MIGHTY CORP. vs.

E&J GALLO

FACTS: On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents) sued MIGHTY
CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-Makati for trademark and trade
name infringement and unfair competition, with a prayer for damages and preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo
trademark’s established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing
public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine
were totally unrelated products. To wit:

1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;

2. GALLO cigarettes and GALLO wines were sold through different channels of trade;

3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo cigarette buyers were farmers,
fishermen, laborers and other low-income workers;

4. that the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as
MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST &
JULIO GALLO or just their surname GALLO;

The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary injunction. CA likewise
dismissed respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC held petitioners liable for committing trademark infringement and unfair
competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration.

ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they
were purportedly forms of vice.

RULING: NO.

Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:
· the business (and its location) to which the goods belong
· the class of product to which the good belong
· the product’s quality, quantity, or size, including the nature of the package, wrapper or container
· the nature and cost of the articles
· the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or
quality
· the purpose of the goods
· whether the article is bought for immediate consumption, that is, day-to-day household items
· the field of manufacture
· the conditions under which the article is usually purchased and
· the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an
established design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order
to be objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with
the article that he seeks to purchase. The petitioners are not liable for trademark infringement, unfair competition or damages.

Page 1 of 67
 INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. PAQUITO OCHOA
GR No. 204605, July 19, 2019

Facts:
The Intellectual Property Office of the Philippines (IPOPHL) recommended to the DFA that the Philippine should accede to the
Madrid Protocol contending that accession would benefit the country and help raise the level of competitiveness for Filipino brands.
After its own review, the DFA endorsed to the President the country's accession to the Madrid Protocol.

The DFA determined that the Madrid Protocol was an executive agreement. The IPOPHL, the Department of Science and Technology,
and the Department of Trade and Industry concurred in the recommendation of the DFA.

President Benigno C. Aquino III ratified the Madrid Protocol through an instrument of accession. The instrument of accession was
deposited with the Director General of the World Intellectual Property Organization (WIPO) on April 25, 2012, The Madrid Protocol
entered into force in the Philippines on July 25, 2012

IPAP, an association of more than 100 law firms and individual practitioners in Intellectual Property Law commenced this special
civil action for certiorari and prohibition to challenge the constitutionality of its accession. Among otherS, IPAP argued that the
implementation of the Madrid Protocol in the Philippines, specifically the processing of foreign trademark applications, conflicts with
the IP Code considering that the Madrid Protocol does away with the requirement of a resident under Section 125 of the IP Code.

The IPAP has insisted that Article 2 of the Madrid Protocol means that foreign trademark applicants may file their applications through
the International Bureau or the WIPO, and their applications will be automatically granted trademark protection without the need for
designating their resident agents in the country.

The IPAP has prayed that the implementation of the Madrid Protocol in the Philippines be restrained in order to prevent future wrongs
considering that the IPAP and its constituency have a clear and unmistakable right not to be deprived of the rights granted them by
the IP Code and existing local laws.

Issues:

Whether or not the Madrid Protocol is in conflict with the IP Code.

Ruling:

There is no conflict between the Madrid Protocol and the IP Code

The IPAP contends that the Madrid Protocol does away with the requirement of a resident agent under Section 125 of the IP Code and
thus unconstitutional. The IPAP's contentions stand on a faulty premise. The method of registration through the IPOPHL, as laid down
by the IP Code, is distinct and separate from the method of registration through the WIPO, as set in the Madrid Protocol. Comparing
the two methods of registration despite their being governed by two separate systems of registration is thus misplaced.

In arguing that the Madrid Protocol conflicts with Section 125 of the IP Code, the IPAP highlights the importance of the requirement
for the designation of a resident agent. It underscores that the requirement is intended to ensure that non-resident entities seeking
protection or privileges under Philippine Intellectual Property Laws will be subjected to the country's jurisdiction. It submits that
without such resident agent, there will be a need to resort to costly, time consuming and cumbersome extraterritorial service of writs
and processes.

The IPAP misapprehends the procedure for examination under the Madrid Protocol. The difficulty, which the IPAP illustrates, is
minimal, if not altogether inexistent. The IPOPHL actually requires the designation of the resident agent when it refuses the
registration of a mark. Local representation is further required in the submission of the Declaration of Actual Use, as well as in the
submission of the license contract. The Madrid Protocol accords with the intent and spirit of the IP Code, particularly on the subject
of the registration of trademarks. The Madrid Protocol does not amend or modify the IP Code on the acquisition of trademark rights
considering that the applications under the Madrid Protocol are still examined according to the relevant national law. In that regard,
the IPOPHL will only grant protection to a mark that meets the local registration requirements.

Notes:
The Madrid System for the International Registration of Marks {Madrid System), which is the centralized system providing a one-
stop solution for registering and managing marks worldwide, allows the trademark owner to file one application in one language, and
to pay one set of fees to protect his mark in the territories of up to 97 member-states. The Madrid System is governed by the Madrid
Agreement, concluded in 1891, and the Madrid Protocol, concluded in 1989.

Page 2 of 67
The Madrid Protocol, which was adopted in order to remove the challenges deterring some countries from acceding to the Madrid
Agreement, has two objectives, namely: (1) to facilitate securing protection for marks; and (2) to make the management of the
registered marks easier in different countries.

IP Code, Section 125 states:

Sec. 125. Representation; Address for Service. - If the applicant is not domiciled or has no real and effective commercial establishment
in the Philippines; he shall designate by a written document filed in the office, the name and address of a Philippine resident who may
be served notices or process in proceedings affecting the mark. Such notices or services may be served upon the person so designated
by leaving a copy thereof at the address specified in the last designation filed. If the person so designated cannot be found at the
address given in the last designation, such notice or process may be served upon the Director. (Sec. 3; R.A. No. 166 a)

Article 2 of the Madrid Protocol provides in contrast:

Article 2 - Securing Protection through International Registration

(1) Where an application for the registration of a mark has been filed with the Office of a Contracting Party, or where a mark has been
registered in the register of the Office of a Contracting Party, the person in whose name that application (hereinafter referred to as
"the basic application;') or that registration (hereinafter referred to as "the basic registration") stands may, subject to the provisions of
this Protocol secure protection for his mark in the territory of the Contracting Parties, by obtaining the
registration of that mark in the register of the International Bureau of the World Intellectual Property Organization (hereinafter referred
to as "the international registration," "the International Register," "the International Bureau" and "the Organization'', respectively),
provided that:
(i) where the basic application has been filed with the Office of a Contracting State or where the basic registration has been
made by such an Office, the person in whose name that application or registration stands is a national of that Contracting
State, or is domiciled, or has a real and effective industrial or commercial establishment, in the said Contracting State;
(ii) where the basic application has been filed with the Office of a Contracting Organization or where the basic registration
has been made by such an Office, the person in whose name that application or registration stands is a national of a State
member of that Contracting Organization, or is domiciled, or has a real and effective industrial or commercial establishment,
in the territory of the said Contracting Organization.

(2) The application for international registration (hereinafter referred to as "the international application") shall be filed with the
International Bureau through the intermediary of the Office with which the basic application was filed or by which the basic
registration was made (hereinafter referred to as "the Office of origin"), as the case may be.

(3) Any reference in this Protocol to an "Office" or an "Office of a Contracting Party" shall be construed as a reference to the office
that is in charge, on behalf of a Contracting Party, of the registration of marks, and any reference in this Protocol to "marks" shall be
construed as a reference to trademarks and service marks.

(4) For the purposes of this Protocol, "territory of a Contracting Party" means, where the Contracting Party is a State, the territory of
that State and, where the Contracting Party is an intergovernmental organization, the territory in which the constituting treaty of that
intergovernmental organization applied.

Page 3 of 67
 PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART, INCORPORATED, and NORTH EDSA MARKETING,
INCORPORATED
G.R. No. 148222 August 15, 2003

FACTS:
Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply referred to as light boxes.
These units utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was
able to secure a Certificate of Copyright Registration over these illuminated display units, and its application for registration of the
trademark was also approved. The light boxes were marketed under the trademark "Poster Ads".
In 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and installation of the light boxes in
SM Makati and SM Cubao. Only the contract for SM Makati was signed. However, that contract was later rescinded by SMI. SMI
then engaged the services of Metro Industrial Services and EYD Rainbow Advertising Corporation to make the light boxes for
Shoemart’s chain of stores.
In 1989, Pearl and Dean found out that exact copies of its light boxes were installed at some SM City stores. It further discovered that
defendant-appellant North Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units located in SMI’s different branches. Pearl and Dean sent a letter to both
SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments. It also
demanded the discontinued use of the trademark "Poster Ads". Then, Pearl and Dean filed this instant case for infringement of
trademark and copyright.
ISSUE:
Whether Shoemart, Inc. infringed on Pearl and Dean’s copyright over the light boxes
RULING:
NO.
P & D secured its copyright under the classification class "O" work. This being so, petitioner’s copyright protection extended only
to the technical drawings and not to the light box itself because the latter was not at all in the category of "prints, pictorial
illustrations, advertising copies, labels, tags and box wraps." Stated otherwise, even as we find that P & D indeed owned a valid
copyright, the same could have referred only to the technical drawings within the category of "pictorial illustrations." It could not have
possibly stretched out to include the underlying light box. The strict application of the law’s enumeration in Section 2 prevents us
from giving petitioner even a little leeway, that is, even if its copyright certificate was entitled "Advertising Display Units." What the
law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted
under the copyright law. And no less clearly, neither could the lack of statutory authority to make the light box copyrightable be
remedied by the simplistic act of entitling the copyright certificate issued by the National Library as "Advertising Display Units."
In fine, if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from P & D, then no doubt they
would have been guilty of copyright infringement. But this was not the case. SMI’s and NEMI’s acts complained of by P & D were
to have units similar or identical to the light box illustrated in the technical drawings manufactured by Metro and EYD Rainbow
Advertising, for leasing out to different advertisers. Was this an infringement of petitioner’s copyright over the technical drawings?
We do not think so.
During the trial, the president of P & D himself admitted that the light box was neither a literary not an artistic work but an "engineering
or marketing invention." Obviously, there appeared to be some confusion regarding what ought or ought not to be the proper subjects
of copyrights, patents and trademarks. In the leading case of Kho vs. Court of Appeals, we ruled that these three legal rights are
completely distinct and separate from one another, and the protection afforded by one cannot be used interchangeably to cover items
or works that exclusively pertain to the others:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark
is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing
an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations
in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable.

Page 4 of 67
 TOPIC: b. Differences between copyrights, trademarks and patent (Sec. 4)

G.R. No. 115758 March 19, 2002

ELIDAD C. KHO vs CA

FACTS:
The petitioner alleged that she is the registered owner of the copyrights Chin Chun Su and OvalFacial Cream Container/Case as
evidenced by certificates of copyright registrations and patent rights on Chun Chun Su & Device and Chin Chun Su (medicated
cream) after she purchased it from Quintin Cheng (previous registered owner in the Philippine Patent Office [PPO]).
Meanwhile, there was a decline in the petitioner’s business income due to the advertisement and sale made by Summerville on
petitioner’s products under the same brand name and in similarcontainers. According to Summerville, they are the exclusive and
authorized importer, re-packerand distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan and that said
company authorized them to register its trade name “Chin Chun Su Mediated Cream” with the PPO.The application for preliminary
injunction filed by petitioner was granted. Hence, respondents moved for reconsideration, which was denied. The respondents then
moved for nullification of said preliminary injunction with the CA. The latter granted its petition.

ISSUE:
WON the copyright and patent over the name and container of the beauty cream product entitle the registrant to its EXCLUSIVE
use and ownership .

HELD: NO. The petitioner has no right for the EXCLUSIVE use of the trade name and its container.In order to be entitled to its
exclusive use, the user must sufficiently prove that she registered orused it before anybody else did. This, petitioner failed to do.
“
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A
trademark is any visible sign capable of distinguishing thegoods (trademark) or services (service mark) of an enterprise and shall
include a stamped ormarked container of goods. In relation thereto, a trade name means the name or designationidentifying or
distinguishing an enterprise.

Meanwhile, the scope of a copyright is confined toliterary and artistic works which are original intellectual creations in the literary
and artisticdomain protected from the moment of their creation.
Patentable inventions, on the other hand,refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable”.

Page 5 of 67
 FERNANDO U. JUAN v. ROBERTO U. JUAN

Facts:

Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in his laundry business on July 4, 1994.
He then opened his laundry store at No. 119 Alfaro St., Salcedo St., Makati City in 1995. Thereafter, on March 17, 1997, the National
Library issued to him a certificate of copyright over said name and mark. Over the years, the laundry business expanded with numerous
franchise outlets in Metro Manila and other provinces. Respondent Roberto then formed a corporation to handle the said business,
hence, Laundromatic Corporation (Laundromatic) was incorporated in 1997, while "Lavandera Ko" was registered as a business name
on November 13, 1998 with the Department of Trade and Industry (DTI). Thereafter, respondent Roberto discovered that his brother,
petitioner Fernando was able to register the name and mark "Lavandera Ko" with the Intellectual Property Office (IPO) on October
18, 2001, the registration of which was filed on June 5, 1995. Respondent Roberto also alleged that a certain Juliano Nacino (Juliano)
had been writing the franchisees of the former threatening them with criminal and civil cases if they did not stop using the mark and
name "Lavandera Ko." It was found out by respondent Roberto that petitioner Fernando had been selling his own franchises.

Thus, respondent Roberto filed a petition for injunction, unfair competition, infringement of copyright, cancellation of trademark and
name with/and prayer for TRO and Preliminary Injunction with the Regional Trial Court (RTC) and the case was raffled off at Branch
149, Makati City. The RTC issued a writ of preliminary injunction against petitioner Fernando in Order dated June 10, 2004. On July
21, 2008, due to the death of respondent Roberto, the latter was substituted by his son, Christian Juan (Christian). Pre-trial conference
was concluded on July 13, 2010 and after the presentation of evidence of both parties, the RTC rendered a Resolution dated September
23, 2013, dismissing the petition and ruling that neither of the parties had a right to the exclusive use or appropriation of the mark
"Lavandera Ko" because the same was the original mark and work of a certain Santiago S. Suarez (Santiago). According to the RTC,
the mark in question was created by Suarez in 1942 in his musical composition called, "Lavandera Ko" and both parties of the present
case failed to prove that they were the originators of the same mark.

Petitioner appealed to CA but CA dismissed due to technical grounds.

Petitioner files Certiorari under Rule 45 with the SC.

Issue:

WHETHER OR NOT A MARK IS THE SAME AS A COPYRIGHT.

Held:

No. The Ruling of RTC is erroneous.

The law on trademarks, service marks and trade names are found under Part III of Republic Act (R.A.) No. 8293, or the Intellectual
Code of the Philippines, while Part IV of the same law governs copyrights.

"Lavandera Ko," the mark in question in this case is being used as a trade name or specifically, a service name since the business in
which it pertains involves the rendering of laundry services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as any visible
sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods. As such, the basic contention of the parties is, who has the better right to use "Lavandera Ko" as a service name
because Section 165.2[13] of the said law, guarantees the protection of trade names and business names even prior to or without
registration, against any unlawful act committed by third parties. A cause of action arises when the subsequent use of any third party
of such trade name or business name would likely mislead the public as such act is considered unlawful. Hence, the RTC erred in
denying the parties the proper determination as to who has the ultimate right to use the said trade name by ruling that neither of them
has the right or a cause of action since "Lavandera Ko" is protected by a copyright.

By their very definitions, copyright and trade or service name are different. Copyright is the right of literary property as recognized
and sanctioned by positive law.[14] An intangible, incorporeal right granted by statute to the author or originator of certain literary or
artistic productions, whereby he is invested, for a limited period, with the sole and exclusive privilege of multiplying copies of the
same and publishing and selling them.[15] Trade name, on the other hand, is any designation which (a) is adopted and used by person
to denominate goods which he markets, or services which he renders, or business which he conducts, or has come to be so used by
other, and (b) through its association with such goods, services or business, has acquired a special significance as the name thereof,
and (c) the use of which for the purpose stated in (a) is prohibited neither by legislative enactment nor by otherwise defined public
policy.[16]

Page 6 of 67
Section 172.1 of R.A. 8293 enumerates the following original intellectual creations in the literary and artistic domain that are protected
from the moment of their creation, thus:

172.1 Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain
protected from the moment of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of
art;
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other
works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for
making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

As such, "Lavandera Ko," being a musical composition with words is protected under the copyright law (Part IV, R.A. No. 8293) and
not under the trademarks, service marks and trade names law (Part III, R.A. No. 8293).

Considering, therefore, the above premise, this Court deems it proper to remand the case to the RTC for its proper disposition since
this Court cannot, based on the records and some of the issues raised by both parties such as the cancellation of petitioner's certificate
of registration issued by the Intellectual Property Office, make a factual determination as to who has the better right to use the
trade/business/service name, "Lavandera Ko."

Page 7 of 67
 IN-N-OUT BURGER, INC. VS. SEHWANI INC., ET. AL

Facts:

Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of California. It is a signatory to the Convention
of Paris on Protection of Industrial Property and the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has never
engaged in business in the Philippines.

Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the Philippines. Sometime in 1991, Sehwani
filed with the BPTTT an application for the registration of the mark “IN N OUT (the inside of the letter “O” formed like a star). Its
application was approved and a certificate of registration was issued in its name on 1993. In 2000, Sehwani, Incorporated and Benita
Frites, Inc. entered into a Licensing Agreement, wherein the former entitled the latter to use its registered mark, “IN N OUT.”

Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the Bureau of Trademarks for the “IN-N-
OUT” and “IN-N-OUT Burger & Arrow Design. In 2000, In-N-Out Burger found out that Sehwani, Incorporated had already obtained
Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star).” Also in 2000, In-N-Out Burger sent
a demand letter directing Sehwani, Inc. to cease and desist from claiming ownership of the mark “IN-N-OUT” and to voluntarily
cancel its trademark registration. Sehwani Inc. did not accede to In-N-Out Burger’s demand but it expressed its willingness to
surrender its registration for a consideration.

In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint against the Sehwani, Inc. and Benita
Frites, Inc. for unfair competition and cancellation of trademark registration.

Issues:

Whether or not the Intellectual Property Office (an administrative body) have jurisdiction of cases involving provisions of the IPC
(e.g. unfair competition)

Whether or not there was unfair competition.

Held:

FIRST ISSUE: Yes, the IPO (an administrative body) has jurisdiction in cases involving provisions of the IPC (e.g. unfair competition)
due to the following reasons:

Section 10 of the Intellectual Property Code specifically identifies the functions of the Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.“The Bureau of Legal Affairs shall have the following functions:

10.1 Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of
Section 64, cancellation of patents and utility models, and industrial designs; and petitions for compulsory licensing of patents;

10.2 (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights;
Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos
(P200,000): Provided, futher, That availment of the provisional remedies may be granted in accordance with the Rules of Court. Xxx

Xxx

(vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension
of the validity thereof for such period of time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1)
year;

Xxx

(viii) The assessment of damages;

Unquestionably, petitioner’s complaint, which seeks the cancellation of the disputed mark in the name of respondent Sehwani,
Incorporated, and damages for violation of petitioner’s intellectual property rights, falls within the jurisdiction of the IPO Director of
Legal Affairs.

Page 8 of 67
While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section states that the
regular courts have sole jurisdiction over unfair competition cases, to the exclusion of administrative bodies.
Sections 160 and 170, which are also found under Part III of the Intellectual Property Code, recognize the concurrent jurisdiction of
civil courts and the IPO over unfair competition cases.
These two provisions read:

Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. Any foreign national or juridical
person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or
administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false
description, whether or not it is licensed to do business in the Philippines under existing laws.

Section 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 (P50,000) to Two hundred thousand pesos (P200,000),
shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section168, and
Subsection169.1.

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to decide the petitioner’s administrative case
against respondents and the IPO Director General had exclusive jurisdiction over the appeal of the judgment of the IPO Director of
Legal Affairs.

SECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita Frites were not using their registered trademark
but that of In-n-Out Burger. Sehwani and Benita Frites are also giving their products the general appearance that would likely influence
the purchasers to believe that their products are that of In-N-Out Burger. The intention to deceive may be inferred from the similarity
of the goods as packed and offered for sale, and, thus, an action will lie to restrain unfair competition. The respondents’ frauduulent
intention to deceive purchasers is also apparent in their use of the In-N-Out Burger in business signages.

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. The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown.

