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1, ELIDAD KHO and VIOLETA KHO versus HON. ENRICO LANZANAS, 2.

2. Declaring plaintiff to have the right to use the copyright claim on OVAL FACIAL
G.R. No. 150877 CREAM CONTAINER/CASE by virtue of Certificate of Copyright Registration No.
3687 issued by the National Library on May 23, 1991;
Facts: Both parties to pay proportionate fees.[10]
Shun Yih Chemistry Factory (SYCF), a business existing and operating in Taiwan and
engaged in the manufacture and sale of Chin Chun Su Creams/Cosmetics, appointed
Young Factor Enterprises in the Philippines, owned and operated by Quintin Cheng Both parties appealed the RTC decision to the Court of Appeals, docketed as CA-
also known as Kho Seng Hiok, as its distributor of Chin Chun Su products in the G.R. CV NO. 48043 entitled, Elidad C. Kho, doing business under the style of KEC
Philippines for a term of two years. Quintin Cheng registered with the Bureau of Food Cosmetic Laboratory v. Summerville General Merchandising and Co., et al. In a
and Drugs (BFAD) as distributor of Chin Chun Su products. Quintin Cheng decision[11] dated 22 November 1999, the appellate court affirmed in toto the
subsequently secured a supplemental registration for Chin Chun Su and device.[2] decision of the trial court.[12] Elidad Kho elevated the case to this Court, In a
This supplemental registration was ordered cancelled by the Bureau of Patents, resolution dated 28 August 2000,
Trademarks and Technology Transfer[3] on the ground of failure of the registrant to
file the required affidavit of non-use as required by Section 12 of Republic Act No. Issue:
166, as amended The issue is who, between petitioner Elidad C. Kho and respondent Summerville
General Merchandising and Company has the better right to use the trademark Chin
Notwithstanding this cancellation, Quintin Cheng executed on 30 January 1990 an Chun Su on their facial cream product?
Assignment of a Registered Trademark and a Supplementary Deed of Assignment
dated 25 November 1991 wherein he sold all his right, title, interest and goodwill in Ruling:
the trademark Chin Chun Su and device to petitioner Elidad Kho. we denied the petition. We held that: We agree with both the Court of Appeals and the
Animosity arose between SYCF and Quintin Cheng resulting in the termination of trial court that Summerville General Merchandising and Company has the better right
their distributorship agreement on 30 October 1990. to use the trademark Chin Chun Su on its facial cream product by virtue of the
Consequently, on 30 November 1990, SYCF appointed respondent Summerville exclusive importation and distribution rights given to it by Shun Yih Chemistry Factory
General Merchandising, represented by Ang Tiam Chay and Victor Chua, as its of Taiwan on November 20, 1990 after the latter cancelled and terminated on October
exclusive importer, re-packer and distributor of Chin Chun Su products in the 30, 1990 its Sole Distributorship Agreement with one Quintin Cheng, who assigned
Philippines[8] for a period of five years or until May 2005. and transferred his rights under said agreement to petitioner Elidad C. Kho on
January 31, 1990.
Elidad Kho/KEC Laboratory filed a Complaint for Injunction and Damages against Ang
Tiam Chay and Summerville General Merchandising before the RTC Plaintiff therein As correctly held by the Court of Appeals, petitioner Kho is not the author of the
Elidad Kho/KEC Laboratory sought to enjoin defendants Ang Tiam Chay and trademark Chin Chun Su and his only claim to the use of the trademark is based on
Summerville General Merchandising from using the name Chin Chun Su in their the Deed of Agreement executed in his favor by Quintin Cheng. By virtue thereof, he
cream products. registered the trademark in his name. The registration was a patent nullity because
petitioner is not the creator of the trademark Chin Chun Su and, therefore, has no
On 22 January 1993, a decision in Civil Case No. Q-91-10926 was rendered, the right to register the same in his name. Furthermore, the authority of Quintin Cheng to
dispositive portion of which provides: be the sole distributor of Chin Chun Su in the Philippines had already been terminated
by Shun Yih Chemistry of Taiwan. Withal, he had no right to assign or to transfer the
ACCORDINGLY, judgment is hereby rendered: same to petitioner Kho.

1. Declaring that plaintiff is not legally authorized to use the trademark CHIN CHUN WHEREFORE, the instant petition is hereby denied due course.[13]
SU and upholding the right of defendant Summerville General Merchandising & Co. to
use said trademark as authorized by Shun Yih Chemistry Factory of Taiwan;
2. Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No. includes Albendazole. The doctrine of equivalents does not apply in the case at bar
126627, August 14, 2003 because it requires that for infringement to take place, the device should appropriate
a prior invention by incorporating its innovative concept and although there are some
Facts: modifications and change they perform substantially the same results. The petitioners
evidence failed to adduce that substantial sameness on both the chemicals they
Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed used. While both compounds produce the same effects of neutralizing parasites in
on October 8, 1976 as assignee before the Bureau of Patents an application for animals, the identity of result does not amount to infringement. The petitioner has the
patent on its invention called Methods and Compositions for Producing Biphasic burden to show that it satisfies the function-means-and-result-test required by the
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate. A Letters doctrine of equivalents. Nothing has been substantiated on how Albendazole can
of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years. weed the parasites out from animals which is similar to the manner used by the
The patent provides that the patented invention consists of Methyl 5 Propylthio-2- petitioner in using their own patented chemical compound.
Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal
parasites and lung worms in animals. The respondent Tryco Pharma manufactures, 3. Ching v. Salinas, Sr. (G.R. No. 161295) Jun 8
distributes and sells veterinary product, one of which is the Impregon, a drug having by Jai Cdn
Albendazole as its active ingredient effective against gastrointestinal worms in
animals. Petitioner now sues the respondent for patent infringement and unfair Facts:
competition before the RTC as it claims that their patent includes the substance
Albendazole used by the respondent and they sold and used the drug Impregon P is the owner and general manager of Jeshicris Manufacturing Co., the maker and
without the petitioners authorization and committed unfair competition for selling as manufacturer of a Utility Model, described as Leaf Spring Eye Bushing for
its own the drug that substantially functions to achieve the same result. Petitioner Automobile made up of plastic, which was issued by the National Library Certificates
further contends that under the doctrine of equivalents in determining patent of Copyright Registration and Deposit.
infringement, the active substance Albendazole used by the respondent is
substantially the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by P requested the NBI for police/investigative assistance for the apprehension and
its patent with the same use of combating worm infestations in animals. It prodded the prosecution of illegal manufacturers, producers and/or distributors of the works. After
court to go beyond the literal words used in the Letter of Patent issued to them to due investigation, the NBI filed applications for SWs against R alleging that the latter
consider that the words Methyl 5 Propylthio-2-Benzimidazole Carbanate and therein reproduced and distributed the said models penalized under R.A. No. 8293.
Albendazole are the same. Respondent avers that the Letter of Patents issued to RTC granted the application and issued SWs for the seizure of the aforecited articles.
petitioner does not cover Albendazole in that the word does not appear on it. Even if
the patent were to include Albendazole it is unpatentable. They secured approval from R filed a motion to quash the search warrants averring that the works covered by the
the Bureau of Foods and Drugs to manufacture and market Impregon with the certificates issued by the National Library are not artistic in nature; they are
Albendazole as its active ingredients. The petitioner has no proof that they passed considered automotive spare parts and pertain to technology. They aver that the
their veterinary products as that of the petitioner. models are not original, and as such are the proper subject of a patent, not copyright.

Issue: RTC quashed the SW. Ps MR having been denied; he filed a petition for certiorari in
the CA. The petition was dismissed.
Whether or not respondent is guilty of patent infringement?
Issues:
Ruling:
(1) Whether or not Ps certificate of copyright registration over said utility models are
The Supreme Court held that it did not. When the language of the claim is clear and valid; and
distinct, the patentee is bound thereby and may not claim anything beyond them. The
language of the Letter of Patents issued to the petitioner failed to yield anything that it
(2) Whether or not Ps utility models can be considered literary and artistic works In this case, the bushing and cushion are not works of art. They are, as the petitioner
subject to copyright protection. himself admitted, utility models which may be the subject of a patent.

Ruling: IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack
of merit. The assailed Decision and Resolution of the CA are AFFIRMED.
(1) The petition has no merit. To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its absence, other evidence. A 4. Philip Morris, Inc. vs. Fortune Tobacco Corporation
copyright certificate provides prima facie evidence of originality which is one element G.R. No. 158589. June 27, 2006
of copyright validity. It constitutes prima facie evidence of both validity and ownership
and the validity of the facts stated in the certificate. The presumption of validity to a Facts:
certificate of copyright registration merely orders the burden of proof. The applicant Petitioner Philip Morris, Inc. a corporation organized under the laws of the state of
should not ordinarily be forced, in the first instance, to prove all the multiple facts that Virginia, USA, is the registered owner of the trademark
underline the validity of the copyright unless the respondent, effectively challenging MARK VII
them, shifts the burden of doing so to the applicant. For cigarettes. Benson and Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc.,
is the registered owner of the trademark
A certificate of registration creates no rebuttable presumption of copyright validity MARK TEN for cigarettes. Another subsidiary of Philip Morris, Inc. the Swiss
where other evidence in the record casts doubt on the question. In such a case, Company Fabriques de Tabac Reunies, S.A., is the assignee of the trademark
validity will not be presumed. No copyright granted by law can be said to arise in favor LARK. All are evidenced by Trademark Certicate of Registration. On the other hand,
of the petitioner despite the issuance of the certificates of copyright registration and Fortune Tobacco Corporation, a company organized in the Philippines, manufactures
the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. and sells cigarettes using the trademark
MARK.
(2) We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. Philip Morris, Inc. led a complaint for trademark infringement and damages against
8293), that the authors intellectual creation, regardless of whether it is a creation with Fortune Tobacco Corporation. The complaint was dismissed by the RTC Pasig City in
utilitarian functions or incorporated in a useful article produced on an industrial scale, its decision dated January 21, 2003. Maintaining to have the standing to sue in the
is protected by copyright law. However, the law refers to a work of applied art which local forum and that respondent has committed trademark infringement, petitioners
is an artistic creation. It bears stressing that there is no copyright protection for works went on appeal to the CA but CA armed the trial courts decision. The CA found that
of applied art or industrial design which have aesthetic or artistic features that cannot MARK VII,MARK TEN and LARK do not qualify as well-known marks entitled to
be identified separately from the utilitarian aspects of the article. Functional protection even without the benet of actual use in the local market and that the
components of useful articles, no matter how artistically designed, have generally similarities in the trademarks in question are insucient as to cause deception or
been denied copyright protection unless they are separable from the useful article. confusion tantamount to infringement. With the motion for reconsideration denied in
the CA, the petitioners led apetition for review with the Supreme Court.
In this case, the petitioners models are not works of applied art, nor artistic works.
They are utility models, useful articles, albeit with no artistic design or value. Being Issues:
plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing 1.)Whether or not petitioners, as Philippine registrants of trademarks, areentitled to
Cushion are not ornamental. They lack the decorative quality or value that must enforce trademark rights in the country.
characterize authentic works of applied art. They are not even artistic creations with 2.)Whether or not respondent has committed trademark infringement against
incidental utilitarian functions or works incorporated in a useful article. In actuality, the petitioners by its use of the mark
personal properties described in the search warrants are mechanical works, the MARK for its cigarettes, hence liable for damages.
principal function of which is utility sans any aesthetic embellishment.
Ruling:
A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof adopted and used by a manufacturer or merchant on his goods
to identify and distinguish them from those manufactured, sold, or dealt in by others. 5. CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
Inarguably, trademark deserves protection. It is for this reason that the petitioners G.R. No. 120900, July 20, 2000
recourse for their entitlement to enforce trademark rights in this country and also the
right to sue for trademark infringement in Philippine courts and be accorded protection FACTS:
against unauthorized use of the Philippine-registered trademarks is understandable.
Their standing to sue in Philippine courts had been recognized by the CA but such On January 15, 1985, private respondent NSR Rubber Corporation filed an
right to sue does not necessarily mean protection of their trademarks in the absence application for registration of the mark CANON for sandals in the Bureau of Patents,
of actual use in the Philippines. But the petitioners are still foreign corporations. They Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a
may not sue on that basis alone of their respective certicates of registration of Verified Notice of Opposition alleging that it will be damaged by the registration of the
trademarks unless their country grants similar rights and privileges to Filipino citizens trademark CANON in the name of private respondent since they were using the same
pursuant to Section21-A of R.A. No. 166. This reciprocity requirement is a condition to trademark for their footwear line of products. The private respondent will also use the
le a suit by a foreign corporation as ruled in name Canon for its footwear products.
Leviton Industries v. Salvador.
The respective home country of the petitioner, namely, the United States, Based on the records, the evidence presented by petitioner consisted of its
Switzerland and Canada, together with the Philippines are members of the Paris certificates of registration for the mark CANON in various countries covering goods
Union. Philippines adherence to the Paris Convention obligates the country to honor belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also
and enforce its provisions, however, this does not automatically entitle petitioners to submitted in evidence its Philippine Trademark Registration No. 39398, showing its
the protection of their trademark in our country without actual use of the marks in local ownership over the trademark CANON.
commerce and trade because any protection accorded has to be made subject to the
limitations of Philippine laws. Signicantly, registration in the Philippines of trademarks The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
does not convey an absolute right or exclusive ownership thereof. In Shangri-la v. petitioner and giving due course to NSR's application for the registration of the
Development Group of Companies, the Court emphasized that trademark is a trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals
creation of use and, therefore, actual use is a prerequisite to exclusive ownership; that eventually affirmed the decision of the BPTTT.
registration is only an administrative conrmation of the existence of the right of
ownership of the mark, but does not perfect such right. With the foregoing ISSUE:
perspective, it may be stated right o that the registration of a trademark
unaccompanied by actual use in the country accords the registrants only the standing Is the use of trademark, CANON, by the private respondent affects the
to sue for infringements in Philippine Courts but entitlement to protection of such business of Canon Kabushiki Kaisha who has an existing ownership of a trademark
trademark in the country is entirely dierent matter. On the main issue of infringement, also known as CANON?
the court, relying on the holistic test ruled against the likelihood of confusion resulting
in infringement arising from the respondents use of the trademark MARK for its HELD:
particular cigarette product. The striking dissimilarities are signicant enough to warn
any purchaser that one is dierent from the other. This is upon considering the entire The Supreme Court says that ordinarily, the ownership of a trademark or
marking as a whole For lack of convincing proof on the part of the petitioners of actual tradename is a property right that the owner is entitled to protect as mandated by the
use of their registered trademark prior to respondents use of its mark and for Trademark Law. However, when a trademark is used by a party for a product in which
petitioners failure to demonstrate confusing similarity between said trademarks, the the other party does not deal, the use of the same trademark on the latter's product
dismissal of their basic complaint of infringement and the plea for damages are cannot be validly objected to.
armed. The petition is denied. The assailed decision and resolution of the Court of
Appeals are armed The BPTTT correctly ruled that since the certificate of registration of petitioner
for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff),
private respondent can use the trademark CANON for its goods classified as class 25 even before it filed for its registration with the IPO on November 29, 2002, as shown
(sandals). Clearly, there is a world of difference between the paints, chemical by its DAU which was under oath and notarized, bearing the stamp of the Bureau of
products, toner, and dyestuff of petitioner and the sandals of private respondent. Trademarks of the IPO on April 25, 2003, with attachment as Annex "B" sales invoices
and official receipts of goods bearing the mark. Furthermore, according to Section
6. BERRIS AGRICULTURAL CO., INC., vs. NORVY ABYADANG, G.R. No. 183404 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a
October 13, 2010 registered mark belonging to a different proprietor with an earlier filing or priority date,
Facts: with respect to: (1) the same goods or services; (2) closely related goods or services;
On January 16, 2004, Norvy A. Abyadang (Abyadang), proprietor of NS Northern or (3) near resemblance of such mark as to likely deceive or cause confusion.
Organic
Fertilizer, filed with the Intellectual Property Office (IPO) a trademark application for 2. YES. The "D-10" is the dominant feature, being at the beginning of the mark, is
the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active what is most remembered of it. As such, Berris has in its favor the rights conferred by
ingredient 80 Mancozeb. The application, was given due course and was published in Section 147 of R.A. No. 8293, which provides The owner of a registered mark
the IPO e-Gazette for opposition on July 28, 2005. On August 17, 2005, petitioner shall have the exclusive right to prevent all third parties not having the owners
Berris Agricultural Co., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO- consent from using in the course of trade identical or similar signs or containers for
BLA) an Opposition allegedly because "NS D-10 PLUS" is similar and/or confusingly goods or services which are
similar to its registered trademark "D-10 80 WP," also used for Fungicide (Class 5) identical or similar to those in respect of which the trademark is registered where such
with active ingredient 80% Mancozeb. On April 28, 2006, the IPO-BLA issued a use would result in a likelihood of confusion.
decision sustaining the opposition. Abyadang filed a motion for reconsideration, which
was denied. Abyadang filed an appeal on August 22, 2006 with the Office of the 3. YES. Both marks belong to the same classification of goods under R.A. No. 8293.
Director General, Intellectual Property Philippines (IPPDG), was also The likelihood of confusion and mistake is made more manifest when the Holistic
denied. Abyadang filed a petition for review before the CA, which reversed the IPPDG Test is applied, taking into consideration the packaging, for both use the same type of
decision. Based on their proffered pieces of evidence, both Berris and Abyadang material (foil type) and have identical color schemes (red, green, and white); and the
claim to be the prior user of their respective marks. marks are both predominantly red in color, with the same phrase "BROAD
SPECTRUM FUNGICIDE" written underneath. Considering these striking similarities,
predominantly the "D-10," the buyers of both products, mainly farmers, may be misled
Issues: into thinking that
1. Wether or not, Berris opposition to Abyadangs application for trademark is proper? "NS D-10 PLUS" could be an upgraded formulation of the "D-10 80 WP."
(PRIOR USE/DAU)
2. Whether or not Berris use of the characters D-10 in its trademark, confers
exclusivity to use the same? ( RIGHTS OF A TRADEMARK)
3. Whether or not both the mark of Berris and Abyadang will create confusion to the
buying
public and defeat the protection of the trademark? (HOLISTIC TEST)

Ruling:
1. YES. Berris opposition to Abyadangs trademark application is proper because the
former was able to prove prior use and prior registration of its trademark.
R.A. No. 8293, requires the applicant for registration or the registrant to file a
declaration of actual use (DAU) of the mark, with evidence to that effect, within
three (3) years from the filing of the application for registration; otherwise, the
application shall be refused or the mark shall be removed from the register. Berris
was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002,
7. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG academic. In response, respondent filed three (3) separate verified notices of
(formerly BIRKENSTOCK ORTHOPAEDIE GMBH), oppositions to the subject applications, claiming, inter alia, that:
Petitioner, vs. PHILIPPINE SHOE EXPO MARKETING (a) it, together with its predecessor-in-interest, has been using Birkenstock
CORPORATION, Respondent. marks in the Philippines for more than 16 years through the mark
G.R. No. 194307 "BIRKENSTOCK AND DEVICE";
November 20, 2013 (b) the marks covered by the subject applications are identical to the one
covered by Registration No. 56334 and thus, petitioner has no right to the
Facts: registration of such marks;
(c) on November 15, 1991, respondents predecessor-in-interest likewise
Petitioner, BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly obtained a Certificate of Copyright Registration No. 0-11193 for the word
BIRKENSTOCK ORTHOPAEDIE GMBH) (Birks for short), is a corporation duly "BIRKENSTOCK" ;
organized and existing under the laws of Germany, applied for various trademark (d) while respondent and its predecessor-in-interest failed to file the 10th
registrations before the IPO, namely: Year DAU, it continued the use of "BIRKENSTOCK AND DEVICE" in
(a) "BIRKENSTOCK" under Trademark Application Serial No. (TASN) 4-1994091508 lawful commerce; and
for goods falling under Class 25 of the International Classification of Goods and (e) to record its continued ownership and exclusive right to use the
Services (Nice Classification) with filing date of March 11, 1994; "BIRKENSTOCK" marks, it has filed TASN 4-2006-010273 as a " reapplication " of its
(b) "BIRKENSTOCK BAD HONNEF -RHEIN & DEVICE COMPRISING OF old registration, Registration No. 56334.
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND The Ruling of the BLA
SUNBEA M" under TASN 4-1994-091509 for goods falling under Class 25 of the The BLA of the IPO sustained respondents opposition, thus, ordering the
Nice Classification with filing date of March 11, 1994; and rejection of the subject applications.
(c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND The Ruling of the IPO Director General
SUNBEAM" under TASN 4-1994-095043 for goods falling under Class 10 of the The IPO Director General reversed and set aside the ruling of the BLA, thus
Nice Classification with filing date of September 5, 1994 (subject applications). allowing the registration of the subject applications.

Note: NICE Classification 9th Edition based on the IPO site Class 10 - Surgical, Ruling of the CA
medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and The CA reversed and set aside the ruling of the IPO Director General and
teeth; orthopedic articles; suture materials. Class 25 - Clothing, footwear, headgear. reinstated that of the BLA. It disallowed the registration of the subject applications on
However, registration proceedings of the subject applications were suspended in the ground that the marks covered by such applications "are confusingly similar, if not
view of an existingregistration of the mark "BIRKENSTOCK AND outright identical" with respondents mark. It equally held that respondents failure to
DEVICE" under Registration No. 56334 dated October 21, 1993 (Registration No. file the 10th Year DAU for Registration No. 56334 "did not deprive petitioner of its
56334) in the name of ShoeTown International and Industrial Corporation, the ownership of theBIRKENSTOCK mark since it has submitted substantial evidence
predecessor-in-interest of respondent Philippine Shoe showing its continued use, promotion and advertisement thereof up to the present."
Expo Marketing Corporation.
Petitioner filed a petition for cancellation of Registration No. 56334 Issue:
on the ground that it is the lawful and rightful owner of the Birkenstock marks Whether or not the subject marks should be allowed
(Cancellation Case). registration in the name of petitioner.
During its pendency, however, respondent and/or its predecessor-ininterest failed to
file the required 10th Year Declaration of Actual Use (10th Year DAU) for Registration Ruling:
No. 56334 on or before October The petition is meritorious.
21, 2004, thereby resulting in the cancellation of such mark. 1. Failure of the respondent to file the DAU within the requisite period results in the
Accordingly, the cancellation case was dismissed for being moot and automatic cancellation of registration of a trademark.
2. Respondent already lost any right or interest over the said mark. In order to register a trademark, one must be the owner thereof,
3. Petitioner has duly established its true and lawful ownership of the mark must have actually used the mark in commerce in the Philippines for two (2) months
"BIRKENSTOCK." prior to the application for registration
4. Respondent was in bad faith. the actual use in commerce is also the test of ownership, however
Registration and ownership of "BIRKENSTOCK the mark must not have been so appropriated by another Significantly, to be an
1. Failure of the respondent to file the DAU within the requisite period results in the owner, Section 2-A does not require that the actual use of a trademark must be within
automatic cancellation of registration of a trademark. Such failure is tantamount to the the Philippines.
abandonment or withdrawal of any right or interest the registrant has over his
trademark. Republic Act No. (RA) 166, the governing law for Registration No. 56334, Registration of a trademark, by itself, is not a mode of acquiring ownership.
requires the filing of a DAU on specified periods, to wit: Section 12. Duration. Each Registration merely creates a prima facie presumption of the validity of the
certificate of registration shall remain in force for twenty years: Provided, That registration, of the registrants ownership of the trademark, and of the exclusive right
registrations under the provisions of this Act shall to the use thereof. Such presumption, just like the presumptive regularity in the
be cancelled by the Director, unless within one year following the fifth, tenth and performance of official functions, is rebuttable and must give way toevidence to the
fifteenth anniversaries of the date of issue of the certificate of registration, the contrary.
registrant shall file in the Patent Office an affidavit showing that the mark or trade- It is not the application or registration of a trade mark that vests ownership thereof,
name is still in use or showing that its non-use is due to special circumstance which but it is the ownership of a trademark that confers the right to register the same.
excuse such non-use and is not due to any intention to abandon the same, and pay
the required fee. A trademark is an industrial property over which its owner is entitled to property
The Director shall notify the registrant who files the above- prescribed affidavits rights which cannot be appropriated by unscrupulous entities that, in one way or
of his acceptance or refusal thereof and, if a refusal, the reasons therefor . another, happen to register such trademark ahead of its true and lawful owner.
The presumption of ownership accorded to a registrant must then necessarily yield
2. Respondent cannot invoke Section 236 of the IP Code which pertains to intellectual to superior evidence of actual and real ownership of a trademark.
property rights obtained under previous intellectual property laws
because it already lost any right or interest over the said mark. Sec. 236. Preservation 4. Respondent was in bad faith.
of Existing Rights. Nothing herein shall adversely affect the rights on the BIRKENSTOCK, obviously of German origin, is a highly distinct and arbitrary mark. It
enforcement of rights in patents, utility models, industrial designs, marks and works, is very remote that two persons did coin the same or identical marks. To come up with
acquired in good faith prior to the effective date of this Act. a highly distinct and uncommon mark previously appropriated by another, for use in
the same line of business, and without any plausible explanation, is incredible. The
3. Petitioner has duly established its true and lawful ownership of the field from which a person may select a trademark is practically unlimited.
mark "BIRKENSTOCK. Petitioner was able to establish that it is the owner of the
mark "BIRKENSTOCK." It submitted evidence relating to the origin and history of As in all other cases of colorable imitations, the unanswered riddle is why, of the
"BIRKENSTOCK" and its use in commerce long before respondent was able to millions of terms and combinations of letters and designs available, [respondent]had
register the same here in the Philippines .It has sufficiently proven that to come up with a mark identical or so closely similar to the [petitioners] if there was
"BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann no intent to take advantage of the goodwill generated by the [petitioners] mark.
Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous Being on the same line of business, it is highly probable that the [respondent] knew
generations of his kin continuously engaged in the manufacture and sale of shoes of the existence of BIRKENSTOCK and its use by the [petitioner], before[respondent]
and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known appropriated the same mark and had it registered in its name.
as the petitioner. Petitioner also submitted various certificates of registration of the
mark "BIRKENSTOCK" in various countries and that it has used such mark in
different countries worldwide, including the Philippines.

Section 2 of RA 166, the law governing the subject applications:


8. Shangri-La International Hotel Management, LTD., Shangri-La Properties Inc., filing of the trademark application. Hence respondent cannot claim that the certificate
Makati Shangri-La Hotel & Resort Inc., and Kuok Philippines Properties, Inc vs of registration is proof that the two months prior use was complied with.
Developers Group of Companies, Inc.
GR 159938, March 31, 2006 Also it was found that respondents president Ramon Syhunliong has been a guest in
one of the petitioners hotel. Hence there was a possibility that he may have copied
Facts: the idea there.
Respondent claims ownership over the Shangri-La mark and s logo on the strength of CA still gave him the benefit of the doubt; however upon scrutiny of the questioned
its prior use within the country. It filed with the bureau of patents, trademarks and logos, it appears that the respondents logo has oriental overtones. By copying even
technology transfer an application for registration covering the subject mark and logo. the exact font and lettering, there arises a certainty that the adoption was deliberate,
BPTTT issued the corresponding certificate of registration. malicious, and in bad faith.

