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65.

Government vs Colegio de San Jose According to Art 367 of the CC, “the owners of estates bordering on ponds or lagoons do not
GR NO. L-30829 acquire the land left dry by the natural decrease of the waters.” The provision is however
August 28, 1929 inapplicable because it pertains only to “ponds or lagoons.” What is applicable is Article 77 of
Topic: Art 502 the Law of Waters: “Lands accidentally inundated by the waters of lakes, or by creeks, rivers,
Petitioners: Government of the Philippine Islands and other streams, shall continue to be the property of their respective owners.” The two
Respondents: Colegio de San Jose parcels of land therefore continue to belong to Colegio de San Jose. 

Ponente: J. Villareal

FACTS:

 During the rainy months of September to November, the waters of Laguna de Bay would
cover a long strip of land bordering the eastern part of two parcels of land and also the
eastern border of a pass owned by the municipality of San Pedro Tunasan. The pass is
usually flooded during the year.
 Colegio de San Jose contends, and its evidence tends to prove, that the parcels of land are
a part of the Hacienda de San Pedro Tunasan which belongs to them. They have been in
possession thereof since time immemorial by means of its tenants or lessees and farmers.
 Government contends that they belong to public domain because they have always been
known to be a part of the shores of Laguna de Bay.

ISSUE(s): W/N the parcels of land should be considered as public domain as part of the bed of
Laguna de Bay. (NO)

HELD/RATIO

The SC turned to the Enciclopedia Juridica Espanola’s definition of a “lake” and “lagoon” and 

concluded that Laguna de Bay was a legally a lake. As such, the provisions of the Civil Code on

ownership of lakes and their beds and shores are applicable. 


According to Article 407, lakes and ponds formed by nature on public lands and their channels
are 
of public ownership. Article 44 of the Law of Waters likewise says that “natural ponds and
lakes existing upon public lands and fed by public waters belong to the public domain.”

Laguna de Bay therefore belongs to the public domain.
However, the parcels of land in
question is considered part of the bed of Laguna de Bay. As such, The SC turned to Article 74
of the Law of Waters as regards the definition of “bed”: It is the ground covered by the waters
when at their highest ordinary depth.
During the rainy season, the water level uncommonly spills over to the highway and completely
covers the parcels of land as compared to its normal level during the dry season which reaches
only the northeastern border of the parcels of land. 

It is therefore fair to conclude that the highest ordinary depth is during the dry months. During
this time, the waters of Laguna de Bay only reaches the northeastern boundary of the two
parcels of land, so the they are outside the bed and do not belong to public domain. 


Government argued that the lots were previously submerged and it was only when the waters
of Laguna de Bay receded that Colegio claimed ownership. 

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66. Amistoso V. Ong “Article 97. Acts and contracts under the regime of old laws, if they are valid in accordance
G.R. L-60219 therewith, shall be respected, subject to the stations established in this Code. Any modification
June 29, 1984 or extension of these acts and contracts after the promulgation of this Code, shall be subject
Topic: Art. 502 to the provisions hereof.”
Petitioners: Bienvenido Amistoso
Respondents: Senecio Ong, Epifania Neri & Hon. Judge Esteban Therefore, the Judge was wrong in dismissing the case since such right was already a vested
Ponente: J. Cuevas one and that it may no long be litigated and by resurrecting such issue will be violative of res
judicata. Lastly, the petitioner was not asking the court to grant them the right to use since
it was already established beforehand because of the grant given but only to compel the
DOCTRINE: National Water Resources Council doesn’t have any jurisdiction over cases
private respondents to recognize their right and have the same annotated on their Torrens
compelling a person to recognize the grant given by the government
Certificate of Title. The interruption of the free flow of water caused by the closure of
respondents deprived the petitioner’s right to enjoy the irrigation water coming from the
FACTS
Silmod River and that such issue doesn’t fall under the jurisdiction of the National Water
- Amistoso filed a case against Epifania Neri and Senecio Ong before the CFI of
Resources Council.
Camarines Sur for recognition of Basement with preliminary injunction and damages
- Such complaint portrays that the parties herein are owners of adjoining parcels of
DISPOSITIVE PORTION
agricultural land situated in Camarines Sur
WHEREFORE, the Order of the Honorable respondent Judge of January 14, 1981, is hereby SET
- An irrigation canal traverses the land of Neri through which irrigation water from the
ASIDE. Private respondents are hereby ordered to RECOGNIZE petitioner's BASEMENT of water
Silmod River passes and flow to the land of Amistoso and that Amistoso was also
and to surrender to the Register of Deeds of Camarines Sur the owner's duplicate Transfer
benefiting from such irrigation canal
Certificate of Title No. 14216 covering respondent Epifania Neri's property so that petitioner's
- Since Ong (cultivator of the land) doesn’t want to to recognize the rights and title of
right to the beneficial use of said irrigation canal and water passing through the same may be
Amistoso, Amistoso later on filed this complaint
annotated thereon.
- Respondents herewith denied the existence of any right of Amistoso, alleged that
they have no cause of action against them and that according to P.D. # 424, the
BONUS (Pleading that estopped the respondent from denying the existence of a grant)
exclusive jurisdiction over this matter only belongs to the National Water Resources
1. That there exists an irrigation canal for the use of the defendants diverting water coming
Council thereby filing a motion to dismiss on such bases
from the Silmod River, Tinambac, Camarines Sur, passing on the ricelands of the latter to the
- RTC affirmed the motion to dismiss due to lack of jurisdiction
plaintiff's land irrigating the land of the latter, although plaintiff claims it existed since 1952 up
- Hence this petition to the Supreme Court
to the present, but disputed by the defendants.
ISSUE
2. That the plaintiff has an approved water rights Grant issued by the Department of Public
Whether the RTC was correct in dismissing the case based on lack of jurisdiction
Works, Transportation and Communications, which plaintiff claims it for beneficial use to
irrigate their land from the Silmod River and defendants dispute said claim
HELD
No!
3. That as of now, defendants have no approved Water Rights Grant issued by the proper
authorities for the use of the water for irrigation purposes from the Silmod River. However,
RATIO
defendants have a pending application for Water Rights, the water of which shall pass thru a
The Supreme Court held that by looking upon the stipulation of facts or the complaint by the
different irrigation canal.
plaintiff and respondent it was deemed that private respondents admitted that Amistoso really
had an approved Water Rights Grant issued by the Department of Public Works, Transporation
4. That one of the defendants' predecessors-in-interest, Abundio Barallas had a written
and Communications. Moreso, the records clearly discloses that it was approved 3 years before
contract with the plaintiff, which defendants claim easement of aqueduct Defendants are
the promulgation of P.D. 1067 (Water Code of the Philippines) which particularly states that
questioning the legality, enforceability and validity of such contract.
“Article 13. Except as otherwise herein provided, no person, including Government
6. That defendants refused to surrender their Transfer Certificate of Title of her land for
instrumentalities or government-owned or controlled corporations, shall appropriate water
purposes of annotation of the contract, allegedly an easement of aqueduct on the ground that
without a water right, which shall be evidenced by a document known as a water permit.”
she questions the validity, enforceability, legality and therefore they are not bound by the
same.
Such basis was also supported by Article 97 which provides that:

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67. Dasmarinas Water vs. Monterey ISSUE: Whether it is the RTC or the NWRB which has jurisdiction over the collection of water
GR 175550 production assessments.
September 17, 2008
TOPIC: ART 502-ownership of waters
PETITIONERS: Dasmarinas Water District RULING: NWRB. It is clear from the allegations that the complaint involved the
RESPONDENTS: Monterey Foods Corporation determination and enforcement of petitioners right under PD 198 to impose production
Ponente: Corona, J. assessments, not the appropriation and use of water and the adjudication of the parties’
respective water rights. It was admitted that petitioner was a duly constituted water
FACTS: district. Respondent, on the other hand, obtained water permits from the NWRB. Both thus
had respective rights to the use of the water. But petitioner was not challenging the water
 Respondent Monterey Foods Corporation is a domestic corporation primarily permits acquired by respondent.
engaged in the livestock and agriculture business. It was issued water permit nos.
17779 and 17780 by the National Water Resources Board (NWRB) for its two deep The case at bar does not involve any dispute relating to appropriation or use of waters.
wells located at Barangay Langcaan, Dasmarinas, Cavite. The water drawn from the
wells was used solely for respondents business and not for the purpose of selling it PD 198. Sec. 39. Production Assessment. - In the event the board of a district finds, after
to third persons for profit. notice and hearing, that production of ground water by other entities within the district for
commercial or industrial uses is injuring or reducing the districts financial condition, the
board may adopt and levy a ground water production assessment to compensate for such
 Petitioner Dasmarinas Water District is a government-owned corporation organized
by the Sangguniang Bayan of Dasmarinas in accordance with the provisions of PD loss. In connection therewith, the district may require necessary reports by the operator of
198 (otherwise known as the Provincial Water Utilities Act of 1973). any commercial or industrial well. Failure to pay said assessment shall constitute an invasion
of the waters of the district and shall entitle this district to an injunction and damages
 On March 30, 2004, petitioner filed a complaint for payment of production
pursuant to Section 32 of this Title.(Emphasis supplied)
assessment against respondent in the RTC of Imus, Cavite, Branch 90, invoking Sec.
39 of PD 198, it prayed that respondent be ordered to pay the following:
CIVPRO
(1) monthly production assessment for the two deep wells in the amount
Specifically, the action was within the exclusive jurisdiction of the RTC because it was
of P55,112.46 from the date of demand;
incapable of pecuniary estimation as provided in Sec. 19 (1) of BP 129, as amended by RA
(2) actual expenses of at least P50,000 and
7691. The basic issue was petitioners entitlement to the right provided under Sec. 39 of PD
(3) attorneys fees and costs of suit.
198. Although there was a claim for a sum of money, it was purely incidental to, or a
 On June 8, 2004, respondent filed a motion to dismiss on the ground that the RTC
consequence of, the principal relief sought.
had no jurisdiction to hear the case because, under PD 1067 (otherwise known as
the Water Code of the Philippines), it was the NWRB that had jurisdiction
Finally, respondent challenged the constitutionality of Sec. 39 of PD 198 in its memorandum. It
 RTC denied motion to dismiss. It ruled that it had jurisdiction over the subject
contended that said provision was an undue delegation of legislative power. A collateral attack
matter of the case because it referred to the right of petitioner to collect
on a presumably valid law is not allowed.
production assessments
 Aggrieved, respondent filed a petition for certiorari in the CA under Rule 65 of the
We have ruled time and again that the constitutionality or validity of laws,
Rules of Court. Aside from the issue of jurisdiction, it likewise raised the issue of
orders, or such other rules with the force of law cannot be attacked
whether petitioner had the authority to impose a production assessment under
collaterally. There is a legal presumption of validity of these laws and rules.
Sec. 39 of PD 198.
Unless a law or rule is annulled in a direct proceeding, the legal
 the CA granted herein respondents petition and dismissed petitioners complaint presumption of its validity stands.

 It held that since the complaint involved a dispute relating to the appropriation,
utilization, exploitation, development, control, conservation and protection of
waters, the NWRB had original jurisdiction over it under Art. 88 of PD 1067. It also
ruled that under PD 1067, petitioner had no authority to impose the assessment
without the prior approval of the NWRB.


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69.Mercado v Municipal President of Macabebe  Court’s contention: The creek in question is a natural navigable creek which already
GR NO. 37986 existed on the said hacienda of the appellant not only long before the revolution but also
March 1, 1934 from the time immemorial.
MJB ISSUE:
Topic: ART 503  WON Mercado was the owner of the creek and hence, had the right to use the property.
Petitioners: Eufemia Mercado  WON, the creek, which derives it waters from the river, is public domain?
Respondents: Municipality President of Macabebe Pampanga
Ponente: Diaz HELD/RATIO:
DOCTRINE: Creeks are property of the public domain. From Lower Court:
 Invoking the provisions of articles 339, 407 and 408 of the Civil Code, decided the question
FACTS: mainly by taking said fact into consideration.
 This is an appeal from the Court of First Instance of Pampanga. o The pertinent parts of the aforesaid three articles provide as follows:
o Mercado’s appealed from the order of the Secretary of Commerce to have the o Property of public ownership is —
two dikes at the end of the creek names Batasan-Limasan or Pinac Buñgalun, 1. That devoted to public use, such as roads, canals, rivers, torrents, ports and
removed. bridges constructed by the State, riverbanks, shores, roadsteads, and that of a
o According to Mercado, the creek traverses through her hacienda as described similar character. (Art. 339.)
in certificate of Title No. 329 of the registry of deeds of Pampanga, the hacienda o The following are of public ownership:
which she owns by virtue of donation. 1. Rivers and their natural channels;
 Mariano Mercado, the former owner of the hacienda had a sort of canal excavated in 2. Continuous or intermittent waters from springs or brooks running in their
order to facilitate the cutting and transportation of firewood and other products, natural channels and the channels themselves;
produced on the said hacienda, towards the Nasi River on the east or towards Limasan 3. Waters rising continuously or intermittently on lands of public ownership;
creek on the west. xxx xxx xxx
8. Waters which flow continuous or intermittently from lands belonging to
 The said Batasan-Limasan or Pinac Buñgalun creek or canal already existed at the time of
the institution of the registration proceedings wherein judgment was rendered resulting private parties, to the State, to provinces, or to towns, from the moment they
leave such lands. (Art. 407.)
in the issuance of certificate of title No. 329 in favor of Romulo Mercado. When they
registered the canal for the issuance of the title, the government did not argue. o The following are of private ownership:
1. Waters, either continuous or intermittent rising on private estates, while they
 The creek was opened not only the residents of the hacienda and those who visited it but
run through them;
also some of the residents of the nearby barrios and municipalities began to use it as a
2. Lakes and ponds and their beds when formed by nature on said estates;
means of communication in attending to their needs.
3. Subterranean waters found on the same;
 Then Romulo Mercado decided to convert the creek into a fish pond
4. Rain waters falling thereon as long as they remain within their boundaries;
o Mercado presented witnesses: That the creek in question became navigable
5. The channels of flowing streams, continuous or intermittent, formed by rain
only from the time Mariano Mercado had excavated both ends and the junction
water, and those of brooks crossing estates which are not of public ownership.
of the former two recesses from which said creek had been formed and it took
 Note: The water, bed, banks, and floodgates of a ditch or aqueduct
60 men to work on it for 2 weeks. And when strangers began passing through it
are deemed to be an integral part of the estate or building for which
w/o his permission, he decided to close access.
the waters are intended.
o Macabebe’s witnesses: That the creek in question has existed on the appellant's
 The owners of estates through or along the boundaries of which the aqueduct passes can
hacienda from time immemorial, and that they had been passing through and
assert no ownership over it, nor any right to make use of its beds or banks, unless they
fishing in it. They presented Res. 6 of The municipal council of Macabebe,
base their claim on title deeds which specify the right or the ownership claimed. (Art,
Pampanga, placing at public auction the privilege of fishing in the Batasan-
408.)
Limasan creek (Exhibit 6). But they failed to prove that the property in question
 Creek - recess or arm extending from a river, which participates in the ebb and flow of the
is public domain.
sea. (15 Enciclopedia Juridica Española, 216.)
 Mercado’s contention: Batasan-Limasan or Pinac Buñgalun creek is not a natural but an
 Brook - a short, almost continuous stream of water (Diccionario de la Real Academia
artificial creek which had been developed on his hacienda by means of excavations made
by his men on two different occasions, the former before the revolution or during the Española)
SC NA:
Spanish regime, and the latter after the revolution.
 Under article 407, the Batasan-Limasan or Pinac Buñgalun creek may be considered as
belonging to the class of property enumerated in paragraph 8 thereof. And, in addition to

