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138

SUPREME COURT REPORTS ANNOTATED


Sasot vs. People
G.R. No. 143193. June 29, 2005.*
MELBAROSE R. SASOT and ALLANDALE R. SASOT, petitioners,
vs. PEOPLE OF THE PHILIPPINES, THE HONORABLE COURT OF
APPEALS, and REBECCA G. SALVADOR, Presiding Judge, RTC,
Branch 1, Manila, respondents.
Remedial Law; Criminal Procedure; Certiorari; A special civil
action for certiorari is not the proper remedy to assail the
denial of a motion to quash an information.The Court has
consistently held that a special civil action for certiorari is not
the proper remedy to assail the denial of a motion to quash
an information. The proper procedure in such a case is for the
accused to enter a plea, go to trial without prejudice on his
part to present the special defenses he had invoked in his
motion to quash and, if after trial on the merits, an adverse
decision is rendered, to appeal therefrom in the manner
authorized by law. Thus, petitioners should not have
forthwith filed a special civil action for certiorari with the CA
and instead, they
_______________
* SECOND DIVISION.
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VOL. 462, JUNE 29, 2005
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Sasot vs. People
should have gone to trial and reiterate the special defenses
contained in their motion to quash.
Same; Same; Same; Grounds for quashing an information
enumerated in Section 3, Rule 117 of the 1985 Rules of
Criminal Procedure.Section 3, Rule 117 of the 1985 Rules of
Criminal Procedure, which was then in force at the time the
alleged criminal acts were committed, enumerates the
grounds for quashing an information, to wit: a) That the facts
charged do not constitute an offense; b) That the court trying
the case has no jurisdiction over the offense charged or the
person of the accused; c) That the officer who filed the
information had no authority to do so; d) That it does not
conform substantially to the prescribed form; e) That more

than one offense is charged except in those cases in which


existing laws prescribe a single punishment for various
offenses; f) That the criminal action or liability has been
extinguished; g) That it contains averments which, if true,
would constitute a legal excuse or justification; and h) That
the accused has been previously convicted or in jeopardy of
being convicted, or acquitted of the offense charged.
Same; Pleadings and Practice; Complaints; Even the absence
of an oath in the complaint does not necessarily render it
invalid; Want of oath is a mere defect of form which does not
affect the substantial rights of the defendant on the merits.
Under Section 3, Rule 112 of the 1985 Rules of Criminal
Procedure, a complaint is substantially sufficient if it states
the known address of the respondent, it is accompanied by
complainants affidavit and his witnesses and supporting
documents, and the affidavits are sworn to before any fiscal,
state prosecutor or government official authorized to
administer oath, or in their absence or unavailability, a
notary public who must certify that he personally examined
the affiants and that he is satisfied that they voluntarily
executed and understood their affidavits. All these have been
duly satisfied in the complaint filed before Prosecution
Attorney Aileen Marie S. Gutierrez. It must be noted that even
the absence of an oath in the complaint does not necessarily
render it invalid. Want of oath is a mere defect of form, which
does not affect the substantial rights of the defendant on the
merits.
140
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SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
SPECIAL CIVIL ACTION in the Supreme Court. Certiorari.
The facts are stated in the opinion of the Court.
Michael P. Moralde for petitioners.
The Solicitor General for the People.
AUSTRIA-MARTINEZ, J.:
The case subject of the present special civil action for
certiorari is a criminal prosecution against petitioners for
unfair competition under Article 189 of the Revised Penal

Code, filed before the Regional Trial Court (RTC) of Manila


(Branch 1), and docketed as Criminal Case No. 98-166147.1
Some time in May 1997, the National Bureau of Investigation
(NBI) conducted an investigation pursuant to a complaint by
the NBA Properties, Inc., against petitioners for possible
violation of Article 189 of the Revised Penal Code on unfair
competition. In its Report dated June 4, 1997, the NBI stated
that NBA Properties, Inc., is a foreign corporation organized
under the laws of the United States of America, and is the
registered owner of NBA trademarks and names of NBA
basketball teams such as USA BASKETBALL, CHICAGO
BULLS, ORLANDO MAGIC, LOS ANGELES LAKERS,
ROCKETS, PHOENIX SUNS, BULLETS, PACERS,
CHARLOTTE HORNETS, BLAZERS, DENVER NUGGETS,
SACRAMENTO KINGS, MIAMI HEAT, UTAH JAZZ, DETROIT
PISTONS, MILWAUKEE BUCKS, SEATTLE SONICS,
TORONTO RAPTORS, ATLANTA HAWKS, CAVS, DALLAS
MAVERICKS, MINNESOTA TIMBERWOLVES, and LOS
ANGELES CLIPPERS. These names are used on hosiery,
footwear, t-shirts, sweatshirts,
_______________

law firm of Ortega, Del Castillo, Bacorro, Odulio, Calma &


Carbonell, as the companys attorney-in-fact, and to act for
and on behalf of the company, in the filing of criminal, civil
and administrative complaints, among others.3 The Special
Power of Attorney was notarized by Nicole Brown of New York
County and certified by Norman Goodman, County Clerk and
Clerk of the Supreme Court of the State of New York. Consul
Cecilia B. Rebong of the Consulate General of the Philippines,
New York, authenticated the certification.4 Welts also
executed a Complaint-Affidavit on February 12, 1998, before
Notary Public Nicole J. Brown of the State of New York.5
Thereafter, in a Resolution dated July 15, 1998, Prosecution
Attorney Aileen Marie S. Gutierrez recommended the filing of
an Information against petitioners for violation of Article 189
of the Revised Penal Code.6 The accusatory portion of the
Information reads:
That on or about May 9, 1997 and on dates prior thereto, in
the City of Manila, Philippines, and within the jurisdiction of
this Honorable Court, above named accused ALLANDALE
SASOT and
_______________

1 Per letter dated May 4, 2005 sent by Clerk of Court


Rosalinda S. Medinaceli-Gepigon of the Regional Trial Court of
Manila (Branch 1), this case is already assigned to Branch 24,
which was designated under A.M. No. 02-1-11-SC (February
19, 2002) as the Intellectual Property Court of Manila.
141

2 Records, pp. 6-8.


3 Id., pp. 99-100.
4 Id., p. 98.
5 Id., pp. 108-110.
6 Id., pp. 31-33.
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Sasot vs. People
tank tops, pajamas, sport shirts, and other garment products,
which are allegedly registered with the Bureau of Patents,
Trademarks and Technology Transfer. The Report further
stated that during the investigation, it was discovered that
petitioners are engaged in the manufacture, printing, sale,
and distribution of counterfeit NBA garment products.
Hence, it recommended petitioners prosecution for unfair
competition under Article 189 of the Revised Penal Code.2
In a Special Power of Attorney dated October 7, 1997, Rick
Welts, as President of NBA Properties, Inc., constituted the

142
SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
MELBAROSE SASOT of Allandale Sportslines, Inc., did then
and there willfully, unlawfully and feloniously manufacture
and sell various garment products bearing the appearance of
NBA names, symbols and trademarks, inducing the public
to believe that the goods offered by them are those of NBA
to the damage and prejudice of the NBA Properties, Inc., the
trademark owner of the NBA.
CONTRARY TO LAW.7
Before arraignment, petitioners filed a Motion to Quash the
Information on the following grounds:

I. THAT THE FACTS CHARGED DO NOT CONSTITUTE AN


OFFENSE
II. AND THIS HONORABLE COURT HAD NO JURISDICTION OVER
THE OFFENSE CHARGED OR THE PERSON OF THE ACCUSED8
In support of the foregoing, petitioners argue that the fiscal
should have dismissed Weltss complaint because under the
rules, the complaint must be sworn to before the prosecutor
and the copy on record appears to be only a fax transmittal.9
They also contend that complainant is a foreign corporation
not doing business in the Philippines, and cannot be
protected by Philippine patent laws since it is not a registered
patentee. Petitioners aver that they have been using the
business name ALLANDALE SPORTSLINE, INC. since 1972,
and their designs are original and do not appear to be similar
to complainants, and they do not use complainants logo or
design.10
The trial prosecutor of the RTC-Manila (Branch 1), Jaime M.
Guray, filed his Comment/Opposition to the motion to quash,
stating that he has the original copy of the complaint, and
that complainant has an attorney-in-fact to represent
_______________
7 Id., p. 1.
8 Id., p. 79.
9 Id., p. 80.
10 Id., pp. 81-82.
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Sasot vs. People
it. Prosecutor Guray also contended that the State is entitled
to prosecute the offense even without the participation of the
private offended party, as the crime charged is a public
crime.11
The trial court sustained the prosecutions arguments and
denied petitioners motion to quash in its Order dated March
5, 1999.12
Petitioners filed a special civil action for certiorari with the
Court of Appeals (CA) docketed as CA-G.R. SP No. 52151
which was dismissed per its Decision dated January 26,
2000.13 According to the CA, the petition is not the proper

remedy in assailing a denial of a motion to quash, and that


the grounds raised therein should be raised during the trial of
the case on the merits.14 The dispositive portion of the
assailed Decision reads:
WHEREFORE, premises considered, the petition for certiorari
is hereby DISMISSED. Respondent court is hereby ordered to
conduct further proceedings with dispatch in Criminal Case
No. 98-166147.
SO ORDERED.15
Petitioners sought reconsideration of the Decision but this
was denied by the CA.16
Hence, the present petition for review on certiorari under
Rule 45 of the Rules of Court, with issues raised as follows:
1. WHETHER A FOREIGN CORPORATION NOT ENGAGED AND
LICENSE (sic) TO DO BUSINESS IN THE PHILIP
_______________
11 Id., pp. 95-97.
12 Id., p. 103.
13 Penned by Associate Justice Rodrigo V. Cosico, Associate
Justices Eugenio S. Labitoria and Elvi John S. Asuncion,
concurring.
14 CA Rollo, pp. 77-82.
15 Id., p. 82.
16 Id., p. 107.
144
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SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
PINES MAY MAINTAIN A CAUSE OF ACTION FOR UNFAIR
COMPETITION.
2. WHETHER AN OFFICER OF A FOREIGN CORPORATION MAY
ACT IN BEHALF OF A CORPORATION WITHOUT AUTHORITY
FROM ITS BOARD OF DIRECTORS.
3. WHETHER A FOREIGN CORPORATION NOT ENGAGED IN
BUSINESS AND WHOSE EMBLEM IT SOUGHT TO PROTECT IS
NOT IN ACTUAL USE IS ENTITLED TO THE PROTECTION OF
THE PHILIPPINE LAW.
4. WHETHER THE RESPONDENT REGIONAL TRIAL COURT
CORRECTLY ASSUMED JURISDICTION OVER THE CASE AND
THE PERSONS OF THE ACCUSED.

5. WHETHER THE COURT OF APPEALS COMMITTED GRAVE


ABUSE OF DISCRETION AMOUNTING TO LACK OF
JURISDICTION WHEN IT DISMISSED THE PETITION.17
Petitioners reiterate the argument that the complaint filed by
Rick Welts of the NBA Properties, Inc., is defective and should
have been dismissed by the fiscal because it should have
been personally sworn to by the complainant before the
investigating prosecutor. They also reiterate the claim that
Welts failed to show any board resolution showing his
authority to institute any action in behalf of the company,
and that the NBAs trademarks are not being actually used in
the Philippines, hence, they are of public dominion and
cannot be protected by Philippine patent laws. Petitioners
further contend that they have not committed acts
amounting to unfair competition.18
The Office of the Solicitor General appeared in behalf of the
People, and filed its Amended Comment to the petition,
praying for its dismissal, arguing that the CA did not commit
any grave abuse of discretion in dismissing the petition for
reasons stated in its Decision dated January 26, 2000.19
_______________
17 Rollo, p. 13.
18 Id., pp. 13-27.
19 Id., pp. 213-218.
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Sasot vs. People
The petition must be denied.
The Court has consistently held that a special civil action for
certiorari is not the proper remedy to assail the denial of a
motion to quash an information.20 The proper procedure in
such a case is for the accused to enter a plea, go to trial
without prejudice on his part to present the special defenses
he had invoked in his motion to quash and, if after trial on
the merits, an adverse decision is rendered, to appeal
therefrom in the manner authorized by law.21 Thus,
petitioners should not have forthwith filed a special civil
action for certiorari with the CA and instead, they should
have gone to trial and reiterate the special defenses

contained in their motion to quash. There are no special or


exceptional circumstances22 in the present case such that
immediate resort to a filing of a petition for certiorari should
be permitted. Clearly, the CA did not commit any grave
abuse of discretion in dismissing the petition.
Moreover, the Court does not find any justification for the
quashal of the Information filed against petitioners.
For one, while petitioners raise in their motion to quash the
grounds that the facts charged do not constitute an offense
and that the trial court has no jurisdiction over the offense
charged or the person of the accused,23 their arguments
focused on an alleged defect in the complaint filed before the
fiscal, complainants capacity to sue and petitioners
exculpatory defenses against the crime of unfair competition.
_______________
20 Raro vs. Sandiganbayan, G.R. No. 108431, July 14, 2000,
335 SCRA 581.
21 Basa vs. People, G.R. No. 152444, February 16, 2005, 451
SCRA 510.
22 Lavides vs. Court of Appeals, G.R. No. 129670, February 1,
2000, 324 SCRA 321.
23 Records, p. 79.
146
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SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
Section 3, Rule 117 of the 1985 Rules of Criminal Procedure,
which was then in force at the time the alleged criminal acts
were committed, enumerates the grounds for quashing an
information, to wit:
a) That the facts charged do not constitute an offense;
b) That the court trying the case has no jurisdiction over the
offense charged or the person of the accused;
c) That the officer who filed the information had no authority
to do so;
d) That it does not conform substantially to the prescribed
form;
e) That more than one offense is charged except in those
cases in which existing laws prescribe a single punishment
for various offenses;

f) That the criminal action or liability has been extinguished;


g) That it contains averments which, if true, would constitute
a legal excuse or justification; and
h) That the accused has been previously convicted or in
jeopardy of being convicted, or acquitted of the offense
charged.
Nowhere in the foregoing provision is there any mention of
the defect in the complaint filed before the fiscal and the
complainants capacity to sue as grounds for a motion to
quash.
For another, under Section 3, Rule 112 of the 1985 Rules of
Criminal Procedure, a complaint is substantially sufficient if it
states the known address of the respondent, it is
accompanied by complainants affidavit and his witnesses
and supporting documents, and the affidavits are sworn to
before any fiscal, state prosecutor or government official
authorized to administer oath, or in their absence or
unavailability, a notary public who must certify that he
personally examined the affiants and that he is satisfied that
they voluntarily executed and understood their affidavits. All
these have been duly satisfied in the complaint filed before
Prosecution Attorney Aileen Marie S. Gutierrez. It must be
noted that even the absence of
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Sasot vs. People
an oath in the complaint does not necessarily render it
invalid.24 Want of oath is a mere defect of form, which does
not affect the substantial rights of the defendant on the
merits.25
In this case, Weltss Complaint-Affidavit contains an
acknowledgement by Notary Public Nicole Brown of the State
of New York that the same has been subscribed and sworn to
before her on February 12, 1998,26 duly authenticated by
the Philippine Consulate. While the copy on record of the
complaint-affidavit appears to be merely a photocopy
thereof, Prosecution Attorney Gutierrez stated that
complainants representative will present the authenticated
notarized original in court,27 and Prosecutor Guray
manifested that the original copy is already on hand.28 It is

apt to state at this point that the prosecutor enjoys the legal
presumption of regularity in the performance of his duties
and functions, which in turn gives his report the presumption
of accuracy.29
Moreover, records show that there are other supporting
documents from which the prosecutor based his
recommendation, to wit:
(1) The NBI Report dated June 4, 1997, containing an account
of the investigation conducted from April 30, 1997 to May 9,
1997, and the subsequent search and seizure of several
items from petitioners establishment;30
(2) The letter dated May 8, 1997 from the law firm of Ortega,
Del Castillo, Bacorro, Odulio, Calma & Carbonell to the NBI,
seeking assistance in stopping the illegal manufacture,
distribution and sale
_______________
24 People vs. Cayosa, G.R. No. L-24689, December 26, 1969,
30 SCRA 806.
25 People vs. Historillo, G.R. No. 130408, June 16, 2000, 33
SCRA 615.
26 Records, p. 85.
27 Id., p. 33.
28 Id., p. 96.
29 People vs. Court of Appeals, G.R. No. 126005, January 21,
1999, 301 SCRA 475.
30 Records, pp. 6-9.
148
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SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
of fake products bearing the NBA trademark, and in
prosecuting the proprietors of aforesaid factory;31 and
(3) The Joint Affidavit executed by Rechie D. Malicse and
Dalisay P. Bal-ot of the Pinkerton Consulting Services (Phils.)
Inc., which was certified to by Prosecution Attorney Gutierrez,
attesting to their findings that petitioners were found to be
manufacturing, printing, selling, and distributing counterfeit
NBA garment products.32
Consequently, if the information is valid on its face, and there
is no showing of manifest error, grave abuse of discretion and

prejudice on the part of public prosecutor, as in the present


case, the trial court should respect such determination.33
More importantly, the crime of Unfair Competition punishable
under Article 189 of the Revised Penal Code34 is a public
crime. It is essentially an act against the State and it is the
latter which principally stands as the injured party. The
complainants capacity to sue in such case becomes
immaterial.
In La Chemise Lacoste, S.A. vs. Fernandez,35 a case akin to
the present dispute, as it involved the crime of Unfair
Competition under Article 189 of the Revised Penal Code, and
the quashal of search warrants issued against manufacturers
of garments bearing the same trademark as that of the
petitioner, the Court succinctly ruled that:
More important is the nature of the case which led to this
petition. What preceded this petition for certiorari was a
letter-complaint filed before the NBI charging Hemandas with
a criminal
_______________
31 Id., pp. 12-13.
32 Id., pp. 18-19.
33 People vs. Court of Appeals, supra.
34 Article 189 of the Revised Penal Code has already been
repealed by the express provisions of Republic Act No. 8293
or The Intellectual Property Code, which took effect on
January 1, 1998.
35 G.R. Nos. L-63796-97, G.R. No. 65659, May 21, 1984, 129
SCRA 373.
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Sasot vs. People
offense, i.e., violation of Article 189 of the Revised Penal
Code. If prosecution follows after the completion of the
preliminary investigation being conducted by the Special
Prosecutor the information shall be in the name of the People
of the Philippines and no longer the petitioner which is only
an aggrieved party since a criminal offense is essentially an
act against the State. It is the latter which is principally the
injured party although there is a private right violated.

Petitioners capacity to sue would become, therefore, of not


much significance in the main case. We cannot allow a
possible violator of our criminal statutes to escape
prosecution upon a far-fetched contention that the aggrieved
party or victim of a crime has no standing to sue.
In upholding the right of the petitioner to maintain the
present suit before our courts for unfair competition or
infringement of trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights of foreign
states under the Paris Convention for the Protection of
Industrial Property to which the Philippines and France are
parties. We are simply interpreting and enforcing a solemn
international commitment of the Philippines embodied in a
multilateral treaty to which we are a party and which we
entered into because it is in our national interest to do so.36
(Emphasis supplied)
Lastly, with regard to petitioners arguments that the NBA
Properties, Inc., is not entitled to protection under Philippine
patent laws since it is not a registered patentee, that they
have not committed acts amounting to unfair competition for
the reason that their designs are original and do not appear
to be similar to complainants, and they do not use
complainants logo or design, the Court finds that these are
matters of defense that are better ventilated and resolved
during trial on the merits of the case.
WHEREFORE, the petition is DENIED for lack of merit. Let the
records of this case be REMANDED to the Regional Trial Court
of Manila (Branch 24) where Criminal Case No. 98-166147 is
presently assigned, for further proceedings with reasonable
dispatch.
_______________
36 Id., p. 386.
150
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SUPREME COURT REPORTS ANNOTATED
Sia vs. Heirs of Jose P. Mariano
SO ORDERED.
Puno (Chairman), Callejo, Sr., Tinga and Chico-Nazario, JJ.,
concur.
Petition denied.

Note.A complaint or information can only be filed if it is


approved or authorized by the provincial or city fiscal or chief
state prosecutor. (Abdula vs. Guiani, 326 SCRA 1 [2000])
o0o [Sasot vs. People, 462 SCRA 138(2005)]

G.R. No. 118295. May 2, 1997.*


WIGBERTO E. TAADA and ANNA DOMINIQUE COSETENG, as
members of the Philippine Senate and as taxpayers;
GREGORIO ANDOLANA and JOKER ARROYO as members of
the House of Representatives and as taxpayers; NICANOR P.
PERLAS and HORACIO R. MORALES, both as taxpayers; CIVIL
LIBERTIES UNION, NATIONAL ECONOMIC PROTECTIONISM
ASSOCIATION, CENTER FOR ALTERNATIVE DEVELOPMENT
INITIATIVES, LIKAS-KAYANG KAUNLARAN FOUNDATION, INC.,
PHILIPPINE RURAL RECONSTRUCTION MOVEMENT,
DEMOKRATIKONG KILUSAN NG MAGBUBUKID NG PILIPINAS,
INC., and PHILIPPINE PEASANT INSTITUTE, in representation
of various taxpayers and as non-governmental organizations,
petitioners, vs. EDGARDO ANGARA, ALBERTO ROMULO,
LETICIA RAMOS-SHAHANI, HEHERSON ALVAREZ, AGAPITO
AQUINO, RODOLFO BIAZON, NEPTALI
______________
* EN BANC.
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VOL. 272, MAY 2, 1997
19
Taada vs. Angara
GONZALES, ERNESTO HERRERA, JOSE LINA, GLORIA
MACAPAGAL-ARROYO, ORLANDO MERCADO, BLAS OPLE, JOHN
OSMEA, SANTANINA RASUL, RAMON REVILLA, RAUL ROCO,
FRANCISCO TATAD and FREDDIE WEBB, in their respective
capacities as members of the Philippine Senate who
concurred in the ratification by the President of the
Philippines of the Agreement Establishing the World Trade
Organization; SALVADOR ENRIQUEZ, in his capacity as
Secretary of Budget and Management; CARIDAD
VALDEHUESA, in her capacity as National Treasurer;
RIZALINO NAVARRO, in his capacity as Secretary of Trade and

