3.
Distilleria Washington v CA In Cagayan Valley v CA, protection is granted to a manufacturer who successfully
GR NO. 120961
17 October 1996
By: Migs
Topic: Intro to IP Law
Petitioners: Distelleria Washington, Inc.
Respondents: CA and La Tondeña Distillers, Inc. (LTDI)
Ponente: Vitug, J.
RECIT-READY/SUMMARY: (OPTIONAL)
DOCTRINE: A trademark refers to a word, name, symbol, emblem, sign, or device or
any combination adopted and used by a merchant to identify and distinguish from
others his goods of commerce. It is an intellectual creation that is susceptible to
ownership.
FACTS:
 The initial suit was for manual delivery with damages instituted by LTDI
against Washington.
 LTDI sought to seize from Washington 18,157 empty 350 cc white flint
bottles bearing the blown-in marks of LTDI and Ginebra San Miguel. The
court then issued an order of replevin for the seizure of such bottles.
 LTDI averred that the bottles were used by Washington for its own Gin
Seven products without its consent. Additionally, it asserted that it was
entitled to the protection under RA 623.
 Washington, however, argued that RA 623 should not apply to gin, which
is an alcoholic beverage unlike that of “soda water, mineral or aerated
water, ciders, milks, cream, or other lawful beverages” mentioned in the
Sec. 1 of the said law. Therefore, ownership of the bottles should be held
transferred to the buyers upon sale.
 RTC: The complaint is dismissed and LTDI is ordered to return the bottles
seized or to indemnify Washington if it cannot return the bottles.
 CA: Reversed the RTC ruling.
ISSUE:
 W/N Washington is the rightful owner of the bottles? YES
HELD/RATIO:
RA 623 extends trademark protection in the use of containers registered with the
PH Patent Office.
registered with the PPO its duly stamped or marked bottles and other similar
containers. The mere use of it without the written consent of the manufacturer is
prohibited, the only exceptions being native products such as bagoong or patis.
As for Washington’s argument that liquor is not under the coverage of the law, the
Court ruled that it holds no merit. The legislative intent of the law is to give
protection to all marked bottles and containers of all lawful beverages, which
includes alcohol since while it is regulated, it is not prohibited.
Hence, the Court has no choice but to sustain the right of LTDI to the injunctive
merit against the unauthorized use of its containers. However, the remedy claimed
by LTDI has an ownership issue due to the suit being one for replevin or manual
delivery, which requires the claimant to show that he is either the owner or that he
is entitled to the possession of the object sought to be recovered.
The Court then discussed that a trademark refers to a word, name, symbol,
emblem, sign, or device or any combination adopted and used by a merchant to
identify and distinguish from others his goods of commerce. It is an intellectual
creation that is susceptible to ownership.
The incorporeal right, however, is distinct from the property in the material object
subject to it. Ownership in one does not vest ownership in the other. Thus, the
transfer of the IP will not necessarily constitute a conveyance of the thing it covers,
nor would a conveyance of the latter would imply the transfer of the intellectual
right.
RA 623, in affording trademark protection, has expressed a prima facie
presumption of illegal use by a possessor whenever such use or possession is
without the written permission of the registered manufacturer. In this case, the
Court sees no other logical purpose for Washington’s insistent to keep the bottles
except for such use.
The practical and feasible alternative is therefore to require the payment of just
compensation to Washington for the bottles seized from it by LTDI.
Wherefore, the decision of the CA is modified by ordering LTDI to pay Washington
for the compensation of the seized bottles.