1

PATENT1.SMITH KLINE BECKMAN CORPORATION v. COURT OF APPEALSJ. Carpio Morales

F: smith claims right to a certain compound includes Albendazole which is exercised by res- SC: No.

FACTS:Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine Patent Office patent right over an
invented compound entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity Using a certain compound
(Methyl 5 Propylthio-2-Benzimidazole Carbamate.)” Such compound is claimed to be an  active ingredient in fighting various
parasites in certain types of domestic and livestock animals.

Respondent Tryco Pharma (Tryco) sells veterinary products including a drug Impregon which contains Albendazole as an active
ingredient which fights against parasites in animals.

Petitioner Smith corp then filed an action against respondent Tryco for patent infringement claiming that the patent granted
to them includes said Albendazole. 

In their defense respondent Tryco alleges that Letters Patent No. 14561 granted to petitioner SKBC does not include Albendazole
for nowhere is such word found in the patent. The Trial Court rendered its decision in favor of respondent Tryco which was affirmed
by the Court of Appeals.

ISSUE:Whether or not Albendazole is included in petitioners Letter Pattent No. 14561 

RULING:From an examination of the evidence on record, the Court finds nothing infirm in the appellate court’s conclusions with
respect to the principal issue of whether Tycho Pharma committed patent infringement to the prejudice of SKBC.

The burden of proof to substantiate a charge for patent infringement rests on the plaintiff.

In the case at bar, petitioner’s evidence consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its
general manager in the Philippines for its Animal Health Products Division, by which it sought to show that its patent for the said
compound compound (((methyl 5 propylthio-2- benzimidazole carbamate also covers the substance Albendazole. From a reading of
the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is made of the compound Albendazole.

When the language of its claims is clear and distinct, the patentee is bound thereby and may not  claim anything beyond
them. And so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied, nor
may they enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed, even if the patentee
may have been entitled to something more than the words it had chosen would include.

It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not determinative of Albendazole’s
non-inclusion in the claims of the patent. While Albendazole is admittedly a chemical compound that exists by a name different
from that covered in SKBC’s letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding
Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in SKBC’s patent in spite of its
omission therefrom or that the meaning of the claims of the patent embraces the same.

2nd contention: While SKBC concedes that the mere literal wordings of its patent cannot establish Tyco Pharma’s
infringement, it urges the Court to apply the doctrine of equivalents.

The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some modification and change, performs substantially the
same function in substantially the same way to achieve substantially the same result.   (here just the same results and functions –
but not the same way or means)

Here, Yet again, a scrutiny of SKBC’s evidence fails to convince the Court of the substantial sameness of SKBC’s patented
compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same
means as the patented compound, even though it performs the same function and achieves the same result.

In other words, the principle or mode of operation must be the same or substantially the same.  The doctrine of equivalents thus
requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components
of such equivalency test are met.
 2

2.CRESER PRECISION SYSTEMS, INC. vs. COURT OF APPEALS AND FLORO INTERNATIONAL CORP.
G.R. No. 118708 February 2, 1998 J. Martinez

F: Aerial fuze; clash b/w patent holder and claimant na actual inventor- SC: patent holder res corp won

FACTS: Private respondent Floro corp is a domestic corporation engaged in the manufacture, production,
distribution and sale of military armaments, munitions, airmunitions and other similar materials.

In 1990, private respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), a
Letters Patent No. UM-69383 covering an aerial fuze which was published in the September-October-1990, Vol. III, No.
5 issue of the Bureau of Patent's Official Gazette.4

Sometime 1993, private respondent Floro corp, through its president, Mr. Gregory Floro, Jr., discovered that
petitioner submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing . They
learned that petitioner was claiming the aforesaid  aerial fuze as its own and planning to bid and manufacture the same
commercially without license or authority from private respondent. To protect its right, private respondent on
December 3, 1993, sent a letter5 to petitioner advising it of its existing patent and its rights thereunder, warning
petitioner of a possible court action and/or application for injunction, should it proceed with the scheduled testing by the
military

In response, petitioner filed on December 8, 1993 a complaint 6 for injunction and damages arising from the alleged
infringement before the Regional Trial Court of Quezon City, Branch 88. The complaint alleged, among others: that
petitioner is the first, true and actual inventor of an aerial fuze denominated as "Fuze, PDR 77 CB4" which it
developed as early as December 1981 (but not patent holder!!) under the Self-Reliance Defense Posture Program
(SRDP) of the AFP; that sometime in 1986, petitioner began supplying the AFP with the said  aerial fuze; that private
respondent's aerial fuze is identical in every respect to the petitioner's fuze; and that the only difference between the two
fuzes are miniscule and merely cosmetic in nature.

The trial court issued an Order granting the issuance of a writ of preliminary injunction against private respondent. The
respondent court rendered the now assailed decision reversing the trial court's Order of December 29, 1993 and
dismissing the complaint filed by petitioner.

ISSUE: Whether absence of patent bar the first true and actual inventor of the patented invention from suing another
who was granted a patent.

RULING:
Yes- Only the patentee or his successors-in-interest may file an action for infringement.

. Moreover, there can be no infringement of a patent until a patent has been issued, since whatever right one has
to the invention covered by the patent arises alone from the grant of patent.

 In short, a person or entity who has not been granted letters patent over an invention and has not acquired any
light or title thereto either as assignee or as licensee, has no cause of action for infringement because the right to
maintain an infringement suit depends on the existence of the patent.

Here, since the petitioner (private respondent herein) is the patentee of the disputed invention embraced by letters of
patent UM No. 6938 issued to it on January 23, 1990 by the Bureau of Patents, it has in its favor not only the
presumption of validity of its patent, but that of a legal and factual first and true inventor of the invention.

The validity of the patent issued by the Philippine Patent Office in favor of the private respondent and the question over
the investments, novelty and usefulness of the improved process therein specified and described are matters which are
better determined by the Philippines patent Office, composed of experts in their field, have, by the issuance of the patent
in question, accepted the thinness of the private respondents new tiles as a discovery. There is a presumption that the
 3

Philippine Patent Office has correctly determined the patentability of the improvement by the private respondent
of the process in question.

ON SIDE OF PET

Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of action to institute the
petition for injunction and damages arising from the alleged infringement by private respondent. While petitioner claims
to be the first inventor of the aerial fuze, still it has no right of property over the same upon which it can maintain a suit
unless it obtains a patent therefor

Under American jurisprudence, an inventor has no common-law right to a monopoly of his invention. He has the right
to make, use and vend his own invention, but if he voluntarily discloses it, such as by offering it for sale, the world
is free to copy and use it with impunity. A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the invention. 

Recourse ng actual inventor

He can, under Section 28 of the aforementioned law, file a petition for cancellation of the patent within three (3) years
from the publication of said patent with the Director of Patents and raise as ground therefor that the person to whom the
patent was issued is not the true and actual inventor.

As to who may file:

Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:

Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing any right, title or interest in and to the
patented invention, whose rights have been infringed, may bring a civil action before the proper Court of First Instance
(now Regional Trial court), to recover from the infringer damages sustained by reason of the infringement and to secure
an injunction for the protection of his right. . . .

The phrase "anyone possessing any right, title or interest in and to the patented invention" upon which petitioner
maintains its present suit, refers only to the patentee's successors-in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name of the person or persons interested, whether as patentee, assignees, or
as grantees, of the exclusive right
 4

33.ANGELITA MANZANO vs. COURT OF APPEALS

GR No. 113388 September 5, 1997 J. Bellosillo

BURDERN OF PROOF NOT OVERCOME-VALID DIRECTOR OF PATENTS ISSUANCE

FACTS: Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters Patent for a gas burner
registered in the name of private respondent Madolaria who subsequently assigned the same to private respondent United
Foundry.

Petitioner alleged that the utility model covered by the letters patent was not inventive, new, or useful, the specification did not
comply with the requirements of R.A. No. 165, that respondent was not the original, true, and actual inventor nor did she derive her
rights from the same, and that respondent was guilty of fraud or misrepresentation in applying for the letters patent. And that the
utility model in question had already been in use and on sale (petitioner herself being a distributor/seller of the said gas burners) in
the Philippines for more than one year before the respondent filed for the application. presented two undated brochures of two
different Gas companies (Manila Gas Corp. & Esso Gasul) which allegedly depicts an identical gas burner as the one covered in
respondent’s letters patent.

Respondent presented her husband as lone witness to testify that respondent, thru complaints of customers, devised a way to solve
the defects in the gas burners, and respondent’s innovation is now the subject of the letters patent.

The Director of Patents denied the petition for cancellation, on the ground that petitioner was not able to convincingly establish
that the patented utility model was not novel. Petitioner failed to overcome her burden and overturn the presumption of legality of
the issuance of letters patent and that respondent withheld material facts with intent to deceive which, if disclosed, would have
resulted in the refusal by the PPO to issue the letters patent. Hence, this appeal.

ISSUE:
Whether or not Director of Patents. In ruling that pet failed to overcome presumption of validity ngissuance nila

RULING:
Yes. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO found her invention novel and patentable.
The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the
original and first inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one
which is met only by clear and satisfactory proof which overcomes every reasonable doubt.

As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of legality of the issuance of
letters patent to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the patent. The findings
and conclusions of the Director of Patent were reiterated and affirmed by the Court of Appeals. The rule is settled that the
findings of fact of the Director of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court
when supported by substantial evidence.

The validity of the patent issued by the PPO in favor of private respondent and the question over the inventiveness, novelty
and usefulness of the improved model of the LPG burner are matters which are better determined by the PPO. The technical
staff of the Philippine Patent Office composed of experts in their field has by the issuance of the patent in question accepted
private respondents model of gas burner as a discovery.

There is a presumption that the Office has correctly determined the patentability of the model and such action must not be interfered
with in the absence of competent evidence to the contrary.
 5

4.E.I. DUPONT DE NEMOURS & CO. v. DIRECTOR EMMA C. FRANCISCO

GR No. 174379 Aug 31, 2016 J. LEONEN
An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon
good cause shown and the payment of the required fee.
First to File Rule. — If two (2) or more persons have made the invention separately and independently of each other, the right to the
patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the
same invention, to the applicant who has the earliest filing date or, the earliest priority date.

FACTS: E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation organized under the laws of the
State of Delaware. it filed Philippine Patent Application No. 35526 before the Bureau of Patents, T rademarks, and Technology
Transfer. The application was for Angiotensin II Receptor Blocking Imidazole (losartan), an invention related to the treatment of
hypertension and congestive heart failure.

The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili).

On December 19, 2000, E.I. Dupont Nemours' new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell, sent the
Intellectual Property Office a letter requesting that an office action be issued on Philippine Patent Application No. 35526.

In response, Patent Examiner of the Intellectual Property Office sent an office action marked Paper No. 2 on January 30, 2002, that
Atty. Mapili was the attorney in record and no document was filed to revoke Atty. Mapili as the representative of E.I. Dupont
Nemours.  A month after that was July 19, 1988, the first Office Action was mailed but was declared abandoned as of
September 20, 1988 for applicant's failure to respond within the period as prescribed under Rule 112.
It was noted that it took thirteen (13) long years for the applicant to request for such Office Action. This is not expected of the
applicant since it is an acceptable fact that almost all inventors/applicants wish for the early disposition for their
applications.14

On May 29, 2002, E.I. Dupont Nemours replied to the office action by submitting a Power of Attorney, authorizing Ortega, Castillo,
Del Castillo, Bacorro, Odulio, Calma, and Carbonell to prosecute and handle its patent applications. On the same day, it also filed a
Petition for Revival with Cost of Philippine Patent Application No. 35526.

In its Petition for Revival, E.I. Dupont Nemours argued that its former counsel, Atty. Mapili, did not inform it about the
abandonment of the application, and it was not aware that Atty. Mapili had already died. 17 It argued that it discovered Atty. Mapili's
death when its senior-level patent attorney visited the Philippines in 1996. 18 It argued that it only had actual notice of the
abandonment on January 30, 2002, the date of Paper No. 2.19 Thus, it argued that its Petition for Revival was properly filed 

The Director of Patents denied the Petition for Revival for having been filed out of time . By reason that the Petition for Revival
was filed beyond the reglementary period. Since the law and rules do not give the Director of Patents the discretion to stretch the
period for revival, the Office is constrained to apply Rule 115 of 1962 Revised Rules of Practice before the Philippines Patent Office
in Patent Cases.

E.I. Dupont Nemours appealed the denial to the Director-General of the Intellectual Property Office on August 26, 2002.

In the interim, Therapharma, Inc. moved for leave to intervene, they alleged that on January 4, 2003, it filed before the Bureau of
Food and Drugs its own application for a losartan product "Lifezar," a medication for hypertension, which the Bureau granted.  ---
It argued that it made a search of existing patent applications for similar products before its application, and that no existing patent
registration was found since E.I. Dupont Nemours' application for its losartan product was considered abandoned by the Bureau of
Patents, Trademarks, and Technology Transfer. It alleged that sometime in 2003 to 2004, there was an exchange of correspondence
between Therapharma, Inc. and Merck. In this exchange, Merck informed Therapharma, Inc. that it was pursuing a patent on the
losartan products in the Philippines and that it would pursue any legal action necessary to protect its product.

ISSUE:
(1) Whether or not E.I. Dupont Nemours has the proper ground for the revival of its patent application.
(2) Whether or not the negligence of a patent applicant's counsel binds the applicant.
(3) Whether or not the invention has already become part of public domain.

RULING:
 6

.
First to File Rule. — If two (2) or more persons have made the invention separately and independently of each other, the right to the
patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the
same invention, to the applicant who has the earliest filing date or, the earliest priority date.

1.
NO. Under Chapter VII, Section 111(a) of the 1962 Revised Rules of Practice, a patent application is deemed abandoned if the
applicant fails to prosecute the application within four months from the date of the mailing of the notice of the last action by the
Bureau of Patents, Trademarks, and Technology Transfer, and not from applicant's actual notice.

According to the records of the Bureau of Patents, Trademarks, and Technology Transfer Chemical Examining Division, petitioner
filed Philippine Patent Application No. 35526 on July 10, 1987. It was assigned to an examiner on June 7, 1988. An Office Action
was mailed to petitioner's agent, Atty. Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable period, the
application was deemed abandoned on September 20, 1988.  Under Section 113, petitioner had until January 20, 1989 to file for a
revival of the patent application. Its Petition for Revival, however, was filed on May 30, 2002,  13 years after the date of
abandonment.

Section 113 has since been superseded by Section 133.4 of the Intellectual Property Code, Rule 930 of the Rules and Regulations on
Inventions, and Rule 929 of the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Design. The
period of four (4) months from the date of abandonment, however, remains unchanged.

Rule 930 of the Rules and Regulations on Inventions provides:ChanRoblesVirtualawlibrary

Rule 930. Revival of application. - An application deemed withdrawn for failure to prosecute may be revived as a pending
application within a period of four (4) months from the mailing date of the notice of withdrawal if it is shown to the satisfaction of
the Director that the failure was due to fraud, accident, mistake or excusable negligence.

A petition to revive an application deemed withdrawn must be accompanied by (1) a showing of the cause of the failure to prosecute,
(2) a complete proposed response, and (3) the required fee.

An application not revived in accordance with this rule shall be deemed forfeited.

A petition to revive an application deemed withdrawn shall be accompanied by:

(a) A showing of a justifiable reason for the failure to prosecute;

(b) A complete proposed response; and
(c) Full payment of the required fee.

No revival shall be granted to an application that has been previously revived with cost.

An application not revived in accordance with this Rule shall be deemed forfeited.
Even if the delay was unavoidable, or the failure to prosecute was due to fraud, accident, mistake, or excusable negligence, or the
Petition was accompanied by a complete proposed response, or all fees were paid, the
Petition would still be denied since these regulations only provide a four (4)-month period within which to file for the revival of the
application. The rules do not provide any exception that could extend this four (4)-month period to 13 years.

2. Negligent by themself
Even assuming that the four (4)-month period could be extended, petitioner was inexcusably negligent in the prosecution of its
patent application.

Negligence is inexcusable if its commission could have been avoided through ordinary diligence and prudence. It is also settled that
negligence of counsel binds the client as this "ensures against the resulting uncertainty and tentativeness of proceedings if clients
were allowed to merely disown their counsels' conduct."

Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond to the Office Action sent by the Bureau of
Patents, Trademarks, and Technology Transfer on June 19, 1988. Because of his negligence, petitioner's patent application was
declared abandoned. He was again negligent when he failed to revive the abandoned application within four (4) months from the
date of abandonment.
 7

Although it was in petitioner's discretion as a foreign client to put  its complete trust and confidence on its local resident agent, there
was a correlative duty on its part to be diligent in keeping itself updated on the progress of its patent applications. Its failure
to be informed of the abandonment of its patent application was caused by its own lack of prudence.

3.
The right of priority given to a patent applicant is only relevant when there are two or more conflicting patent applications on the
same invention. Because a right of priority does not automatically grant letters patent to an applicant, possession of a right of priority
does not confer any property rights on the applicant in the absence of an actual patent.

Petitioner argues that its patent application was filed on July 10, 1987, within 12 months from the prior filing of a U.S. patent
application on July 11, 1986.158 It argues that it is protected from becoming part of the public domain because of convention priority
under the Paris Convention for the Protection of Industrial Property and Section 9 of Republic Act No. 165. 159chanrobleslaw

Respondent Therapharma, Inc., on the other hand, argues that a mere patent application does not vest any right in the applicant
before the issuance of the patent.160 It argues that the "priority date" argued by petitioner is only relevant in determining who has a
better right to the patent among the other applicants who subsequently apply for the same invention

YES. Under Section 31 of the Intellectual Property Code, a right of priority is given to any patent applicant who has previously
applied for a patent in a country that grants the same privilege to Filipinos.

SECTION 31. Right of Priority. — An application for patent filed by any person who has previously applied for the same invention
in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of
the date of filing the foreign application: Provided, That:

chanRoblesvirtualLawlibrarya. the local application expressly claims priority;

b. it is filed within twelve (12) months from the date the earliest foreign application was filed; and cralawlawlibrary

c. a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing
in the Philippines.

A patent applicant with the right of priority is given preference in the grant of a patent when there are two or more applicants for the
same invention. Section 29 of the Intellectual Property Code

SECTION 29. First to File Rule. — If two (2) or more persons have made the invention separately and independently of each other,
the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are
filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date.

Since both the United States and the Philippines are signatories to the Paris Convention for the Protection of Industrial Property, an
applicant who has filed a patent application in the United States may have a right of priority over the same invention in a patent
application in the Philippines. However, this right of priority does not immediately entitle a patent applicant the grant of a patent. A
right of priority is not equivalent to a patent. Otherwise, a patent holder of any member-state of the Paris Convention need not apply
for patents in other countries where it wishes to exercise its patent.

It was, therefore, inaccurate for petitioner to argue that its prior patent application in the United States removed the invention from
the public domain in the Philippines. This argument is only relevant if respondent Therapharma, Inc. had a conflicting patent
application with the Intellectual Property Office. A right of priority has no bearing in a case for revival of an abandoned patent
application.

MAIN ISSUE PA TO! In sum who won?: RES! NATURE NUNG MEDICINE EK EK- essentially purpose of patent law was
upheld here.: WON revive application of pet? NO!!!! rule in favor of res because it resulted to cheaper medicine

In addition, a patent holder of inventions relating to food or medicine does not enjoy absolute monopoly over the patent. Both
Republic Act No. 165 and the Intellectual Property Code provide for compulsory licensing. Compulsory licensing is defined in the
Intellectual Property Code as the "grant a license to exploit a patented invention, even without the agreement of the patent
 8

owner."175chanrobleslaw

Under Republic Act No. 165, a compulsory license may be granted to any applicant three (3) years after the grant of a patent if the
invention relates to food or medicine necessary for public health or safety.176 In Smith Kline & French Laboratories, Ltd. vs. Court of
Appeals:177

A patent is a monopoly granted only for specific purposes and objectives. Thus, its procedures must be complied with to attain its
social objective. Any request for leniency in its procedures should be taken in this context. Petitioner, however, has failed to
convince this court that the revival of its patent application would have a significant impact on the pharmaceutical industry.

Hypertension, or high blood pressure, is considered a "major risk factor for cardiovascular disease" 180 such as "heart disease, stroke,
kidney failure and blindness."181 In a study conducted by the World Health Organization, 25% of adults aged 21 years and older in
the Philippines suffer from high blood pressure. 182 According to the Department of Health, heart disease remains the leading cause of
mortality in the Philippines. 183 Angiotensin II Receptor Blocking Imidazole or "losartan" is one of the medications used for the
treatment of hypertension.184chanrobleslaw

In a study conducted by the Philippine Institute for Development Studies, "affordability of drugs remains a serious problem" 185 in the
Philippines. It found that because of the cost of drugs, accessibility to drugs become prohibitive for the lowest-earning households
and are "even more prohibitive for the unemployed and indigent."186 Several measures have been enacted by the government to
address the high costs of medicine, among them, parallel drug importation 187 and the passage of Republic Act No. 9502, otherwise
known as the Universally Accessible Cheaper and Quality Medicines Act of 2008.188
 Figures submitted by respondent Therapharma, Inc., however, also show that the presence of competition in the local
pharmaceutical market may ensure the public access to cheaper medicines.

According to respondent Therapharma, Inc., the retail price of petitioner's losartan product, Cozaar, decreased within one (1) month
of respondent Therapharma, Inc.'s entry into the market: 189

BRAND TRADER RETAIL PRICE RETAIL PRICE

 As of Lifezar's first entry into the market on June  Within one month from Lifezar's entry or by July
4, 2004 4, 2004
LIFEZAR Therapharma 50 mg - P20.20 50mg - P20.20
50mg - P39.50 50mg - P39.50
COZAAR Merck
 100mg - P55.00  100 - P44.00
Respondent Therapharma, Inc. also presented figures showing that there was a 44% increase in the number of losartan units sold
within five (5) months of its entry into the market. 190 More Filipinos are able to purchase losartan products when there are two (2)
different players providing competitive prices in the market.

Lifezar, and another of respondent Therapharma, Inc.'s products, Combizar, have also been recommended as cheaper alternative
losartan medication, since they were priced "50 percent less than foreign brands." 191chanrobleslaw

Public interest will be prejudiced if, despite petitioner's inexcusable negligence, its Petition for Revival is granted.

Even without a pending patent application and the absence of any exception to extend the period for revival, petitioner was already
threatening to pursue legal action against respondent Therapharma, Inc. if it continued to develop and market its losartan product,
Lifezar.192 Once petitioner is granted a patent for its losartan products, Cozaar and Hyzaar, the loss of competition in the
market for losartan products may result in higher prices. For the protection of public interest, Philippine Patent Application
No. 35526 should be considered a forfeited patent application.

TRADEMARK
 9

5. E.Y. Industrial Sales, Inc., et. Al vs. Shen Dar Electricity and Machinery Co., Ltd.
G.R. No. 184850 October 20, 2010 J. Velasco Jr.

Ey won- prior use even later approval of registration.

FACTS:EY Industrial Sales is a domestic corporation engaged in the production, distribution and sale of air compressors. Shen
Dar is a Taiwan-based foreign corporation engaged in the manufacture of compressors.

From 1997-2004, EY Industrial imported air compressors from Shen Dar.

(Earlier nagfile) In 1997, Shen Dar filed a Trademark Application with the Intellectual Property Office (IPO) for the mark “Vespa”
for the use of air compressors. It was approved in 2007.

In 1999, EY Industrial filed a Trademark Application also for the mark “VESPA” for the use of air compressors . It was approved in
2004.

Shen Dar filed a Petition for Cancellation of the Industrial’s EYES COR with the Bureau of Legal Affairs contending that : a. there
was a violation of Section 123.1 (D) of the Intellectual Property Code which provides that: A mark cannot be registered if it is
identical to a mark with an earlier filing or priority date (1997 sila nagfile e) . b. EY Industrial is only a distributor of the air
compressors

On the other hand, EY Industrial alleged that it is the sole assembler and fabricator of VESPA air compressors since the early
1990s and that Shen Dar supplied them air compressors with the mark “SD” and not “VESPA”

ISSUES:
(1) Whether or not EY INDUSTRIAL has the right to the trademark.
(2) Whether or not BLA has the power to cancel the application

RULING:
1.
YES. Based on the evidence, EYIS owns the “VESPA” trademark; it has prior use, as shown by various sales invoices. 

Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and use in trade or
commerce. As between actual use of a mark without registration, and registration of the mark without actual use thereof, the
former prevails over the latter.

For a rule widely accepted and firmly entrenched, because it has come down through the years, is that actual use in commerce or
business is a pre-requisite to the acquisition of the right of ownership. It is non sequitur to hold that porque EYIS is a distributor, it is
no longer the owner.

Under Section 123.1 of IPO provision, the registration of a mark is prevented with the filing of an earlier application for registration.
This must not, however, be interpreted to mean that ownership should be based upon an earlier filing date.   While RA 8293 (IPC)
removed the previous requirement of proof of actual use prior to the filing of an application for registration of a mark, proof of prior
and continuous use is necessary to establish ownership of a mark.  Such ownership constitutes sufficient evidence to oppose the
registration of a mark.

When we talk about trademark, we are just talking about the mark. It does not include the product. Shen Dar is the manufacturer of
the product, but they did not name the product as VESPA. It was EY that named the VESPA, and used the VESPA, even though
they were only the distributors. It was EY that actually used the trademark through the use of receipts, and other documents. 

The first to file rule – According to the SC that Shen Dar filed under the old IPC where prior use is the one applied.

2.
YES. Shen Dar challenges the propriety of such cancellation on the ground that there was no petition for cancellation as required
under Sec. 151 of RA 8293. (here shen nagfile para ipacancel si EY pero sila naicancel ng ipo director)
 10

The IPO Director General stated that, despite the fact that the instant case was for the cancellation of the COR issued in favor of
EYIS, the interests of justice dictate, and in view of its findings, that the COR of Shen Dar must be cancelled.

The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative bodies are not bound by technical rules
of procedure. Such principle, however, is tempered by fundamental evidentiary rules, including due process.

The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude the cancellation of
Shen Dar’s COR.

 It must be emphasized that, during the hearing for the cancellation of EYIS’ COR before the BLA, Shen Dar tried to establish that
it, not EYIS, was the true owner of the mark “VESPA” and, thus, entitled to have it registered.  Shen Dar had more than sufficient
opportunity to present its evidence and argue its case, and it did.  It was given its day in court and its right to due process was
respected.  The IPO Director General’s disregard of the procedure for the cancellation of a registered mark was a valid
exercise of his discretion.

Remember, EY’s application was the one granted, and it is Shen Dar’s application that was cancelled. It does not mean that even
you were the one who filed, your application cannot be cancelled. The BLA, who has jurisdiction over the case, were able to
determine that it is Shen Dar’s trademark that should not have been issued with registration, even it is the plaintiff. 

6.MCDONALD’S CORP. v. MCJOY FASTFOOD CORP.

 11

G.R. NO. 166115 February 2, 2007 J. GARCIA

.
Mcjoy and mcdo similar and confusing using domestic test- dom and holistic test: SC: yes

FACTS: Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken , chicken barbeque,
burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks (fastfood products) in Cebu City
filed with the BPTT-IPO an application for the registration of the trademark “MACJOY & DEVICE”
.
McDonald’s Corporation, a corporation organized under the laws of Delaware, USA opposed against the
respondent’s application claiming that such trademark so resembles its corporate logo (Golden Arches) design
and its McDONALD’s marks such that when used on identical or related goods, the trademark applied for
would confuse or deceive purchasers into believing that the goods originated from the same source or origin.

Macjoy on the other hand averred that the it has used the mark  “MACJOY” for tha past many years in good
faith and has spent considerable sums of money for extensive promotions x x x.

The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the Macjoy
and McDonald’s marks lead to the conclusion that there is confusing similarity between them x x x. Therefore,
Macjoy’s application was denied.

Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling over
the case, actually used the holistic test (which is a test commonly used in infringement cases). The holistic test
looks upon the visual comparisons between the two trademarks. The justifications are the following:

1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke
gothic;
2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings sprouting on
both sides, while the word “McDonald’s” comes with an arches “M” in gold colors, and absolutely without
any picture of a chicken;
3. The word “MacJoy” is set in deep pink and white color scheme while the word“McDonald’s” is written in
red, yellow, and black color combination;
4. The facade of the respective stores of the parties, are entirely different.

ISSUE: Whether or not there is a confusing similarity between the McDonald’s marks of the petitioner and
the respondent’s “MACJOY & DEVICE” trademark when it applied to classes 29 ad 30 of the International
Classification of Goods.

RULING:  YES. In determining similarity and likelihood of confusion, jurisprudence has developed two
tests, the dominancy test and the holistic test.

The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion or deception.

In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. Under the latter test, a comparison of
the words is not the only determinant factor.

The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not
only looks at the visual comparisons between two trademarks but also the aural impressions created by
 12

the marks in the public mind as well as connotative comparisons, giving little weight to factors like
prices, quality, sales outlets and market segments.

In the case at bar, the Supreme Court ruled that  “McDonald’s” and “MacJoy” marks are confusingly similar
with each other such that an ordinary purchaser can conclude an association or relation between the marks.

Similarities: To begin with, both marks use the corporate “M” design logo and the
prefixes “Mc” and/or “Mac”as dominant features. The first letter “M” in both marks puts emphasis on the
prefixes “Mc”and/or “Mac” by the similar way in which they are depicted i.e. in an arch-like, capitalized and
stylized manner. For sure, it is the prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches
the attention of the consuming public. Verily, the word “MACJOY” attracts attention the same way as
did “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S
marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in
the sale of fastfood products.

Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he
chose the prefix “Mac” to be the dominant feature of the trademark. The prefix“Mac” and “Macjoy” has no
relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the name of the niece of MacJoy’s
president whom he said was the basis of the trademark MacJoy. By reason of the MacJoy’s implausible and
insufficient explanation as to how and why out of the many choices of words it could have used for its trade-
name and/or trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is that
the MacJoy would want to ride high on the established reputation and goodwill of the McDonald’s
marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question.

7. FREDCO MANUFACTURING CORPORATION vs. PRESIDENT AND FELLOWS OF

HARVARD COLLEGE (HARVARD UNIVERSITY) G.R. No. 185917 June 1, 2011 J. Carpio
 13

Harvard name – infringed by Fredco ambisyoso

FACTS: Fredco filed a petition to cancel the registration of Harvard’s mark “Harvard Veritas Shield
Symbol” used in some products such as bag and t shirts

Fredco alleged that the mark "Harvard" for t-shirts, polo shirts, sandos, briefs, jackets and slacks was first
used in the Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co., Inc. (New
YorkFredco’s predessor-in-interest.

On 20 April 2004, Harvard University filed an administrative complaint against Fredco before the IPO for
trademark infringement and/or unfair competition with... damages., alleges that it is the rightful owner of the
name and mark as they have been using their logo worldwide since 1872. Harvard further contends that it
never authorized any person to use its name or mark in connection with goods in the Philippines.

The IPO Bureau of Legal Affairs cancelled Harvard’s registration over the mark but only on the goods that are
confusingly similar with Fredco however such was reversed by the IPO.

ISSUE:Whether or not Harvard’s trade name is infringed.

RULING:YES. Harvard’s tradename is infringed.

GR Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be
registered, it must have been actually used in commerce for not less than two months in the Philippines prior
to the filing of an application for its registration.

While Harvard University had actual prior use of its marks abroad for a long time, it did not have actual prior
use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its application for registration of
the mark "Harvard" with the then Philippine Patents Office. However, Harvard University’s registration of the
name "Harvard" is based on home registration which is allowed under Section 37 of R.A. No. 166. As pointed
out by Harvard University in its Comment:

XCN: Although Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the
applicant thereof must prove that the same has been actually in use in commerce or services for not less than
two (2) months in the Philippines before the application for registration is filed, where the trademark sought to
be registered has already been registered in a foreign country that is a member of the Paris Convention, the
requirement of proof of use in the commerce in the Philippines for the said period is not necessary. An
applicant for registration based on home certificate of registration need not even have used the mark or trade
name in this country.

Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge, Massachusetts, obviously
suggests a false connection with Harvard University. On this ground alone, Fredco’s registration of the mark
“Harvard” should have been disallowed. Indisputably, Fredco does not have any affiliation or connection with
Harvard University, or even with Cambridge, Massachusetts. Fredco or its predecessor New York Garments
was not established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.

Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention, whether or
not the trade name forms part of a trademark, is protected “without the obligation of filing or registration .”
“Harvard” is the trade name of the world famous Harvard University, and it is also a trademark of Harvard
University.
 14

Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard University is
entitled to protection in the Philippines of its trade name “Harvard” even without registration of such
trade name in the Philippines.

This means that no educational entity in the Philippines can use the trade name “Harvard” without the consent
of Harvard University.

the Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade
name “Harvard” even without registration of such trade name in the Philippines. It explained: 

“There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark
not only in the United States but also internationally, including the Philippines. The mark "Harvard" is
rated as one of the most famous marks in the world. It has been registered in at least 50 countries. It has
been used and promoted extensively in numerous publications worldwide. It has established a considerable
goodwill worldwide since the founding of Harvard University more than 350 years ago. It is easily
recognizable as the trade name and mark of Harvard University of Cambridge, Massachusetts, U.S.A.,
internationally known as one of the leading educational institutions in the world. As such, even before Harvard
University applied for registration of the mark "Harvard" in the Philippines, the mark was already protected
under Article 6bis and Article 8 of the Paris Convention.”

8.In-N-Out Burger, Inc. vs. Sehwani, Inc. and/or Benita’s Frites, Inc., G.R. No. 179127, Dec. 24, 2008 J. Chico-Nazario

Unfair comp and jurisdiction of IPO – yes to both

 15

FACTS:Petitioner IN-N-OUT BURGER, INC ., is a business entity incorporated under the laws of California. It is a signatory to
the Convention of Paris on Protection of Industrial Property and the TRIPS Agreement. It is engaged mainly in the restaurant
business, but it has never engaged in business in the Philippines.

Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the Philippines

. Sometime in 1991, Sehwani filed with the BPTTT an application for the registration of the mark “IN N OUT (the inside of
the letter “O” formed like a star). Its application was approved and a certificate of registration was issued in its name on
1993.

In 2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing Agreement, wherein the former entitled the latter to
use its registered mark, “IN N OUT.”

Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the Bureau of Trademarks for the “IN-N-
OUT” and “IN-N-OUT Burger & Arrow Design. In 2000, In-N-Out Burger found out that Sehwani, Incorporated had already
obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star).” As a result Also in
2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to cease and desist from claiming ownership of the mark
“IN-N-OUT” and to voluntarily cancel its trademark registration.

Sehwani Inc. did not accede to In-N-Out Burger’s demand but it expressed its willingness to surrender its registration for a
consideration.

In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint against the Sehwani, Inc. and
Benita Frites, Inc. for unfair competition and cancellation of trademark registration.

ISSUES:
(1) Whether or not the Intellectual Property Office (an administrative body ) have jurisdiction of cases involving provisions of the
IPC (e.g. unfair competition).
(2) Whether or not there was unfair competition.

RULING:
1.YES. Section 10 of the Intellectual Property Code specifically identifies the functions of the Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.–The Bureau of Legal Affairs shall have the following functions:

10.1 Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of
Section 64, cancellation of patents and utility models, and industrial designs; and petitions for compulsory licensing of patents;

The Intellectual Property Code also expressly recognizes the appellate jurisdiction of the IPO Director General over the decisions of
the IPO Director of Legal Affairs, to wit:

Section 7. The Director General and Deputies Director General. 7.1 Functions.–The Director General shall exercise the following
powers and functions:
b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the
Director of Trademarks, and the Director of Documentation, Information and Technology Transfer Bureau. The decisions of the
Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, and the Director of
Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions
of the Director of Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and
Industry;

The Court of Appeals erroneously reasoned that Section 10(a) of the Intellectual Property Code, conferring upon the BLA-IPO
jurisdiction over administrative complaints for violations of intellectual property rights, is a general provision, over which the
specific provision of Section 163 of the same Code, found under Part III thereof particularly governing trademarks, service marks,
and tradenames, must prevail. Proceeding therefrom, the Court of Appeals incorrectly concluded that all actions involving
trademarks, including charges of unfair competition, are under the exclusive jurisdiction of civil courts.

Such interpretation is not supported by the provisions of the Intellectual Property Code.

