MIRPURI vs. CA G.R. No. 114508, November 19, 1999

Thursday, January 29, 2009 Posted by Coffeeholic Writes Labels: Case Digests, Commercial Law

Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the trademark “Barbizon” for use in horsiers and ladies undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of New York, USA, opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said trademark will cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course to the application. Escobar later assigned all his rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law. Due to this failure, the Bureau cancelled Escobar’s certificate of registration. In 1981, Escobar and petitioner separately filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark in the US and other countries, and the international recognition of the trademark established by extensive use and advertisement of respondents products for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims originator of the word and symbol “Barbizon”, as the first and registered user of the mark attached to its products which have been sold and advertised would arise for a considerable number of years prior to petitioner’s first application. Indeed, these are substantial allegations that raised new issues and

necessarily gave respondents a new cause of action.

Moreover, the cancellation of petitioner’s certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose the second application.

It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the actions are based on different statutes.

Q. Cerveza Negra means “Black Beer” in Spanish, can it be registered? A. Yes, it has acquired secondary meaning

Arce Sons v. Selecta

Selecta Biscuit filed a petition for the registration of the word Selecta as trademark to be used on its bakery products. Arce filed an opposition saying that it has continuously used that word in its products. It used this on its milk products and as the name of a bakery. Director granted trademark because the word as used by Arce points only to the place of business or location of its restaurant.

Held: Arce has made use of Selecta not only as a tradename, indicative of the location of the restaurant but also as a trademark to indicate the goods it offers for sale to the public. The word Selecta is an ordinary or common word but once adopted or coined in connection with one’s business as an emblem or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business.

Q. Is “premium” a proper mark?A. No. It is descriptive.

Ana Ang v. Toribio Teodoro

Teodoro used “Ang Tibay” for slippers and shoes since 1910. Ang registered “Ang Tibay” for shorts and shirts on 1932. Teodoro filed a complaint to cancel the

registration of the TM of Ana Ang. He claims that Ana Ang has not proven that she spent money for advertising Ang Tibay shirts and pants. Ana Ang claims that the term is descriptive and that there is no secondary meaning attached to the term, and that the goods are different and are not likely to mislead the general public as to their origin.

Held: “Ang Tibay” is not a descriptive term but a fanciful or coined phrase which may be legally appropriated. Ang Tibay is an exclamation denoting admiration of strength, and can be translated to mean “How strong!” Ang Tibay has also acquired a secondary meaning because the exclusive use of the phrase for Teodoro’s product has allowed it to acquire a proprietary connotation. As to the argument that the goods are not similar, although two noncompeting articles may be classified under two different classes by the Patent office, nevertheless, if simultaneous use on them would be likely to cause confusion as to the source or origin, then there can be unfair competition. Also, it would prevent the natural expansion of his business and it would cause the business to be confused with the second user.

Q. Is “Ang Tibay” descriptive?A. Court held that it is a fanciful or coined term. The Court says that the proper descriptive term is “matibay” and not “Ang Tibay.”

Q. Is grammar important?A. No (?)

Q. Is the use of famous marks on unrelated goods permissible?A. Although they are noncompeting, if simultaneous use will cause confusion, it will not be permissible.

Q. What are the kinds of words?A. The words are classified to:1. common wordsa. generic – never capable of registrationb. descriptive – there is immediate association- not registrable except when there is secondary meaning, or used with other wordsc. suggestive – requires imegination/deduction2. fanciful/coined - e.g. Kodak3. arbitrary - e.g. Apple Computer

