6th batch consti cases

8/9/2019 6th Batch Consti Cases

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Republic of the PhilippinesSUPREME COURT

Manila

THIRD DIVISION

G.R. No. 91332 July 16, 1993

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES,

S.A., petitionersvs.THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents.

Quasha, Asperilla, Ancheta, Pea & Nolasco Law Office for petitioners.

Teresita Gandionco-Oledan for private respondent.

MELO, J.:

In the petition before us, petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of TabacReunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of theRevised Rules of Court when respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issuedagainst Fortune Tobacco Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes inthe local market.

Banking on the thesis that petitioners' respective symbols "MARK VII", "MARK TEN", and "LARK", also for cigarettes,must be protected against unauthorized appropriation, petitioners twice solicited the ancillary writ in the course the mainsuit for infringement but the court of origin was unpersuaded.

Before we proceed to the generative facts of the case at bar, it must be emphasized that resolution of the issue on thepropriety of lifting the writ of preliminary injunction should not be construed as a prejudgment of the suit below. Aware of the fact that the discussion we are about to enter into involves a mere interlocutory order, a discourse on the aspectinfringement must thus be avoided. With these caveat , we shall now shift our attention to the events which spawned thecontroversy.

As averred in the initial pleading, Philip Morris, Incorporated is a corporation organized under the laws of the State of Virginia, United States of America, and does business at 100 Park Avenue, New York, New York, United States of America. The two other plaintiff foreign corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., aresimilarly not doing business in the Philippines but are suing on an isolated transaction. As registered owners "MARK VII","MARK TEN", and "LARK" per certificates of registration issued by the Philippine Patent Office on April 26, 1973, May28, 1964, and March 25, 1964, plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right tomanufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contraventionof Section 22 of the Trademark Law, and should, therefore, be precluded during the pendency of the case fromperforming the acts complained of via a preliminary injunction (p. 75, Court of Appeals Rollo in AC-G.R. SP No. 13132).

For its part, Fortune Tobacco Corporation admitted petitioners' certificates of registration with the Philippine Patent Officesubject to the affirmative and special defense on misjoinder of party plaintiffs. Private respondent alleged further that ithas been authorized by the Bureau of Internal Revenue to manufacture and sell cigarettes bearing the trademark"MARK", and that "MARK" is a common word which cannot be exclusively appropriated (p.158, Court of Appeals Rollo in

A.C.-G.R. SP No. 13132). On March 28, 1983, petitioners' prayer for preliminary injunction was denied by the PJudge of Branch 166 of the Regional Trial Court of the National Capital Judicial Region stationed at Pasig, premupon the following propositions:

Plaintiffs admit in paragraph 2 of the complaint that ". . . they arenot doing business in the Philippines and are suing on an isolated transaction . . .". This simmeans that they are not engaged in the sale, manufacture, importation, expor[t]ation andadvertisement of their cigarette products in the Philippines. With this admission, defendanthow could defendant's "MARK" cigarettes cause the former "irreparable damage" within thlimits of the Philippines?" Plaintiffs maintain that since their trademarks are entitled to prottreaty obligation under Article 2 of the Paris Convention of which the Philippines is a memratified by Resolution No. 69 of the Senate of the Philippines and as such, have the force anof law under Section 12, Article XVII of our Constitution and since this is an action for a vinfringement of a trademark or trade name by defendant, such mere allegation is sufficient the absence of proof to support it. To the mind of the Court, precisely, this is the issue in thcase to determine whether or not there has been an invasion of plaintiffs' right of property ttrademark or trade name. This claim of plaintiffs is disputed by defendant in paragraphs 6 athe Answer; hence, this cannot be made a basis for the issuance of a writ of preliminary inj

There is no dispute that the First Plaintiff is the registered owner of trademar[k] "MARK VCertificate of Registration No. 18723, dated April 26,1973 while the Second Plaintiff is likregistered owner of trademark "MARK TEN" under Certificate of Registration No. 11147,28, 1963 and the Third Plaintiff is a registrant of trademark "LARK" as shown by CertificaRegistration No. 10953 dated March 23, 1964, in addition to a pending application for registrademark "MARK VII" filed on November 21, 1980 under Application Serial No. 43243, Philippine Patent Office. In same the manner, defendant has a pending application for registhe trademark "LARK" cigarettes with the Philippine Patent Office under Application Seria44008. Defendant contends that since plaintiffs are "not doing business in the Philippines" the fact that the Director of Patents has not denied their pending application for registrationtrademark "MARK", the grant of a writ of preliminary injunction is premature. Plaintiffs co

this act(s) of defendant is but a subterfuge to give s emblance of good faith intended to decepublic and patronizers into buying the products and c reate the impression that defendant's gare identical with or come from the same source as plaintiffs' products or that the defendanlicensee of plaintiffs when in truth and in fact the former is not. But the fact remains that wpending application, defendant has embarked in the manufacturing, selling, distributing andadvertising of "MARK" cigarettes. The question of good faith or bad faith on the part of dematters which are evidentiary in character which have to be proven during the hearing on thhence, until and unless the Director of Patents has denied defendant's application, the Courthe opinion and so holds that issuance a writ of preliminary injunction would not lie.

There is no question that defendant has been authorized by the Bureau of Internal Revenue manufacture cigarettes bearing the trademark "MARK" (Letter of Ruben B. Ancheta, ActinCommissioner addressed to Fortune Tobacco Corporation dated April 3, 1981, marked as A"A", defendant's "OPPOSITION, etc." dated September 24, 1982). However, this authorityqualified . . . that the said brands have been accepted and registered by the Patent Office nothan six (6) months after you have been manufacturing the cigarettes and placed the same imarket." However, this grant ". . . does not give you protection against any person or entityrights may be prejudiced by infringement or unfair competition in relation to your indicatedtrademarks/brands". As aforestated, the registration of defendant's application is still pendiPhilippine Patent Office.

It has been repeatedly held in this jurisdiction as well as in the United States that the right othe applicant for injunction remedy must be clear and free from doubt. Because of the disaspainful effects of an injunction, Courts should be extremely careful, cautious and conscionaexercise of its discretion consistent with justice, equity and fair play.


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There is no power the exercise of which is more delicate which requires greater caution, deliberation, and sound discretion, or (which is) more dangerous in adoubtful case than the issuing of an injunction; it is the strong arm of equity thatnever ought to be extended unless to cases of great injury, where courts of lawcannot afford an adequate or commensurate remedy in damages. The rightmust be clear, the injury impending or threatened, so as to be averted only bythe protecting preventive process of injunction. (Bonaparte v. Camden, etc. N.Co., 3 F. Cas. No. 1, 617, Baldw. 205, 217.)

Courts of equity constantly decline to lay down any rule which injunction shall begranted or withheld. There is wisdom in this course, for it is impossible toforesee all exigencies of society which may require their aid to protect rights andrestrain wrongs. (Merced M. Go v. Freemont, 7 Gal. 317, 321; 68 Am. Dec.262.)

It is the strong arm of the court; and to render its operation begin and useful, itmust be exercised with great discretion, and when necessary requires it.(Attorney-General v. Utica Inc. Co., P. John Ch. (N.Y.) 371.)

Having taken a panoramic view of the position[s] of both parties as viewed from their pleadings, thepicture reduced to its minimum size would be this: At the crossroads are the two (2) contendingparties, plaintiffs vigorously asserting the rights granted by law, treaty and jurisprudence to restraindefendant in its activities of manufacturing, selling, distributing and advertising its "MARK" cigarettesand now comes defendant who countered and refused to be restrained claiming that it has beenauthorized temporarily by the Bureau of Internal Revenue under certain conditions to do so asaforestated coupled by its pending application for registration of trademark "MARK" in the PhilippinePatent Office. This circumstance in itself has created a dispute between the parties which to themind of the Court does not warrant the issuance of a writ of preliminary injunction.

It is well-settled principle that courts of equity will refuse an application for theinjunctive remedy where the principle of law on which the right to preliminaryinjunction rests is disputed and will admit of doubt, without a decision of thecourt of law establishing such principle although satisfied as to what is a correctconclusion of law upon the facts. The fact, however, that there is no suchdispute or conflict does not in itself constitute a justifiable ground for the court torefuse an application for the injunctive relief. (Hackensack Impr. Commn. v. NewJersey Midland P. Co., 22 N.J. Eg. 94.)

Hence, the status quo existing between the parties prior to the filing of this case should bemaintained. For after all, an injunction, without reference to the parties, should be violent, vicious nor even vindictive. (pp. 338-341, Rollo in G.R. No. 91332.)