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the foregoing, the Contentious Court of Spain (Tribunal Contencioso de España) in a
decision dated June 25, 1890, laid down the doctrine that creeks are property of the
public domain (15 Enciclopedia Juridica Española, 216).
 And even granting that the Batasan-Limasan creek acquired the proportions which it had,
before it was closed, as a result of excavations made by laborers of the appellant's
predecessor in interest, the owners thereof as well as strangers, that is, both the
residents of the hacienda and those of other nearby barrios and municipalities, had
been using it not only for their bancas to pass through but also for fishing purposes, and
it being also a fact that such was the condition of the creek at least since 1906 until it
was closed in 1928.
 The appellants lost their right to the creek by prescription as they failed to obtain, and
in fact they have not obtained, the necessary authorization to devote it to their own
use to the exclusion of all others.
 The use and enjoyment of a creek, as any other property susceptible of appropriation,
may be acquired or lost through prescription, and the appellant and her predecessors
in interest certainly lost such right through the said cause, and they cannot now claim
it exclusively for themselves after the general public had been openly using the same
from 1906 to 1928.
 When two different interests, one being private and the other public, are in conflict
with one another, the former should yield to the latter.
 The doctrine laid down in the case of the Government of the Philippine Islands vs. Santos
(G. R. No. 27202, promulgated September 2, 1927, not reported): Thing involved in that
case was a waterway passable by bancas during high tide, and dries up in the dry season.
 In this case, the Batasan-Limasan creek is perfectly navigable by bancas throughout the
year.
 Batasan-Limasan creek is public domain.

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70 MUNICIPALITY OF MANGALDAN V MUNICIPALITY OF MANAOAG may not, to the prejudice of the inhabitants of Mangaldan, alter, modify, or reduce
GR NO 11627 the water bed of the said river in the part thereof where it passes through the town
AUGUST 10 1918 of Manaoag.
SOLENN  Court erred in recognizing and holding that the municipality of Mangaldan is
Topic: WATERS; 407, 409, 411, 504, 505 entitled to use the water of the Tolon section of the Tagumising River, record
Petitioners: THE MUNICIPALITY OF MANGALDAN shows that both prior and subsequent 1870, and until but a few years ago, the
Respondents: THE MUNICIPALITY OF MANAOAG town of Mangaldan had been using such water from the Tagumising section of
Ponente: LIGON, JJ. the river as was allowed to pass the Manaoag dam and continue its course
through the Tolon section of said river, for, in the judgment rendered by the Court
of First Instance of Pangasinan, on September 3, it was ordered that the residents
FACTS
of Mangaldan be restored to the enjoyment of the surplus water that escaped from
 Municipality of Mangaldan filed a complaint in the court of First Instance of
the Manaoag dams in its course down river. It also appears from said judgment
Pangasinan against the municipality of Manaoag alleging that from time immemorial
that the Manaoag dams were constructed of branches of trees and allowed the
it has been enjoying and using one half of the water of the Tagumising River, and the
passage of a considerable volume of water which was used by the inhabitants of
volume of the water carried by the so-called Tolon river, a continuation of the
Mangaldan, and that the interruption of the flow of the water to and through the
former, which passes through the Municipality of Manaoag, under an easement for
Tolon section of the river was due to the construction of a dam in the sitio of
more than 30 years in favor of plaintiff.
Mitura, for the reason that this dam was built in 1900 and the interruption in the
 That some residents have been enjoying the use of the water from said rivers for
flow of the water took place only in 1911, and was caused by the openings in the
irrigating their lands but 2 years prior to the date, they were deprived of the use and
dam being filled with earth, sand, and brush.
enjoyment of the water of said rivers because of obstruction on the channel because
 Furthermore, the record contains no evidence whatever that the inhabitants of
of the dam built at the confluence of the 2 rivers, at the place between the localities
the town of Mangaldan had, for more than twenty years, ceased to use the water
of Tagumising and Tolon which disrupted the flow of the water. Plaintiff municipality
coming from the Tagumising River, for the interruption in the flow of that water
prayed the court to hold it was entitled to use and enjoy water carried by the so-
began only seven years ago; so that, in accordance with the provisions of articles
called Tolon river, and to tear down the dam.
409 and 411 of the Civil Code, the right acquired by them, through prescription,
 In its answer, the defendant said that it recognized the personality of the plaintiff
has not been extinguished.
and admitted that the channel of the Tagumising River lay partly within the
 The existence of the dam or dams in the Tagumising River which benefit the
municipality of Manaoag; and denied each and all of the allegations contained in the
inhabitants of the town of Manaoag by their enjoyment of the water of public use,
complaint. That even though a right to the water that flows through the Tagumising
implies the obligation to maintain and preserve the said dam or dams in proper
River, such right had already totally prescribed;
condition so that any alteration or change may not cause injury to the residents of
 The court inspected the vicinity of the river for ocular inspection of the dam in Sitio
other towns and without monopolizing its use.
Amorboran.

 RTC order Manaoag to remove the dam. The court further ordered to construct in
the same place a new dam, with branches of trees only, so that the suplus water
would pass nd be used by inhabitants of Mangaldan.
Notes:
ISSUE
Court repaired to the vicinity of said river for the purpose of making an ocular inspection
(1) W/N the Municipality of Mangaldan has the right to use and enjoy the water of that
thereof and of the dam in the sitio of Amorboran. Said inspection disclosed that near and in
part of river by way of prescription? Yes.
front of. the said dam there was a piece of land covered with an overgrowth of weeds which
prevented the water of the river from reaching it, and, on its being carefully examined, some
HELD/RATIO
bamboo stakes were found there; these had some plant growth in their lower part, while
 Witnesses presented by Manaoag testified that the people of Mangaldan had for
their upper and front parts appeared to be covered with earth and sand overlaid with
more than 20 years been using and enjoying the water that passed through Tolon
considerable under brush and a number of small trees; that at a distance of about 50 steps
section of the river coming from Tagumising section which crossed the municipality
from the dam, there was a small pool of water and back of it the bed of the river was
of Manaoag.
completely dry and had been led in with earth and sand; and that in the part of the river
 The Tagumising River, as well as the water that flows through it and then passes
between the dam and the pool of the water there was a ll that was higher than the river bed.
through the Tolon River, which is a continuation of the Tagumising River, are of the
During the inspection, counsel for the plaintiff called attention to the fact that, as the bed of
public domain. This is confirmed by article 33 of the Law of Waters of August 3, 1866,
the irrigation ditch named Cañon was of the same width as that of the Tagumising River, and
in force in these Islands. Therefore, the inhabitants of both Manaoag and Mangaldan
that, as there was a current in the ditch, this latter took all the water of the river. It was also
have the same right to enjoy the use of this water, and the defendant municipality
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observed that the bamboo stake was quite new, and had not rotted notwithstanding that it permit has been made known to the public, any interested party must file he protest
had been under water. in order the application be properly evaluated
72. Buendia v. City of Iligan  Failure of respondent to timely oppose the water permit applications within a
G.R. No. 132209 reasonable time granted the water permits final and executory
April 29, 2005 SECOND ISSUE
By: Danielle Casipit  Lower court was incorrect
_____________________________________________________________________  First, said determination was not passed upon by the agency that exercises original
Topic: Art. 504-505 jurisdiction to settle said question of fact, meaning the court below should have
Petitioner: Carlos C. Buendia refused to decide on the matter
Respondent: City of Iligan  Second, such determination is contradicted by the allegations made by the City of
_____________________________________________________________________ Iligan in a previous case that has become final involving the same parties
 It was established in that case, and affirmed by the CA, that respondent entered
Facts: petitioners property only in 1974 and constructed an in-take dam for purposes of
 On October 5, 1992, petitioner filed with the NWRB an application for appropriation appropriating water from the spring only in 1978
of water from a spring located within his property for commercial and domestic  Therefore based on the respondent’s allegations, ICWSS cannot be said to have
purposes (2 applications) in Ditucalan, Iligan City acquired right to use of the water by acquisitive prescription, since it only entered
 In the absence of protests, they issued the Water Permits in his favor for both the premises 2 years before the enactment of the Water Code of the Philippines, and
 On November 17, 1993, 5 months after issuance of permits, City of Iligan filed with 18 years before petitioner applied with the NWRB for water permits
the NWRB an Opposition and/or Appeal contesting the issuance of said water
permits to petitioner, and a protest against petitioners water permit applications
 On March 10, 1994, the NWRB dismissed the opposition for being filed out of time
 They did not move for a reconsideration but instead filed on September 9, 1994 with
the RTC a petition for Certiorari assailing the legality of the NWRB Order
 They sought to annul the NWRB Order on the grounds that (1) the NWRB did not
notify the City of Iligan about the Water Permit Application; (2) decision was without
due process
 Petitioner filed an answer and case was set for pre-trial
 Parties agreed to limit the issue to w/n the NWRB order was rendered with grave
abuse of discretion, contrary to law
 Court upheld dismissal of the opposition, but annulled the NWRB order ruling that
ICWSS had already acquired by prescription the right to appropriate waterfrom the
Ditucalan spring prior to Beundia’s application for water rights and that the Board no
longer hand any jurisdiction to issue any water right
 Petitioner filed an MR which was denied

Issue: Who between Iligan and Buendia has the better right to the water source? (Buendia)
W/N respondent had already acquired by acquisitive prescription the right to appropriate
water and NWRB no longer had any jurisdiction to issue permits?

Held:
First ISSUE
 It should have been left to the determination of the NWRB via a timely protest filed
during the pendency of the water permit applications
 Issue however could not have been adjudicated upon by the WRB since the
application was never properly contested
 Hence, absence of a timely protest, wo water rights controversy arose
 Pursuant to Art. 16 and 17 of the Water Code, after an application to obtain a water
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73 NAWASA v. SEC. OF PUBLIC WORKS AND COMMUNICATION could not refuse Metropolitan District because this would, in effect, amend the Chief
GR NO. L-20928 Executive’s proclamations.
March 31, 1966 The proclamations in favor of the predecessor is constituted valid and operative to NAWASA.
It is incontestable fact that from 1913 to 1959 or 46yrs, NAWASA and its predecessor had
Topic: Art. 504 / 505 openly, publicly, and exclusively appropriated water from the Angat River without protest from
Petitioners: NAWASA anyone.
Respondents: Sec. of Public Works and Communications Art. 409 of the Civil Code of 1889 and Art. 194 of the Law of Waters of 1866 recognized 2 ways
Ponente: Reyes, J.B.L., J. of acquiring the right to the use of public waters:
1. By administrative concession
2. By prescription for 20 years
FACTS
Since Act 2152 or the Irrigation Law nowhere provides that the procedure in Sec. 14 thereof
 On Jan. 7, 1959, the Project Engineer of the Angat River Irrigation System sent a
shall be exclusive and implied repeals are not favored, it is safe to conclude that it did modify
complaint letter to the Director of Public Works asking that representations be made
the old legislation procedure in obtaining administrative concession but has not invalidated
to NAWASA to secure the release of enough water from the Ipo Dam to avert a crop
the prescription in acquiring title thereto, specifically Art. 504 reiterates the dual juridical
failure in Bulacan because NAWASA refused when they requested the same because
source of title to the use of public of water, and even reduces the prescriptive period from
of low water level in its reservoirs.
20 years (provided under Art. 409 of CC) to 10 years.
 Under a series of indorsements, the acting undersecretary of Dept. of Public Works
rendered an administrative decision recognizing that executive proclamations nos.
48 and 72 reserved 3600 and 40,000 liters per second of water from the Angat River
for the Metropolitan and Water District (predecessor of NAWASA) and the Angat
River Irrigation System respectively. Therefore, NAWASA is not entitled to priority in
the use of the water of the Angat River. (In short, NAWASA has no right daw to use
the waters of the Angat River)
o He ordered that NAWASA should apply for water rights with the Bureau of
Public Works, pursuant to Sec. 14 of Act 2152 (Irrigation Law)
 After the denial of the sought reconsideration from the Dept of Public Works,
NAWASA appealed to the court, as allowed by Sec. 4 of the Irrigation Act
o Appeal may be done within 30 days from notice of administrative decision
by forwarding a complaint through registered mail on the last (30th) day
of the period.
 The defendant Secretary of Public Works, in its answer, alleged that the complaint
was filed out of time, NAWASA had not exhausted all administrative remedies, and
NAWASA has not acquired the right to use and enjoy water from Angat River by
administrative concession or prescription.
 Court found the defenses of the Secretary untenable and reversed the Secretary’s
decision.
 Hence this appeal from judgment of the CFI of Manila.

ISSUE
WON NAWASA has a right to use and enjoy water from Angat River

HELD/RATIO
Proc No. 5 amended by Proc. No. 40 of General Leonard Wood expressly declared that the
Metropolitan Water District is exempted from appropriation and reserve for the use of 3500
liters per second or so much as may be needed for domestic purposes.
This imply that the District was granted authority to withdraw and make exclusive use of the
aforesaid amount of water. The proclamation, in effect, amount to an administrative
concession in favor of Metropolitan Water District. Therefore, the Director of Public Works
8 OF 32
74 MONTEVERDE V. GENEROSO o Nuisance per accidens – even the municipal authorities, under their power to declare
GR NO. 28491 and abate nuisances, would not have the right to compel the abatement of a
SEPTEMBER 29, 1928 particular thing or act as a nuisance without reasonable notice to the person alleged
Topic: SECTION 3. - The Use of Waters of Private Ownership – ART. 511 to be maintaining or doing the same of the time and place of hearing before a
Petitioners: TOMAS MONTEVERDE tribunal authorized to decide whether such a thing or act does in law constitute a
Respondents: SEBASTIAN T. GENEROSO, Provincial Governor of Davao, et. al. nuisance.
Ponente: MALCOLM  In Iloilo Ice and Cold Storage Co. v. Municipal Council of Iloilo, a dam or a fishery constructed
in a navigable stream is not a nuisance per se.
o A dam or a fishpond may be found to be a nuisance where it endangers or impairs
DOCTRINE: Art. 511. Every owner of a piece of land has the right to construct within his
the health or depreciates property by causing water to become stagnant.
property, reservoirs for rain waters, provided he causes no damage to the public or to third
persons. o The public health may be conserved but conserved only in a legal manner.
o Due process of law must be observed before the citizens' property or personal rights
FACTS: or liberty can be interfered with.
o Conceding without deciding that article 24 of the Law of Waters is in force, we
 Tomas Monteverde is the owner of a parcel of land situated in the barrio of Santa Ana,
reiterate that it can only be made use of by conforming to the provisions of the
Davao. He possesses a Torrens title to the land obtained in 1921.
organic law.
o The parcel of land is bounded on the northwest by the Agdao River, which has a
 In Lawton v. Steele, there was an action brought to recover the value of (16) nets belonging
branch known as the Tambongan Creek. The creek is navigable and runs through
to the plaintiffs which were destroyed by defendant.
Monteverde’s land, and as such is of public ownership.
o Lawton, as a state fish and game protector, justified himself by citing the section of
 For fishpond purposes, Monteverde constructed two dams across the Agdao River and (5)
the law authorizing the seizure and removal of nets.
dams across the Tambongon Creek. (fishponds were constructed in 1921 & 1922)
o The court recognized the legislative power to regulate fishing in public waters, and
o The two dams in the Agdao River were destroyed by order of the district engineer of
the right of summary abatement of nuisances without judicial process or proceeding
Davao. The provincial governor of Davao also threatened to destroy the other dams
for the protection of the health; but said the court: "In the process of abating a
in the Tambongon Creek.
nuisance there are limitations both in respect of the agencies which may be
o The motive behind the destruction of the dams in the Agdao River and the proposed
employed, and as to what may be done in execution of the remedy."
destruction of the dams in the Tambongon Creek was to safeguard public health
o If the property of great value, it would be putting dangerous power in the hands of
(NOTE: having closed some of the branches of the Agdao River for fishpond purposes,
a custom officer to permit him to sell or destroy it as a public nuisance and the owner
it resulted to the obstruction of the flow of water, causing the stagnant water to
would have good reason to complain of such act, as depriving him of his property
serve as a breeding place for mosquitos).
without due process of law.
 CFI (Davao) – Monteverde sought to obtain an order of injunction in restraint of the
o But where the property is of trifling value, and its destruction is necessary to effect
provincial governor, district engineer, and the district health officer, however, the attempt
the object of a certain statute, we think it is within the power of the legislature to
was unsuccessful.
order its summary abatement.
 In contrast with Lawton vs. Steele, (1) there is no law authorizing the summary abatement
ISSUE: Whether existing law authorizes the provincial governor and the other provincial
of nuisances by the provincial governor; and (2) the dams and fishponds are not of trifling
officials to remove without hearing or legal process any private construction on a navigable
value.
stream? (NO)
In accordance with the foregoing, the judgment appealed from must be as it is hereby
HELD/RATIO:
reversed, and instead the injunction prayed for shall issue prohibiting the defendants from
 Administrative Code grants the municipal council the power by ordinance or resolution “to
destroying the dams and fishponds in question. It is so ordered without express finding as to
declare, prevent, and abate nuisances.”
costs in either instance.
 Water Law Sec 24, on the other hand, says “any person may construct on his property ponds
for bathing, commercial or recreative purposes with notice to the governor. The governor
will have the power to suspend work if after consultation with experts, it appears the
construction will be prejudicial to public interests. Private party may appeal to the
government.”
 Nuisances are of two classes: Nuisances per se and per accidens.
o Nuisance per se – since they affect the immediate safety of persons and property,
they may be summarily abated under the undefined law of necessity.
9 OF 32
75 Santos vs. Moreno
GR. No. L-15829 ISSUE:
December 4, 1967
Topic: Art. 511 Whether the streams belong to the public domain or to the owner of Hacienda San Esteban.
Petitioners: Roman Santos
Respondents: Florencio Moreno, Secretary of Public works and Communications HELD:
Ponente: J. Bengzon The Streams belong to the owner of Hacienda San Esteban.
 A private person may take possession of a watercourse if he constructed the same within
his property.
DOCTRINE:
 The evidence presented by Roman Santos in the administrative proceedings supports the
conclusion of the lower court that the streams involved in this case were originally man-
Artificial bodies of water, devoted for the exclusive use of the owners, are deemed private
made canals constructed by the former owners of Hacienda San Esteban and that said
ownership.
streams were not held open for public use. This same conclusion was reached 27 years
earlier by an investigator of the Bureau of Public Works whose report and
FACTS:
recommendations were approved by the Director of Public Works and submitted to the
Secretary of Commerce and Communications.
 The Zobel family of Spain formerly owned vast track of marshland in the municipality of
 The streams in question were artificially made, hence of private ownership.
Macabebe, Pampanga province. Called Hacienda San Esteban, it was administered and
 Pursuant to Article 71 of the Spanish Law of Waters*, and Article 408(5)** of the Spanish
managed by the Ayala y Cia.
Civil Code, channels of creeks and brooks belong to the owners of estates over which
 From the year 1860-1924, Ayala y Cia devoted the hacienda to the planting and
they flow. The channels, therefore, of the streams in question, which may be classified
cultivation of nipa palms from which it gathered nipa sap or "tuba." It operated a
creeks, belong to the owners of Hacienda San Esteban.
distillery plant in barrio San Esteban to turn nipa tuba into potable alcohol, which was in
 With the exception of Sapang Cansusu, being a natural stream and a continuation of the
turn manufactured into liquor.
Cansusu River, admittedly a public stream, belongs to the public domain. Its closure
 Accessibility through the nipa palms deep into the hacienda posed as a problem. Ayala y
therefore by the predecessors of Roman Santos was illegal.
Cia therefore dug canals leading towards the hacienda's interior where most of them
 All the other streams, being artificial and devoted exclusively for the use of the hacienda
interlinked with each other. The canals facilitated the gathering of tuba and the guarding
owner and his personnel, are declared of private ownership. Hence, the dams across
and patrolling of the hacienda by security guards. By the gradual process of erosion these
them should not he ordered demolished as public nuisances.
canals acquired the characteristics and dimensions of rivers.
 In 1924, Ayala y Cia shifted from the business of alcohol production to bangus culture. It
*Art. 71 of the Spanish Law of Waters: The water-beds of all creeks belong to the owners of the
converted Hacienda San Esteban from a forest of nipa groves to a web of fishponds. To
estates or lands over which they flow.
do so, it cut down the nipa palm, constructed dikes and closed the canals criss-crossing
**Art. 408(5) Spanish Civil Code: The following are of private ownership:
the hacienda.
(5) The channels of flowing streams, continuous or intermittent, formed by rain water, and
 Sometime in 1925, Ayala y Cia sold a portion of Hacienda San Esteban to Roman Santos
those of brooks crossing estates which are not of public ownership.
who also transformed the swamp land into a fishpond. In so doing, he closed and built
dikes across Sapang Malauling Maragul, Quiñorang Silab, Pepangebunan, Bulacus, Nigui
and Nasi.
 The closing of the man-made canals in Hacienda San Esteban drew complaints from
residents of the surrounding communities. Claiming that the closing of the canals caused
floods during the rainy season, and that it deprived them of their means of transportation
and fishing grounds, said residents demanded re-opening of those canals.
 Subsequently, Mayor Lazaro Yambao of Macabebe, accompanied by policemen and
some residents went to Hacienda San Esteban and opened the closed dikes at Sapang
Malauling Maragul Nigui and Quiñorang Silab.
 Whereupon, Roman Santos filed a case which prevented Mayor Yambao and others from
demolishing the dikes across the canals. The municipal officials of Macabebe countered
by filing a complaint (docketed as Civil Case No. 4527) in the same court. The Pampanga
Court of First Instance rendered judgment in both cases against Roman Santos who
immediately elevated the case to the Supreme Court.

10 OF 32
76. Lunod v Meneses W/N Meneses has a right to construct the dam that blocks the water going through his land?
GR NO. 4223
August 19, 1908 HELD/RATIO:
Topic: Art. 511 NO - According to Art. 530, an easement is a charge imposed upon one estate for the benefit of another
Petitioners: Nicolas Lunod belonging to a different owner, and the realty in favor of which the easement is established is called the
Respondents: Higino Meneses dominant estate, and the one charged with it the servient estate.
Ponente: Torres, J.
The Paraanan lands, being the lower ones, are subject to the easement of receiving and giving passage to
FACTS: the waters from the higher lands and the Calalaran Lake; this easement was not by agreement; it is of
 Lunod and seven (7) others are residents of Bambang, Bulacan. statutory nature, and the law has imposed it for the common public utility due to the difference in the
 They filed a complaint against Meneses, alleging that each of them owned and possessed farm altitude of the lands in Barrio Bambang.
lands (rice fields) in Maytunas and Balot, which is near a small lake named Calalaran.
 Meneses is the owner of a fish pond and a strip of land in Paraanan, adjoining the Calalaran Art. 552 and 563, which both relate to easements, also found application in this case. But the special law
lake on one side, and the Taliptip River on the other. cited is Art. 111 of the Law of Waters, which treated natural easements relating to waters:
 That from time immemorial and consequently more than twenty (20) years before 1901, there
“Lands situated at a lower level are subject to receive the waters that flow naturally, without the work of
existed and still exists in favor of Lunod and co’s rice fields a statutory easement permitting the
man, from the higher lands together with the stone or earth which they carry with them.”
flow of water over the said land in Paraanan. This easement was enjoyed until 1901 and
consisted in water collected upon their lands and in the Calalaran Lake so it could flow through
Hence, applying the laws, the lower land owner cannot erect works that will impede or prevent such an
Paraanan into Taliptip River.
easement or charge, constituted by the law upon his estate for the benefit of the higher lands belonging
 From 1901, however, Meneses, without any right or reason, converted the Paraanan land into
to different owners; neither can the latter do anything to increase or extend the easement.
a fish pond and by means of a dam and a bamboo net, prevented the free passage of the water
through Taliptip River.
According to the law, Meneses had no right to construct the works, nor the dam which blocks the passage,
 As a consequence of this action, the lands of Lunod and co. became flooded and damaged by
through his lands and the outlet to the Taliptip River; having done so, to the detriment of the easement
the stagnant waters since there was no outlet except through the land in Paraanan.
charged on his estate, he violated the law which protects and guarantees the respective rights and duties
 Such loss and damage will continue if the obstructions installed by Meneses remained.
of the owners of the fields in Calalaran and Paraanan.
 Hence, Lunod and co. asked that judgment be entered against Meneses, declaring that the land
in Paraanan is subject to a statutory easement permitting the flow of water from the property Art. 388 gives every owner the right to enclose his estate but this is limited by the easement imposed upon
of the former. Additionally, Meneses should remove such obstructions and abstain from closing his property.
the subject easement.
 Meneses, however, denied the allegations and the statutory easement, saying no such right Meneses might have constructed the works for a fish pond within his land, but he was always under the
could exist in favor of the lands described in the complaint, permitting the waters to flow over strict and necessary obligation to respect the statutory easement of waters charged upon his land, and he
the fish pond that he and his brothers owned. had no right to close the passage and injure the owners of the dominant estate by obstructing the outlet
 Meneses argues that the land was inherited from their deceased mother and it has been to the Taliptip River.
surveyed. He also denied that he had occupied or converted any land in the barrio into a fish
pond; therefore, he asked the court to enter judgment in his favor. To have Meneses make another dam for the benefit of the plaintiffs in preventing salt waters from
 RTC: Lunod and co. won. Meneses must remove the dam to free the passage of waters through overflowing is allowed since it is beneficial for them all. However, to obstruct the flow of waters when the
the strip of land in Paraanan and to abstain in future obstruction. high lands are flooded is prohibited since it impairs the right of the owners.

Land Details After the Court Ruled: WHEREFORE, lower court is affirmed. Defendant must respect the easement and he cannot obstruct the
 The Court found that the lands owned by Lunod and Co. are located in places relatively higher flow of waters.
than Sitio Paraanan, which is where the land and fish pond of Meneses is and is bording on the
Taliptip River; that during the rainy season, the rain that falls on Lunod’s land, and which flows
towards Calalaran Lake during flood, has no outlet to the Taliptip River other than through the
low land of Paraanan; that on the borderline between Calalaran and Paraanan, there has
existed from time immemorial a dam, constructed by the community for the purpose of
preventing salt waters from Taliptip River at high tide.
 That whenever rainfall was abundant, one of the residents of the sitio was designated by the
justice of the barrio to open the sluice gate in order to let out the water that flooded the rice
fields through the land of Paraanan to the Taliptip River; and that since 1901, Meneses
constructed another dam along the boundary of his fish bond in Paraanan, thereby impeding
the outlset of the waters that flood the fields at Calalaran.

