LAW ON INTELLECTUAL PROPERTY

CASE LIST

Badilla
1. Santos v. McCullough Printing Co., 12 SCRA 321 (1964)
2. Unilever Philippines v. CA, G.R. No. 119280 (2006)
3. Ching v. Salinas, G.R. No. 161295 (2005)
4. Olano v. Lim Eng, G.R. No. 195835 (2016)
5. Joaquin v. Drilon, G.R. No. 108946 (1999)
6. ABS-CBN v. Gozon, G.R. No. 195956 (2015)
7. Kho v. CA
8. Olano v. Co, G.R. No. 196835 (2016)
9. Pearl & Dean [Phil.] v. Shoemart, Inc. et al. G.R. No. 148222 (2003)
10. Habana v. Robles, G.R. No. 131522 (1999)
11. Juan v. Juan, G.R. No. 221732 (2017)
12. Microsoft Corporation v. Manansala, G.R. No. 166391 (2015)
13. ABS-CBN v. PMMSI, (19 January 2009)

Cornejo
14. Mirpuri v. CA
15. W Land Holding, Inc. v. Starwook Hotels and Resorts Worldwide, Inc., G.R. No.
222366 (2017)
16. Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850 (2020)
17. Birkenstock Orthopaedie GMBH and Co. KG v. Philippine Shoe Expo Marketing
Corporation, G.R. No. 194307 (2013)
18. Arce & Sons v. Selecta Biscuit, Co., Inc. (1961)
19. Ang v. Teodoro, 74 Phil. 50 (1942)
20. Ecole De Cuisine Manille (Cordon Bleu of the Philippines) v. Renau Contreau &
Cie, G.R. No. 185830 (2013)
21. Prosource International, Inc. v. Horphag research management, G.R. No. 180073
(2009)
22. Mighty Corporation v. E&J Gallo, 434 SCRA 473 (2004)
23. Asia-Pacific Resources International Holdings, Ltd. V. Paparone, Inc. G.R. Nos.
213365-66 (2018)
24. Somboonsakdikul v. Orlane S.A., (2017)
25. Kolin Electronics, Inc. v. Kolin Philippines International, Inc., G.R. No. 228164
(2021)

Guiam
26. Levi’s Strauss & Co., v. Sevilla, G.R. No. 219744 (2021)
27. McDonald’s Corp. v. L.C. Big Mak Burger, Inc. 437 SCRA 10 (2004)
28. Societe Des Produit Nestle S.A. v. CA, 356 SCRA 207, 217
29. Sketchers USA, Inc. v. Interpacific Industrial Trading Corp., G.R. No. 164321
(2011)
30. UFC Phils v. Barrio Fiesta Mfg., G.R. No. 198889 (2016)
31. Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 1900065 (2010)
32. Kensonic, Inc. v. Uniline Multi-resources, Inc., G.R. Nos. 211820-21 and
211834-35 (2018)
33. Shell Company of the Philippines v. CA, G.R. No. L-49145 (1979)
34. Esso Standard Eastern, Inc. v. CA, 116 SCRA 336 (1982)
35. Canon Kabushiki Kaisha v. CA and NSR Rubber Corporation, 336 SCRA 266
(2000)
36. Taiwan Kolin Corp., Ltd. v. Kolins Electronics Co., G.R. No. 209843 (2015)
37. Acoje Mining Co., Inc. v. Director of Patents, No. L-28744 (1971)

Pallasigue
38. Philippine Refining Co., Inc., v. Ng Sam and Director of Patents, No. L-26676
(1982)
39. Hicock Manufacturing Co., Inc. v. CA and Santos Lim Bun Liong, L-44707 (1982)
40. 246 Corp. v. Daway, 416 SCRA 315 (2003)
41. Republic Gas Corp., et al v. Petron, et al (2013)
42. Levi Strauss & Co., v. Clinton Aparelle, Inc. G.R. No. 138900 (2005)
43. Coffee Partners, Inc., v. San Francisco Coffee and Roastery, Inc., G.R. no.
169504 (2010)
44. Superior Commercial Enterprises, Inc.v. Kunnan Enterprises Ltd., G.R. No.
169974 (2010)
45. Del Monte Corp., et al. v. CA, 181 SCRA 410
46. E.I. Dupont De Nemours and Co. v. IPO, G.R. No. 174379 (2016)
47. Keeler v. Standard Folding-Bed Co., 157 U.S. 659 (1895)
48. Creser Precision Systems, inc. v. CA, 286 SCRA 13 (1998)
49. Smith Kline Beckman Corp. v. The Honorable CA, G.R. No. 126627 (2003)
50. Air Philippines Corp. v. Pennswell, Inc., G.R. No. 172835 (2007)
 CASE # - CASE NAME
(ex. 1 - Santos v. McCollough Printing Co., 12 SCRA 321 (1964))

Facts:

Issue:

Ruling:

1 - Santos v. McCollough Printing Co., 12 SCRA 321 (1964)

Facts: This is an action for damages based on the provisions of Articles 721 and 722
of the Civil Code of the Philippines, allegedly on the unauthorized use, adoption and
appropriation by the defendant company of plaintiff's intellectual creation or artistic
design for a Christmas Card. The design depicts "a Philippine rural Christmas time
scene consisting of a woman and a child in a nipa hut adorned with a star-shaped
lantern and a man astride a carabao, beside a tree, underneath which appears the
plaintiff's pen name, Malang."

The complaint alleges that plaintiff Mauro Malang Santos designed for former
Ambassador Felino Neri, for his personal Christmas Card greetings for the year 1959,
the artistic motif in question. The following year the defendant McCullough Printing
Company, without the knowledge and authority of plaintiff, displayed the very design
in its album of Christmas cards and offered it for sale, for a price. For such an
unauthorized act of the defendant, plaintiff suffered moral damages to the tune of
P16,000.00, because it has placed plaintiff's professional integrity and ethics under
serious question and caused him grave embarrassment before Ambassador Neri. He
further prayed for the additional sum of P3,000.00 by way of attorney's fee.

Issue: Whether Santos is entitled for protection, notwithstanding the fact that he has
not copyrighted his design.

Ruling: No.
The lower court dismisses the complaint which the Supreme Court affirmed. Santos
did not choose to protect his intellectual creation by a copyright. The fact that the
design was used in the Christmas card of Ambassador Neri who distributed 800
copies thereof among his friends during the Christmas season of 1959, shows the
same was published. Unless satisfactory explained a delay in applying for a copyright,
of more than 30 days from the date of its publication, converts the property to one of
public domain.

Since the name of the author appears in each of the alleged infringing copies of
intellectual creation, the defendant may not be said to have pirated the work nor guilty
of plagiarism. Consequently, the complaint does not state a cause of action against
the defendant. The Supreme Court held that Santos is not entitled to a protection.
Rules of Practice in the Philippine Patent Office relating to the Registration of
Copyright Claims.

“An intellectual creation should be copyrighted 30 days after its publication, if

made in Manila, or within 60 days if made elsewhere, failure of which renders
such creation public property.”

When the purpose is limited publication, but the effect is general publication,
irrevocable rights thereupon become vested in the public, in consequence of
which enforcement of the restriction becomes impossible.

2 - Unilever Philippines v. CA, G.R. No. 119280 (2006)

Facts: As early as 1982, a P&G subsidiary in Italy used a key visual in the
advertisement of its laundry detergent and bleaching products. This key visual known
as the double-tug or tac-tac demonstration shows the fabric being held by both hands
and stretched sideways The tac-tac was conceptualized for P&G by the advertising
agency Milano and Gray of Italy in 1982. The tac-tac was used in the same year in an
advertisement entitled All aperto to demonstrate the effect on fabrics of one of P&GPs
products, a liquid bleach called Ace. Since then, P&G has used the tac-tac key visual
in the advertisement of its products. In fact, in 1986, in Italy, the tac-tac key visual was
used in the television commercial for Ace entitled Kite. P&G has used the same
distinctive tac-tac key visual to local consumers in the Philippines.

Substantially and materially imitating the aforesaid tac-tac key visual of P&GP and in
blatant disregard of P&GPs intellectual property rights, Unilever on 24 July 1993
started airing a 60 second television commercial TVC of its Breeze Powerwhite
laundry product called Porky. The said TVC included a stretching visual presentation
and sound effects almost [identical] or substantially similar to P&GPs tac-tac key
visual.

On July 15, 1994, P&GP aired in the Philippines, the same Kite television
advertisement it used in Italy in 1986, merely dubbing the Italian language with
Filipino for the same produce Ace bleaching liquid which P&GP now markets in the
Philippines. On August 1, 1994, Unilever filed a Complaint with the Advertising Board
of the Philippines to prevent P&GP from airing the Kite television advertisement. On
August 26, 1994, Judge Gorospe issued an order granting a temporary restraining
order and setting it for hearing on September 2, 1994 for Unilever to show cause why
the writ of preliminary injunction should not issue

On September 21, 1994, petitioner appealed to the CA assigning the following errors
allegedly committed by the court a quo. On February 24, 1995, the CA rendered its
decision finding that Judge Gorospe did not act with grave abuse of discretion in
issuing the disputed order. The petition for certiorari was thus dismissed for lack of
merit. In this petition for review under Rule 45 of the Rules of Court, petitioner assails
the February 24, 1995 decision of the Court of Appeals (CA) in CAG. R. SP No.
35242 entitled Unilever Philippines (PRC), Inc. v. Honorable Fernando V. Gorospe, Jr.
and Procter and Gamble Philippines, Inc. (P&GP) which affirmed the issuance by the
court a quo of a writ of preliminary injunction against it. The writ enjoined petitioner
from using and airing, until further orders of the court, certain television commercials
for its laundry products claimed to be identical or similar to its double tug or tactac key
visual.

Issue: Whether copyright over literary and works is vested from the moment of
creation

Ruling: YES. Petitioner does not deny that the questioned TV advertisements are
substantially similar to P&GPs double tug or tac-tac key visual. However, it submits
that P&GP is not entitled to the relief demanded, which is to enjoin petitioner from
airing said TV advertisements, for the reason that petitioner has Certificates of
Copyright Registration for which advertisements while P&GP has none with respect to
its double-tug or tac-tac key visual. In other words, it is petitioners' contention that
P&GP is not entitled to any protection because it has not registered with the National
Library the very TV commercials which it claims have been infringed by petitioner.

We(SC) disagree. Section 2 of PD 49 stipulates that the copyright for a work or

intellectual creation subsists from the moment of its creation. Accordingly, the
creator acquires copyright for his work right upon its creation. Contrary to
petitioners' contention, the intellectual creators exercise and enjoyment of
copyright for his work and the protection given by law to him is not contingent
or dependent on any formality or registration. Therefore, taking the material
allegations of paragraphs 1.3 to 1.5 of P&GP verified Complaint in the context of PD
49, it cannot be seriously doubted that at least, for purposes of determining whether
preliminary injunction should issue during the pendency of the case, P&GP is entitled
to the injunctive relief prayed for in its Complaint.

WHEREFORE, the petition is hereby DENIED.

3 - Ching v. Salinas, G.R. No. 161295 (2005)

Facts: Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring
Eye Bushing for Automobile, for which he holds certificates of copyright registration.
Petitioner’s request to the NBI to apprehend and prosecute illegal manufacturers of
his work led to the issuance of search warrants against respondent Salinas, alleged to
be reproducing and distributing said models in violation of the IP Code. Respondent
moved to quash the warrants on the ground that petitioner’s work is not artistic in
nature and is a proper subject of a patent, not copyright. Petitioner insists that the IP
Code protects a work from the moment of its creation regardless of its nature or
purpose. The trial court quashed the warrants. Petitioner argues that the copyright
certificates over the model are prima facie evidence of its validity. CA affirmed the trial
court’s decision.

Issue: Whether petitioner’s model is an artistic work subject to copyright

protection.

Ruling: NO. As gleaned from the specifications appended to the application for a
copyright certificate filed by the petitioner, the said Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion are merely utility models. From the
description of the models and their objectives, these articles are useful articles which
are defined as one having an intrinsic utilitarian function that is not merely to portray
the appearance of the article or to convey information. Plainly, these are not literary or
artistic works. They are not intellectual creations in the literary and artistic domain, or
works of applied art. They are certainly not ornamental designs or one having
decorative quality or value. Indeed, while works of applied art, original intellectual,
literary and artistic works are copyrightable, useful articles and works of
industrial design are not. A useful article may be copyrightable only if and only
to the extent that such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing
independently of the utilitarian aspects of the article. In this case, the bushing and
cushion are not works of art. They are, as the petitioner himself admitted, utility
models which may be the subject of a patent.

4 - Olano v. Lim Eng, G.R. No. 195835 (2016)

Facts: The petitioners are the officers and/or directors of Metrotech Steel Industries,
Inc. Lim Eng Co (respondent) is the Chairman of LEC Steel Manufacturing
Corporation, a company which specializes in architectural metal manufacturing.

In 2002, LEC was invited by the Manansala Projecta high-end residential building in
Rockwell Center, Makati, to submit design/drawings for interior and exterior hatch
doors. LEC complied by submitting shop plans/drawings embodying the designs and
specifications required for the metal hatch doors.

LEC was thereafter subcontracted by SKI-FB (the Manansala Project's contractor) to

manufacture and install interior and exterior hatch doors for the 7th to 22nd floors of
the Project based on the final shop plans/drawings. LEC learned that Metrotech was
also subcontracted to install interior and exterior hatch doors for the Manansala
Project's 23rd to 41st floors.

On June 24, 2004, LEC demanded Metrotech to cease from infringing its 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 provided by SKI-FB.
On July 2, 2004, LEC deposited with the National Library the final designs and for the
interior and exterior hatch doors of the Project. On July 6, 2004, LEC was issued a
Certificate of Copyright Registration with Nos. 1-2004-13 and 1-2004-14 and Deposit
showing that it is the registered owner of plans/drawings for interior and exterior hatch
doors. This copyright pertains to class work "I" under Section 172 of RA. 8293, The
Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans,
sketches, charts and three-dimensional works relative to geography, topography,
architecture or science."

On December 9, 2004, LEC was issued another Certificate of Copyright Registration

and Deposit showing that it is the registered owner of plans/drawings for interior and
exterior hatch doors which is classified under Section 172(h) of R.A. No. 8293 as
"original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art."

The LEC requested for a search warrant in the premises of Metrotech but the RTC
quashed the warrant on the ground that copyright infringement was not established.
However, the raid conducted by the NBI on Metrotech's premises yielded no copies of
LEC's copyrighted sketches/drawings of hatch doors. What were discovered instead
were finished and unfinished hatch doors. Thus, the LEC filed a Complaint before the
DOJ against Metrotech for copyright infringement.

The investigating prosecutor of the DOJ dismissed the LEC complaint based on
inadequate evidence showing that: (1) the petitioners committed the prohibited acts
under Section 177 of R.A. No. 8293; and (2) the interior and exterior hatch doors of
the petitioners are among the classes of copyrightable work enumerated in Sections
172 and 173 of the same law.

The respondent then sought recourse before the CA via a petition for certiorari
ascribing grave abuse of discretion on the part of the DOJ. The CA granted the
petition finding that there is probable cause for copyright infringement against
Metrotech. Hence, Metrotech appealed.

Issue: Whether the manufacturing of hatch doors fall within the purview of
copyright infringement

Ruling: No. Absent originality and copyrightability as elements of a valid

copyright ownership, no infringement can subsist. A copyright refers to "the
right granted by a statute to the proprietor of an intellectual production to its
exclusive use and enjoyment to the extent specified in the statute." Under
Section 177 of R.A. No. 8293, the Copyright or Economic Rights consist of the
exclusive right to carry out, authorize or prevent the following acts:
177.1 Reproduction of the work or substantial portion of the work;
177.2 Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3 The first public distribution of the original and each copy of the work by sale or
other forms of transfer of ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a
work embodied in a sound recording, a computer program, a compilation of data and
other materials or a musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental;
177.5 Public display of the original or a copy of the work;
177.6 Public performance of the work; and
177.7 Other communication to the public of the work.

Copyright infringement is thus committed by any person who shall use original
literary or artistic works, or derivative works, without the copyright owner's
consent in such a manner as to violate the foregoing copy and economic rights.
For a claim of copyright infringement to prevail, the evidence on record must
demonstrate: (1) ownership of a validly copyrighted material by the
complainant; and (2) infringement of the copyright by the respondent. While
both elements subsist in the records, they did not simultaneously concur so as to
substantiate infringement of LEC's two sets of copyright registrations.

Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I"
under Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans,
sketches, charts and three-dimensional works relative to geography, topography,
architecture or science." As such, LEC's copyright protection there covered only the
hatch door sketches/drawings and not the actual hatch door they depict.