In the process of denying petitioners' subsequent motion for reconsideration of the order denying issuance of therequested writ, the court of origin took cognizance of the certification executed on January 30, 1984 by the PhilippinePatent Office attesting to the fact that private respondent's application for registration is still pending appropriate action.Apart from this communication, what prompted the trial court judge to entertain the idea of prematurity and untimelinessof petitioners' application for a writ of preliminary injunction was the letter from the Bureau of Internal Revenue dateFebruary 2, 1984 which reads:

MRS. TERESITA GANDIONGCO OLEDANLegal CounselFortune Tobacco Corporation

Madam:

In connection with your letter dated January 25, 1984, reiterating your query as to whether approval automatically expires or becomes null and void after six (6) months if the brand isaccepted and by the patent office, please be informed that no provision in the Tax Code or rregulation that requires an applicant to comply with the aforementioned condition order thaapproved will remain valid and existing.

Based on the document you presented, it shows that registration of this particular label stillresolution by the Patent Office. These being so , you may therefore continue with the produbrand of cigarette until this Office is officially notified that the question of ownership of "Mis finally resolved.

Ver

TEODOROChief, M

TAN-P653

(p. 348, Rollo .)

It appears from the testimony of Atty. Enrique Madarang, Chief of the Trademark Division of the then PhilippinOffice that Fortune's application for its trademark is still pending before said office (p. 311, Rollo ).

Petitioners thereafter cited supervening events which supposedly transpired since March 28, 1983, when the triafirst declined issuing a writ of preliminary injunction, that could alter the results of the case in that Fortune's apphad been rejected, nay, barred by the Philippine Patent Office, and that the application had been forfeited byabandonment, but the trial court nonetheless denied the second motion for issuance of the injunctive writ on Apr

1987, thus:

For all the prolixity of their pleadings and testimonial evidence, the plaintiffs-movants havshort of the legal requisites that would justify the grant of the writ of preliminary injunctionFor one, they did not even bother to establish by competent evidence that the products suppaffected adversely by defendant's trademark now subject of an application for registration wPhilippine Patents Office, are in actual use in the Philippines. For another, they concentratefire on the alleged abandonment and forfeiture by defendant of said application for registrat

The Court cannot help but take note of the fact that in their complaint plaintiffs included a pissuance preliminary injunction. The petition was duly heard, and thereafter matter was assdiscussed lengthily and resolved against plaintiffs in a 15-page Order iss ued by the undersipredecessor on March 28, 1983. Plaintiffs' motion for reconsideration was denied in anotheargued 8 page Order issued on April 5, 1984,, and the matter was made to rest.

However, on the strength of supposed changes in the material facts of this case, plaintiffs cwith the present motion citing therein the said changes which are: that defendant's applicatibeen rejected and barred by the Philippine Patents Office, and that said application has beendeemed abandoned and forfeited. But defendant has refiled the same.

Plaintiffs' arguments in support of the present motion appear to be a mere rehash of their stthe first above-mentioned petition which has already been ruled upon adversely against themGranting that the alleged changes in the material facts are sufficient grounds for a motion sfavorable grant of what has already been denied, this motion just the same cannot prosper.


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In the first place there is no proof whatsoever that any of plaintiffs' products which they seek toprotect from any adverse effect of the trademark applied for by defendant, is in actual use andavailable for commercial purposes anywhere in the Philippines. Secondly as shown by plaintiffs' ownevidence furnished by no less than the chief of Trademarks Division of the Philippine Patent Office,Atty. Enrique Madarang, the abandonment of an application is of no moment, for the same canalways be refiled. He said there is no specific provision in the rules prohibiting such refiling (TSN,November 21, 1986, pp. 60 & 64, Raviera). In fact, according to Madarang, the refiled application of defendant is now pending before the Patents Office. Hence, it appears that the motion has no leg tostand on. (pp. 350-351, Rollo in G. R. No. 91332.)

Confronted with this rebuff, petitioners filed a previous petition for certiorari before the Court, docketed as G.R. No.78141, but the petition was referred to the Court of Appeals.

The Court of Appeals initially issued a resolution which set aside the court of origin's order dated April 22, 1987, andgranted the issuance of a writ of preliminary injunction enjoining Fortune, its agents, employees, and representatives,from manufacturing, selling, and advertising "MARK" cigarettes. The late Justice Cacdac, speaking for the First Divisionof the Court of Appeals in CA-G.R. SP No. 13132, remarked:

There is no dispute that petitioners are the registered owners of the trademarks for cigarettes"MARK VII", "MARK TEN", and "LARK".(Annexes B, C and D, petition). As found and reiterated bythe Philippine Patent Office in two (2) official communications dated April 6, 1983 and January 24,1984, the trademark "MARK" is "confusingly similar" to the trademarks of petitioners, henceregistration was barred under Sec. 4 (d) of Rep. Act. No. 166, as amended (pp. 106, 139, SCA rollo).In a third official communication dated April 8, 1986, the trademark application of private respondentfor the "MARK" under Serial No. 44008 filed on February 13, 1981 which was declared abandonedas of February 16, 1986, is now deemed forfeited, there being no revival made pursuant to Rule 98of the Revised Rules of Practitioners in Trademark Cases." (p. 107, CA rollo). The foregoingdocuments or communications mentioned by petitioners as "the c hanges in material facts whichoccurred after March 28, 1983", are not also questioned by respondents.

Pitted against the petitioners' documentary evidence, respondents pointed to (1) the letter datedJanuary 30, 1979 (p. 137, CA rollo) of Conrado P. Diaz, then Acting Commissioner of InternalRevenue, temporarily granting the request of private respondent for a permit to manufacture two (2)new brands of cigarettes one of which is brand "MARK" filter-type blend, and (2) the certificationdated September 26, 1986 of Cesar G. Sandico, Director of Patents (p. 138, CA rollo) issued uponthe written request of private respondents' counsel dated September 17, 1986 attesting that therecords of his office would show that the "trademark MARK" for cigarettes is now the subject of apending application under Serial No. 59872 filed on September 16, 1986.

Private respondent's documentary evidence provides the reasons neutralizing or weakening their probative values. The penultimate paragraph of Commissioner Diaz' letter of authority reads:

Please be informed further that the authority herein granted does not give youprotection against any person or entity whose rights may be prejudiced byinfringement or unfair competition in relation to your above-namedbrands/trademark.

while Director Sandico's certification contained similar conditions as follows:

This Certification, however, does not give protection as against any person or entity whose right may be prejudiced by infringement or unfair competition inrelation to the aforesaid trademark nor the right to register if contrary to theprovisions of the Trademark Law, Rep. Act No. 166 as amended and theRevised Rules of Practice in Trademark Cases.

The temporary permit to manufacture under the trademark "MARK" for cigarettes and theacceptance of the second application filed by private r espondent in the height of their dispumain case were evidently made subject to the outcome of the said main case or Civil Case 47374 of the respondent Court. Thus, the Court has not missed to note the absence of a menthe Sandico letter of September 26, 1986 of any reference to the pendency of the instant acton August 18, 1982. We believe and hold that petitioners have shown a prima facie caseissuance of the writ of prohibitory injunction for the purposes stated in their complaint andsubsequent motions for the issuance of the prohibitory writ. (Buayan Cattle Co. vs. QuintilSCRA 276)

The requisites for the granting of preliminary injunction are the existence of the right protecthe facts against which the injunction is to be directed as violative of said right. (Buayan Cavs. Quintillan, supra ; Ortigas & Co. vs. Ruiz, 148 SCRA 326). It is a writ framed accordincircumstances of the case commanding an act which the Court regards as essential to justicrestraining an act it deems contrary to equity and good conscience (Rosauro vs. Cuneta, 15570). If it is not issued, the defendant may, before final judgment, do or continue the doing which the plaintiff asks the court to restrain, and thus make ineffectual the final judgment rafterwards granting the relief sought by the plaintiff (Calo vs . Roldan, 76 Phil. 445). Generagrant or denial rests upon the sound discretion of the Court except on a clear case of abuse Investment & Finance Co. vs. State House, 151 SCRA 636). Petitioners' right of exclusivitregistered trademarks being clear and beyond question, the respondent court's denial of theprohibitive writ constituted excess of jurisdiction and grave abuse discretion. If the lower cnot grant preliminary injunction, the appellate court may grant the same. (Service SpecialisSheriff of Manila, 145 SCRA 139). (pp. 165-167, Rollo in G.R. No. 91332.)

After private respondent Fortune's motion for reconsideration was rejected, a motion to dissolve the disputed wrpreliminary injunction with offer to post a counterbond was submitted which was favorably acted upon by the CAppeals, premised on the filing of a sufficient counterbond to answer for whatever perjuicio petitioners may suresult thereof, to wit:

The private respondent seeks to dissolve the preliminary injunction previously granted by twith an offer to file a counterbond. It was pointed out in its supplemental motion that lots oemployed will be laid off as a consequence of the injunction and that the government will slose the amount of specific taxes being paid by theprivate respondent. The specific taxes being paid is the sum total of P120,120, 295.98 fromto July 1989.

The petitioners argued in their comment that the damages caused by the infringement of thetrademark as well as the goodwill it generates are incapable of pecuniary estimation and moevaluation and not even the counterbond could adequately compensate for the damages it was a result of the dissolution of the bond. In addition, the petitioner further argued that doinbusiness in the Philippines is not relevant as the injunction pertains to an infringement of atrademark right.

After a thorough re-examination of the issues involved and the arguments advanced by bothin the offer to file a counterbond and the opposition thereto, WE believe that there are souncogent reasons for US to grant the dissolution of the writ of preliminary injunction by the oprivate respondent to put up a counterbond to answer for whatever damages the petitioner msuffer as a consequence of the dissolution of the preliminary injunction.

The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of thethe preliminary injunction considering that they are not actually engaged in the manufacturcigarettes with the trademark in question and the filing of the counterbond will amply answdamages.


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While the rule is that an offer of a counterbond does not operate to dissolve an injunction previouslygranted, nevertheless, it is equally true that an injunction could be dissolved only upon good andvalid grounds subject to the sound discretion of the court. As WE have maintained the view thatthere are sound and good reasons to lift the preliminary injunction, the motion to file a counterbondis granted. (pp. 53-54, Rollo in G.R. No. 91332.)

Petitioners, in turn, filed their own motion for re-examination geared towards reimposition of the writ of preliminaryinjunction but to no avail (p. 55, Rollo in G.R. No. 91332).

Hence, the instant petition casting three aspersions that respondent court gravely abused its discretion tantamount toexcess of jurisdiction when:

I. . . . it required, contrary to law and jurisprudence, that in order that petitioners may suffer irreparable injury due to the lifting of the injunction, petitioners should be using actually their registered trademarks in commerce in the Philippines;

II. . . . it lifted the injunction in violation of section 6 of Rule 58 of the Rules of Court; and

III. . . . after having found that the trial court had committed grave abuse of discretion and exceededits jurisdiction for having refused to issue the writ of injunction to restrain private respondent's actsthat are contrary to equity and good conscience, it made a complete about face for legallyinsufficient grounds and authorized the private respondent to continue performing the very sameacts that it had considered contrary to equity and good conscience, thereby ignoring not only themandates of the Trademark Law, the international commitments of the Philippines, the judicialadmission of private respondent that it will have no more right to use the trademark "MARK" after theDirector of Patents shall have rejected the application to register it, and the admonitions of theSupreme Court. (pp. 24-25, Petition; pp. 25-26, Rollo .)

To sustain a successful prosecution of their suit for infringement, petitioners, as foreign corporations not engaged in localcommerce, rely on section 21-A of the Trademark Law reading as follows:

Sec. 21-A. Any foreign corporation or juristic person to which a mark or trade-name has beenregistered or assigned under this act may bring an action hereunder for infringement, for unfair competition, or false designation of origin and false description, whether or not it has been licensedto do business in the Philippines under Act Numbered Fourteen hundred and fifty-nine, as amended,otherwise known as the Corporation Law, at the time it brings complaint: Provided, That the countryof which the said foreign corporation or juristic person is a citizen or in which it is domiciled, bytreaty, convention or law, grants a similar privilege to corporate or juristic persons of the Philippines.(As inserted by Sec. 7 of Republic Act No. 638.)

to drive home the point that they are not precluded from initiating a cause of action in the Philippineson account of the principal perception that another entity is pirating their symbol without any lawfulauthority to do so. Judging from a perusal of the aforequoted Section 21-A, the conclusion reachedby petitioners is certainly correct for the proposition in support thereof is embedded in the Philippinelegal jurisprudence.

Indeed, it was stressed in General Garments Corporation vs. Director of Patents (41 SCRA 50 [1971]) by then Justice(later Chief Justice) Makalintal that:

Parenthetically, it may be stated that the ruling in the Mentholatum case was subsequentlyderogated when Congress, purposely to "counteract the effects" of said case, enacted Republic ActNo. 638, inserting Section 21-A in the Trademark Law, which allows a foreign corporation or juristicperson to bring an action in Philippine courts for infringement of a mark or tradename, for unfair competition, or false designation of origin and false description, "whether or not it has been licensed

to do business in the Philippines under Act Numbered Fourteen hundred and fifty-nine, as aotherwise known as the Corporation Law, at the time it brings complaint."

Petitioner argues that Section 21-A militates against respondent's capacity to maintain a suicancellation, since it requires, before a foreign corporation may bring an action, that its tradtradename has been registered under the Trademark Law. The argument misses the essentiain the said provision, which is that the foreign corporation is allowed thereunder to sue "whnot it has been licensed to do business in the Philippines" pursuant to the Corporation Law(precisely to counteract the effects of the decision in the Mentholatum case). (at p. 57.)

However, on May, 21, 1984, Section 21-A, the provision under consideration, was qualified by this Court in LLacoste S.A. vs. Fernandez (129 SCRA 373 [1984]), to the effect that a foreign corporation not doing businessPhilippines may have the right to sue before Philippine Courts, but existing adjective axioms require that qualifycircumstances necessary for the assertion of such right should first be affirmatively pleaded (2 Agbayani CommLaws of the Philippines, 1991 Ed., p. 598; 4 Martin , Philippine Commercial Laws, Rev. Ed., 1986, p. 381). Indenot sufficient for a foreign corporation suing under Section 21-A to simply allege its alien origin. Rather, it mustadditionally allege its personality to sue. Relative to this condition precedent, it may be observed that petitionersremiss in averring their personality to lodge a complaint for infringement (p. 75, Rollo in AC-G.R. SP No. 1313especially so when they asserted that the main action for infringement is anchored on an isolated transaction (p.75, Rollo in AC-G.R. SP No. 13132; Atlantic Mutual Ins. Co. vs. Cebu Stevedoring Co., Inc., 17 SCRA 1037 (1Regalado, Remedial Law Compendium, Fifth Rev. Ed., 1988, p. 103).

Another point which petitioners considered to be of significant interest, and which they desire to impress upon uprotection they enjoy under the Paris Convention of 1965 to which the Philippines is a signatory. Yet, insofar as discourse is concerned, there is no necessity to treat the matter with an extensive response because adherence ofPhilippines to the 1965 international covenant due to pact sunt servanda had been acknowledged in LaChemise (supra at page 390).

Given these confluence of existing laws amidst the cases involving trademarks, there can be no disagreement to

guiding principle in commercial law that foreign corporations not engaged in business in the Philippines may macause of action for infringement primarily because of Section 21-A of the Trademark Law when the legal standiis alleged, which petitioners have done in the case at hand.

In assailing the justification arrived at by respondent court when it recalled the writ of preliminary injunction, peare of the impression that actual use of their trademarks in Philippine commercial dealings is not an indispensabelement under Article 2 of the Paris Convention in that:

(2) . . . . no condition as to the possession of a domicile or establishment in the country wheprotection is claimed may be required of persons entitled to the benefits of the Union for thenjoyment of any industrial property of any industrial property rights. (p. 28, Petition; p. 29G.R. No. 91332.)

Yet petitioners' perception along this line is nonetheless resolved by Sections 2 and 2-A of the Trademark Law wspeak loudly, about necessity of actual commercial use of the trademark in the local forum:

Sec. 2. What are registrable . Trademarks, tradenames and service marks owned by percorporations, partnerships or associations domiciled in the Philippines and by persons, corppartnerships or associations domiciled in any foreign country may be registered in accordathe provisions of this Act; Provided, That said trademarks, tradenames, or service marks are actuallyin use in commerce and services not less than two months in the Philippines before the tapplications for registration are filed; And provided, further, That the country of which the for registration is a citizen grants by law substantially similar privileges to citizens of the Pand such fact is officially certified, with a certified true copy of the foreign law translated inEnglish language, by the government of the foreign country to the Government of the RepuPhilippines. (As amended by R.A. No. 865).


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Sec. 2-A. Ownership of trademarks, tradenames and service marks; how acquired. Anyone wholawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, inbusiness, and in the service rendered, may appropriate to his exclusive use a trademark, atradename, or a service mark not so appropriated by another, to distinguish his merchandise,business or service from the merchandise, business or service of others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in thissection provided, shall be recognized and protected in the same manner and to the same extent asare other property rights known to the law. (As amended by R.A. No. 638). (Kabushi Kaisha Isetanvs. Intermediate Appellate Court, 203 SCRA 583 [1991], at pp. 589-590; emphasis supplied.)

Following universal acquiescence and comity, our municipal law on trademarks regarding the requirement of actual usein the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by amunicipal tribunal (Mortensen vs. Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras,International Law and World Organization, 1971 Ed., p. 20). Withal, the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipalsphere. Under the doctrine of incorporation as applied in most countries, rules of international law are given a standingequal, not superior, to national legislative enactments (Salonga and Yap, Public International Law, Fourth ed., 1974, p.16).

The aforequoted basic provisions of our Trademark Law, according to Justice Gutierrez, Jr., in Kabushi Kaisha Isetan vs.Intermediate Appellate Court (203 SCRA 583 [1991]), have been construed in this manner:

A fundamental principle of Philippine Trademark Law is that actual use in commerce in thePhilippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.

xxx xxx xxx

These provisions have been interpreted in Sterling Products International, Inc. v. FarbenfabrikenBayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way:

A rule widely accepted and firmly entrenched because it has come downthrough the years is that actual use in commerce or business is a prerequisite tothe acquisition of the right of ownership over a trademark.

xxx xxx xxx

. . . Adoption alone of a trademark would not give exclusive right thereto. Suchright grows out of their actual use. Adoption is not use. One may makeadvertisements, issue circulars, give out price lists on certain goods; but thesealone would not give exclusive right of use. For trademark is a creation of use.The underlying reason for all these is that purchasers have come to understandthe mark as indicating the origin of the wares. Flowing from this is the trader'sright to protection in the trade he has built up and the goodwill he hasaccumulated from use of the trademark. . . .

In fact, a prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.

We rule[d] in Pagasa Industrial Corporation v. Court of Appeals (118 SCRA 526 [1982]):

3. The Trademark law is very clear . It requires actual commercial use of the mark prior to itsregistration . There is no dispute that respondent corporation was the first registrant, yet it failed tofully substantiate its claim that it used in trade or business in the Philippines the subject mark; it didnot present proof to invest it with exclusive, continuous adoption of the trademark which should

consist among others, of considerable sales since its first use. The invoices (Exhibits 7, 7-asubmitted by respondent which were dated way back in 1957 show that the zippers sent to Philippines were to be used as "samples" and "of no commercial value". The evidence for respondent must be clear, definite and free from inconsistencies. (Sy Ching v. Gaw Lui, 44148-149) "Samples" are not for sale and therefore, the fact of exporting them to the Philippcannot be considered to be equivalent to the "use" contemplated by the law. Respondent didexpect income from such "samples". There were no receipts to establish sale, and no proof presented to show that they were subsequently sold in the Philippines. (Pagasa Industrial CCourt of Appeals, 118 SCRA 526 [1982]; Emphasis Supplied)

The records show that the petitioner has never conducted any business in the Philippines. Inever promoted its tradename or trademark in the Philippines. It is unknown to Filipino excvery few who may have noticed it while travelling abroad. It has never paid a single centavthe Philippine government. Under the law, it has no right to the remedy it seeks. (at pp. 589

In other words, petitioners may have the capacity to sue for infringement irrespective of lack of business activityPhilippines on account of Section 21-A of the Trademark Law but the question whether they have an exclusive rtheir symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Pin line with Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a foreigcorporation not licensed to do business in Philippines files a complaint for infringement, the entity need not be ausing its trademark in commerce in the Philippines. Such a foreign corporation may have the personality to file infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in thmarket.

Going back to the first assigned error, we can not help but notice the manner the ascription was framed which cawith it the implied but unwarranted assumption of the existence of petitioners' right to relief. It must be emphasithis aspect of exclusive dominion to the trademarks, together with the corollary allegation of irreparable injury, hbe established by petitioners by the requisite quantum of evidence in civil cases. It cannot be denied that our reluto issue a writ of preliminary injunction is due to judicial deference to the lower courts, involved as there is mereinterlocutory order (Villarosa vs. Teodoro, Sr., 100 Phil. 25 [1956]). In point of adjective law, the petition has itsremedial measure which is but ancillary to the main action for infringement still pending factual determination bcourt of origin. It is virtually needless to stress the obvious reality that critical facts in an infringement case are nus more so when even Justice Feliciano's opinion observes that "the evidence is scanty" and that petitioners "havsubmit copies or photographs of their registered marks as used in cigarettes" while private respondent has not, fopart, "submitted the actual labels or packaging materials used in selling its "Mark" cigarettes." Petitioners therefnot be permitted to presume a given state of facts on their so called right to the trademarks which could be subjeirreparable injury and in the process, suggest the fact of infringement. Such a ploy would practically place the caof the horse. To our mind, what appears to be the insurmountable barrier to petitioners' portrayal of whimsical exdiscretion by the Court of Appeals is the well-taken remark of said court that:

The petitioner[s] will not be prejudiced nor stand to suffer irreparably as a consequence of of the preliminary injunction considering that they are not actually engaged in the manufaccigarettes with the trademark in question and the filing of the counterbond will amply answdamages. (p. 54. Rollo in G.R. No. 91332.)

More telling are the allegations of petitioners in their complaint (p. 319, Rollo G.R. No. 91332) as well as in thepetition filed with this Court (p. 2, Rollo in G.R. No. 91332) indicating that they are not doing business in the Phfor these frank representations are inconsistent and incongruent with any pretense of a right which can breached1431, New Civil Code; Section 4, Rule 129; Section 3, Rule 58, Revised Rules of Court). Indeed, to be entitled tinjunctive writ, petitioner must show that there exists a right to be protected and that the facts against which injudirected are violative of said right ( Searth Commodities Corporation vs. Court of Appeals, 207 SCRA 622 [199be added in this connection that albeit petitioners are holders of certificate of registration in the Philippines of thesymbols as admitted by private respondent, the fact of exclusive ownership cannot be made to rest solely on thedocuments since dominion over trademarks is not acquired by the mere fact of registration alone and does not ptrademark right (Unno Commercial Enterprises, Inc. vs. General Milling Corporation, 120 SCRA 804 [1983]).


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Even if we disregard the candid statements of petitioners anent the absence of business activity here and rely on theremaining statements of the complaint below, still, when these averments are juxtaposed with the denials andpropositions of the answer submitted by private respondent, the supposed right of petitioners to the symbol have therebybeen controverted. This is not to say, however, that the manner the complaint was traversed by the answer is s ufficientto tilt the scales of justice in favor of private respondent. Far from it. What we are simply conveying is another basic tenetin remedial law that before injunctive relief may properly issue, complainant's right or title must be undisputed anddemonstrated on the strength of one's own title to such a degree as to unquestionably exclude dark clouds of doubt,rather than on the weakness of the adversary's evidence, inasmuch as the possibility of irreparable damage, withoutprior proof of transgression of an actual existing right, is no ground for injunction being mere damnum absqueinjuria (Talisay-Silay Milling Co., Inc. vs. CFI of Negros Occidental, 42 SCRA 577 [1971]; Francisco, Rules of Court,Second ed., 1985, p. 225; 3 Martin, Rules of Court, 1986 ed., p. 82).

On the economic repercussion of this case, we are extremely bothered by the thought of having to participate in throwing

into the streets Filipino workers engaged in the manufacture and sale of private respondent's "MARK" cigarettes whomight be retrenched and forced to join the ranks of the many unemployed and unproductive as a result of the issuance of a simple writ of preliminary injunction and this, during the pendency of the case before the trial court, not to mention thediminution of tax revenues represented to be c lose to a quarter million pesos annually. On the other hand, if the statusquo is maintained, there will be no damage that would be suffered by petitioners inasmuch as they are not doingbusiness in the Philippines.

With reference to the second and third issues raised by petitioners on the lifting of the writ of preliminary injunction, itcannot be gainsaid that respondent court acted well within its prerogatives under Section 6, Rule 58 of the Revised Rulesof Court:

Sec. 6. Grounds for objection to, or for motion of dissolution of injunction. The injunction may berefused or, if granted ex parte , may be dissolved, upon the insufficiency of the complaint as shownby the complaint itself, with or without notice to the adverse party. It may also be refused or dissolved on other grounds upon affidavits on the part of the defendants which may be opposed bythe plaintiff also by affidavits. It may further be refused or, if granted, may be dissolved, if it appearsafter hearing that although the plaintiff is entitled to the injunction, the issuance or continuancethereof, as the case may be, would cause great damage to the defendant while the plaintiff can befully compensated for such damages as he may suffer, and the defendant files a bond in an amountfixed by the judge conditioned that he will pay all damages which the plaintiff may suffer by therefusal or the dissolution of the injunction. If it appears that the extent of the preliminary injunctiongranted is too great, it must be modified.

Under the foregoing rule, injunction may be refused, or, if granted, may be dissolved, on the following instances:

(1) If there is insufficiency of the complaint as shown by the allegations therein. Refusal or dissolution may be granted in this case with or without notice to the adverse party.

(2) If it appears after hearing that although the plaintiff is entitled to the injunction, the issuance or continuance thereof would cause great damage to the defendant, while the plaintiff can be fullycompensated for such damages as he may suffer. The defendant, in this case, must file a bond in anamount fixed by the judge conditioned that he will pay all damages which plaintiff may suffer by therefusal or the dissolution of the injunction.

(3) On the other grounds upon affidavits on the part of the defendant which may be opposed by theplaintiff also affidavits.

Modification of the injunction may also be ordered by the court if it appears that the extent of thepreliminary injunction granted is too great. (3 Martin, Rules of Court, 1986 ed., p. 99;Francisco,supra , at p. 268.)

In view of the explicit representation of petitioners in the complaint that they are not engaged in business in thePhilippines, it inevitably follows that no conceivable damage can be suffered by them not to mention the foremoconsideration heretofore discussed on the absence of their "right" to be protected. At any rate, and assumingargumenti that respondent court erroneously lifted the writ it previously issued, the same may be cured by appeanot in the form of a petition for certiorari (Clark vs. Philippine Ready Mix Concrete Co., 88 Phil. 460 [1951]). Vmindful of the rule that a writ of preliminary injunction is an interlocutory order which is always under the contrcourt before final judgment, petitioners' criticism must fall flat on the ground, so to s peak, more so when extinctpreviously issued writ can even be made without previous notice to the adverse party and without a hearing (CaRamos, 79 Phil. 640 [1974]; 3 Moran, Rules of Court, 1970 ed., p. 81).

WHEREFORE, the petition is hereby DISMISSED and the Resolutions of the Court of Appeals dated Septemb1989 and November 29, 1989 are hereby AFFIRMED.

SO ORDERED.

Republic of the PhilippinesSUPREME COURT

Manila

EN BANC

G.R. No. 139465 January 18, 2000

SECRETARY OF JUSTICE, petitioner,vs.HON. RALPH C. LANTION, Presiding Judge, Regional Trial Court of Manila, Branch 25, and MARK B.JIMENEZ, respondents.

MELO, J.:

The individual citizen is but a speck of particle or molecule vis--vis the vast and overwhelming powers of govHis only guarantee against oppression and tyranny are his fundamental liberties under the Bill of Rights which sin times of need. The Court is now called to decide whether to uphold a citizen's basic due process rights, or thegovernment's ironclad duties under a treaty. The bugle sounds and this Court must once again act as the faithfulguardian of the fundamental writ.

The petition at our doorstep is cast against the following factual backdrop:

On January 13, 1977, then President Ferdinand E. Marcos issued Presidential Decree No. 1069 "Prescribing theProcedure for the Extradition of Persons Who Have Committed Crimes in a Foreign Country". The Decree is fothe doctrine of incorporation under the Constitution; the mutual concern for the suppression of crime both in thewhere it was committed and the state where the criminal may have escaped; the extradition treaty with the RepuIndonesia and the intention of the Philippines to enter into similar treaties with other interested countries; and thefor rules to guide the executive department and the courts in the proper implementation of said treaties.

On November 13, 1994, then Secretary of Justice Franklin M. Drilon, representing the Government of the RepuPhilippines, signed in Manila the "Extradition Treaty Between the Government of the Republic of the PhilippineGovernment of the United States of America" (hereinafter referred to as the RP-US Extradition Treaty). The Senway of Resolution No. 11, expressed its concurrence in the ratification of said treaty. It also expressed its concurthe Diplomatic Notes correcting Paragraph (5)(a), Article 7 thereof (on the admissibility of the documents accoman extradition request upon certification by the principal diplomatic or consular officer of the requested state resthe Requesting State).


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On June 18, 1999, the Department of Justice received from the Department of Foreign Affairs U.S. Note Verbale No.0522 containing a request for the extradition of private respondent Mark Jimenez to the United States. Attached to theNote Verbale were the Grand Jury Indictment, the warrant of arrest issued by the U.S. District Court, Southern District of Florida, and other supporting documents for said extradition. Based on the papers submitted, private respondent appearsto be charged in the United States with violation of the following provisions of the United States Code (USC):

A) 18 USC 371 (Conspiracy to commit offense or to defraud the United States; two [2] counts; MaximumPenalty 5 years on each count);

B) 26 USC 7201 (Attempt to evade or defeat tax; four [4] counts; Maximum Penalty 5 years on each count);

C) 18 USC 1343 (Fraud by wire, radio, or television; two [2] counts; Maximum Penalty 5 years on each

count);

D) 18 USC 1001 (False statement or entries; six [6] counts; Maximum Penalty 5 years on each count);

E) 2 USC 441f (Election contributions in name of another; thirty-three [33] counts; Maximum Penalty lessthan one year).

(p. 14, Rollo .)

On the same day, petitioner issued Department Order No. 249 designating and authorizing a panel of attorneys to takecharge of and to handle the case pursuant to Section 5(1) of Presidential Decree No. 1069. Accordingly, the panel beganwith the "technical evaluation and assessment" of the extradition request and the documents in support thereof. Thepanel found that the "official English translation of some documents in Spanish were not attached to the request and thatthere are some other matters that needed to be addressed" (p. 15, Rollo ).

Pending evaluation of the aforestated extradition documents, private respondent, through counsel, wrote a letter datedJuly 1, 1999 addressed to petitioner requesting copies of the official extradition request from the U.S. Government, aswell as all documents and papers submitted therewith; and that he be given ample time to comment on the request after he shall have received copies of the requested papers. Private respondent also requested that the proceedings on thematter be held in abeyance in the meantime.

Later, private respondent requested that preliminary, he be given at least a copy of, or access to, the request of theUnited States Government, and after receiving a copy of the Diplomatic Note, a period of time to amplify on his request.

In response to private respondent's July 1, 1999 letter, petitioner, in a reply-letter dated July 13, 1999 (but received byprivate respondent only on August 4, 1999), denied the foregoing requests for the following reasons:

1. We find it premature to furnish you with copies of the extradition request and supporting documents from theUnited States Government, pending evaluation by this Department of the sufficiency of the extraditiondocuments submitted in accordance with the provisions of the extradition treaty and our extradition law. Article7 of the Extradition Treaty between the Philippines and the United States enumerates the documentaryrequirements and establishes the procedures under which the documents submitted shall be received andadmitted as evidence. Evidentiary requirements under our domestic law are also set forth in Section 4 of P.D.No. 1069.

Evaluation by this Department of the aforementioned documents is not a preliminary investigation nor akin topreliminary investigation of criminal cases. We merely determine whether the procedures and requirementsunder the relevant law and treaty have been complied with by the Requesting Government. Theconstitutionally guaranteed rights of the accused in all criminal prosecutions are therefore not available.

It is only after the filing of the petition for extradition when the person sought to be extradited will be by the court with copies of the petition, request and extradition documents and this Department will nany objection to a request for ample time to evaluate said documents.

2. The formal request for extradition of the United States contains grand jury information and documeobtained through grand jury process covered by strict secrecy rules under United States law. The UnitStates had to secure orders from the concerned District Courts authorizing the United States to disclocertain grand jury information to Philippine government and law enforcement personnel for the purpoextradition of Mr. Jimenez. Any further disclosure of the said information is not authorized by the UnDistrict Courts. In this particular extradition request the United States Government requested the PhilGovernment to prevent unauthorized disclosure of the subject information. This Department's denial orequest is consistent with Article 7 of the RP-US Extradition Treaty which provides that the PhilippinGovernment must represent the interests of the United States in any proceedings arising out of a requ

extradition. The Department of Justice under P.D. No. 1069 is the counsel of the foreign governmentsextradition requests.

3. This Department is not in a position to hold in abeyance proceedings in connection with an extraditrequest. Article 26 of the Vienna Convention on the Law of Treaties, to which we are a party provides"[E]very treaty in force is binding upon the parties to it and must be performed by them in good faith"Extradition is a tool of criminal law enforcement and to be effective, requests for extradition or surrenaccused or convicted persons m ust be processed expeditiously.

(pp. 77-78, Rollo .)

Such was the state of affairs when, on August 6, 1999, private respondent filed with the Regional Trial Court of National Capital Judicial Region a petition against the Secretary of Justice, the Secretary of Foreign Affairs, andDirector of the National Bureau of Investigation, for mandamus (to compel herein petitioner to furnish private rthe extradition documents, to give him access thereto, and to afford him an opportunity to comment on, or oppoextradition request, and thereafter to evaluate the request impartially, fairly and objectively); certiorari (to set a

petitioner's letter dated July 13, 1999); and prohibition (to restrain petitioner from considering the extradition reqfrom filing an extradition petition in court; and to enjoin the Secretary of Foreign Affairs and the Director of the performing any act directed to the extradition of private respondent to the United States), with an application forissuance of a temporary restraining order and a writ of preliminary injunction (pp. 104-105, Rollo ).

The aforementioned petition was docketed as Civil Case No. 99-94684 and thereafter raffled to Branch 25 of sairegional trial court stationed in Manila which is presided over by the Honorable Ralph C. Lantion.

After due notice to the parties, the case was heard on August 9, 1999. Petitioner, who appeared in his own behalmoved that he be given ample time to file a memorandum, but the same was denied.

On August 10, 1999, respondent judge issued an order dated the previous day, disposing:

WHEREFORE, this Court hereby Orders the respondents, namely: the Secretary of Justice, the SecreForeign Affairs and the Director of the National Bureau of Investigation, their agents and/or representmaintain the status quo by refraining from committing the acts complained of; from conducting furth

proceedings in connection with the request of the United States Government for the extradition of thepetitioner; from filing the corresponding Petition with a Regional Trial court; and from performing andirected to the extradition of the petitioner to the United States, for a period of twenty (20) days from respondents of this Order, pursuant to Section 5, Rule 58 of the 1997 Rules of Court.

The hearing as to whether or not this Court shall issue the preliminary injunction, as agreed upon by tcounsels for the parties herein, is set on August 17, 1999 at 9:00 o'clock in the morning. The respondlikewise, ordered to file their written comment and/or opposition to the issuance of a Preliminary Injuor before said date.


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SO ORDERED.

(pp. 110-111, Rollo .)

Forthwith, petitioner initiated the instant proceedings, arguing that:

PUBLIC RESPONDENT ACTED WITHOUT OR IN EXCESS OF JURISDICTION OR WITH GRAVE ABUSEOF DISCRETION AMOUNTING TO LACK OR EXCESS OF J URISDICTION IN ISSUING THE TEMPORARYRESTRAINING ORDER BECAUSE:

I.

BY ORDERING HEREIN PETITIONER TO REFRAIN FROM COMMITTING THE ACTS COMPLAINEDOF, I .E ., TO DESIST FROM REFUSING PRIVATE RESPONDENT ACCESS TO THE OFFICIALEXTRADITION REQUEST AND DOCUMENTS AND FROM DENYING PRIVATE RESPONDENT ANOPPORTUNITY TO FILE A COMMENT ON, OR OPPOSITION TO, THE REQUEST, THE MAIN PRAYERFOR A WRIT OFMANDAMUS IN THE PETITION FORMANDAMUS, CERTIORARI AND PROHIBITIONWAS, IN EFFECT, GRANTED SO AS TO CONSTITUTE AN ADJUDICATION ON THE MERITS OFTHE MANDAMUS ISSUES;

II.

PETITIONER WAS UNQUALIFIEDLY PREVENTED FROM PERFORMING LEGAL DUTIES UNDER THEEXTRADITION TREATY AND THE PHILIPPINE EXTRADITION LAW;

III.

THE PETITION FOR(MANDAMUS), CERTIORARI AND PROHIBITION IS, ON ITS FACE, FORMALLY ANDSUBSTANTIALLY DEFICIENT; AND

IV.

PRIVATE RESPONDENT HAS NO RIGHTIN ESSE THAT NEEDS PROTECTION AND ENFORCEMENT,AND WILL NOT SUFFER ANY IRREPARABLE INJURY.

(pp. 19-20, Rollo .)

On August 17, 1999, the Court required private respondent to file his comment. Also issued, as prayed for, was atemporary restraining order (TRO) providing:

NOW, THEREFORE, effective immediately and continuing until further orders from this Court, You,Respondent Judge Ralph C. Lantion, your agents, representatives or any person or persons acting in your

place or stead are hereby ORDERED to CEASE and DESIST from enforcing the assailed order dated August9, 1999 issued by public respondent in Civil Case No. 99-94684.

GIVEN by the Honorable HILARIO G. DAVIDE, JR., Chief Justice, Supreme Court of the Philippines, this 17thday of August 1999.

(pp. 120-121, Rollo .)

The case was heard on oral argument on August 31, 1999, after which the parties, as directed, filed their respectmemoranda.

From the pleadings of the opposing parties, both procedural and substantive issues are patent. However, a reviewthese issues as well as the extensive arguments of both parties, compel us to delineate the focal point raised by thpleadings: During the evaluation stage of the extradition proceedings, is private respondent entitled to the two baprocess rights of notice and hearing? An affirmative answer would necessarily render the proceedings at the triamoot and academic (the issues of which are substantially the same as those before us now), while a negative reswould call for the immediate lifting of the TRO issued by this Court dated August 24, 1999, thus allowing petitifast-track the process leading to the filing of the extradition petition with the proper regional trial court. Corollarevent that private respondent is adjudged entitled to basic due process rights at the evaluation stage of the extradproceedings, would this entitlement constitute a breach of the legal commitments and obligations of the PhilippiGovernment under the RP-US Extradition Treaty? And assuming that the result would indeed be a breach, is the

conflict between private respondent's basic due process rights and the provisions of the RP-US Extradition Trea

The issues having transcendental importance, the Court has elected to go directly into the substantive merits of tbrushing aside peripheral procedural matters which concern the proceedings in Civil Case No. 99-94684, particupropriety of the filing of the petition therein, and of the issuance of the TRO of August 17, 1999 by the trial cour

To be sure, the issues call for a review of the extradition procedure. The RP-US Extradition Treaty which was exonly on November 13, 1994, ushered into force the implementing provisions of Presidential Decree No. 1069, alas the Philippine Extradition Law. Section 2(a) thereof defines extradition as "the removal of an accused from thPhilippines with the object of placing him at the disposal of foreign authorities to enable the requesting state or government to hold him in c onnection with any criminal investigation directed against him or the execution of aimposed on him under the penal or criminal law of the requesting state or government." The portions of the Decrelevant to the instant case which involves a charged and not convicted individual, are abstracted as follows:

The Extradition Request

The request is made by the Foreign Diplomat of the Requesting State, addressed to the Secretary of Foreign Affashall be accompanied by:

1. The original or an authentic copy of the criminal charge and the warrant of arrest issued by the auththe Requesting State having jurisdiction over the matter, or some other instruments having equivalentforce;

2. A recital of the acts for which extradition is requested, with the fullest particulars as to the name anof the accused, his whereabouts in the Philippines, if known, the acts or omissions complained of, andand place of the commission of these acts;

3. The text of the applicable law or a statement of the contents of said law, and the designation or descof the offense by the law, sufficient for evaluation of the request; and

4. Such other documents or information in support of the request.

(Sec. 4. Presidential Decree No. 1069.)

Sec. 5 of the Presidential Decree, which sets forth the duty of the Secretary of Foreign Affairs, pertinently provi

. . . (1) Unless it appears to the Secretary of Foreign Affairs that the request fails to meet the requiremthis law and the relevant treaty or convention, he shall forward the request together with the related doto the Secretary of Justice, who shall immediately designate and authorize an attorney in his office to charge of the case.


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The above provision shows only too clearly that the executive authority given the task of evaluating the sufficiency of therequest and the supporting documents is the Secretary of Foreign Affairs. What then is the coverage of this task?

In accordance with Paragraphs 2 and 3, Article 7 of the RP-US Extradition Treaty, the executive authority must ascertainwhether or not the request is supported by:

1. Documents, statements, or other types of information which describe the identity and probable location of the person sought;

2. A statement of the facts of the offense and the procedural history of the case;

3. A statement of the provisions of the law describing the essential elements of the offense for whichextradition is requested;

4. A statement of the provisions of law describing the punishment for the offense;

5. A statement of the provisions of the law describing any time limit on the prosecution or the execution of punishment for the offense;

6. Documents, statements, or other types of information specified in paragraph 3 or paragraph 4 of said Article,as applicable.

(Paragraph 2, Article 7, Presidential Decree No. 1069.)

7. Such evidence as, according to the law of the Requested State, would provide probable cause for his arrestand committal for trial if the offense had been committed there;

8. A copy of the warrant or order of arrest issued by a judge or other competent authority; and

9. A copy of the charging document.

(Paragraph 3, ibid .)

The executive authority (Secretary of Foreign Affairs) must also see to it that the accompanying documents received insupport of the request had been certified by the principal diplomatic or consular officer of the Requested State resident inthe Requesting State (Embassy Note No. 052 from U. S. Embassy; Embassy Note No. 951309 from the Department of Foreign Affairs).

In this light, Paragraph 3, Article 3 of the Treaty provides that "[e]xtradition shall not be granted if the executive authorityof the Requested State determines that the request is politically motivated, or that the offense is a military offense whichis not punishable under non-military penal legislation."

The Extradition Petition

Upon a finding made by the Secretary of Foreign Affairs that the extradition request and its supporting documents aresufficient and complete in form and substance, he shall deliver the same to the Secretary of Justice, who shallimmediately designate and authorize an attorney in his office to take charge of the case (Paragraph [1], Section 5, P.D.No. 1069). The lawyer designated shall then file a written petition with the proper regional trial court of the province or city, with a prayer that the court take the extradition request under consideration (Paragraph [2], ibid .).

The presiding judge of the regional trial court, upon receipt of the petition for extradition, shall, as soon as practiissue an order summoning the prospective extraditee to appear and to answer the petition on the day and hour fixthe order. The judge may issue a warrant of arrest if it appears that the immediate arrest and temporary detentionaccused will best serve the ends of justice (Paragraph [1], Section 6, ibid .), particularly to prevent the flight ofprospective extraditee.

The Extradition Hearing

The Extradition Law does not specifically indicate whether the extradition proceeding is c riminal, civil, or a speproceeding. Nevertheless, Paragraph [1], Section 9 thereof provides that in the hearing of the extradition petitionprovisions of the Rules of Court, insofar as practicable and not inconsistent with the summary nature of the procshall apply. During the hearing, Section 8 of the Decree provides that the attorney having c harge of the case mayapplication by the Requesting State, represent the latter throughout the proceedings.

Upon conclusion of the hearing, the court shall render a decision granting the extradition and giving the reasons upon a showing of the existence of a prima facie case, or dismiss the petition (Section 10, ibid .). Said decisioappealable to the Court of Appeals, whose decision shall be final and immediately executory (Section 12, ibidprovisions of the Rules of Court governing appeal in criminal cases in the Court of Appeals shall apply in theaforementioned appeal, except for the required 15-day period to file brief (Section 13, ibid .).

