Dianne Medel S. Gumawid
Intellectual Property
1. Paquito Ochoa, in his capacity as Executive Secretary, et al., G.R. No. 204605, 19 July 2016
FACTS:
The Madrid System for the International Registration of Marks (Madrid System), which is the
centralized system providing a one-stop solution for registering and managing marks worldwide,
allows the trademark owner to file one application in one language, and to pay one set of fees to
protect his mark in the territories of up to 97 member-states. The Madrid System is governed by the
Madrid Agreement, concluded in 1891, and the Madrid Protocol, concluded in 1989.
The Madrid Protocol, which was adopted in order to remove the challenges deterring some countries
from acceding to the Madrid Agreement, has two objectives, namely: (1) to facilitate securing
protection for marks; and (2) to make the management of the registered marks easier in different
countries.
In 2011, the Intellectual Property Office of the Philippines (IPOPHL) recommended to the Department
of Foreign Affairs (DFA) the country's accession to the Madrid Protocol. The DFA then endorsed the
Madrid Protocol to President Benigno Aquino III, who eventually signed it on March 27, 2012. The
DFA treated the Madrid Protocol as an executive agreement, not a treaty, and therefore did not
require the concurrence of at least 2/3 of all members of the Senators following its ratification. The
Madrid Protocol entered into force in the Philippines on July 25, 2012.
Subsequently, the Intellectual Property Association of the Philippines (IPAP), an association of more
than 100 law firms and individual practitioners in intellectual property law, challenged the
constitutionality of the entry into force of the Madrid Protocol. IPAP argued that the Madrid Protocol
was a treaty that required Presidential ratification and Senate concurrence before its entry into force
in the Philippines. Because the Madrid Protocol did not have Senate's concurrence, IPAP argued that
its entry into force was unconstitutional.
ISSUE:
1. Is the Madrid Protocol an executive agreement or a treaty?
HELD:
The Supreme Court held that the Madrid Protocol is an executive agreement, not a treaty. Therefore
its entry into force on account of the ratification by the President is constitutional because an
executive agreement does not require the concurrence of 2/3 of all members of the Senate prior to
its entry into force.
Treaty vs. Executive Agreement:
1. The classic formulation to distinguish a treaty from an executive agreement is found in the case of
Commissioner of Customs v. Eastern Sea Trading: "International agreements involving political issues
or changes of national policy and those involving international arrangements of a permanent
character usually take the form of treaties. But international agreements embodying adjustments of
detail carrying out well-established national policies and traditions and those involving arrangements
of a more or less temporary nature usually take the form of executive agreements."
Why the Madrid Protocol is an executive agreement:
1. The registration of trademarks and copyrights have been the subject of executive agreements
entered into without the concurrence of the Senate. Some executive agreements have been
concluded in conformity with the policies declared in the acts of Congress with respect to the general
subject matter.
The Intellectual Property Code of the Philippines, for example, says it is also the policy of the State to
streamline administrative procedures of registering patents, trademarks and copyright.
2. Wilton Dy and/or Philites Electronic & Lighting Products vs. Koninklijke Philips Electronics, N.V., G.R.
No. 186088, 22 March 2017
FACTS:
On 12 April 2000, petitioner PHILITES filed a trademark application covering its fluorescent bulb,
incandescent light, starter and ballast. After publication, respondent Koninklijke Philips Electronics,
N .V. (“PHILIPS”) filed an opposition on 17 March 2006.
On 8 August 2006, petitioner posited that its PHILITES & LETTER P DEVICE trademark and
respondent’s PHILIPS have vast dissimilarities in terms of spelling, sound and meaning.
On 9 November 2006, IPP-BLA Director Estrellita Beltran-Abelardo denied the Opposition filed by
respondent PHILIPS and granted the application of Philites.
Upon appeal, the IPP-DG affirmed the decision of the IPP-BLA on 16 April 2008.
Upon intermediate appellate review, the CA ruled in favor of Philips and dismissed the application for
registration of trademark by Philites on 7 October 2008. The motion for reconsideration was denied.
