-------TRADEMARK INFRINGEMENT

16. Shangrila International Hotel Management, Ltd. V. Developers Group of Companies, Inc., GR 159938, March 31, 2006, Garcia, J., Second Division.
FACTS:
DGCI claims ownership of the “Shangri-La” mark and “S” logo. DGCI claims ownership based on its prior use within the country. It filed on Oct. 18, 1982 with
BPTTT an application for registration of this mark and logo. A certificate of registration was issued. DGCI started using Shangri-La mark and “S” logo in its
restaurant business.

The Kuok family operates a chain of hotels since 1969. As far back as 1962, it adopted “Shangri-La” as part of the corporate names of all companies organized under
the Kuok Group of Companies. To centralize operations of all Shangri-La hotels and the ownership of the Shangri-La mark and “S” logo, the Kuok group
incorporated in HK and SG Shangri-La International Hotel Management, Ltd (SLIHM). EDSA Shangri-La hotel and Makati Shangri-La hotel were incorporated in
PHL beginning 1987. Until 1987 or 1988, petitioners did not operate any establishment in PHL.

Shangri-La Hotel SG commissioned a Singaporean design artist, a William Lee, to conceptualize the logo of Shangri-La hotels. During the launching of the stylized
“S” logo in Feb. 1975, Lee explained:
The logo which is shaped like a "S" represents the uniquely Asean architectural structures as well as keep to the legendary Shangri-la theme
with the mountains on top being reflected on waters below and the connecting centre [sic] line serving as the horizon.

The Kuok Group and SLIHM registered the “Shangri-La” mark and “S” logo in patent offices in different countries around the world.

Petitioners filed in BPTTT a petition praying for cancellation of the registration of “Shangri-La” mark and “S” logo issued to DGCI. DGCI then filed a complaint for
infringement against petitioners in RTC. Petitioners point to the Paris Convention as affording protection to SLIHM’s exclusive right to said mark and logo.

DGCI president, Ramon Syhunliong, testified during the trial: 1) he admitted knowing Shangri-La Hotel in HK since August 1982; 2) he says that the S logo was
given to him scribbled on a paper by a jeepney signboard artist in Balintawak in Dec. 1982.

RTC ruled that petitioner infringed DGCI’s logo. CA affirmed. Hence this petition.

ISSUE:
Whether petitioners are guilty of trademark infringement.
HELD: NO.
1) Under the former trademark law, RA 166, in effect until Dec. 31, 1997, hence in force at the time of DGCI’s application, the root of ownership of a trademark is
actual use in commerce. S2 requires that before a mark can be registered, it must have been actually used in commerce for not less than 2 months in PHL.

1.1) By itself, registration is not a mode of acquiring ownership. If applicant is not the owner of the mark applied for, he has no right to apply for registration.
Registration merely creates a prima facie presumption of the validity of registration, of registrant’s ownership, and of the exclusive right to the use thereof. Such
presumption is rebuttable.

Here, DGCI’s own witness Ramon Syhunliong testified that a jeepney signboard artist commissioned to create the mark submitted the designs in Dec. 1982. This was
2 and a half months after the filing of DGCI’s application on Oct. 18, 1982 with BPTTT. Thus, DGCI cannot claim that the 2-month prior use requirement was
complied with.

2) It is difficult to understand why, of the millions of terms and combination of letters and designs available, DGCI had to choose exactly the same mark and logo as
that of petitioners if there was no intent to take advantage of the goodwill of petitioners’ mark. One who has imitated the trademark of another cannot bring an
action for infringement, particularly against the true owner of the mark, because he would be coming to court with unclean hands. Priority is of no avail to the
bad faith of DGCI.

Under either Section 17 of R.A. No. 166, or Section 151 of R.A. No. 8293, or Article 6bis(3) of the Paris Convention, no time limit is fixed for the cancellation of
marks registered or used in bad faith. This is why petitioners filed an inter partes case before BPTTT for cancellation of DGCI’s registration.

3) It is established and admitted by Ramon Syhunliong himself that petitioners had prior widespread use of the mark and logo abroad. RA 166 states:
Section 2. What are registrable. — Trademarks, trade names and service marks owned by persons, corporations, partnerships or associations domiciled in
the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the
provisions of this Act: Provided, That said trademarks trade names, or service marks areactually in use in commerce and services not less than two
months in the Philippines before the time the applications for registration are filed; xxx.
Section 2-A. Ownership of trademarks, trade names and service marks; how acquired. — Anyone who lawfully produces or deals in merchandise of any
kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business,
and in the service rendered, may appropriate to his exclusive use a trademark, a trade name, or a service mark not so appropriated by another, xxx.
CA held that the law requires actual use in commerce of the trade name and S logo in PHL. Thus, since petitioner’s use was mostly abroad and not in PHL, it is
understandable for CA to rule for DGCI. But CA failed to perceive that there is a crucial difference between S2 and S2-A. S2 provides for what is registrable while
S2-A sets out how ownership is acquired. These are distinct concepts.

3.1) In S2, to register a mark, one must be the owner and must have actually used the mark in commerce in PHL for 2 months prior to application. Since “ownership”
is required for registration, S2-A defines how one acquires ownership. S2-A does not require that actual use of a trademark must be within the PHL. Thus, under RA
166, one may be the owner of a mark but not yet have the right to register ownership due to failure to use it within PHL for 2 months.

