upon finding that applicant is entitled to registration. Id. and not arbitrary. although perhaps not entitled to protection against infringement by the use of the descriptive matter by another. which may be used to described the product adequately. The procedural question arises from the fact that after the Director had ordered publication and notwithstanding dismissal of an opposition. Jur. If the trade-name consists of a descriptive word. Act No. 8.) The claim that a combination of words may be registered as a trade-name is no justification for not applying the rules or principles hereinabove mentioned. e. but whether in themselves. thus: Sec. Opposition. 16 E. given after this hearing. especially if the user is the first creator of the article. even those descriptive marks which are distinctive by themselves can be appropriated by others with impunity. A. not because it lacks distinctiveness. How can a secondary meaning be acquired if appellant's products are not made of nylon? Certainly no exclusive right can be acquired by deception of fraud. Other may use the same or similar descriptive word in connection with their own wares. . .) If he finds that applicant is not entitled to registration.) . In the first. and the second. 8. This is but a corollary of the proposition that a descriptive word cannot be the subject of a trade mark. to exclusive appropriation as such. Copies of certificates of registration of marks or trade-names registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith. or by any person on his behalf who knows the facts. without allegation or proof that the trade-name has become distinctive of the applicant's business or services. A descriptive word may be admittedly distinctive. be denied protection. who.) Of what use is the period given to oppositors to register their oppositions if such oppositions are not to be given consideration at all. For good cause shown and upon payment of the required surcharge. it becomes the ministerial duty of the Director to issue the corresponding certificate of registration and that his power is confined to this issuance alone. the use of the term "nylon" in the trade-name is both "descriptive" and "deceptively and misdescriptive" of the applicant-appellant's business. it may properly become the subject of a trademark by combination with another word or term which is nondescriptive. . 7. (52 Am. Rep. the application is referred to an examiner. C. If they are thus descriptive. that conducted after publication. A combination of marks or words may constitute a valid trademark or (in the case of words) a tradename even though some of the constituent portions thereof would not be subject. . (Richmond Remedies Co. (Sec. the time for filing an opposition may be extended for an additional thirty days by the Director. no monopoly of the right to use the same can be acquired. (Sec. pp.) It must also be noted that no claim is made in the application that the trade-name sought to be registered has acquired what is known as a secondary meaning within the provisions of paragraph (f) of section 4 of Republic Act No. file with the Director an opposition to the application. 166. . together with the translation thereof into English. . Id. . vs. as specifically required by section 7 of Republic Act No. Jur. (Republic Act No. Such opposition shall be in writing and verified by the oppositor. — Any person who believes that he would be damaged by the registration of a mark or trade-name may. the first is that conducted in the Office of the Director and taking place prior to publication. The so-called descriptive terms. and as they are commonly used by those who understand their meaning.) .) The citation of appellant himself supports the decision thus: ". the Director nevertheless conditionally denied the application after its publication and failed to give applicant opportunity for a hearing. . . . however. pants and wears that he produces and sells. & C.) 198. 369. who shall notify the applicant of such extension. . (2 Callman. they are reasonably indicative and descriptive of the thing intended. giving proofs and reasons for the objection. although no exclusive right to then descriptive word or term id created . opportunity is offered the public or any interested party to come in and object to the petition (Sec.they are exhaustively descriptive of the article designated. 869-870. Unfair Competition and Trade Marks. because the Director has only the ministerial duty after publication to issue the certificate of registration. 553. Merriam Co. 42 Fed.). orders publication of the publication. 542-543. . . although a word may be descriptive and not subject to exclusive use as a trademark." (Frost vs. applicant being given opportunity also to submit proofs or arguments in support of the application. can not be monopolized by a single user and are available to all. in which the public is given the opportunity to contest the application. 166. and shall specify the grounds on which it is based and include a statement of the facts relied upon. if not in the English language. they cannot be appropriated from general use and become the exclusive property of anyone. G. Miles Medical Co.. It is only natural that the trade will prefer those marks which bear some reference to the article itself.

notice of the issuance of the certificate of registration is published. giving course to the publication? His first decision is merely provisional. He actually found that he is entitled to registration and that is why an order for the publication of the application was issued.) It is evident that the decision of the Director after the first step. with costs against the applicant-appellant 66 . 166 cannot be raised in the case at bar. in the sense that the application appears to be meritorious and is entitled to be given course leading to the more formal and important second step of hearing and trial. where the public and interested parties are allowed to take part. can not have any finality. 10. that finally terminates the proceedings and in which the registration is finally approved or disapproved. Id.party to be heard. find that the errors assigned in the appeal have not been committed id hereby respondent Director of Patents. therefore. Thereafter. because the Director did not find that the applicant is not entitled to registration. (Sec. The argument that the Director failed to comply with paragraph 2 of section 7. ordering publication. Of what use is the second step in the proceedings. How can the Director comply with the provisions of said paragraph 2 if he did not disapprove the applicant's petition for registration? We. Republic Act No. His decision is hereby affirmed. if the Director is bound by his first decision.

. Rafael R. In his decision of September 20. The oppositor. Under section 2 of Republic Act No. vs. a domestic corporation. The National Biscuit Company opposed the application. Inc. has had the said trademark registered in the Philippines since 1930.: Petitioner. the Operators Incorporated is authorized by the American Biscuit Co. L-17901 OPERATORS. Siguion Reyna. respectively. THE DIRECTOR OF PATENTS. and not by petitioner Operators. and (2) whether or not the applicant had a right in the first Republic of the Philippines SUPREME COURT Manila EN BANC DECISION October 29. partnerships or associations domiciled in the Philippines or in any foreign country may be registered here provided certain conditions enumerated in the same section are complied with. the American Biscuit Co. Inc. Inc. both corporations organized under the laws of the Philippines. Vargas and by Eu Chua Leh. MAKALINTAL..purchasers. also a domestic corporation. to operate the candy business of the latter and among the various terms and stipulations in said contracts. corporations. And reaching an affirmative conclusion on the first issue. The second issue commands first consideration. The right to register. tradenames. Inc. respondents. a corporation organized in the United States. No. J.R. the Director denied the application without considering it necessary to resolve the second. as amended by section 1 of Republic Act No. 1954. and under such contracts. as follows (Exh. applied to the Philippine Patent Office for registration of AMBISCO as a trademark for its locally manufactured candy products. and renewed the registration in 1948 under the latest trademark law.. 2): 67 . 865. 1965 G. 1953. Inc. the Operators Incorporated agreed to distinctly label and display all products manufactured and sold by it as products of the American Biscuit Co. ET AL. trademarks. Ponce Enrile. cakes and wafers. entered into contracts. Such evidence consists of the certification signed jointly by Jorge B. In the first place respondent could not have known at the outset that petitioner was not the owner of the trademark it On September 26. It has been using said trademark since May 1956 by virtue of two contracts with the American Biscuit Company. place to apply for registration of AMBISCO as a trademark at all. mistake or deception of Petitioner objects to the consideration of the question of ownership of the trademark as an issue on the ground that it was not raised by respondent either in its opposition or in its memorandum filed after the parties had adduced their evidence.. 166. is based on ownership. owned by persons. and on June 12. 1960 the Director of Patents defined the issues in this case to be: (1) whether or not the two trademarks aforesaid are so similar to each other as to cause confusion.. and the Operators Incorporated... Lasam for petitioner. presidents of the said Corporations.. Montecillo & Belo for respondent National Biscuit Company. as may be noted. and upon denial of the motion brought up the case to this Court for review. Petitioner moved to reconsider. the evidence shows that it is owned by the American Biscuit Co. such as biscuits. and service marks. and that all the trademarks contained in such labels shall be considered as property of the American Biscuits Co. petitioner. In the case of the trademark AMBISCO. having previously registered NABISCO as trademark for its own bakery goods. crackers. INCORPORATED. Inc.

and often cannot. we find no cogent reason to disagree with the Director of Patents that “considering the similarities in appearance and sound between the marks AMBISCO and NABISCO.). 191 F. infringement takes place. and “Lusolin” was considered as an infringement of the trademark “Sapolin” for the same reason (Sapolin Co. An application for registration under the Patent Law is not an ordinary litigious controversy between private parties.was seeking to register. to show compliance with all the legal requisites including ownership thereof. That fact was brought out for the first time when the certification quoted above was presented. Heilman Brewing Co. In the case of Co Tiong vs. 68 . Pflugh (C. The reason for the above has been explained in the following manner: “… This rule has a basis in experience. or a dominant characteristic. nor is it necessary that the infringing label should suggest an effort to imitate. et al. nor is it necessary that the infringing label should suggest an effort to imitate. 1. If the competing label contains the trademark of another. (G. Duplication or exact imitation is not necessary. of America vs.. 180 P. Du Pont. to prove that it had a right to register the trademark applied for and consequently. with costs. it was incumbent upon petitioner. infringement takes place. What part or parts of two trademarks which are alleged to be similar does the average ordinary buyer see when he looks at them? What features of them are remembered by the average buyer? We do not really hear all that is spoken in our hearing. Independent Brewing Co. as applicant. Heilman Brewing Co. Pflugh [CC] 180 Fed. this Court said: … If the competing trademark contains the main or essential or dominant features of another. Public interest is involved and all questions as to whether or not the law is satisfied may be considered by the Patent Office or by the Court even though not specifically raised by either of the parties. Independent Brewing. On the whole we find no reversible error in the decision appealed from and therefore affirm the same. the nature and similarity of the products of the parties together with the fact that opposer’s NABISCO has been used in commerce in the Philippines for more than fifty five (55) years before AMBISCO was adopted by applicant. Co. 579. vs.” Thus “Celdura” and “Corduara” were held to be confusingly similar in sound when applied to merchandise of the same descriptive properties (Celanese Corp. The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear. On the other issue.C. 489. or even a large part of the details of what he looks at. or a central figure. 495. citing Eagle White Lead Co. regardless of the fact that the accessories are dissimilar. but retains a general impression. 154 F.. 705). he forgets or overlooks these. and confusion or deception is likely to result. citing Eagle White Lead Co. 67 Phil. 579). The dissimilarity in size. Balmaceda. xxx xxx xxx “The question of infringement is to be determined by the test of dominancy.. Secondly. form and color of the label and the place where applied are not conclusive. 2nd 146. 495. vs. vs. take in at a casual glance all. Director of Patents . (G. Duplication or imitation is not necessary. … … The ordinary customer does not Scrutinize the details of the label. and confusion and deception is likely to result. 489. vs. 191 F. confusion of purchasers is likely.. vs. 148). Far from all we see or hear casually is retained sufficiently clearly or in sufficient detail for us to get a lasting impression of it which we can remember when we encounter the mark again. 95 Phil. The average person usually will not.

THIRD DIVISION May 28. Inc. There is no dispute that the First Plaintiff is the registered owner of trademar[k] "MARK VII" with Certificate of Registration No. On March 28. respondents.. Article XVII of our Constitution and since this is an action for a violation or infringement of a trademark or trade name by defendant. it must be emphasized that resolution of the issue on the propriety of lifting the writ of preliminary injunction should not be construed as a prejudgment of the suit below. Benson and Hedges (Canada). we shall now shift our attention to the events which spawned the controversy.C. "MARK TEN". Private respondent alleged further that it has been authorized by the Bureau of Internal Revenue to manufacture and sell cigarettes bearing the trademark "MARK". For its part.. such mere allegation is sufficient even in the absence of proof to support it. Court of Appeals Rollo in A. Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation. manufacture. 13132). United States of America. New York. petitioners' prayer for preliminary injunction was denied by the Presiding Judge of Branch 166 of the Regional Trial Court of the National Capital Judicial Region stationed at Pasig. Ancheta.. 1964. defendant asks: ". S. and does business at 100 Park Avenue. 1963 and the Third Plaintiff is a registrant of trademark "LARK" as shown by Certificate of Registration No. are ascribing whimsical exercise of the faculty conferred upon magistrates by Section 6. No. AND FABRIQUES OF TABAC REUNIES. 91332 July 16. This simply means that they are not engaged in the sale. Philip Morris. and that "MARK" is a common word which cannot be exclusively appropriated (p. this cannot be made a basis for the issuance of a writ of preliminary injunction. BENSON & HEDGES (CANADA). must be protected against unauthorized appropriation. . Court of Appeals Rollo in AC-G. in addition to a pending application for registration of trademark "MARK VII" filed on November 21. SP No. Teresita Gandionco-Oledan for private respondent.A. and should. "MARK TEN". a discourse on the aspect infringement must thus be avoided. 1964. To the mind of the Court. Peña & Nolasco Law Office for petitioners. precisely. from manufacturing and selling "MARK" cigarettes in the local market. also for cigarettes. plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contravention of Section 22 of the Trademark Law. petitioners Philip Morris. With these caveat. defendant has a pending application for registration of the trademark "LARK" G. 75. Incorporated is a corporation organized under the laws of the State of Virginia. all in the Philippine Patent Office.A. and March 25. how could defendant's "MARK" cigarettes cause the former "irreparable damage" within the territorial limits of the Philippines?" Plaintiffs maintain that since their trademarks are entitled to protection by treaty obligation under Article 2 of the Paris Convention of which the Philippines is a member and ratified by Resolution No. J. The two other plaintiff foreign corporations. Banking on the thesis that petitioners' respective symbols "MARK VII". . This claim of plaintiffs is disputed by defendant in paragraphs 6 and 7 of the Answer. therefore. Before we proceed to the generative facts of the case at bar. and "LARK". premised upon the following propositions: Plaintiffs admit in paragraph 2 of the complaint that ". 1983.R.R. As registered owners "MARK VII". INC. herein private respondent. are similarly not doing business in the Philippines but are suing on an isolated transaction. THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION. be precluded during the pendency of the case from performing the acts complained of via a preliminary injunction (p. With this admission. have the force and effect of law under Section 12. New York.1973 while the Second Plaintiff is likewise the registered owner of trademark "MARK TEN" under Certificate of Registration No. . they are not doing business in the Philippines and are suing on an isolated transaction . 1980 under Application Serial No. dated May 28.: In the petition before us. and "LARK" per certificates of registration issued by the Philippine Patent Office on April 26. 10953 dated March 23. Asperilla. In same the manner.-G. 1964.". United States of America.petitioners vs.. importation. S. 69 of the Senate of the Philippines and as such. SP No.. Aware of the fact that the discussion we are about to enter into involves a mere interlocutory order. 18723. this is the issue in the main case to determine whether or not there has been an invasion of plaintiffs' right of property to such trademark or trade name.158. MELO. expor[t]ation and advertisement of their cigarette products in the Philippines. 69 . dated April 26. . 1973. hence. petitioners twice solicited the ancillary writ in the course the main suit for infringement but the court of origin was unpersuaded.R. Inc. 11147. 1993 PHILIP MORRIS. . INC. which are wholly-owned subsidiaries of Philip Morris. Fortune Tobacco Corporation admitted petitioners' certificates of registration with the Philippine Patent Office subject to the affirmative and special defense on misjoinder of party plaintiffs. . As averred in the initial pleading. 43243. Quasha... and Fabriques of Tabac Reunies. 13132). Inc.

this authority is qualified .) It is the strong arm of the court. distributing and advertising its "MARK" cigarettes and now comes defendant who countered and refused to be restrained claiming that it has been authorized temporarily by the Bureau of Internal Revenue under certain conditions to do so as aforestated coupled by its pending application for registration of trademark "MARK" in the Philippine Patent Office. selling." However. and sound discretion. Go v. But the fact remains that with its pending application. etc. 217. the Court is of the opinion and so holds that issuance a writ of preliminary injunction would not lie. the injury impending or threatened. 262. or (which is) more dangerous in a doubtful case than the issuing of an injunction. it must be exercised with great discretion.) Courts of equity constantly decline to lay down any rule which injunction shall be granted or withheld. cautious and conscionable in the exercise of its discretion consistent with justice. Courts should be extremely careful. It is well-settled principle that courts of equity will refuse an application for the injunctive remedy where the principle of law on which the right to preliminary injunction rests is disputed and will admit of doubt. distributing and advertising of "MARK" cigarettes. it is the strong arm of equity that never ought to be extended unless to cases of great injury. No. plaintiffs vigorously asserting the rights granted by law. (Bonaparte v. P. this grant ". 205. the registration of defendant's application is still pending in the Philippine Patent Office. Utica Inc. 44008. Ancheta. This circumstance in itself has created a dispute between the parties which to the mind of the Court does not warrant the issuance of a writ of preliminary injunction. Because of the disastrous and painful effects of an injunction.. treaty and jurisprudence to restrain defendant in its activities of manufacturing. 7 Gal. Co. however. defendant's "OPPOSITION. . and to render its operation begin and useful. deliberation.Y. Co. As aforestated. . Cas." dated September 24. (Merced M. selling. that there is no such dispute or conflict does not in itself constitute a justifiable ground for the court to refuse an application for the injunctive relief. N. defendant has embarked in the manufacturing.) 371. does not give you protection against any person or entity whose rights may be prejudiced by infringement or unfair competition in relation to your indicated trademarks/brands". the grant of a writ of preliminary injunction is premature.cigarettes with the Philippine Patent Office under Application Serial No. (Attorney-General v. and when necessary requires it. 3 F. There is no question that defendant has been authorized by the Bureau of Internal Revenue to manufacture cigarettes bearing the trademark "MARK" (Letter of Ruben B. 617. Plaintiffs contend that this act(s) of defendant is but a subterfuge to give semblance of good faith intended to deceive the public and patronizers into buying the products and create the impression that defendant's goods are identical with or come from the same source as plaintiffs' products or that the defendant is a licensee of plaintiffs when in truth and in fact the former is not.J. etc. Freemont. 22 N. Baldw. that the said brands have been accepted and registered by the Patent Office not later than six (6) months after you have been manufacturing the cigarettes and placed the same in the market. However. Camden. 1. It has been repeatedly held in this jurisdiction as well as in the United States that the right or title of the applicant for injunction remedy must be clear and free from doubt. marked as Annex "A". The fact.) 70 . Dec. until and unless the Director of Patents has denied defendant's application. Acting Commissioner addressed to Fortune Tobacco Corporation dated April 3. for it is impossible to foresee all exigencies of society which may require their aid to protect rights and restrain wrongs.. Commn. 1982). 1981. Eg. The right must be clear. New Jersey Midland P. Co. (N. v. 321. without a decision of the court of law establishing such principle although satisfied as to what is a correct conclusion of law upon the facts. the picture reduced to its minimum size would be this: At the crossroads are the two (2) contending parties. Defendant contends that since plaintiffs are "not doing business in the Philippines" coupled the fact that the Director of Patents has not denied their pending application for registration of its trademark "MARK". There is no power the exercise of which is more delicate which requires greater caution. hence. where courts of law cannot afford an adequate or commensurate remedy in damages. There is wisdom in this course.. 317. The question of good faith or bad faith on the part of defendant are matters which are evidentiary in character which have to be proven during the hearing on the merits. so as to be averted only by the protecting preventive process of injunction. 94. equity and fair play. (Hackensack Impr. John Ch.) Having taken a panoramic view of the position[s] of both parties as viewed from their pleadings. 68 Am. . .

Chief of the Trademark Division of the then Philippine Patent Office that Fortune's application for its trademark is still pending before said office (p. Plaintiffs' motion for reconsideration was denied in another well-argued 8 page Order issued on April 5. and that said application has been deemed abandoned and forfeited. The Court cannot help but take note of the fact that in their complaint plaintiffs included a prayer for issuance preliminary injunction. For one. Rollo). they did not even bother to establish by competent evidence that the products supposedly affected adversely by defendant's trademark now subject of an application for registration with the Philippine Patents Office. and thereafter matter was assiduously discussed lengthily and resolved against plaintiffs in a 15-page Order issued by the undersigned's predecessor on March 28. Based on the document you presented. without reference to the parties. thus: For all the prolixity of their pleadings and testimonial evidence. nay. an injunction. 1983. Plaintiffs' arguments in support of the present motion appear to be a mere rehash of their stand in the first above-mentioned petition which has already been ruled upon adversely against them. 311.) It appears from the testimony of Atty. what prompted the trial court judge to entertain the idea of prematurity and untimeliness of petitioners' application for a writ of preliminary injunction was the letter from the Bureau of Internal Revenue date February 2. vicious nor even vindictive. reiterating your query as to whether your label approval automatically expires or becomes null and void after six (6) months if the brand is not accepted and by the patent office. Rollo. they concentrated their fire on the alleged abandonment and forfeiture by defendant of said application for registration. and that the application had been forfeited by abandonment. but the trial court nonetheless denied the second motion for issuance of the injunctive writ on April 22. should be violent. (p. (pp. 1984 which reads: MRS. it shows that registration of this particular label still pending resolution by the Patent Office. Petitioners thereafter cited supervening events which supposedly transpired since March 28. the status quo existing between the parties prior to the filing of this case should be maintained. 91332. For after all. The petition was duly heard.) In the process of denying petitioners' subsequent motion for reconsideration of the order denying issuance of the requested writ. Apart from this communication. 1984. 1987. the court of origin took cognizance of the certification executed on January 30.Hence. are in actual use in the Philippines. 338-341. PAREÑO Granting that the alleged changes in the material facts are sufficient grounds for a motion seeking a favorable grant of what has already Chief. For another.R. the plaintiffs-movants have fallen far short of the legal requisites that would justify the grant of the writ of preliminary injunction prayed for. 71 . the abandonment of an application is of no moment. plaintiffs came up with the present motion citing therein the said changes which are: that defendant's application had been rejected and barred by the Philippine Patents Office. on the strength of supposed changes in the material facts of this case. TERESITA GANDIONGCO OLEDAN Legal Counsel Fortune Tobacco Corporation Madam: In connection with your letter dated January 25. TEODORO D. Tax Division TAN-P6531-D2830-A-6 In the first place there is no proof whatsoever that any of plaintiffs' products which they seek to protect from any adverse effect of the trademark applied for by defendant. Enrique Madarang. No. These being so . Manufactured Tobacco been denied. for the same can always be refiled. 1984. that could alter the results of the case in that Fortune's application had been rejected. and the matter was made to rest. barred by the Philippine Patent Office. Secondly as shown by plaintiffs' own evidence furnished by no less than the chief of Trademarks Division of the Philippine Patent Office. He said there is no specific provision in the rules prohibiting such refiling (TSN. Enrique Madarang. However. please be informed that no provision in the Tax Code or revenue regulation that requires an applicant to comply with the aforementioned condition order that his label approved will remain valid and existing. Rollo in G. Very truly yours. you may therefore continue with the production said brand of cigarette until this Office is officially notified that the question of ownership of "MARK" brand is finally resolved. is in actual use and available for commercial purposes anywhere in the Philippines.. But defendant has refiled the same. Atty. this motion just the same cannot prosper. 348. when the trial court first declined issuing a writ of preliminary injunction. 1984 by the Philippine Patent Office attesting to the fact that private respondent's application for registration is still pending appropriate action. 1983.

Thus. 60 & 64. and (2) the certification dated September 26. petitioners filed a previous petition for certiorari before the Court. 47374 of the respondent Court. No. 125 SCRA 276) The requisites for the granting of preliminary injunction are the existence of the right protected and the facts against which the injunction is to be directed as violative of said right. 106. 76 Phil. does not give protection as against any person or entity whose right may be prejudiced by infringement or unfair competition in relation to the aforesaid trademark nor the right to register if contrary to the provisions of the Trademark Law. Ortigas & Co. 78141. 1986. Cuneta. docketed as G. remarked: There is no dispute that petitioners are the registered owners of the trademarks for cigarettes "MARK VII". 137. it appears that the motion has no leg to stand on. 4 (d) of Rep. CA rollo) of Conrado P. If it is not issued. 1983". 1986. 91332. Roldan. 1986. 44008 filed on February 13. vs. the refiled application of defendant is now pending before the Patents Office. 1983 and January 24. 13132. SP No. selling. before final judgment. 139. are not also questioned by respondents. is now deemed forfeited. SCA rollo). and representatives. hence registration was barred under Sec. but the petition was referred to the Court of Appeals. the trademark application of private respondent for the "MARK" under Serial No. R. vs. Hence. and "LARK". from manufacturing. 1982. Raviera). the Court has not missed to note the absence of a mention in the Sandico letter of September 26. (Buayan Cattle Co. The Court of Appeals initially issued a resolution which set aside the court of origin's order dated April 22. Ruiz. 445). 151 SCRA 636). and advertising "MARK" cigarettes. C and D. vs. CA rollo) issued upon the written request of private respondents' counsel dated September 17. supra. "MARK TEN". 1987. 1986 attesting that the records of his office would show that the "trademark MARK" for cigarettes is now the subject of a pending application under Serial No. Act No. If the 72 . Rollo in G. No. 166 as amended and the Revised Rules of Practice in Trademark Cases. The penultimate paragraph of Commissioner Diaz' letter of authority reads: Please be informed further that the authority herein granted does not give you protection against any person or entity whose rights may be prejudiced by infringement or unfair competition in relation to your above-named brands/trademark. 1986. We believe and hold that petitioners have shown a prima facie case for the issuance of the writ of prohibitory injunction for the purposes stated in their complaint and subsequent motions for the issuance of the prohibitory writ. Act. 148 SCRA 326). speaking for the First Division of the Court of Appeals in CA-G. It is a writ framed according to the circumstances of the case commanding an act which the Court regards as essential to justice and restraining an act it deems contrary to equity and good conscience (Rosauro vs. as amended (pp. 1986 of any reference to the pendency of the instant action filed on August 18. petition). CA rollo).) Confronted with this rebuff. pp. 59872 filed on September 16. employees. Sandico.R. according to Madarang. temporarily granting the request of private respondent for a permit to manufacture two (2) new brands of cigarettes one of which is brand "MARK" filter-type blend. 107. The late Justice Cacdac. 151 SCRA 570). The temporary permit to manufacture under the trademark "MARK" for cigarettes and the acceptance of the second application filed by private respondent in the height of their dispute in the main case were evidently made subject to the outcome of the said main case or Civil Case No. its agents. Private respondent's documentary evidence provides the reasons neutralizing or weakening their probative values. Quintillan. the trademark "MARK" is "confusingly similar" to the trademarks of petitioners.R. As found and reiterated by the Philippine Patent Office in two (2) official communications dated April 6. then Acting Commissioner of Internal Revenue. The foregoing documents or communications mentioned by petitioners as "the changes in material facts which occurred after March 28.November 21. 350-351. Quintillan. 1979 (p. Petitioners' right of exclusivity to their registered trademarks being clear and beyond question. there being no revival made pursuant to Rule 98 of the Revised Rules of Practitioners in Trademark Cases. No. (Annexes B. respondents pointed to (1) the letter dated January 30. (Buayan Cattle Co." (p. Rep. 1981 which was declared abandoned as of February 16. its grant or denial rests upon the sound discretion of the Court except on a clear case of abuse (Belish Investment & Finance Co. while Director Sandico's certification contained similar conditions as follows: This Certification. vs. and granted the issuance of a writ of preliminary injunction enjoining Fortune. the defendant may. however. do or continue the doing of the act which the plaintiff asks the court to restrain. 1984. the respondent court's denial of the prohibitive writ constituted excess of jurisdiction and grave abuse discretion. 138. 166. Generally. Director of Patents (p. 1986 of Cesar G. Pitted against the petitioners' documentary evidence. Diaz. (pp. In fact. In a third official communication dated April 8. State House. and thus make ineffectual the final judgment rendered afterwards granting the relief sought by the plaintiff (Calo vs.

No. 145 SCRA 139). Sheriff of Manila. pp. 91332). 55. In addition. nevertheless. Inc.R. whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty-nine. after having found that the trial court had committed grave abuse of discretion and exceeded its jurisdiction for having refused to issue the writ of injunction to restrain private respondent's acts that are contrary to equity and good conscience.) Petitioners. for unfair competition. . 638. by treaty.lower court does not grant preliminary injunction. Rollo. (pp. No. The specific taxes being paid is the sum total of P120. the motion to file a counterbond is granted. it lifted the injunction in violation of section 6 of Rule 58 of the Rules of Court. premised on the filing of a sufficient counterbond to answer for whatever perjuicio petitioners may suffer as a result thereof. . contrary to law and jurisprudence.120.R. 91332.98 from January to July 1989. thereby ignoring not only the mandates of the Trademark Law. it made a complete about face for legally insufficient grounds and authorized the private respondent to continue performing the very same acts that it had considered contrary to equity and good conscience.) After private respondent Fortune's motion for reconsideration was rejected. and the admonitions of the Supreme Court. . 21-A. 25-26. The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademark in question and the filing of the counterbond will amply answer for such damages. convention or law. vs. or false designation of origin and false description. as amended. . After a thorough re-examination of the issues involved and the arguments advanced by both parties in the offer to file a counterbond and the opposition thereto. WE believe that there are sound and cogent reasons for US to grant the dissolution of the writ of preliminary injunction by the offer of the private respondent to put up a counterbond to answer for whatever damages the petitioner may suffer as a consequence of the dissolution of the preliminary injunction. the petitioner further argued that doing business in the Philippines is not relevant as the injunction pertains to an infringement of a trademark right. (pp. II. Rollo in G. it required. While the rule is that an offer of a counterbond does not operate to dissolve an injunction previously granted. Petition. . The petitioners argued in their comment that the damages caused by the infringement of their trademark as well as the goodwill it generates are incapable of pecuniary estimation and monetary evaluation and not even the counterbond could adequately compensate for the damages it will incur as a result of the dissolution of the bond. otherwise known as the Corporation Law. 24-25. as foreign corporations not engaged in local commerce. Any foreign corporation or juristic person to which a mark or trade-name has been registered or assigned under this act may bring an action hereunder for infringement. grants a similar privilege to corporate or juristic persons of the Philippines.) 73 . (pp. the instant petition casting three aspersions that respondent court gravely abused its discretion tantamount to excess of jurisdiction when: I.R. No. Hence.) To sustain a successful prosecution of their suit for infringement. in turn. Rollo in G. (As inserted by Sec. petitioners should be using actually their registered trademarks in commerce in the Philippines. 165-167. it is equally true that an injunction could be dissolved only upon good and valid grounds subject to the sound discretion of the court. Rollo in G. 53-54. at the time it brings complaint: Provided. rely on section 21-A of the Trademark Law reading as follows: Sec. 7 of Republic Act No. (Service Specialists. . That the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled. to wit: The private respondent seeks to dissolve the preliminary injunction previously granted by this Court with an offer to file a counterbond. 91332. It was pointed out in its supplemental motion that lots of workers employed will be laid off as a consequence of the injunction and that the government will stand to lose the amount of specific taxes being paid by the private respondent. . the appellate court may grant the same. the judicial admission of private respondent that it will have no more right to use the trademark "MARK" after the Director of Patents shall have rejected the application to register it. As WE have maintained the view that there are sound and good reasons to lift the preliminary injunction. a motion to dissolve the disputed writ of preliminary injunction with offer to post a counterbond was submitted which was favorably acted upon by the Court of Appeals. and III. . that in order that petitioners may suffer irreparable injury due to the lifting of the injunction. petitioners. . filed their own motion for re-examination geared towards reimposition of the writ of preliminary injunction but to no avail (p. 295. the international commitments of the Philippines.

Rollo in AC-G.R." Petitioner argues that Section 21-A militates against respondent's capacity to maintain a suit for cancellation... SP No. as amended. how acquired. 13132. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. 28. "whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty-nine. before a foreign corporation may bring an action. 381). partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. 74 . 57. 91332. at the time it brings complaint. Co. enacted Republic Act No. tradenames and service marks owned by persons. In assailing the justification arrived at by respondent court when it recalled the writ of preliminary injunction. . . which is that the foreign corporation is allowed thereunder to sue "whether or not it has been licensed to do business in the Philippines" pursuant to the Corporation Law (precisely to counteract the effects of the decision in the Mentholatum case). Relative to this condition precedent.. otherwise known as the Corporation Law. 598. Atlantic Mutual Ins. Cebu Stevedoring Co. What are registrable. inserting Section 21-A in the Trademark Law. insofar as this discourse is concerned. or who renders any lawful service in commerce. tradenames and service marks. SP No. 21.. and which they desire to impress upon us is the protection they enjoy under the Paris Convention of 1965 to which the Philippines is a signatory. purposely to "counteract the effects" of said case. the conclusion reached by petitioners is certainly correct for the proposition in support thereof is embedded in the Philippine legal jurisprudence. there is no necessity to treat the matter with an extensive response because adherence of the Philippines to the 1965 international covenant due to pact sunt servanda had been acknowledged in La Chemise (supra at page 390). partnerships or associations domiciled in the Philippines and by persons. no condition as to the possession of a domicile or establishment in the country where protection is claimed may be required of persons entitled to the benefits of the Union for the enjoyment of any industrial property of any industrial property rights. Ownership of trademarks. it may be observed that petitioners were not remiss in averring their personality to lodge a complaint for infringement (p. on May.) However. it is not sufficient for a foreign corporation suing under Section 21-A to simply allege its alien origin. to the effect that a foreign corporation not doing business in the Philippines may have the right to sue before Philippine Courts. 1991 Ed. (As amended by R. p. Petition. further. The argument misses the essential point in the said provision. Ed. was qualified by this Court in La Chemise Lacoste S.. the provision under consideration. 1984.R.and in the service rendered. 29. Section 21-A.R. Ed. Indeed. or false designation of origin and false description. about necessity of actual commercial use of the trademark in the local forum: Sec. it must additionally allege its personality to sue. 4 Martin. Sec. 75. . (p. 1988. 638. p. 865). and such fact is officially certified. Indeed. it may be stated that the ruling in the Mentholatum case was subsequently derogated when Congress. there can be no disagreement to the guiding principle in commercial law that foreign corporations not engaged in business in the Philippines may maintain a cause of action for infringement primarily because of Section 21-A of the Trademark Law when the legal standing to sue is alleged. by the government of the foreign country to the Government of the Republic of the Philippines. 2. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business. since it requires. — Trademarks. Director of Patents (41 SCRA 50 [1971]) by then Justice (later Chief Justice) Makalintal that: Parenthetically. 103). (at p. with a certified true copy of the foreign law translated into the English language. or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed. Another point which petitioners considered to be of significant interest. by actual use thereof in manufacture or trade. No. Given these confluence of existing laws amidst the cases involving trademarks. for unfair competition. which petitioners have done in the case at hand. That said trademarks. 75. tradenames. Judging from a perusal of the aforequoted Section 21-A. Rollo in AC-G. Fernandez (129 SCRA 373 [1984]). corporations.A.) Yet petitioners' perception along this line is nonetheless resolved by Sections 2 and 2-A of the Trademark Law which speak loudly. 2-A. which allows a foreign corporation or juristic person to bring an action in Philippine courts for infringement of a mark or tradename. vs. 1 Regalado.A. Rather. Inc. but existing adjective axioms require that qualifying circumstances necessary for the assertion of such right should first be affirmatively pleaded (2 Agbayani Commercial Laws of the Philippines. vs. corporations. p. Provided. Yet. No. Rev. 1986. Rollo in G. And provided. 17 SCRA 1037 (1966). petitioners are of the impression that actual use of their trademarks in Philippine commercial dealings is not an indispensable element under Article 2 of the Paris Convention in that: (2) . that its trademark or tradename has been registered under the Trademark Law.to drive home the point that they are not precluded from initiating a cause of action in the Philippines on account of the principal perception that another entity is pirating their symbol without any lawful authority to do so. p. 13132) especially so when they asserted that the main action for infringement is anchored on an isolated transaction (p. in business. Fifth Rev. Remedial Law Compendium. it was stressed in General Garments Corporation vs. Philippine Commercial Laws.

