casedigests_set1_30august2013

8/12/2019 CaseDigests_Set1_30August2013

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LIP 2013-2014Case Digests Set1

Case Title:TANDUAY DISTILLERS, INC.vs. GINERA SAN !IGUEL, INC.

Petiti"#e$%s Clai&s: Tanduay argues that San Miguel cannot claim the exclusive right to use the generic word

"Ginebra" for its gin products based on its registration of the composite marks "Ginebra San Miguel", "Ginebra S.Miguel !", and "a Tonde#a $li%& Ginebra Mix", because in all of these registrations, San Miguel disclaimed any

exclusive right to use the non'registrable word "Ginebra" for gin products. Tanduay explains that the word

"Ginebra", which is disclaimed by San Miguel in all of its registered trademarks, is an unregistrable component of

the composite mark "Ginebra San Miguel". Tanduay argues that this disclaimer further means that San Miguel does

not have an exclusive right to the generic word "Ginebra". Tanduay states that the word "Ginebra" does not indicate

the source of the product, but it is merely descriptive of the name of the product itself and not the manufacturer

thereof.

Res'"#(e#t%s Clai&s( San Miguel alleges that although "Ginebra", the Spanish word for "gin", may be a term

originally incapable of exclusive appropriation, )urisprudence dictates that the mark has become distinctive of San

Miguel*s products due to its substantially exclusive and continuous use as the dominant feature of San Miguel*s

trademarks since +-. /ence, San Miguel is entitled to a finding that the mark is deemed to have ac%uired a

secondary meaning. San Miguel states that Tanduay failed to present any evidence to disprove its claims0 thus, there

is no basis to set aside the grant of the T12 and writ of preliminary in)unction.

Iss)e*s( 3+45hether a word like "Ginebra" can ac%uire a secondary meaning for gin products so as to prohibit the

use of the word "Ginebra" by other gin manufacturers or sellers.

364 5hether the word "Ginebra" is a generic mark that is incapable of appropriation by gin manufacturers.

R)li#g: 7nAsia Brewery, Inc. v. Court of Appeals, the $ourt ruled that "pale pilsen" are generic words, "pale"being the actual name of the color and "pilsen" being the type of beer, a light bohemian beer with a strong hops

flavor that originated in 8ilsen $ity in $9echoslovakia and became famous in the Middle :ges, and hence incapable

of appropriation by any beer manufacturer. Moreover, Section +6-.+ 3h4 of the 78 $ode states that a mark cannot be

registered if it "consists exclusively of signs that are generic for the goods or services that they seek to identify".

7n this case, a cloud of doubt exists over San Miguel*s exclusive right relating to the word "Ginebra". San Miguel*s

claim to the exclusive use of the word "Ginebra" is clearly still in dispute because of Tanduay*s claim that it has, as

others have, also registered the word "Ginebra" for its gin products. This issue can be resolved only after a full'

blown trial.

7nOng Ching Kian Chuan v. Court of Appeals, we held that in the absence of proof of a legal right and the in)ury

sustained by the movant, the trial court*s order granting the issuance of an in)unctive writ will be set aside, forhaving been issued with grave abuse of discretion.

5e find that San Miguel*s right to in)unctive relief has not been clearly and unmistakably demonstrated. The right to

the exclusive use of the word "Ginebra" has yet to be determined in the main case. The trial court*s grant of the writ

of preliminary in)unction in favor of San Miguel, despite the lack of a clear and unmistakable right on its part,

constitutes grave abuse of discretion amounting to lack of )urisdiction.

Case Title: !a#)el Es'i$it) et.al., +s. PETRN CRPRATIN a#( CAR!EN . DLIRAS, ("i#g

)si#ess )#(e$ t/e #a&e RISTINA PATRICIA ENTERPRISES

Petiti"#e$%s Clai&:The provincial prosecutor ruled that there was probable cause only for violation of 1.:. 6-

3unlawfully filling up registered tanks4 and that only the four ;icol Gas employees, Mirabena, Misal, eorena, and


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petitioner lona, could be charged. The charge against the other petitioners who were the stockholders and directors

of the company was dismissed.

Res'"#(e#t%s Clai&: 7n the course of trade and competition, any given distributor of 8Gs at times ac%uired

possession of 8G cylinder tanks belonging to other distributors operating in the same area. They called these

"captured cylinders". :ccording to *s manager, in :pril 6??+ ;icol Gas agreed with =8> for the swapping

of "captured cylinders" since one distributor could not refill captured cylinders with its own brand of 8G. :t onetime, in the course of implementing this arrangement, =8>*s . T$:S7/

=8>*s


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The only point left is the %uestion of the liability of the stockholders and members of the board of directors of ;icol

Gas with respect to the charge of unlawfully filling up a steel cylinder or tank that belonged to 8etron. The $ourt of

:ppeals ruled that they should be charged along with the ;icol Gas employees who were pointed to as directly

involved in overt acts constituting the offense.

;icol Gas is a corporation. :s such, it is an entity separate and distinct from the persons of its officers, directors, and

stockholders. 7t has been held, however, that corporate officers or employees, through whose act, default or omissionthe corporation commits a crime, may themselves be individually held answerable for the crime.

The "owners" of a corporate organi9ation are its stockholders and they are to be distinguished from its directors and

officers. The petitioners here, with the exception of :udie lona, are being charged in their capacities as

stockholders of ;icol Gas. ;ut the $ourt of :ppeals forgets that in a corporation, the management of its business is

generally vested in its board of directors, not its stockholders. Stockholders are basically investors in a corporation.

They do not have a hand in running the day'to'day business operations of the corporation unless they are at the same

time directors or officers of the corporation. ;efore a stockholder may be held criminally liable for acts committed

by the corporation, therefore, it must be shown that he had knowledge of the criminal act committed in the name of

the corporation and that he took part in the same or gave his consent to its commission, whether by action or

inaction.

The finding of the $ourt of :ppeals that the employees "could not have committed the crimes without the consent,

CabetmentD, permission, or participation of the owners of ;icol Gas" is a sweeping speculation especially since, as

demonstrated above, what was involved was )ust one 8etron Gasul tank found in a truck filled with ;icol Gas tanks.

:lthough the =8> manager heard petitioner lona say that he was going to consult the owners of ;icol Gas

regarding the offer to swap additional captured cylinders, no indication was given as to which ;icol Gas

stockholders lona consulted. 7t would be unfair to charge all the stockholders involved, some of whom were proved

to be minors. @o evidence was presented establishing the names of the stockholders who were charged with running

the operations of ;icol Gas. The complaint even failed to allege who among the stockholders sat in the board of

directors of the company or served as its officers.

The $ourt of :ppeals of course specifically mentioned petitioner stockholder Manuel $. >spiritu, manager brought to the police for investigation because that truck carried

a tank of 8etron Gasul. ;ut the act that 1.:. 6- punishes is the unlawful filling up of registered tanks of another. 7t

does not punish the act of transporting such tanks. :nd the complaint did not allege that the truck owner connived

with those responsible for filling up that Gasul tank with ;icol Gas 8G.

Case Title:ARNEL U. TY, !ARIE ANTNETTE TY, ASN NG, ILLY DY, a#( ALIN TY vs. NI

SUPERISING AGENT !ARIN E. DE E!IL, PETRN GASUL DEALERS ASSCIATIN, a#(

TTALGA DEALERS ASSCIATIN

Petiti"#e$%s Clai&:8etitioners contend that there is no probable cause that 2mni violated Sec. 6 3a4, in relation toSecs. - 3c4 and of ;8 --, as amended, prohibiting the refilling of another company*s or firm*s 8G cylinders

without its written authori9ation.First,the branded 8G cylinders sei9ed were not traded by 2mni as its

representative annotated in the @;7 receipt of sei9ed items that the filled 8G cylinders came from customers*trucks and the empty ones were taken from the warehouse or swapping section of the refilling plant and not from the

refilling section. Second,the branded 8G cylinders are owned by end'user customers and not by the ma)or

petroleum companies, i.e., 8etron, 8ilipinas Shell and Total. :nd even granting arguendo that 2mni is selling these

8G cylinders, still there cannot be aprima faciecase of violation since there is no proof that the refilled branded

8G cylinders are owned by another company or firm.

hird,granting that 8etron, Total and 8ilipinas Shell still own their respective branded 8G cylinders already sold toconsumers, still such fact will not bind third persons, like 2mni, who is not privy to the agreement between the


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buying consumers and said ma)or petroleum companies. Thus, a subse%uent transfer by the customers of 8etron,

Total and 8ilipinas Shell of the duly marked or stamped 8G cylinders through swapping, for example, will

effectively transfer ownership of the 8G cylinders to the transferee, like 2mni.

