MIGHTY CORP. vs. E&J GALLO preliminary injunction.

CA likewise dismissed
MIGHTY CORP. vs. E&J GALLO respondent’s petition for review on certiorari.
G.R. NO. 154342
After the trial on the merits, however, the Makati
July 14, 2004
RTC held petitioners liable for committing
PONENTE CORONA; J.
trademark infringement and unfair competition
with respect to the GALLO trademark.
FACTS:
On appeal, the CA affirmed the Makati RTC’s
On March 12, 1993, E. & J. GALLO WINERY and THE decision and subsequently denied petitioner’s
ANDRESONS GROUP, INC (respondents) sued motion for reconsideration.
MIGHTY CORPORATION and LA CAMPANA
ISSUE/S: Whether GALLO cigarettes and GALLO
FABRICA DE TABACO, INC. (petitioners) in the RTC-
wines were identical, similar or related goods for
Makati for trademark and trade name
the reason alone that they were purportedly forms
infringement and unfair competition, with a prayer
of vice.
for damages and preliminary injunction.
RULING: NO.

Wines and cigarettes are not identical, similar,

They claimed that petitioners adopted the Gallo
competing or related goods.
trademark to ride on Gallo Winery’s and Gallo and
Ernest & Julio Gallo trademark’s established In resolving whether goods are related, several
reputation and popularity, thus causing confusion, factors come into play:
deception and mistake on the part of the
purchasing public who had always associated Gallo · the business (and its location) to which the
and Ernest and Julio & Gallo trademarks with Gallo goods belong
Winery’s wines.
· the class of product to which the good
belong

In their answer, petitioners alleged, among other · the product’s quality, quantity, or size,
affirmative defenses that: petitioners Gallo including the nature of the package, wrapper or
cigarettes and Gallo Winery’s wine were totally container
unrelated products. To wit:
· the nature and cost of the articles
1. Gallo Winery’s GALLO trademark registration
· the descriptive properties, physical attributes
certificates covered wines only, and not cigarettes;
or essential characteristics with reference to their
2. GALLO cigarettes and GALLO wines were sold form, composition, texture or quality
through different channels of trade;
· the purpose of the goods
3. the target market of Gallo Winery’s wines was
· whether the article is bought for immediate
the middle or high-income bracket while Gallo
consumption, that is, day-to-day household items
cigarette buyers were farmers, fishermen, laborers
and other low-income workers; · the field of manufacture

4. that the dominant feature of the Gallo cigarette · the conditions under which the article is
was the rooster device with the manufacturer’s usually purchased and
name clearly indicated as MIGHTY CORPORATION,
while in the case of Gallo Winery’s wines, it was · the articles of the trade through which the
the full names of the founders-owners ERNEST & goods flow, how they are distributed, marketed,
JULIO GALLO or just their surname GALLO; displayed and sold.

The Makati RTC denied, for lack of merit, The test of fraudulent simulation is to the
respondent’s prayer for the issuance of a writ of likelihood of the deception of some persons in
some measure acquainted with an established

1
design and desirous of purchasing the commodity behalf of the company, in the filing of criminal, civil
with which that design has been associated. The and administrative complaints, among others. The
simulation, in order to be objectionable, must be Special Power of Attorney was notarized by Nicole
as appears likely to mislead the ordinary intelligent Brown of New York County and certified by
buyer who has a need to supply and is familiar Norman Goodman, County Clerk and Clerk of the
with the article that he seeks to purchase. Supreme Court of the State of New York. Consul
Cecilia B. Rebong of the Consulate General of the
The petitioners are not liable for trademark
Philippines, New York, authenticated the
infringement, unfair competition or damages.
certification. Welts also executed a Complaint-
SASOT V. PEOPLE (CASE DIGEST. G.R. NO. 143193) Affidavit on February 12, 1998, before Notary
Public Nicole J. Brown of the State of New York.
G.R. No. 143193. June 29, 2005 MELBAROSE R.
SASOT and ALLANDALE R. SASOT, petitioners, vs. Thereafter, in a Resolution dated July 15, 1998,
PEOPLE OF THE PHILIPPINES, The Honorable court Prosecution Attorney Aileen Marie S. Gutierrez
of of appeals, and REBECCA G. SALVADOR, recommended the filing of an Information against
Presiding Judge, RTC, Branch 1, Manila, petitioners for violation of Article 189 of the
respondents. AUSTRIA-MARTINEZ, J.: Revised Penal Code.

