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GOMEZ The critical question, however, is not the intrinsic unfairness of the act of hoarding;
what is critical for purposes of Section 168.3 (c) is to determine if the hoarding, as
FACTS: Coca-Cola applied for a search warrant against Pepsi for hoarding Coke charged, is of a nature calculated to discredit the goods, business or services of the
empty bottles in Pepsis yard in Concepcion Grande, Naga City, an act allegedly petitioner.
penalized as unfair competition under the IP Code. Coca-Cola claimed that the
bottles must be confiscated to preclude their illegal use, destruction or concealment - The Court held that it is not. Hoarding as defined by the petitioner is not even an act
by the respondents. within the contemplation of the IP Code. a first test that should be made when a
question arises on whether a matter is covered by the Code is to ask if it refers to an
- In support of the application, Coca-Cola submitted the sworn statements of three intellectual property as defined in the Code. If it does not, then coverage by the Code
witnesses who have allegedly seen empty bottles of Coke in the yard of Pepsi. (MTC) may be negated.
Executive Judge Julian C. Ocampo of Naga City, after taking the joint deposition of
the witnesses, issued Search Warrant.
A second test, if a disputed matter does not expressly refer to an intellectual
- In their counter-affidavits, Galicia and Gomez claimed that the bottles came from property right as defined above, is whether it falls under the general unfair
various Pepsi retailers and wholesalers who included them in their return to make up competition concept and definition under Sections 168.1 and 168.2 of the Code. The
for shortages of empty Pepsi bottles; they had no way of ascertaining beforehand the question then is whether there is deception or any other similar act in passing off of
return of empty Coke bottles as they simply received what had been delivered; the goods or services to be those of another who enjoys established goodwill.
presence of the bottles in their yard was not intentional nor deliberate
SECTION 168. Unfair Competition, Rights, Regulation and
- The respondents also filed motions for the return of their shells and to quash the Remedies.
search warrant. They contended that no probable cause existed to justify the
issuance of the search warrant; the facts charged do not constitute an offense. 168.1. A person who has identified in the mind of the
public the goods he manufactures or deals in, his business or
- Coca-Cola opposed the motions as the shells were part of the evidence of the services from those of others, whether or not a registered mark is
crime, arguing that Pepsi used the shells in hoarding the bottles. It insisted that the employed, has a property right in the goodwill of the said goods,
issuance of warrant was based on probable cause for unfair competition under the IP business or services so identified, which will be protected in the
Code, and that the respondents violated R.A. 623, the law regulating the use of same manner as other property rights.
stamped or marked bottles, boxes, and other similar containers.
168.2. Any person who shall employ deception or any
MTC: Denied both motions. There was an exhaustive examination of the applicant other means contrary to good faith by which he shall pass off the
and its witnesses through searching questions and that the Pepsi shells are prima goods manufactured by him or in which he deals, or his business,
facie evidence that the bottles were placed there by the respondents. Respondents or services for those of the one having established such goodwill,
thus filed a petition for certiorari under Rule 65 of the Revised Rules of Court before or who shall commit any acts calculated to produce said result,
the RTC. shall be guilty of unfair competition, and shall be subject to an
action therefor.
RTC: Voided the warrant for lack of probable cause and the non-commission of the
168.3. In particular, and without in any way limiting the
crime of unfair competition.
scope of protection against unfair competition, the following shall be
deemed guilty of unfair competition:
- Bypassing the Court of Appeals, the petitioner asks the Court through this petition
for review on certiorari under Rule 45 of the Rules of Court to reverse the decision of (a) Any person, who is selling his goods and gives them the
the RTC. general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the
ISSUE: Whether the act charged alleged to be hoarding of empty Coke bottles packages in which they are contained, or the devices or words
constitutes an offense under Section 163.8 (c) of the IP Code. thereon, or in any other feature of their appearance, which would
be likely to influence purchasers to believe that the goods offered
are those of a manufacturer or dealer, other than the actual
HELD: NO. Unfair competition has been defined as the passing off (or palming off) or
manufacturer or dealer, or who otherwise clothes the goods with
attempting to pass off upon the public the goods or business of one person as the
such appearance as shall deceive the public and defraud another
goods or business of another with the end and probable effect of deceiving the public.
1|IPL Digests_October 20
of his legitimate trade, or any subsequent vendor of such goods or since it discontinued the use of the mark prior to the institution of the infringement
any agent of any vendor engaged in selling such goods with a like case. Petitioner thus prayed for the dismissal of the complaint. Petitioner filed a
purpose; counterclaim praying for payment of exemplary damages and attorneys fees.

(b) Any person who by any artifice, or device, or who employs RTC: In favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS
any other means calculated to induce the false belief that such have the same suffix GENOL which appears to be merely descriptive and thus open
person is offering the services of another who has identified such for trademark registration by combining it with other words. It likewise, concluded that
services in the mind of the public; or the marks, when read, sound similar, and thus confusingly similar especially since
they both refer to food supplements. It added that petitioner’s liability was not negated
(c) Any person who shall make any false statement in the by its act of pulling out of the market the products bearing the questioned mark since
course of trade or who shall commit any other act contrary to good the fact remains that from 1996 until June 2000, petitioner had infringed respondent’s
faith of a nature calculated to discredit the goods, business or product by using the trademark PCO-GENOLS.
services of another.
CA: Under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar
- Hoarding does not fall within the coverage of the IP Code and of Section 168 in to PYCNOGENOL.
particular. It does not relate to any patent, trademark, trade name or service mark that
the respondents have invaded, intruded into or used without proper authority from the
petitioner. Nor are the respondents alleged to be fraudulently passing off their ISSUE: Whether or not PCO-GENOLS is confusingly similar to PYCOGENOL/
products or services as those of the petitioner. The respondents are not also alleged Whether or not there is trademark infringement in this case.
to be undertaking any representation or misrepresentation that would confuse or tend
to confuse the goods of the petitioner with those of the respondents, or vice versa. HELD: YES. The elements of infringement under R.A. No. 8293 are as follows:
What in fact the petitioner alleges is an act foreign to the Code, to the concepts it
embodies and to the acts it regulates; as alleged, hoarding inflicts unfairness by (1) The trademark being infringed is registered in the Intellectual Property
seeking to limit the oppositions sales by depriving it of the bottles it can use for these Office; however, in infringement of trade name, the same need not be
sales. Hoarding, for purposes of destruction is closer to what another law - R.A. No. registered;
623 covers.

(2) The trademark or trade name is reproduced, counterfeited, copied, or

colorably imitated by the infringer;

FACTS: Respondent Horphag Research Management SA is the owner of trademark

(3) The infringing mark or trade name is used in connection with the sale,
PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma offering for sale, or advertising of any goods, business or services; or
Corporation. Respondent later discovered that petitioner Prosource International, Inc. the infringing mark or trade name is applied to labels, signs, prints,
was also distributing a similar food supplement using the mark PCO-GENOLS since packages, wrappers, receptacles or advertisements intended to be used
1996. This prompted respondent to demand that petitioner cease and desist from upon or in connection with such goods, business or services;
using the aforesaid mark.

(4) The use or application of the infringing mark or trade name is likely to
- Without notifying respondent, petitioner discontinued the use of, and withdrew from cause confusion or mistake or to deceive purchasers or others as to the
the market, the products under the name PCO-GENOLS as of June 19, 2000. It, goods or services themselves or as to the source or origin of such
likewise, changed its mark from PCO-GENOLS to PCO-PLUS. goods or services or the identity of such business; and

- Respondent filed a Complaint for Infringement of Trademark with Prayer for (5) It is without the consent of the trademark or trade name owner or the
Preliminary Injunction against petitioner, praying that the latter cease and desist from assignee thereof.
using the brand PCO-GENOLS for being confusingly similar with respondents
trademark PYCNOGENOL. In its Answer, petitioner contended that respondent could
not file the infringement case considering that the latter is not the registered owner of - In the foregoing enumeration, it is the element of likelihood of confusion that is the
the trademark PYCNOGENOL, but one Horphag Research Limited. It, likewise, gravamen of trademark infringement. In determining similarity and likelihood of
claimed that the two marks were not confusingly similar. Finally, it denied liability, confusion, jurisprudence has developed two tests: the Dominancy Test and the
Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
2|IPL Digests_October 20
prevalent features of the competing trademarks that might cause confusion and - In a letter dated 1 August 1985, Nestle requested Dy, Jr. to refrain from using
deception, thus constituting infringement. In contrast, the Holistic Test entails a NANNY and to undertake that he would stop infringing the NAN trademark. Dy, Jr. did
consideration of the entirety of the marks as applied to the products, including the not act on Nestles request.
labels and packaging, in determining confusing similarity.
- Nestle filed before the RTC a complaint against Dy, Jr. for infringement. Dy, Jr. filed
- The trial and appellate courts applied the Dominancy Test in determining whether a motion to dismiss alleging that the complaint did not state a cause of action. The
there was a confusing similarity between the marks PYCNOGENOL and PCO- trial court dismissed the complaint. Nestle appealed the order to the Court of Appeals,
GENOL. Applying the test, the trial court found, and the CA affirmed, that: which set aside the order and remanded the case to the trial court for further
Both the word[s] PYCNOGENOL and PCO-GENOLS have the
same suffix GENOL which on evidence, appears to be merely descriptive RTC: Found Dy, Jr. liable for infringement. Considering that defendants NANNY
and furnish no indication of the origin of the article and hence, open for belongs to the same class as that of plaintiffs NAN because both are food products,
trademark registration by the plaintiff thru combination with another word or the defendants unregistered trade mark NANNY should be held an infringement to
phrase such as PYCNOGENOL, Exhibits A to A-3. Furthermore, although plaintiffs registered trademark NAN because defendants use of NANNY would imply
the letters Y between P and C, N between O and C and S after L are that it came from the manufacturer of NAN.
missing in the [petitioners] mark PCO-GENOLS, nevertheless, when the two
words are pronounced, the sound effects are confusingly similar not to CA: Reversed the trial court’s decision and found Dy, Jr. not liable for infringement.
mention that they are both described by their manufacturers as a food NAN infant milk preparation is more expensive than NANNY instant full cream milk.
supplement and thus, identified as such by their public consumers. And The cheaper price of NANNY would give, at the very first instance, a considerable
although there were dissimilarities in the trademark due to the type of letters warning to the ordinary purchaser on whether he is buying an infant milk or a full
used as well as the size, color and design employed on their individual cream milk for adults. A cursory examination of the packaging would confirm the
packages/bottles, still the close relationship of the competing products name striking differences between the products in question. Thus, the mark NANNY is not
in sounds as they were pronounced, clearly indicates that purchasers could confusingly similar to NAN.
be misled into believing that they are the same and/or originates from a
common source and manufacturer. ISSUE: Whether or not Dy, Jr. is liable for trademark infringement.

- Finally, the Court reiterated that the issue of trademark infringement is factual, with HELD: YES. The elements of infringement under R.A. No. 8293 are as follows:
both the trial and appellate courts finding the allegations of infringement to be The trademark being infringed is registered in the
meritorious. As we have consistently held, factual determinations of the trial court, Intellectual Property Office; however, in infringement of trade name,
concurred in by the CA, are final and binding on this Court. Hence, petitioner is liable the same need not be registered;
for trademark infringement.
The trademark or trade name is reproduced,
(3) SOCIETES DES PRODUITS NESTLE SA v. Dy, JR. counterfeited, copied, or colorably imitated by the infringer;
The infringing mark or trade name is used in
FACTS: Petitioner Societe Des Produits Nestle, S.A. (Nestle) manufactures food connection with the sale, offering for sale, or advertising of
products and beverages. Nestle owns the NAN trademark for its line of infant any goods, business or services; or the infringing mark or
powdered milk products, consisting of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. trade name is applied to labels, signs, prints, packages,
NAN is classified under Class 6 diatetic preparations for infant feeding. Nestle wrappers, receptacles or advertisements intended to be
distributes and sells its NAN milk products all over the Philippines. It has been used upon or in connection with such goods, business or
investing tremendous amounts of resources to train its sales force and to promote the services;
NAN milk products through advertisements and press releases. The use or application of the infringing mark or
trade name is likely to cause confusion or mistake or to
- Dy, Jr. owns 5M Enterprises. He imports Sunny Boy powdered milk from Australia deceive purchasers or others as to the goods or services
and repacks the powdered milk into three sizes of plastic packs bearing the name themselves or as to the source or origin of such goods or
NANNY. NANNY is is also classified under Class 6 full cream milk for adults in [sic] all services or the idenity of such business; and
ages. Dy, Jr. distributes and sells the powdered milk in Dumaguete, Negros Oriental,
Cagayan de Oro, and parts of Mindanao. It is without the consent of the trademark or trade
name owner or the assignee thereof.
3|IPL Digests_October 20
Among the elements, the element of likelihood of confusion is the BLA DIRECTOR: Rejecting Caralde's application, ratiocinating that the shark logo
gravamen of trademark infringement. was both a dominant feature and are similar and that both trademarks belong to the
same class.
- Applying the dominancy test in the present case, the Court finds that NANNY is
confusingly similar to NAN. NAN is the prevalent feature of Nestles line of infant IPO: Affirmed the final rejection of Caralde's application, ruling that the competing
powdered milk products. It is written in bold letters and used in all products. The line marks are indeed confusingly similar.
consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, NANNY contains the
prevalent feature NAN. The first three letters of NANNY are exactly the same as the
letters of NAN. When NAN and NANNY are pronounced, the aural effect is CA: Reversed and set aside the foregoing Decision and directed the IPO to grant
confusingly similar. Caralde's application for registration of the mark "SHARK & LOGO." The CA found no
confusing similarity between the subject marks notwithstanding that both contained
- NANNY and NAN have the same classification, descriptive properties and physical the shape of a shark as their dominant feature. It observed that Caralde's mark is
attributes. Both are classified under Class 6, both are milk products, and both are in more fanciful and colorful, and contains several elements which are easily
powder form. Also, NANNY and NAN are displayed in the same section of stores the distinguishable from that of the Great White Shark. It further opined that considering
milk section. their price disparity, there is no likelihood of confusion as they travel in different
channels of trade.
- The Court agrees with the lower courts that there are differences between NAN and
NANNY: (1) NAN is intended for infants while NANNY is intended for children past
ISSUE: Whether there is confusing similarity between the trademarks.
their infancy and for adults; and (2) NAN is more expensive than NANNY. However,
as the registered owner of the NAN mark, Nestle should be free to use its mark on
similar products, in different segments of the market, and at different price levels. HELD: NO. A trademark device is susceptible to registration if it is crafted fancifully or
arbitrarily and is capable of identifying and distinguishing the goods of one
manufacturer or seller from those of another. Apart from its commercial utility, the
benchmark of trademark registrability is distinctiveness. Thus, a generic figure, as
that of a shark in this case, if employed and designed in a distinctive manner, can be
FACTS: On July 31, 2002, Caralde filed before the Bureau of Legal Affairs (BLA), a registrable trademark device, subject to the provisions of the IP Code.
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
- In determining similarity and likelihood of confusion, case law has developed the
Great White Shark Enterprises, Inc. (Great White Shark), a foreign corporation
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the
domiciled in Florida, USA, opposed the application claiming to be the owner of the
similarity of the dominant features of the competing trademarks that might cause
mark consisting of a representation of a shark in color, known as "GREG NORMAN
confusion, mistake, and deception in the mind of the ordinary purchaser, and gives
LOGO" (associated with apparel worn and promoted by Australian golfer Greg
more consideration to the aural and visual impressions created by the marks on the
Norman). It alleged that, being a world famous mark which is pending registration
buyers of goods, giving little weight to factors like prices, quality, sales outlets, and
before the BLA since February 19, 2002, the confusing similarity between the two (2)
market segments. In contrast, the Holistic or Totality Test considers the entirety of the
marks is likely to deceive or confuse the purchasing public into believing that
marks as applied to the products, including the labels and packaging, and focuses not
Caralde's goods are produced by or originated from it, or are under its sponsorship, to
only on the predominant words but also on the other features appearing on both
its damage and prejudice.
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
- In his Answer, Caralde explained that the subject marks are distinctively different therefore to some extent familiar with, the goods in question."
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,
- Irrespective of both tests, the Court finds no confusing similarity between the subject
style, shape, size, format, color, ideas counted by marks, and even in the goods
marks. While both marks use the shape of a shark, the Court noted distinct visual and
carried by the parties.
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
- Pending the inter partes proceedings, Great White Shark’s trademark application lines/strokes.
was granted and it was issued Certificate of Registration No. 4-2002-001478 on
October 23, 2006 for clothing, headgear and footwear, including socks, shoes and its
- In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in l et t er s
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
4|IPL Digests_October 20
the tail. In addition, the latter mark includes several more elements such as the word the Philippines. The consuming publicknew that the original LEVI’S 501 jeans were
"SHARK" in a different font underneath the shark outline, layers of waves, and a tree under a foreign brand and quite expensive.
on the right side, and liberally used the color blue with some parts in red, yellow,
green and white. The whole design is enclosed in an elliptical shape with two linings. In terms of classes of customers and channels of trade, the jeans products of the
private complainant and the accused cater to different classes of customers and flow
- As may be gleaned from the foregoing, the visual dissimilarities between the two (2) through the different channels of trade. The customers of the private complainant are
marks are evident and significant, negating the possibility of confusion in the minds of mall goers belonging to class A and B market group – while that of the accused are
the ordinary purchaser, especially considering the distinct aural difference between those who belong to class D and E market who can only afford Php 300 for a pair of
the marks. made-toorder pants.20 x x x.

