Atty.

Mark Del Rosario

MACALE 2020 INTELLECTUAL PROPERTY LAW

J. REMEDIES (b) that there exists a reciprocal treatment to PH Corporations

Section 3 either by law or convention by the country of origin of the
International Conventions and Reciprocity foreign corporation (Sec. 21-A Trademark Law).
Any person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party to any In this case, all that was alleged in private respondent's complaint is that
convention, treaty or agreement relating to intellectual property rights or it is a foreign corporation. This does not only fail to comply with the
the repression of unfair competition, to which the PH is also a party, or requirements imposed by Section 21-A but violates as well Section 4, Rule
extends reciprocal rights to nationals of the PH by law, shall be entitled to 8 of the Rules of Court: facts showing the capacity of a party to sue or be
benefits to the extent necessary to give effect to any provision of such sued or the authority of a party to sue or be sued in a representative
convention, treaty or reciprocal law, in addition to the rights to which any capacity or the legal existence of an organized association of persons that is
owner of an intellectual property right is otherwise entitled by this Act. made a party, must be averred

Section 160 It may be that private respondent has the right to sue before PH
Right of Foreign Corporation to Sue in Trademark or courts, but our rules on pleadings require that the necessary
Service Mark Enforcement Action qualifying circumstances which clothe it with such right be
affirmatively pleaded.
Any foreign national or juridical person who meets the requirements of
Section 3 of this Act and does not engage in business in the PH may bring
And the REASON therefor, as enunciated in Atlantic Mutual Insurance
a civil or administrative action hereunder for opposition, cancellation,
Co. v Cebu Stevedoring Co. is that these are matters peculiarly within
infringement, unfair competition, or false designation of origin and false
the knowledge of appellants alone, and it would be unfair to impose
description, WON it is licensed to do business in the PH under existing
upon appellees the burden of asserting and proving the contrary. It
laws.
is enough that foreign corporations are allowed by law to seek
redress in our courts under certain conditions: the interpretation of
Section 261 the law should not go so far as to include, in effect, an inference that
Reverse Reciprocity of Foreign Laws. those conditions had been met from the mere fact that the party
Any condition, restriction, limitation, diminution, requirement, penalty or sued is a foreign corporation. It was indeed in the light of this and other
any similar burden imposed by the law of a foreign country on a PH considerations that this Court has seen fit to amend the former rule by
national seeking protection of intellectual property rights in that country, requiring in the revised rules (Section 4, Rule 8).
shall reciprocally be enforceable upon nationals of said country, within
PH jurisdiction.  PUMA V. IAC
FACTS: Petitioner, a foreign corporation (Germany) and the
 LEVITON INDUSTRIES V. SALVADOR manufacturer and producer of "PUMA PRODUCTS," filed a complaint for
FACTS: Private respondent bearing the trademark Leviton and trade infringement of patent or trademark with a prayer for writ of preliminary
name Leviton Manufacturing, a foreign corporation (New York) injunction against the private respondent.
founded in 1906 by Isidor Leviton, is the largest manufacturer of
electrical wiring devices in the US, which various electrical wiring devices RTC – issued TRO restraining private respondent from using the
had been exported to the PH since 1954 trademark "PUMA” or any reproduction, counterfeit copy or colorable
 well known to Filipino consumers due to the widespread use of its imitation thereof, and to withdraw from the market all products bearing
products the same trademark
 since Petitioners began manufacturing and selling electrical ballast, Private Respondent - motion to dismiss on the grounds that the
fuse and oval buzzer under the trademark Leviton and trade petitioners' complaint states no cause of action, petitioner has no legal
name Leviton Industries  even registered with the PH Patent personality to sue, and litis pendentia.
Office the trademarks Leviton Label and Leviton with respect to
ballast and fuse (evidenced by 2 Certificates of Registration) With regard to the petitioner's legal capacity to sue,
 filed a complaint for unfair competition against petitioners CA – held that it had no capacity because it failed to allege reciprocity in
 Invoked Section 21-A of RA 166: “Any foreign corporation or juristic its complaint (2nd requisite)
person to which a mark or tradename has been registered or assigned
under this Act may bring an action hereunder for infringement, for As to private respondent's having no legal personality to sue
unfair competition, or false designation of origin and false description, record discloses that private respondent was suing under Sec. 21-A of RA
whether or not it has been licensed to do business in the PH under Act 166. This is the exception to the general rule that a foreign corporation
numbered 1459, as amended, otherwise known as the Corporation doing business in the PH must secure a license to do business before said
Law, at the time it brings the complaint; Provided, That the country of foreign corporation could maintain a court or administrative suit.
which the said foreign corporation or juristic person is a citizen, or in However, there are some conditions which must be met before that
which it is domiciled, by treaty, convention or law, grants a similar exception could be made to apply, namely:
privilege to corporate or juristic persons of the PH. (c) trademark of the suing corporation must be registered in the
 Aside from damages, also sought the issuance of a writ of injunction Philippines, or that it be the assignee thereof:
to prohibit Petitioners from using the trade name Leviton (d) that there exists a reciprocal treatment to Philippine Corporations
Industries, and the trademark Leviton. either by law or convention by the country of origin of the foreign
corporation (Sec. 21-A Trademark Law).
Petitioners moved to dismiss the complaint on the ground that
Respondent failed to allege its capacity to sue under Section 21-A of Petitioner’s contention: CA erred in holding that: (1) it had no legal
Republic Act No. 166 (eventually denied) capacity to sue; (2) the doctrine of lis pendens is applicable as a ground
for dismissing the case and (3) the writ of injunction was improperly
ISSUE: WON it is mandatory to allege the essential facts bearing upon its issued.
capacity to sue before PH courts (YES)  that although it is not doing business in the PH, the invoked
provision does not mandatorily require that such reciprocity
RULING: Section 21-A of RA 166 grants to a foreign corporation, arrangement be pleaded since such reciprocity is already embodied
WON licensed to do business in the PH, the right to seek redress for in Paris Convention to which both the PH and Germany are
unfair competition before PH courts. But the said law is not without signatories and that since Paris Convention is a treaty which forms
part of the law of the land, our courts are bound to take judicial
qualifications, to wit:
notice of such treaty, and, consequently, this fact need not be
(a) trademark of the suing corporation must be registered in the
averred in the complaint.
PH, or that it be the assignee thereof:
ISSUE: WON petitioner had the legal capacity to file the action (YES)

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RULING: In La Chemise Lacoste, S.A .v. Fernandez: Respondent’s contention: petitioner being a foreign corporation failed to
“Even assuming that petitioner failed to allege capacity to sue, the allege essential facts bearing upon its capacity to sue before PH courts;
petitioner may still maintain the present suit. As early as 1927, this Court not only is the petitioner not doing business in the PH but it also is not
was, and it still is, of the view that a foreign corporation not doing business licensed to do business in the PH
in the PH needs no license to sue before PH courts for infringement of  Cites Leviton Industries v. Salvador: it was not enough for a foreign
trademark and unfair competition.” corporation to merely allege that it is a foreign corporation; it is
necessary for the foreign corporation to comply with other
In Western Equipment and Supply Co. v. Reyes: requirements or aver why it should be exempted from them, if such
“A foreign corporation which has never done any business in the PH and was the case. The foreign corporation may have the right to sue
which is unlicensed and unregistered to do business here, but is widely and before Philippine courts, but our rules on pleadings require that the
favorably known in the PH through the use therein of its products bearing qualifying circumstances necessary for the assertion of such right
its corporate and tradename, has a legal right to maintain an action in the should first be affirmatively pleaded.
PH to restrain the residents and inhabitants thereof from organizing a
corporation therein bearing the same name as the foreign corporation, ISSUE: WON petitioner has capacity to sue before PH courts (YES)
when it appears that they have personal knowledge of the existence of such
a foreign corporation, and it is apparent that the purpose of the proposed RULING: The rules and regulations promulgated by the Board of
domestic corporation is to deal and trade in the same goods as those of the Investments pursuant to its rule-making power under Rule I, Sec. 1 (g) of
foreign corporation.” PD 1789, otherwise known as the Omnibus Investment Code defines
"DOING BUSINESS" as one:
Quoting the Paris Convention and Vanity Fair Mills v. Eaton, Co.: (1) A foreign firm which does business through middlemen acting on
“Petitioner should be given the same treatment in the PH as we make their own names, such as indentors, commercial brokers or
available to our own citizens. We are obligated to assure to nationals of commission merchants, shall not be deemed doing business in the
'countries of the Union' an effective protection against unfair competition PH. But such indentors, commercial brokers or commission
in the same way that they are obligated to similarly protect Filipino citizens merchants shall be the ones deemed to be doing business in the PH.
and firms.” (2) Appointing a representative or distributor who is domiciled in the
PH, unless said representative or distributor has an independent
In Cerverse Rubber Corp. V. Universal Rubber Products, the Court status, i.e., it transacts business in its name and for its account, and
likewise re-aafirmed its adherence to the Paris Convention. not in the name or for the account of a principal Thus, where a
foreign firm is represented by a person or local company which does
The OBJECT of the Convention is to accord a national of a member not act in its name but in the name of the foreign firm the latter is
nation extensive protection 'against infringement and other types of doing business in the Philippines.
unfair competition
Applying the above provisions to the facts of this case, we find and
Pursuant to our obligation in recognizing our duties and the rights of conclude that the petitioner is not doing business in the PH. Rustan is
foreign states under the Paris Convention for the Protection of Industrial actually a middleman acting and transacting business in its own name
Property to which the PH and France are parties, the Ministry of Trade and or its own account and not in the name or for the account of the
issued a memo addressed to the Director of the Patents Office directing petitioner.
the latter:
“To reject all pending applications for PH registration of signature and But even assuming the truth of the private respondent's allegation
other world famous trademarks by applicants other than its original that the petitioner failed to allege material facts in its petition
owners or users. relative to capacity to sue, the petitioner may still maintain the
present suit against respondent
The conflicting claims over internationally known trademarks involve such
name brands as Lacoste, Jordache, Gloria Vanderbilt, Sasson, Fila, Pierre Respondens, as early as 1927, this Court was, and it still is, of the view
Cardin, Gucci, Christian Dior, Oscar de la Renta, Calvin Klein, Givenchy, that a foreign corporation not doing business in the PH needs no license
Ralph Lauren, Geoffrey Beene, Lanvin and Ted Lapidus. to sue before PH courts for infringement of trademark and unfair
competition. Thus, in Western Equipment and Supply Co. v. Reyes, this
In cases where warranted, PH registrants of such trademarks should be Court held that a PH corporation which has never done any business in
asked to surrender their certificates of registration, if any, to avoid suits for the PH and which is unlicensed and unregistered to do business here, but
damages and other legal action by the trademarks’ foreign or local owners is widely and favorably known in the PH through the use therein of its
or original users.” products bearing its corporate and tradename, has a legal right to
maintain an action in the PH to restrain the residents and inhabitants
 LA CHEMISE LACOSTE V. FERNANDEZ* thereof from organizing a corporation therein bearing the same name as
FACTS: Petitioner La Chemise Lacoste is a foreign corporation (France) the foreign corporation, when it appears that they have personal
is a well known European manufacturer of clothings and sporting knowledge of the existence of such a foreign corporation, and it is
apparels sold in the international market and bearing the trademarks apparent that the purpose of the proposed domestic corporation is to
‘Lacoste,’ ‘Chemise Lacoste,’ AND ‘Crocodile Device’ deal and trade in the same goods as those of the foreign corporation.
 undeniable from the records that it is the actual owner of the
abovementioned trademarks which have been marketed in the PH Pursuant to our obligation in recognizing our duties and the rights of
since 1964,. foreign states under the Paris Convention for the Protection of Industrial
Property to which the PH and France are parties, the Ministry of Trade
Respondent Hemadas & Co., a domestic firm, applied and was granted issued a memo addressed to the Director of the Patents Office directing
registration of the mark ‘Chemise Lacoste and Crocodile Device’ for its the latter:
t-shirts, sportswear and other garment products. “To reject all pending applications for PH registration of signature and
other world famous trademarks by applicants other than its original
Petitioner applied for the registration of its mark ‘Crocodile Device’ and owners or users.
‘Lacoste’
 Respondent opposed, its main basis is its claim of alleged prior The conflicting claims over internationally known trademarks involve such
registration name brands as Lacoste, Jordache, Gloria Vanderbilt, Sasson, Fila, Pierre
 Prompted to file a letter-complaint of unfair competition before Cardin, Gucci, Christian Dior, Oscar de la Renta, Calvin Klein, Givenchy,
the NBI which led to the issuance of search warrants and the seizure Ralph Lauren, Geoffrey Beene, Lanvin and Ted Lapidus.
of goods of respondent.
 Respondent moved to quash the warrants alleging that its In cases where warranted, PH registrants of such trademarks should be
trademark was different from petitioner’s trademark  granted asked to surrender their certificates of registration, if any, to avoid suits for

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 Atty. Mark Del Rosario
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damages and other legal action by the trademarks’ foreign or local owners shall prevent its cancellation or removal in respect of all other goods or
or original users.” services of the same class.

