1. ABS-CBN Corp., petitioner vs. GMA Pres. and CEO Atty.

Felipe Gozon, GMA Vice President and COO Gilberto Duavit

Jr., Marissa L. Flores, Jessica A. Soho, GMA Head of News Operations Grace Dela Peña-Reyes, GMA News Program
Manager John Oliver Manalastas, et. al., respondents.

G.R. No. 195956, 1 March 2015

Ponente: Justice Marvic F. Leonen

FACTS

On August 13, 2004, petitioner ABS-CBN filed a criminal complaint against respondent GMA for (alleged) act of copyright infringement
under Sections 177 and 211 of the Intellectual Property Code ( RA 8293, as amended), because the respondent aired footage of the
arrival and homecoming of OFW Angelo dela Cruz at NAIA from Iraq without the petitioner's consent. ABS-CBN stated that it has an
agreement with Reuter's that the petitioner will contribute news and content that it owns and makes to Reuters in exchange of the
latter's news and video material, and Reuters will ensure that ABS-CBN's materials cannot be aired in the country.
The respondent was a subscriber of Reuter's and CNN live feeds. After it received the live feed of Angelo Dela Cruz's arrival and
homecoming from Reuter's, it immediately aired the video from that news feed. The respondent alleged that its news staff was not
aware that there was (a news embargo) agreement between ABS-CBN and Reuters. Respondent alleged that it was not also aware
that it aired petitioner's footage.
Assistant City Prosecutor Dindo Venturanza issued resolution on 3 December 2004 which found probable cause to indict Dela Peña-
Reyes and Manalastas. The respondents appealed the Prosccutor's resolution before DOJ. DOJ Secretary Raul M. Gonzalez ruled in
favor of respondents in his resolution dated 1 August 2005 and held that good faith may be raised as a defense in the case.
Meanwhile, DOJ Acting Secretary Alberto C. Agra issued a resolution on 29 June 2010 which reversed Sec. Gonzalez's resolution and
found probable cause to charge Dela Peña-Reyes, Manalastas, as well as to indict Gozon, Duavit, Jr., Flores, and Soho for violation of
the Intellectual Property Code (due to copyright infringement).
The Court of Appeals rendered a decision on 9 November 2010, which granted the Petition for Certiorari to reverse and set aside DOJ
Sec. Alberto Agra's resolution and a prayer for issuance of a temporary restraining order and/or Writ of Preliminary Injunction.
The appellate court stated that the petitioner has copyright of its news coverage, but respondents’ act of airing five (5) seconds of the
homecoming footage without notice
of the “No Access Philippines” restriction of the live Reuter's video feed, was undeniably attended by
good faith and thus, serves to exculpate from criminal liability under the Intellectual Property Code.

ISSUES

W/N there is probable cause to find respondents to be held liable criminally for the case of copyright
infringement under the Intellectual Property Law (RA 8293, as amended)?

