Sasot vs. People GR No.

143193 (June 29,2005)

FACTS:

The National Bureau of Investigation conducted an investigation pursuant to a

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

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

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

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

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

Petitioners sought for the reconsideration of the Decision, but was denied by the
CA, hence this petition.

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

HELD: The petition must be denied.

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

More importantly, the crime of Unfair Competition punishable under Article

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

PEARL & DEAN (PHIL.), INC. vs SHOEMART, INC GR No.

148222 (August 15,2003)
FACTS:

Pearl and Dean is a corporation engaged in the manufacture of advertising display

units referred to as light boxes and these light boxes were marketed under the trademark
Poster Ads. Pearl and Dean entered into a contract with Shoemart, Inc. for the lease and
installation of the light boxes in SM North Edsa. However, due to construction
constraints, Shoemart, Inc offered as an alternative SM Makati and SM Cubao.

After Pearl and Dean’s contract was rescinded, exact copies of its light boxes
were installed in various SM malls, fabricated by Metro Industrial Services and later by
EYD Rainbow Advertising Corporation. Pearl and Dean sent a letter to Shoemart and
its sister company, North Edsa Marketing to cease using the light boxes and to remove
them from the malls, and demanded the discontinued used of the trademark “Poster
Ads”.

Unsatisfied with the compliance of its demands, Pearl and Dean sued Shoemart
which was ruled by the trial court in their favor. On appeal, however, the Court of
Appeals reversed the trial court’s decision.

ISSUE:

Whether Pearl and Dean’s copyright registration for its light boxes and the
trademark registration of “Poster Ads” preclude Shoemart and North Edsa Marketing
from using the same.

HELD:

No, Pearl and Dean secured its copyright under the classification class “o” work.
This being so, its protection extended only to the technical drawings and not to the light
box itself. Pearl and Dean cannot exclude others from the manufacture, sale and
commercial use over the light boxes on the sole basis of its copyright, certificated over
the technical drawings. It cannot be the intention of the law that the right of exclusivity
would be granted for a longer time through the simplified procedure of copyright
registration with the National Library, without the rigor of defending the patentability
of its “invention” before the IPO and the public.

On the other hand, there has been no evidence that Pearl and Dean’s use of “Poster
Ads” was distinctive or well known. “Poster Ads” was too generic a name to identify it
to a specific company or entity. “Poster Ads” was generic and incapable of being used
as a trademark because it was used in the field of poster advertising, the very business
engaged by Pearl and Dean. Furthermore, Pearl and Dean’s exclusive right to the use
of “Poster Ads” is limited to what is written in its certificate of registration. Shoemart
cannot be held liable for the infringement of the trademark.

Elidad C. Kho vs. Court of Appeals GR No. 115758 (March 19,

2002)
FACTS:

Petitioner‘s allegations are that they are doing business under the name and style of
KEC Cosmetics Laboratory, registered owner of Chin Chun Su and oval facial cream
container/case, and alleges that she also has patent rights on Chin Chun Su and Device
and Chin Chun Su Medicated Cream after purchasing the same from Quintin Cheng,
the registered owner thereof in the supplemental register of the Philippine Patent Office
and that Summerville advertised and sold petitioner’s cream products under the brand
name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the
public, and resulting in the decline in the petitioner’s business sales and income; and,
that the respondents should be enjoined from allegedly infringing on the copyrights and
patents of the petitioner.

The respondents, on the other hand, alleged as their defense that (1) Summerville
is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su
products manufactured by Shun Yi factory of Taiwan, (2) that the said Taiwanese
manufacturing company authorized Summerville to register its trade name Chin Chun
Cu Medicated Cream with the Philippine Patent office and Other appropriate
governmental agencies; (3) that KEC Cosmetics Laboratory of the petitioner obtained
the copyrights through misrepresentation and falsification; and, (4) that the authority of
Quintin Cheng, assignee of the patent registration certificate, to distribute and market
Chin Chun Su products in the Philippines had already terminated by the said Taiwanese
manufacturing company.

ISSUE:
Whether or not Kho has the sole right using the package of Chin Chun Su products.

HELD:

Petitioner has no right to support her claim for the exclusive use of the subject trade
name and its container. The name and container of a beauty cream product are proper
subjects of a trademark in as much as the same falls squarely within its definition. In
order to be entitled to exclusively use the same in the sale of the beauty cream product,
the user must sufficiently prove that she registered or used it before anybody else did.
The petitioner’s copyright and patent registration of the name and container would not
guarantee her the right to exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary
injunction order cannot be issued for the reason that the petitioner has not proven that
she has a clear right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the same before
anyone did.