CONSOLIDATED INTELLECTUAL PROPERTY LAW CASE DIGEST

SOCIETIES AND NESTLE VS CA

G.R. No. 112012 April 4, 2001
FACTS:
On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for
the reistration of the trade!ar" #F$%&O' (%)T*'# for instant coffee, under )erial +o, -.994, The
application, as a !atter of due course, was pu/lished in the July 18, 1988 issue of the BPTTT0s Official
1a2ette,
Petitioner )ociete 3es Produits +estle, ),%,, a )wiss co!pany reistered under )wiss laws and
do!iciled in )wit2erland, filed an unverified +otice of Opposition,
4
clai!in that the trade!ar" of
private respondent0s product is #confusinly si!ilar to its trade!ar"s for coffee and coffee e5tracts, to
wit6 (%)T*' 'O%)T and (%)T*' B$*+3,#
$i"ewise, a verified +otice of Opposition was filed /y +estle Philippines, 7nc,, a Philippine
corporation and a licensee of )ociete 3es Produits +estle ),%,, aainst CFC0s application for reistration
of the trade!ar" F$%&O' (%)T*',
4
+estle clai!ed that the use, if any, /y CFC of the trade!ar"
F$%&O' (%)T*' and its reistration would li"ely cause confusion in the trade8 or deceive purchasers
and would falsely suest to the purchasin pu/lic a connection in the /usiness of +estle, as
the dominant word present in the three 94: trade!ar"s is #(%)T*'#8 or that the oods of CFC !iht /e
!ista"en as havin oriinated fro! the latter,
ISSUE: ;O+ there is Trade!ar" 7nfrine!ent
ELD: <*)
RATIO RECIDENDI:
% trade!ar" has /een enerally defined as #any word, na!e, sy!/ol or device adopted and used
/y a !anufacturer or !erchant to identify his oods and distinuish the! fro! those !anufactured and
sold /y others,#
Colora/le i!itation denotes such a close or inenious i!itation as to /e calculated to deceive
ordinary persons, or such a rese!/lance to the oriinal as to deceive an ordinary purchaser ivin such
attention as a purchaser usually ives, as to cause hi! to purchase the one supposin it to /e the
other,
9
7n deter!inin if colora/le i!itation e5ists, =urisprudence has developed two "inds of tests > the
3o!inancy Test and the ?olistic Test,
1@
The test of do!inancy focuses on the si!ilarity of the prevalent
features of the co!petin trade!ar"s which !iht cause confusion or deception and thus constitute
infrine!ent, On the other side of the spectru!, the holistic test !andates that the entirety of the !ar"s
in Auestion !ust /e considered in deter!inin confusin si!ilarity,
The deter!ination of whether two trade!ar"s are indeed confusinly si!ilar !ust /e ta"en fro!
the viewpoint of the ordinary purchasers who are, in eneral, undiscerninly rash in /uyin the !ore
co!!on and less e5pensive household products li"e coffee, and are therefore less inclined to closely
e5a!ine specific details of si!ilarities and dissi!ilarities /etween co!petin products,
This Court cannot aree that totality test is the one applica/le in this case, 'ather, this Court
/elieves that the do!inancy test is !ore suita/le to this case in liht of its peculiar factual !ilieu,
7f the ordinary purchaser is #undiscerninly rash# in /uyin such co!!on and ine5pensive
household products as instant coffee, and would therefore /e #less inclined to closely e5a!ine specific
details of si!ilarities and dissi!ilarities# /etween the two co!petin products, then it would /e less
li"ely for the ordinary purchaser to notice that CFC0s trade!ar" F$%&O' (%)T*' carries the colors
orane and !ocha while that of +estle0s uses red and /rown, The application of the totality or holistic
test is i!proper since the ordinary purchaser would not /e inclined to notice the specific features,
si!ilarities or dissi!ilarities, considerin that the product is an ine5pensive and co!!on household
ite!,
TANADA VS ANGARA
G.R. No. 11!2"# $%& 2, 1""'
FACTS:
The e!erence on January 1, 199- of the ;orld Trade Orani2ation, a/etted /y the !e!/ership
thereto of the vast !a=ority of countries has revolutioni2ed international /usiness and econo!ic relations
a!onst states, 7t has irreversi/ly propelled the world towards trade li/erali2ation and econo!ic
lo/ali2ation, $i/erali2ation, lo/ali2ation, dereulation and privati2ation, the third>!illenniu! /u22
words, are usherin in a new /orderless world of /usiness /y sweepin away as !ere historical relics the
heretofore traditional !odes of pro!otin and protectin national econo!ies li"e tariffs, e5port
su/sidies, i!port Auotas, Auantitative restrictions, ta5 e5e!ptions and currency controls, Findin !ar"et
niches and /eco!in the /est in specific industries in a !ar"et>driven and e5port>oriented lo/al
scenario are replacin ae>old #/ear>thy>neih/or# policies that unilaterally protect wea" and
inefficient do!estic producers of oods and services, 7n the words of Peter 3ruc"er, the well>"nown
!anae!ent uru, #7ncreased participation in the world econo!y has /eco!e the "ey to do!estic
econo!ic rowth and prosperity,#
ISSUE: ;O+ the 1eneral Provisions and Basic Principles of the %ree!ent on Trade>'elated %spects of
7ntellectual Property 'ihts 9T'7P): intrudes on the power of the )upre!e Court to pro!ulate rules
concernin pleadin, practice and procedures,
ELD: )uffice it to say that the reciprocity clause !ore than =ustifies such intrusion, if any actually
e5ists,
RATIO RECIDENDI:
In the area of trade related aspects of intellectual property rights (TRIPS, for brevity)6
Each ember shall accord to the nationals of other embers treatment no less
favourable than that it accords to its own nationals with reard to the protection of
intellectual property
a ;TO (e!/er is reAuired to provide a rule of disputa/le 9not the words #in the a/sence of proof to the
contrary#: presu!ption that a product shown to /e identical to one produced with the use of a patented
process shall /e dee!ed to have /een o/tained /y the 9illeal: use of the said patented process, 91: where
such product o/tained /y the patented product is new, or 9.: where there is #su/stantial li"elihood# that
the identical product was !ade with the use of the said patented process /ut the owner of the patent
could not deter!ine the e5act process used in o/tainin such identical product, ?ence, the #/urden of
proof# conte!plated /y %rticle 44 should actually /e understood as the duty of the alleed patent
infriner to overthrow such presu!ption, )uch /urden, properly understood, actually refers to the
#/urden of evidence# 9/urden of oin forward: placed on the producer of the identical 9or fa"e: product
to show that his product was produced without the use of the patented process,
The foreoin notwithstandin, the patent owner still has the #/urden of proof# since, reardless
of the presu!ption provided under pararaph 1 of %rticle 44, such owner still has to introduce evidence
of the e5istence of the alleed identical product, the fact that it is #identical# to the enuine one produced
/y the patented process and the fact of #newness# of the enuine product or the fact of #su/stantial
li"elihood# that the identical product was !ade /y the patented process,
(oreover, it should /e noted that the reAuire!ent of %rticle 44 to provide a disputa/le
presu!ption applies only if 91: the product o/tained /y the patented process in +*; or 9.: there is a
su/stantial li"elihood that the identical product was !ade /y the process and the process owner has not
/een a/le throuh reasona/le effort to deter!ine the process used, ;here either of these two provisos
does not o/tain, !e!/ers shall /e free to deter!ine the appropriate !ethod of i!ple!entin the
provisions of T'7P) within their own internal syste!s and processes,
CING VS SALINAS
G.R. No. 1(12"# )*+, 2", 200#
FACTS:
Jessie 1, Chin is the owner and eneral !anaer of Jeshicris (anufacturin Co,, the !a"er and
!anufacturer of a Btility (odel, descri/ed as #$eaf )prin *ye Bushin for %uto!o/ile# !ade up of
plastic,
On )epte!/er 4, .@@1, Chin and Joseph <u were issued /y the +ational $i/rary Certificates of
Copyriht 'eistration and 3eposit of the said wor" descri/ed therein as #$eaf )prin *ye Bushin for
%uto!o/ile,#
4
%fter due investiation, the +B7 filed applications for search warrants in the 'TC of (anila
aainst ;illia! )alinas, )r, and the officers and !e!/ers of the Board of 3irectors of ;ilaware Product
Corporation, 7t was alleed that the respondents therein reproduced and distri/uted the said !odels
penali2ed under )ections 1CC,1 and 1CC,4 of 'epu/lic %ct 9',%,: +o, 8.94,
The respondents averred that the wor"s covered /y the certificates issued /y the +ational $i/rary
are not artistic in nature8 they are considered auto!otive spare parts and pertain to technoloy, They
aver that the !odels are not oriinal, and as such are the proper su/=ect of a patent, not copyriht,
ISSUE: ;O+ the $eaf )prin *ye Bushin for %uto!o/ile is a wor" of art
ELD: +o copyriht ranted /y law can /e said to arise in favor of the petitioner despite the issuance of
the certificates of copyriht reistration and the deposit of the $eaf )prin *ye Bushin and &ehicle
Bearin Cushion,
RATIO RECIDENDI:
;e aree with the contention of the petitioner 9citin )ection 1C1,1@ of ',%, +o, 8.94:, that the
author0s intellectual creation, reardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected /y copyriht law, ?owever,
the law refers to a #wor" of applied art which is an artistic creation,# 7t /ears stressin that there is no
copyriht protection for wor"s of applied art or industrial desin which have aesthetic or artistic features
that cannot /e identified separately fro! the utilitarian aspects of the article,
4D
Functional co!ponents of
useful articles, no !atter how artistically desined, have enerally /een denied copyriht protection
unless they are separa/le fro! the useful article,
4C
7n this case, the petitioner0s !odels are not wor"s of applied art, nor artistic wor"s, They are
utility !odels, useful articles, al/eit with no artistic desin or value,
% utility !odel is a technical solution to a pro/le! in any field of hu!an activity which is new and
industrially applica/le, 7t !ay /e, or !ay relate to, a product, or process, or an i!prove!ent of any of the
aforesaid, *ssentially, a utility !odel refers to an invention in the !echanical field, This is the reason
why its o/=ect is so!eti!es descri/ed as a device or useful o/=ect, % utility !odel varies fro! an
invention, for which a patent for invention is, li"ewise, availa/le, on at least three aspects6 first, the
reAuisite of #inventive step# in a patent for invention is not reAuired8 second, the !a5i!u! ter! of
protection is only seven years co!pared to a patent which is twenty years, /oth rec"oned fro! the date of
the application8 and third, the provisions on utility !odel dispense with its su/stantive e5a!ination and
prefer for a less co!plicated syste!,
Bein plain auto!otive spare parts that !ust confor! to the oriinal structural desin of the
co!ponents they see" to replace, the $eaf )prin *ye Bushin and &ehicle Bearin Cushion are not
orna!ental, They lac" the decorative Auality or value that !ust characteri2e authentic wor"s of applied
art, They are not even artistic creations with incidental utilitarian functions or wor"s incorporated in a
useful article, 7n actuality, the personal properties descri/ed in the search warrants are !echanical
wor"s, the principal function of which is utility sans any aesthetic e!/ellish!ent,
PEARL - DEAN .PIL./, INCORPORATED, vs, SOE$ART, INCORPORATED
FACTS:
Plaintiff>appellant Pearl and 3ean 9Phil,:, 7nc, is a corporation enaed in the !anufacture of
advertisin display units si!ply referred to as liht /o5es, These units utili2e specially printed posters
sandwiched /etween plastic sheets and illu!inated with /ac" lihts, Pearl and 3ean was a/le to secure a
Certificate of Copyriht 'eistration dated January .@, 1981 over these illu!inated display units, The
advertisin liht /o5es were !ar"eted under the trade!ar" EPoster %dsF, The application for
reistration of the trade!ar" was filed with the Bureau of Patents, Trade!ar"s and Technoloy Transfer
on June .@, 1984,
)o!eti!e in 198-, Pearl and 3ean neotiated with defendant>appellant )hoe!art, 7nc, 9)(7: for
the lease and installation of the liht /o5es in )( City +orth *dsa, )ince )( City +orth *dsa was under
construction at that ti!e, )(7 offered as an alternative, )( (a"ati and )( Cu/ao, to which Pearl and
3ean areed, Only the contract for )( (a"ati, however, was returned sined, On Octo/er 4, 198-,
&erara wrote %/ano inAuirin a/out the other contract and re!indin hi! that their aree!ent for
installation of liht /o5es was not only for its )( (a"ati /ranch, /ut also for )( Cu/ao, )(7 did not
