RULINGS OF THE CASES IN INTELLECTUAL

PROPERTY LAWS
Prepared by Glenn Rey Anino
University of Cebu

TAÑADA v. ANGARA, G.R. No. 118295. May 2, 1997; 272

SCRA
F Issue: WON the General Provisions and Basic Principles of the
Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) intrudes on the power of theSupreme Court to
promulgate rules concerning pleading, practice and procedures.
¾ Suffice it to say that the reciprocity clause more
than justifies such intrusion, if any actually exists. In the area of
trade related aspects of intellectual property rights (TRIPS, for
brevity): Each Member shall accord to the nationals of other
Members treatment no less favorable than that it accords to its
own nationals with regard to the protection of intellectual property:
¾ a WTO Member is required to provide a rule of
disputable (not the words "in the absence of proof to the
contrary") presumption that a product shown to be identical to one
produced with the use of a patented process shall be deemed to
have been obtained by the (illegal) use of the said patented
process, (1) where such product obtained by the patented product
is new, or (2) where there is "substantial likelihood “that the
identical product was made with the use of the said patented
process but the owner of the patent could not determine the exact
process used in obtaining such identical product. Hence, the
"burden of proof" contemplated by Article 34 should actually be
understood as the duty of the alleged patent infringer to overthrow
such presumption. Such burden, properly understood, actually
refers to the "burden of evidence" (burden of going forward)
placed on the producer of the identical (or fake)product to show
that his product was produced without the use of the patented
process. The foregoing notwithstanding, the patent owner still has
the "burden of proof" since, regardless of the presumption
provided under paragraph 1 of Article 34, such owner still has to
introduce evidence of the existence of the alleged identical
product, the fact that it is "identical" to the genuine one produced
by the patented process and the fact of "newness" of the genuine
product or the fact of "substantial likelihood" that the identical
product was made by the patented process. Moreover, it should
be noted that the requirement of Article 34 to provide a disputable
presumption applies only if (1) the product obtained by the
patented process in NEW or (2) there is a substantial likelihood
that the identical product was made by the process and the
process owner has not been able through reasonable effort to
determine the process used. Where either of these two provisos
does not obtain, members shall be free to determine the
appropriate method of implementing the provisions of TRIPS
within their own internal systems and processes.
F While the Constitution indeed mandates a bias in favor of
Filipino goods, services, labor and enterprises, at the same time,
it recognizes the need for business exchange with the rest of the
world on the bases of equality and reciprocity and limits protection
of Filipino enterprises only against foreign competition and trade
practices that are unfair. In other words, the Constitution did not
intend to pursue an isolationist policy. It did not shut out foreign
investments, goods and services in the development of the
Philippine economy. While the Constitution does not encourage
the unlimited entry of foreign goods, services and investments
into the country, it does not prohibit them either. In fact, it allows
an exchange on the basis of equality and reciprocity, frowning
only on foreign competition that is unfair.
F There is hardly therefore any basis for the statement that under
the WTO, local industries and enterprises will all be wiped out and
that Filipinos will be deprived of control of the economy. Quite the
contrary, the weaker situations of developing nations like the
Philippines have been taken into account; thus, there would be no
basis to say that in joining the WTO, the respondents have
gravely abused their discretion. True, they have made a bold
decision to steer the ship of state into the yet uncharted sea of
economic liberalization. But such decision cannot be set aside on
the ground of grave abuse of discretion, simply because we
disagree with it or simply because we believe only in other
economic policies.
F Aside from envisioning a trade policy based on “equality and
reciprocity,” the fundamental law encourages industries that are
“competitive in both domestic and foreign markets,” thereby
demonstrating a clear policy against a sheltered domestic trade
environment, but one in favor of the gradual development of
robust industries that can compete with the best in the foreign
markets. Indeed, Filipino managers and Filipino enterprises have
shown capability and tenacity to compete internationally. And
given a free trade environment, Filipino entrepreneurs and
managers in Hongkong have demonstrated the Filipino capacity
to grow and to prosper against the best offered under a policy of
laissez faire.
F Petitioners aver that paragraph 1, Article 34 of the General
Provisions and Basic Principles of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS) intrudes
on the power of the Supreme Court to promulgate rules
concerning pleading, practice and procedures.xxx By and large,
the arguments adduced in connection with our disposition of the
third issue -- derogation of legislative power - will apply to this
fourth issue also. Suffice it to say that the reciprocity clause more
than justifies such intrusion, if any actually exists. Besides, Article
34 does not contain an unreasonable burden, consistent as it is
with due process and the concept of adversarial dispute
settlement inherent in our judicial system. So too, since the
Philippine is a signatory to most international conventions on
patents, trademarks and copyrights, the adjustment in legislation
and rules of procedure will not be substantial
F Hence, the “burden of proof” contemplated by Article 34 should
actually be understood as the duty of the alleged patent infringer
to overthrow such presumption. Such burden, properly
understood, actually refers to the “burden of evidence” (burden of
going forward) placed on the producer of the identical (or fake)
product to show that his product was produced without the use of
the patented process. The foregoing notwithstanding, the patent
owner still has the “burden of proof” since, regardless of the
presumption provided under paragraph 1 of Article 34, such
owner still has to introduce evidence of the existence of the
alleged identical product, the fact that it is “identical” to the
genuine one produced by the patented process and the fact of
“newness” of the genuine product or the fact of “substantial
likelihood” that the identical product was made by the patented
process.

MIRPURI vs. COURT OF APPEALS; 318 SCRA

F Definition of Trademark: This definition has been simplified in
R.A. No. 8293, the Intellectual Property Code of the Philippines,
which defines a "trademark" as "any visible sign capable of
distinguishing goods." In Philippine jurisprudence, the function of
a trademark is to point out distinctly the origin or ownership of the
goods to which it is affixed; to secure to him, who has been
instrumental in bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to assure the public
that they are procuring the genuine article; to prevent fraud and
imposition; and to protect the manufacturer against substitution
and sale of an inferior and different article as his product
F THREE DISTINCT FUNCTIONS OF TRADEMARKS: Modern
authorities on trademark law view trademarks as performing three
distinct functions: (1) they indicate origin or ownership of the
articles to which they are attached; (2) they guarantee that those
articles come up to a certain standard of quality; and (3) they
advertise the articles they symbolize.
F Today, the trademark is not merely a symbol of origin and
goodwill; it is often the most effective agent for the actual creation
and protection of goodwill. It imprints upon the public mind an
anonymous and impersonal guaranty of satisfaction, creating a
desire for further satisfaction. In other words, the mark actually
sells the goods. The mark has become the "silent salesman," the
conduit through which direct contact between the trademark
owner and the consumer is assured. It has invaded popular
culture in ways never anticipated that it has become a more
convincing selling point than even the quality of the article to
which it refers
F The Convention of Paris for the Protection of Industrial
Property, otherwise known as the Paris Convention, is a
multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of
source or appellations of origin, and at the same time aims to
repress unfair competition
F In short, foreign nationals are to be given the same treatment in
each of the member countries as that country makes available to
its own citizens. Nationals of the various member nations are thus
assured of a certain minimum of international protection of their
industrial property.
F Article 6bis governs protection of well-known trademarks.
Under the first paragraph, each country of the Union bound itself
to undertake to refuse or cancel the registration, and prohibit the
use of a trademark which is a reproduction, imitation or
translation, or any essential part of which trademark constitutes a
reproduction, liable to create confusion, of a mark considered by
the competent authority of the country where protection is sought,
to be well-known in the country as being already the mark of a
person entitled to the benefits of the Convention, and used for
identical or similar goods.
F Article 6bis of the Paris Convention is a self-executing
provision and does not require legislative enactment to give effect
in the member country.
F The essential requirement under Article 6bis is that the
trademark to be protected must be "well-known" in the country
where protection is sought. The power to determine whether a
trademark is well-known lies in the "competent authority of the
country of registration or use." This competent authority would be
either the registering authority if it has the power to decide this, or
the courts of the country in question if the issue comes before a
court.
F Intellectual and industrial property rights cases are not
simple property cases. Trademarks deal with the psychological
function of symbols and the effect of these symbols on the public
at large. Trademarks play a significant role in communication,
commerce and trade, and serve valuable and interrelated
business functions, both nationally and internationally. For this
reason, all agreements concerning industrial property, like those
on trademarks and tradenames, are intimately connected with
economic development. Industrial property encourages
investments in new ideas and inventions and stimulates creative
efforts for the satisfaction of human needs. They speed up
transfer of technology and industrialization, and thereby bring
about social and economic progress. These advantages have
been acknowledged by the Philippine government itself.
F Res judicata therefore does not apply to the instant case
and respondent Court of Appeals did not err in so ruling. IPC
No. 2049 raised the issue of ownership of the trademark, the
first registration and use of the trademark in the United
States and other countries, and the international recognition
and reputation of the trademark established by extensive use
and advertisement of private respondent's products for over
forty years here and abroad. These are different from the
issues of confusing similarity and damage in IPC No. 686. The
issue of prior use may have been raised in IPC No. 686 but this
claim was limited to prior use in the Philippines only. Prior use in
IPC No. 2049 stems from private respondent's claim as originator
of the word and symbol "Barbizon," as the first and registered
user of the mark attached to its products which have been sold
and advertised worldwide for a considerable number of years
prior to petitioner's first application for registration of her
trademark in the Philippines. Indeed, these are substantial
allegations that raised new issues and necessarily gave private
respondent a new cause of action. Res judicata does not apply
to rights, claims or demands, although growing out of the same
subject matter, which constitute separate or distinct causes of
action and were not put in issue in the former action.
F It is also noted that the oppositions in the first and second
cases are based on different laws. The opposition in IPC No.
686 was based on specific provisions of the Trademark Law, i.e.,
Section 4 (d) on confusing similarity of trademarks and Section 8
on the requisite damage to file an opposition to a petition for
registration. The opposition in IPC No. 2049 invoked the Paris
Convention, particularly Article 6bis thereof, E.O. No. 913 and the
two Memoranda of the Minister of Trade and Industry. This
opposition also invoked Article 189 of the Revised Penal Code
which is a statute totally different from the Trademark Law.

SASOT v. PEOPLE
F A foreign corporation not engaged and licensed to do business
in the Philippines may maintain an action for unfair competition.
Unfair completion punishable under Art. 189 of the RPC is a
public crime.

