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ROBERTO L. DEL ROSARIO, petitioner, vs.

COURT OF
APPEALS AND JANITO CORPORATION, respondents. Trial Court issued a preliminary injunction.

G.R. No. 115106. March 15, 1996 Private respondent assailed the order directing the
issuance of writ by way of petition for certiorari
with prayer for the issuance of writ of preliminary
Facts: injection and a temporary restraining order before
respondent CA.
Petitioner Roberto Del Rosario filed a complaint for
patent infringement against private respondent CA granted the writ and set aside questioned order
Janito Corporation. of the trial court. It expressed the view that there
was no infringement of the patents of the petitioner
Petitioner alleged that he was a patentee of an audio because the karaoke system was a universal
equipment and improved audio equipment product.
commonly known as the sing-along system or
karaoke under Letters Patent No- UM5269 as well as MR was denied.
UM6237 issued by the Director of Patents.
The effectivity of both Letters Patents was for Hence, this petition.
five(5) years and was extended for another five(5)
years. Facts:
Petitioner learned that private respondent was Whether or not the CA erred in finding the trial
manufacturing a sing-along system bearing the court to have committed grave abuse of discretion in
trademark miyata or miyata karaoke substantially enjoining private respondent from manufacturing,
similar if not identical to the sing-along system selling, and advertising the miyata karaoke brand?
covered by patents issued in his favor.
Held:
Petitioner sought from the trial court the issuance of
writ of preliminary injunction to enjoin private Yes. The petitioner had established before the trial court
respondents, from using, selling and advertising the prima facie proof of violation of his rights as patentee
karaoke.
to justify the issuance of a writ of preliminary respondent's models involve substantially the same
injunction in his favor during the pendency of the main modes of operation and produce substantially the same
suit for damages resulting from the alleged if not identical results when used. In view thereof, we
infringement. find that petitioner had established before the trial court
prima facie proof of violation of his rights as patentee
It may be noted that respondent corporation failed to to justify the issuance of a writ of preliminary
present before the trial court a clear, competent and injunction in his favor during the pendency of the main
reliable comparison between its own model and that of suit for damages resulting from the alleged
petitioner, and disregarded completely petitioner's infringement.
Utility Model No. 6237 which improved on his first
patented model. Notwithstanding the differences cited It is elementary that a patent may be infringed where
by respondent corporation, it did not refute and the essential or substantial features of the patented
disprove the allegations of petitioner before the trial invention are taken or appropriated, or the device,
court that: (a) both are used by a singer to sing and machine or other subject matter alleged to infringe is
amplify his voice; (b) both are used to sing with a substantially identical with the patent invention. In
minus-one or multiplex tapes, or that both are used to order to infringe a patent, a machine or device must
play minus-one or standard cassette tapes for singing or perform the same function, or accomplish the same
for listening to; (c) both are used to sing with a minus- result by identical or substantially identical means and
one tape and multiplex tape and to record the singing the principle or mode of operation must be substantially
and the accompaniment; (d) both are used to sing with the same.
live accompaniment and to record the same; (e) both
are used to enhance the voice of the singer using echo
effect, treble, bass and other controls; (f) both are
equipped with cassette tape decks which are installed
with one being used for playback and the other, for
recording the singer and the accompaniment, and both
may also be used to record a speaker's voice or
instrumental playing, like the guitar and other
instruments, (g) both are encased in box-like cabinets;
and (h) both can be used with one or more
microphones. Clearly, therefore, both petitioner's and Emerald Garment Manufacturing Corp vs. Court of Appeals
GR No. 100098. December 29, 1995
Petitioner appealed to CA, it filed with BPTTT a
KAPUNAN, J: motion to stay execution of the decision of Director of
Patents.
Facts:
Private submitted his opposition. BPTTT issued
Private respondent H.D. Lee Co., Inc. filed with the Resolution No. 88-33 granting petitioners motion to
Bureau of Patents, Trademarks & Technology stay execution.
Transfer (BPTTT) a Petition for Cancellation of
Registration No. SR 5054 for the trademark CA affirmed the decision of Director of
"STYLISTIC MR. LEE" in the name of petitioner Patents.Petitioner filed a MR on the decision of CA.
Emerald Garment Manufacturing Corporation.
Private respondent opposed said motion on the ground
Private respondent averred that petitioner's that it involves an impermissible change of theory on
application for registration of trademark "so closely appeal.
resembled its own trademark, 'LEE' as previously
registered and used in the Philippines cause CA issued a resolution rejecting petitioners motion for
confusion, mistake and deception on the part of reconsideration.
the purchasing public as to the origin of the goods.
Hence, this petition.
The Director of Patents rendered a decision
granting private respondent's petition for Issue:
cancellation and opposition to registration.
Whether or not petitioners trademark stylistic
The Director of Patents, using the test of MR.LEE, is confusingly similar with the private
dominancy, declared that petitioner's trademark respondents trademark LEE or LEE RIDER, LEE
was confusingly similar to private respondent's LEENS and LEE-SURES?
mark because "it is the word 'Lee' which draws the
attention of the buyer and leads him to conclude
that the goods originated from the same Held:
manufacturer.
NO. The Court taking into account the factual purchaser usually gives, and to cause him to
circumstances of this case, considered the purchase the one supposing it to be the other."
trademarks involved as a whole and rule that
petitioner's "STYLISTIC MR. LEE" is not Colorable imitation does not mean such similitude
confusingly similar to private respondent's "LEE" as amounts to identity. Nor does it require that all
trademark. the details be literally copied. Colorable imitation
refers to such similarity in form, content, words,
Petitioner's trademark is the whole "STYLISTIC sound, meaning, special arrangement, or general
MR. LEE." Although on its label the word "LEE" is appearance of the trademark or tradename with
prominent, the trademark should be considered as that of the other mark or tradename in their over-
a whole and not piecemeal. The dissimilarities all presentation or in their essential, substantive
between the two marks become conspicuous, and distinctive parts as would likely mislead or
noticeable and substantial enough to matter confuse persons in the ordinary course of
especially in the light of the following variables that purchasing the genuine article.
must be factored in.
The determination as to who is the prior user of
In determining whether colorable imitation exists, the trademark is a question of fact and it is this
jurisprudence has developed two kinds of tests Court's working principle not to disturb the findings
the Dominancy Test applied in Asia Brewery, of the Director of Patents on this issue in the
Inc. v. Court of Appeals and other cases and the absence of any showing of grave abuse of
Holistic Test. discretion. The findings of facts of the Director of
Patents are conclusive upon the Supreme
Court provided they are supported by substantial
Proceeding to the task at hand, the essential evidence.
element of infringement is colorable imitation. This
term has been defined as "such a close or
ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an
ordinary purchaser giving such attention as a
PRIBHDAS J. MIRPURI, petitioner, vs. BARBIZON which opposer owns and has
COURT OF APPEALS, DIRECTOR OF not abandoned.
PATENTS and the BARBIZON
The Directorof Patents rendered judgment
CORPORATION, respondents.
dismissing the opposition and giving due
[G.R. No. 114508. November 19, 1999.] course to Escobar's application.
PUNO, J : p The decision became final, and Escobar was
Facts:
issued a certificate of registration.

