WIGBERTO TANADA AND NIKKI COSETENG, et al, v. EDAGARDO ANGARA, et al.

272 SCRA 18, May 2, 1997 FACTS : This is a petition seeking to nullify the Philippine ratification of the World Trade Organization (WTO) Agreement. Petitioners question the concurrence of herein respondents acting in their capacities as Senators via signing the said agreement. The WTO opens access to foreign markets, especially its major trading partners, through the reduction of tariffs on its exports, particularly agricultural and industrial products. Thus, provides new opportunities for the service sector cost and uncertainty associated with exporting and more investment in the country. These are the predicted benefits as reflected in the agreement and as viewed by the signatory Senators, a free market espoused by WTO. Petitioners on the other hand viewed the WTO agreement as one that limits, restricts and impair Philippine economic sovereignty and legislative power. That the Filipino First policy of the Constitution was taken for granted as it gives foreign trading intervention. ISSUE: Whether or not there has been a grave abuse of discretion amounting to lack or excess of jurisdiction on the part of the Senate in giving its concurrence of the said WTO agreement. RULING: In its Declaration of Principles and state policies, the Constitution adopts the generally accepted principles of international law as part of the law of the land, and adheres to the policy of peace, equality, justice, freedom, cooperation and amity , with all nations. By the doctrine of incorporation, the country is bound by generally accepted principles of international law, which are considered automatically part of our own laws. Pacta sunt servanda international agreements must be performed in good faith. A treaty is not a mere moral obligation but creates a legally binding obligation on the parties. Through WTO the sovereignty of the state cannot in fact and reality be considered as absolute because it is a regulation of commercial relations among nations. Such as when Philippines joined the United Nations (UN) it consented to restrict its sovereignty right under the concept of sovereignty as autolimitation. What Senate did was a valid exercise of authority. As to determine whether such exercise is wise, beneficial or viable is outside the

realm of judicial inquiry and review. The act of signing the said agreement is not a legislative restriction as WTO allows withdrawal of membership should this be the political desire of a member. Also, it should not be viewed as a limitation of economic sovereignty. WTO remains as the only viable structure for multilateral trading and the veritable forum for the development of international trade law. Its alternative is isolation, stagnation if not economic self-destruction. Thus, the people be allowed, through their duly elected officers, make their free choice. PRIBHDAS MIRPURI vs CA, GR No. 114508, 19 November 1999 FACTS: Lolita Escobar applied with the Bureau of Patents for the registration of the trademark Barbizon, alleging that she had been manufacturing and selling these products since 1970. Barbizon Corp opposed the. The Bureau granted the application and a certificate of registration was issued for the trademark Barbizon. Escobar later assigned all her rights and interest over the trademark to Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark. Due to his failure, the Bureau cancelled the certificate of registration. Escobar reapplied and Mirpuri also applied and this application was again opposed Barbizon, claiming that it adopted said trademark in 1933 and has been using it. It obtained a certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioners registration and declared private respondent the owner and prior user of the business name Barbizon International. ISSUE: Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark. RULING: The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of distinguishing goods. 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. 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. E.Y Industrial Sales, Inc. and Engracio Yap v. Shen Dar Electricity and Machinery, G.R. No. 184850, October 20, 2010 FACTS: EYIS is a domestic corporation engaged in the production, manufacture, sales and distribution of air compressors, etc. Shen Dar is a Taiwan-based foreign corporation engaged in the manufacture of air compressors. Both companies claim to have the right to register the trademark VESPA for air compressors. In 1997, Shen Dar applied with IPO to register VESPA, Chinese characters and devise for use on air compressors and welding machines; 2007 approved, COR received In 1999, EYIS applied with IPO to register VESPA for use on air compressors; 2004 approved, COR received. Shen Dar then filed a Petition for Cancellation of EYIS COR with the BLA, arguing that EYIS is a mere distributor of air compressors bearing the mark VESPA which it imported from Shen Dar. It further argued that it had prior and exclusive right to use VESPA in the Philippines under the Paris Convention. EYIS denied Shen Dars claims, saying it has been the sole assembler and fabricator of VESPA air compressors since the early 90s. They further contend that Shen Dar supplied them SD air compressors, and that Shen Dar is not the owner of the mark and thus could not seek protection from the Paris Convention or the IP Code. BLA, IP Director-General, found for EYIS and cancelled Shen Dars COR. CA reversed IPO. ISSUE: Can a COR be cancelled? YES A registered trademark owners certificate of registration may be cancelled even that trademark owner is the complainant in a petition for cancellation of an adverse trademark. You can fall on your sword, so to speak. A Declaration of Actual Use (requirement for trademark registration) although notarized, hence a public document, must be accompanied by

proof of actual use as of the date claimed. The trademark owner must, therefore, present evidence of such actual use. An earlier valid trademark registration may still be cancelled upon proof of prior and continuous use by rival trademark applicant. Evidence of prior and continuous use of the mark or trade name by another can overcome the presumptive ownership of the registrant and may very well entitle the former to be declared owner in an appropriate case. When the applicant is not the owner of the trademark being applied for, he has no right to apply for registration of the same. ELIDAD C. KHO v HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM CHAY, G.R. No. 115758 March 19, 2002 FACTS: Kho alleged that she is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case as evidenced by certificates of copyright registrations and patent rights on Chun Chun Su & Device and Chin Chun Su (medicated cream) after she purchased it from Quintin Cheng (previous registered owner in the Philippine Patent Office [PPO], who was allegedly terminated by Shun Yi). Meanwhile, there was a decline in the petitioners business income due to the advertisement and sale made by Summerville on petitioners products under the same brand name and in similar containers. According to Summerville, they are the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan and that said company authorized them to register its trade name Chin Chun Su Mediated Cream with the PPO. The application for preliminary injunction filed by petitioner was granted. Hence, respondents moved for reconsideration, which was denied. The respondents then moved for nullification of said preliminary injunction with the CA. The latter granted its petition. ISSUE: WON the copyright and patent over the name and container of the beauty cream product entitle the registrant to its EXCLUSIVE use and ownership. RULING:

NO. Kho has no right for the EXCLUSIVE use of the trade name and its container. In order to be entitled to its exclusive use, the user must sufficiently prove that she registered or used it before anybody else did. This, petitioner failed to do. Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refers to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. ARCE SONS AND COMPANY v. SELECTA BISCUIT COMPANY, INC., ET AL., FACTS: On August 31, 1955, Selecta Biscuit Company, Inc., filed with the Philippine Patent Office a petition for the registration of the word "SELECTA" as trademark to be use in its bakery products alleging that it is in actual use thereof for not less than two months before said date and that "no other persons, partnership, corporation or association ... has the right to use said trademark in the Philippines, either in the identical form or in any such near resemblance thereto, as might be calculated to deceive." Its petition was referred to an examiner for study who found that the trade-mark sought to be registered resembles the word "SELECTA" used by the Acre and Sons and Company in its milk and ice cream products so that its use by respondent will cause confusion as to the origin of their respective goods. Consequently, he recommended that the application be refused. The Patent Office ordered the publication of the application for purposes of opposition. The Arce Sons and Company then filed their opposition claiming that the mark Selecta has already become identified with the name of Ramon Arce and its business. Moreover, that the mark was used continuously since 1933 while the respondent herein only used it during 1955. ISSUE:

Is the word Selecta considered a trademark? YES RULING: A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of the products to which it is attached. "The word 'SELECTA', it is true, may be an ordinary or common word in the sense that maybe used or employed by any one in promoting his business or enterprise, but once adopted or coined in connection with one's business as an emblem, signor device to characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business. In this sense, its use by another may lead to confusion in trade and cause damage to its business. And this is the situation of petitioner when it used the word 'SELECTA' as a trademark. In this sense, the law gives its protection and guarantees its use to the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373). And it is also in the sense that the law postulates that "The ownership or possession of a trade-mark, . . . shall be recognized and protected in the same manner and to the same extent, as are other property rights known to the law," thereby giving to any person entitled to the exclusive use of such trade-mark the right to recover damages in a civil action from any person who may have sold goods of similar kind bearing such trademark.

ANA L. ANG vs. TORIBIO TEODORO, G.R. No. 48226. December 14, 1942 FACTS: Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a trade name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933. On the other hand, Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. Teodoro filed a complaint against Ang. RTC rendered decision in favor of Ang on the grounds that the two trade-marks are dissimilar and are used on

different and non-competing goods. CA reversed the RTC decision and ruled that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles on which the two trademarks are used are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes a violation of Sections 3 and 7 of Act No. 666. ISSUES: 1. WON the trademark and tradename Ang Tibay is a descriptive word which will bar its registration. NO. The phrase "Ang Tibay" is an exclamation denoting admiration of strength or durability. The phrase "ang tibay" is never used adjectively to define or describe an object. "Ang Tibay" is 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 trademark or trade-name. 2. Who is the lawful registrant? Teodoro. Doctrine of secondary meaning, 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. The same trade-mark, used on unlike goods, could not cause confusion in trade and that, therefore, there could be no objection to the use and registration of a well-known mark by a third party for a different class of goods. 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. It is certainly not farfetched to surmise that the selection by petitioner of the same

trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent, and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival.