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114508, November 19, 1999 Thursday, January 29, 2009 Posted by Coffeeholic Writes Labels: Case Digests, Commercial Law
substantial allegations that raised new issues and necessarily gave respondents a new cause of action.
Moreover, the cancellation of petitioner’s certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to the second application. Facts: In 1970, Escobar filed an application with the oppose Bureau of Patents for the registration of the trademark “Barbizon” for use in horsiers and ladies undergarments It is also to be noted that the oppositions in the first and (IPC No. 686). Private respondent reported Barbizon second cases are based on different laws. Causes of Corporation, a corporation organized and doing action which are distinct and independent from each business under the laws of New York, USA, opposed the other, although out of the same contract, transaction, or application. It was alleged that its trademark is state of facts, may be sued on separately, recovery on confusingly similar with that of Escobar and that the one being no bar to subsequent actions on others. The registration of the said trademark will cause damage to mere fact that the same relief is sought in the its business reputation and goodwill. In 1974, the subsequent action will not render the judgment in the Director of Patents gave due course to the application. prior action operating as res judicata, such as where the Escobar later assigned all his rights and interest over the actions are based on different statutes. trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law. Due to Q. Cerveza Negra means “Black Beer” in Spanish, can it this failure, the Bureau cancelled Escobar’s certificate of be registered? registration. In 1981, Escobar and petitioner separately A. Yes, it has acquired secondary meaning filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed Arce Sons v. Selecta again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 Selecta Biscuit filed a petition for the registration of the bis of the Paris Convention, EO 913 and the two word Selecta as trademark to be used on its bakery Memoranda of the Minister of Trade and Industry and (3) products. Arce filed an opposition saying that it has that its use on the same class of goods amounts to a continuously used that word in its products. It used this violation of the Trademark Law and Art. 189 of the RPC. on its milk products and as the name of a bakery. Petitioner raised the defense of Res Judicata. Director granted trademark because the word as used by Arce points only to the place of business or location Issue: One of the requisites of res judicata is identical of its restaurant. causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action? Held: Arce has made use of Selecta not only as a tradename, indicative of the location of the restaurant but also as a trademark to indicate the goods it offers for Held: No. The issue of ownership of the trademark was sale to the public. The word Selecta is an ordinary or not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark common word but once adopted or coined in connection in the US and other countries, and the international with one’s business as an emblem or as a badge of recognition of the trademark established by extensive authenticity, it may acquire a secondary meaning as to use and advertisement of respondents products for over be exclusively associated with its products and 40 years here and abroad. These are different from the business. issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 Q. Is “premium” a proper mark? but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents A. No. It is descriptive. claims originator of the word and symbol “Barbizon”, as the first and registered user of the mark attached to its Ana Ang v. Toribio Teodoro products which have been sold and advertised would arise for a considerable number of years prior to Teodoro used “Ang Tibay” for slippers and shoes since petitioner’s first application. Indeed, these are 1910. Ang registered “Ang Tibay” for shorts and shirts
g. because geographically or otherwise descriptive. No (?) Q.e. Kodak 3.” Q. generic – never capable of registration b. then there can be unfair competition. 48226. What are the kinds of words? A. and as a trade-name on January 3. • Teodoro filed a complaint against Ang • RTC rendered decision in faor of Ang on the grounds that the two trade-marks are dissimilar and are used on different and non-competing goods • CA reversed the RTC decision and ruled that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes. might nevertheless have been used so long and so exclusively by one producer with reference to his article that. and can be translated to mean “How strong!” Ang Tibay has also acquired a secondary meaning because the exclusive use of the phrase for Teodoro’s product has allowed it to acquire a proprietary connotation. the word or phrase . and that the goods are different and are not likely to mislead the general public as to their origin. • "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. 1915. descriptive – there is immediate association . Issue/Answer: • WON the trademark and tradename “Ang Tibay” is a descriptive word which will bar its registration. As to the argument that the goods are not similar.g. if simultaneous use on them would be likely to cause confusion as to the source or origin. 