MANILA LAW COLLEGE

STA. CRUZ, MANILA

SYLLABUS

I. Intellectual Property Rights in general (Sec. 1-3, RA 8293)

a. Intellectual property rights (Sec. 4)

(1) Mighty Corporation and La Campana Fabrica de Tobacco, Inc. v. E

& J Gallo Winery and Andersons Group, Inc., G.R. No. 154342, July 14
2004
FACTS: Respondent foreign corporation not doing business in the
Philippines but organized and existing under the laws of the State of California. It
produces different kinds of wines and brandy products and sells them in many
countries under different registered trademarks. Respondent domestic
corporation has been the exclusive wine importer and distributor in the
Philippines since 1991 of the foreign corporation, selling these products in its
own name and for its own account.
Petitioners are engaged in the cultivation, manufacture, distribution and
sale of tobacco products for which they have been using the foreign corporation’s
cigarette trademark since 1973.
Respondents sued petitioners for trademark and trade name infringement
and unfair competition, with a prayer for damages and preliminary injunction.
Respondents charged petitioners with violating Article 6 of the Paris Convention
for the Protection of Industrial Property (Paris Convention) and RA 166
(Trademark Law), specifically, Sections 22 and 23 (for trademark infringement),
29 and 30 (for unfair competition and false designation of origin) and 37 (for trade
name).
ISSUE: Whether the Trademark Law and the Paris Convention are the
applicable laws and not the Intellectual Property Code
RULING: The Supreme Court ruled in the affirmative. Respondents sued
petitioners on March 12, 1993 for trademark infringement and unfair competition
committed during the effectivity of the Paris Convention and the Trademark Law.
In the Makati RTC decision of November 26, 1998, petitioners were held liable
not only under the aforesaid governing laws but also under the IP Code which
took effect only on January 1, 1998, or about five years after the filing of the
complaint. The Supreme Court therefore ruled that the courts a quo erred in
retroactively applying the IP Code in this case. It is a fundamental principle that
the validity and obligatory force of a law proceed from the fact that it has first
been promulgated. A law that is not yet effective cannot be considered as
conclusively known by the populace. To make a law binding even before it takes
effect may lead to the arbitrary exercise of the legislative power. The IP Code,
repealing the Trademark Law, was approved on June 6, 1997. Section 241
thereof expressly decreed that it was to take effect only on January 1, 1998,
without any provision for retroactive application. Thus, the Makati RTC and the
CA should have limited the consideration of the present case within the
parameters of the Trademark Law and the Paris Convention, the laws in force at
the time of the filing of the complaint.

b. Differences between copyrights, trademarks and patent (Sec. 4)

(1) Pearl & Dean (Phil.) Inc. v. Shoemart, Inc. and North Edsa
Marketing Inc., G.R. No. 148222, August 15, 2003
FACTS: Petitioner is engaged in the manufacture of advertising display
units simply referred to as light boxes. It was able to secure a Certificate of
Copyright Registration, the advertising light boxes were marketed under the
trademark “Poster Ads”. In 1985, it negotiated with respondent for the lease and
installation of the light boxes in certain SM Makati and SM Cubao. Petitioner
submitted for signature the contracts covering both stores, but only the contract
for SM Makati was returned signed. Eventually, respondent informed petitioner
that it was rescinding the contract for SM Makati due to non-performance of the
terms thereof.
Years later, petitioner found out that exact copies of its light boxes were
installed at different SM stores. It was further discovered that SMI’s sister
company North Edsa Marketing Inc. (NEMI), sells advertising space in lighted
display units. Petitioner sent a letter to both SMI and NEMI enjoining them to
cease and remove the same discontinue the use of the trademark “Poster Ads,”
as well as the payment of compensatory damages.
Petitioner filed this instant case for infringement of trademark and
copyright, unfair competition and damages. According to respondent, the word
“Poster Ads” is a generic term which cannot be appropriated as a trademark,
and, as such, registration of such mark is invalid.
The RTC of Makati City decided in favour of PDI, finding SMI and NEMI
jointly and severally liable for infringement of copyright and infringement of
trademark. On appeal, however, the Court of Appeals reversed the trial court.
ISSUE: Whether of not there is a violation of trademark?
RULING: None. P & D to secure a trademark registration for specific use
on the light boxes meant that there could not have been any trademark
infringement since registration was an essential element thereof.
Trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods.
Trade name means the name or designation identifying or distinguishing
an enterprise. Copyright is confined to literary and artistic works which are
original intellectual creations
in the literary and artistic domain protected from the moment of their creation.
Patentable inventions refer to any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially
applicable.

(2) (2) Elidad C. Kho, doing business under the name and style of KBC
Cosmetics Laboratory v. Hon. Court of Appeals, Summerville
General Merchandising and Company, and Ang Tiam Chay, G.R.
No. 115758, March 19, 2002
FACTS: Petitioner alleges that it is the registered owner of copyright and
patent registration of the Chin Chun Su container and medicated cream. It filed a
complaint to enjoin respondent from advertising and selling cream products
under the same brand name Chin Chun Su as it will mislead the public and
damage petitioner’s business. The trial court granted the injunction. On appeal,
the writ was dissolved.
ISSUE: Whether or not petitioner is entitled to the exclusive use of the
trademark Chin Chun Su based on her copyright and patent registration over the
product.
RULING: NO. Trademark, copyright and patents are different.
Petitioner has no right to support her claim for the exclusive use of the
subject trade name and its container. The name and container of a beauty cream
product are proper subjects of a trademark. In order to be entitled to exclusively
use the same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The petitioner’s
copyright and patent registration of the name and container would not guarantee
her right to the exclusive use of the same because they are not appropriate
subjects of the said intellectual rights. Consequently, a preliminary injunction
order cannot be issued because the petitioner has not proven that she has a
clear right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the same
before anyone did.

