Case Digest Chapter 1

 

MIGHTY CORP. vs. E&J GALLO MIGHTY CORP. vs. E&J GALLO G.R. NO. 154342 July 14, 2004 PONENTE CORONA; J.

FACTS: On March 12, 1993, E. & J. GALLO WINERY and THE AN ANDR DRES ESON ONS S GROU GROUP, P, IN INC C (res (respo pond nden ents ts)) su sued ed MIG IGHT HTY Y CORP CORPOR ORAT ATIO ION N and LA CA CAMP MPA ANA FABRICA DE TABACO, INC. (peoners) in the RTCMaka for trademark and trade name infringement and unfair compeon, with a prayer for damages and preliminary injuncon.

prelimina prelim inary ry injunc injuncon on.. CA likewis likewise e dismis dismisse sed d respondent’s peon for review on cerorari. Aer the trial on the merits, however, the Maka RT RTC C held held pe peon oner erss liab liable le fo forr co comm mmi ing ng trademark tradem ark infrin infringeme gement nt and unfair compeon with respect to the GALLO trademark. On appe appeal, al, the the CA arm armed ed the the Ma Maka ka RT RTC’ C’ss decisi dec ision on and subseq subsequen uently tly den denied ied pe peon oner’ er’ss moon for reconsideraon. ISSUE/ ISSUE/S: S: Whe Whethe therr GALLO GALLO cig cigare arees es and GALLO GALLO wines were idencal, similar or related goods for the reason alone that they were purportedly forms of vice. RULING: NO.

They claimed that peoners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Er Erne nest st & Juli Julio o Gall Gallo o trad tradem emark ark’s ’s es esta tabli blish shed ed reputaon and popularity, thus causing confusion, de deccep epo on n and and mis ista take ke on the the part part of the the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, peoners alleged, among other arm a rma ave ve de defe fens nses es that that:: pe peon oner erss Ga Gall llo o cig cigare arees es and Gal Gallo lo Winery’ Winery’ss wine wine wer were e totally totally unrelated products. To wit: 1. Gall Gallo o Wine Winery’s ry’s GALLO GALLO trad tradema emark rk reg regist istrao raon n cercates covered wines only, and not cigarees; 2. GALLO cigarees and GALLO wines were sold through dierent channels of trade;

Wines and cigare Wines cigarees es are not idenc idencal, al, sim similar ilar,, compeng or related goods. In resolv resolving ing whe whethe therr goo goods ds are related related,, sev severa erall factors come into play: · the business (and its locaon) to which the goods belong · belong

· the produ product’s ct’s quality, quality, quan quanty, ty, or size, including the nature of the package, wrapper or container ·

4. that the dominant feature of the Gallo cigaree was the rooster device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

Th The e Maka aka RTC RTC den enie ied, d, for for la lack ck of mer erit it,, respondent’s prayer for the issuance of a writ of 

the nature and cost of the arcles

· the descripve properes, physical aributes or essenal characteriscs with reference to their form, composion, texture or quality ·

3. the target market of Gall Gallo o Winery’s wines wines was the mid middle dle or hig high-i h-inco ncome me bracke brackett while while Gallo Gallo cigaree buyers were farmers, shermen, laborers and other low-income workers;

the cla class ss of produc productt to which which the goo good d

the purpose of the goods

· whether the arcle is bought for immediate consumpon, that is, day-to-day household items ·

the eld of manufacture

· the condi condions ons under which the arcle is usually purchased and · the arcle arcless of the trade throug through h which the goods ow, how they are distributed, marketed, displayed and sold.

Th The e test test of fr frau audu dule lent nt simu simula lao on n is to the the likelih like lihood ood of the decepon decepon of some some person personss in some som e mea measur sure e acq acquain uainted ted wit with h an establ establish ished ed

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design and desirous of purchasing the commodity with which that design has been associated. The simulaon, in order to be objeconable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the arcle that he seeks to purchase. Th The e pe pe on oner erss are not li liabl able e for for trad tradem emark ark infringement, unfair compeon or damages.

behalf of the company, in the ling of criminal, civil and administrave complaints, among others. The Special Power of Aorney was notarized by Nicole Br Brow own n of New New Yo York rk Co Coun unty ty an and d cer cere ed d by Norman Goodman, County Clerk and Clerk of the Supreme Court of the State of New York. Consul Cecilia B. Rebong of the Consulate General of the Ph Phil ilip ippi pine ness, Ne New w Yor ork, k, auth authen enc cat ated ed the the

SASOT V. PEOPLE (CASE DIGEST. G.R. NO. 143193)

cercaon cerca on.. Welts Welts also exe execut cuted ed a Compla ComplaintintAdavi Ad avitt on Februa February ry 12, 1998, 1998, before before Notary Notary Public Nicole J. Brown of the State of New York.

