E.I. Dupont De Nemours and Co. vs. Francisco, G.R. No.

174379, August 31,

2016 medication for hypertension, which the Bureau granted. It argued that it made a
G.R. No. | Date | Ponente | Topic/Keywords search of existing patent applications for similar products before its application, and
Digest by: Cua (copied digest) that no existing patent registration was found since E.I. Dupont Nemours' application
for its losartan product was considered abandoned by the Bureau of Patents,
Petitioners: E.I DUPONT DE NEMOURS AND CO., Trademarks, and Technology Transfer. It alleged that sometime in 2003 to 2004,
Respondents: DIRECTOR EMMA C. FRANCISCO (in ger capacity as DIRECTOR there was an exchange of correspondence between Therapharma, Inc. and Merck.
GENERAL OF THE INTELLECTUAL PROPERTY OFFICE), DIRECTOR EPIFANIO In this exchange, Merck informed Therapharma, Inc. that it was pursuing a patent on
M. VELASCO (in his capacity as the DIRECTOR OF THE BUREAU OF PATENTS, the losartan products in the Philippines and that it would pursue any legal action
and THERAPHARMA, INC. necessary to protect its product. The CA granted the Motion for Leave to Intervene,
and eventually ruled that the public interest would be prejudiced by the revival of E.I.
Recit-ready Digest + Doctrine: Dupont Nemours’ application.
On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526
before the Bureau of Patents, Trademarks, and Technology Transfer. The WoN the intervention should have been denied to ensure the confidentiality of
application was for Angiotensin II Receptor Blocking Imidazole (losartan), an the proceedings under Sec. 13 and 14 of the 1962 Revised Rules of Practice. –
invention related to the treatment of hypertension and congestive heart failure. The NO. Section 7 (7.1) (a) of the IP Code provides, among others, that the decisions of
patent application was handled by Atty. Mapili. On December 19, 2000, E.I. Dupont the Director General in the exercise of his appellate jurisdiction in respect of the
Nemours' new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell, decisions of the Director of Patents, and the Director of Trademarks shall be
sent the IPO a letter requesting that an office action be issued on Philippine Patent appealable to the CA in accordance with the Rules of Court. Thus, it is the Rules of
Application No. 35526. Patent Examiner Precila O. Bulihan of the IPO sent an office Court, not the 1962 Revised Rules of Practice, which governs the CA’s proceedings
action stating that an official revocation of the Power of Attorney of the former in appeals from the decisions of the Director-General of the IPO regarding the revival
counsel and the appointment of the present by the applicant is required before further of patent applications. Respondent Therapharma, Inc. was able to show that it had
action can be undertaken. On May 29, 2002, E.I. Dupont Nemours replied to the legal interest to intervene in the appeal of petitioner's revival of its patent application.
office action by submitting a Power of Attorney executed by Miriam Meconnahey, While its intervention may have been premature as no patent has been granted yet,
authorizing Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and Carbonell to petitioner's own actions gave rise to respondent Therapharma, Inc.'s right to protect
prosecute and handle its patent applications. On the same day, it also filed a Petition its losartan product. If respondent Therapharma, Inc. waited until petitioner was
for Revival with Cost of Philippine Patent Application No. 35526. E.I. Dupont granted a patent application so it could file a petition for compulsory licensing and
Nemours argued that its former counsel, Atty. Mapili, did not inform it about the petition for cancellation of patent under Section 240 and Section 247 of the 1962
abandonment of the application, and it was not aware that Atty. Mapili had already Revised Rules of Practice, its continued marketing of Lifezar would be considered
died. It argued that it discovered Atty. Mapili's death when its senior-level patent as an infringement of petitioner's patent.
attorney visited the Philippines in 1996. It argued that it only had actual notice of the
abandonment on January 30, 2002, the date of Paper No. 2. Thus, it argued that its Even assuming that the IPO granted the revival of Philippine Patent Application No.
Petition for Revival was properly filed under Section 113 of the 1962 Revised Rules 35526 back in 2000, petitioner's claim of absolute confidentiality in patent
of Practice before the Philippines Patent Office in Patent Cases (1962 Revised Rules proceedings is inaccurate. The Intellectual Property Code, changed numerous
of Practice). aspects of the old patent law. The IP Code was enacted not only to amend certain
provisions of existing laws on trademark, patent, and copyright, but also to honor the
April 18, 2002, the Director of Patents denied the Petition for Revival for having been country's commitments under the World Trade Organization — Agreement on Trade-
filed out of time. E.I. Dupont Nemours appealed the denial to the Director-General of Related Aspects of Intellectual Property Rights (TRIPS Agreement), a treaty that
the IPO on August 26, 2002. Director-General Francisco denied the appeal. On entered force in the Philippines on January 1, 1995. The mandatory disclosure
November 21, 2003, petitioner filed before the CA a Petition for Review seeking to requirement in the TRIPS Agreement precipitated the shift from a first-to-invent
set aside the IPO’s Decision dated October 22, 2003. CA granted the Petition for system to a first-to-file system. The first-to-file system required citizens of foreign
Review. OSG, on behalf of the IPO, moved for reconsideration. countries to register their patents in the Philippines before they can sue for
infringement. The absolute secrecy required by the 1962 Revised Rules of Practice
In the interim, Therapharma, Inc. moved for leave to intervene and admit the would not be applicable to a patent application before the IPO. The IP Code now
Attached Motion for Reconsideration dated October 11, 2004 and argued that the states that all patent applications must be published in the IPO Gazette and that any
CA’s August 31, 2004 Decision directly affects its "vested" rights to sell its own interested party may inspect all documents submitted to the IPO. The patent
product. Therapharma, Inc. alleged that on January 4, 2003, it filed before the application is only confidential before its publication. It was inaccurate, therefore, for
Bureau of Food and Drugs its own application for a losartan product "Lifezar," a petitioner to argue that secrecy in patent applications prevents any intervention from

Page 1 of 50
interested parties. The confidentiality in patent applications under the IP Code is not date the earliest foreign application was filed; and c. a certified copy of the foreign
absolute since a party may already intervene after the publication of the application. application together with an English translation is filed within six (6) months from the
date of filing in the Philippines.”
WoN the petitioner’s patent application should be revived. – NO. Section 113 of
the 1962 Revised Rules of Practice provides that an abandoned patent application Section 29 of the IP Code provides: “First to File Rule. — If two (2) or more persons
may only be revived within four (4) months from the date of abandonment. No have made the invention separately and independently of each other, the right to the
extension of this period is provided by the 1962 Revised Rules of Practice. patent shall belong to the person who filed an application for such invention, or where
two or more applications are filed for the same invention, to the applicant who has
Under Chapter VII, Section 111 (a) of the 1962 Revised Rules of Practice, a patent the earliest filing date or, the earliest priority date.”
application is deemed abandoned if the applicant fails to prosecute the application
within four months from the date of the mailing of the notice of the last action by the Since both the United States and the Philippines are signatories to the Paris
Bureau of Patents, Trademarks, and Technology Transfer, and not from applicant's Convention for the Protection of Industrial Property, an applicant who has filed a
actual notice. patent application in the United States may have a right of priority over the same
invention in a patent application in the Philippines. However, this right of priority does
According to the records of the Bureau of Patents, Trademarks, and Technology not immediately entitle a patent applicant the grant of a patent. A right of priority is
Transfer Chemical Examining Division, petitioner filed Philippine Patent Application not equivalent to a patent. Otherwise, a patent holder of any member-state of the
No. 35526 on July 10, 1987. It was assigned to an examiner on June 7, 1988. An Paris Convention need not apply for patents in other countries where it wishes to
Office Action was mailed to petitioner's agent, Atty. Mapili, on July 19, 1988. Because exercise its patent. It was, therefore, inaccurate for petitioner to argue that its prior
petitioner failed to respond within the allowable period, the application was deemed patent application in the United States removed the invention from the public domain
abandoned on September 20, 1988. Under Section 113, petitioner had until January in the Philippines. This argument is only relevant if respondent Therapharma, Inc.
20, 1989 to file for a revival of the patent application. Its Petition for Revival, however, had a conflicting patent application with the IPO. A right of priority has no bearing in
was filed on May 30, 2002, 13 years after the date of abandonment. The rules do not a case for revival of an abandoned patent application.
provide any exception that could extend this four (4)-month period to 13 years. Even
if Atty. Mapili's death prevented petitioner from submitting a petition for revival on WoN the invention has already become part of the public domain. – YES. The
time, it was clearly negligent when it subsequently failed to immediately apprise itself grant of a patent is to provide protection to any inventor from any patent infringement.
of the status of its patent application. It only requested a status update of Philippine Once an invention is disclosed to the public, only the patent holder has the exclusive
Patent Application No. 35526 from the IPO on December 14, 2000, or four (4) years right to manufacture, utilize, and market the invention. Under the Intellectual Property
after it learned of Atty. Mapili's death. Petitioner attempts to explain that it took them Code, a patent holder has the right to "to restrain, prohibit and prevent" any
four (4) years to request a status update because the Bureau of Patents, unauthorized person or entity from manufacturing, selling, or importing any product
Trademarks, and Technology Transfer failed to take any action when it submitted its derived from the patent. However, after a patent is granted and published in the IPO
Power of Attorney and Appointment of Resident Agent in favor of Bito, Lozada, Gazette, any interested third party "may inspect the complete description, claims,
Ortega & Castillo. The Power of Attorney, however, shows that it was only to inform and drawings of the patent."
the Bureau that all notices relating to its pending patent applications should be sent
to it. Philippine Patent Application No. 35526 was declared abandoned on The grant of a patent provides protection to the patent holder from the indiscriminate
September 20, 1988. As far as the Bureau was concerned, it was a forfeited use of the invention. However, its mandatory publication also has the correlative
application that had already been archived. effect of bringing new ideas into the public consciousness. After the publication of
the patent, any person may examine the invention and develop it into something
WoN petitioner enjoys a right of priority. – NO. The right of priority given to a further than what the original patent holder may have envisioned. After the lapse of
patent applicant is only relevant when there are two or more conflicting patent 20 years, the invention becomes part of the public domain and is free for the public
applications on the same invention. Because a right of priority does not automatically to use.
grant letters patent to an applicant, possession of a right of priority does not confer
any property rights on the applicant in the absence of an actual patent. Section 31 A patent holder of inventions relating to food or medicine does not enjoy absolute
of the IP Code provides: “An application for patent filed by any person who has monopoly over the patent. Both Republic Act No. 165 and the IP Code provide for
previously applied for the same invention in another country which by treaty, compulsory licensing. Compulsory licensing is defined in the IP Code as the "grant
convention, or law affords similar privileges to Filipino citizens, shall be considered a license to exploit a patented invention, even without the agreement of the patent
as filed as of the date of filing the foreign application: Provided, That: a. the local owner."
application expressly claims priority; b. it is filed within twelve (12) months from the

