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ESSO STANDARD EASTERN, INC., vs.

THE HONORABLE COURT OF APPEALS and UNITED


CIGARETTE CORPORATION
G.R. No. L-29971 August 31, 1982 FIRST DIVISION TEHANKEE, J.

FACTS:

Petitioner Esso Standard Eastern, Incorporated, a then foreign corporation duly licensed to do
business in the Philippines, is engaged in the sale of petroleum products under the trademark ESSO. On
the other hand, respondent United Cigarette Corporation, a domestic corporation, is engaged in the
manufacture and sale of tobacco products after its acquisition of La Oriental Tobacco’s factory and patent
rights. One of the rights acquired by United Cigarette Corporation is the use of the trademark ESSO on its
cigarettes for which a permit was given by the Bureau of Internal Revenue.

Upon learning of United Cigarette Corporation’s use of ESSO on its cigarette products, Esso
Standard Eastern, Incorporated filed an action for trademark infringement. It asserted that the former’s use
of the word ESSO in its products was being carried out to deceive the public as to the quality of its cigarette
to the detriment and disadvantage of its own product.

Meanwhile, United Cigarette Corporation, in its answer, admitted the use of ESSO in its cigarette
products which is not identical to those product produced and sold by Esso Standard Eastern, Incorporated.
Hence, there was no trademark infringement since it is indispensable that the mark must be used by one
person in connection or competition with goods of the same kind.

The Court of First Instance ruled in favor of Esso Standard Eastern, Incorporated. However, the
Court of Appeals reversed such decision. Hence this petition.

ISSUE:

Whether or not there is trademark infringement.

HELD:

None. Implicit in this definition is the concept that the goods must be so related that there is a
likelihood either of confusion of goods or business. But likelihood of confusion is a relative concept; to be
determined only according to the particular, and sometimes peculiar, circumstances of each case. Goods
are related when they belong to the same class or have the same descriptive properties; when they possess
the same physical attributes or essential characteristics with reference to their form, composition, texture
or quality. They may also be related because they serve the same purpose or are sold in grocery stores.

In this situation, the goods are obviously different from each other with "absolutely no iota of
similitude" as stressed in respondent court's judgment. They are so foreign to each other as to make it
unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods. The mere
fact that one person has adopted and used a trademark on his goods does not prevent the adoption and
use of the same trademark by others on unrelated articles of a different kind.
246 CORPORATION, doing business under the name and style of ROLEX MUSIC LOUNGE vs. HON.
REYNALDO B. DAWAY, in his capacity as Presiding Judge of Branch 90 of the Regional Trial Court of
Quezon City, MONTRES ROLEX S.A. and ROLEX CENTRE PHIL. LIMITED
G. R. No. 157216 November 20, 2003 FIRST DIVISION YNARES-SANTIAGO, J.

FACTS:

Respondents Montres Rolex S.A. and Rolex Centre Phil., Limited, owners of Rolex and Crown
Device, filed against petitioner 246 Corporation the instant suit for trademark infringement and damages
with prayer for the issuance of a restraining order or writ of preliminary injunction before the Regional Trial
Court. It alleged that 246 Corporation has been doing business under the name of “Rolex Music Lounge”
since July of 1996.

In its answer, 246 Corporation, by way of affirmative defense, argued that respondents Montres
Rolex S.A. and Rolex Centre Phil., Limited has no cause of action against it since their products are
unrelated and, therefore, cannot give rise to trademark infringement. Further, 246 Corporation questioned
Atty. Alonzo Ancheta’s authority to sign and verify the complaint against forum shopping. Thereafter, 246
Corporation filed a motion for preliminary hearing on its affirmative defenses. On motion, the trial court
issued a subpoena ad testificandum requiring Atty. Alonzo Ancheta to appear at the preliminary hearing.
Montres Rolex S.A. and Rolex Centre Phil., Limited, in return, filed a Comment and Opposition to the motion
for preliminary hearing and a motion to quash the subpoena ad testificandum.

The RTC quashed the subpoena ad testificandum and denied petitioners motion for preliminary
hearing on affirmative defenses with motion to dismiss. petition for certiorari with the Court of Appeals
contending that the trial court gravely abused its discretion. On appeal, the Court dismissed the petition.
The motion for reconsideration filed by was likewise denied. Hence, the instant petition.

ISSUE:

Whether or not there is trademark infringement.

HELD:

The Court cannot yet resolve the merits of the present controversy. Section 123.1(f) of the
Intellectual Property Code reads:

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

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in
accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or
services which are not similar to those with respect to which registration is applied for: Provided, That use
of the mark in relation to those goods or services would indicate a connection between those goods or
services, and the owner of the registered mark: Provided, further, That the interest of the owner of the
registered mark are likely to be damaged by such use;

Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to
respondents business involving watches, clocks, bracelets, etc. However, the Court cannot yet resolve the
merits of the present controversy considering that the requisites for the application of Section 123.1(f),
which constitute the kernel issue at bar, clearly require determination facts of which need to be resolved at
the trial court.
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC. vs. RENAUD
COINTREAU & CIE and LE CORDON BLEU INT'L., B.V.
G.R. No. 185830 June 5, 2013 SECOND DIVISION PERLAS-BERNABE, J.

