Mighty Corporation vs EJ Gallo Winery

G.R. NO. 154342, July 14, 2004

Corona, J:

Doctrine:
A law that is not yet effective cannot be considered as conclusively known by the populace.
To make a law binding even before it takes effect may lead to the arbitrary exercise of the
legislative power.

Facts:
Respondent Gallo Winery’s GALLO wine trademark was registered in the Philippine
Intellectual Property Office in 1971 while petitioner Mighty Corporation and La Campana were
using the GALLO cigarettes trademark since 1973.

Subsequently, Gallo Winery sued Mighty Corporation and La Campana for trademark and
trade name infringement and unfair competition, claiming that the former adopted the GALLO
trademark to ride on the latter’s established reputation and popularity.

The RTC held Mighty Corporation liable for trademark infringement and unfair competition. On
appeal, the CA affirmed the RTC decision.

Issue:
Whether or not the courts a quo erred in retroactively applying the IP Code in this case

Ruling:
Yes, the courts a quo erred in retroactively applying the IP Code in this case

It is a fundamental principle that the validity and obligatory force of a law proceed from the fact
that it has first been promulgated. A law that is not yet effective cannot be considered as
conclusively known by the populace. To make a law binding even before it takes effect may
lead to the arbitrary exercise of the legislative power. Nova constitutio futuris formam imponere
debet non praeteritis. A new state of the law ought to affect the future, not the past. Any doubt
must generally be resolved against the retroactive operation of laws, whether these are
original enactments, amendments or repeals. There are only a few instances when laws may
be given retroactive effect, none of which is present in this case.

The IP Code, repealing the Trademark Law, was approved on June 6, 1997. Section 241
thereof expressly decreed that it was to take effect only on January 1, 1998, without any
provision for retroactive application. Thus, the Makati RTC and the CA should have limited the
consideration of the present case within the parameters of the Trademark Law and the Paris
Convention, the laws in force at the time of the filing of the complaint.
E.I. Dupont de Nemours vs. IPO Director Francisco (2016)
GR No. 174379, August 31, 2016
Leonen, J.:

Doctrine:
An abandoned patent application may only be revived within three (3) months from the date
of abandonment, upon good cause shown and the payment of the required fee.

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 -—
allows revival within 4 months from the mailing date of the notice of withdrawal, upon showing
fraud, accident, mistake or excusable negligence.

Facts:
In 1987, Petitioner E.I. Dupont de Nemours filed a patent application for losartan, an invention
related to the treatment of hypertension and congestive heart failure. Subsequently, however,
it found out that its application was abandoned and the lawyer who handled the application
had already died. Thus, it filed for the revival of the patent application.

The Director of Patents denied the petition for having filed out of time. The same was affirmed
by the Director-General.

The matter was elevated to the Court of Appeal which granted the Petition for Review. Upon
Motion for leave to intervene by Therapharma, the CA found that E.I DuPont was Inexcusably
negligent in prosecuting the patent application. Therapahrma was granted by the Bureau of
Food and Drugs in its application for a losartan product "Lifezar". It made a search of existing
patent applications for similar products before its application, and no existing patent
registration was found since E.I. Dupont's application for its losartan product was considered
abandoned.

Hence, this Petition.

Issues:
1. whether the Court of Appeals erred in denying E.I Dupont’s appeal for the revival of its
patent application
2. whether the invention has already become part of public domain

Ruling:
1. No, the Court of Appeals erred in denying E.i Dupont’s appeal for the revival of its
patent application

An abandoned patent application may only be revived within four (4) months from the date of
abandonment. No extension of this period is provided by the 1962 Revised Rules of Practice.
Under the 1962 Rules, 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 BPTTT, and not from applicant's actual notice.
The above rules has since been superseded by:

(a) Section 133.4 of the Intellectual Property Code— which provides for a shorter period of
three (3) months from the date of abandonment within which to file for revival, upon good
cause shown and the payment of the required fee.

(b) 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 -—
which allows revival within 4 months from the mailing date of the notice of withdrawal, upon
showing fraud, accident, mistake or excusable negligence.

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 (1987-
2000). Petitioner's patent application, therefore, should not be revived since it was filed beyond
the allowable period.

2. Yes, the invention has already become part of public domain

Under the Intellectual Property Code, a patent holder has the right to "to restrain, prohibit and
prevent” any unauthorized person or entity from manufacturing, selling, or importing any
product derived from the patent. However, after a patent is granted and published in the
Intellectual Property Office Gazette, any interested third party "may inspect the complete
description, claims, and drawings of the patent."

The grant of a patent provides protection to the patent holder from the indiscriminate use of
the invention. However, its mandatory publication also has the correlative effect of bringing
new ideas into the public consciousness. After the publication of the patent, any person may
examine the invention and develop it into something further than what the original patent
holder may have envisioned. After the lapse of 20 years, the invention becomes part of the
public domain and is free for the public to use.

The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention;
second, it promotes disclosures of inventions to stimulate further innovation and to permit the
public to practice the invention once the patent expires; third, the stringent requirements for
patent protection, seek to ensure that ideas in the public domain remain therefor the free use
of the public."
Melabarose R. Sasot et al v. People of the Philippines
G.R. No. 143193, June 29, 2005
Austria-Martinez, J:

Doctrine:
A foreign corporation not engaged and licensed to do business in the Philippines may maintain
an action for unfair competition or infringement of trademarks under the Paris Convention for
the Protection of Industrial Property to which the Philippines is a party.

Facts:
An information for unfair competition under violation of Article 189 of the Revised Penal Code
was filed against Petitioners Sasot. Before arraignment, Sasot filed a motion to quash. They
argued that the fiscal should have dismissed the complaint because the complainant is a
foreign corporation not doing business in the Philippines, and cannot be protected by
Philippine patent laws since it is not a registered patentee. They averred that they have been
using the business name "ALLANDALE SPORTSLINE, INC." since 1972, and their designs
are original and do not appear to be similar to complainant's, and they do not use
complainant's logo or design.

The trial court denied the motion to quash.

Issue:
Whether or not a foreign corporation not engaged and licensed to do business in the
Philippines may maintain an action for unfair competition

Ruling:
Yes, a foreign corporation not engaged and licensed to do business in the Philippines may
maintain an action for unfair competition.

The crime of Unfair Competition punishable under Article 189 of the Revised Penal Code is a
public crime. It is essentially an act against the State and it is the latter which principally stands
as the injured party. The complainant's capacity to sue in such case becomes immaterial.

In La Chemise Lacoste, S.A. vs. Fernandez, the Court succinctly ruled that:

More important is the nature of the case which led to this petition. What preceded this petition
for certiorari was a letter-complaint filed before the NBI charging Hemandas with a criminal
offense, i.e., violation of Article 189 of the Revised Penal Code. If prosecution follows after the
completion of the preliminary investigation being conducted by the Special Prosecutor the
information shall be in the name of the People of the Philippines and no longer the petitioner
which is only an aggrieved party since a criminal offense is essentially an act against the State.
It is the latter which is principally the injured party although there is a private right violated.
Petitioner's capacity to sue would become, therefore, of not much significance in the main
case. We cannot allow a possible violator of our criminal statutes to escape prosecution upon
a far-fetched contention that the aggrieved party or victim of a crime has no standing to sue.

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. We are simply
interpreting and enforcing a solemn international commitment of the Philippines embodied in
a multilateral treaty to which we are a party and which we entered into because it is in our
national interest to do so.
Elidad Kho vs CA Summerville General Merchandising et al
GR No. 115758, March 19, 2002
De Leon, Jr. J:

Doctrine:
Registration in the Supplemental Register, therefore, serves as notice that the registrant is
using or has appropriated the trademark. By the very fact that the trademark cannot as yet be
on guard and there are certain defects, some obstacles which the use must still overcome
before he can claim legal ownership of the mark or ask the courts to vindicate his claims of an
exclusive right to the use of the same. It would be deceptive for a party with nothing more than
a registration in the Supplemental Register to posture before courts of justice as if the
registration is in the Principal Register.

Facts:
Petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the
issuance of a writ of preliminary injunction against the respondents Summerville General
Merchandising and Company alleging that it doing business under the name and style of KEC
Cosmetics Laboratory, the registered owner of the copyrights Chin Chun Su and Oval Facial
Cream Container/Case and that respondent Summerville advertised and sold Kho’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.

Summerville defense is that it is the exclusive and authorized importer, re-packer and
distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan which
authorised Summerville to register its trade name Chin Chun Su Medicated Cream with the
Philippine Patent Office and other appropriate governmental agencies and that KEC
Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and
falsification.

The trial court granted the preliminary injunction. On appeal, the CA ruled in favor of
Summerville.

Issue:
Whether or not the registration of the trademark or brandname with the supplemental register
of the Bureau of Patents, Trademarks and Technology Transfer be equated with registration
in the principal register, which is duly protected by the Trademark Law.

Ruling:
No, registration of the trademark or brandname with the supplemental register of the Bureau
of Patents, Trademarks and Technology Transfer be equated with registration in the principal
register.

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.

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.
Pearl & Dean (Phils) vs Shoemart, Inc & North Edsa Marketing
G.R. No. 148222, August 15, 2003
Corona, J.:

Doctrine:
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. 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.

Facts:
Pearl and Dean (P&D) is engaged in the manufacture of advertising display units simply
referred to as light boxes. P&D was able to secure a Certificate of Copyright Registration dated
January 20, 1981 over these illuminated display units. The advertising light boxes were
marketed under the trademark "Poster Ads".

Subsequently, P&D received reports that exact copies of its light boxes were installed at SM
City and in the fastfood section of SM Cubao. Upon investigation, P&D found out that these
were also installed in two other SM stores. It also discovered that North Edsa Marketing Inc.
(NEMI), through its marketing arm, Prime Spots Marketing Services, was set up primarily to
sell advertising space in lighted display units located in Shoemart, Inc (SMI's) different
branches. P&D noted that NEMI is a sister company of SMI. Thus, P&D filed a case for
infringement of trademark and copyright, unfair competition and damages.

The RTC of Makati City decided in favor of P&D. However, the Court of Appeals (CA) reversed
the RTC. The CA found that what was copyrighted were the technical drawings only, and not
the light boxes themselves.

Issue:
Whether or not there is copyright infringement

Ruling:
No, there is no copyright infringement.

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. Accordingly, it can cover only the works falling within the statutory enumeration or
description.

P&D secured its copyright under the classification class "O" work. This being so, P&D'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, while 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. The strict application of the law's enumeration in Section 2 prevents us from giving
petitioner even a little leeway, that is, even if its copyright certificate was entitled "Advertising
Display Units." What the law does not include, it excludes, and for the good reason: the light
box was not a literary or artistic piece which could be copyrighted under the copyright law. And
no less clearly, neither could the lack of statutory authority to make the light box copyrightable
be remedied by the simplistic act of entitling the copyright certificate issued by the National
Library as "Advertising Display Units."

In fine, if SMI and NEMI reprinted P&D's technical drawings for sale to the public without
license from P & D, then no doubt they would have been guilty of copyright infringement. But
this was not the case. SMI's and NEMI's acts complained of by P&D were to have units similar
or identical to the light box illustrated in the technical drawings manufactured by Metro and
EYD Rainbow Advertising, for leasing out to different advertisers. Was this an infringement of
petitioner's copyright over the technical drawings? We do not think so.
Fernando U. Juan v. Roberto U. Juan
GR No. 221732, August 23, 2017
Peralta, J.:

Doctrine:
Under Section 121.1 of R.A. No. 8293, "mark" is defined as 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 while Copyright is the right of literary property
as recognized and sanctioned by positive law. An intangible, incorporeal right granted by
statute to the author or originator of certain literary or artistic productions, whereby he is
invested, for a limited period, with the sole and exclusive privilege of multiplying copies of the
same and publishing and selling them.

Facts:
Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera
Ko" in his laundry business on July 4, 1994. The National Library issued to him a certificate of
copyright over said name and mark. Over the years, the laundry business expanded with
numerous franchise outlets in Metro Manila and other provinces. Roberto then formed a
corporation to handle thesaid business, hence, Laundromatic Corporation (Laundromatic) was
incorporated in 1997, while "Lavandera Ko" was registered as a business name on November
13, 1998 with the Department of Trade and Industry (DTI). Thereafter, Roberto discovered
that his brother, petitioner Fernando was able to register the name and mark "Lavandera Ko"
with the Intellectual Property Office (IPO) on October 18, 2001, the registration of which was
filed on June 5, 1995. It was found out by Roberto that Fernando had been selling
his own franchises.

Thus, Roberto filed a petition for injunction, unfair competition, infringement of copyright,
cancellation of trademark and name with/and prayer for TRO and Preliminary Injunction with
the Regional Trial Court (RTC). The RTC rendered Resolution dismissing the petition and
ruling that neither of the parties had a right to the exclusive use or appropriation of the mark
"Lavandera Ko" because the same was the original mark and work of a certain Santiago S.
Suarez. According to the RTC, the mark in question was created by Suarez in 1942 in his
musical composition called, "Lavandera Ko" and both parties of the present case failed to
prove that they were the originators of the same mark.

On appeal, Fernando contended that a mark is different from a copyright and not
interchangeable. The CA dismissed the appeal due to technical grounds. Thus, Fernando files
Certiorari under Rule 45 with the SC.

Issue:
Whether or not a mark is the same as a copyright

Ruling:
No, mark is the same as a copyright

The law on trademarks, service marks and trade names are found under Part III of Republic
Act (R.A.) No. 8293, or the Intellectual Property Code of the Philippines, while Part IV of the
same law governs copyrights.
"Lavandera Ko," the mark in question in this case is being used as a trade name or specifically,
a service name since the business in which it pertains involves the rendering of laundry
services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as 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. As such, the basic contention of the parties
is, who has the better right to use "Lavandera Ko" as a service name because Section 165.2
of the said law, guarantees the protection of trade names and business names even prior to
or without registration, against any unlawful act committed by third parties. A cause of action
arises when the subsequent use of any third party of such trade name or business name would
likely mislead the public as such act is considered unlawful. Hence, the RTC erred in denying
the parties the proper determination as to who has the ultimate right to use the said trade
name by ruling that neither of them has the right or a cause of action since "Lavandera Ko" is
protected by a copyright.

By their very definitions, copyright and trade or service name are different. Copyright is the
right of literary property as recognized and sanctioned by positive law. An intangible,
incorporeal right granted by statute to the author or originator of certain literary or artistic
productions, whereby he is invested, for a limited period, with the sole and exclusive privilege
of multiplying copies of the same and publishing and selling them. Trade name, on the other
hand, is any designation which (a) is adopted and used by person to denominate goods which
he markets, or services which he renders, or business which he conducts, or has come to be
so used by other, and (b) through its association with such goods, services or business, has
acquired a special significance as the name thereof, and (c) the use of which for the purpose
stated in (a) is prohibited neither by legislative enactment nor by otherwise defined public
policy.

Section 172.1 of R.A. 8293 enumerates the following original intellectual creations in the
literary and artistic domain that are protected from the moment of their creation, thus:

172.1 Literary and artistic works, hereinafter referred to as "works", are original intellectual
creations in the literary and artistic domain protected from the moment of their creation and
shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in
dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works
of
art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography;
lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous
to cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

As such, "Lavandera Ko," being a musical composition with words is protected under the
copyright law (Part IV, R.A. No. 8293) and not under the trademarks, service marks and trade
names law (Part III, R.A. No. 8293).
Phil Pharmawealth Inc v. Pfizer Inc
GR NO. 167715, November 17, 2010
Peralta, J.:

Doctrine:
Only the final decisions of the Bureau of Legal Affairs (BLA) are appealable to the Director
General. The Court of Appeals may exercise jurisdiction over interlocutors orders of the BLA.

Facts:
Respondent Pfizer filed a complaint for patent infringement against petitioner Phil
Pharmawealth with the Bureau of Legal Affairs (BLA). The BLA issued an Order issuing a
preliminary injunction against Phil Pharmawealth which was effective for 90 days upon receipt.
Prior to the expiration of the injunction order, Pfizer filed a Motion for Extension of Writ of
Preliminary Injunction, which was denied.

On appeal, the Court of Appeals issued a temporary restraining order which prohibited Phil
Pharmawealth from importing, distributing, selling or offering for sale the subject products and
infringing Pfizer’s patent.

Phil Pharmawealth questioned the exercise of jurisdiction of the CA over the case contending
that the Director General of the IPO and not the CA has jurisdiction to review the questioned
Orders of the Director of the BLA.

Issue:
Whether or not the CA erred in exercising jurisdiction over the case

Ruling:
No, the CA did not err in exercising jurisdiction over the case.

It is true that under Section 7(b) of RA 8293, otherwise known as the Intellectual Property
Code of the Philippines, which is the presently prevailing law, the Director General of the IPO
exercises exclusive appellate jurisdiction over all decisions rendered by the Director of the
BLA-IPO. However, what is being questioned before the CA is not a decision, but an
interlocutory order of the BLA-IPO denying respondents' motion to extend the life of the
preliminary injunction issued in their favor.

RA 8293 is silent with respect to any remedy available to litigants who intend to question an
interlocutory order issued by the BLA-IPO. Moreover, Section 1(c), Rule 14 of the Rules and
Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property
Rights simply provides that interlocutory orders shall not be appealable. The said Rules and
Regulations do not prescribe a procedure within the administrative machinery to be followed
in assailing orders issued by the BLA-IPO pending final resolution of a case filed with them.
Hence, in the absence of such a remedy, the provisions of the Rules of Court shall apply in a
suppletory manner, as provided under Section 3, Rule 1 of the same Rules and Regulations.
Hence, in the present case, respondents correctly resorted to the filing of a special civil action
for certiorari with the CA to question the assailed Orders of the BLA-IPO, as they cannot
appeal therefrom and they have no other plain, speedy and adequate remedy in the ordinary
course of law. This is consistent with Sections 1 and 4, Rule 65 of the Rules of Court, as
amended.
In-N-Out Burger, Inc. vs. Sehwani, Inc. and/or Benita's Frites, Inc.
GR NO. 179127, December 24, 2008
Chico-Nazario, J:

Doctrine:
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.

Facts:
Petitioner In-N-Out Burger filed trademark and service mark applications with the Intellectual
Property Office (IPO) for IN-N-OUT and In-N-OUT Burger & Arrow Design.

Subsequently, In-N-Out Burger found out the respondent Sehwani, Inc had already obtained
Trademark Registration for the mark "IN N OUT (the inside of the letter "O" formed like a star).

In-N-Out Burger filed an administrative complaint against Sehwani for unfair competition and
cancellation of trademark registration. The IPO Director ruled in favor of In-N-Out Burger and
declared Sehwani guilty of unfair competition. On appeal, the Court of Appeals reversed the
decision of the IPO Director. Hence, this petition.

Issue:
Whether or not Sehwani is guilty of unfair competition

Ruling:
Yes, Sehwani is guilty of unfair competition.

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.

There is no evidence that the Sehwani was authorized by In-N-Out Burger 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