Contents

Patent.................................................................................1
Smith Kline Beckham Corp. vs. CA, GR No. 126627, Aug. 14, 2003 1
E.I. Dupont De Nemours and Co. et. al. vs. Dir. Emma Francisco et. al., G.R. No. 174379, Aug. 31, 2016 2
Trademark........................................................................2
Fredco Mfg. Corp. vs. Pres and Fellows of Harvard College, GR No. 185917, June 1, 2011 2
Birkenstock Orthopaedie GMBH and Co. KG (Formerly Birkenstock Orthopaedie GMBH) vs. Philippine Shoe Expo
Marketing Corp., G.R. No. 194307, Nov. 20, 2013....3
GSIS Family Bank - Thrift Bank vs. BPI Family Bank, G.R. No. 175278, Sept. 23, 2015 3
UFC Phils., Inc., et. al. vs. Fiesta Barrio Mfg. Corp., G.R. No. 198889, Jan. 20, 2016 4
Taiwan Kolin Corp. Ltd. vs. Kolin Electronics, Inc., G.R. No. 209843, Mar. 25, 2015 5
Zuneca Pharmaceutical vs. Natrapharm, Inc., G.R. No. 211850, September 8, 2020 6
Doctrine:.............................................................................6
Trademark Infringement and Unfair Competition........6
Victorio Diaz vs. People of the Phils. and Levi Strauss [Phils.], Inc., G.R. No. 180677, Feb. 18, 2013 6
Asia Pacific Resources Int’l Holdings, Ltd. vs. Paperone, Inc., G.R. Nos. 213365-66, Dec. 10, 2018 7
Forietrans Mfg. Corp. vs. Davidoff Et. Cie Sa & Japan Tobacco, Inc., G.R. No. 197482, March 6, 2017 7
San Miguel Pure Foods Co., Inc. vs. Foodsphere, Inc., G.R. Nos. 217781 & 217788, June 20, 2018 8
Prosel Pharmaceuticals & Distributors, Inc. vs. Tynor Drug House, Inc., G.R. No. 248021, Sept. 30, 2020 8
Copyright..........................................................................9
Habana vs. Robles (GR No. 131522, July 19, 1999) Facts 9
Filipino Society of Composers vs. Tan, G.R. No. L-36402. March 16, 1987, 148 SCRA 461 (1987) 9
ABS-CBN Corp. vs. Felipe Gozon, et. al., G.R. No. 195956, March 11, 2015 9
Juan vs. Juan, G.R. No. 221732, August 23, 2017....10
Copyright Infringement.................................................10
Pearl & Dean vs. Shoemart, Inc. et al. (GR No. 148222) (Aug. 15, 2003) 10
Trademark.................................................................11
Columbia Pictures vs. Court of Appeals 261 SCRA 144 (1996) 11
Microsoft Corporation vs. Rolando D. Manansala, G.R. No. 166391, October 21, 2015 12
Olaño vs. Lim Eng Co, G.R. No. 195835, March 14, 2016 12

substantially in the same way or the same means as the

patented compound. In other words, the principle or mode
Patent of operation must be the same or substantially the same.

Divisional Application: This comes to play when two or

Smith Kline Beckham Corp. vs. CA, GR No. 126627,
more inventions are claimed in a single application but are
Aug. 14, 2003
of such a nature that as single patent may not be issued for
Doctrine
them The applicant is required to divide that is to limit the
The doctrine of equivalents provides that infringement also
lcaims to whichever invention he may elect , whereas those
takes place when a device appropriates a prior invention by
invention not elected may be subject of separate application
incorporating its innovative concept and although with
which are called divisional application.
some modification and change performs substantially the
same function s substantially the same way to achieve the
Facts
same result. Here, this does not apply. While both
Smith Kline filed before the Philippine Patent
compounds have the effect of neutralizing parasites in
officer an application of patent over an invention “ Methods
animals, identity of the result does not amount to
and Composition for producing Parasiticide Activity Using
infringement of patent unless Albendazole operates
Methyl 5 Propylthio Benzimidazole Carbamate. Letter
Parent 14561, for the aforesaid invention was issued to the
petitioner for a period of seventeen years. The respondent is
a domestic corporation that manufactures, distributes and
sells veterinary products including impregon that is
effective against gastro-intestinal roundwords, lungworm in
carabao , cattle and goat.
The petitioner filed a case against the respondent
for infringement and unfair competition. The petitioner
claimed that patent covers or includes the substance
Albendazole and that the respondent cannot sell the drug
Impregon without his consent. The respondent in its answer
averred that letter patent does not cover the substance
Albendazole from nowhere that the word appear that even
if the patent were to include Albendazole such substance is
not patentable.
Issue: Whether the respondent is liable for trademark
infringement for using the ingredient Albendazole
Held:
No. From the reading of the 9 claims of letter
patent no 14561in relation to other portion there is no
mention made of the compound Albendazole. All the claim
disclose is that the compound methyl, prophlthio
benzimidazole carbamate, the compound being anthlemic
but non toxic for animals. The petitioner urges that the
mere literal wordings of the patent cannot determine the
right of the respondent to infringement it urges the court to
apply the doctrine of equivalents.
The doctrine of equivalents provides that
infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and
although with some modification and change performs
substantially the same function s substantially the same
way to achieve the same result. Here, this does not apply.
While both compounds have the effect of neutralizing
parasites in animals, identity of the result does not amount
to infringement of patent unless Albendazole operates
substantially in the same way or the same means as the
patented compound. In other words, the principle or mode
of operation must be the same or substantially the same.
Here the evidence of the petitioner fails to
explain how Albendazole is identical to the petitioner’s
trademark. Apart from the fact that it is an anthelmintic
agent, nothing more is asserted or substantiated regarding
the method or means by which Albendzole weeds out
parasite in animals therefore giving no information whether
the method is substantially the same as the manner by
which petitioner compound works.
Divisional Application
When two or more inventions are claimed in a
single application but are of such nature that as single
patent may not be issued for them. The applicant is
therefore required to divide and limit the claims whichever
invention he may elect. The petitioner methy prophlithio
benzimidazolec is an invention that is distinct from the
other inventions claimed in the original application divided.
Albendazole being one of those other invention, otherwise
methy prophylithi would not have been subject to a
diivisioanl application if a s single patent could have been
issued for it as well as Albendazol. ( therefore ung
protected lag is the methyl prophithilo )
E.I. Dupont De Nemours and Co. et. al. vs. Dir. Emma
Francisco et. al., G.R. No. 174379, Aug. 31, 2016
Doctrine:
An application abandoned for failure to prosecute
may be revived as a pending application within a period of
four months from the mailing date of the notice of
abandonment if it is shown to the satisfaction of the
director that the delay was due to fraud, accident mistake
and excusable negligence. ( Here, it was not proven that the
petitioner’s negligence is excusable)
Facts
El Dupont is an American corporation organized
under the state of Delaware. It filed Philippine patent
application before the Bureau of Patents and Trademark for
Angiotensin II Receptor Blocking Imidazole , an invention
related to the treatment of hypertension and congestive
heart failure. The product was produced and marked by
Merck, Sharpe and Dohme Corporation , El Dupont
licensee under the brand names Cozaar and Hyzaar
The patent application was handled by Atty
Mapili a local resident who handled majority of the account
of El Dupont Nemours, The new counsel of the petitioner
then sent the IPO a letter requesting that an officer action
be issued on Philippine Patent Application. The Intellectual
property office replied that the reconstituted document does
not show that the power is now transferred with the present
counsel. The petitioner filed a revival arguing that its
former counsel did not inform it about the abandonment of
the application and that it was not aware that the later had
already died.
Therapharma filed a motion to intervene over a
product Losartan , Lifezar a medication which the bureau
granted. It argued that it made search of existing patent
application for similar products before the application and
that no patent registration was found since EI Dupont
Numerous application was considered to be abandoned.