ISSUES
1. Whether or not respondent’s mark is a registered and well-known mark in the Philippines; and
2. Whether or not the mark applied for by petitioner is identical or confusingly similar with that of
respondent.
RULING
Petition for Review on Certiorari by Philites is DENIED.
A trademark is “any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others.” It is “intellectual property deserving
protection by law,” and “susceptible to registration if it is crafted fancifully or arbitrarily and is
capable of identifying and distinguishing the goods of one manufacturer or seller from those of
another.”
Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark
shall be acquired through registration validly done in accordance with the provisions of this law.
Corollary to that rule, Section 123 provides which marks cannot be registered.
3.ABS-CBN Publishing Inc. vs. Director of the Bureau of Trademarks, G.R. No. 217916, 20 June 2018
FACTS:
In 2004, the petitioner filed with the Intellectual Property Office of the Philippines (IPO) its application
for the registration of its trademark "METRO" (applicant mark) under class 16 of the Nice classification,
with specific reference to "magazines." It was assigned to Examiner Arlene M. Icban (Examiner Icban),
who, after a judicious examination of the application, refused the applicant mark's registration
because the applicant mark is identical with three other cited marks, and is therefore unregistrable
according to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC).
The petitioner appealed the assessment of Examiner Icban before the Director of the Bureau of
Trademarks of the IPO, who eventually affirmed Examiner Icban's findings. The decision averred that
the applicant and cited marks were indeed confusingly similar, so much so that there may not only be
a confusion as to the goods but also a confusion as to the source or origin of the goods.
The petitioner appealed to the ODG of the IPO. The ODG upheld the decision of Examiner Icban's
assessment and the Bureau Director's decision.
ISSUE:
Whether or not the ODG was correct in refusing to register the applicant mark for being identical and
confusingly similar with the cited marks already registered with the IPO?
HELD:
According to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC), a mark cannot
be registered if it is "identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date," in respect of the following: (i) the same goods or services, or (ii)
closely related goods or services, or (iii) if it nearly resembles such a mark as to be likely to deceive or
cause confusion.
• Asia Pacific Resources International Holdings, Ltd. vs. Paperone, Inc., G.R. No. 213365-66, 10
December 2018
The Facts
The dispute in this case arose from a complaint for unfair competition, trademark infringement, and
damages filed against respondent by Asia Pacific Resources International Holdings, Ltd. (petitioner).
Petitioner is engaged in the production, marketing, and sale of pulp and premium wood free paper. It
alleged that it is the owner of a well­-known trademark, PAPER ONE, with Certificate of Registration
No. 4-1999-01957 issued on September 5, 2003. The said trademark enjoyed legal protection in
different countries worldwide and enjoyed goodwill and high reputation because of aggressive
marketing and promotion. Petitioner claimed that the use of PAPERONE in respondent's corporate
name without its prior consent and authority was done in bad faith and designed to unfairly ride on
its good name and to take advantage of its goodwill. It was calculated to mislead the public into
believing that respondent's business and/or products were manufactured, licensed or sponsored by
petitioner. It was also alleged that respondent had presumptive, if not actual knowledge, of
petitioner's rights to the trademark PAPER ONE, even prior to respondent's application for
registration of its corporate name before the Securities and Exchange Commission (SEC).
Respondent, on its part, averred that it had no obligation to secure prior consent or authority from
petitioner to adopt and use its corporate name. The Department of Trade and Industry (DTI) and the
SEC had allowed it to use Paperone, Inc., thereby negating any violation on petitioner's alleged prior
rights. Respondent was registered with the SEC, having been organized and existing since March 30,
2001. Its business name was likewise registered with the DTI. Respondent also denied any awareness
of the existence of petitioner and/or the registration of PAPER ONE, as the latter is a foreign
corporation not doing business in the Philippines. While the business of respondent dealt with paper
conversion such as manufacture of table napkins, notebooks and intermediate/collegiate writing pads,
it did not use its corporate name PAPERONE on any of its products. Further, its products had been
widely sold in the Philippines even before petitioner could claim any business transaction in the
country. The public could not have possibly been deceived into believing that any relation or
sponsorship existed between the parties, considering these circumstances.