Page 9 of 67
 E.I. DUPONT DE NEMOURS & CO. v. DIRECTOR EMMA C. FRANCISCO , GR No. 174379, 2016-08-31
Facts:
E.I. Dupont Nemours... is an American corporation
It is the assignee of inventors
1987: E.I. Dupont Nemours filed Philippine Patent Application No. 35526... for Angiotensin II Receptor Blocking Imidazole
(losartan)... treatment of hypertension and congestive heart failure.
The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili), a local resident agent
2000: E.I. Dupont Nemours' new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell,[10] sent the Intellectual
Property Office[11] a letter requesting that an office action be issued on Philippine Patent Application No. 35526.
Patent Examiner
The reconstituted documents provided no documents that will show that the authority to prosecute the instant application is now
transferred to the present counsel.
On May 29, 2002, E.I. Dupont Nemours replied to the office action by submitting a Power of Attorney... it also filed a Petition for
Revival
In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty. Mapili, did not inform it about the abandonment
of the application, and it was not aware that Atty. Mapili had already died.
the Director of Patents denied the Petition for Revival for having been filed out of time.
the Office cannot revive the abandoned application because of the limitations provided in Rule 115. Clearly, the Petition for Revival
was filed beyond the reglementary period.
In the Decision[25] dated October 22, 2003, Director-General Emma C. Francisco denied the appeal and affirmed the Resolution of
the Director of Patents.
petitioner filed before the Court of Appeals a Petition for Review... the Court of Appeals stated:... there is sufficient justification to
relax the application of the above-cited doctrine in this case... to afford petitioner some relief from the gross negligence committed by
its former lawyer, Atty. Nicanor D. Mapili
Therapharma, Inc. moved for leave to intervene and admit the Attached Motion for Reconsideration... directly affects its "vested"
rights to sell its own product.
Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs its own application for a losartan
product "Lifezar," a medication for hypertension, which the Bureau granted.
In this exchange, Merck informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the Philippines and that
it would pursue any legal action necessary to protect its product.
On January 31, 2006, the Court of Appeals issued the Resolution[35] granting the Motion for Leave to Intervene.
On August 30, 2006, the Court of Appeals resolved both Motions for Reconsideration and rendered the Amended Decision[39]
reversing its August 31, 2004 Decision.
Court of Appeals ruled that the public interest would be prejudiced by the revival of E.I. Dupont Nemours' application.
the revival of the application prejudiced Therapharma, Inc.'s interest
Issues:
whether the Court of Appeals erred in allowing the intervention of respondent Therapharma, Inc. in petitioner's appeal;... whether the
Court of Appeals erred in denying petitioner's appeal for the revival of its patent application on the grounds that (a) petitioner
committed inexcusable negligence in the prosecution of its patent application; and (b) third-party rights and the public interest would
be prejudiced by the appeal;... whether Schuartz applies to this case in that the negligence of a patent applicant's counsel binds the
applicant... whether the invention has already become part of public domain.
Ruling:

Page 10 of 67
Under Chapter VII, Section 111(a) of the 1962 Revised Rules of Practice, a patent application is deemed abandoned if the applicant
fails to prosecute the application within four months from the date of the mailing of the notice of the last action by the Bureau of
Patents, Trademarks, and Technology Transfer, and not from applicant's actual notice.
According to the records of the Bureau of Patents, Trademarks, and Technology Transfer Chemical Examining Division, petitioner
filed Philippine Patent Application No. 35526 on July 10, 1987. It was assigned to an examiner on June 7, 1988. An Office Action
was mailed to petitioner's agent, Atty. Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable period, the
application was deemed abandoned on September 20, 1988.[140] Under Section 113, petitioner had until January 20, 1989 to file for
a revival of the patent application. Its Petition for Revival, however, was filed on May 30, 2002,[141] 13 years after the date of
abandonment.
Section 113 has since been superseded by Section 133.4 of the Intellectual Property Code, Rule 930 of the Rules and Regulations on
Inventions, and Rule 929 of the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Design. The
period of four (4) months from the date of abandonment, however, remains unchanged.
The Intellectual Property Code even provides for a shorter period of three (3) months within which to file for revival
The rules do not provide any exception that could extend this four (4)-month period to 13 years.
Petitioner's patent application, therefore, should not be revived since it was filed beyond the allowable period.
Even assuming that the four (4)-month period could be extended, petitioner was inexcusably negligent in the prosecution of its patent
application.
Negligence is inexcusable if its commission could have been avoided through ordinary diligence and prudence.[142] It is also settled
that negligence of counsel binds the client as this "ensures against the resulting uncertainty and tentativeness of proceedings if clients
were allowed to merely disown their counsels' conduct."
Petitioner tries to disown Atty. Mapili's conduct by arguing that it was not informed of the abandonment of its patent application or
of Atty. Mapili's death. By its own evidence, however, petitioner requested a status update from Atty. Mapili only on July 18, 1995,
eight (8) years after the filing of its application.[144] It alleged that it only found out about Atty. Mapili's death sometime in March
1996, as a result of its senior patent attorney's visit to the Philippines.
Even if Atty. Mapili's death prevented petitioner from submitting a petition for revival on time, it was clearly negligent when it
subsequently failed to immediately apprise itself of the status of its patent application.
Contrary to the posturing of petitioner, Schuartz is applicable.
[Petitioners lost sight of the fact that the petition could not be granted because of laches. 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.
Petitioner attempts to distinguish itself from Schuartz by arguing that the petitioners in Schuartz had actual notice of abandonment
while petitioner here was only able to have actual notice when it received Paper No. 2.The four (4)-month period in Section 111[156]
of the 1962 Revised Rules of Practice, however, is not counted from actual notice of abandonment but from mailing of the notice.
The right of priority given to a patent applicant is only relevant when there are two or more conflicting patent applications on the same
invention. Because a right of priority does not automatically grant letters patent to an applicant, possession of a right of priority does
not confer any property rights on the applicant in the absence of an actual patent.
Petitioner argues that its patent application was filed on July 10, 1987, within 12 months from the prior filing of a U.S. patent
application on July 11, 1986.[158] It argues that it is protected from becoming part of the public domain because of convention priority
under the Paris Convention for the Protection of Industrial Property and Section 9 of Republic Act No. 165.
Under Section 31 of the Intellectual Property Code, a right of priority is given to any patent applicant who has previously applied for
a patent in a country that grants the same privilege to Filipinos.
A patent applicant with the right of priority is given preference in the grant of a patent when there are two or more applicants for the
same invention. Section 29 of the Intellectual Property Code provides
Since both the United States[162] and the Philippines[163] are signatories to the Paris Convention for the Protection of Industrial
Property, an applicant who has filed a patent application in the United States may have a right of priority over the same invention in
a patent application in the Philippines.[164] However, this right of priority does not immediately entitle a patent applicant the grant
of a patent. A right of priority is not equivalent to a patent. Otherwise, a patent holder of any member-state of the Paris Convention
need not apply for patents in other countries where it wishes to exercise its patent.

Page 11 of 67
It was, therefore, inaccurate for petitioner to argue that its prior patent application in the United States removed the invention from
the public domain in the Philippines. This argument is only relevant if respondent Therapharma, Inc. had a conflicting patent
application with the Intellectual Property Office. A right of priority has no bearing in a case for revival of an abandoned patent
application.
The grant of a patent is to provide protection to any inventor from any patent infringement.[165] Once an invention is disclosed to the
public, only the patent holder has the exclusive right to manufacture, utilize, and market the invention.
The grant of a patent provides protection to the patent holder from the indiscriminate use of the invention. However, its mandatory
publication also has the correlative effect of bringing new ideas into the public consciousness. After the publication of the patent, any
person may examine the invention and develop it into something further than what the original patent holder may have envisioned.
After the lapse of 20 years,[172] the invention becomes part of the public domain and is free for the public to use.
In addition, a patent holder of inventions relating to food or medicine does not enjoy absolute monopoly over the patent. Both Republic
Act No. 165 and the Intellectual Property Code provide for compulsory licensing. Compulsory licensing is defined in the Intellectual
Property Code as the "grant a license to exploit a patented invention, even without the agreement of the patent owner."
Under Republic Act No. 165, a compulsory license may be granted to any applicant three (3) years after the grant of a patent if the
invention relates to food or medicine necessary for public health or safety.[
The patent holder's proprietary right over the patent only lasts for three (3) years from the grant of the patent, after which any person
may be allowed to manufacture, use, or sell the invention subject to the payment of royalties
Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its Petition for Revival is granted. Even without a
pending patent application and the absence of any exception to extend the period for revival, petitioner was already threatening to
pursue legal action against respondent Therapharma, Inc. if it continued to develop and market its losartan product, Lifezar.[192]
Once petitioner is granted a patent for its losartan products, Cozaar and Hyzaar, the loss of competition in the market for losartan
products may result in higher prices. For the protection of public interest, Philippine Patent Application No. 35526 should be
considered a forfeited patent application.

Page 12 of 67
 SMITH KLINE BECKMAN CORP. v. COURT OF APPEALS
G.R. NO. 126627
August 14, 2003

TOPIC: Patent/Doctrine of Equivalents

FACTS:

Smith Kline Beckman Corp. (US corporation) filed as assignee, before the Philippine Patent Office an application for patent over an
invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate.Letters Patent for the aforesaid invention was issued to petitioner for a term of 17 years, which provides
that the patented invention consisted of a new com ound named methyl 5 propylthio-2benzimidazole carbamate and the methods or
compositions utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals.

Tryco Pharma Corp. is a domestic corporation that manufactures, distributes and sells veterinary products, including Impregon, a
drug that has Albendazole for its active ingredient and is claimed to be effective against gastrointestinal roundworms, lungworms,
tapeworms and fluke infestation in carabaos, cattle and goats.

Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City RTC. It claimed that
its patent covers or includes the substance Albendazole such that private respondent, by manufacturing, selling, using, and causing
to be sold and used the drug Impregon without its authorization, committed infringement and unfair competition under RPC and The
Trademark Law for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented
Albendazole.

Private respondent averred that petitioner’s letter patent does not cover the substance Albendazole for nowhere in it does that word
appear.

ISSUE/S: Whether private respondent committed patent infringement to the prejudice of petitioner.

RULING: NO. From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is
made of the compound Albendazole. All that the claims disclose are: the covered invention, that is, the compound methyl 5
propylthio-2-benzimidazole carbamate; the compounds being anthelmintic but nontoxic for animals or its ability to destroy parasites
without harming the host animals; and the patented methods, compositions or preparations involving the compound to maximize its
efficacy against certain kinds of parasites infecting specified animals.

When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. And
so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied, nor may they
enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed, even if the patentee may have
been entitled to something more than the words it had chosen would include. The mere absence of the word Albendazole in Letters
Patent No. 14561 is not determinative of Albendazoles non-inclusion in the claims of the patent. While Albendazole is admittedly a
chemical compound that exists by a name different from that covered in petitioner’s letters patent, the language of Letter Patent No.
14561 fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole
inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same.

Page 13 of 67
While petitioner concedes that the mere literal wordings of its patent cannot establish private respondent’s infringement, it urges this
Court to apply the doctrine of equivalents. The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result.

A scrutiny of petitioner’s evidence fails to convince this Court of the substantial sameness of petitioners patented compound and
Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to
infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented
compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of
operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show
that all three components of such equivalency test are met. As stated early on, petitioners evidence fails to explain how Albendazole
is in every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate.

Page 14 of 67
 G.R. No. 114508. November 19, 1999.*

PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.

Intellectual Property; Trademarks and Trade Names; Words and Phrases; “Trademark,” Defined and Explained.—A “trademark” is
defined under R.A. 166, the Trademark Law, as including “any word, name, symbol, emblem, sign or device or any combination
thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold
or dealt in by others.” This definition has been simplified in R.A. No. 8293, the Intellectual Property Code of the Philippines, which
defines a “trademark” as “any visible sign capable of distinguishing goods.” In Philippine jurisprudence, the function of a trademark
is to point out distinctly the origin or ownership of the goods to which it is affixed; 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; to assure the public that they are
procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an
inferior and different article as his product.

Same; Same; Three Distinct Functions of Trademarks.—Modern authorities on trademark law view trademarks as performing three
distinct functions: (1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that those
articles come up to a certain standard of quality; and (3) they advertise the articles they symbolize.

Same; Same; Today, the trademark is not merely a symbol of origin and goodwill—it is often the most effective agent for the actual
creation and protection of goodwill.—Today, the trademark is not merely a symbol of origin and goodwill; it is often the most
effective agent for the actual creation and protection of goodwill. It imprints upon the public mind an anonymous and impersonal
guaranty of satisfaction, creating a desire for further satisfaction. In other words, the mark actually sells the goods. The mark has
become the “silent salesman,” the conduit through which direct contact between the trademark owner and the consumer is assured.
It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of
the article to which it refers.

Internet; Words and Phrases; “Internet” and “World Wide Web,” Explained.—The Internet is a decentralized computer network
linked together through routers and communications protocols that enable anyone connected to it to communicate with others
likewise connected, regardless of physical location. Users of the Internet have a wide variety of communication methods available to
them and a tremendous wealth of information that they may access. The growing popularity of the Net has been driven in large part
by the World Wide Web, i.e., a system that facilitates use of the Net by sorting through the great mass of information available on it.
Advertising on the Net and cybershopping are turning the Internet into a commercial marketplace.—Maureen O’Rourke, Fencing
Cyberspace: Drawing Borders in a Virtual World, Minnesota Law Review, vol. 82:609-611, 615-618 [Feb. 1998].

Intellectual Property; Convention of Paris for the Protection of Industrial Property; Trademarks and Trade Names; International
Law; Conflict of Laws; The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention,
is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks,
service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair
competition.—The Convention of Paris for the Protection of Industrial Property, other-

wise known as the Paris Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the
same time aims to repress unfair competition. The Convention is essentially a compact among various countries which, as members
of the Union, have pledged to accord to citizens of the other member countries trademark and other rights comparable to those
accorded their own citizens by their domestic laws for an effective protection against unfair competition. In short, foreign nationals
are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals of
the various member nations are thus assured of a certain minimum of international protection of their industrial property.

Same; Same; Same; Same; Same; Actions; Article 6bis of the Paris Convention governs protection of well-known trademarks.—In
the case at bar, private respondent anchors its cause of action on the first paragraph of Article 6bis of the Paris Convention which
reads as follows: This Article governs protection of well-known trademarks. Under the first paragraph, each country of the Union
bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation
or translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered
by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark of a
person entitled to the benefits of the Convention, and used for identical or similar goods.

Same; Same; Same; Same; Same; Same; Article 6bis of the Paris Convention is a self-executing provision and does not require
legislative enactment to give it effect in the member country.—Article 6bis was first introduced at The Hague in 1925 and amended

Page 15 of 67
in Lisbon in 1952. It 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.

Same; Same; Same; Same; Same; Same; The power to determine whether a trademark is well-known lies in the “competent
authority of the country of registration or use.”—The essential requirement under Article 6bis is that the trademark to be protected
must be “well-known” in the country where protection is sought. The power to determine whether a trademark is well-known lies in
the “competent authority of the country of registration or use.” This competent authority would be either the registering authority if
it has the power to decide this, or the courts of the country in question if the issue comes before a court.

Same; Same; Three Classes of Provisions of the Paris Convention.—The Paris Convention has 3 classes of provisions: (1)
provisions obligating members of the Union to create and maintain certain national law or regulations; (2) provisions merely
referring to the national law of each country and making it applicable or permitting each country to pass such legislation as it may
choose; and (3) provisions establishing common legislation for all members of the Union and obligating them to grant to persons
entitled to the benefits of the Convention the rights and advantages specified in such provisions, notwithstanding anything in their
national law to the contrary—Ladas, supra, at 209; see also Callmann, supra, vol. 2, at 1723-1724. Provisions under the third class
are self-executing and Article 6bis is one of them—Ladas, supra, vol. 1, at 209.

Same; Same; Trademarks and Trade Names; Actions; Judgments; Res Judicata; Pleadings and Practice; 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.—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. 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. Indeed, these are substantial allegations that raised new issues and necessarily gave private respondent
a new cause of action. 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.

Same; Same; Same; Same; Same; Same; Res judicata extends only to facts and conditions as they existed at the time judgment was
rendered and to the legal rights and relations of the parties fixed by the facts so determined.—Respondent corporation also
introduced in the second case a fact that did not exist at the time the first case was filed and terminated. The cancellation of
petitioner’s certificate of registration for failure to file the affidavit of use arose only after IPC No. 686. It did not and could not have
occurred in the first case, and this gave respondent another cause to oppose the second application. Res judicata extends only to
facts and conditions as they existed at the time judgment was rendered and to the legal rights and relations of the parties fixed by the
facts so determined. When new facts or conditions intervene before the second suit, furnishing a new basis for the claims and
defenses of the parties, the issues are no longer the same, and the former judgment cannot be pleaded as a bar to the subsequent
action.

Same; Same; Same; Same; Same; Same; 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, and 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.—It is also noted that the oppositions in the
first and second cases are based on different laws. 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. 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. Res judicata
therefore does not apply to the instant case and respondent Court of Appeals did not err in so ruling.

Same; Same; Same; Same; Intellectual and industrial property rights cases are not simple property cases.—Intellectual and industrial
property rights cases are not simple property cases. Trademarks deal with the psychological function of symbols and the effect of
these symbols on the public at large. Trademarks play a significant role in communication, commerce and trade, and serve valuable

Page 16 of 67
and interrelated business functions, both nationally and internationally. For this reason, all agreements concerning industrial
property, like those on trademarks and trade names, are intimately connected with economic development. Industrial property
encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs. They speed
up transfer of technology and industrialization, and thereby bring about social and economic progress. These advantages have been
acknowledged by the Philippine government itself.

Same; Same; Same; World Trade Organization; International Law; Conflict of Laws; Intellectual Property Code of the Philippines;
The Intellectual Property Code of the Philippines was enacted to strengthen the intellectual and industrial property system in the
Philippines as mandated by the country’s accession to the Agreement Establishing the World Trade Organization (WTO).—The
Intellectual Property Code of the Philippines declares that “an effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of technology, it attracts foreign investments, and ensures market
access for our products.” The Intellectual Property Code took effect on January 1, 1998 and by its express provision, repealed the
Trademark Law, the Patent Law, Articles 188 and 189 of the Revised Penal Code, the Decree on Intellectual Property, and the
Decree on Compulsory Reprinting of Foreign Textbooks. The Code was enacted to strengthen the intellectual and industrial
property system in the

Philippines as mandated by the country’s accession to the Agreement Establishing the World Trade Organization (WTO).

Same; Same; Same; Same; Same; Same; Agreement on TradeRelated Aspects of Intellectual Property Rights (TRIPs); The WTO is
a common institutional framework for the conduct of trade relations among its members in matters related to the multilateral and
plurilateral trade agreements annexed to the WTO Agreement.—The WTO is a common institutional framework for the conduct of
trade relations among its members in matters related to the multilateral and plurilateral trade agreements annexed to the WTO
Agreement. The WTO framework ensures a “single undertaking approach” to the administration and operation of all agreements and
arrangements attached to the WTO Agreement. Among those annexed is the Agreement on Trade-Related Aspects of Intellectual
Property Rights or TRIPs. Members to this Agreement “desire to reduce distortions and impediments to international trade, taking
into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and
procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.” To fulfill these objectives,
the members have agreed to adhere to minimum standards of protection set by several Conventions. These Conventions are: the
Berne Convention for the Protection of Literary and Artistic Works (1971), the Rome Convention or the International Convention
for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, the Treaty on Intellectual Property in
Respect of Integrated Circuits, and the Paris Convention (1967), as revised in Stockholm on July 14, 1967.

Same; Same; Same; Same; Same; Same; Same; Background of World Trade Organization.—The WTO was created at the Uruguay
Round of multilateral trade negotiations sponsored by the General Agreement on Tariffs and Trade (GATT) in 1994. The GATT
was established in 1947 to promote a multilateral trading system among countries through non-discriminatory trade liberalization,
and through fair and effective rules and disciplines. The GATT was composed of 120 contracting parties and observers that account
for about 90% of the world trade. It, however, dealt with trade in tangible goods alone. As successor of the GATT, the WTO also
covers trade in services, intellectual property rights and provides for an effective mechanism for dispute settlement—Growth
Opportunities

Into the 21st Century, A Question and Answer Primer Prepared by the Bureau of International Trade Relations, Department of
Trade and Industry, pp. 1, 37 [1994], hereinafter referred to as DTI-BITR Primer; see News of the Uruguay Round of Multilateral
Trade Negotiations, issued by the Information and Media Relations division of the GATT, Geneva, p. 5 [5 April 1994]; see also
Tañada v. Angara, 272 SCRA 18 [1997].