666. suggestive – requires imegination/deduction 2. common words a.not registrable except when there is secondary meaning. Is the use of famous marks on unrelated goods permissible? A. or used with other words c. fanciful/coined . • Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11. / negative Ratio Decidendi: • The phrase "Ang Tibay" is an exclamation denoting admiration of strength or durability. Held: “Ang Tibay” is not a descriptive term but a fanciful or coined phrase which may be legally appropriated. Issue on who is the lawful registrant: Teodoro • Doctrine of secondary meaning: ◦ This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market. and indoor baseballs since 1910. Q. TORIBIO TEODORO G. Apple Computer ANA L. He claims that Ana Ang has not proven that she spent money for advertising Ang Tibay shirts and pants. The Court says that the proper descriptive term is “matibay” and not “Ang Tibay. ANG vs. Q.e. it will not be permissible.on 1932. 1933. it would prevent the natural expansion of his business and it would cause the business to be confused with the second user. December 14. shoes. • The phrase "ang tibay" is never used adjectively to define or describe an object. Although they are noncompeting. arbitrary . Teodoro filed a complaint to cancel the registration of the TM of Ana Ang. Court held that it is a fanciful or coined term. • He formally registered it as a trade-mark on September 29. Ang Tibay is an exclamation denoting admiration of strength. Also. and established a factory for the manufacture of said articles in the year 1937. that the goods or articles on which the two trademarks are used are similar or belong to the same class. nevertheless. and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. respondent's trade-mark has acquired a secondary meaning. No. The words are classified to: 1. in that trade and to that branch of the purchasing public. Is grammar important? A. 1932. in the manufacture and sale of slippers. although two noncompeting articles may be classified under two different classes by the Patent office. 194 Facts: • Toribio Teodoro has continuously used "Ang Tibay. if simultaneous use will cause confusion.R. Is “Ang Tibay” descriptive? A. Ana Ang claims that the term is descriptive and that there is no secondary meaning attached to the term." both as a trade-mark and as a tradename.
3 the field from which a person may select a trade-mark is practically unlimited. GABRIEL vs. PEREZ G. 1961 an application for registration of the trademark "WONDER" in the Supplemental Register. JOSE R. therefore. Jose R. Jose R.has come to mean that the article was his product. used on unlike goods. 1974 Facts: • Dr. as a mere distributor have the right to register the subject mark in her own name/ negative Ratio Decidendi: • "Because the corporation was allegedly going bankrupt and the members were deserting. respondent Dr. L-24075. • On October 19. • the same trade-mark. 1959. the Respondent terminated the agreement in July. No. the right to register trademark is based on ownership and a mere distributor of a product bearing a trademark. Gabriel • "Because the corporation was allegedly going bankrupt and the members were deserting. of the second user's goods. even if permitted to use said trademark. has no right to and cannot register the said trademark • Petitioner urges that the agreement of exclusive distributorship executed by and between her and respondent vested in her the exclusive ownership of the trademark "WONDER". nevertheless. Yangga who happens to be the brother of the Petitioner Crisanta Y. Perez and the same was only for a term. . or personal source. they would. As observed in another case. and that the labels submitted by the registrant are the very containers bearing the trademark "WONDER" which are owned by her and which she has been exclusively and continuously using in commerce • after Dr. Gabriel claiming that he had been using the subject mark since 1959 filed with the Patent Office a petition for cancellation of the trademark "WONDER from the supplemental register alleging that the registrant was not entitled to register the said trademark at the time of his application for registration • In support of her petition. Perz had perfected his research and obtained a certificate of label. could not cause confusion in trade and that. and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival. 1959) with a certain company named 'Manserco' for the distribution of his soap. he made an agreement (January. and thereafter he asked the Petitioner to become the distributor of his products • Crisanta Y. she further alleged the written contract between her and the registrant (respondent) wherein. January 31. the Respondent terminated the agreement in July. there could be no objection to the use and registration of a well-known mark by a third party for a different class of goods. Republic Act No. • Under Sections 2 and 2-A of the Trademark Law. be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin. petitioner Crisanta Y. and thereafter he asked the Petitioner to become the distributor of his products • Director of Patents rendered his decision denying the petition of Gabriel to cancel the certificate of registration Issue/Answer: • WON Gabriel. Perez filed with the Patents Office on February 23. • It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. CRISANTA Y. Gabriel appears to be a mere distributor of the product by contract with the manufacturer. as amended. But a scrutiny of the provisions of said contract does not yield any right in favor of petitioner other than that expressly granted to her — to be the sole and exclusive distributor of respondent Dr. the latter has recognized her right of use and ownership of said trademark. It was then being managed by Mariano S.R. DR. • They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. according to her. 1959. • Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties. 166. 1962.
