Intellectual Property

Maguan v CA, Luchan

Maguan s a patent hoder of powder puffs. Pettoner nformed prvate respondent
that the powder puffs the atter s manufacturng and seng to varous enterprses
partcuary those n the cosmetcs ndustry, resembe dentca or substantay
dentca powder puffs of whch the former s a patent hoder. Prvate respondent
reped statng that her products are dfferent and countered that pettoner's
patents are vod because the utty modes apped for were not new and patentabe
and the person to whom the patents were ssued was not the true and actua author
nor were her rghts derved from such author.
Issues
Whether or not n an acton for nfrngement the Court a quo had |ursdcton to
determne the nvadty of the patents at ssue whch nvadty was st pendng
consderaton n the patent offce.
Whether or not the Court a quo commtted grave abuse of dscreton n the ssuance
of a wrt of premnary n|uncton.
Whether or not certorar s the proper remedy.
1. Yes. When a patent s sought to be enforced, the questons of nventon,
novety or pror use, and each of them, are open to |udca examnaton.
Any patentee whose rghts have been nfrnged upon may brng an acton before
the proper RTC and to secure an n|uncton for the protecton of hs rghts (Sec. 42,
R.A. 165).
2. Yes. It has been repeatedy hed that an nventon must possess the essenta
eements of novety, orgnaty and precedence and for the patentee to be
entted to protecton, the nventon must be new to the word.
In cases of nfrngement of patent no premnary n|uncton w be granted uness
the patent s vad and nfrnged beyond queston and the record concusvey
proves the defense s sham.
It w be noted that the vadty of pettoner's patents s n queston for want of
novety. Prvate respondent contends that powder puffs dentca n appearance wth
that covered by pettoner's patents exsted and were pubcy known and used as
eary as 1963 ong before pettoner was ssued the patents n queston.
For faure to determne frst the vadty of the patents before aforesad ssuance of
the wrt, the tra court faed to satsfy the two requstes necessary f an n|uncton
s to ssue, namey: the exstence of the rght to be protected and the voaton of
sad rght.
3. Yes. Under the above estabshed prncpes, t appears obvous that the tra
court commtted a grave abuse of dscreton whch makes certorar the
approprate remedy.
Godines v CA
The patent nvoved n ths case s one beongng to Varuz on |uy 15, 1976. It
covers a utty mode for a hand tractor or power ter. The above mentoned patent
was acqured by SV-Agro Industres Enterprses, Inc., heren prvate respondent,
from Varuz. In 1979, SV-Agro Industres suffered a decne of more than 50% n
saes n ts Moave, Zamboanga de Sur branch. Upon nvestgaton, t dscovered
that power ters smar to those patented by prvate respondent were beng
manufactured and sod by pettoner heren.
After tra, the court hed Pascua Godnes abe for nfrngement of patent and
unfar competton.
Issue
Is Godnes abe for nfrngement of patent and UC?
Hed
Yes. Tests have been estabshed to determne nfrngement. These are (a) literal
infringement; and (b) the doctrine of equivalents.
Literal Infringement Test
In usng tera nfrngement as a test, resort must be had, n the frst nstance, to
the words of the cam. If accused matter ceary fas wthn the cam, nfrngement
s made out and that s the end of t. To determne whether the partcuar tem fas
wthn the tera meanng of the patent cams, the Court must |uxtapose the cams
of the patent and the accused product wthn the overa context of the cams and
specfcatons, to determne whether there s exact dentty of a matera eements.
In ths case: n appearance and form, both the foatng power ters of the
defendant and the turte power ter of the pantff are vrtuay the same. The parts
or components thereof are vrtuay the same. In operaton, the foatng power ter
of the defendant operates aso n smar manner as the turte power ter of
pantff. Ths was admtted by the defendant hmsef n court that they are
operatng on the same prncpes. It appears from the foregong observaton of the
tra court that these cams of the patent and the features of the patented utty
mode were coped by pettoner. We are compeed to arrve at no other concuson
but that there was nfrngement.
Doctrine of quivalents
Recognzng that the ogca faback poston of one n the pace of defendant s to
aver that hs product s dfferent from the patented one, courts have adopted the
doctrine of equivalents whch recognzes that minor modifications in a
patented invention are sufficient to put the item !eyond the scope of
literal infringement"
Thus, accordng to ths doctrne, "(a)n nfrngement aso occurs when a devce
approprates a pror nventon by ncorporatng ts nnovatve concept and, abet
wth some modfcaton and change, performs su!stantially the same function
in su!stantially the same #ay to achieve su!stantially the same result""
The reason for the doctrne of equvaents s that to permt the mtaton of a
patented nventon whch does not copy any tera deta woud be to convert the
protecton of the patent grant nto a hoow and useess thng.
In ths case: a carefu examnaton between the two power ters w show that they
w operate on the same fundamenta prncpes.
In nfrngement of patent, smartes or dfferences are to be determned, not by
the names of thngs, but n the ght of what eements do, and substanta, rather
than technca, dentty n the test. More specfcay, t s necessary and suffcent to
consttute equvaency that the same functon can be performed n substantay the
same way or manner, or by the same or substantay the same, prncpe or mode
of operaton; but where these tests are satsfed, mere dfferences of form or name
are mmatera.
To estabsh an nfrngement, t s not essenta to show that the defendant adopted
the devce or process n every partcuar; Proof of an adoption of the
su!stance of the thing #ill !e sufficient"
Phil Pharma#ealth v Pfi$er
Pfzer s the regstered owner of Patent No. 21116 coverng ampcn
sodum/subactam sodum "Subactam Ampcn". Pfzer s marketng Subactam
Ampcn under the brand name "Unasyn."
Sometme n |anuary and February 2003, companants came to know that Ph
Parma supped Subactam Ampcn to severa hosptas wthout the consent of
companants.
Respondents prayed for permanent n|uncton, damages and the forfeture and
mpoundng of the aeged nfrngng products. When the PI expred, respondents
fed a Moton for Extenson of Wrt of Premnary In|uncton whch, however, was
dened by the BLA-IPO. Respondents then fed a speca cv acton for certorar
wth the CA assang Resoutons of the BLA-IPO.
Whe the case was pendng before the CA, respondents fed a Compant wth the
RTC for nfrngement and unfar competton wth damages aganst heren
pettoner.
Pettoner fed a Moton to Dsmss the petton fed wth the CA on the ground of
forum shoppng, contendng that the case fed wth the RTC has the same ob|ectve
as the petton fed wth the CA, whch s to obtan an n|uncton prohbtng
pettoner from mportng, dstrbutng and seng Subactam Ampcn products.
On February 7, 2005, pettoner agan fed a Moton to Dsmss the case for beng
moot and academc, contendng that respondents' patent had aready apsed.
Issues
a) Can an n|unctve reef be ssued based on an acton of patent nfrngement when
the patent aegedy nfrnged has aready apsed?
b) What trbuna has |ursdcton to revew the decsons of the Drector of Lega
Affars of the Inteectua Property Offce as regards nterocutory orders?
c) Is there forum shoppng when a party fes two actons wth two seemngy
dfferent causes of acton and yet pray for the same reef?
Hed
a. No. It s cear from the above-quoted provson of aw that the excusve rght
of a patentee to make, use and se a patented product, artce or process
exsts ony durng the term of the patent.
They aso admtted that the vadty of the sad patent s unt |uy 16, 2004, whch s
n conformty wth Secton 21 of RA 165, provdng that the term of a patent sha be
seventeen (17) years from the date of ssuance thereof.
There s no dspute as to respondents' admsson that the term of ther patent
expred on |uy 16, 2004. On the bass of the foregong, the Court agrees wth
pettoner that after |uy 16, 2004, respondents no onger possess the excusve
rght to make, use and se the artces or products covered by Phppne Letters
Patent No. 21116.
b. The CA. RA 8293 s sent wth respect to any remedy avaabe to tgants
who ntend to queston an interlocutory order ssued by the BLA-IPO.
Moreover, Secton 1 (c), Rue 14 of the Rues and Reguatons on
Admnstratve Compants for Voaton of Laws Invovng Inteectua Property
Rghts smpy provdes that nterocutory orders sha not be appeaabe. The
sad Rues and Reguatons do not prescrbe a procedure wthn the
admnstratve machnery to be foowed n assang orders ssued by the
BLA-IPO pendng fna resouton of a case fed wth them.
Hence, n the absence of such a remedy, the provsons of the Rues of Court sha
appy n a suppetory manner, as provded under Secton 3, Rue 1 of the same
Rues and Reguatons. Hence, n the present case, respondents correcty resorted
to the fng of a speca cv acton for certorar wth the CA to queston the assaed
Orders of the BLA-IPO, as they cannot appea therefrom and they have no other
pan, speedy and adequate remedy n the ordnary course of aw. Ths s consstent
wth Sectons 1 20 and 4, 21 Rue 65 of the Rues of Court, as amended.
c. As a GR no, but n ths case, yes.
In the nstant case, respondents' cause of acton n ther compant fed wth the IPO
s the aeged act of pettoner n mportng, dstrbutng, seng or offerng for sae
Subactam Ampcn products, acts that are supposedy voatve of respondents'
rght to the excusve sae of the sad products whch are covered by the atter's
patent. However, a carefu readng of the compant fed wth the RTC woud show
that respondents have the same cause of acton as n ther compant fed wth the
IPO. They cam that they have the excusve rght to make, use and se Subactam
Ampcn products and that pettoner voated ths rght. Thus, t does not matter
that the patents upon whch the compants were based are dfferent. The fact
remans that n both compants the rghts voated and the acts voatve of such
rghts are dentca.
In fact, respondents seek substantay the same reefs n ther separate compants
wth the IPO and the RTC for the purpose of accompshng the same ob|ectve.
It s setted by ths Court n severa cases that the fng by a party of two apparenty
dfferent actons but wth the same ob|ectve consttutes forum shoppng.
It s cear n ths case that the utmate ob|ectve whch respondents seek to acheve
n ther separate compants fed wth the RTC and the IPO, s to ask for damages
for the aeged voaton of ther rght to excusvey se Subactam Ampcn
products and to permanenty prevent or prohbt pettoner from seng sad
products to any entty. Owng to the substanta dentty of partes, reefs and ssues
n the IPO and RTC cases, a decson n one case w necessary amount to res
|udcata n the other acton.
%& v 'y!ur$
Trademark v Trade Name
Counse nssts that snce defendant dd not pace the trade-mark or trade name on
the watches sod by hm, he cannot be hed abe for an nfrngement of the pena
provsons of secton 6 of the Act, whch prescrbe that "any person who, wth ntent
to defraud the pubc or the owner of a trade-mark or trade name, sha use the
trade-mark of another on hs goods offered for sae, . . . sha be punshed by a fne
of not exceedng two thousand fve hundred doars, or by mprsonment not
exceedng three years, or both, n the dscreton of the court. . . ."
But ths contenton s manfesty untenabe n vew of the fact that the pena
provsons of the statute are extended aso n express terms to one who uses the
"trade name of another n hs busness, occupaton, or professon." Indeed one of
the distinguishing characteristics of a trade name is that, unli(e trade)
mar(s, they are not necessarily attached or affi*ed to the goods of the
o#ner"
Trade names are names whch are used n trade to desgnate a partcuar busness
of certan ndvduas consdered somewhat as an entty, or the pace at whch a
busness s ocated, or of a cass of goods, but whch are not technca trade-marks
ether because not apped or affxed to goods sent nto the market, or because not
capabe of excusve appropraton by anyone as trade-marks. Such trade names
may, or may not, be excusve. Excusve trade names are protected very much
upon the same prncpes as trade-marks, and the same rues that govern trade-
marks are apped n determnng what may be an excusve trade name.
&eh#ani Inc" v In)n)+ut ,urger
IN-N-OUT Burger, Inc., a foregn corporaton organzed under the aws of Caforna,
U.S.A., and not dong busness n the Phppnes, fed before the Bureau of Lega
Affars of the IPO an admnstratve compant aganst pettoners Sehwan, Inc.
Respondent aeged that t s the owner of the tradename "IN-N-OUT" and
trademarks "IN-N-OUT," "IN-N-OUT Burger & Arrow Desgn" and "IN-N-OUT Burger
Logo," whch are used n ts busness snce 1948 up to the present. These
tradename and trademarks were regstered n the Unted States as we as n other
parts of the word.
Pettoners aeged that respondent ack the ega capacty to sue because t was not
dong busness n the Phppnes and that t has no cause of acton because ts mark
s not regstered or used n the Phppnes.
1. Does respondent have capacty to sue?
Yes. Respondent has the ega capacty to sue for the protecton of ts trademarks,
abet t s not dong busness n the Phppnes.
Secton 3 of R.A. No. 8293, provdes:
SECTION 160. Rght of Foregn Corporaton to Sue n Trademark or Servce
Mark Enforcement Acton. - Any foregn natona or |urdca person who meets the
requrements of Secton 3 of ths Act and does not engage n busness n the
Phppnes may brng a cv or admnstratve acton hereunder for opposton,
canceaton, nfrngement, unfar competton, or fase desgnaton of orgn and
fase descrpton, whether or not t s censed to do busness n the Phppnes
under exstng aws.
2. Is the trademark In-N-Out nternatonay we known?
Yes. We are ncned to favor the decaraton of the mark "IN-N-OUT" as an
nternatonay we-known mark on the bass of "regstratons n varous countres
around the word and ts comprehensve advertsements theren."
Lkewse, as shown by the records of the nstant case, Companant submtted
evdence consstng of artces about "IN-N-OUT Burger" appearng n magaznes,
newspapers and prnt-out of what appears to be prnted representatons of ts
nternet webste (www.nnout.com) as we as ob|ect evdence consstng of
vdeotapes of famous ceebrtes mentonng IN-N-OUT burgers n the course of ther
ntervews showng a tremendous foowng among ceebrtes.
The fact that respondent's marks are nether regstered nor used n the Phppnes
s of no moment. The scope of protecton ntay afforded by Artce 6bs of the
Pars Conventon has been expanded n the 1999 |ont Recommendaton Concernng
Provsons on the Protecton of We-Known Marks, wheren the Word Inteectua
Property Organzaton (WIPO) Genera Assemby and the Pars Unon agreed to a
nonbndng recommendaton that a we-known mark shoud be protected n a
country even f the mark s nether regstered nor used n that country.
McDonalds v Mac-oy
On 14 March 1991, respondent Mac|oy Fastfood Corporaton fed wth the IPO an
appcaton for the regstraton of the trademark "MAC|OY & DEVICE" for fred
chcken, chcken barbeque, burgers, fres, etc.
McDonad's Corporaton fed a verfed Notce of Opposton aganst the
respondent's appcaton camng that the trademark "MAC|OY & DEVICE" so
resembes ts corporate ogo, otherwse known as the Goden Arches or "M" desgn,
and ts marks "McDonads," "McChcken," etc.
Respondent dened the aforementoned aegatons of the pettoner and averred
that t has used the mark "MAC|OY" for the past many years n good fath and has
spent consderabe sums of money for sad mark's extensve promoton n tr-meda,
especay n Cebu Cty where t has been dong busness ong before the pettoner
opened ts outet thereat sometme n 1992.
Issue
Whether there s a confusng smarty between the MCDONALD'S marks of the
pettoner and the respondent's "MAC|OY & DEVICE" trademark when apped to
Casses 29 and 30 of the Internatona Cassfcaton of Goods, .e., food and
ngredents of food.
Hed
Yes. In determnng smarty and kehood of confuson, |ursprudence has
deveoped two tests, the domnancy test and the hostc test. The domnancy test
focuses on the smarty of the prevaent features of the competng trademarks that
mght cause confuson or decepton. In contrast, the hostc test requres the court
to consder the entrety of the marks as apped to the products, ncudng the abes
and packagng, n determnng confusng smarty. Under the atter test, a
comparson of the words s not the ony determnant factor.
We beeve that the hostc test s not the one appcabe n ths case, the
domnancy test beng the one more sutabe. In recent cases wth a smar factua
meu as here, the Court has consstenty used and apped the domnancy test n
determnng confusng smarty or kehood of confuson between competng
trademarks.
Appyng the domnancy test to the nstant case, the Court fnds that heren
pettoner's "MCDONALD'S" and respondent's "MAC|OY" marks are confusngy
smar wth each other such that an ordnary purchaser can concude an assocaton
or reaton between the marks.
Besdes and most mportanty, both trademarks are used n the sae of fastfood
products. Indsputaby, the respondent's trademark appcaton for the "MAC|OY &
DEVICE" trademark covers goods under Casses 29 and 30 of the Internatona
Cassfcaton of Goods, namey, fred chcken, chcken barbeque, burgers, fres,
spaghett, etc. Lkewse, the pettoner's trademark regstraton for the MCDONALD'S
marks n the Phppnes covers goods whch are smar f not dentca to those
covered by the respondent's appcaton.
McDonald.s v LC ,ig Ma(
Pettoners assa the decson of the Court of Appeas, whch reversed the decson
of the tra court, thus fndng the respondent L.C. Mak Burger, Inc. not abe for
trademark nfrngement and unfar competton. The Court of Appeas found that
there s no kehood of confuson that coud arse n the use of respondents' "Bg
Mak" mark on hamburgers. In ts petton fed before ths Court, pettoners contend
that the respondents' use, wthout pettoners' consent of a coorabe mtaton of
the "Bg Mac" mark n advertsng and seng respondents' hamburger sandwches
woud key cause confuson n the mnd of the purchasng pubc on the source of
the hamburgers or the dentty of the busness. Pettoners further cam that the
respondents are guty of unfar competton for frauduenty passng off ther
hamburgers as "Bg Mac" hamburgers.
The Supreme Court found the respondents abe for trademark nfrngement.
Accordng to the Court, the respondents' use of the "Bg Mak" mark resuts n
kehood of confuson. Respondents' nabty to expan suffcenty how and why
they came to choose "Bg Mak" for ther hamburger sandwches ndcates ther
ntent to mtate pettoners' "Bg Mac" mark. Absent proof that respondents'
adopton of the "Bg Mak" mark was due to honest mstake or was fortutous, the
nescapabe concuson s that respondents adopted the "Bg Mak" mark to "rde on
the coattas" of the more estabshed "Bg Mac" mark. Anent the charge of unfar
competton, the Court found the respondents abe therefor. Accordng to the
Court, passng off or pamng off takes pace where the defendant by mtatve
devces on the genera appearance of the goods, mseads prospectve purchasers
nto buyng hs merchandse under the mpresson that they are buyng that of hs
compettors.
COMMERCIAL LAW; TRADEMARK LAW; TRADEMARK INFRINGEMENT; ELEMENTS. -
To estabsh trademark nfrngement, the foowng eements must be shown: (1) the
vadty of pantff's mark; (2) the pantff's ownershp of the mark; and (3) the use
of the mark or ts coorabe mtaton by the aeged nfrnger resuts n "kehood of
confuson". Of these, t s the eement of kehood of confuson that s the
gravamen of trademark nfrngement.
CONFUSION; TYPES. - Secton 22 covers two types of confuson arsng from the
use of smar or coorabe mtaton marks, namey, confuson of goods (product
confuson) and confuson of busness (source or orgn confuson.) The frst s the
confuson of goods "n whch event the ordnary prudent purchaser woud be
nduced to purchase one product n the beef that he was purchasng the other".
The other s the confuson of busness: "Here though the goods of the partes are
dfferent, the defendant's product s such as mght reasonaby be assumed to
orgnate wth the pantff, and the pubc woud then be deceved ether nto that
beef or nto the beef that there s some connecton between the pantff and
defendant whch, n fact, does not exst".
UNFAIR COMPETITION; ELEMENTS. - The essenta eements of an acton for unfar
competton are (1) confusng smarty n the genera appearance of the goods, and
(2) ntent to deceve the pubc and defraud a compettor. The confusng smarty
may or may not resut from smarty n the marks, but may resut from other
externa factors n the packagng or presentaton of the goods. The ntent to deceve
and defraud may be nferred from the smarty of the appearance of the goods as
offered for sae to the pubc. Actua frauduent ntent need not be shown.
A FORM OF UNFAIR COMPETITION; TRADEMARK INFRINGEMENT; WHEN IT TAKES
PLACE WITHOUT UNFAIR COMPETITION. - Unfar competton s broader than
trademark nfrngement and ncudes passng off goods wth or wthout trademark
nfrngement. Trademark nfrngement s a form of unfar competton. Trademark
nfrngement consttutes unfar competton when there s not merey kehood of
confuson, but aso actua or probabe decepton on the pubc because of the
genera appearance of the goods. There can be trademark nfrngement wthout
unfar competton as when the nfrnger dscoses on the abes contanng the mark
that he manufactures the goods, thus preventng the pubc from beng deceved
that the goods orgnate from the trademark owner.
ast Pacific v Director of Patents
|une 14, 1947, Marceo T. Pua fed wth the Offce of the Drector of Commerce an
appcaton for the regstraton under Act 666 of the composte trademark consstng
of the word "Verbena" and the representaton of a Spansh ady.
On May 23, 1957, Lus P. Pecer fed an opposton to the appcaton on the
foowng grounds: (a) that the pcture of a ady s common n trade and the name
"Verbena" s the generc name of a fower and, therefore, nether may be
excusvey approprated or regstered by the appcant; (b) the appcant shoud not
be aowed to bar from empoyng ths term those who use the genune verbena
essence n the manufacture of ther products; and (c) the appcant n the adopton
and use of sad trade-mark s decevng the pubc.
The Drector dened the regstraton and opned that the term "Verbena" s
"genercay descrptve or msdescrptve of the products, namey, oton, face
powder, har pomade and brantne, whe the representaton of a Spansh ady s
not ony deceptvey msdescrptve of the source or orgn, but aso common n
trade," and, consequenty, dened ther regstraton.
Hed
The term "Verbena" beng descrptve of a whoe genus of garden pants wth
fragrant fowers (Verbenaceae) ts use n connecton wth cosmetc products,
wheren fragrance s of substanta mport, evokes the dea that the products are
perfumed wth the extract of verbena fowers, or of some o of smar aroma; and,
regardess of other connotatons of the word, the use of the term can not be dened
to other traders usng such extract or os n ther own products. It foows that the
Drector of Patents correcty hed the term to be non-regsterabe n the sense that
pettoner company woud be entted to approprate ts use to the excuson of
others egtmatey entted, such as oppostor Pecer. The dena of regstraton s
further strengthened by the Drector's express fndngs that pettoner does ,not use
verbena essences n hs products.
The cam that the pettoner s entted to regstraton because the term "Verbena"
has aready acqured a secondary sgnfcance s wthout mert. The provsons of
aw (Rep. Act No. 166, sec. 4) requre that the trademark apped for must have
"become dstnctve of the appcant's goods", and that a prma face proof of ths
fact exsts when the appcant has been n the "substantay excusve and
contnuous use thereof as a mark or tradename . . . for the fve years next
precedng the date of the fng of the appcaton for ts regstraton". Here t
appears not ony that appcant and hs assgnor (Pua) ony began use of the aeged
mark n the year 1947, the same year when the appcaton was fed; but that such
trademarks as "Verbena Pov" and "Lupe Verbena" had ong been n use by
respondent Pecer on hs own cosmetc products, and that, as a matter of fact, he
s the hoder of a certfcate of regstraton from the Patents Offce for the trademark
"Lupe Verbena". Sad facts precude us from concudng that the trademark n
queston has become dstnctve of appcant's goods wthn the meanng of the aw.
Ang v Tori!io Teodoro
Doctrne of Secondary Meanng
Respondent has contnuousy used "Ang Tbay," both as a trade-mark and as a
trade- name, n the manufacture and sae of sppers, shoes, and ndoor basebas
snce 1910. He formay regstered t as a trade-mark on September 29, 1915, and
as a trade-name on |anuary 3, 1933.
Pettoner regstered the same trade-mark "Ang Tbay" for pants and shrts on Apr
11, 1932, and estabshed a factory for the manufacture of sad artces n the year
1937.
Hed: That pettoner's regstraton of the trade-mark "Ang Tbay" shoud be
canceed, and that she shoud be perpetuay en|oned from usng sad trade-mark
on goods manufactured and sod by her.
TERM "ANG TIBAY," NOT BEING GEOGRAPHIC OR DESCRIPTIVE, IS CAPABLE OF
EXCLUSIVE APPROPRIATION AS A TRADE-MARK. - An nqury nto the etymoogy
and meanng of the Tagaog words "Ang Tbay," made n the decson, shows that
the phrase is never used ad/ectively to define or descri!e an o!/ect" It s,
therefore, not a descriptive term #ithin the meaning of the Trade)mar( La#
!ut rather a fanciful or coined phrase #hich may properly and legally !e
appropriated as a trade)mar( or trade)name" Hence, t was originally
capa!le of e*clusive appropriation as a trade)mar( !y the respondent.
FUNCTION OF A TRADE-MARK; DOCTRINE OF "SECONDARY MEANING." - The
functon of a trade-mark s to pont dstnctvey, ether by ts own meanng or by
assocaton, to the orgn or ownershp of the wares to whch t s apped. "Ang
Tbay," as used by the respondent to desgnate hs wares, had exacty performed
that functon for twenty-two years before the pettoner adopted t as a trade-mark
n her own busness. "Ang Tbay" shoes and sppers are, by assocaton, known
throughout the Phppnes as products of the "Ang Tbay" factory owned and
operated by the respondent.
Even f "Ang Tbay," therefore, were not capabe of excusve appropraton as a
trade-mark, the appcaton of the doctrine of secondary meaning coud
nevertheess be fuy sustaned because, n any event, by respondent's ong and
excusve use of sad phrase wth reference to hs products and hs busness, t has
acqured a propretary connotaton.
This doctrine is to the effect that a #ord or phrase originally incapa!le of
e*clusive appropriation #ith reference to an article on the mar(et,
!ecause geographically or other#ise descriptive, might nevertheless have
!een used so long and so e*clusively !y one producer #ith reference to
his article that, in that trade and to that !ranch of the purchasing pu!lic,
the #ord or phrase has come to mean that the article #as his product"
Arce v &electa ,iscuit
TRADEMARKS AND TRADE NAMES; SECONDARY MEANING OF BUSINESS NAME. -
Athough the word "SELECTA" may be an ordnary or common word n the sense
that t may be used or empoyed by any one n promotng hs busness or
enterprse, once adopted or coned n connecton wth one's busness as an embem,
sgn or devce to characterze ts products, or as a badge or authentcty, t may
acqure a secondary meanng as to be excusvey assocated wth ts products and
busness. In ths sense, ts use by another may ead to confuson n trade and cause
damage to ts busness.
WHEN ITS USE BECOMES ENTITLED TO PROTECTION. - Pettoner used the word
"SELECTA" as a trade-mark and as such the aw gves t protecton and guarantees
ts use to the excuson of a others. It s n ths sense that the aw postuates that
"The ownershp or possesson of a trade-mark, . . . sha be recognzed and
protected n the same manner and to the same extent, as are other property rghts
known to the aw," thereby gvng to any person entted to the excusve use of
such trade-mark the rght to recover damages n a cv acton from any person who
may have sod goods of smar knd bearng such trade-mark.
The term "SELECTA" may be paced at par wth the words "Ang Tbay" whch ths
Court has consdered not merey as a descrptve term wthn the meanng of the
Trade-mark Law but as a fancfu or coned phrase, or a trade-mark. In that case,
ths Court found that respondent has consstenty used the term "Ang Tbay", both
as a trade-mark and a trade-name, n the manufacture and sae of sppers, shoes,
and ndoor basebas for twenty-two years before pettoner regstered t as a trade-
name for pants and shrts so that t has performed durng that perod the functon of
a trade-mark to pont dstnctvey, or by ts own meanng or by assocaton, to the
orgn or ownershp of the wares to whch t appes.
Asia ,re#ery v CA, &MC
The domnant feature of SMC's trademark s the name of the product: SAN MIGUEL
PALE PILSEN, wrtten n whte Gothc etters wth eaborate serfs at the begnnng
and end of the etters "S" and "M" on an amber background across the upper
porton of the rectanguar desgn. On the other hand, the domnant feature of ABI's
trademark s the name: BEER PALE PILSEN, wth the word "Beer" wrtten n arge
amber etters, arger than any of the etters found n the SMC abe. The tra court
perceptvey observed that the word "BEER" does not appear n SMC's trademark,
|ust as the words "SAM MIGUEL" do not appear n ABI's trademark. Hence, there s
absoutey no smarty n the domnant features of both trademarks. Nether n
sound, speng or appearance can BEER PALE PILSEN be sad to be confusngy
smar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can
possby be deceved that t s SAN MIGUEL PALE PILSEN. No evdence whatsoever
was presented by SMC provng otherwse.
Unfar competton s the empoyment of decepton or any other means contrary to
good fath by whch a person sha pass off the goods manufactured by hm or n
whch he deas, or hs busness, or servces, for those of another who has aready
estabshed goodw for hs smar goods, busness or servces, or any acts
cacuated to produce the same resut.
The unversa test queston s whether the pubc s key to be deceved. Nothng
ess than conduct tendng to pass off one man's goods or busness as that of
another w consttute unfar competton. Actua or probabe decepton and
confuson on the part of the customers by reason of defendant's practces must
aways appear. The resembances between the desgns were not suffcent to
msead the ordnary ntegent buyer, hence, there was no unfar competton.
However, when as n ths case, the names of the competng products are ceary
dfferent and ther respectve sources are promnenty prnted on the abe and on
other parts of the botte, mere smarty n the shape and sze of the contaner and
abe, does not consttute unfar competton. The stene botte s a standard botte
for beer and s unversay used. SMC dd not nvent t nor patent t. The fact that
SMC's botte s regstered under R.A. No. 623 (as amended by RA 5700, An Act to
Reguate the Use of Duy Stamped or Marked Bottes, Boxes, Casks, Kegs, Barres
and Other Smar Contaners) smpy prohbts manufacturers of other foodstuffs
from the unauthorzed use of SMC's bottes by refng these wth ther products. It
was not uncommon then for products such as pats (fsh sauce) and toyo (soy
sauce) to be sod n recyced SAN MIGUEL PALE PILSEN bottes. Regstraton of
SMC's beer bottes dd not gve SMC a patent on the stene or on bottes of smar
sze, shape or coor.
The record does not bear out SMC's apprehenson that BEER PALE PILSEN s beng
passed off as SAN MIGUEL PALE PILSEN. Ths s unkey to happen for consumers or
buyers of beer generay order ther beer by brand. As ponted out by ABI's counse,
n supermarkets and tendas, beer s ordered by brand, and the customer
surrenders hs empty repacement bottes or pays a depost to guarantee the return
of the emptes. If hs emptes are SAN MIGUEL PALE PILSEN, he w get SAN MIGUEL
PALE PILSEN as repacement. In sar-sar stores, beer s aso ordered from the
tndera by brand. The same s true n restaurants, pubs and beer gardens - beer s
ordered from the waters by brand.
Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" s not nfrnged by
ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes ts own botte wth a
bugng neck to dfferentate t from SMC's botte, and prnts ABI's name n three (3)
paces on sad botte (front, back and botte cap) to prove that t has no ntenton to
pass off ts "BEER" as "SAN MIGUEL."
There s no confusng smarty between the competng beers for the name of one s
"SAN MIGUEL" whe the compettor s pan "BEER" and the ponts of dssmarty
between the two outnumber ther ponts of smarty.
Petton ABI has nether nfrnged SMC's trademark nor commtted unfar
competton wth the atter's SAN MIGUEL PALE PILSEN product. Whe ts BEER PALE
PILSEN admttedy competes wth the atter n the open market, the competton s
nether unfar nor frauduent. Hence, we must deny SMC's prayer to suppress t.
Canon 'a!ushi(i v CA, 0&1 1u!!er
NSR Rubber Corporaton fed an appcaton for regstraton of the mark CANON for
sandas n the IPO. A Verfed Notce of Opposton was fed by pettoner, a foregn
corporaton. Canon has a regstered trademark n the Phppnes as we as over the
word. The IPO ssued ts decson dsmssng the opposton of pettoner and gvng
due course to prvate respondent's appcaton for the regstraton of the trademark
CANON.
Hed
On appea, the Supreme Court uphed the decson of the CA and the BPTTT rung
that the trademark "CANON" as used by pettoner for ts pants, chemca products,
toner and dyestuff, can be used by prvate respondent for ts sandas because the
products of these two partes are dssmar; that pettoner faed to present
evdence that t has aso embarked n the producton of footwear products; and that
the evdent dsparty of the products of the partes n ths case rendered unfounded
the apprehenson of pettoner that confuson of busness or orgn mght occur f
prvate respondent s aowed to use the mark CANON.
We fnd the arguments of pettoner to be unmertorous. Ordnary, the ownershp
of a trademark or tradename s a property rght that the owner s entted to protect
as mandated by the Trademark Law. However, when a trademark s used by a party
for a product n whch the other party does not dea, the use of the same trademark
on the atter's product cannot be vady ob|ected to.
The heren pettoner has not made known that t ntends to venture nto the
busness of producng sandas. Ths s ceary shown n ts Trademark Prncpa
Regster where the products of the sad pettoner had been ceary and specfcay
descrbed as "Chemca products, dyestuffs, pgments, toner deveopng
preparaton, shoe posher, poshng agent." It woud be taxng one's credbty to
aver at ths pont that the producton of sandas coud be consdered as a possbe
"natura or norma expanson" of ts busness operaton.
Pettoner further argues that the aeged dversty of ts products a over the word
makes t pausbe that the pubc mght be msed nto thnkng that there s some
supposed connecton between prvate respondent's goods and pettoner.
The kehood of confuson of goods or busness s a reatve concept, to be
determned ony accordng to the partcuar, and sometmes pecuar, crcumstances
of each case. Indeed, n trademark aw cases, even more than n other tgaton,
precedent must be studed n the ght of the facts of the partcuar case.
Undoubtedy, the pants, chemca products, toner and dyestuff of pettoner that
carry the trademark CANON are unreated to sandas, the product of prvate
respondent. We agree wth the IPO, foowng the Esso doctrne, when t noted that
the two casses of products n ths case fow through dfferent trade channes. The
products of pettoner are sod through speca chemca stores or dstrbutors whe
the products of prvate respondent are sod n grocery stores, sar-sar stores and
department stores. Thus, the evdent dsparty of the products of the partes n the
case at bar renders unfounded the apprehenson of pettoner that confuson of
busness or orgn mght occur f prvate respondent s aowed to use the mark
CANON.
Amigo v Cluett Pea!ody
Pettoner Amgo Manufacturng, Inc. assaed the decson of the Court of Appeas
affrmng the Drector of Patents' decson whch canceed ts trademark 'God Top,'
as used on men's socks, fndng t deceptvey sar to 'God Toe.' The Bureau
consdered the totaty of the smartes between the two sets of marks and found
that they were of such degree, number and quaty as to gve the overa mpresson
that the two products are confusngy f not deceptvey the same.
On appea, the Supreme Court uphed the fndng of the Bureau of Patents that t
was respondent whch had pror use of ts trademark, as shown n the varous
Certfcates of Regstraton ssued n ts favor. Ths fndng s bndng upon the
courts, absent any suffcent evdence to the contrary.
In the present case, a resort to ether the Domnancy Test or the Hostc Test shows
that coorabe mtaton exsts between respondent's "God Toe" and pettoner's
"God Top." A gance at pettoner's mark shows that t defntey has a ot of
smartes and n fact ooks ke a combnaton of the trademark and devces that
respondent has aready regstered; namey, "God Toe," the representaton of a sock
wth a magnfyng gass, the "God Toe" representaton and "nenzed."
Admttedy, there are some mnor dfferences between the two sets of marks. The
smartes, however, are of such degree, number and quaty that the overa
mpresson gven s that the two brands of socks are deceptvey the same, or at
east very smar to each another. An examnaton of the products n queston
shows that ther domnant features are god checkered nes aganst a
predomnanty back background and a representaton of a sock wth a magnfyng
gass. In addton, both products use the same type of etterng. Both aso ncude a
representaton of a man's foot wearng a sock and the word "nenzed" wth arrows
prnted on the abe. Lasty, the names of the brands are smar - "God Top" and
"God Toe." Moreover, t must aso be consdered that pettoner and respondent are
engaged n the same ne of busness.
Pettoner cannot therefore gnore the fact that, when compared, most of the
features of ts trademark are strkngy smar to those of respondent. In addton,
these representatons are at the same ocaton, ether n the sock tsef or on the
abe. Pettoner presents no expanaton why t chose those representatons,
consderng that these were the exact symbos used n respondent's marks. Thus,
the overa mpresson created s that the two products are deceptvey and
confusngy smar to each other. Ceary, pettoner voated the appcabe
trademark provsons durng that tme.
Pro &ource v 2orphag
Horphag Research Management SA s a corporaton duy organzed and exstng
under the aws of Swtzerand and the owner of trademark PYCNOGENOL, a food
suppement sod and dstrbuted by Zueg Pharma Corporaton. Respondent ater
dscovered that pettoner Prosource Internatona, Inc. was aso dstrbutng a
smar food suppement usng the mark PCO-GENOLS snce 1996. Ths prompted
respondent to demand that pettoner cease and desst from usng the aforesad
mark.
Hed
Both the word|s| PYCNOGENOL and PCO-GENOLS have the same suffx "GENOL"
whch on evdence, appears to be merey descrptve and furnsh no ndcaton of
the orgn of the artce and hence, open for trademark regstraton by the pantff
thru combnaton wth another word or phrase such as PYCNOGENOL. Furthermore,
athough the etters "Y" between P and C, "N" between O and C and "S" after L are
mssng n the |pettoner's| mark PCO-GENOLS, nevertheess, when the two words
are pronounced, the sound effects are confusngy smar not to menton that they
are both descrbed by ther manufacturers as a food suppement and thus, dentfed
as such by ther pubc consumers. And athough there were dssmartes n the
trademark due to the type of etters used as we as the sze, coor and desgn
empoyed on ther ndvdua packages/bottes, st the cose reatonshp of the
competng products' name n sounds as they were pronounced, ceary ndcates
that purchasers coud be msed nto beevng that they are the same and/or
orgnates from a common source and manufacturer.
The foowng random st of confusngy smar sounds n the matter of trademarks,
cued from Nms, Unfar Competton and Trade Marks, 1947, Vo. 1, w renforce
our vew that "SALONPAS" and "LIONPAS" are confusngy smar n sound: "God
Dust" and "God Drop"; "|antzen" and "|ass-Sea"; "Sver Fash" and "Supper Fash";
"Cascarete" and "Ceborte"; "Ceuod" and "Ceonte"; "Chartreuse" and
"Charseurs"; "Cutex" and "Cutcean"; "Hebe" and "Me|e"; "Kotex" and "Femetex";
"Zuso" and "Hoo Hoo".