Industry; ROBERTO SEBASTIAN, in his capacity as Secretary


of Agriculture; ROBERTO DE OCAMPO, in his capacity as
Secretary of Finance; ROBERTO ROMULO, in his capacity as
Secretary of Foreign Affairs; and TEOFISTO T. GUINGONA, in
his capacity as Executive Secretary, respondents.
Constitutional Law; Judicial Review; Separation of Powers;
Where an action of the legislative branch is seriously alleged
to have infringed the Constitution, it becom es not only the
right but in fact the duty of the judiciary to settle the dispute.
In seeking to nullify an act of the Philippine Senate on the
ground that it contravenes the Constitution, the petition no
doubt rais es a justiciable controversy. Where an action of the
legislative branch is seriously alleged to have infringed the
Cons titution, it becomes not only the right but in fact the
duty of the judiciary to settle the dispute. The question thus
posed is judicial rather than political. The duty (to adjudicate)
remains to assure that the supremacy of the Constitution is
upheld. Once a controvers y as to the application or
interpretation of a constitutional provision is raised before
this Court (as in the instant case), it becomes a legal issue
which the Court is bound by constitutional mandate to
decide.
Same; Same; Actions; Special Civil Actions; Certiorari,
prohibition and mandamus are appropriate remedies to raise
constitutional issues and to review and/or prohibit/nullify,
when proper, acts of legislative and executive officials.As
the petition alleges grave abuse of discretion and as there is
no other pl ain, speedy or adequate remedy in the ordinary
course of law, we have no hesitation at all in holding that this
petition should be given due course and the
20
20
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
vital questions raised therein ruled upon under Rule 65 of the
Rules of Court. Indeed, certiorari, prohibition and mandamus
are appropriate remedies to raise constitutional issues and to
review and/or prohibit/nullify, when proper, acts of legislative
and executive officials. On this, we have no equivocation.
Same; Same; Same; Same; In deciding to take jurisdiction
over this petition, the Supreme Court does not review the

wisdom of the decision of the President and the Senate in


enlisting the country in the WTO, or pass upon the merits of
trade liberalization as a policy espoused by said international
body, rather, it only exercises its constitutional duty to
determine whether or not there had been a grave abuse of
discretion amounting to lack or excess of jurisdiction on the
part of the Senate in ratifying the WTO Agreement and its
three annexes.We should stres s that, in deciding to take
jurisdiction over this petition, this Court will not review the
wisdom of the decision of the President and the Senate in
enlisting the country into the WTO, or pass upon the m erits
of trade liberalization as a policy espoused by said
international body. Neither will it rule on the propriety of the
governments economic policy of reducing/removing tariffs,
taxes, subsidies, quantitative restrictions, and other
import/trade barriers. Rather, it will only exercise its
constitutional duty to determine whether or not there had
been a grave abuse of discretion amounting to lack or excess
of jurisdiction on the part of the Senate in ratifying the WTO
Agreement and its three annexes.
Same; Constitutional Principles and State Policies; The
principles and state policies enumerated in Article II and
some sections of Article XII are not self-executing provisions,
the disregard of which can give rise to a cause of action in
the courts.By its very title, Article II of the Constitution is a
declaration of principles and state policies. The counterpart
of this article in the 1935 Constitution is called the bas ic
political creed of the nation by Dean Vicente Sinco. These
principles in Article II are not intended to be self-executing
principles ready for enforcement through the courts. They are
used by the judiciary as aids or as guides in the exercise of
its power of judicial review, and by the legislature in its
enactment of laws. As held in the leading case of Kilosbayan,
Incorporated vs. Morato, the principles and state policies
enumerated in Article II and some sections of Article XII are
not self-executing provis ions, the disregard of which can
give rise to a cause of action in the courts. They do not
embody judicially enforceable constitutional rights but
guidelines for legislation.
21
VOL. 272, MAY 2, 1997

21
Taada vs. Angara
Same; Same; Separation of Powers; Due Process.The
reasons for denying a cause of action to an alleged
infringement of broad constitutional principles are sourced
from basic considerations of due process and the lack of
judicial authority to wade into the uncharted ocean of social
and economic policy making.
Same; Same; Trade Liberalization; Filipino First Policy; While
the Constitution indeed mandates a bias in favor of Filipino
goods, services, labor and enterprises, at the same time, it
recognizes the need for business exchange with the rest of
the world on the bases of equality and reciprocity and limits
protection of Filipino enterprises only against foreign
competition and trade practices that are unfairthe
Constitution did not intend to pursue an isolationist policy.
All told, while the Constitution indeed mandates a bias in
favor of Filipino goods, services, labor and enterprises, at the
same time, it recognizes the need for business exchange with
the rest of the world on the bases of equality and reciprocity
and limits protection of Filipino enterprises only against
foreign competition and trade practices that are unfair. In
other words, the Constitution did not intend to pursue an
isolationist policy. It did not shut out foreign investments,
goods and services in the development of the Philippine
economy. While the Constitution does not encourage the
unlimited entry of foreign goods, services and investments
into the country, it does not prohibit them either. In fact, it
allows an exchange on the basis of equality and reciprocity,
frowning only on foreign competition that is unfair.
Same; Same; Same; Same; World Trade Organization (WTO);
General Agreement on Tariffs and Trade (GATT); There is
hardly any basis for the statement that under the WTO, local
industries and enterprises will all be wiped out and that
Filipinos will be deprived of control of the economy, for, quite
to the contrary, the weaker situations of developing nations
like the Philippines have been taken into account.Moreover,
GATT itself has provided built-in protection from unfair
foreign competition and trade practices including antidumping measures, countervailing measures and safeguards
against import surges. Where local business are jeopardized
by unfair foreign competition, the Philippines can avail of

these measures. There is hardly therefore any basis for the


statement that under the WTO, local industries and
enterprises will all be wiped out and that Filipinos will be
deprived of control of the economy. Quite the contrary, the
weaker situations of developin g na ti on s like the Philippines
have been taken into account; thus, there would be no basis
to say
22
22
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
that in joining the WTO, the respondents have gravely
abused their discretion. True, they have made a bold decision
to steer the ship of state into the yet uncharted sea of
economic liberalization. But such decision cannot be set
aside on the ground of grave abuse of discretion, simply
because we disagree with it or simply because we believe
only in other economic policies. As earlier stated, the Court in
taking jurisdiction of this case will not pass upon the
advantages and disadvantages of trade liberalization as an
economic policy. It will only perform its constitutional duty of
determining whether the Senate committed grave abuse of
discretion.
Same; Same; Same; Same; Same; Same; The fundamental
law encourages industries that are competitive in both
domestic and foreign markets, thereby demonstrating a
clear policy against a sheltered domestic trade environment,
but one in favor of the gradual developm ent of robust
industries that can compete with the best in the foreign
markets.The WTO reliance on most favored nation,
national treatment, and trade without discrimination
cannot be struck down as unconstitutional as in fact they are
rules of equality and reciprocity that apply to all WTO
members. Aside from envisioning a trade policy based on
equality and reciprocity, the fundamental law encourages
industries that are competitive in both domestic and foreign
markets, thereby demonstrating a clear policy against a
sheltered domestic trade environment, but one in favor of
the gradual development of robust industries that can
compete with the best in the foreign markets. Indeed, Filipino
managers and Filipino enterprises have shown capability and

tenacity to compete internationally. And given a free trade


environment, Filipino entrepreneurs and managers in
Hongkong have demonstrated the Filipino capacity to grow
and to prosper against the best offered under a policy of
laissez faire.
Same; Same; Same; Same; Same; Same; Political Questions;
The responses to questions on whether WTO/GATT will favor
the general welfare of the public at large involve judgment
calls by our policy makers, for which they are answerable to
our people during appropriate electoral exercisessuch
questions and the answers thereto are not subject to judicial
pronouncements based on grave abuse of discretion.
Consequently, the question boils down to whether WTO/GATT
will favor the general welfare of the public at large. Will
adherence to the W TO treaty bring this ideal (of favoring the
general welfare) to reality? Will WTO/GATT succeed in
promoting the Filipinos general welfare because it willas
promised by its
23
VOL. 272, MAY 2, 1997
23
Taada vs. Angara
promotersexpand the countrys exports and generate more
employment? Will it bring more prosperity, employment,
purchasing power and quality products at the most
reasonable rates to the Filipino public? The responses to
these questions involve judgment calls by our policy
makers, for which they are answerable to our people during
appropriate electoral exercises. Such questions and the
answers thereto are not subject to judicial pronouncements
based on grave abuse of discretion.
Same; It is to the credit of its drafters that the Constitution
can withstand the assaults of bigots and infidels but at the
same time bend with the refreshing winds of change
necessitated by unfolding events.It is not difficult to answer
this question. Constitutions are designed to meet not only
the vagaries of contemporary events. They should be
interpreted to cover even future and unknown circumstances.
It is to the credit of its drafters that a Constitution can
withstand the assaults of bigots and infidels but at the same
time bend with the refreshing winds of change necessitated

by unfolding events. As one eminent political law writer and


respected jurist explains: The Constitution must be
quintessential rather than superficial, the root and not the
blossom, the base and framework only of the edifice that is
yet to rise. It is but the core of the dream that must take
shape, not in a twinkling by mandate of our delegates, but
slowly in the crucible of Filipino minds and hearts, where it
will in time develop its sinews and gradually gather its
strength and finally achieve its substance. In fine, the
Constitution cannot, like the goddess Athena, rise full-grown
from the brow of the Constitutional Convention, nor can it
conjure by mere fiat an instant Utopia. It must grow with the
society it seeks to re-structure and march apace with the
progress of the race, drawing from the vicissitudes of history
the dynamism and vitality that will keep it, far from becoming
a petrified rule, a pulsing, living law attuned to the heartbeat
of the nation.
Same; International Law; While sovereignty has traditionally
been deemed absolute and allencompassing on the
domestic level, it is however subject to restrictions and limi
tation s vol un tari ly agreed to by the Philippines, expressly
or impliedly, as a mem ber of the family of nations.This
Court notes and appreciates the ferocity and passion by
which petitioners stressed their arguments on this issue.
However, while sovereignty has traditionally been deemed
absolute and all-encompassing on the domestic level, it is
however subject to restrictions and limitations voluntarily
agreed to by the
24
24
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Philippines, expressly or impliedly, as a member of the family
of nations. Unquestionably, the Constitution did not envision
a hermit-type isolation of the country from the rest of the
world.
Same; Same; Doctrine of I ncorporation; Words and Phrases;
By the doctrine of incorporation, the country is bound by
generally accepted principles of international law, which are
considered automatically part of our own laws.In its
Declaration of Principles and State Policies, the Constitution

adopts the generally accepted principles of international law


as part of the law of the land, and adheres to the policy of
peace, equality, justice, freedom, cooperation and amity,
with all nations. By the doctrine of incorporation, the
country is bound by generally accepted principles of
international law, which are considered to be autom atically
part of our own laws. One of the oldest and most
fundamental rules in international law is pacta sunt servanda
international agreements must be performed in good faith.
A treaty engagement is not a mere moral obligation but
creates a legally binding obligation on the parties x x x. A
state which has contracted valid international obligations is
bound to make in its legislations such modifications as may
be necessary to ensure the fulfillment of the obligations
undertaken.
Same; Same; Treaties; By their voluntary act, nations may
surrender some aspects of their state power in exchange for
greater benefits granted by or derived from a convention or
pact.By their inherent nature, treaties really limit or restrict
the absoluteness of sovereignty. By their voluntary act,
nations may surrender some aspects of their state power in
exchange for greater benefits granted by or derived from a
convention or pact. After all, states, like individuals, live with
coequals, and in pursuit of mutually covenanted objectives
and benefits, they also commonly agree to limit the exercise
of their otherwise absolute rights.
Same; Same; Same; World Trade Organization; Pleadings and
Practice; Article 34 of the General Provisions and Basic
Principles of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) does not contain an
unreasonable burden, consistent as it is with due process and
the concept of adversarial dispute settlement inherent in
Philippine judicial system.Petitioners aver that paragraph 1,
Article 34 of the General Provisions and Basic Principles of
the Agreement on T ra de-Rel a ted A s pects of Intellectual
Property Rights (TRIPS) intrudes on the power of the Supreme
Court to prom ulgate rules concerning pleading, practice and
proce25
VOL. 272, MAY 2, 1997
25

Taada vs. Angara


dures. x x x By and large, the arguments adduced in
connection with our dis position of the third issue
derogation of legislative powerwill apply to this fourth issue
also. Suffice it to say that the reciprocity clause more than
justifies such intrusion, if any actually exists. Besides, Article
34 does not contain an unreasonable burden, consistent as it
is with due process and the concept of adversarial dispute
settlement inherent in our judicial system. So too, since the
Philippines is a signatory to most international conventions
on patents, trademarks and copyrights, the adjus tment in
legislation and rules of procedure will not be substantial.
Same; Same; Same; Same; Same; Patents; Evidence; Words
and Phrases; Burden of Proof; Burden of Evidence; The
burden of proof contemplated by Article 34 should actually
and properly be understood as referring to the burden of
evidence (burden of going forward) placed on the producer
of identical (or fake) product to show that his product was
produced without the use of the patented processthe
patent owner still has the burden of proof since he still has
to introduce evidence of the existence of the alleged
identical product, the fact that it is identical to the genuine
one produced by the patented process and the fact of
newness of the genuine product or the fact of substantial
likelihood that the identical product was made by the
patented process.From the above, a WTO Member is
required to provide a rule of dis putable (note the words in
the absence of proof to the contrary) presumption that a
product shown to be identical to one produced with the use
of a patented process shall be deemed to have been
obtained by the (illegal) use of the said patented process, (1)
where such product obtained by the patented product is new,
or (2) where there is substantial likelihood that the identical
product was made with the use of the said patented process
but the owner of the patent could not determine the exact
process used in obtaining such identical product. Hence, the
burden of proof contemplated by Article 34 should actually
be understood as the duty of the alleged patent infringer to
overthrow such presumption. Such burden, properly
understood, actually refers to the burden of evidence
(burden of going forward) placed on the producer of the
identical (or fake) product to show that his product was

produced without the use of the patented process. The


foregoing notwithstanding, the patent owner still has the
burden of proof since, regardles s of the presumption
provided under paragraph 1 of Article 34, such owner still has
to introduce evidence of the existence of the alleged
identical product, the fact that it is identical to the genuine
one produced by the patented process and the fact of
26
26
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
newness of the genuine product or the fact of substantial
likelihood that the identical product was made by the
patented process.
Same; Same; Same; Same; Words and Phrases; Final Act,
Explained.A final act, sometimes called protocol de
clture, is an instrument which records the winding up of the
proceedings of a diplomatic conference and usually includes
a reproduction of the texts of treaties, conventions,
recommendations and other acts agreed upon and s igned by
the plenipotentiaries attending the conference. It is not the
treaty itself. It is rather a summary of the proceedings of a
protracted conference which may have taken place over
several years .
Same; Judicial Review; Words and Phrases; Certiorari; By
grave abuse of discretion is meant such capricious and
whimsical exercise of judgment as is equivalent to lack of
jurisdiction, and mere abuse of discretion is not enoughit
must be grave.By grave abuse of discretion is meant such
capricious and whimsical exercise of judgment as is
equivalent to lack of jurisdiction. Mere abuse of discretion is
not enough. It mus t be grave abuse of discretion as when
the power is exercised in an arbitrary or despotic manner by
reason of passion or personal hostility, and must be so patent
and so gross as to amount to an evasion of a positive duty or
to a virtual refusal to perform the duty enjoined or to act at
all in contemplation of law. Failure on the part of the
petitioner to show grave abus e of discretion will result in the
dismissal of the petition.
Same; Same; Separation of Powers; In rendering this
Decision, the Supreme Court never forgets that the Senate,

whose act is under review, is one of two sovereign houses of


Congress and is thus entitled to great respect in its actions.
In rendering this Decision, this Court never forgets that the
Senate, whose act is under review, is one of two sovereign
houses of Congress and is thus entitled to great respect in its
actions. It is itself a constitutional body independent and
coordinate, and thus its actions are presumed regular and
done in good faith. Unless convincing proof and persuasive
arguments are presented to overthrow such presumptions,
this Court will resolve every doubt in its favor. Using the
foregoing well-accepted definition of grave abuse of
discretion and the presumption of regularity in the Senates
processes, this Court cannot find any cogent reason to
impute grave abuse of discretion to the Senates exercise of
its power of concurrence in the WTO Agreement granted it by
Sec. 21 of Article VII of the Constitution.
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VOL. 272, MAY 2, 1997
27
Taada vs. Angara
Same; Same; Same; Treaties; World Trade Organization; The
Senate Act, after deliberation and voting, of voluntarily and
overwhelmingly giving its consent to the WTO Agreement
thereby making it a part of the law of the land, is a
legitimate exercise of its sovereign duty and power.That
the Senate, after deliberation and voting, voluntarily and
overwhelmingly gave its consent to the WTO Agreement
thereby making it a part of the law of the land is a
legitimate exercise of its sovereign duty and power. W e find
no patent and gross arbitrariness or des potism by reas on
of passion or personal hostility in such exercise. It is not
impossible to surmise that this Court, or at least some of its
members, may even agree with petitioners that it is more
advantageous to the national interest to strike down Senate
Resolution No. 97. But that is not a legal reason to attribute
grave abuse of dis cretion to the Senate and to nullify its
decision. To do so would constitute grave abuse in the
exercise of our own judicial power and duty. Ineludably, what
the Senate did was a valid exercise of its authority. As to
whether such exercise was wise, beneficial or viable is
outside the realm of judicial inquiry and review. That is a

matter between the elected policy makers and the people. As


to whether the nation should join the worldwide march
toward trade liberalization and economic globalization is a
matter that our people should determine in electing their
policy makers. After all, the WTO Agreement allows
withdrawal of membership, should this be the political desire
of a member.
World Trade Organization; Trade Liberalization; I nternational
Law; Notwithstanding objections against possible limitations
on national sovereignty, the WTO remains as the only viable
structure for multilateral trading and the veritable forum for
the development of international trade law.The eminent
futurist John Naisbitt, author of the best seller Megatrends,
predicts an Asian Renaissance where the East will become
the dominant region of the world economically, politically and
culturally in the next century. He refers to the free market
espoused by WTO as the catalyst in this coming Asian
ascendancy. There are at present about 31 countries
including China, Russia and Saudi Arabia negotiating for
membership in the WTO. Notwithstanding objections against
possible limitations on national sovereignty, the WTO
remains as the only viable structure for multilateral trading
and the veritable forum for the development of international
trade law. The alternative to WTO is isolation, stagnation, if
not economic self-destruction. Duly enriched with original
membership, keenly aware of the advantages and
disadvantages of globalization with its on-line experience,
and endowed with
28

The Solicitor General for respondents.


PANGANIBAN, J.:

28
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
a vision of the future, the Philippines now straddles the
crossroads of an international strategy for economic
prosperity and stability in the new millennium. Let the
people, through their duly authorized elected officers , make
their free choice.
SPECIAL CIVIL ACTION in the Supreme Court. Certiorari.

VOL. 272, MAY 2, 1997


29
Taada vs. Angara
Dumbarton Oaks and Bretton Woods. The first was the World
Bank (WB) which was to address the rehabilitation and
reconstruction of war-ravaged and later developing countries;
the second, the International Monetary Fund (IMF) which was
to deal with currency problems; and the third, the
International Trade Organization (ITO), which was to foster
order and predictability in world trade and to minimize
unilateral protectionist policies that invite challenge, even
retaliation, from other states. However, for a variety of

The facts are stated in the Opinion of the Court.


Abelardo F. Domondon for petitioners.

The emergence on January 1, 1995 of the World Trade


Organization, abetted by the membership thereto of the vast
majority of countries, has revolutionized international
business and economic relations amongst states. It has
irreversibly propelled the world towards trade liberalization
and economic globalization. Liberalization, globalization,
deregulation and privatization, the third-millennium buzz
words, are ushering in a new borderless world of business by
sweeping away as mere historical relics the heretofore
traditional modes of promoting and protecting national
economies like tariffs, export subsidies, import quotas,
quantitative restrictions, tax exemptions and currency
controls. Finding market niches and becoming the best in
specific industries in a market-driven and export-oriented
global scenario are replacing age-old beggar-thy-neighbor
policies that unilaterally protect weak and inefficient
domestic producers of goods and services. In the words of
Peter Drucker, the well-known management guru, Increased
participation in the world economy has become the key to
domestic economic growth and prosperity.
Brief Historical Background
To hasten worldwide recovery from the devastation wrought
by the Second World War, plans for the establishment of
three multilateral institutionsinspired by that grand political
body, the United Nationswere discussed at
29

reasons, including its non-ratification by the United States,


the ITO, unlike the IMF and WB, never took off. What
remained was only GATTthe General Agreement on Tariffs
and Trade. GATT was a collection of treaties governing access
to the economies of treaty adherents with no institutionalized
body administering the agreements or dependable system of
dispute settlement.
After half a century and several dizzying rounds of
negotiations, principally the Kennedy Round, the Tokyo Round
and the Uruguay Round, the world finally gave birth to that
administering bodythe World Trade Organizationwith the
signing of the Final Act in Marrakesh, Morocco and the
ratification of the WTO Agreement by its members.1
______________
1 In Annex A of her Memorandum, dated August 8, 1996,
received by this Court on August 12, 1996, Philippine
Ambassador to the United Nations , World Trade Organization
and other international organizations Lilia R. Bautista
(hereafter referred to as Bautista Paper) submitted a 46year Chronology of GATT as follows:
1947 The birth of GATT. On 30 October 1947, the General
Agreement on Tariffs and Trade (GATT) was signed by 23
nations at the Palais des Nations in Geneva. The Agreement
contained tariff concessions agreed to in the first multilateral
trade negotiations and a set of rules designed to prevent
these concessions from being frustrated by restrictive trade
measures.
The 23 founding contracting parties were members of the
Preparatory Committee established by the United Nations
Economic and Social Council in 1946 to draft the charter of
the International Trade Organization (ITO). The ITO was envis30
30
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Like many other developing countries, the Philippines joined
WTO as a founding member with the goal, as articu_______________

aged as the final leg of a triad of post-War economic agencies


(the other two were the International Monetary Fund and the
International Bank for Reconstructionlater the World Bank).
In parallel with this task, the Committee members decided to
negotiate tariff conces sions among themselves. From April to
October 1947, the participants completed some 123
negotiations and established 20 schedules containing the
tariff reductions and bindings which became an integral part
of GATT. These schedules resulting from the first Round
covered some 45,000 tariff concessions and about $10 billion
in trade.
GATT was conceived as an interim measure that put into
effect the commercial-policy provisions of the ITO. In
November, delegations from 56 countries met in Havana,
Cuba, to consider the ITO draft as a whole. After long and
difficult negotiations, s ome 53 countries signed the Final Act
authenticating the text of the Havana Charter in March 1948.
There was no commitment, however, from governments to
ratification and, in the end, the ITO was stillborn, leaving
GATT as the only international instrument governing the
conduct of world trade.
1948 Entry into force. On 1 January 1948, GATT entered into
force. The 23 founding mem bers were: Australia, Belgium,
Brazil, Burma, Canada, Ceylon, Chile, China, Cuba,
Czechoslovakia, France, India, Lebanon, Luxembourg,
Netherlands, New Zealand, Norway, Pakistan, Southern
Rhodesia, Syria, South Africa, United Kingdom and the United
States. The firs t Session of the Contracting Parties was held
from February to March in Havana, Cuba. The secretariat of
the Interim Commiss ion for the ITO, which served as the ad
hoc secretariat of GATT, moved from Lake Placid, New York,
to Geneva. The Contracting Parties held their second session
in Geneva from August to September.
1949 Second Round at Annecy. During the second Round of
trade negotiations, held from April to August at Annecy,
France, the contracting parties exchanged some 5,000 tariff
concess ions. At their third Session, they also dealt with the
access ion of ten more countries.
31
VOL. 272, MAY 2, 1997
31