or other mark of ownership. but because it is primarily geographically descriptive. & Co. as indentor or broker for S. 1983 Facts: • On December 11. U. broker or indentor can appropriate. business or service of others is entitled to register the same. • Petitioner's act in defraying substantial expenses in the promotion of the Respondent's goods and the printing of the packages are the necessary or essential consequences of Paragraph 6 of the agreement because. • the trademark "WONDER" has long been identified and associated with the product manufactured and produced by the Dr. trade name. 1962. Only owners of the trademark can apply for its registration. invoices and other correspondence of Centennial Mills. the Chief Trademark Examiner declared an interference proceeding between General Milling's application (Serial No. No. as Senior Party-Applicant to determine which party has previously adopted and used the trademark "All Montana. vs. It merely empowers the petitioner as exclusive distributor to own the package and to create a design at her pleasure. 1962 asserting that it started using the trademark on June 30. Unno Commercial Enterprise's contention: • argued that the same trademark had been registered in its favor on March 8." showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon. • the agreement never mentioned transfer of ownership of the trademark.R. • The term owner does not include the importer of the goods bearing the trademark.A. GENERAL MILLING CORPORATION G.S. and Unno's registration (Registration No. • The exclusive distributor does not acquire any proprietary interest in the principal's trademark. as a mere indentor can apply for the registration of the trademark of its principal / negative. however. shipping thousand of bags of wheat flour bearing the trademark "All Montana" were shown by petitioner and maintained that anyone. 1955 and subsequently was licensed to use the same by Centennial Mills. but not the right to appropriate unto herself the sole ownership of the trademark so as to entitle her to registration in the Patent Office.. Director of Patents' decision • the Junior Party-Applicant is adjudged prior user of the trademark ALL MONTANA. Jose R. Inc. respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" to be used in the sale of wheat flour.Perez' product. • As the same trademark had been previously registered in favor of Unno. • various shipments. trade name or service mark used to distinguish his goods. Issue/Answer: • WON Unno. 1956. as Junior/Party-Applicant. the application is remanded to the Chief Trademark Examiner for proper proceeding before issuance of the certificate of registration. 9589). When the applicant is not the owner of the trademark being applied for. and the absolute and registered owner of several trademarks for wheat flour all of which were assigned by it to respondent General Milling . • The Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's ownership of the trademark "All Montana. use and own a particular mark of its own choice although he is not the manufacturer of the goods he deals with. Ratio Decidendi: • The right to register trademark is based on ownership. Inc. L-28554. • Under the Trademark Law only the owner of the trademark. unless such importer is actually the owner thereof in the country from which the goods are imported. as it would redound to her own benefit as distributor. trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. INC. a local firm.H. February 28. documents. Huang Bros. by virtue of a deed of assignment executed on September 20. Perez Cosmetic Laboratory. General Milling Corp's contention: • alleged that it started using the trademark "All Montana" on August 31. may make application for the registration of a foreign trademark. UNNO COMMERCIAL ENTERPRISES. 9732). those activities are normal in the field of sale and distribution. anyway.. business or service from the goods. • A local importer. 1962. whether he is only an importer. he has no right to apply for the registration of the same. service mark. and those acts are incumbent upon her to do.