Fourth,8G cylinder exchange or swapping is a common industry practice that the E2> recogni9es. They point to

a series of meetings conducted by the E2> for institutionali9ing the validity of swapping of all and any kind of 8G

cylinders among the industry players. The meetings resulted in a draft Memorandum of :greement 3M2:4 whichunfortunately was not signed due to the withdrawal of petroleum ma)or players 8etron, Total and 8ilipinas Shell.

@onetheless, the non'signing of the M2: does not diminish the fact of the recogni9ed industry practice of cylinder

exchange or swapping. 1elying on 1epublic :ct @o. 31:4 FA, petitioners maintain that said law promotes andencourages the entry of new participants in the petroleum industry such as 2mni. :nd in furtherance of this mandate

is the valid practice of cylinder exchange or swapping in the 8G industry.

1espondents $laim( 1espondents claim that the $ircular is not confiscatory in providing penalties on a per cylinder

basis.

Iss)e*s:52@ there is probable cause that 2mni violated Sec. 6 3a4, in relation to Secs. - 3c4 and of ;8 --, as

amended, prohibiting the refilling of another company*s or firm*s 8G cylinders without its written authori9ation.

R)li#g:

P$"ale +i"lati"# "5 Se6. 2 7a8 "5 P 33, a&e#(e(

9i$st. The test'buy conducted on :pril +!, 6?? by the @;7 agents, as attested to by their respective affidavits, tendsto show that 2mni illegally refilled the eight branded 8G cylinders for 8h8+,!6. This is a clear violation of Sec. 6

3a4, in relation to Secs. - 3c4 and of ;8 --, as amended. 7t must be noted that the criminal complaints, as clearly

shown in the complaint'affidavits of :gent Ee


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! 8G cylindersMarked as Omnigas with otalga# emboss,

++.? kg CemptyD

6- 8G cylindersShellane, ++.? kg CemptyD

- 8G cylindersMarked as Omnigas with "asul emboss,

++.? kg CemptyD

6+ 8G cylindersotalga#, ++.? kg CemptyD

The foregoing list is embodied in the @;7*s 1eceiptI7nventory of 8ropertyI7tem Sei9ed signed by @;7 :gent >dwin

ven considering that the filled 8G cylinders were indeed already loaded on customers* trucks when confiscated,

yet the fact that these refilled 8G cylinders consisting of nine branded 8G cylinders, specifically otalga#, !etron"asul and Shellane,tends to show that 2mni indeed refilled these branded 8G cylinders without authori9ation

from Total, 8etron and 8ilipinas Shell. Such a fact is bolstered by the test'buy conducted by :gent Ee


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P$"ale +i"lati"# "5 Se6. 2 768 "5 P 33, as a&e#(e(

:nent the alleged violation of Sec. 6 3c4 in relation to Sec. of ;8 --, as amended,

:gain, we are not persuaded.

$ontrary to petitioners* arguments, a single underfilling constitutes an offense under ;8 --, as amended by 8E+!, which clearly criminali9es these offenses. The $ourt affirmed the validity of E2> $ircular @o. 6???'?'?+?

which '$"+i(e( 'e#alties "# a 'e$ 6=li#(e$ asis 5"$ ea6/ +i"lati"#, thus(

;.8. ;lg. --, as amended, criminali9es illegal t$a(i#g, adulteration, )#(e$5illi#g, hoarding, andoverpricing of petroleum products. Bnder this general description of what constitutes criminal

acts involving petroleum products, the $ircular merely lists the various modes by which the said

criminal acts may be perpetrated, namely( no price display board, no weighing scale, no tare

weight or incorrect tare weight markings, #" a)t/"$i 1>G72@: T17: $2B1T >11>E 7@ $2@J7$T7@G T/> :$$BS>E 2@ T/> ;:S7S 2K

T/> S>K'S>1J7@G :KK7E:J7TS :@E T>ST7M2@7>S 2K T/> 827$> 2KK7$>1S 5/2

$2@EB$T>E T/> 1:7E 2@ T/> /2BS> 2K T/> :$$BS>E.