Fourth ed. The evidence for respondent must be clear. to national legislative enactments (Salonga and Yap.. issue circulars. 589591. v. definite and free from inconsistencies. emphasis supplied. Jr. For trademark is a creation of use. it did not present proof to invest it with exclusive. and 8-b) submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no commercial value".) In other words. xxx xxx xxx These provisions have been interpreted in Sterling Products International. Intermediate Appellate Court. One may make advertisements. 203 SCRA 583 [1991]. at pp. The underlying reason for all these is that purchasers have come to understand the mark as indicating the origin of the wares.. It is thus incongruous for petitioners to claim that when a foreign corporation not 75 . 1971 Ed. (As amended by R. Gaw Lui. We rule[d] in Pagasa Industrial Corporation v. petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. service mark. according to Justice Gutierrez. (Kabushi Kaisha Isetan vs. of considerable sales since its first use. Flowing from this is the trader's right to protection in the trade he has built up and the goodwill he has accumulated from use of the trademark. p. a prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce. . No. It requires actual commercial use of the mark prior to its registration. Inc. 118 SCRA 526 [1982]. business or service of others. give out price lists on certain goods. Withal. . Farbenfabriken Bayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way: 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 prerequisite to the acquisition of the right of ownership over a trademark. (Sy Ching v. The aforequoted basic provisions of our Trademark Law. It is unknown to Filipino except the very few who may have noticed it while travelling abroad. rules of international law are given a standing equal. Court of Appeals. 589-590. (at pp. p.) Following universal acquiescence and comity. Such right grows out of their actual use. Respondent did not expect income from such "samples". 638). as in this section provided. Peters. heretofore or hereafter appropriated. have been construed in this manner: A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. 7-a. International Law and World Organization. continuous adoption of the trademark which should consist among others. Under the doctrine of incorporation as applied in most countries. yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark. tradename.. . Adoption is not use. 20). Intermediate Appellate Court (203 SCRA 583 [1991]). and no proof were presented to show that they were subsequently sold in the Philippines. 44 SCRA 148149) "Samples" are not for sale and therefore. The Trademark law is very clear. the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. Public International Law. Under the law. The ownership or possession of a trademark. xxx xxx xxx . it has no right to the remedy it seeks. the fact of exporting them to the Philippines cannot be considered to be equivalent to the "use" contemplated by the law. .A. The invoices (Exhibits 7. There is no dispute that respondent corporation was the first registrant. 16). Adoption alone of a trademark would not give exclusive right thereto. Great Britain. Emphasis Supplied) The records show that the petitioner has never conducted any business in the Philippines. not superior. There were no receipts to establish sale. to distinguish his merchandise. Paras. In fact. It has never paid a single centavo of tax to the Philippine government.may appropriate to his exclusive use a trademark. It has never promoted its tradename or trademark in the Philippines. Court of Appeals (118 SCRA 526 [1982]): 3. High Court of Judiciary of Scotland. in Kabushi Kaisha Isetan vs. v. shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. (Pagasa Industrial Corp. 8 Sessions 93. but these alone would not give exclusive right of use. 1974. or a service mark not so appropriated by another. a tradename. . business or service from the merchandise. 1906. our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen vs.

"submitted the actual labels or packaging materials used in selling its "Mark" cigarettes. 42 SCRA 577 [1971]. has yet to be established by petitioners by the requisite quantum of evidence in civil cases. Going back to the first assigned error. 2. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. that the manner the complaint was traversed by the answer is sufficient to tilt the scales of justice in favor of private respondent." Petitioners therefore. Revised Rules of Court). 6. or for motion of dissolution of injunction. 1985. complainant's right or title must be undisputed and demonstrated on the strength of one's own title to such a degree as to unquestionably exclude dark clouds of doubt. Inc. New Civil Code. 100 Phil. the fact of exclusive ownership cannot be made to rest solely on these documents since dominion over trademarks is not acquired by the mere fact of registration alone and does not perfect a trademark right (Unno Commercial Enterprises. we can not help but notice the manner the ascription was framed which carries with it the implied but unwarranted assumption of the existence of petitioners' right to relief. CFI of Negros Occidental. vs.R. 82). when these averments are juxtaposed with the denials and propositions of the answer submitted by private respondent. It must be emphasized that this aspect of exclusive dominion to the trademarks. it must be modified.. rather than on the weakness of the adversary's evidence. involved as there is mere interlocutory order (Villarosa vs.licensed to do business in Philippines files a complaint for infringement. Grounds for objection to. if granted ex parte. Indeed. may be dissolved. Even if we disregard the candid statements of petitioners anent the absence of business activity here and rely on the remaining statements of the complaint below. we are extremely bothered by the thought of having to participate in throwing into the streets Filipino workers engaged in the manufacture and sale of private respondent's "MARK" cigarettes who might be retrenched and forced to join the ranks of the many unemployed and unproductive as a result of the issuance of a simple writ of preliminary injunction and this. for its part. not to mention the diminution of tax revenues represented to be close to a quarter million pesos annually. Sr. 76 . No. p. there will be no damage that would be suffered by petitioners inasmuch as they are not doing business in the Philippines. 91332. 207 SCRA 622 [1992]). 91332) indicating that they are not doing business in the Philippines. Rollo in G. it cannot be gainsaid that respondent court acted well within its prerogatives under Section 6. In point of adjective law. 3 Martin. It may further be refused or. p.) More telling are the allegations of petitioners in their complaint (p. Court of Appeals. the entity need not be actually using its trademark in commerce in the Philippines. On the other hand. what appears to be the insurmountable barrier to petitioners' portrayal of whimsical exercise of discretion by the Court of Appeals is the well-taken remark of said court that: The petitioner[s] will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademark in question and the filing of the counterbond will amply answer for such damages. Francisco. 120 SCRA 804 [1983]). vs. without prior proof of transgression of an actual existing right. Rule 129. Rules of Court. 225. If it appears that the extent of the preliminary injunction granted is too great. Rollo in G.R. if the status quo is maintained. Second ed. together with the corollary allegation of irreparable injury. It is virtually needless to stress the obvious reality that critical facts in an infringement case are not before us more so when even Justice Feliciano's opinion observes that "the evidence is scanty" and that petitioners "have yet to submit copies or photographs of their registered marks as used in cigarettes" while private respondent has not. Rule 58. What we are simply conveying is another basic tenet in remedial law that before injunctive relief may properly issue. It may also be refused or dissolved on other grounds upon affidavits on the part of the defendants which may be opposed by the plaintiff also by affidavits. Section 4. Rule 58 of the Revised Rules of Court: Sec.. To our mind. may not be permitted to presume a given state of facts on their so called right to the trademarks which could be subjected to irreparable injury and in the process. petitioner must show that there exists a right to be protected and that the facts against which injunction is directed are violative of said right (Searth Commodities Corporation vs.R. for these frank representations are inconsistent and incongruent with any pretense of a right which can breached (Article 1431. 91332) as well as in the very petition filed with this Court (p. It may be added in this connection that albeit petitioners are holders of certificate of registration in the Philippines of their symbols as admitted by private respondent. during the pendency of the case before the trial court. if it appears after hearing that although the plaintiff is entitled to the injunction. No. 1986 ed. with or without notice to the adverse party. inasmuch as the possibility of irreparable damage. (p. suggest the fact of infringement. may be dissolved. the supposed right of petitioners to the symbol have thereby been controverted. It cannot be denied that our reluctance to issue a writ of preliminary injunction is due to judicial deference to the lower courts. Inc. Section 3. 319. Rules of Court. On the economic repercussion of this case. to be entitled to an injunctive writ. Such a ploy would practically place the cart ahead of the horse.. With reference to the second and third issues raised by petitioners on the lifting of the writ of preliminary injunction. Rollo G. Teodoro. is no ground for injunction being mere damnum absque injuria (Talisay-Silay Milling Co. 25 [1956]). General Milling Corporation. upon the insufficiency of the complaint as shown by the complaint itself. and the defendant files a bond in an amount fixed by the judge conditioned that he will pay all damages which the plaintiff may suffer by the refusal or the dissolution of the injunction. the issuance or continuance thereof. the petition has its roots on a remedial measure which is but ancillary to the main action for infringement still pending factual determination before the court of origin. Far from it. No.. This is not to say. as the case may be. if granted. still. 54. — The injunction may be refused or. would cause great damage to the defendant while the plaintiff can be fully compensated for such damages as he may suffer. however.

J. dissenting: I find myself unable to join in the opinion prepared by my distinguished brother. dated 26 April 1973. 640 [1974].) In view of the explicit representation of petitioners in the complaint that they are not engaged in business in the Philippines. on the following instances: (1) If there is insufficiency of the complaint as shown by the allegations therein. WHEREFORE. No. concurs. p. concurs in the result. as evidenced by Philippine Patent Office Trademark Certificate of Registration No. it inevitably follows that no conceivable damage can be suffered by them not to mention the foremost consideration heretofore discussed on the absence of their "right" to be protected.. Petitioners alleged that the name Canadian Tabacofina Ltd. and Fabriques de Tabac Reunies. U. 1963.. 1989 are hereby AFFIRMED. 99. It seems to me that the issues involved in this case are rather more complex than what has been assumed to be the case by the majority opinion. Philippine Ready Mix Concrete Co. J. (2) If it appears after hearing that although the plaintiff is entitled to the injunction. Verily. is registered owner of the trademark "MARK VII" for cigarettes. Modification of the injunction may also be ordered by the court if it appears that the extent of the preliminary injunction granted is too great. is registered owner of the trademark "LARK" also for cigarettes. dated 28 May 1964. Petitioners Benson & Hedges (Canada). or. 81). 1970 ed..A. 1986 ed. Romero. while the plaintiff can be fully compensated for such damages as he may suffer. This Trademark Certificate of Registration was originally issued in the name of Canadian Tabacofina Ltd. the issuance or continuance thereof would cause great damage to the defendant. Inc. (3) On the other grounds upon affidavits on the part of the defendant which may be opposed by the plaintiff also affidavits. S.. Rules of Court. Separate Opinions FELICIANO. Inc. 88 Phil. 460 [1951]). Melo.A. S.supra. at p. 888. may be dissolved.. there is set out below a statement of the relevant facts (as I see them) that is more extensive than what is ordinarily found in dissenting opinions. 79 Phil. The statement also requested that the trademark be registered in the Philippine Patent Office on the Principal Register in accordance with Section 37 of R. under Certificate of Registration No. 1989 and November 29. Jr. p. on the Principal Register. 3 Moran. Philip Morris. Rules of Court. For this and related reasons.. Ramos. must file a bond in an amount fixed by the judge conditioned that he will pay all damages which plaintiff may suffer by the refusal or the dissolution of the injunction. as evidenced by Philippine Patent Office Trademark Certificate of 77 . took no part. was later changed to Benson & Hedges (Canada) Ltd. the same may be cured by appeal and not in the form of a petition for certiorari (Clark vs. SO ORDERED. Inc." Fabriques de Tabac Reunies. Inc." and that trademark had "been in actual use in commerce over the Philippines continuously for two months. and later assigned to Benson & Hedges (Canada). Its ownership thereof is evidenced by Philippine Patent Office Trademark Certificate of Registration No. The statement attached to the Certificate of Registration states that the trademark "MARK VII" had been registered in the United States Patent Office. are organized and existing under the law of Canada and Switzerland. injunction may be refused. J. Francisco. is the registered owner of the trademark "MARK TEN" also for cigarettes. and assuming in gratia argumenti that respondent court erroneously lifted the writ it previously issued. At any rate. if granted.A. in this case. is a corporation organized and existing under the law of Virginia. The statement attached thereto stated that the "date of first use of the trademark 'MARK TEN' in trade in or with the Philippines is April 15. respectively. 18723.Under the foregoing rule. and mindful of the rule that a writ of preliminary injunction is an interlocutory order which is always under the control of the court before final judgment. This trademark Certificate of Registration was renewed on 28 May 1984. Benson & Hedges (Canada). more so when extinction of the previously issued writ can even be made without previous notice to the adverse party and without a hearing (Caluya vs. the petition is hereby DISMISSED and the Resolutions of the Court of Appeals dated September 14.. Refusal or dissolution may be granted in this case with or without notice to the adverse party. on the Principal Register.. Inc. petitioners' criticism must fall flat on the ground.S. 268. so to speak. as amended. The defendant.A. 166. Petitioner Philip Morris. J. Davide. 11147.931 issued on 7 April 1970. both wholly owned subsidiaries of Philip Morris. Bidin. Inc. (3 Martin.

1963. members of the Convention of Paris for the Protection of Industrial Property." Fortune's manufacture and sale of its "MARK" cigarettes could not be said to be causing petitioners "irreparable damage" within the Philippines. that they were owners of Philippine Patent Office Trademark Certificates of Registration which were in full force and effect. authority or license from petitioners." Petitioners then asked Fortune "to cease and desist from further manufacturing. that thereby the public and the patronizers of petitioners' products were being deceived into buying Fortune's cigarettes under the impression and mistaken belief that Fortune's cigarettes were identical with. In respect of the first point. the trial judge felt that because the Director of Patents had not. manufactured. that the continued unauthorized and unlicensed manufacture and sale by Fortune of its infringing products during the litigation would work injustice and cause irreparable injury to petitioners in violation of their property rights and moreover tend to render the judgment which the court might render ineffectual. or came from the same source as. that under that Convention each member-country undertakes to prohibit the use of a trademark which constitutes a reproduction. petitioner through their lawyers wrote to Fortune stating that the manufacturing. while noting that petitioners were holders of Philippine Certificates of Trademark Registration. exportation and advertisement of their cigarette products in the Philippines." "MARK TEN. Secondly.A. which it was not." and "LARK. and for damages." and "LARK. 166. relied heavily on three (3) factors: Firstly. temporarily granting the request of Fortune for a permit to manufacture two (2) new brands of cigarettes. that Fortune's application for a registration as trademark of the word "MARK" for cigarettes was then pending before the Philippine Patent Office. private respondent Fortune Tobacco Corporation ("Fortune") commenced manufacturing and selling in the Philippines cigarettes under the brandname "MARK. that they had registered those trademarks in their respective countries of origin and in other countries the world and that by virtue of their "long and extensive use [had] gained international fame and acceptance." Petitioners listed their Philippine Certificates of Registration for the trademarks "MARK VII. No. Conrado P. and after trial. manufacture. 10953. Petitioners accordingly asked for a writ of preliminary injunction to restrain Fortune from manufacturing or selling "MARK" cigarettes. which countries were. imitation or translation of a mark already belonging to a person entitled to the benefits of the Convention and use for identical or similar goods. the trial court was obviously heavily influenced by Fortune's argument that because petitioners were not doing business in the Philippines." the grant of a preliminary injunction was premature. 3 78 . On 18 August 1982. that Fortune was the "only party authorized" by the Bureau of Internal Revenue ("BIR") to manufacture cigarettes bearing the mark "MARK" in the Philippines. and advertised and marketted in the Philippines at least since 1964 and have continued to be so to present. S. importation. covering "MARK VII. In respect to the second point. selling or advertising 'MARK' cigarettes. with knowledge of the popularity of petitioners' marks and their Philippine registrations. In their complaint. S." that they had their respective real and effective industrial or commercial establishments in the United States. had long been using trademark "LARK" throughout the world. 1963" and has been continuously used by it "in trade in or with the Philippines since February 6. Fortune filed an Opposition to petitioners' prayer for preliminary injunction. the trial court 1issued an Order denying petitioners' motion for preliminary injunction. advertised and sold cigarettes bearing the identical or confusingly similar trademark "MARK" which unauthorized use constituted an act of infringement under Section 22 of R. On 28 March 1983." The trial judge also noted that the BIR letter contained the following paragraph: Please be informed further that this authority herein granted does not give you protection against any person or entity whose rights may be prejudiced by infringement or unfair competition in relation to your above named brands/trademarks." Fortune also filed on 13 February 1981 with the Philippine Patent Office an application for registration of "MARK" as a trademark for cigarettes. petitioners alleged that they were not doing business in the Philippines but had nonetheless the right and the capacity to bring the instant suit. like the Philippines. that Fortune had without previous consent. dated 25 March 1964. This Trademark Certificate of Registration was originally issued in the name of Ligget and Myres Tobacco Company was later assigned to Fabriques de Tabac Reunies.A. petitioners' products or that Fortune was licensee of petitioners." Sometime before 17 October 1981. selling and advertising of "MARK" cigarettes by Fortune constituted an "infringement or an act of unfair competition with" petitioners' "well-known international trademarks used on cigarettes and tobacco products which were registered worldwide and with the Philippine Patent Office. that petitioner Fabriques de Tabac Reunies. With regard to the third point. By a letter dated 17 October 1981. Metro Manila (Civil Case No. to make such preliminary injunction permanent and to order Fortune's infringing materials to be destroyed. Canada and Switzerland. The statement attached to this Certificate of Registration states that the trademark "LARK" was first used by Ligget and Myres Tobacco Company on 31 May 1920." otherwise appropriate court actions would be filed without further notice. S. Petitioners alleged that the name of Liggett and Myres Tobacco Company was changed later to Fabriques de Tabac Reunies. In rendering that order.Registration No. at that point. that the infringement by Fortune of petitioners' trademarks have inflicted damages upon petitioners.A. and Thirdly." all for cigarettes (except the last which also covered chewing and smoking tobacco). and first used by it "in commerce in or with the Philippines on February 6." "MARK TEN. as amended. petitioners commenced action before the Court of First Instance of Pasig. 47374). that petitioners were foreign corporations not doing business in the Philippines. one of which was "MARK. Diaz. which meant that "they [were] not engaged in the sale.A. the judge noted a letter dated 30 January 1979 2 of the then Acting Commissioner of Internal Revenue Mr. the trial court. including the Philippines where its products bearing the trademark "LARK" had been sold in the duty-free market. denied Fortune's pending application for registration of its trademark "MARK.

