Rulings in Intellectual Property Laws

RULINGS OF THE CASES IN INTELLECTUAL PROPERTY LAWS

Prepared by Glenn Rey Anino

University of Cebu

TAÑADA v. ANGARA, G.R. No. 118295.  May 2, 1997; 272 SCRA

  F  Issue: WON the General Provisions and Basic Principles of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of theSupreme Court to promulgate rules concerning pleading, practice and procedures.

                                ¾        Suffice it to say that the reciprocity clause more than justifies such intrusion, if any actually exists. In the area of trade related aspects of intellectual property rights (TRIPS, for brevity): Each Member shall accord to the nationals of other Members treatment no less favorable than that it accords to its own nationals with regard to the protection of intellectual property:

                                ¾        a WTO Member is required to provide a rule of disputable (not the words "in the absence of proof to the contrary") presumption that a product shown to be identical to one produced with the use of a patented process shall be deemed to have been obtained by the (illegal) use of the said patented process, (1) where such product obtained by the patented product is new, or (2) where there is "substantial likelihood “that the identical product was made with the use of the said patented process but the owner of the patent could not determine the exact process used in obtaining such identical product. Hence, the "burden of proof" contemplated by Article 34 should actually be understood as the duty of the alleged patent infringer to overthrow such presumption. Such burden, properly understood, actually refers to the "burden of evidence" (burden of going forward) placed on the producer of the identical (or fake)product to show that his product was produced without the use of the patented process. The foregoing notwithstanding, the patent owner still has the "burden of proof" since, regardless of the presumption provided under paragraph 1 of Article 34, such owner still has to introduce evidence of the existence of the alleged identical product, the fact that it is "identical" to the genuine one produced by the patented process and the fact of "newness" of the genuine product or the fact of "substantial likelihood" that the identical product was made by the patented process. Moreover, it should be noted that the requirement of Article 34 to provide a disputable presumption applies only if (1) the product obtained by the patented process in NEW or (2) there is a substantial likelihood that the identical product was made by the process and the process owner has not been able through reasonable effort to determine the process used. Where either of these two provisos does not obtain, members shall be free to determine the appropriate method of implementing the provisions of TRIPS within their own internal systems and processes.

  F  While the Constitution indeed mandates a bias in favor of Filipino goods, services, labor and enterprises, at the same time, it recognizes the need for business exchange with the rest of the world on the bases of equality and reciprocity and limits protection of Filipino enterprises only against foreign competition and trade practices that are unfair. In other words, the Constitution did not intend to pursue an isolationist policy.  It did not shut out foreign investments, goods and services in the development of the Philippine economy.  While the Constitution does not encourage the unlimited entry of foreign goods, services and investments into the country, it does not prohibit them either.  In fact, it allows an exchange on the basis of equality and reciprocity, frowning only on foreign competition that is unfair.

  F  There is hardly therefore any basis for the statement that under the WTO, local industries and enterprises will all be wiped out and that Filipinos will be deprived of control of the economy.  Quite the contrary, the weaker situations of developing nations like the Philippines have been taken into account; thus, there would be no basis to say that in joining the WTO, the respondents have gravely abused their discretion.  True, they have made a bold decision to steer the ship of state into the yet uncharted sea of economic liberalization.  But such decision cannot be set aside on the ground of  grave abuse of discretion, simply because we disagree with it or simply because we believe only in other economic policies.

  F  Aside from envisioning a trade policy based on “equality and reciprocity,” the fundamental law encourages industries that are “competitive in both domestic and foreign markets,” thereby demonstrating a clear policy against a sheltered domestic trade environment, but one in favor of the gradual development of robust industries that can compete with the best in the foreign markets.  Indeed, Filipino managers and Filipino enterprises have shown capability and tenacity to compete internationally.  And given a free trade environment, Filipino entrepreneurs and managers in Hongkong have demonstrated the Filipino capacity to grow and to prosper against the best offered under a policy of laissez faire.

  F  Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of the Supreme Court to promulgate rules concerning pleading, practice and procedures.xxx By and large, the arguments adduced in connection with our disposition of the third issue -- derogation of legislative power - will apply to this fourth issue also.  Suffice it to say that the reciprocity clause more than justifies such intrusion, if any actually exists.  Besides, Article 34 does not contain an unreasonable burden, consistent as it is with due process and the concept of adversarial dispute settlement inherent in our judicial system. So too, since the Philippine is a signatory to most international conventions on patents, trademarks and copyrights, the adjustment in legislation and rules of procedure will not be substantial

  F  Hence, the “burden of proof” contemplated by Article 34 should actually be understood as the duty of the alleged patent infringer to overthrow such presumption.   Such burden, properly understood, actually refers to the “burden of evidence”  (burden of going forward) placed on the producer of the identical (or fake) product to show that his product was produced without the use of the patented process. The foregoing notwithstanding, the patent owner still has the “burden of proof” since, regardless of the presumption provided under paragraph 1 of Article 34, such owner still has to introduce evidence of the existence of the alleged identical product, the fact that it is “identical” to the genuine one produced by the patented process and the fact of “newness” of the genuine product or the fact of “substantial likelihood” that the identical product was made by the patented process.

MIRPURI vs. COURT OF APPEALS; 318 SCRA

  F  Definition of Trademark: This definition has been simplified in R.A. No. 8293, the Intellectual Property Code of the Philippines, which defines a "trademark" as "any visible sign capable of distinguishing goods." In Philippine jurisprudence, the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product

  F  THREE DISTINCT FUNCTIONS OF TRADEMARKS: Modern authorities on trademark law view trademarks as performing three distinct functions:  (1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the articles they symbolize.

  F  Today, the trademark is not merely a symbol of origin and goodwill; it is often the most effective agent for the actual creation and protection of goodwill.  It imprints upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfaction.  In other words, the mark actually sells the goods. The mark has become the "silent salesman," the conduit through which direct contact between the trademark owner and the consumer is assured.  It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it refers

  F  The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of  source or appellations of origin, and at the same time aims to repress unfair competition

  F  In short, foreign nationals are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property.

  F  Article 6bis governs protection of well-known trademarks.  Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark of a person entitled to the benefits of the Convention, and used for identical or similar goods.

  F  Article 6bis of the Paris Convention is a self-executing provision and does not require legislative enactment to give effect in the member country.

  F  The essential requirement under Article 6bis is that the trademark to be protected must be "well-known" in the country where protection is sought.  The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court.

  F  Intellectual and industrial property rights cases are not simple property cases.  Trademarks deal with the psychological function of symbols and the effect of these symbols on the public at large. Trademarks play a significant role in communication, commerce and trade, and serve valuable and interrelated business functions, both nationally and internationally.  For this reason, all agreements concerning industrial property, like those on trademarks and tradenames, are intimately connected with economic development. Industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs.  They speed up transfer of technology and industrialization, and thereby bring about social and economic progress. These advantages have been acknowledged by the Philippine government itself.

  F  Res judicata therefore does not apply to the instant case and respondent Court of Appeals did not err in so ruling. IPC No. 2049 raised the issue of ownership of the trademark, the first registration and use of the trademark in the United States and other countries, and the international recognition and reputation of the trademark established by extensive use and advertisement of private respondent's products for over forty years here and abroad.  These are different from the issues of confusing similarity and damage in IPC No. 686.  The issue of prior use may have been raised in IPC No. 686 but this claim was limited to prior use in the Philippines only.  Prior use in IPC No. 2049 stems from private respondent's claim as originator of the word and symbol "Barbizon," as the first and registered user of the mark attached to its products which have been sold and advertised worldwide for a considerable number of years prior to petitioner's first application for registration of her trademark in the Philippines.   Indeed, these are substantial allegations that raised new issues and necessarily gave private respondent a new cause of action.   Res judicata does not apply to rights, claims or demands, although growing out of the same subject matter, which constitute separate or distinct causes of action and were not put in issue in the former action.

  F  It is also noted that the oppositions in the first and second cases are based on different laws. The opposition in IPC No. 686 was based on specific provisions of the Trademark Law, i.e., Section 4 (d) on confusing similarity of trademarks and Section 8 on the requisite damage to file an opposition to a petition for registration.  The opposition in IPC No. 2049 invoked the Paris Convention, particularly Article 6bis thereof, E.O. No. 913 and the two Memoranda of the Minister of Trade and Industry. This opposition also invoked Article 189 of the Revised Penal Code which is a statute totally different from the Trademark Law.

SASOT v. PEOPLE

  F  A foreign corporation not engaged and licensed to do business in the Philippines may maintain an action for unfair competition. Unfair completion punishable under Art. 189 of the RPC is a public crime.

PEARL & DEAN v. SHOEMART, 409 SCRA 231

  F  NO COPYRIGHT INFRINGEMENT: Copyright, in the strict sense of the term, is purely a statutory right.  Being a mere statutory grant, the rights are limited to what the statute confers.  It may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute.  Accordingly, it can cover only the works falling within the statutory enumeration or description. P & D secured its copyright under the classification class “O” work.  This being so, petitioner’s copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of “prints, pictorial illustrations, advertising copies, labels, tags and box wraps.”  Stated otherwise, 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.

  F  NO PATENT INFRINGEMENT: There can be no infringement of a patent until a patent has been issued since whatever right one has to the invention covered by the patent arises alone from the grant of patent. An inventor has no common law right to a monopoly of his invention. He has the right to make use of and vend his invention, but if he voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity.  A patent, however, gives the inventor the right to exclude all others.  As a patentee, he has the exclusive right of making, selling or using the invention. On the assumption that petitioner’s advertising units were patentable inventions, petitioner revealed them fully to the public by submitting the engineering drawings thereof to the National Library.

  F  To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a primordial requirement.  No patent, no protection.  The ultimate goal of a patent system is to bring new designs and technologies into the public domain through disclosure. Ideas, once disclosed to the public without the protection of a valid patent, are subject to appropriation without significant restraint

  F  The patent law has a three-fold purpose: “first, patent law seeks to foster and reward invention; second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public

  F  One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description.” The certificate of registration issued by the Director of Patents can confer the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations specified in the certificate.

  F  By the nature of things, there can be no unfair competition under the law on copyrights although it is applicable to disputes over the use of trademarks. Even a name or phrase incapable of appropriation as a trademark or tradename may, by long and exclusive use by a business (such that the name or phrase becomes associated with the business or product in the mind of the purchasing public), be entitled to protection against unfair competition.[27] In this case, 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.”[28] This crucial admission by its own expert witness 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.

KHO v. COURT OF APPEALS, GR NO. 11578, MARCH 19, 2002; 379 SCRA

  F  Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another.

  F  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.

  F  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.

  F  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

  F  Issue: WON the copyright and patent over the name and container of a beauty cream product would entitle the registrant to the use and ownership over the same to the exclusion of others.

                                ¾        No. 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 inasmuch 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 the 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.

                                ¾        The dispositive portion of said decision held that the petitioner does not have trademark rights on the name and container of the beauty cream product. The said decision on the merits of the trial court rendered the issuance of the writ of a preliminary injunction moot and academic notwithstanding the fact that the same has been appealed in the Court of Appeals.

  F  Finally, we rule that the Court of Appeals correctly denied the petitioner ’s several motions for contempt of court. There is nothing contemptuous about the advertisements complained of which, as regards the proceedings in CA-G.R. SP No. 27803 merely announced in plain and straightforward language the promulgation of the assailed Decision of the appellate court. Moreover, pursuant to Section 4 of Rule 39 of the Revised Rules of Civil Procedure, the said decision nullifying the injunctive writ was immediately executory.

PHIL PHARMAWEALTH, INC. v. PFIZER (PHIL.), INC., G.R. No. 167715, NOVEMBER 17, 2010, 635 SCRA 140

  F  Issue: WON an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed.

                                ¾        No. The exclusive right of a patentee to make, use and sell a patented product, article or process exists only during the term of the patent. It is clear from the above-quoted provision of law that the exclusive right of a patentee to make, use and sell a patented product, article or process exists only during the term of the patent. In the instant case, Philippine Letters Patent No. 21116, which was the basis of respondents in filing their complaint with the BLA-IPO, was issued on July 16, 1987. This fact was admitted by respondents themselves in their complaint. They also admitted that the validity of the said patent is until July 16, 2004, which is in conformity with Section 21 of RA 165, providing that the term of a patent shall be seventeen (17) years from the date of issuance thereof. Section 4, Rule 129 of the Rules of Court provides that an admission, verbal or written, made by a party in the course of the proceedings in the same case, does not require proof and that the admission may be contradicted only by showing that it was made through palpable mistake or that no such admission was made. In the present case, there is no dispute as to respondents' admission that the term of their patent expired on July 16, 2004. Neither is there evidence to show that their admission was made through palpable mistake. Hence, contrary to the pronouncement of the CA, there is no longer any need to present evidence on the issue of expiration of respondents' patent.

  F  What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office?

                                ¾        According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

IN-N-OUT BURGER, INC. v. SEHWANI, INCORPORATED and/or BBENITA’S FRITES, INC., GR No. 179127, 575 SCRA 535

  F  Issue: WON the IPO (administrative bodies) have jurisdiction to cases involving unfair competition.

                                ¾        Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition cases. Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the petitioner's administrative case against respondents and the IPO Director General have exclusive jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.

  F  JURISDICTION: Petitioner’s complaint, which seeks the cancellation of the disputed mark in the name of respondent Sehwani, Incorporated, and damages for violation of petitioner’s intellectual property rights, falls within the jurisdiction of the IPO Director of Legal Affairs. The Intellectual Property Code also expressly recognizes the appellate jurisdiction of the IPO Director General over the decisions of the IPO Director of Legal Affairs.

  F  The Court of Appeals incorrectly concluded that all actions involving trademarks, including charges of unfair competition, are under the exclusive jurisdiction of civil courts. Such interpretation is not supported by the provisions of the Intellectual Property Code.  While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section states that the regular courts have sole jurisdiction over unfair competition cases, to the exclusion of administrative bodies.  On the contrary, Sections 160 and 170, which are also found under Part III of the Intellectual Property Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition cases.

  F  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.

  F  WON respondent Sehwani is liable of unfair competition.

                                ¾        Yes. The evidence on record shows that the respondents were not using their registered trademark but that of the petitioner. Further, respondents are giving their products the general appearance that would likely influence purchasers to believe that these products are those of the petitioner. The intention to deceive may be inferred from the similarity of the goods as packed and offered for sale, and, thus, action will lie to restrain such unfair competition. Also, respondent’s use of IN-N-OUT BURGER in busineses signages reveals fraudulent intent to deceive purchasers.

FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO

  F  Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves.

  F  To qualify for copyright protection, a work must be original to the author, which means that the work was independently created by the author, and it possesses at least some minimal degree of creativity. A work may be original even thought it closely resembles other works so long as the similarity is fortuitous, not the result of copying.

  F  WON the names, addresses, and phone numbers in a telephone directory able to be copyrighted.

                                ¾        No. Facts cannot be copyrighted, however compilations of facts can generally be copyrighted.

                                ¾        To qualify for copyright protection, a work must be original to the author, which means that the work was independently created by the author, and it possesses at least some minimal degree of creativity. A work may be original even thought it closely resembles other works so long as the similarity is fortuitous, not the result of copying.

                                ¾        Facts are not original. The first person to find and report a particular fact has not created the fact; he has merely discovered its existence. Facts may not be copyrighted and are part of the public domain available to every person.

                                ¾        Factual compilations may possess the requisite originality. The author chooses what facts to include, in what order to place them, and how to arrange the collected date so they may be effectively used by readers. Thus, even a directory that contains no written expression that could be protected, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. But, even though the format is original, the facts themselves do not become original through association. The copyright on a factual compilation is limited to formatting. The copyright does not extend to the facts themselves.

                                ¾        To establish copyright infringement, two elements must be proven: ownership of a valid copyright and copying of constituent elements of the work that are original. The first element is met in this case because the directory contains some forward text. As to the second element, the information contains facts, which cannot be copyrighted. They existed before being reported and would have continued to exist if a telephone directory had never been published. There is no originality in the formatting, so there is no copyrightable expression. Thus, there is no copyright infringement.

  F  The primary objective of copyright is not to reward the labor of authors, but "to promote the Progress of Science and useful Arts."

Joaquin v. Drilon G.R No. 108946, 28 Jan 1999), 302 SCRA 225

  F  The format of a show is not a copyrightable under Section 2 of P.D. 49--- To begin with, the format of a show is not copyrightable. Section 2 of P.D. No. 49,[10] otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright protection, to wit: Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of the following classes of works:

(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers;

(B) Periodicals, including pamphlets and newspapers;

(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;

(D) Letters;

(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in dumb shows, the acting form of which is fixed in writing or otherwise;

(F) Musical compositions, with or without words;

(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art; models or designs for works of art;

(H) Reproductions of a work of art;

(I) Original ornamental designs or models for articles of manufacture, whether or not patentable, and other works of applied art;

(J) Maps, plans, sketches, and charts;

(K) Drawings or plastic works of a scientific or technical character;

(L) Photographic works and works produced by a process analogous to photography; lantern slides;

(M) Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;

(N) Computer programs;

(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;

(P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations of literary, musical or artistic works or of works of the Philippine government as herein defined, which shall be protected as provided in Section 8 of this Decree.

(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree which by reason of the selection and arrangement of their contents constitute intellectual creations, the same to be protected as such in accordance with Section 8 of this Decree.

(R) Other literary, scholarly, scientific and artistic works.

This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A. No. 8293)

  F  The format or mechanics of a television show is not included in the list of protected works in §2 of P.D. No. 49.  For this reason, the protection afforded by the law cannot be extended to cover them. Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing right regulated  by the statute.  Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. Since  . . . copyright in published works is purely a statutory creation, a copyright may be obtained only for a work falling within the statutory enumeration or description. Regardless of the historical viewpoint, it is authoritatively settled in the United States that there is no copyright except  that  which  is  both  created  and secured by act of Congress.

  F  Copyright, in a strict sense, is purely a statutory right. P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The copyright does not extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides: Sec. 175.  Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof.

  F  The copyright does not extend to the general concept or format of its dating game show. What then is the subject matter of petitioners’ copyright?  This Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the class of works mentioned in P.D. 49, §2(M), to wit: Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings; The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the very nature of the subject of petitioner BJPI’s copyright, the investigating prosecutor should have the opportunity to compare the videotapes of the two shows.

  F  Mere description by words of the general format of the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the determination of the existence of probable cause.  As aptly observed by respondent Secretary of Justice: A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows.

Santos vs. McCullough Printing Co., GR No. 19439, October 31, 1964, 12 SCRA 321

  F  An intellectual  creation should be copyrighted within  the  periods  provided  by  law,  failure  of  which  renders  such  creation  public property.

  F  For there to be a limited publications or prohibition, such fact must appear on the face of the design. When the purpose is a limited publication, but the  effect  is  a  general  publication,  irrevocable  rights  thereon  become  vested  in  the general public. Exclusive right of owner to publish limited to first publication unless copyrighted.-- The author of a literary composition has a right to the first publication thereof. He has a right to determine whether it shall be published at all,  and  if  published,  when,  where,  by whom, and in  what form. This exclusive right is confined to the first publication. Once published, it is dedicated to the public,  and the author loses, the exclusive right to control subsequent  publication by others,  unless  the work is  placed  under the  protection of  the  copyright  law.

Filipino Society of Composers v. Tan, G.R. No. L-36402, March 16, 1987, 148 SCRA 461

  F  Music provided by a combo in a restaurant constitutes public performance for profit within the meaning of the Copyright Law. In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the food and drinks and apparently not for listening to the music. As found by the trial court, the music provided is for the purpose of entertaining and amusing the customers in order to make the establishment more attractive and desirable. It will be noted that for the playing and singing the musical compositions involved, the combo was paid as independent contractors by the appellant . It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of additional income produced by the bigger volume of business which the entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant constituted performance for profit contemplated by the Copyright Law. (Act 3134 amended by P.D. No. 49, as amended).

  F  If the general public has made use of the object sought to be copyrighted within 30 days prior to the copyright application, the law deems the object to have been donated to the public domain and can no longer be copyrighted as in the case of the songs at bar. The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which renders such creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964]. Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted.

  F  A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have been known and sang by the witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of the witnesses at the hearing of this case on this subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30). Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law.

Ching vs. Salinas, GR No. 161295, June 29, 2005, 462 SCRA 241

  F  The RTC had jurisdiction to delve into and resolve the issue whether the petitioner ’s utility models are copyrightable and, if so, whether he is the owner of a copyright over the said models. 

  F  For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was being copied and distributed by the respondents.  Thus, the ownership of a valid copyright is essential.

  F  Ownership of copyrighted material is shown by proof of originality and copyrightability.  By originality is meant that the material was not copied, and evidence  s at least minimal creativity; that it was independently created by the author and that it possesses at least same minimal degree of creativity.

  F  Copying is shown by proof of access to copyrighted material and substantial similarity between the two works.

  F  It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its marketability.  The central inquiry is whether the article is a work of art.] Works for applied art include all original pictorials, graphics, and sculptural works that are intended to be or have been embodied in useful article regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.

  F  As gleaned from the description of the models and their objectives, these articles are useful articles which are defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.  Indeed, while works of applied art, original intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design are not. A useful article may be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article.

  F  In this case, the petitioner’s models are not works of applied art, nor artistic works.  They are utility models, useful articles, albeit with no artistic design or value.

  F  A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable.  It may be, or may relate to, a product, or process, or an improvement of any of the aforesaid. Essentially, a utility model refers to an invention in the mechanical field.  This is the reason why its object is sometimes described as a device or useful object.

  F  UTILITY MODEL v. INVENTION: first, the requisite of “inventive step” in a patent for invention is not required; second, the maximum term of protection is only seven years compared to a patent which is twenty years,  in a patent for  both reckoned from the date of the application; and third, the provisions on utility model dispense with its substantive examination and prefer for a less complicated system.

  F  No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.

  F  That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance of a search warrant for violation of copyright laws.  In Kho v. Court of Appeals[49] and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,[50] the Court ruled that “these copyright and patent rights are completely distinct and separate from one another, and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively pertain to the others.

  F  In this case, the bushing and cushion are not works of art.  They are, as the petitioner himself admitted, utility models which may be the subject of a patent.

Manly Sportwear Manufacturing Inc.vs. Dadodette, GR No. 165306, September 20, 2005, 470 SCRA 384

  F  Where the copyrighted products do not appear to be original creations and are not among the classes of work enumerated under Section 172 of RA 8293, trial court may not be faulted for overturning its initial assessment that there was probable cause in view of its inherent power to issue search warrants and to quash the same. In the instant case, we find that the trial court did not abuse its discretion when it entertained the motion to quash considering that no criminal action has yet been instituted when it was filed.  The trial court also properly quashed the search warrant it earlier issued after finding upon reevaluation of the evidence that no probable cause exists to justify its issuance in the first place.  As ruled by the trial court, the copyrighted products do not appear to be original creations of MANLY and are not among the classes of work enumerated under Section 172 of RA 8293.  The trial court, thus, may not be faulted for overturning its initial assessment that there was probable cause in view of its inherent power to issue search warrants and to quash the same.  No objection may be validly posed to an order quashing a warrant already issued as the court must be provided with the opportunity to correct itself of an error unwittingly committed, or, with like effect, to allow the aggrieved party the chance to convince the court that its ruling is erroneous.

  F  The order quashing a search warrant is not res judicata on the issue of copyright infringement- the applicant for a search warrant could still file a separate copyright infringement suit against the respondents.  As correctly observed by the Court of Appeals, the trial court’s finding that the seized products are not copyrightable was merely preliminary as it did not finally and permanently adjudicate on the status and character of the seized items.  MANLY could still file a separate copyright infringement suit against the respondents because the order for the issuance or quashal of a warrant is not res judicata. Thus, in Vlasons Enterprises Corporation v. Court of Appeals[14] we held that:  The proceeding for the seizure of property in virtue of a search warrant does not end with the actual taking of the property by the proper officers and its delivery, usually constructive, to the court.  The order for the issuance of the warrant is not a final one and cannot constitute res judicata. Such an order does not ascertain and adjudicate the permanent status or character of the seized property.  By its very nature, it is provisional, interlocutory. It is merely the first step in the process to determine the character and title of the property.  That determination is done in the criminal action involving the crime or crimes in connection with which the search warrant was issued.  Hence, such a criminal action should be prosecuted, or commenced if not yet instituted, and prosecuted.  The outcome of the criminal action will dictate the disposition of the seized property…

  F  Further, the copyright certificates issued in favor of MANLY constitute merely prima facie evidence of validity and ownership.  However, no presumption of validity is created where other evidence exist that may cast doubt on the copyright validity.  Hence, where there is sufficient proof that the copyrighted products are not original creations but are readily available in the market under various brands, as in this case, validity and originality will not be presumed and the trial court may properly quash the issued warrant for lack of probable cause.

  F  At most, the certificates of registration and deposit issued by the National Library and the Supreme Court Library serve merely as a notice of recording and registration of the work but do not confer any right or title upon the registered copyright owner or automatically put his work under the protective mantle of the copyright law. It is not a conclusive proof of copyright ownership.  As it is, non-registration and deposit of the work within the prescribed period only makes the copyright owner liable to pay a fine.

UNILEVER Philippines vs. CA and Procter and Gamble, Phils Inc., G.R. No. 119280, (August 10, 2006), 498 SCRA 334

  F  Injunction is resorted to only when there is a pressing necessity to avoid injurious consequences which cannot be remedied under any standard compensation.[7] As correctly ruled by the CA, there was an extreme urgency to grant the preliminary injunction prayed for by P&GP considering that TV commercials are aired for a limited period of time only.  In fact, this Court takes note of the fact that the TV commercial in issue ― the Kite TV advertisement ― is no longer aired today, more than 10 years after the injunction was granted on September 16, 1994.

Sambar vs. Levi Strauss & Co./, GR No. 132604, ( March 6, 2002), 378 SCRA 364

  F  Did petitioner infringe on private respondents’ arcuate design?

                                ¾        We find no reason to disturb the findings of the Court of Appeals that Europress’ use of the arcuate design was an infringement of the Levi’s design.

  F  Must we hold petitioner solidarily liable with CVS Garments Industrial Corporation? Both the courts below found that petitioner had a copyright over Europress’ arcuate design and that he consented to the use of said design by CVSGIC.  We are bound by this finding, especially in the absence of a showing that it was tainted with arbitrariness or palpable error.[7] It must be stressed that it was immaterial whether or not petitioner was connected with CVSGIC.  What is relevant is that petitioner had a copyright over the design and that he allowed the use of the same by CVSGIC.

  F  To be entitled to copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another. From the foregoing discussion, it is clear that the matters raised by petitioner in relation to the last issue are purely factual, except the matter of nominal and temperate damages.  Petitioner claims that damages are not due private respondents and his copyright should not be cancelled because he had not infringed on Levi’s trademark.  Both the trial court and the Court of Appeals found there was infringement.  Thus, the award of damages and cancellation of petitioner’s copyright are appropriate. Award of damages is clearly provided in Section 23 of the Trademark law, while cancellation of petitioner’s copyright finds basis on the fact that the design was a mere copy of that of private respondents’ trademark.  To be entitled to copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another

  F  However, we agree with petitioner that it was error for the Court of Appeals to affirm the award of nominal damages combined with temperate damages by the Regional Trial Court of Makati.  What respondents are entitled to is an award for temperate damages, not nominal damages.  For although the exact amount of damage or loss can not be determined with reasonable certainty, the fact that there was infringement means they suffered losses for which they are entitled to moderate damages. We find that the award of P50,000.00 as temperate damages fair and reasonable, considering the circumstances herein as well as the global coverage and reputation of private respondents Levi Strauss & Company and Levi Strauss (Phil.), Inc.

Bayanihan Music vs. BMG, Jose Mari Chan, GR No. 166337, March 7, 2005, 452 scra

  F  A court should, as much as possible, avoid issuing the writ which would effectively dispose of the main case without trial.

  F  (1) there must be a right in esse or the existence of a right to be protected; and (2) the act against which the injunction is to be directed is a violation of such right,[5]cralaw the trial court threaded the correct path in denying petitioner's prayer therefor. For, such a writ should only be granted if a party is clearly entitled thereto.

  F  Of course, while a clear showing of the right to an injunctive writ is necessary albeit its existence need not be conclusively established,[7]cralaw as the evidence required therefor need not be conclusive or complete, still, for an applicant, like petitioner Bayanihan, to be entitled to the writ, he is required to show that he has the ostensible right to the final relief prayed for in its complaint.[8]cralaw Here, the trial court did not find ample justifications for the issuance of the writ prayed for by petitioner.

  F  respondent Chan, being undeniably the composer and author of the lyrics of the two (2) songs, is protected by the mere fact alone that he is the creator thereof

  F  An examination of petitioner's verified complaint in light of the two (2) contracts sued upon and the evidence it adduced during the hearing on the application for preliminary injunction, yields not the existence of the requisite right protectable by the provisional relief but rather a lingering doubt on whether there is or there is no such right. xxx It would thus appear that the two (2) contracts expired on October 1, 1975 and March 11, 1978, respectively, there being neither an allegation, much less proof, that petitioner Bayanihan ever made use of the compositions within the two-year period agreed upon by the parties

  F  Anent the copyrights obtained by petitioner on the basis of the selfsame two (2) contracts, suffice it to say 'that such purported copyrights are not presumed to subsist in accordance with Section 218[a] and [b], of the Intellectual Property Code,[10]cralaw because respondent Chan had put in issue the existence thereof.

  F  It is noted that Chan revoked and terminated said contracts, along with others, on July 30, 1997, or almost two years before petitioner Bayanihan wrote its sort of complaint/demand letter dated December 7, 1999 regarding the recent "use/recording of the songs 'Can We Just Stop and Talk A While' and 'Afraid for Love to Fade,'" or almost three (3) years before petitioner filed its complaint on August 8, 2000, therein praying, inter alia, for injunctive relief.

Habana vs. Robles GR No. 131522, July 19, 1999, 310 SCRA 511

  F  We believe that respondent Robles’ act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners’ copyrights. When is there a substantial reproduction of a book?  It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied.  If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated.

  F  In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration.  To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied.  If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof.  Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright.

  F  Even if two authors were of the same background in terms of teaching experience and orientation, it is not an excuse for them to be identical even in examples contained in their books. The respondents claim that their similarity in style can be attributed to the fact that both of them were exposed to the APCAS syllabus and their respective academic experience, teaching approach and methodology are almost identical because they were of the same background. However, we believe that even if petitioners and respondent Robles were of the same background in terms of teaching experience and orientation, it is not an excuse for them to be identical even in examples contained in their books.  The similarities in examples and material contents are so obviously present in this case.  How can  similar/identical examples not be considered as a mark of copying?

  F  In cases of infringement, copying alone is not what is prohibited.  The copying must produce an “injurious effect”.  Here, the injury consists in that respondent Robles lifted from petitioners’ book materials that were the result of the latter’s research work and compilation and misrepresented them as her own.  She circulated the book DEP for commercial use and did not acknowledge petitioners as her source.

  F  Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles committed.  Petitioners’ work as authors is the product of their long and assiduous research and for another to represent it as her own is injury enough.  In copyrighting books the purpose is to give protection to the intellectual product of an author.  This is precisely what the law on copyright protected, under Section 184.1 (b).  Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author, if appearing on the work, are mentioned.

  F  In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habana et. al. as the source of the portions of DEP.  The final product of an author’s toil is her book.  To allow another to copy the book without  appropriate acknowledgment is injury enough.

Microsoft Corp.vs. Maxicorp Inc.,GR No. 140946, Sept. 13, 2004

  F  WHETHER THE PETITION RAISES QUESTIONS OF LAW; Indeed, this case falls under one of the exceptions because the findings of the Court of Appeals conflict with the findings of the RTC.[16] Since petitioners properly raised the conflicting findings of the lower courts, it is proper for this Court to resolve such contradiction.

  F  WHETHER PETITIONERS HAVE LEGAL PERSONALITY  TO    FILE  THE PETITION: We ruled in Columbia Pictures Entertainment, Inc. v. Court of Appeals[18] that the petitioner-complainant in a petition for review under Rule 45 could argue its case before this Court in lieu of the Solicitor General if there is grave error committed by the lower court or lack of due process. This avoids a situation where a complainant who actively participated in the prosecution of a case would suddenly find itself powerless to pursue a remedy due to circumstances beyond its control. The circumstances in Columbia Pictures Entertainment are sufficiently similar to the present case to warrant the application of this doctrine.

  F  WHETHER THERE WAS PROBABLE CAUSE TO ISSUE THE  SEARCH  WARRANTS: The Court of Appeals based its reversal on two factual findings of the RTC.  First, the fact that the sales receipt presented by NBI Agent Samiano as proof that he bought counterfeit goods from Maxicorp was in the name of a certain “Joel Diaz.” Second, the fact that petitioners’ other witness, John Benedict Sacriz, admitted that he did not buy counterfeit goods from Maxicorp. We rule that the Court of Appeals erred in reversing the RTC’s findings.

  F  The offense charged against Maxicorp is copyright infringement under Section 29 of PD 49 and unfair competition under Article 189 of the RPC. To support these charges, petitioners presented the testimonies of NBI Agent Samiano, computer technician Pante, and Sacriz, a civilian. The offenses that petitioners charged Maxicorp contemplate several overt acts. The sale of counterfeit products is but one of these acts. Both NBI Agent Samiano and Sacriz related to the RTC how they personally saw Maxicorp commit acts of infringement and unfair competition.

  F  During the preliminary examination, the RTC subjected the testimonies of the witnesses to the requisite examination. NBI Agent Samiano testified that he saw Maxicorp display and offer for sale counterfeit software in its premises. He also saw how the counterfeit software were produced and packaged within Maxicorp’s premises.  NBI Agent Samiano categorically stated that he was certain the products were counterfeit because Maxicorp sold them to its customers without giving the accompanying ownership manuals, license agreements and certificates of authenticity.

  F  Sacriz testified that during his visits to Maxicorp, he witnessed several instances when Maxicorp installed petitioners’ software into computers it had assembled.  Sacriz also testified that he saw the sale of petitioners’ software within Maxicorp’s premises.  Petitioners never authorized Maxicorp to install or sell their software.

  F  The testimonies of these two witnesses, coupled with the object and documentary evidence they presented, are sufficient to establish the existence of probable cause.  From what they have witnessed, there is reason to believe that Maxicorp engaged in copyright infringement and unfair competition to the prejudice of petitioners. Both NBI Agent Samiano and Sacriz were clear and insistent that the counterfeit software were not only displayed and sold within Maxicorp’s premises, they were also produced, packaged and in some cases, installed there.

  F  For purposes of determining probable cause, the sales receipt is not the only proof that the sale of petitioners’ software occurred.  During the search warrant application proceedings, NBI Agent Samiano presented to the judge the computer unit that he purchased from Maxicorp, in which computer unit Maxicorp had pre-installed petitioners’ software.[27] Sacriz, who was present when NBI Agent Samiano purchased the computer unit, affirmed that NBI Agent Samiano purchased the computer unit.[28] Pante, the computer technician, demonstrated to the judge the presence of petitioners’ software on the same computer unit.[29] There was a comparison between petitioners’ genuine software and Maxicorp’s software pre-installed in the computer unit that NBI Agent Sambiano purchased.[30] Even if we disregard the sales receipt issued in the name of “Joel Diaz,” which petitioners explained was the alias NBI Agent Samiano used in the operation, there still remains more than sufficient evidence to establish probable cause for the issuance of the search warrants.

  F  The fact that Sacriz did not actually purchase counterfeit software from Maxicorp does not eliminate the existence of probable cause. Copyright infringement and unfair competition are not limited to the act of selling counterfeit goods. They cover a whole range of acts, from copying, assembling, packaging to marketing, including the mere offering for sale of the counterfeit goods.  The clear and firm testimonies of petitioners’ witnesses on such other acts stand untarnished

  F  WHETHER THE SEARCH WARRANTS ARE “GENERAL WARRANTS.”: However, we find paragraph (c) of the search warrants lacking in particularity. Paragraph (c) states: c)    Sundry items such as labels, boxes, prints, packages, wrappers, receptacles, advertisements and other paraphernalia bearing the copyrights and/or trademarks owned by MICROSOFT CORPORATION;

  F  The scope of this description is all-embracing since it covers property used for personal or other purposes not related to copyright infringement or unfair competition. Moreover, the description covers property that Maxicorp may have bought legitimately from Microsoft or its licensed distributors.   Paragraph (c) simply calls for the seizure of all items bearing the Microsoft logo, whether legitimately possessed or not. Neither does it limit the seizure to products used in copyright infringement or unfair competition.

  F  All articles seized under paragraph (c) of the search warrants, not falling under paragraphs a, b, d, e or f, are ordered returned to Maxicorp, Inc. immediately.

TRADEMARK

UNNO COMMERCIAL ENTERPRISES, INC.  vs. GENERAL MILLING CORPORATION

  F  The right to register trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same.

  F  An importer, broker, indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark.

  F  SCOPE: The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. Thus, this Court has on several occasions ruled that where the applicant's alleged ownership is not shown in any notarial document and the applicant appears to be merely an importer or distributor of the merchandise covered by said trademark, its application cannot be granted.

  F  DEED OF ASSIGNMENT; PROOF OF OWNERSHIP: The Director of Patents correctly found that ample evidence was presented that Centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark "All Montana" through a local importer and broker. The Deed of Assignment itself constitutes sufficient proof of its ownership of the trademark "All Montana, "showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. with principal place and business at Portland, Oregon, U.S.A. and the absolute and registered owner of several trademarks for wheat fl our, i.e. (I mperial, White Lily, Duck, General, Swan, White Horse, Vinta, El Paro, Baker's J oy, Choice, Red Bowl, All Montana and Dollar) all of which were assigned by it to respondent General Milling Corporation.

  F  Ownership of a trademark is not acquired by the mere fact of registration alone. Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right. As conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation by subsequent users.

  F  Under Rule 178 of the Rules of the Patent Office in Trademark Cases, the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case, such as the interference proceeding at bar.

KABUSHI KAISHA ISETAN ISETAN CO., LTD., vs. IAC, ISETANN DEPARTMENT STORE, INC.

  F  A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a trade name.

  F  A prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.

  F  The records show that the petitioner has never conducted any business in the Philippines. I t has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. I t is unknown to Filipinos except the very few who may have noticed it while travelling abroad. I t has never paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks. There can be no question from the records that the petitioner has never used its tradename or trademark in the Philippines. The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its use, even though such adoption is publicly declared, such as by use of the name in advertisements, circulars, price lists, and on signs and stationery.

  F  The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world that have signed it from using a trade name which happens to be used in one country.

  F  Conditions which must exist before any trademark owner can claim and be afforded rights:

1.    the mark must be internationally known or well known;

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

4.    The person claiming must be the owner of the mark.

PHILIP MORRIS, INC. v. FORTUNE TOBACCO CORPORATION

  F  RECIPROCITY: While petitioners enjoy the statutory presumptions arising from such registration, i.e., as to the validity of the registration, ownership and the exclusive right to use the registered marks, they may not successfully sue on the basis alone of their respective certificates of registration of trademarks. For, petitioners are still foreign corporations. As such, they ought, as a condition to availment of the rights and privileges vis-à-vis their trademarks in this country, to show proof that, on top of Philippine registration, their country grants substantially similar rights and privileges to Filipino citizens pursuant to Section 21-A20 of R.A. No. 166.

  F  ID: The aforementioned reciprocity requirement is a condition sine qua non to filing a suit by a foreign corporation which, unless alleged in the complaint, would justify dismissal thereof, a mere allegation that the suit is being pursued under Section 21-A of R.A. No. 166 not being sufficient.

  F  REGISTRATION VERSUS ACTUAL USE: True, the Philippines’ adherence to the Paris Convention24 effectively obligates the country to honor and enforce its provisions as regards the protection of industrial property of foreign nationals in this country. However, any protection accorded has to be made subject to the limitations of Philippine laws.

  F  Considering that R.A. No. 166, as amended, specifically Sections 228 and 2-A29 thereof, mandates actual use of the marks and/or emblems in local commerce and trade before they may be registered and ownership thereof acquired, the petitioners cannot, therefore, dispense with the element of actual use. Their being nationals of member-countries of the Paris Union does not alter the legal situation.

  F  Withal, the fact that international law has been made part of the law of the land does NOT by any means imply the primacy of international law over national law in the municipal sphere. Under the DOCTRINE OF INCORPORATION as applied in most countries, rules of International Law are given a standing EQUAL, not superior, to national legislative enactments.

  F  Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market.

  F  The registration of trademark cannot be deemed conclusive as to the actual use of such trademark in local commerce. As it were, registration does not confer upon the registrant an absolute right to the registered mark. The certificate of registration merely constitutes prima facie evidence that the registrant is the owner of the registered mark. Evidence of non-usage of the mark rebuts the presumption of trademark ownership, as what happened here when petitioners no less admitted not doing business in this country.

  F  Shangri-La International Hotel Management, Ltd. v. Development Group of Companies, Inc.: trademark is a creation of use and, therefore, actual use is a pre-requisite to exclusive ownership; registration is only an administrative confirmation of the existence of the right of ownership of the mark, but does not perfect such right; actual use thereof is the perfecting ingredient.

  F  With the foregoing perspective, it may be stated right off that the registration of a trademark unaccompanied by actual use thereof in the country accords the registrant only the standing to sue for infringement in Philippine courts. Entitlement to protection of such trademark in the country is entirely a different matter.

  F  For lack of convincing proof on the part of the petitioners of actual use of their registered trademarks prior to respondent’s use of its mark and for petitioners’ failure to demonstrate confusing similarity between said trademarks, the dismissal of their basic complaint for infringement and the concomitant plea for damages must be affirmed. The law, the surrounding circumstances and the equities of the situation call for this disposition.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD v. DEVELOPERS GROUP OF COMPANIES, INC.,

  F  Shangri-la Hotel did not infringe on the logo of DGCI. The applicable law at the time is RA 166, which requires that there must be at least 2 months actual use prior to registration. The registration by DGCI is invalid for want of the actual use requirement. Based on the facts & testimonies of the chairman of DGCI, the logo was designed in December 1982; yet, the application was filed as early as October 1982. There could be no actual use considering the foregoing facts; thus, invalidating DGCI’s registration.

  F  Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and use in trade or commerce. As between actual use of a mark without registration, and registration of the mark without actual use thereof, the former prevails over the latter. For a rule widely accepted and firmly entrenched, because it has come down through the years, is that actual use in commerce or business is a pre-requisite to the acquisition of the right of ownership.

  F  Even if registration was valid, it is not enough to confer ownership of the trademark. As already held, registration merely creates a prima facie presumption ①of the validity of the registration, ② of the registrant's ownership of the trademark and ③of the exclusive right to the use thereof. This presumption is rebuttable & must give way to evidence on the contrary.

  F  Under RA 166, any person may appropriate to his exclusive use a trademark, trade name, or a service mark not so appropriated by another. The exclusion did not require that the prior appropriation of another must be in the Philippines; hence, it was interpreted to cover also appropriation outside the country. Shangri-la Hotel has been continuously using their mark & logo since 1975, while DGCI began using theirs towards the end of 1982.

  F  While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant, neither did respondent DGCI , since the latter also failed to fulfill the 2month actual use requirement. What is worse, DGCI was not even the owner of the mark. For it to have been the owner, the mark must not have been already appropriated (i.e., used) by someone else. At the time of respondent DGCI 's registration of the mark, the same was already being used by the petitioners, albeit abroad, of which DGCI 's president was fully aware.

  F  A person or entity who is not the owner of a trademark could not bring an action of infringement. Decision of the CA was set aside, complaint of DGCI was dismissed.

  F  NEW LAW: The new Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly shows the firm resolve of the Philippines to observe and follow the Paris Convention by incorporating the relevant portions of the Convention such that persons who may question a mark (that is, oppose registration, petition for the cancellation thereof, sue for unfair competition) include persons whose internationally well-known mark, whether or not registered, is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is actually registered

ANG v. TORIBIO

  F  That petitioner's registration of the trade-mark "Ang Tibay" should be cancelled, and that she should be perpetually enjoined from using said trade-mark on goods manufactured and sold by her.

  F  The term “Ang Tibay”, not being a geographic or descriptive word, is capable of exclusive appropriation as trademark. An inquiry into the etymology and meaning of the Tagalog words "Ang Tibay," made in the decision, shows that the phrase is never used adjectively to define or describe an object. I t is, therefore, not a descriptive term within the meaning of the Trade-mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. Hence, it was originally capable of exclusive appropriation as a trade-mark by the respondent.

  F  FUNCTIONS OF TRADEMARK; DOCTRINE OF SECONDARY MEANING: The function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied. "Ang Tibay," as used by the respondent to designate his wares, had exactly performed that function for twenty-two years before the petitioner adopted it as a trade-mark in her own business. "Ang Tibay" shoes and slippers are, by association, known throughout the Philippines as products of the "Ang Tibay" factory owned and operated by the respondent. Even if "Ang Tibay," therefore, were not capable of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondent's long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation. This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.

  F  Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would nevertheless be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade- marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. Such construction of the law is induced by cogent reasons of equity and fair dealing discussed in the decision.

  F  The courts have come to realize that there can be unfair competition or unfair trading even if the goods are non competing, and that such unfair trading can cause injury or damage to the first user of a given trademark. First, by prevention of natural expansion of the business and second, by having his business reputation confused with and put at the mercy of the 2nd user. When noncompetitive products are sold under the same mark, the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark created by its first user, inevitably results. The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and merit of his wares and services.”

Philip Morris, Inc. v. CA (224 SCRA 624, Dissenting  Opinion; Justice Feliciano

  F  In the trial court, both J udge Reyes and J udge Galing took the position that until the Director of Patents shall have finally acted on private respondent's application for registration of "MARK," petitioners cannot be granted the relief of preliminary injunction. I t is respectfully submitted that this position is both erroneous and unfortunate.

                                ¾        The pendency of the application before the Director of Patents is not in itself a reason for denying preliminary injunction. Our courts have jurisdiction and authority to determine whether or not "MARK" is an infringement on petitioners' registered trademarks. Under our case law, the issuance of a Certificate of Registration of a trademark in the Principal Register by the Director of Patents would not prevent a court from ruling on whether or not the trademark so granted registration is confusingly similar with a previously registered trademark, where such issue is essential for resolution of a case properly before the court.

                                ¾        "MARK" has taken over the dominant word in "MARK VI I " and "MARK TEN." These circumstances, coupled with private respondent's failure to explain how or why it chose, out of all the words in the English language, the word "mark" to refer to its cigarettes, lead me to the submission that there is a prima facie basis for holding, as the Patent Office has held and as the Court of Appeals did hold originally, that private respondent's "MARK" infringes upon petitioners' registered trademarks.

  F  There is thus no question as to the legal rights of petitioners as holders of trademarks registered in the Philippines. Private respondent, however, resists and assails petitioners' effort to enforce their legal rights by heavily underscoring the fact that petitioners are not registered to do business in the Philippines and are not in fact doing business in the Philippines.

                                ¾        Foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine courts to protect their rights as holders of trademarks registered in the Philippines PROVIDED that the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled by treaty, convention or law, grants similar privilege to corporate or juristic persons of the Philippines."

                                ¾        EFFECT: A corporate national of a member country of the Paris Union is entitled to bring in Philippine courts an action for infringement of trademarks, or for unfair competition, without necessity for obtaining registration or a license to do business in the Philippines, and without necessity of actually doing business in the Philippines.

                                ¾        The very fact that the appropriate Philippine Government office issued the Certificates of Registration necessarily gave rise to the presumption that such pre-registration use had in fact been shown to the satisfaction of the Philippines Patent Office (now the Bureau of Patents, Trademarks and Technology Transfer ["BPTTT"]). I t is important to note that respondent Fortune has not purported to attack the validity of the trademarks "Mark Ten" and "Lark" by pretending that no pre-registration use in commerce in the Philippines had been shown.

                                ¾        In the case at bar, again, respondent Fortune has not explicitly pretended that the petitioners' trademarks have been abandoned by non-use in trade and commerce in the Philippines although it appears to insinuate such non-use and abandonment by stressing that petitioners are not doing business in the Philippines.

                                ¾        The circumstance that the foreign owner of a Philippine trademark is not licensed to do business and is not doing business in the Philippines, does not mean that petitioner's goods (that is, goods bearing petitioner's trademark) are not sold in the Philippines. For cigarettes bearing petitioners' trademarks may in fact be imported into and be available for sale in the Philippines through the acts of importers or distributors. Petitioners have stated that their "Mark VI I ," "Mark Ten" and "Lark" cigarettes are in fact brought into the country and available for sale here in, e.g., duty-free shops, though not imported into or sold in the Philippines by petitioners themselves.

  F  Here again, a basic argument of private respondent was that petitioners had not shown any damages because they are not doing business in the Philippines.

                                ¾        That petitioners are not doing business and are not licensed to do business in the Philippines, does not necessarily mean that petitioners are not in a position to sustain, and do not in fact sustain, damage through trademark infringement on the part of a local enterprise. Such trademark infringement by a local company may, for one thing, affect the volume of importation into the Philippines of cigarettes bearing petitioners' trademarks by independent or third party traders.

                                ¾        That a registered trademark has value in itself apart from the trade physically accompanying its use, has been recognized by our Court. I n Ang v. Teodoro.

                                ¾        STA ANA v. MALIWAT: Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actua market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trademark or trade-name is likely to lead to a confusing of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business

  F  I next turn to private respondent's claim that issuance of an injunction would impose heavy damage upon itself and upon the Government.

                                ¾        Petitioners seek only the reinstatement of the original injunction issued by the Court of Appeals, i.e., one that restrains private respondent from using the trademark "MARK" on its cigarettes. There is nothing to prevent private respondent from continuing to manufacture and sell cigarettes under any of its already existing and registered trademarks, of which it has several, or under some new and specially created trademark(s). Realistically, private respondent, if enjoined, would lose only the value of the cigarettes already branded with "MARK," the value of the packaging material imprinted with the same trademark (which cigarettes and material may well be amenable to re-cycling) and the cost of past advertisements of "MARK" in media, if any.

VICTORIAS MILLING CO v. ONG SU

  F  The contention of petitioner that the diamond design in its trademark is an index of origin has no merit. The petitioner has not shown that the design portion of the mark has been so used that purchasers recognize the design, standing alone, as indicating goods coming from the registrant. As correctly stated by the Director of Patents, common geometric shapes such as diamonds ordinarily are not regarded as indicia of origin for goods to which the remarks are applied unless they have acquired a secondary meaning. And there is no evidence that the diamond design in the trademark of the petitioner has acquired a secondary meaning with respect to its sugar business. The word "Victorias" is what Identifies the sugar contained in the bag as the product of the petitioner. Indeed, the petitioner has advertised its sugar in bags marked "Victorias" with oval, hexagor. and other designs.

  F  It seems clear that the words "Valentine" and "Victorias" and the names and places of business of Victorias Milling Company, Inc. and Ong Su are the dominant features of the trademarks in question. The petitioner has not established such a substantial similarity between the two trademarks in question as to warrant the cancellation of the trademark 'Valentine'of the respondent Su.

  F  The Director of Patents correctly ruled that he has no jurisdiction over the issue of unfair competition.

  F  It seems immaterial whether or not Ong Su has judicial authority to use Mariano Ang as an alias. There is evidence that even before the last World War, the trademark 'Valentine' and design had been used under the name of either Ong Su or Mariano Ang.

  F   

  F  The words "Victorias" and "Valentine" are not similar in spelling and do not have a similar sound when pronounced. Even the diamond designs are different. The diamond design of the trademark "Valentine" has protruding fines at the comers. Even an illiterate person can see the difference between the two diamond designs.

CANON KABUSHIKI KAISHAvs. CA & NSR RUBBER CORPORATION

  F  We reiterated the principle that 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.[11] Thus, the exclusive right of petitioner in this case to use the trademark CANON is limited to the products covered by its certificate of registration.

  F  Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect[4] as mandated by the Trademark Law.[5] 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.

  F  In Faberge, Incorporated vs. Intermediate Appellate Court,[9] the Director of patents allowed the junior user to use the trademark of the senior user on the ground that the briefs manufactured by the junior user, the product for which the trademark BRUTE was sought to be registered, was unrelated and non-competing with the products of the senior user consisting of after shave lotion, shaving cream, deodorant, talcum powder, and toilet soap. The senior user vehemently objected and claimed that it was expanding its trademark to briefs and argued that permitting the junior user to register the same trademark would allow the latter to invade the senior user’s exclusive domain. In sustaining the Director of Patents, this Court said that since "(the senior user) has not ventured in the production of briefs, an item which is not listed in its certificate of registration, (the senior user), cannot and should not be allowed to feign that (the junior user) had invaded (the senior user’s) exclusive domain.

  F  Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality.[19] They may also be related because they serve the same purpose or are sold in grocery stores.

  F  Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the trademark CANON are unrelated to sandals, the product of private respondent. We agree with the BPTTT, following the Esso doctrine, when it noted that the two classes of products in this case flow through different trade channels. The products of petitioner are sold through special chemical stores or distributors while the products of private respondent are sold in grocery stores, sari-sari stores and department stores.[23] Thus, the evident disparity of the products of the parties in the case at bar renders unfounded the apprehension of petitioner that confusion of business or origin might occur if private respondent is allowed to use the mark CANON.

  F  Tradename is defined by the same law as including "individual names and surnames, firm names, tradenames, devices or words used by manufacturers, industrialists, merchants, agriculturists, and others to identify their business, vocations, or occupations; the names or titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or commerce." Simply put, a trade name refers to the business and its goodwill; a trademark refers to the goods

  F  There is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity.

  F  The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world which have signed it from using a tradename which happens to be used in one country. To illustrate – if a taxicab or bus company in a town in the United Kingdom or India happens to use the tradename "Rapid Transportation", it does not necessarily follow that "Rapid" can no longer be registered in Uganda, Fiji, or the Philippines.

  F  Guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris:

1.    the mark must be internationally known;

2.    the subject of the right must be a trademark, not a patent or copyright or anything else;

3.    mark must be for use in the same or similar kinds of goods; and

4.    the person claiming must be the owner of the mark

  F  Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be for use in the same or similar kinds of goods. The Petitioner is using the mark "CANON" for products belonging to class 2 (paints, chemical products) while the Respondent is using the same mark for sandals (class 25). Hence, Petitioner’s contention that its mark is well-known at the time the Respondent filed its application for the same mark should fail. "

WESC, WESTERN ELECTRIC COMPANY, INC., vs. REYES

  F  The plaintiff, Western Electric Company, Inc., has been in existence as a corporation for over fifty years, during which time it has established a reputation all over the world including the Philippine Islands, for the kind and quality of its manufactured articles, and it is very apparent that the whole purpose and intent of Herman and his associates in seeking to incorporate another corporation under the identical name of Western Electric Company, Inc., and for the same identical purpose as that of the plaintiff, is to trespass upon and profit by its good name and business reputation. The very fact that Herman and his associates have sought the use of that particular name for that identical purpose is conclusive evidence of the fraudulent intent with which it is done.

  F  The judgment of the lower court is affirmed, with costs. So ordered.

STERLING PRODUCTS INTERNATIONAL, INCORPORATED v. FARBENFABRIKEN BAYER

AKTIENGESELLSCHAFT and ALLIED MANUFACTURING AND

TRADING CO., INC.

  F  Accordingly, the 1927 registration in the United States of the BAYER trademark would not of itself afford plaintiff protection for the use by defendants in the Philippines of the same trademark for the same or different products.

  F  Defendant cannot delist plaintiff’s BAYER trademark for medicine claiming right thereto for said use. While it is conceded that FBA's predecessors first introduced medical products with the BAYER trademarks in the Philippine market, it is equally true that, after World War I , no definite evidence there is that defendants or their predecessors traded in the Philippines in medicines with the BAYER trademarks thereafter. FBA did not seasonably voice its objections. Lack of protest thereto connoted acquiescence.

  F  The net result is that, as the trial court aptly observed, plaintiff may hold on to its BAYER trademarks for medicines. And defendants may continue using the same trademarks for insecticides and other chemicals, not medicines.

ASIA BREWERY v. CA

  F  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.

  F  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.

  F  The trial court perceptively observed that 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.

  F  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

  F  GENERI C OR DESCRI PTI VE AND PRI MARI LY GEOGRAPHI CALLY DESCRI PTI VE WORDS NON-REGI STRABLE AND NOT APPROPRI ABLE; REASON THEREFOR; CASE AT BAR.---

                                ¾        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

                                ¾        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.

                                ¾        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. In Masso Hermanos, S.A. vs. Director of Patents, 94 Phil. 136, 139 (1953), it was held that a dealer in shoes cannot register "Leather Shoes" as his trademark because that would be merely descriptive and it would be unjust to deprive other dealers in leather shoes of the right to use the same words with reference to their merchandise. No one may appropriate generic or descriptive words. They belong to the public domain.

                                ¾         

  F  PROTECTI ON AGAI NST I MI TATI ON PROPERLY LI MI TED TO NONFUNCTI ONAL FEATURES; CASE AT BAR.

                                ¾        The petitioner's contention that bottle size, shape and color may not be the exclusive property of any one beer manufacturer is well taken. SMC's being the first to use the steinie bottle does not give SMC a vested right to use it to the exclusion of everyone else. Being of functional or common use, and not the exclusive invention of any one, it is available to all who might need to use it within the industry. Nobody can acquire any exclusive right to market articles supplying simple human needs in containers or wrappers of the general form, size and character commonly and immediately used in marketing such articles

                                ¾        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.

                                ¾        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.

                                ¾        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.

  F  TRADEMARK ALLEGEDLY I NFRI NGED CONSI DERED AS A WHOLE ANDNOT AS DI SSECTED; DOCTRI NE ENUNCI ATED I N DEL MONTE CORPORATI ON vs. COURT OF APPEALS AND SUNSHI NE SAUCE MANUFACTURI NG I NDUSTRI ES, 181 SCRA 410, 419, NOT APPLI CABLE TO CASE AT BAR.

                                ¾        Del Monte Corporation vs. Court of Appeals and Sunshine Sauce Manufacturing Industries," 181 SCRA 410, 419, 3 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.

                                ¾        That ruling may not apply to all kinds of products. Our ruling in Del Monte would not apply to beer which is not usually picked from a store shelf but ordered by brand by the beer drinker himself from the storekeeper or waiter in a pub or restaurant.

  F  Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes its own bottle with a bulging neck to differentiate it from SMC's bottle, and prints ABI's name in three (3) places on said bottle (front, back and bottle cap) to prove that it has no intention to pass of its "BEER" as "SAN MIGUEL."

  F  There is no confusing similarity between the competing beers for the name of one is "SAN MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two outnumber their points of similarity.

  F  Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE PILSEN product. While its BEER PALE PILSEN admittedly competes with the latter in the open market, that competition is neither unfair nor fraudulent. Hence, we must deny SMC's prayer to suppress it.

DISSENTING: JUSTICE CRUZ

  F  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.

PAG-ASA INDUSTRIAL COPORATION v. COURT OF APPEALS

  F  An unreasonable length of time had already passed before respondent asserted its right to the trademark. There is a presumption of neglect already amounting to "abandonment" of a right after a party had remained silent for quite a long time during which petitioner had been openly using the trademark in question. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches.

  F  Respondent wanted goodwill and a wide market established at the expense of the petitioner but for its benefit. It is precisely the intention of the law, including a provision on equitable principle to protect only the vigilant, not those guilty of laches.

STA. ANA v. MALIWAT

  F  In the case at bar, the proof of date of first use (1953), earlier than that alleged in respondent Maliwat's application (1962), can be no less than clear and convincing because the fact was stipulated and no proof was needed. (JUDICIAL ADMISSION)

  F  EXTENT OF THE PROTECTI ON TO THE TRADEMARK OWNER. — Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer or when it forestalls the normal potential expansion of his business.

  F  POSSESSI ON OF THE SAME DESCRI PTI VE PROPERTI ES NOT REQUI RED; CASE AT BAR. — Sec. 4, Rep. Act No. 166 does not require that the articles of manufacture of the previous user and the late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in the principal register.

  F  Therefore, whether or not shirts and shoes have the same descriptive properties or whether or not it is the prevailing practice or the tendency of tailors and haberdashers to expand their business into shoe-making are not controlling. The meat of the matter is the likelihood of confusion, mistake or deception upon purchaser of the goods of the junior user of the mark and the goods manufactured by the previous user. Here, the resemblance or similarity of the mark "FLORMANN and the name FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior adopter, respondent Maliwat, has the better right to the use of the mark.

Phil. Refining Co. vs. Ng Sam[G.R.No. L-26676.July 30, 1982]

  F  A rudimentary precept in trademark protection is that "the right to a trademark is a limited one, in the sense that others may used the same mark on unrelated goods.

  F  A trademark is designed to Identify the user. But it should be so distinctive and sufficiently original as to enable those who come into contact with it to recognize instantly the Identity of the user. " It must be affirmative and definite, significant and distinctive, capable to indicate origin

  F  APPROPRI ATI ON OR I MI TATI ON OF TRADEMARK "CAMIA” CANNOT I NJ URE PETI TI ONER I N CASE AT BAR FOR BEI NG A GENERIC ANDCOMMON TERM. Being a generic and common term, its appropriation as a trademark, albeit in a fanciful manner in that it bears no relation to the product it Identifies, is valid.

  F  It has been held that if a mark is so commonplace that it cannot be readily distinguished from others, then it is apparent that it cannot Identify a particular business; and he who first adopted it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived.

  F  WHERE BUSI NESSES OF PARTI ES I N CASE AT BAR ARE NONCOMPETITI VE AND THEIR PRODUCTS UNRELATED, THE USE OF I DENTI CAL TRADEMARKS ON PRODUCTS UNDER THE SAME CLASSI FI CATI ON CANNOT CONFUSE CONSUMERS AS TO THEI R SOURCE.

MIGHTY CORPORATION v. E.J. GALLO WINERY

  F  DISTINCTIONS BETWEEN TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION: The l aw on unfair competition is broader and more inclusive than the law on trademark infringement. The latter is more limited but it recognizes a more exclusive right derived from the trademark adoption and registration by the person whose goods or business is first associated with it. The law on trademarks is thus a specialized subject distinct from the law on unfair competition. Hence, even if one fails to establish his exclusive property right to a trademark, he may still obtain relief on the ground of his competitor's unfairness or fraud.

  F  In Del Monte Corporation vs. Court of Appeals,[45] we distinguished trademark infringement from unfair competition:

1.    Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of one's goods as those of another.

2.    In infringement of trademark fraudulent intent is unnecessary, whereas in unfair competition fraudulent intent is essential.

3.    In infringement of trademark the prior registration of the trademark is a prerequisite to the action, whereas in unfair competition registration is not necessary.

  F  Thus, under Article 6^bis of the Paris Convention, the following are the elements of trademark infringement:

(a)  registration or use by another person of a trademark which is a reproduction, imitation or translation liable to create confusion

(b)    of a mark considered by the competent authority of the country of registration or use to be well-known in that country and is already the mark of a person entitled to the benefits of the Paris Convention, and

(c)such trademark is used for identical or similar goods.

  F  In summary, the Paris Convention protects well-known trademarks only (to be determined by domestic authorities), while the Trademark Law protects all trademarks, whether well-known or not, provided that they have been registered and are in actual commercial use in the Philippines.\

  F  Under both the Paris Convention and the Trademark Law, the protection of a registered trademark is limited only to goods identical or similar to those in respect of which such trademark is registered and only when there is likelihood of confusion. Under both laws, the time element in commencing infringement cases is material in ascertaining the registrant’s express or implied consent to another’s use of its trademark or a colorable imitation thereof.  This is why acquiescence, estoppel or laches may defeat the registrant’s otherwise valid cause of action.

  F  NO LIKELIHOOD OF CONFUSION, MISTAKE OR DECEIT AS TO THE IDENTITY OR SOURCE OF PETITIONERS’ AND RESPONDENTS’ GOODS OR BUSINESS.

  F  There are two types of confusion in trademark infringement.  The first is “confusion of goods” when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case defendant’s goods are then bought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation.  The other is “confusion of business” wherein the goods of the parties are different but the defendant’s product can reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection between the plaintiff and defendant which, in fact, does not exist

  F  In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on the purchaser and [d] the registrant’s express or implied consent and other fair and equitable considerations.

  F  The many different features like color schemes, art works and other markings of both products drown out the similarity between them – the use of the word “GALLO” ― a family surname for the Gallo Winery’s wines and a Spanish word for rooster for petitioners’ cigarettes.

  F  WINES AND CIGARETTES ARE NOT IDENTICAL, SIMILAR, COMPETING OR RELATED GOODS

  F  RELATED GOODS: Simply stated, when goods are so related that the public may be, or is actually, deceived and misled that they come from the same maker or manufacturer, trademark infringement occurs

  F  In this regard, we adopted the Director of Patents’ finding in Philippine Refining Co., Inc. vs. Ng Sam and the Director of Patents:

  F  GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO wines are patronized by middle-to-high-income earners while GALLO cigarettes appeal only to simple folks like farmers, fishermen, laborers and other low-income workers.

  F  GALLO cigarettes and GALLO wines are not sold through the same channels of trade.  GALLO cigarettes are Philippine-made and petitioners neither claim nor pass off their goods as imported or emanating from Gallo Winery. GALLO cigarettes are distributed, marketed and sold through ambulant and sidewalk vendors, small local sari-sari stores and grocery stores in Philippine rural areas, mainly in Misamis Oriental, Pangasinan, Bohol, and Cebu.[118] On the other hand, GALLO wines are imported, distributed and sold in the Philippines through Gallo Winery’s exclusive contracts with a domestic entity, which is currently Andresons. By respondents’ own testimonial evidence, GALLO wines are sold in hotels, expensive bars and restaurants, and high-end grocery stores and supermarkets, not through sari-sari stores or ambulant vendors.

  F  THE GALLO WINE TRADEMARK IS NOT A WELL-KNOWN MARK IN THE CONTEXT OF THE PARIS CONVENTION IN THIS CASE SINCE WINES AND CIGARETTES ARE NOT IDENTICAL OR SIMILAR GOODS

  F  “Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity.

PUMA v. IAC

  F  A FOREIGN CORPORATI ON NOT DOING BUSI NESS IN THE PHI LI PPINE CAN SUE IN PHI LI PPINE COURT FOR INFRI NGEMENT----

                                ¾        I n the leading case of La Chemise Lacoste, S.A. v. Fernandez, (129 SCRA 373), we ruled: "But even assuming the truth of the private respondent's allegation that the petitioner failed to allege material facts in its petition relative to capacity to sue, the petitioner may still maintain the present suit against respondent Hemandas. As early as 1927, this Court was, and it still is, of the view that a foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition."

                                ¾        I n the case of Converse Rubber Corporation v. Universal Rubber Products, I nc. (147 SCRA 165), we likewise re-affirmed our adherence to the Paris Convention: "The ruling in the aforecited case is in consonance with the Convention of the Union of Paris for the Protection of I ndustrial Property to which the Philippines became a party on September 27, 1965. Article 8 thereof provides that 'a trade name [corporation name] shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of the trademark.'

  F  LIS PENDENS; PRI NCI PLE NOT APPLICABLE TO ADMI NI STRATI VE CASES.

  F  As regards the propriety of the issuance of the writ of preliminary injunction, the records show that herein private respondent was given the opportunity to present its counter-evidence against the issuance thereof but it intentionally refused to do so to be consistent with its theory that the civil case should be dismissed in the first place. Considering the fact that "PUMA" is an internationally known brand name, it is pertinent to reiterate the directive to lower courts, which equally applies to administrative agencies. Judges all over the country are well advised to remember that court processes should not be used as instruments to, unwittingly or otherwise, aid counterfeiters and intellectual pirates, tie the hands of the law as it seeks to protect the Filipino consuming public and frustrate executive and administrative implementation of solemn commitments pursuant to international conventions and treaties."

LA CHEMISE LACOSTE v. HERNANDEZ (Art. 152. 2)

  F  Whether the proceedings before the patent office is a prejudicial question that need to be resolved  before the criminal action for unfair competition may be pursued.

  F  No.  The proceedings pending before the Patent Office do not partake of the nature of a prejudicial  question  which must first be definitely resolved.  The case which suspends the criminal action must be a civil case, not a mere administrative case, which is determinative of the innocence or guilt of the accused.   The issue whether a trademark used is different from another’s trademark is a matter of defense and will be better resolved in the criminal proceedings before a court of justice instead of raising it as a preliminary matter in an administrative proceeding.

  F  Inasmuch as  the goodwill  and reputation of La Chemise Lacoste products  date  back even before  1964, Hemandas  cannot  be  allowed to continue  the  trademark “Lacoste”  for  the  reason that  he  was  the  first registrant in the Supplemental Register of a trademark used in international commerce.  Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register.  It must be noted that one may be declared an unfair competitor even if  his competing trademark is registered.   La Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which include “Lacoste.”