ANA L. ANG vs. TORIBIO TEODORO

G.R. No. 48226. December 14, 194Facts:• Toribio Teodoro has continuously used "AngTibay," both as a trade-mark and as a tradename,in the manufacture and sale ofslippers, shoes, and indoor baseballs since1910.• He formally registered it as a trade-mark onSeptember 29, 1915, and as a trade-nameon January 3, 1933.• Ana Ang registered the same trade-mark"Ang Tibay" for pants and shirts on April 11,1932, and established a factory for themanufacture of said articles in the year1937.• Teodoro filed a complaint against Ang• RTC rendered decision in faor of Ang on thegrounds that the two trade-marks aredissimilar and are used on different andnon-competing goods• CA reversed the RTC decision and ruledthat by uninterrupted and exclusive usesince 1910 in the manufacture of slippersand shoes, respondent's trade-mark hasacquired a secondary meaning; that thegoods or articles on which the two trademarksare used are similar or belong to thesame class; and that the use by petitioner ofsaid trade-mark constitutes a violation ofsections 3 and 7 of Act No. 666.Issue/Answer:• WON the trademark and tradename “AngTibay” is a descriptive word which will bar itsregistration. / negativeRatio Decidendi:• The phrase "Ang Tibay" is an exclamationdenoting admiration of strength or durability.• The phrase "ang tibay" is never usedadjectively to define or describe an object.• "Ang Tibay" is not a descriptive term withinthe meaning of the Trade-Mark Law butrather a fanciful or coined phrase which mayproperly and legally be appropriated as atrade-mark or trade-name.Issue on who is the lawful registrant: Teodoro• Doctrine of secondary meaning:◦ This doctrine is to the effect that a wordor phrase originally incapable ofexclusive appropriation with reference toan article on the market, becausegeographically or otherwise descriptive,might nevertheless have been used solong and so exclusively by one producerwith reference to his article that, in thattrade and to that branch of thepurchasing public, the word or phrasehas come to mean that the article was

his product.• the same trade-mark, used on unlike goods,could not cause confusion in trade and that,therefore, there could be no objection to theuse and registration of a well-known markby a third party for a different class ofgoods.• Although two noncompeting articles may beclassified under two different classes by thePatent Office because they are deemed notto possess the same descriptive properties,they would, nevertheless, be held by thecourts to belong to the same class if thesimultaneous use on them of identical orclosely similar trade-marks would be likelyto cause confusion as to the origin, orpersonal source, of the second user'sgoods.• They would be considered as not fallingunder the same class only if they are sodissimilar or so foreign to each other as tomake it unlikely that the purchaser wouldthink the first user made the second user'sgoods.• It is certainly not farfetched to surmise thatthe selection by petitioner of the sametrade-mark for pants and shirts wasmotivated by a desire to get a free ride onthe reputation and selling power it hasacquired at the hands of the respondent. Asobserved in another case, 3 the field fromwhich a person may select a trade-mark ispractically unlimited, and hence there is noexcuse for impinging upon or even closely approaching the mark of a business rival.

CRISANTA Y. GABRIEL vs. DR. JOSE R. PEREZG.R. No. L-24075. January 31, 1974Facts:• Dr. Jose R. Perez filed with the PatentsOffice on February 23, 1961 an applicationfor registration of the trademark "WONDER"in the Supplemental Register.• On October 19, 1962, petitioner Crisanta Y.Gabriel claiming that he had been using thesubject mark since 1959 filed with thePatent Office a petition for cancellation ofthe trademark "WONDER from thesupplemental register alleging that theregistrant was not entitled to register thesaid trademark at the time of his applicationfor registration• In support of her petition, she furtheralleged the written contract between herand the registrant (respondent) wherein,according to her, the latter has recognized