" and "LARK". Hence. No. Act No. On the basis. Jaramillo. d." and secondly. 1981 which was declared abandoned as of February 16. Jr. according to the trial judge." This Paper No. petitioners had not shown that the products they sought to protect from Fortune's "MARK" cigarettes were "in actual use and available for commercial purposes anywhere in the Philippines.. on 15 April 1983. 4 (d) of Rep. 139 SCA rollo). Judge Galing in effect reiterated Judge Reyes's position that until the Director of Patents had definitely acted upon Fortune's application for registration of "MARK. this time presided over by Judge Nicolas Galing. the Court referred the Petition to the Court of Appeals. No." 5 Further." The Court of Appeals said in pertinent part: There is no dispute that petitioners are the registered owners of the trademarks for cigarettes "MARK VII. the trial court. c. and after an offer of exhibits by the parties respectively. reconsideration of Judge Reyes' Order denying preliminary injunction. Philippine Patent Office. the word "Mark" is generic and therefore incapable of exclusive appropriation. The foregoing documents or communications mentioned by petitioners as "the changes in material facts which occurred after March 28. petitioners invited attention to Paper No. are not also questioned by respondents. issued an Order dated 22 April 1987 denying once more the motion for issuance of a writ of preliminary injunction. the trademark "MARK" is "confusingly similar" to the trademarks of petitioners. Jr. 1984. Judge Reyes issued on 5 April 1984 another Order denying the Motion for Reconsideration. Thus. 106. stating that: This application [for registration of "Mark"] has been examined. J. April 6. 18723 for cigarettes. 7 (Emphasis supplied) 79 . 78141. Judge Reyes denied petitioners' motion for reconsideration. No. 10953 for cigarettes. petitioners explained in some detail how Fortune's use of its mark "MARK" was "destructive of [petitioners'] property right to [their] registered trademarks. registration is barred under Sec. The Court ordered respondents to file their Comments on the Petition and on 30 September 1987. Makati. Palisoc. 44008 filed on February 13. Furthermore. "enjoining the private respondents. "Mark VII" with Reg. registration was barred under Sec. petitioners assailed Fortune's argument that issuance of preliminary injunction would cause "loss of revenue and taxes to the Government" and that more damages would be sustained by Fortune than by petitioners since the petitioners do not market their cigarettes in the Philippines. After Fortune had filed an Opposition to petitioners' Motion for Reconsideration. employees and representatives from manufacturing. Petitioners then filed a Petition for Review with the Supreme Court. the Court of Appeals.. Act No. Subject mark is confusingly similar with the following marks on file: a. Senior Trademark Examiner. 6 rendered a decision on 5 May 1989 setting aside the 22 April 1987 order of the trial court and ordering issuance of a writ of preliminary injunction upon filing of a bond by petitioners in the sum of P200. Judge Galing relied on two (2) points: firstly. Metro Manila. "Mark" with Reg. apparently gave no weight at all to this caveat. "Lark" with Reg. 1983". (Annexes B. Luis M. In their Second Motion. 107.. 1986. After Fortune had filed an Opposition to petitioners' Second Motion. to the effect that Fortune's application for the mark "MARK" for cigarettes was declared abandoned as of 16 February 1986 and was now deemed forfeited. there being no revival made pursuant to Rule 98 of the Revised Rules of Practitioners in Trademark Cases. hence. No. through Cacdac. its agents. Petitioners sought. C and D. 11147 for cigarettes.' (p. as amended (pp.The trial judge. Subject mark has no trademark significance and can not serve its purpose as to indicate the source and origin of goods. Petition). which Petition was docketed as G. the trademark application of private respondent for the mark "MARK" under Serial No. In addition. 166. and petitioners had filed their Reply and Fortune a Rejoinder. Trademark Examiner. and Wilfredo T. As found and reiterated by the Philippine Patent Office in two (2) official communications dated April 6. 166 as amended. b.R. relating to Fortune's application for registration of its brandname "MARK. 1986.000. In his second order. "Mark Ten" with Reg." petitioners' prayer for preliminary injunction could not be granted. No. Assistant Director. CA rollo). In this order. Caption mark of the application must tally with the drawing on file. In a third official communication dated April 8. dated 6 April 1983. More than two (2) years later. is now deemed forfeited. 4 (Emphasis supplied) Petitioners also invited attention to a certification dated 8 August 1986 issued by Mr." "MARK TEN. Daca. however. the trial judge laid great stress on the fact that Fortune's application for registration of its trademark "MARK" for cigarettes remained subsisting. SR-2659 for cigarettes. it could be refiled and was in fact re-filed. it appeared that while Fortune's original application had been abandoned. selling and/or advertising "MARK" cigarettes until further orders. 1983 and January 24. 3 reproduced a letter to Fortune's counsel by Bienvenido A. 3. petitioners filed a "Second Motion for Issuance of Preliminary Injunction" dated 1 September 1986. In due course of time. 4(d) of Rep. 1983.00 to be approved by the appellate court.

Fortune had been authorized by the BIR to manufacture "MARK" cigarettes. the defendant may. Jr. Quintillan.28. the Court of Appeals issued a Minute Resolution stating that the issues and arguments in Fortune's motion for reconsideration had been "fully discussed" in the Decision sought to be reconsidered. On 14 September 1989. Statement House. Cuneta.The Court of Appeals also noted the BIR letter of 30 January 1979 temporarily granting Fortune's request for a permit to manufacture two (2) new brands of cigarettes. Quintillan. It when went on to say: After a thorough re-examination of the issues involved and the arguments advanced by both parties in the offer to file a counterbond and the opposition thereto. vs." that Fortune's application for registration of its brandname "MARK" with the Philippine Patent Office "still pending" and not "finally rejected" by the Director of Patents. before final judgment. it had paid the amount of P120.000. 76 Phil. Petitioners' right of exclusivity to their registered trademarks being clear and beyond question. 166 as amended and the Revised Rules of Practice in Trademark Cases. Generally.177. including one branded "MARK. Ruiz. v.00 to answer for any damages petitioners may suffer as a consequence of such lifting. If it is not issued.940. filed on 16 September 1986. Republic Act No. The requisites for the granting of preliminary injunction are the existence of the right protected and the facts against which the injunction is to be directed as violative of said right. "thereby generating much needed funds for the Government. supra. and accordingly denied the Motion for Reconsideration. vs. (Buayan Cattle Co. (Buayan Cattle Co." that. that Director Sandico's certification contained the following caveat or qualification: This certification. On 12 July 1989. v. A "Supplemental Motion to Lift Writ of Preliminary Injunction with Offer of Counterbond" dated 17 August 1989 was next filed by Fortune. where it reiterated the basic arguments it previously made. In this "Supplemental Motion. Inc. Sheriff of Manila. WE believe that there are sound and cogent reasons for Us to grant the dissolution of the writ of preliminary injunction by the offer of the private respondent to put up a counterbond to answer for whatever damages the petitioner may suffer as a consequence of the dissolution of the preliminary injunction. Fortune also referred to its employees assigned to the manufacture of "MARK" cigarettes who were apparently apprehensive that their services would eventually be terminated and that they would join the ranks of the unemployed. 9 (Emphasis supplied) Fortune moved for reconsideration of the Decision of the Court of Appeals insisting that petitioners must first prove their "clear.. Ortigas & Co. If the lower court does not grant preliminary injunction." Fortune averred that it had paid to the BIR for 1988 the amount of P181. In its Resolution.38 for specific taxes." that petitioners had not suffered any "great and irreparable injury to speak of" because "petitioners have never done business in this country in the past nor in the future. The Court of Appeals also referred to the certificate dated 26 September 1986 of Mr. then Director of Patents. v. unmistakable and unquestioned right to the writ. Petitioners filed an Opposition to the "Motion to Dissolve" and a Comment on the "Supplemental Motion" of Fortune. the Court of Appeals once more through Cacdac. issued a Resolution lifting the preliminary injunction it had earlier granted upon the filing of counterbond by private respondent in the amount of P400. issued upon request of Fortune's counsel stating that there was a pending application for registration of the trademark "MARK" for cigarettes under Serial No.735. the respondent court's denial of the prohibitive writ constituted excess of jurisdiction and grave abuse of discretion. does not give protection as against any person or entity whose right may be prejudiced by infringement or unfair competition in relation to the aforesaid trademark nor the right to register as contrary to the provisions of the Trademark Law. Sandico. on the other hand. J. do or continue the doing of the act which the plaintiff asks the court to restrain. 445). noting at the same time. Roldan. It is a writ framed according to the circumstances of the case commanding an act which the Court regards as essential to justice and restraining an act it deems contrary to equity and good conscience (Rosauro vs. while for January to July 1989.120. Cesar G." and the caveat (earlier noted) 8 that the BIR's authorization would not give Fortune any protection against any person or entity whose rights may be prejudiced by infringement or unfair competition on the part of Fortune. and thus make ineffectual the final judgment rendered afterwards granting the relief sought by the plaintiff (Calo vs. that no new arguments were raised. 145 SCRA 139). 151 SCRA 636). 151 SCRA 570). 125 SCRA 276). Fortune then filed a "Motion to Dissolve Writ of Preliminary Injunction with Offer to File Counterbond" date 25 July 1989. 59872. the appellate court may grant the same (Service Specialists. its grant or denial rests upon the sound discretion of the Court except on a clear case of abuse (Belish Investment & Finance Co. (Emphasis supplied) The Court of Appeals then went on to say that: [We] believe and hold that petitioners have shown a prima facie case for the issuance of the writ of prohibitory injunction for the purposes stated in their complaint and subsequent motions for the issuance of the prohibitory writ. coupled with the possible damages it would suffer. the Court of Appeals referred to the "lots of workers employed [who] will be laid off as a consequence of the injunction" and that Government "will stand to lose the amount of specific taxes being paid by" Fortune. The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary 80 . 148 SCRA 326). however.

c. under Section 6. that whatever damage petitioners may be suffering is negligible when compared to the taxes that would have to be foregone by the Government considering that private respondent "paid an annual specific tax of P240 Million only on the manufacture and sale of "MARK cigarettes. "MARK VII." "MARK VII" or "LARK" in this country. While the rule is that an offer of a counterbond does not operate to dissolve an injunction previously granted. is there a clear legal right to the relief asked by petitioners in the form of a preliminary injunction to restrain private respondent from manufacturing." notwithstanding "false allegation" that petitioners have been "using" the said trademarks "in commerce and trade" in the Philippines since 1963 up to the present. and the admonitions of the Supreme Court. it made a complete about face for legally insufficient grounds and authorized private respondent to continue performing the very same acts that it had considered contrary to equity and good conscience. nevertheless. It is important to stress the legal effects of registration of a trademark in the Principal Register in the Office of the Director of Patents. petitioners which are foreign corporations "based in three different countries" have not contributed anything to Government tax revenues. of a mark or a trade name shall be 81 . petitioners should be using actually their registered trademarks in commerce in the Philippines.injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademarks in question and the filing of the counterbond will amply answer for such damages. 20. 10 (Emphasis supplied) Petitioners filed a Motion for Reconsideration. contrary to law and jurisprudence that in order that petitioners may suffer irreparable injury due to the lifting of the injunction. thereby ignoring not only the mandates of the trademark law. petitioners are not doing business in the Philippines. that the Court of Appeals gravely abused its discretion amounting to excess of jurisdiction when it lifted the injunction in violation of Section 6 of Rule 58 of the rules of Court. the status of which application may be noted later. sets out the principal legal effects of such registration: Sec. Private respondent also stresses that the right of petitioners to the injunction was still being litigated before the trial court. b. without success. 3. Reformulating the issues raised by the petitioners here. private respondent's trademark "MARK" is not registered in the Principal Register in the Office of the Director of Patents. as amended. selling and distributing cigarettes under the trademark "MARK"? The second question is: are private respondent's acts complained of by petitioners causing irreparable injury to petitioners' rights in the premises? These two (2) basic issues are obviously related and need to be addressed together. — A certificate of registration. which act was within the sound discretion of the Court of Appeals. we think the principal issues may be reduced to the following: firstly. In the instant Petition. Upon the other hand. I The first point that needs to be stressed is that petitioners have Philippine Certificates of Registration for their trademarks "MARK TEN". it is equally true that an injunction could be dissolved only upon good and valid grounds subject to the sound discretion of the court. importing or selling "MARK TEN. the petitioners are not suffering any irreparable damage by the lifting of the preliminary injunction by the Court of appeals. As WE have maintained the view that there are sound and good reasons to lift the preliminary injunction the motion to file a counterbond is granted. the judicial admission of private respondent that it will have no more right to use the trademark "MARK" after the Director of Patents shall have rejected the application to register it. Private respondent stressed that petitioners "are not manufacturing. 166. Certificate of registration prima facie evidence of validity. private respondents is simply an applicant for registration of a mark. the international commitments of the Philippines. Rule 58 of the Rules of Court. Section 20 of R." and "LARK" in the Principal Register.A. No. petitioners make the following basic submissions: 1. The comment reiterated the basic arguments made by private respondent before the Court of Appeals: a." Private respondent claims that. that the Court of Appeals gravely abused its discretion amounting to excess of jurisdiction when.11 The Court required private respondent to file a comment. Whatever damages they might suffer are "based purely on speculation. in contrast. that the Court of Appeals gravely abused its discretion amounting to excess of jurisdiction when it required. 2. after having found that the trial court had committed grave abuse of discretion and exceeded its jurisdiction for having refused to issue the writ of injunction to restrain respondent's acts that are contrary to equity and good conscience. since by judicial admission. that the Court of Appeals lifted the writ of preliminary injunction it had earlier issued upon the submission of a counter bond in double the amount of the bond submitted by petitioners.

(3) In application for registration in the Principal Register. where such issue is essential for resolution of a case properly before the court. 12 the Court distinguished between the effects of registration in the Principal Register and registration in the Supplemental Register in the following manner: (1) Registration in the Principal Register gives rise to a presumption of the validity of the registration. the evidence of record is scanty.") It is not subject to opposition although it may be cancelled after its issuance." These circumstances.prima facie evidence of the validity of the registration. Private respondent has not. and of the registrant's exclusive right to use the same in connection with the goods. (Emphasis supplied) In Lorenzana v. This is not so in applications for registration in the Supplemental Register." when read or pronounced orally. private respondent filed an application for registration of its mark "MARK" for cigarettes with the Director of Patents soon after it commenced manufacturing and selling cigarettes trademark with "MARK. publication of the application is necessary. Gen. cannot be resolved without resolving the issue of claimed confusing similarity. whether preliminary or definitive. as amended. constitute idem sonansin striking degree. Private respondent has not included in the record a copy of its application for registration of "MARK" for cigarettes. 13(Emphasis supplied) When taken with the companion presumption of regularity of performance of official duty. Further. it will be seen that issuance of a Certificate of Registration of a trademark in the Principal Register also gives rise to the presumption that all requirements of Philippine law necessary for a valid registration (including prior use in commerce in the Philippines for at least two [2] months) were complied with and satisfied. A fortiori. serves as notice that the registrant is using or has appropriated the trademark. which would include a facsimile of the trademark being applied for." This application was abandoned or "forfeited". It also appears. In the case at bar. in a petition for cancellation. Under our case law. for its part. and their application for a preliminary injunction against private respondent. No. It is respectfully submitted that this position is both erroneous and unfortunate. while registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the registrant has used or appropriated it. There is no such presumption in registrations in the Supplemental Register. that private respondent later re-filed or reinstated its application for registration of "MARK" 15 and that. coupled with 82 .16 While final action does not appear as yet to have been taken by the Director of Patents on private respondent's application. In reliance upon that position. The Director of Patents in turn may well have refrained from taking final action on that application. In contrast. v. Petitioners have not submitted actual copies or photographs of their registered marks as used in cigarettes. the issuance of a Certificate of Registration of a trademark in the Principal Register by the Director of Patents would not prevent a court from ruling on whether or not the trademark so granted registration is confusingly similar with a previously registered trademark. both Judge Reyes and Judge Galing took the position that until the Director of Patents shall have finally acted on private respondent's application for registration of "MARK. this application remains merely an application and has not been granted and a Certificate of Registration in the Principal Register issued. there was at least a preliminary determination of the trademark examiners that the trademark "MARK" was "confusingly similar" with petitioners' marks "MARK VII. however. 129 SCRA 373 [1984]: "Registration in the Supplemental Register . and his right to the exclusive use thereof. registration in the Principal Register is a basis for an action for infringement. .A.A. (Le Chemise Lacoste. a mere application for registration cannot be a sufficient reason for denying injunctive relief. so far as the record here before us is concerned. Petitioners have appended to their Petition a photocopy of an advertisement of "MARK" cigarettes. 166." petitioners cannot be granted the relief of preliminary injunction. the registrant's ownership of the mark. Milling Corp. Registration in the Principal Register is constructive notice of the registrant's claims of ownership. the registrant's ownership of the mark or trade name. 17 In the trial court. Fernandez. business or services specified in the certificate. Certificates of registration under both Registers are also different from each other. Corollarilly. subject to any conditions and limitations stated therein. 120 SCRA 804 [1983]) and proceedings therein pass on the issue of ownership. while registration in the Supplemental Register is not. or after registration. Macagba. S." "MARK TEN" and "LARK" and that accordingly.. private respondent has kept its application for registration alive and pending. (2) Registration in the Principal Register is limited to the actual owner of the trademark (Unno Commercial Enterprises v. 14 for failure of private respondent to file a necessary Paper with the Director of Patent. (4) Proof of registration in the Principal Register may be filed with the Bureau of Customs to exclude foreign goods bearing infringing marks while it does not hold true for registrations in the Supplemental Register. It should be noted that "MARK" and "LARK. submitted the actual labels or packaging material used in selling its "MARK" cigarettes. petitioners' suit for injunction and for damages for infringement. . In the case at bar. out of deference to the courts. which may be contested through opposition or interference proceedings. Our courts have jurisdiction and authority to determine whether or not "MARK" is an infringement on petitioners' registered trademarks. even in the absence of a restraining order from the courts. The pendency of the application before the Director of Patents is not in itself a reason for denying preliminary injunction. "MARK" has taken over the dominant word in "MARK VII" and "MARK TEN. registration was barred under Section 4 (d) of R.

Switzerland and the United States required under Section 21-A of R. . Under Section 21-A of R. 166. No.A. — Trademarks. Article 2 paragraph 2 of the Paris Convention restrains the Philippines from imposing a requirement of local incorporation or establishment of a local domicile as a prerequisite for granting to foreign nationals the protection which nationals of the Philippines are entitled to under Philippine law in respect of their industrial property rights. if any. (Emphasis suppplied) It is also entirely clear that foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine courts to protect their rights as holders of trademarks registered in the Philippines. enjoy in all the other countries of the Union the advantages that their respective laws now grant. partnerships or associations domiciled in the Philippines and by persons. 83 . as amended. The net effect of the statutory and treaty provisions above referred to is that a corporate national of a member country of the Paris Union is entitled to bring in Philippine courts an action for infringement of trademarks.private respondent's failure to explain how or why it chose. also a country of the Union. no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.A. (2) However. Section 2 of R. 166 as amended is also set out in Article 2 of the Paris Convention for the Protection of Industrial Property ("Paris Convention"). It is thus necessary to determine what consequences. paragraph 2 also constitutes proof of compliance with the requirement of reciprocity between. corporations. No. Provided. No. No. however.A. corporations. . or may hereafter grant. under this statute. Private respondent. the advantages and protections which Philippine law grants to Philippine nationals. 18 Article 2 of the Paris Convention provides in relevant part: Article 2 (1) Nationals of any country of the Union shall. convention or law. paragraph 1 of the Paris Convention embodies the principle of "national treatment" or "assimilation with nationals. and such fact is officially certified. 166 as amended. trade names and service marks owned by persons. or for unfair competition. resists and assails petitioners' effort to enforce their legal rights by heavily underscoring the fact that petitioners are not registered to do business in the Philippines and are not in fact doing business in the Philippines. and the same legal remedy against any infringement of their rights. Canada. Consequently. paragraph 1 of the Paris Convention. What are registrable." one of the basic rules of the Convention. the Philippines and. with a certified true copy of the foreign law translated into the English language. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. to which the Philippines. out of all the words in the English language. 2. as regards the protection of industrial property. 166 as amended expressly recognizes as registrable. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. subject to the proviso that: . all without prejudice to the rights specially provided for by this Convention.A. (Emphasis supplied) The rule thus embodied in Section 21-A of R. nationals of Canada. to nationals. that private respondent's "MARK" infringes upon petitioners' registered trademarks. Switzerland and the United States who are all countries of the Paris Union are entitled to enjoy in the Philippines. the United States. on the one hand. It should be stressed at the outset that circumstance has no legal impact upon the right of petitioners to own and register their trademarks in the Philippines. on the other hand. xxx xxx xxx (Emphasis supplied) Article 2. that the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled by treaty. the word "mark" to refer to its cigarettes. grants similar privilege to corporate or juristic persons of the Philippines. marks which are owned by corporations domiciled in any foreign country: Sec. Canada and Switzerland are all parties. by the government of the foreign country to the Government of the Republic of the Philippines. they shall have the same protection as the latter. flow from this circumstance so far as enforcement of petitioners' rights as holders of registered Philippine trademarks is concerned. 19 Under Article 2. lead me to the submission that there is a prima faciebasis for holding. trade names or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And provided further. It should be noted that Article 2. provided that the conditions and formalities imposed upon national are complied with. any foreign corporation which is a holder of a trademark registered under Philippine law may bring an action for infringement of such mark or for unfair competition or false designation of origin and false description "whether or not it has been licensed to do business in the Philippines under the [Corporation Law] at the time it brings complaint. as the Patent Office has held and as the Court of Appeals did hold originally. That said trade marks. Article 2 as quoted above is in effect with respect to all four (4) countries. II There is thus no question as to the legal rights of petitioners as holders of trademarks registered in the Philippines. without necessity for obtaining registration or a license to do business in the Philippines.

. the Court. . Again. dealers and merchants not necessarily with the knowledge or consent of the manufacturer.A. Inc. as a party to the Paris Union. In Western Equipment and Supplies Company. et al. was accorded protection for its trademarks "Lacoste".S. manufacturer of electrical and telephone equipment and suppliesnot doing business in the Philippines. Inc. et al. which grants to nationals of the parties the rights and advantages which their own nationals enjoy for the repression of acts of infringement and unfair competition. Kee Boc. therefore. . corporate name and goodwill which has been established through the natural development of its trade for a long period of years in the doing of which it does not seek to enforce any legal or contract rights arising from or closing out of any business which it has transacted in the Philippines. . in upholding the Director of Patents' cancellation of the registration of the mark "Puritan" in the name of General Garments. S. et al. 22 a Japanese corporation. on the other hand. a foreign corporation which has never done business in the Philippines — but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate name and tradename hasa legal right to maintain an action in the [Philippines]. as to be likely." Similarly. etc. Fernandez 27 La Chemise Lacoste. Puritan Sportswear alleged ownership and prior use of the trademark "Puritan" in the Philippines. 26 (Emphasis supplied) Three (3) other cases may be noted. . the Supreme Court said: The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant. 21 (Emphasis supplied) Similarly. also not engaged in any business in the Philippines.such mark should not have been registered in the first place (and consequently may be cancelled if so required) if it consists of or comprises a mark or tradename which so resembles a mark or tradename . previously used in the Philippines by another and not abandoned. remiss in ruling that the proofs sales presented "was made by a single witness who had never dealt with nor had never known opposer {petitioner} . commenced action in a Philippine court to protect its corporate name from unauthorized use thereof by certain Philippine residents. The Director of Patents was. The Court. not only to limited individuals. Petitioner General Garments.. in Del Monte Corporation. . business or services of the applicant. opposed the application for registration of the trademark "Universal Converse and Device" to be used also in rubber shoes and rubber slippers by private respondent Universal Rubber Products. v. "Chemise Lacoste. that the petitioner Western Electrical Company had never transacted business in the Philippines and that registration of private respondent's articles of incorporation could not in any way injure petitioner. in General Garments Corporation v. successfully opposed an application for registration of its trademark "Race Brand" on shirts and undershirts by a local businessman. ("Universal"). stated that: . 25 petitioner Converse Rubber Corporation was an American manufacturer of rubber shoes. having found that private respondent's label was an infringement of Del Monte's trademark. . it does not mean that its goods are not being sold here or that it has not earned a reputation or goodwill as regards its products.. business in the Philippines. Such actual sale of goods in the local market establishes trademark use which serves as the basis for any action aimed at trademark pre-emption.S. v. Court of Appeals. . considering that they appear to be of high expensive quality. Reyes. inter alia. Universal Rubber Products. in rejecting this argument. No. contended that Puritan Sportswear. 28 petitioner Del Monte Corporation was a company organized under the laws of the United States and not engaged in business in the Philippines. to cause confusion or mistake or to deceive purchasers. 166 and before the Philippines became a party to the Paris Convention. . and not doing. The purpose of such a suit is to protect its reputation.A. sweaters and jackets.A. It is a matter of public knowledge that all brands of goods filter into the market. S. The Court recognized that those marks were "world famous trademarks which the Philippines. even though the Japanese company had not previously registered its own mark "Race Brand" in the Philippines. Any sale made by a legitimate trader from his store is a commercial act establishing trademark rights since such sales are made in due course of business to the general public.A. although a foreign corporation not engaged in and not licensed to do business in the Philippines. 84 . held Del Monte entitled to recover damages. without Opposer having a direct or indirect hand in the transaction to be the basis of trademark pre-exemption. briefs. undershirts. In reversing the Director of Patents and holding that Universal's application must be rejected. could not maintain an action for cancellation of a trademark. when applied to or used in connection with goods. . being a foreign corporation not licensed to do. Because both the Philippines and the United States are signatories to the Convention of Paris. 24 (Emphasis supplied) In Converse Rubber Corporation v. 23 Puritan Sportswear Corporation. a U.20 petitioner Western Electrical Company. The local residents resisted the suit by contending. ." and "Crocodile Device" for clothing and sporting apparel.Such has been the rule in our jurisdiction even before the enactment of R. is bound to protect. The Philippine residents sought to organize a Philippine corporation to be known as "Western Electrical Company" for the purpose of manufacturing and selling electrical and telephone equipment in the Philippines. not doing business on its own in the Philippines and not licensed to do business in the Philippines. which not too many basketball players can afford to buy. Director of Patents and Puritan Sportswear Corporation. . and not doing business in the Philippines. said: . v. filed a petition for cancellation of the mark "Puritan" which was registered in the name of petitioner General Garments Corporation for assorted men's wear. . an entity organized in Pennsylvania U.. The Supreme Court. indiscriminately sold by jobbers. It is a corollary logical deduction that while Converse Rubber Corporation is not licensed to do business in the country and is not actually doing business here. in Asari Yoko v. The first is La Chemise Lacoste. shirts. et al. .

166 as amended of filing affidavits with the BPTTT on the 5th. this Court held that Puma had legal capacity to bring the suit in the Philippines under Section 21-A of R. 166 as amended. The relevancy of the doctrines set out in the cases above cited are conceded by my distinguished brother Melo. No. In the case at bar. The pre-registration use in commerce and trade in the Philippines for at least two (2) months as required by the statute. 30 The third mark of petitioners — "MARK VII" — was registered in the Philippines on the basis of Section 37 of R. two (2) of them — i.A. In such registration. the entity need not be actually using its trademark in commerce in the Philippines. Firstly. 31 III We turn to petitioners' claim that they are suffering irreparable damage by reason of the manufacture and sale of cigarettes under the trademark "MARK. the statute appears to require that trademarks (at least trademarks not shown to be internationally "well-known") must continue to be used in trade and commerce in the Philippines. e. damage through trademark infringement on the part of a local enterprise. a basic argument of private respondent was that petitioners had not shown any damages because they are not doing business in the Philippines.In Puma Sportschuhfabriken Rudolf Dassler. The majority opinion. essential to point out that such continued use. 166 as amended and under the provisions of the Paris Convention to which both the Philippines and the Federal Republic of Germany are parties. the Court held that the circumstance that the foreign owner of a Philippine trademark is not licensed to do business and is not doing business in the Philippines. No. Whether the Philippine trademark was based on actual use in the Philippines (under Section 2-A) or on registration in a foreign country of origin (under Section 37). certain essential qualifications must be made respecting the above paragraph. does notnecessarily mean that petitioners are not in a position to sustain. No. though not imported into or sold in the Philippines by petitioners themselves. and that can be carried out by third party manufacturers operating under license granted by the foreign registrant or by the importation and distribution of finished products by independent importers or traders. and do not in fact sustain. 166 as amended. respondent Fortune has not explicitly pretended that the petitioners' trademarks have been abandoned by non-use in trade and commerce in the Philippines although it appears to insinuate such non-use and abandonment by stressing that petitioners are not doing business in the Philippines. That petitioners are not doing business and are not licensed to do business in the Philippines.. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. 32 Such trademark infringement by a local company may. prior (preregistration) use in commerce in the Philippines need not be alleged. 10th and 15th anniversaries of the date of issuance of the Certificate of Registration.A. Petitioners have stated that their "Mark VII.." "Mark Ten" and "Lark" cigarettes are in fact brought into the country and available for sale here in. I respectfully maintain that this argument is specious and without merit. J. 166 as amended. as earlier noted.A. is explicitly stated in the Certificates of Registration. Reversing the Court of Appeals. on the basis of registration in the country of origin and under the Paris Convention.. showing that the trademark is still in use or showing that its non-use is not due to any intention to abandon the same. K. For cigarettes bearing petitioners' trademarks may in fact be imported into and be available for sale in the Philippines through the acts of importers or distributors. 166 relating to affidavits of continued use. In the Converse case. No. All the statute requires is the use in trade and commerce in the Philippines." Here again. Intermediate appellate Court. Trademark and Technology Transfer ["BPTTT"]). The "use" of the trademark in such instances by the independent third parties constitutes use of the foreign registrant's trademarks to the benefit of the foreign registrant. v. in the majority opinion. The very fact that the appropriate Philippine Government office issued the Certificates of Registration necessarily gave rise to the presumption that such pre-registration use had in fact been shown to the satisfaction of the Philippine Patent Office (now the Bureau of Patents. i. however. That petitioners are not doing business and are not licensed to do business in the Philippines. does not by any means mean either that petitioners have not complied with the requirements of Section 12 of R. precisely in accordance with the requirements of Section 2-A and Section 5 (A) of R. duty-free shops.A. for one 85 . et al.e. does not mean that petitioner's goods (that is. No. The Court also noted that "Puma" is an internationally known brandname. petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over their symbols as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law.g. There is no legal requirement that the foreign registrant itself manufacture and sell its products here. With great respect. 29 petitioner Puma was a foreign corporation existing under the laws of the Federal Republic of Germany not registered to do business and not doing business in the Philippines. It is. by the express provisions of Section 37 (b) of R. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement. however. of the petitioners' three (3) marks here involved. filed a complaint for infringement of trademark and for issuance of a writ of preliminary injunction against a local manufacturing company.G. goes on to say: In other words. again.e.A. as a requirement for the continued right to the exclusive use of the registered trademark. or that petitioners' trademarks are not in fact used in trade and commerce in the Philippines.A. "MARK TEN" and "LARK" — were registered in the Philippines on the basis of actual use in the Philippines. No. It is important to note that respondent Fortune has not purported to attack the validity of the trademarks "Mark Ten" and "Lark" by pretending that no pre-registration use in commerce in the Philippines had been shown. goods bearing petitioner's trademark) are not sold in the Philippines. is presumed so long as the Certificate of Registration remains outstanding and so long as the registered trademark owner complies with the requirements of Section 12 of R.

third. . Petitioners urge that private respondent's use of its confusingly similar trademark "MARK" is invasive and destructive of petitioners property right in their registered trademarks because. 35 The third or advertisement function of trademark has become of especial importance given the modern technology of communication and transportation and the growth of international trade. When noncompetitive products are sold under the same mark. b) Plaintiffs would lose control of the reputation of their products as their reputation will depend on defendant's commercial activities and the quality of defendant's products. .g. . for which invasion no fair and reasonable redness can be had in a court of law. and items of clothing like jeans. At the same time. 39 It is no longer true that "a trademark of itself cannot travel to markets where there is no article to wear the badge and no trader to offer the article. . 34 The first two (2) functions have long been recognized in trademark law which characterizes the goodwill or business reputation symbolized by a trademark as a property right protected by law. The damage which the petitioners claim they are sustaining by reason of the acts of private respondents. c) The market in the Philippines for plaintiffs' products will be preempted. — the list is quite lengthy — and pay good money relying on the brand name as guarantee of its quality and genuine nature only to explode in bitter frustration and helpless anger because the purchased item turns out to be a shoddy imitation. The first two (2) functions of trademarks were aptly stressed in e. watches. . neckties. other toilet articles. . ." 40 Advertisement of trademarks is geared towards the promotion of use of the marked article and the attraction of potential buyers and users. We buy a kitchen appliance. 36 Through advertisement in the broadcast and print media. a hundred or fifty years ago. they guarantee that those articles come up to a certain standard of quality. by prevention of the natural expansion of his business and. a face powder. are not limited to impact upon the volume of actual imports into the Philippines of petitioners' cigarettes. 37 Through advertisement. our image abroad . In holding that there was infringing use in such case. e) Defendant will be allowed to benefit from the reputation of the plaintiffs' goods and trademarks. say. or of a confusingly similar. mark where confusion results in diversion of trade or financial injury. That a registered trademark has value in itself apart from the trade physically accompanying its use. . it prepares the way for growth in such commerce whether the commerce be handled by the trademark owner itself or by its licensees or independent traders. by having his business reputation confused with and put at the mercy of the second user. they advertise the articles they symbolize.. of the quality product . trademarks warn against the imitation or faking of products and prevent the imposition of fraud upon the public. . . the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark created by its first user. such unfair trading can cause injury or damage to the first user of a given trade-mark. inevitably result.thing. . 33 Modern authorities on trademark law view trademarks as symbols which perform three (3) distinct functions: first. a) Plaintiffs' undeniable right to the exclusive use of their registered trademarks is effectively effaced by defendant's use of a confusingly similar trademark. to stem the tide of fake and counterfeit consumer items flooding the Philippine market or exported abroad from our country. brandy or whisky. a well-established and well-earned reputation may be gained in countries where the trademark owner has itself no established business connection. 41 by fixing the identity of the marked article in the public mind. has been recognized by our Court. first. the owner of the trademark is able to establish a nexus between its trademark products and the public in regions where the owner does not itself manufacture or sell its own products. second. etc. perfume. the La Chemise Lacoste case where the objectives of trademark protection were described in the following terms: . albeit a clever looking counterfeit. f) Defendant will be effectively authorized to continually invade plaintiffs' property rights. 42 the Court was called upon the determine whether there was infringement in the use of the same trademark on articles which do not belong to the same class of goods which the lawful trademark owner manufactures and sells. Experience has 86 . T-shirts. they indicate origin or ownership of the articles to which they are attached. d) Purchasers will think that defendant's goods are approved or sponsored by plaintiff. and g) Plaintiffs will lose their goodwill and trade and the value of their registered trademarks will irreparably diluted and the damages to be suffered by plaintiffs cannot be redressed fairly in terms of money. The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. 38 Goodwill may thus be seen to be much less closely confined territorially than. In Ang v. the owner of a trademark is held entitled to exclude others from the use of the same. Teodoro. the Court said: . second. affect the volume of importation into the Philippines of cigarettes bearing petitioners' trademarks by independent or third party traders. a household tool. The greater victim is not so much the manufacturer whose product is being faked but the Filipino consuming public and in the case of exportations. Thus.

