G.R. No. 96597-99 October 6, 1994 COLUMBIA PICTURES, INC vs. HON.

COURT OF APPEALS, FACTS: The National Bureau of Investigation filed three applications for search warrant against private respondents for violation of P.D. No. 49, otherwise known as the Decree on the Protection of Intellectual Property, as amended by P.D. No. 1988. In securing the search warrant, NBI Agent Reyes stated the respondents had in their possession and control pirated video tapes of the copyrighted motion pictures/films, posters, advertising leaflets, or otherwise used in the videogram business or activities; Finding just and probable cause, the Trial Court granted the application. Respondents disputed stating that there was no probable cause for the issuance of the search warrant. Columbia Pictures Entertainment, Inc., Orion Pictures Corporation, Twentieth Century Fox Film Corporation, MGM/UA Communications Company, Universal City Studios, Inc., Walt Disney Company and Warner Bros., Inc., submitted their opposition. Trial court reversed its former stand and ordered the quashal of the search finding that private complainants were uncertain of their ownership of the titles subject of the seized video tapes; The Court of Appeals affirmed the quashal of the search warrants. ISSUE/S: Whether or not the need to present the master tapes of the copyrighted films from which pirated films are supposed to have been copied is necessary for the validity of the search warrant? RULING: Sc affirm the decisions of the Court of Appeals that a basic requirement for the validity of search warrants is the presentation of the master tapes of the copyrighted films from which pirated films are supposed to have been copied. The presentation of the master tapes of the copyrighted films from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated films. The petitioner's argument to the effect that the presentation of the master tapes at the time of application may not be necessary as these would be merely evidentiary in nature and not determinative of whether or not a probable cause exists to justify the issuance of the search warrants is not meritorious. The court cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes that it owns.

G.R. No. 180073 PROSOURCE INTERNATIONAL, INC.,- versus HORPHAG RESEARCH MANAGEMENT SA,

FACTS: Horphag Research Management SA is a corporation duly organized and existing under the laws of Switzerland and the owner of trademark PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma Corporation. Prosource International, Inc., is a corporation duly organized and existing under the laws of the Republic of the Philippine, was also distributing a similar food supplement using the mark PCO-GENOLS. Horphag Research Management SA filed a complaint for trademark infringement against Zuellig Pharma Corporation for the latters use of the mark PCO-GENOLS which the former claimed to be confusingly similar to its trademark PYCNOGENOL. . Prosource International, Inc. contended that respondent could not file the infringement case considering that the latter is not the registered owner of the trademark PYCNOGENOL, but one Horphag Research Limited. It claimed that it discontinued the use of the mark prior to the institution of the infringement case. The RTC decided in favor of Horphag finding that PYCNOGENOL and PCO-GENOLS have the same suffix GENOL which appears to be merely descriptive and thus open for trademark registration by combining it with other words. The trial court, likewise, concluded that the marks, when read, sound similar, and thus confusingly similar especially since they both refer to food supplements. The court added that petitioners liability was not negated by its act of pulling out of the market the products bearing the questioned mark since the fact remains that from 1996 until June 2000, petitioner had infringed respondents product by using the trademark PCO-GENOLS. On appeal to the CA, the petition was dismissed. The appellate court explained that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL. ISSUE/S: Whether or not the use of PCO-GENOLS which is similar to PYCNOGENOL constitutes infringement case? RULING: A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others. Inarguably, a trademark deserves protection. In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential and dominant features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive purchasers. Courts will consider more the aural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets, and market segments. In contrast, the Holistic Test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other.Both the word[s] PYCNOGENOL and PCO-GENOLS have the same suffix GENOL which on evidence, appears to be merely descriptive and furnish no indication of the origin of the article and hence, open for trademark registration by the plaintiff thru combination with another word or phrase such as PYCNOGENOL, Exhibits A to A-3. Furthermore, although the letters Y between P and C, N between O and C and S after L are missing in the [petitioners] mark PCO-GENOLS, nevertheless, when the two words are pronounced, the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public consumers. And although there were dissimilarities in the trademark due to the type of letters used as well as the size, color and design employed on their individual packages/bottles, still the close relationship of the competing products name in sounds as they were pronounced, clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common source and manufacturer.

G.R. No. 152950 PEOPLE OF THE PHILIPPINES - v e r s u s- CHRISTOPHER CHOI, FACTS:

A search warrant was issued by the Regional Trial Court (RTC) of Angeles City, Pampanga, Branch 56 against respondent Christopher Choi for violation of the Intellectual Property Code. Respondent filed a motion to quash search warrant. Both were denied in an order dated November 29, 1999. A petition for certiorari and prohibition was filed against Judge Gatbalite for allegedly committed grave abuse of discretion in refusing to quash the search warrant, arguing that probable cause was not sufficiently established. According to the CA, in determining whether there was probable cause to believe that the cigarettes purchased by Nieto were fake and in violation of RA 8293, [15] Judge Gatbalite failed to ask searching and probing questions of witness David Lee Sealey. The People assail the finding of the CA that, in issuing the search warrant, Judge Gatbalite did not comply strictly with the requirement to determine the existence of probable cause by personally examining the applicant and his witnesses through searching questions and answers. ISSUE/S: required the presentation of the master tapes RULING: We rule for the People of the Philippines. Given the foregoing testimonies and applying the established standards in determining probable cause, we cannot say that Judge Gatbalite committed grave abuse of discretion in issuing the search warrant. Her questions were sufficiently probing, not at all superficial and perfunctory. The testimonies were consistent with each other and the narration of facts was credible. The testimonies and other evidence on record constituted adequate bases to establish probable cause that the alleged offense had been committed. Since probable cause is dependent largely on the opinion and findings of the judge who conducted the examination and who had the opportunity to question the applicant and his witnesses, the findings of the judge deserve great weight. The reviewing court can overturn such findings only upon proof that the judge disregarded the facts before him or ignored the clear dictates of reason. We thus find no reason to disturb Judge Gatbalites findings. Furthermore, as correctly pointed out by petitioners, 20th Century Fox Film Corporation, insofar as it required the presentation of the master tapes for comparison with the pirated copies for a search warrant to issue, had already been superseded by Columbia Pictures, Inc. v. Court of Appeals:
More to the point, it is felt that the reasonableness of the added requirement in 20th Century Fox calling for the production of the master tapes of the copyrighted films for determination of probable cause in copyright infringement cases needs revisiting and clarification. xxx xxx xxx

In fine, the supposed pronunciamento in said case regarding the necessity for the presentation of the master tapes of the copyrighted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases where there is doubt as to the true nexus between the master tape and the pirated copies. An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases. Judicial dicta should

always be construed within the factual matrix of their parturition, otherwise a careless interpretation thereof could unfairly fault the writer with the vice of overstatement and the reader with the fallacy of undue generalization. xxx xxx xxx

It is evidently incorrect to suggest, as the ruling in 20th Century Fox may appear to do, that in copyright infringement cases, the presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that, in the absence thereof, there can be no finding of probable cause for the issuance of a search warrant. It is true that such master tapes are object evidence, with the merit that in this class of evidence the ascertainment of the controverted fact is made through demonstrations involving the direct use of the senses of the presiding magistrate. Such auxiliary procedure, however, does not rule out the use of testimonial or documentary evidence, depositions, admissions or other classes of evidence tending to prove the factum probandum, especially where the production in court of object evidence would result in delay, inconvenience or expenses out of proportion to its evidentiary value. xxx xxx xxx

Accordingly, to restrict the exercise of discretion by a judge by adding a particular requirement (the presentation of master tapes, as intimated by 20th Century Fox) not provided nor implied in the law for a finding of probable cause is beyond the realm of judicial competence or statesmanship. It serves no purpose but to stultify and constrict the judicious exercise of a courts prerogatives and to denigrate the judicial duty of determining the existence of probable cause to a mere ministerial or mechanical function. There is, to repeat, no law or rule which requires that the existence of probable cause is or should be determined solely by a specific kind of evidence. Surely, this could not have been contemplated by the framers of the Constitution, and we do not believe that the Court intended the statement in 20th Century Fox regarding master tapes as the dictum for all seasons and reasons in infringement cases.[37] (emphasis supplied)

It is obvious that 20th Century Fox Film Corporation should not be applied to the present case since this involves the offense of unfair competition and not copyright infringement. More importantly, as pronounced by the Court in Columbia Pictures, Inc., the judges exercise of discretion should not be unduly restricted by adding a requirement that is not sanctioned by law.