ISSUE:
11 OF 32
77 NAPOCOR v CA  PETITIONER’S ANSWER: denied the allegations. Contentions are the following:
GRN 96410 o (1) They contended that they have maintained the water in the Angat Dam at
JULY 3, 1992 a safe level and that the opening of the spillways was done gradually and after
all precautionary measures had been taken.
TOPIC: Article 150, NCC o (2) Furthermore, it had always exercised the diligence of a good father in the
PETITIONERS/PLAINTIFFS: National Power Corporation and Benjamin Chavez selection of its officials and employees in their supervision.
RESPONDENTS/DEFENDANTS: The Court of Appeals, Ricardo Cruz, Domingo Cruz, Fernando Cruz, o (3) Claimed that the written warnings were earlier sent to the towns
Leopoldo Cruz, Marira Cruz, Maura Marcial, Juan Palad, Nicanor Palad, Zosimo Palad, Nicasio San concerned.
Pedro, Felimon Santos, Isaias Santos, and Jose Santos. o (4) At the time of the typhoon hit Bulacan, with its torrential rain, a great
PONENTE: Nocon, J. volume of flood water flowed into the dam’s reservoir necessitating the
release of the water therein in order to prevent the dam from collapsing and
SUMMARY: In 1978, three floodgates of Angat dam were opened due to the maximum level of water causing the loss of lives and tremendous damage to livestock and properties.
caused by a typhoon. Because of this, towns near the Angat dam and river, got flooded which o (5) There was no direct causal relationship between the alleged damages
resulted to losses and damages of the properties. Now, the private respondents, asked for payment suffered by the respondents and the acts and omissions attributed to the
of damages against the petitioner because of the negligent and reckless act of the latter. However, former.
petitioner contended that they sent notice to the town and such destruction was caused by the o (6) That it was the respondents who assumed the risk of residing near the
typhoon, which they must be exempted because of force majeure. RTC and CA ruled in favor of the Angat River, and even assuming that respondents suffered damages, the cause
respondents. SC affirmed the decisions of the lower court, stating that the petitioners are liable for was due to a fortuitous event and such damages are of the nature and
its negligent and reckless act to the private respondents. They cannot contend that such damages character of damnum absque injuria, hence, respondents have no cause of
were resulted from force majeure, when in fact, typhoons, although an act of God, can be prevented action against them.
and anticipated.  RTC DECISION: Ruled in favor of the respondents, which ordered the petitioners to pay the
former its awarded damages, etc.
LAW APPLICABLE:  CA DECISION: affirmed.
Art. 515. The owner of a piece of land on which there are defensive works to check waters, or on
which, due to a change of their course, it may be necessary to reconstruct such works, shall be ISSUES:
obliged, at his election, either to make the necessary repairs or construction himself, or to permit MAIN ISSUE
them to be done, without damage to him, by the owners of the lands which suffer or are clearly (1) WON petitioners can escape civil liability by invoking force majeure as the proximate cause of
exposed to suffer injury. (420) the loss and damage.
SUB ISSUES
DOCTRINE: So generally it cannot be said that damage, injury or loss is due to an act of God where (2) WON Nakpil & Sons v CA is applicable in the instant case which petitioners are liable even
it was caused merely by excessive or heavy rainfall, storms and to weather conditions which are not though the coming of a typhoon was force majeure.
unusual in character, those which could have been reasonably anticipated or where the injury (3) WON that any damage suffered by the respondents was damnum absque injuria.
complained of is due rather to the negligence or mismanagement of man than to the disturbance of (4) WON that the giving of the written notice of warning by petitioners absolved them from
the elements or where such damage, injury or loss might have been mitigated or prevented by liability.
diligence exercised after the occurrence.
HELD AND RATIO:
PROPERTY INVOLVED: Loss and destruction of properties in the town of Norzagaray due to the (1) NO. THE PETITIONER CANNOT ESCAPE LIABILITY BY INVOKING FORCE MAJEURE AS THE
release and opening of three floodgates of the Angat Dam during a typhoon. PROXIMATE CAUSE OF THE LOSS AND DAMAGE IN THIS CASE.
 Act of God or Force Majeure, by definition, are extraordinary events not foreseeable or
FACTS: avoidable, events that could not be foreseen, or which, though foreseen, are inevitable.
 BACKGROUND: October 27, 1978 – at the height of typhoon “Kading”, a massive flood o It is therefore not enough that the event should not have been foreseen or
covered the towns near Angat Dam, particularly the town of Norzaragay, causing several anticipated, as is commonly believed, but it must be one impossible to foresee or to
deaths and the loss and destruction of houses, farms, and other properties of the people avoid.
residing near the Angat River. o GR: no person shall be responsible for those events which could not be foreseen or
o Private respondents recalled that on the said day, they were awakened by the which though foreseen, were inevitable.
sound of rampaging water all around them. o XPN: However, the principle embodied in the act of God doctrine strictly requires
o The water came swiftly and strongly that before they could do anything to save that the act must be occasioned solely by the violence of nature. Human
their belongings, their houses had submerged, some even swept away by the intervention is to be excluded from creating or entering into the cause of the
strong current. mischief. When the effect is found to be in part the result of the participation of
o A number of people were able to save their lives only by climbing trees. man, whether due to his active intervention or neglect or failure to act, the whole
occurrence is then humanized and removed from the rules applicable to the acts of
 PR’S COMPLAINT: Private respondents blamed the sudden rush of water to the reckless
God.
and imprudent opening of all the three floodgates of the Angat Dam, without prior
warning to the people living near or within the vicinity of the dam.

12 OF 32
 So generally it cannot be said that damage, injury or loss is due to an act of God where it was
caused merely by excessive or heavy rainfall, storms and to weather conditions which are not (4) NO. PETITIONERS STILL LIABLE AND IT WAS FIND OUT THAT THE NOTICE WAS NOT EVEN
unusual in character, those which could have been reasonably anticipated or where the injury DELIVERED.
complained of is due rather to the negligence or mismanagement of man than to the  PETITIONERS CONTENTIONS: Petitioners insist that their giving of prior written warning should
disturbance of the elements or where such damage, injury or loss might have been mitigated absolve them from liability. Notice of warning was served by them on "a responsible employee
or prevented by diligence exercised after the occurrence. in the office of the mayor of the municipality, or in the absence of such responsible employee,
 In the case at bar, although the typhoon was an act of God, petitioners cannot escape liability on a member of the municipal police force."
because their negligence was the proximate cause of the loss and damage. o That being the case, they alleged that the presumption that official duty has been
o it has been shown that the defendants failed to take the necessary safeguards to performed must be credited in their favor.
prevent the danger that the Angat Dam posed in a situation of such nature as that  The presumption was, however, refuted by the evidence and testimonies of respondents who
of typhoon "Kading". all denied having been given any warning that the spillways would be opened to such extent
o The representative of the "PAG-ASA" who testified in these proceedings, Justo and at a short period of time.
Iglesias, Jr., stated that based on their records the rainfall on October 26 and 27,  Clearly, the notices were not delivered, or even addressed to responsible officials of the
1978 is classified only as moderate, and could not have caused flash floods. municipalities concerned who could have disseminated the warning properly. They were
o What more, when the evidence shows that as early as October 25, 1978 the delivered to ordinary employees and policemen.
newspapers had announced the expected occurrence of a powerful typhoon code- o As it happened, the said notices do not appear to have reached the people
named "Kading". concerned, which are the residents beside the Angat River.
o On October 26, 1978, Bulletin Today had as its headline the coming of the typhoon. o The plaintiffs in this case definitely did not receive any such warning. Indeed, the
o Despite these announcements, the water level in the dam was maintained at its methods by which the defendants allegedly sent the notice or warning was so
maximum from October 21, until midnight of October 26, 1978. ineffectual that they cannot claim, as they do in their second assignment of error,
o At 2100 hrs. of October 26, 1978, NPC started to open the three floodgates that the sending of said notice has absolved them from liability.
simultaneously from 1 meter to 8 meters at 0100 hrs. of October 27, 1978, until all
floodgates were opened to the maximum of 14 to 14.5 meters by 0600 hrs. of the DISPOSITION: WHEREFORE, finding no reversible error in the Decision appealed from, the same is hereby
same day. affirmed in toto, with cost against petitioner.
 It has been held in several cases that when the negligence of a person concurs with an act of
God producing a loss, such person is not exempt from liability by showing that the immediate
cause of the damage was the act of God.
o To be exempt he must be free from any previous negligence or misconduct by which
the loss or damage may have been occasioned.

(2) NO. THE CASE OF NAKPIL IS NOT APPLICABLE IN THIS CASE.


 Petitioner, contended and cited the case of Nakpil & Sons which talks about the concurrent
liability of an obligor in case of a force majeure is concerned.
 However, SC said that such jurisprudence is not applicable in this case.
o NAPOCOR v. CA: the SC ruled that the obligor cannot escape liability, if upon the
happening of a fortuitous event or an act of God, a corresponding fraud, negligence,
delay or violation or contravention in any manner of the tenor of the obligation as
provided in Art. 1170, which results in loss or damage.
o In the above case, petitioners failed to consider that even if there was no contractual
relation between themselves and private respondents, they are still liable under the
law on quasi-delict.

(3) NO. THE SC DIDN’T GIVE CREDENCE THAT THE DAMAGE CAUSE BY THE OPENING OF THE DAM WAS
IN NATURE OF DAMNUM ABSQUE INJURIA.
 SC cannot give credence to petitioners' third assignment of error that the damage caused by
the opening of the dam was in the nature of damnum absque injuria, which presupposes that
although there was physical damage, there was no legal injury in view of the fortuitous events.
o There is no question that petitioners have the right, duty and obligation to operate,
maintain and preserve the facilities of Angat Dam, but their negligence cannot be
countenanced, however noble their intention may be.
o The end does not justify the means, particularly because they could have done
otherwise than simultaneously opening the spillways to such extent. Needless to
say, petitioners are not entitled to counterclaim.

13 OF 32
78. COMPAÑIA GENERAL DE TABACOS DE FILIPINAS v ALHMABRA
G.R. No. L-10251 Even admitting that the word “Isabela” may have been appropriable by plaintiff as a
February 10, 1916 trade name at the time it began to use it, the evidence showing that it had been exclusively
Topic: Trade Marks and Trade Names appropriated by the plaintiff would have to be very strong to establish the fact of appropriation
Petitioners: COMPAÑIA GENERAL DE TABACOS DE FILIPINAS and the right to exclusive use. The law as it stands and has stood since the Royal Decree of
Respondents: ALHAMBRA CIGAR & CIGARETTE MANUFACTURING CO 1888 prohibits the use of a geographical name as a trade name.
Judge, Regional Trial Court, Branch 218, Quezon City and PHILIPPINE BANK OF
COMMUNICATION, The judgment appealed from is reversed.
Ponente: Carpio

FACTS:

 It is admitted that plaintiff’s trade name as evidenced by the certificate issued under
the Spanish regime, consists solely of the words “La Flor de la Isabela”. Plaintiff does
not claim that the word “Isabela” has been registered by it as a trade name or that it
has a title from any source conferring on it the exclusive right to use that word.
 Defendant began the manufacture of cigarettes, offering them to the public in
packages on the front side of each of which appeared the words “Alhambra
Isabelas”.
 Action is brought to enjoin the defendant from using the word “Isabelas”.
 The exclusive right to use this name, plaintiff claim arises from two causes: First, the
contraction of the phrase “La Flor de la Isabela” into the word “Isabela” by popular
expression and use; and second, the use for more than twenty years of the word
“Isabela”.

Judgment was for plaintiff and defendant appealed.

ISSUE:
Whether defendant’s use of the word “Alhambra Isabela” is an infringement to the use of
trade name.

HELD:
The statute prohibits the registration of a trade name when the trade name represents
the geographical place of production or origin of the products or goods to which the trade
name refers, or when it is merely the name, quality or description of the merchandise with
respect to which the trade name is to be used. In such cases, therefore, no trade name can
exist.

The two claims of the plaintiff are identical; for, there could have been no contraction
brought about by popular expression except after long lapse of time. The contraction of the
phrase in to the word would create no rights, there being no registration, unless it resulted
from long use.

The opinion of the plaintiff must fail. It shows that in not a single instance in the history
of the plaintiff corporation, so far as is disclosed by the record, has a package of its cigarettes
gone into the market, either at wholesale or retail with the word “Isabela” alone on the
package as a separate or distinct word or name.
14 OF 32
79. Philippine Education v Sotto and Alindada
GR no L-30774 Sotto and Alindada demurred to the evidence and alleged as a special defense
January 29, 1929
 that PECI is not the owner of the article because it had not registered it in its name in the
DOCTRINES: proper registry under Act 3134 and the regulation concerning the registration of intellectual
property made by the Chief of the Philippine Library and Museum, also,
Under the secondparagraph of section 5, Act No. 3134, known as theCopyright Law, where one  they had published the same without any intention to prejudice anybody in his property right
periodical purchases, pays forand publishes an article with notice "that all rightsthereto were reserved" but in good faith.
another periodical has no legalright to again publish the article, without giving "thesource of 
reproduction" or citing the original from which itwas reproduced. Trial court ruled in favor of PECI, hence, the present appeal.

This exception isconfined and limited to "news items, editorial paragraphs,and articles in periodicals," Issue:
and does not apply to anyother provisions of the Copyright Law WON the article may be reproduced considering that PECI has not registered the same in its name and
merely served a notice that it reserved the rights to publication
Facts:
Held: No, not without giving the source of the reproduction.
Parties:
The present case calls for the interpretation of Section 5 of Act 3134 i.e. An Act to Protect Intellectual
Philippine Education Company, Inc. (PECI) is a domestic corporation; it is the proprietor and publisher of Property which is known as the Copyright Law of the Philippine Islands.
the monthly magazine Philippine Education Magazine published in the City of Manila.
section 5 says:
Austin Craig – Writer who wrote the article “True Story of Mrs. Rizal”
"Lines, passages, or paragraphs in a book or other copyrighted works may be quoted or cited
Sotto – Proprietor and publisher of weekly newspaper “The Independent and Alindada” or reproduced for comment, dissertation, or criticism.
"News items, editorial paragraphs, and articles in periodicals may also be reproduced unless
Craig wrote an original article entitled “True Story of Mrs. Rizal” they contain a notice that their publication is reserved or a notice of copyright, but the source
of the reproduction or original reproduced shall be cited. In case of musical works parts of little
In December 1927, PECI contracted with Austin Craig for the preparation and publication of extent may also be reproduced."
an original article to be written by him concerning Mrs. Jose Rizal, to be published in the
Philippine Education Magazine. Analyzing the language used, such news items, editorial paragraphs and articles in periodicals may be
reproduced unless they contain a notice that their publication is reserved or unless they contain a notice
Craig then prepared and wrote an original article entitled “The True Story of Mrs. Rizal” and of copyright. In either event, the law specifically provides that the source of the reproduction or original
delivered it to PECI which paid him for it. The same was printed and published in the reproduced shall be cited.
December 1927 issue then put in market for sale. In every issue, it gave a notice that all
rights thereto were reserved. To give the Section another construction would be to nullify, eliminate and take from the paragraph the
works “they contain a notice that their publication is reserved. The words are plain and clear, it should
Sotto copied and published the article: “True Story of Mrs. Rizal” without knowledge and consent of be applied.
PECI and without citing PECI as source
In the case at bar, PECI did not give notice of its copyright for the simple reason that it did not have one
Later on, Sotto, the proprietor and publisher of a weekly newspaper known as The but it did notify Sotto and Alindada that in the publication of the article “we reserved all right,” which
Independent and Alindada, the editor, allegedly appropriated, copied and published the was legally equivalent to a notice of copyright. Furthermore, the latter would have had the legal right to
article unlawfully and without the knowledge and consent of PECI in The Independent of publish the article by giving the source of the reproduction to which it failed to.
December 24th and 31st, 1927, without citing the PECI as source.
If it had been the purpose of and intent of the Legislature to limit the reproduction of news items,
Upon discovery, PECI requested thru a letter that on the former’s next issue, they cite it as the editorial paragraphs and articles in periodicals to those which have a notice of copyright only, it never
source of the article in some prominent place. However, notwithstanding the letter, the would have said if “they contain a notice that their publication is reserved.”
publication of the article was continued.
Extra: Intent of the Legislature: The purpose and intent of the Legislature was to protect an enterprising
Alindada: Article was not registered under the Copyright Law newspaper or magazine that invests its money and pays for the right to publish an original article.
Alindada advised PECI in substance that it had not registered such right under the Copyright
Law. Note: This exception of not requiring a notice of copyright is confined and limited to "news items,
editorial paragraphs, and articles in periodicals," and does not apply to any other provisions of the
Consequently, PECI sued Sotto and Alindada for damages. Copyright Law.

