Case List in Intellectual Property Law

Patent

1. Smith Kline Beckham Corp. vs. CA, GR No. 126627, Aug. 14, 2003

Case #1 (Pizarro)
Smith Kline Beckham Corp. v. CA
G.R. No 126627 | August 14, 2003 | Intellectual Property Law - Patent
 
PETITIONER(S): Smith Kline Beckham Corporation
RESPONDENT(S): CA and Tryco Pharma Corporation

MAIN DOCTRINE (Based on the syllabus):

·  It bears stressing that the mere absence of the word Albendazole in Letters
Patent No. 14561 is not determinative of Albendazole’s non-inclusion in the
claims of the patent. While Albendazole is admittedly a chemical compound that
exists by a name different from that covered in petitioner’s letters patent, the
language of Letter Patent No. 14561 fails to yield anything at all regarding
Albendazole. And no extrinsic evidence had been adduced to prove that
Albendazole inheres in petitioner’s patent in spite of its omission therefrom or
that the meaning of the claims of the patent embraces the same.

·  The doctrine of equivalents provides that an infringement also takes place when
a device appropriates a prior invention by incorporating its innovative concept
and, although with some modification and change, performs substantially the
same function in substantially the same way to achieve substantially the same
result. Yet again, a scrutiny of petitioner’s evidence fails to convince this Court of
the substantial sameness of petitioner’s patented compound and Albendazole.
While both compounds have the effect of neutralizing parasites in animals,
identity of result does not amount to infringement of patent unless Albendazole
operates in substantially the same way or by substantially the same means as
the patented compound, even though it performs the same function and achieves
the same result. In other words, the principle or mode of operation must be the
same or substantially the same.

 
FACTS:
1. Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of
the laws of the state of Pennsylvania, United States of America (U.S.) and
licensed to do business in the Philippines, filed on October 8, 1976, as assignee,
before the Philippine Patent Office an application for patent over an invention
 entitled "Methods and Compositions for Producing Biphasic Parasiticide Activity
Using Methyl 5 Propylthio-2-Benzimidazole Carbamate." 
a. Letters Patent No. 14561 for the aforesaid invention was issued to petitioner
for a term of seventeen (17) years.
b. The letters patent provides in its claims that the patented invention consisted
of a new compound named methyl 5 propylthio-2-benzimidazole carbamate
and the methods or compositions utilizing the compound as an active
ingredient in fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats, horses, and even
pet animals.
 
2. Tryco Pharma Corporation (private respondent) is a domestic corporation that
manufactures, distributes and sells veterinary products including Impregon, a
drug that has Albendazole for its active ingredient and is claimed to be effective
against gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.
 
3. Petitioner sued private respondent for infringement of patent and unfair
competition before the Caloocan City Regional Trial Court (RTC).
a. It claimed that its patent covers or includes the substance Albendazole such
that private respondent, by manufacturing, selling, using, and causing to be
sold and used the drug Impregon without its authorization, infringed Claims 2,
3, 4, 7, 8 and 9 of Letters Patent No. 14561 as well as committed unfair
competition under Article 189, paragraph 1 of the Revised Penal Code and
Section 29 of Republic Act No. 166 (The Trademark Law) for advertising and
selling as its own the drug Impregon although the same contained petitioner’s
patented Albendazole.
 
4. Argument of Petitioner - argues that under the doctrine of equivalents for
determining patent infringement, Albendazole, the active ingredient it alleges was
appropriated by private respondent for its drug Impregon, is substantially the
same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent
since both of them are meant to combat worm or parasite infestation in animals.
It cites the "unrebutted" testimony of its witness Dr. Godofredo C. Orinion (Dr.
Orinion) that the chemical formula in Letters Patent No. 14561 refers to the
compound Albendazole. Petitioner adds that the two substances substantially do
the same function in substantially the same way to achieve the same results,
thereby making them truly identical. Petitioner thus submits that the appellate
court should have gone beyond the literal wordings used in Letters Patent No.
14561, beyond merely applying the literal infringement test, for in spite of the fact
that the word Albendazole does not appear in petitioner’s letters patent, it has
ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole
carbamate.
 
5. Argument of Respondent - averred that Letters Patent No. 14561 does not
cover the substance Albendazole for nowhere in it does that word appear; that
 even if the patent were to include Albendazole, such substance is unpatentable;
that the Bureau of Food and Drugs allowed it to manufacture and market
Impregon with Albendazole as its known ingredient; that there is no proof that it
passed off in any way its veterinary products as those of petitioner; that Letters
Patent No. 14561 is null and void, the application for the issuance thereof having
been filed beyond the one year period from the filing of an application abroad for
the same invention covered thereby, in violation of Section 15 of Republic Act
No. 165 (The Patent Law); and that petitioner is not the registered patent holder.
 
 
RTC: Ruled in favor of respondent.
 
CA: AFFIRMED. Ruled in favor of respondent. CA upheld the trial court’s finding that
private respondent was not liable for any infringement of the patent of petitioner in light
of the latter’s failure to show that Albendazole is the same as the compound subject of
Letters Patent No. 14561. Noting petitioner’s admission of the issuance by the U.S. of a
patent for Albendazole in the name of Smith Kline and French Laboratories which was
petitioner’s former corporate name, the appellate court considered the U.S. patent as
implying that Albendazole is different from methyl 5 propylthio-2-benzimidazole
carbamate. It likewise found that private respondent was not guilty of deceiving the
public by misrepresenting that Impregon is its product.
 
 
ISSUE: W/N CA erred in not finding that Albendazole, the active ingredient in Tryco’s
“2Impregon” drug, is included in petitioner’s Letters Patent No. 14561, and that
consequently Tryco is answerable for Patent Infringement- NO
 
RULING (w/ DOCTRINES):
The burden of proof to substantiate a charge for patent infringement rests on the
plaintiff. In the case at bar, petitioner’s evidence consists primarily of its Letters Patent
No. 14561, and the testimony of Dr. Orinion, its general manager in the Philippines for
its Animal Health Products Division, by which it sought to show that its patent for the
compound methyl 5 propylthio-2-benzimidazole carbamate also covers the substance
Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the compound Albendazole. All that the claims
disclose are: the covered invention, that is, the compound methyl 5 propylthio-2-
benzimidazole carbamate; the compound’s being anthelmintic but nontoxic for animals
or its ability to destroy parasites without harming the host animals; and the patented
methods, compositions or preparations involving the compound to maximize its efficacy
against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and
may not claim anything beyond them. And so are the courts bound which may not add
to or detract from the claims matters not expressed or necessarily implied, nor may they
enlarge the patent beyond the scope of that which the inventor claimed and the patent
office allowed, even if the patentee may have been entitled to something more than the
words it had chosen would include.
It bears stressing that the mere absence of the word Albendazole in Letters Patent No.
14561 is not determinative of Albendazole’s non-inclusion in the claims of the patent.
While Albendazole is admittedly a chemical compound that exists by a name different
from that covered in petitioner’s letters patent, the language of Letter Patent No. 14561
fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been
adduced to prove that Albendazole inheres in petitioner’s patent in spite of its omission
therefrom or that the meaning of the claims of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish
private respondent’s infringement, it urges this Court to apply the doctrine of
equivalents.
The doctrine of equivalents provides that an infringement also takes place when a
device appropriates a prior invention by incorporating its innovative concept and,
although with some modification and change, performs substantially the same function
in substantially the same way to achieve substantially the same result. Yet again, a
scrutiny of petitioner’s evidence fails to convince this Court of the substantial sameness
of petitioner’s patented compound and Albendazole. While both compounds have the
effect of neutralizing parasites in animals, identity of result does not amount to
infringement of patent unless Albendazole operates in substantially the same way or by
substantially the same means as the patented compound, even though it performs the
same function and achieves the same result. In other words, the principle or mode of
operation must be the same or substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such
equivalency test are met.
As stated early on, petitioner’s evidence fails to explain how Albendazole is in every
essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from
the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-
benzimidazole carbamate, nothing more is asserted and accordingly substantiated
regarding the method or means by which Albendazole weeds out parasites in animals,
thus giving no information on whether that method is substantially the same as the
manner by which petitioner’s compound works. The testimony of Dr. Orinion lends no
support to petitioner’s cause, he not having been presented or qualified as an expert
witness who has the knowledge or expertise on the matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, it comes into play
when two or more inventions are claimed in a single application but are of such a nature
that a single patent may not be issued for them. The applicant thus is required "to
divide," that is, to limit the claims to whichever invention he may elect, whereas those
inventions not elected may be made the subject of separate applications which are
called "divisional applications." What this only means is that petitioner’s methyl 5
propylthio-2-benzimidazole carbamate is an invention distinct from the other inventions
claimed in the original application divided out, Albendazole being one of those other
inventions. Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not have
been the subject of a divisional application if a single patent could have been issued for
it as well as Albendazole.
DISPOSITIVE:
WHEREFORE, the assailed decision of the Court of Appeals is hereby AFFIRMED.

2. Creser Precision System Inc. vs. CA  (GR No. 118708, Feb. 2, 1998)

CRESER PRECISION SYSTEMS, INC., petitioner,

vs.
COURT OF APPEALS AND FLORO INTERNATIONAL CORP., respondents.

MARTINEZ, J.:

DOCTRINE:

Civil Action for Infringement. Only the patentee or his successors-in-interest may file an action
for infringement. The phrase "anyone possessing any right, title or interest in and to the
patented invention " upon which petitioner maintains its present suit, refers only to the
patentee's successors-in-interest, assignees or grantees since actions for infringement of patent
may be brought in the name of the person or persons interested, whether as patentee,
assignees, or as grantees, of the exclusive right. Moreover, there can be no infringement of a
patent until a patent has been issued, since whatever right one has to the invention covered by
the patent arises alone from the grant of patent.

Patent. A patent, however, gives the inventor the right to exclude all others. As a patentee, he
has the exclusive right of making, using or selling the invention.  Under American jurisprudence,
an inventor has no common law right to a monopoly of his invention. He has the right to make,
use and vend his own invention, but if he voluntarily discloses it, such as by offering it for sale,
the world is free to copy and use it with impunity.

Remedy of Declaratory Judgment or Injunctive Suit on Patent. Thus, anyone who has no patent
over an invention but claims to have a right or interest thereto cannot file an action for
declaratory judgment or injunctive suit which is not recognized in this jurisdiction. Said person,
however, is not left without any remedy. He can, under Section 28 of the aforementioned law,
file a petition for cancellation of the patent within three (3) years from the publication of said
patent with the Director of Patents and raise as ground therefore that the person to whom the
patent was issued is not the true and actual inventor.

FACTS:

On Jan. 23, 1990 Floro Int. Corp was granted by the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT), a letters patent covering aerial fuze published in the Bureau of
Patent’s Official Gazette. Sometime in November 1993, Floro Int. Corp. submitted samples of its
patented aerial fuze to Armed Forces of the Philippines (AFP) for testing. Mr. Floro, the
President of Floro Int. Corp. learned that Cresper Precision Systems, Inc.  was claiming that the
said aerial fuze was its own and was planning to bid and manufacture the same without license.
To protect its right, Floro Int. Corp sent a letter to Cresper advising it of its existing patent and
rights and thereunder, warning petitioner of possible court action. In response to Floro’s
demand, Cresper filed a complaint for injunction and damages arising from alleged
infringement before the RTC. Cresper alleged that they were the first, true and actual inventor
of aerial fuze and it was developed early December 1981 and was already supplying AFP since
1986. The RTC issued a TRO and Floro submitted its memorandum stating that Cresper has no
cause of action to file a complaint for infringement for it has no patent for the aerial fuze. The
trial court then issued an order granting a writ of preliminary injuction against Floro. They
moved for reconsideration but it was denied. Hence, Floro filed a petition for certiorari before
the CA and the CA reversed he ruling of the RTC. Hence, this petition.

ISSUE: 
 WON Cresper has a cause of action to institute the petition for injunction and damages
arising from the alleged infringement.

HELD:

No, Cresper has no cause of action to file a petition for injunction and damages arising from the
infringement.

Only the patentee or his successors-in-interest may file an action for infringement. The phrase
"anyone possessing any right, title or interest in and to the patented invention " upon which
petitioner maintains its present suit, refers only to the patentee's successors-in-interest,
assignees or grantees since actions for infringement of patent may be brought in the name of
the person or persons interested, whether as patentee, assignees, or as grantees, of the
exclusive right. Moreover, there can be no infringement of a patent until a patent has been
issued, since whatever right one has to the invention covered by the patent arises alone from
the grant of patent.

In short, a person or entity who has not been granted letters patent over an invention and has
not acquired any right or title thereto either as assignee or as licensee, has no cause of action
for infringement because the right to maintain an infringement suit depends on the existence
of the patent.

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of
action to institute the petition for injunction and damages arising from the alleged infringement
by private respondent. While petitioner claims to be the first inventor of the aerial fuze, still it
has no right of property over the same upon which it can maintain a suit unless it obtains a
patent therefor.

Under American jurisprudence, an inventor has no common law right to a monopoly of his
invention. He has the right to make, use and vend his own invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with impunity.

A patent, however, gives the inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, using or selling the invention.

Further, the remedy of declaratory judgment or injunctive suit on patent invalidity relied upon
by petitioner cannot be likened to the civil action for infringement under Section 42 of the
Patent Law. The reason for this is that the said remedy is available only to the patent holder or
his successors-in-interest.

Thus, anyone who has no patent over an invention but claims to have a right or interest thereto
cannot file an action for declaratory judgment or injunctive suit which is not recognized in this
jurisdiction. Said person, however, is not left without any remedy. He can, under Section 28 of
the aforementioned law, file a petition for cancellation of the patent within three (3) years from
the publication of said patent with the Director of Patents and raise as ground therefor that the
person to whom the patent was issued is not the true and actual inventor.

Hence, petitioner's remedy is not to file an action for injunction or infringement but to file a
petition for cancellation of private respondent's patent. Petitioner however failed to do so. As
such, it cannot now assail or impugn the validity of the private respondent's letters patent by
claiming that it is the true and actual inventor of the aerial fuze.

Thus, as correctly ruled by the respondent Court of Appeals in its assailed decision: "since the
petitioner (private respondent herein) is the patentee of the disputed invention embraced by
letters of patent UM No . 6938 issued to it on January 23, 1990 by the Bureau of Patents, it has
in its favor not only the presumption of validity of its patent, but that of a legal and factual first
and true inventor of the invention.
DISPOSITION:

WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED. No pronouncement as to

costs.

3. E.I. Dupont De Nemours and Co. et. al. vs. Dir. Emma Francisco et. al., G.R. No.
174379, Aug. 31, 2016

E.I. Dupont De Nemours and Co. et. al. vs. Dir. Emma Francisco et. al. 
| G.R. No. 174379,August 31, 2016   | Intellectual Property Law - Patent (EDEM)
 
PETITIONER(S): E.I DUPONT DE NEMOURS AND CO., (assignee of inventors
Carino, Duncia and Wong)
RESPONDENT(S): DIRECTOR EMMA C. FRANCISCO (in her capacity as DIRECTOR
GENERAL OF THE INTELLECTUAL PROPERTY OFFICE), DIRECTOR EPIFANIO M.
VELASCO (in his capacity as the DIRECTOR OF THE BUREAU OF PATENTS, and
THERAPHARMA, INC.,

MAIN DOCTRINE (Based on the syllabus):

 A patent is granted to provide rights and protection to the inventor after an invention is
disclosed to the public. It also seeks to restrain and prevent unauthorized persons from
unjustly profiting from a protected invention. However, ideas not covered by a patent are
free for the public to use and exploit. Thus, there are procedural rules on the application
and grant of patents established to protect against any infringement. To balance the
public interests involved, failure to comply with strict procedural rules will result in the
failure to obtain a patent.

FACTS:
E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation
organized under the laws of the State of Delaware. It is the assignee of inventors David John
Carini, John Jonas Vytautas Duncia, and Pancras Chor Bun Wong, all citizens of the United
States of America.

On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the
Bureau of Patents, Trademarks, and Technology Transfer. The application was for Angiotensin
II Receptor Blocking Imidazole (losartan), an invention related to the treatment of hypertension
and congestive heart failure. The product was produced and marketed by Merck, Sharpe, and
Dohme Corporation (Merck), E.I. Dupont Nemours' licensee.

The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili). Patent Examiner
Bulihan of the Intellectual Property Office sent an office action which stated: The appointed
attorney on record was the late Atty. Nicanor D. Mapili.
IPO: In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty.
Mapili, did not inform it about the abandonment of the application, and it was not aware that
Atty. Mapili had already died.

The Director of Patents denied the Petition for Revival for having been filed out of time.E.I.
Dupont Nemours appealed the denial to the Director-General of the Intellectual Property Office.
Director-General Emma C. Francisco denied the appeal and affirmed the Resolution of the
Director of Patents.

