Ipl Case Doctrines and Principles PDF

INTELLECTUAL PROPERTY LAW
CASE DOCTRINES AND PRINCIPLES

UNIVERSITY OF CEBU-BANILAD COLLEGE OF LAW
A.Y. 2018 – 2019
TRADEMARK CASES
Mirpuri v. CA, Dir. of Patents, & Barbizon Corp. [G.R. No. 114508, Nov. 19, 1999]
1. FUNCTION –
a. to point out distinctly the ORIGIN or ownership of the goods to which it is affixed;
b. to secure to him, who has been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and skill;
c. to assure the public that they are procuring the GENUINE article;
d. to PREVENT fraud and imposition; and
e. to PROTECT the manufacturer against substitution and sale of an inferior and
different article as his product.
2. RE WELL-KNOWN MARKS – Article 6bis, Paris Convention
(1) The countries of the Union undertake, either administratively if their legislation so
permits, or at the request of an interested party, to refuse or to cancel the registration
and to prohibit the use, of a trademark which constitutes a reproduction, an imitation,
or a translation, liable to create confusion, of a mark considered by the competent
authority of the country of registration or use to be well-known in that country as being
already the mark of a person entitled to the benefits of this Convention and used for
identical or similar goods. These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or an imitation liable
to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for
seeking the cancellation of such a mark. The countries of the Union may provide for a
period within which the prohibition of use must be sought.
(3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use
of marks registered or used in bad faith."
3. Villafuerte Memorandum – Minister of Trade issued this to the Director of Patents, pursuant
to Article 6bis, enumerating well-known marks and ordering
a. the Director to reject all pending applications for Philippine registration of signature
and other world-famous trademarks by applicants other than its original owners or
users;
b. and further directing that, in cases where warranted, Philippine registrants of such
trademarks should be asked to surrender their certificates of registration, if any, to
avoid suits for damages and other legal action by the trademarks' foreign or local
owners or original users.
1 | INTELLECTUAL PROPERTY LAW (ORTIZ)

4. Ongpin Memorandum – Minister Ongpin issued another Memorandum to the Director
providing criteria to determine whether mark is well-known –
a. Declaration by the Minister of Trade and Industry
b. Used in commerce internationally
c. Duly registered in the industrial property office of another country (date of registration
considered)
d. Trademark has long been established and obtained goodwill and international
consumer recognition as belonging to one owner or source
e. Trademark belongs to a party claiming ownership and has the right to registration
under the provisions of the Paris Convention
5. Res judicata does NOT apply to rights, claims or demands, although growing out of the same
subject matter, which constitute separate or distinct causes of action and were not put in
issue in the former action.
a. IPC No. 2049 raised the issue of ownership of the trademark, the first registration and
use of the trademark in the United States and other countries, and the international
recognition and reputation of the trademark established by extensive use and
advertisement of private respondent's products for over forty years here and abroad.
b. These are different from the issues of confusing similarity and damage in IPC No. 686.
The issue of prior use may have been raised in IPC No. 686 but this claim was limited
to prior use in the Philippines only. Prior use in IPC No. 2049 stems from private
respondent's claim as originator of the word and symbol "Barbizon," as the first and
registered user of the mark attached to its products which have been sold and
advertised worldwide for a considerable number of years prior to petitioner's first
application for registration of her trademark in the Philippines.
c. Indeed, these are substantial allegations that raised new issues and necessarily gave
private respondent a new cause of action.
6. Causes of action which are distinct and independent from each other, although arising out of
the same contract, transaction, or state of facts, may be sued on separately, recovery on one
being no bar to subsequent actions on others. The mere fact that the same relief is sought in
the subsequent action will not render the judgment in the prior action operative as res
judicata, such as where the two actions are based on different statutes.
a. The opposition in IPC No. 686 was based on specific provisions of the Trademark
Law, i.e., Section 4 (d) on confusing similarity of trademarks and Section 8 on the
requisite damage to file an opposition to a petition for registration. The opposition in
IPC No. 2049 invoked the Paris Convention, particularly Article 6bis thereof, E.O. No.
913 and the two Memoranda of the Minister of Trade and Industry. This opposition
also invoked Article 189 of the Revised Penal Code which is a statute totally different
from the Trademark Law.
CASE DOCTRINES AND PRINCIPLES (2018) |2

Unno Commercial v. General Milling [G.R. No. L-28554, Feb. 28, 1983]
1. The right to register trademark is based on ownership.

a. When the applicant is not the owner of the trademark being applied for, he has no right
to apply for the registration of the same.
b. The term owner does not include the importer of the goods bearing the trademark,
trade name, service mark, or other mark of ownership, unless such importer is actually
the owner thereof in the country from which the goods are imported. A local importer,
however, may make application for the registration of a foreign trademark, trade name
or service mark if he is duly authorized by the actual owner of the name or other mark
of ownership.
2. Ownership of a trademark is not acquired by the mere fact of registration alone.
a. Registration merely creates a prima facie presumption of the validity of the registration,
of the registrant's ownership of the trademark and of the exclusive right to the use
thereof.
b. Registration does not perfect a trademark right. Evidence may be presented to
overcome the presumption. Prior use by one will controvert a claim of legal
appropriation, by subsequent users.
Lacoste v. Hon. Fernandez & Hemandas [G.R. No. L-63796-97, May 2, 1984]
1. Foreign nationals should be given the same treatment in each of the member countries as
that country makes available to its own citizens. In addition, the Paris Convention sought to
create uniformity in certain respects by obligating each member nation 'to assure to nationals
of countries of the Union an effective protection against unfair competition.'
a. The Convention is not premised upon the idea that the trade-mark and related laws of
each member nation shall be given extra-territorial application, but on exactly the
converse principle that each nation's law shall have only territorial application. Thus a
foreign national of a member nation using his trademark in commerce in the United
States is accorded extensive protection here against infringement and other types of
unfair competition by virtue of United States membership in the Convention. But that
protection has its source in, and is subject to the limitations of, American law, not the
law of the foreign national's own country.
2. The case which suspends the criminal prosecution must be a civil case which is determinative
of the innocence or, subject to the availability of other defenses, the guilt of the accused. The
pending case before the Patent Office (opposition) is an administrative proceeding and not a
civil case. The decision of the Patent Office cannot be finally determinative of the private
respondent's innocence of the charges against him.
3. Minister of Trade – the competent authority under the Paris Convention, that the trademark
and device sought to be registered by the appellant are well-known marks which the
Philippines, as party to the Convention, is bound to protect in favor of its owners.
4. A certificate of registration in the Supplemental Register is not prima facie evidence of the
validity of registration, of the registrant's exclusive right to use the same in connection with
the goods, business, or services specified in the certificate.
a. A supplemental register is provided for the registration of marks which are not
registrable on the principal register because of some defects (conversely, defects

which make a mark unregistrable on the principal register, yet do not bar them from
the supplemental register.)
b. Such a certificate of registration cannot be filed, with effect, with the Bureau of
Customs in order to exclude from the Philippines, foreign goods bearing infringement
marks or trade names.
5. Registration in the Supplemental Register, therefore, serves as notice that the registrant is
using or has appropriated the trademark. By the very fact that the trademark cannot as yet
be entered in the Principal Register, all who deal with it should be on guard that there are
certain defects, some obstacles which the user must Still overcome before he can claim legal
ownership of the mark or ask the courts to vindicate his claims of an exclusive right to the
use of the same. It would be deceptive for a party with nothing more than a registration in the
Supplemental Register to posture before courts of justice as if the registration is in the
Principal Register.
Ang v. Teodoro [G.R. No. L-48226, December 14, 1942]
1. From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of
the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be
appropriated as a trade-mark or trade-name. In this connection we do not fail to note that
when the petitioner herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as the Director of
Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive
term and hence could be legally used and validly registered as a trade-mark.
2. Doctrine of secondary meaning not applicable here – this doctrine is to the effect that a word
or phrase originally incapable of exclusive appropriation with reference to an article of the
market, because geographically or otherwise descriptive, might nevertheless have been used
so long and so exclusively by one producer with reference to his article that, in that trade and
to that branch of the purchasing public, the word or phrase has come to mean that the article
was his product.
3. Confusion of origin – Although two noncompeting articles may be classified under two
different classes by the Patent Office because they are deemed not to possess the same
descriptive properties, they would, nevertheless, be held by the courts to belong to the same
class if the simultaneous use on them of identical or closely similar trade-marks would be
likely to cause confusion as to the origin, or personal source, of the second user's goods.
They would be considered as not falling under the same class only if they are so dissimilar
or so foreign to each other as to make it unlikely that the purchaser would think the first user
made the second user's goods
a. The courts have come to realize that there can be unfair competition or unfair trading
even if the goods are non-competing, and that such unfair trading can cause injury or
damage to the first user of a given trade-mark, first, by prevention of the natural
expansion of his business and, second, by having his business reputation confused
with and put at the mercy of the second user. Then noncompetitive products are sold
under the same mark, the gradual whittling away or dispersion of the identity and hold
upon the public mind of the mark created by its first user, inevitably results. The original
owner is entitled to the preservation of the valuable link between him and the public
that has been created by his ingenuity and the merit of his wares or services.
4. The mere relation or association of the articles is not controlling. As may readily be noted
from what we have heretofore said, the proprietary connotation that a trade-mark or trade-
name has acquired is of more paramount consideration. The Court of Appeals found in this
case that by uninterrupted and exclusive use since 1910 of respondent's registered trade-
mark on slippers and shoes manufactured by him, it has come to indicate the origin and
ownership of said goods. It is certainly not farfetched to surmise that the selection by
petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free
ride on the reputation and selling power it has acquired at the hands of the respondent.
McDonalds Corp. v. L.C. Big Mak Burger, Inc. [G.R. 143993, Aug. 18, 2004]
1. The "Big Mac" mark, which should be treated in its entirety and not dissected word for word,
is neither generic nor descriptive. "Big Mac" falls under the class of fanciful or arbitrary
marks as it bears no logical relation to the actual characteristics of the product it represents.
As such, it is highly distinctive and thus valid. Significantly, the trademark "Little Debbie" for
snack cakes was found arbitrary or fanciful.
a. Generic marks are commonly used as the name or description of a kind of goods, such
as "Lite" for beer or "Chocolate Fudge" for chocolate soda drink.
b. Descriptive marks, on the other hand, convey the characteristics, functions, qualities
or ingredients of a product to one who has never seen it or does not know it exists,
such as "Arthriticare" for arthritis medication. On the contrary,
2. The registered trademark owner may use his 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 has recognized that the registered
trademark owner enjoys protection in product and market areas that are the normal potential
expansion of his business.
3. The Court of Appeals, in finding that there is no likelihood of confusion that could arise in the
use of respondents' "Big Mak" mark on hamburgers, relied on the holistic test. Thus, the Court
of Appeals ruled that "it is not sufficient that a similarity exists in both name(s), but that more
importantly, the overall presentation, or in their essential, substantive and distinctive parts is
such as would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing
the genuine article." The holistic test considers the two marks in their entirety, as they appear
on the goods with their labels and packaging. It is not enough to consider their words and
compare the spelling and pronunciation of the words.
4. Dominancy test – considers the dominant features in the competing marks in determining
whether they are confusingly similar. Under the dominancy test, courts give greater weight to
the similarity of the appearance of the product arising from the adoption of the dominant
features of the registered mark, disregarding minor differences. Courts will consider more the
aural and visual impressions created by the marks in the public mind, giving little weight to
factors like prices, quality, sales outlets and market segments.
a. Certainly, "Big Mac" and "Big Mak" for hamburgers create even greater confusion, not
only aurally but also visually. Indeed, a person cannot distinguish "Big Mac" from "Big
Mak" by their sound. When one hears a "Big Mac" or "Big Mak" hamburger
advertisement over the radio, one would not know whether the "Mac" or "Mak" ends
with a "c" or a "k."
5. To establish trademark infringement, the following elements must be shown: (1) the validity
of plaintiffs mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in likelihood of confusion.
6. The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods, and (2) intent to deceive the public and defraud a
competitor.
7. Unfair competition is broader than trademark infringement and includes passing off goods
with or without trademark infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair competition when there is not merely
likelihood of confusion, but also actual or probable deception on the public because of the
general appearance of the goods. There can be trademark infringement without unfair
competition as when the infringer discloses on the labels containing the mark that he
manufactures the goods, thus preventing the public from being deceived that the goods
originate from the trademark owner.
a. Passing off (or palming off) takes place where the defendant, by imitative devices on
the general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors.
b. There is actually no notice to the public that the "Big Mak" hamburgers are products
of "L.C. Big Mak Burger, Inc." and not those of petitioners who have the exclusive right
to the "Big Mac" mark. This clearly shows respondents' intent to deceive the public.
Had respondents' placed a notice on their plastic wrappers and bags that the
hamburgers are sold by "L.C. Big Mak Burger, Inc.", then they could validly claim that
they did not intend to deceive the public. In such case, there is only trademark
infringement but no unfair competition.
8. There can be trademark infringement without unfair competition such as when the infringer
discloses on the labels containing the mark that he manufactures the goods, thus preventing
the public from being deceived that the goods originate from the trademark owner.
McDonalds Corp. v. MacJoy [G.R. No. 166115, Feb. 2, 2007]
1. In determining similarity and likelihood of confusion, jurisprudence has developed two tests,
the dominancy test and the holistic test.
a. The dominancy test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception.
b. The holistic test requires the court to consider the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity.
A comparison of the words is not the only determinant factor.
2. In the case at bar, the predominant features such as the "M," "Mc," and "Mac" appearing in
both McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of would-be
customers. Even non-regular customers of their fastfood restaurants would readily notice the
predominance of the "M" design, "Mc/Mac" prefixes shown in both marks. Such that the
common awareness or perception of customers that the trademarks McDonalds mark and
MACJOY & DEVICE are one and the same, or an affiliate, or under the sponsorship of the
other is not far-fetched.
3. The differences and variations in styles as the device depicting a head of chicken with cap
and bowtie and wings sprouting on both sides of the chicken head, the heart-shaped "M,"
and the stylistic letters in "MACJOY & DEVICE" in contrast to the arch-like "M" and the one-
styled gothic letters in McDonald’s marks are of no moment. These minuscule variations are
overshadowed by the appearance of the predominant features mentioned.
a. Considering the fact that both marks are being used on almost the same products
falling under Classes 29 and 30 of the International Classification of Goods i.e. Food
and ingredients of food.