The Kuok family on the other hand owns a chain of hotels since 1969 and adopted
the name Shangri-La. The Kuok Family has opened EDSA Shangri-La and Makati 9.MCDONALDS CORPORATION VS. MACJOY FASTFOOD CORPORATION
Shangri-La in the Philippines. Both hotels are incorporated in the Philippines. G.R. NO. 166115, FEB. 2, 2007
The hotels owned by the Kuok family used the distinct marks of Shangri-La as part of
their trade name. Facts:
On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic corporation
The Kuok Family filed with the BPTTT a petition for cancellation of the registration of engaged in the sale of Fast food products in Cebu city, filed with BPTT, now IPO, an
the Shangri-La mark used by respondent.The case was thereafter heard before the application for registration of the trademark MACJOY & DEVICE for fried chicken,
RTC. chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo
After trial on the merits, the RTC ruled in favor of DGCIOn appeal, the CA affirmed the and steaks. Petitioner McDonalds Corporation, filed a verified Notice of Opposition
ruling of the RTC.On appeal to the SC, petitioner alleged that respondent cannot file against the respondents application claiming that the trademark MACJOY &
an application for registration of the Shangri-La mark because it did not have prior DEVICE so resembles its corporate logo otherwise known as the Golden Arches or
actual commercial use as required by RA 166. M design, and its marks McDonalds, McChicken,MacFries,
BigMac,McDo,McSpaghetti,McSnack, and Mc, such that when used on
Issue: identical or related goods, the trademark applied for would confuse or deceive
Whether or not the trademark by DGCI cannot be registered? purchasers into believing that the goods originate from the same source or origin. On
Dec. 28, 1998, the IPO sustained the petitioners opposition and rejected the
Held: respondents application. CA reversed.
Under RA 166 before a trademark can be registered, it must have been actually used
in commerce for not less than two months in the Philippines prior the filing of the Issue:
application for registration. Whether or not respondents McJoy and Device marks are confusingly similar to
petitioners McDonalds marks?
Registration does not confer upon the registrant an absolute right to the registered
mark. It is merely a prima facie proof that the registrant is the owner. Evidence of a Held:
prior and continuous use by another can overcome such presumption. Yes. In determining similarity and likelihood of confusion, jurisprudence has
Ownership of a mark or trade name may be acquired not by registration but by developed two test-the dominancy test and the holistic test: The dominancy test
adoption and use in trade and commerce. focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion or deception; the holistic test requires the court to consider the
Respondents own witness testified that the jeepney signboard artist commissioned to entirety of the marks as applied to the products, including the labels and packaging.
create the mark and logo submitted his designs only two and a half months after the Applying the dominancy test, McDonalds and MACJOY marks are confusingly
similar with each other such that an ordinary purchaser can conclude an association confusion or deception is likely to result, infringement takes place. Duplication or
or relation between the marks. imitation is not necessary; nor is it necessary that the infringing label should suggest
Respondent alleged that the word MACJOY is based on the name of its presidents an effort to imitate. The question is whether the use of the marks involved is likely to
niece, Scarlett Yu Carcell. By its implausible and insufficient explanation as to how cause confusion or mistake in the mind of the public or to deceive purchasers. Courts
and why out of the many choices of words if could have used for its trade name will consider more the aural and visual impressions created by the marks in the public
and/or trademark, it chose the word MACJOY, the only logical conclusion deducible mind, giving little weight to factors like prices, quality, sales outlets, and market
therefrom is that the respondent would want to ride high on the establish reputation segments. In contrast, the Holistic Test entails a consideration of the entirety of the
and goodwill of the MCDONALDS marks, which, as applied to petitioners restaurant marks as applied to the products, including the labels and packaging, in determining
business and food products, is undoubtedly beyond question. confusing similarity. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing on both labels in order
10. PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH that the observer may draw his conclusion whether one is confusingly similar to the
MANAGEMENT SA other.
G.R. No. 180073, November 25, 2009
In the case at bar, the dominancy test was used in determining whether there was a
Facts: confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying
Respondent Horphag Research Management is a corporation duly organized and the test, the court found that:
existing under the laws of Switzerland and the owner of trademark PYCNOGENOL, a Athough the letters "Y" between P and C, "N" between O and C and "S" after L are
food supplement sold and distributed by Zuellig Pharma Corporation. Respondent missing PCO-GENOLS, nevertheless, when the two words are pronounced, the
discovered that petitioner Prosource International was also distributing a similar food sound effects are confusingly similar not to mention that they are both described by
supplement using the mark PCO-GENOLS since 1996 and was only discontinued in their manufacturers as a food supplement and thus, identified as such by their public
2000. Respondent filed a complaint for Infringement of Trademark against petitioner, consumers. And although there were dissimilarities in the trademark due to the type of
praying that the latter cease and desist from using the brand PCO-GENOLS for being letters used as well as the size, color and design employed on their individual
confusingly similar with respondents trademark PYCNOGENOL. Petitioner packages/bottles, still the close relationship of the competing products name in
contended that the two marks were not confusingly similar and denied liability, since it sounds as they were pronounced, clearly indicates that purchasers could be misled
discontinued the use of the mark prior to the institution of the infringement case. into believing that they are the same and/or originates from a common source and
manufacturer. This is not the first time that the court takes into account the aural
Issue: effects of the words and letters contained in the marks in determining the issue of
Whether or not petitioners are liable for infringement of trademark. confusing similarity.

Held: 11. Skechers, U.S.A. vs. Inter Pacific Industrial Trading Corporation, et.al. [GR
The court ruled in the positive. A trademark is any distinctive word, name, symbol, No. 164321, March 23, 2011]
emblem, sign, or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish them from those FACTS: Petitioner Skechers USA has registered the trademark "Skechers" and the
manufactured, sold, or dealt by others. The gravamen of trademark infringement is trademark "S" (with an oval design) with the IPO. Pursuant to a search warrant, more
the element of "likelihood of confusion" which must be examined from the particular, than 6,000 pairs of shoes bearing the "S" logo were seized. Respondents moved to
and sometimes peculiar, circumstances of each case. quash the search warrant arguing that there was no confusing similarity between
petitioner's "Skechers" rubber shoes and its "Strong" rubber shoes. RTC applying the
In determining similarity and likelihood of confusion, jurisprudence has developed two Holistic Test ordered the quashing of the warrant which was affirmed by the CA. RTC
tests: the Dominancy Test and the Holistic or Totality Test. The Dominancy Test noted the following differences: 1) the mark "S" is not enclosed in an oval design; 2)
focuses on the similarity of the prevalent features of the competing trademarks that the hang tags and labels bear the word "Strong" for respondent and "Skechers USA"
might cause confusion and deception, thus constituting infringement. If the competing for petitioner; 3) Strong shoes are modestly priced compared to Skechers shoes.
trademark contains the main, essential and dominant features of another, and
ISSUE: Whether or not respondents are guilty of Infringement imitation is not necessary. Even accidental confusion may be cause for trademark
infringement. More consideration is given to the aural and visual impressions created
RULING: Yes. Applying the Dominancy Test, even if respondents did not use the oval by the marks on the buyers and less weight is given to factors like price, quality, sales
design, the mere fact that it used the same stylized "S" (same font and size of the outlets and market segments.
lettering) the same being the dominant feature of petitioner's trademark constitutes Applied to this case: The SC found that the use of the S symbol by Strong rubber
infringement. Applying the Holistic Test, the dissimilarities between the shoes are too shoes infringes on the registered Skechers trademark. It is the most dominant feature
trifling and frivolous that it is indubitable that respondent's products will cause of the mark -- one that catches the buyers eye first. Even if the accused claims that
confusion and mistakes in the eyes of the public. Respondent's shoes may not be an there was a difference because the S used by Skechers is found inside an oval, the
exact replica of the petitioner's shoes, but the features and overall design are so fact that the accused used the dominant S symbol already constitutes trademark
similar and alike that confusion is higly likely. Registered trademark owner may use its infringement.
mark on the same or similar products, in different segments of the market, and at The SC disagreed with the CA reasoning that the S symbol is already used for many
different price levels depending on variations of the products for specific segments of things, including the Superman symbol. Even if this is true, the fact that Strong used
the market. The purchasing public might be mistaken in thinking that petitioner had same stylized S symbol as that of the Skechers brand makes this a case of
ventured into a lower market segment which scenario is plausible especially since trademark infringement. The same font and style was used in this case. The
both petitioner and respondent manufacture rubber shoes. Superman S symbol is clearly different from the S in this case.
Yes, the accused is guilty of trademark infringement. 2. Holistic or Totality Test the court looks at the entirety of the marks as applied to
the products, including the labels and packaging. You must not only look at the
Under the IP Code (RA No. 8293), trademark infringement is committed when: dominant features but all other features appearing on both marks.
Remedies; Infringement. Any person who shall, without the consent of the owner of Applied to this case: Both RTC and CA used the Holistic Test to rule that there was no
the registered mark: infringement. Both courts argued the following differences:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of The mark S found in Strong Shoes is not enclosed in an oval design.
a registered mark or the same container or a dominant feature thereof in connection The word Strong is conspicuously placed at the backside and insoles.
with the sale, offering for sale, distribution, advertising of any goods or services The hang tags and labels attached to the shoes bears the word Strong for
including other preparatory steps necessary to carry out the sale of any goods or respondent and Skechers U.S.A. for private complainant;
services on or in connection with which such use is likely to cause confusion, or to Strong shoes are modestly priced compared to the costs of Skechers Shoes.
cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a Also using the Holistic Test, the SC corrected the lower courts and ruled that the
dominant feature thereof and apply such reproduction, counterfeit, copy or colorable striking similarities between the products outweigh the differences argued by the
imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements respondents:
intended to be used in commerce upon or in connection with the sale, offering for Same color scheme of blue, white and gray;
sale, distribution, or advertising of goods or services on or in connection with which Same wave-like pattern on the midsole and the outer sole;
such use is likely to cause confusion, or to cause mistake, or to deceive, shall be Same elongated designs at the side of the midsole near the heel;
liable in a civil action for infringement by the registrant for the remedies hereinafter set Same number of ridges on the outer soles (five at the back and six in front);
forth: Provided, That the infringement takes place at the moment any of the acts Same location of the stylized S symbol;
stated in Subsection 155.1 or this subsection are committed regardless of whether The words "Skechers Sport Trail" at the back of the Skechers shoes and "Strong
there is actual sale of goods or services using the infringing material. (emphasis Sport Trail" at the back of the Strong shoes, using the same font, color, size, direction
supplied) and orientation;
Same two grayish-white semi-transparent circles on top of the heel collars.
There is trademark infringement when the second mark used is likely to cause The features and overall design of the two products are so similar that there is a high
confusion. There are two tests to determine this: likelihood of confusion.
1. Dominancy Test the court focuses on the similarity of the dominant features of the Two products do not need to be identical, they just need to be similar enough to
marks that might cause confusion in the mind of the consumer. Duplication or confuse the ordinary buyer in order to constitute trademark infringement (Converse
Rubber Corporation v. Jacinto Rubber & Plastic Co., 186 Phil. 85 [1980]). Also, the and desist from using the mark Ginebra. San Miguel filed a complaint for trademark
difference in price cannot be a defense in a case for trademark infringement infringement, unfair competition and damages, with applications for the issuance of a
(McDonalds Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 [2004]). TRO and a writ of preliminary injunction against Tanduay before the RTC of
Mandaluyong.
There are two types of confusion:
Product Confusion where the ordinary prudent purchaser would be induced to (Developments in the trial court and the CA I have laid out in bullet form for easy
purchase on product in the belief that he was buying another. reading. The events could get a little confusing from here.)
Source or Origin Confusion although the goods are different, the use of the mark The trial court issued a TRO prohibiting Tanduay from manufacturing, selling
causes the consumer to assume that both products originate from the same source. and advertising Ginebra Kapitan.
Trademark law protects the owner not only from product confusion but also from Tanduay filed a petition for certiorari with the CA and an Urgent Motion to
source confusion. Protection is not limited to the same or similar products but extends Defer Injunction Hearing before the trial court.
to all cases where: Despite the motion filed by San Miguel, the trial court conducted hearings for
The consumer is misled into thinking that the trademark owner extended his business Tanduay to show cause why no writ of preliminary injunction should be issued.
into a new field;
The trial court granted San Miguels application for issuance of a writ of
The consumer is misled into thinking that the trademark owner is in any way
preliminary injunction.
connected to the infringers activities; or
The infringement forestalls the normal potential expansion of the trademark owners Tanduay filed a supplemental petition in the CA assailing the injunction order.
business. The CA issued a TRO enjoining the trial court from implementing the injunction
order and further proceeding with the case.
Trademark law does not only protect the owners reputation and goodwill, it also Finally, the CA rendered a decision dismissing Tanduays petition for certiorari
protects the consumers from fraud and confusion. and supplemental petition. Its motion for reconsideration was likewise denied.
In this case, it is clear that there was an attempt to copy the trademark owners mark
and product design. In trademark infringement cases, you do not need to copy ISSUE:
another's mark or product exactly. Colorable imitation is enough. Whether San Miguel is entitled to the writ of preliminary injunction granted by the trial
court as affirmed by the CA
12. TANDUAY DISTILLERS, INC. VS. GINEBRA SAN MIGUEL, INC. (2009)
RULING:
TANDUAY DISTILLERS, INC., petitioner, vs. No. (The Court decided to deal only with the questioned writ and not with the merits of
GINEBRA SAN MIGUEL, INC., respondent. the case pending before the trial court. Please note that what was issued by the trial
G.R. No. 164324, August 14, 2009. court was a writ of preliminary injunction. It had not yet disposed of the issues on
unfair competition and trademark infringement.)
FACTS:
Tanduay developed a new gin product distinguished by its sweet smell, smooth taste, San Miguel contends that Ginebra can be appropriated as a trademark, and there
and affordable price. The brand name eventually chosen for the gin product was was no error in the trial courts provisional ruling based on the evidence on record.
Ginebra Kapitan with the representation of a revolutionary Kapitan on horseback as Assuming that Ginebra is a generic word which is proscribed to be registered as a
the dominant feature of its label. Tanduay points out that the label design of Ginebra trademark under Section 123.1(h) of Republic Act No. 8293 or the Intellectual
Kapital in terms of color scheme, size and arrangement of text, and other label Property Code (IP Code), it can still be appropriated and registered as a trademark
features were precisely selected to distinguish it from the leading gin brand in the under Section 123.1(j) in relation to Section 123.2 of the IP Code, considering that
Philippine market, Ginebra San Miguel. Tanduay filed a trademark application for Ginebra is also a mark which designates the kind of goods produced by San Miguel.
Ginebra Kapitan with the Intellectual Property Office (IPO). After which, Tanduay San Miguel alleges that although Ginebra, the Spanish word for gin, may be a term
began selling Ginebra Kapitan in the Luzon areas including Metro Manila. Eventually, originally incapable of exclusive appropriation, jurisprudence dictates that the mark
Tanduay received a letter from San Miguel informing the former to immediately cease has become distinctive of San Miguels products due to its substantially exclusive and
continuous use as the dominant feature of San Miguels trademarks since 1834. by the trial court was based on its premature conclusion that Ginebra Kapitan
Hence, San Miguel is entitled to a finding that the mark is deemed to have acquired a infringes Ginebra San Miguel.
secondary meaning.
San Miguel states that Tanduay failed to present any evidence to disprove its claims; The CA upheld the trial courts ruling that San Miguel has sufficiently established its
thus, there is no basis to set aside the grant of the TRO and writ of preliminary right to prior use and registration of the word Ginebra as a dominant feature of its
injunction. trademark. The CA ruled that based on San Miguels extensive, continuous, and
substantially exclusive use of the word Ginebra, it has become distinctive of San
San Miguel states that its disclaimer of the word Ginebra in some of its registered Miguels gin products; thus, a clear and unmistakable right was shown.
marks is without prejudice to, and did not affect, its existing or future rights over
Ginebra, especially since Ginebra has demonstrably become distinctive of San We hold that the CA committed a reversible error. The issue in the main case is San
Miguels products. Miguels right to the exclusive use of the mark Ginebra. The two trademarks Ginebra
Tanduay asserts that not one of the requisites for the valid issuance of a preliminary San Miguel and Ginebra Kapitan apparently differ when taken as a whole, but
injunction is present in this case. Tanduay argues that San Miguel cannot claim the according to San Miguel, Tanduay appropriates the word Ginebra which is a dominant
exclusive right to use the generic word Ginebra for its gin products based on its feature of San Miguels mark.
registration of the composite marks Ginebra San Miguel, Ginebra S. Miguel 65, and
La Tondea Cliq! Ginebra Mix, because in all of these registrations, San Miguel It is not evident whether San Miguel has the right to prevent other business entities
disclaimed any exclusive right to use the non-registrable word Ginebra for gin from using the word Ginebra. It is not settled (1) whether Ginebra is indeed the
products. dominant feature of the trademarks, (2) whether it is a generic word that as a matter
of law cannot be appropriated, or (3) whether it is merely a descriptive word that may
Tanduay explains that the word Ginebra, which is disclaimed by San Miguel in all of be appropriated based on the fact that it has acquired a secondary meaning.
its registered trademarks, is an unregistrable component of the composite mark
Ginebra San Miguel. Tanduay argues that this disclaimer further means that San The issue that must be resolved by the trial court is whether a word like Ginebra can
Miguel does not have an exclusive right to the generic word Ginebra. Tanduay states acquire a secondary meaning for gin products so as to prohibit the use of the word
that the word Ginebra does not indicate the source of the product, but it is merely Ginebra by other gin manufacturers or sellers. This boils down to whether the word
descriptive of the name of the product itself and not the manufacturer thereof. Ginebra is a generic mark that is incapable of appropriation by gin manufacturers.