PEARL & DEAN v. SHOEMART, 409 SCRA 231

F NO COPYRIGHT INFRINGEMENT: Copyright, in the strict
sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers.
It may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the
statute. Accordingly, it can cover only the works falling within the
statutory enumeration or description. P & D secured its copyright
under the classification class “O” work. This being so, 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, pictorial illustrations, advertising copies,
labels, tags and box wraps.” Stated otherwise, even as we find
that P & D indeed owned a valid copyright, the same could have
referred only to the technical drawings within the category of
“pictorial illustrations.” It could not have possibly stretched out to
include the underlying light box.
F NO PATENT INFRINGEMENT: There can be no infringement of
a patent until a patent has been issued since whatever right one
has to the invention covered by the patent arises alone from the
grant of patent. An inventor has no common law right to a
monopoly of his invention. He has the right to make use of and
vend his invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to
exclude all others. As a patentee, he has the exclusive right of
making, selling or using the invention. On the assumption that
petitioner’s advertising units were patentable inventions, petitioner
revealed them fully to the public by submitting the engineering
drawings thereof to the National Library.
F To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a primordial
requirement. No patent, no protection. The ultimate goal of a
patent system is to bring new designs and technologies into the
public domain through disclosure. Ideas, once disclosed to the
public without the protection of a valid patent, are subject to
appropriation without significant restraint
F The patent law has a three-fold purpose: “first, patent law
seeks to foster and reward invention; second, it promotes
disclosures of inventions to stimulate further innovation and to
permit the public to practice the invention once the patent expires;
third, the stringent requirements for patent protection seek to
ensure that ideas in the public domain remain there for the free
use of the public
F One who has adopted and used a trademark on his goods
does not prevent the adoption and use of the same trademark by
others for products which are of a different description.” The
certificate of registration issued by the Director of Patents
can confer the exclusive right to use its own symbol only to
those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate.
F By the nature of things, there can be no unfair competition
under the law on copyrights although it is applicable to disputes
over the use of trademarks. Even a name or phrase incapable of
appropriation as a trademark or tradename may, by long and
exclusive use by a business (such that the name or phrase
becomes associated with the business or product in the mind of
the purchasing public), be entitled to protection against unfair
competition.[27] In this case, there was no evidence that P & D’s
use of “Poster Ads” was distinctive or well-known. As noted by the
Court of Appeals, petitioner’s expert witnesses himself had
testified that “ ‘Poster Ads’ was too generic a name. So it was
difficult to identify it with any company, honestly speaking.”[28]
This crucial admission by its own expert witness that “Poster Ads”
could not be associated with P & D showed that, in the mind of
the public, the goods and services carrying the trademark “Poster
Ads” could not be distinguished from the goods and services of
other entities.

KHO v. COURT OF APPEALS, GR NO. 11578, MARCH 19,

2002; 379 SCRA
F Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another.
F A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying
or distinguishing an enterprise.
F Meanwhile, the scope of a copyright is confined to literary
and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment of
their creation.
 F Patentable inventions, on the other hand, refer to any technical
solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable
F Issue: WON the copyright and patent over the name and
container of a beauty cream product would entitle the registrant to
the use and ownership over the same to the exclusion of others.
¾ No. Petitioner has no right to support her claim for
the exclusive use of the subject trade name and its container. The
name and container of a beauty cream product are proper
subjects of a trademark inasmuch as the same falls squarely
within its definition. In order to be entitled to exclusively use
the same in the sale of the beauty cream product, the user
must sufficiently prove that she registered or used it before
anybody else did. The petitioner’s copyright and patent
registration of the name and container would not guarantee her
the right to the exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued for
the reason that the petitioner has not proven that she has a clear
right over the said name and container to the exclusion of others,
not having proven that she has registered a trademark thereto or
used the same before anyone did.
¾ The dispositive portion of said decision held that
the petitioner does not have trademark rights on the name and
container of the beauty cream product. The said decision on the
merits of the trial court rendered the issuance of the writ of a
preliminary injunction moot and academic notwithstanding the fact
that the same has been appealed in the Court of Appeals.
F Finally, we rule that the Court of Appeals correctly denied the
petitioner ’s several motions for contempt of court. There is
nothing contemptuous about the advertisements complained of
which, as regards the proceedings in CA-G.R. SP No. 27803
merely announced in plain and straightforward language the
promulgation of the assailed Decision of the appellate court.
Moreover, pursuant to Section 4 of Rule 39 of the Revised Rules
of Civil Procedure, the said decision nullifying the injunctive writ
was immediately executory.

PHIL PHARMAWEALTH, INC. v. PFIZER (PHIL.), INC., G.R. No.

167715, NOVEMBER 17, 2010, 635 SCRA 140
F Issue: WON an injunctive relief be issued based on an action of
patent infringement when the patent allegedly infringed has
already lapsed.
¾ No. The exclusive right of a patentee to make, use
and sell a patented product, article or process exists only during
the term of the patent. It is clear from the above-quoted provision
of law that the exclusive right of a patentee to make, use and sell
a patented product, article or process exists only during the term
of the patent. In the instant case, Philippine Letters Patent No.
21116, which was the basis of respondents in filing their complaint
with the BLA-IPO, was issued on July 16, 1987. This fact was
admitted by respondents themselves in their complaint. They also
admitted that the validity of the said patent is until July 16, 2004,
which is in conformity with Section 21 of RA 165, providing that
the term of a patent shall be seventeen (17) years from the date
of issuance thereof. Section 4, Rule 129 of the Rules of Court
provides that an admission, verbal or written, made by a party in
the course of the proceedings in the same case, does not require
proof and that the admission may be contradicted only by
showing that it was made through palpable mistake or that no
such admission was made. In the present case, there is no
dispute as to respondents' admission that the term of their patent
expired on July 16, 2004. Neither is there evidence to show that
their admission was made through palpable mistake. Hence,
contrary to the pronouncement of the CA, there is no longer any
need to present evidence on the issue of expiration of
respondents' patent.
 F What tribunal has jurisdiction to review the decisions of
the Director of Legal Affairs of the Intellectual Property
Office?
¾ According to IP Code, the Director General of the
IPO exercises exclusive jurisdiction over decisions of the IPO-
BLA. The question in the CA concerns an interlocutory order, and
not a decision. Since the IP Code and the Rules and Regulations
are bereft of any remedy regarding interlocutory orders of the
IPO-BLA, the only remedy available to Pfizer is to apply the Rules
and Regulations suppletorily. Under the Rules, a petition for
certiorari to the CA is the proper remedy. This is consistent with
the Rules of Court. Thus, the CA had jurisdiction.

IN-N-OUT BURGER, INC. v. SEHWANI, INCORPORATED and/

or BBENITA’S FRITES, INC., GR No. 179127, 575 SCRA 535
F Issue: WON the IPO (administrative bodies) have jurisdiction to
cases involving unfair competition.
¾ Yes. Sec. 160 and 170, which are found under
Part III of the IP Code, recognize the concurrent jurisdiction of civil
courts and the IPO over unfair competition cases. Therefore, the
IPO Director of Legal Affairs have jurisdiction to decide the
petitioner's administrative case against respondents and the IPO
Director General have exclusive jurisdiction over the appeal of the
judgment of the IPO Director of Legal Affairs.
F JURISDICTION: Petitioner’s complaint, which seeks the
cancellation of the disputed mark in the name of respondent
Sehwani, Incorporated, and damages for violation of petitioner’s
intellectual property rights, falls within the jurisdiction of the IPO
Director of Legal Affairs. The Intellectual Property Code also
expressly recognizes the appellate jurisdiction of the IPO Director
General over the decisions of the IPO Director of Legal Affairs.
F The Court of Appeals incorrectly concluded that all actions
involving trademarks, including charges of unfair competition, are
under the exclusive jurisdiction of civil courts. Such interpretation
is not supported by the provisions of the Intellectual Property
Code. While Section 163 thereof vests in civil courts jurisdiction
over cases of unfair competition, nothing in the said section states
that the regular courts have sole jurisdiction over unfair
competition cases, to the exclusion of administrative bodies. On
the contrary, Sections 160 and 170, which are also found under
Part III of the Intellectual Property Code, recognize the concurrent
jurisdiction of civil courts and the IPO over unfair competition
cases.
F The essential elements of an action for unfair competition are
(1) confusing similarity in the general appearance of the goods
and (2) intent to deceive the public and defraud a competitor. The
confusing similarity may or may not result from similarity in the
marks, but may result from other external factors in the packaging
or presentation of the goods. The intent to deceive and defraud
may be inferred from the similarity of the appearance of the goods
as offered for sale to the public. Actual fraudulent intent need not
be shown.
F WON respondent Sehwani is liable of unfair competition.
¾ Yes. The evidence on record shows that the
respondents were not using their registered trademark but that of
the petitioner. Further, respondents are giving their products the
general appearance that would likely influence purchasers to
believe that these products are those of the petitioner. The
intention to deceive may be inferred from the similarity of the
goods as packed and offered for sale, and, thus, action will lie to
restrain such unfair competition. Also, respondent’s use of IN-N-
OUT BURGER in busineses signages reveals fraudulent intent to
deceive purchasers.

FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE

CO
 F Copyright treats facts and factual compilations in a wholly
consistent manner. Facts, whether alone or as part of a
compilation, are not original and therefore may not be
copyrighted. A factual compilation is eligible for copyright if it
features an original selection or arrangement of facts, but the
copyright is limited to the particular selection or arrangement. In
no event may copyright extend to the facts themselves.
F To qualify for copyright protection, a work must be original
to the author, which means that the work was independently
created by the author, and it possesses at least some
minimal degree of creativity. A work may be original even
thought it closely resembles other works so long as the similarity
is fortuitous, not the result of copying.
F WON the names, addresses, and phone numbers in a
telephone directory able to be copyrighted.
¾ No. Facts cannot be copyrighted, however
compilations of facts can generally be copyrighted.
¾ To qualify for copyright protection, a work must be
original to the author, which means that the work was
independently created by the author, and it possesses at least
some minimal degree of creativity. A work may be original even
thought it closely resembles other works so long as the similarity
is fortuitous, not the result of copying.
¾ Facts are not original. The first person to find and
report a particular fact has not created the fact; he has merely
discovered its existence. Facts may not be copyrighted and are
part of the public domain available to every person.
¾ Factual compilations may possess the requisite
originality. The author chooses what facts to include, in what order
to place them, and how to arrange the collected date so they may
be effectively used by readers. Thus, even a directory that
contains no written expression that could be protected, only facts,
meets the constitutional minimum for copyright protection if it
features an original selection or arrangement. But, even though
the format is original, the facts themselves do not become original
through association. The copyright on a factual compilation is
limited to formatting. The copyright does not extend to the facts
themselves.
¾ To establish copyright infringement, two
elements must be proven: ownership of a valid copyright and
copying of constituent elements of the work that are original.
The first element is met in this case because the directory
contains some forward text. As to the second element, the
information contains facts, which cannot be copyrighted. They
existed before being reported and would have continued to exist if
a telephone directory had never been published. There is no
originality in the formatting, so there is no copyrightable
expression. Thus, there is no copyright infringement.
F The primary objective of copyright is not to reward the labor of
authors, but "to promote the Progress of Science and useful Arts."