4. The requirement of actual use in commerce x x x in the Philippines before one may register
a trademark, trade-name and service mark under the Trademark Law pertains to the territorial
jurisdiction of the Philippines and is not only confined to a certain region, province, city or
barangay.
Asia Brewery, Inc. v. CA & San Miguel Corp. [G.R. No. 103543, July 5, 1993]
1. Only registered trademarks, trade names and service marks are protected against
infringement or unauthorized use by another or others. The use of someone else's registered
trademark, trade name or service mark is unauthorized, hence, actionable, if it is done
"without the consent of the registrant."
2. Infringement is determined by the "test of dominancy" rather than by differences or variations
in the details of one trademark and of another.
a. Similarity in size, form and color, while relevant, is not conclusive. If the competing
trademark contains the main or essential or dominant features of another, and
confusion and deception is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the infringing label should suggest
an effort to imitate.
3. 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. "Pilsen" is a "primarily geographically descriptive word,"
hence, non-registerable and not appropriable by any beer manufacturer.
a. No person can appropriate to himself exclusively any word or expression, properly
descriptive of the article, its qualities, ingredients or characteristics, and thus limit other
persons in the use of language appropriate to the description of their manufactures,
the right to the use of such language being common to all. This rule excluding
descriptive terms has also been held to apply to trade-names.
b. The true test is not whether they are exhaustively descriptive of the article designated,
but whether in themselves, and as they are commonly used by those who understand
their meaning, they are reasonably indicative and descriptive of the thing intended. If
they are thus descriptive, and not arbitrary, they cannot be appropriated from general
use and become the exclusive property of anyone.
4. 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 bottle cap, disproves SMC's charge that ABI dishonestly and
fraudulently intends to palm off its BEER PALE PILSEN as SMC's product. In view of the
visible differences between the two products, the Court believes it is quite unlikely that a
customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN
MIGUEL PALE PILSEN.
5. Unfair competition is the employment of deception or any other means contrary to good faith
by which a person shall pass off the goods manufactured by him or in which he deals, or his
business, or services, for those of another who has already established goodwill for his similar
goods, business or services, or any acts calculated to produce the same result.
a. The universal test question is whether the public is likely to be deceived. Nothing less
than conduct tending to pass off one man's goods or business as that of another will

constitute unfair competition. Actual or probable deception and confusion on the part
of the customers by reason of defendant's practices must always appear.
b. In order that there may be deception of the buying public in the sense necessary to
constitute unfair competition, it is necessary to suppose a public accustomed to buy,
and therefore to some extent familiar with, the goods in question. The test of fraudulent
simulation is to be found in the likelihood of the deception of persons in some measure
acquainted with an established design and desirous of purchasing the commodity with
which that design has been associated. The test is not found in the deception, or
possibility of the deception, of the person who knows nothing about the design which
has been counterfeited, and who must be indifferent as between that and the other.
The simulation, in order to be objectionable, must be such as appears likely to mislead
the ordinarily intelligent buyer who has a need to supply and is familiar with the article
that he seeks to purchase.
c. The names of the competing products are clearly different and their respective sources
are prominently printed on the label and on other parts of the bottle, mere similarity in
the shape and size of the container and label, does not constitute unfair competition.
d. Bottle size, shape and color may not be the exclusive property of any one beer
manufacturer. SMC's being the first to use the steinie bottle does not give SMC a
vested right to use it to the exclusion of everyone else. Being of functional or common
use, and not the exclusive invention of any one, it is available to all who might need to
use it within the industry. Nobody can acquire any exclusive right to market articles
supplying simple human needs in containers or wrappers of the general form, size and
character commonly and immediately used in marketing such articles.
e. The amber color is a functional feature of the beer bottle. All bottled beer produced in
the Philippines is contained and sold in amber-colored bottles because amber is the
most effective color in preventing transmission of light and provides the maximum
protection to beer. A merchant cannot be enjoined from using a type or color of bottle
where the same has the useful purpose of protecting the contents from the deleterious
effects of light rays. Moreover, no one may have a monopoly of any color. Not only
beer, but most medicines, whether in liquid or tablet form, are sold in amber-colored
bottles.
f. No one can have a monopoly of the color amber for bottles, nor of white for labels, nor
of the rectangular shape which is the usual configuration of labels. Needless to say,
the shape of the bottle and of the label is unimportant. What is all important is the
name of the product written on the label of the bottle for that is how one beer may be
distinguished from the others.
Superior Commercial Ent., Inc. v. Kunnan Ent. Ltd. & Sports Concept [G.R. No.
169974, Apr. 20, 2010]
1. Thus, we have previously held that the cancellation of registration of a trademark has the
effect of depriving the registrant of protection from infringement from the moment judgment
or order of cancellation has become final.
2. The right to register a trademark should be based on ownership. When the applicant is not
the owner of the trademark being applied for, he has no right to apply for the registration of
the same. Under the Trademark Law, only the owner of the trademark, trade name or service
mark used to distinguish his goods, business or service from the goods, business or service
of others is entitled to register the same. An exclusive distributor does not acquire any
proprietary interest in the principals trademark and cannot register it in his own name unless
it is has been validly assigned to him.
3. In the absence of any inequitable conduct on the part of the manufacturer, an exclusive
distributor who employs the trademark of the manufacturer does not acquire proprietary rights
of the manufacturer, and a registration of the trademark by the distributor as such belongs to
the manufacturer, provided the fiduciary relationship does not terminate before application
for registration is filed.
4. In the present case, by operation of law, specifically Section 19 of RA 166, the trademark
infringement aspect of SUPERIORs case has been rendered moot and academic in view of
the finality of the decision in the Registration Cancellation Case. In short, SUPERIOR is left
without any cause of action for trademark infringement since the cancellation of registration
of a trademark deprived it of protection from infringement from the moment judgment or order
of cancellation became final. To be sure, in a trademark infringement, title to the trademark
is indispensable to a valid cause of action and such title is shown by its certificate of
registration.
5. Even assuming that SUPERIORs case for trademark infringement had not been rendered
moot and academic, there can be no infringement committed by KUNNAN who was adjudged
with finality to be the rightful owner of the disputed trademarks in the Registration Cancellation
Case. Even prior to the cancellation of the registration of the disputed trademarks,
SUPERIOR as a mere distributor and not the owner cannot assert any protection from
trademark infringement as it had no right in the first place to the registration of the disputed
trademarks.
6. Under the concept of res judicata by conclusiveness of judgment, facts and issues actually
and directly resolved in a former suit cannot again be raised in any future case between the
same parties, even if the latter suit may involve a different cause of action.
a. Because the Registration Cancellation Case and the present case involve the same
parties, litigating with respect to and disputing the same trademarks, we are bound to
examine how one case would affect the other. In the present case, even if the causes
of action of the Registration Cancellation Case (the cancellation of trademark
registration) differs from that of the present case (the improper or unauthorized use of
trademarks), the final judgment in the Registration Cancellation Case is nevertheless
conclusive on the particular facts and issues that are determinative of the present
case.
7. To establish trademark infringement, the following elements must be proven: (1) the validity
of plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in likelihood of confusion.
8. True test of unfair competition –
a. whether the acts of the defendant have the intent of deceiving or are calculated to
deceive the ordinary buyer making his purchases under the ordinary conditions of the
particular trade to which the controversy relates.

Fredco Mfg. v. Harvard University [G.R. No. 185917, June 1, 2011]
1. Fredcos registration of the mark Harvard and its identification of origin as Cambridge,
Massachusetts falsely suggest that Fredco or its goods are connected with Harvard
University, which uses the same mark Harvard and is also located in Cambridge,
Massachusetts. Fredcos use of the mark Harvard, coupled with its claimed origin in
Cambridge, Massachusetts, obviously suggests a false connection with Harvard University.
a. What Fredco has done in using the mark Harvard and the words Cambridge,
Massachusetts, USA to evoke a desirable aura to its products is precisely to exploit
commercially the goodwill of Harvard University without the latters consent.
2. Section 4(a) of R.A. No. 166 prohibits the registration of a mark which may disparage or
falsely suggest a connection with persons, living or dead, institutions, beliefs x x x. [See Sec.
123(a), RA 8293, similar to Sec. 2(a) of Lanham Act]
a. These provisions are intended to protect the right of publicity of famous individuals
and institutions from commercial exploitation of their goodwill by others.
3. The Court declared that the power to determine whether a trademark is well-known lies in the
competent authority of the country of registration or use. The Court then stated that the
competent authority would either be the registering authority if it has the power to decide this,
or the courts of the country in question if the issue comes before the courts.
4. A trade name need not be registered with the IPO before an infringement suit may be filed
by its owner against the owner of an infringing trademark. All that is required is that the trade
name is previously used in trade or commerce in the Philippines.
5. Dominancy test –
a. focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion and deception, thus constituting infringement. If the competing
trademark contains the main, essential, and dominant features of another, and
confusion or deception is likely to result, infringement occurs.
b. Exact duplication or imitation is not required. The question is whether the use of the
marks involved is likely to cause confusion or mistake in the mind of the public or to
deceive consumers.
6. Holistic test –
a. entails a consideration of the entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing similarity.
b. The discerning eye of the observer must focus not only on the predominant words but
also on the other features appearing on both marks in order that the observer may
draw his conclusion whether one is confusingly similar to the other.
7. The descriptive words San Francisco Coffee are precisely the dominant features of
respondent’s trade name. Petitioner and respondent are engaged in the same business of
selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases
where the business of one corporation is the same or substantially the same as that of
another corporation. In this case, the consuming public will likely be confused as to the source
of the coffee being sold at petitioners coffee shops.
8. Respondent has NO exclusive use of the geographic word San Francisco or the generic word
Coffee. Geographic or generic words are not, per se, subject to exclusive appropriation. It is
C A S E D O C T R I N E S A N D P R I N C I P L E S ( 2 0 1 8 ) | 10
only the combination of the words San Francisco Coffee, which is respondent’s trade name
in its coffee business, that is protected against infringement on matters related to the coffee
business to avoid confusing or deceiving the public.
Shangri-La Int. Hotel Management, Ltd. V. Developers Group of Companies, Inc.

[G.R. No. 59938]
1. By itself, registration is not a mode of acquiring ownership. When the applicant is not the
owner of the trademark being applied for, he has no right to apply for registration of the same.
Registration merely creates a prima facie presumption of the validity of the registration, of the
registrant's ownership of the trademark and of the exclusive right to the use thereof.
2.
Berris Agricultural v. Abyadang [G.R. No. 183404, Oct. 13, 2010]
1. The protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods bearing the mark through
actual use over a period of time, but also to safeguard the public as consumers against
confusion on these goods.
2. The ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. Section 122
of R.A. No. 8293 provides that the rights in a mark shall be acquired by means of its valid
registration with the IPO.
a. R.A. No. 8293, however, requires the applicant for registration or the registrant to file
a declaration of actual use (DAU) of the mark, with evidence to that effect, within three
(3) years from the filing of the application for registration; otherwise, the application
shall be refused or the mark shall be removed from the register.
b. The prima facie presumption brought about by the registration of a mark may be
challenged and overcome, in an appropriate action, by proof of the nullity of the
registration or of non-use of the mark, except when excused.
c. Moreover, the presumption may likewise be defeated by evidence of prior use by
another person, i.e., it will controvert a claim of legal appropriation or of ownership
based on registration by a subsequent user. This is because a trademark is a creation
of use and belongs to one who first used it in trade or commerce.
i. The determination of priority of use of a mark is a question of fact. Adoption of
the mark alone does not suffice. One may make advertisements, issue
circulars, distribute price lists on certain goods, but these alone will not inure to
the claim of ownership of the mark until the goods bearing the mark are sold to
the public in the market. Accordingly, receipts, sales invoices, and testimonies
of witnesses as customers, or orders of buyers, best prove the actual use of a
mark in trade and commerce during a certain period of time.
3. The DAU, being a notarized document, especially when received in due course by the IPO,
is evidence of the facts it stated and has the presumption of regularity, entitled to full faith
and credit upon its face. Thus, the burden of proof to overcome the presumption of
authenticity and due execution lies on the party contesting it, and the rebutting evidence

should be clear, strong, and convincing as to preclude all controversy as to the falsity of the
certificate.
a. Berris was able to establish that it was using its mark "D-10 80 WP" since June 20,
2002, even before it filed for its registration with the IPO on November 29, 2002, as
shown by its DAU which was under oath and notarized, bearing the stamp of the
Bureau of Trademarks of the IPO on April 25, 2003
b. The Court did not subscribe to the contention of Abyadang that Berris’ DAU is
fraudulent based only on his assumption that Berris could not have legally used the
mark in the sale of its goods way back in June 2002 because it registered the product
with the FPA only on November 12, 2004. The question of whether or not Berris
violated P.D. No. 1144, because it sold its product without prior registration with the
FPA, is a distinct and separate matter from the jurisdiction and concern of the IPO.
Thus, even a determination of violation by Berris of P.D. No. 1144 would not controvert
the fact that it did submit evidence that it had used the mark "D-10 80 WP" earlier than
its FPA registration in 2004.
4. Applying the Dominancy Test, it cannot be gainsaid that Abyadang’s "NS D-10 PLUS" is
similar to Berris’ "D-10 80 WP," that confusion or mistake is more likely to occur. Undeniably,
both marks pertain to the same type of goods – fungicide with 80% Mancozeb as an active
ingredient and used for the same group of fruits, crops, vegetables, and ornamental plants,
using the same dosage and manner of application. They also belong to the same
classification of goods under R.A. No. 8293. Both depictions of "D-10," as found in both
marks, are similar in size, such that this portion is what catches the eye of the purchaser.
Undeniably, the likelihood of confusion is present.
5. This likelihood of confusion and mistake is made more manifest when the Holistic Test is
applied, taking into consideration the packaging, for both use the same type of material (foil
type) and have identical color schemes (red, green, and white); and the marks are both
predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written
underneath.
246 Corp., v. Hon. Daway & Montres Rolex [G.R. No. 157216, Nov. 20, 2003]
1. A junior user of a well-known mark on goods or services which are not similar to the goods
or services, and are therefore unrelated, to those specified in the certificate of registration of
the well-known mark is precluded from using the same on the entirely unrelated goods or
services, subject to the following requisites –
a. The mark is well-known internationally and in the Philippines.
b. Likelihood of confusion of origin – The use of the well-known mark on the entirely
unrelated goods or services would indicate a connection between such unrelated
goods or services and those goods or services specified in the certificate of registration
in the well-known mark
c. Interests of the owner of the well-known mark are likely to be damaged
2.
Emerald Garment Mfg. Corp. v. CA, BPTTT, & H.D. Lee Co., Inc. [G.R. No. 100098,
Dec. 29, 1995]
1. The essential element of infringement is colorable imitation.