CA: Petitioner filed before the Court of Appeals a Petition for Review. The Court of Appeals
granted the Petition for Review.  In allowing the Petition for Revival, the Court of Appeals
stated:

“After an exhaustive examination of the records of this case, this Court believes that there is
sufficient justification to relax the application of the above-cited doctrine in this case, and to
afford petitioner some relief from the gross negligence committed by its former lawyer, Atty.
Nicanor D. Mapili”

The Office of the Solicitor General, on behalf of the Intellectual Property Office, moved for
reconsideration of this Decision

In the interim, Therapharma, Inc. moved for leave to intervene and admit the Attached Motion
for Reconsideration, as it affects its "vested" rights to sell its own product.”Therapharma, Inc.
alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs its own application
for a losartan product "Lifezar," a medication for hypertension, which the Bureau granted. It
argued that it made a search of existing patent applications for similar products before its
application, and that no existing patent registration was found since E.I. Dupont Nemours'
application for its losartan product was considered abandoned by the Bureau of Patents,
Trademarks, and Technology Transfer. It alleged that sometime in 2003 to 2004, there was an
exchange of correspondence between Therapharma, Inc. and Merck. In this exchange, Merck
informed Therapharma, Inc. that it was pursuing a patent on the losartan products in the
Philippines and that it would pursue any legal action necessary to protect its product.

Court of Appeals issued the Resolution granting the Motion· for Leave to Intervene. According
to the Court of Appeals, Therapharma, Inc. had an interest in the revival of E.I. Dupont Nemours'
patent application since it was the local competitor for the losartan product.  It stated that even if
the Petition for Review was premised on the revival of the patent application, Therapharma, Inc.'
s intervention was not premature since E.I. Dupont Nemours, through Merck, already threatened
Therapharma, Inc. with legal action if it continued to market its losartan product.

E.I. Dupont Nemours moved for reconsideration, the Court of Appeals resolved both Motions for
Reconsideration and rendered the Amended Decision reversing its Decision.
The Court of Appeals ruled that the public interest would be prejudiced by the revival of E.I.
Dupont Nemours' application. It found that losartan was used to treat hypertension, "a chronic
ailment affecting an estimated 12.6 million Filipinos,"and noted that the presence of competition
lowered the price for losartan products. It also found that the revival of the application prejudiced
Therapharma, Inc.' s interest, in that it had already invested more than P20,000,000.00 to develop
its own losartan product and that it acted in good faith when it marketed its product.

ISSUE: Whether or not the patent application of losartan by Dupont should be revived.

RULING:  the patent application for its revival was filed out of time.

Although it was in petitioner’s discretion as a foreign client to put its complete trust and
confidence on its local resident agent, there was a correlative duty on its part to be diligent in
keeping itself updated on the progress of its patent applications. Its failure to be informed of the
abandonment of its patent application was caused by its own lack of prudence. Petitioner issued a
Power of Attorney and Appointment of Resident Agent in favor of Bito, Lozada, Ortega &
Castillo on March 25, 1996 but it only requested a status update of Philippine Patent Application
No. 35526 on December 14, 2000, or four (4) years after it learned of Atty. Mapili’s death. The
Power of Attorney shows that it was only to inform the Bureau that all notices relating to its
pending patent applications should be sent to it and there was no request for specific status
update. The four (4)-month period in Section 111 of the 1962 Revised Rules of Practice is not
counted from actual notice of abandonment but from mailing of the notice. Since it appears from
the Intellectual Property Office’s records that a notice of abandonment was mailed to petitioner’s
resident agent on July 19, 1988, the time for taking action is counted from this period.

United States and the Philippines are signatories to the Paris Convention for the Protection of
Industrial Property, an applicant who has filed a patent application in the United States may have
a right of priority over the same invention in a patent application in the Philippines. However,
this right of priority does not immediately entitle a patent applicant the grant of a patent. A right
of priority is not equivalent to a patent. Otherwise, a patent holder of any member-state of the
Paris Convention need not apply for patents in other countries where it wishes to exercise its
patent.

ISSUE: Whether the invention has already become part of public domain

RULING: The grant of a patent is to provide protection to any inventor from any patent
infringement. Once an invention is disclosed to the public, only the patent holder has the
exclusive right to manufacture, utilize, and market the invention.

Public interest will be prejudiced if, despite the petitioner's inexcusable negligence, its Petition
for Revival is granted. Even without a pending patent application and the absence of any
exception to extend the period for revival, petitioner was already threatening to pursue legal
action against respondent Therapharma, Inc. if it continued to develop and market its losartan
product, Lifezar.  Once a petitioner is granted a patent for its losartan products, Cozaar and
Hyzaar, the loss of competition in the market for losartan products may result in higher prices.
For the protection of public interest, Philippine Patent Application No. 35526 should be
considered a forfeited patent application.

WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and the
Amended Decision dated August 30, 2006 of the Court of Appeals are AFFIRMED.

SO ORDERED.

MARVIC M.V.F. LEONEN

Associate Justice

Trademark

4. Fredco Mfg. Corp. vs. Pres and Fellows of Harvard College, GR No. 185917, June 1,
2011

Case 4 (Cuisia)

Fredco Manufacturing Corp. vs. Harvard University

G.R. No. 185917| June 1, 2011| Trademark

Ponente: Carpio, J

 
 PETITIONER(S): FREDCO MANUFACTURING CORPORATION

RESPONDENT(S): PRESIDENT AND FELLOWS OF HARVARD COLLEGE

(HARVARD UNIVERSITY)

MAIN DOCTRINE (Based on the syllabus):

 Although Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been actually in use in
commerce or services for not less than two (2) months in the Philippines before the
application for registration is filed, where the trademark sought to be registered has
already been registered in a foreign country that is a member of the Paris Convention, the
requirement of proof of use in the commerce in the Philippines for the said period IS
NOT NECESSARY. An applicant for registration based on a home certificate of
registration need not even have used the mark or trade name in this country.

FACTS:

Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of
the Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561
issued to President and Fellows of Harvard College (Harvard University) for the mark “Harvard
Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28. Fredco claimed that Harvard
University had no right to register the mark in class 25, since its Philippine registration was
based on a foreign registration. Thus, Harvard University could not have been considered as a
prior adopter and user of the mark in the Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-
interest New York Garments as early as 1982, and a certificate of registration was issued in 1988
for goods under class 25. Although the registration was cancelled for the non-filing of an
affidavit of use, the fact remained that the registration preceded Harvard University’s use of the
subject mark in the Philippines. Harvard University, on the other hand claimed that the name and
mark “Harvard” was adopted in 1639 as the name of Harvard College of Cambridge,
Massachusetts, USA. The marks “Harvard” and “Harvard Veritas Shield Symbol,” had been
used in commerce since 1872, and was registered in more than 50 countries. Fredco insisted that
the date of actual use in the Philippines should prevail on the issue of who had a better right to
the mark. 

 
Bureau of Legal Affairs: ruled in favor of Fredco and ordered the cancellation of Registration
No. 56561. It found Fredco to be the prior user and adopter of the mark “Harvard” in the
Philippines.

Office of the Director General of the IPO: reversed the BLA ruling on the ground that more
than the use of the trademark in the Philippines, the applicant must be the owner of the mark
sought to be registered. Fredco, not being the owner of the mark, had no right to register it.

CA: affirmed the decision of the Office of the Director General.

ISSUE: whether the Court of Appeals committed a reversible error in affirming the decision of
the Office of the Director General of the IPO. NO

RULING (w/ DOCTRINES):

The petition has no merit. Under Section 2 of Republic Act No. 166, as amended (R.A.
No. 166), before a trademark can be registered, it must have been actually used in commerce for
not less than two months in the Philippines prior to the filing of an application for its registration.
While Harvard University had actual prior use of its marks abroad for a long time, it did not have
actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its
application for registration of the mark "Harvard" with the then Philippine Patents Office.
However, Harvard University's registration of the name "Harvard" is based on home registration
which is allowed under Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Comment:

  Although Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been actually in use in
commerce or services for not less than two (2) months in the Philippines before the application
for registration is filed, where the trademark sought to be registered has already been registered
in a foreign country that is a member of the Paris Convention, the requirement of proof of use in
the commerce in the Philippines for the said period is not necessary. An applicant for registration
based on home certificate of registration need not even have used the mark or trade name in this
country.” “In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293),
"[m]arks registered under Republic Act No. 166 shall remain in force but shall be deemed to
have been granted under this Act x x x," which does not require actual prior use of the mark in
the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under
R.A. No. 8293, any alleged defect arising from the absence of actual prior use in the Philippines
has been cured by Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the
Philippines of its trade name “Harvard” even without registration of such trade name in the
Philippines. It explained: “There is no question then, and this Court so declares, that "Harvard" is
a well-known name and mark not only in the United States but also internationally, including the
Philippines. The mark "Harvard" is rated as one of the most famous marks in the world. It has
been registered in at least 50 countries. It has been used and promoted extensively in numerous
publications worldwide. It has established a considerable goodwill worldwide since the founding
of Harvard University more than 350 years ago. It is easily recognizable as the trade name and
mark of Harvard University of Cambridge, Massachusetts, U.S.A., internationally known as one
of the leading educational institutions in the world. As such, even before Harvard University
applied for registration of the mark "Harvard" in the Philippines, the mark was already protected
under Article 6bis and Article 8 of the Paris Convention.

DISPOSITIVE:

WHEREFORE, we DENY the petition. We AFFIRM the 24 October 2008 Decision and 8
January 2009 Resolution of the Court of Appeals in CA-G.R. SP No. 103394.

SO ORDERED.

5. Birkenstock Orthopaedie GMBH and Co. KG (Formerly Birkenstock Orthopaedie

GMBH) vs. Philippine Shoe Expo Marketing Corp., G.R. No. 194307, Nov. 20, 2013

Case 5 (Demmel)
Birkenstock v Philippine Shoe Expo
G.R. No 194307 | Nov 20, 2013 | Trademark
Ponente: Perlas-Bernabe, J
 
 PETITIONER(S): BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly
BIRKENSTOCK ORTHOPAEDIE GMBH)
RESPONDENT(S): PHILIPPINE SHOE EXPO MARKETING CORPORATION

MAIN DOCTRINE (Based on the syllabus):

 It is not the application or registration of a trademark that vests ownership
thereof, but it is the ownership of a trademark that confers the right to register the
same.
 A trademark is an industrial property over which its owner is entitled to property rights
which cannot be appropriated by unscrupulous entities that, in one way or another,
happen to register such trademark ahead of its true and lawful owner. The presumption
of ownership accorded to a registrant must then necessarily yield to superior evidence of
actual and real ownership of a trademark.

 
FACTS:
1. Petitioner applied for various trademark registrations before the Philippine IPO, namely:
a) “BIRKENSTOCK”; b) “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM”; c) “BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM”.
2. However, the registration proceedings were suspended in view of an existing registration
of mark “BIRKENSTOCK AND DEVICE” in the name of Shoe Town International and
Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo
Marketing Corporation.
3. Thus, petitioner filed a petition for cancellation of the registration on the ground that it is
the lawful and rightful owner of the Birkenstock marks.
4. Respondent filed an opposition.
5. The BLA rejected the petitioner’s application for registration. It ruled that the competing
marks of the parties are confusingly similar since they contained the work
“BIRKENSTOCK” and are used on the same and related goods. It found respondent as
the prior user and adopter of “BIRKENSTOCK” in the Philippines.
6. IPO Director General reversed BLA’s ruling, and allowed the registration of petitioner’s
application.
7. CA reversed, and reinstated BLA’s ruling.
8. Argument of Petitioner: It has been using the name Birkenstock prior to the
respondent’s registration in the country.
9. Argument of Respondent:
 a) it, together with its predecessor-in-interest, has been using Birkenstock marks in the
Philippines for more than 16 years through the mark “BIRKENSTOCK AND DEVICE”;
b) the marks covered by the subject applications are identical to the one covered by the
registration and thus, petitioner has no right to the registration of such marks;
(c) on November 15, 1991, respondent’s predecessor-in-interest likewise obtained a
Certificate of Copyright Registration No. 0-11193 for the word "BIRKENSTOCK"
d) that while respondent failed to file the 10th Year DAU, it continued the use of
“BIRKENSTOCK AND DEVICE” in lawful commerce, among others.
 
RTC: BLA rejected the petitioner’s application. IPO Director General reversed BLA’s ruling, and
allowed the registration of petitioner’s application.
 
CA: REVERSED. Ruled in favor of petitioner.
 
ISSUE: Whether the subject marks should be allowed registration in the name of petitioner. YES
 
 
RULING (w/ DOCTRINES):
 
Respondent is deemed to have abandoned the mark when it failed to file the 10th Year DAU for
Registration on or before the lawful period. As a consequence, it was deemed to have
abandoned or withdrawn any right or interest over the mark “BIRKENSTOCK”.
Petitioner has duly established its true and lawful ownership of the mark “BIRKENSTOCK”.
Under Sec. 2 of RA 166, in order to register a trademark, one must be the owner thereof and
must have actually used the mark in commerce in the Philippines for 2 months prior to the
application for registration.
The registration of a trademark is not a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its registration. Registration merely creates
a prima facie presumption of validity of the registration, of the registrant’s ownership of the
trademark, and of the exclusive right to the use thereof. 
 
Clearly, it is not the application or registration of a trademark that vests ownership
thereof, but it is the ownership of a trademark that confers the right to register the same.
A trademark is an industrial property over which its owner is entitled to property rights which
cannot be appropriated by unscrupulous entities that, in one way or another, happen to register
such trademark ahead of its true and lawful owner. The presumption of ownership accorded to a
registrant must then necessarily yield to superior evidence of actual and real ownership of a
trademark.
The Court’s pronouncement in Berris Agricultural Co., Inc. v. Abyadang is instructive on this
42

point:
The ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. x x x A
certificate of registration of a mark, once issued, constitutes prima facie evidence of the validity
of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive
right to use the same in connection with the goods or services and those that are related thereto
specified in the certificate. x x x In other words, the prima facie presumption brought about by
the registration of a mark may be challenged and overcome in an appropriate action, x x x by
evidence of prior use by another person, i.e. , it will controvert a claim of legal appropriation or
of ownership based on registration by a subsequent user. This is because a trademark is a
creation of use and belongs to one who first used it in trade or commerce. (Emphasis and
underscoring supplied)
In the instant case, petitioner was able to establish that it is the owner of the mark
"BIRKENSTOCK." It submitted evidence relating to the origin and history of "BIRKENSTOCK"
and its use in commerce long before respondent was able to register the same here in the
Philippines. It has sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774
by its inventor, Johann Birkenstock, a shoemaker, on his line of quality footwear and thereafter,
numerous generations of his kin continuously engaged in the manufacture and sale of shoes
and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known as the
petitioner. Petitioner also submitted various certificates of registration of the mark
"BIRKENSTOCK" in various countries and that it has used such mark in different countries
worldwide, including the Philippines.
 
 
DISPOSITIVE:
WHEREFORE, Petition is GRANTED. CA is REVERSED.

6. GSIS Family Bank - Thrift Bank vs. BPI Family Bank, G.R. No. 175278, Sept. 23, 2015

Case #6 (Cruz)
GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.], vs. BPI FAMILY BANK 
G.R. No 175278 | September 23, 2015 | TRADEMARK
Ponente: JARDELEZA, J

PETITIONER(S): GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.],

RESPONDENT(S):  BPI FAMILY BANK

MAIN DOCTRINE (Based on the syllabus):

1. To fall within the prohibition of the law on the right to the exclusive use of a
 corporate name, two requisites must be proven, namely:
(1)    that the complainant corporation acquired a prior right over the use of
such corporate name; and
(2)   the proposed name is either:
a. identical; or
b. deceptive or confusingly similar to that of any existing corporation or to
any other name already protected by law; or
c. patently deceptive, confusing or contrary to existing law.

2. Generic marks are commonly used as the name or description of a kind of

goods, such as "Lite" for beer or "Chocolate Fudge" for chocolate soda drink.
Descriptive marks, on the other hand, convey the characteristics, function,
qualities or ingredients of a product to one who has never seen it or does not
know it exists, such as "Arthriticare" for arthritis medication.
Arbitrary marks are "words or phrases used as a mark that appear to be random in
the context of its use. They are generally considered to be easily remembered
because of their arbitrariness. They are original and unexpected in relation to the
products they endorse, thus, becoming themselves distinctive." Suggestive marks,
on the other hand, "are marks which merely suggest some quality or ingredient of
goods. The strength of the suggestive marks lies on how the public perceives the
word in relation to the product or service."

FACTS:
1. Petitioner GSIS Family Bank-Thrift Bank was originally organized as Royal Savings
Bank which started operations in 1971. In 1983 and 1984, it encountered liquidity
problems. Thus, it was placed under receivership and temporarily closed by the Central
Bank. Two months after its closure, petitioner reopened, and was renamed Comsavings
Bank, Inc. under the management of the Commercial Bank of Manila.
2. In 1987, GSIS acquired petitioner from Commercial Bank of Manila. Petitioner’s
management and control was thus transferred to GSIS. To improve its marketability to
the public, petitioner sought SEC’s approval to change its corporate name to “GSIS
Family Bank, a Thrift Bank”. Petitioner also applied with DTI and BSP for authority to
use “GSIS Family Bank, a Thrift Bank” as its business name. DTI and BSP approved
the application. Thus, petitioner operates under the corporate name “GSIS Family Bank
– a Thrift Bank”.
3. Respondent BPI Family Bank was a product of the merger between the family Bank
and Trust Company (FBTC) and the Bank of Philippine Islands (BPI). On June 27,
1969, the Gotianum family registered with the SEC the corporate name “Family First
Savings Bank”, which was amended to “Family Savings Bank”, and then later to
“Family Bank and Trust Company”. Since its incorporation, the bank has been
commonly as “Family Bank”.
 4. In 1985, Family Bank merged with BPI, and the latter acquired all the rights, privileges,
properties, and interests of Family Bank, including the right to use names, such as
“Family First Savings Bank”, “Family Bank”, and “Family Bank and Trust Company”.
BPI Family Savings Bank was registered with the SEC as a wholly-owned subsidiary of
BPI. BPI Family Savings Bank then registered with the Bureau of Domestic Trade the
trade or business name "BPI Family Bank," and acquired a reputation and goodwill
under the name.

