LIP Digest Compiled

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Copyright 1. G.R. G.R. No. No. L-364 L-36402 02.. March March 16, 16, 198 1987.]  7.]  FILIPI FILIPINO NO SOCIE SOCIETY TY OF COMP COMPOSE OSERS, RS, AUTHOR AUTHORS S AND AND PUBLI PUBLISH SHER ERS, S, INC., INC., plaint plaintiff iff-  -  appellant, vs. BENJAMIN TAN, defendant-appellee. Plaintiff-appellant: *is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You." *filed a complaint with the lower court for infringement of copyright against defendant-appellee for allowing the playing in defendant-appellee's restaurant of said songs copyrighted in the name of the former. Defendant-appellee, *countered that the complaint states no cause of action. While not denying the playing of said copyrighted compositions in his establishment, appellee maintains that the mere singing and play playing ing of song songs s and and popu popular lar tunes tunes even even if they they are copyri copyrigh ghted ted do not not const constitu itute te an infringement under the provisions of Section 3 of the Copyright Law. ISSUE: ISSUE: whether whether or not the playing playing and signing signing of musical musical composition compositions s which which have been copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of  the defenda defendant-a nt-appe ppellee llee constitut constitute e a public public performa performance nce for profit profit within within the meaning meaning and contemplation of the Copyright Law of the Philippines; and assuming that there were indeed public performances for profit, whether or not appellee can be held liable therefor. Held: NO. It has been held that "The playing of music in dine and dance establishment which was paid for by the public in purchases of food and drink constituted "performance for profit" with within in a Copy Copyri righ ghtt Law. Law."" Thus Thus,, it has has been been expl explai aine ned d that that whil while e it is poss possib ible le in such such establishments establishments for the patrons to purchase their food and drinks and at the same time dance to the music of the orchestra, the music is furnished and used by the orchestra for the purpose of  inducing the public to patronize the establishment and pay for the entertainment in the purchase of food and drinks. The defendant conducts his place of business for profit, and it is public; and the music is performed for profit. Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested musical compositions waived their right in favor  of the general public when they allowed their intellectual creations to become property of the public domain before applying for the corresponding copyrights for the same is correct. The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere, elsewhere, failure of  which renders such creation public property." Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted.Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law.

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 Atty. Rodriguez’ Rodriguez’ Dissent: Dissent: Isn’t Copyright Copyright is protected protected from from the moment moment of creation? creation?

2.

G.R. No. 115758. March 19, 2002.]  ELID ELIDAD AD C. KHO, KHO, doin doing g busi busine ness ss unde underr the the name name and and styl style e of KEC KEC COSM COSMET ETIC ICS  S  LABORATO LABORATORY, RY, petitione petitioner, r, vs. HON. COURT COURT OF APPEALS APPEALS,, SUMMERV SUMMERVILLE ILLE GENERA GENERAL L MERCHANDISING and COMPANY, and ANG TIAM CRAY, respondents. Petitioner complaint alleges: *that petitioner, doing business under the name and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; *that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529; *that respondent Summerville advertised and sold petitioner’s cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and and result resultin ing g in the decli decline ne in the the petit petition ioner’ er’s s busin business ess sales sales and and income income;; and, and, that that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner. Respondents allege: *Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; *that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate gove governm rnmen ental tal agen agencie cies; s; that that KEC KEC Cosme Cosmetic tics s Labo Laborat ratory ory of the the petit petition ioner er obtai obtaine ned d the copyrights through misrepresentation misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. ISSUE: WON KHO is protected under the law. Held: NO. 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. Petitioner 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 inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee guarantee her the right to the exclusive

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 Atty. Rodriguez’ Rodriguez’ Dissent: Dissent: Isn’t Copyright Copyright is protected protected from from the moment moment of creation? creation?

2.

G.R. No. 115758. March 19, 2002.]  ELID ELIDAD AD C. KHO, KHO, doin doing g busi busine ness ss unde underr the the name name and and styl style e of KEC KEC COSM COSMET ETIC ICS  S  LABORATO LABORATORY, RY, petitione petitioner, r, vs. HON. COURT COURT OF APPEALS APPEALS,, SUMMERV SUMMERVILLE ILLE GENERA GENERAL L MERCHANDISING and COMPANY, and ANG TIAM CRAY, respondents. Petitioner complaint alleges: *that petitioner, doing business under the name and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; *that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529; *that respondent Summerville advertised and sold petitioner’s cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and and result resultin ing g in the decli decline ne in the the petit petition ioner’ er’s s busin business ess sales sales and and income income;; and, and, that that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner. Respondents allege: *Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; *that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate gove governm rnmen ental tal agen agencie cies; s; that that KEC KEC Cosme Cosmetic tics s Labo Laborat ratory ory of the the petit petition ioner er obtai obtaine ned d the copyrights through misrepresentation misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. ISSUE: WON KHO is protected under the law. Held: NO. 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. Petitioner 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 inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee guarantee her the right to the exclusive

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use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner 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.

[G.R. No. 76193. November 9, 1989.]  UNITE UNITED D FEATU FEATURE RE SYND SYNDICA ICATE, TE, INC., INC., petit petition ioner er,, vs. vs. MUNS MUNSING INGWEA WEAR R CREATI CREATION  ON  MANUFACTURING COMPANY, respondent. 3.

Petitioner’s claim: Petitioner is asking for the cancellation of the registration of trademark CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent MUNSINGWEAR, alleging that petitioner  is damaged by the registration of the trademark CHARLIE BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in the name of Munsingwear  Creation Manufacturing Manufacturing Co., Inc., on the following grounds: (1) that respondent was not entitled to the registration of the mark CHARLIE BROWN, & DEVICE at the time of application for  registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration, the copyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of the pictorial illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the present, used and reproduced the same to the exclusion of others; (4) that the respondentregistrant has no bona fide use of the trademark in commerce in the Philippines prior to its application for registration. Respondent’s claim: -It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's wear such as T-shirts, undershirts, undershirts, sweaters, brief and sandos, in class 25; whereas "CHARLIE BROWN" is used only by petit petition ioner er as chara characte cter, r, in a picto pictoria riall illus illustra tratio tion n used used in a comic comic strip strip appe appeari aring ng in newspap newspapers ers and magazine magazines. s. It has no tradema trademark rk significa significance nce and therefo therefore re respond respondententregistrant's use of "CHARLIE BROWN" & "DEVICE" is not in conflict with the petitioner's use of  "CHARLIE BROWN" -Relied on the ruling on October 2, 1984 in which the Director of the Philippine Patent Office rendered a decision in this case holding that a copyright registration like that of the name and likeness of CHARLIE BROWN may not provide a cause of action for the cancellation of a trademark registration. Issue:WHETHER Issue: WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO EXCESS OF JURISDICTION WHEN BY DISMISSING THE THE APPEA PPEAL L TO IT FROM FROM THE THE DECI DECISI SION ON OF THE THE DIRE DIREC CTOR TOR OF PATE PATENT NTS, S, IT KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO. 0342, WHICH WAS  AFFIRMED BY THIS HONORABLE HONORABLE SUPREME COURT TO THE EFFECT THAT A COPY COPYRIG RIGHTE HTED D CHARA CHARACTE CTER R MAY MAY NOT NOT BE APPR APPROP OPRIA RIATED TED AS A TRADE TRADEMA MARK RK BY  ANOTHER UNDER UNDER PRESIDENTIAL PRESIDENTIAL DECREE DECREE NO. 49. S.C. Ruling: The petitioner is impressed with merit.

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Since the name "CHARLIE BROWN" and its pictorial representation were covered by a copyright registration way back in 1950 the same are entitled to protection under PD No. 49, otherwise known as the "Decree on Intellectual Property".  Aside from its copyright copyright registration, registration, petitioner petitioner is also the the owner owner of several trademark trademark registrations and application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and copyright of petitioner United Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS featuring the "PEANUTS" characters "CHARLIE BROWN”. It is undeniable from the records that petitioner is the actual owner of said trademark due to its prior registration with the Patent's Office.

4.

G.R. Nos. L-76649-51. August 19, 1988.]  20TH 20TH CENTU CENTURY RY FOX FILM FILM CORPO CORPORAT RATION ION,, petit petition ioner, er, vs. vs. COURT COURT OF APPEA APPEALS LS,, EDUARDO M. BARRETO, RAUL SAGULLO and FORTUNE LEDESMA, respondents.

Petitioner’s claim: The petitioner maintains that the lower court issued the questioned search warrants after finding the existence of a probable cause justifying their issuance. According to the petitioner, the lower  court arrived at this conclusion on the basis of the depositions of applicant NBI's t wo witnesses which were taken through searching questions and answers by the lower court. Respondent’s claim: The respo respond nden entt posit posits s that that the three three quest question ioned ed search search warra warrants nts agai against nst the priva private te respondents should be lifeted on the ground that it acted on the application for the issuance of  the said search warrants and granted it on the misrepresentations of applicant NBI and its witnesses that infringement of copyright or a piracy of a particular film have been committed. They also maintained that 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 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. S.C. Ruling: 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.

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The application for search warrants was directed against video tape outlets which allegedly were engaged in the unauthorized sale and renting out of copyrighted films belonging to the petitioner pursuant to P.D. 49. 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

5. G.R. No. 131522. July 19, 1999.]  PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners, vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC., respondents. Petitioner’s contention: In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles being substantially familiar with the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed certain portions of their  book CET. The textual contents and illustrations of CET were literally reproduced in the book DEP. The plagiarism, incorporation and reproduction of particular portions of the book CET in the book DEP, without the authority or consent of petitioners, and the misrepresentations of  respondent Robles that the same was her original work and concept adversely affected and substantially diminished the sale of the petitioners' book and caused them actual damages by way of unrealized income. Respondent’s Contention: On November 28, 1988, respondent Robles filed her answer  , and denied the allegations of plagiarism and copying that petitioners claimed. Respondent stressed that (1) the book DEP is the product of her independent researches, studies and experiences, and was not a copy of any existing valid copyrighted book; (2) DEP followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the  Association of Philippine Colleges of Arts and Sciences (APCAS), so any similarity between the respondents book and that of the petitioners was due to the orientation of the authors to both works and standards and syllabus; and (3) the similarities may be due to the authors' exercise of the "right to fair use of copyrigthed materials, as guides." Respondent interposed a counterclaim for damages on the ground that bad faith and malice attended the filing of the complaint, because petitioner Habana was professionally jealous and the book DEP replaced CET as the official textbook of the graduate studies department of the Far Eastern University. ISSUE:

(1) whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, respondents committed no copyright infringement; (2) whether or not there was animus furandi on the part of respondent when they refused to withdraw the copies of CET from the market despite notice to withdraw the same; and (3) whether or not respondent Robles abused a writer's right to fair use, in violation of Section 11 of Presidential Decree No. 49 RULING: We believe 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.

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When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated. 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. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of  anything the sole right to do which is conferred by statute on the owner of the copyright. In the case at bar, there is no question that petitioners presented several pages of the books CET and DEP that more or less had the same contents. It may be correct that the books being grammar books may contain materials similar as to some technical contents with other grammar  books, such as the segment about the "Author Card". However, the numerous pages that the petitioners presented showing similarity in the style and the manner the books were presented and the identical examples can not pass as similarities merely because of technical consideration. The respondents claim that their similarity in style can be attributed to the fact that both of them were exposed to the APCAS syllabus and their respective academic experience, teaching approach and methodology are almost identical because they were of the same background. However, we believe that even if petitioners and respondent Robles were of the same background in terms of teaching experience and orientation, it is not an excuse for them to be identical even in examples contained in their books. The similarities in examples and material contents are so obviously present in this case. How can similar/identical examples not be considered as a mark of copying? We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwill bookstores the book DEP upon learning of petitioners' complaint while pharisaically denying petitioners' demand. It was further noted that when the book DEP was re-issued as a revised version, all the pages cited by petitioners to contain portion of their book College English for Today were eliminated. In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious effect". Here, the injury consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use did not acknowledged petitioners as her source. Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles committed. Petitioners' work as authors is the product of their long and assiduous

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research and for another to represent it as her own is injury enough. In copyrighting books the purpose is to give protection to the intellectual product of an author. This is precisely what the law on copyright protected, under Section 184.1 (b). Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author, if appearing on the work, are mentioned.

6.

G.R. No. 148222. August 15, 2003.]  PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, respondents. Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration over these illuminated display units. The advertising light boxes were marketed under the trademark “Poster Ads”. From 1981 to about 1988, Pearl and Dean employed the services of Metro Industrial Services to manufacture its advertising displays. Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricate its display units, offered to construct light boxes for Shoemart’s chain of  stores. SMI approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM malls. In the light of its discoveries, Pearl and Dean sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments. It also demanded the discontinued use of the trademark “Poster Ads,” and the payment to Pearl and Dean of compensatory damages in the amount of P20million. Upon receipt of the demand letter, SMI suspended the leasing of light boxes and NEMI took down its advertisements for “Poster Ads” from the lighted display units in SMI’s stores. Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean filed this instant case for infringement of trademark and copyright, unfair competition and damages. ISSUE: Whether the engineering or technical drawings of an advertising display unit (light box) are granted copyright protection (copyright certificate of registration), is the light box depicted in such engineering drawings ipso facto also protected by such copyright? HELD: NO. Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioner’s position was premised on its belief that its copyright over the engineering drawings extended ipso facto to the light boxes depicted or illustrated in said drawings First, petitioner’s application for a copyright certificate clearly stated that it was for a class “O” work under Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. Said Section 2 expressly enumerated the works subject to copyright: SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following works:

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xxx xxx

xxx

(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps; xxx xxx

xxx

 Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the box-type electrical devices), its claim of copyright infringement cannot be sustained. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or  description. P & D secured its copyright under the classification class “O” work. This being so, petitioner’s copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of “prints, pictorial illustrations, advertising copies, labels, tags and box wraps.” Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only to the technical drawings within the category of “pictorial illustrations.” It could not have possibly stretched out to include the underlying light box. The strict application 1[9] of the law’s enumeration in Section 2 prevents us from giving petitioner even a little leeway, that is, even if its copyright certificate was entitled “Advertising Display Units.” What the law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as “Advertising Display Units.” In fine, if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from P & D, then no doubt they would have been guilty of copyright infringement. But this was not the case. SMI’s and NEMI’s acts complained of by P & D were to have units similar  or identical to the light box illustrated in the technical drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out to different advertisers. Was this an infringement of  petitioner’s copyright over the technical drawings? We do not think so.

7.

[G.R. No. 110318. August 28, 1996.]  COLUMBIA PICTURES, INC., ORION PICTURES CORPORATION, PARAMOUNT  PICTURES CORPORATION, TWENTIETH CENTURY FOX FILM CORPORATION, UNITED  ARTISTS CORPORATION, UNIVERSAL CITY STUDIOS, INC., THE WALT DISNEY  COMPANY, and WARNER BROTHERS, INC., petitioners, vs. COURT OF APPEALS, SUNSHINE HOME VIDEO, INC. and DANILO A. PELINDARIO, respondents. Petitioner’s claim: -Petitioners, thru counsel lodged a formal complaint with the National Bureau of Investigation for  violation of PD No. 49, as amended, and sought its assistance in their anti-film piracy drive.  Acting on such request, NBI Senior Agent Lauro C. Reyes applied for a search warrant with the court a quo against Sunshine seeking the seizure, among others, of pirated video tapes of  1

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copyrighted films all of which were enumerated in a list attached to the application; and, television sets, video cassettes and/or laser disc recordings equipment and other machines and paraphernalia used or intended to be used in the unlawful exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the premises. -According to petitioners, after complying with what the law then required, the lower court determined that there was probable cause for the issuance of a search warrant. It is further  argued that any search warrant so issued in accordance with all applicable legal requirements is valid, for the lower court could not possibly have been expected to apply, as the basis for a finding of probable cause for the issuance of a search warrant in copyright infringement cases involving videograms, a pronouncement which was not existent at the time of such determination. Respondent’s claim: Private respondents predictably argue in support of the ruling of the Court of Appeals sustaining the quashal of the search warrant by the lower court on the strength of that 20th Century Fox  ruling which, they claim, goes into the very essence of probable cause. At the time of the issuance of the search warrant involved here, although the 20th Century Fox  case had not yet been decided, Section 2, Article III of the Constitution and Section 3, Rule 126 of the 1985 Rules on Criminal Procedure embodied the prevailing and governing law on the matter. The ruling in 20th Century Fox was merely an application of the law on probable cause. Hence, they posit that there was no law that was retrospectively applied, since the law had been there all along. To refrain from applying the 20th Century Fox ruling, which had supervened as a doctrine promulgated at the time of the resolution of private respondents' motion for reconsideration seeking the quashal of the search warrant for failure of the trial court to require presentation of  the master tapes prior to the issuance of the search warrant, would have constituted grave abuse of discretion. S.C. Ruling: There is merit in petitioners' impassioned and well-founded argumentation. 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. Judicial dicta should always be construed within the factual matrix of their parturition, otherwise a careless interpretation thereof could unfairly fault the writer with the vice of overstatement and the reader with the fallacy of undue generalization. It is evidently incorrect to suggest, as the ruling in 20th Century Fox  may appear to do, that in copyright infringement cases, the presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that, in the absence thereof, there can be no finding of probable cause for the issuance of a search warrant.

8.

G.R. No. 108946. January 28, 1999.]  FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO, respondents.

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Petitioner’s Claim: Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated January 28, 1971, of  Rhoda and Me, a dating game show aired from 1970 to 1977 claims that there is an infringement on the copyright of the show "RHODA AND ME" both in content and in the execution of the video presentation are established because respondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME" because of substantial similarities. As may [be] gleaned from the evidence on record, the substance of the television productions complainant's "RHODA AND ME" and Zosa's "IT'S 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 is the same. Any difference appear mere variations of the minor concepts. Respondent’s Claim: Both public and private respondents maintain that petitioners failed to establish the existence of  probable cause due to their failure to present the copyrighted master videotape of  Rhoda and  Me. They contend that petitioner BJPI's copyright covers only a specific episode of  Rhoda and  Me and that the formats or concepts of dating game shows are not covered by copyright protection under P.D. No. 49. Issue: Whether the format and mechanics of a TV show may be subject of a copyright. S.C. Ruling: To begin with the format of a show is not copyrightable. Section 2 of P.D. No. 49, otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright protection, does not include the format or mechanics of a television show. For this reason, the protection afforded by the law cannot be extended to cover them. 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. [G.R. No. L-75697. June 18, 1987.]  VALENTIN TIO doing business under the name and style of OMI ENTERPRISES,  petitioner, vs. VIDEOGRAM REGULATORY BOARD, MINISTER OF FINANCE, METRO  MANILA COMMISSION, CITY MAYOR and CITY TREASURER OF MANILA, respondents. 9.

FACTS: This petition was filed on September 1, 1986 by petitioner on his own behalf and purportedly on behalf of other videogram operators adversely affected. It assails the constitutionality of Presidential Decree No. 1987 entitled "An Act Creating the Videogram Regulatory Board" with broad powers to regulate and supervise the videogram industry (hereinafter briefly referred to as the BOARD). The Decree was promulgated on October 5, 1985 and took effect on April 10, 1986, fifteen (15) days after completion of its publication in the Official Gazette. On November 5, 1985, a month after the promulgation of the abovementioned decree, Presidential Decree No. 1994 amended the National Internal Revenue Code providing, inter  alia:

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SEC. 134. Video Tapes. — There shall be collected on each processed video-tape cassette, ready for playback, regardless of length, an annual tax of five pesos; Provided, That locally manufactured or imported blank video tapes shall be subject to sales tax. On October 23, 1986, the Greater Manila Theaters Association, Integrated Movie Producers, Importers and Distributors Association of the Philippines, and Philippine Motion Pictures Producers Association, hereinafter collectively referred to as the Intervenors, were permitted by the Court to intervene in the case, over petitioner's opposition, upon the allegations that intervention was necessary for the complete protection of their rights and that their "survival and very existence is threatened by the unregulated proliferation of film piracy." The Intervenors were thereafter allowed to file their Comment in Intervention. They contend, among other tings, that there was an over regulation on the video industry. ISSUE: WON P.D. 1987 over regulates the video industry. Held: NO. The court does not share petitioner's fears that the video industry is being overregulated and being eased out of existence as if it were a nuisance. Being a relatively new industry, the need for its regulation was apparent. While the underlying objective of the DECREE is to protect the moribund movie industry, there is no question that public welfare is at bottom of its enactment, considering "the unfair competition posed by rampant film piracy; the erosion of the moral fiber of the viewing public brought about by the availability of unclassified and unreviewed video tapes containing pornographic films and films with brutally violent sequences; and losses in government revenues due to the drop in theatrical attendance, not to mention the fact that the activities of video establishments are virtually untaxed since mere payment of Mayor's permit and municipal license fees are required to engage in business. The enactment of the Decree since April 10, 1986 has not brought about the "demise" of  the video industry. On the contrary, video establishments are seen to have proliferated in many places notwithstanding the 30% tax imposed. In fine, petitioner has not overcome the presumption of validity which attaches to a challenged statute. We find no clear violation of the Constitution which would justify us in pronouncing Presidential Decree No. 1987 as unconstitutional and void.