her right of use and ownership of saidtrademark; and that the labels submitted bythe registrant are the very containersbearing the trademark "WONDER" whichare owned by her and which she has beenexclusively and continuously using incommerce• after Dr. Perz had perfected his researchand obtained a certificate of label, he madean agreement (January, 1959) with a certaincompany named 'Manserco' for thedistribution of his soap. It was then beingmanaged by Mariano S. Yangga whohappens to be the brother of the PetitionerCrisanta Y. Gabriel• "Because the corporation was allegedlygoing bankrupt and the members weredeserting, the Respondent terminated theagreement in July, 1959, and thereafter heasked the Petitioner to become thedistributor of his products• Director of Patents rendered his decisiondenying the petition of Gabriel to cancel thecertificate of registrationIssue/Answer:• WON Gabriel, as a mere distributor havethe right to register the subject mark in her own name/ negativeRatio Decidendi:• "Because the corporation was allegedlygoing bankrupt and the members weredeserting, the Respondent terminated theagreement in July, 1959, and thereafter heasked the Petitioner to become thedistributor of his products• Crisanta Y. Gabriel appears to be a meredistributor of the product by contract withthe manufacturer, respondent Dr. Jose R.Perez and the same was only for a term.• Under Sections 2 and 2-A of the TrademarkLaw, Republic Act No. 166, as amended,the right to register trademark is based onownership and a mere distributor of aproduct bearing a trademark, even ifpermitted to use said trademark, has noright to and cannot register the saidtrademark• Petitioner urges that the agreement ofexclusive distributorship executed by andbetween her and respondent vested in herthe exclusive ownership of the trademark"WONDER". But a scrutiny of the provisionsof said contract does not yield any right infavor of petitioner other than that expresslygranted to her — to be the sole andexclusive distributor of respondent Dr.Perez' product.

• the agreement never mentioned transfer ofownership of the trademark. It merelyempowers the petitioner as exclusivedistributor to own the package and to createa design at her pleasure, but not the right toappropriate unto herself the sole ownershipof the trademark so as to entitle her toregistration in the Patent Office.• The exclusive distributor does not acquireany proprietary interest in the principal'strademark.• the trademark "WONDER" has long beenidentified and associated with the productmanufactured and produced by the Dr. JoseR. Perez Cosmetic Laboratory.• Petitioner's act in defraying substantialexpenses in the promotion of the Respondent's goods and the printing of thepackages are the necessary or essentialconsequences of Paragraph 6 of theagreement because, anyway, thoseactivities are normal in the field of sale anddistribution, as it would redound to her ownbenefit as distributor, and those acts areincumbent upon her to do.

UNNO COMMERCIAL ENTERPRISES, INC. vs.GENERAL MILLING CORPORATIONG.R. No. L-28554. February 28, 1983Facts:• On December 11, 1962, respondentGeneral Milling Corporation filed anapplication for the registration of thetrademark "All Montana" to be used in thesale of wheat flour.• As the same trademark had been previouslyregistered in favor of Unno, the ChiefTrademark Examiner declared aninterference proceeding between GeneralMilling's application (Serial No. 9732), asJunior/Party-Applicant, and Unno'sregistration (Registration No. 9589), asSenior Party-Applicant to determine whichparty has previously adopted and used thetrademark "All Montana.General Milling Corp's contention:• alleged that it started using the trademark"All Montana" on August 31, 1955 and subsequently was licensed to use the sameby Centennial Mills, Inc. by virtue of a deedof assignment executed on September 20,1962.Unno Commercial Enterprise's contention:• argued that the same trademark had beenregistered in its favor on March 8, 1962asserting that it started using the trademarkon June 30, 1956, as indentor or broker for

S.H. Huang Bros. & Co., a local firm.• various shipments, documents, invoices andother correspondence of Centennial Mills,Inc., shipping thousand of bags of wheatflour bearing the trademark "All Montana"were shown by petitioner and maintainedthat anyone, whether he is only an importer,broker or indentor can appropriate, use andown a particular mark of its own choicealthough he is not the manufacturer of thegoods he deals with.Director of Patents' decision• the Junior Party-Applicant is adjudged prioruser of the trademark ALL MONTANA, butbecause it is primarily geographicallydescriptive, the application is remanded tothe Chief Trademark Examiner for properproceeding before issuance of the certificateof registration.Issue/Answer:• WON Unno, as a mere indentor can applyfor the registration of the trademark of itsprincipal / negative. Only owners of thetrademark can apply for its registration.Ratio Decidendi:• The right to register trademark is based onownership. When the applicant is not theowner of the trademark being applied for, hehas no right to apply for the registration ofthe same.• Under the Trademark Law only the owner ofthe trademark, trade name or service markused to distinguish his goods, business orservice from the goods, business or serviceof others is entitled to register the same.• The term owner does not include theimporter of the goods bearing thetrademark, trade name, service mark, or other mark of ownership, unless suchimporter is actually the owner thereof in thecountry from which the goods are imported.• A local importer, however, may makeapplication for the registration of a foreigntrademark, trade name or service mark if heis duly authorized by the actual owner of thename or other mark of ownership.• The Deed of Assignment itself constitutessufficient proof of General MillingCorporation's ownership of the trademark"All Montana," showing that Centennial Millswas a corporation duly organized andexisting under and by virtue of the laws ofthe State of Oregon, U.S.A. and theabsolute and registered owner of severaltrademarks for wheat flour all of which wereassigned by it to respondent General MillingCorporation.

• Unno Commercial Enterprises, Inc. merelyacted as exclusive distributor of All Montanawheat flour in the Philippines. Only theowner of a trademark, trade name orservice mark may apply for its registrationand an importer, broker, indentor ordistributor acquires no rights to thetrademark of the goods he is dealing with inthe absence of a valid transfer orassignment of the trade mark.• Inasmuch as it was not the owner of thetrademark, the Senior Party could not beregarded as having used and adopted it,and had no right to apply for its registration.• a mere importer and distributor acquires norights in the mark used on the importedgoods by the foreign exporter in theabsence of an assignment of any kind• Trademarks used and adopted on goodsmanufactured or packed in a foreign countryin behalf of a domestic importer, broker, orindentor and distributor are presumed to beowned by the manufacturer or packer,unless there is a written agreement clearlyshowing that ownership vests in theimporter, broker, indentor or distributor.• ownership of a trademark is not acquired bythe mere fact of registration alone.

Registration merely creates a prima faciepresumption of the validity of theregistration, of the registrant's ownership ofthe trademark and of the exclusive right tothe use thereof. Registration does notperfect a trademark right.• The Court affirms respondent Director ofPatent's decision declaring respondentGeneral Milling Corporation as the prioruser of the trademark "All Montana" onwheat flour in the Philippines and orderingthe cancellation of the certificate ofregistration for the same trademarkpreviously issued in favor of petitioner UnnoCommercial Enterprises,• Under Rule 178 of the Rules of the PatentOffice in Trademark Cases, 14 the Directorof Patents is expressly authorized to orderthe cancellation of a registered mark ortrade name or name or other mark ofownership in an inter partes case, such asthe interference proceeding at bar.provision in question:Section 2-A of the Trademarks Law (Republic Act 166)

Ong Ai Gui v. Director

Ong Ai Gui filed an application for the registration of the tradename, “20th Century Nylon Shirts Factory.” E. I. Du Pont filed an opposition on the ground that the word “nylon” was a name coined by Du Pont as a generic name of a synthetic fabric and is a generic term, the use of which is descriptive and the use would cause confusion in trade. Opposition was dismissed but director asked the word “nylon” be disclaimed. Ong appeals.

Held: The tradename may be registered, but it may not be entitled to exclusive use of the terms “shirt factory” and “nylon” because the terms are merely descriptive or general terms, incapable of appropriation by any single individual to the exclusion of others. This is because all persons have an equal right to produce and vend similar articles and they also have the right to describe them properly and to use appropriate language.

Q. Can generic terms be appropriated by long use?A. no. Only descriptive words can be appropriated by long use.

Q. “Xerox” is descriptive or generic?A. Seems to be generic, since it is found in the dictionary as a verb.

(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

Q. Is a name denoting geographical location registrable as a trademark?A. General rule: Can’t be used when1. It induces public to believe that it is manufactured in a place where it is not really manufactured there, e.g. Champagne is a sparkling wine from a particular city in France; no other wine can be called Champagne.2. If that place is known for the goods, you can’t register, e.g. Batangas is known for its coffeeException: If that place is not particularly known for products of that kind, e.g. Baguio Oil, Seattle’s Best

(k) shapes

ANDRES ROMERO vs. MAIDEN FORMBRASSIERE CO., INCG.R. No. L-18289. March 31, 1964Facts:• On February 12, 1957, respondentcompany, a foreign corporation, filed withrespondent Director of Patents anapplication for registration (pursuant toRepublic Act No. 166) of the trademark

'Adagio" for the Brassieres manufactured byit. In its application, respondent companyalleged that said trademark was first usedby it in the United States on October 26,1937, and in the Philippines on August 31,1946• Director, on August 13, 1957, approved forpublication in the Official Gazette saidtrademark of respondent company, inaccordance with Section 7 of Republic ActNo. 166 (Trademark Law), having found,inter alia, that said trademark is "a fancifuland arbitrary use of a foreign word adoptedby applicant as a trademark for its product;that it is neither a surname nor ageographical term, nor any that comeswithin the purview of Section 4 of RepublicAct No. 166;• petitioner filed with respondent Director apetition for cancellation of said trademark,on the grounds that it is a commondescriptive name of an article or substanceon which the patent has expired• Appellant claims that the trademark"Adagio" has become a common descriptivename of a particular style of brassiere andis, therefore, unregistrable. It is urged thatsaid trademark had been used by localbrassiere manufacturers since 1948, withoutobjection on the part of respondentcompany.• Director of Patents (of January 17, 1961)dismissed Romero's petition for cancellationof the registration of the trademark "Adagio"for brassieres manufactured by respondentMaiden Form Brassiere Co., Inc.Issue/Answer:• WON Adagio is a descriptive wordincapable of registration / negativeRatio Decidendi:• The evidence shows that the trademark"Adagio" is a musical term, which meansslowly or in an easy manner, and was usedas a trademark by the owners thereof (theRosenthals of Maiden Form Co., New York)because they are musically inclined.• Being a musical term, it is used in an

arbitrary (fanciful) sense as a trademark forbrassieres manufactured by respondentcompany.• It also appears that respondent companyhas, likewise, adopted other musical termssuch as "Etude", "Chansonette", "Prelude","Over-ture", and "Concerto", to identify, as atrademark, the different styles or types of itsbrassieres.• On the other hand, respondent company'slong and continuous use of the trademark"Adagio" has not rendered it merelydescriptive of the product.On abandonment of trademark by privatedefendant:• "To work an abandonment, the disuse mustbe permanent and not ephemeral; it mustbe intentional and voluntary, and notinvoluntary or even compulsory. There mustbe a thoroughgoing discontinuance of anytrade-mark use of the mark in question"• "Non-use because of legal restrictions is notevidence of an intent to abandon.• respondent Director of Patents did not err indismissing the present petition forcancellation of the registered trademark ofappellee company, and the decisionappealed from is therefore hereby affirmed,with costs against the appellant.Provisions in question:Section 2 of Republic Act No. 166 as amended bySection 1 of Republic Act 865

PHILIPPINE REFINING CO., INC.vs. NG SAMG.R. No. L-26676. July 30, 1982Facts:• Private respondent filed with the PhilippinePatent Office an application for registrationof the trademark "CAMIA" for his product,ham, which falls under Class 47 (Foods andIngredients of Food). Petitioner opposed theapplication claiming that it first used saidtrademark on his products: lard, butter,cooking oil, abrasive detergents, polishingmaterials and soap of all kinds, some ofwhich are likewise classified under Class47.• The trademark "CAMIA" was first used inthe Philippines by petitioner on its productsin 1922 and registered the same in 1949• On November 25, 1960, respondent NgSam, a Chinese citizen residing in Iloilo City,filed an application with the PhilippinePatent Office for registration of the identicaltrademark "CAMIA" for his product, ham,which likewise falls under Class 47. Alleged