5. Respondent discovered that petitioner is using or attempting to use the name “Family
Bank”. Thus, respondent petitioned the SEC Company Registration and Monitoring
Department (SEC CRMD) to disallow or prevent the registration of the name “GSIS
Family Bank” or any other corporate name with the words “Family Bank” in it.
Respondent claimed exclusive ownership to the name "Family Bank," having acquired
the name since its purchase and merger with Family Bank and Trust Company way
back 1985.

SEC: SEC CRMD ruled in favor of the respondent. It applied the rule of “priority in registration”
and concluding that BPI has the preferential right to the use of the name “Family Bank”. It
further declared that upon the merger of FBTC with the BPI in 1985, the latter acquired the right
to the use of the name of the absorbed corporation. Thus, BPI Family Bank has a prior right to
the use of the name Family Bank in the banking industry, arising from its long and extensive
nationwide use, coupled with its registration with the Intellectual Property Office (IPO) of the
name "Family Bank" as its trade name.

CA: Such decision was affirmed by SEC En Banc and Court of Appeals

ISSUE: Whether or not the respondent is entitled to the exclusive use of the corporate name
because of its prior adoption of the name “Family Bank” since 1969 - YES

RULING (w/ DOCTRINES):

To fall within the prohibition of the law on the right to the exclusive use of a corporate name,
two requisites must be proven, namely:

(1)    that the complainant corporation acquired a prior right over the use of such
corporate name; and
(2)   the proposed name is either:
(a)   identical; or
(b)   deceptive or confusingly similar to that of any existing corporation or
to any other name already protected by law; or
 (c)   patently deceptive, confusing or contrary to existing law.
In this case, the abovementioned requisites are present. Applying the first requisite,
respondent was incorporated in 1969 as Family Savings Bank and in 1985 as BPI Family
Bank. Petitioner, on the other hand, was incorporated as GSIS Family – Thrift Bank only in
2002, or at least seventeen (17) years after respondent started using its name. Thus,
respondent has the prior right over the use of the corporate name.
The second requisite also obtains two points: the proposed name is (a) identical or (b)
deceptive or confusingly similar to that of any existing corporation or to any other name
already protected by law.
On the first point (a), the words "Family Bank" present in both petitioner and respondent's
corporate name satisfy the requirement that there be identical names in the existing corporate
name and the proposed one. Respondent cannot justify its claim under Section 3 of the
Revised Guidelines in the Approval of Corporate and Partnership Names which states that if
there be identical, misleading or confusingly similar name to one already registered by
another corporation or partnership with the SEC, the proposed name must contain at least
one distinctive word different from the name of the company already registered.
To show contrast with respondent's corporate name, petitioner used the words "GSIS" and
"thrift." But these are not sufficiently distinct words that differentiate petitioner's corporate
name from respondent's. While "GSIS" is merely an acronym of the proper name by which
petitioner is identified, the word "thrift" is simply a classification of the type of bank that
petitioner is. Even if the classification of the bank as "thrift" is appended to petitioner's
proposed corporate name, it will not make the said corporate name distinct from respondent's
because the latter is likewise engaged in the banking business.
On the second point (b), there is a deceptive and confusing similarity between petitioner's
proposed name and respondent's corporate name, as found by the SEC. In determining the
existence of confusing similarity in corporate names, the test is whether the similarity is such
as to mislead a person using ordinary care and discrimination. And even without such proof
of actual confusion between the two corporate names, it suffices that confusion is probable or
likely to occur.
Petitioner's corporate name is "GSIS Family Bank—A Thrift Bank" and respondent's
corporate name is "BPI Family Bank." The only words that distinguish the two are "BPI,"

"GSIS," and "Thrift." The first two words are merely the acronyms of the proper names by
which the two corporations identify themselves; and the third word simply describes the
classification of the bank. The overriding consideration in determining whether a person,
using ordinary care and discrimination, might be misled is the circumstance that both
petitioner and respondent are engaged in the same business of banking. "The likelihood of
confusion is accentuated in cases where the goods or business of one corporation are the
same or substantially the same to that of another corporation."
Petitioner cannot argue that the word "family" is a generic or descriptive name, which cannot
be appropriated exclusively by respondent. "Family," as used in respondent's corporate
name, is not generic. Generic marks are commonly used as the name or description of a kind
of goods, such as "Lite" for beer or "Chocolate Fudge" for chocolate soda drink. Descriptive
marks, on the other hand, convey the characteristics, function, qualities or ingredients of a
product to one who has never seen it or does not know it exists, such as "Arthriticare" for
arthritis medication.
 In this case, the word "family" cannot be separated from the word "bank." In asserting their
claims before the SEC up to the Court of Appeals, both petitioner and respondent refer to the
phrase "Family Bank" in their submissions. This coined phrase, neither being generic nor
descriptive, is merely suggestive and may properly be regarded as arbitrary. Arbitrary marks
are "words or phrases used as a mark that appear to be random in the context of its use.
They are generally considered to be easily remembered because of their arbitrariness. They
are original and unexpected in relation to the products they endorse, thus, becoming
themselves distinctive." Suggestive marks, on the other hand, "are marks which merely
suggest some quality or ingredient of goods. The strength of the suggestive marks lies on
how the public perceives the word in relation to the product or service."
The word "family" is defined as "a group consisting of parents and children living together in a
household" or "a group of people related to one another by blood or marriage." Bank, on the
other hand, is defined as "a financial establishment that invests money deposited by
customers, pays it out when requested, makes loans at interest, and exchanges currency."
By definition, there can be no expected relation between the word "family" and the banking
business of respondent. Rather, the words suggest that respondent’s bank is where family
savings should be deposited. More, the phrase "family bank" cannot be used to define an
object.

DISPOSITIVE:
WHEREFORE, the petition is DENIED. The decision of the Court of Appeals dated March 29, 2006
is hereby AFFIRMED.

7. UFC Phils., Inc., et. al. vs. Fiesta Barrio Mfg. Corp., G.R. No. 198889, Jan. 20, 2016
Case #7 (MAGLAQUI)
UFC Phils., Inc., et. al. vs. Fiesta Barrio Mfg. Corp.
G.R. No. 198889 | January 20, 2016 | TRADEMARK
Ponente: Justice Leonardo-De Castro
 
PETITIONER(S): UFC Philippines Inc.
RESPONDENT(S): Fiesta Barrio Manufacturing Corporation

MAIN DOCTRINE (Based on the syllabus):

 The dominancy test focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of
the purchasing public.
 
FACTS:
1.     Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under
Philippine laws. It is the emergent entity in a merger with UFC Philippines, Inc. that was
completed on February 11, 2009. Respondent Barrio Fiesta Manufacturing Corporation
(respondent) is likewise a corporation organized and existing under Philippine laws.
 
2.     Respondent filed an application for the trademark “PAPA BOY & DEVICE” for goods
under Class 30, specifically for “lechon sauce.” Petitioner filed with the IPO-BLA a
Verified Notice of Opposition to the above-mentioned application alleging that the mark
“PAPA” is for use on banana catsup and other similar goods was first used [in] 1954 by
Neri Papa, and thus, was taken from his surname. After using the mark “PAPA” for about
twenty-seven (27) years, Neri Papa subsequently assigned the mark “PAPA” to Hernan
D. Reyes who, on September 17, 1981, filed an application to register said mark “PAPA”
for use on banana catsup, chili sauce, achara, banana chips, and instant ube powder.
 
3.     On November 7, 2006, the registration was assigned to Nutri-Asia. The company has not
abandoned the use of the mark “PAPA” and the variations thereof as it has continued
their use up to the present. Petitioner further allege that the mark “PAPA BOY & DEVICE”
is identical to the mark “PAPA” owned by Opposer and duly registered in its favor,
particularly the dominant feature thereof. With the dominant feature of respondent-
applicant’s mark “PAPA BOY & DEVICE”, which is Petitioner’s “PAPA” and the variations
thereof, confusion and deception is likely to result. The consuming public, particularly the
unwary customers, will be deceived, confused, and mistaken into believing that
respondent-applicants goods come from Nutri-Asia, which is particularly true since
Southeast Asia Food Inc., sister company of Nutri-Asia, have been major manufacturers
and distributors of lechon sauce since 1965 under the registered trademark “Mang
Tomas”.
 
IPO-BLA: Rendered a Decision rejecting respondent’s application for “PAPA BOY & DEVICE.”
Respondent filed an appeal before the IPO Director General.
IPO Director General: Denied the appeal.
CA: Reversed the decision of the IPO-BLA and ruled to grant the application.  
 
ISSUE: W/N by using the “dominant feature” of Nutri-Asia’s “PAPA” mark for “PAPA BOY &
DEVICE” would constitute trademark infringement. - YES
 
RULING (w/ DOCTRINES): In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., we defined a
trademark as “any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others.” We held that a trademark is
“an intellectual property deserving protection by law.”
 
In this case, the findings of fact of the highly technical agency, the Intellectual Property Office,
which has the expertise in this field, should have been given great weight by the Court of
Appeals.
 
Again, this Court discussed the dominancy test and confusion of business in Dermaline, Inc. v.
Myra Pharmaceuticals, Inc., and we quote:
 
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. It is applied when the trademark sought to
be registered contains the main, essential and dominant features of the earlier registered
trademark, and confusion or deception is likely to result. Duplication or imitation is not even
required; neither is it necessary that the label of the applied mark for registration should suggest
an effort to imitate. The important issue is whether the use of the marks involved would likely
cause confusion or mistake in the mind of or deceive the ordinary purchaser, or one who is
accustomed to buy, and therefore to some extent familiar with, the goods in question. Given
greater consideration are the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets, and market segments. The
test of dominancy is now explicitly incorporated into law in Section 155.1 of R.A. No. 8293 which
provides —
 
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark or the same container or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or services including other preparatory
steps necessary to carry out the sale of any goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive x x x.
 
A scrutiny of petitioner’s and respondent’s respective marks would show that the IPO-BLA and
the IPO Director General correctly found the word “PAPA” as the dominant feature of
petitioner’s mark “PAPA KETSARAP.” Contrary to respondent’s contention, “KETSARAP”
cannot be the dominant feature of the mark as it is merely descriptive of the product.
Furthermore, it is the “PAPA” mark that has been in commercial use for decades and has
established awareness and goodwill among consumers.
 
We likewise agree with the IPO-BLA that the word “PAPA” is also the dominant feature of
respondent’s “PAPA BOY & DEVICE” mark subject of the application, such that “the word
‘PAPA’ is written on top of and before the other words such that it is the first word/figure that
catches the eyes.”49 Furthermore, as the IPO Director General put it, the part of respondent’s
mark which appears prominently to the eyes and ears is the phrase “PAPA BOY” and that is
what a purchaser of respondent’s product would immediately recall, not the smiling hog.
 
Petition was granted.
DISPOSITIVE:
WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23, 2011 Decision
and the October 4, 2011 Resolution of the Court of Appeals in CA-G.R. SP No. 107570, and
REINSTATE the March 26, 2008 Decision of the Bureau of Legal Affairs of the Intellectual
Property Office (IPO-BLA) and the January 29, 2009 Decision of the Director General of the
IPO.
 8. Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, September 8, 2020
Case #8 (Almiranez, Maia Marie D )
ZUNECA PHARMACEUTICAL., AKRAM ARAIN AND/OR VENUS ARAIN, M.D., AND STYLE
OF ZUNECA PHARMACEUTICAL vs. NATRAPHARM, INC.,
G.R. No 211850 | Sept. 8, 2020 | TRADEMARK
Ponente: CAGUIOA, J.

PETITIONER(S): ZUNECA PHARMACEUTICAL

RESPONDENT(S): NATRAPHARM

MAIN DOCTRINE (Based on the syllabus): Under the Intellectual Property Code of the
Philippines,
 Sec. 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owner’s consent from using in
the course of trade identical or similar signs or containers for goods or services which
are identical or similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. In case of the use, of an identical
 sign for identical goods or services, a likelihood of confusion shall be presumed.
 Sec. 155. Remedies; Infringement. - Any person who shall, without the consent of the
owner of the registered mark: 155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the same container or a dominant
feature thereof in connection with the sale, offering for sale, distribution, advertising of
any goods or services including other preparatory steps necessary to carry out the
sale of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive; XX
 Sec. 159.1 Notwithstanding the provisions of Section 155 hereof, a registered mark
shall have no effect against any person who, in good faith, before the filing date or the
priority date, was using the mark for the purposes of his business or enterprise:
Provided, That his right may only be transferred or assigned together with his
enterprise or business or with that part of his enterprise or business in which the mark
is used.

FACTS:
1. Petitioner Zuneca Pharmaceutical has been engaged in the importation, marketing and
sale of various kinds of medicines and drugs in the Philippines since 1991. It imports
generic drugs from Pakistan and market the same in the Philippines using different
brand names. Among the products that it has been selling is a drug called
carbamazepine under the brand name “ZYNAPS”, which is an anticonvulsant used to
control all types of seizure disorders of varied causes like epilepsy. Petitioner Dr. Arain
was the proprietor of Zuneca Pharmaceutical before Zuneca, Inc. was incorporated. 
2. On the other hand, respondent Natrapharm is a domestic corporation engaged in the
business of manufacturing, marketing, and distribution of pharmaceutical products for
human relief. One of the products being manufactured and sold by Natrapharm is
citicoline under the trademark “ZYNAPSE”, which is indicated for treatment of
cerebrovascular disease or stroke. The trademark “ZYNAPSE” was registered with the
Intellectual Property Office of the Philippines on September 24, 2007 and is covered by
Certificate of Trademark Registration NO. 4-2007-005596.
3. Respondent filed with the RTC a complaint against the petitioner for Injunction,
Trademark Infringement, Damages and Destruction with prayer for TRO and/or
Preliminary Injunction alleging that petitioner’s “ZYNAPS” is confusingly similar to its
registered trademarks “ZYNAPSE” and the resulting likelihood of confusion is dangerous
because the marks cover medical drugs intended for different types of illness. It sought
to enjoin the petitioner from using “ZYNAPS” or other variations thereof. In addition it
also demands payment for damages, attorneys fees, expenses of litigation and costs of
suit and further prayed that all infringing goods, labels signs, etc., of the petitioner be
impounded and destroyed without compensation.
4. In its Answer, Petitioner states that it has been selling carbamazepine under the mark
“ZYNAPS” since 2004 after securing a Certificate of Product Registration on 2003. From
BFAD. It also alleged that it was impossible for the respondent not to have known the
existence of the said product before its registration of “ZYNAPSE” because the
respondent had prompted ts products in the same publications where the petitioner had
advertised “ZYNAPS” meaning they advertised their products in an identical convention.
That being said, respondent fraudulently appropriated the “ZYNAPSE” mark by
registering the same with the IPO. As prior user, Petitioner argued that it is the owner of
“ZYNAPS” and the continued use by the respondent of “ZYNAPSE” causes it grave and
irreparable damage.
 Subsequently, after a summary hearing, the prayer for TRO was denied. The preliminary
injunction and counter preliminary injunction prayed for by the parties were likewise
rejected.

RTC: Court ruled in favor of respondent and against the petitioner. Petitioner was ordered to
pay the respondent and further enjoined from using “ZYNAPS or any other variations which are
confusingly similar to the respondents “ZYNAPSE”. The counterclaim filed by the petitioner was
likewise DISMISSED for lack of merit.

The RTC ruled that the first filer in good faith defeats a first user in good faith who did not file
any application for registration. Hence, Respondent, as the first registrant, had trademark rights
over "ZYNAPSE" and it may prevent others, including Zuneca, from registering an identical or
confusingly similar mark. Moreover, the RTC ruled that there was insufficient evidence that
respondent had registered the mark "ZYNAPSE" in bad faith. The fact that "ZYNAPS" and
Natrapharm's other brands were listed in the Philippine Pharmaceutical Directory (PPD) was not
sufficient to show bad faith since Zuneca's own witness admitted to not having complete
knowledge of the drugs listed in the PPD.  

CA: Petitioner appealed before the CA but it was denied for lack of merit, affirming the decision
of RTC. This Court likewise denied Petitioner’s appeal for lack of merit, the dispositive portion of
which states that it is registration, not prior use, is the mode of acquiring ownership of a
trademark. The mark must be registered in order to acquire ownership and the failure to do so
renders the non-registering user susceptible to a charge of infringement Moreover, those who
intend to register their mark need not look at the other marks used by other persons but must
confine only their search to the marks found in the database of the IPO. If there are no similar or
identical marks, the mark should be registered as a matter of course. Hence, as the registered
owner of the trademark "ZYNAPSE", Natrapharm has every right to prevent all other parties
from using identical or similar marks in their business, as provided in the IP Code. Further, only
the registered owner of the trademark may file a civil action against the infringer and seek
injunction and damages.