Taada vs. Angara


lated by President Fidel V. Ramos in two letters to the Senate
(infra), of improving Philippine access to foreign markets,
especially its major trading partners, through the reduction of
tariffs on its exports, particularly agricultural and industrial
products. The President also saw in the WTO the opening of
_______________
1950 Third Round at Torquay. From September 1950 to April
1951, the contracting parties exchanged some 8,700 tariff
concessions in the English town, yielding tariff reduction of
about 25 per cent in relation to the 1948 level. Four more
countries acceded to GATT. During the fifth Session of the
Contracting Parties, the United States indicated that the ITO
Charter would not be re-submitted to the US Congress; this,
in effect, meant that ITO would not come into operation.
1956 Fourth Round at Geneva. The fourth Round was
completed in May and produced some $2.5 billion worth of
tariff reductions . At the beginning of the year, the GATT
commercial policy course for officials of developing countries
was inaugurated.
1958 The Haberler Report. GATT published Trends in
International Trade in October. Known as the Haberler
Report in honour of Professor Gottfried Haberler, the
chairman of the panel of eminent economists, it provided
initial guidelines for the work of GATT. The Contracting Parties
at their 13th Session, attended by Ministers, subsequently
established three committees in GATT: Committee I to
convene a further tariff negotiating conference; Committee II
to review the agricultural policies of member governments;
and Committee III to tackle the problems facing developing
countries in their trade. The establishment of the European
Economic Community during the previous year also
demanded large-scale tariff negotiations under Article XXIV:6
of the General Agreement.
1960 The Dillon Round. The fifth Round opened in September
and was divided into two phases: the first was concerned
with negotiations with EEC member s tates for the creation of
a single schedule of concessions for the Community based on
its Common External Tariff; and the second was a further
general round of tariff negotiations. Named in honour of US
UnderSecretary of State Douglas Dillon who proposed the

negotiations, the Round was concluded in July 1962 and


resulted in about 4,400 tariff concessions covering $4.9
billion of trade.
32
32
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
new opportunities for the services sector x x x, (the
reduction of) costs and uncertainty associated with exporting
x x x, and
_______________
1961 The Short-Term Arrangement covering cotton textiles
was agreed as an exception to the GATT rules. The
arrangement permitted the negotiation of quota restrictions
affecting the exports of cotton-producing countries. In 1962
the Short Term Arrangement became the Long term
Arrangement, lasting until 1974 when the Multifibre
Arrangement entered into force.
1964 The Kennedy Round. Meeting at Ministerial level, a
Trade Negotiations Committee formally opened the Kennedy
Round in May. In June 1967, the Rounds Final Act was signed
by some 50 participating countries which together accounted
for 75 per cent of world trade. For the first time, negotiations
departed from the product-by-product approach used in the
previous Rounds to an across-the-board or linear method of
cutting tariffs for industrial goods. The working hypothesis of
a 50 per cent target cut in tariff levels was achieved in many
areas. Concessions covered an estimated total value of trade
of about $40 billion. Separate agreements were reached on
grains, chemical products and a Code on Anti-Dumping.
1965 A New Chapter. The early 1960s marked the accession
to the General Agreement of many newly-independent
developing countries. I n February, the Contracting Parties,
meeting in a special session, adopted the text of Part IV on
Trade and Development. The additional chapter to the GATT
required developed countries to accord high priority to the
reduction of trade barriers to products of developing
countries. A Committee on Trade and Development was
established to oversee the functioning of the new GATT
provisions. In the preceding year, GATT had established the

International Trade Centre (ITC) to help developing countries


in trade promotion and identification of potential markets.
Since 1968, the ITC had been jointly operated by GATT and
the UN Conference on Trade and Development (UNCTAD).
1973 The Tokyo Round. The seventh Round was launched by
Ministers in September at the Japanese capital. Some 99
countries participated in negotiating a comprehensive body
of agreements covering both tariff and non-tariff matters.
33
VOL. 272, MAY 2, 1997
33
Taada vs. Angara
(the attraction of) more investments into the country.
Although the Chief Executive did not expressly mention it in
his
_______________
At the end of the Round in November 1979, participants
exchanged tariff reductions and bindings which covered more
than $300 billion of trade. As a result of these cuts, the
weighted average tariff on manufactured goods in the
worlds nine major industrial markets declined from 7.0 to 4.7
per cent. Agreements were reached in the following areas:
subsidies and countervailing measures, technical barriers to
trade, import licensing procedures, government procurement,
customs valuation, a revised anti-dumping code, trade in
bovine meat, trade in dairy products and trade in civil
aircraft. The first concrete result of the Round was the
reduction of import duties and other trade barriers by
industrial countries on tropical products exported by
developing countries.
1974 On 1 January 1974, the Arrangement Regarding
International Trade in Textiles, otherwise known as the Multifibre Arrangement (MFA), entered into force. I t superseded
the arrangements that had been governing trade in cotton
textiles since 1961. The MFA seeks to promote the expansion
and progressive liberalization of trade in textile products
while at the same time avoiding disruptive effects in
individual markets and lines of production. The MFA was
extended in 1978, 1982, 1986, 1991 and 1992. MFA

members account for most of the world exports of textiles


and clothing which in 1986 amounted to US$128 billion.
1982 Ministerial Meeting. Meeting for the first time in nearly
ten years, the GATT Ministers in November at Geneva
reaffirmed the validity of GATT rules for the conduct of
international trade and committed themselves to combating
protectionist pressures. They also established a wide-ranging
work programme for the GATT which was to lay down the
groundwork for a new Round.
1986 The Uruguay Round. The GATT Trade Mi ni sters
meeting at Punta del Este, Uruguay, launched the eighth
Round of trade negotiations on 20 September. The Punta del
Este Declaration, while representing a single political
undertaking, was divided into two sections. The first covered
negotiations on trade in goods and the second initiated
negotiation on trade in s ervices. In the area of trade in
goods, the Minis
34
34
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
letter, the Philippinesand this is of special interest to the
legal professionwill benefit from the WTO system of dispute
settlement by judicial adjudication through the independent
WTO settlement bodies called (1) Dispute Settlement Panels
and (2) Appellate Tribunal. Heretofore, trade disputes were
settled mainly through negotiations where solutions were
arrived at frequently on the basis of relative bargaining
strengths, and where naturally, weak and underdeveloped
countries were at a disadvantage.
The Petition in Brief
Arguing mainly (1) that the WTO requires the Philippines to
place nationals and products of member-countries on the
same footing as Filipinos and local products and (2) that the
WTO intrudes, limits and/or impairs the constitutional
powers of both Congress an d th e Su preme Court, the
instant petition before this Court assails the WTO Agreement
for
________________

ters committed themselves to a standstill on new trade


measures inconsis tent with their GATT obligations and to a
rollback programme aimed at phasing out existing
inconsistent measures. Envisaged to last four years,
negotiations started in early February 1987 in the following
areas: tariffs, non-tariff measures, tropical products, natural
resource-based products, textiles and clothing, agriculture,
subsidies, safeguards, trade-related aspects of intellectual
property rights including trade in counterfeit goods, and
trade-related investment meas ures . The work of other
groups included a review of GATT articles, the GATT disputesettlement procedure, the Tokyo Round agreements, as well
as the functioning of the GATT system as a whole.
1994 GATT 1994 is the updated version of GATT 1947 and
takes into account the substantive and institutional changes
negotiated in the Uruguay Round. GATT 1994 is an integral
part of the World Trade Organization established on 1 January
1995. It is agreed that there be a one year transition period
during which certain GATT 1947 bodies and commitments
would co-exist with those of the World Trade Organization.
35
VOL. 272, MAY 2, 1997
35
Taada vs. Angara
violating the mandate of the 1987 Constitution to develop a
self-reliant and independent national economy effectively
controlled by Filipinos x x x (to) give preference to qualified
Filipinos (and to) promote the preferential use of Filipino
labor, domestic materials and locally produced goods.
Simply stated, does the Philippine Constitution prohibit
Philippine participation in worldwide trade liberalization and
economic globalization? Does it proscribe Philippine
integration into a global economy that is liberalized,
deregulated and privatized? These are the main questions
raised in this petition for certiorari, prohibition and
mandamus under Rule 65 of the Rules of Court praying (1) for
the nullification, on constitutional grounds, of the
concurrence of the Philippine Senate in the ratification by the
President of the Philippines of the Agreement Establishing the
World Trade Organization (WTO Agreement, for brevity) and
(2) for the prohibition of its implementation and enforcement

through the release and utilization of public funds, the


assignment of public officials and employees, as well as the
use of government properties and resources by respondentheads of various executive offices concerned therewith. This
concurrence is embodied in Senate Resolution No. 97, dated
December 14, 1994.
The Facts
On April 15, 1994, Respondent Rizalino Navarro, then
Secretary of the Department of Trade and Industry (Secretary
Navarro, for brevity), representing the Government of the
Republic of the Philippines, signed in Marrakesh, Morocco, the
Final Act Embodying the Results of the Uruguay Round of
Multilateral Negotiations (Final Act, for brevity).
By signing the Final Act,2 Secretary Navarro on behalf of the
Republic of the Philippines, agreed:
_______________
2 The Final Act was signed by repres entatives of 125
entities, namely Algeria, Angola, Antigua and Barbuda,
Argentine Republic, Australia, Republic of Austria, State of
Bahrain, Peoples Republic of Bangladesh, Barbados, The
Kingdom of Belgium, Belize, Republic of
36
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
(a) to submit, as appropriate, the WTO Agreement for the
consideration of their respective competent authorities, with
a view to seeking approval of the Agreement in accordance
with their procedures; and
(b) to adopt the Ministerial Declarations and Decisions.
On August 12, 1994, the members of the Philippine Senate
received a letter dated August 11, 1994 from the President of
_______________
Benin, Bolivia, Botswana, Brazil, Brunei Darussalam, Burkina
Faso, Burundi, Cameroon, Canada, Central African Republic,
Chad, Chile, Peoples Republic of China, Colombia, Congo,
Costa Rica, Republic of Cote dIvoire, Cuba, Cyprus, Czech
Republic, Kingdom of Denmark, Commonwealth of Dominica,
Dominican Republic, Arab Republic of Egypt, El Salvador,

European Communities, Republic of Fiji, Finland, French


Republic, Gabonese Republic, Gambia, Federal Republic of
Germany, Ghana, Hellenic Republic, Grenada, Guatemala,
Republic of Guinea-Bissau, Republic of Guyana, Haiti,
Honduras, Hongkong, Hungary, Iceland, India, Indonesia,
Ireland, State of Israel, Italian Republic, Jamaica, Japan,
Kenya, Korea, State of Kuwait, Kingdom of Lesotho,
Principality of Liechtenstein, Grand Duchy of Luxembourg,
Macau, Republic of Madagascar, Republic of Malawi,
Malaysia, Republic of Maldives, Republic of Mali, Republic of
Malta, Islamic Republic of Mauritania, Republic of Mauritius,
United Mexican States, Kingdom of Morocco, Republic of
Mozambique, Union of Myanmar, Republic of Namibia,
Kingdom of the Netherlands, New Zealand, Nicaragua,
Republic of Niger, Federal Republic of Nigeria, Kingdom of
Norway, Islamic Republic of Pakistan, Paraguay, Peru,
Philippines, Poland, Portuguese Republic, State of Qatar,
Romania, Rwandese Republic, Saint Kitts and Nevis, Saint
Lucia, Saint Vincent and the Grenadines, Senegal, Sierra
Leone, Singapore, Slovak Republic, South Africa, Kingdom of
Spain, Democratic Socialist Republic of Sri Lanka, Republic of
Surinam, Kingdom of Swaziland, Kingdom of Sweden, Swiss
Confederation, United Republic of Tanzania, Kingdom of
Thailand, Togolese Republic, Republic of Trinidad and Tobago,
Tunisia, Turkey, Uganda, United Arab Emirates, United
Kingdom of Great Britain and Northern I reland, United States
of America, Eastern Republic of Uruguay, Venezuela, Republic
of Zaire, Republic of Zambia, Republic of Zimbabwe; see pp.
6-25, Vol. 1, Uruguay Round of Multilateral Trade
Negotiations.
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VOL. 272, MAY 2, 1997
37
Taada vs. Angara
the Philippines,3 stating among others that the Uruguay
Round Final Act is hereby submitted to the Senate for its
________________
3
11 August 1994
The Honorable Members

Senate
Through Senate President Edgardo Angara
Manila
Ladies and Gentlemen:
I have the honor to forward herewith an authenticated copy
of the Uruguay Round Final Act signed by Department of
Trade and Industry Secretary Rizalino S. Navarro for the
Philippines on 15 April 1994 in Marrakesh, Morocco.
The Uruguay Round Final Act aims to liberalize and expand
world trade and strengthen the interrelationship between
trade and economic policies affecting growth and
development.
The Final Act will improve Philippine access to foreign
markets, especially its major trading partners through the
reduction of tariffs on its exports particularly agricultural and
industrial products. These concessions may be availed of by
the Philippines, only if it is a member of the World Trade
Organization. By GATT estimates, the Philippines can acquire
additional export revenues from $2.2 to $2.7 Billion annually
under Uruguay Round. This will be on top of the normal
increase in exports that the Philippines may experience.
The Final Act will also open up new opportunities for the
services sector in such areas as the movement of personnel,
(e.g., professional services and construction services), crossborder supply (e.g., computer-related services), consumption
abroad (e.g., tourism, convention services, etc.) and
commercial presence.
The clarified and improved rules and disciplines on antidumping and countervailing measures will also benefit
Philippine exporters by reducing the costs and uncertainty
associated with exporting while at the same time providing a
means for domestic industries to safeguard themselves
against unfair imports.
Likewise, the provision of adequate protection for intellectual
property rights is expected to attract more inves tments into
the country and to make it less vulnerable to unilateral
actions by its trading partners (e.g., Sec. 301 of the United
States Omnibus Trade Law).
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SUPREME COURT REPORTS ANNOTATED


Taada vs. Angara
concurrence pursuant to Section 21, Article VII of the
Constitution.
On August 13, 1994, the members of the Philippine Senate
received another letter from the President of the Philippines4
_______________
In view of the foregoing, the Uruguay Round Final Act is
hereby submitted to the Senate for its concurrence pursuant
to Section 21, Article VI I of the Constitution.
A draft of a proposed Resolution giving its concurrence to the
afores aid Agreement is enclosed.
Very truly yours,
(SGD.) FIDEL V. RAMOS
4
11 August 1994
The Honorable Members
Senate
Through Senate President Edgardo Angara
Manila
Ladies and Gentlemen:
I have the honor to forward herewith an authenticated copy
of the Uruguay Round Final Act signed by Department of
Trade and Industry Secretary Rizalino S. Navarro for the
Philippines on 13 April 1994 in Marrakech (sic), Morocco.
Members of the trade negotiations committee, which
included the Philippines, agreed that the Agreement
Establishing the World Trade Organization, the Ministerial
Declarations and Decisions, and the Understanding on
Commitments in Financial Services embody the results of
their negotiations and form an integral part of the Uruguay
Round Final Act.
By signing the Uruguay Round Final Act, the Philippines,
through Secretary Navarro, agreed:
(a) To submit the Agreement Establishing the World Trade
Organization to the Senate for its concurrence pursuant to
Section 21, Article VII of the Constitution; and
(b) To adopt the Ministerial Declarations and Decisions. The
Uruguay Round Final Act aims to liberalize and expand world

trade and strengthen the interrelationship between trade and


economic policies affecting growth and development.
39
VOL. 272, MAY 2, 1997
39
Taada vs. Angara
likewise dated August 11, 1994, which stated among others
that the Uruguay Round Final Act, the Agreement
Establishing the World Trade Organization, the Ministerial
Declarations and Decisions, and the Understanding on
Commitments in Financial Services are hereby submitted to
the Sen______________
The Final Act will improve Philippine access to foreign
markets, especially its major trading 0partners through the
reduction of tariffs on its exports particularly agricultural and
industrial products. These concessions may be availed of by
the Philippines, only if it is a member of the World Trade
Organization. By GATT estimates, the Philippines can acquire
additional export revenues from $2.2. to $2.7 Billion annually
under Uruguay Round. This will be on top of the normal
increase in the exports that the Philippines may experience.
The Final Act will also open up new opportunities for the
services sector in such areas as the movement of personnel,
(e.g., professional services and construction services), crossborder supply (e.g., computer-related services), consumption
abroad (e.g., tourism, convention services, etc.) and
commercial presence.
The clarified and improved rules and disciplines on antidumping and countervailing measures will also benefit
Philippine exporters by reducing the costs and uncertainty
associated with exporting while at the same time providing a
means for domestic industries to safeguard themselves
against unfair imports.
Likewise, the provision of adequate protection for intellectual
property rights is expected to attract more inves tments into
the country and to make it less vulnerable to unilateral
actions by its trading partners (e.g., Sec. 301 of the United
States Omnibus Trade Law).

In view of the foregoing, the Uruguay Round Final Act, the


Agreement Establishing the World Trade Organization, the
Ministerial Declarations and Decisions, and the
Understanding on Commitments in Financial Services, as
embodied in the Uruguay Round Final Act and forming an
integral part thereof are hereby submitted to the Senate for
its concurrence pursuant to Section 21, Article VII of the
Constitution.
A draft of a proposed Resolution giving its concurrence to the
aforesaid Agreement is enclosed.
Very truly yours,
(SGD.) FIDEL V. RAMOS
40
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
ate for its concurrence pursuant to Section 21, Article VII of
the Constitution.
On December 9, 1994, the President of the Philippines
certified the necessity of the immediate adoption of P.S.
1083, a resolution entitled Concurring in the Ratification of
the Agreement Establishing the World Trade O rganization.5
On December 14, 1994, the Philippine Senate adopted
Resolution No. 97 which Resolved, as it is hereby resolved,
that the Senate concur, as it hereby concurs, in the
ratification by the President of the Philippines of the
Agreement Establishing the World Trade Organization.6 The
text of the WTO Agreement is written on pages 137 et seq. of
Volume I of the 36-volume Uruguay Round of Multilateral
Trade Negotiations and includes various agreements and
associated legal
_______________
5
December 9, 1994
HON. EDGARDO J. ANGARA
Senate President
Senate, Manila
Dear Senate President Angara:

Pursuant to the provis ions of Sec. 26(2), Article VI of the


Constitution, I hereby certify to the necessity of the
immediate adoption of P.S. 1083, entitled:
CONCURRING IN THE RATIFICATION OF THE AGREEMENT
ESTABLISHING THE WORLD TRADE ORGANIZATION
to meet a public emergency consisting of the need for
immediate membership in the WTO in order to assure the
benefits to the Philippine economy arising from such
membership.
Very truly yours,
(SGD.) FIDEL V. RAMOS
6 Attached as Annex A; Petition; rollo, p. 52. P.S. 1083 is the
forerunner of assailed Senate Resolution No. 97. It was
prepared by the Committee of the Whole on the General
Agreement on Tariffs and Trade chaired by Sen. Blas F. Ople
and co-chaired by Sen. Gloria Macapagal-Arroyo; see Annex
C, Compliance of petitioners dated January 28, 1997.
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VOL. 272, MAY 2, 1997
41
Taada vs. Angara
instruments (identified in the said Agreement as Annexes 1,
2 and 3 thereto and collectively referred to as Multilateral
Trade Agreements, for brevity) as follows:
ANNEX 1
Annex 1A: Multilateral Agreement on Trade in Goods
General Agreement on Tariffs and Trade 1994
Agreement on Agriculture
Agreement on the Application of Sanitary and
Phytosanitary Meas ures
Agreement on Textiles and Clothing
Agreement on Technical Barriers to Trade
Agreement on Trade-Related Investment Measures
Agreement on Implementation of Article VI of the
General Agreement on Tariffs and Trade 1994
Agreement on Implementation of Article VII of the
General Agreement on Tariffs and Trade 1994
Agreement on Pre-Shipment Inspection
Agreement on Rules of Origin
Agreement on Imports Licensing Procedures

Agreement on Subsidies and Coordinating Measures


Agreement on Safeguards
Annex 1B: General Agreement on Trade in Services and
Annexes
Annex 1C: Agreement on Trade-Related As pects of
Intellectual Property Rights
ANNEX 2
Understanding on Rules and Procedures
Governing the Settlement of Disputes
ANNEX 3
Trade Policy Review Mechanism
On December 16, 1994, the President of the Philippines
signed7 the Instrument of Ratification, declaring:
_______________
7 The Philippines is thus considered an original or founding
member of WTO, which as of July 26, 1996 had 123 members
as follows: Antigua and Barbuda, Argentina, Australia,
Austria, Bahrain, Bangladesh, Barbados, Belguim, Belize,
Benin, Bolivia, Botswana, Brazil, Brunei Darussalam, Burkina
Faso, Burundi, Camer
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
NOW THEREFORE, be it known that I, FIDEL V. RAMOS,
President of the Republic of the Philippines, after having seen
and considered the aforementioned Agreem ent Establishing
the World Trade Organization and the agreements and
associated legal instruments included in Annexes one (1),
two (2) and three (3) of that Agreement which are integral
parts thereof, signed at Marrakesh, Morocco on 15 April 1994,
do hereby ratify and confirm the same and every Article and
Clause thereof.
To emphasize, the WTO Agreement ratified by the President
of the Philippines is composed of the Agreement Proper and
the associated legal instruments included in Annexes one

(1), two (2) and three (3) of that Agreement which are
integral parts thereof.
On the other hand, the Final Act signed by Secretary Navarro
embodies not only the WTO Agreement (and its integral
annexes aforementioned) but also (1) the Ministerial
Declarations and Decisions and (2) the Understanding on
Commitments in Financial Services. In his Memorandum
______________
oon, Canada, Central African Republic, Chili, Colombia, Costa
Rica, Cote dIvoire, Cuba, Cyprus, Czech Republic, Denmark,
Djibouti, Dominica, Dominican Republic, Ecuador, Egypt, El
Salvador, European Community, Fiji, Finland, France, Gabon,
Germany, Ghana, Greece, Grenada, Guatemala, Guinea,
Guinea Bissau, Guyana, Haiti, Honduras, Hongkong, Hungary,
Iceland, India, Indonesia, Ireland, Israel, Italy, Jamaica, Japan,
Kenya, Korea, Kuwait, Lesotho, Liechtenstein, Luxembourg,
Macau, Madagascar, Malawi, Malaysia, Maldives, Mali, Malta,
Mauritania, Mauritius, Mexico, Morocco, Mozambique,
Myanmar, Namibia, Netherlandsfor the Kingdom in Europe
and for the Netherlands Antilles, New Zealand, Nicaragua,
Nigeria, Norway, Pakistan, Papua New Guinea, Paraguay,
Peru, Philippines, Poland, Portugal, Qatar, Romania, Rwanda,
Saint Kitts and Nevis , Saint Lucia, Saint Vincent & the
Grenadines, Senegal, Si erra Leone, Si ngapore, Sl ovak
Republ ic, Sl oveni a, Solomon Islands, South Africa, Spain, Sri
Lanka, Surinam, Swaziland, Sweden, Switzerland, Tanzania,
Thailand, Togo, Trinidad and Tobago, Tunisia, Turkey, Uganda,
United Arab Emirates, United Kingdom, United States,
Uruguay, Venezuela, Zambia and Zimbabwe. See Annex A,
Bautista Paper, infra.
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VOL. 272, MAY 2, 1997
43
Taada vs. Angara
dated May 13, 1996,8 the Solicitor General describes these
two latter documents as follows:
The Ministerial Decisions and Declarations are twenty-five
declarations and decisions on a wide range of matters, such
as measures in favor of least developed countries,
notification procedures, relationship of WTO with the

International Monetary Fund (I MF), and agreements on


technical barriers to trade and on dispute settlement.
The Understanding on Commitments in Financial Services
dwell on, among other things, standstill or limitations and
qualifications of commitments to existing non-conforming
measures, market access, national treatment, and definitions
of non-resident supplier of financial services, commercial
presence and new financial service.
On December 29, 1994, the present petition was filed. After
careful deliberation on respondents comment and
petitioners reply thereto, the Court resolved on December
12, 1995, to give due course to the petition, and the parties
thereafter filed their respective memoranda. The Court also
requested the Honorable Lilia R. Bautista, the Philippine
Ambassador to the United Nations stationed in Geneva,
Switzerland, to submit a paper, hereafter referred to as
Bautista Paper,9 for brevity, (1) providing a historical
background of and (2) summarizing the said agreements.
During the Oral Argument held on August 27, 1996, the Court
directed:
(a) the petitioners to submit the (1) Senate Committee
Report on the matter in controversy and (2) the transcript of
proceedings/hearings in the Senate; and
(b) the Solicitor General, as cou n s el for res ponden ts , to
file (1) a list of Philippine treaties signed prior to the
Philippine adher
______________
8 Page 6; rollo p. 261.
9 I n compliance, Ambassador Bautista submitted to the
Court on August 12, 1996, a Memorandum (the Bautista
Paper) consisting of 56 pages excluding annexes. This is the
same document mentioned in footnote No. 1.
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
ence to the WTO Agreement, which derogate from Philippine
sovereignty and (2) copies of the multi-volume WTO
Agreement and other documents mentioned in the Final Act,
as soon as possible.

