MIRPURI vs. CA G.R. No.

114508, November 19, 1999

Puno, J.
Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the
trademark “Barbizon” for use in horsiers and ladies undergarments (IPC No. 686). Private
respondent reported Barbizon Corporation, a corporation organized and doing business under
the laws of New York, USA, opposed the application. It was alleged that its trademark is
confusingly similar with that of Escobar and that the registration of the said trademark will
cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due
course to the application. Escobar later assigned all his rights and interest over the trademark
to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the
trademark required under the Philippine Trademark Law. Due to this failure, the Bureau
cancelled Escobar’s certificate of registration. In 1981, Escobar and petitioner separately filed
this application for registration of the same trademark. (IPC 2049). Private respondent opposed
again. This time it alleged (1) that the said trademark was registered with the US Patent Office;
(2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that
its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of
the RPC. Petitioner raised the defense of Res Judicata.
Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC
No. 2049 involve the same cause of action?
Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised
the issue of ownership, the first registration and use of the trademark in the US and other
countries, and the international recognition of the trademark established by extensive use and
advertisement of respondents products for over 40 years here and abroad. These are different
from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have
been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in
IPC 2049 stems from the respondents claims 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 would arise for a considerable number of years prior to petitioner’s first
application. Indeed, these are substantial allegations that raised new issues and necessarily
gave respondents a new cause of action.
Moreover, the cancellation of petitioner’s certificate registration for failure
to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose
the second application.
It is also to be noted that the oppositions in the first and second cases are based on different
laws. Causes of action which are distinct and independent from each other, although out of the
same contract, transaction, or state of facts, may be sued on separately, recovery on one being
no bar to subsequent actions on others. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operating as res judicata,
such as where the actions are based on different statutes.
Puma vs IAC GR No. 75067
February 26, 1988
Guiterrez, Jr., J.

Facts
On February 8, 1984, the petitioner, a foreign corporation organized and existing under the laws
of the United States, brought a petition before the Philippine Patent Office the cancellation of
Certificate of Registration of the trademark HUSH PUPPIES and DOG DEVICE issued to the private
respondent, a Filipino citizen. In support of its petition for cancellation, the petitioner alleged,
inter alia, that it is the registrant of the internationally known trademark HUSH PUPPIES and the
DEVICE of a Dog in the United States and in other countries which are members of the Paris
Convention for the Protection of Industrial Property, that the goods sold by the private
respondent, on the one hand, and by the petitioner, on the other hand, belong to the same class
such that the private respondent’s use of the same trademark in the Philippines (which is a
member of said Paris Convention) in connection with the goods he sells constitutes an act of
unfair competition, as denied in the Paris Convention. Subsequently, the private respondent
moved to dismiss the petition on the ground of res judicata, averring that in 1973, or more than
ten years before this petition was filed, the same petitioner filed two petitions for cancellation,
all of which involved the trademark HUSH PUPPIES and DEVICE, before the Philippine Patent
Office. The Director of Patents had ruled in all three inter parties cases in favor of the private
respondent’s predecessor-in-interest. The CA affirmed these decisions. Consequently, the
Director of Patents denied the petition for cancellation. On appeal, the Court of Appeals at first
set aside the Director’s decision, however, upon reconsideration the latter was revived.

ISSUE:
Is the present petition for cancellation barred by res judicata?

HELD:
Yes. The Court has repeatedly held that for a judgment to be a bar to a subsequent case, the
following requisites must concur: (1) it must be a final judgment; (2) the court which rendered it
had jurisdiction over the subject matter and the parties; (3) it must be a judgment on the merits;
and (4) there must be Identity between the two cases, as to parties, subject matter, and cause of
action. Contrary to the petitioner’s assertion, the judgment in the previous cases involving
respondent’s trademark registration had long since become final and executor. That Sec. 17 of
Republic Act 166, also known as the Trademark Law, allows the cancellation of a registered
trademark is not a valid premises for the petitioner’s proposition that a decision granting
registration of a trademark cannot be imbued with the character of absolute finality as is required
in res judicata. A judgment or order is final, as to give it the authority of res judicata, if it can no
longer be modified by the court issuing it or by any other court. In the case at bar, the decision
of the Court of Appeals affirming that of the Director of Patents, in the cancellation cases filed in
1973, was never appealed to us.
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, and North Edsa Marketing,
Incorporated 15 August 2003
Cornoa, J:

FACTS:

Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture of advertising display units
simply referred to as light boxes. PDI was able to secure a Certificate of Copyright Registration,
the advertising light boxes were marketed under the trademark “Poster Ads”.

In 1985, PDI negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in certain SM Makati and SM Cubao. PDI submitted for signature
the contracts covering both stores, but only the contract for SM Makati, however, was returned
signed. Eventually, SMI’s informed PDI that it was rescinding the contract for SM Makati due to
non-performance of the terms thereof.

Years later, PDI found out that exact copies of its light boxes were installed at different SM
stores. It was further discovered that SMI’s sister company North Edsa Marketing Inc. (NEMI),
sells advertising space in lighted display units located in SMI’s different branches.

PDI sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes,
remove the same from SMI’s establishments and to discontinue the use of the trademark
“Poster Ads,” as well as the payment of compensatory damages.

Claiming that both SMI and NEMI failed to meet all its demands, PDI filed this instant case for
infringement of trademark and copyright, unfair competition and damages.

SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology, without notice of or reference to PDI’s copyright. SMI
noted that the registration of the mark “Poster Ads” was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word “Poster Ads” is a
generic term which cannot be appropriated as a trademark, and, as such, registration of such
mark is invalid. On this basis, SMI, aside from praying for the dismissal of the case, also
counterclaimed for moral, actual and exemplary damages and for the cancellation of PDI’s
Certification of Copyright Registration, and Certificate of Trademark Registration.

The RTC of Makati City decided in favour of PDI, finding SMI and NEMI jointly and severally
liable for infringement of copyright and infringement of trademark

On appeal, however, the Court of Appeals reversed the trial court.

ISSUES:

Whether there was a patent infringement.

RULING:

ON THE ISSUE OF PATENT INFRINGEMENT

Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights
which and could not legally prevent anyone from manufacturing or commercially using the
contraption. To be able to effectively and legally preclude others from copying and profiting
from the invention, a patent is a primordial requirement. No patent, no protection.

Booth vs Director of Patents

January 28, 1980
Melencio-Herrera, J.

Facts
Petitioners Claims:
BOOTHE and MORTON, chemists, citizens and residents of the United States, claim to be the
inventors of a new antibiotic designated as "tetracycline", a new derivative of chlortetracycline
(popularly known as "aureomycin). They filed an application for Letters Patent in the Philippines
with a claim for priority right pursuant to section 15 (Application previously filed abroad) of the
Patent Law. According to them, they are entitled to the right of priority granted to foreign
applicants since they have filed their application for Letters Patent with Specifications before
the Director of Patents on March 5, 1954 or within 1 year from March 16, 1953, the date of
their Application for Letters Patent in the United States. However, the Chief Patent Examiner
treated the same as an ordinary application since the Specifications submitted by BOOTHE and
MORTON within the one year period lack nine pages thus, incomplete. BOOTHE and MORTON
appealed to the Director of Patent and have claimed that the defect was a mere minor
informality and that they should still be given the priority right. The Director of Patents ruled on
matter not raised by BOOTHE and MORTON. Hence, the latter claims that the Director of
Patents should only confine his decision to the issue of whether or not the additional nine
pages of Specification they had submitted should be treated as new matter.

Respondents Claims:
The DIR OF PATENTS allowed the lacking pages but however ruled that the application of
BOOTHE and MORTON should only be treated as an ordinary one because they have only filed
the required certified copy of their foreign application on April 14, 1954. Thus, the filing date of
the application should be changed from March 5, 1954 to April 14, 1954.

Issue/s:
(a) Whether or not the DIR OF PATENTS shall only confine his decision to the matters appealed
from.
(b) Whether or not the DIR OF PATENTS erred in holding that the aforesaid application does not
fall under Section 15 of the Patent Law.

Ruling:
(a) NO. The DIR OF PATENTS is empowered to consider grounds which may have come to his
knowledge other than those specifically raised in an appeal. He need not confine himself only
to issues invoked. It was earlier concluded by the Supervising Patent Examiner that inasmuch as
the submitted pages did not correspond with the certified copy of the US application, the
present application cannot therefore be granted priority date under Section 15 as requested by
applicant. What Respondent Director exercised was within his authority to review the decisions
of Patents Examiners.
(b) NO. Under Sections 47 and 48 of the Patent Law, It is imperative that the application be
complete in order that it may be accepted. It is essential to the validity of Letters Patent that
the specification be full, definite and specific. The purpose of said requirement is to apprise the
public of that patentee claims as his invention, to inform Courts as to what they are called to
construe, and to convey to competing manufacturers and dealers information what they are
bound to avoid. The defect was one of substance and not merely one of form. An invention
disclosed in a previously filed application must be described within the instant application such
a manner as to enable one skilled in the art to use the same for a legally adequate utility. The
specification which BOOTHE and MORTON submitted on March 5, 1954 was far from complete.
That defect was one of substance and not merely one of form. What BOOTHE and MORTON
claimed as their invention was not completely determinable therefrom. The application of
BOOTHE and MORTON could be deemed as complete only on July 2, 1963 when they submitted
the additional pages on the Specifications and Claims.

Angelita Manzano vs CA
September 5, 1997
Bellosillo, J.

FACTS:
Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters
Patent for a gas burner registered in the name of private respondent Madolaria who
subsequently assigned the same to private respondent United Foundry. Petitioner alleged that
the utility model covered by the letters patent was not inventive, new, or useful, the specification
did not comply with the requirements of R.A. No. 165, that respondent was not the original, true,
and actual inventor nor did she derive her rights from the same, and that respondent was guilty
of fraud or misrepresentation in applying for the letters patent.

Petitioner also alleged that the utility model in question had already been in use and on sale
(petitioner herself being a distributor/seller of the said gas burners) in the Philippines for more
than one year before the respondent filed for the application. Petitioner presented two undated
brochures of two different Gas companies (Manila Gas Corp. & Esso Gasul) which allegedly
depicts an identical gas burner as the one covered in respondent’s letters patent. Respondent
presented her husband as lone witness to testify that respondent, thru complaints of customers,
devised a way to solve the defects in the gas burners, and respondent’s innovation is now the
subject of the letters patent.

The Director of Patents denied the petition for cancellation, which was affirmed by the CA, on
the ground that petitioner was not able to convincingly establish that the patented utility model
was not novel. Petitioner failed to overcome her burden and overturn the presumption of legality
of the issuance of letters patent and that respondent withheld material facts with intent to
deceive which, if disclosed, would have resulted in the refusal by the PPO to issue the letters
patent. Hence, this appeal.

ISSUE:
WON the CA erred in upholding the decision of the Director of Patents.

RULING:
NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO found her
invention novel and patentable. The issuance of such patent creates a presumption which yields
only to clear and cogent evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the burden is a heavy one which is
met only by clear and satisfactory proof which overcomes every reasonable doubt.

As found by the Director of Patents, the standard of evidence sufficient to overcome the
presumption of legality of the issuance of letters patent to respondent Madolaria was not legally
met by petitioner in her action for the cancellation of the patent. The findings and conclusions of
the Director of Patent were reiterated and affirmed by the Court of Appeals. The rule is settled
that the findings of fact of the Director of Patents, especially when affirmed by the Court of
Appeals, are conclusive on this Court when supported by substantial evidence.

The validity of the patent issued by the PPO in favor of private respondent and the question over
the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters
which are better determined by the PPO. The technical staff of the Philippine Patent Office
composed of experts in their field has by the issuance of the patent in question accepted private
respondents’ model of gas burner as a discovery. There is a presumption that the Office has
correctly determined the patentability of the model and such action must not be interfered with
in the absence of competent evidence to the contrary.

Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc.

November 17, 2010
Peralta, J.

Facts
Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed
under the brand name “Unasyn.” Sometime in January and February 2003, Pfizer discovered
that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals
without the Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist from
accepting such bids. Pfizer also demanded that Pharmawealth immediately withdraw its bids to
supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction
and forfeiture of the infringing products. A preliminary injunction effective for 90 days was
granted by the IPO’s Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for extension
filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals
(CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC)
a complaint for infringement and unfair competition, with a prayer for injunction. The RTC
issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping.
Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a motion
to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making
the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because
this was granted to the Director General. The CA denied all the motions. Pharmawealth filed a
petition for review on Certiorari with the Supreme Court.

Issues:
a) Can an injunctive relief be issued based on an action of patent infringement when the patent
allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the
Intellectual Property Office?

Held:
a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that
"the patentee shall have the exclusive right to make, use and sell the patented machine, article
or product, and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent; and such making, using,
or selling by any person without the authorization of the patentee constitutes infringement of
the patent."

Clearly, the patentee’s exclusive rights exist only during the term of the patent. Since the patent
was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165, after
17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right
to make, use, and sell the products covered by their patent. The CA was wrong in issuing a
temporary restraining order after the cut-off date.

b) 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.

Roma Drug vs Regional Trial Court

Pascual Godines vs CA
September 13, 1993
Romero, J.

Facts
Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz which
covers a utility model for hand tractor or power tiller by virtue of a deed of assignment executed
by the latter in its favor. Respondent after suffering a decline in sales of the patented power
tillers, investigated and discovered that petitioner Godines was manufacturing the same power
tillers as they have. Respondent thus filed a complaint for patent infringement and unfair
competition against petitioner Godines. The trial court held petitioner liable for infringement. CA
affirmed.
Issue:
Whether or not petitioner’s products infringe upon the patent of respondent SV-Agro.
Ruling:
YES. Tests have been established to determine infringement. These are (a) literal infringement;
and (b) the doctrine of equivalents. In using literal infringement as a test, “. . . resort must be had,
in the first instance, to the words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it.” To determine whether the particular item
falls within the literal meaning of the patent claims, the court must juxtapose the claims of the
patent and the accused product within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements. It appears from the
observation of the trial court that these claims of the patent and the features of the patented
utility model were copied by petitioner: In appearance and form, both the floating power tillers
of the defendant and the turtle power tiller of the plaintiff are virtually the same. Viewed from
any perspective or angle, the power tiller of the defendant is identical and similar to that of the
turtle power tiller of plaintiff in form, configuration, design and appearance. The parts or
components thereof are virtually the same. In operation, the floating power tiller of the
defendant operates also in similar manner as the turtle power tiller of plaintiff.
Petitioner’s argument that his power tillers were different from private respondents’ is that of a
drowning man clutching at straws. Recognizing that the logical fallback position of one in the
place of defendant is to aver that his product is different from the patented one, courts have
adopted the doctrine of equivalents. Thus, according to this doctrine, “an infringement also
occurs when a device appropriates a prior invention by incorporating its innovative concept and,
albeit with some modification and change, performs substantially the same function in
substantially the same way to achieve substantially the same result.” In this case, the trial court
observed: But a careful examination between the two power tillers will show that they will
operate on the same fundamental principles.

Smith Kline Beckman Corporation vs CA

August 14, 2003
Carpio-Morales, J.

Facts
Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine Patent Office
Letters Patent No. 14561 over an invented compound entitled “Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.”
Such compound is claimed to be an active ingredient in fighting various parasites in certain
types of domestic and livestock animals. Respondent Tryco Pharma (Tryco) sells veterinary
products including a drug Impregon which contains Albendazole as an active ingredient which
fights against parasites in animals. Petitioner SKBC then filed an action against respondent
Tryco for patent infringement claiming that the patent granted to them includes said
Albendazole. In their defense respondent Tryco alleges that Letters Patent No. 14561 granted
to petitioner SKBC does not include Albendazole for nowhere is such word found in the patent.
The Trial Court rendered its decision in favor of respondent Tryco which was affirmed by
the Court of Appeals.

Issues:
Whether or not the Court of Appeals erred in not finding that Albendazole is included in
petitioners Letter Patent No. 14561

Held:

From an examination of the evidence on record, the Court finds nothing infirm in
the appellate court’s conclusions with respect to the principal issue of whether Tycho Pharma
committed patent infringement to the prejudice of SKBC. The burden of proof to substantiate a
charge for patent infringement rests on the plaintiff. In the case at bar, petitioner’s evidence
consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products Division, by which it sought to show
that its patent for the compound methyl 5 propylthio-2- benzimidazole carbamate also covers
the substance Albendazole. From a reading of the 9 claims of Letters Patent No. 14561 in
relation to the other portions thereof, no mention is made of the compound Albendazole.

When the language of its claims is clear and distinct, the patentee is bound thereby and may
not claim anything beyond them. And so are the courts bound which may not add to or detract
from the claims matters not expressed or necessarily implied, nor may they enlarge the patent
beyond the scope of that which the inventor claimed and the patent office allowed, even if the
patentee may have been entitled to something more than the words it had chosen would
include. It bears stressing that the mere absence of the word Albendazole in Letters Patent No.
14561 is not determinative of Albendazole’s non-inclusion in the claims of the patent. While
Albendazole is admittedly a chemical compound that exists by a name different from that
covered in SKBC’s letters patent, the language of Letter Patent No. 14561 fails to yield anything
at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that
Albendazole inheres in SKBC’s patent in spite of its omission therefrom or that the meaning of
the claims of the patent embraces the same. While SKBC concedes that the mere literal
wordings of its patent cannot establish Tyco Pharma’s infringement, it urges the Court to apply
the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same
way to achieve substantially the same result. Yet again, a scrutiny of SKBC’s evidence fails to
convince the Court of the substantial sameness of SKBC’s patented compound and Albendazole.
While both compounds have the effect of neutralizing parasites in animals, identity of result
does not amount to infringement of patent unless Albendazole operates in substantially the
same way or by substantially the same means as the patented compound, even though it
performs the same function and achieves the same result.

In other words, the principle or mode of operation must be the same or substantially the
same. The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such equivalency
test are met.

Converse Rubber Corp. vs Converse Rubber Products

January 8, 1987
Fernan, J.

Facts
Respondent Universal Rubber applied for the registration of the trademark ‘Universal Converse
and Device’ used on its rubber shoes and rubber slippers. Petitioner Converse opposed on the
ground that the trademark sought to be registered is confusingly similar to the word ‘Converse’
which is part of its corporate name ‘Converse Rubber Corporation’ and will likely deceive
purchasers and cause irreparable injury to its reputation and goodwill in the Philippines.
Respondent argued that the trademarks petitioner uses on its rubber shoes are ‘Chuck Taylor’
and ‘All Star Device.’ The Director of Patents gave due course to respondent’s application. MR
was denied.
Issue:
Whether or not there is confusing similarity between the two trademarks.
Ruling:
YES. The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular
manner on the side of its rubber shoes. In the same manner, the trademark of petitioner which
reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its
rubber shoes. The determinative factor in ascertaining whether or not marks are confusingly
similar to each other “is not whether the challenged mark would actually cause confusion or
deception of the purchasers but whether the use of such mark would likely cause confusion or
mistake on the part of the buying public. It would be sufficient, for purposes of the law that the
similarity between the two labels is such that there is a possibility or likelihood of the purchaser
of the older brand mistaking the new brand for it.” Even if not all the details just mentioned were
identical, with the general appearance alone of the two products, any ordinary, or even perhaps
even a not too perceptive and discriminating customer could be deceived“
But even assuming, arguendo, that the trademark sought to be registered by respondent is
distinctively dissimilar from those of the petitioner, the likelihood of confusion would still
subsists, not on the purchaser’s perception of the goods but on the origins thereof. By
appropriating the word “CONVERSE,” respondent’s products are likely to be mistaken as having
been produced by petitioner. “The risk of damage is not limited to a possible confusion of goods
but also includes confusion of reputation if the public could reasonably assume that the goods of
the parties originated from the same source.

Coffee Partners v San Francisco Coffee & Roastery, Inc.

March 3, 2010
Carpio, J.

Facts
Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to
operate coffee shops in the country using the trademark ‘San Francisco Coffee.’ Respondent on
the other hand, is a local corporation engaged in the wholesale and retail sale of coffee and uses
the business name ‘San Francisco Coffee & Roastery’ registered with the DTI. Later, respondent
filed an infringement and/or unfair competition complaint against petitioner alleging that the
latter was about to open a coffee shop under the name ‘San Francisco Coffee’ causing confusion
in the minds of the public as it bore a similar name and is engaged also in selling of coffee.
Petitioner contended no infringement would arise because respondent’s tradename was not
registered.
Issue:
Whether or not petitioner’s trademark would infringe respondent’s tradename.
Ruling:
YES. In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down
what constitutes infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by
the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used
upon or in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to the
source or origin of such goods or services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.
RA 8293, which took effect on 1 January 1998, has dispensed with the registration requirement.
Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to
or without registration with the IPO, against any unlawful act including any subsequent use of
the trade name by a third party, whether as a trade name or a trademark likely to mislead the
public.
It is the likelihood of confusion that is the gravamen of infringement. Applying the dominancy
test or the holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear infringement
of respondent’s “SAN FRANCISCO COFFEE & ROASTERY, INC.” trade name. The descriptive words
“SAN FRANCISCO COFFEE” are precisely the dominant features of respondent’s trade name.
Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale
or retail. The likelihood of confusion is higher in cases where the business of one corporation is
the same or substantially the same as that of another corporation. In this case, the consuming
public will likely be confused as to the source of the coffee being sold at petitioner’s coffee shops.

Fredco Manufacturing Corp. vs Harvard University

June 1, 2011
Carpio, J.

Facts
Petitioner Fredco Manufacturing filed a petition to cancel the registration of respondent’s mark
‘Harvard Veritas Shield Symbol’ used in products such as bags and t-shirts. Fredco alleges that
the mark ‘Harvard’ was first used and registered by New York Garments, a domestic corporation
and its predecessor-in-interest, used in its clothing articles. Respondent Harvard University on
the other hand, alleges that it is the lawful owner of the name and mark in numerous countries
worldwide including in the Philippines which was used in commerce as early as 1872. Respondent
further contend that it never authorized any person to use its name or mark in connection with
any goods in the Philippines. The IPO Bureau of Legal Affairs cancelled respondent’s registration
of the mark but only over the goods which are confusingly similar with that of petitioner. IPO
reversed the decision. CA affirmed.
Issue:
Whether or not respondent’s trade name is infringed.
Ruling:
YES. Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On this ground
alone, Fredco’s registration of the mark “Harvard” should have been disallowed. Indisputably,
Fredco does not have any affiliation or connection with Harvard University, or even with
Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not established in
1936, or in the U.S.A. as indicated by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected “without the obligation
of filing or registration.” “Harvard” is the trade name of the world famous Harvard University,
and it is also a trademark of Harvard University. Under Article 8 of the Paris Convention, as well
as Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its
trade name “Harvard” even without registration of such trade name in the Philippines. This
means that no educational entity in the Philippines can use the trade name “Harvard” without
the consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly or
impliedly through the use of the name and mark “Harvard,” that its products or services are
authorized, approved, or licensed by, or sourced from, Harvard University without the latter’s
consent.

Esso Standard vs CA
August 31, 1982
Teehankee, J.

Facts
The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
Philippines. It is engaged in the sale of petroleum products which are identified by the
trademark 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a business
name with the Bureau of Commerce in 1962. United Cigarette is a domestic corporation
engaged in the manufacture and sale of cigarettes. It acquired the business from La Oriental
Tobacco Corp including patent rights, once of which is the use of 'Esso' on its cigarettes.
The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an
extent that the buying public would be deceived as it the quality and origin of the said products
to the detriment and disadvantage of its own products. The lower court found United Cigarette
guilty of infringement. Upon appeal, the Court of Appeals ruled that there was no infringement
in this case.
Issue:
Is there infringement committed?
Ruling:
NONE. Infringement is defined by law as the use without the consent of the trademark owner
of any reproduction, counterfeit, copy or colorable imitation of any registered mark or
tradename which would likely cause confusion or mistake or deceive purchasers or others as to
the source or origin of such goods.
The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether
trademark infringement exists depend on whether or not the goods are so related that the
public may be or is actually deceived and misled that they come from the same maker. Under
the Related Goods Theory, goods are related when they belong to the same class or have the
same descriptive properties or when they have same physical attributes. In these case, the
goods are absolutely different and are so foreign from each other it would be unlikely for
purchasers to think that they came from the same source. Moreover, the goods flow from
different channels of trade and are evidently different in kind and nature.
Philippine Refining Co., Inc. v Ng Sam and Director of Patents
July 30, 1982
Escolin, J.

Facts
The petitioner Philippine Refining Co. first used 'Camia' as trademark for its products in 1922. In
1949, it caused the registration of the said trademark for its lard, butter, cooking oil,
detergents, polishing materials and soap products. In 1960, Ng Sam filed an application
for 'Camia' for its ham product (Class 47), alleging its first use in 1959. The petitioner opposed
the said application but the Patent Office allowed the registration of Ng Sam.
Issue:
WON the product of Ng Sam (Ham) and those of the petitioner so related that the use of the
trademark 'Camia' on said goods would result to confusion as to their origin?
HELD:
NO. The businesses of the parties are non-competitive and the products are so unrelated that
the use of the same trademark will not give rise to confusion nor cause damage to the
petitioner. The right to a trademark is a limited one, hence, others may use the same mark on
unrelated goods if no confusion would arise.
A trademark is designed to identify the user, hence, it should be so distinctive and sufficiently
original so as to enable those who see it to recognize instantly its source or origin. A trademark
must be affirmative and definite, significant and distinctive and capable of indicating origin.
'Camia' as a trademark is far from being distinctive, it in itself does not identify the petitioner as
the manufacturer of producer of the goods upon which said mark is used. If a mark is so
commonplace, it is apparent that it can't identify a particular business and he who adopted it
first cannot be injured by any subsequent appropriation or imitation by others and the public
will not be deceived.
Mere classification of the goods cannot serve as the decisive factor in the resolution of whether
or not the goods a related. Emphasis should be on the similarity of products involved and not
on arbitrary classification of general description of their properties or characteristics.
Marvex Commercial Co., Inc. vs Petra Hawpia and Co.
December 22, 1966
Castro, J.

Facts
Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines filed a petition
for the registration of the trademark "LIONPAS" used on medicated plaster, with the Philippine
Patent Office, asserting its continuous use in the Philippines since June 9, 1958. The Marvex
Commercial Co., Inc., a corporation also duly organized under the laws of the Philippines, on July
24, 1959 filed an opposition thereto, alleging that the registration of such trademark would
violate its right to and interest in the trademark "SALONPAS" used on another medicated plaster,
which is registered its name under Certificate of Registration 5486, issued by the Director of
Patents on September 29, 1956, and that both trademarks when used on medicated plaster
would mislead the public as they are confusingly similar.

The Director of Patents dismissed the opposition and gave due course to the petition, stating in
part that "confusion, mistake, or deception among the purchasers will not likely and reasonably
occur" when both trademarks are applied to medicated plaster.

Issues:

(1) Is the applicant the owner of the trademark "LIONPAS"?

(2) Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?

Held:

Is the applicant the owner of the trademark "LIONPAS?"

On the 1st issue:

The assignment must be in writing, acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial acts and certified under the hand and
official seal of the notary or other officer. (Sec. 31, par. 2)

In this case, although a sheet of paper is attached to exh. 6, on which is typewritten a certification
that the signatures of the presidents of the two named companies (referring to the signatures in
exh. 6) "have been duly written by themselves", this sheet is unmarked, unpaged, unsigned,
undated and unsealed. We have thumbed the record in quest of any definitive evidence that it is
a correct translation of the Japanese characters found on another unmarked and unpaged sheet,
and have found none.

The documents are legally insufficient to prove that the applicant is the owner of the trademark
in question. As a matter of fact, the other evidence on record states that the applicant is merely
the "exclusive distributor" in the Philippines of the "LIONPAS" penetrative plaster; describes the
applicant as the "Philippine sole distributor" of "LIONPAS"; exh. B simply states that "LIONPAS"
is "manufactured exclusively for Petra Hawpia & Co. for distribution in the Philippines." Not being
the owner of the trademark "LIONPAS" but being merely an importer and/or distributor of the
said penetrative plaster, the applicant is not entitled under the law to register it in its name.

On the 2nd issue:

The trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound. Both these words
have the same suffix, "PAS", which is used to denote a plaster that adheres to the body with
curative powers. "Pas, being merely descriptive, furnishes no indication of the origin of the article
and therefore is open for appropriation by anyone and may properly become the subject of a
trademark by combination with another word or phrase.

Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be that as
it may, when the two words are pronounced, the sound effects are confusingly similar. And
where goods are advertised over the radio, similarity in sound is of especial "The importance of
this rule is emphasized by the increase of radio advertising in which we are deprived of help of
our eyes and must depend entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).

In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity
of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when
applied to merchandise of the same descriptive properties The registration of "LIONPAS" cannot
therefore be given due course.

Decision of the respondent Director of Patents is set aside, and the petition of the respondent
Petra Hawpia & Co. is hereby dismissed.

Etepha A.G. vs Director of Patents

March 31, 1966
Sanchez, J.

Facts

Respondent Westmont Pharmaceuticals, an American corporation, sought registration of

trademark ‘Atussin’ placed on its medicinal preparation for the treatment of coughs. Petitioner
Etepha, owner of the trademark ‘Pertussin’ placed also on preparation for cough treatment,
objected claiming that it will be damaged since the 2 marks are confusingly similar. The Director
of Patents gave due course to the application.

Issue:

Whether or not petitioner’s trademark is registrable.

Ruling:
YES. That the word “tussin” figures as a component of both trademarks is nothing to wonder at.
The Director of Patents aptly observes that it is “the common practice in the drug and
pharmaceutical industries to ‘fabricate’ marks by using syllables or words suggestive of the
ailments for which they are intended and adding thereto distinctive prefixes or suffixes”. And
appropriately to be considered now is the fact that, concededly, the “tussin” (in Pertussin and
Atussin) was derived from the Latin root-word “tussis” meaning cough.

“Tussin” is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of
the goods; it is open for appropriation by anyone. It is accordingly barred from registration as
trademark. With jurisprudence holding the line, we feel safe in making the statement that any
other conclusion would result in “appellant having practically a monopoly” of the word “tussin”
in a trademark. While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it
may properly become the subject of a trademark “by combination with another word or phrase”.
And this union of words is reflected in petitioner’s Pertussin and respondent’s Atussin, the first
with prefix “Per” and the second with Prefix “A.”

Mighty Corp vs E & J Gallo

July 14, 2004
Corona, J.

Facts
On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents) sued
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-
Makati for trademark and trade name infringement and unfair competition, with a prayer for
damages and preliminary injunction.
They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo
and Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing
confusion, deception and mistake on the part of the purchasing public who had always associated
Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.
In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo
cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not
cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of trade;
 3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo
cigarette buyers were farmers, fishermen, laborers and other low-income workers;
4. that the dominant feature of the Gallo cigarette was the rooster device with the
manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo
Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their
surname GALLO;
The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of
preliminary injunction. CA likewise dismissed respondent’s petition for review on certiorari.
After the trial on the merits, however, the Makati RTC held petitioners liable for committing
trademark infringement and unfair competition with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s
motion for reconsideration.
ISSUE/S:
Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the
reason alone that they were purportedly forms of vice.
RULING:
NO. Wines and cigarettes are not identical, similar, competing or related goods.
In resolving whether goods are related, several factors come into play:
· The business (and its location) to which the goods belong
· The class of product to which the good belong
· The product’s quality, quantity, or size, including the nature of the package, wrapper or
container
· The nature and cost of the articles
· The descriptive properties, physical attributes or essential characteristics with reference to
their form, composition, texture or quality
· The purpose of the goods
· Whether the article is bought for immediate consumption, that is, day-to-day household items
· The field of manufacture
· The conditions under which the article is usually purchased and
· The articles of the trade through which the goods flow, how they are distributed, marketed,
displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception of some persons in some
measure acquainted with an established design and desirous of purchasing the commodity with
which that design has been associated. The simulation, in order to be objectionable, must be as
appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar
with the article that he seeks to purchase.
The petitioners are not liable for trademark infringement, unfair competition or damages.

Lyceum of the Philippines, Inc. vs CA

March 5, 1993
Feliciano, J.

Facts
Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding against the
Lyceum of Baguio to change its corporate name alleging that the 2 names are substantially
identical because of the word ‘Lyceum’. SEC found for petitioner and the SC denied the
consequent appeal of Lyceum of Baguio in a resolution. Petitioner then basing its ground on the
resolution, wrote to all educational institutions which made use of the word ‘Lyceum’ as part of
their corporate name to discontinue their use. When this recourse failed, petitioner moved
before the SEC to enforce its exclusive use of the word ‘Lyceum.’ Petitioner further claimed that
the word ‘Lyceum’ has acquired a secondary meaning in its favor. The SEC Hearing Officer found
for petitioner. Both SEC En Banc and CA ruled otherwise.
Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by petitioner to the
exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of petitioner.
(3) Whether or not petitioner is infringed by respondent institutions’ corporate names.
Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the name of the
petitioner, “Lyceum” appears to be a substitute for “university;” in other places, however,
“Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary school or a college. It may be
that the use of the word “Lyceum” may not yet be as widespread as the use of “university,” but
it is clear that a not inconsiderable number of educational institutions have adopted “Lyceum”
or “Liceo” as part of their corporate names. Since “Lyceum” or “Liceo” denotes a school or
institution of learning, it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.
(2) NO. Under the doctrine of secondary meaning, a word or phrase originally incapable of
exclusive appropriation with reference to an article in the market, because geographical or
otherwise descriptive might nevertheless have been used so long and so exclusively by one
producer with reference to this article that, in that trade and to that group of the purchasing
public, the word or phrase has come to mean that the article was his produce. With the foregoing
as a yardstick, we believe the appellant failed to satisfy the aforementioned requisites. While the
appellant may have proved that it had been using the word ‘Lyceum’ for a long period of time,
this fact alone did not amount to mean that the said word had acquired secondary meaning in
its favor because the appellant failed to prove that it had been using the same word all by itself
to the exclusion of others. More so, there was no evidence presented to prove that confusion
will surely arise if the same word were to be used by other educational institutions.
(3) NO. We do not consider that the corporate names of private respondent institutions are
“identical with, or deceptively or confusingly similar” to that of the petitioner institution. True
enough, the corporate names of private respondent entities all carry the word “Lyceum” but
confusion and deception are effectively precluded by the appending of geographic names to the
word “Lyceum.” Thus, we do not believe that the “Lyceum of Aparri” can be mistaken by the
general public for the Lyceum of the Philippines, or that the “Lyceum of Camalaniugan” would be
confused with the Lyceum of the Philippines. We conclude and so hold that petitioner institution
is not entitled to a legally enforceable exclusive right to use the word “Lyceum” in its corporate
name and that other institutions may use “Lyceum” as part of their corporate names.

Societe Des Produits Nestle vs CA

April 4, 2001
Ynares-Santiago, J.

Facts
Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR
MASTER for instant coffee. Petitioners, a Swiss company and a domestic corporation licensee of
Societe, opposed on the ground that it is confusingly similar to its trademark for coffee and
coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that the dominant
word MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER
cannot be exclusively appropriated being a descriptive or generic term. BPTTT denied CFC’s
application. CA held otherwise.
Issue:
Whether or not the word MASTER is descriptive or generic term incapable of exclusive
appropriation.
Ruling:
NO. The word “MASTER” is neither a generic nor a descriptive term. As such, said term cannot
be invalidated as a trademark and, therefore, may be legally protected. Generic terms are those
which constitute “the common descriptive name of an article or substance,” or comprise the
“genus of which the particular product is a species,” or are “commonly used as the name or
description of a kind of goods,” or “imply reference to every member of a genus and the
exclusion of individuating characters,” or “refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a particular product,” and are
not legally protectable. On the other hand, a term is descriptive and therefore invalid as a
trademark if, as understood in its normal and natural sense, it “forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has never seen it and
does not know what it is,” or “if it forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods,” or if it clearly denotes what goods or services are
provided in such a way that the consumer does not have to exercise powers of perception or
imagination.
Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme of
Nestle. Suggestive terms are those which, in the phraseology of one court, require
“imagination, thought and perception to reach a conclusion as to the nature of the goods.”
Such terms, “which subtly connote something about the product,” are eligible for protection in
the absence of secondary meaning. While suggestive marks are capable of shedding “some
light” upon certain characteristics of the goods or services in dispute, they nevertheless involve
“an element of incongruity,” “figurativeness,” or” imaginative effort on the part of the
observer.” The term “MASTER”, therefore, has acquired a certain connotation to mean the
coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by
CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to
cause confusion or mistake or even to deceive the ordinary purchasers.

Asia Brewery vs CA
July 5, 1993
Grino-Aquino, J.

Facts
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement
of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA
BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of
the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court,
finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and
unfair competition. ABI then filed a petition for certiorari.

Issue:
Are the words PALE PILSEN as part of ABI’s trademark constitute infringement of SMC’s
trademark?

Ruling:
No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN,
which are part of ABI’s trademark, 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, Czechislovakia and became famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC
for its exclusive use even if they are part of its registered trademark. No one may appropriate
generic or descriptive words. They belong to the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with
the latter's SAN MIGUEL PALE PILSEN product.

Ang vs Teodoro
December 14, 1942
Ozaeta, J.

Facts
Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the
manufacture and sale of its slippers, shoes and indoor baseballs when he formally registered it.
Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’ for its products of pants
and shirts. Respondent moved to cancel the registration of petitioner’s mark. The trial court
found for petitioner Ang. CA reversed the judgment. Petitioner argues the validity of the mark
being descriptive; that it had not acquired secondary meaning in favor of respondent; and that
there can be no infringement/unfair competition because the goods are not similar.
Issues:
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.
(3) Whether or not there is trademark infringement and/or unfair competition between
unrelated goods.
Ruling:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or
durability. For instance, one who tries hard but fails to break an object exclaims, “Ang tibay!”
(How strong!”) The phrase “ang tibay” is never used adjectively to define or describe an object.
One does not say, “ang tibay sapatos” or “sapatos ang tibay” is never used adjectively to define
or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” to mean
“durable shoes,” but “matibay na sapatos” or “sapatos na matibay.” From all of this we deduce
that “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
tradename. In this connection we do not fail to note that when the petitioner herself took the
trouble and expense of securing the registration of these same words as a trademark of her
products she or her attorney as well as the Director of Commerce was undoubtedly convinced
that said words (Ang Tibay) were not a descriptive term and hence could be legally used and
validly registered as a trademark.
(2) NO. In view of the conclusion we have reached upon the first assignment of error, it is
unnecessary to apply here the doctrine of “secondary meaning” in trade-mark parlance. This
doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation
with reference to an article of 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. We have said that the phrase “Ang Tibay,”
being neither geographic nor descriptive, was originally capable of exclusive appropriation as a
trade-mark. But were it not so, the application of the doctrine of secondary meaning made by
the Court of Appeals 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.
(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition,
and Unfair Trading, the test employed by the courts to determine whether noncompeting
goods are or are not of the same class is confusion as to the origin of the goods of the second
user. 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. The Court
of Appeals found in this case that by uninterrupted and exclusive use since 1910 of
respondent’s registered trade-mark on slippers and shoes manufactured by him, it has come to
indicate the origin and ownership of said 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.

Tanduay Distillers, Inc. vs Ginebra San Miguel

August 14, 2009
Carpio, J.

Facts
Tanduay developed a new gin product distinguished by its sweet smell, smooth taste, and
affordable price. The brand name eventually chosen for the gin product was Ginebra Kapitan with
the representation of a revolutionary Kapitan on horseback as the dominant feature of its label.
Tanduay points out that the label design of Ginebra Kapital in terms of color scheme, size and
arrangement of text, and other label features were precisely selected to distinguish it from the
leading gin brand in the Philippine market, Ginebra San Miguel. Tanduay filed a trademark
application for Ginebra Kapitan with the Intellectual Property Office (IPO). After which, Tanduay
began selling Ginebra Kapitan in the Luzon areas including Metro Manila. Eventually, Tanduay
received a letter from San Miguel informing the former to immediately cease and desist from
using the mark Ginebra. San Miguel filed a complaint for trademark infringement, unfair
competition and damages, with applications for the issuance of a TRO and a writ of preliminary
injunction against Tanduay before the RTC of Mandaluyong.
(Developments in the trial court and the CA I have laid out in bullet form for easy reading. The
events could get a little confusing from here.)
 The trial court issued a TRO prohibiting Tanduay from manufacturing, selling and
advertising Ginebra Kapitan.
  Tanduay filed a petition for certiorari with the CA and an Urgent Motion to Defer
Injunction Hearing before the trial court.
 Despite the motion filed by San Miguel, the trial court conducted hearings for Tanduay to
show cause why no writ of preliminary injunction should be issued.
 The trial court granted San Miguel’s application for issuance of a writ of preliminary
injunction.
 Tanduay filed a supplemental petition in the CA assailing the injunction order.
 The CA issued a TRO enjoining the trial court from implementing the injunction order and
further proceeding with the case.
 Finally, the CA rendered a decision dismissing Tanduay’s petition for certiorari and
supplemental petition. Its motion for reconsideration was likewise denied.
ISSUE:
Whether San Miguel is entitled to the writ of preliminary injunction granted by the trial court as
affirmed by the CA
RULING:
No. San Miguel contends that Ginebra can be appropriated as a trademark, and there was no
error in the trial courts provisional ruling based on the evidence on record. Assuming that Ginebra
is a generic word which is proscribed to be registered as a trademark under Section 123.1(h) of
Republic Act No. 8293 or the Intellectual Property Code (IP Code), it can still be appropriated and
registered as a trademark under Section 123.1(j) in relation to Section 123.2 of the IP Code,
considering that Ginebra is also a mark which designates the kind of goods produced by San
Miguel. San Miguel alleges that although Ginebra, the Spanish word for gin, may be a term
originally incapable of exclusive appropriation, jurisprudence dictates that the mark has become
distinctive of San Miguel’s products due to its substantially exclusive and continuous use as the
dominant feature of San Miguel’s trademarks since 1834. Hence, San Miguel is entitled to a
finding that the mark is deemed to have acquired a secondary meaning.
San Miguel states that Tanduay failed to present any evidence to disprove its claims; thus, there
is no basis to set aside the grant of the TRO and writ of preliminary injunction.
San Miguel states that its disclaimer of the word Ginebra in some of its registered marks is
without prejudice to, and did not affect, its existing or future rights over Ginebra, especially since
Ginebra has demonstrably become distinctive of San Miguels products.
Tanduay asserts that not one of the requisites for the valid issuance of a preliminary injunction
is present in this case. Tanduay argues that San Miguel cannot claim the exclusive right to use
the generic word Ginebra for its gin products based on its registration of the composite marks
Ginebra San Miguel, Ginebra S. Miguel 65, and La Tondea Cliq! Ginebra Mix, because in all of
these registrations, San Miguel disclaimed any exclusive right to use the non-registrable word
Ginebra for gin products.
Tanduay explains that the word Ginebra, which is disclaimed by San Miguel in all of its registered
trademarks, is an unregistrable component of the composite mark Ginebra San Miguel. Tanduay
argues that this disclaimer further means that San Miguel does not have an exclusive right to the
generic word Ginebra. Tanduay states that the word Ginebra does not indicate the source of the
product, but it is merely descriptive of the name of the product itself and not the manufacturer
thereof.
Tanduay submits that it has been producing gin products under the brand names Ginebra 65,
Ginebra Matador, and Ginebra Toro without any complaint from San Miguel. Tanduay alleges
that San Miguel has not filed any complaint against other liquor companies which use Ginebra as
part of their brand names such as Ginebra Pinoy, a registered trademark of Webengton Distillery;
Ginebra Presidente and Ginebra Luzon as registered trademarks of Washington Distillery, Inc.;
and Ginebra Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco &
Co., Inc. Tanduay claims that the existence of these products, the use and registration of the word
Ginebra by other companies as part of their trademarks belie San Miguel’s claim that it has been
the exclusive user of the trademark containing the word Ginebra since 1834.
Tanduay argues that before a court can issue a writ of preliminary injunction, it is imperative that
San Miguel must establish a clear and unmistakable right that is entitled to protection. San
Miguel’s alleged exclusive right to use the generic word Ginebra is far from clear and
unmistakable. Tanduay claims that the injunction issued by the trial court was based on its
premature conclusion that Ginebra Kapitan infringes Ginebra San Miguel.
The CA upheld the trial court’s ruling that San Miguel has sufficiently established its right to prior
use and registration of the word Ginebra as a dominant feature of its trademark. The CA ruled
that based on San Miguel’s extensive, continuous, and substantially exclusive use of the word
Ginebra, it has become distinctive of San Miguel’s gin products; thus, a clear and unmistakable
right was shown.
We hold that the CA committed a reversible error. The issue in the main case is San Miguel’s right
to the exclusive use of the mark Ginebra. The two trademarks Ginebra San Miguel and Ginebra
Kapitan apparently differ when taken as a whole, but according to San Miguel, Tanduay
appropriates the word Ginebra which is a dominant feature of San Miguel’s mark.
It is not evident whether San Miguel has the right to prevent other business entities from using
the word Ginebra. It is not settled (1) whether Ginebra is indeed the dominant feature of the
trademarks, (2) whether it is a generic word that as a matter of law cannot be appropriated, or
(3) whether it is merely a descriptive word that may be appropriated based on the fact that it has
acquired a secondary meaning.
The issue that must be resolved by the trial court is whether a word like Ginebra can acquire a
secondary meaning for gin products so as to prohibit the use of the word Ginebra by other gin
manufacturers or sellers. This boils down to whether the word Ginebra is a generic mark that is
incapable of appropriation by gin manufacturers.

In this case, a cloud of doubt exists over San Miguel’s exclusive right relating to the word Ginebra.
San Miguels claim to the exclusive use of the word Ginebra is clearly still in dispute because of
Tanduays claim that it has, as others have, also registered the word Ginebra for its gin products.
This issue can be resolved only after a full-blown trial.
We find that San Miguels right to injunctive relief has not been clearly and unmistakably
demonstrated. The right to the exclusive use of the word Ginebra has yet to be determined in
the main case. The trial courts grant of the writ of preliminary injunction in favor of San Miguel,
despite the lack of a clear and unmistakable right on its part, constitutes grave abuse of discretion
amounting to lack of jurisdiction.
We believe that the issued writ of preliminary injunction, if allowed, disposes of the case on the
merits as it effectively enjoins the use of the word ginebra without the benefit of a full-blown
trial.

Shang Properties Realty vs St. Francis Development Corp.

July 21, 2014
Perlas-Bernabe, J.

Facts
St. Francis Development Corporation, a corporation engaged in real estate business and the
developer of the St. Francis Square Commercial Center in Ortigas, filed an intellectual property
violation case for unfair competition, false or fraudulent declaration, and for damages against
Shang Properties Realty Corporation before the IPO – Bureau of Legal Affairs (BLA) arising from
the latter’s use and filing of applications for the registration of the marks “The St. Francis Towers”
and “The St. Francis Shangri-La Place”. Respondent alleges that, it has gained substantial goodwill
with the public that consumers and traders closely identify the said mark with its property
development projects, thus, petitioners could not have the mark "THE ST. FRANCIS TOWERS"
registered in their names, and that petitioners’ use of the marks "THE ST. FRANCIS TOWERS" and
"THE ST. FRANCIS SHANGRI-LA PLACE" in their own real estate development projects constitutes
unfair competition as well as false or fraudulent declaration.
The real estate development projects of the aforementioned companies are located along
the streets bearing the name “St. Francis,” particularly, St. Francis Avenue and St. Francis, both
within the vicinity of the Ortigas Center.

BLA found that petitioners committed acts of unfair competition against respondent by
its use of the mark "THE ST. FRANCIS TOWERS" but not with its use of the mark "THE ST. FRANCIS
SHANGRI-LA PLACE." It, however, refused to award damages in the latter’s favor, considering that
there was no evidence presented to substantiate the amount of damages it suffered due to the
former’s acts. The BLA found that "ST. FRANCIS," being a name of a Catholic saint, may be
considered as an arbitrary mark capable of registration.

IPO Director General reversed the BLA’s finding that petitioners committed unfair
competition through their use of the mark "THE ST. FRANCIS TOWERS," thus dismissing such
charge.
 CA, however, found petitioners guilty of unfair competition not only with respect to their
use of the mark "THE ST. FRANCIS TOWERS" but also of the mark "THE ST. FRANCIS SHANGRI-LA
PLACE." Accordingly, it ordered petitioners to cease and desist from using "ST. FRANCIS" singly
or as part of a composite mark, as well as to jointly and severally pay respondent a fine in the
amount of ₱200,000.00. The CA did not adhere to the IPO Director-General’s finding that the
mark "ST. FRANCIS" is geographically descriptive, and ruled that respondent – which has
exclusively and continuously used the mark "ST. FRANCIS" for more than a decade, and, hence,
gained substantial goodwill and reputation thereby – is very much entitled to be protected
against the indiscriminate usage by other companies of the trademark/name it has so
painstakingly tried to establish and maintain. Further, the CA stated that even on the assumption
that "ST. FRANCIS" was indeed a geographically descriptive mark, adequate protection must still
be given to respondent pursuant to the Doctrine of Secondary Meaning

ISSUE:

Whether or not “St. Francis”, a geographically-descriptive term, can be registered as a mark

under the Intellectual Property (IP) Code of the Philippines.

HELD:

NO. The term is ineligible for trademark registration. In general, a geographically-descriptive

mark, because of its general public domain classification, is perceptibly disqualified from
trademark registration. Section 123.1(j) of the IP Code provides that a mark cannot be registered
if it “consists exclusively of signs or of indications that may serve in trade to designate the kind,
quality, quantity, intended purpose, value, geographical origin, time or production of the goods
or rendering of the services, or other characteristics of the goods or services”, because these
“descriptive geographical terms are in the ‘public domain’ simply because every seller should
have the right to inform customers of the geographical origin of his or her goods or services.

‘Geographically descriptive term’ is defined as any noun or adjective that designates a

geographical location on earth, such as continents, nations, regions, states, cities, streets and
addresses, areas of cities, rivers, or any other location referred to by a recognized name, that are
regarded by buyers as descriptive of the geographic location of origin of the goods or services.

Thus, if the mark sought to be registered is the name of the place or region from which the goods
actually come, then the geographic term is probably used in a descriptive sense. Hence, the term
is ineligible for trademark registration.

Is there an exception to the rule? A geographically descriptive mark can still be registered if the
same has acquired a secondary meaning. This means, that a descriptive mark no longer causes
the public to associate the goods with a particular place, but to associate the goods with a
particular source (seller or producer). It must be shown that the purchasers come to immediately
associate the mark with only the seller or producer of the goods. In other words, the mark itself
has acquired another meaning no longer that of a particular place, but it has come to mean that
the goods or services are that of the seller or producer.

Under Section 123.234 of the IP Code, specific requirements have to be met in order to conclude
that a geographically descriptive mark has acquired secondary meaning, to wit: (a) the secondary
meaning must have arisen as a result of substantial commercial use of a mark in the Philippines;
(b) such use must result in the distinctiveness of the mark insofar as the goods or the products
are concerned; and (c) proof of substantially exclusive and continuous commercial use in the
Philippines for five (5) years before the date on which the claim of distinctiveness is made.

In the instant case, the Supreme Court held that the use of the marks “The St. Francis Towers”
and “The St. Francis Shangri-La Place” was meant only to identify, or at least associate, the real
estate projects with its geographical location. Considering that both companies are business
competitors engaged in real estate or property development, providing goods and services
directly connected thereto, there can be no description of its geographical origin as precise and
accurate as that of the name of the place where they are situated.

McDonald’s Corporation vs L.C. Big Mak Burgers

August 18, 2004
Carpio, J.

Facts
Petitioner McDonald’s, an American corporation operating a global chain of fast-food
restaurants, is the owner of the ‘Big Mac’ mark for its double-decker hamburger sandwich here
and in the US. Meanwhile, respondent L.C., a domestic corporation which operates fast-food
outlets and snack vans applied for the registration of the ‘Big Mak’ mark for its hamburger
sandwiches. Petitioner opposed on the ground that ‘Big Mak’ was a colorable imitation of its
registered ‘Big Mac’ mark for the same food products. Respondents denied there is colorable
imitation and argued that petitioner cannot exclusively appropriate the mark ‘Big Mac’ because
the word ‘Big’ is a generic and descriptive term. Petitioner filed a complaint for trademark
infringement and unfair competition. The trial court found for petitioners. CA held otherwise.
Issues:
(1) Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;
(2) Whether or not there is colorable imitation resulting in likelihood of confusion;
(3) Whether or not there is unfair competition.

Ruling:
(1) YES. A mark is valid if it is “distinctive” and thus not barred from registration under Section 4
of RA 166. However, once registered, not only the mark’s validity but also the registrant’s
ownership of the mark is prima facie presumed. The “Big Mac” mark, which should be treated in
its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks
are commonly used as the name or description of a kind of goods, such as “Lite” for beer or
“Chocolate Fudge” for chocolate soda drink. Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to one who has never seen it or
does not know it exists, such as “Arthriticare” for arthritis medication. On the contrary, “Big Mac”
falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly distinctive and thus valid.
Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary or fanciful.
(2) YES. In determining likelihood of confusion, jurisprudence has developed two tests, the
dominancy test and the holistic test. The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that might cause confusion. In contrast, the
holistic test requires the court to consider the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. This Court, however, has
relied on the dominancy test rather than the holistic test. The test of dominancy is now explicitly
incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the “colorable imitation of a registered mark xxx or a dominant feature thereof.”
Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark results
in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks
phonetically the same, and the second word of both marks also phonetically the same. Visually,
the two marks have both two words and six letters, with the first word of both marks having the
same letters and the second word having the same first two letters. In spelling, considering the
Filipino language, even the last letters of both marks are the same. Clearly, respondents have
adopted in “Big Mak” not only the dominant but also almost all the features of “Big Mac.” Applied
to the same food product of hamburgers, the two marks will likely result in confusion in the public
mind. Certainly, “Big Mac” and “Big Mak” for hamburgers create even greater confusion, not only
aurally but also visually. Indeed, a person cannot distinguish “Big Mac” from “Big Mak” by their
sound. When one hears a “Big Mac” or “Big Mak” hamburger advertisement over the radio, one
would not know whether the “Mac” or “Mak” ends with a “c” or a “k.”
(3) YES. 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. Unfair competition is
broader than trademark infringement and includes passing off goods with or without trademark
infringement. Trademark infringement is a form of unfair competition. Trademark infringement
constitutes unfair competition when there is not merely likelihood of confusion, but also actual
or probable deception on the public because of the general appearance of the goods. There can
be trademark infringement without unfair competition as when the infringer discloses on the
labels containing the mark that he manufactures the goods, thus preventing the public from
being deceived that the goods originate from the trademark owner.
Respondents’ goods are hamburgers which are also the goods of petitioners. Since respondents
chose to apply the “Big Mak” mark on hamburgers, just like petitioner’s use of the “Big Mac”
mark on hamburgers, respondents have obviously clothed their goods with the general
appearance of petitioners’ goods. There is actually no notice to the public that the “Big Mak”
hamburgers are products of “L.C. Big Mak Burger, Inc.” and not those of petitioners who have
the exclusive right to the “Big Mac” mark. This clearly shows respondents’ intent to deceive the
public. We hold that as found by the RTC, respondent corporation is liable for unfair competition.

McDonald’s Corp vs MacJoy Fastfood Corp

February 2, 2007
Garcia, J.

Facts
MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for the
registration of their name.
McDonald's Corporation filed an opposition to the application. McDonald's claims that their logo
and use of their name would falsely tend to suggest a connection with MacJoy's services and food
products, thus, constituting a fraud upon the general public and further cause the dilution of the
distinctiveness of petitioner’s registered and internationally recognized MCDONALD’S marks to
its prejudice and irreparable damage.

Respondent averred that MACJOY has been used for the past many years in good faith and has
spent considerable sums of money for said mark.

The IPO held that there is confusing similarity The CA held otherwise stating there are
predominant differences like the spelling, the font and color of the trademark and the picture of
the logo.

ISSUE:
Whether the ruling of the CA is correct.

RULING:

No. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test
focuses on the similarity of the prevalent features of the competing trademarks that might cause
confusion or deception while the holistic test requires the court to consider the entirety of the
marks as applied to the products, including the labels and packaging, in determining confusing
similarity. Under the latter test, a comparison of the words is not the only determinant factor.

The IPO, though they correctly used the dominancy, they should have taken more considerations.
In recent cases, the SC has consistently used and applied the dominancy test in determining
confusing similarity or likelihood of confusion between competing trademarks. The CA, while
seemingly applying the dominancy test, in fact actually applied the holistic test.

Applying the dominancy test to the instant case, the Court both marks are confusingly similar
with each other such that an ordinary purchaser can conclude an association or relation between
the marks. The predominant features such as the "M," "Mc," and "Mac" appearing in both easily
attract the attention of would-be customers. Most importantly, both trademarks are used in the
sale of fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark was registered in 1977
while respondent only in 1991.

Philip Morris vs CA
July 16, 1993
Melo, J.

Facts
Petitioners are foreign corporations organized under US laws not doing business in the
Philippines and registered owners of symbols ‘MARK VII,’ ‘MARK TEN,’ and ‘LARK’ used in their
cigarette products. Petitioners moved to enjoin respondent Fortune Tobacco from
manufacturing and selling cigarettes bearing the symbol ‘MARK’ asserting that it is identical or
confusingly similar with their trademarks. Petitioners relied on Section 21-A of the Trademark
Law to bring their suit and the Paris Convention to protect their trademarks. The court denied
the prayer for injunction stating that since petitioners are not doing business in the Philippines,
respondent’s cigarettes would not cause irreparable damage to petitioner. CA granted the
injunction but on a subsequent motion, dissolved the writ.
Issues:
(1) Whether or not petitioner’s mark may be afforded protection under said laws;
(2) Whether or not petitioner may be granted injunctive relief.
Ruling:
(1) NO. Yet, insofar as this discourse is concerned, there is no necessity to treat the matter with
an extensive response because adherence of the Philippines to the 1965 international covenant
due to pacta sunt servanda had been acknowledged in La Chemise. Given these confluence of
existing laws amidst the cases involving trademarks, there can be no disagreement to the
guiding principle in commercial law that foreign corporations not engaged in business in the
Philippines may maintain a cause of action for infringement primarily because of Section 21-A
of the Trademark Law when the legal standing to sue is alleged, which petitioners have done in
the case at hand.
Petitioners may have the capacity to sue for infringement irrespective of lack of business
activity in the Philippines on account of Section 21-A of the Trademark Law but the question
whether they have an exclusive right over their symbol as to justify issuance of the
controversial writ will depend on actual use of their trademarks in the Philippines in line with
Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a
foreign corporation not licensed to do business in Philippines files a complaint for infringement,
the entity need not be actually using its trademark in commerce in the Philippines. 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.
(2) NO. More telling are the allegations of petitioners in their complaint as well as in the very
petition filed with this Court indicating that they are not doing business in the Philippines, for
these frank representations are inconsistent and incongruent with any pretense of a right which
can breached. Indeed, to be entitled to an injunctive writ, petitioner must show that there
exists a right to be protected and that the facts against which injunction is directed are violative
of said right. On the economic repercussion of this case, we are extremely bothered by the
thought of having to participate in throwing into the streets Filipino workers engaged in the
manufacture and sale of private respondent’s “MARK” cigarettes who might be retrenched and
forced to join the ranks of the many unemployed and unproductive as a result of the issuance
of a simple writ of preliminary injunction and this, during the pendency of the case before the
trial court, not to mention the diminution of tax revenues represented to be close to a quarter
million pesos annually. On the other hand, if the status quo is maintained, there will be no
damage that would be suffered by petitioners inasmuch as they are not doing business in the
Philippines. In view of the explicit representation of petitioners in the complaint that they are
not engaged in business in the Philippines, it inevitably follows that no conceivable damage can
be suffered by them not to mention the foremost consideration heretofore discussed on the
absence of their “right” to be protected.

Birkenstock vs PSEMC
November 20, 2013
Perlas-Bernabe, J.

Facts
Petitioner, a corporation duly organized and existing under the laws of Germany applied for
various trademark registrations before the Intellectual Property Office (IPO). However, the
applications were suspended in view of the existing registration of the mark “BIRKENSTOCK
AND DEVICE” under Registration No. 56334 dated October 21, 1993 in the name of Shoe Town
International and Industrial Corporation, the predecessor-in-interest of respondent Philippine
Shoe Expo Marketing Corporation.
On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of
Registration No. 564334 on the ground that it is the lawful and rightful owner of the
Birkenstock marks. During its pendency, however, respondent and/or it predecessor-in-interest
failed to file the required 10th Year Declaration of Actual Use (10th Year DAU) for Registration
No. 56334 on or before October 21, 2004, thereby resulting the cancellation of such mark.
Accordingly, the cancellation case was dismissed for being moot and academic thereby paving
the way for the publication of the subject applications.
In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three
separate verified notices of opposition to the subject applications docketed as Inter Partes
Cases claiming, among others, it, together with its predecessor-in-interest, has been using the
Birkenstock marks in the Philippines for more than 16 years through the mark “BIRKENSTOCK
AND DEVICE”. In its Decision, the BLA of the IPO sustained respondent’s opposition, thus
ordering the rejection of the subject applications. Aggrieved, petitioner appealed to the IPO
Director General whereby in its decision, the latter reversed and set aside the ruling of the BLA
thus allowing the registration of the subject applications.
Finding the IPO Director General’s reversal of the BLA unacceptable, respondent filed a
petition for review with the Court of Appeals. In its decision dated June 25, 2010, the CA
reversed and set aside the ruling of the IPO Director General and reinstated that of the BLA.
The petitioner filed a Motion for Reconsideration but was denied by the CA. Hence, this petition
to the Supreme Court.
ISSUE:
Whether or not the petitioner’s documentary evidence, although photocopies, are admissible
in court?
Whether or not the subject marks should be allowed registration in the name of the petitioner?
HELD:
The court ruled yes. It is a well-settled principle that the rules of procedure are mere tools
aimed at facilitating the attainment of justice, rather than its frustration. A strict and rigid
application of the rules must always be eschewed when it would subvert the primary objective
of the rules, that is, to enhance fair trials and expedite justice. In the light of this, Section 5 of
the Rules on Inter Partes Proceedings provides that, “The Bureau shall not be bound by strict
technical rules of procedure and evidence but may adopt, in the absence of any applicable rule
herein, such mode of proceedings which is consistent with the requirements of fair play and
conducive to the just, speedy and inexpensive disposition of cases, and which will the Bureau
the greatest possibility to focus on the contentious issues before it.
In the case at bar, it should be noted that the IPO had already obtained the originals of such
documentary evidence in the related Cancellation Case earlier before it. Under the
circumstance and the merits of the instant case as will be subsequently discussed, the Court
holds that the IPO Director General’s relaxation of procedure was a valid exercise of his
discretion in the interest of substantial justice.
The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it provides
that, “Each certificate of registration shall remain in force for twenty years: Provided, that the
registration under the provisions of this Act shall be cancelled by the Director, unless within one
year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate
of registration, the registrant shall file in the Patent Office an affidavit showing that the mark or
trade-name is still in use or showing that its non-use is due to special circumstance which
excuse such non-use and is not due to any intention to abandon the same, and pay the required
fee.”
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for Registration
No. 56334 within the requisite period, or on or before October 21, 2004. As a consequence, it
was deemed to have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that registration of a trademark, by itself, is not a mode
of acquiring ownership. If the applicant is not the owner of the trademark, he has no right to
apply for its registration. Registration merely creates a prima facie presumption of the validity
of the registration. Such presumption, just like the presumptive regularity in the performance
of official functions, is rebuttable and must give way to evidence to the contrary. Besides,
petitioner has duly established its true and lawful ownership of the mark “BIRKENSTOCK”. It
submitted evidence relating to the origin and history of “BIRKENSTOCK” and it use in commerce
long before respondent was able to register the same here in the Philippines. Petitioner also
submitted various certificates of registration of the mark “BIRKENSTOCK” in various countries
and that it has used such mark in different countries worldwide, including the Philippines.
Skechers USA vs Inter Pacific
March 23, 2011
Peralta, J.

Facts
Petitioner filed an application for the issuance of search warrants against an outlet and
warehouse operated by respondents for infringement of trademark under Section 155, in
relation to Section 170 of Republic Act No. 8293, IP Code of the Philippines. In the course of its
business, petitioner has registered the trademark "SKECHERS" and the trademark "S" (within an
oval design) with the IPO. Two search warrants were issued and more than 6,000 pairs of shoes
bearing the “S” logo were seized. Respondents moved to quash the warrants arguing that there
was no confusing similarity between petitioner’s "Skechers" rubber shoes and its "Strong"
rubber shoes. RTC granted the motion and quashed the search warrants. Petitioner filed a
petition for certiorari with the CA which affirmed the decision of the RTC. Thus, petitioner filed
the present petition with the SC assailing that the CA committed grave abuse of discretion
when it considered matters of defense in a criminal trial for trademark infringement in passing
upon the validity of the search warrant when it should have limited itself to a determination of
whether the trial court committed grave abuse of discretion in quashing the warrants. And that
it committed grave abuse of discretion in finding that respondents are not guilty of trademark
infringement in the case where the sole triable issue is the existence of probable cause to issue
a search warrant. Subsequently, petitioner-intervenor filed a Petition-in-Intervention with the
Court claiming to be the sole licensed distributor of Skechers products here in the Philippines,
but the same was dismissed. Both petitioner and petitioner-intervenor filed separate motions
for reconsideration.

Issue:
Whether or not respondent is guilty of trademark infringement.

Ruling:
Yes. The essential element of infringement under R.A. No. 8293 is that the infringing mark is
likely to cause confusion. In determining similarity and likelihood of confusion, two tests have
been developed: (1) the Dominancy Test which focuses on the similarity of the prevalent or
dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not necessary;
neither is it required that the mark sought to be registered suggests an effort to imitate. Given
more consideration are the aural and visual impressions created by the marks on the buyers of
goods, giving little weight to factors like prices, quality, sales outlets, and market segments. (2)
the Holistic or Totality Test which necessitates a consideration of the entirety of the marks as
applied to the products, including the labels and packaging, in determining confusing similarity.
The discerning eye of the observer must focus not only on the predominant words, but also on
the other features appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.

There are two types of confusion: (1) confusion of goods (product confusion), where the
ordinarily prudent purchaser would be induced to purchase one product in the belief that he
was purchasing the other; and (2) confusion of business (source or origin confusion), where,
although the goods of the parties are different, the product, the mark of which registration is
applied for by one party, is such as might reasonably be assumed to originate with the
registrant of an earlier product, and the public would then be deceived either into that belief or
into the belief that there is some connection between the two parties, though inexistent.

In the case at bar, the Court applied the Dominancy Test and found that the use of the stylized
"S" by respondent in its Strong rubber shoes infringes on the mark already registered by
petitioner with the IPO. While it is undisputed that petitioner’s stylized "S" is within an oval
design, to this Court’s mind, the dominant feature of the trademark is the stylized "S," as it is
precisely the stylized "S" which catches the eye of the purchaser. Thus, even if respondent did
not use an oval design, the mere fact that it used the same stylized "S", the same being the
dominant feature of petitioner’s trademark, already constitutes infringement under the
Dominancy Test.

The protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods bearing the mark through
actual use over a period of time, but also to safeguard the public as consumers against
confusion on these goods. While respondent’s shoes contain some dissimilarities with
petitioner’s shoes, this Court cannot close its eye to the fact that for all intents and purpose,
respondent had deliberately attempted to copy petitioner’s mark and overall design and
features of the shoes. Let it be remembered, that defendants in cases of infringement do not
normally copy but only make colorable changes. The most successful form of copying is to
employ enough points of similarity to confuse the public, with enough points of difference to
confuse the courts.

Levi Strauss & Co. vs Clinton Apparelle, Inc.

September 20, 2005
Tinga, J.

Facts
The Complaint alleged that LS & Co., a foreign corporation duly organized and existing under
the laws of the State of Delaware, USA and engaged in the apparel business, is the owner by
prior adoption and use since 1986 of the internationally famous “Dockers and Design”
trademark. This ownership is evidenced by its valid and existing registrations in various member
countries if Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in
the Principal Register for use of said trademark on pants, shirts, blouses, skirts, shorts,
sweatshirts and jackets under Class 25. The “Dockers and Design” trademark was first used in
the Philippines in or about May 1988, by LSPI, a domestic corporation engaged in the
manufacture, sale and distribution of various products bearing trademarks owned by LS & Co.
To date, LSPI continues to manufacture and sell Dockers Pants with the “Dockers and Design”
Trademark. LS & Co and LSPI alleged that they discovered the presence in the local market of
jeans under the brand name “Paddocks” using a device which is substantially, if not exactly,
similar to the “Dockers and Design” trademark owned and registered in their name, without
their consent. Based on their belied, they added Clinton Apparelle manufactured and continues
to manufacture such “Paddocks” jeans and other apparel. However, since LS & Co. and LSPI are
unsure if both or just one of impleaded defendants is behind the manufacture and sale of the
“Paddocks” jeans complained of, they brought this suit under Sec. 13 Rule 3 of the 1997 Rules
of Court.
The evidence considered by the trial court in granting injunctive relief were as follows: (1) a
certified true copy of the certificate of trademark registration for “Dockers and Design” (2) a
pair of DOCKERS pants bearing the trademark (3) a pair of “Paddocks” pants bearing the
respondents assailed logo; (4) the trends MBL Survey Report purportedly proving that there
was confusing similarity between two marks; (5) the affidavit of one Bernabe Alajar which
recounted petitioners’ prior adoption, use and registration of the “Dockers and Design”
Trademark and (6) the affidavit of Mercedes Abad of Trends MBL Inc which detailed the
methodology and procedure used in their survey and results thereof.
The trial court issued a writ of preliminary injunction, which prompted Clinton Apparelle to file
a petition for certiorari, prohibition and mandamus with the Court of Appeals. Whereby the
Appellate Court granted the petition of Clinton Apparelle’s petition; holding that the trial court
did not follow the procedure required by law. Thus, holding the issuance of the writ of
preliminary injunction is questionable after petitioner’s failure to sufficiently establish its
material and substantial right to have the writ issued. Moreover, the Court of Appeals strongly
believes that the implementation of the questions writ would effectively shut down
respondent’s shut down. Hence this petition.

ISSUE:
Whether or not the single registration of the trademark “Dockers and Design” confers on the
owner the right to prevent the use of a fraction thereof.

HELD:
Given the single registration of the trademark “Dockers and Design” and considering that
respondent only uses the assailed device but a different word mark, the right to prevent the
latter from using the challenged “Paddocks” device is far from clear. Stated otherwise, it is not
evident whether the single registration of the trademark “Dockers and Design” confers on the
owner the right to prevent the use of a fraction thereof in the course of trade. It is also unclear
whether the use without the owner’s consent of a portion of a trademark registered in its
entirety constitutes material or substantial invasion of the owner’s right.
 It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is
the dominant or central feature of petitioners’ trademark—the feature that prevails or is
retained in the minds of the public—an imitation of which creates the likelihood of deceiving
the public and constitutes trademark infringement. In sum, there are vital matters which have
yet and may only be established through a full-blown trial.
From the above discussion, we find that petitioners’ right to injunctive relief has not been
clearly and unmistakably demonstrated. The right has yet to be determined. Petitioners also
failed to show proof that there is material and substantial invasion of their right to warrant the
issuance of an injunctive writ. Neither were petitioners able to show any urgent and permanent
necessity for the writ to prevent serious damage.
Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging
that the erosion or dilution of their trademark is protectable. They assert that a trademark
owner does not have to wait until the mark loses its distinctiveness to obtain injunctive relief,
and that the mere use by an infringer of a registered mark is already actionable even if he has
not yet profited thereby or has damaged the trademark owner.
Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner
of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is entitled to an injunction
“against another person’s commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive quality of the
mark.” This is intended to protect famous marks from subsequent uses that blur distinctiveness
of the mark or tarnish or disparage it.
Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
respondent of “Paddocks and Design” began after the petitioners’ mark became famous; and
(3) such subsequent use defames petitioners’ mark. In the case at bar, petitioners have yet to
establish whether “Dockers and Design” has acquired a strong degree of distinctiveness and
whether the other two elements are present for their cause to fall within the ambit of the
invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to
establish that there was confusing similarity between two marks is not sufficient proof of any
dilution that the trial court must enjoin.
After a careful consideration of the facts and arguments of the parties, the Court finds that
petitioners did not adequately prove their entitlement to the injunctive writ. In the absence of
proof of a legal right and the injury sustained by the applicant, an order of the trial court
granting the issuance of an injunctive writ will be set aside for having been issued with grave
abuse of discretion. Conformably, the Court of Appeals was correct in setting aside the assailed
orders of the trial court.

Coca Cola Bottlers, Phils. Vs Gomez, et al.

November 14, 2008
Brion, J.

Facts
Petitioner Coca-Cola applied for a search warrant against Pepsi for hoarding empty Coke bottles
in Pepsi’s yard in Naga City, an act allegedly penalized as unfair competition under the
Intellectual Property (IP) Code. The MTC issued a search warrant to seize the empty Coke
bottles. The local police seized the empty Coke bottles and filed with the Office of the City
Prosecutor a complaint against the respondents – Gomez (Pepsi’s general manager in Naga)
and Galicia (Pepsi’s regional sales manager).

In their counter-affidavits, the respondents claimed that the bottles came from Pepsi retailers
and wholesalers who included them in their return to make up for shortages of empty Pepsi
bottles; the presence of the bottles in their yard was not intentional; and there is no mention in
the IP Code of the crime of possession of empty bottles. They filed a motion to quash the
search warrant contending that no probable cause existed to justify the issuance of the search
warrant because the facts charged do not constitute an offense.

The MTC denied the motion and also denied the respondents’ motion for reconsideration. The
respondents filed a petition for certiorari under Rule 65 of the ROC before the RTC on the
ground that the subject search warrant was issued without probable cause.

The RTC voided the warrant for lack of probable cause and the non-commission of the crime of
unfair competition.

Bypassing the CA, the petitioner asks the SC through a petition for review on certiorari under
Rule 45 of the ROC to reverse the decision of the RTC.

ISSUE:
Whether hoarding is an act of unfair competition under the IP Code

RULING:
No. A first test that should be made when a question arises on whether a matter is covered by
the IP Code is to ask if it refers to an intellectual property as defined in the Code. If it does not,
then coverage by the Code may be negated.

"Intellectual property rights" have been defined under Section 4 of the Code to consist
of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic
Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of
Integrated Circuits; and g) Protection of Undisclosed Information.
A second test, if a disputed matter does not expressly refer to an intellectual property right as
defined above, is whether it falls under the general "unfair competition" concept and definition
under Sections 168.1 and 168.2 of the Code. The question then is whether there is "deception"
or any other similar act in "passing off" of goods or services to be those of another who enjoys
established goodwill.

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. —

168.1. A person who has identified in the mind of the public the goods he manufactures
or deals in, his business or services from those of others, whether or not a registered
mark is employed, has a property right in the goodwill of the said goods, business or
services so identified, which will be protected in the same manner as other property
rights.

168.2. Any person who shall employ deception or any other means contrary to good
faith by which he shall pass off the goods manufactured by him or in which he deals, or
his business, or services for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against
unfair competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods
of another manufacturer or dealer, either as to the goods themselves or in the wrapping
of the packages in which they are contained, or the devices or words thereon, or in any
other feature of their appearance, which would be likely to influence purchasers to
believe that the goods offered are those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate trade, or
any subsequent vendor of such goods or any agent of any vendor engaged in selling
such goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means
calculated to induce the false belief that such person is offering the services of another
who has identified such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or who shall
commit any other act contrary to good faith of a nature calculated to discredit the
goods, business or services of another.
Hoarding does not fall within the coverage of the IP Code. It does not relate to any patent,
trademark, trade name or service mark that the respondents have invaded, intruded into or
used without proper authority from the petitioner. Nor are the respondents alleged to be
fraudulently “passing off” their products or services as those of the petitioner. The respondents
are not also alleged to be undertaking any representation or misrepresentation that would
confuse or tend to confuse the goods of the petitioner with those of the respondents or vice
versa. What in fact the petitioner alleges is an act foreign to the Code, to the concept it
embodies and to the acts it regulates; as alleged, hoarding inflicts unfairness by seeking to limit
the opposition’s sales by depriving it of the bottles it can use for these sales.

Shell Co. vs Insular Petroleum

June 30, 1964
Paredes, J.
Facts
According to Conrado Uichangco an operator of a Shell service station and who has been losing
during the first eight and ten months of operation of his station, although he had money to
back up his losses, when a certain F. Pecson Lozano, in agent of the defendant, repaired at his
station and "tried to convince me that Insoil is a good oil". As a matter of fact, he tried to show
me a chemical analysis of Insoil which he claimed was very close to the analysis of Shell oil; and
he also told me that he could sell this kind of oil (Insoil) to me at a much cheaper price so that I
could make a bigger margin of profits. The incident between petitioner's operator and
respondent's agent, brought about a case for damages on the allegation of unfair competition
and a Criminal Case No. 42020 under the Revised Penal Code (Art. 189) against Donald Mead,
Manager, Pedro Kayanan and F. Tecson Lozano. In the criminal case, the accused therein were
acquitted. In the civil case, the trial court ruled in favor of Shell. However, it was reversed by
CA.
Issue:
Whether or not, as a matter of fact, the defendant is guilty of unfair competition
Held:
Any person who shall employ deception or any other means contrary to good faith by which he
shall pass off the goods manufactured by him or in which he deals, ... for those of the one
having established such goodwill, or who shall commit any act calculated to produce said result,
shall be guilty of unfair competition, and shall be subject to an action therefor. The single
transaction at bar will not render defendant's act an unfair competition, much in the same way
that the appearance of one swallow does not make a season, summer. It was found by the
Court of Appeals that in all transactions of the low-grade Insoil, except the present one, all the
marks and brands on the containers used were erased or obliterated. The drum in question did
not reach the buying public. It was merely a shell dealer or an operator of a Shell Station who
purchased the drum not to be resold to the public, but to be sold to the petitioner company,
with a view of obtaining evidence against someone who might have been committing unfair
business practices, for the dealer had found that his income was dwindling in his gasoline
station.
Juno Batistis vs People
December 16, 2009
Bersamin, J.

Facts

Manila RTC convicted herein petitioner Juno Batistis for violations of Section 155 (infringement
of trademark) and Section 168 (unfair competition) of the Intellectual Property Code (Republic
Act No. 8293) after the authorities found in his possession counterfeit Fundador products.

The Court of Appeals (CA) affirmed the conviction for infringement of trademark, but reversed
the conviction for unfair competition for failure of the State to prove guilt beyond reasonable
doubt.

The CA affirmed the decision of the RTC imposing the” penalty of imprisonment of TWO (2)
YEARS and to pay a fine of FIFTY THOUSAND (50,000.00) PESOS.”

Batistis now appeals via petition for review on certiorari to challenge the CA’s affirmance of his
conviction for infringement of trademark.

Issue:

Whether or not the CA erred in affirming the RTC’s decision to convict Juno for infringement of
trademark and whether or not the CA erred in giving a straight sentence

Ruling:

The Supreme Court affirm the conviction, but modified the penalty by imposing an
indeterminate sentence, conformably with the Indeterminate Sentence Law and pertinent
jurisprudence.

The straight penalty the CA imposed was contrary to the Indeterminate Sentence Law, whose
Section 1 requires that the penalty of imprisonment should be an indeterminate sentence.

Section 170 of the Intellectual Property Code provides the penalty for infringement of
trademark, to wit:
Section 170. Penalties. – Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from
Fifty thousand pesos (P50,000) to Two hundred thousand pesos(P200,000), shall be imposed on
any person who is found guilty of committing any of the acts mentioned in Section 155, Section
168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code).

Indeed, the imposition of an indeterminate sentence is mandatory although an exception was

enunciated in People v. Nang Kay.

There, the Court sustained the straight penalty of five years and one day imposed by the trial
court because the application of the Indeterminate Sentence Law would be unfavorable to the
accused by lengthening his prison sentence. Yet, we cannot apply the Nang Kay exception
herein, even if this case was a prosecution under a special law like that in Nang Kay.

Firstly, the trial court in Nang Kay could well and lawfully have given the accused the lowest
prison sentence of five years because of the mitigating circumstance of his voluntary plea of
guilty, but, herein, both the trial court and the CA did not have a similar circumstance to justify
the lenity towards the accused.

Secondly, the large number of Fundador articles confiscated from his house (namely, 241
empty bottles of Fundador, 163 Fundador boxes, a half sack full of Fundador plastic caps, and
two filled bottles of Fundador Brandy) clearly demonstrated that Batistis had been committing
a grave economic offense over a period of time, thereby deserving for him the indeterminate,
rather than the straight and lower, penalty.

Jouaquin Jr. vs Drilon

January 28, 1999
Mendoza, J.

Facts
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No.
M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the show’s format and style of presentation.
Upon complaint of petitioners, information for violation of PD No. 49 was filed against private
respondent Zosa together with certain officers of RPN 9 for airing “It’s a Date”. It was assigned
to Branch 104 of RTC Quezon City.
Zosa sought review of the resolution of the Assistant City Prosecutor before the Department of
Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant
City Prosecutor’s findings and directed him to move for the dismissal of the case against private
respondents.
Petitioner Joaquin filed motion for reconsideration but such was denied.
ISSUE:
Whether the format or mechanics or petitioner’s television show is entitled to copyright
protection.
HELD:
The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise
known as the Decree on Intellectual Property, enumerates the classes of work entitled to
copyright protection. The provision is substantially the same as Sec. 172 of the Intellectual
Property Code of the Philippines (RA 8293). The format or mechanics of a television show is not
included in the list of protected works in Sec. 2 of PD 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 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 person and on terms and conditions
specified in the statute.
The 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 PD 49.
The copyright does not extend to the general concept or format of its dating game show.
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 a probable cause.
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.