II. PATENTS
165, as amended provides: “ Any invention of a new and useful
1. PATENTABLE INVENTIONS
Aguas vs. De Leon
111 SCRA 238 (1982)
FACTS:
This is a petition for certiorari to review the decision of the Court of
Appeals.
On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at
Quezon City a complaint for infringement of patent against petitioner
Domiciano Aguas and F.H. Aquino and Sons alleging among others that being
the original first and sole inventor of certain new and useful improvements in
the process of making mosaic pre-cast tiles, and thereafter lawfully acquired
from the Philippine Patent Office, Patent No. 658, the latter infringed the same
by making, using and selling tiles embodying said patent invention. A writ of
Preliminary Injuction was subsequently issued.
Petitioner Aguas, in his answer, denied the allegations and instead
averred inter alia that respondent De Leon is neither the original first nor sole
inventor of the improvements in the process of making mosaic pre-cast tiles, the
same having been used by several tile-making factories both here and abroad
years before the alleged invention by De Leon; hence, it is not patentable.
The trial court and the Court of Appeals, upon appeal rendered judgment
in favor of respondent de Leon. Thus, this petition.
ISSUE:
Whether or not the alleged invention or discovery of respondent is
patentable.
HELD:
Yea. x x x It should be noted that the private respondent does not claim to
be the discoverer or inventor of the old process of tile-making. He only claims to
have introduced an improvement of said process. In fact, Letters Patent No. 658
was issued by the Philippine Patent Office to the private respondent Conrado G.
De Leon, to protect his rights as the inventor of “ an alleged new and useful
improvement in the process of making pre-cast tiles.” Indeed, section 7,
Republic Act No.
machine, manufactured product or substance, process, or an improvement of
the foregoing, shall be patentable.”
3. REQUIREMENTS
ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.)
G.R. No. 14101, September 24, 1919
Facts:
Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent
Office for his so-called invention of an improved adjustable plow with the use
his own native plow. A certified copy of the patent was filed in the Division of
Patents, Copyrights, and Trademarks of the Executive Bureau, Government of
the Philippine Islands.
Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business in
Iloilo City, was a manufacturer of plow parts. It produced points, shares, shoes,
and heel pieces in a considerable amount adapted to replace worn-out parts of
the Vargas plow.
Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged
infringement of his U.S. Patent by the defendant F. M Yaptico & Co. (Ltd.), and to
recover the damages suffered by reason of this infringement, to which the court
issued the preliminary injunction prayed for.
The defendant denied the allegations and defended that the patent lacked
novelty or invention, that there was no priority of ideas or device in the
principle and construction of the plow, and that the plow, whose manufacture it
was sought to have enjoined by the plaintiff, had already been in public use for
more than two years before the application of the plaintiff for his patent.
The trial judge rendered judgment in favor of the defendant, declaring null and
without effect the patent in question and dismissing the suit with costs against
the plaintiff. Hence, the plaintiff appealed said judgment.
Issues:
1. Whether the patented invention is void for lack of novelty and invention?
2. Whether the patent is invalid considering that the plow had already been in
public use for over two years prior to the application for a patent.
Ruling:
1. Yes, the patent if void. The Supreme Court affirmed the trial court’s
conclusion that the plow of the plaintiff is not different from the native plow,
except in the material, in the form, in the weight and the grade of the result, the
said differences giving it neither a new function nor a new result distinct from
the function and the result obtained from the native plow. Also, its production
does not presuppose the exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent of an invention under
the provisions of the Patent Law.
2. Yes, the patent is void. Under the provisions of the statute, an inventor's
creation must not have been in public use or on sale in the United States (and
the Philippine Islands) for more than two years prior to his application.
Further, it was proved that the invention was used in public at Iloilo by others
than Vargas, the inventor, more than two years before the application for the
patent thus, the patent is invalid.
4. LICENSING
PARKE DAVIS and COMPANY vs. DOCTORS' PHARMACEUTICALS, INC., ET
AL.
G.R. No. L-22221, August 31, 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.
5. INFRINGEMENT
Pearl & Dean (Phil), Inc. vs Shoemart, Inc.
Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of
advertising display units called light boxes. In January 1981, Pearl & Dean was
able to acquire copyrights over the designs of the display units. In 1988, their
trademark application for “Poster Ads” was approved; they used the same
trademark to advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former
may be contracted to install light boxes in the ad spaces of SM. Eventually, SM
rejected Pearl & Dean’s proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the same
as theirs, were being used by SM in their ad spaces. They demanded SM to stop
using the light boxes and at the same time asked for damages amounting to P20
M. SM refused to pay damages though they removed the light boxes. Pearl
& Dean eventually sued SM. SM argued that it did not infringe on Pearl & Dean’s
trademark because Pearl & Dean’s trademark is only applicable to envelopes
and stationeries and not to the type of ad spaces owned by SM. SM also averred
that “Poster Ads” is a generic term hence it is not subject to trademark
registration. SM also averred that the actual light boxes are not copyrightable.
The RTC ruled in favor of Pearl & Dean. But the Court of Appeals ruled in favor
of SM.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: Yes. The light boxes cannot, by any stretch of the imagination, be
considered as either prints, pictorial illustrations, advertising copies, labels, tags
or box wraps, to be properly classified as a copyrightable; what was copyrighted
were the technical drawings only, and not the light boxes themselves. In other
cases, it was held that there is no copyright infringement when one who,
without being authorized, uses a copyrighted architectural plan to construct a
structure. This is because the copyright does not extend to the structures
themselves.
On the trademark infringement allegation, the words “Poster Ads” are a simple
contraction of the generic term poster advertising. In the absence of any
convincing proof that “Poster Ads” has acquired a secondary meaning in this
jurisdiction, Pearl & Dean’s exclusive right to the use of “Poster Ads” is limited
to what is written in its certificate of registration, namely, stationeries.
CARLOS GSELL vs. VALERIANO VELOSO YAP-JUE
FACTS:
The principal case to which these proceedings are ancillary, was an action
to enjoin infringement of a patented process for manufacture of curved handles
for canes, parasols, and umbrellas. In that case, plaintiff established his title to a
valid patent covering the process in question, and obtained against this
defendant a judgment, granting a perpetual injunction restraining its
infringement, which judgment was affirmed by this Court on appeal. The order
was couched in the following terms:
“It is ordered that the defendant abstain from manufacturing canes and umbrellas
with a curved handle by means of a lamp or blowpipe fed with mineral oil or
petroleum, which process was protected by patent no. 19288, issued in favor of
Henry Gsell, and by him transferred to Carlos Gsell”.
Thereafter the defendant continued to manufacture curved cane handles
for walking sticks and umbrellas by a process in all respects identical with that
used by the plaintiff under his patent, except only that he substituted for a lamp
fed with petroleum or mineral oil, a lamp fed with alcohol.
The trial court found the defendant “not guilty” of contempt as charged;
and this court, on appeal, held that “The violation, if there has been any, was not
of such a character that it could be made patent by the mere annunciation of the
acts performed by the defendant, which are alleged to constitute the said
violation. Consequently, the contempt with which the accused is charged has
not been fully and satisfactorily proved, and the order appealed from should
accordingly be affirmed in so far as it holds that the defendant is not guilty of
contempt.
Substantially, the same question is submitted in these new proceedings as
that submitted in the former case.
ISSUE:
Whether the use of a patented process by a third person, without license
or authority therefore, constitutes an infringement when the alleged infringer
has substituted in lieu of some unessential part of the patented process a well-
known mechanical equivalent.
HELD:
Counsel for plaintiff invokes the doctrine of “mechanical equivalents” in
support of his contention, and indeed that doctrine is applicable to the facts of
the case. This doctrine is founded upon sound rules of reason and logic, and
unless restrained or modified by law in particular jurisdiction, is of universal
application, so that it matters not whether a patent be issued by one sovereignty
or another, the doctrine may properly be invoked to protect the patentee from
colorable invasions of his patent under the guise of a substitution of some part
of his invention by some well-known mechanical equivalent.
The use of a process in all respects identical with a process protected by a
valid patent, save only that a well-known mechanical equivalent is substituted
in lieu of some particular part of the patented process is an infringement upon
the rights of the owner of the patent, which will be enjoined in appropriate
proceeding, and the use of such process, after the order enjoining its use has
been issued, is a “contempt”, under the provision of section 172 of the Code of
Civil Procedure.
 Smith Kline Beckman Corporation vs Court of Appeals
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.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN vs. CONSTANCIO
BENITO
G.R. No. L-27793, March 15, 1928
FACTS: Plaintiffs are the owners of a patent covering hemp-stripping machine
No. 1519579 issued to them by the United States Patent Office and duly
registered in the Bureau of Commerce and Industry of the Philippine Islands
under the provisions of Act No. 2235
Plaintiffs allege that the defendant manufactured a hemp-stripping machine in
which, without authority from the plaintiffs, and has embodied and used such
spindles and their method of application and use, and is exhibiting his machine
to the public for the purpose of inducing its purchase. Frank and Gohn stress that
use by the Benito of such spindles and the principle of their application to the
stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together
with its conditions and specifications.
Plaintiffs assert the violation of infringement upon the patent granted to Frank &
Gohn, and requested that an action for injunction and damages be instituted
against Benito.
Respondent on the other hand contends that it had no prior knowledge of the
prior existence of the hemp-stripping invention of the plaintiffs nor had any
intent to imitate the Frank’s product. Likewise, the defendant contended that the
facts alleged therein do not constitute a cause of action, that it is ambiguous and
vague. The lower court rendered judgment in favor of the plaintiffs, to which was
later affirmed by the appellate court.
HELD: As a rule, the burden of proof to substantiate a charge of infringement is
with the plaintiff. Where, however, the plaintiff introduces the patent in evidence,
if it is in due form, it affords a prima facie presumption of its correctness and
validity. The decision of the Commissioner of Patents in granting the patent is
always presumed to be correct. The burden the shifts to the defendant to
overcome by competent evidence this legal presumption.

The patent in the case at bar, having been introduced in evidence, affords a prima
facie presumption of its correctness and validity. Hence, this is not a case of a
conflict between two different patents. In the recent of Temco Electric Motor Co.
vs. Apco Mfg. Co., decided by the Supreme Court of the United States ruled “an
improper cannot appropriate the basic patent of another, and if he does so without
license is an infringer, and may be used as such. It is well established that an
improver cannot appropriate the basic patent of another and that the improver
without a license is an infringer and may be sued as such.”
III. UTILITY MODELS
1. PRACTICAL UTILITY
GERARDO SAMSON, JR vs.
FELIPE TARROZA and DIRECTOR OF PATENTS,
With the statutory recognition of patentability based on the "practical utility"
concept 1 thus rendering clear that a patent is not solely to be earned under the
"flash of genius" theory, 2 this petition for the cancellation of a utility model patent
for a Side Tilting-Dumping Wheelbarrow granted to respondent Felipe A. Tarroza
was correctly denied by respondent Director of Patents. Petitioner Gerardo
Samson, Jr., himself the grantee of a utility model patent for a Dumping and
Detachable Wheelbarrow, lacked any legal justification for such a plea. So
respondent Director ruled. Not satisfied, petitioner elevated the matter to us for
review. There is no reason why a different outcome is to be expected. His appeal
must fail.
Petitioner was, on May 22, 1958, awarded Utility Model Patent No. 27 for the
above type of wheelbarrow which, as noted in the decision, "consists of a wheeled
carriage base and an upper pivoted and detachable carrying tray. The carriage
base is comprised of a wheel and two equal lengths of continuous pipes bent to
provide wheel forks at the front and at the rear to support the back portion of the
tray, with the ends of the pipes being adopted as the carrying handles for the
wheelbarrow. The two pipes thus bent are joined together by cross braces in the
front and at the rear. The tray is removably pivoted at its front end through hook
catches at its bottom corners, to the forward cross brace, and its rear end rests
solidly over the rear portion of the legs. To dump the load the user pulls a
dumping handle at the back end to cause the tray to pivot upwardly about the
front brace to a position of about 45 degrees with the horizontal and with its front
end panel being supported by the wheel." 3
Respondent's Side Tilting-Dumping Wheelbarrow, on the other hand, consists "of
a wheeled carriage made of tubular frames essentially as in petitioner's. Welded
transversely to the parallel frames are two brackets provided with holes
designed to complement similar holes on brackets provided on the tray. The
brackets on the tray are so placed that with the provision of a bolt through the
openings the tray may be tilted approximately 170 degrees to the left or to the
right of the wheelbarrow with its axis running longitudinally through the center
of the bottom face of the tray." 4
There is an express recognition under the Patent Law, as already noted, that any
new model of implements or tools or 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 a utility model." From the above description of the side tilting-
dumping wheelbarrow, the product of respondent's ingenuity and industry, it is
quite apparent that it has a place in the market and possesses what the statute
refers to as "practical utility." The requirement explicitly set forth in the statute
has thus been met. Respondent Tarroza is entitled to its benefits. The grant to
him of a patent for a utility model is in accordance with law. There was no reason,
therefore, for its cancellation. So it was held by the Director of Patents. That
decision as already noted should stand.
Moreover, in appeals from a decision of the Director of Patents, only questions of
law may be reviewed, findings of facts being conclusive unless unsupported by
substantial evidence. So it was decided in Che v. Philippines Patent Office. 5 As was
emphasized in Bagano v. Director of Patents: "It is almost trite to state here that
in cases of the nature as the one at bar, only questions of law are to be raised in
order that this Court could exercise its appellate jurisdiction and review the
decision." 6 The above well-settled doctrines suffice to demonstrate that this
petition for review, as noted at the outset, is without merit. It was not error then,
to reiterate, for the respondent Director of Patents to deny the cancellation of the
utility patent granted respondent Tarroza. To borrow from the language of the
Che opinion: "Even on the sole issue alone, the petition for review must fail."
Another alleged error was imputed to respondent Director of Patents. It would
find fault with his failing to hold that respondent Tarroza "was not the true and
actual" author of the mechanical contrivance for which he was granted a utility
model patent. This is what the appealed decision has to say on this point:
"Petitioner's theory with respect to the second ground for cancellation, to wit:
that respondent is not the true and actual inventor or designer of the utility model
is premised on the fact that because of the proximity of the two, the petitioner
and the respondent being brothers-in-law, and living in adjoining residential lots,
the latter has had ample time and opportunity to observe and copy the former's
wheelbarrow. But the testimonial evidence thus presented is not clear,
satisfactory, and free from doubt, in the face of allegations to the contrary by the
respondent." 7 The futility of such an assignment of error is thus apparent. Again,
it is factual in character. It is not for us, as noted above, to review or revise the
same, there being no showing of a lack of substantial evidence in support thereof.
WHEREFORE, the decision of April 13, 1962 of respondent Director of Patents
denying the petition for the cancellation of Utility Model Letters Patent No. 62 in
favor of respondent Tarroza is hereby affirmed. With costs against petitioner.
Samson vs. Tarroza
28 SCRA 792 (1969)
FACTS:
This is an appeal from a decision of the Director of Patents denying the petition
for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent
Felipe Tarroza for his Side Tilting-Dumping Wheelbarrow.
Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent
No. 27 for a Dumping and Detachable Wheelbarrow, which he claims to have
been infringed by the respondent, they being neighbors.
ISSUE:
Whether or not respondent’s Utility Model Patent deserves cancellation.
HELD:
No. There is an express recognition under the Patent Law that any new model of
implements or tools or 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 a
utility model: From the description of the side of tilting-dumping wheelbarrow,
the product of ingenuity and industry, it is quite apparent that it has a place in
the market and possesses what the statute refers to as “practical utility.”
January 18, 2017
G.R. No. 186967
DIVINA PALAO, Petitioner
vs.
FLORENTINO INTERNATIONAL, INC., Respondent
DECISION
LEONEN, J.:
This resolves a Petition for Review on Certiorari 1 filed by petitioner Divina
Palao (Palao) praying that the assailed January 8, 2009 Decision2 and the March
2, 2009 Resolution3 of the Court of Appeals in CA-G.R. SP No. 105595 be
reversed and set aside.
In its assailed Decision, the Court of Appeals reversed and set aside the
September 22, 2008 Order4 of Intellectual Property Office Director General
Adrian S. Cristobal, Jr. and reinstated respondent Florentino III International,
Inc.'s (Florentino) appeal from Decision No. 2007-31,5 dated March 5, 2007, of
the Bureau of Legal Affairs of the Intellectual Property Office.
Decision No. 2007-31 denied Florentino's Petition for Cancellation of Letters
Patent No. UM-7789, which the Intellectual Property Office had issued in favor
of Palao. 6
Letters Patent No. UM-7789 pertained to "A Ceramic Tile Installation on Non-
Concrete Substrate Base Surfaces Adapted to Form Part of Furniture,
Architectural Components and the Like."7
In its Petition for Cancellation, Florentino claimed that the utility model covered
by Letters Patent No. UM-7789 was not original, new, or patentable, as it had
been publicly known or used in the Philippines and had even been the subject of
several publications.8 It added that it, as well as many others, had been using the
utility model well before Palao' s application for a patent. 9
In its Decision No. 2007-31,10 the Bureau of Legal Affairs of the Intellectual
Property Office denied Florentino's Petition for Cancellation. It noted that the
testimony and pictures, which Florentino offered in evidence, failed to establish
that the utility model subject of Letters Patent No. UM-7789 was publicly known
or used before Palao' s application for a patent. 11
In its Resolution No. 2008-1412 dated July 14, 2008, the Bureau of Legal Affairs
of the Intellectual Property Office denied Florentino' s Motion for
Reconsideration.
On July 30, 2008, Florentino appealed to the Office of the Director General of the
Intellectual Property Office. 13 This appeal's Verification and Certification of
Non-Forum Shopping was signed by Atty. John Labsky P. Maximo (Atty.
Maximo) of the firm Balgos and Perez. 14 However, Florentino failed to attach to
its appeal a secretary's certificate or board resolution authorizing Balgos and
Perez to sign the Verification and Certification of Non-Forum Shopping. 15Thus,
on August 14, 2008, the Office of the Director General issued the Order
requiring Florentino to submit proof that Atty. Maximo or Balgos and Perez was
authorized to sign the Verification and Certification ofNon-Forum Shopping. 16
On August 19, 2008, Florentino filed a Compliance. 17 It submitted a copy of the
Certificate executed on August 15, 2008 by Florentino's Corporate Secretary,
Melanie Marie A. C. Zosa-Tan, supposedly showing its counsel's authority to
sign. 18 This Certificate stated:
[A]t a meeting of the Board of Directors of the said corporation on 14 August
2008, during which a majority of the Directors were present, the following
resolution was unanimously adopted:
'RESOLVED, as it is hereby resolved, that BALGOS & PEREZ, or any of its
associates, be, as they are hereby, authorized to sign for and on behalf of the
corporation, the Verification and Certification on NonForum Shopping and/or
all other documents relevant to the Appeal filed by the Corporation with the
Office of the Director General of the Intellectual Property Office entitled
"Philippine Chambers of Stonecraft Industries, Inc. and Florentino III
International, Inc. vs. Divina Palao".'
IN WITNESS WHEREOF, I have hereunto set my hand on these presents, this 15
August 2008 in Cebu City, Cebu. 19
In his Order dated September 22, 2008, Intellectual Property Office Director
General Adrian S. Cristobal, Jr. (Director General Cristobal) dismissed
Florentino's appeal.20 He noted that the Secretary's Certificate pertained to an
August 14, 2008 Resolution issued by Florentino' s Board of Directors, and
reasoned that the same Certificate failed to establish the authority of
Florentino's counsel to sign the Verification and Certification of Non-Forum
Shopping as of the date of the filing of Florentino's appeal (i.e., on July 30,
2008).21
Florentino then filed before the Court of Appeals a Petition for Review under
Rule 43 of the 1997 Rules of Civil Procedure. In its assailed January 8, 2009
Decision,22 the Court of Appeals faulted Director General Cristobal for an overly
strict application of procedural rules. Thus, it reversed Director General
Cristobal's September 22, 2008 Order and reinstated Florentino' s appeal. 23
In its assailed March 2, 2009 Resolution,24 the Court of Appeals denied Palao's
Motion for Reconsideration.
Hence, this Petition was filed.
For resolution is the sole issue of whether the Court of Appeals erred in
reversing the September 22, 2008 Order of Intellectual Property Office Director
General Adrian S. Cristobal, Jr., and in reinstating respondent Florentino III
International, Inc.' s appeal.
We deny the Petition and sustain the ruling of the Court of Appeals.
The need for a certification of non-forum shopping to be attached to
respondent's appeal before the Office of the Director General of the Intellectual
Property Office is established.
Section 3 of the Intellectual Property Office's Uniform Rules on
Appeai25 specifies the form through which appeals may be taken to the Director
General:
Section 3. Appeal Memorandum. - The appeal shall be perfected by filing an
appeal memorandum in three (3) legible copies with proof of service to the
Bureau Director and the adverse party, if any, and upon payment of the
applicable fee, Reference Code 127 or 128, provided in the IPO Fee Structure.
Section 4(e) specifies the need for a certification of non-forum shopping. Section
4 reads in full:
Section 4. Contents of the Appeal Memorandum. - The appeal memorandum
shall:
a) State the full name or names, capacity and address or addresses of the
appellant or appellants;
b) Indicate the material dates showing that it was filed on time;
c) Set forth concisely a statement of the matters involved, the issues raised, the
specification of errors of fact or law, or both, allegedly committed by the Bureau
Director and the reasons or arguments relied upon for the allowance of the
appeal;
d) Be accompanied by legible copies of the decision or final order of the Bureau
Director and of the material portions of the record as would support the
allegations of the appeal; and
e) Contain a certification of non-forum-shopping. (Emphasis supplied)
These requirements notwithstanding, the Intellectual Property Office's own
Regulations on Inter Partes Proceedings (which governs petitions for
cancellations of a mark, patent, utility model, industrial design, opposition to
registration of a mark and compulsory licensing, and which were in effect when
respondent filed its appeal) specify that the Intellectual Property Office "shall
not be bound by the strict technical rules of procedure and evidence. " 26
Rule 2, Section 6 of these Regulations provides:
Section 6 Rules of Procedure to be Followed in the Conduct of Hearing of Inter
Partes Cases
In the conduct of hearing of inter partes cases, the rules of procedure herein
contained shall be primarily applied. The Rules of Court, unless inconsistent
with these rules, may be applied in suppletory character, provided, however,
that the Director or Hearing Officer shall not be bound by the strict technical
rules of procedure and evidence therein contained but may adopt, in the
absence of any applicable rule herein, such mode of proceedings which is
consistent with the requirements of fair play and conducive to the just, speedy
and inexpensive disposition of cases, and which will give the Bureau the
greatest possibility to focus on the technical grounds or issues before it.
(Emphasis supplied)
This rule is in keeping with the general principle that administrative bodies are
not strictly bound by technical rules of procedure:
[A]dministrative bodies are not bound by the technical niceties of law and
procedure and the rules obtaining in courts of law. Administrative tribunals
exercising quasi-judicial powers are unfettered by the rigidity of certain
procedural requirements, subject to the observance of fundamental and
essential requirements of due process in justiciable cases presented before
them. In administrative proceedings, technical rules of procedure and evidence
are not strictly applied and administrative due process cannot be fully equated
with due process in its strict judicial sense.27
In conformity with this liberality, Section 5(b) of the Intellectual Property
Office's Uniform Rules on Appeal expressly enables appellants, who failed to
comply with Section 4' s formal requirements, to subsequently complete their
compliance:
Section 5. Action on the Appeal Memorandum - The Director General shall:
a) Order the adverse party if any, to file comment to the appeal memorandum
within thirty (30) days from notice and/or order the Bureau Director to file
comment and/or transmit the records within thirty (30) days from notice; or
b) Order the appellant/appellants to complete the formal requirements
mentioned in Section 4 hereof;
c) Dismiss the appeal for being patently without merit, Provided, that the
dismissal shall be outright if the appeal is not filed within the prescribed period
or for failure of the appellant to pay the required fee within the period of appeal.
(Emphasis supplied)
Given these premises, it was an error for the Director General of the Intellectual
Property Office to have been so rigid in applying a procedural rule and
dismissing respondent's appeal.
Petitioner-in her pleadings before this Court-and Director General Cristobal-in
his September 2, 2008 Order-cite Decisions of this Court (namely: Philippine
Public School Teachers Association v. Heirs of lligan28 and Philippine Airlines,
Inc. v. Flight Attendants & Stewards Association of the Philippines29) to
emphasize the need for precise compliance with the rule on appending a
certification of non-forum shopping.
Philippine Public School Teachers Association states:
Under Section 3 of the same Rule, failure to comply shall be sufficient ground for
the dismissal of the petition. The rule on certification against forum shopping is
intended to prevent the actual filing of multiple petitions/complaints involving
identical causes of action, subject matter and issues in other tribunals or
agencies as a form of forum shopping. This is rooted in the principle that a
party-litigant should not be allowed to pursue simultaneous remedies in
different forums, as this practice is detrimental to orderly judicial procedure.
Although not jurisdictional, the requirement of a certification of non-forum
shopping is mandatory. The rule requires that a certification against forum
shopping J should be appended to or incorporated in the initiatory pleading
filed before the court. The rule also requires that the party, not counsel, must
certify under oath that he has not commenced any other action involving the
same issue in the court or any other tribunal or agency.
The requirement that the certification of non-forum shopping should be
executed and signed by the plaintiff or principal means that counsel cannot sign
said certification unless clothed with special authority to do so. The reason for
this is that the plaintiff or principal knows better than anyone else whether a
petition has previously been filed involving the same case or substantially the
same issues. Hence, a certification signed by counsel alone is defective and
constitutes a valid cause for dismissal of the petition. In the case of natural
persons, the Rule requires the parties themselves to sign the certificate of non-
forum shopping. However, in the case of the corporations, the physical act of
signing may be performed, on behalf of the corporate entity, only by specifically
authorized individuals for the simple reason that corporations, as artificial
persons, cannot personally do the task themselves. It cannot be gainsaid that
obedience to the requirements of procedural rules is needed if we are to expect
fair results therefrom. Utter disregard of the rules cannot justly be rationalized
by harking on the policy of liberal construction.30
Philippine Airlines, for its part, states that:
The required certification of non-forum shopping must be valid at the time of
filing of the petition .. An invalid certificate cannot be remedied by the
subsequent submission of a Secretary's Certificate that vests authority only
after the petition had been filed. 31
As pointed out by the Court of Appeals, 32 however, the strict posturing of these
Decisions are not entirely suitable for this case. Both Philippine Public School
Teachers Association and Philippine Airlines involved petitions filed before the
Court of Appeals, that is, petitions in judicial proceedings. What is involved here
is a quasi-judicial proceeding that is "unfettered by the strict application of the
technical rules of procedure imposed in judicial proceedings."33
In any case, even in judicial proceedings, this Court has rebuked an overly strict
application of the rules pertaining to certifications of non-forum
shopping.1âwphi1
In Pacquing v. Coca-Cola Philippines, Inc.:34
[T]he rules on forum shopping, which were designed to promote and facilitate
the orderly administration of justice, should not be interpreted with such
absolute literalness as to subvert its own ultimate and legitimate objective.
Strict compliance with the provision regarding the certificate of non-forum
shopping underscores its mandatory nature in that the certification cannot be
altogether dispensed with or its requirements completely disregarded. It does
not, however, prohibit substantial compliance therewith under justifiable
circumstances, considering especially that although it is obligatory, it is
notjurisdictional.35
Thus, in Pacquing, this Court held that while, as a rule, "the certificate of non-
forum shopping must be signed by all the plaintiffs in a case and the signature of
only one of them is insufficient,"36 still, "when all the petitioners share a
common interest and invoke a common cause of action or defense, the signature
of only one of them in the certification against forum shopping substantially
complies with the rules."37
Likewise, in Peak Ventures Corp. v. Heirs of Villareal, 38 we did not consider as
fatally defective the fact that a petition for review on certiorari's verification and
certification of non-forum shopping was dated November 6, 2008, while the
petition itself was dated November 10, 2008.39 We state:
With respect to the requirement of a certification of non-forum shopping, "[t]he
fact that the [Rules] require strict compliance merely underscores its
mandatory nature that it cannot be dispensed with or its requirements
altogether disregarded, but it does not thereby interdict substantial compliance
with its provisions under justifiable circumstances. "40
Even petitioner's own cited case, Philippine Public School Teachers Association v.
Heirs of lligan,41 repudiates her position. The case involved a petition for review
filed before the Court of Appeals by the Philippine Public School Teachers
Association.42 The verification and certification of nonforum shopping of the
petition was signed by a certain Ramon G. Asuncion, Jr. without an
accompanying board resolution or secretary's certificate attesting to his
authority to sign. The petition for review was dismissed by the Court of Appeals
"for being 'defective in substance,' there being no proof that Asuncion had been
duly authorized by [the Philippine Public School Teachers Association] to
execute and file a certification of nonforum shopping in its behalf."43
This Court acknowledged that, in the strict sense, the Court of Appeals was
correct: "The ruling of the [Court of Appeals] that [the Philippine Public School
Teachers Association] was negligent when it failed to append in its petition a
board resolution authorizing petitioner Asuncion to sign the certification of
non-forum shopping in its behalf is correct.'44
However, this Court did not end at that. It went on to state that "a strict
application of [the rule] is not called for": 45
We have reviewed the records, however, and find that a strict application of
Rule 42, in relation to Section 5, Rule 7 of the Revised Rules of Court is not
called for. As we held in Huntington Steel Products, Inc. v. National Labor
Relations Commission, while the requirement of strict compliance underscores
the mandatory nature of the rule, it does not necessarily interdict substantial
compliance with its provisions under justifiable circumstances. The rule should
not be interpreted with such absolute literalness as to subvert its own ultimate
and legitimate objective which is the goal of all rules of procedure, that is, to
achieve justice as expeditiously as possible. A liberal application of the rule may
be justified where special circumstances or compelling reasons are present.
Admittedly, the authorization of petitioner PPSTA's corporate secretary was
submitted to the appellate court only after petitioners received the comment of
respondents. However, in view of the peculiar circumstances of the present case
and in the interest of substantial justice, and considering further that
petitioners submitted such authorization before the [Court of Appeals] resolved
to dismiss the petition on the technical ground, we hold that, the procedural
defect may be set aside pro hac vice. Technical rules of procedure should be
rules enjoined to facilitate the orderly administration of justice. The liberality in
the application of rules of procedure may not be invoked if it will result in the
wanton disregard of the rules or cause needless delay in the administration of
justice. Indeed, it cannot be gainsaid that obedience to the requirements of
procedural rule is needed if we are to expect fair results therefrom.46 (Emphasis
supplied)
The "peculiar circumstances"47 in Philippine Public School Teachers Association
pertained to a finding that the signatory of the verification and certification of
non-forum shopping, Ramon G. Asuncion, Jr., was "the former Acting General
Manager"48 of the Philippine Public School Teachers Association and was, thus,
previously "authorized to sign a verification and certification of non-forum
shopping"49 on behalf of the Association. By the time the Association actually
filed its petition before the Court of Appeals, however, his authority as the
Acting General Manager had ceased, and the Association's Board of Directors
needed to give him specific authority to sign a certification of non-forum
shopping:
We agree with respondents' contention that when they filed their complaint in
the MTC, they impleaded petitioner Asuncion as party defendant in his capacity
as the Acting General Manager of petitioner PPST A. As such officer, he was
authorized to sign a verification and certification of non-forum shopping.
However, he was no longer the Acting General Manager when petitioners filed
their petition in the CA, where he was in fact referred to as "the former Acting
General Manager." Thus, at the time the petition was filed before the CA,
petitioner Asuncion's authority to sign the verification and certification of non-
forum shopping for and in behalf of petitioner PPSTA ceased to exist. There was
a need for the board of directors of petitioner PPS TA to authorize him to sign
the requisite certification of non-forum shopping, and to append the same to
their petition as Annex thereof. 50
We find this case to be attended by analogous circumstances. As pointed out by
the Court of Appeals, respondent's counsel, Balgos and Perez, has been
representing respondent (and signing documents for it) "since the [original]
Petition for Cancellation of Letter Patent No. UM-7789 was filed." 51 Thus, its act
of signing for respondent, on appeal before the Director General of the
Intellectual Property Office, was not an aberration. It was a mere continuation
of what it had previously done.
It is reasonable, therefore-consistent with the precept of liberally applying
procedural rules in administrative proceedings, and with the room allowed by
jurisprudence for substantial compliance with respect to the rule on
certifications of non-forum shopping-to construe the error committed by
respondent as a venial lapse that should not be fatal to its cause. We see here no
"wanton disregard of the rules or [the risk of] caus[ing] needless delay in the
administration of justice."52 On the contrary, construing it as such will enable a
full ventilation of the parties' competing claims. As with Philippine Public
School Teachers Association, we consider it permissible to set aside, pro hac
vice, the procedural defect. 53 Thus, we sustain the ruling of the Court of
Appeals.
WHEREFORE, the Petition is DENIED. The assailed January 8, 2009 Decision
and the March 2, 2009 Resolution of the Court of Appeals in CA-G.R. SP No.
105595 are AFFIRMED.
SO ORDERED.
2. INFRINGEMENT
Roberto Del Rosario vs Court of Appeals
Roberto 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.
IV. TRADEMARKS
1. REQUIREMENT OF PRIOR USE
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT V. DEVELOPERS
GROUP OF COMPANIES (G.R. NO. 159938)
Facts:
Respondent DGCI applied for and was granted registration of the ‘Shangri-La’
mark and ‘S’ logo in its restaurant business. Petitioner Shangri-La, chain of hotels
and establishments owned by the Kuok family worldwide, moved to cancel the
registration of the mark on the ground that it was illegally and fraudulently
obtained and appropriated by respondents. Petitioner also moved to register the
mark and logo in its own name. Later, respondent DGCI filed before the trial court
a complaint for infringement against petitioner alleging that DGCI had been the
prior exclusive user and the registered owner in the Philippines of said mark and
logo. Petitioner Shangri-La argued that respondent had no right to apply for the
registration because it did not have prior actual commercial use thereof. The trial
court found for respondent. CA affirmed.
Issue:
Whether or not respondent’s prior use of the mark is a requirement for its
registration.
Ruling: YES.
While the present law on trademarks has dispensed with the requirement
of prior actual use at the time of registration, the law in force at the time of
registration must be applied. Under the provisions of the former trademark law,
R.A. No. 166, as amended, hence, the law in force at the time of respondent’s
application for registration of trademark, the root of ownership of a trademark is
actual use in commerce. Section 2 of said law requires that before a trademark
can be registered, it must have been actually used in commerce and service for
not less than two months in the Philippines prior to the filing of an application
for its registration. Trademark is a creation of use and therefore actual use is a
pre-requisite to exclusive ownership and its registration with the Philippine
Patent Office is a mere administrative confirmation of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a
registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-
month actual use requirement. What is worse, DGCI was not even the owner of
the mark. For it to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of respondent DGCI’s
registration of the mark, the same was already being used by the petitioners,
albeit abroad, of which DGCI’s president was fully aware.
BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG. G.R. No. 183404.
October 13, 2010
FACTS:
Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS"
for use in connection with Fungicide. Berris Agricultural Co., Inc. filed an
opposition against the trademark citing that it is confusingly similar with their
trademark, "D-10 80 WP" which is also used for Fungicide also with the same
active ingredient.
The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor
of Abyadang.
ISSUE: Whether there is confusing similarity between the trademarks.
RULING:
Yes. The SC found that both products have the component D-10 as their
ingredient and that it is the dominant feature in both their marks. Applying the
Dominancy Test, Abyadang's product is similar to Berris' and that confusion may
likely to occur especially that both in the same type of goods. Also using the
Holistic Test, it was more obvious that there is likelihood of confusion in their
packaging and color schemes of the marks. The SC states that buyers would think
that Abyadang's product is an upgrade of Berris'
EY Industrial Sales vs. Shen Dar Electricity and Machinery Company
Facts:
 EY Industrial Sales is a domestic corporation engaged in the production,
distribution and sale of air compressors.
 Shen Dar is a Taiwan-based foreign corporation engaged in the
manufacture of compressors.
 From 1997-2004, EY Industrial imported air compressors from Shen
Dar.
 In 1997, Shen Dar filed a Trademark Application with the Intellectual
Property Office (IPO) for the mark “Vespa” for the use of air compressors.
It was approved in 2007.
 In 1999, EY Industrial filed a Trademark Application also for the mark
“VESPA” for the use of air compressors. It was approved in 2004.
 Shen Dar filed a Petition for Cancellation of the Industrial’s EYES COR
with the Bureau of Legal Affairs contending that: a. there was a violation
of Section 123.1 (D) of the Intellectual Property Code which provides
that: A mark cannot be registered if it is identical to a mark with an
earlier filing or priority date. b. EY Industrial is only a distributor of the
air compressors
 On the other hand, EY Industrial alleged that it is the sole assembler and
fabricator of VESPA air compressors since the early 1990s and that Shen
Dar supplied them air compressors with the mark “SD” and not “VESPA”
Issues:
1. Who between EY Industrial and Shen Dar is entitled to the trademark “VESPA”.
EY INDUSTRIAL SALES
2. WON the Bureau of Legal Affairs has the power to cancel the application of
Shen Dar even if it is Shen Dar who filed the case? YES
Held:
1st: EY INDUSTRIAL has the right to the trademark.
Based on the evidence, EYIS owns the “VESPA” trademark; it has prior use, as
shown by various sales invoices.
Ownership of a mark or trade name may be acquired not necessarily by
registration but by adoption and use in trade or commerce. As between actual
use of a mark without registration, and registration of the mark without actual
use thereof, the former prevails over the latter.
For a rule widely accepted and firmly entrenched, because it has come down
through the years, is that actual use in commerce or business is a pre-requisite to
the acquisition of the right of ownership. It is non sequitur to hold that porque
EYIS is a distributor, it is no longer the owner.
FIRST-TO-FILE RULE
Under Section 123.1 of IPO provision, the registration of a mark is prevented with
the filing of an earlier application for registration.
This must not, however, be interpreted to mean that ownership should be based
upon an earlier filing date. While RA 8293 (IPC) removed the previous
requirement of proof of actual use prior to the filing of an application for
registration of a mark, proof of prior and continuous use is necessary to establish
ownership of a mark. Such ownership constitutes sufficient evidence to oppose
the registration of a mark.
When we talk about trademark, we are just talking about the mark. It does not
include the product. Shen Dar is the manufacturer of the product, but they did not
name the product as VESPA. It was EY that named the VESPA, and used the
VESPA, even though they were only the distributors. 
 It was EY that actually
used the trademark through the use of receipts, and other documents.
The first to file rule – According to the SC that Shen Dar filed under the old IPC
where prior use is the one applied. 

2nd: BLA has the power to cancel the application.
Shen Dar challenges the propriety of such cancellation on the ground that there
was no petition for cancellation as required under Sec. 151 of RA 8293.
The IPO Director General stated that, despite the fact that the instant case was for
the cancellation of the COR issued in favor of EYIS, the interests of justice dictate,
and in view of its findings, that the COR of Shen Dar must be cancelled.
The above rule reflects the oft-repeated legal principle that quasi-judicial and
administrative bodies are not bound by technical rules of procedure. Such
principle, however, is tempered by fundamental evidentiary rules, including due
process.
The fact that no petition for cancellation was filed against the COR issued to Shen
Dar does not preclude the cancellation of Shen Dar’s COR. It must be emphasized
that, during the hearing for the cancellation of EYIS’ COR before the BLA, Shen
Dar tried to establish that it, not EYIS, was the true owner of the mark “VESPA”
and, thus, entitled to have it registered. Shen Dar had more than sufficient
opportunity to present its evidence and argue its case, and it did. It was given its
day in court and its right to due process was respected. The IPO Director
General’s disregard of the procedure for the cancellation of a registered mark was
a valid exercise of his discretion.
Remember, EY’s application was the one granted, and it is Shen Dar’s application
that was cancelled. 
 It does not mean that even you were the one who filed, it
your application cannot be cancelled. The BLA, who has jurisdiction over the case,
were able to determine that it is Shen Dar’s trademark that should not have been
issued with registration, even it is the plaintiff.
2. REGISTRABLE TRADEMARKS
ARCE SONS AND COMPANY V. SELECTA BISCUIT COMPANY (G.R. NO. L-
14761)
Facts:
Respondent Selecta Biscuit Company applied for the registration of the word
‘SELECTA’ to be used in its bakery products. Petitioner Arce Sons opposed on the
ground it had continuously used the mark ‘SELECTA’ and that it has already
become identified with petitioner’s name and business. Petitioner further
contends that the marks are confusingly similar. Petitioner then filed before the
court a complaint of unfair competition against respondent which ruled in its
favor. On the other hand, the Director of Patents dismissed petitioner’s
opposition.
Issue:
Whether or not petitioner’s mark has acquired secondary meaning in its favor.
Ruling: YES.
The word ‘SELECTA’, it is true, may be an ordinary or common word in the sense
that may be used or employed by any one in promoting his business or enterprise,
but once adopted or coined in connection with one’s business as an emblem, sign
or device to characterize its products, or as a badge of authenticity, it may acquire
a secondary meaning as to be exclusively associated with its products and
business. In this sense, its use by another may lead to confusion in trade and
cause damage to its business. And this is the situation of petitioner when it used
the word ‘SELECTA’ as a trade-mark. In this sense, the law gives its protection
and guarantees its use to the exclusion of all others.
The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” which this
Court has considered not merely as a descriptive term within the meaning of the
Trade-mark Law but as a fanciful or coined phrase, or a trade-mark. And holding
that respondent was entitled to protection in the use of that trade-mark, this
Court made the following comment:
Even if ‘Ang Tibay’, therefore, were not capable of exclusive appropriation as a
trade-mark, the application of the doctrine of secondary meaning could
nevertheless be fully sustained because, in any event, by respondent’s long and
exclusive appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless have been used so
long and exclusively by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the word or phrase has come
to mean that article was his product.” (Ang v. Teodoro, supra.)
The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
ANDRES ROMERO
vs.
MAIDEN FORM BRASSIERRE CO., INC. and THE DIRECTOR OF PATENTS,
FACTS:
Respondent company, a foreign corporation, filed with respondent Director of
Patents an application for registration (pursuant to Republic Act No. 166) of the
trademark "Adagio" for the brassieres manufactured by it. The respondent
company alleged that said trademark was first used by it in the United States on
October 26, 1937, and in the Philippines on August 31, 1946 and that it had been
continuously used by it in trade in, or with the Philippines for over 30 years; that
said trademark. Acting on said application, respondent Director, issued to
respondent company a certificate of registration of its trademark "Adagio".
petitioner filed with respondent Director a petition for cancellation of said
trademark, on the grounds that it is a common descriptive name of an article or
substance on which the patent has expired; that its registration was obtained
fraudulently and that the application for its registration was not filed in
accordance with the provisions of Section 37, Chapter XI of the same Act.
Petitioner also alleged that said trademark has not become distinctive of
respondent company's goods or business; that it has been used by respondent
company to classify the goods (the brassieres) manufactured by it, in the same
manner as petitioner uses the same; that said trademark has been used by
petitioner for almost 6 years; that it has become a common descriptive name; and
that it is not registered in accordance with the requirements of Section 37 (a),
Chapter XI of Republic Act No. 166.
Issues having been joined, the case was heard and, after hearing, respondent
Director (on January 17, 1961) rendered the decision dismissing his petition for
cancellation of the registration of the trademark "Adagio" for brassieres
manufactured by respondent Maiden Form Brassiere Co., Inc. Hence, this appeal.
ISSUES:
1. Whether the trademark “ADAGIO” has become a common descriptive
name of a particular style of brassiere and is, therefore, unregistrable;
2. Whether the trademark “ADAGIO” at the time it was registered had long
been used by the respondent company, only to "to designate a particular
style or quality of brassiere and, therefore, is unregistrable as a
trademark";
3. Whether the respondent Director erred in registering the trademark in
question, despite appellee's non-compliance with Section 37,
paragraphs 1 and 4 (a) of Republic Act No. 166; and
4. Whether the registration of the trademark in question was fraudulent or
contrary to Section 4 of Republic Act No. 166.
HELD:
1. This claim is without basis in fact. The evidence shows that the
trademark "Adagio" is a musical term, which means slowly or in an easy
manner, and was used as a trademark by the owners thereof because
they are musically inclined. Being a musical term, it is used in an
arbitrary (fanciful) sense as a trademark for brassieres manufactured by
respondent company. It also appears that respondent company has,
likewise, adopted other musical terms such as "Etude", "Chansonette",
"Pre-lude", "Overture" (Exh. W-6), and "Concerto", to identify, as a
trademark, the different styles or types of its brassieres. As respondent
Director pointed out, "the fact that said mark is used also to designate a
particular style of brassiere, does not affect its registrability as a
trademark."
2. This contention is untenable. Said sentence appearing on the package,
standing alone, does not conclusively indicate that the trademark
"Adagio" is merely a style of brassiere. Brassieres are usually of different
types or styles, and appellee has used different trademarks for every
type as shown by its labels, Etude, Chansonette, Prelude, Maidenette, and
Overture. The mere fact that appellee uses "Adagio" for one type or style,
does not affect the validity of such word as a trademark. In the case of
Kiekhaefer Corp. v. Willys-Overland Motors, 111 USPQ 105, it was held
that the fact that the word "Hurricane" was used to designate only one
model of automobile, did not affect the validity of that word as a
trademark.
3. This contention flows from a misconception of the application for
registration of trademark of respondent. As we see it, respondent's
application was filed under the provisions of Section 2 of Republic Act
No. 166 as amended by Section 1 of Republic Act 865 which reads as
follows:
"SEC. 2. What are registrable. — Trademarks, x x x owned by persons,
corporations, partnerships or associations domiciled x x x in any foreign country
may be registered in accordance with the provisions of this Act: Provided, that
said trademarks, trade-names, or service marks are actually in use in commerce
and services not less than two months in the Philippines before the time the
applications for registration are filed: x x x"
Section 37 of Republic Act No. 166 can be availed of only where the Philippines is
a party to an international convention or treaty relating to trademarks, in which
case the trade-mark sought to be registered need not be in use in the Philippines.
4. "Adagio" was first used exclusively in the Philippines by appellee in the
year 1932. There being no evidence of use of the mark by others before
1932, or that appellee abandoned use thereof, the registration of the
mark was made in accordance with the Trademark Law. The temporary
non-use did not affect the rights of appellee because it was occasioned
by government restrictions and was not permanent, intentional, and
voluntary. "To work an abandonment, the disuse must be permanent and
not ephemeral; it must be intentional and voluntary, and not involuntary
or even compulsory. There must be a thoroughgoing discontinuance of
any trade-mark use of the mark in question." The use of the trademark
by other manufacturers did not indicate an intention on the part of
appellee to abandon it. Further, temporary non-use of a trademark
occasioned by government restrictions. not being permanent,
intentional and voluntary, does not affect the right to a trademark.