1. Sy v. Court of Appeals, G.R. No. L-37494.

March 30, 1982 properly charge the offense of infringement of trademark, for what was expressly
charged was unfair competition. In proceeding in accordance with the above quoted
FACTS: provisions of the Rules of Court, the trial court evidently felt it cannot properly
An information for unfair competition was filed against petitioner Manuel Sy y Lim. convict the accused of infringement of trademark, although it found evidence
Alleging among others that he induced the public to believe that the JETMATIC sufficient to justify filing the proper information for said offense. But, undoubtedly,
DRAGON HAND pumps, with inferior quality he offered are those of the Sea the court found it not proper to acquit the accused of said offense. Hence there can be
Commercial Company, Incorporated (SCCI), to the damage and prejudice of the said no double jeopardy as to the offense charged in the second information on the ground
SCCI and the general public.” After trial, the trial court rendered judgment: the of a prior acquittal for the same offense.
prosecution having failed to prove that the accused gave his goods the general
appearance of the goods of another manufacturer or dealer, this Court finds him not
guilty of the same and acquits him of the charge of violating Article 189, paragraph 1
of the Revised Penal Code. However, the Court finds that the evidence submitted in
this case, show prima facie that the accused has violated Article 188, No. 2, of the
Revised Penal Code and the Court, therefore, orders the Fiscal to prepare the
corresponding information charging the accused Manuel Sy y Lim with violation of
Article 188, No. 2 of the Revised Penal Code and to file the same within five (5) days
from today. The respondent Fiscal filed the second information as ordered by the trial
court, an infringement of trade-mark. To the above information, petitioner filed a
motion to quash alleging that it did not conform to the prescribed form; that the Court
had no jurisdiction over the case because no preliminary investigation was conducted,
thereby depriving accused of due process; and that the new information would place
accused in double jeopardy. On appeal, the Court of Appeals sustained the decision
of the trial court. Hence, this petition.
ISSUE:
Whether or not petitioner would be placed in double jeopardy by the filing of the
second information, trademark infringement, after being acquitted from unfair
competition.
RULING:
No. Where accused was charged with unfair competition, but the trial court, being of
the opinion that the crime is infringement of trademark, neither acquittal nor found
the accused guilty, but ordered the filing of a new and proper information, there can
be no double jeopardy. In the opinion of the trial court, the first information did not
 R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over
violations of intellectual property rights to the Regional Trial Court. They should
therefore prevail over R.A. No. 7691, which is a general law
Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the
2. G.R. Nos. 160054-55, July 21, 2004 criminal penalty for infringement of registered marks, unfair competition, false
designation of origin and false description or representation, is imprisonment from 2
MANOLO P. SAMSON, petitioner, vs. HON. REYNALDO B. DAWAY, in his to 5 years and a fine ranging from Fifty Thousand Pesos to Two Hundred Thousand
capacity as Presiding Judge, Regional Trial Court of Quezon City, Branch 90, Pesos,
PEOPLE OF THE PHILIPPINES and CATERPILLAR, INC., respondents.
Corollarily, Section 163 of the same Code states that actions (including criminal and
FACTS: civil) under Sections 150, 155, 164, 166, 167, 168 and 169 shall be brought before
On March 7, 2002, two informations for unfair competition under Section 168.3 (a), the proper courts with appropriate jurisdiction under existing laws. The existing law
in relation to Section 170, of the Intellectual Property Code (Republic Act No. 8293), referred to in the foregoing provision is Section 27 of R.A. No. 166 (The Trademark
were filed against petitioner Samson, the registered owner of ITTI Shoes. The Law) which provides that jurisdiction over cases for infringement of registered
unlawfully and feloniously distribute, sell and/or offer for sale CATERPILLAR marks, unfair competition, false designation of origin and false description or
products such as footwear, garments, clothing, bags, accessories and paraphernalia representation, is lodged with the Court of First Instance (now Regional Trial Court)
which are closely identical to and/or colorable imitations of the authentic Caterpillar
products and likewise using trademarks, symbols and/or designs as would cause
confusion, mistake or deception on the part of the buying public to the damage and
prejudice of CATERPILLAR, INC.
Petitioner filed a twin motion to quash the information and motion for
reconsideration of the order denying motion to suspend, challenging the jurisdiction
of the trial court over the offense charged. He contended that since under Section 170
of
R.A. No. 8293, the penalty of imprisonment for unfair competition does not exceed
six years, the offense is cognizable by the Municipal Trial Courts and not by the
Regional Trial Court, per R.A. No. 7691.
ISSUE: Which court has jurisdiction over criminal and civil cases for violation
of intellectual property rights?
RULING:
 A trade name is any individual name or surname, firm name, device or word used
by manufacturers, industrialists, merchants and others to Identify their
businesses, vocations or occupations. As the trade name refers to the business
and its goodwill ... the trademark refers to the goods." The ownership of a
trademark or tradename is a property right which the owner is entitled to protect
"since there is damage to him from confusion or reputation or goodwill in the
mind of the public as well as from confusion of goods. The modern trend is to
give emphasis to the unfairness of the acts and to classify and treat the issue as
fraud
3. GR No. L27906, January 8, 1987 From a cursory appreciation of the Converse Rubber’s corporate name
“CONVERSE RUBBER CORPORATION” it is evident that the word
CONVERSE RUBBER CORPORATION v. UNIVERSAL RUBBER
“CONVERSE” is the dominant word which identifies Converse Rubber from
PRODUCTS
other corporations engaged in similar business. Universal Rubber, in the
FACTS: stipulation of facts, admitted Converse Rubber’s existence since 1946 as a duly
organized foreign corporation engaged in the manufacture of rubber shoes. This
Converse Rubber Corporation is an American corporation while Universal admission necessarily betrays its knowledge of the reputation and business of
Rubber Products, Inc. is a corporation licensed to do business in the country. petitioner even before it applied for registration of the trademark in question.
Converse has been operating since 1946. Universal Rubber has been operating Knowing, therefore, that the word “CONVERSE” belongs to and is being used
since 1963. Later, Universal Rubber filed an application for the trademark by Converse Rubber, and is in fact the dominant word in its corporate name,
“Universal Converse and Device” before the Philippine Patent Office. Converse Universal Rubber has no right to appropriate the same for use on its products
Rubber opposed the application as it averred that the word “Converse” which is which are similar to those being produced by Converse Rubber.
part of its corporate name cannot be granted as part of Universal Rubber’s
trademark or trade name because it will likely deceive purchasers of Universal
Rubber’s products as it may be mistaken by unwary customers to be
The Director of Patents is wrong in ruling that Converse Rubber cannot sue here.
manufactured by Converse Rubber. The Director of Patents denied the opposition
A foreign corporation which has never done any business in the Philippines and
by Converse Rubber on the ground that Converse Rubber has no standing to sue
which is unlicensed and unregistered to do business here, but is widely and
in the Philippines because it is not registered here.
favorably known in the Philippines through the use therein of its products bearing
its corporate and tradename, has a legal right to maintain an action in the
Philippines to restrain the residents and inhabitants thereof from organizing a
ISSUE: Whether or not the decision of the Director of Patents is correct. corporation therein bearing the same name as the foreign corporation, when it
appears that they have personal knowledge of the existence of such a foreign
corporation, and it is apparent that the purpose of the proposed domestic
HELD: No. corporation is to deal and trade in the same goods as those of the foreign
 corporation. This is in keeping with the Convention of the Union of Paris for the Standard Philips refused to amend its Articles of Incorporation. PEBV filed with the
Protection of Industrial Property to which the Philippines became a party in 1965. SECa Petition praying for the issuance of a Writ of Preliminary Injunction claiming
that the use of the word “PHILIPS” amounts to infringement and clear violation of
PEBV’s exclusive right to use the same considering that both parties engage in the
same business. The SEC Hearing Officer ruled against the issuance of the writ as
there is no confusing similarity between PEBV’s and Standard Philips' corporate
names as those of the PEBV contain at least two words different from that of the
Standard Philips. SEC en banc affirmed the dismissal. The CA dismissed PEBV’s
petition ruling that Standard Philips' products consisting of chain rollers, belts,
bearings and cutting saw are unrelated and non-competing with PEBV’s products i.e.
electrical lamps. Hence, this petition.