Joaquin v. Drilon G.R No. 108946, 28 Jan 1999), 302 SCRA

225
F The format of a show is not a copyrightable under Section 2 of
P.D. 49--- To begin with, the format of a show is not copyrightable.
Section 2 of P.D. No. 49,[10] otherwise known as the DECREE
ON INTELLECTUAL PROPERTY, enumerates the classes of
work entitled to copyright protection, to wit: Section 2. The rights
granted by this Decree shall, from the moment of creation, subsist
with respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works,
manuscripts, directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral
delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic
works and entertainments in dumb shows, the acting form of
which is fixed in writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving,
lithography, and other works of art; models or designs for works of
art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of
manufacture, whether or not patentable, and other works of
applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process
analogous to photography; lantern slides;
(M) Cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-
visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels, tags,
and box wraps;
(P) Dramatizations, translations, adaptations, abridgements,
arrangements and other alterations of literary, musical or artistic
works or of works of the Philippine government as herein defined,
which shall be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works
referred to in Section 9 of this Decree which by reason of the
selection and arrangement of their contents constitute intellectual
creations, the same to be protected as such in accordance with
Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as §172 of the
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A.
No. 8293)
F The format or mechanics of a television show is not included in
the list of protected works in §2 of P.D. No. 49. For this reason,
the protection afforded by the law cannot be extended to cover
them. Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right granted by the
statute, and not simply a pre-existing right regulated by the
statute. Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only with
respect to the subjects and by the persons, and on terms and
conditions specified in the statute. Since . . . copyright in
published works is purely a statutory creation, a copyright may be
obtained only for a work falling within the statutory enumeration or
description. Regardless of the historical viewpoint, it is
authoritatively settled in the United States that there is no
copyright except that which is both created and secured by
act of Congress.
F Copyright, in a strict sense, is purely a statutory right. P.D. No.
49, §2, in enumerating what are subject to copyright, refers to
finished works and not to concepts. The copyright does not
extend to an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form
in which it is described, explained, illustrated, or embodied in such
work. Thus, the new INTELLECTUAL PROPERTY CODE OF
THE PHILIPPINES provides: Sec. 175. Unprotected Subject
Matter. - Notwithstanding the provisions of Sections 172 and 173,
no protection shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle, discovery or
mere data as such, even if they are expressed, explained,
illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or
legal nature, as well as any official translation thereof.
F The copyright does not extend to the general concept or format
of its dating game show. What then is the subject matter of
petitioners’ copyright? This Court is of the opinion that petitioner
BJPI’s copyright covers audio-visual recordings of each episode
of Rhoda and Me, as falling within the class of works mentioned in
P.D. 49, §2(M), to wit: Cinematographic works and works
produced by a process analogous to cinematography or any
process for making audio-visual recordings; The copyright does
not extend to the general concept or format of its dating game
show. Accordingly, by the very nature of the subject of petitioner
BJPI’s copyright, the investigating prosecutor should have the
opportunity to compare the videotapes of the two shows.
F Mere description by words of the general format of the two
dating game shows is insufficient; the presentation of the master
videotape in evidence was indispensable to the determination of
the existence of probable cause. As aptly observed by
respondent Secretary of Justice: A television show includes more
than mere words can describe because it involves a whole
spectrum of visuals and effects, video and audio, such that no
similarity or dissimilarity may be found by merely describing the
general copyright/format of both dating game shows.

Santos vs. McCullough Printing Co., GR No. 19439, October

31, 1964, 12 SCRA 321
F An intellectual creation should be copyrighted within the
periods provided by law, failure of which renders such
creation public property.
F For there to be a limited publications or prohibition, such fact
must appear on the face of the design. When the purpose is a
limited publication, but the effect is a general publication,
irrevocable rights thereon become vested in the general
public. Exclusive right of owner to publish limited to first
publication unless copyrighted.-- The author of a literary
composition has a right to the first publication thereof. He has a
right to determine whether it shall be published at all, and if
published, when, where, by whom, and in what form. This
exclusive right is confined to the first publication. Once published,
it is dedicated to the public, and the author loses, the exclusive
right to control subsequent publication by others, unless the
work is placed under the protection of the copyright law.
Filipino Society of Composers v. Tan, G.R. No. L-36402,
March 16, 1987, 148 SCRA 461
F Music provided by a combo in a restaurant constitutes public
performance for profit within the meaning of the Copyright Law. In
the case at bar, it is admitted that the patrons of the restaurant in
question pay only for the food and drinks and apparently not for
listening to the music. As found by the trial court, the music
provided is for the purpose of entertaining and amusing the
customers in order to make the establishment more attractive and
desirable. It will be noted that for the playing and singing the
musical compositions involved, the combo was paid as
independent contractors by the appellant . It is therefore obvious
that the expenses entailed thereby are added to the overhead of
the restaurant which are either eventually charged in the price of
the food and drinks or to the overall total of additional income
produced by the bigger volume of business which the
entertainment was programmed to attract. Consequently, it is
beyond question that the playing and singing of the combo
in defendant-appellee's restaurant constituted performance
for profit contemplated by the Copyright Law. (Act 3134
amended by P.D. No. 49, as amended).
F If the general public has made use of the object sought to be
copyrighted within 30 days prior to the copyright application, the
law deems the object to have been donated to the public domain
and can no longer be copyrighted as in the case of the songs at
bar. The Supreme Court has ruled that "Paragraph 33 of Patent
Office Administrative Order No. 3 (as amended, dated September
18, 1947) entitled 'Rules of Practice in the Philippines Patent
Office relating to the Registration of Copyright Claims'
promulgated pursuant to Republic Act 165, provides among other
things that an intellectual creation should be copyrighted thirty
(30) days after its publication, if made in Manila, or within the (60)
days if made elsewhere, failure of which renders such creation
public property." (Santos v. McCullough Printing Company, 12
SCRA 324-325 [1964]. Indeed, if the general public has made use
of the object sought to be copyrighted for thirty (30) days prior to
the copyright application the law deems the object to have been
donated to the public domain and the same can no longer be
copyrighted.
F A careful study of the records reveals that the song "Dahil Sa
Iyo" which was registered on April 20, 1956 (Brief for Appellant, p.
10) became popular in radios, juke boxes, etc. long before
registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The
Nearness Of You" registered on January 14, 1955 (Brief for
Appellant, p. 10) had become popular twenty five (25) years prior
to 1968, (the year of the hearing) or from 1943 (TSN, May 28,
1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and
"Sapagkat Kami Ay Tao Lamang" both registered on July 10,
1966, appear to have been known and sang by the witnesses as
early as 1965 or three years before the hearing in 1968. The
testimonies of the witnesses at the hearing of this case on this
subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and
30). Under the circumstances, it is clear that the musical
compositions in question had long become public property, and
are therefore beyond the protection of the Copyright Law.

Ching vs. Salinas, GR No. 161295, June 29, 2005, 462 SCRA
241
F The RTC had jurisdiction to delve into and resolve the issue
whether the petitioner ’s utility models are copyrightable and, if so,
whether he is the owner of a copyright over the said models.
F For the RTC to determine whether the crime for infringement
under R.A. No. 8293 as alleged in an application is committed,
the petitioner-applicant was burdened to prove that (a)
respondents Jessie Ching and Joseph Yu were the owners of
copyrighted material; and (b) the copyrighted material was being
copied and distributed by the respondents. Thus, the ownership
of a valid copyright is essential.
F Ownership of copyrighted material is shown by proof of
originality and copyrightability. By originality is meant that the
material was not copied, and evidence s at least minimal
creativity; that it was independently created by the author and that
it possesses at least same minimal degree of creativity.
F Copying is shown by proof of access to copyrighted material
and substantial similarity between the two works.
F It bears stressing that the focus of copyright is the usefulness
of the artistic design, and not its marketability. The central inquiry
is whether the article is a work of art.] Works for applied art
include all original pictorials, graphics, and sculptural works that
are intended to be or have been embodied in useful article
regardless of factors such as mass production, commercial
exploitation, and the potential availability of design patent
protection.
F As gleaned from the description of the models and their
objectives, these articles are useful articles which are defined as
one having an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information.
Indeed, while works of applied art, original intellectual, literary and
artistic works are copyrightable, useful articles and works of
industrial design are not. A useful article may be copyrightable
only if and only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of the
utilitarian aspects of the article.
F In this case, the petitioner’s models are not works of applied
art, nor artistic works. They are utility models, useful articles,
albeit with no artistic design or value.
F A utility model is a technical solution to a problem in any field of
human activity which is new and industrially applicable. It may
be, or may relate to, a product, or process, or an improvement of
any of the aforesaid. Essentially, a utility model refers to an
invention in the mechanical field. This is the reason why its object
is sometimes described as a device or useful object.
F UTILITY MODEL v. INVENTION: first, the requisite of “inventive
step” in a patent for invention is not required; second, the
maximum term of protection is only seven years compared to a
patent which is twenty years, in a patent for both reckoned from
the date of the application; and third, the provisions on utility
model dispense with its substantive examination and prefer for a
less complicated system.
F No copyright granted by law can be said to arise in favor of the
petitioner despite the issuance of the certificates of copyright
registration and the deposit of the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion.
F That the works of the petitioner may be the proper subject of a
patent does not entitle him to the issuance of a search warrant for
violation of copyright laws. In Kho v. Court of Appeals[49] and
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,[50]
the Court ruled that “these copyright and patent rights are
completely distinct and separate from one another, and the
protection afforded by one cannot be used interchangeably to
cover items or works that exclusively pertain to the others.
F In this case, the bushing and cushion are not works of art.
They are, as the petitioner himself admitted, utility models which
may be the subject of a patent.

Manly Sportwear Manufacturing Inc.vs. Dadodette, GR No.

165306, September 20, 2005, 470 SCRA 384
F Where the copyrighted products do not appear to be original
creations and are not among the classes of work enumerated
under Section 172 of RA 8293, trial court may not be faulted for
overturning its initial assessment that there was probable cause in
view of its inherent power to issue search warrants and to quash
the same. In the instant case, we find that the trial court did not
abuse its discretion when it entertained the motion to quash
considering that no criminal action has yet been instituted when it
was filed. The trial court also properly quashed the search
warrant it earlier issued after finding upon reevaluation of the
evidence that no probable cause exists to justify its issuance in
the first place. As ruled by the trial court, the copyrighted
products do not appear to be original creations of MANLY and are
not among the classes of work enumerated under Section 172 of
RA 8293. The trial court, thus, may not be faulted for overturning
its initial assessment that there was probable cause in view of its
inherent power to issue search warrants and to quash the same.
No objection may be validly posed to an order quashing a warrant
already issued as the court must be provided with the opportunity
to correct itself of an error unwittingly committed, or, with like
effect, to allow the aggrieved party the chance to convince the
court that its ruling is erroneous.
F The order quashing a search warrant is not res judicata on the
issue of copyright infringement- the applicant for a search warrant
could still file a separate copyright infringement suit against the
respondents. As correctly observed by the Court of Appeals, the
trial court’s finding that the seized products are not copyrightable
was merely preliminary as it did not finally and permanently
adjudicate on the status and character of the seized items.
MANLY could still file a separate copyright infringement suit
against the respondents because the order for the issuance or
quashal of a warrant is not res judicata. Thus, in Vlasons
Enterprises Corporation v. Court of Appeals[14] we held that: The
proceeding for the seizure of property in virtue of a search warrant
does not end with the actual taking of the property by the proper
officers and its delivery, usually constructive, to the court. The
order for the issuance of the warrant is not a final one and cannot
constitute res judicata. Such an order does not ascertain and
adjudicate the permanent status or character of the seized
property. By its very nature, it is provisional, interlocutory. It is
merely the first step in the process to determine the character and
title of the property. That determination is done in the criminal
action involving the crime or crimes in connection with which the
search warrant was issued. Hence, such a criminal action should
be prosecuted, or commenced if not yet instituted, and
prosecuted. The outcome of the criminal action will dictate the
disposition of the seized property…
F Further, the copyright certificates issued in favor of MANLY
constitute merely prima facie evidence of validity and ownership.
However, no presumption of validity is created where other
evidence exist that may cast doubt on the copyright validity.
Hence, where there is sufficient proof that the copyrighted
products are not original creations but are readily available in the
market under various brands, as in this case, validity and
originality will not be presumed and the trial court may properly
quash the issued warrant for lack of probable cause.
F At most, the certificates of registration and deposit issued
by the National Library and the Supreme Court Library serve
merely as a notice of recording and registration of the work
but do not confer any right or title upon the registered
copyright owner or automatically put his work under the
protective mantle of the copyright law. It is not a conclusive
proof of copyright ownership. As it is, non-registration and
deposit of the work within the prescribed period only makes the
copyright owner liable to pay a fine.