G.R. No. 143193. June 29, 2005 MELBAROS G.R. MELBAROSE E R. SASOT and ALLANDALE R. SASOT, peoners, vs. PEOPLE OF THE PHILIPPINES, The Honorable court of of appe appeal als, s, an and d RE REBE BECC CCA A G. SA SALV LVAD ADOR OR,, Presiding Judge, RTC, Bran ranch 1, Manil ila a, respondents. AUSTRIA-MARTINEZ, J.:

Thereaer, in a Resoluon dated July 15, 1998, Prosec Pro secuo uon n Aorne Aorney y Aileen Aileen Mar Marie ie S. Gu Guerr errez ez recommended the ling of an Informaon against pe peon oner erss fo forr vio viola laon on of Ar Arc cle le 18 189 9 of the the Revised Penal Code.

The case subject of the present special civil acon for cer ceror orari ari is a crim crimina inall prosec prosecuo uon n agains againstt peon pe oners ers for unf unfair air com compe peon on und under er Ar Arcle cle 189 of the Revised Penal Code, led before the Regional Trial Court (RTC) of Manila (Branch 1),

Before arraignment, peoners led a Moon to Quash the Informaon on the following grounds:

and docketed as Criminal Case No. 98-166147.1

II. II. AND AND THIS THIS HO HONO NORA RABL BLE E COUR COURT T HA HAD D NO JURISDICTIO JURIS DICTION N OVER THE OFFENSE OFFENSE CHARGE CHARGED D OR THE PERSON OF THE ACCUSED

Some me in May 1997, the Naonal Bureau of  Inv Inves esga gaon on (NB (NBI) I) con conduc ducted ted an inv inves esga gaon on pursuant to a complaint by the NBA Properes, Inc., against peoners for possi possible ble violaon of  Arcle 189 of the Revised Penal Code on unfair compeon. In its Report dated June 4, 1997, the NBI stated that NBA Properes, Inc., is a foreign co corp rpora orao on n or orga gani nize zed d un unde derr the the law lawss of the the United Uni ted States States of America America,, and is the regist registere ered d ow owne nerr of NBA trade tradema marks rks and and na name mess of NB NBA A basket bas ketbal balll teams teams such such as "USA "USA Basket Basketbal ball,"e l,"etc. tc. These The se names names are used used on hosier hosiery, y, footwe footwear, ar, tshirts shirts,, swe sweats atshirt hirts, s, tan tank k tops, tops, paj pajama amas, s, sport sport shirts shirts,, and other other gar garmen mentt produc products, ts, which which are allegedly registered with the Bureau of Patents, Trademarks and Technology Transfer. The Report further stated that during the invesgaon, it was dis discov covere ered d that that pe peon oners ers are eng engage aged d in the manufac man ufactur ture, e, pri prinn nng, g, sale, sale, and dis distri tribu buon on of  counte cou nterfei rfeitt "NBA" "NBA" garmen garmentt pro produc ducts. ts. Hence, Hence, it recommended peoners’ prosecuon for unfair compeon under Arcle 189 of the Revised Penal Code. In a Special Power of Aorney dated October 7, 1997, Rick Welts, as President of NBA Properes, In Inc. c.,, cons const tut uted ed the the law r rm m of Orte Ortega ga,, De Dell Casllo, Bacorro, Odulio, Calma & Carbonell, as the company’s aorney-in-fact, and to act for and on

I. THAT THE FACTS CHARGED DO NOT CONSTITUTE AN OFFENSE

In support of the foregoing, peoners argue that the scal should have dismissed Welts’s complaint because under the rules, the complaint must be sworn to before the prosecutor and the copy on record appears to be only a fax transmial. They al alsso co cont nten end d th that at co comp mpla lain inan antt is a fo fore reig ign n corporaon corpor aon not doing busines businesss in the Philippine Philippines, s, and cannot be protected by Philippine patent laws since it is not a registered patentee. Peoners aver that they have been using the business name "ALLANDALE "ALLA NDALE SPORTSLINE, SPORTSLINE, INC." since 1972, and their designs are original and do not appear to be similar sim ilar to compla complaina inant’ nt’s, s, and they do not use complainant’s logo or design. The trial prosecutor of the RTC-Manila (Branch 1), Jaime M. Guray, led his Comment/Opposion to the the mo moo on n to qu quas ash, h, stan stang g that that he has the origi rigina nall co copy py of the the co com mplai plaint nt,, and that that complainant has an aorney-in-fact to represent it. Prosecutor Guray also contended that the State is entled to prosecute the oense even without the parcipaon of the private oended party, as the crime charged is a public crime. ISSUE ISSUES: S: 1. WHETHER WHETH A FOREIGN FOREI GNTOCORPORATION CORPOR ATION NOT ENGAGED ANDER LICENSE (sic) DO BUSINESS