The IAC, in the La Chemise Lacoste S.A. v. Sadhwani sustained the power 152.4. The use of a mark by a company related with the registrant or
of the Minister of Trade to issue the implementing memo and declared La applicant shall inure to the latter’s benefit, and such use shall not affect
Chemise Lacoste S.A. the owner of the disputed trademark, stating: “In the validity of such mark or of its registration: Provided, That such mark
the case at bar, the Minister of Trade, as ‘the competent authority of is not used in such manner as to deceive the public. If use of a mark by a
the country of registration,’ has found that among other well-known person is controlled by the registrant or applicant with respect to the
trademarks ‘Lacoste’ is the subject of conflicting claims. For this reason, nature and quality of the goods or services, such use shall inure to the
applications for its registration must be rejected or refused, pursuant to benefit of the registrant or applicant.
the treaty obligation of the PH.”
Section 153
A.M. No. 103-10-SC Requirements of Petition; Notice and Hearing.
Rules of Procedure for Intellectual Property Rights Cases 
Insofar as applicable, the petition for cancellation shall be in the same
Note: Too long, will wait for Atty’s discussion on the important
form as that provided in Section 134 hereof, and notice and hearing shall
provisions.
be as provided in Section 135 hereof.
1. ADMINISTRATIVE
a) CANCELLATION PROCEEDINGS Section 154
Section 151 Cancellation of Registration.
Cancellation If the Bureau of Legal Affairs finds that a case for cancellation has been
151.1. A petition to cancel a registration of a mark under this Act may be made out, it shall order the cancellation of the registration. When the
filed with the Bureau of Legal Affairs by any person who believes that he order or judgment becomes final, any right conferred by such registration
is or will be damaged by the registration of a mark under this Act as upon the registrant or any person in interest of record shall terminate.
follows: Notice of cancellation shall be published in the IPO Gazette.
(a) Within 5 years from the date of the registration of the mark under
this Act. Section 230
(b) At any time, if the registered mark becomes the generic name for the Equitable Principles to Govern Proceedings.
goods or services, or a portion thereof, for which it is registered, or In all inter partes proceedings in the Office under this Act, the equitable
has been abandoned, or its registration was obtained fraudulently principles of laches, estoppel, and acquiescence where applicable, may be
or contrary to the provisions of this Act, or if the registered mark is considered and applied.
being used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in connection  ROMERO V. MAIDEN FORM
with which the mark is used. If the registered mark becomes the FACTS: Respondent company, a foreign corporation, filed an
generic name for less than all of the goods or services for which it is application for registration (pursuant to Republic Act No. 166) of the
registered, a petition to cancel the registration for only those goods trademark ‘Adagio" for the Brassieres manufactured by it.
or services may be filed. A registered mark shall not be deemed to  alleged that said trademark was first used by it in the US on October
be the generic name of goods or services solely because such mark is 26, 1937, and in the PH on August 31, 1946 for over 10 years
also used as a name of or to identify a unique product or service. The  that said trademark is affixed to the goods by placing thereon a
primary significance of the registered mark to the relevant public woven label on which the trademark is shown.
rather than purchaser motivation shall be the test for determining  approved for publication in the OG Eventually, certificate of
whether the registered mark has become the generic name of goods registration was issued
or services on or in connection with which it has been used.
(c) At any time, if the registered owner of the mark without legitimate Petitioner filed a petition for cancellation on several grounds, but
reason fails to use the mark within the PH, or to cause it to be used relevant to our discussion is Petitioner’s contention that the application
in the PH by virtue of a license during an uninterrupted period of 3 for its registration was not filed in accordance with the provisions of
years or longer. Section 37, Chapter XI of the same Act.
151.2. Notwithstanding the foregoing provisions, the court or the Director – Dismissed; AND registered the trademark in question
administrative agency vested with jurisdiction to hear and adjudicate any Petitioner - MR  denied  appealed
action to enforce the rights to a registered mark shall likewise exercise
jurisdiction to determine whether the registration of said mark may be Petitioner’s contention:
cancelled in accordance with this Act. The filing of a suit to enforce the (1) that when the Government imposed restrictions on importations of
registered mark with the proper court or agency shall exclude any other brassieres bearing that particular trademark, there was
court or agency from assuming jurisdiction over a subsequently filed abandonment of the same by respondent company which entitled
petition to cancel the same mark. On the other hand, the earlier filing of petitioner to adopt it for his own use and which in fact he had been
petition to cancel the mark with the Bureau of Legal Affairs shall not using for a number of years.
constitute a prejudicial question that must be resolved before an action to (2) that respondent Director erred in registering the trademark in
enforce the rights to same registered mark may be decided. question, despite appellee’s non-compliance with Section 37,
paragraphs 1 and 4(a) of Republic Act No. 166.  This contention
Section 152 flows from a misconception of the application for the registration of
Non-use of a Mark When Excused. trademark of respondent company
152.1. Non-use of a mark may be excused if caused by circumstances
arising independently of the will of the trademark owner. Lack of funds ISSUE: WON there was abandonment (NONE)
shall not excuse non-use of a mark.
WON respondent Director erred in registering the trademark in question,
152.2. The use of the mark in a form different from the form in which it is despite appellee’s non-compliance with Section 37, paragraphs 1 and 4(a)
registered, which does not alter its distinctive character, shall not be of Republic Act No. 166 (NO)
ground for cancellation or removal of the mark and shall not diminish the
protection granted to the mark. RULING:
(1) the trademark "Adagio" was first used exlusively in the Philippines
152.3. The use of a mark in connection with one or more of the goods or by appellee in the year 1932. There being no evidence of use of the
services belonging to the class in respect of which the mark is registered mark by others before 1932, or that appellee abandoned use
thereof, the registration of the mark was made in accordance with