Patents 10. G.R. No. L-24919. January 28, 1980.]  JAMES HOWARD BOOTHE and JOHN MORTON, II, petitioners, vs. THE DIRECTOR OF  PATENTS, respondent. MELENCIO-HERRERA, J.: Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of the United States, claim to be the inventors of a new antibiotic designated as "tetracycline", a new derivative of chlortetracycline (popularly known as "aureomycin") PETITIONER’S CLAIMS:

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On February 19, 1954, petitioners applied for Letters Patent covering said invention to respondent Director of Patents claiming the right of priority granted to foreign applicants under  section 15 of the Patent Law (RA 165). Receipt of petitioners' application was acknowledged by respondent Director on March 6, 1954. On April 14, 1954, petitioners filed with respondent Director a legalized copy of their   Application for Letters Patent in the United States for the same invention (U.S. Serial No. 342556). Said legalized copy indicated that the application in the United States was filed on March 16, 1963. Petitioner claims to benefit from Section 15 of the Patent Law, which provides that: Section 15. Application previously filed abroad. — An application for patent for an invention filed in this country by any person who has previously regularly filed an application for a patent for the same invention in a foreign country, which by treaty, convention or law affords similar privileges to citizens of the Philippines, shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country: Provided, That the application in this country is filed within twelve months from the earliest date on which such foreign application was filed and a certified copy of the foreign application together with a translation thereof into English… Petitioners claim that it would be entitled to the priority date of March 16, 1953 if their  application is considered filed in the Philippines as of March 5, 1954, since the latter date would fall within the one-year period prior to March 5, 1954. RESPONDENT’s CLAIM Respondent uphold the "Philippine Patent No. 254 — November 29, 1956", which refers to a local Patent obtained by Pfizer and Co., presumably covering the same invention. Also, respondent claims that the "Specification" petitioner submitted in their application was "incomplete". Respondent Director opined that the portions subsequently supplied in the local application are not new matter a comparison between the foreign and local applications showed that the foreign application included the missing portions of the local one. However, respondent Direct qualified that petitioners' application may be considered complete only on April 14, 1954 when the certified copy of the foreign application was submitted. Consequently, the instant application is to be considered an ordinary application, not entitled to the right of priority granted by section 15 of the Patent Law, inasmuch as said application was not complete within the meaning of Rules 47 and 48 of the Revised Rules of Practice in Patent Case when first filed on March 5, 1954. ISSUE: WHETHER RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT PETITIONERS' APPLICATION, MAY NOT BE TREATED AS FILED UNDER SECTION 15 AS  AMENDED, OF REPUBLIC ACT NO. 165 KNOWN AS THE PATENT LAW. HELD: NO. It is imperative that the application be complete in order that it may be accepted. It is essential to the validity of Letters Patent that the specifications be full, definite, and

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specific. The purpose of requiring a definite and accurate description of the process is to apprise the public of what the patentee claims as his invention, to inform the Courts as to what they are called upon to construe, and to convey to competing manufacturers and dealers information of exactly what they are bound to avoid. The specification which petitioners submitted on March 5, 1954 was far from complete. That defect was one of substance and not merely one of form. What petitioners claimed as their  invention was not completely determinable therefrom. Petitioners' application could be deemed as complete only on July 2, 1963 when they submitted the additional pages on the Specifications and Claims. Respondent Director, therefore, did not err in converting petitioners'  application into an ordinary application filed on April 14, 1954, not only for their having failed to complete their application within the four-month period  provided for by Rules 47 and 48, Revised Rules of Practice in Patent Cases, and as required of them by Paper No. 6, but also for  their having failed to file a complete application within twelve months from March 16, 1953, the date of the foreign application For, to be entitled to the filing date of the patent application, an invention disclosed in a previously filed application must be described within the instant application in such a manner as to enable one skilled in the art to use the same for a legally adequate utility. 11. G.R. No. L-27361. May 29, 1981.]  PARKE, DAVIS & COMPANY, plaintiff-appellant, vs. DOCTORS' PHARMACEUTICALS, INC. and V-LAB DRUGHOUSE CORPORATION, defendants-appellees. Facts: On May 5, 1966, Parke, Davis & Company, a foreign corporation organized and existing under the laws of the State of Michigan, U.S.A., filed with the Court of First Instance of Rizal, Caloocan City Branch, a complaint for damages for infringement of patent and unfair  competition, with preliminary injunction against Doctors' Pharmaceuticals, Inc., and V-Lab Drughouse Corporation. Plaintiff Parke, Davis & Company alleged that the defendants are guilty of; (1) infringement of patent, by selling, causing to be sold, using or causing to be used "Chloramphenicol Palmitate" in their medicine called "Venimicetin Suspension", and (2) unfair  competition, by concealing that said medicine contains "Chloramphenicol", and, by deceiving and misleading the purchasers who are made to believe that "Venimicetin Suspension" is covered by a compulsory license from the plaintiff. It was also alleged that the defendant V-Lab Drughouse Corporation, in advertising and selling the medicine of Doctors' Pharmaceutica called "Venimicetin Suspension" have falsely and deceptively concealed that the same contains "Chloramphenicol Palmitate" and falsely and deceptively represented the same to contain "Chloramphenicol". On May 6, 1966, the Court of First Instance issued an order which, among others, temporarily restrained the defendants "from directly or indirectly selling, using, causing to be sold or causing to be used any 'Chloramphenicol Palmitate' not manufactured by plaintiff or  plaintiff's wholly-owned subsidiary, Parke, Davis & Company, Inc." Alleging that the defendants have not complied with such order, the plaintiff filed on May 24, 1966, a motion to punish defendants for contempt. Before the court could act on the plaintiff's motion for contempt, the defendants filed a Motion to Dismiss, dated May 25, 1966, alleging, among others, that the complaint states no

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cause of action against them since defendant No. I "was granted a compulsory license to manufacture, use and sell its own brands of medicinal preparation containing 'chloramphenicol." On June 17, 1966, the plaintiff filed its Opposition to Motion to Dismiss controverting, among others, defendants' contention that the complaint states no cause of action. Plaintiff  pointed out that the defendants have confused the substance which is the subject matter of the complaint, namely, "Chloramphenicol Palmitate", with the substance covered by the compulsory licensing case, namely, "Chloramphenicol", and the Letters Patent subject of the complaint, namely, Letters Patent No. 279, with the Letters Patent subject of the compulsory licensing case, namely, Letters Patent No. 50. On June 27, 1966, the defendants filed their Reply to Opposition alleging, among others, that in advertising and selling their product "Venimicetin Suspension," never do they state that the same contains "Chloramphenicol Palmitate". On July 5, 1966, the plaintiff filed its Rejoinder to Reply to Opposition stating, among others, that while the packages and labels of defendants' "Venimicetin Suspension" indicate that the same contains "Chloramphenicol", the truth of the matter is that said product does not contain said substance but the substance covered by Letters Patent No. 279, namely, "Chloramphenicol Palmitate". The Court of First Instance of Rizal issued the order dated August 22, 1966, which dismissed the complaint on the ground of lack of cause of action ISSUE: Whether or not the lower court correctly dismissed the complaint for damages for infringement of patent and unfair competition on the ground of failure to state a cause of action. HELD: No. It is axiomatic that in resolving a motion to dismiss a complaint on the ground of  failure to state a cause of action, the court should hypothetically assume the truth of the factual allegations of the complaint and determine whether on the basis thereof, the complainant is entitled to the relief demanded. Had the lower court applied the foregoing formula, it would not have dismissed, on the ground of failure to state a cause of action, the complaint for damages for infringement of patent and unfair competition. For, instead of hypothetically assuming the truth of the factual allegations of the complaint, the lower court had ruled against their veracity and consequently concluded that the complaint states no cause of action.  As can be gleaned from the appealed order, the pertinent portions of which heretofore quoted, the lower court premised its ruling that there is no cause of action for infringement of patent on the assumption that "Chloramphenicol" (the substance covered by Letters Patent No. 50) and "Chloramphenicol Palmitate" (the substance covered by Letters Patent No. 279) are the same. Thus, instead of hypothetically assuming the truth of the plaintiff's allegation that "Chloramphenicol" and "Chloramphenicol Palmitate" are two different substances, the lower  court had ruled against its veracity. This is clearly an error considering that the said assumed fact cannot qualify as something which the court could take judicial notice of nor was it competent to so find in the absence of evidence formally presented to that effect. The existence of two patents separately covering said substances simply militates against said factual assumption and requires the presentation of evidence sufficient to convince the court that said substances are indeed the same. Had the lower court hypothetically assumed as true, for the purpose of the motion to dismiss, the allegations in the complaint that "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely different substances and that "Venimicetin Suspension" actually contains "Chloramphenicol Palmitate" and not "Chloramphenicol" as indicated in its package and label, it necessarily would have to conclude that the complaint states causes of action for infringement of patent and for unfair competition. For defendants would then be guilty of infringement of 

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patent by selling, causing to be sold, using and causing to be used "Chloramphenicol Palmitate", without the consent or authority of the plaintiff as the holder of Letters Patent No. 279, Claim 4 of which allegedly covers said substance. Sections 37 and 42 of R.A. No. 165 provide: "SEC. 37. RIGHTS OF PATENTEES.- A 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. " (Italics supplied.) "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, to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his rights." Likewise, the defendants would be guilty of unfair competition by falsely stating that Doctors' Pharmaceuticals, Inc.’s medicine called "Venimicetin Suspension" contains "Chloramphenicol" when in fact it actually contains "Chloramphenicol Palmitate", and that it is covered by a compulsory license from the plaintiff. Section 29 of R.A. No. 166 provides, inter  alia: "In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition: "(c) Any person who shall make any false statement in the course of trade. Clearly, the lower court erred in dismissing, on the ground of failure to state a cause of action, the complaint for damages for infringement of patent and unfair  competition. WHEREFORE, the appealed order of dismissal is hereby set aside and the complaint for  damages for infringement of patent and unfair competition reinstated.

12. G.R. No. L-32160. January 30, 1982.]  DOMICIANO A. AGUAS, petitioner, vs. CONRADO G. DE LEON and COURT OF APPEALS, respondents.

RESPONDENT’S CLAIM: On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for infringement of patent against Domiciano A. Aguas and F. H.  Aquino and Sons alleging that: he is the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, •

•

•

he lawfully filed and prosecuted an application for Philippine patent, and having complied in all respects with the statute and the rules of the Philippine Patent Office, Patent No. 658 was lawfully granted and issued to him. Defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and selling tiles embodying said patent invention and that

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defendant F. H. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. Aguas the engravings, castings and devices designed and intended of tiles embodying plaintiff;s patented invention.

PETITIONER’S CLAIM: The petitioner questioned the validity of the patent of the private respondent, Conrado G. de Leon, on the ground that the process, subject of said patent, is not an invention or discovery, or an improvement of the old system of making tiles. •

•

•

•

The letters patent of de Leon was actually a patent for the old and nonpatentable process of making mosaic pre-cast tiles. The improvement of respondent is not patentable because it is not new, useful and inventive. The petitioner also claims that changing the design from embossed to engraved tiles is neither new nor inventive because the Machuca Tile Factory and the Pomona Tile Manufacturing Company have been manufacturing decorative wall tiles that are embossed as well as engraved.

ISSUE: Whether or not the respondent’s patent for the 'process of making mosaic pre-cast tile' is INVALID because said alleged process is not an invention or discovery as the same has already long been used by tile manufacturers both abroad and in this country. HELD: NO. It should be noted that the private respondent does not claim to be the discoverer or  inventor of the old process of tile-making. He only claims to have introduced an improvement of  said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to the private respondent, Conrado G. de Leon, to protect his rights as the inventor of "an alleged new and useful improvement in the process of making mosaic pre-cast tiles." Indeed, Section 7, Republic Act No. 165, as amended provides: "Any invention of a new and useful machine, manufactured product or substance, process, or an improvement of the foregoing, shall be patentable.” The respondent's improvement is indeed inventive and goes beyond the exercise of  mechanical skill. He has introduced a new kind of tile for a new purpose. He has improved the old method of making tiles and pre-cast articles which were not satisfactory because of an intolerable number of breakages, especially if deep engravings are made on the tile. He has overcome the problem of producing decorative tiles with deep engraving, but with sufficient durability. Durability in spite of the thinness and lightness of the tile, is assured, provided that a certain critical depth is maintained in relation to the dimensions of the tile. The Machuca tiles are different from that of the private respondent. The designs are embossed and not engraved as claimed by the petitioner. There may be depressions but these depressions are too shallow to be considered engraved. Besides, the Machuca tiles are heavy and massive. There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona tiles are made of ceramics. The process involved in making cement tiles is different from ceramic tiles. Cement tiles are made with the use of water, while in ceramics fire is used. As regards the allegation of the petitioner that the private respondent copied some designs of 

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Pomona, suffice it to say that what is in issue here is the process involved in tile making and not the design. 13. G.R. No. L-27004. August 16, 1983.]  PARKE, DAVIS & COMPANY, petitioner, vs. DOCTOR's PHARMACEUTICALS, INC. and  TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents. TEEHANKEE, Acting C.J.: FACTS: In G.R. No. L-22221, which involved the same parties in the instant case, the Court affirmed, in a decision dated August 31, 1965 respondent Director of Patents decision rendered on November 15, 1963 in Inter Partes Case No. 181 ordering petitioner Parke Davis & Co. to grant respondent Doctor's Pharmaceuticals, Inc. a license to manufacture, use and sell in the Philippines its own products containing petitioner's chemical called "chloramphenicol." Under Section 36 of Republic Act 165 (Patent Law), the Director of Patents is authorized, in case the parties failed to submit a licensing agreement, to fix the terms and conditions of the license. Thus, after the Court's decision in G.R. No. L-22221 became final and executory, without the parties submitting a licensing agreement, the Director of Patents, issued a license in favor of respondent company under petitioner's Letters Patent No. 50 for the patented chemical "chloramphenicol", fixing the terms and conditions thereof and declaring that the license should take effect immediately. The license provides, among others, that respondent company should pay petitioner Parke, Davis & Co., a royalty, on all licensed products containing "chloramphenicol" made and sold by respondent company in an amount equivalent to Eight Percent (8%) of the net sales which petitioner company now claims as grossly inadequate and proposes that it be increased to 15%. Petitioner insists that the fixing of the royalty rate by the Director of Patents is arbitrary and without any support in evidence pointing out that the prevailing rate for compulsory licensing on the net sales of medicines containing the patented article is 15% and 18% of the selling price. In asking for a 15% royalty rate, petitioner alleges that it is the same rate prevailing in two compulsory licenses for patents on medicine in Great Britain, and that in the case of J.R. Geigy S.A.'s Patent in Canada, the rate of 12 1/2 % based on net sales was allowed. On the other  hand respondent company points out that in a licensing agreement between Collett & Co. of  Norway and Lexal Laboratories of the Philippines, royalties of 5% on a vitamin preparation and 7%, on a pharmaceutical pellet based on net sales, were agreed upon. ISSUE: Whether or not the Director of Patent committed an erroer in fixing the royalty rate HELD: NO. The Court finds no abuse of discretion on the part of respondent Director of Patents considering that in fixing the royalty rate he made a compromise on the rate proposed by petitioner and those prevailing in other countries. The 8% royalty rate is midway between the rates in Canada and Norway. In developing countries like the Philippines, liberal treatment in trade relations should be afforded to local industry for as reasoned out by respondent company, "it is so difficult to compete with the industrial giants of the drug industry, among them being the petitioner herein, that it always is necessary that the local drug companies should sell at much lower (than) the prices of said foreign drug entities."

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The Court agrees that the 8% royalty rate is reasonable "considering that Doctor's Pharmaceutical, Inc. is a small manufacturing venture compared with Parke, Davis & Company, Inc. which is a subsidiary of the huge mother firm, Parke, Davis & Company of Michigan, U.S.A. If Doctor's is making sufficient profit to justify an increase of royalty later, Parke, Davis & Co., Inc. can easily demand an increase, considering that the latter has access to the books and records of the former.  Also, There is no showing that Parke, Davis & Co., Inc. would tend to suffer business losses by the imposition of the 8 % royalty nor does it appear that it would cause other effects on the saleability of the antibiotics and consequently the health of the consuming public by the imposition of 8 %. 14. G.R. No. 126627. August 14, 2003.]  SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE HONORABLE COURT OF   APPEALS and TRYCO PHARMA CORPORATION, respondents. Petitioner’s Claim: *Smith Kline Beckman Corp is a corporation existing under the laws of Pennsylvania, US. *It filed an application for patent over an invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The said application was approved. *It claimed that its patent covers the substance Albendazole *It claimed that private respondent infringe its right over the said patent by selling, using and causing to be sold and used the drug Impregon without its authorization. *It claimed that respondent committed unfair competition under Art 189 for advertising and selling as its own the drug Impregon although the same contained its patented  Albendazole. Respondent’s Claim: *Letters Patent that was issued to petitioners does not cover the substance Albendazole. *That even if the patent were to include Albendazole, such substance is unpatentable. *That the BFD allowed it to manufacture and market Impregon with Albendazole as its known ingredient. *there is no proof that it passed off in any way its veterinary products as those of  petitioner  *The letters patent is null and void. *The application for the issuance is void for having been filed beyond the one year  period from the filling of an application abroad for the same invention covered thereby. *Petitioner is not the registered patent holder. Issue: Whether respondent committed infringement against petitioner.

Ruling: No. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioner’s letters patent, the language of Letter 

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Patent No. 14561 fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. While both compounds have the effect of  neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. 15. [G.R. No. 113407. July 12, 2000.]  LOTHAR SCHUARTZ, FRIEDEL VERDERBERG, UDOLF KUEHNE, DIETER FISCHER, JOHN BERNARD WATKINS, HARRY GREAVES, CHEN WOO CHIN, YOSHIMI IWASAKI, FABIO CARLI, MORTIMER THOMPSON, MALCOLM JOHN LAW, MICHIBAZU OCHI, KENJI  SHIGEMATSU, ENI SHINOZAKI, ROBERT CABI-AKMAN, ARTHUR SPRENGER, REMY  SIMOND and HEINRICH EVBERGGER, petitioners, vs. THE HONORABLE COURT OF   APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF PATENTS, TRADEMARKS   AND TECHNOLOGY TRANSFER, respondents. Facts: On different dates, petitioners applied to the Bureau of Patents, Trademarks and Technology Transfer for registration of patents. They hired the law firm Siguion Reyna, Montecillo and Ongsiako to process several patent applications in the Philippines Petitioner’s patent applications lacked certain requirements and the Bureau informed the law firm about it, through correspondences called Office Actions. As petitioners law firm did not respond to these office actions within the prescribed time, notices of abandonment were sent on June 1987 . Two employees of the law firm, George Bangkas and Rafael Rosas were dismissed from employment. Prior to the dismissal, these employees worked with the patent group of the law firm and had the duty, among others, of getting the firms letters and correspondence from the Bureau of Patents. Immediately after their dismissal, the law firm conducted on December 1987 an inventory of all the documents entrusted to them. It was then that the firm learned about the notices of  abandonment. Thereafter, petitioners, through the law firm, filed with the Bureau of Patents separate petitions for revival of the patent applications. Bureau of Patents denied all the petitions for  revival because they were filed out of time. Petitioners appealed from the resolution of the Director of Patents dated January 31, 1991, which denied the petition for revival of the patent applications. They received a copy of  the resolution on February 7, 1991, and filed the consolidated appeal seven (7) days after, or on February 14, 1991. According to petitioners, these dates clearly established that their appeal was seasonably filed. Petitioners contend that their appeal was filed on time. The CA dismissed the consolidated appeal for being filed beyond the 15-day reglementary period to appeal. The CA declared that there was an unreasonable delay before the petitions to revive applications were filed and; that petitioner’s patent applications could not be a proper subject of a consolidated appeal because they covered separate and distinct subjects and had been treated by the Bureau of Patents as separate and individual applications. Petitioners appeal via certiorari from the decision of the CA dismissing their appeal from the resolution of the Director of Patents that denied with finality their petition for revival of patent applications. Issue: Is the appeal filed out of time?

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Held: Yes. If the facts above-mentioned were the sole basis of determining whether the appeal was filed on time, petitioners argument would be correct. However, petitioners lost sight of the fact that the petition could not be granted because of laches. Prior to the filing of the petition for revival of the patent application with the Bureau of Patents, an unreasonable period of time had lapsed due to the negligence of petitioners counsel. By such inaction, petitioners were deemed to have forfeited their right to revive their applications for patent. Facts show that the patent attorneys appointed to follow up the applications for patent registration had been negligent in complying with the rules of practice prescribed by the Bureau of Patents. The firm had been notified about the abandonment as early as June 1987, but it was only after December 7, 1987, when their employees Bangkas and Rosas had been dismissed, that they came to know about it. This clearly showed that petitioners counsel had been remiss in the handling of their clients applications.  A lawyer’s fidelity to the cause of his client requires him to be ever mindful of the responsibilities that should be expected of him. A lawyer shall not neglect a legal matter  entrusted to him. In the instant case, petitioner’s patent attorneys not only failed to take notice of  the notices of abandonment, but they failed to revive the application within the four-month period, as provided in the rules of practice in patent cases. These applications are deemed forfeited upon the lapse of such period. Hence, we cannot grant the present petition. The CA did not err or gravely abuse its discretion in dismissing the petition for review.

16. G.R. No. 134217. May 11, 2000.]  KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by  GEMMA DEMORAL-SAVAGE, petitioners, vs. JUDGE APRONIANO B. TAYPIN, Presiding  Judge, RTC-BR. 12, Cebu City, CEBU PROVINCIAL PROSECUTOR'S OFFICE, NATIONAL BUREAU OF INVESTIGATION, Region VII, Cebu City, JUANITA NG MENDOZA, MENDCO  DEVELOPMENT CORPORATION, ALFREDO SABJON and DANTE SOSMENA, respondents.  Acting on a complaint lodged by private respondent Eric Ng Mendoza, president and general manager of Mendco Development Corporation (MENDCO), Supervising Agent Monsanto of the NBI filed an application for search warrant with the RTC of Cebu City. The application sought the authorization to search the premises of K Angelin Export International located in Talisay, Cebu, and to seize the pieces of wrought iron furniture found therein which were allegedly the object of unfair competition involving design patents, punishable under Art. 189 of the Revised Penal Code as amended. Thereafter, seized from the factory were several pieces of furniture, indicated in search warrant, and all items seized have remained in NBI custody up to the present. Petitioners moved to quash the search warrant. Respondent Judge denied the Motion to Quash. Petitioners claim that respondent trial court had no jurisdiction over the offense since it was not designated as a special court for Intellectual Property Rights (IPR), citing in support thereof  Supreme Court Administrative Order No. 113-95 designating certain branches of the Regional Trial Courts, Metropolitan Trial Courts and Municipal Trial Courts in Cities as Special Courts for  IPR. The courts enumerated therein are mandated to try and decide violations of IPR including  Art. 189 of the Revised Penal Code committed within their respective territorial jurisdictions.

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Subsequently Supreme Court Administrative Order No. 104-96 was issued providing that  jurisdiction over all violations of IPR was thereafter confined to the Regional Trial Courts. ISSUE: 1) Whether the respondent judge had authority/jurisdiction to issue the said search warrant 2) Whether unfair competition involving design patents punishable under Art. 189 of the Revised Penal Code exists HELD: 1) YES, respondent judge has authority (Note: the search warrant issued was, however,

NOT valid).The authority to issue search warrants was not among those mentioned in the administrative orders. But the Court has consistently ruled that a search warrant is merely a process issued by the court in the exercise of its ancillary jurisdiction and not a criminal action which it may entertain pursuant to its original jurisdiction. The authority to issue search warrants is inherent in all courts and may be effected outside their territorial  jurisdiction. In the instant case, the premises searched located in Talisay, Cebu, are well within the territorial jurisdiction of the respondent court. Petitioners apparently misconstrued the import of the designation of Special Courts for IPR.  Administrative Order No. 113-95 merely specified which court could "try and decide" cases involving violations of IPR. It did not, and could not, vest exclusive jurisdiction with regard to all matters (including the issuance of search warrants and other judicial processes) in any one court. The power to issue search warrants for violations of IPR has not been exclusively vested in the courts enumerated in Supreme Court Administrative Order No.113-95. 2) NO. Since the IPR Code took effect on 1 January 1998 any discussion contrary to the view herein expressed would be pointless. The repealing clause of the Code provides that all Acts and parts of Acts inconsistent with the Code are repealed. The issue involving the existence of "unfair competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal Code, has been rendered moot and academic by the repeal of the article. The search warrant cannot even be issued by virtue of a possible violation of the IPR Code. The assailed acts specifically alleged were the manufacture and fabrication of wrought iron furniture similar to that patented by MENDCO, without securing any license or patent for the same, for  the purpose of deceiving or defrauding Mendco and the buying public. The Code defines "unfair  competition" thus — 168.2. 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, or his business, or services for those of the one having established such goodwill, or shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. There is evidently no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition. It is therefore unclear whether the crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal Code. In the face of this ambiguity, we must strictly construe the statute against the State

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and liberally in favor of the accused, for penal statutes cannot be enlarged or extended by intendment, implication or any equitable consideration. 17. G.R. No. 118708. February 2, 1998.]  CRESER PRECISION SYSTEMS, INC., petitioner, vs. COURT OF APPEALS AND FLORO  INTERNATIONAL CORP., respondents. Petitioner’s claim: It is Creser’s contention that it can file, under Section 42 of the Patent Law (R.A. 165), an action for infringement not as a patentee but as an entity in possession of a right, title or  interest in and to the patented invention. It advances the theory that while the absence of a patent may prevent one from lawfully suing another for infringement of said patent, such absence does not bar the first true and actual inventor of the patented invention from suing another who was granted a patent in a suit for declaratory or injunctive relief recognized under   American patent laws. This remedy, petitioner points out, may be likened to a civil action for  infringement under Section 42 of the Philippine Patent Law. Respondent’s claim: Private respondent Floro International submitted its memorandum alleging that petitioner has no cause of action to file a complaint for infringement against it since Creser has no patent for the aerial fuze which it claims to have invented; that petitioner's available remedy is to file a petition for cancellation of patent before the Bureau of Patents; that private respondent as the patent holder cannot be stripped of its property right over the patented aerial  fuze consisting of the exclusive right to manufacture, use and sell the same and that it stands to suffer irreparable damage and injury if it is enjoined from the exercise of its property rights over  its patent.

Issue: Whether Creser can file an action for infringement being not as patentee 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. . . . Under the aforequoted law, only the patentee or his successors-in-interest may file an action for infringement. The phrase " anyone possessing any right, title or interest in and to the  patented invention" upon which petitioner maintains its present suit, refers only to the patentee's successors-in-interest, assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested, whether as patentee, assignees, or as grantees, of the exclusive right. 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.

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18. G.R. No. 113388. September 5, 1997.]   ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION, respondents. Petitioner’s claim: Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of Letters Patent No. UM-4609 for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity). Petitioner  alleged that (a) the utility model covered by the letters patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the letters patent did not comply with the requirements of Sec. 14, RA No. 165, as amended; (c) respondent Melecia Madolaria was not the original, true and actual inventor nor did she derive her rights from the original, true and actual inventor of the utility model covered by the letters patent; and, (d) the letters patent was secured by means of fraud or misrepresentation. In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by the letters patent of respondent had been known or used by others in the Philippines for more than one (1) year before she filed her application for letters patent on 9 December 1979; (b) the products which were produced in accordance with the utility model covered by the letters patent had been in public use or on sale in the Philippines for more than one (1) year before the application for patent therefor was filed. Respondent’s claim: Private respondent, through one witness, Rolando Madolaria, who testified, among others, that he was the General Supervisor of the UNITED FOUNDRY in the foundry, machine and buffing section; that in his early years with the company, UNITED FOUNDRY was engaged in the manufacture of different kinds of gas stoves as well as burners based on sketches and specifications furnished by customers; that the company manufactured early models of singlepiece types of burners where the mouth and throat were not detachable; that in the latter part of  1978 respondent Melecia Madolaria confided in him that complaints were being brought to her  attention concerning the early models being manufactured; that he was then instructed by private respondent to cast several experimental models based on revised sketches and specifications; that private respondent again made some innovations; that after a few months, private respondent discovered the solution to all the defects of the earlier models and, based on her latest sketches and specifications, he was able to cast several models incorporating the additions to the innovations introduced in the models. Various tests were conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. Rolando Madolaria testified that private respondent decided to file her  application for utility model patent in December 1979. Issue: Whether to grant the application for cancellation of the issued patent utility model to Melecia Madolaria for an ‘LPG Burner’ Ruling: NO. In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an “LPG Burner” on 22 July 1981, the Philippine Patent Office found her invention novel and patentable. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor.

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On 7 July 1986 the Director of Patents Cesar C. Sandiego issued Decision No. 86-56 denying the petition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. Not one of the various pictorial representations of business clearly and convincingly showed that the devices presented by petitioner was identical or substantially identical with the utility model of  the respondent. The decision also stated that even assuming that the brochures depicted clearly each and every element of the patented gas burner device so that the prior art and patented device became identical although in truth they were not, they could not serve as anticipatory bars for the reason that they were undated. The dates when they were distributed to the public were not indicated and, therefore, were useless prior art references. The records and evidence also do not support the petitioner’s contention that Letters Patent No. UM-4609 was obtained by means of fraud and/or misrepresentation. No evidence whatsoever was presented by petitioner to show that the then applicant Melecia Madolaria withheld with intent to deceive material facts which, if disclosed, would have resulted in the refusal by the Philippine Patent Office to issue the Letters Patent under inquiry. The rule is settled that the findings of fact of the Director of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court when supported by substantial evidence. Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and the Court of Appeals. 19. G.R. No. 121867. July 24, 1997.]  SMITH KLINE & FRENCH LABORATORIES, LTD., petitioner, vs. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and DOCTORS  PHARMACEUTICALS, INC., respondents. Petitioner’s claim: SMITH KLINE & FRENCH LABORATORIES, LTD owns Philippine Letters Patent No. 12207 issued by the BPTTT for the patent of the drug Cimetidine. It argued that DOCTORS PHARMACEUTICALS, INC. had no cause of action and lacked the capability to work the patented product; the petition failed to specifically divulge how DOCTORS PHARMACEUTICALS, INC. would use or improve the patented product; and that DOCTORS PHARMACEUTICALS, INC. was motivated by the pecuniary gain attendant to the grant of a compulsory license. It also maintained that it was capable of satisfying the demand of the local market in the manufacture and marketing of the medicines covered by the patented product. Finally, It challenged the constitutionality of Sections 34 and 35 of R.A. No. 165 for violating the due process and equal protection clauses of the Constitution. It also invoked Article 5 of the Paris Convention for the Protection of Industrial Property,or Paris Convention, for short, of which the Philippines became a party thereto only in 1965. Respondent’s claim: DOCTORS PHARMACEUTICALS, INC. is a domestic corporation engaged in the business of manufacturing and distributing pharmaceutical products. On 30 March 1987, it filed a petition for compulsory licensing with the BPTTT for authorization to manufacture its own brand of medicine from the drug Cimetidine and to market the resulting product in the Philippines. The petition was filed pursuant to the provisions of Section 34 of  Republic Act No. 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefor), which provides for the compulsory licensing of a particular patent after the expiration of two years from the grant of the latter if the patented invention relates to, inter alia, medicine or that which is necessary for public health or public safety. It alleged that the grant of Philippine Letters Patent No. 12207 was issued on 29 November 1978; that the petition was filed beyond the two-year protective period provided in Section 34 of R.A. No. 165; and that it had the capability to work the patented product or make use of it in its manufacture of medicine.c

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Issue: whether or not the decision of BPTTT DECISION VIOLATES INTERNATIONAL LAW  AS EMBODIED IN (A) THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND (B) THE GATT TREATY, URUGUAY ROUND, AND MUST  ACCORDINGLY BE SET ASIDE AND MODIFIED. Held: No. It is thus clear that Section A(2) of Article 5 of the Paris Convention unequivocally and explicitly respects the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. An example provided of possible abuses is "failure to work;" however, as such is merely supplied by way of  an example, it is plain that the treaty does not preclude the inclusion of other forms or  categories of abuses. Section 34 of R.A. No. 165, even if the Act was enacted prior to the Philippines adhesion to the Convention, fits well within the aforequoted provisions of Article 5 of the Paris Convention. In the explanatory note of Bill No. 1156 which eventually became R.A. No. 165, the legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product, but also to prevent the growth of monopolies. Certainly, the growth of monopolies was among the abuses which Section A, Article 5 of the Convention foresaw, and which our Congress likewise wished to prevent in enacting R.A. No. 165.c R.A. No. 165, as amended by Presidential Decree No. 1263, promulgated on 14 December  1977, provides for a system of compulsory licensing under a particular patent. The case at bar refers more particularly to subparagraph (e) of paragraph 1 of Section 34 -- the patented invention or article relates to food or medicine or manufactured products or substances which can be used as food or medicine, or is necessary for public health or public safety. And it may not be doubted that the aforequoted provisions of R.A. No. 165, as amended, are not in derogation of, but are consistent with, the recognized right of treaty signatories under Article 5, Section A(2) of the Paris Convention.c Parenthetically, it must be noted that paragraph (4) of Section A, Article 5 of the Paris Convention setting time limitations in the application for a compulsory license refers only to an instance where the ground therefor is "failure to work or insufficient working," and not to any ground or circumstance as the treaty signatories may reasonably determine. Neither may petitioner validly invoke what it designates as the GATT Treaty, Uruguay Round. This act is better known as the Uruguay Final Act signed for the Philippines on 15 April 1994 by Trade and Industry Secretary Rizalino Navarro. Forming integral parts thereof are the  Agreement Establishing the World Trade Organization, the Ministerial Declarations and Decisions, and the Understanding on Commitments in Financial Services. The Agreement establishing the World Trade Organization includes various agreements and associated legal instruments. It was only on 14 December 1994 that the Philippine Senate, in the exercise of its power under Section 21 of Article VII of the Constitution, adopted Senate Resolution No. 97 concurring in the ratification by the President of the Agreement. The President signed the instrument of ratification on 16 December 1994.But plainly; this treaty has no retroactive effect. Accordingly, since the challenged BPTTT decision was rendered on 14 February 1994, petitioner cannot avail of the provisions of the GATT treaty 20. [G.R. No. 115106. March 15, 1996.]  ROBERTO L. DEL ROSARIO, petitioner, vs. COURT OF APPEALS AND JANITO  CORPORATION, respondents.

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Petitioner’s Contention: Del Rosario alleged that he was a patentee of an audio equipment and improved audio • equipment commonly known as the sing-along system or  karaoke under Letters Patent issued by the Director of Patent. The effectivity of both Letters Patents was for five (5) years and was extended for another five (5) years starting 2 June 1988 and 14 November 1991, respectively. He described his sing-along system as a handy multipurpose compact machine which incorporates an amplifier speaker, one or two tape mechanisms, optional tuner or radio and microphone mixer with features to enhance one’s voice, such as the echo or reverb to stimulate an opera hall or a studio sound, with the whole system enclosed in one cabinet casing. •

In 1990, he learned that private respondent, Janito Corporation, was manufacturing a sing-along system bearing the trademark miyata or miyata karaoke substantially similar  if not identical to the sing-along system covered by the patents issued in his favor. Thus he sought from the trial court the issuance of a writ of preliminary injunction to enjoin private respondent, its officers and everybody elsewhere acting on its behalf, from using, selling and advertising the miyata or miyata karaoke brand.

Respondent’s Contention: Respondent Janito Corporation denied that there was any violation of petitioner’s patent • rights, and cited the differences between its miyata equipment  and petitioner’s audio equipment. •

Respondent also contended that there was no infringement of the patents of petitioner  by the fact alone that private respondent had manufactured the miyata karaoke or audio system, and that the karaoke system was a universal product manufactured, advertised and marketed in most countries of the world long before the patents were issued to petitioner.

RULING: It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other  subject matter alleged to infringe is substantially identical with the patented invention. In order  to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. It may be noted that respondent corporation failed to present before the trial court a clear, competent and reliable comparison between its own model and that of petitioner, and disregarded completely petitioner’s Utility Model No. 6237 which improved on his first patented model. Notwithstanding the differences cited by respondent corporation, it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice; (b) both are used to sing with a minus-one or multiplex tapes, or that both are used to play minus-one or standard cassette tapes for singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment; (d) both are used to sing with live accompaniment and to record the same; (e) both are used to enhance the voice of the singer using echo effect, treble, bass and other  controls; (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other, for recording the singer and the accompaniment, and both may also be used to record a speaker’s voice or instrumental playing, like the guitar and other 

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instruments; (h) both are encased in a box-like cabinets; and, (i) both can be used with one or  more microphones. Clearly, therefore, both petitioner’s and respondent’s models involve substantially the same modes of operation and produce substantially the same if not identical results when used.

Reading List 21.

G.R. No. 114508. November 19, 1999.] MYRTLE  PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR OF PATENTS  and the BARBIZON CORPORATION, respondents. 22. G.R. No. 120900. July 20, 2000.]  CANON KABUSHIKI KAISHA, petitioner, vs. COURT OF APPEALS and NSR RUBBER  CORPORATION, respondents. On January 25, 1985, private respondent NSR Rubber Corporation filed an application for  registration of the mark CANON for sandals in the Bureau of Patents, Trademarks and Technology Transfer (BPTTT). A verified Notice of Opposition was filed by petitioner, a foreign corporation duly organized and existing under the laws of Japan, alleging that it will be damaged by the registration of the trademark CANON in various countries covering goods belonging to Class 2 (paints, chemical products, toner and dye stuff). Petitioner also submitted in evidence its Philippine Trademark Registration No. 39398, showing ownership over the trademark CANON also under Class 2. On November 10, 1992 the BPTTT issued its decision dismissing the opposition of petitioner and giving due course to private respondent’s application for the registration of the trademark CANON. On February 16, 1993, petitioner appealed the decision of  the BPTTT with public respondent CA that eventually affirmed the decision of BPTTT. Hence, this petition for review. ISSUE: Whether the respondent can use as its trademark the word “CANON” HELD: YES. The BPTTT and CA share the opinion that the trademark CANON as used by petitioner for its paints, chemical products, toner and dyestuff can be used by private respondent for it s sandals because the products of these two parties are dissimilar. Petitioner  protests the appropriation of the mark CANON by private respondent on the ground that petitioner has used and continues to use the trademark CANON in its wide range of goods worldwide. Allegedly, the corporate name or tradename of petitioner is also used as its trademark on diverse goods including footwear and other related products like shoe polisher  and polishing agents. To lend credence to its claim, petitioner points out that it has branched out in its business based on the various goods carrying its trademark CANON, private respondent sought to register the mark CANON. For petitioner, the fact alone that its trademark CANON is carried by its other products like footwear, shoe polisher and polishing agents should have precluded the BPTTT from giving due course to the application of private respondent. The SC finds the arguments of petitioner to be unmeritorious. Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other  party does not deal, the use of the same trademark on the latter’s product cannot be validly objected.

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23. G.R. No. L-28499. September 30, 1977.]  VICTORIA MILLING COMPANY, INC., petitioner, vs. ONG SU AND THE HONORABLE  TIBURCIO S. EVALLE, IN HIS CAPACITY AS DIRECTOR OF PATENTS, respondents. FERNANDEZ, J.: The petitioner, Victorias Milling Company, Inc., a domestic corporation and engaged in the manufacture and sale of refined granulated sugar is the owner of the trademark "VICTORIAS" and d design registered in the Philippines Patent Office on November 9, 1961. The respondent Ong Su is engaged in the repacking and sale of refine sugar and is the owner  of the trademark "VALENTINE" and design registered in the Philippines Patent Office on June 20, 1961. PETITIONER’s CONTENTION Victorias Mining Company, Inc. filed with the Philippine Patent Office a petition to cancel the registration of the Ong Su trademark "Valentine." The petitioner allied that its tradermrk "Victorias" and diamond design has distinctive of  its sugar long before the respondent used its trademark; that the registration of "Valentine" and design has caused and will cause great damage to petitioner by reason of mistake, confusion, or deception among the purchasers because it is similar to its "Victorias" trademark; that registration was fradulently obtained by Ong Su and that "Valentine" faisely suggests a connection with Saint Valentine or with an institution or belief connected therewith. Petitioner contends that the diamond design in its trademark is an index of origin. RESPONDENT’s CONTENTION Respondent averred that he is doing business under the name and style "Valentine Packaging" and has registered the trademark "Valentine" with a design for sugar and was issued Certificate of Registration No. 8891 dated June 20, 1961; that the trademark "Victorias" with diamond design and the trademark "Valentine" with a design are two different marks; and that there is absolutely no likelihood of confusion, mistake or deception to purchasers through the concurrent use of the petitioner's mark "Victorias" with a diamond design and the respondents' mark "Valentine" with a design in connection with sugar. The Director of Patents denied the petition to cancel the certificate of registration of the respondent Ong Su covering the trademark "Valentine" and design because: There is no question that as to their respective literal designation the trademarks are different. One is VALENTINE while the other is VICTORIAS. The diamond Portion of petitioner's trademark argued that common geometric shapes such as circles, ovals, squares, triangles, diamonds, and the like, when used as vehicles for display on word marks, ordinarily are not retarded as indicia of origin for goods to which the marks are applied, unless of course they have acquired secondary meaning. I have scoured the records completely to ascertain if the petitioner has submitted satisfactory evidence in this regard, but I find

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absolutely nothing to base a ruling that the triangle (sic) design has acquired a secondary meaning with respect to its sugar business.  As regards the colors black and red used, it is fundamental in trademark  jurisprudence that color alone, unless displayed in a distinct or arbitrary design, does not function as a trademark, inasmuch as here, or elsewhere, the colors black and red are not so displayed by the petitioner, and are primary colors commonly and freely used in the printing business. Finally, as regards the printing sequences or arrangement of such legends as weight, contents, and manufacturer or packer, I regard it as merely a matter  pertaining to the address of the goods' — a matter involving unfair competition over which the Patent Office has no jurisdiction. ISSUE: WHETHER OR NOT THE DIRECTOR OF PATENTS ERRED IN ORDERING NOT TO CANCEL THE REGISTRATION OF THE RESPONDENT. HELD: NO. The contention of petitioner that the diamond design in its trademark is an index of  origin has no merit. The petitioner has not shown that the design portion of the mark has been so used that purchasers recognize the design, standing alone, as indicating goods coming from the registrant. As correctly stated by the Director of Patents, common geometric shapes such as diamonds ordinarily are not regarded as indicia of origin for goods to which the remarks are applied unless they have acquired a secondary meaning. And there is no evidence that the diamond design in the trademark of the petitioner has acquired a secondary meaning with respect to its sugar business. The word "Victorias" is what Identifies the sugar contained in the bag as the product of the petitioner. Indeed, the petitioner has advertised its sugar in bags marked "Victorias" with oval, hexagor. and other designs. It seems clear that the words "Valentine" and "Victorias" and the names and places of business of Victorias Milling Company, Inc. and Ong Su are the dominant features of the trademarks in question. The petitioner has not established such a substantial similarity between the two trademarks in question as to warrant the cancellation of the trademark 'Valentine'of the respondent Su. The Director of Patents correctly ruled that he has no jurisdiction over the issue of unfair  competition. 24. G.R. No. L-23954. April 29, 1977.]   AMERICAN CYANAMID COMPANY, petitioner, vs. THE DIRECTOR OF PATENTS and TIU  CHIAN, respondents. FACTS: Petitioner Cyanamid field on April 3, 1959, a petition to cancel certificate of registration No. 5348 issued on July 6, 1956, in favor of respondent Tiu Chian of the latter's trademark SULMETINE used on medicine for the control of infectious coryza and for the prevention of  cold, rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of chicken and other  domesticated birds. Cyanamid claims that it is the owner of a trademark SULMET which is the trademark of a veterinary product used, among other purposes, "for the control of outbreaks of  cecal and intestinal coccidiosis and infectious coryza (colds) in chicken flocks; coccidiosis in turkeys; and for reducing mortality in pullorum disease in baby chicks, acute fowl cholera in

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chickens, turkeys and ducks and anatipestifer disease in ducks." Through long use in the country, SULMET has become popular and well-known and enjoys widespread reputation brought about by extensive advertisement and promotion through the media. Notwithstanding the above, respondent fraudently filed an application for registration of SULMETINE as his trademark on a veterinary product used for the same purposes thereby making respondent's product confusingly similar with that of petitioner which is unfair and unjust to the latter.

On June 9, 1964, the Director of Patents rendered his decision denying the Petition for  cancellation of respondent's certificate of registration of the trademark SULMETINE, based on the following findings: (1) Petitioner's trademark SULMET is used on a preparation for practically all domesticated animals such as fowl, cattle, pigs, horses and sheep, whereas, SULMETINE is limited only to chicken and other domesticated birds. (2) On the top of petitioners label, the word "CYANAMID" is printed in prominent letters and at the bottom of the label there appears in bold letters the words "AMERICAN CYANAMID COMPANY, NEW YORK 20, N.Y." indicating the manufacturer of the product. On the other hand, at the top of respondent's label, Exhibit C, there appears the pictures of two roosters with the word "HENRY'S" in-between, and at the bottom "HENRY'S LABORATORIES PHILIPPINES" are clearly printed indicating the source of the product. (3) Petitioner's preparation consists of a drinking water solution and this is clearly indicated in bold letters on the label, whereas, that of respondent consists of tablets for veterinary use prominently indicated in red letters on the label, Exhibit C. The above differences in the physical aspect or appearance of the respective labels were found by the Director of Patents substantial and striking enough so as to prevent any confusing similarity between the two which may lead a buyer to confuse one with the other. With respect to Petitioner's contention that respondent's trademark bears the two syllables of petitioner's SULMET and that respondent merely added the syllable "INE", the Director of Patents reasoned out that the syllables "SUL" and "MET" are coined from a common source suggestive of chemical compounds which are attributes of the products of the parties herein, that is, "SUL" being derived from "SULFA" and "MET" from methyl, so that neither party may claim exclusive use to them, and that with the addition of the syllable "INE" by respondent, a marked distinction is effected to distinguish the two trademarks. ISSUE: Whether or not petitioner correctly claims that respondent's trademark SULMETINE was copied from its trademark SULMET giving rise to a confusing similarity between the two in violation of  Republic Act 166 otherwise known as the Trade-Mark Law.

