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A. TANDUAY DISTILLERS, INC., vs. GINEBRA SAN MIGUEL, INC., 1. .

The trial court noted that while the subject trademarks are not identical, it is obviously clear that the word "Ginebra" is the dominant feature in the trademarks. The trial court stated that there is a strong indication that confusion is likely to occur since one would inevitably be led to conclude that both products are affiliated with San Miguel due to the distinctive mark "Ginebra" which is readily identified with San Miguel. The trial court concluded that ordinary purchasers would not examine the letterings or features printed on the label but would simply be guided by the presence of the dominant mark "Ginebra." Any difference would pale in significance in the face of evident similarities in the dominant features and overall appearance of the products. 2. Section 123.1(h) of the IP Code states that a mark cannot be registered if it "consists exclusively of signs that are generic for the goods or services that they seek to identify." 3. The trial court conceded to Tanduays assertion that the term "Ginebra" is a generic word; hence, it is non-registrable because generic words are by law free for all to use. However, the trial court relied on the principle that even if a word is incapable of appropriation as a trademark, the word may still acquire a proprietary connotation through long and exclusive use by a business entity with reference to its products. The purchasing public would associate the word to the products of a business entity. The word thus associated would be entitled to protection against infringement and unfair competition.The trial court held that to constitute trademark infringement, it was not necessary that every word should be appropriated; it was sufficient that enough be taken to deceive the public in the purchase of a protected article. 4. The CA upheld the trial courts ruling that San Miguel has sufficiently established its right to prior use and registration of the mark "Ginebra" as a dominant feature of its trademark. "Ginebra" has been identified with San Miguels goods, thereby, it acquired a right in such mark, and if another infringed the trademark, San Miguel could invoke its property right. 5. Tanduay invokes Section 156.1 of the IP Code61 as the basis for the computation of damages. San Miguel refutes Tanduays claim that the injury which San Miguel stands to suffer can be measured with reasonable accuracy as the legal formula to determine such injury is provided in Section 156.1 of the IP Code.

B. MANUEL C. ESPIRITU, JR., et al vs. PETRON CORPORATION

1. Section 155 of R.A. 8293 provides that trademark infringement exists when any person who shall, without the consent of the owner of the registered mark: 1. Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or 2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. KPE and Petron have to show that the alleged infringer used Petrons Gasul trademark or a confusingly similar trademark on Bicol Gas tanks with intent to deceive the public and defraud its competitor as to what it is selling. However, the allegations in the complaint do not show that Bicol Gas painted on its own tanks Petrons Gasul trademark or a confusingly similar version of the same. Indeed, in this case, the one tank bearing the mark of Petron Gasul found in a truck full of Bicol Gas tanks was a genuine Petron Gasul tank, more of a captured cylinder belonging to competition. Moreover, no proof has been shown that Bicol Gas has gone into the business of distributing imitation Petron Gasul LPGs. 2. The acts constituting trademark infringement as provided in Section 155 must likely cause confusion, or to cause mistake, or to deceive. It was not shown that there was intent on the part of the responsible officers and staff of Bicol Gas to deceive the public and defraud its competitor as to what it is selling. 3. Section 168.3 (a) of R.A. 8293 (also in relation to Section 170) describes the acts constituting unfair competition. The law punishes the act of giving ones goods the general appearance of the goods of another, which would likely mislead the buyer into believing that such goods belong to the latter. red tags showing the shadow of a black cat. Here, there is no showing that Bicol Gas has been giving its LPG tanks the general appearance of the tanks of Petrons Gasul. As already stated, the truckfull of Bicol Gas tanks that the KPE manager arrested on a road in Sorsogon just happened to have mixed up with them one authentic Gasul tank that belonged to Petron.

4. A corporation is an entity separate and distinct from the persons of its officers, directors, and stockholders. However, its corporate officers or employees, through whose act, default or omission the corporation commits a crime, may themselves be individually held answerable for the crime. Stockholders are basically investors in a corporation. They do not have a hand in running the day-to-day business operations of the corporation unless they are at the same time directors or officers of the corporation. Hence, in the case at bar, the liability of the stockholders and members of the board of directors of Bicol Gas with respect to the charge of unlawfully filling up a steel cylinder or tank that belonged to Petron, should not be charged along with the Bicol Gas employees who were pointed to as directly involved in overt acts constituting the offense. In order that a stockholder may be held criminally liable for acts committed by the corporation as a separate entity, it must be shown that he had knowledge of the criminal act committed in the name of the corporation and that he took part in the same or gave his consent to its commission, whether by action or inaction. 5. R.A. 623, as amended, punishes any person who, without the written consent of the manufacturer or seller of gases contained in duly registered steel cylinders or tanks, fills the steel cylinder or tank, for the purpose of sale, disposal or trafficking, other than the purpose for which the manufacturer or seller registered the same. Assuming the allegations of KPEs manager to be true, that Bicol Gas employees filled up with their firms gas the tank registered to Petron and bearing its mark without the latters written authority,, they may be prosecuted for that offense.

C. ARNEL U. TY, MARIE ANTONETTE TY, JASON ONG, WILLY DY, and ALVIN TY, versus NBI SUPERVISING AGENT MARVIN E. DE JEMIL, PETRON GASUL DEALERS ASSOCIATION, and TOTALGAZ DEALERS ASSOCIATION, G.R. No. 182147, December 15, 2010 1. Sec. 3 (c) of BP 33 BP 33 is a law which prohibits the refilling of petroleum gas of another companys or firms registered steel cylinders without such companys or firms written authorization. 2. Yao, Sr. vs. People A person can also be held liable for trademark infringement by the mere unauthorized use of a container which bears a registered trademark for the purpose of sale, distribution or advertising of goods especially if such use is likely to cause confusion or mistake to

buyers or consumers. 3. Issue of ownership of the cylinders The fact of ownership of the cylinders is not material in determining whether there has been a violation of BP 33. A violation of said is committed regardless of the buyer or possessor of the branded LPG cylinder by the mere refilling of the cylinder without authority from the brand owner. 4. Right of the brand owners The brand owners remain as the owners of the embossed, stamped and marked LPG cylinders even if the cylinders are possessed by the customers or consumers. 5. Tampering, changing the appearance of the branded cylinder Tampering or changing the appearance of branded LPG cylinders is not only a mode of perpetrating the offense under BP 33 but it also constitutes infringement of trademark under Sec. 155 of the IP Code. Such acts violates the brand owners rights over the registered marked embossed in the LPG cylinders.

D. JUNO BATISTIS, Petitioner, versus PEOPLE OF THE PHILIPPINES, Respondent, 2009 Dec 16, 1st Division, G.R. No. 181571

1. Where there is no question that the accused exerted the effort to make the counterfeit products look genuine to deceive the unwary public into regarding the products as genuine, he thereby commited acts constituting infringement of trademark as set out in Sec 155 of the Intellectual Property Code. 2. A question of law as distinguished with question of fact is clearly enunciaed in the case of Belgica v Belgica 531 SCRA 331. ******There exists a question of law when there is doubt on what the law applicable to a certain set of facts is. Questions of fact, on the other hand, arise when there is an issue regarding the truth or falsity of the statement of facts. Questions on whether certain pieces of evidence should be accorded probative value or whether the proofs presented by one party are clear, convincing and adequate to establish a proposition are issues of fact. Such questions are not subject to review by this Court. As a general rule, we review cases decided by the CA only if they involve questions of law raised and distinctly set forth in the petition. 3. The review on appeal of a decision in a criminal case, wherein the Court of Appeals imposes a pemalty other than death, reclusion perpetua, or life

imprisonment, is by petition for review on certiorari. Pursuant to Section 3,17 Rule 122, and Section 9,18 Rule 45, of the Rules of Court, the review on appeal of a decision in a criminal case, wherein the CA imposes a penalty other than death, reclusion perpetua, or life imprisonment, is by petition for review on certiorari. A petition for review on certiorari raises only questions of law. Sec. 1, Rule 45, Rules of Court. 4. The appellants petition for review on certiorari should raise only the errors committed by the appellate court not the errors of the RTC. The petition for review replicates Batistis appellant's brief filed in the CA,19 a true indication that the errors he submits for our review and reversal are those he had attributed to the RTC. He thereby rests his appeal on his rehashed arguments that the CA already discarded. His appeal is, therefore, improper, considering that his petition for review on certiorari should raise only the errors committed by the CA as the appellate court, not the errors of the RTC. 5. The imposition of indeterminate sentence with maximum and minimum periods in criminal cases not excepted from the coverage of the Indeterminate Sentence Law pursuant to its Section 2 is mandatory. The straight penalty the CA imposed was contrary to the Indeterminate Sentence Law, whose Section 1 requires that the penalty of imprisonment should be an indeterminate sentence. According to Spouses Bacar v. Judge de Guzman,Jr.,27 the imposition of an indeterminate sentence with maximum and minimum periods in criminal cases not excepted from the coverage of the Indeterminate Sentence Law pursuant to its Section 228 is mandatory.

E. COFFEE PARTNERS, INC., petitioner, vs. SAN FRANCISCO COFFEE & ROASTERY, INC., respondent., G.R. No. 169504. March 3, 2010 1. A trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. * RA 8293 dispensed with registration of a trade name with the IPO as a requirement for the filing of an action for infringement.

2. Trade names shall be protected, even prior to or without registration with the IPO, against any unlawful act including any subsequent use of the trade name by a third party, whether as a trade name or a trademark likely to mislead the public. It is the likelihood of confusion that is the gravamen of infringement. But there is no absolute standard for likelihood of confusion. Only the particular, and sometimes peculiar, circumstances of each case can determine its existence. Thus, in infringement cases, precedents must be evaluated in the light of each particular case. 3. In determining similarity and likelihood of confusion, there are two tests. 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 occurs. Exact duplication or imitation is not required. 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 consumers. In contrast, 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. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other. 4. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation. *The descriptive words SAN FRANCISCO COFFEE are precisely the dominant features of respondents trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale or retail. The consuming public will likely be confused as to the source of the coffee being sold at petitioners coffee shops. Petitioners argument that San Francisco is just a proper name referring to the famous city in California and that coffee is simply a generic term, is untenable. Respondent has acquired an exclusive right to the use of the trade name SAN FRANCISCO COFFEE & ROASTERY, INC. since the registration of the business name with the DTI in 1995. ********Geographic or generic words are not, per se, subject to exclusive appropriation. It is only the combination of the words (respondents trade name SAN FRANCISCO COFFEE) that is protected against infringement. ***** 5.A corporation has an exclusive right to the use of its name. The right proceeds from the theory that it is a fraud on the corporation which has acquired a right to that name and perhaps carried on its business thereunder, that another should attempt to use the same name, or the same name with a slight variation in such a way as to induce persons to deal with it in the belief that they are dealing with the corporation which has given a reputation to the name. *The Court cannot allow petitioner to profit by the name and reputation so far built by respondent without running afoul of the basic demands of fair play. Not only the law but equity considerations hold petitioner liable for infringement of respondents trade name.

F. ARTHUR DEL ROSARIO and ALEXANDER DEL ROSARIO, petitioners, vs. HELLENOR D. DONATO, JR. and RAFAEL V. GONZAGA, respondents., G.R. No. 180595. March 5, 2010

1. A judicially ordered search that fails to yield the described illicit article does not of itself render the courts order "unlawful." The Del Rosarios broad assertion in their complaint that the search was conducted "in full and plain view of members of the community" does not likewise support their claim that such search was maliciously enforced. There is nothing inherently wrong with search warrants being enforced in full view of neighbors. In fact, when the respondent or his representative is not present during the search, the rules require that it be done in the presence of two residents of the same locality. These safeguards exist to protect persons from possible abuses that may occur if searches were done surreptitiously or clandestinely. 2. The test of sufficiency of a complaint is whether or not, assuming the truth of the facts that plaintiff alleges in it, the court can render judgment granting him the judicial assistance he seeks. And judgment would be right only if the facts he alleges constitute a cause of action that consists of three elements: (1) the plaintiffs legal right in the matter; (2) the defendants corresponding obligation to honor or respect such right; and (3) the defendants subsequent violation of the right. Absent any of these, the complaint would have failed to state a cause of action.

2.

Allegations of bad faith, malice, and other related words without ultimate facts to support the same are mere conclusions of law. The Del Rosarios did not allege that respondents NBI agents violated their right by fabricating testimonies to convince the RTC of Angeles City to issue the search warrant.

4.

The proceeding under Rule 126, a limited criminal one, does not provide for the filing of counterclaims for damages against those who may have improperly sought the issuance of the search warrant. The subject search warrant was not issued under A.M. 02-1-06-SC, which governed the issuance of a writ of search and seizure in a civil action for infringement filed by an intellectual property right owner against the supposed

infringer of his trademark or name. Philip Morris, the manufacturer of Marlboro cigarettes, did not go by this route. Philip Morris did not file a civil action for infringement of its trademark against the Del Rosarios before the RTC of Angeles City. Instead, Philip Morris sought assistance from the NBI for the apprehension and criminal prosecution of those reportedly appropriating its trademark and selling fake Marlboro cigarettes. In turn, the NBI instituted a police action that included applying for a search and seizure warrant under Sections 3, 4, 5 and 6 of Rule 126 of the Rules of Criminal Procedure (not under the provisions of A.M. 02-1-06-SC) against the Del Rosarios upon the belief that they were storing and selling fake Marlboro cigarettes in violation of the penal provisions of the intellectual property law. 5. The Del Rosarios had the right to seek damages, if the circumstances warranted, by separate civil action for the wrong inflicted on them by an improperly obtained or enforced search warrant. Unfortunately, their complaint, as worded, failed to state a proper cause of action.

G. SOCIETE DES PRODUITS NESTLE, S.A., petitioner, vs. MARTIN T. DY, JR., respondent., G.R. No. 172276. August 9, 2010.

1.

Under Section 22 of Republic Act (R.A.) No. 166, as amended, in order to constitute trademark infringement under the said law, the following elements must concur, to wit: (1) a trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office; (2) that 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; (3) that he trademark is used for identical or similar goods; and (4) that such act is done without the consent of the trademark registrant or assignee. Section 155 of R.A. No. 8293 states: Remedies; Infringement. Any person who shall, without the consent of the owner of the registered mark: 155.1. 155.2. Registered trademarks or names are entitled to protection. Hence, in case of infringement, the law steps in and provides corresponding punishments. Trademark infringement occurs when an infringer, uses a trademark which is identical or confusingly similar to a trademark owned or already registered, in relation to products or services which are identical or similar to the products or services which the registration covers. The elements of infringement under R.A. No. 8293 are as follows: (1) that the

2.

trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered; (2) that the trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; (3) that 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; (4) that 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 idenity of such business; and (5) that it is without the consent of the trademark or trade name owner or the assignee thereof. 3. Confusion of goods and confusion of business The confusion of goods in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. In which case, defendants goods are then bought as the plaintiffs, and the poorer quality of the former reflects adversely on the plaintiffs reputation. The other is the confusion of business: Here though the goods of the parties are different, the defendants product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist. To receive protection from infringement, trademarks must be distinctive and must not confuse the public between two competing trademarks. When competitors share deceptively similar trade trademarks, a cause of action for infringement may exist. Hence, an owner of a trademark may commence legal proceedings against a party which infringes its registration. Thus, the two types of confusion in trademark infringement must be distinguished. Confusion of goods contemplates a case when the public are induced to purchase one product in the belief that he was purchasing the other product because both products are confusingly similar. On the other hand, confusion of business contemplates a case when although the goods of the parties are different, the defendants product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist. 4. dominancy test and holistic test

The law has evolved two kinds of tests in determining whether or not colorable imitation exists The dominancy test considers the dominant features of the competing trademarks which might cause confusion or deception and thus constitute infringement. On the other hand, the holistic test focuses on the entirety of the marks in question to determine confusing similarity. This requires careful scrutiny to determine in what points the labels of the products differ. In contrast to dominancy test which focuses on the dominant features of competing trademarks, holistic test considers not only the dominant features but also entirety or totality of the marks in determining whether competing trademarks might cause confusion

or deception and thus constitute infringement. In the case at bar, the Court holds that the dominancy test is applicable. Applying the dominancy test in the present case, the Court finds that NANNY is confusingly similar to NAN. NAN is the prevalent feature of Nestles 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. 5. The scope of protection afforded to registered trademark owners is not limited to protection from infringers with identical goods. The scope of protection extends to protection from infringers with related goods, and to market areas that are the normal expansion of business of the registered trademark owners. Owner of a registered trademark owner may use his mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. Section 138 of the Intellectual Property Code provides that a certificate of registration of a mark shall be prima facie evidence of validity of the registration, the registrants ownership of the mark, and of the registrants exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. In the case at bar, the Supreme Court ruled that 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 or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business.

H. DERMALINE, INC., petitioner, vs. MYRA PHARMACEUTICALS, INC., respondent., G.R. No. 190065. August 16, 2010 1. Section 121.1 of the Intellectual Property Code, a "mark" means 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. Hence, in order to qualify a mark within the purview of the said definition, a mark should not be generic which means relating to or descriptive of an entire group or class. A trademark can be registered if it is able to distinguish the goods of an enterprise and if it will not confuse or deceive the public with respect to the qualities of the product. In the case at bar, Myra correctly posits that, as a registered trademark owner, it has the right under Section 147 of R.A. No. 8293 to prevent third parties from using a trademark, or similar signs or containers for goods or services, without its consent, identical or similar to its registered trademark, where such use would result in a likelihood of confusion.

2.

The dominancy test considers the dominant features of the competing trademarks which might cause confusion or deception and thus constitute infringement. On the other hand, the holistic test focuses on the entirety of the marks in question to determine confusing similarity. This requires careful scrutiny to determine in what points the labels of the products differ. In contrast to dominancy test which focuses on the dominant features of competing trademarks, holistic test considers not only the dominant features but also entirety or totality of the marks in determining whether competing trademarks might cause confusion or deception and thus constitute infringement.

3.

As correctly held by the IPO, both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. Hence, Dermaline's insistence that its applied trademark "DERMALINE DERMALINE, INC." had differences "too striking to be mistaken" from Myra's "DERMALIN" cannot, therefore, be sustained. Indeed, the registered trademark owner may use its mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market.

4.

The Court is cognizant that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. This means that the scope of protection extends to protection from infringers with related goods, and to market areas that are the normal expansion of business of the registered trademark ownersSection 138 of the Intellectual Property Code provides that a certificate of registration of a mark shall be prima facie evidence of validity of the registration, the registrants ownership of the mark, and of the registrants exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such that, considering the current proliferation of health and beauty products in the market, the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services. 5. Section 121 of the Intellectual Property Code provides that the rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. This means that registration gives the trademark owner the exclusive right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services. In this case, the public may mistakenly think that Dermaline is connected to or associated with Myra, such that, considering the current proliferation of health and beauty products in the market, the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services.

I. SKECHERS, U.S.A., INC., PETITIONER, VS. INTER PACIFIC INDUSTRIAL TRADING CORP., AND/OR INTER PACIFIC TRADING CORP. AND/OR STRONG SPORTS GEAR CO., LTD., AND/OR STRONGSHOES WAREHOUSE AND/OR STRONG FASHION SHOES TRADING AND/OR TAN TUAN HONG AND/OR VIOLETA T. MAGAYAGA AND/OR JEFFREY R. MORALES AND/OR ANY OF ITSOTHER PROPRIETOR/S, DIRECTORS, OFFICERS, EMPLOYEES AND/OR OCCUPANTS OF ITS PREMISES LOCATED AT S-7, ED & JOE'S COMMERCIAL ARCADE, NO. 153 QUIRINO AVENUE, PARANAQUE CITY, RESPONDENTS. , G.R. No. 164321, March 23, 2011

(1) The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion. In determining similarity and likelihood of confusion, jurisprudence has developed tests the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized "S" by respondent in its Strong rubber shoes infringes on the mark already registered by petitioner with the IPO. While it is undisputed that petitioners stylized "S" is within an oval design, to this Courts mind, the dominant feature of the trademark is the stylized "S," as it is precisely the stylized "S" which catches the eye of the purchaser. Thus, even if respondent did not use an oval design, the mere fact that it used the same stylized "S", the same being the dominant feature of petitioners trademark, already constitutes infringement under the Dominancy Test. 2. (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. 3. Both the RTC and the CA applied the Holistic Test in ruling that respondent had not infringed petitioners trademark. For its part, the RTC noted the following supposed dissimilarities between the shoes, to wit: 1. The mark "S" found in Strong Shoes is not enclosed in an "oval design." 2. The word "Strong" is conspicuously placed at the backside and insoles.

3. The hang tags and labels attached to the shoes bears the word "Strong" for respondent and "Skechers U.S.A." for private complainant; 4. Strong shoes are modestly priced compared to the costs of Skechers Shoes. While there may be dissimilarities between the appearances of the shoes, to this Courts mind such dissimilarities do not outweigh the stark and blatant similarities in their general features. As can be readily observed by simply comparing petitioners Energy model and respondents Strong rubber shoes, respondent also used the color scheme of blue, white and gray utilized by petitioner. Even the design and "wavelike" pattern of the midsole and outer sole of respondents shoes are very similar to petitioners shoes, if not exact patterns thereof. At the side of the midsole near the heel of both shoes are two elongated designs in practically the same location. Even the outer soles of both shoes have the same number of ridges, five at the back and six in front. On the side of respondents shoes, near the upper part, appears the stylized "S," placed in the exact location as that of the stylized "S" on petitioners shoes. On top of the "tongue" of both shoes appears the stylized "S" in practically the same location and size. Moreover, at the back of petitioners shoes, near the heel counter, appears "Skechers Sport Trail" written in white lettering. However, on respondents shoes appears "Strong Sport Trail" noticeably written in the same white lettering, font size, direction and orientation as that of petitioners shoes. On top of the heel collar of petitioners shoes are two grayish -white semitransparent circles. Not surprisingly, respondents shoes also have two grayish-white semitransparent circles in the exact same location. Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in applying the holistic test, ruled that there was no colorable imitation, when it cannot be any more clear and apparent to this Court that there is colorable imitation. The dissimilarities between the shoes are too trifling and frivolous that it is indubitable that respondents products will cause confusion and mistake in the eyes of the public. Respondents shoes may not be an exact replica of petitioners shoes, but the features and overall design are so similar and alike that confusion is highly likely. Even if not all the details are identical, as long as the general appearance of the two products are such that any ordinary purchaser would be deceived, the imitator should be liable. Even if not all the details just mentioned were identical, with the general appearances alone of the two products, any ordinary, or even perhaps even a not too perceptive and discriminating customer could be deceived. 4. Neither can the difference in price be a complete defense in trademark infringement. Indeed, the registered trademark owner may use its mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. The purchasing public might be mistaken in thinking that petitioner had ventured into a lower market segment such that it is not inconceivable for the public to think that Strong or Strong Sport Trail might be associated or connected with petitioners brand, which scenario is plausible especially since both petitioner and respondent manufacture rubber shoes.

5. Withal, the protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time, but also to safeguard the public as consumers against confusion on these goods. While respondents shoes contain some dissimilarities with petitioners shoes, this Court cannot close its eye to the fact that for all intents and purpose, respondent had deliberately attempted to copy petitioners mark and overall design and features of the shoes. Let it be remembered, that defendants in cases of infringement do not normally copy but only make colorable changes. The most successful form of copying is to employ enough points of similarity to confuse the public, with enough points of difference to confuse the courts.

J. HON NE CHAN, YUNJI ZENG, AND JOHN DOE, Petitioners, versus HONDA MOTOR CO., LTD., AND HONDA PHIL., INC., Respondents., 2007 Dec 19. G.R. No. 172775 1. There is evidently no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition. It is therefore unclear whether the crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal Code. In the face of this ambiguity, we must strictly construe the statute against the State and liberally in favor of the accused, for penal statutes cannot be enlarged or extended by intendment, implication or any equitable consideration. 2. In the Application for Search Warrant filed by NBI SI Lacaran, it is clearly stated that what respondents are complaining about was the alleged violation of the goodwill they have established with respect to their motorcycle models "WAVE 110 S" and "WAVE 125 S" and which goodwill is entitled to protection in the same manner as other property rights. It is quite obvious then that their cause of action arose out of the intrusion into their established goodwill involving the two motorcycle models and not patent infringement. 3. It is evident that Wave is the model name of the motorcycles produced by the (herein respondents) Honda and, therefore, any imitation unit that is in the possession of the (herein petitioners) and carries the name Wave is the fit object of the warrants whether some other name or figure is affixed to it or not. The name Wave CX 110 is but a [species] of units under the generic name Wave. The warrant that directs the seizure of Wave logically includes Wave CX 110 and is by no means converted into a roving commission when it allows the officer to seize it. 4. Paragraph 3 of Article 189 of the Revised Penal Code stating that Any person who, by means of false or fraudulent representations or declarations, orally or in writing, or by other fraudulent means shall procure from the patent office or from any other office which may hereafter be established by law for the purposes, the registration of a tradename, trademark, or service mark, or of himself as the owner of such tradename, trademark, or service mark or an entry respecting a tradename, trademark, or servicemark.

was not included in the enactment of Section 168 of Republic Act No. 8293. 5. The trial courts declaration that With respect to the other units seized by the NBI, their immediate release is likewise proper since there is no showing of probable cause that justified the issuance of the search warrant. The (herein respondents) claims (sic) that the (herein petitioners) are guilty of Unfair Competition because of the alleged similarities between its motorcycle units and those of the (petitioners). There maybe similarities as claimed by the (respondents) but the differences far outweigh the similarities that any confusion to the consumer is remote and speculative. These differences are quite evident from the very comparative pictures attached by the (petitioners) in its (sic) application for Search Warrant as well as in the Opposition filed relative to the pending "Joint Motion to Quash Search Warrants and to Return Illegally Seized Items." Aside from the differences in features, the motorcycle units sold by the (petitioners) prominently bear the distinct trade name "DRAGON SPIRIT." This is not the same trade name of the (respondents), which is Honda. The fact alone would practically eliminate any possible confusion on the part of the public that the motorcycle units they would be buying from the (petitioners) are those manufactured and/or sold by (respondents).27 Unmistakably conveys the message that no unfair competition exists in this case a conclusion that is not within its competence to make, for its task is merely confined to the preliminary matter of determination of probable cause and nothing more. The evidence it requires to dispense this function is, as stated before, far less stringent than that required in the trial on the merits of the charge involving unfair competition.

K. SEHWANI, INCORPORATED and/or BENITAS FRITES, INC., Petitioner, versus IN-N-OUT BURGER, INC., Respondent., 2007 Oct 15, G.R. No. 171053

1.

IN INFRINGEMENT CASES THE REGLAMENTARY PERIOD TO APPEAL MUST BE STRICTLY FOLLOWED. The Court has invariably ruled that perfection of an appeal within the statutory or reglementary period is not only mandatory but also jurisdictional; failure to do so renders the questioned decision/final order final and executory, and deprives the appellate court of jurisdiction to alter the judgment or final order, much less to entertain the appeal. True, this rule had been relaxed but only in highly meritorious cases to prevent a grave injustice from being done. Such does not obtain in this case. As correctly held by the Court of Appeals, petitioners belated filing of an appeal memorandum rendered the December 22, 2003 Decision and the October 28, 2004 Order of Bureau Director Beltran-Abelardo final and executory.

2 CORPORATIONS, EVEN NOT DOING BUSINESS IN THE PHILIPPINES, IS PROTECTED AGAINST TRADEMARK INFRINGEMENT Contrary to petitioners argument, respondent has the legal capacity to sue for the protection of its trademarks, albeit it is not doing business in the Philippines. Section 160 in relation to Section 3 of IP Code provides that Any foreign national or juridical person who meetsthe requirements of Section 31 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. Respondent anchors its causes of action under Articles 6bis and 82 of The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, wherein both the United States and the Philippines are signatories.

3 TO AVAIL OF THE PROTECTION THE CONVENTION OF PARIS OFFERS, THE TRADEMARK MUST BE WELL KNOWN IN THE COUNTRY WHERE PROTECTION IS SOUGHT; AND THE IDENTIFICATION OF A TRADEMARK AS WELL KNOWN IS FACTUAL IN NATURE Article 6bis which governs the protection of well-known trademarks, is a self-executing provision and does not require legislative enactment to give it effect in the member country. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention, after its ratification according to the public law of each state and the order for its execution. The essential requirement under this Article is that the trademark to be protected must be "well-known" in the country where protection is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court. The question of whether or not respondents trademarks are considered "well-known" is factual in nature, involving as it does the appreciation of evidence adduced before the BLA-IPO. The settled RULE is that the factual findings of quasi-judicial agencies, like the IPO, which have acquired expertise because their jurisdiction is confined to specific matters, are generally accorded not only respect, but, at times, even finality if such findings are supported by substantial evidence. Respondent was able to prove substantially that its mark "IN-N-OUT Burger and Arrow Design" is an internationally well known mark as evidenced by its trademark registrations around the world and its comprehensive advertisements therein: among the evidence submitted are the
1

articles about "IN-N-OUT Burger" appearing in magazines, newspapers and print-out of what appears to be printed representations of its internet website (www.innout.com) (Exhibits "CCC" to "QQQ"), as well as object evidence consisting of videotapes of famous celebrities mentioning IN-N-OUT burgers in the course of their interviews (Exhibits "EEEE" and "FFFF") showing a tremendous following among celebrities. Also, the quality image and reputation acquired by the complainants IN-N-OUT mark is unmistakable. With this, complainants mark have met other criteria set in the Implementing Rules of Republic Act 8293, namely, a and d of Rule 102. 4. THE PRINCIPLE OF LACHES DOES NOT APPLY IN PETITION TO CANCEL REGISTRATION OF A MARK USED TO MISREPRESENT THE SOURCE OF THE GOODS OR SERVICES. NO. Section 151(b) of R.A. No. 8293 specifically provides that a petition to cancel the registration of a mark which is registered contrary to the provisions thereof, or which is used to misrepresent the source of the goods or services, may be filed at any time. Moreover, laches may not prevail against a specific provision of law , since equity, which has been defined as justice outside legality is applied in the absence of and not against statutory law or rules of procedure. Aside from the specific provisions of R.A. No. 8293, the Paris 5. PETITION FOR CANCELLATION OF A SUBSEQUENT AND SIMILAR MARK MAY BE BASED ON THE FACT THAT IT CAUSES MISREPRESENTATION OF THE SOURCE OF THE GOODS OR SERVICES WITH WHICH THE MARK IS USED Section 151(b) of RA 82933. The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger trademark for the name of their restaurant, but they also used identical or confusingly similar mark for their hamburger wrappers and french-fries receptacles, thereby effectively misrepresenting the source of the goods and services.

L. MATTEL, INC. Petitioner, versus EMMA FRANCISCO, Director-General of the Intellectual Property Office, HON. ESTRELLITA B. ABELARDO, Director of the Bureau of Legal Affairs (IPO), and JIMMY UY, Respondents., 2008 Jul 30 , G.R.No. 166886

2. Identical marks should not be used where the possibility of confusion as to source of origin of the product is certain

3. Not complying with the mandatory filing of DAU is deemed to be an abandonment of ones trademark (Section 124.2 RA No. 8293; rule 204) 4. Failure to file a DAU must be subject to administrative proceeding and is not a proper subject of a petition for review under Rule 45 (exhaustion of administrative remedies) 5. Mattels trademark application cannot be considered newly discovered evidence since its filing was more than two years after the case has been duly submitted 6. Due to abandonment case is rendered to be moot and academic exception if ; a. there is a grave abuse of discretion, b. exceptional character of the situation and paramount interest is involved, c. when the constitutional issue raised requires formulation of controlling principles to guide the bench, the bar and the public, d. the case is capable of repetition yet evading review.

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