/e submits that the only direct proofs of his guilt were the self'serving testimonies of the @;7 raiding team0 that he

was not present during the search0 that one of the @;7 raiding agents failed to immediately identify him in court0 and

that aside from the two bottles ofFundador brandy, the rest of the confiscated items were not found in his house.


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Res'"#(e#t%s Clai&: :llied Eomec% 8hilippines, 7nc., a 8hilippine corporation exclusively authori9ed todistributeFundadorbrandy products imported from Spain wholly in finished form, initiated this case against

;atistis. Bpon its re%uest, agents of the @ational ;ureau of 7nvestigation 3@;74 conducted a test'buy in the premisesof ;atistis, and thereby confirmed that he was actively engaged in the manufacture, sale and distribution of

counterfeitFundador brandy products. Bpon application of the @;7 agents based on the positive results of the test'

buy, ugenio, xchange $ommission 3S>$4 in


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Res'"#(e#t%s Clai&s:

1espondent is a local corporation engaged in the wholesale and retail sale of coffee. 7t registered with the

S>$ in May +AA!. 7t registered the business name LS:@ K1:@$7S$2 $2KK>> N 12:ST>1O, 7@$. with the

Eepartment of Trade and 7ndustry 3ET74 in in ibis, Hue9on $ity. :ccording to respondent, petitioners shop caused confusion in the

minds of the public as it bore a similar name and it also engaged in the business of selling coffee.

Iss)e: 5hether petitioners use of the trademark LS:@ K1:@$7S$2 $2KK>> constitutes infringement of

respondents trade name LS:@ K1:@$7S$2 $2KK>> N 12:ST>1O, 7@$., even if the trade name is not

registered with the 7ntellectual 8roperty 2ffice 37824.

R)li#g: 7n !rosource International, Inc. v. 1orphag -esearch anagement SA, this $ourt laid down what

constitutes infringement of an unregistered trade name, thus(

3+4The trademark being infringed is registered in the 7ntellectual 8roperty 2ffice0

however, i# i#5$i#ge&e#t "5 t$a(e #a&e, t/e sa&e #ee( #"t e $egiste$e(0

364 The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated

by the infringer0

3-4 The infringing mark or trade name is used in connection with the sale, offering for sale,

or advertising of any goods, business or services0 or the infringing mark or trade name is

applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended

to be used upon or in connection with such goods, business, or services0

34 The use or application of the infringing mark or trade name is likely to cause confusion

or mistake or to deceive purchasers or others as to the goods or services themselves or as to

the source or origin of such goods or services or the identity of such business0 and

3!4 7t is without the consent of the trademark or trade name owner or the assignee thereof.

$learly, a trade name need not be registered with the 782 before an infringement suit may be filed

by its owner against the owner of an infringing trademark. :ll that is re%uired is that the trade name is previously

used in trade or commerce in the 8hilippines. 7n its + :ugust 6??6 Eecision, the ;:'782 held that petitioners

trademark infringed on respondents trade name. 7t ruled that the right to the exclusive use of a trade name with

freedom from infringement by similarity is determined from priority of adoption. Since respondent registered its

business name with the ET7 in +AA! and petitioner registered its trademark with the 782 in 6??+ in the 8hilippines

and in +AAF in other countries, then respondent must be protected from infringement of its trade name.

The ;:'782 also held that respondent did not abandon the use of its trade name as substantial

evidence indicated respondent continuously used its trade name in connection with the purpose for which it was

organi9ed. 7t found that although respondent was no longer involved in blending, roasting, and distribution of coffee

because of the creation of ;$$87, it continued making plans and doing research on the retailing of coffee and the


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setting up of coffee carts. The ;:'782 ruled that for abandonment to exist, the disuse must be permanent,

intentional, and voluntary.

This court is not )ust a court of law, but also of e%uity. 5e cannot allow petitioner to profit by the

name and reputation so far built by respondent without running afoul of the basic demands of fair play. @ot only the

law but e%uity considerations hold petitioner liable for infringement of respondents trade name.

