TOPIC: TRADEMARK INFRINGEMENT

3. PEARL & DEAN V. SHOEMART

G.R. NO. 148222. AUGUST 15, 2003

FACTS:

Pearl and Dean is a corporation in the manufacture of advertising display units also known as light boxes,
which were manufactured by Metro Industrial Services. A copyright Registration was obtained in 1981.

These were marketed in the name of "Poster Ads". They also applied for a registration of trademark with the
Bureau of Patents in 1983, but was only approved in 19988.

In 1985, petitioner had n agreement with respondent Shoemart Inc (SMI) to install these light boxes in their
Makati and Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986, the contract was
rescinded unilaterally by SMI, and instead contracted with Metro Industrial Services.

They installed these lightboxes in different SM city branches, including Cubao and Makati, with association
with North Edsa Marketing Inc (NEMI), SMI's sister company.

Petitioner requested SMI and NEMI to put down their installations of the light boxes, and payment of
compensatory damages worth P20M. Claiming that respondents failed to comply, they filed a case for
infringement of trademark and copyright, unfair competition and damages.

RTC ruled in favor of petitioner, but CA reversed.

ISSUE:

 WHETHER OR NOT THERE WAS A TRADEMARK INFRINGEMENT

HELD:

NO. The certificate of registration issued by the Director of Patents gives exclusive right to use its own symbol
only to the description specified in the certificate. It cannot prevent others to use the same trademark with a
different description.

Copyright is a statutory right, subject to the terms and conditions specified in the statute. Therefore, it can only
cover the works falling within the statutory enumeration or description. Since the copyright was classified under
class "O" works, which includes "prints, pictorial illustrations, advertising copies, labels, tags and box wraps,"
and does not include the light box itself. A lightbox, even admitted by the president of petitioner company, was
neither a literary nor an artistic work but an engineering or marketing invention, thus not included under a
copyright.

Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent anyone from
manufacturing or commercially using the same. Patent has a three-fold purpose: a) to foster and reward
invention; b) promotes disclosures of invention and permit public to use the same upon expiration; c) stringent
requirements for patent protection to ensure in the public domain remain there for free use of the public. Since
petitioner was not able to go through such examination, it cannot exclude others from manufacturing, or selling
such lightboxes. No patent, no protection.

"Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean, thus it cannot be
considered to use such term to be unfair competition against the petitioner.
TOPIC: TRADEMARK INFRINGEMENT

7. PHILIP MORRIS, INC. V. FORTUNE TOBACCO CORPORATION

G.R. NO. 158589 JUNE 27, 2006

FACTS:

Petitioners are foreign corporations organized under US laws not doing business in the Philippines and
registered owners of symbols ‘MARK VII,’ ‘MARK TEN,’ and ‘LARK’ used in their cigarette products.

Petitioners moved to enjoin respondent Fortune Tobacco from manufacturing and selling cigarettes bearing the
symbol ‘MARK’ asserting 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.

Court records showed that on Aug. 18, 1982, Philip Morris and its subsidiaries filed the complaint for
infringement and damages against Fortune Tobacco before the Pasig Regional Trial Court (RTC) for
manufacturing and selling cigarettes bearing the trademark "Mark" which is identical and confusingly similar to
Philip Morri’s trademarks.

CA granted the injunction but on a subsequent motion, dissolved the writ.

ISSUE:

 WHETHER OR NOT THERE WAS A TRADEMARK INFRINGEMENT

HELD:

NO. The High Court said the public will not be confused since there was no actual commercial use of Fortune
Tobacco of Philip Morris, its subsidiaries Benson and Hedges (Canada), Inc., and Fabriques de Tabac
Reunies, S.A, now known as Philip Morris Products S.A, trademarks in the country.

In ruling in favor of Fortune Tobacco, the Tribunal said that although Philip Morris’ home countries and the
Philippines are members of the Paris Union, this does not automatically entitle Philip Morris to the protection of
their trademarks in the Philippines absent the actual use of the marks in local commerce and trade.

"Contrary to what petitioners (Philip Morris) suggest, the registration of trademark cannot be deemed
conclusive as to the actual use of such trademark in local commerce.

As it were, registration does not confer upon the registrant an absolute right to the registered mark" the High
Court said. In its petition for review, Philip Morris insisted that Fortune Tobacco’s Mark trademark is
confusingly or deceptively similar with their duly registered trademarks.

The High Court said the jurisprudence has developed two tests, such as the dominancy test and the holistic
test, to determine the similarity and likelihood of confusion.

The High Court said that using the holistic test, the CA was correct in ruling that Fortune Tobacco’s products
cannot be mistaken as any of the three cigarette brands of Philip Morris.

"But even if the dominancy test were to be used, as urged by the petitioners (Philip Morris), but bearing in mind
that a trademark serves as a tool to point out distinctly the origin or ownership of the goods to which it is
affixed, the likelihood of confusion tantamount to infringement appears to be farfetched" the High Court said.

The High Court said since the word Mark, be it alone or in combination with the word Ten and Roman numeral
VII, does not point to the origin or ownership of the cigarettes to which they apply, "the local buying public
could not possibly be confused to or deceived that respondent’s Mark is the product of petitioners and/or
originated from the USA, Canada or Switzerland."
TOPIC: TRADEMARK INFRINGEMENT

11. SOCIETE DES PRODUITS NESTLE, S.A VS. MARTIN T. DY, JR.
G.R. NO. 172276; AUGUST 8, 2010

FACTS:

Petitioner Nestle, a Swiss corporation, owns the ‘NAN’ trademark for its line of infant powdered milk products in
the Philippines. Respondent Dy, Jr. on the other hand, owner of 5M Enterprises, imports and repacks
powdered milk for adults bearing the mark ‘NANNY.’

Petitioner Nestle filed before the trial court an infringement complaint against respondent. The trial court held
that respondent’s trademark is an infringement to petitioner’s mark because it would imply that respondent’s
‘NANNY’ product came from petitioner.

CA reversed and held that the two marks are not confusingly similar thus respondent cannot be held liable for
infringement.

ISSUE:

 WHETHER OR NOT RESPONDENT IS LIABLE FOR TRADEMARK INFRINGEMENT.

HELD:

YES. In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20 thereof, the
following constitute the elements of trademark infringement: (a) A trademark actually used in commerce in the
Philippines and registered in the principal register of the Philippine Patent Office; (b) It is used by another
person in connection with the sale, offering for sale, or advertising of any goods, business or services or in
connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or identity of such business; or such trademark is reproduced,
counterfeited, copied or colorably imitated by another person and such reproduction, counterfeit, copy or
colorable imitation is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services as to likely cause confusion
or mistake or to deceive purchasers; (c) The trademark is used for identical or similar goods; and (d) Such act
is done without the consent of the trademark registrant or assignee.

On the other hand, the elements of infringement under R.A. No. 8293 are as follows: (a) The trademark being
infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same
need not be registered; (b) The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer; (c) The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services; (d) The use or application of the infringing mark or trade
name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of such business; and (e) It is
without the consent of the trademark or trade name owner or the assignee thereof.

Among the elements, the element of likelihood of confusion is the gravamen of trademark infringement.
Applying the dominancy test in the present case, the Court finds that “NANNY” is confusingly similar to “NAN.”
“NAN” is the prevalent feature of Nestle’s line of infant powdered milk products.

It is written in bold letters and used in all products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and
NAN-2. Clearly, “NANNY” contains the prevalent feature “NAN.” The first three letters of “NANNY” are exactly
the same as the letters of “NAN.” When “NAN” and “NANNY” are pronounced, the aural effect is confusingly
similar.
TOPIC: TRADEMARK INFRINGEMENT

15. REPUBLIC GAS CORP. (REGASCO) V. PETRON CORP.

G.R. NO. 194062, JUNE 17, 2013

FACTS:

Petitioners Petron Corporation (“Petron” for brevity) and Pilipinas Shell Petroleum Corporation (“Shell” for
brevity) are two of the largest bulk suppliers and producers of LPG in the Philippines. Petron is the registered
owner in the Philippines of the trademarks GASUL and GASUL cylinders used for its LPG products.

It is the sole entity in the Philippines authorized to allow refillers and distributors to refill, use, sell, and distribute
GASUL LPG containers, products and its trademarks. Pilipinas Shell, on the other hand, is the authorized user
in the Philippines of the tradename, trademarks, symbols or designs of its principal, Shell International
Petroleum Company Limited, including the marks SHELLANE and SHELL device in connection with the
production, sale and distribution of SHELLANE LPGs.

It is the only corporation in the Philippines authorized to allow refillers and distributors to refill, use, sell and
distribute SHELLANE LPG containers and products. Private respondents, on the other hand, are the directors
and officers of Republic Gas Corporation (“REGASCO” for brevity), an entity duly licensed to engage in,
conduct and carry on, the business of refilling, buying, selling, distributing and marketing at wholesale and
retail of Liquefied Petroleum Gas (“LPG”).

LPG Dealers Associations, such as the Shellane Dealers Association, Inc., Petron Gasul Dealers Association,
Inc. and Totalgaz Dealers Association, received reports that certain entities were engaged in the unauthorized
refilling, sale and distribution of LPG cylinders bearing the registered tradenames and trademarks of the
petitioners.

As a consequence, on February 5, 2004, Genesis Adarlo (hereinafter referred to as Adarlo), on behalf of the
aforementioned dealers associations, filed a letter-complaint in the National Bureau of Investigation (“NBI”)
regarding the alleged illegal trading of petroleum products and/or underdelivery or underfilling in the sale of
LPG products.

ISSUE:

 WHETHER OR NOT PETITIONERS ARE LIABLE OF TRADEMARK INFRINGEMENT.

HELD:

YES. From the foregoing provision, the Court in a very similar case, made it categorically clear that the mere
unauthorized use of a container bearing a registered trademark in connection with the sale, distribution or
advertising of goods or services which is likely to cause confusion, mistake or deception among the buyers or
consumers can be considered as trademark infringement.

Here, petitioners have actually committed trademark infringement when they refilled, without the respondents’
consent, the LPG containers bearing the registered marks of the respondents. As noted by respondents,
petitioners’ acts will inevitably confuse the consuming public, since they have no way of knowing that the gas
contained in the LPG tanks bearing respondents’ marks is in reality not the latter’s LPG product after the same
had been illegally refilled. The public will then be led to believe that petitioners are authorized refillers and
distributors of respondents’ LPG products, considering that they are accepting empty containers of
respondents and refilling them for resale.

In sum, this Court finds that there is sufficient evidence to warrant the prosecution of petitioners for trademark
infringement and unfair competition, considering that petitioner Republic Gas Corporation, being a corporation,
possesses a personality separate and distinct from the person of its officers, directors and stockholders.
Petitioners, being corporate officers and/or directors, through whose act, default or omission the corporation
commits a crime, may themselves be individually held answerable for the crime.

Thus, petitioners cannot hide behind the cloak of the separate corporate personality of the corporation to
escape criminal liability. A corporate officer cannot protect himself behind a corporation where he is the actual,
present and efficient actor.