date of first use of the trademark byrespondent was on February 10, 1959.• Director of Patents rendered a decisionallowing registration of the trademark"CAMIA" in favor of Ng Sam.finding that `thegoods of the parties are not of a characterwhich purchasers would be likely to attributeto a common origin.Issue/Answer:• WON the product of respondent Ng Sam,which is ham, and those of petitionerconsisting of lard, butter, cooking oil andsoap are so related that the use of the sametrademark "CAMIA'' on said goods wouldlikely result in confusion as to their source or origin. / negativeRatio Decidendi:• the right to a trademark is a limited one, inthe sense that others may use the samemark on unrelated goods.• the mere fact that one person has adoptedand used a trademark on his goods doesnot prevent the adoption and use of thesame trademark by others on articles of adifferent description.• where no confusion is likely to arise, as inthis case, registration of a similar or evenidentical mark may be allowed.• The term "CAMIA" is descriptive of a wholegenus of garden plants with fragrant whiteflowers.• A trademark is designed to identify the user.But it should be so distinctive andsufficiently original as to enable those whocome into contact with it to recognizeinstantly the identity of the user. "It must beaffirmative and definite, significant anddistinctive, capable to indicate origin.• if a mark is so commonplace that it cannotbe readily distinguished from others, then itis apparent that it cannot identify a particularbusiness; and he who first adopted it cannotbe injured by any subsequent appropriationor imitation by others, and the public will notbe deceived."• While ham and some of the products ofpetitioner are classified under Class 47(Foods and Ingredients of Food), this alonecannot serve as the decisive factor in theresolution of whether or not they are relatedgoods.• Emphasis should be on the similarity of theproducts involved and not on the arbitraryclassification or general description of theirproperties or characteristics.• Opposer's products are ordinary day-to-dayhousehold items whereas ham is not

necessarily so. Thus, the goods of theparties are not of a character whichpurchasers would be likely to attribute to acommon origin."• the business of the parties are non-competitive and their products so unrelatedthat the use of identical trademarks is notlikely to give rise to confusion, much lesscause damage to petitioner.provision:Section 4(d) of Trademark law"a mark which consists of or comprises a mark ortradename which so resembles a mark or tradenameregistered in the Philippines or a mark or tradenamepreviously used in the Philippines by another and notabandoned, as to be likely, when applied to or used inconnection with the goods, business services of theapplicant, to cause confusion or mistake or to deceivepurchasers."

Dermaline v Myra

Dermaline applied to the IPO to register the “Dermaline Dermaline, Inc’ trademark in international class 33 for various skin treatments. Myra, the registrant of Dermalin for pharmaceutical products in international class 5, opposed the application

The Supreme Court sustained the opposition. Applying the dominancy test, the court found that, while the two marks are presented differently, the likelihood of confusion is still apparent, as both marks are spelled in almost the same way and pronounced in the same manner in three syllables.

In addition, although the products of each of the contending marks belong to separate and different classes, this does not remove the likelihood that the purchasing public will associate bot marks with each other, especially considering that the covered classes similarly pertain to treatments for the skin. As in the Nestle case, the Supreme Court stated that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business.

Prosource internation v Horphag

Horphag discovered that prosource was distributin a food supplement bearing the pco-genols mark, similar to one sold by zuellig pharma corporation bearing horphag’s pycnogenol mark. This prompted horphag to demand that prosource cease and desist from using pco-genols

Without notifying horphag, prosource discontinued the use of pco-genols and withdrew the products bearing the pco-genols mark. It alswo changed its mark romp co-genols to pco-plus.

Horphag filed a tgrademark infringement complaint against proscource, demanding that it cease and desist from using the brand pco-genols for being confusingly similar to its trademark pycnogenol.

The trial court decided in favour of horphag. Pycnogenol and pco-genols have the same suffix which is genol, which appears to be merely descriptive and so open for trademark registration by combining it with other words. The marks when read, sound confusingly similar, especially since they both refer to food supplements. Prosource’s liability was not limited by withdrawing products bearing the pco-genols mark for the market, because from 1996 until june 2000, it infringed horphag’s product by using the trademark.

Both the Supreme Court and the Court of Appeals affirmed the lower court’s decision, stating that the likelihood of confusion is the gravamen of trademark infringement.

Norvy A. Abyadang v. Berris Agricultural Co. (Appeal No. 14-06-13), 20 July 2007

In this case, the contending marks are Berris Agricultural Co.’s (Berris, for brevity) “D-10 80 WP” and Norvy Abyadang’s “NS D-10 PLUS”, both covering fungicides. Berris claims that the element “D-10” is the dominant feature of the contending marks. Abyadang, on the other hand, claims that he is entitled to the registration of the mark “NS D-10 PLUS” as he was able to secure a registration for the same from the Fertilizer and Pesticide Authority (FPA, for brevity) prior to Berris’. In sustaining the Berris’ claims, the IPO-ODG applied the dominancy test. After examining the contending marks, the IPO-ODG ruled that the element “D-10” is undeniably the dominant features of both marks; as such, Abyadang’s mark “NS D-10 PLUS” is confusingly similar to Berri’s “D-10 80WP” mark. Abyadang’s FPA registration for his mark is of no moment – while he is the first to register his brand with the FPA, the FPA is another administrative agency the function of which is to regulate the fertilizer industry. FPA’s mandate does not include the determination of rightful ownership of a trademark, which function properly belongs to the IPO.

Manly Sportswear v. Dadodette Enterprises

Where there is sufficient proof that the copyrighted products are not original creations but are readily available in the market under various brands, validity and originality will not be presumed and the trial court may properly quash the issued warrant for lack of probable cause.

La Chemise Lacoste vs. FernandezGR 63796-97, 21 May 1984; First Division, Gutierrez Jr. (J)

Facts:  La chemise Lacoste is a French corporation and the actual owner of the trademarks “Lacoste,” “Chemise Lacoste,” “Crocodile Device” and a composite mark consisting of the word “Lacoste” and a representation of a crocodile/alligator, used on clothings  and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964.  In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark “Chemise Lacoste and Q Crocodile Device” both in the supplemental and Principal Registry.  In 1980, La Chemise Lacoste SA filed for the registration of the “Crocodile device” and “Lacoste”.   Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of “Lacoste.”

In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair competition committed by Hemandas and requesting the agency’s assistance.  A search warrant was issued by the trial court.  Various goods and articles were seized upon the execution of the warrants.  Hemandas filed motion to quash the warrants, which the court granted.  The search warrants were recalled, and the goods ordered to be returned.  La Chemise Lacoste filed a petition for certiorari.

Issue:  Whether the proceedings before the patent office is a prejudicial question that need to be resolved before the criminal action for unfair competition may be pursued.

Held:  No.  The proceedings pending before the Patent Office do not partake of the nature of a prejudicial question  which must first be definitely resolved.  The case which suspends the criminal action must be a civil case, not a mere administrative case, which is determinative of the innocence or guilt of the accused.   The issue whether a trademark used is different from another’s trademark is a matter of defense and will be better resolved in the criminal proceedings before a

court of justice instead of raising it as a preliminary matter in an administrative proceeding.

Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964, Hemandas cannot be allowed to continue the trademark “Lacoste” for the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce.  Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register.  It must be noted that one may be declared an unfair competitor even if his competing trademark is registered.  La Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which include “Lacoste.”

FILSCAP v. Tan [L-36402, Mar. 16, 1987]

The principal issues in this case are whether or not the playing and singing of musical compositions which have been copyrighted under the provisions of the Copyright Law 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.

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. It will be noted that for the playing and singing the musical compositions involved, the combo was paid as independent contractors by the appellant. It is therefore obvious that the expenses entailed thereby 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. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant constituted performance for profit contemplated by the Copyright Law.

Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested musical compositions

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 is correct.

Indeed, 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. 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.

Habana vs. Robles G.R. No. 131522, July 19, 1999 Facts Habana is the author of the copyrighted book entitled College English for Today (CET). Robles and GoodWill is the author and publisher of the book entitled Developing English Proficiency (DEP). When Habana et al. try to revise their work they encountered by chance that the work of Robles (DEP) is similar of the contents, scheme of presentation, illustrations and illustrative examples in their own book. After an itemized examination and comparison of the two books (CET and DEP), Habana found that several pages of the Robles’ book are similar, if not all together a copy of Habana’s book, which is a case of plagiarism and copyright infringement. Habana then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of Robles’ works. However, Robles ignored the demands, hence, Habana et al. filed with the Regional Trial Court, Makati, a complaint for “Infringement and/or unfair competition with damages” against private respondents. Issues

Whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, Robles committed no copyright infringement? Held No, Robles still committed copyright infringement. Robles’ act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners’ copyrights. In cases of infringement, copying alone is not what is prohibited. The copying must produce an “injurious effect”. Here, the injury consists in that Robles lifted from Habana’s book materials that were the result of the latter’s research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use and did not acknowledge Habana as her source.

Hence, there is a clear case of appropriation of copyrighted work for her benefit that Robles committed. Habana’s work as authors is the product of their long and assiduous research and for another to represent it as her own is injury enough. In copyrighting books the purpose is to give protection to the intellectual product of an author. This is precisely what the law on copyright protected, under Section 184.1 (b). Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author, if appearing on the work, are mentioned. Notes When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated. In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. Piracy A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. (c) Work of Architecture Sec. 186 Section 186. Work of Architecture. - Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original: Provided, That the copyright in any such work shall not include the right to control the reconstruction or

rehabilitation in the same style as the original of a building to which that copyright relates. (n) (d) Reproduction of Published Work Sec. 187- 187.2 Section 187. Reproduction of Published Work. - 187.1. Notwithstanding the provision of Section 177, and subject to the provisions of Subsection 187.2, the private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for

research and private study, shall be permitted, without the authorization of the owner of copyright in the work. 187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction of: (a) A work of architecture in the form of building or other construction; (b) An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means; (c) A compilation of data and other materials; (d) A computer program except as provided in Section 189; and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. (n) (e) Reprographic Reproduction by Libraries Sec. 188 Section 188. Reprographic Reproduction by Libraries. - 188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction: (a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form; (b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and (c) Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher.

188.2. Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock: Provided, That every library which, by law, is entitled to receive copies of a printed work, shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. (Sec. 13, P.D. 49a) (f) Reproduction of Computer Program Sec. 189 Section 189. Reproduction of Computer Program. - 189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a computer program, by the lawful owner of that computer program: Provided, That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and (b) Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable. 189.2. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section, and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. 189.3. This provision shall be without prejudice to the application of Section 185 whenever appropriate. (n) (g) Importation for Personal Purposes Sec. 190 Section 190. Importation for Personal Purposes. - 190.1. Notwithstanding the provision of Subsection 177.6, but subject to

the limitation under the Subsection 185.2, the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances: (a) When copies of the work are not available in the Philippines and: (i) Not more than one (1) copy at one time is imported for strictly individual use only; or (ii) The importation is by authority of and for the use of the Philippine Government; or (iii) The importation, consisting of not more than three (3) such copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines. (b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, That such copies do not exceed three (3). 190.2. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act, and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor's right of action. 190.3. Subject to the approval of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. (Sec. 30, P.D. No. 49) (9) Registration and Deposit with National Library and Supreme Court Library

Sec. 191; 192; 227; 228 CHAPTER IX DEPOSIT AND NOTICE Section 191. Registration and Deposit with National Library and the Supreme Court Library. - After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of the National Library and the Supreme Court Library, within three (3) weeks, be registered and deposited with it, by personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a) Section 192. Notice of Copyright. - Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creator's death, the year of such death. (Sec. 27, P.D. No. 49a)