(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind. indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark.g. • Under Rule 178 of the Rules of the Patent Office in Trademark Cases.g. geographical origin. I. If that place is known for the goods. • a mere importer and distributor acquires no rights in the mark used on the imported goods by the foreign exporter in the absence of an assignment of any kind • Trademarks used and adopted on goods manufactured or packed in a foreign country in behalf of a domestic importer.Corporation. Held: The tradename may be registered. but it may not be entitled to exclusive use of the terms “shirt factory” and “nylon” because the terms are merely descriptive or general terms. broker. Q. Q. • Inasmuch as it was not the owner of the trademark. such as the interference proceeding at bar. Batangas is known for its coffee Exception: If that place is not particularly known for products of that kind. broker. Champagne is a sparkling wine from a particular city in France. provision in question: Section 2-A of the Trademarks Law (Republic Act 166) Ong Ai Gui v. “Xerox” is descriptive or generic? A. merely acted as exclusive distributor of All Montana wheat flour in the Philippines. Only descriptive words can be appropriated by long use. Du Pont filed an opposition on the ground that the word “nylon” was a name coined by Du Pont as a generic name of a synthetic fabric and is a generic term. • ownership of a trademark is not acquired by the mere fact of registration alone. Is a name denoting geographical location registrable as a trademark? A. quantity. Registration does not perfect a trademark right. incapable of appropriation by any single individual to the exclusion of others. the use of which is descriptive and the use would cause confusion in trade. e. time or production of the goods or rendering of the services. 14 the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case. Ong appeals. Q. General rule: Can’t be used when 1. Director Ong Ai Gui filed an application for the registration of the tradename. Baguio Oil.” E. the Senior Party could not be regarded as having used and adopted it. or indentor and distributor are presumed to be owned by the manufacturer or packer. no.g. unless there is a written agreement clearly showing that ownership vests in the importer. Inc. of the registrant's ownership of the trademark and of the exclusive right to the use thereof. quality. 2. Seattle’s Best (k) shapes . Seems to be generic. no other wine can be called Champagne. • Unno Commercial Enterprises. trade name or service mark may apply for its registration and an importer. Can generic terms be appropriated by long use? A. • The Court affirms respondent Director of Patent's decision declaring respondent General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial Enterprises. e. or other characteristics of the goods or services. It induces public to believe that it is manufactured in a place where it is not really manufactured there. broker. This is because all persons have an equal right to produce and vend similar articles and they also have the right to describe them properly and to use appropriate language. Opposition was dismissed but director asked the word “nylon” be disclaimed. Registration merely creates a prima facie presumption of the validity of the registration. and had no right to apply for its registration. Only the owner of a trademark. you can’t register. since it is found in the dictionary as a verb. e. intended purpose. value. “20th Century Nylon Shirts Factory. indentor or distributor.
and was used as a trademark by the owners thereof (the Rosenthals of Maiden Form Co. Provisions in question: Section 2 of Republic Act No. MAIDEN FORM BRASSIERE CO. respondent company alleged that said trademark was first used by it in the United States on October 26. nor any that comes within the purview of Section 4 of Republic Act No. which falls under Class 47 (Foods and Ingredients of Food).vs. it must be intentional and voluntary. Alleged .R. respondent company. "Prelude". 166 as amended by Section 1 of Republic Act 865 PHILIPPINE REFINING CO. ham. the disuse must be permanent and not ephemeral. a foreign corporation. It is urged that said trademark had been used by local brassiere manufacturers since 1948. in accordance with Section 7 of Republic Act No. and in the Philippines on August 31. having found. New York) because they are musically inclined. In its application. 166. a Chinese citizen residing in Iloilo City. • It also appears that respondent company has. without objection on the part of respondent company. July 30. to identify.. unregistrable. filed an application with the Philippine Patent Office for registration of the identical trademark "CAMIA" for his product. on August 13. Petitioner opposed the application claiming that it first used said trademark on his products: lard. 1960. 