Same; Same; Same; Same; Same; Same; Same; TRIPs Agreement, Explained.—The TRIPs Agreement is said to be the most
comprehensive multilateral agreement on intellectual property. It addresses not only and more explicitly the primary regimes of
intellectual property, viz., patent including the protection of new varieties of plants, trademarks including service marks, and
copyright and its related rights; but also the non-traditional categories of geographical indications including appellations of origin,
industrial design, layout design of integrated circuits, and undisclosed information including trade secrets. It also establishes
standards of protection and rules of enforcement and provides for the uniform applicability of the WTO dispute settlement
mechanism to resolve disputes among member states.—Anita S. Regalado, WTO Dispute Settlement Procedure: Its Impact on
Copyright Protection, The Court Systems Journal, vol. 3:67, 78 [March 1998].

Same; Same; Same; Same; Same; Same; Same; Same; The TRIPs Agreement seeks to grant adequate protection of intellectual
property rights by creating a favorable economic environment to encourage the inflow of foreign investments, and strengthening the
multilateral trading system to bring about economic, cultural and technological independence.—A major proportion of international
trade depends on the protection of intellectual property rights. Since the late 1970’s, the unauthorized counterfeiting of industrial
property and trademarked products has had a considerable adverse impact on domestic and international trade revenues. The TRIPs
Page 17 of 67
Agreement seeks to grant adequate protection of intellectual property rights by creating a favorable economic environment to
encourage the inflow of foreign investments, and strengthening the multilateral trading system to bring about economic, cultural and
technological independence.

Same; Same; Same; Same; Same; Same; Same; Protectionism and isolationism belong to the past—the State must reaffirm its
commitment to the global community and take part in evolving a new international economic order at the dawn of the new
millennium.—The Philippines and the United States of America have acceded to the WTO Agreement. This Agreement has
revolutionized international business and economic relations among states, and has propelled the world towards trade liberalization
and economic globalization. Protectionism and isolationism belong to the past. Trade is no longer confined to a bilateral system.
There is now “a new era of global economic cooperation, reflecting the widespread desire to operate in a fairer and more open
multilateral trading system.” Conformably, the State must reaffirm its commitment to the global community and take part in
evolving a new international economic order at the dawn of the new millennium. Mirpuri vs. Court of Appeals, 318 SCRA 516,
G.R. No. 114508 November 19, 1999

FACTS:

On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed an application with the
Bureau of Patents for the registration of the trademark "Barbizon" for use in brassieres and ladies undergarments. Escobar alleged
that she had been manufacturing and selling these products under the firm name "L & BM Commercial" since March 3, 1970.

Private respondent Barbizon Corporation, a corporation organized and doing business under the laws of New York, U.S.A., opposed
the application. It claimed that the mark BARBIZON of respondent-applicant is confusingly similar to the trademark BARBIZON
which opposer owns and has not abandoned. That opposer will be damaged by the registration of the mark BARBIZON and its
business reputation and goodwill will suffer great and irreparable injury. That the respondent-applicant's use of the said mark
BARBIZON which resembles the trademark used and owned by opposer, constitutes an unlawful appropriation of a mark previously
used in the Philippines and not abandoned and therefore a statutory violation of Section 4 (d) of Republic Act No. 166, as amended.

Lolita Escobar was issued a certificate of registration for the trademark "Barbizon." The trademark was "for use in "brassieres and
lady's underwear garments like panties."

Escobar later assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri.

In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of Use of the trademark required under Section 12
of Republic Act (R.A.) No. 166, the Philippine Trademark Law. Due to this failure, the Bureau of Patents cancelled Escobar's
certificate of registration.

On May 27, 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his own application for registration of
Escobar's trademark. The application was opposed by private responden allegeding that:

(a) The Opposer has adopted the trademark BARBIZON (word), sometime in June 1933 and has then used it on various kinds of
wearing apparel. That they obtained from the United States Patent Office a more recent registration for the said trademark .

On March 2, 1982, Escobar assigned to petitioner the use of the business name "Barbizon International." Petitioner registered the
name with the Department of Trade and Industry (DTI) for which a certificate of registration was issued in 1987.

Forthwith, private respondent filed before the Office of Legal Affairs of the DTI a petition for cancellation of petitioner's business
name.

ISSUE: 1. Whether case is barred by res judicata.

2. whether or not the treaty affords protection to a foreign corporation against a Philippine applicant for the registration of a similar
trademark.

RULING:

1.NO.

Page 18 of 67
Literally, res judicata means a matter adjudged, a thing judicially acted upon or decided; a thing or matter settled by judgment. 34 In
res judicata, the judgment in the first action is considered conclusive as to every matter offered and received therein, as to any other
admissible matter which might have been offered for that purpose, and all other matters that could have been adjudged therein. 35
Res judicata is an absolute bar to a subsequent action for the same cause; and its requisites are: (a) the former judgment or order
must be final; (b) the judgment or order must be one on the merits; (c) it must have been rendered by a court having jurisdiction over
the subject matter and parties; (d) there must be between the first and second actions, identity of parties, of subject matter and of
causes of action

Undisputedly, IPC No. 686 and IPC No. 2049 involve the same parties and the same subject matter. Petitioner herein is the assignee
of Escobar while private respondent is the same American corporation in the first case. The subject matter of both cases is the
trademark "Barbizon." Private respondent counter-argues, however, that the two cases do not have identical causes of action. New
causes of action were allegedly introduced in IPC No. 2049, such as the prior use and registration of the trademark in the United
States and other countries worldwide, prior use in the Philippines, and the fraudulent registration of the mark in violation of Article
189 of the Revised Penal Code. Private respondent also cited protection of the trademark under the Convention of Paris for the
Protection of Industrial Property, specifically Article 6bis thereof, and the implementation of Article 6bis by two Memoranda dated
November 20, 1980 and October 25, 1983 of the Minister of Trade and Industry to the Director of Patents, as well as Executive
Order (E.O.) No. 913.

It is also noted that the oppositions in the first and second cases are based on different laws. The opposition in IPC No. 686 was
based on specific provisions of the Trademark Law, i.e., Section 4 (d) 70 on confusing similarity of trademarks and Section 8 71 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. 72
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. 73 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. 74 Res judicata therefore does not apply to the instant case and respondent Court of
Appeals did not err in so ruling.

2. Yes

The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, is a multilateral treaty
that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. 41 The
Convention is essentially a compact among various countries which, as members of the Union, have pledged to accord to citizens of
the other member countries trademark and other rights comparable to those accorded their own citizens by their domestic laws for
an effective protection against unfair competition. 42 In short, foreign nationals are to be given the same treatment in each of the
member countries as that country makes available to its own citizens. 43 Nationals of the various member nations are thus assured of
a certain minimum of international protection of their industrial property.

Intellectual and industrial property rights cases are not simple property cases. Trademarks deal with the psychological function of
symbols and the effect of these symbols on the public at large. 75 Trademarks play a significant role in communication, commerce
and trade, and serve valuable and interrelated business functions, both nationally and internationally. For this reason, all agreements
concerning industrial property, like those on trademarks and tradenames, are intimately connected with economic development. 76
Industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human
needs. They speed up transfer of technology and industrialization, and thereby bring about social and economic progress. 77 These
advantages have been acknowledged by the Philippine government itself. The Intellectual Property Code of the Philippines declares
that "an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates
transfer of technology, it attracts foreign investments, and ensures market access for our products." 78 The Intellectual Property Code
took effect on January 1, 1998 and by its express provision, 79 repealed the Trademark Law, 80 the Patent Law, 81 Articles 188 and
189 of the Revised Penal Code, the Decree on Intellectual Property, 82 and the Decree on Compulsory Reprinting of Foreign
Textbooks. 83 The Code was enacted to strengthen the intellectual and industrial property system in the Philippines as mandated by
the country's accession to the Agreement Establishing the World Trade Organization (WTO). 84

The WTO is a common institutional framework for the conduct of trade relations among its members in matters related to the
multilateral and plurilateral trade agreements annexed to the WTO Agreement. 85 The WTO framework ensures a "single
undertaking approach" to the administration and operation of all agreements and arrangements attached to the WTO Agreement.
Page 19 of 67
Among those annexed is the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs. 86 Members to this
Agreement "desire to reduce distortions and impediments to international trade, taking into account the need to promote effective
and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property
rights do not themselves become barriers to legitimate trade." To fulfill these objectives, the members have agreed to adhere to
minimum standards of protection set by several Conventions. 87 These Conventions are: the Berne Convention for the Protection of
Literary and Artistic Works (1971), the Rome Convention or the International Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organisations, the Treaty on Intellectual Property in Respect of Integrated Circuits, and
the Paris Convention (1967), as revised in Stockholm on July 14, 1967. 88

A major proportion of international trade depends on the protection of intellectual property rights. 89 Since the late 1970's, the
unauthorized counterfeiting of industrial property and trademarked products has had a considerable adverse impact on domestic and
international trade revenues. 90 The TRIPs Agreement seeks to grant adequate protection of intellectual property rights by creating a
favorable economic environment to encourage the inflow of foreign investments, and strengthening the multi-lateral trading system
to bring about economic, cultural and technological independence. 91

The Philippines and the United States of America have acceded to the WTO Agreement. This Agreement has revolutionized
international business and economic relations among states, and has propelled the world towards trade liberalization and economic
globalization. 92 Protectionism and isolationism belong to the past. Trade is no longer confined to a bilateral system. There is now "a
new era of global economic cooperation, reflecting the widespread desire to operate in a fairer and more open multilateral trading
system." 93 Conformably, the State must reaffirm its commitment to the global community and take part in evolving a new
international economic order at the dawn of the new millenium.

Page 20 of 67
 Berris Agricultural Co., Inc. vs Norvy Adyadang

GR No. 183404 October 13, 2010

FACTS:

Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide. Berris
Agricultural Co., Inc. filed an opposition against the trademark citing that it is confusingly similar with their trademark, "D-10 80
WP" which is also used for Fungicide also with the same active ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang.

ISSUE: Whether there is confusing similarity between the trademarks.

RULING:

Yes. The SC found that both products have the component D-10 as their ingredient and that it is the dominant feature in both their
marks. Applying the Dominancy Test, Abyadang's product is similar to Berris' and that confusion may likely to occur especially that
both in the same type of goods. Also using the Holistic Test, it was more obvious that there is likelihood of confusion in their packaging
and color schemes of the marks. The SC states that buyers would think that Abyadang's product is an upgrade of Berris'.

Page 21 of 67
 BIRKENSTOCK ORTHOPAEDIE GMBH v. PHILIPPINE SHOE EXPO MARKETING CORPORATION, GR No.
194307, 2013-11-20
Facts:
Petitioner, a corporation duly organized and existing under the laws of Germany, applied for various trademark registrations before
the IPO, namely: (a) "BIRKENSTOCK" under Trademark Application Serial No. (TASN) 4-1994-091508 for goods falling under
Class 25 of the
International Classification of Goods and Services (Nice Classification) with filing date of March 11, 1994; (b) "BIRKENSTOCK
BAD HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM" under TASN 4-1994-091509 for goods... falling under Class 25 of the Nice Classification with filing date
of March 11, 1994; and (c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL
AND REPRESENTATION OF A FOOT, CROSS AND SUNBEAM" under TASN 4-1994-095043 for goods falling under
Class 10 of the Nice Classification with filing date of September 5, 1994 (subject applications).[5]
However, registration proceedings of the subject applications were suspended in view of an existing registration of the mark
"BIRKENSTOCK AND DEVICE" under Registration No. 56334 dated October 21, 1993 (Registration No. 56334) in the name of
Shoe Town International and
Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing Corporation.[6] In this regard, on
May 27, 1997 petitioner filed a petition for cancellation of Registration No. 56334 on the ground that it is the lawful and... rightful
owner of the Birkenstock marks (Cancellation Case).[7] During its pendency, however, respondent and/or its predecessor-in-interest
failed to file the required 10th Year Declaration of Actual Use (10th
Year DAU) for Registration No. 56334 on or before October 21, 2004,[8] thereby resulting in the cancellation of such mark.[9]
Accordingly, the cancellation case was dismissed for being moot and academic.[10]
The aforesaid cancellation of Registration No. 56334 paved the way for the publication of the subject applications in the IPO e-Gazette
on February 2, 2007.[11] In response, respondent filed three (3) separate verified notices of oppositions to the subject... applications
docketed as Inter Partes Case Nos. 14-2007-00108, 14-2007-00115, and 14-2007-00116,[12] claiming, inter alia, that: (a) it, together
with its predecessor-in-interest, has been using Birkenstock marks in the Philippines for... more than 16 years through the mark
"BIRKENSTOCK AND DEVICE"; (b) the marks covered by the subject applications are identical to the one covered by Registration
No. 56334 and thus, petitioner has no right to the registration of such marks; (c) on November 15, 1991,... respondent's predecessor-
in-interest likewise obtained a Certificate of Copyright Registration No. 0-11193 for the word "BIRKENSTOCK"; (d) while
respondent and its predecessor-in-interest failed to file the 10th Year DAU, it continued the use of
"BIRKENSTOCK AND DEVICE" in lawful commerce; and (e) to record its continued ownership and exclusive right to use the
"BIRKENSTOCK" marks, it has filed TASN 4-2006-010273 as a "re-application" of its old registration, Registration No. 56334.[13]
On November
13, 2007, the Bureau of Legal Affairs (BLA) of the IPO issued Order No. 2007-2051 consolidating the aforesaid inter partes cases
(Consolidated Opposition Cases).
In its Decision15 dated May 28, 2008, the BLA of the IPO sustained respondent's opposition, thus, ordering the rejection of the subject
applications. It ruled that the competing marks of the parties are confusingly similar since they contained the word "BIRKENSTOCK"
and are used... on the same and related goods. It found respondent and its predecessor-in- interest as the prior user and adopter of
"BIRKENSTOCK" in the Philippines, while on the other hand, petitioner failed to present evidence of actual use in the trade and
business in this country.
the IPO Director General reversed and set aside the ruling of the BLA, thus allowing the registration of the subject applications. He
held that with the cancellation of Registration No. 56334 for respondent's... failure to file the 10th Year DAU, there is no more reason
to reject the subject applications on the ground of prior registration by another proprietor.
In its Decision[21] dated June 25, 2010, the CA reversed and set aside the ruling of the IPO Director General and reinstated that of
the BLA. It disallowed the registration of the subject applications on the ground that the marks covered by such... applications "are
confusingly similar, if not outright identical" with respondent's mark.[22] It equally held that respondent's failure to file the 10th Year
DAU for Registration No. 56334 "did not deprive petitioner of its ownership... of the 'BIRKENSTOCK' mark since it has submitted
substantial evidence showing its continued use, promotion and advertisement thereof up to the present."
Issues:
whether or not the subject marks should be allowed registration in the name of petitioner

Page 22 of 67
Ruling:
A. Admissibility of Petitioner's
Documentary Evidence.
In the case at bar, while petitioner submitted mere photocopies as documentary evidence in the Consolidated Opposition Cases, it
should be noted that the IPO had already obtained the originals of such documentary evidence in the related Cancellation Case earlier
filed before it.
Under this circumstance and the merits of the instant case as will be subsequently discussed, the Court holds that the IPO Director
General's relaxation of procedure was a valid exercise of his discretion in the interest of substantial justice.
B. Registration and ownership of
"BIRKENSTOCK."
Republic Act No. (RA) 166,[34] the governing law for Registration No. 56334, requires the filing of a DAU on specified periods,[35]
to wit:
Section 12. Duration. Each certificate of registration shall remain in force for twenty years: Provided, That registrations under the
provisions of this Act shall be cancelled by the Director, unless within one year following the fifth, tenth and... fifteenth anniversaries
of the date of issue of the certificate of registration, the registrant shall file in the Patent Office an affidavit showing that the mark or
trade-name is still in use or showing that its non-use is due to special circumstance which excuse such... non-use and is not due to any
intention to abandon the same, and pay the required fee.
The Director shall notify the registrant who files the above- prescribed affidavits of his acceptance or refusal thereof and, if a refusal,
the reasons therefor. (Emphasis and underscoring supplied)
The aforementioned provision clearly reveals that failure to file the DAU within the requisite period results in the automatic
cancellation of registration of a trademark. In turn, such failure is tantamount to the abandonment or withdrawal of any right or interest
the... registrant has over his trademark.
In this case, respondent admitted that it failed to file the 10th Year DAU for Registration No. 56334 within the requisite period, or on
or before October 21, 2004. As a consequence, it was deemed to have abandoned or withdrawn any right or interest over... the mark
"BIRKENSTOCK." Neither can it invoke Section 236[37] of the IP Code which pertains to intellectual property rights obtained under
previous intellectual property laws, e.g., RA 166, precisely because it already lost any right or interest over... the said mark.
Besides, petitioner has duly established its true and lawful ownership of the mark "BIRKENSTOCK."
Under Section 2[38] of RA 166, which is also the law governing the subject applications, in order to register a trademark, one must
be the owner thereof and must have actually used the mark in commerce in the Philippines for two (2) months prior to the... application
for registration. Section 2-A[39] of the same law sets out to define how one goes about acquiring ownership thereof. Under the same
section, it is clear that actual use in commerce is also the test of ownership but the provision went further by... saying that the mark
must not have been so appropriated by another. Significantly, to be an owner, Section 2-A does not require that the actual use of a
trademark must be within the Philippines. Thus, under RA 166, one may be an owner of a mark due to its actual use but may not... yet
have the right to register such ownership here due to the owner's failure to use the same in the Philippines for two (2) months prior to
registration.[40]
It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the owner
of the trademark, he has no right to apply for its registration. 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. Such presumption, just
like the presumptive regularity in the performance of official functions, is rebuttable and must give way to evidence to the...
contrary.[41]
Clearly, it is not the application or registration of a trademark that vests ownership thereof, but it is the ownership of a trademark that
confers the right to register the same. A trademark is an industrial property over which its owner is entitled to property rights which...
cannot be appropriated by unscrupulous entities that, in one way or another, happen to register such trademark ahead of its true and
lawful owner. The presumption of ownership accorded to a registrant must then necessarily yield to superior evidence of actual and
real ownership... of a trademark.
In the instant case, petitioner was able to establish that it is the owner of the mark "BIRKENSTOCK." It submitted evidence relating
to the origin and history of "BIRKENSTOCK" and its use in commerce long before respondent was able to register the same here in
the Philippines.

Page 23 of 67
It has sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann Birkenstock, a
shoemaker, on his line of quality footwear and thereafter, numerous generations of his kin continuously engaged in the manufacture
and sale of shoes and... sandals bearing the mark "BIRKENSTOCK" until it became the entity now known as the petitioner. Petitioner
also submitted various certificates of registration of the mark "BIRKENSTOCK" in various countries and that it has used such mark
in different countries worldwide, including... the Philippines.[44]
On the other hand, aside from Registration No. 56334 which had been cancelled, respondent only presented copies of sales invoices
and advertisements, which are not conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as these merely show
the transactions made... by respondent involving the same.[45]
In view of the foregoing circumstances, the Court finds the petitioner to be the true and lawful owner of the mark "BIRKENSTOCK"
and entitled to its registration, and that respondent was in bad faith in having it registered in its name.

Page 24 of 67
 Acquisition of ownership of Trade Name
Coffee Partners v. San Francisco Coffee and Roastery Inc. Gr. No 160504, March 3, 2010
Facts:
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee
shops in the country. It has a franchise agreement6cЃa with Coffee Partners Ltd. (CPL), a business entity organized and
existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using
trademarks designed by CPL such as "SAN FRANCISCO COFFEE." Respondent is a local corporation engaged in the
wholesale and retail sale of coffee. It registered with the SEC in May 1995. It registered the business name "SAN
FRANCISCO COFFEE & ROASTERY, INC." with the Department of Trade and Industry (DTI) in June 1995. Respondent
formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc.
(BCCPI), which is engaged in the processing, roasting, and wholesale selling of coffee.
In 2001, respondent discovered that petitioner was about to open a coffee shop under the name "SAN FRANCISCO
COFFEE" in Libis, Quezon City. According to respondent, petitioners shop caused confusion in the minds of the public as
it bore a similar name and it also engaged in the business of selling coffee. Respondent also filed a complaint with the Bureau
of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition. Petitioner denied the
allegations in the complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO) applications for registration
of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000.
BLA-IPO rendered a decision favourable to the respondents and found herein petitioners guilty of trademark
ingfringement. ODG-IPO; however reversed the decision of the Bureau which lead respondents to appeal. CA again reversed
the decision of the Office of the Director General and affirmed the BLA-IPO’s finding, hence this petition.