The trial court determines whether or not the offense mentioned in the petition is extraditable based on the applithe dual criminality rule and other conditions mentioned in Article 2 of the RP-US Extradition Treaty. The trial cdetermines whether or not the offense for which extradition is requested is a political one (Paragraph [1], ArticleUS Extradition Treaty).1wphi1.nt

With the foregoing abstract of the extradition proceedings as backdrop, the following query presents itself: Whanature of the role of the Department of Justice at the evaluation stage of the extradition proceedings?

A strict observance of the Extradition Law indicates that the only duty of the Secretary of Justice is to file the expetition after the request and all the s upporting papers are forwarded to him by the Secretary of Foreign Affairs. latter official who is authorized to evaluate the extradition papers, to assure their sufficiency, and under ParagrapArticle 3 of the Treaty, to determine whether or not the request is politically motivated, or that the offense is a moffense which is not punishable under non-military penal legislation. Ipso facto , as expressly provided in ParagSection 5 of the Extradition Law, the Secretary of Justice has the ministerial duty of filing the extradition papers

However, looking at the factual milieu of the case before us, it would appear that there was failure to abide by thprovisions of Presidential Decree No. 1069. For while it is true that the extradition request was delivered to theDepartment of Foreign Affairs on June 17, 1999, the following day or less than 24 hours later, the Department oreceived the request, apparently without the Department of Foreign Affairs discharging its duty of thoroughly evthe same and its accompanying documents. The statement of an assistant secretary at the Department of Foreignthat his Department, in this regard, is merely acting as a post office, for which reason he simply forwarded the rthe Department of Justice, indicates the m agnitude of the error of the Department of Foreign Affairs in taking ligresponsibilities. Thereafter, the Department of Justice took it upon itself to determine the completeness of the doand to evaluate the same to find out whether they c omply with the requirements laid down in the Extradition LawRP-US Extradition Treaty. Petitioner ratiocinates in this connection that although the Department of Justice had obligation to evaluate the extradition documents, the Department also had to go over them so as to be able to preextradition petition (tsn, August 31, 1999, pp. 24-25). Notably, it was also at this stage where private respondenton the following; (1) the right to be furnished the request and the supporting papers; (2) the right to be heard whiconsists in having a reasonable period of time to oppose the request, and to present evidence in support of theopposition; and (3) that the evaluation proceedings be held in abeyance pending the filing of private respondent'opposition to the request.

The two Departments seem to have misread the scope of their duties and authority, one abdicating its powers andother enlarging its commission. The Department of Foreign Affairs, moreover, has, through the Solicitor Generamanifestation that it is adopting the instant petition as its own, indirectly conveying the message that if it were tothe extradition request, it would not allow private respondent to participate in the process of evaluation.


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Plainly then, the record cannot support the presumption of regularity that the Department of Foreign Affairs thoroughlyreviewed the extradition request and supporting documents and that it arrived at a well-founded judgment that therequest and its annexed documents satisfy the requirements of law. The Secretary of Justice, eminent as he is in thefield of law, could not privately review the papers all by himself. He had to officially constitute a panel of attorneys. Howthen could the DFA Secretary or his undersecretary, in less than one day, make the more authoritative determination?

The evaluation process, just like the extradition proceedings proper, belongs to a class by itself. It is sui generis . It is nota criminal investigation, but it is also erroneous to say that it is purely an exercise of ministerial functions. At such stage,the executive authority has the power: (a) to make a technical assessment of the completeness and sufficiency of theextradition papers; (b) to outrightly deny the request if on its face and on the face of the supporting documents the crimesindicated are not extraditable; and (c) to make a determination whether or not the request is politically motivated, or thatthe offense is a military one which is not punishable under non-military penal legislation (tsn, August 31, 1999, pp. 28-29;Article 2 & and Paragraph [3], Article 3, RP-US Extradition Treaty). Hence, said process may be characterized as an

investigative or inquisitorial process in contrast to a proceeding conducted in the exercise of an administrative body'squasi-judicial power.

In administrative law, a quasi-judicial proceeding involves: (a) taking and evaluation of evidence; (b) determining factsbased upon the evidence presented; and (c) rendering an order or decision supported by the facts proved (De Leon,Administrative Law: Text and Cases, 1993 ed., p. 198, citing Morgan vs. United States, 304 U.S. 1). Inquisitorial power,which is also k nown as examining or investigatory power, is one or the determinative powers of an administrative bodywhich better enables it to exercise its quasi-judicial authority (Cruz, Phil. Administrative Law, 1996 ed., p. 26). This power allows the administrative body to inspect the records and premises, and investigate the activities, of persons or entitiescoming under its jurisdiction (Ibid ., p. 27), or to require disclosure of information by means or accounts, records, reports,testimony of witnesses, production of documents, or otherwise (De Leon, op. cit., p. 64).

The power of investigation consists in gathering, organizing, and analyzing evidence, which is a useful aid or tool in anadministrative agency's performance of its rule-making or quasi-judicial functions. Notably, investigation is indispensableto prosecution.

In Ruperto v . Torres (100 Phil. 1098 [1957], unreported), the Court had occasion to rule on the functions of aninvestigatory body with the sole power of investigation. It does not exercise judicial functions and its power is limited toinvestigating the facts and making findings in respect thereto. The Court laid down the test of determining whether anadministrative body is exercising judicial functions or merely investigatory functions: Adjudication signifies the exercise of power and authority to adjudicate upon the rights and obligations of the parties before it. Hence, if the only purpose for investigation is to evaluate evidence submitted before it based on the facts and circumstances presented to it, and if theagency is not authorized to make a final pronouncement affecting the parties, then there is an absence of judicialdiscretion and judgment.

The above description in Ruperto applies to an administrative body authorized to evaluate extradition documents. Thebody has no power to adjudicate in regard to the rights and obligations of both the Requesting State and the prospectiveextraditee. Its only power is to determine whether the papers comply with the requirements of the law and the treaty and,therefore, sufficient to be the basis of an extradition petition. Such finding is thus merely initial and not final. The bodyhas no power to determine whether or not the extradition should be effected. That is the role of the court. The body'spower is limited to an initial finding of whether or not the extradition petition can be filed in court.

It is to be noted, however, that in contrast to ordinary investigations, the evaluation procedure is characterized by certain

peculiarities. Primarily, it sets into motion the wheels of the extradition process. Ultimately, it may result in the deprivationof liberty of the prospective extraditee. This deprivation can be effected at two stages: First , the provisional arrest of theprospective extraditee pending the submission of the request. This is so because the Treaty provides that in c ase of urgency, a contracting party may request the provisional arrest of the person sought pending presentation of the request(Paragraph [1], Article 9, RP-US Extradition Treaty), but he shall be automatically discharged after 60 days if no requestis submitted (Paragraph 4). Presidential Decree No. 1069 provides for a shorter period of 20 days after which thearrested person could be discharged (Section 20[d]). Logically, although the Extradition Law is silent on this respect, theprovisions only mean that once a request is forwarded to the Requested State, the prospective extraditee may becontinuously detained, or if not, subsequently rearrested (Paragraph [5], Article 9, RP-US Extradition Treaty), for he willonly be discharged if no request is submitted. Practically, the purpose of this detention is to prevent his possible flight

from the Requested State. Second , the temporary arrest of the prospective extraditee during the pendency of thextradition petition in court (Section 6, Presidential Decree No. 1069).

Clearly, there is an impending threat to a prospective extraditee's liberty as early as during the evaluation stage. Ionly an imagined threat to his liberty, but a very imminent one.

Because of these possible consequences, we conclude that the evaluation process is akin to an administrative agconducting an investigative proceeding, the consequences of which are essentially criminal since such technicalassessment sets off or commences the procedure for, and ultimately, the deprivation of liberty of a prospectiveextraditee. As described by petitioner himself, this is a "tool" for criminal law enforcement (p. 78, Rollo ). In esstherefore, the evaluation process partakes of the nature of a criminal investigation. In a number of cases, we hadoccasion to make available to a respondent in an administrative case or investigation certain constitutional rightsordinarily available only in criminal prosecutions. Further, as pointed out by Mr. Justice Mendoza during the oraarguments, there are rights formerly available only at the trial stage that had been advanced to an earlier stage in proceedings, such as the right to counsel and the right against self-incrimination (tsn, August 31, 1999, p. 135; Evs. Illinois, 378 U.S. 478; Gideon vs. Wainwright, 372 U.S. 335; Miranda vs . Arizona, 384 U.S. 436).

In Pascual v . Board of Medical Examiners (28 SCRA 344 [1969]), we held that the right against self-incriminaSection 17, Article III of the 1987 Constitution which is ordinarily available only in criminal prosecutions, extenadministrative proceedings which possess a criminal or penal aspect, such as an administrative investigation of licensed physician who is charged with immorality, which could result in his loss of the privilege to practice mefound guilty. The Court, citing the earlier case of Cabal vs . Kapunan (6 SCRA 1059 [1962]), pointed out that trevocation of one's license as a medical practitioner, is an even greater deprivation than forfeiture of property.