FACTS:

Cointreau, a partnership registered under the laws of France, filed before the then Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT) of the Department of Trade and Industry a
trademark application for the mark "LE CORDON BLEU & DEVICE." Thereafter, Ecole De Cuisine Manille,
Inc. (Ecole) filed an opposition to the subject application, averring that: (a) it is the owner of the mark "LE
CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has been using since 1948 in cooking and other
culinary activities, including in its restaurant business; and (b) Cointreau’s use of the subject mark will
actually create confusion, mistake, and deception to the buying public as to the origin and sponsorship of
the goods, and cause great and irreparable injury and damage to Ecole’s business reputation and goodwill
as a senior user of the same.

In its answer, Cointreau argued that it has filed its application to several countries, Philippines
included, that it is a world renown culinary school, and that it has trained students in over eighty countries,
including the directress of Ecole, Ms. Lourdes L. Dayrit. Thus, it averred that Ecole’s claim of being the
exclusive owner of the subject mark is a fraudulent misrepresentation.

The Bureau of Legal Affairs (BLA) ruled in favor of Ecole. However, the IPO Director General
reversed such ruling. On appeal, the Court affirmed the ruling of the IPO Director General. Hence this
petition.

ISSUE:

Whether or not Cointreau is the true and legal owner of the subject mark.

HELD:

Yes. Foreign marks which are not registered are still accorded protection against infringement
and/or unfair competition. The Philippines and France, Cointreau’s country of origin, are both signatories
to the Paris Convention for the Protection of Industrial Property (Paris Convention).

Further, it is undisputed that Cointreau has been using the subject mark in France since 1895, prior
to Ecole’s averred first use of the same in the Philippines in 1948, of which the latter was fully aware thereof.
In fact, Ecole’s present directress, Ms. Lourdes L. Dayrit (and even its foundress, Pat Limjuco Dayrit), had
trained in Cointreau’s Le Cordon Bleu culinary school in Paris, France. It is thus clear that at the time Ecole
started using the subject mark, the same was already being used by Cointreau, albeit abroad, of which
Ecole’s directress was fully aware, being an alumna of the latter’s culinary school in Paris, France. Hence,
Ecole cannot claim any tinge of ownership whatsoever over the subject mark as Cointreau is the true and
lawful owner thereof.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, as amended, has already dispensed with the requirement of
prior actual use at the time of registration. Thus, there is more reason to allow the registration of the
subject mark under the name of Cointreau as its true and lawful owner.
BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK
ORTHOPAEDIE GMBH) vs. PHILIPPINE SHOE EXPO MARKETING CORPORATION
G.R. No. 194307 November 20, 2013 SECOND DIVISION PERLAS-BERNABE, J.

FACTS:

Birkenstock Orthopaedie GMBH and Co. KG is a German company who applied for various
trademark registrations before the IPO. However, its registration proceedings were suspended due to an
existing registration of the mark "BIRKENSTOCK AND DEVICE" filed by Shoe Town International and
Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing
Corporation.

Due to this, Birkenstock Orthopaedie GMBH and Co. KG filed a petition for cancellation of
Registration on the ground that it is the lawful and rightful owner of the Birkenstock marks. During its
pendency, however, Shoe Town International and Industrial Corporation and/or Philippine Shoe Expo
Marketing Corporation failed to file the required 10th Year Declaration of Actual Use thus, cancelling their
registration. Accordingly, the cancellation case was dismissed for being moot and academic.

Such cancellation gave way to the publication of Birkenstock Orthopaedie GMBH and Co. KG’s
application for trademark registration in the the IPO e-Gazette. In response, Philippine Shoe Expo
Marketing Corporation filed three (3) separate verified notices of oppositions

The Bureau of Legal Affairs (BLA) ruled in favor of Philippine Shoe Expo Marketing Corporation.
However, the IPO Director General reversed such decision. On appeal, the Court reinstated the BLA’s
ruling in favor of Philippine Shoe Expo Marketing Corporation.

ISSUE:

Whether or not the subject marks should be allowed registration in the name of Birkenstock
Orthopaedie GMBH and Co. KG.

HELD:

Yes. Section 12 of Republic Act No. (RA) 166 states that:

Section 12. Duration. – Each certificate of registration shall remain in force for twenty years: Provided, That
registrations under the provisions of this Act shall be cancelled by the Director, unless within one year
following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of registration, the
registrant shall file in the Patent Office an affidavit showing that the mark or trade-name is still in use or
showing that its non-use is due to special circumstance which excuse such non-use and is not due to any
intention to abandon the same, and pay the required fee.

