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G.R. No.

188526, November 11, 2013

AND LING NA LAU, Respondent.

Respondent Ling Na Lau, doing business under Worldwide Pharmacy, is the
sole distributor and registered trademark owner of TOP GEL T.G. & DEVICE OF A
LEAF papaya whitening soap as shown by a Certificate of Registration issued to her
by the Intellectual Property Office (IPO) for a period of ten years from August 24,
On November 7, 2005, Laus representative, Ping Na Lau (Ping), requested
the NBI for assistance for an investigation on several drugstores which were selling
counterfeit whitening papaya soaps bearing the general appearance of their
Agent Furing of the NBI assigned to the case executed an affidavit stating
that they were able to buy whitening soaps bearing the mentioned trademark from
a list of drugstores which included herein petitioners.
A search warrant was then issued by the RTC Branch 143, Makati, against
petitioners for violations of Sections 168 and 155, both in relation to Section 170 of
Republic Act (RA) No. 8293, otherwise known as the Intellectual Property Code of
the Philippines. Section 168, in relation to Section 170, penalizes unfair competition;
while Section 155, in relation to Section 170, punishes trademark infringement.
Petitioners then collectively filed their Motion to Quash the Search Warrants
contending that their issuances violated the rule against forum shopping; that
Benjamin Yu (Yu) is the sole owner and distributor of the product known as TOPGEL; and there was a prejudicial question posed in Civil Case No. 05-54747 filed by
Yu against respondent for damages due to infringement of trademark/tradename,
unfair competition with prayer for the immediate issuance of a temporary
restraining order and/or preliminary prohibitory injunction.
Whether or not the Motion to Quash the Search Warrants should be
No. The applications for the issuance of the assailed search warrants
applications concern the trademark TOP GEL T.G. & DEVICE OF A LEAF. Private
respondent was issued a Certificate of Registration No. 4-2000-009881 of said
trademark on August 24, 2003 by the Intellectual Property Office, and is thus
considered the lawful holder of the said trademark. Being the registrant and the

holder of the same, private respondent had the authority to enforce and protect her
intellectual property rights over it. Further, said applications for the search warrants
were granted after by Judge Laguilles after examining under oath the applicant
Agent Furing of the NBI and his witnesses Ping Na Lau and Junayd R. Ismael. It is
therefore clear that the requisites for the issuance of the search warrants had been
complied with and that there is probable cause to believe that an offense had been
committed by petitioners against respondent, as holder of the trademark TOP GEL
Further, at the time the applications for the issuance of the search warrants,
Civil Case No. Q-05-54747 which the petitioners contend that a prejudicial question
was raised, on June 10, 2005, because of the pendency of a case involving the same
issues and parties before the IPO. And before the applications for the issuance of
the assailed search warrants on November 21, 2005, the IPO had issued a writ of
preliminary injunction against Yu ordering him and his company to cease and desist
using the trademark TOP GEL T.G. & DEVICE OF A LEAF or any colorable imitation
thereof on Papaya whitening soaps they manufacture, sell, and/or offer for sale.
Petitioners, having admitted that they have derived their TOP GEL products from Yu,
are notified of such injunction as it was published in The Philippine Star newspaper
on October 30, 2005 and were therefore enjoined from selling the same.
More importantly, during the pendency of petitioners motion to quash in the
RTC, a compromise agreement between respondent and Yu was approved by the
IPO, stating, among others, that Yu acknowledge that exclusive right of Lau over the
subject trademark for use on papaya whitening soap as evidenced by the Certificate
of Registration and that Yu and his company now undertake to voluntarily cease and
desist from using the aforesaid tradename and trademark, and further undertake
not to manufacture, sell and distribute and otherwise compete with complainant,
now and at anytime in the future.
Therefore, respondent, as owner of such registered trademark has the right
to the issuance of the search warrants.