Leon Amdur, n hs book "Trade-Mark Law and Practce", pp. 419-421, ctes, as
comng wthn the purvew of the dem sonans rue, "Yusea" and "U-C-A", "Stenway
Panos" and "Stenberg Panos", and "Seven-Up" and "Lemon-Up".
In Co Tong vs. Drector of Patents, ths Court unequvocay sad that "Cedura" and
"Cordura" are confusngy smar n sound; ths Court hed n Sapon Co. vs.
Bamaceda, 67 Ph. 795 that the name "Luson" s an nfrngement of the
trademark "Sapon", as the sound of the two names s amost the same.
&hangri)La v CA
The Shangr-La Group fed wth the Bureau of Patents, Trademarks and Technoogy
Transfer (BPTTT) a petton prayng for the canceaton of the regstraton of the
"Shangr-La" mark and "S" devce/ogo ssued to the Deveopers Group of
Companes, Inc., on the ground that the same was egay and frauduenty
obtaned and approprated for the atter's restaurant busness. The Shangr-La
Group aeged that t has been usng the sad mark and ogo for ts corporate affars
and busness snce March 1962. Lkewse, the Shangr-La Group fed wth the BPTTT
ts own appcaton for regstraton of the sub|ect mark and ogo. The Deveopers
Group fed an opposton to the appcaton. Amost three (3) years ater, the
Deveopers Group nsttuted wth the Regona Tra Court a compant for
nfrngement and damages wth prayer for n|uncton aganst the Shangr-La Group.
The Shangr-La Group moved for the suspenson of the proceedngs n the
nfrngement case on account of the pendency of the admnstratve proceedngs
before the BPTTT. Ths was dened by the tra court. The Shangr-La Group fed a
Moton for Reconsderaton. Soon thereafter, t aso fed a Moton to Inhbt aganst
Presdng |udge. The tra court dened both motons. The Shangr-La Group fed a
petton for certorar before the Court of Appeas, however, the Court of Appeas
dsmssed the petton as we as the Moton for Reconsderaton.
Meanwhe, the Deveopers Group fed wth the BPTTT an Urgent Moton to Suspend
Proceedngs, nvokng the pendency of the nfrngement case t fed before the
Regona Tra Court of Ouezon Cty. The moton was dened and the Moton for
Reconsderaton as we. From the dena of the BPTTT, the Deveopers Group fed
wth the Court of Appeas a petton for certorar, mandamus and prohbton, whch
was dsmssed for ack of mert. Ths brought about the petton for revew n G.R.
No. 111580. The Supreme Court ordered the two pettons consodated. The core
ssue theren smpy was whether despte the nsttuton of an Inter Partes case for
canceaton of a mark wth the BPTTT (now the Bureau of Lega Affars, Inteectua
Property Offce) by one party, the adverse party can fe a subsequent acton for
nfrngement wth the reguar courts of |ustce n connecton wth the same
regstered mark.
Hed
On the ssue nvoved n ths consodated pettons, the Supreme Court rued n the
affrmatve. Accordng to the Court, n appyng Secton 151.2 of Repubc Act No.
8293, otherwse known as the Inteectua Property Code n the case at bar, the
earer nsttuton of an Inter Partes case by the Shangr-La Group for the
canceaton of the "Shangr-La" mark and "S" devce/ogo wth the BPTTT cannot
effectvey bar the subsequent fng of an nfrngement case by regstrant
Deveopers Group. The aw and the rues are expct.
The ssue rased before the BPTTT was qute dfferent from that rased n the tra
court. Before the BPTTT was the ssue of whether the mark regstered by
Deveopers Group s sub|ect to canceaton, as the Shangr-La Group cams pror
ownershp of the dsputed mark. On the other hand, the ssue rased before the tra
court was whether the Shangr-La Group nfrnged upon the rght of Deveopers
Group wthn the contempaton of Secton 22 of Repubc Act 166.
However, whe the nstant pettons were st pendng wth the Supreme Court, the
nfrngement court rendered ts decson uphodng the vadty of the regstraton of
the servce mark "Shangr-La" and "S-Logo" n the name of the Deveopers Group.
The sad decson was appeaed wth the Court of Appeas. There can be no denyng
that the nfrngement court may vady pass upon the rght of regstraton. 3ith
the decision of the 1egional Trial Court upholding the validity of the
registration of the service mar( 4&hangri)La4 and 4&4 logo in the name of
Developers Group, the cancellation case filed #ith the ,ureau !ecame
moot" To allo# the ,ureau to proceed #ith the cancellation case #ould
lead to a possi!le result contradictory to that #hich the 1egional Trial
Court had rendered, al!eit the same #as still on appeal" The Supreme Court
dsmssed the petton n G.R. No. 111580 for beng moot and academc, and n
connecton wth G.R. No. 114802, t ordered the Bureau of Lega Affars, Inteectua
Property Offce, to suspend further proceedngs n Inter Partes Case No. 3145, to
awat the fna outcome of the appea n Cv Case No. O-91-8476.
&hangri)La v DCGI
RESPONDENT'S REGISTRATION OF THE "SHANGRI-LA" MARK AND "S" LOGO IS VOID;
EVIDENCE SHOWS THAT RESPONDENT DID NOT USE THE MARK AND LOGO IN THE
PHILIPPINES COMMERCIALLY PRIOR TO ITS REGISTRATION. - Here, respondent's
own wtness, Ramon Syhunong, testfed that a |eepney sgnboard artst aegedy
commssoned to create the mark and ogo submtted hs desgns ony n December
1982. Ths was two-and-a-haf months after the fng of the respondent's trademark
appcaton on October 18, 1982 wth the BPTTT. It was aso ony n December 1982
when the respondent's restaurant was opened for busness. Respondent cannot now
cam before the Court that the certfcate of regstraton tsef s proof that the two-
month pror use requrement was comped wth, what wth the fact that ts very
own wtness testfed otherwse n the tra court. And because at the tme (October
18, 1982) the respondent fed ts appcaton for trademark regstraton of the
"Shangr-La" mark and "S" ogo, respondent was not usng these n the Phppnes
commercay, the regstraton s vod.
ONE WHO HAS IMITATED THE TRADEMARK OF ANOTHER CANNOT BRING AN ACTION
FOR INFRINGEMENT, PARTICULARLY AGAINST THE TRUE OWNER OF THE MARK,
BECAUSE HE WOULD BE COMING TO COURT WITH UNCLEAN HANDS. - One who
has mtated the trademark of another cannot brng an acton for nfrngement,
partcuary aganst the true owner of the mark, because he woud be comng to
court wth uncean hands. Prorty s of no ava to the bad fath pantff. Good fath
s requred n order to ensure that a second user may not merey take advantage of
the goodw estabshed by the true owner. Ths pont s further bostered by the
fact that under ether Secton 17 of R.A. No. 166, or Secton 151 of R.A. No. 8293, or
Artce 6bs(3) of the Pars Conventon, no tme mt s fxed for the canceaton of
marks regstered or used n bad fath. Ths s precsey why pettoners had fed an
nter partes case before the BPTTT for the canceaton of respondent's regstraton,
the proceedngs on whch were suspended pendng resouton of the nstant case.
WHILE PETITIONERS MAY NOT HAVE OUALIFIED UNDER SECTION 2 OF R.A. NO. 166
AS A REGISTRANT, NEITHER DID RESPONDENT, SINCE THE LATTER ALSO FAILED TO
FULFILL THE 2-MONTH ACTUAL USE REOUIREMENT.
MUNICIPAL LAW ON TRADEMARKS REGARDING THE REOUIREMENT OF ACTUAL USE
IN THE PHILIPPINES MUST SUBORDINATE AN INTERNATIONAL AGREEMENT. - The
new Inteectua Property Code (IPC), Repubc Act No. 8293, undoubtedy shows the
frm resove of the Phppnes to observe and foow the Pars Conventon by
ncorporatng the reevant portons of the Conventon such that persons who may
queston a mark (that s, oppose regstraton, petton for the canceaton thereof,
sue for unfar competton) ncude persons whose nternatonay we-known mark,
whether or not regstered, s dentca wth or confusngy smar to or consttutes a
transaton of a mark that s sought to be regstered or s actuay regstered.
However, whe the Phppnes was aready a sgnatory to the Pars Conventon, the
IPC ony took effect on |anuary 1, 1988, and n the absence of a retroactvty cause,
R.A. No. 166 st appes. Under the prevang aw and |ursprudence at the tme,
the CA had not erred n rung that: The Pars Conventon mandates that protecton
shoud be afforded to nternatonay known marks as sgnatory to the Pars
Conventon, wthout regard as to whether the foregn corporaton s regstered,
censed or dong busness n the Phppnes. It goes wthout sayng that the same
runs afou to Repubc Act No. 166, whch requres the actua use n commerce n
the Phppnes of the sub|ect mark or devse. The apparent confct between the two
(2) was setted by the Supreme Court n ths wse - "Foowng unversa
acquescence and comty, our muncpa aw on trademarks regardng the
requrement of actua use n the Phppnes must subordnate an nternatona
agreement nasmuch as the apparent cash s beng decded by a muncpa trbuna
(Mortensen vs. Peters, Great Brtan, Hgh Court of |udcary of Scotand, 1906, 8
Sessons 93; Paras, Internatona Law and Word Organzaton, 1971 Ed., p. 20).
Wtha, the fact that nternatona aw has been made part of the aw of the and
does not by any means mpy the prmacy of nternatona aw over natona aw n
the muncpa sphere. Under the doctrne of ncorporaton as apped n most
countres, rues of nternatona aw are gven a standng equa, not superor, to
natona egsatve enactments (Saonga and Yap, Pubc Internatona Law, Fourth
ed., 1974, p. 16)."
WITH THE DOUBLE INFIRMITY OF LACK OF TWO-MONTH PRIOR USE, AS WELL AS
BAD FAITH IN RESPONDENT'S REGISTRATION OF THE MARK, IT IS EVIDENT THAT
THE PETITIONERS CANNOT BE GUILTY OF INFRINGEMENT; IT WOULD BE A GREAT
IN|USTICE TO AD|UDGE PETITIONERS GUILTY OF INFRINGING A MARK WHEN THEY
ARE ACTUALLY THE ORIGINATOR AND CREATOR THEREOF.
Levi &trauss v 5ogue Traders
Lev Strauss & Co. obtaned certfcates of regstraton from the BPTTT for the
foowng trademarks: "LEVIS"; "501"; "Two Horse Desgn"; "Two Horse Labe"; "Two
Horse Patch"; "Two Horse Labe wth Patterned Arcuate Desgn", etc.
Pettoner dscovered the exstence of some trademark regstratons beongng to
respondent whch, n ts vew, were confusngy smar to ts trademarks (LIVES).
Thus, t nsttuted two cases before the IPO for the canceaton of respondent's
trademark regstratons.
Pettoner then apped for the ssuance of a search warrant on the premses of
respondent Vogue Traders Cothng Company, owned by one Tony Lm, wth the
RTC. Sad tra court ssued a Search Warrant based on ts fndng of probabe cause
that the respondent had voated Artce 189 of the RPC.
Respondent fed a compant for damages n the RTC aganst pettoner.
Hed
RTC has |ursdcton and no forum shoppng
Whe an admnstratve canceaton of a regstered trademark, on any of the
grounds under Secton 17 of R.A. No. 166, s wthn the ambt of the BPTTT, an
acton for nfrngement or any other ncdenta remedy sought s wthn the
|ursdcton of the ordnary courts.
Surey, an appcaton wth BPTTT for an admnstratve canceaton of a regstered
trade mark cannot per se have the effect of restranng or preventng the courts
from the exercse of ther awfuy conferred |ursdcton.
The passage of Repubc Act No. 8293, otherwse known as the "Inteectua Property
Code of the Phppnes," expanded the rghts accorded to an owner of a regstered
trademark.
It bears stressng that an acton for nfrngement or unfar competton, ncudng the
avaabe remedes of n|uncton and damages, in the regular courts CA0
proceed independently or simultaneously #ith an action for the
administrative cancellation of a registered trademar( in the ,PTTT. As
apped to the present case, pettoner's pror fng of two nter partes cases aganst
the respondent before the BPTTT for the canceaton of the atter's trademark
regstratons, namey, "LIVE'S" and "LIVE'S Labe Mark," does not precude
pettoner's rght (as a defendant) to ncude n ts answer (to respondent's
compant for damages) a countercam for nfrngement wth a prayer for the
ssuance of a wrt of premnary n|uncton.
As to the n|uncton
Pettoner cams that the assaed orders of the tra court, dated December 10,
1996 and Apr 11, 1997, dd not pre|udge the case. On the other hand, respondent
counters that the tra court's order dated December 10, 1996 amounted to a
pre|udgment of the case, to wt: that ts LIVE's backpocket desgn was not
copyrghtabe because t was nether an orgna work nor a nove desgn
The wrt dd not have the effect of pre|udgng or dsposng of the merts of the case,
but merey en|oned the respondent's acts of manufacturng, dstrbutng, seng, or
offerng for sae the |eans whch had aegedy ncorporated exact or coorabe
mtatons of the products beongng to pettoner.
Pettoner has yet to estabsh durng the tra that t s entted to a permanent
n|uncton by reason of respondent's confusngy smar LIVE'S products. Otherwse,
the tra court coud decare that the LIVE'S trademark beongng to respondent was
not confusngy smar wth the LEVI's trademark of pettoner.
Indeed, a wrt of premnary n|uncton s generay based soey on nta and
ncompete evdence adduced by the appcant (heren pettoner). The evdence
submtted durng the hearng of the ncdent s not concusve, for ony a "sampng"
s needed to gve the tra court an dea of the |ustfcaton for ts ssuance pendng
the decson of the case on the merts. As such, the fndngs of fact and opnon of a
court when ssung the wrt of premnary n|uncton are nterocutory n nature.
Dia$ v Pp
It is the tendency of the allegedly infringing mark to be confused with the registered
trademark that is the gravamen of the offense of infringement of a registered
trademark. The acqutta of the accused shoud foow f the aegedy nfrngng
mark s not key to cause confuson. Thereby, the evdence of the State does not
satsfy the quantum of proof beyond reasonabe doubt.
Daz was charged wth havng nfrnged the trademark of Lev Strauss when he
made garments wth marks wth amost the same desgn as Levs. He camed that
the ustraton n the pockets were buffaos, not horses, contrary to Levs cam.
Daz stated that he dd not manufacture Levs |eans, and that he used the abe "LS
|eans Taorng" n the |eans that he made and sod; that the abe "LS |eans
Taorng" was regstered wth the Inteectua Property Offce; that hs shops
receved cothes for sewng or repar; that hs shops offered made-to-order |eans,
whose styes or desgns were done n accordance wth nstructons of the
customers; that snce the tme hs shops began operatng n 1992, he had receved
no notce or warnng regardng hs operatons; that the |eans he produced were
easy recognzabe because the abe "LS |eans Taorng," and the names of the
customers were paced nsde the pockets, and each of the |eans had an "LS|T" red
tab; that "LS" stood for "Latest Stye;" and that the eather patch on hs |eans had
two buffaoes, not two horses.
Hed
Acqutted. The eements of the offense of trademark nfrngement under the
Intellectual Property Code are, therefore, the foowng:
1. The trademark beng nfrnged s regstered n the Inteectua Property Offce;
2. The trademark s reproduced, counterfeted, coped, or cooraby mtated by the
nfrnger;
3. The nfrngng mark s used n connecton wth the sae, offerng for sae, or
advertsng of any goods, busness or servces; or the nfrngng mark s apped to
abes, sgns, prnts, packages, wrappers, receptaces or advertsements ntended to
be used upon or n connecton wth such goods, busness or servces;
4. The use or appcaton of the nfrngng mark s key to cause confuson or
mstake or to deceve purchasers or others as to the goods or servces themseves
or as to the source or orgn of such goods or servces or the dentty of such
busness; and
5. The use or appcaton of the nfrngng mark s wthout the consent of the
trademark owner or the assgnee thereof.
As can be seen, the kehood of confuson s the gravamen of the offense of
trademark nfrngement. There are two tests to determne kehood of confuson,
namey: the domnancy test, and the hostc test.
The hostc test s appcabe here consderng that the heren crmna cases aso
nvoved trademark nfrngement n reaton to |eans products. Accordngy, the
|eans trademarks of Levs Phppnes and Daz must be consdered as a whoe n
determnng the kehood of confuson between them. The maong pants or |eans
made and sod by Levs Phppnes, whch ncuded LEVIS 501, were very popuar
n the Phppnes. The consumng pubc knew that the orgna LEVIS 501 |eans
were under a foregn brand and quite e*pensive. Such |eans coud be purchased
ony n mas or boutques as ready-to-wear tems, and were not avaabe n
taorng shops ke those of Dazs as we as not acqured on a "made-to-order"
bass. Under the crcumstances, the consumng pubc coud easy dscern f the
|eans were orgna or fake LEVIS 501, or were manufactured by other brands of
|eans. Confuson and decepton were remote, for, as the Court has observed n
Emerald Garments:
The products nvoved n the case at bar are, n the man, varous knds of |eans.
These are not your ordnary househod tems ke catsup, soy sauce or soap whch
are of mnma cost. Maong pants or |eans are not nexpensve. Accordngy, the
casua buyer s predsposed to be more cautous and dscrmnatng n and woud
prefer to mu over hs purchase. Confuson and decepton, then, s ess key.
In ne wth the foregong dscussons, more credt shoud be gven to the "ordnary
purchaser." Cast n ths partcuar controversy, the ordnary purchaser s not the
"competey unwary consumer" but s the "ordnary ntegent buyer" consderng
the type of product nvoved.
Daz used the trademark "LS |EANS TAILORING" for the |eans he produced and sod
n hs taorng shops. Hs trademark was vsuay and auray dfferent from the
trademark "LEVI STRAUSS & CO" appearng on the patch of orgna |eans under the
trademark LEVIS 501. The word "LS" coud not be confused as a dervatve from
"LEVI STRAUSS" by vrtue of the "LS" beng connected to the word "TAILORING",
thereby openy suggestng that the |eans bearng the trademark "LS |EANS
TAILORING" came or were bought from the taorng shops of Daz, not from the
mas or boutques seng orgna LEVIS 501 |eans to the consumng pubc.
There were other remarkabe dfferences between the two trademarks that the
consumng pubc woud easy perceve. Daz apty noted such dfferences, as
foows:
The prosecuton aso aeged that the accused coped the "t#o horse design" of
the pettoner-prvate companant but the evdence w show that there was no
such desgn n the sezed |eans. Instead, what s shown s "!uffalo design." Agan,
a horse and a buffao are two dfferent anmas whch an ordnary customer can
easy dstngush.
In terms of casses of customers and channes of trade, the |eans products of the
prvate companant and the accused cater to dfferent casses of customers and
fow through the dfferent channes of trade. The customers of the prvate
companant are ma goers beongng to cass A and B market group - whe that of
the accused are those who beong to cass D and E market who can ony afford Php
300 for a par of made-to order pants.
Gven the foregong, t shoud be pan that there was no kehood of confuson
between the trademarks nvoved. Thereby, the evdence of gut dd not satsfy the
quantum of proof requred for a crmna convcton, whch s proof beyond
reasonabe doubt.
Mattel v 6rancisco
Uy fed a trademark appcaton wth the BPTTT for regstraton of the trademark
"BARBIE" for use on confectonary products, such as mk, chocoate, candes,
mkbar and chocoate candes n Cass 30.
Matte, Inc., a corporaton organzed under the aws of the State of Deaware, Unted
States of Amerca, fed a Notce of Opposton aganst Uy's "Barbe" trademark as
the atter was confusngy smar to ts trademark on dos, do cothes and do
accessores, toys and other smar commerca products.
Uy fed hs Answer denyng the aegatons theren and camng that there s no
smarty between the two goods.
The Drector of the Bureau of Lega Affars, IPO, dsmssed Matte's opposton and
gvng due course to Uy's appcaton for the regstraton of the trademark "Barbe"
used on confectonary products. The Drector hed that there was no confusng
smarty between the two competng marks because the goods were non-
competng or unreated.
On appea, Francsco, the Drector Genera, rendered a Decson denyng the appea
on the ground that there was no proof on record that Matte had ventured nto the
producton of chocoates and confectonary products under the trademark "Barbe"
to enabe t to prevent Uy from usng an dentca "Barbe" trademark on sad goods.
Matte appeaed to the CA and then to the SC.
Uy submts that the case has become moot and academc snce the records of the
IPO w show that no DAU was fed on or before December 1, 2001; thus, he s
deemed to have abandoned hs trademark appcaton for faure to compy wth the
mandatory fng of the DAU.
Hed
The nstant case has been rendered moot and academc.
Uy's decaraton n hs Comment and Memorandum before ths Court that he has not
fed the DAU as mandated by pertnent provsons of R.A. No. 8293 s a |udca
admsson that he has effectvey abandoned or wthdrawn any rght or nterest n
hs trademark.
Secton 124.2 of R.A. No. 8293 provdes:
The appcant or the regstrant sha fe a decaraton of actua use of the mark wth
evdence to that effect, as prescrbed by the Reguatons wthn three (3) years from
the fng date of the appcaton. Otherwse, the appcant sha be refused or the
marks sha be removed from the Regster by the Drector.
Uy's admsson n hs Comment and Memorandum of non-compance wth the
foregong requrements s a |udca admsson and an admsson aganst nterest 22
combned. A |udca admsson bnds the person who makes the same. 23 In the
same ven, an admsson aganst nterest s the best evdence whch affords the
greatest certanty of the facts n dspute. 24 The ratonae for the rue s based on
the presumpton that no man woud decare anythng aganst hmsef uness such
decaraton s true. 25 Thus, t s far to presume that the decaraton corresponds
wth the truth, and t s hs faut f t does not.
In the present case, Matte s seekng a rung on whether Uy's "Barbe" trademark s
confusngy smar to t's (Matte's) "Barbe" trademark. Gven Uy's admsson that
he has effectvey abandoned or wthdrawn any rghts or nterest n hs trademark
by hs non-fng of the requred DAU, there s no more actua controversy, or no
usefu purpose w be served n passng upon the merts of the case. It woud be
unnecessary to rue on the trademark confct between the partes. A rung on the
matter woud practcay partake of a mere advsory opnon, whch fas beyond the
ream of |udca revew. The exercse of the power of |udca revew s mted to
actua cases and controverses. Courts have no authorty to pass upon ssues
through advsory opnons or to resove hypothetca or fegned probems.
"7" v &hen Dar
EYIS s a domestc corporaton engaged n the producton, dstrbuton and sae of
ar compressors. Pettoner Engraco Yap s the Charman of the Board of Drectors
of EYIS.
Respondent Shen Dar s a Tawan-based foregn corporaton engaged n the
manufacture of ar compressors.
Both companes camed to have the rght to regster the trademark "VESPA" for ar
compressors.
From 1997 to 2004, EYIS mported ar compressors from Shen Dar through saes
contracts. In the correspondng B of Ladngs, the tems were descrbed merey as
ar compressors. There s no documentary evdence to show that such ar
compressors were marked "VESPA."
On |une 9, 1997, Shen Dar fed a Trademark Appcaton wth the IPO for the mark
"VESPA, Chnese Characters and Devce" for use on ar compressors and wedng
machnes. Ths was granted on February 8, 2007.
On |uy 28, 1999, EYIS fed a Trademark Appcaton, aso for the mark "VESPA," for
use on ar compressors. Ths was granted on |anuary 18, 2004.
Shen Dar fed a Petton for Canceaton of EYIS' COR wth the BLA camng to have
frst fed an appcaton for the mark. Shen Dar further aeged that EYIS was a mere
dstrbutor of ar compressors bearng the mark "VESPA" whch t mported from
Shen Dar.
1. Who has the better rght to the trademark?
E.Y. Here, the ncontrovertbe truth, as estabshed by the evdence submtted by
the partes, s that EYIS s the pror user of the mark.
We carefuy nspected the evdence consstng of three hundred seventy one (371)
nvoces and shpment documents whch show that "VESPA" ar compressors were
sod not ony n Mana, but to ocatons such as Ioo Cty, Cebu Cty, Dumaguete
Cty, Zamboanga Cty, Cagayan de Oro Cty, Davao Cty to name a few. There s no
doubt that t s through prvate respondents' efforts that the mark "VESPA" used on
ar compressors has ganed busness goodw and reputaton n the Phppnes for
whch t has vady acqured trademark rghts. Respondent EY Industra's rght has
been preserved unt the passage of RA 8293 whch enttes t to regster the same.
|Shen Dar| avers that t s the true and rghtfu owner of the trademark "VESPA"
used on ar compressors. The thrust of |Shen Dar's| argument s that respondent
E.Y. Industra Saes, Inc. s a mere dstrbutor of the "VESPA" ar compressors. We
dsagree.
Ths concuson s beed by the evdence. We have gone over each and every
document attached as Annexes "A", "A 1-48" whch consst of B of Ladng and
Packng Weght Lst. Not one of these documents referred to a "VESPA" ar
compressor. Instead, t smpy descrbes the goods pany as ar compressors whch
s type "SD" and not "VESPA".
2. Whether the IPO Drector Genera can vady cance Shen Dar's Certfcate of
Regstraton
Yes. The fact that no petton for canceaton was fed aganst the COR ssued to
Shen Dar does not precude the canceaton of Shen Dar's COR. It must be
emphaszed that, durng the hearng for the canceaton of EYIS' COR before the
BLA, Shen Dar tred to estabsh that t, not EYIS, was the true owner of the mark
"VESPA" and, thus, entted to have t regstered. Shen Dar had more than suffcent
opportunty to present ts evdence and argue ts case, and t dd. It was gven ts
day n court and ts rght to due process was respected. The IPO Drector Genera's
dsregard of the procedure for the canceaton of a regstered mark was a vad
exercse of hs dscreton.
