G.R. No. 91332 July 16, 1993 PHILIP MORRIS, INC., et al., petitioners vs.

THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents Facts: Philip Morris, Inc. is corporation organized under the laws of the State of Virginia, United States of America. Philip Morris and the other petitioners which are also foreign corporations and are whollyowned subsidiaries of Philip Morris are not doing business in the Philippines and are suing on an isolated transaction. They are registered owners of "MARK VII", "MARK TEN", and "LARK" per certificates of registration issued by the Philippine Patent Office They assert that Fortune Tobacco Corp. has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contravention of the Trademark Law. Further, they assert that their trademarks are entitled to protection by treaty obligation under Article 2 of the Paris Convention of which the Philippines is a member as provided for in Article II sec.2 of the Constitution and under the Incorporation doctrine which provides that the generally accepted international laws are made part of the law of the land. Issue: WON Fortune Tobaccos trademark Mark had infringed upon the trademarks of Philip Morris, Inc. and its wholly owned subsidiaries. Held: No. Under Article 2 of the Paris Convention to which the Philippines is a signatory, the petitioners, as foreign corporations not engaged in local commerce can bring about an action for infringement, and under the Doctrine of Incorporation, such international law is a part of the law of the land. But, the Trademark law which is a municipal law provides that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. It requires actual commercial use of the trademark prior to its registration. It is settled that efforts are to be first exerted to harmonize the municipal laws and the international laws which are given an equal, not superior standing with the municipal laws as further provided by the doctrine of incorporation. But if there be an irreconcilable conflict, the municipal laws are to be upheld. Records show that the petitioners have never conducted any business in the Philippines. Although petitioners previously sent samples to the Phils., such commercial use is not equivalent to the use contemplated by law. Under the law, therefore, petitioners have no right to the remedy it seeks.