Lip Case Digests 3b Ay2016-2017

1 CASE DIGESTS: LAWS ON INTELLECTUAL PROPERTY
1 Birkenstock GMBH vs. Philippine Shoe Mktg.

G.R No. 194307
Nov. 29,2013
FACTS:
In 1994, the German company Birkenstock Orthopaedie Gmbh & Co., filed several trade mark applications for its
mark BIRKENSTOCK and its variants in the Philippines. To its surprise, Birkenstock learned that its
BIRKENSTOCK trade mark was already registered to a Philippine company called Philippine Shoe Expo
Marketing Corporation (Shoe Expo).
Birkenstock quickly filed actions for cancellation against the registered mark. While the cancellation case was
pending, Shoe Expo failed to file the required 10th year Declaration of Actual Use (DAU). Failure to file the DAU
results in the trade mark registrations being deemed withdrawn. Because of this, the cancellation action filed by
Birkenstock was dismissed for being moot and academic, paving the way for its own trade mark applications to
be allowed. Shoe Expo, not deterred by the cancellation of its registration, filed oppositions to the trade mark
applications of Birkenstock, on the grounds that it had been using the mark BIRKENSTOCK for over 16 years in
the Philippines and that it had re-applied for said trade marks, and had also obtained copyright registration for the
word BIRKENSTOCK in 1991.
The Bureau of Legal Affairs (BLA), adjudicating bureau of the Intellectual Property Office in the Philippines
(IPOPHL), consolidated the opposition actions, and on May 28 2008 issued a decision sustaining ShoeExpos
oppositions and rejecting the applications of Birkenstock based on the following:
(i) Shoe Expo was the prior user and adopter of the BIRKENSTOCK trade mark in the Philippines.
(ii) Birkenstock did not present evidence of actual use of the mark in the Philippines.
(iii) The marks of Birkenstock are not internationally well-known.
(iv) Birkenstock submitted only photocopies of its certificates of registrations from other countries which were not
considered admissible as evidence.
Birkenstock appealed the BLA decision to the IPOPHL Director General (DG) who reversed the BLA, and held
that with the cancellation of Shoe Expos registrations, the reason to reject Birkenstocks applications on the
ground of prior registration no longer existed, and that the evidence presented showed that Birkenstock was the
true and lawful owner and prior user of the mark BIRKENSTOCK. The DG disregarded Shoe Expos copyright
registration for the Birkenstock word since copyright and trade marks are different forms of intellectual property
rights and cannot be interchanged.
Dissatisfied, Shoe Expo appealed the DGs decision to the Court of Appeals (CA) which reinstated the BLA
decision. Birkenstock then appealed the CA decision to the Supreme Court.
ISSUE:
Whether or not respondents registration be sustained.
HELD:
No. The court ruled in favour of the petitioner.
INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 1

Under Section 12 of Republic Act 166, it provides that, Each certificate of registration shall remain in force for
twenty years: Provided, that the registration under the provisions of this Act shall be cancelled by the Director,
unless within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of
registration, the registrant shall file in the Patent Office an affidavit showing that the mark or trade-name is still in
use or showing that its non-use is due to special circumstance which excuse such non-use and is not due to any
intention to abandon the same, and pay the required fee.
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for Registration No. 56334 within
the requisite period, or on or before October 21, 2004. As a consequence, it was deemed to have abandoned or
withdrawn any right or interest over the mark BIRKENSTOCK. It must be emphasized that registration of a
trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the owner of the trademark, he
has no right to apply for its registration. Registration merely creates a prima facie presumption of the validity of
the registration. Such presumption, just like the presumptive regularity in the performance of official functions, is
rebuttable and must give way to evidence to the contrary. Besides, petitioner has duly established its true and
lawful ownership of the mark BIRKENSTOCK. It submitted evidence relating to the origin and history of
BIRKENSTOCK and it use in commerce long before respondent was able to register the same here in the
Philippines. Petitioner also submitted various certificates of registration of the mark BIRKENSTOCK in various
countries and that it has used such mark in different countries worldwide, including the Philippines.
2 Asia Brewery Inc vs. CA