c. Technology Transfer Arrangements

Add: the Intellectual Property Office (Sec. 6-19, RA 8293, as amended

by RA 10372, effective February 28, 2013)
 (1) In-N-Out Burger, Inc. v. Sehwani, Incorporated and/or
Benita’s Frites, Inc., G.R. No. 79127, December 24, 2008
FACTS: Petitioner is a business entity incorporated under the laws of
California. It is a signatory to the Convention of Paris on Protection of Industrial
Property and the TRIPS Agreement. It is engaged mainly in the restaurant
business, but it has never engaged in business in the Philippines.
Respondents are corporations organized in the Philippines. Sehwani filed
with the petitioner an application for the registration of the mark “IN N OUT (the
inside of the letter “O” formed like a star). Its application was approved and a
certificate of registration was issued. Later, they entered into a Licensing
Agreement, wherein the former entitled the latter to use its registered mark, “IN N
OUT.” Petitioner filed trademark and service mark applications with the Bureau of
Trademarks for the “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design.
Petitioner found out that respondent had already obtained Trademark
Registration for the mark “IN N OUT (the inside of the letter “O” formed like a
star).” Petitioner sent a demand letter directing Sehwani, Inc. to cease and desist
from claiming ownership of the mark “IN-N-OUT” and to voluntarily cancel its
trademark registration. Sehwani Inc. did not accede to In-N-Out Burger’s demand
but it expressed its willingness to surrender its registration for a consideration.
Petitioner filed before the Bureau of Legal Affairs an administrative
complaint against the respondent for unfair competition and cancellation of
trademark registration.
ISSUES: Whether or not the Intellectual Property Office (an administrative
body) have jurisdiction of cases involving provisions of the IPC (e.g. unfair
competition?
RULING: Yes, the IPO (an administrative body) has jurisdiction in cases
involving provisions of the IPC (e.g. unfair competition) due to the following
reasons:
Section 10 of the Intellectual Property Code specifically identifies the
functions of the Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.“The Bureau of Legal Affairs shall
have the following functions:
10.1 Hear and decide opposition to the application for registration of
marks; cancellation of trademarks; subject to the provisions of Section 64,
cancellation of patents and utility models, and industrial designs; and
petitions for compulsory licensing of patents;
10.2 (a) Exercise original jurisdiction in administrative complaints for
violations of laws involving intellectual property rights; Provided, That its
jurisdiction is limited to complaints where the total damages claimed are
not less than Two hundred thousand pesos (P200,000): Provided, futher,
That availment of the provisional remedies may be granted in accordance
with the Rules of Court. XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
(vi) The cancellation of any permit, license, authority, or registration which
may have been granted by the Office, or the suspension of the validity
thereof for such period of time as the Director of Legal Affairs may deem
reasonable which shall not exceed one (1) year;
(viii) The assessment of damages;
Unquestionably, petitioner’s complaint, which seeks the cancellation of the
disputed mark in the name of respondent Sehwani, Incorporated, and
damages for violation of petitioner’s intellectual property rights, falls within
the jurisdiction of the IPO Director of Legal Affairs.

While Section 163 thereof vests in civil courts jurisdiction over cases of
unfair competition, nothing in the said section states that the regular
courts have sole jurisdiction over unfair competition cases, to the
exclusion of administrative bodies.
Sections 160 and 170, which are also found under Part III of the Intellectual
Property Code, recognize the concurrent jurisdiction of civil courts and the
IPO over unfair competition cases.
These two provisions read
 Section 160. Right of Foreign Corporation to Sue in Trademark or Service
Mark Enforcement Action. Any foreign national or juridical person who
meets the requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description, whether or
not it is licensed to do business in the Philippines under existing laws.
Section 170. Penalties. Independent of the civil and administrative
sanctions imposed by law, a criminal penalty of imprisonment from two (2)
years to five (5) years and a fine ranging from Fifty thousand pesos
(P50,000) to Two hundred thousand pesos (P200,000), shall be imposed
on any person who is found guilty of committing any of the acts mentioned
in Section 155, Section168, and Subsection169.1.
Based on the foregoing discussion, the IPO Director of Legal Affairs had
jurisdiction to decide the petitioner’s administrative case against
respondents and the IPO Director General had exclusive jurisdiction over
the appeal of the judgment of the IPO Director of Legal Affairs.
The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods and (2) intent to
deceive the public and defraud a competitor. There is no evidence that the
[respondents] were authorized by the [petitioner] to use the latter’s marks in the
business. [Respondents’] use of IN-N-OUT BURGER in busineses signages
reveals fraudulent intent to deceive purchasers.

(2) Phil Pharmawealth, Inc.v. Pfizer, Inc. and Pfizer (Phil.) Inc.,
G.R. No. 167715, November 17, 2010
FACTS: Pfizer is the registered owner of a patent pertaining to Sulbactam
Ampicillin or Unasyn. Pfizer discovered that Pharmawealth submitted bids for the
supply of Unasyn to several hospitals without the Pfizer’s consent. Pfizer then
demanded that the hospitals cease and desist from accepting such bids. Pfizer
also demanded that Pharmawealth immediately withdraw its bids. Pharmawealth
and the hospitals ignored the demands. Pfizer then filed a complaint for patent
infringement with a prayer for permanent injunction and forfeiture of the infringing
products.
ISSUE: What tribunal has jurisdiction to review the decisions of the
Director of Legal Affairs of the Intellectual Property Office?
RULING: According to IP Code, the Director General of the IPO exercises
exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA
concerns an interlocutory order, and not a decision. Since the IP Code and the
Rules and Regulations are bereft of any remedy regarding interlocutory orders of
the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and
Regulations suppletory. Under the Rules, a petition for certiorari to the CA is the
proper remedy. This is consistent with the Rules of Court. Thus, the CA had
jurisdiction.