Page 2 of 50
 ● The patent application was handled by Atty. Nicanor D. Mapili (Atty.
Under Republic Act No. 165, a compulsory license may be granted to any applicant Mapili), a local resident agent who handled a majority of E.I. Dupont
three (3) years after the grant of a patent if the invention relates to food or medicine Nemours' patent applications in the Philippines from 1972 to 1996.
necessary for public health or safety. The patent holder's proprietary right over the
● On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del
patent only lasts for three (3) years from the grant of the patent, after which any
Castillo, Bacorro, Odulio, Calma, and Carbonell, sent the IPO a letter
person may be allowed to manufacture, use, or sell the invention subject to the
requesting that an office action be issued on Philippine Patent Application
payment of royalties. A patent is a monopoly granted only for specific purposes and
No. 35526.
objectives. Thus, its procedures must be complied with to attain its social objective.
o a. Patent Examiner Precila O. Bulihan of the IPO sent an office
Any request for leniency in its procedures should be taken in this context. Petitioner,
action stating that an official revocation of the Power of Attorney
however, has failed to convince this court that the revival of its patent application
of the former counsel and the appointment of the present by the
would have a significant impact on the pharmaceutical industry. According to
applicant is required before further action can be undertaken.
respondent Therapharma, Inc., the retail price of petitioner's losartan product,
● On May 29, 2002, E.I. Dupont Nemours replied to the Office action by
Cozaar, decreased within one (1) month of respondent Therapharma, Inc.'s entry
submitting a Power of Attorney executed by Miriam Meconnahey,
into the market. It also presented figures showing that there was a 44% increase in
authorizing Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and
the number of losartan units sold within five (5) months of its entry into the market.
Carbonell to prosecute and handle its patent applications. On the same
More Filipinos are able to purchase losartan products when there are two (2) different
day, it also filed a Petition for Revival with Cost of Philippine Patent
players providing competitive prices in the market. Public interest will be prejudiced
Application No. 35526.
if, despite petitioner's inexcusable negligence, its Petition for Revival is granted.
● E.I. Dupont Nemours argued that its former counsel, Atty. Mapili, did not
Even without a pending patent application and the absence of any exception to
inform it about the abandonment of the application, and it was not aware
extend the period for revival, petitioner was already threatening to pursue legal action
that Atty. Mapili had already died. It argued that it discovered Atty. Mapili's
against respondent Therapharma, Inc. if it continued to develop and market its
death when its senior-level patent attorney visited the Philippines in 1996.
losartan product, Lifezar. Once petitioner is granted a patent for its losartan products,
It argued that it only had actual notice of the abandonment on January
Cozaar and Hyzaar, the loss of competition in the market for losartan products may
30, 2002, the date of Paper No. 2. Thus, it argued that its Petition for
result in higher prices. For the protection of public interest, Philippine Patent
Revival was properly filed under Section 113 of the 1962 Revised Rules
Application No. 35526 should be considered a forfeited patent application.
of Practice before the Philippines Patent Office in Patent Cases (1962
Revised Rules of Practice).
DOCTRINE: A patent is granted to provide rights and protection to the inventor after
● April 18, 2002, the Director of Patents denied the Petition for Revival for
an invention is disclosed to the public. It also seeks to restrain and prevent
having been filed out of time. E.I. Dupont Nemours appealed the denial
unauthorized persons from unjustly profiting from a protected invention. However,
to the Director-General of the IPO on August 26, 2002. Director-General
ideas not covered by a patent are free for the public to use and exploit. Thus, there
Francisco denied the appeal.
are procedural rules on the application and grant of patents established to protect
● On November 21, 2003, petitioner filed before the CA a Petition for
against any infringement. To balance the public interests involved, failure to comply
Review seeking to set aside the IPO’s Decision dated October 22, 2003.
with strict procedural rules will result in the failure to obtain a patent.
CA granted the Petition for Review. OSG, on behalf of the IPO, moved
for reconsideration.
Facts: ● In the interim, Therapharma, Inc. moved for leave to intervene and admit
● E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an the Attached Motion for Reconsideration dated October 11, 2004 and
American corporation organized under the laws of the State of Delaware. argued that the CA’s August 31, 2004 Decision directly affects its "vested"
It is the assignee of inventors David John Carini, John Jonas Vytautas rights to sell its own product.
Duncia, and Pancras Chor Bun Wong, all citizens of the United States of o a. Therapharma, Inc. alleged that on January 4, 2003, it filed
America. before the Bureau of Food and Drugs its own application for a
● On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application losartan product "Lifezar," a medication for hypertension, which
No. 35526 before the Bureau of Patents, Trademarks, and Technology the Bureau granted. It argued that it made a search of existing
Transfer. The application was for Angiotensin II Receptor Blocking patent applications for similar products before itsapplication, and
Imidazole (losartan), an invention related to the treatment of hypertension that no existing patent registration was found since E.I. Dupont
and congestive heart failure. The product was produced and marketed by Nemours' application for its losartan product was considered
Merck, Sharpe, and Dohme Corporation (Merck), E.I. Dupont Nemours' abandoned by the Bureau of Patents, Trademarks, and
licensee, under the brand names Cozaar and Hyzaar. Technology Transfer. It alleged that sometime in 2003 to 2004,
there was an exchange of correspondence between
Page 3 of 50
 Therapharma, Inc. and Merck. In this exchange, Merck informed ● The only questions the court need to consider in a motion to intervene
Therapharma, Inc. that it was pursuing a patent on the losartan are whether the intervenor has standing to intervene, whether the motion
products in the Philippines and that it would pursue any legal will unduly delay the proceedings or prejudice rights already established,
action necessary to protect its product. and whether the intervenor's rights may be protected in a separate action.
● The CA granted the Motion for Leave to Intervene, and eventually ruled ● a. Respondent Therapharma, Inc. was able to show that it had legal
that the public interest would be prejudiced by the revival of E.I. Dupont interest to intervene in the appeal of petitioner's revival of its patent
Nemours’ application. application. While its intervention may have been premature as no patent
Issue/s: has been granted yet, petitioner's own actions gave rise to respondent
● WON the intervention should have been denied to ensure the Therapharma, Inc.'s right to protect its losartan product.
confidentiality of the proceedings under Sec. 13 and 14 of the 1962 ● b. The threat of legal action against respondent Therapharma, Inc. was
Revised Rules of Practice. – NO. The confidentiality in patent applications real and imminent. If respondent Therapharma, Inc. waited until petitioner
under the IP Code is not absolute since a party may already intervene was granted a patent application so it could le a petition for compulsory
after the publication of the application. licensing and petition for cancellation of patent under Section 240 and
● WON the petitioner’s patent application should be revived. – NO. It was Section 247 of the 1962 Revised Rules of Practice, its continued
filed beyond the allowable period. marketing of Lifezar would be considered as an infringement of
● WON petitioner enjoys a right of priority. – NO. A right of priority has no petitioner's patent.
bearing in a case for revival of an abandoned patent application. ● Even assuming that the IPO granted the revival of Philippine Patent
● WON the invention has already become part of the public domain. – YES. Application No. 35526 back in 2000, petitioner's claim of absolute
Petitioner has failed to convince the SC that the revival of its patent confidentiality in patent proceedings is inaccurate.
application would have a significant impact on the pharmaceutical ● In the 1962 Revised Rules of Practice, the Bureau of Patents,
industry. Trademarks, and Technology Transfer previously required secrecy in
pending patent applications. The Intellectual Property Code, however,
changed numerous aspects of the old patent law. The IP Code was
Ratio: enacted not only to amend certain provisions of existing laws on
The CA was correct in allowing Therapharma, Inc. to intervene. trademark, patent, and copyright, but also to honor the country's
● Petitioner argues that intervention should not have been allowed on commitments under the World Trade Organization — Agreement on
appeal since the revival of a patent application is ex parte and is "strictly Trade-Related Aspects of Intellectual Property Rights (TRIPS
a contest between the examiner and the applicant" under Sections 78 Agreement), a treaty that entered force in the Philippines on January 1,
and 79 of the 1962 Revised Rules of Practice. It argues that the 1995.
disallowance of any intervention is to ensure the condentiality of the ● The mandatory disclosure requirement in the TRIPS Agreement
proceedings under Sections 13 and 14 of the 1962 Revised Rules of precipitated the shift from a first-to-invent system to a first-to-file system.
Practice. The first-to-file system required citizens of foreign countries to register
● In the 1962 Revised Rules of Practice, final decisions of the Director of their patents in the Philippines before they can sue for infringement.
Patents are appealed to this Court and governed by Republic Act No. ● Under Section 21 of Republic Act No. 165, a patent had a term of 17
165. Sec. 73 of R.A. 165 provides that the Rules of Court shall govern. years. The IP Code extended the period to 20 years.
● Republic Act No. 165 has since been amended by Republic Act No. 8293, ● The absolute secrecy required by the 1962 Revised Rules of Practice
otherwise known as the IP Code of the Philippines (Intellectual Property would not be applicable to a patent application before the IPO. Section
Code), in 1997. This is the applicable law as to the revival of petitioner’s 13 of the 1962 Revised Rules of Practice does not appear in the
patent application. Intellectual Property Code, in the Rules and Regulations on Inventions,
○ Section 7 (7.1) (a) of the IP Code provides, among others, that or in the Revised Implementing Rules and Regulations for Patents, Utility
the decisions of the Director General in the exercise of his Models and Industrial Design.
appellant jurisdiction in respect of the decisions of the Director ● The IP Code now states that all patent applications must be published in
of Patents, and the Director of Trademarks shall be appealable the IPO Gazette and that any interested party may inspect all documents
to the CA in accordance with the Rules of Court submitted to the IPO. The patent application is only confidential before its
● Thus, it is the Rules of Court, not the 1962 Revised Rules of Practice, publication.
which governs the CA’s proceedings in appeals from the decisions of the ● It was inaccurate, therefore, for petitioner to argue that secrecy in patent
Director-General of the IPO regarding the revival of patent applications. applications prevents any intervention from interested parties. The
confidentiality in patent applications under the IP Code is not absolute
Page 4 of 50
 since a party may already intervene after the publication of the learning of Atty. Mapili's death, petitioner issued a Power of Attorney and
application. Appointment of Resident Agent in favor of Bito, Lozada, Ortega & Castillo
on March 25, 1996. Despite the immediate action in the substitution of its
Petitioner’s revival of its patent application was filed beyond the allowable resident agent, it only requested a status update of Philippine Patent
period. Application No. 35526 from the IPO on December 14, 2000, or four (4)
● Section 113 of the 1962 Revised Rules of Practice provides that an years after it learned of Atty. Mapili's death.
abandoned patent application may only be revived within four (4) months ● Petitioner attempts to explain that it took them four (4) years to request a
from the date of abandonment. No extension of this period is provided by status update because the Bureau of Patents, Trademarks, and
the 1962 Revised Rules of Practice. Technology Transfer failed to take any action when it submitted its Power
● Under Chapter VII, Section 111 (a) of the 1962 Revised Rules of Practice, of Attorney and Appointment of Resident Agent in favor of Bito, Lozada,
a patent application is deemed abandoned if the applicant fails to Ortega & Castillo. The Power of Attorney, however, shows that it was only
prosecute the application within four months from the date of the mailing to inform the Bureau that all notices relating to its pending patent
of the notice of the last action by the Bureau of Patents, Trademarks, and applications should be sent to it. Philippine Patent Application No. 35526
Technology Transfer, and not from applicant's actual notice was declared abandoned on September 20, 1988. As far as the Bureau
● Section 113 has since been superseded by Section 133.4 of the was concerned, it was a forfeited application that had already been
Intellectual Property Code, Rule 930 of the Rules and Regulations on archived. It was not the Bureau's duty to resurrect previous notices of
Inventions, and Rule 929 of the Revised Implementing Rules and forfeited and abandoned applications to be sent to new resident agents
Regulations for Patents, Utility Models and Industrial Design. The period unless a specific status update was requested. Considering that
of four (4) months from the date of abandonment, however, remains petitioner only requested a status update on December 14, 2000, it was
unchanged. The IP Code even provides for a shorter period of three (3) only then that the IPO would start sending notices to it.
months within which to file for revival. ● The four (4)-month period in Section 111 of the 1962 Revised Rules of
● According to the records of the Bureau of Patents, Trademarks, and Practice is not counted from actual notice of abandonment but from
Technology Transfer Chemical Examining Division, petitioner filed mailing of the notice. Since it appears from the IPO’s records that a notice
Philippine Patent Application No. 35526 on July 10, 1987. It was assigned of abandonment was mailed to petitioner's resident agent on July 19,
to an examiner on June 7, 1988. An Office Action was mailed to 1988, the time for taking action is counted from this period. Petitioner's
petitioner's agent, Atty. Mapili, on July 19, 1988. Because petitioner failed patent application cannot be revived simply because the period for revival
to respond within the allowable period, the application was deemed has already lapsed and no extension of this period is provided for by the
abandoned on September 20, 1988. Under Section 113, petitioner had 1962 Revised Rules of Practice.
until January 20, 1989 to file for a revival of the patent application. Its
Petition for Revival, however, was filed on May 30, 2002, 13 years after Right of priority does not apply in a case for revival of an abandoned patent
the date of abandonment. application.
● Even if the delay was unavoidable, or the failure to prosecute was due to ● The right of priority given to a patent applicant is only relevant when there
fraud, accident, mistake, or excusable negligence, or the Petition was are two or more conflicting patent applications on the same invention.
accompanied by a complete proposed response, or all fees were paid, Because a right of priority does not automatically grant letters patent to
the Petition would still be denied since these regulations only provide a an applicant, possession of a right of priority does not confer any property
four (4)-month period within which to le for the revival of the application. rights on the applicant in the absence of an actual patent.
The rules do not provide any exception that could extend thi four (4)- ● Section 31 of the IP Code provides: SECTION 31. Right of Priority. — An
month period to 13 years. application for patent filed by any person who has previously applied for
● Petitioner tries to disown Atty. Mapili's conduct by arguing that it was not the same invention in another country which by treaty, convention, or law
informed of the abandonment of its patent application or of Atty. Mapili's affords similar privileges to Filipino citizens, shall be considered as filed
death. By its own evidence, however, petitioner requested a status as of the date of filing the foreign application: Provided, That:
update from Atty. Mapili only on July 18, 1995, eight (8) years after the ● A. the local application expressly claims priority;
filing of its application It alleged that it only found out about Atty. Mapili's ● B. it is filed within twelve (12) months from the date the earliest foreign
death sometime in March 1996, as a result of its senior patent attorney's application was filed; and
visit to the Philippine. ● C. a certified copy of the foreign application together with an English
● Even if Atty. Mapili's death prevented petitioner from submitting a petition translation is filed within six (6) months from the date of filing in the
for revival on time, it was clearly negligent when it subsequently failed to Philippines.
immediately apprise itself of the status of its patent application. Upon
Page 5 of 50
 ● A patent applicant with the right of priority is given preference in the grant patent protection seek to ensure that ideas in the public domain remain
of a patent when there are two or more applicants for the same invention. there for the free use of the public.
Section 29 of the IP Code provides: ● To that end, the prerequisites to obtaining a patent are strictly observed
● a. SECTION 29. First to File Rule. — If two (2) or more persons have and when a patent is issued, the limitations on its exercise are equally
made the invention separately and independently of each other, the right strictly enforced.
to the patent shall belong to the person who filed an application for such ● A patent holder of inventions relating to food or medicine does not enjoy
invention, or where two or more applications are filed for the same absolute monopoly over the patent. Both Republic Act No. 165 and the
invention, to the applicant who has the earliest filing date or, the earliest IP Code provide for compulsory licensing. Compulsory licensing is
priority date. defined in the IP Code as the "grant a license to exploit a patented
● Since both the United States and the Philippines are signatories to the invention, even without the agreement of the patent owner."
Paris Convention for the Protection of Industrial Property, an applicant ● Under Republic Act No. 165, a compulsory license may be granted to any
who has filed a patent application in the United States may have a right applicant three (3) years after the grant of a patent if the invention relates
of priority over the same invention in a patent application in the to food or medicine necessary for public health or safety. The patent
Philippines. However, this right of priority does not immediately entitle a holder's proprietary right over the patent only lasts for three (3) years from
patent applicant the grant of a patent. A right of priority is not equivalent the grant of the patent, after which any person may be allowed to
to a patent. Otherwise, a patent holder of any member-state of the Paris manufacture, use, or sell the invention subject to the payment of royalties.
Convention need not apply for patents in other countries where it wishes ● A patent is a monopoly granted only for specic purposes and objectives.
to exercise its patent. Thus, its procedures must be complied with to attain its social objective.
● It was, therefore, inaccurate for petitioner to argue that its prior patent Any request for leniency in its procedures should be taken in this context.
application in the United States removed the invention from the public Petitioner, however, has failed to convince this court that the revival of its
domain in the Philippines. This argument is only relevant if respondent patent application would have a signicant impact on the pharmaceutical
Therapharma, Inc. had a conflicting patent application with the IPO. A industry.
right of priority has no bearing in a case for revival of an abandoned patent ● According to respondent Therapharma, Inc., the retail price of petitioner's
application. losartan product, Cozaar, decreased within one (1) month of respondent
Therapharma, Inc.'s entry into the market. It also presented figures
Public interest will be prejudiced if the petition for revival was granted. showing that there was a 44% increase in the number of losartan units
● The grant of a patent is to provide protection to any inventor from any sold within five (5) months of its entry into the market. More Filipinos are
patent infringement. Once an invention is disclosed to the public, only the able to purchase losartan products when there are two (2) different
patent holder has the exclusive right to manufacture, utilize, and market players providing competitive prices in the market.
the invention. ● Public interest will be prejudiced if, despite petitioner's inexcusable
● Under the Intellectual Property Code, a patent holder has the right to "to negligence, its Petition for Revival is granted. Even without a pending
restrain, prohibit and prevent" any unauthorized person or entity from patent application and the absence of any exception to extend the period
manufacturing, selling, or importing any product derived from the patent. for revival, petitioner was already threatening to pursue legal action
However, after a patent is granted and published in the IPO Gazette, any against respondent Therapharma, Inc. if it continued to develop and
interested third party "may inspect the complete description, claims, and market its losartan product, Lifezar. Once petitioner is granted a patent
drawings of the patent." for its losartan products, Cozaar and Hyzaar, the loss of competition in
● The grant of a patent provides protection to the patent holder from the the market for losartan products may result in higher prices. For the
indiscriminate use of the invention. However, its mandatory publication protection of public interest, Philippine Patent Application No. 35526
also has the correlative effect of bringing new ideas into the public should be considered a forfeited patent application.
consciousness. After the publication of the patent, any person may
examine the invention and develop it into something further than what the Dispositive:
original patent holder may have envisioned. After the lapse of 20 years, WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006
the invention becomes part of the public domain and is free for the public and the Amended Decision dated August 30, 2006 of the CA are AFFIRMED
to use.
● The patent law has a three-fold purpose: "first, patent law seeks to foster
and reward invention; second, it promotes disclosures of inventions to
stimulate further innovation and to permit the public to practice the
invention once the patent expires; third, the stringent requirements for
Page 6 of 50
 Pearl & Dean (Phil.), Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15, ● The application for registration of the trademark was filed with the Bureau
2003 of Patents, Trademarks and Technology Transfer on June 20, 1983, but
G.R. No. | Date | Ponente | Topic/Keywords was approved only on September 12, 1988,
Digest by: NAME OF DIGESTER ● The advertising light boxes were marketed under the trademark "Poster
Ads."
Petitioners: Pearl & Dean (Phil.), Inc ● Pearl and Dean employed the services of Metro Industrial Services to
Respondents: Shoemart, Inc. manufacture its advertising displays.
● Sometime in 1985, Pearl, and Dean negotiated with Shoemart, Inc. (SMI)
Recit-ready Digest + Doctrine: for the lease and installation of the light boxes in SM City North Edsa.
Petitioner manufactures advertising display units called light boxes. It registered the ● Since SM City North Edsa was under construction at that time, SMI
light boxes for copyright and trademark (Poster Ads). To manufacture these light offered as an alternative, SM Makati and SM Cubao, to which Pearl and
boxes, Petitioner employed the services of Metro Industrial. Petitioner and Dean agreed.
Respondent negotiated for the lease of these light boxes, however, respondent ● Pearl and Dean's General Manager, Rodolfo Vergara, submitted for
rescinded the contract. 2 years later, Metro Industrial offered to construct light signature the contacts covering SM Cubao and SM Makati to SMI's
boxes. Afterwards, respondent engaged the services of an advertising company to Advertising Promotions and Publicity Division Manager, Ramonlito
make light boxes (300 units). Petitioner discovered that SM installed display units Abano.
similar to light box. Petitioner sent a cease and desist letter to SM to enjoin them ● Only the contract for SM Makati, however, was returned signed.
from using the light boxes. It also asked SM to stop using the trademark “Poster Ads” ● Vergara wrote Abano inquiring about the other contract and reminding
and claimed damages. Respondent refused to heed the demands, thus, Petitioner him that their agreement for installation of light boxes was not only for its
filed a case for trademark and copyright infringement, unfair competition and SM Makati branch, but also for SM Cubao.
damages. RTC ruled for petitioner, CA Reversed. ● SMI did not bother to reply.
● SMI's house counsel informed Pearl and Dean that it was rescinding the
On copyright infringement, SC held that copyright protection of petitioner was limited contract for SM Makati due to non-performance of the terms thereof.
to the drawings of the light box and not to the light box itself. Copyright is a purely ● Vergara protested the unilateral action of SMI, saying it was without basis.
statutory right, thus, the rights it confer is limited to what the statute provides. In the same letter, he pushed for the signing of the contract for SM Cubao.
● Two years later, Metro Industrial Services, the company formerly
On patent infringement, SC held that there was no infringement because petitioner contracted by Pearl and Dean to fabricate its display units, offered to
did not secure a patent for said light boxes. construct light boxes for Shoemart's chain of stores.
● SMI approved the proposal and ten (10) light boxes were subsequently
On trademark infringement, P & D was able to secure a trademark certificate for it, fabricated by Metro Industrial for SMI.
but one where the goods specified were "stationeries such as letterheads, ● After its contract with Metro Industrial was terminated, SMI engaged the
envelopes, calling cards and newsletters.Petitioner dealt in electrically operated services of EYD Rainbow Advertising Corporation to make the light
backlit advertising units and the sale of advertising spaces thereon, which, however, boxes. Some 300 units were fabricated in 1991. These were delivered on
were not at all specified in the trademark certificate. a staggered basis and installed at SM Megamall and SM City.
● Sometime in 1989, Pearl and Dean, received reports that exact copies of
On unfair competition, a name or phrase incapable of appropriation as a trademark its light boxes were installed at SM City and in the fastfood section of SM
or tradename may, by long and exclusive use by a business, be entitled to protection Cubao.
against unfair competition. In this case, there was no evidence that P & D’s use of ● Upon investigation, Pearl and Dean found out that aside from the two (2)
"Poster Ads" was distinctive or well-known. Thus, it does not enjoy protection from reported SM branches, light boxes similar to those it manufactures were
unfair competition. also installed in two (2) other SM stores.
● It further discovered that defendant-appellant North Edsa Marketing Inc.
Facts: (NEMI), through its marketing arm, Prime Spots Marketing Services, was
● Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture set up primarily to sell advertising space in lighted display units located in
of advertising display units simply referred to as light boxes. SMI's different branches. Pearl and Dean noted that NEMI is a sister
● These units utilize specially printed posters sandwiched between plastic company of SMI.
sheets and illuminated with back lights. ● In the light of its discoveries, Pearl and Dean sent a letter dated
● Pearl and Dean was able to secure a Certificate of Copyright Registration December 11, 1991 to both SMI and NEMI enjoining them to cease using
dated January 20, 1981 over these illuminated display units.
Page 7 of 50
 the subject light boxes and to remove the same from SMI's ● Patentable inventions, on the other hand, refer to any technical solution
establishments. of a problem in any field of human activity which is new, involves an
● It also demanded the discontinued use of the trademark "Poster Ads," inventive step and is industrially applicable.
and the payment to Pearl and Dean of compensatory damages in the
amount of Twenty Million Pesos (P20,000,000.00). B. ON THE ISSUE OF PATENT INFRINGEMENT
● Pearl and Dean filed this instant case for infringement of trademark and ● No infringement because petitioner never secures a patent for the
copyright, unfair competition and damages. light boxes
● The RTC of Makati City decided in favor of P & D: ● The patent law has a three-fold purpose: "first, patent law seeks to foster
● Court of Appeals reversed the trial court and reward invention; second, it promotes disclosures of inventions to
stimulate further innovation and to permit the public to practice the
invention once the patent expires; third, the stringent requirements for
Issue/s: W/N there is infringement of trademark and copyright in this case. NO
patent protection seek to ensure that ideas in the public domain remain
there for the free use of the public."
Ratio:
A. ON THE ISSUE OF COPYRIGHT INFRINGEMENT C. ON THE ISSUE OF TRADEMARK INFRINGEMENT
● Petitioner P & D's complaint was that SMI infringed on its copyright over ● This issue concerns the use by respondents of the mark "Poster Ads"
the light boxes when SMI had the units manufactured by Metro and EYD which petitioner's president said was a contraction of "poster
Rainbow Advertising for its own account. advertising."
● Obviously, petitioner's position was premised on its belief that its ● P & D was able to secure a trademark certificate for it, but one where
copyright over the engineering drawings extended ipso facto to the light the goods specified were "stationeries such as letterheads,
boxes depicted or illustrated in said drawings. envelopes, calling cards and newsletters."
● The copyright was limited to the drawings alone and not to the light box ● Petitioner admitted it did not commercially engage in or market these
itself. goods. On the contrary, it dealt in electrically operated backlit
● First, petitioner's application for a copyright certificate issued by the advertising units and the sale of advertising spaces thereon, which,
National Library clearly stated that it was for a class "O" work under however, were not at all specified in the trademark certificate.
Section 2 (O) of PD 49 (The Intellectual Property Decree) ● Section 20 of the old Trademark Law, provides that "the certificate of
● SEC. 2. The rights granted by this Decree shall, from the moment of registration issued by the Director of Patents can confer (upon petitioner)
creation, subsist with respect to any of the following works: (O) Prints, the exclusive right to use its own symbol only to those goods specified in
pictorial illustrations, advertising copies, labels, tags, and box the certificate
wraps;
D. ON THE ISSUE OF UNFAIR COMPETITION
● Copyright, in the strict sense of the term, is purely a statutory right.
● Being a mere statutory grant, the rights are limited to what the statute ● There can be no unfair competition under the law on copyrights
confers. although it is applicable to disputes over the use of trademarks.
● P & D secured its copyright under the classification class "O" work. ● This crucial admission by its own expert witness that "Poster Ads"
● This being so, petitioner's copyright protection extended only to the could not be associated with P & D showed that, in the mind of the
technical drawings and not to the light box itself because the latter was public, the goods and services carrying the trademark "Poster Ads"
not at all in the category of "prints, pictorial illustrations, advertising could not be distinguished from the goods and services of other
copies, labels, tags and box wraps." entities.
● 3 legal rights that are completely distinct and separate from one another ● This fact also prevented the application of the doctrine of secondary
● A trademark is any visible sign capable of distinguishing the goods meaning → means that a word or phrase originally incapable of exclusive
(trademark) or services (service mark) of an enterprise and shall include appropriation with reference to an article in the market (because it is
a stamped or marked container of goods. In relation thereto, a trade name geographically or otherwise descriptive) might nevertheless have been
means the name or designation identifying or distinguishing an used for so long and so exclusively by one producer with reference to his
enterprise. article that, in the trade and to that branch of the purchasing public, the
● A copyright is confined to literary and artistic works which are original word or phrase has come to mean that the article was his property.
intellectual creations in the literary and artistic domain protected from the
moment of their creation.

Page 8 of 50
 ● Poster Ads" was generic and incapable of being used as a trademark
because it was used in the field of poster advertising, the very business
engaged in by petitioner.

Dispositive: WHEREFORE, the petition is hereby DENIED and the decision of

the Court of Appeals dated May 22, 2001 is AFFIRMED in toto. SO ORDERED.

Page 9 of 50
Smith Kline Beckman Corporation vs. Court of Appeals, G.R. No. 126627,
August 14, 2003 The doctrine of equivalents thus requires satisfaction of the function-means-and-
Carpio Morales | Doctrine of Equivalents and Concept of Divisional Applications result test, the patentee having the burden to show that all three components of such
Digest by: Maxene equivalency test are met.
As for the concept of divisional applications, it comes into play when two or more
Petitioners: SMITH KLINE BECKMAN CORPORATION inventions are claimed in a single application but are of such a nature that a single
Respondents: THE HONORABLE COURT OF APPEALS and TRYCO PHARMA patent may not be issued for them.
CORPORATION The applicant thus is required "to divide," that is, to limit the claims to whichever
invention he may elect, whereas those inventions not elected may be made the
Recit-ready Digest + Doctrine: subject of separate applications which are called "divisional applications."
Smith Kline - Patent over "Methods and Compositions for Producing Biphasic What this only means is that petitioner’s methyl 5 propylthio-2-benzimidazole
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate." carbamate is an invention distinct from the other inventions claimed in the original
Patented invention consisted of a new compound named methyl 5 propylthio-2- application divided out, Albendazole being one of those other inventions. Otherwise,
benzimidazole carbamate and the methods or compositions utilizing the compound methyl 5 propylthio-2-benzimidazole carbamate would not have been the subject of
as an active ingredient in fighting infections caused by gastrointestinal parasites and a divisional application if a single patent could have been issued for it as well as
lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet Albendazole.
animals.
Tryco Pharma - domestic corporation that manufactures, distributes and sells Doctrines: See definition of doctrine of equivalents and concept of divisional
veterinary products including Impregon, a drug that has Albendazole. applications above.
Smith Kline argues that under the doctrine of equivalents for determining patent
infringement, Albendazole, the active ingredient it alleges was appropriated by
private respondent for its drug Impregon, is substantially the same as methyl 5 Facts:
propylthio-2-benzimidazole carbamate covered by its patent since both of them ● Smith Kline Beckman Corporation (petitioner), a corporation existing by
are meant to combat worm or parasite infestation in animals. It cites the "unrebutted" virtue of the laws of the state of Pennsylvania, United States of America
testimony of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that the chemical (U.S.) and licensed to do business in the Philippines, filed on October 8,
formula in Letters Patent No. 14561 refers to the compound Albendazole. 1976, as assignee, before the Philippine Patent Office (now Bureau of
Tryco stresses that the existence of a separate U.S. patent for Albendazole indicates Patents, Trademarks and Technology Transfer) an application for patent
that the same and the compound in Letters Patent No. 14561 are different from each over an invention entitled "Methods and Compositions for Producing
other; and that since it was on account of a divisional application that the patent for Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
methyl 5 propylthio-2-benzimidazole carbamate was issued, then, by definition Carbamate." The application bore Serial No. 18989.
of a divisional application, such a compound is just one of several ● On September 24, 1981, Letters Patent No. 14561 for the aforesaid
independent inventions alongside Albendazole under petitioner’s original patent invention was issued to petitioner for a term of seventeen (17) years.
application. ● The letters patent provides in its claims that the patented invention
RTC for Tryco consisted of a new compound named methyl 5 propylthio-2-
CA affirmed benzimidazole carbamate and the methods or compositions utilizing the
Whether private respondent committed patent infringement to the prejudice of compound as an active ingredient in fighting infections caused by
petitioner. NOOOO gastrointestinal parasites and lungworms in animals such as swine,
The doctrine of equivalents provides that an infringement also takes place when a sheep, cattle, goats, horses, and even pet animals.
device appropriates a prior invention by incorporating its innovative concept and, ● Tryco Pharma Corporation (private respondent) is a domestic corporation
although with some modification and change, performs substantially the same that manufactures, distributes and sells veterinary products including
function in substantially the same way to achieve substantially the same result. Yet Impregon, a drug that has Albendazole for its active ingredient and is
again, a scrutiny of petitioner’s evidence fails to convince this Court of the substantial claimed to be effective against gastro-intestinal roundworms, lungworms,
sameness of petitioner’s patented compound and Albendazole. While both tapeworms and fluke infestation in carabaos, cattle and goats.
compounds have the effect of neutralizing parasites in animals, identity of result does ● Petitioner sued private respondent for infringement of patent and unfair
not amount to infringement of patent unless Albendazole operates in substantially competition before the Caloocan City Regional Trial Court
the same way or by substantially the same means as the patented compound, even ● It claimed that its patent covers or includes the substance Albendazole
though it performs the same function and achieves the same result . In other words, such that private respondent, by manufacturing, selling, using, and
the principle or mode of operation must be the same or substantially the same. causing to be sold and used the drug Impregon without its authorization,
infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 as well as
Page 10 of 50
 committed unfair competition under Article 189, paragraph 1 of the produce a single result, thereby making Albendazole as much a part of
Revised Penal Code and Section 29 of Republic Act No. 166 (The Letters Patent No. 14561 as the other substance is.
Trademark Law) for advertising and selling as its own the drug Impregon ● Private respondent contends that application of the doctrine of
although the same contained petitioner’s patented Albendazole. equivalents would not alter the outcome of the case, Albendazole and
● On motion of petitioner, Branch 125 of the Caloocan RTC issued a methyl 5 propylthio-2-benzimidazole carbamate being two different
temporary restraining order against private respondent enjoining it from compounds with different chemical and physical properties. It stresses
committing acts of patent infringement and unfair competition. that the existence of a separate U.S. patent for Albendazole indicates that
● Private respondent in its Answer averred that Letters Patent No. 14561 the same and the compound in Letters Patent No. 14561 are different
does not cover the substance Albendazole for nowhere in it does that from each other; and that since it was on account of a divisional
word appear; that even if the patent were to include Albendazole, such application that the patent for methyl 5 propylthio-2-benzimidazole
substance is unpatentable; that the Bureau of Food and Drugs allowed it carbamate was issued, then, by definition of a divisional application, such
to manufacture and market Impregon with Albendazole as its known a compound is just one of several independent inventions alongside
ingredient; that there is no proof that it passed off in any way its veterinary Albendazole under petitioner’s original patent application.
products as those of petitioner; that Letters Patent No. 14561 is null and
void, the application for the issuance thereof having been filed beyond
the one year period from the filing of an application abroad for the same Issue/s:
invention covered thereby, in violation of Section 15 of Republic Act No. ● Whether private respondent committed patent infringement to the
165 (The Patent Law); and that petitioner is not the registered patent prejudice of petitioner. NOOOO
holder.
● Private respondent lodged a Counterclaim against petitioner for such Ratio:
amount of actual damages as may be proven; ₱1,000,000.00 in moral ● The burden of proof to substantiate a charge for patent infringement rests
damages; ₱300,000.00 in exemplary damages; and ₱150,000.00 in on the plaintiff.
attorney’s fees. ● Petitioner’s evidence consists primarily of its Letters Patent No. 14561,
● RTC for respondent and the testimony of Dr. Orinion, its general manager in the Philippines
● CA affirmed for its Animal Health Products Division, by which it sought to show that its
● Petitioner argues that under the doctrine of equivalents for determining patent for the compound methyl 5 propylthio-2-benzimidazole carbamate
patent infringement, Albendazole, the active ingredient it alleges was also covers the substance Albendazole.
appropriated by private respondent for its drug Impregon, is substantially ● From a reading of the 9 claims of Letters Patent No. 14561 in relation to
the same as methyl 5 propylthio-2-benzimidazole carbamate covered by the other portions thereof, no mention is made of the compound
its patent since both of them are meant to combat worm or parasite Albendazole.
infestation in animals. ● All that the claims disclose are: the covered invention, that is, the
● It cites the "unrebutted" testimony of its witness Dr. Godofredo C. Orinion compound methyl 5 propylthio-2-benzimidazole carbamate; the
(Dr. Orinion) that the chemical formula in Letters Patent No. 14561 refers compound’s being anthelmintic but nontoxic for animals or its ability to
to the compound Albendazole. Petitioner adds that the two substances destroy parasites without harming the host animals; and the patented
substantially do the same function in substantially the same way to methods, compositions or preparations involving the compound to
achieve the same results, thereby making them truly identical. maximize its efficacy against certain kinds of parasites infecting specified
● Petitioner thus submits that the appellate court should have gone beyond animals.
the literal wordings used in Letters Patent No. 14561, beyond merely ● When the language of its claims is clear and distinct, the patentee is
applying the literal infringement test, for in spite of the fact that the word bound thereby and may not claim anything beyond them.
Albendazole does not appear in petitioner’s letters patent, it has ably ● And so are the courts bound which may not add to or detract from the
shown by evidence its sameness with methyl 5 propylthio-2- claims matters not expressed or necessarily implied, nor may they
benzimidazole carbamate. enlarge the patent beyond the scope of that which the inventor claimed
● Petitioner likewise points out that its application with the Philippine Patent and the patent office allowed, even if the patentee may have been entitled
Office on account of which it was granted Letters Patent No. 14561 was to something more than the words it had chosen would include.
merely a divisional application of a prior application in the U. S. which ● It bears stressing that the mere absence of the word Albendazole in
granted a patent for Albendazole. Hence, petitioner concludes that both Letters Patent No. 14561 is not determinative of Albendazole’s non-
methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented inclusion in the claims of the patent. While Albendazole is admittedly a
Albendazole are dependent on each other and mutually contribute to chemical compound that exists by a name different from that covered in
Page 11 of 50
 petitioner’s letters patent, the language of Letter Patent No. 14561 fails ● The foregoing discussions notwithstanding, this Court does not sustain
to yield anything at all regarding Albendazole. And no extrinsic evidence the award of actual damages and attorney’s fees in favor of private
had been adduced to prove that Albendazole inheres in petitioner’s patent respondent.
in spite of its omission therefrom or that the meaning of the claims of the
patent embraces the same. Dispositive:
● While petitioner concedes that the mere literal wordings of its patent WHEREFORE, the assailed decision of the Court of Appeals is hereby AFFIRMED
cannot establish private respondent’s infringement, it urges this Court to with MODIFICATION. The award of actual or compensatory damages and
apply the doctrine of equivalents. attorney’s fees to private respondent, Tryco Pharma Corporation, is DELETED;
● The doctrine of equivalents provides that an infringement also takes place instead, it is hereby awarded the amount of P20,000.00 as temperate or moderate
when a device appropriates a prior invention by incorporating its damages.
innovative concept and, although with some modification and change, SO ORDERED.
performs substantially the same function in substantially the same way to
achieve substantially the same result. Yet again, a scrutiny of petitioner’s
evidence fails to convince this Court of the substantial sameness of
petitioner’s patented compound and Albendazole. While both compounds
have the effect of neutralizing parasites in animals, identity of result does
not amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as the
patented compound, even though it performs the same function and
achieves the same result. In other words, the principle or mode of
operation must be the same or substantially the same.
● The doctrine of equivalents thus requires satisfaction of the function-
means-and-result test, the patentee having the burden to show that all
three components of such equivalency test are met.
● As stated early on, petitioner’s evidence fails to explain how Albendazole
is in every essential detail identical to methyl 5 propylthio-2-
benzimidazole carbamate. Apart from the fact that Albendazole is an
anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate,
nothing more is asserted and accordingly substantiated regarding the
method or means by which Albendazole weeds out parasites in animals,
thus giving no information on whether that method is substantially the
same as the manner by which petitioner’s compound works.
● As for the concept of divisional applications proffered by petitioner, it
comes into play when two or more inventions are claimed in a single
application but are of such a nature that a single patent may not be issued
for them.
● The applicant thus is required "to divide," that is, to limit the claims to
whichever invention he may elect, whereas those inventions not elected
may be made the subject of separate applications which are called
"divisional applications."
● What this only means is that petitioner’s methyl 5 propylthio-2-
benzimidazole carbamate is an invention distinct from the other
inventions claimed in the original application divided out, Albendazole
being one of those other inventions. Otherwise, methyl 5 propylthio-2-
benzimidazole carbamate would not have been the subject of a divisional
application if a single patent could have been issued for it as well as
Albendazole.