166 (Trademark Law). INC G. approved for publication in the Official Gazette said trademark of respondent company. butter.. polishing materials and soap of all kinds. Inc. inter alia. adopted other musical terms such as "Etude". therefore. No. and not involuntary or even compulsory. On abandonment of trademark by private defendant: • "To work an abandonment. Issue/Answer: • WON Adagio is a descriptive word incapable of registration / negative Ratio Decidendi: • The evidence shows that the trademark "Adagio" is a musical term. which likewise falls under Class 47. • The trademark "CAMIA" was first used in the Philippines by petitioner on its products in 1922 and registered the same in 1949 • On November 25..R. No. There must be a thoroughgoing discontinuance of any trade-mark use of the mark in question" • "Non-use because of legal restrictions is not evidence of an intent to abandon. L-26676. the different styles or types of its brassieres. filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. ham. 1957. "Chansonette".ANDRES ROMERO vs. 1946 • Director.. that said trademark is "a fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its product. NG SAM G. and "Concerto". • On the other hand. • Director of Patents (of January 17. abrasive detergents. respondent Ng Sam. • Being a musical term. with costs against the appellant. respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. "Over-ture". which means slowly or in an easy manner. likewise. that it is neither a surname nor a geographical term. 1982 Facts: • Private respondent filed with the Philippine Patent Office an application for registration of the trademark "CAMIA" for his product. 1957. 166) of the trademark 'Adagio" for the Brassieres manufactured by it. March 31. 1964 Facts: • On February 12. on the grounds that it is a common descriptive name of an article or substance on which the patent has expired • Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is. cooking oil. 1961) dismissed Romero's petition for cancellation of the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere Co. some of which are likewise classified under Class 47. 1937. • respondent Director of Patents did not err in dismissing the present petition for cancellation of the registered trademark of appellee company. INC. and the decision appealed from is therefore hereby affirmed. • petitioner filed with respondent Director a petition for cancellation of said trademark. it is used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent company. as a trademark. L-18289.
when applied to or used in connection with the goods. • Director of Patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam. Inc’ trademark in international class 33 for various skin treatments. butter. as both marks are spelled in almost the same way and pronounced in the same manner in three syllables. • the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description. then it is apparent that it cannot identify a particular business. especially considering that the covered classes similarly pertain to treatments for the skin. registration of a similar or even identical mark may be allowed. • The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. as to be likely. capable to indicate origin. and the public will not be deceived. • Opposer's products are ordinary day-to-day household items whereas ham is not necessarily so. • Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. the likelihood of confusion is still apparent. and he who first adopted it cannot be injured by any subsequent appropriation or imitation by others. as in this case. This prompted horphag to demand that prosource cease and desist from using pco-genols . opposed the application The Supreme Court sustained the opposition. while the two marks are presented differently. As in the Nestle case. 1959. although the products of each of the contending marks belong to separate and different classes." • the business of the parties are non-competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion. In addition. similar to one sold by zuellig pharma corporation bearing horphag’s pycnogenol mark. cooking oil and soap are so related that the use of the same trademark "CAMIA'' on said goods would likely result in confusion as to their source or origin. • A trademark is designed to identify the user. the Supreme Court stated that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. / negative Ratio Decidendi: • the right to a trademark is a limited one. But it should be so distinctive and sufficiently original as to enable those who come into contact with it to recognize instantly the identity of the user. provision: Section 4(d) of Trademark law "a mark which consists of or comprises a mark or tradename which so resembles a mark or tradename registered in the Philippines or a mark or tradename previously used in the Philippines by another and not abandoned. which is ham. Thus. the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin. • where no confusion is likely to arise. much less cause damage to petitioner. Myra. and those of petitioner consisting of lard." • While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food). • if a mark is so commonplace that it cannot be readily distinguished from others. this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. in the sense that others may use the same mark on unrelated goods." Dermaline v Myra Dermaline applied to the IPO to register the “Dermaline Dermaline. significant and distinctive. "It must be affirmative and definite. business services of the applicant. the registrant of Dermalin for pharmaceutical products in international class 5.finding that `the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin.date of first use of the trademark by respondent was on February 10. to cause confusion or mistake or to deceive purchasers. the court found that. this does not remove the likelihood that the purchasing public will associate bot marks with each other. Applying the dominancy test. Issue/Answer: • WON the product of respondent Ng Sam. Prosource internation v Horphag Horphag discovered that prosource was distributin a food supplement bearing the pco-genols mark.
sold in many parts of the world and which has been because from 1996 until june 2000.Co.” “Crocodile Device” and a composite mark especially since they both refer to food supplements. Co. was issued certificate of registration for the trademark “Chemise Both the Supreme Court and the Court of Appeals Lacoste and Q Crocodile Device” both in the affirmed the lower court’s decision. 1964. Hemandas filed motion to quash the warrants. In 1980. La Chemise Lacoste filed a petition for certiorari. it infringed marketed in the Philippines (notably by Rustans) since horphag’s product by using the trademark. Hemandas Q. the IPO-ODG applied the dominancy test. Berris claims that the element “D-10” is the dominant feature of the contending marks. In 1983. not a mere administrative case. Pycnogenol GR 63796-97. the contending marks are Berris Agricultural Co. consisting of the word “Lacoste” and a representation of Prosource’s liability was not limited by withdrawing a crocodile/alligator. claims that he is entitled to the registration of the mark “NS D-10 PLUS” as he was able to secure a registration for the same from the Fertilizer and Pesticide Authority (FPA. Games and Garments (Gobindram Hemandas. demanding that it cease and desist may properly quash the issued warrant for lack of from using the brand pco-genols for being confusingly probable cause. 20 July 2007 In this case. which the court granted. which function properly belongs to the IPO. validity Horphag filed a tgrademark infringement complaint and originality will not be presumed and the trial court against proscource. Issue: Whether the proceedings before the patent office is a prejudicial question that need to be resolved before the criminal action for unfair competition may be pursued. Gutierrez Jr. Berris Agricultural Co. La Chemise Lacoste vs. La Chemise Lacoste filed with the NBI a lettercomplaint alleging acts of unfair competition committed by Hemandas and requesting the agency’s assistance. After examining the contending marks. the actual owner of the trademarks “Lacoste. and the goods ordered to be returned. First Division. (J) which appears to be merely descriptive and so open for trademark registration by combining it with other words. used on clothings and other goods products bearing the pco-genols mark for the market. Abyadang v. sound confusingly similar. Dadodette Enterprises use of pco-genols and withdrew the products bearing the Where there is sufficient proof that the copyrighted pco-genols mark. Abyadang’s mark “NS D-10 PLUS” is confusingly similar to Berri’s “D-10 80WP” mark. FPA’s mandate does not include the determination of rightful ownership of a trademark. for brevity) “D-10 80 WP” and Norvy Abyadang’s “NS D-10 PLUS”. Held: No. A search warrant was issued by the trial court.” (Appeal No. The search warrants were recalled. It alswo changed its mark romp coproducts are not original creations but are readily genols to pco-plus. The proceedings pending before the Patent Office do not partake of the nature of a prejudicial question which must first be definitely resolved. Facts: La chemise Lacoste is a French corporation and The marks when read. The case which suspends the criminal action must be a civil case.) opposed the registration of “Lacoste. 21 May 1984. Abyadang’s FPA registration for his mark is of no moment – while he is the first to register his brand with the FPA. similar to its trademark pycnogenol.’s (Berris. which is determinative of the innocence or guilt of the accused. La likelihood of confusion is the gravamen of trademark Chemise Lacoste SA filed for the registration of the infringement. the IPOODG ruled that the element “D-10” is undeniably the dominant features of both marks.” “Chemise Lacoste. The issue whether a trademark used is different from another’s trademark is a matter of defense and will be better resolved in the criminal proceedings before a . as such. 14-06-13). available in the market under various brands. stating that the supplemental and Principal Registry. for brevity) prior to Berris’. “Crocodile device” and “Lacoste”. In sustaining the Berris’ claims. assignee of Norvy A. Fernandez The trial court decided in favour of horphag. In 1975 and 1977. both covering fungicides. the FPA is another administrative agency the function of which is to regulate the fertilizer industry.Without notifying horphag. Hemandas Q. and pco-genols have the same suffix which is genol. prosource discontinued the Manly Sportswear v. Various goods and articles were seized upon the execution of the warrants. on the other hand. Abyadang.
appellee cannot be said to have infringed upon the Copyright Law. 1987] The principal issues in this case are whether or not the playing and singing of musical compositions which have been copyrighted under the provisions of the Copyright Law inside the establishment of the defendant-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines. La Chemise Lacoste is world renowned mark. The copying must produce an “injurious effect”. it is admitted that the patrons of the restaurant in question pay only for the food and drinks and apparently not for listening to the music. 131522. effectively cancels the registration of contrary claimants to the enumerated marks. Robles and GoodWill is the author and publisher of the book entitled Developing English Proficiency (DEP). Makati. which is a case of plagiarism and copyright infringement. the injury consists in that Robles lifted from Habana’s book materials that were the result of the latter’s research work and compilation and misrepresented them as her own. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964. scheme of presentation. Nevertheless. In the case at bar. Robles still committed copyright infringement. After an itemized examination and comparison of the two books (CET and DEP). Appellee's allegation that the composers of the contested musical compositions waived their right in favor of the general public when they allowed their intellectual creations to become property of the public domain before applying for the corresponding copyrights for the same is correct. Under the circumstances. Issues Whether or not. Here. if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted. Mar. thematic and sequential similarity between DEP and CET. It must be noted that one may be declared an unfair competitor even if his competing trademark is registered. However. copying alone is not what is prohibited. if not all together a copy of Habana’s book. try to revise their work they encountered by chance that the work of Robles (DEP) is similar of the contents. the music provided is for the purpose of entertaining and amusing the customers in order to make the establishment more attractive and desirable. Robles ignored the demands. Robles G. the combo was paid as independent contractors by the appellant. Habana found that several pages of the Robles’ book are similar. a complaint for “Infringement and/or unfair competition with damages” against private respondents. It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of additional income produced by the bigger volume of business which the entertainment was programmed to attract. whether or not appellee can be held liable therefor. No. Indeed. As found by the trial court. Robles committed no copyright infringement? Held No.R. and assuming that there were indeed public performances for profit. When Habana et al.court of justice instead of raising it as a preliminary matter in an administrative proceeding. and her failure to acknowledge the same in her book is an infringement of petitioners’ copyrights. and are therefore beyond the protection of the Copyright Law. She circulated the book DEP for commercial use and did not acknowledge Habana as her source. hence. Consequently. It will be noted that for the playing and singing the musical compositions involved. Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register. Tan [L-36402. Habana vs. Habana then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of Robles’ works.” FILSCAP v. 1999 Facts Habana is the author of the copyrighted book entitled College English for Today (CET). which include “Lacoste. July 19. despite the apparent textual. Habana et al. . 16. it is clear that the musical compositions in question had long become public property. Robles’ act of lifting from the book of petitioners substantial portions of discussions and examples. Hemandas cannot be allowed to continue the trademark “Lacoste” for the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce. and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property. filed with the Regional Trial Court. it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant constituted performance for profit contemplated by the Copyright Law. illustrations and illustrative examples in their own book. In cases of infringement.
he at least knew that what he was copying was not his. which is a synonymous term in this connection. under Section 184. if appearing on the work. that is sufficient in point of law to constitute piracy. consists in the doing by any person. and he copied at his peril. (n) (d) Reproduction of Published Work Sec. the work is appropriated. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright. Notes When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work. If so much is taken that the value of the original work is substantially diminished. there is a clear case of appropriation of copyrighted work for her benefit that Robles committed. and. where the reproduction is made by a natural person exclusively for . That the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style as the original of a building to which that copyright relates.Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original: Provided. Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose.187. did not know whether or not he was infringing any copyright. or the labors of the original author are substantially and to an injurious extent appropriated by another.1 (b). there is an infringement of copyright and to an injurious extent. . Reproduction of Published Work. 186 Section 186. and subject to the provisions of Subsection 187. of anything the sole right to do which is conferred by statute on the owner of the copyright. Habana’s work as authors is the product of their long and assiduous research and for another to represent it as her own is injury enough. In copyrighting books the purpose is to give protection to the intellectual product of an author. If so much is taken that the value of the original is sensibly diminished. in such cases. This is precisely what the law on copyright protected. including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author. without the consent of the owner of the copyright. the amount of matter copied from the copyrighted work is an important consideration.2.187. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. it is not necessary that the whole or even a large portion of the work shall have been copied. therefore.1. protected by law. and it is no defense that the pirate. or piracy. 187. (c) Work of Architecture Sec. and infringement of copyright. Piracy A copy of a piracy is an infringement of the original. . the private reproduction of a published work in a single copy. or even a large portion of it.2 Section 187.Hence. Work of Architecture. be copied. Notwithstanding the provision of Section 177. In determining the question of infringement. are mentioned. To constitute infringement.