15 OF 32
80. General Garments Corporation vs. Director of Patents  The General Garments Corporation, (GGC) organized and existing under the laws of the
No. L-24295 Philippines, is the owner of the trademark "Puritan," and duly registered in the Philippine
September 30, 1971 Patent Office, for assorted men's wear, such as sweaters, shirts, jackets, undershirts and briefs.

TOPIC: Trademarks and Tradenames  On the other hand, Puritan Sportswear Corporation, (PSC) is organized and existing in and under
PETITIONER: GENERAL GARMENTS CORPORATION the laws of the state of Pennsylvania, U.S.A.
RESPONDENT: THE DIRECTOR OF PATENTS and PURITAN SPORTSWEAR CORPORATION,
PONENTE: MAKALINTAL, J.  On May 1964, PSC filed a petition with the Philippine Patent Office for the cancellation of the
trademark "Puritan" registered in the name of GGC alleging PSC’s ownership and prior use in
SUMMARY: the Philippines of the said trademark on the same kinds of goods, which use it had not
abandoned; and alleging further that the registration thereof by General Garments Corporation
The General Garments Corporation, organized and existing under the laws of the Philippines, is the had been obtained fraudulently and in violation of Section 17(c) of Republic Act No. 166.
owner of the trademark "Puritan.” Puritan Sportswear Corporation, organized and existing in and
under the laws of the state of Pennsylvania, U.S.A., filed a petition with the Philippine Patent Office for  GGC moved to dismiss the petition on the ground that PSC had no legal capacity to file a suit
the cancellation of the trademark "Puritan" registered in the name of General Garments Corporation, against GGC because PSC is a foreign corporation and not licensed to do business and not doing
alleging ownership and prior use in the Philippines of the said trademark on the same kinds of goods, business in the Philippines. However, Director of Patents (DP) denied the motion to dismiss of
which use it had not abandoned; and alleging further that the registration thereof by General Garments GGC.
Corporation had been obtained fraudulently and in violation of Section 17(c) of Republic Act No. 166,
as amended, in relation to Section 4(d) thereof. On March 30, 1964 General Garments Corporation  Aggrieved, GGC appealed to the SC. It argued that PSC is not considered as a person under
moved to dismiss the petition. Philippine Laws who may apply for cancellation of a trademark.

Held: ISSUE
Respondent is not suing in our courts "for the recovery of any debt, claim or demand," for which a Whether Puritan Sportswear Corporation has legal capacity to maintain a suit in the Philippine Patent
license to transact business in the Philippines is required by Section 69 of the Corporation Law, subject Office for cancellation of a trademark registered.
only to the exception already noted. 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 HELD & RATIO
period of years, in the doing of which it does not seek to enforce any legal or contract rights arising  Yes.
from, or growing out of any business which it has transacted in the Philippine Islands.  The fact that PSC may not transact business in the Philippines unless it has obtained a license
for that purpose, nor maintain a suit in Philippine courts for the recovery of any debt, claim or
demand without such license (Secs. 68 and 69, Corporation Law) does not make PSC any less a
DOCTRINE: juridical person. Indeed an exception to the license requirement has been recognized in this
1. The object of the statute (Secs. 68 and 69, Corporation Law) was not to prevent the foreign jurisdiction, namely, where a foreign corporation sues on an isolated transaction.
corporation from performing single acts, but to prevent it from requiring a domicile for the
purpose of business without taking the steps necessary to render it amenable to suit in the  In Marshall-Wells Co. v. Elser & Co, SC said that the object of the statute (Secs. 68 and 69,
local courts . . . the implication of the law (being that it was never the purpose of the Corporation Law) was not to prevent the foreign corporation from performing single acts, but
legislature to exclude a foreign corporation which happens to obtain an isolated order for to prevent it from acquiring a domicile for the purpose of business without taking the steps
business from the Philippines, from securing redress in the Philippine Courts. The principle necessary to render it amenable to suit in the local courts ... the implication of the law (being)
has since then been applied in a number of other cases. that it was never the purpose of the legislature to exclude a foreign corporation which happens
2. A foreign corporation which has never done business in the Philippine Islands and which is to obtain an isolated order for business from the Philippines, from securing redress in the
unlicensed and unregistered to do business here, but is widely and favorably known in the Philippine Courts.
Islands through the use therein of its products bearing its corporate and trade name has a  PSC is not suing for infringement or unfair competition but for cancellation under Section 17.
legal right to maintain an action in the Islands. The first kind of action, it maybe stated, is cognizable by the Courts of First Instance. The second
3. Parenthetically, it may be stated that the ruling in the Mentholatum case was subsequently partakes of an administrative proceeding before the Patent Office. And while a suit for
derogated when Congress, purposely to “counteract the effects” of said case, enacted infringement requires that the mark or tradename alleged to have been infringed has been
Republic Act No. 638, inserting Section 21-A in the Trademark Law, which allows a foreign "registered or assigned" to the suing foreign corporation, a suit for cancellation of the
corporation or juristic person to bring an action in the Philippine courts for infringement of registration of a mark or tradename has no such requirement.
a mark or tradename, for unfair competition, or false designation of origin and false  The right to the use of the corporate or trade name is a property right, a right in rem, which it
description, “whether or not it has been licensed to do business in the Philippines under may assert and protect in any of the courts of the world — even in jurisdictions where it does
the Corporation Law, at the time it brings complaint.” not transact business — just the same as it may protect its tangible property, real or personal
against trespass or conversion.
FACTS:
 Petition dismissed.

16 OF 32
81 LA CHEMISE LACOSTE V HON. OSCAR C. FERNANDEZ  The purpose of the law protecting a trademark cannot be overemphasized. They are to point out
GR. L-63796-97 distinctly the origin or ownership of the article to which it is affixed, to secure to him, who has been
May 2, 1984 instrumental in bringing into market a superior article of merchandise, the fruit of his industry and
By: Nico Nunez skill, and to prevent fraud and imposition. The legislature has enacted laws to regulate the use of
Topic: Art. 520/522 trademarks and provide for the protection thereof. Modern trade and commerce demands that
Petitioners: LA CHEMISE LACOSTE, S. A., petitioner depredations on legitimate trademarks of non-nationals including those who have not shown prior
Respondents: HON. OSCAR C. FERNANDEZ, Presiding Judge of Branch XLIX, Regional Trial Court, National registration thereof should not be countenanced. The law against such depredations is not only for
Capital Judicial Region, Manila and GOBINDRAM HEMANDAS, respondents. the protection of the owner of the trademark but also, and more importantly, for the protection of
Ponente: GUTIERREZ, JR., J. purchasers from confusion, mistake, or deception as to the goods they are buying.
 The law on trademarks and tradenames is based on the principle of business integrity and common
DOCTRINE: One may be declared an unfair competitor even if his competing trademark is registered.
justice' This law, both in letter and spirit, is laid upon the premise that, while it encourages fair trade
in every way and aims to foster, and not to hamper, competition, no one, especially a trader, is
FACTS:
justified in damaging or jeopardizing another's business by fraud, deceipt, trickery or unfair methods
of any sort. This necessarily precludes the trading by one dealer upon the good name and reputation
 The facts are not disputed. The petitioner is a foreign corporation, organized and existing under the
built up by another.
laws of France and not doing business in the Philippines, it is undeniable from the records that it is
 Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before
the actual owner of the abovementioned trademarks used on clothing and other goods specifically
1964, Hemandas cannot be allowed to continue the trademark “Lacoste” for the reason that he was
sporting apparels sold in many parts of the world and which have been marketed in the Philippines
the first registrant in the Supplemental Register of a trademark used in international commerce.
since 1964. The main basis of the private respondent's case is its claim of alleged prior registration.
Registration in the Supplemental Register cannot be given a posture as if the registration is in the
 The main basis of the private respondent's case is its claim of alleged prior registration.
Principal Register. It must be noted that one may be declared an unfair competitor even if his
In 1975, Hemandas & Co., a duly licensed domestic firm applied for and was issued Reg. No. SR-2225
competing trademark is registered. La Chemise Lacoste is world renowned mark, and by virtue of
(SR stands for Supplemental Register) for the trademark "CHEMISE LACOSTE & CROCODILE DEVICE"
the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in
by the Philippine Patent Office for use on T-shirts, sportswear and other garment products of the
compliance with the Paris Convention for the protection of industrial property, effectively cancels
company. Two years later, it applied for the registration of the same trademark under the Principal
the registration of contrary claimants to the enumerated marks, which include “Lacoste"
Register. The Patent Office eventually issued an order dated March 3, 1977 which states that:
 In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing
... Considering that the mark was already registered in the Supplemental Register in favor of herein
our duties and the rights of foreign states under the Paris Convention for the Protection of Industrial
applicant, the Office has no other recourse but to allow the application, however, Reg. No. SR-2225
Property to which the Philippines and France are parties. (note: there was also an issue about the
is now being contested in a Petition for Cancellation docketed as IPC No. 1046, still registrant is
petitioner’s capacity to sue under PH courts)
presumed to be the owner of the mark until after the registration is declared cancelled.
 Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed to the Director
of the Patents Office directing the latter to reject all pending applications for Philippine registration
 In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair competition
of signature and other world famous trademarks by applicants other than its original owners or
committed by Hemandas and requesting the agency’s assistance. A search warrant was issued by
users. The conflicting claims over internationally known trademarks involve such name brands as
the trial court. Various goods and articles were seized upon the execution of the warrants.
Lacoste, et. al. It is further directed that, in cases where warranted, Philippine registrants of such
Hemandas filed motion to quash the warrants, which the court granted. The search warrants were
trademarks should be asked to surrender their certificates of registration, if any, to avoid suits for
recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari.
damages and other legal action by the trademarks’ foreign or local owners or original users.
 The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. Sadhwani decision which we
ISSUE(s): W/N the petitioner’s trademark is protected trademark.
cite with approval sustained the power of the Minister of Trade to issue the implementing
memorandum and declared La Chemise Lacoste S.A. the owner of the disputed trademark, stating:
“In the case at bar, the Minister of Trade, as ‘the competent authority of the country of registration,’
HELD/RATIO: YES
has found that among other well-known trademarks ‘Lacoste’ is the subject of conflicting claims.
For this reason, applications for its registration must be rejected or refused, pursuant to the treaty
 The reliance of the private respondent on the last sentence of the Patent office action on application
obligation of the Philippines.”
Serial No. 30954 that "registrant is presumed to be the owner of the mark until after the registration
is declared cancelled" is, therefore, misplaced and grounded on shaky foundation. And even in cases
WHEREFORE, the petition in G.R. NOS. 63797-97 is hereby GRANTED. The order dated April 22, 1983 of
where presumption and precept may factually be reconciled, we have held that the presumption is
the respondent regional trial court is REVERSED and SET ASIDE. Our Temporary Restraining Order dated
rebuttable, not conclusive. One may be declared an unfair competitor even if his competing
April 29, 1983 (i.e. PERMANENT. The petition in G.R. NO. 65659 is DENIED due course for lack of merit. Our
trademark is registered.
Temporary Restraining Order dated December 5, 1983 is LIFTED and SET ASIDE, effective immediately.
 The petitioner is the owner of the trademarks "LACOSTE", "CHEMISE LACOSTE", the crocodile or
alligator device, and the composite mark of LACOSTE and the representation of the crocodile or
alligator. (Note: The facts are undisputed) Any pretensions of the private respondent that he is the
owner are absolutely without basis. Any further ventilation of the issue of ownership before the
Patent Office will be a superfluity and a dilatory tactic.

17 OF 32
82. FILIPINO SOCIETY V. TAN copies for sale, to sell any manuscripts or any record whatsoever thereof;
GR NO. L-36402 o music is provided in order to make the establishment more attractive and
MARCH 16, 1987 desirable
o the professional singers were paid as independent contractors
Topic: ART. 520/522 o expenses entailed are eventually charged either in the price of the food
Petitioners: FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC. and drinks (which customers pay for) or to the income produced by the
Respondents: BENJAMIN TAN bigger volume of business which the entertainment was programmed to
Ponente: PARAS, J. attract

2. NO. Tan cannot be said to have infringed upon the Copyright Law.
DOCTRINE An intellectual creation should be copyrighted 30 days after its publication, if made
in Manila, or within 60 days if made elsewhere, failure of which renders such creation public  According to paragraph 33 of Patent Office Administrative Order No. 3 (entitled Rules
of Practice in the Philippines Patent Office relating to the Registration of Copyright
property.
Claims), “an intellectual creation should be copyrighted 30 days after its publication,
if made in Manila, or within 60 days if made elsewhere, failure of which renders such
FACTS
creation public property."
 Filipino Society is non-profit association of authors, composers, and publishers.
o song "Dahil Sa Iyo," registered on April 20, 1956, became popular in radios,
o owner of certain musical compositions among which are the songs
juke boxes, etc. long before registration
entitled: "Dahil Sa Iyo," "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
o song "The Nearness Of You," registered on January 14, 1955, had become
Lamang" and "The Nearness Of You"
popular 25 years prior to 1968 (year of hearing)
 Tan is the operator of a restaurant known as "Alex Soda Foundation and Restaurant."
o songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang," both
o wherein professional singers, to entertain customers, were playing and
registered on July 10, 1966, appear to have been known and sang by the
singing the above-mentioned compositions without any license or
witnesses as early as 1965
permission from Filipino Society
 It is clear that the musical compositions had long become public property and are
 Filipino Society demanded from Tan payment of the necessary license fee.
therefore beyond the protection of the Copyright Law.
o demand was ignored
 Filipino Society filed a complaint with the CFI for infringement of copyright against
Tan.
 In his answer, Tan maintains that the mere singing and playing of songs do not
constitute an infringement.
o under Section 3 of the Copyright Law (Act 3134 of the Philippine
Legislature)
 CFI dismissed the complaint.
 Filipino Society appealed.
 CA certified the case to the SC for adjudication on the legal question involved.

ISSUE
1. WON the playing and signing of musical compositions inside the establishment of Tan
constitute a public performance for profit? – YES.
2. WON Tan can be held liable. – NO.