Tanduay submits that it has been producing gin products under the brand names In this case, a cloud of doubt exists over San Miguels exclusive right relating to the
Ginebra 65, Ginebra Matador, and Ginebra Toro without any complaint from San word Ginebra. San Miguels claim to the exclusive use of the word Ginebra is clearly
Miguel. Tanduay alleges that San Miguel has not filed any complaint against other still in dispute because of Tanduays claim that it has, as others have, also registered
liquor companies which use Ginebra as part of their brand names such as Ginebra the word Ginebra for its gin products. This issue can be resolved only after a full-
Pinoy, a registered trademark of Webengton Distillery; Ginebra Presidente and blown trial.
Ginebra Luzon as registered trademarks of Washington Distillery, Inc.; and Ginebra
Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco & We find that San Miguels right to injunctive relief has not been clearly and
Co., Inc. Tanduay claims that the existence of these products, the use and registration unmistakably demonstrated. The right to the exclusive use of the word Ginebra has
of the word Ginebra by other companies as part of their trademarks belie San Miguels yet to be determined in the main case. The trial courts grant of the writ of preliminary
claim that it has been the exclusive user of the trademark containing the word injunction in favor of San Miguel, despite the lack of a clear and unmistakable right on
Ginebra since 1834. its part, constitutes grave abuse of discretion amounting to lack of jurisdiction.

Tanduay argues that before a court can issue a writ of preliminary injunction, it is We believe that the issued writ of preliminary injunction, if allowed, disposes of the
imperative that San Miguel must establish a clear and unmistakable right that is case on the merits as it effectively enjoins the use of the word ginebra without the
entitled to protection. San Miguels alleged exclusive right to use the generic word benefit of a full-blown trial.
Ginebra is far from clear and unmistakable. Tanduay claims that the injunction issued
13. GREAT WHITE SHARK ENTERPRISES, INC., Petitioner, in this case, if employed and designed in a distinctive manner, can be a registrable
vs. trademark device, subject to the provisions of the IP Code.)In connection with the
DANILO M. CARALDE, JR., Respondent. registrability of trademarks, Section 123.1(d) of the IP Code provides, among others,
G.R. No. 192294 November 21, 2012 a mark which cannot be registered, to wit:
TOPIC: Registrability, Dominancy Test Section 123. Registrability.
FACTS: 123.1 A mark cannot be registered if it:
Caralde, respondent, filed before the Bureau of Legal Affairs (BLA) IPO a trademark
application for SHARK & LOGO for his manufactured goods consisting of slippers, (d) Is identical with a registered mark belonging to a different
shoes and sandals. This was opposed by the petitioner, Great White Shark proprietor or a mark with an earlier filing or priority date, in respect of:
Enterprises, Inc. (Great White Shark), a foreign corporation domiciled in Florida, USA (i) The same goods or services, or
and was issued a Certificate Registration for trademark application for clothing, (ii) Closely related goods or services, or
headgear and footwear, including socks, shoes and its components in the Philippines. (iii) If it nearly resembles such a mark as to be likely to
Petitioner alleges among other things that there is a confusing similarity between the deceive or cause confusion;
two (2) marks which is likely to deceive or confuse the purchasing public into believing
that respondents goods are produced by or originated from the petitioner, or are xxx
under its sponsorship, to the petitioners damage and prejudice; that since petitioner The mark will therefore be registrable if it is distinct or if it does not nearly resembles
was first in applying for registration of the mark, the same should be favoured with another mark to deceive or cause confusion.
respondents mark to be denied of its application. The court used Dominancy Test (although Holistic or Totality Test was defined in
BLA Director ruled in favour of petitioner. The BLA observed that prominent in both the case, this was not used in the analysis) for this purpose and confirmed that there
marks are the illustration of a shark, that although there are some differences, is no confusing similarity between the marks; that, further, there was a distinct visual
dominant features are of such degree that overall it creates an impression of striking and aural differences between them.
similarity with one another. In Great White Shark's "GREG NORMAN LOGO," there is an outline
IPO Director General on appeal by respondent, affirmed the decision by the BLA of a shark formed with the use of green, yellow, blue and
Director that there is indeed confusing similarity between the two mark; that there is red16lines/strokes; The shark in Caralde's "SHARK & LOGO" mark17 is
similarity between the two marks as to content, word, sound and meaning barring illustrated in l et t er s outlined in the form of a shark with the letter "S"
respondents registration under Sec 123.1(d) of RA 8293 of the IP Code. forming the head, the letter "H" forming the fins, the letters "A" and "R"
The Court of Appeals, upon petition for review by respondent, reversed and set aside forming the body, and the letter "K" forming the tail. In addition, the
the decision by the BLA Director and IPO Director General on its finding that there is latter mark includes several more elements such as the word
in fact no confusing similarity between the two marks; that respondents mark is more "SHARK" in a different font underneath the shark outline, layers of
fanciful and colourful and contains several elements which are easily distinguishable waves, and a tree on the right side, and liberally used the color blue
from that on the petitioner. with some parts in red, yellow, green and white.18 The whole design is
The case was then elevated to the Supreme Court by petitioner, hence this petition. enclosed in an elliptical shape with two linings.
ISSUES: The visual dissimilarities between the two (2) marks are evident and significant,
1 WON the two (2) marks can be considered identical, applying Sec. 123.1(d) of negating the possibility of confusion in the minds of the ordinary purchaser, especially
the IP Code, which is likely to deceive or cause confusion. considering the distinct aural difference between the marks.
HELD: APPENDIX
No. The two marks are not identical and there is no confusing similarity likely to 1. Great White Shark (GWS) also alleged that its trademark is a world famous and
deceive or cause confusion between them. well-known mark since its mark registered in different countries, in order to better his
A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily position that Caralde just copied GWSs mark to be able to ride on its goodwill. Both
and is capable of identifying and distinguishing the goods of one manufacturer or BLA Director and IPO Director General however found the same without merit due to
seller from those of another. Apart from its commercial utility, the benchmark of insufficiency of evidence. IPO Dir-Gen further noted that it failed to meet the other
trademark registrability is distinctiveness. (Thus, a generic figure, as that of a shark criteria under Rule 102 of the Rules and Regulations on Trademarks, Service
Marks, Trade Names and Marked or Stamped Containers to be considered as Meanwhile, on 27 March 2006, petitioner established Tezares Enterprise, a sole
well-known. Finally, SC no longer ruled on this matter (,being mooted,) since it proprietorship engaged in supplying and trading of clothing and accessories except
already found that there was no confusing similarity between the two marks. footwear.23 Also in March 2006, she discovered that underwear products bearing the
2. The Dominancy Test focuses on the similarity of the dominant features of the brand "Naturals" were being sold in SM with vendor code "180195."24 This code was
competing trademarks that might cause confusion, mistake, and deception in the registered to RGP,25 a fact confirmed by test buys conducted by her lawyers on 13
mind of the ordinary purchaser, and gives more consideration to the aural and visual and 14 May 2006.26
impressions created by the marks on the buyers of goods, giving little weight to On 5 June 2006, a search warrant for unfair competition under Section 168 in relation
factors like prices, quality, sales outlets, and market segments. to Section 170 of R.A. 8293 was issued by the RTC of Manila, Branch 24, against
The Holistic or Totality Test considers the entirety of the marks as applied to the respondents at their address.27 The search warrant called for the seizure of womens
products, including the labels and packaging, and focuses not only on the undergarments bearing the brand "Naturals," as well as equipment and papers having
predominant words but also on the other features appearing on both labels to the vendor code "180195" or the inscription "RGP." The search warrant was
determine whether one is confusingly similar to the other14 as to mislead the ordinary implemented on the same day. However, it was quashed by the same court on 20
purchaser. The "ordinary purchaser" refers to one "accustomed to buy, and therefore October 2006 upon motion of respondents. The trial court ruled that respondents did
to some extent familiar with, the goods in question."15 not pass off "Naturals" as the brand of another manufacturer. On the contrary, they
used the brand in the honest belief that they owned SCC, the owner of the brand.
On 9 June 2006, petitioner filed a criminal complaint for unfair competition against
14. G.R. No. 188225 November 28, 2012 respondents and Sunshine before the City Prosecution Office of Makati City.28
SHIRLEY F. TORRES, Petitioner, vs. IMELDA PEREZ and RODRIGO PEREZ, Assistant City Prosecutor Imelda P. Saulog found probable cause to indict
Respondents. respondents for unfair competition.29 She ruled that they had clearly passed off the
Facts: "Naturals" brand as RGPs even if the brand was owned by SCC.
The RTC Orders had denied the Motion to Dismiss and/or Withdraw Information filed Issue:
against respondents for unfair competition (violation of Section 168 in relation to Despite the extensive legal battle that petitioner and respondents have waged
Section 170)4 under Republic Act No. (R.A.) 8293 (Intellectual Property Code of the heretofore, these petitions will be settled simply through a ruling on whether there
Philippines). exists probable cause to indict respondents for unfair competition (violation of Section
Respondents Imelda and Rodrigo are spouses who own RGP Footwear 168 in relation to Section 170) under R.A. 8293.
Manufacturing (RGP), which supplies ladies shoes to Shoe Mart (SM).8 They met Ruling:
petitioner when she sold them business-class plane tickets to the United States in No probable cause to indict respondents
2002.9 She was also interested in doing business with SM, and they suggested that In positing that respondents were guilty of unfair competition, petitioner makes a lot of
she form a partnership with their daughter Sunshine, nicknamed Sasay.10Petitioner the fact that they used the vendor code of RGP in marketing the "Naturals" products.
and Sunshine formed Sasays Closet Co. (SCC), a partnership registered with the She argues that they passed off the "Naturals" products, which they marketed under
Securities and Exchange Commission on 17 October 2002. SCC was engaged in the RGP, as those of SCC; thus, they allegedly prejudiced the rights of SCC as owner of
supply, trading, retailing of garments such as underwear, childrens wear, womens the trademark. She also claims that she has the personality to prosecute respondents
and mens wear, and other incidental activities related thereto.11 for unfair competition on behalf of SCC.1wphi1
For its products, SCC used the trademark "Naturals with Design," which it filed with
the Intellectual Property Office on 24 August 2005 and registered on 26 February When Judge Untalan denied the Motion to Dismiss and/or Withdraw Information filed
2007.12 These products were primarily supplied to SM,13 which assigned to them the by the prosecution and thereby sustained the position of petitioner, his error lay in the
vendor code "190501" for purposes of identification.14SCC used the facilities and fact that his focus on the crime of unfair competition was unwarranted. In this case,
equipment owned by RGP, as well as the latters business address (No. 72 Victoria much more important than the issue of protection of intellectual property is the change
Subdivision, Barangay Dela Paz, Bian, Laguna), which was also the residential of ownership of SCC. The arguments of petitioner have no basis, because
address of respondents.15In August 2003, Sunshine pulled out of the partnership, respondents are the exclusive owners of SCC, of which she is no longer a partner.
because she was hired to work in an international school.16 Respondent Imelda took Based on the findings of fact of the CA and the DOJ, respondents have completed the
over Sunshines responsibilities in the partnership.17 payments of the share of petitioner in the partnership affairs. Having bought her out of
SCC, respondents were already its exclusive owners who, as such, had the right to Dockers Pants with the "Dockers and Design" trademark. LS & Co. and LSPI alleged
use the "Naturals" brand. that they discovered the presence in the local market of jeans under the brand name
The use of the vendor code of RGP was resorted to only for the practical purpose of "Paddocks" using a device which is substantially, if not exactly, similar to the "Dockers
ensuring that SMs payments for the "Naturals" products would go to respondents, and Design" trademark owned by and registered in the name of LS & Co., without its
who were the actual suppliers. consent. Based on their information and belief, they added, Clinton Apparelle
Furthermore, even if we were to assume that the issue of protection of intellectual manufactured and continues to manufacture such "Paddocks" jeans and other
property is paramount in this case, the criminal complaint for unfair competition apparel. Petitioner brought a suit against the respondents with a prayer of issuance of
against respondents cannot prosper, for the elements of the crime were not present. a writ of preliminary injunction to enjoining defendants, their officers, employees,
We have enunciated in CCBPI v. Gomez67 that the key elements of unfair agents, dealers, retailers, or assigns from manufacturing, distributing, selling, offering
competition are "deception, passing off and fraud upon the public."68 No deception for sale, advertising, jeans the design herein complained of as substantially, if not
can be imagined to have been foisted on the public through different vendor codes, exactly similar, to plaintiffs' "Dockers and Design" trademark. The lower court granted
which are used by SM only for the identification of suppliers products. the issuance of the said writ in favor of the petitioner. Thus, respondent Clinton
Apparelle filed with the Court of Appeals a Petition for certiorari , prohibition and
WHEREFORE, finding lack of probable cause for respondents alleged violation of mandamus with prayer for the issuance of a temporary restraining order and/or writ of
Section 168 in relation to Section 170 of Republic Act No. 8293 (unfair competition), preliminary injunction, assailing the orders of the trial court wherein the appellate
are AFFIRMED. he Information against respondents for unfair competition is court, in its assailed Decision, granted Clinton Apparelle's petition. In return petitioners
appealed and filed a petition for review before the Supreme Court of the appellate
DISMISSED.
court's Decision and Resolution. The Supreme Court denied the petition and affirmed
the Decision of the Court of Appeals.

ISSUES:
15. LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., versus - 1.) Whether or not the single registration of the trademark Dockers and Design
AUSTRIAMARTINEZ, grants
CALLEJO, TINGA, and CLINTON APPARELLE, INC. G.R. No. 138900 September the petitioner the exclusive right to use the assailed device and prevents the
20, respondent from using the same.
2005 2.) Whether or not the act by the respondent to use a portion of the assailed device
but of a different word mark constitutes Trademark Infringement.
Facts: 3.) Whether or not there is material and substantial invasion of the right of the
This case stemmed from the Complaint for Trademark Infringement, Injunction and petitioner
Damages filed by petitioners LS & Co. and LSPI against respondent Clinton to warrant the issuance of an injunctive writ for protection from trademark dilution.
Apparelle, Inc. (Clinton Aparelle) together with an alternative defendant, Olympian
Garments, Inc. (Olympian Garments). Petitioner LS & Co., a foreign corporation duly RULING:
organized and existing under the laws of the State of Delaware, U.S.A., and engaged 1.) No. Although Section 138 of Republic Act No. 8293 provides that Certificate of
in the apparel business, is the owner by prior adoption and use since 1986 of the Registration is prima facie evidence of the validity of the registration, the registrants
internationally famous "Dockers and Design" trademark. This ownership is evidenced ownership of the mark and of the exclusive right to use the same in connection with
by its valid and existing registrations in various member countries of the Paris the goods or services and those that are related thereto specified in the certificate.
Convention. In the Philippines, it has a Certificate of Registration No. 46619 in the Section 147.1 of said law likewise grants the owner of the registered mark the
Principal Register for use of said trademark on pants, shirts, blouses, skirts, shorts, exclusive right to prevent all third parties not having the owners consent from using in
sweatshirts and jackets under Class 25. The "Dockers and Design" trademark was the course of trade identical or similar signs for goods or services which are identical
first used in the Philippines in or about May 1988, by LSPI, a domestic corporation or similar to those in respect of which the trademark is registered if such use results in
engaged in the manufacture, sale and distribution of various products bearing a likelihood of confusion. However, given the single registration of the trademark
trademarks owned by LS & Co. To date, LSPI continues to manufacture and sell "Dockers and Design" and considering that respondent only uses the assailed device
but a different word mark, the right to prevent the latter from using the challenged prosecution of the persons/establishment in violation of their Intellectual Property
"Paddocks" device is far from clear. It could thus be said that respondent only rights.
appropriates petitioners logo and not the word mark Dockers; it uses only a portion of 2) Prior to conducting investigations, Oblanca reviewed the trademark registrations
the registered trademark and not the whole. Stated otherwise, it is not evident issued to Petron and Shell as well as other documents and evidence obtained
whether the single registration of the trademark "Dockers and Design" confers on the when Petron and company employed an investigative agency by Mr. Bernabe
owner the right to prevent the use of a fraction thereof in the course of trade. It is also Alajar.
unclear whether the use without the owner's consent of a portion of a trademark 3) MASAGANA Gas Corporation is not authorized to refill and sell and distribute
registered in its entirety constitutes material or substantial invasion of the owner's Gasul and Shellane products. Petitioners are the directors and stockholders
right. of said corporation.
4) Oblanca and Alajar conducted test-buys on 2 occasions, Feb. 13, 2003 and Feb.
2.) No. It is likewise NOT SETTLED whether the wing-shaped logo, as opposed to the 27, 2003. After stating their intent to do business, were allowed inside the
word mark, is the dominant or central feature of petitioners' trademark the feature that MASAGANA refilling plant, receipts were issued and were assisted in choosing
prevails or is retained in the minds of the public an imitation of which creates the empty Gasul cylinders. In their presence, the empty cylinders were refilled where
likelihood of deceiving the public and constitutes trademark infringement. Oblanca noticed that there was no valve seal placed on the cylinders.
Oblanca furnished copies of photographs of the delivery trucks in his application for
3.) No. Petitioners also FAILED to show proof that there is material and substantial the search warrant. RTC issued 2 search warrants for the search and seizure of
invasion of their right to warrant the issuance of an injunctive writ. Neither were transaction records, the trucks used in the delivery of illegally refilled cylinders,
petitioners able to show any urgent and permanent necessity for the writ to prevent machinery and equipment being used or intended to be used in illegally refilling the
serious damage. To be eligible for protection from dilution, there has to be a finding cylinders bearing the trademarks of Gasul and Shellane, and Gasul and Shellane
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by cylinders and any other items bearing their trademark.
respondent of "Paddocks and Design" began after the petitioners' mark became Petitioners filed a Motion to Quash on the grounds that there is no probable cause,
famous; and (3) such subsequent use defames petitioners' mark. In the case at bar, that Oblanca and Alajar do not have the authority to apply for search warrant,
petitioners have yet to establish whether "Dockers and Design" has acquired a strong allegedly committing perjury when they submitted their sworn statements that they
degree of distinctiveness and whether the other two elements are present for their conducted test-buys, that the area was not specified as the place to be searched
cause to fall within the ambit of the invoked protection. The Trends MBL Survey must be indicated with particularity and that the search warrant was general in nature
Report which petitioners presented in a bid to establish that there was confusing as the items seized were being used in the conduct of lawful business. Petitioners
similarity between two marks is not sufficient proof of any dilution that the trial court also filed for a Motion for the Return of the Motor Compressor and the LPG Refilling
must enjoin. Therefore, Injunction will not lie when the petitioners right to injunctive Machine as said items were being used in the conduct of lawful business as third-
relief has not party claimants.
been clearly and unmistakably demonstrated and when the right has yet to be Issues:
determined. 1) W/N there was probable cause.
2) W/N Oblanca has the authority to apply for the search warrant.
16. Yao vs. People GR No. 168306,June 19, 2007 3) W/N the requirement of giving particular description of the place to be
searched was complied with.
Facts: 4) W/N the search warrant was general in nature.
NBI Agent Ritche Oblanca applied for 2 search warrants with RTC Cavite against 5) W/N the complaint was against MASAGANA [to not consider it as third party
petitioners along with other occupants of MASAGANA compound for allegedly claimant whose rights were violated as a result of the seizure].
violating the Intellectual Property rights of Petron and Pilipinas Shell with
attached affidavits stating the following: Ruling:
1) NBI received a letter-complaint from Atty. Bienvenido Somera Jr. in behalf of I
Petron and Shell requesting assistance in the investigation and if warranted, As provided for by Art. III, Sec. 2 of the Constitution and Rule 126 of the Revised
Rules on Criminal Procedure regarding requisites of issuing search warrants.
According to these provisions, a search warrant can only be issued upon a finding of A fundamental principle of corporation law is that a corporation is a separate and
probable cause. The facts and circumstances referred to pertain to facts and distinct entity from its stockholders, directors, or officers but when the notion of legal
information personally known to the applicant and the witness he may present. entity is used to defeat public convenience, justify wrong, protect fraud, or defend
As provided by Sec. 155 of RA 8293, mere unauthorized use of a container bearing a crime, the law will regard the corporation as an association of persons, or in the case
registered trademark in connection with the sale, distribution or advertising of goods of two corporations merge them into one. Petitioners are directors and officers of
or services which is likely to cause confusion, mistake or deception among the MASAGANA, using the entity to violate the intellectual property right of Petron and
buyers/consumers can be considered as trademark infringement. Shell and so they should be considered one and the same for liability purposes.
Oblanca in his sworn affidavits stated that in reviewing the trademark registrations The motor compressor and the LPG refilling machine were the corpus delicti or the
issued by Philippine Intellectual Property Office to Petron and Pilipinas Shell, he evidence of the commission of the trademark infringement, thus RTC denying the
confirmed that MASAGANA is not authorized to sell, use, refill or distribute Gasul and return of said items was to prevent MASAGANA/petitioners from using it again in
Shellane LPG cylinders. trademark infringement.
Aside from the documentary evidence Oblanca submitted, both him and Alajar had Petitioner relying on Section 20 of AM No 02-1-06 SC is not tenable because it is not
personal knowledge, stating in their affidavits that they used different names during applicable in the present case as it governs only searches and seizure in civil actions
the test-buys to avoid suspicion and personally witnessed the refilling, of cylinders whereas this case is for criminal violation of RA 8293.
bearing the marks Gasul and Shellane inside the plant and the deliveries of these
refilled containers to some outlets using mini-trucks. RA 8293 Intellectual Property Code of the Philippines
Such facts and circumstances establish a sufficient probable cause. As the term Section 155. Remedies; Infringement. - Any person who shall, without the consent of
implies, probable cause is concerned with probability, not absolute or even moral the owner of the registered mark:
certainty. The standards of judgment are those of a reasonably prudent man, not the 155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of
exacting calibrations of a judge after a full blown trial. Using different names do not a registered mark or the same container or a dominant feature thereof in connection
negate the personal knowledge that Oblanca and Alajar have since it is the common with the sale, offering for sale, distribution, advertising of any goods or services
practice of officers of the law such as NBI agents during covert investigations to use including other preparatory steps necessary to carry out the sale of any goods or
another name to conceal their true identities. services on or in connection with which such use is likely to cause confusion, or to
Oblanca having reviewed the trademark registrations issued to Petron ans Shell and cause mistake, or to deceive; or
Alajar, a private investigator employed by both [Petron and Shell] to verify the reports 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
that MASAGANA is involved in the illegal refilling, selling and distribution of cylinders dominant feature thereof and apply such reproduction, counterfeit, copy or colorable
bearing their trade marks cannot be said incompetent to testify on the trademarks imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
infringed by the petitioners. intended to be used in commerce upon or in connection with the sale, offering for
As provided by Section 5 of the Revised Rules on Criminal Procedure, the searching sale, distribution, or advertising of goods or services on or in connection with which
questions propounded to the applicant and the witnesses depend largely on the such use is likely to cause confusion, or to cause mistake, or to deceive, shall be
discretion of the judge. liable in a civil action for infringement by the registrant for the remedies hereinafter set
Reviewing the Transcript of Stenographic Notes of the preliminary examination, it was forth: Provided, That the infringement takes place at the moment any of the acts
found that the questions of Judge Sadang to be sufficiently probing, not at all stated in Subsection 155.1 or this subsection are committed regardless of whether
superficial and perfunctory. The reviewing court can overturn such findings only upon there is actual sale of goods or services using the infringing material. (Sec. 22, R.A.
proof that the judge disregarded the facts before him or ignored the clear dictates of No 166a)
reason.
The items to be seized under the search warrants in question were sufficiently Section 170. Penalties. - Independent of the civil and administrative sanctions
described with particularity. Additionally, since the described items are clearly limited imposed by law, a criminal penalty of imprisonment from two (2) years to five (5)
only to those which bear direct relation to the offense, i.e., violation of section 155 of years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred
Republic Act No. 8293, for which the warrant was issued, the requirement of thousand pesos(P200,000), shall be imposed on any person who is found guilty of
particularity of description is satisfied. committing any of the acts mentioned in Section 155, Section 168 and Subsection
169.1. (Arts. 188 and 189, Revised Penal Code)
A.M. No. 02-1-06-SC - RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS FOR inquired, the driver said that it was empty but when it was checked, it was not. As a
INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS result, Petron and KPE filed a complaint for violation of RA 623 (illegally filing up
Section 20. Failure to file complaint. - The writ shall also. Upon motion of the registered cylinder tanks) , section 155 (infringement of trademarks) and section
expected adverse party, be set aside and the seized documents and articles returned 169.1 (unfair competition) of the Intellectual Property Code.
to the expected adverse party if no case is filed with the appropriate court or authority
within thirty-one (31) calendar days from the date of issuance of the writ. Issues:
Whether or not the facts of the case warranted the filing of charges against the Bicol
Probable cause for search warrant means such facts and circumstances which would Gas people for:
lead a reasonably discreet and prudent man to believe that an offense has been a) Filing up the LPG tanks registered to another manufacturer without the latters
committed and that the objects sought in connection with the offense are in the place consent in violation of RA 623 as amended
to be searched. b) Trademark infringement consisting in Bicol Gas use of trademark that is
> Probable cause is the existence of such facts and circumstances as would excite confusingly similar to Petrons registered Gasul trademark in violation of Section 155
the belief in a reasonable mind, acting on the facts within the knowledge of the of RA 8293
prosecutor, that the person charged was guilty of the crime for which he was c) Unfair competition consisting in passing off Bicol Gas- produced LPGs fro
prosecuted Petron produced Gasul LPG in violation of Section 168.3 of RA 8293
> Based on the evidence that would be adduced by the parties
Held:
17. Manuel C. Espiritu, Jr., et. Al who are the officers and directors of Bicol Gas a) The complaint adduced at the preliminary investigation shows that one 50 kg
Refilling Plant Corporation vs Petron Corporation and Carmen J. Doloiras, Petron Gasul LPG found in the Bicol Gas truck belonged to their customer who had
doing business under the name Kristina Patricia Enterprises the same filled up by Bicol Gas. RA 623 as amended punishes any person who
GR No. 170981, November 4, 2009 without the written consent of the manufacturer or seller of gases contained in duly
registered steel cylinder tanks, fills the steel cylinder or tanks for the purpose of sale,
Facts: disposal or trafficking, other than the purpose for which the manufacturer or seller
Petron Corporation sold and distributed LPG in cylinder tanks that carried its registered the same. Consequently, they may be prosecuted for that purpose.
trademark GASUL and Carmen Dolorias owned and operated Kristina Patricia b) But as for the crime of trademark infringement, section 155 of RA 8293
Enterprises, the exclusive distributor of Gasul LPG in the whole Sorsogon. provides its enumeration. However, KPE and Petron failed to prove that Bicol Gas
painted on its own tanks Petrons Gasul trademark or confusingly similar version to
On the hand, Bicol Gas was also in the business of selling and distributing LPG in deceive its customers and cheat Petron.
Sorsogon but theirs carried the trademark Bicol Savers Gas. c) As for the charge of unfair competition under section 168.3 of RA 8293, there
is no showing that Bicol has been giving its LPG tanks the general appearance of the
In the course of trade and competition, any given distributor of LPGs at times tanks of Petrons Gasul. As already stated, the truck full of Bicol Gas tank that the
acquired possession of LPG cylinder tanks belonging to other distributors operating in KPE manager apprehended on the road in Sorsogon just have mixed up with the one
the same area. They called these captured cylinders. What KPE is doing is that authentic Gasul tank that belong to Petron.
they swap the cylinder tanks with Bicol Gas involving 30 tanks of Gasul with the Lastly, Bicol Gas is a Corporation. It is an entity separate and distinct from persons of
permission of the Bicol Gas owners. While doing such transaction, KPEs Manager its officer, directors and stockholders. It has been held however, that corporate officers
noticed that Bicol Gas still has a number of Gasul tanks in its yard. It requested that and employees through whose act, default or omission of the crime, they will be held
those tanks be returned. But the latter refused because those tanks will be sent to answerable for the crime but respondents failed to show that Bicol Gas officers and
Batangas. stockholders participated in the crime.

However, during the day to day delivery of Bicol Gas in the town of Sorsogon, KPEs
Manager noticed that the truck carrying mostly of Bicol Savers LPG tanks has one 18. Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc..
unsealed 50-kg Gasul and one 50-kg Shellane tank. When Jose, KPEs Manager, G.R. No. 169504 : March 3, 2010
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably
Facts: imitated by the infringer;
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of (3) The infringing mark or trade name is used in connection with the sale, offering for
establishing and maintaining coffee shops in the country. It has a franchise sale, or advertising of any goods, business or services; or the infringing mark or trade
agreement6ca with Coffee Partners Ltd. (CPL), a business entity organized and name is applied to labels, signs, prints, packages, wrappers, receptacles, or
existing under the laws of British Virgin Islands, for a non-exclusive right to operate advertisements intended to be used upon or in connection with such goods, business,
coffee shops in the Philippines using trademarks designed by CPL such as "SAN or services;
FRANCISCO COFFEE." Respondent is a local corporation engaged in the wholesale (4) The use or application of the infringing mark or trade name is likely to cause
and retail sale of coffee. It registered with the SEC in May 1995. It registered the confusion or mistake or to deceive purchasers or others as to the goods or services
business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with the themselves or as to the source or origin of such goods or services or the identity of
Department of Trade and Industry (DTI) in June 1995. Respondent formed a joint such business; and
venture company with Boyd Coffee USA under the company name Boyd Coffee (5) It is without the consent of the trademark or trade name owner or the assignee
Company Philippines, Inc. (BCCPI), which is engaged in the processing, roasting, and thereof.
wholesale selling of coffee.
Clearly, a trade name need not be registered with the IPO before an infringement suit
In 2001, respondent discovered that petitioner was about to open a coffee shop under may be filed by its owner against the owner of an infringing trademark. All that is
the name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to required is that the trade name is previously used in trade or commerce in the
respondent, petitioners shop caused confusion in the minds of the public as it bore a Philippines. Section 22 of Republic Act No. 166,12ca as amended, required
similar name and it also engaged in the business of selling coffee. Respondent also registration of a trade name as a condition for the institution of an infringement suit.
filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA- However, RA 8293, Section 165.2 of RA 8293 categorically states that trade names
IPO) for infringement and/or unfair competition. Petitioner denied the allegations in shall be protected, even prior to or without registration with the IPO, against any
the complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO) unlawful act x x x. Also, applying the dominancy test or the holistic test, petitioners
applications for registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN
class 42 in 1999 and for class 35 in 2000. FRANCISCO COFFEE & ROASTERY, INC." trade name.
Yes. In Prosource International, Inc. v. Horphag Research Management SA, this Court
BLA-IPO rendered a decision favourable to the respondents and found herein laid down what constitutes infringement of an unregistered trade name, thus:
petitioners guilty of trademark ingfringement. ODG-IPO; however reversed the 1. The trademark being infringed is registered in the Intellectual Property Office;
decision of the Bureau which lead respondents to appeal. CA again reversed the however, in infringement of trade name, the same need not be registered;
decision of the Office of the Director General and affirmed the BLA-IPOs finding, 2. The trademark or trade name is reproduced, counterfeited, copied, or colorably
hence this petition. imitated by the infringer;
3. The infringing mark or trade name is used in connection with the sale, offering for
Issue: sale, or advertising of any goods, business or services; or the infringing mark or trade
Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes name is applied to labels, signs, prints, packages, wrappers, receptacles, or
infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, advertisements intended to be used upon or in connection with such goods, business,
INC.," even if the trade name is not registered with the Intellectual Property Office or services;
(IPO). 4. The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
Held: themselves or as to the source or origin of such goods or services or the identity of
In Prosource International, Inc. v. Horphag Research Management SA, this Court laid such
down what constitutes infringement of an unregistered trade name, thus: business; and
(1) The trademark being infringed is registered in the Intellectual Property Office; 5. It is without the consent of the trademark or trade name owner or the assignee
however, in infringement of trade name, the same need not be registered;
thereof. Clearly, a trade name need not be registered with the IPO before an R owns 5M Enterprises and imports Sunny Boy powdered milk from Australia and
infringement suit may be filed by its owner against the owner of an infringing repacks the powdered milk into three sizes of plastic packs bearing the name
trademark. All that is required is that the trade name is previously used in trade or NANNY. NANNY is is also classified under Class 6 full cream milk for adults in
commerce in the Philippines. Section 22 of Republic Act No. 166 as amended, [sic] all ages and is distributed and sold in Dumaguete, Negros Oriental, Cagayan de
required registration of a trade name as a condition for the institution of an Oro, and parts of Mindanao.
infringement suit, however, RA 8293, has dispensed with the registration requirement. P requested R to refrain from using NANNY and to undertake that he would stop
Section 165.2 of RA 8293 categorically states that trade names shall be protected, infringing the NAN trademark. R did not act on Ps request.
even prior to or without registration with the IPO, against any unlawful act including P filed before the RTC a complaint for TMI which later on was dismissed. P appealed
any subsequent use of the trade name by a third party, whether as a trade name or a to the CA which set aside the order and remanded the case to the RTC for further
trademark likely to mislead the public. proceedings. P moved to transfer the case to a special court for intellectual property
Applying either the dominancy test or the holistic test, petitioners San Francisco rights.
Coffee
trademark is a clear infringement of respondents San Francisco Coffee & Roastery, The RTC found R liable for TMI holding that Rs NANNY belongs to the same
Inc. trade name. The descriptive words San Francisco coffee are precisely the class as that of Ps NAN because both are food products, and that Rs use of
dominant features of respondents trade name. Petitioner and Respondent are NANNY would imply that it came from the manufacturer of NAN, and that since
engaged in the same business of selling coffee, whether wholesale or retail. The nanny means childs nurse, there might result the not so remote probability that Rs
likelihood of confusion is higher in cases where the business of one corporation is the NANNY may be confused with infant formula NAN despite the apparent disparity
same or substantially the same as that of another corporation. In this case, the between the features of the two products.
consuming public will likely be confused as to the source of the coffee being sold at R appealed to the CA which reversed the trial courts decision holding that the mark
petitioners coffee shops. Petitioners argument that San Francisco is just a proper NANNY is not confusingly similar to NAN and that R not is liable for TMI. P filed a MR
name referring to the famous city in California and that coffee is simply a generic but was denied.
term, is untenable. Respondent has acquired an exclusive right to the use of the trade Issue:
name San Francisco Coffee & Roastery, Inc. since the registration of the business WON there was trademark infringement
name with the DTI in 1995. Thus, Whether or not there is TMI and R is liable.
respondents use of its trade name from then on must be free from any infringement
by similarity. Ruling:
Of course, this does not mean that respondent has exclusive use of the geographic Yes.
word San Francisco or the generic word coffee. Geographic or generic words are not, The court applied the dominancy test when it found out that Nanny is confusingly
per se, subject to exclusive appropriation. It is only the combination of the words San similar to Nan. Nan is the prevalent feature of Nestle's line of infant powdered milk
Francisco coffee, which is respondents trade name in its coffee business, that is products. The first 3 letters of Nanny is the same as the letters of Nan. When both are
protected against infringement on matters pronounced, the aural effect is confusingly similar. Furthermore, Nan and Nanny have
related to the coffee business to avoid confusing or deceiving the public. the same classification, descriptive properties and physical attributes. Both are
classified under Class 6, both are milk products, and both are powdered in form. They
are also displayed in the milk section.
19. Societe Des Produits Nestle v. Dy, Jr. (G.R. No. 172276) Finally, the trademark owner is not only protected by law in guarding his goods or
Gr no. 172276 August 8, 2010 business from actual market competition with identical or similar products of the
Facts: parties but also extends to all cases as it would likely confuse the public into thinking
P, is a foreign corporation organized under the laws of Switzerland, which that the complaining party has extended his business into the field or is in any way
manufactures food products and beverages and owns the NAN trademark for its line connected with the activities of the infringer.
of infant powdered milk products, consisting of PRE-NAN, NAN-H.A., NAN-1, and The petition is meritorious.
NAN-2. NAN is classified under Class 6 diatetic preparations for infant feeding In Prosource International, Inc. v. Horphag Research Management SA, the Court laid
and is distributed and sold all over the Philippines. down the elements of infringement under R.A. Nos. 166 and 8293:
In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and The scope of protection afforded to registered trademark owners is not limited to
20 thereof, the following constitute the elements of trademark infringement: protection from infringers with identical goods. The scope of protection extends to
(a) A trademark actually used in commerce in the Philippines and registered protection from infringers with related goods, and to market areas that are the normal
in the principal register of the Philippine Patent Office[;] expansion of business of the registered trademark owners.
(b) [It] is used by another person in connection with the sale, offering for sale, NANNY and NAN have the same classification, descriptive properties and physical
or advertising of any goods, business or services or in connection with which such attributes. Both are classified under Class 6, both are milk products, and both are in
use is likely to cause confusion or mistake or to deceive purchasers or others as to powder form. Also, NANNY and NAN are displayed in the same section of stores
the source or origin of such goods or services, or identity of such business; or such the milk section. The Court agrees with the lower courts that there are differences
trademark is reproduced, counterfeited, copied or colorably imitated by another between NAN and NANNY: (1) NAN is intended for infants while NANNY is intended
person and such reproduction, counterfeit, copy or colorable imitation is applied for children past their infancy and for adults; and (2) NAN is more expensive than
to labels, signs, prints, packages, wrappers, receptacles or advertisements NANNY. However, as the registered owner of the NAN mark, Nestle should be free
