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1. PEARL & DEAN (PHIL.), INC.

vs SHOEMART, INC

Petitioner’s Claim:

Petitioner entered into a contract with the Respondent


for the lease and installation of the light boxes in SM
North Edsa. However, due to construction constraints,
Shoemart, Inc offered as an alternative SM Makati and
SM Cubao.

After Pearl and Dean’s contract was


rescinded, exact copies of its light boxes were installed
in various SM malls. Petitioner sent a letter to
Respondent and its sister company to cease using the
light boxes and to remove them from the malls, and
demanded the discontinued used of the trademark
“Poster Ads”.

Respondent’s Claim:

Pearl and Dean’s copyright registration for its light boxes


and the trademark registration of “Poster Ads” preclude
Shoemart and North Edsa Marketing from using the
same.

ISSUE:

Whether Pearl and Dean’s copyright


registration for its light boxes and the trademark
registration of “Poster Ads” preclude Shoemart and
North Edsa Marketing from using the same.

HELD:

No, Pearl and Dean secured its copyright


under the classification class “o” work. This being so, its
protection extended only to the technical drawings and
not to the light box itself. Pearl and Dean cannot exclude
others from the manufacture, sale and commercial use
over the light boxes on the sole basis of its copyright,
certificated over the technical drawings. It cannot be the
intention of the law that the right of exclusivity would
be granted for a longer time through the simplified
procedure of copyright registration with the National
Library, without the rigor of defending the patentability
of its “invention” before the IPO and the public.

2. PRIBHDAS J. MIRPURI vs. CA, DIRECTOR OF PATENTS


and the BARBIZON CORPORATION

Petitioner’s Claim:

Mirpuri filed his own application for registration of


Escobar's trademark as assignee of the rights and
interests of the Trademark of the business name
“Barbizon” maunfacturer and seller of women’s
undergarments.

Respondent’s Claim:

The application filed by Petitioner was opposed by


private respondent on ground that such business name
“Barbizon International” was already registered under
the Respondent’s name.

Private respondent filed before the Office of Legal


Affairs of the DTI a petition for cancellation of
petitioner's business name.

ISSUE

Whether or not petitioner is liable for trademark


infringement
Held:

The Paris Convention, is a multilateral treaty that seeks


to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service
marks, trade names and indications of source or
appellations of origin, and at the same time aims to
repress unfair competition. It is essentially a compact
among various countries which, as members of the
Union, have pledged to accord to citizens of the other
member countries trademark and other rights
comparable to those accorded their own citizens by
their domestic laws for an effective protection against
unfair competition. Both the Philippines and the
United States of America, are signatories to the
Convention.

Private respondent anchors its cause of action on the


first paragraph of Article 6bis of the Paris Convention,
said Article governing protection of well-known
trademarks.

3. CHING V. SALINAS, SR. (G.R. NO. 161295)

Petitioner’s Claim:

Petitioner’s request to the NBI to apprehend and


prosecute illegal manufacturers of his work led to the
issuance of search warrants against respondent Salinas,
alleged to be reproducing and distributing said models
in violation of the IP Code.

Repsondent’s Claim:
Respondent moved to quash the warrants on the
ground that petitioner’s work is not artistic in nature
and is a proper subject of a patent, not copyright.
Petitioner insists that the IP Code protects a work from
the moment of its creation regardless of its nature or
purpose. The trial court quashed the warrants.
Petitioner argues that the copyright certificates over the
model are prima facie evidence of its validity. CA
affirmed the trial court’s decision.

Issues:
Whether or not petitioner’s model is an artistic work
subject to copyright protection.

Held:
(1) NO. As gleaned from the specifications appended to
the application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion are merely
utility models. hey are not intellectual creations in the
literary and artistic domain, or works of applied art.

They are certainly not ornamental designs or one


having decorative quality or value. Indeed, while works
of applied art, original intellectual, literary and artistic
works are copyrightable, useful articles and works of
industrial design are not. In this case, the bushing and
cushion are not works of art. They are, as the
petitioner himself admitted, utility models which may
be the subject of a patent.

4. AIR PHILIPPINES CORPORATION VS PENNSWELL

Petitioner’s Claim:

Alleges that the respondent defrauded the former for its


previous sale of four items. Said items were
misrepresented by respondent as belonging to a new
line, but were in truth and in fact, identical with
products petitioner had previously purchased from
respondent.

Respondent’s Claim:
Petitioner is a domestic corporation engaged in the
business of air transportation services. Respondent
Pennswell Inc was organized to engage in the business
of manufacturing and selling industrial chemicals,
solvents and special lubricants.

Respondent delivered and sold to petitioner sundry


goods in trade. Under the contracts, petitioner’s
obligation until the amount would be fully paid. For
failure to pay comply with its obligations unders said
contract.

ISSUE:
WON the the chemical components or ingredients of
respondent’s products are trade secrets or industrial
secret that are not subject to compulsory disclosure.

Held:
A trade secret is defined as a plan or process, tool,
mechanism or compound known only to its owner and
those of his employees to whom it is necessary to
confide it.

The chemical composition, formulation, and ingredients


of respondent’s special lubricants are trade secrets
within the contemplation of the law. Jurisprudence has
consistently acknowledged that the private character of
trade secrets-there is a privilege not to disclose one’s
trade secret.

5. Elidad C. Kho vs. Court of Appeals, Summerville


General Merchandising Company

Petitioner’s Claim:
Petitioner‘s allegations are that they are doing business
under the name and style of KEC Cosmetics Laboratory,
registered owner of Chin Chun Su and oval facial cream
container/case, and alleges that she also has patent
rights and that Summerville advertised and sold
petitioner’s cream products resulting in the decline in
the petitioner’s business sales and income and violated
the patents of the petitioner.

Respondent’s Claim:
The respondents, alleged as their defense that the said
Taiwanese manufacturing company authorized
Summerville to register its trade name Chin Chun Cu
Medicated Cream with the Philippine Patent office and
Other appropriate governmental agencies.

ISSUE:
Whether or not Kho has the sole right using the package
of Chin Chun Su products

RULING:
Petitioner has no right to support her claim for the
exclusive use of the subject trade name and its
container. The name and container of a beauty cream
product are proper subjects of a trademark in as much
as the same falls squarely within its definition. In order
to be entitled to exclusively use the same in the sale of
the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent
registration of the name and container would not
guarantee her the right to exclusive use of the same for
the reason that they are not appropriate subjects of
the said intellectual rights.

6. BERRIS AGRICULTURAL CO., INC. vs. NORVY


ABYADANG
FACTS:

Petitioner’s Claim:
Berris Agricultural Co., Inc. filed an opposition against
the trademark citing that it is confusingly similar with
their trademark, "D-10 80 WP" which is also used for
Fungicide also with the same active ingredient.

Respondent’s Claim:
Abyadang filed a trademark application with the IPO for
the mark "NS D-10 PLUS" for use in connection with
Fungicide.

The IPO ruled in favor of Berries but on appeal with the


CA, the CA ruled in favor of Abyadang.
ISSUE: Whether there is confusing similarity between
the trademarks.

RULING:

Yes. The SC found that both products have the


component D-10 as their ingredient and that it is the
dominant feature in both their marks. Applying the
Dominancy Test, Abyadang's product is similar to Berris'
and that confusion may likely to occur especially that
both in the same type of goods. Also using the Holistic
Test, it was more obvious that there is likelihood of
confusion in their packaging and color schemes of the
marks. The SC states that buyers would think that
Abyadang's product is an upgrade of Berris'.

7. ANGELITA MANZANO VS COURT OF APPEALS

Petitioner’s Claim:
Petitioner alleged that the utility model covered by the
letters patent was not inventive, new, or useful, the
specification did not comply with the requirements of
R.A. No. 165, that respondent was not the original, true,
and actual inventor nor did she derive her rights from
the same, and that respondent was guilty of fraud or
misrepresentation in applying for the letters patent.

Respondent’s Claim:
Respondent alleged that they are the owner of the
Letters Patent for a gas burner registered in the name of
private respondent Madolaria who subsequently
assigned the
same to private respondent United Foundry.

ISSUE: WON the CA erred in upholding the decision of


the Director of Patents.

RULING: In issuing Letters Patent to respondent


Madolaria for an LPG Burner, the PPO found her
invention novel and patentable. The issuance of such
patent creates a presumption which yields only to clear
and cogent evidence that the patentee was the original
and first inventor. The burden of proving want of
novelty is on him who avers it and the burden is a heavy
one which is met only by clear and satisfactory proof
which overcomes every reasonable doubt.

As found by the Director of Patents, the standard of


evidence sufficient to overcome the presumption of
legality of the issuance of letters patent to respondent
Madolaria was not legally met by petitioner in her action
for the cancellation of the patent.

8. EMERALD GARMENT MANUFACTURING


CORPORATION, petitioner, vs. HON. COURT OF
APPEALS, BUREAU OF PATENTS

Plaintiff’s Contention:
H.D. Lee Co., Inc., a foreign corporation organized under
the laws of Delaware, U.S.A., filed with the Bureau of
Patents, Trademarks & Technology Transfer (BPTTT) a
Petition for Cancellation of Registration No. SR 5054
(Supplemental Register) for the trademark "STYLISTIC
MR. LEE" used on skirts, jeans, blouses, socks, briefs,
jackets, jogging suits, dresses, shorts, shirts and lingerie
under Class 25, issued on 27 October 1980 in the name
of petitioner Emerald Garment Manufacturing
Corporation, a domestic corporation organized and
existing under Philippine laws.

Defendant’s Contention:.
Emerald Garment contended that its trademark was
entirely and unmistakably different from that of private
respondent and that its certificate of registration was
legally and validly granted.

RULING: The essential element of infringement is


colorable imitation. This term has been defined as "such
a close or ingenious imitation as to be calculated to
deceive ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually
gives, and to cause him to purchase the one supposing it
to be the other." Colorable imitation does not mean
such similitude as amounts to identity. Nor does it
require that all the details be literally copied. Colorable
imitation refers to such similarity in form, content,
words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of
the other mark or tradename in their over-all
presentation or in their essential, substantive and
distinctive parts as would likely mislead or confuse
persons in the ordinary course of purchasing the
genuine article.

9. SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT


V. DEVELOPERS GROUP OF COMPANIES (G.R. NO.
159938)

Petitioner’s Claim:
Petitioner moved to cancel the registration of the mark
on the ground that it was illegally and fraudulently
obtained and appropriated by respondents. Petitioner
also moved to register the mark and logo in its own
name. It argued that respondent had no right to apply
for the registration because it did not have prior actual
commercial use thereof.
Respondent’s claim:

Respondent DGCI applied for and was granted


registration of the ‘Shangri-La’ mark and ‘S’ logo in its
restaurant business. And filed before the trial court a
complaint for infringement against petitioner alleging
that DGCI had been the prior exclusive user and the
registered owner in the Philippines of said mark and
logo.
Issue:

Whether or not respondent’s prior use of the mark is a


requirement for its registration.

Held:
Trademark is a creation of use and therefore actual use
is a pre-requisite to exclusive ownership and its
registration with the Philippine Patent Office is a mere
administrative confirmation of the existence of such
right.

While the petitioners may not have qualified under


Section 2 of R.A. No. 166 as a registrant, neither did
respondent DGCI, since the latter also failed to fulfill the
2-month actual use requirement.

10. In-N-Out Burger , Inc. vs. Sehwani Inc., et. al

Petitioner’s Claim:
Petitioner argued that it did not commit any
infringement thus, it did not accede to In-N-Out
Burger’s demand but it expressed its willingness to
surrender its registration for a consideration.

Respondent’s Claim:
Respondent filed trademark and service mark
applications with the Bureau of Trademarks for the
“IN-N-OUT” and “IN-N-OUT Burger & Arrow Design. In
2000, In-N-Out Burger found out that Sehwani,
Incorporated had already obtained Trademark
Registration for the mark “IN N OUT”.

Issue:

Whether or not there was unfair competition.

Held:

The evidence on record shows that Sehwani Inc. and


Benita Frites were not using their registered trademark
but that of In-n-Out Burger. The intention to deceive
may be inferred from the similarity of the goods as
packed and offered for sale, and, thus, an action will lie
to restrain unfair competition. The respondents’
frauduulent intention to deceive purchasers is also
apparent in their use of the In-N-Out Burger in business
signages.

The essential elements of an action for unfair


competition are (1) confusing similarity in the general
appearance of the goods and (2) intent to deceive the
public and defraud a competitor.

11. ETEPHA V. DIRECTOR OF PATENTS

Petitioner’s Claim:
Petitioner Etepha, owner of the trademark ‘Pertussin’
placed also on preparation for cough treatment,
objected claiming that it will be damaged since the 2
marks are confusingly similar.

Respondent’s Claim:
Respondent Westmont Pharmaceuticals, an American
corporation, sought registration of trademark ‘Atussin’
placed on its medicinal preparation for the treatment of
coughs. The Director of Patents gave due course to
the application.

Issue:

Whether or not petitioner’s trademark is registrable.

Ruling:

That the word “tussin” figures as a component of both


trademarks is nothing to wonder at. The Director of
Patents aptly observes that it is “the common practice in
the drug and pharmaceutical industries to ‘fabricate’
marks by using syllables or words suggestive of the
ailments for which they are intended and adding thereto
distinctive prefixes or suffixes”.

“Tussin” is merely descriptive; it is generic; it furnishes


to the buyer no indication of the origin of the goods; it is
open for appropriation by anyone. It is accordingly
barred from registration as trademark.

12. CONVERSE RUBBER CORPORATION


and EDWARDSON MANUFACTURING
CORPORATION, vs. JACINTO RUBBER &
PLASTICS CO., INC.

Petitioner’s Contention:
Plaintiffs contend that "mCustombuilt" shoes
are Identical in design and General
appearance to "Chuck Taylor" and, claiming
prior Identification of "Chuck Taylor" in the
mind of the buying public in the Philippines,
they contend that defendants are guilty of
unfair competition by selling "Custombuilt" of
the design and with the general appearance of
"Chuck Taylor". The design and appearance of
both products, as shown by the samples and
photographs of both products, are not
disputed.

Respondent’s Contention:
Defendants insist that there is no similarity in
design and general appearance between
"Custombuilt" and "Chuck Taylor", pointing
out that "Custombuilt" is readily Identifiable
by the tradename "Custombuilt" appearing on
,lthe ankle patch, the heel patch, and on the
sole.

ISSUE:
WHETHER DEFENDAT IS GUILTY OF UNFAIR
COMPETITION WHEN DEFENDANT JACINTO
RUBBER & PLASTICS CO., INC.,
MANUFACTURED AND SOLD RUBBER-SOLED
CANVASS SHOES UNDER ITS REGISTERED
TRADE MARK "CUSTOMBUILT”

HELD:
From said examination, We find the shoes
manufactured by defendants to contain, as
found by the trial court, practically all the
features of those of the plaintiff Converse
Rubber Corporation and manufactured, sold or
marketed by plaintiff Edwardson
Manufacturing Corporation, except for heir
respective brands, of course. We fully agree
with the trial court that "the respective
designs, shapes, the colors of the ankle
patches, the bands, the toe patch and the
soles of the two products are exactly the same
... (such that) at a distance of a few meters, it
is impossible to distinguish "Custombuilt" from
"Chuck Taylor".

13. MCDONALD’S CORPORATION V. L.C. BIG


MAK BURGER (G.R. NO. 143993)

Petitioner’s Claim:

Petitioner McDonald’s, an American


corporation operating a global chain of
fast-food restaurants, is the owner of the ‘Big
Mac’ mark for its double-decker hamburger
sandwich here and in the US. Petitioner
opposed on the ground that ‘Big Mak’ was a
colorable imitation of its registered ‘Big Mac’
mark for the same food products.

Respondent’s claim:
L.C., a domestic corporation which operates
fast-food outlets and snack vans applied for
the registration of the ‘Big Mak’ mark for its
hamburger sandwiches. Respondents denied
there is colorable imitation and argued that
petitioner cannot exclusively appropriate the
mark ‘Big Mac’ because the word ‘Big’ is a
generic and descriptive term.

Issue:

Whether or not the word ‘Big Mac’ can be


exclusively appropriated by petitioner;

Held:

A mark is valid if it is “distinctive” and thus not


barred from registration under Section 4 of RA
166. However, once registered, not only the
mark’s validity but also the registrant’s
ownership of the mark is prima facie
presumed. The “Big Mac” mark, which should
be treated in its entirety and not dissected
word for word, is neither generic nor
descriptive. Generic marks are commonly
used as the name or description of a kind of
goods, such as “Lite” for beer or “Chocolate
Fudge” for chocolate soda drink. Descriptive
marks, on the other hand, convey the
characteristics, functions, qualities or
ingredients of a product to one who has never
seen it or does not know it exists, such as
“Arthriticare” for arthritis medication. On the
contrary, “Big Mac” falls under the class of
fanciful or arbitrary marks as it bears no
logical relation to the actual characteristics of
the product it represents. As such, it is highly
distinctive and thus valid. Significantly, the
trademark “Little Debbie” for snack cakes was
found arbitrary or fanciful.

14.

Petitioner’s Claim:
Levi Strauss (Phils.), Inc. claimed that a “confusing
similarity” could be noted between LEVI’s jeans and
Tony Lim’s LIVE’S denim jeans and pants.

Respondent’s Claim:
Tony Lim was engaged in the manufacture, sale, and
distribution of various denim jeans and pants under the
brand name “LIVE’S.”

Issue: WON there is unfair competition.

Held:
The SC reiterated its ruling in Emerald Garment
Manufacturing Corporation v. CA. The Court explained
that since maong pants or jeans are not inexpensive, the
casual buyer is more cautious and discerning and would
prefer to mull over his purchase, making confusion and
deception less likely. Where the Court held that in
resolving cases of infringement and unfair competition,
the courts should take into consideration several factors
which would affect its conclusion, to wit: the age,
training and education of the usual purchaser, the
nature and cost of the article, whether the article is
bought for immediate consumption and also the
conditions under which it is usually purchased.

15. ANA L. ANG vs. TORIBIO TEODORO

Petitioner’s Claim:
Petitioner registered the same trademark
“Ang Tibay” for pants and shirts in 1932.
Petitioner now assails the validity of
respondent’s trademark. He contends that the
phrase “Ang Tibay” is a descriptive term and
therefore, cannot be subject of a trademark.
Petitioner claims also that respondent
committed infringement with regard to the
trademark “Ang Tibay”.

Respondent’s Claim:
Toribio Teodoro has continuously used “Ang
Tibay” both as a trademark and tradename, in
the manufacture and sale of slippers, shoes
and indoor baseballs since 1910. He formally
registered it as trademark on September 1915
and as a tradename in 1933.

ISSUE: Whether the trademark “Ang Tibay” is


registrable

HELD: “Ang Tibay” is not a descriptive term


within the meaning of the Trademark Law but
rather a fanciful or coined phrase which may
properly be appropriated as a trademark. And
it must be noted that it was the respondent
who first used the term “Ang Tibay” and in fact
it has already acquired a secondary meaning
in a proprietary connotation. With regard to
the infringement, it is proper to say that there
is no infringement as the goods sold by the
parties are not the same. In fact, it is more
correct to conclude that the selection by
petitioner of the same trademark for pants
and shirts was motivated by a desire to get a
free ride or the reputation and selling power it
has acquired at the expense of the
respondent.

16. ASIA BREWERY, INC. vs. CA


Petitioner’s Claim:
Petitioner filed a motion to dismiss SMC's complaint
because ABI "has not committed trademark
infringement or unfair competition against" SMC
Respondent’s Claim:
San Miguel Corporation (SMC) filed a complaint
against Asia Brewery Inc. (ABI) for infringement of
trademark and unfair competition on account of the
latter's BEER PALE PILSEN or BEER NA BEER
product which has been competing with SMC's SAN
MIGUEL PALE PILSEN for a share of the local beer
market.

Issue:

Are the words PALE PILSEN as part of ABI’s


trademark constitute infringement of SMC’s
trademark?

Held:

No. It does not constitute an infringement as the


words PALE PILSEN, which are part of ABI’s
trademark, are generic words descriptive of the
color (“pale“), of a type of beer (“pilsen”), which is a
light bohemian beer with a strong hops flavor that
originated in the City of Pilsen, Czechislovakia and
became famous in the Middle Ages.

The Supreme Court further said that the words "pale


pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered
trademark. No one may appropriate generic or
descriptive words. They belong to the public
domain.

17. FRUIT OF THE LOOM V. CA

Petitioner’s Claim:

Petitioner Fruit of the Loom, an American corporation, is


the registrant of the trademark ‘Fruit of the Loom’
covering goods such as underwear and other textile
fabrics. Alleging respondent’s mark and hang tag is
confusingly similar with its own, petitioner filed a
complaint for trademark infringement and unfair
competition.

Respondent’s Claim:
Respondent General Garments on the other hand, is a
domestic corporation and a registrant of the trademark
‘Fruit for Eve’ covering garments similar to petitioner
and denied that committed any infringement.

Issue:

Whether or not respondent’s mark and hang tag is


confusingly similar with that of petitioner.

Ruling:

There is no dominant feature of both trademarks is the


word FRUIT for even in the printing of the trademark in
both hang tags, the word FRUIT is not at all made
dominant over the other words. The designs differ. The
trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do
not resemble each other as to confuse or deceive an
ordinary purchaser. WE hold that the trademarks FRUIT
OF THE LOOM and FRUIT FOR EVE do not resemble each
other as to confuse or deceive an ordinary purchaser.

18. DEL MONTE VS. CA

Petitioner’s Claim:
Del Monte authorized Philpack to register with the
Philippine Patent Office the Del Monte catsup bottle
configuration, for which it was granted Certificate of
Trademark Registration by the Philippine Patent Office
under the Supplemental Register. Del Monte granted
Philpack the right to manufacture, distribute and sell in
the Philippines various agricultural products, including
catsup, under the Del Monte trademark and logo.Del
Monte also obtained two registration certificates for its
trademark “DEL MONTE” and its logo.

Respondent’s Claim:
That it had long ceased to use the Del Monte bottle and
that
its logo was substantially different from the Del Monte
logo and would not confuse the buying public to the
detriment of the petitioners.

Issue:
Whether or not Sunshine Sauce is guilty of infringement
for having used the Del Monte bottle.

Held:

No, it is not guilty of infringement.


Sunshine Sauce is not guilty of infringement for having
used the Del Monte bottle. The reason is that the
configuration of the said bottle was merely registered in
the Supplemental Register. Registration only in the
Supplemental Register means absence of the following
presumptions: validity of the trademark, the registrant’s
ownership of the mark and his right to its exclusive use.

19. LA CHEMISE LACOSTE V. FERNANDEZ

Petitioner’s Claim:

Petitioner La Chemise Lacoste is a foreign corporation


and the actual owner of the trademarks ‘Lacoste,’
‘Chemise Lacoste,’ and ‘Crocodile Device’ used on
clothing and other goods that are sold in many parts of
the world. petitioner applied for the registration of its
mark ‘Crocodile Device’ and ‘Lacoste’

Respondent’s Claim:
Herein respondent Hemadas & Co., a domestic firm,
applied and was granted registration of the mark
‘Chemise Lacoste and Crocodile Device’ for its garment
products and opposed Petitioner’s application.
Issue:

Whether or not petitioner’s trademark is a well-known


mark protected under the Paris Convention.

Held:
In upholding the right of the petitioner to maintain the
present suit before our courts for unfair competition or
infringement of trademarks of a foreign corporation, we
are moreover recognizing our duties and the rights of
foreign states under the Paris Convention for the
Protection of Industrial Property to which the
Philippines and France are parties.

20.

21. COFFEE PARTNERS V. SAN FRANCISCO COFFEE &


ROASTERY

Petitioner’s Claim:
Petitioner Coffee Partners entered into a franchise
agreement with Coffee Partners Ltd. to operate coffee
shops in the country using the trademark ‘San Francisco
Coffee.’ It contended no infringement would arise
because respondent’s tradename was not registered.

Respondent’s Claim:
Respondent filed an infringement and/or unfair
competition complaint against petitioner alleging that
the latter was about to open a coffee shop under the
name ‘San Francisco Coffee’ causing confusion in the
minds of the public as it bore a similar name and is
engaged also in selling of coffee.

Issue:

Whether or not petitioner’s trademark would infringe


respondent’s tradename.

Held:

It is the likelihood of confusion that is the gravamen of


infringement. Applying the dominancy test or the
holistic test, petitioner’s “SAN FRANCISCO COFFEE”
trademark is a clear infringement of respondent’s “SAN
FRANCISCO COFFEE & ROASTERY, INC.” trade name. The
descriptive words “SAN FRANCISCO COFFEE” are
precisely the dominant features of respondent’s trade
name. Petitioner and respondent are engaged in the
same business of selling coffee, whether wholesale or
retail. The likelihood of confusion is higher in cases
where the business of one corporation is the same or
substantially the same as that of another corporation. In
this case, the consuming public will likely be confused as
to the source of the coffee being sold at petitioner’s
coffee shops.

