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CASE DIGESTS CANON KABUSHIKI KAISHA vs. COURT OF APPEALS G.R. No.

120900, July 20, 2000 FACTS: On January 15, 1985, private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition alleging that it will be damaged by the registration of the trademark CANON in the name of private respondent since they were using the same trademark for their footwear line of products. The private respondent will also use the name Canon for its footwear products. Based on the records, the evidence presented by petitioner consisted of its certificates of registration for the mark CANON in various countries covering goods belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its Philippine Trademark Registration No. 39398, showing its ownership over the trademark CANON. The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of petitioner and giving due course to NSR's application for the registration of the trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually affirmed the decision of the BPTTT. ISSUE: Is the use of trademark, CANON, by the private respondent affects the business of Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON? HELD: The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. 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. The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent.

MIRPURI vs. CA G.R. No. 114508, November 19, 1999

Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of New York, USA, opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said trademark will cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course to the application. Escobar later assigned all his rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law. Due to this failure, the Bureau cancelled Escobars certificate of registration. In 1981, Escobar and petitioner

separately filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark in the US and other countries, and the international recognition of the trademark established by extensive use and advertisement of respondents products for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims 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 would arise for a considerable number of years prior to petitioners first application. Indeed, these are substantial allegations that raised new issues and necessarily gave respondents a new cause of action. Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose the second application. It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the actions are based on different statutes.

ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION G.R. 103543 July 5, 1993 Facts: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market. The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI then filed a petition for certiorari. Issue:

Are the words PALE PILSEN as part of ABIs trademark constitute infringement of SMCs trademark? Ruling: No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of ABIs trademark, are generic words descriptive of the color (pale), of a type of beer (pilsen), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen, Czechislovakia and became famous in the Middle Ages. The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark. No one may appropriate generic or descriptive words. They belong to the public domain. Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE PILSEN product. McDonald's Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto (G.R. No. 143993, August 18, 2004, 480 Phil. 402) FACTS: Petitioner, McDonalds Corporation (McDonalds) is a corporation organized under the laws of Delaware, US. It operates, by itself or through its franchisees, a global chain of fast food restaurants. It owns a family of marks including the Big Mac mark for its double decker hamburger sandwich. McDonalds registered his trademark with the US trademark registry sometime 1979. Based on home registration, McDonalds applied for registration of the same mark in principal registry of the then Philippine Bureau of Patents, Trademark and Technology (PBPTT), now the Intellectual Property Office (IPO). Pending approval of this application, McDonalds introduced its Big Mac hamburger sandwiches in the Philippine market in 1981. On 1985, the PBPTT, allowed registration of the Big Mac mark in the Philippine registry based on its home registration in the US. Like its other marks, McDonalds display the Big Mac mark in its item and paraphernalia in its restaurant, and its outdoor and indoor signages. From 1982 to 1990, McDonalds spent millions in advertisement for big mac hamburger sandwich alone. Petitioner McGeorge Food Industries (Petitioner McGeorge) a domestic corporation, is McDonalds Philippine franchisee. Respondent, LC Big Mak burger inc. is a domestic corporation which operates fast food outlets and snack vans in metro manila and nearby provinces. Respondents corporations menu includes hamburger sandwiches and other food items. Respondent Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huero are the incoporators, stockholders and directors of respondent corporation. On 1988, respondent corporation applied with the PBPTT for the registration of the Big Mak mark for its hamburger sandwiches. McDonalds opposed respondent corporations application on the ground that Big Mak was colorable imitation of its registered Big Mac mark for the same food products. McDonalds also informed respondent Francis Dy, the chairman of the board of directors of the respondent corporation, of its exclusive right to the Big Mac mark and requested him to desist from using the Big Mak mark or any similar mark. Having received no reply from respondent Dy, petitioners sued respondents in the RTC Makati for trademark infringement and unfair competition. RTC issued a temporary restraining order against respondents enjoinining them from using the Big Mak mark in the operation of their business in the NCR. On 1990, RTC issued a writ of

preliminary

injunction

replacing

the

TRO.