'a!ushi 'aisha v IAC
Kabush Kasha Isetan s a foregn corporaton organzed and exstng under the aws
of |apan. It s the owner of the trademark "Isetan" and the "Young Leaves Desgn".
The pettoner aeges that t frst used the trademark Isetan on November 5, 1936.
Prvate respondent, Isetann Department Store, on the other hand, s a domestc
corporaton organzed and exstng under the aws of the Phppnes. It cams that t
used the word "Isetann" as part of ts corporated name and on ts products
partcuary on shrts n |oymart Department Store sometme n |anuary 1979.
On May 30, 1980 and May 20, 1980, the prvate respondent regstered "Isetann
Department Store, Inc." and Isetann and Fower Desgn n the Phppne Patent
Offce.
On November 28, 1980, the pettoner fed wth the Ph. Patent Offce two (2)
pettons for the canceaton of Certfcates of Suppementa Regstraton of Isetann.
The pettoner aeged that prvate respondent's act of regsterng a trademark
whch s exacty the same as ts trade mark and adoptng a corporate name smar
to that of the pettoner were wth the ega and mmora ntenton of cashng n on
the ong estabshed goodw and popuarty of the pettoner's reputaton, thereby
causng great and rreparabe n|ury and damage to t.
Hed
Isetann wns. The records show that the pettoner has never conducted any
busness n the Phppnes. It has never promoted ts tradename or trademark n the
Phppnes. It has absoutey no busness goodw n the Phppnes. It s unknown to
Fpnos except the very few who may have notced t whe traveng abroad. It has
never pad a snge centavo of tax to the Phppne government. Under the aw, t
has no rght to the remedy t seeks.
There can be no queston from the records that the pettoner has never used ts
tradename or trademark n the Phppnes.
Any goodw, reputaton, or knowedge regardng the name Isetann s purey the
work of the prvate respondent. Evdence was ntroduced on the extensve
promotona actvtes of the prvate respondent.
It mght be pertnent at ths pont to stress that what s nvoved n ths case s not
so much a trademark as a tradename. Isetann Department Store, Inc. s the name
of a store and not of products sod n varous parts of the country. Ths case must be
dfferentated from cases nvovng products bearng such famar names as
"Cogate", "Snger", "Toyota", or "Sony" where the products are marketed wdey n
the Phppnes. There s no product wth the name "Isetann" popuarzed wth that
brand name n the Phppnes. Uness one goes to the store caed Isetann n Mana,
he woud never know what the name means. Smary, unt a Fpno buyer steps
nsde a store caed "Isetan" n Tokyo or Hongkong, that name woud be competey
aen to hm. The records show that among Fpnos, the name cannot cam to be
nternatonay we-known.
The respondent regstered ts trademark n 1979. It has contnuousy used that
name n commerce. It has estabshed a goodw through extensve advertsng. The
peope who buy at Isetann Store do so because of Isetann's efforts. There s no
showng that the |apanese frm's regstraton n |apan or Hongkong has any
nfuence whatsoever on the Fpno buyng pubc.
Coffee Partners v &an 6rancisco Coffee
Pettoner Coffee Partners, Inc. s a oca corporaton engaged n the busness of
estabshng and mantanng coffee shops n the country. It has a franchse
agreement wth Coffee Partners Ltd. (CPL), and s usng trademarks desgned by
CPL such as "SAN FRANCISCO COFFEE."
Respondent s a oca corporaton engaged n the whoesae and reta sae of coffee.
It regstered wth the SEC n May 1995. It regstered the busness name "SAN
FRANCISCO COFFEE & ROASTERY, INC." wth the Department of Trade and Industry
(DTI) n |une 1995.
In |une 2001, respondent dscovered that pettoner was about to open a coffee
shop under the name "SAN FRANCISCO COFFEE" n Lbs, Ouezon Cty. In ts answer,
pettoner dened the aegatons n the compant. Pettoner aeged t fed wth the
IPO appcatons for regstraton of the mark "SAN FRANCISCO COFFEE & DEVICE"
The BLA-IPO hed that pettoner's trademark nfrnged on respondent's trade name.
It rued that the rght to the excusve use of a trade name wth freedom from
nfrngement by smarty s determned from prorty of adopton. Snce respondent
regstered ts busness name wth the DTI n 1995 and pettoner regstered ts
trademark wth the IPO n 2001 n the Phppnes and n 1997 n other countres,
then respondent must be protected from nfrngement of ts trade name.
The ODG-IPO reversed the BLA-IPO. It rued that pettoner's use of the trademark
"SAN FRANCISCO COFFEE" dd not nfrnge on respondent's trade name.
The Court of Appeas set asde the 22 October 2003 decson of the ODG-IPO n so
far as t rued that there was no nfrngement.
The Issue
Whether pettoner's use of the trademark "SAN FRANCISCO COFFEE" consttutes
nfrngement of respondent's trade name "SAN FRANCISCO COFFEE & ROASTERY,
INC.," even f the trade name s not regstered wth the Inteectua Property Offce
(IPO).
Hed
Yes. Ceary, a trade name need not be regstered wth the IPO before an
nfrngement sut may be fed by ts owner aganst the owner of an nfrngng
trademark. A that s requred s that the trade name s prevousy used n trade or
commerce n the Phppnes.
RA 8293, whch took effect on 1 |anuary 1998, has dspensed wth the regstraton
requrement. Secton 165.2 of RA 8293 categorcay states that trade names sha
be protected, even pror to or wthout regstraton wth the IPO, aganst any unawfu
act ncudng any subsequent use of the trade name by a thrd party, whether as a
trade name or a trademark key to msead the pubc.
It s the kehood of confuson that s the gravamen of nfrngement. But there s no
absoute standard for kehood of confuson. Ony the partcuar, and sometmes
pecuar, crcumstances of each case can determne ts exstence. Thus, n
nfrngement cases, precedents must be evauated n the ght of each partcuar
case. 13
Appyng ether the domnancy test or the hostc test, pettoner's "SAN FRANCISCO
COFFEE" trademark s a cear nfrngement of respondent's "SAN FRANCISCO
COFFEE & ROASTERY, INC." trade name. The descrptve words "SAN FRANCISCO
COFFEE" are precsey the domnant features of respondent's trade name. Pettoner
and respondent are engaged n the same busness of seng coffee, whether
whoesae or reta. The kehood of confuson s hgher n cases where the busness
of one corporaton s the same or substantay the same as that of another
corporaton. In ths case, the consumng pubc w key be confused as to the
source of the coffee beng sod at pettoner's coffee shops. Pettoner's argument
that "San Francsco" s |ust a proper name referrng to the famous cty n Caforna
and that "coffee" s smpy a generc term, s untenabe. Respondent has acqured
an excusve rght to the use of the trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC." snce the regstraton of the busness name wth the DTI n 1995.
Thus, respondent's use of ts trade name from then on must be free from any
nfrngement by smarty. Of course, ths does not mean that respondent has
excusve use of the geographc word "San Francsco" or the generc word "coffee."
Geographc or generc words are not, per se, sub|ect to excusve appropraton. It s
ony the combnaton of the words "SAN FRANCISCO COFFEE," whch s respondent's
trade name n ts coffee busness, that s protected aganst nfrngement on matters
reated to the coffee busness to avod confusng or decevng the pubc.
Distilleria v La Tondena
La Tondea fed before the RTC an acton for the recovery of 18,157 empty "350
c.c. whte fnt bottes" bearng the bown-n marks of "La Tondea Inc." and
"Gnebra San Mgue" aganst Dstera Washngton camng that the atter was
usng the bottes for ts own "Gn Seven" products wthout the consent of Dstera
Washngton n voaton of Repubc Act 623. The tra court n ts decson dsmssed
the compant, uphodng Dstera Washngton's contenton that a purchaser of
quor pays ony a snge prce for the quor and the botte and s not requred to
return the botte at any tme.
The CA reversed the tra court's decson, rung that the use of marked bottes by
any person other than the manufacturer, botter or seer, wthout the atter's
wrtten consent, s unawfu. On appea, the Supreme Court hed that there was a
vad transfer of the bottes to Dstera Washngton, except that ts possesson of
the bottes wthout the wrtten consent of La Tondea gves rse to a prma face
presumpton of ega use under R.A. 623. Pettoner moved for reconsderaton.
Hed
Sectons 2 and 3 appy ony when the "regstered manufacturer, botter, or seer"
retan ownershp of the bottes. Upon the other hand, when the bottes have been
"transferred by way of sae," Secton 5 appes, thereby precudng the nsttuton of
any acton "under ths Act," meanng to say, any acton under Sectons 2 and 3. The
general rule on o#nership, therefore, must apply and petitioner !e
allo#ed to en/oy all the rights of an o#ner in regard the !ottles in
question" &ince the Court has found that the !ottles have !een transferred
!y #ay of sale, then La Tonde8a has relinquished all its proprietary rights
over the !ottles in favor of Distilleria 3ashington #ho has o!tained them
in due course" 0o# as o#ner, it can e*ercise all attri!utes of o#nership
over the !ottles"
COMMERCIAL LAW; REPUBLIC ACT 623 (TRADEMARK LAW); DOES NOT DISALLOW
SALE OF MARKED BOTTLES OR CONTAINERS; EFFECT OF TRANSFER OF OWNERSHIP.
- Snce repevn as a possessory acton s dependent upon ownershp, t s reevant
to ask: Dd La Tondea Dsters, Inc. transfer ownershp of ts marked bottes or
contaners when t sod ts products n the market? Were the marked bottes or
contaners part of the products sod to the pubc? In our decson sought to be
reconsdered, we categorcay answered the queston n the affrmatve n ths wse:
R. A. No. 623 does not dsaow the sae or transfer of ownershp of the marked
bottes or contaners. In fact, the contrary s mpct n Sectons 5 and 6 thereof. In
pan terms, La Tondea not ony sod ts gn products but aso the marked bottes or
contaners, as we. And when these products were transferred by way of sae, then
ownershp over the bottes and a ts attrbutes (|us utend, |us abutend, |us
fruend, |us dsponend) passed to the buyer. It necessary foows that the
transferee has the rght to possesson of the bottes uness he uses them n voaton
of the orgna owner's regstered or ncorporea rghts. After practcay sayng that
La Tondea has surrendered ownershp and consequenty, possesson of the
marked bottes or contaners, t s ncongruous and, certany, t does not seem far
and |ust to st aow La Tondea, ctng the prma face presumpton of ega use
under Sec. 3 of R.A. 623, to retan possesson of the sezed bottes by smpy
requrng payment of |ust compensaton to pettoner.
Coca Cola v Gome$
Peps was hoardng arge quanttes of Coke bottes.
Is the hoardng of a compettor's product contaners punshabe as unfar
competton under the Inteectua Property Code (IP Code, Repubc Act No. 8293)
that woud entte the aggreved party to a search warrant aganst the hoarder?
No. Artces 168.1 and 168.2, as quoted above, provde the concept and genera rue
on the defnton of unfar competton. The aw does not thereby cover every unfair
act committed in the course of business; t covers ony acts characterzed by
"deception or any other means contrary to good fath" n the passing off of goods
and servces as those of another who has estabshed goodw n reaton wth these
goods or servces, or any other act cacuated to produce the same resut.
From |ursprudence, unfar competton has been defned as the passng off (or
pamng off) or attemptng to pass off upon the pubc the goods or busness of one
person as the goods or busness of another wth the end and probabe effect of
decevng the pubc. It formuated the "true test" of unfar competton: whether the
acts of defendant are such as are cacuated to deceve the ordnary buyer makng
hs purchases under the ordnary condtons whch preva n the partcuar trade to
whch the controversy reates.
13
One of the essenta requstes n an acton to
restran unfar competton s proof of fraud; the ntent to deceve must be shown
before the rght to recover can exst.
14
The advent of the IP Code has not
sgnfcanty changed these rungs as they are fuy n accord wth what Secton 168
of the Code n ts entrety provdes. Deception, passing off and fraud upon the
public are st the key eements that must be present for unfar competton to exst.
2oarding as defined !y the petitioner is not even an act #ithin the
contemplation of the IP Code"
Under a the above approaches, we concude that the "hoardng" - as defned and
charged by the pettoner - does not fa wthn the coverage of the IP Code and of
Secton 168 n partcuar. It does not reate to any patent, trademark, trade name or
servce mark that the respondents have nvaded, ntruded nto or used wthout
proper authorty from the pettoner. Nor are the respondents aeged to be
frauduenty "passng off" ther products or servces as those of the pettoner. The
respondents are not aso aeged to be undertakng any representaton or
msrepresentaton that woud confuse or tend to confuse the goods of the pettoner
wth those of the respondents, or vice versa. What n fact the pettoner aeges s an
act foregn to the Code, to the concepts t embodes and to the acts t reguates; as
aeged, hoardng nfcts unfarness by seekng to mt the opposton's saes by
deprvng t of the bottes t can use for these saes.