2. Patents (Secs. 21-120, IPC)

Add: Applicable Provisions of RA No. 9502

a. Patentable inventions
(1) Elements of Patentability
(2) Novelty
(3) Non-Prejudicial Disclosure
(4) Inventive Step
(5) Industrial Applicability

b. Non-patentable inventions

c. Ownership of a patent

(1) Right to a patent

(2) First-to-file rule
 (3) Inventions created pursuant to a Commission
(4) Right of priority

Add: Procedure in Patent Registration

Term of Patent Registration

(1) Phil Pharmawealth, Inc.v. Pfizer, Inc. and Pfizer (Phil.) Inc., G.R. No.
167715, November 17, 2010
FACTS: Pfizer is the registered owner of a patent pertaining to Sulbactam
Ampicillin or Unasyn. Pfizer discovered that Pharmawealth submitted bids for the
supply of Unasyn to several hospitals without the Pfizer’s consent. Pfizer then
demanded that the hospitals cease and desist from accepting such bids. Pfizer
also demanded that Pharmawealth immediately withdraw its bids. Pharmawealth
and the hospitals ignored the demands. Pfizer then filed a complaint for patent
infringement with a prayer for permanent injunction and forfeiture of the infringing
products.
ISSUE: Can an injunctive relief be issued based on an action of patent
infringement when the patent allegedly infringed has already lapsed?
RULING: No. The provision of R.A. 165, from which the Pfizer’s patent
was based, clearly states that "[the] patentee shall have the exclusive right to
make, use and sell the patented machine, article or product, and to use the
patented process for the purpose of industry or commerce, throughout the
territory of the Philippines for the term of the patent; and such making, using, or
selling by any person without the authorization of the patentee constitutes
infringement of the patent."
Clearly, the patentee’s exclusive rights exist only during the term of the patent.
Since the patent was registered on 16 July 1987, it expired, in accordance with
the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July
2004, Pfizer no longer possessed the exclusive right to make, use, and sell the
products covered by their patent. The CA was wrong in issuing a temporary
restraining order after the cut-off date.

d. Grounds for cancellation of a patent

e. Remedy of the true and actual inventor

Add: Remedies of a Person Declared by Final Court Order Having Right to

the Patent

f. Rights conferred by a patent

g. Limitations of patent rights
(1) Prior user
(2) Us by the government

h. Patent infringement

(1) Tests in patent infringement

(a) Literal infringement

(b) Doctrine of equivalens

Case: Smith Kline Beckman Corp. v. Court of Appeals and Tryco

Pharma, G.R. No. 126627, August 14, 2003

FACTS: Petitioner is licensed to do business in the Philippines, filed on

October 8, 1976 as assignee before the Bureau of Patents an application for
patent on its invention called “Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate.” A
Letters of Patent was issued to the petitioner on September 24, 1981 for a period
of 17 years. The patent provides that the patented invention is used as an active
ingredient in treating gastrointestinal parasites and lung worms in animals.
 Respondent distributes and sells veterinary product, one of which is the
Impregon, a drug having Albendazole as its active ingredient effective against
gastrointestinal worms in animals.
Petitioner now sues the respondent for patent infringement and unfair
competition before the RTC as it claims that their patent includes the substance
Albendazole used by the respondent and they sold and used the drug Impregon
without the petitioner’s authorization and committed unfair competition for selling
as its own the drug that substantially functions to achieve the same result.
Petitioner further contends that under the doctrine of equivalents in
determining patent infringement, the active substance Albendazole used by the
respondent is substantially the same as Methyl 5 Propylthio-2-Benzimidazole
Carbanate covered by its patent with the same use of combating worm
infestations in animals.
Respondent avers that the Letter of Patents issued to petitioner does not
cover Albendazole in that the word does not appear on it. Even if the patent were
to include Albendazole it is unpatentable. They secured approval from the
Bureau of Foods and Drugs to manufacture and market Impregon with the
Albendazole as its active ingredients. The petitioner has no proof that they
passed their veterinary products as that of the petitioner.

(2) Civil and criminal action

(3) Prescriptive period
(4) Defenses in action for
infringement

i. Licensing

(1) Voluntary

Add: Prohibited Clauses

Mandatory Provisions

(2) Compulsory

j. Assignment and transmission of rights

Add: Utility Models

Industrial Designs
3. Trademarks (Secs. 121-170, IPC)

a. Definitions of marks, collective marks, trade names (Sec. 121)

Add: Functions of a mark

(a) Mirpuri v. Court of Appeals, G.R. No. 114508, November 19, 1999
Escobar applied for the registration of the trademark ‘Barbizon’ for
her products such as brassieres and ladies undergarments.
Respondent Barbizon Corporation, an American corporation,
opposed alleging that petitioner’s mark is confusingly similar to its
own trademark ‘Barbizon.’ Escobar’s application was given due
course and her trademark was registered. Later, Escobar assigned
all her rights to petitioner Mirpuri who failed to file an Affidavit of
Use resulting in the cancellation of the trademark. Petitioner then
applied for registration of the trademark to which respondent
Barbizon again opposed, now invoking the protection under Article
6bis of the Paris Convention. The Director of Patents declaring
respondent’s opposition was already barred, petitioner’s application
was given due course. CA reversed the judgment.

Whether or not the treaty (Paris Convention) affords protection to a

foreign corporation against a Philippine applicant for the registration
of a similar trademark.

The Court held in the affirmative. RA 8293 defines trademark as

any visible sign capable of distinguishing goods. The Paris
Convention is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source
or appellations of origin, and at the same time aims to repress
unfair competition. In short, foreign nationals are to be given the
same treatment in each of the member countries as that country
makes available to its own citizens. Nationals of the various
member nations are thus assured of a certain minimum of
international protection of their industrial property.

(b) Berries Agricultural Co. Inc. v. Norby Abyadang, G.R. No. 183404,
October 13, 2010
Abyadang filed a trademark application with the IPO for the mark
"NS D-10 PLUS" for use in connection with Fungicide. Berris
Agricultural Co., Inc. filed an opposition against the trademark citing
that it is confusingly similar with their trademark, "D-10 80 WP"
which is also used for Fungicide also with the same active
ingredient.The IPO ruled in favor of Berries but on appeal with the
CA, the CA ruled in favor of Abyadang.

Whether there is confusing similarity between the trademarks.

Yes. The SC found that both products have the component D-10 as
their ingredient and that it is the dominant feature in both their
marks. Applying the Dominancy Test, Abyadang's product is similar
to Berris' and that confusion may likely to occur especially that both
in the same type of goods. Also using the Holistic Test, it was more
obvious that there is likelihood of confusion in their packaging and
color schemes of the marks. The SC states that buyers would think
that Abyadang's product is an upgrade of Berris'.

b. Acquisition of ownership of mark (Sec. 122)

 (a) Birkenstock Orthopaedie Gmbh and Co. Kg (Formerly Birkenstock
Orthopaedie Gmbh) v. Philippine Shoe Expo Marketing Corporation,
G.R. No. 194307, November 20, 2013)
Petitioner applied for various trademark registrations before the
Philippine IPO, namely: a) “BIRKENSTOCK”; b) “BIRKENSTOCK
BAD HONNEF-RHEIN & DEVICE COMPRISING OF ROUND
COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS
AND SUNBEAM”; c) “BIRKENSTOCK BAD HONNEF-RHEIN &
DEVICE COMPRISING OF ROUND COMPANY SEAL AND
REPRESENTATION OF A FOOT, CROSS AND SUNBEAM”.
However, the registration proceedings were suspended in view of
an existing registration of mark “BIRKENSTOCK AND DEVICE” in
the name of Shoe Town International and Industrial Corporation,
the predecessor-in-interest of respondent Philippine Shoe Expo
Marketing Corporation. Here, petitioner filed a petition for
cancellation of the registration on the ground that it is the lawful and
rightful owner of the Birkenstock marks.

Respondent filed an opposition, alleging that: a) it, together with its

predecessor-in-interest, has been using Birkenstock marks in the
Philippines for more than 16 years through the mark
“BIRKENSTOCK AND DEVICE”; b) the marks covered by the
subject applications are identical to the one covered by the
registration and thus, petitioner has no right to the registration of
such marks; d) that while respondent failed to file the 10th Year
DAU, it continued the use of “BIRKENSTOCK AND DEVICE” in
lawful commerce, among others. The BLA rejected the petitioner’s
application for registration. It ruled that the competing marks of the
parties are confusingly similar since they contained the work
“BIRKENSTOCK” and are used on the same and related goods. It
found respondent as the prior user and adopter of
“BIRKENSTOCK” in the Philippines. IPO Director General reversed
BLA’s ruling, and allowed the registration of petitioner’s application.
CA reversed, and reinstated BLA’s ruling.

Whether or not the subject marks should be allowed registration in

the name of petitioner.

Yes. Respondent is deemed to have abandoned the mark when it

failed to file the 10th Year DAU for Registration on or before the
lawful period. As a consequence, it was deemed to have
abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. Petitioner has duly established its true and
lawful ownership of the mark “BIRKENSTOCK”. Under Sec. 2 of RA
166, in order to register a trademark, one must be the owner
thereof and must have actually used the mark in commerce in the
Philippines for 2 months prior to the application for registration. The
registration of a trademark is not a mode of acquiring ownership. If
the applicant is not the owner of the trademark, he has no right to
apply for its registration. Registration merely creates a prima facie
presumption of validity of the registration, of the registrant’s
ownership of the trademark, and of the exclusive right to the use
thereof. 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 to register the same. Here,
petitioner was able to establish that it is the owner of the mark
“BIRKENSTOCK”. It has used it in commerce long before
respondent was able to register the same here in the Philippines.

c. Acquisition of ownership of trade name

 (1) Coffee Partners, Inc. v. San Francisco Coffee and Roastery, Inc., G.R.
No. 169504,March 3, 2010

d. Non-registrable marks (Sec. 123)

(1) Fredco Manufacturing Corp. v. President and Fellows of Harvard

College, G.R. No. 185917, June 1, 2011

(2) Ana Ang v. Toribio Teodoro, G.R. No. L-48226, December 14, 1942

(3) McDonald’s Corporation v. L.C. Big Mac Burger, Inc. G.R. No. 14399

(4) McDonald’s Corporation v. MacJoy Fastfood Corp. G.R. No. 166115,

February 2, 2007

(5) Lyceum of the Philippines v. Court of Appeals, G.R. No. 101897,

March 5, 1993

(6) Ecole de Cuisine Maniel v. Cointreau, June 5, 2013

(7) Shang Properties Realty Corporation (Formerly The Shang Grand

Tower Corporation) And Shang Properties, Inc. (Formerly Edsa
Properties Holdings, Inc) v. St. Francis Development Corporation, G.R.
No. 190706, July 21, 2014

e. Prior use of mark as a requirement

f. Tests to determine confusing similarity between marks

(1) Dominancy test

(2) Holistic test

Add: Lack of Proof of Actual Confusion

(1) Del Monte Corp. v. Court of Appeals, G.R. No. L-78325, January 25,
1990

Facts: Petitioner Del Monte, an American corporation, granted

Philpack the right to manufacture, distribute and sell in the Philippines
its Del Monte catsup. Petitioner’s trademark and logo ‘Del Monte’ and
its catsup bottle were subsequently registered in the Philippines.
Meanwhile respondent Sunshine Sauce, a company also engaged in
the manufacturing and sale of various kinds of sauces, registered its
logo ‘Sunshine Fruit Catsup.’ Philpack received reports that
respondent was buying and recycling used Del Monte’s bottle in junk
shops to serve as container for its own catsup. Thus, petitioner and
Philpack filed a complaint for trademark infringement and unfair
competition which the trial court dismissed. CA affirmed holding there
were substantial differences between the 2 marks.