In their answer, respondents admitted that they have been using the Big Mak burger for their fast food business. Respondents claimed, however, that McDonalds does not have an exclusive right to the Big Mac mark or to any other similar marks. Respondents point out that the Isaiyas group of corporations registered the same mark for hamburger sandwiches with the PBOTT on 1979. One Rodolfo Topacio similarly registered the same mark on 1983, prior to McDonalds registration on 1985. Alternatively, respondents claimed that they are not liable for trademark infringement and unfair competition, as the Big Mak mark they sought to register does not constitute a colorable imitation of the Big Mac mark. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches as those of petitioners Big Mak hamburgers. Respondents sought damages in their counterclaim. In their reply, petitioners denied respondents claim that McDonalds is not the exclusive owner of the Big Mac mark. Petitioners asserted that while the Isaiyas group and Topacio did register the Big Mac mark ahead of them, the Isaiyas group did so only in the supplemental register of PBPTT and such registration does not provide any protection. McDonalds disclosed that it had acquired Topacios rights to his registration in a deed of assignment. ISSUE: Did the same acts of defendants in using the name Big Mak as a trademark or trade name in their signages, or in causing the name Big Mak to be printed on the wrappers and containers of their food products also constitute an act of unfair competition under section 29 of the trademark law? RULING: Yes. The provision of the law concerning unfair competition is broader and more inclusive than that the law concerning the infringement of trademark, which is more limited range, but within its narrower range recognizes a more exclusive right derived by the adoption and registration of the trademark by the person whose goods or services are first associated therewith. Notwithstanding the distinction between an action for trademark infringement and an action for unfair competition, however, the law extends substantially the same relief to the injured party for both cases. Any conduct may be said to constitute unfair competition if the effect is to pass off on the public the goods of one man as the goods of another. The choice of Big Mak as trade name by defendant corporation is not merely for sentimental reasons but was clearly made to take advantage of the reputation, popularity and the established goodwill of plaintiff McDonalds. For as stated in Section 29, a person is guilty of unfair competition who in selling his goods shall give them the general appearance, of goods of another manufacturer or dealer, either as goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. Thus, plaintiffs have established their valid cause of action against the defendants for trademark infringement and unfair competition and for damages. Lyceum of the Philippines vs. Court of Appeals [GR 101897, 5 March 1993] Facts: Lyceum of the Philippines Inc. had sometime before commenced in the SEC a proceeding (SEC-Case No. 1241) against the Lyceum of Baguio, Inc. to require it to change its corporate name and to adopt another name not "similar [to] or identical" with that of petitioner. In an Order dated 20 April 1977, Associate Commissioner Julio Sulit held that the corporate name of petitioner and that of the Lyceum of Baguio, Inc. were substantially identical because of the presence of a "dominant" word, i.e., "Lyceum," the name of the geographical location of the