The aforementioned provision clearly reveals that failure to file the DAU within the requisite period
results in the automatic cancellation of registration of a trademark. In turn, such failure is tantamount to the
abandonment or withdrawal of any right or interest the registrant has over his trademark. Further, it is not
the application or registration of a trademark that vests ownership thereof, but it is the ownership of a
trademark that confers the right to register the same. In the instant case, petitioner was able to establish
that it is the owner of the mark "BIRKENSTOCK." It submitted evidence relating to the origin and history of
"BIRKENSTOCK" and its use in commerce long before Philippine Shoe Expo Marketing Corporation was
able to register the same here in the Philippines.
FREDCO MANUFACTURING CORPORATION vs. PRESIDENT AND FELLOWS OF HARVARD
COLLEGE (HARVARD UNIVERSITY)
G.R. No. 185917 June 1, 2011 SECOND DIVISION CARPIO, J.

FACTS:

Fredco Manufacturing Corporation (Fredco) filed a Petition for Cancellation of Registration No.
56561 before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) against President and
Fellows of Harvard College (Harvard University) alleging that the mark "Harvard" for t-shirts, polo
shirts, sandos, briefs, jackets and slacks was first used in the Philippines on 2 January 1982 by New York
Garments Manufacturing & Export Co., Inc., a domestic corporation and Fredco’s predecessor-in-interest.

Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark
"Harvard" in numerous countries worldwide, including the Philippines. The name and mark "Harvard" was
adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, U.S.A. The name and
mark "Harvard" was allegedly used in commerce as early as 1872 and that Harvard University is over 350
years old and is a highly regarded institution of higher learning. Harvard University further alleged that the
name and the mark have been rated as one of the most famous brands in the world. Moreover, Harvard
University alleged that it has three (3) valid and existing certificates of trademark registration in the
Philippines.

The Bureau of Legal Affairs ruled in favor of Fredco. However, the IPO Director General reversed such
decision. On Appeal, the Court upheld the decision of the IPO Director General. Hence this petition.

ISSUE:

Whether or not Fredco is the rightful owner of the trademark.

HELD:

No. Harvard University’s registration of the name "Harvard" is based on home registration which is
allowed under Section 37 of R.A. No. 166. Although Section 2 of the Trademark law (R.A. 166) requires for
the registration of trademark that the applicant thereof must prove that the same has been actually in use
in commerce or services for not less than two (2) months in the Philippines before the application for
registration is filed, where the trademark sought to be registered has already been registered in a foreign
country that is a member of the Paris Convention, the requirement of proof of use in the commerce in the
Philippines for the said period is not necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this country.

Further, Fredco’s registration of the mark "Harvard" should not have been allowed because Section
4(a) of R.A. No. 166 prohibits the registration of a mark "which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs x x x."

Lastly, "Harvard" is the trade name of the world famous Harvard University, and it is also a
trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade name "Harvard" even
without registration of such trade name in the Philippines. This means that no educational entity in the
Philippines can use the trade name "Harvard" without the consent of Harvard University. Likewise, no
entity in the Philippines can claim, expressly or impliedly through the use of the name and mark
"Harvard," that its products or services are authorized, approved, or licensed by, or sourced from, Harvard
University without the latter’s consent.
KABUSHI KAISHA ISETAN, also known and trading as ISETAN CO., LTD. vs. THE INTERMEDIATE
APPELLATE COURT, THE DIRECTOR OF PATENTS, and ISETANN DEPARTMENT STORE, INC.
G.R. No. L-75420 November 15, 1991 SECOND DIVISION GUTIERREZ, JR., J.

FACTS:

Kabushi Kaisha Isetan (Kabushi) is a Japanses corporation and the owner of the trademark “Isetan”
and the “Young Leaves Design.” Isetann Department Store (Isetann), on the other hand, is a domestic
corporation organized and existing under the laws of the Philippines. The former alleges that it first used
the trademark Isetan on November 5, 1936. It states that the trademark is a combination of "Ise" taken from
"Iseya" the first name of the rice dealer in Kondo, Tokyo in which the establishment was first located and
"Tan" which was taken from "Tanji Kosuge the First." On October 3, 1983, the petitioner applied for the
registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office. Whereas the latter,
claims that it used the word "Isetann" as part of its corporated name and on its products particularly on
shirts in Joymart Department Store sometime in January 1979. The suffix "Tann" means an altar, the place
of offering in Chinese and this was adopted to harmonize the corporate name and the corporate logo of two
hands in cup that symbolizes the act of offering to the Supreme Being for business blessing.

On May 30, 1980 and May 20, 1980, the private respondent registered "Isetann Department Store,
Inc." and Isetann and Flower Design in the Philippine Patent Office as well as with the Bureau of Domestic
Trade. However, Kabushi assailed such registration and filed for the cancellation of such arguing that it is
the rightful owner of the trademark and Isetann’s continuous use its trademark were with the illegal and
immoral intention of cashing in on the long established goodwill and popularity of the petitioner's reputation,
thereby causing great and irreparable injury and damage to it. Further, Kabushi invoked the Convention of
Paris of March 20, 1883 for the Protection of Industrial Property of which the Philippines and Japan are
both members.

The SEC’s Hearing officer denied Kabushi’s petition. However, through an appeal to the
Commission, such decision was reversed. Due to Isetann’s motion for reconsideration, the ruling of the
hearing officer was later on upheld. Kabushi filed its motion for reconsideration but was denied. On appeal
to the Court of Appeals, the court also denied Kabushi’s petition.

ISSUE:

Whether or not Kabushi is the true owner of the trademark.

HELD:

No. A fundamental principle of Philippine Trademark Law is that actual use in commerce in the
Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. The records
show that the petitioner has never conducted any business in the Philippines. It has never promoted its
tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. It is
unknown to Filipinos except the very few who may have noticed it while travelling abroad. It has never paid
a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks.

What is involved in this case is not so much a trademark as a tradename. Isetann Department
Store, Inc. is the name of a store and not of product sold in various parts of the country. The mere origination
or adoption of a particular tradename without actual use thereof in the market is insufficient to give any
exclusive right to its use, even though such adoption is publicly declared, such as by use of the name in
advertisements, circulars, price lists, and on signs and stationery.
SEHWANI, INCORPORATED and/or BENITA'S FRITES, INC. vs.
IN-N-OUT BURGER, INC.

FACTS:

Respondent In-n-Out Burger, Inc., a foreign corporation organized under the laws of California,
U.S.A., and not doing business in the Philippines, alleged that it is the owner of the tradename "IN-N-OUT"
and trademarks "IN-N-OUT," "IN-N-OUT Burger & Arrow Design" and "IN-N-OUT Burger Logo," which are
used in its business since 1948 up to the present. It applied with the IPO for the registration of its trademark
"IN-N-OUT Burger & Arrow Design" and servicemark "IN-N-OUT." However, In-n-Out Burger, Inc.
discovered that petitioner Sehwani, Inc. already obtained a Trademark for the mark "IN N OUT" (THE
INSIDE OF THE LETTER "O" FORMED LIKE A STAR) without its authority. Hence, it demanded that
petitioner Sehwani, Inc. desist from claiming ownership of the mark and to voluntarily cancel its trademark
registration.

Sehwani, Inc, however, refused to accede to In-n-Out Burger, Inc.’s demands and filed resulting to
the filing of this case. In their answer with counterclaim, they alleged that In-n-Out Burger, Inc. cannot sue
in the Philippines since they are not doing business in this jurisdiction and that they have no cause of action
against Sehwani, Inc because their mark is not locally registered. Petitioner Sehwani, Inc. also claimed that
as the registered owner of the "IN-N-OUT" mark, it enjoys the presumption that the same was validly
acquired and that it has the exclusive right to use the mark. Moreover, petitioners argued that other than
the bare allegation of fraud in the registration of the mark, respondent failed to show the existence of any
of the grounds for cancellation thereof.

In its decision, Bureau Director Estrellita Beltran-Abelardo ruled in favor of In-n-Out Burger, Inc.
Likewise, Sehwani, Inc.’s Motion for Reconsideration was denied for being filed out of time. On appeal,
Sehwani’s petition was denied. Further, the Court of Appeals held that it was guilty of unfair competition.

ISSUE:

Whether or not the Respondent has the legal capacity to sue for the protection of its trademarks
albeit it is not doing business in the Philippines.

HELD:

Yes. Section 160 RA No. 8293 provides for the right of foreign corporations to sue in trademark or
service mark enforcement action, provided that it meets the requirements under Section 3 thereof, which
are a) Any convention, treaty or agreement relation to intellectual property right or the repression of unfair
competition wherein Philippines is also a party; and b) An extension therein of reciprocal rights.

Moreoever, Article 6 of The Paris Convention, which governs the protection of well-known trademarks, is a
self-executing provision and does not require legislative enactment to give it effect in the member country.
The essential requirement therein is that the trademark must be well-known in the country where protection
is sought. In this case, Director Beltran-Abelardo found that In-n-out Burger and Arrow Design is an
internationally well-known mark as evidenced by its trademark registrations around the world and its
comprehensive advertisements therein.
E.Y. INDUSTRIAL SALES, INC. and ENGRACIO YAP vs. SHEN DAR ELECTRICITY AND
MACHINERY CO., LTD.
G.R. No. 184850 October 20, 2010 FIRST DIVISION VELASCO, JR., J

FACTS:

EYIS is a domestic corporation engaged in the production, distribution and sale of air compressors
and other industrial tools and equipment. Petitioner Engracio Yap is the Chairman of the Board of Directors
of EYIS. Respondent Shen Dar is a Taiwan-based foreign corporation engaged in the manufacture of air
compressors and is the supplier of EYIS for air compressors from 1997 to 2004. Both companies claimed
to have the right to register the trademark "VESPA" for air compressors. Both parties were granted
trademark registrations for the use of “VESPA” in their products.

Thereafter, Shen Dar filed a petition for the cancellation of EYIS’ registration arguing that the
issuance of the certificate of registration in favor of EYIS violated the Intellectual Property Code. Further, it
claimed the right of prior and exclusive use and that EYIS is merely a distributor in the Philippines.

In its Answer, EYIS and Yap denied the claim of Shen Dar to be the true owners of the mark
"VESPA" being the sole assembler and fabricator of air compressors. They further alleged that the air
compressors that Shen Dar allegedly supplied them bore the mark "SD” and not "VESPA." Moreover, EYIS
argued that Shen Dar, not being the owner of the mark, could not seek protection from the provisions of the
Paris Convention or the IP Code.

The Bureau of Legal Affairs ruled in favor of EYIS. Such decision was upheld by the IPO Director
General and cancelled the registration of Shen Dar. However, the Court of Appeals, reversed the decision.
Hence this petition.

ISSUES:

1. Whether or not the IPO Director General can validly cancel Shen Dar’s certificate of
registration.
2. Whether or not EYIS is the true owner of the trademark “VESPA.”

HELD:

1. Yes. While the instant case involves a petition to cancel the registration of the Appellees trademark
VESPA, the interest of justice requires that the Certificate of Registration be cancelled. While the
normal course of proceedings should have been the filing of a petition for cancellation of Certificate
of Registration, that would involve critical facts and issues that have already been resolved in this
case. To allow the Applicant to still maintain in the Trademark Registry Certificate of Registration
would nullify the exclusive rights of Appellee as the true and registered owner of the mark VESPA
and defeat the purpose of the trademark registration system. Further, technical rules
2. Yes. By itself, registration is not a mode of acquiring ownership. When the applicant is not the
owner of the trademark being applied for, he has no right to apply for registration of the same.
Registration merely creates a prima facie presumption of the validity of the registration, of the
registrants ownership of the trademark and of the exclusive right to the use thereof. Such
presumption, just like the presumptive regularity in the performance of official functions, is
rebuttable and must give way to evidence to the contrary. Shen Dar failed to refute the evidence
cited by the BLA in its decision. More importantly, Shen Dar failed to present sufficient evidence to
prove its own prior use of the mark "VESPA."
MELBAROSE R. SASOT and ALLANDALE R. SASOT vs. PEOPLE OF THE PHILIPPINES, The
Honorable Court of Appeals, and REBECCA G. SALVADOR, Presiding Judge, RTC, Branch 1
G.R. NO. 143193 June 29, 2005 SECOND DIVISION AUSTRIA-MARTINEZ, J.

FACTS:

The National Bureau of Investigation conducted an investigation pursuant to a complaint by the


NBA Properties, Inc., against Melbaros R. Sasot and Allandale R. Sasot (Sasot) due to a possible violation
regarding unfair competition.

NBA Properties, Inc. is a foreign corporation organized under the laws of the United States of
America, and is the registered owner of NBA trademarks and names of NBA basketball teams. During the
investigation, it was discovered that petitioners are engaged in the manufacture, printing, sale, and
distribution of counterfeit "NBA" garment products. Hence, it recommended petitioners' prosecution for
unfair competition under Article 189 of the Revised Penal Code.

Thereafter, through a Special Power of Attorney, a complaint was filed. As a response, Sasot
moved to Quash the complaint arguing that the facts do not constitute an offense and for lack of jurisdiction.
The trial court sustained the action and denied the Motion to Quash. As a result, Sasot filed a special civil
action for certiorari with the Court of Appeals which was likewise denied. Sasot’s Motion for Reconsideration
was likewise denied by the Court.

ISSUE:

Whether or not a foreign corporation not engaged and licensed to do business in the Philippines
can maintain an action for unfair competition.

HELD:

Yes. If prosecution follows after the completion of the preliminary investigation being conducted by
the Special Prosecutor the information shall be in the name of the People of the Philippines and no longer
the petitioner which is only an aggrieved party since a criminal offense is essentially an act against the
State. It is the latter which is principally the injured party although there is a private right violated. Petitioner's
capacity to sue would become, therefore, of not much significance in the main case. We cannot allow a
possible violator of our criminal statutes to escape prosecution upon a far-fetched contention that the
aggrieved party or victim of a crime has no standing to sue. The crime of Unfair Competition punishable
under Article 189 of the Revised Penal Code is a public crime. It is essentially an act against the State and
it is the latter which principally stands as the injured party. The complainant's capacity to sue in such case
becomes immaterial.
LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC. vs. CLINTON APPARELLE, INC.
G.R. NO. 138900 September 20, 2005 SECOND DIVISION TINGA, J.

FACTS:

In a complaint, LEVI STRAUSS & CO. (LS & Co.), a foreign corporation duly organized and existing
under the laws of the State of Delaware, U.S.A., and engaged in the apparel business, alleged that it is the
, is the owner by prior adoption and use since 1986 of the internationally famous "Dockers and Design"
trademark. Such trademark was first used by LEVI STRAUSS (PHILS.), INC. (LSPI), a domestic corporation
engaged in the manufacture, sale and distribution of various products bearing trademarks owned by LS &
Co., in the Philippines in or about May 1988. Thereafter, they discovered that a product bearing the brand
name "Paddocks" similar to the "Dockers and Design" trademark owned by and registered in the name of
LS & Co., exists in the Philippines without its consent. LS & Co. and LSPI then filed a complaint against
Clinton Aparrelle, Inc. (Clinton) with a prayer for a restraining order.

Clinton failed to appear despite notice. The RTC then issued a TRO and, after, a writ of preliminary
injunction against Clinton. Clinton thereafter filed a Motion to Dismiss and a Motion for Reconsideration of
the Order granting the writ of preliminary injunction which was later on denied. On appeal, the Court granted
Clinton’s Petition for certiorari , prohibition and mandamus with prayer for the issuance of a temporary
restraining order and/or writ of preliminary injunction. Having their Motion for Reconsideration denied, LS
& Co. and LSPI filed this present petition.

ISSUE:
Whether or not LS & Co. and LSPI are entitled to the injunctive relief granted by the Court.

HELD:

No. LS & Co. and LSPI’s right to injunctive relief has not been clearly and unmistakably
demonstrated. The right has yet to be determined. Petitioners also failed to show proof that there is material
and substantial invasion of their right to warrant the issuance of an injunctive writ. Neither were petitioners
able to show any urgent and permanent necessity for the writ to prevent serious damage.

Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner of the
famous mark and other parties; or (2) likelihood of confusion, mistake or deception. Subject to the principles
of equity, the owner of a famous mark is entitled to an injunction "against another person's commercial use
in commerce of a mark or trade name, if such use begins after the mark has become famous and causes
dilution of the distinctive quality of the mark." This is intended to protect famous marks from subsequent
uses that blur distinctiveness of the mark or tarnish or disparage it. Based on the foregoing, to be eligible
for protection from dilution, there has to be a finding that: (1) the trademark sought to be protected is famous
and distinctive; (2) the use by respondent of "Paddocks and Design" began after the petitioners' mark
became famous; and (3) such subsequent use defames petitioners' mark. In the case at bar, petitioners
have yet to establish whether "Dockers and Design" has acquired a strong degree of distinctiveness and
whether the other two elements are present for their cause to fall within the ambit of the invoked protection.
The Trends MBL Survey Report which petitioners presented in a bid to establish that there was confusing
similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin.
PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G. vs. THE INTERMEDIATE APPELLATE COURT
and MIL-ORO MANUFACTURING CORPORATION
G.R. No. 75067 February 26, 1988 EN BANC GUTIERREZ, JR. J.

FACTS:

PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G. (Puma), a foreign corporation duly


organized and existing under the laws of the Federal Republic of Germany and the manufacturer and
producer of "PUMA PRODUCTS", filed a complaint for infringement of patent or trademark with a prayer
for the issuance of a writ of preliminary injunction against Mil-Oro Manufacturing Corporation (Mil-Oro)
before the Regional Trial Court of Makati.

The trial court issued a temporary restraining order, restraining the Mil-Oro and the Director of
Patents from using the trademark "PUMA" or any reproduction, counterfeit copy or colorable imitation
thereof, and to withdraw from the market all products bearing the same trademark. As a response, Mil-Oro
filed a motion to dismiss on the grounds that the petitioner's complaint states no cause of action, petitioner
has no legal personality to sue, and litis pendentia. However, such motion was denied by the trial court.
Later on, upon appeal, the Court of Appeals reversed the decision of the Regional Trial Court.

ISSUES:

1. Whether or not Puma had the legal capacity to sue.


2. Whether or not the doctrine of lis pendens is available to the case at hand.
3. Whether or not the writ of injunction was properly issued.

