Digest: Pharmawealth vs. Pfizer, Great White Shark Ent vs. Caralde

Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17  November 2010 

Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under the brand name “Unasyn.” Sometime in January and February 2003, Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam  Ampicillin to to several several hospitals hospitals without without the Pfizer’s Pfizer’s consent. consent. Pfizer Pfizer then demanded demanded that the hospitals cease and desist from accepting such bids. Pfizer also demanded that Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands. Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and forfeiture of the infringing products. A preliminary injunction effective for  90 days was granted by the IPO’s Bureau of Legal Affairs (IPO -BLA). Upon expiration, a motion for extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for  Certiorari in the Court of Appeals (CA) assailing the denial. While the case was pending in the CA, Pfizer filed with the Regional Trial Court of  Makati (RTC) a complaint for infringement and unfair competition, with a prayer for  injunction. The RTC issued a temporary restraining order, and then a preliminary injunction. Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping. Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted to the Director General. The CA denied all the motions. Pharmawealth filed a petition for review on Certiorari with the Supreme Court. Issues: a) Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed?

b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of  the Intellectual Property Office?

Held: a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that "[the] patentee shall have the exclusive right to make, use and sell the patented machine, article or product, and to use the patented process for the purpose of  industry or commerce, throughout the territory of the Philippines for the term of the  patent ; and such making, using, or selling by any person without the authorization of the patentee constitutes infringement of the patent." Clearly, the patentee’s exc lusive rights exist only during the term of the patent. Since the patent was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer  possessed the exclusive right to make, use, and sell the products covered by their  patent. The CA was wrong in issuing a temporary restraining order after the cut-off date. b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for  certiorari to the CA is the proper remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

GREAT WHITE SHARK ENTERPRISES, INC vs. DANILO M. CARALDE, JR. G.R. No. 192294, November 21, 2012 Facts On July 31, 2002, Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark application seeking to register the mark "SHARK & LOGO" for his manufactured goods under Class 25, such as slippers, shoes and sandals. Petitioner Great White Shark Enterprises, Inc. (Great White Shark), a foreign corporation, opposed the application claiming to be the owner of the mark consisting of  a representation of a shark in color, known as "GREG NORMAN LOGO" (associated with apparel worn and promoted by Australian golfer Greg Norman). It alleged that, being a world famous mark which is pending registration before the BLA since February 19, 2002, the confusing similarity between the two (2) marks is likely to deceive or  confuse the purchasing public into believing that Caralde's goods are produced by or  originated from it, or are under its sponsorship, to its damage and prejudice. Caralde explained that the subject marks are distinctively different from one another and easily distinguishable. When compared, the only similarity in the marks is in the word "shark" alone, differing in other factors such as appearance, style, shape, size, format, color, ideas counted by marks, and even in the goods carried by the parties. Pending the inter partes proceedings, Great White Shark’s trademark application was granted The BLA Director rejected Caralde's application, finding that the two competing marks are at least strikingly similar to each another. However, found no merit in Great White Shark's claim that its mark was famous and well-known for insufficiency of evidence On appeal, the IPO Director General affirmed 9 the final rejection of Caralde's application, ruling that the competing marks are indeed confusingly similar. However, on petition for review, the CA reversed and set aside the foregoing Decision and directed the IPO to grant Caralde's application for registration of the mark "SHARK & LOGO." It found no confusing similarity between the subject marks and observed that Caralde's mark is more fanciful and colorful, and contains several elements which are easily distinguishable from that of the Great White Shark. Issue: Whether or not petitioners mark is confusingly similar to respondents Held:

No. In determining similarity and likelihood of confusion, case law has developed the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the ordinary purchaser, and gives more consideration to 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 contrast, the Holistic or Totality Test considers the entirety of the marks as applied to the products, including the labels and packaging, and focuses not only on the predominant words but also on the other features appearing on both labels to determine whether one is confusingly similar to the other as to mislead the ordinary purchaser. The "ordinary purchaser" refers to one "accustomed to buy, and therefore to some extent familiar with, the goods in question." Irrespective of both tests, the Court finds no confusing similarity between the subject marks. While both marks use the shape of a shark, the Court noted distinct visual and aural differences between them. In Great White Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with the use of green, yellow, blue and red lines/strokes. In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in letters outlined in the form of a shark with the letter "S" forming the head, the letter "H" forming the fins, the letters "A" and "R" forming the body, and the letter "K" forming the tail.