G.R. NO.

175278

GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.], Petitioner,

vs.

BPI FAMILY BANK, Respondent.

FACTS:

Petitioner was originall organized as Royal Savings Bank it was placed under receivership and later
temporarily closed. Petitioner reopened and was renamed Comsavings Bank.

Government Service Insurance System (GSIS) acquired petitioner from the Commercial Bank of Manila.
Petitioner sought Securities and Exchange Commission (SEC) approval to change its corporate name to
"GSIS Family Bank, a Thrift Bank.

Petitioner likewise applied with the Department of Trade and Industry (DTI) and Bangko Sentral ng
Pilpinas (BSP) for authority to use "GSIS Family Bank, a Thrift Bank" as its business name.The DTI and the
BSP approved the applications.

Respondent BPI Family Bank

Since its incorporation, the bank has been commonly known as "Family Bank."

In 1985, Family Bank merged with BPI. BPI Family Savings Bank was registered with the SEC

Eventually, it reached respondent's attention that petitioner is using or attempting to use the name
"Family Bank."

Thus, on March 8, 2002, respondent petitioned the SEC Company Registration and Monitoring
Department (SEC CRMD) to disallow or prevent the registration of the name "GSIS Family Bank" or any
other corporate name with the words "Family Bank" in it.

ISSUE/s:

Whether or not the business name used is identical, deceptively or confusingly simila?

RULING:

YES.

The Court ruled that to fall within the prohibition of the law on the right to the exclusive use of a
corporate name, two requisites must be proven:
(1) the complainant corporation must have acquired a prior right over the use of such corporate name
and

(2) the proposed name is either identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or patently deceptive, confusing or contrary
to existing law.

Both these requisites are present in the case.

a. Respondent was incorporated in 1969 as Family Savings Bank and in 1985 as BPI Family Bank.
Petitioner, on the other hand, was incorporated as GSIS Family - Thrift Bank only in 2002, or at least
seventeen (17) years after respondent started using its name. The respondent has the prior right over
use of the corporate name.

b. The words "Family Bank" present in both petitioner and respondent's corporate name satisfy the
requirement that there be identical names. Petitioner's corporate name is "GSIS Family Bank—A Thrift
Bank" and respondent's corporate name is "BPI Family Bank." The only words that distinguish the two
are "BPI," "GSIS," and "Thrift." The first two words are merely the acronyms of the proper names by
which the two corporations identify themselves; and the third word simply describes the classification of
the bank. The overriding consideration in determining whether a person, using ordinary care and
discrimination, might be misled is the circumstance that both petitioner and respondent are engaged in
the same business of banking. "The likelihood of confusion is accentuated in cases where the goods or
business of one corporation are the same or substantially the same to that of another corporation."

Judicial notice may also be taken of the action of the IPO in approving respondent’s registration of the
trademark "BPI Family Bank" and its logo on October 17, 2008. The certificate of registration of a mark
shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use the same in connection with the goods or services and those
that are related thereto specified in the certificate.

SHELL COMPANY OF THE PHILIPPINES, LTD., petitioner,

vs.
INSULAR PETROLEUM REFINING CO., LTD., and COURT OF APPEALS

FACTS:
Conrado Uichangco, an operator of a Shell service station a certain F. Pecson Lozano, an agent of
the defendant, "tried to convince me that Insoil is a good oil". As a matter of fact, he tried to show me a
chemical analysis of Insoil which he claimed was very close to the analysis of Shell oil; and he also told
me that he could sell this kind of oil (Insoil) to me at a much cheaper price so that I could make a bigger
margin of profits."
The incident between petitioner's operator and respondent's agent, brought about a case for damages
on the allegation of unfair competition and a Criminal Case No. 42020 under the Revised Penal Code
(Art. 189) against Donald Mead, Manager, Pedro Kayanan and F. Tecson Lozano. In the criminal case, the
accused therein were acquitted. In the civil case, the trial court ruled in favor of Shell. However, it was
reversed by CA. Hence, this petition.

ISSUE/s:
Whether or not the defendant is guilty of unfair competition

RULING:
NO.

The single transaction at bar will not render defendant's act an unfair competition, much in the same
way that the appearance of one swallow does not make a season, summer. It was found by the Court of
Appeals that in all transactions of the low-grade Insoil, except the present one, all the marks and brands
on the containers used were erased or obliterated. The drum in question did not reach the buying public.
It was merely a shell dealer or an operator of a Shell Station who purchased the drum not to be resold to
the public, but to be sold to the petitioner company, with a view of obtaining evidence against someone
who might have been committing unfair business practices, for the dealer had found that his income was
dwindling in his gasoline station.

CENTURY CHINESE MEDICINE CO. Et.al.

vs.

PEOPLE OF THE PHILIPPINES and LING NA LAU

FACTS:

Respondent Ling Na Lau, doing business under the name and style Worldwide Pharmacy, is the sole
distributor and registered trademark owner of TOP GEL T.G. & DEVICE OF A LEAF papaya whitening soap
for a period of ten years from 2003. Respondent claims that the petitioners in this case were selling
counterfeit whitening papaya soaps bearing the general appearance of their products. There was an
investigation, which led to seizures of the petitioner's products because the NBI ruled that it was
counterfeit.

Petitioners contend that the products seized from their respective stores cannot be the subject of the
search warrants and seizure as those Top Gel products are not fruits of any crime, infringed product nor
intended to be used in any crime; that they are legitimate distributors who are authorized to sell the
same, since those genuine top gel products bore the original trademark/tradename of TOP GEL MCA,
owned and distributed by Yu. Petitioners also claim that despite the RTC's order to release the seized
TOP GEL products, not one had been returned; that one or two samples from each petitioner's'
drugstore would have sufficed in case there is a need to present them in a criminal prosecution, and that
confiscation of thousands of these products was an overkill. Petitioners also argue that the issue that the
RTC erred in applying the rules on search and seizure in anticipation of a civil action was never raised in
the RTC.

ISSUE/s:

Whether or not the CA erred in reversing the RTC's quashal of the assailed search warrants.

RULING:

The petition has no merit.

The applications for the issuance of the assailed search warrants were for violations of Sections 155 and
168, both in relation to Section 170 of Republic Act (RA) No. 8293, otherwise known as the Intellectual
Property Code of the Philippines. Section 155, in relation to Section 170, punishes trademark
infringement; while Section 168, in relation to Section 170, penalizes unfair competition

Sec. 168. Unfair Competition, Rights, Regulation and Remedies. –

xxxx

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

(a) Any person, who is selling his goods and gives 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 be likely to influence purchasers to believe that the goods offered are those of a manufacturer or
dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent
vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;

And
SEC. 170. Penalties. - Independent of the civil and administrative sanctions imposed by law, a criminal
penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos
(₱50,000.00) to Two hundred thousand pesos (₱200,000.00) shall be imposed on any person who is
found guilty of committing any of the acts mentioned in Section 155 [Infringement], Section 168 [Unfair
Competition] and Subsection 169.1 [False Designation of Origin and False Description or
Representation].

Digested by:

Zaragoza, Ma. Lordjena