a. Colorable imitation – such a close or ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the infringing mark to the original as to
deceive an ordinary purchaser giving such attention as a purchaser usually gives, and
to cause him to purchase the one supposing it to be the other.
2. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article
for which he pays a few centavos as he does in purchasing a more valuable thing. Expensive
and valuable items are normally bought only after deliberate, comparative and analytical
investigation. But mass products, low priced articles in wide use, and matters of everyday
purchase requiring frequent replacement are bought by the casual consumer without great
care.
3. The average Filipino consumer generally buys his jeans by brand. He does not ask the sales
clerk for generic jeans. He is, therefore, more or less knowledgeable and familiar with his
preference and will not easily be distracted.
4. The ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of product involved.
5. "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive
ownership over and singular use of said term.
6. It has been held that a personal name or surname may not be monopolized as a trademark
or tradename as against others of the same name or surname. For in the absence of contract,
fraud, or estoppel, any man may use his name or surname in all legitimate ways.
Sta. Ana v. Maliwat & Dir. of Patents [G.R. No. L-23023, Aug. 31, 1968]
1. An application for registration is not bound by the date of first use as stated by him in his
application, but is entitled to carry back said stated date of first use to a prior date by proper
evidence; but in order to show an earlier date of use, he is then under a heavy burden, and
his proof must be clear and convincing.
a. In the case at bar, the proof of date of first use (1953), earlier than that alleged in
respondent Maliwat's application (1962), can be no less than clear and convincing
because the fact was stipulated and no proof was needed.
2. Protection to owner of a mark is not limited to guarding his goods or business from actual
market competition with identical or similar products of the parties, but extends to all cases
in which the use by a junior appropriator of a trademark or tradename is likely to lead to a
confusion of source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field (see 148 ALR 56 et seq; 52 Am.
Jur. 576) or is in any way connected with the activities of the infringer; or when it forestalls
the normal potential expansion of his business.
a. it is now the common practice among local tailors and haberdashers to branch out into
articles of manufacture which have, one way or another, some direct relationship with
or appurtenance to garments or attire to complete one's wardrobe such as belts,
shoes, handkerchiefs, and the like
Societe des Produit Nestle, SA v. Dy [G.R. No. 172276, Aug. 8, 2010]
1. Implicit in infringement is the concept that the goods must be so related that there is likelihood
either of confusion of goods or business. But as to whether trademark infringement exists
depends for the most part upon whether or not the goods are so related that the public may
be, or is actually, deceived and misled that they came from the same maker or manufacturer.
a. For non-competing goods may be those which, though they are not in actual
competition, are so related to each other that it might reasonably be assumed that they
originate from one manufacturer. Non-competing goods may also be those which,
being entirely unrelated, could not reasonably be assumed to have a common source.
In the former case of related goods, confusion of business could arise out of the use
of similar marks; in the latter case of non-related goods, it could not.
2. Goods may become so related for purposes of infringement when it stated: Goods are related
when they belong to the same class or have same descriptive properties; when they possess
the same physical attributes or essential characteristics with reference to their form,
composition, texture or quality. They may also be related because they serve the same
purpose or are sold in grocery stores.
3. Due to the peculiarity of the facts of each infringement case, a judicial forum should not readily
apply a certain test or standard just because of seeming similarities. The entire panoply of
elements constituting the relevant factual landscape should be comprehensively examined..
4. The discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other.
5. Two types of confusion in trademark infringement –
a. Confusion of goods – in which event the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasing the other. In
which case, defendants goods are then bought as the plaintiffs, and the poorer quality
of the former reflects adversely on the plaintiffs reputation.
b. Confusion of business – here though the goods of the parties are different, the
defendants product is such as might reasonably be assumed to originate with the
plaintiff, and the public would then be deceived either into that belief or into the belief
that there is some connection between the plaintiff and defendant which, in fact, does
not exist.
6. Non-competing goods may be those which, though they are not in actual competition, are so
related to each other that it can reasonably be assumed that they originate from one
manufacturer, in which case, confusion of business can arise out of the use of similar marks.
7. Factors in determining whether goods are related:
a. classification of the goods;
b. nature of the goods;
c. descriptive properties, physical attributes or essential characteristics of the goods, with
reference to their form, composition, texture or quality; and
d. style of distribution and marketing of the goods, including how the goods are displayed
and sold.
Faberge, Inc. v. IAC & Co Beng Kay [G.R. No. 71189, Nov. 4, 1982]
1. If the certificate of registration were to be deemed as including goods not specified therein,
then a situation may arise whereby an applicant may be tempted to register a trademark on
any and all goods which his mind may conceive even if he had never intended to use the
trademark for the said goods.
2. The glaring discrepancies between the two products had been amply portrayed to such an
extent that indeed, "a purchaser who is out in the market for the purpose of buying
respondent's BRUTE brief would definitely be not mistaken or misled into buying BRUT after
shave lotion or deodorant" as categorically opined in the decision of the Director of Patents
relative to the inter-partes case.
Sehwani, Inc. v. In-N-Out Burger, Inc. [G.R. No. 171053, Oct. 15, 2007]
1. Article 6bis which governs the protection of well-known trademarks, is a self-executing

provision and does not require legislative enactment to give it effect in the member country.
It may be applied directly by the tribunals and officials of each member country by the mere
publication or proclamation of the Convention, after its ratification according to the public law
of each state and the order for its execution.
2. Registration may be cancelled if it was obtained fraudulently or contrary to the provisions of
this Act, or if the registered mark is being used by, or with the permission of, the registrant so
as to misrepresent the source of the goods or services on or in connection with which the
mark is used. [Sec. 151.1(b), RA 8293]
Prosource International, Inc. v. Horphag Research Management, SA [G.R. No.

189973, Nov. 25, 2009]
1. Elements of infringement –
a. Trademark being infringed is registered in the IPO; however, in infringement of trade
name, need not be registered;
b. The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
c. The infringing mark or trade name is used in connection with the sale, offering for sale,
or advertising of any goods, business or services; or the infringing mark or trade name
is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services;
d. The use or application of the infringing mark or trade name is likely to cause confusion
or mistake or to deceive purchasers or others as to the goods or services themselves
or as to the source or origin of such goods or services or the identity of such business;
and
e. It is without the consent of the trademark or trade name owner or the assignee thereof.
2. Both the words PYCNOGENOL and PCO-GENOLS have the same suffix GENOL which on
evidence, appears to be merely descriptive and furnish no indication of the origin of the article
and hence, open for trademark registration by the plaintiff thru combination with another word
or phrase such as PYCNOGENOL.
3. Furthermore, although the letters Y between P and C, N between O and C and S after L are
missing in the petitioner’s mark PCO-GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar not to mention that they are both
described by their manufacturers as a food supplement and thus, identified as such by their
public consumers.
4. And although there were dissimilarities in the trademark due to the type of letters used as
well as the size, color and design employed on their individual packages/bottles, still the close
relationship of the competing products name in sounds as they were pronounced, clearly
indicates that purchasers could be misled into believing that they are the same and/or
originates from a common source and manufacturer.
Levi Strauss & Co. v. Clinton Apparelle, Inc. [G.R. No. 138900]
1. Courts should avoid issuing a writ of preliminary injunction that would in effect dispose of the
main case without trial. There would be a prejudgment of the main case and a reversal of the
rule on the burden of proof since it would assume the proposition which a party is inceptively
bound to prove.
2. Attention should be given to the fact that petitioners registered trademark consists of two
elements: (1) the word mark Dockers and (2) the wing-shaped design or logo. Notably, there
is only one registration for both features of the trademark giving the impression that the two
should be considered as a single unit.
a. It is not evident whether the single registration of the trademark Dockers and Design
confers on the owner the right to prevent the use of a fraction thereof in the course of
trade. It is also unclear whether the use without the owners consent of a portion of a
trademark registered in its entirety constitutes material or substantial invasion of the
owners right.
b. Petitioner’s right to injunctive relief has not been clearly and unmistakably
demonstrated. The right has yet to be determined.
c. The issued injunctive writ, if allowed, would dispose of the case on the merits as it
would effectively enjoin the use of the Paddocks device without proof that there is
basis for such action.
3. Trademark dilution is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or (2) likelihood of confusion,
mistake or deception.
a. Subject to the principles of equity, the owner of a famous mark is entitled to an
injunction against another person’s commercial use in commerce of a mark or trade
name, if such use begins after the mark has become famous and causes dilution of
the distinctive quality of the mark.
b. This is intended to protect famous marks from subsequent uses that blur
distinctiveness of the mark or tarnish or disparage it.
Republic Gas Corp. v. Petron Corp, Shell [G.R. No. 194062, June 17, 2003]
1. Here, petitioners have actually committed trademark infringement when they refilled, without
the respondents’ consent, the LPG containers bearing the registered marks of the
respondents. As noted by respondents, petitioners’ acts will inevitably confuse the consuming
public, since they have no way of knowing that the gas contained in the LPG tanks bearing
respondents’ marks is in reality not the latter’s LPG product after the same had been illegally
refilled. The public will then be led to believe that petitioners are authorized refillers and
distributors of respondents’ LPG products, considering that they are accepting empty
containers of respondents and refilling them for resale.
a. In the present case, respondents pertinently observed that by refilling and selling LPG
cylinders bearing their registered marks, petitioners are selling goods by giving them
the general appearance of goods of another manufacturer.
2. The existence of the corporate entity does not shield from prosecution the corporate agent
who knowingly and intentionally caused the corporation to commit a crime. Thus, petitioners
cannot hide behind the cloak of the separate corporate personality of the corporation to
escape criminal liability. A corporate officer cannot protect himself behind a corporation where
he is the actual, present and efficient actor.
a. petitioners, being in direct control and supervision in the management and conduct of
the affairs of the corporation, must have known or are aware that the corporation is
engaged in the act of refilling LPG cylinders bearing the marks of the respondents
without authority or consent from the latter which, under the circumstances, could
probably constitute the crimes of trademark infringement and unfair competition.

PATENTS CASES
AGUAS v. DE LEON & CA [G.R. No. L-32160, Jan. 30, 1982]
FACTS:
1. Private respondent filed in the CFI a complaint for infringement of patent (with prayer for
preliminary injunction) and damages against petitioner and F.H. Aquino and Sons alleging
that he is the original first and sole inventor of certain new and useful improvements in the
process of making mosaic pre-cast tiles; and that the petitioner Aguas infringed subject
Letters of Patent by making, using and selling tiles embodying said patent invention and that
defendant F. H. Aquino & Sons is guilty of infringement by making and furnishing to the
petitioner the engravings, castings and devices designed and intended of tiles embodying
plaintiff’s patented invention.
2. The petitioner alleged:
a. that the plaintiff is neither the original first nor sole inventor of the improvements in the
process of making mosaic pre-cast tiles, the same having been used by several tile-
making factories in the Philippines and abroad years before the alleged invention by
de Leon;
b. that the subject Letters Patent was unlawfully acquired by making it appear in the
application in relation thereto that the process is new and that the plaintiff is the owner
of the process when in truth and in fact the process incorporated in the patent
application has been known and used in the Philippines by almost all tile makers long
before the alleged use and registration of patent by private respondent; and
c. that the truth is that a) the invention of petitioner is neither inventive nor new, hence,
it is not patentable, b) petitioner has been granted valid patents on designs for concrete
decorative wall tiles; and c) that he cannot be guilty of infringement because his
products are different from those of the private respondent.
3. The CFI ruled in favor of private respondent. It declared that the latter’s patent was valid and
infringed. The CA affirmed said decision. The CA found that the private respondent has
introduced an improvement in the process of tile-making. While it is true that the matter of
easement, lip width, depth, protrusions and depressions are known to some sculptors, still,
to be able to produce a new and useful wall tile, by using them all together, amounts to an
invention. More so, if the totality of all these features are viewed in combination with the ideal
composition of cement, sodium silicate and screened fine sand. By using his improved
process, plaintiff has succeeded in producing a new product – a concrete sculptured tile which
could be utilized for walling and decorative purposes. No proof was adduced to show that
any tile of the same kind had been produced by others before the private respondent.
ISSUE:
Whether respondent’s improvement is patentable because it is new, useful and inventive,
and, thus, petitioner did infringe respondent’s patent (YES)
HELD:

1. The validily of the patent issued by the Philippines Patent Office in favor of the private
respondent and the question over the inventiveness, novelty and usefulness of the improved
process therein specified and described are matters which are better determined by the
Philippines Patent Office. The technical staff of the Philippines Patent Office, composed of
experts in their field, have, by the issuance of the patent in question, accepted the thinness
of the private respondent's new tiles as a discovery. There is a presumption that the
Philippines Patent Office has correctly determined the patentability of the improvement by
the private respondent of the process in question.
2. The contention of the petitioner Aguas that the letters patent of de Leon was actually a patent
for the old and non-patentable process of making mosaic pre-cast tiles is devoid of merit. De
Leon never claimed to have invented the process of tile-making.
3. The Claims and Specifications of the subject patent show that although some of the steps or
parts of the old process of tile making were described therein, there were novel and inventive
features mentioned in the process. De Leon's process is an improvement of the old process
of tile making. The tiles produced from de Leon's process are suitable for construction and
ornamentation, which previously had not been achieved by tiles made out of the old process
of tile making. De Leon's invention has therefore brought about a new and useful kind of tile.
The old type of tiles were usually intended for floors although there is nothing to prevent one
from using them for walling purposes. These tiles are neither artistic nor ornamental. They
are heavy and massive.
4. The respondent's improvement is indeed inventive and goes beyond the exercise of
mechanical skill. He has introduced a new kind of tile for a new purpose. He has improved
the old method of making tiles and pre-cast articles which were not satisfactory because of
an intolerable number of breakages, especially if deep engravings are made on the tile. He
has overcome the problem of producing decorative tiles with deep engraving, but with
sufficient durability. Durability inspite of the thinness and lightness of the tile, is assured,
provided that a certain critical depth is maintained in relation to the dimensions of the tile.
5. There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona tiles are
made of ceramics. The process involved in making cement tiles is different from ceramic tiles.
Cement tiles are made with the use of water, while in ceramics fire is used. As regards the
allegation of the petitioner that the private respondent copied some designs of Pomona,
suffice it to say that what is in issue here is the process involved in tile making and not the
design.
MAGUAN v. CA & LUCHAN [G.R. No. L-45101, Nov. 28, 1986]
FACTS:
1. Petitioner informed private respondent that the powder puffs the latter is manufacturing and
selling to various enterprises particularly those in the cosmetics industry, resemble Identical
or substantially identical powder puffs of which the former is a patent holder.
2. Private respondent replied stating that her products are different and countered that
petitioner's patents are void because the utility models applied for were not new and
patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author.
3. Petitioner filed a complaint for damages with injunction and preliminary injunction against
private respondent with the CFI for patent infringement.
4. Private respondent alleged that the products she is manufacturing and offering for sale are
not identical, or even only substantially identical to the products covered by petitioner's
patents and, by way of affirmative defenses, further alleged that petitioner's patents in
question are void on the grounds stated in no. 2 for the following reasons:
a. since years prior to the filing of applications for the patents involved, powder puffs of
the kind applied for were then already existing and publicly being sold in the market;
both in the Philippines and abroad; and
b. applicant's claims in her applications, of "construction" or process of manufacturing
the utility models applied for, with respect to two of the patents, were but a complicated
and impractical version of an old, simple one which has been well known to the
cosmetics industry since years previous to her filing of applications, and which
belonged to no one except to the general public; and with respect to the last patent,
her claim in her application of a unitary powder puff, was but a limitation of a product
well-known to the cosmetics industry since years previous to her filing of application,
and which belonged to no one except to the general public.
5. The CFI granted the preliminary injunction prayed for by petitioner. Private respondent
questioned the issuance of the Writ of Preliminary Injunction arguing that since there is still a
pending cancellation proceedings before the PPO concerning petitioner's patents, such
cannot be the basis for preliminary injunction. The trial court denied this MR.
6. The CA denied the petition for certiorari of the private respondents; but upon review on
reconsideration, the CA gave weight to private respondent's allegation that the latter's
products are not identical or even only substantially identical to the products covered by
petitioner's patents. Said court noticed that contrary to the lower courts position that the CFI
had no jurisdiction to determine the question of invalidity of the patents, Section 45 and 46 of
the Patent Law allow the court to make a finding on the validity or invalidity of patents and in
the event there exists a fair question of its invalidity, the situation calls for a denial of the writ
of preliminary injunction pending the evaluation of the evidence presented.
ISSUE:
Whether in an action for infringement the Court a quo had jurisdiction to determine the
invalidity of the patents at issue which invalidity was still pending consideration in the patent
office (YES)
Whether the evidence introduced by private respondent is sufficient to overcome the prima
facie presumption that the patent introduced in evidence by petitioner is correct and valid,
and, hence, the writ of preliminary injunction should not have been granted by the CFI (YES)
HELD:
1. The trial court has jurisdiction to declare the patents in question invalid. A patentee shall have
the exclusive right to make, use and sell the patented article or product and the making, using,
or selling by any person without the authorization of the patentee constitutes infringement of
the patent. Any patentee whose rights have been infringed upon may bring an action before
the proper CFI now (RTC) and to secure an injunction for the protection of his rights.
Defenses in an action for infringement are provided for in the same law which in fact were
availed of by private respondent in this case.
2. An invention must possess the essential elements of novelty, originality and precedence and
for the patentee to be entitled to protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a patentee for more than one
year under Sec. 9 of the Patent Law [See Sec. 24 (Prior Art), RA 8293] before the date of his
application for his patent, will be fatal to, the validity of the patent when issued.
3. In cases of infringement of patent no preliminary injunction will be granted unless the patent
is valid and infringed beyond question and the record conclusively proves the defense is
sham.
4. As correctly observed by the CA, "since sufficient proofs have been introduced in evidence
showing a fair question of the invalidity of the patents issued for such models, it is but right
that the evidence be looked into, evaluated and determined on the merits so that the matter
of whether the patents issued were in fact valid or not may be resolved."
5. For failure to determine first the validity of the patents before aforesaid issuance of the writ,
the trial court failed to satisfy the two requisites necessary if an injunction is to issue, namely:
the existence of the right to be protected and the violation of said right.
6. As found by respondent Court of Appeals, the injunctive order of the trial court is of so general
a tenor that petitioner may be totally barred from the sale of any kind of powder puff.
GODINES v. CA & SV-AGRO ENT., INC. [G.R. No. 97343, Sept. 13, 1993]
FACTS:
1. The subject patent was issued by the PPO to one Villaruz. It covers a utility model for a hand
tractor or power tiller; this patent was acquired by SV-Agro (private respondent) by virture of
a Deed of Assignment.
2. SV-Agro discovered that power tillers similar to those patented by SV-Agro were being
manufactured and sold by petitioner thus causing a decline in the former’s sales.
3. Upon petitioner's failure to comply with SV-Agro’s demand that the former should stop selling
and manufacturing similar power tillers, SV-Agro Industries filed before the Regional Trial
Court a complaint for infringement of patent and unfair competition.
4. The RTC ruled in favor of SV-Agro. This was affirmed by the CA.
5. The petitioner maintained his defenses that he was not engaged in the manufacture and sale
of the power tillers as he made them only upon the special order of his customers who gave
their own specifications; hence, he could not be liable for infringement of patent and unfair
competition; and that those made by him were different from those being manufactured and
sold by private respondent.
ISSUE:
Whether petitioner infringed on SV-Agro’s patent (YES)
HELD:
1. Tests have been established to determine infringement. These are
a. literal infringement – resort must be had, in the first instance, to the words of the claim.
If accused matter clearly falls within the claim, infringement is made out and that is the
end of it; to determine whether the particular item falls within the literal meaning of the
patent claims, the court must juxtapose the claims of the patent and the accused
product within the overall context of the claims and specifications, to determine
whether there is exact identity of all material elements.
b. the doctrine of equivalents –
i. Infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and
change, performs substantially the same function in substantially the same way
to achieve substantially the same result.
ii. Recognizing that the logical fallback position of one in the place of defendant is
to aver that his product is different from the patented one, courts have adopted
this which recognizes that minor modifications in a patented invention are
sufficient to put the item beyond the scope of literal infringement.
iii. To permit the imitation of a patented invention which does not copy any literal
detail would be to convert the protection of the patent grant into a hollow and
useless thing. Such imitation would leave room for — indeed encourage — the
unscrupulous copyist to make unimportant and insubstantial changes and
substitutions in the patent which, though adding nothing, would be enough to
take the copied matter outside the claim, and hence outside the reach of the
law.
2. Re literal infringement – the CFI made the following observation –
a. viewed from any perspective or angle, the power tiller of the defendant is identical and
similar to that of the turtle power tiller of plaintiff in form, configuration, design and
appearance. The parts or components thereof are virtually the same;
b. in operation, the floating power tiller of the defendant operates also in similar manner
as the turtle power tiller of plaintiff.
It appears from the foregoing observation of the trial court that these claims of the patent
and the features of the patented utility model were copied by petitioner. We are compelled to
arrive at no other conclusion but that there was infringement.
3. Re doctrine of equivalents – a careful examination between the two power tillers will show
that they will operate on the same fundamental principles. And, according to establish
jurisprudence, in infringement of patent, similarities or differences are to be determined, not
by the names of things, but in the light of what elements do, and substantial, rather than
technical, identity in the test. More specifically, it is necessary and sufficient to constitute
equivalency that the same function can be performed in substantially the same way or
manner, or by the same or substantially the same, principle or mode of operation; but where
these tests are satisfied, mere differences of form or name are immaterial
a. To establish an infringement, it is not essential to show that the defendant adopted the
device or process in every particular; Proof of an adoption of the substance of the thing
will be sufficient.
b. The law will protect a patentee against imitation of his patent by other forms and
proportions. If two devices do the same work in substantially the same way, and
accomplish substantially the same result, they are the same, even though they differ
in name, form, or shape.