ISSUE: Should Standard Philips change its corporate name given that PEBV
acquired exclusive right over the word “PHILIPS”, hence, there is confusing
similarity, if not infringement, between the two corporate names?

4. PHILIPPS EXPORT v. CA
FACTS: RULING: YES. As early as Western Equipment and Supply Co. v. Reyes (1927), the
Court declared that a corporation's right to use its corporate and trade name is a
Philips Export B.V. (PEBV), a foreign corporation organized under the laws of the property right, a right in rem, which it may assert and protect against the world in the
Netherlands, although not engaged in business here, is the registered owner of the same manner as it may protect its tangible property, real or personal, against trespass
trademarks PHILIPS and PHILIPS SHIELD EMBLEM. Philips Electrical Lamps, or conversion. It is regarded, to a certain extent, as a property right and one which
Inc. (Philips Electrical, for brevity) and Philips Industrial Developments, Inc. (Philips cannot be impaired or defeated by subsequent appropriation by another corporation in
Industrial, for short), authorized users of the trademarks PHILIPS and PHILIPS the same field.
SHIELD EMBLEM, were incorporated on 29 August 1956 and 25 May 1956,
respectively. All such corporations belong to the PHILIPS Group of Companies. Sec. 18 of the Corporation Code cannot be any clearer. To come within its scope, two
requisites must be proven, namely:
Standard Philips Corporation (Standard Philips), on the other hand, was issued a
Certificate of Registration by SEC on 19 May 1982. PEBV filed a letter complaint (1) that the complainant corporation acquired a prior right over the use of such
with the SEC asking for the cancellation of the word "PHILIPS" from Standard corporate name; and
Philips’ corporate name in view of the prior registration with the Bureau of Patents of
(2) the proposed name is either: (a) identical; or (b) deceptively or confusingly
the trademark "PHILIPS" and the logo "PHILIPS SHIELD EMBLEM" in the name
similar to that of any existing corporation or to any other name already protected by
of PEBV and the previous registration of Philips Electrical and Philips Industrial with
law; or (c) patently deceptive, confusing or contrary to existing law.
the SEC.
The right to the exclusive use of a corporate name with freedom from infringement is, "STANDARD", different from that of PEBV inasmuch as the inclusion of the
by similarity is determined by priority of adoption. In this regard, there is no doubt term "Corporation" or "Corp." merely serves the Purpose of distinguishing the
with respect to PEBV’s prior adoption of' the name ''PHILIPS" as part of its corporation from partnerships and other business organizations.
corporate name. Philips Electrical and Philips Industrial were incorporated on 29
August 1956 and 25 May 1956, respectively, while Standard Philips was issued a The fact that there are other companies engaged in other lines of business using the
Certificate of Registration on 12 April 1982, 26 years later. word "PHILIPS" as part of their corporate names is no defense and does not warrant
the use by Standard Philips of such word which constitutes an essential feature of
In determining the existence of confusing similarity in corporate names, the test is PEBV’s corporate name previously adopted and registered andhaving acquired the
whether the similarity is such as to mislead a person, using ordinary care and status of a well-known mark in the Philippines and internationally as well.
discrimination. In so doing, the Court must look to the record as well as the names
themselves. While the corporate names of PEBV and Standard Philips are not WHEREFORE, the Decision of the Court of Appeals dated 31 July 1990, and its
identical, a reading of PEBV's corporate names inevitably leads one to conclude that Resolution dated 20 November 1990, are SET ASIDE and a new one entered
"PHILIPS" is, indeed, the dominant word in that all the companies affiliated or ENJOINING private respondent from using "PHILIPS" as a feature of its corporate
associated with the principal corporation, PEBV, are known in the Philippines and name, and ORDERING the Securities and Exchange Commission to amend private
abroad as the PHILIPS Group of Companies. respondent's Articles of Incorporation by deleting the word PHILIPS from the
corporate name of private respondent.
Given Standard Philips’ primary purpose (i.e. …electrical wiring devices, electrical
component parts, and/or complement…), nothing could prevent it from dealing in the
same line of business of electrical devices, products or supplies which fall under its
primary purposes. Besides, there is showing that Standard Philips not only
manufactured and sold ballasts for fluorescent lamps with their corporate name
printed thereon but also advertised the same as, among others, Standard Philips. 5. ARMCO STEEL CORPORATION v. SEC.
Standard Philips’ choice of "PHILIPS" as part of its corporate name [STANDARD
PHILIPS CORPORATION] tends to show Standard Philips’ intention to ride on the FACTS:
popularity and established goodwill of said PEBV’s business throughout the world.
On July 1, 1965 ARMCO Steel Corporation, a corporation organized in Ohio,
The subsequent appropriator of the name or one confusingly similar thereto usually
U.S.A., hereinafter called ARMCO-OHIO, obtained from the Philippine Patent
seeks an unfair advantage, a free ride of another's goodwill.
Office, Certificate of Registration No. 11750 for its trademark consisting of the
PHILIPS is a trademark or trade name which was registered as far back as 1922. word" ARMCO", pursuant to trademark rules, the petitioner filed with the said patent
PEBV, therefore, have the exclusive right to its use which must be free from any office an "Affidavit of Use" for said trademark, which was subsequently accepted
infringement by similarity. Such principle proceeds upon the theory that it is a fraud and for which the Patent.
on the corporation which has acquired a right to that name and perhaps carried on its
ARMCO Marsteel-Alloy Corporation was also incorporated on July 11, 1972 under
business thereunder, that another should attempt to use the same name, or the same
its original name Marsteel Alloy Company, Inc. but on March 28, 1973 its name was
name with a slight variation in such a way as to induce persons to deal with it in the
changed to ARMCO-Marsteel Alloy Corporation hereinafter called ARMCO-
belief that they are dealing with the corporation which has given a reputation to the
Marsteel, by amendment of its Articles of Incorporation after the ARMCO-Ohio
name. Notably, too, Standard Philips’ name actually contains only a single word, that
purchased 40% of its capital stock. Both said corporations are engaged in the An appeal was interposed by the respondent to the SEC en banc. The Commission en
manufacture of steel products. banc in an order of December 14, 1979 dismissed the appeal for lack of merit.
On the other hand ARMCO Steel Corporation was incorporated in the Philippines on ISSUE:
April 25, 1973, hereinafter called ARMCO-Philippines.
WHETHER OR NOT SHOULD AMCRO PHILIPPINES SHOULD CHANGE ITS
ARMCO-Ohio and ARMCO-Marsteel then filed a petition in the Securities and CORPORATENAME PERSUANT TO SECS ORDER
Exchange Commission (SEC) to compel ARMCO-Philippines to change its corporate
name on the ground that it is very similar, if not exactly the same as the name of one RULING:
of the petitioners. In due course an order was issued by the SEC on February14, 1975 YES.The order of the public respondent SEC of February 14, 1975 which has long
granting the petition, the dispositive part of which reads as follows: become final and executory clearly spells out that petitioner must "take out
ARMCO STEEL CORPORATION, is hereby ordered to take out 'ARMCO' ARMCOand substitute another word in lieu thereof in its corporate name by
and substitute another word in lieu thereof in its corporate name by amending amending the articles of incorporation to that effect, ... " Far from complying with
the articles of incorporation to that effect. said order petitioner amended its corporate name into ARMCO Structures, Inc., and
secured its approval by the SEC on March 22, 1976.
A motion for reconsideration of the said order was filed by said respondent on but
this was denied. The Order of February 14, 1975, cannot but be clearer than what it purports to
require or demand from respondent. Under in no distinct terms, it enjoins the removal
On March 22, 1976 said respondent amended its articles of incorporation by or deletion of the word 'Armco' from respondent's corporate name, which was not so
changing its name to "ARMCO structures, Inc." which was filed with and approved complied with. The Commission, therefore, cannot give its imprimatur to the new
by the SEC. corporate name because there was no compliance at all.
Nevertheless, in an order of January 6, 1977, the SEC issued an order requiring The fact that the Securities and Exchange Commission issued its certificate of filing
respondent, its directors and officers to comply with the aforesaid order of the of amended articles of incorporation on March 22, 1976, is nothing but an illusory
Commission of February 14, 1975 within ten (10) days from notice thereof. approval of the change of corporate name and a self-induced protection from the
Commission to further exact compliance of the Order of February 14, 1975. Craftily,
A manifestation and motion was filed by respondent informing SEC that it had the Securities and Exchange Commission and/or its administrative personnel were
already changed its corporate name with the approval of the SEC to ARMCO made to issue such certificate during its unguarded moment.
