San Miguel vs.

Perez gr 166836
FACTS:
Private respondents, FITRITE Inc. and Victoria Biscuits Co., Inc., are engaged
in the business of manufacturing, selling and distributing biscuits and cookies bearing
the trademark “SUNSHINE” in the Philippines. Petitioner, CONRAD AND
COMPANU, Inc. is engaged in the business of importing, selling and distributing
biscuits and cookies in the Philippines.
Private respondents were granted the trademark “SUNSHINE” to be used on
biscuits and cookies by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT). For quite some time, the trademark “SUNSHINE” has been used by the
private respondents in the concept of an owner on its biscuits and cookies.
Meanwhile, petitioner was designated as the exclusive importer and dealer of
the products of “Sunshine Biscuits, Inc.” for sale in the Philippines.
Private respondents then filed a case before the Regional Trial Court, seeking
for remedies against infringement under Sec. 23 of Republic Act No. 166, as
amended, as well as of the remedies against unfair competition under Sec. 29 of the
same statue.
Petitioner then filed a motion to dismiss the complaint invoking, among
others, the doctrine of primary jurisdiction.

ISSUE:
Whether or not the doctrine of primary jurisdiction is applicable in the case at bar.

HELD:
No, the doctrine finds no merit in the case at bar.
While an application for the administrative cancellation of a registered
trademark falls under the exclusive cognizance of BPTTT, an action, however, for
infringement or unfair competition, as well as the remedy for injunction and relief for
damages, is explicitly and unquestionably within the competence and jurisdiction of
ordinary courts.
An application with BPTTT for an administrative cancellation of a registered
trade mark cannot per se have the effect of restraining or preventing the courts from
the exercise of their lawfully conferred jurisdiction. A contrary rule would unduly
expand the doctrine of primary jurisdiction which, simply expressed, would merely
behoove regular courts, in controversies involving specialized disputes, to defer to the
findings of resolutions of administrative tribunals on certain technical matters.