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section states that the
regular courts have sole jurisdiction over unfair competition cases, to the exclusion of administrative bodies.
 16

On the contrary, Sections 160 and 170, which are also found under Part III of the Intellectual Property Code, recognize the
concurrent jurisdiction of civil courts and the IPO over unfair competition cases. These two provisions read:

Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action.–Any foreign national or
juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a
civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin
and false description, whether or not it is licensed to do business in the Philippines under existing laws.

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to decide the petitioner’s administrative case
against respondents and the IPO Director General had exclusive jurisdiction over the appeal of the judgment of the I PO Director of
Legal Affairs.

2. YES. The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of
the goods and (2) intent to deceive the public and defraud a competitor. The confusing similarity may or may not result from
similarity in the marks, but may result from other external factors in the packaging or presentation of the goods. The intent to
deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual
fraudulent intent need not be shown.

The evidence on record shows that the [herein respondents] were not using their registered trademark but that of the
[petitioner]. [Respondent] SEHWANI, INC. was issued a Certificate of Registration for IN N OUT (with the Inside of the Letter
"O" Formed like a Star) for restaurant business in 1993. The restaurant opened only in 2000 but under the name IN-N-OUT
BURGER. Apparently, the [respondents] started constructing the restaurant only after the [petitioner] demanded that the latter desist
from claiming ownership of the mark IN-N-OUT and voluntarily cancel their trademark registration. Moreover, [respondents] are
also using [petitioner’s] registered mark Double-Double for use on hamburger products. In fact, the burger wrappers and the French
fries receptacles the [respondents] are using do not bear the mark registered by the [respondent], but the [petitioner’s] IN-N-OUT
Burger’s name and trademark IN-N-OUT with Arrow design.

There is no evidence that the [respondents] were authorized by the [petitioner] to use the latter’s marks in the business.
[Respondents’] explanation that they are not using their own registered trademark due to the difficulty in printing the "star" does
not justify the unauthorized use of the [petitioner’s] trademark instead.

Further, [respondents] are giving their products the general appearance that would likely influence purchasers to believe
that these products are those of the [petitioner]. The intention to deceive may be inferred from the similarity of the goods as
packed and offered for sale, and, thus, action will lie to restrain such unfair competition.

9.La Chemise Lacoste S.A. vs Hon. Fernandez, Et Al.

G.R. No. L-63796-97 May 2, 1984 J. Gutierrez Jr.
 17

Lacoste- Well known under paris- so protected

FACTS: Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the trademarks ‘Lacoste,’ ‘Chemise
Lacoste,’ and ‘Crocodile Device’ used on clothing and other goods that are sold in many parts of the world.

Herein respondent Hemadas & Co., a domestic firm, applied and was granted registration of the mark ‘Chemise Lacoste and
Crocodile Device’ for its garment products.

Sometime later, petitioner applied for the registration of its mark ‘ Crocodile Device’ and ‘Lacoste’ but was opposed by herein
respondent. Later, petitioner filed a letter-complaint of unfair competition before the NBI which led to the issuance of search
warrants and the seizure of goods of respondent Hemadas.

Respondent moved to quash the warrants alleging that its trademark was different from petitioner’s trademark . Respondent court
ruled to set aside the warrants and to return the seized goods.

ISSUE: Whether or not petitioner’s trademark is a well-known mark protected under the Paris Convention.

RULING: 
YES. In upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of
trademarks of a foreign corporation, we are moreover recognizing our duties and the rights of foreign states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and France are parties.

Here, We find and conclude that the petitioner is not doing business in the Philippines. Rustan is actually a middleman acting and
transacting business in its own name and or its own account and not in the name or for the account of the petitioner.

But even assuming the truth of the private respondent's allegation that the petitioner failed to allege material facts in its petition
relative to capacity to sue, the petitioner may still maintain the present suit against respondent Hemandas.

As early as 1927, this Court was, and it still is, of the view that a foreign corporation not doing business in the Philippines
needs no license to sue before Philippine courts for infringement of trademark and unfair competition.

Thus, in one case. a foreign corporation which has never done any business in the Philippines and which is unlicensed and
unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products
bearing its corporate and tradename, has a legal right to maintain an action in the Philippines to restrain the residents and
inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it
appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose
of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation.

In Vanity Fair Mills, Inc. v. T Eaton Co. (234 F. 2d 633) the United States Circuit Court of Appeals had occasion to comment on the
extraterritorial application of the Paris Convention It said that:

11] The International Convention is essentially a compact between the various member countries to accord in their own countries to
citizens of the other contracting parties trademark and other rights comparable to those accorded their own citizens by their domestic
law. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as that
country makes available to its own citizens. In addition, the Convention sought to create uniformity in certain respects by obligating
each member nation 'to assure to nationals of countries of the Union an effective protection against unfair competition.

By the same token, the petitioner should be given the same treatment in the Philippines as we make available to our own citizens.
We are obligated to assure to nationals of "countries of the Union" an effective protection against unfair competition in the same way
that they are obligated to similarly protect Filipino citizens and firms.

10. Birkenstock Orthopaedie GMBH and Co. KG (Formerly Birkenstock Orthopaedie GMBH) vs. Philippine Shoe Expo
Marketing Corp.
G.R. No. 194307 Nov. 20, 2013 J. Perlas-Bernabe
 18

May registration si PSEM domestic corp but was cancelled kasi no actual use- so they filed to oppose reg of birks na tunay---
Birkenstock- won sc approved registration na finile nila.

FACTS:Petitioner Birkenstock, a corporation duly organized and registered and existing under the laws of Germany applied for
various trademarks registration before the Intellectual PropertyOffice (IPO). However, the applications were suspended in view of
the existing registration of the mark “BIRKENSTOCK AND DEVICE” under Registration No. 56334, dated Oct. 21, 1993 in the
name of Shoe Town International and Industrial Corp , the predecessor-in-interest of respondent Philippine Shoe Expo Marketing
Corp.

On May 27, 1997, Petitioner Birkenstock, filed a petition for cancellation of Registration No. 56334, on the ground that it is the
lawful and rightful owner of the Birkenstock trademark.

During the pendency of the case, respondent and its predecessor-in –interest failed to file the required 10 th Year Declaration
of Actual Use, thereby resulting the cancellation of the mark. Accordingly, the cancellation case was dismissed for being
moot and academic thereby paving the way for the publication of the subject application.

In response, respondent filed with Bureau of Legal Affairs (BLA) of the IPO three verified notices of opposition to the
subject application together with its predecessor-in-interest, and alleging that it has been using the Birkenstock marks in the
Philippines for more than 16 years through the mar “BIRKENSTOCK AND DEVICE ”. The BLA of IPO sustained
respondent’s opposition.

Finding the IPO Director General’s reversal of the BLA unacceptable, respondent filed a petition for review with the CA.

ISSUE: Whether or not the subject mark should be allowed registration in the name of petitioner birkentock

RULING:

YES. The Court ruled in favour of the petitioner.

Under Section 12 of the RA 166 Section 12, it provides that, “Each certificate of registration shall remain in force for 20 years: ( C:
THIS IS A 1947 LAW) iP CODE NOW PROVIDES 10 YEARS)

Provided, that the registration under the provisions of this Act shall be cancelled by the Director, unless within 1 year following the
fifth, tenth and fifteenth anniversaries of the date of the issue of the certificate of registration, the registrant shall file in the Patent
Office an affidavit showing that the mark or trade-name is still in use or showing that its non-use is due to special circumstances
which excuse such non-use and is not due to any intention to abandon the same, and pay the required fee.

ORRRR: uch rule was carried over in Sections 124.2 and 145 of RA 8293, otherwise known as the Intellectual Property Code of the
Philippines (IP Code), viz.:chanRoblesvirtualLawlibrary

Sec. 124. Requirements of Application. – x x x

xxx

124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by
the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark
shall be removed from the Register by the Director.

Sec. 145. Duration. – A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shall file a
declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as
prescribed by the Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise,
the mark shall be removed from the Register by the Office.

In the case at bar, respondent admitted that it failed to file the 10 TH yr DAU fo Registration No. 56334 within the requisite period, or
on or before October 21, 2004. As a consequence, it was deemed to have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that the registration of a trademark, by itself, is not a mode of acquiring ownership. If the
applicant is not the owner of the trademark, he has no right to apply for registration.
 19

Besides, petitioner has duly established its true and lawful ownership of the mark “BIRKENSTOCK.”
Under Section 238 of RA 166, which is also the law governing the subject applications, in order to register a trademark, one must be
the owner thereof and must have actually used the mark in commerce in the Philippines for two (2) months prior to the application
for registration. Section 2–A 39 of the same law sets out to define how one goes about acquiring ownership thereof. Under the same
section, it is clear that actual use in commerce is also the test of ownership but the provision went further by saying that the mark
must not have been so appropriated by another. Significantly, to be an owner, Section 2–A does not require that the actual use of a
trademark must be within the Philippines. Thus, under RA 166, one may be an owner of a mark due to its actual use but may not yet
have the right to register such ownership here due to the owner’s failure to use the same in the Philippines for two (2) months prior
to registration.40

It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its registration. Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant’s ownership of the trademark, and of the exclusive right to the use thereof. Such
presumption, just like the presumptive regularity in the performance of official functions, is rebuttable and must give way to
evidence to the contrary.41

Clearly, it is not the application or registration of a trademark that vests ownership thereof, but it is the ownership of a trademark that
confers the right to register the same. A trademark is an industrial property over which its owner is entitled to property rights which
cannot be appropriated by unscrupulous entities that, in one way or another, happen to register such trademark ahead of its true and
lawful owner.

in other words, the prima facie presumption brought about by the registration of a mark may be challenged and overcome in
an appropriate action, x x x by evidence of prior use by another person, i.e., it will controvert a claim of legal appropriation or of
ownership based on registration by a subsequent user. This is because a trademark is a creation of use and belongs to one who first
used it in trade or commerce.4

In the instant case, petitioner was able to establish that it is the owner of the mark “BIRKENSTOCK.” It submitted evidence
relating to the origin and history of “BIRKENSTOCK” and its use in commerce long before respondent was able to register
the same here in the Philippines. It has sufficiently proven that “BIRKENSTOCK” was first adopted in Europe in 1774 by its
inventor, Johann Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous generations of his kin
continuously engaged in the manufacture and sale of shoes and sandals bearing the mark “BIRKENSTOCK” until it became the
entity now known as the petitioner. Petitioner also submitted various certificates of registration of the mark “BIRKENSTOCK” in
various countries and that it has used such mark in different countries worldwide, including the Philippines. 44

On the other hand, aside from Registration No. 56334 which had been cancelled, respondent only presented copies of sales
invoices and advertisements, which are not conclusive evidence of its claim of ownership of the mark “BIRKENSTOCK” as
these merely show the transactions made by respondent involving the same.45
In view of the foregoing circumstances, the Court finds the petitioner to be the true and lawful owner of the mark
“BIRKENSTOCK” and entitled to its registration, and that respondent was in bad faith in having it registered in its name.

11. Canon Kabushiki Kaisha vs. Court of Appeals and NSR Rubber Corporation
G.R. No. 120900, July 20, 2000, J. Gonzaga-Reyes

Canon for sandals of res- opposed by canon with products of toner paints- SC: no confusion. DIFF PRODUCTS
 20

FACTSPrivate respondent NSR Rubber Corporation filed an application for registration of the mark CANON for
sandals in the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT).

A Verified Notice of Opposition was filed by petitioner, a foreign corporation duly organized and existing under
the laws of Japan, alleging that it will be damaged by the registration of the trademark CANON in the name of private
respondent.

The Bureau of Patents issued its decision dismissing the opposition of petitioner and giving due course to private
respondent's application for the registration of the trademark CANON.

Petitioner appealed the decision of the BPTTT with public respondent Court of Appeals that eventually affirmed the
decision of BPTTT. Basically The BPTTT and the Court of Appeals share the opinion that the trademark
"CANON" as used by petitioner for its paints, chemical products, toner, and dyestuff, can be used by private
respondent for its sandals because the products of these two parties are dissimilar.

Petitioner protests the appropriation of the mark CANON by private respondent on the ground that petitioner
has used and continues to use the trademark CANON on its wide range of goods worldwide.

ISSUEWhether or not the trademark Canon filed by the Private Respondents could be registered

RULINGYES. The company’s goods are different from the products of the petitioner.

The corporate name or tradename of petitioner is also used as its trademark on diverse goods including footwear and
other related products like shoe polisher and polishing agents. To lend credence to its claim, petitioner points out that it
has branched out in its business based on the various goods carrying its trademark CANON, including footwear which
petitioner contends covers sandals, the goods for which private respondent sought to register the mark CANON. For
petitioner, the fact alone that its trademark CANON is carried by its other products like footwear, shoe polisher and
polishing agents should have precluded the BPTTT from giving due course to the application of private respondent.

GR Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to
protect as mandated by the Trademark Law.

However, when a trademark is used by a party for a product in which the other party does not deal, the use of the
same trademark on the latter's product cannot be validly objected to.

Here, The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers
class 2 (paints, chemical products, toner, dyestuff), private respondent can use the trademark CANON for its goods
classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products, toner,
and dyestuff of petitioner and the sandals of private respondent.

Even in this instant petition, except for its bare assertions, petitioner failed to attach evidence that would convince this
Court that petitioner has also embarked in the production of footwear products. The Court reiterated the principle that
the certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those
goods specified in the certificate, subject to the conditions and limitations stated therein. Thus, the exclusive right of
petitioner in this case to use the trademark

CANON is limited to the products covered by its certificate of registration. The likelihood of confusion of goods or
business is a relative concept, to be determined only according to the particular, and sometimes peculiar, circumstances
of each case. Indeed, in trademark law cases, even more than in other litigation, precedent must be studied in the light of
the facts of the particular case.
 21

In cases of confusion of business or origin, the question that usually arises is whether the respective goods or
services of the senior user and the junior user are so related as to likely cause confusion of business or origin, and
thereby render the trademark or tradenames confusingly similar. ‘

Goods are related when they belong to the same class or have the same descriptive properties; when they possess
the same physical attributes or essential characteristics with reference to their form, composition, texture or
quality. They may also be related because they serve the same purpose or are sold in grocery stores.

Thus, in Esso Standard Eastern, Inc. vs. Court of Appeals, this Court ruled that the petroleum products on which the
petitioner therein used the trademark ESSO, and the product of respondent, cigarettes are "so foreign to each other as to
make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods".

Moreover, the fact that the goods involved therein flow through different channels of trade highlighted their
dissimilarity. Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the trademark
CANON are unrelated to sandals, the product of private respondent.

We agree with the BPTTT, following the Esso doctrine, when it noted that the two classes of products in this case flow
through different trade channels.

12.GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.], vs. BPI FAMILY BANK
G.R. NO. 175278 September 23, 2015 J Jardeleza.
 22

GSIS Family Bank is identical or deceptively similar to that of BPI Family Bank: yes

FACTS:In 1987, the Government Service Insurance System (GSIS) acquired petitioner BANK from the Commercial Bank of
Manila. Petitioner's management and control was thus transferred to GSIS.

To improve its marketability to the public, especially to the members of the GSIS, petitioner sought Securities and Exchange
Commission (SEC) approval to change its corporate name to "GSIS Family Bank, a Thrift Bank ." Petitioner likewise applied with
the Department of Trade and Industry (DTI) and Bangko Sentral ng Pilpinas (BSP) for authority to use "GSIS Family Bank, a Thrift
Bank" as its business name. The DTI and the BSP approved the applications. 

BPI Family Bank was a product of the merger between the Family Bank and Trust Company (FBTC) and the Bank of the Philippine
Islands (BPI). On June 27, 1969, Later, the Gotianum family registered with the SEC the corporate name "Family First Savings
Bank," which was amended to "Family Savings Bank," and then later to "Family Bank and Trust Company."  Since its incorporation,
the bank has been commonly known as "Family Bank."

In 1985, Family Bank merged with BPI,... BPI Family Savings Bank was registered with the SEC
Eventually, it reached respondent's attention that petitioner is using or attempting to use the name "Family Bank."
Thus, on March 8, 2002, respondent BPI petitioned the SEC Company Registration and Monitoring Department (SEC
CRMD) to disallow or prevent the registration of the name "GSIS Family Bank" or any other corporate name with the
words "Family Bank" in it.
Petitioner argue that the word "family" is a generic or descriptive name, which cannot be appropriated exclusively by
respondent.
ISSUE: Whether or not GSIS Family Bank is identical or deceptively similar to that of BPI Family Bank.

RULING: BPI WON HAVING EXCLUSIVE PRIOR USE (AS HELD BY CA-SC: AFFIRMS CA)- ALLOW
REGISTRATION

YES.

 No corporate name may be allowed by the Securities and Exchange Commission if the proposed name is identical or deceptively or
confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive,
confusing or contrary to existing laws. When a change in the corporate name is approved, the Commission shall issue an amended
certificate of incorporation under the amended name.

In Philips Export B.V. v. Court of Appeals,  this Court ruled that to fall within the prohibition of the law on the right to the
exclusive use of a corporate name, two requisites must be proven, namely:

(1) that the complainant corporation acquired a prior right over the use of such corporate name; and (2) the proposed name
is either

(a) identical or(b) deceptive or confusingly similar to that of any existing corporation or to any other name already protected
by law; or(c) patently deceptive, confusing or contrary to existing law.

Thee two requisites are present in this case.

In this case, respondent was incorporated in 1969 as Family Savings Bank and in 1985 as BPI Family Bank. Petitioner, on the other
hand, was incorporated as GSIS Family – Thrift Bank only in 2002,  or at least seventeen (17) years after respondent started using its
name. The respondent bpi fam has the prior right over the use of the corporate name.

The second requisite in the Philips Export case likewise obtains on two points: the proposed name is (a) identical or (b) deceptive or
confusingly similar to that of any existing corporation or to any other name already protected by law.