3.2) While petitioners are not qualified in S2, neither did DGCI since DGCI failed to fulfill the 2-month actual use requirement. Worse, DGCI was not even the owner
of the mark. For it to be owner, the mark must not have been already appropriated by someone else. At the time DGCI registered its mark, the same was already being
used by petitioners, albeit abroad, of which Ramon Syhunliong was fully aware.

4) DGCI claims that since petitioner adopted “Shangri-La” mark and “S” logo as a mere corporate name or name of their hotels, instead of using them as
trademark/service mark, such name and logo are not trademarks. But the 2 concepts of corporate/business name and trademark/service mark are not mutually
exclusive. It is like that the NAME of a corporation or business is ALSO its trade name, trademark, or service mark. S38, RA 166 defines the terms thus:
Sec. 38. Words and terms defined and construed — In the construction of this Act, unless the contrary is plainly apparent from the context — The term
"trade name" includes individual names and surnames, firm names, trade names, devices or words used by manufacturers, industrialists, merchants,
agriculturists, and others to identify their business, vocations or occupations; the names or titles lawfully adopted and used by natural or juridical persons;
xxx.
The term "trade mark" includes 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.
 The term "service mark" means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the
services of others and includes without limitation the marks, names, symbols, titles, designations, slogans, character names, and distinctive features of
radio or other advertising.

Clearly, from the broad definitions, petitioners can be considered as having used “Shangri-La” and “S” logo as a tradename and service mark.

4) The new IP Code, RA 8293 shows the resolve of PHL to follow the Paris Convention by incorporating the relevant portions of the Convention such that persons
who may question a mark (oppose, petition to cancel, sue for UC) include persons whose internationally well-known mark, whether or not registered, is identical with
or confusingly similar to or constitutes a translation of a mark sought to be registered or is actually registered.

But IP Code took effect on January 1, 1998 and, without a retroactivity clause, RA 166 applies. Since RA 166 requires actual use in commerce in PHL, and Paris
Convention mandates protection to internationally known marks as signatory to the convention without regard as to whether the foreign corporation is doing business
in PHL, the Convention runs afoul of RA 166. Our municipal law on trademarks requiring actual use in PHL must subordinate an international agreement.

4.1) Thus, petitioners cannot claim protection under Paris Convention. But due to lack of 2-month prior use and respondent’s bad faith in the registration of the mark,
petitioners are not guilty of infringement. It is great injustice to adjudge petitioners guilty of infringing a mark when they are the creators thereof.

17. Prosource International Inc. v. Horphag Research Management SA, GR 180073, November 25, 2009, Nachura, J., Third Division.
FACTS:
Horphag is a corporation organized under the laws of Switzerland and owner of mark PYCNOGENOL, food supplement sold by Zuellig Pharma Corporation.
Horphag discovered that Prosource was also distributing a similar food supplement using PCO-GENOLS since 1996. Horphag demanded that Prosource cease from
using the mark. Prosource, without notifying Horphag, discontinued the use of PCO-GENOLS and changed its mark to PCO-PLUS.

Horphag filed a complaint for infringement of trademark against Prosource with damages. Prosource contended that Horphag is not the registered owner of
PYCNOGENOL but one Horphag Research Limited. It also claims that the marks are not confusingly similar. It denied liability since it discontinued the use of the
mark prior to filing of the infringement case.

RTC ruled for Horphag. CA affirmed. Hence this petition.

ISSUE:
Whether Prosource is guilty of infringement.
HELD: YES.
Prosource’s use of PCO-GENOLS started in 1996 and ended in June 2000. Thus, this case should be decided under RA 166 for acts committed until Dec. 31, 1997
and RA 8293 on January 1, 1998 until June 19, 2000.

S22 of RA 166 and S155 of RA 8293 define trademark infringement:

Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or
colorable imitation of any registered mark or tradename in connection with the sale, offering for sale, or advertising of any goods, business or services on
or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or reproduce, counterfeit, copy of colorably imitate any such mark or tradename and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business, or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.
Sec. 155. 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 which such 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
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.
The elements of S22, RA 166 are:
(a) A trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office[;]
(b) [It] is used by another person in connection with the sale, offering for sale, or advertising of any goods, business or services 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 such trademark is reproduced, counterfeited, copied or colorably imitated by another person and such reproduction, counterfeit, copy or
colorable imitation 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 as to likely cause confusion or mistake or to deceive purchasers[;]
(c) [T]he trademark is used for identical or similar goods[;] and
(d) [S]uch act is done without the consent of the trademark registrant or assignee
The elements of infringement in RA 8293 are:

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.

It is the element of likelihood of confusion that is the gravamen of trademark infringement. In determining likelihood of confusion, jurisprudence developed
dominancy and holistic test.

1) CA, applying dominancy test, found confusingly similarity. It held:

“PYCNOGENOL and PCO-GENOLS have the same suffix GENOL, which appears merely descriptive of the origin of the article and hence open for trademark
registration. Further, although the letters Y and N and S are missing in PCO-GENOLS, nonetheless, when the 2 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, identi􏰋ed as such by their public consumers.”

2) This is not the first time SC takes into account the aural effects of the words and letters in the marks in determining confusing similarity. We held as confusingly
similar SALONPAS/LIONPAS, Gold Dust/Gold Drop, Jantzen/Jass-Sea, Cutex/Cuticlean, Hebe/Meje, Kotex/Femetex etc.

