MIRPURI vs. CA G.R. No.

114508, November 19, 1999

Puno, J.
Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the
trademark “Barbizon” for use in horsiers and ladies undergarments (IPC No. 686). Private
respondent reported Barbizon Corporation, a corporation organized and doing business under
the laws of New York, USA, opposed the application. It was alleged that its trademark is
confusingly similar with that of Escobar and that the registration of the said trademark will
cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due
course to the application. Escobar later assigned all his rights and interest over the trademark
to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the
trademark required under the Philippine Trademark Law. Due to this failure, the Bureau
cancelled Escobar’s certificate of registration. In 1981, Escobar and petitioner separately filed
this application for registration of the same trademark. (IPC 2049). Private respondent opposed
again. This time it alleged (1) that the said trademark was registered with the US Patent Office;
(2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that
its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of
the RPC. Petitioner raised the defense of Res Judicata.
Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC
No. 2049 involve the same cause of action?
Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised
the issue of ownership, the first registration and use of the trademark in the US and other
countries, and the international recognition of the trademark established by extensive use and
advertisement of respondents products for over 40 years here and abroad. These are different
from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have
been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in
IPC 2049 stems from the respondents claims originator of the word and symbol “Barbizon”, as
the first and registered user of the mark attached to its products which have been sold
and advertised would arise for a considerable number of years prior to petitioner’s first
application. Indeed, these are substantial allegations that raised new issues and necessarily
gave respondents a new cause of action.
Moreover, the cancellation of petitioner’s certificate registration for failure
to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose
the second application.
It is also to be noted that the oppositions in the first and second cases are based on different
laws. Causes of action which are distinct and independent from each other, although out of the
same contract, transaction, or state of facts, may be sued on separately, recovery on one being
no bar to subsequent actions on others. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operating as res judicata,
such as where the actions are based on different statutes.
Puma vs IAC GR No. 75067
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, and North Edsa Marketing,
Incorporated 15 August 2003
Cornoa, J:

FACTS:

Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture of advertising display units
simply referred to as light boxes. PDI was able to secure a Certificate of Copyright Registration,
the advertising light boxes were marketed under the trademark “Poster Ads”.

In 1985, PDI negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in certain SM Makati and SM Cubao. PDI submitted for signature
the contracts covering both stores, but only the contract for SM Makati, however, was returned
signed. Eventually, SMI’s informed PDI that it was rescinding the contract for SM Makati due to
non-performance of the terms thereof.

Years later, PDI found out that exact copies of its light boxes were installed at different SM
stores. It was further discovered that SMI’s sister company North Edsa Marketing Inc. (NEMI),
sells advertising space in lighted display units located in SMI’s different branches.

PDI sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes,
remove the same from SMI’s establishments and to discontinue the use of the trademark
“Poster Ads,” as well as the payment of compensatory damages.

Claiming that both SMI and NEMI failed to meet all its demands, PDI filed this instant case for
infringement of trademark and copyright, unfair competition and damages.

SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology, without notice of or reference to PDI’s copyright. SMI
noted that the registration of the mark “Poster Ads” was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word “Poster Ads” is a
generic term which cannot be appropriated as a trademark, and, as such, registration of such
mark is invalid. On this basis, SMI, aside from praying for the dismissal of the case, also
counterclaimed for moral, actual and exemplary damages and for the cancellation of PDI’s
Certification of Copyright Registration, and Certificate of Trademark Registration.

The RTC of Makati City decided in favour of PDI, finding SMI and NEMI jointly and severally
liable for infringement of copyright and infringement of trademark

On appeal, however, the Court of Appeals reversed the trial court.

ISSUES:

Whether there was a patent infringement.

RULING:

ON THE ISSUE OF PATENT INFRINGEMENT

Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights
which and could not legally prevent anyone from manufacturing or commercially using the
contraption. To be able to effectively and legally preclude others from copying and profiting
from the invention, a patent is a primordial requirement. No patent, no protection.

Booth vs Director of Patents

January 28, 1980
Melencio-Herrera, J.

Facts
Petitioners Claims:
BOOTHE and MORTON, chemists, citizens and residents of the United States, claim to be the
inventors of a new antibiotic designated as "tetracycline", a new derivative of chlortetracycline
(popularly known as "aureomycin). They filed an application for Letters Patent in the Philippines
with a claim for priority right pursuant to section 15 (Application previously filed abroad) of the
Patent Law. According to them, they are entitled to the right of priority granted to foreign
applicants since they have filed their application for Letters Patent with Specifications before
the Director of Patents on March 5, 1954 or within 1 year from March 16, 1953, the date of
their Application for Letters Patent in the United States. However, the Chief Patent Examiner
treated the same as an ordinary application since the Specifications submitted by BOOTHE and
MORTON within the one year period lack nine pages thus, incomplete. BOOTHE and MORTON
appealed to the Director of Patent and have claimed that the defect was a mere minor
informality and that they should still be given the priority right. The Director of Patents ruled on
matter not raised by BOOTHE and MORTON. Hence, the latter claims that the Director of
Patents should only confine his decision to the issue of whether or not the additional nine
pages of Specification they had submitted should be treated as new matter.

Respondents Claims:
The DIR OF PATENTS allowed the lacking pages but however ruled that the application of
BOOTHE and MORTON should only be treated as an ordinary one because they have only filed
the required certified copy of their foreign application on April 14, 1954. Thus, the filing date of
the application should be changed from March 5, 1954 to April 14, 1954.

Issue/s:
(a) Whether or not the DIR OF PATENTS shall only confine his decision to the matters appealed
from.
(b) Whether or not the DIR OF PATENTS erred in holding that the aforesaid application does not
fall under Section 15 of the Patent Law.

Ruling:
(a) NO. The DIR OF PATENTS is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal. He need not confine himself only
to issues invoked. It was earlier concluded by the Supervising Patent Examiner that inasmuch as
the submitted pages did not correspond with the certified copy of the US application, the
present application cannot therefore be granted priority date under Section 15 as requested by
applicant. What Respondent Director exercised was within his authority to review the decisions
of Patents Examiners.
(b) NO. Under Sections 47 and 48 of the Patent Law, It is imperative that the application be
complete in order that it may be accepted. It is essential to the validity of Letters Patent that
the specification be full, definite and specific. The purpose of said requirement is to apprise the
public of that patentee claims as his invention, to inform Courts as to what they are called to
construe, and to convey to competing manufacturers and dealers information what they are
bound to avoid. The defect was one of substance and not merely one of form. An invention
disclosed in a previously filed application must be described within the instant application such
a manner as to enable one skilled in the art to use the same for a legally adequate utility. The
specification which BOOTHE and MORTON submitted on March 5, 1954 was far from complete.
That defect was one of substance and not merely one of form. What BOOTHE and MORTON
claimed as their invention was not completely determinable therefrom. The application of
BOOTHE and MORTON could be deemed as complete only on July 2, 1963 when they submitted
the additional pages on the Specifications and Claims.

Angelita Manzano vs CA
September 5, 1997
Bellosillo, J.

FACTS:
Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters
Patent for a gas burner registered in the name of private respondent Madolaria who
subsequently assigned the same to private respondent United Foundry. Petitioner alleged that
the utility model covered by the letters patent was not inventive, new, or useful, the specification
did not comply with the requirements of R.A. No. 165, that respondent was not the original, true,
and actual inventor nor did she derive her rights from the same, and that respondent was guilty
of fraud or misrepresentation in applying for the letters patent.

Petitioner also alleged that the utility model in question had already been in use and on sale
(petitioner herself being a distributor/seller of the said gas burners) in the Philippines for more
than one year before the respondent filed for the application. Petitioner presented two undated
brochures of two different Gas companies (Manila Gas Corp. & Esso Gasul) which allegedly
depicts an identical gas burner as the one covered in respondent’s letters patent. Respondent
presented her husband as lone witness to testify that respondent, thru complaints of customers,
devised a way to solve the defects in the gas burners, and respondent’s innovation is now the
subject of the letters patent.

The Director of Patents denied the petition for cancellation, which was affirmed by the CA, on
the ground that petitioner was not able to convincingly establish that the patented utility model
was not novel. Petitioner failed to overcome her burden and overturn the presumption of legality
of the issuance of letters patent and that respondent withheld material facts with intent to
deceive which, if disclosed, would have resulted in the refusal by the PPO to issue the letters
patent. Hence, this appeal.

ISSUE:
WON the CA erred in upholding the decision of the Director of Patents.

RULING:
NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO found her
invention novel and patentable. The issuance of such patent creates a presumption which yields
only to clear and cogent evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the burden is a heavy one which is
met only by clear and satisfactory proof which overcomes every reasonable doubt.

As found by the Director of Patents, the standard of evidence sufficient to overcome the
presumption of legality of the issuance of letters patent to respondent Madolaria was not legally
met by petitioner in her action for the cancellation of the patent. The findings and conclusions of
the Director of Patent were reiterated and affirmed by the Court of Appeals. The rule is settled
that the findings of fact of the Director of Patents, especially when affirmed by the Court of
Appeals, are conclusive on this Court when supported by substantial evidence.

The validity of the patent issued by the PPO in favor of private respondent and the question over
the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters
which are better determined by the PPO. The technical staff of the Philippine Patent Office
composed of experts in their field has by the issuance of the patent in question accepted private
respondents’ model of gas burner as a discovery. There is a presumption that the Office has
correctly determined the patentability of the model and such action must not be interfered with
in the absence of competent evidence to the contrary.

Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc.

November 17, 2010
Peralta, J.

Facts
Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed
under the brand name “Unasyn.” Sometime in January and February 2003, Pfizer discovered
that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals
without the Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist from
accepting such bids. Pfizer also demanded that Pharmawealth immediately withdraw its bids to
supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction
and forfeiture of the infringing products. A preliminary injunction effective for 90 days was
granted by the IPO’s Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for extension
filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals
(CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC)
a complaint for infringement and unfair competition, with a prayer for injunction. The RTC
issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping.
Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a motion
to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making
the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because
this was granted to the Director General. The CA denied all the motions. Pharmawealth filed a
petition for review on Certiorari with the Supreme Court.

Issues:
a) Can an injunctive relief be issued based on an action of patent infringement when the patent
allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the
Intellectual Property Office?

Held:
a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that
"the patentee shall have the exclusive right to make, use and sell the patented machine, article
or product, and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent; and such making, using,
or selling by any person without the authorization of the patentee constitutes infringement of
the patent."

Clearly, the patentee’s exclusive rights exist only during the term of the patent. Since the patent
was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165, after
17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right
to make, use, and sell the products covered by their patent. The CA was wrong in issuing a
temporary restraining order after the cut-off date.

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over
decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a
decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding
interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules
and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper
remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

Roma Drug vs Regional Trial Court

Pascual Godines vs CA
September 13, 1993
Romero, J.

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 respondents’ 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, “an 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.

Smith Kline Beckman Corporation vs CA

August 14, 2003
Carpio-Morales, J.

Facts
Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine Patent Office
Letters Patent No. 14561 over an invented compound entitled “Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.”
Such compound is claimed to be an active ingredient in fighting various parasites in certain
types of domestic and livestock animals. Respondent Tryco Pharma (Tryco) sells veterinary
products including a drug Impregon which contains Albendazole as an active ingredient which
fights against parasites in animals. Petitioner SKBC then filed an action against respondent
Tryco for patent infringement claiming that the patent granted to them includes said
Albendazole. In their defense respondent Tryco alleges that Letters Patent No. 14561 granted
to petitioner SKBC does not include Albendazole for nowhere is such word found in the patent.
The Trial Court rendered its decision in favor of respondent Tryco which was affirmed by
the Court of Appeals.

Issues:
Whether or not the Court of Appeals erred in not finding that Albendazole is included in
petitioners Letter Patent No. 14561

Held:

From an examination of the evidence on record, the Court finds nothing infirm in
the appellate court’s conclusions with respect to the principal issue of whether Tycho Pharma
committed patent infringement to the prejudice of SKBC. The burden of proof to substantiate a
charge for patent infringement rests on the plaintiff. In the case at bar, petitioner’s evidence
consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products Division, by which it sought to show
that its patent for the compound methyl 5 propylthio-2- benzimidazole carbamate also covers
the substance Albendazole. From a reading of the 9 claims of Letters Patent No. 14561 in
relation to the other portions thereof, no mention is made of the compound Albendazole.

When the language of its claims is clear and distinct, the patentee is bound thereby and may
not claim anything beyond them. And so are the courts bound which may not add to or detract
from the claims matters not expressed or necessarily implied, nor may they enlarge the patent
beyond the scope of that which the inventor claimed and the patent office allowed, even if the
patentee may have been entitled to something more than the words it had chosen would
include. It bears stressing that the mere absence of the word Albendazole in Letters Patent No.
14561 is not determinative of Albendazole’s non-inclusion in the claims of the patent. While
Albendazole is admittedly a chemical compound that exists by a name different from that
covered in SKBC’s letters patent, the language of Letter Patent No. 14561 fails to yield anything
at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that
Albendazole inheres in SKBC’s patent in spite of its omission therefrom or that the meaning of
the claims of the patent embraces the same. While SKBC concedes that the mere literal
wordings of its patent cannot establish Tyco Pharma’s infringement, it urges the Court to apply
the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same
way to achieve substantially the same result. Yet again, a scrutiny of SKBC’s evidence fails to
convince the Court of the substantial sameness of SKBC’s 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.

Converse Rubber Corp. vs Converse Rubber Products

January 8, 1987

Facts
Respondent Universal Rubber applied for the registration of the trademark ‘Universal Converse
and Device’ used on its rubber shoes and rubber slippers. Petitioner Converse opposed on the
ground that the trademark sought to be registered is confusingly similar to the word ‘Converse’
which is part of its corporate name ‘Converse Rubber Corporation’ and will likely deceive
purchasers and cause irreparable injury to its reputation and goodwill in the Philippines.
Respondent argued that the trademarks petitioner uses on its rubber shoes are ‘Chuck Taylor’
and ‘All Star Device.’ The Director of Patents gave due course to respondent’s application. MR
was denied.
Issue:
Whether or not there is confusing similarity between the two trademarks.
Ruling:
YES. The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular
manner on the side of its rubber shoes. In the same manner, the trademark of petitioner which
reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its
rubber shoes. The determinative factor in ascertaining whether or not marks are confusingly
similar to each other “is not whether the challenged mark would actually cause confusion or
deception of the purchasers but whether the use of such mark would likely cause confusion or
mistake on the part of the buying public. It would be sufficient, for purposes of the law that the
similarity between the two labels is such that there is a possibility or likelihood of the purchaser
of the older brand mistaking the new brand for it.” Even if not all the details just mentioned were
identical, with the general appearance alone of the two products, any ordinary, or even perhaps
even a not too perceptive and discriminating customer could be deceived“
But even assuming, arguendo, that the trademark sought to be registered by respondent is
distinctively dissimilar from those of the petitioner, the likelihood of confusion would still
subsists, not on the purchaser’s perception of the goods but on the origins thereof. By
appropriating the word “CONVERSE,” respondent’s products are likely to be mistaken as having
been produced by petitioner. “The risk of damage is not limited to a possible confusion of goods
but also includes confusion of reputation if the public could reasonably assume that the goods of
the parties originated from the same source.