intended to be used upon or in connection with such goods, business or services as to use its mark on similar products, in different segments of the market, and at
to likely cause confusion or mistake or to deceive purchasers[;] different price levels.
(c) [T]he trademark is used for identical or similar goods[;] and The registered trademark owner may use his mark on the same or similar products, in
(d) [S]uch act is done without the consent of the trademark registrant or assignee. different segments of the market, and at different price levels depending on variations
On the other hand, the elements of infringement under R.A. No. 8293 are as follows: of the products for specific segments of the market. The Court has recognized that
the registered trademark owner enjoys protection in product and market areas that
(1) The trademark being infringed is registered in the Intellectual Property Office; are the normal potential expansion of his business.
however, in infringement of trade name, the same need not be registered; WHEREFORE, we GRANT the petition. We SET ASIDE the decision of the CA and
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably REINSTATE the decision of the RTC.
imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for 20. Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No. 190065, August 16,
sale, or advertising of any goods, business or services; or the infringing mark or 2010
trade name is applied to labels, signs, prints, packages, wrappers, receptacles or Facts:
advertisements intended to be used upon or in connection with such goods, business Dermaline filed with the IPO an application to register the trademark Dermaline.
or services; Myra opposed this alleging that the trademark resembles its trademark Dermalin
(4)The use or application of the infringing mark or trade name is likely to cause and will cause confusion, mistake and deception to the purchasing public. Dermalin
confusion or mistake or to deceive purchasers or others as to the goods or services was registered way back 1986 and was commercially used since 1977. Myra claims
themselves or as to the source or origin of such goods or services or the idenity of that despite attempts of Dermaline to differentiate its mark, the dominant feature is the
such business; and term Dermaline to which the first 8 letters were identical to that of Dermalin. The
(5) It is without the consent of the trademark or trade name owner or the assignee pronunciation for both is also identical. Further, both have 3 syllables each with
thereof. identical sound and appearance.
Among the elements, the element of likelihood of confusion is the gravamen of Issue: W/N the IPO should allow the registration of the trademark Dermaline. NO
trademark infringement. Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to
Applying the dominancy test in the present case, the Court finds that NANNY is prevent third parties from using a trademark, or similar signs or containers for goods
confusingly similar to NAN. NAN is the prevalent feature of Nestles line of or services, without its consent, identical or similar to its registered trademark, where
infant powdered milk It is written in bold letters and used in all products. The line such use would result in a likelihood of confusion. In determining confusion, case law
consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, NANNY contains the has developed two (2) tests, the Dominancy Test and the Holistic or Totality Test.
prevalent feature NAN. The first three letters of NANNY are exactly the The Dominancy Test focuses on the similarity of the prevalent features of the
same as the letters of NAN. When NAN and NANNY are pronounced, the competing trademarks that might cause confusion or deception. Duplication or
aural effect is confusingly similar. imitation is not even required; neither is it necessary that the label of the applied mark
for registration should suggest an effort to imitate. Relative to the question on
confusion of marks and trade names, jurisprudence noted two (2) types of confusion, the tab, and the leather patch; and that the seized jeans could be mistaken for original
viz: (1) confusion of goods (product confusion), where the ordinarily prudent LEVIS 501 jeans due to the placement of the arcuate, tab, and two-horse leather
purchaser would be induced to purchase one product in the belief that he was patch.
purchasing the other; and (2) confusion of business (source or origin confusion),
where, although the goods of the parties are different, the product, the mark of which On his part, Diaz admitted being the owner of the shops searched, but he denied any
registration is applied for by one party, is such as might reasonably be assumed to criminal liability. Diaz stated that he did not manufacture Levis jeans, and that he
originate with the registrant of an earlier product, and the public would then be used the label LS Jeans Tailoring in the jeans that he made and sold; that the label
deceived either into that belief or into the belief that there is some connection LS Jeans Tailoring was registered with the Intellectual Property Office; that his shops
between the two parties, though inexistent. received clothes for sewing or repair; that his shops offered made-to-order jeans,
whose styles or designs were done in accordance with instructions of the customers;
Using this test, the IPO declared that both confusion of goods and service and that since the time his shops began operating in 1992, he had received no notice or
confusion of business or of origin were apparent in both trademarks. While it is true warning regarding his operations; that the jeans he produced were easily
that the two marks are presented differently, they are almost spelled in the same way, recognizable because the label LS Jeans Tailoring, and the names of the customers
except for Dermalines mark which ends with the letter "E," and they are pronounced were placed inside the pockets, and each of the jeans had an LSJT red tab; that
practically in the same manner in three (3) syllables, with the ending letter "E" in LS stood for Latest Style; and that the leather patch on his jeans had two
Dermalines mark pronounced silently. Thus, when an ordinary purchaser, for buffaloes, not two horses.
example, hears an advertisement of Dermalines applied trademark over the radio,
chances are he will associate it with Myras. When one applies for the registration of a Issue:
trademark or label which is almost the same or that very closely resembles one Whether there exists a likelihood of confusion between the trademarks of Levis and
already used and registered by another, the application should be rejected and Diaz.
dismissed outright, even without any opposition on the part of the owner and user of a
previously registered label or trademark. Held:
Further, Dermalines stance that its product belongs to a separate and different The Court held, through the application of the holistic test, that there was no likelihood
classification from Myras products with the registered trademark does not eradicate of confusion between the trademarks involved. Accordingly, the jeans trademarks of
the possibility of mistake on the part of the purchasing public to associate the former Levis Philippines and Diaz must be considered as a whole in determining the
with the latter, especially considering that both classifications pertain to treatments for likelihood of confusion between them. The maongpants or jeans made and sold by
the skin. Levis Philippines, which included LEVIS 501, were very popular in the Philippines.
The consuming public knew that the original LEVIS 501 jeans were under a foreign
21. Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc. brand and quite expensive. Such jeans could be purchased only in malls or boutiques
G.R. No. 180677 February 18, 2003 as ready-to-wear items, and were not available in tailoring shops like those of Diazs
as well as not acquired on a made-to-order basis. Under the circumstances, the
Facts: consuming public could easily discern if the jeans were original or fake LEVIS 501, or
Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After receiving were manufactured by other brands of jeans.
information that Diaz was selling counterfeit LEVIS 501 jeans in his tailoring shops in Diaz used the trademark LS JEANS TAILORING for the jeans he produced and sold
Almanza and Talon, Las Pias City, Levis Philippines hired a private investigation in his tailoring shops. His trademark was visually and aurally different from the
group to verify the information. Surveillance and the purchase of jeans from the trademark LEVI STRAUSS & CO appearing on the patch of original jeans under the
tailoring shops of Diaz established that the jeans bought from the tailoring shops of trademark LEVIS 501. The word LS could not be confused as a derivative from
Diaz were counterfeit or imitations of LEVIS 501. Armed with search warrants, NBI LEVI STRAUSS by virtue of the LS being connected to the word TAILORING,
agents searched the tailoring shops of Diaz and seized several fake LEVIS 501 jeans thereby openly suggesting that the jeans bearing the trademark LS JEANS
from them. Levis Philippines claimed that it did not authorize the making and selling TAILORINGcame or were bought from the tailoring shops of Diaz, not from the malls
of the seized jeans; that each of the jeans were mere imitations of genuine LEVIS or boutiques selling original LEVIS 501 jeans to the consuming public.
501 jeans by each of them bearing the registered trademarks, like the arcuate design,
The prosecution also alleged that the accused copied the two horse design of the moved for reconsideration. Denied. He thus filed a petition for certiorari under Rule 65
petitioner-private complainant but the evidence will show that there was no such with the Court of Appeals.
design in the seized jeans. Instead, what is shown is buffalo design. Again, a horse
and a buffalo are two different animals which an ordinary customer can easily The Court of Appeals affirmed the decision of Secretary of Justice. It later
distinguish. reversed itself and reinstated the Resolution of the Chief State Prosecutor.
The prosecution further alleged that the red tab was copied by the accused. However,
evidence will show that the red tab used by the private complainant indicates the word Issues:
LEVIS while that of the accused indicates the letters LSJT which means LS (1) Whether the petition for certiorari with the Court of Appeals was proper
JEANS TAILORING. Again, even an ordinary customer can distinguish the word even if Agent De Jemil did not appeal to the Office of the President?
LEVIS from the letters LSJT. (2) Whether probable cause exists against petitioners for violations of Sec. 2
(a) and (c) of BP 33, as amended?
In terms of classes of customers and channels of trade, the jeans products of the (3) Whether petitioners can be held liable therefor?
private complainant and the accused cater to different classes of customers and flow
through the different channels of trade. The customers of the private complainant are Held:
mall goers belonging to class A and B market group while that of the accused are (1) YES. The determination of probable cause by the public prosecutor, and,
those who belong to class D and E market who can only afford Php 300 for a pair of later on, by the Secretary of Justice, is subject to judicial review where it is
made-to-order pants. established that grave abuse of discretion tainted the determination. The aggrieved
party need not resort to the Office of the President before availing of judicial remedies
22. ARNEL U. TY, MARIE ANTONETTE TY, JASON ONG, WILLY DY, and ALVIN because the Secretary of Justice is an alter ego of the President who may opt to
TY, - versus - NBI SUPERVISING AGENT MARVIN E. DE JEMIL, PETRON GASUL exercise or not to exercise his or her power of review over the formers determination
DEALERS ASSOCIATION, and TOTALGAZ DEALERS ASSOCIATION, G.R. No. in criminal investigation cases. Also, under the doctrine of qualified political agency,
182147, December 15, 2010 the determination of probable cause by the Secretary of Justice is presumably that of
Facts: the Chief Executive unless disapproved or reprobated by the latter.

