Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.

),
Inc. G.R. No. 167715, 17 November 2010
Facts:
Pfizer is the registered owner of a patent pertaining to
Sulbactam Ampicillin. It is marketed under the brand name
Unasyn. Sometime in January and February 2003, Pfizer
discovered that Pharmawealth submitted bids for the supply of
Sulbactam Ampicillin to several hospitals without the Pfizers
consent. Pfizer then demanded that the hospitals cease and
desist from accepting such bids. Pfizer also demanded that
Pharmawealth immediately withdraw its bids to supply
Sulbactam Ampicillin. Pharmawealth and the hospitals ignored
the demands.
Pfizer then filed a complaint for patent infringement with a
prayer for permanent injunction and forfeiture of the infringing
products. A preliminary injunction effective for 90 days was
granted by the IPOs Bureau of Legal Affairs (IPO-BLA). Upon
expiration, a motion for extension filed by Pfizer was denied.
Pfizer filed a Special Civil Action for Certiorari in the Court of
Appeals (CA) assailing the denial.
While the case was pending in the CA, Pfizer filed with the
Regional Trial Court of Makati (RTC) a complaint for
infringement and unfair competition, with a prayer for injunction.
The RTC issued a temporary restraining order, and then a
preliminary injunction.
Pharmawealth filed a motion to dismiss the case in the CA, on
the ground of forum shopping. Nevertheless, the CA issued a
temporary restraining order. Pharmawealth again filed a motion
to dismiss, alleging that the patent, the main basis of the case,

had already lapsed, thus making the case moot, and that the CA
had no jurisdiction to review the order of the IPO-BLA because
this was granted to the Director General. The CA denied all the
motions. Pharmawealth filed a petition for review on Certiorari
with the Supreme Court.
Issues:
a) Can an injunctive relief be issued based on an action of
patent infringement when the patent allegedly infringed has
already lapsed?

b) What tribunal has jurisdiction to review the decisions of the

Director of Legal Affairs of the Intellectual Property Office?

Held:
a) No. The provision of R.A. 165, from which the Pfizers patent
was based, clearly states that "[the] patentee shall have the
exclusive right to make, use and sell the patented machine,
article or product, and to use the patented process for the
purpose of industry or commerce, throughout the territory of the
Philippines for the term of the patent; and such making, using,
or selling by any person without the authorization of the
patentee
constitutes
infringement
of
the
patent."
Clearly, the patentees exclusive rights exist only during the
term of the patent. Since the patent was registered on 16 July
1987, it expired, in accordance with the provisions of R.A. 165,
after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer
no longer possessed the exclusive right to make, use, and sell
the products covered by their patent. The CA was wrong in

issuing a temporary restraining order after the cut-off date.

b) According to IP Code, the Director General of the IPO
exercises exclusive jurisdiction over decisions of the IPO-BLA.
The question in the CA concerns an interlocutory order, and not
a decision. Since the IP Code and the Rules and Regulations
are bereft of any remedy regarding interlocutory orders of the
IPO-BLA, the only remedy available to Pfizer is to apply the
Rules and Regulations suppletorily. Under the Rules, a petition
for certiorari to the CA is the proper remedy. This is consistent
with the Rules of Court. Thus, the CA had jurisdiction.

Canon Kabushiki Kaisha v. Court of Appeals

20 July 2000

NSR Rubber Corporation filed an application for

registration of the mark CANON for sandals in the Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT).

An opposition was filed by Canon Kabushiki Kaisha

(CKK), a foreign corporation duly organized and existing under
the laws of Japan. CKK alleged that it will be damaged by the
registration of the trademark CANON in the name of NSR
Rubber Corporation.

The evidence presented by CKK consisted of its

certificates of registration for the mark CANON in various
countries covering goods belonging to class 2 (paints, chemical
products, toner, and dye stuff).

CKK also submitted in evidence its Philippine Trademark

Registration No. 39398, showing its ownership over the
trademark CANON also under class 2.

However, the Bureau of Patents, Trademarks, and

Technology Transfer (BPTTT) dismissed the petition of CKK
and gave due course to NSRs application for the registration of
the trademark CANON.

According to BPTTT, the trademark CANON as used by

CKK for its paints, chemical products, toner, and dyestuff, can
be used by NSR for its sandals because the products of these
two parties are dissimilar.

Hence, CKK filed this case arguing that:

a) it is entitled to exclusive use of the mark canon because it is

its trademark and is used also for footwear.
b) to allow NSR to register canon for footwear is to prevent CKK
from using canon for various kinds of footwear, when in fact,
CKK has earlier used said mark for said goods.
c) it is also entitled to the right to exclusively use canon to
prevent confusion of business.

ISSUE: WON NSR RUBBER CORPORATION MAY BE

ALLOWED TO USE THE MARK CANON.
HELD: Yes.
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 to.
The certificates of registration for the trademark CANON in
other countries and in the Philippines as presented by CKK,
clearly showed that said certificates of registration cover goods
belonging to class 2 (paints, chemical products, toner, dyestuff).
On this basis, the BPTTT correctly ruled that since the
certificate of registration of petitioner for the trademark CANON
covers class 2 (paints, chemical products, toner, dyestuff), NSR
can use the trademark CANON for its goods classified as class
25 (sandals). Clearly, there is a world of difference between the
paints, chemical products, toner, and dyestuff of CKK and the
sandals of NSR.
The certificate of registration confers upon the trademark owner
the exclusive right to use its own symbol only to those goods
specified in the certificate, subject to the conditions and
limitations stated therein. Thus, the exclusive right of CKK in this

case to use the trademark CANON is limited only to the

products covered by its certificate of registration.
As to the argument of CKK that there could be confusion as to
the origin of the goods, as well as confusion of business, if NSR
is allowed to register the mark CANON, the SC ruled that in
cases of confusion of business or origin, the question that
usually arises is whether the respective goods or services of the
senior user and the junior user are so related as to likely cause
confusion of business or origin, and thereby render the
trademark or tradenames confusingly similar.
Goods are related when they belong to the same class or have
the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to
their form, composition, texture or quality. They may also be
related because they serve the same purpose or are sold in
grocery stores.
The paints, chemical products, toner and dyestuff of CKK that
carry the trademark CANON are unrelated to sandals, the
product of NSR. The two classes of products in this case flow
through different trade channels. The products of CKK are sold
through special chemical stores or distributors while the
products of NSR are sold in grocery stores, sari-sari stores and
department stores.
Thus, the evident disparity of the products of the CKK and NSR
renders unfounded the apprehension of CKK that confusion of
business or origin might occur if NSR is allowed to use the mark
CANON.