Issue:
Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents
trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with the Intellectual
Property Office (IPO).

Held:
In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes
infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name,
the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
(3) 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;
(4) 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
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

Clearly, 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. Section 22 of Republic Act No. 166,12cЃa as amended, required registration of a trade name as a condition for
the institution of an infringement suit. However, RA 8293, Section 165.2 of RA 8293 categorically states that trade names
shall be protected, even prior to or without registration with the IPO, against any unlawful act x x x. Also, applying the
dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of
respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name.

Page 25 of 67
 GR No. 175278 September 23, 2015
GSIS FAMILY BANK -THRIFT BANK [Formerly Inc.], Comsavings Bank v BPI FAMILY BANK

Commercial Law; Corporation Law; Coporate Name. Section 18. Corporate name. – No corporate name may be allowed
by the Securities and Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any
existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws.
When a change in the corporate name is approved, the Commission shall issue an amended certificate of incorporation under the
amended name.
Same; same; same.To fall within the prohibition of the law on the right to the exclusive use of a corporate name, two requisites must
be proven, namely:(1)that the complainant corporation acquired a prior right over the use of such corporate name; and (2) the
proposed name is either (a)identical or (b) deceptive or confusingly similar to that of any existing corporation or to any other name
already protected by law; or (c) patently deceptive, confusing or contrary to existing law.

Same; same; SEC jurisdiction. Findings of fact of quasi-judicial agencies, like the SEC, are generally accorded respect and even
finality by this Court, if supported by substantial evidence, in recognition of their expertise on the specific matters under their
consideration, more so if the same has been upheld by the appellate court, as in this case.

FACTS: The petitioner was first organized under the name Royal Savings Bank and started its operations in 1971. However, due to
liquidity problems, it was placed under receivership on where GSIS acquired ownership over it. To improve its marketability, it
applied to the SEC an application to change its corporate name to “GSIS Family Bank, a Thrift Bank.” same as with BSP and DTI.
The two latter entities approved the application and petitioner started its operation with its new name as per DTI Certificate of
Registration and Monetary Board Circular Approval. On the other hand, the respondent started using its name BPI Family Savings
Bank in the year 1985 upon merger of BPI and Family Bank and Trust Company. Since its incorporation, the bank has been commonly
known as “Family Bank.” BPI Family Savings Bank then registered with the Bureau of Domestic Trade the trade or business name
“BPI Family Bank,” and acquired a reputation and goodwill under the name. Upon being informed that the petitioner applied for the
use of “Family Bank” as its corporate name, the respondent filed a petition before the SEC to disallow or prevent the registration of
the name “GSIS Family Bank” or any other corporate name with the words “Family Bank” in it. The respondent claimed exclusive
ownership with the said name and it will create and is already creating confusion on the part of the public between the two banking
institutions. The SEC CRMD ruled in favor of the respondent holding that it acquired prior right over the corporate name arising from
its long and nationwide use of the said name. Upon appeal, the CA affirmed the decision of the SEC. It further ruled that the approvals
by the BSP and by the DTI of petitioner’s application to use the name “GSIS Family Bank” do not constitute authority for its lawful
and valid use. It held that the SEC has absolute jurisdiction, supervision and control over all corporations. Hence, this appeal by
petitioner.

ISSUE: Whether or not the petitioner is entitled to the change and use of its corporate name “GSIS Family Bank, a Thrift Bank.”

HELD: NEGATIVE. The Corporation Code provides the rule on corporate name and the two main requisites for the exclusive use of
corporate name are present in this case in favor of the respondent bank. The said bank has successfully established prior right over the
name. “Family Bank”. Upon its incorporation in 1969, it is already named as Family Savings Bank and later on changed to BPI Family
Savings Bank I 1985 whereas the petitioner was incorporated as GSIS Family Bank- A Thrift Bank 17 years after, or only in 2002.
The Court, applying the priority rule, ruled that respondent has the prior right over the use of the corporate name. The second requisite
likewise obtains on two points: the proposed name is (a) identical or (b) deceptive or confusingly similar to that of any existing
corporation or to any other name already protected by law. Section 3 of the Revised Guidelines in the Approval of Corporate or
Partnership Name states that if there be identical, misleading or confusingly similar name to onealready registered by another
corporation or partnership with the SEC, the proposed name mustcontain at least one distinctive word different from the name of the
company already registered.
In this case, the mere adding of the words “GSIS” and “Thrift” does not satisfy the requirements provided. GSIS is merely an acronym
of the proper name for which the petitioner is identified and the word thrift merely indicates a classification or kind of bank the
petitioner is. Such adding of the word would not create much distinction simply because both entities are involved in the banking
business. The second point likewise exists. In determining the existence of confusing similarity in corporate names, the test is whether
the similarity is such as to mislead a person using ordinary care and discrimination. And even without such proof of
actual confusion between the two corporate names, it suffices that confusion is probable or likely to occur. Respondent has proved
confusion not just on their employees but even on the public of the change of name of the petitioner and its connection with the
respondent bank. Furthermore, in contrast to the allegation of the petitioner, “Family,” as used in respondent's corporate name, is
not generic. It cannot be separated from the word “bank”. SEC decisions are given much accord by this Court especially if it is affirmed
by the CA, as in this case. The SEC is the government entity fully accorded with absolute jurisdiction as to the administration or
management of corporations in the country. It has the duty to prevent any confusion on the corporate name not just for the sake of this
entities but more so for the protection of the public. There is a correct application of Section 18 of the Corporation Code by
the SEC. the DTI AND BSP decisions granting petitioner’s application must bow down to SEC’s decision. Hence, the SC denied the
petition.

Page 26 of 67
 Fredco Manufacturing Corp. v. President and Fellow of Harvard College G.R. no 185917, June 1, 2011
Facts:
Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs of the Philippine Intellectual
Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College
for the mark “Harvard Veritas Shield Symbol”.
Fredco claimed that Harvard University had no right to register the mark, since its Philippine registration was
based on a foreign registration. Hence,Harvard University could not have been considered as a prior user of the mark in
the Philippines.
Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest New York
Garments as early as 1982, and a certificate of registration was then issued in 1988 for goods under class 25. Although
the registration was cancelled for the non-filing of an affidavit of use, the fact remained that the registration preceded
Harvard University’s use of the subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name of
Harvard College of Cambridge, Massachusetts, USA.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561.
It found Fredco to be the prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the
Director General of the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of the
trademark in the Philippines, the applicant must be the owner of the mark sought to be registered. Fredco, not being the
owner of the mark, had no right to register it.
The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision
with the Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the
issue of who had a better right to the mark.

The SC held that:

Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be registered, it must
have been actually used in commerce for not less than two months in the Philippines prior to the filing of an application
for its registration. While Harvard University had actual prior use of its marks abroad for a long time, it did not have
actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its application for registration of
the mark "Harvard" with the then Philippine Patents Office. However, Harvard University's registration of the name
"Harvard" is based on home registration which is allowed under Section 37 of R.A. No. 166. As pointed out by Harvard
University in its Comment:

Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof must
prove that the same has been actually in use in commerce or services for not less than two (2) months in the Philippines
before the application for registration is filed, where the trademark sought to be registered has already been registered
in a foreign country that is a member of the Paris Convention, the requirement of proof of use in the commerce in the
Philippines for the said period is not necessary. An applicant for registration based on home certificate of registration
need not even have used the mark or trade name in this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered under Republic Act
No. 166 shall remain in force but shall be deemed to have been granted under this Act x x x," which does not require
actual prior use of the mark in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
under R.A. No. 8293, any alleged defect arising from the absence of actual prior use in the Philippines has been cured
by Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name
“Harvard” even without registration of such trade name in the Philippines. It explained:

“There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark not only in the
United States but also internationally, including the Philippines.

Page 27 of 67
 ANA ANG v. TORIBIO TEODORO
G.R. No. L-48226
December 14, 1942

TOPIC: Trademark/Non-registrable Marks

FACTS:

Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the manufacture and sale of its slippers,
shoes and indoor baseballs when he formally registered it. Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’
for its products of pants and shirts. Respondent moved to cancel the registration of petitioner’s mark. The trial court found for
petitioner Ang. CA reversed the judgment. Petitioner argues the validity of the mark being descriptive; that it had not acquired
secondary meaning in favor of respondent; and that there can be no infringement/unfair competition because the goods are not
similar.

ISSUE/S:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.

RULING:

(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. For instance, one who tries
hard but fails to break an object exclaims, “Ang tibay!” (How strong!”) The phrase “ang tibay” is never used adjectively to define or
describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” is never used adjectively to define or describe an
object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” to mean “durable shoes,” but “matibay na sapatos” or “sapatos
na matibay.” 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 trademark or tradename. 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 trademark.

(2) NO. In view of the conclusion we have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of
“secondary meaning” in trade-mark parlance. 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. We have said that the phrase “Ang Tibay,”
being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But were it not so, the
application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because, in
any event, by respondent’s long and exclusive use of said phrase with reference to his products and his business, it has acquired a
proprietary connotation.

Page 28 of 67
 G.R. No. 143993 August 18, 2004

MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC., petitioners,

vs.
L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO,
ARACELI AYCARDO, and GRACE HUERTO, respondents.

The Facts

Petitioner McDonald's Corporation ("McDonald's") is a corporation organized under the laws of Delaware, United States.
McDonald's operates, by itself or through its franchisees, a global chain of fast-food restaurants. McDonald's4 owns a family of
marks5 including the "Big Mac" mark for its "double-decker hamburger sandwich."6McDonald's registered this trademark with the
United States Trademark Registry on 1979. Based on this Home Registration, McDonald's applied for the registration of the same
mark in the Principal Register of the then Philippine Bureau of Patents, Trademarks and Technology ("PBPTT"), now the
Intellectual Property Office ("IPO"). Pending approval of its application, McDonald's introduced its "Big Mac" hamburger
sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed registration of the "Big Mac" mark in
the Principal Register based on its Home Registration in the United States.

Petitioner McGeorge Food Industries ("petitioner McGeorge"), a domestic corporation, is McDonald's Philippine franchisee. 11

Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a domestic corporation which operates fast-food outlets and
snack vans in Metro Manila and nearby provinces. 12 Respondent corporation's menu includes hamburger sandwiches and other food
items.

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big Mak" mark for its hamburger
sandwiches. McDonald's opposed respondent corporation's application on the ground that "Big Mak" was a colorable imitation of its
registered "Big Mac" mark for the same food products. McDonald's also informed respondent Francis Dy of its exclusive right to the
"Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark.

ISSUE:

1. Whether the use of the Big Mak Mark results on likelihood or confusion

2. Whether respondent corporation is liable for trademark infringement and unfair competition.

Ruling:

1..YES

In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. 57 The
dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion. In
contrast, 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.

This Court has relied on the dominancy test rather than the holistic test. The 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.59 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.

The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the "colorable imitation of a registered mark xxx or a dominant feature thereof."

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in likelihood of confusion. First,
"Big Mak" sounds exactly the same as "Big Mac." Second, the first word in "Big Mak" is exactly the same as the first word in "Big
Mac." Third, the first two letters in "Mak" are the same as the first two letters in "Mac." Fourth, the last letter in "Mak" while a "k"

Page 29 of 67
sounds the same as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus
"Caloocan" is spelled "Kalookan."

In short, aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word
of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word
of both marks having the same letters and the second word having the same first two letters. In spelling, considering the Filipino
language, even the last letters of both marks are the same.

Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of "Big Mac." Applied to
the same food product of hamburgers, the two marks will likely result in confusion in the public mind.

Certainly, "Big Mac" and "Big Mak" for hamburgers create even greater confusion, not only aurally but also visually.

2. YES

Section 22 ("Section 22) of Republic Act No. 166, as amended ("RA 166"), the law applicable to this case, 32 defines trademark
infringement as follows:

Infringement, what constitutes. — Any person who [1] shall use, without the consent of the registrant, anyreproduction,
counterfeit, copy or colorable imitation of any registered mark or trade-name in connection withthe sale, offering for sale,
or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business;
or [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended
to be used upon or in connection with such goods, business or services, shall be liable to a civil action by the registrant
for any or all of the remedies herein provided.33

Petitioners base their cause of action under the first part of Section 22, i.e. respondents allegedly used, without petitioners' consent, a
colorable imitation of the "Big Mac" mark in advertising and selling respondents' hamburger sandwiches. This likely caused
confusion in the mind of the purchasing public on the source of the hamburgers or the identity of the business.

To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff's 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."34 Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement. 35

On the Validity of the "Big Mac"Mark

and McDonald's Ownership of such Mark

A mark is valid if it is "distinctive" and thus not barred from registration under Section 4 36 of RA 166 ("Section 4"). However, once
registered, not only the mark's validity but also the registrant's ownership of the mark is prima facie presumed. 37

Respondents contend that of the two words in the "Big Mac" mark, it is only the word "Mac" that is valid because the word "Big" is
generic and descriptive (proscribed under Section 4[e]), and thus "incapable of exclusive appropriation."38

The contention has no merit. The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, 39 is
neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind ofgoods,40 such as "Lite" for
beer41 or "Chocolate Fudge" for chocolate soda drink.42 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, 43 such as "Arthriticare" for arthritis
medication.44 On the contrary, "Big Mac" falls under theclass of fanciful or arbitrary marks as it bears no logical relation to
the actual characteristics of the product it represents.45 As such, it is highly distinctive and thus valid. Significantly, the trademark
"Little Debbie" for snack cakes was found arbitrary or fanciful. 46

The Court also finds that petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Although
Topacio and the Isaiyas Group registered the "Big Mac" mark ahead of McDonald's, Topacio, as petitioners disclosed, had already
assigned his rights to McDonald's. The Isaiyas Group, on the other hand, registered its trademark only in the Supplemental Register.
A mark which is not registered in the Principal Register, and thus not distinctive, has no real protection. 47 Indeed, we have held that
registration in the Supplemental Register is not even a prima facie evidence of the validity of the registrant's exclusive right to use
the mark on the goods specified in the certificate.48
Page 30 of 67
On Types of Confusion

Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks, namely, confusion of goods
(product confusion) and confusion of business (source or origin confusion). In Sterling Products International, Incorporated v.
Farbenfabriken Bayer Aktiengesellschaft, et al.,49 the Court distinguished these two types of confusion, thus:

[Rudolf] Callman notes two types of confusion. The first is the 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." xxx The other is the
confusion of business: "Here though the goods of the parties are different, the defendant's 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."

Under Act No. 666,50 the first trademark law, infringement was limited to confusion of goods only, when the infringing mark is used
on "goods of a similar kind." 51 Thus, no relief was afforded to the party whose registered mark or its colorable imitation is used on
different although related goods. To remedy this situation, Congress enacted RA 166 on 20 June 1947. In defining trademark
infringement, Section 22 of RA 166 deleted the requirement in question and expanded its scope to include such use of the mark or
its colorable imitation that is likely to result in confusion on "the source or origin of such goods or services, or identity of such
business."52 Thus, while there is confusion of goods when the products are competing, confusion of business exists when the
products are non-competing but related enough to produce confusion of affiliation.53

On Whether Confusion of Goods and

Confusion of Business are Applicable

Petitioners claim that respondents' use of the "Big Mak" mark on respondents' hamburgers results in confusion of goods,
particularly with respect to petitioners' hamburgers labeled "Big Mac." Thus, petitioners alleged in their complaint:

1.15. Defendants have unduly prejudiced and clearly infringed upon the property rights of plaintiffs in the McDonald's
Marks, particularly the mark "B[ig] M[ac]". Defendants' unauthorized acts are likely, and calculated, to confuse, mislead or
deceive the public into believing that the products and services offered by defendant Big Mak Burger, and the business it is
engaged in, are approved and sponsored by, or affiliated with, plaintiffs.54 (Emphasis supplied)

Since respondents used the "Big Mak" mark on the same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is
used, trademark infringement through confusion of goods is a proper issue in this case.

Petitioners also claim that respondents' use of the "Big Mak" mark in the sale of hamburgers, the same business that petitioners are
engaged in, results in confusion of business. Petitioners alleged in their complaint:

1.10. For some period of time, and without the consent of plaintiff McDonald's nor its licensee/franchisee, plaintiff
McGeorge, and in clear violation of plaintiffs' exclusive right to use and/or appropriate the McDonald's marks, defendant
Big Mak Burger acting through individual defendants, has been operating "Big Mak Burger", a fast food restaurant
business dealing in the sale of hamburger and cheeseburger sandwiches, french fries and other food products, and has
caused to be printed on the wrapper of defendant's food products and incorporated in its signages the name "Big Mak
Burger", which is confusingly similar to and/or is a colorable imitation of the plaintiff McDonald's mark "B[ig] M[ac]",
xxx. Defendant Big Mak Burger has thus unjustly created the impression that its business is approved and
sponsored by, or affiliated with, plaintiffs.xxxx

2.2 As a consequence of the acts committed by defendants, which unduly prejudice and infringe upon the property rights of
plaintiffs McDonald's and McGeorge as the real owner and rightful proprietor, and the licensee/franchisee, respectively, of
the McDonald's marks, and which are likely to have caused confusion or deceived the public as to the true source,
sponsorship or affiliation of defendants' food products and restaurant business, plaintiffs have suffered and continue
to suffer actual damages in the form of injury to their business reputation and goodwill, and of the dilution of the distinctive
quality of the McDonald's marks, in particular, the mark "B[ig] M[ac]".55 (Emphasis supplied)

Respondents admit that their business includes selling hamburger sandwiches, the same food product that petitioners sell using the
"Big Mac" mark. Thus, trademark infringement through confusion of business is also a proper issue in this case.

Respondents assert that their "Big Mak" hamburgers cater mainly to the low-income group while petitioners' "Big Mac" hamburgers
cater to the middle and upper income groups. Even if this is true, the likelihood of confusion of business remains, since the low-
Page 31 of 67
income group might be led to believe that the "Big Mak" hamburgers are the low-end hamburgers marketed by petitioners. After all,
petitioners have the exclusive right to use the "Big Mac" mark. On the other hand, respondents would benefit by associating their
low-end hamburgers, through the use of the "Big Mak" mark, with petitioners' high-end "Big Mac" hamburgers, leading to
likelihood of confusion in the identity of business.

Respondents further claim that petitioners use the "Big Mac" mark only on petitioners' double-decker hamburgers, while
respondents use the "Big Mak" mark on hamburgers and other products like siopao, noodles and pizza. Respondents also point out
that petitioners sell their Big Mac double-deckers in a styrofoam box with the "McDonald's" logo and trademark in red, block letters
at a price more expensive than the hamburgers of respondents. In contrast, respondents sell their Big Mak hamburgers in plastic
wrappers and plastic bags. Respondents further point out that petitioners' restaurants are air-conditioned buildings with drive-thru
service, compared to respondents' mobile vans.

These and other factors respondents cite cannot negate the undisputed fact that respondents use their "Big Mak" mark on
hamburgers, the same food product that petitioners' sell with the use of their registered mark "Big Mac." Whether a hamburger is
single, double or triple-decker, and whether wrapped in plastic or styrofoam, it remains the same hamburger food product. Even
respondents' use of the "Big Mak" mark on non-hamburger food products cannot excuse their infringement of petitioners' registered
mark, otherwise registered marks will lose their protection under the law.

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. Thus, the Court has declared:

Modern law recognizes that the protection to which the owner of a trademark is entitled 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 trade-mark or trade-name 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; 53 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 (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). 56 (Emphasis supplied)

On Whether Respondents' Use of the "Big Mak"

Mark Results in Likelihood of Confusion

In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. 57 The
dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion. In
contrast, 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.

This Court has relied on the dominancy test rather than the holistic test. The 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.59 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.

The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the "colorable imitation of a registered mark xxx or a dominant feature thereof."

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in likelihood of confusion. First,
"Big Mak" sounds exactly the same as "Big Mac." Second, the first word in "Big Mak" is exactly the same as the first word in "Big
Mac." Third, the first two letters in "Mak" are the same as the first two letters in "Mac." Fourth, the last letter in "Mak" while a "k"
sounds the same as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus
"Caloocan" is spelled "Kalookan."

In short, aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word
of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word
of both marks having the same letters and the second word having the same first two letters. In spelling, considering the Filipino
language, even the last letters of both marks are the same.