On the first point (a), the words "Family Bank" present in both petitioner and respondent's corporate name satisfy the requirement
that there be identical names in the existing corporate name and the proposed one.
 23

A “----while "GSIS" is merely an acronym of the proper name by... which petitioner is identified, the word "thrift" is simply a
classification of the type of bank that petitioner is. Even if the classification of the bank as "thrift" is appended to petitioner's
proposed corporate name, it will not make the said corporate name distinct from... respondent's because the latter is likewise engaged
in the banking business.
On the second point (b), there is a deceptive and confusing similarity between petitioner's proposed name and respondent's corporate
name, as found by the SEC... the test is whether... the similarity is such as to mislead a person using ordinary care and
discrimination
The overriding consideration in determining whether a person, using ordinary care and discrimination, might be misled is the
circumstance that both petitioner and respondent are... engaged in the same business of banking. "The likelihood of confusion is
accentuated in cases where the goods or business of one corporation are the same or substantially the same to that of another
corporation."
Findings of fact of quasi-judicial agencies, like the SEC, are generally accorded respect and even finality by this Court, if supported
by substantial evidence, in recognition of their expertise on the specific matters under their consideration, more so if the same has
been... upheld by the appellate court, as in this case.
AS TO WON GENERIC? NO.
Petitioner cannot argue that the word "family" is a generic or descriptive name, which cannot be appropriated exclusively by
respondent.
"Family," as used in respondent's corporate name, is not generic.
Generic marks are commonly used as the name or description of a kind of... goods, such as "Lite" for beer or "Chocolate Fudge" for
chocolate soda drink. Descriptive marks, on the other hand, convey the characteristics, function, qualities or ingredients of a product
to one who has never seen it or does not know it exists, such as "Arthriticare" for... arthritis medication.[
Under the facts of this case, the word "family" cannot be separated from the word "bank."[50] In asserting their claims before the
SEC up to the Court of Appeals, both petitioner and respondent refer to the phrase "Family Bank" in their submissions. This...
coined phrase, neither being generic nor descriptive, is merely suggestive and may properly be regarded as arbitrary.
Arbitrary marks are "words or phrases used as a mark that appear to be random in the context of its use. They are
generally considered to be easily remembered... because of their arbitrariness. They are original and unexpected in relation
to the products they endorse, thus, becoming themselves distinctive."[51] Suggestive marks, on the other hand, "are marks which
merely suggest some quality or ingredient of goods,... xxx The strength of the suggestive marks lies on how the public perceives the
word in relation to the product or service."[52]
The word "family" is defined as "a group consisting of parents and children living together in a household" or "a group of people
related to one another by blood or marriage."[56] Bank, on the other hand, is defined as "a... financial establishment that invests
money deposited by customers, pays it out when requested, makes loans at interest, and exchanges currency."[57] By definition,
there can be no expected relation between the word "family" and the banking business of... respondent. Rather, the words suggest
that respondent's bank is where family savings should be deposited. More, as in the Ang case, the phrase "family bank" cannot be
used to define an object.
Petitioner's argument that the opinion of the BSP and the certificate of registration granted to it by the DTI constitute authority for it
to use "GSIS Family Bank" as corporate name is also untenable.
The enforcement of the protection accorded by Section 18 of the Corporation Code to corporate names is lodged exclusively in the
SEC. The jurisdiction of the SEC is not merely confined to the adjudicative functions provided in Section 5 of the SEC
Reorganization Act,[58] as amended.[59] By express mandate, the SEC has absolute jurisdiction, supervision and control over all
corporations.[60] It is the SEC's duty to prevent confusion in the use of corporate names not only for the... protection of the
corporations involved, but more so for the protection of the public. It has authority to de-register at all times, and under all
circumstances corporate names which in its estimation are likely to generate confusion.[61]

13.UFC PHILIPPINES, INC. (now merged with NUTRI-ASIA, INC., with NUTRI-ASIA, INC. as the surviving entity) vs
BARRIO FIESTA MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016 J. Leonardo-De Castro
 24

FACTS:
Barrio Fiesta filed an application with the IPO for the mark “PAPA BOY & DEVICE” for “lechon sauce.”

UFC opposed the application. It contended that “PAPA BOY & DEVICE” is confusingly similar with its “PAPA ” marks and its
variations in as much as the former incorporates the term “PAPA”, which is the dominant feature of petitioner’s “PAPA” marks.

UFC averred that the use of “PAPA BOY & DEVICE” mark for lechon sauce product, if allowed, would likely lead the consuming
public to believe that said lechon sauce product originates from or is authorized by UFC, and that the “PAPA BOY & DEVICE”
mark is a variation or derivative of UFC’s “PAPA” marks.

UFC argued that this was especially true considering that UFC’s ketchup product and Barrio Fiesta’s lechon sauce product are
related articles. IPO denied the application of Barrio Fiesta as it is confusingly similar to the mark of UFC.

ISSUE: Whether or not the IPO is correct in denying the application as it is confusingly similar to the mark of UFC .

RULING:YES. Barrio Fiesta’s mark cannot be registered.

There are two tests used in jurisprudence to determine likelihood of confusion, namely the dominancy test used by the IPO, and the
holistic test adopted by the Court of Appeals.

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion,  viz.: (1)
confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the
belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of the
parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed
to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief
that there is some connection between the two parties, though inexistent.

SIMILAR BECAUSE----The mark is related to a product, lechon sauce, an everyday all-purpose condiment and sauce that is not
subjected to great scrutiny and care by the casual purchaser, who knows from regular visits to the grocery store under what aisle to
find it, in which bottle it is contained, and approximately how much it costs. Since UFC’s product, catsup, is also a household
product found on the same grocery aisle, in similar packaging, the public could think that UFC had expanded its product mix to
include lechon sauce, and that the “PAPA BOY” lechon sauce is now part of the “PAPA” family of sauces, which is not unlikely
considering the nature of business that UFC is in.

Thus, if allowed registration, confusion of business may set in, and UFC’s hard-earned goodwill may be associated to the newer
product introduced by Barrio Fiesta, all because of the use of the dominant feature of UFC’s mark on Barrio Fiesta;s mark, which is
the work “PAPA”.

The words “Barrio Fiesta” are not included in the mark, and although printed on the label of Barrio Fiesta’s lechon sauce packaging,
still do not remove the impression that “PAPA BOY” is a product owned by the manufacturer of “PAPA” catsup, by virtue of the
use of the dominant feature. It is possible that UFC could expand its business to include lechon sauce, and that would be well within
UFC’s rights, but the existence of a “PAPA BOY” lechon sauce would already eliminate this possibility and deprive UFC of its
rights as an owner of a valid mark included in the IPO.

ON DOMINANT FEATURE

In McDonald's Corporation v. L.C. Big Mak Burger, Inc., the Court applied the dominancy test in holding that "BIG MAK" is
confusingly similar to "BIG MAC." The Court held:

This Court x x x has relied on the dominancy test rather than the holistic test. The dominancy test considers the dominant features in
the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to
the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark,
disregarding minor differences. Courts will consider more the aural and visual impressions created by the marks in the public mind,
giving little weight to factors like prices, quality, sales outlets and market segments.

Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled:
 25

x x x It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy.
Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is
not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. (G. Heilman Brewing Co. vs.
Independent Brewing Co., 191 F., 489, 495, citing Eagle White Lead Co. vs. Pflugh (CC) 180 Fed. 579). The question at issue in
cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the
mind of the public or deceive purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co., 107 F. 2d 588; x x x)

xxxx

The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the "colorable imitation of a registered mark x x x or a dominant feature thereof."

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in likelihood of

HERE,
A scrutiny of petitioner's and respondent's respective marks would show that the IPO-BLA and the IPO Director General
correctly found the word "PAPA" as the dominant feature of petitioner's mark "PAPA KETSARAP." Contrary to
respondent's contention, "KETSARAP" cannot be the dominant feature of the mark as it is merely descriptive of the
product. Furthermore, it is the "PAPA" mark that has been in commercial use for decades and has established awareness
and goodwill among consumers.

We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant feature of respondent's "PAPA BOY &
DEVICE" mark subject of the application, such that "the word 'PAPA' is written on top of and before the other words such
that it is the first word/figure that catches the eyes."49 Furthermore, as the IPO Director General put it, the part of
respondent's mark which appears prominently to the eyes and ears is the phrase "PAPA BOY" and that is what a purchaser
of respondent's product would immediately recall, not the smiling hog.

14. TAIWAN KOLIN CORP., LTD. VS. KOLIN ELECTRONICS, INC.

G.R. No. 20943 March 25, 2015 J. Velasco Jr.
.
 26

Kolin-taiwan and kolin electro- both class 9 products-yet sc still ruled na can register

FACTS: On February 29,1996, Taiwan Kolin filed with the Intellectual Property Office (IPO), an application (Application No. 4-
1996-106310) for the use of “KOLIN” on a combination of goods, including colored televisions, refrigerators, window-type and
split-type air conditioners, electric fans and water dispensers. However, such application would eventually be considered abandoned
for Taiwan Kolin’s failure to respond to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage. However, the
same application was subsequently revived through Application Serial No. 4-2002-011002, with petitioner electing Class 9 as the
subject of its application, particularly : television sets, cassette recorders, VCD Amplifiers, camcorders and other audio/video
electronic equipments, flat irons, vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones
and automatic goods vending machines.

On July 13,2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived application arguing that
the mark Taiwan Kolin seeks to register is identical, if not confusingly similar with its “KOLIN” mark registered on November
23,2003, covering the following products under Class 9 of the NCL : automatic voltage regulator, converter. Recharger, stereo
booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.

In sc: Petitioner postulates, in the main, that its goods are not closely related to those of Kolin Electronics. On the other hand,
respondent hinges its case on the CA’s findings that its and petitioner’s products are closely-related. Thus, granting
petitioner’s application for trademark registration, according to respondent, would cause confusion as to the public.

ISSUE: Whether or not Taiwan Kolin is entitled to its trademark registration of “KOLIN” over its specific goods of television sets
and DVD pkayers.

RULING:
yes. unrelated and will not cause confusion.

The Supreme Court held that the petitioner’s trademark registration not only covers unrelated goods, but is also incapable of
deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as having, and credited with, at least a
modicum of intelligence to be able to see the difference between the two trademarks in question.

Not deceive ordinary buyer because

While both competing marks refer to the word "KOLIN" written in upper case letters and in bold font, the Court at once notes the
distinct visual and aural differences between them: Kolin Electronics' mark is italicized and colored black while that of Taiwan
Kolin is white in... pantone red color background. The differing features between the two, though they may appear minimal, are
sufficient to distinguish one brand from the other.
t cannot be stressed enough that the products involved in the case at bar are, generally speaking, various kinds of electronic products.
These are not ordinary consumable household items, like catsup, soy sauce or soap which are of minimal cost. 46 The products of the
contending parties are relatively luxury items not easily considered affordable. Accordingly, the casual buyer is predisposed to be
more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. 47 As
further elucidated in Del Monte Corporation v. Court of Appeals:48cralawred

x x x Among these, what essentially determines the attitudes of the purchaser, specifically his inclination to be cautious, is the cost
of the goods. To be sure, a person who buys a box of candies will not exercise as much care as one who buys an expensive
watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few
centavos as he does in purchasing a more valuable thing.  Expensive and valuable items are normally bought only after
deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of
everyday purchase requiring frequent replacement are bought by the casual consumer without great care  x x x.(emphasis
added)cralawlaw

All told, We are convinced that petitioner's trademark registration not only covers unrelated good, but is also incapable of deceiving
the ordinary intelligent buyer. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of
intelligence to be... able to see the differences between the two trademarks in question
Even in same class!
The parties admit that their respective sets of goods belong to Class 9 of the NCL, which includes the following:[22]
Class 9
 27

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-
saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating,
regulating or... controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data
carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash
registers, calculating machines, data... processing equipment, computers; computer software; fire-extinguishing apparatus.
It is hornbook doctrine, as held in the above-cited cases, that emphasis should be on the similarity of the products... involved and not
on the arbitrary classification or general description of their properties or characteristics. The mere fact that one person has adopted
and used a trademark on his goods would not, without more, prevent the adoption and use of the same trademark by others on...
unrelated articles of a different kind.

the Supreme Court ruled that identical marks may be registered for products from the same classification. The mere uniformity in
categorization, by itself, does not automatically preclude the registration of what appears to be an identical mark, if that be the case.
(pwede even under same class!!!!)

Moreover, the SC stated that the products covered by petitioner’s application and respondent’s registration are unrelated. It agreed
with the following :
a. Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’ goods which are power supply and
audio equipment accessories;
b. Taiwan Kolin’s television sets and DVD players perform distinct function and purpose from Kolin Electronics’ power supply
and audio equipments;
c. Taiwan Kolin sells and distributes its various home appliance products on wholesale and to accredited dealers, whereas Kolin
Elkectronics’ goods are sold and flow through electrical and hardware stores.

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

 28

15.MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. v. E&J. GALLO WINERY and
THE ANDERSONS GROUP, INC.
G.R. No. 154342, July 14, 2004, J. CORONA

GALLO IN WINE --- GALLO IN CIGARETTES- NO CONFUSION THUS, NO UC, NO TI

FACTS: Gallo Winery (Gallo) is a foreign company not doing business in the Philippines but organized and existing under the
laws of California, United States (US) where its wineries are located. It is an international seller of its own wines and brandy
products under different registered trademarks, including Gallo and Ernest & Julio Gallo (E&J).
Andersons Group, Inc. (Andersons) is a domestic corporation and has been Gallo’s exclusive wine importer and distributor in the
Philippines since 1991, selling the products in its own name and for its own account.

Gallo’s GALLO wine trademark was registered in the principal register of the Philippine Patent Office (now Intellectual Property
Office) on November 16, 1971 which was renewed on November 16, 1991 for another 20 years. Gallo also applied ERNEST &
JULIO GALLO wine trademark on October 11, 1990 but the records do not disclose if it was ever approved by the Director of
Patents. It is claimed by respondents that the wines were sold in the Philippines in 1974 within the U.S. military facilities only. It
was in 1979 that they had expanded their Philippine market though authorized distributors and independent outlets.

Meanwhile, Mighty Corporation (Mighty) and La Campana and their sister company, Tobacco Industries of the Philippines
(Tobacco Industries), are engaged in the cultivation, manufacture, distribution and sale of tobacco products for which they have been
using the GALLO cigarette trademark since 1973. La Campana registered and was issued a Certificate of Copyright in the
Philippine Patent Office for a lifetime copyright claim over GALLO cigarette labels. La Campana authorized Mighty Corporation to
manufacture and sell cigarettes bearing the GALLO trademark. The trademark GALLO 100’s cigarette was approved by the BIR on
September 14, 1973 and GALLO filter cigarette mark on March 26, 1976 for its manufacture and sale.

Respondents EJ winery knew of GALLO cigarettes in the latter part of 1992 when an Andersons employee saw such cigarettes on
display with GALLO wines in Davao supermarket wine cellar section.

Respondents sent a demand letter to petitioners asking them to stop the GALLO trademark, to no avail .

On March 12, 1993, respondents sued petitioners in RTC Makati for trademark and tradename infringement and unfair
competition, with a prayer for damages and preliminary injunction.

It was denied by the RTC Makati for lack of merit. It ratiocinated that the GALLO trademark registration certificate covered wines
only; that wines and cigarette’s were not related goods since the likelihood of deception and confusion on the part of the consuming
public was very remote; and that Gallo and Andersons failed to prove material damage or great irreparable injury as required by
Section 5, Rule 58 of the Rules of Court. Upon appeal to the CA, it dismissed the petition and affirmed the RTC ruling.

However, after trial on the merits, RTC Makati held Mighty and Campana liable for, and permanently enjoined them from,
committing trademark infringement and unfair competition with respect to the GALLO trademark. On appeal, the CA upheld the
RTC ruling.

ISSUES:
IF(1) Whether or not R.A. 82931 or the Intellectual Property Code of the Philippines (IP Code) is applicable.
(2) Whether Mighty and La Campana are liable for trademark infringement.
(3) Whether Mighty and La Campana are liable for unfair competition and damages.

RULING
1.NO. The applicable laws are the Trademark Law and Paris Convention. The suit was commenced on March 12, 1993 for
trademark infringement and unfair competition committed during the effectivity of the Paris Convention and the Trademark Law

. Meanwhile, R.A. 8293 or the Intellectual Property Code of the Philippines (IP Code), approved on June 6, 1997, took effect only
on January 1, 1998 or about five years after the filing of the complaint.

2.
NO. Article 6 of the Paris Convention enumerates the elements of trademark infringement as follows:

1
 29

(a) registration or use by another person of a trademark which is a reproduction, imitation or translation liable to create
confusion,
(b) of a mark considered by the competent authority of the country of registration of use to be well-known in that country and
is already the mark of a person entitled to the benefits of the Paris Convention, and
(c) such trademark is used for identical or similar goods. (Emphasis supplied)

Section 22 of the Trademark Law holds a person liable for infringement when, among others, he:

(a) “uses without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename
(b) in connection with the sale, offering for sale, or advertising of any goods, business or services
(c) in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or other as to
the source or origin of such goods or services, or identity of such business; OR
(d) reproduce, counterfeit, copy or colorable imitate any such mark or tradename and
(e) apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods, business or services.”
(Emphasis supplied)

Trademark registration and actual use are material to the complaining party’s cause of action.

Meanwhile, Sections 2, 2-A, 9-A, 20 and 22 of the IP Code enumerate the elements of trademark infringement as follows:

(a) a trademark actually used in commerce in the Philippines and registered in the principal register of the
Philippine Patent Office
(b) 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. (Emphasis supplied)

Here, There is no trademark infringement for the following reasons:

(a) the likelihood of confusion, mistake or deceit as to the identity or source of petitioners’ and
respondents’ goods or business is wanting;
(b) wines and cigarettes are not identical, similar, competing or related goods. Confusion of goods
is evident where the litigants are actually in competition; but confusion of business may arise
between non-competing interests as well;
(c) the GALLO wine trademark is not a well-known mark in the context of the Paris Convention
in this case since wines and cigarettes are not identical or similar goods;
(d) consent of the registrant and other fair, just and equitable considerations tilt in favor of
petitioners

First, the likelihood of confusion, mistake or deceit as to the identity or source of petitioners’ and respondents’ goods or business is
wanting.

“Confusion of goods” is when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing
another, in which case defendant’s goods are then bought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s
reputation.

“Confusion of business” is where the goods of the parties are different but the defendant’s product can reasonably (though
mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection
between the plaintiff and defendant which, in fact, does not exist. The likelihood of confusion are determined by the following:

(a) the resemblance between the trademarks;

 30

(b) the similarity of the goods to which the trademark is attached;

(c) the likely effect on the purchaser;
(d) the registrant’s express or implied consent; and
(e) other fair and equitable considerations.

Due regard is also given to the goods’ usual purchaser’s character, attitude, habits, age, training and education.

Further, “colorable imitation” is such similarity in form, content, words, sound, meaning, special arrangement or general appearance
of the trademark or tradename in their overall presentation or in their essential and substantive and distinctive parts as would likely
mislead or confuse persons in the ordinary course of purchasing the genuine article.

The tests for similarity and likelihood of confusion in trademark resemblance are as follows:

(a) Dominancy Test

This focuses on the similarity of the prevalent features of the competing trademarks which might cause
confusion or deception, and thus infringement. The main, essential or dominant features of another, and confusion
or deception is likely to result. Duplication or imitation is unnecessary; nor is it necessary that the infringing label
should suggest an effort to imitate. The gravamen is the confusion or mistake in the mind of the public or
deception of purchasers.

(b) Holistic or Totality Test

This requires that the entirety of the marks as they appear in their respective labels or hang tags in relation
to the good to which they are attached. It must not only focus on the predominant words but also on the other
features appearing in both labels in order that the consumer may draw his conclusion whether one is confusingly
similar to the other.

Applying the Dominancy and Holistic Tests, the dominant feature of the GALLO cigarette trademark is the device of a large rooster
facing left, outlined in black against a gold background. The rooster’s color is either green or red – green for GALLO menthols and
red for GALLO filters. Directly below the large rooster device is the word GALLO. The rooster device is given prominence in the
GALLO cigarette packs in terms of size and location on the labels. The rooster is chosen as the son of petitioners’ president si fond
for fighting cocks. The word “GALLO,” which is the Spanish word for rooster, is to appeal to the sabungeros, i.e. cockfight
aficionados. Further, on the side of the GALLO cigarette packs are the words "MADE BY MIGHTY CORPORATION," thus clearly
informing the public as to the identity of the manufacturer of the cigarettes.

Meanwhile, GALLO Winery’s wine and brandy labels are diverse. In many of them, the labels are embellished with sketches of
buildings and trees, vineyards or a bunch of grapes while in a few, one or two small roosters facing right or facing each other (atop
the EJG crest, surrounded by leaves or ribbons), with additional designs in green, red and yellow colors, appear as minor features
thereof. Directly below or above these sketches is the entire printed name of the founder-owners, "ERNEST & JULIO GALLO" or
just their surname "GALLO," which appears in different fonts, sizes, styles and labels, unlike petitioners’ uniform casque-font bold-
lettered GALLO mark.

Moreover, on the labels of Gallo Winery’s wines are printed the words "VINTED AND BOTTLED BY ERNEST & JULIO
GALLO, MODESTO, CALIFORNIA."

Herein, the many different features like color schemes, art works and other markings of both products drown out the similarity
between them – the us of the word “GALLO” – a family surname for the Gallo Winery’s wines and a Spanish word for rooster for
petitioners’ cigarettes.

Second, wines and cigarettes are not identical, similar, competing or related goods. Confusion of goods is evident where the litigants
are actually in competition; but confusion of business may arise between non-competing interests as well.

“Related goods” is when the public maybe, or is actually, deceived and misled that they come from the same maker or manufacturer.

“Non-competing goods” may be those which, though they are not in actual competition, are so related to each other that it can
reasonably be assumed that they originate from one manufacturer, in which case, confusion of business can arise out of the use of
similar marks. They may also be those which, being entirely unrelated, cannot be assumed to have a common source; hence, there is
no confusion of business, even though similar marks are used. Thus, there is no trademark infringement if the public does not expect
the plaintiff to make or sell the same class of goods as those made or sold by the defendant.
 31

Related goods are when they are so related that the public may be, or is actually, deceived and misled that they come form the same
maker or manufacturer. Whether good are related, the following factors are considered:

(a) the business (and its location) to which the goods belong
(b) the class of product to which the goods belong
(c) the product’s quality, quantity, or size, including the nature of the package, wrapper or container
(d) the nature and cost of the articles
(e) the descriptive properties, physical attributes or essential characteristics with reference to their form,
composition, texture or quality
(f) the purpose of the goods
(g) whether the article is bought for immediate consumption, that is, day-to-day household items
(h) the fields of manufacture
(i) the condition under which the article is usually purchased and
(j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold.

Herein, wines and cigarettes are not identical or competing products. Their product classification is different which is a decisive
factor in determining whether they are related.

Second, it is common knowledge that supermarkets sell an infinite variety of wholly unrelated products. Wines and cigarettes have
nothing in common with respect to their essential characteristics, quality, quantity, size, including the nature of their packages,
wrappers and containers. They are non-competing and are totally unrelated products not likely to cause confusion vis-à-vis the goods
or the business of the petitioners and respondents. Wines are bottled and consumed by drinking while cigarettes are packed in
cartons or packages and smoked. There is a whale of difference between their descriptive properties, physical attributes or essential
characteristics like form, composition, texture and quality.

As to price, the two products are also different. GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO
wines are patronized by middle-to-high-income earners while GALLO cigarettes appeal only to simple folks like farmers, fishermen,
laborers and other low-income workers.

As to channels of trade, the two are being sold separately. GALLO cigarettes are Philippine-made and petitioners neither claim nor
pass off their goods as imported or emanating from Gallo Winery. GALLO cigarettes are distributed, marketed and sold through
ambulant and sidewalk vendors, small local sari-saristores and grocery stores in Philippine rural areas, mainly in Misamis Oriental,
Pangasinan, Bohol, and Cebu.118 On the other hand, GALLO wines are imported, distributed and sold in the Philippines through
Gallo Winery’s exclusive contracts with a domestic entity, which is currently Andresons. By respondents’ own testimonial evidence,
GALLO wines are sold in hotels, expensive bars and restaurants, and high-end grocery stores and supermarkets, not through sari-
sari stores or ambulant vendors.

PWEDE NON COMPETING IF:------In short, tobacco and alcohol products may be considered related only in cases
involving special circumstances which exist only if a famous mark is involved and there is a demonstrated intent to capitalize
on it. Both of these are absent in the present case.

Third, the GALLO wine trademark is not a well-known mark in the context of the Paris Convention in this case since wines and
cigarettes are not identical or similar goods. First, Tobacco Industries used GALLO cigarette trademark in 1973 and the wine
trademark is used in 1984. They are not identical, similar or related goods.

Second, GALLO trademark cannot be considered a strong and distinct mark in the Philippines. The Bureau of Patents, Trademarks
and Technology Transfer (BPTTT) also issued certification for the application of GALLO trademark registration and use for its
“noodles, prepared food or canned noodles, ready or canned sauces for noodles, semolina, wheat flour and bread crumbs, pastry,
confectionary, ice cream, honey, molasses syrup, yeast, baking powder, salt, mustard, vinegar, spices and ice.”

Third and most important, as reiterated above, the GALLO wine trademark is not a well-known mark in the context of the Paris
Convention in this case since wines and cigarettes are not identical or similar goods.

Since Article 6 of the Paris Convention is effective during the time of dispute, Hon. Roberto V. Ongpin, Minister of Trade and
Industry, issued a memorandum dated October 25, 1993 to the Director of Patents, a set of guidelines2 in the implementation of
Article 6 of the Treaty of Paris:

2
 32

a) the mark must be internationally known;

b) the subject of the right must be a trademark, not a patent or copyright or anything else;
c) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark.

Lastly, consent of the registrant and other fair, just and equitable considerations tilt in favor of petitioners. It took respondents
almost 20 years to know about the existence of GALLO cigarettes and sue petitioners for trademark infringement. Given, on one
hand, the long period of time that petitioners were engaged in the manufacture, marketing, distribution and sale of GALLO cigarettes
and, on the other, respondents’ delay in enforcing their rights (not to mention implied consent, acquiescence or negligence), equity,
justice and fairness favor petitioners. Further, there was no malice, bad faith or fraud employed, or that they intended to capitalize on
respondents’ goodwill in adopting the GALLO mark for their cigarettes which are totally unrelated to respondents’ GALLO wines.
Hence, no trademark infringement exists.

3. NONE. There is no unfair competition. Unfair competition under Section 29 of the Trademark Law is when any person who
employs deception or any other means contrary to good faith which he passes off the goods manufactured by him or in which
he deals, or his business, or services for those of the one having established such goodwill, or who commits any acts
calculated to produce said result. It includes the following acts:

(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either
as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or
in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are
those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or
any agent of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such
person is offering the services of another who has identified such services in the mind of the public;
(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith
of a nature calculated to discredit the goods, business or services of another.

The test is whether the public is likely to be deceived. Actual or probable deception and confusion on the part of customers
by reason of defendant’s practices must always appear.

Herein, petitioners never attempted to pass off their cigarettes as those of respondents. There is no evidence of bad faith or
fraud imputable to petitioners in using their GALLO cigarette mark.

16.SOCIETE DES PRODUITS NESTLE V. DY, JR.

G.R. NO. 172276, August 08,2010 J. CARPIO.

NAN AND NANNY- BOTH MILKS- THERE IS TI

 33

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 and since the word nanny means a child’s nurse, there might
result the not so remote probability that defendants NANNY may be confused with infant formula NAN despite the
apparent disparity between the features of the two products.

CA reversed and held that

 NAN products, are all infant preparations, while NANNY is a full cream milk for adults in all ages .
 NAN milk products are sold in tin cans and hence, far expensive than the full cream milk NANNY sold in three
(3) plastic packs containing 80, 180 and 450 grams and worth P8.90, P17.50 and P39.90 per milk pack.
 The labels of NAN products are of the colors blue and white and have at the bottom portion an elliptical shaped
figure containing inside it a drawing of nestling birds, which is overlapped by the trade-name Nestle. On the
other hand, the plastic packs NANNY have a drawing of milking cows lazing on a vast green field, back-
dropped with snow-capped mountains and using the predominant colors of blue and green.
 The word NAN are all in large, formal and conservative-like block letters, while the word NANNY are all in
small and irregular style of letters with curved ends.

With these material differences apparent in the packaging of both milk products, NANNY full cream milk cannot
possibly be an infringement of NAN infant milk. Moreover CA found that NAN infant milk preparation is more
expensive than NANNY instant full cream milk. The cheaper price of NANNY would give, at the very first instance, a
considerable warning to the ordinary purchaser on whether he is buying an infant milk or a full cream milk for adults
Hence, 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.

RULING: 
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: (R – R –U—U—W_)

(a) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade
name, the same need not be registered;

(R3C) (b) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
 34

(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. The Court has also declared:

Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to
guarding his goods or business from actual market competition with identical or similar products of the parties,
but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead
to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining
party has extended his business into the field (see 148 ALR 56 et sq; 53 Am. Jur. 576) or is in any way connected
with the activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148
ALR, 77, 84; 52 Am. Jur. 576, 577). (Emphasis supplied)

17.STERLING PRODUCTS INTERNATIONAL INC. VS. FARBENFABRIKEN BAYER

GR L-19906 April 30, 1969 J. Sanchez

BAYER TRADEMARK- SPI- ON MED AND FBA FOR INSECTICIDE—SC: SPI LIMITED ON MED THUS CANNOT
PREVENT FBA TO SHIT ON IT
 35

FACTS: The Bayer Cross in circle “trademark was registered in Germany in 1904 to Farbenfabriken vorm. Friedr. Bayer
(FFB), successor to the original Friedr. Bauyer et. Comp., and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2).

The “Bayer, and “Bayer Cross in circle” trademarks were acquired by sterling Drug Inc. when it acquired FFB’s subsidiary
Bayer Co. of New York as a result of the sequestration of its assets by the US Alien Property Custodian during World War I. Bayer
products have been known in Philippines by the close of the 19th century.

Sterling Drugs, Inc., owns the trademarks “Bayer” in relation to medicine. ‘

FBA attempted to register its chemical products with the “Bayer Cross in circle” trademarks .

Sterling Products International and FBA seek to exclude each other from use of the trademarks in the Philippines . The trial court
sustained SPI’s right to use the Bayer trademark for medicines and directed FBA to add distinctive word(s) in their mark to indicate
their products come from Germany.” Both appealed.

ISSUE: Whether or not SPI’s ownership of the trademarks extends to products not related to medicine.

RULING:

‘NO. SPI’s certificates of registration as to the Bayer trademarks registered in the Philippines cover medicines only .

Then, Section 11 of the Trademark Law requires that the certificate of registration state "the particular goods . . . for which
it is registered." This is controlling. Under Section 11 aforesaid, likewise to be entered in the certificate of registration is "the
date of the first use in commerce or business. SPI may not claim "first use" of the trademarks prior to the registrations
thereof on any product other than medicines

Nothing in the certificates include chemicals or insecticides. SPI thus may not claim “first use” of the trademarks prior to the
registrations thereof on any product other than medicines.

RATIO: For if otherwise held, a situation may arise whereby an applicant may be tempted to register a trademark on any and all
goods which his mind may conceive even if he had never intended to use the trademark for the said goods.

Omnibus registration is not contemplated by the Trademark Law. The net result of the decision is that SPI may hold on its Bayer
trademark for medicines and FBA may continue using the same trademarks for insecticide and other chemicals, not
medicine. The formula fashioned by the lower court avoids the mischief of confusion of origin, and does not visit FBA with
reprobation and condemnation. A statement that its product came from Germany anyhow is but a statement of fact.

18.PROSOURCE INTERNATIONAL, INC. vs HORPHAG RESEARCH MANAGEMENT SA

G.R. No. 180073 November 25, 2009 J. NACHURA

FACTS: PYCNOGENOL AND PCOGENOL – BOTH ON FOOD- SC: CONFUSINGLY SIMILAR TO

 36

Respondent HORPHAG RESEARCH is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later
discovered that petitioner was also distributing a similar food supplement using the mark PCO-GENOLS since 1996. This prompted
respondent to demand that petitioner cease and desist from using the aforesaid mark.

Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction against petitioner, in using the
name PCO-GENOLS for being confusingly similar. Petitioner appealed otherwise.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL"
which appears to be merely descriptive and thus open for trademark registration by combining it with other words and concluded
that the marks, when read, sound similar, and thus confusingly similar especially since they both refer to food supplements.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the Dominancy or the
Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

ISSUE: Whether or not the names are confusingly similar.

RULING:
YES. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and
deception, thus constituting infringement. If the competing trademark contains the main, essential and dominant features of another,
and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary
that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or to deceive purchasers. Courts will consider more the aural and visual impressions
created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets, and market segments.

The Holistic Test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging,
in determining confusing similarity. Not only on the predominant words should be the focus but also on the other features appearing
on both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other.

SC applied the Dominancy Test. HERE Both the words have the same suffix "GENOL" which on evidence, appears to be merely
descriptive and furnish no indication of the origin of the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the sound effects are confusingly similar not to
mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public
consumers.

And although there were dissimilarities in the trademark due to the type of letters used as well as the size, color and design employed
on their individual packages/bottles, still the close relationship of the competing products’ name in sounds as they were pronounced,
clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common source and
manufacturer.

19.Esso Standard vs CA GR No. L-29971 Aug 31, 1982 J. Teehankee

ESO- CIGAR AND PETROLEUM- SC- NO TI BEC NON COMPETING

 37

FACTS: The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
Philippines. it is engaged in the sale of petroleum products which are identified by the trademark 'Esso'.
Esso is a successor of Standard Vacuum Oil Co, it registered as a business name with the Bureau of
Commerce in 1962.

United Cigarette is a domestic corporation engaged in the manufacture and sale of cigarettes. it acquired the
business from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on its
cigarettes.

The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an extent that the
buying public would be deceived as ti the quality and origin of the said products to the detriment and
disadvantage of its own products. The lower court found United Cigarette guilty of infringement. Upon appeal,
the Court of Appeals ruled that there was no infringement in this case.

ISSUE:
Whether or not there is infringement.

RULING:
NO. Infringement is defined by law as the use without the consent of the trademark owner of any
reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename which would likely
cause confusion or mistake or deceive purchasers or others as to the source or origin of such goods.

The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether trademark
infringement exists depend on whether or not the goods are so related that the public may be or is actually
deceived and misled that they come from the same maker. Under the Related Goods Theory, goods are related
when they belong to the same class or have the same descriptive properties or when they have same physical
attributes. ‘

In these case, the goods are absolutely different and are so foreign from each other it would be unlikely for
purchasers to think that they came from the same source. Moreover, the goods flow from different channels of
trade and are evidently different in kind and nature.

20.ASIA BREWERY, INC VS COURT OF APPEALS

G.R. NO. 103543, JULY 5, 1993, Grino-Aquino J.
 38

USE OF WORD “PALE PILSEN ON BEERS- SC- THIS IS GENERIC SO NO TI/UC

FACTS:San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of
trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which
has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.

RTC dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition
against" SMC.

CA reversed the RTC‘s decision, finding the defendant Asia Brewery Incorporated GUILTY of infringement of
trademark and unfair competition. ABI then filed a petition for certiorari.

ISSUE: Whether or not the words PALE PILSEN as part of ABI‘s trademark constitute infringement of SMC‘s
trademark?

RULING:
NO. ABI has neither infringed SMC's trademark nor committed unfair competition. Infringement of trademark is a form
of unfair competition. It is determined by the "test of dominancy,‖ a universal test whether the public is likely to be
deceived. It means if the competing trademark contains the main or essential or dominant features of another,
and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary.

The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to
cause confusion or mistakes in the mind of the public or deceive purchasers.

There is hardly any dispute that the dominant feature of SMC's trademark is the name of the product: SAN MIGUEL
PALE PILSEN, written in white Gothic letters with elaborate serifs at the beginning and end of the letters "S" and "M"
on an amber background across the upper portion of the rectangular design.

On the other hand, the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with the word "Beer"
written in large amber letters, larger than any of the letters found in the SMC labe Neither in sound, spelling or
appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who
purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. 

Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the domestic beer market for
the past hundred years, those who have been drinking no other beer but SAN MIGUEL PALE PILSEN these
many years certainly know their beer too well to be deceived by a newcomer in the market. If they gravitate to
ABI's cheaper beer, it will not be because they are confused or deceived, but because they find the competing
product to their taste.

Here, Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of
ABI‘s trademark, are generic words descriptive of the color (pale), of a type of beer (pilsen ). And the words "pale
pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark.
No one may appropriate generic or descriptive words. They belong to the public domain .

21. VICTORIO DIAZ vs. PEOPLE OF THE PHILIPPINES and LEVI STRAUSS (PHILS.) INC.
G.R. NO. 180677, February 18, 2013, Bersamin J.
 39

FACTS: LEVIS- LS JEANS (LATEST STYLE ) – AS LEVIS 501- SC NO TI- CONFUSION REMOTE

Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that Diaz was
selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines
hired a private investigation group to verify the information.

Surveillance and the purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the
tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501. Armed with the search warrants, NBI agents
searched the tailoring shops of Diaz and seized several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed
that it did not authorize the making and selling of the seized jeans; that each of the jeans were mere imitations of genuine
LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate design, the tab, and the leather
patch; and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch.

Diaz admitted being the owner of the shops searched, but he denied any criminal liability. He stated that he did not
manufacture Levi’s jeans, and that he used the label " LS Jeans Tailoring" in the jeans that he made and sold; that the
label "LS Jeans Tailoring" was registered with the Intellectual Property Office; that his shops received clothes for
sewing or repair; that his shops offered made-to-order jeans, whose styles or designs were done in accordance with
instructions of the customers; that since the time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily recognizable because the label "LS Jeans
Tailoring," and the names of the customers were placed inside the pockets, and each of the jeans had an "LSJT" red tab;
that "LS" stood for "Latest Style;" and that the leather patch on his jeans had two buffaloes, not two horses.
RTC held Diaz guilty as charged.

ISSUE: Whether or not Victorio Diaz is guilty to Trademark Infringement

HELD:
NO. The elements of the offense of trademark infringement under the  Intellectual Property Code are, therefore, the
following: R R U U W
1. The trademark being infringed is registered in the Intellectual Property Office;
2. The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods,
business or services; or the infringing mark 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;
4. The use or application of the infringing mark 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
5. The use or application of the infringing mark is without the consent of the trademark owner or the assignee
thereof.

As can be seen, the likelihood of confusion is the gravamen of the offense of trademark infringement.  There are two tests
to determine likelihood of confusion, namely: the dominancy test, and the holistic test.

The dominancy test focuses on the similarity of the main, prevalent or essential features of the competing trademarks
that might cause confusion. Infringement takes place when the competing trademark contains the essential features of
another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause
confusion or deceive purchasers. The holistic test considers the entirety of the marks, including labels and packaging, in
determining confusing similarity. The focus is not only on the predominant words but also on the other features
appearing on the labels.

Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in determining the
likelihood of confusion between them. The maong pants or jeans made and sold by Levi’s Philippines, which included
LEVI’S 501, were very popular in the Philippines.
 40

The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand and quite expensive.
Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in
tailoring shops like those of Diaz’s as well as not acquired on a "made-to-order" basis

. Under the circumstances, the consuming public could easily discern if the jeans were original or fake LEVI’S
501, or were manufactured by other brands of jeans. Confusion and deception were remote.

First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary
household items like catsup, soy sauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive.

Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over
his purchase. Confusion and deception, then, is less likely. Second, like his beer, the average Filipino consumer
generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler
or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be
distracted. Finally, in line with the foregoing discussions, more credit should be given to the "ordinary purchaser." Cast
in this particular controversy, the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of product involved. the "ordinary purchaser" was defined as one " accustomed to
buy, and therefore to some extent familiar with, the goods  in question. The test of fraudulent simulation is to be found in
the likelihood of the deception of  some persons in some measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been associated.

There were other remarkable differences between the two trademarks that the consuming public would easily perceive.
Diaz aptly noted such differences, as follows: 1. Two horse design against his buffalo design 2. Red Tab indicates the
word "LEVI’S" while that of the accused indicates the letters "LSJT" which means LS JEANS TAILORING. Moreover,
based on the certificate issued by the Intellectual Property Office, "LS JEANS TAILORING" was a registered trademark
of Diaz. He had registered his trademark prior to the filing of the present cases.21 The Intellectual Property Office would
certainly not have allowed the registration had Diaz’s trademark been confusingly similar with the registered trademark
for LEVI’S 501 jeans.

22 G.R. No. 101897. March 5, 1993.LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF APPEALS, LYCEUM
OF APARRI, LYCEUM OF CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO, INC., LYCEUM OF
 41

TUAO, INC., BUHI LYCEUM, CENTRAL LYCEUM OF CATANDUANES, LYCEUM OF SOUTHERN PHILIPPINES,
LYCEUM OF EASTERN MINDANAO, INC. and WESTERN PANGASINAN LYCEUM, INC., respondents

Lyceum for schools- claims exclusive use of word lyceum- sc: no such word Is generic

Facts: Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding against the Lyceum of Baguio to
change its corporate name alleging that the 2 names are substantially identical because of the word ‘Lyceum’. Petitioner is an
educational institution duly registered with the Securities and Exchange Commission 

SEC found for petitioner and the SC denied the consequent appeal of Lyceum of Baguio in a resolution.

Petitioner then basing its ground on the resolution, wrote to all educational institutions which made use of the word ‘Lyceum’ as
part of their corporate name to discontinue their use.

When this recourse failed, petitioner moved before the SEC to enforce its exclusive use of the word ‘Lyceum.’ Petitioner further
claimed that the word ‘Lyceum’ has acquired a secondary meaning in its favor.

The SEC hearing officer rendered a decision sustaining petitioner's claim to an exclusive right to use the word "Lyceum." The
hearing officer relied upon the SEC ruling in the Lyceum of Baguio, Inc. case (SEC-Case No. 1241) and held that the word
"Lyceum" was capable of appropriation and that petitioner had acquired an enforceable exclusive right to the use of that word.

unlike its hearing officer, the SEC En Banc held that the attaching of geographical names to the word "Lyceum" served sufficiently
to distinguish the schools from one another, especially in view of the fact that the campuses of petitioner and those of the private
respondents were physically quite remote from each other CA affirmed sec en banc hence the case-

Issues:

(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by petitioner to the exclusion of others.

(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of petitioner.

(3) Whether or not petitioner is infringed by respondent institutions’ corporate names.

Ruling:

(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the name of the petitioner, “Lyceum” appears to be
a substitute for “university;” in other places, however, “Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary school or a
college. It may be that the use of the word “Lyceum” may not yet be as widespread as the use of “university,” but it is clear that a not
inconsiderable number of educational institutions have adopted “Lyceum” or “Liceo” as part of their corporate names. Since
“Lyceum” or “Liceo” denotes a school or institution of learning, it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.

(2) NO. Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to
an article in the market, ----because geographical or otherwise descriptive might nevertheless have been used so long and so
exclusively by one producer with reference to this article that, ----in that trade and to that group of the purchasing public,----- the
word or phrase has come to mean that the article was his produce.

With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the aforementioned requisites. While the appellant may
have proved that it had been using the word ‘Lyceum’ for a long period of time, this fact alone did not amount to mean that the said
word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all
by itself to the exclusion of others.
 42

More so, there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other
educational institutions.

(3) NO. We do not consider that the corporate names of private respondent institutions are “identical with, or deceptively or
confusingly similar” to that of the petitioner institution.

True enough, the corporate names of private respondent entities all carry the word “Lyceum” but confusion and deception are
effectively precluded by the appending of geographic names to the word “Lyceum.” Thus, we do not believe that the “Lyceum of
Aparri” can be mistaken by the general public for the Lyceum of the Philippines, or that the “Lyceum of Camalaniugan” would be
confused with the Lyceum of the Philippines.  We conclude and so hold that petitioner institution is not entitled to a legally
enforceable exclusive right to use the word “Lyceum” in its corporate name and that other institutions may use “Lyceum” as part of
their corporate names.

ADVERTISING
DOCTRINES IF

SYLLABUS

1. CORPORATION LAW; CORPORATE NAMES; REGISTRATION OF PROPOSED NAME WHICH IS IDENTICAL

OR CONFUSINGLY SIMILAR TO THAT OF ANY EXISTING CORPORATION, PROHIBITED; CONFUSION AND
DECEPTION EFFECTIVELY PRECLUDED BY THE APPENDING OF GEOGRAPHIC NAMES TO THE WORD
"LYCEUM". — The Articles of Incorporation of a corporation must, among other things, set out the name of the
corporation. Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned:
"Section 18. Corporate name. — No corporate name may be allowed by the Securities an Exchange Commission if the
proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name
already protected by law or is patently deceptive, confusing or contrary to existing laws. When a change in the corporate
name is approved, the Commission shall issue an amended certificate of incorporation under the amended name."

The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or
deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently
confusing" or "contrary to existing laws," is the avoidance of fraud upon the public which would have occasion to deal with
the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration and
supervision over corporations.

We do not consider that the corporate names of private respondent institutions are "identical with, or deceptively or
confusingly similar" to that of the petitioner institution. True enough, the corporate names of private respondent entities all
carry the word "Lyceum" but confusion and deception are effectively precluded by the appending of geographic names to
the word "Lyceum." Thus, we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for the
Lyceum of the Philippines, or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of the Philippines.

2. ID.; ID.; DOCTRINE OF SECONDARY MEANING; USE OF WORD "LYCEUM," NOT ATTENDED WITH
EXCLUSIVITY. — It is claimed, however, by petitioner that the word "Lyceum" has acquired a secondary meaning in
relation to petitioner with the result that word, although originally a generic, has become appropriable by petitioner to the
exclusion of other institutions like private respondents herein. The doctrine of secondary meaning originated in the field of
trademark law. Its application has, however, been extended to corporate names sine the right to use a corporate name to the
exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename.

In Philippine Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of secondary meaning was elaborated in the following
terms: " . . . a word or phrase originally incapable of exclusive appropriation with reference to an article on the market,
because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his product." The question which arises, therefore, is whether or not the use by petitioner
of "Lyceum" in its corporate name has been for such length of time and with such exclusivity as to have become associated
or identified with the petitioner institution in the mind of the general public (or at least that portion of the general public
which has to do with schools). The Court of Appeals recognized this issue and answered it in the negative:
 43

"Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference
to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so
exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the
word or phrase has come to mean that the article was his produce (Ana Ang vs. Toribio Teodoro, 74 Phil. 56). This
circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial
and exclusive use of the same for a considerable period of time. . . . No evidence was ever presented in the hearing before
the Commission which sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the
appellant. If there was any of this kind, the same tend to prove only that the appellant had been using the disputed word for
a long period of time. . . .

In other words, while the appellant may have proved that it had been using the word 'Lyceum' for a long period of time, this
fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant
failed to prove that it had been using the same word all by itself to the exclusion of others. More so, there was no evidence
presented to prove that confusion will surely arise if the same word were to be used by other educational institutions.
Consequently, the allegations of the appellant in its first two assigned errors must necessarily fail."

We agree with the Court of Appeals. The number alone of the private respondents in the case at bar suggests strongly that
petitioner's use of the word "Lyceum" has not been attended with the exclusivity essential for applicability of the doctrine of
secondary meaning. Petitioner's use of the word "Lyceum" was not exclusive but was in truth shared with the Western
Pangasinan Lyceum and a little later with other private respondent institutions which registered with the SEC using
"Lyceum" as part of their corporation names. There may well be other schools using Lyceum or Liceo in their names, but
not registered with the SEC because they have not adopted the corporate form of organization.

3. ID.; ID.; MUST BE EVALUATED IN THEIR ENTIRETY TO DETERMINE WHETHER THEY ARE CONFUSINGLY OR
DECEPTIVELY SIMILAR TO ANOTHER CORPORATE ENTITY'S NAME. — petitioner institution is not entitled to a legally
enforceable exclusive right to use the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of
their corporate names. To determine whether a given corporate name is "identical" or "confusingly or deceptively similar" with
another entity's corporate name, it is not enough to ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate
corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents, they are not
reasonably regarded as "identical" or "confusingly or deceptively similar" with each other.

23 G.R. No. 205548, February 07, 2018DE LA SALLE MONTESSORI INTERNATIONAL OF MALOLOS,
INC., Petitioner, v. DE LA SALLE BROTHERS, INC., DE LA SALLE UNIVERSITY, INC., LA SALLE ACADEMY, INC.,
 44

DE LA SALLE-SANTIAGO ZOBEL SCHOOL, INC. (FORMERLY NAMED DE LA SALLE-SOUTH INC.), DE LA

SALLE CANLUBANG, INC. (FORMERLY NAMED DE LA SALLE UNIVERSITY-CANLUBANG, INC.), Respondents.

DECISION

Petitioner reserved with the SEC its corporate name De La Salle Montessori International Malolos, Inc. from June 4 to August
3, 2007,6 after which the SEC indorsed petitioner's articles of incorporation and by-laws to the Department of Education (DepEd) for
comments and recommendation.7 The DepEd returned the indorsement without objections.8 Consequently, the SEC issued a
certificate of incorporation to petitioner.9

Afterwards, DepEd Region III, City of San Fernando, Pampanga granted petitioner government recognition for its pre-elementary
and elementary courses on June 30, 2008,10 and for its secondary courses on February 15, 2010.11

On January 29, 2010, respondents De La Salle Brothers, Inc., De La Salle University, Inc., La Salle Academy, Inc., De La
Salle-Santiago Zobel School, Inc. (formerly De La Salle-South, Inc.), and De La Salle Canlubang, Inc. (formerly De La Salle
University-Canlubang, Inc.) filed a petition with the SEC seeking to compel petitioner to change its corporate name. Respondents
claim that petitioner's corporate name is misleading or confusingly similar to that which respondents have acquired a prior right to
use, and that respondents' consent to use such name was not obtained. According to respondents, petitioner's use of the dominant
phrases "La Salle" and "De La Salle" gives an erroneous impression that De La Salle Montessori International of Malolos, Inc. is
part of the "La Salle" group, which violates Section 18 of the Corporation Code of the Philippines. Moreover, being the prior
registrant, respondents have acquired the use of said phrases as part of their corporate names and have freedom from infringement of
the same.12

IN SC: Petitioner asserts that it has the right to use the phrase "De La Salle" in its corporate name as respondents did not obtain the
right to its exclusive use, nor did the words acquire secondary meaning.

It endeavoured to demonstrate that no confusion will arise from its use of the said phrase by stating that its complete name, "De La
Salle Montessori International of Malolos, Inc.," contains four other distinctive words that are not found in respondents' corporate
names.

Moreover, it obtained the words "De La Salle" from the French word meaning "classroom," while respondents obtained it from the
French priest named Saint Jean Baptiste de La Salle. Petitioner also compared its logo to that of respondent De La Salle University
and argued that they are different. Further, petitioner argued that it does not charge as much fees as respondents, that its clients knew
that it is not part of respondents' schools, and that it never misrepresented nor claimed to be an affiliate of respondents. Additionally,
it has gained goodwill and a name worthy of trust in its own right.36

ISSUE: w]hether or not the [CA] acted with grave abuse of discretion amounting to lack or in excess of jurisdiction when it erred in
not applying the doctrine laid down in the case of [Lyceum of the Philippines], that LYCEUM is not attended with exclusivity."20 ---
WON

The main thrust of the petition is that the CA erred in not applying the ruling in the Lyceum of the Philippines case which petitioner
argues have "the same facts and events"22 as in this case.

We DENY the petition and uphold the Decision of the CA.

As early as Western Equipment and Supply Co. v. Reyes,23 the Court declared that a corporation's right to use its corporate and trade
name is a property right, a right in rem, which it may assert and protect against the world in the same manner as it may protect its
tangible property, real or personal, against trespass or conversion.24 It is regarded, to a certain extent, as a property right and one
which cannot be impaired or defeated by subsequent appropriation by another corporation in the same field.25 Furthermore, in Philips
Export B.V. v. Court of Appeals,26 we held:

A name is peculiarly important as necessary to the very existence of a corporation x x x. Its name is one of its attributes, an element
of its existence, and essential to its identity x x x. The general rule as to corporations is that each corporation must have a name by
which it is to sue and be sued and do all legal acts. The name of a corporation in this respect designates the corporation in the same
manner as the name of an individual designates the person x x x; and the right to use its corporate name is as much a part of the
corporate franchise as any other privilege granted x x x.
 45

A corporation acquires its name by choice and need not select a name identical with or similar to one already appropriated by a
senior corporation while an individual's name is thrust upon him x x x. A corporation can no more use a corporate name in violation
of the rights of others than an individual can use his nan1e legally acquired so as to mislead the public and injure another x x x. 27
Recognizing the intrinsic importance of corporate names, our Corporation Code established a restrictive rule insofar as corporate
names are concerned.28 Thus, Section 18 thereof provides:
Sec. 18. Corporate name. - No corporate name may be allowed by the Securities and Exchange Commission if the proposed name is
identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is
patently deceptive, confusing or contrary to existing laws. When a change in the corporate name is approved, the Commission shall
issue an amended certificate of incorporation under the amended name.
The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or deceptively or
confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently confusing" or "contrary to
existing laws," is the avoidance of fraud upon the public which would have occasion to deal with the entity concerned, the evasion of
legal obligations and duties, and the reduction of difficulties of administration and supervision over corporations. 29

Indeed, parties organizing a corporation must choose a name at their peril; and the use of a name similar to one adopted by another
corporation, whether a business or a non-profit organization, if misleading or likely to injure in the exercise of its corporate
functions, regardless of intent, may be prevented by the corporation having a prior right, by a suit for injunction against the new
corporation to prevent the use of the name.30

In Philips Export B.V. v. Court of Appeals,31 the Court held that to fall within the prohibition of Section 18, two requisites
must be proven, to wit: (1) that the complainant corporation acquired a prior right over the use of such corporate name; and
(2) the proposed name is either: (a) identical, or (b) deceptively or confusingly similar to that of any existing corporation or
to any other name already protected by law; or (c) patently deceptive, confusing or contrary to existing law. 32

With respect to the first requisite, the Court has held that the right to the exclusive use of a corporate name with freedom from
infringement by similarity is determined by priority of adoption.33

In this case, respondents' corporate names were registered on the following dates: (1) De La Salle Brothers, Inc. on October 9, 1961
under SEC Registration No. 19569; (2) De La Salle University, Inc. on December 19, 1975 under SEC Registration No. 65138; (3)
La Salle Academy, Inc. on January 26, 1960 under SEC Registration No. 16293; (4) De La SalleSantiago Zobel School, Inc. on
October 7, 1976 under SEC Registration No. 69997; and (5) De La Salle Canlubang, Inc. on August 5, 1998 under SEC Registration
No. Al998-01021.34

On the other hand, petitioner was issued a Certificate of Registration only on July 5, 2007 under Company Registration No.
CN200710647.35 It being clear that respondents are the prior registrants, they certainly have acquired the right to use the words "De
La Salle" or "La Salle" as part of their corporate names.

The second requisite is also satisfied since there is a confusing similarity between petitioner's and respondents' corporate names.
While these corporate names are not identical, it is evident that the phrase "De La Salle" is the dominant phrase used.

Petitioner asserts that it has the right to use the phrase "De La Salle" in its corporate name as respondents did not obtain the right to
its exclusive use, nor did the words acquire secondary meaning.

It endeavoured to demonstrate that no confusion will arise from its use of the said phrase by stating that its complete name, "De La
Salle Montessori International of Malolos, Inc.," contains four other distinctive words that are not found in respondents' corporate
names.

Moreover, it obtained the words "De La Salle" from the French word meaning "classroom," while respondents obtained it from the
French priest named Saint Jean Baptiste de La Salle. Petitioner also compared its logo to that of respondent De La Salle University
and argued that they are different. Further, petitioner argued that it does not charge as much fees as respondents, that its clients knew
that it is not part of respondents' schools, and that it never misrepresented nor claimed to be an affiliate of respondents. Additionally,
it has gained goodwill and a name worthy of trust in its own right.36

We are not persuaded.

In determining the existence of confusing similarity in corporate names, the test is whether the similarity is such as to mislead a
person using ordinary care and discrimination. In so doing, the Court must look to the record as well as the names themselves. 37
 46

Petitioner's assertion that the words "Montessori International of Malolos, Inc." are four distinctive words that are not found in
respondents' corporate names so that their corporate name is not identical, confusingly similar, patently deceptive or contrary to
existing laws,38 does not avail.

As correctly held by the SEC OGC, all these words, when used with the name "De La Salle," can reasonably mislead a person
using ordinary care and discretion into thinking that petitioner is an affiliate or a branch of, or is likewise founded by, any or
all of the respondents, thereby causing confusion.39

Petitioner's argument that it obtained the words "De La Salle" from the French word meaning "classroom," while respondents
obtained it from the French priest named Saint Jean Baptiste de La Salle,40 similarly does not hold water.

LA SALLE IS NOT A GENERIC WORD- UNLIKE LYCEUM

We quote with approval the ruling of the SEC En Banc on this matter. Thus:
Generic terms are those which constitute "the common descriptive name of an article or substance," or comprise the "genus
of which the particular product is a species," or are "commonly used as the name or description of a kind of goods," or
"characters," or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product," and are not legally protectable. It has been held that if a mark is so commonplace that it
cannot be readily distinguished from others, then it is apparent that it cannot identify a particular business; and he who first adopted
it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived.

Contrary to [petitioner's] claim, the word salle only means "room" in French. The word la, on the other hand, is a definite article
("the") used to modify salle. Thus, since salle is nothing more than a room, [respondents'] use of the term is actually suggestive.

A suggestive mark is therefore a word, picture, or other symbol that suggests, but does not directly describe something about
the goods or services in connection with which it is used as a mark and gives a hint as to the quality or nature of the product.
----Suggestive trademarks therefore can be distinctive and are registrable.

The appropriation of the term "la salle" to associate the words with the lofty ideals of education and learning is in fact
suggestive because roughly translated, the words only mean "the room." Thus, the room could be anything - a room in a
house, a room in a building, or a room in an office.

xxx

In fact, the appropriation by [respondents] is fanciful, whimsical and arbitrary because there is no inherent connection between the
words la salle and education, and it is through [respondents'] painstaking efforts that the term has become associated with one of the
top educational institutions in the country. Even assuming arguendo that la salle means "classroom" in French, imagination is
required in order to associate the term with an educational institution and its particular brand of service. 41
We affirm that the phrase "De La Salle" is not merely a generic term.

Respondents' use of the phrase being suggestive and may properly be regarded as fanciful, arbitrary and whimsical, it is
entitled to legal protection.42 

Petitioner's use of the phrase "De La Salle" in its corporate name is patently similar to that of respondents that even with
reasonable care and observation, confusion might arise. The Court notes not only the similarity in the parties' names, but also the
business they are engaged in. They are all private educational institutions offering pre-elementary, elementary and secondary
courses.43 As aptly observed by the SEC En Banc, petitioner's name gives the impression that it is a branch or affiliate of
respondents.44 It is settled that proof of actual confusion need not be shown. It suffices that confusion is probable or likely to occur. 45

WHY NOT APPLY????? Finally, the Court's ruling in Lyceum of the Philippines46 does not apply.

In that case, the Lyceum of the Philippines, Inc., an educational institution registered with the SEC, commenced proceedings before
the SEC to compel therein private respondents who were all educational institutions, to delete the word "Lyceum" from their
corporate names and permanently enjoin them from using the word as part of their respective names.

The Court there held that the word "Lyceum" today generally refers to a school or institution of learning. It is as generic in character
as the word "university." Since "Lyceum" denotes a school or institution of learning, it is not unnatural to use this word to designate
an entity which is organized and operating as an educational institution. Moreover, the Lyceum of the Philippines, Inc.'s use of the
word "Lyceum" for a long period of time did not amount to mean that the word had acquired secondary meaning in its favor because
 47

it failed to prove that it had been using the word all by itself to the exclusion of others. More so, there was no evidence presented to
prove that the word has been so identified with the Lyceum of the Philippines, Inc. as an educational institution that confusion will
surely arise if the same word were to be used by other educational institutions.47

VS VS VS

Here, the phrase "De La Salle" is not generic in relation to respondents. It is not descriptive of respondent's business as institutes of
learning, unlike the meaning ascribed to "Lyceum." Moreover, respondent De La Salle Brothers, Inc. was registered in 1961 and the
De La Salle group had been using the name decades before petitioner's corporate registration.

AS TO FACTS

In contrast, there was no evidence of the Lyceum of the Philippines, Inc.'s exclusive use of the word "Lyceum," as in fact another
educational institution had used the word 17 years before the former registered its corporate name with the SEC. Also, at least nine
other educational institutions included the word in their corporate names. There is thus no similarity between the  Lyceum of the
Philippines case and this case that would call for a similar ruling.

The enforcement of the protection accorded by Section 18 of the Corporation Code to corporate names is lodged exclusively in the
SEC. By express mandate, the SEC has absolute jurisdiction, supervision and control over all corporations. It is the SEC's duty to
prevent confusion in the use of corporate names not only for the protection of the corporations involved, but more so for the
protection of the public. It has authority to de-register at all times, and under all circumstances, corporate names which in its
estimation are likely to generate confusion.48
 48

COPYRIGHT

24 PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, vs. FELICIDAD C. ROBLES and
GOODWILL TRADING CO., INC.
G.R. NO. 131522 July 19, 1999 J. PARDO

As to amount of reproduction-what constitute piracy? Here yes

FACTS: Pacita Habana and two others were the authors of College English for Today Series 1 and 2 (CET). While they were
researching for books to assist them in updating their own book, they chanced upon the book of Felicidad Robles entitled
Developing English Proficiency Books 1 and 2 (DEP). They discovered further that the book of Robles was strikingly similar to the
contents, scheme of presentation, illustrations and illustrative examples of their book CET.

Thus, They then sued Robles and her publisher (Goodwill Trading Co.) for infringement and/or unfair competition with damages.

Robles, in her defense, alleged that her sources were from foreign books; that in their field, similarity in styles cannot be avoided
since they come from the same background and orientation.

The trial court as well as the Court of Appeals ruled in favor of Robles.

ISSUE:
Whether or not Robles is guilty of plagiarism.?

RULING:
YES.

The Supreme Court also elucidated that in determining the question of infringement, the amount of matter copied from the
copyrighted work is an important consideration.

To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied.

When is there a substantial reproduction of a book? If so much is taken that the value of the original is sensibly diminished, or
the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in
point of law to constitute piracy.

Here, A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET.

In several other pages the treatment and manner of presentation of the topics of DEP are similar if not a rehash of that contained in
CET. The similarities in examples and material contents are so obviously present in this case.

How can similar/identical examples not be considered as a mark of copying? Robles’ act of lifting from the book of Habana et al
substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of Habana
et al’s copyrights.\

We believe that respondent Robles act of lifting from the book of petitioners substantial portions of discussions and
examples, and her failure to acknowledge the same in her book is an infringement of petitioners copyrights.

Ratio: Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and,
therefore, protected by law,
 49

25FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC vs. BENJAMIN TAN
G.R. No. L-36402, 16 March 1987, PARAS, J.

For profit and public meaning and won can be copyrighted ba ung mga music na nagging popular na long before
registration? No here public property na.

FACTS: Filipino Society of Composers, Authors and Publishers , Inc. (FSCAPI) is a non-profit association of
authors, composers and publishers. It owns certain musical compositions among which are the songs: "Dahil Sa Iyo,"
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."

On the other hand, Benjamin Tan is the operator of a restaurant known as "Alex Soda Foundation and Restaurant"
where a combo with professional singers were playing and singing the above-mentioned compositions without any
license or permission from FSCAPI.

Accordingly, FSCAPI demanded from Tan the payment of the necessary license fee for the playing and singing of
aforesaid compositions but the demand was ignored. Hence, FSCAPI filed a complaint for infringement of copyright
against Tan for unlawfully playing these copyrighted songs in a public performance for profit without their authority.

ISSUES:
1. Whether or not the playing and signing of musical compositions which have been copyrighted under the Copyright
Law inside an establishment constitute a public performance for profit within the meaning and contemplation of the said
statute.
2. Whether or not Tan should be exonerated from liability on the ground that the alleged copyrighted songs are already
considered public property

RULING:
1. YES. “The playing of music in dine and dance establishment which was paid for by the public in
purchases of food and drink constituted "performance for profit" within a Copyright Law."

Thus, it has been explained that while it is possible in such establishments for the patrons to purchase their food and
drinks and at the same time dance to the music of the orchestra, the music is furnished and used by the orchestra for the
purpose of inducing the public to patronize the establishment and pay for the entertainment in the purchase of food and
drinks and The defendant conducts his place of business for profit, and it is public; and the music is performed for profit
In a similar case, the Court ruled that "The Performance in a restaurant or hotel dining room, by persons employed by
the proprietor, of a copyrighted musical composition, for the entertainment of patrons, without charge for admission to
hear it, infringes the exclusive right of the owner of the copyright."

In the case at bar, while it is true that the patrons of the restaurant in question pay only for the food and drinks and
apparently not for listening to the music. As found by the trial court, but the music provided is for the purpose of
entertaining and amusing the customers in order to make the establishment more attractive and desirable . It will
be noted that for the playing and singing the musical compositions involved, the combo was paid as independent
contractors by the appellant. It is therefore obvious that the expenses entailed thereby are added to the overhead
of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of
additional income produced by the bigger volume of business which the entertainment was programmed to
attract.

Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant
constituted performance for profit contemplated by the Copyright Law.

2. YES. The composers of the contested musical compositions  waived their right in favor of the general public when
they allowed their intellectual creations to become property of the public domain before applying for the corresponding
copyrights for the same.
 50

The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated
September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright
Claims' promulgated pursuant to Republic Act 165, provides among other things that an intellectual creation should be
copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere,
failure of which renders such creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324-
325 [1964]. An intellectual creation should be copyrighted within the prescribed period and the failure of which
renders such creation public property. Indeed, if the general public has made use of the object sought to be
copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated
to the public domain and the same can no longer be copyrighted.

Here it appears that songs became popular long before its registration A careful study of the records reveals that the song
"Dahil Sa Iyo" which was registered on April 20, 1956 became popular in radios, juke boxes, etc. long before
registration while the song "The Nearness Of You" registered on January 14, 1955 had become popular twenty five (25)
years prior to 1968, (the year of the hearing) or from 1943 and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami
Ay Tao Lamang" both registered on July 10, 1966, appear to have been known and sang by the witnesses as early as
1965 or three years before the hearing in 1968. The testimonies of the witnesses at the hearing of this case on this subject
were unrebutted by the appellant.

Under the circumstances, it is clear that the musical compositions in question had long become public property,
and are therefore beyond the protection of the Copyright Law.
 51

26ABS-CBN CORPORATION vs. FELIPE GOZON, GILBERTO R. DUAVIT, JR., MARISSA L. FLORES,
JESSICA A. SORO, GRACE DELA PENA-REYES, JOHN OLIVER T. MANALASTAS, JOHN DOES AND
JANE DOES,
G.R. No. 195956 March 11, 2015 J. Leonen

FACTS:ABS-CBN filed a complaint against GMA for alleged acts of copyright infringement under Sections 177 and
211 of the Intellectual Property Code on the ground that GMA aired footage of the arrival of Angelo Dela Cruz at NAIA
from Iraq without ABS-CBN’s consent.

ABS-CBN claims that it has an agreement with Reuter’s that ABS-CBN will contribute news and content that it owns
and makes to Reuters in exchange of the latter’s news and video material and Reuters will ensure that ABS-CBN’s
material cannot be aired in the country.

GMA was a subscriber of Reuter’s and CNN’s live feeds . After it took notice of Angelo Dela Cruz’s arrival, it
immediately aired the video from the said feeds. GMA was not aware of the agreement between ABS-CBN and Reuter s
nor were they aware to the footage made by ABS-CBN.

The Prosecutor’s office found probable cause to indict respondents. On appeal before the DOJ, the DOJ ruled in favor of
respondents stating that respondents acted in good faith. This was later on reversed by a different DOJ Secretary who
found probable cause to indict respondents. The CA found no criminal liability to speak of.

ABSCBN claims that news footage is subject to copyright and prohibited use of copyrighted material is
punishable under the Intellectual Property Code. It argues that the new footage is not a "newsworthy event" but
"merely an account of the arrival of Angelo dela Cruz in the Philippines — the latter being the newsworthy event": 76 To
be clear, it is the event itself or the arrival of Angelo dela Cruz which is not copyrightable because that is the
newsworthy event. However, any footage created from the event itself, in this case the arrival of Angelo dela Cruz, are
intellectual creations which are copyrightable. Thus, the footage created by ABS-CBN during the arrival of Angelo dela
Cruz, which includes the statements of Dindo Amparo, are copyrightable and protected by the laws on copyright.

On the other hand, respondents argue that ABS-CBN’s news footage of Angelo dela Cruz’s arrival is not
copyrightable or subject to protection: Certainly, the arrival of Angelo [d]ela Cruz, which aroused public attention
and the consciousness of the Filipino people with regard to their countrymen, OFWs working in foreign countries and
how the Philippine government responds to the issues concerning them, is "news". There is no ingenuity or
inventiveness added in the said news footage. The video footage of this "news" is not copyrightable by any legal
standard as facts of everyday life depicted in the news and items of press information is part of the public domain

ISSUE: Whether or not the news footage is copyrightable.

HELD:YES. News is copyrightable.’

The Intellectual Property Code is clear about the rights afforded to authors of various kinds of work. Under the Code,
"works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as
of their content, quality and purpose." ---These include "[a]udiovisual works and cinematographic works and
works produced by a process analogous to cinematography or any process for making audiovisual recordings."

Contrary to the old copyright law, the Intellectual Property Code does not require registration of the work to fully
recover in an infringement suit. Nevertheless, both copyright laws provide that copyright for a work is acquired by an
intellectual creator from the moment of creation.

It is true that under Section 175 of the Intellectual Property Code, "news of the day and other miscellaneous facts having
the character of mere items of press information" are considered unprotected subject matter. However, the Code does not
 52

state that expression of the news of the day, particularly when it underwent a creative process, is not entitled to
protection.

An idea or event must be distinguished from the expression of that idea or event. An idea has been likened to a ghost in
that it "must be spoken to a little before it will explain itself." 84 It is a concept that has eluded exact legal definition. 85 To
get a better grasp of the idea/expression dichotomy, the etymology of the term "idea" is traced:

The word "idea" is derived from a Greek term, meaning "a form, the look or appearance of a thing as opposed to its
reality, from idein, to see." In the Timaeus, Plato saw ideas as eternal paradigms, independent objects to which the
divine demiurge looks as patterns in forming the world. This was later modified to the religious conception of ideas as
the thoughts of God. "It is not a very long step to extend the term ‘idea’ to cover patterns, blueprints, or plans in anyone's
mind, not only in God’s." The word entered the French and English vernacular in the 1600s and possessed two
meanings. The first was the Platonic meaning of a perfect exemplar or paradigm. The second, which probably has its
origin with Descartes, is of a mental concept or image or, more broadly, any object of the mind when it is active. Objects
of thought may exist independently. The sun exists (probably) before and after you think of it. But it is also possible to
think of things that have never existed, such as a unicorn or Pegasus. John Locke defined ideas very comprehensively, to
include: all objects of the mind. Language was a way of translating the invisible, hidden ideas that make up a person’s
thoughts into the external, perceptible world of articulate sounds and visible written symbols that others can
understand.86 (Citations omitted) There is no one legal definition of "idea" in this jurisdiction. The term "idea
 53

COPYRIGHT INFRINGEMENT

27PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART, INCORPORATED, and NORTH EDSA MARKETING,
INCORPORATED
G.R. No. 148222 August 15, 2003 J. CORONA

Light box- no ci

FACTS:
Petitioner 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 1998.

In 1985, petitioner had an agreement with respondent Shoemart Inc (SMI) to install these light boxes in their Makati and Cubao
branch, Only the Makati branch was able to sign the agreement.

In 1986, the contract was rescinded unilaterally by SMI, and instead contracted with Metro Industrial Services. ( manufacturer nina
Pet) 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:
(1) Whether or not there was a copyright infringement.
(2) Whether or not there was a patent infringement.
(3) Whether or not there was a trademark infringement.
(4) Whether or not there was unfair competition.

HELD:
NO to all.

(1) Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are limited to what
the statute confers. It may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and
conditions specified in the statute. 7 Accordingly, it can cover only the works falling within the statutory enumeration or
description.8

P & D secured its copyright under the classification  class "O" work. This being so, petitioner’s copyright protection extended only to
the technical drawings and not to the light box itself because the latter was not at all in the category of "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps." Stated otherwise, even as we find that P & D indeed owned a valid copyright, the
same could have referred only to the technical drawings within the category of "pictorial illustrations." It could not have possibly
stretched out to include the underlying light box.

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 .

(2) In Creser Precision Systems, Inc. vs. Court of Appeals ,12 we held that "there can be no infringement of a patent until a patent has
been issued, since whatever right one has to the invention covered by the patent arises alone from the grant of patent. x x x (A)n
inventor has no common law right to a monopoly of his invention. He has the right to make use of and vend his invention, but if
 54

he voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. A patent, however,
gives the inventor the right to exclude all others. As a patentee, he has the exclusive right of making, selling or using the
invention.

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.

(3) 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.

(4) "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 com/petition against the petitioner.

Difference :

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark
is any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of
goods. The scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and
artistic domain. Patentable inventions refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.
 55

28COLUMBIA PICTURES, INC., ORION PICTURES CORPORATION, PARAMOUNT PICTURES CORPORATION,

TWENTIETH CENTURY FOX FILM CORPORATION, UNITED ARTISTS CORPORATION, UNIVERSAL CITY
STUDIOS, INC., THE WALT DISNEY COMPANY, and WARNER BROTHERS, INC., (Petitioners) vs. COURT OF
APPEALS, SUNSHINE HOME VIDEO, INC. and DANILO A. PELINDARIO (Respondents)G.R. No. 110318. August 28,
1996, Regalado J.

PROBABLE CAUSE IN CI- HERE MERON-It is evidently incorrect to suggest, as the ruling in 20th Century Fox may
appear to do, that in copyright infringement cases, the presentation of master tapes of the copyrighted films is always
necessary to meet the requirement of probable cause and that, in the absence thereof, there can be no finding of probable
cause for the issuance of a search warrant.

FACTS:
Complainants Columbia pictures and other corp of same nature t hru counsel lodged a formal complaint with the National
Bureau of Investigation for violation of PD No. 49, as amended, and sought its assistance in their anti-film piracy drive.  Thus,
Agents of the NBI and private researchers made discreet surveillance on various video establishments in Metro Manila including
Sunshine Home Video.
NBI Senior Agent then applied for a search warrant with the court  a quo against Sunshine seeking the seizure, among others, of
pirated video tapes of copyrighted films all of which were enumerated in a list attached to the application; and, television sets, video
cassettes and/or laser disc recordings equipment and other machines and paraphernalia used or intended to be used in the unlawful
exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the premises above described. Such application
was subsequently granted.
In the course of the search of the premises indicated in the search warrant, the NBI Agents found and seized various video tapes of
duly copyrighted motion pictures/films owned or exclusively distributed by private complainants, and machines, equipment,
television sets, paraphernalia, materials, accessories all of which were included in the receipt for properties accomplished by the
raiding team. Copy of the receipt was furnished and/or tendered to Mr. Danilo A. Pelindario, registered owner-proprietor of
Sunshine Home Video.A Return of Search Warrant was filed with the Court.
A Motion To Lift the Order of Search Warrant was filed but was later denied for lack of merit.
A Motion for reconsideration of the Order of denial was filed. The court a quo granted the same and lifted SW
Petitioners thereafter appealed the order to the Court of Appeals. 
CA dismissed appeal uphold lift of SW
Hence, this petition was brought to this Court particularly challenging the validity of respondent courts retroactive application of the
ruling in 20th Century Fox Film Corporation vs. Court of Appeals, thus upholding lift of SW: which provides that that for the
determination of probable cause to support the issuance of a search warrant in copyright infringement cases involving videograms,
the production of the master tape for comparison with the allegedly pirate copies is necessary.

ISSUE:WON there can be retroactive application to the present controversy of the ruling in 20th Century Fox Film Corporation
vs. Court of Appeals, et al., promulgated on August 19, 1988 correct?

RULING:
NO. For a closer and more perspicuous appreciation of the factual antecedents of 20th Century Fox, the pertinent portions of the
decision therein are quoted hereunder, to wit:

In the instant case, the lower court lifted the three questioned search warrants against the private respondents on the ground
that it acted on the application for the issuance of the said search warrants and granted it on the misrepresentations of
applicant NBI and its witnesses that infringement of copyright or a piracy of a particular film have been committed. Thus
the lower court stated in its questioned order dated January 2, 1986:

According to the movant, all three witnesses during the proceedings in the application for the three search warrants testified of their
own personal knowledge. Yet, Atty. Albino Reyes of the NBI stated that the counsel or representative of the Twentieth Century Fox
Corporation will testify on the video cassettes that were pirated, so that he did not have personal knowledge of the alleged piracy.
The witness Bacani also said that the video cassettes were pirated without stating the manner it was pirated and that it was Atty.
Domingo that has knowledge of that fact.
 56

On the part of Atty. Domingo, he said that the re-taping of the allegedly pirated tapes was from master tapes allegedly belonging to
the Twentieth Century Fox, because, according to him it is of his personal knowledge.

At the hearing of the Motion for Reconsideration, Senior NBI Agent Atty. Albino Reyes testified that when the complaint for
infringement was brought to the NBI, the master tapes of the allegedly pirated tapes were shown to him and he made comparisons of
the tapes with those purchased by their man Bacani. Why the master tapes or at least the film reels of the allegedly pirated tapes
were not shown to the Court during the application gives some misgivings as to the truth of that bare statement of the NBI agent on
the witness stand.

Again as the application and search proceedings is a prelude to the filing of criminal cases under PD 49, the copyright infringement
law, and although what is required for the issuance thereof is merely the presence of probable cause, that probable cause must be
satisfactory to the Court, for it is a time-honored precept that proceedings to put a man to task as an offender under our laws should
be interpreted in strictissimi juris against the government and liberally in favor of the alleged offender.

x x x           x x x          x x x

This doctrine has never been overturned, and as a matter of fact it had been enshrined in the Bill ofRights in our 1973 Constitution.

So that lacking in persuasive effect, the allegation that master tapes were viewed by the NBI and were compared to the purchased
and seized video tapes from the respondents' establishments, it should be dismissed as not supported by competent evidence and for
that matter the probable cause hovers in that grey debatable twilight zone between black and white resolvable in favor of respondents
herein.

But the glaring fact is that "Cocoon," the first video tape mentioned in the search warrant, was not even duly registered or
copyrighted in the Philippines. (Annex C of Opposition p. 152 record.) So, that lacking in the requisite presentation to the Court of
an alleged master tape for purposes of comparison with the purchased evidence of the video tapes allegedly pirated and those seized
from respondents, there was no way to determine whether there really was piracy, or copying of the film of the complainant
Twentieth Century Fox.

xxx xxx xxx

The lower court, therefore, lifted the three (3) questioned search warrants in the absence of probable cause that the private
respondents violated P.D. 49. As found out by the court, the NBI agents who acted as witnesses did not have personal knowledge of
the subject matter of their testimony which was the alleged commission of the offense by the private respondents. Only the
petitioner's counsel who was also a witness during the application for the issuance of the search warrants stated that he had personal
knowledge that the confiscated tapes owned by the private respondents were pirated tapes taken from master tapes belonging to the
petitioner. However, the lower court did not give much credence to his testimony in view of the fact that the master tapes of the
allegedly pirated tapes were not shown to the court during the application (Emphasis ours).

The italicized passages readily expose the reason why the trial court therein required the presentation of the master tapes of the
allegedly pirated films in order to convince itself of the existence of probable cause under the factual milieu peculiar to that case.

In the case at bar, respondent appellate court itself observed:

We feel that the rationale behind the aforequoted doctrine is that the pirated copies as well as the master tapes, unlike the
other types of personal properties which may be seized,  were available for presentation to the court at the time of the
application for a search warrant  to determine the existence of the linkage of the copyrighted films with the pirated ones.
Thus, there is no reason not the present them (Emphasis supplied).

Ratio for the cited case:

In fine, the supposed pronunciamento in said case regarding the necessity for the presentation of the master tapes of the copyrighted
films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of
probable cause in copyright infringement cases  where there is doubt as to the true nexus between the master tape and the pirated
copies.
 57

An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases. Judicial dicta should always be
construed within the factual matrix of their parturition, otherwise a careless interpretation thereof could unfairly fault the writer with
the vice of overstatement and the reader with the fallacy of undue generalization.

It is evidently incorrect to suggest, as the ruling in  20th Century Fox may appear to do, that in copyright infringement cases , the
presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that, in the
absence thereof, there can be no finding of probable cause for the issuance of a search warrant.
It is true that such master tapes are object evidence, with the merit that in this class of evidence the ascertainment of the controverted
fact is made through demonstrations involving the direct use of the senses of the presiding magistrate . Such auxiliary procedure,
however, does not rule out the use of testimonial or documentary evidence, depositions, admissions or other classes of
evidence tending to prove the factum probandum, especially where the production in court of object evidence would result in
delay, inconvenience or expenses out of proportion to its evidentiary value.
Here, Both testimonies of Agent Reyes and Atty. Domingo were corroborated by Rene C. Baltazar, a private researcher retained by
Motion Pictures Association of America, Inc. (MPAA, Inc.), who was likewise presented as a witness during the search warrant
proceedings.55 The records clearly reflect that the testimonies of the abovenamed witnesses were straightforward and stemmed from
matters within their personal knowledge. They displayed none of the ambivalence and uncertainty that the witnesses in the  20th
Century Fox case exhibited. This categorical forthrightness in their statements, among others, was what initially and correctly
convinced the trial court to make a finding of the existence of probable cause.
 58

29 NBI- Microsoft Corp. vs. Hwang /BELTRON COMPUTER PHILIPPINES IN GR NO. 147043 June 21, 2005 J. Carpio

CI- yes ci

FACTS: Microsoft Corporation (Microsoft), a Delaware, United States corporation , owns the copyright and trademark to
several computer software.

In May 1993, Microsoft and Beltron entered into a Licensing Agreement (Agreement). Under Section 2(a) of the Agreement, as
amended in January 1994, Microsoft authorized Beltron, for a fee, to:
(i) xxx reproduce and install no more than one (1) copy of [Microsoft] software on each Customer System hard disk or Read Only
Memory (ROM); [and]
(ii) xxx distribute directly or indirectly and license copies of the Product (reproduced as per Section 2(a)(i) and/or acquired from
Authorized Replicator or Authorized Distributor) in object code form to end users[.] xxx

The Agreement also authorized Microsoft and Beltron to terminate the contract if the other fails to comply with any of the
Agreement’s provisions. Microsoft terminated the Agreement effective 22 June 1995 for Beltron’s non-payment of royalties.

However, still Microsoft learned that respondents were illegally copying and selling Microsoft software.

On 10 November 1995, PCS employee John Benedic Sacriz (Sacriz) and NBI agent Dominador Samiano, Jr. (Samiano), posing as
representatives of a computer shop, bought computer hardware (central processing unit (CPU) and computer monitor) and software
(12 computer disks (CDs) in read-only memory (ROM) format) from re spondents. The CPU contained pre-installed Microsoft
Windows 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic containers with Microsoft packaging, also contained
Microsoft software. At least two of the CD-ROMs were installers, so-called because they contain several software (Microsoft only or
both Microsoft and non-Microsoft). Nbi agent were not given the Microsoft end-user license agreements, users manuals, registration
cards or certificates of authenticity for the articles they purchased. The receipt issued to Sacriz and Samiano for the CPU and
monitor bore the heading T.M.T.C. (PHILS.) INC. BELTRON COMPUTER. The receipt for the 12 CD-ROMs did not indicate its
source although the name Gerlie appears below the entry delivered by.

Based on the articles obtained from respondents, Microsoft and a certain Lotus Development Corporation (Lotus
Corporation) charged respondents before the Department of Justice (DOJ) with copyright infringement.

Doj dismissed not Finding Probable Cause to Charge Respondents with

Copyright Infringement and Unfair Competition

ISSUE:
Whether or not there is copyright infringement

RULING:YES.  PD 49 and Article 189(1)

Section 539 of PD 49 ("Section 5") enumerates the rights vested exclusively on the copyright owner. Contrary to the DOJ’s ruling,
the gravamen of copyright infringement is not merely the unauthorized "manufacturing" of intellectual works but rather the
unauthorized performance of any of the acts covered by Section 5. Hence, any person who performs any of the acts under Section 5
without obtaining the copyright owner’s prior consent renders himself civilly40 and criminally41 liable for copyright infringement. We
held in Columbia Pictures, Inc. v. Court of Appeals:42

Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by
any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the
owner of the copyright. (Emphasis supplied)

Significantly, under Section 5(A), a copyright owner is vested with the exclusive right to "copy, distribute, multiply, [and] sell" his
intellectual works.

The Court finds that the 12 CD-ROMs (installer and non-installer) and the CPU with pre-installed Microsoft software Sacriz and
Samiano bought from respondents and the 2,831 Microsoft CD-ROMs seized from respondents suffice to support a finding of
 59

probable cause to indict respondents for copyright infringement under Section 5(A) in relation to Section 29 of PD 49 for
unauthorized copying and selling of protected intellectual works.

These articles are counterfeit per se because Microsoft does not (and could not have authorized anyone to) produce such CD-ROMs.
The copying of the genuine Microsoft software to produce these fake CD-ROMs and their distribution are illegal even if the copier
or distributor is a Microsoft licensee. 
On the other hand, the illegality of the non-installer CD-ROMs purchased from respondents and of the Microsoft software pre-
installed in the CPU is shown by the absence of the standard features accompanying authentic Microsoft products, namely, the
Microsoft end-user license agreements, users manuals, registration cards or certificates of authenticity.

On the 2,831 Microsoft CD-ROMs seized from respondents, respondent Beltron, the only respondent who was party to the
Agreement, could not have reproduced them under the Agreement as the Solicitor General  and respondents contend. Beltrons
rights under the Agreement were limited to:
(1) the reproduc[tion] and install[ation of] no more than  one copy of [Microsoft] software on each Customer System hard disk or
Read Only Memory (ROM); and
(2) the distribut[ion] xxx and licens[ing of] copies of the [Microsoft] Product  [as reproduced above] and/or acquired from
Authorized Replicator or Authorized Distributor) in object code form to end users.

The Agreement defines an authorized replicator as a third party approved by [Microsoft] which may reproduce and manufacture
[Microsoft] Product[s] for [Beltron] xxx. An authorized distributor, on the other hand, is a third party approved by [Microsoft] from
which [Beltron] may purchase MED  Product. Being a mere reproducer/installer of one Microsoft software copy on each customers
hard disk or ROM, Beltron could only have acquired the hundreds of Microsoft CD-ROMs found in respondents possession from
Microsoft distributors or replicators.

However, respondents makes no such claim. What respondents contend is that these CD-ROMs were left to them for safekeeping.
But neither is this claim tenable for lack of substantiation. Indeed, respondents Keh and Chua, the only respondents who filed
counter-affidavits, did not make this claim in the DOJ. These circumstances give rise to the reasonable inference that respondents
mass-produced the CD-ROMs in question without securing Microsoft’s prior authorization.
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30 Microsoft Corporation vs. Rolando D. ManansalaG.R. No. 166391, October 21, 2015, J. Bersamin

FACTS:Petitioner (Microsoft Corporation) is the copyright and trademark owner of all rights relating to all versions and
editions of Microsoft software (computer programs) such as, but not limited to, MS-DOS (disk operating system), Microsoft
Encarta, Microsoft Windows, Microsoft Word, Microsoft Excel, Microsoft Access, Microsoft Works, Microsoft Powerpoint,
Microsoft Office, Microsoft Flight Simulator and Microsoft FoxPro, among others, and their user's guide/manuals.

Private Respondent-Rolando Manansala is doing business under the name of DATAMAN TRADING COMPANY and/or
COMIC ALLEY. Private Respondent Manansala, without authority from petitioner, was engaged in distributing and selling
Microsoft computer software programs.

Mr. John Benedict A. Sacriz, a private investigator accompanied by an agent from the National Bureau of Investigation (NBI) was
able to purchase six (6) CD-ROMs containing various computer programs belonging to petitioner.

As a result of the test-purchase, the agent from the NBI applied for a search warrant to search the premises of the private respondent.

The search warrant was served on the private respondent's premises and yielded several illegal copies of Microsoft programs.

Then complaint to DOJ, but was dismissed

Hence this case The petitioner insists that printing or copying was not essential in the commission of the crime of copyright
infringement under Section 29 of Presidential Decree No. 49; hence, contrary to the holding of the DOJ, as upheld by the CA,
the mere selling of pirated computer software constituted copyright infringement. 9

ISSUE: won the mere selling of pirated computer software constituted copyright infringement. 9

RULING:
YES. The commission of any of the acts mentioned in Section 5 of Presidential Decree No. 49 without the copyright owner's consent
constituted actionable copyright infringement.

Section 5 of Presidential Decree No. 49 specifically defined copyright as an exclusive right in the following manner:
Section 5. Copyright shall consist in the exclusive right;
(A) To print, reprint, publish, copy, distribute, multiply, sell, and make photographs, photo-engravings, and pictorial
illustrations of the works;
(B) To make any translation or other version or extracts or arrangements or adaptations thereof; to dramatize it if it be a
non-dramatic work; to convert it into a non-dramatic work if it be a drama; to complete or execute if it be a model or design;
(C) To exhibit, perform, represent, produce, or reproduce, the work in any manner or by any method whatever for profit or
otherwise; it not reproduced in copies for sale, to sell any manuscript or any record whatsoever thereof;
(D) To make any other use or disposition of the work consistent with the laws of the land.

The Court has emphatically declared that infringement of a copyright is a trespass on a private domain owned and occupied by the
owner of the copyright, and therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in
this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to
do which is conferred by statute on the owner of the copyright.

The "gravamen of copyright infringement," according to NBI-Microsoft Corporation vs Hwang, is not merely the
unauthorized manufacturing of intellectual works but rather the unauthorized performance of any of the acts covered by
Section 5. Hence, any person who performs any of the acts under Section 5 without obtaining the copyright owners prior consent
renders himself civilly and criminally liable for copyright infringement.

HERE, The mere sale of the illicit copies of the software programs was enough by itself to show the existence of probable cause for
copyright infringement. There was no need for the petitioner to still prove who copied, replicated or reproduced the software
programs. Indeed, the public prosecutor and the DOJ gravely abused their discretion in dismissing the petitioner's charge for
copyright infringement against the respondents for lack of evidence.\
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