After receipt of the foregoing documents, the Court said it


would consider the case subm itted for resolution. In a
Compliance dated September 16, 1996, the Solicitor General
submitted a printed copy of the 36-volume Uruguay Round of
Multilateral Trade Negotiations, and in another Compliance
dated October 24, 1996, he listed the various bilateral or
multilateral treaties or international instruments involving
derogation of Philippine sovereignty. Petitioners, on the
other hand, submitted their Compliance dated January 28,
1997, on January 30, 1997.
The Issues
In their Memorandum dated March 11, 1996, petitioners
summarized the issues as follows:
A. Whether the petition presents a political question or is
otherwise not justiciable.
B. Whether the petitioner members of the Senate who
participated in the deliberations and voting leading to the
concurrence are estopped from impugning the validity of the
Agreement Establishing the World Trade Organization or of
the validity of the concurrence.
C. Whether the provisions of the Agreement Establishing the
World Trade Organization contravene the provisions of Sec.
19, Article II, and Secs. 10 and 12, Article XII, all of the 1987
Philippine Constitution.
D. Whether provisions of the Agreement Establis hing the
World Trade Organization unduly limit, res trict and impair
Philippine sovereignty specifically the legislative power
which, under Sec. 2, Article VI, 1987 Philippine Constitution is
vested in the Congress of the Philippines.
E. Whether provisions of the Agreement Establishing the
World Trade Organization interfere with the exercise of
judicial power.
F. Whether the respondent members of the Senate acted in
grave abuse of discretion amounting to lack or excess of
jurisdiction
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VOL. 272, MAY 2, 1997
45
Taada vs. Angara

when they voted for concurrence in the ratification of the


constitutionally-infirm Agreement Establishing the World
Trade Organization.
G. Whether the respondent members of the Senate acted in
grave abuse of discretion amounting to lack or excess of
jurisdiction when they concurred only in the ratification of the
Agreement Establishing the World Trade Organization, and
not with the Presidential submission which included the Final
Act, Ministerial Declaration and Decisions, and the
Understanding on Commitments in Financial Services.
On the other hand, the Solicitor General as counsel for
respondents synthesized the several issues raised by
petitioners into the following:10
1. Whether or not the provisions of the Agreement
Establishing the World Trade Organization and the
Agreements and Associated Legal Instruments included in
Annexes one (1), two (2) and three (3) of that agreement
cited by petitioners directly contravene or undermine the
letter, spirit and intent of Section 19, Article II and Sections
10 and 12, Article XII of the 1987 Constitution.
2. Whether or not certain provisions of the Agreement unduly
limit, restrict or impair the exercise of legislative power by
Congress.
3. Whether or not certain provis ions of the Agreement impair
the exercise of judicial power by this Honorable Court in
promulgating the rules of evidence.
4. Whether or not the concurrence of the Senate in the
ratification by the President of the Philippines of the
Agreement establishing the W orld Trade Organization
implied rejection of the treaty embodied in the Final Act.
By raising and arguing only four issues against the seven
presented by petitioners, the Solicitor General has effectively
ignored three, namely: (1) whether the petition presents a
political question or is otherwise not justiciable; (2) whether
petitioner-members of the Senate (Wigberto E. Taada and
Anna Dominique Coseteng) are estopped from joining this
_______________
10 Memorandum for Respondents, p. 13; rollo, p. 268.
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SUPREME COURT REPORTS ANNOTATED


Taada vs. Angara
suit; and (3) whether the respondent-members of the Senate
acted in grave abuse of discretion when they voted for
concurrence in the ratification of the WTO Agreement. The
foregoing notwithstanding, this Court resolved to deal with
these three issues thus:
(1) The political question issuebeing very fundamental
and vital, and being a matter that probes into the very
jurisdiction of this Court to hear and decide this casewas
deliberated upon by the Court and will thus be ruled upon as
the first issue;
(2) The matter of estoppel will not be taken up because this
defense is waivable and the respondents have effectively
waived it by not pursuing it in any of their pleadings; in any
event, this issue, even if ruled in respondents favor, will not
cause the petitions dismissal as there are petitioners other
than the two senators, who are not vulnerable to the defense
of estoppel; and
(3) The issue of alleged grave abuse of discretion on the part
of the respondent senators will be taken up as an integral
part of the disposition of the four issues raised by the
Solicitor General.
During its deliberations on the case, the Court noted that the
respondents did not question the locus standi of petitioners.
Hence, they are also deemed to have waived the benefit of
such issue. They probably realized that grave constitutional
issues, expenditures of public funds and serious international
commitments of the nation are involved here, and that
transcendental public interest requires that the substantive
issues be met head on and decided on the merits, rather
than skirted or deflected by procedural matters.11
To recapitulate, the issues that will be ruled upon shortly are:
______________
11 Cf. Kilosbayan, Incorporated vs. Morato, 246 SCRA 540,
July 17, 1995 for a discussion on locus standi. See also the
Concurring Opinion of Mr. Justice Vicente V. Mendoza in Tatad
vs. Garcia, Jr., 243 SCRA 473, April 6, 1995, as well as
Kilusang Mayo Uno Labor Center vs. Garcia, Jr., 239 SCRA
386, 414, December 23, 1994.
47

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VOL. 272, MAY 2, 1997
47
Taada vs. Angara
(1) DOES THE PETITION PRESENT A JUSTICIABLE
CONTROVERSY? OTHERWISE STATED, DOES THE PETITION
INVOLVE A POLITI CAL QUESTION OVER WHICH THIS COURT
HAS NO JURISDICTION?
(2) DO THE PROVI SI ONS OF THE WTO AGREEM ENT AND ITS
THREE ANNEXES CONTRAVENE SEC. 19, ARTICLE II, AND
SECS. 10 AND 12, ARTICLE XII, OF THE PHILIPPINE
CONSTITUTION?
(3) DO THE PROVISIONS OF SAID AGREEMENT AND ITS
ANNEXES LIMIT, RESTRICT, OR IMPAIR THE EXERCISE OF
LEGISLATIVE POWER BY CONGRESS?
(4) DO SAID PROVISIONS UNDULY IMPAIR OR INTERFERE WITH
THE EXERCISE OF JUDICIAL POWER BY THIS COURT IN
PROMULGATING RULES ON EVIDENCE?
(5) WAS THE CONCURRENCE OF THE SENATE IN THE WTO
AGREEMENT AND ITS ANNEXES SUFFICIENT AND/OR VALID,
CONSIDERING THAT I T DID NOT INCLUDE THE FI NAL ACT,
MINISTERIAL DECLARATIONS AND DECISIONS, AND THE
UNDERSTANDING ON COMMITMENTS IN FINANCIAL
SERVICES?
The First Issue: Does the Court
Have Jurisdiction Over the Controversy?
In seeking to nullify an act of the Philippine Senate on the
ground that it contravenes the Constitution, the petition no
doubt raises a justiciable controversy. Where an action of the
legislative branch is seriously alleged to have infringed the
Constitution, it becomes not only the right but in fact the
duty of the judiciary to settle the dispute. The question thus
posed is judicial rather than political. The duty (to adjudicate)
remains to assure that the supremacy of the Constitution is
upheld.12 Once a controversy as to the application or
interpretation of a constitutional provision is raised before
this
_______________
12 Aquino, Jr. vs. Ponce Enrile, 59 SCRA 183, 196, September
17, 1974, cited in Bondoc vs. Pineda, 201 SCRA 792, 795,
September 26, 1991.

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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Court (as in the instant case), it becomes a legal issue which
the Court is bound by constitutional mandate to decide.13
The jurisdiction of this Court to adjudicate the matters14
raised in the petition is clearly set out in the 1987
Constitution,15 as follow s:
Judicial power includes the duty of the courts of justice to
settle actual controversies involving rights which are legally
demandable and enforceable, and to determine whether or
not there has been a grave abuse of discretion amounting to
lack or excess of jurisdiction on the part of any branch or
instrumentality of the government.
The foregoing text emphasizes the judicial departments duty
and power to strike down grave abuse of discretion on the
part of any branch or instrumentality of government
including Congress. It is an innovation in our political law.16
As explained by former Chief Justice Roberto Concepcion,17
the judiciary is the final arbiter on the question of whether
or not a branch of government or any of its officials has acted
without jurisdiction or in excess of jurisdiction or so
capriciously as to constitute an abuse of discretion
amounting to excess of jurisdiction. This is not only a judicial
pow er but a duty to pass judgment on matters of this
nature.
As this Court has repeatedly and firmly emphasized in many
cases,18 it w ill not shirk, digress from or abandon its sacred
duty and authority to uphold the Constitution in matters that
involve grave abuse of discretion brought before it in
________________
13 Guingona, Jr. vs. Gonzales, 219 SCRA 326, 337, March 1,
1993.
14 See Tanada and Macapagal vs. Cuenco, et al., 103 Phil.
1051 for a discussion on the scope of political question.
15 Section 1, Article VIII, (par. 2).
16 In a privilege speech on May 17, 1993, entitled Supreme
CourtPotential Tyrant? Senator Arturo Tolentino concedes

that this new provision gives the Supreme Court a duty to


intrude into the jurisdiction of the Congress or the President.
17 I Record of the Constitutional Commission 436.
18 Cf. Daza vs. Singson, 180 SCRA 496, December 21, 1989.
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VOL. 272, MAY 2, 1997
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Taada vs. Angara
appropriate cases, committed by any officer, agency,
instrumentality or department of the government.
As the petition alleges grave abuse of discretion and as there
is no other plain, speedy or adequate remedy in the ordinary
course of law, we have no hesitation at all in holding that this
petition should be given due course and the vital questions
raised therein ruled upon under Rule 65 of the Rules of Court.
Indeed, certiorari, prohibition and mandamus are appropriate
remedies to raise constitutional issues and to review and/or
prohibit/nullify, w hen proper, acts of legislative and
executive officials. On this, we have no equivocation.
We should stress that, in deciding to take jurisdiction over
this petition, this Court w ill not review the wisdom of the
decision of the President and the Senate in enlisting the
country into the WTO, or pass upon the merits of trade
liberalization as a policy espoused by said international body.
Neither will it rule on the propriety of the governments
economic policy of reducing/removing tariffs, taxes,
subsidies, quantitative restrictions, and other import/trade
barriers. Rather, it will only exercise its constitutional duty to
determine whether or not there had been a grave abuse of
discretion amounting to lack or excess of jurisdiction on the
part of the Senate in ratifying the WTO Agreement and its
three annexes.
Second Issue: The WTO Agreement
and Economic Nationalism
This is the lis mota, the main issue, raised by the petition.
Petitioners vigorously argue that the letter, spirit and intent
of the Constitution mandating economic nationalism are
violated by the so-called parity provisions and national
treatment clauses scattered in various parts not only of the
WTO Agreement and its annexes but also in the Ministerial

Decisions and Declarations and in the Understanding on


Commitments in Financial Services.
Specifically, the flagship constitutional provisions referred
to are Sec. 19, Article II, and Secs. 10 and 12, Article XII, of
the Constitution, which are worded as follows:
50
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Article II
DECLARATION OF PRINCIPLES
AND STATE POLICI ES
xx
xx
xx
xx
Sec. 19. The State shall develop a self-reliant and
independent national economy effectively controlled by
Filipinos.
xx
xx
xx
xx
Article XII
NATIONAL ECONOM Y AND PATRIMONY
xx
xx
xx
xx
Sec. 10. x x x. The Congress shall enact measures that will
encourage the formation and operation of enterprises whose
capital is wholly owned by Filipinos.
In the grant of rights, privileges, and concessions covering
the national economy and patrimony, the State shall give
preference to qualified Filipinos.
xx
xx
xx
xx
Sec. 12. The State shall promote the preferential use of
Filipino labor, domestic materials and locally produced goods,
and adopt measures that help make them competitive.
Petitioners aver that these sacred constitutional principles
are desecrated by the following WTO provisions quoted in
their memorandum:19
a) In the area of investment measures related to trade in
goods (TRIMS, for brevity):
Article 2

National Treatment and Quantitative Restrictions.


1. Without prejudice to other rights and obligations under
GATT 1994, no Member shall apply any TRIM that is
inconsistent with the provisions of Article III or Article XI of
GATT 1994.
2. An Illustrative list of TRIMS that are inconsistent with the
obligations of general elimination of quantitative re
_______________
19 Memorandum for Petitioners, pp. 14-16; rollo, pp. 204206.
51
VOL. 272, MAY 2, 1997
51
Taada vs. Angara
strictions provided for in paragraph I of Article XI of GATT
1994 is contained in the Annex to this Agreement.
(Agreement on Trade-Related Investment Measures, Vol. 27,
Uru-guay Round, Legal Instruments, p. 22121, emphasis
supplied). The Annex referred to reads as follows:
ANNEX
Illustrative List
1. TRIMS that are inconsistent with the obligation of national
treatment provided for in paragraph 4 of Article III of GATT
1994 include those which are mandatory or enforceable
under domestic law or under administrative rulings, or
compliance with which is necessary to obtain an advantage,
and which require:
(a) the purchase or use by an enterprise of products of
domestic origin or from any domestic source, whether
specified in terms of particular products, in terms of volume
or value of products, or in terms of proportion of volume or
value of its local production; or
(b) that an enterprises purchases or use of im-ported
products be limited to an amount related to the volume or
value of local products that it exports.
2. TRIMS that are inconsistent with the obligations of general
elimination of quantitative restrictions provided for in
paragraph 1 of Article XI of GATT 1994 include those which

are mandatory or enforceable under domestic laws or under


administrative rulings, or compliance with which is necessary
to obtain an advantage, and which restrict:
(a) the importation by an enterprise of products used in or
related to the local production that it exports;
(b) the importation by an enterprise of products used in or
related to its local production by restricting its access to
foreign exchange inflows attributable to the enterprise; or
(c) the exportation or sale for export specified in terms of
particular products, in terms of volume or value of products,
or in terms of a preparation of volume or value of its local
production. (Annex to the Agreement on Trade-Related
Investment Measures, Vol. 27, Uru52
52
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
guay Round Legal Documents, p. 22125, emphasis supplied).
The paragraph 4 of Article III of GATT 1994 referred to is
quoted as follows:
The products of the territory of any contracting party
imported into the territory of any other contracting party
shall be accorded treatment no less favourable than that
accorded to like products of national origin in respect of laws,
regulations and requirements affecting their internal sale,
offering for sale, purchase, transportation, distribution or use.
The provisions of this paragraph shall not prevent the
application of differential internal transportation charges
which are based exclusively on the economic operation of the
means of transport and not on the nationality of the
product. (Article III , GATT 1947, as amended by the Protocol
Modifying Part II, and Article XXVI of GATT, 14 September
1948, 62 UMTS 82-84 in relation to paragraph 1(a) of the
General Agreement on Tariffs and Trade 1994, Vol. 1, Uruguay
Round, Legal Instruments, p. 177, emphasis supplied).
b) In the area of trade related aspects of intellectual
property rights (TRIPS, for brevity):
Each Mem ber shall accord to the nationals of other Members
treatment no less favourable than what it accords to its own
nationals with regard to the protection of intellectual property
. . . (par. 1, Article 3, Agreement on Trade-Related Aspect of

Intellectual Property Rights, Vol. 31, Uruguay Round, Legal


Instruments, p. 25432, emphasis supplied).
(c) In the area of the General Agreement on Trade in
Services:
National Treatment
1. In the sectors inscribed in its schedule, and subject to any
conditions and qualifications set out therein, each Member
shall accord to services and service suppliers of any other
Member, in res pect of all measures affecting the supply of
services, treatment no less favourable than it accords to its
own like services and service suppliers.
53
VOL. 272, MAY 2, 1997
53
Taada vs. Angara
2. A Member may meet the requirement of paragraph I by
according to services and service suppliers of any other
Member, either formally identical treatment or formally
different treatment to that it accords to its own like services
and service suppliers.
3. Formally identical or formally different treatment shall be
considered to be less favourable if it modifies the conditions
of completion in favour of services or service suppliers of the
Member compared to like s ervices or service suppliers of any
other Member. (Article XVII, General Agreement on Trade in
Services, Vol. 28, Uruguay Round, Legal Instruments, p.
22610 emphasis supplied).
It is petitioners position that the foregoing national
treatment and parity provisions of the WTO Agreement
place nationals and products of member countries on the
same footing as Filipinos and local products, in
contravention of the Filipino First policy of the Constitution.
They allegedly render meaningless the phrase effectively
controlled by Filipinos. The constitutional conflict becomes
more manifest when viewed in the context of the clear duty
imposed on the Philippines as a WTO member to ensure the
conformity of its laws, regulations and administrative
procedures with its obligations as provided in the annexed
agreements.20 Petitioners further argue that these provisions
contravene constitutional limitations on the role exports play

in national development and negate the preferential


treatment accorded to Filipino labor, domestic materials and
locally produced goods.
On the other hand, respondents through the Solicitor General
counter (1) that such Charter provisions are not selfexecuting and m erely set out general policies; (2) that these
nationalistic portions of the Constitution invoked by
petitioners should not be read in isolation but should be
related to other relevant provisions of Art. XII, particularly
Secs. 1 and 13 thereof; (3) that read properly, the cited WTO
clauses do not conflict with the Constitution; and (4) that the
WTO
_______________
20 Par. 4, Article XVI, WTO Agreement, Uruguay Round of
Multilateral Trade Negotiations, Vol. 1, p. 146.
54
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Agreement contains sufficient provisions to protect
developing countries like the Philippines from the harshness
of sudden trade liberalization.
We shall now discuss and rule on these arguments.
Declaration of Principles Not Self-Executing
By its very title, Article II of the Constitution is a declaration
of principles and state policies. The counterpart of this
article in the 1935 Constitution21 is called the basic political
creed of the nation by Dean Vicente Sinco.22 These
principles in Article II are not intended to be self-executing
principles ready for enforcement through the courts.23 They
are used by the judiciary as aids or as guides in the exercise
of its pow er of judicial review, and by the legislature in its
enactment of laws. As held in the leading case of Kilosbayan,
Incorporated vs. Morato,24 the principles and state policies
enumerated in Article II and some sections of Article XII are
not self-executing provisions, the disregard of which can
give rise to a cause of action in the courts. They do not
embody judicially enforceable constitutional rights but
guidelines for legislation.

In the same light, we held in Basco vs. Pagcor 25 that broad


constitutional principles need legislative enactments to
implement them, thus:
_______________
21 Also entitled Declaration of Principles . The
nomenclature in the 1973 Charter is identical with that in the
1987s.
22 Philippine Political Law, 1962 Ed., p. 116.
23 Bernas, The Constitution of the Philippines: A Comm
entary, Vol. II, 1988 Ed., p. 2. In the very recent case of
Manila Prince Hotel vs. GSIS, G.R. No. 122156, February 3,
1997, p. 8, it was held that A provision which lays down a
general principle, such as those found in Art. II of the 1987
Constitution, is usually not self-executing.
24 246 SCRA 540, 564, July 17, 1995. See also Tolentino vs.
Secretary of Finance, G.R. No. 115455 and consolidated
cases, August 25, 1995.
25 197 SCRA 52, 68, May 14, 1991.
55
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Taada vs. Angara
On petitioners allegation that P.D. 1869 violates Sections 11
(Personal Dignity) 12 (Family) and 13 (Role of Youth) of Article
II; Section 13 (Social Justice) of Article XIII and Section 2
(Educational Values) of Article XIV of the 1987 Constitution,
suffice it to state also that these are merely statements of
principles and policies. As such, they are basically not selfexecuting, meaning a law should be passed by Congress to
clearly define and effectuate such principles.
In general, therefore, the 1935 provisions were not intended
to be self-executing principles ready for enforcement through
the courts. They were rather directives addressed to the
executive and to the legislature. If the executive and the
legislature failed to heed the directives of the article, the
available rem edy was not judicial but political. The
electorate could express their displeasure with the failure of
the executive and the legislature through the language of the
ballot. (Bernas, Vol. II, p. 2).

The reasons for denying a cause of action to an alleged


infringement of broad constitutional principles are sourced
from basic considerations of due process and the lack of
judicial authority to wade into the uncharted ocean of social
and economic policy making. Mr. Justice Florentino P.
Feliciano in his concurring opinion in Oposa vs. Factoran,
Jr.,26 explained these reasons as follow s:
My s uggestion is simply that petitioners must, before the
trial court, show a more specific legal righta right cast in
language of a significantly lower order of generality than
Article II (15) of the Constitutionthat is or may be violated
by the actions, or failures to act, imputed to the public res
pondent by petitioners so that the trial court can validly
render judgment granting all or part of the relief prayed for.
To my mind, the court should be understood as simply saying
that such a more specific legal right or rights may well exist
in our corpus of law, considering the general policy principles
found in the Constitution and the existence of the Philippine
Environment Code, and that the trial court should have given
petitioners an effective opportunity so to demonstrate,
instead of aborting the proceedings on a motion to dismiss.
_______________
26 224 SCRA 792, 817, July 30, 1993.
56
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
It seems to me important that the legal right which is an
essential component of a cause of action be a specific,
operable legal right, rather than a constitutional or statutory
policy, for at least two (2) reasons. One is that unless the
legal right claimed to have been violated or disregarded is
given specification in operational terms, defendants may well
be unable to defend themselves intelligently and effectively;
in other words, there are due process dimensions to this
matter.
The second is a broader-gauge considerationwhere a
specific violation of law or applicable regulation is not alleged
or proved, petitioners can be expected to fall back on the
expanded conception of judicial power in the second

paragraph of Section 1 of Article VIII of the Constitution which


reads:
Section 1. x x x
Judicial power includes the duty of the courts of justice to
settle actual controversies involving rights which are legally
demandable and enforceable, and to determine whether or
not there has been a grave abuse of discretion amounting to
lack or excess of juris diction on the part of any branch or
instrumentality of the Government. (Emphases supplied)
When substantive standards as general as the right to a
balanced and healthy ecology and the right to health are
combined with remedial standards as broad ranging as a
grave abuse of discretion amounting to lack or excess of
jurisdiction, the result will be, it is respectfully submitted, to
propel courts into the uncharted ocean of social and
economic policy making. At leas t in respect of the vast area
of environmental protection and management, our courts
have no claim to special technical competence and
experience and professional qualification. Where no specific,
operable norms and standards are shown to exis t, then the
policy making departmentsthe legislative and executive
departmentsmust be given a real and effective opportunity
to fashion and promulgate those norms and standards, and
to implement them before the courts should intervene.
Economic Nationalism Should Be Read with
Other Constitutional Mandates to Attain
Balanced Development of Economy
On the other hand, Secs. 10 and 12 of Article XII, apart from
merely laying down general principles relating to the
57
VOL. 272, MAY 2, 1997
57
Taada vs. Angara
national economy and patrimony, should be read and
understood in relation to the other sections in said article,
especially Secs. 1 and 13 thereof which read:
Section 1. The goals of the national economy are a more
equitable distribution of opportunities, income, and wealth; a
sustained increase in the amount of goods and services
produced by the nation for the benefit of the people; and an

expanding productivity as the key to raising the quality of life


for all, especially the underprivileged.
The State shall promote indus trialization and full
employment based on sound agricultural development and
agrarian reform, through industries that make full and
efficient use of human and natural resources, and which are
competitive in both domestic and foreign markets. However,
the State shall protect Filipino enterprises against unfair
foreign competition and trade practices.
In the pursuit of these goals, all sectors of the economy and
all regions of the country shall be given optimum opportunity
to develop. x x x
xxx
xxx
xxx
Sec. 13. The State shall pursue a trade policy that serves the
general welfare and utilizes all forms and arrangements of
exchange on the basis of equality and reciprocity.
As pointed out by the Solicitor General, Sec. 1 lays down the
basic goals of national economic development, as follows:
1. A more equitable distribution of opportunities, income and
wealth;
2. A sustained increase in the amount of goods and services
provided by the nation for the benefit of the people; and
3. An expanding productivity as the key to raising the quality
of life for all especially the underprivileged.
With these goals in context, the Constitution then ordains the
ideals of economic nationalism (1) by expressing preference
in favor of qualified Filipinos in the grant of rights, privileges
and concessions covering the national economy and
patrimony27 and in the use of Filipino labor, domestic
mate_______________
27 Sec. 10, Article XI I.
58
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
rials and locally-produced goods; (2) by mandating the State
to adopt measures that help make them competitive28;
and (3) by requiring the State to develop a self-reliant and
independent national economy effectively controlled by

Filipinos.29 In similar language, the Constitution takes into


account the realities of the outside world as it requires the
pursuit of a trade policy that serves the general welfare and
utilizes all forms and arrangements of exchange on the basis
of equality and reciprocity30; and speaks of industries
which are competitive in both dom estic and foreign
markets as w ell as of the protection of Filipino enterprises
against unfair foreign competition and trade practices.
It is true that in the recent case of Manila Prince Hotel vs.
Government Service Insurance System, et al.,31 this Court
held that Sec. 10, second par., Art. XII of the 1987
Constitution is a mandatory, positive command which is
complete in itself and which needs no further guidelines or
implementing laws or rules for its enforcement. From its very
words the provision does not require any legislation to put it
in operation. It is per se judicially enforceable. However, as
the constitutional provision itself states, it is enforceable only
in regard to the grants of rights, privileges and concessions
covering national economy and patrimony and not to every
aspect of trade and commerce. It refers to exceptions rather
than the rule. The issue here is not whether this paragraph of
Sec. 10 of Art. XII is self-executing or not. Rather, the issue is
whether, as a rule, there are enough balancing provisions in
the Constitution to allow the Senate to ratify the Philippine
concurrence in the WTO Agreement. And we hold that there
are.
All told, while the Constitution indeed mandates a bias in
favor of Filipino goods, services, labor and enterprises, at the
same tim e, it recognizes the need for business exchange
with the rest of the world on the bases of equality and
reciprocity
_______________
28
29
30
31
59

Sec. 12, Article XI I.


Sec. 19, Art. I I.
Sec. 13, Art. XII.
G.R. No. 122156, February 3, 1997, pp.13-14.

VOL. 272, MAY 2, 1997


59
Taada vs. Angara

and limits protection of Filipino enterprises only against


foreign competition and trade practices that are unfair.32 In
other words, the Constitution did not intend to pursue an
isolationist policy. It did not shut out foreign investments,
goods and services in the development of the Philippine
economy. While the Constitution does not encourage the
unlimited entry of foreign goods, services and investments
into the country, it does not prohibit them either. In fact, it
allows an exchange on the basis of equality and reciprocity,
frowning only on foreign competition that is unfair.
WTO Recognizes Need to
Protect Weak Economies
Upon the other hand, respondents maintain that the WTO
itself has some built-in advantages to protect weak and
developing economies, which comprise the vast majority of
its members. Unlike in the UN where major states have
permanent seats and veto pow ers in the Security Council, in
the WTO, decisions are made on the basis of sovereign
equality, with each members vote equal in weight to that of
any other. There is no WTO equivalent of the UN Security
Council.
WTO decides by consensus whenever possible, otherwise,
decisions of the Ministerial Conference and the General
Council shall be taken by the majority of the votes cast,
except in cases of interpretation of the Agreement or waiver
of the obligation of a member which would require three
fourths vote. Amendments would require two thirds vote in
general. Amendments to MFN provisions and the
Amendments provision will require assent of all members.
Any member may withdraw from the Agreement upon the
expiration of six months from the date of notice of
withdrawals.33
Hence, poor countries can protect their common interests
more effectively through the WTO than through one-on-one
negotiations with developed countries. Within the WTO,
developing countries can form powerful blocs to push their
eco______________
32 Sec. 1, Art. XII.
33 Bautista Paper, p. 19.
60

_______________
60
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
nomic agenda more decisively than outside the Organization.
This is not merely a matter of practical alliances but a
negotiating strategy rooted in law. Thus, the basic principles
underlying the WTO Agreement recognize the need of
developing countries like the Philippines to share in the
growth in international trade commensurate with the needs
of their economic development. These basic principles are
found in the preamble34 of the WTO Agreements as follows:
The Parties to this Agreement,
Recognizing that their relations in the field of trade and
economic endeavour should be conducted with a view to
raising standards of living, ensuring full employment and a
large and steadily growing volume of real income and
effective demand, and expanding the production of and trade
in goods and services, while allowing for the optimal use of
the worlds resources in accordance with the objective of
sustainable development, seeking both to protect and
preserve the environment and to enhance the means for
doing so in a manner consistent with their respective needs
and concerns at different levels of economic development,
Recognizing further that there is need for positive efforts
designed to ensure that developing countries, and especially
the least developed among them, secure a share in the
growth in international trade commensurate with the needs
of their economic developm ent,
Being des irous of contributing to these objectives by
entering into reciprocal and mutually advantageous
arrangements directed to the substantial reduction of tariffs
and other barriers to trade and to the elimination of
discriminatory treatment in international trade relations,
Resolved, therefore, to develop an integrated, more viable
and durable multilateral trading system encompassing the
General Agreement on Tariffs and Trade, the results of pas t
trade liberalization efforts, and all of the results of the
Uruguay Round of Multilateral Trade Negotiations,
Determined to preserve the basic principles and to further
the objectives underlying this multilateral trading system, x x
x. (italics supplied.)

34 Preamble, WTO Agreement p. 137, Vol. 1, Uruguay Round


of Multilateral Trade Negotiations. Italics supplied.
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VOL. 272, MAY 2, 1997
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Taada vs. Angara
Specific WTO Provisos
Protect Developing Countries
So too, the Solicitor General points out that pursuant to and
consistent with the foregoing basic principles, the WTO
Agreement grants developing countries a more lenient
treatment, giving their domestic industries some protection
from the rush of foreign competition. Thus, with respect to
tariffs in general, preferential treatment is given to
developing countries in terms of the amount of tariff
reduction and the period within which the reduction is to be
spread out. Specifically, GATT requires an average tariff
reduction rate of 36% for developed countries to be effected
within a period of six (6) years while developing countries
including the Philippinesare required to effect an average
tariff reduction of only 24% within ten (10) years.
In respect to domestic subsidy, GATT requires developed
countries to reduce domestic support to agricultural products
by 20% over six (6) years, as compared to only 13% for
developing countries to be effected within ten (10) years.
In regard to export subsidy for agricultural products, GATT
requires developed countries to reduce their budgetary
outlays for export subsidy by 36% and export volumes
receiving export subsidy by 21% within a period of six (6)
years. For developing countries, however, the reduction rate
is only two-thirds of that prescribed for developed countries
and a longer period of ten (10) years within which to effect
such reduction.
Moreover, GATT itself has p rov id ed bu il t-in protection from
unfair foreign competition and trade practices including antidumping measures, countervailing measures and safeguards
against import surges. Where local businesses are
jeopardized by unfair foreign competition, the Philippines can
avail of these measures. There is hardly therefore any basis

for the statement that under the WTO , local industries and
enterprises will all be w iped out and that Filipinos w ill be
deprived of control of the economy. Quite the contrary, the
weaker situations of developing nations like the Philippines
have been taken into account; thus, there would be no basis
to
62
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
say that in joining the WTO, the respondents have gravely
abused their discretion. True, they have made a bold decision
to steer the ship of state into the yet uncharted sea of
economic liberalization. But such decision cannot be set
aside on the ground of grave abuse of discretion, simply
because we disagree with it or simply because we believe
only in other economic policies. As earlier stated, the Court in
taking jurisdiction of this case will not pass upon the
advantages and disadvantages of trade liberalization as an
economic policy. It will only perform its constitutional duty of
determining whether the Senate committed grave abuse of
discretion.
Constitution Does Not
Rule Out Foreign Competition
Furthermore, the constitutional policy of a self-reliant and
independent national economy35 does not necessarily rule
out the entry of foreign investments, goods and services. It
contemplates neither economic seclusion nor mendicancy
in the international community. As explained by
Constitutional Comm issioner Bernardo Villegas, sponsor of
this constitutional policy:
Economic self-reliance is a primary objective of a developing
country that is keenly aware of overdependence on external
assistance for even its most basic needs. It does not mean
autarky or economic seclusion; rather, it means avoiding
mendicancy in the international community. Independence
refers to the freedom from undue foreign control of the
national economy, especially in such strategic industries as
in the development of natural resources and public
utilities.36

The WTO reliance on most favored nation, national


treatment, and trade without discrimination cannot be
struck down as unconstitutional as in fact they are rules of
equality and reciprocity that apply to all WTO members.
Aside from envisioning a trade policy based on equality and
_______________
35 Sec. 19, Article II, Constitution.
36 II I Records of the Constitutional Commission 252.
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VOL. 272, MAY 2, 1997
63
Taada vs. Angara
reciprocity,37 the fundamental law encourages industries
that are competitive in both domestic and foreign markets,
thereby demonstrating a clear policy against a sheltered
domestic trade environment, but one in favor of the gradual
development of robust industries that can compete with the
best in the foreign markets. Indeed, Filipino managers and
Filipino enterprises have shown capability and tenacity to
compete internationally. And given a free trade environment,
Filipino entrepreneurs and managers in Hongkong have
demonstrated the Filipino capacity to grow and to prosper
against the best offered under a policy of laissez faire.
Constitution Favors Consumers,
Not Industries or Enterprises
The Constitution has not really shown any unbalanced bias in
favor of any business or enterprise, nor does it contain any
specific pronouncement that Filipino companies should be
pampered with a total proscription of foreign competition. On
the other hand, respondents claim that WTO/GATT aims to
make available to the Filipino consumer the best goods and
services obtainable anywhere in the world at the most
reasonable prices. Consequently, the question boils down to
whether WTO/GATT will favor the general welfare of the
public at large.
Will adherence to the WTO treaty bring this ideal (of favoring
the general welfare) to reality?
Will WTO/GATT succeed in promoting the Filipinos general
welfare because it willas promised by its promoters

expand the countrys exports and generate more


employment?
Will it bring more prosperity, employment, purchasing power
and quality products at the most reasonable rates to the
Filipino public?
The responses to these questions involve judgment calls by
our policy makers, for which they are answerable to our
people during appropriate electoral exercises. Such questions
______________

framework only of the edifice that is yet to rise. It is but the


core of the dream that must take shape, not in a twinkling by
mandate of our delegates, but s lowly in the crucible of
Filipino minds and hearts, where it will in time develop its
sinews and gradually gather its strength and finally achieve
its substance. In fine, the Constitution cannot, like the
goddess Athena, rise full-grown from the brow of the
Constitu______________

37 Sec. 13, Article XI I, Constitution.


64

38 Justice Isagani A. Cruz, Philippine Political Law, 1995 Ed.,


p. 13, quoting his own article entitled, A Quintessential
Constitution earlier published in the San Beda Law Journal,
April 1972; Italics supplied.
65

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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
and the answers thereto are not subject to judicial
pronouncements based on grave abuse of discretion.
Constitution Designed to Meet
Future Events and Contingencies
No doubt, the WTO Agreement was not yet in existence when
the Constitution w as drafted and ratified in 1987. That does
not mean however that the Charter is necessarily flawed in
the sense that its framers might not have anticipated the
advent of a borderless world of business. By the same token,
the United Nations was not yet in existence when the 1935
Constitution became effective. Did that necessarily mean
that the then Constitution might not have contemplated a
diminution of the absoluteness of sovereignty when the
Philippines signed the UN Charter, thereby effectively
surrendering part of its control over its foreign relations to
the decisions of various UN organs like the Security Council?
It is not difficult to answer this question. Constitutions are
designed to meet not only the vagaries of contemporary
events. They should be interpreted to cover even future and
unknown circumstances. It is to the credit of its drafters that
a Constitution can withstand the assaults of bigots and
infidels but at the same time bend with the refreshing winds
of change necessitated by unfolding events. As one eminent
political law writer and respected jurist38 explains:
The Constitution must be quintessential rather than
superficial, the root and not the blossom, the base and

VOL. 272, MAY 2, 1997


65
Taada vs. Angara
tional Convention, nor can it conjure by mere fiat an ins tant
Utopia. It must grow with the society it seeks to re-structure
and march apace with the progress of the race, drawing from
the vicissitudes of history the dynamism and vitality that will
keep it, far from becoming a petrified rule, a pulsing, living
law attuned to the heartbeat of the nation.
Third Issue: The WTO Agreement and Legislative Power
The WTO Agreement provides that (e)ach Member shall
ensure the conformity of its laws, regulations and
administrative procedures with its obligations as provided in
the annexed Agreements.39 Petitioner s maintain that this
undertaking unduly limits, restricts and impairs Philippine
sovereignty, specifically the legislative power which under
Sec. 2, Article VI of the 1987 Philippine Constitution is vested
in the Congress of the Philippines. It is an assault on the
sovereign powers of the Philippines because this means that
Congress could not pass legislation that will be good for our
national interest and general welfare if such legislation will
not conform with the WTO Agreement, which not only relates
to the trade in goods x x x but also to the flow of investments
and money x x x as well as to a whole slew of agreements on
socio-cultural matters x x x .40

More specifically, petitioners claim that said WTO proviso


derogates from the power to tax, which is lodged in the
Congress.41 And while the Constitution allows Congress to
authorize the President to fix tariff rates, import and export
quotas, tonnage and wharfage dues, and other duties or
imposts, such authority is subject to specified limits and x x
x such limitations and restrictions as Congress may
provide,42 as in fact it did under Sec. 401 of the Tariff and
Customs Code.
_______________
39 Par. 4, Article XVI (M iscellaneous Provisions), WTO
Agreement, p. 146, Vol. 1, Uruguay Round of Multilateral
Trade Negotiations.
40 Memorandum for the Petitioners, p. 29; rollo, p. 219.
41 Sec. 24, Article VI, Constitution.
42 Subsection (2), Sec. 28, Article VI, Constitution.
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SUPREME COURT REPORTS ANNOTATED
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Sovereignty Limited by
International Law and Treaties
This Court notes and appreciates the ferocity and passion by
which petitioners stressed their arguments on this issue.
However, while sovereignty has traditionally been deemed
absolute and all-encompassing on the domestic level, it is
however subject to restrictions and limitations voluntarily
agreed to by the Philippines, expressly or impliedly, as a
member of the family of nations. Unquestionably, the
Constitution did not envision a hermit-type isolation of the
country from the rest of the world. In its Declaration of
Principles and State Policies, the Constitution adopts the
generally accepted principles of international law as part of
the law of the land, and adheres to the policy of peace,
equality, justice, freedom, cooperation and am ity, w ith all
nations.43 By the doctrine of incorporation, the country is
bound by generally accepted principles of international law,
which are considered to be automatically part of our own
laws.44 One of the oldest and most fundamental rules in
international law is pacta sunt servandainternational

agreements must be performed in good faith. A treaty


engagement is not a mere moral obligation but creates a
legally binding obligation on the parties x x x. A state which
has contracted valid international obligations is bound to
make in its legislations such modifications as may be
necessary to ensure the fulfillment of the obligations
undertaken.45
By their inherent nature, treaties really limit or restrict the
absoluteness of sovereignty. By their voluntary act, nations
may surrender some aspects of their state power in
exchange for greater benefits granted by or derived from a
convention or pact. After all, states, like individuals, live w ith
coequals, and in pursuit of mutually covenanted objectives
and benefits, they also commonly agree to limit the exercise
of their other______________
43 Sec. 2, Article II, Cons titution.
44 Cruz, Philippine Political Law, 1995 Ed., p. 55.
45 Salonga and Yap, op cit., 305.
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Taada vs. Angara
wise absolute rights. Thus, treaties have been used to record
agreements between States concerning such widely diverse
matters as, for example, the lease of naval bases, the sale or
cession of territory, the termination of war, the regulation of
conduct of hostilities, the formation of alliances, the
regulation of commercial relations, the settling of claims, the
laying down of rules governing conduct in peace and the
establishment of international organizations.46 The
sovereignty of a state therefore cannot in fact and in reality
be considered absolute. Certain restrictions enter into the
picture: (1) limitations imposed by the very nature of
membership in the family of nations and (2) limitations
imposed by treaty stipulations. As aptly put by John F.
Kennedy, Today, no nation can build its destiny alone. The
age of self-sufficient nationalism is over. The age of
interdependence is here.47
UN Charter and Other Treaties

Limit Sovereignty
Thus, when the Philippines joined the United Nations as one
of its 51 charter members, it consented to restrict its
sovereign rights under the concept of sovereignty as
autolimitation.47a Under Article 2 of the UN Charter, (a)ll
members shall give the United Nations every assistance in
any action it takes in accordance w ith the present Charter,
and shall refrain from giving assistance to any state against
which the United Nations is taking preventive or enforcement
action. Such assistance includes payment of its
corresponding share not merely in administrative expenses
but also in expenditures for the peace-keeping operations of
the organization. In its advisory opinion of July 20, 1961, the
International Court of Justice held that money used by the
United Nations Emergency Force in the Middle East and in the
Congo were
______________
46 Salonga, op cit., p. 287.
47 Quoted in Paras and Paras, Jr., International Law and World
Politics, 1994 Ed., p. 178.
47a Reagan vs. Commission of I nternal Revenue, 30 SCRA
968, 973, December 27, 1969.
68
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
expenses of the United Nations under Article 17, paragraph
2, of the UN Charter. Hence, all its m embers must bear their
corresponding share in such expenses. In this sense, the
Philippine Congress is restricted in its power to appropriate. It
is compelled to appropriate funds whether it agrees with
such peace-keeping expenses or not. So too, under Article
105 of the said Charter, the UN and its representatives enjoy
diplomatic privileges and immunities, thereby limiting again
the exercise of sovereignty of members within their own
territory. Another example: although sovereign equality and
domestic jurisdiction of all members are set forth as
underlying principles in the UN Charter, such provisos are
however subject to enforcement measures decided by the
Security Council for the maintenance of international peace

and security under Chapter VII of the Charter. A final


example: under Article 103, (i)n the event of a conflict
between the obligations of the Members of the United
Nations under the present Charter and their obligations
under any other international agreement, their obligation
under the present charter shall prevail, thus unquestionably
denying the Philippinesas a memberthe sovereign power
to make a choice as to which of conflicting obligations, if any,
to honor. Apart from the UN Treaty, the Philippines has
entered into many other international pactsboth bilateral
and multilateralthat involve limitations on Philippine
sovereignty. These are enumerated by the Solicitor General
in his Compliance dated October 24, 1996, as follows:
(a) Bilateral convention with the United States regarding
taxes on income, where the Philippines agreed, among others
, to exempt from tax, income received in the Philippines by,
among others, the Federal Reserve Bank of the United States,
the Export/Import Bank of the United States, the Overseas
Private Investment Corporation of the United States.
Likewise, in said convention, wages , salaries and similar
remunerations paid by the United States to its citizens for
labor and personal services performed by them as employees
or officials of the United States are exempt from income tax
by the Philippines.
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69
Taada vs. Angara
(b) Bilateral agreement with Belgium, providing, among
others, for the avoidance of double taxation with respect to
taxes on income.
(c) Bilateral convention with the Kingdom of Sweden for the
avoidance of double taxation.
(d) Bilateral convention with the French Republic for the
avoidance of double taxation.
(e) Bilateral air transport agreement with Korea where the
Philippines agreed to exempt from all customs duties,
inspection fees and other duties or taxes aircrafts of South
Korea and the regular equipment, spare parts and supplies
arriving with said aircrafts.

(f) Bilateral air service agreement with Japan, where the


Philippines agreed to exempt from customs duties, excise
taxes, inspection fees and other similar duties, taxes or
charges fuel, lubricating oils, spare parts, regular equipment,
stores on board Japanese aircrafts while on Philippine soil.
(g) Bilateral air service agreement with Belgium where the
Philippines granted Belgian air carriers the same privileges as
those granted to Japanese and Korean air carriers under
separate air service agreements.
(h) Bilateral notes with Israel for the abolition of transit and
vis itor visas where the Philippines exempted Israeli nationals
from the requirement of obtaining transit or visitor visas for a
sojourn in the Philippines not exceeding 59 days.
(i) Bilateral agreement with France exempting French
nationals from the requirement of obtaining transit and
visitor visa for a sojourn not exceeding 59 days.
(j) Multilateral Convention on Special Missions , where the
Philippines agreed that premises of Special Missions in the
Philippines are inviolable and its agents can not enter said
premis es without consent of the Head of Mission concerned.
Special Missions are also exempted from cus toms duties,
taxes and related charges.
(k) Multilateral Convention on the Law of Treaties. In this
convention, the Philippines agreed to be governed by the
Vienna Convention on the Law of Treaties.
(l) Declaration of the President of the Philippines accepting
com puls ory jurisdiction of the International Court of Jus tice.
The International Court of Justice has jurisdiction in all legal
disputes concerning the interpretation of a treaty, any
question of interna
70
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
tional law, the existence of any fact which, if established,
would constitute a breach of international obligation.
In the foregoing treaties, the Philippines has effectively
agreed to limit the exercise of its sovereign powers of
taxation, eminent domain and police power. The underlying
consideration in this partial surrender of sovereignty is the
reciprocal commitment of the other contracting states in

granting the same privilege and immunities to the


Philippines, its officials and its citizens. The same reciprocity
characterizes the Philippine commitments under WTO-GATT.
International treaties , whether relating to nuclear
disarmament, human rights, the environment, the law of the
sea, or trade, constrain domestic political sovereignty
through the assumption of external obligations. But unless
anarchy in international relations is preferred as an
alternative, in most cases we accept that the benefits of the
reciprocal obligations involved outweigh the costs associated
with any loss of political s overeignty. (T)rade treaties that
structure relations by reference to durable, well-defined
substantive norms and objective dispute resolution
procedures reduce the risks of larger countries exploiting raw
economic power to bully smaller countries, by subjecting
power relations to some form of legal ordering. In addition,
smaller countries typically stand to gain disproportionately
from trade liberalization. This is due to the simple fact that
liberalization will provide access to a larger set of potential
new trading relationship than in case of the larger country
gaining enhanced success to the smaller countrys
market.48
The point is that, as shown by the foregoing treaties, a
portion of sovereignty may be waived without violating the
Constitution, based on the rationale that the Philippines
adopts the generally accepted principles of international law
as part of the law of the land and adheres to the policy of x x
x cooperation and amity with all nations.
_______________
48 Trebilcock and Howse. The Regulation of International
Trade, p. 14, London, 1995, cited on pp. 55-56, Bautista
Paper.
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Taada vs. Angara
Fourth Issue: The WTO Agreement and Judicial Power
Petitioners aver that paragraph 1, Article 34 of the General
Provisions and Basic Principles of the Agreement on TradeRelated Aspects of Intellectual Property Rights (TRIPS)49

intrudes on the power of the Supreme Court to promulgate


rules concerning pleading, practice and procedures.50
To understand the scope and meaning of Article 34, TRIPS,51
it will be fruitful to restate its full text as follows:
Article 34
Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the
infringement of the rights of the owner referred to in
paragraph 1(b) of Article 28, if the subject matter of a patent
is a process for obtaining a product, the judicial authorities
shall have the authority to order the defendant to prove that
the process to obtain an identical product is different from
the patented process. Therefore, Members shall provide, in at
least one of the following circumstances, that any identical
product when produced without the consent of the patent
owner shall, in the absence of proof to the contrary, be
deemed to have been obtained by the patented process:
(a) if the product obtained by the patented process is new;
(b) if there is a substantial likelihood that the identical
product was made by the process and the owner of the
patent has been unable through reasonable efforts to
determine the process actually used.
2. Any Member shall be free to provide that the burden of
proof indicated in paragraph 1 shall be on the alleged
infringer only if the condition referred to in subparagraph (a)
is fulfilled or only if the condition referred to in subparagraph
(b) is fulfilled.
3. In the adduction of proof to the contrary, the legitimate
interests of defendants in protecting their manufacturing and
business
_______________
49 Uruguay Round of Multilateral Trade Negotiations, Vol. 31,
p. 25445.
50 Item 5, Sec. 5, Article VII I, Constitution.
51 Uruguay Round of Multilateral Trade Negotiations, Vol. 31,
p. 25445.
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SUPREME COURT REPORTS ANNOTATED

Taada vs. Angara


secrets shall be taken into account.
From the above, a WTO Member is required to provide a rule
of disputable (note the words in the absence of proof to the
contrary) presumption that a product shown to be identical
to one produced with the use of a patented process shall be
deemed to have been obtained by the (illegal) use of the said
patented process, (1) where such product obtained by the
patented product is new, or (2) where there is substantial
likelihood that the identical product was made with the use
of the said patented process but the owner of the patent
could not determine the exact process used in obtaining such
identical product. Hence, the burden of proof contemplated
by Article 34 should actually be understood as the duty of the
alleged patent infringer to overthrow such presumption. Such
burden, properly understood, actually refers to the burden
of evidence (burden of going forward) placed on the
producer of the identical (or fake) product to show that his
product was produced without the use of the patented
process.
The foregoing notwithstanding, the patent owner still has the
burden of proof since, regardless of the presumption
provided under paragraph 1 of Article 34, such owner still has
to introduce evidence of the existence of the alleged
identical product, the fact that it is identical to the genuine
one produced by the patented process and the fact of
newness of the genuine product or the fact of substantial
likelihood that the identical product was made by the
patented process.
The foregoing should really present no problem in changing
the rules of evidence as the present law on the subject,
Republic Act No. 165, as amended, otherwise known as the
Patent Law, provides a similar presumption in cases of
infringement of patented design or utility model, thus:
Sec. 60. Infringement.Infringement of a design patent or
of a patent for utility model shall consist in unauthorized
copying of the patented design or utility model for the
purpose of trade or industry in the article or product and in
the making, using or selling of the article or product copying
the patented design or utility model. Identity or substantial
identity with the patented design or utility model shall
constitute evidence of copying. (italics supplied)

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Moreover, it should be noted that the requirement of Article
34 to provide a disputable presumption applies only if (1) the
product obtained by the patented process is NEW or (2) there
is a substantial likelihood that the identical product w as
made by the process and the process owner has not been
able through reasonable effort to determine the process
used. Where either of these two provisos does not obtain,
members shall be free to determine the appropriate method
of implementing the provisions of TRIPS within their own
internal systems and processes.
By and large, the arguments adduced in connection with our
disposition of the third issuederogation of legislative power
will apply to this fourth issue also. Suffice it to say that the
reciprocity clause more than justifies such intrusion, if any
actually exists. Besides, Article 34 does not contain an
unreasonable burden, consistent as it is with due process and
the concept of adversarial dispute settlement inherent in our
judicial system.
So too, since the Philippines is a signatory to most
international conventions on patents, trademarks and
copyrights, the adjustment in legislation and rules of
procedure will not be substantial.52
Fifth Issue: Concurrence Only in the WTO Agreement and
Not in Other Documents Contained in the Final Act
Petitioners allege that the Senate concurrence in the WTO
Agreement and its annexesbut not in the other documents
referred to in the Final Act, namely the Ministerial Declaration
and Decisions and the Understanding on Commitments in
Financial Servicesis defective and insufficient and thus
constitutes abuse of discretion. They submit that such
concurrence in the WTO Agreement alone is flawed because
it is in effect a rejection of the Final Act, which in turn was the
document signed by Secretary Navarro, in representation of
the Republic upon authority of the President. They contend
that the second letter of the President to the Senate53 which
________________

52 Bautista Paper, p. 13.


53 See footnote 3 of the text of this letter.
74
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
enumerated what constitutes the Final Act should have been
the subject of concurrence of the Senate.
A final act, sometimes called protocol de clture, is an
instrument which records the winding up of the proceedings
of a diplomatic conference and usually includes a
reproduction of the texts of treaties, conventions,
recommendations and other acts agreed upon and signed by
the plenipotentiaries attending the conference.54 It is not
the treaty itself. It is rather a summary of the proceedings of
a protracted conference which may have taken place over
several years. The text of the Final Act Embodying the
Results of the Uruguay Round of Multilateral Trade
Negotiations is contained in just one page55 in Vol. I of the
36-volum e Uruguay Round of Multilat______________
54 Salonga and Yap, op cit., pp. 289-290.
55 The full text, without the signatures, of the Final Act is as
follows:
Final Act Embodying the Results of the Uruguay Round
of Multilateral Trade Negotiations
1. Having met in order to conclude the Uruguay Round of
Multilateral Trade Negotiations, representatives of the
governments and of the European Comm unities, members of
the Trade Negotiations Committee, agree that the Agreement
Establis hing the World Trade Organization (referred to in the
Final Act as the WTO Agreement), the Ministerial
Declarations and Decisions, and the Understanding on
Commitments in Financial Services, as annexed hereto,
embody the results of their negotiations and form an integral
part of this Final Act.
2. By signing to the present Final Act, the representatives
agree.

(a) to subm it, as appropriate, the WTO Agreement for the


consideration of their respective competent authorities with a
view to seeking approval of the Agreement in accordance
with their procedures; and
(b) to adopt the Ministerial Declarations and Decisions.
3. The representative agree on the desirability of acceptance
of the WTO Agreement by all participants in the Uruguay
Round of Multilateral Trade Negotiations (hereinafter referred
to as partici
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Taada vs. Angara
eral Trade Negotiations. By signing said Final Act, Secretary
Navarro as representative of the Republic of the Philippines
undertook:
(a) to submit, as appropriate, the WTO Agreement for the
consideration of their respective competent authorities with a
view to seeking approval of the Agreement in accordance
with their procedures; and
(b) to adopt the Ministerial Declarations and Decisions.
The assailed Senate Resolution No. 97 expressed
concurrence in exactly what the Final Act required from its
signatories, namely, concurrence of the Senate in the WTO
Agreement.
_______________
pants) with a view to its entry into force by 1 January 1995,
or as early as possible thereafter. Not later than late 1994,
Ministers will meet, in accordance with the final paragraph of
the Punta del Este Ministerial Declarations, to decide on the
international implementation of the results, including the
timing of their entry into force.
4. The representatives agree that the WTO Agreem ent shall
be open for acceptance as a whole, by signature or
otherwise, by all participants pursuant to Article XIV thereof.
The acceptance and entry into force of a Plurilateral Trade
Agreement included in Annex 4 of the WTO Agreement shall
be governed by the provisions of that Plurilateral Trade
Agreement.

5. Before accepting the WTO Agreement, participants which


are not contracting parties to the General Agreement on
Tariffs and Trade must first have concluded negotiations for
their acces sion to the General Agreement and become
contracting parties thereto. For participants which are not
contracting parties to the General Agreement as of the date
of the Final Act, the Schedules are not definitive and shall be
subsequently completed for the purpose of their accession to
the General Agreement and acceptance of the WTO
Agreement.
6. This Final Act and the texts annexed hereto shall be
deposited with the Director-General to the CONTRACTING
PARTIES to the General Agreem ent on Tariffs and Trade who
shall promptly furnish to each participant a certified copy
thereof. DONE at Marrakesh this fifteenth day of April one
thousand nine hundred and ninety-four, in a single copy, in
the English, French and Spanish languages, each text being
authentic.
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SUPREME COURT REPORTS ANNOTATED
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The Ministerial Declarations and Decisions were deemed
adopted without need for ratification. They were approved by
the ministers by virtue of Article XXV: 1 of GATT which
provides that representatives of the members can meet to
give effect to those provisions of this Agreement which
invoke joint action, and generally with a view to facilitating
the operation and furthering the objectives of this
Agreement.56
The Understanding on Com mitments in Financial Services
also approved in Marrakesh does not apply to the Philippines.
It applies only to those 27 Members which have indicated in
their respective schedules of commitments on standstill,
elimination of monopoly, expansion of operation of existing
financial service suppliers, temporary entry of personnel, free
transfer and processing of information, and national
treatment with respect to access to payment, clearing
systems and refinancing available in the normal course of
business.57

On the other hand, the WTO Agreement itself expresses what


multilateral agreements are deemed included as its integral
parts,58 as follow s:
Article II
Scope of the WTO
1. The WTO shall provide the common institutional
framework for the conduct of trade relations among its
Members in matters to the agreements and associated legal
instruments included in the Annexes to this Agreement.
2. The Agreements and associated legal instruments included
in Annexes 1, 2, and 3 (hereinafter referred to as Multilateral
Agreements) are integral parts of this Agreement, binding
on all Members.
3. The Agreements and associated legal instruments included
in Annex 4 (hereinafter referred to as Plurilateral Trade
Agreements) are also part of this Agreement for those
Members that have accepted them, and are binding on those
Members. The Plurilateral
_______________
56 Bautista Paper, p. 16.
57 Bautista Paper, p. 16.
58 Uruguay Round of Multilateral Trade Negotiations, Vol. I,
pp. 137-138.
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Taada vs. Angara
Trade Agreements do not create either obligation or rights for
Members that have not accepted them.
4. The General Agreement on Tariffs and Trade 1994 as
specified in Annex 1A (hereinafter referred to as GATT
1994) is legally distinct from the General Agreement on
Tariffs and Trade, dated 30 October 1947, annexed to the
Final Act adopted at the conclusion of the Second Session of
the Preparatory Committee of the United Nations Conference
on Trade and Employment, as subsequently rectified,
amended or modified (hereinafter referred to as GATT
1947).

It should be added that the Senate was well-aware of w hat it


was concurring in as shown by the members deliberation on
August 25, 1994. After reading the letter of President Ramos
dated August 11, 1994,59 the senators of the Republic
minutely dissected w hat the Senate was concurring in, as
follow s:60
THE CHAIRMAN: Yes. Now, the question of the validity of the
submission came up in the first day hearing of this
Committee yesterday. Was the observation made by Senator
Taada that what was submitted to the Senate was not the
agreement on es tablishing the World Trade Organization by
the final act of the Uruguay Round which is not the same as
the agreement establishing the World Trade Organization?
And on that basis, Senator Tolentino raised a point of order
which, however, he agreed to withdraw upon understanding
that his suggestion for an alternative solution at that time
was acceptable. That suggestion was to treat the
proceedings of the Committee as being in the nature of
briefings for Senators until the question of the submission
could be clarified. And so, Secretary Romulo, in effect, is the
President submitting a new. . . is he making a new
submission which improves on the clarity of the first
submission?
MR. ROMULO: Mr. Chairman, to make sure that it is clear cut
and there should be no misunderstanding, it was his
intention to clarify all matters by giving this letter.
THE CHAIRMAN: Thank you.
_______________
59 See footnote 3 for complete text.
60 Taken from pp. 63-85, Respondent Memorandum.
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SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Can this Comm ittee hear from Senator Taada and later on
Senator Tolentino since they were the ones that raised this
question yesterday?
Senator Taada, please.
SEN. TAADA: Thank you, Mr. Chairman.

Based on what Secretary Romulo has read, it would now


clearly appear that what is being submitted to the Senate for
ratification is not the Final Act of the Uruguay Round, but
rather the Agreement on the World Trade Organization as
well as the Ministerial Declarations and Decisions, and the
Understanding and Comm itm ents in Financial Services.
I am now satisfied with the wording of the new submission of
President Ramos.
SEN. TAADA. . . . of President Ramos, Mr. Chairman.
THE CHAIRMAN. Thank you, Senator Taada. Can we hear
from Senator Tolentino? And after him Senator Neptali
Gonzales and Senator Lina.
SEN. TOLENTI NO. MR. Chairman, I have not seen the new
submission actually transmitted to us but I saw the draft of
his earlier, and I think it now complies with the provisions of
the Constitution, and with the Final Act itself. The Constitution
does not require us to ratify the Final Act. It requires us to
ratify the Agreement which is now being submitted. The Final
Act itself specifies what is going to be submitted to with the
governments of the participants.
In paragraph 2 of the Final Act, we read and I quote:
By signing the present Final Act, the representatives agree:
(a) to submit as appropriate the WTO Agreement for the
consideration of the respective competent authorities with a
view to seeking approval of the Agreement in accordance
with their procedures.
In other words, it is not the Final Act that was agreed to be
submitted to the governments for ratification or acceptance
as whatever their constitutional procedures may provide but
it is the World Trade Organization Agreement. And if that is
the one that is being submitted now, I think it satisfies both
the Constitution and the Final Act itself.
Thank you, Mr. Chairman.
THE CHAIRMAN. Thank you, Senator Tolentino, May I call on
Senator Gonzales.
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Taada vs. Angara
SEN. GONZALES. Mr. Chairman, my views on this matter are
already a matter of record. And they had been adequately

reflected in the journal of yesterdays session and I dont see


any need for repeating the same.
Now, I would consider the new submission as an act ex
abudante cautela.
THE CHAIRMAN. Thank you, Senator Gonzales. Senator Lina,
do you want to make any comment on this?
SEN. LINA. Mr. President, I agree with the observation just
made by Senator Gonzales out of the abundance of question.
Then the new submission is, I believe, stating the obvious
and therefore I have no further comment to make.
Epilogue
In praying for the nullification of the Philippine ratification of
the WTO Agreement, petitioners are invoking this Courts
constitutionally imposed duty to determine whether or not
there has been grave abuse of discretion amounting to lack
or excess of jurisdiction on the part of the Senate in giving
its concurrence therein via Senate Resolution No. 97.
Procedurally, a writ of certiorari grounded on grave abuse of
discretion may be issued by the Court under Rule 65 of the
Rules of Court when it is amply shown that petitioners have
no other plain, speedy and adequate remedy in the ordinary
course of law.
By grave abuse of discretion is meant such capricious and
whimsical exercise of judgment as is equivalent to lack of
jurisdiction.61 Mere abuse of discretion is not enough. It must
be grave abuse of discretion as when the power is exercised
in an arbitrary or despotic manner by reason of passion or
personal hostility, and must be so patent and so gross as to
amount to an evasion of a positive duty or to a virtual refusal
to perform the duty enjoined or to act at all in contemplation
of law.62 Failure on the part of the petitioner to show grave
_______________
61 Zarate vs. Olegario, G.R. No. 90655, October 7, 1996.
62 San Sebastian College vs. Court of Appeals, 197 SCRA
138, 144, May 15, 1991; Comm issioner of Internal Revenue
vs. Court of Tax Appeals, 195 SCRA 444, 458 March 20, 1991;
Simon vs. Civil
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SUPREME COURT REPORTS ANNOTATED

Taada vs. Angara


abuse of discretion will result in the dismissal of the
petition.63
In rendering this D ecision, this Court never forgets that the
Senate, whose act is under review, is one of two sovereign
houses of Congress and is thus entitled to great respect in its
actions. It is itself a constitutional body independent and
coordinate, and thus its actions are presumed regular and
done in good faith. Unless convincing proof and persuasive
arguments are presented to overthrow such presumptions,
this Court will resolve every doubt in its favor. Using the
foregoing well-accepted definition of grave abuse of
discretion and the presumption of regularity in the Senates
processes, this Court cannot find any cogent reason to
impute grave abuse of discretion to the Senates exercise of
its power of concurrence in the WTO Agreement granted it by
Sec. 21 of Article VII of the Constitution.64
It is true, as alleged by petitioners, that broad constitutional
principles require the State to develop an independent
national economy effectively controlled by Filipinos; and to
protect and/or prefer Filipino labor, products, dom estic
materials and locally produced goods. But it is equally true
that such principleswhile serving as judicial and legislative
guidesare not in themselves sources of causes of action.
Moreover, there are other equally fundamental constitutional
principles relied upon by the Senate which mandate the
pursuit of a trade policy that serves the general welfare and
utilizes all forms and arrangements of exchange on the basis
of equality and reciprocity and the promotion of industries
w hich are competitive in both domestic and foreign
markets, thereby justifying its acceptance of said treaty. So
too, the alleged impairment of sovereignty in the exercise of
legisla_______________
Service Commission, 215 SCRA 410, November 5, 1992;
Bustamante vs. Commissioner on Audit, 216 SCRA 134, 136,
November 27, 1992.
63 Paredes vs. Civil Service Commission, 192 SCRA 84, 94,
December 4, 1990.

64 Sec. 21. No treaty or international agreement shall be


valid and effective unless concurred in by at least two-thirds
of all the Members of the Senate.
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Taada vs. Angara
tive and judicial powers is balanced by the adoption of the
generally accepted principles of international law as part of
the law of the land and the adherence of the Constitution to
the policy of cooperation and amity with all nations.
That the Senate, after deliberation and voting, voluntarily
and overwhelmingly gave its consent to the WTO Agreement
thereby making it a part of the law of the land is a
legitimate exercise of its sovereign duty and power. We find
no patent and gross arbitrariness or despotism by reason
of passion or personal hostility in such exercise. It is not
impossible to surmise that this Court, or at least some of its
members, may even agree with petitioners that it is more
advantageous to the national interest to strike down Senate
Resolution No. 97. But that is not a legal reason to attribute
grave abuse of discretion to the Senate and to nullify its
decision. To do so would constitute grave abuse in the
exercise of our own judicial power and duty. Ineludably, what
the Senate did was a valid exercise of its authority. As to
whether such exercise was wise, beneficial or viable is
outside the realm of judicial inquiry and review. That is a
matter between the elected policy makers and the people. As
to whether the nation should join the worldwide march
toward trade liberalization and economic globalization is a m
atter that our people should determine in electing their policy
makers. After all, the WTO Agreement allows withdrawal of
membership, should this be the political desire of a member.
The eminent futurist John Naisbitt, author of the best seller
Megatrends, predicts an Asian Renaissance65 where the
East will become the dominant region of the world
economically, politically and culturally in the next century.
He refers to the free market espoused by WTO as the
catalyst in this com in g A sian ascend ancy . There are at
present about 31 countries including China, Russia and Saudi
Arabia negotiating for membership in the WTO.

Notwithstanding objections against possible l imitation s on n


at ional sovereignty, the WTO remains as the only viable
structure for multilateral
_______________
65 Readers Digest, December 1996 issue, p. 28.
82
82
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
trading and the veritable forum for the development of
international trade law. The alternative to WTO is isolation,
stagnation, if not economic self-destruction. Duly enriched
with original membership, keenly aware of the advantages
and disadvantages of globalization with its on-line
experience, and endowed with a vision of the future, the
Philippines now straddles the crossroads of an international
strategy for economic prosperity and stability in the new
millennium. Let the people, through their duly authorized
elected officers, make their free choice.
WHEREFORE, the petition is DISMISSED for lack of merit.
SO ORDERED.
Narvasa (C.J.), Regalado, Davide, Jr., Romero, Bellosillo,
Melo, Puno, Kapunan, Mendoza, Francisco, Hermosisima, Jr.
and Torres, Jr., JJ., concur.
Padilla and Vitug, JJ., In the result.
Petition dismissed.
Notes.The primary purpose of the commissioners in
expanding the concept of judicial power is to eliminate the
defense of political question which in the past deprived the
Supreme Court of the jurisdiction to strike down abuses of
power by government. (Arroyo vs. House of Representatives
Electoral Tribunal, 246 SCRA 384 [1995])
When the Constitution mandates that in the grant of rights,
privileges, and concessions covering national economy and
patrimony, the State shall give preference to qualified
Filipinos, it means just thatqualified Filipinos shall be
preferred. (Manila Prince Hotel vs. Government Service
Insurance System, 267 SCRA [1997]) [Taada vs. Angara, 272
SCRA 18(1997)]

410
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
G.R. No. 115758. March 19, 2002.*
ELIDAD C. KHO, doing business under the name and style of
KEC COSMETICS LABORATORY, petitioner, vs. HON. COURT OF
APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents.
Actions; Injunctions; A preliminary injunction order may be
granted only when the application for the issuance of the
same shows facts entitling the applicant to the relief
demanded.Pursuant to Section 1, Rule 58 of the Revised
Rules of Civil Procedure, one of the grounds for the issuance
of a writ of preliminary injunction is a proof that the applicant
is entitled to the relief demanded, and the whole or part of
such relief consists in restraining the commission or
continuance of the act or acts complained of, either for a
limited period or perpetually. Thus, a preliminary injunction
order may be granted only when the application for the
issuance of the same shows facts entitling the applicant to
the relief demanded. This is the reason why we have ruled
that it must be shown that the invasion of the right sought to
be protected is material and substantial, that the right of
complainant is clear and unmistakable, and, that there is an
urgent and paramount necessity for the writ to prevent
serious damage.
Intellectual Property Law; Trademarks and Trade Names;
Copyrights; Patents; Words and Phrases; Trademark,
Copyright, and Patent, Explained and Distinguished;
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another.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.
______________
* SECOND DIVISION.
411
VOL. 379, MARCH 19, 2002
411
Kho vs. Court of Appeals
Same; Same; Same; Same; The name and container of a
beauty cream product are proper subjects of a trademark,
and a partys copyright and patent registration of the name
and container would not guarantee him or her the right to
the exclusive use of the same for the reason that they are
not appropriate subjects of the said intellectual rights.
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 petitioners copyright and patent
registration of the name and container would not guarantee
her the right to the exclusive 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.
Same; Injunctions; Judgments; Moot and Academic Issues;
The decision on the merits of the trial court with respect to
the issue of final injunction and damages renders the

issuance of the writ of preliminary injunction moot and


academic notwithstanding the fact that the same has been
appealed to the Court of Appeals.We cannot likewise
overlook the decision of the trial court in the case for final
injunction and damages. The disposi-tive portion of said
decision held that the petitioner does not have trademark
rights on the name and container of the beauty cream
product. The said decision on the merits of the trial court
rendered the issuance of the writ of a preliminary injunction
moot and academic notwithstanding the fact that the same
has been appealed in the Court of Appeals.
Same; Same; Forum Shopping; Technicalities and Procedural
Rules; A party improperly raises the technical objection of
non-compliance with Supreme Court Circular No. 28-91 by
filing a motion to dismiss the petition for certiorari since the
filing of a motion to dismiss is prohibited; Substantial justice
and equity require the Supreme Court not to revive a
dissolved writ of injunction in favor of a party without any
legal right thereto merely on a technical infirmity.The
petitioner argues that the appellate court erred in not
dismissing the petition for certiorari for non-compliance with
the rule on forum shopping. We disagree. First, the petitioner
improperly raised the technical objection of non-compliance
with Supreme Court Circular No. 28-91 by filing a motion to
dismiss the petition for certiorari filed in the appellate court.
This is prohibited by Section 6, Rule 66 of the
412
412
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
Revised Rules of Civil Procedure which provides that (I)n
petitions for certiorari before the Supreme Court and the
Court of Appeals, the provisions of Section 2, Rule 56, shall
be observed. Before giving due course thereto, the court may
require the respondents to file their comment to, and not a
motion to dismiss, the petition xxx (italics supplied).
Secondly, the issue was raised one month after petitioner
had filed her answer/comment and after private respondent
had replied thereto. Under Section 1, Rule 16 of the Revised
Rules of Civil Procedure, a motion to dismiss shall be filed
within the time for but before filing the answer to the

complaint or pleading asserting a claim. She therefore could


no longer submit a motion to dismiss nor raise defenses and
objections not included in the answer/comment she had
earlier tendered. Thirdly, substantial justice and equity
require this Court not to revive a dissolved writ of injunction
in favor of a party without any legal right thereto merely on a
technical infirmity. The granting of an injunctive writ based
on a technical ground rather than compliance with the
requisites for the issuance of the same is contrary to the
primary objective of legal procedure which is to serve as a
means to dispense justice to the deserving party.
Judgments; It is well-settled that non-observance of the
period for deciding cases or their incidents does not render
such judgments ineffective or void.The petitioner likewise
contends that the appellate court unduly delayed the
resolution of her motion for reconsideration. But we find that
petitioner contributed to this delay when she filed successive
contentious motions in the same proceeding, the last of
which was on October 27, 1993, necessitating countermanifestations from private respondents with the last one
being filed on November 9, 1993. Nonetheless, it is wellsettled that non-observance of the period for deciding cases
or their incidents does not render such judgments ineffective
or void.
Contempt; There is nothing contemptuous about
advertisements which merely announced in plain and
straightforward language the promulgation of a Court of
Appeals decision which was subsequently assailed before the
Supreme Court.We rule that the Court of Appeals correctly
denied the petitioners several motions for contempt of court.
There is nothing contemptuous about the advertisements
complained of which, as regards the proceedings in CA-G.R.
SP No. 27803 merely announced in plain and straightforward
language the promulgation of the assailed Decision of the
appellate court. Moreover, pursuant to Section 4 of Rule 39 of
the Revised Rules of Civil Procedure, the said decision
nullifying the injunctive writ was immediately executory.
413
VOL. 379, MARCH 19, 2002
413
Kho vs. Court of Appeals

PETITION for review on certiorari of a decision of the Court of


Appeals.
The facts are stated in the opinion of the Court.
Padilla, Jimenez, Kintanar & Asuncion Law Offices for
petitioner.
Roberto C. Bermejo for private respondents.
DE LEON, JR., J.:
Before us is a petition for review on certiorari of the
Decision1 dated May 24, 1993 of the Court of Appeals setting
aside and declaring as null and void the Orders2 dated
February 10, 1992 and March 19, 1992 of the Regional Trial
Court, Branch 90, of Quezon City granting the issuance of a
writ of preliminary injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C. Kho filed a
complaint for injunction and damages with a prayer for the
issuance of a writ of preliminary injunction, docketed as Civil
Case No. Q-91-10926, against the respondents Summerville
General Merchandising and Company (Summerville, for
brevity) and Ang Tiam Chay.
The petitioners 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. 03678; 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 petitioners cream products under the brand name
Chin Chun Su, in
______________
1 Penned by Associate Justice Ricardo P. Galvez, and
concurred in by Associate Justices Manuel M. Herrera and
Asaali S. Isnani, Ninth Division; Rollo, pp. 36-40.
2 Penned by Judge Abraham P. Vera; CA Rollo, pp. 12-18.
414

______________
414
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
similar containers that petitioner uses, thereby misleading
the public, and resulting in the decline in the petitioners
business sales and income; and, that the respondents should
be enjoined from allegedly infringing on the copyrights and
patents of the petitioner.
The respondents, on the other hand, alleged as their defense
that Summerville is the exclusive and authorized importer,
repacker 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
governmental agencies; that KEC Cosmetics Laboratory of
the petitioner obtained the copyrights through
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.
After due hearing on the application for preliminary
injunction, the trial court granted the same in an Order dated
February 10, 1992, the dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing
business under the style of KEC Cosmetic Laboratory, for
preliminary injunction, is hereby granted. Consequentially,
plaintiff is required to file with the Court a bond executed to
defendants in the amount of five hundred thousand pesos
(P500,000.00) to the effect that plaintiff will pay to
defendants all damages which defendants may sustain by
reason of the injunction if the Court should finally decide that
plaintiff is not entitled thereto.
SO ORDERED.3
The respondents moved for reconsideration but their motion
for reconsideration was denied by the trial court in an Order
dated March 19, 1992.4
On April 24, 1992, the respondents filed a petition for
certiorari with the Court of Appeals, docketed as CA-G.R. SP
No. 27803,

3 CA Rollo, pp. 12-17.


4 CA Rollo, p. 18.
415
VOL. 379, MARCH 19, 2002
415
Kho vs. Court of Appeals
praying for the nullification of the said writ of preliminary
injunction issued by the trial court. After the respondents
filed their reply and almost a month after petitioner
submitted her comment, or on August 14, 1992, the latter
moved to dismiss the petition for violation of Supreme Court
Circular No. 28-91, a circular prohibiting forum shopping.
According to the petitioner, the respondents did not state the
docket number of the civil case in the caption of their petition
and, more significantly, they did not include therein a
certificate of non-forum shopping. The respondents opposed
the petition and submitted to the appellate court a certificate
of non-forum shopping for their petition.
On May 24, 1993, the appellate court rendered a Decision in
CA-G.R. SP No. 27803 ruling in favor of the respondents, the
dispositive portion of which reads:
WHEREFORE, the petition is hereby given due course and the
orders of respondent court dated February 10, 1992 and
March 19, 1992 granting the writ of preliminary injunction
and denying petitioners motion for reconsideration are
hereby set aside and declared null and void. Respondent
court is directed to forthwith proceed with the trial of Civil
Case No. Q-91-10926 and resolve the issue raised by the
parties on the merits.
SO ORDERED.5
In granting the petition, the appellate court ruled that:
The registration of the trademark or brandname Chin Chun
Su by KEC with the supplemental register of the Bureau of
Patents, Trademarks and Technology Transfer cannot be
equated with registration in the principal register, which is
duly protected by the Trademark Law.
xxx
xxx
xxx
As ratiocinated in La Chemise Lacoste, S.A. vs. Fernandez,
129 SCRA 373, 393:

Registration in the Supplemental Register, therefore, serves


as notice that the registrant is using or has appropriated the
trademark. By the very fact that the trademark cannot as yet
be on guard and there are certain defects, some obstacles
which the use must
______________
5 Rollo, p. 39.
416
416
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
still overcome before he can claim legal ownership of the
mark or ask the courts to vindicate his claims of an exclusive
right to the use of the same. It would be deceptive for a party
with nothing more than a registration in the Supplemental
Register to posture before courts of justice as if the
registration is in the Principal Register.
The reliance of the private respondent on the last sentence of
the Patent office action on application Serial No. 30954 that
registrants is presumed to be the owner of the mark until
after the registration is declared cancelled is, therefore,
misplaced and grounded on shaky foundation. The supposed
presumption not only runs counter to the precept embodied
in Rule 124 of the Revised Rules of Practice before the
Philippine Patent Office in Trademark Cases but considering
all the facts ventilated before us in the four interrelated
petitions involving the petitioner and the respondent, it is
devoid of factual basis. As even in cases where presumption
and precept may factually be reconciled, we have held that
the presumption is rebuttable, not conclusive, (People v. Lim
Hoa, G.R. No. L-10612, May 30, 1958, Unreported). One may
be declared an unfair competitor even if his competing
trademark is registered (Parke, Davis & Co. v. Kiu Foo & Co.,
et al., 60 Phil 928; La Yebana Co. v. Chua Seco & Co., 14 Phil
534).6
The petitioner filed a motion for reconsideration. This she
followed with several motions to declare respondents in
contempt of court for publishing advertisements notifying the
public of the promulgation of the assailed decision of the
appellate court and stating that genuine Chin Chun Su

products could be obtained only from Summerville General


Merchandising and Co.
In the meantime, the trial court went on to hear petitioners
complaint for final injunction and damages. On October 22,
1993, the trial court rendered a Decision7 barring the
petitioner from using the trademark Chin Chun Su and
upholding the right of the respondents to use the same, but
recognizing the copyright of the petitioner over the oval
shaped container of her beauty cream. The trial court did not
award damages and costs to any of the parties but to their
respective counsels were awarded Seventy-Five Thou______________
6 Rollo, pp. 38-39.
7 Rollo, pp. 19-241.
417
VOL. 379, MARCH 19, 2002
417
Kho vs. Court of Appeals
sand Pesos (P75,000.00) each as attorneys fees. The
petitioner duly appealed the said decision to the Court of
Appeals.
On June 3, 1994, the Court of Appeals promulgated a
Resolution8 denying the petitioners motions for
reconsideration and for contempt of court in CA-G.R. SP No.
27803.
Hence, this petition anchored on the following assignment of
errors:
I
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED
GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF
JURISDICTION IN FAILING TO RULE ON PETITIONERS MOTION
TO DISMISS.
II
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED
GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF
JURISDICTION IN REFUSING TO PROMPTLY RESOLVE
PETITIONERS MOTION FOR RECONSIDERATION.
III

IN DELAYING THE RESOLUTION OF PETITIONERS MOTION FOR


RECONSIDERATION, THE HONORABLE COURT OF APPEALS
DENIED PETITIONERS RIGHT TO SEEK TIMELY APPELLATE
RELIEF AND VIOLATED PETITIONERS RIGHT TO DUE
PROCESS.
IV
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED
GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF
JURISDICTION IN FAILING TO CITE THE PRIVATE
RESPONDENTS IN CONTEMPT.9
The petitioner faults the appellate court for not dismissing
the petition on the ground of violation of Supreme Court
Circular No. 28-91. Also, the petitioner contends that the
appellate court violated Section 6, Rule 9 of the Revised
Internal Rules of the Court of
______________
8 Rollo, pp. 42-43.
9 Rollo, p. 21.
418
418
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
Appeals when it failed to rule on her motion for
reconsideration within ninety (90) days from the time it is
submitted for resolution. The appellate court ruled only after
the lapse of three hundred fifty-four (354) days, or on June 3,
1994. In delaying the resolution thereof, the appellate court
denied the petitioners right to seek the timely appellate
relief. Finally, petitioner describes as arbitrary the denial of
her motions for contempt of court against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of Civil
Procedure, one of the grounds for the issuance of a writ of
preliminary injunction is a proof that the applicant is entitled
to the relief demanded, and the whole or part of such relief
consists in restraining the commission or continuance of the
act or acts complained of, either for a limited period or
perpetually. Thus, a preliminary injunction order may be

granted only when the application for the issuance of the


same shows facts entitling the applicant to the relief
demanded.10 This is the reason why we have ruled that it
must be shown that the invasion of the right sought to be
protected is material and substantial, that the right of
complainant is clear and unmistakable, and, that there is an
urgent and paramount necessity for the writ to prevent
serious damage.11
In the case at bar, the petitioner applied for the issuance of a
preliminary injunctive order on the ground that she is entitled
to the use of the trademark on Chin Chun Su and its
container based on her copyright and patent over the same.
We first find it appropriate to rule on whether the copyright
and patent over the name and container of a beauty cream
product would entitle the registrant to the use and ownership
over the same to the exclusion of others.
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
______________
10 Section 4, Rule 58, Revised Rules of Civil Procedure.
11 Sy v. Court of Appeals, 313 SCRA 328 (1999).
419
VOL. 379, MARCH 19, 2002
419
Kho vs. Court of Appeals
include a stamped or marked container of goods.12 In
relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.13
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.14 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.15
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 petitioners copyright and patent
registration of the name and container would not guarantee
her the right to the exclusive 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.
We cannot likewise overlook the decision of the trial court in
the case for final injunction and damages. The dispositive
portion of said decision held that the petitioner does not have
trademark rights on the name and container of the beauty
cream product. The said decision on the merits of the trial
court rendered the issuance of the writ of a preliminary
injunction moot and academic notwithstanding the fact that
the same has been appealed in the Court of
______________
12 Section
13 Section
14 Section
15 Section
420

121.1, Republic Act No. 8293.


121.3, Republic Act No. 8293.
172, Republic Act No. 8293.
21, Republic Act No. 8293.

420
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
Appeals. This is supported by our ruling in La Vista
Association, Inc. v. Court of Appeals,16 to wit:
Considering that preliminary injunction is a provisional
remedy which may be granted at any time after the
commencement of the action and before judgment when it is
established that the plaintiff is entitled to the relief
demanded and only when his complaint shows facts entitling
such reliefs x x x and it appearing that the trial court had

already granted the issuance of a final injunction in favor of


petitioner in its decision rendered after trial on the merits x x
x the Court resolved to Dismiss the instant petition having
been rendered moot and academic. An injunction issued by
the trial court after it has already made a clear
pronouncement as to the plaintiffs right thereto, that is, after
the same issue has been decided on the merits, the trial
court having appreciated the evidence presented, is proper,
notwithstanding the fact that the decision rendered is not yet
final x x x. Being an ancillary remedy, the proceedings for
preliminary injunction cannot stand separately or proceed
independently of the decision rendered on the merit of the
main case for injunction. The merit of the main case having
been already determined in favor of the applicant, the
preliminary determination of its non-existence ceases to have
any force and effect. (italics supplied)
La Vista categorically pronounced that the issuance of a final
injunction renders any question on the preliminary injunctive
order moot and academic despite the fact that the decision
granting a final injunction is pending appeal. Conversely, a
decision denying the applicant-plaintiff s right to a final
injunction, although appealed, renders moot and academic
any objection to the prior dissolution of a writ of preliminary
injunction.
The petitioner argues that the appellate court erred in not
dismissing the petition for certiorari for non-compliance with
the rule on forum shopping. We disagree. First, the petitioner
improperly raised the technical objection of non-compliance
with Supreme Court Circular No. 28-91 by filing a motion to
dismiss the petition for certiorari filed in the appellate court.
This is prohibited by Section 6, Rule 66 of the Revised Rules
of Civil Procedure which provides that (I)n petitions for
certiorari before the Supreme Court
______________
16 278 SCRA 498, 506 quoting Solid Homes, Inc. v. LA Vista,
G.R. No. 71150 dated April 20, 1988 (unpublished).
421
VOL. 379, MARCH 19, 2002
421
Kho vs. Court of Appeals

and the Court of Appeals, the provisions of Section 2, Rule


56, shall be observed. Before giving due course thereto, the
court may require the respondents to file their comment to,
and not a motion to dismiss, the petition x x x (italics
supplied). Secondly, the issue was raised one month after
petitioner had filed her answer/comment and after private
respondent had replied thereto. Under Section 1, Rule 16 of
the Revised Rules of Civil Procedure, a motion to dismiss shall
be filed within the time for but before filing the answer to the
complaint or pleading asserting a claim. She therefore could
no longer submit a motion to dismiss nor raise defenses and
objections not included in the answer/comment she had
earlier tendered. Thirdly, substantial justice and equity
require this Court not to revive a dissolved writ of injunction
in favor of a party without any legal right thereto merely on a
technical infirmity. The granting of an injunctive writ based
on a technical ground rather than compliance with the
requisites for the issuance of the same is contrary to the
primary objective of legal procedure which is to serve as a
means to dispense justice to the deserving party.
The petitioner likewise contends that the appellate court
unduly delayed the resolution of her motion for
reconsideration. But we find that petitioner contributed to
this delay when she filed successive contentious motions in
the same proceeding, the last of which was on October 27,
1993, necessitating counter-manifestations from private
respondents with the last one being filed on November 9,
1993. Nonetheless, it is well-settled that non-observance of
the period for deciding cases or their incidents does not
render such judgments ineffective or void.17 With respect to
the purported damages she suffered due to the alleged delay
in resolving her motion for reconsideration, we find that the
said issue has likewise been rendered moot and academic by
our ruling that she has (no right over the trademark and,
consequently, to the issuance of a writ of preliminary
injunction.
Finally, we rule that the Court of Appeals correctly denied the
petitioners several motions for contempt of court. There is
nothing contemptuous about the advertisements complained
of which, as
______________

17 De Roma v. Court of Appeals, 152 SCRA 205, 209 (1987).


422
422
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
regards the proceedings in CA-G.R. SP No. 27803 merely
announced in plain and straightforward language the
promulgation of the assailed Decision of the appellate court.
Moreover, pursuant to Section 4 of Rule 39 of the Revised
Rules of Civil Procedure, the said decision nullifying the
injunctive writ was immediately executory.
WHEREFORE, the petition is DENIED. The Decision and
Resolution of the Court of Appeals dated May 24, 1993 and
June 3, 1994, respectively, are hereby AFFIRMED. With costs
against the petitioner.
SO ORDERED.
Bellosillo (Chairman), Mendoza, Quisumbing and Buena,
JJ., concur.
Petition denied, judgment and resolution affirmed.
Notes.Infringement of trade mark is a form of unfair
competition. (Asia Brewery, Inc. vs. Court of Appeals, 224
SCRA 437 [1994])
Cancellation of registration of a trademark has the effect of
depriving the registrant of protection from infringement from
the moment judgment or order of cancellation has become
final. (Heirs of Crisanta Y. Gabriel-Almoradie vs. Court of
Appeals, 229 SCRA 15 [1994])
Where there is clear and contumacious defiance of, or refusal
to obey the Supreme Courts Decision, the Court will not
hesitate to exercise its inherent power if only to maintain
respect to the Court, for without which the administration of
justice may falter or fail. (Province of Camarines Norte vs.
Province of Quezon, 367 SCRA 91 [2001])
o0o [Kho vs. Court of Appeals, 379 SCRA 410(2002)]

statutory enumeration or description.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.
_______________
* THIRD DIVISION.
232

VOL. 409, AUGUST 15, 2003


231
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
G.R. No. 148222. August 15, 2003.*
PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs.
SHOEMART, INCORPORATED and NORTH EDSA MARKETING,
INCORPORATED, respondents.
Intellectual Property; Copyrights; Patents; Being a mere
statutory grant, the rights are limited to what the statute
confers; It can cover only the works falling within the

232
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
Same; Same; Same; The three legal rights are completely
distinct and separate from one another and the protection
afforded by one cannot be used interchangeably to cover
items or works that exclusively pertain to the others.During
the trial, the president of P & D himself admitted that the
light box was neither a literary not an artistic work but an
engineering or marketing invention. Obviously, there
appeared to be some confusion regarding what ought or
ought not to be the proper subjects of copyrights, patents
and trademarks. In the leading case of Kho vs. Court of
Appeals, we ruled that these three legal rights are completely
distinct and separate from one another, and the protection
afforded by one cannot be used interchangeably to cover
items or works that exclusively pertain to the others.
Same; Same; Same; There can be no infringement of a
patent until a patent has been issued since whatever right
one has to the invention covered by the patent arises alone
from the grant of patent.For some reason or another,
petitioner never secured a patent for the light boxes. It
therefore acquired no patent rights which could have
protected its invention, if in fact it really was. And because it
had no patent, petitioner could not legally prevent anyone
from manufacturing or commercially using the contraption. In
Creser Precision Systems, Inc. vs. Court of Appeals, we held
that there can be no infringement of a patent until a patent
has been issued, since whatever right one has to the

invention covered by the patent arises alone from the grant


of patent. x x x (A)n inventor has no common law right to a
monopoly of his invention. He has the right to make use of
and vend his invention, but if he voluntarily discloses it, such
as by offering it for sale, the world is free to copy and use it
with impunity. A patent, however, gives the inventor the right
to exclude all others. As a patentee, he has the exclusive
right of making, selling or using the invention.
Same; Same; Same; To be able to effectively and legally
preclude others from copying and profiting from the
invention, a patent is a primordial requirement.To be able
to effectively and legally preclude others from copying and
profiting from the invention, a patent is a primordial
requirement. No patent, no protection. The ultimate goal of a
patent system is to bring new designs and technologies into
the public domain through disclosure. Ideas, once disclosed
to the public without the protection of a valid patent, are
subject to appropriation without significant restraint.
Same; Same; Same; Patent law has a three-fold purpose.
The patent law has a three-fold purpose: first, patent law
seeks to foster and reward invention; second, it promotes
disclosures of inventions to stimulate further innovation and
to permit the public to practice the invention once the patent
expires; third, the stringent requirements for patent
protection seek to ensure that ideas in the public domain
remain there for the free use of the public.
233
VOL. 409, AUGUST 15, 2003
233
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
Same; Same; Same; One who has adopted and used a
trademark on his goods does not prevent the adoption and
use of the same trademark by others for products which are
of a different description.Under the circumstances, the
Court of Appeals correctly cited Faberge Inc. vs. Intermediate
Appellate Court, where we, invoking Section 20 of the old
Trademark Law, ruled that 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 specified in the certificate x x x. One who has

adopted and used a trademark on his goods does not prevent


the adoption and use of the same trademark by others for
products which are of a different description. Faberge, Inc.
was correct and was in fact recently reiterated in Canon
Kabushiki Kaisha vs. Court of Appeals.
Same; Same; Same; Unfair Competition; There can be no
unfair competition under the law on copyrights although it is
applicable to disputes over the use of trademarks.By the
nature of things, there can be no unfair competition under
the law on copyrights although it is applicable to disputes
over the use of trademarks. Even a name or phrase
incapable of appropriation as a trademark or trade name
may, by long and exclusive use by a business (such that the
name or phrase becomes associated with the business or
product in the mind of the purchasing public), be entitled to
protection against unfair competition. In this case, there was
no evidence that P & Ds use of Poster Ads was distinctive
or well-known. As noted by the Court of Appeals, petitioners
expert witnesses himself had testified that Poster Ads was
too generic a name. So it was difficult to identify it with any
company, honestly speaking.
PETITION for review on certiorari of a decision of the Court of
Appeals.
The facts are stated in the opinion of the Court.
Rilloraza, Africa, De Ocampo and Africa for petitioner.
Poblador, Bautista & Reyes for private respondent SM.
Gonzales, Batiller, Bilog and Associates for respondent
North Edsa Mktg., Inc.
CORONA, J.:
In the instant petition for review on certiorari under Rule 45
of the Rules of Court, petitioner Pearl & Dean (Phil.) Inc. (P &
D)
234
234
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
assails the May 22, 2001 decision1 of the Court of Appeals
reversing the October 31, 1996 decision2 of the Regional Trial
Court of Makati, Branch 133, in Civil Case No. 92-516 which

declared private respondents Shoemart, Inc. (SMI) and North


Edsa Marketing, Inc. (NEMI) liable for infringement of
trademark and copyright, and unfair competition.
Factual Antecedents
The May 22, 2001 decision of the Court of Appeals3
contained a summary of this dispute:
Plaintiff-appellant 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 backlights. Pearl and Dean was able to
secure a Certificate of Copyright Registration dated January
20, 1981 over these illuminated display units. The
advertising light boxes were marketed under the trademark
Poster Ads. The application for registration of the
trademark was filed with the Bureau of Patents, Trademarks
and Technology Transfer on June 20, 1983, but was approved
only on September 12, 1988, per Registration No. 41165.
From 1981 to about 1988, Pearl and Dean employed the
services of Metro Industrial Services to manufacture its
advertising displays.
Sometime in 1985, Pearl and Dean negotiated with
defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM City North Edsa. Since SM
City North Edsa was under construction at that time, SMI
offered as an alternative, SM Makati and SM Cubao, to which
Pearl and Dean agreed. On September 11, 1985, Pearl and
Deans General Manager, Rodolfo Vergara, submitted for
signature the contracts covering SM Cubao and SM Makati to
SMIs Advertising Promotions and Publicity Division Manager,
Ramonlito Abano. Only the contract for SM Makati, however,
was returned signed. On October 4, 1985, Vergara wrote
Abano inquiring about the other contract and reminding him
that their agreement for installation of light boxes was not
only for its SM Makati branch, but also for SM Cubao. SMI did
not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs house
counsel informed Pearl and Dean that it was rescinding the
contract for SM Makati
_______________

1 Penned by Associate Justice Salvador J. Valdez, Jr. and


concurred in by Associate Justices Wenceslao L. Agnir and
Juan Q. Enriquez, Jr.
2 Penned by Judge Napoleon E. Inoturan.
3 Seventeenth Division; CAG.R. 55303.
235
VOL. 409, AUGUST 15, 2003
235
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
due to non-performance of the terms thereof. In his reply
dated February 17, 1986, Vergara protested the unilateral
action of SMI, saying it was without basis. In the same letter,
he pushed for the signing of the contract for SM Cubao.
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 Shoemarts chain of
stores. SMI approved the proposal and ten (10) light boxes
were subsequently fabricated by Metro Industrial for SMI.
After its contract with Metro Industrial was terminated, SMI
engaged the services of EYD Rainbow Advertising
Corporation to make the light boxes. Some 300 units were
fabricated in 1991. These were delivered on a staggered
basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that
exact copies of its light boxes were installed at SM City and in
the fastfood section of SM Cubao. Upon investigation, Pearl
and Dean found out that aside from the two (2) reported SM
branches, light boxes similar to those it manufactures were
also installed in two (2) other SM stores. It further discovered
that defendant-appellant North Edsa Marketing Inc. (NEMI),
through its marketing arm, Prime Spots Marketing Services,
was set up primarily to sell advertising space in lighted
display units located in SMIs different branches. Pearl and
Dean noted that NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a letter
dated December 11, 1991 to both SMI and NEMI enjoining
them to cease using the subject light boxes and to remove
the same from SMIs 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 Twenty Million Pesos (P20,000,000.00).