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the Trademark Law. Granting that appellant used the mark when (1) PLANTERS cannot be considered as the dominant feature of the
appellee stopped using it during the period of time that the trademarks in question because it is a mere descriptive term, an
Government imposed restrictions on importation of respondent's ordinary word which is defined in Webster International Dictionary
brassiere being the trademark, such temporary non-use did not as "one who or that which plants or sows, a farmer or an
affect the rights of appellee because it was occasioned by agriculturist."
government restrictions and was not permanent, intentional, and (2) respondent Director should not have based his decision simply on
voluntary. the use of the term PLANTERS, and that what he should have
resolved is whether there is a confusing similarity in the trademarks
To work an abandonment, the disuse must be permanent and of the parties.
not ephemeral; it must, be intentional and voluntary, and not
involuntary or even compulsory. There must be a thoroughgoing ISSUE: WON the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"
discontinuance of any trade-mark use of the mark in question. The used by Petitioner on its label for salted peanuts confusingly similar to
use of the trademark by other manufacturers did not indicate an the trademark "PLANTERS COCKTAIL PEANUTS" used by Respondent so
intention on the part of appellee to abandon it. as to constitute an infringement of the latter's trademark rights and
justify its cancellation? (YES)
(2) Section 37 of Republic Act No. 166 can be availed of only where
the PH is a party to an international convention or treaty RULING:
relating to trademarks, in which case the trade-mark sought to Section 4. x x x The owner of a trade-mark, trade-name or service-mark
be registered need not be in use in the PH. used to distinguish his goods, business or services from the goods,
business or services of others shall have the right to register the same on
Director of Patents through Circular Release No. 8 stated that the principal register, unless it:
"Trademark rights in the PH, without actual use of the trademark, in (d) Consists of or comprises a mark or trade-name which so resembles a
this country can, of course, be created artificially by means of a mark or trade-name registered in the PH or a mark or trade-name
treaty or convention with another country or countries. Section 37 previously used in the PH by another and not abandoned, as to be likely,
envisions the eventual entrance of the PH into such convention or when applied to or used in connection with the goods, business or
treaty. It is provided in said section that applications filed services of the applicant, to cause confusion or mistake or to deceive
thereunder need not allege use in the PH of the trademark sought to purchasers;
be registered. The PH has, however, not yet entered into any such
treaty or convention and, until she does, actual use in the PH of the Section 17. Grounds for cancellation — Any person, who believes that he
trademark sought to be registered and allegation in the application is or will be damaged by the registration of a mark or trade-name, may,
of such fact, will be required in all applications for original or upon the payment of the prescribed fee, apply to cancel said registration
renewal registration submitted to the PH Patent Office." upon any of the following grounds:
(c) That the registration was obtained fraudulently or contrary to the
 PH NUT INDUSTRY V. STANDARD BRANDS INC. provisions of section 4
FACTS: Petitioner Philippine Nut, a domestic corporation, obtained a
Certificate of Registration covering the trademark "PHILIPPINE (Under Section 22) It has been consistently held that there is
PLANTERS CORDIAL PEANUTS," the label used on its product of salted infringement when the use of the mark involved would be likely to cause
peanuts. confusion or mistake in the mind of the public or to deceive purchasers as
to the origin or source of the commodity; that whether or not a
Respondents Standard Brands, a foreign corporation, filed for the trademark causes confusion and is likely to deceive the public is a
cancellation of certificate of registration question of fact which is to be resolved by applying the "test of
 Alleging that “the registrant was not entitled to register the mark at dominancy", meaning, if the competing trademark contains the main or
the time of its application for registration thereof" for the reason essential or dominant features of another by reason of which confusion
that Standard Brands is the owner of the trademark "PLANTERS and deception are likely to result, then infringement takes pIace; that
COCKTAIL PEANUTS" covered by a Certificate of Registration duplication or imitation is not necessary, a similarity in the dominant
 that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL features of the trademarks would be sufficient.
PEANUTS" closely resembles and is confusingly similar to its
trademark "PLANTERS COCKTAIL PEANUTS" used also on salted On 1st contention:
peanuts, and that the registration of the former is likely to deceive While it is true that PLANTERS is an ordinary word, nevertheless it is
the buying public and cause damage to it. used in the labels not to describe the nature of the product, but to project
the source or origin of the salted peanuts contained in the cans. The word
Petitioner filed its answer invoking the special defense that its registered PLANTERS printed across the upper portion of the label in bold letters
label is not confusingly similar to that of Respondent’s easily attracts and catches the eye of the ordinary consumer and it is that
word and none other that sticks in his mind when he thinks of salted
At the hearing , the pertinent agreements contained were: peanuts.
(1) that Respondent is the present owner of the trademark "PLANTERS
COCKTAIL PEANUTS" In cases of this nature there can be no better evidence as to what is the
(2) Respondent’s trademark was first used in commerce in the PH in dominant feature of a label and as to whether there is a confusing
December, 1938 similarity in the contesting trademarks than the labels themselves. A
(3) That Petitioner’s trademark was first used only on December 20, visual and graphic presentation of the labels will constitute the best
1958 and registered with the Patent Office on August 10, 1961. argument for one or the other, hence, we are reproducing hereunder a
picture of the cans of salted peanuts of the parties to the case.
Director - cancelled Petitioner's Certificate of Registration
It is true that there are other words used such as "Cordial" in petitioner's
 that in the labels using the 2 trademarks in question, the dominant
can and "Cocktail" in Standard Brands', which are also prominently
part is the word "Planters", displayed "in a very similar manner" so
displayed, but these words are mere adjectives describing the type of
much so that "as to appearance and general impression" there is "a
peanuts in the labeled containers and are not sufficient to warn the
very confusing similarity,"
unwary customer that the two products come form distinct sources. As a
 concluded that Petitioner "was not entitled to register the mark at
whole it is the word PLANTERS which draws the attention of the buyer
the time of its filing the application for registration" as Respondent
and leads him to conclude that the salted peanuts contained in the two
will be damaged by the registration of the same.
cans originate from one and the same manufacturer. In fact, when a
housewife sends her housemaid to the market to buy canned salted
Petitioner – MR  denied  present review of said decision.
peanuts, she will describe the brand she wants by using the word
PLANTERS and not "Cordial" nor "Cocktail".
Petitioner’s contention:

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On 2nd contention: application and registration barred its own "'W" mark application
It is quite obvious from the record, that Director's decision is based not and registration for use on real estate.
only on the fact that petitioner herein adopted the same dominant mark
of Standard Brands, that is, the word PLANTERS, but that it also used in Respondent denied having abandoned the subject mark on the ground of
its label the same coloring scheme of gold, blue, and white, and basically non-use, asserting that it filed with the Director of Trademarks a
the same lay-out of words such as "salted peanuts" and "vacuum packed" notarized Declaration of Actual Use with evidence of use on December 2,
with similar type and size of lettering as appearing in Respondent’s own 2008, which was not rejected.
trademark, all of which result in a confusing similarity between the two  argued that it conducts hotel and leisure business both directly and
labels. Thus, the decision states: "Furthermore, as to appearance and indirectly through subsidiaries and franchisees, and operates
general impression of the two trademarks, I find a very confusing interactive websites for its W Hotels in order to accommodate its
similarity." potential clients worldwide.
 apart from viewing agents, discounts, promotions, and other
Referring again to the picture We have reproduced, the striking similarity marketing fields being offered by it, these interactive websites allow
between the two labels is quite evident not only in the common use of Philippine residents to make reservations and bookings, which
PLANTERS but also in the other words employed. As a matter of fact, the presuppose clear and convincing use of the "W'' mark in the PH.
capital letter "C" of petitioner's "Cordial" is alike to the capital "C" of
Standard's "Cocktail", with both words ending with an "1". Bureau of Legal Affairs – ruled in Petitioner’s favor; ordered the
cancellation of Respondent’s registration for the "W" mark
There is good reason for Respondents to ask why the petitioner use the  found that the DAU and the attachments thereto submitted by
word PLANTERS, the same coloring scheme, even almost identical size Respondent did not prove actual use of the "W" mark in the PH,
and contour of the cans, the same lay-out of words on its label when there considering that the "evidences of use" attached to the DAU refer to
is a myriad of other words, colors, phrases, symbols, and arrangements to hotel or establishments that are located abroad. In this regard, the
choose from to distinguish its product from Standard Brands, if petitioner BLA opined that "the use of a trademark as a business tool and as
was not motivated to simulate the label of the latter for its own can of contemplated under Section 151.1 (c) refers to the actual
salted peanuts, and thereby deceive the public. attachment thereof to goods and services that are sold or availed of
and located in the PH
Petitioner contends that there are differences between the two  Respondents appealed
trademarks: IPO – granted; Contrary to the BLA's findings, the IPO DG found that
Petitioner’s Respondent’s Respondent’s submission of its DAU and attachments, coupled by the
the presence of the word stated that the product is acceptance thereof by the IPO Bureau of Trademarks, shows that the "W"
"Philippine" above PLANTERS on manufactured in San Francisco, mark still bears a "registered" status. Therefore, there is a presumption
its label, and other phrases, to wit: California, and on top of the tin can that Respondent sufficiently complied with the registration requirements
"For Quality and Price, Its Your is printed "Mr. Peanut" and the for its mark.
Outstanding Buy", the address of representation of a "humanized  likewise held that the absence of any hotel or establishment owned
the manufacturer in Quezon City, peanut". by Respondent in the PH bearing the "W" mark should not be
etc., plus a pictorial representation equated to the absence of its use in the country, opining that
of peanuts overflowing from a tin Respondent’s pieces of evidence, particularly its interactive website,
can indicate actual use in the PH
 Petitioner – Petition for review
We have taken note of those alleged differences but We find them  CA – affirmed  MR  denied  present petition
insignificant in the sense that they are not sufficient to call the attention
of the ordinary buyer that the labeled cans come from distinct and ISSUE: WON the CA correctly affirmed the IPO’s dismissal of Petitioner's
separate sources. The word "Philippine" printed in small type in Petition for Cancellation of Respondent’s "W'' mark. (YES)
petitioner's label may simply give to the purchaser the impression that
that particular can of PLANTERS salted peanuts is locally produced or RULING:
canned but that what he is buying is still PLANTERS canned salted Note: Italicized part is not that important.
peanuts and nothing else. The actual use of the mark representing the goods or services introduced
and transacted in commerce over a period of time creates that goodwill
As regards "Mr. Peanut" on Standard Brands' label, the same appears which the law seeks to protect. For this reason, the IP Code, under Section
on the top cover and is not visible when the cans are displayed on the 124.2,54 requires the registrant or owner of a registered mark to declare
shelves, aside from the fact that the figure of "Mr. Peanut" is printed on "actual use of the mark" and present evidence of such use within the
the tin cover which is thrown away after opening the can, leaving no prescribed period. Failing in which, the IPO may cause the removal from the
lasting impression on the consumer. It is also for this reason that We do register of the mark's registration. Also, any person, believing that "he or
not agree with petitioner that it is "Mr. Peanut and the Humanized she will be damaged by the registration of a mark," which has not been
Peanut" which is the trademark of Standard Brands salted peanuts, it used within the Philippines, may file a petition for cancellation. Following
being a mere descriptive pictorial representation of a peanut not the basic rule that he who alleges must prove his case, the burden lies on
prominently displayed on the very body of the label covering the can, the petitioner to show damage and non-use.
unlike the term PLANTERS which dominates the label.
As modes of advertising and acquisition have now permeated into virtual
 W LAND HOLDINGS, INC. V. STARWOOD HOTELS (2017) zones over cyberspace, the concept of commercial goodwill has indeed
FACTS: (December 2, 2005) Respondent Starwood filed an application evolved: Goodwill is no longer confined to the territory of actual market
for registration of the trademark "W"  granted. (February 26, 2007) penetration; it extends to zones where the marked article has been fixed
in the public mind through advertising.
Petitioner W Land applied for the registration of its own "W" 
opposed by Respondent (April 20, 2006) Therefore, the court agrees that the use of a registered mark representing
the owner's goods or services by means of an interactive website may
Bureau of Legal Affairs -found merit in Respondent’s opposition, ruling constitute proof of actual use that is sufficient to maintain the registration
that W Land's "W" mark is confusingly similar with Respondent’s mark, of the same. Multitudinous commercial transactions are accessed,
which had an earlier filing date. brokered, and consummated everyday over websites. These websites
Petitioner – MR  denied carry the mark which represents the goods or services sought to be
 3 years later, Petitioner filed a Petition for Cancellation of transacted. The mark displayed over the website no less serves its
Respondent’s mark for non-use under Section 151.119 functions of indicating the goods or services' origin and symbolizing the
 claiming that Respondent has failed to use its mark in the PH owner's goodwill than a mark displayed in the physical market.
because it has no hotel or establishment in the ph rendering the
services covered by its registration; and that Starwood's "W" mark