CA affirmed the findings of the RTC that Respondent had no knowledge of the existence of
"ZYNAPS" prior to the registration of "ZYNAPSE". The CA also found that the respondent was
able to register "ZYNAPSE" after it was cleared using the databases of the IPO and the BFAD.
It is incumbent upon the petitioner to show bad faith on the part of the respondent. In a
Resolution dated March 19, 2014, the CA denied Zuneca's motion for reconsideration. Hence,
Zuneca filed the instant Petition.

ISSUE:
1. WON The Court erred in affirming the RTC’s ruling that the first-to-file trademark
registrant in good faith defeats the right of the right of the prior user in good faith? NO

2. WON petitioner ZUNECA is liable for trademark infringement and thus liable for
damages? NO

RULING (w/ DOCTRINES):

1. Ownership of a trademark is acquired by its registration. The Supreme Court held that
the IP Code provides that ownership of a mark is acquired through registration. As
expressed in the language of the provisions of the IP Code, prior use no longer
 determines the acquisition of ownership of a mark in light of the adoption of the rule that
ownership of a mark is acquired through registration made validly in accordance with the
provisions of the IP Code. Accordingly, the trademark provisions of the IP Code use the
term "owner" in relation to registrations.
2. According to the Supreme Court,IP Code likewise protects and respects the rights of
prior users in good faith. 
Under Sec. 147.1 of the IP Code, owner of a registered mark shall have the exclusive
right to prevent third parties’ use of identical or similar marks for identical or similar
goods where such use would result in a likelihood of confusion. However this provision
should be read in conjunction with Sec. 159.1 of the IP Code that,
“Notwithstanding the provisions of Section 155 hereof, a registered mark shall
have no effect against any person who, in good faith, before the filing date
or the priority date, was using the mark for the purposes of his business or
enterprise: Provided, That his right may only be transferred or assigned together
with his enterprise or business or with that part of his enterprise or business in
which the mark is used.”

Therefore, Sec. 159.1 is an exception to the rights of the trademark owner in Sec. 147.1
of the IP Code. Clearly, Sec. 159.1 contemplates that a prior user in good faith may
continue to use its mark even if after registration of the mark by first-to-file registrant in
good faith. This results in the co-existence of at least two entities – the unregistered prior
user in good faith, and the first-to-file registrant in good faith on the other. – using
identical or confusingly similar marks in the market at the same point in time, even if
there exists the likelihood of confusion. 

Thus petitioner was not held liable for trademark infringement as it was considered as a
prior user in good faith.Although there is confusing similarity between the the two marks,
the Court allowed the co-existence of both believing that the evil of medical switching will
not likely to arise considering the the law requires generic names of drugs to be written
in the prescriptions. 

DISPOSITIVE:
WHEREFORE, premises considered, the petition is PARTLY GRANTED and the Court hereby
declares petitioners ZUNECA PHARMACEUTICAL AND/OR AKRAM ARAIN AND/OR VENUS
ARAIN, M.D., AND STYLE OF ZUNECA PHARMACEUTICAL as the prior users in good faith of
the "ZYNAPS" mark and accordingly protected under Section 159.1 of the Intellectual Property
Code of the Philippines.

The assailed Decision and Resolution of the CA, which affirmed the Decision of the RTC are
AFFIRMED insofar as they declared respondent NATRAPHARM, INC. as the lawful registrant of
the "ZYNAPSE" mark under the Intellectual Property Code of the Philippines, and are SET
ASIDE insofar as they hold petitioners liable for trademark infringement and damages, directed
the destruction of petitioners' goods, and enjoined petitioners from using "ZYNAPS". Petitioners'
application for the issuance of a Temporary Restraining Order and/or Preliminary Injunction is
DENIED.

ZUNECA PHARMACEUTICAL AND/OR AKRAM ARAIN AND/OR VENUS ARAIN, M.D., AND
STYLE OF ZUNECA PHARMACEUTICAL and NATRAPHARM, INC. are likewise ORDERED
to: (1) indicate on their respective packaging, in plain language understandable by people with
no medical background or training, the medical conditions that their respective drugs are
supposed to treat or alleviate and a warning indicating what "ZYNAPS" is not supposed to treat
and what "ZYNAPSE" is not supposed to treat; and (2) submit to the Court a written report
showing compliance with this directive within thirty (30) days from receipt of this Decision.

SO ORDERED.

9. Kolin Electronics Co., Inc. vs. Kolin Phils. Int’l, Inc., G.R. No. 228165, February 9, 2021

Case #9 (JOCSON)
KOLIN ELECTRONICS CO., INC. vs. KOLIN PHILIPPINES INTERNATIONAL INC.
G.R. No 228165 | February 09, 2021 | TRADEMARK
Ponente: CAGUIOA, J

PETITIONER(S): Kolin Electronics Co. Inc. (KECI)

RESPONDENT(S):  Kolin Philippines International Inc. (KPII)

MAIN DOCTRINE (Based on the syllabus):

  MULTIFACTOR TEST - to determine likelihood of confusion

a) the strength of plaintiffs mark;

b) the degree of similarity between the plaintiffs and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.

TEST TO DETERMINE RESEMBLANCE OF MARKS

 The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception, and thus
infringement. If the competing trademark contains the main, essential or dominant
features of another, and confusion or deception is likely to result, infringement takes
place. [incorporated in the Intellectual Property Code]

 ABANDONMENT OF THE HOLISTIC TEST

FACTS:
1. [KECI OWNERSHIP CASE] In 1995, Kolin Electronics Industrial Supply (KEIS)
executed a Deed of Assignment in favor of KECI including its pending application for
registration of the KOLIN trademark covering the following products under Class 9:
automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated
power supply, step-down transformer, and PA amplifier AC-DC. TAIWAN KOLIN
Corporation (TKC) also applied for the registration of KOLIN trademark covering Class
9 products such as: color television, refrigerator, window-type air conditioner, split-type
air conditioner, electric fan, and water dispenser" opposed the KECI’s application. The
CA resolved to give due course to KECI’s application and deny TKC’s application
considering that KECI’s actual use of the trademark has been traced way back in 1989
whereas TKC actual use of the same was only in 1996. The CA ruling became final
and executory; KECI was the adjudicated owner of KOLIN trademark.

2. [TAIWAN KOLIN CASE] In a separate proceeding, TKC was allowed by the Supreme
Court to use with limitation for television and DVD players the KOLIN trademark
because TKC and KECI’s products, although both belonging to Class 9, are considered
unrelated goods. The Supreme Court noted that the different logos (KECI-Italicized;
TKC-colored background) is incapable of deceiving an ordinary intelligent buyer.

3. In the present case, KPII, an affiliate of TKC, filed an application for the use of KOLIN
trademark with the Intellectual Property Office (IPO) for Class 9 products limited to
television and DVD players. 
 4. ARGUMENT OF THE PETITIONER: KECI filed their opposition thereto stating that it is
the registered owner of KOLIN trademark and to cause registration in favor of KPII will
cause confusion among its customers.

5. ARGUMENT OF THE RESPONDENT: KPII contended that KECI cannot claim that it is
the registered owner because they were not a party in that proceeding. It also insisted
that television and DVD players are unrelated to the goods covered by KECI’s
registration.   

IPO-BUREAU OF LEGAL AFFAIRS (BLA): REJECTED KPII APPLICATION; Sustained

KECI’s opposition. It reasoned that buyers would be confused as to the origin of the products
being offered by KECI and KPII. Significantly, the IPO-BLA also noted that KECI had received
several customer e-mails complaining against or seeking information about the products of
KPII. 

IPO-DIRECTOR GENERAL (DG): DISMISSED the appeal. Televisions and DVD players are
related to the goods covered by KECI’s registration.

CA: KPII ALLOWED TO REGISTER. The CA relied heavily on, and quoted the reasoning in, the
Taiwan Kolin case. Accordingly, the CA ruled that KPII may register its mark for television sets
and DVD players and the doctrine of res judicata forbids it from arriving at a contrary conclusion.

ISSUE: W / N KPII IS ALLOWED TO REGISTER THE KOLIN MARK -NO

RULING (w/ DOCTRINES):

No. The Intellectual Property Code provides: 

SECTION 123. Registrability. - 123.1. A mark cannot be registered if it:

xxxx
(d) Is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
xxxx

In determining likelihood of confusion - which can manifest in the form of "confusion of

goods" and/or "confusion of business" - several factors may be taken into account, such as:

a) the strength of plaintiffs mark;

b) the degree of similarity between the plaintiffs and the defendant's marks;
 c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.

These criteria may be collectively referred to as the multifactor test. Out of these
criteria, there are two which are uniformly deemed significant under the Trademark Law  and the
IP Code: the resemblance of marks (the degree of similarity between the plaintiffs and the
defendant's marks) and the relatedness of goods or services (the proximity of products or
services).

In determining the resemblance of marks, the Dominancy Test focuses on the

similarity of the prevalent features of the competing trademarks which might cause confusion
or deception, and thus infringement. This is consistent with the basic rule in determining
resemblance of marks, which requires that the appearance, sound, meaning, and overall
impressions generated by the marks shall be considered.

The Supreme Court clarified that the adoption of the dominancy test in the IP Code and 
inquiry into the  legislative intent of the IP Code, manifest the abandonment of the holistic test to
determine the resemblance of marks. Applying the Dominancy Test here, KPII's kolin mark
resembles KECI's KOLIN mark because the word "KOLIN" is the prevalent feature of both
marks. Phonetically or aurally, the marks are exactly the same. In terms of connotation and
overall impression, there seems to be no difference between the two marks.

Non-competing goods may be those which, though they are not in actual competition,
are so related to each other that it can reasonably be assumed that they originate from one
manufacturer, in which case, confusion of business can arise out of the use of similar marks.
They may also be those which, being entirely unrelated, cannot be assumed to have a common
source; hence, there is no confusion of business, even though similar marks are used. Thus,
there is no trademark infringement if the public does not expect the plaintiff to make or sell the
same class of goods as those made or sold by the defendant.It is clear that the goods covered
by KECI's KOLIN are complementary to the goods covered by KPII's kolin and could thus be
considered as related. This increases the likelihood that consumers will at least think that the
goods come from the same source. Also, as correctly pointed out by IPO-BLA there is already
confusion as KPII’s customers contact KECI for KPII  products. Actual confusion is a strong
ground for future confusion. 

DISPOSITIVE:
WHEREFORE, premises considered, the instant Petition is GRANTED. The assailed Decision dated
April 29, 2016 and Resolution dated November 4, 2016 of the Court of Appeals in CA-G.R. SP No.
131917 are REVERSED and SET ASIDE. Accordingly, the Decision of the Office of the Director
General of the Intellectual Property Office in IPC No. 14-2007-00167 is REINSTATED and
AFFIRMED.

Consequently, the Trademark Application Serial No. 4-2006-010021 for kolin filed by respondent
Kolin Philippines International, Inc. under Class 9 for "Television and DVD players" is REJECTED.
10. Suyen Corp. vs. Danjaq LLC, G.R. No. 250800, July 6, 2021
Case #10 Ledonio
Suyen Corp. vs. Danjaq LLC
G.R. No. 250800 | July 6, 2021 | TRADEMARK
Ponente: Carandang, J.
 
PETITIONER(S): Suyen Corp.
RESPONDENT(S): Danjaq LLC

MAIN DOCTRINE (Based on the syllabus):

·   The manner in determining the likelihood of confusion between two marks was set forth
in Section 5, Rule 18 of the 2020 Revised Rules of Procedure for Intellectual Property
Rights Cases, which provides:

·   Section 5. Likelihood of confusion in other cases. - In determining whether one

trademark is confusingly similar to or is a colorable imitation of another, the court must
consider the general impression of the ordinary purchaser, buying under the normally
prevalent conditions in trade, and giving the attention such purchasers usually give in
buying that class of goods. Visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as they are encountered in the
realities of the marketplace must be taken into account. Where there are both similarities
and differences in the marks, these must be weighed against one another to determine
which predominates.

·   Damages under Section 123.1 (f) is present when there is Trademark Dilution. In Levi
Strauss & Co., this Court defined trademark dilution, viz.: Trademark dilution is the
lessening of the capacity of a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of: (1) competition between the owner of the
famous mark and other parties; or (2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is entitled to an injunction
"against another person's commercial use in commerce of a mark or trade name, if such
use begins after the mark has become famous and causes dilution of the distinctive
quality of the mark." This is intended to protect famous marks from subsequent uses that
blur distinctiveness of the mark or tarnish or disparage it.
 
FACTS:
1. Suyen is a corporation operating in the Philippines using the BENCH trademark. On
February 16, 2010, it filed an application for the registration of the mark AGENT BOND -
specifically for "hair refresher, hair gel, hair lotion, hair treatment, hair shampoo, and hair
conditioner.
2. Danjaq, a foreign corporation based in Santa Monica, California, United States of
America, opposed Suyen's application for being confusingly similar with its trademark,
JAMES BOND. Because of the character's popularity as James Bond/Agent 007, Danjaq
claimed to have prior use of the AGENT BOND mark.
3. Suyen denied any confusing similarity between the marks AGENT BOND and JAMES
BOND. The supposed popularity of the JAMES BOND mark is insufficient to prove that it
is a well-known mark in accordance with Section 123.1 of the Intellectual Property Code.
In insisting that AGENT BOND is not confusingly similar to JAMES BOND, Suyen
applied the dominancy and holistic tests. Under the dominancy test, the competing
marks' common word - BOND - is not the dominant word for both marks.
 4. Danjaq retorted that it is not actual confusion that is required to deny registration of a
trademark but the possibility of confusion. Because JAMES BOND is a well-known mark,
any product bearing the JAMES BOND trademark or other related marks is highly
marketable.

IPO-Bureau of Legal Affairs: The BLA sustained Danjaq's opposition and denied Suyen's
trademark application for AGENT BOND. Since the word AGENT is placed before the word
BOND, the said mark gave an impression that it was connected to JAMES BOND - who is
referred to as "Agent 007" or "Agent Bond." There can be a confusion of business if Suyen's
trademark application for AGENT BOND was granted.
 
IPO-Office of the Director General: The ODG denied Suyen's appeal. Suyen's choice of using
AGENT BOND, when it is so closely associated with JAMES BOND, shows that it intended to
take advantage of JAMES BOND's goodwill. It thus leads the public to believe that AGENT
BOND is Danjaq's products.
 
CA: The CA denied Suyen's petition. Applying Rule 102 of the Rules and Regulations on
Trademarks, Service Marks, Trade Names and Marked or Stamped Containers, the CA held[51]

that JAMES BOND is a well-known trademark because of the following criteria:

(a) extent and exclusivity of the worldwide registrations of the mark JAMES BOND; (b) length
and extent of use of JAMES BOND worldwide; (c) the degree of the inherent or acquired
distinction of the mark; (d) the extent and promotion of the mark JAMES BOND; and (e) the
commercial value attributed to the mark in the word
 
ISSUE:
1. Whether or not the BLA, ODG, and CA can over-extend Danjaq's rights simply
because a mark includes the word "bond" or because it may be associated with
JAMES BOND - YES
2. Whether or not AGENT BOND is a colorable imitation of James Bond, following
Section 155 of the Intellectual Property Code - YES
3. Whether or not a mere reminder of JAMES BOND automatically confuses the
purchaser as to the product's origin since the ordinary purchaser would be able
to see obvious differences between the two marks - YES
 
RULING (w/ DOCTRINES):
 
1. AGENT BOND is non-registrable because it nearly resembles the registered
mark, JAMES BOND and is likely to deceive or cause confusion
 
Following Section 123.1 (d)(iii), AGENT BOND was properly denied registration, specifically
because AGENT BOND nearly resembles JAMES BOND as to be likely to deceive or cause
confusion. This confusion can exist even if the products bearing the competing marks are
dissimilar since item (iii) of the said section does not require that the competing marks belong to
the same nor to closely related goods or services. It is not actual confusion that is required in
trademark infringement cases but only a likelihood of confusion.
The manner in determining the likelihood of confusion between two marks was set forth in
Section 5, Rule 18 of the 2020 Revised Rules of Procedure for Intellectual Property Rights
Cases, which provides:

Section 5. Likelihood of confusion in other cases. - In determining whether one trademark is

confusingly similar to or is a colorable imitation of another, the court must consider the general
impression of the ordinary purchaser, buying under the normally prevalent conditions in trade,
and giving the attention such purchasers usually give in buying that class of goods. Visual,
aural, connotative comparisons and overall impressions engendered by the marks in
controversy as they are encountered in the realities of the marketplace must be taken into
account. Where there are both similarities and differences in the marks, these must be weighed
against one another to determine which predominates.
 
In determining likelihood of confusion between marks used on non-identical goods or services,
several factors may be taken into account, such as, but not limited to:
 
a) the strength of plaintiff's mark;
b) the degree of similarity between the plaintiff's and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.

"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive

ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, as to cause him or her to purchase the one
supposing it to be the other.

Absolute certainty of confusion or even actual confusion is not required to accord protection to
trademarks already registered with the IPO.
 
There is a large degree of similarity between JAMES BOND and AGENT BOND not because
both words merely contain the word "bond." The Dominancy Test does not solely rely on the
visual and aural aspects of the mark but also the connotative comparisons and overall
impressions between them. In other words, it is not the fact that a particular set of words was
[66]

used but the manner in which they were utilized.

 
Suyen's explanation for using the AGENT BOND mark leaves much to be desired. It claims that
the word "Agent" in AGENT BOND refers to a device. In general terms, a device refers to a
mechanism. There is no mechanism to speak of in a hair styling product. Conversely, the use of
the word "Bond" to the hair presupposes that the hair should be bound to something other than
itself. In fact, the registered trademarks containing the word "bond," as mentioned by Suyen,
(with the exception of Bond Street) all refer to adhesives. [please refer to the table presented in
the full text]
 
Suyen's allegation that James Bond was never referred to as agent bond in any of the
franchise's 22 films takes a narrow-minded approach to legal hermeneutics. This literal
approach was never contemplated in cases of trademark infringement. By using the terms
"likelihood of confusion," the law recognizes the reality that trademark infringement cases delve
into a wide spectrum of instances where a mark can ride on the goodwill and reputation of a
business or might lead the purchaser to assume a connection between the competing marks.
 
The likelihood of confusion refers to two instances - a confusion of products or a confusion of
business. "Confusion of business exists when the products are non-competing but related
enough to produce confusion of affiliation." It contemplates a situation where "[Suyen's] product
is such as might reasonably be assumed to originate with [Danjaq], and the public would then
be deceived either into that belief or into the belief that there is some connection between
[Danjaq] and [Suyen] which, in fact, does not exist."
 
2. The use of AGENT BOND suggests a connection with the well-known mark,
JAMES BOND, to the damage of Banjaq.
 
Section 123.1 (f) of the Intellectual Property Code states:

 
SECTION 123. Registrability. 123.1. A mark cannot be registered if it:

xxxx

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those with respect to which
registration is applied for: Provided, That use of the mark in relation to those goods or services
would indicate a connection between those goods or services, and the owner of the registered
mark: Provided, further, That the interests of the owner of the registered mark are likely to be
damaged by such use.
 
This Court uphold's the CA's declaration of JAMES BOND as a well-known mark on the basis of
substantial evidence. Rule 101 (d) of the Rules and Regulations on Trademarks, Service Marks,
Trade names and Marked or Stamped Containers (Rules and Regulations) enumerates the
[73]

competent authorities that can declare a mark as well-known - namely (1) the courts, (2) the
Director General, and (3) the director of the Bureau of Legal Affairs - so long as some of the
criteria under Rule 103 of the Rules and Regulations are met, to wit:
 
RULE 103. Criteria for Determining Whether a Mark is Well-known. - In determining whether a
mark is well-known, the following criteria or any combination thereof may be considered:

(a) the duration, extent and geographical area of any use of the mark, in particular, the duration,
extent and geographical area of ay promotion of the mark, including advertising or publicity and
the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods and/or services to
which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark;
and
(l) the presence or absence of identical or similar marks validly registered for or used on
identical or similar goods or services and owned by persons other than the person claiming that
the mark is a well-known mark.
 
The other elements of Section 123.1 (f) have also been sufficiently established: (1) there is
confusing similarity between the competing marks, (2) the use of AGENT BOND would indicate
a connection between it and JAMES BOND [with both elements previously discussed], and (3)
the use of AGENT BOND will likely damage Danjaq's interest over JAMES BOND.

Damages under Section 123.1 (f) is present when there is Trademark Dilution. In Levi Strauss &
Co., this Court defined trademark dilution, viz.:
 
Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner
of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is entitled to an injunction
"against another person's commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive quality of the
mark." This is intended to protect famous marks from subsequent uses that blur distinctiveness
of the mark or tarnish or disparage it.
 
As pointed out by Associate Justice Caguioa, our laws and jurisprudence have not yet
elaborated on the two kinds of trademark dilution (i.e., dilution by tarnishment and dilution by
blurring) stated in Levi Strauss & Co. However, the same case cites American Jurisprudence,
which referred to American Law distinguishing between the two, that is:
 
(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the
similarity between a mark or trade name and a famous mark that impairs the distinctiveness of
the famous mark. In determining whether a mark or trade name is likely to cause dilution by
blurring, the court may consider all relevant factors, including the following:

(i) the degree of similarity between the mark or trade name and the famous mark.
(ii) the degree of inherent or acquired distinctiveness of the famous mark.
(iii) the extent to which the owner of the famous mark is engaging in substantially exclusive use
of the mark.
(iv) the degree of recognition of the famous mark.
(v) whether the user of the mark or trade name intended to create an association with the
famous mark.
(vi) any actual association between the mark or trade name and the famous mark.

(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the
similarity between a mark or trade name and a famous mark that harms the reputation of the
famous mark. (Emphasis omitted)
[78]

Echoing Associate Justice Caguioa's discussion, the elements of dilution by blurring are present
here:
• Factor (i) has already been established x x x involving the Dominancy Test to show
resemblance of the marks
• Factors (ii) and (iv) are already satisfied by the CA's pronouncement that "JAMES BOND" is
well-known
• Factor (v) is established by Suyen's admission that there is a mental connection created
between "AGENT BOND" and the well-known "JAMES BOND" mark. [79]

As a result of the abovementioned findings, it is clear that AGENT BOND is non-registrable

under Section 123.1, paragraphs (d) and (f).
 
DISPOSITIVE:
WHEREFORE, the instant Petition for Review on Certiorari is DENIED.
 
Trademark Infringement and Unfair Competition

11. Victorio Diaz vs. People of the Phils. and Levi Strauss [Phils.], Inc., G.R. No. 180677,
Feb. 18, 2013

Case #11 (MAUNTOL)

VICTORIO P. DIAZ, v. PEOPLE OF THE PHILIPPINES AND LEVI STRAUSS [PHILS.], INC.
G.R. No. 180677/ February 18, 2013/ Trademark infringement and unfair competition
Ponente: BERSAMIN, J.:

PETITIONER(S): VICTORIO P. DIAZ

RESPONDENT(S): PEOPLE OF THE PHILIPPINES AND LEVI STRAUSS [PHILS.], INC.
 MAIN DOCTRINE (Based on the syllabus):
The dominancy test focuses on the similarity of the main, prevalent or essential features of the
competing trademarks that might cause confusion. Infringement takes place when the
competing   trademark contains the essential features of another.  Imitation or an effort to
imitate is unnecessary.  The question is whether the use of the marks is likely to cause
confusion or deceive purchasers.
The holistic test considers the entirety of the marks, including labels and packaging, in
determining confusing similarity.  The focus is not only on the predominant words but also on
the other features appearing on the labels.

FACTS:
1.    Diaz has his  shops which receives clothes for sewing or repair; that his shops offered
made-to-order jeans, whose styles or designs were done in accordance with instructions of the
customers; that since the time his shops began operating in 1992, that the jeans he produced
were easily recognizable because the label “LS Jeans Tailoring,” and the names of the
customers were placed inside the pockets, and each of the jeans had an “LSJT” red tab; that
“LS” stood for “Latest Style;” and that the leather patch on his jeans had two buffaloes.
 

2. Levi Strauss and Company (Levi’s), a foreign corporation based in the State of
Delaware, United States of America, had been engaged in the apparel business. It is the owner
of trademarks and designs of Levi’s jeans like LEVI’S 501, the arcuate design, the two-horse
brand, the two-horse patch, the two-horse patch with pattern arcuate, and the composite tab
arcuate.
 Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s.
After receiving information that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring
shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private investigation
group to verify the information.
 Surveillance and the purchase of jeans from the tailoring shops of Diaz established that the
jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501.
Levi’s Philippines then sought the assistance of the National Bureau of Investigation (NBI) for
purposes of applying for a search warrant against Diaz to be served at his tailoring shops. The
search warrants were issued in due course.
Armed with the search warrants, NBI agents searched the tailoring shops of Diaz and seized
several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed that it did not authorize the
making and selling of the seized jeans; that each of the jeans were mere imitations of genuine
LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate design,
the tab, and the leather patch; and that the seized jeans could be mistaken for original LEVI’S
501 jeans due to the placement of the arcuate, tab, and two-horse leather patch.
 3. Diaz admitted being the owner of the shops searched, but he denied any criminal
liability.
Diaz stated that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans
Tailoring” in the jeans that he made and sold; that the label “LS Jeans Tailoring” was registered
with the Intellectual Property Office
RTC: the RTC rendered its decision finding Diaz guilty for trademark infringement.
CA: AFFIRMED the decision of the RTC
ISSUE: WHETHER OR NOT DIAZ COMMITED TRADEMARK INFIRNGEMENT? 
NO
RULING (w/ DOCTRINES):
The elements of the offense of trademark infringement under the Intellectual Property Code are,
therefore, the following:
The trademark being infringed is registered in the Intellectual Property Office;

1. The trademark is reproduced, counterfeited, copied, or colorably imitated by the

infringer;
2. The infringing mark is used in connection with the sale, offering for sale, or advertising of
any goods, business or services; or the infringing mark is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services;
3. The use or application of the infringing mark 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 business; and
4. The use or application of the infringing mark is without the consent of the trademark
owner or the assignee thereof.
5. The use or application of the infringing mark is without the consent of the trademark
owner or the assignee thereof.

Here there are two tests to determine likelihood of confusion, namely: the dominancy test, and
the holistic test.
The dominancy test focuses on the similarity of the main, prevalent or essential features of the
competing trademarks that might cause confusion. Infringement takes place when the
competing   trademark contains the essential features of another.  Imitation or an effort to
imitate is unnecessary.  The question is whether the use of the marks is likely to cause
confusion or deceive purchasers.
The holistic test considers the entirety of the marks, including labels and packaging, in
determining confusing similarity.  The focus is not only on the predominant words but also on
the other features appearing on the labels.
The holistic test is applicable here considering that the herein criminal cases also involved
trademark infringement in relation to jeans products. Accordingly, the jeans trademarks of Levi’s
Philippines and Diaz must be considered as a whole in determining the likelihood of confusion
between them. The maong pants or jeans made and sold by Levi’s Philippines, which included
LEVI’S 501, were very popular in the Philippines. The consuming public knew that the original
LEVI’S 501 jeans were under a foreign brand and quite expensive. Such jeans could be
purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring
shops like those of Diaz’s as well as not acquired on a “made-to-order” basis. Under the
circumstances, the consuming public could easily discern if the jeans were original or fake
LEVI’S 501, or were manufactured by other brands of jeans. 
There were other remarkable differences between the two trademarks that the consuming public
would easily perceive. Diaz aptly noted such differences, as follows:
The prosecution also alleged that the accused copied the “two horse design” of the petitioner-
private complainant but the evidence will show that there was no such design in the seized
jeans. Instead, what is shown is “buffalo design.” Again, a horse and a buffalo are two different
animals which an ordinary customer can easily distinguish.
The prosecution further alleged that the red tab was copied by the accused. However, evidence
will show that the red tab used by the private complainant indicates the word “LEVI’S” while that
of the accused indicates the letters “LSJT” which means LS JEANS TAILORING. Again, even
an ordinary customer can distinguish the word LEVI’S from the letters LSJT.
Based on the certificate issued by the Intellectual Property Office, “LS JEANS TAILORING” was
a registered trademark of Diaz. He had registered his trademark prior to the filing of the present
cases. The Intellectual Property Office would certainly not have allowed the registration had
21

Diaz’s trademark been confusingly similar with the registered trademark for LEVI’S 501 jeans.
Given the foregoing, it should be plain that there was no likelihood of confusion between the
trademarks involved. Thereby, the evidence of guilt did not satisfy the quantum of proof required
for a criminal conviction, which is proof beyond reasonable doubt. According to Section 2, Rule
133 of the Rules of Court, proof beyond a reasonable doubt does not mean such a degree of
proof as, excluding possibility of error, produces absolute certainty.  Moral certainty only is
required, or that degree of proof which produces conviction in an unprejudiced mind.
Consequently, Diaz should be acquitted of the charges.
DISPOSITIVE:
WHEREFORE, the Court ACQUITS petitioner VICTORIO P. DIAZ of the crimes of infringement
of trademark charged in Criminal Case No. 00-0318 and Criminal Case No. 00-0319 for failure
of the State to establish his guilt by proof beyond reasonable doubt.

 
 12. Asia Pacific Res. Int’l Holdings, Ltd. vs. Paperone, Inc., G.R. Nos. 213365-66, Dec. 10,
2018 

Case # 12 (Sagun)

ASIA PACIFIC RESOURCES INTERNATIONAL HOLDINGS, LTD., PETITIONER,

VS. PAPERONE, INC.,

G.R. Nos. 213365-66 | December 10, 2018 | Trademark infringement and unfair competition

Ponente: GESMUNDO, J.

PETITIONER(S): ASIA PACIFIC RESOURCES INTERNATIONAL HOLDINGS, LTD.

RESPONDENT(S): PAPERONE, INC.

MAIN DOCTRINE (Based on the syllabus):

 Relative to the issue on confusion of marks and trade names, jurisprudence has noted two
types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was
purchasing the other; and (2) confusion of business (source or origin confusion), where,
although the goods of the parties are different, the product, the mark of which registration
is applied for by one party, is such as might reasonably be assumed to originate with the
registrant of an earlier product; and the public would then be deceived either into that
belief or into the belief that there is some connection between the two parties, though
inexistent. Thus, while there is confusion of goods when the products are competing,
confusion of business exists when the products are non-competing but related enough to
produce confusion of affiliation.

FACTS:

Petitioner is engaged in the production, marketing, and sale of pulp and premium wood
free paper. It alleged that it is the owner of a well-known trademark, PAPER ONE, with
Certificate of Registration No. 4-1999-01957 issued on September 5, 2003. The said trademark
enjoyed legal protection in different countries worldwide and enjoyed goodwill and high
reputation because of aggressive marketing and promotion.

Respondent, on its part, averred that it had no obligation to secure prior consent or
authority from petitioner to adopt and use its corporate name. The Department of Trade and
Industry (DTI) and the SEC had allowed it to use Paperone, Inc., thereby negating any violation
on petitioner's alleged prior rights. Respondent was registered with the SEC, having been
organized and existing since March 30, 2001. Its business name was likewise registered with the
DTI. Respondent also denied any awareness of the existence of petitioner and/or the registration
of PAPER ONE, as the latter is a foreign corporation not doing business in the Philippines.

In its decision, the Bureau of Legal Affairs (BLA) Director, Intellectual Property Office,
found respondent liable for unfair competition. It ordered respondent to cease and desist from
using PAPERONE in its corporate name, and to pay petitioner damages and attorney's fees. It
ruled that petitioner was the first to use PAPER ONE in 1999 which had become a symbol of
goodwill of its paper business. Respondent's use of PAPERONE in its corporate name was to
benefit from the established goodwill of petitioner. There was, however, no trademark
infringement since PAPER ONE was registered in the Philippines only in 2003.

Argument of Petitioner: Petitioner claimed that the use of PAPERONE in respondent's

corporate name without its prior consent and authority was done in bad faith and designed to
unfairly ride on its good name and to take advantage of its goodwill. It was calculated to mislead
the public into believing that respondent's business and/or products were manufactured, licensed
or sponsored by petitioner. It was also alleged that respondent had presumptive, if not actual
knowledge, of petitioner's rights to the trademark PAPER ONE, even prior to respondent's
application for registration of its corporate name before the Securities and Exchange
Commission (SEC).
 

Argument of Respondent: While the business of respondent dealt with paper conversion such
as manufacture of table napkins, notebooks and intermediate/collegiate writing pads, it did not
use its corporate name PAPERONE on any of its products. Further, its products had been widely
sold in the Philippines even before petitioner could claim any business transaction in the country.
The public could not have possibly been deceived into believing that any relation or sponsorship
existed between the parties, considering these circumstances.
 

Bureau of Legal Affairs Director, Intellectual Property Office, found respondent liable for
unfair competition.

On appeal to the IPO Director General, the BLA decision was affirmed with modification
insofar as the increase in the award of attorney's fees.

The CA reversed and set aside the IPO Director General's decision. It held that there was no
confusing similarity in the general appearance of the goods of both parties. Petitioner failed to
establish through substantial evidence that respondent intended to deceive the public or to
defraud petitioner. Thus, the essential elements of unfair competition were not present.

ISSUE: Whether respondent, Paperone, Inc., is liable for unfair competition. - YES

RULING (w/ DOCTRINES):

The essential elements of an action for unfair competition are: (1) confusing similarity in the
general appearance of the goods, and (2) intent to deceive the public and defraud a competitor.14
Unfair competition is always a question of fact. At this point, it bears to stress that findings of
fact of the highly technical agency - the IPO - which has the expertise in this field, should have
been given great weight by the Court of Appeals.

         As to the first element, the confusing similarity may or may not result from similarity in
the marks, but may result from other external factors in the packaging or presentation of the
goods. Likelihood of confusion of goods or business is a relative concept, to be determined only
according to peculiar circumstances of each case.

         At first glance, respondent may be correct that there would be no confusion as to the
presentation or packaging of its products since it is not using its corporate name as a trademark
of its goods/products. There is an apparent dissimilarity of presentation of the trademark PAPER
ONE and the trade name and logo of Paperone, Inc. Nevertheless, a careful scrutiny of the mark
shows that the use of PAPERONE by respondent would likely cause confusion or deceive the
ordinary purchaser, exercising ordinary care, into believing that the goods bearing the mark are
products of one and the same enterprise.

         Relative to the issue on confusion of marks and trade names, jurisprudence has noted two
types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing
the other; and (2) confusion of business (source or origin confusion), where, although the goods
of the parties are different, the product, the mark of which registration is applied for by one
party, is such as might reasonably be assumed to originate with the registrant of an earlier
product; and the public would then be deceived either into that belief or into the belief that there
is some connection between the two parties, though inexistent. Thus, while there is confusion of
goods when the products are competing, confusion of business exists when the products are non-
competing but related enough to produce confusion of affiliation.
 

