Philip Morris, Inc. v.

Court of Appeals
G. R. No. 91332, 16 July 1993

FACTS
Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac Reunies, S.A., are ascribing
whimsical exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when
respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco
Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes in the local market.

As averred in the initial pleading, Philip Morris, Incorporated is a corporation organized under the laws of the State of
Virginia, United States of America, and does business at 100 Park Avenue, New York, New York, United States of America.
The two other plaintiff foreign corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., are similarly not
doing business in the Philippines but are suing on an isolated transaction. As registered owners "MARK VII", "MARK
TEN", and "LARK" per certificates of registration issued by the Philippine Patent Office on April 26, 1973, May 28, 1964,
and March 25, 1964, plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to
manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contravention
of Section 22 of the Trademark Law, and should, therefore, be precluded during the pendency of the case from performing
the acts complained of via a preliminary injunction.

ISSUE: Whether or not petitioners, as Philippine registrants of trademarks, are entitled to enforce trademark rights in
this country.

RULING
Registration of a trademark gives the registrant (petitioners) advantages denied non-registrants or ordinary users
(respondent). They may not successfully sue on the basis alone of their respective certificates of registration of
trademarks. Petitioners are still foreign corporations condition to availment of the rights and privileges & their
trademarks in this country.

In Leviton Industries v. Salvador, reciprocity requirement is a condition sine qua non to filing a suit by a foreign
corporation. Unless alleged in the complaint, would justify dismissal complainant is a national of a Paris Convention-
adhering country, its allegation that it is suing under said Section 21-A would suffice, because the reciprocal agreement
between the two countries is embodied and supplied by the Paris Convention being considered part of Philippine
municipal laws, can be taken judicial notice of in infringement suits.

Under the DOCTRINE OF INCORPORATION as applied in most countries, rules of International Law are given a
standing EQUAL, not superior, to national legislative enactments. A foreign corporation may have the capacity to sue for
infringement but whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will
depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is thus
incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a
complaint for infringement, the entity need not be actually using its trademark in commerce in the Philippines. Such a
foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to
protection due to absence of actual use of the emblem in the local market.