Air Philippines Corporation vs.
Pennswell, Inc  During the pendency of the trial, petitioner filed a Motion to
Trade secrets should receive greater protection from discovery,
because they derive economic value from being generally unknown
and not readily ascertainable by the public.
Facts:
 Petitioner Air Philippines Corporation is a domestic
corporation engaged in the business of air transportation
services. On the other hand, respondent Pennswell, Inc. was
organized to engage in the business of manufacturing and
selling industrial chemicals, solvents, and special lubricants.
 Respondent delivered and sold to petitioner sundry goods in
trade. Under the contracts, petitioner’s total outstanding
obligation amounted to P449,864.98 with interest at 14% per
annum until the amount would be fully paid.
 For failure of the petitioner to comply with its obligation
under said contracts, respondent filed a Complaint for a Sum
of Money on 28 April 2000 with the RTC.
 In its Answer, petitioner alleged that it was defrauded in the
amount of P592,000.00 by respondent for its previous sale of
four items.
 Petitioner asserted that it was deceived by respondent which
merely altered the names and labels of such goods. Petitioner
asseverated that had respondent been forthright about the
identical character of the products, it would not have
purchased the items complained of.
 Moreover, petitioner alleged that when the purported fraud
was discovered, a conference was held between petitioner
and respondent on 13 January 2000, whereby the parties
agreed that respondent would return to petitioner the
amount it previously paid.
 However, petitioner was surprised when it received a letter
from the respondent, demanding payment of the amount of
P449,864.94, which later became the subject of respondent’s
Complaint for Collection of a Sum of Money against
petitioner.
Compel respondent to give a detailed list of the ingredients
and chemical components of the following products. The RTC
rendered an Order granting the petitioner’s motion.
 Respondent sought reconsideration of the foregoing Order,
contending that it cannot be compelled to disclose the
chemical components sought because the matter is
confidential.
 It argued that what petitioner endeavored to inquire upon
constituted a trade secret which respondent cannot be forced
to divulge.
 The RTC gave credence to respondent’s reasoning, and
reversed itself. Alleging grave abuse of discretion on the part
of the RTC, petitioner filed a Petition for Certiorari under Rule
65 of the Rules of Court with the Court of Appeals, which
denied the Petition and affirmed the Order dated 30 June
2004 of the RTC.
 Petitioner’s Motion for Reconsideration was denied.
Unyielding, petitioner brought the instant Petition before SC.
Issue:
W/N CA erred in upholding RTC decision denying petitioner’s motion
to subject respondent’s products to compulsory disclosure.
Held:
No.
 The products are covered by the exception of trade secrets
being divulged in compulsory disclosure.
 The Court affirms the ruling of the Court of Appeals which
upheld the finding of the RTC that there is substantial basis
for respondent to seek protection of the law for its
proprietary rights over the detailed chemical composition of
its products.
The Supreme Court has declared that trade secrets and banking
transactions are among the recognized restrictions to the right of
the people to information as embodied in the Constitution.
 SC said that the drafters of the Constitution also
unequivocally affirmed that, aside from national security
 matters and intelligence information, trade or industrial
secrets (pursuant to the Intellectual Property Code and other
related laws) as well as banking transactions (pursuant to the
Secrecy of Bank Deposits Act), are also exempted from
compulsory disclosure.
A trade secret is defined as a plan or process, tool, mechanism or
compound known only to its owner and those of his employees to
whom it is necessary to confide it.
 The definition also extends to a secret formula or process not
patented, but known only to certain individuals using it in
compounding some article of trade having a commercial
value.
 American jurisprudence has utilized the following factors to
determine if an information is a trade secret, to wit:
(1) the extent to which the information is known outside of the
employer’s business;
(2) the extent to which the information is known by employees and
others involved in the business;
(3) the extent of measures taken by the employer to guard the
secrecy of the information;
(4) the value of the information to the employer and to competitors;
(5) the amount of effort or money expended by the company in
developing the information; and
(6) the extent to which the information could be easily or readily
obtained through an independent source.
 Rule 27 sets an unequivocal proviso that the documents,
papers, books, accounts, letters, photographs, objects or
tangible things that may be produced and inspected should
not be privileged.
 The documents must not be privileged against disclosure. On
the ground of public policy, the rules providing for production
and inspection of books and papers do not authorize the
production or inspection of privileged matter;
 that is, books and papers which, because of their
confidential and privileged character, could not be received
in evidence.
 Such a condition is in addition to the requisite that the items
be specifically described, and must constitute or contain
evidence material to any matter involved in the action and
which are in the party’s possession, custody or control.
 In the case at bar, petitioner cannot rely on Section 77of
Republic Act 7394, or the Consumer Act of the Philippines, in
order to compel respondent to reveal the chemical
components of its products.
 While it is true that all consumer products domestically sold,
whether manufactured locally or imported, shall indicate
their general make or active ingredients in their respective
labels of packaging, the law does not apply to respondent.
 Respondent’s specialized lubricants — namely, Contact
Grease, Connector Grease, Thixohtropic Grease, Di-Electric
Strength Protective Coating, Dry Lubricant and Anti-Seize
Compound — are not consumer products.
 What is clear from the factual findings of the RTC and the
Court of Appeals is that the chemical formulation of
respondent’s products is not known to the general public and
is unique only to it.
 Both courts uniformly ruled that these ingredients are not
within the knowledge of the public.
 Since such factual findings are generally not reviewable by
this Court, it is not duty-bound to analyze and weigh all over
again the evidence already considered in the proceedings
below.
The revelation of respondent’s trade secrets serves no better
purpose to the disposition of the main case pending with the RTC,
which is on the collection of a sum of money.
As can be gleaned from the facts, petitioner received respondent’s
goods in trade in the normal course of business.
To be sure, there are defenses under the laws of contracts and sales
available to petitioner.
On the other hand, the greater interest of justice ought to favor
respondent as the holder of trade secrets. Weighing the conflicting
interests between the parties, SC rules in favor of the greater interest
of respondent.
Trade secrets should receive greater protection from discovery,
because they derive economic value from being generally unknown
and not readily ascertainable by the public.
PRIBHDAS J. MIRPURI vs. CA, DIRECTOR OF PATENTS and the
BARBIZON CORPORATION
FACTS
 Lolita Escobar, the predecessor-in-interest of petitioner
Mirpuri, filed an application for the registration of the
trademark "Barbizon" for use in brassieres and ladies
undergarments. Escobar alleged that she had been
manufacturing and selling these products under the firm
name "L & BM Commercial" since 1970.
 Private respondent Barbizon Corporation, a US corporation
opposed the application.
 Director of Patents rendered judgment dismissing the
opposition and giving due course to Escobar's application.
 Escobar later assigned all her rights and interest over the
trademark to petitioner Mirpuri who, under his firm name
then, the "Bonito Enterprises," was the sole and exclusive
distributor of Escobar's "Barbizon" products.
 In 1979, however, Escobar failed to file with the Bureau of
Patents the Affidavit of Use of the trademark required under
Section 12 of R.A. 166.
 Due to this failure, the Bureau of Patents cancelled Escobar's
certificate of registration.
Escobar reapplied for registration of the cancelled trademark.
Mirpuri filed his own application for registration of Escobar's
trademark.
Escobar later assigned her application to herein petitioner and this
application was opposed by private respondent.
Petitioner raised the defense of res judicata.
Escobar assigned to petitioner the use of the business name
"Barbizon International."
Petitioner registered the name with the Department of Trade and
Industry (DTI) for which a certificate of registration was issued in
1987.
Private respondent filed before the Office of Legal Affairs of the DTI a
petition for cancellation of petitioner's business name.
DTI, Office of Legal Affairs, cancelled petitioner's certificate of
registration, and declared private respondent the owner and prior
user of the business name "Barbizon International."
Director rendered a decision declaring private respondent's
opposition barred by res judicata and giving due course to
petitioner's application for registration.
CA reversed the Director’s decision that case was barred and ordered
that the case be remanded to the Bureau of Patents for further
proceedings.
ISSUES
Whether or not respondent is barred by filing this case by res
judicata
Whether or not petitioner is liable for trademark infringement
HELD
 The Paris Convention, is a multilateral treaty that seeks to
protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and
at the same time aims to repress unfair competition.
 It is essentially a compact among various countries which, as
members of the Union, have pledged to accord to citizens of
the other member countries trademark and other rights
comparable to those accorded their own citizens by their
domestic laws for an effective protection against unfair
competition.
 Both the Philippines and the United States of America, are
signatories to the Convention.
Private respondent anchors its cause of action on the first paragraph
of Article 6bis of the Paris Convention, said Article governing
protection of well-known trademarks.
 Art. 6b is is a self-executing provision and does not require
legislative enactment to give it effect in the member country.
 It may be applied directly by the tribunals and officials of each
member country by the mere publication or proclamation of
the Convention, after its ratification according to the public
law of each state and the order for its execution.
 The essential requirement under Article 6bis is that the
trademark to be protected must be "well-known" in the
country where protection is sought.
 The power to determine whether a trademark is well-known
lies in the "competent authority of the country of registration
or use."
 This competent authority would be either the registering
authority if it has the power to decide this, or the courts of
the country in question if the issue comes before a court.
 Pursuant to Article 6b is, then Minister Villafuerte of the
Ministry of Trade issued a Memorandum instructing Director
of Patents to reject all pending applications for Philippine
registration of signature and other world-famous trademarks
by applicants other than their original owners or users,
 enumerating several internationally-known trademarks and
ordered the Director of Patents to require Philippine
registrants of such marks to surrender their certificates of
registration.
 After, Minister Ongpin issued Memorandum which did not
enumerate well-known trademarks but laid down guidelines
for the Director of Patents to observe in determining whether
a trademark is entitled to protection as a well-known mark in
the Philippines under Article 6bis of the Paris Convention.
 All pending applications for registration of world-famous
trademarks by persons other than their original owners were
to be rejected forthwith.
The Supreme Court in the 1984 landmark case of La Chemise Lacoste,
S.A. v. Fernandez ruled therein that under the provisions of Article
6bis of the Paris Convention, the Minister of Trade and Industry was
the "competent authority" to determine whether a trademark is
well-known in this country.
The Villafuerte Memorandum was issued in 1980. In the case at bar,
the first inter partes case, was filed in 1970, before the Villafuerte
Memorandum but 5 years after the effectivity of the Paris
Convention. Private respondent, however, did not cite the protection
of Article 6bis, neither did it mention the Paris Convention at all.
It was only in 1981 when second case was instituted that the Paris
Convention and the Villafuerte Memorandum, and, during the
pendency of the case, the 1983 Ongpin Memorandum were invoked
by private respondent.
We held in Wolverine Worldwide, Inc. v. CA that the Memorandum
and E.O. did not grant a new cause of action because it did "not
amend the Trademark Law," . . . "nor did it indicate a new policy with
respect to the registration in the Philippines of world-famous
trademarks."
In other words, since the first and second cases involved the same
issue of ownership, then the first case was a bar to the second case.
Here the second case raised the issue of ownership of the trademark,
the first registration and use of the trademark in the United States
and other countries, and the international recognition and reputation
of the trademark established by extensive use and advertisement of
private respondent's products for over forty years here and abroad.
These are different from the issues of confusing similarity and
damage in first. The issue of prior use may have been raised in first
case but this claim was limited to prior use in the Philippines only.
Prior use in second stems from private respondent's claim as
originator of the word and symbol "Barbizon," as the first and
registered user of the mark attached to its products which have been
sold and advertised worldwide for a considerable number of years
prior to petitioner's first application for registration of her trademark
in the Philippines.
Indeed, these are substantial allegations that raised new issues and
necessarily gave private respondent a new cause of action.
Res judicata does not apply to rights, claims or demands, although
growing out of the same subject matter, which constitute separate or
distinct causes of action and were not put in issue in the former
action.
Respondent corporation also introduced in the second case a fact
that did not exist at the time the first case was filed and terminated:
the cancellation of petitioner's certificate of registration for failure to
file the affidavit of use.
It did not and could not have occurred in the first case, and this gave
respondent another cause to oppose the second application.
Res judicata extends only to facts and conditions as they existed at
the time judgment was rendered and to the legal rights and relations
of the parties fixed by the facts so determined.
When new facts or conditions intervene before the second suit,
furnishing a new basis for the claims and defenses of the parties, the
issues are no longer the same, and the former judgment cannot be
pleaded as a bar to the subsequent action.
It is also noted that the oppositions in the first and second cases are
based on different laws.
The opposition in first was based on specific provisions of the
Trademark Law, i.e., Section 4 (d) on confusing similarity of
trademarks and Section 8 on the requisite damage to file an
opposition to a petition for registration.
The opposition in second invoked the Paris Convention, particularly
Article 6bis thereof, E.O. No. 913 and the two Memoranda of the
Minister of Trade and Industry.
This opposition also invoked Article 189 of the Revised Penal Code
which is a statute totally different from the Trademark Law.
Causes of action which are distinct and independent from each other,
although arising 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 operative as res
judicata, such as where the two actions are based on different
statutes.
IN VIEW WHEREOF, the petition is denied and the Decision and
Resolution of the CA are affirmed.
FACTS
 Lolita Escobar applied with the Bureau of Patents for the
registration of the trademark “Barbizon”, alleging that she had
been manufacturing and selling these products since 1970.
 Private respondent Barbizon Corp opposed the application in
IPC No. 686. The Bureau granted the application and a
certificate of registration was issued for the trademark
“Barbizon”.
 Escobar later assigned all her rights and interest over the
trademark to petitioner Mirpuri.
 In 1979, Escobar failed to file with the Bureau the Affidavit of
Use of the trademark.
 Due to his failure, the Bureau cancelled the certificate of
registration. Escobar reapplied and Mirpuri also applied and
this application was also opposed by private respondent in
IPC No. 2049, claiming that it adopted said trademark in 1933
and has been using it.
 It obtained a certificate from the US Patent Office in 1934.
Then in 1991, DTI cancelled petitioner’s registration and
declared private respondent the owner and prior user of the
business name “Barbizon International”.
ISSUE: WON the treaty (Paris Convention) affords protection to a
foreign corporation against a Philippine applicant for the registration
of a similar trademark.
HELD
 The Court held in the affirmative. RA 8293 defines trademark
as any visible sign capable of distinguishing goods.
 The Paris Convention is a multilateral treaty that seeks to
protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and
at the same time aims to repress unfair competition.
 In short, foreign nationals are to be given the same treatment
in each of the member countries as that country makes
available to its own citizens.
 Nationals of the various member nations are thus assured of
a certain minimum of international protection of their
industrial property.
EMERALD GARMENT MANUFACTURING CORPORATION vs. HON.
COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC.
FACTS:
  On 18 September 1981, private respondent H.D. Lee Co., Inc.
filed with the Bureau of Patents, Trademarks & Technology
Transfer (BPTTT) a Petition for Cancellation of Registration No.
SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts,
jeans, blouses, socks, briefs, jackets, jogging suits, dresses,
shorts, shirts and lingerie under Class 25, issued on 27
October 1980 in the name of petitioner Emerald Garment
Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so closely
resembled its own trademark, 'LEE' as previously registered and used
in the Philippines cause confusion, mistake and deception on the part
of the purchasing public as to the origin of the goods.
 On 19 July 1988, the Director of Patents rendered a decision
granting private respondent's petition for cancellation and
opposition to registration.
 The Director of Patents, using the test of dominancy, declared
that petitioner's trademark was confusingly similar to private
respondent's mark because "it is the word 'Lee' which draws
the attention of the buyer and leads him to conclude that the
goods originated from the same manufacturer.
 It is undeniably the dominant feature of the mark.
ISSUE:
Whether or not a trademark causes confusion and is likely to deceive
the public is a question of fact which is to be resolved by applying the
"test of dominancy", meaning, if the competing trademark contains
the main or essential or dominant features of another by reason of
which confusion and deception are likely to result.
HELD:
 The word "LEE" is the most prominent and distinctive feature
of the appellant's trademark and all of the appellee's "LEE"
trademarks. It is the mark which draws the attention of the
buyer and leads him to conclude that the goods originated
from the same manufacturer.
 The alleged difference is too insubstantial to be noticeable.
The likelihood of confusion is further made more probable by
the fact that both parties are engaged in the same line of
business.
 Although the Court decided in favor of the respondent, the
appellee has sufficiently established its right to prior use and
registration of the trademark "LEE" in the Philippines and is
thus entitled to protection from any infringement upon the
same.
 The dissenting opinion of Justice Padilla is more acceptable.
ANGELITA MANZANO, petitioner, vs. COURT OF APPEALS, and
MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY
MANUFACTURING CORPORATION, respondents.
FACTS:
 The petitioner filed an action for the cancellation of Letters of
Patent covering a gas burner registered in the name of
responded Melecia Madolaria who subsequently assigned the
letter of patent to United Foundry.
 Petitioner alleged that the private respondent was not the
original, true and actual inventor nor did she derive her rights
from the original, true and actual inventor of the utility model
covered by the letter of patent;
 further alleged that the utility model covered by the subject
letter of patent had been known or used by others in the
 Philippines for than one (1) year before she filed her
application for letter of patent on Dec 1979.
 For failure to present substantive proof of her allegations, the
lower court and Court of Appeals denied the action for
cancellation. Hence, the present petition.
ISSUE: WON the respondent court wrongfully denied the cancellation
of letter of patent registered under the private respondent.
HELD:
 No. The issuance of such patent creates a presumption which
yields only to clear and cogent evidence that the patentee
was the original and first inventor.
 The burden of proving want of novelty is on him who avers it
and the burden is a heavy one which is met only by clear and
satisfactory proof which overcomes every reasonable doubt.
 Clearly enough, the petitioner failed to present clear and
satisfactory proof to overcome every reasonable doubt to
afford the cancellation of the patent to the private
respondent.
ELIDAD C. KHO, doing business under the name and style of KEC
COSMETICS LABORATORY, petitioner, vs. HON. COURT OF APPEALS,
SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG
TIAM CHAY, respondents.
FACTS:
 The petitioner alleged that she is the registered owner of the
copyrights Chin Chun Su and Oval Facial Cream
Container/Case as evidenced by certificates of copyright
registrations and patent rights on Chun Chun Su & Device and
Chin Chun Su (medicated cream) after she purchased it from
Quintin Cheng (previous registered owner in the Philippine
Patent Office [PPO]).
 Meanwhile, there was a decline in the petitioner’s business
income due to the advertisement and sale made by
Summerville on petitioner’s products under the same brand
name and in similar containers.
 According to Summerville, they are the exclusive and
authorized importer, re-packer and distributor of Chin Chun
Su products manufactured by Shun Yi Factory of Taiwan and
that said company authorized them to register its trade name
“Chin Chun Su Mediated Cream” with the PPO.
 The application for preliminary injunction filed by petitioner
was granted. Hence, respondents moved for reconsideration,
which was denied.
 The respondents then moved for nullification of said
preliminary injunction with the CA. The latter granted its
petition.
ISSUE: WON the copyright and patent over the name and container
of the beauty cream product entitle the registrant to its EXCLUSIVE
use and ownership .
HELD: NO.
 The petitioner has no right for the EXCLUSIVE use of the trade
name and its container. In order to be entitled to its exclusive
use, the user must sufficiently prove that she registered or
used it before anybody else did. This, petitioner failed to do.
 “Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another.
 A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods.
  In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.
 Meanwhile, the scope of a copyright is confined to literary
and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment
of their creation.
 Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially
applicable”.
KHO V. CA (G.R. NO. 115758)
Facts:
 Petitioner, doing business under the name and style KEC
Cosmetics Laboratory, alleges that it is the registered owner
of copyright and patent registration of the Chin Chun Su
container and medicated cream.
 Hence, petitioner filed a complaint to enjoin respondent
Summerville Company from advertising and selling cream
products under the same brand name Chin Chun Su as it will
mislead the public and damage petitioner’s business.
 The trial court granted the injunction. On appeal, the writ was
dissolved. The trial court ruled to bar petitioner from using
the mark Chin Chun Su.
Issue: WON petitioner is entitled to the exclusive use of the
trademark Chin Chun Su based on her copyright and patent
registration over the product.
Ruling: NO.
 Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another.
 A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods.
 In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.
 Meanwhile, the scope of a copyright is confined to literary
and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment
of their creation.
 Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially
applicable.
 Petitioner has no right to support her claim for the exclusive
use of the subject trade name and its container.
 The name and container of a beauty cream product are
proper subjects of a trademark inasmuch as the same falls
squarely within its definition.
 In order to be entitled to exclusively use the same in the sale
of the beauty cream product, the user must sufficiently prove
that she registered or used it before anybody else did.
 The petitioner’s copyright and patent registration of the name
and container would not guarantee her right to the exclusive
use of the same for the reason that they are not appropriate
subjects of the said intellectual rights.
  Consequently, a preliminary injunction order cannot be issued
for the reason that the petitioner has not proven that she has
a clear right over the said name and container to the
exclusion of others, not having proven that she has registered
a trademark thereto or used the same before anyone did.
PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright and
PatentsTrademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the goods or
services of an enterprise and shall include a stamped or marked
container of goods.
The scope of a copyright is confined to literary and artistic works
which are original intellectual creations in the literary and artistic
domain.
Patentable inventions refer to any technical solution of a problem in
any field of human activity which is new, involves an inventive step
and is industrially applicable.
FACTS:
 Pearl and Dean is a corporation in the manufacture of
advertising display units also known as light boxes, which
were manufactured by Metro Industrial Services.
 A copyright Registration was obtained in 1981. These were
marketed in the name of "Poster Ads".
 They also applied for a registration of trademark with the
Bureau of Patents in 1983, but was only approved in 19988.
 In 1985, petitioner had n agreement with respondent
Shoemart Inc (SMI) to install these light boxes in their Makati
and Cubao branch, Only the Makati branch was able to sigh
the agreement.
 In 1986, the contract was rescinded unilaterally by SMI, and
instead contracted with Metro Industrial Services.
 They installed these lightboxes in different SM city branches,
including Cubao and Makati, with association with North Edsa
Marketing Inc (NEMI), SMI's sister company.
 Petitioner requested SMI and NEMI to put down their
installations of the light boxes, and payment of compensatory
damages worth P20M.
 Claiming that respondents failed to comply, they filed a case
for infringement of trademark and copyright, unfair
competition and damages. RTC ruled in favor of petitioner,
but CA reversed.
ISSUES:
(1) Whether there was a copyright infringement
(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition
RULING: No to all.
(1) Copyright is a statutory right, subject to the terms and
conditions specified in the statute.
 Therefore, it can only cover the works falling within the
statutory enumeration or description.
 Since the copyright was classified under class "O" works,
which includes "prints, pictorial illustrations, advertising
copies, labels, tags and box wraps," and does not include the
light box itself.
  A lightbox, even admitted by the president of petitioner
company, was neither a literary nor an artistic work but an
engineering or marketing invention, thus not included under a
copyright.
(2) Petitioner was not able to secure a patent for its lightboxes, and
cannot legally prevent anyone from manufacturing or commercially
using the same. Patent has a three-fold purpose:
a) to foster and reward invention;
b) promotes disclosures of invention and permit public to use the
same upon expiration;
c) stringent requirements for patent protection to ensure in the
public domain remain there for free use of the public.
Since petitioner was not able to go through such examination, it
cannot exclude others from manufacturing, or selling such lightboxes.
No patent, no protection.
(3) The certificate of registration issued by the Director of Patents
gives exclusive right to use its own symbol only to the description
specified in the certificate. It cannot prevent others to use the same
trademark with a different description.
(4) "Poster Ads" is a general term that cannot be associated
specifically to Pearl and Dean, thus it cannot be considered to use
such term to be unfair competition against the petitioner.
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 Pfizer’s
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.
 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 IPO’s 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 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?
c) Is there forum shopping when a party files two actions with two
seemingly different causes of action and yet pray for the same relief?
Held:
a) No. The provision of R.A. 165, from which the Pfizer’s 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 patentee’s 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.
c) Yes. Forum shopping is defined as the act of a party against
whom an adverse judgment has been rendered in one forum,
of seeking another (and possibly favorable) opinion in
another forum (other than by appeal or the special civil action
of certiorari),
or the institution of two (2) or more actions or proceedings grounded
on the same cause on the supposition that one or the other court
would make a favorable disposition.
 The elements of forum shopping are:
 (a) identity of parties, or at least such parties that represent
the same interests in both actions;
 (b) identity of rights asserted and reliefs prayed for, the reliefs
being founded on the same facts;
 c) identity of the two preceding particulars, such that any
judgment rendered in the other action will, regardless of
which party is successful, amount to res judicata in the action
under consideration. This instance meets these elements.
The parties are clearly identical. In both the complaints in the BLA-
IPO and RTC, the rights allegedly violated and the acts allegedly
violative of such rights are identical, regardless of whether the
patents on which the complaints were based are different.
 In both cases, the ultimate objective of Pfizer was to ask for
damages and to permanently prevent Pharmawealth from
selling the contested products. Relevantly, the Supreme Court
has decided that the filing of two actions with the same
 objective, as in this instance, constitutes forum shopping.
Owing to the substantial identity of parties, reliefs and issues in the
IPO and RTC cases, a decision in one case will necessarily amount to
res judicata in the other action.
Roberto Del Rosario vs Court of Appeals
Intellectual Property Law – Law on Patents – Infringement – Karaoke
Machine
FACTS:
 Roberto Del Rosario was granted a patent for his innovation
called the “Minus One” karaoke.
 The patent was issued in June 1988 for five years and was
renewed in November 1991 for another five years as there
were improvement introduced to his “minus one” karaoke.
 In 1993, while the patent was still effective, Del Rosario sued
Janito Corporation, a Japanese company owned by Janito Cua,
for allegedly infringing upon the patent of Del Rosario.
 Del Rosario alleged that Janito was manufacturing a sing-
along system under the brand “miyata karaoke” which is
substantially, if not identical, the same to his “minus one”
karaoke.
 The lower court ruled in favor of Del Rosario but the Court of
Appeals ruled that there was no infringement because the
karaoke system was a universal product manufactured,
advertised, and marketed all over the world long before Del
Rosario was issued his patents.
ISSUE: Whether or not the Court of Appeals erred in its ruling.
HELD: Yes.
 The Patent Law expressly acknowledges that any new model
of implements or tools of any industrial product even if not
possessed of the quality of invention but which is of practical
utility is entitled to a patent for utility model.
 Here, there is no dispute that the letters patent issued to Del
Rosario are for utility models of audio equipment.
 It is elementary that a patent may be infringed where the
essential or substantial features of the patented invention are
taken or appropriated, or the device, machine or other
subject matter alleged to infringe is substantially identical
with the patented invention.
 In order to infringe a patent, a machine or device must
perform the same function, or accomplish the same result by
identical or substantially identical means and the principle or
mode of operation must be substantially the same.
 In the case at bar, miyata karaoke was proven to have
substantial if not identical functionality as that of the minus
one karaoke which was covered by the second patent issued
to Del Rosario. Further, Janito failed to present competent
evidence that will show that Del Rosario’s innovation is not
new.