HELD:

1. Yes. In Western Equipment and Supply Co. v. Reyes, this Court held that a foreign corporation
which has never done any business in the Philippines and which is unlicensed and unregistered to
do business here, but is widely and favorably known in the Philippines through the use therein of
its products bearing its corporate and tradename, has a legal right to maintain an action in the
Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein
bearing the same name as the foreign corporation, when it appears that they have personal
knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the
proposed domestic corporation is to deal and trade in the same goods as those of the foreign
corporation.
2. No. Puma submits that the relief prayed for in its civil action is different from the relief sought in the
Inter Partes cases. More important, however, is the fact that for lis pendens to be a valid ground
for the dismissal of a case, the other case pending between the same parties and having the same
cause must be a court action.
3. No. As regards the propriety of the issuance of the writ of preliminary injunction, the records show
that herein private respondent was given the opportunity to present its counter-evidence against
the issuance thereof but it intentionally refused to do so to be consistent with its theory that the civil
case should be dismissed in the first place. In the case of La Chemise Lacoste, S.A. vs. Fernandez,
the court reminded that Judges all over the country are well advised to remember that court
processes should not be used as instruments to, unwittingly or otherwise, aid counterfeiters and
intellectual pirates, tie the hands of the law as it seeks to protect the Filipino consuming public and
frustrate executive and administrative implementation of solemn commitments pursuant to
international conven-tions and treaties.
TANDUAY DISTILLERS, INC. vs. GINEBRA SAN MIGUEL, INC.
G.R. NO. 164324 August 14, 2009 FIRST DIVISION CARPIO, J.

FACTS:

A new gin product distinguished by its sweet smell, smooth taste, and affordable price was
developed and registered to the Intellectual Property Office by Tanduay, a corporation organized and
existing under Philippine laws, has been engaged in the liquor business since 1854. Tanduay claims that it
engaged the services of an advertising firm to develop a brand name and a label for its new gin product.
The brand name eventually chosen was "Ginebra Kapitan." Further, Tanduay alleged that the design was
intended to distinguish their product from the leading competitor, “Ginebra San Miguel,” produced by San
Miguel.

Thereafter, San Miguel’s counsel sent a letter to Tanduay asking the latter to cease and desist from
using the mark "Ginebra" and from committing acts that violate San Miguel's intellectual property rights.
San Miguel then filed a complaint for trademark infringement, unfair competition and damages, with
applications for issuance of TRO and Writ of Preliminary Injunction against Tanduay.

The RTC ruled in favor of San Miguel and issued a Temporary Restraining Order and,
subsequently, a Writ of Preliminary Injunction. On appeal, the Court of Appeals dismissed Tanduay’s
petition and motion for reconsideration.

ISSUE:

Whether or not San Miguel is entitled to the writ of preliminary injunction granted by the trial court
as affirmed by the CA.

HELD:

No. We hold that the CA committed a reversible error. The issue in the main case is San Miguels
right to the exclusive use of the mark Ginebra. The two trademarks Ginebra San Miguel and Ginebra
Kapitan apparently differ when taken as a whole, but according to San Miguel, Tanduay appropriates the
word Ginebra which is a dominant feature of San Miguels mark. It is not evident whether San Miguel has
the right to prevent other business entities from using the word Ginebra. It is not settled (1) whether Ginebra
is indeed the dominant feature of the trademarks, (2) whether it is a generic word that as a matter of law
cannot be appropriated, or (3) whether it is merely a descriptive word that may be appropriated based on
the fact that it has acquired a secondary meaning.

The issue that must be resolved by the trial court is whether a word like Ginebra can acquire a
secondary meaning for gin products so as to prohibit the use of the word Ginebra by other gin manufacturers
or sellers. This boils down to whether the word Ginebra is a generic mark that is incapable of appropriation
by gin manufacturers. In this case, a cloud of doubt exists over San Miguels exclusive right relating to the
word Ginebra. San Miguels claim to the exclusive use of the word Ginebra is clearly still in dispute because
of Tanduays claim that it has, as others have, also registered the word Ginebra for its gin products. This
issue can be resolved only after a full-blown trial. We find that San Miguels right to injunctive relief has not
been clearly and unmistakably demonstrated.

The right to the exclusive use of the word Ginebra has yet to be determined in the main case. The
trial courts grant of the writ of preliminary injunction in favor of San Miguel, despite the lack of a clear and
unmistakable right on its part, constitutes grave abuse of discretion amounting to lack of jurisdiction. We
believe that the issued writ of preliminary injunction, if allowed, disposes of the case on the merits as it
effectively enjoins the use of the word ginebra without the benefit of a full-blown trial.
SUPERIOR COMMERCIAL ENTERPRISES, INC. vs. KUNNAN ENTERPRISES LTD. and
SPORTS CONCEPT & DISTRIBUTOR, INC.
G.R. No. 169974 April 20, 2010 SECOND DIVISION BRION, J.

FACTS:

Superior Commercial Enterprises, Inc. (Superior) filed a complaint for trademark infringement and
unfair competition with preliminary injunction against Kunnan Enterprises Ltd. (Kunnan) and Sports
Concept and Distributor, Inc. (Sports Concept) claiming that it was the owner and the first one to use the
trademarks, trading styles, company names and business names "KENNEX", "KENNEX & DEVICE", "PRO
KENNEX" and "PRO-KENNEX."