or is destructive to. 446). An irreparable injury to authorize an injunction consists of a serious charge of.J. if enjoined. would lose only the value of the packaging material imprinted with the same trademark (which cigarettes and material may well be amenable to re-cycling) and the cost of past advertisements of "MARK" in media. which obviously loomed very large in the mind of the majority here. Petitioners cannot claim to be entitled to an injunction which could restrain private respondent from manufacturing and selling cigarettes completely. the apprehension on the part of the majority which private respondent tried diligently to foment — that the Government would lose many millions of pesos in tax revenues and that many employees would lose their jobs. i. it is done to get the benefit of the reputation and advertisements of the originator of said mark. as pointed out by petitioners. the total volume of its business associated with the manufacture and sale of cigarettes trademarked "MARK" would be even larger. Private respondent's claims concerning alleged damages both to itself and to the Government. 47 Presumably. Realistically. 741). Central Labor Council. 576) or is in any way connected with the activities of the infringer. private respondent stated that it had paid many millions of pesos as ad valorem and VAT taxes to the Government in 1988 and 1989 in connection with its "MARK" cigarettes. 43 the Court. If full compensation can be obtained by way of damages. Respondent corporations made a lengthy discourse on the matter of irreparable injury they may suffer if the injunction were not issued. if any. that hundreds if not thousands of its employees would find themselves unemployed if it were restrained from the manufacture and sale of "MARK" cigarettes. 43 C. Rogue River Valley Canal Co. if any they may suffer. Such damage. 84. J. polo shirts and pants. 577). and of the Court of Appeals when it lifted the injunction it had issued. It does not have reference to the amount of damages that may be caused but rather to the difficulty of measuring the damages inflicted. Besides. Reyes.demonstrated that when a well-known trade-mark is adopted by another even for a totally different class of goods. 244. . this term has a definite meaning in law. or under some new and specially created trademark(s). Ana v. . but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusing of source. Field and Tub Club. In addition. . private respondent suggests. "An irreparable injury which a court of equity will enjoin includes that degree of wrong of a repeated and continuing kind which produce hurt. one that restrains private respondent from using the trademark "MARK" on its cigarettes. private respondent. but the array of figures they have laid out merely succeeded in proving that the damage. that such continuing damage falls clearly within the concept of irreparable damage or injury described in Social Security Commission v.S. to pay heed to private respondent's creative economic argument would ultimately mean that the greater the volume of sales and the profits of the infringer. or damage that can be estimated only by conjecture. 77.B. the greater would be the infringer's claim to be entitled to 87 . 44 (Emphasis supplied) Petitioners did not try to put a peso figure on their claimed damage arising from the erosion and possible eventual destruction of the symbolic value of their trademark.. 193). 92 P. . The owner of a trademark or tradename has a property right in which he is entitled to protection. 83 ALR. or when it forestalls the normal potential expansion of his business (v. 52 Am. is nonetheless real and effective. 52 Am. if an injunction is issued — is more apparent than real. As noted. As already stated. and not by any accurate standard of measurement" (Phipps v. 7 ALR. 502). 576.. so that its pecuniary value will not fairly recompense the owner of the loss thereof' (Dunker v. . Bayona 45 in the following terms: Damages are irreparable within the meaning of the rule relative to the issuance of injunction where there is no standard by which their amount can be measured with reasonable accuracy (Crouc v.. or when the property has some peculiar quality or use. Petitioners seek only the reinstatement of the original injunction issued by the Court of Appeals. 148 ALR.. (Emphasis supplied) In Sta. is susceptible of mathematical computation. through J. I submit. in holding that the use of the name "Flormen" with respect to shoes was infringement of the mark "Flormann" used in the men's wear such as shirts. to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark . the property if affects. with respect.. as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq. Jur. Jur. appear to me to be extravagant indeed. of which it has several. said: Modern law recognizes that the protection to which the owner of a trade-mark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties. while not easily quantifiable. petitioner do not pretend to be so entitled to such a comprehensive injunction.L. 427. albeit indirectly only. Jur.. either physically or in the character in which it has been held and enjoined. There is nothing to prevent private respondent from continuing to manufacture and sell cigarettes under any of its already existing and registered trademarks. The damages private respondent would sustain from reinstatement of the preliminary injunction are clearly quantifiable in pesos. equity will not apply the remedy of injunction (28 Am. 46 I next turn to private respondent's claim that issuance of an injunction would impose heavy damage upon itself and upon Government. inconvenience. Maliwat. Thus. since there is damage to him in the form of confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. It is not then irreparable. .e.

" and "LARK. did not constitute a sufficient basis for overturning the original decision of the Court of Appeals. as evidenced by Philippine Patent Office Trademark Certificate of Registration No." Fortune also filed on 13 February 1981 with the Philippine Patent Office an application for registration of "MARK" as a trademark for cigarettes. in effect disregarded everything that Court had set out in its original Decision. Private respondent's hyperbolic claims concerning the damages that it and the Government would sustain by reason of an injunction." Petitioners then asked Fortune "to cease and desist from further manufacturing. is a corporation organized and existing under the law of Virginia. Inc.. The statement attached to this Certificate of Registration states that the trademark "LARK" was first used by Ligget and Myres Tobacco Company on 31 May 1920.A." Sometime before 17 October 1981. is the registered owner of the trademark "MARK TEN" also for cigarettes. On 18 August 1982. Philip Morris. S.R. provide a sufficient basis for lifting the preliminary injunction earlier granted. S. that the Court of Appeals in granting its Motion to Dissolve the preliminary injunction was merely exercising its discretion. on the Principal Register." Fabriques de Tabac Reunies. and first used by it "in commerce in or with the Philippines on February 6. Petitioners alleged that the name Canadian Tabacofina Ltd. had been made earlier both before the trial court and the Court of Appeals. Benson & Hedges (Canada). For all the elements which supported the original issuance of a preliminary injunction continued to exist.A. dated 25 March 1964. private respondent Fortune Tobacco Corporation ("Fortune") commenced manufacturing and selling in the Philippines cigarettes under the brandname "MARK." and "LARK." "MARK TEN.. Petitioners alleged that the name of Liggett and Myres Tobacco Company was changed later to Fabriques de Tabac Reunies. This Trademark Certificate of Registration was originally issued in the name of Canadian Tabacofina Ltd. and later assigned to Benson & Hedges (Canada). No. is registered owner of the trademark "LARK" also for cigarettes. The statement also requested that 88 ." and that trademark had "been in actual use in commerce over the Philippines continuously for two months. 47374). selling or advertising 'MARK' cigarettes. there is set out below a statement of the relevant facts (as I see them) that is more extensive than what is ordinarily found in dissenting opinions. 18723. the trademark be registered in the Philippine Patent Office on the Principal Register in accordance with Section 37 of R." all for cigarettes (except the last which also covered chewing and smoking tobacco). dated 26 April 1973. dissenting: I find myself unable to join in the opinion prepared by my distinguished brother. Inc. The statement attached thereto stated that the "date of first use of the trademark 'MARK TEN' in trade in or with the Philippines is April 15. Inc.S.A. S. This trademark Certificate of Registration was renewed on 28 May 1984. Inc.continue infringement. The statement attached to the Certificate of Registration states that the trademark "MARK VII" had been registered in the United States Patent Office.931 issued on 7 April 1970. 13132 and to reinstate the Decision of that same Court dated 5 May 1989.A. Petitioner Philip Morris. 1963. Petitioners Benson & Hedges (Canada). Melo." otherwise appropriate court actions would be filed without further notice. 1963" and has been continuously used by it "in trade in or with the Philippines since February 6. This Trademark Certificate of Registration was originally issued in the name of Ligget and Myres Tobacco Company was later assigned to Fabriques de Tabac Reunies. was later changed to Benson & Hedges (Canada) Ltd. that they had registered those trademarks in their respective countries of origin and in other countries the world and that by virtue # Separate Opinions FELICIANO. My conclusion is that private respondent's claims concerning damage which it would sustain if the petitioners were granted the injunction they seek. S. respectively. J. U. dated 28 May 1964. Its ownership thereof is evidenced by Philippine Patent Office Trademark Certificate of Registration No. petitioners commenced action before the Court of First Instance of Pasig. as amended. are organized and existing under the law of Canada and Switzerland. and Fabriques de Tabac Reunies. for the Court of Appeals obviously was also exercising its discretion when it rendered its original Decision granting the preliminary injunction. Inc." "MARK TEN.A. I respectfully submit that the law should not countenance such a cynical result. 166. to set aside the Resolution of the respondent Court of Appeals dated 14 September 1989 in C. It seems to me that the issues involved in this case are rather more complex than what has been assumed to be the case by the majority opinion. under Certificate of Registration No. Finally. both wholly owned subsidiaries of Philip Morris. Metro Manila (Civil Case No. petitioners alleged that they were not doing business in the Philippines but had nonetheless the right and the capacity to bring the instant suit. it is not enough to say as private respondent says." Petitioners listed their Philippine Certificates of Registration for the trademarks "MARK VII. on the Principal Register. The mere offer and filing of a counterbond does not. By a letter dated 17 October 1981. I vote to grant due course to the petition for Certiorari.-G. petitioner through their lawyers wrote to Fortune stating that the manufacturing.. as evidenced by Philippine Patent Office Trademark Certificate of Registration No. In their complaint. 888. covering "MARK VII. The Resolution of the Court of Appeals granting private respondent's Motion to Dissolve. 11147.A. J. 10953. SP No. is registered owner of the trademark "MARK VII" for cigarettes.A. selling and advertising of "MARK" cigarettes by Fortune constituted an "infringement or an act of unfair competition with" petitioners' "well-known international trademarks used on cigarettes and tobacco products which were registered worldwide and with the Philippine Patent Office. Inc. that they were owners of Philippine Patent Office Trademark Certificates of Registration which were in full force and effect. For this and related reasons. 1963. by itself.

while noting that petitioners were holders of Philippine Certificates of Trademark Registration. Trademark Examiner. and after trial. 3 reproduced a letter to Fortune's counsel by Bienvenido A. "Mark VII" with Reg. relied heavily on three (3) factors: Firstly. and for damages. Subject mark is confusingly similar with the following marks on file: a. Judge Reyes denied petitioners' motion for reconsideration. exportation and advertisement of their cigarette products in the Philippines. Conrado P. Senior Trademark Examiner. the trial court was obviously heavily influenced by Fortune's argument that because petitioners were not doing business in the Philippines. that the infringement by Fortune of petitioners' trademarks have inflicted damages upon petitioners. Canada and Switzerland. 3.A." This Paper No. temporarily granting the request of Fortune for a permit to manufacture two (2) new brands of cigarettes. Petitioners sought. that Fortune's application for a registration as trademark of the word "MARK" for cigarettes was then pending before the Philippine Patent Office. and Wilfredo T. the trial judge laid great stress on the fact that Fortune's application for registration of its trademark "MARK" for cigarettes remained subsisting. SR2659 for cigarettes. In respect to the second point. No. "Mark" with Reg.A. Caption mark of the application must tally with the drawing on file." the grant of a preliminary injunction was premature. and petitioners had filed their Reply and Fortune a Rejoinder. to make such preliminary injunction permanent and to order Fortune's infringing materials to be destroyed. Fortune filed an Opposition to petitioners' prayer for preliminary injunction." that they had their respective real and effective industrial or commercial establishments in the United States. petitioners invited attention to Paper No. one of which was "MARK. that under that Convention each member-country undertakes to prohibit the use of a trademark which constitutes a reproduction. 3 The trial judge. and advertised and marketted in the Philippines at least since 1964 and have continued to be so to present. On the basis." Fortune's manufacture and sale of its "MARK" cigarettes could not be said to be causing petitioners "irreparable damage" within the Philippines. importation." The trial judge also noted that the BIR letter contained the following paragraph: Please be informed further that this authority herein granted does not give you protection against any person or entity whose rights may be prejudiced by infringement or unfair competition in relation to your above named brands/trademarks. with knowledge of the popularity of petitioners' marks and their Philippine registrations. on 15 April 1983. however. 89 . and after an offer of exhibits by the parties respectively. that petitioners were foreign corporations not doing business in the Philippines. that thereby the public and the patronizers of petitioners' products were being deceived into buying Fortune's cigarettes under the impression and mistaken belief that Fortune's cigarettes were identical with. which countries were. Palisoc. With regard to the third point. apparently gave no weight at all to this caveat. manufactured. that Fortune had without previous consent. the trial court. which meant that "they [were] not engaged in the sale. including the Philippines where its products bearing the trademark "LARK" had been sold in the duty-free market. Judge Reyes issued on 5 April 1984 another Order denying the Motion for Reconsideration. In rendering that order. at that point. In respect of the first point. the trial judge felt that because the Director of Patents had not. No. Diaz. After Fortune had filed an Opposition to petitioners' Motion for Reconsideration. the judge noted a letter dated 30 January 1979 2 of the then Acting Commissioner of Internal Revenue Mr. members of the Convention of Paris for the Protection of Industrial Property. 18723 for cigarettes. which it was not. as amended. In their Second Motion. that the continued unauthorized and unlicensed manufacture and sale by Fortune of its infringing products during the litigation would work injustice and cause irreparable injury to petitioners in violation of their property rights and moreover tend to render the judgment which the court might render ineffectual. Petitioners accordingly asked for a writ of preliminary injunction to restrain Fortune from manufacturing or selling "MARK" cigarettes. and Thirdly. had long been using trademark "LARK" throughout the world. denied Fortune's pending application for registration of its trademark "MARK. petitioners filed a "Second Motion for Issuance of Preliminary Injunction" dated 1 September 1986. relating to Fortune's application for registration of its brandname "MARK. S. that Fortune was the "only party authorized" by the Bureau of Internal Revenue ("BIR") to manufacture cigarettes bearing the mark "MARK" in the Philippines.of their "long and extensive use [had] gained international fame and acceptance. On 28 March 1983. No. that petitioner Fabriques de Tabac Reunies. Jaramillo. Secondly. b. More than two (2) years later. petitioners' products or that Fortune was licensee of petitioners. authority or license from petitioners. advertised and sold cigarettes bearing the identical or confusingly similar trademark "MARK" which unauthorized use constituted an act of infringement under Section 22 of R. imitation or translation of a mark already belonging to a person entitled to the benefits of the Convention and use for identical or similar goods. manufacture. 166. reconsideration of Judge Reyes' Order denying preliminary injunction. In his second order. stating that: This application [for registration of "Mark"] has been examined. or came from the same source as. like the Philippines. dated 6 April 1983. the trial court 1issued an Order denying petitioners' motion for preliminary injunction.

(p. employees and representatives from manufacturing." The Court of Appeals said in pertinent part: There is no dispute that petitioners are the registered owners of the trademarks for cigarettes "MARK VII." and secondly. No. 166 as amended and the Revised Rules of Practice in Trademark Cases. this time presided over by Judge Nicolas Galing. Hence. 59872. 4 (d) of Rep.R. 1983". CA rollo). Act No. Jr. Makati. Thus. which Petition was docketed as G. The foregoing documents or communications mentioned by petitioners as "the changes in material facts which occurred after March 28. J. the trial court. April 6. "Mark Ten" with Reg. 11147 for cigarettes. Republic Act No. 10953 for cigarettes. selling and/or advertising "MARK" cigarettes until further orders. Metro Manila. Philippine Patent Office. does not give protection as against any person or entity whose right may be prejudiced by infringement or unfair competition in relation to the aforesaid trademark nor the right to register as contrary to the provisions of the Trademark Law. Cesar G. 1986. Act No. No. petitioners assailed Fortune's argument that issuance of preliminary injunction would cause "loss of revenue and taxes to the Government" and that more damages would be sustained by Fortune than by petitioners since the petitioners do not market their cigarettes in the Philippines. petitioners had not shown that the products they sought to protect from Fortune's "MARK" cigarettes were "in actual use and available for commercial purposes anywhere in the Philippines. Petitioners then filed a Petition for Review with the Supreme Court.. 6 rendered a decision on 5 May 1989 setting aside the 22 April 1987 order of the trial court and ordering issuance of a writ of preliminary injunction upon filing of a bond by petitioners in the sum of P200. 166 as amended. Petition). 1983 and January 24. 78141." "MARK TEN. As found and reiterated by the Philippine Patent Office in two (2) official communications dated April 6.000.. the trademark "MARK" is "confusingly similar" to the trademarks of petitioners. No. registration is barred under Sec." 4 (Emphasis supplied) Petitioners also invited attention to a certification dated 8 August 1986 issued by Mr. 90 ." and the caveat (earlier noted) 8 that the BIR's authorization would not give Fortune any protection against any person or entity whose rights may be prejudiced by infringement or unfair competition on the part of Fortune. issued upon request of Fortune's counsel stating that there was a pending application for registration of the trademark "MARK" for cigarettes under Serial No. Luis M. C and D. The Court of Appeals also referred to the certificate dated 26 September 1986 of Mr. the trademark application of private respondent for the mark "MARK" under Serial No. 139 SCA rollo). Judge Galing relied on two (2) points: firstly. 1981 which was declared abandoned as of February 16. (Emphasis supplied) The Court of Appeals then went on to say that: [We] believe and hold that petitioners have shown a prima facie case for the issuance of the writ of prohibitory injunction for the purposes stated in their complaint and subsequent motions for the issuance of the prohibitory writ. Jr. "enjoining the private respondents. v. Sandico. there being no revival made pursuant to Rule 98 of the Revised Rules of Practitioners in Trademark Cases. 7 (Emphasis supplied) The Court of Appeals also noted the BIR letter of 30 January 1979 temporarily granting Fortune's request for a permit to manufacture two (2) new brands of cigarettes." 5 Further.. its agents. 166. 1986. Furthermore. the Court of Appeals. 4(d) of Rep.c. petitioners explained in some detail how Fortune's use of its mark "MARK" was "destructive of [petitioners'] property right to [their] registered trademarks. is now deemed forfeited. including one branded "MARK. the Court referred the Petition to the Court of Appeals. noting at the same time. 44008 filed on February 13. it appeared that while Fortune's original application had been abandoned. The Court ordered respondents to file their Comments on the Petition and on 30 September 1987. Judge Galing in effect reiterated Judge Reyes's position that until the Director of Patents had definitely acted upon Fortune's application for registration of "MARK. "Lark" with Reg. Daca. hence.00 to be approved by the appellate court. according to the trial judge. (Buayan Cattle Co. 1983. d. 1984. Quintillan. are not also questioned by respondents. 106. In this order. issued an Order dated 22 April 1987 denying once more the motion for issuance of a writ of preliminary injunction. 125 SCRA 276). however. In a third official communication dated April 8. it could be refiled and was in fact re-filed. filed on 16 September 1986. through Cacdac. In addition. registration was barred under Sec. then Director of Patents. as amended (pp." petitioners' prayer for preliminary injunction could not be granted." and "LARK". the word "Mark" is generic and therefore incapable of exclusive appropriation. In due course of time. to the effect that Fortune's application for the mark "MARK" for cigarettes was declared abandoned as of 16 February 1986 and was now deemed forfeited. that Director Sandico's certification contained the following caveat or qualification: This certification. 107. After Fortune had filed an Opposition to petitioners' Second Motion. (Annexes B. Assistant Director. Subject mark has no trademark significance and can not serve its purpose as to indicate the source and origin of goods.

