Fortunato, Julienne L.

Intellectual Property Rights

Case Digest
University of the Cordilleras

TRADEMARK LAW

Case: Samson v Judge Daway

GR 160054-55
Topic: Repeal of Repugnant Provisions of RA 166

Facts:
On March 7, 2002, two informations for unfair competition under
Section 168, in relation to Section 170 of the IP Code, were filed against
Samson, registered owner of ITTI Shoes.

Accusatory portion of said informations on November 1999 the owner

of ITTI Shoes unlawfully and feloniously distribute, sell and/or offer for sale
CATERPILLAR products such as footwear, garments, clothing, bags,
accessories and paraphernalia which are closely identical to and/or colorable
imitations of the authentic caterpillar products and using the trademarks,
symbols and/o designs as would cause confusion, mistake or deception on
the part of the buying public to the damage and prejudice of Caterpillar Inc.

On April 19,2002, Samson filed a motion to suspend arraignment and

other proceedings involved in civil case for unfair competition. Trial court
denied the motion.

August 20, 2002, Samson filed a twin motion to quash the informations
and motion for reconsideration. Samson contended that since Section 170 of
IPC, the penalty of imprisonment for unfair competition does not exceed six
years. Trial court denied Samson’s twin motions.

August 5, 2003, motion for reconsideration was likewise denied. Hence,

instant petition alleging that Judge Daway’s gravely abused its discretion.

Issue:
Which court has jurisdiction over criminal and civil cases for violation
of intellectual property rights?

Held:
The Supreme Court held that under Sec 163 of IPC, actions for unfair
completion shall be brought before the proper courts with appropriate
jurisdiction under existing laws. The “existing law” contemplated in Section
163 of IPC is RA 166- Trademark Law.

Sec 27 of the Trademark Law provides that jurisdiction over cases for
infringement of registered marks, unfair competition, false designation of
origin and false description or representation is lodged with the Court of First
Instance, now Regional Trial Court.

Since RA 7691 is a general law and IPC in relation to Trademark Law is

a special law, the Trademark Law shall prevail. Actions for unfair competition
therefore should be filed with RTC.