HELD: No. The Supreme Court held that there is no infringement of trademark which justify a cancellation of respondent's registered trademark SULMETINE. An examination of the documentary evidence submitted by the parties confirms the findings of the Director of Patents that there are striking differences between the two labels, Exhibits B and C, which preclude the

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possibility of the purchasing public confusing one product with the other. Said labels are entirely different in size, background, colors, contents, and pictorial arrangement; in short. the general appearances of the labels bearing the respective trademarks are so distinct from each other that petitioner cannot assert that the dominant features, if any, of its trademark were used or  appropriated in respondent's own. Moreover, the word SULMET is derived from a combination of the syllables "SUL" which is derived from Sulfa and "MET" from methyl both of which are chemical compounds present in the article manufactured by the contending parties and the addition of the syllable "INE" in respondent's label is sufficient to distinguish respondent's product or trademark from that of  petitioner. The Supreme Court cannot agree with petitioner that the trademarks are used on identical goods because as already indicated earlier, petitioner's SULMET label, Exhibit B, is used on a drinking water solution while that of respondent labels tablets. That both products are for identical use may be admitted to the extent that respondent's tablets are indicated for the treatment, control, and prevention in chicken of infectious coryza (also known as colds, rhinitis and roup) and for the prevention of cecal and intestinal coccidiosis which is also indicated in petitioner's SULMET label. However, no one including petitioner can claim a monopoly in the preparation of a medicinal product for the use indicated above. The field is open for the manufacture of medicinal preparations for the same veterinary purposes. What the law prohibits is that one manufacturer labels his product in a manner strikingly identical with or similar to that of another manufacturer as to deceive or confuse the buying public into believing that the two preparations are one and come from the same source. In the case however of SULMET and SULMETINE it is satisfactorily shown from the evidence of the parties that while their products may be for a similar use, their presentation to the purchasing public come in totally different forms.

25. G.R. No. L-23035. July 31, 1975.]  PHILIPPINE NUT INDUSTRY, INC., petitioner, vs. STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE, as Director of Patents, respondents. FACTS: Philippine Nut, a domestic corporation, obtained from the Patent Office on August 10, 1961, Certificate of Registration No. SR-416 covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts. RESPONDENT’S CLAIM: On May 14, 1962, Standard Brands a foreign corporation, filed with the Director of  Patents asking for the cancellation of Philippine Nut's certificate of registration on the ground that: "the registrant was not entitled to register the mark at the time of its application for registration thereof" for the reason that it (Standard Brands) is the owner of  the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of  Registration No. SR-172, issued by the Patent Office on July 28, 1958. •

•

that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts, and that the registration of  the former is likely to deceive the buying public and cause damage to it.

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PETITIONER’S CLAIM: PLANTERS cannot be considered as the dominant feature of the trademarks in question because it is a mere descriptive term, an ordinary word which is defined in Webster International Dictionary as "one who or that which plants or sows, a farmer or an agriculturist." •

Respondent Director should not have based his decision simply on the use of the term PLANTERS, and that what he should have resolved is whether  there is a confusing similarity in the trademarks of the parties. •

there are differences between the two trademarks, such as, the presence of the word "Philippine" above PLANTERS on its label, and other phrases, to wit: "For Quality and Price, Its Your Outstanding Buy", the address of the manufacturer in Quezon City, etc., plus a pictorial representation of peanuts overflowing from a tin can, while in the label of Standard Brands it is stated that the product is manufactured in San Francisco, California, and on top of the tin can is printed "Mr. Peanut" and the representation of a "humanized peanut". •

It was error for respondent Director to have enjoined it from using PLANTERS in the absence of evidence showing that the term has acquired secondary meaning. •

ISSUE: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine Nut on its label for salted peanuts confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product so as to constitute an infringement of the latter's trademark rights and justify its cancellation. HELD:  YES.  Applying the "TEST OF DOMINANCY", meaning, if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result, then infringement takes place; that duplication or imitation is not necessary, a similarity in the dominant features of the trademarks would be sufficient. While it is true that PLANTERS is an ordinary word, nevertheless it is used in the labels not to describe the nature of the product, but to project the source or origin of the salted peanuts contained in the cans. The word PLANTERS printed across the upper portion of the label in bold letters easily attracts and catches the eye of the ordinary consumer and it is that word and none other that sticks in his mind when he thinks of salted peanuts. It is true that there are other  words used such as "Cordial" in petitioner's can and "Cocktail" in Standard Brands', which are also prominently displayed, but these words are mere adjectives describing the type of peanuts in the labeled containers and are not sufficient to warn the unwary customer that the two products come form distinct sources. As a whole it is the word PLANTERS which draws the attention of the buyer and leads him to conclude that the salted peanuts contained in the two cans originate from one and the same manufacturer. Petitioner also used in its label the same coloring scheme of gold, blue, and white, and basically the same lay-out of words such as "salted peanuts" and "vacuum packed" with similar  type and size of lettering as appearing in Standard Brands' own trademark, all of which result in a confusing similarity between the two labels. As a matter of fact, the capital letter "C" of 

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petitioner's "Cordial" is alike to the capital "C" of Standard's "Cocktail", with both words ending with a "1". The court finds the alleged differences insignificant in the sense that they are not sufficient to call the attention of the ordinary buyer that the labeled cans come from distinct and separate sources. The word "Philippine" printed in small type in petitioner's label may simply give to the purchaser the impression that that particular can of PLANTERS salted peanuts is locally produced or canned but that what he is buying is still PLANTERS canned salted peanuts and nothing else. As regards "Mr. Peanut" on Standard Brands' label, the same appears on the top cover and is not visible when the cans are displayed on the shelves, aside from the fact that the figure of "Mr. Peanut" is printed on the tin cover which is thrown away after opening the can, leaving no lasting impression on the consumer. It is also for this reason that We do not agree with petitioner that it is "Mr. Peanut and the Humanized Peanut" which is the trademark of  Standard Brands salted peanuts, it being a mere descriptive pictorial representation of a peanut not prominently displayed on the very body of the label covering the can, unlike the term PLANTERS which dominates the label. With regards to the doctrine of secondary meaning, the Court held that 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. The applicability of the doctrine of secondary meaning to the situation now before the Court is appropriate because there is oral and documentary evidence showing that the word PLANTERS has been used by and closely associated with Standard Brands for its canned salted peanuts since 1938 in this country. Not only is that fact admitted by petitioner in the amended stipulation of facts, but the matter has been established by testimonial and documentary evidence consisting of invoices covering the sale of "PLANTERS cocktail peanuts". In other words, there is evidence to show that the term PLANTERS has become a distinctive mark or symbol insofar as salted peanuts are concerned, and by priority of use dating as far back as 1938, respondent Standard Brands has acquired a preferential right to its adoption as its trademark warranting protection against its usurpation by another. 26. G.R. No. 10738. January 14, 1916.]  RUEDA HERMANOS & CO., plaintiff-appellant, vs. FELIX PAGLINAWAN & CO., defendant-appellant. TRENT, J.: FACTS: This is a civil action for damages for unfair completion. Both parties are manufacturing a chocolate candy. Rueda Hermanos had been engaged in the business for many years and registered a trademark for its product in the year 1910. In March, 1914, Felix Paglinawan commenced the manufacture of its confection. Both parties made their products in the shape of  flat, circular pieces, each package containing five pieces. The packages were thus cylindrical in shape, were of practically the same diameter and length, and were wrapped in the same quality and color of paper. The printing on both packages extended longitudinally and the corresponding lines on each were printed in the same size of type, although the shading was lighter and some of the lines were printed in italics on the defendant's package. Judgment in the court below went in favor of the plaintiff for a permanent injunction against the defendant and for damages in the sum of P1,200. Both parties have appealed, the defendant on the question of its liability, and the plaintiff on the alleged insufficiency of the damages allowed.

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ISSUE: Whether or not the defendant is liable for unfair competition HELD: YES. The true test of unfair competition is whether certain goods have been clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care, and not whether a certain limited class of purchasers with special knowledge not possessed by the ordinary purchaser could avoid mistake by the exercise of this special knowledge. If the contents of two packages are the same commodity, it is no defense to an action for unfair  competition to show minor differences in the size or shape of the packages or in the wording or  color of the labels or wrappers of the packages. If the exterior size, shape, color and description, in other words, those things which go to make up the general outside appearances of the article, are so substantially similar as to "likely deceive the ordinary purchaser exercising ordinary care," the defendant is guilty of unfair competition. A review of former cases decided fails to show a single one wherein there were fewer differences in the general appearance of the packages put up for sale by the respective parties that there are in the several packages presented as exhibits in the case at bar. In so far as the finding of actual intent to imitate the plaintiff's product is concerned, it must be remembered that this "may be inferred from similarity in the appearance of the goods as packed or offered for sale to those of the complaining party." Unfair competition is fully proven 'from the similarity in the appearance of the goods as packed or offered for sale.' Indeed, in most cases of unfair competition the similarity of the goods must appear from the form of  general appearance of the goods sold. In the case at bar, it appears that Felix Paglinawan, a member of the defendant company, representing himself to be a retailer of plaintiff's product, induced plaintiff's officers to show him through the factory and explain to him their process of making chocolate candy mixed with peanuts. This was before the defendant company started to make their product, and ignorance of the style, size, color and shape of plaintiff's article, as it was offered to the retail trade, cannot, therefore, be maintained by the defendant company. *Groupmates, hindi ko na ininclude yung issue pertaining to “sufficient amount of damages”. Check the original case nalang if you are interested 

27. G.R. No. 14269. October 16, 1919.]  FORBES, MUNN & CO. (LTD.), plaintiff-appellant, vs. ANG SAN To, defendant-appellee. GR No. L-14269, October 16, 1919 Malcolm, J: Petitioner’s Claim: *Petitioner is a limited mercantile company duly organized and licensed to do business in the Philippine Islands. *It has been engaged in the sale of imported cotton textiles comprising cotton khaki drill. *Petitioner has used a trade-mark to designate its cotton khaki drill, known by the cognomen “Three Soldier Khaki” or “Soldier Khaki” *Petitioner has registered the said trademark and fairly established its title. *It claims the exclusive right to the figure of a soldier for a trade-mark, it could make use of effigies of soldiers in combination with other elements, to devise its particular mark *It claims that defendant committed infringement and is liable for unfair competition

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Respondent’s Claim: *Respondent is a merchant doing business in the city of Manila. *It deposited with the Phil Library and Museum four fcacsimiles of trademarks for khaki cloth. *It claims that it is not liable for infringement and unfair competition. Issue: Whether respondent is liable for infringement and unfair competition. Ruling: Yes. The attempt of the defendant was to palm off upon an unwary public his goods as being the goods of the plaintiff. Similarity, as we have said, is the test of infringement of a trademark. Moreover, this is not such similitude as amounts to identity. The deceptive tendency indicated by copying or imitating the substantial and distinctive part of the trade-mark, so as to pass off the goods of one man as those of another, is sufficient to show infringement. In all cases the court will inspect the trade-marks to discover both the differences and their  resemblances. An inspection of the two marks carries conviction to an unbiased and unprejudiced mind. 28. [G.R. No. 45502. May 2, 1939.]  SAPOLIN CO., INC., cross-plaintiff-appellant, vs. CORNELIO BALMACEDA, as Director of  the Bureau of Commerce and Industry, and GERMANN & CO., LTD., cross-defendants. GERMANN & CO., LTD., appellee. DIAZ, J.: Facts: The cross-plaintiff obtained its certificates from the Patent Office of the United States to have exclusive use of the trade-mark and trade-name "Sapolin" for its products and goods. Plaintiff asked that the cross-defendant and appellee, its agents, attorneys, and representatives be joined from selling or offering to sell its products bearing the trade-marked "Lusolin". The questioned trade-mark and trade-name are, with respect to color, design, size other  characteristics, and the sound produced by the pronunciation of the name "Lusolin" which is one of them, are almost the same as the trade-mark and trade-name "Sapolin". The articles on whose containers are pasted the said trade-mark and trade-name are paints of the kind indicated on the said containers, namely: white and colored enamel paints, aluminum enamel paints, paints for carriages, varnish stains, steel enamel paints, floor wax. etc. The cross-defendant itself, in its letter to the cross-plaitiff, admits the striking similarity between the two trade-marks and trade-names in question. The CFI of Manila rendered judgment dismissing the cross-complaint of the crossplaintiff on the ground that, not having registered in the Bureau of Commerce and Industry the patent or trade-mark certificate which it alleged to have obtained from the Patent Office of the United States, it is not entitled to the remedy sought under the provisions section 4 of Act No. 666, as amended by section 1 of Act No. 3332. From this judgment the cross-plaintiff appealed and now argues that the lower court committed the five errors set out in its brief as follows: (1) The court erred in not holding that the trade-mark "Lusolin" of the cross-defendant Germann & Co., Ltd., constitutes an infringement of  the cross-plaintiff's trade-mark "Sapolin"; (2) the court erred in ruling that there is no merit in the action brought by the cross-defendant as plaintiff in the initial action in view of the provisions of  the said section 4 of the cited law; (3) the court erred in not holding that the cross-plaintiff has a right of action based upon unfair competition, against the cross-defendant; (4) the court erred in

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not holding that Act No. 3332 amendatory of the aforesaid section is unconstitutional; and finally (5) the court erred likewise in not rendering judgment for the cross-plaintiff. Issues: (1) Is plaintiff entitled to a remedy notwithstanding the fact that its trade-mark or tradename allegedly violated has not been duly registered in the Bureau of Commerce and Industry? (2) Does plaintiff have a right of action based upon unfair competition? Held: (1) Yes. Section 4 of Act No. 666, as amended by section 1 of Act No. 3332, approved on December 7, 1926, reads as follows: SEC. 4. No action shall be brought for damages for the violation of the rights to use trade-marks defined in the preceding sections nor shall criminal proceedings be entertained as provided in section six of this Act, unless it be first shown that the trademark of trade-name alleged to have been violated or which gave rise to the criminal  action has been duly registered in the Bureau of Commerce and Industry, in accordance with the provisions of this Act. The Philippine Legislature could not have intended to give to section 4 thereof, as amended by Act No. 3332, the strict interpretation that, unless a trade-mark or trade-name allegedly violated has been duly registered in the Bureau of Commerce and Industry, no action to cut short or prevent the violation can be taken against the infringer even in case of a trademark or trade-name registered in the Patent Office of the United States. If it be contended that the aforesaid section should be strictly interpreted, then we would have the case of the Philippine Legislature knowingly enacting a law which openly trenches upon theanother act of Congress, which is unlikely considering that it has no power to so act. To reach a different conclusion would be like asserting that the section in question is purposeless, whereas it is undeniable that it has a purpose inasmuch as there are acts to which it extends and is perfectly applicable. One who is using a trade-mark or trade-name in his goods or products who has not been negligent in registering the same in the Bureau of Commerce and Industry, may complain against another who makes use of or imitates the same mark or name although the latter's use thereof may be of prior date, because the purpose of the said section, by its spirit and letter, is to stimulate, encourage and protect the diligent and not the neglectful.

(2) None. The violation of the trade-mark is established by comparing it with the one allegedly violated and by showing that the resemblance between the two — resemblance which in the case at bar is admitted by the cross-defendant itself— is of such a nature that one can be taken for the other; and it has also been stated that it is the said resemblance and not identify that constitutes a sufficient violation, or better still, the test for the detection of whether or not there is such a violation.  As to the syllabication and sound of the two trade-names "Sapolin" and "Lusolin" being used for paints, it seems plain that whoever hears or sees them cannot but think of paints of the same kind and make. In a case to determine whether the use of the trade-name "Stephens' Blue Black Ink" violated the trade-name "Steelpens Blue Black Ink", it was said and held that there was in fact a violation; and in other cases it was held that trade-names idem sonans constitute a violation in matters of patents and trade-marks and trade-names. Having reached the conclusion that there is a great simplicity between the two trademarks and trade-names in question, and that one is an imitation of the other, there is no

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occasion to dwell at length upon the other question raised by the cross-plaintiff-appellant in its brief, to wit: that it was has likewise a cause of action against the cross-defendant for unfair  competition. An action for a violation of a trade-mark or trade-name cannot be brought at the same time as an action for unfair competition. The two actions cannot coexist because the first does not require, like the second, as an essential and indispensable condition that there be fraud or deceit. An act cannot at once constitute a violation of a trade-mark or trade-name and an unfair competition, because in the former the idea of fraud or deceit does not enter inasmuch as there is filed with the Bureau of Commerce and Industry the questioned mark or name for the registration thereof; whereas in the later, fraud and deceit are an essential condition — two acts which can only be committed through trickery and at the back of the intented victim.  And there is also no occasion to enter upon a discussion of the other questions which are merely a consequence or incident of the two just passed upon. In conclusion, the appealed decision is reversed, and it is ordered that this case be remanded to the court of origin to the end that it may enter therein the proper orders and decision, upon presentation by the parties concerned of the evidence which they may deem necessary to adduce, taking into account the findings and opinion herein set forth in favor of the contention of the cross-plaintiff. The costs will be taxed against the cross-defendant.

29. G.R. No. 48226. December 14, 1942.]   ANA L. ANG, petitioner, vs. TORIBIO TEODORO, respondent. Toribio Teodoro has continuously used “Ang Tibay” both as a trademark and tradename, in the manufacture and sale of slippers, shoes and indoor baseballs since 1910. He formally registered it as trademark on September 1915 and as a tradename in 1933. Petitioner  registered the same trademark “Ang Tibay” for pants and shirts in 1932. Petitioner now assails the validity of respondent’s trademark. He contends that the phrase “Ang Tibay” is a descriptive term and therefore, cannot be subject of a trademark. Petitioner claims also that respondent committed infringement with regard to the trademark “Ang Tibay”. ISSUE: Whether the trademark “Ang Tibay” is registrable HELD: YES. “Ang Tibay” is not a descriptive term within the meaning of the Trademark Law but rather a fanciful or coined phrase which may properly be appropriated as a trademark. And it must be noted that it was the respondent who first used the term “Ang Tibay” and in fact it has already acquired a secondary meaning in a proprietary connotation. With regard to the infringement, it is proper to say that there is no infringement as the goods sold by the parties are not the same. In fact, it is more correct to conclude that the selection by petitioner of the same trademark for pants and shirts was motivated by a desire to get a free ride or the reputation and selling power it has acquired at the expense of the respondent. 30. G.R. No. L-4531. January 10, 1953.]   ANG SI HENG and SALUSTIANA DEE, plaintiffs-appellants, vs. WELLINGTON  DEPARTMENT STORE INC., BENJAMIN CHUA, S. R. MENDINUETO, and FILEMON  COSIO, defendants-appellees. Petitioners/Plaintiff-appellants’ claim: The plaintiffs-appellants allege that the use of the words "Wellington Department Store" as a business name and as a corporate name by the defendant-appellee deceives the public into buying defendant corporation's goods under the mistaken belief that the names are the

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plaintiff's or have the same source as plaintiffs' goods, thereby resulting in damage to them. They, therefore, pray that the defendant corporation be enjoined from using the business name "Wellington Department Store" and the corporate name "Wellington Department Store, Inc"; that the Director of Commerce be ordered to cancel the registration of said business name, and the Securities and Exchange Commissioner be also ordered to cancel the corporate name "Wellington Department Store, Inc." Respondents/Defendants-appellees’ claim: The defendants Wellington Department Store, Inc., and Benjamin Chua allege, by way of special defense, that the plaintiffs are engaged in the manufacture or production of shirts, pants, drawers, and other articles of wear for men, women, and children, and keep a dry goods store for the sale of the same, whereas they (the defendants) are not engaged in the same business or in the manufacture or sale of articles with the trademark "Wellington," and that they are keeping a store for articles such as shoes, hats, toys, perfumes, bags, apparels, and the like, most of which are different from those manufactured and sold by plaintiffs-appellants. Issues: a) Whether the plaintiffs-appellants have acquired a property right in the name "Wellington” b) Whether, if the defendants-appellees are not liable for any infringement of tradename, at least, they are liable for unfair competition. Ruling: a) NO. The term "Wellington" is either a geographical name or the surname of a person. But mere geographical names are ordinarily regarded as common property, and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or trade name. (52 Am. Jur., 548.) Even if Wellington were a surname, which is not even that of the plaintiffs-appellants, it cannot also be validly registered as a trade name. (Section 4, Paragraph (e), Republic Act. No. 166.) As the term cannot be appropriated as a trademark or a trade name, no action for violation thereof can be maintained, as none is granted by the statute in such cases. The right to damages and for an injunction for infringement of a trademark or a trade name is granted only to those entitled to the exclusive use of a registered trademark or trade name. (Section 23, Republic Act No. 166.) It is evident, therefore, that no action may lie in favor of the plaintiffs-appellants herein for damages or  injunctive relief for the use by the defendants-appellees of the name "Wellington." b) NO. The concept of unfair competition has received the attention of this Court in two previous cases, that of  Ang vs. Teodoro1 (2 Off. Gaz., No. 7, 673) and Teodoro Kalaw Ng  Khe vs. Lever Brothers Co.2 (G.R. No. 46817, promulgated on April 18, 1941.) In the first case this Court stated that even a name or phrase not capable of appropriation as trademark or trade name may, by long and exclusive use by a business with reference thereto or to its products, acquire a proprietary connotation, such that the name or phrase to the purchasing public becomes associated with the business or the products and entitled to protection against unfair competition. But in the case at bar, the principle therein enunciated cannot be made to apply because the evidence submitted by the appellants did not prove that their business has continued for so long a time that it has become of consequence and acquired a goodwill of considerable value, such that its articles and products have acquired a well-known reputation and confusion will result by the use of the disputed name by the defendants' department store. It is true that appellants business appears to have been established a few years before the war and appellees' after 

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liberation, yet it seems appellees' business and goodwill are the products of their own individual initiative, not wrested by unfair competition from appellants' business and goodwill.