the respondent court's denial of the prohibitive writ constituted excess of jurisdiction and grave abuse of discretion. that no new arguments were raised. In its Resolution. the Court of Appeals issued a Minute Resolution stating that the issues and arguments in Fortune's motion for reconsideration had been "fully discussed" in the Decision sought to be reconsidered. issued a Resolution lifting the preliminary injunction it had earlier granted upon the filing of counterbond by private respondent in the amount of P400.28. Fortune had been authorized by the BIR to manufacture "MARK" cigarettes. nevertheless." that Fortune's application for registration of its brandname "MARK" with the Philippine Patent Office "still pending" and not "finally rejected" by the Director of Patents. 9 (Emphasis supplied) Fortune moved for reconsideration of the Decision of the Court of Appeals insisting that petitioners must first prove their "clear. Statement House. 91 . 145 SCRA 139). it is equally true that an injunction could be dissolved only upon good and valid grounds subject to the sound discretion of the court. Ortigas & Co. It is a writ framed according to the circumstances of the case commanding an act which the Court regards as essential to justice and restraining an act it deems contrary to equity and good conscience (Rosauro vs. J. A "Supplemental Motion to Lift Writ of Preliminary Injunction with Offer of Counterbond" dated 17 August 1989 was next filed by Fortune. 2. Petitioners' right of exclusivity to their registered trademarks being clear and beyond question. the Court of Appeals once more through Cacdac. and thus make ineffectual the final judgment rendered afterwards granting the relief sought by the plaintiff (Calo vs." Fortune averred that it had paid to the BIR for 1988 the amount of P181.177. While the rule is that an offer of a counterbond does not operate to dissolve an injunction previously granted. 151 SCRA 570).38 for specific taxes. In the instant Petition. Fortune also referred to its employees assigned to the manufacture of "MARK" cigarettes who were apparently apprehensive that their services would eventually be terminated and that they would join the ranks of the unemployed. before final judgment.735. Ruiz. petitioners make the following basic submissions: 1. 10 (Emphasis supplied) Petitioners filed a Motion for Reconsideration. On 14 September 1989.940. while for January to July 1989. 151 SCRA 636).00 to answer for any damages petitioners may suffer as a consequence of such lifting. If the lower court does not grant preliminary injunction. petitioners should be using actually their registered trademarks in commerce in the Philippines. vs. that the Court of Appeals gravely abused its discretion amounting to excess of jurisdiction when it lifted the injunction in violation of Section 6 of Rule 58 of the rules of Court. the Court of Appeals referred to the "lots of workers employed [who] will be laid off as a consequence of the injunction" and that Government "will stand to lose the amount of specific taxes being paid by" Fortune. In this "Supplemental Motion. where it reiterated the basic arguments it previously made. Fortune then filed a "Motion to Dissolve Writ of Preliminary Injunction with Offer to File Counterbond" date 25 July 1989. (Buayan Cattle Co.The requisites for the granting of preliminary injunction are the existence of the right protected and the facts against which the injunction is to be directed as violative of said right. It when went on to say: After a thorough re-examination of the issues involved and the arguments advanced by both parties in the offer to file a counterbond and the opposition thereto. supra. that the Court of Appeals gravely abused its discretion amounting to excess of jurisdiction when it required. Sheriff of Manila. coupled with the possible damages it would suffer. Roldan. The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademarks in question and the filing of the counterbond will amply answer for such damages. Petitioners filed an Opposition to the "Motion to Dissolve" and a Comment on the "Supplemental Motion" of Fortune. and accordingly denied the Motion for Reconsideration. v.. Cuneta. Generally. On 12 July 1989.000. unmistakable and unquestioned right to the writ." that petitioners had not suffered any "great and irreparable injury to speak of" because "petitioners have never done business in this country in the past nor in the future. Inc. If it is not issued. contrary to law and jurisprudence that in order that petitioners may suffer irreparable injury due to the lifting of the injunction. 76 Phil. Jr.120. it had paid the amount of P120. Quintillan. do or continue the doing of the act which the plaintiff asks the court to restrain. WE believe that there are sound and cogent reasons for Us to grant the dissolution of the writ of preliminary injunction by the offer of the private respondent to put up a counterbond to answer for whatever damages the petitioner may suffer as a consequence of the dissolution of the preliminary injunction. As WE have maintained the view that there are sound and good reasons to lift the preliminary injunction the motion to file a counterbond is granted. the appellate court may grant the same (Service Specialists. without success. the defendant may. 148 SCRA 326). 445). on the other hand. vs. its grant or denial rests upon the sound discretion of the Court except on a clear case of abuse (Belish Investment & Finance Co. "thereby generating much needed funds for the Government." that. v.

Section 20 of R. the registrant's ownership of the mark. in contrast. There is no such presumption in registrations in the Supplemental Register. the registrant's ownership of the mark or trade name." notwithstanding "false allegation" that petitioners have been "using" the said trademarks "in commerce and trade" in the Philippines since 1963 up to the present. the status of which application may be noted later. private respondent's trademark "MARK" is not registered in the Principal Register in the Office of the Director of Patents. the petitioners are not suffering any irreparable damage by the lifting of the preliminary injunction by the Court of appeals. (2) Registration in the Principal Register is limited to the actual owner of the trademark (Unno Commercial Enterprises v. in a petition for cancellation." Private respondent claims that. business or services specified in the certificate. 12 the Court distinguished between the effects of registration in the Principal Register and registration in the Supplemental Register in the following manner: (1) Registration in the Principal Register gives rise to a presumption of the validity of the registration. thereby ignoring not only the mandates of the trademark law. The comment reiterated the basic arguments made by private respondent before the Court of Appeals: a. Reformulating the issues raised by the petitioners here. or after registration. 166. we think the principal issues may be reduced to the following: firstly. that the Court of Appeals gravely abused its discretion amounting to excess of jurisdiction when. subject to any conditions and limitations stated therein. b. of a mark or a trade name shall be prima facie evidence of the validity of the registration. 92 . after having found that the trial court had committed grave abuse of discretion and exceeded its jurisdiction for having refused to issue the writ of injunction to restrain respondent's acts that are contrary to equity and good conscience. which may be contested through opposition or interference proceedings. petitioners are not doing business in the Philippines. which act was within the sound discretion of the Court of Appeals. private respondents is simply an applicant for registration of a mark. petitioners which are foreign corporations "based in three different countries" have not contributed anything to Government tax revenues. selling and distributing cigarettes under the trademark "MARK"? The second question is: are private respondent's acts complained of by petitioners causing irreparable injury to petitioners' rights in the premises? These two (2) basic issues are obviously related and need to be addressed together. I The first point that needs to be stressed is that petitioners have Philippine Certificates of Registration for their trademarks "MARK TEN". Whatever damages they might suffer are "based purely on speculation. Milling Corp. is there a clear legal right to the relief asked by petitioners in the form of a preliminary injunction to restrain private respondent from manufacturing. and his right to the exclusive use thereof. the international commitments of the Philippines." and "LARK" in the Principal Register." "MARK VII" or "LARK" in this country. the judicial admission of private respondent that it will have no more right to use the trademark "MARK" after the Director of Patents shall have rejected the application to register it. c. it made a complete about face for legally insufficient grounds and authorized private respondent to continue performing the very same acts that it had considered contrary to equity and good conscience. importing or selling "MARK TEN. 120 SCRA 804 [1983]) and proceedings therein pass on the issue of ownership. Certificate of registration prima facie evidence of validity. that the Court of Appeals lifted the writ of preliminary injunction it had earlier issued upon the submission of a counter bond in double the amount of the bond submitted by petitioners. sets out the principal legal effects of such registration: Sec. — A certificate of registration. while registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the registrant has used or appropriated it. and the admonitions of the Supreme Court.3. No. that whatever damage petitioners may be suffering is negligible when compared to the taxes that would have to be foregone by the Government considering that private respondent "paid an annual specific tax of P240 Million only on the manufacture and sale of "MARK cigarettes. Macagba. as amended. Rule 58 of the Rules of Court. since by judicial admission. Private respondent also stresses that the right of petitioners to the injunction was still being litigated before the trial court. 20. and of the registrant's exclusive right to use the same in connection with the goods. Private respondent stressed that petitioners "are not manufacturing. under Section 6.11 The Court required private respondent to file a comment. Upon the other hand. (Emphasis supplied) In Lorenzana v. Gen. It is important to stress the legal effects of registration of a trademark in the Principal Register in the Office of the Director of Patents. Registration in the Principal Register is constructive notice of the registrant's claims of ownership.A.. "MARK VII.

") It is not subject to opposition although it may be cancelled after its issuance." "MARK TEN" and "LARK" and that accordingly. (3) In application for registration in the Principal Register. What are registrable. . "MARK" has taken over the dominant word in "MARK VII" and "MARK TEN. which would include a facsimile of the trademark being applied for.A. That said trade marks. No. private respondent filed an application for registration of its mark "MARK" for cigarettes with the Director of Patents soon after it commenced manufacturing and selling cigarettes trademark with "MARK. Fernandez. there was at least a preliminary determination of the trademark examiners that the trademark "MARK" was "confusingly similar" with petitioners' marks "MARK VII. under this statute. the evidence of record is scanty. coupled with private respondent's failure to explain how or why it chose. Private respondent. 129 SCRA 373 [1984]: "Registration in the Supplemental Register . however. It is respectfully submitted that this position is both erroneous and unfortunate. 166. if any. Petitioners have not submitted actual copies or photographs of their registered marks as used in cigarettes. submitted the actual labels or packaging material used in selling its "MARK" cigarettes. Our courts have jurisdiction and authority to determine whether or not "MARK" is an infringement on petitioners' registered trademarks. trade names and service marks owned by persons. flow from this circumstance so far as enforcement of petitioners' rights as holders of registered Philippine trademarks is concerned. out of all the words in the English language. the issuance of a Certificate of Registration of a trademark in the Principal Register by the Director of Patents would not prevent a court from ruling on whether or not the trademark so granted registration is confusingly similar with a previously registered trademark. Private respondent has not. Under our case law. the word "mark" to refer to its cigarettes. In the case at bar." This application was abandoned or "forfeited". that private respondent later re-filed or reinstated its application for registration of "MARK" 15 and that. a mere application for registration cannot be a sufficient reason for denying injunctive relief. In the case at bar. registration in the Principal Register is a basis for an action for infringement. Certificates of registration under both Registers are also different from each other. .16 While final action does not appear as yet to have been taken by the Director of Patents on private respondent's application. resists and assails petitioners' effort to enforce their legal rights by heavily underscoring the fact that petitioners are not registered to do business in the Philippines and are not in fact doing business in the Philippines. partnerships or associations domiciled in the Philippines and by persons. out of deference to the courts. 14 for failure of private respondent to file a necessary Paper with the Director of Patent. registration was barred under Section 4 (d) of R. It should be stressed at the outset that circumstance has no legal impact upon the right of petitioners to own and register their trademarks in the Philippines. cannot be resolved without resolving the issue of claimed confusing similarity." petitioners cannot be granted the relief of preliminary injunction. Corollarilly. It is thus necessary to determine what consequences. A fortiori. In reliance upon that position. S. corporations.A.(Le Chemise Lacoste. as the Patent Office has held and as the Court of Appeals did hold originally. corporations. The Director of Patents in turn may well have refrained from taking final action on that application. for its part. so far as the record here before us is concerned. 13(Emphasis supplied) When taken with the companion presumption of regularity of performance of official duty." when read or pronounced orally." These circumstances. 166 as amended expressly recognizes as registrable. marks which are owned by corporations domiciled in any foreign country: Sec. Private respondent has not included in the record a copy of its application for registration of "MARK" for cigarettes. Section 2 of R. both Judge Reyes and Judge Galing took the position that until the Director of Patents shall have finally acted on private respondent's application for registration of "MARK. this application remains merely an application and has not been granted and a Certificate of Registration in the Principal Register issued. — Trademarks. 17 In the trial court. serves as notice that the registrant is using or has appropriated the trademark. trade names or service marks are actually in use in commerce and services not less than two 93 . 2. however. No. It also appears. and their application for a preliminary injunction against private respondent. lead me to the submission that there is a prima faciebasis for holding. In contrast. Provided. where such issue is essential for resolution of a case properly before the court. private respondent has kept its application for registration alive and pending.A. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. whether preliminary or definitive. (4) Proof of registration in the Principal Register may be filed with the Bureau of Customs to exclude foreign goods bearing infringing marks while it does not hold true for registrations in the Supplemental Register. petitioners' suit for injunction and for damages for infringement. constitute idem sonansin striking degree. while registration in the Supplemental Register is not. The pendency of the application before the Director of Patents is not in itself a reason for denying preliminary injunction. This is not so in applications for registration in the Supplemental Register. II There is thus no question as to the legal rights of petitioners as holders of trademarks registered in the Philippines. that private respondent's "MARK" infringes upon petitioners' registered trademarks. It should be noted that "MARK" and "LARK. publication of the application is necessary. v. it will be seen that issuance of a Certificate of Registration of a trademark in the Principal Register also gives rise to the presumption that all requirements of Philippine law necessary for a valid registration (including prior use in commerce in the Philippines for at least two [2] months) were complied with and satisfied. Petitioners have appended to their Petition a photocopy of an advertisement of "MARK" cigarettes. as amended. even in the absence of a restraining order from the courts. Further.

months in the Philippines before the time the applications for registration are filed: And provided further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines. (Emphasis in the original) It is also entirely clear that foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine courts to protect their rights as holders of trademarks registered in the Philippines. Under Section 21-A of R.A. No. 166, as amended, any foreign corporation which is a holder of a trademark registered under Philippine law may bring an action for infringement of such mark or for unfair competition or false designation of origin and false description "whether or not it has been licensed to do business in the Philippines under the [Corporation Law] at the time it brings complaint, subject to the proviso that: . . . that the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled by treaty, convention or law, grants similar privilege to corporate or juristic persons of the Philippines. (Emphasis supplied) The rule thus embodied in Section 21-A of R.A. No. 166 as amended is also set out in Article 2 of the Paris Convention for the Protection of Industrial Property ("Paris Convention"), to which the Philippines, the United States, Canada and Switzerland are all parties. 18 Article 2 of the Paris Convention provides in relevant part: Article 2 (1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon national are complied with. (2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights. xxx xxx xxx (Emphasis supplied)

Article 2, paragraph 1 of the Paris Convention embodies the principle of "national treatment" or "assimilation with nationals," one of the basic rules of the Convention. 19 Under Article 2, paragraph 1 of the Paris Convention, nationals of Canada, Switzerland and the United States who are all countries of the Paris Union are entitled to enjoy in the Philippines, also a country of the Union, the advantages and protections which Philippine law grants to Philippine nationals. Article 2 paragraph 2 of the Paris Convention restrains the Philippines from imposing a requirement of local incorporation or establishment of a local domicile as a prerequisite for granting to foreign nationals the protection which nationals of the Philippines are entitled to under Philippine law in respect of their industrial property rights. It should be noted that Article 2, paragraph 2 also constitutes proof of compliance with the requirement of reciprocity between, on the one hand, the Philippines and, on the other hand, Canada, Switzerland and the United States required under Section 21-A of R.A. No. 166 as amended. The net effect of the statutory and treaty provisions above referred to is that a corporate national of a member country of the Paris Union is entitled to bring in Philippine courts an action for infringement of trademarks, or for unfair competition, without necessity for obtaining registration or a license to do business in the Philippines. Article 2 as quoted above is in effect with respect to all four (4) countries. Such has been the rule in our jurisdiction even before the enactment of R.A. No. 166 and before the Philippines became a party to the Paris Convention. In Western Equipment and Supplies Company, et al. v. Reyes, etc., et al.,20 petitioner Western Electrical Company, a U.S. manufacturer of electrical and telephone equipment and suppliesnot doing business in the Philippines, commenced action in a Philippine court to protect its corporate name from unauthorized use thereof by certain Philippine residents. The Philippine residents sought to organize a Philippine corporation to be known as "Western Electrical Company" for the purpose of manufacturing and selling electrical and telephone equipment in the Philippines. The local residents resisted the suit by contending, inter alia, that the petitioner Western Electrical Company had never transacted business in the Philippines and that registration of private respondent's articles of incorporation could not in any way injure petitioner. The Supreme Court, in rejecting this argument, stated that: . . . a foreign corporation which has never done business in the Philippines — but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate name and tradename hasa legal right to maintain an action in the [Philippines]. The purpose of such a suit is to protect its reputation, corporate name and goodwill which has been established through the natural development of its trade for a long period of years in the doing of which it does not seek to enforce any legal or contract rights arising from or closing out of any business which it has transacted in the Philippines. . . . 21 (Emphasis supplied) Similarly, in Asari Yoko v. Kee Boc, 22 a Japanese corporation, also not engaged in any business in the Philippines, successfully opposed an application for registration of its trademark "Race Brand" on shirts and undershirts by a local businessman, even