         This case falls under the second type of confusion. Although we see a noticeable
difference on how the trade name of respondent is being used in its products as compared to the
trademark of petitioner, there could likely be confusion as to the origin of the products. Thus, a
consumer might conclude that PAPER ONE products are manufactured by or are products of
Paperone, Inc. Additionally, although respondent claims that its products are not the same as
petitioner's, the goods of the parties are obviously related as they are both kinds of paper
products.

         The element of intent to deceive and to defraud may be inferred from the similarity of the
appearance of the goods as offered for sale to the public. Contrary to the ruling of the CA, actual
fraudulent intent need not be shown. Factual circumstances were established showing that
respondent adopted PAPERONE in its trade name even with the prior knowledge of the
existence of PAPER ONE as a trademark of petitioner. As in all other cases of colorable
imitations, the unanswered riddle is why, of the millions of terms and combinations of letters
available, respondent had to choose those so closely similar to another's trademark if there was
no intent to take advantage of the goodwill generated by the other mark.

DISPOSITIVE:

WHEREFORE, the petition is GRANTED. The November 28, 2013 Decision and the July 9,
2014 Resolution of the: Court of Appeals in CA G.R. SP Nos. 122288 and 122535 are
REVERSED and SET ASIDE. Accordingly, the November 10, 2011 Decision of the Intellectual
Property Office Director General finding respondent liable for unfair competition is hereby
REINSTATED.

SO ORDERED.
 13.   San Miguel Pure Foods Co., Inc. vs. Foodsphere, Inc., G.R. Nos. 217781 & 217788,
June 20, 2018

Case #13 (Cruz)

San Miguel Pure Foods Co., Inc. vs. Foodsphere, Inc.
G.R. No  217781 & 217788 | June 20, 2018 | Trademark Infringement and Unfair
Competition
Ponente: J. Peralta

PETITIONER(S): San Miguel Pure Foods Co., Inc.

RESPONDENT(S): Foodsphere, Inc.

MAIN DOCTRINE (Based on the syllabus):

 Unfair competition consists of the passing off (or palming off) or
attempting to pass off upon the public of the goods or business of one
person as the goods or business of another with the end and probable
effect of deceiving the public. Passing off (or palming off) takes place
where the defendant, by imitative devices on the general
appearance of the goods, misleads prospective purchasers into
buying his merchandise under the impression that they are buying
that of his competitors. In other words, the defendant gives his goods
the general appearance of the goods of his competitor with the intention
 of deceiving the public that the goods are those of his competitor. The
"true test," therefore, of unfair competition has thus been "whether the
acts of the defendant have the intent of deceiving or are calculated to
deceive the ordinary buyer making his purchases under the ordinary
conditions of the particular trade to which the controversy relates.”
 Thus, the essential elements of an action for unfair competition
are: (1) confusing similarity in the general appearance of the
goods; and (2) intent to deceive the public and defraud a
competitor. The confusing similarity may or may not result from
similarity in the marks, but may result from other external factors in the
packaging or presentation of the goods. The intent to deceive and
defraud may be inferred from the similarity of the appearance of the
goods as offered for sale to the public. Actual fraudulent intent need not
be shown.

FACTS:
1. The parties herein are both engaged in the business of the manufacture,
sale, and distribution of food products, with San Miguel Pure Foods
Company, Inc (SMPFCI) owning the trademark "PUREFOODS FIESTA
HAM" while Foodsphere, Inc. products (Foodsphere) bear the "CDO"
brand. On November 4, 2010, SMPFCI filed a Complaint for trademark
infringement and unfair competition with prayer for preliminary
injunction and temporary restraining order against Foodsphere
before the Bureau of Legal Affairs (BLA) of the Intellectual Property Office
(IPO), for using, in commerce, a colorable imitation of its registered
trademark in connection with the sale, offering for sale, and advertising of
goods that are confusingly similar to that of its registered trademark.

2. In its complaint, SMPFCI alleged that its "FIESTA" ham, first introduced in
1980, has been sold in countless supermarkets in the country and is,
therefore, a popular fixture in dining tables during the Christmas season.
Its registered "FIESTA" mark has acquired goodwill to mean sumptuous
ham of great taste, superior quality, and food safety, and its trade dress
"FIESTA", combined with a figure of a partly sliced ham served on a plate
with fruits on the side had likewise earned goodwill. Notwithstanding such
tremendous goodwill already earned by its mark, SMPFCI continues to
invest considerable resources to promote                           the FIESTA
ham.

3. Sometime in 2006, however, Foodsphere introduced its "PISTA" ham and

aggressively promoted it in 2007, claiming the same to be the real
premium ham. In 2008, SMPFCI launched its "Dapat ganito ka-espesyal"
campaign, utilizing the promotional material showing a picture of a whole
meat ham served on a plate with fresh fruits on the side. The ham is
 being sliced with a knife and the other portion, held in place by a serving
fork. But in the same year, Foodsphere launched its "Christmas Ham with
Taste" campaign featuring a similar picture. Moreover, in 2009,
Foodsphere launched its "Make Christmas even more special" campaign,
directly copying SMPFCI's "Dapat ganito ka-espesyal" campaign. Also in
2009, Foodsphere introduced its paper ham bag which looked
significantly similar to SMPFCI's own paper ham bag and its trade dress
and its use of the word "PISTA" in its packages were confusingly similar
to SMPFCI's "FIESTA" mark.

4. Argument of Petitioner  SMPFCI

Thus, according to SMPFCI, the striking similarities between the

marks and products of Foodsphere with those of SMPFCI warrant
its claim of trademark infringement on the ground of likelihood of
confusion as to origin, and being the owner of "FIESTA," it has the
right to prevent Foodsphere from the unauthorized use of a
deceptively similar mark.

The"FIESTA" and "PISTA" marks are used in the same product which
are distributed and marketed in the same channels of trade under similar
conditions, and even placed in the same freezer and/or displayed in the
same section of supermarkets. Foodsphere's use, therefore, of the
"PISTA" mark will mislead the public into believing that its goods
originated from, or are licensed or sponsored by SMPFCI, or that
Foodsphere is associated with SMPFCI, or its affiliate. The use of the
"PISTA" trademark would not only result in likelihood of confusion, but in
actual confusion.

Apart from trademark infringement, SMPFCI further alleged that

Foodsphere is likewise guilty of unfair competition. This is because
there is confusing similarity in the general appearance of the goods of
the parties and intent on the part of Foodsphere, to deceive the public
and defraud SMPFCL According to SMPFCI, there is confusing similarity
because the display panel of both products have a picture of a partly
sliced ham served on a plate of fruits, while the back panel features
other ham varieties offered, both "FIESTA" and "PISTA" are printed in
white bold stylized font, and the product packaging for both "FIESTA"
and "PISTA" consists of box-typed paper bags made of cardboard
materials with cut-out holes on the middle top portion for use as handles
and predominantly red in color with a background design of Christmas
balls, stars, snowflakes, and ornate scroll.

5. Argument of Respondent Foodsphere 

 Foodsphere denied the charges of trademark infringement and
countered that the marks "PISTA" and "PUREFOODS FIESTA HAM" are
not confusingly similar and are, in fact, visually and aurally distinct from
each other. This is because PISTA is always used in conjunction with its
house mark "CDO" and that "PUREFOODS FIESTA HAM" bears the
housemark "PUREFOODS," rendering confusion impossible. Moreover,
Foodsphere maintained that SMPFCI does not have a monopoly on the
mark "FIESTA" for the IPO database shows that there are two (2) other
registrations for "FIESTA," namely "FIESTA TROPICALE" and "HAPPY
FIESTA.” But, SMPFCI has done nothing against those manufacturers,
making it guilty of estoppel in pais, and is, therefore, estopped from
claiming that the use of other manufacturers of the mark "FIESTA" will
result in confusion and/or damage to itself.
 

Foodsphere similarly denied the allegation that it is guilty of unfair

competition or passing off its product as that of SMPFCI. As mentioned,
the "PISTA" and "FIESTA" labels are substantially different in the
manner of presentation, carrying their respective house marks.
Moreover, its paper ham bags are labeled with their respective house
marks and are given to consumers only after purchase, hence, they do
not factor in when the choice of ham is being made.

IPO:  The BLA, through its Director, rendered its Decision dismissing SMPFCI's
complaint for lack of merit. However, the Office of the Director General partially granted
SMPFCI's appeal, affirming the BLA's ruling on the absence of trademark infringement
but finding Foodsphere liable for unfair competition. 

CA:  On appeal, the CA,denied SMPFCI's petition and affirmed the ruling of the Director
General on the absence of trademark infringement. According to the appellate court,
Foodsphere was merely exercising, in good faith, its right to use its duly registered
trademark "PISTA" in the lawful pursuit of its business

ISSUE: Whether the CA erred in sustaining the Director General’s ruling that
Foodsphere is liable for unfair competition - NO

RULING (w/ DOCTRINES):

The petition lacks merit. The CA did not err in ruling so.

Time and again, the Court has held that unfair competition consists of
the passing off (or palming off) or attempting to pass off upon the public
of the goods or business of one person as the goods or business of
 another with the end and probable effect of deceiving the public. Passing
off (or palming off) takes place where the defendant, by imitative devices
on the general appearance of the goods, misleads prospective
purchasers into

buying his merchandise under the impression that they are buying that of
his competitors. In other words, the defendant gives his goods the
general appearance of the goods of his competitor with the intention of
deceiving the public that the goods are those of his competitor. The "true
test," therefore, of unfair competition has thus been "whether the acts of
the defendant have the intent of deceiving or are calculated to deceive
the ordinary buyer making his purchases under the ordinary conditions
of the particular trade to which the controversy relates."
 

Thus, the essential elements of an action for unfair competition are: (1)
confusing similarity in the general appearance of the goods; and (2)
intent to deceive the public and defraud a competitor. The confusing
similarity may or may not result from similarity in the marks, but may
result from other external factors in the packaging or presentation of the
goods. The intent to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered for sale to the public.
Actual fraudulent intent need not be shown.
 

In the instant case, the Court finds no error with the findings of the
CA and Director General insofar as the presence of the foregoing
elements is concerned. First of all, there exists a substantial and
confusing similarity in the packaging of Foodsphere's product with that of
SMPFCI, which, as the records reveal, was changed by Foodsphere
from a paper box to a paper ham bag that is significantly similar to
SMPFCI's paper ham bag. As duly noted by the Director General and the
CA, both packages use paper ham bags as the container for the hams,
both paper ham bags use the red color as the main colors, and both
have the layout design appearing on the bags consisting of a partly
sliced ham and fruits on the front and other ham varieties offered at the
back. Thus, Foodsphere's packaging in its entirety, and not merely
its "PISTA" mark thereon, renders the general appearance thereof
confusingly similar with the packaging of SMPFCI's ham, that
would likely influence purchasers to believe that these products 
are  similar,  if  not  the  same,  as  those  of  SMPFCI.
 

Second of all, Foodsphere's intent to deceive the public, to defraud

its competitor, and to ride on the goodwill of SMPFCI's products is
evidenced by the fact that not only did Foodsphere switch from its
old box packaging to the same paper ham bag packaging as that
 used by SMPFCI, it also used the same layout design printed on the
same. As the Director General observed, why, of the millions of terms
and combinations of letters, designs, and packaging available,
Foodsphere had to choose those so closely similar to SMPFCI's if there
was no intent to pass off upon the public the ham of SMPFCI as its own
with the end and probable effect of deceiving the public.

DISPOSITIVE:
WHEREFORE, premises considered, the instant petitions in G.R. Nos. 217781
and 217788 are DENIED. The assailed Decision dated September 24, 2014 and
Resolution dated April 8, 2015 of the Court of Appeals in CA-G.R. SP No. 131945 are
hereby AFFIRMED.

14. Kho vs. Summerville Gen. Merchandising & Co., Inc., G.R. No. 213400, August 4, 2021

Case # 14 (Sagun)

ELIDAD KHO AND VIOLETA KHO, Petitioners, v. SUMMERVILLE GENERAL

MERCHANDISING & CO., INC., Respondent.

G.R. No. 213400 | August 04, 2021| Trademark infringement and unfair competition

Ponente: HERNANDO, J.

PETITIONER(S): ELIDAD KHO AND VIOLETA KHO

RESPONDENT(S): SUMMERVILLE GENERAL MERCHANDISING & CO., INC.

MAIN DOCTRINE (Based on the syllabus):

 The essential elements of an action for unfair competition are: (1) confusing similarity in
 the general appearance of the goods, and (2) intent to deceive the public and defraud a
competitor. The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation of the goods.
Likelihood of confusion of goods or business is a relative concept, to be determined only
according to peculiar circumstances of each case. The element of intent to deceive and to
defraud may be inferred from the similarity of the appearance of the goods as offered for
sale to the public.

Here, petitioners' product which is a medicated facial cream sold to the public is
contained in the same pink oval-shaped container which had the mark "Chin Chun Su," as
that of respondent. While petitioners indicated in their product the manufacturer's name,
the same does not change the fact that it is confusingly similar to respondent's product in
the eyes of the public. As aptly found by the appellate court, an ordinary purchaser would
not normally inquire about the manufacturer of the product. Petitioners' product and that
solely distributed by respondent are similar in the following respects "1. both are
medicated facial creams; 2. both are contained in pink, oval-shaped containers; and 3.
both contain the trademark "Chin Chun Su" x x x The similarities far outweigh the
differences. The general appearance of (petitioners') product is confusingly similar to
(respondent)." Verily, the acts complained of against petitioners constituted the offense of
Unfair Competition and probable cause exists to hold them for trial, contrary to the
findings of RTC Branch 46.

FACTS:

Petitioners Elidad Kho (Elidad) and Violeta Kho (Violeta) were charged with Unfair
Competition by respondent Summerville General Merchandising & Co., Inc., (Summerville)
before the City Prosecutor's Office of Manila.

Allegedly, petitioner is selling facial cream products same as of the respondent. In fact, it
was shown that the products of the petitioner is inside an oval shaped container with the label of
“Chin Chun Su” similar to the product of the respondent. Petitioner alleged that it is not the same
because they put the name of the manufacturer on their product unlike the respondent. Thus,
there is a difference between the two.

The RTC ruled that there is no probable cause in the case against the petitioner.

However, the CA ruled otherwise where it finds probable cause and ordered the case to
be reprimanded to the trial court.
  

Petitioners are charged with unfair competition because petitioners' product is

confusingly similar to that of respondent; the ordinary purchaser would not normally inquire
about the manufacturer of the product and therefore, petitioners' act of labeling their product with
the manufacturer's name would not exculpate them from liability, especially as both products of
petitioners and respondent bore the name "Chin Chun Su," in oval shaped containers; petitioners
may have the right to use the oval-shaped container for their medicated facial cream but the mark
"Chin Chun Su" imprinted thereon is beyond the authority of petitioners' copyright and patent
registration.

Aggrieved by the decision, petitioner then filed this petition.

Argument of Petitioner: Petitioner alleged that it is not the same because they put the name of
the manufacturer on their product unlike the respondent. Thus, there is a difference between the
two.
 

Argument of Respondent: In an unfair competition, and for the purpose of

deceiving/defrauding the public in general and the Summerville General Merchandising and Co.
(Summerville) which is engaged, among others, in the importation and distribution of facial
cream products with the trademark known as Chin Chun Su, herein represented by Victor Chua,
its General Manager, did then and there willfully, unlawfully, knowingly and jointly sell/dispose
and/or cause to be sold/disposed to the public facial cream products using tools, implements and
equipments in its production, labeling and distribution, which give and depict the general
appearance of the Chin Chun Su facial cream products and likely influence the purchasers to
believe that the same are those of the said Summerville.
 

ISSUE: Whether or not there is probable cause to charged petitioner with Unfair Competition. -
YES

RULING (w/ DOCTRINES):

In the present case, the Court finds that the acts complained of constituted probable cause to
charge them with Unfair Competition.

Section 168 (3a) of the Intellectual Property Code provides:

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. - x x x

xxx

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of
another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other feature of
their appearance, which would be likely to influence purchasers to believe that the goods offered
are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who
otherwise clothes the goods with such appearance as shall deceive the public and defraud another
of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose; x x x

The essential elements of an action for unfair competition are: (1) confusing similarity in the
general appearance of the goods, and (2) intent to deceive the public and defraud a competitor.
The confusing similarity may or may not result from similarity in the marks, but may result from
other external factors in the packaging or presentation of the goods. Likelihood of confusion of
goods or business is a relative concept, to be determined only according to peculiar
circumstances of each case. The element of intent to deceive and to defraud may be inferred
from the similarity of the appearance of the goods as offered for sale to the public.

Here, petitioners' product which is a medicated facial cream sold to the public is contained in the
same pink oval-shaped container which had the mark "Chin Chun Su," as that of respondent.
While petitioners indicated in their product the manufacturer's name, the same does not change
the fact that it is confusingly similar to respondent's product in the eyes of the public. As aptly
found by the appellate court, an ordinary purchaser would not normally inquire about the
manufacturer of the product. Petitioners' product and that solely distributed by respondent are
similar in the following respects "1. both are medicated facial creams; 2. both are contained in
pink, oval-shaped containers; and 3. both contain the trademark "Chin Chun Su" x x x The
similarities far outweigh the differences. The general appearance of (petitioners') product is
confusingly similar to (respondent)." Verily, the acts complained of against petitioners
constituted the offense of Unfair Competition and probable cause exists to hold them for trial,
contrary to the findings of RTC Branch 46.

