COFFEE PARTNERS, INC., Petitioner, v.

SAN FRANCISCO COFFEE &

ROASTERY, INC.,Respondent.

G.R. No. 169504: March 3, 2010

FACTS:

Petitioner Coffee Partners, Inc (CPI). is a local corporation engaged in the

business of establishing and maintaining coffee shops in the country. It is
registered with the Securities and Exchange Commission (SEC) in January 2001.
It has a franchise agreement with Coffee Partners Ltd., a business entity organized
and existing under the laws of British Virgin Islands, for a non-exclusive right to
operate coffee shops in the Philippines using trademarks designed by CPL such as
“SAN FRANCISCO COFFEE”. On the other hand, respondent is a local corporation
engaged in the wholesale and retail sale of coffee. It is registered with the SEC in
May 1995. It registered the business name "SAN FRANCISCO COFFEE &
ROASTERY, INC (SFCRI)." with the Department of Trade and Industry (DTI) in
June 1995.

In June 2001, respondent SFCRI discovered that petitioner CPI was about
to open a coffee shop under the name "SAN FRANCISCO COFFEE" in Libis, Quezon
City. According to respondent, petitioners shop caused confusion in the minds of
the public as it bore a similar name and it also engaged in the business of selling
coffee. However, petitioner points out that respondent’s registration of its business
name (trade name) with the DTI expired on 16 June 2000 and it was only in 2001
when petitioner opened a coffee shop in Libis, Quezon City that respondent made
a belated effort to seek the renewal of its business name registration. Petitioner
stresses respondent’s failure to continue the use of its trade name to designate its
goods negates any allegation of infringement.

ISSUE:

Whether or not CPI’s use of the trademark "SAN FRANCISCO COFFEE" constitutes
infringement of SFCRI’s trade name "SAN FRANCISCO COFFEE & ROASTERY,
INC.," even if the trade name is not registered with the Intellectual Property Office
(IPO).

RULING:

YES. A trade name need not be registered with the IPO before an infringement
suit may be filed by its owner against the owner of an infringing trademark. All
that is required is that the trade name is previously used in trade or commerce in
the Philippines. It is the likelihood of confusion that is the gravamen of
infringement. In determining similarity and likelihood of confusion, our
jurisprudence has developed two tests: the dominancy test and the holistic test.

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 occurs. Exact duplication or imitation is not required. 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 consumers.

In contrast, 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. The discerning eye of the observer must focus not only on
the predominant words but also on the other features appearing on both marks in
order that the observer may draw his conclusion whether one is confusingly similar
to the other.

Applying either the dominancy test or the holistic test, petitioners "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondents "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 petitioners coffee shops.

Digested by: Garry Nee G Tungala JD-3A

Case No. 1 (Sec 165)

Sec. 165. Trade Names or Business Names. –

165.1. A name or designation may not be used as a trade name if by its nature or the use to which
such name or designation may be put, it is contrary to public order or morals and if, in particular, it
is liable to deceive trade circles or the public as to the nature of the enterprise identified by that
name.

165.2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade
names, such names shall be protected, even prior to or without registration, against any unlawful
act committed by third parties.

(b) In particular, any subsequent use of the trade name by a third party, whether as a trade name
or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.

165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply
mutatis mutandis.

165.4. Any change in the ownership of a trade name shall be made with the transfer of the enterprise
or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall apply
mutatis mutandis.
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC.
petitioners, vs.
E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC. respondents

G.R. No. 154342: July 14, 2004

FACTS:

Gallo Winery, producer of wines and brandy products which is based in

California, U.S.A., registered its GALLO wine trademark in the Philippines in 1971.
Gallo Winery produces different kinds of wines and brandy products and sells them
in many countries under different registered trademarks, including the GALLO and
ERNEST & JULIO GALLO wine trademarks.
On the other hand, petitioners Mighty Corporation and La Campana and
their sister company, Tobacco Industries of the Philippines (Tobacco Industries),
are engaged in the cultivation, manufacture, distribution and sale of tobacco
products for which they have been using the GALLO cigarette trademark since
1973.
In May 1984, Tobacco Industries assigned the GALLO cigarette trademark
to La Campana which, on July 16, 1985, applied for trademark registration in the
Philippine Patent Office. On July 17, 1985, the National Library issued Certificate
of Copyright Registration No. 5834 for La Campana lifetime copyright claim over
GALLO cigarette labels.
Subsequently, La Campana authorized Mighty Corporation to manufacture
and sell cigarettes bearing the GALLO trademark. BIR approved Mighty
Corporations use of GALLO 100s cigarette brand, under licensing agreement with
Tobacco Industries, on May 18, 1988, and GALLO SPECIAL MENTHOL 100s
cigarette brand on April 3, 1989.

ISSUE:

Whether or not Mighty Corporation, et al. are liable for trademark

infringement.

RULING:

NO. The Supreme Court ruled that Mighty Corporation, et al. are not liable
for trademark infringement or unfair competition and reaffirmed the doctrine that
the use of an identical mark does not, by itself, lead to a legal conclusion that
there is trademark infringement. A crucial issue in any trademark infringement
case is the likelihood of confusion, mistake or deceit as to the identity, source or
origin of the goods, or identity of the business as a consequence of using a certain
mark.

In determining likelihood of confusion, the Supreme Court considered the

following factors: [a] the resemblance between the trademarks; [b] the similarity
of the goods to which the trademarks are attached; [c] the likely effect on the
purchaser; and [d] the registrant's express or implied consent and other fair and
equitable considerations.

The Supreme Court distinguished between GALLO wines and GALLO

cigarettes as follows: (1) wines are bottled and consumed by drinking while
cigarettes are packed in cartons or packages and smoked; (2) there is a whale of
a difference between their descriptive properties, physical attributes or essential
characteristics like form, composition, texture and quality; (3) GALLO cigarettes
are inexpensive items that appeal only to simple folks like farmers, fishermen,
laborers and other low-income workers while GALLO wines are patronized by
middle-to-high-income earners; and (4) GALLO cigarettes are distributed through
sidewalk vendors, sari-sari stores and grocery stores in rural areas, mainly in
Misamis Oriental, Pangasinan, Bohol, and Cebu, whereas GALLO wines are
imported and exclusively distributed by a local entity and sold in hotels, expensive
bars and restaurants, and high-end grocery stores and supermarkets.

Based on these distinctions, the High Tribunal declared that wines and
cigarettes are non-competing and totally unrelated products which are not likely
to cause confusion vis-à-vis the goods or business of Gallo Winery and Mighty
Corporation, et al. Thus, even though similar marks are used, there is no
trademark infringement if the public does not expect the plaintiff to make or sell
the same class of goods as those made or sold by the defendant.

Digested by: Garry Nee G Tungala JD-3A

Case No. 7 (Sec 168)

Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -

168.1. A person who has identified in the mind of the public the goods he manufactures or deals in,
his business or services from those of others, whether or not a registered mark is employed, has a
property right in the goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith by which
he shall pass off the goods manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are those
of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes
the goods with such appearance as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such
goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to induce
the false belief that such person is offering the services of another who has identified such services
in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or who shall commit any
other act contrary to good faith of a nature calculated to discredit the goods, business or services of
another.

168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29,
R. A. No. 166a)
JUNO BATISTIS, Petitioner,
vs.
PEOPLE OF THE PHILIPPINES, Respondent.

G.R. No. 181571: December 16, 2009

FACTS:

Allied Domecq Philippines, Inc., a Philippine corporation exclusively authorized to

distribute Fundador brandy products imported from Spain wholly in finished form,
initiated a case against Juno Batistis for violation of Section 155 (infringement of
trademark) of the Intellectual Property Code (Republic Act No. 8293).

The RTC found Batistis guilty beyond reasonable doubt for infringement of
trademark under Section 155 of the Intellectual Property Code and hereby
sentences him to suffer the penalty of imprisonment of TWO (2) YEARS and to
pay a fine of FIFTY THOUSAND (P50,000.00) PESOS. The CA affirmed the decision
of the trial court.

ISSUE:

Whether or not the penalty imposed against Batistis in relation to Sec.170 of the
Intellectual Property Code is correct.

RULING:

NO. The penalty thus fixed was contrary to the Indeterminate Sentence Law, as
amended by Act No. 4225. Section 1 of the Indeterminate Sentence Law, as
amended, provides:

Section 1. Hereafter, in imposing a prison sentence for an offense punished by the

Revised Penal Code, or its amendments, the court shall sentence the accused to
an indeterminate sentence the maximum term of which shall be that which, in
view of the attending circumstances, could be properly imposed under the rules
of the said Code, and the minimum which shall be within the range of the penalty
next lower to that prescribed by the Code for the offense; and if the offense is
punished by any other law, the court shall sentence the accused to an
indeterminate sentence, the maximum term of which shall not exceed the
maximum fixed by said law and the minimum shall not be less than the
minimum term prescribed by the same.

The straight penalty the CA imposed was contrary to the Indeterminate Sentence
Law, whose Section 1 requires that the penalty of imprisonment should be an
indeterminate sentence. According to Spouses Bacar v. Judge de Guzman,Jr.,the
imposition of an indeterminate sentence with maximum and minimum periods in
criminal cases not excepted from the coverage of the Indeterminate Sentence Law
pursuant to its Section 228 is mandatory.

The need for specifying the minimum and maximum periods of the indeterminate
sentence is to prevent the unnecessary and excessive deprivation of liberty and
to enhance the economic usefulness of the accused, since he may be exempted
from serving the entire sentence, depending upon his behavior and his physical,
mental, and moral record. The requirement of imposing an indeterminate sentence
in all criminal offenses whether punishable by the Revised Penal Code or by special
laws, with definite minimum and maximum terms, as the Court deems proper
within the legal range of the penalty specified by the law must, therefore, be
deemed mandatory.

Therefor, the Supreme Court affirm the decision dated September 13, 2007
rendered in C.A.-G.R. CR No. 30392 entitled People of the Philippines v. Juno
Batistis, but modify the penalty to imprisonment ranging from two (2)
years, as minimum, to three (3) years, as maximum, and a fine of
₱50,000.00.

Digested by: Garry Nee G Tungala JD-3A

Case No. 13 (Sec 170)

Sec. 170. Penalties. - Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty
thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on any
person who is found guilty of committing any of the acts mentioned in Section 155, Section 168 and
Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)