Page 12 of 50
 Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock Registration No 56334 on or before October 21, 2004, thereby resulting
Orthopaedie GMBH) vs. Philippine Shoe Expo Marketing Corporation, G.R. in the cancellation of such mark.
No. 194307, November 20, 2013 ● Accordingly, the cancellation case was dismissed for being moot and
G.R. No. 194307| November 30, 2013 | Perlas-Bernabe | Topic/Keywords academic.
Digest by: NAME OF DIGESTER ● The dismissal paved way for the publication of the subject application in
the IPO e-Gazette on February 2, 2007.
Petitioners: Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock
● Again PSEMC, filed its protest. And the parties were required to submit
Orthopaedie GMBH)
position papers before Bureau of Legal Affairs (BLA) who rendered
Respondents: Philippine Shoe Expo Marketing Corporation
judgment is favor of PSEMC, thus, ordering the rejection of application of
GMBH.
Recit-ready Digest + Doctrine:
● GMBH appealed to the IPO Director General, who reversed the BLA's
Petitioner applied to be the registered owner of the mark “BIRKENSTOCK.”
decision on the ground that PSEMC's failure to file the 10th Year DAU.
Respondent sought to have the cancellation of such mark alleging that it was the
● The respondent appealed before the Court of Appeals, who then,
owner of the mark “BIRKENSTOCK AND DEVICE.” However respondent did not file
reversed the IPO Director General's decision.
its 10th year Declaration of Annual Use which resulted in the cancellation of its mark.
● The CA also agreed with PSEMC that GMBH's documentary evidence,
The cancellation was thus dismissed. This then allowed the publication of the
being mere photocopies, were submitted in violation of Section 8.1 Office
application of petitioner. WON the petitioner can have the mark now registered? YES
order No. 79, series of 2005 Rules on Inter Partes Proceedings).
Respondent is deemed to have abandoned the mark when it failed to file the 10th
Issue/s:
Year DAU for Registration on or before the lawful period. As a consequence, it was
● Whether or not the subject marks should be allowed registration in the
deemed to have abandoned or withdrawn any right or interest over the mark
name of petitioner? - YES
“BIRKENSTOCK”. Clearly, it is not the application or registration of a trademark that
vests ownership thereof, but it is the ownership of a trademark that confers the right
Ratio:
to register the same. Here, petitioner was able to establish that it is the owner of the
● Respondent is deemed to have abandoned the mark when it failed to file
mark “BIRKENSTOCK”. It has used it in commerce long before respondent was able
the 10th Year DAU for Registration on or before the lawful period.
to register the same here in the Philippines. It must be emphasized that registration
o As a consequence, it was deemed to have abandoned or
of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not
withdrawn any right or interest over the mark “BIRKENSTOCK”.
the owner of the trademark, he has no right to apply for its registration. Registration
● Petitioner has duly established its true and lawful ownership of the mark
merely creates a prima facie presumption of the validity of the registration.
“BIRKENSTOCK”.
● Under Sec. 2 of RA 166, in order to register a trademark, one must be the
Facts: owner thereof and must have actually used the mark in commerce in the
● Birkenstock Orthopaedie GMBH and Co. KG (GMBH) [Petitioner], a Philippines for 2 months prior to the application for registration.
corporation duly organized and existing under the laws of Germany, ● The registration of a trademark is not a mode of acquiring ownership.
applied for various trademark registrations before the IPO ● If the applicant is not the owner of the trademark, he has no right to apply
o one of which is "BIRKENSTOCK" with filing date of March 11, for its registration. Registration merely creates a prima facie presumption
1994. of validity of the registration, of the registrant’s ownership of the
● However, registration proceedings of the subject application was trademark, and of the exclusive right to the use thereof.
suspended in view of an existing registration of the mark ● Clearly, it is not the application or registration of a trademark that vests
"BIRKENSTOCK AND DEVICE" under Registration No. 56334 dated ownership thereof, but it is the ownership of a trademark that confers the
October 21, 1993 in the name of Show Town International and Industrial right to register the same.
Corp., the predecessor-in-interest of Philippine Shoe Expo Marketing ● Here, petitioner was able to establish that it is the owner of the mark
Corporation (PSEMC)[Respondent]. “BIRKENSTOCK”. It has used it in commerce long before respondent was
● In this regard, on May 27, 1997, respondent filed a petition for the able to register the same here in the Philippines.
cancellation of Registration No. 56334 on the ground that it is the lawful ● It must be emphasized that registration of a trademark, by itself, is not a
and rightful owner of the Birkenstock mark. mode of acquiring ownership.
● During its pendency, however, respondent however failed to file the ○ If the applicant is not the owner of the trademark, he has no right
required 10th Year Declaration of Actual Use (10th Year DAU) for to apply for its registration.

Page 13 of 50
 ● Registration merely creates a prima facie presumption of the validity of
the registration.
● Such presumption, just like the presumptive regularity in the performance
of official functions, is rebuttable and must give way to evidence to the
contrary.
● Besides, petitioner has duly established its true and lawful ownership of
the mark “BIRKENSTOCK”.
● It submitted evidence relating to the origin and history of
“BIRKENSTOCK” and it use in commerce long before respondent was
able to register the same here in the Philippines.
● Petitioner also submitted various certificates of registration of the mark
“BIRKENSTOCK” in various countries and that it has used such mark in
different countries worldwide, including the Philippines.

Dispositive:
WHEREFORE, the petition is GRANTED. The Decision dated June 25, 2010 and
Resolution dated October 27, 2010 of the Court of Appeals in CA–G.R. SP No.
112278 are REVERSED and SET ASIDE. Accordingly, the Decision dated
December 22, 2009 of the IPO Director General is hereby REINSTATED.

SO ORDERED.

Page 14 of 50
Ecole De Cuisine Manille (Cordon Bleu of the Philippines), Inc. vs. Renaud
Cointreau & Cie, G.R. No. 185830, June 5, 2013 NOTE: SC said this case shall be resolved under the provisions of the old
G.R. No. | Date | Ponente | Topic/Keywords Trademark Law, R.A. No. 166, which was the law in force at the time of
Digest by: NAME OF DIGESTER Cointreau’s application for registration of the subject mark.

Petitioners: ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE

PHILIPPINES), INC.,
Respondents: RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V Facts:
● On June 21, 1990, Cointreau, a partnership registered under the laws of
Cointreau, a partnership registered under the laws of France, filed before the DTI a France, filed before the (now defunct) Bureau of Patents, Trademarks,
trademark application for the mark “LE CORDON BLEU & DEVICE.” The application and Technology Transfer (BPTTT) of the Department of Trade and
was filed pursuant to Section 37 of RA No. 166. Petitioner Ecole filed an opposition Industry a trademark application for the mark "LE CORDON BLEU &
to the subject application, averring that it is the owner of the mark “LE CORDON DEVICE" for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30
BLEU ECOLE DE CUISINE MANILLE,” which it has been using since 1948. The of the International Classification of Goods and Services for the Purposes
petitioner also averred that Cointreau’s use of the subject mark will actually create of Registrations of Marks ("Nice Classification") (subject mark). The
confusion, Mistake, and deception to buying public. Cointreau filed its answer application was filed pursuant to Section 37 of Republic Act No. 166, as
claiming to be the true owner if the subject mark. It averred that Le Cordon Bleu is a amended (R.A. No. 166), on the basis of Home Registration No.
culinary school of worldwide acclaim which was established in Paris, France in 1895. 1,390,912, issued on November 25, 1986 in France. Bearing Serial No.
It also has trained students from more than 80 nationalities, including Ecole’s 72264, such application was published for opposition in the March-April
directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of 1993 issue of the BPTTT Gazette and released for circulation on May 31,
being the exclusive owner of the subject mark is a fraudulent misrepresentation. 1993.
● On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed
Bureau of Legal Affairs (BLA) sustained Ecole’s opposition. . On appeal, the IPO
an opposition to the subject application, averring that: (a) it is the owner
Director General reversed and set aside the BLA’s decision, thus granting Cointreu’s of the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which
appeal and allowing the registration of the subject mark on the ground that under RA it has been using since 1948 in cooking and other culinary activities,
166, actual use in the Phil is not necessary to acquire ownership of the mark. The
including in its restaurant business; and (b) it has earned immense and
CA affirmed the IPO Director General’s Decision in toto. invaluable goodwill such that Cointreau’s use of the subject mark will
actually create confusion, mistake, and deception to the buying public as
WON Cointreau is the true and lawful owner of the subject mark and thus, entitled to to the origin and sponsorship of the goods, and cause great and
have the same registered under its name - YES irreparable injury and damage to Ecole’s business reputation and
goodwill as a senior user of the same.
It is clear that actual use in commerce is also the test of ownership but the mark must ● On October 7, 1993, Cointreau filed its answer claiming to be the true and
not have been so appropriated by another. Nevertheless, foreign marks which are lawful owner of the subject mark. It averred that: (a) it has filed
not registered are still accorded protection against infringement and/or unfair applications for the subject mark’s registration in various jurisdictions,
competition. At this point, it is worthy to emphasize that the Philippines and France, including the Philippines; (b) Le Cordon Bleu is a culinary school of
Cointreau’s country of origin, are both signatories to the Paris Convention for the worldwide acclaim which was established in Paris, France in 1895; (c) Le
Protection of Industrial Property (Paris Convention). Thus, under Philippine law, a Cordon Bleu was the first cooking school to have set the standard for the
trade name of a national of a State that is a party to the Paris Convention, whether teaching of classical French cuisine and pastry making; and (d) it has
or not the trade name forms part of a trademark, is protected without the obligation trained students from more than eighty (80) nationalities, including
of filing or registration. It is also clear that at the time Ecole started using the subject Ecole’s directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that
mark, the same was already being used by Cointreau, albeit abroad, of which Ecole’s Ecole’s claim of being the exclusive owner of the subject mark is a
directress was fully aware, being an alumna of the latter’s culinary school. Hence, fraudulent misrepresentation.
Ecole cannot claim any tinge of ownership whatsoever over the subject mark as ● During the pendency of the proceedings, Cointreau was issued
Cointreau is the true and lawful owner thereof. Certificates of Registration Nos. 60631 and 54352 for the marks
"CORDON BLEU & DEVICE" and "LE CORDON BLEU PARIS 1895 &
DEVICE" for goods and services under classes 21 and 41 of the Nice
Classification, respectively.
● Bureau of Legal Affairs’s Ruling:

Page 15 of 50
 o The BLA of the IPO sustained Ecole’s opposition to the subject ● Under Section 2 of R.A. No. 166, in order to register a trademark, one
mark, necessarily resulting in the rejection of Cointreau’s must be the owner thereof and must have actually used the mark in
application.9 While noting the certificates of registration obtained commerce in the Philippines for two (2) months prior to the application for
from other countries and other pertinent materials showing the registration. Section 2-A of the same law sets out to define how one goes
use of the subject mark outside the Philippines, the BLA did not about acquiring ownership thereof. Under Section 2-A, it is clear that
find such evidence sufficient to establishCointreau’s claim of actual use in commerce is also the test of ownership but the provision
prior use of the same in the Philippines. It emphasized that the went further by saying that the mark must not have been so appropriated
adoption and use of trademark must be in commerce in the by another. Additionally, it is significant to note that Section 2-A does not
Philippines and not abroad. It then concluded that Cointreau has require that the actual use of a trademark must be within the Philippines.
not established any proprietary right entitled to protection in the Thus, as correctly mentioned by the CA, under R.A. No. 166, one may be
Philippine jurisdiction because the law on trademarks rests upon an owner of a mark due to its actual use but may not yet have the right to
the doctrine of nationality or territoriality. register such ownership here due to the owner’s failure to use the same
o The BLA found that the subject mark, which was the in the Philippines for two (2) months prior to registration.
predecessor of the mark "LE CORDON BLEU MANILLE" has ● Nevertheless, foreign marks which are not registered are still accorded
been known and used in the Philippines since 1948 and protection against infringement and/or unfair competition. At this point, it
registered under the name "ECOLE DE CUISINE MANILLE is worthy to emphasize that the Philippines and France, Cointreau’s
(THE CORDON BLEU OF THE PHILIPPINES), INC." on May 9, country of origin, are both signatories to the Paris Convention for the
1980 Protection of Industrial Property (Paris Convention). Articles 6bis and 8
● IPO Director General Ruling: of the Paris Convention
o The IPO Director General reversed and set aside the BLA’s ● under the Paris Convention, the Philippines is obligated to assure
decision, thus, granting Cointreau’s appeal and allowing the nationals of the signatory-countries that they are afforded an effective
registration of the subject mark. He held that while Section 2 of protection against violation of their intellectual property rights in the
R.A. No. 166 requires actual use of the subject mark in Philippines in the same way that their own countries are obligated to
commerce in the Philippines for at least two (2) months before accord similar protection to Philippine nationals. "Thus, under Philippine
the filing date of the application, only the owner thereof has the law, a trade name of a national of a State that is a party to the Paris
right to register the same, explaining that the user of a mark in Convention, whether or not the trade name forms part of a trademark, is
the Philippines is not ipso facto its owner. Moreover, Section 2- protected "without the obligation of filing or registration.’"
A of the same law does not require actual use in the Philippines ● In the instant case, it is undisputed that Cointreau has been using the
to be able to acquire ownership of a mark. subject mark in France since 1895, prior to Ecole’s averred first use of
o The IPO General considered Cointreau’s undisputed use of the same in the Philippines in 1948, of which the latter was fully aware
such mark since 1895 for its culinary school in Paris, France (in thereof. In fact, Ecole’s present directress, Ms. Lourdes L. Dayrit (and
which petitioner’s own directress, Ms. Lourdes L. Dayrit, had even its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le
trained in 1977). Contrarily, he found that while Ecole may have Cordon Bleu culinary school in Paris, France. Cointreau was likewise the
prior use of the subject mark in the Philippines since 1948, it first registrant of the said mark under various classes, both abroad and in
failed to explain how it came up with such name and mark. The the Philippines, having secured Home Registration No. 1,390,912 dated
IPO Director General therefore concluded that Ecole has November 25, 1986 from its country of origin, as well as several
unjustly appropriated the subject mark, rendering it beyond the trademark registrations in the Philippines.
mantle of protection of Section 4(d) of R.A. No. 166. ● On the other hand, Ecole has no certificate of registration over the subject
● the CA affirmed the IPO Director General’s Decision in toto mark but only a pending application covering services limited to Class 41
of the Nice Classification, referring to the operation of a culinary school.
Issue/s: Its application was filed only on February 24, 1992, or after Cointreau filed
● W/N the CA was correct in upholding the IPO Director General’s ruling its trademark application for goods and services falling under different
that Cointreau is the true and lawful owner of the subject mark and thus, classes in 1990. Under the foregoing circumstances, even if Ecole was
entitled to have the same registered under its name. - YES the first to use the mark in the Philippines, it cannot be said to have validly
Ratio: appropriated the same.

Page 16 of 50
 ● It is thus clear that at the time Ecole started using the subject mark, the
same was already being used by Cointreau, albeit abroad, of which
Ecole’s directress was fully aware, being an alumna of the latter’s culinary
school in Paris, France. Hence, Ecole cannot claim any tinge of
ownership whatsoever over the subject mark as Cointreau is the true and
lawful owner thereof. As such, the IPO Director General and the CA were
correct in declaring Cointreau as the true and lawful owner of the subject
mark and as such, is entitled to have the same registered under its name.
● In any case, the present law on trademarks, Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines, as
amended, has already dispensed with the requirement of prior actual use
at the time of registration. Thus, there is more reason to allow the
registration of the subject mark under the name of Cointreau as its true
and lawful owner.
● As a final note, "the function of a trademark is to point out distinctly the
origin or ownership of the goods (or services) to which it is affixed; to
secure to him, who has been instrumental in bringing into the market a
superior article of merchandise, the fruit of his industry and skill; to assure
the public that they are procuring the genuine article; to prevent fraud and
imposition; and to protect the manufacturer against substitution and sale
of an inferior and different article as his product." As such, courts will
protect trade names or marks, although not registered or properly
selected as trademarks, on the broad ground of enforcing justice and
protecting one in the fruits of his toil.
Dispositive:
WHEREFORE,, the petition is DENIED. Accordingly, the December 23, 2008
Decision of the Court of Appeals in CA-G.R. SP No. 104672 is hereby AFFIRMED
in toto.

SO ORDERED.

Page 17 of 50
 UFC Philippines, Inc. [now merged with Nutri-Asia, Inc. as the surviving ● Nutri-Asia, Inc. is a corporation duly organized and existing under
entity] vs. Barrio Fiesta Manufacturing Corporation, G.R. No. 198889, Philippine laws. It is the emergent entity in a merger with UFC
January 20, 2016
G.R. No. | Date | Ponente | Topic/Keywords Philippines, Inc. that was completed on February 11, 2009. Barrio
Digest by: NAME OF DIGESTER Fiesta Manufacturing Corporation is likewise a corporation
Petitioners: UFC Philipines organized and existing under Philippine laws.
Respondents: Fiesta BArrio Manufacturing ● Bario Fiesta filed an application for the trademark “PAPA BOY &
DEVICE” for goods under Class 30, specifically for “lechon
Recit-ready Digest + Doctrine:
sauce.” Nutri Asia filed with the IPO-BLA a Verified Notice of
Bario Fiesta filed an application for the trademark “PAPA BOY & DEVICE” for goods
specifically for “lechon sauce.” Nutri Asia filed with the IPO-BLA a Verified Notice of Opposition to the above-mentioned application alleging that the
Opposition to the above-mentioned application alleging that the mark “PAPA” is for mark “PAPA” is for use on banana catsup and other similar goods
use on banana catsup and other similar goods was first used in 1954 by Neri Papa, was first used in 1954 by Neri Papa, and thus, was taken from his
and thus, was taken from his surname. After using the mark “PAPA” for about twenty-
seven (27) years, Neri Papa subsequently assigned the mark “PAPA” to Hernan D. surname. After using the mark “PAPA” for about twenty-seven
Reyes who, on September 17, 1981, filed an application to register said mark “PAPA” (27) years, Neri Papa subsequently assigned the mark “PAPA” to
for use on banana catsup, chili sauce, achara, banana chips, and instant ube Hernan D. Reyes who, on September 17, 1981, filed an
powder. On November 2006, the registration was assigned to Nutri-Asia. The application to register said mark “PAPA” for use on banana
company has not abandoned the use of the mark “PAPA” and the variations thereof
as it has continued their use up to the present. Nutri Asia further allege that the mark catsup, chili sauce, achara, banana chips, and instant ube
“PAPA BOY & DEVICE” is identical to the mark “PAPA” owned by Opposer and duly powder.
registered in its favor, particularly the dominant feature thereof. With the dominant ● On November 7, 2006, the registration was assigned to Nutri-Asia.
feature of Barrio Fieta’s applicant’s mark “PAPA BOY & DEVICE”, which is Nutri
The company has not abandoned the use of the mark “PAPA” and
asia’s “PAPA” and the variations thereof, confusion and deception is likely to result.
the variations thereof as it has continued their use up to the
There was infringement. present. Nutri Asia further allege that the mark “PAPA BOY &
DEVICE” is identical to the mark “PAPA” owned by Opposer and
Under the Dominancy Test, the dominant features of the competing marks are
considered in determining whether these competing marks are confusingly similar. duly registered in its favor, particularly the dominant feature
Greater weight is given to the similarity of the appearance of the products arising thereof. With the dominant feature of Barrio Fieta’s applicant’s
from the adoption of the dominant features of the registered mark, disregarding minor mark “PAPA BOY & DEVICE”, which is Nutri asia’s “PAPA” and
differences. The visual, aural, connotative, and overall comparisons and impressions
the variations thereof, confusion and deception is likely to result.
engendered by the marks in controversy as they are encountered in the realities of
the marketplace are the main considerations. ● The consuming public, particularly the unwary customers, will be
A scrutiny of Nutri Asia’s and Barrio Fiesta’s respective marks would show that the deceived, confused, and mistaken into believing that respondent-
IPO-BLA and the IPO Director General correctly found the word “PAPA” as the applicants goods come from Nutri-Asia, which is particularly true
dominant feature of Nutri Asia’s mark “PAPA KETSARAP.” Contrary to Barrio since Southeast Asia Food Inc., sister company of Nutri-Asia,
Fiesta’s contention, “KETSARAP” cannot be the dominant feature of the mark as it have been major manufacturers and distributors of lechon sauce
is merely descriptive of the product. Furthermore, it is the “PAPA” mark that has been
since 1965 under the registered trademark “Mang Tomas”.
in commercial use for decades and has established awareness and goodwill among
● The IPO-BLA rendered a Decision rejecting respondent’s
consumers.
application for “PAPA BOY & DEVICE.” Barrio Fiesta filed an
appeal before the IPO Director General but was denied. The CA,
however, reversed the decision of the IPO-BLA and ruled to grant
Facts: the application.