Petitioners are stockholders of Omni Gas Corporation ("Omni"). They are (2) YES. The test-buy conducted on 15 April 2004 tends to show that Omni
being suspected of engaging in illegal trading of petroleum products and underfilling illegally refilled the eight branded cylinders. Such act is a clear violation of Sec. 2 (a),
of branded LPG cylinders in violation of B.P. 33, as amended by P.D. 1865. NBI in relation to Secs. 3 (c) and 4 of BP 33, as amended.
Agents Marvin De Jemil and Edgardo Kawada conducted surveillance operations on
Omni. On 15 April 2004, the NBI Agents carried out a test-buy. Using eight branded Omni has no authority to refill LPG cylinders as shown by the certifications
LPG cylinders from Shell, Petron and Total, they went to Omni for refilling. Omni provided by Shell, Petron and Total. The seized items also show that Omni has no
refilled the cylinders. The NBI agents paid more than P1500. LPG Inspector Noel authority to refill the cylinders. It shows that Omni really refilled branded cylinders
Navio found that the LPG cylinders were without LPG valve seals and one of the without authorization. Omnis unauthorized refilling of branded LPG cylinders,
cylinders was actually underfilled. contrary to Sec. 2 (a) in relation to Sec. 3 (c) of BP 33, as amended.

On 28 April 2004, Agent De Jemil obtained a search warrant from Pasig RTC Granting arguendo that the customers already owned the LPG cylinders, such
branch 167. The NBI seized several items from Omni's premises. Subsequently, fact does give Omni authority to refill the cylinders without authorization from the
Agent De Jemil filed his Complaint-Affidavit before the DOJ. The Assistant City brand owners. Only the duly authorized dealers and refillers of the brand owners may
Prosecutor of Pasig found probable cause for violation of BP 33. This was later refill the branded LPG cylinders. The offense of refilling a branded LPG cylinder
approved by Chief State Prosecutor Jovencito Zuno. without the written consent of the brand owner constitutes the offense regardless of
the buyer or possessor of the branded LPG cylinder.
Petitioners appealed the decision to the Secretary of Justice, who later
reversed the decision of the Office of the Chief State Prosecutor. NBI Agent De Jemil
Petitioner's contention that they are not liable because the underfilling that opinion[62] dated December 9, 2004 of then DOE Secretary Vincent S. Perez
took place during the test-buy is an isolated event is UNTENABLE. A single addressed to Pilipinas Shell, the June 6, 2007 letter[63] of then DOE Secretary
underfilling under BP 33 is already a criminal act. Raphael P.M. Lotilla to the LPGIA, and DOE Department Circular No. 2007-10-
(3) Only Arnel Ty, as President of Omni, is liable. The other petitioners, who 0007[64] on LPG Cylinder Ownership and Obligations Related Thereto issued on
are members of Omni's Board of Directors, are not liable. Sec. 4 of BP 33 enumerates October 13, 2007 by DOE Secretary Angelo T. Reyes.
the persons who may be held liable, viz: (1) the president, (2) general manager, (3)
managing partner, (4) such other officer charged with the management of the
business affairs of the corporation or juridical entity, or (5) the employee responsible Fifth. The ownership of the seized branded LPG cylinders, allegedly owned by
for such violation. The Board of Directors is primarily a policy-making body of the Omni customers as petitioners adamantly profess, is of no consequence.
Corporation who doesn't concern itself with day-to-day operations.
The law does not require that the property to be seized should be owned by
Fourth. The issue of ownership of the seized branded LPG cylinders is the person against whom the search warrants is directed. Ownership, therefore, is of
irrelevant and hence need no belaboring. BP 33, as amended, does not require no consequence, and it is sufficient that the person against whom the warrant is
ownership of the branded LPG cylinders as a condition sine qua non for the directed has control or possession of the property sought to be seized.[65] Petitioners
cannot deny that the seized LPG cylinders were in the possession of Omni, found as
commission of offenses involving petroleum and petroleum products. Verily, the they were inside the Omni compound.
offense of refilling a branded LPG cylinder without the written consent of the brand
owner constitutes the offense regardless of the buyer or possessor of the branded In fine, we also note that among those seized by the NBI are 16 LPG cylinders
LPG cylinder. bearing the embossed brand names of Shellane, Gasul and Totalgaz but were
marked as Omnigas. Evidently, this pernicious practice of tampering or changing the
appearance of a branded LPG cylinder to look like another brand violates the brand
owners property rights as infringement under Sec. 155.1 of RA 8293. Moreover,
tampering of LPG cylinders is a mode of perpetrating the criminal offenses under BP
After all, once a consumer buys a branded LPG cylinder from the brand owner 33, as amended, and clearly enunciated under DOE Circular No. 2000-06-010 which
or its authorized dealer, said consumer is practically free to do what he pleases with provided penalties on a per cylinder basis for each violation.
the branded LPG cylinder. He can simply store the cylinder once it is empty or he can
even destroy it since he has paid a deposit for it which answers for the loss or cost of Foregoing considered, in the backdrop of the quantum of evidence required to
support a finding of probable cause, we agree with the appellate court and the Office
the empty branded LPG cylinder. Given such fact, what the law manifestly prohibits is of the Chief State Prosecutor, which conducted the preliminary investigation, that
the refilling of a branded LPG cylinder by a refiller who has no written authority from there exists probable cause for the violation of Sec. 2 (a) in relation to Sec. 3 (c) of BP
the brand owner. Apropos, a refiller cannot and ought not to refill branded LPG 33, as amended. Probable cause has been defined as the existence of such facts and
cylinders if it has no written authority from the brand owner. circumstances as would excite belief in a reasonable mind, acting on the facts within
the knowledge of the prosecutor, that the person charged was guilty of the crime for
which he was prosecuted.[66] After all, probable cause need not be based on clear and
convincing evidence of guilt, as the investigating officer acts upon reasonable
beliefprobable cause implies probability of guilt and requires more than bare suspicion
Besides, persuasive are the opinions and pronouncements by the DOE: brand but less than evidence which would justify a conviction.[67]
owners are deemed owners of their duly embossed, stamped and marked LPG
cylinders even if these are possessed by customers or consumers. The Court 23. Superior Commercial Enterprises Inc. vs. Kunnan Enterprises
recognizes this right pursuant to our laws, i.e., Intellectual Property Code of GR No. 169974, April 25, 2010
the Philippines. Thus the issuance by the DOE Circular No. 2000-05-007,[61] the letter-
SUPERIOR COMMERCIAL ENTERPRISES INC. v. KUNNAN ENTERPRISES LTD. attempting to pass off upon the public of the goods and business of one person as the
AND SPORTS CONCEPT & DISTRBUTOR, INC. G.R. No. 16974, 20 April 2010; goods or business of another with the end and probable effect of deceiving the public.
Brion, J. FACTS: Kunnan appointed Superior as its exclusive distributor in the The essential elements of unfair competition are: a. Confusing similarity in the general
Philippines under a Distributorship Agreement which states that Kunnan intends to appearance of the goods; and b. Intent to deceive the public and defraud the
acquire ownership of the Kennex Trademark registered by Superior Commercial in competitor. The True Test of Unfair Competition: Whether the acts of the defendant
the Philippines. Superior Commercial is desirious of being appointed as the sole have the intent of deceiving or are calculated to deceive the ordinary buyer making
distributor of Kunnan products in the Philippines. Superiors President and General his purchases under the ordinary conditions of the particular trade to which the
Manager misled Kunnans Officers into believing that Kunnan could not acquire controversy relates. In the hereby case, no evidence exist showing that Kunnan
trademark rights in the Philippines. Thus, Kunnan decided to assign its applications to ever attempted to pass off goods it sold as those of Superior and that there is no bad
register Pro Kennex as a trademark to Superior, on condition that Superior faith or fraud imputable to Kunnan in using the disputed trademarks. Superior failed
acknowledged that Kunnan was still the real owner of the mark and agreed to return to adduce any evidence to show that Kunnan by the above-cited acts intended to
to it to Kunnan on request. Upon termination of distributorship agreement with deceive the public as to the identity of the goods sold or of the manufacturer of the
Superior, Kunnan appointed Sports Concept as its new distributor. Kunnan caused goods sold.
the publication of a Notice and Warning in the Manila Bulletins issue, stating that (1) it
is the owner of the disputed trademarks; (2) it terminated its Distributorship 24. REPUBLIC GAS CORPORATION, ARNEL U. TY, MARIANTONETTE N.
Agreement with Superior; and (3) it appointed Sports Concept as its exclusive TY,ORLANDO REYES, FERRERSUAZO and ALVIN U. TY; petitioners, v.
distributor. This notice prompted Superior to file its Complaint for Infringement of PETRONCORPORATION, PILIPINAS SHELL PETROLEUMCORPORATION, and
Trademark and Unfair Competition against Kunnan. Prior to and during the SHELL INTERNATIONALPETROLEUM COMPANY LIMITED, respondents.Docket
pendency of the infringement and unfair competition case before the RTC, Kunnan Number:G.R. No. 194062 (2013)Ponente:J. Peralta
filed with the Bureau of Patents, Trademarks and Technology Transfer separate FACTS:
Petitions for the Cancellation of Registration Trademarks involving the Kennex and Respondents Petron Corporation (PETRON) and Pilipinas Shell
Pro Kennex trademarks. Kunna filed the petition on the ground that Superior PetroleumCorporation (SHELL) are two of the largest bulk suppliers and producers of
fraudulently registered and appropriated the disputed trademarks as mere distributor liquefiedpetroleum gas (LPG) in the Philippines.PETRONowns the trademark GASUL
cylinders used for its LPG products. Itis the sole entity authorized to allow refillers and
and not as lawful owner. Both the trial court and the Court of Appeals ruled in favor
distributors to refill, use, sell anddistribute GASUL LPG containers, products and its
of Kunnan. ISSUES: WON Superior, as a distributor, has true ownership over the
trademarks.SHELL, on the other hand, is theauthorized user of SHELLANE cylinders
trademarks. RULING: No. An exclusive distributor does not acquire any proprietary
inits production and distribution of SHELLANELPGs.The casecommencedwhen LPG
interest in the principals trademark and cannot register it, unless the owner has
Dealers Association of which bothrespondentsSHELLand
assigned the right. 1. To establish trademark infringement, the following elements
PETRONbelongreceivedreports that certain entities wereengaged in unauthorized
must be proven: a. The validity of the plaintiffs mark; b. The plaintiffs ownership of
refilling, sale and distribution of LPG cylinders, bearing theirrespectiveLPG cylinder
the mark; and c. The use of the mark or its colorable imitation by the alleged infringer
tradenames.Thus, they filed a complaint before the NBI foraninvestigation
results in likelihood confusion. Based on these elements, the Court found it regardingtheillegal trading of petroleum products.An investigation was thenconducted
immediately obvious that the second element was what the Registration Cancellation which showed that several persons andestablishments, including petitioner Republic
Case decided with finality. On this element depended the validity of the registrations Gas Corporation (REGASCO) weresuspected of violating B.P. 33, or the law against
that, on their own, only gave rise to the presumption of, but was not conclusive on, the illegal trading of petroleum products.Surveillancethenrevealed
issue of ownership. In no certain terms, the appellate court in the Registration thatREGASCOunlawfullyengaged in refilling the sale ofLPG cylinders bearing the
Cancellation Case ruled that Superior was a mere distributor and could not have been marks and trademarks owned byPETRON and SHELL.During thecourse of thetrial,
the owner, and was thus an invalid registrant of the disputed trademarks. The right theCourtof Appeals held the corporationaswell as the individual petitioners guilty of
to register a trademark is based on ownership, and therefore only the owner can the crimes of unfair competition andtrademark infringement; to which the corporate
register it. Gabriel v. Perez provided that a mere distributor of a product bearing a officers deny based on the fact thatREGASCO is a separate juridical entity from that
trademark, even if permitted to use said trademark has no right to and cannot register of the corporate officers.Hence, this petition.
the said trademark. 2. Unfair competition has been defined as the passing off or ISSUE:
(Corporation Law issue) which he learned came from KiaoAn Chinese Drug Store owned by Roberto and
One of the issues raised in this case is whether or notthe individual petitioners marketed as Tienchi Fong Sap Oil Greenstone, and it was there that Pinky bought
namely: ArnelUy, Mari AntonetteUy, Orlando Reyes, FerrerSuazo and Alvin Uy should the items. In their defense, Roberto denied supplying the counterfeit products and
also be held liable for trademark infringement and unfaircompetition, given that they said all his stocks came from Taka; Ling on the other hand averred that the 7 bottles
are separate personalities from that of the REGASCO? were left by an unidentified man at the counter; while Pinky averred that she was
COURT RULING: forced to sign the note. The RTC found the defendants liable for damages by
The Court ruled in favor of respondents PETRON and SHELL, and heldREGASCO committing unfair competition and ordered them to pay moral and exemplary
guilty of trademark infringement and unfair competition.However, with respect to the damages, attorneys fees, and costs of suit. It dismissed the case for trademark
above-stated issue, the Courtalsoheld theindividual petitionersguilty based on the infringement as there was no showing that Greenstone was registered as a
premise thatcorporate officers,who,through their act, default and omission, also trademark at the time of the filing of the case. The RTC refused to reconsider its
committed a crime, may themselves beheld individually liable for the crime.In the decision and the Court of Appeals affirmed the RTC decision hence the defendants,
case at bar, the Court based its proposition on the sole fact thatthatthese corporate petitioners herein elevated the case to the Supreme Court, on the issue of whether
officers(individual petitioners in this case), being in direct control andsupervision in the they should be held liable for damages.
management and conduct of the affairs of theREGASCO, must haveknown or should Issue
have been aware that the corporation itself is engaged in the act ofrefilling LPG The sole issue for the Courts resolution is whether or not the CA correctly upheld
cylinders bearing the marks SHELLANE and GASUL from bothtrademark owners Cos liability for unfair competition.
SHELL and PETRON.The existence of corporate entity does not shield from The Courts ruling:
prosecution thecorporate agents who knowingly and intentionally caused the The petition is without merit.
corporation itself tocommit a crime. (In this case, the crime committed was trademark The Courts review of the present case is via a petition for review under Rule 45 of the
infringement andunfair competition). Further, a corporate officer cannot hide behind Rules of Court, which generally bars any question pertaining to the factual issues
the cloak ofseparate corporate personality of the corporation to escape criminal raised. The well-settled rule is that questions of fact are not reviewable in petitions for
liability.A corporateofficer cannot protect himself behind a corporation where he is the review under Rule 45, subject only to certain exceptions, among them, the lack of
actual, present andefficient actor. sufficient support in evidence of the trial courts judgment or the appellate courts
misapprehension of the adduced facts[1].
Co, who mainly interposes a denial of the acts imputed against him, fails to convince
25. G.R. No. 212705, September 10, 2014, ROBERTO CO, PETITIONER, VS. the Court that any of the exceptions exists so as to warrant a review of the findings of
KENG HUAN JERRY YEUNG AND EMMA YEUNG, RESPONDENTS. facts in this case. Factual findings of the RTC, when affirmed by the CA, are entitled
Unfair Competition Is Defined As The Passing Off (Or Palming Off) Or Attempting To to great weight and respect by the Court and are deemed final and conclusive when
Pass Off Upon The Public Of The Goods Or Business Of One Person As The Goods supported by the evidence on record[2]. The Court finds that both the RTC and the
Or Business Of Another With The End And Probable Effect Of Deceiving The Public CA fully considered the evidence presented by the parties, and have adequately
Facts: explained the legal and evidentiary reasons in concluding that Co committed acts of
KengHuan Jerry (Yeung) is the owner of Greenstone Pharmaceutical, a Chinese unfair competition.
traditional medicine company operating in Hongkong, and produces Greenstone Unfair competition is defined as the passing off (or palming off) or attempting to pass
Medicated Oil Item No. 18, which in turn is exclusively distributed in the Philippines by off upon the public of the goods or business of one person as the goods or business
Taka Trading, owned by Yeungs wife, Emma Yeung. In their civil complaint for of another with the end and probable effect of deceiving the public. This takes place
trademark infringement and unfair competition filed before the RTC of Manila against where the defendant gives his goods the general appearance of the goods of his
Ling Na Lau, her sister Pinky and Roberto (Co), they alleged that the three conspired competitor with the intention of deceiving the public that the goods are those of his
in selling counterfeit Greenstone products to the public, which they discovered when competitor[3].
Jose, Emmas sister bought a bottle of Greenstone from Royal Chinese Drug Store in Here, it has been established that Co conspired with the Laus in the sale/distribution
Binondo owned by Ling Na Lau. When he used the product, it had a different smell of counterfeit Greenstone products to the public, which were even packaged in bottles
and the heat it produced was not as strong as the original. Jerry and his son then identical to that of the original, thereby giving rise to the presumption of fraudulent
proceeded to the drugstore to investigate and found therein 7 bottles of Greenstone, intent[4]. In light of the foregoing definition, it is thus clear that Co, together with the
Laus, committed unfair competition, and should, consequently, be held liable therefor. while it is essential in the latter; and (c) in the former, prior registration of the
To this end, the Court finds the award of P300,000.00 as temperate damages to be trademark is a pre-requisite to the action, while it is not necessary in the latter[6].
appropriate in recognition of the pecuniary loss suffered by Sps. Yeung, albeit its WHEREFORE, the petition is DENIED. The Decision dated September 16, 2013 and
actual amount cannot, from the nature of the case, as it involves damage to goodwill, the Resolution dated May 29, 2014 of the Court of Appeals in CA-G.R. CV No. 93679
be proved with certainty[5]. The awards of moral and exemplary damages, attorneys are hereby AFFIRMED.
fees, and costs of suit are equally sustained for the reasons already fully-explained by
the courts a quo in their decisions. SO ORDERED.

Although liable for unfair competition, the Court deems it apt to clarify that Co was
properly exculpated from the charge of trademark infringement considering that the
registration of the trademark Greenstone essential as it is in a trademark
infringement case was not proven to have existed during the time the acts
complained of were committed, i.e., in May 2000.In this relation, the distinctions
between suits for trademark infringement and unfair competition prove useful: (a) the
former is the unauthorized use of a trademark, whereas the latter is the passing off of
ones goods as those of another; (b) fraudulent intent is unnecessary in the former,