Issue:
1. Whether the CA erred in denying the petitioner’s
appeal for the revival of its patent application on the
ground that the petitioner committed inexcusable
negligence in the prosecution of its patent application 2.
Third party rights and public interest would be
prejudiced by the appeal.
1. No. An application is deemed withdrawn for failure to
prosecute may be revived as pending application within
a period of four months from the mailing date of the
notice of withdrawal if it is shown to the satisfaction of
the director that the failure was due to fraud, accident,
mistake or excusable negligence. Here, the agent of the
petitioner Atty. Mapili was undoubtedly negligent in failing
to respond to the office action sent by the Bureau of Patent
and Trademark, because of this negligence the application
is deemed as abandoned. He was again negligent when he
failed to revive the abandoned application within four
months from abandonment.
The court notes that even if Atty Mapili’s death prevented
the petitioner from submitting a petition for revival on time,
it was clearly negligent when it subsequently failed to
immediately apprise itself of the status of patent
application. Here, upon learning of the death of Atty.
Mapili , the petitioner issued appointment of resident
agent . However, despite the substitution it only requested
for a status update of the Philippine Application four years
after the death of Atty Mapili.
Public Interest
. The petition for revival cannot be granted. The grant of
patent is to provide protection to any intervenor from any
patent infringement. Once an invention is disclosed to the
public, only the parent holder has the exclusive right to
manufacture, utilize and market the invention. Under the
IPL , a patent holder has the right to restrain and prohibit
any unauthorized person or entity from manufacturing ,
selling , or importing any product derived from the patent.
However, after a patent is granted and published in the
Intellectual Property Office Gazette, any interested third
party may inspect the complete description of the patent.
After the lapse of 20 years the invention becomes a part of
public domain
Angiotensin is one of the medication used for the treatment
of hypertension. Once the petitioner is granted a patent for
losartan product , Cozaar and Hyzaar, the loss of
competition in the market of Losartan product results to
higher prices, for public interest reason Patent application is
considered as forfeited.
Trademark
Fredco Mfg. Corp. vs. Pres and Fellows of Harvard
College, GR No. 185917, June 1, 2011
Doctrine
1`. The owner of the trade name or service mark used to
distinguish his goods, business or service form the goods,
business or service of others shall have the right to register
the same on the principal register unless it 1. Consist of or
comprises immoral , deceptive or scandalous manner or
matter which disparage or falsely suggest a connection
with persons , living or dead institution belief or national
symbols and bring them into contempt
2. The Paris convention protects a well known mark in a
country even if the mark is neither registered nor used in
that Country all that is required is that the mark is well
known internationally and in the Philippines
Facts
Fredco alleged that Registration No 56561 was
issued to Harvard University for the mark “ Harvard Veritas
Shield Symbols” for decals tote bags, serving trays,
sweatshirt, t- shirt , hats and flying disk. Fredo alleged that
the mark Harvard was first used by New York Garmets
filed a trademark registration of the mark Harvard for
goods under class 25. The application matured into
registration and a certificate of registration was issued on
December 12 1988 with a twenty year term subject to
renewal at the end of the term.
Harvard University alleged that it is the lawful owner of the
name Harvard in numerous countries worldwide. Harvard
alleged that the name Harvard was allegedly used in
commerce as early 1872. On May 7 2003, Harvard
university filed a trademark application of r Harvard
International and Shield design .
Fredco alleged that it started using the mark in 1982, and
filed an application with the patent office on 1985 to
register the mark Harvard which was approved in 1988.
Fredco insist that the date of actual us must prevail over the
issue who has better right.
Issue: Whether the petitioner is the true owner of the
mark
Held
No. His application must fail.
Under Section 4, There is hereby established a register of
trade mark, trade names and service marks which are
known as the principal register. The owner of the trade
name or service mark used to distinguish his goods,
business or service form the goods, business or service of
others shall have the right to register the same on the
principal register unless it 1. Consist of or comprises
immoral , deceptive or scandalous manner or matter which
disparage or falsely suggest a connection with persons ,
living or dead institution belief or national symbols and
bring them into contempt/
Fredco’s application falsely suggest that it had connections
with Harvard University which used the same mark. The
fact that the mark of the respondent is neither registered nor
used in the Philippines is of no moment, The Paris
convention protects a well known mark in a country even if
the mark is neither registered nor used in that Country all
that is required is that the mark is well known
internationally and in the Philippines
In the case at bar, Harvard is a week known mark not only
in the United states but also including the Philippines. It is
a mark rated as one of the most famous marks in the word.
Harvard university therefore can invoke Section 4(a) of RA
166 ot prevent the petitioner from registering the mark
Birkenstock Orthopaedie GMBH and Co. KG
(Formerly Birkenstock Orthopaedie GMBH) vs.
Philippine Shoe Expo Marketing Corp., G.R. No.
194307, Nov. 20, 2013
Doctrine: The Non-filing of the DAU results to the
automatic cancellation of the trademark failure is
tantamount to abandonment or withdrawal of the rights and
interest
Facts
The petitioner filed before the IPO a trademark
application before the IPO. However, registration
proceeding of the application was suspended in view of the
existing mark Birkenstock and Device under registration
No 56334 in the name of Shoe Expo Marketing. With this,
the petitioner filed a petition for cancellation of
Registration on the ground that it is the true owner of the
registered mark.During the pendency , the respondent failed
to file its required 10th year registration ( DAU) on or
before October 21 2004, thereby resulting to the
cancellation of such mark.
Issue: Whether the subject mark should be allowed
registration in the name of the petitioner
Ruling
Yes. The Non filing of the DAU abandons the registration
RA 166 Section 12: Each certificate of registration remains
in force for a period of twenty years provided that
registration under the provision of this act shall be
cancelled by the director unless within one year following
the fifth, tenth and fifteenth anniversaries of the date o issue
of certificate of registration, the registrant shall file in the
patent office affidavit showing that the mark or trade name
is still in use showing that its non-use is due to special
circumstance which excuse such non-use and not due to
any intent to abandon the same.
Here. The respondent failed to file the required 10 th year
DAU within the required period or on or before October 21
2004. As a consequence it is deemed to have abandoned to
withdrawn any right or interest over the said mark.
The act of registration is a prima facie presumption brought
about by the registration of the mark may be challenged
and overcome in appropriate action by evidence of prior
use by another person. Here, the petitioner was able to
establish ownership over the said mark. It submitted
evidence relating the use of the mark before the respondent
was able to register the same in the Philippines, and the
cancellation of the DAU leads to the conclusion that the
petitioner has a better right over the mark.
GSIS Family Bank - Thrift Bank vs. BPI Family Bank,
G.R. No. 175278, Sept. 23, 2015
Doctrine :
1. In the approval of corporate name , if there is identical,
misleading or confusingly similar to that one already
registered by another corporation or partnership with the
SEC the proposed name must have one distinctive word
2. Generic and descriptive marks are not distinctive.
Generic marks are used as a name or description of a kind
of goods. Descriptive, on the other hand conveys
characteristics, qualities or ingredient or functions.
3. Arbitrary mark: The test to determine whether there is
confusing similarity is such as to mislead a person using
ordinary care that confusion ois probable or most likely to
occur.
Facts
GSIS was able to acquire petitioner from the
Commercial bank of Manila. To improve the marketability
to the public, the petitioner sought the approval of the SEC
to change its corporate name to GSIS Family Bank. A thrift
bank This was later approved. Respondent,was registered
with BPI Family Bank and acquire a reputation of good
will. When the respondent found out that the petitioner is
attempting to use the name Family Bank it filed a petition
with the SEC to disallow or prevent the registration of the
name GSIS Family Bank and other corporate name with “
Family Bank”. The respondent claimed ownership “ Family
Bank. The CA ruled that the word Family Bank is
deceptively similar to BPI Family Bank
Issue: Whether the petitioner can use GSIS Family
Bank as its corporate name
Ruling
No. To fall within the prohibition of the law on the right to
exclusive use of the corporate name two requisites must be
proven 1. That the complaint had acquired a prior right over
the corporate name 2. That the proposed name is either a.
