Professional Documents
Culture Documents
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule 45 of the Rules of
Court, petitioner Pearl & Dean (Phil.) Inc. (P & D) assails the May 22, 2001
decision1 of the Court of Appeals reversing the October 31, 1996 decision2 of
the Regional Trial Court of Makati, Branch 133, in Civil Case No. 92-516
which declared private respondents Shoemart Inc. (SMI) and North Edsa
Marketing Inc. (NEMI) liable for infringement of trademark and copyright,
and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals3 contained a summary of
this dispute:
Two years later, Metro Industrial Services, the company formerly contracted
by Pearl and Dean to fabricate its display units, offered to construct light
boxes for Shoemart’s chain of stores. SMI approved the proposal and ten
(10) light boxes were subsequently fabricated by Metro Industrial for SMI.
After its contract with Metro Industrial was terminated, SMI engaged the
services of EYD Rainbow Advertising Corporation to make the light boxes.
Some 300 units were fabricated in 1991. These were delivered on a
staggered basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies
of its light boxes were installed at SM City and in the fastfood section of
SM Cubao. Upon investigation, Pearl and Dean found out that aside from the
two (2) reported SM branches, light boxes similar to those it manufactures
were also installed in two (2) other SM 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 noted that NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December
11, 1991 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," and the
payment to Pearl and Dean of compensatory damages in the amount of
Twenty Million Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two
hundred twenty-four (224) light boxes and NEMI took down its
advertisements for "Poster Ads" from the lighted display units in SMI’s stores.
Claiming that both SMI and NEMI failed to meet all its demands, Pearl and
Dean filed this instant case for infringement of trademark and copyright,
unfair competition and damages.
Wherefore, defendants SMI and NEMI are found jointly and severally liable
for infringement of copyright under Section 2 of PD 49, as amended, and
infringement of trademark under Section 22 of RA No. 166, as amended,
and are hereby penalized under Section 28 of PD 49, as amended, and
Sections 23 and 24 of RA 166, as amended. Accordingly, defendants are
hereby directed:
plus
(2) to deliver, under oath, for impounding in the National Library, all
light boxes of SMI which were fabricated by Metro Industrial Services
and EYD Rainbow Advertising Corporation;
SO ORDERED.4
The principle in Baker vs. Selden was likewise applied in Muller vs.
Triborough Bridge Authority [43 F. Supp. 298 (S.D.N.Y. 1942)]. In this case,
Muller had obtained a copyright over an unpublished drawing entitled
"Bridge Approach – the drawing showed a novel bridge approach to unsnarl
traffic congestion". The defendant constructed a bridge approach which was
alleged to be an infringement of the new design illustrated in plaintiff’s
drawings. In this case it was held that protection of the drawing does not
extend to the unauthorized duplication of the object drawn because
copyright extends only to the description or expression of the object and not
to the object itself. It does not prevent one from using the drawings to
construct the object portrayed in the drawing.
In fine, we cannot find SMI liable for infringing Pearl and Dean’s copyright
over the technical drawings of the latter’s advertising display units.
The records show that on June 20, 1983, Pearl and Dean applied for the
registration of the trademark "Poster Ads" with the Bureau of Patents,
Trademarks, and Technology Transfer. Said trademark was recorded in the
Principal Register on September 12, 1988 under Registration No. 41165
covering the following products: stationeries such as letterheads, envelopes
and calling cards and newsletters.
With this as factual backdrop, we see no legal basis to the finding of liability
on the part of the defendants-appellants for their use of the words "Poster
Ads", in the advertising display units in suit. Jurisprudence has interpreted
Section 20 of the Trademark Law as "an implicit permission to a
manufacturer to venture into the production of goods and allow that
producer to appropriate the brand name of the senior registrant on goods
other than those stated in the certificate of registration." The Supreme Court
further emphasized the restrictive meaning of Section 20 when it stated,
through Justice Conrado V. Sanchez, that:
While we do not discount the striking similarity between Pearl and Dean’s
registered trademark and defendants-appellants’ "Poster Ads" design, as
well as the parallel use by which said words were used in the parties’
respective advertising copies, we cannot find defendants-appellants liable for
infringement of trademark. "Poster Ads" was registered by Pearl and Dean
for specific use in its stationeries, in contrast to defendants-appellants who
used the same words in their advertising display units. Why Pearl and Dean
limited the use of its trademark to stationeries is simply beyond us. But,
having already done so, it must stand by the consequence of the registration
which it had caused.