SCHUARTZ, et al. v. CA & BPTTT [G.R. No. 113407, July 12, 2000]
FACTS:
1. Petitioners applied to the public respondent BPTTT for registration of patents. They hired the
law firm Siguion Reyna, Montecillo and Ongsiako to process their patent applications in the
Philippines.
2. Petitioner’s patent applications lacked certain requirements and the Bureau informed the law
firm about it, through correspondences called Office Actions. As petitioners law firm did not
respond to these office actions within the prescribed time, notices of abandonment were sent
(last one in June 1987).
3. Immediately after the dismissal of two employees who worked with the patent group of the
law firm, the latter conducted an inventory of all the documents entrusted to them. It was then
(Dec 1987) that the firm learned about the notices of abandonment. Thereafter petitioners,
thru the law firm, filed with the Bureau petitions for revival.
4. The Bureau’s Director denied all the petitions for revival because they were filed out of time.
5. The CA dismissed the consolidated appeal because there was an unreasonable delay before
the petitions to revive applications were filed. Moreover, petitioner’s patent applications could
not be a proper subject of a consolidated appeal because they covered separate and distinct
subjects and had been treated by the Bureau as separate and individual applications. The
MR was likewise denied.
ISSUE:
Whether the petition should not be granted because of laches (NO)
HELD:
1. Prior to the filing of the petition for revival of the patent application with the Bureau of Patents,
an unreasonable period of time had lapsed due to the negligence of petitioners counsel. By
such inaction, petitioners were deemed to have forfeited their right to revive their applications
for patent.
2. Facts show that the patent attorneys appointed to follow up the applications for patent
registration had been negligent in complying with the rules of practice prescribed by the
Bureau of Patents. The firm had been notified about the abandonment as early as June 1987,
but it was only after December 7, 1987, when their employees Bangkas and Rosas had been
dismissed, that they came to know about it. This clearly showed that petitioners counsel had
been remiss in the handling of their client’s applications.
3. A lawyer’s fidelity to the cause of his client requires him to be ever mindful of the
responsibilities that should be expected of him. A lawyer shall not neglect a legal matter
entrusted to him. In the instant case, petitioners patent attorneys not only failed to take notice
of the notices of abandonment, but they failed to revive the application within the four-month
period, as provided in the rules of practice in patent cases. These applications are deemed
forfeited upon the lapse of such period.