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though the Japanese company had not previously registered its own mark "Race Brand" in the Philippines. Again, in General Garments Corporation v. Director of Patents and Puritan Sportswear Corporation, 23 Puritan Sportswear Corporation, an entity organized in Pennsylvania U.S.A. and not doing business in the Philippines, filed a petition for cancellation of the mark "Puritan" which was registered in the name of petitioner General Garments Corporation for assorted men's wear, undershirts, briefs, shirts, sweaters and jackets. Puritan Sportswear alleged ownership and prior use of the trademark "Puritan" in the Philippines. Petitioner General Garments, on the other hand, contended that Puritan Sportswear, being a foreign corporation not licensed to do, and not doing, business in the Philippines, could not maintain an action for cancellation of a trademark. The Court, in upholding the Director of Patents' cancellation of the registration of the mark "Puritan" in the name of General Garments, said: . . . .such mark should not have been registered in the first place (and consequently may be cancelled if so required) if it consists of or comprises a mark or tradename which so resembles a mark or tradename . . . . previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers. 24 (Emphasis supplied) In Converse Rubber Corporation v. Universal Rubber Products, Inc., 25 petitioner Converse Rubber Corporation was an American manufacturer of rubber shoes, not doing business on its own in the Philippines and not licensed to do business in the Philippines, opposed the application for registration of the trademark "Universal Converse and Device" to be used also in rubber shoes and rubber slippers by private respondent Universal Rubber Products, Inc. ("Universal"). In reversing the Director of Patents and holding that Universal's application must be rejected, the Supreme Court said: The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant, considering that they appear to be of high expensive quality, which not too many basketball players can afford to buy. Any sale made by a legitimate trader from his store is a commercial act establishing trademark rights since such sales are made in due course of business to the general public, not only to limited individuals. It is a matter of public knowledge that all brands of goods filter into the market, indiscriminately sold by jobbers, dealers and merchants not necessarily with the knowledge or consent of the manufacturer. Such actual sale of goods in the local market establishes trademark use which serves as the basis for any action aimed at trademark pre-emption. It is a corollary logical deduction that while Converse Rubber Corporation is not licensed to do business in the country and is not actually doing business here, it does not mean that its goods are not being sold here or that it has not earned a reputation or goodwill as regards its

products. The Director of Patents was, therefore, remiss in ruling that the proofs sales presented "was made by a single witness who had never dealt with nor had never known opposer (petitioner) . . . without Opposer having a direct or indirect hand in the transaction to be the basis of trademark pre-exemption. 26 (Emphasis supplied) Three (3) other cases may be noted. The first is La Chemise Lacoste, S.A. v. Fernandez 27 La Chemise Lacoste, S.A. although a foreign corporation not engaged in and not licensed to do business in the Philippines, was accorded protection for its trademarks "Lacoste", "Chemise Lacoste," and "Crocodile Device" for clothing and sporting apparel. The Court recognized that those marks were "world famous trademarks which the Philippines, as a party to the Paris Union, is bound to protect." Similarly, in Del Monte Corporation, et al. v. Court of Appeals, et al., 28 petitioner Del Monte Corporation was a company organized under the laws of the United States and not engaged in business in the Philippines. Because both the Philippines and the United States are signatories to the Convention of Paris, which grants to nationals of the parties the rights and advantages which their own nationals enjoy for the repression of acts of infringement and unfair competition, the Court, having found that private respondent's label was an infringement of Del Monte's trademark, held Del Monte entitled to recover damages. In Puma Sportschuhfabriken Rudolf Dassler, K.G. v. Intermediate appellate Court, et al, 29 petitioner Puma was a foreign corporation existing under the laws of the Federal Republic of Germany not registered to do business and not doing business in the Philippines, filed a complaint for infringement of trademark and for issuance of a writ of preliminary injunction against a local manufacturing company. Reversing the Court of Appeals, this Court held that Puma had legal capacity to bring the suit in the Philippines under Section 21-A of R.A. No. 166 as amended and under the provisions of the Paris Convention to which both the Philippines and the Federal Republic of Germany are parties. The Court also noted that "Puma" is an internationally known brandname. The relevancy of the doctrines set out in the cases above cited are conceded by my distinguished brother Melo, J. in the majority opinion. The majority opinion, however, goes on to say: In other words, petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over their symbols as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement, the entity need not be actually using its trademark in commerce in the Philippines. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market.

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With great respect, certain essential qualifications must be made respecting the above paragraph. Firstly, of the petitioners' three (3) marks here involved, two (2) of them — i.e., "MARK TEN" and "LARK" — were registered in the Philippines on the basis of actual use in the Philippines, precisely in accordance with the requirements of Section 2-A and Section 5 (A) of R.A. No. 166 as amended. The pre-registration use in commerce and trade in the Philippines for at least two (2) months as required by the statute, is explicitly stated in the Certificates of Registration. The very fact that the appropriate Philippine Government office issued the Certificates of Registration necessarily gave rise to the presumption that such pre-registration use had in fact been shown to the satisfaction of the Philippine Patent Office (now the Bureau of Patents, Trademark and Technology Transfer ["BPTTT"]). It is important to note that respondent Fortune has not purported to attack the validity of the trademarks "Mark Ten" and "Lark" by pretending that no pre-registration use in commerce in the Philippines had been shown. 30 The third mark of petitioners — "MARK VII" — was registered in the Philippines on the basis of Section 37 of R.A. No. 166 as amended, i.e., on the basis of registration in the country of origin and under the Paris Convention. In such registration, by the express provisions of Section 37 (b) of R.A. No. 166 as amended, prior (preregistration) use in commerce in the Philippines need not be alleged. Whether the Philippine trademark was based on actual use in the Philippines (under Section 2-A) or on registration in a foreign country of origin (under Section 37), the statute appears to require that trademarks (at least trademarks not shown to be internationally "well-known") must continue to be used in trade and commerce in the Philippines. It is, however, essential to point out that such continued use, as a requirement for the continued right to the exclusive use of the registered trademark, is presumed so long as the Certificate of Registration remains outstanding and so long as the registered trademark owner complies with the requirements of Section 12 of R.A. No. 166 as amended of filing affidavits with the BPTTT on the 5th, 10th and 15th anniversaries of the date of issuance of the Certificate of Registration, showing that the trademark is still in use or showing that its non-use is not due to any intention to abandon the same. In the case at bar, again, respondent Fortune has not explicitly pretended that the petitioners' trademarks have been abandoned by non-use in trade and commerce in the Philippines although it appears to insinuate such non-use and abandonment by stressing that petitioners are not doing business in the Philippines. That petitioners are not doing business and are not licensed to do business in the Philippines, does not by any means mean either that petitioners have not complied with the requirements of Section 12 of R.A. No. 166 relating to affidavits of continued use, or that petitioners' trademarks are not in fact used in trade and commerce in the Philippines. In the Converse case, as earlier noted, the Court held that the circumstance that the foreign owner of a Philippine trademark is not licensed to do business and is not doing business in the Philippines, does not mean that petitioner's goods (that is, goods bearing petitioner's trademark) are not sold in the Philippines. For cigarettes bearing petitioners' trademarks may in fact be imported into and be available for sale in the Philippines through the acts of importers or distributors. Petitioners have stated that their "Mark VII," "Mark Ten" and "Lark" cigarettes are in fact brought into the country and available for sale here in, e.g., duty-free shops, though not imported into or sold in the Philippines by petitioners themselves. There is

no legal requirement that the foreign registrant itself manufacture and sell its products here. All the statute requires is the use in trade and commerce in the Philippines, and that can be carried out by third party manufacturers operating under license granted by the foreign registrant or by the importation and distribution of finished products by independent importers or traders. The "use" of the trademark in such instances by the independent third parties constitutes use of the foreign registrant's trademarks to the benefit of the foreign registrant. 31 III We turn to petitioners' claim that they are suffering irreparable damage by reason of the manufacture and sale of cigarettes under the trademark "MARK." Here again, a basic argument of private respondent was that petitioners had not shown any damages because they are not doing business in the Philippines. I respectfully maintain that this argument is specious and without merit. That petitioners are not doing business and are not licensed to do business in the Philippines, does notnecessarily mean that petitioners are not in a position to sustain, and do not in fact sustain, damage through trademark infringement on the part of a local enterprise. 32 Such trademark infringement by a local company may, for one thing, affect the volume of importation into the Philippines of cigarettes bearing petitioners' trademarks by independent or third party traders. The damage which the petitioners claim they are sustaining by reason of the acts of private respondents, are not limited to impact upon the volume of actual imports into the Philippines of petitioners' cigarettes. Petitioners urge that private respondent's use of its confusingly similar trademark "MARK" is invasive and destructive of petitioners property right in their registered trademarks because. a) Plaintiffs' undeniable right to the exclusive use of their registered trademarks is effectively effaced by defendant's use of a confusingly similar trademark; b) Plaintiffs would lose control of the reputation of their products as their reputation will depend on defendant's commercial activities and the quality of defendant's products; c) The market in the Philippines for plaintiffs' products will be preempted; d) Purchasers will think that defendant's goods are approved or sponsored by plaintiff; e) Defendant will be allowed to benefit from the reputation of the plaintiffs' goods and trademarks;

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Maliwat. 52 Am. The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. 43 the Court. watches. Reyes. . the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark created by its first user. Thus. for which invasion no fair and reasonable redness can be had in a court of law. . 33 Modern authorities on trademark law view trademarks as symbols which perform three (3) distinct functions: first.f) Defendant will be effectively authorized to continually invade plaintiffs' property rights. since there is damage to him in the form of confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. 576. it prepares the way for growth in such commerce whether the commerce be handled by the trademark owner itself or by its licensees or independent traders. . it is done to get the benefit of the reputation and advertisements of the originator of said mark. and g) Plaintiffs will lose their goodwill and trade and the value of their registered trademarks will irreparably diluted and the damages to be suffered by plaintiffs cannot be redressed fairly in terms of money. such unfair trading can cause injury or damage to the first user of a given trade-mark. has been recognized by our Court. say. At the same time.. the owner of a trademark is held entitled to exclude others from the use of the same. and items of clothing like jeans. of the quality product . to stem the tide of fake and counterfeit consumer items flooding the Philippine market or exported abroad from our country. a well-established and well-earned reputation may be gained in countries where the trademark owner has itself no established business connection. 77. a hundred or fifty years ago. In Ang v. 35 The third or advertisement function of trademark has become of especial importance given the modern technology of communication and transportation and the growth of international trade. etc. Experience has demonstrated that when a well-known trade-mark is adopted by another even for a totally different class of goods. or of a confusingly similar. J. neckties. Jur. the Court said: . Teodoro. 44 (Emphasis supplied) 97 . . the owner of the trademark is able to establish a nexus between its trademark products and the public in regions where the owner does not itself manufacture or sell its own products. 148 ALR. inevitably result. Ana v. by having his business reputation confused with and put at the mercy of the second user. 38 Goodwill may thus be seen to be much less closely confined territorially than. The owner of a trademark or tradename has a property right in which he is entitled to protection. — the list is quite lengthy — and pay good money relying on the brand name as guarantee of its quality and genuine nature only to explode in bitter frustration and helpless anger because the purchased item turns out to be a shoddy imitation. they advertise the articles they symbolize. perfume.. they guarantee that those articles come up to a certain standard of quality. mark where confusion results in diversion of trade or financial injury. second. (Emphasis supplied) In Sta. a face powder. The first two (2) functions of trademarks were aptly stressed in e. . brandy or whisky. . said: Modern law recognizes that the protection to which the owner of a trade-mark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties. Jur. the La Chemise Lacoste case where the objectives of trademark protection were described in the following terms: . 52 Am.g. but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusing of source." 40 Advertisement of trademarks is geared towards the promotion of use of the marked article and the attraction of potential buyers and users. . 577).B. . albeit a clever looking counterfeit. . second. first. . . by prevention of the natural expansion of his business and. trademarks warn against the imitation or faking of products and prevent the imposition of fraud upon the public. 34 The first two (2) functions have long been recognized in trademark law which characterizes the goodwill or business reputation symbolized by a trademark as a property right protected by law. our image abroad . in holding that the use of the name "Flormen" with respect to shoes was infringement of the mark "Flormann" used in the men's wear such as shirts. We buy a kitchen appliance. 41 by fixing the identity of the marked article in the public mind. The greater victim is not so much the manufacturer whose product is being faked but the Filipino consuming public and in the case of exportations. or when it forestalls the normal potential expansion of his business (v. other toilet articles. In holding that there was infringing use in such case. a household tool. 576) or is in any way connected with the activities of the infringer. 37 Through advertisement. . . 36 Through advertisement in the broadcast and print media. T-shirts. 84. When noncompetitive products are sold under the same mark. as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq.L.. 39 It is no longer true that "a trademark of itself cannot travel to markets where there is no article to wear the badge and no trader to offer the article. . . they indicate origin or ownership of the articles to which they are attached. 42 the Court was called upon the determine whether there was infringement in the use of the same trademark on articles which do not belong to the same class of goods which the lawful trademark owner manufactures and sells. third. polo shirts and pants. to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark . That a registered trademark has value in itself apart from the trade physically accompanying its use. . through J.

446). Jur. private respondent suggests.Petitioners did not try to put a peso figure on their claimed damage arising from the erosion and possible eventual destruction of the symbolic value of their trademark. inconvenience. would lose only the value of the packaging material imprinted with the same trademark (which cigarettes and material may well be amenable to re-cycling) and the cost of past advertisements of "MARK" in media. 741). Central Labor Council. It does not have reference to the amount of damages that may be caused but rather to the difficulty of measuring the damages inflicted. one that restrains private respondent from using the trademark "MARK" on its cigarettes. I vote to grant due course to the petition for Certiorari. Such damage. 83 ALR.J.. The Resolution of the Court of Appeals granting private respondent's Motion to Dissolve. Rogue River Valley Canal Co. Thus.-G. The damages private respondent would sustain from reinstatement of the preliminary injunction are clearly quantifiable in pesos. did not constitute a sufficient basis for overturning the original decision of the Court of Appeals. which obviously loomed very large in the mind of the majority here. 427. is nonetheless real and effective. petitioner do not pretend to be so entitled to such a comprehensive injunction. if enjoined. either physically or in the character in which it has been held and enjoined. it is not enough to say as private respondent says. to pay heed to private respondent's creative economic argument would ultimately mean that the greater the volume of sales and the profits of the infringer. had been made earlier both before the trial court and the Court of Appeals. or damage that can be estimated only by conjecture. Bayona 45 in the following terms: Damages are irreparable within the meaning of the rule relative to the issuance of injunction where there is no standard by which their amount can be measured with reasonable accuracy (Crouc v. Private respondent's hyperbolic claims concerning the damages that it and the Government would sustain by reason of an injunction. or under some new and specially created trademark(s). provide a sufficient basis for lifting the preliminary injunction earlier granted. Field and Tub Club. with respect.. Private respondent's claims concerning alleged damages both to itself and to the Government. equity will not apply the remedy of injunction (28 Am. as pointed out by petitioners. the apprehension on the part of the majority which private respondent tried diligently to foment — that the Government would lose many millions of pesos in tax revenues and that many employees would lose their jobs. Petitioners seek only the reinstatement of the original injunction issued by the Court of Appeals. in effect disregarded everything that Court had set out in its original Decision. 98 . 244. for the Court of Appeals obviously was also exercising its discretion when it rendered its original Decision granting the preliminary injunction. and not by any accurate standard of measurement" (Phipps v. I respectfully submit that the law should not countenance such a cynical result. The mere offer and filing of a counterbond does not.A. or is destructive to. Besides. if an injunction is issued — is more apparent than real. 502). by itself. private respondent stated that it had paid many millions of pesos as ad valorem and VAT taxes to the Government in 1988 and 1989 in connection with its "MARK" cigarettes. the greater would be the infringer's claim to be entitled to continue infringement. that such continuing damage falls clearly within the concept of irreparable damage or injury described in Social Security Commission v. My conclusion is that private respondent's claims concerning damage which it would sustain if the petitioners were granted the injunction they seek. I submit. 7 ALR. 46 I next turn to private respondent's claim that issuance of an injunction would impose heavy damage upon itself and upon Government. that hundreds if not thousands of its employees would find themselves unemployed if it were restrained from the manufacture and sale of "MARK" cigarettes. An irreparable injury to authorize an injunction consists of a serious charge of.S. i. 92 P. If full compensation can be obtained by way of damages. if any they may suffer. 43 C. 47 Presumably. so that its pecuniary value will not fairly recompense the owner of the loss thereof' (Dunker v. It is not then irreparable. SP No. Respondent corporations made a lengthy discourse on the matter of irreparable injury they may suffer if the injunction were not issued. albeit indirectly only. Realistically. and of the Court of Appeals when it lifted the injunction it had issued. In addition. There is nothing to prevent private respondent from continuing to manufacture and sell cigarettes under any of its already existing and registered trademarks. while not easily quantifiable. For all the elements which supported the original issuance of a preliminary injunction continued to exist. or when the property has some peculiar quality or use. but the array of figures they have laid out merely succeeded in proving that the damage.R. 13132 and to reinstate the Decision of that same Court dated 5 May 1989. the property if affects.. this term has a definite meaning in law. is susceptible of mathematical computation. appear to me to be extravagant indeed. to set aside the Resolution of the respondent Court of Appeals dated 14 September 1989 in C. 193). the total volume of its business associated with the manufacture and sale of cigarettes trademarked "MARK" would be even larger.. As already stated.e. that the Court of Appeals in granting its Motion to Dissolve the preliminary injunction was merely exercising its discretion. of which it has several. Petitioners cannot claim to be entitled to an injunction which could restrain private respondent from manufacturing and selling cigarettes completely. if any. Finally. "An irreparable injury which a court of equity will enjoin includes that degree of wrong of a repeated and continuing kind which produce hurt. private respondent.. As noted.