Dissatisfied with the above decision, petitioner P & D filed the instant
petition assigning the following errors for the Court’s consideration:
ISSUES
In resolving this very interesting case, we are challenged once again to put
into proper perspective four main concerns of intellectual property law —
patents, copyrights, trademarks and unfair competition arising from
infringement of any of the first three. We shall focus then on the following
issues:
Petitioner P & D’s complaint was that SMI infringed on its copyright over the
light boxes when SMI had the units manufactured by Metro and EYD
Rainbow Advertising for its own account. Obviously, petitioner’s position was
premised on its belief that its copyright over the engineering drawings
extended ipso facto to the light boxes depicted or illustrated in said drawings.
In ruling that there was no copyright infringement, the Court of Appeals held
that the copyright was limited to the drawings alone and not to the light box
itself. We agree with the appellate court.
SEC. 2. The rights granted by this Decree shall, from the moment of creation,
subsist with respect to any of the following works:
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box
wraps;
Copyright, in the strict sense of the term, is purely a statutory right. Being a
mere statutory grant, the rights are limited to what the statute confers. It
may be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute.7 Accordingly,
it can cover only the works falling within the statutory enumeration or
description.8
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
application9 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."10 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,11 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:
This brings us to the next point: if, despite its manufacture and commercial
use of the light boxes without license from petitioner, private respondents
cannot be held legally liable for infringement of P & D’s copyright over
its technical drawings of the said light boxes, should they be liable instead
for infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a patent for the light
boxes. It therefore acquired no patent rights which could have protected its
invention, if in fact it really was. And because it had no patent, petitioner
could not legally prevent anyone from manufacturing or commercially using
the contraption. In Creser Precision Systems, Inc. vs. Court of Appeals,12 we
held that "there can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the patent
arises alone from the grant of patent. x x x (A)n inventor has no common
law right to a monopoly of his invention. He has the right to make use of and
vend his invention, but if he voluntarily discloses it, such as by offering it for
sale, the world is free to copy and use it with impunity. A patent, however,
gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the invention.13 On the assumption
that petitioner’s advertising units were patentable inventions, petitioner
revealed them fully to the public by submitting the engineering drawings
thereof to the National Library.
On one side of the coin is the public which will benefit from new ideas; on
the other are the inventors who must be protected. As held in Bauer & Cie
vs. O’Donnel,16 "The act secured to the inventor the exclusive right to make
use, and vend the thing patented, and consequently to prevent others from
exercising like privileges without the consent of the patentee. It was passed
for the purpose of encouraging useful invention and promoting new and
useful inventions by the protection and stimulation given to inventive genius,
and was intended to secure to the public, after the lapse of the exclusive
privileges granted the benefit of such inventions and improvements."
The law attempts to strike an ideal balance between the two interests:
The patent law has a three-fold purpose: "first, patent law seeks to foster
and reward invention; second, it promotes disclosures of inventions to
stimulate further innovation and to permit the public to practice the
invention once the patent expires; third, the stringent requirements for
patent protection seek to ensure that ideas in the public domain remain
there for the free use of the public."18
Therefore, not having gone through the arduous examination for patents,
the petitioner cannot exclude others from the manufacture, sale or
commercial use of the light boxes on the sole basis of its copyright certificate
over the technical drawings.
In the oft-cited case of Baker vs. Selden21 , the United States Supreme Court
held that only the expression of an idea is protected by copyright, not the
idea itself. In that case, the plaintiff held the copyright of a book which
expounded on a new accounting system he had developed. The publication
illustrated blank forms of ledgers utilized in such a system. The defendant
reproduced forms similar to those illustrated in the plaintiff’s copyrighted
book. The US Supreme Court ruled that:
xxx
Now, whilst no one has a right to print or publish his book, or any material
part thereof, as a book intended to convey instruction in the art, any person
may practice and use the art itself which he has described and illustrated
therein. The use of the art is a totally different thing from a
publication of the book explaining it. The copyright of a book on
bookkeeping cannot secure the exclusive right to make, sell and use account
books prepared upon the plan set forth in such book. Whether the art might
or might not have been patented, is a question, which is not before us. It
was not patented, and is open and free to the use of the public. And, of
course, in using the art, the ruled lines and headings of accounts must
necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant in this case
arises from a confusion of ideas produced by the peculiar nature of the art
described in the books, which have been made the subject of copyright. In
describing the art, the illustrations and diagrams employed happened to
correspond more closely than usual with the actual work performed by the
operator who uses the art. x x x The description of the art in a book,
though entitled to the benefit of copyright, lays no foundation for an
exclusive claim to the art itself. The object of the one is explanation;
the object of the other is use. The former may be secured by
copyright. The latter can only be secured, if it can be secured at all,
by letters patent." (underscoring supplied)
This issue concerns the use by respondents of the mark "Poster Ads" which
petitioner’s president said was a contraction of "poster advertising." P & D
was able to secure a trademark certificate for it, but one where the goods
specified were "stationeries such as letterheads, envelopes, calling cards and
newsletters."22 Petitioner admitted it did not commercially engage in or
market these goods. On the contrary, it dealt in electrically operated backlit
advertising units and the sale of advertising spaces thereon, which, however,
were not at all specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc.
vs. Intermediate Appellate Court,23where we, invoking Section 20 of the old
Trademark Law, ruled that "the certificate of registration issued by the
Director of Patents can confer (upon petitioner) the exclusive right to use its
own symbol only to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate x x x. One who has
adopted and used a trademark on his goods does not prevent the adoption
and use of the same trademark by others for products which are of a
different description."24 Faberge, Inc. was correct and was in fact recently
reiterated in Canon Kabushiki Kaisha vs. Court of Appeals.25
If at all, the cause of action should have been for unfair competition, a
situation which was possible even if P & D had no registration.26 However,
while the petitioner’s complaint in the RTC also cited unfair competition, the
trial court did not find private respondents liable therefor. Petitioner
did not appeal this particular point; hence, it cannot now revive its claim of
unfair competition.
By the nature of things, there can be no unfair competition under the law on
copyrights although it is applicable to disputes over the use of trademarks.
Even a name or phrase incapable of appropriation as a trademark or
tradename may, by long and exclusive use by a business (such that the
name or phrase becomes associated with the business or product in the
mind of the purchasing public), be entitled to protection against unfair
competition.27 In this case, there was no evidence that P & D’s use of "Poster
Ads" was distinctive or well-known. As noted by the Court of Appeals,
petitioner’s expert witnesses himself had testified that " ‘Poster Ads’ was too
generic a name. So it was difficult to identify it with any company, honestly
speaking."28 This crucial admission by its own expert witness that "Poster
Ads" could not be associated with P & D showed that, in the mind of the
public, the goods and services carrying the trademark "Poster Ads" could not
be distinguished from the goods and services of other entities.
This fact also prevented the application of the doctrine of secondary meaning.
"Poster Ads" was generic and incapable of being used as a trademark
because it was used in the field of poster advertising, the very business
engaged in by petitioner. "Secondary meaning" means that a word or phrase
originally incapable of exclusive appropriation with reference to an article in
the market (because it is geographically or otherwise descriptive) might
nevertheless have been used for so long and so exclusively by one producer
with reference to his article that, in the trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was
his property.29 The admission by petitioner’s own expert witness that he
himself could not associate "Poster Ads" with petitioner P & D because it was
"too generic" definitely precluded the application of this exception.
Having discussed the most important and critical issues, we see no need to
belabor the rest.
All told, the Court finds no reversible error committed by the Court of
Appeals when it reversed the Regional Trial Court of Makati City.
WHEREFORE, the petition is hereby DENIED and the decision of the Court
of Appeals dated May 22, 2001 is AFFIRMED in toto.
SO ORDERED.
SECOND DIVISION
Promulgated:
PFIZER, INC. and PFIZER (PHIL.)
INC., November 17, 2010
Respondents.
x----------------------------------------------
----x
DECISION
PERALTA, J.:
Before the Court is a petition for review on certiorari seeking to annul and
set aside the Resolutions dated January 18, 2005[1] and April 11, 2005[2] by
the Court of Appeals (CA) in CA-G.R. SP No. 82734.
The instant case arose from a Complaint[3] for patent infringement filed
against petitioner Phil Pharmawealth, Inc. by respondent companies, Pfizer,
Inc. and Pfizer (Phil.), Inc., with the Bureau of Legal Affairs of the
Intellectual Property Office (BLA-IPO). The Complaint alleged as follows:
xxxx
6. Pfizer is the registered owner of Philippine Letters Patent No.
21116 (the Patent) which was issued by this Honorable Office on
July 16, 1987. The patent is valid until July 16, 2004. The claims
of this Patent are directed to a method of increasing the
effectiveness of a beta-lactam antibiotic in a mammalian subject,
which comprises co-administering to said subject a beta-lactam
antibiotic effectiveness increasing amount of a compound of the
formula IA. The scope of the claims of the Patent extends to a
combination of penicillin such as ampicillin sodium and beta-
lactam antibiotic like sulbactam sodium.
11. In gross and evident bad faith, respondent and the hospitals
named in paragraph 9 hereof, willfully ignored complainants' just,
plain and valid demands, refused to comply therewith and
continued to infringe the Patent, all to the damage and prejudice
of complainants. As registered owner of the Patent, Pfizer is
entitled to protection under Section 76 of the IP Code.
x x x x[4]
Respondents prayed for permanent injunction, damages and the forfeiture
and impounding of the alleged infringing products. They also asked for the
issuance of a temporary restraining order and a preliminary injunction that
would prevent herein petitioner, its agents, representatives and assigns,
from importing, distributing, selling or offering the subject product for sale
to any entity in the Philippines.
In an Order[5] dated July 15, 2003 the BLA-IPO issued a preliminary
injunction which was effective for ninety days from petitioner's receipt of the
said Order.
Respondents filed a Motion for Reconsideration but the same was also
denied by the BLA-IPO in a Resolution[8] dated January 23, 2004.
Respondents then filed a special civil action for certiorari with the CA
assailing the October 15, 2003 and January 23, 2004 Resolutions of the BLA-
IPO. Respondents also prayed for the issuance of a preliminary mandatory
injunction for the reinstatement and extension of the writ of preliminary
injunction issued by the BLA-IPO.
While the case was pending before the CA, respondents filed a
Complaint[9] with the Regional Trial Court (RTC) of Makati City for
infringement and unfair competition with damages against herein petitioner.
In said case, respondents prayed for the issuance of a temporary restraining
order and preliminary injunction to prevent herein petitioner from importing,
distributing, selling or offering for sale sulbactam ampicillin products to any
entity in the Philippines. Respondents asked the trial court that, after trial,
judgment be rendered awarding damages in their favor and making the
injunction permanent.
On August 24, 2004, the RTC of Makati City issued an Order [10] directing the
issuance of a temporary restraining order conditioned upon respondents'
filing of a bond.
In a subsequent Order[11] dated April 6, 2005, the same RTC directed the
issuance of a writ of preliminary injunction prohibiting and restraining
[petitioner], its agents, representatives and assigns from importing,
distributing or selling Sulbactam Ampicillin products to any entity in the
Philippines.
On April 11, 2005, the CA rendered its presently assailed Resolution denying
the Motion to Dismiss, dated November 16, 2004, and the motion for
reconsideration, as well as Motion to Dismiss, both dated February 7, 2005.
In the first issue raised, petitioner argues that respondents' exclusive right
to monopolize the subject matter of the patent exists only within the term of
the patent. Petitioner claims that since respondents' patent expired on July
16, 2004, the latter no longer possess any right of monopoly and, as such,
there is no more basis for the issuance of a restraining order or injunction
against petitioner insofar as the disputed patent is concerned.