UNILEVER Philippines vs. CA and Procter and Gamble, Phils

Inc., G.R. No. 119280, (August 10, 2006), 498 SCRA 334
F Injunction is resorted to only when there is a pressing necessity
to avoid injurious consequences which cannot be remedied under
any standard compensation.[7] As correctly ruled by the CA, there
was an extreme urgency to grant the preliminary injunction prayed
for by P&GP considering that TV commercials are aired for a
limited period of time only. In fact, this Court takes note of the fact
that the TV commercial in issue ― the Kite TV advertisement ―
is no longer aired today, more than 10 years after the injunction
was granted on September 16, 1994.

Sambar vs. Levi Strauss & Co./, GR No. 132604, ( March 6,

2002), 378 SCRA 364
F Did petitioner infringe on private respondents’ arcuate design?
 ¾ We find no reason to disturb the findings of the
Court of Appeals that Europress’ use of the arcuate design was
an infringement of the Levi’s design.
F Must we hold petitioner solidarily liable with CVS Garments
Industrial Corporation? Both the courts below found that petitioner
had a copyright over Europress’ arcuate design and that he
consented to the use of said design by CVSGIC. We are bound
by this finding, especially in the absence of a showing that it was
tainted with arbitrariness or palpable error.[7] It must be stressed
that it was immaterial whether or not petitioner was connected
with CVSGIC. What is relevant is that petitioner had a copyright
over the design and that he allowed the use of the same by
CVSGIC.

F To be entitled to copyright, the thing being copyrighted must be

original, created by the author through his own skill, labor and
judgment, without directly copying or evasively imitating the work
of another. From the foregoing discussion, it is clear that the
matters raised by petitioner in relation to the last issue are purely
factual, except the matter of nominal and temperate damages.
Petitioner claims that damages are not due private respondents
and his copyright should not be cancelled because he had not
infringed on Levi’s trademark. Both the trial court and the
Court of Appeals found there was infringement. Thus, the
award of damages and cancellation of petitioner’s copyright
are appropriate. Award of damages is clearly provided in
Section 23 of the Trademark law, while cancellation of
petitioner’s copyright finds basis on the fact that the design
was a mere copy of that of private respondents’ trademark.
To be entitled to copyright, the thing being copyrighted must be
original, created by the author through his own skill, labor and
judgment, without directly copying or evasively imitating the work
of another
F However, we agree with petitioner that it was error for the Court
of Appeals to affirm the award of nominal damages combined with
temperate damages by the Regional Trial Court of Makati. What
respondents are entitled to is an award for temperate damages,
not nominal damages. For although the exact amount of damage
or loss can not be determined with reasonable certainty, the fact
that there was infringement means they suffered losses for which
they are entitled to moderate damages. We find that the award of
P50,000.00 as temperate damages fair and reasonable,
considering the circumstances herein as well as the global
coverage and reputation of private respondents Levi Strauss &
Company and Levi Strauss (Phil.), Inc.

Bayanihan Music vs. BMG, Jose Mari Chan, GR No. 166337,

March 7, 2005, 452 scra
F A court should, as much as possible, avoid issuing the writ
which would effectively dispose of the main case without trial.
F (1) there must be a right in esse or the existence of a right to
be protected; and (2) the act against which the injunction is to be
directed is a violation of such right,[5]cralaw the trial court
threaded the correct path in denying petitioner's prayer therefor.
For, such a writ should only be granted if a party is clearly entitled
thereto.
F Of course, while a clear showing of the right to an injunctive
writ is necessary albeit its existence need not be conclusively
established,[7]cralaw as the evidence required therefor need not
be conclusive or complete, still, for an applicant, like petitioner
Bayanihan, to be entitled to the writ, he is required to show that
he has the ostensible right to the final relief prayed for in its
complaint.[8]cralaw Here, the trial court did not find ample
justifications for the issuance of the writ prayed for by petitioner.
F respondent Chan, being undeniably the composer and author
of the lyrics of the two (2) songs, is protected by the mere fact
alone that he is the creator thereof
F An examination of petitioner's verified complaint in light of the
two (2) contracts sued upon and the evidence it adduced during
the hearing on the application for preliminary injunction, yields not
the existence of the requisite right protectable by the provisional
relief but rather a lingering doubt on whether there is or there is
no such right. xxx It would thus appear that the two (2) contracts
expired on October 1, 1975 and March 11, 1978, respectively,
there being neither an allegation, much less proof, that petitioner
Bayanihan ever made use of the compositions within the two-year
period agreed upon by the parties
F Anent the copyrights obtained by petitioner on the basis of the
selfsame two (2) contracts, suffice it to say 'that such purported
copyrights are not presumed to subsist in accordance with
Section 218[a] and [b], of the Intellectual Property Code,
[10]cralaw because respondent Chan had put in issue the
existence thereof.
F It is noted that Chan revoked and terminated said contracts,
along with others, on July 30, 1997, or almost two years before
petitioner Bayanihan wrote its sort of complaint/demand letter
dated December 7, 1999 regarding the recent "use/recording of
the songs 'Can We Just Stop and Talk A While' and 'Afraid for
Love to Fade,'" or almost three (3) years before petitioner filed its
complaint on August 8, 2000, therein praying, inter alia, for
injunctive relief.

Habana vs. Robles GR No. 131522, July 19, 1999, 310 SCRA
511
F We believe that respondent Robles’ act of lifting from the book
of petitioners substantial portions of discussions and examples,
and her failure to acknowledge the same in her book is an
infringement of petitioners’ copyrights. When is there a substantial
reproduction of a book? It does not necessarily require that the
entire copyrighted work, or even a large portion of it, be copied. If
so much is taken that the value of the original work is substantially
diminished, there is an infringement of copyright and to an
injurious extent, the work is appropriated.
F In determining the question of infringement, the amount of
matter copied from the copyrighted work is an important
consideration. To constitute infringement, it is not necessary that
the whole or even a large portion of the work shall have been
copied. If so much is taken that the value of the original is
sensibly diminished, or the labors of the original author are
substantially and to an injurious extent appropriated by another,
that is sufficient in point of law to constitute piracy. The essence of
intellectual piracy should be essayed in conceptual terms in order
to underscore its gravity by an appropriate understanding thereof.
Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and,
therefore, protected by law, and infringement of copyright, or
piracy, which is a synonymous term in this connection, consists in
the doing by any person, without the consent of the owner of the
copyright, of anything the sole right to do which is conferred by
statute on the owner of the copyright.
F Even if two authors were of the same background in terms of
teaching experience and orientation, it is not an excuse for them
to be identical even in examples contained in their books. The
respondents claim that their similarity in style can be attributed to
the fact that both of them were exposed to the APCAS syllabus
and their respective academic experience, teaching approach and
methodology are almost identical because they were of the same
background. However, we believe that even if petitioners and
respondent Robles were of the same background in terms of
teaching experience and orientation, it is not an excuse for them
to be identical even in examples contained in their books. The
similarities in examples and material contents are so obviously
present in this case. How can similar/identical examples not be
considered as a mark of copying?
F In cases of infringement, copying alone is not what is
prohibited. The copying must produce an “injurious effect”.
Here, the injury consists in that respondent Robles lifted from
petitioners’ book materials that were the result of the latter’s
research work and compilation and misrepresented them as her
own. She circulated the book DEP for commercial use and did
not acknowledge petitioners as her source.
 F Hence, there is a clear case of appropriation of copyrighted
work for her benefit that respondent Robles committed.
Petitioners’ work as authors is the product of their long and
assiduous research and for another to represent it as her own is
injury enough. In copyrighting books the purpose is to give
protection to the intellectual product of an author. This is
precisely what the law on copyright protected, under Section
184.1 (b). Quotations from a published work if they are
compatible with fair use and only to the extent justified by the
purpose, including quotations from newspaper articles and
periodicals in the form of press summaries are allowed provided
that the source and the name of the author, if appearing on the
work, are mentioned.
F In the case at bar, the least that respondent Robles could have
done was to acknowledge petitioners Habana et. al. as the source
of the portions of DEP. The final product of an author’s toil is her
book. To allow another to copy the book without appropriate
acknowledgment is injury enough.

Microsoft Corp.vs. Maxicorp Inc.,GR No. 140946, Sept. 13,

2004
F WHETHER THE PETITION RAISES QUESTIONS OF LAW;
Indeed, this case falls under one of the exceptions because the
findings of the Court of Appeals conflict with the findings of the
RTC.[16] Since petitioners properly raised the conflicting findings
of the lower courts, it is proper for this Court to resolve such
contradiction.
F WHETHER PETITIONERS HAVE LEGAL PERSONALITY
TO FILE THE PETITION: We ruled in Columbia Pictures
Entertainment, Inc. v. Court of Appeals[18] that the petitioner-
complainant in a petition for review under Rule 45 could argue its
case before this Court in lieu of the Solicitor General if there is
grave error committed by the lower court or lack of due process.
This avoids a situation where a complainant who actively
participated in the prosecution of a case would suddenly find itself
powerless to pursue a remedy due to circumstances beyond its
control. The circumstances in Columbia Pictures Entertainment
are sufficiently similar to the present case to warrant the
application of this doctrine.
F WHETHER THERE WAS PROBABLE CAUSE TO ISSUE THE
SEARCH WARRANTS: The Court of Appeals based its reversal
on two factual findings of the RTC. First, the fact that the sales
receipt presented by NBI Agent Samiano as proof that he bought
counterfeit goods from Maxicorp was in the name of a certain
“Joel Diaz.” Second, the fact that petitioners’ other witness, John
Benedict Sacriz, admitted that he did not buy counterfeit goods
from Maxicorp. We rule that the Court of Appeals erred in
reversing the RTC’s findings.
F The offense charged against Maxicorp is copyright infringement
under Section 29 of PD 49 and unfair competition under Article
189 of the RPC. To support these charges, petitioners presented
the testimonies of NBI Agent Samiano, computer technician
Pante, and Sacriz, a civilian. The offenses that petitioners
charged Maxicorp contemplate several overt acts. The sale of
counterfeit products is but one of these acts. Both NBI Agent
Samiano and Sacriz related to the RTC how they personally saw
Maxicorp commit acts of infringement and unfair competition.
F During the preliminary examination, the RTC subjected the
testimonies of the witnesses to the requisite examination. NBI
Agent Samiano testified that he saw Maxicorp display and offer
for sale counterfeit software in its premises. He also saw how the
counterfeit software were produced and packaged within
Maxicorp’s premises. NBI Agent Samiano categorically stated
that he was certain the products were counterfeit because
Maxicorp sold them to its customers without giving the
accompanying ownership manuals, license agreements and
certificates of authenticity.
 F Sacriz testified that during his visits to Maxicorp, he witnessed
several instances when Maxicorp installed petitioners’ software
into computers it had assembled. Sacriz also testified that he saw
the sale of petitioners’ software within Maxicorp’s premises.
Petitioners never authorized Maxicorp to install or sell their
software.
F The testimonies of these two witnesses, coupled with the
object and documentary evidence they presented, are sufficient to
establish the existence of probable cause. From what they have
witnessed, there is reason to believe that Maxicorp engaged in
copyright infringement and unfair competition to the prejudice of
petitioners. Both NBI Agent Samiano and Sacriz were clear and
insistent that the counterfeit software were not only displayed and
sold within Maxicorp’s premises, they were also produced,
packaged and in some cases, installed there.
F For purposes of determining probable cause, the sales receipt
is not the only proof that the sale of petitioners’ software
occurred. During the search warrant application proceedings,
NBI Agent Samiano presented to the judge the computer unit
that he purchased from Maxicorp, in which computer unit
Maxicorp had pre-installed petitioners’ software.[27] Sacriz,
who was present when NBI Agent Samiano purchased the
computer unit, affirmed that NBI Agent Samiano purchased
the computer unit.[28] Pante, the computer technician,
demonstrated to the judge the presence of petitioners’
software on the same computer unit.[29] There was a
comparison between petitioners’ genuine software and
Maxicorp’s software pre-installed in the computer unit that
NBI Agent Sambiano purchased.[30] Even if we disregard the
sales receipt issued in the name of “Joel Diaz,” which petitioners
explained was the alias NBI Agent Samiano used in the operation,
there still remains more than sufficient evidence to establish
probable cause for the issuance of the search warrants.
F The fact that Sacriz did not actually purchase counterfeit
software from Maxicorp does not eliminate the existence of
probable cause. Copyright infringement and unfair competition
are not limited to the act of selling counterfeit goods. They cover a
whole range of acts, from copying, assembling, packaging to
marketing, including the mere offering for sale of the counterfeit
goods. The clear and firm testimonies of petitioners’ witnesses on
such other acts stand untarnished
F WHETHER THE SEARCH WARRANTS ARE “GENERAL
WARRANTS.”: However, we find paragraph (c) of the search
warrants lacking in particularity. Paragraph (c) states: c) Sundry
items such as labels, boxes, prints, packages, wrappers,
receptacles, advertisements and other paraphernalia bearing the
copyrights and/or trademarks owned by MICROSOFT
CORPORATION;
F The scope of this description is all-embracing since it covers
property used for personal or other purposes not related to
copyright infringement or unfair competition. Moreover, the
description covers property that Maxicorp may have bought
legitimately from Microsoft or its licensed distributors. Paragraph
(c) simply calls for the seizure of all items bearing the Microsoft
logo, whether legitimately possessed or not. Neither does it limit
the seizure to products used in copyright infringement or unfair
competition.
F All articles seized under paragraph (c) of the search warrants,
not falling under paragraphs a, b, d, e or f, are ordered returned to
Maxicorp, Inc. immediately.