Case Title: ART>UR DEL RSARI a#( ALEANDER DEL RSARI, 'etiti"#e$s, +s. >ELLENR D.

DNAT, R. a#( RA9AEL . GNAGA, $es'"#(e#ts., G.R. N". 1B0;. !a$6/ , 2010

Petiti"#e$%s Clai&s:

The Eel 1osarios allege that respondents @;7 agents used an unlawfully obtained search warrant against

them, evidenced by the fact that, contrary to the sworn statements used to get such warrant, the @;7 agents found no

fake Marlboro cigarettes in petitioner :lexander del 1osarios premises.


The 1espondents content that the Eel 1osarios did not allege that respondents @;7 agents violated their

right by fabricating testimonies to convince the 1T$ of :ngeles $ity to issue the search warrant. Their allegation

that the @;7 agents used an unlawfully obtained search warrant is a mere conclusion of law.

Iss)e:5hether or not the $: correctly ruled that the complaint of the Eel 1osarios did not state a cause of action

R)li#g:The $: held that the Eel 1osarios complaint before the 1T$ failed to state a cause of action against

respondents @;7 agents. Such complaint said that the @;7 agents unlawfully procured and enforced the search

warrant issued against the Eel 1osarios but it failed to state the ultimate facts from which they drew such

conclusion.

Case Title: SCIETE DES PRDUITS NESTLE, S.A., 'etiti"#e$, +s. !ARTIN T. DY, R., $es'"#(e#t.,G.R. N". 122@. A)g)st ;, 2010.


8etitioner Societe Ees 8roduits @estle, S.:. 3@estle4 is a foreign corporation organi9ed under the laws of

Swit9erland. 7t manufactures food products and beverages. :s evidenced by $ertificate of 1egistration @o. 1'

+6+ issued on F :pril +AA by the then ;ureau of 8atents, Trademarks and Technology Transfer, @estle owns the

L@:@ trademark for its line of infant powdered milk products, consisting of 81>'@:@, @:@'/.:., @:@'+, and

@:@'6. @:@ is classified under $lass P Ldiatetic preparations for infant feeding. @estle distributes and sells its

@:@ milk products all over the 8hilippines. 7t has been investing tremendous amounts of resources to train its sales

force and to promote the @:@ milk products through advertisements and press releases. 7n a letter dated + :ugust

+A!, @estle re%uested Ey,


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2riental, $agayan de 2ro, and parts of Mindanao. Ey, '@:@, @:@'/.:., @:@'+, and @:@'6. $learly, L@:@@O contains the

prevalent feature L@:@. The first three letters of L@:@@O are exactly the same as the letters of L@:@. 5henL@:@ and L@:@@O are pronounced, the aural effect is confusingly similar.

The $ourt agrees with the lower courts that there are differences between @:@ and @:@@O( 3+4 @:@ is

intended for infants while @:@@O is intended for children past their infancy and for adults0 and 364 @:@ is more

expensive than @:@@O. /owever, as the registered owner of the L@:@ mark, @estle should be free to use its

mark on similar products, in different segments of the market, and at different price levels. The registered trademark

owner may use his mark on the same or similar products, in different segments of the market, and at different price

levels depending on variations of the products for specific segments of the market. The $ourt has recogni9ed that

the registered trademark owner en)oys protection in product and market areas that are the normal potential

e2pansion of his (usiness.

Case Title: DER!ALINE, INC.vs. !YRA P>AR!ACEUTICALS, INC.

Petiti"#e$%s 6lai&s: :fter petitioner filed before the 782 an application for registration for the trademarkLE>1M:7@> E>1M:7@>, 7@$., it was opposed by respondent. Eermaline, in its Jerified :nswer, contends

that a simple comparison of the trademark "E>1M:7@> E>1M:7@>, 7@$." vis'Q'vis Myra*s "E>1M:7@"

trademark would show that they have entirely different features and distinctive presentation, thus it cannot result in

confusion, mistake or deception on the part of the purchasing public. Eermaline contended that, in determining if the

same are confusingly similar, a comparison of their entirety must be considered in relation to the goods to which

they are attached, including the other features appearing in both labels. 7t claimed that there were glaring and

striking dissimilarities between the two trademarks, such that its trademark "E>1M:7@> E>1M:7@>, 7@$."

speaks for itself 3-es ipsa lo%uitur4.

Eermaline further argued that there could not be any relation between its trademark for health and beauty services

from Myra*s trademark classified under medicinal goods against skin disorders.

Res'"#(e#t%s 6lai&s: Myra, through a Jerified 2pposition, alleged that the trademark sought to be registered byEermaline so resembles its trademark "E>1M:7@," registered with the 782 way back in


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Myra claimed that, despite Eermaline*s attempt to differentiate its applied mark, the dominant feature is the term

"E>1M:7@>," which is practically identical with its own "E>1M:7@," more particularly that the first eight 34

letters of the marks and the pronunciation for both marks are identical.

Myra further argued that its intellectual property right over its trademark is protected under Section +F of the

7ntellectual 8roperty $ode of the 8hilippines.

Iss)e: 5o@ the $: erred in upholding the 782s re)ection of Eermalines application for registration of trademark.

R)li#g: The petition is without merit. 7narguably, a trademark is an intellectual property deserving protection bylaw.

:s Myra correctly posits, as a registered trademark owner, it has the right under Section +F of 1.:. @o. 6A- toprevent third parties from using a trademark, or similar signs or containers for goods or services, without its consent,

identical or similar to its registered trademark, where such use would result in a likelihood of confusion.

7n determining likelihood of confusion, case law has developed two 364 tests, the Eominancy Test and the /olistic

or Totality Test.

The Eominancy Test, incorporated under Section +!!.+ of the $ode, focuses on the similarity of the prevalent

features of the competing trademarks that might cause confusion or deception. 7t is applied when the trademarksought to be registered contains the main, essential and dominant features of the earlier registered trademark, and

confusion or deception is likely to result

2n the other hand, the /olistic Test entails a consideration of the entirety of the marks as applied to the products,

including labels and packaging, in determining confusing similarity.

Krom this, )urisprudence has noted two types of confusion( 3+4 confusion of goods 3product confusion4 and 364

confusion of business 3source or origin confusion4.

7n re)ecting the application of Eermaline for the registration of its mark "E>1M:7@> E>1M:7@>, 7@$.," the

782 applied the Eominancy Test. 7t declared that both confusion of goods and service and confusion of business orof origin were apparent in both trademarks. 5e agree with the findings of the 782. :s correctly applied by the 782

in this case, while there are no set rules that can be deduced as what constitutes a dominant feature with respect to

trademarks applied for registration0 usually, what are taken into account are signs, color, design, peculiar shape or

name, or some special, easily remembered earmarks of the brand that readily attracts and catches the attention of theordinary consumer.

Kurther, Eermaline*s 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.

Case Title: SEC>ERS, U.S.A., INC.vs. INTER PACI9IC INDUSTRIAL TRADING CRP., et. al.

Petiti"#e$%s 6lai&s: 8etitioner filed with ;ranch 6 of the 1egional Trial $ourt 31T$4 of Manila an application forthe issuance of search warrants against an outlet and warehouse operated by respondents for infringement of

trademark under Section +!!, in relation to Section +F? of the 7ntellectual 8roperty $ode of the 8hilippines. 7n the

course of its business, petitioner has registered the trademark "S=>$/>1S" and the trademark "S" 3within an oval

design4 with the 7ntellectual 8roperty 2ffice 37824.

Res'"#(e#t%s 6lai&s: 1espondents moved to %uash the warrants on the ground that there was no confusingsimilarity between petitioners LSkechers rubber shoes and respondents LStrong( rubber shoes.


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Iss)e: 5o@ the $: erred in affirming the decision of the 1T$ that the respondents were not guilty of trademarkinfringement.

R)li#g: :pplying the Eominancy Test to the case at bar, this $ourt finds that the use of the styli9ed "S" byrespondent in its Strong rubber shoes infringes on the mark already registered by petitioner with the 782. 5hile it is

undisputed that petitioner*s styli9ed "S" is within an oval design, to this $ourt*s mind, the dominant feature of the

trademark is the styli9ed "S," as it is precisely the styli9ed "S" which catches the eye of the purchaser. Thus, even ifrespondent did not use an oval design, the mere fact that it used the same styli9ed "S", the same being the dominant

feature of petitioner*s trademark, already constitutes infringement under the Eominancy Test.

This $ourt cannot agree with the observation of the $: that the use of the letter "S" could hardly be considered ashighly identifiable to the products of petitioner alone. The $: even supported its conclusion by stating that the letter

"S" has been used in so many existing trademarks, the most popular of which is the trademark "S" enclosed by an

inverted triangle, which the $: says is identifiable to Superman. Such reasoning, however, misses the entire point,

which is that respondent had used a styli9ed "S," which is the same styli9ed "S" which petitioner has a registered

trademark for. The letter "S" used in the Superman logo, on the other hand, has a block'like tip on the upper portion

and a round elongated tip on the lower portion. :ccordingly, the comparison made by the $: of the letter "S" used

in the Superman trademark with petitioner*s styli9ed "S" is not appropriate to the case at bar.

;oth the 1T$ and the $: applied the /olistic Test in ruling that respondent had not infringed petitioner*strademark. 5hile there may be dissimilarities between the appearances of the shoes, to this $ourt*s mind such

dissimilarities do not outweigh the stark and blatant similarities in their general features.

Case Title: >N NE C>AN, YUNI ENG, AND >N DEvs. >NDA !TR C., LTD., AND>NDA P>IL., INC.

Petiti"#e$%s 6lai&s: Search warrants were issued against petitioners, dong business under the name and styleLEragon Spirit Motorcycle $enter for their alleged violation of Section + in relation to Section +F? of the

7ntellectual 8roperty $ode of the 8hilippines. 8etitioners filed with the 1T$ a


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Such pronouncement by the 1T$ is utterly premature for, at that point, all that was presented before it by

respondents was evidence, which to their minds, was sufficient to support a finding of probable cause. The trial

court*s above'cited declaration unmistakably conveys the message that no unfair competition exists in this case P aconclusion that is not within its competence to make, for its task is merely confined to the preliminary matter of

determination of probable cause and nothing more. The evidence it re%uires to dispense this function is, as stated

before, far less stringent than that re%uired in the trial on the merits of the charge involving unfair competition.

7t was pointed out in famous )urisprudence that one of the tests to determine the particularity in the description of

ob)ects to be sei9ed under a search warrant is when the things described are limited to those which bear direct

relation to the offense for which the warrant is being issued. : reading of the search warrants issued by the trialcourt in this case reveals that the items to be sei9ed, including motorcycles, are those which are connected with the

alleged violation of Section + in relation to Section +F? of 1epublic :ct @o. 6A-, notwithstanding the use of the

generic word "5:J>." 5e, therefore, adopt the following finding of the appellate court(

5e may say this of the 5ave motorcycles. 7t is evident that 5ave is the model name of the

motorcycles produced by the 3herein respondents4 /onda and, therefore, any imitation unit that

is in the possession of the 3herein petitioners4 and carries the name 5ave is the fit ob)ect of the

warrants P whether some other name or figure is affixed to it or not. The name 5ave $R ++?

is but a CspeciesD of units under the generic name 5ave.

2n the other hand, in the :pplication for Search 5arrant filed by @;7 S7 acaran, it is clearly stated that what

respondents are complaining about was the alleged violation of the goodwill they have established with respect to

their motorcycle models "5:J> ++? S" and "5:J> +6! S" and which goodwill is entitled to protection in the

same manner as other property rights. 7t is %uite obvious then that their cause of action arose out of the intrusion into

their established goodwill involving the two motorcycle models and not patent infringement.

Case Title: Se/a#i, I#6"$'"$ate( a#(*"$ e#ita%s 9$ies, I#6. +s. I#-#-")t )$ge$, I#6.


8etitioners alleged that the 1espondent lack the legal capacity to sue because it was not doing business in the

8hilippines and that it has no cause of action because its mark is not registered or used in the 8hilippines. Sehwani,

7nc. also claimed that as the registered owner of the L7@ @ 2BT mark, it en)oys the presumption that the same was

validly ac%uired and that it has the exclusive right to use the mark. Moreover, petitioners argued that other than the

bare allegation of fraud in the registration of the mark, respondent failed to show the existence of any grounds of

cancellation thereof under Section +!+ of the 78 $ode of the 8hilippines. 7t also alleged that the action is barred by

laches.


1espondent, 7n'n'out ;urger, 7nc., alleged that it is the owner of the tradename L7@'@'2BT and trademarks L7@'

@'2BT, L7@'@'2BT ;urger N :rrow Eesign and L7@'@'2BT ;urger ogo which are used in its business since

+A up to the present. These tradename and trademarks were registered in the Bnited States as well as in other

parts of the world. 8etitioner Sehwani allegedly had obtained a trademark registration for the mark L7@ @ 2BT

3with the inside letter 2 formed like a star4 without its authority.

7ssueIs(

+. 5hether or not the 1espondent has the legal capacity to sue for the protection of its trademarks albeit it is

not doing business in the 8hilippines

6. 5hether or not a ground exists for the cancellation of the 8etitioners registration


14/15

R)li#g:

1. Oes. Section +? 1: @o. 6A- provides for the right of foreign corporations to sue in trademark or service

mark enforcement action, provided that it meets the re%uirements under Section - thereof, which are(

a. :ny convention, treaty or agreement relation to intellectual property right or the repression of

unfair competition wherein 8hilippines is also a party0 and

b. :n extension therein of reciprocal rights.

Moreoever, :rticle bis of The 8aris $onvention, which governs the protection of well'known trademarks,

is a self'executing provision and does not re%uire legislative enactment to give it effect in the member

country. The essential re%uirement therein is that the trademark must be well'known in the country where

protection is sought. 7n this case, Eirector ;eltran':belardo found that 7n'n'out ;urger and :rrow Eesign

is an internationally well?known mark as evidenced by its trademark registrations around the world and its

comprehensive advertisements therein.

2. Oes. Section +!+3b4 of 1: 6A- provides that a petition to cancel a registration of a mark may be filed with

the ;ureau of egal :ffairs by any person who believes that he is or will be damaged by the registration ofa mark at any time, if the registered mark becomes the generic name for the goods or services, or a portion

thereof, for which it is registered, or has been abandoned, or its registration was fraudulently or contrary to

the provisions of this :ct, or if the registered mark is being used by or with the permission of, the registrant

so as to misrepresent the source of goods or services on or in connection with which the mark is used. The

evidence showed that not only did the petitioners use the 7@'@'2BT ;urger trademark for the name of

their restaurant, but they also used identical or confusingly similar mark for their hamburger wrappers and

Krench'fries receptacles, thereby effectively misrepresenting the source of the goods and services.

Case Title: !attel, I#6. +s. E&&a 9$a#6is6", et al.


Mattel, 7nc. alleges that Bys L;arbie trademark of confectionary products was confusingly similar to its trademark

on dolls, doll clothes and doll accessories. Mattel argues that its products are items related to Bys products0 hence,

identical trademarks should not be used where the possibility of confusion as to source or origin of the products is

certain and that by adopting an exactly identical mark, in spelling and style, By should be presumed to have

intended to cash in or ride on the goodwill and widespread recognition en)oyed by Mattels mark.

Res'"#(e#ts% Clai&s:

mma Krancisco, the Eirector General of

782, stated that there was no proof on record that Mattel had ventured into the production of chocolates and

confectionary products under the trademark L;arbie to enable it to prevent By from using an identical L;arbie

trademark on said goods. 2n the other hand, By submits that the case has become moot and academic since the

records of the 782 will show that no E:B was filed on or before ?+ Eecember 6??+0 thus he is deemed to have

abandoned his trademark application.

Iss)e*s:

5hether or not the case has become moot and academic

R)li#g:


15/15

Oes. :ccording to Section +6.6 of 1: 6A-, the applicant shall file a declaration of actual use of the mark with

evidence to that effect with three years from filing date of the application. 2therwise, the applicant shall be refused.

Moreover, the issues in the present case call for an appraisal of factual considerations which are peculiar only to the

transactions and parties involved in the controversy. The issues raised in this case do not call for a clarification

unlike in the cases of Eavid vs. :rroyo, $onstantino vs. Sandiganbayan and others. 7n the latter cases, moot and

academic issues were still decided for these pertain to important and transcendental constitutional issues, which are

not in line with this case.

casedigests_set1_30august2013

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