HELD/RATIO
1. YES. Tan conducts his place of business for profit and it is public; the music is performed
for profit.
 3(c) of the Copyright Law provides:
SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusive
right:
(c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in
any manner or by any method whatever for profit or otherwise; if not reproduced in
18 OF 32
83.) Wolverine Worldwide vs. CA modified by the court issuing it or by any other court. In the case at bar, the
GR NO. 78298 decision of the Court of Appeals affirming that of the Director of Patents, in the
January 30, 1989 cancellation cases filed in 1973, was never appealed to us. Consequently, when the
Petitioner: Wolverine Worldwide period to appeal from the Court of Appeals to this Court lapsed, with no appeal
Respondent: COURT OF APPEALS and Lolito P. Cruz having been perfected, the foregoing judgment denying cancellation of registration
By: Martin in the name of private respondent's predecessor-in-interest but ordering
FACTS cancellation of registration in the name of the petitioner's predecessor-in-interest,
 Petitioner, a foreign corporation organized and existing under the laws of the became the settled law in the case.
United States, brought a petition before the Philippine Patent Office, docketed as  Between the earlier petitions and the present one there is substantial identity of
Inter Partes Case No. 1807, for the cancellation of Certificate of Registration No. parties, subject matter, and cause of action.
24986-B of the trademark HUSH PUPPIES and DOG DEVICE issued to the private  The petitioner in all of these cases is Wolverine Worldwide, Inc. The respondent-
respondent, a Filipino citizen. registrant in this case is the assignee of Randelson Agro-Industrial Development,
 Petitioner alleged, inter alia, that it is the registrant of the internationally known Inc. (formerly known as Randelson Shoes, Inc.) which in turn, acquired its right from
trademark HUSH PUPPIES and the DEVICE of a Dog in the United States and in Ramon Angeles, the original respondents-registrant.
other countries which are members of the Paris Convention for the Protection of  As regards the subject matter, all of these cases refer to the cancellation of
Industrial Property; that the goods sold by the private respondent, on the one registration of the trademark HUSH PUPPIES and DEVICE of a Dog.
hand, and by the petitioner, on the other hand, belong to the same class such that  Finally, there is identity of cause of action, which is the alleged wrongful or
the private respondent's use of the same trademark in the Philippines (which is a erroneous registration of the trademark.
member of said Paris Convention) in connection with the goods he sells constitutes  It is argued, however, that res judicata does not apply in this particular instance
an act of unfair competition, as denied in the Paris Convention. because when the May 9, 1977 decision was handed down by the Director of
 Respondent moved to dismiss the petition on the ground of res judicata, averring Patents, Executive Order No. 913 dated October 7, 1983 and the resulting
that in 1973, or more than ten years before this petition (Inter Partes Case No. memorandum of Minister Roberto Ongpin dated October 25, 1983 had not yet
1807) was filed, the same petitioner filed two petitions for cancellation (Inter been issued. (The validity of this memorandum was later upheld by this Court in
Partes Cases Nos. 700 and 701) and was a party to an interference proceeding La Chemise Lacoste, S.A. vs. Fernandez and Sujanani vs. Ongpin). The petitioner
(Inter Partes Case No. 709), all of which involved the trademark HUSH PUPPIES and underscores the following specific directive contained in the abovementioned
DEVICE, before the Philippine Patent Office. memorandum of Minister Ongpin for the Director of Patents:
 In that case, the Director of Patents and the Ca ruled in favor of the respondent. o 5. All pending applications for Philippine registration of signature and
 In the present case, The Director of Patents granted the motion to dismiss and The other world famous trademarks filed by applicants other than their
CA Affirmed the decision of the director of patents original owners or users shall be rejected forthwith. Where such
applicants have already obtained registration contrary to the
ISSUE abovementioned PARIS CONVENTION and/or Philippine Law, they shall
Whether or not the present petition for cancellation (Inter Partes Case No. 1807) is barred be directed to surrender their Certificates of Registration to the
by res judicata in the light of the final and executory decision in Inter Partes Cases Nos. 700 Philippine Patent Office for immediate cancellation proceedings
701, and 709.  It is thus contended that despite the previous grant of registration to the private
respondent, the present petition for cancellation could still be brought, and the
HELD/RATIO same should be granted by the Director of Patents, pursuant to the abovequoted
Yes clause. Stated otherwise, the petitioner suggests that the petition is not barred
 The Court has repeatedly held that for a judgment to be a bar to a subsequent by res judicata because while the former petitions were filed under Republic Act
case, the following requisites must concur: (1) it must be a final judgment; (2) the 166, the present one was brought pursuant to the cited memorandum which
court which rendered it had jurisdiction over the subject matter and the parties; expressly sanctions the cancellation of registration of a trademark granted even
(3) it must be a judgment on the merits; and (4) there must be Identity between prior to the same memorandum.
the two cases, as to parties, — subject matter, and cause of action.  In the first place, the subject memorandum never amended, nor was it meant to
 That Sec. 17 of Republic Act 166, also known as the Trademark Law, allows the amend, the Trademark Law. It did not indicate a new policy with respect to the
cancellation of a registered trademark is not a valid premise for the petitioner's registration in the Philippines of world-famous trademarks. The protection against
proposition that a decision granting registration of a trademark cannot be imbued unfair competition, and other benefits, accorded to owners of internationally
with the character of absolute finality as is required in res judicata. A judgment or known marks, as mandated by the Paris Convention, is already guaranteed under
order is final, as to give it the authority of res judicata, if it can no longer be

19 OF 32
the Trademark Law. Thus, the subject memorandum, as well as Executive Order No. HELD:
913, merely reiterated the policy already existing at the time of its issuance.  The following distinctions between infringement of trademark and unfair
Petition for Review is denied. competition.
84. Del Monte v. CA and Sunshine (1) Infringement of trademark is the unauthorized use of a trademark,
GR NO. L-78325 whereas unfair competition is the passing off of one's goods as those of
January 25, 1990 another.
Topic: Intellectual Property Law (2) In infringement of trademark fraudulent intent is unnecessary whereas in
Petitioners: Del Monte Corporation, and Philippine Packing Corporation unfair competition fraudulent intent is essential.
Respondents: Court of Appeals and Sunshine Sauce Manufacturing Industries (3) In infringement of trademark the prior registration of the trademark is a
Ponente: Cruz prerequisite to the action, whereas in unfair competition registration is not
necessary.
FACTS:  The Supreme Court recognizes that there really are distinctions between the designs
 Del Monte Corporation is an American corporation which is not engaged in business of the logos or trademarks of Del Monte and Sunshine Sauce.
o The lower courts were pre-occupied with the comparison of details on the
in the Philippines.
o Though not engaging business here, it has given authority to Philippine logos of the petitioner and the respondent that they have not seen that
there is indeed infringement or unfair competition.
Packing Corporation (Philpack) the right to manufacture, distribute and sell
in the Philippines various agricultural products, including catsup, under the  It has been correctly held that side by side comparison is not the final test of
Del Monte trademark and logo. similarity.
o The question is not whether the two articles are distinguishable by their
 In 1965, Del Monte also authorized Philpack to register with the Patent Office the
label when set side by side but whether the general confusion made by the
Del Monte catsup bottle configuration.
article upon the eye of the casual purchaser who is unsuspicious and off
o Philpack was issued a certificate of trademark registration under the
Supplemental Register. his guard, is such as to likely result in his confounding it with the original.
o In making purchases, the consumer must depend upon his recollection of
 Sushine Sauce Manufacturing Industries was issued a Certificate of Registration
the appearance of the product which he intends to purchase. The buyer
Domestic Trade to engage in the manufacture, packing, distribution and sale of
having in mind the mark/label of the respondent must rely upon his
various kinds of sauce, identified by the logo Sunshine Fruit Catsup.
memory of the petitioner's mark.
 Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using
 Sunshine Sauce’s logo is a colorable imitation of Del Monte’s trademark.
Del Monte bottles in selling its products and that Sunshine Sauce’s logo is similar to
 The word “catsup” in both bottles is printed in white and the style of the print/letter
that of Del Monte.
is the same.
o Sunshine apparently bought the same from the junk shops for recycling.
 Although the logo of Sunshine is not a tomato, the figure nevertheless approximates
 Philpack and Del Monte filed a complaint against Sunshine for infringement of
trademark and unfair competition, with a prayer for damages and the issuance of a that of a tomato.
writ of preliminary injunction.  The person who infringes a trade mark does not normally copy out but only makes
o Sunshine argued that it had long ceased to use the Del Monte bottle and colorable changes, employing enough points of similarity to confuse the public with
that its logo was substantially different from the Del Monte logo and would enough points of differences to confuse the courts.
not confuse the buying public to the detriment of the petitioners.  What is undeniable is the fact that when a manufacturer prepares to package his
 The RTC of Makati as well as the Court of Appeals ruled that there was no product, he has before him a boundless choice of words, phrases, colors and symbols
infringement because the trademarks used between the two are different in designs sufficient to distinguish his product from the others.
and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair  When as in this case, Sunshine chose, without a reasonable explanation, to use the
competition. same colors and letters as those used by Del Monte though the field of its selection
o Both courts invoked the ruling in Shell Company vs Insular Petroleum: was so broad, the inevitable conclusion is that it was done deliberately to deceive.
“selling oil in containers of another with markings erased, without intent  The Supreme Court also ruled that Del Monte does not have the exclusive right to
to deceive, was not unfair competition.” use Del Monte bottles in the Philippines because Philpack’s patent was only
o Sunshine became the owner of said bottles upon its purchase from the registered under the Supplemental Register and not with the Principal Register.
junk yards. o Under the law, registration under the Supplemental Register is not a basis
for a case of infringement because unlike registration under the Principal
ISSUE: W/N there is unfair competition and infringement in the case at bar - YES Register, it does not grant exclusive use of the patent.

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 However, the bottles of Del Monte do say in embossed letters: “Del Monte are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who
Corporation, Not to be Refilled”. otherwise clothes the goods with such appearance as shall deceive the public and defraud
o And yet Sunshine Sauce refilled these bottles with its catsup products. another of his legitimate trade, or any subsequent vendor of such goods or any agent of any
o This clearly shows the Sunshine Sauce’s bad faith and its intention to vendor engaged in selling such goods with a like purpose;
capitalize on the Del Monte’s reputation and goodwill and pass off its own
product as that of Del Monte. (b) Any person who by any artifice, or device, or who employs ally other means
 As Sunshine's label is an infringement of the Del Monte's trademark, law and equity calculated to induce the false belief that such person is offering the services of another who
call for the cancellation of the private respondent's registration and withdrawal of has identified such services in the mind of the public; or
all its products bearing the questioned label from the market.
o With regard to the use of Del Monte's bottle, the same constitutes unfair (c) Any person who shall make any false statement in the course of trade or who shall
competition; hence, the respondent should be permanently enjoined from commit any other act contrary to good faith of a nature calculated to discredit the goods,
the use of such bottles. business or services of another.

NOTES:
Trademark Law (RA No. 166)
Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of
the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered
mark or trade-name in connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of such goods or services
or identity of such business; or reproduce, counterfeit copy or colorably imitate any such mark
or trade name and apply such reproduction, counterfeit copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or
in connection with such goods, business or services, shall be liable to a civil action by the
registrant for any or all of the remedies herein provided.

Sec. 29. Unfair competition, rights and remedies. — A person who has identified in the mind
of the public the goods he manufactures or deals in, his business or services from those of
others, whether or not a mark or tradename is employed, has a property right in the goodwill
of the said goods, business or services so identified, which will be protected in the same
manner as other property rights. Such a person shall have the remedies provided in section
twenty- three, Chapter V hereof.

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

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

(a) Any person, who in selling his goods shall give them the general appearance of goods
of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other feature
of their appearance, which would likely influence purchasers to believe that the goods offered

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85. Asia Brewery, Inc., v. CA descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by Sec. 2 of R.A. No. 638) hence,
GR NO. 103543 non-registerable and not appropriable by any beer manufacturer.
July 5, 1993 - The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its
registered trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive words as "evaporated
Topic: milk," "tomato ketchup," "cheddar cheese," "corn flakes" and "cooking oil" may be appropriated by any
Petitioners: Asia Brewery, Inc., single manufacturer of these food products, for no other reason than that he was the first to use them
Respondents: The Hon. Court of appeals and San Miguel Corporation in his registered trademark
Ponente: J. Grino-Aquino - The circumstance that the manufacturer of BEER PALE PILSEN, Asia Brewery Incorporated, has printed
its name all over the bottle of its beer product: on the label, on the back of the bottle, as well as on the
FACTS bottle cap, disproves SMC's charge that ABI dishonestly and fraudulently intends to palm off its BEER
- On September 15, 1988, San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) PALE PILSEN as SMC's product. In view of the visible differences between the two products, the Court
for infringement of trademark and unfair competition on account of the latter’s BEER PALE PILSEN or believes it is quite unlikely that a customer of average intelligence would mistake a bottle of BEER PALE
BEER NA BEER product which has been competing with SMC’s SAN MIGUEL PALE PILSEN for a share of PILSEN for SAN MIGUEL PALE PILSEN.
the local beer market. RTC rendered a decision dismissing SMC’s complaint (no infringement) CA: - The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-colored steinie bottles
reversed the TC of 320 ml. capacity and is also advertised in print, broadcast, and television media, does not necessarily
constitute unfair competition. Unfair competition is the employment of deception or any other means
ISSUE contrary to good faith by which a person shall pass off the goods manufactured by him or in which he
W/N ABI infringes SMC’s trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt Design, and deals, or his business, or services, for those of another who has already established goodwill for his
thereby commits unfair competition against the latter. NO similar goods, business or services, or any acts calculated to produce the same result. (Sec. 29, Republic
Act No. 166, as amended.)
HELD/RATIO - The main thrust of SMC's complaint is not infringement of its trademark, but unfair competition arising
- Infringement of trademark is a form of unfair competition. Sec 22 of Republic Act No. 166, otherwise from the allegedly “confusing similarity” in the general appearance or trade dress of ABI’s BEER PALE
known as the Trademark Law. This definition implies that only registered trade marks, trade names and PILSEN beside SMC’s SAN MIGUEL PALE PILSEN. SMC claims that the “trade dress” of BEER PALE PILSEN
service marks are protected against infringement or unauthorized use by another or others. The use of is “confusingly similar” to its SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. steinie type,
someone else"s registered trademark, trade name or service mark is unauthorized, hence, actionable, amber-colored bottles with white rectangular labels. However, when as in this case, the names of the
if it is done “without the consent of the registrant.” competing products are clearly different and their respective sources are prominently printed on the
- The registered trademark of SMC for its pale pilsen beer is: “San Miguel Pale Pilsen With Rectangular label and on other parts of the bottle, mere similarity in the shape and size of the container and label,
Hops and Malt Design. (Philippine Bureau of Patents, Trademarks and Technology Transfer Trademark does not constitute unfair competition. The steinie bottle is a standard bottle for beer and is universally
Certificate of Registration No. 36103, dated 23 Oct. 1986,” used. SMC did not invent it nor patent it.
- Infringement is determined by the "test of dominancy” rather than by differences or variations in the - Moreover, SMC’s brand or trademark: “SAN MIGUEL PALE PILSEN” is not infringed by ABI’s mark: “BEER
details of one trademark and of another. Similarity in size, form and color, while relevant, is not NA BEER” or "BEER PALE PILSEN." ABI makes its own bottle with a bulging neck to differentiate it from
conclusive. If the competing trademark contains the main or essential or dominant features of another, SMC’s bottle, and prints ABI’s name in three (3) places on said bottle (front, back and bottle cap) to
and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not prove that it has no intention to pass off its “BEER” as “SAN MIGUEL.”
necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The question - There is no confusing similarity between the competing beers for the name of one is “SAN MIGUEL”
at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely while the competitor is plain “BEER” and the points of dissimilarity between the two outnumber their
to cause confusion or mistakes in the mind of the public or deceive purchasers. points of similarity. Petitioner ABI has neither infringed SMC’s trademark nor committed unfair
- There is hardly any dispute that the dominant feature of SMC's trademark is the name of the product: competition with the latter’s SAN MIGUEL PALE PILSEN product. While its BEER PALE PILSEN admittedly
SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at the beginning and end competes with the latter in the open market, that competition is neither unfair nor fraudulent. Hence,
of the letters "S" and "M" on an amber background across the upper portion of the rectangular design. we must deny SMC’s prayer to suppress it.
On the other hand, the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with the
word "Beer" written in large amber letters, larger than any of the letters found in the SMC label.
- The trial court perceptively observed that the word "BEER" does not appear in SMC's trademark, just as
the words "SAN MIGUEL" do not appear in ABI's trademark. Hence, there is absolutely no similarity in
the dominant features of both trademarks. Neither in sound, spelling or appearance can BEER PALE
PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE
PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was
presented by SMC proving otherwise.
- The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of
SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color
("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. (Webster's
Third New International Dictionary of the English Language, Unabridged. Edited by Philip Babcock Gove.
Springfield, Mass.: G & C Merriam Co., [c] 1976, page 1716.) "Pilsen" is a "primarily geographically