3) The issue of infringement is factual, with both RTC and CA finding the allegations of infringement meritorious. Factual determinations of trial court concurred in
by CA are final and binding on SC. Thus, Prosource is liable for infringement.

18. Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc., GR 169504, March 03, 2010, Carpio, J., Second Division.
FACTS:
Coffee Partners (CPI) is a local corporation in the business of establishing and maintening coffee shops in PH. It has a franchise agreement with Coffee Partners Ltd.
(CPL) for a non-exclusive right to operate coffee shops in PHL using trademarks designed by CPL such as SAN FRANCISCO COFFEE. Respondent San Francisco
Coffee & Roastery (SFCR) is a local corporation in the wholesale and retail sale business of coffee. It registered the business name SAN FRANCISCO COFEE &
ROASTERY, INC. with DTI in June 1995.

In June 2001, SFCR discovered that CPI was about to open a coffee shop under the name SAN FRANCISCO COFFEE in QC. SFCR claims that CPI’s shop caused
confusion in the minds of the public as it had a similar name and it also engaged in the business of selling coffee. SFCR filed a complaint for infringement and UC in
the BLA-IPO. CPI claims that it filed in IPO applications for registration of SAN FRANCISCO COFFEE & DEVICE for class 42 goods in 1999 and class 35 in 2000.
CPI claims its mark cannot be confused with SFCR’s tradename because of nnotable distinctions in their appearances.

BLA-IPO held that CPI’s mark infringed SFCR’s tradename. Director General of IPO reversed. CA reinstated BLA-IPO’s finding of infringement. Hence this
petition.

ISSUE:
Whether CPI’s SAN FRANCISCO COFFEE infringes SAN FRANCISCO COFFEE & ROASTERY, INC.
HELD: YES.
In Prosource International, Inc. v. Horphag, we held what constitutes infringement of an unregistered trade name:

1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be
registered;

Thus, a tradename need not be registered with IPO before an infringement suit may be filed by its owner. All that is required is that the tradename is previously
used in trade or commerce in PH.

Under S22, RA 166, registration of tradename was required for the institution of an infringement suit. But RA 8293 has dispensed with the registration requirement.
S165.2 of RA 8293 states:
SEC. 165.2 (a) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior
to or without registration, against any unlawful act committed by third parties.
1) Applying either dominancy or holistic test, SAN FRANCISCO COFFEE mark is a clear infringement of SFRC’s SAN FRANCISCO COFFEE & ROASTERY,
INC. tradename. The descriptive words SAN FRANCISCO COFFEE are the dominant features of respondent’s tradename. CPI and SFRC are in the same business of
selling coffee. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another. Here, the
consuming public will likely be confused as to the source of the coffee being sold at CPI’s coffee shops.

1.1) CPI’s claim that “San Francisco” is just a proper name referring to the famous city in California and that “coffee” is simply a generic term is untenable. SFRC has
acquired an exclusive right to use the trade name SAN FRANCISCO COFFEE & ROASTERY INC. since the registration of the business name with DTI in 1995. Of
course, this does not mean that SFRC has exclusive use of the geographic word “San Francisco” or the generic word “coffee”. It is only the COMBINATION
OF WORDS “SAN FRANCISCO COFFEE” which is SFRC’s trade name in its coffee business that is protected against infringement on matters related to
the coffee business.

19. Ong v. People, GR 169440, November 23, 2011, Leonardo-de Castro, J., First Division.
FACTS:
Maria Teresa Gemma Catacutan (Gemma Ong) was charged in RTC for infringement under S155 in relation to S170 of RA 8293. The information accuses her of
selling counterfeit Marlboro cigarettes.

The senior investigator of the IP Rights unit of the Economic Intelligence and Investigation Bureau (EIIB), DOF, Jessee Lara received information that counterfeit
Marlboro cigarettes were being sold by Chinese nationals in Tondo, Quiapo, Binondo, and Sta. Cruz. A mission team was formed. EIIB agents did test-buys on
different sari-sari stores of Manila in said areas and took samples of Marlboro cigarettes sold therein. During surveillance, the container van delivering Marlboro
cigarettes packed in black plastic bags was seen parked in 1667 Bulacan corner Hizon St., Sta. Cruz (premises). They learned that this place is owned by Jackson Ong.

Marlboro found the samples of cigarettes were indeed fake products. EIIB secured a search warrant and went back to the premises. Jackson Ong was not there. It was
accused Gemma, either spouse or common-law wife, of Jackson who entertained them. The team found Marlboro cigarettes stocked in several boxes containing 50
reams inside each box packed in black plastic sacks like in balikbayan boxes. EIIB filed a case for violation of S155 in relation to S170 of RA 8293.

Gemma claims that she is not the Gemma Ong accused in this case. She claims that she did not know Jackson Ong.

RTC convicted Gemma. It found that Gemma’s business address, “Fascinate Trading,” is registered as 1677 Bulacan Street, the same property raided by the EIIB
team. CA affirmed. Hence this petition.

ISSUE:
Whether Gemma is guilty of trademark infreingement.
HELD: YES.
RA 8293, S155 provides:
Section 155. 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;
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 xxx 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.

1) In Mcdo v. LC Big Mak, SC held that to establish infringement, these are the elements: 1) validity of plaintiff’s mark; 2) plaintiff’s ownership thereof; 3) the use of
the mark or its colorable imitation by the infringer results in likelihood of confusion.