Issue: Whether or not there is confusing similarity between the two

trademarks.

Ruling: YES. At that, even if the labels were analyzed together it is not
difficult to see that the Sunshine label is a colorable imitation of the Del
Monte trademark. The predominant colors used in the Del Monte label
are green and red-orange, the same with Sunshine. The word “catsup”
in both bottles is printed in white and the style of the print/letter is the
same. Although the logo of Sunshine is not a tomato, the figure
nevertheless approximates that of a tomato. As previously stated, the
person who infringes a trade mark does not normally copy out but only
makes colorable changes, employing enough points of similarity to
confuse the public with enough points of differences to confuse the
 courts. What is undeniable is the fact that when a manufacturer
prepares to package his product, he has before him a boundless
choice of words, phrases, colors and symbols sufficient to distinguish
his product from the others. When as in this case, Sunshine chose,
without a reasonable explanation, to use the same colors and letters
as those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately to
deceive.

(2) Asia Brewery, Inc. v. Court of Appeals and San Miguel Corporation,
G.R. No. 103543, July 5, 1993

Facts: Respondent San Miguel Corporation filed a complaint

against petitioner Asia Brewery for trademark infringement and unfair
competition on account of the latter’s BEER PALE PILSEN or BEER
NA BEER product which has been competing with petitioner’s SAN
MIGUEL PALE PILSEN for a share of the local beer market. The trial
court dismissed the complaint. On appeal, CA found petitioner guilty of
trademark infringement.

Issues:
(1) Whether or not the words ‘pale pilsen’ may be exclusively
appropriated and used by SMC;
(2) Whether or not there is confusing similarity between the two
trademarks.

Ruling:
(1) NO. The fact that the words ‘pale pilsen’ are part of ABI’s
trademark does not constitute an infringement of SMC’s trademark:
SAN MIGUEL PALE PILSEN, for “pale pilsen” are generic words
descriptive of the color (“pale”), of a type of beer (“pilsen”), which is a
light bohemian beer with a strong hops flavor that originated in the City
of Pilsen in Czechoslovakia and became famous in the Middle Ages.
“Pilsen” is a “primarily geographically descriptive word,” hence, non-
registrable and not appropriable by any beer manufacturer. The words
“pale pilsen” may not be appropriated by SMC for its exclusive use
even if they are part of its registered trademark: SAN MIGUEL PALE
PILSEN. No one may appropriate generic or descriptive words. They
belong to the public domain.
(2) NO. There is hardly any dispute that the dominant feature of
SMC’s trademark is the name of the product: SAN MIGUEL PALE
PILSEN, written in white Gothic letters with elaborate serifs at the
beginning and end of the letters “S” and “M” on an amber background
across the upper portion of the rectangular design. On the other hand,
the dominant feature of ABI’s trademark is the name: BEER PALE
PILSEN, with the word “Beer” written in large amber letters, larger than
any of the letters found in the SMC label.

(3) Berries Agricultural Co., Inc. v. Norvy Abyadang, G.R. No. 183404,
October 13, 2010

FACTS: Abyadang filed a trademark application with the IPO for the
mark "NS D-10 PLUS" for use in connection with Fungicide. Berris
Agricultural Co., Inc. filed an opposition against the trademark citing
that it is confusingly similar with their trademark, "D-10 80 WP" which
is also used for Fungicide also with the same active ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA
ruled in favor of Abyadang.

ISSUE: Whether there is confusing similarity between the trademarks.

 RULING: Yes. The SC found that both products have the component
D-10 as their ingredient and that it is the dominant feature in both their
marks. Applying the Dominancy Test, Abyadang's product is similar to
Berris' and that confusion may likely to occur especially that both in the
same type of goods. Also using the Holistic Test, it was more obvious
that there is likelihood of confusion in their packaging and color
schemes of the marks. The SC states that buyers would think that
Abyadang's product is an upgrade of Berris'.

Berris was able to establish that it was using its mark "D-10 80 WP" since June
20, 2002, even before it filed for its registration with the IPO on November 29,
2002, as shown by its DAU which was under oath and notarized, as prior user
and prior registrant, is the owner of the mark "D-10 80 WP."

Use the same type of material (foil type) and have identical color schemes (red,
green, and white); and the marks are both predominantly red in color, with the
same phrase "BROAD SPECTRUM FUNGICIDE" written underneath. 1awphi1

(4) Prosource International, Inc. v. Horphag Research Management SA,

G.R. No. 180073, November 25, 2009

Facts: Prosource International, Inc. (petitioner) and Horphag Research

Management SA (respondent) are involved in a trademark
infringement dispute. Horphag Research Management SA is the owner
of the trademark PYCNOGENOL, a food supplement sold by Zuellig
Pharma Corporation. The respondent discovered that the petitioner
was distributing a similar food supplement using the mark PCO-
GENOLS since 1996. The respondent demanded that the petitioner
cease and desist from using the mark. The petitioner discontinued the
use of PCO-GENOLS and changed its mark to PCO-PLUS.

Issue: Whether the petitioner's use of the mark PCO-GENOLS

infringed upon the respondent's trademark PYCNOGENOL.

Ruling: The Supreme Court ruled in favor of the respondent and

affirmed the decision of the lower court. The court held that the
petitioner's use of the mark PCO-GENOLS was indeed confusingly
similar to the respondent's trademark PYCNOGENOL, constituting
trademark infringement. The court applied the Dominancy Test and
found that the marks have the same suffix "GENOL" and sound similar
when pronounced. The court also considered the aural and visual
impressions created by the marks in the public mind.

(5) Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading Corp., et. al.,
G.R. No. 164321, March 23, 2011

Facts: Petitioner Skechers, U.S.A., Inc. and respondent Inter Pacific

Industrial Trading Corp. are involved in a trademark infringement
dispute. Petitioner registered the trademarks "SKECHERS" and a
stylized "S" within an oval design with the Intellectual Property Office
(IPO). Petitioner filed an application for search warrants against
respondent for trademark infringement. Search warrants were issued
and more than 6,000 pairs of shoes bearing the "S" logo were seized.
Respondent moved to quash the search warrants, arguing that there
was no confusing similarity between their "Strong" rubber shoes and
petitioner's "Skechers" rubber shoes. (RTC) agreed with respondent
and quashed the search warrants. (CA) affirmed RTC's ruling.

Issue: Whether or not the respondent is guilty of trademark

infringement.
 Ruling: Supreme Court granted the motion for reconsideration and
ruled in favor of the petitioner. Court applied the Dominancy Test and
found that the use of the stylized "S" by the respondent in their Strong
rubber shoes infringed on the petitioner's registered trademark. Court
emphasized that the dominant feature of the trademark is the stylized
"S" and even if the respondent did not use an oval design, the use of
the same stylized "S" already constitutes infringement. Court rejected
the Holistic Test applied by the lower courts, noting that the
dissimilarities between the shoes were outweighed by the stark and
blatant similarities in their general features.

g. Well-known marks (Sec. 123.1 (e) and (f) )

(1) 246 Corporation v. Hon. Reynaldo B. Daway, G.R. No. 157216,

November 20, 2003

FACTS: Respondents sued Petitioner for violation of the Trademark Law,

contending that the use of the mark “Rolex” in “Rolex Music Lounge” by
246 Corporation was an infringement on the rights of respondents to the
mark. Petitioner’s defense state that there could be no infringement since
respondent and petitioner dealt with goods and services entirely different
from one another, thus, confusion to consumers and injury to respondent
would unlikely occur.

RULING: The Court noted the veracity of the claim of petitioner that there
is no infringement in the use of a ‘junior user of the registered mark on the
entirely different goods as stated in Sec 123.1 (f) of RA 8293. The court
however stressed the limitation of the provision such as when the mark
used is one that is internationally well-known or is attributable to a well-
known licensee or registrant of the said mark. So much so that the use of
it by another would affect the reputation of the registrant or its products
and/or services due to association by mark usage to junior user. The
Court however held that before Sec 123.1 and its limitation are applied in
the present case, the criteria to determine whether mark is well-known
must first be proven to have been met. The Court said that for such to be
established, a full-blown hearing on the merits must first be had.

h. Rights conferred by registration (Sec. 147)

Add: Application Procedure (Sec. 124-144)

Priority Right (Sec. 131)
Duration (Sec. 145)
Renewal (Sec. 146)
Use of Indications by Third Parties for Other Purposes (Sec. 148)
Assignment and Transfer of Registration (Sec. 149)
License Contracts (Sec. 150)
Cancellation (Sec. 151)
Effect of Non-use (Sec. 152)
Remedies (Sec. 155-158)
Limitations (Sec. 159)
Trademark Dilution
 (1) Victor Diaz v. People of the Philippines and Levi’s Strauss, Inc.
G.R. No. 180677, February 18, 2013
Facts: Levi’s Philippines is a licensee of Levi’s. After receiving information
that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops, they
hired a private investigation group to verify the information. Surveillance and
the purchase of jeans from the tailoring shops of Diaz established that the
jeans bought from the tailoring shops of Diaz were counterfeit or imitations of
LEVI’S 501. Levi’s Philippines then sought the assistance of the NBI for
purposes of applying for a search warrant against Diaz to be served at his
tailoring shops. The search warrants were issued in due course. Armed with
the search warrants, NBI agents searched the tailoring shops of Diaz and
seized several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed
that it did not authorize the making and selling of the seized jeans. Diaz
stated that he did not manufacture Levi’s jeans, and that he used the label
“LS Jeans Tailoring” in the jeans that he made and sold; that the label “LS
Jeans Tailoring” was registered with the Intellectual Property Office, easily
recognizable because the label “LS Jeans Tailoring,” and the names of the
customers were placed inside the pockets, and each of the jeans had an
“LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch
on his jeans had two buffaloes, not two horses.

Issue: Whether or not Diaz is liable for trademark infringement.

Held: No. Section 155 of R.A. No. 8293 defines the acts that constitute
infringement of trademark, viz:

The holistic test is applicable here considering that the herein criminal cases
also involved trademark infringement in relation to jeans products.
Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be
considered in determining the likelihood of confusion between them. The
maong pants or jeans made and sold by Levi’s Philippines, which included
LEVI’S 501, were very popular in the Philippines. The consuming public knew
that the original LEVI’S 501 jeans were under a foreign brand and quite
expensive. Such jeans could be purchased only in malls or boutiques as
ready-to-wear items and were not available in tailoring shops like those of
Diaz’s as well as not acquired on a “made-to-order” basis. Under the
circumstances, the consuming public could easily discern if the jeans were
original or fake LEVI’S 501, or were manufactured by other brands of jeans.

(2) Prosource International, Inc. v. Horphag Research Management SA,

G.R. No. 180073, November 25, 2009
Facts: Prosource International, Inc. (petitioner) and Horphag Research
Management SA (respondent) are involved in a trademark infringement
dispute. Horphag Research Management SA is the owner of the trademark
PYCNOGENOL, a food supplement sold by Zuellig Pharma Corporation. The
respondent discovered that the petitioner was distributing a similar food
supplement using the mark PCO-GENOLS since 1996. The respondent
demanded that the petitioner cease and desist from using the mark. The
petitioner discontinued the use of PCO-GENOLS and changed its mark to
PCO-PLUS.

Issue: Whether the petitioner's use of the mark PCO-GENOLS infringed upon
the respondent's trademark PYCNOGENOL.

Ruling: The Supreme Court ruled in favor of the respondent and affirmed the
decision of the lower court. The court held that the petitioner's use of the
mark PCO-GENOLS was indeed confusingly similar to the respondent's
trademark PYCNOGENOL, constituting trademark infringement. The court
applied the Dominancy Test and found that the marks have the same suffix
"GENOL" and sound similar when pronounced. The court also
considered the aural and visual impressions created by the marks in
the public mind
 (3) Dermaline Inc. v. Myra Pharmaceuticals, Inc. G.R. No. 190065,
August 16, 2010

Facts: Dermaline filed before the IPO an application for registration of the trademark
DERMALINE DERMALINE, INC. Myra filed an Opposition alleging that the trademark
sought to be registered by Dermaline so resembles its trademark DERMALIN and will
likely cause confusion to the purchasing public. Myra claimed that, despite Dermalines
attempt to differentiate its applied mark, the dominant feature is the term DERMALINE,
which is practically identical with its own DERMALIN, more particularly that the first eight
(8) letters of the marks are identical, and that notwithstanding the additional letter E by
Dermaline, the pronunciation for both marks are identical. Further, both marks have
three (3) syllables each, with each syllable identical in sound and appearance, even if
the last syllable of DERMALINE consisted of four (4) letters while DERMALIN consisted
only of three (3).
Issue: Should the application for registration be allowed?
Ruling: No. In rejecting the application of Dermaline for the registration of its mark
DERMALINE DERMALINE, INC., the IPO applied the Dominancy Test. It declared that
both confusion of goods and service and confusion of business or of origin were
apparent in both trademarks. Dermalines insistence that its applied trademark
DERMALINE DERMALINE, INC. had differences too striking to be mistaken from Myra’s
DERMALIN cannot be sustained because they are almost spelled in the same way,
except for Dermaline’s mark which ends with the letter E, and they are pronounced
practically in the same manner in three (3) syllables, with the ending letter E in
Dermaline’s mark pronounced silently. Thus, when an ordinary purchaser, for example,
hears an advertisement of Dermaline’s applied trademark over the radio, chances are he
will associate it with Myra’s registered mark. Further, Dermalines stance that its product
belongs to a separate and different classification from Myra’s products with the
registered trademark does not eradicate the possibility of mistake on the part of the
purchasing public to associate the former with the latter, especially considering that both
classifications pertain to treatments for the skin. The Court is cognizant that the
registered trademark owner enjoys protection in product and market areas that are the
normal potential expansion of his business. Thus, the public may mistakenly think that
Dermaline is connected to or associated with Myra, such that, considering the current
proliferation of health and beauty products in the market, the purchasers would likely be
misled that Myra has already expanded its business through Dermaline from merely
carrying pharmaceutical topical applications for the skin to health and beauty services.
.
(4) Levi’s Strauss v. Clinton Apparelle, Inc., G. R. No. 138900,
September 20, 2005
Facts:
Levi Strauss & Co. and Levi Strauss (Philippines), Inc. (petitioners) filed a complaint
against Clinton Apparelle, Inc. (respondent) for trademark infringement. The petitioners
claimed that the respondent used a logo that is similar to their registered trademark
"Dockers and Design." The petitioners sought a preliminary injunction to stop the
respondent from manufacturing, distributing, and selling jeans with the similar logo. The
trial court granted the preliminary injunction. The Court of Appeals overturned the
decision, stating that the petitioners failed to sufficiently establish their right to the
injunction and that monetary compensation would suffice.
Issue: Whether the trial court properly granted the preliminary injunction.
Whether the Court of Appeals erred in setting aside the injunction.
Ruling: The ruling of the Court of Appeals is affirmed.
Ratio:
The Supreme Court found that the petitioners did not adequately prove their entitlement
to the injunctive relief. The Court emphasized that injunction is not a remedy to protect
contingent or future rights and that there must be an actual right to be protected. The
Court noted that the trademark registration of the petitioners only covers the combination
of the word mark "Dockers" and the wing-shaped logo, while the respondent's logo uses
a different word mark.
Therefore, it is unclear whether the use of a portion of the registered trademark
constitutes infringement. The Court also considered that the damages suffered by the
petitioners could be compensated in monetary terms. Issuing a preliminary injunction
would effectively dispose of the main case without trial.
 i. Use by third parties of names, etc. similar to registered mark
j. Unfair competition (Sec. 168)

Add: False Designation of Origin (Sec. 169)

Distinguish from Trademark Infringement

(1) Republic Glass v. Petron Corp., June 17, 2013

NO. 194062, [JUNE 17, 2013], 711 PHIL 348-362

FACTS: Petron is the registered owner in the Philippines of the trademarks

GASUL and GASUL cylinders used for its LPG products. It is the sole entity in
the Philippines authorized to allow refillers and distributors to refill, use, sell, and
distribute GASUL LPG containers, products and its trademarks. Pilipinas Shell,
on the other hand, is the authorized user in the Philippines of the tradename,
trademarks, symbols or designs of its principal, Shell International Petroleum
Company Limited, including the marks SHELLANE and SHELL device in
connection with the production, sale and distribution of SHELLANE LPGs. It is
the only corporation in the Philippines authorized to allow refillers and distributors
to refill, use, sell and distribute SHELLANE LPG containers and products. Private
respondents,Regasco an entity duly licensed to engage in, conduct and carry on,
the business of refilling, buying, selling, distributing and marketing at wholesale
and retail of Liquefied Petroleum Gas (“LPG”). LPG Dealers had certain entities
were engaged in the unauthorized refilling, sale and distribution of LPG cylinders
bearing the registered tradenames and trademarks of the petitioners. The
surveillance revealed that REGASCO LPG Refilling Plant in Malabon was
engaged in the refilling and sale of LPG cylinders bearing the registered marks of
the petitioners without authority from the latter.
DOJ RULING: DISMISSED THE COMPLAINT. MERE REFILLING IS NOT PER
SE A VIOLATION OF IP CODE. CA: REVERSED AND SET ASIDE.

ISSUE: whether probable cause exists to hold petitioners liable for the crimes of
trademark infringement and unfair competition as defined and penalized under
Sections 155 and 168, in relation to Section 170 of Republic Act (R.A.) No. 8293.

HELD: YES. Mere unauthorized use of a container bearing a registered

trademark in connection with the sale, distribution or advertising of goods or
services which is likely to cause confusion, mistake or deception among the
buyers or consumers can be considered as trademark infringement. Here,
petitioners have actually committed trademark infringement when they refilled,
without the respondents’ consent, the LPG containers bearing the registered
marks of the respondents. Passing off, 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. In the present case,
respondents pertinently observed that by refilling and selling LPG cylinders
bearing their registered marks, petitioners are selling goods by giving them the
general appearance of goods of another manufacturer.

(2) Willaware Products Corporation v. Jesichris Manufacturing

Corporation, G.R. No. 195549, September 3, 2014

Facts: Jesichris Manufacturing Corporation (respondent) filed a complaint for

damages for unfair competition against Willaware Products Corporation
(petitioner). Respondent is a registered partnership engaged in the manufacture
and distribution of plastic and metal products, specifically plastic-made
automotive parts. Petitioner is engaged in the manufacture and distribution of
kitchenware items made of plastic and metal. Respondent claimed that petitioner
had been manufacturing and distributing plastic-made automotive parts similar to
those of respondent, resulting in lost and unrealized profits. Respondent also
alleged that petitioner deliberately copied their products, which constituted unfair
competition.
Issue: Whether or not there is unfair competition when the parties are not
competitors and there is no actual damage on the part of Jesichris.

Ruling: The court explained that unfair competition requires two characteristics:
(1) injury to a competitor or trade rival, and (2) acts that are contrary to good
conscience or otherwise unlawful. In this case, both characteristics were present.
Petitioner's acts of copying respondent's products and employing their former
employees constituted unfair competition. The court also noted that when a
person starts a business solely to drive their competitor out of business, they are
guilty of wanton wrong. The court found that petitioner's actions were executed in
bad faith and with the intention of taking respondent out of business.

k. Trade names or business names (Sec. 165)

l. Collective marks (Sec 121.2 in relation to Sec. 167)
m. Criminal penalties for infringement, unfair competition, false designation of
origin, and false description or misrepresentation

(1) Chester Uyco, Winston Uychiyong and Cherry C. Uyco-Ong v. Vicente

Lo, G.R. No. 202423, January 28, 2013

FACTS: The disputed marks in this case are the “HIPOLITO & SEA HORSE &
TRIANGULAR DEVICE,” “FAMA,” and other related marks, service marks and
trade names of Casa Hipolito S.A. Portugal appearing in kerosene burners.
PBMC filed a complaint against the officers of Wintrade. In a test buy, Lo
purchased from National Hardware kerosene burners with the subject marks and
the designations “Made in Portugal” and “Original Portugal” in the wrappers.
These products were manufactured by Wintrade. Lo claimed that as the assignee
for the trademarks, he had not authorized Wintrade to use these marks, nor had
Casa Hipolito S.A. Portugal.

ISSUE: Whether or not petitioners should be held liable for violating Section
169.1, in relation to Section 170, of RA 8293.

HELD: Yes. The petitioners again try to convince the Court that they have not
manufactured the products bearing the marks “Made in Portugal” and “Original
Portugal” that were bought during the test buy. However, their own admission
and the statement given by Chua that he was not aware that WINTRADE was
no longer authorized to deal, distribute or sell kerosene burner bearing the mark
HIPOLITO and SEA HORSE Device, with markings “Made in Portugal” on the
wrapper as he was never informed of such by WINTRADE, bear considerable
weight. However, evidence shows that petitioners, who are officers of Wintrade,
placed the words “Made in Portugal” and “Original Portugal” with the disputed
marks knowing fully well — because of their previous dealings with the
Portuguese company — that these were the marks used in the products of Casa
Hipolito S.A. Portugal. More importantly, the products that Wintrade sold were
admittedly produced in the Philippines, with no authority from Casa Hipolito S.A.
Portugal. The law on trademarks and trade names precisely precludes a person
from profiting from the business reputation built by another and from deceiving
the public as to the origins of products. These facts support the consistent
findings of the State Prosecutor, the DOJ and the CA that probable cause exists
to charge the petitioners with false designation of origin.

4. Copyrights (Secs. 171-199, IPC)

(a) Basic principles

(b) Amendments by RA 10372, effective February 28, 2013
(c) Copyrightable works

(1) Original works (Sec. 172)

(2) Derivative works (Sec. 173)

(d) Non-copyrightable works (Secs. 175-176)

 (1) Joaquin v. Drilon, G.R. No. 108946, January 28, 1999)

(e) Rights of copyright owner (Sec. 177)

(f) Rules on ownership of copyright (Sec. 178-183)
(g) Limitations on copyright (Sec. 184-190)

(1) Doctrine of fair use

(2) Copyright infringement (Sec. 216)

(1) Habana v. Robles, G.R. No. 131522, July 19, 1999

(2) NBI-Microsoft Corp. v. Judy Hwang, et. al., G.R. No.
147043,June 21, 2005
(3) ABS-CBN Broadcasting Corporation v. Philippine Multi-Media
System, Inc., et. al., G.R. No. 175769-70, January 19, 2009

(a) Remedies

(b) Criminal Penalties (Sec. 217)

Add: Moral Rights (Sec. 193-199)