 
DISPOSITIVE:

WHEREFORE, the Petition for Review on Certiorari is DENIED. The October 1, 2013 Decision
and June 30, 2014 Resolution of the Court of Appeals in CA-G.R. SP No. 117835 are
AFFIRMED.

SO ORDERED.

15. Petron Corp. v. Yao, Sr., G.R. No. 243328, March 18, 2021 ( EDEM) 

Trademark infringement and unfair competition

PETITIONER(S): PETRON CORPORATION AND PEOPLE OF THE PHILIPPINES

RESPONDENT(S): WILLIAM YAO, SR. LUISA C. YAO, WILLIAM YAO, JR., RICHARD
C. YAO AND ROGER C. YAO

MAIN DOCTRINE (Based on the syllabus):

 From jurisprudence, unfair competition has been defined as the passing off (or palming
off) or attempting to pass off upon the public of the goods or business of one person as
the goods or business of another with the end and probable effect of deceiving the public.
Passing off (or palming off) takes place where the defendant, by imitative devices on the
general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors. Thus, the
main element of unfair competition is passing off and one way of committing the crime is
by sale.
 As can be seen from the complaint, the Petron owned gasul tanks were allegedly refilled
by respondents at their Trece Martires City refilling plant and were sold therein. Thus, the
crime of unfair competition was already consummated in Trece Martires City. However,
respondents continued to pass off the Petron gasul tanks as their own by subsequently
selling the same in Makati City, hence, there is a continuing violation of the law.
Therefore, the sales made in Cavite and Makati City cannot be considered as separate
offenses of unfair competition as they merely constitute the ingredients of the crime.
FACTS: 
Petitioner Petron Corporation is a corporation duly organized and existing under the Philippine
law and one of the bulk suppliers of Liquefied Petroleum Gas (LPG) in the Philippines. It uses
the trademark "GASUL" for its LPG products and the only entity in the Philippines authorized to
refill, use, sell and distribute Petron Gasul LPG containers and/or products.

It has come to the attention of Petron that some entities/establishments were engaged in the
unauthorized refilling, sale and distribution of Petron-owned Gasul LPG cylinders. Among them
was the Masagana Gas Corp (Masagana).

In this case, the complaint affidavit alleged that the NBI agents together with Mr. Alajar
conducted test-buys at the respondents' Masagana refilling plant in Trece Martires, Cavite on
February 13 and 27, 2003 and they personally witnessed Masagana employees refilled the Petron
Gasul LPG cylinders which were sold to them. During a surveillance on February 18, 2003, the
NBI agents and Mr. Alajar observed a delivery truck marked with Masagana Gas Corp carrying
Petron Gasul LPG cylinders coming from its refilling plant in Trece Martirez City, Cavite, and
they followed it as it made its way to a warehouse located in Makati City; and there, they noticed
that another truck loaded with Petron Gasul LPG cylinders was parked in front of the said
warehouse. On February 27, 2003, the NBI agents and Mr. Alajar went back to Masagana's
warehouse in Makati City where they were informed by a Masagana employee that the company
is engaged in the sale and distribution of Petron Gasul LPG so they purchased another Petron
Gasul LPG thereat.

Respondents, as Directors and Officers of Masagana Gas Corporation, were charged on February
21, 2011 in the RTC of Makati City with the crime of unfair competition for their alleged acts of
selling and offering for sale liquefied petroleum gas with the appearance of Petron in steel
cylinders belonging to Petron, that such would likely influence purchasers to believe that the
goods are those of Petron which deceived the public and defraud Petron of its legitimate trade.
Earlier, on July 2, 2010, respondents were already charged with unfair competition for the same
act committed in Cavite on February 13, 2003. Respondents filed with the RTC of Makati City
a Motion to Quash Information which was denied, and later, a Motion to Dismiss, which was
also denied. However, on motion for reconsideration, the RTC of Makati City quashed the
information finding that the crime of unfair competition is a transitory offense, and since the
RTC of Trece Martirez City, Cavite had taken prior cognizance of the case, it has no more
jurisdiction to entertain the same. The CA found no grave abuse of discretion committed by the
RTC in quashing the Information.

ISSUE: Whether the RTC of Makati City correctly quashed the Information filed with it for lack
of jurisdiction. (YES)

RULING: From jurisprudence, unfair competition has been defined as the passing off (or
palming off) or attempting to pass off upon the public of the goods or business of one person as
the goods or business of another with the end and probable effect of deceiving the public.14
Passing off (or palming off) takes place where the defendant, by imitative devices on the general
appearance of the goods, misleads prospective purchasers into buying his merchandise under the
impression that they are buying that of his competitors. Thus, the main element of unfair
competition is passing off and one way of committing the crime is by sale.

As can be seen from the complaint, the Petron owned gasul tanks were allegedly refilled by
respondents at their Trece Martires City refilling plant and were sold therein. Thus, the crime of
unfair competition was already consummated in Trece Martires City. However, respondents
continued to pass off the Petron gasul tanks as their own by subsequently selling the same in
Makati City, hence, there is a continuing violation of the law. Therefore, the sales made in Cavite
and Makati City cannot be considered as separate offenses of unfair competition as they merely
constitute the ingredients of the crime.

In transitory or continuing offenses in which some acts material and essential to the crime and
requisite to its consummation occur in one province and some in another, the court of either
province has jurisdiction to try the case. Here, both the RTC of Cavite and Makati City have
jurisdiction to try the case for unfair competition filed against respondents. However, it has been
held that in cases of concurrent jurisdiction, the court first acquiring jurisdiction excludes the
other courts.16 Since it is the RTC of Trece Martires City, Cavite which had earlier acquired
jurisdiction over the case of unfair competition filed against respondents, the RTC of Makati
City correctly quashed the Information filed with it for lack of jurisdiction.

Petron's contention that since several consumers had been deceived into believing that they were
buying Petron owned gasul tanks so they can initiate separate and distinct complaints for the
crime of unfair competition is not meritorious. It is only the owners of the trademark who can
file a case for unfair competition for deceptive trade practices.

 In US v. Kyburz,
The rule which protects against unfair competition is primarily for the protection of the party
against whom such competition is directed, and only incidentally for the protection of the public.
In some of the cases language is used which would suggest that the public is under the protection
of the court, but in fact the liability of the article to mislead the public is only an element of proof
in the plaintiff's case, the evidence showing that he has been or may be injured by the fraudulent
acts of the defendant. The court therefore, does not interfere for the purpose of preventing the
public from being misled, except in so far as it is necessary to protect the owner of a business
from its fraudulent invasion by others. If what is done tends to mislead the public, it naturally
diverts customers from the complainant, to the injury of his business. The prohibition is upon so
acting as to beguile the public, and thus mislead an intending purchaser into buying the goods of
one person under the belief that he is buying those of a rival

WHEREFORE, the petition for review on certiorari is DENIED. The Decision dated
March 20, 2018 and the Resolution dated November 28, 2018 of the Court of Appeals
issued in CA-G.R. SP No. 143249 are hereby AFFIRMED.

SO ORDERED.
16. Kolin Electronics Co., Inc. v. Kolin Phils. Int’l, Inc., G.R. No. 228165, February 9, 2021
Copyright

17. Habana vs. Robles (GR No. 131522, July 19, 1999)
 18. Filipino Society of Composers vs. Tan, G.R. No. L-36402. March 16, 1987

Case #18 (Almiranez, Maia Marie)

FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS,INC., vs. BENJAMIN
TAN
G.R. No L- 36402 | March 11, 1987 | COPYRIGHT
Ponente:Paras, J

PETITIONER(S): FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND

PUBLISHERS,INC
RESPONDENT(S): BENJAMIN TAN

MAIN DOCTRINE (Based on the syllabus):

 Playing of music in dine and dance establishment which was paid for by the public in
purchases of food and constitutes “performance for profit” within the Copyright Law.
Nevertheless, defendant cannot be held to have violated the Copyright Law because
the composers of the contested musical compositions are deemed to have waived
their rights in favor of the general public because they have failed to comply with the
regulation requiring an intellectual creation to be copyrighted within 30 days after
publication.
  Under the circumstances, it is clear that the musical compositions in question had
long become public property, and are therefore beyond the protection of the
Copyright Law.
 Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated
September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office
relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act
165, an intellectual creation should be copyrighted thirty (30) days after its publication,
if made in Manila, or within the (60) days if made elsewhere, failure of which renders
such creation public property.
If the general public has made use of the object sought to be copyrighted for thirty (30)
days prior to the copyright application the law deems the object to have been donated
to the public domain and the same can no longer be copyrighted.

FACTS:
1. Plaintiff-appellant is a non-profit association of authors, composers and publishers duly
organized under the Corporation Law of the Philippines and registered with the SEC.
Said association is the owner of certain musical compositions among which are the
songs entitled: "Dahil Sa Iyo," "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."
2. On the other hand, defendant-appellee is the operator of a restaurant known as "Alex
Soda Foundation and Restaurant" where a combo with professional singers, hired to
play and sing musical compositions to entertain and amuse customers therein, were
 playing and singing the above-mentioned compositions without any license or
permission from the appellant to play or sing the same.
3. Accordingly, appellant demanded from the appellee payment of the necessary license
fee for the playing and singing of aforesaid compositions but the demand was ignored.
Hence, appellant filed a complaint with the lower court for infringement of copyright
against defendant-appellee for allowing the playing in defendant-appellee’s restaurant of
said songs copyrighted in the name of the former.
4. Filipino Society’s contention: the playing or singing of a musical composition is
universally accepted as performing the musical composition and that although the
customers do not pay for the music but only for the food and drink, still, the playing and
singing of copyrighted music in the soda fountain and restaurant of Tan for the
entertainment of the customers constitute performance for profit under the Copyright
Law. it anchors its claim on Section 3(c) of the Copyright Law which provides:
SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the
exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in
any manner or by any method whatever for profit or otherwise; if not reproduced
in copies for sale, to sell any manuscripts or any record whatsoever thereof;
5. Defendant-appellee, in his answer, countered that the complaint states no cause of
action. Although not denying the playing of said copyrighted compositions in his
establishment, appellee maintains that the mere singing and playing of songs and
popular tunes even if they are copyrighted do not constitute an infringement.and that
Petitioner already waived their right in favor of the general public when they allowed their
intellectual creations to become property of the public domain before applying for the
corresponding copyrights for the same

RTC: The lower court, finding for the defendant, dismissed the complaint.
CA: Plaintiff appealed to the Court of Appeals which as already stated certified the case to the
Supreme Court for adjudication on the legal question involved.

ISSUE: WON the playing and signing of musical compositions which have been copyrighted
under the provisions of the Copyright Law (Act 3134) inside the establishment of the defendant-
appellee constitute a public performance for profit within the meaning and contemplation of the
Copyright Law of the Philippines; and assuming that there were indeed public performances for
profit, whether or not appellee can be held liable therefor. No.

RULING (w/ DOCTRINES):

The court conceded that indeed there were "public performances for profit."

The word "perform" as used in the Act has been applied to "One who plays a musical
composition on a piano, thereby producing in the air sound waves which are heard as music ...
and if the instrument he plays on is a piano plus a broadcasting apparatus, so that waves are
thrown out, not only upon the air, but upon the other, then also he is performing the musical
composition." 

In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the
food and drinks and apparently not for listening to the music. As found by the trial court, the
music provided is for the purpose of entertaining and amusing the customers in order to make
the establishment more attractive and desirable. The expenses entailed in paying an
independent contractor (the combo) to play and perform the music are added to the overhead of
the restaurant which are either eventually charged in the price of the food and drinks or to the
overall total of additional income produced by the bigger volume of business which the
entertainment was programmed to attract. Hence, it is beyond question that the playing and
singing of the combo constituted performance for profit contemplated by the Copyright Law.
Therefore, Tan cannot be said to have infringed upon the Copyright Law. The musical
compositions in question had long become public property, and are therefore beyond the
protection of the Copyright Law.

Under Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated
September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated pursuant to Republic Act 165, an intellectual
creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within
the (60) days if made elsewhere, failure of which renders such creation public property.

If the general public has made use of the object sought to be copyrighted for thirty (30) days
prior to the copyright application the law deems the object to have been donated to the public
domain and the same can no longer be copyrighted.

DISPOSITIVE:
PREMISES CONSIDERED, the appealed decision of the Court of First Instance of Manila is
hereby AFFIRMED. SO ORDERED.
 19. ABS-CBN Corp.  vs. Felipe Gozon, et. al., G.R. No. 195956, March 11, 2015

CASE 19 (CANADA)

ABS-CBN Corp.  vs. Felipe Gozon, et. al.

G.R. No. 195956 | March 11, 2015 | Copyright

ABS-CBN CORPORATION vs. FELIPE GOZON, ET AL. (G.R. No. 195956,

March 11, 2015| LEONEN., J.) 

DOCTRINE: 

The Intellectual Property Code is clear about the rights afforded to

authors of various kinds of work. Under the Code, "works are protected by
the sole fact of their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose."These include
"[audio-visual works and cinematographic works and works produced by a
process analogous to cinematography or any process for making
audiovisual recordings. 

It is true that under Section 175 of the Intellectual Property Code,

"news of the day and other miscellaneous facts having the character of
mere items of press information" are considered unprotected subject
matter. 

However, the Code does not state that expression of the news of the
day, particularly when it underwent a creative process, is not entitled to
protection. 

FACTS: 

The instant case concerns the GMA-7 news coverage of the

homecoming of OFW and hostage victim: Angelo De La Cruz on July,
2004. He was kidnapped by Iraqi militants and as a condition for his
release was for the withdrawal of Filipino troops in Iraq. After withdrawal,
he was released and occasioned by his homecoming, GMA and with other
broadcast groups including ABS CBN conducted a live video coverage of
the arrival at the NAIA. ABS CBN a rival broadcast station allowed Reuters
to air footages if had taken under a special embargo agreement that it
would be only available for international customers. 

GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes,

and Manalastas are connected, “assigned and stationed news reporters
and technical men at the NAIA for its live broadcast and non-live news
coverage of the arrival of dela Cruz. GMA-7 subscribes to both Reuters and
Cable News Network (CNN). It received a live video feed of the coverage of
Angelo dela Cruz's arrival from Reuters. GMA-7 immediately carried the
live newsfeed in its program "Flash Report," together with its live broadcast.

ABS-CBN filed the Complaint for copyright infringement under

Sections 177 and 211 of the Intellectual Property Code. 

 The Prosecutor found probable cause to indict Dela Pena Reyes and
Manalastas for violation of IPC. 
Respondents filed the Petition for Review before the Department of
Justice. In the Resolution (Gonzalez Resolution) dated August 1, 2005,
Department of Justice Secretary Raul M. Gonzalez (Secretary Gonzalez)
ruled in favor of respondents and held that good faith may be raised as a
defense in the case. 

Department of Justice Acting Secretary Alberto C. Agra (Secretary

Agra) issued the Resolution (Agra Resolution) that reversed the Gonzalez
Resolution and found probable cause to charge Dela Peña-Reyes and
Manalastas for violation of the Intellectual Property Code. 

The Court of Appeals rendered the Decision granting the Petition and
reversing and setting aside the Agra Resolution. 

Respondents argue that ABS-CBN’s news footage of Angelo dela

Cruz’s arrival is not copyrightable or subject to protection because it is
deemed as “news”. There is no ingenuity or inventiveness added in the
said news footage. 
 The video footage of this “news” is not copyrightable by any legal
standard as facts of everyday life depicted in the news and items of press
information is part of the public domain. 

ISSUE: 

Whether or not the news coverage was in violation of the Intellectual

Property Code? 

RULING:

Petition must be granted. 

It is true that under Section 175 of the Intellectual Property Code,

“news of the day and other miscellaneous facts having the character of
mere items of press information” are considered unprotected subject
matter. 

However, the Code does not state that expression of the news of the
day, particularly when it underwent a creative process, is not entitled to
protection. P.D. No. 49, §2, in enumerating what is subject to copyright,
refers to finished works and not to concepts. 

The copyright does not extend to an idea, procedure, process,

system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such
work. 

News or the event itself is not copyrightable. However, an event can

be captured and presented in a specific medium. As recognized by this
court in Joaquin, television “involves a whole spectrum of visuals and
effects, video and audio.” News coverage in television involves framing
shots, using images, graphics, and sound effects. It involves creative
process and originality. Television news footage is an expression of the
news.

Respondents’ argument that the subject news footage is not

copyrightable is erroneous. The Court of Appeals, in its assailed Decision,
correctly recognized the existence of ABS-CBN’s copyright over the news
footage: Surely, private respondent has a copyright of its news coverage.
Seemingly, for airing said video feed, petitioner GMA is liable under the
provisions of the Intellectual Property Code, which was enacted purposely
to protect copyright owners from infringement.