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IN THE PHILIPPINES MAY MAINTAIN A CAUSE OF ACTION FOR UNFAIR COMPETITION. 2. WH WHE ETHER AN OFFICER OF A FOREIGN CORPORATION MAY ACT IN BEHALF OF A CORPORATION CORPOR ATION WITHOUT AUTHO AUTHORITY RITY FROM ITS BOARD OF DIRECTORS. 3. WHETH WHETHER ER A FO FORE REIG IGN N CO CORP RPOR ORAT ATIO ION N NO NOT T

e) That more than one oense is charged except in those tho se cas cases es in which which exisn exisng g law lawss pre prescr scribe ibe a single punishment for various oenses; f) That That the crimi criminal nal acon or liabili liability ty has been exnguished; g) That it contains averments which, if true, would constute a legal excuse or juscaon; and

ENGAGED IN BUSINESS AND WHOSE EMBLEM IT SOUGHT TO PROTECT IS NOT IN ACTUAL USE IS ENTITLED TO THE PROTECTION OF THE PHILIPPINE LAW.

h) That the accused has been previously convicted or in jeopardy of being convicted, or acquied of  the oense charged.

4. WHETHER THE RESPONDENT REGIONAL TRIAL COURT CORRECTLY ASSUMED JURISDICTION OVER THE CASE AND THE PERSONS OF THE ACCUSED.

Nowhere in the foregoing provision is there any menon of the defect in the complaint led before the scal and the complainant’s capacity to sue as grounds for a moon to quash.

5. WHETHER THE COURT OF APPEALS COMMITTED GRAVE GRA VE ABU ABUSE SE OF DIS DISCRE CRETIO TION N AMOUNT AMOUNTING ING TO LACK OF JURISDICTION WHEN IT DISMISSED THE PETITION. HELD: The peon must be denied. WHEREFORE, the peon is DENIED for lack of merit. QUASHAL OF INFORMATION: The Supreme Court fo foun und d any any ju jus sc cao aon n for for the the qu quas asha hall of the the Informaon led against peoners. For one, while peoners raise in their moon to quash the grounds that the facts charged do not constute an oense and that the trial court has no jur jurisd isdic icon on over over the oens oense e charge charged d or the person of the accused, their arguments focused on an alleged defect in the complaint led before the s sca cal, l, comp compla laiina nant nt’s ’s ca capa paci city ty to sue an and d peon pe oners ers’’ exculpa exculpatory tory defens defenses es agains againstt the crime of unfair compeon. Secon 3, Rule 117 of the 1985 Rules of Criminal Procedure, which was then in force at the me the alleged criminal acts were commied, enumerates the grounds for quashing an informaon, to wit: a) That the facts charged do not constute an oense; b) That the court trying the case has no jurisdicon overr the oens ove oense e charge charged d or the per person son of the accused; c) That the ocer who led the informaon had no authority to do so; d) That it does not conform substanally to the prescribed form;

WANT OF OAT WANT OATH: H: For another, another, under Secon Secon 3, Rule 112 of the 1985 Rules of Criminal Criminal Procedure, a complaint is substanally sucient if it states the known address of the respondent, it is accompanied accom panied by compl complainant’ ainant’ss adavit and his witnesses witnes ses and suppor supporng ng doc docume uments nts,, and the adavit ad avitss are sworn to bef before ore any scal, scal, state prosecutor prose cutor or government government ocial autho authorized rized to admini inister oath, or in their absence or unavai una vailabi lability lity,, a not notary ary public public who must must cerfy cerfy that he personally examined the aants and that he is sased that they voluntarily executed and understood under stood their adavits. All these have been du duly ly sas sase ed d in th the e co comp mpla lain intt led led befo before re Prosecuon Prose cuon Aorney Aileen Marie S. Guerrez. It must be noted that even the absence of an oath in the the co comp mpla laint int do does es no nott nece necess ssari arily ly rend render er it invalid. Want of oath is a mere defect of form, which does not aect the substanal substanal rights of the defendant on the merits. PRES PRESUM UMPT PTIO ION N OF REGU REGULA LARI RITY TY:: In this this ca case se,, Welts lts’s Complai laint-Adavit contain ains an acknowledgement by Notary Public Nicole Brown of the State of New York that the same has been subscribed and sworn to before her on February 12, 1998, 1998, duly duly authen authenca cated ted by the Phi Philipp lippine ine Co Cons nsul ulat ate. e. Wh Whil ile e th the e co copy py on reco record rd of the the co comp mpla lain intt-a ada davi vitt ap appe pear arss to be me mere rely ly a photocopy thereof, Prosecuon Aorney Guerrez stated stated tha thatt com complai plainan nant’s t’s rep repres resent entave ave will will prese pre sent nt the aut authen hencat cated ed not notari arized zed orig origina inall in court, and Prosecutor Guray manifested that the original copy is already on hand. It is apt to state at this this poi point nt that that the prose prosecut cutor or enjoys enjoys the legal presumpon of regularity in the performance of 