The case subject of the present special civil action Before arraignment, petitioners filed a Motion to
for certiorari is a criminal prosecution against Quash the Information on the following grounds:
petitioners for unfair competition under Article
I. THAT THE FACTS CHARGED DO NOT CONSTITUTE
189 of the Revised Penal Code, filed before the
AN OFFENSE
Regional Trial Court (RTC) of Manila (Branch 1),
and docketed as Criminal Case No. 98-166147.1 II. AND THIS HONORABLE COURT HAD NO
JURISDICTION OVER THE OFFENSE CHARGED OR
Some time in May 1997, the National Bureau of
THE PERSON OF THE ACCUSED
Investigation (NBI) conducted an investigation
pursuant to a complaint by the NBA Properties, In support of the foregoing, petitioners argue that
Inc., against petitioners for possible violation of the fiscal should have dismissed Welts’s complaint
Article 189 of the Revised Penal Code on unfair because under the rules, the complaint must be
competition. In its Report dated June 4, 1997, the sworn to before the prosecutor and the copy on
NBI stated that NBA Properties, Inc., is a foreign record appears to be only a fax transmittal. They
corporation organized under the laws of the also contend that complainant is a foreign
United States of America, and is the registered corporation not doing business in the Philippines,
owner of NBA trademarks and names of NBA and cannot be protected by Philippine patent laws
basketball teams such as "USA Basketball,"etc. since it is not a registered patentee. Petitioners
These names are used on hosiery, footwear, t- aver that they have been using the business name
shirts, sweatshirts, tank tops, pajamas, sport "ALLANDALE SPORTSLINE, INC." since 1972, and
shirts, and other garment products, which are their designs are original and do not appear to be
allegedly registered with the Bureau of Patents, similar to complainant’s, and they do not use
Trademarks and Technology Transfer. The Report complainant’s logo or design.
further stated that during the investigation, it was
The trial prosecutor of the RTC-Manila (Branch 1),
discovered that petitioners are engaged in the
Jaime M. Guray, filed his Comment/Opposition to
manufacture, printing, sale, and distribution of
the motion to quash, stating that he has the
counterfeit "NBA" garment products. Hence, it
original copy of the complaint, and that
recommended petitioners’ prosecution for unfair
complainant has an attorney-in-fact to represent
competition under Article 189 of the Revised Penal
it. Prosecutor Guray also contended that the State
Code.
is entitled to prosecute the offense even without
In a Special Power of Attorney dated October 7, the participation of the private offended party, as
1997, Rick Welts, as President of NBA Properties, the crime charged is a public crime.
Inc., constituted the law firm of Ortega, Del
ISSUES: 1. WHETHER A FOREIGN CORPORATION
Castillo, Bacorro, Odulio, Calma & Carbonell, as the
NOT ENGAGED AND LICENSE (sic) TO DO BUSINESS
company’s attorney-in-fact, and to act for and on

2
IN THE PHILIPPINES MAY MAINTAIN A CAUSE OF e) That more than one offense is charged except in
ACTION FOR UNFAIR COMPETITION. those cases in which existing laws prescribe a
single punishment for various offenses;
2. WHETHER AN OFFICER OF A FOREIGN
CORPORATION MAY ACT IN BEHALF OF A f) That the criminal action or liability has been
CORPORATION WITHOUT AUTHORITY FROM ITS extinguished;
BOARD OF DIRECTORS.
g) That it contains averments which, if true, would
3. WHETHER A FOREIGN CORPORATION NOT constitute a legal excuse or justification; and
ENGAGED IN BUSINESS AND WHOSE EMBLEM IT
h) That the accused has been previously convicted
SOUGHT TO PROTECT IS NOT IN ACTUAL USE IS
or in jeopardy of being convicted, or acquitted of
ENTITLED TO THE PROTECTION OF THE PHILIPPINE
the offense charged.
LAW.
Nowhere in the foregoing provision is there any
4. WHETHER THE RESPONDENT REGIONAL TRIAL
mention of the defect in the complaint filed before
COURT CORRECTLY ASSUMED JURISDICTION OVER
the fiscal and the complainant’s capacity to sue as
THE CASE AND THE PERSONS OF THE ACCUSED.
grounds for a motion to quash.
5. WHETHER THE COURT OF APPEALS COMMITTED
WANT OF OATH: For another, under Section 3,
GRAVE ABUSE OF DISCRETION AMOUNTING TO
Rule 112 of the 1985 Rules of Criminal Procedure,
LACK OF JURISDICTION WHEN IT DISMISSED THE
a complaint is substantially sufficient if it states the
PETITION.
known address of the respondent, it is
HELD: The petition must be denied. WHEREFORE, accompanied by complainant’s affidavit and his
the petition is DENIED for lack of merit. witnesses and supporting documents, and the
affidavits are sworn to before any fiscal, state
QUASHAL OF INFORMATION: The Supreme Court
prosecutor or government official authorized to
found any justification for the quashal of the
administer oath, or in their absence or
Information filed against petitioners.
unavailability, a notary public who must certify
For one, while petitioners raise in their motion to that he personally examined the affiants and that
quash the grounds that the facts charged do not he is satisfied that they voluntarily executed and
constitute an offense and that the trial court has understood their affidavits. All these have been
no jurisdiction over the offense charged or the duly satisfied in the complaint filed before
person of the accused, their arguments focused on Prosecution Attorney Aileen Marie S. Gutierrez. It
an alleged defect in the complaint filed before the must be noted that even the absence of an oath in
fiscal, complainant’s capacity to sue and the complaint does not necessarily render it
petitioners’ exculpatory defenses against the invalid. Want of oath is a mere defect of form,
crime of unfair competition. which does not affect the substantial rights of the
defendant on the merits.
Section 3, Rule 117 of the 1985 Rules of Criminal
Procedure, which was then in force at the time the PRESUMPTION OF REGULARITY: In this case,
alleged criminal acts were committed, enumerates Welts’s Complaint-Affidavit contains an
the grounds for quashing an information, to wit: acknowledgement by Notary Public Nicole Brown
of the State of New York that the same has been
a) That the facts charged do not constitute an subscribed and sworn to before her on February
offense; 12, 1998, duly authenticated by the Philippine
Consulate. While the copy on record of the
b) That the court trying the case has no jurisdiction
complaint-affidavit appears to be merely a
over the offense charged or the person of the
photocopy thereof, Prosecution Attorney Gutierrez
accused;
stated that complainant’s representative will
c) That the officer who filed the information had present the authenticated notarized original in
no authority to do so; court, and Prosecutor Guray manifested that the
original copy is already on hand. It is apt to state at
d) That it does not conform substantially to the this point that the prosecutor enjoys the legal
prescribed form; presumption of regularity in the performance of