Structures, Inc.
Verily, the certificate could not have been issued were it not for such lapses or had
Petitioners then filed a comment to said manifestation alleging that the change of respondent been in good faith by making the proper disclosures of the circumstances
name of said respondent was not done in good faith and is not in accordance with the which led it to amend its articles of incorporation.
order of the Commission of February 14, 1975 so that drastic action should betaken
against the respondent and its officers. It is indisputable that ARMCO-STEEL-OHIO, having patented the term 'Armco' as
part of its trademark on its steel products, is entitled to protection in the use thereof in
SEC thus said respondent, its directors, and officers were ordered within ten (10)days the Philippines. The term "Armco" is now being used on the products being
from notice to comply with the order of February 14, 1975. manufactured and sold in this country by Armco-Marsteel by virtue of its tie-up with
ARMCO-STEEL-OHIO. Clearly, the two companies have the right to the exclusive Company imports this equipment. Such equipment, and in turn the trademark of
useand enjoyment of said term. Western Electric Company has acquired high trade reputation throughout the world.
ARMCO STEEL-PHILIPPINES, has not only an Identical name but also a similar Despite this, Herman et. al. incorporated under the name Western Electric Company
line of business, as shown above, as that of ARMCO STEEL- OHIO. People who are Inc. Philippine Telephone and Telegraph Co. Filed a protest to the registration of the
buying and using products bearing the trademark "Armco" might be led to believe proposed corporation. Fidel A. Reyes, Director of the Bureau of Commerce and
that such products are manufactured by the respondent, when in fact, they might Industry, overruled the protest an issued a certificate of incorporation in favor of
actually be produced by the petitioners. Western Electric Company, Inc, which to avoid confusion, I will refer to as Herman.
RTC ruled in favor of the actual Western Equipment. Hence this appeal.
Thus, the goodwill that should grow and inure to the benefit of petitioners could be
impaired and prejudiced by the continued use of the same term by the respondent. ISSUE:
Obviously, the petition for review is designed to further delay if not simply evade 1. WON a foreign corporation which has never done business in the Philippines, and
compliance with the said final and executory SEC order. Petitioner also seeks a which is unlicensed and unregistered therein, can maintain an action to restrain
review of the orders of execution of the SEC of the said February 14, 1975 order. An residents and inhabitants of the Philippine Islands from organizing a corporation
order or resolution granting execution of the final judgment cannot be appealed therein bearing the name of such foreign corporation. (Yes)
otherwise there will be no end to the litigation.
2. WON a foreign corporation has a legal right to restrain the Director of Bureau of
Commerce and Industry from exercising his discretion.(Yes)
RULING:
1. The sole purpose of the action is to protect its reputation, its corporate name, its
goodwill which it has established. The rights to use the corporate and trade name is a
property right, a right in rem, which it may assert and protect against all the world,
even in jurisdictions where it does not transact business, just the same as it may
protect its tangible property, real or personal, against trespass or conversion. Since it
6. WESTERN EQUIPMENT & SUPPLY CO. v. REYES is the trade and not the mark that is to be protected, a trademark acknowledges no
FACTS: territorial boundaries, but extends to every market where the traders goods have
become known and identified by the use of the mark. Diversion of trade is really the
Western Equipment and Supply Company, a Nevada Corporation licensed to do fundamental thing here, and if diversion of trade be accomplished by any means
business in the Philippines, filed a case against Henry Herman, Peter O Brien, which are unfair, the aggrieved party is entitled to relief.
Manuel Diaz, Felix Mapoy and Artemio Zamora for unfair competition, done by
incorporating under the name Western Electric Company, Inc. 2. The Directors discretion is subject to review. If it was correct, it will be upheld. If
it is incorrect, it will be reversed by the court. It is apparent here that the purpose of
Western Electric Company, Inc. is a New York corporation which manufactures Herman in incorporating under the name Western Electric Company, Inc, was to
electrical and telephone apparatuses and supplies. Western Equipment and Supply
unfairly and unjustly compete with the real Western Electric Company, Inc. in QUISUMBING, J.:
articles which are manufactured and bear the name of the latter.
FACTS:
Herman et al are actually asking the Government to permit them to pirate the name of
the Western Electric Company Inc by incorporating thereunder, so they may deceive Petitioner Ong imports vermicelli from China National Cereals Oil based in
the people of the Philippine Islands into thinking that the goods they propose to sell Beijing China. He repacks it in cellophane wrappers with a design of two-dragons
are goods manufactured by the real Western Electric. It would be a gross prostitution and the Tower trademark of the uppermost portion.
of the powers of government to utilize those powers in such a way as to authorize He discovered that private respondent Tan repacked vermicelli from the same
such a fraud upon the people governed. company but based in Qingdao, China in a nearly identical wrapper.
Ong filed against Tan a verified complaint for infringement of copyright with
Appeal denied. Judgment affirmed. damages and prayer for TRO or Writ of Preliminary injunction with the RTC. He
alleged that he was the holder of a Certificate of Copyright Registration over the
cellophane wrapper with the two dragon design, and that Tan uses an identical
wrapper in his business. He also asked Tan be restrained from using the wrapper.
The trail court issued a temporary restraining order but Tan filed an
opposition alleging that Ong was not entitled to an injunction. According to Tan,
Ong did not have a clear right over the use of the trademark Pagoda and Lungkow
vermicelli as there were registered in the name of China National Cereals based in
China and that Tan was the exclusive distributor in the Philippines of such brand. He
added that Ong merely copied the design from Ceroilfood. He concluded that Ong’s
Certificate of Copyright Registration was not valid for lack of originality.
The court issued the writ in Ong’s favor upon his filing of a P100,000 bond.
Tan filed a motion to dissolve the writ but was denied.
He then elevated the case to the CA which rendered a decision in his favor.
Ong then filed a motion for reconsideration. The CA modified its initial
decision setting aside the previous decision it issued and that of the trial court and
7. GR NO. 130360 AUGUST 15, 2001
made the injunction permanent.
WILSON ONG CHING KIAN CHUAN, petitioner,
The Petitioner Tan state that as a holder of the Certificate of Copyright
vs. Registration of the twin-dragon design, he ha the protection under PD 49, which said
law allows an injunction in case of infringement.
HON. COURT OF APPEALS and LORENZO TAN, respondents.
 Private respondent for his part avers that petitioner has no clear right over the FACTS:
use of the copyrighted wrapper because it was first adopted and used abroad by
Ceroilfood. Private respondent is a foreign company, internationally known as clothing
manufacturer, owns the accurate design trademark which was registered under a US
ISSUE: Trademark Registration and in the Principal Register of trademark with the PPO.
Whether or not the issuance of the writ of preliminary injunction was proper. Private respondents, through a letter from their legal officer, demanded
petitioner CVSGE to desist from using their stitched arcuate design on the Europress
HELD: jeans which was advertised in Manila Bulletin. Private respondent stated that
No. The Court stated that a person to be entitled to a copyright must be the through a Trademark Technical Data and Technical Assistance Agreement with
original creator of the work. He must have created it by his own skill, labor and LSPI, they granted the latter a non-exclusive license to use the arcuate trademark in
judgement without directly copying or evasively imitating the work of another. its manufacturing and sale. And that CVSGIC and Sambar used the same without
their consent and authority in infringement and unfair competition, sold and
The grant of preliminary injunction rest on the sound discretion of the court advertised, and despite demands to cease and desist continued to manufacture, sell
with the caveat that it should be made with extreme caution. The Court stated that and advertise denim pants under the brand name Europress with back pockets and
the certificates of copyright registered in the name of Ceroifood sufficiently raised despite demands to cease and desist.
reasonable doubt. With such doubt, the preliminary injunction is unavailing.
CVSGIC admitted it manufactured, sold and advertised and was still
The Court find that Ong’s right has not been clearly and unmistakably manufacturing and selling denim pants under the brand name Europress but denied
demonstrated. That in the absence of proof of a legal right and the injury sustained that there was infringement or unfair competition because the display rooms of
by the plaintiff, an order of the trial court granting the issuance of an injunctive writ department stores where Levi’s and Europress jeans were sold, were distinctively
will be set aside, for having been issued with grave abuse of discretion. segregated by billboards and other modes of advertisement. CVSGIC claimed that it
Petition PARTIALLY GRANTED. The prayer for a writ of preliminary injunction to had its own original arcuate design, as evidenced by Copyright Registration No. 1-
prohibit Tan from using the cellophane wrapper with two-dragon device is denied, 1998, which was very different and distinct from Levi’s design.
but the finding of the respondent appellate court that Ong’s copyrighted wrapper is a Petitioner Sambar filed a separate answer denying he was connected with
copy of that of Ceroilfood Shandong is SET ASIDE for being premature. The CVSGIC.
Regional Trial Court of Quezon City, Branch 94, is directed to proceed with the trial
to determine the merits of Civil Case No. 33779 expeditiously. Let the records of this The trial court rendered its decision in favor of private respondent ordering
case be REMANDED to said trial court promptly. the defendants CVS Garment and Sambar to pay the plaintiffs jointly and solidarily
temperate and nominal damages, exemplary damages and cost of litigation. The
8. GR NO. 132604 MARCH 6, 2002 court also ordered the National Library to cancel the Copyright registration of
VENANCIO SAMBAR, doing business under the name and style of CVS Garment Sambar.
Enterprises, petitioner, vs. LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), The Ca Affirmed the decision of the trial court in toto.
INC., respondents.
ISSUE: Whether or not petitioner infringe private respondent’s arcuate design.
QUISUMBING, J.:
HELD: FERNANDO U. JUAN, petitioner,
Yes. Both the trial court and the court of appeals found that there is vs.
infringement in the present case. The backpocket design of Europress is a double arc
intersecting in the middle was the same as Levi’s mark. The differences found by the ROBERTO U. JUAN (substituted by his son JEFFREY C. JUAN) and
trial court in the designs were not noticeable. LAUNDROMATIC CORPORATION, respondents

Colorable imitation enough to cause confusion among the public was PERALTA, J.:
sufficient for a trademark to be infringed. FACTS:
The SC find no reason to disturb the findings of the CA on this issue. Respondent Roberto Juan claimed that he began using the name and mark
ISSUE: Whether or not private respondents are entitled to nominal, temperate and “Lavandera Ko” in his laundry business in 1994. He opened his laundry store in
exemplary damages and cancellation of petitioner’s copyright. 1995, and was issued a certificate of copyright over said name and mart in 1997.

HELD: He then formed a corporation Laundromatic, while Lavandera Ko was

registered as a business name with the DTI. Roberto then discovered that his brother
Yes. The SC stated that due to the existence of findings that there was petitioner Fernando was able to register the name and mark Lavandera Ko with the
copywrite infringement, the award of damages and cancellation of petitioner’s Intellectual Property Office in 1995. He found out that Fernando was selling his own
copyright are appropriate. Award of damages is clearly provided in Section 23,13 franchise.
while cancellation of petitioner’s copyright finds basis on the fact that the design was
a mere copy of that of private respondents’ trademark. To be entitled to copyright, the Roberto filed a petition for injunction, unfair competition, infringement of
thing being copyrighted must be original, created by the author through his own skill, copyright, cancellation of trademark and name with prayer for TRO and Preliminary
labor and judgment, without directly copying or evasively imitating the work of Injunction with the RTC.
another. The RTC issued a writ of preliminary injunction against Fernando. After the
However, the Court agreed with petitioner that there was an error on the pretrial conference, the RTC rendered a resolution dismissing the petition an ruling
award of nominal damages combined with temperate damages. The respondent is that neither of the parties had a right to the exclusive use or appropriation of the mark
only entitled to temperate damages because of the fact that there was losses suffered Lavandera Ko because the name was the original mark and work of a certain
which they are entitled to moderate damages. Santiago Suarez who used it as a title to a musical composition. The RTC also
ordered the National Library to cancel the Certificate of Registration issued to
Decision of the CA AFFIRMED. Roberto Juan and the IPO to cancel the Certificate of Registration of Fernando Juan.