Moreover, based on the certificate issued by the Intellectual Property Office, "LS
(5) VICTORIO DIAZ vs PEOPLE OF THE PHILIPPINES JEANS TAILORING" was a registered trademark of Diaz. He had registered his
trademark prior to the filing of the present cases.21 The Intellectual Property Office
FACTS: Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After would certainly not have allowed the registration had Diaz’s trademark been
receiving information that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring confusingly similar with the registered trademark for LEVI’S 501 jeans.
shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private
investigation group to verify the information. Surveillance and the purchase of jeans Given the foregoing, it should be plain that there was no likelihood of confusion
from the tailoring shops of Diaz established that the jeans bought from the tailoring between the trademarks involved. Thereby, the evidence of guilt did not satisfy the
shops of Diaz were counterfeit or imitations of LEVI’S 501. quantum of proof required for a criminal conviction, which is proof beyond reasonable
doubt. According to Section 2, Rule 133 of the Rules of Court, proof beyond a
Armed with search warrants, NBI agents searched the tailoring shops of Diaz and reasonable doubt does not mean such a degree of proof as, excluding possibility of
seized several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed that it did error, produces absolute certainty. Moral certainty only is required, or that degree of
not authorize the making and selling of the seized jeans; that each of the jeans were proof which produces conviction in an unprejudiced mind. Consequently, Diaz should
mere imitations of genuine LEVI’S 501 jeans by each of them bearing the registered be acquitted of the charges.
trademarks, like the arcuate design, the tab, and the leather patch; and that the
seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of (6) BIRKENSTOCK vs PHILIPPINE SHOE EXPO
the arcuate, tab, and two-horse leather patch. On his part, Diaz admitted being the
owner of the shops searched, but he denied any criminal liability. FACTS: Petitioner, a corporation duly organized and existing under the laws of
Germany, applied for various trademark registrations before the IPO, namely: (a)
Diaz stated that he did not manufacture Levi’s jeans, and that he used the label “LS "BIRKENSTOCK" under Trademark Application Serial No. (TASN) 4-1994-091508 for
Jeans Tailoring” in the jeans that he made and sold; that the label “LS Jeans goods falling under Class 25 of the International Classification of Goods and Services
Tailoring” was registered with the Intellectual Property Office; that his shops received (Nice Classification) with filing date of March 11, 1994; (b) "BIRKENSTOCK BAD
clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL AND
or designs were done in accordance with instructions of the customers; that since the REPRESENTATION OF A FOOT, CROSS AND SUNBEAM" under TASN 4-1994-
time his shops began operating in 1992, he had received no notice or warning 091509 for goods falling under Class 25 of the Nice Classification with filing date of
regarding his operations; that the jeans he produced were easily recognizable March 11, 1994; and (c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
because the label “LS Jeans Tailoring,” and the names of the customers were placed COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A
inside the pockets, and each of the jeans had an “LSJT” red tab; that “LS” stood for FOOT, CROSS AND SUNBEAM" under TASN 4-1994-095043 for goods falling under
“Latest Style;” and that the leather patch on his jeans had two buffaloes, not two Class 10 of the Nice Classification with filing date of September 5, 1994 (subject
horses. applications).
Issue: Whether there exists a likelihood of confusion between the trademarks of However, registration proceedings of the subject applications were suspended in view
Levi’s and Diaz. of an existing registration of the mark "BIRKENSTOCK AND DEVICE" under
Registration No. 56334 dated October 21, 1993 (Registration No. 56334) in the name
Held: The Court held, through the application of the holistic test, that there was no of Shoe Town International and Industrial Corporation, the predecessor-in-interest of
likelihood of confusion between the trademarks involved. Accordingly, the jeans respondent Philippine Shoe Expo Marketing Corporation. In this regard, on May 27,
trademarks of Levi’s Philippines and Diaz must be considered as a whole in 1997 petitioner filed a petition for cancellation of Registration No. 56334 on the
determining the likelihood of confusion between them. The maong pants or jeans ground that it is the lawful and rightful owner of the Birkenstock marks (Cancellation
made and sold by Levi’s Philippines,which included LEVI’S 501, were very popular in Case). During its pendency, however, respondent and/or its predecessor-in-interest

5|IPL Digests_October 20
failed to file the required 10th Year Declaration of Actual Use (10th Year DAU) for that respondent was in bad faith in having it registered in its name. In this regard, the
Registration No. 56334 on or before October 21, 2004, thereby resulting in the Court quotes with approval the words of the IPO Director General, viz.:
cancellation of such mark. Accordingly, the cancellation case was dismissed for being
moot and academic. The facts and evidence fail to show that [respondent] was in good faith in using and in
registering the mark BIRKENSTOCK. BIRKENSTOCK, obviously of German origin, is
The aforesaid cancellation of Registration No. 56334 paved the way for the a highly distinct and arbitrary mark. It is very remote that two persons did coin the
publication of the subject applications in the IPO e-Gazette on February 2, 2007. In same or identical marks. To come up with a highly distinct and uncommon mark
response, respondent filed three (3) separate verified notices of oppositions to the previously appropriated by another, for use in the same line of business, and without
subject applications docketed as Inter Partes Case Nos. 14-2007-00108, 14-2007- any plausible explanation, is incredible. The field from which a person may select a
00115, and 14-2007-00116, claiming, inter alia, that: (a) it, together with its trademark is practically unlimited. As in all other cases of colorable imitations, the
predecessor-in-interest, has been using Birkenstock marks in the Philippines for more unanswered riddle is why, of the millions of terms and combinations of letters and
than 16 years through the mark "BIRKENSTOCK AND DEVICE"; (b) the marks designs available, [respondent] had to come up with a mark identical or so closely
covered by the subject applications are identical to the one covered by Registration similar tQ the [petitioner's] if there was no intent to take advantage of the goodwill
No. 56334 and thus, petitioner has no right to the registration of such marks; (c) on generated by the [petitioner's] mark. Being on the same line of business, it is highly
November 15, 1991, respondent's predecessor-in-interest likewise obtained a probable that the [respondent] knew of the existence of BIRKENSTOCK and its use
Certificate of Copyright Registration No. 0-11193 for the word "BIRKENSTOCK"; (d) by the [petitioner], before [respondent] appropriated the same mark and had it
while respondent and its predecessor-in-interest failed to file the 10th Year DAU, it registered in its name.
continued the use of "BIRKENSTOCK AND DEVICE" in lawful commerce; and (e) to
record its continued ownership and exclusive right to use the "BIRKENSTOCK" (7) CENTURY CHINESE MEDICINES vs PEOPLE OF THE PHILIPPINES
marks, it has filed TASN 4-2006-010273 as a "re-application" of its old registration,
Registration No. 56334. On November 13, 2007, the Bureau of Legal Affairs (BLA) of FACTS: Respondent Ling Na Lau, doing business under the name and style
the IPO issued Order No. 2007-2051 consolidating the aforesaid inter partes cases Worldwide Pharmacy, is the sole distributor and registered trademark owner of TOP
(Consolidated Opposition Cases). GEL T.G. & DEVICE OF A LEAF papaya whitening soap as shown by Certificate of
Registration 4-2000-009881 issued to her by the Intellectual Property Office (IPO) for
ISSUE: Whether or not the subject marks should be allowed registration in the name a period of ten years from August 24, 2003. On November 7, 2005, her
of petitioner. representative, Ping Na Lau, (Ping) wrote a letter7 addressed to National Bureau of
Investigation (NBI) Director Reynaldo Wycoco, through Atty. Jose Justo Yap and
HELD: YES. Agent Joseph G. Furing (Agent Furing), requesting assistance for an investigation on
several drugstores which were selling counterfeit whitening papaya soaps bearing the
In the instant case, petitioner was able to establish that it is the owner of the mark general appearance of their products.
"BIRKENSTOCK." It submitted evidence relating to the origin and history of
"BIRKENSTOCK" and its use in commerce long before respondent was able to Agent Furing was assigned to the case and he executed an affidavit8 stating that: he
register the same here in the Philippines. It has sufficiently proven that conducted his own investigation, and on November 9 and 10, 2005, he, together with
"BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann Junayd Esmael (Esmael), were able to buy whitening soaps bearing the trademark
Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous "TOP-GEL", "T.G." & "DEVICE OF A LEAF" with corresponding receipts from a list of
generations of his kin continuously engaged in the manufacture and sale of shoes drugstores which included herein petitioners Century Chinese Medicine Co., Min
and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known Seng Chinese Drugstore, Xiang Jiang Chinese Drug Store, Tek San Chinese Drug
as the petitioner. Petitioner also submitted various certificates of registration of the Store, Sim Sim Chinese Drug Store, Ban Shiong Tay Drugstore, Shuang Ying
mark "BIRKENSTOCK" in various countries and that it has used such mark in Chinese Drugstore, and Baclaran Chinese Drug Store; while conducting the
different countries worldwide, including the Philippines. investigation and test buys, he was able to confirm Ping's complaint to be true as he
personally saw commercial quantities of whitening soap bearing the said trademarks
On the other hand, aside from Registration No. 56334 which had been cancelled, being displayed and offered for sale at the said drugstores; he and Esmael took the
respondent only presented copies of sales invoices and advertisements, which are purchased items to the NBI, and Ping, as the authorized representative and expert of
not conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as Worldwide Pharmacy in determining counterfeit and unauthorized reproductions of its
these merely show the transactions made by respondent involving the same. products, personally examined the purchased samples, and issued a Certification9
dated November 18, 2005 wherein he confirmed that, indeed, the whitening soaps
In view of the foregoing circumstances, the Court finds the petitioner to be the true bearing the trademarks "TOP-GEL", "T.G." & "DEVICE OF A LEAF" from the subject
and lawful owner of the mark "BIRKENSTOCK" and entitled to its registration, and drugstores were counterfeit.

6|IPL Digests_October 20
Agent Furing applied for the issuance of search warrants before the Regional Trial the RTC found to be where a prejudicial question was raised, was already dismissed
Court (RTC), Branch 143, Makati City, against petitioners and other establishments on June 10, 2005,32 because of the pendency of a case involving the same issues
for violations of Sections 168 and 155, both in relation to Section 170 of Republic Act and parties before the IPO. Yu's motion for reconsideration was denied in an Order33
(RA) No. 8293, otherwise known as the Intellectual Property Code of the Philippines. dated September 15, 2005. In fact, a Certificate of Finality34 was issued by the RTC
Section 168, in relation to Section 170, penalizes unfair competition; while Section on January 4, 2007.
155, in relation to Section 170, punishes trademark infringement.

Petitioners collectively filed their Motion to Quash13 the Search Warrants contending
that their issuances violated the rule against forum shopping; that Benjamin Yu (Yu) is Moreover, the IPO case for trademark infringement and unfair competition and
the sole owner and distributor of the product known as "TOP-GEL"; and there was a damages with prayer for preliminary injunction filed by respondent against Yu and
prejudicial question posed in Civil Case No. 05-54747 entitled Zenna Chemical Heidi Cua, docketed as IPV Case No. 10-2005-00001, would not also be a basis for
Industry v. Ling Na Lau, et al., pending in Branch 93 of the RTC of Quezon City, quashing the warrants.1avvphi1 In fact, prior to the applications for the issuance of
which is a case filed by Yu against respondent for damages due to infringement of the assailed search warrants on November 21, 2005, the IPO had issued an Order35
trademark/tradename, unfair competition with prayer for the immediate issuance of a dated October 20, 2005 granting a writ of preliminary injunction against Yu and Cua.
temporary restraining order and/or preliminary prohibitory injunction.
Notwithstanding, at the time of the application of the search warrants on November
Respondent filed her Comment/Opposition14 thereto arguing the non-existence of 21, 2005, and while the injunction was in effect, petitioners were still selling the
forum shopping; that Yu is not a party- respondent in these cases and the pendency alleged counterfeit products bearing the trademark TOP GEL T.G. & DEVICE OF A
of the civil case filed by him is immaterial and irrelevant; and that Yu cannot be LEAF. There exists a probable cause for violation of respondent's intellectual property
considered the sole owner and distributor of "TOP GEL T.G. & DEVICE OF A LEAF." rights, which entitles her as the registered owner of the trademark TOP GEL and
The motion was then submitted for resolution in an Order dated January 30, 2006. DEVICE OF A LEAF to be protected by the issuance of the search warrants.
During the pendency of the case, respondent, on April 20, 2006, filed a Submission15
in relation to the Motion to Quash attaching an Order16 dated March 21, 2006 of the (8) ECOLE DE CUISINE MANILLE vs RENAUD COINTREAU & CIE and LE
IPO in IPV Case No. 10-2005-00001 filed by respondent against Yu, doing business CORDON BLEU INT'L., B.V.
under the name and style of MCA Manufacturing and Heidi S. Cua, proprietor of
South Ocean Chinese Drug Stores for trademark infringement and/or unfair FACTS: Cointreau, a partnership registered under the laws of France, filed before the
competition and damages with prayer for preliminary injunction. (now defunct) Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of
the Department of Trade and Industry a trademark application for the mark "LE
ISSUE: Whether or not the issuance of search warrant is a violation of IP Law. CORDON BLEU & DEVICE" for goods falling under classes 8, 9, 16, 21, 24, 25, 29,
and 30 of the International Classification of Goods and Services for the Purposes of
HELD: NO. Registrations of Marks ("Nice Classification") (subject mark).

A core requisite before a warrant shall validly issue is the existence of a probable Petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition to the subject
cause, meaning "the existence of such facts and circumstances which would lead a application, averring that: (a) it is the owner of the mark "LE CORDON BLEU, ECOLE
reasonably discreet and prudent man to believe that an offense has been committed DE CUISINE MANILLE," which it has been using since 1948 in cooking and other
and that the objects sought in connection with the offense are in the place to be culinary activities, including in its restaurant business; and (b) it has earned immense
searched." and invaluable goodwill such that Cointreau’s use of the subject mark will actually
create confusion, mistake, and deception to the buying public as to the origin and
Based on the foregoing, it is clear that the requisites for the issuance of the search sponsorship of the goods, and cause great and irreparable injury and damage to
warrants had been complied with and that there is probable cause to believe that an Ecole’s business reputation and goodwill as a senior user of the same.
offense had been committed and that the objects sought in connection with the
offense were in the places to be searched. The offense pertains to the alleged On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful
violations committed by respondents-appellees upon the intellectual property rights of owner of the subject mark. It averred that: (a) it has filed applications for the subject
herein private complainant-appellant, as holder of the trademark TOP GEL T.G. & mark’s registration in various jurisdictions, including the Philippines; (b) Le Cordon
DEVICE OF A LEAF under Certificate of Registration No. 4-2000-009881, issued on Bleu is a culinary school of worldwide acclaim which was established in Paris, France
August 24, 2003 by the Intellectual Property Office. in 1895; (c) Le Cordon Bleu was the first cooking school to have set the standard for
the teaching of classical French cuisine and pastry making; and (d) it has trained
Notably, at the time the applications for the issuance of the search warrants were filed students from more than eighty (80) nationalities, including Ecole’s directress, Ms.
on November 21, 2005, as the CA correctly found, Civil Case No. Q-05-54747, which

7|IPL Digests_October 20
Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of being the until September 26, 2012; and (c) for the pharmaceutical substance Atorvastatin
exclusive owner of the subject mark is a fraudulent misrepresentation. Calcium in crystalline form valid until October 23, 2019 (subject patents). In general,
Atorvastatin blocks the production of cholesterol in the body and is used to reduce the
During the pendency of the proceedings, Cointreau was issued Certificates of amounts of LDL (bad cholesterol), total cholesterol, triglycerides (another type of fat),
Registration Nos. 60631 and 54352 for the marks "CORDON BLEU & DEVICE" and and apolipoprotein B (a protein needed to make cholesterol) in a person’s blood.
"LE CORDON BLEU PARIS 1895 & DEVICE" for goods and services under classes
21 and 41 of the Nice Classification, respectively. On the other hand, respondent Pfizer, Inc. (Pfizer) is the exclusive licensee of Warner
Lambert to import, market, distribute, and sell products covered by the subject
ISSUE: Whether Cointreau is the true and lawful owner of the subject mark and thus, patents in the Philippines. To this end, Pfizer applied for and was issued various
entitled to have the same registered under its name. Certificates of Product Registration (CPR) from the Bureau of Food and Drugs (now,
FDA) in order to validly sell and promote such products in the Philippine market.
Sometime in 2005, Pfizer discovered that Sahar also applied for and was issued a
In the instant case, it is undisputed that Cointreau has been using the subject mark in CPR by the FDA for Atorvastatin Calcium under the brand name Atopitar. It also
France since 1895, prior to Ecole’s averred first use of the same in the Philippines in found out that Sahar has been selling and distributing Atopitar in the provinces of
1948, of which the latter was fully aware thereof. In fact, Ecole’s present directress, Bicol, Zamboanga, Cebu, Ilocos Norte, as well as in Tarlac; and that Sahar’s
Ms. Lourdes L. Dayrit (and even its foundress, Pat Limjuco Dayrit), had trained in marketing ads showed that Atopitar is neither manufactured by Warner Lambert nor
Cointreau’s Le Cordon Bleu culinary school in Paris, France. Cointreau was likewise any Pfizer company, but by Geofman Pharmaceuticals of Pakistan. Upon further
the first registrant of the said mark under various classes, both abroad and in the investigation and laboratory testing, Pfizer learned that the Atorvastatin Calcium that
Philippines, having secured Home Registration No. 1,390,912 dated November 25, is used in Atopitar is also in its crystalline form.
1986 from its country of origin, as well as several trademark registrations in the
Philippines.26 Pfizer immediately sent numerous letters to Sahar informing the latter of Warner
Lambert’s patents over Atorvastatin Calcium and demanding it to cease and desist
On the other hand, Ecole has no certificate of registration over the subject mark but from selling and distributing said pharmaceutical substance under the brand name
only a pending application covering services limited to Class 41 of the Nice Atopitar. However, Sahar did not heed such demands and replied that the patent over
Classification, referring to the operation of a culinary school. Its application was filed Atorvastatin Calcium had already expired in Pakistan and, therefore, it believed the
only on February 24, 1992, or after Cointreau filed its trademark application for goods same can already be freely distributed and marketed in the Philippines by any entity.
and services falling under different classes in 1990. Under the foregoing Thus, Warner Lambert and Pfizer (respondents) filed a Complaint for Patent
circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot Infringement, Damages, and Injunction, with applications for the issuance of
be said to have validly appropriated the same. Temporary Restraining Orders and/or Writs of Preliminary Injunction against Sahar
before the RTC.
It is thus clear that at the time Ecole started using the subject mark, the same was
already being used by Cointreau, albeit abroad, of which Ecole’s directress was fully  RTC – denied respondents’ application for the issuance of a writ of
aware, being an alumna of the latter’s culinary school in Paris, France. Hence, Ecole preliminary injunction against the alleged patent infringement of Sahar. The
cannot claim any tinge of ownership whatsoever over the subject mark as Cointreau RTC deemed it proper not to grant such prayer, considering that the instant
is the true and lawful owner thereof. As such, the IPO Director General and the CA case is principally for injunction and damages, and, as such, the issuance of
were correct in declaring Cointreau as the true and lawful owner of the subject mark an injunctive writ "would in effect result in [the] premature disposition of the
and as such, is entitled to have the same registered under its name. main case and would defeat the purpose of preliminary injunctive relief."
 CA – annulled and set aside the assailed orders of the RTC and issued a
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known writ of preliminary injunction enjoining Sahar, its agents, representatives,
as the Intellectual Property Code of the Philippines, as amended, has already and assigns, during the pendency of Civil Case No. 08-424, from making,
dispensed with the requirement of prior actual use at the time of registration.27 Thus, using or offering for sale, or distributing Atopitar in the Philippine market.
there is more reason to allow the registration of the subject mark under the name of
Cointreau as its true and lawful owner. ISSUE: WON the CA was correct in issuing a writ of preliminary injunction enjoining
Sahar, its agents, representatives, and assigns, during the pendency of Civil Case
9. SAHAR INTERNATIONAL TRADING v. WARNER LAMBERT CO. No. 08-424 from making, using or offering for sale, or distributing Atopitar in the
Philippine market?
FACTS: Warner Lambert, a foreign corporation, is the registered owner of 3
Philippine patents, namely: (a) for the pharmaceutical substance Atorvastatin valid RULING: The petition is dismissed on the ground of mootness.
until April 29, 2009; (b) for the pharmaceutical substance Atorvastatin Calcium valid
8|IPL Digests_October 20
A case or issue is considered moot and academic when it ceases to present a RULING: Yes.
justiciable controversy by virtue of supervening events, so that an adjudication of the
case or a declaration on the issue would be of no practical value or use. In such The products covered by petitioner’s application and respondent’s registration
instance, there is no actual substantial relief which a petitioner would be entitled to, are unrelated.
and which would be negated by the dismissal of the petition. Courts generally decline
jurisdiction over such case or dismiss it on the ground of mootness. This is because a. Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin
the judgment will not serve any useful purpose or have any practical legal effect Electronics’ goods which are power supply and audio equipment accessories;
because, in the nature of things, it cannot be enforced.
b. Taiwan Kolin’s television sets and DVD players perform distinct function and
Here, the Court finds that the CA's supervening promulgation of its Decision dated purpose from Kolin Electronics’ power supply and audio equipment; and
November 5, 2013 in CA-G.R. CV No. 97495 - which reversed the RTC's Judgment
dated March 11, 2011 in Civil Case No. 08-424 and thereby made the writ of c. Taiwan Kolin sells and distributes its various home appliance products on
preliminary injunction permanent - rendered the present case moot and academic. wholesale and to accredited dealers, whereas Kolin Electronics’ goods are sold and
This is because the primordial issue raised in the instant petition is precisely the flow through electrical and hardware stores.
propriety of the aforesaid issuance. Since the writ of preliminary injunction is but an
incident of the patent infringement case which had already been resolved by the CA, The ordinarily intelligent buyer is not likely to be confused.
ruling on its propriety would be merely an academic exercise carrying no practical
effect. Accordingly, the Court is constrained to dismiss the instant petition. In this While both competing marks refer to the word "KOLIN" written in upper case letters
relation, it is relevant to point out that it would be premature for the Court to tackle the and in bold font, the Court at once notes the distinct visual and aural differences
merits of the CA's recent decision for the reason that it is not the matter herein between them: Kolin Electronics’ mark is italicized and colored black while that of
appealed. Taiwan Kolin is white in pantone red color background. The differing features
between the two, though they may appear minimal, are sufficient to distinguish one
10. TAIWAN KOLIN CORP v. KOLIN ELECTRONICS CO., INC. brand from the other.

FACTS: On February 29, 1996, Taiwan Kolin filed with the IPO then Bureau of It cannot be stressed enough that the products involved in the case at bar are,
Patents, Trademarks, and Technology Transfer, a trademark application, for the use generally speaking, and various kinds of electronic products. These are not ordinary
of "KOLIN" on a combination of goods, including colored televisions, refrigerators, consumable household items, like catsup, soy sauce or soap which are of minimal
window-type and split-type air conditioners, electric fans and water dispensers. Said cost. The products of the contending parties are relatively luxury items not easily
goods allegedly fall under Classes 9, 11, and 21 of the Nice Classification (NCL). considered affordable. Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over his purchase. Confusion
The application was abandoned for Taiwan Kolin’s failure to respond to IPO’s Paper and deception, then, is less likely.
No. 5 requiring it to elect one class of good for its coverage. However, the same
application was subsequently revived through Application Serial No. 4-2002- 11. UFC PHILIPPINES, INC. v. BARRIO FIESTA
011002, with petitioner electing Class 9 as the subject of its application, particularly:
television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video FACTS: Nutri-Asia (P), a corporation duly organized and existing under
electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, Philippine laws. It is the emergent entity in a merger with UFC Philippines, Inc. that
facsimile machines, teleprinters, cellular phones and automatic goods vending was completed on February 11, 2009. Barrio Fiesta Manufacturing Corporation (R) is
machine. The application would in time be duly published. likewise a corporation organized and existing under Philippine laws. On April 4, 2002,
respondent filed Application No. 4-2002-002757 for the mark "PAPA BOY & DEVICE"
On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed for goods under Class 30, specifically for "lechon sauce." The IPO published said
petitioner’s revived application, docketed as Inter Partes Case No. 14-2006-00096. application for opposition in the IP Phil. e-Gazette released on September 8, 2006.
As argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly
similar, with its "KOLIN" mark registered on November 23, 2003, covering the In its verified opposition before the IPO, petitioner contended that "PAPA BOY &
following products under Class 9 of the NCL: automatic voltage regulator, converter, DEVICE" is confusingly similar with its "PAPA" marks inasmuch as the former
recharger, stereo booster, AC-DC regulated power supply, step-down transformer, incorporates the term "PAP A," which is the dominant feature of petitioner's "PAPA"
and PA amplified AC-DC. marks. Petitioner averred that respondent's use of "PAPA BOY & DEVICE" mark for
its lechon sauce product, if allowed, would likely lead the consuming public to believe
ISSUE: WON petitioner is entitled to its trademark registration of "KOLIN" over its that said lechon sauce product originates from or is authorized by petitioner, and that
specific goods of television sets and DVD players? the "PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's "PAPA"
marks. Petitioner argued that this was especially true considering that petitioner's
9|IPL Digests_October 20
ketchup product and respondent's lechon sauce product are related articles that fall BOY" is plausible, it is not a strong enough claim to overrule the rights of the owner of
under the same Class 30. an existing and valid mark. Furthermore, this Court cannot equitably allow respondent
to profit by the name and reputation carefully built by petitioner without running afoul
Petitioner alleged that the registration of respondent's challenged mark was also likely of the basic demands of fair play.
to damage the petitioner, considering that its former sister company, Southeast Asia
Food, Inc., and the latter's predecessors-in-interest, had been major manufacturers PATENTS
and distributors of lechon and other table sauces since 1965, such as products
employing the registered "Mang Tomas" mark. (1) DOMICIANO A. AGUAS, vs. CONRADO G. DE LEON

In its Verified Answer, respondent argued that there is no likelihood of confusion Doctrine: Tile Making; Where improvement in tile making is inventive and different
between petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY & from old process of tile making, improvement is patent able.
DEVICE" trademark.
ISSUE: WON the respondent’s mark can be registered?

RULING: Respondent's mark cannot be registered. Respondent's mark is related to a 1.) On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal
at Quezon City a complaint for infringement of patent against Domiciano A. Aguas
product, lechon sauce, an everyday all-purpose condiment and sauce, that is not
and F.H. Aquino and Sons alleging that being the original first and sole inventor of
subjected to great scrutiny and care by the casual purchaser, who knows from regular
certain new and useful improvements in the process of making mosaic pre-cast tiles
visits to the grocery store under what aisle to find it, in which bottle it is contained, and
he lawfully filed and prosecuted an application for Philippine patent, and having
approximately how much it costs. Since petitioner's product, catsup, is also a
complied in all respects with the statute and the rules of the Philippine Patent Office,
household product found on the same grocery aisle, in similar packaging, the public
Patent No. 658 was lawfully granted and issued to him.
could think that petitioner had expanded its product mix to include lechon sauce, and
that the "PAPA BOY" lechon sauce is now part of the "PAPA" family of sauces, which
is not unlikely considering the nature of business that petitioner is in. Thus, if allowed. 2.) Domiciano A. Aguas infringed Letters of Patent No. 658 by making, using and
registration, confusion of business may set in, and petitioner's hard-earned goodwill selling tiles embodying said patent invention and that defendant F.H. Aquino & Sons
may be associated to the newer product introduced by respondent, all because of the is guilty of infringement by making and furnishing to the defendant Domiciano A.
use of the dominant feature of petitioner's mark on respondent's mark, which is the Aguas the engravings, castings and devices designed and intended for use and
word "PAPA." The words "Barrio Fiesta" are not included in the mark, and although actually used in apparatus for the making of tiles embodying plaintiffs patented
printed on the label of respondent's lechon sauce packaging, still do not remove the invention.
impression that "PAPA BOY" is a product owned by the manufacturer of "PAPA"
catsup, by virtue of the use of the dominant feature. It is possible that petitioner could 3.) Domiciano A. Aguas denied the allegations and alleged that:
expand its business to include lechon sauce, and that would be well within petitioner's
rights, but the existence of a "PAPA BOY" lechon sauce would already eliminate this a.) the plaintiff is neither the original first nor sole inventor of the improvements in the
possibility and deprive petitioner of its rights as an owner of a valid mark included in process of making mosaic pre-cast tiles, the same having been used by several tile-
the Intellectual Property Code. making factories in the Philippines and abroad years before the alleged invention by
de Leon;
The Court of Appeals likewise erred in finding that "PAPA," being a common term of
endearment for one's father, is a word over which petitioner could not claim exclusive b.) that Letters Patent No. 658 was unlawfully acquired by making it appear in the
use and ownership. The Merriam-Webster dictionary defines "Papa" simply as "a application in relation thereto that the process is new and that the plaintiff is the owner
person's father." True, a person's father has no logical connection with catsup of the process when in truth and in fact the process incorporated in the patent
products, and that precisely makes "PAPA" as an arbitrary mark capable of being application has been known and used in the Philippines by almost all tile makers long
registered, as it is distinctive, coming from a family name that started the brand before the alleged use and registration of patent by plaintiff Conrado G. de Leon.
several decades ago. What was registered was not the word "Papa" as defined in the
dictionary, but the word "Papa" as the last name of the original owner of the brand. In RTC: Declared plaintiff’s patent valid and infringed.
fact, being part of several of petitioner's marks, there is no question that the IPO has
found "PAPA" to be a registrable mark.
CA: Affirmed
Respondent had an infinite field of words and combinations of words to choose from
to coin a mark for its lechon sauce. While its claim as to the origin of the term "PAPA ISSUE: W/N the process and improvement used by de Leon is patentable and that
Letters Patent No. 658 was legally issued.
10 | I P L D i g e s t s _ O c t o b e r 2 0
RULING: YES. Joseph Yu were issued by the National Library Certificates of Copyright Registration
and Deposit of the said work.
De Leon never claimed to have invented the process of tile-making. The
Claims and Specifications of Patent No. 658 show that although some of the steps or 2.) On September 20, 2001, Ching requested the NBI for the apprehension and
parts of the old process of tile making were described therein, there were novel and prosecution of illegal manufacturers, producers and/or distributors of the works.
inventive features mentioned in the process.
3.) NBI filed applications for search warrants against William Salinas, Sr. and the
Some of the novel features of the private respondent’s improvements are the officers and members of the Board of Directors of Wilaware Product Corporation. It
following: critical depth, with corresponding easement and lip width to such degree as was alleged that the respondents therein reproduced and distributed the said models.
leaves the tile as thin as 1/8 of an inch at its thinnest portion, ideal composition of
cement and fine river sand, among other ingredients that makes possible the 4.) The respondents filed a motion to quash the search warrants the respondents
production of tough and durable wall tiles, though thin and light; the engraving of deep averred that the works covered by the certificates issued by the National Library are
designs in such a way as to make the tiles decorative, artistic and suitable for wall not artistic in nature, they are considered automotive spare parts and pertain to
ornamentation, and the fact that the tiles can be mass produced in commercial technology. They aver that the models are not original, and as such are the proper
quantities and can be conveniently stock-piled, handled and packed without any subject of a patent, not copyright. That the work of the petitioner is essentially a
intolerable incidence of breakages. technical solution to the problem of wear and tear in automobiles, the substitution of
materials, from rubber to plastic matter of polyvinyl. That a technical solution in any
The records disclose that de Leon’s process is an improvement of the old field of human activity which is novel may be the subject of a patent, and not of a
process of tile making. The tiles produced from de Leon’s process are suitable for copyright. They insist that the certificates issued by the National Library are only
construction and ornamentation, which previously had not been achieved by tiles certifications that, at a point in time, a certain work was deposited in the said office.
made out of the old process of tile making.
5.) The petitioner averred that the copyright certificates are prima facie evidence of its
De Leon’s invention has therefore brought about a new and useful kind of validity. Ching contends that what the Copyright Law protects is the author’s
tile. The old type of tiles were usually intended for floors although there is nothing to intellectual creation, regardless of whether it is one with utilitarian functions or
prevent one from using them for walling purposes. These tiles are neither artistic nor incorporated in a useful article produced on an industrial scale. The test of protection
ornamental. The respondent’s improvement is indeed inventive and goes beyond the for the aesthetic is not beauty and utility, but art for the copyright and invention of
exercise of mechanical skill. He has introduced a new kind of tile for a new purpose. original and ornamental design for design
He has improved the old method of making tiles and pre-cast articles which were not
satisfactory because of an intolerable number of breakages, especially if deep RTC: Granted the motion, and quashed the search warrant on its finding that there
engravings are made on the tile. was no probable cause for its issuance.

He has overcome the problem of producing decorative tiles with deep CA: Affirmed.
engraving, but with sufficient durability. Durability inspite of the thinness and lightness
of the tile, is assured, provided that a certain critical depth is maintained in relation to ISSUE: W/N original ornamental designs or models for articles of manufacture are
the dimensions of the tile. copyrightable.

Ownership of copyrighted material is shown by proof of originality and copyrightability.
Doctrine: While works of applied art, original intellectual, literary and artistic By originality is meant that the material was not copied, and evidences at least
works are copyrightable, useful articles and works of industrial design are not. minimal creativity; that it was independently created by the author and that it
possesses at least same minimal degree of creativity. Copying is shown by proof of
FACTS: access to copyrighted material and substantial similarity between the two works. The
applicant must thus demonstrate the existence and the validity of his copyright
1.) Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., because in the absence of copyright protection, even original creation may be freely
the maker and manufacturer of a Utility Model, described as “Leaf Spring Eye copied.
Bushing” for Automobile made up of plastic. On September 4, 2001, Ching and

11 | I P L D i g e s t s _ O c t o b e r 2 0
A copyright certificate provides prima facie evidence of originality which is one “Copyright and Patent rights are completely distinct and separate from one another,
element of copyright validity. It constitutes prima facie evidence of and the validity of and the protection afforded by one cannot be used interchangeably to cover items or
the facts stated in the certificate. The presumption of validity to a certificate of works that exclusively pertain to the others.”
copyright registration merely orders the burden of proof. A certificate of registration
creates no rebuttable presumption of copyright validity where other evidence in the (3) PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART
record casts doubt on the question. In such a case, validity will not be presumed.
DOCTRINE: To be able to effectively and legally preclude others from copying
The application for a copyright certificate filed by the petitioner, the said Leaf Spring and profiting from the invention, a patent is a primordial requirement.
Eye Bushing for Automobile is merely a utility model described as comprising a
generally cylindrical body having a co-axial bore that is centrally located and provided FACTS:
with a perpendicular flange on one of its ends and a cylindrical metal jacket
surrounding the peripheral walls of said body, with the bushing made of plastic that is
1.) Pearl and Dean was able to secure a Certificate of Copyright Registration dated
either polyvinyl chloride or polypropylene.
January 20, 1981 over these illuminated display units. The advertising light boxes
were marketed under the trademark, Poster Ads.
Plainly, these are not literary or artistic works. They are not intellectual creations in
the literary and artistic domain, or works of applied art. They are certainly not
2.) Trademark was filed on June 20, 1983, but was approved only on September 12,
ornamental designs or one having decorative quality or value.
It bears stressing that the focus of copyright is the usefulness of the artistic design,
3.) In 1985, Pearl and Dean negotiated with Shoemart for the lease and installation of
and not its marketability.
the light boxes in SM City North Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to
The central inquiry is whether the article is a work of art. Works for applied art include which Pearl and Dean agreed.
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,
4.) Only the contract for SM Makati, was signed by SM. On October 4, 1985, Pearl
commercial exploitation, and the potential availability of design patent protection.
and Dean wrote SM inquiring about the other contract and reminding him that their
agreement for installation of light boxes was not only for its SM Makati branch, but
A useful article may be copyrightable only if and only to the extent that such design also for SM Cubao. SM did not bother to reply. Instead, in a letter dated January 14,
incorporates pictorial, graphic, or sculptural features that can be identified separately 1986, SM informed Pearl and Dean that it was rescinding the contract for SM Makati.
from, and are capable of existing independently of the utilitarian aspects of the article.
5.) Pearl and Dean found out that SM installed light boxes similar to those it
The law refers to a “work of applied art which is an artistic creation”. It bears stressing manufactures. It also discovered that North Edsa Marketing Inc. (NEMI), through its
that there is no copyright protection for works of applied art or industrial design which marketing arm, Prime Spots Marketing Services, was set up primarily to sell
have aesthetic or artistic features that cannot be identified separately from the advertising space in lighted display units located in SMI different branches. Pearl and
utilitarian aspects of the article. Functional components of useful articles, no matter Dean noted that NEMI is a sister company of SMI.
how artistically designed, have generally been denied copyright protection unless
they are separable from the useful article. In this case, the petitioner’s models are not
6.) Pearl and Dean filed this instant case for infringement of trademark and copyright,
works of applied art, nor artistic works. They are utility models, useful articles, albeit
unfair competition and damages.
with no artistic design or value.
Being plain automotive spare parts that must conform to the original structural design
of the components they seek to replace, the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion are not ornamental. They lack the decorative quality or value that SMI maintained that it independently developed its poster panels using commonly
must characterize authentic works of applied art. They are not even artistic creations known techniques and available technology, without notice of or reference to Pearl
with incidental utilitarian functions or works incorporated in a useful article. and Dean’s copyright.

No copyright granted by law can be said to arise in favor of the petitioner despite the SMI noted that the registration of the mark, Poster Ads was only for stationeries such
issuance of the certificates of copyright registration and the deposit of the Leaf Spring as letterheads, envelopes, and the like.
Eye Bushing and Vehicle Bearing Cushion.
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SMI, the word Poster Ads is a generic term which cannot be appropriated as a because it had no patent, petitioner could not legally prevent anyone from
trademark, and, as such, registration of such mark is invalid. It also stressed that manufacturing or commercially using the contraption
Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its
advertising display units contained no copyright notice.

RTC: decided in favor of Pearl & Dean

CA: reversed the decision of the RTC.


(1) if the engineering or technical drawings of an advertising display unit (light box)
are granted copyright protection (copyright certificate of registration) by the
National Library, is the light box depicted in such engineering drawings ipso
facto also protected by such copyright?

(2) Should the light box be registered separately and protected by a patent issued
by the Bureau of Patents Trademarks and Technology Transfer (now
Intellectual Property Office)·in addition to the copyright of the engineering

(3) can the owner of a registered trademark legally prevent others from using
such trademark if it is a mere abbreviation of a term descriptive of his
goods, services or business?


(1.) NO. 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.

(2.) NO. Pearl & Dean 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. What the law does not include, it excludes, and for the good reason: the light box
was not a literary or artistic piece which could be copyrighted under the copyright law.
It could not have possibly stretched out to include the underlying light box.

(3.) NO. Petitioner never secured a patent for the light boxes. It therefore acquired no
patent rights which could have protected its invention, if in fact it really was. And

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