WHEREFORE, the Petition is partially GRANTED. The Department

of Justice Resolution dated June 29, 2010 ordering the filing of the
Information is hereby REINSTATED as to respondents Grace Dela Pena-
Reyes and John Oliver T. Manalastas. Branch 93 of the Regional Trial
Court of Quezon City is directed to continue with the proceedings in
Criminal Case No. Q-04-131533.
 20. Republic vs. Heirs of Tupaz IV, G.R. No. 197335, September 7, 2020
 
Case #20 (Pizarro)
Republic v. Heirs of Tupaz IV
G.R. No 197335 | September 7, 2020 | Intellectual Property Law - Copyright
 
PETITIONER(S): Rpublic of the Philippines
RESPONDENT(S): Heirs of Tupaz IV

MAIN DOCTRINE (Based on the syllabus):

·  The copyright of a derivative work solely belongs to the person who fixes an idea
into a tangible medium of expression. The law on copyright only protects the
expression of an idea, not the idea itself. Thus, one who merely contributes
concepts or ideas is not deemed an author.
 
FACTS:
1. In 1996, the PNP Directorate for Logistics Support Service authorized the
procurement of new uniforms and equipment for the PNP, including brand new
cap devices and badges.
a. The present PNP cap device and badge have the following distinctive
features: (1) a native shield, depicted as a vertically elongated hexagon;
(2) a sword-and-shield wielding warrior purporting to be Lapu-Lapu; (3)
eight (8) rays of the sun representing the first eight (8) provinces to revolt
against Spain; (4) three (3) pentagram stars representing Luzon, Visayas,
and Mindanao; (5) laurel leaves; and (6) the words "service, honor, and
justice."
b. The designs of the present PNP cap device and badge were previously
used by the Philippine Constabulary in its coat of arms.
2. The PNP Directorate on Research and Development, Clothing, and Criminalistics
Equipment Division collaborated with Jose C. Tupaz, IV (Tupaz) to create the
new designs of the PNP cap device and badge. 
a. Tupaz volunteered and rendered his services for free. Under their
agreement, Tupaz will sketch the new designs and produce samples or
prototypes. The samples will then be presented before the PNP's Uniform
and Equipment Standardization Board for approval.

3. Upon approval of the new designs, the PNP conducted a public bidding for the
procurement of the new PNP cap devices and badges. Among those who
 participated was El Oro Industries, Inc. (El Oro). Tupaz was El Oro's then-
president and chair of the board of directors.

a. El Oro submitted the second highest bid price. After the tabulation of the
bids, El Oro presented before the PNP's Bids and Awards Committee
certificates of copyright registration over the PNP cap device and badge
issued in favor of Tupaz. Hence, the contract was not awarded to the
winning bidder, but to El Oro.
4. Police Director Jose S. Andaya, head of the PNP Directorate on Research and
Development, Clothing, and Criminalistics Equipment Division, wrote the National
Library requesting the cancellation of the certificates of copyright registration of
the PNP cap device and badge. However, the National Library did not act on the
request.
5. Subsequently, the Republic of the Philippines, through the PNP, filed a
Complaint before the Quezon City Regional Trial Court for the cancellation of
Tupaz's certificates of copyright registration, with a prayer for the issuance of a
writ of preliminary injunction.
6. Argument of Petitioner - argues that derivative works are entitled to protection
under Section 8 of Presidential Decree No. 49 only if they were "produced with
the consent of the creator or proprietor of the original works[.]" However, the
42

Court of Appeals failed to establish the true author of the pre-existing designs.
This is relevant to determine who can give consent. Moreover, petitioner
maintains that there is no substantial distinction between the new designs and
the pre-existing designs. The distinctive features of the pre-existing designs were
exactly adopted in the new designs. The differences pointed out by the Court of
Appeals are only trivial distinctions. Due to the absence of distinguishable non-
trivial variations, the new designs cannot be copyrighted as derivative or new
works under Section 8 of Presidential Decree No. 49.
 
 
7. Argument of Respondent - alleged that El Oro is the exclusive and official
engraver of Philippine heraldry items since 1953. They claimed that Tupaz's
ancestor, Jose T. Tupaz, Jr., developed the original designs on which the present
designs of the PNP cap device and badge were based. Hence, El Oro owned the
copyright over the new designs and was allegedly the only qualified bidder.
 
RTC: Ruled in favor of the Republic of the Philippines. RTC declared that the new
designs of the PNP cap device and badge were created by the PNP Directorate for
Research and Development, Clothing, and Criminalistics Equipment Division. Under
Section 176.1 of Republic Act No. 8293, the new designs are works of the Philippine
government, the copyright of which may not be registered in favor of private entities.
 
CA: REVERSED the Regional Trial Court's ruling and lifted the writ of prohibitory
injunction issued against El Oro, Tupaz, and their successors-in-interest. The Court of
Appeals classified the new designs of the PNP cap device and badge as derivative
works under Section 2(P) of Presidential Decree No. 49. According to the Court of
Appeals, a derivative work is entitled to copyright protection, if produced with the
 consent of the original work's author, and if it has a "distinguishable non-trivial variation"
from the original. The Court of Appeals ruled that both requirements were present.
 
ISSUE: W/N the new designs of the PNP cap device and badge are entitled to
protection as derivative works under Sec 8 of PD No. 49 - NO
 
W/N the PNP, as contributor of ideas, should be deemed as the author of the new
designs- NO
 
RULING (w/ DOCTRINES):
1. Copyright is "the right granted by statute to the proprietor of an intellectual production to
its exclusive use and enjoyment[.]" It "may be obtained and enjoyed only with respect to
the subjects and by the persons, and on terms and conditions specified in the statute."
Copyright is a purely statutory right. Only classes of works falling under the statutory
enumeration are entitled to protection.
Copyright has two rationales: the economic benefit and social benefit. The economic
benefit is reaped by the author from his work while the social benefit manifests when it
creates impetus for individuals to be creative. Copyright, like other intellectual property
rights, grants legal protection by prohibiting the unauthorized reproduction of the
author's work. It "create[s] a temporary monopoly on varying types of knowledge,
allowing their owners to restrict and even prevent, other from using that knowledge." By
eliminating fear of other's appropriation and exploitation of an author's work, intellectual
creation is incentivized.
When the concept of copyright emerged, it was primarily concerned with the
advancement of a common social good and not so much about the author's rights.
Copyright statutes were initially crafted for the reading public and to encourage
education through the production of books.
In 1972, Presidential Decree No. 49, otherwise known as the Decree on the Protection
of Intellectual Property, was passed, superseding Act No. 3134. Nevertheless,
Presidential Decree No. 49 was heavily modeled after Act No. 3134.
Under both laws, the copyright vests upon the sole fact of creation. Presidential Decree
No. 49 requires the registration and deposit of some works with the National Library.
Noncompliance with this rule "does not deprive the copyright owner of the right to sue
for infringement." However, it limits the remedies of copyright owners, denies them of
the right to recover damages, and subjects them to certain sanctions.  Republic Act No.
8293 retains the registration and deposit requirement but only for the purpose of
"completing the records of the National Library and the Supreme Court Library[.]" The
present law "does not require registration of the work to fully recover in an infringement
suit."
Broadly defined, a derivative work refers to a work that is "based on...one or more
already existing works." The author of a derivative work borrows expressive content
from an existing work and transforms it into another work. Through this process, the
author of a derivative work does not simply copy the existing work but creates an
original work entitled to a separate copyright.  Although the expression in the derivative
work is "intermingled with the expression from the underlying work," the derivative
 author contributes original expression to the new work making it distinct from the
underlying work.
Derivative works right is inseparable from the adaptation right of the original work's
author. Adaptation right is included in the bundle of rights granted to a recognized
author or owner of an intellectual property.
The Regional Trial Court and the Court of Appeals failed to determine who authored the
pre-existing designs. Respondents assert that they owned both designs because their
ancestor, Jose T. Tupaz, Jr., is the author of the original designs of the PNP cap device
and badge. On the other hand, petitioner claims that it owned the designs. However,
this would be of little or of no consequence considering that the parties asserting
ownership over the pre-existing designs are the very same ones who collaborated to
create the new designs. It would have been a different matter if a third party also
claimed ownership over the pre-existing designs. What is clear is that both parties
agreed to create the new designs from the pre-existing designs.
Since the creator of the new designs must borrow expressive content from the pre-
existing designs, the new designs would obviously incorporate elements of the original
material. In this case, the borrowed elements of the original material are the native
shield, the eight (8) rays of the sun, three (3) stars' laurel leaves' and the words
"service," "honor," and "Justice."
The test of whether the new designs are copyrightable independently from the pre-
existing works is the presence of originality in the derivative work. The new work,
although similar to the pre-existing work in some of its expressive elements, must be
substantially distinct from the pre-existing work.
2. Under Section 2 of Presidential Decree No. 49, the copyright belongs to the creator of
the work or the creator's heirs or assigns. If the work is created by two (2) or more
persons, they shall own the copyright jointly. The same principles are embodied in
Sections 178.1 and 178.2 of Republic Act No. 8293.
Unlike Republic Act No. 8293, which defines an author as the "natural person who has
created the work[,]" Presidential Decree No. 49 does not provide a definition of an
author or a creator. Despite the law's silence, an author, for purposes of copyright
ownership, should be deemed as one who fixes an abstract idea into something
tangible.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement), which took effect in the Philippines on January 1, 1995 states that
"copyright protection shall extend to expressions and not to ideas, procedures, methods
of operation[,] or mathematical concepts as such."
More commonly referred to as the "idea/expression dichotomy," the principle in
copyright protection is that "ideas are not protectable" and only expressions of those
ideas may be subject to copyright protection.
Although a creator or author is not expressly defined under Pres. Decree No. 49, it may
be logically inferred—based on the scope of copyrightable works—that a creator or an
author pertains to someone who transforms an abstract idea into a tangible form of
expression through the application of skill or labor.
To create a thing that may be entitled to a copyright requires something more than the
giving of ideas and concepts. Ideas should translate to or transition into something that
is tangible or physical. In other words, something capable of being perceived must be
produced. To illustrate, an image that remains in a person's mind would not be entitled
to copyright protection unless he or she draws it on a piece of paper or paints the image
on canvass.
In this case, it is undisputed that petitioner and respondent Tupaz collaborated to
develop the new designs of the PNP cap device and badge. However, the extent of
petitioner's participation in developing the new designs of the PNP cap device and
badge was limited to instructing respondent Tupaz on how the designs should appear in
general and what specific elements should be incorporated. Petitioner merely supplied
ideas and concepts. It was respondent Tupaz who used his skill and labor to concretize
what petitioner had envisioned. Therefore, petitioner cannot be considered as an author
of the new designs either in whole or in part.
Petitioner is also not entitled to own the copyright under any of the exceptions in Section
6 of Presidential Decree No. 49. The first exception refers to works created in the
course of the employment of the creator. Section 6 of Presidential Decree No. 49 states:
If the work in which copyright subsists was made during and in the course of the

employment of the creator, the copyright shall belong to:

(a) The employee, if the creation of the object of copyright is not a part of his regular
duties even if the employee uses the time, facilities and materials of the employer.

(b) The employer, if the work is the result of the performance of his regularly assigned
duties, unless there is an agreement, express or implied to the contrary.

Section 178.3 of Republic Act No. 8293, retains the rule regarding works created in the
course of the employment.
The second exception refers to commissioned works. The creator of the work should be
paid valuable consideration for the work made. Section 6 of Presidential Decree No. 49
states that the copyright of a commissioned work belongs in joint ownership to the
creator and the person who commissioned the work. The parties, however, can agree
that the ownership of the copyright shall pertain to either of them.
The rule regarding commissioned works is modified under Republic Act No. 8293.
Parties no longer have joint ownership over the copyright. Under Section 178.4 of
Republic Act No. 8293, the copyright of a commissioned work generally belongs to the
creator. However, the parties may agree in writing to transfer the copyright to the person
who commissioned the work.
In the present case, petitioner is not entitled to own the copyright because the designs
were neither commissioned works nor works created in the course of respondent
Tupaz's employment. First, although the parties verbally agreed to work together,
petitioner did not hire respondent Tupaz's services for a fee or a commission.
Respondent Tupaz rendered his services voluntarily. In other words, the new designs
do not qualify as commissioned works. Second, there was no employer-employee
relationship between the parties at the time the designs were made.
Petitioner could have avoided this dispute had it entered into a contract that clearly and
expressly spelled out the extent of each party's rights over the new designs, as
Presidential Decree No. 49 allows the transfer or assignment of the work and its
copyright to other persons by gift, inheritance, or otherwise.
 
DISPOSITIVE:
WHEREFORE, Petition is for Review DENIED. CA is AFFIRMED.
 
Copyright Infringement

21.  Pearl & Dean vs. Shoemart, Inc. et al. (GR No. 148222) (Aug. 15, 2003) 
22.  Columbia Pictures vs. Court of Appeals   261 SCRA 144 (1996)
23.  NBI- Microsoft Corp. vs. Hwang, G.R. NO. 147043, June 21, 2005

24.  Microsoft Corporation vs. Rolando D. Manansala, G.R. No. 166391, October 21, 2015
Case #24 (MAGLAQUI)
Microsoft Corporation vs. Rolando D. Manansala
G.R. No. 166391 | October 21, 2015 | COPYRIGHT INFRINGEMENT
Ponente: Justice Bersamin
 
PETITIONER(S): Microsoft Corporation
RESPONDENT(S): Rolando D. Manansala

MAIN DOCTRINE (Based on the syllabus):

 A literal reading of a legislative act which should be avoided if the language of the law
can be given a reasonable application consistent with the legislative purpose.

 The mere sale of the illicit copies of the software programs was enough by itself to show
the existence of probable cause for copyright infringement. There was no need for the
petitioner to still prove who copied, replicated, or reproduced the software programs.
 
FACTS:
1.  Petitioner (Microsoft Corporation) is the copyright and trademark owner of all rights
relating to all versions and editions of Microsoft software. Private Respondent-Rolando
Manansala is doing business under the name of DATAMAN TRADING COMPANY and/or
COMIC ALLEY with business address at 3 Floor, University Mall Building, Tail Avc,
rd

Manila.
 
2.  Private Respondent Manansala, without authority from petitioner, was engaged in
distributing and selling Microsoft computer software programs.
 
3. On November 3, 1997, Mr. John Benedict A. Sacriz, a private investigator accompanied by
an agent from the National Bureau of Investigation (NBI) was able to purchase six (6)
CD-ROMs containing various computer programs belonging to petitioner. As a result of
the test-purchase, the agent from the NBI applied for a search warrant to search the
premises and yielded several illegal copies of Microsoft programs.

4. Microsoft filed an Affidavit-Complaint in the DOJ based on the results of the search and
seizure operation conducted on Manansala’s premises. The DOJ dismissed the Affidavit-
Complaint stating that ‘The evidence is extant in the records to show that respondent is
 selling Microsoft computer software programs bearing the copyrights and trademarks
owned by Microsoft Corporation. There is, however, no proof that respondent was the
one who printed or copied the products of complainant for sale in his store.

5. Microsoft filed a Motion for Partial Reconsideration arguing that printing or copying is not
essential in the crime of copyright infringement under Sec. 29 of PD No. 49.
 
DOJ: Denied Petition.
CA: Affirmed decision of DOJ. The CA stated that all the acts mentioned in Sec. 5 (a) of PD No.
49 should be committed because of the word ‘and’. Thus, the accused should be the one who
print, reprint, publish, copy, distribute, multiply, sell, and make photographs, photo-engravings,
and pictorial illustrations of the works. Sale alone will not constitute infringement of copyright. 
 
ISSUE: W/N printing or copying was not essential in the commission of the crime of copyright
infringement under Section 29 of Presidential Decree No. 49; hence, contrary to the holding of
the DOJ, as upheld by the CA, the mere selling of pirated computer software constituted
copyright infringement. - YES
 
RULING (w/ DOCTRINES): Printing or copying was not essential in the commission of the
crime of copyright infringement under Sec. 29 of PD No. 49.

Section 5. Copyright shall consist in the exclusive right;

A. To print, reprint, publish, copy, distribute, multiply, sell, and make photographs, photo-
engravings, and pictorial illustrations of the works;

A literal reading of a legislative act which should be avoided if the language of the law can be
given a reasonable application consistent with the legislative purpose.

To accept the CA’s reading and interpretation is to accept absurd results because the violations
listed in Sec. 5(a) of PD No. 49 cannot be carried out on all of the classes of works enumerated
in Sec. 2 of PD No. 49.

Also, PD No. 49 thereby already acknowledge the existence of computer programs as works or
creations protected by copyright. To hold that the legislative intent was to require that the
computer programs be first photographed, photo-engraved, or pictorially illustrated as a
condition for the commission of copyright infringement invites ridicule.

Thus, the mere sale of the illicit copies of the software programs was enough by itself to show
the existence of probable cause for copyright infringement. There was no need for the petitioner
to still prove who copied, replicated, or reproduced the software programs.
 
Petition was granted.

DISPOSITIVE:
WHEREFORE, the Court GRANTS the petition for review on certiorari; REVERSES and SETS
ASIDE the decision promulgated on February 27, 2004 in C.A.-G.R. SP No. 76402; DIRECTS
the Department of Justice to render the proper resolution to charge respondent ROLANDO D.
MANANSALA and/or MEL MANANSALA, doing business as DATAMAN TRADING
COMPANY and/or COMIC ALLEY in accordance with this decision; and ORDERS the
respondents to pay the costs of suit.
Copyright vs. Trade or Service Name
  
25. Juan v. Juan, G.R. No. 221732, August 23, 2017