Petitioner contended that the mark is different from a copyright and not
interchangeable. Fernando insisted that he is the owner of the service mark in
question and argued that the RTC should have not given credence to the article of
9. GR NO. 221732 AUGUST 23, 2017 information it obtained from the internet stating that Suarez was the owner of the
mark Lavandera ko.
 The CA dismissed the petitioner’s appeal based on technical grounds. Section 172.1 of R.A. 8293 enumerates the following original intellectual creations in
the literary and artistic domain that are protected from the moment of their creation,
ISSUE: which includes Musical composition with or without words.
Whether or not a mark is the same as a copyright. The mark Lavandera Ko being a musical composition it thus protected under
HELD: the copyright law and not under the trademarks, service marks and trade names law.

No. “Lavandera Ko,” in this case is being used as a trade name or a service Petition for review is GRANTED.
name since the business in which it pertains involves rendering of laundry services.
Under Sec. 121.1 of RA No. 8293 mark is defined as any visible sign capable of
distinguishing the goods or service of an enterprise and shall include a stamp or
marked container of goods.
The basic contention of the parties is, who has the better right to use
“Lavandera Ko” as a service name because Section 165.213 of the said law,
guarantees the protection of trade names and business names even prior to or without
registration, against any unlawful act committed by third parties.
By their very definitions, copyright and trade or service name are different. Copyright
is the right of literary property as recognized and sanctioned by positive law. An
intangible, incorporeal right granted by statute to the author or originator of certain
literary or artistic productions, whereby he is invested, for a limited period, with the
sole and exclusive privilege of multiplying copies of the same and publishing and
selling them.
Trade name, on the other hand, is any designation which:
(a) is adopted and used by person to denominate goods which he markets, or services
which he renders, or business which he conducts, or has come to be so used by other,
and
(b) through its association with such goods, services or business, has acquired a
special significance as the name thereof, and
(c) the use of which for the purpose stated in (a) is prohibited neither by legislative
enactment nor by otherwise defined public policy.
 10. GR NO. 119280 AUGUST 10, 2006 ISSUE:
UNILEVER PHILIPPINES (PRC), INC., petitioner, Whether or not there is a violation of the Intellectual Property Rights.
vs. HELD:
THE HONORABLE COURT OF APPEALS and PROCTER AND GAMBLE Yes. Sec. 2 of PD 49 stipulates that the copyright for a work or intellectual
PHILIPPINES, INC., respondents. creation subsists from the moment of its creation. The creator acquires copyright for
his work right upon its creation. Contrary to petitioner’s contention, the intellectual
CORONA, J.: creator’s exercise and enjoyment of copyright for his work and the protection given
FACTS: by law to him is not contingent or dependent on any formality or registration.

Private respondent Procter and Gamble filed a complaint for injunction with Based on this, for the purposes of determining whether preliminary
damages and a prayer for temporary restraining order and/or writ of preliminary injunction should issue during the pendency of the case, P&G is entitled to the
injunction against petitioner Unilever. injunctive relief prayed for in its complaint.

Procter and Gamble alleged to have conceptualized the “tac-tac” key visual Without the temporary relief, any permanent injunction against the infringing
demonstration showing the fabric being held by both hands and stretched sideways tv advertisements may possibly succeed in getting after the main case is finally
which they initially launched in Italy. adjudicated could be illusory because such advertisement are no longer used or aired
by petitioner.
Procter and Gamble alleged that petitioner Unilever had substantially and
materially imitated the aforesaid “tac-tac” key visual with disregard of P&G’s Petition is DENIED.
intellectual property rights.
Petitioner does not deny the TV advertisements are substantially similar to
P&G’s double tug and tac-tac but contended that private respondent is not entitled to
any protection because it has not registered with the National Library.
Judge Gorospe issued an order granting a temporary restraining order and
setting it for hearing for Unilever to show cause why the writ of preliminary
injunction should not issue.
The writ is issued by Judge Gorospe against petitioner Unilever. The writ
enjoined petitioner from using and airing, until further orders of the court, certain
television commercials for its laundry products claimed to be identical or similar to
its “double tug” or “tac-tac” key visual.
On appeal to the CA, the CA affirmed the findings of the trial court in toto.