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his dues and funcons, which in turn gives his report the presumpon of accuracy. CRIM CRIME E OF UNFA UNFAIR IR COMP COMPET ETIT ITIO ION, N, A PU PUBL BLIC IC CRIME: CRI ME: Mor More e imp import ortant antly, ly, the crime crime of Unfair Unfair Compeon punishable under Arcle 189 of the Re Revi vissed Pe Pena nall Co Code de is a pub publi licc crim crime. e. It is essenally an act against the State and it is the laer which principally stands as the injured party. The complaina complainant’ nt’ss capacit capacity y to sue in such such cas case e becomes immaterial. More important is the nature of the case which led to this peon. What preceded this peon for cerorari was a leer-complaint led before the NBI charging Hemandas with a criminal oense, i.e., violaon of Arcle 189 of the Revised Penal Code. If prosecuon follows aer the compleon of the preliminary invesgaon being conducted by the Special Prosecutor the informaon shall be in the name of the People of the Philippines and no longer the peoner which is only an aggrieved party since a criminal oense is essenally an act against the State. It is the laer which is principally the injured party although there is a private right vi viola olate ted. d. Peo Peone ner's r's ca capac pacit ity y to su sue e wo would uld become, therefore, of not much signicance in the main case. We cannot allow a possible violator of  our criminal statutes to escape prosecuon upon a far-fetched contenon that the aggrieved party or vicm of a crime has no standing to sue. In upholding the right of the peoner to maintain the the pr pres esen entt su suit it be befor fore e ou ourr court courtss for for un unfa fair ir compeon compe on or infrin infringeme gement nt of trademarks of a foreign corporaon, we are moreover recognizing our dues and the rights of foreign states under th the e Pari Pariss Conv Conven eno on n for for th the e Pr Prot otec eco on n of  Industrial Indus trial Property to which the Philip Philippines pines and France are pares. We are simply interpreng and enforcing a solemn internaonal commitment of  the Philippines embodied in a mullateral treaty to which we are a party and which we entered into because it is in our naonal interest to do so. KHO V. CA (CASE DIGEST. G.R. NO. 115758)

CASE DIG CASE DIGEST EST:: 429 Phi Phil. l. 140. SECON SECOND D DIVISI DIVISION ON [ G.R. No. 115758, March 19, 2002 ] ELIDAD C. KHO,, DOI KHO DOING NG BUS BUSINE INESS SS UNDER UNDER THE NAME AND STYLE OF KE KEC C COSMETICS LABORATORY, PE PETI TITI TION ONER ER,, VS VS.. HO HON. N. COUR COURT T OF APPE APPEAL ALS, S, SUMMERVILL SUMM ERVILLE E GENERA GENERALL MERCHANDISIN MERCHANDISING G AND COMPANY, AND ANG TIAM CHAY, RESPONDENTS. DE LEON, JR., J.:

FACTS: On December 20, 1991, peoner Elidad C. Kho led a complaint for injuncon and damages with with a pr pray aye er fo forr the the issu issuan ance ce of a writ writ of  preliminary injuncon, docketed as Civil Case No. Q-91-10926, against the respondents Summerville General Merchandising and Company (Summerville, for brevity) and Ang Tiam Chay.

The peoner’s complaint alleges that peoner, doing business under the name and style of KEC Cosmecs Laboratory, is the registered owner of  the copyrights Chin Chun Su and Oval Facial Cream Co Cont ntai aine ner/ r/Cas Case, e, as sh show own n by Cer Cerc cat ates es of  Copyright Registraon No. 0-1358 and No. 0-3678; that she also has patent rights on Chin Chun Su & Device Dev ice and Chi Chin n Chu Chun n Su for medic medicate ated d cre cream am aer purchasing the same from Quinn Cheng, the regist reg istere ered d own owner er the thereo reoff in the Sup Supple plemen mental tal Re Regi gist ster er of th the e Ph Phil ilip ippi pine ne Pa Pate tent nt O Oce ce on February 7, 1980 under Registraon Cercate No. 4529; that respondent Summerville adversed and sold peoner’s cream products under the brand name nam e Chin Chin Chu Chun n Su, in sim similar ilar container containerss that peoner uses, thereby misleading the public, and resulng in the decline in the peoner’s business sale saless and and inco income me;; and, and, that that the the resp respon onde dent ntss should be enjoined from allegedly infringing on the copyrights and patents of the peoner.

The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer and distributor of  Chin Chun Su products manufactured by Shun Yi Fact Factor ory y of Ta Taiw iwan an;; th that at th the e sa said id Ta Taiw iwan anes ese e manufacturin manuf acturing g company company authorized authorized Summ Summerville erville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Oce and other approp app ropria riate te govern governmen mental tal agencie agencies; s; that that KEC Cosmecs Laboratory of the peoner obtained the cop copyrig yrights hts throug through h mis misrep repres resent entao aon n and falsi falsicao caon; n; and, and, tha thatt the auth authorit ority y of Quinn Quinn Ch Chen eng, g, as assi sign gnee ee of th the e pate patent nt regi regist stra rao on n cercate, cerc ate, to distri distribute bute and market Chin Chun Su pr prod oduc ucts ts in the the Phili Philipp ppin ines es ha had d alrea already dy been been terminated by the said Taiwanese Manufacturing Company.

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Aer due heari rin ng on the applicao aon for preliminary injuncon, the trial court granted the same in an Order dated February 10, 1992. Moon for reconsideraon, denied.

On June 3, 1994, the Court of Appeals prom romulga ulgate ted d a Reso Resolluo uon[ n[8] 8] deny denyin ing g the the peoner’s peo ner’s moons for reconsidera reconsideraon on and for contempt of court in CA-G.R. SP No. 27803.

On April 24, 1992, the respondents led a peon for cerorari with the Court of Appeals, docketed

The peoner faults the appellate court for not dismissing the peon on the ground of violaon

as CA-G CA-G.R .R.. SP No No.. 27 2780 803, 3, prayi raying ng for for the the null nulli ica cao on n of th the e sa said id writ writ of prel prelim imin inar ary y in inju junc nco on n is issu sued ed by the the trial trial court court.. A Aer er the the respondents led their reply and almost a month aerr pe ae peon oner er sub submi mied ed her com commen ment, t, or on August 14 1992, the laer moved to dismiss the peon pe on for vio violao laon n of Suprem Supreme e Cou Court rt Circ Circula ularr No. 28-91, a circular prohibing forum shopping. According to the peoner, the respondents did not state the docket number of the civil case in the capon of their peon and, more signicantly, they did not include therein a cercate of nonforum shopping. shopping. The responden respondents ts oppos opposed ed the peon and submied to the appellate court a

of Suprem Supreme e Cour Courtt Circula Circularr No. 28-91. Also, Also, the pe peon oner er co cont nten ends ds that that the the appe appella llate te co cour urtt violated Secon 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on her moon for reconsideraon within ninety (9 (90) 0) da days ys fr from om th the e me me it is su subm bmi ied ed fo forr resoluon. The appellate court ruled only aer the lapse of three hundred y-four (354) days, or on June 3, 1994. In delaying the resoluon thereof, the appellate court denied the peoner’s right to seek the mely appellate relief. Finally, peoner describes as arbitrary the denial of her moons for contempt of court against the respondents.

ce cer rc cat ate e peon.

of nonnon-fo foru rum m

shopp hoppin ing g

for for

thei theirr

On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of  the respondents. The peoner led a moon for reconsideraon. This she followed with several several moon moonss to declar declare e respondents in contempt of court for publishing ad adve ver rse seme ment ntss no nof fyi ying ng th the e pu publ blic ic of th the e pr prom omulg ulga aon on of the the assa assaile iled d de deci cisi sion on of the the appellate court and stang that genuine Chin Chun Su pr prod oduc ucts ts coul could d be ob obta tain ine ed on only ly from from Summerville General Merchandising and Co. In the meanme, the trial court went on to hear peon pe oner’ er’ss compla complaint int for nal inj injunc uncon on and damage dam ages. s. On Octobe Octoberr 22, 1993, the trial court court rendered a Decision[7] barring the peoner from using the trademark Chin Chun Su and upholding the right of the respondents to use the same, but recognizing recog nizing the copyright of the peoner over the oval shaped container of her beauty cream. The trial court did not award damages and costs to any of the pares but to their respec respecve ve counsels were were awar awarde ded d Se Seve vent nty-F y-Five ive Th Thou ousa sand nd Peso Pesoss (P75, P75,00 000. 0.00 00)) ea eacch as a aor orne ney’ y’ss fee ees. s. The peoner duly appealed the said decision to the Court of Appeals.

ISSUE: [1] Would the copyright and patent over the name and container of a beauty cream product entle en tle the reg regist istrant rant to the use use and own owners ership hip over the same to the exclusion of others? [2] Should an injuncve writ (plus damages) issue? HELD HELD:: We rule rule in fa favo vorr of th the e resp respon onde dent nts. s. WHEREFORE, the peon is DENIED. The Decision and Resoluon of the Court of Appeals dated May 24 24,, 1993 1993 an and d Ju June ne 3, 19 1994, 94, resp respec ecve vely ly,, are here hereby by AFFI AFFIRM RMED ED.. Wi With th co cost stss ag agai ains nstt th the e peoner. Trademark, Tradem ark, copyrig copyright ht and patent patentss are di diere erent nt in inte tell llec ectu tual al prop proper erty ty righ rights ts that that ca cann nnot ot be interchanged with one another. A trademark is any vis visibl ible e sign sign cap capable able of disng disnguis uishin hing g the goo goods ds (tra (trade dema mark) rk) or se serv rvic ices es (s (ser ervic vice e mark) mark) of an enterprise enter prise and shall includ include e a stamp stamped ed or marke marked d container of goods.[12] In relaon thereto, a trade name means the name or designaon idenfying or disnguishi disnguishing ng an enter enterprise. prise.[13] [13] Meanwhile, Meanwhile, the scope of a copyright is conned to literary and ars arsc c wo works rks wh whic ich h ar are e or orig igin inal al intel intelle lect ctua uall crea creao ons ns in th the e lite litera rary ry an and d ar ars sc c doma domain in protected from the moment of their creaon.[14] Patentable invenons, on the other hand, refer to any technical soluon of a problem in any eld of  human acvity which is new, involves an invenve step and is industrially applicable.[15]

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Peoner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark ina inasmu smuch ch as the same falls falls squ square arely ly wit within hin its denion. In order to be entled to exclusively use the same in the sale of the beauty cream product, the user must suciently prove that she registered

Pearl & Dea Pearl Dean n (Ph (Phil. il.), ), Incorp Incorpora orated ted v. Shoema Shoemart, rt, Incor ncorpo pora rate ted, d, and and No Nort rth h Edsa Edsa Mar arke ke ng, ng, Incorporated (CASE DIGEST)

or used it before anybody else did. The peoner’s copyright and patent registraon of the name and container would not guarantee her the right to the exclusive use of the same for the reason that they are are not not app appro ropr pria iate te subj subjec ects ts of the the said said int intelle ellectu ctual al rig rights hts.. Con Conseq sequen uently, tly, a prelim prelimina inary ry injuncon order cannot be issued for the reason that the peoner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

Infringement, Patents

FINAL INJUNC FINAL INJUNCTIO TION N AND DAMAGE DAMAGES: S: We cannot cannot likewise overlook the decision of the trial court in the case for nal inj injunc uncon on and damage damages. s. The disposive poron of said decision held that the peoner does not have trademark rights on the name and container of the beauty cream product. The said decision on the merits of the trial court rendered the issuance of the writ of a preliminary injuncon injunc on moot and academic academic notwit notwithstand hstanding ing the fact that the same has been appealed in the Court of Appeals. [10] [10] Se Sec con on 4, Rule Rule 58, Revi Revise sed d Rule Ruless of Civil Civil Procedure. [11] Sy v. Court of Appeals, 313 SCRA 328 (1999). [12] Secon 121.1, Republic Act No. 8293. [13] Secon 121.3, Republic Act. No. 8293.

GR No. 148222 15 August 2003

TOPICS TOP ICS:: Intell Intellect ectual ual Pro Propert perty y Law, Law, Cop Copyrig yright, ht,

FACTS: Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture manuf acture of adversing adversing displa display y units simply referred to as light boxes. PDI was able to secure a Ce Cer rc cat ate e of Co Copy pyri rig ght Re Regi gist stra rao on, n, the the adversing light boxes were marketed under the trademark “Poster Ads”. In 1985, PDI negoated negoated with defe defendant-a ndant-appellan ppellantt Shoemart, Inc. (SMI) for the lease and installaon of the light boxes in certain SM Maka and SM Cubao. PDI submied for signature the contracts covering both stores, but only the contract for SM Maka, however, was returned signed. Eventually, SMI’s SMI ’s informe informed d PDI that it was resci rescindi nding ng the contract for SM Maka due to non-performance of  the terms thereof. Years later, PDI found out that exact copies of its light boxes were installed at dierent SM stores. It was further disco discovered vered that SMI’s sister company North Edsa Markeng Inc. (NEMI), sells adversing space spa ce in lig lighte hted d displa display y uni units ts locate located d in SMI SMI’s ’s dierent branches. PDI sent a leer to both SMI and NEMI enjoining them them to ce ceas ase e us usin ing g the the su subj bjec ectt ligh lightt bo boxe xes, s, remove the same from SMI’s establishments and to disconnue the use of the trademark “Poster Ads,” Ads ,” as well well as the payme payment nt of compen compensat satory ory damages.