Cabal vs . Kapunan (supra ) involved an administrative charge of unexplained wealth against a respondent whicfiled under Republic Act No. 1379, or the Anti-Graft Law. Again, we therein ruled that since the investigation mforfeiture of property, the administrative proceedings are deemed criminal or penal, and such forfeiture partakesnature of a penalty. There is also the earlier case of Almeda, Sr . vs . Perez (5 SCRA 970 [1962]), where the CAmerican jurisprudence, laid down the test to determine whether a proceeding is civil or criminal: If the proceedunder a statute such that if an indictment is presented the forfeiture can be included in the criminal case, suchproceeding is criminal in nature, although it may be civil in form; and where it must be gathered from the statuteaction is meant to be criminal in its nature, it cannot be considered as civil. If, however, the proceeding does notthe conviction of the wrongdoer for the offense charged, the proceeding is civil in nature.

The cases mentioned above refer to an impending threat of deprivation of one's property or property right. No letrue, but even more so in the case before us, involving as it does the possible deprivation of liberty, which, basedhierarchy of constitutionally protected rights, is placed second only to life itself and enjoys precedence over prowhile forfeited property can be returned or replaced, the time spent in incarceration is irretrievable and beyondrecompense.

By comparison, a favorable action in an extradition request exposes a person to eventual extradition to a foreignthus saliently exhibiting the criminal or penal aspect of the process. In this sense, the evaluation procedure is akpreliminary investigation since both procedures may have the same result the arrest and imprisonment of therespondent or the person charged. Similar to the evaluation stage of extradition proceedings, a preliminary inveswhich may result in the filing of an information against the respondent, can possibly lead to his arrest, and to thedeprivation of his liberty.

Petitioner's reliance on Wright vs . Court of Appeals (235 SCRA 241 [1992]) (p. 8, petitioner's Memorandum) textradition treaty is neither a piece of criminal legislation nor a criminal procedural statute is not well-taken. Wauthority for petitioner's conclusion that his preliminary processing is not akin to a preliminary investigation. Thcharacterization of a treaty in Wright was in reference to the applicability of the prohibition against an ex post fhad nothing to do with the denial of the right to notice, information, and hearing.

As early as 1884, the United States Supreme Court ruled that "any legal proceeding enforced by public authoritywhether sanctioned by age or custom, or newly devised in the discretion of the legislative power, in furtherance general public good, which regards and preserved these principles of liberty and justice, must be held to be due p


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of law" (Hurtado vs. California, 110 U.S. 516). Compliance with due process r equirements cannot be deemed non-compliance with treaty commitments.

The United States and the Philippines share a mutual concern about the suppression and punishment of crime in their respective jurisdictions. At the same time, both States accord common due process protection to their respectivecitizens.

The due process clauses in the American and Philippine Constitutions are not only worded in exactly identical languageand terminology, but more importantly, they are alike in what their respective Supreme Courts have expounded as thespirit with which the provisions are informed and impressed, the elasticity in their interpretation, their dynamic andresilient character which make them capable of meeting every modern problem, and their having been designed fromearliest time to the present to meet the exigencies of an undefined and expanding future. The requirements of dueprocess are interpreted in both the United States and the Philippines as not denying to the law the capacity for progressand improvement. Toward this effect and in order to avoid the confines of a legal straitjacket, the courts instead prefer tohave the meaning of the due process clause "gradually ascertained by the process of inclusion and exclusion in thecourse of the decisions of cases as they arise" (Twining vs. New Jersey, 211 U.S. 78). Capsulized, it refers to "theembodiment of the sporting idea of fair play" (Ermita-Malate Hotel and Motel Owner's Association vs. City Mayor of Manila, 20 SCRA 849 [1967]). It relates to certain immutable principles of justice which inhere in the very idea of freegovernment (Holden vs. Hardy, 169 U.S. 366).

Due process is comprised of two components substantive due process which requires the intrinsic validity of the law ininterfering with the rights of the person to his life, liberty, or property, and procedural due process which consists of thetwo basic rights of notice and hearing, as well as the guarantee of being heard by an impartial and competent tribunal(Cruz, Constitutional Law, 1993 Ed., pp. 102-106).

True to the mandate of the due process clause, the basic rights of notice and hearing pervade not only in criminal andcivil proceedings, but in administrative proceedings as well. Non-observance of these rights will invalidate theproceedings. Individuals are entitled to be notified of any pending case affecting their interests, and upon notice, theymay claim the right to appear therein and present their side and to refute the position of the opposing parties (Cruz, Phil.Administrative Law, 1996 ed., p. 64).

In a preliminary investigation which is an administrative investigatory proceeding, Section 3, Rule 112 of the Rules of Court guarantees the respondent's basic due process rights, granting him the right to be furnished a copy of thecomplaint, the affidavits, and other supporting documents, and the right to submit counter-affidavits and other supportingdocuments within ten days from receipt thereof. Moreover, the respondent shall have the right to examine all other evidence submitted by the complainant.

These twin rights may, however, be considered dispensable in certain instances, such as:

1. In proceeding where there is an urgent need for immediate action, like the summary abatement of anuisance per se (Article 704, Civil Code), the preventive suspension of a public servant facing administrativecharges (Section 63, Local Government Code, B.P. Blg. 337), the padlocking of filthy restaurants or theatersshowing obscene movies or like establishments which are immediate threats to public health and decency, andthe cancellation of a passport of a person sought for cr iminal prosecution;

2. Where there is tentativeness of administrative action, that is, where the respondent is not precluded fromenjoying the right to notice and hearing at a later time without prejudice to the person affected, such as thesummary distraint and levy of the property of a delinquent taxpayer, and the replacement of a temporaryappointee; and

3. Where the twin rights have previously been offered but the right to exercise them had not been claimed.

Applying the above principles to the case at bar, the query may be asked: Does the evaluation stage of the extraditionproceedings fall under any of the described situations mentioned above?

Let us take a brief look at the nature of American extradition proceedings which are quite noteworthy considerinsubject treaty involves the U.S. Government.

American jurisprudence distinguishes between interstate rendition or extradition which is based on the Extraditiin the U.S. Constitution (Art. IV, 2 cl 2), and international extradition proceedings. In interstate rendition or extthe governor of the asylum state has the duty to deliver the fugitive to the demanding state. The Extradition Clauthe implementing statute are given a liberal construction to carry out their manifest purpose, which is to effect thas swiftly as possible of persons for trial to the state in which they have been charged with crime (31A Am Jur755). In order to achieve extradition of an alleged fugitive, the requisition papers or the demand must be in propeand all the elements or jurisdictional facts essential to the extradition must appear on the face of the papers, suchallegation that the person demanded was in the demanding state at the time the offense charged was committed, that the person demanded is charged with the commission of the crime or that prosecution has been begun in thedemanding state before some court or magistrate (35 C.J.S. 406-407). The extradition documents are then filed w

governor of the asylum state, and must contain such papers and documents prescribed by statute, which essentiainclude a copy of the instrument charging the person demanded with a crime, such as an indictment or an affidavbefore a magistrate. Statutory requirements with respect to said charging instrument or papers are mandatory sinpapers are necessary in order to confer jurisdiction on the government of the asylum state to effect extradition (3408-410). A statutory provision requiring duplicate copies of the indictment , information , affidavit , or judgment oconviction or sentence and other instruments accompanying the demand or requisitions be furnished and delivered tothe fugitive or his attorney is directory . However , the right being such a basic one has been held to be a right mandatory on demand (Ibid ., p. 410, citing Ex parte Moore, 256 S.W. 2d 103, 158 Tex. Cr. 407 and Ex parte Tucker, Cr.,S.W.2d 853).

In international proceedings, extradition treaties generally provide for the presentation to the executive authorityRequested State of a requisition or demand for the return of the alleged offender, and the designation of the partiofficer having authority to act in behalf of the demanding nation (31A Am Jur 2d 815).

In petitioner's memorandum filed on September 15, 1999, he attached thereto a letter dated September 13, 1999 the Criminal Division of the U.S. Department of Justice, summarizing the U.S. extradition procedures and princwhich are basically governed by a combination of treaties (with special reference to the RP-US Extradition Trea

federal statutes, and judicial decisions, to wit:

1. All requests for extradition are transmitted through the diplomatic channel. In urgent cases, requestprovincial arrest of an individual may be made directly by the Philippine Department of Justice to theDepartment of Justice, and vice-versa. In the event of a provisional arrest, a formal request for extradtransmitted subsequently through the diplomatic channel.

2. The Department of State forwards the incoming Philippine extradition request to the Department ofBefore doing so, the Department of State prepares a declaration confirming that a formal request has bmade, that the treaty is in full force and effect, that under Article 17 thereof the parties provide reciprorepresentation in extradition proceedings, that the offenses are covered as extraditab