HELD

The Supreme Court PARTIALLY GRANTED ABS-CBN’s petition and ordered RTC Q.C. Branch 93 to
continue with the criminal proceedings against Grace Dela Peña-Reyes and John Oliver Manalastas
due to copyright infringement.
The other respondents, Atty. Felipe Gozon, Gilberto Duavit Jr., Marissa L. Flores, and Jessica A.
Soho were held not liable for the (criminal) act of copyright infringement. The Court held that their
mere membership in GMA7's Board of Directors does not mean that they have knowledge, approval,
or participation in the criminal act of copyright infringement., as there is a need for their direct/active
participation in such act. Also, there was lack of proof that they actively participated or exercised
moral ascendancy over Manalastas and Dela Cruz-Pena.
Contrary to GMA’s contention, the Supreme Court deemed GMA's mere act of rebroadcast of ABS-
CBN’s news footage (arrival and homecoming of OFW Angelo dela Cruz at NAIA from Iraq last 22
July 2004) for 2 mins and 40 secs.without the latter's authority creates probable cause to find GMA's
news personnel Manalastas and Dela Peña-Reyes criminally liable for violating provisions of
Intellectual
Property Code (Section 216217 of RA 8293, as amended) that imposes strict
liability for copyright infringement, since they have not been diligent in their functions to prevent that
footage from being aired on television. They knew that there would be consequences in carrying
ABS-CBN’s footage in their broadcast – which is why they allegedly cut the feed from Reuters upon
seeing ABS-CBN’s logo and reporter.
The difference of an act mala in se and mala prohibita was stated in the present case. Acts mala in
se requires presence of criminal intent and the person's knowledge of the nature of his/her act, while
in acts mala prohibita, presence of criminal intent and the person's knowledge is not necessary. The
Court also stated that Philippine laws on copyright infringement does not require criminal intent
(mens rea) and does not support good faith as a defense. Thus, the act of infringement and not the
intent is the one that causes the damage.
It held that ABS -CBN's video footage is copyrightable because it is under “audiovisual works and
cinematographic works and works produced by a process
to cinematography or any process for making audiovisual
recordings.” It also stated that news or the event itself is not
copyrightable. The Court differentiated idea and expression – idea
meant as “a form, the look or appearance of a thing” while
expression is its reality or the “external, perceptible world of
articulate sounds and visible written symbols that others can
understand.” Thus, the Supreme Court stated that “only the
expression of an idea is protected by
copyright, not the idea itself”, citing the US Supreme Court's
decision
analogous in Baker vs
Selden (101 U.S. 99). In the present case, expression applies to
the event captured and presented in a specific medium via
cinematography or processes analogous to it.
The Court also gave the four-fold test under the Fair Use Doctrine
(stated in section 185 of RA 8293 or the Intellectual Property
Code, as amended) to determine fair use:
a. The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion
used in relation to the copyrighted work as a
whole; and
d. The effect of the use upon the potential
market for or value of the copyrighted work.
Fair use, which is an exception to copyright owner’s monopoly of
the work's usage, was defined by the Supreme Court as privilege
to use the copyrighted material in a reasonable manner without
the copyright owner's consent or by copying the material's theme
or idea rather than its expression.
It also said that determination of whether the Angelo dela Cruz
footage is subject to fair use is better left to the trial court where
the proceedings are currently pending.
2. McDonalds Corp. vs. LC Big Mak
18 August 2004, GR No. 143993
Facts:
Petitioner McDonald’s, an American corporation operating a
global chain of fast-food restaurants, is the owner of the ‘Big Mac’
mark for its double-decker hamburger sandwich here and in the
US. Meanwhile, respondent L.C., a domestic corporation which
operates fast-food outlets and snack vans applied for the
registration of the ‘Big Mak’ mark for its hamburger sandwiches.
Petitioner opposed on the ground that ‘Big Mak’ was a colorable
imitation of its registered ‘Big Mac’ mark for the same food
products. Respondents denied there is colorable imitation and
argued that petitioner cannot exclusively appropriate the mark ‘Big
Mac’ because the word ‘Big’ is a generic and descriptive term.
Petitioner filed a complaint for trademark infringement and unfair
competition. The trial court found for petitioners. CA held
otherwise.
Issues:
(1) Whether or not the word ‘Big Mac’ can be exclusively
appropriated by petitioner;
(2) Whether or not there is colorable imitation resulting in
likelihood of confusion;
(3) Whether or not there is unfair competition.
Ruling:
(1) YES. A mark is valid if it is “distinctive” and thus not barred
from registration under Section 4 of RA 166. However, once
registered, not only the mark’s validity but also the registrant’s
ownership of the mark is prima facie presumed. The “Big Mac”
mark, which should be treated in its entirety and not dissected
word for word, is neither generic nor descriptive. Generic marks
are commonly used as the name or description of a kind of goods,
such as “Lite” for beer or “Chocolate Fudge” for chocolate soda
drink. Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to
one who has never seen it or does not know it exists, such as
“Arthriticare” for arthritis medication. On the contrary, “Big Mac”
falls under the class of fanciful or arbitrary marks as it bears no
logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid.
Significantly, the trademark “Little Debbie” for snack cakes was
found arbitrary or fanciful.
(2) YES. In determining likelihood of confusion, 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. In contrast, the holistic test requires the court to
consider the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing
similarity. This Court, however, has relied on the dominancy test
rather than the holistic test. The test of dominancy is now explicitly
incorporated into law in Section 155.1 of the Intellectual Property
Code which defines infringement as the “colorable imitation of a
registered mark xxx or a dominant feature thereof.”
3.
Applying the dominancy test, the Court finds that respondents’
use of the “Big Mak” mark results in likelihood of confusion.
Aurally the two marks are the same, with the first word of both
marks phonetically the same, and the second word of both marks
also phonetically the same. Visually, the two marks have both two
words and six letters, with the first word of both marks having the
same letters and the second word having the same first two
letters. In spelling, considering the Filipino language, even the last
letters of both marks are the same. Clearly, respondents have
adopted in “Big Mak” not only the dominant but also almost all the
features of “Big Mac.” Applied to the same food product of
hamburgers, the two marks will likely result in confusion in the
public mind. Certainly, “Big Mac” and “Big Mak” for hamburgers
create even greater confusion, not only aurally but also visually.
Indeed, a person cannot distinguish “Big Mac” from “Big Mak” by
their sound. When one hears a “Big Mac” or “Big Mak” hamburger
advertisement over the radio, one would not know whether the
“Mac” or “Mak” ends with a “c” or a “k.”
(3) YES. The essential elements of an action for unfair
competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the public
and defraud a competitor. The confusing similarity may or may
not result from similarity in the marks, but may result from other
external factors in the packaging or presentation of the goods.
The intent to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be shown. Unfair
competition is broader than trademark infringement and includes
passing off goods with or without trademark infringement.
Trademark infringement is a form of unfair competition.
Trademark infringement constitutes unfair competition when there
is not merely likelihood of confusion, but also actual or probable
deception on the public because of the general appearance of the
goods. There can be trademark infringement without unfair
competition as when the infringer discloses on the labels
containing the mark that he manufactures the goods, thus
preventing the public from being deceived that the goods originate
from the trademark owner.
Respondents’ goods are hamburgers which are also the goods of
petitioners. Since respondents chose to apply the “Big Mak” mark
on hamburgers, just like petitioner’s use of the “Big Mac” mark on
hamburgers, respondents have obviously clothed their goods with
the general appearance of petitioners’ goods. There is actually no
notice to the public that the “Big Mak” hamburgers are products of
“L.C. Big Mak Burger, Inc.” and not those of petitioners who have
the exclusive right to the “Big Mac” mark. This clearly shows
respondents’ intent to deceive the public. We hold that as found
by the RTC, respondent corporation is liable for unfair
competition.
Smith Klein Beckman Corp. vs. Court of Appeals
14 August 2003, GR No. 126627
FACTS:
Smith Kline Beckman Corp. (US corporation) filed as assignee,
before the Philippine Patent Office an application for patent over
an invention entitled Methods and Compositions for Producing
Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate. Letters Patent for the aforesaid
invention was issued to petitioner for a term of 17 years, which
provides that the patented invention consisted of a new
compound named methyl 5 propylthio-2benzimidazole carbamate
and the methods or compositions utilizing the compound as an
active ingredient in fighting infections caused by gastrointestinal
parasites and lungworms in animals such as swine, sheep, cattle,
goats, horses, and even pet animals.
Tryco Pharma Corp. is a domestic corporation that manufactures,
distributes and sells veterinary products, including Impregon, a
drug that has Albendazole for its active ingredient and is claimed
to be effective against gastrointestinal roundworms, lungworms,
tapeworms and fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and
unfair competition before the Caloocan City RTC. It claimed that
its patent covers or includes the substance Albendazole such that
private respondent, by manufacturing, selling, using, and causing
to be sold and used the drug Impregon without its authorization,
committed infringement and unfair competition under RPC and
The Trademark Law for advertising and selling as its own the drug
Impregon although the same contained petitioner’s patented
Albendazole.

Private respondent averred that petitioner’s letter patent does not
cover the substance Albendazole for nowhere in it does that word
appear.
RTC ruled for the Respondent. CA upheld trial court’s ruling and
held that respondent was not liable for any infringement of the
patent of petitioner in light of the latter’s failure to show that
Albendazole is the same as the compound subject of its Letters
Patent, considered the U.S. patent as implying that Albendazole is
different from methyl 5 propylthio-2-benzimidazole carbamate,
and likewise found that private respondent was not guilty of
deceiving the public by misrepresenting that Impregon is its
product.
ISSUE/S: Whether private respondent committed patent
infringement to the prejudice of petitioner.
RULING: NO. 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. All that the claims disclose
are: the covered invention, that is, the compound methyl 5
propylthio-2-benzimidazole carbamate; the compounds being
anthelmintic but nontoxic for animals or its ability to destroy
parasites without harming the host animals; and the patented
methods, compositions or preparations involving the compound to
maximize its efficacy against certain kinds of parasites infecting
specified animals.
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
4.
words it had chosen would include. The mere absence of the
word Albendazole in Letters Patent No. 14561 is not
determinative of Albendazoles 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 petitioner’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
petitioner’s patent in spite of its omission therefrom or that the
meaning of the claims of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its
patent cannot establish private respondent’s infringement, it urges
this 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.
A scrutiny of petitioner’s evidence fails to convince this Court of
the substantial sameness of petitioners 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.
As stated early on, petitioners evidence fails to explain how
Albendazole is in every essential detail identical to methyl 5
propylthio-2-benzimidazole carbamate.
Air Philippines Corp. Vs. Pennswell
13 December 2007, GR No. 172835
Trade secrets should receive greater protection from discovery,
because they derive economic value from being generally
unknown and not readily ascertainable by the public.
Facts:
Petitioner Air Philippines Corporation is a domestic corporation
engaged in the business of air transportation services.  On the
other hand, respondent Pennswell, Inc. was organized to engage
in the business of manufacturing and selling industrial chemicals,
solvents, and special lubricants.
Respondent delivered and sold to petitioner sundry goods in
trade. Under the contracts, petitioner’s total outstanding obligation
amounted to P449,864.98 with interest at 14% per annum until
the amount would be fully paid.  For failure of the petitioner to
comply with its obligation under said contracts, respondent filed a
Complaint for a Sum of Money on 28 April 2000 with the RTC.
In its Answer, petitioner alleged that it was defrauded in the
amount of P592,000.00 by respondent for its previous sale of four
items. Petitioner asserted that it was deceived by respondent
which merely altered the names and labels of such goods.
Petitioner asseverated that had respondent been forthright about
the identical character of the products, it would not have
purchased the items complained of.
Moreover, petitioner alleged that when the purported fraud was
discovered, a conference was held between petitioner and
respondent on 13 January 2000, whereby the parties agreed that
respondent would return to petitioner the amount it previously
paid.  However, petitioner was surprised when it received a letter
from the respondent, demanding payment of the amount of
P449,864.94, which later became the subject of respondent’s
Complaint for Collection of a Sum of Money against petitioner.
During the pendency of the trial, petitioner filed a Motion to
Compel respondent to give a detailed list of the ingredients and
chemical components of the following products. The RTC
rendered an Order granting the petitioner’s motion.
Respondent sought reconsideration of the foregoing Order,
contending that it cannot be compelled to disclose the chemical
components sought because the matter is confidential.  It argued
that what petitioner endeavored to inquire upon constituted a
trade secret which respondent cannot be forced to divulge.
The RTC gave credence to respondent’s reasoning, and reversed
itself. Alleging grave abuse of discretion on the part of the RTC,
petitioner filed a Petition for Certiorari under Rule 65 of the Rules
of Court with the Court of Appeals, which denied the Petition and
affirmed the Order dated 30 June 2004 of the RTC. Petitioner’s
Motion for Reconsideration was denied. Unyielding, petitioner
brought the instant Petition before SC.
Issue:
W/N CA erred in upholding RTC decision denying petitioner’s
motion to subject respondent’s products to compulsory disclosure.
Held:
No. The products are covered by the exception of trade secrets
being divulged in compulsory disclosure.  The Court affirms the
ruling of the Court of Appeals which upheld the finding of the RTC
that there is substantial basis for respondent to seek protection of
the law for its proprietary rights over the detailed chemical
composition of its products.
The Supreme Court has declared that trade secrets and
banking transactions are among the recognized restrictions
to the right of the people to information as embodied in the
Constitution. SC said that the drafters of the Constitution also
unequivocally affirmed that, aside from national security matters
and intelligence information, trade or industrial secrets (pursuant
to the Intellectual Property Code and other related laws) as well
as banking transactions (pursuant to the Secrecy of Bank
Deposits Act), are also exempted from compulsory disclosure.
A trade secret is defined as a plan or process, tool, mechanism
or compound known only to its owner and those of his employees
to whom it is necessary to confide it. The definition also extends
to a secret formula or process not patented, but known only to
certain individuals using it in compounding some article of trade
having a commercial value. American jurisprudence has utilized
the following factors to determine if an information is a trade
secret, to wit:
(1) the extent to which the information is known
outside of the employer’s business;
(2) the extent to which the information is known by
employees and others involved in the business;
(3) the extent of measures taken by the employer to
guard the secrecy of the information;
(4) the value of the information to the employer and to
competitors;
(5) the amount of effort or money expended by the
company in developing the information; and
(6) the extent to which the information could be easily
or readily obtained through an independent source.
Rule 27 sets an unequivocal proviso that the documents, papers,
books, accounts, letters, photographs, objects or tangible things
that may be produced and inspected should not be privileged. The
documents must not be privileged against disclosure. On the
ground of public policy, the rules providing for production and
inspection of books and papers do not authorize the production or
inspection of privileged matter; that is, books and papers which,
because of their confidential and privileged character, could
not be received in evidence. Such a condition is in addition to
the requisite that the items be specifically described, and must
constitute or contain evidence material to any matter involved in
the action and which are in the party’s possession, custody or
control.
In the case at bar, petitioner cannot rely on Section 77of Republic
Act 7394, or the Consumer Act of the Philippines, in order to
compel respondent to reveal the chemical components of its
products.  While it is true that all consumer products domestically
sold, whether manufactured locally or imported, shall indicate their
general make or active ingredients in their respective labels of
packaging, the law does not apply to respondent.  Respondent’s
specialized lubricants — namely, Contact Grease, Connector
Grease, Thixohtropic Grease, Di-Electric Strength Protective
Coating, Dry Lubricant and Anti-Seize Compound — are not
consumer products.
What is clear from the factual findings of the RTC and the Court of
Appeals is that the chemical formulation of respondent’s products
is not known to the general public and is unique only to it.  Both
courts uniformly ruled that these ingredients are not within the
knowledge of the public.  Since such factual findings are generally
not reviewable by this Court, it is not duty-bound to analyze and
weigh all over again the evidence already considered in the
proceedings below.
The revelation of respondent’s trade secrets serves no better
purpose to the disposition of the main case pending with the RTC,
which is on the collection of a sum of money.  As can be gleaned
from the facts, petitioner received respondent’s goods in trade in
the normal course of business.  To be sure, there are defenses
under the laws of contracts and sales available to petitioner.  On
the other hand, the greater interest of justice ought to favor
respondent as the holder of trade secrets. Weighing the
conflicting interests between the parties, SC rules in favor of the
greater interest of respondent.  Trade secrets should receive
greater protection from discovery, because they derive
economic value from being generally unknown and not
readily ascertainable by the public.
5. Elidad Kho vs. Court of Appeals
19 March 2002, GR No. 115758
FACTS:  
Petitioner‘s allegations are that they are doing business under the name and
style of KEC Cosmetics Laboratory, registered owner of Chin Chun Su and oval
facial cream container/case, and alleges that she also has patent rights on Chin
Chun Su and Device and Chin Chun Su Medicated Cream after purchasing the
same from Quintin Cheng, the registered owner thereof in the supplemental
register of the Philippine Patent Office and that Summerville advertised and
sold petitioner’s cream products under the brand name Chin Chun Su, in
similar containers that petitioner uses, thereby misleading the public, and
resulting in the decline in the petitioner’s business sales and income; and, that
the respondents should be enjoined from allegedly infringing on the copyrights
and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that (1)
Summerville is the exclusive and authorized importer, re-packer and distributor
of Chin Chun Su products manufactured by Shun Yi factory of Taiwan, (2) that
the said Taiwanese manufacturing company authorized Summerville to register
its trade name Chin Chun Cu Medicated Cream with the Philippine Patent
office and Other appropriate governmental agencies; (3) that KEC Cosmetics
Laboratory of the petitioner obtained the copyrights through misrepresentation
and falsification; and, (4) that the authority of Quintin Cheng, assignee of the
patent registration certificate, to distribute and market Chin Chun Su products
in the Philippines had already terminated by the said Taiwanese manufacturing
company.
ISSUE:
Whether or not Kho has the sole right using the package of Chin Chun Su
products
RULING:
Petitioner has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream
product are proper subjects of a trademark in as much as the same falls
squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The
petitioner’s copyright and patent registration of the name and container
would not guarantee her the right to exclusive use of the same for the
reason that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be issued for the
reason that the petitioner has not proven that she has a clear right over the said
name and container to the exclusion of others, not having proven that she has
registered a trademark thereto or used the same before anyone did.
NOTE:
Trademark, copyright, and patents are different intellectual property rights
that cannot be interchanged with one another.  A trademark is any visible sign
capable of distinguishing the goods (trademark) or services (service mark) of
an enterprise and shall include a stamped or marked container goods.  In
relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise.  Meanwhile, the scope of copyright is confined to
literary and artistic works which are original intellectual creations in the literary
and artistic domain protected from the moment of their creation.  Patentable
inventions, on the other hand, refer to any technical solution of a problem in
any field of human activity which is new, involves an inventive step and is
industrial applicable.
6. Del Monte Corp. vs. Phil. Packaging
29 January 1990, GR No. 78325
Facts:
Petitioner Del Monte Corporation is a foreign company organized under the
laws of the United States and not engaged in business in the Philippines.
Both the Philippines and the United States are signatories to the
Convention of Paris, a treaty which grants to the nationals of the parties
rights and advantages which their own nationals enjoy for the repression of
acts of infringement and unfair competition. On the other hand, petitioner
Philippine Packing Corporation (Philpack) is a domestic corporation duly
organized under the laws of the Philippines.
Sometime in 1965, Del Monte authorized Philpack to register with the
Philippine Patent Office the Del Monte catsup bottle configuration, for which
it was granted Certificate of Trademark Registration by the Philippine
Patent Office under the Supplemental Register.  In 1969, Del Monte
granted Philpack the right to manufacture, distribute and sell in the
Philippines various agricultural products, including catsup, under the Del
Monte trademark and logo. In 1972, Del Monte also obtained two
registration certificates for its trademark “DEL MONTE” and its logo.
Respondent Sunshine Sauce Manufacturing Industries was issued a
Certificate of Registration by the Bureau of Domestic Trade in 1980 to
engage in the manufacture, packing, distribution and sale of various kinds
of sauce, identified by the logo Sunshine Fruit Catsup. The logo was
registered in the Supplemental Register in 1983. Sunshine Sauce’s product
itself was contained in various kinds of bottles, including the Del Monte
bottle, which it bought from the junk shops for recycling.
Philpack received reports that Sunshine Sauce was using its exclusively
designed bottles and a logo confusingly similar to Del Monte’s. Philpack
warned Sunshine Sauce to desist from doing so on pain of legal action.
Thereafter, claiming that the demand had been ignored, Philpack and Del
Monte filed a complaint against the Sunshine Sauce for infringement of
trademark and unfair competition.
Sunshine alleged that:
  it had long ceased to use the Del Monte bottle and that
 its logo was substantially different from the Del Monte logo and
would not confuse the buying public to the detriment of the
petitioners.
The RTC dismissed the complaint on the following grounds:
 there were substantial differences between the logos or trademarks
of the parties
 Sunshine Sauce became the owner of the said bottles upon its
purchase thereof from the junk yards
 Del Monte and Philpack had failed to establish the its malice or bad
faith, which is an essential element of infringement of trademark or
unfair competition
The CA affirmed RTC’s decision in toto. Hence, the appeal.
Issue(s):
 Whether or not Sunshine Sauce is guilty of unfair competition.
 Whether or not Sunshine Sauce is guilty of infringement for having
used the Del Monte bottle.
Held:
 Yes, it is guilty of unfair competition.
The SC compared the Del Monte and Sunshine Sauce’s packaging. While
it recognized several distinctions, it does not agree with the conclusion that
there was no infringement or unfair competition.
According to the SC, side-by-side comparison is not the final test of
similarity. Such comparison requires a careful scrutiny to determine in what
points the labels of the products differ, as was done by the trial judge. The
ordinary buyer does not usually make such scrutiny nor does he usually
have the time to do so. The average shopper is usually in a hurry and does
not inspect every product on the shelf as if he were browsing in a library.
The question is not whether the two articles are distinguishable by their
label when set side by side but whether the general confusion made by the
article upon the eye of the casual purchaser who is unsuspicious and off his
guard, is such as to likely result in his confounding it with the original.
A number of courts have held that to determine whether a trademark
has been infringed, we must consider the mark as a whole and not as
dissected. If the buyer is deceived, it is attributable to the marks as a
totality, not usually to any part of it. The court therefore should be guided by
its first impression, for a buyer acts quickly and is governed by a casual
glance, the value of which may be dissipated as soon as the court assumes
to analyze carefully the respective features of the mark.
It has also been held that it is not the function of the court in cases of
infringement and unfair competition to educate purchasers but rather to
take their carelessness for granted, and to be ever conscious of the fact
that marks need not be identical. A confusing similarity will justify the
intervention of equity.  The judge must also be aware of the fact that usually
a defendant in cases of infringement does not normally copy but makes
only colorable changes. Well has it been said that the most successful form
of copying is to employ enough points of similarity to confuse the public
with enough points of difference to confuse the courts.
The Sunshine label is a colorable imitation of the Del Monte trademark. The
predominant colors used in the Del Monte label are green and red-orange,
the same with Sunshine. The word “catsup” in both bottles is printed in
white and the style of the print/letter is the same. Although the logo of
Sunshine is not a tomato, the figure nevertheless approximates that of a
tomato.
 No, it is not guilty of infringement.
Sunshine Sauce is not guilty of infringement for having used the Del Monte
bottle. The reason is that the configuration of the said bottle was merely
registered in the Supplemental Register. Registration only in the
Supplemental Register means absence of the following presumptions:
validity of the trademark, the registrant’s ownership of the mark and his
right to its exclusive use.
7. Asia Brewery, Inc. vs. Court of Appeals
5 July 1993, GR NO. 103543
FACTS: In 1988, San Miguel Corporation (SMC) filed a complaint
against Asia Brewery Inc. (ABI) for infringement of trademark and
unfair competition on account of the latter's BEER PALE PILSEN
or BEER NA BEER product which has been competing with
SMC's SAN MIGUEL PALE PILSEN for a share of the local beer
market.
On August 27, 1990, a decision was rendered by the trial court,
presided over by Judge Jesus O. Bersamira, dismissing SMC's
complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC.
SMC appealed to the Court of Appeals which reversed the trial
court.
Upon a motion for reconsideration filed by ABI, the dispositive part
of the decision, was modified by the separate opinions of the
Special Sixth Division.
In due time, ABI appealed to the Supreme Court by a petition for
certiorari under Rule 45 of the Rules of Court.
ISSUE: The lone issue in this appeal is whether ABI infringes
SMC's trademark: San Miguel Pale Pilsen with Rectangular Hops
and Malt Design, and thereby commits unfair competition against
the latter.
HELD: The issue is factual (Phil. Nut Industry Inc. v. Standard
Brands Inc., 65 SCRA 575) and as a general rule, the findings of
the Court of Appeals upon factual questions are conclusive and
ought not to be disturbed by us.
The present case, however, is one of the exceptions because
there is no concurrence between the trial court and the Court of
Appeals on the lone factual issue of whether ABI, by
manufacturing and selling its BEER PALE PILSEN in amber
colored steinie bottles of 320 ml. capacity with a white painted
rectangular label has committed trademark infringement and
unfair competition against SMC.
Infringement of trademark is a form of unfair competition (Clarke
vs. Manila Candy Co., 36 Phil. 100, 106). Sec. 22 of Republic Act
No. 166, otherwise known as the Trademark Law, defines what
constitutes infringement:
Sec. 22. Infringement, what constitutes. — Any person who shall
use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection
with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark or trade-
name and apply such reproduction, counterfeit, copy, or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles
or advertisements intended to be used upon or in connection with
such goods, business or services, shall be liable to a civil action
by the registrant for any or all of the remedies herein provided.
This definition implies that only registered trade marks, trade
names and service marks are protected against infringement or
unauthorized use by another or others. The use of someone
else's registered trademark, trade name or service mark is
unauthorized, hence, actionable, if it is done "without the consent
of the registrant."
Does ABI's BEER PALE PILSEN label or "design" infringe upon
SMC's SAN MIGUEL PALE PILSEN WITH RECTANGULAR
MALT AND HOPS DESIGN? The answer is "No."
TEST OF DOMINANCY: Infringement is determined by the "test
of dominancy" rather than by differences or variations in the
details of one trademark and of another. The rule was formulated
in Co Tiong Sa vs. Director of Patents, 95 Phil. 1, 4 (1954);
reiterated in Lim Hoa vs. Director of Patents, 100 Phil. 214, 216-
217 (1956), thus:
It has been consistently held that the question of infringement of a
trademark is to be determined by the test of dominancy. Similarity
in size, form and color, while relevant, is not conclusive. If the
competing trademark contains the main or essential or dominant
features of another, and confusion and deception is likely to
result, infringement takes place. Duplication or imitation is not
necessary; nor it is necessary that the infringing label should
suggest an effort to imitate. The question at issue in cases of
infringement of trademarks is whether the use of the marks
involved would be likely to cause confusion or mistakes in the
mind of the public or deceive purchasers.
What are the dominant features of the competing trademarks
between SMC and ABI?
There is hardly any dispute that the dominant feature of SMC's
trademark is the name of the product: SAN MIGUEL PALE
PILSEN, written in white Gothic letters with elaborate serifs at the
beginning and end of the letters "S" and "M" on an amber
background across the upper portion of the rectangular design.
On the other hand, the dominant feature of ABI's trademark is the
name: BEER PALE PILSEN, with the word "Beer" written in large
amber letters, larger than any of the letters found in the SMC
label.
The word "BEER" does not appear in SMC's trademark, just as
the words "SAN MIGUEL" do not appear in ABI's trademark.
Hence, there is absolutely no similarity in the dominant features of
both trademarks.
Neither in sound, spelling or appearance can BEER PALE
PILSEN be said to be confusingly similar to SAN MIGUEL PALE
PILSEN. No one who purchases BEER PALE PILSEN can
possibly be deceived that it is SAN MIGUEL PALE PILSEN. No
evidence whatsoever was presented by SMC proving otherwise.
Besides the dissimilarity in their names, the following other
dissimilarities in the trade dress or appearance of the competing
products abound:
(1) Shape of the bottle;
(2) Font sizes and font styles used;
(3) The names of the manufacturers are prominently printed on
their respective bottles;
(4) The use of a copyrighted slogan on the product;
(5) Logos used;
(6) Other words on the product; and
(7) Substantial price difference between the products.
The fact that the words pale pilsen are part of ABI's trademark
does not constitute an infringement of SMC's trademark: SAN
MIGUEL PALE PILSEN, for "pale pilsen" are generic words
descriptive of the color ("pale"), of a type of beer ("pilsen"), which
is a light bohemian beer with a strong hops flavor that originated
in the City of Pilsen in Czechoslovakia and became famous in the
Middle Ages. "Pilsen" is a "primarily geographically descriptive
word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by
Sec. 2 of R.A. No. 638) hence, non-registerable and not
appropriable by any beer manufacturer.
The words "pale pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark:
SAN MIGUEL PALE PILSEN, any more than such descriptive
words as "evaporated milk," "tomato ketchup," "cheddar cheese,"
"corn flakes" and "cooking oil" may be appropriated by any single
manufacturer of these food products, for no other reason than that
he was the first to use them in his registered trademark.
A word or a combination of words which is merely descriptive of
an article of trade, or of its composition, characteristics, or
qualities, cannot be appropriated and protected as a trademark to
the exclusion of its use by others. (52 Am. Jur. 542-543.)
The circumstance that the manufacturer of BEER PALE PILSEN,
Asia Brewery Incorporated, has printed its name all over the bottle
of its beer product: on the label, on the back of the bottle, as well
as on the bottle cap, disproves SMC's charge that ABI dishonestly
and fraudulently intends to palm off its BEER PALE PILSEN as
SMC's product. In view of the visible differences between the two
products, the Court believes it is quite unlikely that a customer of
average intelligence would mistake a bottle of BEER PALE
PILSEN for SAN MIGUEL PALE PILSEN.
The fact that BEER PALE PILSEN like SAN MIGUEL PALE
PILSEN is bottled in amber-colored steinie bottles of 320 ml.
capacity and is also advertised in print, broadcast, and television
media, does not necessarily constitute unfair competition.
Unfair competition is the employment of deception or any other
means contrary to good faith by which a person shall pass off the
goods manufactured by him or in which he deals, or his business,
or services, for those of another who has already established
goodwill for his similar goods, business or services, or any acts
calculated to produce the same result. (Sec. 29, Republic Act No.
166, as amended.)
In this case, the question to be determined is whether ABI is using
a name or mark for its beer that has previously come to designate
SMC's beer, or whether ABI is passing off its BEER PALE
PILSEN as SMC's SAN MIGUEL PALE PILSEN.
THE UNIVERSAL TEST OF PUBLIC DECEPTION: The universal
test question is whether the public is likely to be deceived.
Nothing less than conduct tending to pass off one man's goods or
business as that of another will constitute unfair competition.
Actual or probable deception and confusion on the part of the
customers by reason of defendant's practices must always
appear. (Shell Co., of the Philippines, Ltd. vs. Insular Petroleum
Refining Co. Ltd. et al., 120 Phil. 434, 439.)
The use of ABI of the steinie bottle, similar but not identical to the
SAN MIGUEL PALE PILSEN bottle, is not unlawful. As pointed
out by ABI's counsel, SMC did not invent but merely borrowed the
steinie bottle from abroad and it claims neither patent nor
trademark protection for that bottle shape and design. (See rollo,
page 55.) The Cerveza Especial and the Efes Pale Pilsen use the
"steinie" bottle. (See Exhibits 57-D, 57-E.)
ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI
makes its own steinie bottle which has a fat bulging neck to
differentiate it from SMC's bottle. The amber color is a functional
feature of the beer bottle. As pointed out by ABI, all bottled beer
produced in the Philippines is contained and sold in amber-
colored bottles because amber is the most effective color in
preventing transmission of light and provides the maximum
protection to beer. As was ruled in California Crushed Fruit
Corporation vs. Taylor B. and Candy Co., 38 F2d 885, a merchant
cannot be enjoined from using a type or color of bottle where the
same has the useful purpose of protecting the contents from the
deleterious effects of light rays. Moreover, no one may have a
monopoly of any color. Not only beer, but most medicines,
whether in liquid or tablet form, are sold in amber-colored bottles.
CAPACITY OF THE BOTTLE: That the ABI bottle has a 320 ml.
capacity is not due to a desire to imitate SMC's bottle because
that bottle capacity is the standard prescribed under Metrication
Circular No. 778, dated 4 December 1979, of the Department of
Trade, Metric System Board.
WHITE LABEL OF BOTTLES: With regard to the white label of
both beer bottles, ABI explained that it used the color white for its
label because white presents the strongest contrast to the amber
color of ABI's bottle; it is also the most economical to use on
labels, and the easiest to "bake" in the furnace (p. 16, TSN of
September 20, 1988). No one can have a monopoly of the color
amber for bottles, nor of white for labels, nor of the rectangular
shape which is the usual configuration of labels. Needless to say,
the shape of the bottle and of the label is unimportant. What is all
important is the name of the product written on the label of the
bottle for that is how one beer may be distinguished form the
others.
CONFUSINGLY SIMILAR DRESS: The main thrust of SMC's
complaint if not infringement of its trademark, but unfair
competition arising form the allegedly "confusing similarity" in the
general appearance or trade dress of ABI's BEER PALE PILSEN
beside SMC's SAN MIGUEL PALE PILSEN (p. 209, Rollo)
SMC claims that the "trade dress" of BEER PALE PILSEN is
"confusingly similar" to its SAN MIGUEL PALE PILSEN because
both are bottled in 320 ml. steinie type, amber-colored bottles with
white rectangular labels.
However, when as in this case, the names of the competing
products are clearly different and their respective sources are
prominently printed on the label and on other parts of the bottle,
mere similarity in the shape and size of the container and label,
does not constitute unfair competition. The steinie bottle is a
standard bottle for beer and is universally used. SMC did not
invent it nor patent it. The fact that SMC's bottle is registered
under R.A. No. 623 (as amended by RA 5700, An Act to Regulate
the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs,
Barrels and Other Similar Containers) simply prohibits
manufacturers of other foodstuffs from the unauthorized use of
SMC's bottles by refilling these with their products. It was not
uncommon then for products such as patis (fish sauce) and toyo
(soy sauce) to be sold in recycled SAN MIGUEL PALE PILSEN
bottles. Registration of SMC's beer bottles did not give SMC a
patent on the steinie or on bottles of similar size, shape or color.
STANDARDIZED (SIZE) CONTAINERS: Most containers are
standardized because they are usually made by the same
manufacturer. Milk, whether in powdered or liquid form, is sold in
uniform tin cans. The same can be said of the standard ketchup
or vinegar bottle with its familiar elongated neck. Many other
grocery items such as coffee, mayonnaise, pickles and peanut
butter are sold in standard glass jars. The manufacturers of these
foodstuffs have equal right to use these standards tins, bottles
and jars for their products. Only their respective labels distinguish
them from each other. Just as no milk producer may sue the
others for unfair competition because they sell their milk in the
same size and shape of milk can which he uses, neither may
SMC claim unfair competition arising from the fact that ABI's
BEER PALE PILSEN is sold, like SMC's SAN MIGUEL PALE
PILSEN in amber steinie bottles.
8. Canon Kabushiki Kaisha vs. Court of Appeals
20 July 2000, GR No. 120900
FACTS: NSR Rubber Corp., filed an application for registration of the mark
CANON for sandals  (Class 25) in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). The application was opposed by Canon
Kabushiki Kaisha (CKK), a foreign corp. under the laws of Japan.
NSR was declared in default upon motion of CKK. CKK presented as its
evidence certificates of registration for the mark CANON in various countries
and in the Philippines covering goods belonging to Class 2 (paints, chemical
products, toner and dyestuff).
Ruling of the BPTTT: denied the opposition of CKK and granted the application
of NSR Rubber Corp.
CA: affirmed
Both lower courts ruled that there is a dissimilarity between the products of
CKK and NSR, i.e. CKK: paints, chemical products, toner and dyestuff; while
NSR: sandals
ISSUE/S:
1. WON CKK trademark is violated. NO.
2. WON CKK can exclusively use ‘CANON’ as protected by the Paris
Convention. NO.
RULING:
Ordinarily, the ownership of a trademark or tradename is a property right that
the owner is entitled to protect as mandated by the Trademark Law. However,
when a trademark is used by a party for a product in which the other party does
not deal, the use of the same trademark on the latter’s product cannot be
validly objected to.
The certificates of registration for the trademark CANON in other countries and
in the Philippines clearly showed that said certificates cover goods belonging to
class 2 (paints, chemical products, toner, dyestuff). As such, NSR t can use the
trademark CANON for its goods classified as class 25 (sandals). Clearly, there
is a world of difference between the paints, chemical products, toner, and
dyestuff and sandals.
The certificate of registration confers upon the trademark owner the exclusive
right to use its own symbol only to those goods specified in the certificate,
subject to the conditions and limitations stated therein. Thus, the exclusive right
of CKK to use the trademark CANON is limited to the products covered by its
certificate of registration.
The likelihood of confusion of goods or business is a relative concept, to be
determined only according to the particular, and sometimes peculiar,9. Pearl & Dean Phils., Inc. vs. Shoemart
circumstances of each case. Indeed, in trademark law cases, even more than 15 August 2003, GR No. 148222
in other litigation, precedent must be studied in the light of the facts of the
particular case.
FACTS:
Here, the products involved are so unrelated that the public will not be misled
that there is the slightest nexus between petitioner and the goods of private Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture
respondent. of advertising display units simply referred to as light boxes. PDI
was able to secure a Certificate of Copyright Registration, the
Goods are related when they belong to the same class or have the same
descriptive properties; when they possess the same physical attributes or
advertising light boxes were marketed under the trademark
essential characteristics with reference to their form, composition, texture or “Poster Ads”.
quality. They may also be related because they serve the same purpose or are
sold in grocery stores.
In 1985, PDI negotiated with defendant-appellant Shoemart, Inc.
Here, the paints, chemical products, toner and dyestuff of CKK that carry the (SMI) for the lease and installation of the light boxes in certain SM
trademark CANON are unrelated to sandals, the product of NSR. The two Makati and SM Cubao. PDI submitted for signature the contracts
classes of products in this case flow through different trade channels. The covering both stores, but only the contract for SM Makati,
products of CKK are sold through special chemical stores or distributors while however, was returned signed. Eventually, SMI’s informed PDI
the products of NSR are sold in grocery stores, sari-sari stores and department
stores.
that it was rescinding the contract for SM Makati due to non-
performance of the terms thereof.
 A tradename refers to the business and its goodwill while a trademark refers to
the goods.
Years later, PDI found out that exact copies of its light boxes were
Regarding the applicability of Article 8 of the Paris Convention (“A tradename installed at different SM stores. It was further discovered that
shall be protected in all the countries of the Union without the obligation of filing SMI’s sister company North Edsa Marketing Inc. (NEMI), sells
or registration, whether or not it forms part of a trademark.), there is no advertising space in lighted display units located in SMI’s different
automatic protection afforded an entity whose tradename is alleged to have branches.
been infringed through the use of that name as a trademark by a local entity.
However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin,
issued a memorandum dated 25 October 1983 to the Director of Patents, a set PDI sent a letter to both SMI and NEMI enjoining them to cease
of guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris.
using the subject light boxes, remove the same from SMI’s
These conditions are: establishments and to discontinue the use of the trademark
1.) the mark must be internationally known; “Poster Ads,” as well as the payment of compensatory damages.
2.) the subject of the right must be a trademark, not a patent or copyright or
anything else;
3.) the mark must be for use in the same or similar kinds of goods; and Claiming that both SMI and NEMI failed to meet all its demands,
4.) the person claiming must be the owner of the mark PDI filed this instant case for infringement of trademark and
copyright, unfair competition and damages.
CKK failed to comply with the third requirement of the said memorandum. CKK
is using the mark “CANON” for products belonging to class 2 (paints, chemical
products) while NSR is using the same mark for sandals (class 25). 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:
1. Whether athe light box depicted in such engineering
drawings ipso facto also protected by such copyright.
2. Whether there was a patent infringement.
3. Whether the owner of a registered trademark legally
prevent others from using such trademark if it is a mere
abbreviation of a term descriptive of his goods, services or
business?
RULING:
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
The Court of Appeals correctly held that the copyright was limited
to the drawings alone and not to the light box itself.
Although petitioner’s copyright certificate was entitled “Advertising
Display Units” (which depicted the box-type electrical devices), its
claim of copyright infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory
right. Accordingly, it can cover only the works falling within the
statutory enumeration or description.
Even as we find that P & D indeed owned a valid copyright, the
same could have referred only to the technical drawings within the
category of “pictorial illustrations.” It could not have possibly
stretched out to include the underlying light box. The light box was
not a literary or artistic piece which could be copyrighted under
the copyright law.
The Court reiterated the ruling in the case of Kho vs. Court of
Appeals, differentiating patents, copyrights and trademarks,
namely:
A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying
or distinguishing an enterprise. Meanwhile, the scope of
a copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a
problem in any field of human activity which is new, involves an
inventive step and is industrially applicable.
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 the very business engaged in by petitioner. “Secondary meaning”
and profiting from the invention, a patent is a primordial means that a word or phrase originally incapable of exclusive
requirement. No patent, no protection. appropriation with reference to an article in the market might
nevertheless have been used for so long and so exclusively by
ON THE ISSUE OF TRADEMARK INFRINGEMENT one producer with reference to his article that, in the trade and to
that branch of the purchasing public, the word or phrase has
come to mean that the article was his property.
On the issue of trademark infringement, the petitioner’s president
said “Poster Ads” was a contraction of “poster advertising.” P & D
was able to secure a trademark certificate for it, but one where the The petition is DENIED
goods specified were “stationeries such as letterheads,
envelopes, calling cards and newsletters.”Petitioner admitted it did
not commercially engage in or market these goods. On the
contrary, it dealt in electrically operated backlit advertising units
which, however, were not at all specified in the trademark
certificate.

Assuming arguendo that “Poster Ads” could validly qualify as a

trademark, the failure of P & D to secure a trademark registration
for specific use on the light boxes meant that there could not have
been any trademark infringement since registration was an
essential element thereof.

ON THE ISSUE OF UNFAIR COMPETITION

There was no evidence that P & D’s use of “Poster Ads” was
distinctive or well-known. As noted by the Court of Appeals,
petitioner’s expert witnesses himself had testified that ” ‘Poster
Ads’ was too generic a name. So it was difficult to identify it with
any company, honestly speaking.”This crucial admission that
“Poster Ads” could not be associated with P & D showed that, in
the mind of the public, the goods and services carrying the
trademark “Poster Ads” could not be distinguished from the goods
and services of other entities.

“Poster Ads” was generic and incapable of being used as a

trademark because it was used in the field of poster advertising,