PHILIP MORRIS, INC.
VS CA
FACTS
Petitioner Philip Morris, Inc. is a foreign corporation organized under US laws not
doing business in the Philippines and registered owner of symbols ‘MARK VII,’ ‘MARK
TEN,’ and ‘LARK’ used in their cigarette products. Petitioner and its subsidiaries
asserted that respondent Fortune Tobacco has no right to manufacture and sell
cigarettes bearing the symbol ‘MARK’ alleging that it is identical or confusingly
similar with their trademarks. Petitioners relied on Section 21-A of the Trademark
Law to bring their suit and the Paris Convention to protect their trademarks. The
court denied the prayer for injunction stating that since petitioners are not doing
business in the Philippines, respondent’s cigarettes would not cause irreparable
damage to petitioner. CA granted the injunction but on a subsequent motion,
dissolved the writ.
ISSUE
1. Whether or not the petitioners have exclusive right over the mark and may
be afforded protection
2. Whether or not petitioners may be granted injunctive relief
RULING
1. NO. Under Section 2 and 2-A of the Trademark Law, an exclusive right shall
be given to the registrant as long as the mark/s registered are actually in
use in the Philippines. Petitioners may have the capacity to sue for
infringement irrespective of lack of business activity in the Philippines on
account of Section 21-A of the Trademark Law but it may not necessarily
be entitled to protection due to absence of actual use of the emblem in
the local market.
2. NO. To be entitled to an injunctive writ, it must be shown that there exists
a right to be protected and that the facts against which injunction is
directed are violative of said right. Petitioners are holders of certificate of
registration in the Philippines of their symbols, the fact of exclusive
ownership cannot be made to rest solely on these documents since
dominion over trademarks is not acquired by mere fact of registration
alone and doesn’t perfect a trademark right.
BIRKENSTOCK VS PHIL. SHOE EXPO
FACTS
Petitioner, a corporation duly organized and existing under the laws of Germany,
applied for various trademark registrations before the IPO. However, registration
proceedings of the subject applications were suspended in view of an existing
registration of the mark "BIRKENSTOCK AND DEVICE" under in the name of Shoe
Town International and Industrial Corporation, the predecessor-in-interest of
respondent Philippine Shoe Expo Marketing Corporation. In this regard, on May 27,
1997 petitioner filed a petition for cancellation of the registration on the ground that
it is the lawful and rightful owner of the Birkenstock marks During its pendency,
however, respondent and/or its predecessor-in-interest failed to file the required
10th Year Declaration of Actual Use on or before October 21, 2004, thereby resulting
in the cancellation of such mark. The aforesaid cancellation of Registration No. 56334
paved the way for the publication of the subject applications in the IPO e-Gazette. In
response, respondent filed three (3) separate verified notices of oppositions to the
subject applications. Petitioner contends that marks are confusingly similar since
they contained the word "BIRKENSTOCK" and are used on the same and related
goods. It also contends that they are the rightful owner of the mark since respondent
failed to file the 10th Year Declaration of Actual Use.
ISSUE
Whether or not the subject marks should be allowed registration in the name of
petitioner
RULING
YES. RA No. 166 requires the filing of a DAU on specified periods. The failure to file
the DAU within the requisite period results in the automatic cancellation of the
registration of a trademark. Consequently, such failure is tantamount to the
abandonment or withdrawal of any right or interest the registrant has over his
trademark. Since respondent failed to file 10th year DAU on time, it was deemed to
have abandoned or withdrawn any right or interest over the mark.

MIGHTY CORPORATION VS E. & J. GALLO WINERY
FACTS
Respondents E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC sued
petitioners MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. for
trademark and trade name infringement and unfair competition, with a prayer for
damages and preliminary injunction. They claimed that petitioners adopted the Gallo
trademark for their cigarettes to ride on Gallo Winery’s and Gallo and Ernest & Julio
Gallo trademark’s established reputation and popularity, thus causing confusion,
deception and mistake on the part of the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.
Petitioners claim that Gallo cigarettes have been sold in the Philippines since 1973
while Gallo wine trademark was registered in 1971 but first introduced and sold the
wines in 1979. Petitioners also contend that their products were totally unrelated
and that Gallo Winery’s trademark registration certificate covered wines only.
ISSUES
Whether or not petitioners are liable for trademark infringement and unfair
competition
RULING
NO. There exists no evidence that petitioners employed malice, bad faith or fraud or
that they intend to capitalize on respondents’ goodwill in adopting the Gallo mark
for their cigarettes. Also, petitioners never attempted to pass off their cigarettes as
those of respondents. As a result, there exists no trademark infringement nor unfair
competition.
SKECHERS USA VS INTER PACIFIC
FACTS
Skechers filed a criminal case for trademark infringement against several store-
owners that were selling shoes branded as “Strong” and bearing a similar “S” logo.
The Regional Trial Court (RTC) issued search warrants, allowing the National Bureau
of Investigation (NBI) to raid the stores and confiscate 6,000 pairs of shoes. The
accused moved to quash the warrants, saying that there was no confusing similarity
between the “Skechers” and the “Strong” brands. The RTC granted the motion to
quash and ordered the NBI to return the seized goods. The court said that the two
brands had glaring differences and that an ordinary prudent consumer would not
mistake one for the other.
ISSUE
Whether or not respondent committed trademark infringement
RULING
YES. There is trademark infringement the infringing mark used is likely to cause
confusion. There are two tests to determine whether there is trademark
infringement – the Dominancy Test and the Holistic or Totality test. The former
focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion, mistake, and deception in the mind of the purchasing public.
In contrast, the latter test considers the entirety of the marks as applied to the
products, including labels and packaging, in determining similarity.
Applying both tests, while there contain some dissimilarities, it is found that
respondent deliberately attempted to copy petitioner’s mark and overall design and
features of the shoes. Respondent’s shoes may not be the exact replica of
petitioner’s shoes, but the features and overall design are so similar and alike that
confusion is highly likely.

LEVI STRAUSS & CO. VS CLINTON APPARELLE, INC.
FACTS
LS & Co. and LSPI filed a complaint for Trademark Infringement, TRO and/or Writ of
Preliminary Injunction and Damages against Clinton Apparelle, Inc. together with an
alternative defendant, Olympian Garments, Inc. before the Regional Trial Court after
they discovered the presence in the local market of jeans under the brand name
"Paddocks" which they alleged, using a device which is substantially, if not exactly,
similar to the "Dockers and Design" trademark owned by and registered in the name
of LS & Co., without its consent. The Court of Appeals held that the issuance of the
writ of preliminary injunction is questionable since the petitioners failed to
sufficiently establish its material and substantial right to have the writ issued.
ISSUES
1. Whether or not there was confusion between the two marks
2. Whether or not petitioners’ trademark is protectable by injunction
RULING
1. NO. Given the single registration of the trademark “Dockers and Design”
and considering that respondent only uses the assailed device but a
different word mark, the right to prevent the latter from using the
challenged “Paddocks” device is far from clear. It is not evident whether
the single registration of the trademark “Dockers and Design” confers on
the owner the right to prevent the use of a fraction in the course of trade.
2. NO. To afford the remedy of injunction, there must exist an actual right.
There must be a patent showing that there exists a right to be protected
and that the acts against which the writ is to be directed are violative of
said right. Petitioners failed to show proof that there is material and
substantial invasion of their right to warrant the issuance of an injunctive
writ.
COCA COLA BOTTLES, PHILS. VS GOMEZ, ET AL
FACTS
Petitioner Coca-Cola applied for a search warrant against Pepsi for hoarding empty
Coke bottles in Pepsi’s yard, an act allegedly penalized as unfair competition under
the IP Code. MTC issued the search warrants and the local police seized the goods.
Later, a complaint against respondents was filed for violation of the IP Code.
Respondent contended that the hoarding of empty Coke bottles did not involve fraud
and deceit for them to be liable for unfair competition. MTC upheld the validity of
the warrants. RTC voided the warrant for lack of probable cause of the commission
of unfair competition.
ISSUE
Whether or not the hoarding of a competitor’s product containers constitutes as
unfair competition
RULING
NO. Unfair competition has been defined as the passing off or attempting to pass off
upon the public the goods or business of one person as the goods or business of
another with the end and probable effect of deceiving the public. One of the
essential requisites in an action to restrain unfair competition is proof of fraud; the
intent to deceive must be shown before the right to recover can exist. “Hoarding” of
a competitor’s products doesn’t fall within the coverage of the Intellectual Property
Code and of Section 168 in particular. It does not relate to any patent, trademark,
trade name or service mark that the respondents have invaded, intruded into or used
without proper authority from the petitioner. Nor are the respondents alleged to be
fraudulently “passing off” their products or services as those of the petitioner.
SHELL COMPANY OF THE PHILIPPINES, LTD. VS INSULAR PETROLEUM REFINING
CO., LTD.
FACTS
Shell Co. of the Phil., Ltd. Is a corporation engaged in the sale of petroleum products,
including lubricating oil. Defendant Insular Petroleum Refining Co., Ltd.’s principal
business is collecting used lubricating oil which, thru a scientific process, is refined
and marketed to the public at a price much lower than of the new. The incident
between petitioner's operator and respondent's agent, brought about a case for
damages on the allegation of unfair competition. According to Conrado Uichangco,
an operator of a Shell service station, that a certain F. Pecson Lozano, in-agent of the
defendant, repaired at his station and tried to convince Uichangco that Insoil is a
good oil. The defendant showed Uichangco a chemical analysis of Insoil which he
claimed was very close to the analysis of Shell oil; and he also claimed that he could
sell this kind of oil to Uichangco at a much cheaper price so that he could make a
bigger margin of profits. The low-grade oil that was sold to the operator was
contained in a drum with the petitioner’s mark or brand “Shell” still stenciled without
having been erased.
ISSUE
Whether or not defendant is guilty of unfair competition
BATISTIS VS PEOPLE
FACTS
Allied Domecq Philippines, Inc., a Philippine corporation exclusively authorized to
distribute Fundador brandy products imported from Spain initiated a case against
Juno Batistis for trademark infringement and unfair competition. Allied Domecq
requested from agents of NBI to conduct a test-buy in the premises of respondent
and thereby confirmed that he was actively engaged in the manufacture, sale and
distribution of counterfeit Fundador brandy products.
ISSUE
Whether or not petitioner is guilty of trademark infringement and unfair competition
RULING
YES. Where there is no question that the accused exerted the effort to make the
counterfeit products look genuine to deceive the unwary public into regarding the
products as genuine, he thereby committed acts constituting infringement of
trademark. Petitioner infringed the registered Fundador trademark by colorable
imitation of it through applying the dominant features of the trademark on the fake
products.

RULING
NO. Any person who shall employ deception or any other means contrary to good
faith by which he shall pass off the goods manufactured by him or in which he deals,
for those of the one having established such goodwill, or who shall commit any act
calculated to produce said result, shall be guilty of unfair competition. The single
transaction at bar will not render defendant's act an unfair competition. It was found
by the Court of Appeals that in all transactions of the low-grade Insoil, except the
present one, all the marks and brands on the containers used were erased or
obliterated. The drum in question did not reach the buying public. It was merely a
shell dealer or an operator of a Shell Station who purchased the drum not to be
resold to the public, but to be sold to the petitioner company, with a view of
obtaining evidence against someone who might have been committing unfair
business practices, for the dealer had found that his income was dwindling in his
gasoline station.