[14] Secon 172, Republic Act No. 8293. [15] Secon 21, Republic Act No. 8293. [16] 278 SCRA 498, 506 quong Solid Homes, Inc. v. LA Vista, G.R. No. 71150 dated April 20, 1988 (unpublished). [17] De Roma v. Court of Appeals, 152 SCRA 205, 209 (1987). Pearl & Dean v. Shoemart (CASE DIGEST)

Claiming that both SMI and NEMI failed to meet all its its dema demand nds, s, PD PDII led led this this inst instan antt ca case se fo forr infringeme infrin gement nt of tradem trademark ark and copyright, unfair compeon and damages. SMI maintained that it independently developed its its pos poster ter pan anel elss us usin ing g co com mmon only ly know known n techni tec hnique quess and avai availab lable le tec techno hnolog logy, y, with without out noce no ce of or refere reference nce to PDI’s PDI’s copyri copyright ght.. SMI noted that the registraon of the mark “Poster Ads” was only for staoneries such as leerheads, envelopes, and the like. Besides, according to SMI, the word “Poster Ads” is a generic term which

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cannot be appropriated as a trademark, and, as such, registraon of such mark is invalid. On this basis, SMI, aside from praying for the dismissal of  the cas case, e, als also o counte countercl rclaime aimed d for moral, moral, actual actual and exemplary damages and for the cancellaon of PDI’s Cercaon of Copyright Registraon, and Cercate of Trademark Registraon. The RTC of Maka City decided in favour of PDI, nding SMI and NEMI jointly and severally liable for infringement of copyright and infringement of  trademark On ap appe peal al,, howe howeve ver, r, th the e Co Cour urtt of Appe Appeal alss reversed the trial court. ISSUES: Whethe Whet herr th the e th the e li ligh ghtt bo boxx depi depict cted ed in such such engineering drawings ipso facto also protected by such copyright.

The Court reiterated the ruling in the case of Kho vs vs.. Co Court urt of Ap Appe peals als,, dier dieren ena an ng g pa pate tent nts, s, copyrights and trademarks, namely: A tr trad adem emar ark k is any any visi visibl ble e sign sign ca capa pabl ble e of  disnguishi disng uishing ng the goods (tradema (trademark) rk) or services services (service (servi ce mark) of an enterprise enterprise and shall includ include ea stamped or marked container of goods. In relaon th ther eret eto, o, a tr trad ade e na name me me mean anss th the e name name or desi design gna aon on iden idenfy fyin ing g or disng disngui uish shin ing g an enterprise. Meanwhile, the scope of a copyright is conned to literary and arsc works which are original origin al intell intellectual ectual creaons in the literary and arsc ar sc domain domain pro protec tected ted fro from m the mom moment ent of  their creaon. Patentable invenons, on the other hand, refer to any technical soluon of a problem in an any y e eld ld of huma human n ac acv vit ity y whic which h is new, new, invo involv lves es an inve inven nve ve step step and and is indu indust stri riall ally y applicable. ON THE ISSUE OF PATENT INFRINGEMENT

Whether there was a patent infringement. infri ngement. Whetherr the owner Whethe owner of a regist registere ered d tradema trademark rk legally prevent others from using such trademark if  it is a mere abbreviaon of a term descripve of  his goods, services or business? RULING: ON THE ISSUE OF COPYRIGHT INFRINGEMENT Th The e Co Cour urtt of Ap Appe peals als co corre rrect ctly ly he held ld that that the the copyright was limited to the drawings alone and not to the light box itself. Althou Although gh peon peoner’ er’ss cop copyri yright ght cer cerc cate ate was en ent tle led d “A “Adv dver ers sin ing g Dis Display play Unit Units” s” (whi (which ch depicted the box-type electrical devices), its claim

Peoner Peon er nev never er secure secured d a patent patent for the lig light ht boxes. It therefore acquired no patent rights which and and co coul uld d not not lega legall lly y pr prev even entt an anyo yone ne fr from om manu ma nufa fact ctur urin ing g or co com mmerc mercia iall lly y using sing the the contrapon. To be able to eecvely and legally preclude others from copying and prong from the invenon, a patent is a primordial requirement. No patent, no protecon. ON THE ISSUE OF TRADEMARK INFRINGEMENT On the the issu issue e of tr trad adem emar ark k infri infring ngem emen ent, t, the the peon pe oner’ er’ss pre presid sident ent said said “Po “Poste sterr Ads Ads”” was a contracon of “poster adversing.” P & D was able to secure a trademark cercate for it, but one where the goods specied were “staoneries such

of copyright infringement cannot be sustained. Copyright, in the strict sense of the term, is purely a statutory right. Accordingly, it can cover only the works falling within the statutory enumeraon or descripon.

as wsle lee lelee erh rhea eads ds,,on en enve velo pes, s,mie ca calli lling cards rds an news ne ers rs.” .”Pe Pe oner erlope ad admi ed d ngit ca did di d and not nodt commercially engage in or market these goods. On the the co cont ntrar rary, y, it deal dealtt in elec electr tric icall ally y op opera erate ted d backlit adversing units which, however, were not at all specied in the trademark cercate.

Even as we nd that P & D indeed owned a valid copyright, the same could have referred only to the techni technical cal dra drawin wings gs within within the catego category ry of  “pictorial illustraons.” It could not have possibly stretched out to include the underlying light box. The light box was not a literary or arsc piece which could be copyrighted under the copyright law.

Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P & D to secure a trademark registraon for specic use on the light boxes meant that there could not have been any trad rademark infrin ringement since registraon was an essenal element thereof. ON THE ISSUE OF UNFAIR COMPETITION There was no evidence that P & D’s use of “Poster Ads” was disncve or well-known. As noted by

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the Court of Appeals, peoner’s expert witnesses himself had tesed that ” ‘Poster Ads’ was too generic a name. So it was dicult to idenfy it with any company, honestly speaking.”This crucial admi admiss ssio ion n that that “P “Pos oste terr Ad Adss” coul could d not not be associated with P & D showed that, in the mind of  the public, public, the goods goods and ser servic vices es carr carryin ying g the trademark “Poster Ads” could not be disnguished from the goods and services of other enes.

“Poster Ads” was generic and incapable of being used as a trademark because it was used in the e eld ld of post poster er adve adver rsi sing ng,, the the very very bu busi sine ness ss engaged engag ed in by peo peoner. ner. “Secondar “Secondary y meani meaning” ng” means that a word or phrase originally incapable of exc exclus lusive ive approp appropria riaon on with refere reference nce to an arcle in the market might nevertheless have been used used fo forr so lo long ng an and d so excl exclus usiv ivel ely y by one one producer with reference to his arcle that, in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the arcle was his property. The peon is DENIED La Che Chemis mise e Lac Lacoste oste v. Fer Fernan nandez dez (G.R. No. L63796-97)

Facts: Pe Pe on oner er La Chem Chemis ise e La Laco cost ste e is a fore foreig ign n corp corpor ora ao on an and d th the e ac actu tual al ow owne nerr of the the tradem trademark arkss ‘La ‘Lacos coste, te,’’ ‘Chemi ‘Chemise se Lac Lacost oste,’ e,’ and ‘Cr ‘Croco ocodil dile e Dev Device ice’’ used used on clo clothi thing ng and other other goods that are sold in many parts of the world. Herein Her ein res respon ponden dentt Hemadas Hemadas & Co., Co., a domes domescc rm, applied and was granted registraon of the mark ‘Chemise Lacoste and Crocodile Device’ for its garment products. Someme later, peoner applied for the registraon of its mark ‘Crocodile Device’ and ‘Lacoste’ but was opposed by herein re resp spon onde dent nt.. La Late ter, r, pe peon oner er led led a le lee errcompla com plaint int of unfair unfair compe compeon on before before the NBI which led to the issuance of search warrants and the seizur seizure e of goods goods of respon responden dentt Hem Hemadas adas.. Respondent moved to quash the warrants alleging that its trademark was dierent from peoner’s trademark. tradem ark. Responde Respondent nt court ruled to set aside the warrants and to return the seized goods.

Whether or not peoner’s trademark is a wellknown mark protected under the Par ariis Convenon. Ruling: YES. In upholding the right of the peoner to maintain the the pr pres esen entt suit suit befo before re ou ourr co cour urts ts fo forr un unfai fairr compeon or infringement of trademarks of a foreign corporaon, we are moreover recognizing our dues and the rights of foreign states under th the e Pa Pari riss Co Conv nven eno on n fo forr th the e Pr Prot otec eco on n of  Industrial Indus trial Property to which the Philippines and France are pares. Pursuant to this obligaon, the Ministry of Trade issued a memorandum addressed to the Director of the Patents Oce direcng the laer to reject all pending applicaons for Philippine registraon of signature and other world famous trademarks by applica applicants nts oth other er than than its ori origin ginal al own owners ers or users. The conicng claims over internaonally known trademarks involve such name brands as Lacoste, et. al. It is further directed that, in cases where warranted, Philippine registrants registrants of such tradema trad emarks rks sho should uld be asked asked to surren surrender der the their ir cercates of registraon, if any, to avoid suits for damages and other legal acon by the trademarks’ foreign or local owners or original users. The The Inte Interm rmed ediat iate e Ap Appe pell llate ate Co Court urt,, in the the La Chemise Lacoste S.A. v. Sadhwani decision which we cite with approval sustained the power of the Mini Minist ster er of Tra Trade de to issu issue e the the im imple pleme men nng ng memorandum memo randum and declared declared La Chemi Chemise se Lacos Lacoste te S.A. the owner of the disputed trademark, stang: “In the case at bar, the Minister of Trade, as ‘the competent authorit rity of the country of  regist reg istrao raon,’ n,’ has fou found nd that amo among ng other other wellwellknow known n tr trad adem emark arkss ‘Lac ‘Lacos oste te’’ is the the su subj bjec ectt of  conicng claims. For this reason, applicaons for its its regi regist stra rao on n must must be reje reject cted ed or refu refuse sed, d, purs rsu uant to the treaty obligao on n of the Philippines.”

Issue:

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