31. G.R. No. L-3952. December 29, 1953.]  MASSO HERMANOS, S. A., petitioner, vs. DIRECTOR OF PATENTS, respondent. Petitioner’s claim: Masso Hermanos, S.A., is the registered owner under Act No. 666 of the trademark composed of the word "Cosmopolite" used on canned fish. On June 14, 1948, the petitioner, Masso Hermanos, applied to the Director of Patents for a new certificate of registration of said trademark under the provisions of section 41 (a) of Republic Act No. 166. Respondent’s claim: The word "Cosmopolite", as a trademark for canned fish is descriptive of said goods and, therefore, could not have been legally registered as a trademark under the provisions of Act No. 666 and, consequently, is not entitled to registration under section 41 (a) of Republic Act No. 166. The respondent Director of Patents contends that the original registration of the trademark under Act No. 666 was "null and void ab initio" because the word "cosmopolite" is descriptive and, therefore, the registration thereunder is not subsisting. Issue: Whether the word “Cosmopolite” is descriptive and therefore cannot be registered as a trademark Ruling: NO. The word "Cosmopolite" does not give the name, quality or description of the canned fish for which it is used. It does not even describe the place of origin, for it does not indicate the country or place where the canned fish was manufactured. The court is, therefore, of the opinion that the registration of the trademark "Cosmopolite" under   Act No. 666 was valid and is subsisting. In view of the foregoing, the ruling of the respondent Director of Patents is set aside and he is ordered to issue to the petitioner a new certificate of registration of the trademark in exchange for the old one No. 1881 surrendered to him on June 18, 1948.

32.

G.R. No. L-8072. October 31, 1956.]  LIM HOA, petitioner, vs. DIRECTOR OF PATENTS, respondent. Petitioner’s claim: Lim Hoa, filed with the Patent Office an application for the registration of a trademark, consisting of a representation of two midget roosters in an attitude of combat with the word “Bantam” printed above them, he claiming that he had used said trademark on a food seasoning product since April 25 of that year. The application was published in the Official Gazette in its issue of February, 1953, released for circulation on April 18, of the same year. On  April 30, 1953, the Agricom Development Co., Inc., a domestic corporation, opposed the application on several grounds, among others, that the trademark sought to be registered was confusingly similar to its register mark, consisting of a pictorial representation of a hen with the words “Hen Brand” and “Marca Manok”, which mark or brand was also used on a food seasoning product, before the use of the trademark by the applicant.

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Respondent’s claim: The family of C. Javier Advincula, since the year 1946, had adopted and used as a trademark of said food seasoning product manufactured by it, the pictorial representation of a hen. In 1947, the members of the Advincula family organized the Agricom Development Co., Inc and said corporation took over the manufacture of the same food product of the Advincula family, including the use of the brand of the pictorial representation of a hen but adding to it the word “Hen”. In the year 1948, an addition was made to the brand with the words “Ve-Tsin, Hen Brand” and “Marca Manok,” and since then, on its food seasoning product at different times, labels were used, in different colors but bearing the representation of a hen and the words just mentioned. So that the application to register applicant’s brand, consisting of two roosters is an attitude of combat, with the word “Bantam” printed above them, came along after  the use and registration of the mark or brand of the corporation and its predecessor, the  Advincula family. The Director of Patents issued his order dated June 26, 1954, wherein he found and held that to allow the registration of the applicant’s trademark would likely cause confusion or mistake or  deceive purchasers, and he refused registration of said trademark, under Rule 178 of the Revised Rules of Practice in Trademark Cases, 1953. Issue: Whether or not Lim Hao should be allowed to register as trademark a representation of  two midget roosters in an attitude of combat with the word “Bantam” printed above them Held: No. There is such similarity between the two brands as to cause confusion in the mind of  the public that buys the food seasoning product on the strength and on the indication of the trademark or brand identifying or distinguishing the same. that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or  dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; ynor it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of  infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. The danger of confusion in trademarks and brands which are similar may not be so great in the case of commodities or articles of relatively great value, such as, radio and television sets, air  conditioning units, machinery, etc., for the prospective buyer, generally the head of the family or  a businessman, before making the purchase, reads the pamphlets and all literature available, describing the article he is planning to buy, and perhaps even makes comparisons with similar  articles in the market. He is not likely to be deceived by similarity in the trademarks because he makes a more or less thorough study of the same and may even consult his friends about the relative merit and performance of the article or machinery, as compared to others also for sale. But in the sale of a food seasoning product, a kitchen article of everyday consumption, the circumstances are far different. Said product is generally purchased by cooks and household help, sometimes illiterate who are guided by pictorial representations and the sound of the word descriptive of said representation. The two roosters appearing in the trademark of the applicant and the hen appearing on the trademark of the corporation although of different sexes, belong to the same family of chicken, known as manok in all the principal dialects of the Philippines, and when a cook or a household help or even a housewife buys a food seasoning product for  the kitchen the brand of “Manok” or “Marca Manok” would most likely be upper most in her mind and would influence her in selecting the product, regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even deception.

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33. G.R. No. L-14761. January 28, 1961.]   ARCE SONS AND COMPANY, petitioner, vs. SELECTA BISCUIT COMPANY, INC, ET AL., respondents.

Petitioner’s Contention: Petitioner ARCE SONS started his milk business as early as 1933. He sold his milk products in bottles covered with caps on which the words 'SELECTA FRESH MILK' were inscribed. They filed an opposition to the application for patents filed by respondent Selecta Biscuit Company. They alleged that: (1) that the mark "SELECTA" had been continuously used by petitioner in the manufacture and sale of its products, including cakes, bakery products, milk and ice cream from the time of its organization and even prior thereto by its predecessor-in-interest, Ramon Arce; (2) that the mark "SELECTA" has already become identified with name of the petitioner and its business; (3) that petitioner had warned respondent not to use said mark because it was already being used by the former, but that the latter ignored said warning; •

•

(4) that respondent is using the word "SELECTA" as a trade-mark as bakery products in unfair competition with the products of petitioner thus resulting in confusion in trade; (5) that the mark to which the application of respondent refers has striking resemblance, both in appearance and meaning, to petitioner's mark as to be mistaken therefor by the public and cause respondent's goods to be sold as petitioner's; and (6) that actually a complaint has been filed by the petitioner against respondent for unfair competition in the Court of First Instance of Manila asking for  damages and for the issuance of a writ of injunction against respondent enjoining the latter for continuing with the use of said mark.

Respondent’s Contention: On August 31, 1955, Selecta Biscuit Company, Inc., hereinafter referred to as respondent, filed with the Philippine Patent Office a petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery products alleging that it is in actual use thereof for not less than two months before said date and that "no other  persons, partnership, corporation or association ... has the right to use said trade-mark in the Philippines, either in the identical form or in any such near resemblance thereto, as might be calculated to deceive." Respondents also averred that : (1) that its products are biscuits, crackers, and cookies, wrapped in cellophane packages, place in tin containers, and that its products may last a year with out spoilage, while the ice cream, milk, cakes and other bakery products which petitioner manufactures last only for two or three days; (2) that the sale and distribution of petitioner's products are on retail basis, limited to the City of Manila and suburbs, and its place of business is localized at Azcarraga, corner of Lepanto Street and at Dewey Blvd., Manila, while that •

•

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of respondent is on a wholesale basis, extending throughout the length and breadth of the Philippines; (3) that petitioner's signboard on its place of business reads 'SELECTA' and on its delivery trucks "Selecta, Quality Always, Restaurant and Caterer, Azcarraga, Dewey Blvd., Balintawak and Telephone number," in contrast with respondent's signboard on its factory which reads "Selecta Biscuit Company, Inc.," and on its delivery trucks "Selecta Biscuit Company, Inc., Tuason Avenue, Malabon, Rizal, Telephone No. 2-13-27; (4) that the business name of petitioner is different from the business name of  respondent; (5) that petitioner has only a capital investment of P25,000.00 whereas respondent has a fully paid-up stock in the amount of P234,000.00 out of the P500,000.00 authorized capital, (6) that the use of the name 'SELECTA' by respondent cannot lead to confusion in the business operation of the parties. RULING: The foregoing unmistakably show that petitioner, through its predecessor-in-interest, had made use of the word "SELECTA" not only as a trade-name indicative of the location of the restaurant where it manufactures and sells its products, but as trade-mark is used. This is not only in accordance with its general acceptation but with our law on the matter. " Trade-mark' or trade-name', distinction being highly technical, is sign, device, or mark by which articles produced are dealt in by particular person or organization are distinguished or  distinguishable from those produced or dealt in by other."  A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular  producer or manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of the products to which it is attached." The term 'trade-mark' includes 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 from those manufactured, sold or dealt in by others." Verily, the word 'SELECTA' has been chosen by petitioner and has been inscribed on all its products to serve not only as a sign or symbol that may indicate that they are manufactured and sold by it but as a mark of authenticity that may distinguish them from the products manufactured and sold by other merchants or businessmen. The Director of Patents, therefore, erred in holding that petitioner made use of that word merely as a trade-name and not as a trade-mark within the meaning of the law. 1 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. 2 In this sense, its used 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 used 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 

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damages in a civil action from any person who may have sold goods of similar kind bearing such trade-mark.

34. MEAD JOHNSON & COMPANY, petitioner, vs. N. V. J. VAN DORP, LTD., ET AL., respondents.

Petitioner’s Claim: Mead Johnson & Company, a corporation organized under the laws of Indiana, U.S.A., being the owner of the trademark "ALACTA" used for powdered half-skim milk, which was registered with the Patent Office on June 12, 1951, filed an opposition on the ground that it will be damaged by the said registration as the trademark "ALASKA" and pictorial representation of a Boy's Head within a rectangular design (ALASKA disclaimed), used for milk, milk products, dairy products and infant's foods, is confusingly similar to its trademark "ALACTA". Respondent’s Claim: In answer to the opposition the applicant alleged that its trademark and product "ALASKA" are entirely different from oppositor's trademark and product "ALACTA", since applicant's product covers milk, milk products, dairy products and infant's foods which fall under Class 47 Foods and Ingredients of Foods, while oppositor's products cover pharmaceutical preparations for  nutritional needs which fall under Class 6, which refers to Medicines and Pharmaceutical Preparations. Issue: Whether there ALASKA is confusingly similar with ALACTA Held: NO. We have examined the two trademarks as they appear in the labels attached to the containers which both petitioner and respondent display for distribution and sale and we are impressed more by the dissimilarities than by the similarities appearing therein in the same manner as the Director of the Patent Office, and because of this impression we are persuaded that said Director was justified in overruling petitioner's opposition. Hence, we are not prepared to say that said Director has erred in overruling said opposition. Isa Pang digest ng 34 Respondent: *filed an application for the registration of the trademark "ALASKA and pictorial representation of a Boy's Head within a rectangular design." * alleged that its trademark and product "ALASKA" are entirely different from oppositor's trademark and product "ALACTA", since applicant's product covers milk, milk products, dairy products and infant's foods which fall under Class 47 Foods and Ingredients of Foods, while oppositor's products cover pharmaceutical preparations for nutritional needs which fall under  Class 6, which refers to Medicines and Pharmaceutical Preparations. Petitioner: *filed an opposition on the ground that it will be damaged by the said registration as the trademark "ALASKA" and pictorial representation of a Boy's Head within a rectangular design,

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used for milk, milk products, dairy products and infant's foods, is confusingly similar to its trademark "ALACTA". * contends that the Director of the Patent Office erred (1) in holding that the mark which respondent seeks to register does not resemble petitioner's mark as to be likely when applied to the goods to cause confusion or mistake or to deceive purchasers, and (2) in holding that the trademark sought to be registered has become distinctive based on its extensive sales. Hence, oppositor filed the present petition for review. ISSUE: WON the trademark ALASKA is registrable. HELD: YES. It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are similarities in spelling, appearance and sound for both are composed of six letters of three syllables each and each syllable has the same vowel, but in determining if they are confusingly similar a comparison of said words is not the only determinant factor. The trademarks in their entirety as they appear in the respective labels must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. Having this view in mind, we believe that while there are similarities in the two marks there are also differences or dissimilarities which are glaring and striking to the eye as the former. Thus we find the following dissimilarities in the two marks: (a) The sizes of the containers of the goods of petitioner differ from those of respondent. The goods of petitioner come in one-pound container while those of respondent come in three sizes, to wit: 14-ounce tin of full condensed full cream milk; 14-1/2-ounce tin of evaporated milk; and 6ounce tin of evaporated milk. (b) The colors too differ. One of petitioner's containers has one single background color, to wit: light blue; the other has two background colors, pink and white. The containers of respondent's goods have two color bands, yellowish white and red. (c) Petitioner's mark "ALACTA" has only the first letter capitalized and is written in black. Respondent's mark "ALASKA" has all the letters capitalized written in white except that of the condensed full cream milk which is in red.  Again, coming to the goods covered by the trademarks in question, we also notice the following dissimilarities: In the petitioner's certificate of registration, it appears that the same covers "Pharmaceutical Preparations which Supply Nutritional Needs" which fall under Class 6 of the official classification as Medicines and Pharmaceutical Preparations", thus indicating that petitioner's products are not foods or ingredients of foods but rather medicinal and pharmaceutical preparations that are to be used as prescribed by physicians. On the other hand, respondent's goods cover "milk, milk products, dairy products and infant's foods" as set forth in its application for registration which fall under an entirely different class, or under Class 47 which refers to "Foods and Ingredients of Foods", and for use of these products there is no need or  requirement of a medical prescription. We have examined the two trademarks as they appear in the labels attached to the containers which both petitioner and respondent display for distribution and sale and we are impressed more by the dissimilarities than by the similarities appearing therein in the same manner as the Director of the Patent Office, and because of this impression we are persuaded that said Director was justified in overruling petitioner's opposition. Hence, we are not prepared to say that said Director has erred in overruling said opposition.

35. G.R. No. L-18289. March 31, 1964.] 

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 ANDRES ROMERO, petitioner, vs. MAIDEN FORM BRASSIERE CO., INC. and THE  DIRECTOR OF PATENTS, respondents. Facts: On February 12, 1957, Maiden Form Brassiere Co., Inc., respondent company, a foreign corporation filed with respondent director of patents an application for registration pursuant to RA No.166 of the trademark “Adagio” for the brassieres manufactured by it, and was granted by the Director of Patents. Petitioner Andres Romero filed with the Director a petition for  cancellation if said trademark arguing that “Adagio” has become a common descriptive name of  a particular style of brassiere and is, therefore, unregistrable, and that the said trademark had been used by local brassiere manufacturers since 1948 without objection on the part of  respondent company. Issue: WON the trademark “Adagio” has become a common descriptive name of a particular style of  brassiere and is therefore unregistrable. Held: No. The trademark “Adagio” is a musical term, which means slowly or in an easy manner and was used as a trademark by the owners thereof because they are musically inclined. Being a musical term, it is used in an arbitrary (fanciful) sense as a trade mark for brassieres manufactured by respondent company. It also appears that respondent company has likewise adopted other musical terms to identify, as a trademark, the different styles or types of  brassieres. As respondent director pointed out, “the fact that said mark is used also to designate a particular style of brassiere, does not affect its registrability as a trademark.” 36. G.R. No. L-18337. January 30, 1965.]  CHUA CHE, petitioner, vs. PHILIPPINE PATENT OFFICE and SY TUO, respondents.

PETITIONER’S CONTENTION: Chua Che presented with the Philippines Patent Office a petition praying for the registration in his favor the trade name "X-7" for soap. It argues that the principal issue is "priority of adoption and use." Since opposer has not yet used "X-7" mark on soap, but will still use it, applicant should be entitled to the registration of the same. It has been pointed out by appellant that the product upon which the trademark X-7 will be used (laundry soap) is different from those of appellee's, and therefore no infringement and/or  confusion may result

RESPONDENT’s CONTENTION: Respondent opposed the registration. The registration of the trademark "X-7" in the name of  applicant CHUA CHE will likely mislead the public so as to make them believe that said goods are manufactured or sponsored by or in some way in trade associated with opposer.

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Opposer's record shows that he has been using since July 31, 1953 the trademark X-7 on perfume, lipstick and nail polish; that he has spent substantial amounts of money in building upon the goodwill of this trademark through advertisements in all kinds of media — through newspapers of general circulation, by means of billboards in various places in the Philippines, and also over the radio and television. In these advertisements opposer  has spent about P120,000.00. There is no question that opposer enjoys a valuable goodwill in the trademark X-7. The products of the parties, while specifically different, are products intended for use in the home and usually have common purchasers

The Director of Patents rendered judgment in favor of Sy Tuo. ISSUE: WHETHER OR NOT PURCHASERS OF X-7 PERFUME, LIPSTICK AND NAIL POLISH WOULD LIKELY UPON SEEING X-7 LAUNDRY SOAP, ATTRIBUTE COMMON ORIGIN TO THE PRODUCTS OR ASSUME THAT THERE EXISTED SOME KIND OF TRADE CONNECTION BETWEEN APPLICANT AND OPPOSER. HELD: YES. The fact that appellee Sy Tuo has not yet used the trademark "X-7" on granulated soap, the product on which appellant wants to use the said trademark. The circumstance of  non-actual use of the mark on granulated soap by appellee, does not detract from the fact that he has already a right to such a trademark and should, therefore, be protected. The observation of the Director of Patents to the effect that "the average purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think that the products have common origin or sponsorship," is indeed well taken. While it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, as previously required under the Trade Mark Act of 1905, registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake, or  deception, even though the goods fall into different categories. (Application of Sylvan Sweets Co., 205 F. 2nd, 207.) The products of appellee are common household items nowadays, in the same manner as laundry soap. The likelihood of purchasers to associate those products to a common origin is not far-fetched. Both from the standpoint of priority of use and for the protection of the buying public and, of course, appellee's rights to the trademark "X-7", it becomes manifest that the registration of said trademark in favor of applicant-appellant should be denied.

G.R. No. L-20635. March 31, 1966.] YEN  ETEPHA, A.G., petitioner, vs. DIRECTOR PHARMACEUTICALS, INC., respondents. 37.

OF

PATENTS

and

WESTMONT 

38. [G.R. No. 112012. April 4, 2001.]  SOCIETE DES PRODUITS NESTLE v. CA and CFC CORP  YNARES-SANTIAGO, J.: FACTS: CFC Corp filed with the BPTTT an application for the registration of the trademark FLAVOR MASTER for instant coffee. Societe Des Produits Nestle, a Swiss company registered

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under Swiss laws and domiciled in Switzerland, filed an Opposition claiming that the trademark is confusingly similar to its trademarks for coffee and coffee extracts: MASTER ROAST and MASTER BLEND. Likewise, an opposition was filed by Nestle Philippines, a Philippine corp and a licensee of  Societe. Nestle claimed that the use by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word  present in the 3 trademarks is MASTER; or that the goods of CFC might be mistaken as having originated from the latter. BPTTT denied CFC’s application for registration applying the dominancy test. CA reversed applying the holistic test. ISSUE: Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND and thus should be denied registration. HELD: YES applying the dominancy test. •

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Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons to purchase the one supposing it to be the other. In determining if  colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. The holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. In infringement or trademark cases in the Philippines, particularly in ascertaining whether  one trademark is confusingly similar to or is a colorable imitation of another, no set rules can be deduced. Each case must be decided on its own merits. The CA held that the test to be applied should be the totality or holistic test, since what is of  paramount consideration is the ordinary purchaser who is, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee, and would therefore be "less inclined to closely examine specific details of  similarities and dissimilarities" between the two competing products, then it would be less likely for the ordinary purchaser to notice that CFC’s trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s uses red and brown. The application of  the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. The totality or  holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks.

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This Court agrees with the BPTTT when it applied the test of dominancy. The word MASTER is the dominant feature of opposer’s mark. It is printed across the middle portion of  the label in bold letters almost twice the size of the printed word ROAST. Further, the word MASTER has always been given emphasis in the TV and radio commercials and other  advertisements made in promoting the product. Robert Jaworski and Atty. Ric Puno, the personalities engaged to promote the product, are given the titles Master of the Game and Master of the Talk Show, respectively. In due time, because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the opposer’s goods. When one looks at the label bearing the trademark FLAVOR MASTER, one’s attention is easily attracted to the word MASTER, rather than to the dissimilarities that exist. Therefore, the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. The word "MASTER" is neither a generic nor a descriptive term. As such, it 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. 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. The term "MASTER" is a suggestive term brought about by the advertising scheme of  Nestle. Suggestive terms are those which 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" 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.

39. [G.R. No. 111580. June 21, 2001.]  SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD., SHANGRI-LA PROPERTIES, INC., MAKATI SHANGRI-LA HOTEL AND RESORT, INC. and KUOK PHILIPPINE  PROPERTIES, INC., petitioners, vs. THE COURT OF APPEALS, HON. FELIX M. DE  GUZMAN, as Judge, RTC of Quezon City, Branch 99 and DEVELOPERS GROUP OF  COMPANIES, INC., respondents. YNARES-SANTIAGO, J.: FACTS: On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc.

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(hereinafter collectively referred as the "Shangri-La Group"), filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition, praying for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of  Companies, Inc., on the ground that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975, much earlier than the alleged first use thereof by the Developers Group in 1982. Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo. The Developers Group filed an opposition to the application. Almost three (3) years later, or on April 15, 1991, the Developers Group instituted a complaint for  infringement and damages with prayer for injunction, against the Shangri-La Group. On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the infringement case on account of the pendency of the administrative proceedings before the BPTTT. This was denied, as well as the Motion for Reconsideration, by the trial court. The Shangri-La Group filed a petition for certiorari before the Court of Appeals. The Court of Appeals affirmed the decision of the trial court. ISSUE: Whether or not despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark. HELD: YES. Section 151.2 of the Intellectual Property Code substantially provides that the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not  constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the subsequent filing of an infringement case by registrant Developers Group. The law and the rules are explicit. The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. As such, Developers Group's Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate." Since the certificate still subsists, Developers Group may thus file a corresponding infringement suit and recover  damages from any person who infringes upon the former's rights. Furthermore, the issue raised before the BPTTT is quite different from that raised in the trial court. The issue raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation, as the Shangri-La Group claims prior ownership of the disputed mark. On the other hand, the issue raised before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group within the contemplation of Section 22 of  Republic Act 166.