Lolita Escobar filed an application with the Later, Escobar assigned all her rights and
Bureau of Patents for the registration of the interests over the trademark to petitioner
trademark "Barbizon" docketed as Inter Pribhdas J. Mirpuri.
Partes No. 686. In 1979, the Bureau of Patents cancelled
Escobar's certificate of registration for
Private respondent Barbizon Corporation, a failure to file with the Bureau of Patents the
corporation organized and doing business Affidavit of Use of the Trademark as
under the laws of New York, U.S.A. filed an required under Section 12 of the Philippine
opposition thereto based on Sections 4 (d) Trademark Law.
and 8 of the Trademark law by claiming that
Mirpuri reapplied for the registration of the
the mark BARBIZON of the applicant is
cancelled trademark of Barbizon docketed
confusingly similar to the trademark
as Inter Partes No. 2049.
Again, private respondent filed an
opposition by citing mainly the protection of
trademark under Article 6BIS is of the
Convention of Paris and stating that
opposer's goods bearing the trademark
BARBIZON have been used in many
countries including the Philippines for at
least 40 years and has enjoyed international
reputation and good will for their quality
and to allow such registration will also
violate Article 189 of the Revised Penal
Code.
Subsequently, the Director of Patents
rendered a decision declaring private
respondent's opposition barred by res
judicata and giving due course to petitioner's
reapplication for registration. On appeal, the
Court of Appeals reversed the decision of
the Director of Patents.HSCA