In its decision,the Bureau of Legal Affairs (BLA) Director, Intellectual Property Office, found
respondent liable £or unfair competition. It ordered respondent to cease and desist from using
PAPERONE in its corporate name, and to pay petitioner P300,000.00, as temperate damages;
P200,000.00, as exemplary damages; and P100,000.00, as attorney's fees. It ruled that petitioner was
the first to use PAPER ONE in 1999 which had become a symbol of goodwill of its paper business.
Respondent's use of PAPERONE in its corporate name was to benefit from the established goodwill of
petitioner. There was, however, no trademark infringement since PAPER ONE was registered in the
Philippines only in 2003.
On appeal to the IPO Director General, the BLA decision was affirmed with modification insofar as the
increase in the award of attorney's fees to P300,000.00.
ISSUES
I.WHETHER RESPONDENT IS LIABLE FOR UNFAIR COMPETITION, and
II. WHETHER PETITIONER IS ENTITLED TO ACTUAL DAMAGES.
RULING
The core of the controversy is the adoption of "PAPERONE" in the trade name of respondent, which
petitioner claims it has prior right to, since it was the first to use it as its trademark for its paper
products. Petitioner claims that respondent committed unfair competition by adopting PAPERONE in
its trade name. It is noteworthy that the issue of trademark infringement is not the subject of the
appeal before us.
Habana vs. Robles, G.R. No. 131522, 19 July 1999
FACTS:
Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For
Today (CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency
(DEP). Petitioners found that several pages of the respondent's book are similar, if not all together a
copy of petitioners' book. Habana et al. filed an action for damages and injunction, alleging
respondent’s infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C.
Robles being substantially familiar with the contents of petitioners' works, and without securing their
permission, lifted, copied, plagiarized and/or transposed certain portions of their book CET.
On the other hand, Robles contends that the book DEP is the product of her own intellectual creation,
and was not a copy of any existing valid copyrighted book and that the similarities may be due to the
authors' exercise of the "right to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of
Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this
appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.
ISSUE: Whether Robles committed infringement in the production of DEP.
HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical
with the text of CET. The court finds that respondent Robles' act of lifting from the book of petitioners
substantial portions of discussions and examples, and her failure to acknowledge the same in her
book is an infringement of petitioners' copyrights.
In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners
Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book. To
allow another to copy the book without appropriate acknowledgment is injury enough.
• ABS-CBN vs. Gozon et al., G.R. No. 195956, 11 March 2015
Facts:
Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a condition for his
release, a demand was made for the withdrawal of Filipino troops in Iraq. After negotiations, he was
released by his captors and was scheduled to return to the country in the afternoon of 22 July 2004.
Occasioned by said homecoming and the
public interest it generated, both GMA Network, Inc. and [petitioner] made their respective
broadcasts and coverage of the live event. ABS-CBN “conducted live audio-video coverage of and
broadcasted the arrival of Angelo dela Cruz at the Ninoy Aquino International Airport (NAIA) and the
subsequent press conference.” ABS-CBN allowed Reuters Television Service (Reuters) to air the
footages it had taken earlier under a special embargo agreement which states that any of the
footages ABS-CBN took would be for the “use of Reuter’s international subscribers only, and shall be
considered and treated by Reuters under ‘embargo’ against use by other subscribers in the
Philippines. [N]o other Philippine subscriber of Reuters would be allowed to use ABS-CBN footage
without the latter’s consent.”
GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes, and Manalastas are connected,
“assigned and stationed news reporters and technical men at the NAIA for its live broadcast and nonlive news coverage of the arrival of dela Cruz.” GMA-7 subscribes to both Reuters and Cable News
Network (CNN). It received a live video feed
of the coverage of Angelo dela Cruz’s arrival from Reuters.