It is clear from the above-quoted provision of law that the exclusive right of
a patentee to make, use and sell a patented product, article or process
exists only during the term of the patent. In the instant case, Philippine
Letters Patent No. 21116, which was the basis of respondents in filing their
complaint with the BLA-IPO, was issued on July 16, 1987. This fact was
admitted by respondents themselves in their complaint. They also admitted
that the validity of the said patent is until July 16, 2004, which is in
conformity with Section 21 of RA 165, providing that the term of a patent
shall be seventeen (17) years from the date of issuance thereof. Section 4,
Rule 129 of the Rules of Court provides that an admission, verbal or written,
made by a party in the course of the proceedings in the same case, does not
require proof and that the admission may be contradicted only by showing
that it was made through palpable mistake or that no such admission was
made. In the present case, there is no dispute as to respondents' admission
that the term of their patent expired on July 16, 2004. Neither is there
evidence to show that their admission was made through palpable mistake.
Hence, contrary to the pronouncement of the CA, there is no longer any
need to present evidence on the issue of expiration of respondents' patent.
On the basis of the foregoing, the Court agrees with petitioner that after July
16, 2004, respondents no longer possess the exclusive right to make, use
and sell the articles or products covered by Philippine Letters Patent No.
21116.
Section 3, Rule 58, of the Rules of Court lays down the requirements for the
issuance of a writ of preliminary injunction, viz:
From the foregoing, it can be inferred that two requisites must exist to
warrant the issuance of an injunctive relief, namely: (1) the existence of a
clear and unmistakable right that must be protected; and (2) an urgent and
paramount necessity for the writ to prevent serious damage.[19]
In the instant case, it is clear that when the CA issued its January 18, 2005
Resolution approving the bond filed by respondents, the latter no longer had
a right that must be protected, considering that Philippine Letters Patent No.
21116 which was issued to them already expired on July 16, 2004. Hence,
the issuance by the CA of a temporary restraining order in favor of the
respondents is not proper.
Based on the foregoing, the Court finds that respondents' initial filing of their
complaint with the BLA-IPO, instead of the regular courts, is in keeping with
the doctrine of primary jurisdiction owing to the fact that the determination
of the basic issue of whether petitioner violated respondents' patent rights
requires the exercise by the IPO of sound administrative discretion which is
based on the agency's special competence, knowledge and experience.
However, the propriety of extending the life of the writ of preliminary
injunction issued by the BLA-IPO in the exercise of its quasi-judicial power is
no longer a matter that falls within the jurisdiction of the said administrative
agency, particularly that of its Director General. The resolution of this issue
which was raised before the CA does not demand the exercise by the IPO of
sound administrative discretion requiring special knowledge, experience and
services in determining technical and intricate matters of fact. It is settled
that one of the exceptions to the doctrine of primary jurisdiction is where the
question involved is purely legal and will ultimately have to be decided by
the courts of justice.[23] This is the case with respect to the issue raised in
the petition filed with the CA.
The elements of forum shopping are: (a) identity of parties, or at least such
parties that represent the same interests in both actions; (b) identity of
rights asserted and reliefs prayed for, the reliefs being founded on the same
facts; (c) identity of the two preceding particulars, such that any judgment
rendered in the other action will, regardless of which party is successful,
amount to res judicata in the action under consideration.[27]
Section 2, Rule 2 of the Rules of Court defines a cause of action as the act or
omission by which a party violates a right of another. In the instant case,
respondents' cause of action in their complaint filed with the IPO is the
alleged act of petitioner in importing, distributing, selling or offering for sale
Sulbactam Ampicillin products, acts that are supposedly violative of
respondents' right to the exclusive sale of the said products which are
covered by the latter's patent. However, a careful reading of the complaint
filed with the RTC of Makati City would show that respondents have the
same cause of action as in their complaint filed with the IPO. They claim that
they have the exclusive right to make, use and sell Sulbactam Ampicillin
products and that petitioner violated this right. Thus, it does not matter that
the patents upon which the complaints were based are different. The fact
remains that in both complaints the rights violated and the acts violative of
such rights are identical.