22 OF 32
86. Joaquin vs Drilon The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise
GR NO. 108946 known as the Decree on Intellectual Property, enumerates the classes of work entitled to
January 28, 1999 copyright protection. The provision is substantially the same as Sec. 172 of the Intellectual
Topic: Article 520/522, Intellectual Property Code Property Code of the Philippines (RA 8293).
Petitioners: FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC.
Respondents: FRANKLIN DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and Section 2 of PD No. 49 provides:
CASEY FRANCISCO
Ponente: J. Mendoza The rights granted by this Decree shall, from the moment of creation, subsist with respect to
any of the following classes of works:
Doctrine: The format or mechanics of a television show is not included in the list of protected
(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers;
works in 2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be
extended to cover them.
(B) Periodicals, including pamphlets and newspapers;
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
right granted by the statute, and not simply a pre-existing right regulated by the statute. Being
a statutory grant, the rights are only such as the statute confers, and may be obtained and
(D) Letters;
enjoyed only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute.
(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in
dumb shows, the acting form of which is fixed in writing or otherwise;
Since copyright in published works is purely a statutory creation, a copyright may be obtained
only for a work falling within the statutory enumeration or description.
(F) Musical compositions, with or without words;
FACTS:
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright
works of art; models or designs for works of art;
No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to
1977.
(H) Reproductions of a work of art;
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the show’s format and style of presentation.
(I) Original ornamental designs or models for articles of manufacture, whether or not
Upon complaint of petitioners, information for violation of PD No. 49 was filed against
patentable, and other works of applied art;
private respondent Zosa together with certain officers of RPN 9 for airing It’s a Date. It was
assigned to Branch 104 of RTC Quezon City.
(J) Maps, plans, sketches, and charts;
Zosa sought review of the resolution of the Assistant City Prosecutor before the
(K) Drawings or plastic works of a scientific or technical character;
Department of Justice.
(L) Photographic works and works produced by a process analogous to photography; lantern
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the
slides;
Assistant City Prosecutor’s findings and directed him to move for the dismissal of the case
against private respondents.
(M) Cinematographic works and works produced by a process analogous to cinematography
or any process for making audio-visual recordings;
Petitioner Joaquin filed motion for reconsideration but such was denied.
(N) Computer programs;
ISSUE : Whether the format or mechanics or petitioner’s television show is entitled to
copyright protection. (NO)
(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;

HELD/RATIO

23 OF 32
(P) Dramatizations, translations, adaptations, abridgements, arrangements and other
alterations of literary, musical or artistic works or of works of the Philippine government as
herein defined, which shall be protected as provided in Section 8 of this Decree.

(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this
Decree which by reason of the selection and arrangement of their contents constitute
intellectual creations, the same to be protected as such in accordance with Section 8 of this
Decree.

(R) Other literary, scholarly, scientific and artistic works.

The format or mechanics of a television show is not included in the list of protected works in
Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot be extended to
cover them.

Copyright, in the strict sense of the term, is purely a statutory right. It is a new independent
right granted by the statute and not simply a pre-existing right regulated by the statute. Being
a statutory grant, the rights are only such as the statute confers, and may be obtained and
enjoyed only with respect to the subjects and by the person and on terms and conditions
specified in the statute.

The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings of
each episode of Rhoda and Me, as falling within the class of works mentioned in PD 49.

The copyright does not extend to the general concept or format of its dating game show.

Mere description by words of the general format of the two dating game shows is insufficient;
the presentation of the master videotape in evidence was indispensable to the determination
of the existence of a probable cause.

A television show includes more than mere words can describe because it involves a whole
spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be
found by merely describing the general copyright / format of both dating game shows.

24 OF 32
87 SHANGRI-LA v. DEVELOPERS  CA: affirmed TC.
G.R. No. 159938  KG filed MR. Denied by CA.
March 31, 2006  KG: petition for review on certiorari

PETITIONERS: SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD., SHANGRI-LA ISSUES:


PROPERTIES, INC., MAKATI SHANGRI-LA HOTEL & RESORT, INC., AND KUOK PHILIPPINES 1. whether a certificate of registration are sufficient to establish prior actual use by the
PROPERTIES, INC. registrant
RESPONDENTS: DEVELOPERS GROUP OF COMPANIES, INC. 2. whether registration of DGCI is void
PONENTE: Garcia, J. 3. whether DCGI’s use of mark and logo was in bad faith
4. whether KG’s prior use entitles KG to use the mark and logo in the Philippines
FACTS: 5. whether KG used name and logo as tradename
 DGCI filed on October 18, 1982 with the Bureau of Patents, Trademarks and Technology 6. whether IPC(RA8293) or RA 166 is applicable.
Transfer (BPTTT) an application for registration covering the subject mark and logo.
o BPTTT issued in favor of DGCI the certificate of registration HELD & RATIO:
o Since then, DGCI started using the mark and logo in its restaurant business. 1. NO. Registration not sufficient to establish prior use
 Since 1969, the Kuok Group(KG) has used the name in all hotels and hotel-related o R.A. 166 was in effect up to Dec 31, 1997, hence, the law in force at the time of
establishments around the world which the Kuok Family owned. respondent's application for registration
 EDSA and Makati Shangri-La were incorporated in the Ph beginning 1987 o certificate of registration is a prima facie proof that the registrant is the owner
 Shangri-La Hotel Singapore commissioned a Singaporean artist, William Lee, to design of the registered mark or trade name.
the logo o Evidence of prior and continuous use by another can overcome the
o During the launching of Logo in 1975, Lee explained: "S" represents presumptive ownership of the registrant between actual use without
Aseanarchitectural structures… legendary Shangri-la theme with mountains on registration, and registration without actual use, the former prevails over the
top reflected on waters below and connecting centre line as horizon latter.
 KG registered, mark logo in the patent offices in different countries around the world.
 KG filed with BPTTT a petition (Inter Partes Case) praying for the cancellation of the 2. YES. DCGI registration void.
registration of DGCI  Syhunliong, testified in TC: artist submitted his designs in Dec 1982.
o Ground: illegally and fraudulently obtained  This was 2 ½ months after the filing of respondent's trademark application on Oct
o also filed Inter Partes Case praying for registration in their own names. 18, 1982 with the BPTTT.
 DGCI filed a complaint for Infringement and Damages w/ RTC QC alleged that o only in Dec 1982: DCGI’s restaurant opened for business.
o DGCI has, for the last 8 years, been the prior exclusive user in the Philippines  DCGI cannot now claim to SC that the certificate of registration itself is proof that
o SLIHM in promoting their hotel then under construction in the country, had the 2-month prior use requirement was complied with
been using a mark and logo confusingly similar  at the time (Oct 18, 1982) DCGI filed its application for registration, respondent was
o DGCI sought to prohibit KG from using in PH not using these in Ph commercially
 TC: Issued a Writ of Preliminary Injunction enjoining KG from using mark and logo
 SC: nullified the writ and directed TC to proceed with the main case and decide it 3. YES. DCGI in bad faith
 While trial in progress, KG filed with the court a motion to suspend proceedings on  CA found Syhunliong was a guest at petitioners' hotel before he registered and
account of the pendency before the BPTTT of Inter Partes Case surmised that he must have copied the idea there
 Court ruled despite KG’s institution of Inter Partes, DGCI can file a subsequent action for  Yet CA tries to make it appear it could have been coincidental
infringement with regular o "Shangri-la" and S-logo, are not uncommon. "Shangri-la" refers to a
o but nonetheless ordered BPTTT to suspend proceedings&to await outcome of remote beautiful imaginary place or imaginary mountain land as a utopia
main case. in Lost Horizon by James Hilton.
 DCGI’s lone witness, Ramon Syhunliong, Pres. Of DCGI Board of Directors, testified: o The Lost Horizon was a popular novel written in 1976.
o The "S-logo" was 1 of 2 designs given to him in Dec1982, scribbled on a piece  CA was contradictory. SC agrees w/ petitioners:
of paper by a jeepney signboard artist o When copycat adopts word portion as his own, there may still be some
o On Oct 15, 1982, or before artist created the designs, DGCI was incorporated doubt that the adoption is intentional.
 TC: DCGI registration valid. o But if he copies not only word but also exact font and he copies also the
 KG appealed to CA. logo portion, bad faith becomes certain

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 One who has imitated the trademark of another cannot bring an action for
infringement against the true owner of the mark

4. NO. KG not qualified under Sec 2 as a registrant


o TC and CA already established and admitted by DCGI’s president himself that KG had
prior widespread use abroad
o RA166 requires the actual use in the Philippines.
o Sec 2: in order to register a trademark,
 one must be the owner
 must have actually used the mark in commerce in Ph for 2 months
prior to application for registration.
o Sec 2-A:
 actual use in commerce is also the test of ownership.
 mark must not have been appropriated by another.
 does not require actual within the Philippines.
o under RA166, one may be an owner due to actual use but not have the right to register
ownership here due to failure to use inPh for 2 months.
o While KG may not have qualified under Sec 2 as a registrant, neither did DGCI, since it
failed to fulfil the 2-month actual use requirement.
o DGCI was not even the owner of the mark. For it to be owner, mark musn’t
have been already appropriated by another
o At time of DGCI's registration, the mark was already being used by KG, albeit
abroad
5. NO. KG used name and logo as tradename and service mark
o DCGI argues: Since KG adopted mark and logo as a mere corporate name then they are
not trademarks.
o It is common, indeed likely, that the name of a corporation or business is also a trade
name, trademark or service mark.
o Sec 38 of RA166:
o "trade name" includes xxx names or titles lawfully adopted and used by
natural or juridical persons

6. RA 166 Applicable.
o KG wants IPC to apply: persons who may question a mark include persons whose
internationally well-known mark, whether or not registered, is confusingly similar to that
is sought to be registered
o while PH was already a signatory to Paris Convention, IPC only took effect on Jan 1,
1988. Absent a retroactivity clause, RA166 applies.
o Besides, RA166 did not require party seeking relief to be owner but “any person who
believes that he is or will be damaged by the registration of a mark or trade name."

PETITION GRANTED

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88. Dermaline v Myra Pharmaceuticals  Whether or not petitioner’s use of “Dermaline Dermaline Inc” can result in
G.R. 190065 confusion, mistake or deception on the part of the purchasing public
August 16, 2010
TOPIC: ART 520-522. Trademarks and trade names RULING
PETITIONERS: Dermaline INC Yes.
RESPONDENTS: Myra Pharmaceuticals INC
Ponente: Nachura, J.  A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods
FACTS: to identify and distinguish them from those manufactured, sold, or dealt by others.
As a registered trademark owner, Myra has the right under Section 147 of R.A. No.
 Petitioner Dermaline filed before the Intellectual Property Office (IPO) an application 8293 to prevent third parties from using a trademark, or similar signs or containers
for registration of the trademark “DERMALINE DERMALINE, INC. for goods or services, without its consent, identical or similar to its registered
trademark, where such use would result in a likelihood of confusion.
 ”Respondent Myra filed a Verified Opposition alleging that the trademark sought to
be registered by Dermaline so resembles its trademark “DERMALIN” and will likely  In determining likelihood of confusion, case law has developed two (2) tests, the
cause confusion, mistake and deception to the purchasing public. Dominancy Test and the Holistic or Totality Test.

 It further alleged that Dermaline’s use and registration of its applied trademark will  The Dominancy Test focuses on the similarity of the prevalent features of the
diminish the distinctiveness and dilute the goodwill of Myra’s “DERMALIN,” which competing trademarks that might cause confusion or deception. It is applied when
Myra has been extensively commercially since October 31, 1977, and said mark is the trademark sought to be registered contains the main, essential and dominant
still valid and subsisting. features of the earlier registered trademark, and confusion or deception is likely to
result. Duplication or imitation is not even required; neither is it necessary that the
 Myra contends that despite Dermaline’s attempt to differentiate its applied mark, label of the applied mark for registration should suggest an effort to imitate. The
the dominant feature is the term “DERMALINE,” which is practically identical with its important issue is whether the use of the marks involved would likely cause
own “DERMALIN,” more particularly that the first eight (8) letters of the marks are confusion or mistake in the mind of or deceive the ordinary purchaser, or one who
identical, and that notwithstanding the additional letter “E” by Dermaline, the is accustomed to buy, and therefore to some extent familiar with, the goods in
pronunciation for both marks are identical. question. Given greater consideration are the aural and visual impressions created
by the marks in the public mind, giving little weight to factors like prices, quality,
 Further, both marks have three (3) syllables each, with each syllable identical in sales outlets, and market segments. The test of dominancy is now explicitly
sound and appearance, even if the last syllable of “DERMALINE” consisted of four (4) incorporated into law in Section 155.1 of R.A. No. 8293 which provides—
letters while “DERMALIN” consisted only of three (3).
155.1. Use in commerce any reproduction, counterfeit, copy, or
 Myra asserted that the mark “DERMALINE DERMALINE, INC.” is aurally similar to its colorable imitation of a registered mark or the same container or a
own mark such that the registration and use of Dermaline’s applied mark will enable dominant feature thereof in connection with the sale, offering for sale,
it to obtain benefit from Myra’s reputation, goodwill and advertising and will lead distribution, advertising of any goods or services including other
the public into believing that Dermaline is, in any way, connected to Myra. preparatory steps necessary to carry out the sale of any goods or services
on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive; (emphasis supplied)
 Myra added that even if the subject application was under Classification 44 for
various skin treatments, it could still be connected to the “DERMALIN” mark under
Classification 5 for pharmaceutical products, since ultimately these goods are very  On the other hand, the Holistic Test entails a consideration of the entirety of the
closely related. marks as applied to the products, including labels and packaging, in determining
confusing similarity. The scrutinizing eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels so that a
 The IPO Bureau of Legal Affairs ruled in favor of respondent; said decision was
conclusion may be drawn as to whether one is confusingly similar to the other.
sustained by the IPO Director General and the Court of Appeals.