Page 32 of 67
Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of "Big Mac." Applied to
the same food product of hamburgers, the two marks will likely result in confusion in the public mind.

Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:

xxxx

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

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

(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or
dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices
or words thereon, or in any 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 shalldeceive 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;

(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that
such person is offering the services of another who has identified such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to
good faith of a nature calculated to discredit the goods, business or services of another. (Emphasis supplied)

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.74 The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the goods as offered for sale to the public.75 Actual fraudulent intent need not be
shown.76

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. 77 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.78

To support their claim of unfair competition, petitioners allege that respondents fraudulently passed off their hamburgers as "Big
Mac" hamburgers. Petitioners add that respondents' fraudulent intent can be inferred from the similarity of the marks in question. 79

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. 80 Thus, the
defendant gives his goods the general appearance of the goods of his competitor with the intention of deceiving the public that the
goods are those of his competitor.

Respondents point to these dissimilarities as proof that they did not give their hamburgers the general appearance of petitioners'
"Big Mac" hamburgers.

The dissimilarities in the packaging are minor compared to the stark similarities in the words that give respondents' "Big Mak"
hamburgers the general appearance of petitioners' "Big Mac" hamburgers. Section 29(a) expressly provides that the similarity in the
general appearance of the goods may be in the "devices or words" used on the wrappings. Respondents have applied on their plastic
wrappers and bags almost the same words that petitioners use on their styrofoam box. What attracts the attention of the buying
public are the words "Big Mak" which are almost the same, aurally and visually, as the words "Big Mac." The dissimilarities in the
material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings.

Page 33 of 67
Section 29(a) also provides that the defendant gives "his goods the general appearance of goods of another manufacturer."
Respondents' goods are hamburgers which are also the goods of petitioners. If respondents sold egg sandwiches only instead
of hamburger sandwiches, their use of the "Big Mak" mark would not give their goods the general appearance of petitioners' "Big
Mac" hamburgers. In such case, there is only trademark infringement but no unfair competition. However, since respondents chose
to apply the "Big Mak" mark on hamburgers, just like petitioner's use of the "Big Mac" mark on hamburgers, respondents
have obviously clothed their goods with the general appearance of petitioners' goods.

Moreover, there is no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak Burger, Inc." Respondents
introduced during the trial plastic wrappers and bags with the words "L.C. Big Mak Burger, Inc." to inform the public of the name
of the seller of the hamburgers. However, petitioners introduced during the injunctive hearings plastic wrappers and bags with the
"Big Mak" mark without the name "L.C. Big Mak Burger, Inc." Respondents' belated presentation of plastic wrappers and bags
bearing the name of "L.C. Big Mak Burger, Inc." as the seller of the hamburgers is an after-thought designed to exculpate them from
their unfair business conduct. As earlier stated, we cannot consider respondents' evidence since petitioners' complaint was based on
facts existing before and during the injunctive hearings.

Thus, 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.82 Respondents, however, did not give such notice. We hold that as found by the RTC, respondent
corporation is liable for unfair competition.

Page 34 of 67
 MCDONALD’S CORP. v. MCJOY

G.R. NO. 166115

February 2, 2007

FACTS:

Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok,
tacos, sandwiches, halo-halo and steaks (fastfood products) in Cebu City filed with the BPTT-IPO an application for the registration
of the trademark “MACJOY & DEVICE”.

McDonald’s Corporation, opposed against the respondent’s application claiming that such trademark so resembles its corporate
logo (Golden Arches) design and its McDONALD’s marks such that when used on identical or related goods, the trademark applied
for would confuse or deceive purchasers into believing that the goods originated from the same source or origin.

Macjoy on the other hand averred that the it has used the mark “MACJOY” for tha past many years in good faith and has spent
considerable sums of money for extensive promotions x x x.

The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the Macjoy and McDonald’s marks
lead to the conclusion that there is confusing similarity between them x x x. Therefore, Macjoy’s application was denied.

Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling over the case, actually used
the holistic test (which is a test commonly used in infringement cases). The holistic test looks upon the visual comparisons between
the two trademarks. The justifications are the following:

1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke gothic;

2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides, while the
word “McDonald’s” comes with an arches “M” in gold colors, and absolutely without any picture of a chicken;

3. The word “MacJoy” is set in deep pink and white color scheme while the word“McDonald’s” is written in red, yellow, and black
color combination;

4. The facade of the respective stores of the parties, are entirely different.

ISSUE: Whether there is a confusing similarity between the McDonald’s marks of the petitioner and the respondent’s “MACJOY &
DEVICE” trademark when it applied to classes 29 ad 30 of the International Classification of Goods.

RULING: YES.

The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only looks at the visual
comparisons between two trademarks but also the aural impressions created by the marks in the public mind as well as connotative
comparisons, giving little weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme
Court ruled that “McDonald’s” and “MacJoy” marks are confusingly similar with each other such that an ordinary purchaser can
conclude an association or relation between the marks. To begin with, both marks use the corporate “M” design logo and the
prefixes “Mc” and/or “Mac”as dominant features. The first letter “M” in both marks puts emphasis on the
prefixes “Mc”and/or “Mac” by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner. For
sure, it is the prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention of the consuming public.
Verily, the word “MACJOY” attracts attention the same way as did “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big
Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both
trademarks are used in the sale of fastfood products.

Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the
prefix “Mac” to be the dominant feature of the trademark. The prefix“Mac” and “Macjoy” has no relation or similarity whatsoever
to the name Scarlett Yu Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of the trademark
MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to how and why out of the many choices of words it
could have used for its trade-name and/or trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is
that the MacJoy would want to ride high on the established reputation and goodwill of the McDonald’s marks, which, as applied to
its restaurant business and food products, is undoubtedly beyond question.

Page 35 of 67
 Lyceum vs CA
G.R. No. 101897, Marc 5, 1993

Facts:
Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding against the Lyceum of Baguio to change its
corporate name and to adopt another name not “similar to or identical” with that of petitioner since their names were substantially
identical because of the word ‘Lyceum’. SEC ruled in favor of the petitioner and the SC denied the consequent appeal of Lyceum of
Baguio in a resolution. Petitioner then, pursuant to the SC resolution, wrote to all educational institutions which made use of the word
‘Lyceum’ as part of their corporate name to discontinue using the same. When this recourse failed, petitioner moved before the SEC
to enforce its exclusive use of the word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’ has acquired a secondary meaning
in its favor. The SEC Hearing Officer found for petitioner. Both SEC En Banc and CA ruled otherwise.

Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by petitioner to the exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of petitioner.
(3) Whether or not petitioner is infringed by respondent institutions’ corporate names.

Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the name of the petitioner, “Lyceum” appears to be
a substitute for “university;” in other places, however, “Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary school or a
college. It may be that the use of the word “Lyceum” may not yet be as widespread as the use of “university,” but it is clear that a not
inconsiderable number of educational institutions have adopted “Lyceum” or “Liceo” as part of their corporate names. Since
“Lyceum” or “Liceo” denotes a school or institution of learning, it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.

(2) NO. Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to
an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively
by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come
to mean that the article was his produce. With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the
aforementioned requisites. While the appellant may have proved that it had been using the word ‘Lyceum’ for a long period of time,
this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to
prove that it had been using the same word all by itself to the exclusion of others. More so, there was no evidence presented to prove
that confusion will surely arise if the same word were to be used by other educational institutions.

(3) NO. We do not consider that the corporate names of private respondent institutions are “identical with, or deceptively or
confusingly similar” to that of the petitioner institution. True enough, the corporate names of private respondent entities all carry the
word “Lyceum” but confusion and deception are effectively precluded by the appending of geographic names to the word “Lyceum.”
Thus, we do not believe that the “Lyceum of Aparri” can be mistaken by the general public for the Lyceum of the Philippines, or that
the “Lyceum of Camalaniugan” would be confused with the Lyceum of the Philippines. We conclude and so hold that petitioner
institution is not entitled to a legally enforceable exclusive right to use the word “Lyceum” in its corporate name and that other
institutions may use “Lyceum” as part of their corporate names.

Page 36 of 67
 MANG INASAL v. IFP MANUFACTURING CORPORATION

MANG INASAL PHILIPPINES, INC., Petitioner Vs. IFP MANUFACTURING CORPORATION, Respondent

G.R. No. 221717

June 19, 2017

FACTS:

The Trademark Application and the Opposition Respondent IFP Manufacturing Corporation is a local manufacturer of snacks and
beverages.

On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an application for the registration of the mark "OK
Hotdog Inasal Cheese Hotdog Flavor Mark"in connection with goods under Class 30 of the Nice Classification. The said mark,
which respondent intends to use on one of its curl snack products. The application of respondent was opposed by petitioner Mang
Inasal Philippines, Inc. Petitioner is a domestic fast food company and the owner of the mark "Mang Inasal, Home of Real Pinoy
Style Barbeque and Device" (Mang Inasal mark) for services under Class 43 of the Nice Classification. The said mark, which was
registered with the IPO in 2006 and had been used by petitioner for its chain of restaurants since 2003.

Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog Inasal mark is prohibited under Section 123.l
(d)(iii) of Republic Act No. (RA) 8293. Petitioner averred that the OK Hotdog Inasal mark and the Mang Inasal mark share
similarities-both as to their appearance and as to the goods or services that they epresent which tend to suggest a false connection or
association between the said marks and, in that regard, would likely cause confusion on the part of the public. As petitioner
explained:

1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the same dominant element-i.e., the word
"INASAL"-printed and stylized in the exact same manner, viz:

a. In both marks, the word "INASAL" is spelled using the same font style and red color;

b. In both marks, the word "INASAL" is placed inside the same black outline and yellow background; and

c. In both marks, the word "INASAL" is arranged in the same staggered format.

2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack products) are also closely related to the services
represented by the Mang Inasal mark (i.e., fast food restaurants). Both marks cover inasal or inasal-flavored food products.
Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for hearing and disposition.

ISSUE:

Whether or not the registration of respondent's OK Hotdog Inasal mark is prohibited under Section 123.l (d) (iii) of Republic Act
No. (RA) 8293

HELD:
Page 37 of 67
Yes. The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec. 123.l(d)(iii) of RA 8293. First, it is similar
to the Mang Inasal mark, an earlier mark. Second, it pertains to goods that are related to the services represented by such earlier
mark.

The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is similar to a registered mark or a mark with an earlier filing or priority
date (earlier mark) and which is likely to cause confusion on the part of the public cannot be registered with the IPO. Such is the
import of Sec. 123.l(d)(iii) of RA 8293: SECTION 123. Registrability. – 123. 1. A mark cannot be registered if it:

Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to deceive or cause confusion upon the purchasing
public, a prospective mark must be shown to meet two (2) minimum conditions:

1. The prospective mark must nearly resemble or be similar to an earlier mark; and

2. The prospective mark must pertain to goods or services that are either identical, similar or related to the goods or services
represented by the earlier mark.

Page 38 of 67
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC. vs.RENAUD COINTREAU & CIE and
LE CORDON BLEU INT'L., B.V.
G.R. No. 185830 June 5, 2013

FACTS:

In 1990, Cointreau, a partnership registered under the laws of France, filed before the (now defunct) Bureau of Patents, Trademarks,
and Technology Transfer (BPTTT) of the Department of Trade and Industry a trademark application for the mark "LE CORDON
BLEU & DEVICE". The application was filed pursuant to Section 37 of Republic Act No. 166, as amended, on the basis of Home
Registration No. 1,390,912, issued in France.

Petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition to the subject application, averring that: (a) it is the owner of the
mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has been using since 1948 in cooking and other culinary
activities, including in its restaurant business.

Cointreau filed its answer claiming to be the true and lawful owner of the subject mark. It averred that: (a) it has filed applications for
the subject mark’s registration in various jurisdictions, including the Philippines; (b) Le Cordon Bleu is a culinary school of worldwide
acclaim which was established in Paris, France in 1895; (c) Le Cordon Bleu was the first cooking school to have set the standard for
the teaching of classical French cuisine and pastry making; and (d) it has trained students from more than eighty (80) nationalities,
including Ecole’s directress, Ms. Lourdes L. Dayrit.

ISSUE:

Whether Ecole is the rightful owner of the subject mark, considering that it was the first entity that used the same in the Philippines

RULING:

NO.

Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and must have actually used the
mark in commerce in the Philippines for two (2) months prior to the application for registration. Section 2-A of the same law sets out
to define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test
of ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it
is significant to note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. Thus, as
correctly mentioned by the CA, under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet have the
right to register such ownership here due to the owner’s failure to use the same in the Philippines for two (2) months prior to
registration.

Nevertheless, foreign marks which are not registered are still accorded protection against infringement and/or unfair competition. At
this point, it is worthy to emphasize that the Philippines and France, Cointreau’s country of origin, are both signatories to the Paris
Convention for the Protection of Industrial Property (Paris Convention).

In view of the foregoing obligations under the Paris Convention, the Philippines is obligated to assure nationals of the signatory-
countries that they are afforded an effective protection against violation of their intellectual property rights in the Philippines in the
same way that their own countries are obligated to accord similar protection to Philippine nationals. "Thus, under Philippine law, a
trade name of a national of a State that is a party to the Paris Convention, whether or not the trade name forms part of a trademark, is
protected "without the obligation of filing or registration.’"

In the instant case, it is undisputed that Cointreau has been using the subject mark in France since 1895, prior to Ecole’s averred first
use of the same in the Philippines in 1948, of which the latter was fully aware thereof. In fact, Ecole’s present directress, Ms. Lourdes
L. Dayrit (and even its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu culinary school in Paris, France.
Cointreau was likewise the first registrant of the said mark under various classes, both abroad and in the Philippines, having secured
Home Registration No. 1,390,912 dated November 25, 1986 from its country of origin, as well as several trademark registrations in
the Philippines.

On the other hand, Ecole has no certificate of registration over the subject mark but only a pending application covering services
limited to Class 41 of the Nice Classification, referring to the operation of a culinary school. Its application was filed only on February
24, 1992, or after Cointreau filed its trademark application for goods and services falling under different classes in 1990. Under the

Page 39 of 67
foregoing circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be said to have validly appropriated
the same.

It is thus clear that at the time Ecole started using the subject mark, the same was already being used by Cointreau, albeit abroad, of
which Ecole’s directress was fully aware, being an alumna of the latter’s culinary school in Paris, France. Hence, Ecole cannot claim
any tinge of ownership whatsoever over the subject mark as Cointreau is the true and lawful owner thereof. As such, the IPO Director
General and the CA were correct in declaring Cointreau as the true and lawful owner of the subject mark and as such, is entitled to
have the same registered under its name.

In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, as amended, has already dispensed with the requirement of prior actual use at the time of registration. Thus, there is more
reason to allow the registration of the subject mark under the name of Cointreau as its true and lawful owner.

As a final note, "the function of a trademark is to point out distinctly the origin or ownership of the goods (or services) to which it is
affixed; 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; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the
manufacturer against substitution and sale of an inferior and different article as his product." As such, courts will protect trade names
or marks, although not registered or properly selected as trademarks, on the broad ground of enforcing justice and protecting one in
the fruits of his toil.

Page 40 of 67
SHANG PROPERTIES REALTY CORPORATION v. ST. FRANCIS DEVELOPMENT CORPORATION, GR No. 190706,
2014-07-21
Facts:
Respondent a domestic corporation engaged in the real estate business and the developer of the St. Francis Square Commercial
Center, built sometime in 1992, located at Ortigas Center, Mandaluyong City, Metro Manila (Ortigas Center)[4] filed separate...
complaints against petitioners before the IPO - Bureau of Legal Affairs (BLA), namely: (a) an intellectual property violation case
for unfair competition, false or fraudulent declaration, and damages arising from petitioners' use and filing of applications... for the
registration of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE," docketed as IPV
Case No. 10-2005-00030 (IPV Case); and (b) an inter partes case opposing the petitioners' application for registration of the... mark
"THE ST. FRANCIS TOWERS" for use relative to the latter's business, particularly the construction of permanent buildings or
structures for residential and office purposes, docketed as Inter Partes Case No. 14-2006-00098 (St. Francis Towers IP Case); and
(c) an inter partes case opposing the petitioners' application for registration of the mark "THE ST. FRANCIS SHANGRI-LA
PLACE," docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP Case).

HELD:NO. The term is ineligible for trademark registration

. In general, a geographically-descriptive mark, because of its general public domain classification, is perceptibly disqualified from
trademark registration. Section 123.1(j) of the IP Code provides that a mark cannot be registered if it “consists exclusively of signs
or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time
or production of the goods or rendering of the services, or ot her characteristics of the goods or services”, because these “descriptive
geographical terms are in the ‘public domain’ simply because every seller should have the right to inform customers of the
geographical origin of his or her goods or services.
‘Geographically descriptive term’ is defined as any noun or adjective that designates a geographical location on earth, such as
continents, nations, regions, states, cities, streets and addresses, areas of cities, rivers, or any other location referred to by a
recognized name, that are regarded by buyers as descriptive of the geographic location of origin of the goods or services.Thus, if the
mark sought to be registered is the name of the place or region from which the goods actually come,then the geographic term is
probably used in a descriptive sense. Hence, the term is ineligible for trademark registration.Is there an exception to the rule? A
geographically descriptive mark can still be registered if the same has acquired a secondary meaning. This means, that a descriptive
mark no longer causes the public to associate the goods with a particular place, but to associate the goods with a particular source
(seller or producer). It must be shown that the purchasers come to immediately associate the mark with only the seller or producer of
the goods. In other words, the mark itself has acquired another meaning no longer that of a particular place, but it has come to mean
that the goods or services are that of the seller or producer.Under Section 123.234 of the IP Code, specific requirements have to be
met in order to conclude that a geographically descriptive mark has acquired secondary meaning, to wit: (a) the secondary meaning
must have arisen as a result of substantial commercial use of a mark in the Philippines; (b) such use must result in the distinctiveness
of the mark insofar as the goods or the products are concerned; and (c) proof of substantially exclusive and continuous commercial
use in the Philippines for five (5) years before the date on which the claim of distinctiveness is made.
In the instant case, the Supreme Court held that the use of the marks “The St. Francis Towers” and “The St. Francis Shangri-La
Place” was meant only to identify, or at least associate, the real estate projects with its geographical location.Considering that both
companies are business competitors engaged in real estate or property development, providing goods and services directly
connected thereto, there can be no description of its geographical origin as precise and accurate as that of the name of the place
where they are situated.WHEREFORE, the petition is GRANTED. The Decision dated December 18, 2009 of the Court of Appeals
in CA-G.R. SP No. 105425 is hereby REVERSED and SET ASIDE. Accordingly, the Decision dated September 3, 2008 of the
Intellectual Property Office-Director General is REINSTATED.

Page 41 of 67
 WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS vs KONINKLIJKE PHILIPS
ELECTRONICS, N.V.
G.R. No. 186088 March 22, 2017

FACTS:

Petitioner PHILITES filed a trademark application covering its fluorescent bulb, incandescent light, starter and ballast. Respondent
opposes petitioner's application on the ground that PHILITES' registration will mislead the public over an identical or confusingly
similar mark of PHILIPS, which is registered and internationally well-known mark. Specifically, respondent invokes the following
provisions of Section 123:

Section 123. Registrability. - 123 .1. A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority
of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the
mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in
determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than
of the public at large, including knowledge in the Philipines which has been obtained as a result of the promotion of the mark.

ISSUE:

Whether or not the mark applied for by petitioner is identical or confusingly similar with that of respondent

RULING:

YES.

Despite respondent's diversification to numerous and varied industries, the records show that both parties are engaged in the same line
of business: selling identical or similar goods such as fluorescent bulbs, incandescent lights, starters and ballasts.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or
totality test.

On one hand, the dominancy test focuses on "the similarity of the prevalent or dominant features of the competing trademarks that
might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither
is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market
segments. "

On the other hand, the holistic or totality test necessitates a "consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on
the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether
one is confusingly similar to the other."

Applying the dominancy test to this case requires us to look only at the mark submitted by petitioner in its application, while we give
importance to the aural and visual impressions the mark is likely to create in the minds of the buyers. We agree with the findings of
the CA that the mark "PHILITES" bears an uncanny resemblance or confusing similarity with respondent's mark "PHILIPS," to wit:

Applying the dominancy test in the instant case, it shows the uncanny resemblance or confusing similarity between the
trademark applied for by respondent with that of petitioner's registered trademark. An examination of the trademarks shows
that their dominant or prevalent feature is the five-letter "PHILI", "PHILIPS" for petitioner, and "PHILITES" for respondent.
The marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation
between the marks. The consuming public does not have the luxury of time to ruminate the phonetic sounds of the trademarks,
to find out which one has a short or long vowel sound. At bottom, the letters "PHILI'' visually catch the attention of the
Page 42 of 67
 consuming public and the use of respondent's trademark will likely deceive or cause confusion. Most importantly, both
trademarks are used in the sale of the same goods, which are light bulbs.