GMA-7 immediately carried the live news feed in its program “Flash Report,” together with its live
broadcast. Allegedly, GMA-7 did not receive any notice or was not aware that Reuters was airing
footages of ABS-CBN. GMA-7’s news control room staff saw neither the “No Access Philippines”
notice nor a notice that the video feed was under embargo in favor of ABS-CBN.
On August 13, 2004, ABS-CBN filed the Complaint for copyright infringement under Sections 177 and
211 of the Intellectual Property Code.
Respondents assailed the Agra Resolution through the Petition for Certiorari with prayer for issuance
of a temporary restraining order and/or Writ of Preliminary Injunction on September 2, 2010 before
the Court of Appeals.
ISSUE:
Whether or not a news coverage is subject to the laws on copyright.
HELD:
YES.
It is true that under Section 175 of the Intellectual Property Code, “news of the day and other
miscellaneous facts having the character of mere items of press information” are considered
unprotected subject matter. However, the Code does not state that expression of the news
of the day, particularly when it underwent a creative process, is not entitled to protection.
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated,
or embodied in such work. News or the event itself is not copyrightable.
• Juan vs. Juan and Laundromatic Corporation, G.R. No. 221732, 23 August 2017
Facts:
Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera Ko" in his
laundry business on July 4, 1994. He then opened his laundry store at No. 119 Alfaro St., Salcedo St.,
Makati City in 1995. Thereafter, on March 17, 1997, the National Library issued to him a certificate of
copyright over said name and mark. Over the years, the laundry business expanded with numerous
franchise outlets in Metro Manila and other provinces. Respondent Roberto then formed a
corporation to handle the said business, hence, Laundromatic Corporation (Laundromatic) was
incorporated in 1997, while "Lavandera Ko" was registered as a business name on November 13, 1998
with the Department of Trade and Industry (DTI). Thereafter, respondent Roberto discovered that his
brother, petitioner Fernando was able to register the name and mark "Lavandera Ko" with the
Intellectual Property Office (IPO) on October 18, 2001, the registration of which was filed on June 5,
1995. Respondent Roberto also alleged that a certain Juliano Nacino (Juliano) had been writing the
franchisees of the former threatening them with criminal and civil cases if they did not stop using the
mark and name "Lavandera Ko." It was found out by respondent Roberto that petitioner Fernando
had been selling his own franchises. Thus, respondent Roberto filed a petition for injunction, unfair
competition, infringement of copyright, cancellation of trademark and name with/and prayer for TRO
and Preliminary Injunction with the Regional Trial Court (RTC) and the case was raffled off at Branch
149, Makati City. The RTC issued a writ of preliminary injunction against petitioner Fernando in Order
dated June 10, 2004. On July 21, 2008, due to the death of respondent Roberto, the latter was
substituted by his son, Christian Juan (Christian). Pre-trial conference was concluded on July 13, 2010
and after the presentation of evidence of both parties, the RTC rendered a Resolution dated
September 23, 2013, dismissing the petition and ruling that neither of the parties had a right to the
exclusive use or appropriation of the mark "Lavandera Ko" because the same was the original mark
and work of a certain Santiago S. Suarez (Santiago). According to the RTC, the mark in question was
created by Suarez in 1942 in his musical composition called, "Lavandera Ko" and both parties of the
present case failed to prove that they were the originators of the same mark. Petitioner appealed to
CA but CA dismissed due to technical grounds. Petitioner files Certiorari under Rule 45 with the SC.
Issue:
Whether or not a mark is the same as a copyright.
Held:
No. The Ruling of RTC is erroneous
• Kho vs. CA, G.R. No. 115758, 11 March 2002
FACTS: On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages
with a prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case No. Q-9110926, against the respondents Summerville General Merchandising and Company (Summerville, for
brevity) and Ang Tiam Chay.
The petitioner’s complaint alleges that petitioner, doing business under the name and style of KEC
Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream
Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; that
she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register
of the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529; that
respondent Summerville advertised and sold petitioner’s cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the
decline in the petitioner’s business sales and income; and, that the respondents should be enjoined
from allegedly infringing on the copyrights and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi
Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to
register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the
copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng,
assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said Taiwanese Manufacturing Company.
After due hearing on the application for preliminary injunction, the trial court granted the same in an
Order dated February 10, 1992. Motion for reconsideration, denied.
On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals, docketed
as CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary injunction issued
by the trial court. After the respondents filed their reply and almost a month after petitioner
submitted her comment, or on August 14 1992, the latter moved to dismiss the petition for violation
of Supreme Court Circular No. 28-91, a circular prohibiting forum shopping. According to the
petitioner, the respondents did not state the docket number of the civil case in the caption of their
petition and, more significantly, they did not include therein a certificate of non-forum shopping. The
respondents opposed the petition and submitted to the appellate court a certificate of non-forum
shopping for their petition.
On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of
the respondents.
The petitioner filed a motion for reconsideration. This she followed with several motions to declare
respondents in contempt of court for publishing advertisements notifying the public of the
promulgation of the assailed decision of the appellate court and stating that genuine Chin Chun Su
products could be obtained only from Summerville General Merchandising and Co.
In the meantime, the trial court went on to hear petitioner’s complaint for final injunction and
damages. On October 22, 1993, the trial court rendered a Decision[7] barring the petitioner from
using the trademark Chin Chun Su and upholding the right of the respondents to use the same, but
recognizing the copyright of the petitioner over the oval shaped container of her beauty cream. The
trial court did not award damages and costs to any of the parties but to their respective counsels
were awarded Seventy-Five Thousand Pesos (P75,000.00) each as attorney’s fees. The petitioner duly
appealed the said decision to the Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a Resolution[8] denying the petitioner’s motions
for reconsideration and for contempt of court in CA-G.R. SP No. 27803.
• Joaquin vs. Drilon, G.R. No. 108946, 28 January 1999.
ISSUE:
Would the copyright and patent over the name and container of a beauty cream product entitle the
registrant to the use and ownership over the same to the exclusion of others?
Share
KHO V. CA (CASE DIGEST. G.R. NO. 115758)
CASE DIGEST: 429 Phil. 140. SECOND DIVISION [ G.R. No. 115758, March 19, 2002 ] ELIDAD C. KHO,
DOING BUSINESS UNDER THE NAME AND STYLE OF KEC COSMETICS LABORATORY, PETITIONER, VS.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING AND COMPANY, AND ANG
TIAM CHAY, RESPONDENTS. DE LEON, JR., J.:
FACTS: On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages
with a prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case No. Q-9110926, against the respondents Summerville General Merchandising and Company (Summerville, for
brevity) and Ang Tiam Chay.
The petitioner’s complaint alleges that petitioner, doing business under the name and style of KEC
Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream
Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; that
she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register
of the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529; that
respondent Summerville advertised and sold petitioner’s cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the
decline in the petitioner’s business sales and income; and, that the respondents should be enjoined
from allegedly infringing on the copyrights and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and
authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi
Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to
register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the
copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng,
assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said Taiwanese Manufacturing Company.
After due hearing on the application for preliminary injunction, the trial court granted the same in an
Order dated February 10, 1992. Motion for reconsideration, denied.
On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals, docketed
as CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary injunction issued
by the trial court. After the respondents filed their reply and almost a month after petitioner
submitted her comment, or on August 14 1992, the latter moved to dismiss the petition for violation
of Supreme Court Circular No. 28-91, a circular prohibiting forum shopping. According to the
petitioner, the respondents did not state the docket number of the civil case in the caption of their
petition and, more significantly, they did not include therein a certificate of non-forum shopping. The
respondents opposed the petition and submitted to the appellate court a certificate of non-forum
shopping for their petition.
On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of
the respondents.
The petitioner filed a motion for reconsideration. This she followed with several motions to declare
respondents in contempt of court for publishing advertisements notifying the public of the
promulgation of the assailed decision of the appellate court and stating that genuine Chin Chun Su
products could be obtained only from Summerville General Merchandising and Co.
In the meantime, the trial court went on to hear petitioner’s complaint for final injunction and
damages. On October 22, 1993, the trial court rendered a Decision[7] barring the petitioner from
using the trademark Chin Chun Su and upholding the right of the respondents to use the same, but
recognizing the copyright of the petitioner over the oval shaped container of her beauty cream. The
trial court did not award damages and costs to any of the parties but to their respective counsels
were awarded Seventy-Five Thousand Pesos (P75,000.00) each as attorney’s fees. The petitioner duly
appealed the said decision to the Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a Resolution[8] denying the petitioner’s motions
for reconsideration and for contempt of court in CA-G.R. SP No. 27803.
The petitioner faults the appellate court for not dismissing the petition on the ground of violation of
Supreme Court Circular No. 28-91. Also, the petitioner contends that the appellate court violated
Section 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on her
motion for reconsideration within ninety (90) days from the time it is submitted for resolution. The
appellate court ruled only after the lapse of three hundred fifty-four (354) days, or on June 3, 1994. In
delaying the resolution thereof, the appellate court denied the petitioner’s right to seek the timely
appellate relief. Finally, petitioner describes as arbitrary the denial of her motions for contempt of
court against the respondents.
ISSUE:
Would the copyright and patent over the name and container of a beauty cream product entitle the
registrant to the use and ownership over the same to the exclusion of others?
HELD:
The rule is in favor of the respondents. WHEREFORE, the petition is DENIED. The Decision and
Resolution of the Court of Appeals dated May 24, 1993 and June 3, 1994, respectively, are hereby
AFFIRMED. With costs against the petitioner.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise.
• Ong Ai Gui vs. Director of Patents, G.R. No. L-6235, 28 March 1955
Facts:
Ong Ai Gui applied for the registration of the trade name ‘20th Century Nylon Shirts Factory’ to be
used in his general merchandising business dealing principally with textiles. Respondent E.I. De Pont
de Nemours and Company opposed on the ground that the word ‘nylon’ is a generic term for a fabric
material and it is descriptive and misdescriptive of petitioner’s goods. The Director ruled that the
application must be disapproved unless the word ‘nylon’ is disclaimed.
Issue:
Whether or not the word ‘nylon’ being generic or descriptive can acquire a secondary meaning to be
registrable.
Ruling:
NO.
Used in connection with shirt-making, “Nylon” can never become distinctive, can never acquire
secondary meaning, because it is a generic term, like cotton, silk, linen, or ramie. Just as no length of
use and no amount of advertising will make “cotton,” “silk,” “linen,” or “ramie,” distinctive of shirts or
of the business of making them, so no length of use and no amount of advertising will make “nylon”
distinctive of shirts or of the business of manufacturing them.”
• Victorio P. Diaz vs. People of the Philippines and Levi Strauss (Phils.), Inc., G.R. No. 180677, 18
February 2013
Facts:
Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that
Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City,
Levi’s Philippines hired a private investigation group to verify the information. Surveillance and the
purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the tailoring
shops of Diaz were counterfeit or imitations of LEVI’S 501. Levi’s Philippines then sought the
assistance of the National Bureau of Investigation (NBI) for purposes of applying for a search warrant
against Diaz to be served at his tailoring shops. The search warrants were issued in due course. Armed
with the search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake
LEVI’S 501 jeans from them. Levi’s Philippines claimed that it did not authorize the making and selling
of the seized jeans; that each of the jeans were mere imitations of genuine LEVI’S 501 jeans by each
of them bearing the registered trademarks, like the arcuate design, the tab, and the leather patch;
and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch. Diaz stated that he did not manufacture Levi’s jeans, and
that he used the label “LS Jeans Tailoring” in the jeans that he made and sold; that the label “LS Jeans
Tailoring” was registered with the Intellectual Property Office; that his shops received clothes for
sewing or repair; that his shops offered made-to-order jeans, whose styles or designs were done in
accordance with instructions of the customers; that since the time his shops began operating in 1992,
he had received no notice or warning regarding his operations; that the jeans he produced were easily
recognizable because the label “LS Jeans Tailoring,” and the names of the customers were placed
inside the pockets, and each of the jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and
that the leather patch on his jeans had two buffaloes, not two horses.
Issue:
Whether or not Diaz is liable for trademark infringement.
Held:
No. Section 155 of R.A. No. 8293 defines the acts that constitute infringement of trademark. The
holistic test is applicable here considering that the herein criminal cases also involved trademark
infringement in relation to jeans products. Accordingly, the jeans trademarks of Levi’s Philippines and
Diaz must be considered as a whole in determining the likelihood of confusion between them. The
maong pants or jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very
popular in the Philippines. The consuming public knew that the original LEVI’S 501 jeans were under a
foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as readyto-wear items, and were not available in tailoring shops like those of Diaz’s as well as not acquired on
a “made-to-order” basis. Under the circumstances, the consuming public could easily discern if the
jeans were original or fake LEVI’S 501, or were manufactured by other brands of jeans.
• Zuneca Pharma vs. Natrapharm, Inc., G.R. No. 211850, 8 September 2020
Facts:
The case involves a dispute between the use and ownership of the confusingly similar marks “ZYNAPS”
and “ZYNAPSE”.
Zuneca Pharmaceutical (“Zuneca”) has been engaged in the sale of “ZYNAPS”, an anti-convulsant used
to control all types of seizure disorders like epilepsy[2] as early as 2004. Natrapharm, Inc.
(“Natrapharm”), on the other hand, has also been engaged in the sale of “ZYNAPSE” for the treatment
of cerebrovascular disease or stroke[3], and is the registrant of the “ZYNAPSE” mark which was
registered with the Intellectual Property Office of the Philippines (“IPO”) on 24 September 2007.
On 29 November 2007, Natrapharm filed a Trademark Infringement case against Zuneca, alleging that
“ZYNAPS” is confusingly similar to its registered trademark “ZYNAPSE”. While Zuneca argued that as
the first entity to use the mark in good faith, it was the rightful owner of the mark “ZYNAPS”.
ISSUES
(1) How is ownership over a trademark acquired?
(2)
RULING
(1) Upon the effectivity of the IP Code on 01 January 1998, the manner of
acquiring ownership of trademarks is acquired through registration, as expressed in Section 122 of
the IP Code. To clarify, while it is the fact of registration which confers ownership of the mark and
enables the owner thereof to exercise the rights expressed in Section 147 of the IP Code, the first-tofile rule nevertheless prioritizes the first filer of the trademark application and operates to prevent
any subsequent applicants from registering marks described under Section 123.1 (d) of the IP Code.
• E.I Dupont De Nemours and Co. vs. Dir. Emma C. Francisco, et al., G.R. No. 174379, 31 August 2016
• Sahar International Trading, Inc. vs. Warner Lambert LLC and Pfizer, Co., Inc., G.R. No. 194872, 9
June 2014
• Pribhdas J. Mirpuri vs. CA, G.R. No. 114508, 19 November 1999
• Pascual Godines vs. CA, G.R. No. 97343, 13 September 1993
• Smith Kline Beckman Corporation vs. CA, G.R. No. 126627, 14 August 2003 • Ching vs. William
Salinas, Sr. et al., G.R. No. 161295, 29 June 2005
• Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated, and North Edsa Marketing,
Incorporated, G.R. No. 148222, 15 August 2003
• Aguas vs. De Leon, G.R. No. L-32160, 30 January 1982 • Maguan vs. CA, G.R. No. L-45101, 28
November 1986
• Creser Precision Systems, Inc. vs. CA and Floro International Corp., G.R. No. 118708, 2 February
1998
• Microsoft Corporation vs. Manansala, G.R. No. 166391, 21 October 2015
• GR No. 120961 • Cagayan Valley Enterprises, Inc. vs. CA, 179 SCRA 218.
• GR No. 123248