ISSUE  Relative to the question on confusion of marks and trade names, jurisprudence has
noted two (2) types of confusion, viz:

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through Dermaline from merely carrying pharmaceutical topical applications for the skin to
(1) confusion of goods (product confusion), where the ordinarily prudent purchaser health and beauty services.
would be induced to purchase one product in the belief that he was purchasing
the other; and  Verily, when one applies for the registration of a trademark or label which is almost
the same or that very closely resembles one already used and registered by another,
(2) confusion of business (source or origin confusion), where, although the goods of the application should be rejected and dismissed outright, even without any
the parties are different, the product, the mark of which registration is applied for opposition on the part of the owner and user of a previously registered label or
by one party, is such as might reasonably be assumed to originate with the registrant trademark. This is intended not only to avoid confusion on the part of the public, but
of an earlier product, and the public would then be deceived either into that belief also to protect an already used and registered trademark and an established
or into the belief that there is some connection between the two parties, though goodwill.
inexistent.

 Both confusion of goods and service and confusion of business or of origin were
apparent in both trademarks. While there are no set rules that can be deduced as
what constitutes a dominant feature with respect to trademarks applied for
registration; usually, what are taken into account are signs, color, design, peculiar
shape or name, or some special, easily remembered earmarks of the brand that
readily attracts and catches the attention of the ordinary consumer.

 While it is true that the two marks are presented differently – Dermaline’s mark is
written with the first “DERMALINE” in script going diagonally upwards from left to
right, with an upper case “D” followed by the rest of the letters in lower case, and
the portion “DERMALINE, INC.” is written in upper case letters, below and smaller
than the long-hand portion; while Myra’s mark “DERMALIN” is written in an upright
font, with a capital “D” and followed by lower case letters – the likelihood of
confusion is still apparent. This is because they are almost spelled in the same way,
except for Dermaline’s mark which ends with the letter “E,” and they are pronounced
practically in the same manner in three (3) syllables, with the ending letter “E” in
Dermaline’s mark pronounced silently. Thus, when an ordinary purchaser, for
example, hears an advertisement of Dermaline’s applied trademark over the radio,
chances are he will associate it with Myra’s registered mark.

 Dermaline’s stance that its product belongs to a separate and different classification
from Myra’s products with the registered trademark does not eradicate the
possibility of mistake on the part of the purchasing public to associate the former
with the latter, especially considering that both classifications pertain to treatments
for the skin.

 Indeed, the registered trademark owner may use its mark on the same or similar
products, in different segments of the market, and at different price levels depending
on variations of the products for specific segments of the market. The Court is
cognizant that the registered trademark owner enjoys protection in product and
market areas that are the normal potential expansion of his business.
Thus, the public may mistakenly think that Dermaline is connected to or associated
with Myra, such that, considering the current proliferation of health and beauty products in
the market, the purchasers would likely be misled that Myra has already expanded its business

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89 CHING v SALINAS
GR# 161295
June 29, 2005 ISSUES:
TOPIC: NCC: Article 520/522, Intellectual Property Code: Article 172
PETITIONERS/PLAINTIFFS: Jessie G. Ching Whether or not the Utility Model “Leaf Spring Eye Bushing for Automobile” may be the proper
RESPONDENTS/DEFENDANTS: William M. Salinas, Sr. , William M. Salinas Jr., Josephine object of a copyright law (NO)
L. Salinas, Alonto Solaiman Salle, John Eric I. Salinas, Noel M. Yabut (Board of Directors
and Officers of Wilaware Product Corporation) HELD AND RATIO:
PONENTE: Callejo, Sr.J
 NO. The bushing and cushion are not works of art. They are, as the petitioner himself
FACTS: admitted, utility models which may be the subject of a patent. It is worthy to state
 Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the that the works protected under the Law on Copyright are: literary or artistic works
maker and manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle
for Automobile" made up of plastic. On September 4, 2001, Ching and Joseph Yu Bearing Cushion fall on neither classification
were issued by the National Library Certificates of Copyright Registration and  PROOF OF OWNERSHIP OF COPYRIGHT
Deposit of the said work described therein as "Leaf Spring Eye Bushing for o Ownership of copyrighted material is shown by proof of originality and
Automobile." copyrightability. By originality is meant that the material was not copied,
 On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) and evidences at least minimal creativity; that it was independently
for police/investigative assistance for the apprehension and prosecution of illegal created by the author and that it possesses at least same minimal degree
manufacturers, producers and/or distributors of the works. After due investigation, of creativity.
the NBI filed applications for search warrants in the RTC of Manila against William o Section 218.2 of R.A. No. 8293 provides:
Salinas, Sr. and the officers and members of the Board of Directors of Wilaware (a) Copyright shall be presumed to subsist in the work or other subject
Product Corporation. It was alleged that the respondents therein reproduced and matter to which the action relates if the defendant does not put in issue
distributed the said models penalized under Sections 177.1 and 177.3 of Republic the question whether copyright subsists in the work or other subject
Act (R.A.) No. 8293. The applications sought the seizure of such products, including matter; and
the evidence of sale which include delivery receipts, invoices and official receipts. (b) Where the subsistence of the copyright is established, the plaintiff shall
RTC granted issued the search warrant for the seizure of the articles. The be presumed to be the owner of the copyright if he claims to be the owner
respondents filed a motion to quash the search warrants on the ground that: of the copyright and the defendant does not put in issue the question of
a) the subject matter of the registrations are not artistic or literary; his ownership.
b) the subject matter of the registrations are spare parts of automobiles  A certificate of registration creates no rebuttable presumption of copyright validity
meaning – there (sic) are original parts that they are designed to replace. where other evidence in the record casts doubt on the question. In such a case,
Hence, they are not original. validity will not be presumed.
 Salinas averred that the works covered by the certificates issued by the National  LITERARY WORKS DEFINED:
Library are not artistic in nature; they are considered automotive spare parts and o SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works,
pertain to technology. They aver that the models are not original, and as such are hereinafter referred to as "works," are original intellectual creations in the
the proper subject of a patent, not copyright. literary and artistic domain protected from the moment of their creation
 On January 3, 2002, the trial court granted the motion to quash. The court ruled that xxx.
the work covered by the certificates issued to the petitioner pertained to solutions o Related to the provision is Section 171.10, which provides that a "work of
to technical problems, not literary and artistic as provided in Article 172 of the applied art" is an artistic creation with utilitarian functions or
Intellectual Property Code. incorporated in a useful article, whether made by hand or produced on an
 Ching filed a petition for certiorari in the CA. He insisted that his works are covered industrial scale.
by Sections 172.1 and 172.2 of the Intellectual Property Code. The petitioner averred o But, as gleaned from the specifications appended to the application for a
that the copyright certificates are prima facie evidence of its validity. copyright certificate filed by the petitioner, the said Leaf Spring Eye
 Ching noted that respondent William Salinas, Jr. was not being honest, as he was Bushing for Automobile is merely a utility model. Plainly, these are not
able to secure a similar copyright registration of a similar product from the National literary or artistic works. They are not intellectual creations in the literary
Library on January 14, 2002. CA dismissed the petition on its finding that the RTC did and artistic domain, or works of applied art.
not commit any grave abuse of its discretion.  USEFUL ARTICLE MAY BE COPYRIGHTABLE

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o It bears stressing that the focus of copyright is the usefulness of the artistic glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings,
design, and not its marketability. The central inquiry is whether the article drawings and sculpture
is a work of art. Useful articles are defined as one having an intrinsic
utilitarian function that is not merely to portray the appearance of the
article or to convey information.
o Indeed, while works of applied art, original intellectual, literary and artistic
works are copyrightable, useful articles and works of industrial design are
not.
o A useful article may be copyrightable only if and only to the extent that
such design incorporates pictorial, graphic, or sculptural features that can
be identified separately from, and are capable of existing independently of
the utilitarian aspects of the article.
 It bears stressing that there is no copyright protection for works of applied art or
industrial design which have aesthetic or artistic features that cannot be identified
separately from the utilitarian aspects of the article. Functional components of
useful articles, no matter how artistically designed, have generally been denied
copyright protection unless they are separable from the useful article.

DISPOSITION:
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit.
The assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are
AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are
ANNULLED AND SET ASIDE. Costs against the petitioner.
SO ORDERED.
NOTES:
UTILITY MODEL DEFINED: A utility model is a technical solution to a problem in any field of
human activity which is new and industrially applicable. It may be, or may relate to, a product,
or process, or an improvement of any of the aforesaid. Essentially, a utility model refers to an
invention in the mechanical field.
UTILITY MODEL VS. INVENTION: A utility model varies from an invention, for which a patent
for invention is, likewise, available, on at least three aspects: first, the requisite of "inventive
step" in a patent for invention is not required; second, the maximum term of protection is only
seven years compared to a patent which is twenty years, both reckoned from the date of the
application; and third, the provisions on utility model dispense with its substantive
examination and prefer for a less complicated system.
COPYRIGHT- is purely a statutory right. It is a new or independent right granted by the statute,
and not simply a pre-existing right regulated by it.
TRADEMARK -is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods.
TRADE NAME- the name or designation identifying or distinguishing an enterprise.
COPYRIGHT- is confined to literary and artistic works which are original intellectual creations
in the literary and artistic domain protected from the moment of their creation.
PATENTABLE INVENTION- refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.
WORKS OF ART- (US High Court) includes works of artistic craftsmanship, in so far as their form
but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels,

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90.Skerchers USA v Inter Pacific Trading Corp ( Resolution)  While it is undisputed that petitioners stylized "S" is within an oval design, to this Courts
GR NO.164321 mind, the dominant feature of the trademark is the stylized "S," as it is precisely the
March 28,2011 stylized "S" which catches the eye of the purchaser.
MJB  Thus, even if respondent did not use an oval design, the mere fact that it used the same
Topic: ART 520-522 - TRADEMARK case ito? stylized "S", the same being the dominant feature of petitioners trademark, already
Petitioners: Sketchers USA constitutes infringement under the Dominancy Test.
Respondents: Inter Pacific Trading Corp o In Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., Inc., this Court,
Ponente: Peralta in a case for unfair competition, had opined that even if not all the details are
identical, as long as the general appearance of the two products are such that
FACTS: For resolution are the twin Motions for Reconsideration 1 Aled by petitioner and any ordinary purchaser would be deceived, the imitator should be liable.
petitioner-intervenor from the Decision rendered in favor of respondents, dated November 30,  While there may be dissimilarities between the appearances of the shoes, to this Courts
2006 mind such dissimilarities do not outweigh the stark and blatant similarities in their general
 Skechers (petitioner) filed with RTC Manila application for issuance of search warrants features.
against an outlet or warehouse operated by respondents for infringement of trademark.  As can be readily observed by simply comparing petitioners Energy model and
Petitioner has registered the trademark “Skechers” and the trademark “S” (within an oval respondents Strong rubber shoes, respondent also used the color scheme of blue, white
design) with the IPO. and gray utilized by petitioner.
 Respondents moved to quash the search warrants, arguing that there was no confusing  Even the design and "wavelike" pattern of the midsole and outer sole of respondents
similarity between petitioner’s Skechers rubber shoes and its “Strong”rubber shoes. shoes are very similar to petitioners shoes, if not exact patterns thereof. Other similarities
 RTC – agreed with respondents ( No Trademark infringement) on font, lettering, writings, are also present.
 CA – affirmed RTC’s ruling  The dissimilarities between the shoes are too trifling and frivolous that it is indubitable
that respondents’ products will cause confusion and mistake in the eyes of the public.
ISSUE:  Respondents shoes may not be an exact replica of petitioner’s shoes, but the features
 Whether or not there was trademark infringement. – YES and overall design are so similar and alike that confusion is highly likely.

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

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#91 Fredco v Harvard Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge,
GR NO. 185917 Massachusetts, obviously suggests a false connection with Harvard University. On this ground
October 1, 2011 alone, Fredco’s registration of the mark “Harvard” should have been disallowed. Indisputably,
Petitioners: Fredco Manufacturing Corporation Fredco does not have any affiliation or connection with Harvard University, or even with
Respondents: Harvard College Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not established
Ponente: Justice Learned Hand in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.

FACTS Under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected “without
Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the the obligation of filing or registration.” “Harvard” is the trade name of the world famous
Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 Harvard University, and it is also a trademark of Harvard University. Under Article 8 of the Paris
issued to President and Fellows of Harvard College (Harvard University) for the mark “Harvard Convention, as well as Section 37 of R.A. No. 166, Harvard University is entitled to protection
Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28. in the Philippines of its trade name “Harvard” even without registration of such trade name in
the Philippines. This means that no educational entity in the Philippines can use the trade name
Fredco claimed that Harvard University had no right to register the mark in class 25, since its “Harvard” without the consent of Harvard University. Likewise, no entity in the Philippines can
Philippine registration was based on a foreign registration. Thus, Harvard University could not claim, expressly or impliedly through the use of the name and mark “Harvard,” that its products
have been considered as a prior adopter and user of the mark in the Philippines. or services are authorized, approved, or licensed by, or sourced from, Harvard University
without the latter’s consent.
Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest
New York Garments as early as 1982, and a certificate of registration was issued in 1988 for
goods under class 25. Although the registration was cancelled for the non-filing of an affidavit
of use, the fact remained that the registration preceded Harvard University’s use of the subject
mark in the Philippines.

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

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

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

ISSUE W/N the respondent’s trade name was infringed

HELD/RATIO

Yes. Yes it was.

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