G.R. No.

154342             July 14, 2004

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC., petitioner,

vs.
E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC., respondents.

FACTS:
Respondents sued the petitioners in Makati RTC for trademark and trade name
infringement and unfair competition, with a prayer for damages and preliminary
injunction.

They alleged that petitioners adopted the Gallo trademark to ride on the
respondents’ trademark’s established reputation and popularity, thus causing
confusion, deception and mistake to the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s
wines.

Petitioners contended that petitioners Gallo cigarettes and Gallo Winery’s wine
were totally unrelated products. Gallo Winery’s GALLO trademark registration
certificates covered wines only, and the wines were sold through different
channels of trade. Also, the target  market of Gallo Winery’s wines was the middle
or high-income bracket while Gallo cigarette buyers were farmers, fishermen,
laborers and other low-income workers.
In addition, that the dominant feature of the Gallo cigarette was the rooster
device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION,
while in the case of Gallo Winery’s wines, it was the full names of the founders-
owners ERNEST & JULIO GALLO or just their surname GALLO.

ISSUE: Whether GALLO cigarettes and GALLO wines were identical, similar or

related goods for the reason alone that they were purportedly forms of vice.

Ruling:

NO.
Wines and cigarettes are not identical, similar, competing or related goods.

Several factors come into play n resolving whether goods are related, to wit:
1.  the business (and its location) and class to which the goods belong
2. the product’s quality, quantity, or size, including the nature of the package,
wrapper or container
3. the nature and cost of the articles
4. the descriptive properties, physical attributes or essential characteristics with
reference to their form, composition, texture or quality
5. the purpose of the goods
6. whether the article is bought for immediate consumption, that is, day-to-day
household items
7. the field of manufacture
8. the conditions under which the article is usually purchased and
9. the articles of the trade through which the goods flow, how they are distributed,
marketed, displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some

persons in some measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been associated. The
simulation, in order to be objectionable, must be as appears likely to mislead the
ordinary intelligent buyer who has a need to supply and is familiar with the article
that he seeks to purchase.

The petitioners are not liable for trademark infringement, unfair competition or
damages.

G.R. No. 148222               August 15, 2003

PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,

vs.
SHOEMART, INCORPORATED, and NORTH EDSA MARKETING,
INCORPORATED, Respondents.

FACTS:

Petitioner (PDI) is engaged in the manufacture of light boxes and was able to
secure a Certificate of Copyright Registration. The light boxes were marketed
under the trademark “Poster Ads”. It negotiated an agreement with defendant-
appellant Shoemart, Inc (SMI) for the lease and installation of light boxes in SM
Makati and SM Cubao but the latter cancelled the contract for SM Makati due to
non-performance of the terms thereof.

Years later, PDI discovered that exact copies of its light boxes were installed at
different SM stores and that SMI’s sister company North Edsa Marketing Inc. sells
advertising space in lighted display units. PDI sent a letter to respondents
enjoining them to cease using the subject light boxes, remove the same from SMI’s
establishments , discontinue the use of the trademark “Poster Ads,” and pay
compensatory damages.

Petitioners alleged that respondents failed to meet these demand, hence the
instant case for infringement of trademark and copyright, unfair competition and
damages.

SMI contended that it independently developed its poster panels using commonly
known techniques and available technology, without notice of or reference to
PDI’s copyright and that the registration of the mark “Poster Ads” was only for
stationeries such as letterheads, envelopes, and the like. 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. Aside from praying for the
dismissal of the case, SMI 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 decided in favour of PDI, finding SMI and NEMI jointly and severally liable
for infringement of copyright and trademark which the CA reversed on the appeal.

ISSUES:

1. Whether there was trademark and copyright infringement?

2. Whether the owner of a registered trademark could legally prevent others
from using such trademark if it is a mere abbreviation of a term descriptive
of his goods, services or business?

RULING:

The CA 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”, its claim of copyright infringement cannot be
sustained.

PDI indeed owned a valid copyright, but 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 since it is not a
literary or artistic piece which could be copyrighted under the copyright law.

Petitioner never secured a patent for the light boxes and therefore acquired no
patent rights which 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.

On the issue of trademark infringement, the petitioner said “Poster Ads” was a
contraction of “poster advertising.” PDI was able to secure a trademark certificate
for it, but one for “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 were not at all specified in the trademark certificate.

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

failure of PDI to secure a trademark registration for specific use on the light boxes
meant that there could not have been any trademark infringement.

There was no evidence that PDI’s use of “Poster Ads” was distinctive or well-
known. As noted by the CA, 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 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.

The petition is DENIED.

G.R. No. 115758. March 19, 2002.

ELIDAD C. KHO, Petitioner, v. HON. COURT OF APPEALS, et. al, Respondents.)

FACTS:

Petitioner claims 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. Petitioner further 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 causing 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’ contentions were:

(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.

HELD:

 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.

G.R. NO. 179127 December 24, 2008

IN-N-OUT BURGER, INC., Petitioner, v. SEHWANI et. al, Respondents.

Facts:

Petitioner IN-N-OUT BURGER, INC., a restaurant business that operates in

California, is a signatory to the Convention of Paris on Protection of Industrial

Property and the TRIPS Agreement but has never engaged in business in the

Philippines. Respondents are corporations organized in the Philippines.

Sometime in 1991, respondent filed with the BPTTT an application for the

registration of the mark “IN N OUT (the inside of the letter “O” formed like a

star). In 2000, respondents entered into a Licensing Agreement, wherein the

former entitled the latter to use its registered mark, “IN N OUT.”

Sometime in 1997, In-N-Out Burger filed trademark and service mark applications

with the Bureau of Trademarks for the “IN-N-OUT” and “IN-N-OUT Burger & Arrow

Design. In 2000, petitioner found out that respondent had already obtained

Trademark Registration for the mark “IN N OUT (the inside of the letter “O”

formed like a star).” Petitioner sent a demand letter directing respondent to cease

and desist from claiming ownership of the mark “IN-N-OUT” and to voluntarily
cancel its trademark registration. Respondent did not agree to In-N-Out Burger’s

demand but expressed its willingness to surrender its registration for a

consideration.

In 2001 petitioner filed before the Bureau of Legal Affairs an administrative

complaint against the respondents for unfair competition and for cancellation of

trademark registration.

Issues:

Whether or not there was unfair competition.

Held:

Respondents are guilty of unfair competition. The evidence on record shows that

respondents were not using their registered trademark but that of In-n-Out Burger.

Respondents are also giving their products the general appearance that would

likely influence the purchasers to believe that their products are that of In-N-Out

Burger. The intention to deceive may be inferred from the similarity of the goods

as packed and offered for sale, and, thus, an action will lie to restrain unfair

competition. The respondents’ fraudulent intention to deceive purchasers is also

apparent in their use of the In-N-Out Burger in business signage.

The essential elements of an action for unfair competition are confusing similarity

in the general appearance of the goods and 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.

G.R. NO. 179127 : December 24, 2008

IN-N-OUT BURGER, INC., Petitioner, v. SEHWANI, INCORPORATED AND/OR

BENITA'S FRITES, INC., Respondents.

Pfizer, the registered owner of a patent pertaining to Sulbactam Ampicillin and

marketed under the brand name “Unasyn” discovered that petitioner submitted
bids for the supply of Sulbactam Ampicillin to several hospitals without the
former’s consent. Pfizer then demanded that the hospitals cease and desist from
accepting such bids and that Pharmawealth immediately withdraw its bids to
supply Sulbactam Ampicillin. However, the demand was ignored.

Pfizer then filed a complaint for patent infringement and was granted a
preliminary injunction effective for 90 days by the IPO’s Bureau of Legal Affairs.
Upon expiration, a motion for extension filed by Pfizer was denied. Consequently,
Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals assailing the
denial.

While the case was pending in the CA, Pfizer filed with the RTC of Makati 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, hence this petition.

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 erred in issuing a temporary restraining order
after the cut-off date.

b) According to the 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.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC,
the rights allegedly violated and the acts allegedly violative of such rights are
identical, regardless of whether the patents on which the complaints were based
are different. In both cases, the ultimate objective of Pfizer was to ask for
damages and to permanently prevent Pharmawealth from selling the contested
products. Relevantly, the Supreme Court has decided that the filing of two actions
with the same objective, as in this instance, constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC
cases, a decision in one case will necessarily amount to res judicata in the other
action.

G. R. No. 126627. August 14, 2003]

G. R. No. 126627. August 14, 2003

SMITH KLINE BECKMAN CORPORATION, Petitioner, vs. THE HONORABLE COURT OF

APPEALS and TRYCO PHARMA CORPORATION, Respondents.

Petitioner 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
sells veterinary products including a drug Impregon which contains Albendazole as
an active ingredient which fights against parasites in animals. Petitioner then filed
an action against respondent for patent infringement claiming that the patent
granted to them includes said Albendazole.  Respondent contends 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 the respondent which was affirmed by the CA.

ISSUES:

Whether or not the Court of Appeals erred in not finding that Albendazole is

included in petitioners Letter Pattent 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 the petitioner.
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.

7. GR 174379 August 31, 2016 J. Leonen

E.I. Dupont De Nemours and Co. v. IPO Director Emma Francisco, Bureau of
Patents Director Efipanio Velasco, Therapharma, Inc.

FACTS
Petitioner is a Delaware-based corporation which filed an application for
Philippine patent before Bureau of Patents for Angiotensin II Receptor Blocking
Imidazole (losartan). It is an invention related to the treatment of hypertension
and congestive heart failure. The product (under the brandnames Cozaar and
Hyzaar) was produced and marketed by Merck, Sharpe, and Dohme Corporation,
licensee of petitioner. Said application was handled by a Filipino lawyer, Atty.
Nicanor Mapili.

In 2000, petitioner’s new counsel, Ortega, et al., sent the IPO a letter
requesting that an office action be issued on the petitioner’s patent
application. IPO Patent Examiner sent an office action (Paper No. 2) stating
that there were no documents shown that the authority to prosecute the
patent application was transferred from Atty. Mapili to Ortega, et al. Hence, an
official revocation of Power of Attorney of Atty. Mapili and appointment of
Ortega, et al. by petitioner is required before further action can be undertaken
on the patent application. Also, it was noted by the Examiner that the
application was deemed abandoned since it took 13 years for petitioner to
request for an office action.

Petitioner replied to Paper No. 2 by submitting a Power of Attorney authorizing

Ortega, et al. to handle its patent application and also filed petition for revival
of its patent application. In its petition, they argued that it was only in 1996
 that they became aware of Atty. Mapili’s death when its senior-level lawyer
visited the Philippines, and that it was only on January 30, 2002, that it
received a notice of abandonment sent by IPO (Paper No. 2).

Director of Patents denied the petition for revival for having been filed out of
time. It ruled that although it appears that Atty. Mapili had a remiss in his
obligations as counsel for the petitioner, the abandoned application cannot be
revived because of the limitations provided in Rule 115 of Revised Rules of
Practice. An appeal by the petitioner to the Director-General of IPO appeal
was denied. Subsequently, petitioner appealed to CA.
CA granted the appeal allowing the revival of the patent application. CA
believed that petitioner should be accorded some relief from the gross
negligence of its former counsel, Atty. Mapili. IPO moved to reconsider.

Meanwhile, Therapharma moved for leave to intervene arguing that CA’s

decision affected its “vested” rights to sell its own product. Therapharma
alleged that it was granted application by BFAD for a losartan product
“Lifezar,” a medication for hypertension, and that prior to its application, it
made sure that no patent application for similar products exists and that
petitioner’s application was considered abandoned by the Bureau of Patents.
CA granted the motion for leave to intervene of Therapharma. Petitioner
moved to reconsider.

CA reversed its August 31, 2004 decision ruling that the public interest would
be prejudiced by the revival of petitioner’s patent application. CA held that
petitioner and Atty. Mapili were inexcusably negligent. CA also found that
Therapharma had already invested P20M to develop its own losartan product.
In this present case filed by the petitioner, it argues that it was not negligent in
the prosecution of its patent application since it was Atty. Mapili or his heirs
who failed to inform it of crucial developments with regard to its patent
application. It contends that as a client in a foreign country, it does not have
immediate supervision over its local counsel so it should not be bound by its
counsel's negligence.

ISSUE/RULING
Whether or not the patent application of petitioner should be revived.

NO
Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice states that a
patent application is deemed abandoned if the applicant fails to prosecute the
application within 4 months from the date of the mailing of the notice of the
last action by the Bureau of Patents, Trademarks, and Technology Transfer, and
not from applicant's actual notice. 

Under Sec. 113 of 1962 Revised Rules of Practice, an abandoned patent

application may only be revived within 4 months from the date of
abandonment, provided it is shown to the satisfaction of the Director that the
delay was unavoidable. An application not revived within the specified period
shall be deemed forfeited.
 Sec. 113 has since been superseded by Section 133.4 of the Intellectual
Property Code, Rule 930 of the Rules and Regulations on Inventions, and Rule
929 of the Revised Implementing Rules and Regulations for Patents, Utility
Models and Industrial Design. The period of four (4) months from the date of
abandonment, however, remains unchanged. 

Even if the delay was unavoidable, or the failure to prosecute was due to fraud,
accident, mistake, or excusable negligence, or the petition was accompanied
by a complete proposed response, or all fees were paid, the same would still be
denied since these regulations only provide a 4-month period within which to
file for the revival of the application. The rules do not provide any exception
that could extend this four (4)-month period to 13 years. Petitioner’s patent
application, therefore, should not be revived since it was filed beyond the
allowable period.

Even assuming that the 4-month period could be extended, petitioner was
inexcussably negligent in the prosecution of its patent application. Negligence
is inexcusable if its commission could have been avoided through ordinary
diligence and prudence. 

Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to

respond to the Office Action sent by the Bureau of Patents, Trademarks, and
Technology Transfer on June 19, 1988. Because of his negligence, petitioner's
patent application was declared abandoned. He was again negligent when he
failed to revive the abandoned application within 4 months from the date of
abandonment.

Petitioner tries to disown Atty. Mapili 's conduct by arguing that it was not
informed of the abandonment of its patent application or of the death of the
latter. It alleged that it only found out about Atty. Mapili 's death sometime in
March 1996, as a result of its senior patent attorney's visit to the Philippines.
Although it was in petitioner's discretion as a foreign client to put its complete
trust and confidence on its local resident agent, there was a correlative duty on
its part to be diligent in keeping itself updated on the progress of its patent
applications. Its failure to be informed of the abandonment of its patent
application was caused by its own lack of prudence.

In Bernardo v. CA,  "no prudent party will leave the fate of his case entirely to
his lawyer. It is the duty of a party-litigant to be in contact with his counsel from
time to time in order to be informed of the progress of his case." Even if Atty.
Mapili's death prevented petitioner from submitting a petition for revival on time,
it was clearly negligent when it subsequently failed to immediately apprise itself
of the status of its patent application.

Petition is DENIED.
G.R. No. 143193               June 29, 2005

MELBAROSE R. SASOT and ALLANDALE R. SASOT, petitioners,

vs.
PEOPLE OF THE PHILIPPINES, et. al, respondents.

FACTS:

          The National Bureau of Investigation conducted an investigation pursuant to

a complaint filed by the NBA Properties, Inc. against petitioners for possible
violation of Article 189 of the Revised Penal Code on unfair competition. Based on
the report from the NBI, they have conducted two investigations due to the
petitioners’ alleged participation in the manufacture, printing, sale and
distribution of counterfeit “NBA” garment products, which led to the search and
seizure of several items from petitioner’s establishment. 

          Before arraignment, petitioners filed a Motion to Quash on the ground that,
the facts charged do not constitute an offense and that the court did not have
jurisdiction over the offense charged or the person of the accused. Petitioners
contend that since the complainant is a foreign corporation not doing business in
the Philippines, it cannot be protected by Philippine patent laws since it is not a
registered patentee. Petitioners aver that they have been using the business name
ALLANDALE SPORTSLINE, INC. since 1972, and their designs are original and do not
appear to be similar to complainants, and they do not use complainants logo or
design.

           In the Comment/Opposition filed by the trial prosecutor of Manila RTC

Branch 1, it stated that the State is entitled to prosecute the offense even without
the participation of the private offended party, as the crime charged is a public
crime, as provided for in the Revised Penal Code.

          The trial court sustained the prosecution’s arguments and denied
petitioners’ motion to quash which lead to the filing of a special civil action for
Certiorari with the CA. According to the CA, the petition is not the proper remedy
in assailing the denial of the motion to quash, and that the grounds raised therein
should be raised during the trial of the case on the merits. Petition for
reconsideration but was denied by the CA, hence this petition.

ISSUE: Whether or not a foreign corporation not doing business in the Philippines
and not licensed to do business in the Philippines have the right to sue for unfair
competition.

HELD:         

          While petitioners raise in their motion to quash the grounds that the facts
charged do not constitute an offense and that the trial court has no jurisdiction
over the offense charged or the person of the accused, their arguments focused on
an alleged defect in the complaint filed before the fiscal, complainants capacity to
sue and petitioners exculpatory defenses against the crime of unfair competition.

          More importantly, the crime of Unfair Competition punishable under Article
189 of the Revised Penal Code is a public crime. It is essentially an act against the
State and it is the latter which principally stands as the injured party. The
complainant’s capacity to sue in such case becomes immaterial.

The petition must be denied.

G.R. No. 194307               November 20, 2013

BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG ,Petitioner,

vs.
PHILIPPINE SHOE EXPO MARKETING CORPORATION, Respondent.

FACTS:
Petitioner applied for various trademark registrations before the Philippine IPO,
namely “BIRKENSTOCK”, “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING
OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEAM” and “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND SUNBEAM”.
However, the registration proceedings were suspended in view of an existing
registration of mark “BIRKENSTOCK AND DEVICE” in the name of Shoe Town
International and Industrial Corporation, the predecessor-in-interest of respondent
Philippine Shoe Expo Marketing Corporation. Here, petitioner filed a petition for
cancellation of the registration on the ground that it is the lawful and rightful
owner of the Birkenstock marks.

Respondent filed an opposition, alleging that it, together with its predecessor-in-
interest, has been using Birkenstock marks in the Philippines for more than 16
years through the mark “BIRKENSTOCK AND DEVICE”. He also contends that the
marks covered by the subject applications are identical to the one covered by the
registration and thus, petitioner has no right to the registration of such marks.
Moreover, that while respondent failed to file the 10th Year DAU, it continued the
use of “BIRKENSTOCK AND DEVICE” in lawful commerce, among others.

The BLA rejected the petitioner’s application for registration. It ruled that the
competing marks of the parties are confusingly similar since they contained the
work “BIRKENSTOCK” and are used on the same and related goods. It found
respondent as the prior user and adopter of “BIRKENSTOCK” in the Philippines.

IPO Director General reversed BLA’s ruling, and allowed the registration of
petitioner’s application. CA reversed, and reinstated BLA’s ruling.
ISSUE:
Whether or not the subject marks should be allowed registration in the name of
petitioner.

HELD:
Yes.

Respondent is deemed to have abandoned the mark when it failed to file the 10th
Year DAU for Registration on or before the lawful period. As a consequence, it was
deemed to have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”.
Petitioner has duly established its true and lawful ownership of the mark
“BIRKENSTOCK”. Under Sec. 2 of RA 166, in order to register a trademark, one
must be the owner thereof and must have actually used the mark in commerce in
the Philippines for 2 months prior to the application for registration.

The registration of a trademark is not a mode of acquiring ownership. If the

applicant is not the owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie presumption of validity of
the registration, of the registrant’s ownership of the trademark, and of the
exclusive right to the use thereof. Clearly, it is not the application or registration
of a trademark that vests ownership thereof, but it is the ownership of a
trademark that confers the right to register the same.
Here, petitioner was able to establish that it is the owner of the mark
“BIRKENSTOCK”. It has used it in commerce long before respondent was able to
register the same here in the Philippines.

G.R. No. 185917               June 1, 2011

FREDCO MANUFACTURING CORPORATION Petitioner,

vs.
PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Respondents.

Facts:

Petitioner Fredco Manufacturing filed a petition to cancel the registration of

respondent’s mark ‘Harvard Veritas Shield Symbol’ used in products such as bags
and t-shirts. Fredco alleges that the mark ‘Harvard’ was first used and registered
by New York Garments, a domestic corporation and its predecessor-in-interest,
used in its clothing articles. Respondent Harvard University on the other hand,
alleges that it is the lawful owner of the name and mark in numerous countries
worldwide including in the Philippines which was used in commerce as early as
1872. Respondent further contend that it never authorized any person to use its
name or mark in connection with any goods in the Philippines. The IPO Bureau of
Legal Affairs cancelled respondent’s registration of the mark but only over the
goods which are confusingly similar with that of petitioner. IPO reversed the
decision. CA affirmed.

Issue:

Whether or not respondent’s trade name is infringed.

Ruling: YES.

Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On
this ground alone, Fredco’s registration of the mark “Harvard” should have been
disallowed. Indisputably, Fredco does not have any affiliation or connection with
Harvard University, or even with Cambridge, Massachusetts. Fredco or its
predecessor New York Garments was not established in 1936, or in the U.S.A. as
indicated by Fredco in its oblong logo.

Under Philippine law, a trade name of a national of a State that is a party to the
Paris Convention, whether or not the trade name forms part of a trademark, is
protected “without the obligation of filing or registration.” “Harvard” is the trade
name of the world famous Harvard University, and it is also a trademark of Harvard
University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade
name “Harvard” even without registration of such trade name in the Philippines.
This means that no educational entity in the Philippines can use the trade name
“Harvard” without the consent of Harvard University. Likewise, no entity in the
Philippines can claim, expressly or impliedly through the use of the name and mark
“Harvard,” that its products or services are authorized, approved, or licensed by,
or sourced from, Harvard University without the latter’s consent.
G.R. No. 221717, June 19, 2017 -
MANG INASAL PHILIPPINES, INC., Petitioner, v. IFP MANUFACTURING
CORPORATION, Respondent.

FACTS:

On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an
application for the registration of the mark "OK Hotdog Inasal Cheese Hotdog
Flavor Mark" with goods under Class 30 of the NICE Classification. The said mark
intends to be used on one of its curl snack products. The application of respondent
was opposed by petitioner Mang Inasal Philippines, Inc. Petitioner is a domestic
fast food company and the owner of the mark "Mang Inasal, Home of Real Pinoy
Style Barbeque and Device" for services under Class 43 of the Nice Classification.
The said mark was registered with the IPO in 2006 and had been used by petitioner
for its chain of restaurants since 2003.

Petitioner, in its opposition, contended that the registration of respondent's OK

Hotdog Inasal mark is prohibited under Section 123.l (d)(iii) of Republic Act No.
8293. Petitioner averred that the OK Hotdog Inasal mark and the Mang Inasal mark
share similarities as to their appearance and as to the goods or services that they
represent. They claim that said similarities tend to suggest a false connection or
association between the said marks and that it would likely cause confusion on the
part of the public.

As petitioner explained:

1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks
feature the same dominant element-i.e., the word "INASAL"-printed and stylized in
the exact same manner, viz:

a. In both marks, the word "INASAL" is spelled using the same font style and red
color;

b. In both marks, the word "INASAL" is placed inside the same black outline and
yellow background; and

c. In both marks, the word "INASAL" is arranged in the same staggered format.

2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl
snack products) are also closely related to the services represented by the Mang
Inasal mark (i.e., fast food restaurants). Both marks cover inasal or inasal-flavored
food products. Petitioner's opposition was referred to the Bureau of Legal Affairs
(BLA) of the IPO for hearing and disposition.

ISSUE:

Whether or not the registration of respondent's OK Hotdog Inasal mark is

prohibited under Section 123.l (d) (iii) of Republic Act No. (RA) 8293

HELD:

Yes. The OK Hotdog Inasal mark meets the two conditions of the prescription under
Sec. 123.l(d)(iii) of RA 8293. First, it is similar to the Mang Inasal mark, an earlier
mark. Second, it pertains to goods that are related to the services represented by
such earlier mark.
The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is similar to a registered
mark or a mark with an earlier filing or priority date (earlier mark) and which is
likely to cause confusion on the part of the public cannot be registered with the
IPO. Such is the import of Sec. 123.l(d)(iii) of RA 8293: SECTION 123. Registrability.
– 123. 1. A mark cannot be registered if it:

Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to
deceive or cause confusion upon the purchasing public, a prospective mark must
be shown to meet two (2) minimum conditions:

1. The prospective mark must nearly resemble or be similar to an earlier mark; and

2. The prospective mark must pertain to goods or services that are either
identical, similar or related to the goods or services represented by the earlier
mark.

G.R. No. 164321               March 23, 2011

SKECHERS, U.S.A., INC., Petitioner,

vs.
INTER PACIFIC INDUSTRIAL TRADING CORP. et. al, respondents.

FACTS:
Petitioner engaged the services of a private investigation firm to check if
respondents are indeed engaged in the importation, distribution and sale of
unauthorized products bearing counterfeit or unauthorized trademarks owned by
petitioner.  An investigator went to respondents’ warehouse and saw different
kinds and models of rubber shoes including shoes bearing the “S” logo. He found
that the shoes bearing the “Strong” name with the “S” logo have the same style as
petitioner’s shoes.

Petitioner filed a complaint with the National Bureau of Investigation (NBI)

requesting assistance in stopping the illegal importation, manufacture and sale of
counterfeit products bearing the trademarks it owns and in prosecuting the owners
of the establishments engaged therein.  NBI representatives bought 24 pairs of
rubber shoes bearing the “Strong” name and the “S” logo. They then applied for
search warrants with the court, which eventually issued the same. 

After seizure of their goods, respondents sought to quash the search warrants on
the ground  that there is no confusing similarity between the petitioner’s Skechers’
rubber shoes and respondent’s Strong rubber shoes.  The court eventually issued
an order quashing the search warrants.

Petitioner’s Claim: Petitioner filed with Regional Trial Court (RTC) an application

for the issuance of search warrants against an outlet and warehouse operated by
respondents for infringement of trademark. In the course of its business, petitioner
has registered the trademark “SKECHERS” and the trademark “S” (within an oval
design) with the Intellectual Property Office (IPO).

Respondent’s Claim: Respondents moved to quash the search warrants, arguing

that there was no confusing similarity between petitioner’s “Skechers” rubber
shoes and its “Strong” rubber shoes.

ISSUE:

Whether or not is guilty of trademark infringement.

HELD:

Yes. The Dominancy Test focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered suggests an
effort to imitate. Given more consideration are the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like
prices, quality, sales outlets, and market segments.
Applying the Dominancy Test to the case at bar, this Court finds that the use of the
stylized “S” by respondent in its Strong rubber shoes infringes on the mark already
registered by petitioner with the IPO. While it is undisputed that petitioner’s
stylized “S” is within an oval design, to this Court’s mind, the dominant feature of
the trademark is the stylized “S,” as it is precisely the stylized “S” which catches
the eye of the purchaser. Thus, even if respondent did not use an oval design, the
mere fact that it used the same stylized “S”, the same being the dominant feature
of petitioner’s trademark, already constitutes infringement under the Dominancy
Test.

Respondent did not simply use the letter “S,” but it appears to this Court that
based on the font and the size of the lettering, the stylized “S” utilized by
respondent is the very same stylized “S” used by petitioner; a stylized “S” which is
unique and distinguishes petitioner’s trademark. Indubitably, the likelihood of
confusion is present as purchasers will associate the respondent’s use of the
stylized “S” as having been authorized by petitioner or that respondent’s product
is connected with petitioner’s business.

While there may be dissimilarities between the appearances of the shoes, to this
Court’s mind such dissimilarities do not outweigh the stark and blatant similarities
in their general features. As can be readily observed by simply comparing
petitioner’s Energy model and respondent’s Strong rubber shoes, respondent also
used the color scheme of blue, white and gray utilized by petitioner. Even the
design and “wavelike” pattern of the midsole and outer sole of respondent’s shoes
are very similar to petitioner’s shoes, if not exact patterns thereof. At the side of
the midsole near the heel of both shoes are two elongated designs in practically
the same location. Even the outer soles of both shoes have the same number of
ridges, five at the back and six in front. On the side of respondent’s shoes, near
the upper part, appears the stylized “S,” placed in the exact location as that of
the stylized “S” on petitioner’s shoes. On top of the “tongue” of both shoes
appears the stylized “S” in practically the same location and size. Moreover, at the
back of petitioner’s shoes, near the heel counter, appears “Skechers Sport Trail”
written in white lettering. However, on respondent’s shoes appears “Strong Sport
Trail” noticeably written in the same white lettering, font size, direction and
orientation as that of petitioner’s shoes. On top of the heel collar of petitioner’s
shoes are two grayish-white semi-transparent circles. Not surprisingly,
respondent’s shoes also have two grayish-white semi-transparent circles in the
exact same location.

The dissimilarities between the shoes are too trifling and frivolous that it is
indubitable that respondent’s products will cause confusion and mistake in the
eyes of the public. Respondent’s shoes may not be an exact replica of petitioner’s
shoes, but the features and overall design are so similar and alike that confusion is
highly likely.