TRADEMARK

UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL

MILLING CORPORATION
F The right to register trademark is based on ownership. When
the applicant is not the owner of the trademark being applied for,
he has no right to apply for the registration of the same. Under the
Trademark Law only the owner of the trademark, trade name or
service mark used to distinguish his goods, business or service
from the goods, business or service of others is entitled to register
the same.
F An importer, broker, indentor or distributor acquires no rights to
the trademark of the goods he is dealing with in the absence of a
valid transfer or assignment of the trade mark.
F SCOPE: The term owner does not include the importer of the
goods bearing the trademark, trade name, service mark, or other
mark of ownership, unless such importer is actually the owner
thereof in the country from which the goods are imported. Thus,
this Court has on several occasions ruled that where the
applicant's alleged ownership is not shown in any notarial
document and the applicant appears to be merely an importer or
distributor of the merchandise covered by said trademark, its
application cannot be granted.
F DEED OF ASSIGNMENT; PROOF OF OWNERSHIP: The
Director of Patents correctly found that ample evidence was
presented that Centennial Mills, Inc. was the owner and prior user
in the Philippines of the trademark "All Montana" through a local
importer and broker. The Deed of Assignment itself constitutes
sufficient proof of its ownership of the trademark "All Montana,
"showing that Centennial Mills was a corporation duly organized
and existing under and by virtue of the laws of the State of
Oregon, U.S.A. with principal place and business at Portland,
Oregon, U.S.A. and the absolute and registered owner of several
trademarks for wheat fl our, i.e. (I mperial, White Lily, Duck,
General, Swan, White Horse, Vinta, El Paro, Baker's J oy, Choice,
Red Bowl, All Montana and Dollar) all of which were assigned by
it to respondent General Milling Corporation.
F Ownership of a trademark is not acquired by the mere fact of
registration alone. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use
thereof. Registration does not perfect a trademark right. As
conceded itself by petitioner, evidence may be presented to
overcome the presumption. Prior use by one will controvert a
claim of legal appropriation by subsequent users.
F Under Rule 178 of the Rules of the Patent Office in Trademark
Cases, the Director of Patents is expressly authorized to order the
cancellation of a registered mark or trade name or name or other
mark of ownership in an inter partes case, such as the
interference proceeding at bar.

KABUSHI KAISHA ISETAN ISETAN CO., LTD., vs. IAC,

ISETANN DEPARTMENT STORE, INC.
F A fundamental principle of Philippine Trademarks Law is that
actual use in commerce in the Philippines is a prerequisite to the
acquisition of ownership over a trademark or a trade name.
F A prior registrant cannot claim exclusive use of the trademark
unless it uses it in commerce.
F The records show that the petitioner has never conducted any
business in the Philippines. I t has never promoted its tradename
or trademark in the Philippines. It has absolutely no business
goodwill in the Philippines. I t is unknown to Filipinos except the
very few who may have noticed it while travelling abroad. I t has
never paid a single centavo of tax to the Philippine government.
Under the law, it has no right to the remedy it seeks. There can be
no question from the records that the petitioner has never used its
tradename or trademark in the Philippines. The mere origination
or adoption of a particular tradename without actual use thereof in
the market is insufficient to give any exclusive right to its use,
even though such adoption is publicly declared, such as by use of
the name in advertisements, circulars, price lists, and on signs
and stationery.
F The Paris Convention for the Protection of Industrial Property
does not automatically exclude all countries of the world that have
signed it from using a trade name which happens to be used in
one country.
F Conditions which must exist before any trademark owner can
claim and be afforded rights:
1. the mark must be internationally known or well known;
2. the subject of the right must be a trademark, not a patent or
copyright or anything else;
3. the mark must be for use in the same or similar kinds of
goods, and
4. The person claiming must be the owner of the mark.

PHILIP MORRIS, INC. v. FORTUNE TOBACCO CORPORATION

F RECIPROCITY: While petitioners enjoy the statutory
presumptions arising from such registration, i.e., as to the validity
of the registration, ownership and the exclusive right to use the
registered marks, they may not successfully sue on the basis
alone of their respective certificates of registration of trademarks.
For, petitioners are still foreign corporations. As such, they ought,
as a condition to availment of the rights and privileges vis-à-vis
their trademarks in this country, to show proof that, on top of
Philippine registration, their country grants substantially similar
rights and privileges to Filipino citizens pursuant to Section 21-
A20 of R.A. No. 166.
F ID: The aforementioned reciprocity requirement is a condition
sine qua non to filing a suit by a foreign corporation which, unless
alleged in the complaint, would justify dismissal thereof, a mere
allegation that the suit is being pursued under Section 21-A of
R.A. No. 166 not being sufficient.
F REGISTRATION VERSUS ACTUAL USE: True, the Philippines’
adherence to the Paris Convention24 effectively obligates the
country to honor and enforce its provisions as regards the
protection of industrial property of foreign nationals in this country.
However, any protection accorded has to be made subject to the
limitations of Philippine laws.
 F Considering that R.A. No. 166, as amended, specifically
Sections 228 and 2-A29 thereof, mandates actual use of the
marks and/or emblems in local commerce and trade before they
may be registered and ownership thereof acquired, the petitioners
cannot, therefore, dispense with the element of actual use. Their
being nationals of member-countries of the Paris Union does not
alter the legal situation.
F Withal, the fact that international law has been made part of the
law of the land does NOT by any means imply the primacy of
international law over national law in the municipal sphere. Under
the DOCTRINE OF INCORPORATION as applied in most
countries, rules of International Law are given a standing EQUAL,
not superior, to national legislative enactments.
F Such a foreign corporation may have the personality to file a
suit for infringement but it may not necessarily be entitled to
protection due to absence of actual use of the emblem in the local
market.
F The registration of trademark cannot be deemed conclusive as
to the actual use of such trademark in local commerce. As it were,
registration does not confer upon the registrant an absolute right
to the registered mark. The certificate of registration merely
constitutes prima facie evidence that the registrant is the owner of
the registered mark. Evidence of non-usage of the mark rebuts
the presumption of trademark ownership, as what happened here
when petitioners no less admitted not doing business in this
country.
F Shangri-La International Hotel Management, Ltd. v.
Development Group of Companies, Inc.: trademark is a creation
of use and, therefore, actual use is a pre-requisite to exclusive
ownership; registration is only an administrative confirmation of
the existence of the right of ownership of the mark, but does not
perfect such right; actual use thereof is the perfecting ingredient.
F With the foregoing perspective, it may be stated right off that
the registration of a trademark unaccompanied by actual use
thereof in the country accords the registrant only the standing to
sue for infringement in Philippine courts. Entitlement to protection
of such trademark in the country is entirely a different matter.
F For lack of convincing proof on the part of the petitioners of
actual use of their registered trademarks prior to respondent’s use
of its mark and for petitioners’ failure to demonstrate confusing
similarity between said trademarks, the dismissal of their basic
complaint for infringement and the concomitant plea for damages
must be affirmed. The law, the surrounding circumstances and the
equities of the situation call for this disposition.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD v.

DEVELOPERS GROUP OF COMPANIES, INC.,
F Shangri-la Hotel did not infringe on the logo of DGCI. The
applicable law at the time is RA 166, which requires that there
must be at least 2 months actual use prior to registration. The
registration by DGCI is invalid for want of the actual use
requirement. Based on the facts & testimonies of the chairman of
DGCI, the logo was designed in December 1982; yet, the
application was filed as early as October 1982. There could be no
actual use considering the foregoing facts; thus, invalidating
DGCI’s registration.
F Ownership of a mark or trade name may be acquired not
necessarily by registration but by adoption and use in trade or
commerce. As between actual use of a mark without registration,
and registration of the mark without actual use thereof, the former
prevails over the latter. For a rule widely accepted and firmly
entrenched, because it has come down through the years, is that
actual use in commerce or business is a pre-requisite to the
acquisition of the right of ownership.
F Even if registration was valid, it is not enough to confer
ownership of the trademark. As already held, registration merely
creates a prima facie presumption ①of the validity of the
registration, ② of the registrant's ownership of the trademark and
③of the exclusive right to the use thereof. This presumption is
rebuttable & must give way to evidence on the contrary.
F Under RA 166, any person may appropriate to his exclusive
use a trademark, trade name, or a service mark not so
appropriated by another. The exclusion did not require that the
prior appropriation of another must be in the Philippines; hence, it
was interpreted to cover also appropriation outside the country.
Shangri-la Hotel has been continuously using their mark & logo
since 1975, while DGCI began using theirs towards the end of
1982.
F While the petitioners may not have qualified under Section 2 of
R.A. No. 166 as a registrant, neither did respondent DGCI , since
the latter also failed to fulfill the 2month actual use requirement.
What is worse, DGCI was not even the owner of the mark. For it
to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of
respondent DGCI 's registration of the mark, the same was
already being used by the petitioners, albeit abroad, of which
DGCI 's president was fully aware.
F A person or entity who is not the owner of a trademark could
not bring an action of infringement. Decision of the CA was set
aside, complaint of DGCI was dismissed.
F NEW LAW: The new Intellectual Property Code (IPC), Republic
Act No. 8293, undoubtedly shows the firm resolve of the
Philippines to observe and follow the Paris Convention by
incorporating the relevant portions of the Convention such that
persons who may question a mark (that is, oppose registration,
petition for the cancellation thereof, sue for unfair competition)
include persons whose internationally well-known mark, whether
or not registered, is identical with or confusingly similar to or
constitutes a translation of a mark that is sought to be registered
or is actually registered

ANG v. TORIBIO
 F That petitioner's registration of the trade-mark "Ang Tibay"
should be cancelled, and that she should be perpetually enjoined
from using said trade-mark on goods manufactured and sold by
her.
F The term “Ang Tibay”, not being a geographic or descriptive
word, is capable of exclusive appropriation as trademark. An
inquiry into the etymology and meaning of the Tagalog words
"Ang Tibay," made in the decision, shows that the phrase is never
used adjectively to define or describe an object. I t is, therefore,
not a descriptive term within the meaning of the Trade-mark Law
but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trade-mark or trade-name. Hence, it
was originally capable of exclusive appropriation as a trade-mark
by the respondent.
F FUNCTIONS OF TRADEMARK; DOCTRINE OF SECONDARY
MEANING: The function of a trade-mark is to point distinctively,
either by its own meaning or by association, to the origin or
ownership of the wares to which it is applied. "Ang Tibay," as used
by the respondent to designate his wares, had exactly performed
that function for twenty-two years before the petitioner adopted it
as a trade-mark in her own business. "Ang Tibay" shoes and
slippers are, by association, known throughout the Philippines as
products of the "Ang Tibay" factory owned and operated by the
respondent. Even if "Ang Tibay," therefore, were not capable
of exclusive appropriation as a trade-mark, the application of
the doctrine of secondary meaning could nevertheless be
fully sustained because, in any event, by respondent's long
and exclusive use of said phrase with reference to his
products and his business, it has acquired a proprietary
connotation. This doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in
that trade and to that branch of the purchasing public, the word or
phrase has come to mean that the article was his product.
F Although two noncompeting articles may be classified under
two different classes by the Patent Office because they are
deemed not to possess the same descriptive properties, they
would nevertheless be held by the courts to belong to the same
class if the simultaneous use on them of identical or closely
similar trade- marks would be likely to cause confusion as to the
origin, or personal source, of the second user's goods. They
would be considered as not falling under the same class only if
they are so dissimilar or so foreign to each other as to make it
unlikely that the purchaser would think the first user made the
second user's goods. Such construction of the law is induced by
cogent reasons of equity and fair dealing discussed in the
decision.
F The courts have come to realize that there can be unfair
competition or unfair trading even if the goods are non competing,
and that such unfair trading can cause injury or damage to the
first user of a given trademark. First, by prevention of natural
expansion of the business and second, by having his business
reputation confused with and put at the mercy of the 2nd user.
When noncompetitive products are sold under the same mark, the
gradual whittling away or dispersion of the identity and hold upon
the public mind of the mark created by its first user, inevitably
results. The original owner is entitled to the preservation of the
valuable link between him and the public that has been created by
his ingenuity and merit of his wares and services.”

Philip Morris, Inc. v. CA (224 SCRA 624, Dissenting Opinion;

Justice Feliciano
 F In the trial court, both J udge Reyes and J udge Galing took the
position that until the Director of Patents shall have finally acted
on private respondent's application for registration of "MARK,"
petitioners cannot be granted the relief of preliminary injunction. I t
is respectfully submitted that this position is both erroneous and
unfortunate.
¾ The pendency of the application before the
Director of Patents is not in itself a reason for denying preliminary
injunction. Our courts have jurisdiction and authority to determine
whether or not "MARK" is an infringement on petitioners'
registered trademarks. Under our case law, the issuance of a
Certificate of Registration of a trademark in the Principal Register
by the Director of Patents would not prevent a court from ruling on
whether or not the trademark so granted registration is
confusingly similar with a previously registered trademark, where
such issue is essential for resolution of a case properly before the
court.
¾ "MARK" has taken over the dominant word in
"MARK VI I " and "MARK TEN." These circumstances, coupled
with private respondent's failure to explain how or why it chose,
out of all the words in the English language, the word "mark" to
refer to its cigarettes, lead me to the submission that there is a
prima facie basis for holding, as the Patent Office has held and
as the Court of Appeals did hold originally, that private
respondent's "MARK" infringes upon petitioners' registered
trademarks.
F There is thus no question as to the legal rights of petitioners as
holders of trademarks registered in the Philippines. Private
respondent, however, resists and assails petitioners' effort to
enforce their legal rights by heavily underscoring the fact that
petitioners are not registered to do business in the Philippines and
are not in fact doing business in the Philippines.
¾ Foreign corporations and corporations domiciled in
a foreign country are not disabled from bringing suit in Philippine
courts to protect their rights as holders of trademarks registered in
the Philippines PROVIDED that the country of which the said
foreign corporation or juristic person is a citizen or in which it is
domiciled by treaty, convention or law, grants similar privilege to
corporate or juristic persons of the Philippines."
¾ EFFECT: A corporate national of a member
country of the Paris Union is entitled to bring in Philippine courts
an action for infringement of trademarks, or for unfair competition,
without necessity for obtaining registration or a license to do
business in the Philippines, and without necessity of actually
doing business in the Philippines.
¾ The very fact that the appropriate Philippine
Government office issued the Certificates of Registration
necessarily gave rise to the presumption that such pre-registration
use had in fact been shown to the satisfaction of the Philippines
Patent Office (now the Bureau of Patents, Trademarks and
Technology Transfer ["BPTTT"]). I t is important to note that
respondent Fortune has not purported to attack the validity of the
trademarks "Mark Ten" and "Lark" by pretending that no pre-
registration use in commerce in the Philippines had been shown.
¾ In the case at bar, again, respondent Fortune has
not explicitly pretended that the petitioners' trademarks have been
abandoned by non-use in trade and commerce in the Philippines
although it appears to insinuate such non-use and abandonment
by stressing that petitioners are not doing business in the
Philippines.
¾ The circumstance that the foreign owner of a
Philippine trademark is not licensed to do business and is not
doing business in the Philippines, does not mean that petitioner's
goods (that is, goods bearing petitioner's trademark) are not sold
in the Philippines. For cigarettes bearing petitioners' trademarks
may in fact be imported into and be available for sale in the
Philippines through the acts of importers or distributors.
Petitioners have stated that their "Mark VI I ," "Mark Ten" and
"Lark" cigarettes are in fact brought into the country and available
for sale here in, e.g., duty-free shops, though not imported into or
sold in the Philippines by petitioners themselves.
F Here again, a basic argument of private respondent was that
petitioners had not shown any damages because they are not
doing business in the Philippines.
¾ That petitioners are not doing business and are not
licensed to do business in the Philippines, does not necessarily
mean that petitioners are not in a position to sustain, and do not in
fact sustain, damage through trademark infringement on the part
of a local enterprise. Such trademark infringement by a local
company may, for one thing, affect the volume of importation into
the Philippines of cigarettes bearing petitioners' trademarks by
independent or third party traders.
¾ That a registered trademark has value in itself
apart from the trade physically accompanying its use, has been
recognized by our Court. I n Ang v. Teodoro.
¾ STA ANA v. MALIWAT: Modern law recognizes that
the protection to which the owner of a trademark is entitled is not
limited to guarding his goods or business from actua market
competition with identical or similar products of the parties, but
extends to all cases in which the use by a junior appropriator of a
trademark or trade-name is likely to lead to a confusing of source,
as where prospective purchasers would be misled into thinking
that the complaining party has extended his business into the field
or is in any way connected with the activities of the infringer; or
when it forestalls the normal potential expansion of his business
F I next turn to private respondent's claim that issuance of an
injunction would impose heavy damage upon itself and upon the
Government.
¾ Petitioners seek only the reinstatement of the
original injunction issued by the Court of Appeals, i.e., one that
restrains private respondent from using the trademark "MARK" on
its cigarettes. There is nothing to prevent private respondent from
continuing to manufacture and sell cigarettes under any of its
already existing and registered trademarks, of which it has
several, or under some new and specially created trademark(s).
Realistically, private respondent, if enjoined, would lose only the
value of the cigarettes already branded with "MARK," the value of
the packaging material imprinted with the same trademark (which
cigarettes and material may well be amenable to re-cycling) and
the cost of past advertisements of "MARK" in media, if any.

VICTORIAS MILLING CO v. ONG SU

F The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit. The petitioner has
not shown that the design portion of the mark has been so used
that purchasers recognize the design, standing alone, as
indicating goods coming from the registrant. As correctly stated by
the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as indicia of origin for goods
to which the remarks are applied unless they have acquired a
secondary meaning. And there is no evidence that the diamond
design in the trademark of the petitioner has acquired a
secondary meaning with respect to its sugar business. The word
"Victorias" is what Identifies the sugar contained in the bag as the
product of the petitioner. Indeed, the petitioner has advertised its
sugar in bags marked "Victorias" with oval, hexagor. and other
designs.
F It seems clear that the words "Valentine" and "Victorias" and
the names and places of business of Victorias Milling Company,
Inc. and Ong Su are the dominant features of the trademarks in
question. The petitioner has not established such a substantial
similarity between the two trademarks in question as to warrant
the cancellation of the trademark 'Valentine'of the respondent Su.
F The Director of Patents correctly ruled that he has no
jurisdiction over the issue of unfair competition.
F It seems immaterial whether or not Ong Su has judicial
authority to use Mariano Ang as an alias. There is evidence that
even before the last World War, the trademark 'Valentine' and
design had been used under the name of either Ong Su or
Mariano Ang.
F
F The words "Victorias" and "Valentine" are not similar in spelling
and do not have a similar sound when pronounced. Even the
diamond designs are different. The diamond design of the
trademark "Valentine" has protruding fines at the comers. Even an
illiterate person can see the difference between the two diamond
designs.

CANON KABUSHIKI KAISHAvs. CA & NSR RUBBER

CORPORATION
F We reiterated the principle that the certificate of registration
confers upon the trademark owner the exclusive right to use its
own symbol only to those goods specified in the certificate,
subject to the conditions and limitations stated therein.[11] Thus,
the exclusive right of petitioner in this case to use the trademark
CANON is limited to the products covered by its certificate of
registration.
F Ordinarily, the ownership of a trademark or tradename is a
property right that the owner is entitled to protect[4] as mandated
by the Trademark Law.[5] However, when a trademark is used by
a party for a product in which the other party does not deal, the
use of the same trademark on the latter’s product cannot be
validly objected to.
F In Faberge, Incorporated vs. Intermediate Appellate Court,
[9] the Director of patents allowed the junior user to use the
trademark of the senior user on the ground that the briefs
manufactured by the junior user, the product for which the
trademark BRUTE was sought to be registered, was unrelated
and non-competing with the products of the senior user consisting
of after shave lotion, shaving cream, deodorant, talcum powder,
and toilet soap. The senior user vehemently objected and claimed
that it was expanding its trademark to briefs and argued that
permitting the junior user to register the same trademark would
allow the latter to invade the senior user’s exclusive domain. In
sustaining the Director of Patents, this Court said that since "(the
senior user) has not ventured in the production of briefs, an item
which is not listed in its certificate of registration, (the senior user),
cannot and should not be allowed to feign that (the junior user)
had invaded (the senior user’s) exclusive domain.
F Goods are related when they belong to the same class or have
the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to
their form, composition, texture or quality.[19] They may also be
related because they serve the same purpose or are sold in
grocery stores.
F Undoubtedly, the paints, chemical products, toner and dyestuff
of petitioner that carry the trademark CANON are unrelated to
sandals, the product of private respondent. We agree with the
BPTTT, following the Esso doctrine, when it noted that the two
classes of products in this case flow through different trade
channels. The products of petitioner are sold through special
chemical stores or distributors while the products of private
respondent are sold in grocery stores, sari-sari stores and
department stores.[23] Thus, the evident disparity of the products
of the parties in the case at bar renders unfounded the
apprehension of petitioner that confusion of business or origin
might occur if private respondent is allowed to use the mark
CANON.
F Tradename is defined by the same law as including "individual
names and surnames, firm names, tradenames, devices or words
used by manufacturers, industrialists, merchants, agriculturists,
and others to identify their business, vocations, or occupations;
the names or titles lawfully adopted and used by natural or
juridical persons, unions, and any manufacturing, industrial,
commercial, agricultural or other organizations engaged in trade
or commerce." Simply put, a trade name refers to the
business and its goodwill; a trademark refers to the goods
F There is no automatic protection afforded an entity whose
tradename is alleged to have been infringed through the use of
that name as a trademark by a local entity.
F The Paris Convention for the Protection of Industrial Property
does not automatically exclude all countries of the world which
have signed it from using a tradename which happens to be used
in one country. To illustrate – if a taxicab or bus company in a
town in the United Kingdom or India happens to use the
tradename "Rapid Transportation", it does not necessarily follow
that "Rapid" can no longer be registered in Uganda, Fiji, or the
Philippines.
F Guidelines in the implementation of Article 6bis (sic) of the
Treaty of Paris:
1. the mark must be internationally known;
2. the subject of the right must be a trademark, not a patent or
copyright or anything else;
3. mark must be for use in the same or similar kinds of goods;
and
4. the person claiming must be the owner of the mark
F Petitioner failed to comply with the third requirement of the said
memorandum that is the mark must be for use in the same or
similar kinds of goods. The Petitioner is using the mark "CANON"
for products belonging to class 2 (paints, chemical products) while
the Respondent is using the same mark for sandals (class 25).
Hence, Petitioner’s contention that its mark is well-known at the
time the Respondent filed its application for the same mark should
fail. "

WESC, WESTERN ELECTRIC COMPANY, INC., vs. REYES

F The plaintiff, Western Electric Company, Inc., has been in
existence as a corporation for over fifty years, during which time it
has established a reputation all over the world including the
Philippine Islands, for the kind and quality of its manufactured
articles, and it is very apparent that the whole purpose and intent
of Herman and his associates in seeking to incorporate another
corporation under the identical name of Western Electric
Company, Inc., and for the same identical purpose as that of the
plaintiff, is to trespass upon and profit by its good name and
business reputation. The very fact that Herman and his
associates have sought the use of that particular name for that
identical purpose is conclusive evidence of the fraudulent intent
with which it is done.
F The judgment of the lower court is affirmed, with costs. So
ordered.

STERLING PRODUCTS INTERNATIONAL, INCORPORATED v.

FARBENFABRIKEN BAYER
AKTIENGESELLSCHAFT and ALLIED MANUFACTURING AND
TRADING CO., INC.

F Accordingly, the 1927 registration in the United States of the

BAYER trademark would not of itself afford plaintiff protection for
the use by defendants in the Philippines of the same trademark
for the same or different products.
F Defendant cannot delist plaintiff’s BAYER trademark for
medicine claiming right thereto for said use. While it is conceded
that FBA's predecessors first introduced medical products with
the BAYER trademarks in the Philippine market, it is equally true
that, after World War I , no definite evidence there is that
defendants or their predecessors traded in the Philippines in
medicines with the BAYER trademarks thereafter. FBA did not
seasonably voice its objections. Lack of protest thereto connoted
acquiescence.
F The net result is that, as the trial court aptly observed, plaintiff
may hold on to its BAYER trademarks for medicines. And
defendants may continue using the same trademarks for
insecticides and other chemicals, not medicines.

ASIA BREWERY v. CA
F There is hardly any dispute that the dominant feature of SMC's
trademark is the name of the product: SAN MIGUEL PALE
PILSEN, written in white Gothic letters with elaborate serifs at the
beginning and end of the letters "S" and "M" on an amber
background across the upper portion of the rectangular design.
F On the other hand, the dominant feature of ABI's trademark is
the name: BEER PALE PILSEN, with the word "Beer" written in
large amber letters, larger than any of the letters found in the
SMC label.
F The trial court perceptively observed that the word "BEER"
does not appear in SMC's trademark, just as the words "SAN
MIGUEL" do not appear in ABI's trademark. Hence, there is
absolutely no similarity in the dominant features of both
trademarks.
F Neither in sound, spelling or appearance can BEER PALE
PILSEN be said to be confusingly similar to SAN MIGUEL PALE
PILSEN. No one who purchases BEER PALE PILSEN can
possibly be deceived that it is SAN MIGUEL PALE PILSEN. No
evidence whatsoever was presented by SMC proving otherwise
F GENERI C OR DESCRI PTI VE AND PRI MARI LY
GEOGRAPHI CALLY DESCRI PTI VE WORDS NON-REGI
STRABLE AND NOT APPROPRI ABLE; REASON THEREFOR;
CASE AT BAR.---
¾ The fact that the words pale pilsen are part of
ABI's trademark does not constitute an infringement of SMC's
trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are
generic words descriptive of the color ("pale"), of a type of beer
("pilsen"), which is a light bohemian beer with a strong hops flavor
that originated in the City of Pilsen in Czechoslovakia and
became famous in the Middle Ages
 ¾ Pilsen" is a "primarily geographically descriptive
word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by
Sec. 2 of R.A. No. 638) hence, non-registerable and not
appropriable by any beer manufacturer.
¾ The words "pale pilsen" may not be appropriated
by SMC for its exclusive use even if they are part of its registered
trademark: SAN MIGUEL PALE PILSEN, any more than such
descriptive words as "evaporated milk," "tomato ketchup,"
"cheddar cheese," "corn flakes" and "cooking oil" may be
appropriated by any single manufacturer of these food products,
for no other reason than that he was the first to use them in his
registered trademark. In Masso Hermanos, S.A. vs. Director of
Patents, 94 Phil. 136, 139 (1953), it was held that a dealer in
shoes cannot register "Leather Shoes" as his trademark because
that would be merely descriptive and it would be unjust to deprive
other dealers in leather shoes of the right to use the same words
with reference to their merchandise. No one may appropriate
generic or descriptive words. They belong to the public domain.
¾
F PROTECTI ON AGAI NST I MI TATI ON PROPERLY LI MI TED
TO NONFUNCTI ONAL FEATURES; CASE AT BAR.
¾ The petitioner's contention that bottle size, shape
and color may not be the exclusive property of any one beer
manufacturer is well taken. SMC's being the first to use the steinie
bottle does not give SMC a vested right to use it to the exclusion
of everyone else. Being of functional or common use, and not
the exclusive invention of any one, it is available to all who
might need to use it within the industry. Nobody can acquire
any exclusive right to market articles supplying simple human
needs in containers or wrappers of the general form, size and
character commonly and immediately used in marketing such
articles
¾ ABI does not use SMC's steinie bottle. Neither did
ABI copy it. ABI makes its own steinie bottle which has a fat
bulging neck to differentiate it from SMC's bottle. The amber color
is a functional feature of the beer bottle. As pointed out by ABI, all
bottled beer produced in the Philippines is contained and sold in
amber-colored bottles because amber is the most effective color
in preventing transmission of light and provides the maximum
protection to beer.
¾ That the ABI bottle has a 320 ml. capacity is not
due to a desire to imitate SMC's bottle because that bottle
capacity is the standard prescribed under Metrication Circular No.
778, dated 4 December 1979, of the Department of Trade, Metric
System Board.
¾ With regard to the white label of both beer bottles,
ABI explained that it used the color white for its label because
white presents the strongest contrast to the amber color of ABI's
bottle; it is also the most economical to use on labels, and the
easiest to "bake" in the furnace (p. 16, TSN of September 20,
1988). No one can have a monopoly of the color amber for
bottles, nor of white for labels, nor of the rectangular shape which
is the usual configuration of labels. Needless to say, the shape of
the bottle and of the label is unimportant. What is all important is
the name of the product written on the label of the bottle for that is
how one beer may be distinguished form the others.
F TRADEMARK ALLEGEDLY I NFRI NGED CONSI DERED AS
A WHOLE ANDNOT AS DI SSECTED; DOCTRI NE ENUNCI
ATED I N DEL MONTE CORPORATI ON vs. COURT OF
APPEALS AND SUNSHI NE SAUCE MANUFACTURI NG I
NDUSTRI ES, 181 SCRA 410, 419, NOT APPLI CABLE TO
CASE AT BAR.
¾ Del Monte Corporation vs. Court of Appeals and
Sunshine Sauce Manufacturing Industries," 181 SCRA 410, 419,
3 that: to determine whether a trademark has been infringed, we
must consider the mark as a whole and not as dissected. If the
buyer is deceived, it is attributable to the marks as a totality, not
usually to any part of it.
¾ That ruling may not apply to all kinds of products.
Our ruling in Del Monte would not apply to beer which is not
usually picked from a store shelf but ordered by brand by the beer
drinker himself from the storekeeper or waiter in a pub or
restaurant.
F Moreover, SMC's brand or trademark: "SAN MIGUEL PALE
PILSEN" is not infringed by ABI's mark: "BEER NA BEER" or
"BEER PALE PILSEN." ABI makes its own bottle with a bulging
neck to differentiate it from SMC's bottle, and prints ABI's name in
three (3) places on said bottle (front, back and bottle cap) to prove
that it has no intention to pass of its "BEER" as "SAN MIGUEL."
F There is no confusing similarity between the competing beers
for the name of one is "SAN MIGUEL" while the competitor is
plain "BEER" and the points of dissimilarity between the two
outnumber their points of similarity.
F Petitioner ABI has neither infringed SMC's trademark nor
committed unfair competition with the latter's SAN MIGUEL PALE
PILSEN product. While its BEER PALE PILSEN admittedly
competes with the latter in the open market, that competition is
neither unfair nor fraudulent. Hence, we must deny SMC's prayer
to suppress it.

DISSENTING: JUSTICE CRUZ

F A number of courts have held that to determine whether a
trademark has been infringed, we must consider the mark as a
whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it.
The court therefore should be guided by its first impression, for a
buyer acts quickly and is governed by a casual glance, the value
of which may be dissipated as soon as the court assumes to
analyze carefully the respective features of the mark.