Upon receipt of the demand letter, SMI suspended the


leasing of two hundred twenty-four (224) light boxes and
NEMI took down its advertisements for Poster Ads from the
lighted display units in SMIs 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.
In denying the charges hurled against it, SMI maintained that
it independently developed its poster panels using commonly
known techniques and available technology, without notice of
or reference to Pearl and Deans copyright. SMI noted that
the registration of the mark Poster Ads was only for
stationeries such as letterheads, envelopes, and the like.
Besides, according to SMI, the word Poster Ads is a generic
term which cannot be appropriated as a trademark, and, as
such, registration of such mark is invalid. It also stressed that
Pearl and Dean is not entitled to the reliefs prayed for in its
complaint since its advertising display units con236
236
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
tained no copyright notice, in violation of Section 27 of P.D.
49. SMI alleged that Pearl and Dean had no cause of action
against it and that the suit was purely intended to malign
SMIs good name. On this basis, SMI, aside from praying for
the dismissal of the case, also counterclaimed for moral,
actual and exemplary damages and for the cancellation of
Pearl and Deans Certification of Copyright Registration No.
PD-R-2558 dated January 20, 1981 and Certificate of
Trademark Registration No. 4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed or
used any advertising display units, nor having engaged in the
business of advertising. It repleaded SMIs averments,
admissions and denials and prayed for similar reliefs and
counterclaims as SMI.
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and
severally liable for infringement of copyright under Section 2
of PD 49, as amended, and infringement of trademark under
Section 22 of RA No. 166, as amended, and are hereby

penalized under Section 28 of PD 49, as amended, and


Sections 23 and 24 of RA 166, as amended. Accordingly,
defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a)
actual damages representing profits derived by defendants
as a result of infringement of plaintiffs copyright from 1991
to 1992
- P16,600,000.00
(b)
moral damages
- P1,000.000.00
(c)
exemplary damages
- P1,000,000.00
(d)
attorneys fees plus
- P1,000,000.00
(e)
costs of suit;
(2) to deliver, under oath, for impounding in the National
Library, all light boxes of SMI which were fabricated by Metro
Industrial Services and EYD Rainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library, all fillerposters using the trademark Poster Ads, for destruction;
and
(4) to permanently refrain from infringing the copyright on
plaintiffs light boxes and its trademark Poster
Ads.Defendants counterclaims are hereby ordered
dismissed for lack of merit.
237
VOL. 409, AUGUST 15, 2003
237
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
SO ORDERED.4
On appeal, however, the Court of Appeals reversed the trial
court:
Since the light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to

be properly classified as a copyrightable class O work, we


have to agree with SMI when it posited that what was
copyrighted were the technical drawings only, and not the
light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian
object, a copyright over the drawings like plaintiff-appellants
will not extend to the actual object. It has so been held under
jurisprudence, of which the leading case is Baker vs. Selden
(101 U.S. 841 (1879). In that case, Selden had obtained a
copyright protection for a book entitled Seldens Condensed
Ledger or Bookkeeping Simplified which purported to
explain a new system of bookkeeping. Included as part of the
book were blank forms and illustrations consisting of ruled
lines and headings, specially designed for use in connection
with the system explained in the work. These forms showed
the entire operation of a day or a week or a month on a
single page, or on two pages following each other. The
defendant Baker then produced forms which were similar to
the forms illustrated in Seldens copyrighted books. The
Court held that exclusivity to the actual forms is not
extended by a copyright. The reason was that to grant a
monopoly in the underlying art when no examination of its
novelty has ever been made would be a surprise and a fraud
upon the public; that is the province of letters patent, not of
copyright. And that is precisely the point. No doubt aware
that its alleged original design would never pass the rigorous
examination of a patent application, plaintiff-appellant fought
to foist a fraudulent monopoly on the public by conveniently
resorting to a copyright registration which merely employs a
recordal system without the benefit of an in-depth
examination of novelty.
The principle in Baker vs. Selden was likewise applied in
Muller vs. Triborough Bridge Authority [43 F. Supp. 298
(S.D.N.Y. 1942)]. In this case, Muller had obtained a copyright
over an unpublished drawing entitled Bridge Approachthe
drawing showed a novel bridge approach to unsnarl traffic
congestion. The defendant constructed a bridge approach
which was alleged to be an infringement of the new design
illustrated in plaintiffs drawings. In this case it was held that
protection of the drawing
_______________

4 Records, pp. 620-621.


238
238
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
does not extend to the unauthorized duplication of the object
drawn because copyright extends only to the description or
expression of the object and not to the object itself. It does
not prevent one from using the drawings to construct the
object portrayed in the drawing.
In two other cases, Imperial Homes Corp. v. Lamont, 458 F.
2d 895 and Scholtz Homes, Inc. v. Maddox, 379 F. 2d 84, it
was held that there is no copyright infringement when one
who, without being authorized, uses a copyrighted
architectural plan to construct a structure. This is because
the copyright does not extend to the structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and
Deans copyright over the technical drawings of the latters
advertising display units.
xxx
xxx
xxx
The Supreme Court trenchantly held in Faberge, Incorporated
vs. Intermediate Appellate Court that 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 mandate conveyed by Section 20 of
Republic Act 166, as amended, otherwise known as the
Trademark Law, which reads:
SEC. 20. Certification of registration prima facie evidence of
validity.A certificate of registration of a mark or trade-name
shall be prima facie evidence of the validity of the
registration, the registrants ownership of the mark or tradename, and of the registrants exclusive right to use the same
in connection with the goods, business or services specified
in the certificate, subject to any conditions and limitations
stated therein. (italics supplied)
The records show that on June 20, 1983, Pearl and Dean
applied for the registration of the trademark Poster Ads
with the Bureau of Patents, Trademarks, and Technology
Transfer. Said trademark was recorded in the Principal
Register on September 12, 1988 under Registration No.

41165 covering the following products: stationeries such as


letterheads, envelopes and calling cards and newsletters.
With this as factual backdrop, we see no legal basis to the
finding of liability on the part of the defendants-appellants for
their use of the words Poster Ads, in the advertising display
units in suit. Jurisprudence has 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. The Supreme Court further emphasized the
restrictive meaning of Section 20 when it stated, through
Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be deemed as
including goods not specified therein, then a situation may
arise
239
VOL. 409, AUGUST 15, 2003
239
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
whereby an applicant may be tempted to register a
trademark on any and all goods which his mind may conceive
even if he had never intended to use the trademark for the
said goods. We believe that such omnibus registration is not
contemplated by our Trademark Law.
While we do not discount the striking similarity between Pearl
and Deans registered trademark and defendants-appellants
Poster Ads design, as well as the parallel use by which said
words were used in the parties respective advertising copies,
we cannot find defendants-appellants liable for infringement
of trademark. Poster Ads was registered by Pearl and Dean
for specific use in its stationeries, in contrast to defendantsappellants who used the same words in their advertising
display units. Why Pearl and Dean limited the use of its
trademark to stationeries is simply beyond us. But, having
already done so, it must stand by the consequence of the
registration which it had caused.
xxx
xxx
xxx
We are constrained to adopt the view of defendantsappellants that the words Poster Ads are a simple
contraction of the generic term poster advertising. In the

absence of any convincing proof that Poster Ads has


acquired a secondary meaning in this jurisdiction, we find
that Pearl and Deans exclusive right t o t he use of Poster
Ads is limited to what is written in its certificate of
registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for
infringement of the trademark Poster Ads.
There being no finding of either copyright or trademark
infringement on the part of SMI and NEMI, the monetary
award granted by the lower court to Pearl and Dean has no
leg to stand on.
xxx
xxx
xxx
WHEREFORE, premises considered, the assailed decision is
REVERSED and SET ASIDE, and another is rendered
DISMISSING the complaint and counterclaims in, the aboveentitled case for lack of merit.5
Dissatisfied with the above decision, petitioner P & D filed the
instant petition assigning the following errors for the Courts
consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN RULING
THAT NO COPYRIGHT INFRINGEMENT WAS COMMITTED BY
RESPONDENTS SM AND NEMI;
_______________
5 Rollo, pp. 17-19, 21-22, 23-24, 26.
240
240
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING
THAT NO INFRINGEMENT OF PEARL & DEANS TRADEMARK
POSTER ADS WAS COMMITTED BY RESPONDENTS SM AND
NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN
DISMISSING THE AWARD OF THE TRIAL COURT, DESPITE THE
LATTERS FINDING, NOT DISPUTED BY THE HONORABLE
COURT OF APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN
ITS NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL
& DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT
HOLDING RESPONDENTS SM AND NEMI LIABLE TO PEARL &

DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES,


ATTORNEYS FEES AND COSTS OF SUIT.6
Issues
In resolving this very interesting case, we are challenged
once again to put into proper perspective four main concerns
of intellectual property lawpatents, copyrights, trademarks
and unfair competition arising from infringement of any of
the first three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising
display unit (light box) are granted copyright protection
(copyright certificate of registration) by the National Library,
is the light box depicted in such engineering drawings ipso
facto also protected by such copyright?
(2) or should the light box be registered separately and
protected by a patent issued by the Bureau of Patents
Trademarks and Technology Transfer (now Intellectual
Property Office)in addition to the copyright of the
engineering drawings?
(3) can the owner of a registered trademark legally prevent
others from using such trademark if it is a mere abbreviation
of a term descriptive of his goods, services or business?
On the Issue of Copyright Infringement
Petitioner P & Ds complaint was that SMI infringed on its
copyright over the light boxes when SMI had the units
manufactured
_______________
6 Rollo, p. 34.
241
VOL. 409, AUGUST 15, 2003
241
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
by Metro and EYD Rainbow Advertising for its own account.
Obviously, petitioners 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. In ruling that there was no copyright infringement,
the Court of Appeals held that the copyright was limited to
the drawings alone and not to the light box itself. We agree
with the appellate court.

First, petitioners application for a copyright certificateas


well as Copyright Certificate No. PD-R2588 issued by the
National Library on January 20, 1981clearly 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:
xxx
xxx
xxx
(O) Prints, pictorial illustrations, advertising copies, labels,
tags, and box wraps;
xxx
xxx
xxx
Although petitioners 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.7
Accordingly, it can cover only the works falling within the
statutory enumeration or description.8
P & D secured its copyright under the classification class O
work. This being so, petitioners 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
_______________
7 18 C.J.S. 161.
8 Joaquin vs. Drilon, 302 SCRA 225 [1999].
242
242
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated

the category of pictorial illustrations. It could not have


possibly stretched out to include the underlying light box.
The strict application9 of the laws 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 & Ds 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. SMIs and NEMIs 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 petitioners
copyright over the technical drawings? We do not think so.
During the trial, the president of P & D himself admitted that
the light box was neither a literary not an artistic work but an
engineering or marketing invention.10 Obviously, there
appeared to be some confusion regarding what ought or
ought not to be the proper subjects of copyrights, patents
and trademarks. In the leading case of Kho vs. Court of
Appeals,11 we ruled that these three legal rights are
completely distinct and separate from one another, and the
protection afforded by one cannot be used interchangeably
to cover items or works that exclusively pertain to the others:
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
_______________

9 Ibid.
10 TSN, February 3, 1993, pp. 11-13.
11 G.R. No. 115758, March 19, 2002, 379 SCRA 410.
243
VOL. 409, AUGUST 15, 2003
243
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
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.
On the Issue of Patent Infringement
This brings us to the next point: if, despite its manufacture
and commercial use of the light boxes without license from
petitioner, private respondents cannot be held legally liable
for infringement of P & Ds copyright over its technical
drawings of the said light boxes, should they be liable instead
for infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a
patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it
really was. And because it had no patent, petitioner could not
legally prevent anyone from manufacturing or commercially
using the contraption. In Creser Precision Systems, Inc. vs.
Court of Appeals,12 we held that there can be no
infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the
patent arises alone from the grant of patent. x x x (A)n
inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his
invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to
exclude all others. As a patentee, he has the exclusive right
of making, selling or using the invention.13 On the
assumption that petitioners advertising units were
patentable inventions, petitioner revealed them fully to the
public by submitting the engineering drawings thereof to the
National Library.

To be able to effectively and legally preclude others from


copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection. The
ultimate goal of a patent system is to bring new designs and
technologies into the public do_______________
12 286 SCRA 13 [1998].
13 Id., at p. 21, citing Anchor Hocking Glass Corp. vs. White
Cap Co., 47 F. Supp. A 451, and Bauer & Cie vs. O Donnel,
229 US 1.
244
244
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
main through disclosure.14 Ideas, once disclosed to the
public without the protection of a valid patent, are subject to
appropriation without significant restraint.15
On one side of the coin is the public which will benefit from
new ideas; on the other are the inventors who must be
protected. As held in Bauer & Cie vs. ODonnel,16 The act
secured to the inventor the exclusive right to make use, and
vend the thing patented, and consequently to prevent others
from exercising like privileges without the consent of the
patentee. It was passed for the purpose of encouraging
useful invention and promoting new and useful inventions by
the protection and stimulation given to inventive genius, and
was intended to secure to the public, after the lapse of the
exclusive privileges granted the benefit of such inventions
and improvements.
The law attempts to strike an ideal balance between the two
interests:
(The p)atent system thus embodies a carefully crafted
bargain for encouraging the creation and disclosure of new,
useful and non-obvious advances in technology and design,
in return for the exclusive right to practice the invention for a
number of years. The inventor may keep his invention secret
and reap its fruits indefinitely. In consideration of its
disclosure and the consequent benefit to the community, the
patent is granted. An exclusive enjoyment is guaranteed him
for 17 years, but upon the expiration of that period, the

knowledge of the invention inures to the people, who are


thus enabled to practice it and profit by its use.17
The patent law has a three-fold purpose: first, patent law
seeks to foster and reward invention; second, it promotes
disclosures of inventions to stimulate further innovation and
to permit the public to practice the invention once the patent
expires; third, the strin_______________
14 Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., 489 US
141 [1989].
15 Id., at p. 156.
16 Ibid., at p. 10.
17 Bonito Boats, Inc. vs. Thunder Craft Boats, Inc., ibid., p.
150, citing U.S. vs. Dubilier Condenser Corp., 289 U.S. 178.
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Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
gent requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free use of
the public.18
It is only after an exhaustive examination by the patent office
that a patent is issued. Such an in-depth investigation is
required because in rewarding a useful invention, the rights
and welfare of the community must be fairly dealt with and
effectively guarded. To that end, the prerequisites to
obtaining a patent are strictly observed and when a patent is
issued, the limitations on its exercise are equally strictly
enforced. To begin with, a genuine invention or discovery
must be demonstrated lest in the constant demand for new
appliances, the heavy hand of tribute be laid on each slight
technological advance in art.19
There is no such scrutiny in the case of copyrights nor any
notice published before its grant to the effect that a person is
claiming the creation of a work. The law confers the
copyright from the moment of creation20 and the copyright
certificate is issued upon registration with the National
Library of a sworn ex parte claim of creation.
Therefore, not having gone through the arduous examination
for patents, the petitioner cannot exclude others from the

manufacture, sale or commercial use of the light boxes on


the sole basis of its copyright certificate over the technical
drawings.
Stated otherwise, what petitioner seeks is exclusivity without
any opportunity for the patent office (IPO) to scrutinize the
light boxs eligibility as a patentable invention. The irony here
is that, had petitioner secured a patent instead, its
exclusivity would have been for 17 years only. But through
the simplified procedure of copyright-registration with the
National Librarywithout undergoing the rigor of defending
the patentability of its invention before the IPO and the public
the petitioner would be protected for 50 years. This
situation could not have been the intention of the law.
In the oft-cited case of Baker vs. Selden,21 the United States
Supreme Court held that only the expression of an idea is
protected by
_______________
18 Aronson vs. Quick Point Pencil Co., 440 U.S. 257, 262
[1979], citing Kewanee Oil Co. vs. Bicron Corp., 416 U.S. 470
[1994], cited Amador, patents, p, 496.
19 Sears Roebuck vs. Stiffel, 376 US 225, 229 [1964].
20 Section 2, PD 49 (The Intellectual Property Decree).
21 101 US 102-105 [1879].
246
246
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
copyright, not the idea itself. In that case, the plaintiff held
the copyright of a book which expounded on a new
accounting system he had developed. The publication
illustrated blank forms of ledgers utilized in such a system.
The defendant reproduced forms similar to those illustrated
in the plaintiff s copyrighted book. The US Supreme Court
ruled that:
There is no doubt that a work on the subject of bookkeeping,
though only explanatory of well known systems, may be the
subject of a copyright; but, then, it is claimed only as a book,
x x x. But there is a clear distinction between the books, as
such, and the art, which it is, intended to illustrate. The mere
statement of the proposition is so evident that it requires

hardly any argument to support it. The same distinction may


be predicated of every other art as well as that of
bookkeeping. A treatise on the composition and use of
medicines, be they old or new; on the construction and use of
ploughs or watches or churns; or on the mixture and
application of colors for painting or dyeing; or on the mode of
drawing lines to produce the effect of perspective, would be
the subject of copyright; but no one would contend that the
copyright of the treatise would give the exclusive right to the
art or manufacture described therein. The copyright of the
book, if not pirated from other works, would be valid without
regard to the novelty or want of novelty of its subject matter.
The novelty of the art or thing described or explained has
nothing to do with the validity of the copyright. To give to the
author of the book an exclusive property in the art described
therein, when no examination of its novelty has ever been
officially made, would be a surprise and a fraud upon the
public. That is the province of letters patent, not of copyright.
The claim to an invention of discovery of an art or
manufacture must be subjected to the examination of the
Patent Office before an exclusive right therein can be
obtained; and a patent from the government can only secure
it.
The difference between the two things, letters patent and
copyright, may be illustrated by reference to the subjects just
enumerated. Take the case of medicines. Certain mixtures
are found to be of great value in the healing art. If the
discoverer writes and publishes a book on the subject (as
regular physicians generally do), he gains no exclusive right
to the manufacture and sale of the medicine; he gives that to
the public. If he desires to acquire such exclusive right, he
must obtain a patent for the mixture as a new art,
manufacture or composition of matter. He may copyright his
book, if he pleases; but that only secures to him the
exclusive right of printing and publishing his book. So of all
other inventions or discoveries.
The copyright of a book on perspective, no matter how many
drawings and illustrations it may contain, gives no exclusive
right to the modes of drawing described, though they may
never have been known or used before. By publishing the
book without getting a patent for the art, the latter is given
to the public.

247
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Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
xxx
Now, whilst no one has a right to print or publish his book, or
any material part thereof, as a book intended to convey
instruction in the art, any person may practice and use the
art itself which he has described and illustrated therein. The
use of the art is a totally different thing from a publication of
the book explaining it. The copyright of a book on
bookkeeping cannot secure the exclusive right to make, sell
and use account books prepared upon the plan set forth in
such book. Whether the art might or might not have been
patented, is a question, which is not before us. It was not
patented, and is open and free to the use of the public. And,
of course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant
in this case arises from a confusion of ideas produced by the
peculiar nature of the art described in the books, which have
been made the subject of copyright. In describing the art, the
illustrations and diagrams employed happened to correspond
more closely than usual with the actual work performed by
the operator who uses the art. x x x The description of the art
in a book, though entitled to the benefit of copyright, lays no
foundation for an exclusive claim to the art itself. The object
of the one is explanation; the object of the other is use. The
former may be secured by copyright. The latter can only be
secured, if it can be secured at all, by letters patent. (italics
supplied)
On the Issue of Trademark Infringement
This issue concerns the use by respondents of the mark
Poster Ads which petitioners president said was a
contraction of poster advertising. P & D was able to secure
a trademark certificate for it, but one where the goods
specified were stationeries such as letterheads, envelopes,
calling cards and newsletters.22 Petitioner admitted it did
not commercially engage in or market these goods. On the
contrary, it dealt in electrically operated backlit advertising
units and the sale of advertising spaces thereon, which,

however, were not at all specified in the trademark


certificate.
Under the circumstances, the Court of Appeals correctly cited
Faberge Inc. vs. Intermediate Appellate Court,23 where we,
invoking Section 20 of the old Trademark Law, ruled that 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
_______________
22 Exhibit B, Original Records, p. 63.
23 215 SCRA 316 [1992].
248
248
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
goods specified in the certificate, subject to any conditions
and limitations specified in the certificate x x x. One who has
adopted and used a trademark on his goods does not prevent
the adoption and use of the same trademark by others for
products which are of a different description.24 Faberge, Inc.
was correct and was in fact recently reiterated in Canon
Kabushiki Kaisha vs. Court of Appeals.25
Assuming arguendo that Poster Ads could validly qualify as
a trademark, the failure of P & D to secure a trademark
registration for specific use on the light boxes meant that
there could not have been any trademark infringement since
registration was an essential element thereof.
On the Issue of Unfair Competition
If at all, the cause of action should have been for unfair
competition, a situation which was possible even if P & D had
no registration.26 However, while the petitioners complaint
in the RTC also cited unfair competition, the trial court did not
find private respondents liable therefor. Petitioner did not
appeal this particular point; hence, it cannot now revive its
claim of unfair competition.
But even disregarding procedural issues, we nevertheless
cannot hold respondents guilty of unfair competition.
By the nature of things, there can be no unfair competition
under the law on copyrights although it is applicable to
disputes over the use of trademarks. Even a name or phrase

incapable of appropriation as a trademark or trade name


may, by long and exclusive use by a business (such that the
name or phrase becomes associated with the business or
product in the mind of the purchasing public), be entitled to
protection against unfair competition.27 In this case, there
was no evidence that P & Ds use of Poster Ads was
distinctive or well-known. As noted by the Court of Appeals,
petitioners expert witnesses himself had testified that
Poster Ads was too generic a name. So it was difficult to
identify it with
_______________
24 Id., at p. 326.
25 336 SCRA 266 [2000].
26 Ogura vs. Chua, 59 Phil. 471.
27 Sapalo, The Law on Trademark Infringement and Unfair
Competition, 2000 ed., p. 185.
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Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
any company, honestly speaking.28 This crucial admission
by its own expert witness that Poster Ads could not be
associated with P & D showed that, in the mind of the public,
the goods and services carrying the trademark Poster Ads
could not be distinguished from the goods and services of
other entities.
This fact also prevented the application of the doctrine of
secondary meaning. Poster Ads was generic and incapable
of being used as a trademark because it was used in the field
of poster advertising, the very business engaged in by
petitioner. Secondary meaning means that a word or

phrase originally incapable of exclusive appropriation with


reference to an article in the market (because it is
geographically or otherwise descriptive) might nevertheless
have been used for so long and so exclusively by one
producer with reference to his article that, in the trade and to
that branch of the purchasing public, the word or phrase has
come to mean that the article was his property.29 The
admission by petitioners own expert witness that he himself
could not associate Poster Ads with petitioner P & D
because it was too generic definitely precluded the
application of this exception.
Having discussed the most important and critical issues, we
see no need to belabor the rest.
All told, the Court finds no reversible error committed by the
Court of Appeals when it reversed the Regional Trial Court of
Makati City.
WHEREFORE, the petition is hereby DENIED and the decision
of the Court of Appeals dated May 22, 2001 is AFFIRMED in
toto.
SO ORDERED.
Puno (Chairman), Panganiban, Sandoval-Gutierrez and
Carpio-Morales, JJ., concur.
Petition denied, assailed decision affirmed in toto.
Note.Intellectual and industrial property rights cases are
not simple property cases (Mirpuri vs. Court of Appeals, 318
SCRA 516 [1999])
o0o
_______________
28 Decision, p. 16, citing TSN, December 3, 1992, pp. 19-20.
29 Sapalo, at p. 92. [Pearl & Dean (Phil.), Incorporated vs.
Shoemart, Incorporated, 409 SCRA 231(2003)]