LEC failed to substantiate the alleged reproduction of the drawings/sketches of hatch

doors copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14.
There is no proof that Metrotech reprinted the copyrighted sketches/drawings of LEC's
hatch doors. What was found in the raid conducted by the NBI were only finished and
unfinished hatch doors, not the no copies or reproduction of LEC's copyrighted
sketches/drawings of hatch doors. As the Court held in Pearl and Dean (Philippines),
Incorporated v. Shoemart, Incorporated: Since the hatch doors cannot be considered
as either illustrations, maps, plans, sketches, charts and three-dimensional works
relative to geography, topography, architecture or science, to be properly classified as
a copyrightable class "I" work, what was copyrighted were their sketches/drawings
only, and not the actual hatch doors themselves. To constitute infringement, the
usurper must have copied or appropriated the original work of an author or copyright
proprietor, absent copying, there can be no infringement of copyright. "Unlike a patent,
a copyright gives no exclusive right to the art disclosed; protection is given only to the
expression of the idea, not the idea itself." With regard to LEC's Certificate of
Registration Nos. H-2004-566 and H-2004-567, the Court finds that the ownership
thereof was not established by the evidence on record because the element of
copyrightability is absent. "Ownership of copyrighted material is shown by proof of
originality and copyrightability." While it is true that where the complainant presents a
copyright certificate in support of the claim of infringement, the validity and ownership
of the copyright is presumed.
This presumption, however, is rebuttable and it cannot be sustained where other
evidence in the record casts doubt on the question of ownership, as in the instant
case. Moreover, "the presumption of validity to a certificate of copyright registration
merely orders the burden of proof. The applicant should not ordinarily be forced, in the
first instance, to prove all the multiple facts that underline the validity of the copyright
unless the respondent, effectively challenging them, shifts the burden of doing so to
the applicant."

Here, evidence negating originality and copyrightability as elements of copyright

ownership was satisfactorily proffered against LEC's certificate of registration. The
following averments were not successfully rebuffed by LEC: [T]he hinges on LEC's
"hatch doors" have no ornamental or artistic value. In fact, they are just similar to
hinges found in truck doors that had been in common use since the 1960's. The
gaskets on LEC's "hatch doors", aside from not being ornamental or artistic, were
merely procured from a company named Pemko and are not original creations of
LEC. The locking devices in LEC's "hatch doors" are ordinary drawer locks commonly
used in furniture and office desks. From the foregoing description, it is clear that the
hatch doors were not artistic works within the meaning of copyright laws. A
copyrightable work refers to literary and artistic works defined as original intellectual
creations in the literary and artistic domain.

A hatch door, by its nature, is an object of utility. It is defined as a small door, small
gate or an opening that resembles a window equipped with an escape for use in case
of fire or emergency. It is thus by nature, functional and utilitarian serving as egress
access during emergency. It is not primarily an artistic creation but rather an object of
utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a
whole, is not eligible for copyright. A "useful article" defined as an article "having an
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 the subject of copyright
protection is when it incorporates a design element that is physically or
conceptually separable from the underlying product. This means that the
utilitarian article can function without the design element. In such an instance,
the design element is eligible for copyright protection.

A belt, being an object utility with the function of preventing one's pants from falling
down, is in itself not copyrightable. However, an ornately designed belt buckle which
is irrelevant to or did not enhance the belt's function hence, conceptually separable
from the belt, is eligible for copyright. It is copyrightable as a sculptural work with
independent aesthetic value, and not as an integral element of the belt's functionality.

A table lamp is not copyrightable because it is a functional object intended for the
purpose of providing illumination in a room. The general shape of a table lamp is
likewise not copyrightable because it contributes to the lamp's ability to illuminate the
reaches of a room. But, a lamp base in the form of a statue of male and female
dancing figures made of semi vitreous china is copyrightable as a work of art because
it is unrelated to the lamp's utilitarian function as a device used to combat darkness. In
the present case, LEC's hatch doors bore no design elements that are physically and
conceptually separable, independent and distinguishable from the hatch door itself.

More importantly, they are already existing articles of manufacture sourced from
different suppliers. Based on the records, it is unrebutted that: (a) the hinges are
similar to those used in truck doors; (b) the gaskets were procured from a company
named Pemko and are not original creations of LEC; and (c) the locking device are
ordinary drawer locks commonly used in furniture and office desks. Being articles of
manufacture already in existence, they cannot be deemed as original creations. As
earlier stated, valid copyright ownership denotes originality of the copyrighted
material.

Originality means that the material was not copied, evidences at least minimal
creativity and was independently created by the author. It connotes production as
a result of independent labor. LEC did not produce the door jambs and hinges; it
bought or acquired them from suppliers and thereafter affixed them to the hatch
doors. No independent original creation can be deduced from such acts.

5 - Joaquin v. Drilon, G.R. No. 108946 (1999)

Facts: Petitioner BJ Productions is a holder/grantee of a Certificate of Copyright No.

M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from
1970 to 1977. In 1973, they submitted to the National Library an addendum specifying
the shows format and style of presentation. Petitioner Joaquin, president of BJ
Productions, while watching TV on RPN Channel 9 in 1991, saw an episode of It’s a
Date, produced by IXL Productions. He immediately wrote a letter to Gabriel Zosa,
president of IXL Productions that the TV segment was similar to Rhoda and Me. Zosa
met with Joaquin and apologized, but still continued airing It’s a Date. Zosa also
sought to register its TV segment and the National Library issued a copyright in its
favor on August 14, 1991.

Petitioner then filed a criminal case for violation of P.D. 49 against Zosa and officers of
RPN Channel 9, and the Assistant Prosecutor found probable cause. Secretary Drilon
reversed the decision of the Assistant Prosecutor and ordered dismissal. The reversal
was because of the fact that Petitioner failed to present the master tape to prove
infringement. Petitioner challenged the decision before the Supreme Court.

Issue: Whether the concept of a TV show is copyrightable? In any case, can

probable cause be established in a copyright case without a master tape

Ruling: No. The essence of a copyright infringement is the similarity or at least

substantial similarity of the purported pirated works to the copyrighted work.
Hence, the applicant must present to the court the copyrighted films to compare
them with the purchased evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized reproduction of the former. This
linkage of the copyrighted films to the pirated films must be established to
satisfy the requirements of probable cause. Mere allegations as to the existence
of the copyrighted films cannot serve as basis for the issuance of a search
warrant.

The case of 20th Century Fox Film Corporation involved raids conducted on various
videotape outlets allegedly selling or renting out pirated videotapes. The trial court
found that the affidavits of NBI agents, given in support of the application for the
search warrant, were insufficient without the master tape. Accordingly, the court lifted
the search warrants it had previously issued against the defendants. On petition for
review, this Court sustained the action of the trial court and ruled:The presentation of
the master tapes of the copyrighted films from which the pirated films were allegedly
copied, was necessary for the validity of search warrants against those who have in
their possession the pirated films. The petitioner's argument to the effect that the
presentation of the master tapes at the time of application may not be necessary as
these would be merely evidentiary in nature and not determinative of whether or not a
probable cause exists to justify the issuance of the search warrants is not meritorious.
The court cannot presume that duplicate or copied tapes were necessarily reproduced
from master tapes that it owns.

This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of
Appeals in which it was held: In fine, the supposed pronunciamento in said case
regarding the necessity for the presentation of the master tapes of
The copyrighted films for the validity of search warrants should at most be
understood to merely serve as a guidepost in determining the existence of
probable cause in copyright infringement cases where there is doubt as to the
true nexus between the master tape and the pirated copies. An objective and
careful reading of the decision in said case could lead to no other conclusion
than that said directive was hardly intended to be a sweeping and inflexible
requirement in all or similar copyright infringement cases.

In the case at bar, during the preliminary investigation, petitioners and private
respondents presented written descriptions of the formats of their respective
televisions shows, on the basis of which the investigating prosecutor
ruled:
As may [be] gleaned from the evidence on record, the substance of the television
productions complainants RHODA AND ME and Zosas ITS A DATE is that two
matches are made between a male and a female, both single, and the two couples
are treated to a night or two of dining and/or dancing at the expense of the show. The
major concepts of both shows are the same. Any differences appear mere variations
of the major concepts.

To begin with, the format of a show is not copyrightable. This provision is

substantially the same as 172 of the INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES (R.A. No. 8293). The format or mechanics of a television show is not
included in the list of protected works in 2 of P.D. No. 49. For this reason, the
protection afforded by the law cannot be extended to cover them. Copyright, in the
strict sense of the term, is purely a statutory right. It is a new or independent
right granted by the statute, and not simply a pre-existing right regulated by the
statute. P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished
works and not to concepts. The copyright does not extend to an idea, procedure,
process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or
embodied in such work. The copyright does not extend to the general concept
or format of its dating game show. Accordingly, by the very nature of the subject of
petitioner BJPIs copyright, the investigating prosecutor should have the opportunity to
compare the videotapes of the two shows. This Court is of the opinion that petitioner
BJPIs copyright covers audio-visual recordings of each episode of Rhoda and Me, as
falling within the class of works mentioned in P.D. 49, 2(M). However, mere
description by words of the general format of the two dating game shows is
insufficient; the presentation of the master videotape in evidence was indispensable to
the determination of the existence of probable cause.

6 - ABS-CBN v. Gozon, G.R. No. 195956 (2015)

Facts: On August 13, 2004, petitioner ABS-CBN filed a criminal complaint against
respondent GMA for alleged act of copyright infringement under Sections 177 and 211
of the Intellectual Property Code, because the respondent aired footage of the arrival
and homecoming of OFW Angelo dela Cruz at NAIA from Iraq without the petitioner’s
consent. ABS-CBN stated that it has an agreement with Reuter’s that the petition will
contribute news and content that it owns and makes to Reuters in exchange of the
latter’s news and video material, and Reuters will ensure that ABS-CBN’s materials
cannot be aired in the country.

The respondent was a subscriber of Reuter’s and CNN live feeds. After it received the
live feed of Angelo dela Cruz’s arrival and homecoming from Reuter’s, it immediately
aired the video from the news feed. The respondent alleged that its news staff was not
aware that there was a news embargo agreement between ABS-CBN and Reuters.
Respondent alleged that it was not also aware that it aired petitioner’s footage.

Assistant City Prosecutor Venturanza issued a resolution on December 3, 2004 which

found probable cause to indict Dela Pena-Reyes and Manalastas. The respondents
appealed the resolution before the DOJ where Secretary Gonzalez ruled in favor of
respondents dated August 1, 2005 and held that good faith may be raised as a
defense in the case. Meanwhile, DOJ Acting Secretary Agra reversed the resolution
of Sec. Gonzalez and found probable cause to charge Dela Pena-Reyes and
Manalastas, as well as indict Gozon and the others for violation of the Intellectual
Property Code (due to copyright infringement).
The Court of Appeals granted the Petition for Certiorari to reverse and set aside DOJ
Acting Secretary Agra’s resolution and prayer for issuance of a temporary restraining
order and/or writ of preliminary injunction. The appellate court stated that the
petitioner has copyright of its news coverage, but respondent’s act of airing five
seconds of the homecoming footage without notice of the “No Access Philippines”
restriction of the live Reuter’s video feed, was undeniably attended by good faith and
thus, serves to exculpate from criminal liability under the Intellectual Property Code.

Issue: 1. Whether news footage is copyrightable under the law;

2. Whether there was fair use of the broadcast material;
3. Whether lack of knowledge that a material is copyrighted is a defense against
copyright infringement; whether good faith is a defense in a criminal
prosecution for violation of the Intellectual Property Code

Ruling:

1. The ABS-CBN video footage is copyrightable. The Intellectual Property Code is

clear about the rights afforded to authors of various kinds of work. Under the Code,
"works are protected by the sole fact of their creation, irrespective of their
mode or form of expression, as well as of their content, quality and purpose."
These include "[audio-visual works and cinematographic works and works
produced by a process analogous to cinematography or any process for
making audiovisual recordings."

2. In determining fair use, several factors are considered, including the nature of the
copyrighted work, and the amount and substantiality of the person used in relation to
the copyrighted work as a whole. In the business of television news reporting, the
nature of the copyrighted work or the video footage, are such that, footage created,
must be a novelty to be a good report. Thus, when the . . . Angelo dela Cruz footage
was used by [respondents], the novelty of the footage was clearly affected. Moreover,
given that a substantial portion of the Angelo dela Cruz footage was utilized by
GMA-7 for its own, its use can hardly be classified as fair use. Hence, [respondents]
could not be considered as having used the Angelo dela Cruz [footage] following the
provisions on fair use. Determining fair use requires application of the four-factor
test. Section 185 of the Intellectual Property Code lists four (4) factors to
determine if there was fair use of a copyrighted work:

a. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and d. The effect of the use upon the potential
market for or value of the copyrighted work.

3. Respondents cannot invoke the defense of good faith to argue that no probable
cause Exists. Infringement under the Intellectual Property Code is malum prohibitum.
The Intellectual Property Code is a special law. Copyright is a statutory creation:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated
by the statute. Being a statutory grant, the rights are only such as the statute confers,
and may be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute. The general rule is that
acts punished under a special law are malum prohibitum. "An act which is declared
malum prohibitum, malice or criminal intent is completely immaterial." The Intellectual
Property Code requires strict liability for copyright infringement whether for a civil
action or a criminal prosecution; it does not require mens rea or culpa.

In sum, the trial court erred in failing to resume the proceedings after the designated
period. The Court of Appeals erred when it held that Secretary Agra committed errors
of jurisdiction despite its own pronouncement that ABS-CBN is the owner of the
copyright on the news footage. News should be differentiated from expression of the
news, particularly when the issue involves rebroadcast of news footage. The Court of
Appeals also erroneously held that good faith, as well as lack of knowledge of
infringement, is a defense against criminal prosecution for copyright and neighboring
rights infringement. In its current form, the Intellectual Property Code is malum
prohibitum and prescribes a strict liability for copyright infringement. Good faith, lack
of knowledge of the copyright, or lack of intent to infringe is not a defense against
copyright infringement. Copyright, however, is subject to the rules of fair use and will
be judged on a case-to-case basis. Finding probable cause includes a determination
of the defendant's active participation, particularly when the corporate veil is pierced in
cases involving a corporation's criminal liability.

The Supreme Court partially granted ABS-CBN’s petition and ordered Regional Trial
Court of Quezon City Branch 93 to continue with the criminal proceedings against
respondents Grace Dela Peña-Reyes and John Oliver T. Manalastas due to copyright
infringement.

7 - Kho v. CA

Facts: The petitioner alleged that she is the registered owner of the copyrights Chin
Chun Su and Oval Facial Cream Container/Case as evidenced by certificates of
copyright registrations and patent rights on Chun Chun Su & Device and Chin Chun
Su (medicated cream) after she purchased it from Quintin Cheng (previous registered
owner in the Philippine Patent Office [PPO]).

Meanwhile, there was a decline in the petitioner’s business income due to the
advertisement and sale made by Summerville on petitioner’s products under the same
brand name and in similar containers. According to Summerville, they are the
exclusive and authorized importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan and that said company authorized them
to register its trade name “Chin Chun Su Mediated Cream” with the PPO.
The application for preliminary injunction filed by petitioner was granted. Hence,
respondents moved for reconsideration, which was denied. The respondents then
moved for nullification of said preliminary injunction with the CA. The latter granted its
petition.

Issue: Whether the copyright and patent over the name and container of the
beauty cream product entitle the registrant to its EXCLUSIVE use and
ownership

Ruling: NO. The petitioner has no right for the EXCLUSIVE use of the trade name
and its container. In order to be entitled to its exclusive use, the user must sufficiently
prove that she registered or used it before anybody else did. This, petitioner failed to
do.“Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable”.

8 - Olano v. Co, G.R. No. 196835 (2016)

Facts: The petitioners are the officers and/or directors of Metrotech Steel Industries,
Inc. Lim Eng Co (respondent) is the Chairman of LEC Steel Manufacturing
Corporation, a company which specializes in architectural metal manufacturing.

In 2002, LEC was invited by the Manansala Projecta high-end residential building in
Rockwell Center, Makati, to submit design/drawings for interior and exterior hatch
doors. LEC compiled by submitting shop plans/drawings embodying the designs and
specifications required for the metal hatch doors. LEC was thereafter subcontracted
by SKI-FB (the Manansala Project's contractor) to manufacture and install interior and
exterior hatch doors for the 7th to 22nd floors of the Project based on the final shop
plans/drawings. LEC learned that Metrotech was also subcontracted to install interior
and exterior hatch doors for the Manansala Project's 23rd to 41st floors.

On June 24, 2004, LEC demanded Metrotech to cease from infringing its 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 provided by SKI-FB.

On July 2, 2004, LEC deposited with the National Library the final designs and for the
interior and exterior hatch doors of the Project. On July 6, 2004, LEC was issued a
Certificate of Copyright Registration with Nos. 1-2004-13 and 1-2004-14 and Deposit
showing that it is the registered owner of plans/drawings for interior and exterior hatch
doors. This copyright pertains to class work "I" under Section 172 of RA. 8293, The
Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans,
sketches, charts and three-dimensional works relative to geography, topography,
architecture or science."

On December 9, 2004, LEC was issued another Certificate of Copyright Registration

and Deposit showing that it is the registered owner of plans/drawings for interior and
exterior hatch doors which is classified under Section 172(h) of R.A. No. 8293 as
"original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art."

The LEC requested for a search warrant in the premises of Metrotech but the RTC
quashed the warrant on the ground that copyright infringement was not established.
However, the raid conducted by the NBI on Metrotech's premises yielded no copies of
LEC's copyrighted sketches/drawings of hatch doors. What was discovered instead
were finished and unfinished hatch doors. Thus, the LEC filed a Complaint before the
DOJ against Metrotech for copyright infringement.

The investigating prosecutor of the DOJ dismissed the LEC complaint based on
inadequate evidence showing that: (1) the petitioners committed the prohibited acts
under Section 177 of R.A. No. 8293; and (2) the interior and exterior hatch doors of
the petitioners are among the classes of copyrightable work enumerated in Sections
172 and 173 of the same law. The respondent then sought recourse before the CA via
a petition for certiorari ascribing grave abuse of discretion on the part of the DOJ. The
CA granted the petition finding that there is probable cause for copyright infringement
against Metrotech. Hence, Metrotech appealed.

Issue: Whether the manufacturing of hatch doors fall within the purview of
copyright infringement.

Ruling: NO. Absent originality and copyrightability as elements of a valid copyright

ownership, no infringement can subsist. A copyright refers to "the right granted by a
statute to the proprietor of an intellectual production to its exclusive use and
enjoyment to the extent specified in the statute." Under Section 177 of R.A. No. 8293,
the Copyright or Economic Rights consist of the exclusive right to carry out, authorize
or prevent the following acts:

177.1 Reproduction of the work or substantial portion of the work;

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3 The first public distribution of the original and each copy of the work by sale or
other forms of transfer of ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a
work embodied in a sound recording, a computer program, a compilation of data and
other materials or a musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental;
177.5 Public display of the original or a copy of the work;
177.6 Public performance of the work; and
177.7 Other communication to the public of the work.

Copyright infringement is thus committed by any person who shall use original literary
or artistic works, or derivative works, without the copyright owner's consent in such a
manner as to violate the foregoing copy and economic rights. For a claim of copyright
infringement to prevail, the evidence on record must demonstrate: (1) ownership of a
validly copyrighted material by the complainant; and (2) infringement of the copyright
by the respondent. While both elements subsist in the records, they did not
simultaneously concur so as to substantiate infringement of LEC's two sets of
copyright registrations.

Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I"
under Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans,
sketches, charts and three-dimensional works relative to geography, topography,
architecture or science." As such, LEC's copyright protection there covered only the
hatch door sketches/drawings and not the actual hatch door they depict. LEC failed to
substantiate the alleged reproduction of the drawings/sketches of hatch doors
copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14. There is
no proof that Metrotech reprinted the copyrighted sketches/drawings of LEC's hatch
doors. What was found in the raid conducted by the NBI where only finished and
unfinished hatch doors, not the no copies or reproduction of LEC's copyrighted
sketches/drawings of hatch doors.

As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart,

Incorporated: Since the hatch doors cannot be considered as either illustrations,
maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science, to be properly classified as a copyrightable class
"I" work, what was copyrighted were their sketches/drawings only, and not the actual
hatch doors themselves. To constitute infringement, the usurper must have copied or
appropriated the original work of an author or copyright proprietor, absent copying,
there can be no infringement of copyright.

"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is
given only to the expression of the idea, not the idea itself."
With regard to LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the
Court finds that the ownership thereof was not established by the evidence on record
because the element of copyrightability is absent. "Ownership of copyrighted material
is shown by proof of originality and copyrightability." While it is true that where the
complainant presents a copyright certificate in support of the claim of infringement,
the validity and ownership of the copyright is presumed.
This presumption, however, is rebuttable and it cannot be sustained where other
evidence in the record casts doubt on the question of ownership, as in the instant
case. Moreover, "the presumption of validity to a certificate of copyright registration
merely orders the burden of proof. The applicant should not ordinarily be forced, in the
first instance, to prove all the multiple facts that underline the validity of the copyright
unless the respondent, effectively challenging them, shifts the burden of doing so to
the applicant."

Here, evidence negating originality and copyrightability as elements of copyright

ownership was satisfactorily proffered against LEC's certificate of registration. The
following averments were not successfully rebuffed by LEC: [T]he hinges on LEC's
"hatch doors" have no ornamental or artistic value. In fact, they are just similar to
hinges found in truck doors that had been in common use since the 1960's. The
gaskets on LEC's "hatch doors", aside from not being ornamental or artistic, were
merely procured from a company named Pemko and are not original creations of
LEC. The locking devices in LEC's "hatch doors" are ordinary drawer locks commonly
used in furniture and office desks. From the foregoing description, it is clear that the
hatch doors were not artistic works within the meaning of copyright laws. A
copyrightable work refers to literary and artistic works defined as original intellectual
creations in the literary and artistic domain.

A hatch door, by its nature, is an object of utility. It is defined as a small door, small
gate or an opening that resembles a window equipped with an escape for use in case
of fire or emergency. It is thus by nature, functional and utilitarian serving as egress
access during emergency. It is not primarily an artistic creation but rather an object of
utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a
whole, is not eligible for copyright.

A "useful article" defined as an article "having an 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 the subject of
copyright protection is when it incorporates a design element that is physically or
conceptually separable from the underlying product. This means that the utilitarian
article can function without the design element. In such an instance, the design
element is eligible for copyright protection. A belt, being an object utility with the
function of preventing one's pants from falling down, is in itself not copyrightable.
However, an ornately designed belt buckle which is irrelevant to or did not enhance
the belt's function hence, conceptually separable from the belt, is eligible for copyright.
It is copyrightable as a sculptural work with independent aesthetic value, and not as
an integral element of the belt's functionality. A table lamp is not copyrightable
because it is a functional object intended for the purpose of providing illumination in a
room. The general shape of a table lamp is likewise not copyrightable because it
contributes to the lamp's ability to illuminate the reaches of a room. But, a lamp base
in the form of a statue of male and female dancing figures made of semi vitreous
china is copyrightable as a work of art because it is unrelated to the lamp's utilitarian
function as a device used to combat darkness. In the present case, LEC's hatch doors
bore no design elements that are physically and conceptually separable, independent
and distinguishable from the hatch door itself.
More importantly, they are already existing articles of manufacture sourced from
different suppliers. Based on the records, it is unrebutted that: (a) the hinges are
similar to those used in truck doors; (b) the gaskets were procured from a company
named Pemko and are not original creations of LEC; and (c) the locking device are
ordinary drawer locks commonly used in furniture and office desks. Being articles of
manufacture already in existence, they cannot be deemed as original creations. As
earlier stated, valid copyright ownership denotes originality of the copyrighted
material. Originality means that the material was not copied, evidences at least
minimal creativity and was independently created by the author. It connotes
production as a result of independent labor. LEC did not produce the door jambs and
hinges; it bought or acquired them from suppliers and thereafter affixed them to the
hatch doors. No independent original creation can be deduced from such acts.

9 - Pearl & Dean [Phil.] v. Shoemart, Inc. et al. G.R. No. 148222 (2003)

Facts: Pearl and Dean is a corporation in the manufacture of advertising display units
also known as light boxes, which were manufactured by Metro Industrial Services. A
copyright Registration was obtained in 1981. These were marketed in the name of
"Poster Ads". They also applied for a registration of trademark with the Bureau of
Patents in 1983, but was only approved in 19988. In 1985, petitioner had an
agreement with respondent Shoemart Inc (SMI) to install these light boxes in their
Makati and Cubao branch, Only the Makati branch was able to sigh the agreement. In
1986, the contract was rescinded unilaterally by SMI, and instead contracted with
Metro Industrial Services. They installed these lightboxes in different SM city
branches, including Cubao and Makati, with association with North Edsa Marketing
Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put down
their installations of the light boxes, and payment of compensatory damages worth
P20M. Claiming that respondents failed to comply, they filed a case for infringement of
trademark and copyright, unfair competition and damages. RTC ruled in favor of the
petitioner, but CA reversed.

Issue: (1) Whether there was a copyright infringement.

(2) Whether there was a patent infringement.
(3) Whether there was a trademark infringement.
(4) Whether there was unfair competition.

Ruling: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions specified
in the statute. Therefore, it can only cover the works falling within the statutory
enumeration or description. Since the copyright was classified under class "O"
works, which includes "prints, pictorial illustrations, advertising copies, labels, tags
and box wraps," and does not include the light box itself. A lightbox, even admitted by
the president of petitioner company, was neither a literary nor an artistic work but an
engineering or marketing invention, thus not included under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally
prevent anyone from manufacturing or commercially using the same. Patent has a
three-fold purpose: a) to foster and reward invention; b) promotes disclosures
of invention and permit public to use the same upon expiration; c) stringent
requirements for patent protection to ensure in the public domain remain there
for free use of the public. Since petitioner was not able to go through such
examination, it cannot exclude others from manufacturing, or selling such lightboxes.
No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right
to use its own symbol only to the description specified in the certificate. It cannot
prevent others to use the same trademark with a different Description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and
Dean, thus it cannot be considered to use such term to be unfair competition against
the petitioner.

10 - Habana v. Robles, G.R. No. 131522 (1999)

Facts: Petitioners are authors and copyright owners of duly issued certificates of
copyright registration covering their published works, entitled COLLEGE ENGLISH
FOR TODAY (CET). Respondent Felicidad Robles and Goodwill Trading Co., Inc. are
the author/publisher and distributor/seller of another published work entitled
"DEVELOPING ENGLISH PROFICIENCY" (DEP), Books 1 and 2 which book was
covered by copyrights issued to them.

In the course of revising their published works, petitioners scouted and looked around
various bookstores to check on other textbooks dealing with the same subject matter.
By chance they came upon the book of respondent Robles and upon perusal of said
book they were surprised to see that the book was strikingly similar to the contents,
scheme of presentation, illustrations and illustrative examples in their own book, CET.

After an itemized examination and comparison of the two books (CET and DEP),
petitioners found that several pages of the respondent's book are similar, if not
altogether a copy of petitioners' book, which is a case of plagiarism and copyright
infringement.

Petitioners 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 respondent Robles' works. Despite the demands
of the petitioners for respondents to desist from committing further acts of
infringement and for respondent to recall DEP from the market, respondents refused.
Petitioner then filed a complaint for infringement. The RTC and CA ruled in favor of
respondents.

Issue: Whether Robles committed infringement in the production of DEP.

Ruling: Yes. Yes. A perusal of the records yields several pages of the book DEP that
are similar if not identical with the text of CET. In several other pages the treatment
and manner of presentation of the topics of DEP are similar if not a rehash of that
contained in CET. The Court believes that respondent Robles' act of lifting from the
book of petitioners substantial portions of discussions and examples, and her failure
to acknowledge the same in her book is an infringement of petitioners' copyrights.

In determining the question of infringement, the amount of matter copied from the
copyrighted work is an important consideration. To constitute infringement, it is not
necessary that the whole or even a large portion of the work shall have been
copied. If so much is taken that the value of the original is sensibly diminished,
or the labors of the original author are substantially and to an injurious extent
appropriated by another, that is sufficient in point of law to constitute piracy.

11 - Juan v. Juan, G.R. No. 221732 (2017)

Facts: Roberto U. Juan began using the name and mark “Lavandera Ko” in his
laundry business on July 4, 1994. He formed a corporation to handle his laundry
business, while the name “Lavandera Ko” has been registered as business name with
the Department of Trade and Industry (DTI). Thereafter, respondent found out that his
brother, Fernando U. Juan was able to register the name and mark “Lavandera Ko”
with the Intellectual Property Office”, and that the latter had been selling the former’s
franchises.

Roberto filed a case against Fernando before the RTC Branch 149 in Makati City,
which dismissed the said petition and ruled that neither of the parties had a right to
the exclusive use or appropriation of the mark “Lavandera Ko”, since it is the original
work of one Santiago S. Suarez.

Issue: Whether or not a “mark” is same as a “copyright”.

Ruling: NO. A mark is not the same as a copyright. Under Section 121.1 of RA
8293, “mark” is defined as any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. Copyright, on the other hand, is the
right of literacy property as recognized and sanctioned by positive law. Literary
and artistic works such as “Lavandera Ko '', being a musical piece composed by
Santiago S. Suarez, are original intellectual creations under the copyright law, and not
under trademarks, service marks, and trade names law.
 12 - Microsoft Corporation v. Manansala, G.R. No. 166391 (2015)

Facts: Microsoft Corp. is the copyright and trademark owner of all rights relating to all
versions and editions of Microsoft software (computer programs). Rolando Manansala
is doing business under the name of Dataman Trading Co. and/or Comic Alley. It was
engaged in distributing and selling Microsoft computer software programs without
authorization from Microsoft.

Mr. John Benedict A. Sacriz, a private investigator accompanied by an agent from the
National Bureau of Investigation (NBI) was able to purchase six (6) CD-ROMs
containing various computer programs belonging to Microsoft. As a result of the
test-purchase, the agent from the NBI applied for a search warrant to search the
premises of Manansala and yielded several illegal copies of Microsoft programs.
Subsequently, petitioner, through Atty. Teodoro Kalaw IV filed an Affidavit-Complaint in
the DOJ based on the results of the search and seizure operation conducted on
private respondent’s premises.

However, in a Resolution dated March 20, 2000, public respondent State Prosecutor
dismissed the charge against private respondent for violation of Section 29 P.D. 49:
‘The evidence is extant in the records to show that respondent is selling Microsoft
computer software programs bearing the copyrights and trademarks owned by
Microsoft Corporation. There is, however, no proof that respondent was the one who
really printed or copied the products of complainant for sale in his store.
WHEREFORE, it is hereby, recommended that respondent be charged for violation of
Article 189 of the Revised Penal Code. The charge for violation of Section 29 of PD
No. 49 is recommended dismissed for lack of evidence.’

Issue: Whether printing or copying is essential in the commission copyright

infringement under Sec 29 of PD 49.

Ruling: YES. Presidential Decree No. 49 thereby already acknowledged the

existence of computer programs as works or creations protected by copyright. To
hold, as the CA incorrectly did, that the legislative intent was to require that the
computer programs be first photographed, photo-engraved, or pictorially illustrated as
a condition for the commission of copyright infringement invites ridicule.

The CA erred in its reading and interpretation of Section 5 of Presidential Decree No.
49. Under the rules on syntax, the conjunctive word denotes a joinder or union of
words, phrases, or clause; it is different from the disjunctive word or that signals
disassociation or independence. However, a more important rule of statutory
construction dictates that laws should be construed in a manner that avoids absurdity
or unreasonableness.

The commission of any of the acts mentioned in Section 5 of P.D. 49 without the
copyright owner’s consent constitutes copyright infringement. According to the Court
of Appeals, the person who sells the works must also be the one who printed or
copied the same because of the conjunctive word “and” found in Section 5(a).
However, the Supreme Court held that such interpretation of the law is ridiculous. In
this case, the conjunctive word “and” should not be taken in its ordinary acceptance,
but should be understood as having the meaning of the disjunctive word “or”. This
rule applies if a literal interpretation of the law would pervert or obscure the legislative
intent. Hence, the mere act of selling the Microsoft software programs without
Microsoft’s consent already constitutes copyright infringement. Consequently, the
Prosecutor erred in dismissing the charge against Manansala.

WHEREFORE, the Court GRANTS the petition for review on certiorari; REVERSES
and SETS ASIDE the decision promulgated on February 27, 2004 in C.A.-G.R. S.P.
No. 76402; DIRECTS the Department of Justice to render the proper resolution to
charge respondent ROLANDO D. MANANSALA and/or MEL MANANSALA, doing
business as DATAMAN TRADING COMPANY and/or COMIC ALLEY in accordance
with this decision; and ORDERS the respondents to pay the costs of suit.

13 - ABS-CBN v. PMMSI, (19 January 2009)

Facts: Philippine Multi-Media System, Inc. (PMSI), operator of Dream Broadcsating

System, delivers a digital direct-to-home (DTH) television satellite to its subscribers all
over the Philippines, was granted a legislative franchise under Republic Act 8630 and
was given a Provisional Authority by the National Telecommunications Commission
(NTC) to install, operate and maintain a nationwide DTH satellite service. When it
commenced operations, it offered as part of its program line-up, together with other
paid premium program channels, ABS-CBN Channels 2 and 23, NBN, Channel 4,
ABC, Channel 5, GMA, Channel 7, RPN, Channel 9, and IBC, Channel 13, pursuant
to Memorandum Circular 4-08-88 which mandated all cable television system
operators, operating within the Grade “A” and “B” CONTOURS to carry out the
television signals of the authorized television broadcast stations. ABS-CBN
Broadcasting Corporation (ABS-CBN), a licensed television and radio broadcasting
network, demanded PMSI to cease and desist from “rebroadcasting” Channels 2 and
23. In its reply, PMSI contended that the “rebroadcasting” was in accordance with the
authority granted by NTC under its obligations under NTC MC 4-08-88. Negotiations
were ensued between the parties in an effort to reach a settlement; however, the
same was terminated by ABS-CBN allegedly due to PMSI’s inability to ensure the
prevention of illegal “retransmission” and further “rebroadcast” of its signals, as well
as the adverse effect of the rebroadcasts on the business operations of its regional
television stations.

ABS-CBN filed with the Intellectual Property Rights Office (IPO) a complaint for
“Violation of Laws Involving Property Rights, with Prayer for the Issuance of a
Temporary Restraining Order and/or Writ of Preliminary Injunction” alleging that
PMSI’s unauthorized rebroadcasting of Channels 2 and 23 infringed on its
broadcasting rights and copyright. The TRO was granted by the Bureau of Legal
Affairs (BLA) of IPO. PMSI, pursuant to the TRO, suspended the retransmission of
PMSI of Channels 2 and 23 and likewise filed a petition for certiorari with the Court of
Appeals. The Court of Appeals granted the petition of PMSI and reversed the decision
of the BLA. ABS-CBN filed its appeal however it was dismissed by the Court of
Appeals. Furthermore, ABS-CBN’s motion for reconsideration was denied.

Issue:
1. Whether or not PMSI violated the Laws on Property Rights.
2. Whether or not the issuance MC 4-08-88 by the NTC is a valid exercise of the
police power of the State.

Ruling:
1. NO. PMSI did not violate the Laws on Property Rights because it is not engaged in
rebroadcasting Channels 2 and 23. Rebroadcasting has been defined as “the
simultaneous broadcasting by one broadcasting organization of the broadcast
of another broadcasting organization.” It is also “the transmission by wireless
means for the public reception of sounds or of images or of representations
thereof; such transmission by satellite is also ‘broadcasting’ where the means
for decrypting are provided to the public by the broadcasting organization or
with its consent.” PMSI is only engaged in the carrying of signals of ABS-CBN
coming from ABS-CBN and transmitting signals. PMSI is not the origin nor does it
claim to be the origin of the programs broadcasted by the ABS-CBN. PMSI did not
make and transmit on its own but merely carried the existing signals of the ABS-CBN.
When PMSI subscribers view ABS-CBN’s programs in Channels 2 and 23, they know
that the origin thereof was the ABS-CBN. The nature of broadcasting is to scatter the
signals in its widest area of coverage as possible. On this score, it may be said that
making public means that accessibility is undiscriminating as long as it is within the
range of the transmitter and equipment of the broadcaster. That the medium through
which the PMSI carries the ABS-CBN’s signal, that is via satellite, does not diminish
the fact that it operates and functions as a cable television. It remains that the PMSI’s
transmission of signals via its DTH satellite television service cannot be considered
within the purview of broadcasting. Furthermore, there is no rebroadcasting on the
part of the PMSI of the ABS-CBN's programs on Channels 2 and 23, as defined under
the Rome Convention, which defines rebroadcasting as “the simultaneous
broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization.”

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass
itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are
concerned, PMSI merely retransmits the same in accordance with Memorandum
Circular 04- 08-88. With regard to its premium channels, it buys the channels from
content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does
not perform the functions of a broadcasting organization; thus, it cannot be said that it
is engaged in rebroadcasting Channels 2 and 23.
Therefore, the retransmission of ABS-CBN’s signals by PMSI – which functions
essentially as a cable television – does not constitute rebroadcasting in violation of
the former’s intellectual property rights under the IP Code.

2. YES. The law on copyright is not absolute. The carriage of ABS-CBN’s signals by
virtue of the must-carry rule in Memorandum Circular No. 04-08-88 is under the
direction and control of the government though the NTC which is vested with
exclusive jurisdiction to supervise, regulate and control telecommunications and
broadcast services/facilities in the Philippines. The imposition of the must-carry rule is
within the NTC’s power to promulgate rules and regulations, as public safety and
interest may require, to encourage a larger and more effective use of
communications, radio and television broadcasting facilities, and to maintain effective
competition among private entities in these activities whenever the Commission finds
it reasonably feasible. The “Must-Carry Rule” is in consonance with the principles and
objectives underlying Executive Order No. 436, to wit: The Filipino people must be
given wider access to more sources of news, information, education, sports event and
entertainment programs other than those provided for by mass media and afforded
television programs to attain a well informed, well-versed and culturally refined
citizenry and enhance their socioeconomic growth.

Moreover, radio and television waves are merely franchised which may be reasonably
burdened with some form of public service. It is a privilege subject, among other
things, to amendment by Congress in accordance with the constitutional provision
that “any such franchise or right granted . . . shall be subject to amendment, alteration
or repeal by the Congress when the common good so requires.”

The must carry rule is a valid exercise of the police power of the State. It favors both
broadcasting organizations and the public. It prevents cable television companies
from excluding broadcasting organizations, especially in those places not reached by
signal. Also, the rule prevents cable television companies from depriving viewers in
far-flung areas the enjoyment of programs available to city viewers. In fact, this Office
finds the rule more burdensome on the part of the cable television companies. The
latter carries the television signals and shoulders the costs without any recourse of
charging. On the other hand, the signals that are carried by cable television
companies are dispersed and scattered by the television stations and anybody with a
television set is free to pick them up.

14 - Pribhdas J. Mirpuri v. Court of Appeals, et.al., G.R. no. 114508 (1999)

Facts: Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her
products such as brassieres and ladies undergarments. Respondent Barbizon
Corporation, an American corporation, opposed alleging that petitioner’s mark is
confusingly similar to its own trademark ‘Barbizon.’ Escobar’s application was given
due course and her trademark was registered. Later, Escobar assigned all her rights
to petitioner Mirpuri who failed to file an Affidavit of Use resulting in the cancellation of
the trademark. Petitioner then applied for registration of the trademark to which
respondent Barbizon again opposed, now invoking the protection under Article 6bis of
the Paris Convention. The Director of Patents declaring respondent’s opposition was
already barred, petitioner’s application was given due course. CA reversed the
judgment.

Issue: Whether or not respondent may invoke the protection under Article 6bis of the
Paris Convention.

Ruling: YES. The Convention of Paris for the Protection of Industrial Property,
otherwise known as the Paris Convention, is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial designs, trademarks,
service marks, trade names and indications of source or appellations of origin, and at
the same time aims to repress unfair competition. The Convention is essentially a
compact among various countries which, as members of the Union, have pledged to
accord to citizens of the other member countries trademark and other rights
comparable to those accorded their own citizens by their domestic laws for an
effective protection against unfair competition. Art. 6bis is a self-executing
provision and does not require legislative enactment to give it effect in the
member country. It may be applied directly by the tribunals and officials of each
member country by the mere publication or proclamation of the Convention,
after its ratification according to the public law of each state and the order for
its execution.

The Philippines and the United States of America have acceded to the WTO
Agreement. Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the dawn
of the new millennium.

15 - W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., G.R.
No. 222366 (2017)

Facts: The IPO approved Starwood’s application for trademark registration of the
letter “W” in 2007. However, it appears that W Land applied for the registration of its
own “W” mark in April 2006, prompting Starwood to file an opposition. Starwood’s
resistance was upheld by the IPO-BLA, which found that W Land’s “W” is confusingly
similar to Starwood’s mark, which was filed earlier. In May 2009, W Land petitioned
for the cancellation of Starwood’s mark for non use under Sec. 151.1 of R.A. 8293,
claiming that Starwood failed to use its mark in the Philippines because it has no
hotel or establishment in the Philippines rendering the services recovered by its
registration. The IPO dismissed W Land’s petition for cancellation. In view of the Court
of Appeals’ affirmation of that ruling, this petition was filed.

Issue: Whether the Court of Appeals correctly affirmed the dismissal of the petition
Ruling: YES. It has been held by the Supreme Court that the prima facie
presumption brought about by the registration of a mark may be challenged
and overcome, in an appropriate action, by proof of non-use of the mark,
except when excused. The actual use of the mark representing the goods or
services introduced and transacted in commerce over a period of time creates
that goodwill which the law seeks to protect. Thus, Section 124.2 of the IP Code
requires the registrant or owner of a registered mark to declare “actual use of the
mark” (DAU) and present evidence of such use within the prescribed period. The use
which is required to maintain registration must be genuine, that is, a bona fide use
which results or tends to result into a commercial interaction or transaction “in the
ordinary course of trade”. Such use by means of an interactive website may constitute
proof of actual use that is sufficient to maintain registration of the same. Here,
Starwood was able to establish that it owns Philippine-registered domain names for
its website that showcases its mark. Starwood’s “W” mark is prominently displayed in
the website through which consumers can book and pay for their accommodations.
Proof of increase in web traffic in the website was also adduced. Hence, Starwood’s
use of the “W” mark through its website has produced a commercial effect within the
Philippines.

16 - Zuneca Pharmaceutical, et.al. v. Natrapharm, Inc., G.R. no. 211850 (2020)

Facts: Zuneca has been engaged in the importation, marketing, and sale of various
kinds of medicines and drugs in the Philippines since 1999. Among the products it has
been selling is a drug called carbamazepine under the brand name “ZYNAPS”, which
is an anticonvulsant used to control all types of seizure disorders of varied causes like
epilepsy. Natrapharm is a domestic corporation engaged in the business of
manufacturing, marketing, and distribution of pharmaceutical products for human
relief. One of the products being manufactured and sold by Natrapharm is citicoline
under the trademark “ZYNAPSE”, which is indicated for the treatment of
cerebrovascular disease or stroke. The trademark “ZYNAPSE” was registered with
the IPO on September 24, 2007 and is covered by Certificate of Trademark
Registration no. 4-2007-005596. Natrapharm filed with the RTC a Complaint against
Zuneca for Injunction, Trademark Infringement, Damages, and Destruction with
Prayer for TRO and/or Preliminary Injunction, alleging that Zuneca’s “ZYNAPS” is
confusingly similar to its registered trademark “ZYNAPSE” and the resulting likelihood
of confusion is dangerous because the marks cover medical drugs intended for
different types of illnesses. Zuneca claimed that it has been selling carbamazepine
under the mark “ZYNAPS” since 2004 after securing a Certificate of Product
Registration on Apr. 15, 2003 from the Bureau of Food and Drugs. The RTC ruled that
the first filer in good faith defeats a first user in good faith who did not file any
application for registration.

Issue: Whether Natrapharm has the right to prevent Zuneca from using/registering
the trademark “ZYNAPS”
Ruling: YES. Under the IP Code, ownership of a mark is acquired through
registration. While it is the fact of registration which confers ownership of the mark
and enables the owner thereof to exercise the rights expressed in IP Code, the
first-to-file rule nevertheless prioritizes the first filer of the trademark
application and operates to prevent any subsequent applicants from registering
marks under the IP Code. There is a legislative intent to abandon the rule that
ownership of a mark is acquired through use.
Natrapharm is the first-to-file registrant of "ZYNAPSE". Zuneca, on the other hand, is
a prior user in good faith of a confusingly similar mark, "ZYNAPS". Considering that a
petition for review on certiorari under Rule 45 should only raise questions of law, it is
improper to put into issue at this juncture the existence of bad faith in Natrapharm's
registration. The Supreme Court affirmed the factual findings of the lower courts.
Zuneca failed to show that the registration was made fraudulently or in bad faith.
Since Natrapharm was not shown to have been in bad faith, it is thus considered to
have acquired all the rights of a trademark owner under the IP Code upon the
registration of the "ZYNAPSE" mark.
In any event, while Natrapharm is the owner of the "ZYNAPSE" mark, this does not,
however, automatically mean that its complaint against Zuneca for injunction,
trademark infringement, damages, and destruction with prayer for TRO and/or
preliminary injunction should be granted. The application of Section 159.1 of the IP
Code in the case at bar results in Zuneca's exemption from liability for trademark
infringement.To further reduce therefore, if not totally eliminate, the likelihood of
switching in this case, the Court hereby orders the parties to prominently state on the
packaging of their respective products, in plain language understandable by people
with no medical background or training, the medical conditions that their respective
drugs are supposed to treat or alleviate and a warning indicating what "ZYNAPS" is
not supposed to treat and what "ZYNAPSE" is not supposed to treat, given the
likelihood of confusion between the two.

17 - Birkenstock v. Philippine Shoe Expo, G.R. no. 194307 (2013)

Facts: Petitioner applied for various trademark registrations before the Philippine IPO,
namely: a) “BIRKENSTOCK”; b) “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM”; c) “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM”. However, the registration proceedings were suspended in
view of an existing registration of mark “BIRKENSTOCK AND DEVICE” in the name of
Shoe Town International and Industrial Corporation, the predecessor-in-interest of
respondent Philippine Shoe Expo Marketing Corporation. Here, petitioner filed a
petition for cancellation of the registration on the ground that it is the lawful and
rightful owner of the Birkenstock marks.

Respondent filed an opposition, alleging that: a) it, together with its

predecessor-in-interest, has been using Birkenstock marks in the Philippines for more
than 16 years through the mark “BIRKENSTOCK AND DEVICE”; b) the marks
covered by the subject applications are identical to the one covered by the registration
and thus, petitioner has no right to the registration of such marks; d) that while
respondent failed to file the 10th Year DAU, it continued the use of “BIRKENSTOCK
AND DEVICE” in lawful commerce, among others.

The BLA rejected the petitioner’s application for registration. It ruled that the
competing marks of the parties are confusingly similar since they contained the work
“BIRKENSTOCK” and are used on the same and related goods. It found respondent
as the prior user and adopter of “BIRKENSTOCK” in the Philippines.

Issue: Whether or not the subject marks should be allowed registration in the name of
petitioner.

Ruling: YES. Respondent is deemed to have abandoned the mark when it failed to
file the 10th Year DAU for Registration on or before the lawful period. As a
consequence, it was deemed to have abandoned or withdrawn any right or interest
over the mark “BIRKENSTOCK”.
Petitioner has duly established its true and lawful ownership of the mark
“BIRKENSTOCK”. Under Sec. 2 of RA 166, in order to register a trademark, one must
be the owner thereof and must have actually used the mark in commerce in the
Philippines for 2 months prior to the application for registration.

The registration of a trademark is not a mode of acquiring ownership. If the

applicant is not the owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie presumption of validity of
the registration, of the registrant’s ownership of the trademark, and of the
exclusive right to the use thereof. Clearly, it is not the application or registration
of a trademark that vests ownership thereof, but it is the ownership of a
trademark that confers the right to register the same.

Here, petitioner was able to establish that it is the owner of the mark
“BIRKENSTOCK”. It has used it in commerce long before respondent was able to
register the same here in the Philippines.

18 - Arce Sons v. Selecta Biscuit, G.R. no. L-14761 & 17981 (1961)

Facts: Respondent Selecta Biscuit Company applied for the registration of the word
‘SELECTA’ to be used in its bakery products. Petitioner Arce Sons opposed on the
ground it had continuously used the mark ‘SELECTA’ and that it has already become
identified with the petitioner's name and business. Petitioner further contends that the
marks are confusingly similar. Petitioner then filed before the court a complaint of
unfair competition against respondent which ruled in its favor. On the other hand, the
Director of Patents dismissed the petitioner's opposition.

Issue: Whether or not petitioner’s mark has acquired secondary meaning in its favor.

Ruling: YES. The word ‘SELECTA’, it is true, may be an ordinary or common word
in the sense that may be used or employed by any one in promoting his
business or enterprise, but once adopted or coined in connection with one’s
business as an emblem, sign or device to characterize its products, or as a
badge of authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. In this sense, its use by another may
lead to confusion in trade and cause damage to its business. And this is the situation
of petitioner when it used the word ‘SELECTA’ as a trade-mark. In this sense, the law
gives its protection and guarantees its use to the exclusion of all others. And it is also
in the sense that the law postulates that "The ownership or possession of a
trade-mark, . . . shall be recognized and protected in the same manner and to
the same extent, as are other property rights known to the law," thereby giving
to any person entitled to the exclusive use of such trade-mark the right to
recover damages in a civil action from any person who may have sold goods of
similar kind bearing such trade-mark.
The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” which this
Court has considered not merely as a descriptive term within the meaning of the
Trade-mark Law but as a fanciful or coined phrase, or a trade-mark. And holding that
respondent was entitled to protection in the use of that trade-mark, this Court made
the following comment:
Even if ‘Ang Tibay’, therefore, were not capable of exclusive appropriation as a
trade-mark, the application of the doctrine of secondary meaning could nevertheless
be fully sustained because, in any event, by respondent’s long and exclusive
appropriation with reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and exclusively by
one producer with reference to his article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to mean that article was his product.”
(Ang v. Teodoro, supra.)
The doctrine is to the effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively
by one producer with reference to his article that , in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article was his
product.

19 - Ana Ang v. Toribio Teodoro, G.R. no. L-48226 (1942)

Facts: Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and
tradename in the manufacture and sale of its slippers, shoes and indoor baseballs
when he formally registered it. Meanwhile, petitioner Ang registered the same
trademark ‘Ang Tibay’ for its products of pants and shirts. Respondent moved to
cancel the registration of petitioner’s mark. The trial court found for petitioner Ang. CA
reversed the judgment. Petitioner argues the validity of the mark being descriptive;
that it had not acquired secondary meaning in favor of respondent; and that there can
be no infringement/unfair competition because the goods are not similar.

Issue: Whether or not there is trademark infringement and/or unfair competition

between unrelated goods.

Ruling: YES. In the present state of development of the law on Trade-Marks, Unfair
Competition, and Unfair Trading, the test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion as
to the origin of the goods of the second user. 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, they would, nevertheless, 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, or personal source, of the second user’s goods. 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. The Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of respondent’s registered trade-mark on
slippers and shoes manufactured by him, it has come to indicate the origin and
ownership of said goods. 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.

20 - Ecole de Cuisine Manille v. Renaud Cointreau & Cie and Le Cordon Bleu,
G.R. no. 185830 (2013)

Facts: Respondent Cointreau, a partnership registered under the laws of France,

applied for the registration of the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De
Cuisine opposed on the ground that it is the owner of the mark ‘Le Cordon Bleu, Ecole
De Cuisine Manille’ used in its culinary activities and restaurant business and that the
registration will create confusion to the public. Respondent Cointreau answered
claiming it is the true and lawful owner of the mark and had long been using it
worldwide. The IPO Bureau of Legal Affairs sustained petitioner’s opposition stating
that Cointreau had no prior use of the mark in the Philippines to be entitled to a
proprietary right over it. The IPO Director General reversed the decision and allowed
the mark’s registration holding that under RA No. 166, actual use in the Philippines is
not necessary to acquire ownership of the mark.

Issue: Whether the CA was correct in upholding the IPO Director General’s ruling that
Cointreau is the true and lawful owner of the subject mark and thus, entitled to have
the same registered under its name.

Ruling: YES. Foreign marks which are not registered are still accorded
protection against infringement and/or unfair competition..It is clear that actual
use in commerce is also the test of ownership but the mark must not have been so
appropriated by another. At this point, it is worthy to emphasize that the Philippines
and France, Cointreau’s country of origin, are both signatories to the Paris Convention
for the Protection of Industrial Property (Paris Convention). Thus, under Philippine
law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected without
the obligation of filing or registration. It is also clear that at the time Ecole started
using the subject mark, the same was already being used by Cointreau, albeit abroad,
of which Ecole’s directress was fully aware, being an alumna of the latter’s culinary
school. Hence, Ecole cannot claim any tinge of ownership whatsoever over the
subject mark as Cointreau is the true and lawful owner thereof.

21 - Prosource Int’l v. Horphag Research, G.R. no. 180073 (2009)

Facts: Horphag owns the trademark “PYCNOGENOL,” which is a food supplement

that Zuellig Pharma sells and distributes. Horphag later learned that Prosource had
been selling a comparable food supplement under the brand name “PCO GENOLS”
since 1996. Prosource dropped the moniker “PCO GENOLS” in June 2000 and
replaced it with “PCO-PLUS.” In August 2000, Horphag filed a complaint for
trademark infringement against Prosource, praying that the latter cease and desist
from using the brand “PCO-GENOLS” for being confusingly similar with
“PYCNOGENOL.” The Regional Trial Court ruled for Horphag. On appeal, the Court
of Appeals sustained the RTC decision. Hence, this petition.

Issue: Whether Prosource is liable for trademark infringement

Ruling: YES. The gravamen of trademark infringement lies in the likelihood of

confusion, which is a relative concept. What determines it is the particular and
peculiar circumstances of each case. The issue of trademark infringement is
factual in nature. Both the trial and appellate courts applied the Dominancy Test in
arriving at their conclusions. They ruled that the competing marks have the suffix
“GENOL.” When pronounced, the sound effects of the two marks are confusingly
similar, especially given the fact that both manufacturers described it as a food
supplement. It could mislead the consuming public into believing that they are the
same and/or originates from a common source and manufacturer. As consistently
held by the Supreme Court, the factual determinations of the trial court, concurred in
by the Court of Appeals, are final and binding on the Supreme Court. Hence,
Prosource is liable for trademark infringement.
 22 - Mighty Corporation, et.al. v. E & J Gallo, et.al., G.R. no. 154342 (2004)

Facts: Respondent is a foreign corporation not doing business in the PH but

organized and existing under the laws of the State of California. Respondent
produces different kinds of wines and brandy products and sells them in may
countries under different registered trademarks, including “GALLO and ERNEST &
JULIO GALLO” wine trademarks. Respondent Anderson, a domestic corporation, has
been Gallo’s exclusive wine importer and distributor in the PH since 1991, selling
these products in its own name and for its own account. On the other hand, the
petitioners and La Campana (their sister company), Tobacco Industries, are engaged
in cultivation, manufacture, distribution and sale of tobacco products for which they
have been using the “GALLO” cigarette trademark since 1973. On Mar. 12, 1993,
respondents sued petitioners in the RTC of Makati for trademark and trade name
infringement and unfair competition, with a prayer for damages and preliminary
injunction. Respondents charged petitioners with violating Art. 6 of the Paris
Convention for the Protection of Industrial Proprety and RA 166, specifically Secs. 22,
23, 29, 30, and 37.

Issue: Whether the there was trademark infringement

Ruling: NO. The SC ruled that the petitioners are not liable for trademark
infringement or unfair competition and reaffirmed the doctrine that the use of an
identical mark does not, by itself, lead to a legal conclusion that there is trademark
infringement. A crucial issue in any trademark infringement case is the likelihood of
confusion, mistake, or deceit as to the identity, source, or origin of the goods or
identity of the business as a consequence of using a certain mark. There are two
types of confusion in trademark infringement, “Confusion of goods” and
“Confusion of business”. Confusion of goods is evident where the litigants are
actually in competition; but confusion of business may arise between
non-competing interests as well. Thus, there is likelihood of confusion when,
although the goods of the parties are different, they are so related that the defendant's
product can reasonably be assumed to originate from the plaintiff.
In determining the likelihood of confusion, the SC considered the following
factors: (a) the resemblance between the trademarks; (b) the similarity of the
goods to which the trademarks are attached; (c) the likely effect on the
purchaser; and (d) the registrant’s express or implied consent and other fair
and equitable considerations.
In this case, the wines and cigarettes are non-competing and totally unrelated
products which are not likely to cause confusion vis-a-vis the goods or business of
Gallo Winery and Mighty Corporation, et.al. Thus, even though similar marks are
used, there is no trademark infringement if the public does not expect the plaintiff to
make or sell the same class of goods as those made or sold by the defendants.
 23 - Asia Pacific Resources v. Paperone, Inc., G.R. nos. 213365-66 (2018)

Facts: Petitioner is engaged in the production, marketing, and sale of pulp and
premium wood free paper. It alleged that it is the owner of a well-known trademark,
PAPER ONE, issued on September 5, 2003. It claimed that the use of PAPERONE in
respondent’s corporate name without its prior consent and authority was done in bad
faith and designed to unfairly ride on its good name and to take advantage of its
goodwill. It was also alleged that respondent had presumptive, if not actual
knowledge, of petitioner’s rights to the trademark PAPER ONE, even prior to
respondent’s application for registration of its corporate name before the SEC.
Respondent averred that it had no obligation to secure prior consent or authority from
petitioner to adopt and use its corporate name. The DTI and SEC had allowed it to
use Paperone, Inc., thereby negating any violation on petitioner’s alleged prior rights.

Issue: Whether or not Respondent was liable for unfair competition

Ruling: Yes, respondent was liable for unfair competition. The essential elements of
an action for unfair competition are: (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the public and defraud a
competitor. Relative to the issue on confusion of marks and trade names,
jurisprudence has noted two types of confusion(1) confusion of goods (product
confusion), where the ordinarily prudent purchaser would be induced to
purchase one product in the belief that he was purchasing the other; and (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 registrant of an earlier
product; and the public would then be deceived either into that belief or into the
belief that there is some connection between the two parties, though inexistent.
One essential factor that has led this Office to tilt the scales of justice in favor of
Complainant is the latter's establishment of prior use of the word PaperOne for paper
products in the Philippines. Records will show that there was prior use and adoption
by Complainant of the word "PaperOne."
PaperOne was filed for trademark registration on 22 March 1999 in the name of
Complainant Asia Pacific Resources International Holdings, Ltd. and matured into
registration on 10 February 2003. If anyone files a suit and can prove priority of
adoption, he can assert his right to the exclusive use of a corporate name with
freedom from infringement by similarity. Respondent was incorporated in March 2001
and was registered two (2) years thereafter as business name with the DTI.

24 - Seri Somboonsakdikul v. Orlane S.A., G.R. no. 188996 (2017)

Facts: Petitioner filed an application for registration of the mark LOLANE with the IPO
for goods classified as personal care products. Respondent filed an opposition to
petitioner's application on the ground that ORLANE is entitled to protection under RA
8293 since it is registered with the IPO with proof of actual use. It has established in
the world and in the Philippines an image and reputation for manufacturing and selling
quality beauty products. Its products have been sold in the market for 61 years and
have been used in the Philippines since 1972. Thus, to allow petitioner's application
would unduly prejudice respondent's right over its registered trademark.
On the other hand, Petitioner maintained that both LOLANE and ORLANE are plain
word marks which are devoid of features that will likely make the most impression on
the ordinary viewer. If at all, the very word marks themselves, LOLANE and ORLANE
are each to be regarded as dominant features. Moreover, the suffix LANE is a weak
mark, being "in common use by many other sellers in the market.”

Issue: Whether there is confusing similarity between ORLANE and LOLANE which
would bar the registration of LOLANE before the IPO.

Ruling: NO. In determining colorable imitation, either the dominancy test or the
holistic or totality test is used. The dominancy test considers the similarity of the
prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public. More
consideration is given on the aural and visual impressions created by the marks
on the buyers of goods, giving little weight to factors like process, quality, sales
outlets, and market segments. On the other hand, the holistic test considers the
entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The focus is not only on the
predominant words but also on the other features appearing on the labels.
Based on the distinct visual and aural differences between LOLANE and ORLANE
using the dominancy test, there is no confusing similarity between the two marks. The
suffix LANE is not the dominant feature of petitioner's mark. Neither can it be
considered as the dominant feature of ORLANE which would make the two marks
confusingly similar. Respondent failed to show proof that the suffix LANE has
registered in the mind of consumers that such suffix is exclusively or even
predominantly associated with ORLANE products. The IPO previously allowed the
registration of the mark GIN LANE for goods also falling under Class 3, i.e., perfume,
cologne, skin care preparations, hair care preparations and toiletries.

25 - Kolin Enterprise v. Taiwan Kolin, G.R. no. 221347 (2021)

Facts: Taiwan Kolin filed to register the trademark “KOLIN” in Class 9 on the following
combination of goods: tv sets, cassette recorder, VCD Amplifiers, camcorders, et.al.
Kolin Electronics opposed the application on the ground that the trademark “KOLIN” is
identical if not confusingly similar with its registered trademark “KOLIN” which covers
the following products under Class 9 of the Nice Classification (NCL): automatic
voltage regulator, converter, et.al. Kolin Enterprises argued that the products are not
only closely-related because they fall under the same classification, but also because
they are inherently similar for being electronic products and are plugged into electric
sockets and perform a useful function.

Issue: Whether or not Taiwan Kolin is entitled to its trademark registration of “KOLIN”
over its specific goods of television sets and DVD players.

Ruling: YES. It is hornbook doctrine that 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 mere fact that one person
has adopted and used a trademark on his goods would not, without more,
prevent the adoption and use of the same trademark by others on unrelated
articles of a different kind. As mentioned, the classification of the products under
the NCL is merely part and parcel of the factors to be considered in ascertaining
whether the goods are related. It is not sufficient to state that the goods involved
herein are electronic products under Class 9 in order to establish relatedness
between the goods, for this only accounts for one of many considerations enumerated
in Mighty Corporation.
Clearly then, it was erroneous for Kolin Electronics to assume over the CA to
conclude that all electronic products are related and that the coverage of one
electronic product necessarily precludes the registration of a similar mark over
another. In this digital age wherein electronic products have not only diversified by
leaps and bounds, and are geared towards interoperability, it is difficult to assert
readily, as Kolin Electronics simplistically did, that all devices that require plugging into
sockets are necessarily related goods. As a matter of fact, while both competing
marks refer to the word “KOLIN” written in upper case letters and in bold font, the
Court at once notes the distinct visual and aural differences between them: Kolin
Electronics’ mark is italicized and colored black while that of Taiwan Kolin is white in
pantone red color background. The differing features between the two, though they
may appear minimal, are sufficient to distinguish one brand from the other.
We are convinced that Taiwan Kolin’s trademark registration not only covers unrelated
goods, but is also incapable of deceiving the ordinary intelligent buyer. The ordinary
purchaser must be thought of as having, and credited with, at least a modicum of
intelligence to be able to see the differences between the two trademarks in question.

26 - Levi’s Strauss & Co., v. Sevilla, G.R. No. 219744 (2021)

Facts: Levi Strauss & Co., a foreign corporation, is the owner of the word
mark"LEVI'S" since 1946, and has used the same on goods covered by Class 25 of
the Nice Classification (NCL). In 1972, petitioner granted Levi Strauss Phils.,Inc.
(LSPI) a non-exclusive license to use its registered trademarks for the manufacture
and sale of said goods in the Philippines.

On the other hand, Sevilla was the original registrant of the mark “LIVe’S” also
covering goods under Class 25 of the NCL. Later on, Sevilla assigned his rights over
the “LIVe’S” mark to Guevarra a.k.a. Tony Lim, doing business under the name and
style Vogue Traders Clothing Company.

In 1995, a consumer survey codenamed "Project Cherokee 5" confirmed that the
public indeed strongly identified petitioner's "LEVI'S" mark with that of respondents'
“LIVe’S” mark. Thus, on December 13, 1995, petitioner filed before the then-Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT, nowthe IPO) a Petition for
Cancellation of the trademark “LIVe’S”. Guevarra rejected the idea that its “LIVe’S”
mark is confusingly similar with petitioner's "LEVI'S"mark, claiming that the probability
of confusion arising from the alleged similarity of the two (2) marks is negligible due to
the attention given by the purchasers to the goods they are purchasing; and besides,
there are sufficient differences in the price, hand tags, and other markings of the
products.

Issue: Whether or not the petition for cancellation be granted on the ground of
confusing similarity between petitioner’s LEVI’s mark and respondents’ “LIVe’S” mark.

Ruling: Yes. Jurisprudence has developed two (2) tests to aid the Court in
ascertaining the existence of similarity and likelihood of confusion, namely, the
Dominancy Test, and the Holistic or Totality Test. The Holistic Test, however, has been
abandoned in determining trademark resemblance.

The Dominancy test focuses on the similarity of the prevalent or dominant

features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered suggests
an effort to imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to
factors like prices, quality, sales outlets, and market segments.

In light of the foregoing, it is submitted that the Dominancy Test must be used in
determining the existence of confusing similarity between the LEVI’s and “LIVe’S”
marks. The dominant feature of petitioner "LEVI'S" marks is the word"LEVI’s”. The
letter "E" is in lowercase format with the rest in uppercase format. On the other hand,
the dominant feature of respondents' “LIVe’S” stylized mark is the word “LIVe’S”. The
only difference with the petitioner's marks is that the positioning of the letters "E" and
"I" are interchanged. The respondents' mark also depicts the letter "E" in lowercase
format with the rest in uppercase format.

From the foregoing, it is thus readily apparent that although petitioner's and
respondents' marks are neither spelled identically nor pronounced in the same way,
nor possess the same meaning, they both begin with the same letter and are in the
possessive form as denoted by the apostrophe before the letter "S" at the end, with
only the second and fourth letters re-arranged. It would not be farfetched to imagine
that a buyer, when confronted with such striking similarity, would be led to confuse
one over the other. Thus, by simply applying the Dominancy Test, it can already be
concluded that there is a likelihood of confusion between the petitioner’s and
respondents’ marks.

27 - McDonald’s Corp. v. L.C. Big Mak Burger, Inc. 437 SCRA 10 (2004)

Facts: Petitioner McDonald’s, an American corporation operating a global chain of

fast-food restaurants, is the owner of the ‘Big Mac’ mark for its double-decker
hamburger sandwich here and in the US. Meanwhile, respondent L.C., a domestic
corporation which operates fast-food outlets and snack vans applied for the
registration of the ‘Big Mak’ mark for its hamburger sandwiches. Petitioner opposed
on the ground that ‘Big Mak’ was a colorable imitation of its registered ‘Big Mac’ mark
for the same food products. Respondents denied there is colorable imitation and
argued that petitioner cannot exclusively appropriate the mark ‘Big Mac’ because the
word ‘Big’ is a generic and descriptive term. Petitioner filed a complaint for trademark
infringement and unfair competition. The trial court found for petitioners. CA held
otherwise.

Issue:
Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;

Ruling: YES. A mark is valid if it is “distinctive” and thus not barred from
registration under Section 4 of RA 166. However, once registered, not only the
mark’s validity but also the registrant’s ownership of the mark is prima facie
presumed. The “Big Mac” mark, which should be treated in its entirety and not
dissected word for word, is neither generic nor descriptive. Generic marks are
commonly used as the name or description of a kind of goods, such as “Lite”
for beer or “Chocolate Fudge” for chocolate soda drink. Descriptive marks, on
the other hand, convey the characteristics, functions, qualities or ingredients of
a product to one who has never seen it or does not know it exists, such as
“Arthriticare” for arthritis medication. On the contrary, “Big Mac” falls under the
class of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly distinctive and thus
valid. Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary
or fanciful.

28 - Societe Des Produit Nestle S.A. v. CA, 356 SCRA 207, 217

Facts: Respondent CFC Corporation filed an application for the registration of the
trademark FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a
domestic corporation licensee of Societe, opposed on the ground that it is confusingly
similar to its trademark for coffee and coffee extracts: MASTER ROAST and MASTER
BLEND. Petitioners contend that the dominant word MASTER is present in the 3
trademarks. Respondent CFC argued that the word MASTER cannot be exclusively
appropriated being a descriptive or generic term. BPTTT denied CFC’s application.
CA held otherwise.

Issue:
Whether or not the word MASTER is descriptive or generic term incapable of
exclusive appropriation.

Ruling: NO. The word “MASTER” is neither a generic nor a descriptive term. As such,
said term cannot be invalidated as a trademark and, therefore, may be legally
protected. Generic terms are those which constitute “the common descriptive name of
an article or substance,” or comprise the “genus of which the particular product is a
species,” or are “commonly used as the name or description of a kind of goods,” or
“imply reference to every member of a genus and the exclusion of individuating
characters,” or “refer to the basic nature of the wares or services provided rather than
to the more idiosyncratic characteristics of a particular product,” and are not legally
protectable. On the other hand, a term is descriptive and therefore invalid as a
trademark if, as understood in its normal and natural sense, it “forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has never
seen it and does not know what it is,” or “if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods,” or if it clearly denotes what
goods or services are provided in such a way that the consumer does not have to
exercise powers of perception or imagination.

Rather, the term “MASTER” is a suggestive term brought about by the advertising
scheme of Nestle. Suggestive terms are those which, in the phraseology of one
court, require “imagination, thought and perception to reach a conclusion as to
the nature of the goods.” Such terms, “which subtly connote something about the
product,” are eligible for protection in the absence of secondary meaning. While
suggestive marks are capable of shedding “some light” upon certain characteristics of
the goods or services in dispute, they nevertheless involve “an element of
incongruity,” “figurativeness,” or ” imaginative effort on the part of the observer.” The
term “MASTER”, therefore, has acquired a certain connotation to mean the coffee
products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the
use by CFC of the term “MASTER” in the trademark for its coffee product FLAVOR
MASTER is likely to cause confusion or mistake or even to deceive the ordinary
purchasers.

29 - Skechers USA, Inc. v. Interpacific Industrial Trading Corp., G.R. No. 164321
(2011)
Facts: Skechers (petitioner) filed with RTC Manila application for issuance of search
warrants against an outlet or warehouse operated by respondents for infringement of
trademark. Petitioner has registered the trademark Skechersand the trademark S
(within an oval design) with the IPO. Respondents moved to quash the search
warrants, arguing that there was no confusing similarity between petitioners Skechers
rubber shoes and its Strong rubber shoes.RTC agreed with respondents CA affirmed
RTCs ruling.

Issue:
Whether or not there was trademark infringement.

Ruling: Yes. The essential element of infringement under R.A. No. 8293 is that
the infringing mark is likely to cause confusion. In determining similarity and
likelihood of confusion, jurisprudence has developed tests: the Dominancy Test and
the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public. Given
more consideration are the aural and visual impressions created by the marks
on the buyers. In contrast, the Holistic or Totality Test necessitates a consideration of
the entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. Applying the Dominancy Test to the
case at bar, the Court held that the use of the stylized S by respondent in its Strong
rubber shoes infringes on the mark already registered by petitioner with the IPO.
While it is undisputed that petitioners stylized S is within an oval design, the dominant
feature of the trademark is the stylized S, as it is precisely the stylized S which
catches the eye of the purchaser. Thus, even if respondent did not use an oval
design, the mere fact that it used the same stylized S, the same being the dominant
feature of the petitioner's trademark, already constitutes infringement under
theDominancy Test. Comparing petitioners' Energy model and respondents' Strong
rubber shoes, respondents also used the color scheme of blue, white and gray utilized
by petitioner. Even the design and wavelike pattern of the midsole and outer sole of
respondents shoes are very similar to petitioners shoes, if not exact patterns thereof.
The protection of trademarks as intellectual property is intended not only to
preserve the goodwill and reputation of the business established on the goods
bearing the mark through actual use over a period of time, but also to safeguard
the public as consumers against confusion on these goods.

30 - UFC Phils v. Barrio Fiesta Mfg., G.R. No. 198889 (2016)

Facts: Barrio Fiesta filed an application for the mark “PAPA BOY & DEVICE” for its
lechonsauce. UFC (merged with Nutri-Asia) opposed alleging that the mark “PAPA”
for its bananacatsup was its trademark for about 52 years, taken from Neri Papa’s
name. In fact, a certificate ofregistration of the same was assigned to UFC. Other
certificates of registration were also issuedfor “PAPA BANANA CATSUP” and “PAPA
KETSARAP”. UFC argues that it neverabandoned the use of the mark “PAPA” and
that “PAPA BOY & DEVICE” is identical to theformer which will cause confusion and
deception to the consuming public – considering furtherthat UFC’s sister company
also manufactures lechon sauce; that both companies are engaged inthe food
business; and that both goods fall under the same class.

Barrio Fiesta argued that:

1. trademark of UFC only for banana catsup and their goods are non-competing
2. Dominant features of “PAPA KETSARAP” are the separate words, not the word
PAPA for which reasons reference to Dominancy test fails
3. “PAPA BOY & DEVICE” differs in overall sound, spelling, meaning, style,
presentation, and appearance

IPO-BLA ruled in favor of UFC, rejecting Barrio Fiesta’s application.

On appeal, the CA reversed. It held that “PAPA BOY & DEVICE” is not confusingly
similar toUFC’s “PAPA KETSARAP” and “PAPA BANANA CATSUP” trademark,
applying the“holistic test”. CA held that the trademarks should be taken as a whole
and not piecemeal. UFCcannot claim exclusive ownership and singular use of the
term “PAPA” because it is morewidely known as a term of endearment for one’s
father.

Issue:
Whether or not Barrio Fiesta’s application should be denied.

Ruling: YES. CA ERRED IN APPLYING HOLISTIC TEST

Two tests to determine likelihood of confusion The dominancy test focuses on the
similarity of the prevalent or dominant features of thec ompeting trademarks that
might cause confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the mark sought to
be registered suggests an effort to imitate. WEIGHT IS GIVEN TO THE SIMILARITY
OF APPEARANCE ARISING FROM THE DOMINANT FEATURES THEREOF.
Meanwhile, the holistic or totality test considers the entirety of the marks as applied to
the products, including the label, packaging, product itself, etc. The discerning eye of
the observer must focus not only on the predominant words, but also on the other
features appearingon both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.

Jurisprudence has consistently relied on the dominancy test rather than the holistic
test in determining confusing similarity or likelihood of confusion between competing
trademarks. Such as in in the case of Mcdonalds v. LC Big Mak (BIG MAK and BIG
MAC) and Mcdonaldsv. Macjoy Fastfood (Macjoy & device and “mcdo). The test of
dominancy is also explicitly incorporated into law in RA 8293.

The scope of protection afforded to registered trademark owners is not limited

to protection from infringers with identical goods. The scope of protection
extends to protection from infringers with related goods, and to market areas
that are the normal expansion of business of the registered trademark owners.
The dominancy test focuses on the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake, and deception in the
mind of the purchasing public.

31 - Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 1900065 (2010)

Facts: Petitioner Dermaline sought to register Dermaline as a trademark. Myra

opposed alleging that such resembles and is confusingly similar with its own
trademark Dermalin registered way back in 1986. Myra added that even if petitioners
application was under Classification 44 for various skin treatments, it could still be
connected to the "Dermalin" mark under Classification 58 for pharmaceutical
products, since ultimately these goods are very closely related. Dermaline argued that
in determining if the competing trademarks are confusingly similar, a comparison of
the words is not the only determinant, but their entirety must be considered in relation
to the goods to which they are attached, including the other features appearing in both
labels. Dermaline further argued that there could not be any relation between its
trademark for health and beauty services from Myras trademark classified under
medicinal goods against skin disorders. IPO-BLA, IPO-DG, and the Court of Appeals
all favored Myras contentions.

Issue:
Whether or not the CA was correct in its ruling.

Ruling: Yes. In rejecting the application of Dermaline for the registration of its mark
"Dermaline," the IPO applied the Dominancy Test. It declared that both confusion of
goods and service and confusion of business or of origin were apparent in both
trademarks. They are almost spelled in the same way, except for Dermalines mark
which ends with the letter "E," and they are pronounced practically in the same
manner in three syllables, with the ending letter "E" in Dermalines mark pronounced
silently. Further, Dermalines stance that its product belongs to a separate and different
classification from Myras products with the registered trademark does not eradicate
the possibility of mistake on the part of the purchasing public to associate the former
with the latter, especially considering that both classifications pertain to treatments for
the skin. Verily, when one applies for the registration of a trademark or label
which is almost the same or that very closely resembles one already used and
registered by another, the application should be rejected and dismissed
outright, even without any opposition on the part of the owner and user of a
previously registered label or trademark. This is intended not only to avoid
confusion on the part of the public, but also to protect an already used and
registered trademark and an established goodwill.
 32 - Kensonic, Inc. v. Uniline Multi-resources, Inc., G.R. Nos. 211820-21 and
211834-35 (2018)

Facts: On June 6, 2002, Uni-Line filed an application for the registration of the
trademark SAKURA for use on the following: Class 07 Washing machines, high
pressure washers, vacuum cleaners, floor polishers, blender, electric mixer, electrical
juicer Class 09 Television sets, stereo components, DVD/VCD players, voltage
regulators, portable generators, switch breakers, fuse Class 11 Refrigerators, air
conditioners, oven toaster, turbo broiler, rice cooker, microwave oven, coffee maker,
sandwich/waffle maker, electric stove, electric fan, hot & cold water dispenser, airpot,
electric griller and electric hot pot Kensonic opposed Uni-Line's application on the
ground that the latter had prior use and registration of the SAKURA mark since
October 1994. Decision of the Bureau of Legal Affairs (BLA) The BLA Director
cancelled Uni-Line's certificate of registration. It observed that the marks were
confusingly similar with each other; that the goods sought to be covered by the
SAKURA registration of Uni-Line were related to the goods of Kensonic under Class
09 goods (namely: amplifiers, speakers, cassette disks, video cassette disks, car
stereos, televisions, digital video disks, mini components, tape decks, compact disk
chargers, VHS and tape rewinders). Hence, appeal to the Director General, IPO.

Decision of the Director General, IPO Director General of the IPO ruled in favor of
Uni-Line's registration of the SAKURA mark as to goods classified as Class 07 and
Class 11, but denied its registration under class 09. The registration of products of
Uni-Line falling under Class 07 and Class 11 should not be cancelled because the
products were different from the goods registered under Class 09 in the name of
Kensonic. Hence, appeal to CA by both parties. Judgment of the CA The CA upheld
Kensonic's ownership of the SAKURA mark based on its showing of its use of the
mark since 1994, but ruled that despite the identical marks of Kensonic and Uni-Line,
Kensonic's goods under Class 09 were different from or unrelated to Uni-Line's goods
under Class 07 and Class 11. It observed that the protection of the law regarding the
SAKURA mark could only extend to television sets, stereo components, DVD and
VCD players but not to Uni-Line's voltage regulators, portable generators, switch
breakers and fuses due to such goods being unrelated to Kensonic's goods; that
Kensonic's registration only covered electronic audio-video products, not electrical
home appliances; and that the similarity of the marks would not confuse the public
because the products were different and unrelated Hence, Kensonic appeal to SC.

Issue:
Whether or not the SAKURA mark is capable of appropriation and whether or not
Kensonic's goods fall under Class 09 related to UniLine's goods falling under Class 07
and Class 11.

Ruling: Yes. The SAKURA mark can be appropriated. A word or a combination of

words which is merely descriptive of an article of trade, or of its composition,
characteristics, or qualities, cannot be appropriated and protected as a
trademark to the exclusion of its use by others. Although SAKURA refers to the
Japanese flowering cherry and is, therefore, of a generic nature, such mark did not
identify Kensonic's goods. Kensonic's prior use of the mark “SAKURA” since 1994
made it the owner of the mark, and its ownership cannot anymore be challenged.

No. An examination of the foregoing factors reveals that the goods of Uni-Line were
not related to the goods of Kensonic by virtue of their differences in class, the
descriptive attributes, the purposes and the conditions of the goods.

33 - Shell Company of the Philippines v. CA, G.R. No. L-19441 (June 30, 1964)

Facts: According to Conrado Uichangco an operator of a Shell service station and

who has been losing during the first eight and ten months of operation of his station,
although he had money to back up his losses, when a certain F. Pecson Lozano, in
agent of the defendant, repaired at his station and "tried to convince me that Insoil is a
good oil". As a matter of fact, he tried to show me a chemical analysis of Insoil which
he claimed was very close to the analysis of Shell oil; and he also told me that he
could sell this kind of oil (Insoil) to me at a much cheaper price so that I could make a
bigger margin of profits. The incident between petitioner's operator and respondent's
agent, brought about a case for damages on the allegation of unfair competition and a
Criminal Case No. 42020 under the Revised Penal Code (Art. 189) against Donald
Mead, Manager, Pedro Kayanan and F. Tecson Lozano. In the criminal case, the
accused therein were acquitted. In the civil case, the trial court ruled in favor of Shell.
However, it was reversed by CA. Hence, this petition.

Issue: Whether or not, as a matter of fact, the defendant is guilty of unfair competition

Ruling: NO. Any person who shall employ deception or any other means
contrary to good faith by which he shall pass off the goods manufactured by
him or in which he deals, ... for those of the one having established such
goodwill, or who shall commit any act calculated to produce said result, shall
be guilty of unfair competition, and shall be subject to an action therefor. The
single transaction at the bar will not render the defendant's act an unfair competition,
much in the same way that the appearance of one swallow does not make a season,
summer. It was found by the Court of Appeals that in all transactions of the low-grade
Insoil, except the present one, all the marks and brands on the containers used were
erased or obliterated. The drum in question did not reach the buying public. It was
merely a shell dealer or an operator of a Shell Station who purchased the drum not to
be resold to the public, but to be sold to the petitioner company, with a view of
obtaining evidence against someone who might have been committing unfair
business practices, for the dealer had found that his income was dwindling in his
gasoline station.
 34 - Esso Standard Eastern, Inc. v. CA, 116 SCRA 336 (1982)

Facts: The petitioner Esso Standard is a foreign corporation duly licensed to do

business in the philippines. it is engaged in the sale of petroleum products which are
identified by the trademark 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it
registered as a business name with the Bureau of Commerce in 1962. United
Cigarette is a domestic corporation engaged in the manufacture and sale of
cigarettes. it acquired the business from La Oriental Tobacco Corp including patent
rights, once of which is the use of 'Esso' on its cigarettes.
The petitioner filed a trademark infringement case alleging that it acquired goodwill to
such an extent that the buying public would be deceived as ti the quality and origin of
the said products to the detriment and disadvantage of its own products. The lower
court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals
ruled that there was no infringment in this case.

Issue: Whether or not infringement was committed.

Ruling: No. Infringement is defined by law as the use without the consent of the
trademark owner of any reproduction, counterfeit, copy or colorable imitation of
any registered mark or tradename which would likely cause confusion or
mistake or deceive purchasers or others as to the source or origin of such
goods.
The products of both parties (Petroleum and cigarettes) are non-competing. But as to
whether trademark infringement exists depend on whether or not the goods are so
related that the public may be or is actually deceived and misled that they come from
the same maker. Under the Related Goods Theory, goods are related when they
belong to the same class or have the same descriptive properties or when they
have same physical attributes. In this case, the goods are absolutely different and
are so foreign from each other it would be unlikely for purchasers to think that they
came from the same source. Moreover, the goods flow from different channels of
trade and are evidently different in kind and nature.

35 - Canon Kabushiki Kaisha v. CA and NSR Rubber Corporation, 336 SCRA 266
(2000)

Facts: Respondent NSR Rubber filed an application for registration of the mark
CANON for sandals. Petitioner Canon, a Japanese corporation, opposed alleging it
will be damaged by the registration. Petitioner presented evidence that it was the
owner of the mark CANON in various countries and in the Philippines for goods such
as paints, chemical products, toner and dye stuff. BPTTT dismissed the opposition
and gave due course to respondent’s application. CA affirmed. Petitioner invokes
Article 8 of the Paris Convention which affords protection to a tradename whether or
not it forms part of a trademark.
Issue: Whether or not petitioner may be afforded protection of its trade name.

Ruling: The term “trademark” is defined by RA 166, the Trademark Law, as including
“any word, name, symbol, emblem, sign or device or any combination thereof adopted
and used by a manufacturer or merchant to identify his goods and distinguish them for
those manufactured, sold or dealt in by others.” Tradename is defined by the same
law as including “individual names and surnames, firm names, tradenames, devices
or words used by manufacturers, industrialists, merchants, agriculturists, and others
to identify their business, vocations, or occupations; the names or titles lawfully
adopted and used by natural or juridical persons, unions, and any manufacturing,
industrial, commercial, agricultural or other organizations engaged in trade or
commerce.” Simply put, a trade name refers to the business and its goodwill; a
trademark refers to the goods.

The Convention of Paris for the Protection of Industrial Property, otherwise known as
the Paris Convention, of which both the Philippines and Japan, the country of
petitioner, are signatories, is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service
marks, trade names and indications of source or appellations of origin, and at the
same time aims to repress unfair competition. We agree with public respondents that
the controlling doctrine with respect to the applicability of Article 8 of the Paris
Convention is that established in Kabushi Kaisha Isetan vs. IAC. As pointed out by the
BPTTT: “Regarding the applicability of Article 8 of the Paris Convention, this
Office believes that there is no automatic protection afforded an entity whose
tradename is alleged to have been infringed through the use of that name as a
trademark by a local entity. To illustrate – if a taxicab or bus company in a town in
the United Kingdom or India happens to use the tradename “Rapid Transportation”, it
does not necessarily follow that “Rapid” can no longer be registered in Uganda, Fiji, or
the Philippines.”

36 - Taiwan Kolin Corp., Ltd. v. Kolins Electronics Co., G.R. No. 209843 (2015)

Facts: Taiwan Kolin Corp sought to register the trademark KOLIN in Class 9 on the
following combination of goods: television sets, cassette recorder, VCD Amplifiers,
camcorders and other audio/video electronic equipment, flat iron, vacuum cleaners,
cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and
automatic goods-vending machine. Kolin Electronics opposed the application on the
ground that the trademark KOLIN is identical, if not confusingly similar, to its
registered trademark KOLIN which covers the following products under Class 9 of the
Nice Classification (NCL): automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down transformer, and PA amplified
AC-DC. Kolin Electronics argued that the products are not only closely related
because they fall under the same classification, but also because they are inherently
similar for being electronic products and are plugged into electric sockets and perform
a useful function.

Issue: Whether or not the products are closely-related.

Ruling: No, the products are not related and the use of the trademark KOLIN on them
would not likely cause confusion. To confer exclusive use of a trademark, emphasis
should be on the similarity or relatedness of the goods and/or services involved and
not on the arbitrary classification or general description of their properties or
characteristics. First, products classified under Class 9 can be further classified into
five categories. Accordingly, the goods covered by the competing marks between
Taiwan Kolin and Kolin Electronics fall under different categories. Taiwan Kolins goods
are categorized as audio-visual equipment, while Kolin Electronics goods fall under
devices for controlling the distribution and use of electricity. Thus, it is erroneous to
assume that all electronic products are closely related and that the coverage of one
electronic product necessarily precludes the registration of a similar mark over
another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual
and aural differences between the two trademarks KOLIN, although appear to be
minimal, are sufficient to distinguish between one brand or another. The casual buyer
is predisposed to be more cautious, and discriminating, and would prefer to mull over
his purchase because the products involved are various kinds of electronic products
which are relatively luxury items and not considered affordable. They are not ordinarily
consumable items such as soy sauce, ketchup or soap which are of minimal cost.
Hence, confusion is less likely.

37 - Acoje Mining Co., Inc. v. Director of Patents, No. L-28744 (1971)

Facts: On September 14, 1965, Acoje Mining Co., Inc. a domestic corporation, filed
an application for registration of the trademark LOTUS, used on Soy Sauce, Class 47.
Use in commerce in the Philippines since June 1, 1965 is asserted. The Chief
trademark Examiner finally rejected the application by reason of confusing similarity
with the trademark LOTUS registered in this Office under Certificate of Registration
No. 12476 issued in favor of Philippine Refining CO., Inc., another domestic
corporation. The cited mark is being used on edible oil, Class 47. "2 The matter was
then elevated to respondent Director of Patents who, on January 31, 1968, upheld the
view of the Chief Trademark Examiner and rejected the application of Petitioner on
the ground that while there is a difference between soy sauce and edible oil and there
were dissimilarities in the trademarks due to type of letters used as well as in the size,
color and design employed, still the close relationship of the products, soy sauce and
edible oil, is such "that purchasers would be misled into believing that they have a
common source. Director of Patents denied the application of petitioner. This petition
for its review was filed with this Court on March 6, 1968. As set forth at the outset the
decision ofrespondent Director of Patents is reversed.
Issue: Whether or not petitioner Acoje Mining Company can register for the purpose
of advertising its product., soy sauce, the trademark LOTUS, there being already in
existence one such registered in favor of the Philippine Refining Company for its
product, edible oil, it being further shown that the trademark applied for is in smaller
type, colored differently, set on a background which is dissimilar as to yield a distinct
appearance.

Ruling: Yes. It is clear from the above-quoted provision that the determinative factor
in a contest involving registration of trade mark is not whether the challenging mark
would actually cause confusion or deception of the purchasers but whether the use of
such mark would likely cause confusion or mistake on the part of the buying public. In
short, to constitute an infringement of an existing trade-mark patent and warrant
a denial of an application for registration, the law does not require that the
competing trademarks must be so identical as to produce actual error or
mistake; it would be sufficient, for purposes of the law, that the similarity
between the two labels, is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it.

Can it be said then that petitioner's application would be likely to cause confusion or
mistake on the part of the buying public? The answer should be in the negative. It
does not defy common sense to assert that a purchaser would be cognizant of the
product he is buying. There is quite difference between soy sauce and edible oil. If
one is in the market for the former, he is not likely to purchase the latter just because
of the trademark LOTUS. Even on the rare occasions that a mistake does occur, it
can easily be rectified. Moreover, there is no denying that the possibility of confusion
is remote considering the difference in the type used, the coloring, the petitioner's
trademark being in yellow and red while that of the Philippine Refining Company
being in green and yellow, and the much smaller size of petitioner's trademark. When
regard is had for the principle that the two trademarks in their entirety as they appear
in their respective labels should be considered in relation to the goods advertised
before registration could be denied, the conclusion is inescapable that respondent
Director ought to have reached a different conclusion. Petitioner has successfully
made out a case for registration.

38 - Philippine Refining Co., Inc. v. Ng Sam and Director of Patents, G.R. No.
L-26676 (1982)

Facts: NG SAM filed with the Philippine Patent Office an application for registration of
the trademark "CAMIA" for his product, ham, which falls under Class 47 (Foods and
Ingredients of Food).

Phil Refining Co. opposed the application claiming that it first used said trademark on
his products: lard, butter, cooking oil, abrasive detergents, polishing materials and
soap of all kinds, some of which are likewise classified 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

Director of Patents rendered a decision allowing registration of the trademark

"CAMIA" in favor of Ng Sam finding that `the goods of the parties are not of a
character which purchasers would be likely to attribute to a common origin.

Issue: WON the product of respondent Ng Sam, which is ham, and those of petitioner
consisting of lard, butter, 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
Atty. Eric Recalde or origin.

Ruling: NO. The right to a trademark is a limited one, in the sense that others
may use the same mark on unrelated goods.

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. Where no confusion is likely to arise, as in
this case, 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. Being a generic and common term, its appropriation as a trademark, albeit in
a fanciful manner in that it bears no relation to the product it Identifies, is valid.
However, the degree of exclusiveness accorded to each user is closely restricted. It is
evident that "CAMIA" as a trademark is far from being distinctive. By itself, it does not
Identify petitioner as the manufacturer or producer of the goods upon which said mark
is used. If a mark is so commonplace that it cannot be readily distinguished from
others, then it is apparent that it cannot identify a particular business; and he who first
adopted it cannot be injured by any subsequent appropriation or imitation by others,
and the public will not be deceived.

While ham and some of the products of petitioner are classified under Class 47
(Foods and Ingredients of Food), this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods.

39 - Hicock Manufacturing Co., Inc. v. CA and Santos Lim Bun Liong, G.R. No.
L-44707 (1982)

Facts: Petitioner Hickok Manufacturing sough to cancel Private Respondents '

(Santos Lim Bun Liong) registration of the trademark "HICKOK", which the Petitioner
has already registered. Petitioners' products include men's wear and leather items
such as wallets, key cases, belts, handkerchiefs, underwear and briefs. Private
Respondents' product is Marikina Shoes.

For the handkerchiefs, the word HICKOK is in red with white background, in the
middle of two branches of laurel in light gold. At the lower part thereof is a ribbon on
which the words "POSITIVELY FINER" in light gold For the underwear, the word
HICKOK is in red with white background, in the middle of two branches of laurel in
dark gold, with similar ribbons and the words "POSITIVELY FINER" in dark gold For
the briefs, the word HICKOK is in white but with red background, in the middle of two
branches of laurel, leaves are dark gold with white edges, with similar ribbon and
words "POSITIVELY FINER" in dark gold. Private Respondents' trademark on its
shoes, the word HICKOK is in white with gold background, between two branches of
laurel in red, with the word "SHOES" also in red below the word HICKOK. The ribbon
is in red with the words "QUALITY AT YOUR FEET" also in red.

The Director of Patents ruled in favor of Petitioner Hickok. On appeal, the CA

reversed the decision and dismissed the Petition.

Issue: WON the CA erred in reversing the decision of the Director of Patents

Ruling: An examination of the trademark of petitioner-appellee and that of

registrant-appellant convinces us that there is a difference in the design and the
coloring of, as well as in the words on the ribbons, the two trademarks. While the law
does not require that the competing trademarks be Identical, the two marks must be
considered in their entirety, as they appear in the respective labels, in relation to the
goods to which they are attached. We gather that there must be not only resemblance
between the trademark of the plaintiff and that of the defendant, but also similarity of
the goods to which the two trademarks are respectively attached.

Emphasis should be on the similarity of the products involved and not on the
arbitrary classification or the general description of their properties or
characteristics. Also, 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 by
others on unrelated articles of different kinds. There is a different design and
coloring of the trademark itself. The 'Hickok' trademark is in red with white background
in the middle of 2 branches of laurel (in light gold) while the one used by Sam Bun
Liong is the word 'Hickok ' in white with gold background between 2 branches of laurel
in red with the word 'shoes' also in red placed below the word 'Hickok'.

Since in this case the trademark of petitioner-appellee is used in the sale of leather
wallets, key cases, money folds made of leather, belts, men's briefs, neckties,
handkerchiefs and men's socks, and the trademark of registrant-appellant is used in
the sale of shoes, which have different channels of trade, the Director of Patents, as in
the case of Acoje Mining Co., Inc. vs. Director of Patents, 'ought to have reached a
different conclusion. It is established doctrine, as held in the above-cited cases, that
"emphasis should be on the similarity of the products involved and not on the arbitrary
classification or general description of their properties or characteristics" and that "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 unrelated articles of
a different kind."

40 - 246 Corp. v. Daway, 416 SCRA 315 (2003)

Facts: Respondents Montres Rolex S.A. and Rolex Centre Phil., Limited,
owners/proprietors of Rolex and Crown Device, filed against petitioner 246
Corporation the instant suit for trademark infringement and damages with prayer for
the issuance of a restraining order or writ of preliminary injunction before the Regional
Trial Court of Quezon City.

Respondents alleged that sometime in July 1996, petitioner adopted and, since then,
has been using without authority the mark “Rolex” in its business name “Rolex Music
Lounge” as well as in its newspaper advertisements as—“Rolex Music Lounge, KTV.
Disco & Party Club.”

Petitioner argued that respondents have no cause of action because no trademark

infringement exist; that no confusion would arise from the use by petitioner of the
mark “Rolex” considering that its entertainment business is totally unrelated to the
items catered by respondents such as watches, clocks, bracelets and parts thereof.

Petitioner filed a motion for preliminary hearing on its affirmative defenses.

Subsequently, on motion of petitioner, the trial court issued a subpoena ad
testificandum requiring Atty. Alonzo Ancheta to appear at the preliminary hearing.
Respondents, in the meantime, filed a Comment and Opposition to the motion for
preliminary hearing and a motion to quash the subpoena ad testificandum.

Issue: WON trademark infringement exists.

Ruling: Yes. the Court of Appeals did not err in finding that no abuse of discretion
could be ascribed to the trial court’s denial of petitioner’s motion for preliminary
hearing on its affirmative defenses with motion to dismiss. The issue of whether or not
a trademark infringement exists, is a question of fact that could best be determined by
the trial court.

Under the Trademark law, where the goods for which the identical marks are used are
unrelated, there can be no likelihood of confusion and there is therefore no
infringement in the use by the junior user of the registered mark on the entirely
different goods. This ruling, however, has been to some extent, modified by Section
123.1(f) of the Intellectual Property Code (Republic Act No. 8293), which took effect
on January 1, 1998.

A junior user of a well-known mark on goods or services which are not similar
to the goods or services, and are therefore unrelated, to those specified in the
certificate of registration of the well-known mark is precluded from using the
same on the entirely unrelated goods or services, subject to the following
requisites:
1. The mark is well-known internationally and in the Philippines;
2. The use of the well-known mark on the entirely unrelated goods or
services would indicate a connection between such unrelated goods or
services and those goods or services specified in the certificate of
registration in the well known mark;
3. The interests of the owner of the well-known mark are likely to be
damaged

Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely
unrelated to respondents’ business involving watches, clocks, bracelets, etc.

41 - Republic Gas Corp., et al v. Petron, et al (2013)

Facts: LPG Dealers Associations received reports that certain entities were engaged
in the unauthorized refilling, sale and distribution of LPG cylinders bearing the
registered trade names and trademarks of the petitioners. On February 5, 2004,
Genesis Adarlo, on behalf of Shellane Dealers Association, Inc., Petron Gasul
Dealers Association, Inc. and Totalgaz Dealers Association, filed a letter-complaint in
the NBI regarding the alleged illegal trading of petroleum products and/or under
delivery or underfilling in the sale of LPG products. NBI Senior Agent Marvin E. De
Jemil was assigned to investigate within the areas of Caloocan, Malabon, Novaliches
and Valenzuela. The investigation showed that several persons and/or
establishments, including REGASCO, were suspected of having violated provisions of
B.P. 33. The surveillance revealed that REGASCO LPG Refilling Plant in Malabon
was engaged in the refilling and sale of LPG cylinders bearing the registered marks of
the petitioners without authority from the latter.

Issue: Whether probable cause exists to hold petitioners liable for the crimes of
trademark infringement and unfair competition as defined and penalized under
Sections 155 and 168, in relation to Section 170 of Republic Act (R.A.) No. 8293.

Ruling: Under Section 155 of the LIP, from the foregoing provision made it
categorically clear that the mere unauthorized use of a container bearing a
registered trademark in connection with the sale, distribution or advertising of
goods or services which is likely to cause confusion, mistake or deception
among the buyers or consumers can be considered as trademark infringement.

Petitioners have actually committed trademark infringement when they refilled, without
the respondents’ consent, the LPG containers bearing the registered marks of the
respondents. As noted by respondents, petitioners’ acts will inevitably confuse the
consuming public, since they have no way of knowing that the gas contained in the
LPG tanks bearing respondents’ marks is in reality not the latter’s LPG product after
the same had been illegally refilled. The public will then be led to believe that
petitioners are authorized refillers and distributors of respondents’ LPG products,
considering that they are accepting empty containers of respondents and refilling
them for resale.

42 - Levi Strauss & Co., v. Clinton Aparelle, Inc. G.R. No. 138900 (2005)

Facts: The Complaint alleged that LS & Co., a foreign corporation duly organized and
existing under the laws of the State of Delaware, USA and engaged in the apparel
business, is the owner by prior adoption and use since 1986 of the internationally
famous "Dockers and Design" trademark. This ownership is evidenced by its valid and
existing registrations in various member countries if Paris Convention. In the
Philippines, it has a Certificate of Registration No. 46619 in the Principal Register for
use of said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets
under Class 25. The "Dockers and Design" trademark was first used in the Philippines
in or about May 1988, by LSPI, a domestic corporation engaged in the manufacture,
sale and distribution of various products bearing trademarks owned by LS & Co. To
date, LSPI continues to manufacture and sell Dockers Pants with the "Dockers and
Design" Trademark. LS & Co and LSPI alleged that they discovered the presence in
the local market of jeans under the brand name "Paddocks" using a device which is
substantially, if not exactly, similar to the "Dockers and Design" trademark owned and
registered in their name, without their consent. Based on their belied, they added
Clinton Apparelle manufactured and continues to manufacture such "Paddocks" jeans
and other apparel. However, since LS & Co. and LSPI are unsure if both or just one of
impleaded defendants is behind the manufacture and sale of the "Paddocks" jeans
complained of, they brought this suit under Sec. 13 Rule 3 of the 1997 Rules of Court.

Issue: WON the single registration of the trademark "Dockers and Design" confers on
the owner the right to prevent the use of a fraction thereof.

Ruling: Given the single registration of the trademark "Dockers and Design" and
considering that respondent only uses the assailed device but a different word mark,
the right to prevent the latter from using the challenged "Paddocks" device is far from
clear. Stated otherwise, it is not evident whether the single registration of the
trademark "Dockers and Design" confers on the owner the right to prevent the use of
a fraction thereof in the course of trade. It is also unclear whether the use without the
owner's consent of a portion of a trademark registered in its entirety constitutes
material or substantial invasion of the owner's right.

Trademark dilution is the lessening of the capacity of a famous mark to identify

and distinguish goods or services, regardless of the presence or absence of: (1)
competition between the owner of the famous mark and other parties; or (2)
likelihood of confusion, mistake or deception. Subject to the principles of equity,
the owner of a famous mark is entitled to an injunction "against another person's
commercial use in commerce of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive quality of the mark."
This is intended to protect famous marks from subsequent uses that blur
distinctiveness of the mark or tarnish or disparage it.

43 - Coffee Partners, Inc., v. San Francisco Coffee and Roastery, Inc., G.R. no.
169504 (2010)

Facts: Petitioner Coffee Partners, Inc. is a local corporation engaged in the business
of establishing and maintaining coffee shops in the country. It has a franchise
agreement with Coffee Partners Ltd. (CPL), a business entity organized and existing
under the laws of British Virgin Islands, for a non-exclusive right to operate coffee
shops in the Philippines using trademarks “SAN FRANCISCO COFFEE.”

Respondent is a local corporation engaged in the wholesale and retail sale of coffee.It
registered the business name “SAN FRANCISCO COFFEE & ROASTERY, INC.” with
the Department of Trade and Industry (DTI) in June 1995. Respondent had since built
a customer base that included Figaro Company, Tagaytay Highlands, Fat Willy’s, and
other coffee companies. In 1998, respondent formed a joint venture company with
Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc.
(BCCPI). In June 2001, respondent discovered that petitioner was about to open a
coffee shop under the name “SAN FRANCISCO COFFEE” in Libis, Quezon City.
Respondent sent a letter to petitioner demanding that the latter stop using the name
“SAN FRANCISCO COFFEE.”

Issue: WON petitioner’s use of the trademark “SAN FRANCISCO COFFEE”

constitutes infringement of respondent’s trade name “SAN FRANCISCO COFFEE &
ROASTERY, INC.,” even if the trade name is not registered with the Intellectual
Property Office (IPO).

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

The trademark or trade name is reproduced, counterfeited, copied, or colorably

imitated by the infringer. The infringing mark or trade name is used in connection with
the sale, offering for sale, or advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels, signs, prints, packages, wrappers,
receptacles, or advertisements intended to be used upon or in connection with such
goods, business, or services. The use or application of the infringing mark or trade
name is likely to cause confusion or mistake or to deceive purchasers or others as to
the goods or services themselves or as to the source or origin of such goods or
services or the identity of such business. It is without the consent of the trademark or
trade name owner or the assignee thereof.

Clearly, a trade name need not be registered with the IPO before an infringement
suit may be filed by its owner against the owner of an infringing trademark. All
that is required is that the trade name is previously used in trade or commerce
in the Philippines.

44 - Superior Commercial Enterprises, Inc.v. Kunnan Enterprises Ltd., G.R. No.

169974 (2010)

Facts: Superior Commercial Enterprises, Inc. (Superior) is a local company which

distributes sporting goods under the brands “KENNEX”, “KENNEX & DEVICE”, “PRO
KENNEX” and “PRO-KENNEX” which are foreign brands belonging to Kunnan
Enterprises Ltd. And Sports Concept & Distributor, Inc. (Kunnan). Superior, although
being only a distributor of Kunnan, was able to register the trademark in the
Philippines upon representation to Kunnan that it was not qualified to hold the same
due to the “many requirements set by the Philippine Patent Office” that KUNNAN
could not meet. Upon the termination of its distributorship agreement with Superior,
Kunnan appointed Sports Concept as its new distributor, prompting Superior to file its
Complaint for Infringement of Trademark and Unfair Competition with Preliminary
Injunction against Kunnan.

While the case was ongoing, KUNNAN filed with the now defunct Bureau of Patents,
Trademarks and Technology Transfer separate Petitions for the Cancellation of
Registration of Superior’s Trademarks on the ground that Superior fraudulently
registered and appropriated the disputed trademarks; as mere distributor and not as
lawful owner, it obtained the registrations and assignments of the disputed trademarks
in violation of the terms of the Distributorship Agreement and Sections 2-A and 17 of
Republic Act No. 166, as amended. The Bureau cancelled the trademarks in issue.

Issue: WON Kunnan may be held liable for Unfair Competition?

Ruling: NO. The Court held that no evidence exists showing that KUNNAN ever
attempted to pass off the goods it sold (i.e. sportswear, sporting goods and
equipment) as those of SUPERIOR.

From jurisprudence, unfair competition has been defined as the passing off (or
palming off) or attempting to pass off upon the public of the goods or business of one
person as the goods or business of another with the end and probable effect of
deceiving the public. The essential elements of unfair competition are (1) confusing
similarity in the general appearance of the goods; and (2) intent to deceive the public
and defraud a competitor.

“True test” of unfair competition: whether the acts of the defendant have the intent of
deceiving or are calculated to deceive the ordinary buyer making his purchases under
the ordinary conditions of the particular trade to which the controversy relates.

45 - Del Monte Corp., et al. v. CA, 181 SCRA 410

Facts:Petitioner Del Monte, an American corporation, granted Philpack the right to
manufacture, distribute and sell in the Philippines its Del Monte catsup. Petitioner’s
trademark and logo ‘Del Monte’ and its catsup bottle were subsequently registered in
the Philippines. Meanwhile respondent Sunshine Sauce, a company also engaged in
the manufacturing and sale of various kinds of sauces, registered its logo ‘Sunshine
Fruit Catsup.’ Philpack received reports that respondent was buying and recycling
used Del Monte’s bottle in junk shops to serve as container for its own catsup. Thus,
petitioner and Philpack filed a complaint for trademark infringement and unfair
competition which the trial court dismissed. CA affirmed holding there were substantial
differences between the 2 marks.

Issue: WON there is confusing similarity between the two trademarks.

Ruling: YES. At that, even if the labels were analyzed together it is not difficult to see
that the Sunshine label is a colorable imitation of the Del Monte trademark. The
predominant colors used in the Del Monte label are green and red-orange, the same
with Sunshine. The word “catsup” in both bottles is printed in white and the style of the
print/letter is the same. Although the logo of Sunshine is not a tomato, the figure
nevertheless approximates that of a tomato.

As previously stated, the person who infringes a trade mark does not normally copy
out but only makes colorable changes, employing enough points of similarity to
confuse the public with enough points of differences to confuse the courts. What is
undeniable is the fact that when a manufacturer prepares to package his product, he
has before him a boundless choice of words, phrases, colors and symbols sufficient to
distinguish his product from the others. When as in this case, Sunshine chose, without
a reasonable explanation, to use the same colors and letters as those used by Del
Monte though the field of its selection was so broad, the inevitable conclusion is that it
was done deliberately to deceive.

46 - E.I. Dupont De Nemours and Co. v. IPO, G.R. No. 174379 (2016)

Facts: On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No.
35526 before the Bureau of Patents, Trademarks, and Technology Transfer. The
application was for Angiotensin Il Receptor Blocking Imidazole (losartan), an invention
related to the treatment of hypertension and congestive heart failure. The patent
application was handled by Atty. Nicanor D. Mapili, a local resident agent who handled
a majority of E.I. Dupont Nemours' patent applications in the Philippines from 1972 to
1996. On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del
Castillo, Bacorro, Odulio, Calma, and Carbonell, made a request to the IPO to act on
Philippine Patent Application No. 35526 to which the latter informed them that the
appointed attorney on record was the late Atty. Nicanor D. Mapili and that the
reconstituted documents provided no official revocation of his Power of Attorney and
the appointment of the new applicant is required. On May 29, 2002, Petitioner
submitted a Power of Attorney executed by Miriam Meconnahey, authorizing Ortega,
Castillo, Del Castillo, Bacorro, Odulio, Calma, and Carbonell to prosecute and handle
its patent applications and also filed a Petition for Revival with Cost of Philippine
Patent Application No. 35526. They argued that Atty. Makapili did not inform them of
the abandonment of their application, that the petitioner was not aware that its agent
had already died. On April 18, 2002, the Director of Patents denied the Petition for
Revival for having been filed out of time. The CA rendered a decision in favor of the
petitioner and granted it some relief from the gross negligence of its former lawyer.
The OSG moved for reconsideration and in the interim, Therapharma, Inc. moved for
leave to intervene. Therapharma, Inc. alleged that on January 4, 2003, it filed before
the Bureau of Food and Drugs its own application for a losartan product "Lifezar," a
medication for hypertension, which the Bureau granted. CA granted the motion to
intervene by Therapharma, Inc. and reversed its former own decision.

Issue: WON the patent application of losartan by Dupont should be revived.

Ruling: NO. Although it was in the petitioner's discretion as a foreign client to put its
complete trust and confidence on its local resident agent, there was a correlative duty
on its part to be diligent in keeping itself updated on the progress of its patent
applications. Its failure to be informed of the abandonment of its patent application
was caused by its own lack of prudence. Petitioner issued a Power of Attorney and
Appointment of Resident Agent in favor of Bito, Lozada, Ortega & Castillo on March
25, 1996 but it only requested a status update of Philippine Patent Application No.
35526 on December 14, 2000 or four (4) years after it learned of Atty. Mapili's death.
Since it appears from the Intellectual Property Office's records that a notice of
abandonment was mailed to the petitioner's resident agent on July 19, 1988, the time
for taking action is counted from this period. Public interest will be prejudiced if,
despite petitioner's inexcusable negligence, its Petition for Revival is granted. Even
without a pending patent application and the absence of any exception to extend the
period for revival, petitioner was already threatening to pursue legal action against
respondent Therapharma, Inc. if it continued to develop and market its losartan
product, Lifezar.

Once the petitioner is granted a patent for its losartan products, Cozaar and Hyzaar,
the loss of competition in the market for losartan products may result in higher prices.
For the protection of public interest, Philippine Patent Application No. 35526 should
be considered a forfeited patent application.

47 - Keeler v. Standard Folding-Bed Co., 157 U.S. 659 (1895)

Facts: The Standard Folding-Bed Company, a corporation of the State of New York,
filed in the Circuit Court of the United States for the District of Massachusetts a bill of
complaint against Keeler & Bro., partners doing business in the City of Boston.

By an agreed state of facts, it appears that the complainants are assignees for the
State of Massachusetts of certain letters patent granted to one Lyman Welch, for an
improvement in wardrobe bedsteads; that the Welch Folding Bed Company own the
patent rights for the State of Michigan, and that the defendants purchased a carload
of said beds from the Welch Folding Bed Company at Grand Rapids, Michigan, for the
purpose of selling them in Massachusetts, and they they afterwards sold and are now
engaged in selling the said beds in Boston.

Issue: WON a patentee may protect himself and his assignees by special contracts
brought home to the purchasers is not a question before the Court and upon which it
expresses no opinion.

Ruling: The defendants were not protected from the claim of the Massachusetts
assignee by having purchased the patented articles from the Michigan assignee, and
accordingly there was an injunction and final decree in favor of the complainants, from
which an appeal was taken to this Court.

48 - Creser Precision Systems, inc. v. CA, 286 SCRA 13 (1998)

Facts: Private respondent Floro is a domestic corporation engaged in the

manufacture, production, distribution and sale of military armaments, munitions,
airmunitions and other similar materials. On Jan. 23, 1990, private respondent Floro
was granted by the Bureau of Patents, Trademarks and Technology Transfer a Letters
Patent covering an aerial fuze.

However, Floro's President, Mr. Gregory Floro discovered that petitioner Creser
submitted samples of its patented aerial fuze to the Armed Forces of the Philippines
(AFP) for testing and that petitioner is claiming the aerial fuze as its own and planning
to bid and manufacture it commercially.

Petitioner Creser contends that it is the first, true and actual inventor of an aerial fuze
denominated as which it developed as early as December 1981 under the
Self-Reliance Defense Posture Program (SRDP) of the AFP; that sometime in 1986,
petitioner began supplying the AFP with the said aerial fuze; that private respondent's
aerial fuze is identical in every respect to the petitioner's fuze; and that the only
difference between the two fuzes are miniscule and merely cosmetic in nature.

Issue: WON a petitioner can file an action for infringement not as a patentee but as
an entity in possession of a right, title in and to the patented invention.

Ruling: NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly
provides:
Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing any
right, title or interest in and to the patented invention, whose rights have been
infringed, may bring a civil action before the proper Court of First Instance (now
Regional Trial court), to recover from the infringer damages sustained by reason of
the infringement and to secure an injunction for the protection of his right....
There can be no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent arises alone from the
grant of patent. In short, a person or entity who has not been granted letters patent
over an invention and has not acquired any right or title thereto either as assignee or
as licensee, has no cause of action for infringement because the right to maintain an
infringement suit depends on the existence of the patent.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis
or cause of action to institute the petition for injunction and damages arising from the
alleged infringement by private respondent. While petitioner claims to be the first
inventor of the aerial fuze, still it has no right of property over the same upon which it
can maintain a suit unless it obtains a patent.

49 - Smith Kline Beckman Corp. v. The Honorable CA, G.R. No. 126627 (2003)

Facts: Petitioner Smith Kline Beckman is an American corporation licensed to do

business in the Philippines. In 1976 it filed with the Philippine Patent Office a patent
application over methyl 5 propylthio-2-benzimidazole carbamate, a chemical
compound that fought infections caused by gastrointestinal parasites in farm and pet
animals. In 1981 the PPO issued Letters Patent No. 14561 for the said invention for a
term of 17 years.

Private respondent Tryco Pharma is a domestic corporation that dealt in veterinary

products. It manufactured and sold Impregon, a drug which fought gastrointestinal
parasites in farm animals, and which contained the compound Albendazole as active
ingredient.

Claiming that Letters Patent No. 14561 covered the substance Albendazole, Smith
Kline filed before the Caloocan City Regional Trial Court a complaint against Tyco
Pharma for patent infringement, and for unfair competition under Article 189 of the
Revised Penal Code and Section 29 of the Trademark Law.

Issue: WON Tyco Pharma committed patent infringement to the prejudice of Smith
Kline.

Ruling: NO. The claims of Letters Patent No. 14561 do not mention the compound
Albendazole. All that the claims disclose are: the covered invention, i.e., the
compound methyl 5 propylthio-2-benzimidazole carbamate; the compound’s ability to
destroy parasites without harming the host animals; and the patented methods,
compositions or preparations involving the compound to maximize its efficacy against
certain kinds of parasites infecting specified animals.

When the language of its claims is clear and distinct, the patentee is bound thereby
and may not claim anything beyond them. The courts are similarly bound: they may
not add to or detract from the claims matters not expressed or necessarily implied, nor
may they enlarge the patent beyond the scope of that which the inventor claimed and
the patent office allowed, even if the patentee may have been entitled to something
more than the words it had chosen would include.

The mere absence of the word Albendazole in the patent is not determinative of
Albendazole’s non-inclusion in its claims. While Albendazole is admittedly a chemical
compound that exists by a name different from that covered in the patent, the
language of the patent fails to yield anything at all regarding Albendazole. No extrinsic
evidence had been adduced to prove that Albendazole inheres in Smith Klein’s patent
in spite of its omission therefrom, or that the meaning of the claims of the patent
embraces Albendazole.

50 - Air Philippines Corp. v. Pennswell, Inc., G.R. No. 172835 (2007)

Facts: Petitioner Air Philippines Corp. is engaged in the business of air transportation
services. On the other hand, respondent Pennswell, Inc. is engaged in the business of
manufacturing and selling industrial chemicals, solvents, and special lubricants.

On various dates, respondent delivered and sold to petitioner various goods in trade.
Petitioner's total outstanding obligation amounted to P449,864.98. Due to failure of
the petitioner to comply with its obligation, respondent filed a Complaint for a Sum of
Money.

Petitioner contends that its refusal is justifiable. Petitioner alleged that it was
defrauded in the amount of P592,000.00 by respondent for its previous sale of items.
Said items were misrepresented by respondent as belonging to a new line, but were
in truth and in fact, identical with products petitioner had previously purchased from
respondent. Petitioner asserted that it was deceived by respondent which merely
altered the names and labels of such goods.

Issue: WON the chemical components or ingredients of respondent's products are

trade secrets or industrial secrets that are not subject to compulsory disclosure.

Ruling: YES. The chemical composition, formulation, and ingredients of respondent's

special lubricants are trade secrets within the contemplation of the law.

A trade secret is defined as a plan or process, tool, mechanism or compound known

only to its owner and those of his employees to whom it is necessary to confide it. The
definition also extends to a secret formula or process not patented, but known only to
certain individuals using it in compounding some article of trade having a commercial
value. A trade secret may consist of any formula, pattern, device, or compilation of
information that: (1) is used in one's business; and (2) gives the employer an
opportunity to obtain an advantage over competitors who do not possess the
information.
American jurisprudence has utilized the following factors to determine if an
information is a trade secret, to wit:
(1) the extent to which the information is known outside of the employer's business;
(2) the extent to which the information is known by employees and others involved in
the business;
(3) the extent of measures taken by the employer to guard the secrecy of the
information;
(4) the value of the information to the employer and to competitors;
(5) the amount of effort or money expended by the company in developing the
information; and
(6) the extent to which the information could be easily or readily obtained through an
independent source.

Any determination by management as to the confidential nature of technologies,

processes, formulae or other so-called trade secrets must have a substantial factual
basis which can pass judicial scrutiny.