3
his duties and functions, which in turn gives his
report the presumption of accuracy.
FACTS: On December 20, 1991, petitioner Elidad C.
CRIME OF UNFAIR COMPETITION, A PUBLIC Kho filed a complaint for injunction and damages
CRIME: More importantly, the crime of Unfair with a prayer for the issuance of a writ of
Competition punishable under Article 189 of the preliminary injunction, docketed as Civil Case No.
Revised Penal Code is a public crime. It is Q-91-10926, against the respondents Summerville
essentially an act against the State and it is the General Merchandising and Company
latter which principally stands as the injured party. (Summerville, for brevity) and Ang Tiam Chay.
The complainant’s capacity to sue in such case
becomes immaterial.
The petitioner’s complaint alleges that petitioner,
More important is the nature of the case which led
doing business under the name and style of KEC
to this petition. What preceded this petition for
Cosmetics Laboratory, is the registered owner of
certiorari was a letter-complaint filed before the
the copyrights Chin Chun Su and Oval Facial Cream
NBI charging Hemandas with a criminal offense,
Container/Case, as shown by Certificates of
i.e., violation of Article 189 of the Revised Penal
Copyright Registration No. 0-1358 and No. 0-3678;
Code. If prosecution follows after the completion
that she also has patent rights on Chin Chun Su &
of the preliminary investigation being conducted
Device and Chin Chun Su for medicated cream
by the Special Prosecutor the information shall be
after purchasing the same from Quintin Cheng, the
in the name of the People of the Philippines and
registered owner thereof in the Supplemental
no longer the petitioner which is only an aggrieved
Register of the Philippine Patent Office on
party since a criminal offense is essentially an act
February 7, 1980 under Registration Certificate No.
against the State. It is the latter which is principally
4529; that respondent Summerville advertised and
the injured party although there is a private right
sold petitioner’s cream products under the brand
violated. Petitioner's capacity to sue would
name Chin Chun Su, in similar containers that
become, therefore, of not much significance in the
petitioner uses, thereby misleading the public, and
main case. We cannot allow a possible violator of
resulting in the decline in the petitioner’s business
our criminal statutes to escape prosecution upon a
sales and income; and, that the respondents
far-fetched contention that the aggrieved party or
should be enjoined from allegedly infringing on the
victim of a crime has no standing to sue.
copyrights and patents of the petitioner.
In upholding the right of the petitioner to maintain
the present suit before our courts for unfair
competition or infringement of trademarks of a The respondents, on the other hand, alleged as
foreign corporation, we are moreover recognizing their defense that Summerville is the exclusive and
our duties and the rights of foreign states under authorized importer, re-packer and distributor of
the Paris Convention for the Protection of Chin Chun Su products manufactured by Shun Yi
Industrial Property to which the Philippines and Factory of Taiwan; that the said Taiwanese
France are parties. We are simply interpreting and manufacturing company authorized Summerville
enforcing a solemn international commitment of to register its trade name Chin Chun Su Medicated
the Philippines embodied in a multilateral treaty to Cream with the Philippine Patent Office and other
which we are a party and which we entered into appropriate governmental agencies; that KEC
because it is in our national interest to do so. Cosmetics Laboratory of the petitioner obtained
the copyrights through misrepresentation and
KHO V. CA (CASE DIGEST. G.R. NO. 115758)
falsification; and, that the authority of Quintin
CASE DIGEST: 429 Phil. 140. SECOND DIVISION Cheng, assignee of the patent registration
[ G.R. No. 115758, March 19, 2002 ] ELIDAD C. certificate, to distribute and market Chin Chun Su
KHO, DOING BUSINESS UNDER THE NAME AND products in the Philippines had already been
STYLE OF KEC COSMETICS LABORATORY, terminated by the said Taiwanese Manufacturing
PETITIONER, VS. HON. COURT OF APPEALS, Company.
SUMMERVILLE GENERAL MERCHANDISING AND
COMPANY, AND ANG TIAM CHAY, RESPONDENTS.
DE LEON, JR., J.:

4
After due hearing on the application for On June 3, 1994, the Court of Appeals
preliminary injunction, the trial court granted the promulgated a Resolution[8] denying the
same in an Order dated February 10, 1992. Motion petitioner’s motions for reconsideration and for
for reconsideration, denied. contempt of court in CA-G.R. SP No. 27803.

On April 24, 1992, the respondents filed a petition The petitioner faults the appellate court for not
for certiorari with the Court of Appeals, docketed dismissing the petition on the ground of violation
as CA-G.R. SP No. 27803, praying for the of Supreme Court Circular No. 28-91. Also, the
nullification of the said writ of preliminary petitioner contends that the appellate court
injunction issued by the trial court. After the violated Section 6, Rule 9 of the Revised Internal
respondents filed their reply and almost a month Rules of the Court of Appeals when it failed to rule
after petitioner submitted her comment, or on on her motion for reconsideration within ninety
August 14 1992, the latter moved to dismiss the (90) days from the time it is submitted for
petition for violation of Supreme Court Circular resolution. The appellate court ruled only after the
No. 28-91, a circular prohibiting forum shopping. lapse of three hundred fifty-four (354) days, or on
According to the petitioner, the respondents did June 3, 1994. In delaying the resolution thereof,
not state the docket number of the civil case in the the appellate court denied the petitioner’s right to
caption of their petition and, more significantly, seek the timely appellate relief. Finally, petitioner
they did not include therein a certificate of non- describes as arbitrary the denial of her motions for
forum shopping. The respondents opposed the contempt of court against the respondents.
petition and submitted to the appellate court a
ISSUE: [1] Would the copyright and patent over
certificate of non-forum shopping for their
the name and container of a beauty cream product
petition.
entitle the registrant to the use and ownership
On May 24, 1993, the appellate court rendered a over the same to the exclusion of others?
Decision in CA-G.R. SP No. 27803 ruling in favor of
[2] Should an injunctive writ (plus damages) issue?
the respondents.
HELD: We rule in favor of the respondents.
The petitioner filed a motion for reconsideration.
WHEREFORE, the petition is DENIED. The Decision
This she followed with several motions to declare
and Resolution of the Court of Appeals dated May
respondents in contempt of court for publishing
24, 1993 and June 3, 1994, respectively, are
advertisements notifying the public of the
hereby AFFIRMED. With costs against the
promulgation of the assailed decision of the
petitioner.
appellate court and stating that genuine Chin Chun
Su products could be obtained only from Trademark, copyright and patents are different
Summerville General Merchandising and Co. intellectual property rights that cannot be
interchanged with one another. A trademark is any
In the meantime, the trial court went on to hear
visible sign capable of distinguishing the goods
petitioner’s complaint for final injunction and
(trademark) or services (service mark) of an
damages. On October 22, 1993, the trial court
enterprise and shall include a stamped or marked
rendered a Decision[7] barring the petitioner from
container of goods.[12] In relation thereto, a trade
using the trademark Chin Chun Su and upholding
name means the name or designation identifying
the right of the respondents to use the same, but
or distinguishing an enterprise.[13] Meanwhile,
recognizing the copyright of the petitioner over
the scope of a copyright is confined to literary and
the oval shaped container of her beauty cream.
artistic works which are original intellectual
The trial court did not award damages and costs to
creations in the literary and artistic domain
any of the parties but to their respective counsels
protected from the moment of their creation.[14]
were awarded Seventy-Five Thousand Pesos
Patentable inventions, on the other hand, refer to
(P75,000.00) each as attorney’s fees. The
any technical solution of a problem in any field of
petitioner duly appealed the said decision to the
human activity which is new, involves an inventive
Court of Appeals.
step and is industrially applicable.[15]

5
Petitioner has no right to support her claim for the Pearl & Dean (Phil.), Incorporated v. Shoemart,
exclusive use of the subject trade name and its Incorporated, and North Edsa Marketing,
container. The name and container of a beauty Incorporated (CASE DIGEST)
cream product are proper subjects of a trademark
GR No. 148222 15 August 2003
inasmuch as the same falls squarely within its
definition. In order to be entitled to exclusively use
the same in the sale of the beauty cream product,
the user must sufficiently prove that she registered TOPICS: Intellectual Property Law, Copyright,
or used it before anybody else did. The petitioner’s Infringement, Patents
copyright and patent registration of the name and
FACTS:
container would not guarantee her the right to the
exclusive use of the same for the reason that they Pearl and Dean (Phil.), Inc. (PDI) is engaged in the
are not appropriate subjects of the said manufacture of advertising display units simply
intellectual rights. Consequently, a preliminary referred to as light boxes. PDI was able to secure a
injunction order cannot be issued for the reason Certificate of Copyright Registration, the
that the petitioner has not proven that she has a advertising light boxes were marketed under the
clear right over the said name and container to the trademark “Poster Ads”.
exclusion of others, not having proven that she has
registered a trademark thereto or used the same In 1985, PDI negotiated with defendant-appellant
before anyone did. Shoemart, Inc. (SMI) for the lease and installation
of the light boxes in certain SM Makati and SM
FINAL INJUNCTION AND DAMAGES: We cannot Cubao. PDI submitted for signature the contracts
likewise overlook the decision of the trial court in covering both stores, but only the contract for SM
the case for final injunction and damages. The Makati, however, was returned signed. Eventually,
dispositive portion of said decision held that the SMI’s informed PDI that it was rescinding the
petitioner does not have trademark rights on the contract for SM Makati due to non-performance of
name and container of the beauty cream product. the terms thereof.
The said decision on the merits of the trial court
rendered the issuance of the writ of a preliminary Years later, PDI found out that exact copies of its
injunction moot and academic notwithstanding light boxes were installed at different SM stores. It
the fact that the same has been appealed in the was further discovered that SMI’s sister company
Court of Appeals. North Edsa Marketing Inc. (NEMI), sells advertising
space in lighted display units located in SMI’s
[10] Section 4, Rule 58, Revised Rules of Civil different branches.
Procedure.
PDI sent a letter to both SMI and NEMI enjoining
[11] Sy v. Court of Appeals, 313 SCRA 328 (1999). them to cease using the subject light boxes,
remove the same from SMI’s establishments and
[12] Section 121.1, Republic Act No. 8293.
to discontinue the use of the trademark “Poster
[13] Section 121.3, Republic Act. No. 8293. Ads,” as well as the payment of compensatory
damages.
[14] Section 172, Republic Act No. 8293.
Claiming that both SMI and NEMI failed to meet all
[15] Section 21, Republic Act No. 8293. its demands, PDI filed this instant case for
infringement of trademark and copyright, unfair
[16] 278 SCRA 498, 506 quoting Solid Homes, Inc.
competition and damages.
v. LA Vista, G.R. No. 71150 dated April 20, 1988
(unpublished). SMI maintained that it independently developed
its poster panels using commonly known
[17] De Roma v. Court of Appeals, 152 SCRA 205,
techniques and available technology, without
209 (1987).
notice of or reference to PDI’s copyright. SMI
Pearl & Dean v. Shoemart (CASE DIGEST) noted that the registration of the mark “Poster
Ads” was only for stationeries such as letterheads,
envelopes, and the like. Besides, according to SMI,
the word “Poster Ads” is a generic term which

6
cannot be appropriated as a trademark, and, as The Court reiterated the ruling in the case of Kho
such, registration of such mark is invalid. On this vs. Court of Appeals, differentiating patents,
basis, SMI, aside from praying for the dismissal of copyrights and trademarks, namely:
the case, also counterclaimed for moral, actual
A trademark is any visible sign capable of
and exemplary damages and for the cancellation
distinguishing the goods (trademark) or services
of PDI’s Certification of Copyright Registration, and
(service mark) of an enterprise and shall include a
Certificate of Trademark Registration.
stamped or marked container of goods. In relation
The RTC of Makati City decided in favour of PDI, thereto, a trade name means the name or
finding SMI and NEMI jointly and severally liable designation identifying or distinguishing an
for infringement of copyright and infringement of enterprise. Meanwhile, the scope of a copyright is
trademark confined to literary and artistic works which are
original intellectual creations in the literary and
On appeal, however, the Court of Appeals
artistic domain protected from the moment of
reversed the trial court.
their creation. Patentable inventions, on the other
ISSUES: hand, refer to any technical solution of a problem
in any field of human activity which is new,
Whether the the light box depicted in such involves an inventive step and is industrially
engineering drawings ipso facto also protected by applicable.
such copyright.
ON THE ISSUE OF PATENT INFRINGEMENT
Whether there was a patent infringement.
Petitioner never secured a patent for the light
Whether the owner of a registered trademark boxes. It therefore acquired no patent rights which
legally prevent others from using such trademark if and could not legally prevent anyone from
it is a mere abbreviation of a term descriptive of manufacturing or commercially using the
his goods, services or business? contraption. To be able to effectively and legally
preclude others from copying and profiting from
RULING:
the invention, a patent is a primordial
ON THE ISSUE OF COPYRIGHT INFRINGEMENT requirement. No patent, no protection.

The Court of Appeals correctly held that the ON THE ISSUE OF TRADEMARK INFRINGEMENT
copyright was limited to the drawings alone and
On the issue of trademark infringement, the
not to the light box itself.
petitioner’s president said “Poster Ads” was a
Although petitioner’s copyright certificate was contraction of “poster advertising.” P & D was able
entitled “Advertising Display Units” (which to secure a trademark certificate for it, but one
depicted the box-type electrical devices), its claim where the goods specified were “stationeries such
of copyright infringement cannot be sustained. as letterheads, envelopes, calling cards and
newsletters.”Petitioner admitted it did not
Copyright, in the strict sense of the term, is purely commercially engage in or market these goods. On
a statutory right. Accordingly, it can cover only the the contrary, it dealt in electrically operated
works falling within the statutory enumeration or backlit advertising units which, however, were not
description. at all specified in the trademark certificate.
Even as we find that P & D indeed owned a valid Assuming arguendo that “Poster Ads” could validly
copyright, the same could have referred only to qualify as a trademark, the failure of P & D to
the technical drawings within the category of secure a trademark registration for specific use on
“pictorial illustrations.” It could not have possibly the light boxes meant that there could not have
stretched out to include the underlying light box. been any trademark infringement since
The light box was not a literary or artistic piece registration was an essential element thereof.
which could be copyrighted under the copyright
law. ON THE ISSUE OF UNFAIR COMPETITION

There was no evidence that P & D’s use of “Poster

Ads” was distinctive or well-known. As noted by

7
the Court of Appeals, petitioner’s expert witnesses Whether or not petitioner’s trademark is a well-
himself had testified that ” ‘Poster Ads’ was too known mark protected under the Paris
generic a name. So it was difficult to identify it Convention.
with any company, honestly speaking.”This crucial
Ruling: YES.
admission that “Poster Ads” could not be
associated with P & D showed that, in the mind of In upholding the right of the petitioner to maintain
the public, the goods and services carrying the the present suit before our courts for unfair
trademark “Poster Ads” could not be distinguished competition or infringement of trademarks of a
from the goods and services of other entities. foreign corporation, we are moreover recognizing
our duties and the rights of foreign states under
the Paris Convention for the Protection of
“Poster Ads” was generic and incapable of being Industrial Property to which the Philippines and
used as a trademark because it was used in the France are parties.
field of poster advertising, the very business
Pursuant to this obligation, the Ministry of Trade
engaged in by petitioner. “Secondary meaning”
issued a memorandum addressed to the Director
means that a word or phrase originally incapable
of the Patents Office directing the latter to reject
of exclusive appropriation with reference to an
all pending applications for Philippine registration
article in the market might nevertheless have been
of signature and other world famous trademarks
used for so long and so exclusively by one
by applicants other than its original owners or
producer with reference to his article that, in the
users. The conflicting claims over internationally
trade and to that branch of the purchasing public,
known trademarks involve such name brands as
the word or phrase has come to mean that the
Lacoste, et. al. It is further directed that, in cases
article was his property.
where warranted, Philippine registrants of such
The petition is DENIED trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for
La Chemise Lacoste v. Fernandez (G.R. No. L-
damages and other legal action by the trademarks’
63796-97)
foreign or local owners or original users.
Facts:
The Intermediate Appellate Court, in the La
Petitioner La Chemise Lacoste is a foreign Chemise Lacoste S.A. v. Sadhwani decision which
corporation and the actual owner of the we cite with approval sustained the power of the
trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and Minister of Trade to issue the implementing
‘Crocodile Device’ used on clothing and other memorandum and declared La Chemise Lacoste
goods that are sold in many parts of the world. S.A. the owner of the disputed trademark, stating:
Herein respondent Hemadas & Co., a domestic “In the case at bar, the Minister of Trade, as ‘the
firm, applied and was granted registration of the competent authority of the country of
mark ‘Chemise Lacoste and Crocodile Device’ for registration,’ has found that among other well-
its garment products. Sometime later, petitioner known trademarks ‘Lacoste’ is the subject of
applied for the registration of its mark ‘Crocodile conflicting claims. For this reason, applications for
Device’ and ‘Lacoste’ but was opposed by herein its registration must be rejected or refused,
respondent. Later, petitioner filed a letter- pursuant to the treaty obligation of the
complaint of unfair competition before the NBI Philippines.”
which led to the issuance of search warrants and
the seizure of goods of respondent Hemadas.
Respondent moved to quash the warrants alleging
that its trademark was different from petitioner’s
trademark. Respondent court ruled to set aside
the warrants and to return the seized goods.

Issue: