CANON KABUSHIKI KAISHA VS CA

FACTS: A review of the records shows that with the order of the BPTTT declaring private
respondent in default for failure to file its answer, petitioner had every opportunity to
present ex-parte all of its evidence to prove that its certificates of registration for the
trademark CANON cover footwear. The certificates of registration for the trademark
CANON in other countries and in the Philippines as presented by petitioner, clearly
showed that said certificates of registration cover goods belonging to class 2 (paints,
chemical products, toner, dyestuff). On this basis, 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.

ISSUE: Whether or not NSR Rubber Corp. committed infringement and unfair
competition against Canon.

RULING: We find the arguments of petitioner to be unmeritorious. Ordinarily, the

ownership of a trademark or tradename is a property right that the owner is entitled to
protect4 as mandated by the Trademark Law.5 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.6

KHO VS CA

FACTS: The petitioner's complaint alleges that petitioner, doing business under the
name and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights
Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of
Copyright Registration No. 0-1358 and No. 0-3678; that she also has patent rights on
Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the
same from Quintin Cheng, the registered owner thereof in the Supplemental Register of
the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529;
that respondent Summerville advertised and sold petitioner's cream products under the
brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading
the public, and resulting in the decline in the petitioner's business sales and income;
and, that the respondents should be enjoined from allegedly infringing on the copyrights
and patents of the petitioner.

The respondents, on the other hand, alleged as their defense that Summerville is the
exclusive and authorized importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing
company authorized Summerville to register its trade name Chin Chun Su Medicated
Cream with the Philippine Patent Office and other appropriate governmental agencies;
that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of
the patent registration certificate, to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said Taiwanese Manufacturing
Company.

ISSUE: Whether or not Khow has the sole right of using the package of chin chun su
product

RULING: Petitioner has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream product are
proper subjects of a trademark inasmuch as the same falls squarely within its definition.
In order to be entitled to exclusively use the same in the sale of the beauty cream
product, the user must sufficiently prove that she registered or used it before anybody
else did. The petitioner's copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for the reason that
they are not appropriate subjects of the said intellectual rights. Consequently, a
preliminary injunction order cannot be issued for the reason that the petitioner has not
proven that she has a clear right over the said name and container to the exclusion of
others, not having proven that she has registered a trademark thereto or used the same
before anyone did.

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 (trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods.12 In relation thereto, a trade name
means the name or designation identifying or distinguishing an enterprise. 13 Meanwhile,
the scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of
their creation.14 Patentable inventions, on the other hand, 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.15

MCDONALDS VS LC BIG MAK BUGER

FACTS: Petitioner McDonald's Corporation ("McDonald's") is a corporation organized

under the laws of Delaware, United States. McDonald's operates, by itself or through its
franchisees, a global chain of fast-food restaurants. McDonald's4 owns a family of marks5
including the "Big Mac" mark for its "double-decker hamburger sandwich." 6 McDonald's
registered this trademark with the United States Trademark Registry on 16 October
1979.7 Based on this Home Registration, McDonald's applied for the registration of the
same mark in the Principal Register of the then Philippine Bureau of Patents,
Trademarks and Technology ("PBPTT"), now the Intellectual Property Office ("IPO").
Pending approval of its application, McDonald's introduced its "Big Mac" hamburger
sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT
allowed registration of the "Big Mac" mark in the Principal Register based on its Home
Registration in the United States.

Like its other marks, McDonald's displays the "Big Mac" mark in items 8 and
paraphernalia9 in its restaurants, and in its outdoor and indoor signages. From 1982 to
1990, McDonald's spent P10.5 million in advertisement for "Big Mac" hamburger
sandwiches alone.10

Petitioner McGeorge Food Industries ("petitioner McGeorge"), a domestic corporation, is

McDonald's Philippine franchisee.11

Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a domestic

corporation which operates fast-food outlets and snack vans in Metro Manila and nearby
provinces.12 Respondent corporation's menu includes hamburger sandwiches and other
food items.13 Respondents Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus
Aycardo, Araceli Aycardo, and Grace Huerto ("private respondents") are the
incorporators, stockholders and directors of respondent corporation. 14

On 21 October 1988, respondent corporation applied with the PBPTT for the registration
of the "Big Mak" mark for its hamburger sandwiches. McDonald's opposed respondent
corporation's application on the ground that "Big Mak" was a colorable imitation of its
registered "Big Mac" mark for the same food products. McDonald's also informed
respondent Francis Dy ("respondent Dy"), the chairman of the Board of Directors of
respondent corporation, of its exclusive right to the "Big Mac" mark and requested him
to desist from using the "Big Mac" mark or any similar mark.

Having received no reply from respondent Dy, petitioners on 6 June 1990 sued
respondents in the Regional Trial Court of Makati, Branch 137 ("RTC"), for trademark
infringement and unfair competition. In its Order of 11 July 1990, the RTC issued a
temporary restraining order ("TRO") against respondents enjoining them from using the
"Big Mak" mark in the operation of their business in the National Capital Region.15 On 16
August 1990, the RTC issued a writ of preliminary injunction replacing the TRO. 16

In their Answer, respondents admitted that they have been using the name "Big Mak
Burger" for their fast-food business. Respondents claimed, however, that McDonald's
does not have an exclusive right to the "Big Mac" mark or to any other similar mark.
Respondents point out that the Isaiyas Group of Corporations ("Isaiyas Group")
registered the same mark for hamburger sandwiches with the PBPTT on 31 March 1979.
One Rodolfo Topacio ("Topacio") similarly registered the same mark on 24 June 1983,
prior to McDonald's registration on 18 July 1985. Alternatively, respondents claimed that
they are not liable for trademark infringement or for unfair competition, as the "Big Mak"
mark they sought to register does not constitute a colorable imitation of the "Big Mac"
mark. Respondents asserted that they did not fraudulently pass off their hamburger
sandwiches as those of petitioners' Big Mac hamburgers. 17 Respondents sought damages
in their counterclaim.

In their Reply, petitioners denied respondents' claim that McDonald's is not the exclusive
owner of the "Big Mac" mark. Petitioners asserted that while the Isaiyas Group and
Topacio did register the "Big Mac" mark ahead of McDonald's, the Isaiyas Group did so
only in the Supplemental Register of the PBPTT and such registration does not provide
any protection. McDonald's disclosed that it had acquired Topacio's rights to his
registration in a Deed of Assignment dated 18 May 1981. 18

ISSUE: Did the same acts of defendants in using the name "B[ig] M[ak]" as a trademark
or tradename in their signages, or in causing the name "B[ig] M[ak]" to be printed on the
wrappers and containers of their food products also constitute an act of unfair
competition under Section 29 of the Trademark Law?

RULING: The xxx provision of the law concerning unfair competition is broader and more
inclusive than the law concerning the infringement of trademark, which is of more limited
range, but within its narrower range recognizes a more exclusive right derived by the
adoption and registration of the trademark by the person whose goods or services are
first associated therewith. xxx Notwithstanding the distinction between an action for
trademark infringement and an action for unfair competition, however, the law extends
substantially the same relief to the injured party for both cases. (See Sections 23 and 29
of Republic Act No. 166)\

Any conduct may be said to constitute unfair competition if the effect is to pass off on
the public the goods of one man as the goods of another. The choice of "B[ig] M[ak]" as
tradename by defendant corporation is not merely for sentimental reasons but was
clearly made to take advantage of the reputation, popularity and the established goodwill
of plaintiff McDonald's. For, as stated in Section 29, a person is guilty of unfair
competition 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 likely influence purchasers to believe that
the goods offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer. Thus, plaintiffs have established their valid cause of action
against the defendants for trademark infringement and unfair competition and for
damages.19

SEHWANI VS IN N OUT BURGER

FACTS: 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. x x x.

ISSUE: whether the IPO Director General correctly found respondents guilty of unfair
competition for which he awarded damages to petitioner.

RULING: 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.46

Administrative proceedings are governed by the "substantial evidence rule." A finding of

guilt in an administrative case would have to be sustained for as long as it is supported
by substantial evidence that the respondent has committed acts stated in the complaint
or formal charge. As defined, substantial evidence is such relevant evidence as a
reasonable mind may accept as adequate to support a conclusion.48 As recounted by the
IPO Director General in his decision, there is more than enough substantial evidence to
support his finding that respondents are guilty of unfair competition.

With such finding, the award of damages in favor of petitioner is but proper. This is in
accordance with Section 168.4 of the Intellectual Property Code, which provides that the
remedies under Sections 156, 157 and 161 for infringement shall apply mutatis
mutandis to unfair competition.
MICROSOFT VS. MAXICORP

FACTS: NBI Agent Samiano testified that he saw Maxicorp display and offer for sale
counterfeit software in its premises. He also saw how the counterfeit software were
produced and packaged within Maxicorp’s premises. NBI Agent Samiano categorically
stated that he was certain the products were counterfeit because Maxicorp sold them to
its customers without giving the accompanying ownership manuals, license agreements
and certificates of authenticity.

Sacriz testified that during his visits to Maxicorp, he witnessed several instances when
Maxicorp installed petitioners’ software into computers it had assembled. Sacriz also
testified that he saw the sale of petitioners’ software within Maxicorp’s premises.
Petitioners never authorized Maxicorp to install or sell their software.

The testimonies of these two witnesses, coupled with the object and documentary
evidence they presented, are sufficient to establish the existence of probable cause. From
what they have witnessed, there is reason to believe that Maxicorp engaged in copyright
infringement and unfair competition to the prejudice of petitioners. Both NBI Agent
Samiano and Sacriz were clear and insistent that the counterfeit software were not only
displayed and sold within Maxicorp’s premises, they were also produced, packaged and
in some cases, installed there.

ISSUE: Wheteher or not Maxicorp engaged in copyright infringement and unfair

competition to the prejudice of Microsoft Corp.

RULING: The offense charged against Maxicorp is copyright infringement under Section
29 of PD 49 and unfair competition under Article 189 of the RPC. To support these
charges, petitioners presented the testimonies of NBI Agent Samiano, computer
technician Pante, and Sacriz, a civilian. The offenses that petitioners charged Maxicorp
contemplate several overt acts. The sale of counterfeit products is but one of these acts.
Both NBI Agent Samiano and Sacriz related to the RTC how they personally saw
Maxicorp commit acts of infringement and unfair competition.