It is settled by this Court in several cases that the filing by a party of two
apparently different actions but with the same objective constitutes forum
shopping.[28] The Court discussed this species of forum shopping as follows:
Very simply stated, the original complaint in the court a
quo which gave rise to the instant petition was filed by the
buyer (herein private respondent and his predecessors-in-
interest) against the seller (herein petitioners) to enforce
the alleged perfected sale of real estate. On the other hand,
the complaint in the Second Case seeks to declare such
purported sale involving the same real property as
unenforceable as against the Bank, which is the petitioner
herein. In other words, in the Second Case, the majority
stockholders, in representation of the Bank, are seeking to
accomplish what the Bank itself failed to do in the original
case in the trial court. In brief, the objective or the
relief being sought, though worded differently, is the
same, namely, to enable the petitioner Bank to
escape from the obligation to sell the property to
respondent.[29]
In the instant case, the prayer of respondents in their complaint filed with
the IPO is as follows:
It is clear from the foregoing that the ultimate objective which respondents
seek to achieve in their separate complaints filed with the RTC and the IPO,
is to ask for damages for the alleged violation of their right to exclusively sell
Sulbactam Ampicillin products and to permanently prevent or prohibit
petitioner from selling said products to any entity.Owing to the substantial
identity of parties, reliefs and issues in the IPO and RTC cases, a decision in
one case will necessarily amount to res judicata in the other action.
Thus, the Court agrees with petitioner that respondents are indeed guilty of
forum shopping.
Jurisprudence holds that if the forum shopping is not considered willful and
deliberate, the subsequent case shall be dismissed without prejudice, on the
ground of either litis pendentia or res judicata.[35] However, if the forum
shopping is willful and deliberate, both (or all, if there are more than two)
actions shall be dismissed with prejudice.[36] In the present case, the Court
finds that respondents did not deliberately violate the rule on non-forum
shopping. Respondents may not be totally blamed for erroneously believing
that they can file separate actions simply on the basis of different patents.
Moreover, in the suit filed with the RTC of Makati City, respondents were
candid enough to inform the trial court of the pendency of the complaint
filed with the BLA-IPO as well as the petition for certiorari filed with the CA.
On these bases, only Civil Case No. 04-754 should be dismissed on the
ground of litis pendentia.
Civil Case No. 04-754, filed with the Regional Trial Court of Makati City,
Branch 138, is likewise DISMISSED on the ground of litis pendentia.
SO ORDERED.
SECOND DIVISION
ROMA DRUG and ROMEO G.R. No. 149907
RODRIGUEZ, as Proprietor
of ROMA DRUG, Present:
Petitioners,
QUISUMBING, J.,
Chairperson,
CARPIO-MORALES,
TINGA,
- versus - VELASCO, and
BRION, JJ.
Promulgated:
THE REGIONAL TRIAL COURT
OF GUAGUA, PAMPANGA, THE
PROVINCIAL PROSECUTOR OF April 16, 2009
PAMPANGA, BUREAU OF FOOD
& DRUGS (BFAD) and GLAXO
SMITHKLINE,
Respondents.
x----------------------------------------------------------------------------x
DECISION
TINGA, J.:
In this case, there is no doubt that the subject seized drugs are identical in
content with their Philippine-registered counterparts. There is no claim that
they were adulterated in any way or mislabeled at least. Their classification
as counterfeit is based solely on the fact that they were imported from
abroad and not purchased from the Philippine-registered owner of the patent
or trademark of the drugs.
Glaxo Smithkline and the Office of the Solicitor General (OSG) have opposed
the petition, the latter in behalf of public respondents RTC, Provincial
Prosecutor and Bureau of Food and Drugs (BFAD). On the constitutional
issue, Glaxo Smithkline asserts the rule that the SLCD is presumed
constitutional, arguing that both Section 15, Article II and Section 11, Article
XIII are not self-executing provisions, the disregard of which can give rise to
a cause of action in the courts. It adds that Section 11, Article XIII in
particular cannot be work to the oppression and unlawful of the property
rights of the legitimate manufacturers, importers or distributors, who take
pains in having imported drug products registered before the BFAD. Glaxo
Smithkline further claims that the SLCD does not in fact conflict with the
aforementioned constitutional provisions and in fact are in accord with
constitutional precepts in favor of the peoples right to health.