The confusing similarity becomes even more prominent when we examine the entirety of the marks used by petitioner and respondent,
including the way the products are packaged. In using the holistic test, we find that there is a confusing similarity between the
registered marks PHILIPS and PHILITES, and note that the mark petitioner seeks to register is vastly different from that which it
actually uses in the packaging of its products. We quote with approval the findings of the CA as follows:

Applying the holistic test, entails a consideration of the entirety of the marks as applied to the products, including the labels
and packaging, in determining confusing similarity. A comparison between petitioner's registered trademark "PHILIPS'' as
used in the wrapper or packaging of its light bulbs and that of respondent's applied for trademark "PHILITES" as depicted in
the container or actual wrapper/packaging of the latter's light bulbs will readily show that there is a strong similitude and
likeness between the two trademarks that will likely cause deception or confusion to the purchasing public. The fact that the
parties' wrapper or packaging reflects negligible differences considering the use of a slightly different font and hue of the
yellow is of no moment because taken in their entirety, respondent's trademark "PHILITES" will likely cause confusion or
deception to the ordinary purchaser with a modicum of intelligence.

Page 43 of 67
 W LAND HOLDINGS v. STARWOOD HOTELS
GR No. 222366, December 12, 2017

Facts:
W Land, a real estate company, filed an action to cancel Starwood's trade mark registration for its W mark on the ground that Starwood
had failed to use its mark because it had no hotel or establishment in the Philippines offering the services covered by its registration.

Starwood denied having abandoned its W mark, and alleged that it had already filed a Declaration of Actual Use in 2008 which was
accepted by the IPOPHL. It argued that it operates an interactive website to accommodate its potential clients worldwide and allows
Philippine residents to make reservations and bookings, clearly showing use of the W mark in the Philippines.

The IPO Bureau of Legal Affairs LA ruled in W Land's favor, and accordingly ordered the cancellation of Starwood's registration for
the "W" mark.

The Intellectual Property Office – Director General (IPO DG) reversed the BLA’s decision and granted Starwood's appeal. The CA
affirmed the IPO DG ruling. Hence, this recourse.

Issue:

Did Starwood fail to use its registered “W” mark, hence its registration should be cancelled?

Ruling:

NO. The actual use of the mark representing the goods or services introduced and transacted in commerce over a period of time creates
that goodwill which the law seeks to protect. For this reason, the IP Code, under Section 124.2, requires the registrant or owner of a
registered mark to declare "actual use of the mark" (DAU) and present evidence of such use within the prescribed period. Failing in
which, the IPO DG may cause the motu propio removal from the register of the mark's registration.

The IP Code and the Trademark Regulations have not specifically defined "use." However, it is understood that the "use" which the
law requires to maintain the registration of a mark must be genuine, and not merely token. This may be characterized as “use” which
results or tends to result, in one way or another, in a commercial interaction or transaction in the ordinary course of business.

Rule 205 of Office Order No. 056-13 rocognizes among others that "downloaded pages from the website of the applicant or registrant
clearly showing that the goods are being sold or the services are being rendered in the Philippines," as well as "for online sale, receipts
of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the
services are available in the Philippines or that the transaction took place in the Philippines," as acceptable proof of actual use.

In this case, Starwood has proven that it owns Philippine registered domain names, i.e., www.whotels.ph, www.wreservations.ph,
www.whotel.ph, www.wreservation.ph, for its website that showcase its mark. The website is readily accessible to Philippine citizens
and residents, and they can use them to instantaneously book and pay for their accommodation, with immediate confirmation, in any
of its W hotels. It further presented data of the growing number of internet users in the Philippines visiting its website since 2003, and
thus, taken together Starwood showed that use of the W mark through its interactive website was intended to produce and establish
commercial interaction with Philippine consumers. Accordingly, Starwood's use of the "W" mark in its reservation services through
its website constitutes use of the mark sufficient to keep its registration in force.

Further, Starwood submitted in 2008 its Declaration of Actual Use (DAU) which the IPOPHL accepted and recognized as valid. The
SC found no reason to disturb this recognition.

Page 44 of 67
 Del Monte Corp. vs. CA GR No. L-78325

FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and manufacturer, PhilPack filed an infringement
of copyright complaint against respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen
sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the petitioner, to which is deceiving and
misleading to the public.

In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del
Monte logo and would not confuse the buying public to the detriment of the petitioners.

The Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or
trademarks of the parties nor on the continued use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.

ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of its logos and bottles.

HELD: Yes. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the
respective labels must be considered in relation to the goods to which they are attached; the discerning eye of the observer must focus
not only on the precognizant words but also on the other features appearing on both labels. It has been correctly held that side-by-side
comparison is not the final test of similarity. In determining whether a trademark has been infringed, we must consider the mark as a
whole and not as dissected.

The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this case. The Sunshine label is a colorable
imitation of the Del Monte trademark. What is undeniable is the fact that when a manufacturer prepares to package his product, he
has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. Sunshine
chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection
was so broad, the inevitable conclusion is that it was done deliberately to deceive.

With regard to the bottle use, Sunshine despite the many choices available to it and notwithstanding that the caution "Del Monte
Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack
also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill
and pass off its own product as that of Del Monte.

Page 45 of 67
 ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION

Facts:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair
competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN
MIGUEL PALE PILSEN for a share of the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition against"
SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia Brewery
Incorporated GUILTY of infringement of trademark and unfair competition. ABI then filed a petition for certiorari.

Issue:

Whether the words PALE PILSEN as part of ABI’s trademark constitute infringement of SMC’s trademark?

Whether or not there is confusing similarity between the two trademarks.

Ruling:

No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of ABI’s trademark,
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, Czechislovakia and became famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are
part of its registered trademark. No one may appropriate generic or descriptive words. They belong to the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE
PILSEN product.

No. There is hardly any dispute that the dominant feature of SMC’s trademark is the name of the product: SAN MIGUEL PALE
PILSEN, written in white Gothic letters with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber
background across the upper portion of the rectangular design. On the other hand, the dominant feature of ABI’s trademark is the
name: BEER PALE PILSEN, with the word “Beer” written in large amber letters, larger than any of the letters found in the SMC
label.

Page 46 of 67
 PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT SA.
G.R. No. 180073
November 25, 2009

TOPIC: Trademark/Tests to determine confusing similarity between marks

FACTS:

Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later discovered that petitioner was also
distributing a similar food supplement using the mark PCO-GENOLS since 1996. This prompted respondent to demand that
petitioner cease and desist from using the aforesaid mark.

Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction against petitioner, in using the
name PCO-GENOLS for being confusingly similar. Petitioner appealed otherwise.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL"
which appears to be merely descriptive and thus open for trademark registration by combining it with other words and concluded
that the marks, when read, sound similar, and thus confusingly similar especially since they both refer to food supplements.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the Dominancy or the
Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

ISSUE/S: Whether the names are confusingly similar.

RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove such.

The Dominancy Test 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 takes place. Duplication or imitation is not necessary; nor is it necessary
that the infringing label should suggest an effort to imitate. 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 purchasers. 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.

The Holistic Test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging,
in determining confusing similarity. Not only on the predominant words should be the focus but also on the other features appearing
on both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other.

SC applied the Dominancy Test.Both the words 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 through
combination with another word or phrase. 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. 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.

Page 47 of 67
 Skechers USA Inc. vs. Inter Pacific Industrial Trading Corp.

Skechers, USA Inc. is the owner of the registered trademarks “Skechers” and “S within an oval logo”.

Skechers filed a criminal case for trademark infringement against several store-owners that were selling shoes branded as “Strong”
and bearing a similar “S” logo. The Regional Trial Court (RTC) issued search warrants, allowing the National Bureau of
Investigation (NBI) to raid the stores and confiscate 6,000 pairs of shoes.

The accused moved to quash the warrants, saying that there was no confusing similarity between the “Skechers” and the “Strong”
brands.

The RTC granted the motion to quash and ordered the NBI to return the seized goods. The court said that the two brands had glaring
differences and that an ordinary prudent consumer would not mistake one for the other.

On certiorari, the Court of Appeals (CA) affirmed the RTC ruling.

The matter was elevated to the Supreme Court (SC).

Issue: Did the accused commit trademark infringement?

Yes, the accused is guilty of trademark infringement.

Under the IP Code (RA No. 8293), trademark infringement is committed when:
Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including
other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used
in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection
with whichsuch use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by
the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated
in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing
material. (emphasis supplied)

There is trademark infringement when the second mark used is likely to cause confusion. There are two tests to determine this:

1. Dominancy Test – the court focuses on the similarity of the dominant features of the marks that might cause confusion in the
mind of the consumer. Duplication or imitation is not necessary. Even accidental confusion may be cause for trademark
infringement. More consideration is given to the aural and visual impressions created by the marks on the buyers and less weight is
given to factors like price, quality, sales outlets and market segments.
Applied to this case: The SC found that the use of the “S” symbol by Strong rubber shoes infringes on the
registered Skechers trademark. It is the most dominant feature of the mark -- one that catches the buyer’s eye first. Even if the
accused claims that there was a difference because the “S” used by Skechers is found inside an oval, the fact that the accused used
the dominant “S” symbol already constitutes trademark infringement.
The SC disagreed with the CA reasoning that the “S” symbol is already used for many things, including the Superman symbol. Even
if this is true, the fact that Strong used same stylized “S” symbol as that of theSkechers brand makes this a case of trademark
infringement. The same font and style was used in this case. The Superman “S” symbol is clearly different from the “S” in this
case.
2. Holistic or Totality Test – the court looks at the entirety of the marks as applied to the products, including the labels and
packaging. You must not only look at the dominant features but all other features appearing on both marks.
Applied to this case: Both RTC and CA used theHolistic Test to rule that there was no infringement. Both courts argued the
following differences:

Page 48 of 67
  The mark “S” found in Strong Shoes is not enclosed in an “oval design.”
 The word “Strong” is conspicuously placed at the backside and insoles.
 The hang tags and labels attached to the shoes bears the word “Strong” for respondent and “Skechers U.S.A.” for
private complainant;
 Strong shoes are modestly priced compared to the costs of Skechers Shoes.

Also using the Holistic Test, the SC corrected the lower courts and ruled that the striking similarities between the products outweigh
the differences argued by the respondents:
 Same color scheme of blue, white and gray;
 Same wave-like pattern on the midsole and the outer sole;
 Same elongated designs at the side of the midsole near the heel;
 Same number of ridges on the outer soles (five at the back and six in front);
 Same location of the stylized “S” symbol;
 The words "Skechers Sport Trail" at the back of the Skechers shoes and "Strong Sport Trail" at the back of
the Strong shoes, using the same font, color, size, direction and orientation;
 Same two grayish-white semi-transparent circles on top of the heel collars.
The features and overall design of the two products are so similar that there is a high likelihood of confusion.
Two products do not need to be identical, they just need to be similar enough to confuse the ordinary buyer in order to constitute
trademark infringement (Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., 186 Phil. 85 [1980]). Also, the difference
in price cannot be a defense in a case for trademark infringement (McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil.
402, 434 [2004]).

There are two types of confusion:

1. Product Confusion – where the ordinary prudent purchaser would be induced to purchase on product in the belief
that he was buying another.
2. Source or Origin Confusion – although the goods are different, the use of the mark causes the consumer to
assume that both products originate from the same source.
Trademark law protects the owner not only from product confusion but also from source confusion. Protection is not limited to the
same or similar products but extends to all cases where:
 The consumer is misled into thinking that the trademark owner extended his business into a new field;
 The consumer is misled into thinking that the trademark owner is in any way connected to the infringer’s
activities; or
 The infringement forestalls the normal potential expansion of the trademark owner’s business.

Trademark law does not only protect the owner’s reputation and goodwill, it also protects the consumers from fraud and confusion.
In this case, it is clear that there was an attempt to copy the trademark owner’s mark and product design. In trademark infringement
cases, you do not need to copy another's mark or product exactly. Colorable imitation is enough.

Page 49 of 67
Dermaline, Inc. vs. Myra Pharmaceuticals, Inc.,
GR No. 190065, August 16, 2010

Facts:

Dermaline filed with the IPO an application to register the trademark “Dermaline.” Myra opposed this alleging that the trademark
resembles its trademark “Dermalin” and will cause confusion, mistake and deception to the purchasing public. “Dermalin” was
registered way back 1986 and was commercially used since 1977. Myra claims that despite attempts of Dermaline to differentiate its
mark, the dominant feature is the term “Dermaline” to which the first 8 letters were identical to that of “Dermalin.” The
pronunciation for both is also identical. Further, both have 3 syllables each with identical sound and appearance.

Issue:

W/N the IPO should allow the registration of the trademark “Dermaline.”

Held:

NO. As Myra correctly posits, as a registered trademark owner, it has the right under Section 147 of R.A. No. 8293 to prevent third
parties from using a trademark, or similar signs or containers for goods or services, without its consent, identical or similar to its
registered trademark, where such use would result in a likelihood of confusion.

In determining likelihood of confusion, case law has developed two (2) tests, the Dominancy Test and the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or
deception.
The important issue is... whether the use of the marks involved would likely cause confusion or mistake in the mind of or deceive
the ordinary purchaser, or one who is accustomed to buy, and therefore to some extent familiar with, the goods in question
The test of dominancy is now explicitly incorporated into law in
Section 155.1 of R.A. No. 8293 which provides--
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or... services including
other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; (emphasis supplied)
On the other hand, the Holistic Test entails a consideration of the entirety of the marks as applied to the products, including labels
and packaging, in determining confusing similarity.
Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz: (1)
confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the
belief that he was... purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of
the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be
assumed to originate with the... registrant of an earlier product, and the public would then be deceived either into that belief or into
the belief that there is some connection between the two parties, though inexistent.
Further, Dermaline's stance that its product belongs to a separate and different classification from Myra's products with the
registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with
the latter,... especially considering that both classifications pertain to treatments for the skin.
Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such that, considering the current
proliferation of health and beauty products in the market, the purchasers would likely be misled that Myra has already expanded its
business through
Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services.

Page 50 of 67
 LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., petitioners, vs. CLINTON APPARELLE, INC., respondent.

Intellectual Property Code of the Philippines (R.A. No. 8293); Trademarks; According to Section 138 of Republic Act No. 8293, the
Certificate of Registration is a prima facie evidence of the validity of the registration, the registrant’s ownership of the mark and of
the exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the
certificate.— Petitioners anchor their legal right to “Dockers and Design” trademark on the Certificate of Registration issued in their
favor by the Bureau of Patents, Trademarks and Technology Transfer. According to Section 138 of Republic Act No. 8293, this
Certificate of Registration is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark and of the
exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.
Section 147.1 of said law likewise grants the owner of the registered mark the exclusive right to prevent all third parties not having
the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to
those in respect of which the trademark is registered if such use results in a likelihood of confusion.

Same; Same; Given the single registration of the trademark “Dockers and Design” and considering that respondent only uses the
assailed device but a different word mark, the right to prevent the latter from using the challenged “Paddocks” device is far from
clear. 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.—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. Clinton
Apparelle’s trademark, on the other hand, uses the “Paddocks” word mark on top of a logo which according to petitioners is a
slavish imitation of the “Dockers” design. The two trademarks apparently differ in their word marks (“Dockers” and “Paddocks”),
but again according to petitioners, they employ similar or identical logos. It could thus be said that respondent only “appropriates”
petitioners’ logo and not the word mark “Dockers”; it uses only a portion of the registered trademark and not the whole. Given the
single registration of the trademark “Dockers and Design” and considering that respondent only uses the assailed device but a
different word mark, the right to prevent the latter from using the challenged “Paddocks” device is far from clear. Stated otherwise,
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 owner’s consent of a portion of a
trademark registered in its entirety constitutes material or substantial invasion of the owner’s right.

Same; Same; Trademark Dilution; Words and Phrases; Trademark dilution is the lessening of the capacity of a famous mark to
identify and distinguish good or services; To be eligible for the protection from dilution, there has to be a finding that: (1) the
trademark sought to be protected is famous and distinctive; (2) the use by another began after the owner’s mark became famous; and
(3) such subsequent use defames the owner’s mark.—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. 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.” This is intended to protect
famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it. Based on the foregoing, to be
eligible for protection from dilution, there has to be a finding that: (1) the trademark sought to be protected is famous and
distinctive; (2) the use by respondent of “Paddocks and Design” began after the petitioners’ mark became famous; and (3) such
subsequent use defames petitioners’ mark. In the case at bar, petitioners have yet to establish whether “Dockers and Design” has
acquired a strong degree of distinctiveness and whether the other two elements are present for their cause to fall within the ambit of
the invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to establish that there was confusing
similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin.

Same; Same; The prevailing rule is that the courts should avoid issuing a writ of preliminary injunction that would in effect dispose
of the main case without trial.—We also believe that 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. The prevailing rule
is that 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 petitioners are inceptively bound to prove.

Same; Same; Trademarks and Trade Names; Certiorari; The appellate court goes beyond the issue brought up on certiorari when it
makes a statement and touches on the merits of the infringement case which is yet to be decided by the trial court.—We believe the
Court of

Page 51 of 67
Appeals overstepped its authority when it declared that the “alleged similarity as to the two logos is hardly confusing to the public.”
The only issue brought before the Court of Appeals through respondent’s Petition under Rule 65 of the Rules of Court involved the
grave abuse of discretion allegedly committed by the trial court in granting the TRO and the writ of preliminary injunction. The
appellate court in making such a statement went beyond that issue and touched on the merits of the infringement case, which
remains to be decided by the trial court. In our view, it was premature for the Court of Appeals to declare that there is no confusion
between the two devices or logos. That matter remains to be decided on by the trial court.

Same; Same; Due Process; In applications for preliminary injunction, the requirement of hearing and prior notice before injunction
may issue has been relaxed to the point that not all the petitions for preliminary investigation must undergo trial-type hearing, it
being a hornbook doctrine that a formal or trial-type hearing is not at all times and in all instances essential to due process.—We
have no contention against the procedure adopted by the trial court in resolving the application for an injunctive writ and we believe
that respondent was accorded due process. Due process, in essence, is simply an opportunity to be heard. And in applications for
preliminary injunction, the requirement of hearing and prior notice before injunction may issue has been relaxed to the point that not
all petitions for preliminary injunction must undergo a trial-type hearing, it being a hornbook doctrine that a formal or trial-type
hearing is not at all times and in all instances essential to due process. Due process simply means giving every contending party the
opportunity to be heard and the court to consider every piece of evidence presented in their favor. Accordingly, this Court has in the
case of Co v. Calimag, Jr., rejected a claim of denial of due process where such claimant was given the opportunity to be heard,
having submitted his counter-affidavit and memorandum in support of his position. Levi Strauss & Co. vs. Clinton Apparelle, Inc.,
470 SCRA 236, G.R. No. 138900 September 20, 2005

Facts:

This case stemmed from the Complaint7 for Trademark Infringement, Injunction and Damages filed by petitioners LS & Co. and
LSPI against respondent Clinton Apparelle, Inc.* (Clinton Aparelle) together with an alternative defendant, Olympian Garments,
Inc. (Olympian Garments).

The Complaint alleged that LS & Co., engaged in the apparel business, is the owner by prior adoption and use of the internationally
famous "Dockers and Design" trademark. This ownership is evidenced by its valid and existing registrations in various member
countries of the Paris Convention. In the Philippines, it has a Certificate of Registration in the Principal Register for use of said
trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets under Class 25.

The "Dockers and Design" trademark was first used in the Philippines by LSPI, a domestic corporation engaged in the manufacture,
sale and distribution of various products bearing trademarks owned by LS & Co. To date, LSPI continues to manufacture and sell
Dockers Pants with the "Dockers and Design" trademark.10

LS & Co. and LSPI discovered the presence in the local market of jeans under the brand name "Paddocks" using a device which is
substantially, if not exactly, similar to the "Dockers and Design" trademark owned by and registered in the name of LS & Co.,
without its consent. Based on their information and belief, they added, Clinton Apparelle manufactured and continues to
manufacture such "Paddocks" jeans and other apparel.

ISSUE:

1.Whether the court should issue the writ of preliminary injunction.