/other to reply,
7nstead, in a letter dated January 14, 198D, )(70s house counsel infor!ed Pearl and 3ean that it
was rescindin the contract for )( (a"ati due to non>perfor!ance of the ter!s thereof,
Two years later, (etro 7ndustrial )ervices, the co!pany for!erly contracted /y Pearl and 3ean to
fa/ricate its display units, offered to construct liht /o5es for )hoe!art0s chain of stores, )(7 approved
the proposal and ten 91@: liht /o5es were su/seAuently fa/ricated /y (etro 7ndustrial for )(7, %fter its
contract with (etro 7ndustrial was ter!inated, )(7 enaed the services of *<3 'ain/ow %dvertisin
Corporation to !a"e the liht /o5es,
)o!eti!e in 1989, Pearl and 3ean, received reports that e5act copies of its liht /o5es were
installed at )( City and in the fastfood section of )( Cu/ao, Bpon investiation, Pearl and 3ean found
out that aside fro! the two 9.: reported )( /ranches, liht /o5es si!ilar to those it !anufactures were
also installed in two 9.: other )( stores, 7t further discovered that defendant>appellant +orth *dsa
(ar"etin 7nc, 9+*(7:, throuh its !ar"etin ar!, Pri!e )pots (ar"etin )ervices, was set up
pri!arily to sell advertisin space in lihted display units located in )(70s different /ranches, 7t therefore
filed a case for infrine!ent of trade!ar" and copyriht, unfair co!petition and da!aes,
)(7 !aintained that it independently developed its poster panels usin co!!only "nown
techniAues and availa/le technoloy, without notice of or reference to Pearl and 3ean0s copyriht, )(7
noted that the reistration of the !ar" EPoster %dsF was only for stationeries such as letterheads,
envelopes, and the li"e, Besides, accordin to )(7, the word EPoster %dsF is a eneric ter! which cannot
/e appropriated as a trade!ar",
The 'TC of (a"ati City decided in favor of P G 3, On appeal, however, the Court of %ppeals
reversed the trial court0s rulin, ?ence, this petition,
ISSUES:
1: ;hether or not the liht /o5 depicted in such enineerin drawins is also protected /y such
copyriht if the enineerin or technical drawins of an advertisin display unit 9liht /o5: are ranted
copyriht protection 9copyriht certificate of reistration: /y the +ational $i/rary8
.: ;hether or not liht /o5 should /e reistered separately and protected /y a patent issued /y
the Bureau of Patents Trade!ar"s and Technoloy Transfer 9now 7ntellectual Property Office: H in
addition to the copyriht of the enineerin drawins8
4: ;hether or not the owner of a reistered trade!ar" leally prevent others fro! usin such trade!ar"
if it is a !ere a//reviation of a ter! descriptive of his oods, services or /usiness8
ELD: 1: +o,.: <es,4: +o,
RATIO DECIDENDI:
On the first Auestion6Petitioner P G 30s co!plaint was that )(7 infrined on its copyriht over
the liht /o5es when )(7 had the units !anufactured /y (etro and *<3 'ain/ow %dvertisin for its
own account, O/viously, petitioner0s position was pre!ised on its /elief that its copyriht over the
enineerin drawins e5tended ipso facto to the liht /o5es depicted or illustrated in said drawins, 7n
rulin that there was no copyriht infrine!ent, the Court of %ppeals held that the copyriht was li!ited
to the drawins alone and not to the liht /o5 itself, The Court arees with the appellate court,
Copyriht, in the strict sense of the ter!, is purely a statutory riht, Bein a !ere statutory rant,
the rihts are li!ited to what the statute confers, 7t !ay /e o/tained and en=oyed only with respect to the
su/=ects and /y the persons, and on ter!s and conditions specified in the statute, %ccordinly, it can
cover only the wor"s fallin within the statutory enu!eration or description,
P G 3 secured its copyriht under the classification class EOF wor", This /ein so, petitioner0s
copyriht protection e5tended only to the technical drawins and not to the liht /o5 itself /ecause the
latter was not at all in the cateory of Eprints, pictorial illustrations, advertisin copies, la/els, tas and
/o5 wraps,F
3urin the trial, the president of P G 3 hi!self ad!itted that the liht /o5 was neither a literary
not an artistic wor" /ut an Eenineerin or !ar"etin invention,F
Trade!ar", copyriht and patents are different intellectual property rihts that cannot /e
interchaned with one another, % trade!ar" is any visi/le sin capa/le of distinuishin the
oods 9trade!ar": or services 9service !ar": of an enterprise and shall include a sta!ped or !ar"ed
container of oods, 7n relation thereto, a trade na!e !eans the na!e or desination identifyin or
distinuishin an enterprise, (eanwhile, the scope of a copyriht is confined to literary and artistic
wor"s which are oriinal intellectual creations in the literary and artistic do!ain protected fro! the
!o!ent of their creation, Patenta/le inventions, on the other hand, refer to any technical solution of a
pro/le! in any field of hu!an activity which is new, involves an inventive step and is industrially
applica/le,
On the second Auestion6Petitioner never secured a patent for the liht /o5es, 7t therefore
acAuired no patent rihts which could have protected its invention, if in fact it really was, %nd /ecause it
had no patent, petitioner could not leally prevent anyone fro! !anufacturin or co!!ercially usin the
contraption, 7n Creser Precision )yste!s, 7nc, vs, Court of %ppeals, the Court held that Ethere can /e no
infrine!ent of a patent until a patent has /een issued, since whatever riht one has to the invention
covered /y the patent arises alone fro! the rant of patent,
On the third Auestion6This issue concerns the use /y respondents of the !ar" EPoster %dsF which
petitioner0s president said was a contraction of Eposter advertisin,F P G 3 was a/le to secure a trade!ar"
certificate for it, /ut one where the oods specified were Estationeries such as letterheads, envelopes,
callin cards and newsletters,F Petitioner ad!itted it did not co!!ercially enae in or !ar"et these
oods, On the contrary, it dealt in electrically operated /ac"lit advertisin units and the sale of
advertisin spaces thereon, which, however, were not at all specified in the trade!ar" certificate,
Bnder the circu!stances, the Court of %ppeals correctly cited Fa/ere 7nc, vs, 7nter!ediate
%ppellate Court where the Court, invo"in )ection .@ of the old Trade!ar" $aw, ruled that Ethe
certificate of reistration issued /y the 3irector of Patents can confer 9upon petitioner: the e5clusive riht
to use its own sy!/ol only to those oods specified in the certificate, su/=ect to any conditions and
li!itations specified in the certificate 5 5 5, One who has adopted and used a trade!ar" on his
oods does not prevent the adoption and use of the sa!e trade!ar" /y others for products which are of a
different description,
%ssu!in aruendo that EPoster %dsF could validly Aualify as a trade!ar", the failure of P G 3 to
secure a trade!ar" reistration for specific use on the liht /o5es !eant that there could not have /een
any trade!ar" infrine!ent since reistration was an essential ele!ent thereof,
DEL $ONTE CORPORATION %+0 PILIPPINE PAC1ING CORPORATION,vs,SUNSINE
FACTS:
Petitioner 3el (onte Corporation is a forein co!pany orani2ed under the laws of the Bnited
)tates and not enaed in /usiness in the Philippines, Both the Philippines and the Bnited )tates are
sinatories to the Convention of Paris of )epte!/er .C, 19D-, which rants to the nationals of the parties
rihts and advantaes which their own nationals en=oy for the repression of acts of infrine!ent and
unfair co!petition,
Petitioner Philippine Pac"in Corporation 9Philpac": is a do!estic corporation duly orani2ed
under the laws of the Philippines, On %pril 11, 19D9, 3el (onte ranted Philpac" the riht to
!anufacture, distri/ute and sell in the Philippines various aricultural products, includin catsup, under
the 3el (onte trade!ar" and loo, On Octo/er .C,19D-, 3el (onte authori2ed Philpac" to reister with
the Philippine Patent Office the 3el (onte catsup /ottle confiuration, for which it was ranted
Certificate of Trade!ar" 'eistration +o, )'>914 /y the Philippine Patent Office under the )upple!ental
'eister, On +ove!/er .@, 19C., 3el (onte also o/tained two reistration certificates for its trade!ar"
#3*$ (O+T*# and its loo,
'espondent )unshine )auce (anufacturin 7ndustries was issued a Certificate of 'eistration /y
the Bureau of 3o!estic Trade on %pril 1C,198@, to enae in the !anufacture, pac"in, distri/ution and
sale of various "inds of sauce, identified /y the loo )unshine Fruit Catsup,

This loo was reistered in
the )upple!ental 'eister on )epte!/er .@, 1984, The product itself was contained in various "inds of
/ottles, includin the 3el (onte /ottle, which the private respondent /ouht fro! the =un" shops for
recyclin, ?avin received reports that the private respondent was usin its e5clusively desined /ottles
and a loo confusinly si!ilar to 3el (onteIs, Philpac" warned it to desist fro! doin so on pain of leal
action, Thereafter, clai!in that the de!and had /een inored, Philpac" and 3el (onte filed a co!plaint
aainst the private respondent for infrine!ent of trade!ar" and unfair co!petition, with a prayer for
da!aes and the issuance of a writ of preli!inary in=unction, 7n its answer, )unshine alleed that it had
lon ceased to use the 3el (onte /ottle and that its loo was su/stantially different fro! the 3el (onte
loo and would not confuse the /uyin pu/lic to the detri!ent of the petitioners,
The 'TC dis!issed the co!plaint, This decision was affir!ed in toto /y the respondent court,
which is now faulted in this petition for certiorari under 'ule 4- of the 'ules of Court,
ISSUE:
;hether or not the private respondent is lia/le for infrine!ent of trade!ar" and of unfair co!petition
ELD: <es,
RATIO DECIDENDI: The )upre!e Court reconi2es that there really are distinctions /etween the
desins of the loos or trade!ar"s of 3el (onte and )unshine )auce, ?owever, it has /een that side /y
side co!parison is not the final test of si!ilarity, )ide>/y>side co!parison is not the final test of
si!ilarity, )uch co!parison reAuires a careful scrutiny to deter!ine in what points the la/els of the
products differ, as was done /y the trial =ude, The ordinary /uyer does not usually !a"e such scrutiny
nor does he usually have the ti!e to do so, The averae shopper is usually in a hurry and does not inspect
every product on the shelf as if he were /rowsin in a li/rary,
The Auestion is not whether the two articles are distinuisha/le /y their la/el when set side /y
side /ut whether the eneral confusion !ade /y the article upon the eye of the casual purchaser who is
unsuspicious and off his uard, is such as to li"ely result in his confoundin it with the oriinal,
)unshine )auce0s loo is a colora/le i!itation of 3el (onte0s trade!ar", The word EcatsupF in
/oth /ottles is printed in white and the style of the printJletter is the sa!e, %lthouh the loo of )unshine
is not a to!ato, the fiure nevertheless appro5i!ates that of a to!ato, The person who infrines a trade
!ar" does not nor!ally copy out /ut only !a"es colora/le chanes, e!ployin enouh points of
si!ilarity to confuse the pu/lic with enouh points of differences to confuse the courts, ;hat is
undenia/le is the fact that when a !anufacturer prepares to pac"ae his product, he has /efore hi! a
/oundless choice of words, phrases, colors and sy!/ols sufficient to distinuish his product fro! the
others, ;hen as in this case, )unshine chose, without a reasona/le e5planation, to use the sa!e colors
and letters as those used /y 3el (onte thouh the field of its selection was so /road, the inevita/le
conclusion is that it was done deli/erately to deceive,
The )upre!e Court also ruled that 3el (onte does not have the e5clusive riht to use 3el (onte
/ottles in the Philippines /ecause Philpac"0s patent was only reistered under the )upple!ental 'eister
and not with the Principal 'eister, Bnder the law, reistration under the )upple!ental 'eister is not a
/asis for a case of infrine!ent /ecause unli"e reistration under the Principal 'eister, it does not rant
e5clusive use of the patent, ?owever, the /ottles of 3el (onte do say in e!/ossed letters6 E3el (onte
Corporation, +ot to /e 'efilledF, %nd yet )unshine )auce refilled these /ottles with its catsup products,
This clearly shows the )unshine )auce0s /ad faith and its intention to capitali2e on the 3el (onte0s
reputation and oodwill and pass off its own product as that of 3el (onte,
$CDONALD2S CORPORATION vs,L.C. 3IG $A1 3URGER,
FACTS:
Petitioner (c3onaldIs Corporation 9#(c3onaldIs#: is a corporation orani2ed under the laws of
3elaware, Bnited )tates, (c3onaldIs operates, /y itself or throuh its franchisees, a lo/al chain of fast>
food restaurants, (c3onaldIs

owns a fa!ily of !ar"s includin the #Bi (ac# !ar" for its #dou/le>dec"er
ha!/urer sandwich,# 7t applied for the reistration of the sa!e !ar" in the Principal 'eister of the
then Philippine Bureau of Patents, Trade!ar"s and Technoloy 9#PBPTT#:, now the 7ntellectual Property
Office 9#7PO#:, Pendin approval of its application, (c3onaldIs introduced its #Bi (ac# ha!/urer
sandwiches in the Philippine !ar"et in )epte!/er 1981, On 18 July 198-, the PBPTT allowed reistration
of the #Bi (ac# !ar" in the Principal 'eister /ased on its ?o!e 'eistration in the Bnited )tates,
'espondent $,C, Bi (a" Burer, 7nc, 9#respondent corporation#: is a do!estic corporation
which operates fast>food outlets and snac" vans in (etro (anila and near/y provinces, 'espondent
corporationIs !enu includes ha!/urer sandwiches and other food ite!s,On .1 Octo/er 1988,
respondent corporation applied with the PBPTT for the reistration of the #Bi (a"# !ar" for its
ha!/urer sandwiches, (c3onaldIs opposed respondent corporationIs application on the round that
#Bi (a"# was a colora/le i!itation of its reistered #Bi (ac# !ar" for the sa!e food products, The
latter sued respondents for trade!ar" infrine!ent and unfair co!petition,
7n their %nswer, respondents ad!itted that they have /een usin the na!e #Bi (a" Burer# for
their fast>food /usiness, 'espondents clai!ed, however, that (c3onaldIs does not have an e5clusive
riht to the #Bi (ac# !ar" or to any other si!ilar !ar", 'espondents point out that the 7saiyas 1roup of
Corporations 9#7saiyas 1roup#: reistered the sa!e !ar" for ha!/urer sandwiches with the PBPTT on
41 (arch 19C9, One 'odolfo Topacio 9#Topacio#: si!ilarly reistered the sa!e !ar" on .4 June
1984, prior to (c3onaldIs reistration on 18 July 198-,%lternatively, respondents clai!ed that they are
not lia/le for trade!ar" infrine!ent or for unfair co!petition, as the #Bi (a"# !ar" they souht to
reister does not constitute a colora/le i!itation of the #Bi (ac# !ar", 'espondents asserted that they
did not fraudulently pass off their ha!/urer sandwiches as those of petitionersI Bi (ac ha!/urers,
'espondents souht da!aes in their counterclai!,
7n their 'eply, petitioners denied respondentsI clai! that (c3onaldIs is not the e5clusive owner
of the #Bi (ac# !ar", Petitioners asserted that while the 7saiyas 1roup and Topacio did reister the #Bi
(ac# !ar" ahead of (c3onaldIs, the 7saiyas 1roup did so only in the )upple!ental 'eister of the
PBPTT and such reistration does not provide any protection,
The 'TC ruled that $,C, Bi (a" Burer,7nc, is lia/le for trade!ar" infrine!ent and unfair co!petition,
)aid decision was reversed /y the Court of %ppeals, ?ence, this petition,
ISSUE: ;hether or not $,C, Bi (a" Burer,7nc, is lia/le for trade!ar" infrine!ent and unfair
co!petition
ELD: <es,
RATIO DECIDENDI:
Petitioners /ase their cause of action under the first part of )ection .., i,e, respondents alleedly
used, without petitionersI consent, a colora/le i!itation of the #Bi (ac# !ar" in advertisin and sellin
respondentsI ha!/urer sandwiches, This li"ely caused confusion in the !ind of the purchasin pu/lic
on the source of the ha!/urers or the identity of the /usiness,
To esta/lish trade!ar" infrine!ent, the followin ele!ents !ust /e shown6 91: the validity of plaintiffIs
!ar"8 9.: the plaintiffIs ownership of the !ar"8 and 94: the use of the !ar" or its colora/le i!itation /y
the alleed infriner results in #li"elihood of confusion,# Of these, it is the ele!ent of li"elihood of
confusion that is the rava!en of trade!ar" infrine!ent,
% !ar" is valid if it is #distinctive# and thus not /arred fro! reistration under )ection 4

of '% 1DD
9#)ection 4#:,?owever, once reistered, not only the !ar"Is validity /ut also the reistrantIs ownership of
the !ar" is pri!a facie presu!ed,
The #Bi (ac# !ar", which should /e treated in its entirety and not dissected word for word, is
neither eneric nor descriptive, #Bi (ac# falls under the class of fanciful or ar/itrary !ar"s as it /ears
no loical relation to the actual characteristics of the product it represents, %s such, it is hihly distinctive
and thus valid,Petitioners clai! that respondentsI use of the #Bi (a"# !ar" on respondentsI
ha!/urers results in confusion of oods, particularly with respect to petitionersI ha!/urers la/eled
#Bi (ac,# They also clai! that respondentsI use of the #Bi (a"# !ar" in the sale of ha!/urers, the
sa!e /usiness that petitioners are enaed in, results in confusion of /usiness,
'espondents assert that their #Bi (a"# ha!/urers cater !ainly to the low>inco!e roup while
petitionersI #Bi (ac# ha!/urers cater to the !iddle and upper inco!e roups, *ven if this is true, the
li"elihood of confusion of /usiness re!ains, since the low>inco!e roup !iht /e led to /elieve that the
#Bi (a"# ha!/urers are the low>end ha!/urers !ar"eted /y petitioners, %fter all, petitioners have
the e5clusive riht to use the #Bi (ac# !ar",On the other hand, respondents would /enefit /y
associatin their low>end ha!/urers, throuh the use of the #Bi (a"# !ar", with petitionersI hih>end
#Bi (ac# ha!/urers, leadin to li"elihood of confusion in the identity of /usiness,
'espondents further clai! that petitioners use the #Bi (ac# !ar" only on petitionersI dou/le>
dec"er ha!/urers, while respondents use the #Bi (a"# !ar" on ha!/urers and other products li"e
siopao, noodles and pi22a, 'espondents also point out that petitioners sell their Bi (ac dou/le>dec"ers
in a styrofoa! /o5 with the #(c3onaldIs# loo and trade!ar" in red, /loc" letters at a price !ore
e5pensive than the ha!/urers of respondents, 7n contrast, respondents sell their Bi (a" ha!/urers
in plastic wrappers and plastic /as, 'espondents further point out that petitionersI restaurants are air>
conditioned /uildins with drive>thru service, co!pared to respondentsI !o/ile vans,
These and other factors respondents cite cannot neate the undisputed fact that respondents use
their #Bi (a"# !ar" on ha!/urers, the sa!e food product that petitionersI sell with the use of their
reistered !ar" #Bi (ac,# ;hether a ha!/urer is sinle, dou/le or triple>dec"er, and whether
wrapped in plastic or styrofoa!, it re!ains the sa!e ha!/urer food product, *ven respondentsI use of
the #Bi (a"# !ar" on non>ha!/urer food products cannot e5cuse their infrine!ent of petitionersI
reistered !ar", otherwise reistered !ar"s will lose their protection under the law,
7n deter!inin li"elihood of confusion, =urisprudence has developed two tests, the do!inancy test
and the holistic test, The do!inancy test focuses on the si!ilarity of the prevalent features of the
co!petin trade!ar"s that !iht cause confusion, 7n contrast, the holistic test reAuires the court to
consider the entirety of the !ar"s as applied to the products, includin the la/els and pac"ain,
in deter!inin confusin si!ilarity,
%pplyin the do!inancy test, the Court finds that respondentsI use of the #Bi (a"# !ar" results
in li"elihood of confusion, First, #Bi (a"# sounds e5actly the sa!e as #Bi (ac,# )econd, the first word
in #Bi (a"# is e5actly the sa!e as the first word in #Bi (ac,# Third, the first two letters in #(a"# are
the sa!e as the first two letters in #(ac,# Fourth, the last letter in #(a"# while a #"# sounds the sa!e as
#c# when the word #(a"# is pronounced, Fifth, in Filipino, the letter #"# replaces #c# in spellin, thus
#Caloocan# is spelled #Kaloo"an,#
7n short, aurally the two !ar"s are the sa!e, with the first word of /oth !ar"s phonetically the
sa!e, and the second word of /oth !ar"s also phonetically the sa!e, &isually, the two !ar"s
have /oth two words and si5 letters, with the first word of /oth !ar"s havin the sa!e letters and the
second word havin the sa!e first two letters, 7n spellin, considerin the Filipino lanuae, even the last
letters of /oth !ar"s are the sa!e,
Clearly, respondents have adopted in #Bi (a"# not only the do!inant /ut also al!ost all the
features of #Bi (ac,# %pplied to the sa!e food product of ha!/urers, the two !ar"s will li"ely result in
confusion in the pu/lic !ind,
Certainly, #Bi (ac# and #Bi (a"# for ha!/urers create even reater confusion, not only
aurally /ut also visually,
7ndeed, a person cannot distinuish #Bi (ac# fro! #Bi (a"# /y their sound, ;hen one hears a
#Bi (ac# or #Bi (a"# ha!/urer advertise!ent over the radio, one would not "now whether the #(ac#
or #(a"# ends with a #c# or a #",#
PetitionersI aressive pro!otion of the #Bi (ac# !ar", as /orne /y their
advertise!ent e5penses, has /uilt oodwill and reputation for such !ar" !a"in it one of the easily
reconi2a/le !ar"s in the !ar"et today, This increases the li"elihood that consu!ers will !ista"enly
associate petitionersI ha!/urers and /usiness with those of respondentsI,
'espondentsI ina/ility to e5plain sufficiently how and why they ca!e to choose #Bi (a"# for
their ha!/urer sandwiches indicates their intent to i!itate petitionersI #Bi (ac# !ar", %/sent proof
that respondentsI adoption of the #Bi (a"# !ar" was due to honest !ista"e or was fortuitous,

the
inescapa/le conclusion is that respondents adopted the #Bi (a"# !ar" to #ride on the coattails# of the
!ore esta/lished #Bi (ac# !ar",

This saves respondents !uch of the e5pense in advertisin to create
!ar"et reconition of their !ar" and ha!/urers,
The essential ele!ents of an action for unfair co!petition are 91: confusin si!ilarity in the
eneral appearance of the oods, and 9.: intent to deceive the pu/lic and defraud a co!petitor, The
confusin si!ilarity !ay or !ay not result fro! si!ilarity in the !ar"s, /ut !ay result fro! other
e5ternal factors in the pac"ain or presentation of the oods, The intent to deceive and defraud !ay /e
inferred fro! the si!ilarity of the appearance of the oods as offered for sale to the
pu/lic, %ctual fraudulent intent need not /e shown,
Bnfair co!petition is /roader than trade!ar" infrine!ent and includes passin off oods with
or without trade!ar" infrine!ent, Trade!ar" infrine!ent is a for! of unfair co!petition, Trade!ar"
infrine!ent constitutes unfair co!petition when there is not !erely li"elihood of confusion, /ut
also actual or pro/a/le deception on the pu/lic /ecause of the eneral appearance of the oods, There can
/e trade!ar" infrine!ent without unfair co!petition as when the infriner discloses on the la/els
containin the !ar" that he !anufactures the oods, thus preventin the pu/lic fro! /ein deceived that
the oods oriinate fro! the trade!ar" owner,
Passin off 9or pal!in off: ta"es place where the defendant, /y i!itative devices on the eneral
appearance of the oods, !isleads prospective purchasers into /uyin his !erchandise under the
i!pression that they are /uyin that of his co!petitors, Thus, the defendant ives his oods the eneral
appearance of the oods of his co!petitor with the intention of deceivin the pu/lic that the oods are
those of his co!petitor,
The 'TC descri/ed the respective !ar"s and the oods of petitioners and respondents in this
wise6
The !ar" #BLiM (LacM# is used /y plaintiff (c3onaldIs to identify its dou/le dec"er ha!/urer
sandwich, The pac"ain !aterial is a styrofoa! /o5 with the (c3onaldIs loo and trade!ar" in red
with /loc" capital letters printed on it, %ll letters of the #BLiM (LacM# !ar" are also in red and /loc"
capital letters, On the other hand, defendantsI #BLiM (La"M# script print is in orane with only the letter
#B# and #(# /ein capitali2ed and the pac"ain !aterial is plastic wrapper, 5555 Further, plaintiffsI loo
and !ascot are the u!/rella #(# and #'onald (c3onaldIs#, respectively, co!pared to the !ascot of
defendant Corporation which is a chu//y /oy called #(ac"y# displayed or printed /etween the words
#Bi# and #(a",#
'espondents point to these dissi!ilarities as proof that they did not ive their ha!/urers the
eneral appearance of petitionersI #Bi (ac# ha!/urers,
The dissi!ilarities in the pac"ain are !inor co!pared to the star" si!ilarities in the words that ive
respondentsI #Bi (a"# ha!/urers the eneral appearance of petitionersI #Bi (ac# ha!/urers,
)ection .99a: e5pressly provides that the si!ilarity in the eneral appearance of the oods !ay /e in the
#devices or words# used on the wrappins, 'espondents have applied on their plastic wrappers and /as
al!ost the sa!e words that petitioners use on their styrofoa! /o5, ;hat attracts the attention of the
/uyin pu/lic are the words #Bi (a"# which are al!ost the sa!e, aurally and visually, as the words #Bi
(ac,# The dissi!ilarities in the !aterial and other devices are insinificant co!pared to the larin
si!ilarity in the words used in the wrappins,
)ection .99a: also provides that the defendant ives #his oods the eneral appearance of oods of
another !anufacturer,# 'espondentsI oods are ha!/urers which are also the oods of petitioners, 7f
respondents sold e sandwiches only instead of ha!/urer sandwiches, their use of the #Bi (a"# !ar"
would not ive their oods the eneral appearance of petitionersI #Bi (ac# ha!/urers, 7n such case,
there is only trade!ar" infrine!ent /ut no unfair co!petition, ?owever, since respondents chose to
apply the #Bi (a"# !ar" on ha!/urers, =ust li"e petitionerIs use of the #Bi (ac# !ar" on
ha!/urers, respondents have o/viously clothed their oods with the eneral appearance of petitionersI
oods,
Thus, there is actually no notice to the pu/lic that the #Bi (a"# ha!/urers are products of #$,C,
Bi (a" Burer, 7nc,# and not those of petitioners who have the e5clusive riht to the #Bi (ac# !ar",
This clearly shows respondentsI intent to deceive the pu/lic, ?ad respondentsI placed a notice on their
plastic wrappers and /as that the ha!/urers are sold /y #$,C, Bi (a" Burer, 7nc,#, then they could
validly clai! that they did not intend to deceive the pu/lic, 7n such case, there is only trade!ar"
infrine!ent /ut no unfair co!petition, 'espondents, however, did not ive such notice, ;e hold that as
found /y the 'TC, respondent corporation is lia/le for unfair co!petition,
E$ERALD GAR$ENT $ANUFACTURING CORPORATION,vs,.D. LEE CO$PANY, INC.,
FACTS:
On 18 )epte!/er 1981, private respondent ?,3, $ee Co,, 7nc,, a forein corporation orani2ed
under the laws of 3elaware, B,),%,, filed with the Bureau of Patents, Trade!ar"s G Technoloy Transfer
9BPTTT: a Petition for Cancellation of 'eistration +o, )' -@-4 9)upple!ental 'eister: for the
trade!ar" #)T<$7)T7C (', $**# used on s"irts, =eans, /louses, soc"s, /riefs, =ac"ets, =oin suits,
dresses, shorts, shirts and linerie under Class .-, issued on .C Octo/er 198@ in the na!e of petitioner
*!erald 1ar!ent (anufacturin Corporation, a do!estic corporation orani2ed and e5istin under
Philippine laws, 7t averred that petitionerIs trade!ar" #so closely rese!/led its own trade!ar", I$**I as
previously reistered and used in the Philippines and that it would cause confusion, !ista"e and
deception on the part of the purchasin pu/lic as to the oriin of the oods,#
Petitioner contended that its trade!ar" was entirely and un!ista"a/ly different fro! that of
private respondent and that its certificate of reistration was leally and validly ranted,
On .@ Fe/ruary 1984, petitioner caused the pu/lication of its application for reistration of the
trade!ar" #)T<$7)T7C (', $**# in the Principal 'eister,# 7t was opposed /y the private respondent,
On 19 July 1988, the 3irector of Patents rendered a decision rantin private respondentIs
petition for cancellation and opposition to reistration, On appeal, the Court of %ppeals affir!ed the
decision of the 3irector of Patents, Petitioner0s (otion for 'econsideration was denied, ?ence, this
petition,
ISSUE: ;hether or not petitionerIs #)T<$7)T7C (', $**# is confusinly si!ilar to private respondentIs
#$**# trade!ar"
ELD:+o,
RATIO DECIDENDI:
PetitionerIs trade!ar" is the whole #)T<$7)T7C (', $**,# %lthouh on its la/el the word #$**#
is pro!inent, the trade!ar" should /e considered as a whole and not piece!eal, The dissi!ilarities
/etween the two !ar"s /eco!e conspicuous, noticea/le and su/stantial enouh to !atter especially in
the liht of the followin varia/les that !ust /e factored in,
First, the products involved in the case at /ar are, in the !ain, various "inds of =eans, These are not your
ordinary household ite!s li"e catsup, soysauce or soap which are of !ini!al cost, (aon pants or =eans
are not ine5pensive, %ccordinly, the casual /uyer is predisposed to /e !ore cautious and discri!inatin
in and would prefer to !ull over his purchase, Confusion and deception, then, is less li"ely,
)econd, li"e his /eer, the averae Filipino consu!er enerally /uys his =eans /y /rand, ?e does
not as" the sales cler" for eneric =eans /ut for, say, a $evis, 1uess, ;ranler or even an %r!ani, ?e is,
therefore, !ore or less "nowledea/le and fa!iliar with his preference and will not easily /e distracted,
Finally, in line with the foreoin discussions, !ore credit should /e iven to the #ordinary
purchaser,# Cast in this particular controversy, the ordinary purchaser is not the #co!pletely unwary
consu!er# /ut is the #ordinarily intellient /uyer# considerin the type of product involved,
The #ordinary purchaser# was defined as one #accusto!ed to /uy, and therefore to so!e e5tent
fa!iliar with, the oods in Auestion, The test of fraudulent si!ulation is to /e found in the li"elihood of
the deception of so!e persons in so!e !easure acAuainted with an esta/lished desin and desirous of
purchasin the co!!odity with which that desin has /een associated, The test is not found in the
deception, or the possi/ility of deception, of the person who "nows nothin a/out the desin which has
/een counterfeited, and who !ust /e indifferent /etween that and the other, The si!ulation, in order to
/e o/=ectiona/le, !ust /e such as appears li"ely to !islead the ordinary intellient /uyer who has a need
to supply and is fa!iliar with the article that he see"s to purchase,#
There is no cause for the Court of %ppealIs apprehension that petitionerIs products !iht /e
!ista"en as #another variation or line of ar!ents under private respondentIs I$**I trade!ar"#,
4(
%s
one would readily o/serve, private respondentIs variation follows a standard for!at #!EE'73*'),#
#!EE)B'*)# and #!EE$**+),# 7t is, therefore, i!pro/a/le that the pu/lic would i!!ediately and
naturally conclude that petitionerIs #)T<$7)T7C (', $**# is /ut another variation under private
respondentIs #$**# !ar",
%nother way of resolvin the conflict is to consider the !ar"s involved fro! the point of view of
what !ar"s are reistra/le pursuant to )ec, 4 of ',%, +o, 1DD, particularly pararaph 4 9e:,
#$**# is pri!arily a surna!e, Private respondent cannot, therefore, acAuire e5clusive ownership
over and sinular use of said ter!,
7n addition to the foreoin, the Court is constrained to aree with petitionerIs contention that private
respondent failed to prove prior actual co!!ercial use of its #$**# trade!ar" in the Philippines /efore
filin its application for reistration with the BPTTT and hence, has not acAuired ownership over said
!ar",
%ctual use in co!!erce in the Philippines is an essential prereAuisite for the acAuisition of
ownership over a trade!ar" pursuant to )ec, . and .>% of the Philippine Trade!ar" $aw 9',%, +o,
1DD:,Bndisputa/ly, private respondent is the senior reistrant, havin o/tained several reistration
certificates for its various trade!ar"s #$**,# #$**'73*'),# and #$**)B'*)# in /oth the supple!ental
and principal reisters, as early as 19D9 to 19C4, ?owever, reistration alone will not suffice,
The credi/ility placed on a certificate of reistration of oneIs trade!ar", or its weiht as evidence
of validity, ownership and e5clusive use, is Aualified, % reistration certificate serves !erely as prima
facie evidence, 7t is not conclusive /ut can and !ay /e re/utted /y controvertin evidence,
(oreover, the aforeAuoted provision applies only to reistrations in the principal
reister, 'eistrations in the supple!ental reister do not en=oy a si!ilar privilee, % supple!ental
reister was created precisely for the reistration of !ar"s which are not reistra/le on the principal
reister due to so!e defects,
24( CORPORATION, 56&l, o7 ROLE8 $USIC LOUNGEvs,ROLE8 CENTRE PIL.
LI$ITED
FACTS:
On +ove!/er .D, 1998, respondents (ontres 'ole5 ),%, and 'ole5 Centre Phil,, $i!ited,
ownersJproprietors of 'ole5 and Crown 3evice, filed aainst petitioner .4D Corporation the instant suit
for trade!ar" infrine!ent and da!aes with prayer for the issuance of a restrainin order or writ of
preli!inary in=unction, They alleed that so!eti!e in July 199D, petitioner adopted and, since then, has
/een usin without authority the !ar" #'ole5# in its /usiness na!e #'ole5 (usic $oune# as well as in
its newspaper advertise!ents as N #'ole5 (usic $oune, KT&, 3isco G Party Clu/,#
7n its answer raisin special affir!ative defenses, petitioner arued that respondents have no
cause of action /ecause no trade!ar" infrine!ent e5ist8 that no confusion would arise fro! the use /y
petitioner of the !ar" #'ole5# considerin that its entertain!ent /usiness is totally unrelated to the
ite!s catered /y respondents such as watches, cloc"s, /racelets and parts thereof,
On July .1, .@@@, petitioner filed a !otion for preli!inary hearin on its affir!ative defenses,
)u/seAuently, on !otion of petitioner, the trial court issued a su/poena ad testificandum reAuirin %tty,
%lon2o %ncheta to appear at the preli!inary hearin, 'espondents, in the !eanti!e, filed a Co!!ent
and Opposition to the !otion for preli!inary hearin and a !otion to Auash the su/poena
ad testificandum,
7n an Order dated Octo/er .C, .@@@, the trial court Auashed the su/poena ad testificandum and
denied petitioner0s !otion for preli!inary hearin on affir!ative defenses with !otion to dis!iss,
;ith the denial of the !otion for reconsideration on (arch 1D, .@@1, petitioner filed a petition for
certiorari with the Court of %ppeals contendin that the trial court ravely a/used its discretion in issuin
the Octo/er .C, .@@@ and (arch 1D, .@@1 orders,
On +ove!/er .8, .@@., the Court of %ppeals dis!issed the petition, The !otion for
reconsideration filed /y petitioner was denied, ?ence, the instant petition,
ISSUES:
1: ;hether or not the trial court denied not only petitioner0s !otion for preli!inary hearin on its
affir!ative defenses /ut its !otion to dis!iss as well8
.: 7f the answer is in the affir!ative, whether or not the trial court ravely a/used its discretion in
denyin said !otions8 and
4: ;hether the trial court ravely a/used its discretion in Auashin the su/poena ad testificandum issued
aainst %tty, %ncheta
ELD :1: <es,.: +o,4: +o,
RATIO DECIDENDI:
The Court finds that what was denied in the order dated Octo/er .C, .@@@ was not only the
!otion for preli!inary hearin /ut the !otion to dis!iss as well, % readin of the dispositive portion of
said order shows that the trial court neither Aualified its denial nor held in a/eyance the rulin on
petitioner0s !otion to dis!iss,
7n issuin the assailed order, the trial court ruled on the !erits of petitioner0s (otion to
3is!iss vis"#"vis respondents0 Co!!ent and Opposition which clearly traversed the affir!ative defenses
raised /y petitioner,
(oreover, it is presu!ed that all !atters within an issue raised in a case were passed upon /y the
court, 7n the a/sence of evidence to the contrary, the presu!ption is that the court a $uo dischared its
tas" properly,
Bnder the old Trade!ar" $aw where the oods for which the identical !ar"s are used are
unrelated, there can /e no li"elihood of confusion and there is therefore no infrine!ent in the use /y the
=unior user of the reistered !ar" on the entirely different oods, This rulin, however, has /een to so!e
e5tent, !odified /y )ection 1.4,19f: of the 7ntellectual Property Code 9'epu/lic %ct +o, 8.94:, which
too" effect on January 1, 1998,
% =unior user of a well>"nown !ar" on oods or services which are not si!ilar to the oods or
services, and are therefore unrelated, to those specified in the certificate of reistration of the well>"nown
!ar" is precluded fro! usin the sa!e on the entirely unrelated oods or services, su/=ect to the certain
reAuisites,)ection 1.4,19f: is clearly in point /ecause the (usic $oune of petitioner is entirely unrelated
to respondents0 /usiness involvin watches, cloc"s, /racelets, etc, ?owever, the Court cannot yet resolve
the !erits of the present controversy considerin that the reAuisites for the application of )ection
1.4,19f:, which constitute the "ernel issue at /ar, clearly reAuire deter!ination facts of which need to /e
resolved at the trial court,The sa!e is true with respect to the issue of whether %tty, %lon2o %ncheta was
properly authori2ed to sin the verification and certification aainst foru! shoppin in /ehalf of
respondents, Considerin that the trial court correctly denied petitioner0s !otion for preli!inary hearin
on its affir!ative defenses with !otion to dis!iss, there e5ists no reason to co!pel %tty, %ncheta to
testify, ?ence, no a/use of discretion was co!!itted /y the trial court in Auashin the su/poena ad
testificandum issued aainst %tty, %ncheta,
A3I 9 S$C
G.R. No. 104#44: )*l& #, 1""4
FACTS:
On )epte!/er 1-, 1988, )an (iuel Corporation 9)(C: filed a co!plaint aainst %sia Brewery
7nc, 9%B7: for infrine!ent of trade!ar" and unfair co!petition on account of the latterIs B**' P%$*
P7$)*+ or B**' +% B**' product which has /een co!petin with )(CIs )%+ (71B*$ P%$* P7$)*+
for a share of the local /eer !ar"et,
The trial court dis!issed )(C0s co!plaint, On appeal, it was reversed /y the Court of %ppeals,
7n due ti!e, %B7 appealed /y a petition for certiorari under 'ule 4- of the 'ules of Court,
ISSUE: ;hether or %B7 infrines )(CIs trade!ar"6 )an (iuel Pale Pilsen with 'ectanular ?ops and
(alt 3esin, and there/y co!!its unfair co!petition aainst the latter
ELD: +o,
RATIO DECIDENDI:
7nfrine!ent of trade!ar" is a for! of unfair co!petition 9Clar"e vs, (anila Candy Co,, 4D Phil,
1@@, 1@D:, )ec, .. of 'epu/lic %ct +o, 1DD, otherwise "nown as the Trade!ar" $aw, defines what
constitutes infrine!ent, Fro! the definition, it i!plies that only reistered trade !ar"s, trade na!es
and service !ar"s are protected aainst infrine!ent or unauthori2ed use /y another or others, The use
of so!eone elseIs reistered trade!ar", trade na!e or service !ar" is unauthori2ed, hence, actiona/le, if
it is done #without the consent of the reistrant,#
7nfrine!ent is deter!ined /y the #test of do!inancy# rather than /y differences or variations in the
details of one trade!ar" and of another,
There is hardly any dispute that the do!inant feature of )(CIs trade!ar" is the na!e of the product6
)%+ (71B*$ P%$* P7$)*+, written in white 1othic letters with ela/orate serifs at the /einnin and
end of the letters #)# and #(# on an a!/er /ac"round across the upper portion of the rectanular
desin,
On the other hand, the do!inant feature of %B7Is trade!ar" is the na!e6 B**' P%$* P7$)*+,
with the word #Beer# written in lare a!/er letters, larer than any of the letters found in the )(C la/el,
The trial court perceptively o/served that the word #B**'# does not appear in )(CIs trade!ar",
=ust as the words #)%+ (71B*$# do not appear in %B7Is trade!ar", ?ence, there is a/solutely no
si!ilarity in the do!inant features of /oth trade!ar"s,
+either in sound, spellin or appearance can B**' P%$* P7$)*+ /e said to /e confusinly
si!ilar to )%+ (71B*$ P%$* P7$)*+, +o one who purchases B**' P%$* P7$)*+ can possi/ly /e
deceived that it is )%+ (71B*$ P%$* P7$)*+, +o evidence whatsoever was presented /y )(C provin
otherwise,
Besides the dissi!ilarity in their na!es, the followin other dissi!ilarities in the trade dress or
appearance of the co!petin products a/ound6
91: The )%+ (71B*$ P%$* P7$)*+ /ottle has a slender tapered nec",
The B**' P%$* P7$)*+ /ottle has a fat, /ulin nec",
9.: The words #pale pilsen# on )(CIs la/el are printed in /old and laced letters alon
a diaonal /and, whereas the words #pale pilsen# on %B7Is /ottle are half the si2e and printed in slender
/loc" letters on a straiht hori2ontal/and, 9)ee *5hi/it #8>a#,:,
94: The na!es of the !anufacturers are pro!inently printed on their respective /ottles,
)%+ (71B*$ P%$* P7$)*+ is #Bottled /y the )an (iuel Brewery, Philippines,# whereas B**' P%$*
P7$)*+ is #*specially /rewed and /ottled /y %sia Brewery 7ncorporated, Philippines,#
94: On the /ac" of %B7Is /ottle is printed in /i, /old letters, under a row of flower /uds and
leaves, its copyrihted sloan6 #B**' +% B**'O# ;hereas )(CIs /ottle carries no sloan,
9-: The /ac" of the )%+ (71B*$ P%$* P7$)*+ /ottle carries the )(C loo, whereas the B**'
P%$* P7$)*+ /ottle has no loo,
9D: The )%+ (71B*$ P%$* P7$)*+ /ottle cap is sta!ped with a coat of ar!s and the words
#)an (iuel Brewery Philippines# encirclin the sa!e,
The B**' P%$* P7$)*+ /ottle cap is sta!ped with the na!e #B**'# in the center, surrounded /y the
words #%sia Brewery 7ncorporated Philippines,#
9C: Finally, there is a su/stantial price difference /etween B**' P%$* P7$)*+ 9currently at
P4,.- per /ottle: and )%+ (71B*$ P%$* P7$)*+ 9currently at PC,@@ per /ottle:,
The words #pale pilsen# !ay not /e appropriated /y )(C for its e5clusive use even if they are part
of its reistered trade!ar"6 )%+ (71B*$ P%$* P7$)*+, +o one !ay appropriate eneric or descriptive
words, They /elon to the pu/lic do!ain,
The circu!stance that the !anufacturer of B**' P%$* P7$)*+, %sia Brewery 7ncorporated, has
printed its na!e all over the /ottle of its /eer product6 on the la/el, on the /ac" of the /ottle, as well as on
the /ottle cap, disproves )(CIs chare that %B7 dishonestly and fraudulently intends to pal! off its
B**' P%$* P7$)*+ as )(CIs product, 7n view of the visi/le differences /etween the two products, the
Court /elieves it is Auite unli"ely that a custo!er of averae intellience would !ista"e a /ottle of B**'
P%$* P7$)*+ for )%+ (71B*$ P%$* P7$)*+,
The fact that B**' P%$* P7$)*+ li"e )%+ (71B*$ P%$* P7$)*+ is /ottled in a!/er>colored steinie
/ottles of 4.@ !l, capacity and is also advertised in print, /roadcast, and television !edia, does not
necessarily constitute unfair co!petition,
Bnfair co!petition is the e!ploy!ent of deception or any other !eans contrary to ood faith /y
which a person shall pass off the oods !anufactured /y hi! or in which he deals, or his /usiness, or
services, for those of another who has already esta/lished oodwill for his si!ilar oods, /usiness or
services, or any acts calculated to produce the sa!e result, 9)ec, .9, 'epu/lic %ct +o, 1DD, as a!ended,:
7n this case, the Auestion to /e deter!ined is whether %B7 is usin a na!e or !ar" for its /eer
that has previously co!e to desinate )(CIs /eer, or whether %B7 is passin off its B**' P%$* P7$)*+
as )(CIs )%+ (71B*$ P%$* P7$)*+,
The petitionerIs contention that /ottle si2e, shape and color !ay not /e the e5clusive property of
any one /eer !anufacturer is well ta"en, )(CIs /ein the first to use the steinie /ottle does not ive )(C
a vested riht to use it to the e5clusion of everyone else, Bein of functional or co!!on use, and not the
e5clusive invention of any one, it is availa/le to all who !iht need to use it within the industry, +o/ody
can acAuire any e5clusive riht to !ar"et articles supplyin si!ple hu!an needs in containers or
wrappers of the eneral for!, si2e and character co!!only and i!!ediately used in !ar"etin such
articles,
%B7 does not use )(CIs steinie /ottle, +either did %B7 copy it, %B7 !a"es its own steinie /ottle
which has a fat /ulin nec" to differentiate it fro! )(CIs /ottle, The a!/er color is a functional feature
of the /eer /ottle, %s pointed out /y %B7, all /ottled /eer produced in the Philippines is contained and
sold in a!/er>colored /ottles /ecause a!/er is the !ost effective color in preventin trans!ission of
liht and provides the !a5i!u! protection to /eer,
That the %B7 /ottle has a 4.@ !l, capacity is not due to a desire to i!itate )(CIs /ottle /ecause
that /ottle capacity is the standard prescri/ed under (etrication Circular +o, CC8, dated 4 3ece!/er
19C9, of the 3epart!ent of Trade, (etric )yste! Board,
;ith reard to the white la/el of /oth /eer /ottles, %B7 e5plained that it used the color white for
its la/el /ecause white presents the stronest contrast to the a!/er color of %B7Is /ottle8 it is also the
!ost econo!ical to use on la/els, and the easiest to #/a"e# in the furnace 9p, 1D, T)+ of )epte!/er .@,
1988:, +o one can have a !onopoly of the color a!/er for /ottles, nor of white for la/els, nor of the
rectanular shape which is the usual confiuration of la/els, +eedless to say, the shape of the /ottle and
of the la/el is uni!portant, ;hat is all i!portant is the na!e of the product written on the la/el of the
/ottle for that is how one /eer !ay /e distinuished fro! the others,
The !ain thrust of )(CIs co!plaint if not infrine!ent of its trade!ar", /ut unfair co!petition
arisin for! the alleedly #confusin si!ilarity# in the eneral appearance or trade dress of %B7Is B**'
P%$* P7$)*+ /eside )(CIs )%+ (71B*$ P%$* P7$)*+ 9p, .@9, 'ollo:
)(C clai!s that the #trade dress# of B**' P%$* P7$)*+ is #confusinly si!ilar# to its )%+ (71B*$
P%$* P7$)*+ /ecause /oth are /ottled in 4.@ !l, steinie type, a!/er>colored /ottles with white
rectanular la/els,
?owever, when as in this case, the na!es of the co!petin products are clearly different and their
respective sources are pro!inently printed on the la/el and on other parts of the /ottle, !ere si!ilarity
in the shape and si2e of the container and la/el, does not constitute unfair co!petition, The steinie /ottle
is a standard /ottle for /eer and is universally used, )(C did not invent it nor patent it,
The record does not /ear out )(CIs apprehension that B**' P%$* P7$)*+ is /ein passed off as
)%+ (71B*$ P%$* P7$)*+, This is unli"ely to happen for consu!ers or /uyers of /eer enerally order
their /eer /y /rand, %s pointed out /y %B7Is counsel, in super!ar"ets and tiendas, /eer is ordered /y
/rand, and the custo!er surrenders his e!pty replace!ent /ottles or pays a deposit to uarantee the
return of the e!pties, 7f his e!pties are )%+ (71B*$ P%$* P7$)*+, he will et )%+ (71B*$ P%$*
P7$)*+ as replace!ent, 7n sari>sari stores, /eer is also ordered fro! the tindera /y /rand, The sa!e is
true in restaurants, pu/s and /eer ardens H /eer is ordered fro! the waiters /y /rand,
G.R. No. 10!"4(: )%+*%r& 2!, 1"""
)o%;*i+ 95 Drilo+
FACTS:
Petitioner BJ Productions, 7nc, 9BJP7: is the holderJrantee of Certificate of Copyriht +o, (9..,
dated January .8, 19C1, of Rhoda and e, a datin a!e show aired fro! 19C@ to 19CC,On June .8, 19C4,
it su/!itted to the +ational $i/rary an addendu! to its certificate of copyriht specifyin the showIs
for!at and style of presentation,
On July 14, 1991, while watchin television, petitioner Francisco JoaAuin, Jr,, president of BJP7, saw on
'P+ Channel 9 an episode of It%s a &ate, which was produced /y 7P$ Productions, 7nc, 97P$:,
On July 18, 1991, he wrote a letter to private respondent 1a/riel (, Qosa, president and eneral
!anaer of 7P$, infor!in Qosa that BJP7 had a copyriht to Rhoda and e and de!andin that 7P$
discontinue airin It%s a &ate,
(eanwhile, private respondent Qosa souht to reister 7P$Is copyriht to the first episode of 7tIs a
3ate for which it was issued /y the +ational $i/rary a certificate of copyriht %uust 14, 1991,
Bpon co!plaint of petitioners, an infor!ation for violation of P,3, +o, 49 was filed aainst
private respondent Qosa toether with certain officers of 'P+ Channel 9, ?owever, private respondent
Qosa souht a review of the resolution of the %ssistant City Prosecutor /efore the 3epart!ent of Justice,
On %uust 1., 199., respondent )ecretary of Justice Fran"lin (, 3rilon reversed the %ssistant
City ProsecutorIs findins and directed hi! to !ove for the dis!issal of the case aainst private
respondents,
Petitioner JoaAuin filed a !otion for reconsideration, /ut his !otion denied /y respondent
)ecretary of Justice on 3ece!/er 4, 199., ?ence, this petition,
ISSUE: ;hether or not petitioner0s T& show is entitled to copyriht protection
ELD: +o,
RATIO DECIDENDI:
Petitioners assert that the for!at of Rhoda and e is a product of inenuity and s"ill and is thus
entitled to copyriht protection, 7t is their position that the presentation of a point>/y>point co!parison
of the for!ats of the two shows clearly de!onstrates the ne5us /etween the shows and hence esta/lishes
the e5istence of pro/a/le cause for copyriht infrine!ent, )uch /ein the case, they did not have to
produce the !aster tape,
To /ein with the for!at of a show is not copyrihta/le, )ection . of P,3, +o, 49, otherwise
"nown as the 3*C'** O+ 7+T*$$*CTB%$ P'OP*'T<, enu!erates the classes of wor" entitled to
copyriht protection,
This provision is su/stantially the sa!e as R1C. of the 7+T*$$*CTB%$ P'OP*'T< CO3* OF
P?7$7PP7+*) 9',%, +o, 8.94:, The for!at or !echanics of a television show is not included in the list of
protected wor"s in R. of P,3, +o, 49, For this reason, the protection afforded /y the law cannot /e
e5tended to cover the!,
P,3, +o, 49, R., in enu!eratin what are su/=ect to copyriht, refers to finished wor"s and not to
concepts, The copyriht does not e5tend to an idea, procedure, process, syste!, !ethod of operation,
concept, principle, or discovery, reardless of the for! in which it is descri/ed, e5plained, illustrated, or
e!/odied in such wor",
The new 7+T*$$*CTB%$ P'OP*'T< CO3* OF T?* P?7$7PP7+*) provides6
)ec, 1C-, 'nprotected Sub(ect atter, H +otwithstandin the provisions of )ections 1C.
and 1C4, no protection shall e5tend, under this law, to any idea, procedure, syste!,
!ethod or operation, concept, principle, discovery or !ere data as such, even if they are
e5pressed, e5plained, illustrated or e!/odied in a wor"8 news of the day and other
!iscellaneous facts havin the character of !ere ite!s of press infor!ation8 or any official
te5t of a leislative, ad!inistrative or leal nature, as well as any official translation
thereof,
;hat then is the su/=ect !atter of petitionersI copyrihtS This Court is of the opinion that petitioner
BJP7Is copyriht covers audio>visual recordins of each episode of Rhoda and e, as fallin within the
class of wor"s !entioned in P,3, 49, R.9(:, to wit6
Cine!atoraphic wor"s and wor"s produced /y a process analoous to cine!atoraphy or
any process for !a"in audio>visual recordins8
The copyriht does not e5tend to the eneral concept or for!at of its datin a!e show,
%ccordinly, /y the very nature of the su/=ect of petitioner BJP7Is copyriht, the investiatin
prosecutor should have the opportunity to co!pare the videotapes of the two shows,
(ere description /y words of the eneral for!at of the two datin a!e shows is insufficient8 the
presentation of the !aster videotape in evidence was indispensa/le to the deter!ination of the e5istence
of pro/a/le cause,
S<i6= 1li+, 9 CA
GR 12((2'
FACTS:
)!ith Kline is a B) corporation licensed to do /usiness in the Philippines, 7n 1981, a patent was
issued to it for its invention entitled E(ethods and Co!positions for Producin Biphasic Parasiticide
%ctivity Bsin (ethyl - Propylthio>.>Ben2i!ida2ole Car/a!ate,F The invention is a !eans to fiht
off astrointestinal parasites fro! various cattles and pet ani!als,
Tryco Phar!a is a local corporation enaed in the sa!e /usiness as )!ith Kline,
)!ith Kline sued Tryco Phar!a /ecause the latter was sellin a veterinary product called
7!preon which contains a dru called %l/enda2ole which fihts off astro>intestinal roundwor!s,
lunwor!s, tapewor!s and flu"e infestation in cara/aos, cattle and oats,
)!ith Kline is clai!in that %l/enda2ole is covered in their patent /ecause su/stantially the sa!e
as !ethyl - propylthio>.>/en2i!ida2ole car/a!ate covered /y its patent since /oth of the! are !eant to
co!/at wor! or parasite infestation in ani!als, %nd that %l/enda2ole is actually patented under )!ith
Kline /y the B),
Tryco Phar!a averred that nowhere in 7!preon0s pac"ain does it !ention that %l/enda2ole
is present /ut even if it were, the sa!e is Eunpatenta/leF,
)!ith Kline thus invo"ed the doctrine of eAuivalents, which i!plies that the two su/stances
su/stantially do the sa!e function in su/stantially the sa!e way to achieve the sa!e results, there/y
!a"in the! truly identical for in spite of the fact that the word %l/enda2ole does not appear in
petitioner0s letters patent, it has a/ly shown /y evidence its sa!eness with !ethyl - propylthio>.>
/en2i!ida2ole car/a!ate,
ISSUE 6 ;hether or not there is patent infrine!ent in this case
ELD: +o,
RATIO RECIDENDI:
)!ith Kline failed to prove that %l/enda2ole is a co!pound inherent in the patented invention,
+owhere in the patent does the word %l/enda2ole found, ;hen the lanuae of its clai!s is clear and
distinct, the patentee is /ound there/y and !ay not clai! anythin /eyond the!, Further, there was a
separate patent for %l/enda2ole iven /y the B) which i!plies that %l/enda2ole is indeed separate and
distinct fro! the patented co!pound here,
% scrutiny of )!ith Kline0s evidence fails to prove the su/stantial sa!eness of
the patented co!pound and %l/enda2ole, ;hile /oth co!pounds have the effect of
neutrali2in parasites in ani!als, identity of result does not a!ount to infrine!ent of patent unless
%l/enda2ole operates in su/stantially the sa!e way or /y su/stantially the sa!e !eans as
the patented co!pound, even thouh it perfor!s the sa!e function and achieves the sa!e result, 7n
other words, the principle or !ode of operation !ust /e the sa!e or su/stantially the sa!e, The doctrine
of eAuivalents thus reAuires satisfaction of the function>!eans>and>result test, the patentee havin the
/urden to show that all three co!ponents of such eAuivalency test are !et,
$>DONALD?S CORPORATION v, $AC)OY FASTFOOD CORPORATION
)*R* +o* ,--,,. /ebruary 0, 0112
FACTS:
On 14 (arch 1991, respondent (acJoy Fastfood Corporation, a do!estic corporation enaed in
the sale of fast food products in Ce/u City, filed with the then Bureau of Patents, Trade!ar"s and
Technoloy Transfer 9BPTT:, now the 7ntellectual Property Office 97PO:, an application for the
reistration of the trade!ar" #(%CJO< G 3*&7C*# for fried chic"en, chic"en /ar/eAue, /urers, fries,
spahetti, pala/o", tacos, sandwiches, halo>halo and stea"s under classes .9 and 4@ of the 7nternational
Classification of 1oods,
Petitioner (c3onald0s Corporation, filed a verified +otice of Opposition aainst the respondent0s
application clai!in that the trade!ar" #(%CJO< G 3*&7C*# so rese!/les its corporate loo, otherwise
"nown as the 1olden %rches or #(# desin, and its !ar"s #(c3onalds,# (cChic"en,# #(acFries,# etc,
9hereinafter (C3O+%$30) !ar"s: such that when used on identical or related oods, the trade!ar"
applied for would confuse or deceive purchasers into /elievin that the oods oriinate fro! the sa!e
source or oriin,
%lso, petitioner alleed that the respondent0s use and adoption in /ad faith of the #(%CJO< G
3*&7C*# !ar" would falsely tend to suest a connection or affiliation with petitioner0s restaurant
services and food products, thus, constitutin a fraud upon the eneral pu/lic and further cause the
dilution of the distinctiveness of petitioner0s reistered and internationally reconi2ed (C3O+%$30)
!ar"s to its pre=udice and irrepara/le da!ae,
7PO ruled that the predo!inance of the letter #(,# and the prefi5es #(acJ(c# in /oth the
#(%CJO<# and the #(C3O+%$3)# !ar"s lead to the conclusion that there is confusin si!ilarity
/etween the! especially since /oth are used on al!ost the sa!e products fallin under classes .9 and 4@
of the 7nternational Classification of 1oods, i,e,, food and inredients of food, sustained the petitioner0s
opposition and re=ected the respondent0s application, 97PO used the do!inancy test:
ISSUE:
1, ;J+ the do!inancy test should /e applied, instead of the holistic test,
., ;J+ there is a confusin si!ilarity /etween (%CJO< and (C3O+%$3) trade!ar"s as to =ustify
the 7PO0s re=ection of (ac=oy0s trade!ar" application
ELD: 1, <es, ., <*)
1. YES.
7n deter!inin si!ilarity and li"elihood of confusion, =urisprudence has developed two tests, the
do!inancy test and the holistic test, The do!inancy test focuses on the si!ilarity of the prevalent
features of the co!petin trade!ar"s that !iht cause confusion or deception, 7n contrast, the holistic
test reAuires the court to consider the entirety of the !ar"s as applied to the products, includin the
la/els and pac"ain, in deter!inin confusin si!ilarity,
7n recent cases with a si!ilar factual !ilieu as here, the Court has consistently used and applied
the do!inancy test in deter!inin confusin si!ilarity or li"elihood of confusion /etween co!petin
trade!ar"s,
Bnder the do!inancy test, courts ive reater weiht to the si!ilarity of the appearance of the
product arisin fro! the adoption of the do!inant features of the reistered !ar", disreardin !inor
differences, Courts will consider !ore the aural and visual i!pressions created /y the !ar"s in the pu/lic
!ind, ivin little weiht to factors li"e prices, Auality, sales outlets and !ar"et se!ents,
%pplyin the do!inancy test to the instant case, the Court finds that herein petitioner0s
#(C3O+%$30)# and respondent0s #(%CJO<# !ar"s are confusinly si!ilar with each other such that
an ordinary purchaser can conclude an association or relation /etween the !ar"s
2. YES.
Both !ar"s use the corporate #(# desin loo and the prefi5es #(c# andJor #(ac# as do!inant
features, The first letter #(# in /oth !ar"s puts e!phasis on the prefi5es #(c# andJor #(ac# /y the
si!ilar way in which they are depicted i,e, in an arch>li"e, capitali2ed and styli2ed !anner,
7t is the prefi5 #(c,# an a//reviation of #(ac,# which visually and aurally catches the attention of
the consu!in pu/lic,
Both trade!ar"s are used in the sale of fastfood products, 7ndisputa/ly, the respondent0s
trade!ar" application for the #(%CJO< G 3*&7C*# trade!ar" covers oods under Classes .9 and 4@ of
the 7nternational Classification of 1oods, na!ely, fried chic"en, chic"en /ar/eAue, /urers, fries,
spahetti, etc, (c3onald0s reistered trade!ar" covers oods si!ilar if not identical to those covered /y
the respondent0s application,
Predo!inant features such as the #(,# #(c,# and #(ac# appearin in /oth (c3onald0s !ar"s and
the (%CJO< G 3*&7C*# easily attract the attention of would>/e custo!ers, *ven non>reular custo!ers
of their fastfood restaurants would readily notice the predo!inance of the #(# desin, #(cJ(ac# prefi5es
shown in /oth !ar"s, )uch that the co!!on awareness or perception of custo!ers that the trade!ar"s
(c3onalds !ar" and (%CJO< G 3*&7C* are one and the sa!e, or an affiliate, or under the sponsorship
of the other is not far>fetched,
By reason of the respondent0s i!plausi/le and insufficient e5planation as to how and why out of
the !any choices of words it could have used for its trade>na!e andJor trade!ar", it chose the word
#(%CJO<,# the only loical conclusion deduci/le therefro! is that the respondent would want to ride
hih on the esta/lished reputation and oodwill of the (C3O+%$30s !ar"s, which, as applied to
petitioner0s restaurant /usiness and food products, is undou/tedly /eyond Auestion,
;hen one applies for the reistration of a trade!ar" or la/el which is al!ost the sa!e or very
closely rese!/les one already used and reistered /y another, the application should /e re=ected and
dis!issed outriht, even without any opposition on the part of the owner and user of a previously
reistered la/el or trade!ar", this not only to avoid confusion on the part of the pu/lic, /ut also to
protect an already used and reistered trade!ar" and an esta/lished oodwill,
;?*'*FO'*, the instant petition is 1'%+T*3, %ccordinly, the assailed 3ecision and
'esolution of the Court of %ppeals in C%>1,', )P +O, -C.4C, are '*&*')*3 and )*T %)73* and the
3ecision of the 7ntellectual Property Office in 7nter Partes Case +o, 48D1 is '*7+)T%T*3,
SA$SON VS DAWAY
G.R. No5. 1(00#4@## )*l& 21, 2004
FACTS:
The undisputed facts show that on (arch C, .@@., two infor!ations for unfair co!petition under
)ection 1D8,4 9a:, in relation to )ection 1C@, of the 7ntellectual Property Code 9'epu/lic %ct +o, 8.94:,
si!ilarly worded save for the dates and places of co!!ission, were filed aainst petitioner (anolo P,
)a!son, the reistered owner of 7TT7 )hoes, The accusatory portion of said infor!ations read6
That on or a/out the first wee" of +ove!/er 1999 and so!eti!e prior or su/seAuent thereto, in
Tue2on City, Philippines, and within the =urisdiction of this ?onora/le Court, a/ove>na!ed accused,
ownerJproprietor of 7TT7 )hoesJ(ano )hoes (anufactuirn Corporation located at 'o/inson0s 1alleria,
*3)% corner Ortias %venue, Tue2on City, did then and there willfully, unlawfully and feloniously
distri/ute, sell andJor offer for sale C%T*'P7$$%' products such as footwear, ar!ents, clothin, /as,
accessories and paraphernalia which are closely identical to andJor colora/le i!itations of the authentic
Caterpillar products and li"ewise usin trade!ar"s, sy!/ols andJor desins as would cause confusion,
!ista"e or deception on the part of the /uyin pu/lic to the da!ae and pre=udice of C%T*'P7$$%',
7+C,, the prior adopter, user and owner of the followin internationally6 #C%T*'P7$$%'#, #C%T#,
#C%T*'P7$$%' G 3*)71+#, #C%T %+3 3*)71+#, #;%$K7+1 (%C?7+*)# and #T'%CK>T<P*
T'%CTO' G 3*)71+,#
ISSUE: ;hich court has =urisdiction over cri!inal and civil cases for violation of intellectual property
rihtsS
ELD: 'eional Trial Court
RATIO RECIDENDI:
7n the case at /ar, ',%, +o, 8.94 and ',%, +o, 1DD are special laws8 conferrin =urisdiction over
violations of intellectual property rihts to the 'eional Trial Court, They should therefore prevail over
',%, +o, CD91, which is a eneral law,9 ?ence, =urisdiction over the instant cri!inal case for unfair
co!petition is properly loded with the 'eional Trial Court even if the penalty therefor is i!prison!ent
of less than D years, or fro! . to - years and a fine ranin fro! P-@,@@@,@@ to P.@@,@@@,@@,
7n fact, to i!ple!ent and ensure the speedy disposition of cases involvin violations of
intellectual property rihts under ',%, +o, 8.94, the Court issued %,(, +o, @.>1>11>)C dated Fe/ruary
19, .@@. desinatin certain 'eional Trial Courts as 7ntellectual Property Courts, On June 1C, .@@4, the
Court further issued a 'esolution consolidatin =urisdiction to hear and decide 7ntellectual Property Code
and )ecurities and *5chane Co!!ission cases in specific 'eional Trial Courts desinated as )pecial
Co!!ercial Courts,
F'%+C7)CO 1, JO%TB7+, J', and BJ P'O3BCT7O+), 7+C, vs, ?O+O'%B$* '%+K$7+ (, 3'7$O+,
1%B'7*$ QO)%, ;7$$7%( *)PO)O, F*$7P* (*37+%, J',, and C%)*< F'%+C7)CO
FACTS:
Petitioner BJ Productions, 7nc, 9BJP7: is the holder J rantee of Certificate of Copyriht +o, (9..,
dated January .8, 19C1, of 'hoda and (e, a datin a!e show aired fro! 19C@ to 19CC,
On June .8, 19C4, petitioner BJP7 su/!itted to the +ational $i/rary an addendu! to its certificate
of copyriht specifyin the show0s for!at and style of presentation,
Bpon co!plaint of petitioners, infor!ation for violation of P3 +o, 49 was filed aainst private
respondent Qosa toether with certain officers of 'P+ 9 for airin 7t0s a 3ate, 7t was assined to Branch
1@4 of 'TC Tue2on City,
Qosa souht review of the resolution of the %ssistant City Prosecutor /efore the 3epart!ent of
Justice,
On %uust 1., 199., respondent )ecretary of Justice Fran"lin (, 3rilon reversed the %ssistant City
Prosecutor0s findins and directed hi! to !ove for the dis!issal of the case aainst private respondents,
Petitioner JoaAuin filed !otion for reconsideration /ut such was denied,
ISSUE:
;hether the for!at or !echanics or petitioner0s television show is entitled to copyriht protection,
ELD:
The Court ruled that the for!at of the show is not copyrihta/le, )ec, . of P3 +o, 49, otherwise
"nown as the 3ecree on 7ntellectual Property, enu!erates the classes of wor" entitled to copyriht
protection, The provision is su/stantially the sa!e as )ec, 1C. of the 7ntellectual Property Code of
the Philippines 9'% 8.94:, The for!at or !echanics of a television show is not included in the list of
protected wor"s in )ec, . of P3 +o, 49, For this reason, the protection afforded /y the law cannot /e
e5tended to cover the!,
Copyriht, in the strict sense of the ter!, is purely a statutory riht, 7t is a new independent riht
ranted /y the statute and not si!ply a pre>e5istin riht reulated /y the statute, Bein a statutory
rant, the rihts are only such as the statute confers, and !ay /e o/tained and en=oyed only with respect
to the su/=ects and /y the person and on ter!s and conditions specified in the statute,
The Court is of the opinion that petitioner BJP70s copyriht covers audio>visual recordins of each
episode of 'hoda and (e, as fallin within the class of wor"s !entioned in P3 49,
The copyriht does not e5tend to the eneral concept or for!at of its datin a!e show,
(ere description /y words of the eneral for!at of the two datin a!e shows is insufficient8 the
presentation of the !aster videotape in evidence was indispensa/le to the deter!ination of the e5istence
of a pro/a/le cause,
% television show includes !ore than !ere words can descri/e /ecause it involves a whole spectru! of
visuals and effects, video and audio, such that no si!ilarity or dissi!ilarity !ay /e found /y !erely
descri/in the eneral copyriht J for!at of /oth datin a!e shows,
@ @ @ . @ @ .