PAG-ASA INDUSTRIAL COPORATION v. COURT OF

APPEALS
 F An unreasonable length of time had already passed before
respondent asserted its right to the trademark. There is a
presumption of neglect already amounting to "abandonment" of a
right after a party had remained silent for quite a long time during
which petitioner had been openly using the trademark in question.
Such inaction on the part of respondent entitles petitioner to the
equitable principle of laches.
F Respondent wanted goodwill and a wide market established at
the expense of the petitioner but for its benefit. It is precisely the
intention of the law, including a provision on equitable principle to
protect only the vigilant, not those guilty of laches.
STA. ANA v. MALIWAT
F In the case at bar, the proof of date of first use (1953), earlier
than that alleged in respondent Maliwat's application (1962), can
be no less than clear and convincing because the fact was
stipulated and no proof was needed. (JUDICIAL ADMISSION)
F EXTENT OF THE PROTECTI ON TO THE TRADEMARK
OWNER. — Modern law recognizes that the protection to which
the owner of a trademark is entitled is not limited to guarding his
goods or business from actual market competition with identical or
similar products of the parties, but extends to all cases in which
the use by a junior appropriator of a trade-mark or trade-name is
likely to lead to a confusion of source, as where prospective
purchasers would be misled into thinking that the complaining
party has extended his business into the field or is in any way
connected with the activities of the infringer or when it forestalls
the normal potential expansion of his business.
F POSSESSI ON OF THE SAME DESCRI PTI VE PROPERTI
ES NOT REQUI RED; CASE AT BAR. — Sec. 4, Rep. Act No.
166 does not require that the articles of manufacture of the
previous user and the late user of the mark should possess the
same descriptive properties or should fall into the same
categories as to bar the latter from registering his mark in the
principal register.
 F Therefore, whether or not shirts and shoes have the same
descriptive properties or whether or not it is the prevailing practice
or the tendency of tailors and haberdashers to expand their
business into shoe-making are not controlling. The meat of the
matter is the likelihood of confusion, mistake or deception upon
purchaser of the goods of the junior user of the mark and the
goods manufactured by the previous user. Here, the resemblance
or similarity of the mark "FLORMANN and the name FLORMEN
and the likelihood of confusion, one to the other, is admitted;
therefore, the prior adopter, respondent Maliwat, has the better
right to the use of the mark.

Phil. Refining Co. vs. Ng Sam[G.R.No. L-26676.July 30, 1982]

F A rudimentary precept in trademark protection is that "the right
to a trademark is a limited one, in the sense that others may used
the same mark on unrelated goods.
F A trademark is designed to Identify the user. But it should be so
distinctive and sufficiently original as to enable those who come
into contact with it to recognize instantly the Identity of the user. "
It must be affirmative and definite, significant and distinctive,
capable to indicate origin
F APPROPRI ATI ON OR I MI TATI ON OF TRADEMARK
"CAMIA” CANNOT I NJ URE PETI TI ONER I N CASE AT BAR
FOR BEI NG A GENERIC ANDCOMMON TERM. Being a generic
and common term, its appropriation as a trademark, albeit in a
fanciful manner in that it bears no relation to the product it
Identifies, is valid.
F It has been held that if a mark is so commonplace that it cannot
be readily distinguished from others, then it is apparent that it
cannot Identify a particular business; and he who first adopted it
cannot be injured by any subsequent appropriation or imitation by
others, and the public will not be deceived.
F WHERE BUSI NESSES OF PARTI ES I N CASE AT BAR ARE
NONCOMPETITI VE AND THEIR PRODUCTS UNRELATED,
THE USE OF I DENTI CAL TRADEMARKS ON PRODUCTS
UNDER THE SAME CLASSI FI CATI ON CANNOT CONFUSE
CONSUMERS AS TO THEI R SOURCE.

MIGHTY CORPORATION v. E.J. GALLO WINERY

F DISTINCTIONS BETWEEN TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION: The l aw on unfair competition is
broader and more inclusive than the law on trademark
infringement. The latter is more limited but it recognizes a more
exclusive right derived from the trademark adoption and
registration by the person whose goods or business is first
associated with it. The law on trademarks is thus a specialized
subject distinct from the law on unfair competition. Hence, even if
one fails to establish his exclusive property right to a trademark,
he may still obtain relief on the ground of his competitor's
unfairness or fraud.
F In Del Monte Corporation vs. Court of Appeals,[45] we
distinguished trademark infringement from unfair competition:
1. Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of one's
goods as those of another.
2. In infringement of trademark fraudulent intent is unnecessary,
whereas in unfair competition fraudulent intent is essential.
3. In infringement of trademark the prior registration of the
trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary.
F Thus, under Article 6bis of the Paris Convention, the following
are the elements of trademark infringement:
(a) registration or use by another person of a trademark which is
a reproduction, imitation or translation liable to create confusion
(b) of a mark considered by the competent authority of the
country of registration or use to be well-known in that country and
is already the mark of a person entitled to the benefits of the Paris
Convention, and
(c)such trademark is used for identical or similar goods.
F In summary, the Paris Convention protects well-known
trademarks only (to be determined by domestic authorities), while
the Trademark Law protects all trademarks, whether well-known
or not, provided that they have been registered and are in actual
commercial use in the Philippines.\
F Under both the Paris Convention and the Trademark Law, the
protection of a registered trademark is limited only to goods
identical or similar to those in respect of which such trademark is
registered and only when there is likelihood of confusion. Under
both laws, the time element in commencing infringement cases is
material in ascertaining the registrant’s express or implied
consent to another’s use of its trademark or a colorable imitation
thereof. This is why acquiescence, estoppel or laches may defeat
the registrant’s otherwise valid cause of action.
F NO LIKELIHOOD OF CONFUSION, MISTAKE OR DECEIT AS
TO THE IDENTITY OR SOURCE OF PETITIONERS’ AND
RESPONDENTS’ GOODS OR BUSINESS.
F There are two types of confusion in trademark infringement.
The first is “confusion of goods” when an otherwise prudent
purchaser is induced to purchase one product in the belief that he
is purchasing another, in which case defendant’s goods are then
bought as the plaintiff’s and its poor quality reflects badly on the
plaintiff’s reputation. The other is “confusion of business” wherein
the goods of the parties are different but the defendant’s product
can reasonably (though mistakenly) be assumed to originate from
the plaintiff, thus deceiving the public into believing that there is
some connection between the plaintiff and defendant which, in
fact, does not exist
F In determining the likelihood of confusion, the Court must
consider: [a] the resemblance between the trademarks; [b] the
similarity of the goods to which the trademarks are attached; [c]
the likely effect on the purchaser and [d] the registrant’s express
or implied consent and other fair and equitable considerations.
 F The many different features like color schemes, art works and
other markings of both products drown out the similarity between
them – the use of the word “GALLO” ― a family surname for the
Gallo Winery’s wines and a Spanish word for rooster for
petitioners’ cigarettes.
F WINES AND CIGARETTES ARE NOT IDENTICAL, SIMILAR,
COMPETING OR RELATED GOODS
F RELATED GOODS: Simply stated, when goods are so related
that the public may be, or is actually, deceived and misled that
they come from the same maker or manufacturer, trademark
infringement occurs
F In this regard, we adopted the Director of Patents’ finding in
Philippine Refining Co., Inc. vs. Ng Sam and the Director of
Patents:
F GALLO cigarettes are inexpensive items while GALLO wines
are not. GALLO wines are patronized by middle-to-high-income
earners while GALLO cigarettes appeal only to simple folks like
farmers, fishermen, laborers and other low-income workers.
F GALLO cigarettes and GALLO wines are not sold through the
same channels of trade. GALLO cigarettes are Philippine-made
and petitioners neither claim nor pass off their goods as imported
or emanating from Gallo Winery. GALLO cigarettes are
distributed, marketed and sold through ambulant and sidewalk
vendors, small local sari-sari stores and grocery stores in
Philippine rural areas, mainly in Misamis Oriental, Pangasinan,
Bohol, and Cebu.[118] On the other hand, GALLO wines are
imported, distributed and sold in the Philippines through Gallo
Winery’s exclusive contracts with a domestic entity, which is
currently Andresons. By respondents’ own testimonial evidence,
GALLO wines are sold in hotels, expensive bars and restaurants,
and high-end grocery stores and supermarkets, not through sari-
sari stores or ambulant vendors.
F THE GALLO WINE TRADEMARK IS NOT A WELL-KNOWN
MARK IN THE CONTEXT OF THE PARIS CONVENTION IN
THIS CASE SINCE WINES AND CIGARETTES ARE NOT
IDENTICAL OR SIMILAR GOODS
F “Regarding the applicability of Article 8 of the Paris Convention,
this Office believes that there is no automatic protection afforded
an entity whose tradename is alleged to have been infringed
through the use of that name as a trademark by a local entity.

PUMA v. IAC
F A FOREIGN CORPORATI ON NOT DOING BUSI NESS IN
THE PHI LI PPINE CAN SUE IN PHI LI PPINE COURT FOR
INFRI NGEMENT----
¾ I n the leading case of La Chemise Lacoste, S.A.
v. Fernandez, (129 SCRA 373), we ruled: "But even assuming the
truth of the private respondent's allegation that the petitioner
failed to allege material facts in its petition relative to capacity to
sue, the petitioner may still maintain the present suit against
respondent Hemandas. As early as 1927, this Court was, and it
still is, of the view that a foreign corporation not doing business in
the Philippines needs no license to sue before Philippine courts
for infringement of trademark and unfair competition."
¾ I n the case of Converse Rubber Corporation v.
Universal Rubber Products, I nc. (147 SCRA 165), we likewise re-
affirmed our adherence to the Paris Convention: "The ruling in the
aforecited case is in consonance with the Convention of the Union
of Paris for the Protection of I ndustrial Property to which the
Philippines became a party on September 27, 1965. Article 8
thereof provides that 'a trade name [corporation name] shall be
protected in all the countries of the Union without the obligation of
filing or registration, whether or not it forms part of the trademark.'
F LIS PENDENS; PRI NCI PLE NOT APPLICABLE TO ADMI NI
STRATI VE CASES.
F As regards the propriety of the issuance of the writ of
preliminary injunction, the records show that herein private
respondent was given the opportunity to present its counter-
evidence against the issuance thereof but it intentionally refused
to do so to be consistent with its theory that the civil case should
be dismissed in the first place. Considering the fact that "PUMA"
is an internationally known brand name, it is pertinent to reiterate
the directive to lower courts, which equally applies to
administrative agencies. Judges all over the country are well
advised to remember that court processes should not be used as
instruments to, unwittingly or otherwise, aid counterfeiters and
intellectual pirates, tie the hands of the law as it seeks to protect
the Filipino consuming public and frustrate executive and
administrative implementation of solemn commitments pursuant
to international conventions and treaties."
LA CHEMISE LACOSTE v. HERNANDEZ (Art. 152. 2)
F Whether the proceedings before the patent office is a
prejudicial question that need to be resolved before the criminal
action for unfair competition may be pursued.
F No. The proceedings pending before the Patent Office do not
partake of the nature of a prejudicial question which must first be
definitely resolved. The case which suspends the criminal action
must be a civil case, not a mere administrative case, which is
determinative of the innocence or guilt of the accused. The
issue whether a trademark used is different from another’s
trademark is a matter of defense and will be better resolved
in the criminal proceedings before a court of justice instead
of raising it as a preliminary matter in an administrative
proceeding.

F Inasmuch as the goodwill and reputation of La Chemise

Lacoste products date back even before 1964, Hemandas
cannot be allowed to continue the trademark “Lacoste” for the
reason that he was the first registrant in the Supplemental
Register of a trademark used in international commerce.
Registration in the Supplemental Register cannot be given a
posture as if the registration is in the Principal Register. It must
be noted that one may be declared an unfair competitor even if
his competing trademark is registered. La Chemise Lacoste is
world renowned mark, and by virtue of the 20 November 1980
Memorandum of the Minister of Trade to the director of patents in
compliance with the Paris Convention for the protection of
industrial property, effectively cancels the registration of contrary
claimants to the enumerated marks, which include “Lacoste.”