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Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of   Appeals, the infringement case can and should proceed independently from the cancellation case with the Bureau so as to afford the owner of certificates of registration redress and injunctive writs. In the same light, so must the cancellation case with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) continue independently from the infringement case so as to determine whether a registered mark may ultimately be cancelled. However, the Regional Trial Court, in granting redress in favor of Developers Group, went further and upheld the validity and preference of the latter's registration over that of the ShangriLa Group. There can be no denying that the infringement court may validly pass upon the right of  registration, as provided under Section 161 of the Intellectual Property Code. With the decision of the Regional Trial Court upholding the validity of the registration of the service mark "ShangriLa" and "S" logo in the name of Developers Group, the cancellation case filed with the Bureau hence becomes moot. To allow the Bureau to proceed with the cancellation case would lead to a possible result contradictory to that which the Regional Trial Court has rendered, albeit the same is still on appeal. Such a situation is certainly not in accord with the orderly administration of justice. In any event, the Court of Appeals has the competence and jurisdiction to resolve the merits of the said RTC decision. To provide a judicious resolution of the issues at hand, The Court finds it appropriate to order  the suspension of the proceedings before the Bureau pending final determination of the infringement case, where the issue of the validity of the registration of the subject trademark and logo in the name of Developers Group was passed upon.

40. [G.R. No. 114802. June 21, 2001.]  DEVELOPERS GROUP OF COMPANIES, INC., petitioner, vs. THE COURT OF APPEALS, HON. IGNACIO S. SAPALO, in his capacity as Director, Bureau of Patents, Trademarks and Technology Transfer, and SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD., respondents. Facts: On June 21, 1988, the Shangri-La International Hotel Management, Ltd., (hereinafter  collectively referred as the "Shangri-La Group"), filed with the (BPTTT) a petition, for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc., They allege that the same was illegally and fraudulently obtained and appropriated for  the latter's restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975, much earlier than the alleged first use thereof by the Developers Group in 1982. Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo.

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The Developers Group filed an opposition to the application, which was docketed as Inter Partes Case No. 3529.  Almost three (3) years later, or on April 15, 1991, the Developers Group instituted with the Regional Trial Court of Quezon City, Branch 99, a complaint for infringement and damages against the Shangri-La Group. On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the infringement case on account of the pendency of the administrative proceedings before the BPTTT.This was denied by the trial court in a Resolution issued on January 16, 1992. Issue: whether, despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark. Ruling: YES. Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other  court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark  with the Bureau of Legal Affairs shall not constitute a prejudicial question that  must be resolved before an action to enforce the rights to same registered mark  may be decided. Furthermore, the issue raised before the BPTTT is quite different from that raised in the trial court. The issue raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation, as the Shangri-La Group claims prior ownership of  the disputed mark. On the other hand, the issue raised before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group within the contemplation of  Section 22 of Republic Act 166. 41. G.R. No. 139300. March 14, 2001.]   AMIGO MANUFACTURING, Inc., petitioner, vs. CLUETT PEABODY CO., INC., respondent. PANGANIBAN, J.: Facts: Respondent Cluett Peabody Co., Inc. (a New York corporation) filed a petition against Petitioner Amigo Manufacturing Inc. (a Philippine corporation) for cancellation of  trademark. Respondent claim exclusive ownership of the following trademark and devices, as used on men's socks: a) GOLD TOE; b) DEVICE, representation of a sock and magnifying glass on the toe of a sock; c) DEVICE, consisting of a plurality of gold colored lines arranged in parallel relation within a triangular area of toe of the stocking and spread from each other by lines of  contrasting color of the major part of the stocking; and d) LINENIZED.

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On the other hand, [petitioner's] trademark and device 'GOLD TOP, Linenized for Extra Wear' has the dominant color 'white' at the center and a 'blackish brown' background with a magnified design of the sock's garter, and is labeled 'Amigo Manufacturing Inc., Mandaluyong, Metro Manila, Made in the Philippines'. The Bureau Bureau of Patents Patents decided decided adverse adversely ly against against Amigo Manufac Manufacturin turing, g, Inc. The decision pivots on two point: the application of the rule of idem sonans and the existence of a confusing similarity in appearance between two trademarks. It found that the two trademarks are confusingly and deceptively similar to each other  are bindi binding ng upon upon the courts courts,, absen absentt any any suffic sufficie ient nt evide evidence nce to the cont contrary rary.. The Burea Bureau u considered the totality of the similarities between the two sets of marks and found that they were of such degree, number and quality as to give the overall impression that the two products are confusingly if not deceptively the same. The CA found that there is hardly any variance in the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show a representation of a man's foot wearing a sock, and the marks are printed in identical lettering. [Petitioner]'s mark is a combination of the different registered marks owned by [respondent]. Issues: (1) Was petit petition ioner' er's s trade trademar mark k used used in comme commerce rce in the the Phili Philipp ppine ines s earli earlier er than than respondent's actual use of its trademarks? (2) Is petitioner's petitioner's trademark confusingly similar to respondent's respondent's trademarks? (3) Is the Paris Convention applicable? Held: 1st Issue: Dates of First Use of Trademark and Devices (1)No. Respondent Respondent had actually used the trademark and the devices in question prior to petitioner's use of its own. During the hearing at the Bureau of Patents, respondent presented Bureau registrations indicating the dates of first use in the Philippines of the trademark and the devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and d) February 28, 1952, "Linenized." The registration registration of the above marks in favor favor of respondent respondent constitu constitutes tes prima facie facie evidence, which petitioner failed to overturn satisfactorily, of respondent's ownership of those marks, the dates of appropriation and the validity of other pertinent facts stated therein. Moreover, the validity of the Certificates of Registration was not questioned. Neither did petitioner present any evidence to indicate that they were fraudulently issued. Consequently, the claimed dates of respondent's first use of the marks are presumed valid. Clearly, they were ahead of petitioner's claimed date of first use of "Gold Top and Device" in 1958. Furthermo Furthermore, re, petition petitioner er register registered ed its trademar trademark k only with the suppleme supplemental ntal register register.. In La Chemise Lacoste v. Fernandez , Fernandez , the Court held that registration with the supplemental register gives no presumption of ownership of the trademark. 2nd Issue: Similarity of Trademarks (2) Yes. Petitioner points out that the director of patents erred in its application of the idem sonans rule, claiming that the two trademarks "Gold Toe" and "Gold Top" do not sound alike and are pronounced differently. It avers that since the words gold and toe are generic, respondent has no right to their exclusive use. The arguments of petitioner are incorrect. True, it would not be guilty of infringement on the basis alone of the similarity in the sound of petitioner's "Gold Top" with that of respondent's "Gold Toe." Admittedly, the pronunciations of the two do not, by themselves, create confusion.

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The Bureau of Patents, however, did not rely on the idem sonans test alone in arriving at its conclusion. This fact is shown in the following portion of its Decision: "As "As show shown n by the the draw drawin ings gs and and labe labels ls on file file,, the the mark mark regi regist ster ered ed by  Respondent is a combination of the abovementioned trademarks registered separately  by the petitioner in the Philippines and the United States. "With respect to the issue of confusing similarity between the marks of the  petitioner  petitioner and that of the respondent-registran respondent-registrantt applying the tests of idem sonans, the mark 'GOLD TOP & DEVICE' is confusingly similar with the mark 'GOLD TOE'. The difference in sound occurs only in the final letter at the end of the marks. For the same reason, hardly is there any variance in their appearance. appearance. 'GOLD TOE' and 'GOLD TOP'  are printed in identical lettering. Both show [a] representation of a man's foot wearing a sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by itself is a registered mark." 13 The Bureau considered the drawings and the labels, the appearance of the labels, the lettering, and the representation of a man's foot wearing a sock. Obviously, its conclusion is based on the totality of the similarities between the parties' trademarks and not on their sounds alone. In the present case, a resort to either the Dominancy Test or the Holistic Test shows that colorabl colorable e imitation imitation exists exists betwee between n respond respondent' ent's s "Gold "Gold Toe" and petition petitioner's er's "Gold "Gold Top." Top." A glance at petitioner's petitioner's mark shows that it definitely has a lot of similarities and in fact looks like a combinat combination ion of the trademar trademark k and devices devices that that respond respondent ent has already already register registered; ed; namely, namely, "Gold Toe," the representation of a sock with a magnifying magnifying glass, the "Gold Toe" representation and "linenized."  An examination of the products in question shows that their dominant features are gold checkered lines against a predominantly black background and a representation of a sock with a magnifying glass. In addition, both products use the same type of lettering. Both also include a representation of a man's foot wearing a sock and the word "linenized" with arrows printed on the label. Lastly, the names of the brands are similar -- "Gold Top" and "Gold Toe." Moreover, it must must also also be consi conside dered red that that petit petition ioner er and and respo respond nden entt are are enga engage ged d in the same same line line of  business. 3rd Issue:The Paris Convention (3)Yes. Petitioner claims that the CA erred in applying the Paris Convention. Although respondent registered its trademark ahead, petitioner argues that the actual use of the said mark mark is nece necessa ssary ry in orde orderr to be entit entitled led to the protecti protection on of the rights rights acquir acquired ed throu through gh registration.  As already discussed, respondent respondent registered its trademarks under the principal register, which means that the requirement of prior use had already been fulfilled. To emphasize, Section 5-A of Republic Act 166 requires the date of first use to be specified in the application for  regist registrat ration ion.. Since Since the the trade trademar mark k was was succe successf ssfull ully y regist registere ered, d, there there exist exists s a prima prima facie facie presumption presumption of the correctness of the contents thereof, including including the date of first use. Petitioner  has failed to rebut this presumption. Thus, Thus, appli applicab cable le is the Union Union Conve Convent ntion ion for the Protec Protectio tion n of Indus Industri trial al Prope Property rty adopted in Paris on March 20, 1883, otherwise known as the Paris Convention, of which the Philippines and the United States are members. Respondent is domiciled in the United States and is the registered owner of the "Gold Toe" trademark. Hence, it is entitled to the protection of  the Convention. A foreign-based trademark owner, whose country of domicile is a party to an international convention relating to protection of trademarks, 17 is accorded protection against infringement or any unfair competition as provided in Section 37 of Republic Act 166, the Trademark Law which was the law in force at the time this case was instituted.

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42. G.R. No. No. 118192. 118192. October 23, 1997.]  PRO PRO LINE LINE SPOR SPORTS TS CENTE CENTER, R, INC., INC., and QUES QUESTOR TOR CORP CORPORA ORATIO TION, N, petiti petitione oners, rs, vs. vs. COURT COURT OF APPEALS APPEALS,, UNIVERSA UNIVERSAL L ATHLETIC ATHLETICS S INDUSTR INDUSTRIAL IAL PRODUCT PRODUCTS, S, INC., INC., and  MONICO SEHWANI, respondents. Facts: Proline is the exclusive distributor of Spalding sports products in the Philippines, Philippines, while Questor, a US-based corporation became the owner of the trademark “Spalding”. They filed a petition against respondent Universal, a domestic corporation which manufactures and sell sports goods includin including g fake “spalding “spalding balls”. balls”. By virtue virtue of valid valid search search warrant warrant,, Universa Universal’s l’s factory factory was searched resulting to the seizure of fake “spalding balls” and the instruments used in the manufacture thereof. Civil and criminal cases were filed against Universal. The civil case was dropped for it was doubtful whether Questor had indeed acquired the registration rights over the mark “spalding”. The criminal case was also dismissed due to insufficiency of evidence through through a demurrer. The CA affirmed the lower court’s decision. Universal thereafter, filed for damages against Proline and Questor which was granted by the lower court and affirmed by the CA. Issue:  Are Proline and Questor liable for damages damages to Universal for the wrongful recourse to court proceedings? Held: Proline and Questor cannot be adjudged liable for damages for the alleged unfounded suit. Universal failed to show that the filing of criminal charges of petitioner herein was bereft of  probable cause. Petitioners could not have been moved by legal malice in instituting the criminal complaint for unfair competition. We are disposed, under circumstances, to hold that Proline as the authorized agent of  Questor, exercised sound judgment in taking the necessary legal steps to safeguard the interest of its principal with respect to the trademark in question.

43. G.R. No. No. 123248. 123248. October 16, 1997.]  TWIN TWIN ACE ACE HOLD HOLDIN INGS GS CORP CORPOR ORAT ATIO ION, N, peti petiti tion oner er,, vs. vs. COUR COURT T OF APPE APPEAL ALS S and  and  LORENZANA FOOD CORPORATION, respondents. Petitioner’s Claim: TWIN ACE filed a complaint complaint for replevin replevin to recover recover three hundred hundred eighty eighty thousand thousand (380,000) bottles of 350 ml., 375 ml, and 750 ml. allegedly owned by it but detained and used by LORENZANA as containers for native products without its express permission, in violation of  RA No. 623. This law prohibits the use of registered bottles and other containers for any purpose other than that for which they were registered without the express permission of the owner. Respondent’s Claim: LORENZANA moved to dismiss the complaint on the ground that RA No. 623 could not be invoked by TWIN ACE because the law contemplated containers of non-alcoholic beverages only. only. But, assuming assuming arguendo that that the the law law appl applie ied d in TWIN TWIN ACE' ACE's s favo favor, r, the the righ rightt of  LORENZANA to use the bottles as containers for its patis and other native products was expressly sanctioned by Sec. 6 of the same law and upheld by this Court in Cagayan Cagayan Valley  Enterprises, Enterprises , Inc . v . Court of Appeals. Appeals .

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Issue: Whether to grant the petition to enjoin Lorenzana from using the bottles of Twin Ace Held: We deny the petition. The question of whether registered containers of hard liquor such as rhum, gin, brandy and the like are protected by RA No. 623 has already been settled in Cagayan Valley Enterprises, Inc . Inc . v . Court of Appeals. Appeals . 7 In that case, the Court dealt squarely with the issue and ruled in the affirmative reasoning that hard liquor, although regulated, is not prohib prohibite ited d by law, law, hence hence,, still still withi within n the purvi purview ew of the phras phrase e "othe "otherr lawful lawful bever beverag ages" es" protecte protected d by RA No. 623, 623, as amended amended.. Consequ Consequentl ently y petition petitioner er therein therein Cagayan Valley  Enterprises, Enterprises , Inc. was enjoined from using the 350 ml. white flint bottles of La Tondeña, Inc., with the marks of owner ownershi ship p "La Tondeñ Tondeña, a, Inc." Inc." and and "Gine "Ginebra bra San San Migue Miguel" l" for its own own liquo liquor  r  products. But while we adopt the foregoing precedent and rule in accordance therewith, we will not decide this case in favor of petitioner because it is quite clear that respondent falls within the exemption exemption granted in Sec. 6 which states: " The provisions of this Act shall not be interpreted as  prohibiting  prohibiting the use of bottles as containers containers for "sisi," "bagoong," "bagoong," "patis," and similar native  products."  products."

44. G.R. Nos. Nos. L-27425 L-27425 & L-30505. L-30505. April 28, 1980.]  CONVE NVERSE RSE RUBBER CORP ORPORATIO ATION N and EDWAR WARDSON MANUFAC FACTUR TURING  ING  CORPORATION, plaintiffs-appellants, vs. JACINTO RUBBER & PLASTICS CO., INC., and   ACE RUBBER RUBBER & PLASTICS PLASTICS CORPORATION, CORPORATION, defendants-appe defendants-appellants. llants. Petitioner’s Contention: Plaintiffs contend that "Custombuilt" shoes are Identical in design and General appearance to "Chuck Taylor" and, claiming prior Identification of "Chuck Taylor" in the mind of the buying public in the Philippines, they contend that defendants are guilty of unfair competition competition by selling "Custombuilt" of the design and with the general appearance of "Chuck Taylor". The design and appearance of both products, as shown by the samples and photographs of both products, are not disputed. Respondent’s Contention: Defendants insist that (a) there is no similarity in design and general appearance between "Custombuilt" and "Chuck Taylor", pointing out that "Custombuilt" is readily Identifiable by the tradename "Custombuilt" appearing on the ankle patch, the heel patch, and on the sole. It is also vigorously contended by defendants that the registration of defendant Jacinto Rubber's trademark "Custombuilt" being prior to the registration in the Philippines of plaintiff Converse Rubber's trademark "Chuck Taylor", plaintiffs have no cause of action. It appears that defendant starte started d to manu manufac factur ture e and and sell sell "Custo "Custombu mbuilt ilt"" of its presen presentt desig design n and and with with its prese present nt appearance in 1962. ISSUE: WHETHE WHETHER R DEFE DEFENDA NDAT T IS GUILT GUILTY Y OF UNFAIR UNFAIR COMP COMPETI ETITIO TION N WHEN WHEN DEFE DEFENDA NDANT NT JACINTO RUBBER & PLASTICS CO., INC., MANUFACTURED AND SOLD RUBBER-SOLED CANVASS SHOES UNDER ITS REGISTERED TRADE MARK "CUSTOMBUILT” HELD:

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From said examination, We find the shoes manufactured by defendants to contain, as found by the trial court, practically all the features of those of the plaintiff Converse Rubber Corporation and manufactured, sold or marketed by plaintiff Edwardson Manufacturing Corporation, except for heir respective brands, of course. We fully agree with the trial court that "the respective designs, shapes, the colors of the ankle patches, the bands, the toe patch and the soles of the two products are exactly the same ... (such that) at a distance of a few meters, it is impossible to distinguish "Custombuilt" from "Chuck Taylor". These elements are more than sufficient to serve as basis for a charge of unfair competition. Even if not all the details just mentioned were Identical, with the general appearances alone of the two products, any ordinary, or even perhaps even a not too perceptive and discriminating customer could be deceived, and, therefore, Custombuilt could easily be passed off for Chuck Taylor. Jurisprudence supports the view that under such circumstances, the imitator must be held liable. 45. G.R. No. L-26676. July 30, 1982.]  PHILIPPINE REFINING CO., INC., petitioner, vs. NG SAM and THE DIRECTOR OF  PATENTS, respondents.

ISSUE: Whether or not 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 or origin. Petitioner’s Contention: The trademark "CAMIA" was first used ill the Philippines by petitioner Philippine Refining Co. on its products in 1922. In 1949, petitioner caused the registration of said trademark with the Philippine Patent Office under certificates of registration Nos. 1352-S and 1353S, both issued on May 3, 1949. Certificate of Registration No. 1352-S covers vegetable and animal fats, particularly lard, butter and cooking oil, all classified under Class 47 (Foods and Ingredients of Food) of the Rules of Practice of the Patent Office, while certificate of registration No. 1353-S applies to abrasive detergents, polishing materials and soap of all kinds (Class 4). Petitioner filed an opposition against respondent Ng Sam’s application for patents. •

•

Respondent’s Contention: On November 25, 1960, respondent Ng Sam, a citizen residing in Iloilo City, filed an application with the Philippine Patent office for registration of the Identical trademark "CAMIA" for his product, ham, which likewise falls under Class 47. Alleged date of first use of the trademark by respondent was on February 10, 1959. •

RULING: 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. In fine, the Court hold that the business of the parties are non-competitive and their  products so unrelated that the use of identical trademarks is not likely to give rise to confusion, much less cause damage to petitioner. The records of this case disclose that the term "CAMIA" has been registered as a trademark not only by petitioner but by two (2) other concerns.

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The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, cooking oil, abrasive detergents, polishing materials and soap of all kinds. Respondent desires to use the same on his product, ham. 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. 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 observation and conclusion of the Director of Patents are correct. The particular goods of  the parties are so unrelated that consumers would not in any probability mistake one as the source or origin of the product of the other. "Ham" is not a daily food fare for the average consumer. One purchasing ham would exercise a more cautious inspection of what he buys on account of it price. Seldom, if ever, is the purchase of said food product delegated to household helps, except perhaps to those who, like the cooks, are expected to know their business. Besides, there can be no likelihood for the consumer of respondent's ham to confuse its source as anyone but respondent. The facsimile of the label attached by him on his product, his business name "SAM'S HAM AND BACON FACTORY" written in bold white letters against a reddish orange background, is certain to catch the eye of the class of consumers to which he caters. In addition, the goods of petitioners are basically derived from vegetable oil and animal fats, while the product of respondent is processed from pig's legs. A consumer would not reasonably assume that, petitioner has so diversified its business as to include the product of respondent.

46. G.R. No. L-29971. August 31, 1982.]  ESSO STANDARD EASTERN, INC., petitioner, vs. THE HONORABLE COURT OF   APPEALS ** and UNITED CIGARETTE CORPORATION, respondents. FACTS: Petitioner’s Claim: The complaint alleged that the petitioner had been for many years engaged in the sale of  petroleum products and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public had always taken the trademark ESSO as equivalent to high quality petroleum products. Petitioner asserted that the continued use by private respondent of  the same trademark ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its own products. Respondent’s Claim: In its answer, respondent admitted that it used the trademark ESSO on its own product of cigarettes, which was not Identical to those produced and sold by petitioner and therefore did not in any way infringe on or imitate petitioner's trademark. Respondent contended that in order  that there may be trademark infringement, it is indispensable that the mark must be used by one person in connection or competition with goods of the same kind as the complainant's. ISSUE: WHETHER THERE WAS TRADEMARK INFRINGEMENT HELD: It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum

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products, and the product of respondent, cigarettes, are non-competing. But as to whether  trademark infringement exists depends for the most part upon whether or not the goods are so related that the public may be, or is actually, deceived and misled that they came from the same maker or manufacturer. In the situation before us, the goods are obviously different from each other with "absolutely no iota of similitude" as stressed in respondent court's judgment. They are so foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's 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 unrelated articles of a different kind.

47. G.R. Nos. 63796-97. May 21, 1984.]  LA CHEMISE LACOSTE, S. A., petitioner, vs. HON. OSCAR C. FERNANDEZ, Presiding  Judge of Branch XLIX, Regional Trial Court, National Capital Judicial Region, Manila and  GOBINDRAM HEMANDAS, respondents. Facts: La chemise Lacoste is a French corporation and the actual owner of the trademarks “Lacoste,” “Chemise Lacoste,” “Crocodile Device” and a composite mark consisting of the word “Lacoste” and a representation of a crocodile/alligator, used on clothings and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark “Chemise Lacoste and Q Crocodile Device” both in the supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the “Crocodile device” and “Lacoste”. Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of “Lacoste.”In 1983, La Chemise Lacoste filed with the NBI a lettercomplaint alleging acts of unfair competition committed by Hemandas and requesting the agency’s assistance. A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed motion to quash the warrants, which the court granted. The search warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari. Issue: WON the trademark “Chemise Lacoste and Q Crocodile Device” is registrable. Held: No. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964, Hemandas cannot be allowed to continue the trademark “Lacoste” for  the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce. Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register. It must be noted that one may be declared an unfair competitor even if his competing trademark is registered. La Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which include “Lacoste.” 48. G.R. No. L-32747. November 29, 1984.]  FRUIT OF THE LOOM, INC., petitioner, vs. COURT OF APPEALS and GENERAL GARMENTS CORPORATION, respondents. Facts: Petitioner, a corporation duly organized and existing under the laws of the State of Rhode Island, United States of America, is the registrant of a trademark, FRUIT OF THE LOOM. The

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classes of merchandise covered by the Registration are men’s, women’s and children’s underwear, which includes women’s panties and which fall under class 40 in the Philippine Patent Office’s classification of goods. Private respondent, a domestic corporation, is the registrant of a trademark FRUIT FOR EVE in the Philippine Patent Office and was issued a Certificate of Registration No. 10160, on January 10, 1963 covering garments similar to petitioner’s products like women’s panties and pajamas. On march 31, 1965, petitioner filed before the lower court, a complaint for infringement of  trademark and unfair competition against the herein private respondent. Petitioner principally alleged in the complaint that private respondent’s trademark FRUIT FOR EVE is confusingly similar to its trademark FRUIT OF THE LOOM used also on women’s panties and other textile products. Furthermore, it was also alleged therein that the color get-up and general appearance of private respondent’s hang tag consisting of a big red apple is a colorable imitation to the hang tag of petitioner.  After trial, judgment was rendered by the lower court in favor of herein petitioner. The CA reversed the judgment of the lower court and dismissed the complaint. Issue: WON the products of the parties are confusingly similar. Held: In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT. We agree with the respondent court that by mere pronouncing the two marks, it could hardly be said that it will provoke a confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE. We do not agree with petitioner that the dominant feature of both trademarks is the word FRUIT for even in the printing of the trademark in both hang tags, the word FRUIT is not at all made dominant over the other words.  As to the design, and coloring scheme of the hang tags, the similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. We are impressed more by the dissimilarities than the similarities appearing therein. We hold that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse or deceive an ordinary purchaser. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of  intelligence to be able to see the obvious differences between the two trademarks in question. Furthermore, we believe that a person who buys petitioner’s products and starts to have a liking for it, will not get confused and reach out for private respondent’s products when she goes to a garment store. 49. G.R. No. L-27906. January 8, 1987.]  CONVERSE RUBBER CORPORATION, petitioner, vs. UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE, DIRECTOR OF PATENTS,

FERNAN, J.: Universal Rubber Products, Inc. filed an application with the Philippine Patent office for  registration of the trademark “UNIVERSAL CONVERSE AND DEVICE” used on rubber shoes and rubber slippers. PETITIONER’s CONTENTION

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Converse Rubber Corporation filed its opposition to the application for registration on grounds that (a) the trademark sought to be registered is confusingly similar to the word “CONVERSE” which is part of petitioner’s corporate name “CONVERSE RUBBER CORPORATION” as to likely deceive purchasers of products on which it is to be used to an extent that said products may be mistaken by the unwary public to be manufactured by the petitioner; and, (b) the registration of respondent’s trademark will cause great and irreparable injury to the business reputation and goodwill of petitioner in the Philippines and would cause damage to said petitioner within the meaning of Section 8, RA 166, as amended. RESPONDENT’s CONTENTION 1] The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in existence since July 31, 1946; it is duly organized under the laws of Massachusetts, USA and doing business at 392 Pearl St., Malden, County of Middle sex, Massachusetts; 2] Petitioner is not licensed to do business in the Philippines and it is not doing business on its own in the Philippines; and, 3] Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCK TAYLOR "and "ALL STAR AND DEVICE".

The Director of Patents Evalle dismissed the opposition of Converse Rubber and gave due course to Universal Rubber’s application. MR denied. ISSUE: WHETHER OR NOT THE RESPONDENT'S PARTIAL APPROPRIATION OF PETITIONER'S CORPORATE NAME IS OF SUCH CHARACTER THAT IT IS CALCULATED TO DECEIVE OR CONFUSE THE PUBLIC TO THE INJURY OF THE PETITIONER TO WHICH THE NAME BELONGS. HELD: YES. There is confusing similarity between its trademark “UNIVERSAL CONVERSE  AND DEVICE” and Converse Rubber’s corporate name and/or its trademarks “CHUCK TAYLOR” and “ALL STAR DEVICE” which could confuse the purchasing public to the prejudice of Converse Rubber. The trademark of “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark of  Converse Rubber which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes. The determinative factor in ascertaining whether or not marks are confusingly similar to each other “is not whether the challenged mark would actually cause commission 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. 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 new brand for it.” Even if not all the details just mentioned were identical, with the general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived.”

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 A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name. Appropriation by another of the dominant part of a corporate name is an infringement. From a cursory appreciation of the corporate name of “CONVERSE RUBBER CORPORATION,’ it is evident that the word “CONVERSE” is the dominant word which identifies Converse Rubber  from other corporations engaged in similar business. Universal Rubber admitted Converse Rubber’s existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. Knowing, therefore, that the word “CONVERSE” belongs to and is being used by Converse Rubber, and is in fact the dominant word in Converse Rubber’s corporate name, Universal Rubber has no right to appropriate the same for use on its products which are similar  to those being produced by Converse Rubber.

50.

G.R. No. 75067. February 26, 1988.] YEN  PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner, vs. THE  INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION, respondents. 51. G.R. No. 78298. January 30, 1989.]  WOLVERINE WORLDWIDE, INC., petitioner, vs. HONORABLE COURT OF APPEALS AND LOLITO P. CRUZ, respondents. FACTS: On February 8, 1984, the petitioner, a foreign corporation organized and existing under  the laws of the United States, brought a petition before the Philippine Patent Office the cancellation of Certificate of Registration of the trademark HUSH PUPPIES and DOG DEVICE issued to the private respondent, a Filipino citizen. In support of its petition for cancellation, the petitioner alleged, inter alia, that it is the registrant of the internationally known trademark HUSH PUPPIES and the DEVICE of a Dog in the United States and in other countries which are members of the Paris Convention for the Protection of Industrial Property, that the goods sold by the private respondent, on the one hand, and by the petitioner, on the other hand, belong to the same class such that the private respondent’s use of the same trademark in the Philippines (which is a member of said Paris Convention) in connection with the goods he sells constitutes an act of unfair competition, as denied in the Paris Convention. Subsequently, the private respondent moved to dismiss the petition on the ground of res  judicata, averring that in 1973, or more than ten years before this petition was filed, the same petitioner filed two petitions for cancellation, all of which involved the trademark HUSH PUPPIES and DEVICE, before the Philippine Patent Office. The Director of Patents had ruled in all three inter parties cases in favor of the private respondent’s predecessor-in-interest. The CA affirmed these decisions. Consequently, the Director of Patents denied the petition for cancellation. On appeal, the Court of Appeals at first set aside the Director’s decision, however, upon reconsideration the latter was revived. ISSUE: Is the present petition for cancellation barred by res judicata? HELD: Yes. The Court has repeatedly held that for a judgment to be a bar to a subsequent case, the following requisites must concur: (1) it must be a final judgment; (2) the court which rendered it had jurisdiction over the subject matter and the parties; (3) it must be a judgment on

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the merits; and (4) there must be Identity between the two cases, as to parties, subject matter, and cause of action. Contrary to the petitioner’s assertion, the judgment in the previous cases involving respondent’s trademark registration had long since become final and executor. That Sec. 17 of Republic Act 166, also known as the Trademark Law, allows the cancellation of a registered trademark is not a valid premises for the petitioner’s proposition that a decision granting registration of a trademark cannot be imbued with the character of absolute finality as is required in res judicata.  A judgment or order is final, as to give it the authority of res judicata, if it can no longer be modified by the court issuing it or by any other court. In the case at bar, the decision of the Court of Appeals affirming that of the Director of Patents, in the cancellation cases filed in 1973, was never appealed to us. Consequently, when the period to appeal from the Court of Appeals to this Court lapsed, with no appeal having been perfected, the foregoing judgment denying cancellation of registration in the name of private respondent’s predecessor-in-interest but ordering cancellation of registration in the name of the petitioner’s predecessor-in-interest, became the settled law in the case. It must be stressed anew that, generally, the fundamental principle of res judicata applies to all cases and proceedings in whatever form they may be. We now expressly affirm that this principle applies, in the appropriate cases, to proceedings for cancellation of trademarks before the Philippine Patent. Undoubtedly, final decision, orders and resolutions, of the Director of Patents are clothed with a  judicial character as they are, in fact, reviewable by the Court of Appeals and by the SC.

52. G.R. No. 78325. January 25, 1990.]  DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION, petitioners, vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES, respondents. CRUZ, J. FACTS: Petitioner Philippine Packing Corporation (Philpack) is a domestic corporation duly organized under the laws of the Philippines. On April 11, 1969, Del Monte Corporation is a foreign company organized under the laws of the United States and not engaged in business in the Philippines, granted Philpack the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. On October 27,1965, Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle configuration, for which it was granted Certificate of Trademark Registration No. SR-913 by the Philippine Patent Office under the Supplemental Register. On November 20, 1972, Del Monte also obtained two registration certificates for its trademark "DEL MONTE" and its logo. Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the Bureau of Domestic Trade on April 17,1980, to engage in the manufacture, packing, distribution and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. This logo was registered in the Supplemental Register on September 20, 1983. The product itself  was contained in various kinds of bottles, including the Del Monte bottle, which the private respondent bought from the junk shops for recycling. Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's, Philpack warned it to desist from doing so on pain

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of legal action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a complaint against the private respondent for infringement of trademark and unfair  competition, with a prayer for damages and the issuance of a writ of preliminary injunction. In its answer, Sunshine alleged that it had long ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners.  After trial, the Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties; that the defendant had ceased using the petitioners' bottles; and that in any case the defendant became the owner of  the said bottles upon its purchase thereof from the junk yards. Furthermore, the complainants had failed to establish the defendant's malice or bad faith, which was an essential element of  infringement of trademark or unfair competition. The Court of Appeals affirmed the decision. ISSUE: Whether or not there was trademark infringement and unfair competition HELD: YES. While the Court does recognize the distinctions between the products of Del Monte and Sunshine, it does not agree with the conclusion that there was no infringement or  unfair competition. It seems to us that the lower courts have been so pre-occupied with the details that they have not seen the total picture. The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it with the original. A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The judge must be aware of the fact that usually a defendant in cases of infringement does not normally copy but makes only colorable changes.  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 .  As for the unfair competition, private respondent Sunshine, despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to

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capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte.  As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from ISA PANG 52—dalawa ung nagdigest (hahaha) Petitioner’s Claim: Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's, Philpack warned it to desist from doing so on pain of legal action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a complaint against the private respondent for infringement of  trademark and unfair competition, with a prayer for damages and the issuance of a writ of  preliminary injunction. Respondent’s Claim: Sunshine alleged that it had long ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners. Issue: Whether infringement of trademark and unfair competition exist Held: 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 Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from the use of such bottles. 53. G.R. No. 75420. November 15, 1991.]  KABUSHI KAISHA ISETAN, also known and trading as ISETAN CO., LTD., petitioner, vs. THE INTERMEDIATE APPELLATE COURT, THE DIRECTOR OF PATENTS, and ISETANN  DEPARTMENT STORE, INC. respondents. Petitioner's contention: Kabushi Kaisha Isetan is the owner of the trademark "Isetan" and the "Young Leaves Design". The petitioner alleges that it first used the trademark Isetan on November 5, 1936. It states that the trademark is a combination of "Ise" taken from "Iseya" the first name of the rice dealer in Kondo, Tokyo in which the establishment was first located and "Tan" which was taken from "Tanji Kosuge the First".

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The trademark "Isetan" and "Young Leaves Design" were registered in Japan covering more than 34 classes of goods. On October 3, 1983, the petitioner applied for the registration of  "Isetan" and "Young Leaves Design" with the Philippine Patent Office under Permanent Serial Nos. 52422 and 52423 respectively, Defendant's contention: • Private respondent, Isetann Department Store, on the other handclaims that it used the word "Isetann" as part of its corporate name and on its products particularly on shirts in Joymart Department Store sometime in January 1979. • The suffix "Tann" means an altar, the place of offering in Chinese and this was adopted to harmonize the corporate name and the corporate logo of two hands in cup that symbolizes the act of offering to the Supreme Being for business blessing. • respondent registered "Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine Patent Office under SR. Reg. Nos. 4701 and 4714, respectively, as well as with the Bureau of Domestic Trade under Certificate of Registration No. 32020. actions • On November 28, 1980, the petitioner filed with the Phil. Patent Office two (2) petitions for the cancellation of Certificates of Jmvdg Trademark Cases 25, Supplemental Registration Nos. SR4717 and SR-470. The petitioner also filed with the Securities and Exchange Commission (SEC) a petition to cancel the mark "ISETAN" as part of the registered corporate name of Isetann Department Store, Inc. this was however denied by the SEC Director of Patents dismissed the suit for  cancellation of registration filed by petitioner IAC likewise dismissed the case Issue: Who has better right to use the trademark “Isetan” Ruling: • A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a tradename. • Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of  their actual use. Adoption is not use. One may make advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use. For trademark is a creation of use. • The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. Under the law, it has no right to the remedy it seeks. • Any goodwill, reputation, or knowledge regarding the name Isetann is purely the work of the private respondent. • Isetann Department Store, Inc. is the name of a store and not of products sold in various parts of the country. • There is no product with the name "Isetann" popularized with that brand name in the Philippines. • The records show that among Filipinos, the name cannot claim to be internationally well-known. • The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its use • Indeed, the Philippines is a signatory

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to this Treaty and, hence, we must honor our obligation thereunder on matters concerning internationally known or well known marks. However, this Treaty provision clearly indicated the conditions which must exist before any trademark owner can claim and be afforded rights such as the Petitioner herein seeks and those conditions are that: ◦ the mark must be internationally known or well known; the subject of the right must be a trademark, not a patent or copyright or anything else; ◦ the mark must be for use in the same or  similar kinds of goods, and ◦ the person claiming must be the owner of the mark.

54. G.R. No. 71189. November 4, 1992.]  FABERGE, INCORPORATED, petitioner, vs. THE INTERMEDIATE APPELLATE COURT  and CO BENG KAY, respondents. MELO, J.: Facts: In the course of marketing petitioner's "BRUT" products and during the pendency of its application for registration of the trademark "BRUT 33 and DEVICE" for antiperspirant, personal deodorant, cream shave, after shave/shower lotion, hair spray, and hair shampoo, respondent Co Beng Kay of Webengton Garments Manufacturing applied for registration of the disputed emblem "BRUTE" for briefs. Opposition raised by petitioner anchored on similarity with its own symbol and irreparable injury to the business reputation of the first user was to no avail. When the legal tussle was elevated to respondent court, Justice Gopengco remarked that a look at the marks "BRUT," "BRUT 33" and "BRUTE" shows that such marks are not only similar in appearance but they are even similar in sound and in the style of presentation; that it is reasonable to believe that this similarity is sufficient to cause confusion and even mistake and deception in the buying public as to the origin for source of the goods bearing such trademarks. Later, respondent's Motion for Reconsideration merited the nod of approval of the appellate court brought about by private respondent's suggestion that the controlling ruling is that laid down in ESSO Standard Eastern, Inc . vs. Court of Appeals, to the effect that the identical trademark can be used by different manufacturers for products that are non-competing and unrelated. Petitioner asserts that the alleged application for registration of the trademark "BRUT 33 DEVICE" for briefs is an explicit proof that petitioner intended to expand its mark "BRUT" to other goods, and that relief is available where the junior user's goods are not remote from any product that the senior user would be likely to make or sell. On the other hand, private respondent echoes the glaring difference in physical appearance of its products with petitioner's own goods by stressing the observations of the Director of Patents in that the involved trademarks are grossly different in their overall  appearance and that even at a distance a would-be purchaser could easily distinguish what is BRUTE brief and what is BRUT after shave lotion, lotion and the like. Moreover, private respondent asserts that briefs and cosmetics do not belong to the same class nor do they have the same descriptive properties such that the use of a trademark on one's goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different nature. Issue: whether private respondent may appropriate the trademark "BRUTE" for the briefs it manufactures and sells to the public albeit petitioner had previously registered the symbol "BRUT" and "BRUT 33" for its own line of times

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Held: Yes. It is apropos to shift Our attention to the pertinent provisions of the new Civil Code (Arts. 520, 521, and 522) vis-a-vis Republic Act No. 166 (Secs. 2, 2-A,4, 4(d),11 and 20), as amended, the special law patterned after the United States Trademark Act of 1946. Having thus reviewed the laws applicable to the case, private respondent may be permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not ventured in the production of briefs, an item which is not listed in its certificate of registration, petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's exclusive domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called "eloquent proof that petitioner indeed intended to expand its mark "BRUT" to other goods". Even then, a mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate of registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by other for products which are of different description. Justice JBL Reyes opined that the Section 4(d) of Republic Act No. 166, as amended, "does not require that the articles of manufacture of the previous user and late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar  the latter from registering his mark in the principal register." Yet, it is equally true that as aforesaid, the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration following the clear message conveyed by section 20. How do We now reconcile the apparent conflict between Section 4(d) which was relied upon by Justice JBL Reyes in the Sta. Ana case and Section 20? It would seem that Section 4(d) does not require that the goods manufactured by the second user be related to the goods produced by the senior user while Section 20 limits the exclusive right of the senior user only to those goods specified in the certificate of registration. But the rule has been laid down that the clause which comes later shall be given paramount significance over an anterior proviso upon the presumption that it expresses the latest and dominant purpose.. It ineluctably follows that Section 20 is controlling and, therefore, private respondent can appropriate its symbol for the briefs it manufactures. The glaring discrepancies between the two products had been amply portrayed to such an extent that indeed, "a purchaser who is out in the market for the purpose of buying respondent's BRUTE brief would definitely be not mistaken or misled into buying BRUT after  shave lotion or deodorant" as categorically opined in the decision of the Director of Patents relative to the inter-partes case. Disclaimer ng SC (apparently, confused din sila. Hehehe) It would appear that as a consequence of this discourse, there still remains hanging in mid-air the unanswered puzzle as to why an aspiring commercial enterprise, given the infinite choices available to it of names for the intend product, would select a trademark or trade name which somewhat resembles an existing emblem that had established goodwill. Our opinion hereinbefore expressed could even open the floodgates to similar incursions in the future when we interpreted Section 20 of the Trademark Law as an implicit permission to a manufacturer to venture into the production of goods and allow that producer to appropriate the brand name of  the senior registrant on goods other than those stated in the certificate of registration.

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But these nagging and disturbing points cannot win the day for petitioner, although We must hasten to add that in the final denouement, Our apprehensions in this regard are not entirely irreversible since Section 4(d) and 20 of the law in question may still be subjected to legislative modification in order to protect the original user of the symbol. 55. G.R. No. 103543. July 5, 1993.]   ASIA BREWERY, INC. petitioner, vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents. On September 15, 1988, San Miguel Corporation (smc) filed a complaint against (ABI) for  infringentment of trademark and unfair competition on account of the latter’s BEER NA BEER product which has been competing with SMC’s SAN MIGUEL PALE PILSEN’S the local beer  market. SMC claims that the “trade dress” of BEER PILSEN is, “confusingly SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. steine type, amber-colored bottles with regular labels. On August 27, 1990, RTC dismissed the complaint. SMC appealed to the Court of Appeal the lower court’s decision. Upon a motion for reconsideration filed by ABI, the decision was the time, ABI appealed to this court by a petition for certiorari under Rule 45 Rules of Court. Issue: Does ABI’s BEER PALE PILSEN label or “design” infringe upon that of SAN MIGUEL PALE PILSEN? Ruling: No. Only registered trade marks, trade names and service marks are protected against infringement authorized use by another or others. It has been consistently held that the question of  infringement remark is to be determined by the test of dominancy. Similarity in size, form and color, while relevant, inclusive. If the competing trademark contains the main or essential or  dominant features of another, and command deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor necessary that the infringing label should suggest an effort to imitate. The fact that the words pale pilsen are part of ABI’s trademark does not constitute an infringement of SMC’s trademark: SAN MIGUEL PALE PILSEN, for “pale pilsen” are generic words descriptive of color (“pale”), of a type of beer (“pilsen”), which is a light bohemian beer  with strong hops flavor that originate the City of Pilsen in Czechoslovakia and became famous in the Middle ages. “Pilsen” is a “primarily geologically descriptive word”.  A word or a combination of words which is merely descriptive of an article of trade, or its composition, characteristics, or qualities, cannot be appropriated and protected as a trademark to the exclusion its use by others inasmuch as all persons have an equal right to produce and vend similar articles, they also have the right to describe them properly and ot use any appropriate language or words for that purpose, and no person can appropriate to himself  exclusively any word or expressions, properly descriptive of the article, its qualities, ingredients or characteristics, and thus limit other persons in the use of language appropriate to the description of their manufacturers, the right to the use of such language being common to all. This rule excluding descriptive term has also been held to apply to trade-means. As to whether  words employed fall within this prohibition, it is said that the true test is not whether they are exhaustively descriptive of the article designated, but whether in themselves and as they are commonly used by those who understand their meaning, they are reasonably indicative and descriptive of the thing intended. If they are thus descriptive, and not arbitrary, they cannot be appropriated from general use and become the exclusive property of anyone. [52 Am Jur. 542543].

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The circumstance that the manufacturer of BEER PALE PILSEN, Asia Brewery Incorporated, has printed its name all over the bottle of its beer product: on the label, on the back of the botlle, as well as on the bottle cap, disproves SMC’s charge that ABI dishonestly and fraudently intends to palm off its BEER PALE PILSEN as SMC’s product. In view of the visible differences between the two products, the Court believes it’s quite unlikely that a customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN.