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It must be emphasized, however, that the mere exhibition of goods the ground that the same was illegally and fraudulently obtained and
or services over the internet, without more, is not enough to appropriated for the latter's restaurant business.
constitute actual use. To reiterate, the "USE" contemplated by law is  alleged that it is the legal and beneficial owners of the subject mark
genuine use - that is, a bona fide kind of use tending towards a and logo; that it has been using the said mark and logo for its
commercial transaction in the ordinary course of trade. It must be shown corporate affairs and business since March 1962 and caused the
that the owner has actually transacted, or at the very least, intentionally same to be specially designed for their international hotels in 1975,
targeted customers. Otherwise, an unscrupulous registrant would be able much earlier than the alleged first use thereof by the Developers
to maintain his mark by the mere expedient of setting up a website, or by Group in 1982.
posting his goods or services on another's site, although no commercial  Likewise, it filed its own application for registration of the subject
activity is intended to be pursued in the PH. This type of token use mark and logo to which Respondents opposed.
renders inutile the commercial purpose of the mark, and hence, negates
the reason to keep its registration active. Almost 3 years later, Private Respondents instituted a complaint for
infringement and damages with prayer for injunction.
As the IP Code expressly requires, the use of the mark must be "within
the Philippines." In this case, Starwood has proven that it owns Petitioner moved for the suspension of the proceedings in the
Philippine registered domain names, i.e., www.whotels.ph, infringement case on account of the pendency of the administrative
www.wreservations.ph, www.whotel.ph, www.wreservation.ph, for its proceedings  denied by RTC  MR and Motion to Inhibit  both denied
website that showcase its mark. The website is readily accessible to PH  petition for certiorari  dismissed  MR  denied on the ground that
citizens and residents, where they can book amenities and other services the same presented no new matter that warranted consideration.
in any of Starwood's W Hotels worldwide. Its website also readily
provides a phone number for Philippine consumers to call for Meanwhile, Private Respondents filed in Inter Partes an Urgent Motion
information or other concerns. The website further uses the English to Suspend Proceedings, invoking the pendency of the infringement
language - considered as an official language in this country - which the case  denied  MR  denied  petition for certiorari, mandamus and
relevant market in the Philippines understands and often uses in the daily prohibition  dismissed for lack of merit
conduct of affairs. In addition, the prices for its hotel accommodations
and/or services can be converted into the local currency or the Philippine ISSUES:
Peso. Amidst all of these features, Starwood's "W" mark is prominently 1. the issue raised before the BPTTT is quite different from that raised
displayed in the website through which consumers in the Philippines can in the trial court. The issue raised before the BPTTT was WON the
instantaneously book and pay for their accommodations, with immediate mark registered by Developers Group is subject to cancellation,
confirmation, in any of its W Hotels. Furthermore, it has presented data as the Shangri-La Group claims prior ownership of the disputed
showing a considerably growing number of internet users in the mark. (NO)
Philippines visiting its website since 2003, which is enough to conclude With the decision of the Regional Trial Court upholding the validity of the
that Starwood has established commercially-motivated relationships registration of the service mark "Shangri-La" and "S" logo in the name of
with Philippine consumers. Developers Group, the cancellation case filed with the Bureau hence
becomes moot. To allow the Bureau to proceed with the cancellation case
Taken together, these facts and circumstances show that Starwood's use would lead to a possible result contradictory to that which the RTC has
of its "W" mark through its interactive website is intended to produce a rendered, albeit the same is still on appeal. Such a situation is certainly
discernable commercial effect or activity within the Philippines, or at the not in accord with the orderly administration of justice. In any event, the
very least, seeks to establish commercial interaction with local CA has the competence and jurisdiction to resolve the merits of the said
consumers. Accordingly, Starwood's use of the "W" mark in its RTC decision.
reservation services through its website constitutes use of the mark
sufficient to keep its registration in force. 2. WON despite the institution of an Inter Partes case for cancellation
of a mark with the BPTTT by one party, the adverse party can file a
 ANCHOR TRADING CO. V. DIRECTOR OF PATENTS subsequent action for infringement with the regular courts of justice
Note: Apparently, this is the full case; found in ESCRA. in connection with the same registered mark (YES)
FACTS: The present case is an appeal from the decision of the Director of Section 151.2. x x x earlier filing of petition to cancel the mark with the
Patents ordering the cancellation of Certificate of Registration No. 3739 Bureau of Legal Affairs shall not constitute a prejudicial question that
issued in favor of petitioner for the use of the trademark in question. must be resolved before an action to enforce the rights to same registered
 Respondent failed to register his opposition to the petition for mark may be decided.
registration in due time. Petitioner contends that
 Petitioner contends that this should estop Respondent from asking Rule 8, Section 7, of the Regulations on Inter Partes Proceedings: x x x
for the cancellation of the certificate of registration issued in favor of earlier filing of petition to cancel the mark with the Bureau shall not
petitioner-appellant constitute a prejudicial question that must be resolved before an action to
enforce the rights to same registered mark may be decided.
ISSUE: WON the failure of respondent to register his opposition to the
petition for registration in due time estops him from asking for the Hence, as applied in the case at bar, the earlier institution of an Inter
cancellation of the certificate of registration issued in favor of petitioner- Partes case by the Shangri-La Group for the cancellation of the "Shangri-
appellant. (NO) La" mark and "S" device/logo with the BPTTT cannot effectively bar the
subsequent filing of an infringement case by registrant Developers Group.
RULING: The only consequence resulting from a late filing of an The law and the rules are explicit.
opposition to any application for registration of a trademark is the
oppositor's relinquishment of the privilege given to him by laws to The RATIONALE is plain: Certificate of Registration, upon which the
object to such registration, but such cannot prevent him from asking infringement case is based, remains valid and subsisting for as long
later for its cancellation when in his opinion there are good grounds as it has not been cancelled. As such, Developers Group's Certificate of
justifying it (Section 17, Republic Act No. 166). Registration in the principal register continues as "prima facie evidence
of the validity of the registration, the registrant's ownership of the mark
Judgment appealed from affirmed, without pronouncement as to costs. or trade-name, and of the registrant's exclusive right to use the same in
connection with the goods, business or services specified in the
 SHANGRILA V. CA (1999) certificate." Since the certificate still subsists, Developers Group may thus
FACTS: Petitioner Shangri-La International Hotel Management, Ltd., file a corresponding infringement suit and recover damages from any
Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and person who infringes upon the former's rights. The infringement case
Kuok Philippine Properties, Inc. (hereinafter collectively referred as can and should proceed independently from the cancellation case
the "Shangri-La Group"), filed a petition praying for the cancellation of with the Bureau so as to afford the owner of certificates of
the registration of the "Shangri-La" mark and "S" device/logo issued registration redress and injunctive writs. In the same light, so must
to the Private Respondents Developers Group of Companies, Inc., on

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MACALE 2020 INTELLECTUAL PROPERTY LAW

the cancellation case with the BPTTT continue independently from 3. Petitioner agrees that it will return back the abovementioned
the infringement case so as to determine whether a registered mark trademarks to Respondent without hesitation at the request of
may ultimately be cancelled. However, the Regional Trial Court, in Respondent at any time. Respondent agrees that the cost for the
granting redress in favor of Developers Group, went further and upheld concerned assignment of the abovementioned trademarks shall be
the validity and preference of the latter's registration over that of the compensated by Respondent.
Shangri-La Group. 4. Petitioner agrees that the abovementioned trademarks when
requested by Respondent shall be clean and without any incumbency.
WHEREFORE, in view of the foregoing, judgment is hereby rendered 5. Petitioner agrees that after the assignment of the abovementioned
dismissing G.R. No. 111580 for being moot and academic, and ordering trademarks, it shall have no right to reassign or license the said
the BLA, IPO, to suspend further proceedings in Inter Partes Case, to trademarks to any other parties except Respondent.
await the final outcome of the appeal in the Civil Case.
Prior to and during the pendency of the infringement and unfair
 SUPERIOR COMMERCIAL ENTERPRISES S. KUNNAN competition case, Respondent filed separate Petitions for the
ENTERPRISES (2010) Cancellation of Registration Trademark on the ground that Petitioner
FACTS: Petitioner filed a complaint for trademark infringement and fraudulently registered and appropriated the disputed trademarks; as
unfair competition with preliminary injunction. mere distributor and not as lawful owner, it obtained the registrations
 claimed to be the owner of the trademarks, trading styles, company and assignments of the disputed trademarks in violation of the terms of
names and business names “KENNEX”, “KENNEX & DEVICE”, “PRO the Distributorship Agreement and Sections 2-A and 17 of RA 166.
KENNEX” and “PRO-KENNEX
 also asserted its prior use of these trademarks, presenting as Upon the termination of its distributorship agreement, Respondent
evidence of ownership the Principal and Supplemental Registrations appointed SPORTS CONCEPT as its new distributor.
of these trademarks in its name.  also caused the publication of a Notice and Warning in the Manila
 also alleged that it extensively sold and advertised sporting goods Bulletin’s, stating that (1) it is the owner of the disputed
and products covered by its trademark registrations . trademarks; (2) it terminated its Distributorship Agreement with
 presented as evidence of its ownership of the disputed trademarks Petitioner; and (3) it appointed SPORTS CONCEPT as its exclusive
the preambular clause of the Distributorship Agreement it distributor.
executed with Respondent, which states:  This notice prompted Petitioner to file its Complaint for
Whereas, Respondent intends to acquire the ownership of KENNEX Infringement of Trademark and Unfair Competition with
trademark registered by Petitioner in the PH. Whereas, Petitioner is Preliminary Injunction against Respondent.
desirous of having been appointed as the sole distributor by Respondent in
the territory of the PH.” RTC – favored petitioner and held respondent liable for trademark
infringement and unfair competition; also issued a writ of preliminary
Respondent, as defense, disputed Petitioner’s claim of ownership injunction enjoining KUNNAN and SPORTS CONCEPT from using the
 that Petitioner as mere distributor fraudulently registered the disputed trademarks.
trademarks in its name. CA – reversed on the ground that Petitioner failed to establish by
 alleged that its enterprise (KUNNAN) was incorporated in 1972, preponderance of evidence its claim of ownership over the KENNEX and
under the name KENNEX Sports Corporation for the purpose of PRO KENNEX trademarks; finding the Certificates of Principal and
manufacturing and selling sportswear and sports equipment; Supplemental Registrations and the “whereas clause” of the
 commercially marketed its products in different countries, including Distributorship Agreement insufficient to support Petitioner’s claim of
the PH since 1972. ownership over the disputed trademarks.
 created and first used “PRO KENNEX,” derived from its original
corporate name, as a distinctive trademark for its products in 1976. ISSUE: WON Cancellation Case against Petitioner should be decided with
 also alleged that it registered the “PRO KENNEX” trademark not finality (YES)
only in the PH but also in 31 other countries, and widely promoted WON Respondent committed infringement (NO)
the “KENNEX” and “PRO KENNEX” trademarks through worldwide
advertisements in print media and sponsorships of known tennis RULING:
players. To establish trademark infringement, the following elements must be
 after the expiration of its initial distributorship agreement with proven: (1) the validity of plaintiff’s mark; (2) the plaintiff’s ownership of
another company, it appointed petitioner as its exclusive distributor the mark; and (3) the use of the mark or its colorable imitation by the
in the PH under a new Distributorship Agreement: alleged infringer results in “likelihood of confusion.
Whereas, Respondent intends to acquire ownership of KENNEX trademark
Based on these elements, we find it immediately obvious that the 2nd
registered by the Petitioner in the PH. Whereas, the Petitioner is desirous of
element – the plaintiff’s ownership of the mark – was what the
having been appointed as the sole distributor by Respondent in the
Registration Cancellation Case decided with finality. The validity of the
territory of the PH.
registrations only gave rise to the presumption of, but was not conclusive.
 Even though this Agreement clearly stated that Petitioner was CA was correct in ruling that Petitioner was a mere distributor and could
obligated to assign the ownership of the KENNEX trademark to not have been the owner, and was thus an invalid registrant of the
Respondent, the latter claimed that the Certificate of Registration for the disputed trademarks.
KENNEX trademark remained with Petitioner because its President and
General Manager, misled Respondent’s officers into believing that Moreover, the cancellation of registration of a trademark has the
Respondent was not qualified to hold the same due to the “many effect of depriving the registrant of protection from infringement
requirements set by the PPO” that Respondent could not meet. from the moment judgment or order of cancellation has become
 further asserted that Petitioner deceived it into assigning its final. In the present case, by operation of law, specifically Section 19 of
applications for registration of the “PRO KENNEX” trademark in RA 166, the trademark infringement aspect of Petitioner’s case has been
favor of Petitioner, through another Assignment Agreement rendered moot and academic in view of the finality of the decision in the
1. In consideration of the distributorship relationship between Registration Cancellation Case. In short, Petitioner is left without any
Respondent and Petitioner, Respondent, who is the seller in the cause of action for trademark infringement since the cancellation of
distributorship relationship, agrees to assign the following trademark registration of a trademark deprived it of protection from infringement
applications owned by itself in the PH to Petitioner who is the buyer in from the moment judgment or order of cancellation became final.
the distributorship relationship.
2. Petitioner shall acknowledge that Respondent is still the real and Even assuming that Petitioner’s case for trademark infringement had not
truthful owner of the abovementioned trademarks, and shall agree been rendered moot and academic, there can be no infringement
that it will not use the right of the abovementioned trademarks to do committed by Respondent who was adjudged with finality to be the
anything which is unfavourable or harmful to KUNNAN. rightful owner of the disputed trademarks in the Registration
Cancellation Case. Even prior to the cancellation of the registration of the

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

disputed trademarks, Petitioner — as a mere distributor and not the (ix) Censure; and
owner — cannot assert any protection from trademark infringement as it
had no right in the first place to the registration of the disputed (x) Other analogous penalties or sanctions.
trademarks.

b) INTELLECTUAL PROPERTY RIGHTS VIOLATIONS Section 232

Section 10 (2) Appeals
(a) Exercise original jurisdiction in administrative complaints for 232.1 Appeals from decisions of regular courts shall be governed by the
violations of laws involving intellectual property rights: Provided, Rules of Court. Unless restrained by a higher court, the judgment of the
That its jurisdiction is limited to complaints where the total trial court shall be executory even pending appeal under such terms and
damages claimed are not less than Two hundred thousand pesos conditions as the court may prescribe.
(P200,000): Provided, further, That availment of the provisional
remedies may be granted in accordance with the Rules of Court. The 232.2 Unless expressly provided in this Act or other statutes, appeals
Director of Legal Affairs shall have the power to hold and punish for from decisions of administrative officials shall be provided in the
contempt all those who disregard orders or writs issued in the Regulations.
course of the proceedings. (n)
 IN-N-OUT BURGER V. SEHWANI (2008)
(b) After formal investigation, the Director for Legal Affairs may impose FACTS: Petitioner IN-N-OUT BURGER, INC., a foreign corporation
one (1) or more of the following administrative penalties: (California), is engaged mainly in the restaurant business, but it has
(i) The issuance of a cease and desist order which shall specify the never engaged in business in the PH.
acts that the respondent shall cease and desist from and shall
 California is a signatory to the Convention of Paris and the TRIPS
require him to submit a compliance report within a reasonable
Agreement.
time which shall be fixed in the order;
Respondents Sehwani, Inc. and Benita Frites, Inc. are domestic
(ii) The acceptance of a voluntary assurance of compliance or
corporations.
discontinuance as may be imposed. Such voluntary assurance
 Sometime in 1991, Sehwani filed with the BPTTT an application for
may include one or more of the following:
the registration of the mark “IN N OUT (the inside of the letter “O”
(1) An assurance to comply with the provisions of the
formed like a star).  approved and a certificate of registration was
intellectual property law violated;
issued (1993)
(2) An assurance to refrain from engaging in unlawful and
 In 2000, Sehwani, Inc. and Benita Frites, Inc. entered into a
unfair acts and practices subject of the formal
Licensing Agreement, wherein the former entitled the latter to use
investigation;
its registered mark,
(3) An assurance to recall, replace, repair, or refund the
money value of defective goods distributed in commerce;
Sometime in 1997, Petitioner In-N-Out Burger filed trademark and
and
service mark applications with the Bureau of Trademarks for the “IN-
(4) An assurance to reimburse the complainant the expenses
N-OUT” and “IN-N-OUT Burger & Arrow Design.
and costs incurred in prosecuting the case in the Bureau
of Legal Affairs.  3 years later, it found out that Respondent had already obtained
The Director of Legal Affairs may also require the respondent Trademark Registration
to submit periodic compliance reports and file a bond to  In the same year, it sent a demand letter directing Respondent to
guarantee compliance of his undertaking; cease and desist from claiming ownership of the mark “IN-N-OUT”
AND to voluntarily cancel its trademark registration.  Sehwani
(iii) The condemnation or seizure of products which are subject of did not accede but it expressed its willingness to surrender its
the offense. The goods seized hereunder shall be disposed of in registration for a consideration.
such manner as may be deemed appropriate by the Director of  A year later, it filed before the Bureau of Legal Affairs an
Legal Affairs, such as by sale, donation to distressed local administrative complaint Respondents for unfair competition
governments or to charitable or relief institutions, exportation, AND cancellation of trademark registration.
recycling into other goods, or any combination thereof, under
such guidelines as he may provide; ISSUE: WON the IPO (an administrative body) has jurisdiction of cases
involving provisions of the IPC (YES)
(iv) The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the RULING: Section 10 specifically identifies the functions of the Bureau of
offense; Legal Affairs, thus:
Section 10.
(v) fines in such amount as deemed reasonable by the Director of 10.1 Hear and decide opposition to the application for registration of
Legal Affairs, which shall in no case be less than Five thousand marks; cancellation of trademarks; subject to the provisions of Section 64,
pesos (P5,000) nor more than One hundred fifty thousand cancellation of patents and utility models, and industrial designs; and
pesos (P150,000). In addition, an additional fine of not more petitions for compulsory licensing of patents;
than One thousand pesos (P1,000) shall be imposed for each 10.2 (a) Exercise original jurisdiction in administrative complaints for
day of continuing violation; violations of laws involving intellectual property rights; Provided, That its
jurisdiction is limited to complaints where the total damages claimed are
(vi) The cancellation of any permit, license, authority, or not less than P200,000: Provided, futher, That availment of the
registration which may have been granted by the Office, or the provisional remedies may be granted in accordance with the Rules of
suspension of the validity thereof for such period of time as the Court. Xxx
Director of Legal Affairs may deem reasonable which shall not (vi) The cancellation of any permit, license, authority, or registration
exceed one (1) year; which may have been granted by the Office, or the suspension of the
validity thereof for such period of time as the Director of Legal Affairs
(vii) The withholding of any permit, license, authority, or may deem reasonable which shall not exceed 1 year;
registration which is being secured by the respondent from the (viii) The assessment of damages;
Office;
While Section 163 thereof vests in civil courts jurisdiction over cases
(viii) The assessment of damages; of unfair competition, nothing in the said section states that the
regular courts have sole jurisdiction over unfair competition cases,

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

to the exclusion of administrative bodies. Sections 160 and 170,

recognize the concurrent jurisdiction of civil courts and the IPO over
unfair competition cases.These two provisions read:

Section 160. Right of Foreign Corporation to Sue in Trademark or Service

Mark Enforcement Action. Any foreign national or juridical person who
meets the requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil or administrative action
hereunder for opposition, cancellation, infringement, unfair competition,
or false designation of origin and false description, whether or not it is
licensed to do business in the Philippines under existing laws.

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, Section168, and Subsection169.1.

Based on the foregoing discussion, the IPO Director of Legal Affairs had
jurisdiction to decide the petitioner’s administrative case against
respondents and the IPO Director General had exclusive jurisdiction over
the appeal of the judgment of the IPO Director of Legal Affairs.

On unfair competition. (It exists)

The evidence on record shows that Respondents were not using their
registered trademark but that of In-n-Out Burger. Respondents are also
giving their products the general appearance that would likely influence
the purchasers to believe that their products are that of In-N-Out Burger.
The intention to deceive may be inferred from the similarity of the goods
as packed and offered for sale, and, thus, an action will lie to restrain
unfair competition. The respondents’ frauduulent intention to deceive
purchasers is also apparent in their use of the In-N-Out Burger in
business signages.

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.

c) PROHIBITION OF IMPORTATION
Section 166
Goods Bearing Infringing Marks or Trade Names
No article of imported merchandise which shall copy or simulate the
name of any domestic product, or manufacturer, or dealer, or which shall
copy or simulate a mark registered in accordance with the provisions of
this Act, or shall bear a mark or trade name calculated to induce the
public to believe that the article is manufactured in the Philippines, or
that it is manufactured in any foreign country or locality other than the
country or locality where it is in fact manufactured, shall be admitted to
entry at any customhouse of the Philippines. In order to aid the officers of
the customs service in enforcing this prohibition, any person who is
entitled to the benefits of this Act, may require that his name and
residence, and the name of the locality in which his goods are
manufactured, a copy of the certificate of registration of his mark or trade
name, to be recorded in books which shall be kept for this purpose in the
Bureau of Customs, under such regulations as the Collector of Customs
with the approval of the Secretary of Finance shall prescribe, and may
furnish to the said Bureau facsimiles of his name, the name of the locality
in which his goods are manufactured, or his registered mark or trade
name, and thereupon the Collector of Customs shall cause one (1) or
more copies of the same to be transmitted to each collector or to other
proper officer of the Bureau of Customs.

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