campus being the only word which distinguished one from the other corporate name. The SEC also noted that Lyceum of the Philippines Inc. had registered as a corporation ahead of the Lyceum of Baguio, Inc. in point of time, and ordered the latter to change its name to another name "not similar or identical [with]" the names of previously registered entities. The Lyceum of Baguio, Inc. assailed the Order of the SEC before the Supreme Court (GR L-46595). In a Minute Resolution dated 14 September 1977, the Court denied the Petition for Review for lack of merit. Entry of judgment in that case was made on 21 October 1977. Armed with the Resolution of the Supreme Court, the Lyceum of the Philippines then wrote all the educational institutions it could find using the word "Lyceum" as part of their corporate name, and advised them to discontinue such use of "Lyceum." When, with the passage of time, it became clear that this recourse had failed, and on 24 February 1984, Lyceum of the Philippines instituted before the SEC SEC-Case 2579 to enforce what Lyceum of the Philippines claims as its proprietary right to the word "Lyceum." The SEC hearing officer rendered a decision sustaining petitioner's claim to an exclusive right to use the word "Lyceum." The hearing officer relied upon the SEC ruling in the Lyceum of Baguio, Inc. case (SEC-Case 1241) and held that the word "Lyceum" was capable of appropriation and that petitioner had acquired an enforceable exclusive right to the use of that word. On appeal, however, by Lyceum Of Aparri, Lyceum Of Cabagan, Lyceum Of Camalaniugan, Inc., Lyceum Of Lallo, Inc., Lyceum Of Tuao, Inc., Buhi Lyceum, Central Lyceum Of Catanduanes, Lyceum Of Southern Philippines, Lyceum Of Eastern Mindanao, Inc. and Western Pangasinan Lyceum, Inc.,, which are also educational institutions, to the SEC En Banc, the decision of the hearing officer was reversed and set aside. The SEC En Banc did not consider the word "Lyceum" to have become so identified with Lyceum of the Philippines as to render use thereof by other institutions as productive of confusion about the identity of the schools concerned in the mind of the general public. Unlike its hearing officer, the SEC En Banc held that the attaching of geographical names to the word "Lyceum" served sufficiently to distinguish the schools from one another, especially in view of the fact that the campuses of Lyceum of the Philippines and those of the other Lyceums were physically quite remote from each other. Lyceum of the Philippines then went on appeal to the Court of Appeals. In its Decision dated 28 June 1991, however, the Court of Appeals affirmed the questioned Orders of the SEC En Banc. Lyceum of the Philippines filed a motion for reconsideration, without success. Lyceum of the Philippines filed the petition for review. Issue: 1. Whether the names of the contending Lyceum schools are confusingly similar. 2. Whether the use by the Lyceum of the Philippines of "Lyceum" in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (or at least that portion of the general public which has to do with schools). Held: 1. The Articles of Incorporation of a corporation must, among other things, set out the name of the corporation. Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned. It provides that "No corporate name may be allowed by the Securities an Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws. When a change in the corporate name is approved, the Commission shall issue an amended certificate of incorporation under the amended name." The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently confusing" or "contrary to existing laws," is the avoidance of fraud upon the public which would have occasion to deal with the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration and supervision over corporations. Herein, the Court does not consider that the corporate names of the academic institutions are "identical with, or deceptively or confusingly similar" to that of Lyceum of the Philippines Inc.. True enough, the corporate names of the other schools (defendant institutions) entities all carry the word "Lyceum" but confusion and deception are effectively precluded by the appending of geographic names to the word "Lyceum." Thus, the "Lyceum of Aparri" cannot be mistaken by the general public for the Lyceum of the Philippines, or that the "Lyceum of Camalaniugan" would be confused with

the Lyceum of the Philippines. Further, etymologically, the word "Lyceum" is the Latin word for the Greek lykeion which in turn referred to a locality on the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and adorned with fountains and buildings erected by Pisistratus, Pericles and Lycurgus frequented by the youth for exercise and by the philosopher Aristotle and his followers for teaching." In time, the word "Lyceum" became associated with schools and other institutions providing public lectures and concerts and public discussions. Thus today, the word "Lyceum" generally refers to a school or an institution of learning. Since "Lyceum" or "Liceo" denotes a school or institution of learning, it is not unnatural to use this word to designate an entity which is organized and operating as an educational institution. To determine whether a given corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name, it is not enough to ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate corporate names in their entirety and when the name of Lyceum of the Philippines is juxtaposed with the names of private respondents, they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other. 2. The number alone of the private respondents in the present case suggests strongly that the Lyceum of the Philippines' use of the word "Lyceum" has not been attended with the exclusivity essential for applicability of the doctrine of secondary meaning. It may be noted also that at least one of the private respondents, i.e., the Western Pangasinan Lyceum, Inc., used the term "Lyceum" 17 years before Lyceum of the Philippines registered its own corporate name with the SEC and began using the word "Lyceum." It follows that if any institution had acquired an exclusive right to the word "Lyceum," that institution would have been the Western Pangasinan Lyceum, Inc. rather than Lyceum of the Philippines. Hence, Lyceum of the Philippines is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of their corporate names. Ana Ang vs. Toribio Teodoro G.R. No. L-48226 December 14, 1942 Facts: Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. On September 29, 1915, he formally registered it as trade-mark and as trade-name on January 3, 1933. Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds that the two trademarks are dissimilar and are used on different and non-competing goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. The Court of Appeals reversed said judgment, directing the Director of Commerce to cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and perpetually enjoining the latter from using said trade-mark on goods manufactured and sold by her. Thus, Issue: Are the goods or articles or which the two trademarks are used similar or belong to the same class of merchandise? this case, a petition for certiorari.

Ruling: Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to the same class of merchandise as shoes and slippers. They are closely related goods. The Supreme Court affirmed the judgment of the Court of Appeals and added that although two non -competing articles may be classified under to 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 trademarks would be likely to cause confusion as to the origin, or personal source, of the second users goods. They would be considered as n ot 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 that the first user made the second users goods.

DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES G.R. No. L-78325 January 25, 1990 FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and manufacturer, PhilPack filed an infringement of copyright complaint against respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the petitioner, to which is deceiving and misleading to the public. In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners. The Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties nor on the continued use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals. ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of its logos and bottles. HELD: Yes. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached; the discerning eye of the observer must focus not only on the precognizant words but also on the other features appearing on both labels. It has been correctly held that side-by-side comparison is not the final test of similarity. In determining whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this case. The Sunshine label is a colorable imitation of the Del Monte trademark. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive. With regard to the bottle use, Sunshine despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners'

bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte. Converse Rubber vs Universal Rubber FACTS: Converse Rubber Corporation is an American corporation while Universal Rubber Product is a corporation licensed to do business in the country. Converse has been operating since 1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an application for the trademark Universal Converse and Device before the Philippine Patent Office. Converse Rubber opposed as it averred that the word Converse which is part of its corporate name cannot be granted as part of Universal Rubbers trademark or trade name because it will likely deceive purchasers of Universal Rubbers products as it may be mistaken by unwary customers to be manufactured by Converse Rubber. The Director of Patents did not grant the opposition by Converse Rubber. ISSUE: Whether or not the decision of the Director of Patents is correct. HELD: No. From a cursory appreciation of the Converse Rubbers corporate name CONVERSE RUBBER CORPORATION, it is evident that the word CONVERSE is the dominant word which identifies Converse Rubber from other corporations engaged in similar business. Universal Rubber, in the stipulation of facts, admitted Converse Rubbers existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. Knowing, therefore, that the word CONVERSE belongs to and is being used by Converse Rubber, and is in fact the dominant word in its corporate name, Universal Rubber has no right to appropriate the same for use on its products which are similar to those being produced by Converse Rubber.

La Chemise Lacoste vs. Fernandez GR 63796-97, 21 May 1984; First Division, Gutierrez Jr. (J) Facts: La chemise Lacoste is a French corporation and the actual owner of the trademarks Lacoste, Chemise Lacoste, Crocodile Device and a composite mark consisting of the word Lacoste and a representation of a crocodile/alligator, used on clothings and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark Chemise Lacoste and Q Crocodile Device both in the supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the Crocodile device and Lacoste. Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of Lacoste. In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair competition committed by Hemandas and requesting the agencys assistance. A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed motion to quash the warrants, which the court granted. The search warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari. Issue:

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. Held: 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 anothers 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. 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"

Philip Morris vs. Court of Appeals Facts: Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the writof preliminary injunction it earlier had issued against Fortune Tobacco Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes in the local market. Banking on the thesis that petitioners' respective symbols "MARK VII", 'MARK TEN", and "MARK", also for cigarettes, must be protected against unauthorized appropriation, Philip Morris, Incorporated is a corporation organized under the laws of the State of Virginia ,United States of America, and does business at 100 Park Avenue, New York, New York, United States of America. The two other plaintiff foreign corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., are similarly not doing business in the Philippines but are suing on an isolated transaction. Plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark' Plaintiffs admit in the complaint that "xxx they are not doing business in the Philippines and are suing on an isolated transaction xxx'. This simply means that they are not engaged in the sale, manufacture, importation, exportation and advertisement of their cigarette products in the Philippines. Issue: Whether or not there has been an invasion o plaintiffs' right of property to such trademark or tradename.Whether of not there is a violation of the International Agreement on protection of trademarks. Held: There is no proof whatsoever that any of plaintiffs products which they seek to protect from any adverse effect of the trademark applied for by defendant, is in actual use and available for commercial purposes anywhere in the Philippines. To sustain a successful prosecution of their suit for infringement, petitioners, as foreign corporations not engaged in local commerce, rely on Section 21-A of the Trademark Law reading as follows: SECTION 21-A. Any

foreign corporation or juristic person to which a mark or trade-name has been registered or assigned under this act may bring an action hereunder for infringement, for unfair competition, or false designation of origin and false description, whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty nine, as amended, otherwise known as the Corporation Law, at the time it brings complaint: 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 a similar privilege to corporate or juristic persons of the Philippines. (As inserted by Sec. 7 of Republic Act No. 638.) to drive home the point that they are not precluded from initiating a cause of action in the Philippines on account of the principal perception that another entity is pirating their symbol without any lawful authority to do so.

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