22.

ROMA DRUG v. RTC.


Petitioner’s Claim:
challenged the constitutionality of the law
on Special Law on Counterfeit Drugs (SLCD)
regarding the distribution of their medicine that
were considered counterfeit although they only
bought it directly and not from SmithKline.

Respondent’s Claim:
Roma Drug was raided by the NBI and BFAD and
seized several important medicines. It appears that
Roma Drug is one of six drug stores which were
raided on or around the same time upon the request
of SmithKline which was the duly registered
corporation to distribute such medicines. The
medicines of Roma Drug was purchased directly
from abroad and not through SmithKline.

ISSUE: Whether the contention of Roma Drug is


correct.

He;d:
Section 7 of Rep. Act No. 9502 unequivocally grants
third persons the right to import drugs or medicines
whose patent were registered in the Philippines by
the owner of the product. The unqualified right of
private third parties such as petitioner to import or
possess “unregistered imported drugs” in the
Philippines is further confirmed by the
“Implementing Rules to Republic Act No. 9502”.

23. PEDRO SERRANO LAKTAW v. MAMERTO PAGLINAWAN


Petitioner’s Claim:

The Plaintiff alleged tha the defendant, Mamerto Paglinawan, without consent
of the plaintiff, reproduced the said literary work, improperly copied the greater part
thereof in the work published by him and entitled Diccionariong Kastila-Tagalog
(Spanish- Tagalog Dictionary).

Respondent’s Claim:

Paglinawan, in his answer denied generally each and every allegation of the
complaint and prayed the court to absolve him from complaint.

Issue:
Whether or not the defendant, Mamerto Paglinawan, violated Article 7 of the
Law of January 10, 1879 on Intellectual Property

Held:
Yes. The defendant, Mamerto Paglinawan violated Article 7 of the Law of
January 10, 1879 on Intellectual Property. The said article states that, “Nobody may
reproduce another person’s work without the owner’s consent, even merely to annotate
or add anything to it, or improve any edition thereof”. It is not necessary that a work
should be an improper copy of another work previously published.
The court makes no special pronouncement as to the costs of this instance.

24. PHILIPPINE EDUCATION COMPANY, INC. vs. VICENTE SOTTO and


V.R. ALINDADA

Petitoner’s Claim:
Petitioner’s alleged that, the proprietor and publisher of a weekly newspaper
known as The Independent and Alindada, the editor, allegedly appropriated,
copied and published the article unlawfully and without the knowledge and
consent of PECI in The Independent of December 24th and 31st, 1927, without
citing the PECI as source. As a result, PECI sued Sotto and Alindada for
damages.

Respondent’s Claim:
However, despite the letter, the publication of the article was continued.
Alindada advised PECI that it had not registered such right under the Copyright
Law. As a result, PECI sued Sotto and Alindada for damages.

ISSUE:
WON the article may be reproduced taking into consideration that PECI
has not registered the same in its name and just served a notice that it reserved
the rights to publication.
Held:
THE DEFENDANT SHOULD CITE THE SOURCE OF THE
REPRODUCTION.

In the case at bar, PECI did not give notice of its copyright for the simple
reason that it did not have one but it did notify Sotto and Alindada that in the
publication of the article “we reserved all right,” which was legally equivalent to
a notice of copyright. In addition, the latter would have had the legal right to
publish the article by giving the source of the reproduction to which it failed to. If
it had been the purpose of and intent of the Legislature to limit the reproduction
of news items, editorial paragraphs and articles in periodicals to those which
have a notice of copyright only, it never would have said if “they contain a notice
that their publication is reserved.”

25.

26. FILIPINO SOCIETY OF COMPOSERS, AUT


HORS AND PUBLISHERS, INC.,vs. BENJAMIN
TAN

Petitioner’s Claim:

Plaintiff-appellant:*is the owner of certain musical


compositions among which are the songs entitled: "
Dahil SaIyo", "Sapagkat Ikaw Ay Akin," "Sapagkat
Kami Ay Tao Lamang" and "The Nearness Of Yo
u."*filed a complaint with the lower court for infrin
gement of copyright against defendant-appelleefor
allowing the playing in defendant-appellee's restaur
ant of said songs copyrighted in thename of the for
mer.

Defendant’s Claim:
Defendant-appellee,*countered that the complaint s
tates no cause of action. While not denying the play
ing of saidcopyrighted compositions in his establis
hment, appellee maintains that the mere singing an
dplaying of songs and popular tunes even if they ar
e copyrighted do not constitute aninfringement und
er the provisions of Section 3 of the Copyright Law
.

ISSUE: whether or not the playing and signing of


musical compositions which have been
copyrighted under the provisions of the Copyright
Law (Act 3134)

Held: It has been held that "The playing of music in


dine and dance establishment whichwas paid for b
y the public in purchases of food and drink constitu
ted "performance for profit"within a Copyright La
w." Thus, it has been explained that while it is poss
ible in suchestablishments for the patrons to purcha
se their food and drinks and at the same time dance
tothe music of the orchestra, the music is furnished
and used by the orchestra for the purpose of induci
ng the public to patronize the establishment and pa
y for the entertainment in the purchaseof food and
drinks.
27. 20TH CENTURY FOX FILM
CORPORATION, vs.COURT OF APPEALS

Petitioner’s Claim:
it alleged in its letter-complaint that certain
videotape outlets all over Metro Manila are
engaged in the unauthorized sale and renting
out of copyrighted films in videotape form which
constitute a flagrant violation of Presidential
Decree No. 49 (otherwise known as the Decree
on the Protection of Intellectual Property).
Respondent’s Claim:
acting on a motion to lift search warrants and
release seized properties filed by the private
respondents, the lower court issued an order
lifting the three (3) search warrants issued
earlier against the private respondents by the
court on the ground that NBI failed to deliver to
the Court those listed articles in the returns of
the 3 search warrants, and those articles could
not be a basis of any criminal prosecution. It
also ordered the NBI to return the seized
articles.
ISSUE:
Whether or not the judge properly lifted the
search warrants he issued earlier upon the
application of the National Bureau of
Investigation on the basis of the complaint filed
by the petitioner.

Held:
The essence of a copyright infringement is the
similarity or at least substantial similarity of the
purported pirated works to the copyrighted
work. Hence, the applicant must present to
the court the copyrighted films to compare
them with the purchased evidence of the
video tapes allegedly pirated to determine
whether the latter is an unauthorized
reproduction of the former. This linkage of
the copyrighted films to the pirated films must
be established to satisfy the requirements of
probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve
as basis for the issuance of a search warrant.

28. UNITED FEATURE SYNDICATE, INC., vs.


MUNSINGWEAR CREATION
MANUFACTURING COMPANY

Petitioner’s claim:
Petitioner is asking for the cancellation of the
registration of trademark CHARLIE BROWN
(Registration No. SR. 4224) in the name of
respondent MUNSINGWEAR, alleging that
petitioner is damaged by the registration of the
trademark CHARLIE BROWN of T-Shirts under
Class 25

Respondent¶s claim:
-It uses, the trademark "CHARLIE BROWN" &
"DEVICE" on children's wear such as
T-shirts,undershirts, sweaters, brief and sandos, in
class 25; whereas "CHARLIE BROWN" is used
onlyby petitioner as character, in a pictorial
illustration used in a comic strip appearing in
newspapers and magazines.

Issue:

WON Petitioner is entitled with protection under


trademark law.
S.C. Ruling:

The petitioner is impressed with merit.Since the


name "CHARLIE BROWN" and its pictorial
representation were covered by acopyright
registration way back in 1950 the same are entitled
to protection under PD No. 49,otherwise known as
the "Decree on Intellectual Property".

Aside from its copyright registration, petitioner is


also the owner of several trademarkregistrations and
application for the name and likeness of "CHARLIE
BROWN" which is the dulyregistered trademark
and copyright of petitioner United Feature
Syndicate Inc. as early as 1957and additionally also
as TV SPECIALS featuring the "PEANUTS"
characters "CHARLIEBROWN´.It is undeniable
from the records that petitioner is the actual owner
of said trademark due to itsprior registration with the
Patent's Office.
29.
30.Columbia Pictures Entertainment, Inc. vs.
Honorable Court Of Appeals
Petitioner’s Claim:
Complainants lodged a formal complaint
with the National Bureau of Investigation
for violation of PD No. 49, (otherwise
known as the Decree on the Protection of
Intellectual Property) as amended, and
sought its assistance in their anti-film
piracy drive.

Respondent’s Claim:
A Motion To Lift the Order of Search
Warrant was filed but was later denied for
lack of merit.
It is undisputed that the master tapes of
the copyrighted films from which the
pirated films were allegedly copies (sic),
were never presented in the proceedings
for the issuance of the search warrants in
question.

Issue:

Whether or not the films in question


which were never registered in the
National Library are protected by PD 49

Ruling:

Yes. PD 49 as amended, does not require


registration and deposit for a creator to
be able to file an action for infringement
of his rights. These conditions are merely
pre-requisites to an action for damages.
So, as long as the proscribed acts are
shown to exist, an action for infringement
may be initiated.

Accordingly, the certifications from the


Copyright Section of the National Library,
presented as evidence by private
respondents to show non-registration of
some of the films of petitioners, assume
no evidentiary weight or significance,
whatsoever.

31. Columbia Pictures, Inc. vs. Court Of


Appeals, G.R. No. 110318, August 28, 1996.
Respondent’s contention:

Columbia et al, being foreign corporations, should


have such license to be able to maintain an action in
Philippine courts.
Sunshine point to the fact that Columbia et al are
the copyright owners or owners of exclusive rights
of distribution in the Philippines of copyrighted
motion pictures or films, and also to the
appointment of Atty. Rico V. Domingo as their
attorney-in-fact, as being constitutive of “doing
business in the Philippines”.

Petitioner’s contention:
Columbia et al denied that they are doing
business in the Philippines and contend that
Sunshine have not adduced evidence to prove that
petitioners are doing such business here, as would
require them to be licensed by the Securities and
Exchange Commission.
Issue: Whether or not Columbia et al were “doing
business” in the Philippines, thus, needs to be
licensed before having a legal standing in Philippine
courts.

Held: No, foreign film corporations do not transact


or do business in the Philippines and, therefore, do
not need to be licensed in order to take recourse to
our courts.
As acts constitutive of “doing business,” the fact
that Columbia et al are admittedly copyright owners
or owners of exclusive distribution rights in the
Philippines of motion pictures or films does not
convert such ownership into an indicium of doing
business which would require them to obtain a
license before they can sue upon a cause of action in
local courts.

32. Pacita I. Habana vs. Felicidad C. Robles

Petitioner’s Claim:
They discovered that the book of Robles
was strikingly similar to the contents,
scheme of presentation, illustrations and
illustrative examples of CET. They then
sued Robles and her publisher (Goodwill
Trading Co.) for infringement and/or
unfair competition with damages.

Respondent’s Claim:

Robles, in her defense, alleged that her


sources were from foreign books; that in
their field, similarity in styles cannot be
avoided since they come from the same
background and orientation.

ISSUE: Whether or not the Court of


Appeals is correct.

HELD: A perusal of the records yields


several pages of the book DEP that are
similar if not identical with the text of
CET. In several other pages the
treatment and manner of presentation
of the topics of DEP are similar if not a
rehash of that contained in CET. The
similarities in examples and material
contents are so obviously present in this
case.

33. Francisco G. Joaquin, Jr. vs. Honorable


Franklin Drilon
Petitioner’s Claim:

BJ Productions Inc. (BJPI) was the holder


of copyright over the show Rhoda and
Me. It holds rights over the show’s format
and style of presentation. In 1991,
BJPI’s president Francisco Joaquin saw
on TV – RPN 9’s show It’s a Date, a
show which is basically the same
as Rhoda and Me. He eventually sued
Gabriel Zosa, the manager of the
show It’s a Date.

Respondent’s Claim:
Zosa later sought a review of the
prosecutor’s resolution before the
Secretary of Justice (Franklin Drilon).
Drilon reversed the findings of the fiscal
and directed him to dismiss the case
against Zosa.

ISSUE: Whether or not the order of


Drilon finding no probable cause is valid.

HELD: The essence of copyright


infringement is the copying, in whole or
in part, of copyrightable materials as
defined and enumerated in Section 2 of
PD. No. 49. Ideas, concepts, formats, or
schemes in their abstract form clearly do
not fall within the class of works or
materials susceptible of copyright
registration as provided in PD. No.
49. What is covered by BJPI’s copyright
is the specific episodes of the show Rhoda
and Me.
34.MANLY SPORTWEAR
MANUFACTURING V. DADODETTE
ENTERPRISES

Petitioner’s Claim:

That respondent Dadodette Enterprises were


in possession of sporting goods or articles, the
copyright of which belonged to petitioner
Manly, the NBI applied for search warrant
before the trial court which ruled on its
issuance.

Respondent’s Claim:

The respondent moved to quash the warrant


on the ground that petitioner’s goods are
ordinary and not among the works protected
under the IP Code.

Issue:
Whether or not the certificates of registration
issued to petitioner is proof of its ownership.

Held:

Besides, no copyright accrues in favor of


MANLY despite issuance of the certificates of
registration and deposit pursuant to Section 2,
Rule 7 of the Copyrights Safeguards and
Regulations which states:

Sec. 2 Effects of Registration and Deposit of


Work. The registration and deposit of the work
is purely for recording the date of registration
and deposit of the work and shall not be
conclusive as to copyright ownership or the
term of the copyrights or the rights of the
copyright owner, including neighboring rights.

35. ABS-CBN V. PHILIPPINE MULTI-MEDIA


SYSTEM
Petitioner’s Claim:
Petitioner ABS-CBN, a broadcasting corporation,
filed a complaint against respondent PMSI alleging
that the latter’s unauthorized rebroadcasting of
Channels 2 and 23 infringed on its broadcasting
rights and copyright.
Respondent’s Claim:
PMSI posits that it was granted a franchise to
operate a digital direct-to-home satellite service and
that the rebroadcasting was in accordance with the
NTC memo to carry television signals of authorized
television broadcast stations, which includes
petitioner’s programs.
Issue:
Whether or not petitioner’s broadcasting rights and
copyright are infringed.

Held:
The Director-General of the IPO correctly found
that PMSI is not engaged in rebroadcasting and thus
cannot be considered to have infringed ABS-CBN’s
broadcasting rights and copyright.
ABS-CBN creates and transmits its own signals;
PMSI merely carries such signals which the viewers
receive in its unaltered form. PMSI does not
produce, select, or determine the programs to be
shown in Channels 2 and 23. Clearly, PMSI does not
perform the functions of a broadcasting
organization; thus, it cannot be said that it is
engaged in rebroadcasting Channels 2 and 23.