Identical 2. Deceptively or confusingly similar 3. Patently
deceptive or confusing or contrary to existing law.
Prior Right: Priority of adoption rule to determine prior
right.
Here, BPI was incorporated in 1969 as Family Savings
bank and seven years later the petitioner started using its
name., therefore, BPI has better right.
Identical , confusingly similar and Patently deceptive
Identical: The word family bank is present in both the
petitioner and respondent corporate name.
Section 3 of the Revised Guidelines in the approval of
corporate name states that if there be identical, misleading
or confusingly similar to one already registered by another
corporation or partnership with the SEC, the proposed
name must have one distinctive word. Here the words are
not distinct to differentiate the petitioner’s corporate name
from the respondent. While GSIS is merely an acronym of
the proper name by which the petitioner is identified the
word thrift is simply a classification of the petitioner bank
Deceptive and confusingly similar
DECEPTIVE:
The test to determine whether there is confusing
similarity is such as to mislead a person using ordinary care
and discrimination and even without such proof of actual
confusion between the two corporate names, it suffices that
the confusion is probable and most likely to occur.
Petitioner's corporate name is "GSIS Family Bank—A
Thrift Bank" and the respondent's corporate name is "BPI
Family Bank." The only words that distinguish the two are
"BPI," "GSIS," and "Thrift." The first two words are merely
the acronyms of the proper names by which the two
corporations identify themselves; and the third word
simply describes the classification of the bank. The
overriding consideration in determining whether a person,
using ordinary care and discrimination, might be misled is
the circumstance that both petitioner and respondent are
engaged in the same business of banking. "The likelihood
of confusion is accentuated in cases where the goods or
business of one corporation are the same or substantially
the same to that of another corporation
GENERIC
The petitioner cannot argue that the word Family is a
generic name which cannot be appropriated. Generic marks
are commonly used as the name or description of a kind of
goods. Descriptive marks on the other hand convey
characteristics, function , qualities or ingredients of a
product to one who has never seen it or does not know it
exist. Here, the word family cannot be separated from the
word bank. The coined phrase are arbitrary marks which
are “ Words or phrases used as a mark that appear to be
random in the context of its use”. They are generally
considered to be easily remembered due to its arbitrariness.
Arbitrary Mark
The word "family" is defined as "a group consisting of
parents and children living together in a household" or "a
group of people related to one another by blood or
marriage."56 Bank, on the other hand, is defined as "a
financial establishment that invests money deposited by
customers, pays it out when requested, makes loans at
interest, and exchanges currency."57 By definition, there can
be no expected relation between the word "family" and the
banking business of respondent. Rather, the words suggest
that respondent’s bank is where family savings should be
deposited. More, as in the Ang case, the phrase "family
bank" cannot be used to define an object.
UFC Phils., Inc., et. al. vs. Fiesta Barrio Mfg. Corp.,
G.R. No. 198889, Jan. 20, 2016
Doctrine : ( Here dominancy test is applied)
1. Dominancy Test: Focuses on the similarity of prevalent
and dominant features of the competing trademark that
causes confusion ,mistake and deception in the mind of the
purchasing public. Here, what is looked into is the
similarity in appearance arising from the dominant features
thereof.
2. Holistic Test : Considers the entirety of the mark as
applied to the products, including the label, packaging
product itself. The observer focuses not only on the
predominant words but also to other features that appear on
both labels so that the observer may draw conclusion on
whether one is confusingly similar to another
Facts
Barrio Fiesta filed an application for the mark
Papa Boy and Device for goods under the classification 30
Levhon spouse. The Intellectual property office published
the said application in the IP Phil E Gazette. The petitioner
filed with the IPO-BLA a notice of opposition since the
mark Papa was first used by him in 1954. After using the
mark Papa for about 27 years he subsequently assigned it to
Hernan Reyes who filed an application to register the same
for use of Banan Ketchup etc. In its verified opposition , the
petitioner contended that Papa Boy device is confusingly
similar with Papa marks insasumch as the former
incorporates the term papa which is the dominant feature of
the petitioner Papa mark. The petitioner argued that there is
confusing similarity between the two marks, more so
considering that the petitioner’s ketchup product and
respondent lechon sauce are related and fell within the
same category.
The CA applying the holistic test reversed and st
aside the decision of the IPO-BLA and that of the IPO
Director General both of which rejected the application of
the respondent for the mark Papa Boy and Device
Issue: Whether the CA erred in applying the holistic test
in approving the application of the respondent
Ruling
Yes. As a rule there are two test to determine the likelihood
of confusion
1. Dominancy Test: Focuses on the similarity of
prevalent and dominant features of the competing
trademark that causes confusion ,mistake and deception in
the mind of the purchasing public. Here, what is looked
into is the similarity in appearance arising from the
dominant features thereof.
2. Holistic Test : Considers the entirety of the mark as
applied to the products, including the label, packaging
product itself. The observer focuses not only on the
predominant words but also to other features that appear on
both labels so that the observer may draw conclusion on
whether one is confusingly similar to another
 Here the court should have applied the domi-
nancy test
The word PAPA is the dominant feature of UFC Mark Papa
Ketsarap. Ketsarap is merely descriptive. It is Papa which
have been in commercial use for decades and has
established awareness and goodwill among customers. In
the same way Papa is the dominant feature of Barrio Fiesta
Papa Boy and Device such that the word Papa is written on
top and before the other words and catches the eye.
Hence, since the mark of Barrio Fiestra is related to a
product, condiment and sauce is subject to great scrutiny by
a casual purchaser. Since UFC product is also a condiment,
the public could think that UFC expanded its product to
include lechon sauce. Therefore, to allow registration leads
to confusion of business.
Taiwan Kolin Corp. Ltd. vs. Kolin Electronics, Inc.,
G.R. No. 209843, Mar. 25, 2015
Facts
Taiwan Kolin filed with the Intellectual property
office, then the Bureau of Patents and Trademark and
Technology a trademark application for the use of Kolin
( for the Combination of goods, including colored
Television, refrigerator, window type and split type air
conditioner). This application was abandoned since Taiwan
Kolin failed to respond to IPO paper requiring it to elect
one class of goods for its coverage. This application was
subsequently revived when the petitioner elected class 9 as
the subject of its application.
Kolin Electronic opposed the application of the
petitioner. It argued that the mark Taiwan Kolin seeks to
register is identical or not confusingly similar with its Kolin
mark registered covering class 9 of NCL 1. Automatic
Voltage regulator, converter, stereo booster etc.
 The petitioner argues that it is entitled to
trademark registration of Kolin over its specific goods of
television set and DVD prayer. The petitioner postulates
that its goods are not closely related to those of Kolin
Electronics.
Issue: 1. Whether the petitioner is entitled to its
trademark registration of Kolin over its specific goods
of television set and DVD players.
Ruling
Yes. There must be an emphasis on the similarity of the
products involved and not on the arbitrary classification or
general description of their properties and characteristics.
The mere fact that one person had adopted and used a
trademark on his goods would not prevent the adoption
of the same trademark by others on unrelated articles of
a different kind. A certificate of trademark registration
confers upon the trademark owner the exclusive right to sue
those who have adopted a similar mark not only in
connection with hoods and service but also those related
thereto.
Here, the products are not identical. The classification of
products under the Nice Classification is merely part and
parcel of the factors to be considered ascertaining whether
the goods are related. It is not sufficient to state that the
goods involved herein are electronic product to establish
relatedness between the goods. It bears to stress at this
point that the list of products included in Class 9 41 can be
sub-categorized into five (5) classifications, namely: (1)
apparatus and instruments for scientific or research
purposes, (2) information technology and audiovisual
equipment, (3) apparatus and devices for controlling the
distribution and use of electricity, (4) optical apparatus and
instruments, and (5) safety equipment. 42 From this sub-
classification, it becomes apparent that petitioner’s
products, i.e., televisions and DVD players, belong to audio
visiual equipment, while that of respondent, consisting of
automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down
transformer, and PA amplified AC-DC, generally fall under
devices for controlling the distribution and use of
electricity.
In trademark cases, to ascertain whether one trademark is
identical or confusingly similar to another the court decided
on its merit with due regard to the goods or services
involved, the usual purchaser , character and attitude
among others. While both competing marks refer to the
word Kolin there is a distinct difference between Kolin
Electronic Mark and colored black while Taiwan Kolin is
int red.
There, the "ordinary purchaser" was defined as one
"accustomed to buy, and therefore to some extent familiar
with, the goods in question. The test of fraudulent
simulation is to be found in the likelihood of the deception
of some persons in some measure acquainted with an
established design and desirous of purchasing the
commodity with which that design has been associated. The
test is not found in the deception, or the possibility of
deception, of the person who knows nothing about the
design which has been counterfeited, and who must be
indifferent between that and the other. The simulation, in
order to be objectionable, must be such as appears likely to
mislead the ordinary intelligent buyer who has a need to
supply and is familiar with the article that he seeks to
purchase
In the case at bar are, generally speaking, various kinds of
electronic products. These are not ordinary consumable
household items, like catsup, soy sauce or soap which are
of minimal cost. The products of the contending parties are
relatively luxury items not easily considered affordable.
Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull
over his purchase. Confusion and deception, then, is less
likely.
Zuneca Pharmaceutical vs. Natrapharm, Inc., G.R. No.
211850, September 8, 2020
Doctrine:
Section 122 of the IP Code states that rights in a mark shall
be acquired through registration made validly in accordance
with the provision of the law. While it in fact of registration
which confers ownership over the mark and enables the
owner thereof to exercise the rights, the first to file rule
prioritizes the first filer of the trademark and operates to
prevent any subsequent applicants thereto.
Facts
Zuneca Pharmaceutical is engaged in the
importation of medicines and drugs in the Philippines.
Among the products it has been selling is a drug under the
brand name Zynaps which is an anti-convulsant drug that is
used to control all types of seizure disorders of varied
causes like epilepsy. Natrapharm on the other hand is a
domestic corporation engaged in the distribution of
pharmaceutical products for human relief , one of which is
citcoline under the trademark Zynapse which is indicated for
the treatment of cerebrovascular disease or stroke.
Natrapharm filed with the RTC a complaint against
Zuenca for injunction, trademark infringement , damages and
destruction alleging that Zueneca Zynaps is confusingly similar to
the registered trademark Zynapse resulting to likelihood of
confusion is danagerous because the marks cover different type of
illness.
Zuenca contends that as a the first user it had already owned the
Zyanps mark prior to Natrapharm registration invoking the case of
Berris v. Ey Sales, and its right prevail over the rights of
Natraphram the first registrant of the mark
Issue: Whether Zuneca be liable for infringement
Ruling
Ownership is acquired through registration
Section 122 of the IP Code states that rights in a mark shall be
acquired through registration made validly in accordance with the
provision of the law. While it in fact of registration which confers
ownership over the mark and enables the owner thereof to exercise
the rights, the first to file rule prioritizes the first filer of the
trademark and operates to prevent any subsequent applicants
thereto.
Zuneca allegation that Natrapharm knew of existence of Zynaps
hence is in bad faith cannot prosper
The existence of bad faith in trademark registration may be a
ground for its cancellation at any time after filing of a petition for
cancellation under Section 151 of IP Code. A petition to cancel a
registration of a mark under this act may be filed with the Bureau
of Legal Affidavit by any person who is in bad faith at the time of
registration. Bad faith means that the application or registrant had
prior knowledge of prior creation, use and or registration by
another of an identical or similar trademark. In other words, it is
copying and using somebody else trademark. Fraud on the other
hand, may be committed by making false claims in connection
with the trademark application and registration particularly on the
issues of origin , ownership and use of trademark in question
among other things.
Zuenca insist that Natrapharm knew of the existence of Zynaps at
the time the plaintiff filed the application for registration. The court
ruled that there is no bad faith. Hence even if Zueneca and
Natapharm have interacted with each other through a convention it
does not automatically mean that Natrapharm already acted in bad
faith in the registration of Zynapse. It is highly unlikely that
participants would remember the medicine of drug exhibited in the
convention. The registration happened two years after the
convention.
Zuenca evidence falls short of establishing that Natraphram had
knowledge of prior creation or use by Zuneca of the Zynaps mark.
Zuneca evidence only tends to prove that there was possibility that
someone from Nathraphram might have known of Zuneca use of
Zynaps because Natraphram and Zuneca attended the same
conferences and that Zuneca had listed Zynaps in PPD Publication.
Trademark Infringement and Unfair Competition
Victorio Diaz vs. People of the Phils. and Levi Strauss
[Phils.], Inc., G.R. No. 180677, Feb. 18, 2013
Doctrine
Facts
Levi Strauss is a foreign corporation engaged in
the apparel business. After receiving information that Diaz
was selling counterfeit Levi 501 jeans in his tailoring
shops. Levi sought the assistance of the NBI for purposes
of applying for a search warrant against Diaz to be served
at his tailoring shops. The search warrant were isused in
due course, and take Levi 501jeans were seized from them.
Levi Philippines claimed that it did not authorize the
making and selling of the seized jeans that each of the jeans
were mere imitation of genuine Levi 501 jeans by each of
them bearing registered trademark.
Issue: Whether the DIAZ is liable for trademark
infringement
Ruling
No. To be held liable for infringement 1. The trademark is
being infringed is registered in the Intellectual property
office 2. The trademark being reproduced, counterfeited
copied or colorably imitated by the infringer 3. The
infringing mark is used in connection with the sale ,
offering of sale or advertising of any goods, business or
service or infringing of the mark is applied to label, signs ,
prints, package, wrappers receptacles or advertisement
intended to be used in conenciton with goods and
services.4. The use or application of infringing mark is
likely to cause confusion or mistake or to deceive purchaser
or others as to the goods or service themselves or as to
source or origin of such goods and service or identity of
such business 5.The use of application of infringing mark is
without the consent of trademark owner
Test to determine trademark infringement
1. Dominancy test: This focuses on the similarity of main
prevalent and essential feature of competing trademark that
might cause confusion. Infringement takes place when the
competing trademark contains the essential feature of
another. Imitation or effort is unnecessary.
2. Holistic test: Consider the entirety of the mark, including
labels, packaging in determining similarity the focus is not
only the predominant words but also those appearing in the
label.
In trademark cases, whether one is confusingly similar to
another no set of rules can be deduced from each case must
be decided in its own merits. The court applied the holistic
test there considering that herein criminal cased also
involved trademark infringement in relation to jeans
products .
1. The products involved in this case are various kinds of
jeans. These are not the ordinary household item of
minimal cost. Maong pants are not inexpensive , tence the
casual buyer is predisposed to be more cautious and
discriminating in and would prefer to mull over his
purchase. Confusion and deception is less likely
2. Like beer, Filipino consumer generally buys jeans by
brand. He does not ask the sales clerk for generic jeans. He
is therefore more knowledgeable and familiar with his
preference.
3. Lastly ordinary purchaser, this is not the complete
unwary consumer but the ordinary intelligent buyer. This
pertains to one that is accustomed to buy and therefore to
some extent familiar with the goods n question. The test of
fraudulent simulation os to be found in the likelihood of
deception of some person in some measure acquainted with
an established design and desirous of purchasing the
commodity with which that design has bee associated. The
test is not found in the deception, or the possibility of
deception, of the person who knows nothing about the
design which has been counterfeited, and who must be
indifferent between that and the other. The simulation, in
order to be objectionable, must be such as appears likely to
mislead the ordinary intelligent buyer who has a need to
supply and is familiar with the article that he seeks to
purchase
Diaz used the trademark "LS JEANS TAILORING" for the
jeans he produced and sold in his tailoring shops. His
trademark was visually and aurally different from the
trademark "LEVI STRAUSS & CO" appearing on the patch
of original jeans under the trademark LEVI’S 501. The
word "LS" could not be confused as a derivative from
"LEVI STRAUSS" by virtue of the "LS" being connected
to the word "TAILORING", thereby openly suggesting that
the jeans bearing the trademark "LS JEANS TAILORING"
came or were bought from the tailoring shops of Diaz, not
from the malls or boutiques selling original LEVI’S 501
jeans to the consuming public
In terms of classes of customers and channels of trade, the
jeans products of the private complainant and the accused
cater to different classes of customers and flow through the
different channels of trade. The customers of the private
complainant are mall goers belonging to class A and B
market group – while that of the accused are those who
belong to class D and E market who can only afford Php
300 for a pair of made-toorder pants
Asia Pacific Resources Int’l Holdings, Ltd. vs.
Paperone, Inc., G.R. Nos. 213365-66, Dec. 10, 2018
Doctrine
Facts
Petitioner is engaged in the production
marketing ,and sale of pulp and wood free paper. It alleged
that it is the owner of the well known trademark Paper One.
The trademark enjoyed legal protection in different
countries worldwide and enjoyed goodwill and high
reputation. The petitioner claimed that the use of Paperone
in the respondent’s corporate name without its prior consent
and authority was done in bad faith and designed to
unfairly ride on the petitioner’s goodwill. It also alleged
that it was calculated to misled the public into believing
that the respondent’s business and or product were
manufactured and sponsored by the petitioner. Respondent
averred that it had no obligation to secure prior consent or
authority from the petitioner to adopt and use its corporate
name. The DTI and SEC had allowed it to use Paperone
thereby negating any violation of the petitioner prior rights.
In this case the petitioner claims that the
respondent committed unfair competition by adopting
Paperone in its tradename
Issue: Whether the respondent is liable for unfair
competition.
Ruling
Yes. The essential element of unfair competition are 1.
Confusing similarity in the general appearance of the goods
2. Intent to deceive the public and defraud a competitor. In
this case the confusingly similar may or many not result
from the similarity of marks but may result from other
external factor in the packaging or presentation of goods. A
careful scrutiny of the mark shows that the use of Paperone
by the respondent would likely cause confusion or deceive
the ordinary purchaser exercising ordinary care to believe
that the goods bearing the mark belong to the same
enterprise.
Two Types of Confusion
1. Confusion of goods: Where ordinarily prudent purchaser
is induced to purchase one product in the belief that he was
purchasing the other
2. Confusion of business: Where although the goods of the
parties are different, the product the mark of which
registration is applied for by one party is such as might
reasonably be assumed to originate with the registratrant of
an earlier product and public would be deceived either into
belief or into belief that there is some connection between
the two parties though inexistent
Here, although we see a noticeable difference on how trade
name of the respondent is being used in its product as
compared to the trademark of the petitioner there could be
likely a confusion as to the origin of the products.
B) Intent to deceive the public and defraud a competitor
The intent to deceive or defraud may be inferred from the
similarity of appearance of the goods as offered for the sale
to the public . Actual fraudulent intent need not be shown.
The circumstance were establish to show that the
respondent adopted Paperone in its tradename even with
prior knowledge of the existence of Paper One as trademark
of the petitioner. Hence, of all names why will it choose
similar with the petitioner trademark when there is no intent
to take advantage of goodwill generated by the other marlk
Forietrans Mfg. Corp. vs. Davidoff Et. Cie Sa & Japan
Tobacco, Inc., G.R. No. 197482, March 6, 2017
DoctrineThe essential element of infringement is that the
infringing mark is likely to cause confusion , in this case,
the complaint affidavit of Davidoff infringement case
alleged confusing similarity between cigarette packs of the
authentic
Facts
BPI reported to the respondent that there were
counterfeit Davidoff and JTI Products or products which
are deceptively and confusingly similar to Davidoff and JTI
registered trademark. The items were later seized,
Calaquian denied the charges against him and FMC. He
countered that what the CIDG found were boxes of genuine
Dageta and Dageta international cigarette imported from
Germany for re-export to Taiwan and China. Calaquian
asserted that FMC is an ecozone registered with the PEZA
and that PEZA would not have approved the application of
Calaquian if there is trademark infringement .
The CA that the petitioner is liable for
trandemark infringement and false designation origin
Issue: Whether the petitioner is liable for trademark
infringement and false designation origin
Ruling
Yes. The essential element of infringement is that the
infringing mark is likely to cause confusion , in this case,
the complaint affidavit of Davidoff infringement case
alleged confusing similarity between cigarette packs of the
authentic Davidoff Cigatette and the sample Dageta
cigarette pack seized during the search of FMC premises.
Here the court ruled that there is no confusing similarity
between Davidoff and Dagetta, the same does not hold true
with respect to the cigarette packaging. There might be
difference when the two packaging are compared, the most
successful form of copying however is to employ enough
points of similarity to confuse the public with enough
points of difference to confuse the court.
San Miguel Pure Foods Co., Inc. vs. Foodsphere, Inc.,
G.R. Nos. 217781 & 217788, June 20, 2018
Facts
Sometime in 2006. Foodsphere introduced its
Pista ham and aggressively promoted it in 2007 claiming
that the same to be a real premium ham. In 2008, SMPFCI
launched its Dapat ganito ka-espesyal campaign that utilize
the promotional material showing a picture of a whole meat
ham served on a plate with fresh fruits in the side. The ham
is being sliced with a knife and the other portion held in
place by a serving fork. In the same year, Foodsphere
launched its make Christmas more special campaign which
directly copied SMPFC Dapat Ganito ka-espesyal
campaign. In 2009, Foodsphere introduced its paper ham
bag which looked similar to the bag of the petitioner and
the word Pista was confusingly similar to the Fiesta mark
of the petitioner
SMFCI filed a complain for trademark
infringement and unfair competition against Foodsphere
before the Bureau of Legal affairs of the IPO pursuant to
Section 155 and 168 of RA 8293 for using in commence , a
colorable imitation of its registered trademark in connection
with the sale, offering for sale and advertising of goods that
are confusingly similar with that registered trademark
Issue: Whether Foodsphere is liable for trademark
infringement and unfair competition under the
intellectual Property code.
Ruling
Yes, The court has held that unfair competition
consist of passing off or attempting to pass 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 the
defendant by imitative devices mislead prospective
purchaser into buying his merchandise under the
impression that they are buying that of the competitor. The
true test therefore is whether the act of the defendant have
the intent of deceiving or calculated to deceive the ordinary
buyer in making his purchases under the ordinary condition
of particular trade to which controversy relate
Therefore, the essential element of unfair
competition are 1. Confusing similarity in the general
appearance of goods 2. Intent to deceive the public and
defraud the competitor. The confusing similarity may or
may not result form the similarity of the mark but may
result form other external factor such as packaging and
presentation of the goods.
Application
1. There is substantial and confusing similarity in the
packaging of Foodsphere product with SMPFCI which as
the record reveal was changed by Foodsphere from a paper
box to a paper ham bag similar to the one provided by the
petitioner. Both packaging uses red color and both have the
layout design appearing on the bags consisting of a partly
sliced ham and fruits on the front and other ham varieties
offered at the back. Therefore, it is not merely the mark
which renders the general appearance , but also the similar
packaging of SMPFCI ham that would influence the
purchaser to believe that the product are similar .
The intent to deceive the public and defraud the competitior
and ride the goodwill of SMPFCI product is evidenced by
the fact that not only did Foodsphere switch from its old
box packaging to the same paper ham bag packaging as that
used by SMPFCI it also used the same layout design
printed on the same. As the director geneal observed .
Foodsphere had to chosese those so closely similar to
SMPFCI if there was no intent to pass off public the ham of
SMPFCI as its own with the end and probable effect of
deceiving the public
Prosel Pharmaceuticals & Distributors, Inc. vs. Tynor
Drug House, Inc., G.R. No. 248021, Sept. 30, 2020
Facts
The petitioner alleged that Ceegefer was an
improved version of its previous product Selvon C a
product that was registered by the Bureau of Foods and
Drugs, on December 3, 1999. The petitioner claimed that it
is common for companies to use the generic names of the
product as the basis for creating brand names it then
derived Ceegefer from one of its ingredient Chorella
Growth Factor. Being an improved version of Selvon-C the
packaging use for Ceegefer was the same as Selvon C in
order to expedite the approval of application of Ceegefer.
The petitioner received a letter from the
respondent requiring it to stop distributing Ceegefer
product and to recall the products that are already
distributed in lieu that the brand Ceegefer was confusingly
similar to the multivitamin of the respondent Cherifer
Issue: Whether the mark of the petitioner Ceegefer is a
colorable imitation of the respondent’s cherifer logo
Ruling
Yes. As to the name the court subscribes to the view of the
CA that both names are confusingly similar to the sound
and the spelling. As to the logo , the same is strikingly
similar, a side by side comparison shows that the packaging
uses orange and yellow and that there is a boy wearing a
basketball jersey with their knees slightly bent. The
petitioner’s registration of the CEEFEFER as a drug and
not just a vitamin food supplement does not exculpate it
from liability. The classification of the drug is immaterial,
since the case involves a violation of trademark the
gravemen of the offense is a likelihood of confusion
between two marks.
Between two marks that do not require medical
prescription, Ceegefer and Cherifer may be easily obtained
without the advice to another person. Therefore the parties
target market may be confused into thinking that Ceeferfer
is the Same as Cherifer. Note that the different drug stores
even displayed and sold Ceefer and cherifer beside each
other. Given the phonetic and visual similarities between
two product how the product name are spelled the sound of
both product name and the colors and the shapes of product
packaging it is obvious that there is colorable imitation.
To determine trademark infringement is likelihood of
confusion. The fact that Ceerifer sounds like cherifer is
enough to violate the respondent’s right to protect its
trademark.
Copyright
Habana vs. Robles (GR No. 131522, July 19, 1999)
Facts
Habana are authors and copyright owners of duly
issued certificate of copyright registration covering their
published works, produced through their combined sources.
The respondent are authors and distributor of published
work Developing English project. In the course of revising
their published works, petitioner scouted and looked around
various bookstore to check on other textbooks dealing with
the same subject matter, by chance they came upon the
book of the respondent and upon persual of the book they
were surprised to see that the book was strikingly similar to
the contents, scheme of presentation illustration with their
own book.
Petitioner made demands for damages against the
respondent and demanded that they cease and desist form
further selling or distributing to the general public infringed
copies of the work of the respondent. The respondent
ignored the demand , hence the petitioner filed with the
RTC a complaint for infringement, or unfair competition
with damages against the respondent. The petitioner alleged
that the work of the respondent is substantially familiar
with the contents of the petitioner , and without securing
their permission, lifted, copied plagiarized and or
transposed certain portion of their books CET.
The respondent filed their answer and denied the
allegation of plagiarism and copying that the petitioner
claim. The respondent alleged that the book DEP is a
product of their own independent research 2. DEP followed
the scope and sequence or syllabus which are common to
all English grammar writer. 3. The similarities may be due
to the author’s existence of the right to fair use
Issue: Whether there is confusing similarity between
DEP and CET amounting to copyright infringement
Ruling
Yes. The act of Robles in lifting from the book of
the petitioner substantial portion of discussion , examples
and her failure to acknowledge the same in her book is an
infringement of the right of the petitioner. There is
substantial portion of the book when the value of the
original work is substantially diminished, there is an
infringement of copyright to an injurious extent then work
is appropriated.
Infringement consist in the doing by any person
without the consent of the owner of the copyright of
anything the sole right to do which is conferred by the
statute on the owner of the copyright.
What extent can copying be injurious to the author of the
book
Here, there is no question that the petitioner presented
several pages of the book which more or less had same
contents. Though grammar books may contain materials
similar as to some technical contents with other grammar
books such as the segment about author card, numerous
pages that the petitioner presented showed similarity in the
style and the manner the books were presented and the
identical example can not pass as similarities merely
because of technical consideration.
Here, even though the petitioner and the
respondent were in the same background, their similarities
are so obvious in the case at bar which shows indicia of
guilt.
In case of infringement, copying alone is not
what is prohibited . The copying must produce and
injurious effect. Here the injury consist in that respondent
Robles lifted form the petitioner’s book materials that were
a result of the latter’s research work and compilation and
misrepresented the same as her own. Hence, there is a clear
case of appropriation of copyrighted work for her benefit
that the respondent committed. The work of the petitioner
as author is product of their research and for another to
represent it as her own is injury enough.
Filipino Society of Composers vs. Tan, G.R. No. L-
36402. March 16, 1987, 148 SCRA 461 (1987)
DOCTRINE: The playing of the songs in a public domain is not
infringement it only becomes infringement in this case because it
was made for profit.
Facts
The plaintiff are publisher organized under the
Corporation law and registerd with the SEC. The said association I
the owner of certain musical composition among which are “ Dahil
Sa Iyo “ and Sapagkat Ikaw ayAkin “ Sapagkat Kami Tao lamang”
and the Nearness of you. The defendant on the other hand is the
operator of the restaurant Alex Soda Foundation and Restaurant
where a combo with professional singers where hired to play and
sing musical composition to entertain the customer. The appellant
here demanded from the appellee payment of necessary license fee
for the playing and singing of aforesaid composition but the
demand was ignored.
The appellant filed a complaint with the lower court for
infringement of copyright against defendant appellee for allowing
the playing in defendant appellee restaurant of said song
copyrighted in the name of the former. The defendant countered
that the complaint states no cause of action, the appellee maintains
that the mere singing and playing of songs and popular tunes even
if they are copyrighted do not constitute an infringement.
Issue: Whether the playing and signing of musical composition
which have been copyrighted under the provisions of
Copyright Law inside the establish of the defendant constitute
a public performance for profit within the meaning and
contemplation of the Copyright law of Philippines.
Ruling
No. Under the circumstance, it is clear that musical
instrument composition in question had long become public
property and are therefor beyond the protection of copyright law.
It is admitted that the patrons of restaurant in question
pay only for the food and drinks and apparently not for listening to
the music. As found by trial, the music provided is for the purpose
of entertaining and amusing the customers in order to make the
establishing more attractive desirable. The expenses entailed are
added to the overhead of the restaurant which are either charged in
the price of the food and drinks or to overall total additional
income produced by bigger volume of the business. The record
reveal that song “ Dahil say o” was registered on April 20 1956,
become popular in radio, juke boxes etc had become twenty five
year.
ABS-CBN Corp. vs. Felipe Gozon, et. al., G.R. No.
195956, March 11, 2015
Facts
ABS-CBN filed the petition finding probable
cause for the violation of Section 177 and 211 of the
Intellectual Property Code. The controversy arose from
GMA 7 news coverage on the homecoming of Filipino
overseas workers and hostage victim Angelo dela Cruz.
ABS-CBN conducted live audio-video coverage and
broadcasted the arrival of Angelo Dela Cruz at the NAIA
and subsequent press conference. ABSCBN allowed
Reuters to air the footage it had taken earlier under special
embargo agreement.
ABS-CBN alleged that the footage it took would
be for the use of Renter’s international subscribers only.
GMA to which Gozon et al assigned and stationed news
reporters and technical men at the NAIA for its live
broadcast news coverage of the arrival of dela cruz. GMA –
7 subscribes to Reuters and Cable News Network, GMA-7
immediately carried on the live broadcast it did not know
that Reuters was airing the footage of Abscbn. ABS-CBN
filed the complaint for copyright infringement under
Section 177 and 211 of Intellectual property Code.
Issue:
1. Whether new footage is copyrightable under the law.
2.Whether there was fair use of broadcast material
3. Whether the lack of knowledge that a material is
copyrighted is a defense against infringement whether good
faith is a defense in a criminal prosecution for violation of
the Intellectual Property Code.
Ruling
1. Yes. The ABS-CBN is copyrightable. The IPC is clear
abut the rights afforded to the author of various kinds of
work. Under the Code, works are protected by the sole fact
of their creation, irrespective of their mode an form of
expression as well as their content and purpose. These
includes audio visual works and cinematographic work, and
works produced by a process analogous to cinematograph
or any process for making audiovisual recording .
2. No. Determining fair use requires application of four
factor test 1. The purpose and character of use, including
whether such use is of commercial nature or is for non-
profit educational purpose 2. The nature of copyrighted
work 3. The amount and substantially of the portion used in
relation to the copyrighted work as a whole 4. The effect of
the use upon the potential market for value of the
copyrighted work.
In the business of TV reporting, the nature of the
copyrighted work or the video footage are such that footage
created must be novelty to be a good report. Given that
substantial portion of Angelo Dela Cruz footage was
utilized by GMA-7 for its own, its use can hardly be
classified as fair use. Hence, the respondent could hardly be
considered as fair use.
3. No. Good faith is not a defense. Infringement under the
IPL is a malum prohibitum. News must be differentiated
from the expression of news particularly when the issue
involves rebroadcast of news footage. Copyright is subject
to the rules on fair use and will be judged on case to case
basis. Finding that probable cause includes a determination
of the defendant active participation particularly when the
corporate veil is pierced.
Juan vs. Juan, G.R. No. 221732, August 23, 2017
Facts
Roberto Juan claimed that be began using the
name and mark Lavandera Ko in his Laundry business on
July 4, 1994. On March 17 1997, the National Library
issued to him a certificate of copyright over the name and
mark. Over the years, the business expanded with
numerous franchise in Metro Manila. Respondent then
formed a corporation to handle the said business, hence
Laundromatic was incorporated in 1997, while Lavandera
Ko was registered as a business name on November 13
1998. The respondent then discovered that his brother was
able to register the name and mark Lavandera Ko with the
intellectual property code on October 18 2001.
The respondent filed a petition for injunction,
unfair competition, infringement of copyright ,cancellation
of trademark and with and name with the prayer of TRO
and preliminary injunction with the RTC.
The RTC dismissed the petition and rueld that
neither the parties are entitled to use the trade name
Lavandera Ko because the copyright Lavandera Ko a song
composed by Suarez belongs to the later.
Issue: Whether a mark is the same as copyright
Ruling
No. Lavendara Ko the mark in question in this case is being
used as a trade name of the laundry service business. A
mark is defined as any visible sign capable of
distinguishing the goods or services of an enterprise and
shall include a stamped or marked container of the goods.
Copyright and trade or service name are different.
Copyright is the right of literary property as recognized and
sanctioned by positive law. Trade name on the other hand is
any designation which is adopted and 1. used by person to
denominate goods which he markets or services which he
renders or business which he conducts or has come to be so
used by others and 2. Though association with such goods,
service or business has acquired significance as the name
thereof 3. The use of which for the purpose stated is
prohibited neither by legislative enactment nor otherwise
defined under public policy.
Therefore, Lavandera Ko being a musical composition with
words is protected under the copyright law and not under
trademark, service mark and trade names law. Therefore,
the court remanded the case to the RT since the court
cannot make a factual determination as to who has a better
right over the trade, business and service
Copyright Infringement
Pearl & Dean vs. Shoemart, Inc. et al. (GR No. 148222) (Aug.
15, 2003)
Facts
Pearl and Dean is engaged in the manufacture of
advertising display units referred to as light boxes. Pearl
and Dean was able to secure a certificate of Copyright
Registration over the illuminated display unit. The
advertising light boxes were marketed under the trademark
Poster Ads. The application of registration of trademark
( Posterads) was filed with the Bureau of Trademark and
Technology Transfer on June 20 1993, but was approved
only on Septeber 12 1998.
Metro Industrial the company that formerly
contracted by pearl and dean to fabricate its display unit
offered to construct light boxes FOR Shoemart which the
latter approved. Pearl and Dean later received report that
exact copies of the light boxes were installed in Sm Cubao.
In light of the discovery , Pearl and Dean sent a letter to
both SMI and Nemi to cease and desist in using the subject
light boxes. It also demanded for the discontinued use of
the trademark Poster ads
Issue: Whether there is copyright infringement
1. The complaint of Pearl and Dan was that SMI infringed
on its copyright over the light boxes when SMI had the
units manufactured by Metro and EYD for its own account.
Pearl argued that the petitioner had copyright over the
engineering drawings which exnteded to the light boses
depicted or illustrated.
The court ruled that there is no copyright. A copyright is
merely a statutory right, being a mere statutory right is
limited to what the statute confers. Here, the copyright
secured by Pearl and Dean under the classification of Class
O works extended only to technical drawings and not to the
light boxes itself because the later is not covered under the
term print, pictorial, illustration, advertising copies, label ,
box wraps. Here, the copyright merely extended to pictorial
illustration and could not extend to undrerlying light box
Hence, if SMI and NEMI printed the technical drawings for
sale to the public without license form Pearl and dean there
is no doubt that they are liable for copyright infringement.
Here, SMI and Nemi act complained of by Pear land
Dean were to have units similar to the light box
illustrated by the drawings.
Difference
Trademark Patent Copyright
Any visible sign Technical Literary and
capable of solution of a artistic work that
distinguish the problem in any are original in
goods or service filed of human creation and are
of an enterprise activity which protected from
including a involves an the moment of
stamped or innovative step their creation
marked
container goods
Patent INFRINGMENET IS NOT PRESENT
No . The petitioner never secured a patent for light boxes.
There can be no infringement of a patent until a patent has
been issued, since whatever right one has to the invention is
covered by the patent arises alone from the grant of patent.
To enable to effectively and legally preclude other s from
copying the invention, a patent is a primordial requirement.
No patent no protection.
It is only after an exhaustive examination by the patent
office that a patent is issued . The prerequisite to obtain a
patent must be strictly observed and when a patent is issued
the limitation on its exercise are strictly be enforced. Here,
since the petitioner did not go through such examination it
cannot exclude others from the manufacture , sale of the
light boxes
Trademark
The petitioner Pearl and Dean was able to secure a
trademark certificate over Poster advertising. The issue here
is the use of the respondent Poster ads which is a
contraction of the petitioner’s Poster Advertising. Invoking
Section 20 of the old trademark law ruled that the
Certificate of registration issued by the Director of Patents
upon the petitioner exclusive right to use its own symbol
only to those goods that are specified I the ceritifcate. Here,
assuming that Poster Ads qualify as a trademarkl the failure
to secure trademark registration for specific use on light
boxes meant that there could not have been any trademark
infringement since registration is essential element
Lastly, there can be no unfair competition . Poster Ads was
too generic., so it could not be associated with Pearl and
Dean as Poster ads cannot be distinguished form goods and
serive of other entities
Columbia Pictures vs. Court of Appeals 261 SCRA 144
(1996)
: Doctrine : The registration and deposit of two complete
copies or reproductions of the work with the National
Library within three weeks after the first public
dissemination or performance of the work as provided for
in section 26 is not for the purpose of procuring the
copyright of the work but rather to avoid the penalty
for non-compliance of the deposit of the said two copies
and in order to recover damages in the infringement
suit. The court may also order the cancellation of
copyright registration where there is a finding of trademark
infringement. The court can order cancellation of the
copyright registration if there is copyright infringement
Facts
Columbia Pictures lodged a complaint with the
NBI for violation of PD No 49 sought the assistance their
anti-film piracy drive. Agents of the NBI and private re-
searchers made discreet surveillance on various video es-
tablishment in Metro Manila including Sunshine Home-
s.NBI applied for a search warrant against Sunshine seek-
ing for the seizure of Pirated video of copyrighted films all
of which were enumerated in a list attached to the applica-
tion, television set , video cassette and later disc recordings
and other paraphernalia used for the unlawful exhibition
showing , reproduction sale of video gram tapes.
The application for search warrant was later
scaped because the master tapes of the copyrighted fils
from which the pirated films were allegedly copies of were
never presented in the proceeding for the issuance of search
warrant in question.
Issue: Whether there is a need to present the master
films in order to determine the probable cause for the
issuance of the search warrant
Ruling
No.The presentation of the master tapes of copy-
righted films for the validity of the search warrant must
merely be understood to serve as a guidepost to determine
the existence of probable cause in copyright infringement
cases when there is a doubt as to the true nexus between the
master tape and pirated copy.
For the issuance of a search warrant there must be
1. Examination under oath or affirmation of the complaint
and his witness particularly describing the places to be
searched and the things to be seized 2. An examination per-
sonally conducted by the judge in the form of searching
questions and answer in writing and under oath of the com-
plaint and the witness on facts personally known to them
and 3. Taking of sworn statement together with the affi-
davit submitted. Here this was completely complied with
The requirement of the presentation of a master
tape goes against the element of secrecy and speed that un-
derlie covert investigative and surveillance operation in po-
lice enforcement campaign against all forms of criminality
considering that the master tapes of a motion picture re-
quired to be presented before the court consist of several
reels in circular steel casing which because of their bulk
will definitely draw attention unlike diminutive objects like
video tapes which can easily be concealed.
It Is useless for private respondent to insist on compliance
with the registration and deposit requirement under PD 49
With respect to the works which are required
under Section 26 thereof to be registered and with copies to
be deposited with the National Library such as books,
composite and cyclopedic work, manuscripts, directors and
gazetters and periodical, etc failure to comply with the
registration and deposit requirement does not deprive the
copyright owner of the right to sue for infringement.
Coypright is protected from the moment of the creation
even in the absence of registration and deposit.
Microsoft Corporation vs. Rolando D. Manansala, G.R.
No. 166391, October 21, 2015
Doctrine: The mere sale of illicit copies of the software
program was enough by itself to show the existence of
probable cause for the copyright infringement There was no
ened to show that the petitioner still prove who copied,
replicated or reproduced the said program
Facts
Petitioner is the copyright and trademark owner
of all rights relating to all version and edition of Microsoft
programs/ The respondent on the other hand is doing
busines under the name Dataman Trading Company and or
Comic Aley. The respondent without the authority of the
petitioner was engaged in the distribution of software
program.
A search was done in the premises of the
respondent which yielded to several illegal copies of the
Mircrosoft program. The respondent state prosecutor
dismissed the charge against the private respondent for
violation of Section 29 PD 49 which shows tat the
respondent is selling Microsoft Computer software bearing
the copyright and trademark owned by Microsoft. There is
no proof that the respondent was the one who really printed
or copied the products of the complainant. The petitioner
filed a partial reconsideration arguing that the printing or
the copying is not essential for the crime of copyright
infringement under Section 29 of PD 49.
Issue: Whether the printing or copying is essential in the
commission of the crime of copyright infringement
under Section 29 of the Presidential Decree No 49.
Ruling
Yes. Infringement of copyright is a trespass on a
private domain owned and occupied by the owner of the
copyright and therefore, protected by law, and infringement
of copyright or piracy which is a synonymous term in this
connection consist in the doing by any person without the
consent of the owner of the copyright of anything the sole
right to do which is conferred by the statute on the owner of
the copyright.
It is not merley the unauthorized manufacturing
of intellectual work but rather the unauthorized
performance of any of the acts covered by Section 5. The
mere sale of the illicit copies of the software programs was
enough by itself to show the existence of probable cause for
copyright infringement. There is no need to show for the
petitioner to still prove who copied, replicated or reproduce
the said program
Section 5: To print, reprint , publish , copy distribute,
multiply m sell and make photograph, photo engraving, and
pictorial illustriton of the work  The word here is not
AND but OR.
Olaño vs. Lim Eng Co, G.R. No. 195835, March 14,
2016
Doctrine
1. Copyright is a purely statutory right, the rights are
limited to what the statute confers. It may be obtained and
enjoyed only with respect to subjects and by persons and on
the terms and condition stated in the statute
2. . A useful article is defined as having intrinsic utilitarian
function that is not merely to portray the appearance of the
article or to convey information is excluded from copyright
eligibility. The only instance when a useful article may be
subject of copyright protection is when it incorporates a
design element that is physically or conceptually separable
form the underlying product. This means that the utilitarian
article can function without the design element, in such
instance the design element is eligible for copyright
protection.
Facts
LEC was invited by architects of the Manansala
Project to submit a design or drawings and specification for
interior and exterior hatch doors. LEC complied by
submitting the said plans, drawing and diskette therefore
that embodies the design and specification required for
metal hatch doors. The final drawings were submitted by
LEC and transferred to the title block of Ski-Fist Balfour
Joint Venture , the Project’s contractor and then stamped for
approval.
LEC was thereafter was contracted by SKI-FB to
manufacture and install interior and exterior hatch door. It
also learned that Metrotech was also subcontracted to
install interior and exterior hatch doors. LEC demanded
Metrotech to cease from infringing the intellectual property
rights, Metrotech however insisted that no copyright
infringement was committed because the hatch doors it
manufactured were patterned in accordance with the
drawings of SKI-FB.
LEC deposited to the National Library the final
shops plans and drawing and specification for the interior
and exterior hatch door of the project. LEC was issued a
certificate of copyright registration showing that it is the
registered owner of the plans, drawing for interior and
exterior hatch.
Metrotech denied copyright infringement
averring that the hatch doors manufactured were functional
invention and are subject to patents and that the record of
the IPO reveals that there is no patent, industrial design or
utility model registration of the LEC hatch doors. Further
there is no copyright infringement because copyright
protection does not extend to objects that are depicted in
illustration or plans
Issue: Whether there is copyright infringement
Ruling
No. Copyright infringement is committed by any
person who shall use the original literary and artistic works
or derivative works without the copyright owner consent in
a manner to violate the foregoing copy and economic right.
For copyright infringement to prevail the evidence on
record must demonstrate 1. Ownership of a validly
copyrighted material by the complainant 2. Infringement of
the copyright by the respondent.
Here, there was no proof that the respondent
reprinted the copyright sketches and drawings of LEC
hatch doors. The raid conducted discovered merely
unfinished hatch doors. Here, the copyright of LEC merely
covers sketches and drawings and not the actual hatch door
they depict.
Copyright is a purely statutory right, the rights
are limited to what the statute confers. It may be obtained
and enjoyed only with respect to subjects and by persons
and on the terms and condition stated in the statute. Hence,
it can only cover those that are enumerated. Since Hatch
doors are not considered as illustration, maps, plans,
sketches , charts etc to be classified as copyrightable class
of work. To constitute as infringement what must be
appropriated are original works of the author * sketches
only and not the actual hatch doors)

Useful article
A hatch door is an object of utility. It is a small door, small
gate or an opening that resembles a window equipped with
escape for use in case of emergency. It is therefore a useful
article. A useful article is defined as having intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information is
excluded from copyright eligibility. The only instance when
a useful article may be subject of copyright protection is
when it incorporates a design element that is physically or
conceptually separable form the underlying product. This
means that the utilitarian article can function without the
design element, in such instance the design element is
eligible for copyright protection.

Here, the hatch doors does not bear any design element that are
physically and conceptually separable, independent and
distinguishable from the hatch door tself. The alleged distinct set of
hinges and distinct jamb were not related necessary hence not
physically or conceptually separable form the hatch door utilitarian
function as apparatus , for emergency egress without them the
hatch door will not function.