USA College of Law

Superior Commercial Enterprises, Inc. vs. Kunnan Enterprises Ltd. And Sports
Case Name
Concept & Distributor, Inc.
Topic Trademark infringement and Unfair Competition
Case No. |
G.R. No. 169974 – April 20, 2010
Date
Ponente J. Brion
Superior Commercial Enterprises, Inc.
Petitioner

Respondent Kunnan Enterprises Ltd and Sports Concept & Distributor, Inc.
Infringement
- any person who (1) shall use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or trade-name in
connection with the sale, offering for sale, or advertising of any goods, business or
services on 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 (2) reproduce, counterfeit, copy, or colorably imitate an
Definition such mark or trade-name and 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, shall
be liable to a civil action by the registrant for any or all of the remedies herein provided.
Unfair competition
- is the passing off or attempting to pass off upon the public of the goods or business of
one person as the goods or business of another with the end and probable effect of
deceiving the public.
Doctrine of res judicata by conclusiveness of judgment
- a final judgment or decree on the merits by a court of competent jurisdiction is
conclusive of the rights of the parties or their privies in all later suits on points and
Doctrine matters determined in a former suit.
- facts and issues actually and directly resolved in a former suit cannot again be raised
in any future case between the same parties, even if the latter suit may involve a
different cause of action.
Elements of trademark infringement:
(1) validity of plaintiff’s mark;
(2) plaintiff’s ownership of the mark; and
(3) use of the mark or its colorable imitation by the alleged infringer results in “likelihood
Enumeration
of confusion.
Elements of unfair competition:
(1) confusing similarity in the general appearance of the goods; and
(2) intent to deceive the public and defraud a competitor.

RELEVANT FACTS
 Superior was appointed by Kunna as its exclusive distributor in the Philippines under a Distributorship
Agreement.
 The Agreement stated that Superior was obligated to assign the ownership of Kennex trademark to
Kunnan.
 Kunnan claims that the Certificate of Registration for the “Kennex” and “Pro Kennex” trademarks
remained with Superior because Superior’s President and General Manager, Mr. Tan Bon Diong,
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misled Kunnan into believing that Kunnan was not qualified to hold the same due to the “many
requirements set by the Philippine Patent Office” that Kunnan could not meet.
 Upon the termination of its distributorship agreement with Superior, Kunnan appointed Sports
Concept as its new distributor.
 Superior filed a complaint for trademark infringement and unfair competition with preliminary
injunction against Kunnan and Sports Concept.
ISSUE: W/N Kunnan is liable for trademark infringement and unfair competition.
RULING:
No. Superior was only the distributor. It is not the rightful owner of the subject marks. There can be no
infringement committed by Kunnan who was adjudged with finality to be the rightful owner of the
disputed trademarks in the Registration Cancellation Case. The 2nd element in trademark infringement
was lacking.
No. With the established ruling that Kunnan is the rightful owner of the trademarks of the goods that
Superior asserts are being unfairly sold by Kunna under trademarks registered in Superior’s name, the
latter is left with no effective right to make a claim. For this reason, the unfair competition aspect of
Superior’s case likewise falls.
DISPOSITIVE PORTION

WHEREFORE, premises considered, we DENY Superior Commercial Enterprises, Inc.’s petition for review
on certiorari for lack of merit. Cost against petitioner Superior Commercial Enterprises, Inc.

SO ORDERED.

Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs. E&J Gallo
Case Name
Winery and The Andersons Group, Inc.
Topic Trademark Infringement and Unfair Competition
Case No. |
154342 – July 14, 2004
Date
Ponente J. Corona
Mighty Corporation and La Campana Farbica De Tabaco, Inc.
Petitioner

Respondent E&J Gallo Winery and the Andersons Group, Inc.

Infringement of trademark
- is the unauthorized use of a trademark.
- fraudulent intent is unnecessary.
- prior registration of the trademark is a prerequisite to the action.
Definition
Unfair competition
- is the passing off of one’s goods as those of another.
- fraudulent intent is necessary.
- registration is not necessary.
Doctrine Doctrine of Incorporation
- the Philippines adopts the generally accepted principles of international law and
international jurisprudence as part of the law of the land. Rules of international law are
given a standing equal, not superior, to national legislative enactments.
Dominancy Test
- if the competing trademark contains the main, essential or dominant features of
another, and confusion or deception is likely to result, infringement takes place.
 USA College of Law

Holistic Test
- requires that the entirety of the marks in question be considered in resolving confusing
similarity.
In determining the likelihood of confusion, courts must consider:
(1) resemblance between the trademarks;
(2) similarity of the goods to which the trademarks are attached;
(3) likely effect on the purchaser; and
(4) registrant’s express or implied consent and other fair and equitable considerations.
Enumeration
Set of guidelines in the implementation of the Treaty of Paris:
(1) mark must be internationally known;
(2) subject of the right must be a trademark, not a patent or copyright or anything else;
(3) mark must be for use in the same or similar kind of goods; and
(4) the person claiming must be the owner of the mark.

RELEVANT FACTS
 Gallo Winery’s GALLO wine trademark was registered on November 16, 1971.
 Mighty and La Campana 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 authorized Mighty to manufacture and sell cigarettes bearing the GALLO trademark.
ISSUE: W/N infringement of unfair competition was committed.
RULING:
No. Mighty is not liable for infringement because (1) the actual commercial use of the GALLO wine
trademark was subsequent to its registration in 1971 and to Tobacco Industries’ commercia use of the
GALLO cigarette trademark in 1973, on this account, respondents never enjoyed the exclusive right to
use the GALLO wine trademark to the prejudice of Tobacco Industries and its successors-in-interest;
(2) there is no likelihood of confusion, mistake, or deceit as to the identity or source of petitioners and
respondents’ goods or business; and (3) 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 sole by the defendant
from the fact that they are not identical, similar, related, or competing goods. Mighty is also not liable for
unfair competition because (1) Mighty never attempted to pass off their cigarettes as those of
respondents; and (2) there is no evidence of bad faith of fraud imputable to Mighty in using their GALLO
cigarette mark.
DISPOSITIVE PORTION

WHEREFORE, finding the petition for review meritorious, the same is hereby GRANTED. The questioned
decision and resolution of the Court of Appeals in CA-G.R. CV No. 65175 and the November 26, 1998
decision and the June 24, 1999 order of the Regional Trial Court of Makati, Branch 57 in Civil Case No. 93-
850 are hereby REVERSED and SET ASIDE and the complaint against petitioners DISMISSED. Costs
against respondents.
SO ORDERED.

Case Name Intellectual Property Association of the Philippines vs. Hon. Paquito Ochoa
Topic Trademarks and Madrid Protocol
Case No. |
204605 – July 19, 2016
Date
 USA College of Law

Ponente J. Bersamin
Petitioner Intellectual Property Association of the Philippines
Respondent Hon. Paquito Ochoa
Legal Standing
- is a right of appearance in court of justice on a given question.
The question of legal standing
- is whether such parties have alleged such a personal stake in the outcome of the
controversy as to assure that concrete adverseness which sharpens the presentation of
issues upon which the court so largely depends for illumination of difficult constitutional
questions.
International agreement
Definition - is a contract or understanding, regardless of nomenclature, entered into between the
Philippines and another government in written form and governed by international law,
whether embodied in a single instrument or in two or more related instruments.
Treaties
- are international agreements entered into by the Philippines which require legislative
concurrence after executive ratification. This term may include compacts like
conventions, declarations, covenants and acts.
Executive Agreements
- are similar to treaties except that they do not require legislative concurrence.
Direct Injury Test
- the person who would assail the validity of a statute must have a personal and
Doctrine
substantial interest in the case such that he has sustained, or will sustain direct injury
as a result.
The Madrid Protocol has 2 objectives:
Enumeration (1) to facilitate securing protection for marks; and
(2) to make the management of the registered marks easier in different countries.

RELEVANT FACTS
 On March 27, 2012, President Aquino III ratified the Madrid Protocol.
 IPAP challenged the validity of the President’s accession to the Madrid Protocol without the concurrence
of the Senate.
 According to IPAP, the Madrid Protocol is a treaty, not an executive agreement; hence, respondent
DFA Secretary acted with grave abuse of discretion in determining the Madrid Protocol as an
executive agreement.
ISSUE: (1) WON the IPAP has locus standi to challenge the President’s ratification of the Madrid
Protocol; and (2) WON the Madrid Protocol is valid and constitutional.
RULING:
(1) IPAP has locus standi to bring the present challenge because the court has adopted a liberal
attitude towards locus standi whenever the issue presented for consideration has transcendental
significance to the people, or whenever the issues raised are of paramount importance to the
public; and
(2) DFA Secretary’s determination and treatment of the Madrid Protocol as an executive agreement
are upheld. Being an executive agreement, the 2/3 concurrence by the Senate is unnecessary.
DISPOSITIVE PORTION
Wherefore, this Court dismisses the petition for certiorari and prohibition for lack of merit; and orders the
petitioner to pay the costs of suit.

SO ORDERED.
 USA College of Law

Case Name
Topic
Case No. |
Date
Ponente J.

Petitioner

Respondent
Definition
Doctrine
Enumeration

RELEVANT FACTS



ISSUE: W/N…
RULING:
YES/NO. Then short-answer why.

WHY – 1 to 2 paragraphs. NO copy/paste please!

DISPOSITIVE PORTION

Case Name
Topic
Case No. |
Date
Ponente J.

Petitioner

Respondent
 USA College of Law

Definition
Doctrine
Enumeration

RELEVANT FACTS



ISSUE: W/N…
RULING:
YES/NO. Then short-answer why.

WHY – 1 to 2 paragraphs. NO copy/paste please!

DISPOSITIVE PORTION