A mark is valid if it is distinctive and not barred from registration. Once registered, not only the mark's validity, but also the registrant's ownership of the mark is
prima facie presumed. The prosecution was able to establish that the trademark "Marlboro" was not only valid for being neither generic nor descriptive, it was also
exclusively owned by PMPI, as evidenced by the certificates of registration issued by the Intellectual Property Office of the Department of Trade and Industry.

Anent the element of confusion, both the RTC and the Court of Appeals have correctly held that the counterfeit cigarettes seized from Gemma's possession were
intended to confuse and deceive the public as to the origin of the cigarettes intended to be sold, as they not only bore PMPI's mark, but they were also packaged
almost exactly as PMPI's products.

20. Republic Gas Corporation v. Petron Corporation, GR 194062, June 17, 2013, Peralta, J., Third Division.
FACTS:
Petron and Pilipinas Shell Petroleum Corporation (Shell) are 2 of the largest bulk suppliers and producers of LPG in PHL. Petron is the registered owner in PHL of the
trademarks GASUL and GASUL cylinders used for its LPG products. It is the sole entity in PHL authorized to allow refillers and distributors to refill, use, and sell
GASUL LPG containers and trademarks. Shell is the authorized user in PHL of the trademarks and tradename of its principal Shell International Petroleum Company
Ltd. Including marks SHELLANE and SHELL device in connection with the sale and distribution of SHELLANE LPGs. It is the only corporation authorized to allow
refillers to refill SHELLANE LPG containers.

Petitioners are the directors and officers of Republic Gas Corporation (Regasco), an entity duly licensed engage in the business of refilling, buying, selling, and
marketing Liquefied Petroleum Gas (LPG).

The LPG Dealers Associations received reports that certain entities were engaged in the unauthorized refilling of LPG cylinders bearing the registered tradenames and
marks of respondents Petron and Shell. Adarlo, for the association, filed a letter complaint in NBI. An investigation was conducted which showed the Regasco LPG
Refilling Plant in Malabon was engaged in refilling and selling LPG cylinders bearing the registered marks of respondents without authority.

NBI conducted a test-buy operation, bringing in 4 empty LGP cylinders with the marks of SHELLANE and GASUL. Inside the plant, Regaso employees refilled the
cylinders and payment was made therefor. NBI applied for and secured search warrants. NBI operatives went to the Regasco LPG Refilling station in Malabon and
served the warrants. They seized several empty and filled Shellane and Gasul cylinders.

NBI filed a complaint in DOJ against petitioners for violation of S155 and 168 of RA 8293. The prosecutor dismissed the complaint. SOJ approved the dismissal.
Respondents filed a petition for certiorari in CA, which was granted. Hence this petition by petitioners for review on certiorari.

ISSUE:
Whether there is probable cause to hold petitioners liable for trademark infringement and UC under S155 and 168 in relation to S170 of RA 8293.
HELD: YES.
1) S155 states:
Section 155. 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 of 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;
The mere unauthorized use of a container bearing a registered trademark in connection with the sale, distribution, or advertising of goods or services which is likely
to cause confusion or deception among consumers is trademark infringement.
1.1) Here, petitioners committed infringement when they refilled, without respondents’ consent, LPG containers bearing the registered marks of respondents.
Petitioners’ acts will confuse the consuming public since they have no way of knowing that the gas in the LPG tanks bearing respondents’ marks is in reality not the
latter’s LPG product after the same had been illegally refilled. The public will then believe that petitioners are authorized refillers and distributors of
respondents’ LPG products since they are accepting empty containers of respondents and refilling them for resale.

2) As to the charge of UC, RA 8293 states:

Section 168. Unfair Competition, Rights, Regulations and Remedies. —
168.3 In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair
competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance,
which would be likely to in􏰃uence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer
or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;

Unfair competition is defined as the passing off (or palming off) or attempting to pass off upon the public of the goods or business of one person as the goods or
business of another with the end and probable effect of deceiving the public. Passing off takes place where 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.

2.1) Here, by refilling and selling LPG cylinders with respondents’ registered marks, petitioners are selling goods by giving them the general appearance of goods
of another manufacturer. The consumers may be misled into believing that the LPGs in the cylinders are those of petitioners when in fact they are not.

Thus, there is probable cause.

21. RE:DESIGNATION OF AN INTELLECTUAL PROPERTY JUDGE FOR MLA, AM 02-1-11-SC, February 19, 2002, En Banc.
Gentlemen:
Quoted hereunder, for your information, is a resolution of this Court dated FEB 19 2002.
A.M. No. 02-1-11-SC (Re:Designation of an Intellectual Property Judge for Manila.)

(A) - Acting on the memorandum dated 15 January 2002 of Deputy Court Administrator Christopher O. Lock, favorably endorsed by Court Administrator Presbitero
J. Velasco, Jr., the Court hereby designates Branch 24 of the Regional Trial Court of Manila, presided over by Judge ANTONIO M. EUGENIO, JR., as Special
Intellectual Property Court for Manila in substitution of Branch 1 of said Court which was designated Special Intellectual Property Court, then presided over by Judge
Rebecca de Guia Salvador (now Associate Justice of the Court of Appeals), pursuant to Administrative Order No. 113-95 dated 5 October 1995.
As judge of the Special Intellectual Property Court, Judge Antonio M. Eugenio, Jr. shall try and decide cases involving violations of intellectual property rights under
the Intellectual Property Code (R.A. No. 8293) committed within the City of Manila.
The earlier designation of Branch 1 of the Regional Trial Court of Manila as a Special Intellectual Property Court is hereby REVOKED, and the cases involving
violations of intellectual property rights earlier assigned to said Branch 1 pursuant to and by virtue of Administrative Order No. 113-95 are hereby re-assigned to
Branch 24 of said Court.