The Office of the Solicitor General casts the question as one of policy wisdom
of the law that is, beyond the interference of the judiciary.[5] Again, the
presumption of constitutionality of statutes is invoked, and the assertion is
made that there is no clear and unequivocal breach of the Constitution
presented by the SLCD.
II.
It may be that Rep. Act No. 9502 did not expressly repeal any
provision of the SLCD. However, it is clear that the SLCOs classification of
unregistered imported drugs as counterfeit drugs, and of corresponding
criminal penalties therefore are irreconcilably in the imposition conflict with
Rep. Act No. 9502 since the latter indubitably grants private third persons
the unqualified right to import or otherwise use such drugs. Where a statute
of later date, such as Rep. Act No. 9502, clearly reveals an intention on the
part of the legislature to abrogate a prior act on the subject that intention
must be given effect.[9] When a subsequent enactment covering a field of
operation coterminus with a prior statute cannot by any reasonable
construction be given effect while the prior law remains in operative
existence because of irreconcilable conflict between the two acts, the latest
legislative expression prevails and the prior law yields to the extent of the
conflict.[10] Irreconcilable inconsistency between two laws embracing the
same subject may exist when the later law nullifies the reason or purpose of
the earlier act, so that the latter loses all meaning and function.[11] Legis
posteriors priores contrarias abrogant.
III.
The absurd results from this far-reaching ban extends to implications that
deny the basic decencies of humanity. The law would make criminals of
doctors from abroad on medical missions of such humanitarian organizations
such as the International Red Cross,
the International Red Crescent, Medicin Sans Frontieres, and other
Even worse is the fact that the law is not content with simply banning, at
civil costs, the importation of unregistered drugs. It equates the importers of
such drugs, many of whom motivated to do so out of altruism or basic
human love, with the malevolents who would alter or counterfeit
pharmaceutical drugs for reasons of profit at the expense of public safety.
Note that the SLCD is a special law, and the traditional treatment of penal
provisions of special laws is that of malum prohibitumor punishable
regardless of motive or criminal intent. For a law that is intended to help
save lives, the SLCD has revealed itself as a heartless,
soulless legislative piece.
SO ORDERED.
DECISION
CARPIO-MORALES, J.:
The Letters Patent No. 14561 issued by the then Philippine Patents Office is
hereby declared null and void for being in violation of Sections 7, 9 and 15 of
the Patents Law.
On appeal, the Court of Appeals, by Decision of April 21, 1995, [10] upheld
the trial courts finding that private respondent was not liable for any
infringement of the patent of petitioner in light of the latters failure to show
that Albendazole is the same as the compound subject of Letters Patent No.
14561. Noting petitioners admission of the issuance by the U.S. of a patent
for Albendazole in the name of Smith Kline and French Laboratories which
was petitioners former corporate name, the appellate court considered the
U.S. patent as implying that Albendazole is different from methyl 5
propylthio-2-benzimidazole carbamate. It likewise found that private
respondent was not guilty of deceiving the public by misrepresenting that
Impregon is its product.
The appellate court, however, declared that Letters Patent No. 14561
was not void as it sustained petitioners explanation that Patent Application
Serial No. 18989 which was filed on October 8, 1976 was a divisional
application of Patent Application Serial No. 17280 filed on June 17, 1975
with the Philippine Patent Office, well within one year from petitioners filing
on June 19, 1974 of its Foreign Application Priority Data No. 480,646 in the
U.S. covering the same compound subject of Patent Application Serial No.
17280.
Applying Section 17 of the Patent Law, the Court of Appeals thus ruled
that Patent Application Serial No. 18989 was deemed filed on June 17, 1995
or still within one year from the filing of a patent application abroad in
compliance with the one-year rule under Section 15 of the Patent Law. And
it rejected the submission that the compound in Letters Patent No. 14561
was not patentable, citing the jurisprudentially established presumption that
the Patent Offices determination of patentability is correct. Finally, it ruled
that petitioner established itself to be the one and the same assignee of the
patent notwithstanding changes in its corporate name. Thus the appellate
court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED
with the MODIFICATION that the orders for the
nullification of Letters Patent No. 14561 and for its
cancellation are deleted therefrom.
SO ORDERED.