56. G.R. No. 91332. July 16, 1993.]  PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF  TABAC REUNIES, S.A., petitioners, vs. THE COURT OF APPEALS AND FORTUNE  TOBACCO CORPORATION, respondents. Petitioner’s Claim: Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of  Tabac Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes in the local market. Banking on the thesis that petitioners' respective symbols "MARK VII", "MARK TEN", and "LARK", also for cigarettes, must be protected against unauthorized appropriation, petitioners twice solicited the ancillary writ in the course the main suit for infringement but the court of origin was unpersuaded. Respondent’s Claim: Fortune Tobacco Corporation admitted petitioners' certificates of registration with the Philippine Patent Office subject to the affirmative and special defense on misjoinder of party plaintiffs. Private respondent alleged further that it has been authorized by the Bureau of  Internal Revenue to manufacture and sell cigarettes bearing the trademark "MARK", and that "MARK" is a common word which cannot be exclusively appropriated. Issue: Whether to grant the petition of Philip Morris questioning the lifting of the preliminary injunction by the Court of Appeals Held: NO. In point of adjective law, the petition has its roots on a remedial measure which is but ancillary to the main action for infringement still pending factual determination before the court of origin. It is virtually needless to stress the obvious reality that critical facts in an infringement case are not before us more so when even Justice Feliciano's opinion observes that "the evidence is scanty" and that petitioners "have yet to submit copies or photographs of  their registered marks as used in cigarettes" while private respondent has not, for its part, "submitted the actual labels or packaging materials used in selling its "Mark" cigarettes." Petitioners therefore, may not be permitted to presume a given state of facts on their so called right to the trademarks which could be subjected to irreparable injury and in the process, suggest the fact of infringement. Such a ploy would practically place the cart ahead of the horse. 57. G.R. No. 91385. January 4, 1994.]  HEIRS OF CRISANTA Y. GABRIEL-ALMORADIE, herein represented by the special  administrator LORENZO B. ALMORADIE of the Intestate Estate of the Late Crisanta Y.

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Gabriel-Almoradie and LORENZO B. ALMORADIE, petitioners, vs. COURT OF APPEALS  and EMILIA M. SUMERA, herein sued in her capacity as special administratrix of the Testate Estate of the late DR. JOSE R. PEREZ, respondents. FACTS: Petitioner’s Claim: Perez filed a complaint for Unfair Competition with Injunction and Damages, dated August 8, 1961, docketed as Civil Case No. 2422, against Gabriel. In the said complaint, Perez alleged that Gabriel, without just cause and in violation of the terms of the distributorship agreement, stopped selling and distributing "WONDER" soap, and instead on October 3, 1960 Gabriel tried to register the trademark "WONDER" in her name. Respondent’s Claim: On October 19, 1962, Gabriel, in Inter Partes Case No. 280, filed a Petition to Cancel Certificate of Registration No. SR-389 covering the trademark "WONDER" for beauty soap in the name of  Dr. Perez. Gabriel claims that the exclusive ownership of the trademark "WONDER" is vested in her by virtue of her agreement with Perez. Petitioner now comes to us arguing that our decision in the case of Gabriel v. Perez, supra, has become functus officio on account of the prior registration of the trademark "WONDER" by Go Hay and its subsequent assignment to petitioner's predecessors; and that the Cancellation No. 143, dated November 16, 1984 involving private respondent's trademark rendered the Civil Case No. C-8147 moot and academic. ISSUES: Whether decision in the case of Gabriel v. Perez, supra, has become functus officio HELD: In the interest of the public and for the expeditious administration of justice the issue on infringement shall be resolved by the court considering that this case has dragged on for years and has gone from one forum to another. It is a rule of procedure for the Supreme Court to strive to settle the entire controversy in a single proceeding leaving no root or branch to bear the seeds of future litigation. No useful purpose will be served if the case or the determination of an issue in a case is remanded to the trial court only to have its decision raised again to the Court of Appeals and from there to the Supreme Court. We laid down the rule that the remand of the case or of an issue to the lower  court for further reception of evidence is not necessary where the Court is in position to resolve the dispute based on the records before it and particularly where the ends of justice would not be subserved by the remand thereof. Moreover, the Supreme Court is clothed with ample authority to review matters, even though those not raised on appeal if it finds that their  consideration is necessary in arriving at a just disposition of the case

58.

G.R. No. 115115. July 18, 1995.]  CONRAD AND COMPANY, INC., petitioner, vs. HON. COURT OF APPEALS, FITRITE INC., and VICTORIA BISCUITS CO., INC., respondents.

Petitioner’s claim: CONRAD AND COMPANY, INC., invoked, among other grounds, litis  pendentia, the doctrine of primary jurisdiction and failure to state a cause of action. It further  allege that internationally accepted trademarks enjoy protection under Philippine laws. CONRAD AND COMPANY, INC having been granted distributorship by Sunshine Biscuits USA over Philippine territory it follows that the resolution of the issue with respect to the ownership of  Sunshine Biscuits which is the basis of plaintiffs' claim is lodged under the exclusive jurisdiction

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of the BPTTT. The action filed by defendant's principal in whose name the trademark "SUNSHINE BISCUITS" is alleged to be registered in the United States should be considered as including Conrad and Company, Inc., it being the beneficiary/agent/assignee of said Sunshine Biscuits, Inc. Petitioner, invoking the case of  Developers Group of Companies vs . Court of Appeals (219 SCRA 715), contends that the "Petitions for Cancellation" of Fitrite's Certificate of Registration No. SR-6217 and No. 47590 in the Supplemental Register and the Principal Register, respectively, which Sunshine Biscuits, Inc., of the United States of America filed in 1989 and in 1990 (docketed Inter Partes Case No. 3397 and 3739) with BPTTT cast a cloud of doubt on private respondents' claim of ownership and exclusive right to the use of the trademark "Sunshine." Respondent’s claim: FITRITE, INC. and VICTORIA BISCUIT CO., INC. [private respondents here], both domestic corporations, are engaged in the business of manufacturing, selling and distributing biscuits and cookies bearing the trademark "SUNSHINE" in the Philippines. Defendant CONRAD AND COMPANY [petitioner here] is also engaged in the business of  importing, selling and distributing biscuits and cookies in the Philippines. Sometime in April 1982, FITRITE filed in the Bureau of Patents, Trademarks and Technology Transfer (hereto referred as BPTTT) applications for registration of the trademark "SUNSHINE," both in the Supplemental and Principal Registers, to be used on biscuits and cookies. FITRITE's application for this trademark in the Supplemental Register was approved by the BPTTT. , FITRITE assigned its trademark "SUNSHINE AND DEVICE LABEL," together with its interest and business goodwill to said VICTORIA BISCUIT. Then sometime in June 1990, through the affidavit executed on May 30, 1990 by CONRAD's own Import Manager and Executive Assistant by the name of Raul Olaya, plaintiffs succeeded in tracing and discovered that CONRAD had been importing, selling and distributing biscuits and cookies, and other food items bearing this trademark in the Philippines. Although CONRAD had never before been engaged in the importation, sale and distribution of products similar to those of plaintiffs, on April 18, 1988 CONRAD was suddenly designated exclusive importer and dealer of the products of "Sunshine Biscuits, Inc." for sale in the Philippine market; Issue: whether or not the Court of Appeals committed reversible error (1) in allowing the trial court to proceed with the case for "injunction with damages" filed by private respondents notwithstanding the pendency of an administrative case for the cancellation of the former's trademark filed by supposedly "petitioner's principal" with the Bureau of Patents, Trademarks and Technology Transfer ("BPTTT"); Held: No. While an application for the administrative cancellation of a registered trademark on any of the grounds enumerated in Section 17 of Republic Act No. 166, as amended, otherwise known as the Trade-Mark Law, falls under the exclusive cognizance of BPTTT (Sec. 19, TradeMark Law), an action, however, for infringement or unfair competition, as well as the remedy of  injunction and relief for damages, is explicitly and unquestionably within the competence and  jurisdiction of ordinary courts. Private respondents are the holder of Certificate of Registration No. 47590 (Principal Register) for the questioned trademark. In Lorenzana vs. Macagba, 154 SCRA 723, cited with approval in Del Monte Corporation vs. Court of Appeals, 181 SCRA 410, we have declared that registration in the Principal Register gives rise to a presumption of validity of the registration and of the

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registrant's ownership and right to the exclusive use of the mark. It is precisely such a registration that can serve as the basis for an action for infringement.  An invasion of this right entitles the registrant to court protection and relief. Surely, an application with BPTTT for an administrative cancellation of a registered trade mark cannot per se have the effect of  restraining or preventing the courts from the exercise of their lawfully conferred jurisdiction.This rule, evidently, did not escape the appellate court for it likewise decreed that for "good cause shown, the lower court, in its sound discretion, may suspend the action pending outcome of the cancellation proceedings" before BPTTT. 59. G.R. No. 100098. December 29, 1995.]  EMERALD GARMENT MANUFACTURING CORPORATION, petitioner, vs. HON. COURT  OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER  and H.D. LEE COMPANY, INC., respondents.

Plaintiff’s Contention: H.D. Lee Co., Inc., a foreign corporation organized under the laws of Delaware, U.S.A., filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation, a domestic corporation organized and existing under Philippine laws. The company also invoked Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris Convention for the Protection of Industrial Property, averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and not abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods." •

•

Defendant’s Contention:. Emerald Garment contended that its trademark was entirely and unmistakably different from that of private respondent and that its certificate of registration was legally and validly granted. Emerald Garment further alleges that it has been using its trademark "STYLISTIC MR. LEE" since 1 May 1975, yet, it was only on 18 September 1981 that H.D. Lee Co. filed a petition for cancellation of Emerald’s certificate of registration for the said trademark. •

•

RULING: The essential element of infringement is colorable imitation. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other." Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or tradename with that of the other mark or tradename in their 

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over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. In determining whether colorable imitation exists, jurisprudence has developed two kinds of  tests — the Dominancy Test applied and the Holistic Test.  As its title implies, the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. If the competing trademark contains the main or essential or dominant features of  another, and confusion and deception is likely to result, infringement takes place. Duplication or  imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. In determining whether the trademarks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE" trademark. Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an  Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. Finally, in line with the foregoing discussions, more credit should be given to the "ordinary purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. As we have previously intimated the issue of confusing similarity between trademarks is resolved by considering the distinct characteristics of each case. In the present

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controversy, taking into account these unique factors, we conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception and confusion tantamount to infringement.  Another way of resolving the conflict is to consider the marks involved from the point of view of  what marks are registrable. "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term. It has been held that a personal name or surname may not be monopolized as a trademark or tradename as against others of  the same name or surname. For in the absence of contract, fraud, or estoppel, any man may use his name or surname in all legitimate ways. Thus, "Wellington" is a surname, and its first user has no cause of action against the junior user of "Wellington" as it is incapable of exclusive appropriation. In addition to the foregoing, we are constrained to agree with petitioner's contention that private respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines before filing its application for registration with the BPTTT and hence, has not acquired ownership over said mark.  Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of  ownership over a trademark pursuant to the Philippine Trademark Law (R.A. No. 166). For lack of adequate proof of actual use of its trademark in the Philippines prior to Emerald Garment’s use of its own mark and for failure to establish confusing similarity between said trademarks, H.D. Lee Co's action for infringement must necessarily fail. 60. [G.R. No. L-24075. January 31, 1974.]  CRISANTA Y. GABRIEL, petitioner, vs. DR. JOSE R. PEREZ and HONORABLE TIBURCIO  EVALLE as Director of Patents, respondents. Respondent’s claim: *A Certificate of Registration No. SR-389 was issued in his name. Said trademark "WONDER" is used by said private respondent on bleaching beauty soap (Medicated and Special) which falls under Class 51. Private respondent Dr. Perez, in his petition for registration, claimed March 10, 1953 as the date of first use of said trademark and August 1, 1953 as the date of first use of  said trademark in commerce in the Philippines law library Petitioner’s contention: *The registrant was not entitled to register the said trademark at the time of his application for  registration; that the trademark was not used and has not been actually used by registrant at the time he applied for its registration; that it was thru fraud and misrepresentation that the registration was procured by the registrant; and that it was she who has been actually using the said trademark since March, 1959, and as such is the rightful and recognized owner thereof and therefore entitled to its registration. * The agreement of exclusive distributorship executed by and between her and respondent vested in her the exclusive ownership of the trademark "WONDER". Respondent Director of Patents rendered his decision denying the petition to cancel the certificate of registration ISSUE: WON Dr. Perez is the rightful owner of the trademark “WONDER” HELD: YES. The Respondent is the originator and manufacturer of the so-called "Dr. Perez Wonder  Beauty Soap," a phrase clearly coined by, and associated with, the Respondent. As such, the connotation in itself is sufficient to clothe the product as an item or a commodity

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emanating from a particularly identified source who is none other than Dr. Jose R. Perez. The words serve as an indication of origin, and the product identified by the words can never be regarded as having emanated or originated from another individual, typical of which is the Petitioner, mere distributor." Under Section 2 and 2-A of the Trademark Law, Republic Act No. 166, amended, the right to register trademark is based on ownership and a mere distributor of a product bearing a trademark, even if permitted to use said trademark, has right to and cannot register the said trademark. The agreement merely empowers the petitioner as exclusive distributor to own the package and to create a design at her pleasure, but not the right to appropriate unto herself the sole ownership of the trademark so as to entitle her to registration in the Patent Office. In fact, the agreement does not even grant her the right to register the mark. law library 61. G.R. No. L-14377. December 29, 1960.]  THE EAST PACIFIC MERCHANDISING CORPORATION, petitioner, vs. THE DIRECTOR OF  PATENTS and LUIS P. PELLICER, respondents. Facts: On June 14, 1947, Marcelo T. Pua filed with the Office of the Director of Commerce an application for the registration under Act 666 of the trademark “Verbena” with a representation of a Spanish lady. The applicant further alleged that the trademark applied for has continuously been used by him in commerce since August 15, 1947 on such merchandise as lotion, face powder, hair pomade, brilliante, and other like products. Later on, Pua assigned his rights to the trademark herein petitioner, who renewed the application under the new trademark law the Patents Office on Novemeber 8, 1957. The Director of Patents approved petitioner’s application for publication in the official Gazette. Luis P. Pellicer filed an opposition to the application on the ground that he would be damaged by the registration of the trademark applied for. In support thereof, Pellicer attached to the opposition certain labels bearing a trademark “Lupel Verbena”, which trademark, oppositor avers, was registered in his favor under Certificate of Registration No. 5851. Issue: whether or not “verbena” is registrable for trademark Held: No, Supreme Court held that the questioned trademark is generically descriptive or  misdescriptive of the products, and that the representation of a Spanish Lady is not only deceptively misdescriptive of the source or origin (the goods covered being produce in the Philippines and not in Spain), but likewise common trade. The court explained that the term “Vernbena” being descriptive of a whole genus of garden plants with fragrant flowers (Verbenaceae), its use in connection with cosmetic products, wherein fragrance is of substantial import, evokes the idea that the products are perfumed with the extract of verbena flowers, or of  some oil of similar aroma; and, regardless of the other connotations of the word, the use of the term cannot be denied to other traders using such extracts oils in their own products. The result would not change even if the Director erred in ruling that the figure of a lady, as previously described, is likewise is not registerable as a trademark. The figure, it may be granted, was drawn on arbitrary on whimsical lines and styled in a peculiary distinctive manner; but the fact will not qualify the word “Verbena” for registration, since the combination of the two marks would still be inadequate to guard against the misleading effects that flow from the use of  the term by petitioner. Conformably to the foregoing, unless the petitioner makes a disclaimer of the word “verbena”, the application should be held as properly denied by the Director of Patents. The orders reinstating respondent Pellicer’s opposition are affirmed. 62. G.R. No. L-19297. December 22, 1966.] 

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In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties (see Celanese Corporation of America vs. E. I. Du Pont, 154 F. 2d. 146, 148) The registration of "LIONPAS" cannot therefore be given due course. NB: Not being the owner of the trademark "LIONPAS" but being merely an importer and/or  distributor of the said penetrative plaster, the applicant is not entitled under the law to register it in its name (Operators, Inc. vs. Director of Patents, supra)

G.R. No. L-23023. August 31, 1968.] YEN  JOSE P. STA. ANA, petitioner, vs. FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents. 63.

64. G.R. No. L-26557. February 18, 1970.]   AMERICAN WIRE & CABLE COMPANY, petitioner, vs. DIRECTOR OF PATENTS and  CENTRAL BANAHAW INDUSTRIES, respondents. FACTS: On June 1962, Central Banahaw Industries, Inc. applied with the Director of Patents for  registration of the trademark DYNAFLEX and Device to be used in connection with electric wires, class w0, which mark applicant allegedly had been using since March 29, 1962. The  American Wire and Cable Co., Inc., another domestic corporation and authorized user since  April10, 1958 of the registered trade mark DURAFLEX and Globe representation, for electric wires, apparatus, machines and supplies, class 20, opposed the application on the ground that applicant’s use of the trademark DYNAFLEX would cause confusion.  After due hearing, the Director of Patents rendered decision holding the applicant’s mark DYNAFLEX not to be similar to the previously registered trademark DURAFLREX. Consequently, the application of Central Banahaw Industries for registration of DYNAFLEX was given due course and the opposition thereto by American Wire & Cable Company dismissed. The latter interposed the present appeal. ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires class 20. HELD: Yes. The Supreme Court held that the similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference exists only in two out of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated flexible wires under class 20; that both products are contained in boxes of the same material, color, shape and size; that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both boxes show similar circles of  broken lines with arrows at the center pointing outward, with the identical legend “Cut Out Ring” Draw From Inside Circle”, no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product with the other. 65. G.R. No. L-29155. May 13, 1970.]  UNIVERSAL FOOD CORPORATION, petitioners, vs. THE COURT OF APPEALS, MAGDALO V. FRANCISCO, SR., and VICTORIANO V. FRANCISCO, respondents.

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CASTRO, J. *Disclaimer: Groupmates, this is a long case. I just included the pertinent details concerning LIP. FACTS:  As far back as 1938, plaintiff Magdalo V. Francisco, Sr. discovered or invented a formula for the manufacture of a food seasoning (sauce) derived from banana fruits popularly known as MAFRAN sauce; that the manufacture of this product was used in commercial scale in 1942, and in the same year plaintiff registered his trademark in his name as owner and inventor with the Bureau of Patents; that due to lack of sufficient capital to finance the expansion of the business, in 1960, said plaintiff secured the financial assistance of Tirso T. Reyes who, after a series of negotiations, formed with others defendant Universal Food Corporation eventually leading to the execution on May 11, 1960 of the "Bill of Assignment". Conformably with the terms and conditions, plaintiff Magdalo V. Francisco, Sr. was appointed Chief Chemist with a salary of P300.00 a month, and plaintiff Victoriano V. Francisco was appointed auditor and superintendent with a salary of P250.00 a month. Since the start of the operation of defendant corporation, plaintiff Magdalo V. Francisco, Sr., when preparing the secret materials inside the laboratory, never allowed anyone, not even his own son, or the President and General Manager Tirso T. Reyes, of defendant, to enter the laboratory in order to keep the formula secret to himself. However, said plaintiff expressed a willingness to give the formula to defendant provided that the same should be placed or kept inside a safe to be opened only when he is already incapacitated to perform his duties as Chief Chemist, but defendant never acquired a safe for  that purpose. On July 26, 1960, President and General Manager Tirso T. Reyes wrote plaintiff  requesting him to permit one or two members of his family to observe the preparation of the 'Mafran Sauce', but said request was denied by plaintiff. In spite of such denial, Tirso T. Reyes did not compel or force plaintiff to accede to said request. Petitioner, by virtue of the Bill of Assignment, claims that plaintiff Magdalo V. Francisco had been remiss in the compliance of his contractual obligation to cede and transfer to the defendant the formula for Mafran sauce. ISSUE: Whether by virtue of the terms of the Bill of Assignment the respondent Magdalo V. Francisco, Sr. ceded and transferred to the petitioner corporation the formula for  Mafran sauce. HELD: NO. Certain provisions of the Bill of Assignment would seem to support the petitioner's position that the respondent patentee, Magdalo V. Francisco, Sr. ceded and transferred to the petitioner corporation the formula for Mafran sauce. Thus, the last part of the second paragraph recites that the respondent patentee "assign, transfer and convey all its property rights and  interest over said Mafran trademark and formula for MAFRAN SAUCE unto the Party of the Second Part," and the last paragraph states that such "assignment, transfer and conveyance is absolute and irrevocable (and) in no case shall the PARTY OF THE First Part ask, demand or  sue for the surrender of its rights and interest over said MAFRAN trademark and mafran formula."  However, a perceptive analysis of the entire instrument and the language employed therein 3 would lead one to the conclusion that what was actually ceded and transferred was

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only the use of the Mafran sauce formula. This was the precise intention of the parties, shall presently show.

4

as we

Firstly , one of the principal considerations of the Bill of Assignment is the payment of " royalty of  TWO (2%) PER CENTUM of the net annual profit" which the petitioner corporation may realize by and/or out of its production of Mafran sauce and other food products, etc. The word "royalty," when employed in connection with a license under a patent, means the compensation paid for  the use of a patented invention. Secondly , in order to preserve the secrecy of the Mafran formula and to prevent its unauthorized proliferation, it is provided in paragraph 5-(a) of the Bill that the respondent patentee was to be appointed "chief chemist ... permanent in character," and that in case of his "death or other  disabilities," then his "heirs or assigns who may have necessary qualifications shall be preferred to succeed" him as such chief chemist. It is further provided in paragraph 5-(d) that the same respondent shall have and shall exercise absolute control and supervision over the laboratory assistants and personnel and over the purchase and safekeeping of the chemicals and other  mixtures used in the preparation of the said product. Itclearly show that the intention of the respondent patentee at the time of its execution was to part, not with the formula for Mafran sauce, but only its use, to preserve the monopoly and to effectively prohibit anyone from availing of the invention. Thirdly , pursuant to the last paragraph of the Bill, should dissolution of the Petitioner corporation eventually take place, "the property rights and interests over said trademark and formula shall automatically revert to the respondent patentee. Fourthly , it is alleged in paragraph 3 of the respondents' complaint that what was ceded and transferred by virtue of the Bill of Assignment is the "use of the formula" (and not the formula itself). This incontrovertible fact is admitted without equivocation in paragraph 3 of the petitioner's answer. Hence, it does "not require proof and cannot be contradicted." Fifthly , the facts of the case compellingly demonstrate continued possession of the Mafran sauce formula by the respondent patentee. Finally , our conclusion is fortified by the admonition of the Civil Code that a conveyance should be interpreted to effect "the least transmission of right," and is there a better example of least transmission of rights than allowing or permitting only the use, without transfer of ownership, of  the formula for Mafran sauce. The foregoing reasons support the conclusion of the Court of Appeals that what was actually ceded and transferred by the respondent patentee Magdalo V. Francisco, Sr. in favor of the petitioner corporation was only the use of the formula. Properly speaking, the Bill of Assignment vested in the petitioner corporation no title to the formula. Without basis, therefore, is the observation of the lower court that the respondent patentee "had been remiss in the compliance of his contractual obligation to cede and transfer to the defendant the formula for Mafran sauce." 66. G.R. No. L-28744. April 29, 1971.]   ACOJE MINING CO., INC., petitioner-applicant, vs. THE DlRECTOR OF PATENTS, respondent. Facts: