TRADEMARK:

FREDCO MANUFACTURING CORPORATION VS. PRESIDENT AND FELLOWS OF

HARVARD COLLEGE (HARVARD UNIVERSITY)
Facts:
Petitioner Fredco Manufacturing Corporation filed a Petition for Cancellation of Registration
No. 56561 against respondent President and Fellows of Harvard College (Harvard
University). Fredco alleged that Registration No. 56561 was issued to Harvard University on
25 November 1993 for the mark "Harvard Veritas Shield Symbol" under Classes 16, 18, 21, 25
and 28. Fredco also alleged that the mark "Harvard" was first issued by its predecessor-in-
interest New York Garments on 2 January 1982 and was granted a Certificate of
Registrationon 12 December 1988 for a period of 20 years registration under Class 25. It is also
alleged that the registration was cancelled on 30 July 1988 when New York Garment
inadvertently failed to file an Affidavit of Use/Non-Use on the fifth anniversary of the
registration but the right to the mark remained with its predecessor and now with Fredco.
Harvard University, on the other hand, alleged that it is the lawful owner of the name and
mark "Harvard" in numerous countries worldwide, including the Philippines. The BLA, IPO
cancelled the registration of the mark "Harvard" under Class 25 but was reversed by the
Director General, IPO rationing that more than the use of the trademark, the application must
be the owner of the mark sought tobe registered. The CA affirmed the Director General.
Issue:
Whether or not Registration No. 56561 Class 25 must be cancelled.
Ruling:
No. While Harvard University had actual prior use of its marks abroad for a long time, it did
not have actual prior use in the Philippines. However, Harvard University's registration of
the name "Harvard" is based on home registration which is allowed under Section 37 of RA
166. Also, under Section 239.2 of RA 8293, "marks registered under RA 166 shall remain in
force but shall be deemed to have been granted under this Actxxx" which does not require
actual prior use of the mark in the Philippines. In addition, Article 8 of the Paris Convention,
to which both the Philippines and the US are signatories, has been incorporated in Section 37
of RA 166; thus, under Philippine laws, a trade name of national of a State that is a party to
the Paris Convention, whether or not the trade name forms part of a trademark, is protected
without the obligation of filing or registration. Be it noted that Fredco's registration was
already cancelled when it failed to file the required Affidavit of Use/Non-Use for the fifth
anniversary of the mark's registration. Hence, at the time of the filing of the Petition for
Cancellation, Fredco was no longer the registrant or presumptive owner of the mark
"Harvard.
Levi Strauss vs Clinton Apparelle
Facts:
This case stemmed from the Complaint for Trademark Infringement, Injunction and Damages
filed by petitioners LS & Co. and LSPI against respondent Clinton Apparelle, Inc.* (Clinton
Aparelle) together with an alternative defendant, Olympian Garments, Inc. (Olympian
Garments), before the Regional Trial Court of Quezon City, Branch 90. The Complaint was
docketed as Civil Case No. Q-98-34252, entitled Levi Strauss & Co. and Levi Strauss (Phils.),
Inc. v. Clinton Aparelle, Inc. and/or Olympian Garments, Inc.
The Complaint alleged that LS & Co., a foreign corporation duly organized and existing
under the laws of the State of Delaware, U.S.A., and engaged in the apparel business, is the
owner by prior adoption and use since 1986 of the internationally famous Dockers and
Design trademark. This ownership is evidenced by its valid and existing registrations in
various member countries of the Paris Convention. In the Philippines, it has a Certificate of
Registration No. 46619 in the Principal Register for use of said trademark on pants, shirts,
blouses, skirts, shorts, sweatshirts and jackets under Class 25.
LS & Co. and LSPI further alleged that they discovered the presence in the local market of
jeans under the brand name Paddocks using a device which is substantially, if not exactly,
similar to the Dockers and Design trademark owned by and registered in the name of LS &
Co., without its consent. Based on their information and belief, they added, Clinton Apparelle
manufactured and continues to manufacture such Paddocks jeans and other apparel.
Issue:
Whether there is Trademark Dilution?
Ruling:
No. Trademark dilution is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or (2) likelihood of confusion,
mistake or deception. Subject to the principles of equity, the owner of a famous mark is
entitled to an injunction against another persons commercial use in commerce of a mark or
trade name, if such use begins after the mark has become famous and causes dilution of the
distinctive quality of the mark. This is intended to protect famous marks from subsequentuses that blur
distinctiveness of the mark or tarnish or disparage it.
Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
respondent of Paddocks and Design began after the petitioners mark became famous; and (3)
such subsequent use defames petitioners mark. In the case at bar, petitioners have yet to
establish whether Dockers and Design has acquired a strong degree of distinctiveness and
whether the other two elements are present for their cause to fall within the ambit of the
invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to
establish that there was confusing similarity between two marks is not sufficient proof of any
dilution that the trial court must enjoin.
Bata Industries LTD vs. Court of Appeals
Facts:
The respondent New Olympian Rubber Products sought to register the mark "BATA" for
casual rubber shoe products, alleging it had used the said mark since the 1970s. The
petitioner, a Canadian corporation opposed with its allegations that it owns and has not
abandoned said trademark. The petitioner has no license to do business in the Philippines
and the trademark has never been registered in the Philippines by any foreign entity. Bata
Industries does not sell footwear under the said trademark in the Philippines nor does it have
any licensing agreement with any local entity to sell its product. Evidence show that earlier,
even before the World War II, Bata shoes made by Gerbec and Hrdina (Czech company) were
already sold in the country. Some shoes made by the petitioner may have been sold in the
Philippines ntil 1948. On the other hand, respondent spent money and effort to popularize the
trademark "BATA" since the 70's. Moreover, it also secures 3 copyright registrations for the
word "BATA". The Philippine Patent Office (PPO) dismissed the opposition by the petitioner
while the Court of Appeals (CA) reversed said decision. However, a 2nd resolution by the CA
affirmed the PPO decision.
Issue:
Does the petitioner have the right to protect its goodwill alleged to be threatened with the
registration of the mark?
Ruling:
NO. Bata Industries has no Philippine goodwill that would be damaged by the registration of
the mark. Any slight goodwill obtained by the product before World War II was completely
abandoned and lost in the more than 35 years that passed since Manila's liberation from
Japan. The petitioner never used the trademark either before or after the war. It is also not the
successor-in-interest of Gerbec & Hrdina and there was no privity of interest between them,
Furthermore, the Czech trademark has long been abandoned in Czechoslovakia.
PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT SA.
G.R. No. 180073. November 25, 2009
FACTS:
Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent
later discovered that petitioner was also distributing a similar food supplement using the
mark PCO-GENOLS since 1996. This prompted respondent to demand that petitioner cease
and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary
Injunction against petitioner, in using the name PCO-GENOLS for being confusingly similar.
Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS
have the same suffix "GENOL" which appears to be merely descriptive and thus open for
trademark registration by combining it with other words and concluded that the marks, when
read, sound similar, and thus confusingly similar especially since they both refer to food
supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court
explained that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively
similar to PYCNOGENOL.
ISSUE: Whether the names are confusingly similar.\
RULING:
Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two
test to prove such.
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion and deception, thus constituting infringement. If the
competing trademark contains the main, essential and dominant features of another, and
confusion or deception is likely to result, infringement takes place. Duplication or imitation is
not necessary; nor is it necessary that the infringing label should suggest an effort to imitate.
The question is whether the use of the marks involved is likely to cause confusion or mistake
in the mind of the public or to deceive purchasers. Courts will consider more the aural and
visual impressions created by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets, and market segments.
The Holistic Test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Not only
on the predominant words should be the focus but also on the other features appearing onboth labels in
order that the observer may draw his conclusion whether one is confusingly
similar to the other.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on
evidence, appears to be merely descriptive and furnish no indication of the origin of the
article and hence, open for trademark registration by the plaintiff through combination with
another word or phrase. When the two words are pronounced, the sound effects are
confusingly similar not to mention that they are both described by their manufacturers as a
food supplement and thus, identified as such by their public consumers. And although there
were dissimilarities in the trademark due to the type of letters used as well as the size, color
and design employed on their individual packages/bottles, still the close relationship of the
competing products’ name in sounds as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are the same and/or originates from a
common source and manufacturer.
Shangri-La International Hotel Management, Ltd., et. al. vs. Developers Group of Companies
Inc.
Facts:
All hotels owned, operated and managed by the aforesaid SLIHM Group of Companies
adopted and used the distinctive lettering of the name "Shangri-La" as part of their trade
names. Since 1975 and up to the present, the "Shangri-La" mark and "S" logo have been used
consistently and continuously by all Shangri-La hotels and companies in their paraphernalia,
such as stationeries, envelopes, business forms, menus, displays and receipts. The Kuok
Group and/or petitioner SLIHM caused the registration of, and in fact registered, the
"Shangri-La" mark and "S" logo in the patent offices in different countries around the world.
On June 21, 1988, the petitioners filed with the BPTTT a petition, docketed as Inter Partes
Case No. 3145, praying for the cancellation of the registration of the "Shangri-La" mark and
"S" logo issued to respondent DGCI on the ground that the same were illegally and
fraudulently obtained and appropriated for the latter's restaurant business. They also filed in
the same office Inter Partes Case No. 3529, praying for the registration of the same mark and
logo in their own names. Until 1987 or 1988, the petitioners did not operate any establishment
in the Philippines, albeit they advertised their hotels abroad since 1972. Petitioners also argue
that the respondent's use of the "Shangri-La" mark and "S" logo was in evident bad faith and
cannot therefore ripen into ownership, much less registration.
The petitioners accused DGCI of appropriating and illegally using the "Shangri-La" mark and
"S" logo, adding that the legal and beneficial ownership thereof pertained to SLIHM and that
the Kuok Group and its related companies had been using this mark and logo since March
1962 for all their corporate names and affairs. In this regard, they point to the Paris
Convention for the Protection of Industrial Property as affording security and protection to
SLIHM's exclusive right to said mark and logo. They further claimed having used, since late
1975, the internationally-known and specially-designed "Shangri-La" mark and "S" logo for all
the hotels in their hotel chain.
Issue:
Whether or not the infringement case should be dismissed or at least suspended.
Ruling:
When a trademark copycat adopts the word portion of another's trademark as his own, there
may still be some doubt that the adoption is intentional. But if he copies not only the word
but also the word's exact font and lettering style and in addition, he copies also the logo
portion of the trademark, the slightest doubt vanishes. It is then replaced by the certainty that
the adoption was deliberate, malicious and in bad faith.31It is truly difficult to understand why, of the
millions of terms and combination of letters and
designs available, the respondent had to choose exactly the same mark and logo as that of the
petitioners, if there was no intent to take advantage of the goodwill of petitioners' mark and
logo.32 One who has imitated the trademark of another cannot bring an action for
infringement, particularly against the true owner of the mark, because he would be coming to
court with unclean hands.33 Priority is of no avail to the bad faith plaintiff. Good faith is
required in order to ensure that a second user may not merely take advantage of the goodwill
established by the true owner. However, since RA 166 was the law in force at the time the
case was instituted, and such was prior to the signing of the Paris Convention, petitioners
cannot claim protection from it. Complaint for infringement is dismissed. The new
Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly shows the firm resolve
of the Philippines to observe and follow the Paris Convention by incorporating the relevant
portions of the Convention such that persons who may question a mark (that is, oppose
registration, petition for the cancellation thereof, sue for unfair competition) include persons
whose internationally well-known mark, whether or not registered, is identical with or
confusingly similar to or constitutes a translation of a mark that is sought to be registered or
is actually registered.
Conrad and Company, Inc. v. CA, et.al., G.R. No. 115115, July 18, 1995
Facts:
The respondents Fitrite, Inc. and its sister company, Victoria Biscuit Co., Inc. are domestic
corporations engaged in the business of manufacturing, selling and distributing biscuits and
cookies. Their products bear the trademark "SUNSHINE" in the Philippines which was
awarded by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) listing
Fitrite as principal registrant.
Since May 20, 1983 when Fitrite was issued the Certificate of Registration for its trademark to
the filing of its complaint against Conrad Company Inc., Fitrite and Victoria Biscuit have been
manufacturing, selling and distributing on a massive scale biscuits and cookies bearing the
"Sunshine" trademark making it popular in Metro Manila and in the provinces.
On May 30, 1990, Conrad's own Import Manager and Executive Assistant, Raul Olaya,
executed an affidavit stating that Conrad had also been importing, selling and distributing
biscuits and cookies, and other items bearing the same trademark as Fitrite and Victoria's. It
was traced by the mentioned domestic corporations that on April 18, 1988, Conrad was
designated as an exclusive importer and dealer of the products of "Sunshine Biscuits, Inc." for
sale in the Philippine market.
A few days later, Conrad started its first importation and continuously did so. Through their
counsel, Fitrite and Victoria addressed a letter to Conrad demanding that it cease and desist
from continuing its operation and use of the subject trademark, but was ignored. This led
Fitrite and Victoria to file a complaint against Conrad for infringement and unfair
competition. Conrad sought to dismiss the complaint by invoking litis pendentia, the doctrine
of primary jurisdiction, and failure to state a cause of action. Conrad argued that it has been
granted distributorship by Sunshine Biscuits USA over the Philippine territory, and so, it
follows that the basis of Fitrite and Victoria's claim is lodged under the exclusive jurisdiction
of the BPTTT. The trial court found merit on the motion to dismiss the complaint.
Fitrite and Victoria filed a motion for reconsideration, but was denied by the lower court. The
Court of Appeals, however, found merit on their claims and reinstated the complaint. Hence,
this petition by Conrad praying that the Civil Case for "Injunction with Damages with Prayer
for Preliminary Injunction" based on infringement and unfair competition filed by Fitrite and
Victoria be dismissed.
Issue: Whether or not Fitrite and Victoria’s civil action against Conrad which was based on
infringement and unfair competition be dismissed because of the doctrine of litis pendentia.
Ruling:
No, the petition is without merit.An application for administrative cancellation of a registered
trademark on any of the
grounds enumerated in Section 17 of R.A. No. 166 or the Trade-Mark Law, as amended, falls
under the exclusive jurisdiction of BPTTT. But, for infringement or unfair competition, as well
as the remedy of injunction and relief for damages, it is explicitly and unquestionably within
the competence and jurisdiction of ordinary courts. As held in an earlier decision by the
Supreme Court, that the registration in the Principal Register gives rise to a presumption of
validity of the registration and of the registrant's ownership and right to the exclusive use of
the mark. Such registration can serve as the basis for an action of infringement which entitles
the registrant whose right was invaded for court protection and relief.
Section 23 and Section 27 of Chapter V, of the Trade-Mark Law provides:
Sec. 23. Actions, and damages and injunction for infringement. — Any person entitled to the
exclusive use of a registered mark or trade-name may recover damages in a civil action from
any person who infringes his rights, and the measure of the damages suffered shall be either
the reasonable profit which the complaining party would have made, had the defendant not
infringe his said rights, or the profit which the defendant actually made out of the
infringement, or in the event such measure of damages cannot be readily ascertained with
reasonable certainty, then the court may award as damages a reasonable percentage based
upon the amount of gross sales of the defendant or the value of the services in connection
with which the mark or trade-name was used in the infringement of the rights of the
complaining party. In cases where actual intent to mislead the public or to defraud the
complaining party shall be shown, in the discretion of the court, the damages may be
doubled.
The complaining party, upon proper showing, may also be granted injunction.
LEVITON INDUSTRIES, NENA DE LA CRUZ LIM, DOMINGO GO, and LIM KIAT vs. HON.
SERAFIN SALVADOR, Judge, Court of First Instance of Rizal, Caloocan City, Branch XIV and
LEVITON MANUFACTURING CO., INC.
G.R. No. L-40163 June 19, 1982
Facts:
Private respondent Leviton Manufacturing Co. Inc. filed a complaint for unfair competition
against petitioners Leviton Industries before the CFI of Rizal (RTC), presided by respondent Judge
Serafin Salvador. The complaint substantially alleges that plaintiff (Leviton Manufacturing) is a
foreign corporation organized and existing under the laws of the State of New York, United States
of America with office located at 236 Greenpoint Avenue, Brooklyn City, State of New York, U.S.A.
That defendant Leviton Industries is a partnership organized and existing under the laws of the
Philippines with principal office at 382 10th Avenue, Grace Park, Caloocan City; while defendants
Nena de la Cruz Lim, Domingo Go and Lim Kiat are the partners, with defendant Domingo Go
acting as General Manager of defendant Leviton Industries. That plaintiff, founded in 1906 by
Isidor Leviton, is the largest manufacturer of electrical wiring devices in the United States under
the trademark Leviton, which various electrical wiring devices bearing the trademark Leviton
and trade name Leviton Manufacturing Co., Inc. had been exported to the Philippines since 1954;
that due to the superior quality and widespread use of its products by the public, the same are
well known to Filipino consumers under the trade name Leviton Manufacturing Co., Inc. and
trademark Leviton; that long subsequent to the use of plaintiff’s trademark and trade name in the
Philippines, defendants (Leviton Industries) began manufacturing and selling electrical ballast,
fuse and oval buzzer under the trademark Leviton and trade name Leviton Industries Co.
That Domingo Go, partner and general manager of defendant partnership, had registered with
the Philippine Patent Office the trademarks Leviton Label and Leviton with respect to ballast and
fuse under Certificate of Registration Nos. SR-1132 and 15517, respectively, which registration
was contrary to paragraphs (d) and (e) of Section 4 of RA 166, as amended, and violative of
plaintiff’s right over the trademark Leviton; that defendants not only used the trademark Leviton
but likewise copied the design used by plaintiff in distinguishing its trademark; and that the use
thereof by defendants of its products would cause confusion in the minds of the consumers and
likely to deceive them as to the source of origin, thereby enabling defendants to pass off their
products as those of plaintiff’s. Invoking the provisions of Section 21-A of Republic Act No. 166,
plaintiff prayed for damages. It also sought the issuance of a writ of injunction to prohibit
defendants from using the trade name Leviton Industries, Co. and the trademark Leviton.
Defendants moved to dismiss the complaint for failure to state a cause of action, drawing
attention to the plaintiff’s failure to allege therein its capacity to sue under Section 21-A of
Republic Act No. 166, as amended. After the filing of the plaintiff’s opposition and the defendant’s
reply, the respondent judge denied the motion on the ground that the same did not appear to be
indubitable.
The motion for reconsideration having likewise been denied, defendants instituted the instant
petition for certiorari and prohibition, charging respondent judge with grave abuse of discretion
in denying their motion to dismiss.
Issue:Whether or not the plaintiff (Leviton Manufacturing) herein respondents, failed to allege the
essential facts bearing its capacity to sue before Philippine courts.
Held:
Yes.
We agree with petitioners that respondent Leviton Marketing Co., Inc. had failed to allege the
essential facts bearing upon its capacity to sue before Philippine courts. Private respondent’s
action is squarely founded on Section 21-A of Republic Act No. 166, as amended, which we quote:
Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has been
registered or assigned under this Act may bring an action hereunder for infringement, for unfair
competition, or false designation of origin and false description, whether or not it has been
licensed to do business in the Philippines under Act numbered Fourteen Hundred and Fifty-Nine,
as amended, otherwise known as the Corporation Law, at the time it brings the complaint;
Provided, That the country of which the said foreign corporation or juristic person is a citizen, or
in which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or
juristic persons of the Philippines. (As amended by R.A. No. 638)
Undoubtedly, the foregoing section grants to a foreign corporation, whether or not licensed to do
business in the Philippines, the right to seek redress for unfair competition before Philippine
courts. But the said law is not without qualifications. Its literal tenor indicates as a condition sine
qua non the registration of the trade mark of the suing foreign corporation with the Philippine
Patent Office or, in the least, that it be an asignee of such registered trademark. The said section
further requires that the country, of which the plaintiff foreign corporation or juristic person is a
citizen or domicilliary, grants to Filipino corporations or juristic entities the same reciprocal
treatment, either thru treaty, convention or law,
All that is alleged in private respondent’s complaint is that it is a foreign corporation. Such bare
averment not only fails to comply with the requirements imposed by the aforesaid Section 21-A
but violates as well the directive of Section 4, Rule 8 of the Rules of Court that “facts showing the
capacity of a party to sue or be sued or the authority of a party to sue or be sued in a
representative capacity or the legal existence of an organized association of persons that is made
a party, must be averred ”
In the case at bar, private respondent has chosen to anchor its action under the Trademark Law of
the Philippines, a law which, as pointed out, explicitly sets down the conditions precedent for the
successful prosecution thereof. It is therefore incumbent upon private respondent to comply with
these requirements or aver its exemption therefrom, if such be the case. It may be that private
respondent has the right to sue before Philippine courts, but our rules on pleadings require that
the necessary qualifying circumstances which clothe it with such right be affirmatively pleaded.
And the reason therefor, as enunciated in “Atlantic Mutual Insurance Co., et al. versus Cebu
Stevedoring Co., Inc.” 4 is that —
these are matters peculiarly within the knowledge of appellants alone, and it would be unfair to
impose upon appellees the burden of asserting and proving the contrary. It is enough that foreign
corporations are allowed by law to seek redress in our courts under certain conditions: the
interpretation of the law should not go so far as to include, in effect, an inference that thoseconditions
had been met from the mere fact that the party sued is a foreign corporation.
It was indeed in the light of this and other considerations that this Court has seen fit to amend the
former rule by requiring in the revised rules (Section 4, Rule 8) that “facts showing the capacity of
a party to sue or be sued or the authority of a party to sue or be sued in a representative capacity
or the legal existence of an organized association of persons that is made a party, must be
averred,
IN VIEW OF THE FOREGOING, the instant petition is hereby granted and, accordingly, the order of
the respondent judge dated September 27, 1974 denying petitioner’s motion to dismiss is hereby
set aside. The Court of First Instance of Rizal (Caloocan City), the court of origin, is hereby
restrained from conducting further proceedings in Civil Case No. C-2891, except to dismiss the
same. No costs
General Garments vs. Director of Patents
Facts:
The General Garments Corporation, organized and existing under the laws of the Philippines,
is the owner of the trademark "Puritan.” Puritan Sportswear Corporation, organized and
existing in and under the laws of the state of Pennsylvania, U.S.A., filed a petition with the
Philippine Patent Office for the cancellation of the trademark "Puritan" registered in the name
of General Garments Corporation, alleging ownership and prior use in the Philippines of the
said trademark on the same kinds of goods, which use it had not abandoned; and alleging
further that the registration thereof by General Garments Corporation had been obtained
fraudulently and in violation of Section 17(c) of Republic Act No. 166, as amended, in relation
to Section 4(d) thereof. On March 30, 1964 General Garments Corporation moved to dismiss
the petition.
Issue:
Whether or not Puritan Sportswear Corporation, which is a foreign corporation not licensed
to do business and not doing business in the Philippines, has legal capacity to maintain a suit
in the Philippine Patent Office for cancellation of a trademark registered therein.
Ruling:
Yes. Respondent is not suing in our courts "for the recovery of any debt, claim or demand,"
for which a license to transact business in the Philippines is required by Section 69 of the
Corporation Law, subject only to the exception already noted. The purpose of such a suit is to
protect its reputation, corporate name and goodwill which has been established, through the
natural development of its trade for a long period of years, in the doing of which it does not
seek to enforce any legal or contract rights arising from, or growing out of any business
which it has transacted in the Philippine Islands. The right to the use of the corporate or trade
name is a property right, a right in rem, which it may assert and protect in any of the courts of
the world even in jurisdictions where it does not transact business just the same as it may
protect its tangible property, real or personal against trespass or conversion. A foreign
corporation is allowed there under to sue "whether or not it has been licensed to do business
in the Philippines" pursuant to the Corporation Law. In any event, respondent in the present
case is not suing for infringement or unfair competition under Section 21- A, but for
cancellation under Section 17, on one of the grounds enumerated in Section 4. And while a
suit under Section 21-A requires that the mark or tradename alleged to have been infringed
has been "registered or assigned" to the suing foreign corporation, a suit for cancellation of
the registration of a mark or tradename under Section 17 has no such requirement. For such
mark or tradename should not have been registered in the first place (and consequently may
be cancelled if so registered) if it "consists of or comprises a mark or tradename which so
resembles a mark or tradename previously used in the Philippines by another and not
abandoned, as to be likely, when applied to or used in connection with goods, business or
services of the applicant, to cause confusion or mistake or to deceive purchasers.
PHILLIPS EXPORT VS CA
Facts:
Philips Export B.V. (PEBV) filed with the SEC for the cancellation of the word “Philips” the
corporate name of Standard Philips Corporation in view of its prior registration with the
Bureau of Patents and the SEC. However, Standard Philips refused to amend its Articles of
Incorporation so PEBV filed with the SEC a petition for the issuance of a Writ of Preliminary
Injunction, however this was denied ruling that it can only be done when the corporate
names are identical and they have at least 2 words different. This was affirmed by the SEC en
banc and the Court of Appeals thus the case at bar.
Issue:
Whether or not Standard Philips can be enjoined from using Philips in its corporate name
Ruling:
A corporation’s right to use its corporate and trade name is a property right, a right in rem,
which it may assert and protect against the whole world. According to Sec. 18 of the
Corporation Code, no corporate name may be allowed if the proposed name is identical or
deceptively confusingly similar to that of any existing corporation or to any other name
already protected by law or is patently deceptive, confusing or contrary to existing law.
For the prohibition to apply, 2 requisites must be present:
(1) the complainant corporation must have acquired a prior right over the use of such
corporate name and
(2) the proposed name is either identical or deceptively or confusingly similar to that of any
existing corporation or to any other name already protected by law or patently deceptive,
confusing or contrary to existing law.
With regard to the 1st requisite, PEBV adopted the name “Philips” part of its name 26 years
before Standard Philips. As regards the 2nd, the test for the existence of confusing similarity
is whether the similarity is such as to mislead a person using ordinary care and
discrimination. Standard Philips only contains one word, “Standard”, different from that of
PEBV. The 2 companies’ products are also the same, or cover the same line of products.
Although PEBV primarily deals with electrical products, it has also shipped to its subsidiaries
machines and parts which fall under the classification of “chains, rollers, belts, bearings and
cutting saw”, the goods which Standard Philips also produce. Also, among Standard Philips’primary
purposes are to buy, sell trade x x x electrical wiring devices, electrical component,
electrical supplies. Given these, there is nothing to prevent Standard Philips from dealing in
the same line of business of electrical devices. The use of “Philips” by Standard Philips tends
to show its intention to ride on the popularity and established goodwill of PEBV
COFFEE PARTNERS V. SAN FRANCISCO COFFEE & ROASTERY (G.R. NO. 169504)
Facts:
Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to
operate coffee shops in the country using the trademark ‘San Francisco Coffee.’ Respondent
on the other hand, is a local corporation engaged in the wholesale and retail sale of coffee and
uses the business name ‘San Francisco Coffee & Roastery’ registered with the DTI. Later,
respondent filed an infringement and/or unfair competition complaint against petitioner
alleging that the latter was about to open a coffee shop under the name ‘San Francisco Coffee’
causing confusion in the minds of the public as it bore a similar name and is engaged also in
selling of coffee. Petitioner contended no infringement would arise because respondent’s
tradename was not registered.
Issue:
Whether or not petitioner’s trademark would infringe respondent’s tradename.
Ruling:
YES. In Prosource International, Inc. v. Horphag Research Management SA, this Court laid
down what constitutes infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended
to be used upon or in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to the
source or origin of such goods or services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.
RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected,
even prior to or without registration with the IPO, against any unlawful act including any
subsequent use of the trade name by a third party, whether as a trade name or a trademark
likely to mislead the public.
It is the likelihood of confusion that is the gravamen of infringement. Applying the
dominancy test or the holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark is aclear
infringement of respondent’s “SAN FRANCISCO COFFEE & ROASTERY, INC.” trade
name. The descriptive words “SAN FRANCISCO COFFEE” are precisely the dominant
features of respondent’s trade name. Petitioner and respondent are engaged in the same
business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in
cases where the business of one corporation is the same or substantially the same as that of
another corporation. In this case, the consuming public will likely be confused as to the
source of the coffee being sold at petitioner’s coffee shops
PRO LINE SPORTS CENTER, INC., and QUESTOR CORPORATION, petitioners, vs. COURT OF
APPEALS, UNIVERSAL ATHLETICS INDUSTRIAL PRODUCTS, INC., and MONICO
SEHWANI,
respondents.
Facts:
After the prosecution rested its case, Sehwani filed a demurrer to evidence arguing that the act of
selling the manufactured goods was an essential and constitutive element of the crime of unfair
competition under Art. 189 of the Revised Penal Code, and the prosecution was not able to prove
that he sold the products. In its Order of 12 January 1981 the trial court granted the demurrer
and dismissed the charge against Sehwani.
The existence of probable cause for unfair competition by UNIVERSAL is derivable from the facts
and circumstances of the case. The affidavit of Graciano Lacanaria, a former employee of
UNIVERSAL, attesting to the illegal sale and manufacture of "Spalding" balls and seized "Spalding"
products and instruments from UNIVERSAL's factory was sufficient prima facie evidence to
warrant the prosecution of private respondents. That a corporation other than the certified
owner of the trademark is engaged in the unauthorized manufacture of products bearing the
same trademark engenders a reasonable belief that a criminal offense for unfair competition is
being committed.
Petitioners PRO LINE and QUESTOR could not have been moved by legal malice in instituting the
criminal complaint for unfair competition which led to the filing of the Information against
Sehwani. Malice is an inexcusable intent to injure, oppress, vex, annoy or humiliate. We cannot
conclude that petitioners were impelled solely by a desire to inflict needless and unjustified
vexation and injury on UNIVERSAL's business interests. A resort to judicial processes is not per
se evidence of ill will upon which a claim for damages may be based. A contrary rule would
discourage peaceful recourse to the courts of justice and induce resort to methods less than legal,
and perhaps even violent.
Issue:
Whether or not the respondent is liable of unfair competition.
Held:
Yes. We are more disposed, under the circumstances, to hold that PRO LINE as the authorized
agent of QUESTOR exercised sound judgment in taking the necessary legal steps to safeguard the
interest of its principal with respect to the trademark in question. If the process resulted in the
closure and padlocking of UNIVERSAL's factory and the cessation of its business operations, these
were unavoidable consequences of petitioners' valid and lawful exercise of their right. One who
makes use of his own legal right does no injury. Qui jure suo utitur nullum damnum facit. If
damage results from a person's exercising his legal rights, it is damnum absque injuria.
Admittedly, UNIVERSAL incurred expenses and other costs in defending itself from the
accusation. But, as Chief Justice Fernando would put it, "the expenses and annoyance of litigation
form part of the social burden of living in a society which seeks to attain social control through
law." Thus we see no cogent reason for the award of damages, exorbitant as it may seem, in favor
of UNIVERSAL. To do so would be to arbitrarily impose a penalty on petitioners' right to litigate.The
criminal complaint for unfair competition, including all other legal remedies incidental
thereto, was initiated by petitioners in their honest belief that the charge was meritorious. For
indeed it was. The law brands business practices which are unfair, unjust or deceitful not only as
contrary to public policy but also as inimical to private interests. In the instant case, we find quite
aberrant Sehwani's reason for the manufacture of 1,200 "Spalding" balls, i.e., the pending
application for trademark registration of UNIVERSAL with the Patent Office, when viewed in the
light of his admission that the application for registration with the Patent Office was filed on 20
February 1981, a good nine (9) days after the goods were confiscated by the NBI. This apparently
was an afterthought but nonetheless too late a remedy. Be that as it may, what is essential for
registrability is proof of actual use in commerce for at least sixty (60) days and not the capability
to manufacture and distribute samples of the product to clients.
Arguably, respondents' act may constitute unfair competition even if the element of selling has
not been proved. To hold that the act of selling is an indispensable element of the crime of unfair
competition is illogical because if the law punishes the seller of imitation goods, then with more
reason should the law penalize the manufacturer. In U. S. v. Manuel, the Court ruled that the test
of unfair competition is whether certain goods have been intentionally clothed with an
appearance which is likely to deceive the ordinary purchasers exercising ordinary care. In this
case, it was observed by the Minister of Justice that the manufacture of the "Spalding" balls was
obviously done to deceive would-be buyers. The projected sale would have pushed through were
it not for the timely seizure of the goods made by the NBI. That there was intent to sell or
distribute the product to the public cannot also be disputed given the number of goods
manufactured and the nature of the machinery and other equipment installed in the factory.
In-N-Out Burger vs. Sehwani, Incorporated and/or Benita’s Fries, Inc
Facts:
Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of US,
which is a signatory to the Convention of Paris on Protection of Industrial Property and the
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Petitioner is
engaged mainly in the restaurant business, but it has never engaged in business in the
Philippines. Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations
organized in the Philippines. On 2 June 1997, petitioner filed trademark and service mark
applications with the Bureau of Trademarks (BOT) of the IPO for "IN-N-OUT" and "IN-N-
OUT Burger & Arrow Design." Petitioner later found out, through the Official Action Papers
issued by the IPO on 31 May 2000, that respondent Sehwani, Incorporated had already
obtained Trademark Registration for the mark "IN N OUT (the inside of the letter "O" formed
like a star)." Petitioner eventually filed on 4 June 2001 before the Bureau of Legal Affairs
(BLA) of the IPO an administrative complaint against respondents for unfair competition and
cancellation of trademark registration. Respondents asserted therein that they had been using
the mark "IN N OUT" in the Philippines since 15 October 1982. Respondent then filed with
the BPTTT an application for the registration of the mark. BPTTT approved its application
and issued the corresponding certificate of registration in favor of the respondent. On Dec 22,
2003, IPO Director of Legal Affairs rendered a decision in favor of petitioner stating petitioner
had the right to use its tradename and mark in the Philippines to the exclusion of others.
However, the decision also includes that respondent is not guilty of unfair competition. Upon
appeal by petitioner, the new IPO Director General declared that respondents were guilty of
unfair competition on December 23, 2005. On 18 July 2006, the Court of Appeals promulgated
a Decision reversing the Decision dated 23 December 2005 of the IPO Director General. The
appellate court declared that Section 163 of the Intellectual Property Code specifically confers
upon the regular courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases
involving provisions of the Intellectual Property Code, particularly trademarks. Hence, the
present petition.
Issues:
(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving unfair
competition
(2) Whether respondent Sehwani is liable of unfair competition
Ruling:
(1) Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the
concurrent jurisdiction of civil courts and the IPO over unfair competition cases. Therefore,
the IPO Director of Legal Affairs have jurisdiction to decide the petitioner's administrative
case against respondents and the IPO Director General have exclusive jurisdiction over the
appeal of the judgment of the IPO Director of Legal Affairs.(2) Yes. The evidence on record shows that
the respondents were not using their registered
trademark but that of the petitioner. Further, respondents are giving their products the
general appearance that would likely influence purchasers to believe that these products are
those of the petitioner. The intention to deceive may be inferred from the similarity of the
goods as packed and offered for sale, and, thus,
action will lie to restrain such unfair competition. Also, respondent’s use of IN-N-OUT
BURGER in businesses signages reveals fraudulent intent to deceive purchasers. The essential
elements of an action for unfair competition are 1) confusing similarity in the general
appearance of the goods and (2) intent to deceive the public and defraud a competitor.
ANGELITA MANZANO,
petitioner, vs
. COURT OF APPEALS, and MELECIA MADOLARIA, asAssignor to NEW UNITED
FOUNDRY MANUFACTURING CORPORATION,
respondents
.
FACTS:
The petitioner filed an action for the cancellation of Letters of Patent covering a gasburner
registered in the name of responded Melecia Madolaria who subsequently assigned theletter
of patent to United Foundry. Petitioner alleged that the private respondent was not
theoriginal, true and actual inventor nor did she derive her rights from the original, true
and actualinventor of the utility model covered by the letter of patent; further alleged that the
utilitymodel covered by the subject letter of patent had been known or used by others in
thePhilippines for than one (1) year before she filed her application for letter of patent on
Dec1979. 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:
Whether or not 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 andcogent
evidence that the patentee was the original and first inventor. The burden of provingwant of
novelty is on him who avers it and the burden is a heavy one which is met only by clearand
satisfactory proof which overcomes every reasonable doubt. Clearly enough,
the petitionerfailed to present clear and satisfactory proof to overcome every reasonable
doubt to afford thecancellation of the patent to the private respondent.Creser Precision Systems Inc. v
CA and Floro International Co. GR NO. 118708, February 2, 1998
Facts:
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner submitted samples of its patented aerial fuze to the
AFP for testing claiming to be his own. To protect its right, respondent sent letter of warning
to petitioner on a possible court action should it proceed its testing by the AFP. In response
the petitioner filed a complaint for injunction and damages arising from alleged infringement
before the RTC asserting that it is the true and actual inventor of the aerial fuze which it
developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It has been
supplying the military of the aerial fuze since then and that the fuze of the respondent is
similar as that of the petitioner. Petitioner prayed for restraining order and injunction from
marketing, manufacturing and profiting from the said invention by the respondent. The trial
court ruled in favor of the petitioner citing the fact that it was the first to develop the aerial
fuze since 1981 thsu it concludes that it is the petitioner’s aerial fuze that was copied by the
respondent. Moreover, the claim of respondent is solely based on its letter of patent which
validity is being questioned. On appeal, respondent argued that the petitioner has no cause of
action since he has no right to assert there being no patent issued to his aerial fuze. The Court
of Appeals reversed the decision of the trial court dismissing the complaint of the petitioner.
It was the contention of the petitioner that it can file under Section 42 of the Patent Law an
action for infringement not as a patentee but as an entity in possession of a right, title or
interest to the patented invention. It theorizes that while the absence of a patent prevents one
from lawfully suing another for infringement of said patent, such absence does not bar the
true and actual inventor of the patented invention from suing another in the same nature as a
civil action for infringement.Issue:
Whether or not the petitioner has the right to assail the validity of the patented work of the
respondent?
Ruling:
The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA
165) provides that only the patentee or his successors-in-interest may file an action against
infringement. What the law contemplates in the phrase “anyone possessing any right, title or
interest in and to the patented invention” refers only to the patentee’s successors-in-interest,
assignees or grantees since the action on patent infringement may be brought only in the
name of the person granted with the patent. There can be no infringement of a patent until a
patent has been issued since the right one has over the invention covered by the patent arises
from the grant of the patent alone. Therefore, a person who has not been granted letter of
patent over an invention has not acquired right or title over the invention and thus has no
cause of action for infringement. Petitioner admitted to have no patent over his
invention. Respondent’s aerial fuze is covered by letter of patent issued by the Bureau of
Patents thus it has in his favor not only the presumption of validity of its patent but that of a
legal and factual first and true inventor of the invention.
Graham v John Deere Co. of Kansas City 383 US 1, 1966
Synopsis of Rule of Law.: A case-by-case analysis of the scope and content of the prior art, the
differences between the prior art and the claims at issue, as well as the level of ordinary skill in the
applicable art, are required to determine the non-obviousness of a claimed invention as to a prior art.

Facts:
Graham (Plaintiff) filed suit against Defendant claiming patent infringement on a device which
consisted of old mechanical elements that absorbed shock from plow shanks as they plowed through
rocky soil. In a prior case, The Fifth Circuit held that a patent was valid, ruling that a combination was
eligible for patent when it produced an "old result in a cheaper and otherwise more advantageous way."
The Eighth Circuit said the patent was invalid in the present case as there was no new result or
combination. Plaintiff petitioned for certiorari, and the Supreme Court granted the request in order to
resolve the conflict.

Issue:
Is a case-by-case analysis required of the scope and content of the prior art, the differences between the
prior art and the claims at issue, as well as the level of ordinary skill in the applicable art to determine
the non-obviousness of a claimed invention as to prior art.
Maguan vs CA 146 SCRA 107
FACTS:Petitioner is doing business under the firm nameand style of SWAN MANUFACTURING"
while privaterespondent is likewise doing business under the firm nameand style of "SUSANA
LUCHAN POWDER PUFFMANUFACTURING.” And holderpetitioner informed private respondent
that thepowder puffs the latter is manufacturing and selling tovarious enterprises particularly those in
the cosmeticsindustry, resemble Identical or substantially Identicalpowder puffs of which the former is
a patent holder underRegistration Certification Nos. Extension UM-109, ExtensionUM-110 and Utility
Model No. 1184; petitioner explainedsuch production and sale constitute infringement of saidpatents
and therefore its immediate discontinuance isdemanded, otherwise it will be compelled to take
judicialactionPrivate respondent replied stating that herproducts are different and countered that
petitioner'spatents are void because the utility models applied for werenot new and patentable and the
person to whom thepatents were issued was not the true and actual author norwere her rights derived
from such author.Petitioner filed a complaint for damages withinjunction and preliminary injunction
against privaterespondent with the then Court of First Instance of Rizal The trial court issued an Order
granting thepreliminary injunction prayed for by petitioner.Consequently, the corresponding writ was
subsequentlyissued.In challenging these Orders private respondentfiled a petition for certiorari with the
respondent court butwas denied. Hence this petition.ISSUE:(1) Whether or not in an action for
infringement the Court
aquo
had jurisdiction to determine the invalidity of thepatents at issue which invalidity was still
pendingconsideration in the patent office.

HELD:1) The first issue has been laid to rest in a number of caseswhere the Court ruled that "When a
patent is sought to be enforced, the questions of invention, novelty or prior use,and each of them, are
open to judicial examination."Under the present Patent Law, there is even lessreason to doubt that the
trial court has jurisdiction todeclare the patents in question invalid. A patentee shallhave the exclusive
right to make, use and sell the patentedarticle or product and the making, using, or selling by anyperson
without the authorization of the patentee constitutesinfringement of the patent (Sec. 37, R.A. 165). Any
patenteewhose rights have been infringed upon may bring an actionbefore the proper CFI now (RTC)
and to secure an injunctionfor the protection of his rights.
Creser Precision System vs. Court of Appeals
Facts:
Petitioner claim it can file, under Section 42 of the Patent Law (R.A. 165),an action for
infringement not as a patentee but as an entity in possession of a right, title or interest in and
to the patented invention. It advances the theory that while the absence of a patent may
prevent one from lawfully suing another for infringement of said patent, such absence does
not bar the first true and actual inventor of the patented invention from suing another who
was granted a patent in a suit for declaratory or injunctive relief recognized under American
patent laws. This remedy, petitioner points out, may be likened to a civil action for
infringement under Section 42 of the Philippine Patent Law. Private respondent Floro
International submitted its memorandum alleging that petitioner has no cause of action to file
a complaint for infringement against it since Creser has no patent for the aerial fuze which it
claims to have invented; that petitioner's available remedy is to file a petition for cancellation
of patent before the Bureau of Patents; that private respondent as the patent holder cannot be
stripped of its property right over the patented aerial fuze consisting of the exclusive right to
manufacture, use and sell the same and that it stands to suffer irreparable damage and injury
if it is enjoined from the exercise of its property rights over its patent.
Issue:
Whether Creser can file an action for infringement being not as patentee.
Ruling:
NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
Sec. 42 Civil action for infringement. Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights have been infringed, may bring a civil
action before the proper Court of First Instance (now Regional Trial court), to recover from
the infringer damages sustained by reason of the infringement and to secure an injunction for
the protection of his right. Under the aforequoted law, only the patentee or his successors-in-
interest may file an action for infringement. The phrase "anyone possessing any right, title or
interest in and to the patented invention " upon which petitioner maintains its present suit,
refers only to the patentee's successors-in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name of the person or persons interested,
whether as patentee, assignees, or as grantees, of the exclusive right. Petitioner admits it has
no patent over its aerial fuze. Therefor e, it has no legal basis or cause of action to institute the
petition for injunction and damages arising from the alleged infringement by private
respondent.
Godines vs. Court of Appeals
Facts:
Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz
which covers a utility model for hand tractor or power tiller by virtue of a deed of assignment
executed by the latter in its favor. Respondent after suffering a decline in sales of the patented
power tillers, investigated and discovered that petitioner Godines was manufacturing the
same power tillers as they have. Respondent thus filed a complaint for patent infringement
and unfair competition against petitioner Godines. The trial court held petitioner liable for
infringement. CA affirmed.
Issue:
Whether or not petitioner’s products infringe upon the patent of respondent SV-Agro.
Ruling:
Yes. Tests have been established to determine infringement. These are ;(a) literal
infringement; and (b) the doctrine of equivalents. In using literal infringement as a test,
“resort must be had, in the first instance, to the words of the claim. If accused matter clearly
falls within the claim, infringement is made out and that is the end of it.” To determine
whether the particular item falls within the literal meaning of the patent claims, the court
must juxtapose the claims of the patent and the accused product within the overall context of
the claims and specifications, to determine whether there is exact identity of all material
elements. It appears from the observation of the trial court that these claims of the patent and
the features of the patented utility model were copied by petitioner: In appearance and form,
both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are
virtually the same. Viewed from any perspective or angle, the power tiller of the defendant is
identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design
and appearance. The parts or components thereof are virtually the same. In operation, the
floating power tiller of the defendant operates also in similar manner as the turtle power tiller
of plaintiff. Petitioner’s argument that his power tillers were different from private
respondent’s is that of a drowning man clutching at straws. Recognizing that the logical
fallback position of one in the place of defendant is to aver that his product is different from
the patented one, courts have adopted the doctrine of equivalents. Thus, according to this
doctrine, “(a)n infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the
same result.” In this case, the trial court observed: But a careful examination between the two
power tillers will show that they will operate on the same fundamental principles. The court
arrive at no other conclusion but that there was infringement.
Smith Kline Beckman Corp
Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued
to it for its invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity
Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.” The invention is a means to fight off
gastrointestinal parasites from various cattles and pet animals.

Tryco Pharma is a local corporation engaged in the same business as Smith Kline.

Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon
which contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms,
tapeworms and fluke infestation in carabaos, cattle and goats.

Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same
as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant
to combat worm or parasite infestation in animals. And that Albendazole is actually patented under
Smith Kline in the US.

Tryco Pharma averred that nowhere in Smith Kline’s patent does it mention that Albendazole is present
but even if it were, the same is “unpatentable”.

Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances
substantially do the same function in substantially the same way to achieve the same results, thereby
making them truly identical for in spite of the fact that the word Albendazole does not appear in Tryco
Paharma’s letters of patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-
benzimidazole carbamate.

ISSUE: Whether or not there is patent infringement in this case

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented
invention. Nowhere in the patent is the word Albendazole found. When the language of its claims is
clear and distinct, the patentee is bound thereby and may not claim anything beyond them. Further,
there was a separate patent for Albendazole given by the US which implies that Albendazole is indeed
separate and distinct from the patented compound here.

A scrutiny of Smith Kline’s evidence fails to prove the substantial sameness of the patented compound
and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity
of result does not amount to infringement of patent unless Albendazole operates in substantially the
same way or by substantially the same means as the patented compound, even though it performs the
same function and achieves the same result. In other words, the principle or mode of operation must be
the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee
having the burden to show that all three components of such equivalency test are met.
Roberto Del Rosario vs. Court of Appeals
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.
Ruling:
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.
KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by GEMMA
DEMORAL-SAVAGE vs. JUDGE APRONIANO B. TAYPIN, Presiding Judge, RTC-BR. 12, Cebu
City,
CEBU PROVINCIAL PROSECUTOR'S OFFICE, NATIONAL BUREAU OF INVESTIGATION,
Region VII, Cebu City, JUANITA NG MENDOZA, MENDCO DEVELOPMENT CORPORATION,
ALFREDO SABJON and DANTE SOSMEÑA
FACTS:
Petitioners Savage, seek to nullify the search warrant issued by respondent Judge Aproniano
B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the seizure of
certain pieces of wrought iron furniture from the factory of petitioners located in Biasong,
Talisay, Cebu.
The complaint was lodged by private respondent Eric Ng Mendoza, president and general
manager of Mendco Development Corporation (MENDCO), alleging that Savage’s products
are the object of unfair competition involving design patents, punishable under Art. 189 of the
Revised Penal Code as amended. Savage contends however, that there was no existence of
offense leading to the issuance of a search warrant and eventual seizure of its products.
ISSUE:
Whether or not unfair competition involving design patents are punishable under Article 189
of the Revised Penal Code.
HELD:
To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The repealing
clause of
the IPC provides that Articles 188 and 189 of the Revised Penal Code (RPC), Presidential Decree No.
49, are
hereby repealed The issue involving the existence of "unfair competition" as a felony involving design
patents, referred to in Art. 189 of the Revised Penal Code, has been rendered moot and academic by the
repeal of the article. Hence, the search warrant cannot even be issued by virtue of a possible violation
of the
IPR Code.
There is no mention of any crime of "unfair competition" involving design patents in the
controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the
crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189
of the Revised Penal Code.
The court is are prevented from applying these principles, along with the new provisions on
Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts
constitute patent infringement as defined by the same CodeAlthough the case traces its origins to the
year 1997 or before the enactment of the IPR Code,
Article 22 of the Revised Penal Code provides that penal laws shall be applied
retrospectively, if such application would be beneficial to the accused. Since the IPR Code
effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then
RPC provisions must be applied.
Parke Davis & Co. vs Doctors' Pharmaceutical 14 scra 1053 (1965)
FACTS:

Parke Davies and Company is an owner of a Patent entitled "Process for the Manufacturing of
Antibiotics" (Letters Patent No. 50) which was issued by the Philippine Patent Office on February 9,
1950. The patent relates to a chemical compound represented by a formula commonly called
chloramphenicol. The patent contains ten claims, nine of which are process claims, and the other is a
product claim to the chemical substance chloramphenicol.

Doctors’ Pharmaceuticals Inc. requested that it be granted a voluntary license to manufacture and
produce our own brand of medicine, containing chloramphenicol, and to use, sell, distribute, or
otherwise dispose of the same in the Philippines under such terms and conditions as may be deemed
reasonable and mutually satisfactory, which Parke Davies declined.

Doctors’ Pharmaceuticals Inc. filed a petition with the Director of Patents requesting the Director to
grant a compulsory license. After careful evaluation and hearings, the Director granted the request of
Doctors’ Pharmaceuticals.

ISSUE:

Is the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license
to use the substance chloramphenicol, valid?

HELD:

Yes the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license
to use the substance chloramphenicol is valid. The Supreme Court says that patents issued to foods and
medicines are not exclusive so as not to prevent the building up of patent monopolies. Public benefit is
foremost. The Court dismissed the contention of Parke Davies that the Director of Patents erred in
granting compulsory license. The decision appealed from is affirmed, with costs against petitioner.