In ths ght, hoardng for purposes of destructon s coser to what another aw - R.A.
No. 623 - covers. Unfortunatey, the Act s not the aw n ssue n the present case
and one that the partes dd not consder at a n the search warrant appcaton.
The pettoner n fact coud not have cted t n ts search warrant appcaton snce
the "one specfc offense" that the aw aows and whch the pettoner used was
Secton 168.3 (c).
Based on the foregong, we concude that the RTC correcty rued that the
pettoner's search warrant shoud propery be quashed for the pettoner's faure to
show that the acts mputed to the respondents do not voate the cted offense.
There coud not have been any probabe cause to support the ssuance of a search
warrant because no crme n the frst pace was effectvey charged.
6ilipino &ociety v Tan
1. Whether or not the payng and sgnng of musca compostons whch have
been copyrghted under the provsons of the Copyrght Law (Act 3134) nsde
the estabshment of the defendant-appeee consttute a pubc performance
for proft wthn the meanng and contempaton of the Copyrght Law of the
Phppnes;
Yes. We concede that ndeed there were "pubc performances for proft."
The payng of musc n dne and dance estabshment whch was pad for by the
pubc n purchases of food and drnk consttuted 'performance for proft' wthn a
Copyrght Law."
Thus, t has been expaned that whe t s possbe n such estabshments for the
patrons to purchase ther food and drnks and at the same tme dance to the musc
of the orchestra, the musc s furnshed and used by the orchestra for the purpose of
nducng the pubc to patronze the estabshment and pay for the entertanment n
the purchase of food and drnks. The defendant conducts hs pace of busness for
proft, and t s pubc; and the musc s performed for proft.
In a smar case, the Court rued that "The Performance n a restaurant or hote
dnng room, by persons empoyed by the propretor, of a copyrghted musca
composton, for the entertanment of patrons, wthout charge for admsson to hear
t, nfrnges the excusve rght of the owner of the copyrght."
In the case at bar, t s admtted that the patrons of the restaurant n queston pay
ony for the food and drnks and apparenty not for stenng to the musc. As found
by the tra court, the musc provded s for the purpose of entertanng and amusng
the customers n order to make the estabshment more attractve and desrabe. It
w be noted that for the payng and sngng the musca compostons nvoved, the
combo was pad as ndependent contractors by the appeant. It s therefore obvous
that the expenses entaed thereby are added to the overhead of the restaurant
whch are ether eventuay charged n the prce of the food and drnks or to the
overa tota of addtona ncome produced by the bgger voume of busness whch
the entertanment was programmed to attract. Consequenty, t s beyond queston
that the payng and sngng of the combo n defendant-appeee's restaurant
consttuted performance for proft contempated by the Copyrght Law.
2. And assumng that there were ndeed pubc performances for proft, whether
or not appeee can be hed abe therefor.
No. Appeee's aegaton that the composers of the contested musca compostons
waved ther rght n favor of the genera pubc when they aowed ther nteectua
creatons to become property of the pubc doman before appyng for the
correspondng copyrghts for the same.
The Supreme Court has rued that "Paragraph 33 of Patent Offce Admnstratve
Order No. 3 (as amended, dated September 18, 1947) entted 'Rues of Practce n
the Phppnes Patent Offce reatng to the Regstraton of Copyrght Cams'
promugated pursuant to Repubc Act 165, provdes among other thngs that an
nteectua creaton shoud be copyrghted thrty (30) days after ts pubcaton, f
made n Mana, or wthn sxty (60) days f made esewhere, faure of whch renders
such creaton pubc property."
Indeed, f the genera pubc has made use of the ob|ect sought to be copyrghted
for thrty (30) days pror to the copyrght appcaton the aw deems the ob|ect to
have been donated to the pubc doman and the same can no onger be
copyrghted.
A carefu study of the records reveas that the song "Dah Sa Iyo" whch was
regstered on Apr 20, 1956 became popuar n rados, |uke boxes, etc. ong before
regstraton whe the song "The Nearness Of You" regstered on |anuary 14, 1955
had become popuar twenty fve (25) years pror to 1968, (the year of the hearng)
or from 1943 and the songs "Sapagkat Ikaw Ay Akn" and "Sapagkat Kam Ay Tao
Lamang" both regstered on |uy 10, 1966, appear to have been known and sang by
the wtnesses as eary as 1965 or three years before the hearng n 1968. The
testmones of the wtnesses at the hearng of ths case on ths sub|ect were
unrebutted by the appeant.
Under the crcumstances, t s cear that the musca compostons n queston had
ong become pubc property, and are therefore beyond the protecton of the
Copyrght Law.
A,&C,0 v Phil Multimedia
&anrio v Lim
Evdence on record woud show that respondent bought hs merchandse from
egtmate sources, as shown by offca recepts ssued by |C Lucas Creatve
Products, Inc., Paper Lne Graphcs, Inc. and Meawares Manufacturng Corporaton.
In fact, n her etter dated May 23, 2002, Ms. Ma. Angea S. Garca certfed that |C
Lucas Creatve Products, Inc., Paper Lne Graphcs, Inc. and Meawares
Manufacturng Corporaton are authorzed to produce certan Sanro products. Whe
t appears that some of the tems sezed durng the search are not among those
products whch |GGI| authorzed these estabshments to produce, the fact remans
that respondent bought these from the abovected egtmate sources. At ths
|uncture, t bears stressng that respondent reed on the representatons of these
manufacturers and dstrbutors that the tems they sod were genune. As such, t s
not ncumbent upon respondent to verfy from these sources what tems |GGI| ony
authorzed them to produce. Thus, as far as respondent s concerned, the tems n
hs possesson are not infringing copies of the original 9petitioner:s;
products"
,ayanihan v ,MG
Respondent |ose Mar Chan entered nto a contract wth Bayanhan Musc
Phppnes, Inc., whereunder the former assgned to the atter a hs rghts,
nterests and partcpaton over hs musca composton "Can We |ust Stop and Tak
A Whe". On March 11, 1976, the partes entered nto a smar contract over Chan's
other musca composton entted "Afrad For Love To Fade".
Bayanhan apped for and was granted by the Natona Lbrary a Certfcate of
Copyrght Regstraton for each of the two musca compostons.
Wthout the knowedge and consent of pettoner Bayanhan, Chan authorzed hs
co-respondent BMG Records (Ppnas) |BMG| to record and dstrbute the
aforementoned musca compostons n a then recenty reeased abum of snger
Lea Saonga.
On August 8, 2000, Bayanhan fed wth the RTC a compant aganst Chan and BMG
for voaton of Secton 216 of Repubc Act No. 8293, otherwse known as the
Inteectua Property Code of the Phppnes, wth a prayer for the ssuance of
Temporary Restranng Order (TRO) and/or wrt of premnary n|uncton, en|onng
respondent BMG from further recordng and dstrbutng the sub|ect musca
compostons n whatever form of musca products, and Chan from further grantng
any authorty to record and dstrbute the same musca compostons.
Chan, for hs part, fed hs own answer to the compant, aegng that: (1) t was
never hs ntenton to dvest hmsef of a hs rghts and nterest over the musca
compostons n queston; (2) the contracts he entered nto wth Bayanhan are mere
musc pubcaton agreements gvng Bayanhan, as assgnee, the power to
admnster hs copyrght over hs two songs and to act as the excusve pubsher
thereof; (3) he was not cognzant of the appcaton made by and the subsequent
grant of copyrghts to Bayanhan; and (4) ,ayanihan #as remiss in its
o!ligations under the contracts !ecause it failed to effectively advertise
his musical compositions for almost t#enty <=>? years, hence, he caused
the rescission of said contracts in @AAB"
Hed
Unquestonaby, respondent Chan, beng undenaby the composer and author of
the yrcs of the two (2) songs, s protected by the mere fact aone that he s the
creator thereof, conformaby wth Repubc Act No. 8293
An examnaton of pettoner's verfed compant n ght of the two (2) contracts
sued upon and the evdence t adduced durng the hearng on the appcaton for
premnary n|uncton, yeds not the exstence of the requste rght protectabe by
the provsona reef but rather a ngerng doubt on whether there s or there s no
such rght. The two contracts between pettoner and Chan reatve to the musca
compostons sub|ect of the sut contan the foowng dentca stpuatons:
7. It s aso hereby agreed to by the partes heren that n the event the PUBLISHER
|pettoner heren| fas to use n any manner whatsoever wthn two (2) years any of
the compostons covered by ths contract, then such composton may be reeased
n favor of the WRITER and excuded from ths contract and the PUBLISHER sha
execute the necessary reease n wrtng n favor of the WRITER upon request of the
WRITER;
9. Ths contract may be renewed for a perod of two-and-one-haf (2 1/2) years at
the opton of the PUBLISHER. Renewa may be made by the PUBLISHER by advsng
the WRITER of such renewa n wrtng at east fve (5) days before the expraton of
ths contract.
It woud thus appear that the two (2) contracts expred on October 1, 1975 and
March 11, 1978, respectvey, there beng nether an aegaton, much ess proof,
that pettoner Bayanhan ever made use of the compostons wthn the two-year
perod agreed upon by the partes.
Anent the copyrghts obtaned by pettoner on the bass of the sefsame two (2)
contracts, suffce t to say that such purported copyrghts are not presumed to
subsst n accordance wth Secton 218|a| and |b|, of the Inteectua Property Code,
10 because respondent Chan had put n ssue the exstence thereof.
It s noted that Chan revoked and termnated sad contracts, aong wth others, on
|uy 30, 1997, or amost two years before pettoner Bayanhan wrote ts sort of
compant/demand etter dated December 7, 1999 regardng the recent
"use/recordng of the songs 'Can We |ust Stop and Tak A Whe' and 'Afrad for Love
to Fade,"' or amost three (3) years before pettoner fed ts compant on August 8,
2000, theren prayng, nter aa, for n|unctve reef. By then, t woud appear that
pettoner had no more rght that s protectabe by n|uncton.
'ho v &ummerville
Pettoner Kho fed a compant for n|uncton and damages aganst the
respondents, aegng that she has copyrght and patent rghts on Chn Chun Su
cream products, but the respondent advertsed and sod pettoner's cream products
under brand name Chn Chun Sun, n smar contaners that pettoner uses, thereby
mseadng the pubc. The tra court granted a wrt of premnary n|uncton.
Pendng appea, the tra court rendered a fna decson rung that pettoner does
not have trademark rghts on the name and contaner of the beauty cream product.
The CA nufed the wrt of premnary n|uncton ssued and dened pettoner's
moton for reconsderaton.
On appea, pettoner camed that the CA erred n not dsmssng the petton for
certorar for non-compance wth the rue on forum shoppng. Pettoner aso
camed that the CA unduy deayed the resouton of her moton for reconsderaton.
Hed
The Supreme Court affrmed the CA decson and hed: that a premnary n|uncton
order cannot be ssued for the reason that pettoner has not proven that she has a
cear rght over the sub|ect trade name and ts contaner to the excuson of others,
not havng proven that she has a regstered trademark thereto or she used t before
anyone ese dd. The name and contaner of a beauty cream product are proper
sub|ect of a trademark, not of pettoner's copyrght and patent regstraton thereof.
Thus, she has no rght to the excusve use of the same for the reason that they are
not approprate sub|ect of the sad nteectua rghts. The Supreme Court aso hed
that pettoner shoud have fed a comment on, not a moton to dsmss, the petton
for certorar before the Court of Appeas; and that non-observance of the perod for
decdng cases or ther ncdents dd not render the CA |udgment neffectve or vod.
COMMERCIAL LAW; INTELLECTUAL PROPERTY LAW; SUB|ECTS OF TRADEMARK,
COPYRIGHT AND PATENTS, DISTINGUISHED; NAME AND CONTAINER OF A BEAUTY
CREAM PRODUCT ARE PROPER SUB|ECTS OF A TRADEMARK. - Trademark,
copyrght and patents are dfferent nteectua property rghts that cannot be
nterchanged wth one another. A trademark s any vsbe sgn capabe of
dstngushng the goods (trademark) or servces (servce mark) of an enterprse and
sha ncude a stamped or marked contaner of goods. In reaton thereto, a trade
name means the name or desgnaton dentfyng or dstngushng an enterprse.
Meanwhe, the scope of a copyrght s confned to terary and artstc works whch
are orgna nteectua creatons n the terary and artstc doman protected from
the moment of ther creaton. Patentabe nventons, on the other hand, refer to any
technca souton of a probem n any fed of human actvty whch s new, nvoves
an nventve step and s ndustray appcabe.
Pearl and Dean v &M
Pettoner Pear and Dean (Ph.), Inc. s a corporaton engaged n the manufacture of
advertsng dspay unts smpy referred to as ght boxes. Pear and Dean was abe
to secure a Certfcate of Copyrght Regstraton over the umnated dspay unts.