SPONSORED ADS
Intellectual Property 3 !aw on 4opyright 3 ust"4arry Rule
Philippine (ulti>(edia )yste! 7nc 9P()7: is a sinal provider which has ca/le and satellite services, 7t is
providin its satellite services throuh 3rea! Broadcastin )yste!, P()7 has its EFree T&F and
EPre!iu! ChannelsF, The Free T& includes %B)>CB+, 1(%>C and other local networ"s, The pre!iu!
channels include %P+, Jac" T&, etc which are paid /y su/scri/ers /efore such channels can /e
trans!itted as feeds to a su/scri/er0s T& set which has /een installed with a 3rea! satellite,
%B)>CB+ is a television and /roadcastin corporation, 7t /roadcasts television prora!s /y wireless
!eans to (etro (anila and near/y provinces, and /y satellite to provincial stations throuh Channel .
and Channel .4, The prora!s aired over Channels . and .4 are either produced /y %B)>CB+ or
purchased fro! or licensed /y other producers, %B)>CB+ also owns reional television stations which
pattern their prora!!in in accordance with perceived de!ands of the reion, Thus, television
prora!s shown in (etro (anila and near/y provinces are not necessarily shown in other provinces,
7n (ay .@@., %B)>CB+ sued P()7 for alleedly enain in re/roadcastin and there/y infrinin on
%B)>CB+0s copyrihts8 that the trans!ission of Channels . and .4 to the provinces where these two
channels are not usually shown altered %B)>CB+0s prora!!in for the said provinces, P()7 arued
that it is not infrinin upon %B)>CB+0s copyrihts /ecause it is operatin under the E(ust>Carry 'uleF
outlined in +TC 9+ational Teleco!!unications Co!!ission: Circular +o, 4>@8>88,
ISSUE: ;hether or not P()7 infrined upon the copyrihts of %B)>CB+,
ELD: +o, The E(ust>Carry 'uleF under +TC Circular +o, 4>@8>88 falls under the li!itations on
copyriht, The Filipino people !ust /e iven wider access to !ore sources of news, infor!ation,
education, sports event and entertain!ent prora!s other than those provided for /y !ass !edia and
afforded television prora!s to attain a well infor!ed, well>versed and culturally refined citi2enry and
enhance their socio>econo!ic rowth, The very intent and spirit of the +TC Circular will prevent a
situation where/y station owners and a few networ"s would have unfettered power to !a"e ti!e
availa/le only to the hihest /idders, to co!!unicate only their own views on pu/lic issues, people, and
to per!it on the air only those with who! they areed N contrary to the state policy that the 9franchise:
rantee li"e %B)>CB+, and other T& station owners and even the li"es of P()7, shall provide at all ti!es
sound and /alanced prora!!in and assist in the functions of pu/lic infor!ation and education,
P()7 was li"ewise ranted a leislative franchise under 'epu/lic %ct +o, 8D4@, )ection 4 of which
si!ilarly states that it Eshall provide adeAuate pu/lic service ti!e to ena/le the overn!ent, throuh the
said /roadcastin stations, to reach the population on i!portant pu/lic issues8 provide at all ti!es sound
and /alanced prora!!in8 pro!ote pu/lic participation such as in co!!unity prora!!in8 assist in
the functions of pu/lic infor!ation and education,
The E(ust>Carry 'uleF favors /oth /roadcastin orani2ations and the pu/lic, 7t prevents ca/le television
co!panies fro! e5cludin /roadcastin orani2ation especially in those places not reached /y sinal,
%lso, the rule prevents ca/le television co!panies fro! deprivin viewers in far>flun areas the
en=oy!ent of prora!s availa/le to city viewers,
A3S@C3N 95. P$SI, G.R. No. 1'#'("@'0 .1" )%+ 200"/
Post under case diests, Political $aw at ;ednesday, January .-, .@1. Posted /y )chi2ophrenic (ind
F%>65: %B)>CB+ is enaed in television and radio /roadcastin throuh wireless and satellite !eans
while Philippine (ulti>(edia )yste!s 7nc, 9EP()7F for /revity:, the operator of 3rea!Broadcastin
)yste! provides direct>to>ho!e 93T?: television via satellite to its su/scri/ers all over the Philippines,
P()7 was ranted leislative franchise under '% 8D4@ to install, operate and !aintain a nationwide
3T? satellite service and is o/liated under /y +TC (e!orandu! Circular +o, 4>@8>88, )ection D,. of
which reAuires all ca/le television syste! operators operatin in a co!!unity within 1rade E%F or EBF
contours to carry the television sinals of the authori2ed television /roadcast stations 9E!ust>carry
ruleF:,
%B)>CB+ filed a co!plaint with 7ntellectual Property Office 97PO: for violation of laws involvin
property rihts, 7t alleed that P()70s unauthori2ed re/roadcastin of Channels . and .4 infrined on its
/roadcastin rihts and copyriht and that the +TC circular only covers ca/le television syste! operators
and not 3T? satellite television operators, (oreover, +TC Circular 4>@8>88 violates )ec, 9 of %rt, 777
of the Constitution /ecause it allows the ta"in of property for pu/lic use without pay!ent of =ust
co!pensation,
P()7 arued that its re/roadcastin of Channels . and .4 is sanctioned /y (e!orandu! Circular +o,
@4>@8>888 that the !ust>carry rule under the (e!orandu! Circular is a valid e5ercise of police power,
7PO and Court of %ppeals ruled in favor of P()7,
I55*,5:
91: wJn P()7 infrined on %B)>CB+0s /roadcastin rihts and copyriht
9.: wJn P()7 is covered /y the +TC Circular 9E!ust>carry ruleF:
94: ;hether +TC Circular 4>@8>88 violates )ec, 9 of %rt, 777 of the Constitution /ecause it allows the
ta"in of property for pu/lic use without pay!ent of =ust co!pensation or it is a valid e5ercise of police
power,
,l0:
91: +O, P()7 does not infrine on %B)>CB+0s /roadcastin rihts under the 7P Code as P()7 is not
enaed in re/roadcastin of Channels . and .4, 'e/roadcastin, which is prohi/ited /y the 7P Code, is
Ethe si!ultaneous /roadcastin /y one /roadcastin orani2ation of the /roadcast of another
/roadcastin orani2ation,F %B)>CB+ creates and trans!its its own sinals8 P()7 !erely carries such
sinals which the viewers receive in its unaltered for!, P()7 does not produce, select, or deter!ine the
prora!s to /e shown in Channels . and .4, $i"ewise, it does not pass itself off as the oriin or author of
such prora!s, 7nsofar as Channels . and .4 are concerned, P()7 !erely retrans!its the sa!e in
accordance with +TC (e!orandu! Circular @4>@8>88,
9.: <*), E3T? satellite tv operatorsF is covered under the +TCCircular which EreAuires all ca/le
television syste! operatorsU to carry the television sinals of the authori2ed television /roadcast
stationsF, The 3irector>1eneral of the 7PO and the Court of %ppealscorrectly found that P()70s services
are si!ilar to a ca/le televisionsyste! /ecause the services it renders fall under ca/le Eretrans!issionF,
Thus, P()7, /ein a 3T? )atellite T& operator is covered /y the +TC Circular,
94: The carriae of %B)>CB+0s sinals /y virtue of the !ust>carry rule in (e!orandu! Circular +o, @4>
@8>88 is under the direction and control of the overn!ent thouh the +TC which is vested with
e5clusive =urisdiction to supervise, reulate and control teleco!!unications and /roadcast
servicesJfacilities in the Philippines, The i!position of the !ust>carry rule is within the +TC0s power to
pro!ulate rules and reulations, as pu/lic safety and interest !ay reAuire, to encourae a larer and
!ore effective use of co!!unications, radio and television /roadcastin facilities, and to !aintain
effective co!petition a!on private entities,
P%C7T% 7, ?%B%+%, %$7C7% $, C7+CO and JO&7T% +, F*'+%+3O vs, F*$7C73%3 C, 'OB$*) and
1OO3;7$$ T'%37+1 CO,, 7+C,
1,', +o, 141-.., July 19, 1999
FACTS: Pacita ?a/ana et al,, are authors and copyriht owners of duly issued of the /oo", Collee
*nlish For Today 9C*T:, 'espondent Felicidad 'o/les was the author of the /oo" 3evelopin *nlish
Proficiency 93*P:, Petitioners found that several paes of the respondentIs /oo" are si!ilar, if not all
toether a copy of petitionersI /oo", ?a/ana et al, filed an action for da!aes and in=unction, allein
respondent0s infrine!ent of copyrihts, in violation of P,3, 49, They allee respondent Felicidad C,
'o/les /ein su/stantially fa!iliar with the contents of petitionersI wor"s, and without securin their
per!ission, lifted, copied, plaiari2ed andJor transposed certain portions of their /oo" C*T,
On the other hand, 'o/les contends that the /oo" 3*P is the product of her own intellectual creation,
and was not a copy of any e5istin valid copyrihted /oo" and that the si!ilarities !ay /e due to the
authorsI e5ercise of the #riht to fair use of copyrihted !aterials, as uides,#
The trial court ruled in favor of the respondents, a/solvin the! of any lia/ility, $ater, the Court of
%ppeals rendered =ud!ent in favor of respondents 'o/les and 1oodwill Tradin Co,, 7nc, 7n this appeal,
petitioners su/!it that the appellate court erred in affir!in the trial courtIs decision,
ISSUE6 ;hether 'o/les co!!itted infrine!ent in the production of 3*P,
ELD: % perusal of the records yields several paes of the /oo" 3*P that are si!ilar if not identical with
the te5t of C*T, The court finds that respondent 'o/lesI act of liftin fro! the /oo" of petitioners
su/stantial portions of discussions and e5a!ples, and her failure to ac"nowlede the sa!e in her /oo" is
an infrine!ent of petitionersI copyrihts,
7n the case at /ar, the least that respondent 'o/les could have done was to ac"nowlede petitioners
?a/ana et, al, as the source of the portions of 3*P, The final product of an authorIs toil is her /oo", To
allow another to copy the /oo" without appropriate ac"nowled!ent is in=ury enouh,
CING VS SALINAS
G.R. No. 1(12"# )*+, 2", 200#
FACTS:
Jessie 1, Chin is the owner and eneral !anaer of Jeshicris (anufacturin Co,, the !a"er and
!anufacturer of a Btility (odel, descri/ed as #$eaf )prin *ye Bushin for %uto!o/ile# !ade up of
plastic,
On )epte!/er 4, .@@1, Chin and Joseph <u were issued /y the +ational $i/rary Certificates of
Copyriht 'eistration and 3eposit of the said wor" descri/ed therein as #$eaf )prin *ye Bushin for
%uto!o/ile,#
4
%fter due investiation, the +B7 filed applications for search warrants in the 'TC of (anila
aainst ;illia! )alinas, )r, and the officers and !e!/ers of the Board of 3irectors of ;ilaware Product
Corporation, 7t was alleed that the respondents therein reproduced and distri/uted the said !odels
penali2ed under )ections 1CC,1 and 1CC,4 of 'epu/lic %ct 9',%,: +o, 8.94,
The respondents averred that the wor"s covered /y the certificates issued /y the +ational $i/rary
are not artistic in nature8 they are considered auto!otive spare parts and pertain to technoloy, They
aver that the !odels are not oriinal, and as such are the proper su/=ect of a patent, not copyriht,
ISSUE: ;O+ the $eaf )prin *ye Bushin for %uto!o/ile is a wor" of art
ELD: +o copyriht ranted /y law can /e said to arise in favor of the petitioner despite the issuance of
the certificates of copyriht reistration and the deposit of the $eaf )prin *ye Bushin and &ehicle
Bearin Cushion,
RATIO RECIDENDI:
;e aree with the contention of the petitioner 9citin )ection 1C1,1@ of ',%, +o, 8.94:, that the
author0s intellectual creation, reardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected /y copyriht law, ?owever,
the law refers to a #wor" of applied art which is an artistic creation,# 7t /ears stressin that there is no
copyriht protection for wor"s of applied art or industrial desin which have aesthetic or artistic features
that cannot /e identified separately fro! the utilitarian aspects of the article,
4D
Functional co!ponents of
useful articles, no !atter how artistically desined, have enerally /een denied copyriht protection
unless they are separa/le fro! the useful article,
4C
7n this case, the petitioner0s !odels are not wor"s of applied art, nor artistic wor"s, They are
utility !odels, useful articles, al/eit with no artistic desin or value,
% utility !odel is a technical solution to a pro/le! in any field of hu!an activity which is new and
industrially applica/le, 7t !ay /e, or !ay relate to, a product, or process, or an i!prove!ent of any of the
aforesaid, *ssentially, a utility !odel refers to an invention in the !echanical field, This is the reason
why its o/=ect is so!eti!es descri/ed as a device or useful o/=ect, % utility !odel varies fro! an
invention, for which a patent for invention is, li"ewise, availa/le, on at least three aspects6 first, the
reAuisite of #inventive step# in a patent for invention is not reAuired8 second, the !a5i!u! ter! of
protection is only seven years co!pared to a patent which is twenty years, /oth rec"oned fro! the date of
the application8 and third, the provisions on utility !odel dispense with its su/stantive e5a!ination and
prefer for a less co!plicated syste!,
Bein plain auto!otive spare parts that !ust confor! to the oriinal structural desin of the
co!ponents they see" to replace, the $eaf )prin *ye Bushin and &ehicle Bearin Cushion are not
orna!ental, They lac" the decorative Auality or value that !ust characteri2e authentic wor"s of applied
art, They are not even artistic creations with incidental utilitarian functions or wor"s incorporated in a
useful article, 7n actuality, the personal properties descri/ed in the search warrants are !echanical
wor"s, the principal function of which is utility sans any aesthetic e!/ellish!ent,
$,6ro@Gol0A&+@$%&,r S6*0io5 I+>. .$G$/ 9. GroB56,r, LTD
S=%r, o+ 7%>,CooB S=%r, o+ ,<%il S=%r, o+ pri+6 D$or, S=%ri+E S,r9i>,5$or,
5iew this case and other resources at6
Ci6%6io+. -4- B,), 914, 1.- ), Ct, .CD4, 1D. $, *d, .d C81, C- B,),P,T,.d 1@@1, 18 7$'3 C9, .@@- 7$'C
.@41, 44 (ed, $, 'ptr, 18D- 9.@@-:
3ri,7 F%>6 S*<<%r&. The defendant0s distri/uted free software that allowed private individuals to
share copyrihted electronic files without authori2ation, )o!e of those files shared are !ovies and sons
that (1( hold copyrihts to,
S&+op5i5 o7 R*l, o7 L%A. ;hen a distri/utor ta"es affir!ative steps to foster infrine!ent throuh
the use of its product, the distri/utor will /e lia/le for that infrine!ent conducted /y 4rd parties,
F%>65.
1ro"ster, $T3 and )trea!Cast +etwor" distri/uted fee software that allowed the sharin of files in a
peer to peer networ", This avoided the need for central servers and costly server storae and wor"s faster,
)ince files can o fro! co!puter to co!puter and not throuh the server it is safer and cost efficient,
This prora! was used /y universities, overn!ent aencies, corporations, li/raries and then private
users, Private users /ean sharin copyrihted !usic and video files without authori2ation, 1ro"ster
used technoloy called FastTrac" and )trea! Cast used 1nutella, The files shared do not o to a central
location so 1ro"ster and )trea!Cast did not "now when the files were /ein copied /ut if they had
searched there software they would see the type of files /ein shared, 7t was shown that )trea!Cast ave
software called Open+ap la/eled the /est alternative to +apster in the hopes to ta"e all the +apster users
that had to stop usin that software after +apster was sued, 1ro"ster had a prora! called Open+ap that
allowed users to search for +apster files, 1ro"ster and )trea!Cast received revenues fro! postin
advertisin all over its prora! software, (1( was a/le to show that so!e 9@ percent of the files /ein
shared where copyrihted files, %lso there is no evidence that either co!pany tried to filter or stop
copyriht infrine!ent, The district court ranted su!!ary =ud!ent in favor of 1ro"ster and )trea!
Case /ecause althouh users of the software did infrine (1(0s property there was no proof there the
distri/utors had actual "nowlede of specific acts of infrine!ent, (1( appealed,
I55*,. ;hether a distri/utor of a product that is capa/le of lawful and unlawful use is lia/le for copyriht
infrine!ent /y a 4rd party usin that product,
,l0. <es, The appeals court stated that since these distri/utors did not have actual "nowlede, did not
parta"e in, or !onitor the file sharin they are not directly lia/le for the infrine!ent, ?owever the court
erred in findin they were not secondarily lia/le for the actions of the users of its products, There is a
/alance /etween rowin technoloies and copyriht protection, /ut to not !a"e distri/utors lia/le will
!a"e copyriht protections !eaninless, The lower court loo"ed to the co!!erce doctrine now codified
which states that a product !ust /e capa/le of co!!ercially sinificant noninfridin uses and if so, no
secondary lia/ility would follow, This court finds that interpretation too narrow, ?ere this court
considers the doctrine of induce!ent to also /e relevant, ;hen a distri/utor pro!otes usin its device to
infrine copyriht !aterial, shown /y affir!ative steps to foster infrine!ent this is induce!ent and the
distri/utor will /e lia/le for 4rd party infrine!ent, %ll the actions of the co!panies is enouh to show a
enuine issue of !aterial fact, thus the court reversed the su!!ary =ud!ent rulin and re!anded the
case upon those findins,
Di55,+6. Justice Breyer states this case is no different fro! )ony where ti!e>shiftin was the !ain
purpose of users copyin shows /y &C') 9so they could watch later:, The court did not find )ony
responsi/le there, %lso there is such a !a=or !ar"et for non>infrine!ent uses for this software that they
shouldn0t /e stopped fro! distri/utin the software, The standard in )ony should not /e adapted as we
did it here to add induce!ent,
Di5>*55io+. ;hen a distri/utor ta"es affir!ative steps to foster infrine!ent throuh the use of its
product, the distri/utor will /e lia/le for that infrine!ent,
)O+< CO'P v, B+7&*')%$ C7T< )TB37O)
F%>65 o7 6=, C%5,
)ony Corporation of %!erica !anufactured and sold the #Beta!a5# ho!e video tape recorder 9&T':,
Bniversal City )tudios owned the copyrihts to television prora!s /roadcast on pu/lic airwaves,
Bniversal sued )ony for copyriht infrine!ent, allein that /ecause consu!ers used )onyIs Beta!a5 to
record BniversalIs copyrihted wor"s, )ony was lia/le for the copyriht infrine!ent alleedly
co!!itted /y those consu!ers in violation of the Copyriht %ct, Bniversal souht !onetary da!aes, an
eAuita/le accountin of profits, and an in=unction aainst the !anufacturin and !ar"etin of the &T'Is,
The 3istrict Court denied all relief, holdin that the nonco!!ercial ho!e use recordin of !aterial
/roadcast over the pu/lic airwaves was a fair use of copyrihted wor"s and did not constitute copyriht
infrine!ent, (oreover, the court concluded that )ony could not /e held lia/le as contri/utory infriners
even if the ho!e use of a &T' was considered an infrinin use, 7n reversin, the Court of %ppeals held
)ony lia/le for contri/utory infrine!ent,
7))B*6 3oes )onyIs sale of #Beta!a5# video tape recorders to the eneral pu/lic constitute contri/utory
infrine!ent of copyrihted pu/lic /roadcasts under the Copyriht %ctS
Co+>l*5io+
+o, 7n a ->4 opinion delivered /y Justice John Paul )tevens, the Court held that #LtMhe sale of the &T'Is
to the eneral pu/lic does not constitute contri/utory infrine!ent of LBniversalIsM copyrihts,# The
Court concluded that there was a sinificant li"elihood that a su/stantial nu!/er of copyriht holders
who license their wor"s for free pu/lic /roadcasts would not o/=ect to havin their /roadcasts ti!e>
shifted /y private viewers and that Bniversal failed to show that ti!e>shiftin would cause non>!ini!al
har! to the potential !ar"et for, or the value of, their copyrihted wor"s, Justice )tevens wrote for the
Court that #LtMhe sale of copyin eAuip!ent,,,does not constitute contri/utory infrine!ent if the product
is widely used for leiti!ate, uno/=ectiona/le purposes, or, indeed, is !erely capa/le of su/stantial
noninfrinin uses,# For the dissentin !inority, Justice Blac"!un e5pressed the views that tapin a
copyrihted television prora! is infrine!ent and that the recorder !anufacturers were uilty of
inducin and !aterially contri/utin to the infrine!ent,
P?7$7P) *PPO'T &), COB'T OF %PP*%$)> CO'PO'%T* T'%3* +%(*
7 corporation8s right to use its corporate and trade name is a property right, a right in rem, which it
may assert and protect against the whole world*
F%CT)6
Philips *5port B,&, 9P*B&: filed with the )*C for the cancellation of the word EPhilipsF the corporate
na!e of )tandard Philips Corporation in view of its prior reistration with the Bureau of Patents and the
)*C, ?owever, )tandard Philips refused to a!end its %rticles of 7ncorporation so P*B& filed with the
)*C a petition for the issuance of a ;rit of Preli!inary 7n=unction, however this was denied rulin that it
can only /e done when the corporate na!es are identical and they have at least . words different, This
was affir!ed /y the )*C en /anc and the Court of %ppeals thus the case at /ar,
7))B*6
;hether or not )tandard Philips can /e en=oined fro! usin Philips in its corporate na!e
'B$7+16 <*)
% corporation0s riht to use its corporate and trade na!e is a property riht, a riht in re!, which it !ay
assert and protect aainst the whole world, %ccordin to )ec, 18 of the Corporation Code, no corporate
na!e !ay /e allowed if the proposed na!e is identical or deceptively confusinly si!ilar to that of any
e5istin corporation or to any other na!e already protected /y law or is patently deceptive, confusin or
contrary to e5istin law,
For the prohi/ition to apply, . reAuisites !ust /e present6
91: the co!plainant corporation !ust have acAuired a prior riht over the use of such corporate na!e
and
9.: the proposed na!e is either identical or deceptively or confusinly si!ilar to that of any e5istin
corporation or to any other na!e already protected /y law or patently deceptive, confusin or contrary to
e5istin law,
;ith reard to the 1st reAuisite, P*B& adopted the na!e EPhilipsF part of its na!e .D years /efore
)tandard Philips, %s reards the .nd, the test for the e5istence of confusin si!ilarity is whether the
si!ilarity is such as to !islead a person usin ordinary care and discri!ination, )tandard Philips only
contains one word, E)tandardF, different fro! that of P*B&, The . co!panies0 products are also the
sa!e, or cover the sa!e line of products, %lthouh P*B& pri!arily deals with electrical products, it has
also shipped to its su/sidiaries !achines and parts which fall under the classification of Echains, rollers,
/elts, /earins and cuttin sawF, the oods which )tandard Philips also produce, %lso, a!on )tandard
Philips0 pri!ary purposes are to /uy, sell trade 5 5 5 electrical wirin devices, electrical co!ponent,
electrical supplies, 1iven these, there is nothin to prevent )tandard Philips fro! dealin in the sa!e line
of /usiness of electrical devices, The use of EPhilipsF /y )tandard Philips tends to show its intention to
ride on the popularity and esta/lished oodwill of P*B&,