That every library which. (c) A compilation of data and other materials.188. P. Importation for Personal Purposes. (d) A computer program except as provided in Section 189.6. is entitled to receive copies of a printed work. That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose. to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. .6.2. 189. 190 Section 190. shall be permitted. make a single copy of the work by reprographic reproduction: (a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form. when this is considered expedient. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section.3. and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. but subject to . 189. a computer program. for which the computer program has been obtained.1 shall not extend to the reproduction of: (a) A work of architecture in the form of building or other construction.research and private study. if necessary in the event that it is lost. any library or archive whose activities are not for profit may. destroyed or rendered unusable and copies are not available with the publisher. shall be entitled. . 49a) (f) Reproduction of Computer Program Sec.1. it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works. (b) An entire book. when special reasons so require. and to the extent. the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted. in the permanent collection of another similar library or archive. unless the volume. without the authorization of the author of copyright owner. by the lawful owner of that computer program: Provided.2.2.189. to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them. and (b) Archival purposes. or a substantial part thereof. destroyed or rendered unusable. by law. or to replace. destroyed or rendered unusable. Notwithstanding the above provisions. (n) (g) Importation for Personal Purposes Sec. without the authorization of the owner of copyright in the work. (b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them. The permission granted under Subsection 187.190. Notwithstanding the provisions of Section 177. 189 Section 189. This provision shall be without prejudice to the application of Section 185 whenever appropriate. a copy which has been lost. or other owner of copyright in. and (c) Where the making of such a copy is in order to preserve and. Notwithstanding the provision of Subsection 177. for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost. Reproduction of Computer Program.1. tome or part is out of stock: Provided. without the authorization of the author of. replace a copy. . 188. Notwithstanding the provisions of Subsection 177.D.1. or of a musical work in graphic form by reprographic means. Reprographic Reproduction by Libraries. and. (n) (e) Reprographic Reproduction by Libraries Sec. 13. 188 Section 188. (Sec. and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. 187.
for the purpose of completing the records of the National Library and the Supreme Court Library. 26. be registered and deposited with it. the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. (Sec.D. P. 30.After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172.Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner.D. the required copies or reproductions are not delivered and the fee is not paid. 27.2 and 172. 190. 172. 49) (9) Registration and Deposit with National Library and Supreme Court Library Sec. in copies produced after the creator's death. the work under the following circumstances: (a) When copies of the work are not available in the Philippines and: (i) Not more than one (1) copy at one time is imported for strictly individual use only.2. there shall. 192. and the year of its first publication. . 227.D. the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. 49a) . the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library.2. 49a) Section 192. college. or free public library in the Philippines. or for any state school. Subject to the approval of the Secretary of Finance. No. Notice of Copyright. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act. 228 CHAPTER IX DEPOSIT AND NOTICE Section 191. university. No. If.3. That such copies do not exceed three (3). P. within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit. the year of such death. by personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe. within three (3) weeks. 190. and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor's right of action. or educational society or institution duly incorporated or registered. or is for the encouragement of the fine arts. .3 of this Act. (Sec. No. is not for sale but for the use only of any religious. consisting of not more than three (3) such copies or likenesses in any one invoice. Registration and Deposit with National Library and the Supreme Court Library.the limitation under the Subsection 185. (Sec. P. or other owner of copyright in. and. or (ii) The importation is by authority of and for the use of the Philippine Government. 191. (b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided. charitable. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. or (iii) The importation.1.
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