CRESER PRECISION SYSTEMS, INC. v. CA & FLORO INTL. CORP.
[G.R. No. 118708, Feb 2, 1998]
FACTS:
1. In 1990, private respondent, a domestic corporation engaged in the manufacture, production,
distribution and sale of military armaments, munitions, airmunitions and other similar
materials, was granted by the BPTTT a Letters Patent covering an aerial fuze.
2. Private respondent discovered that petitioner submitted samples of its patented aerial fuze
to the Armed Forces of the Philippines (AFP) for testing. The latter was claiming the aforesaid
aerial fuze as its own and was planning to bid and manufacture the same commercially
without license or authority from private respondent; hence, the private respondent warned
petitioner.
3. The petitioner filed a complaint for infringement with injunction and damages before the RTC;
the petitioner alleged that it is the first, true and actual inventor of an aerial fuze which was
developed as early as 1981; that sometime in 1986, petitioner began supplying the AFP with
the said aerial fuze; that private respondents aerial fuze is identical in every respect to the
petitioners fuze; and that the only difference between the two fuzes are miniscule and merely
cosmetic in nature. A TRO was issued by the RTC.
4. Private respondent alleged that petitioner has no cause of action to filed a complaint of
infringement against it since it has not patent for the aerial fuze which it claims to have
invented; that petitioner’s available remedy is to file a petition for cancellation of patent before
the Bureau; that private respondent as the patent holder cannot be stripped of its property
right over the patented aerial fuze.
5. The RTC issued a writ of preliminary injunction against private respondent. The latter moved
for reconsideration but was denied. It was not convinced by the private respondent’s
assertion that an action for infringement may only be brought by anyone possessing right,
title or interest to the patented invention, (Section 42, RA 165) qualified by Section 10, RA
165 to include only the first true and actual inventor, his heirs, legal representatives to
assignees, this court finds the foregoing to be untenable.
6. The CA reversed the order of the RTC and dismissed the complaint filed by the petitioner.
The petitioner’s MR was also denied; hence, this petition.
ISSUE:
Whether the petitioner, not having any patent for the aerial fuze, has cause of action for
infringement against private respondent [NO]
Whether the petitioner should have instead filed a petition for cancellation [YES]
HELD:
1. SECTION. 42. Civil action for infringement. Any patentee, or anyone possessing any right,
title or interest in and to the patented invention, whose rights have been infringed, may bring
a civil action before the proper Court of First Instance (now Regional Trial court), to recover
from the infringer damages sustained by reason of the infringement and to secure an
injunction for the protection of his right. x x x
2. Under the aforequoted law, only the patentee or his successors-in-interest may file an action
for infringement. The phrase anyone possessing any right, title or interest in and to the
patented invention upon which petitioner maintains its present suit, refers only to the
patentees successors-in-interest, assignees or grantees since actions for infringement of
patent may be brought in the name of the person or persons interested, whether as patentee,
assignees or grantees, of the exclusive right.

3. Moreover, there can be no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises alone from the grant of
patent. In short, a person or entity who has not been granted letters patent over an invention
and has not acquired any right or title thereto either as assignee or as licensee, has no cause
of action for infringement because the right to maintain an infringement suit depends on the
existence of the patent.
4. An inventor has no common-law right to a monopoly of his invention. He has the right to
make, use and vend his own invention, but if he voluntarily discloses it, such as by offering it
for sale, the world is free to copy and use it with impunity. A patent, however, gives the
inventor the right to exclude all others. As a patentee, he has the exclusive right of making,
using or selling the invention.
5. Thus, anyone who has no patent over an invention but claims to have a right or interest
thereto can not file an action for declaratory judgment or injunctive suit which is not
recognized in this jurisdiction. Said person, however, is not left without any remedy. He can,
under Section 28 of the aforementioned law, file a petition for cancellation of the patent within
three (3) years from the publication of said patent with the Director of Patents and raise as
ground therefor that the person to whom the patent was issued is not the true and actual
inventor. Hence, petitioners remedy is not to file an action for injunction or infringement but
to file a petition for cancellation of private respondent patent. Petitioner however failed to do
so. As such, it can not now assail or impugn the validity of the private respondents letters
patent by claiming that it is the true and actual inventor of the aerial fuze.
GSELL v. YAP-JUE [G.R. No. L-4720, Jan. 19, 1909]
FACTS:
1. Plaintiff brought an action to enjoin infringement of a patented process for the manufacture
of curved handles for canes, parasols, and umbrellas by means of a lamp or blowpipe fed
with mineral oil or petroleum, which process was protected by patent. He established his title
to a valid patent covering the process in question, and obtained against this defendant a
judgment, granting a perpetual injunction restraining its infringement, which judgment was
affirmed by this court on appeal.
2. Thereafter, the defendant continued to manufacture curved cane handled for walking sticks
and umbrellas by a process in all respects identical with that used by the plaintiff under his
patent, except only that he be substituted for a lamp fed with petroleum or mineral oil, lamp
fed with alcohol.
3. Contempt proceedings were instituted against the defendant because the former was in
disobedience of the judgment. The CFI decided in favor of the defendant. This was reversed
by the SC.
4. Thereafter the plaintiff continued the use of the patented process, save only for the
substitutions of a lamp fed by alcohol for a lamp fed by petroleum or mineral oil, and new
proceedings were instituted for the purpose of enforcing the original injunction above cited.
The trial court decided against the defendant.
ISSUE:
Whether the use of a patented process by a third person, without license or authority therefor,
constitutes an infringement when the alleged infringer has substituted in lieu of some
unessential part of the patented process a well-known mechanical equivalent (YES)

HELD:
1. Defendant's blast lamp is fed with alcohol, and its shape varies in unimportant details, for the
purpose of accommodating the principle, by which the flame is secured, to the different
physical and chemical composition of the fuel used therein; but the principle on which it works,
its mode of application, and its general design distinguish it in no essential particular from
that used by the plaintiff.
2. Unessential changes, which do not affect the principle of the blast lamp used in the patented
process, or the mode of application of heat authorized by the patent, are not sufficient to
support a contention that the process in one case is in any essential particular different from
that used in the other.
3. Doctrine of mechanical equivalents –
a. if no one can be held to infringe a patent for a combination unless he uses all the parts
of the combination and the identical machinery as that of the patentee, then will no
patent for a combination be infringed; for certainly no one capable of operating a
machine can be incapable of adopting some formal alteration in the machinery, or of
substituting mechanical equivalents. No one infringes a patent for a combination who
does not employ all of the ingredients of the combination; but if he employs all the
ingredients, or adopts mere formal alterations, or substitutes, for one ingredient
another which was well known at the date of the patent as a proper substitute for the
one withdrawn, and which performs substantially the same function as the one
withdrawn, he does infringe.
b. Bona fide inventors of a combination are as much entitled to equivalents as the
inventors other patentable improvements; by which is meant that a patentee in such a
case may substitute another ingredient for any one of the ingredients of his invention,
if the ingredient substituted performs the same function as the one omitted and as well
known at the date of his patent as a proper substitute for the one omitted in the
patented combination.
c. Bona fide inventors of a combination are as much entitled to suppress every other
combination of the same ingredients to produce the same result, not substantially
different from what they have invented and caused to be patented as to any other
class of inventors. All alike have the right to suppress every colorable invasion of that
which is secured to them by letters patent.
d. A claim for the particular means and mode of operation described in the specification
extends, by operation of law, to the equivalent of such means — not equivalent simply
because the same result is thereby produced — but equivalent as being substantially
the same device in structure, arrangement and mode of operation.
e. An equivalent device is such as a mechanic of ordinary skill in construction of similar
machinery, having the forms, specifications and machine before him, could substitute
in the place of the mechanism described without the exercise of the inventive faculty.
4. Under the doctrine of equivalents, the language of the note in the descriptive statement
applies to the operation of applying heat for the purpose of curving handles or canes and
umbrellas by means of a blast lamp fed with alcohol, as well as by means of a blast lamp fed
with petroleum or mineral oil; and the defendant having admitted the fact that he applied heat
for the purpose of curving handles for canes and umbrellas by means of a blast lamp fed with
alcohol, he must be deemed to have contempt of violating the terms and the injunction issued
in the principal case, wherein plaintiff was declared the owner of the patent in question, and
defendant enjoined from its infringement.

SMITH KLINE BECKMAN CORP. v. CA & TRYCO PHARMA CORP.
[G.R. No. 126627, Aug. 14, 2003]
FACTS:
1.
ISSUE:
HELD:
1.

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