2. Whether there is trademark dilution.

Ruling:

No.

1.There was scant justification for the issuance of the writ of preliminary injunction.

Petitioners anchor their legal right to "Dockers and Design" trademark on the Certificate of Registration issued in their favor by the
Bureau of Patents, Trademarks and Technology Transfer.* According to Section 138 of Republic Act No. 8293, 42 this Certificate of
Registration is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark and of the exclusive
Page 52 of 67
right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. Section
147.1 of said law likewise grants the owner of the registered mark the exclusive right to prevent all third parties not having the
owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to
those in respect of which the trademark is registered if such use results in a likelihood of confusion.

However, 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. Clinton Apparelle’s trademark, on the other hand, uses the
"Paddocks" word mark on top of a logo which according to petitioners is a slavish imitation of the "Dockers" design. The two
trademarks apparently differ in their word marks ("Dockers" and "Paddocks"), but again according to petitioners, they employ
similar or identical logos. It could thus be said that respondent only "appropriates" petitioners’ logo and not the word mark
"Dockers"; it uses only a portion of the registered trademark and not the whole.

Given the single registration of the trademark "Dockers and Design" and considering that respondent only uses the assailed device
but a different word mark, the right to prevent the latter from using the challenged "Paddocks" device is far from clear. Stated
otherwise, 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 owner’s consent of a portion
of a trademark registered in its entirety constitutes material or substantial invasion of the owner’s right.

It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the dominant or central feature of
petitioners’ trademark—the feature that prevails or is retained in the minds of the public—an imitation of which creates the
likelihood of deceiving the public and constitutes trademark infringement. 43 In sum, there are vital matters which have yet and may
only be established through a full-blown trial.

From the above discussion, we find that petitioners’ right to injunctive relief has not been clearly and unmistakably demonstrated.
The right has yet to be determined. Petitioners also failed to show proof that there is material and substantial invasion of their right
to warrant the issuance of an injunctive writ. Neither were petitioners able to show any urgent and permanent necessity for the writ
to prevent serious damage.

2. . In the case at bar, petitioners have yet to establish whether "Dockers and Design" has acquired a strong degree of distinctiveness.
Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging that the erosion or dilution of their
trademark is protectable. They assert that a trademark owner does not have to wait until the mark loses its distinctiveness to obtain
injunctive relief, and that the mere use by an infringer of a registered mark is already actionable even if he has not yet profited
thereby or has damaged the trademark owner.

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. 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." This is intended to protect famous marks from subsequent uses that blur
distinctiveness of the mark or tarnish or disparage it. 44

Based on the foregoing, to be eligible for protection from dilution, there has to be a finding that: (1) the trademark sought to be
protected is famous and distinctive; (2) the use by respondent of "Paddocks and Design" began after the petitioners’ mark became
famous; and (3) such subsequent use defames petitioners’ mark. In the case at bar, petitioners have yet to establish whether
"Dockers and Design" has acquired a strong degree of distinctiveness and whether the other two elements are present for their cause
to fall within the ambit of the invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to establish
that there was confusing similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin.

Page 53 of 67
 WILLAWARE PRODUCTS CORPORATION v. JESICHRIS MANUFACTURING CORPORATION, GR No. 195549,
2014-09-03

Facts:

Jesichris Manufacturing Company filed this present complaint for damages for unfair competition with prayer for permanent
injunction to enjoin Willaware Products Corporation from manufacturing and distributing plastic-made automotive parts similar to
those of Jesichris

Jesichris alleged that it is a duly registered partnership engaged in the manufacture and distribution of plastic and metal products

Jesichris further alleged that in view of the physical proximity of Willaware office to [respondent's office, and in view of the fact that
some of the respondent's]employees had transferred to Willaware Willaware had developed familiarity with Jesichris’ products,
especially its plastic-made automotive parts.

That sometime in November 2000, respondent discovered that Willaware had been manufacturing and distributing the same
automotive parts with exactly similar design, same material and colors but was selling these products at a lower price as [respondent's]
plastic-made... automotive parts and to the same customers.

Issues:

Whether or not petitioner committed acts amounting to unfair competition under Article 28 of the Civil Code.

Ruling:

The concept of "unfair competition" under Article 28 is very much broader than that covered by intellectual property laws. Under the
present article, which follows the extended concept of "unfair competition" in American jurisdictions, the term covers even cases of
discovery of... trade secrets of a competitor, bribery of his employees, misrepresentation of all kinds, interference with the fulfillment
of a competitor's contracts, or any malicious interference with the latter's business.

Article 28 of the Civil Code provides that "unfair competition in agricultural, commercial or industrial enterprises or in labor through
the use of force, intimidation, deceit, machination or any other unjust, oppressive or high-handed method shall give rise to a right of
action... by the person who thereby suffers damage."

In order to qualify the competition as "unfair," it must have two characteristics: (1) it must involve an injury to a competitor or trade
rival, and (2) it must involve acts which are characterized as "contrary to good conscience," or "shocking to judicial sensibilities," or...
otherwise unlawful; in the language of our law, these include force, intimidation, deceit, machination or any other unjust, oppressive
or high-handed method. The public injury or interest is a minor factor; the essence of the matter appears to be a private wrong
perpetrated by... unconscionable means.

Here, both characteristics are present.

First, both parties are competitors or trade rivals, both being engaged in the manufacture of plastic-made automotive parts.

Second, the acts of the petitioner were clearly "contrary to good conscience" as petitioner admitted having employed respondent's
former... employees, deliberately copied respondent's products and even went to the extent of selling these products to respondent's
customers.

As aptly observed by the court a quo, the testimony of petitioner's witnesses indicate that it acted in bad faith in competing with the
business of respondent, to wit:

In sum, petitioner is guilty of unfair competition under Article 28 of the Civil Code.

Page 54 of 67
 COCA-COLA BOTTLERS v. QUINTIN J. GOMEZ, GR No. 154491, 2008-11-14

Facts:

On July 2, 2001, Coca-Cola applied for a search warrant against Pepsi for hoarding Coke empty bottles in Pepsi's yard in
Concepcion Grande, Naga City, an act allegedly penalized as unfair competition under the IP Code. Coca-Cola claimed that the
bottles must be confiscated to preclude their illegal use, destruction or concealment by the respondents. 1 In support of the
application, Coca-Cola submitted the sworn statements of three witnesses: Naga plant representative Arnel John Ponce said he was
informed that one of their plant security guards had gained access into the Pepsi compound and had seen empty Coke bottles; acting
plant security officer Ylano A. Regaspi said he investigated reports that Pepsi was hoarding large quantities of Coke bottles by
requesting their security guard to enter the Pepsi plant and he was informed by the security guard that Pepsi hoarded several Coke
bottles; security guard Edwin Lirio stated that he entered Pepsi's yard on July 2, 2001 at 4 p.m. and saw empty Coke bottles inside
Pepsi shells or cases.

Issues:
Is the hoarding of a competitor's product containers punishable as unfair competition under the Intellectual Property Code (IP Code,
Republic Act No. 8293) that would entitle the aggrieved party to a search warrant against the hoarder?
Ruling:
In the context of the present case, the question is whether the act charged - alleged to be hoarding of empty Coke bottles -
constitutes an offense under Section 168.3 (c) of the IP Code.
SECTION 168. Unfair Competition, Rights, Regulation and Remedies.
168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from
those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or
services so... identified, which will be protected in the same manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who
shall commit any acts... calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action
therefor.
The petitioner theorizes that the above section does not limit the scope of protection on the particular acts enumerated as it expands
the meaning of unfair competition to include "other acts contrary to good faith of a nature calculated to discredit the goods, business
or... services of another." Allegedly, the respondents' hoarding of Coca Cola empty bottles is one such act.
We do not agree with the petitioner's expansive interpretation of Section 168.3 (c).
What unfair competition is, is further particularized under Section 168.3 when it provides specifics of what unfair competition is
"without in any way limiting the scope of protection against unfair competition." Part of these particulars is provided under Section
168.3(c)... which provides the general "catch-all" phrase that the petitioner cites. Under this phrase, a person shall be guilty of
unfair competition "who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or
services of... another."
The critical question, however, is not the intrinsic unfairness of the act of hoarding; what is... critical for purposes of Section 168.3
(c) is to determine if the hoarding, as charged, "is of a nature calculated to discredit the goods, business or services" of the
petitioner.
Under all the above approaches, we conclude that the "hoarding" - as defined and charged by the petitioner - does not fall within the
coverage of the IP Code and of Section 168 in particular. It does not relate to any patent, trademark, trade name or service mark that
the... respondents have invaded, intruded into or used without proper authority from the petitioner.
In this light, hoarding for purposes of destruction is closer to what another law - R.A. No. 623
If it serves any purpose at all in our discussions, it is to show that the underlying factual situation of the present case is in fact
covered by another law, not by the IP Code that the petitioner cites.
Viewed in this light, the lack of probable cause to support the disputed search warrant at once becomes apparent.

Page 55 of 67
 CHESTER UYCO v. VICENTE LO, GR No. 202423, 2013-01-28

FACTS:Respondent Lo and Philippine Burners Manufacturing Corp. (PBMC) filed a complaint against the officers of Wintrade
Industrial Sales Corp. (Wintrade), including petitioners and of National Hardware, including Mario Sy Chua, for violation of
Sec.169.1, in relation to Sec. 170 of RA 8293 for using the marks “Hipolito & Sea Horse & Triangular Device”, “Fama” and other
related marks, service marks and trade names of Casa Hipolito S.A. Portugal appearing in kerosene burners. Lo claimed in his
complaint that the Gasirel-Industria de Comercio e Componentes pra Gass, Lda. (Gasirel), the owner of the disputed marks executed
a deed of assignment transferring these marks in his favor, to be used in all countries except Europe and America. In a test buy, Lo
purchased from National Hardware kerosene burners with the subject marks and designations “Made in Portugal” and “Original
Portugal” in the wrappers. These products were manufactured by Wintrade. Lo claimed that as the assignee for the trademarks, he had
not authorized Wintrade to use these marks, nor had Casa Hipolito S.A. Portugal. While a prior authority was given to Wintrade’s
predecessor-in-interest, Wonder Project & Development Corp. (Wonder), Casa Hipolito S.A. Portugal had already revoked this
authority through a letter of cancellation dated May 31, 1993. The kerosene burners manufactured by Wintrade have caused confusion,
mistake and deception on the part of the buying public. Lo stated that the real and genuine burners are those manufactured by its agent,
PBMC. Petitioners reply stated that they own subject trademarks and variants and to prove this assertion they submitted as evidence
the certificates of registration with the Intellectual Property Office. They allegedly derived authority through Wonder, their
predecessor-in-interest. They also argued that the marks are merely descriptive and refer to the source of the design and the history of
the manufacture and not the origin of the goods. Chua in a separate answer said that he was not aware of Wintrade’s loss of authority,
had he known he would not have dealt with them, hence he could not be a part of the conspiracy. Chief Prosecutor found probable
cause to indict petitioners. The law seeks to protect the public; thus even if Lo does not have the legal capacity to sue, the State can
still prosecute to prevent damage and prejudice to the public. On appeal, DOJ issued a resolution affirming finding of probable cause.
The CA found no grave abuse of discretion on the part of DOJ and affirmed. Hence, this petition.

ISSUE: Whether or not there is finding of sufficient probable cause to indict petitioners for violation of RA 8293.

HELD: Yes, the Supreme Court ruled that there is no reversible error on the part of the CA and the DOJ to merit reconsideration. The
evidence shows that petitioners, who are officers of Wintrade, placed the words made in Portugal and original Portugal with the
disputed marks knowing fully well, because of their previous dealings with the Portugese Company, that these were the marks used
in products of Casa Hipolito. More importantly, the products that Wintrade sold were admittedly produced in the Philippines with no
authority form Casa Hipolito. The law on trademarks and trade names precisely precludes a person from profiting from the business
reputation built by another and from deceiving the public as to the origins of the products. These facts support the consistent findings
of the State Prosecutor, the DOJ and the CA that probable cause exists to charge the petitioners with false designation of origin. The
fact that the evidence did not come from Lo, but had been given by the petitioners, is of no significance.

The argument that the words "Made in Portugal" and "Original Portugal" refer to the origin of the design and not to the origin of the
goods does not negate the finding of probable cause

Page 56 of 67
 Joaquin vs. Drilon GR No. 108946

Facts:
BJ Productions, Inc (BJPI) is a holder of a Certificate of Copyright no. M922 issued on January 28, 1971 of “Rhoda and Me” which
is a dating show aired from 1970 to 1977. It submitted to the National Library an addendum its certificate of copyright specifying the
show’s format and style of presentation. While watching the television, its President, Francisco Joaquin saw on RPN Channel 9 the
episode on “It’s a Date” produced by IXL Productions. He wrote a letter to IXL’s president Gabriel Zosa informing him that BJPI has
a copyright of the same format as shown on their “It’s a Date” show in their “Rhoda and Me” show. Zosa sought to register IXL’s
copyright to their first episode of “It’s a Date” to the National Library. Petitioner filed a complaint in violation of PD No. 49 against
the respondent before the RTC of Quezon City. Respondent sought a review of the resolution from the Asst. City Prosecutor before
the Department of Justice.

Sec. of Justice Franklin Drilon directed to move for dismissal of the case against the respondents and denied the petitioner’s motion
for reconsideration hence this petition before the Supreme Court.

ISSUE:

Whether the format or mechanics or petitioner’s television show is entitled to copyright protection.

HELD:

The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise known as the Decree on
Intellectual Property, enumerates the classes of work entitled to copyright protection. The provision is substantially the same as Sec.
172 of the Intellectual Property Code of the Philippines (RA 8293). The format or mechanics of a television show is not included in
the list of protected works in Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot be extended to cover
them.

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

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

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

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

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

Page 57 of 67
 ABS-CBN Corporation v. Felipe Gozon, et al, G.R. No. 195956, March 11, 2015

Facts:

ABS-CBN allowed Reuters Television Service (Reuters) to air the... footages it had taken earlier under a special embargo
agreement. ABS-CBN alleged that under the special embargo agreement, any of the footages it took would be for the "use of
Renter's international subscribers only, and shall be considered and treated by Reuters under 'embargo' against use by other
subscribers in the Philippines. . . . [N]o... other Philippine subscriber of Reuters would be allowed to use ABS-CBN footage without
the latter's consent."

GMA-7... subscribes to both Reuters and Cable News Network (CNN). It received a live video feed of the coverage of Angelo dela
Cruz's arrival from Reuters.

GMA-7 immediately carried the live newsfeed in its program "Flash Report," together with its live broadcast.[13] Allegedly, GMA-
7 did not receive any notice or was not aware that Reuters was airing footages of ABS-CBN.[14] GMA-7's news... control room
staff saw neither the "No Access Philippines" notice nor a notice that the video feed was under embargo in favor of ABS-CBN.

ABS-CBN filed the Complaint for copyright infringement under Sections 177[16] and 211[17] of the Intellectual Property Code.

Assistant City Prosecutor Dindo Venturanza issued the Resolution[19] finding probable cause to indict Dela Peña-Reyes and
Manalastas.

Department of Justice Secretary Raul M. Gonzalez (Secretary Gonzalez) ruled in favor of... respondents and held that good faith
may be raised as a defense in the case.

Department of Justice Acting Secretary Alberto C. Agra (Secretary Agra) issued the Resolution (Agra Resolution) that reversed the
Gonzalez Resolution and found probable cause he ruled that:

Court of Appeals rendered the Decision granting the Petition and reversing and setting aside the Agra Resolution. To wit :
However, it is an admitted fact that petitioner GMA had only aired a five (5) second footage of the disputed live video feed that it
had received from Reuters and CNN as a subscriber. Indeed, petitioners had no notice of the right of ownership of private
respondent over the... same. Without notice of the "No Access Philippines" restriction of the live video feed, petitioner cannot he
faulted for airing a live video feed from Reuters and CNN.

Verily, as aptly opined by Secretary Gonzalez in his earlier Resolution, the act of petitioners in airing the five (5) second footage
was undeniably attended by good faith and it thus serves to exculpate them from criminal liability under the Code. While the

Intellectual Properly Code is a special law, and thus generally categorized as malum prohibitum, it bears to stress that the provisions
of the Code itself do not ipso facto penalize a person or entity for copyright infringement by the mere fact that one had used a...
copyrighted work or material.

Certainly so, in the exercise of one's moral and economic or copyrights, the very provisions of Part IV of the Intellectual Property
Code provide for the scope and limitations on copyright protection under Section 184 and in fact permit fair use of copyrighted
work under Section

With the aforesaid statutory limitations on one's economic and copyrights and the allowable instances where the other persons can
legally use a copyrighted work, criminal culpability clearly attaches only when the infringement had been knowingly and
intentionally... committed.

Issues:

whether there is probable cause to charge respondents with infringement under Republic Act No. 8293, otherwise known as the
Intellectual Property Code

whether there was fair use of the broadcast material;

whether lack of knowledge that a material is copyrighted is a defense against copyright infringement;

whether good faith is a defense in a criminal prosecution for violation of the Intellectual Property Code

Ruling:

Page 58 of 67
ABS-CBN claims that news footage is subject to copyright and prohibited use of copyrighted material is punishable under the
Intellectual Property Code. It argues that the new footage is not a "newsworthy event" but "merely an account of the arrival of
Angelo dela Cruz in the

Philippines — the latter being the newsworthy event":

On the other hand, respondents argue that ABS-CBN's news footage of Angelo dela Cruz's arrival is not copyrightable or subject to
protection

Certainly, the arrival of Angelo [d]ela Cruz, which aroused public attention and the consciousness of the Filipino people with regard
to their countrymen, OFWs working in foreign countries and how the Philippine government responds to the issues concerning
them,... is "news". There is no ingenuity or inventiveness added in the said news footage.

The news footage is copyrightable.

News or the event itself is not copyrightable. However, an event can be captured and presented in a specific medium. As recognized
by this court in Joaquin, television "involves a whole spectrum of visuals and effects, video and audio."[95] News... coverage in
television involves framing shots, using images, graphics, and sound effects. It involves creative process and originality. Television
news footage is an expression of the news.

Pacific & Southern Co. v. Duncan,[98] which involves a News Monitoring Service's videotaping and sale of WXIA-TVs news
broadcasts:... it is equally well-settled that copyright protection does extend to the reports themselves, as distinguished from the
substance of... the information contained in the reports.

Copyright protects the manner of expression of news reports, "the particular form or collocation of words in which the writer has
communicated it"

The idea/expression dichotomy is a complex matter if one is trying to determine whether a certain material is a copy of another.101
This dichotomy would be more relevant in determining, for instance, whether a stage play was an infringement of an author's book
involving the same... characters and setting. In this case, however, respondents admitted that the material under review — which is
the subject of the controversy — is an exact copy of the original. Respondents did not subject ABS-CBN's footage to any editing of
their own. The news footage did not... undergo any transformation where there is a need to track elements of the original.

VI

Respondents point out that upon seeing ABS-CBN's reporter Dindo Amparo on the footage, GMA-7 immediately shut off the
broadcast. Only five (5) seconds passed before the footage was cut. They argue that this shows that GMA-7 had no prior knowledge
of ABS-CBN's ownership of the... footage or was notified of it. They claim that the Angelo dela Cruz footage is considered a short
excerpt of an event's "news" footage and is covered by fair use.

This court defined fair use as "a privilege to use the copyrighted material in a reasonable manner without the consent of the
copyright owner or as copying the theme or ideas rather than their expression."[115] Fair use is an exception to the copyright...
owner's monopoly of the use of the work to avoid stifling "the very creativity which that law is designed to foster."

Determining fair use requires application of the four-factor test. Section 185 of the Intellectual Property Code lists four (4) factors to
determine if there was fair use of a copyrighted work:

The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational
purposes;

The nature of the copyrighted work;

The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

The effect of the use upon the potential market for or value of the copyrighted work.

First, the purpose and character of the use of the copyrighted material must fall under those listed in Section 185, thus: "criticism,
comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes."[117]
The purpose and character requirement is important in view of copyright's goal to promote creativity and encourage creation of
works. Hence, commercial use of the copyrighted work can be weighed against fair use.

Page 59 of 67
The "transformative test" is generally used in reviewing the purpose and character of the usage of the copyrighted work.[118] This
court must look into whether the copy of the work adds "new expression, meaning or message" to transform it into something...
else.[119] "Meta-use" can also occur without necessarily transforming the copyrighted work used.[120]

Second, the nature of the copyrighted work is significant in deciding whether its use was fair. If the nature of the work is more
factual than creative, then fair use will be weighed in favor of the user.

Third, the amount and substantiality of the portion used is important to determine whether usage falls under fair use. An exact
reproduction of a copyrighted work, compared to a small portion of it, can result in the conclusion that its use is not fair. There may
also be cases... where, though the entirety of the copyrighted work is used without consent, its purpose determines that the usage is
still fair.121 For example, a parody using a substantial amount of copyrighted work may be permissible as fair use as opposed to a
copy of a work produced purely... for economic gain.

Lastly, the effect of the use on the copyrighted work's market is also weighed for or against the user. If this court finds that the use
had or will have a negative impact on the copyrighted work's market, then the use is deemed unfair.

the primary reason for copyrighting newscasts by broadcasters would seem to be to prevent competing stations from rebroadcasting
current news from the station with the best... coverage of a particular news item, thus misappropriating a portion of the market share.

However, there are also many caveats with these exceptions. A common exception is that some stations rebroadcast the news of
others. The caveat is that generally, the two stations are not... competing for market share. CNN, for example, often makes news
stories available to local broadcasters.

Whether the alleged five-second footage may be considered fair use is a matter of defense. We emphasize that the case involves
determination of probable cause at the preliminary investigation stage. Raising the defense of fair use does not automatically mean
that no infringement... was committed. The investigating prosecutor has full discretion to evaluate the facts, allegations, and
evidence during preliminary investigation. Defenses raised during preliminary investigation are subject to further proof and
evaluation before the trial court. Given the... insufficiency of available evidence, determination of whether the Angelo dela Cruz
footage is subject to fair use is better left to the trial court where the proceedings are currently pending.

GMA-7's rebroadcast of ABS-CBN's news footage without the latter's consent is not an issue. The mere act of rebroadcasting
without authority from the owner of the broadcast gives rise to the probability that a crime was committed under the Intellectual
Property Code.

VII

Respondents cannot invoke the defense of good faith to argue that no probable cause exists.

Infringement under the Intellectual Property Code is malum prohibitum. The Intellectual Property Code is a special law. Copyright
is a statutory creation

The general rule is that acts punished under a special law are malum prohibitum.[129] "An act which is declared malum prohibitum,
malice or criminal intent is completely immaterial."

Unlike other jurisdictions that require intent for a criminal prosecution of copyright infringement, the Philippines does not
statutorily support good faith as a defense. Other jurisdictions provide in their intellectual property codes or relevant laws that mens
rea,... whether express or implied, is an element of criminal copyright infringement.

The Intellectual Property Code requires strict liability for copyright infringement whether for a civil action or a criminal
prosecution; it does not require mens rea or culpa

Respondents argue that live broadcast of news requires a different treatment in terms of good faith, intent, and knowledge to commit
infringement. To argue this point, they rely on the differences of the media used in Habana et al. v. Robles, Columbia Pictures v.
Court of

Appeals, and this case:

Petitioner ABS-CBN argues that lack of notice that the Angelo dela Cruz was under embargo is not a defense in copyright
infringement and cites the case of Columbia Pictures vs. Court of Appeals and Habana et al. vs. Robles (310 SCRA 511). However,
these cases... refer to film and literary work where obviously there is "copying" from an existing material so that the copier knew
that he is copying from an existing material not owned by him. But, how could respondents know that what they are "copying was
not [theirs]" when they... were not copying but merely receiving live video feed from Reuters and CNN which they aired? What
Page 60 of 67
they knew and what they aired was the Reuters live video feed and the CNN feed which GMA-7 is authorized to carry in its news
broadcast, it being a subscriber of... these companies[.]

It is apt to stress that the subject of the alleged copyright infringement is not a film or literary work but live broadcast of news
footage. In a film or literary work, the infringer is confronted face to face with the material he is allegedly copying and... therefore
knows, or is presumed to know, that what he is copying is owned by another. Upon the other hand, in live broadcast, the alleged
infringer is not confronted with the fact that the material he airs or re-broadcasts is owned by another, and therefore, he... cannot be
charged of knowledge of ownership of the material by another.

Respondents' arguments must fail.

To admit a... different treatment for broadcasts would mean abandonment of a broadcasting organization's minimum rights,
including copyright on the broadcast material and the right against unauthorized re broadcast of copyrighted material. The nature of
broadcast technology is precisely... why related or neighboring rights were created and developed. Carving out an exception for live
broadcasts would go against our commitments under relevant international treaties and agreements, which provide for the same
minimum rights.

Contrary to respondents' assertion, this court in Habana,[150] reiterating the ruling in Columbia Pictures,[151] ruled that lack of
knowledge of infringement is not a valid defense. Habana and Columbia

Pictures may have different factual scenarios from this case, but their rulings on copyright infringement are analogous. In Habana,
petitioners were the authors and copyright owners of English textbooks and workbooks. The case was anchored on the protection
of... literary and artistic creations such as books. In Columbia Pictures, video tapes of copyrighted films were the subject of the
copyright infringement suit.

In Habana, knowledge of the infringement is presumed when the infringer commits the prohibited act:

WHEREFORE, the Petition is partially GRANTED. The Department of Justice Resolution dated June 29, 2010 ordering the filing
of the Information is hereby REINSTATED as to respondents Grace Dela Peña-Reyes and John Oliver T. Manalastas. Branch 93 of
the

Page 61 of 67
 HABANA VS ROBLES
G.R. No. 131522 July 19, 1999

FACTS:

Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering their published works,
produced through their combined resources and efforts, entitled COLLEGE ENGLISH FOR TODAY (CET), Books 1 and 2, and
WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.

Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of another published work
entitled "DEVELOPING ENGLISH PROFICIENCY" (DEP for brevity), Books 1 and 2 (1985 edition) which book was covered by
copyrights issued to them.

In the course of revising their published works, petitioners scouted and looked around various bookstores to check on other textbooks
dealing with the same subject matter. By chance they came upon the book of respondent Robles and upon perusal of said book they
were surprised to see that the book was strikingly similar to the contents, scheme of presentation, illustrations and illustrative examples
in their own book, CET. After an itemized examination and comparison of the two books (CET and DEP), petitioners found that
several pages of the respondent's book are similar, if not all together a copy of petitioners' book, which is a case of plagiarism and
copyright infringement. Petitioners filed a complaint for Infringement.

Respondent Robles denied the allegations of plagiarism and copying that petitioners claimed. Respondent stressed that (1) the book
DEP is the product of her independent researches, studies and experiences, and was not a copy of any existing valid copyrighted book;
(2) DEP followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the
Association of Philippine Colleges of Arts and Sciences (APCAS), so any similarity between the respondents book and that of the
petitioners was due to the orientation of the authors to both works and standards and syllabus; and (3) the similarities may be due to
the authors' exercise of the "right to fair use of copyrigthed materials, as guides."

ISSUE:

Whether respondent Robles abused a writer's right to fair use, in violation of Section 11 of Presidential Decree No. 49

RULING:

YES.

The Supreme Court ruled that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and
examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights.

When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or even a large
portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.

In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration.
To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is
taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious
extent appropriated by another, that is sufficient in point of law to constitute piracy.

Page 62 of 67
 NBI MICROSOFT CORPORATION VS. JUDY C. HWANG

FACTS

Petitioner Microsoft Corp., owns the copyright and trademark to several computer software, while Private Respondents are
President/Managing Director, Gen. Manager, and Director of Beltron Computer Philippines, Inc. (Beltron) and Taiwan Machinery
Display & Trade Center, Inc. (TMTC), both domestic corporations.
Microsoft and Beltron entered into a Licensing Agreement, authorizing Beltron to reproduce and install no more than one
copy of Microsoft software on each Customer System hard disk or Read Only Memory (ROM) and distribute directly or indirectly
and license copies of the Product. Microsoft terminated the Agreement for Beltron’s non-payment of royalties. Afterwards,
Microsoft learned that respondents were illegally copying and selling Microsoft software. Hence, Microsoft hired the services of
Pinkerton Consulting Services (PCS), a private investigative firm and sought the assistance of the National Bureau of Investigation
(NBI). The investigating agents, posing as representatives of a computer shop, bought computer hardware and software from
Respondents. The items contain Microsoft Software, and the ROMs are encased in containers with Microsoft packaging. The Agents
were not given the Microsoft end-user license agreements, user’s manuals, registration cards or certificates of authenticity for the
articles they purchased. Based on articles obtained, Petitioner charged Respondents before the DOJ with Copyright Infringement
and Unfair Competition. DOJ dismissed Microsoft’s complaint for lack of merit and insufficiency of evidence. Hence, this petition.

ISSUE

Whether Private Respondents are liable for Copyright Infringement and Unfair Competition.

DECISION

YES. Section 5 of PD 49 enumerates the rights vested exclusively on the copyright owner. Contrary to the DOJ’s
ruling, the gravamen of copyright infringement is not merely the unauthorized manufacturing of intellectual works but rather the
unauthorized performance of any of the acts covered by Section 5. Hence, any person who performs any of the acts under Section 5
without obtaining the copyright owners prior consent renders himself civilly and criminally liable for copyright infringement.

Some of the counterfeit CD-ROMs bought from respondents were installer CD-ROMs containing Microsoft software only
or both Microsoft and non-Microsoft software. These articles are counterfeit per se because Microsoft does not (and could not have
authorized anyone to) produce such CD-ROMs. The copying of the genuine Microsoft software to produce these fake CD-ROMs
and their distribution are illegal even if the copier or distributor is a Microsoft licensee. The illegality of the non-installer CD-ROMs
purchased from respondents and of the Microsoft software pre-installed in the CPU is shown by the absence of the standard features
accompanying authentic Microsoft products, namely, the Microsoft end-user license agreements, user’s manuals, registration cards
or certificates of authenticity.

The counterfeit non-installer CD-ROMs that the Agents bought from respondents also suffice to support a finding of
probable cause to indict respondents for unfair competition under Article 189(1) of the Revised Penal Code for passing off
Microsoft products. From the pictures of the CD-ROMs packaging, one cannot distinguish them from the packaging of CD-ROMs
containing genuine Microsoft software. Such replication, coupled with the similarity of content of these fake CD-ROMs and the
CD-ROMs with genuine Microsoft software, implies intent to deceive.

Page 63 of 67
 ABS-CBN v. Philippine Multi-Media System

Facts:

Petitioner ABS-CBN, a broadcasting corporation, filed a complaint against respondent PMSI alleging that the latter’s unauthorized
rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright. PMSI posits that it was granted a franchise to
operate a digital direct-to-home satellite service and that the rebroadcasting was in accordance with the NTC memo to carry television
signals of authorized television broadcast stations, which includes petitioner’s programs. The IPO Bureau of Legal Affairs found
PMSI to have infringed petitioner’s broadcasting rights and ordered it to permanently desist from rebroadcasting. On appeal, the IPO
Director General found for PMSI. CA affirmed.

Issue:

Whether or not petitioner’s broadcasting rights and copyright are infringed.

Ruling: NO.

The Director-General of the IPO correctly found that PMSI is not engaged in rebroadcasting and thus cannot be considered to have
infringed ABS-CBN’s broadcasting rights and copyright.

Section 202.7 of the IP Code defines broadcasting as “the transmission by wireless means for the public reception of sounds or of
images or of representations thereof; such transmission by satellite is also ‘broadcasting’ where the means for decrypting are provided
to the public by the broadcasting organization or with its consent.” On the other hand, rebroadcasting as defined in Article 3(g) of the
International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, otherwise
known as the 1961 Rome Convention, of which the Republic of the Philippines is a signatory, is “the simultaneous broadcasting by
one broadcasting organization of the broadcast of another broadcasting organization.” The Working Paper prepared by the Secretariat
of the Standing Committee on Copyright and Related Rights defines broadcasting organizations as “entities that take the financial and
editorial responsibility for the selection and arrangement of, and investment in, the transmitted content.” Evidently, PMSI would not
qualify as a broadcasting organization because it does not have the aforementioned responsibilities imposed upon broadcasting
organizations, such as ABS-CBN.

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers receive in its unaltered form.
PMSI does not produce, select, or determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as
the origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely retransmits the same in accordance
with Memorandum Circular 04-08-88. With regard to its premium channels, it buys the channels from content providers and transmits
on an as-is basis to its viewers. Clearly, PMSI does not perform the functions of a broadcasting organization; thus, it cannot be said
that it is engaged in rebroadcasting Channels 2 and 23.

Page 64 of 67
 SISON OLANO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI v. LIM ENG CO

FACTS:

The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. Lim Eng Co (respondent) is the Chairman of LEC
Steel Manufacturing Corporation, a company which specializes in architectural metal manufacturing.
In 2002, LEC was invited by the Manansala Projecta high-end residential building in Rockwell Center, Makati, to submit
design/drawings for interior and exterior hatch doors. LEC complied by submitting shop plans/drawings embodying the designs and
specifications required for the metal hatch doors.
LEC was thereafter subcontracted by SKI-FB (the Manansala Project's contractor) to manufacture and install interior and exterior
hatch doors for the 7th to 22nd floors of the Project based on the final shop plans/drawings.
LEC learned that Metrotech was also subcontracted to install interior and exterior hatch doors for the Manansala Project's 23rd to 41st
floors.

On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech, however, insisted
that no copyright infringement was committed because the hatch doors it manufactured were patterned in accordance with the drawings
provided by SKI-FB.

On July 2, 2004, LEC deposited with the National Library the final designs and for the interior and exterior hatch doors of the Project.
On July 6, 2004, LEC was issued a Certificate of Copyright Registration with Nos. 1-2004-13 and 1-2004-14 and Deposit showing
that it is the registered owner of plans/drawings for interior and exterior hatch doors. This copyright pertains to class work "I" under
Section 172 of RA. 8293, The Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans, sketches, charts
and three-dimensional works relative to geography, topography, architecture or science."

On December 9, 2004, LEC was issued another Certificate of Copyright Registration and Deposit showing that it is the registered
owner of plans/drawings for interior and exterior hatch doors which is classified under Section 172(h) of R.A. No. 8293 as "original
ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied
art."
The LEC requested for a search warrant in the premises of Metrotech but the RTC quashed the warrant on the ground that copyright
infringement was not established. However, the raid conducted by the NBI on Metrotech's premises yielded no copies of LEC's
copyrighted sketches/drawings of hatch doors. What were discovered instead were finished and unfinished hatch doors. Thus, the
LEC filed a Complaint before the DOJ against the Metrotech for copyright infringement.

The investigating prosecutor of the DOJ dismissed the LEC complaint based on inadequate evidence showing that: (1) the petitioners
committed the prohibited acts under Section 177 of R.A. No. 8293; and (2) the interior and exterior hatch doors of the petitioners are
among the classes of copyrightable work enumerated in Sections 172 and 173 of the same law.
The respondent then sought recourse before the CA via a petition for certiorari ascribing grave abuse of discretion on the part of the
DOJ. The CA granted the petition finding that there is probable cause for copyright infringement against the Metrotech. Hence,
Metrotech appealed.

ISSUE
Whether the manufacturing of hatch doors fall within the purview of copyright infringement.

RULING
NO. Absent originality and copyrightability as elements of a valid copyright ownership, no infringement can subsist.
A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to its exclusive use and enjoyment
to the extent specified in the statute." Under Section 177 of R.A. No. 8293, the Copyright or Economic Rights consist of the exclusive
right to carry out, authorize or prevent the following acts:

177.1 Reproduction of the work or substantial portion of the work;

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer
program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or
the copy which is the subject of the rental;
177.5 Public display of the original or a copy of the work;
177.6 Public performance of the work; and
177.7 Other communication to the public of the work.

Page 65 of 67
Copyright infringement is thus committed by any person who shall use original literary or artistic works, or derivative works, without
the copyright owner's consent in such a manner as to violate the foregoing copy and economic rights. For a claim of copyright
infringement to prevail, the evidence on record must demonstrate: (1) ownership of a validly copyrighted material by the complainant;
and (2) infringement of the copyright by the respondent.
While both elements subsist in the records, they did not simultaneously concur so as to substantiate infringement of LEC's two sets of
copyright registrations.
Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section 172 of R.A. No. 8293 which covers
"illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science."
As such, LEC's copyright protection there under covered only the hatch door sketches/drawings and not the actual hatch door they
depict.

LEC failed to substantiate the alleged reproduction of the drawings/sketches of hatch doors copyrighted under Certificate of
Registration Nos. 1-2004-13 and 1-2004-14. There is no proof that Metrotech reprinted the copyrighted sketches/drawings of LEC's
hatch doors. What was found in the raid conducted by the NBI where only finished and unfinished hatch doors not the no copies or
reproduction of LEC's copyrighted sketches/drawings of hatch doors.

Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts and three-dimensional works relative
to geography, topography, architecture or science, to be properly classified as a copyrightable class "I" work, what was copyrighted
were their sketches/drawings only, and not the actual hatch doors themselves. To constitute infringement, the usurper must have
copied or appropriated the original work of an author or copyright proprietor, absent copying, there can be no infringement of
copyright.

"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea not the
idea itself."
With regard to LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that the ownership thereof was
not established by the evidence on record because the element of copyrightability is absent. "Ownership of copyrighted material is
shown by proof of originality and copyrightability." While it is true that where the complainant presents a copyright certificate in
support of the claim of infringement, the validity and ownership of the copyright is presumed. This presumption, however, is rebuttable
and it cannot be sustained where other evidence in the record casts doubt on the question of ownership, as in the instant case.
Moreover, "the presumption of validity to a certificate of copyright registration merely orders the burden of proof. The applicant
should not ordinarily be forced, in the first instance, to prove all the multiple facts that underline the validity of the copyright unless
the respondent, effectively challenging them, shifts the burden of doing so to the applicant."

Here, evidence negating originality and copyrightability as elements of copyright ownership was satisfactorily proffered against LEC's
certificate of registration.
The following averments were not successfully rebuffed by LEC:

[T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. In fact, they are just similar to hinges found in truck doors
that had been in common use since the 1960's. The gaskets on LEC's "hatch doors", aside from not being ornamental or artistic, were
merely procured from a company named Pemko and are not original creations of LEC. The locking device in LEC's "hatch doors" are
ordinary drawer locks commonly used in furniture and office desks.
From the foregoing description, it is clear that the hatch doors were not artistic works within the meaning of copyright laws.
A copyrightable work refers to literary and artistic works defined as original intellectual creations in the literary and artistic domain.
A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an opening that resembles a window
equipped with an escape for use in case of fire or emergency. It is thus by nature, functional and utilitarian serving as egress access
during emergency. It is not primarily an artistic creation but rather an object of utility designed to have aesthetic appeal. It is
intrinsically a useful article, which, as a whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray the appearance of the article
or to convey information" is excluded from copyright eligibility.

The only instance when a useful article may be the subject of copyright protection is when it incorporates a design element that is
physically or conceptually separable from the underlying product. This means that the utilitarian article can function without the
design element. In such an instance, the design element is eligible for copyright protection.
A belt, being an object utility with the function of preventing one's pants from falling down, is in itself not copyrightable. However,
an ornately designed belt buckle which is irrelevant to or did not enhance the belt's function hence, conceptually separable from the
belt, is eligible for copyright. It is copyrightable as a sculptural work with independent aesthetic value, and not as an integral element
of the belt's functionality.

Page 66 of 67
A table lamp is not copyrightable because it is a functional object intended for the purpose of providing illumination in a room. The
general shape of a table lamp is likewise not copyrightable because it contributes to the lamp's ability to illuminate the reaches of a
room. But, a lamp base in the form of a statue of male and female dancing figures made of semi vitreous china is copyrightable as a
work of art because it is unrelated to the lamp's utilitarian function as a device used to combat darkness.
In the present case, LEC's hatch doors bore no design elements that are physically and conceptually separable, independent and
distinguishable from the hatch door itself.

More importantly, they are already existing articles of manufacture sourced from different suppliers. Based on the records, it is
unrebutted that: (a) the hinges are similar to those used in truck doors; (b) the gaskets were procured from a company named Pemko
and are not original creations of LEC; and (c) the locking device are ordinary drawer locks commonly used in furniture and office
desks.
Being articles of manufacture already in existence, they cannot be deemed as original creations. As earlier stated, valid copyright
ownership denotes originality of the copyrighted material. Originality means that the material was not copied, evidences at least
minimal creativity and was independently created by the author. It connotes production as a result of independent labor. LEC did not
produce the door jambs and hinges; it bought or acquired them from suppliers and thereafter affixed them to the hatch doors. No
independent original creation can be deduced from such acts.

Page 67 of 67