(B) - Furthermore, acting on the recommendation of Hon. Associate Justice Reynato S. Puno, Chairman of the Committee on Revision of the Rules of Court, and the
Office of the Court Administrator, and in order to ensure speedy disposition of cases involving violations of intellectual property rights under the Intellectual Property
Code (R.A. No. 8293), the following Regional Trial Courts (RTCs) are hereby designated Special Intellectual Property Courts:
Region 1:
1)Hon. Antonio M. Esteves
Presiding Judge, Branch 5
RTC, Baguio City
2)Hon. Manuel L. Argel
Presiding Judge, Branch 65
RTC, Laoag City
Region 2:
1)Hon. Rolando R. Velasco
Presiding Judge, Branch 6
RTC, Aparri, Cagayan
Region 5:
1)Hon. Vladimir B. Bruselas
Presiding Judge, Branch 6
RTC, Legazpi City
2)Hon. Filemon B. Montenegro
Presiding Judge, Branch 26
RTC, Naga City
Region 8:
1)Hon. Frisco T. Lilagan
Presiding Judge, Branch 34
RTC, Tacloban City
Region 12:
1)Hon. Albert B. Abragan
Presiding Judge, Branch 3
RTC, Iligan City

The foregoing Special Intellectual Property Courts shall try and decide cases involving violations of intellectual property rights defined under the Intellectual Property
Code committed within their respective territorial areas. Since there are only a few cases of violations of intellectual property rights now pending in other branches of
the aforementioned Regional Trial Courts, such cases shall remain with and shall be decided by the branches to which they have been assigned. Only cases hereafter
filed may be assigned to the above designated special courts.

(C) - Finally, in order to ensure a just and equitable distribution of cases among the Judges concerned, all the aforementioned Special Intellectual Property Courts shall
continue to participate in the raffles of other cases:Provided, however, that the Executive Judges concerned shall adopt a procedure whereby every intellectual
property right case assigned to a Special Intellectual Property Court should be considered a case raffled to it and be duly credited to such court.
This Resolution shall take effect immediately and the Office of the Court Administrator shall implement it.

22. RE: CONSOLIDATION OF INTELLECTUAL PROPERTY COURTS WITH COMMERCIAL COURTS, AM 03-03-03-SC, June 17, 2003
WHEREAS, to implement the provisions of Section 5.2 of Republic Act No. 8799 (The Securities Regulation Code), and in the interest of a speedy and efficient
administration of justice, the Supreme Court en bane, in the (a) Resolution dated  xxx, all issued in AM 00-11-03-SC; (b) Resolution dated 27 August 2001 in A.M.
No. 01-5-298 RTC and (c) Resolution dated 8 July 2002 in A.M. No. 01-12-656-RTC resolved to designate certain branches of the Regional Trial Courts to try and
decide cases formerly cognizable by the Securities and Exchange Commission;

WHEREAS, pursuant to the same Resolution, sixty-five (65) Regional Trial Courts, distributed in all regions (NCJR and Regions 1-12), were designated as SEC
courts ("SEC Courts"), which courts have presently a total of 812 pending SEC cases;

WHEREAS, in A.O No. 113-95, dated 2 October 1995, as amended by A.O. No. 104-96, dated 21 October 1996, the Regional Trial Courts in the National Capital
Region and Regions 3, 4, 6, 7, 9, 10 and 11, with twenty-seven (27) judges, were specially designated to try and decide cases for violations of Intellectual Property
Rights, and to ensure the speedy disposition of cases involving violations of intellectual property rights under the Intellectual Property Code (Rep. Act No. 8293), the
Supreme Court en banc, in A.M. No. 02-1-11- SC, dated February 19, 2002, designated the Regional Trial Courts in Regions 1, 2, 5, 8 and 12, with a total of seven (7)
judges, and Branch 24 of the Regional Trial Court of Manila with one (1) judge, as Special Intellectual Property Courts ("Special IP Courts");

WHEREAS, pursuant to A.M. No. 02-1-11 SC and A.O. No. 113-95, these Special IP Courts have a total caseload of 503 cases. Of this number 434 IP cases are
pending in the NCJR;

WHEREAS, since the establishment of Special IP Courts (except for the Special IP Courts in Manila), 15 designated courts, in Regions 1, 2, 3, 4, 5, 6, 7, 8, 9 and 12
have zero (0) IP cases, and do not warrant their continued designations as Intellectual Property Courts

WHEREAS, intellectual property cases are commercial in nature;

WHEREAS, to streamline the court structure and to promote expediency and efficiency in handling such special cases, the jurisdiction to hear and decide IPC and
SEC cases are best consolidated in one court;
NOW, THEREFORE, the Court Resolves:
1. The Regional Courts previously designated as SEC Courts through the: (a) Resolutions of this Court dated xxx, all issued in A.M.   No. 00-11-03-SC,  (b)
Resolution dated 27 August 2001 in A.M. No. 01-5-298-RTC; and (c) Resolution dated 8 July 2002 in A.M. No. 01-12-656-RTC are hereby DESIGNATED and shall
be CALLED as Special Commercial Courts to try and decide cases involving violations of Intellectual Property Rights which fall within their jurisdiction and those
cases formerly cognizable by the Securities and Exchange Commission;

2. The designation of Intellectual Property Courts under Administrative Order No.  113-95 dated 2 October 1995, as amended by Administrative Order No. 104-96
dated 21 October 1996 and Resolution dated 19 February 2002 in A.M. No. 02-1-11-SC, is hereby revoked. However, the Regional Trial Court, Branch 24, Manila is
hereby designated as an additional Special Commercial Court in the City of Manila;

3. Upon the effectivity of this Resolution, all IP cases shall be transferred to the designated Special Commercial Courts except those which have undergone the pretrial
stage in civil cases or those where any of the accused has been arraigned in criminal cases which shall be retained by the court previously assigned to try them;

4. The Special Commercial Courts shall have jurisdiction over cases arising within their respective territorial jurisdiction with respect to the National Capital Judicial
Region and within the respective provinces with respect to the First to Twelfth Judicial Regions.   Thus, cases shall be filed in the Office of the Clerk of Court in the
official station of the designated Special Commercial Court;

5. In the event of inhibition of the judge of a designated Special Commercial Court, the following guidelines shall be observed: (a) where there is only one (1) Special
Commercial Court, the case shall be raffled among the other judges in the station; (b) where there are two (2) Special Commercial Courts in the station, the Executive
Judge shall immediately assign the case to the other Special Commercial Court; and (c) in case of inhibition of both judges of the Special Commercial Courts, the
Executive Judge shall raffle the case among the judges in the station; and

6. In order to ensure a just and equitable distribution of cases, the designated Special Commercial Courts shall continue to participate in the raffles of other cases.
Provided, however, that the Executive Judge concerned shall adopt a procedure whereby every IP and SEC case assigned to a Special Commercial Court should be
considered a case raffled to it and duly credited to such court.

This Resolution shall take effect on 1 July 2003 and shall be published in two (2) newspapers of general circulation.

17 June 2003

UNFAIR COMPETITION
23. Pilipinas Shell Petroleum Corporation v. Romars International Gases Corporation, GR 189669, February 16, 2015, Peralta, J., Third Division.
FACTS:
Petitioners Shell and Petron Corporation received information that Romars was selling LPG by illegally refilling the steel cylinders manufactured by and bearing the
registered trademark and device of Petron. Petron obtained the services of a paralegal investigation team who sent their people to investigate. The investigators went
to Romar’s premises in San Juan, Camarines Sur, bringing 4 empty cylinders of Shellane, Gasul, Total, and Superkalan and asked that these be refilled. Romar’s
employees refilled the cylinders at the refilling station. Petitioners requested NBI to investigate for violation of S170 of RA 8293.

NBI found commercial quantities of Petron Gasul and Shellane cylinders stockpiled at Romar’s warehouse. They witnessed trucks coming from Romar’s refilling
facility loaded with Gasul, Shellane, and Marsflame cylinders, which then deposit said cylinders in different places, one of them a store called “Edrich Enterprises” in
Iriga City. The investigators bought Shellane and Gasul cylinders from Edrich Enterprises, for which they were issued an OR.

NBI field in RTC-Naga 2 applications for search warrant for violation of S155.1 in relation to S170 of RA 8293 against Romars. RTC-Naga granted. NBI served the
warrants. Romars moved to quash on the ground that there was no probable cause and most of the cylinders seized were not owned by Romars but by a third person.
RTC denied.

But in its MR, Romar’s new counsel raised for the first time the issue of the impropriety of filing the application for search warrant in RTC Naga when the alleged
crime was committed in a place within the territorial jurisdiction of RTC Iriga City. They claim that the application failed to state a compelling reason as required by
S2(b), R126. RTC Naga granted the MR, quashing the search warrants. CA affirmed. Hence this petition.

ISSUE:
1) Whether the application for search warrant should have stated a compelling reason why it was being filed in RTC-Naga.
2) Whether RTC-Naga acted properly in considering this issue raised for the first time in the MR.
HELD:
1)YES. R126, S2 provides:
SEC. 2. Court where applications for search warrant shall be filed. — An application for search warrant shall be filed with the following:
(a) Any court within whose territorial jurisdiction a crime was committed.
(b) For compelling reasons stated in the application, any court within the judicial region where the crime was committed if the place of the commission of
the crime is known, or any court within the judicial region where the warrant shall be enforced.

Thus, under par.(b), the application for search warrant should have stated compelling reasons why it was being filed in RTC Naga instead of RTC Iriga considering
that it is the latter court that has territorial jurisdiction over the place where the alleged crime was committed and where the warrant was enforced. The wordings of the
provision is of a mandatory nature. Since Art. III, S2 of the constitution guarantees the right of persons to be free from unreasonable searches and seizures, S2, R126
should be construed strictly against state authorities enforcing the warrant.

2) NO. But did RTC Naga act properly in considering the issue of said defect where this issue was raised in the MR for the first time? Does. The omnibus motion rule
cover a motion to quash search warrants?

The omnibus motion rule embodied in Section 8, Rule 15, in relation to Section 1, Rule 9, demands that all available objections be included in a party's motion,
otherwise, said objections shall be deemed waived; and, the only grounds the court could take cognizance of, even if not pleaded in said motion are: (a) lack of
jurisdiction over the subject matter; (b) existence of another action pending between the same parties for the same cause; and (c) bar by prior judgment or by statute of
limitations. In a number of cases, SC ruled that the omnibus motion rule is applicable to motions to quash search warrants. In Abuan v. People, we held that the
motion to quash search warrant is governed by the omnibus motion rule provided that objections not available, existent, or known during the proceedings for quashal
may be raised in the hearing of the motion to suppress. Thus, RTC could take cognizance of an issue not raised in the motion to quash if: 1) the issue was not
available when they filed the motion to quash or 2) the issue involved jurisdiction over the subject matter.

The issue of defect was available at the time of filing of motion to quash.
2.1) As to #2, is the issue raised for the first time in the MR jurisdictional? CA held that venue in criminal cases is jurisdictional. This reasoning is flawed. An
application for search warrant is a “special criminal process” rather than a criminal action. CA’s reasoning would categorize what is only a special criminal process,
the power to issue which is inherent in all courts, as equivalent to a criminal action, jurisdiction over which is reposed in specific courts. Thus, an application for
search warrant is not a criminal action. Thus, the rule that venue is jurisdictional in criminal cases does not apply.

2.2) Hence, the issue is not jurisdictional. SC deems it improper for RTC Naga to have even taken into consideration an issue which respondent failed to raise in its
motion to quash. Petition was granted, CA was reversed. The RTC denial of motion to quash was reinstated.

24. Willaware Products Corporation v. Jesichris Manufacturing Corporation, GR 195549, September 03, 2014, Peralta, J., Third Division,
FACTS:
Jesichris is a partnership engaged in manufactur and distribution of plastic and metal products. Willaware is engaged in the manufacture and distribution of
kitchenware items made of plastic and metal and has office near that of Jesichris. In November 2000, Jesichris discovered that Willaware had been manufacturing and
distributing the same automotive parts with exactly similar design, materials, and color, but was selling these products at a lower price as Jesichris’ plastic-made
automotive parts and to the same customers.

Jesichris filed a complaint for damages (P2M and P500k litigation expenses) for unfair competition. Jesichris claims that it originated the use of plastic in place of
rubber in the manufacture of automotive underchassis parts and that Willaware deliberately copied Jesichris’ products, constituting unfair competition. Willaware
claims that if there is no IP protecting a good belonging to another, the copying thereof for production and selling does not add up to UC as competition is promoted
by law to benefit consumers.

RTC ruled against Willaware, awarding damages to Jesichris. CA affirmed. Hence this petition.

ISSUE:
Whether Willaware, in hiring Jesichris’ former employees and copying Jesichris’ products and selling them at a lower price, committed unfair competition under Art.
28 of NCC.
HELD: YES.
1) This case falls under Art. 28 of NCC on human relations, and not unfair competition under RA 8293 as the present suit is a damage suit and the procucts are not
covered by patent registration the existence of patent registration is immaterial in this case.

2) Art. 28’s UC is much broader than that covered by IP laws. This covers even cases of discovery of trade secrets of a competitor, bribery of his employees,
misrepresentation of all kinds, interference with the fulfillment of competitor’s contracts, or any malicious interference with the latter’s business.

Art. 28 states:
“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."

2.1) To qualify the competition as “unfair”, it must have 2 characteristics: 1) injury to a competitor or trade rival, 2) acts which are characterized as “contrary to
good conscience”, or “shocking to judicial sensibilities,” or otherwise unlawful. These include force, intimidation etc. under Art. 28. Public injury or interest is a
minor factor, the essence of the matter appears to be a private wrong.

Both characteristics are present.

2.1) Both parties are competitors, being engaged in the manufacture of plastic-made automotive parts. The acts of Willaware were clearly “ contrary to good
conscience” as it admitted having employed Jesichris’s former employees, deliberately copied its products, and even selling these products to Jesichris’s customers.
These acts are tantamount to unfair competition. CA found that: “Willaware engaged the services of the then maintenance operator of Jesichris, De Guzman, while he
was employed by Jesichris. Also, Yabut, who used to be a warehouse and delivery man of Jesichris, was fired because he was blamed of spying for Willaware. Later,
he applied for and was hired by Willaware.”

2.2) Thus, Willaware engaged in UC as shown by its act of suddenly shifting business from manufacturing kitchenware to plastic-made automotive parts and luring
employees of Jesichris to discover Jesichris’ trade secrets.

2.3) Also, when a person starts an opposing place of business, not to profit but regardless of loss, for the sole purpose of driving his competitor out of business so that
later he can take advantage of the effects of his malevolent purpose, he is guilty of wanton wrong. Willaware’s witness’, Joel Torres, testimony indicates its bad faith
in competiting with Jesichris. (A: "O, ano naapektuhan na kayo sa ginaya (sic) ko sa inyo?" A: And he added these words, sir. "sabihin mo sa amo mo, dalawang
taon na lang pababagsakin ko na siya.")

SC found Willaware guilty of UC. SC awarded P200k nominal damages and P50k attorney’s fees.

25. Espiritu v. Petron Corporation, GR 170891, November 24, 2009, Abad, J., Second Division.
FACTS:
Petron sold and distributed LPG in cylinder tanks with the trademark “Gasul.” Respondent Doloiras owned Kristina Patricia Enterprises (KPE), exclusive distributor
of Gasul LPGs in Sorsogon. Jose Doloiras is KPE’s manager. Bicol Gas Refilling Plant Corporation is also in the business of selling/distributing LPGs in Sorsogon
but with the trademark “Bicol Savers Gas.” Petitioner Audie Llona managed Bicol Gas.

Distributors of LPGs at times acquire possession of LPG cylinder tanks belonging to other distributors in the same area. These are called “captured cylinders.” Bicol
Gas agreed with KPE for swapping of “captured cylinders” since one distributor could not refill captured cylinders with its own brand of LPG. At one time, Jose went
to Bicol Gas’s refilling plant and requested a swap. They swapped 30 Gasul tanks in exchange for assorted tanks held by KPE. Jose noticed that Bicol Gas still had a
number of Gasul tanks.

On Aug. 04, 2001, Jose saw a Bicol Gas truck on the Maharlika Highway. While it carried mostly Bicol Savers LPG tanks, it had on it one unsealed 50-kg Gasul tank
and one 50-kg Shellane tank. Jose followed the truck and when it stopped at a store, he asked the driver Jun and sales representative Jerome about the Gasul tank.
They said it was empty, but when Jose turned open its valve, he noted that it was not. Jun and Jerome admitted that the Gasul and Shellane tanks belonged to a
customer who had them filled up by Bicol Gas.

Because of this, KPE filed a complaint for violations of RA 623 (Illegally filling up registered cylinder tanks), S155 (infringement of trademarks) and S169.1(UC) of
RA 8293. Provincial prosecutor ruled that there was probable cause only for RA 623. Regional State Prosecutor ruled that there was no infringement case, only UC
and RA 623.

Respondents filed a certiorari with CA. Bicol Gas opposed, claiming inadequacy in the certificate of non-forum shopping since only Petron’s lawyer signed it. CA
ordered inclusion of petitioners Manuel Espiritu et al., stockholders of Bicol Gas, in the charges. Hence this petition.
ISSUES:
1) Whether the requirements for the certificate of non-forum shopping was not complied with where only one of the respondents signed it in their petition with CA.
3) Whether there is trademark infringement.
4) Whether there is unfair competition.
5) Whether the inclusion of the stockholders of Bicol Gas in the charge was proper.
HELD:
1) YES, substantially. Petitioners claim that the certificate of non-forum shopping that KPE and Petron attached to the petition attached to the petition with CA was
signed only by Petron thru Atty. Cruz. But where petitioners file a collective action in which they share a common interest in its subject matter or raise a common
cause of action, the certification by one of the petitioners is sufficient. KPE and Petron shared a common cause of action against petitioners. Thus, there was
substantial compliance.

2) RA 623 punishes any person who, without the written consent of the manufacturer or seller of gases contained in duly registered steel cylinders or tanks, fills the
steel cylinder or tank, for the purpose of sale, disposal or traficking, other than the purpose for which the manufacturer or seller registered the same. This was what
happened in this case. Bicol Gas employees filled up with their firm’s gas the tank registered to Petron bearing its mark without Petron;s written authority.

3) NO. As for trademark infringement, S155 of RA 8293 in relation to S170 states xxx. KPE and Petron have to show that Bicol Gas used Petron’s Gasul trademark
or a confusingly similar trademark on Bicol Gas tanks with intent to deceive the public and defraud its competitor as to what it is selling. An example is an
underground shoe manufacturer producing “Nike” branded rubber shoes.

But here, the allegations do not show that Bicol Gas painted on its own tanks Petron’s Gasul trademark or a confusingly similar version thereof to deceive its
customers. The one tank with the Petron Gasul in the truck full of Bicol Gas tanks was a genuine Petron Gasul tank, more of a captured cylinder belonging to
competition. No proof was shown that Bicol Gas has gone into the business of distributing imitation Petron Gasul LPGs.

4) NO. As to the charge of UC, S168.3 (a) of RA 8293 describes the acts as:
(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance,
which would be likely to in􏰉uence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer
or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;
What the law punishes is the act of giving one’s goods the general appearance of the goods of another likely to mislead the buyer into believing that such goods
belong to the latter. Examples would be selling shirts with an alligator logo similar in design to La Coste shirts open-jawed alligator, except that the jaw of the
alligator in the former is closed.

4.1) There is no showing that Bicol Gas has been giving its LPG tanks the general appearance of the tanks of Petron’s Gasul. The truckful of Bicol Gas tanks just
happened to have mixed up with them one authentic Gasul tank.

5) NO. Bicol Gas is a corporation, an entity separate and distinct from its officers/stockholders. CA forgets that in a corporation, the management of its business is
vested in its board of directors, not stockholders. Stockholders are the owners of the corporation and basically its investors. They do not have a hand in running the
daily business of the corporation. Thus, before a stockholder may be held criminally liable for acts of the corporation, it must be shown that he had knowledge of the
criminal act committed in the name of the corporation and that he took part in the same or gave his consent to its commission.

The finding of CA that the employees “could not have committed the crimes without the consent, permission xxx of the owners of Bicol Gas” is a sweeping
speculation.

CA ordered reinstatement of the provincial prosecutor’s resolution.