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Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R.

No. 167715, 17 November 2010


Facts:
Pfizer is the registered owner of a patent pertaining to Sulbactam
Ampicillin. It is marketed under the brand name Unasyn. Sometime
in January and February 2003, Pfizer discovered that Pharmawealth
submitted bids for the supply of Sulbactam Ampicillin to several
hospitals without the Pfizers consent. Pfizer then demanded that the
hospitals cease and desist from accepting such bids. Pfizer also
demanded that Pharmawealth immediately withdraw its bids to
supply Sulbactam Ampicillin. Pharmawealth and the hospitals
ignored the demands.

granted to the Director General. The CA denied all the motions.


Pharmawealth filed a petition for review on Certiorari with the
Supreme Court.
Issues:
a) Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already lapsed?

b) What tribunal has jurisdiction to review the decisions of the


Director of Legal Affairs of the Intellectual Property Office?

Held:
Pfizer then filed a complaint for patent infringement with a prayer for
permanent injunction and forfeiture of the infringing products. A
preliminary injunction effective for 90 days was granted by the IPOs
Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for
extension filed by Pfizer was denied. Pfizer filed a Special Civil
Action for Certiorari in the Court of Appeals (CA) assailing the denial.
While the case was pending in the CA, Pfizer filed with the Regional
Trial Court of Makati (RTC) a complaint for infringement and unfair
competition, with a prayer for injunction. The RTC issued a
temporary restraining order, and then a preliminary injunction.
Pharmawealth filed a motion to dismiss the case in the CA, on the
ground of forum shopping. Nevertheless, the CA issued a temporary
restraining order. Pharmawealth again filed a motion to dismiss,
alleging that the patent, the main basis of the case, had already
lapsed, thus making the case moot, and that the CA had no
jurisdiction to review the order of the IPO-BLA because this was

a) No. The provision of R.A. 165, from which the Pfizers patent was
based, clearly states that "[the] patentee shall have the exclusive
right to make, use and sell the patented machine, article or product,
and to use the patented process for the purpose of industry or
commerce, throughout the territory of the Philippines for the term of
the patent; and such making, using, or selling by any person without
the authorization of the patentee constitutes infringement of the
patent."
Clearly, the patentees exclusive rights exist only during the term of
the patent. Since the patent was registered on 16 July 1987, it
expired, in accordance with the provisions of R.A. 165, after 17
years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer
possessed the exclusive right to make, use, and sell the products
covered by their patent. The CA was wrong in issuing a temporary
restraining
order
after
the
cut-off
date.

b) 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.

Canon Kabushiki Kaisha v. Court of Appeals


20 July 2000

NSR Rubber Corporation filed an application for registration of


the mark CANON for sandals in the Bureau of Patents, Trademarks,
and Technology Transfer (BPTTT).

An opposition was filed by Canon Kabushiki Kaisha (CKK), a


foreign corporation duly organized and existing under the laws of
Japan. CKK alleged that it will be damaged by the registration of the
trademark CANON in the name of NSR Rubber Corporation.

The evidence presented by CKK 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).

CKK also submitted in evidence its Philippine Trademark


Registration No. 39398, showing its ownership over the trademark
CANON also under class 2.

However, the Bureau of Patents, Trademarks, and


Technology Transfer (BPTTT) dismissed the petition of CKK and
gave due course to NSRs application for the registration of the
trademark CANON.

According to BPTTT, the trademark CANON as used by


CKK for its paints, chemical products, toner, and dyestuff, can be
used by NSR for its sandals because the products of these two
parties are dissimilar.

Hence, CKK filed this case arguing that:

a) it is entitled to exclusive use of the mark canon because it is its


trademark and is used also for footwear.
b) to allow NSR to register canon for footwear is to prevent CKK from
using canon for various kinds of footwear, when in fact, CKK has
earlier used said mark for said goods.
c) it is also entitled to the right to exclusively use canon to prevent
confusion of business.

ISSUE: WON NSR RUBBER CORPORATION MAY BE ALLOWED


TO USE THE MARK CANON.
HELD: Yes.
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 certificates of registration for the trademark CANON in other
countries and in the Philippines as presented by CKK, clearly
showed that said certificates of registration cover goods belonging to
class 2 (paints, chemical products, toner, dyestuff). On this basis, the
BPTTT correctly ruled that since the certificate of registration of
petitioner for the trademark CANON covers class 2 (paints, chemical
products, toner, dyestuff), NSR 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 CKK and the sandals of NSR.
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.
Thus, the exclusive right of CKK in this case to use the trademark

CANON is limited only to the products covered by its certificate of


registration.
As to the argument of CKK that there could be confusion as to the
origin of the goods, as well as confusion of business, if NSR is
allowed to register the mark CANON, the SC ruled that in cases of
confusion of business or origin, the question that usually arises is
whether the respective goods or services of the senior user and the
junior user are so related as to likely cause confusion of business or
origin, and thereby render the trademark or tradenames confusingly
similar.
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. They may also be related because
they serve the same purpose or are sold in grocery stores.
The paints, chemical products, toner and dyestuff of CKK that carry
the trademark CANON are unrelated to sandals, the product of NSR.
The two classes of products in this case flow through different trade
channels. The products of CKK are sold through special chemical
stores or distributors while the products of NSR are sold in grocery
stores, sari-sari stores and department stores.
Thus, the evident disparity of the products of the CKK and NSR
renders unfounded the apprehension of CKK that confusion of
business or origin might occur if NSR is allowed to use the mark
CANON.

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.

GREAT WHITE SHARK ENTERPRISES, INC vs. DANILO M.


CARALDE, JR.

However, found no merit in Great White Shark's claim that its mark
was famous and well-known for insufficiency of evidence

G.R. No. 192294, November 21, 2012

On appeal, the IPO Director General affirmed9 the final rejection of


Caralde's application, ruling that the competing marks are indeed
confusingly similar.

Facts
On July 31, 2002, Caralde filed before the Bureau of Legal Affairs
(BLA), IPO a trademark application seeking to register the mark
"SHARK & LOGO" for his manufactured goods under Class 25, such
as slippers, shoes and sandals.
Petitioner Great White Shark Enterprises, Inc. (Great White Shark), a
foreign corporation, opposed the application claiming to be the owner
of the mark consisting of a representation of a shark in color, known
as "GREG NORMAN LOGO" (associated with apparel worn and
promoted by Australian golfer Greg Norman). It alleged that, being a
world famous mark which is pending registration before the BLA
since February 19, 2002, the confusing similarity between the two (2)
marks is likely to deceive or confuse the purchasing public into
believing that Caralde's goods are produced by or originated from it,
or are under its sponsorship, to its damage and prejudice.
Caralde explained that the subject marks are distinctively different
from one another and easily distinguishable. When compared, the
only similarity in the marks is in the word "shark" alone, differing in
other factors such as appearance, style, shape, size, format, color,
ideas counted by marks, and even in the goods carried by the
parties.
Pending the inter partes proceedings, Great White Sharks
trademark application was granted
The BLA Director rejected Caralde's application, finding that the two
competing marks are at least strikingly similar to each another.

However, on petition for review, the CA reversed and set aside the
foregoing Decision and directed the IPO to grant Caralde's
application for registration of the mark "SHARK & LOGO." It found no
confusing similarity between the subject marks and observed that
Caralde's mark is more fanciful and colorful, and contains several
elements which are easily distinguishable from that of the Great
White Shark.
Issue:
Whether or not petitioners mark is confusingly similar to respondents
Held:
No. In determining similarity and likelihood of confusion, case law
has developed the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the dominant
features of the competing trademarks that might cause confusion,
mistake, and deception in the mind of the ordinary purchaser, and
gives more consideration to the aural and visual impressions created
by the marks on the buyers of goods, giving little weight to factors
like prices, quality, sales outlets, and market segments. In contrast,
the Holistic or Totality Test considers the entirety of the marks as
applied to the products, including the labels and packaging, and
focuses not only on the predominant words but also on the other
features appearing on both labels to determine whether one is
confusingly similar to the other as to mislead the ordinary purchaser.
The "ordinary purchaser" refers to one "accustomed to buy, and
therefore to some extent familiar with, the goods in question."

Irrespective of both tests, the Court finds no confusing similarity


between the subject marks. While both marks use the shape of a
shark, the Court noted distinct visual and aural differences between
them. In Great White Shark's "GREG NORMAN LOGO," there is an
outline of a shark formed with the use of green, yellow, blue and red
lines/strokes. In contrast, the shark in Caralde's "SHARK & LOGO"
mark is illustrated in letters outlined in the form of a shark with the
letter "S" forming the head, the letter "H" forming the fins, the letters
"A" and "R" forming the body, and the letter "K" forming the tail.