Sometme n 1985, Pear and Dean negotated wth respondent Shoemart, Inc. (SMI)
for the ease and nstaaton of the ght boxes n SM Cty North Edsa. Snce SM Cty
North Edsa was under constructon at that tme, SMI offered as an aternatve, SM
Makat and SM Cubao, to whch Pear and Dean agreed. Ony the contract for SM
Makat, however, was returned sgned. However, n 1986, SMI rescnded the
contract for SM Makat due to non-performance of the terms thereof. Sometme n
1989, Pear and Dean receved reports that exact copes of ts ght boxes were
nstaed at SM Cty and n the fastfood secton of SM Cubao. It further dscovered
that respondent North Edsa Marketng Inc. (NEMI) s a sster company of SMI and
was set up prmary to se advertsng space n ghted dspay unts ocated n SMI's
dfferent branches. In the ght of ts dscoveres, Pear and Dean, sent a etter to
both SMI and NEMI en|onng them to cease usng the sub|ect ght boxes and to
remove the same from SMI's estabshments and the payment to Pear and Dean of
compensatory damages n the amount of Twenty Mon Pesos (P20,000,000.00).
Camng that both SMI and NEMI faed to meet a ts demands, Pear and Dean
fed a case for nfrngement of trademark and copyrght, unfar competton and
damages. The Regona Tra Court of Makat rued n favor of Pear and Dean. On
appea, however, the Court of Appeas reversed the tra court. The appeate court
uphed SMI when t posted that what was copyrghted were the technca drawngs
ony, and not the ght boxes themseves, and snce the ght boxes cannot, by any
stretch of the magnaton, be consdered as ether prnts, pctora ustratons,
advertsng copes, abes, tags or box wraps, to be propery cassfed as
copyrghtabe under the aw. Hence, the present petton. HEScID
Hed
The Supreme Court affrmed the decson of the Court of Appeas and dened the
petton. Accordng to the Court, pettoner Pear & Dean secured ts copyrght under
the cassfcaton cass "O" work or under Secton 2 (O) of P.D. 49. As such,
pettoner's copyrght protecton extended ony to the technca drawngs and not to
the ght box tsef because the atter was not at a n the category of "prnts,
pctora ustratons, advertsng copes, abes, tags and box wraps." Whe P & D
ndeed owned a vad copyrght, the same coud have referred ony to the technca
drawngs wthn the category of "pctora ustratons." It coud not have possby
stretched out to ncude the underyng ght box The strct appcaton of the aw's
enumeraton n Secton 2 of PD 49 prevented the Court from gvng pettoner even
a tte eeway, that s, even f ts copyrght certfcate was entted "Advertsng
Dspay Unts." What the aw does not ncude, t excudes, and for the good reason:
the ght box was not a terary or artstc pece whch coud be copyrghted under
the copyrght aw. The Court aso rued that pettoner coud not egay prevent
anyone from manufacturng or commercay usng ts nventon for the man reason
that t never secured a patent for t. The Court emphaszed that to be abe to
effectvey and egay precude others from copyng and proftng from an nventon,
a patent s a prmorda requrement. No patent, no protecton. The utmate goa of
a patent system s to brng new desgns and technooges nto the pubc doman
through dscosure. Ideas, once dscosed to the pubc wthout the protecton of a
vad patent, are sub|ect to appropraton wthout sgnfcant restrant.
PETITIONER'S COPYRIGHT PROTECTION EXTENDED ONLY TO THE TECHNICAL
DRAWINGS AND NOT TO THE LIGHT BOX ITSELF BECAUSE THE LATTER WAS NOT AT
ALL IN THE CATEGORY OF "PRINTS, PICTORIALS ILLUSTRATIONS, ADVERTISING
COPIES, LABELS, TAGS AND BOX WRAPS" UNDER SECTION 2, (O) OF THE LAW. -
Pettoner's appcaton for a copyrght certfcate as we as Copyrght Certfcate No.
PD-R2588 ssued by the Natona Lbrary on |anuary 20, 1981 - ceary stated that
t was for a cass "O" work under Secton 2 (O) of PD 49 (The Inteectua Property
Decree) whch was the statute then prevang. Sad Secton 2 expressy enumerated
the works sub|ect to copyrght: SEC. 2. The rghts granted by ths Decree sha, from
the moment of creaton, subsst wth respect to any of the foowng works: . . . (O)
Prnts, pctora ustratons, advertsng copes, abes, tags, and box wraps; . . .
Athough pettoner's copyrght certfcate was entted "Advertsng Dspay Unts"
(whch depcted the box-type eectrca devces), ts cam of copyrght nfrngement
cannot be sustaned. Copyrght, n the strct sense of the term, s purey a statutory
rght. Beng a mere statutory grant, the rghts are mted to what the statute
confers. It may be obtaned and en|oyed ony wth respect to the sub|ects and by
the-persons, and on terms and condtons specfed n the statute. Accordngy, t
can cover ony the works fang wthn the statutory enumeraton or descrpton. P &
D secured ts copyrght under the cassfcaton cass "O" work. Ths beng so,
pettoner's copyrght protecton extended ony to the technca drawngs and not to
the ght box tsef because the atter was not at a n the category of "prnts,
pctora ustratons, advertsng copes, abes, tags and box wraps." Stated
otherwse, even as we fnd that P & D ndeed owned a vad copyrght, the same
coud have referred ony to the technca drawngs wthn the category of "pctora
ustratons." It coud not have possby stretched out to ncude the underyng ght
box. The strct appcaton of the aw's enumeraton n Secton 2 prevents us from
gvng pettoner even a tte eeway, that s, even f ts copyrght certfcate was
entted "Advertsng Dspay Unts." What the aw does not ncude, t excudes, and
for the good reason: the ght box was not a terary or artstc pece whch coud be
copyrghted under the copyrght aw. And no ess ceary, nether coud the ack of
statutory authorty to make the ght box copyrghtabe be remeded by the
smpstc act of enttng the copyrght certfcate ssued by the Natona Lbrary as
"Advertsng Dspay Unts." caHIAS
2. ID.; ID.; SINCE PETITIONER NEVER SECURED A PATENT OVER THE LIGHT
BOXES, IT THEREFORE ACOUIRED NO PATENT RIGHTS WHICH COULD HAVE
PROTECTED ITS INVENTION; NO PATENT, NO PROTECTION; CASE AT BAR. - For
some reason or another, pettoner never secured a patent for the ght boxes. It
therefore acqured no patent rghts whch coud have protected ts nventon, f n
fact t reay was. And because t had no patent, pettoner coud not egay prevent
anyone from manufacturng or commercay usng the contrapton. In Creser
Precson Systems, Inc. vs. Court of Appeas, we hed that "there can be no
nfrngement of a patent unt a patent has been ssued, snce whatever rght one
has to the nventon covered by the patent arses aone from the grant of
patent. . . . (A)n nventor has no common aw rght to a monopoy of hs nventon.
He has the rght to make use of and vend hs nventon, but f he vountary
dscoses t, such as by offerng t for sae, the word s free to copy and use t wth
mpunty. A patent, however, gves the nventor the rght to excude a others. As a
patentee, he has the excusve rght of makng, seng or usng the nventon. On
the assumpton that pettoner's advertsng unts were patentabe nventons,
pettoner reveaed them fuy to the pubc by submttng the engneerng drawngs
thereof to the Natona Lbrary. To be abe to effectvey and egay precude others
from copyng and proftng from the nventon, a patent s a prmorda requrement.
No patent, no protecton. The utmate goa of a patent system s to brng new
desgns and technooges nto the pubc doman through dscosure. Ideas, once
dscosed to the pubc wthout the protecton of a vad patent, are sub|ect to
appropraton wthout sgnfcant restrant. ASHEca
3. ID.; ID.; NOT HAVING UNDERGONE THE STRINGENT REOUIREMENTS AND
EXHAUSTIVE EXAMINATION FOR PATENTS, PETITIONER CANNOT EXCLUDE OTHERS
FROM THE MANUFACTURE, SALE OR COMMERCIAL USE OF THE LIGHT BOXES ON
THE SOLE BASIS OF ITS COPYRIGHT CERTIFICATE OVER THE TECHNICAL DRAWINGS.
- The patent aw has a three-fod purpose: "frst, patent aw seeks to foster and
reward nventon; second, t promotes dscosures of nventons to stmuate further
nnovaton and to permt the pubc to practce the nventon once the patent
expres; thrd, the strngent requrements for patent protecton seek to ensure that
deas n the pubc doman reman there for the free use of the pubc." It s ony
after an exhaustve examnaton by the patent offce that a patent s ssued. Such
an n-depth nvestgaton s requred because "n rewardng a usefu nventon, the
rghts and wefare of the communty must be fary deat wth and effectvey
guarded. To that end, the prerequstes to obtanng a patent are strcty observed
and when a patent s ssued, the mtatons on ts exercse are equay strcty
enforced. To begn wth, a genune nventon or dscovery must be demonstrated
est n the constant demand for new appances, the heavy hand of trbute be ad
on each sght technoogca advance n art." There s no such scrutny n the case of
copyrghts nor any notce pubshed before ts grant to the effect that a person s
camng the creaton of a work. The aw confers the copyrght from the moment of
creaton and the copyrght certfcate s ssued upon regstraton wth the Natona
Lbrary of a sworn ex parte cam of creaton. Therefore, not havng gone through
the arduous examnaton for patents, the pettoner cannot excude others from the
manufacture, sae or commerca use of the ght boxes on the soe bass of ts
copyrght certfcate over the technca drawngs. HcACST
4. ID.; ID.; PETITIONER'S FAILURE TO SECURE A TRADEMARK REGISTRATION FOR
SPECIFIC USE ON THE LIGHT BOXES MEANT THAT THERE COULD NOT HAVE BEEN
ANY TRADEMARK INFRINGEMENT SINCE REGISTRATION WAS AN ESSENTIAL
ELEMENT THEREOF. - The Court of Appeas correcty cted Faberge Inc. vs.
Intermedate Appeate Court, where we, nvokng Secton 20 of the od Trademark
Law, rued that "the certfcate of regstraton ssued by the Drector of Patents can
confer (upon pettoner) the excusve rght to use ts own symbo ony to those
goods specfed n the certfcate, sub|ect to any condtons and mtatons specfed
n the certfcate . . . One who has adopted and used a trademark on hs goods does
not prevent the adopton and use of the same trademark by others or products
whch are of a dfferent descrpton. " Faberge, Inc. was correct and was n fact
recenty reterated n Canon Kabushk Kasha vs. Court of Appeas. Assumng
arguendo that "Poster Ads" coud vady quafy as a trademark, the faure of P & D
to secure a trademark regstraton for specfc use on the ght boxes meant that
there coud not have been any trademark nfrngement snce regstraton was an
essenta eement thereof. SAcaDE
5. ID.; ID.; NO UNFAIR COMPETITION UNDER THE LAW ON COPYRIGHTS. - If at
a, the cause of acton shoud have been for unfar competton, a stuaton whch
was possbe even f P & D had no regstraton. However, whe the pettoner's
compant n the RTC aso cted unfar competton, the tra court dd not fnd prvate
respondents abe therefor. Pettoner dd not appea ths partcuar pont; hence, t
cannot now revve ts cam of unfar competton. But even dsregardng procedura
ssues, we nevertheess cannot hod respondents guty of unfar competton. By the
nature of thngs, there can be no unfar competton under the aw on copyrghts
athough t s appcabe to dsputes over the use of trademarks. Even a name or
phrase ncapabe of appropraton as a trademark or tradename may, by ong and
excusve use by a busness (such that the name or phrase becomes assocated wth
the busness or product n the mnd of the purchasng pubc), be entted to
protecton aganst unfar competton. In ths case, there was no evdence, that P &
D's use of "Poster Ads" was dstnctve or we-known. As noted by the Court of
Appeas, pettoner's expert wtnesses hmsef had testfed that "'Poster Ads' was
too generc a name. So t was dffcut to dentfy t wth any company, honesty
speakng." Ths cruca admsson by ts own expert wtness that "Poster Ads" coud
not be assocated wth P & D showed that, n the mnd of the pubc, the goods and
servces carryng the trademark "Poster Ads" coud not be dstngushed from the
goods and servces of other enttes. aCcSDT
6. ID.; ID.; DOCTRINE OF SECONDARY MEANING; NOT APPLICABLE IN CASE AT
BAR. - Ths fact aso prevented the appcaton of the doctrne of secondary
meanng. "Poster Ads" was generc and ncapabe of beng used as a trademark
because t was used n the fed of poster advertsng, the very busness engaged n
by pettoner. "Secondary meanng" means that a word or phrase orgnay
ncapabe of excusve appropraton wth reference to an artce n the market
(because t s geographcay or otherwse descrptve) mght nevertheess have
been used for so ong and so excusvey by one producer wth reference to hs
artce that, n the trade and to that branch of the purchasng pubc, the word or
phrase has come to mean that the artce was hs property. The admsson by
pettoner's own expert wtness that he hmsef coud not assocate "Poster Ads"
wth pettoner P & D because t was "too generc" defntey precuded the
appcaton of ths excepton.