On the other hand, Kunnan disputed Superior’s claim of ownership and alleged that the latter was
merely a distributor of their products in the Philippines. Further, it argued that Superior fraudulently
registered the trademark under its name.

Upon the termination of its distributorship agreement with Superior, Kunnan appointed Sports
Concept & Distributor, Inc. (Sports Concept) as its new distributor. Subsequently, Kunnan also caused the
publication of a Notice and Warning in the Manila Bulletin's January 29, 1993 issue, stating that (1) it is the
owner of the disputed trademarks; (2) it terminated its Distributorship Agreement with Superior; and (3) it
appointed Sports Concept as its exclusive distributor. This notice prompted Superior to file its Complaint
for Infringement of Trademark and Unfair Competition with Preliminary Injunction against Kunnan.

The Regional Trial Court (RTC) ruled in favor of Superior. However, during the pendency of the
appeal, the Bureau of Legal Affairs held Kunnan as the the prior user and owner of the trademark. Likewise,
the Court of Appeals reversed the decision the the RTC.

ISSUE:

Whether or not Superior, as a mere distributor, can be held as the true owner of the trademark.

HELD:

No. As to whether Kunnan was able to overcome the presumption of ownership in favor of Superior,
the former sufficiently established the fraudulent registration of the questioned trademarks by Superior. The
Certificates of Registration for the KENNEX trademark were fraudulently obtained by petitioner Superior.
Even before PROKENNEX products were imported by Superior into the Philippines, the same already
enjoyed popularity in various countries and had been distributed worldwide, particularly among the sports
and tennis enthusiasts since 1976. Riding on the said popularity, Superior caused the registration thereof
in the Philippines under its name when it knew fully well that it did not own nor did it manufacture the
PROKENNEX products. Superior claimed ownership of the subject marks and failed to disclose in its
application with the IPO that it was merely a distributor of KENNEX and PROKENNEX products in the
Philippines. Further, in the issue on unfair competition, no evidence exists showing that Kunnan ever
attempted to pass off the goods it sold as those of Superior. In addition, there is no evidence of bad faith or
fraud imputable to Kunnan in using the disputed trademarks. Specifically, Superior failed to adduce any
evidence to show that Kunnan by the above-cited acts intended to deceive the public as to the identity of
the goods sold or of the manufacturer of the goods sold. In McDonald's v. L.C. Big Mak Burger we held that
there can be trademark infringement without unfair competition such as when the infringer discloses on the
labels containing the mark that he manufactures the goods, thus preventing the public from being deceived
that the goods originate from the trademark owner. In this case, no issue of confusion arises because the
same manufactured products are sold; only the ownership of the trademarks is at issue.
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD., SHANGRI-LA PROPERTIES, INC.,
MAKATI SHANGRI-LA HOTEL & RESORT, INC., and KUOK PHILIPPINES PROPERTIES, INC. vs.
DEVELOPERS GROUP OF COMPANIES, INC.
G.R. No. 159938 March 31, 2006 SECOND DIVISION GARCIA, J.

FACTS:

On June 21, 1988, the Shangri-La International Hotel Management filed with the Bureau of
Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the cancellation of the
registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies,
Inc., on the ground that the same was illegally and fraudulently obtained and appropriated for the latter's
restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject
mark and logo; that it has been using the said mark and logo for its corporate affairs and business since
March 1962 and caused the same to be specially designed for their international hotels in 1975, much
earlier than the alleged first use thereof by the Developers Group in 1982. It also filed with the BPTTT its
own application for registration of the subject mark and logo. The Developers Group filed an opposition to
the application, which was docketed as Inter Partes Case No. 3529. Almost 3 years later, or on April 15,
1991, the Developers Group instituted with the RTC of Quezon City a complaint for infringement and
damages with prayer for injunction.

On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the
infringement case on account of the pendency of the administrative proceedings before the BPTTT.

The trial court ruled in favor of Developers Group of Companies, Inc. (DGCI). On appeal, the
Court of Appeals affirmed the decision of the Regional Trial Court.

ISSUE:

Whether or not the CA erred in finding that respondent had the right to file an application for
registration of the "Shangri-La" mark and "S" logo although respondent never had any prior actual
commercial use thereof.

HELD:

No. The earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation of
the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the subsequent filing of
an infringement case by registrant Developers Group.

The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is
based, remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an
infringement court. As such, Developers Group's Certificate of Registration in the principal register
continues as "prima facie evidence of the validity of the registration, the registrant's ownership of the mark
or trade-name, and of the registrant's exclusive right to use the same in connection with the goods,
business or services specified in the certificate." Since the certificate still subsists, Developers Group may
thus file a corresponding infringement suit and recover damages from any person who infringes upon the
former's rights.