Page 18 of 50
Issue/s: sale, distribution, advertising of any goods or services including
● Whether or not by using the “dominant feature” of Nutri-Asia’s “PAPA” other preparatory steps necessary to carry out the sale of any
mark for “PAPA BOY & DEVICE” would constitute trademark
infringement.- YES goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive x x x.
Ratio: ● A scrutiny of Nutri Asia’s and Barrio Fiesta’s respective marks
● In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., we defined a would show that the IPO-BLA and the IPO Director General
trademark as “any distinctive word, name, symbol, emblem, sign, correctly found the word “PAPA” as the dominant feature of Nutri
or device, or any combination thereof, adopted and used by a Asia’s mark “PAPA KETSARAP.” Contrary to Barrio Fiesta’s
manufacturer or merchant on his goods to identify and distinguish contention, “KETSARAP” cannot be the dominant feature of the
them from those manufactured, sold, or dealt by others.” We held mark as it is merely descriptive of the product. Furthermore, it is
that a trademark is “an intellectual property deserving protection the “PAPA” mark that has been in commercial use for decades
by law.” and has established awareness and goodwill among consumers.
● In this case, the findings of fact of the highly technical agency, the ● We likewise agree with the IPO-BLA that the word “PAPA” is also
Intellectual Property Office, which has the expertise in this field, the dominant feature ofBarrio Fiesta’s “PAPA BOY & DEVICE”
should have been given great weight by the Court of Appeals. mark subject of the application, such that “the word ‘PAPA’ is
● Again, this Court discussed the dominancy test and confusion of written on top of and before the other words such that it is the first
business in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,48 and word/figure that catches the eyes.”49 Furthermore, as the IPO
we quote: Director General put it, the part of Barrio Fiesta’s mark which
● The Dominancy Test focuses on the similarity of the prevalent appears prominently to the eyes and ears is the phrase “PAPA
features of the competing trademarks that might cause confusion BOY” and that is what a purchaser of Barrio Fiesta’s product
or deception. It is applied when the trademark sought to be would immediately recall, not the smiling hog.
registered contains the main, essential and dominant features of
the earlier registered trademark, and confusion or deception is
likely to result. Duplication or imitation is not even required; neither Dispositive:
WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23, 2011
is it necessary that the label of the applied mark for registration Decision and the October 4, 2011 Resolution of the Court of Appeals in CA-G.R.
should suggest an effort to imitate. The important issue is whether SP No. 107570, and REINSTATE the March 26, 2008 Decision of the Bureau of
the use of the marks involved would likely cause confusion or Legal Affairs of the Intellectual Property Office (IPO-BLA) and the January 29,
mistake in the mind of or deceive the ordinary purchaser, or one 2009 Decision of the Director General of the IPO.
who is accustomed to buy, and therefore to some extent familiar
with, the goods in question. Given greater consideration are the
aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales
outlets, and market segments. The test of dominancy is now
explicitly incorporated into law in Section 155.1 of R.A. No. 8293
which provides —
● 155.1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container or
a dominant feature thereof in connection with the sale, offering for
Page 19 of 50
Shang Properties Realty Corp. vs. St. Francis Development Corp., G.R. No. ● In 1992, St. Francis Development Corp. (SFDC) the developer of St.
190706, July 21, 2014 Francis Square Commercial Center, filed 3 separate complaints before
G.R. No. | Date | Ponente | Topic/Keywords the IPO-Bureau of Legal Affairs (BLA) against Shang Properties Realty
Digest by: Kee (from Pamana digest) Corp. (Shang Corp.) and Shang Properties Inc. (Shang Inc.)
o IPV Case: IP violation for unfair competition, false or fraudulent
Petitioners: Shang Properties Realty Corporation (formerly The Shang Grand declaration, and damages arising from Shang Corp and Shang
Tower Corporation and Shang Properties, Inc (formerly EDSA Properties Holdings, Inc’s use and filing of applications for the registration of the
Inc.)
marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS
Respondents: St. Francis Development Corporation (SFDC)
SHANGRI-LA PLACE”;
o St. Francis Towers IP Case: opposing the Shang Corp and
Recit-ready Digest + Doctrine: Shang Inc’s application for registration of the mark “THE ST.
SFDC, the developer of St. Francis Square Commercial Center, filed 3 separate
FRANCIS TOWERS” for use relative to the SFDC’s business,
complaints before the IPO-Bureau of Legal Affairs (BLA) against Shang Properties
particularly the construction of buildings or structures for
Realty Corp. (Shang Corp.) and Shang Properties Inc. (Shang Inc.) It alleges that residential and office purposes; and
petitioners committed unfair competition by using and filing of applications for the o St. Francis Shangri-La IP Case: opposing the Shang Corp and
registration of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS
Shang Inc’s application for registration of the mark “THE ST.
SHANGRI-LA PLACE” because SFDC has been using the mark “St. Francis” to
FRANCIS SHANGRI-LA PLACE.”
identify development projects located at Ortigas Center and its continuous use of
● In all these cases, SFDC alleged that it has used the mark “St. Francis”
the mark “ST. FRANCIS” has gained substantial goodwill with the public that
to identify development projects located at Ortigas Center, e.g. St.
consumers and traders closely identify the mark with their projects. Shang Corp and
Francis Square Commercial Center, a shopping mall called the “St.
Shang Inc. argued that they could register those names because the mark “St.
Francis Square” and a mixed- use realty project plan that includes the St.
Francis” was geographically descriptive of the goods or services for which it is
Francis Towers. SFDC added that as a result of its continuous use of the
intended to be used. Both Shang and SFDC’s properties were along St. Francis
mark “ST. FRANCIS”, it has gained substantial goodwill with the public
Avenue and St. Francis St. (now known as Bank Drive), both within Ortigas.
that consumers and traders closely identify the mark with their projects.
● Shang Corp and Shang Inc. argued that they could register those names
SC ruled that Shang Corp and Shang Inc. are not guilty of unfair competition in using
because SFDC cannot claim exclusive use of the mark “St. Francis.” This
the marks “The St. Francis Towers” and “The St. Francis Shangri-La Place” because
is due to the fact that it was geographically descriptive of the goods or
there is no bad faith or fraud on their part. Under jurisprudence, the “true test” of
services for which it is intended to be used. Both Shang and SFDC’s
unfair competition is “whether the acts of the defendant have the intent of deceiving
properties were along St. Francis Avenue and St. Francis St. (now known
or are calculated to deceive the ordinary buyer making his purchases under the
as Bank Drive), both within Ortigas.
ordinary conditions of the particular trade to which the controversy relates.” Here,
● In the IPV case: The BLA ruled in favor of SFDC and said that Shang
there is no fraud; and, as a result, there can be no unfair competition. The CA held
committed acts of unfair competition by using “St. Francis Towers”
that SFDC had established exclusive use of “St. Francis” and had established
but not in “St. Francis Shangri-La Place.”
goodwill. However, CA disregarded the fact that “St. Francis” is geographically-
● In the St. Francis Tower IP Case, BLA denied Shang’s application for
descriptive – therefore, its exclusive appropriability is barred unless there is already
registration of the mark “The St. Francis Towers” because it is confusingly
a second meaning acquired. Secondary meaning is established when a descriptive
similar to SFDC’s “St. Francis” marks which are registered in the DTI and
mark no longer causes the public to associate the goods with a particular place, but
SFDC had a better right over the use of that mark because it had
to associate the goods with a particular source. SFDC was also unable to prove that
continuous usage for a long period of time.
it had acquired a secondary meaning and an exclusive right to the “St. Francis” mark.
● In the St. Francis Shangri-La IP Case, BLA allowed Shang’s registration
Even if SFDC had been using “St. Francis” since 1992, the use thereof was merely
of the mark “The St. Francis Shangri-La Place” because Shang appended
confined to its reality projects within Ortigas. As its use of the mark is clearly limited
the word “Shangri-La” to its composite mark to distinguish it from that of
to a certain locality, it cannot be said that there was substantial commercial use of
SFDC. This removed any likelihood of confusion that may arise from the
the same recognized all throughout the country.
contemporaneous use by both parties of the mark “St. Francis.”
● Both parties appealed IPV case, Shang appealed St. Francis Towers IP
Case, but no one appealed the St. Francis Shangri-La IP case which
lapsed into finality.
Facts (kinda long as it involves 3 cases)

Page 20 of 50
 ● The IPO Director-General ruled that Shang cannot register the mark “The ● A “geographically descriptive term” is any noun or adjective that
St. Francis Towers” and that Shang Corp and Inc. are not guilty of unfair designates geographical location and would tend to be regarded by
competition in its use of the mark “The St. Francis Shangri-La Place.” buyers as descriptive of the geographic location of origin of the goods or
● The IPO Director-General also ruled that Shang DID NOT commit unfair services. Descriptive geographical terms are in the “public domain” in the
competition through the use of “St. Francis Towers”, because SFDC sense that every seller should have the right to inform customers of the
cannot be entitled to exclusive use even in Ortigas because it was a geographical origin of his goods.
geographically descriptive mark. SFDC, Shang Corp., and Shang Inc. all ● To determine WON the geographic term is descriptively used, the
wanted to use the mark “St. Francis” to identify/associate their question to be answered is: Is the mark the name of the place or region
projects/business with the location – St. Francis Ave. and St. Francis St. from which the goods actually come? If yes, then the geographic term
● CA ruled in favor of SFDC and said that Shang Corp and Inc. were guilty is probably used in a descriptive sense, and secondary meaning is
of unfair competition with both “The St. Francis Towers” and “The St. required for protection.
Francis Shangri-La Place”. “St. Francis” was not geographically ● Secondary meaning is established when a descriptive mark no longer
descriptive and that SFDC has exclusively and continuously used that causes the public to associate the goods with a particular place, but to
mark for more than a decade. associate the goods with a particular source. In other words, it is not
enough that a geographically-descriptive mark partakes of the name of a
Issue/s: place known generally to the public to be denied registration as it is also
● W/N Shang Corp and Shang Inc. are guilty of unfair competition in using necessary to show that the public would make a goods/place
the marks “The St. Francis Towers” and “The St. Francis Shangri-La association. There has to be a belief that the goods for which the mark
Place” – No because there is no bad faith or fraud on their part. is sought to be registered originate in that place.
● Taking these into consideration, SC ruled that Shang Corp and Inc are
Ratio: not guilty of unfair competition. Even assuming that goodwill had been
● The IP code provides for the rules and regulations on unfair competition. established for the mark of “St. Francis”, this circumstance, by and of
Sec. 168.1 qualifies who is entitled to protection against unfair itself, does not equate to fraud under the parameters of Sec. 168 of the
competition.1 Sec. 168.2 describes who may be found guilty of and IP Code.
subject to an action of unfair competition.2 ● No evidence was presented to show that Shang Corp and Inc. gave their
● Under jurisprudence, unfair competition means the act of passing off (or goods/services the general appearance that it was SFDC who was
palming off) or attempting to pass off upon the public of the goods or offering the same. There was also no proof that Shang Corp and Inc
business of one person as the goods or business of another with the end made any false statement, or commit acts tending to discredit the
and probable effect of deceiving the public. The “true test” of unfair goods/services offered by SFDC. In short, the element of fraud – the core
competition has thus been “whether the acts of the defendant have of unfair competition – had not been established.
the intent of deceiving or are calculated to deceive the ordinary buyer ● SFDC was also unable to prove compliance with the requirements in Sec.
making his purchases under the ordinary conditions of the particular trade 123.2 for it to conclude that it had acquired a secondary meaning and an
to which the controversy relates.” exclusive right to the “St. Francis” mark.
● Thus, the one filing a case of unfair competition has to prove the ○ Under Sec. 123.2 of the IP code, specific requirements have to
existence of fraud, or the intent to deceive, actual or probable, be fulfilled to conclude that a geographically descriptive mark
determined through a judicious scrutiny of the factual circumstances has acquired secondary meaning:
attendant to a particular case. i. The secondary meaning must have arisen as a result
● Here, there is no fraud; and, as a result, there can be no unfair of substantial commercial use of a mark in the
competition. The CA held that SFDC had established exclusive use of Philippines;
“St. Francis” and had established goodwill. However, CA disregarded the ii. Such use must result in the distinctiveness of the mark
fact that “St. Francis” is geographically-descriptive – therefore, its insofar as the goods or the products are concerned;
exclusive appropriability is barred unless there is already a second
meaning acquired.

1 2
“[a] person who has identified in the mind of the public the goods he manufactures or deals Any person who shall employ deception or any other means contrary to good faith by
in, his business or services from those of others, whether or not a registered mark is which he shall pass off the goods manufactured by him or in which he deals, or his business,
employed, has a property right in the goodwill of the said goods, business or services so or services for those of the one having established such goodwill, or who shall commit any
identified, which will be protected in the same manner as other property rights.” acts calculated to produce said result.
Page 21 of 50
 iii. Proof of substantially exclusive and continuous
commercial use in the Philippines for 5 years before
the date on which the claim of distinctiveness is made.
● Even if SFDC had been using “St. Francis” since 1992, the use thereof
was merely confined to its reality projects within Ortigas. As its use of the
mark is clearly limited to a certain locality, it cannot be said that there was
substantial commercial use of the same recognized all throughout the
country.
● There was also no showing of any mental recognition in the buyers’ minds
that products connected with the mark “St. Francis” are associated with
the same source – SFDC.
● Without showing a clear goods/services-association between the realty
projects in the Ortigas area and SFDC, it cannot be concluded that there
is a secondary meaning to the “St. Francis.”
● Since the notoriety of Shangri-La’s brand, the reasonable conclusion is
that the use of “The St. Francis Towers” and “The St. Francis Shangri-La
Place” was only meant to identify/associate their projects with the
geographical location.

Dispositive:
WHEREFORE, the petition is GRANTED. The Decision dated December 18, 2009
of the Court of Appeals in C.A.-G.R. S.P. No. 105425 is hereby REVERSED and
SET ASIDE. Accordingly, the Decision dated September 3, 2008 of the Intellectual
Property Office-Director General is REINSTATED. SO ORDERED

Page 22 of 50
 Asia Brewery, Inc. vs. Court of Appeals, G.R. No. 103543, July 5, 1993 ● CA: reversed. Found ABI guilty of trademark infringement and unfair
G.R. No. | Date | GRIÑO-AQUINO, J. | Trademark competition. The court permanently enjoined ABI from manufacturing,
Digest by:Lim putting up, selling, advertising, offering or announcing for sale, or
supplying Beer Pale Pilsen, or any similar preparation, manufacture or
Petitioners: ASIA BREWERY, INC
beer in bottles and under labels substantially identical with or like the said
Respondents: THE HON. COURT OF APPEALS and SAN MIGUEL bottles and labels of plaintiff San Miguel Corporation, or in bottles or
CORPORATION under labels which are calculated to deceive purchasers and consumers
into the belief that the beer is the product of SMC or which will enable
Recit-ready Digest + Doctrine:
others to substitute, sell or palm off the said beer of the defendant as and
SMC filed a complaint against ABI for infringement of trademark and unfair for the beer of the plaintiff-complainant. Furthermore, ABI was ordered to
competition for the competing beer products. RTC dismissed the complaint. CA render an accounting and pay SMC double the value of all the payments
reversed. Hence, this petition for review. Does ABI's BEER PALE PILSEN label or
derived by it from operations of its business and the sale of goods bearing
"design" infringe upon SMC's SAN MIGUEL PALE PILSEN WITH RECTANGULAR
the mark "Beer Pale Pilsen" estimated at 5 million pesos and to recall all
MALT AND HOPS DESIGN? NO. The fact that the words PALE PILSEN are part of its products bearing the mark "Beer Pale Pilsen" as well as all labels,
ABI’s trademark does not constitute an infringement of SMC’s trademark: SAN signs, prints, packages, wrappers, receptacles and advertisements
MIGUEL PALE PILSEN, for PALE PILSEN are generic words descriptive of the color
bearing the infringing mark and all plates, molds, materials and other
(PALE), of a type of beer (PILSEN), which is a light bohemian beer with a strong
means of making the same to the Court authorized to execute this
hops flavor that originated in the City of Pilsen in Czechoslovakia and became judgment for destruction.
famous in the middle Ages. PILSEN is a primarily geographically descriptive word;
● Upon MR, the decision was only modified in its wording but had the same
hence non-registrable and not appropriable by any beer manufacturer. Trademark
effect as the original decision of the CA
Law provides under Section 4: the owner of trademark, tradename or service-mark
Issue/s:
used to distinguish his goods, business or services from the goods, business or
● WON ABI committed trademark infringement and unfair competition? No
services of others shall have the right to register the same. The words PALE PILSEN
Ratio:
may not be appropriated by SMC for its exclusive use even if they are part of its
Trademark Infringement
registered trademark: SAN MIGUEL PALE PILSEN. There is no unfair competition
● Infringement of trademark is a form of unfair competition Sec. 22 of
as there was no passing off committed by ABI. This is unlikely to happen for
Republic Act No. 166, otherwise known as the Trademark Law, defines
consumers or buyers of beer generally order their beer by brand. In supermarkets
what constitutes infringement:
and tiendas, beer is ordered by brand, and the customer surrenders his empty
● Sec. 22. Infringement, what constitutes. — Any person who shall use,
replacement bottles or pays a deposit to guarantee the return of the empties. If his
without the consent of the registrant, any reproduction, counterfeit, copy
empties are SAN MIGUEL PALE PILSEN, he will get SAN MIGUEL PALE PILSEN
or colorable imitation of any registered mark or trade-name in connection
as replacement. In sari-sari stores, beer is also ordered from the tindera by brand.
with the sale, offering for sale, or advertising of any goods, business or
The same is true in restaurants, pubs and beer gardens — beer is ordered from the
services on or in connection with which such use is likely to cause
waiters by brand. The buyers SMC's beer will not be deceived by ABI. SAN MIGUEL
confusion or mistake or to deceive purchasers or others as to the source
PALE PILSEN has virtually monopolized the domestic beer market for the past
or origin of such goods or services, or identity of such business; or
hundred years. As such, those who have been drinking no other beer but SAN
reproduce, counterfeit, copy or colorably imitate any such mark or trade-
MIGUEL PALE PILSEN these many years certainly know their beer too well to be
name and apply such reproduction, counterfeit, copy, or colorable
deceived by a newcomer in the market. If they gravitate to ABI's cheaper beer, it will
imitation to labels, signs, prints, packages, wrappers, receptacles or
not be because they are confused or deceived, but because they find the competing
advertisements intended to be used upon or in connection with such
product to their taste.
goods, business or services, shall be liable to a civil action by the
registrant for any or all of the remedies herein provided.
Facts: ● This definition implies that only registered trade marks, trade names and
● San Miguel Corporation (SMC) filed a complaint against Asia Brewery service marks are protected against infringement or unauthorized use by
Inc. (ABI) for infringement of trademark and unfair competition on account another or others. The use of someone else's registered trademark, trade
of the latter's BEER PALE PILSEN or BEER NA BEER product which has name or service mark is unauthorized, hence, actionable, if it is done
been competing with SMC's SAN MIGUEL PALE PILSEN for a share of "without the consent of the registrant."
the local beer market ● Comparison of the registered Trademark of SMC and ABI
● RTC: dismissed

Page 23 of 50
 In this test, similarity in size, form and color, while relevant, is not
SAN MIGUEL ASIA BREWERY
conclusive. If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is likely to
result, infringement takes place. Duplication or imitation is not necessary;
nor it is necessary that the infringing label should suggest an effort to
SAN MIGUEL PALE PILSEN BEER PALE PILSEN or BEER NA BEER imitate. The question at issue in cases of infringement of trademarks is
whether the use of the marks involved would be likely to cause confusion
or mistakes in the mind of the public or deceive purchasers.
San Miguel Pale Pilsen with Rectangular amber colored steinie bottles of 320 ml. There is no similarity in the dominant features of SMC and ABI
Hops and Malt Design capacity with a white painted rectangular
label

ASPECT SMC ASIA BREWERY

A rectangular design [is] bordered by what ". . . a rectangular design bordered by what
appears to be minute grains arranged in appear to be buds of flowers with leaves.
rows of three in which there appear in each The dominant feature is 'Beer' written
corner hop designs. At the top is a phrase across the upper portion of the rectangular
written in small print 'Reg. Phil. Pat. Off.' design. The phrase 'Pale Pilsen' appears BOTTLE a slender tapered neck fat, bulging neck
and at the bottom 'Net Contents: 320 Ml.' immediately below in smaller block letters.
The dominant feature is the phrase 'San To the left is a hop design and to the right,
Miguel' written horizontally at the upper written in small prints, is the phrase 'Net
portion. Below are the words 'Pale Pilsen' Contents 320 ml.' immediately below 'Pale
written diagonally across the middle of the Pilsen' is the statement written in three lines “PALE PILSEN” LABEL printed in bold and laced half the size and
rectangular design. In between is a coat of 'Especially brewed and bottled by' (first letters along a diagonal printed horizontally on
arms and the phrase 'Expertly Brewed.' line), 'Asia Brewery Incorporated' (second band the band
The 'S' in 'San' and the 'M' of 'Miguel,' 'P' of line), and 'Philippines' (third line)."
'Pale' and 'Pilsen' are written in Gothic
letters with fine strokes of serifs, the kind
that first appeared in the 1780s in England
and used for printing German as Name of manufacturer “Bottled by the San Miguel “Especially brewed and
distinguished from Roman and Italic. Below Brewery, Philippines” bottled by Asia
'Pale Pilsen' is the statement 'And Bottled Brewery
by' (first line, 'San Miguel Brewery' (second Incorporated,Philippine
line), and 'Philippines' (third line)." s”

Slogan at the back No slogan “BEER NA BEER!”

Logo at the back SMC logo No logo

Cap Stamped with coat of arms Stamped with the

and words “San Miguel name “BEER” in the
Brewery Philippines” center, surrounded by
● Infringement is determined by the "test of dominancy" rather than by encircling the same “Asia Brewery
differences or variations in the details of one trademark and of another.

Page 24 of 50
 person can appropriate to himself exclusively any word or expression,
Incorporated
Philippines” properly descriptive of the article, its qualities, ingredients or
characteristics, and thus limit other persons in the use of language
appropriate to the description of their manufactures, the right to the use
of such language being common to all. This also applies to trade names
● The true test in determining if the words used is descriptive is not whether
they are exhaustively descriptive of the article designated, but whether in
Price difference Php 7.00 (wtf) Php 4.25 themselves, and as they are commonly used by those who understand
their meaning, they are reasonably indicative and descriptive of the thing
intended. If they are thus descriptive, and not arbitrary, they cannot be
● The dominant feature of SMC's trademark is the name of the product: appropriated from general use and become the exclusive property of
SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate anyone.
serifs at the beginning and end of the letters "S" and "M" on an amber There is no unfair competition
background across the upper portion of the rectangular design. On the ● SMC claims that the "trade dress" of BEER PALE PILSEN is "confusingly
other hand, the dominant feature of ABI's trademark is the name: BEER similar" to its SAN MIGUEL PALE PILSEN because both are bottled in
PALE PILSEN, with the word "Beer" written in large amber letters, larger 320 ml. steinie type, amber-colored bottles with white rectangular labels.
than any of the letters found in the SMC label. ● Unfair competition is the employment of deception or any other means
● The word "BEER" does not appear in SMC's trademark, just as the words contrary to good faith by which a person shall pass off the goods
"SAN MIGUEL" do not appear in ABI's trademark. Hence, there is manufactured by him or in which he deals, or his business, or services,
absolutely no similarity in the dominant features of both trademarks. for those of another who has already established goodwill for his similar
● Neither in sound, spelling or appearance can BEER PALE PILSEN be goods, business or services, or any acts calculated to produce the same
said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one result. The law further enumerates the more common ways of committing
who purchases BEER PALE PILSEN can possibly be deceived that it is unfair competition, thus:
SAN MIGUEL PALE PILSEN. Sec. 29. . . .
● The bottles of SMC and ABI substantially differ in their appearance, the In particular, and without in any way limiting the scope of unfair competition, the following shall
be deemed guilty of unfair competition:
names of the manufacturers are prominently displayed on their respective (a) Any person, who in selling his goods shall give them the general appearance of goods of
bottles, they have different slogans, logos and price points. The fact that another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
the words pale pilsen are part of ABI's trademark does not constitute an packages in which they are contained, or the devices or words thereon, or in any other feature
of their appearance, which would be likely to influence purchasers to believe that the goods
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or
pilsen" are generic words descriptive of the color of a type of beer which who otherwise clothes the goods with such appearance as shall deceive the public and defraud
is a light bohemian beer with a strong hops flavor that originated in the another of his legitimate trade, or any subsequent vendor of such goods or any agent of any
City of Pilsen in Czechoslovakia and became famous in the Middle Ages. vendor engaged in selling such goods with a like purpose.
(b) Any person who by any artifice, or device, or who employs any other means calculated to
"Pilsen" is a primarily geographically descriptive word, hence, non- induce the false belief that such person is offering the services of another who has identified
registerable and not appropriable by any beer manufacturer. such services in the mind of the public; or
● As a rule, the owner of trade-mark, trade-name or service-mark used to (c) Any person who shall make any false statement in the course of trade or who shall commit
any other act contrary to good faith of a nature calculated to discredit the goods, business or
distinguish his goods, business or services from the goods, business or services of another.
services of others has the right to register the same. However, an The test to determine if there unfair competition is whether the public is likely to be deceived.
exception to this are marks or trade names which are merely descriptive Nothing less than conduct tending to pass off one man's goods or business as that of another
or deceptively misdescriptive of them, or when applied to or used in will constitute unfair competition. Actual or probable deception and confusion on the part of
the customers by reason of defendant's practices must always appear.
connection with the goods, business or services of the applicant is There is no confusing similarity between the products of SMC and ABI
primarily geographically descriptive or deceptively misdescriptive of the ● The use of ABI of the steinie bottle, similar but not identical to the SAN
goods or business of the owner, or is primarily merely a surname.
MIGUEL PALE PILSEN bottle, is not unlawful. SMC did not invent but
● A word or a combination of words which is merely descriptive of an article
merely borrowed the steinie bottle from abroad and it claims neither
of trade, or of its composition, characteristics, or qualities, cannot be patent nor trademark protection for that bottle shape and design. The
appropriated and protected as a trademark to the exclusion of its use by steinie bottle is a standard type of bottle originally developed in the United
others. . . . inasmuch as all persons have an equal right to produce and
States by the Glass Container Manufacturer's Institute and therefore
vend similar articles, they also have the right to describe them properly
lacks exclusivity. Secondly, the shape was never registered as a
and to use any appropriate language or words for that purpose, and no trademark.
Page 25 of 50
● SMC's being the first to use the steinie bottle does not give it a vested SMC claim unfair competition arising from the fact that ABI's BEER PALE
right to use it to the exclusion of everyone else. Being of functional or PILSEN is sold, like SMC's SAN MIGUEL PALE PILSEN in amber steinie
common use, and not the exclusive invention of any one, it is available to bottles.
all who might need to use it within the industry. Nobody can acquire any There is no passing off
exclusive right to market articles supplying simple human needs in ● The record does not bear out SMC's apprehension that BEER PALE
containers or wrappers of the general form, size and character commonly PILSEN is being passed off as SAN MIGUEL PALE PILSEN. This is
and immediately used in marketing such articles. The protection against unlikely to happen for consumers or buyers of beer generally order their
imitation is limited to nonfunctional features beer by brand. As pointed out by ABI, in supermarkets and tiendas, beer
● ABI does not use SMC's steinie bottle nor did it copy it. ABI makes its is ordered by brand, and the customer surrenders his empty replacement
own steinie bottle which has a fat bulging neck to differentiate it from bottles or pays a deposit to guarantee the return of the empties. If his
SMC's bottle. The amber color is a functional feature of the beer bottle. empties are SAN MIGUEL PALE PILSEN, he will get SAN MIGUEL PALE
All bottled beer produced in the Philippines is contained and sold in PILSEN as replacement. In sari-sari stores, beer is also ordered from the
amber-colored bottles because amber is the most effective color in tindera by brand. The same is true in restaurants, pubs and beer gardens
preventing transmission of light and provides the maximum protection to — beer is ordered from the waiters by brand.
beer. A merchant cannot be enjoined from using a type or color of bottle ● The buyers SMC's beer will not be deceived by ABI. SAN MIGUEL PALE
if it has the useful purpose of protecting the contents from the deleterious PILSEN has virtually monopolized the domestic beer market for the past
effects of light rays. Moreover, no one may have a monopoly of any color. hundred years. As such, those who have been drinking no other beer but
This also applies to the white labels used by ABI. It explained that it used SAN MIGUEL PALE PILSEN these many years certainly know their beer
the color white for its label because white presents the strongest contrast too well to be deceived by a newcomer in the market. If they gravitate to
to the amber color of ABI's bottle; it is also the most economical to use on ABI's cheaper beer, it will not be because they are confused or deceived,
labels, and the easiest to "bake" in the furnace. No one can have a but because they find the competing product to their taste.Moreover,
monopoly of the color amber for bottles, nor of white for labels, nor of the SMC's brand or trademark: "SAN MIGUEL PALE
rectangular shape which is the usual configuration of labels. Needless to ● PILSEN" is not infringed by ABI's mark: "BEER NA BEER" or "BEER
say, the shape of the bottle and of the label is unimportant. What is all PALE PILSEN." ABI makes its own bottle with a bulging neck to
important is the name of the product written on the label of the bottle for differentiate it from SMC's bottle, and prints ABI's name in 3 places on
that is how one beer may be distinguished from the others said bottle (front, back and bottle cap) to prove that it has no intention to
● The 320 ml capacity of ABI's beer was not meant to copy SMC's because pass of its "BEER" as "SAN MIGUEL."
that bottle capacity is the standard prescribed under Metrication Circular ● The del monte case which involved catsup is not applicable to this case.
No. 778, dated 4 December 1979, of the Department of Trade, Metric catsup, a common household item which is bought off the store shelves
System Board. by housewives and house help who, if they are illiterate and cannot
● In this case, the names of the competing products are clearly different identify the product by name or brand, would very likely identify it by mere
and their respective sources are prominently printed on the label and on recollection of its appearance. Since the competitor, Sunshine Sauce
other parts of the bottle, mere similarity in the shape and size of the Mfg. Industries, not only used recycled Del Monte bottles for its catsup
container and label, does not constitute unfair competition. The steinie but also used labels which were "a colorable imitation" of Del Monte's
bottle is a standard bottle for beer and is universally used. SMC did not label, we held that there was infringement of Del Monte's trademark and
invent it nor patent it. Although SMC's bottle is registered under R.A. No. unfair competition by Sunshine. However, this would not apply to beer
623 (as amended by RA 5700, An Act to Regulate the Use of Duly which is not usually picked from a store shelf but ordered by brand by the
Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other beer drinker himself from the storekeeper or waiter in a pub or restaurant.
Similar Containers) it simply prohibits manufacturers of other foodstuffs Dispositive:
from the unauthorized use of SMC's bottles by refilling these with their WHEREFORE, finding the petition for review meritorious, the same is hereby
products Registration of SMC's beer bottles did not give SMC a patent granted. The decision and resolution of the Court of Appeals in CA-G.R. CV No.
on the steinie or on bottles of similar size, shape or color. 28104 are hereby set aside and that of the trial court is REINSTATED and
● Most containers are standardized because they are usually made by the AFFIRMED. Costs against the private respondent.
same manufacturer. The manufacturers of these foodstuffs have equal SO ORDERED.
right to use these standards tins, bottles and jars for their products. Only Narvasa, C.J., Bidin, Regalado, Romero, Nocon, Bellosillo and Melo, JJ., concur.
their respective labels distinguish them from each other. Just as no milk
producer may sue the others for unfair competition because they sell their Feliciano, J., took no part.
milk in the same size and shape of milk can which he uses, neither may
Page 26 of 50
Page 27 of 50
 Great White Shark Enterprises, Inc. vs. Caralde, Jr Petitioner Great White Shark (GWS), a foreign corporation domiciled in Florida,
G.R. No. 192294 |November 21, 2012 | Perlas-Bernabe, J. | Trademark USA, opposed the application, claiming to be the owner of the mark consisting of
Digest by: Katalina a representation of a shark in color, known as “GREG NORMAN LOGO”
(associated with apparel worn and promoted by Australian golfer Greg Norman).
Petitioners: Great White Shark Enterprises, Inc.
Respondents: Danilo M. Caralde Jr. GWS alleged that being a world famous mark which is pending registration before
the BLA since February 19, 2002, 4 the confusing similarity between the two (2)
Recit-ready Digest + Doctrine: marks is likely to deceive or confuse the purchasing public into believing that
Caralde applied for registration of his trademark “SHARK & LOGO” before the BLA, Caralde's goods are produced by or originated from it, or are under its sponsorship,
IPO. It was opposed by Great White Shark (GWS), a US domiciled corporation, to its damage and prejudice.
claiming to be the owner of a mark consisting of a representation of a shark in color,
known as the “GREG NORMAN LOGO”. Caralde answered, and explained that the Caralde answered that the subject marks are distinctively different from one
marks differ in appearance, style, shape, size, format, color, ideas counted by marks, another and easily distinguishable. When compared, the only similarity in the
and even in the goods carried by the parties. marks is in the word "shark" alone, differing in other factors such as appearance,
style, shape, size, format, color, ideas counted by marks, and even in the goods
The BLA Director sided with GWS, rejecting Caralde’s application. The IPO Director carried by the parties.
General affirmed such decision. The CA however, reversed.
Pending the proceedings, GWS’ pending trademark application was granted. It
Before the SC, GWS maintained the two (2) competing marks are confusingly similar was issued Certificate of Registration No. 4-2002-001478 for clothing, headgear,
in appearance, shape and color scheme because of the dominant feature of a shark and footwear, including socks, shoes and its components.
which is likely to deceive or cause confusion to the purchasing public, suggesting an
intention on Caralde's part to pass-off his goods as that of Great White Shark and to The BLA director rejected Caralde’s application for the following reasons:
ride on its goodwill. - The dominant feature in opposer's mark is the illustration of a shark
drawn plainly. On the other hand, the dominant feature in
The Supreme Court found no confusing similarity between the subject marks, respondent's mark is a depiction of shark shaded darkly, with its body
regardless of the Dominancy and Holistic tests. While both marks use the shape of designed in a way to contain the letters "A" and "R" with the tail
a shark, the Court noted distinct visual and aural differences between them. In Great suggestive of the letter "K."
White Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with - There are some differences between the competing marks, but their
the use of green, yellow, blue and red lines/strokes. dominant features (illustration of a shark) are of such degree that the
overall impression it creates is that the two competing marks are at
In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in letters least strikingly similar to each other ,hence, the likelihood of
outlined in the form of a shark with the letter "S" forming the head, the letter "H" confusion of goods is likely to occur
forming the fins, the letters "A" and "R" forming the body, and the letter "K" forming - Both marks fall under Class 25
the tail. In addition, the latter mark includes several more elements such as the word o GREG NORMAN LOGO – clothing apparel particularly hats,
"SHARK" in a different font underneath the shark outline, layers of waves, and a tree shirts, pants
on the right side, and liberally used the color blue with some parts in red, yellow, o SHARK & LOGO – footwear, particularly slippers, shoes and
green and white. The whole design is enclosed in an elliptical shape with two linings sandals.
- the goods to which the parties use their marks belong to the same
The visual dissimilarities between the two (2) marks are evident and significant, class and are related to each other.
negating the possibility of confusion in the minds of the ordinary purchaser, - As to GWS’ claim for its mark’s fame, however, evidence was
especially considering the distinct aural difference between the marks. insufficient.

Facts: The IPO director general affirmed the final rejection of Caralde’s application.
Respondent Caralde filed before the Bureau of Legal Affairs, Intellectual Property Additional findings include:
Office, a trademark application seeking to register the mark “SHARK & LOGO” - GWS was first in applying for registration (Feb v. July 2002)
for his manufactured goods under Class 25, such as slippers, shoes and sandals. - Furthermore, Great White Shark's mark consisted of an illustration
of a shark while Caralde's mark had a composite figure forming a
silhouette of a shark. Thus, as to content, word, sound and meaning,
Page 28 of 50
 both marks are similar, barring the registration of Caralde's mark cause confusion, mistake, and deception in the mind of the ordinary purchaser,
under Section 123.1 (d) of RA 8293 (Intellectual Property Code). and gives more consideration to the aural and visual impressions created by the
marks on the buyers of goods, giving little weight to factors like prices, quality,
Before the CA, however, the decision was reversed and set aside, directing the sales outlets, and market segments.
IPO to grant Caralde’s application for the ff. reasons:
- No confusing similarity between the subject marks even if both In contrast, the Holistic or Totality Test considers the entirety of the marks as
contained the shape of a shark applied to the products, including the labels and packaging, and focuses not only
- Caralde’s – more fanciful and colorful, contains several elements on the predominant words but also on the other features appearing on both labels
which are easily distinguishable from that of GWS to determine whether one is confusingly similar to the other as to mislead the
- Considering the price disparity, there is no likelihood of confusion as ordinary purchaser. The "ordinary purchaser" refers to one "accustomed to buy,
they travel in different channels of trade and therefore to some extent familiar with, the goods in question."

Hence this case. Irrespective of both tests, the Court finds no confusing similarity between the
subject marks. While both marks use the shape of a shark, the Court noted distinct
Before the Supreme Court, GWS contended that the two (2) competing marks are visual and aural differences between them. In Great White Shark's "GREG
confusingly similar in appearance, shape and color scheme because of the NORMAN LOGO," there is an outline of a shark formed with the use of green,
dominant feature of a shark which is likely to deceive or cause confusion to the yellow, blue and red lines/strokes, to wit:
purchasing public, suggesting an intention on Caralde's part to pass-off his goods
as that of Great White Shark and to ride on its goodwill

Issue/s:

Whether Caralde’s SHARK & LOGO is confusingly similar with GWS’ GREG
NORMAN LOGO - NO

Ratio:

A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily

and is capable of identifying and distinguishing the goods of one manufacturer or
seller from those of another. Apart from its commercial utility, the benchmark of In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in letters
trademark registrability is distinctiveness. outlined in the form of a shark with the letter "S" forming the head, the letter "H"
forming the fins, the letters "A" and "R" forming the body, and the letter "K" forming
Thus, a generic figure, as that of a shark in this case, if employed and designed in the tail. In addition, the latter mark includes several more elements such as the
a distinctive manner, can be a registrable trademark device, subject to the word "SHARK" in a different font underneath the shark outline, layers of waves,
provisions of the IP Code. and a tree on the right side, and liberally used the color blue with some parts in
red, yellow, green and white. The whole design is enclosed in an elliptical shape
Corollarily, Section 123.1 (d) of the IP Code provides that a mark cannot be with two linings, thus:
registered if it is identical with a registered mark belonging to a different proprietor
with an earlier filing or priority date, with respect to the same or closely related
goods or services, or has a near resemblance to such mark as to likely deceive or
cause confusion.

TEST TO DETERMINE SIMILARITY/ LIKELIHOOD OF CONFUSION

In determining similarity and likelihood of confusion, case law has developed the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses
on the similarity of the dominant features of the competing trademarks that might
Page 29 of 50
As may be gleaned from the foregoing, the visual dissimilarities between the two
(2) marks are evident and significant, negating the possibility of confusion in the
minds of the ordinary purchaser, especially considering the distinct aural difference
between the marks.

Finally, there being no confusing similarity between the subject marks, the matter
of whether Great White Shark's mark has gained recognition and acquired goodwill
becomes unnecessary. Besides, both the BLA Director and the IPO Director
General have ruled that Great White Shark failed to meet the criteria under Rule
102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names
and Marked or Stamped Containers to establish that its mark is well-known, and
the latter failed to show otherwise.

Dispositive:
WHEREFORE, the Court resolves to DENY the instant petition and
AFFIRM the assailed December 14, 2009 Decision of the Court of Appeals (CA)
for failure to show that the CA committed reversible error in setting aside the
Decision of the IPO Director General and allowing the registration of the mark
"SHARK & LOGO" by respondent Danilo M. Caralde, Jr. cACEHI

SO ORDERED.

Page 30 of 50
 Levi Strauss & Co. vs. Clinton Apparelle, Inc ● During the hearing for TRO, Clinton Apparelle was not able to appear
G.R. No. 138900 | Sept. 20, 2005 | Tinga | Trademark because it was not notified of such hearing. Despite so, the trial court
Digest by: NAME OF DIGESTER granted the TRO. After hearing, the trial court also granted the writ of
preliminary injunction.
Petitioners: LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC.,
● Clinton Apparelle filed a Motion to Dismiss and a Motion for
Respondents: CLINTON APPARELLE, INC.
Reconsideration. It was denied.
● Clinton Apparelle filed a Rule 65 petition before the CA. The CA granted
Recit-ready Digest + Doctrine: Levi Strauss filed a Complaint for Trademark
the petition because the trial court failed to follow the procedure for the
Infringement with TRO and WPI against Clinton Apparelle. It claims that Clinton
issuance of a TRO. Clinton Apparelle was not duly notified.
Appparelle was manufacturing and distributing Paddocks, which used a similar
● Furthermore, it held that the issuance of the WPI was questionable since
device similar to that of the Dockers and Design Trademark that it owns. Clinton
Levi Strauss failed to sufficiently establish its material and substantial
Apparelle failed to appear during the hearing for TRO because it was not notified.
right and that they could compensated for the injuries that they may
The trial court granted the TRO and subsequently issued the WPI. Clinton Apparelle
sustain.
filed a Rule 65 petition before the CA. It was granted. Levi Strauss claims that it was
● Lastly, the issuance of the injunction would effectively shut down the
able to establish its right to the trademark based on its Certificate of Registration and
business of Clinton Apparelle.
that it will suffer grave and irreparable injury because of trademark dilution.
● Hence, this petition. Levi Strauss claims that they have a legal right to
"Dockers and Design" trademark on the Certificate of Registration issued
INJUNCTION IS IMPROPER. There is no clear and unmistakable right. First, a
in their favor by the Bureau of Patents, Trademarks and Technology
Certificate of Registration is only a prima facie evidence of the registrant’s ownership
Transfer. They also claim that there is urgent necessity because of
of the mark and of the exclusive right to use the same in connection with the goods
trademark dilution.
or services and those that are related thereto specified in the certificate. Second, the
Issue/s:
Certificate of Registration covers both the Word Mark and the Logo. It is unclear if
● W/N the issuance of the WPI is proper
the Certificate can prevent the use of the fraction of the trademark registered. It is
also unclear if the use of a portion of the registered trademark would constitute a
Ratio:
material invasion of the owner’s right.
● Injunction is a remedy to protect or enforce an actual right.
● Based on RA 8293, a Certificate of Registration is prima facie evidence
NO TRADEMARK DILUTION. Trademark dilution is the lessening of the capacity of
of the validity of the registration, the registrant’s ownership of the mark
a famous mark to identify and distinguish goods or services. The owner of a famous
and of the exclusive right to use the same in connection with the goods
mark is entitled to an injunction "against another person’s commercial use in
or services and those that are related thereto specified in the certificate.
commerce of a mark or trade name, if such use begins after the mark has become
● RA 8293 also grants the owner of the registered mark the exclusive right
famous and causes dilution of the distinctive quality of the mark." In this case, Levi
to prevent all third parties not having the owner’s consent from using in
Strauss did not prove the aforementioned requirements.
the course of trade identical or similar signs for goods or services which
are identical or similar to those in respect of which the trademark is
Facts: registered if such use results in a likelihood of confusion.
● Levi Strauss filed a Complaint for Trademark Infringement, Injunction and ● In this case, however, Levi Strauss’ registered trademark is composed of
Damages against Clinton Apparelle. 2 elements:
● The Complaint alleges that Levi Strauss is the owner, by prior adoption ○ Word Mark: Dockers
and use since 1986, of the internationally famous "Dockers and Design" ○ Wing shaped design or logo
trademark. ● There is only one registration for both features of the trademark, hence,
● It was evidenced by its registrations in various member countries of the it should be considered as one unit.
Paris Convention. In the PH, it has a certificate of registration. ● For Clinton Apparelle, it uses
● Levi Strauss first used the Dockers and Design Trademark in the PH in ○ Paddocks as Word Mark
1988. ○ Similar logo
● It discovered that a brand name Paddocks was using a device which was ● It is not evident whether the single registration of the trademark "Dockers
substantially similar to that of the Dockers and Design Trademark. It was and Design" confers on the owner the right to prevent the use of a fraction
being used without its consent. It found out that it was manufactured by thereof in the course of trade. It is also unclear whether the use without
Clinton Apparelle. the owner’s consent of a portion of a trademark registered in its entirety
constitutes material or substantial invasion of the owner’s right.
Page 31 of 50
 ● It is likewise not settled whether the wing-shaped logo, as opposed to the
word mark, is the dominant or central feature of petitioners’ trademark—
the feature that prevails or is retained in the minds of the public—an
imitation of which creates the likelihood of deceiving the public and
constitutes trademark infringement.
● Trademark dilution is the lessening of the capacity of a famous mark to
identify and distinguish goods or services, regardless of the presence or
absence of: (1) competition between the owner of the famous mark and
other parties; or (2) likelihood of confusion, mistake or deception.
● Subject to the principles of equity, the owner of a famous mark is entitled
to an injunction "against another person’s commercial use in commerce
of a mark or trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of the mark." This is
intended to protect famous marks from subsequent uses that blur
distinctiveness of the mark or tarnish or disparage it.
● To be eligible for protection from dilution, there has to be a finding that:
(1) the trademark sought to be protected is famous and distinctive; (2) the
use by respondent of "Paddocks and Design" began after the petitioners’
mark became famous; and (3) such subsequent use defames petitioners’
mark.
● In this case, these were not sufficiently established by Levi Strauss.
● Additional Findings:
○ the trial court’s order granting the writ did not adequately detail
the reasons for the grant.
○ the damages the petitioners had suffered or continue to suffer
may be compensated in terms of monetary consideration
○ the damages the petitioners had suffered or continue to suffer
may be compensated in terms of monetary consideration

Dispositive: WHEREFORE, the instant petition is DENIED. The Decision of the

Court of Appeals dated 21 December 1998 and its Resolution dated 10 May 1999
are AFFIRMED. Costs against petitioners.

SO ORDERED.

Page 32 of 50
 W Land Holdings, Inc. vs. Starwood Hotels and Resorts Worldwide, Inc. provision of conference, meeting and social function facilities --
G.R. No. 222366 | December 04, 2017 | Perlas-Bernabe, J. | Topic/Keywords ENGAGED IN HOTEL AND LEISURE BUSINESS
Digest by: NAME OF DIGESTER ● April 20, 2006: W Land applied for the registration of its own "W" mark
for Class 36 which prompted Starwood to oppose the same
Petitioners: W LAND HOLDING, INC ● February 26, 2007: Starwood's application was granted and thus, the
Respondents: STARWOOD HOTELS AND RESORTS WORLDWIDE, INC "W" mark was registered in its name
● April 23, 2008 (Starwood Opposition): BLA found merit in Starwood's
Recit-ready Digest + Doctrine: opposition, and ruled that W Land's "W" mark is confusingly similar with
Starwood filed an application for the trademark “W” for its hotel services. 4 months Starwood's mark which had an earlier filing date (December 02, 2005)
later, W Land applied for registration of the same “W” mark for its realty business. ● May 29, 2009: W Land filed a Petition for Cancellation of Starwood's mark
This application for registration of W Land was opposed by Starwood. Starwood’s for Non-Use under Section 151.1 the IP Code, alleging that Starwood
application was granted, and thus the “W” mark was registered in its name. The BLA, failed to use its mark in the Philippines since it has no hotel or
in turn, found merit in Starwood’s opposition that W Land’s “W” mark is confusingly establishment in the Philippines rendering the services covered by
similar with Starwood’s “W” mark which had an earlier filing date. In turn, W Land its registration; and that Starwood's "W" mark application and
filed a Petition for Cancellation of Starwood’s mark for Non-Use, alleging that registration barred its own "W" mark application and registration for use
Starwood failed to use its mark in the PH since Starwood has no physical hotel or on real estate.
establishment in the PH rendering the services covered by its registration. In its ● STARWOOD DEFENSE: In its defense, Starwood denied having
defense, Starwood denied having abandoned the “W” mark. Starwood asserted that abandoned the subject mark on the ground of non-use, asserting that it
it conducts its hotel and leisure business through subsidiaries and franchisees. It filed with the Director of Trademarks a notarized Declaration of Actual
likewise displays its “W” mark in its interactive websites for its W Hotels which allows Use (DAU) with evidence of use which was not rejected.
PH residents to make reservations and bookings for their hotels. The issue is ○ Starwood argued that it conducts hotel and leisure business
whether or not accepting room reservations or bookings via its PH registered both directly and indirectly through subsidiaries and franchisees,
websites (interactive websites), coupled with PH telephone numbers and other and operates interactive websites for its W Hotels in order to
features accessible to PH residents, can be considered as “use” of its registered accommodate its potential clients worldwide.
mark. The SC held in the affirmative since Office Order No. 056-13, an amendatory ○ Apart from viewing agents, discounts, promotions, and other
rule to the Trademark Regulation issued by the IPO Director General, has included marketing fields being offered by Starwood, these interactive
the internet as an available medium. Specifically, downloaded pages from the websites allow Philippine residents to make reservations
website of the applicant or registrant clearly showing that the goods are being sold and bookings, which presuppose clear and convincing use
or the services are being rendered in the Philippines & for online sale, receipts of of the "W" mark in the Philippines.
sale of the goods or services rendered or other similar evidence of use, showing that ● BLA RULING: ruled in W Land's favor. The BLA found that the DAU and
the goods are placed on the market or the services are available in the Philippines the attachments thereto submitted by Starwood did not prove actual use
or that the transaction took place in the Philippines are now considered as evidence of the "W" mark in the Philippines, considering that the "evidences of use"
of actual use. However, it must be noted that mere exhibition of goods or services attached to the DAU refer to hotel or establishments that are located
over the internet, without more, is not enough to constitute actual use. it must be abroad. Aggrieved, Starwood appealed to IPO DG.
shown that the owner has actually transacted, or at the very least, intentionally ● IPO DG RULING: ruled in favor of Starwood. Contrary to the BLA's
targeted customers of a particular jurisdiction in order to be considered as having findings, the IPO DG found that Starwood's submission of its DAU and
used the trade mark in the ordinary course of his trade in that country. In this case, attachments, shows that the "W" mark still bears a "registered" status.
Starwood was able to prove its “use” by accepting booking reservations via its Therefore, there is a presumption that Starwood sufficiently complied with
website which was coupled with various PH elements. the registration requirements for its mark. The IPO DG likewise held that
the absence of any hotel or establishment owned by Starwood in the
Facts: Philippines bearing the "W" mark should not be equated to the absence
● December 02, 2005: Starwood filed before the IPO an application for of its use in the country, opining that Starwood's pieces of evidence,
registration of the trademark "W" for Classes 43 and 44 of the particularly its interactive website, indicate actual use in the Philippines.
International Classification of Goods and Services for the Purposes of the Aggrieved, W land filed a petition for review before the CA via R43.
Registration of Marks (Nice Classification) ● CA: affirmed IPO DG thereby ruling in favor of Starwood. the CA
○ Class 43 is for hotel, motel, resort and motor inn services, hotel observed that the hotel business is peculiar in nature in that the offer, as
reservation services, restaurant, bar and catering services, food well as the acceptance of room reservations or bookings wherever
and beverage preparation services, café and cafeteria services, in the world is an indispensable element. As such, the actual existence
Page 33 of 50
 or presence of a hotel in one place is not necessary before it can be appropriate action, by proof of, among others, non-use of the mark,
considered as doing business therein. In this regard, the CA except when excused
recognized that the internet has become a powerful tool in allowing ● The actual use of the mark representing the goods or services introduced
businesses to reach out to consumers in a given market without being and transacted in commerce over a period of time creates that goodwill
physically present thereat; thus, the IPO DG correctly held that which the law seeks to protect.
Starwood's interactive websites already indicate its actual use in the ○ For this reason, the IP Code, under Section 124.2, requires the
Philippines of the "W" mark. Finally, the CA echoed the IPO DG's finding registrant or owner of a registered mark to declare "actual
that since Starwood is the true owner of the "W" mark — as shown by the use of the mark" (DAU) and present evidence of such use
fact that Starwood had already applied for the registration of this mark within the prescribed period.
even before W Land was incorporated — its registration over the same ○ Failing in which, the IPO DG may cause the motu proprio
should remain valid, absent any showing that it has abandoned the use removal from the register of the mark's registration.
thereof. ● Also, any person, believing that he or she will be damaged by the
registration of a mark, which has not been used within the Philippines,
Issue: Whether or not accepting room reservations or bookings via its PH may file a petition for cancellation. Following the basic rule that he who
registered websites (interactive websites), coupled with PH telephone numbers alleges must prove his case, the burden lies on the petitioner to show
and other features accessible to PH residents, can be considered as “use” of its damage and non-use. CAIHT
registered mark. YES. ● The IP Code and the Trademark Regulations have not specifically
defined "use." However, it is understood that the "use" which the law
Ratio: requires to maintain the registration of a mark must be genuine, and not
● The IP Code defines a "mark" as "any visible sign capable of merely token.
distinguishing the goods (trademark) or services (service mark) of an ○ Based on foreign authorities, genuine use may be
enterprise." characterized as a bona fide use which results or tends to
● Case law explains that trademarks deal with the psychological function of result, in one way or another, into a commercial interaction
symbols and the effect of these symbols on the public at large. It is a or transaction "in the ordinary course of trade."
merchandising short-cut, and, whatever the means employed, the aim is ● The Trademark Regulations was amended by Office Order No. 056-13.
the same — to convey through the mark, in the minds of potential Particularly, Rule 205 now mentions certain items which shall be
customers, the desirability of the commodity upon which it appears. accepted as proof of actual use of the mark:
● Thus, the protection of trademarks as intellectual property is intended not ○ RULE 205. Contents of the Declaration and Evidence of Actual
only to preserve the goodwill and reputation of the business established Use. —
on the goods or services bearing the mark through actual use over a xxx
period of time, but also to safeguard the public as consumers against (c) The following shall be accepted as proof of actual use of the
confusion on these goods or services. mark:
● Trademarks perform three distinct functions: (1) labels of the mark as these are used;
○ (1) they indicate origin or ownership of the articles to which they (2) downloaded pages from the website of the
are attached; applicant or registrant clearly showing that the
○ (2) they guarantee that those articles come up to a certain goods are being sold or the services are being
standard of quality; and rendered in the Philippines;
○ (3) they advertise the articles they symbolize (3) photographs (including digital photographs printed
● Berris Agricultural Co., Inc. v. Abyadang: The ownership of a trademark on ordinary paper) of goods bearing the marks as
is acquired by its registration and its actual use by the manufacturer these are actually used or of the stamped or marked
or distributor of the goods made available to the purchasing public. A container of goods and of the establishment/s where
certificate of registration of a mark, once issued, constitutes prima the services are being rendered;
facie evidence of the validity of the registration of the registrant's (4) brochures or advertising materials showing the
ownership of the mark, and of the registrant's exclusive right to use actual use of the mark on the goods being sold or
the same in connection with the goods or services and those that are services being rendered in the Philippines;
related thereto specified in the certificate. (5) for online sale, receipts of sale of the goods or
● However, the prima facie presumption brought about by the services rendered or other similar evidence of use,
registration of a mark may be challenged and overcome, in an showing that the goods are placed on the market
Page 34 of 50
 or the services are available in the Philippines or another's site, although no commercial activity is intended to be
that the transaction took place in the Philippines; pursued in the Philippines.
(6) copies of contracts for services showing the use of ● The IP Code expressly requires, the use of the mark must be "within
the mark. Computer printouts of the drawing or the Philippines.”
reproduction of marks will not be accepted as evidence ○ SECTION 151. Cancellation. — A petition to cancel a
of use. registration of a mark under this Act may be filed with the Bureau
(d) The Director may, from time to time, issue a list of acceptable of Legal Affairs by any person who believes that he is or will be
evidence of use and those that will not be accepted by the damaged by the registration of a mark under this Act as follows:
Office. xxx
● Office Order No. 056-13 was issued by the IPO DG, pursuant to his (c) At any time, if the registered owner of the mark without
delegated rule-making authority under Section 7 of the IP Code. 60 The legitimate reason fails to use the mark within the Philippines,
rationale for this issuance, per its whereas clauses, is to further the policy or to cause it to be used in the Philippines by virtue of a license
of the IPO to streamline administrative procedures in registering during an uninterrupted period of three (3) years or longer.
trademarks and in so doing, address the need to clarify what will be ● The hotel industry is no stranger to the developments and advances in
accepted as proof of use. technology. Like most businesses nowadays, hotels are utilizing the
● Based on the amended Trademark Regulations, it is apparent that internet to drive almost every aspect of their operations, most especially
the IPO has now given due regard to the advent of commerce on the the offering and accepting of room reservations or bookings, regardless
internet as acceptable proof of actual use. of the client or customer base.
● Cognizant of this current state of affairs, the Court agrees the use of a ● The CA explained this booking process in that the business
registered mark representing the owner's goods or services by transactions commence with the placing of room reservations,
means of an interactive website may constitute proof of actual use usually by or through a travel agent who acts for or in behalf of his
that is sufficient to maintain the registration of the same. Since the principal, the hotel establishment. The reservation is first
internet has turned the world into one vast marketplace, the owner of a communicated to the reservations and booking assistant tasked to
registered mark is clearly entitled to generate and further strengthen his handle the transaction. After the reservation is made, the specific
commercial goodwill by actively marketing and commercially transacting room reserved for the guest will be blocked and will not be offered
his wares or services throughout multiple platforms on the internet. to another guest. As such, on the specified date of arrival, the room
● The mark displayed over the website no less serves its functions of reserved will be available to the guest.
indicating the goods or services' origin and symbolizing the owner's ● In this accord, a hotel's website has now become an integral element
goodwill than a mark displayed in the physical market. Therefore, there is of a hotel business. Especially with the uptrend of international travel
no less premium to recognize actual use of marks through websites than and tourism, the hotel's website is now recognized as an efficient and
their actual use through traditional means. Indeed, as our world evolves, necessary tool in advertising and promoting its brand in almost every part
so too should our appreciation of the law. of the world. More so, interactive websites that allow customers or
● It must be emphasized, however, that the mere exhibition of goods or clients to instantaneously book and pay for, in advance,
services over the internet, without more, is not enough to constitute accommodations and other services of a hotel anywhere in the
actual use. world, regardless of the hotel's actual location, dispense with the
○ To reiterate, the "use" contemplated by law is genuine use need for travel agents or hotel employees to transact the
— that is, a bona fide kind of use tending towards a reservations for them.
commercial transaction in the ordinary course of trade. ● In effect, the hotel's website acts as a bridge or portal through which the
○ Since the internet creates a borderless marketplace, it must be hotel reaches out and provides its services to the client/customer
shown that the owner has actually transacted, or at the very anywhere in the world, with the booking transaction completed at the
least, intentionally targeted customers of a particular client/customer's own convenience.
jurisdiction in order to be considered as having used the ● As the CA noted, the actual existence or presence of a hotel in one
trade mark in the ordinary course of his trade in that place is NOT NECESSARY before it can be considered as doing
country. business therein.
○ A showing of an actual commercial link to the country is ● As earlier intimated, mere use of a mark on a website which can be
therefore imperative. Otherwise, an unscrupulous registrant accessed anywhere in the world will not automatically mean that the
would be able to maintain his mark by the mere expedient of mark has been used in the ordinary course of trade of a particular
setting up a website, or by posting his goods or services on country. Thus, the use of mark on the internet must be shown to result
Page 35 of 50
 into a WITHIN-STATE SCALE, or at the very least, discernibly intended Dispositive: WHEREFORE, the petition is DENIED. The Decision dated June 22,
to target customers that reside in that country. 2015 and the Resolution dated January 7, 2016 of the Court of Appeals in CA-
○ This being so, the use of the mark on an interactive website, G.R. SP No. 133825 are hereby AFFIRMED.
for instance, may be said to target local customers when
they contain specific details regarding or pertaining to the
target State, sufficiently showing an intent towards
realizing a within-State commercial activity or interaction.
○ These details may constitute:
■ a LOCAL contact phone number
■ a specific reference being available to LOCAL
customers
■ a specific LOCAL webpage
■ whether DOMESTIC language and currency is used
on the website
■ whether DOMESTIC payment methods are
accepted
IN THIS CASE...
● Starwood has proven that it owns Philippine registered domain names
(www.whotels.ph; www.wreservations.ph; www.whotel.ph;
www.wreservation.ph) for its website that showcase its mark.
● The website is readily accessible to Philippine citizens and
residents, where they can avail and book amenities and other services
in any of Starwood's W Hotels worldwide.
● Its website also readily provides a phone number for Philippine
consumers to call for information or other concerns.
● The website further uses the English language — considered as an
official language in this country — which the relevant market in the
Philippines understands and often uses in the daily conduct of affairs.
● In addition, the prices for its hotel accommodations and services can be
converted into the local currency or the Philippine Peso.
● Amidst all of these features, Starwood's "W" mark is prominently
displayed in the website through which consumers in the Philippines can
instantaneously book and pay for their accommodations, with immediate
confirmation, in any of its W Hotels.
● Furthermore, it has presented data showing a considerably growing
number of internet users in the Philippines visiting its website since
2003, which is enough to conclude that Starwood has established
commercially-motivated relationships with Philippine consumers.
● Taken together, these facts and circumstances show that Starwood's use
of its "W" mark through its interactive website is intended to produce a
discernible commercial effect or activity within the Philippines, or at the
very least, seeks to establish commercial interaction with local
consumers. Accordingly, Starwood's use of the "W" mark in its
reservation services through its website constitutes use of the mark
sufficient to keep its registration in force.

Page 36 of 50
 McDonald’s Corp. vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, August States. McDonald's spent P10.5 million in advertisement for "Big Mac"
18, 2004 hamburger sandwiches alone.
G.R. No. | Date | Ponente | Topic/Keywords ● Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a
Digest by: NAME OF DIGESTER domestic corporation which operates fast-food outlets and snack vans in
Metro Manila and nearby provinces. Respondent corporation's menu
Petitioners:MCDONALD'S CORPORATION and MCGEORGE FOOD includes hamburger sandwiches and other food items.Respondents
INDUSTRIES, INC. Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo,
Respondents: L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY,
Araceli Aycardo, and Grace Huerto ("private respondents") are the
RENE B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO, and
incorporators, stockholders and directors of respondent corporation.
GRACE HUERTO
● On 21 October 1988, respondent corporation applied with the PBPTT for
the registration of the "Big Mak" mark for its hamburger sandwiches.
Recit-ready Digest + Doctrine:
McDonald's opposed respondent corporation's application on the ground
Petitioner McDonald’s Corporation, a global chain of fast-food restaurants, is the
that "Big Mak" was a colorable imitation of its registered "Big Mac" mark
owner of the mark Big Mac for its double decker hamburger sandwich. McDonald’s
for the same food products. McDonald's also informed respondent
registered the mark in the Principal Register of the Philippine Bureau of Patents,
Francis Dy ("respondent Dy"), the chairman of the Board of Directors of
Trademarks and Technology (PBPTT). Respondent L.C. Big Mak Burger, Inc. is a
respondent corporation, of its exclusive right to the "Big Mac" mark and
domestic corporation which operates fast-food outlets and snack vans who applied
requested him to desist from using the "Big Mac" mark or any similar
for the registration of the mark “Big Mak”. Mcdonald’s opposed on the grounds of
mark.
colorable imitation. The RTC ruled in favor of McDonald’s, while the CA reversed,
● Having received no reply from respondent Dy, petitioners sued
applying the holistic test.Issue is w/n respondent corporation is liable for trademark
respondents in the Regional Trial Court for trademark infringement and
infringement and unfair competition. The Supreme Court ruled in favor of
unfair competition.
McDonald’s. In analyzing the likelihood of confusion between the marks Big Mac and
● Respondent’s contentions and Answer:
Big Mak, the SC applied the dominancy test in its analysis. The dominancy test
o admitted that they have been using the name "Big Mak Burger"
focuses on the similarity of the prevalent features of the competing trademarks that
for their fast-food business. Respondents claimed, however,
might cause confusion. The dominancy test considers the dominant features in the
that McDonald's does not have an exclusive right to the "Big
competing marks in determining whether they are confusingly similar. Under the
Mac" mark or to any other similar mark.
dominancy test, courts give greater weight to the similarity of the appearance of the
o Respondents point out that the Isaiyas Group of Corporations
product arising from the adoption of the dominant features of the registered mark,
("Isaiyas Group") registered the same mark for hamburger
disregarding minor differences. Courts will consider more the aural and visual
sandwiches with the PBPTT on 31 March 1979. One Rodolfo
impressions created by the marks in the public mind, giving little weight to factors
Topacio ("Topacio") similarly registered the same mark on 24
like prices, quality, sales outlets, and maret segments. If the competing trademark
June 1983, prior to McDonald's registration on 18 July 1985.
contains the main or essential or dominant features of another, and confusion and
o Alternatively, respondents claimed that they are not liable for
deception is likely to result, infringement takes place.
trademark infringement or for unfair competition, as the "Big
Mak" mark they sought to register does not constitute a
Facts: colorable imitation of the "Big Mac" mark. Respondents asserted
● Petitioner McDonald's Corporation is a corporation organized under the that they did not fraudulently pass off their hamburger
laws of Delaware, United States. McDonald's owns a family of marks sandwiches as those of petitioners' Big Mac hamburgers
including the "Big Mac" mark for its "double-decker hamburger sandwich." ● Petitioner’s contentions:
McDonald's registered this trademark with the United States Trademark o McDonald's is the exclusive owner of the "Big Mac" mark.
Registry on 16 October 1979. Based on this Home Registration, o Petitioners asserted that while the Isaiyas Group and Topacio
McDonald's applied for the registration of the same mark in the Principal did register the "Big Mac" mark ahead of McDonald's, the Isaiyas
Register of the then Philippine Bureau of Patents, Trademarks and Group did so only in the Supplemental Register of the PBPTT
Technology ("PBPTT"), now the Intellectual Property Office ("IPO"). and such registration does not provide any protection.
Pending approval of its application, McDonald's introduced its "Big Mac" McDonald's disclosed that it had acquired Topacio's rights to his
hamburger sandwiches in the Philippine market in September 1981. On registration in a Deed of Assignment dated 18 May 1981.
18 July 1985, the PBPTT allowed registration of the "Big Mac" mark in ● RTC ruling: RTC rendered judgment finding respondent corporation liable
the Principal Register based on its Home Registration in the United for trademark infringement and unfair competition. However, the RTC
dismissed the complaint against private respondents and the
Page 37 of 50
 counterclaim against petitioners for lack of merit and insufficiency of ● To establish trademark infringement, the following elements must be
evidence. shown: (1) the validity of plaintiff's mark; (2) the plaintiff's ownership of
● CA ruling: reversed the RTC ruling that under the definition of colorable the mark; and (3) the use of the mark or its colorable imitation by the
imitation, there is no sufficient similarity exists in both names, overall alleged infringer results in "likelihood of confusion." Of these, it is the
presentation, or essential, substantive, and distinctive parts that would element of likelihood of confusion that is the gravamen of trademark
likely mislead or confuse persons in the ordinary course of purchasing the infringement.
genuine article. The CA used the holistic test in comparing whether there
is likelihood of confusion between the two marks. On the Validity of the "Big Mac"Mark
o What the defendant corporation is using is not a trademark for and McDonald's Ownership of such Mark
its food product but a business or corporate name. Second,
defendant’s corporate or business name appearing in the food ● A mark is valid if it is "distinctive" and thus not barred from registration
packages and signages are written in silhouette red-orange under Section 4 of RA 166 ("Section 4"). However, once registered, not
letters with the “b” and “m” in upper case letters. Above the only the mark's validity but also the registrant's ownership of the mark is
words “Big Mak” are the upper case letters “L.C.”. Below the prima facie presumed.
words “Big Mak” are the words “Burger Inc”. Finally, the ● Respondents contend that of the two words in the "Big Mac" mark, it is
defendant’s food packages are made of plastic material only the word "Mac" that is valid because the word "Big" is generic and
o CA found no sufficient evidence that defendants-appellants descriptive (proscribed under Section 4[e]), and thus "incapable of
deliberately tried to pass off the goods manufactured by them exclusive appropriation
for those of plaintiffs-appellees. The mere suspected similarity ● The contention has no merit. The "Big Mac" mark, which should be
in the sound of the defendants-appellants' corporate name with treated in its entirety and not dissected word for word, is neither generic
the plaintiffs-appellees' trademark is not sufficient evidence to nor descriptive. On the contrary, "Big Mac" falls under the class of fanciful
conclude unfair competition. Defendants-appellants explained or arbitrary marks as it bears no logical relation to the actual
that the name "M[ak]" in their corporate name was derived from characteristics of the product it represents. As such, it is highly distinctive
both the first names of the mother and father of defendant and thus valid. Significantly, the trademark "Little Debbie" for snack cakes
Francis Dy, whose names are Maxima and Kimsoy. was found arbitrary or fanciful.
Issue/s: ● The Court also finds that petitioners have duly established McDonald's
● W/N respondent corporation is liable for trademark infringement and exclusive ownership of the "Big Mac" mark. Although Topacio and the
unfair competition - YES Isaiyas Group registered the "Big Mac" mark ahead of McDonald's,
Ratio: Topacio, as petitioners disclosed, had already assigned his rights to
● Section 22 ("Section 22) of Republic Act No. 166, as amended ("RA McDonald's. The Isaiyas Group, on the other hand, registered its
166"), the law applicable to this case,32 defines trademark infringement trademark only in the Supplemental Register. A mark which is not
as follows: registered in the Principal Register, and thus not distinctive, has no real
Infringement, what constitutes. — Any person who [1] shall use, without the protection. Indeed, we have held that registration in the Supplemental
consent of the registrant, any reproduction, counterfeit, copy or colorable imitation Register is not even a prima facie evidence of the validity of the
of any registered mark or trade-name in connection with the sale, offering for sale, registrant's exclusive right to use the mark on the goods specified in the
or advertising of any goods, business or services on or in connection with which certificate.
such use is likely to cause confusion or mistake or to deceive purchasers or others
as to the source or origin of such goods or services, or identity of such business;
On Types of Confusion
or [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade- ● Section 22 covers two types of confusion arising from the use of similar
name and apply such reproduction, counterfeit, copy, or colorable imitation to or colorable imitation marks, namely, confusion of goods (product
labels, signs, prints, packages, wrappers, receptacles or advertisements intended confusion) and confusion of business (source or origin confusion).
to be used upon or in connection with such goods, business or services, shall be ● The first is the confusion of goods "in which event the ordinarily prudent
liable to a civil action by the registrant for any or all of the remedies herein provided. purchaser would be induced to purchase one product in the belief that he
● Petitioners base their cause of action under the first part of Section 22, was purchasing the other." The other is the confusion of business: "Here
i.e. respondents allegedly used, without petitioners' consent, a colorable though the goods of the parties are different, the defendant's product is
imitation of the "Big Mac" mark in advertising and selling respondents' such as might reasonably be assumed to originate with the plaintiff, and
hamburger sandwiches. This likely caused confusion in the mind of the the public would then be deceived either into that belief or into the belief
purchasing public on the source of the hamburgers or the identity of the that there is some connection between the plaintiff and defendant which,
business. in fact, does not exist."
Page 38 of 50
On Whether Confusion of Goods and trademarks that might cause confusion. In contrast, the holistic test
Confusion of Business are Applicable requires the court to consider the entirety of the marks as applied to the
● Petitioners claim that respondents' use of the "Big Mak" mark on products, including the labels and packaging, in determining confusing
respondents' hamburgers results in confusion of goods, particularly with similarity.
respect to petitioners' hamburgers labeled "Big Mac." ● The Court of Appeals, in finding that there is no likelihood of confusion
● Petitioners also claim that respondents' use of the "Big Mak" mark in the that could arise in the use of respondents' "Big Mak" mark on
sale of hamburgers, the same business that petitioners are engaged in, hamburgers, relied on the holistic test.
results in confusion of business ● This Court, however, has relied on the dominancy test rather than
● Respondents assert that their "Big Mak" hamburgers cater mainly to the the holistic test. The dominancy test considers the dominant features in
low-income group while petitioners' "Big Mac" hamburgers cater to the the competing marks in determining whether they are confusingly similar.
middle and upper income groups. Even if this is true, the likelihood of Under the dominancy test, courts give greater weight to the similarity of
confusion of business remains, since the low-income group might be led the appearance of the product arising from the adoption of the dominant
to believe that the "Big Mak" hamburgers are the low-end hamburgers features of the registered mark, disregarding minor differences. Courts
marketed by petitioners. After all, petitioners have the exclusive right to will consider more the aural and visual impressions created by the marks
use the "Big Mac" mark. On the other hand, respondents would benefit in the public mind, giving little weight to factors like prices, quality, sales
by associating their low-end hamburgers, through the use of the "Big outlets and market segments.
Mak" mark, with petitioners' high-end "Big Mac" hamburgers, leading to ● Applying the dominancy test, the Court finds that respondents' use of the
likelihood of confusion in the identity of business. "Big Mak" mark results in likelihood of confusion. First, "Big Mak" sounds
● Respondents further claim that petitioners use the "Big Mac" mark only exactly the same as "Big Mac." Second, the first word in "Big Mak" is
on petitioners' double-decker hamburgers, while respondents use the exactly the same as the first word in "Big Mac." Third, the first two letters
"Big Mak" mark on hamburgers and other products like siopao, noodles in "Mak" are the same as the first two letters in "Mac." Fourth, the last
and pizza. Respondents also point out that petitioners sell their Big Mac letter in "Mak" while a "k" sounds the same as "c" when the word "Mak"
double-deckers in a styrofoam box with the "McDonald's" logo and is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus
trademark in red, block letters at a price more expensive than the "Caloocan" is spelled "Kalookan."
hamburgers of respondents. In contrast, respondents sell their Big Mak ● In short, aurally the two marks are the same, with the first word of both
hamburgers in plastic wrappers and plastic bags. Respondents further marks phonetically the same, and the second word of both marks also
point out that petitioners' restaurants are air-conditioned buildings with phonetically the same. Visually, the two marks have both two words and
drive-thru service, compared to respondents' mobile vans. six letters, with the first word of both marks having the same letters and
● These and other factors respondents cite cannot negate the undisputed the second word having the same first two letters. In spelling, considering
fact that respondents use their "Big Mak" mark on hamburgers, the same the Filipino language, even the last letters of both marks are the same.
food product that petitioners' sell with the use of their registered mark "Big ● Clearly, respondents have adopted in "Big Mak" not only the dominant
Mac." Whether a hamburger is single, double or triple-decker, and but also almost all the features of "Big Mac." Applied to the same food
whether wrapped in plastic or styrofoam, it remains the same hamburger product of hamburgers, the two marks will likely result in confusion in the
food product. Even respondents' use of the "Big Mak" mark on non- public mind. Certainly, "Big Mac" and "Big Mak" for hamburgers create
hamburger food products cannot excuse their infringement of petitioners' even greater confusion, not only aurally but also visually.
registered mark, otherwise registered marks will lose their protection ● Indeed, a person cannot distinguish "Big Mac" from "Big Mak" by their
under the law. sound. When one hears a "Big Mac" or "Big Mak" hamburger
● The registered trademark owner may use his mark on the same or similar advertisement over the radio, one would not know whether the "Mac" or
products, in different segments of the market, and at different price levels "Mak" ends with a "c" or a "k."
depending on variations of the products for specific segments of the ● Respondents' inability to explain sufficiently how and why they came to
market. The Court has recognized that the registered trademark owner choose "Big Mak" for their hamburger sandwiches indicates their intent to
enjoys protection in product and market areas that are the normal imitate petitioners' "Big Mac" mark. Contrary to the Court of Appeals'
potential expansion of his business. finding, respondents' claim that their "Big Mak" mark was inspired by the
On Whether Respondents' Use of the "Big Mak" first names of respondent Dy's mother (Maxima) and father (Kimsoy) is
Mark Results in Likelihood of Confusion not credible.
● In determining likelihood of confusion, jurisprudence has developed two ● Absent proof that respondents' adoption of the "Big Mak" mark was due
tests, the dominancy test and the holistic test. The dominancy test to honest mistake or was fortuitous, the inescapable conclusion is that
focuses on the similarity of the prevalent features of the competing respondents adopted the "Big Mak" mark to "ride on the coattails" of the
Page 39 of 50
 more established "Big Mac" mark. This saves respondents much of the attention of the buying public are the words "Big Mak" which are almost
expense in advertising to create market recognition of their mark and the same, aurally and visually, as the words "Big Mac." The dissimilarities
hamburgers. in the material and other devices are insignificant compared to the glaring
● Thus, we hold that confusion is likely to result in the public mind. We similarity in the words used in the wrappings.
sustain petitioners' claim of trademark infringement. ● Section 29(a) also provides that the defendant gives "his goods the
On the Lack of Proof of general appearance of goods of another manufacturer." Respondents'
Actual Confusion goods are hamburgers which are also the goods of petitioners. If
● Petitioners' failure to present proof of actual confusion does not negate respondents sold egg sandwiches only instead of hamburger
their claim of trademark infringement. As noted in American Wire & Cable sandwiches, their use of the "Big Mak" mark would not give their goods
Co. v. Director of Patents, Section 22 requires the less stringent standard the general appearance of petitioners' "Big Mac" hamburgers. In such
of "likelihood of confusion" only. While proof of actual confusion is the case, there is only trademark infringement but no unfair competition.
best evidence of infringement, its absence is inconsequential. However, since respondents chose to apply the "Big Mak" mark on
On the Issue of Unfair Competition hamburgers, just like petitioner's use of the "Big Mac" mark on
● The essential elements of an action for unfair competition are (1) hamburgers, respondents have obviously clothed their goods with the
confusing similarity in the general appearance of the goods, and (2) intent general appearance of petitioners' goods.
to deceive the public and defraud a competitor. The confusing similarity ● Moreover, there is no notice to the public that the "Big Mak" hamburgers
may or may not result from similarity in the marks, but may result from are products of "L.C. Big Mak Burger, Inc." Respondents introduced
other external factors in the packaging or presentation of the goods. The during the trial plastic wrappers and bags with the words "L.C. Big Mak
intent to deceive and defraud may be inferred from the similarity of the Burger, Inc." to inform the public of the name of the seller of the
appearance of the goods as offered for sale to the public. Actual hamburgers. However, petitioners introduced during the injunctive
fraudulent intent need not be shown hearings plastic wrappers and bags with the "Big Mak" mark without the
● Unfair competition is broader than trademark infringement and includes name "L.C. Big Mak Burger, Inc." Respondents' belated presentation of
passing off goods with or without trademark infringement. Trademark plastic wrappers and bags bearing the name of "L.C. Big Mak Burger,
infringement is a form of unfair competition. Trademark infringement Inc." as the seller of the hamburgers is an after-thought designed to
constitutes unfair competition when there is not merely likelihood of exculpate them from their unfair business conduct. As earlier stated, we
confusion, but also actual or probable deception on the public because of cannot consider respondents' evidence since petitioners' complaint was
the general appearance of the goods. There can be trademark based on facts existing before and during the injunctive hearings.
infringement without unfair competition as when the infringer discloses on ● Thus, there is actually no notice to the public that the "Big Mak"
the labels containing the mark that he manufactures the goods, thus hamburgers are products of "L.C. Big Mak Burger, Inc." and not those of
preventing the public from being deceived that the goods originate from petitioners who have the exclusive right to the "Big Mac" mark. This
the trademark owner. clearly shows respondents' intent to deceive the public. Had respondents'
● To support their claim of unfair competition, petitioners allege that placed a notice on their plastic wrappers and bags that the hamburgers
respondents fraudulently passed off their hamburgers as "Big Mac" are sold by "L.C. Big Mak Burger, Inc.", then they could validly claim that
hamburgers. Petitioners add that respondents' fraudulent intent can be they did not intend to deceive the public. In such case, there is only
inferred from the similarity of the marks in question trademark infringement but no unfair competition. Respondents,
● Passing off (or palming off) takes place where the defendant, by imitative however, did not give such notice. We hold that as found by the RTC,
devices on the general appearance of the goods, misleads prospective respondent corporation is liable for unfair competition.
purchasers into buying his merchandise under the impression that they
are buying that of his competitors. Thus, the defendant gives his goods
the general appearance of the goods of his competitor with the intention
of deceiving the public that the goods are those of his competitor.
● The dissimilarities in the packaging are minor compared to the stark Dispositive:
similarities in the words that give respondents' "Big Mak" hamburgers the WHEREFORE, we GRANT the instant petition. We SET ASIDE the Decision dated
general appearance of petitioners' "Big Mac" hamburgers. Section 29(a) 26 November 1999 of the Court of Appeals and its Resolution dated 11 July 2000
expressly provides that the similarity in the general appearance of the and REINSTATE the Decision dated 5 September 1994 of the Regional Trial Court
goods may be in the "devices or words" used on the wrappings. of Makati, Branch 137, finding respondent L.C. Big Mak Burger, Inc. liable for
Respondents have applied on their plastic wrappers and bags almost the trademark infringement and unfair competition.
same words that petitioners use on their styrofoam box. What attracts the
Page 40 of 50
SO ORDERED.

Page 41 of 50
Microsoft Corporation vs. Manansala, G.R. No. 166391, October 21, 2015 Facts:
G.R. No. | Date | Ponente | Topic/Keywords ● Petitioner (Microsoft Corporation) is the copyright and trademark owner
Digest by: NAME OF DIGESTER of all rights relating to all versions and editions of Microsoft software
(computer programs) such as, but not limited to, MS-DOS (disk operating
Petitioners: MICROSOFT CORPORATION
system), Microsoft Encarta, Microsoft Windows, Microsoft Word,
Respondents: ROLANDO D. MANANSALA Microsoft Excel, Microsoft Access, Microsoft Works, Microsoft
Powerpoint, Microsoft Office, Microsoft Flight Simulator and Microsoft
FoxPro, among others, and their user's guide/manuals.
Recit-ready Digest + Doctrine:
● Private Respondent-Rolando Manansala is doing business under the
Microsoft Corporation is the copyright and trademark owner of all rights relating to
name of DATAMAN TRADING COMPANY and/or COMIC ALLEY with
all versions and editions of Microsoft software. Private Respondent-Rolando
business address at 3rd Floor, University Mall Building, Tail Avc, Manila.
Manansala is doing business under the name of DATAMAN TRADING COMPANY
● Private Respondent Manansala, without authority from petitioner, was
and/or COMIC ALLEY. Private Respondent Manansala, without authority from
engaged in distributing and selling Microsoft computer software
petitioner, was engaged in distributing and selling Microsoft computer software
programs.
programs. Search Warrant was issued against the premises of the private
● Mr. John Benedict A. Sacriz, a private investigator accompanied by an
respondent. However, in a Resolution dated March 20, 2000, public respondent
agent from the National Bureau of Investigation (NBI) was able to
State Prosecutor dismissed the charge against private respondent for violation of
purchase six (6) CD-ROMs containing various computer programs
Section 29 P.D. 49 because: There is no proof that respondent was the one who
belonging to petitioner.
really printed or copied the products of complainant for sale in his store.
● Search Warrant was issued against the premises of the private
respondent.
WON printing or copying was not essential in the commission of the crime of
● Subsequently, petitioner, through Atty. Teodoro Kalaw IV tiled an
copyright infringement hence, the mere selling of pirated computer software
Affidavit-Complaint in the DOJ based on the results of the search and
constituted copyright infringement - YES, COPYRIGHT INFRINGEMENT
seizure operation conducted on private respondent's premises.
● However, in a Resolution dated March 20, 2000, public respondent State
Section 5. Copyright shall consist in the exclusive right; (A) To print, reprint, publish,
Prosecutor dismissed the charge against private respondent for violation
copy, distribute, multiply, sell, and make photographs, photo-engravings, and
of Section 29 P.D. 49 in this wise, to quote:
pictorial illustrations of the works; (B) To make any translation or other version or
o The evidence is extant in the records to show that respondent is
extracts or arrangements or adaptations thereof; to dramatize it if it be a non-
selling Microsoft computer software programs bearing the
dramatic work; to convert it into a non-dramatic work if it be a drama; to complete or
copyrights and trademarks owned by Microsoft Corporation.
execute if it be a model or design; (C) To exhibit, perform, represent, produce, or
There is, however, no proof that respondent was the one who
reproduce, the work in any manner or by any method whatever for profit or otherwise;
really printed or copied the products of complainant for sale in
it not reproduced in copies for sale, to sell any manuscript or any record whatsoever
his store.
thereof; (D) To make any other use or disposition of the work consistent with the
laws of the land. Accordingly, the commission of any of the acts mentioned in Section
5 of Presidential Decree No. 49 without the copyright owner's consent constituted Issue/s:
actionable copyright infringement. The conjunctive "and" should not be taken in its ● WON printing or copying was not essential in the commission of the crime
ordinary acceptation, but should be construed like the disjunctive "or" if the literal of copyright infringement hence, the mere selling of pirated computer
interpretation of the law would pervert or obscure the legislative intent. To accept the software constituted copyright infringement - YES, COPYRIGHT
CA's reading and interpretation is to accept absurd results because the violations INFRINGEMENT
listed in Section 5(a) of Presidential Decree No. 49 - "To print, reprint, publish, copy,
distribute, multiply, sell, and make photographs, photo-engravings, and pictorial Ratio:
illustrations of the works" — cannot be carried out on all of the classes of works ● Section 5. Copyright shall consist in the exclusive right;
enumerated in Section 2 of Presidential Decree No. 49. The mere sale of the illicit
copies of the software programs was enough by itself to show the existence of
probable cause for copyright infringement. (A) To print, reprint, publish, copy, distribute, multiply, sell, and make
photographs, photo-engravings, and pictorial illustrations of the works;

Page 42 of 50
 (B) To make any translation or other version or extracts or arrangements ● Presidential Decree No. 49 thereby already acknowledged the existence
or adaptations thereof; to dramatize it if it be a non-dramatic work; to of computer programs as works or creations protected by copyright. To
convert it into a non-dramatic work if it be a drama; to complete or execute hold, as the CA incorrectly did, that the legislative intent was to require
if it be a model or design; that the computer programs be first photographed, photo-engraved, or
pictorially illustrated as a condition for the commission of copyright
infringement invites ridicule. Such interpretation of Section 5(a) of
(C) To exhibit, perform, represent, produce, or reproduce, the work in any
Presidential Decree No. 49 defied logic and common sense because it
manner or by any method whatever for profit or otherwise; it not
focused on terms like "copy," "multiply," and "sell," but blatantly ignored
reproduced in copies for sale, to sell any manuscript or any record
terms like "photographs," "photo-engravings," and "pictorial illustrations."
whatsoever thereof;
Had the CA taken the latter words into proper account, it would have
quickly seen the absurdity of its interpretation.
(D) To make any other use or disposition of the work consistent with the ● The mere sale of the illicit copies of the software programs was enough
laws of the land. by itself to show the existence of probable cause for copyright
infringement.
● Accordingly, the commission of any of the acts mentioned in Section 5 of Dispositive:
Presidential Decree No. 49 without the copyright owner's consent WHEREFORE, the Court GRANTS the petition for review on certiorari;
constituted actionable copyright infringement. REVERSES and SETS ASIDE the decision promulgated on February 27, 2004 in
● Infringement of a copyright is a trespass on a private domain owned and C.A.-G.R. SP No. 76402; DIRECTS the Department of Justice to render the proper
occupied by the owner of the copyright, and, therefore, protected by law, resolution to charge respondent ROLANDO D. MANANSALA and/or MEL
and infringement of copyright, or piracy, which is a synonymous term in MANANSALA, doing business as DATAMAN TRADING COMPANY and/or
this connection, consists in the doing by any person, without the consent COMIC ALLEY in accordance with this decision; and ORDERS the respondents
of the owner of the copyright, of anything the sole right to do which is to pay the costs of suit.
conferred by statute on the owner of the copyright. (Columbia Pictures,
Inc. v. Court of Appeals) SO ORDERED.
● The "gravamen of copyright infringement," according to NBI-Microsoft
Corporation v. Hwang: is not merely the unauthorized manufacturing of
intellectual works but rather the unauthorized performance of any of the
acts covered by Section 5. Hence, any person who performs any of the
acts under Section 5 without obtaining the copyright owners prior consent
renders himself civilly and criminally liable for copyright infringement.
● The CA erred in its reading and interpretation of Section 5 of Presidential
Decree No. 49. Under the rules on syntax, the conjunctive word "and"
denotes a "joinder or union" of words, phrases, or clause; it is different
from the disjunctive word "or" that signals disassociation or
independence. However, a more important rule of statutory construction
dictates that laws should be construed in a manner that avoids absurdity
or unreasonableness.
● The conjunctive "and" should not be taken in its ordinary acceptation, but
should be construed like the disjunctive "or" if the literal interpretation of
the law would pervert or obscure the legislative intent.
● To accept the CA's reading and interpretation is to accept absurd results
because the violations listed in Section 5(a) of Presidential Decree No.
49 - "To print, reprint, publish, copy, distribute, multiply, sell, and make
photographs, photo-engravings, and pictorial illustrations of the works" —
cannot be carried out on all of the classes of works enumerated in Section
2 of Presidential Decree No. 49.

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 Habana vs. Robles, G.R. No. 131522, July 19, 1999
G.R. No. 131522 | July 19, 1999 | PARDO, J. | IP - Infringement In cases of infringement, copying alone is not what is prohibited. The copying
Digest by: PELONGCO must produce an "injurious effect".

Petitioners: PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO

Respondents: FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC. Facts:
● Petitioners are authors and copyright owners of duly issued certificates
Recit-ready Digest + Doctrine: of copyright registration covering their published works, produced through
their combined resources and efforts, entitled COLLEGE ENGLISH FOR
Pacita Habana et al., are authors and copyright owners of duly issued of the book, TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR
College English For Today (CET). Respondent Felicidad Robles was the author of COLLEGE FRESHMAN ENGLISH, Series 1.
the book Developing English Proficiency (DEP). Petitioners found that several pages ● Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the
of the respondent's book are similar, if not all together a copy of petitioners' book. author/publisher and distributor/seller of another published work entitled
Habana et al. filed an action for damages and injunction, alleging respondent’s "DEVELOPING ENGLISH PROFICIENCY" (DEP for brevity), Books 1
infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad and 2 (1985 edition) which book was covered by copyrights issued to
C. Robles being substantially familiar with the contents of petitioners' works, and them.
without securing their permission, lifted, copied, plagiarized and/or transposed ● In revising their books, petitioners scouted and looked around various
certain portions of their book CET. bookstores to check on other textbooks dealing with the same subject
matter. By chance they came upon the book of respondent Robles and
On the other hand, Robles contends that the book DEP is the product of her own upon perusal of said book they were surprised to see that the book
intellectual creation, and was not a copy of any existing valid copyrighted book and was strikingly similar to the contents, scheme of presentation,
that the similarities may be due to the authors' exercise of the "right to fair use of illustrations and illustrative examples in their own book, CET.
copyrighted materials, as guides." ● After an itemized examination and comparison of the two books
(CET and DEP), petitioners found that several pages of the
The trial court ruled in favor of the respondents, absolving them of any liability. Later, respondent's book are similar, if not all together a copy of
the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill petitioners' book, which is a case of plagiarism and copyright
Trading Co., Inc. In this appeal, petitioners submit that the appellate court erred in infringement.
affirming the trial court's decision. ● Petitioners then made demands for damages against respondents and
also demanded that they cease and desist from further selling and
SC ruled that respondents committed infringement. A perusal of the records yields distributing to the general public the infringed copies of respondent
several pages of the book DEP that are similar if not identical with the text of CET. Robles' works.
The court finds that respondent Robles' act of lifting from the book of petitioners ● However, respondents ignored the demands, hence, on July 7, 1988;
substantial portions of discussions and examples, and her failure to acknowledge petitioners filed with the Regional Trial Court, Makati, a complaint for
the same in her book is an infringement of petitioners' copyrights. In the case at bar, "Infringement and/or unfair competition with damages" against
the least that respondent Robles could have done was to acknowledge petitioners respondents.
Habana et. al. as the source of the portions of DEP. The final product of an author's ● In the complaint, petitioners alleged that in 1985, respondent Felicidad C.
toil is her book. To allow another to copy the book without appropriate Robles being substantially familiar with the contents of petitioners' works,
acknowledgment is injury enough. and without securing their permission, lifted, copied, plagiarized and/or
transposed certain portions of their book CET. The textual contents and
In determining the question of infringement, the amount of matter copied from illustrations of CET were literally reproduced in the book DEP. The
the copyrighted work is an important consideration. To constitute plagiarism, incorporation and reproduction of particular portions of the
infringement, it is not necessary that the whole or even a large portion of the book CET in the book DEP, without the authority or consent of petitioners,
work shall have been copied. If so much is taken that the value of the original and the misrepresentations of respondent Robles that the same was her
is sensibly diminished, or the labors of the original author are substantially original work and concept adversely affected and substantially diminished
and to an injurious extent appropriated by another, that is sufficient in point of the sale of the petitioners' book and caused them actual damages by way
law to constitute piracy. of unrealized income.
● Despite the demands of the petitioners for respondents to desist from
committing further acts of infringement and for respondent to recall DEP
from the market, respondents refused. Petitioners asked the court to
Page 44 of 50
 order the submission of all copies of the book DEP, together with the as the law now stands, the protection of copyrights is governed by
molds, plates and films and other materials used in its printing destroyed, Republic Act No. 8293. Notwithstanding the change in the law, the same
and for respondents to render an accounting of the proceeds of all sales principles are reiterated in the new law under Section 177. It provides for
and profits since the time of its publication and sale. the copy or economic rights of an owner of a copyright. The law also
● Respondent Robles filed a motion for a bill of particulars, which was provided for the limitations on copyright.
approved by the RTC. Petitioners complied with the desired ● A perusal of the records yields several pages of the book DEP that
particularization, and furnished respondent Robles the specific portions, are similar if not identical with the text of CET.
inclusive of pages and lines, of the published and copyrighted books of ● On page 100 of the book DEP, also in the topic of parallel structure
the petitioners which were transposed, lifted, copied and plagiarized and repetition, the same example is found in toto. The only
and/or otherwise found their way into respondent's book. difference is that petitioners acknowledged the author Edmund
● Respondent Goodwill Trading Co., Inc. filed its answer to the complaint Burke, and respondents did not. In several other pages the
and alleged that petitioners had no cause of action against Goodwill treatment and manner of presentation of the topics of DEP are
Trading Co., Inc. since it was not privy to the misrepresentation, similar if not a rehash of that contained in CET.
plagiarism, incorporation and reproduction of the portions of the book of ● We believe that respondent Robles' act of lifting from the book of
petitioners; that there was an agreement between Goodwill and the petitioners substantial portions of discussions and examples, and her
respondent Robles that Robles guaranteed Goodwill that the materials failure to acknowledge the same in her book is an infringement of
utilized in the manuscript were her own or that she had secured the petitioners' copyrights.
necessary permission from contributors and sources; that the author ● When is there a substantial reproduction of a book? It does not
assumed sole responsibility and held the publisher without any liability. necessarily require that the entire copyrighted work, or even a large
● Robles also filed her answer. She denied the allegations of plagiarism portion of it, be copied. If so much is taken that the value of the
and copying that petitioners claimed. Respondent stressed that (1) the original work is substantially diminished, there is an infringement of
book DEP is the product of her independent researches, studies and copyright and to an injurious extent, the work is appropriated.
experiences, and was not a copy of any existing valid copyrighted book; ● In determining the question of infringement, the amount of matter
(2) DEP followed the scope and sequence or syllabus which are common copied from the copyrighted work is an important consideration. To
to all English grammar writers as recommended by the Association of constitute infringement, it is not necessary that the whole or even a
Philippine Colleges of Arts and Sciences (APCAS), so any similarity large portion of the work shall have been copied. If so much is taken
between the respondents book and that of the petitioners was due to the that the value of the original is sensibly diminished, or the labors of
orientation of the authors to both works and standards and syllabus; and the original author are substantially and to an injurious extent
(3) the similarities may be due to the authors' exercise of the "right to fair appropriated by another, that is sufficient in point of law to
use of copyrighted materials, as guides." constitute piracy.
● Respondent interposed a counterclaim for damages on the ground that ● A copy of a piracy is an infringement of the original, and it is no defense
bad faith and malice attended the filing of the complaint, because that the pirate, in such cases, did not know whether or not he was
petitioner Habana was professionally jealous and the book DEP replaced infringing any copyright; he at least knew that what he was copying was
CET as the official textbook of the graduate studies department of the Far not his, and he copied at his peril.
Eastern University. ● In the case at bar, there is no question that petitioners presented several
● RTC dismissed petitioners’ complaint. pages of the books CET and DEP that more or less had the same
● CA upheld RTC, rendering judgment favorable to respondents. MR contents. It may be correct that the books being grammar books may
by petitioners denied. contain materials similar as to some technical contents with other
grammar books, such as the segment about the "Author Card". However,
Issue/s: the numerous pages that the petitioners presented showing similarity in
● W/N despite the apparent textual, thematic and sequential similarity the style and the manner the books were presented and the identical
between DEP and CET, respondents committed no copyright examples can not pass as similarities merely because of technical
infringement – NO, there was infringement. consideration.
● We consider as an indicia of guilt or wrongdoing the act of respondent
Ratio: Robles of pulling out from Goodwill bookstores the book DEP upon
● The complaint for copyright infringement was filed at the time that learning of petitioners' complaint while pharisaically denying petitioners'
Presidential Decree No. 49 was in force. At present, all laws dealing with demand. It was further noted that when the book DEP was reissued as a
the protection of intellectual property rights have been consolidated and
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 revised version, all the pages cited by petitioners to contain portion of
their book College English for Today were eliminated.
● In cases of infringement, copying alone is not what is prohibited. The
copying must produce an "injurious effect". Here, the injury consists in
that respondent Robles lifted from petitioners' book materials that were
the result of the latter's research work and compilation and
misrepresented them as her own. She circulated the book DEP for
commercial use did not acknowledged petitioners as her source.

Dispositive:

WHEREFORE, the petition is hereby GRANTED. The decision and resolution of

the Court of Appeals in CA-G. R. CV No. 44053 are SET ASIDE. The case is
ordered remanded to the trial court for further proceedings to receive evidence of
the parties to ascertain the damages caused and sustained by petitioners and to
render decision in accordance with the evidence submitted to it.

SO ORDERED.

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 ABS-CBN Publishing Inc. vs. Dir. of the Bureau of Trademarks, G.R. No. therefore unregistrable according to Section 123.1(d) of the Intellectual Property
217916, June 20, 2018 Code of the Philippines (IPC).
G.R. No. | Date | Ponente | Topic/Keywords
Digest by: NAME OF DIGESTER The petitioner appealed the assessment of Examiner Icban before the Director of
the Bureau of Trademarks of the IPO, who eventually affirmed Examiner Icban's
Petitioners: (Put Petitioner/s Here) findings. The decision averred that the applicant and cited marks were indeed
Respondents: (Put Respondent/s Here) confusingly similar, so much so that there may not only be a confusion as to the
goods but also a confusion as to the source or origin of the goods.
Recit-ready Digest + Doctrine:
Petitioner filed with IPO an application for registration of its trademark “METRO”. The The petitioner appealed to the ODG of the IPO. The ODG upheld the decision of
application was refused on the ground that the applicant mark is identical with three Examiner Icban's assessment and the Bureau Director's decision.In fine, ODG
other marks. The appeal was likewise denied by the Bureau of trademarks of the ruled that: there is no dispute that the subject and cited marks share the same
IPO, stating that the applicant and the cited marks were indeed confusingly similar dominant word, "Metro". Even if, as the Appellant (petitioner herein) points out, the
so much so that there may not only be a confusion as to the goods but also a second cited mark owned by Metro International contains an accompanying
confusion as to the source or origin of the goods. device, and the third cited mark contains the terms "Philippine Daily Inquirer", (sic)
WON the mark could be registered -NO the dominant feature of the subject and cited marks is still clearly the word "Metro",
According to Section 123.1(d) of the Intellectual Property Code of the Philippines (sic) spelled and pronounced in exactly the same way. The identity between the
(IPC), a mark cannot be registered if it is "identical with a registered mark belonging marks would indubitably result in confusion of origin as well as goods. The
to a different proprietor or a mark with an earlier filing or priority date," in respect of concurrent use by the parties of the word METRO is likely to cause confusion
the following: (i) the same goods or services, or (ii) closely related goods or services, among purchasers as well as confusion of business or origin hence, registration of
or (iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion. this subject application is proscribed under R.A. 8293, Sec. 123.1(d).
To determine whether a mark is to be considered as "identical" or that which is
confusingly similar with that of another, the Court has developed two (2) tests: the ISSUE:
dominancy and holistic tests. While the Court has time and again ruled that the Whether or not the ODG was correct in refusing to register the applicant mark for
application of the tests is on a case to case basis, upon the passage of the IPC, the being identical and confusingly similar with the cited marks already registered with
trend has been to veer away from the usage of the holistic test and to focus more on the IPO?
the usage of the dominancy test.
The Court cannot emphasize enough that the cited marks "METRO" (word) and HELD:
"METRO" (logo) are identical with the registrant mark "METRO" both in spelling and
in sound. In fact, it is the same exact word. Considering that both marks are used in According to Section 123.1(d) of the Intellectual Property Code of the Philippines
goods which are classified as magazines, it requires no stretch of imagination that a (IPC), a mark cannot be registered if it is "identical with a registered mark belonging
likelihood of confusion may occur. Again, the Court points to the finding of Examiner to a different proprietor or a mark with an earlier filing or priority date," in respect
Icban which was reviewed and upheld twice: one by the Director of the Bureau of of the following: (i) the same goods or services, or (ii) closely related goods or
Trademarks and another by the Director General of the IPO. services, or (iii) if it nearly resembles such a mark as to be likely to deceive or
cause confusion.
FACTS:
To determine whether a mark is to be considered as "identical" or that which is
In 2004, the petitioner filed with the Intellectual Property Office of the Philippines confusingly similar with that of another, the Court has developed two (2) tests: the
(IPO) its application for the registration of its trademark "METRO" (applicant mark) dominancy and holistic tests. While the Court has time and again ruled that the
under class 16 of the Nice classification, with specific reference to "magazines." application of the tests is on a case to case basis, upon the passage of the IPC,
the trend has been to veer away from the usage of the holistic test and to focus
It was assigned to Examiner Arlene M. Icban (Examiner Icban), who, after a more on the usage of the dominancy test. As stated by the Court in the case of
judicious examination of the application, refused the applicant mark's registration McDonald's Corporation vs. L.C. Big Mak Burger, Inc., the "test of dominancy is
because the applicant mark is identical with three other cited marks3, and is now explicitly incorporated into law in Section 155.1 of the Intellectual Property

3 International S.A.and (3) "Inquirer Metro" by applicant Philippine Daily

The cited marks were identified as (1) "Metro" (word) by applicant
Metro International S.A (2) "Metro" (logo) also by applicant Metro Inquirer, Inc.
Page 47 of 50
Code which defines infringement as the 'colorable imitation of a registered mark x it requires no stretch of imagination that a likelihood of confusion may occur. Again,
x x or a dominant feature thereof.’ This is rightly so because Sec. 155.1 provides the Court points to the finding of Examiner Icban which was reviewed and upheld
that: twice: one by the Director of the Bureau of Trademarks and another by the Director
General of the IPO.
SECTION 155. Remedies; Infringement. - Any person who shall, without the
consent of the owner of the registered mark: As a final point, the petitioner, in the pleadings submitted, manifested that the cited
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation marks are no longer valid. It said that: (1) the cited mark "METRO" (logo) was
of a registered mark or the same container or a dominant feature thereof in removed from the IPO register for non-use, citing the IPO online database, (2) the
connection with the sale, offering for sale, distribution, advertising of any goods or cited mark "INQUIRER METRO," while valid according to the IPO online database,
services including other preparatory steps necessary to carry out the sale of any was cancelled according to a certain certification from the Bureau of Trademarks
goods or services on or in connection with which such use is likely to cause of the IPO; and (3) the cited mark "METRO" (word) already expired on June 26,
confusion, or to cause mistake, or to deceive; or x x x. (Emphasis and underscoring 2016 according to yet another certification from the IPO.
supplied)
In other words, in committing the infringing act, the infringer merely introduces
negligible changes in an already registered mark, and then banks on these slight
differences to state that there was no identity or confusing similarity, which would
result in no infringement. This kind of act, which leads to confusion in the eyes of
the public, is exactly the evil that the dominancy test refuses to accept. The small
deviations from a registered mark are insufficient to remove the applicant mark
from the ambit of infringement.
Section 3, Rule 18 of the Rules of Procedure for Intellectual Property Cases
provides for the legal presumption that there is likelihood of confusion if an identical
mark is used for identical goods. The provision states:
SEC. 3. Presumption of likelihood of confusion. - Likelihood of confusion shall be
presumed in case an identical sign or mark is used for identical goods or services.
In the present case, the applicant mark is classified under "magazines," which is
found in class 16 of the Nice classification. A perusal of the records would reveal,
however, that the cited marks "METRO" (word) and "METRO" (logo) are also both
classified under magazines. In fact, Examiner Icban found that the cited marks
were used on the following classification of goods:

Paper, cardboard and goods made from these materials, not included in other
classes; newspapers, magazines, printed matter and other printed publications;
bookbinding material; photographs; stationery; adhesives for stationery or
household purposes; artists materials; paint brushes; typewriters and office
requisites (except furniture); instructional and teaching material (except
apparatus); plastics materials for packaging (not included in other classes); playing
cards; printers types; printing blocks. (Emphasis and underscoring supplied)

Thus, the presumption arises.

Even then, it must be emphasized that absolute certainty of confusion or even

actual confusion is not required to refuse registration. Indeed, it is the mere
likelihood of confusion that provides the impetus to accord protection to trademarks
already registered with the IPO. The Court cannot emphasize enough that the cited
marks "METRO" (word) and "METRO" (logo) are identical with the registrant mark
"METRO" both in spelling and in sound. In fact, it is the same exact word.
Considering that both marks are used in goods which are classified as magazines,
Page 48 of 50
 Citigroup, Inc. vs. Citystate Savings Bank, Inc., ● Citibank Savings, Inc. became an indirect wholly-owned subsidiary of
G.R. No. 205409 | June 13, 2018 | J. Leonen | Dominancy Test Citibank, N.A. The ATM cards issued by Citibank N.A., Philippine Branch
Digest by: NAME OF DIGESTER and Citibank Savings, Inc. are labelled "CITICARD".
● In addition, petitioner or Citibank N.A., a wholly-owned subsidiary of
Petitioners: Citigroup, Inc.
petitioner, owns the following other trademarks currently registered with
Respondents: Citystate Savings Bank, Inc.
the Philippine [Intellectual Property Office], to wit: "CITI and arc design",
"CITIBANK", "CITIBANK PAYLINK", "CITIBANK SPEEDCOLLECT",
Recit-ready Digest + Doctrine:
"CITIBANKING", "CITICARD", "CITICORP", "CITIFINANCIAL",
In the 1970s, Citibank N.A., a wholly-owned subsidiary of petitioner, installed its first
"CITIGOLD", "CITIGROUP", "CITIPHONE BANKING'', and
automated teller machines in over a hundred New York City branches. Citybank
"CITISERVICE".
Savings became an indirect subsidiary of Citibank, N.A. The ATM cards issued by
● Sometime in the mid-nineties, a group of Filipinos and Singaporean
Citibank N.A., Philippine Branch and Citibank Savings, Inc. are labelled "CITICARD".
companies formed a consortium to establish respondent Citystate
Petitioner owns trademarks currently registered with the IPO. A group of Filipinos
Savings Bank
and Singaporean companies then formed a consortium to establish respondent
● Respondent's registered mark has in its name affixed a lion's head, which
Citystate Savings Bank. Respondents opened a branch in Makati and filed an
is likened to the national symbol of Singapore, the Merlion.
application with the IPO for trademark of its city cash with golden lion’s head for its
● Respondent opened its initial branch in Makati City. From then on, it
ATM services. Petitioner filed an opposition to Citystate's application. Citigroup
endeavored to expand its branch network.
claimed that the "CITY CASH WITH GOLDEN LION'S HEAD" mark is confusingly
● In line with this, respondent filed an application for registration with the
similar to its own "CITI" marks. Issue: W/N there is a confusing similarity between
[Intellectual Property Office] on 21 June 2005 of the trademark "CITY
petitioner Citigroup, Inc.'s and respondent Citystate Savings Bank, Inc.'s marks? No.
CASH WITH GOLDEN LION'S HEAD" for its ATM service
The dominancy test focuses on the similarity of the prevalent features of the
● Citigroup, Inc. (Citigroup) filed an opposition to Citystate's application.
competing trademarks that might cause confusion and deception, thus constituting
Citigroup claimed that the "CITY CASH WITH GOLDEN LION'S HEAD"
infringement. If the competing trademark contains the main, essential, and dominant
mark is confusingly similar to its own "CITI" marks.
features of another, and confusion or deception is likely to result, infringement
● The Director of the Bureau of Legal Affairs concluded that the dominant
occurs. Exact duplication or imitation is not required. The question is whether the
features of the marks were the words "CITI" and "CITY," which were
use of the marks involved is likely to cause confusion or mistake in the mind of the
almost the same in all aspects.
public or to deceive consumers. In contrast, the holistic test entails a consideration
● (Director General Cristobal) reversed the November 20, 2008 Decision of
of the entirety of the marks as applied to the products, including the labels and
the Director of the Bureau of Legal Affairs and gave due course to
packaging, in determining confusing similarity. The discerning eye of the observer
Citystate's trademark application.
must focus not only on the predominant words but also on the other features
● The Court of Appeals found that Director General Cristobal did not act
appearing on both marks in order that the observer may draw his conclusion whether
with grave abuse of discretion in ruling that the parties' trademarks were
one is confusingly similar to the other. Applying the dominancy test, this Court sees
not confusingly similar, and in giving due course to Citystate's trademark
that the prevalent feature of respondent's mark, the golden lion's head device, is not
application.
present at all in any of petitioner's marks.
● Respondent argues that its mark is not confusingly similar to petitioner's
and that petitioner's fears are purely speculative. It claims that the
Doctrine: The dominancy test focuses on the similarity of the prevalent features of
phonetic similarity between "CITY" and "CITI" is not sufficient to deny its
the competing trademarks that might cause confusion and deception, thus
registration, asserting that this Court has ruled that idem sonans alone is
constituting infringement.
insufficient basis for a determination of the existence of confusing
similarity.
Facts: ●
● Citigroup, a corporation duly organized under the laws of the State of
Delaware engaged in banking and financial services. Issue/s:
● In the 1970s, Citibank N.A., a wholly-owned subsidiary of petitioner, ● W/N the Court of Appeals committed an error of law in finding that there
installed its first automated teller machines in over a hundred New York exists no confusing similarity between petitioner Citigroup, Inc.'s and
City branches. respondent Citystate Savings Bank, Inc.'s marks? – No
● In 1984, Citibank N.A., Philippine Branch, began the development of its
domestic Automated Teller Machine (ATM) network. Ratio:

Page 49 of 50
● There is also an underlying economic justification for the protection of a customer would be confused nor can operate to bar respondent from
trademarks: an effective trademark system helps bridge the information registering its mark.
gap between producers and consumers, and thus, lowers the costs
incurred by consumers in searching for and deciding what products to Dispositive:
purchase. WHEREFORE, the petition is DENIED. The Court of Appeals August 29, 2012
● There is no objective test for determining whether the confusion is likely. Decision and January 15, 2013 Resolution in CA-G.R. SP No. 109679 are
Likelihood of confusion must be determined according to the particular AFFIRMED.
circumstances of each case. To aid in determining the similarity and
likelihood of confusion between marks, our jurisprudence has developed
two (2) tests: the dominancy test and the holistic test.
● With these guidelines in mind, this Court considered "the main, essential,
and dominant features" of the marks in this case, as well as the contexts
in which the marks are to be used. This Court finds that the use of the
"CITY CASH WITH GOLDEN LION'S HEAD" mark will not result in the
likelihood of confusion in the minds of customers.
● A visual comparison of the marks reveals no likelihood of confusion.
● This Court agrees with the observation of Director General Cristobal that
the most noticeable part of this mark is the golden lion's head device, and
finds that after noticing the image of the lion's head, the words "CITY" and
"CASH" are equally prominent.
● Applying the dominancy test, this Court sees that the prevalent feature of
respondent's mark, the golden lion's head device, is not present at all in
any of petitioner's marks. The only similar feature between respondent's
mark and petitioner's collection of marks is the word "CITY" in the former,
and the "CITI" prefix found in the latter. This Court agrees with the findings
of the Court of Appeals that this similarity alone is not enough to create a
likelihood of confusion.
● This Court also agrees with the Court of Appeals that the context where
respondent's mark is to be used, namely, for its ATM services, which
could only be secured at respondent's premises and not in an open
market of ATM services, further diminishes the possibility of confusion on
the part of prospective customers.
● Petitioner argues that Emerald Manufacturing is distinguishable from this
case, insisting that ATM services are more akin to ordinary household
items than they are akin to brand name jeans, in terms of how their
customers choose their providers ATM services, like other bank services,
are generally not marketed as independent products. Indeed, as pointed
out by petitioner itself, ATM cards accompany the basic deposit product
in most banks. They are generally adjunct to the main deposit service
provided by a bank. Since ATM services must be secured and contracted
for at the offering bank's premises, any marketing campaign for an ATM
service must focus first and foremost on the offering bank. Hence, any
effective internet and newspaper advertisement for respondent would
include and emphasize the golden lion's head device. Indeed, a radio
advertisement would not have it. It should not be forgotten, however, that
a mark is a question of visuals, by statutory definition. Thus, the similarity
between the sounds of "CITI" and "CITY" in a radio advertisement alone
neither is sufficient for this Court to conclude that there is a likelihood that
Page 50 of 50