GR No. 103543
July 5, 1993
FACTS:
San Miguel Corporation filed for infringement of trademark & unfair competition against the petitioner for the
latters trademark, BEER PALE PILSEN or BEER NA BEER in similarity with the formers, SAN MIGUEL PALE
PILSEN
Respondent contends that there is trademark infringement because the two trademarks sound alike.
Issue:
Whether or not there is trademark infringement.
Held:
No. Applying the Test of Dominancy similarity in main or essential dominant features which would lead to
confusion or deception there is no infringement.
a. SAN MIGUEL PALE PILSEN- Used a sheriff font for S&M, amidst an amber background
b. BEER PILSEN- Large amber letters, larger font
c. Other differences
i. Neck of bottle
ii. Size of pale pilsen
iii. Slogan
iiii. Names of manufacturers
Hence, despite sounding alike, the difference in the characteristics of the dominant features between the two is
sufficient to protect purchasers from being deceived.

3 Mcdonald's Corporation vs. LC Big Mak Burgers

G.R. No. 143993
August 18, 2004
FACTS:
McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with the US Trademark
Registry on 16 October 1979. It is also registered with the Principal Refister of the then Philippine Bureau of
Patents, Trademarks and Technology.
Respondent operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Respondent
corporation's menu includes hamburger sandwiches and other food items. Respondent corporation applied with
the PBPTT for the registration of the "Big Mak" mark for its hamburger sandwiches, which was opposed by
McDonald's.
Petitioners sued L.C. Big Mak Burger, Inc. and its directors before Makati RTC Branch 137 ("RTC"), for
trademark infringement and unfair competition
ISSUE:
(1) Whether or not respondent corporation is liable for trademark infringement and unfair competition.
(2) Whether or not respondents committed Unfair Competition
Ruling:
(1) Yes
To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff's mark; (2)
the plaintiff's ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer
results in "likelihood of confusion." Of these, it is the element of likelihood of confusion that is the gravamen of
trademark infringement.
As to the first element, a mark is valid if it is distinctive and not merely generic and descriptive. "Big Mac" falls
under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the
product it represents. As such, it is highly distinctive and thus valid.
As to the second element, petitioners have duly established their exclusive ownership of the "Big Mac" mark
through prior valid registration of said mark.
As to the third element, in determining likelihood of confusion, the SC has relied on the dominancy test (similarity
of the prevalent features of the competing trademarks that might cause confusion).
Applying the dominancy test, Respondents' use of the "Big Mak" mark results in likelihood of confusion. Aurally
the two marks are the same, with the first word of both marks phonetically the same, and the second word of both
marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word
of both marks having the same letters and the second word having the same first two letters.
(2) Yes.

The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance
of the goods, and (2) intent to deceive the public and defraud a competitor.
First, Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use
on their styrofoam box. Further, Respondents' goods are hamburgers which are also the goods of petitioners.
Second, there is actually no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak
Burger, Inc." This clearly shows respondents' intent to deceive the public.
4 Societes De Produits Nestle vs. Court of Appeals

356 SCRA 207
February 8, 2012
FACTS:
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology Transfers an application
for the registration of its trademark Flavor Master an instant coffee. Nestle opposed the application as it
alleged that Flavor Master is confusingly similar to Nestle coffee products like Master Blend and Master Roast.
Nestle alleged that in promoting their products, the word Master has been used so frequently so much so that
when one hears the word Master it connotes to a Nestle product. CFC Corporation on the other hand alleged that
the word Master is a generic and a descriptive term, hence not subject to trademark.
The Director of Patents ruled in favor of Nestle. The Court of Appeals, using the Holistic Test, reversed the said
decision.
ISSUE:
Whether or not the Court of Appeals is correct.
HELD:
No. The proper test that should have been used is the Dominancy Test. The application of the totality or holistic
test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or
dissimilarities, considering that the product is an inexpensive and common household item. The use of the word
Master by Nestle in its products and commercials has made Nestle acquire a connotation that if its a Master
product it is a Nestle product. As such, the use by CFC of the term MASTER in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.
In addition, the word MASTER is neither a generic nor a descriptive term. As such, said term cannot be
invalidated as a trademark and, therefore, may be legally protected.
Generic terms are those which constitute the common descriptive name of an article or substance, and are not
legally protectable. On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood
in its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or ingredients of a
product to one who has never seen it and does not know what it is.

5 Mcdonald's Corporation vs. Macjoy Fastfood Corp.

GR No. 166115
Feb. 2, 2007
Facts:
Respondent filed with the then Bureau of Patents Trademarks and Technology Transfer, now the Intellectual
Property Office (IPO), an application for the registration of the trademark MACJOY & DEVICE for fried chicken,
chicken barbecue burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks under classes 29
and 30 of the International Classification of Goods.
Petitioner opposed said application, claiming that the trademark MACJOY & DEVICE so resembles its corporate
logo, otherwise known as the Golden Arches or M design and its marks McDonalds, McChicken, MacFries,
BigMac, McDo, McSpaghetti, McSnack, and Mc, such that when used on identical or related goods, the
trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same
source or origin. Petitioner also alleged that the respondents use and adoption in bad faith of the MACJOY &
DEVICE mark would falsely tend to suggest a connection or affiliation with petitioners restaurant services and
food products, thus, constituting a fraud upon the general public and further cause the dilution of the
distinctiveness of petitioners registered and internationally recognized MCDONALDSmarks to its prejudice and
irreparable damage.
Issue:
Whether or not there is confusing similarity between the contending marks.
Held:
Yes. Applying the dominancy test, the Supreme Court found that petitioners and respondents marks are
confusingly similar with each other such that an ordinary purchaser can conclude an association or relation
between the marks. Both marks use the M design logo and the prefixes Mc and /or Mac as dominant
features. The first letter M in both marks puts emphasis on the prefixes Mc and/or Mac by the similar way in
which they are depicted. It is the prefix Mc, an abbreviation of Mac, which visually and aurally catches the
attention of the consuming public. The word MCJOY attracts attention the same way as MCDONALDS,
MacFries, McSpaghetti, McDo, Big Mac and the rest of the McDonaldss marks which all use the prefixes
Mc and/or Mac. Most importantly, both trademarks are used in the sale of fastfood products.
6 Emerald Garment Manufacturing vs. CA
GR No. 100098
Dec. 29, 1995
FACTS:
In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the trademark application of Emerald
Garment. Allegedly, the trademark Stylistic Mr. Lee sought to be applied for by Emerald Garment is too
confusingly similar with the brand Lee which has for its variations Lee Riders, Lee Sures, and Lee
Leens. The Director of Patents as well as the Court of Appeals ruled in favor of H.D. Lee Co.

ISSUE:
Whether or not the decision of the Court of Appeals is correct.
HELD:
No. The Supreme Court considered that the trademarks involved as a whole and ruled that Emerald Garmment's
STYLISTIC MR. LEE is not confusingly similar to H.D. Lees LEE trademark. The trademark Stylistic Mr. Lee,
although on its label the word LEE is prominent, the trademark should be considered as a whole and not
piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to
matter especially in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary
household items like catsup, soysauce or soap which are of minimal cost. Maong pants or jeans are not
inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the
sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or
less knowledgeable and familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the ordinary purchaser. Cast in this
particular controversy, the ordinary purchaser is not the completely unwary consumer but is the ordinarily
intelligent buyer considering the type of product involved.
7 Bristol Myers Co. vs. Director of Patents
G.R. No. L-21587
May 19, 1966
FACTS:
A petition for registration in the Principal Register of the Patent Office of the trademark "BIOFERIN" was filed on
October 21, 1957 by United American Pharmaceuticals, Inc. Said Domestic Corporation first used the afore-
stated trademark in the Philippines on August 13, 1957. ." The product falls under Class 6 of the official
classification, that is, "Medicines and Pharmaceutical Preparations". Bristol Myers Co., a corporation of the State
of Delaware, U.S.A., filed an opposition to the application. Said oppositor is the owner in the Philippines of the
trademark "BUFFERIN" issued by the Philippine Patent Office on March 3, 1954. Its trademark is also registered
in the United States issued on November 4, 1952. It was first used in the Philippines on May 13, 1953. The
product covered by "BUFFERIN" also belongs to Class 6, Medicines and Pharmaceutical Preparations.
The oppositors contend that the registration of the applicant's trademark "BIOFERIN would violate its rights and
interests in its registered trademark "BUFFERIN" as well as mislead and confuse the public as to the source and
origin of the goods covered by the respective marks, in view of the allegedly practically the same spelling,
pronunciation and letter-type design of the two trademarks covering goods of the same class.
After submission of memoranda, on June 21, 1963 the Director of Patents rendered a decision granting the
petition for registration and dismissing the opposition, on the ground that, all factors considered the trademarks in
question are not confusingly similar, so that the damage feared by the oppositor will not result. Hence this
petition.

ISSUE:
Whether or not the trademarks "BIOFERIN" and "BUFFERIN" are, as presented to the public in their respective
labels, confusingly similar.
RULING:
NO. In determining whether two trademarks are confusingly similar, the test is not simply to take their words and
compare the spelling and pronunciation of said words. Rather, it is to consider the two marks in their entirety, as
they appear in the respective labels, in relation to the goods to which they are attached. Applying this test to the
trademarks involved in this case, it is at once evident that the Director of Patents did not err in finding no
confusing similarity. For though the words "BIOFERIN" and "BUFFERIN" have the same suffix and similar
sounding prefixes, they appear in their respective labels with strikingly different backgrounds and surroundings,
as to color , size and design. . Furthermore, the product of the applicant is expressly stated as dispensable only
upon doctor's prescription, while that of oppositor does not require the same. The chances of being confused into
purchasing one for the other are therefore all the more rendered negligible.
8 Victorio Diaz vs. Levi Strauss Philippines
G.R. No. 180677
February 18, 2013
FACTS:
Defendant filed a criminal case of infringement against Diaz, alleging that Diaz was selling counterfeit LEVIS 501
jeans in his tailoring shops in Almanza and Talon, Las Pias City. Levis Philippines hired a private investigation
group to verify the information. Surveillance and the purchase of jeans from the tailoring shops of Diaz
established that the jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVIS 501.
The search warrants were issued in due course. Armed with the search warrants, NBI agents searched the
tailoring shops of Diaz and seized several fake LEVIS 501 jeans from them. Levis Philippines claimed that it did
not authorize the making and selling of the seized jeans; that each of the jeans were mere imitations of genuine
LEVIS 501 jeans by each of them bearing the registered trademarks, like the arcuate design, the tab, and the
leather patch; and that the seized jeans could be mistaken for original LEVIS 501 jeans due to the placement of
the arcuate, tab, and two-horse leather patch.
On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal liability. Diaz stated
that he did not manufacture Levis jeans, and that he used the label "LS Jeans Tailoring" in the jeans that he
made and sold; that the label "LS Jeans Tailoring" was registered with the Intellectual Property Office; that his
shops received clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or designs
were done in accordance with instructions of the customers; that since the time his shops began operating in
1992, he had received no notice or warning regarding his operations; that the jeans he produced were easily
recognizable because the label "LS Jeans Tailoring," and the names of the customers were placed inside the
pockets, and each of the jeans had an "LSJT" red tab; that "LS" stood for "Latest Style;" and that the leather
patch on his jeans had two buffaloes, not two horses.
ISSUE:
Whether or not Victorio Diaz is guilty of infringement of trademark.
RULING:

NO. The likelihood of confusion is the gravamen of the offense of trademark infringement. There are two tests to
determine likelihood of confusion, namely: the dominancy test, and the holistic test. The holistic test is applicable
here considering that the herein criminal cases also involved trademark infringement in relation to jeans products.
Accordingly, the jeans trademarks of Levis Philippines and Diaz must be considered as a whole in determining
the likelihood of confusion between them. The maong pants or jeans made and sold by Levis Philippines, which
included LEVIS 501, were very popular in the Philippines. The consuming public knew that the original LEVIS
501 jeans were under a foreign brand and quite expensive. Such jeans could be purchased only in malls or
boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diazs as well as not
acquired on a "made-to-order" basis. Under the circumstances, the consuming public could easily discern if the
jeans were original or fake LEVIS 501, or were manufactured by other brands of jeans. Confusion and deception
were remote.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your
ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong pants or jeans are not
inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask
the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more
or less knowledgeable and familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the "ordinary purchaser."
Cast in this particular controversy, the ordinary purchaser is not the "completely unwary consumer" but is the
"ordinarily intelligent buyer" considering the type of product involved. There were other remarkable differences
between the two trademarks that the consuming public would easily perceive. Diaz aptly noted such differences,
as follows:
1. Two horse design against his buffalo design

2. Red Tab indicates the word "LEVIS" while that of the accused indicates the letters "LSJT" which
means LS JEANS TAILORING.
Moreover, based on the certificate issued by the Intellectual Property Office, "LS JEANS TAILORING" was a
registered trademark of Diaz. He had registered his trademark prior to the filing of the present cases.21 The
Intellectual Property Office would certainly not have allowed the registration had Diazs trademark been
confusingly similar with the registered trademark for LEVIS 501 jeans.
9 In-n-out Burgers vs. Sehwani

GR No. 179127
Dec. 24, 2008
Facts:
Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of California. It is a
signatory to the Convention of Paris on Protection of Industrial Property and the TRIPS Agreement. It is engaged
mainly in the restaurant business, but it has never engaged in business in the Philippines.

Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the Philippines.
Sometime in 1991, Sehwani filed with the BPTTT an application for the registration of the mark IN N OUT (the
inside of the letter O formed like a star). Its application was approved and a certificate of registration was issued
in its name on 1993. In 2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing Agreement,
wherein the former entitled the latter to use its registered mark, IN N OUT.
Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the Bureau of Trademarks
for the IN-N-OUT and IN-N-OUT Burger & Arrow Design. In 2000, In-N-Out Burger found out that Sehwani,
Incorporated had already obtained Trademark Registration for the mark IN N OUT (the inside of the letter O
formed like a star). Also in 2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to cease and
desist from claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark registration.
Sehwani Inc. did not accede to In-N-Out Burgers demand but it expressed its willingness to surrender its
registration for a consideration.
In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint against the Sehwani,
Inc. and Benita Frites, Inc. for unfair competition and cancellation of trademark registration.
Issue:
Whether or not there was unfair competition.
Held:
Yes. The evidence on record shows that Sehwani Inc. and Benita Frites were not using their registered
trademark but that of In-n-Out Burger. Sehwani and Benita Frites are also giving their products the general
appearance that would likely influence the purchasers to believe that their products are that of In-N-Out Burger.
The intention to deceive may be inferred from the similarity of the goods as packed and offered for sale, and,
thus, an action will lie to restrain unfair competition. The respondents frauduulent intention to deceive purchasers
is also apparent in their use of the In-N-Out Burger in business signages.
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.
10 Shangrila Hotel Management vs. Developers Group of Companies

GR No. 159938
March 31,2006
Facts:
R claims ownership SHANGRI-LA mark and S logo in the Philippines on the strength of its prior use thereof
within the country. It filed an application pursuant to Sections 2 and 4 of RA No. 166 as amended and was issued

corresponding certificate of registration and since then, started using the mark and logo in its restaurant
business. On the other hand,
the Kuok family owns and operates a chain of hotels with interest in hotels and hotel-related
transactions and has adopted the name Shangri-La as part of the corporate names of all companies organized
under its aegis. To centralize the operations of all Shangri-la hotels and the ownership of the Shangri-La mark
and S logo, the Kuok Group had incorporated several companies that form part of the SLIHM and has
caused the registration of, and in fact registered, the Shangri-La mark and S logo in the patent offices in
different countries around the world.
P filed an Inter Partes Case, praying for the cancellation of the registration of the mark and logo issued to R on
the ground that the same were illegally and fraudulently obtained and appropriated.
R filed a complaint for TMI & Damages alleging that it has, for the last 8 years, been the prior exclusive user in
the Philippines of the mark and logo in question and the registered owner thereof for its restaurant and allied
services.
P pointed the Paris Convention for the Protection of Industrial Property as affording security and protection to
SLIHMs exclusive right to said mark and logo claiming having used, since late 1975, the internationally known
and specially-designed Shangri-La mark and S logo for all the hotels in their hotel chain.
The trial court came out with its decision rendering judgment in favor for R. P appealed to the CA which affirmed
that of the lower courts decision and further denied their MR.
Issue:
Whether or not prior use of a mark is a requirement for registration.
Held:
Yes. Under the provisions of the former trademark law, R.A. No. 166, as amended, which was in effect up to
December 31, 1997, hence, the law in force at the time of respondents application for registration of trademark,
the root of ownership of a trademark is actual use in commerce. Section 2 of said law requires that before a
trademark can be registered, it must have been actually used in commerce and service for not less than two
months in the Philippines prior to the filing of an application for its registration.
11 Prosource International Inc vs. Horphag Research Management
G.R. No. 180073
November 25,2009
FACTS:
Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later discovered that
petitioner was also distributing a similar food supplement using the mark PCO-GENOLS since 1996. This
prompted respondent to demand that petitioner cease and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction against

petitioner, in using the name PCO-GENOLS for being confusingly similar. Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same
suffix "GENOL" which appears to be merely descriptive and thus open for trademark registration by combining it
with other words and concluded that the marks, when read, sound similar, and thus confusingly similar especially
since they both refer to food supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the
Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.
ISSUE: Whether the names are confusingly similar.
RULING:
Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove such.
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might
cause confusion and deception, thus constituting infringement. If the competing trademark contains the main,
essential and dominant features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an
effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in
the mind of the public or to deceive purchasers. Courts will consider more the aural and visual impressions
created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets, and market
segments.
The Holistic Test entails a consideration of the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. Not only on the predominant words should be the focus
but also on the other features appearing on both labels in order that the observer may draw his conclusion
whether one is confusingly similar to the other.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on evidence, appears to be
merely descriptive and furnish no indication of the origin of the article and hence, open for trademark registration
by the plaintiff through combination with another word or phrase. When the two words are pronounced, the sound
effects are confusingly similar not to mention that they are both described by their manufacturers as a food
supplement and thus, identified as such by their public consumers. And although there were dissimilarities in the
trademark due to the type of letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products name in sounds as they were
pronounced, clearly indicates that purchasers could be misled into believing that they are the same and/or
originates from a common source and manufacturer.
12 Coffee Partners Inc. vs. San Francisco Coffee

GR No. 169504
March 3, 2010

Facts:
The petitioner holds a business in maintaining coffee shops in the Philippines. It is registered with the Securities
and Exchange Commission in January 2001. In its franchise agreement with Coffee Partners Ltd, it carries the
trademark San Francisco Coffee. Respondent is engaged in the wholesale and retail sale of coffee that was
registered in SEC in May 1995 under a registered business name of San Francisco Coffee &Roastery, Inc. It
entered into a joint venture with Boyd Coffee USA to study coffee carts in malls.
When respondent learned that petitioner will open a coffee shop in Libis, Q.C. they sent a letter to the petitioner
demanding them to stop using the name San Francisco Coffee as it causes confusion to the minds of the
public. A complaint was also filed by respondents before the Bureau of Legal Affairs of the Intellectual Property
Office for infringement and unfair competition with claims for damages. Petitioners contend that there are distinct
differences in the appearance of their trademark and that respondent abandoned the use of their trademark when
it joined venture with Boyd Coffee USA. The Bureau of Legal Affairs of the IPO held that petitioners trademark
infringed on the respondents trade name as it registered its business name first with the DTI in 1995 while
petitioner only registered its trademark in 2001.
Furthermore, it ruled that the respondent did not abandon the use of its trade name upon its joint venture with
Boyd Coffee USA since in order for abandonment to exist it must be permanent, intentional and voluntary. It also
held that petitioners use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of
the exact similarity in sound, spelling, pronunciation, and commercial impression of the words "SAN
FRANCISCO" which is the dominant portion of respondents trade name and petitioners trademark. Upon appeal
before the office of the Director General of the IPO, the decision of its legal affairs was reversed declaring there
was no infringement. The Court of Appeals however set aside its decision and reinstated the IPO legal affairs
decision. Petitioner contends that the respondents trade name is not registered therefore a suit for infringement
is not available.
Issue:
Whether or not the petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of
respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not
registered with the Intellectual Property Office (IPO).
Ruling:
Registration of a trademark before the IPO is no longer a requirement to file an action for infringement as
provided in Section 165.2 of RA 8293. All that is required is that the trade name is previously used in trade or
commerce in the Philippines. There is no showing that respondent abandoned the use of its trade name as it
continues to embark to conduct research on retailing coffee, import and sell coffee machines as among the
services for which the use of the business name has been registered.
The court also laid down two tests to determine similarity and likelihood of confusion. The dominancy test focuses
on similarity of the prevalent features of the trademarks that could cause deception and confusion that constitutes
infringement. 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. 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.15 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. Applying either the dominancy test or the holistic test, petitioners
"SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE &
ROASTERY, INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant
features of respondents trade name. And because both are involved in coffee business there is always the high
chance that the public will get confused of the source of the coffee sold by the petitioner. 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.
13 Pilipinas Shell Petroleum vs. Romars International

G.R. No. 189669
February 16, 2015
FACTS:
The petitioners selling, offering for sale, or distributing liquefied petroleum gas (LPG) by illegally refilling the steel
cylinders manufactured by and bearing the duly registered trademark and device of respondent Petron. They
sought the assistance of NBI. After investigation, the NBI, in behalf of Petron and Shell, filed with the RTC- Naga
City, two separate Applications for Search Warrant for Violation of Section 155.1, 6 in relation to Section 170 7 of
R.A. No. 8293 against respondent and/or its occupants. On October 23, 2002, the RTC- Naga City issued an
Order granting said Applications and Search Warrant Nos. 2002-27 and 2002-28 were issued.
Respondent filed a Motion to Quash Search Warrants claiming that a) there was no probable cause; b) there had
been a lapse of four weeks from the date of the test-buy to the date of the search and seizure operations; c) most
of the cylinders seized were not owned by respondent but by a third person; and d) Edrich Enterprises is an
authorized outlet of Gasul and Marsflame. The RTC denied the motion.
Repondent's new counsel filed an Appearance with Motion for Reconsideration and raised for the first time, the
issue of the impropriety of filing the Application for Search Warrant at the RTC-Naga City when the alleged crime
was committed within the territorial jurisdiction of the RTC-Iriga City. The petitioners opposed claiming that the
ground is subject to the omnibus motion rule. The MR was granted by the RTC which was affirmed by the CA
upon appeal.
ISSUE:
Whether or not venue is jurisdictional in applications for search warrants?
HELD:
Yes. Section 2, Rule 126 of the Revised Rules of Criminal Procedure provides thus:
SEC. 2. Court where applications for search warrant shall be filed. - An application for search warrant shall be
filed with the following: of
(a) Any court within whose territorial jurisdiction a crime was committed.
(b) For compelling reasons stated in the application, any court within the judicial region where the crime was

committed if the place of the commission of the crime is known, or any court within the judicial region where the
warrant shall be enforced.
However, if the criminal action has already been filed, the application shall only be made in the court where the
criminal action is pending. The above provision is clear enough. Under paragraph (b) thereof, the application for
search warrant in this case should have stated compelling reasons why the same was being filed with the RTC-
Naga instead of the RTC-Iriga City, considering that it is the latter court that has territorial jurisdiction over the
place where the alleged crime was committed and also the place where the search warrant was enforced. The
wordings of the provision is of a mandatory nature, requiring a statement of compelling reasons if the application
is filed in a court which does not have territorial jurisdiction over the place of commission of the crime. Since
Section 2, Article III of the 1987 Constitution guarantees the right of persons to be free from unreasonable
searches and seizures, and search warrants constitute a limitation on this right, then Section 2, Rule 126 of the
Revised Rules of Criminal Procedure should be construed strictly against state authorities who would be
enforcing the search warrants. On this point, then, petitioner's application for a search warrant was indeed
insufficient for failing to comply with the requirement to state therein the compelling reasons why they had to file
the application in a court that did not have territorial jurisdiction over the place where the alleged crime was
committed.
14 Willaware Products vs. Jesichris
G.R. No. 195549
September 3, 2014
FACTS:
Respondent filed a complaint for damages for unfair competition with prayer for permanent injunction to enjoin
petitioner from manufacturing and distributing plastic-made automotive parts similar to those of respondent's.
Respondent alleged that it discovered that petitioner had been manufacturing and distributing the same
automotive parts with exactly similar design, same material and colors but was selling these products at a lower
price as [respondents] plastic-made automotive parts and to the same customers. Petitioner denied the
allegations of respondent. It claimed that there can be no unfair competition as the plastic-made automotive parts
are mere reproductions of original parts and their construction and composition merely conforms to the
specifications of the original parts of motor vehicles they intend to replace. The RTC ruled in favor of respondent
which was affirmed by the CA upon appeal.
ISSUE:
Whether or not petitioner commited acts amounting to unfair competition under Article 28 of the Civil Code.
HELD:
Yes. The instant case falls under Article 28 of the Civil Code on human relations, and not unfair competition
under Republic Act No. 8293, 7 as the present suit is a damage suit and the products are not covered by patent
registration. A fortiori, the existence of patent registration is immaterial in the present case.
The concept of "unfair competition"under Article 28 is very much broader than that covered by intellectual
property laws. Under the present article, in order to qualify the competition as "unfair," it must have two
characteristics: (1) it must involve an injury to a competitor or trade rival, and (2) it must involve acts which are
characterized as "contrary to good conscience," or "shocking to judicial sensibilities," or otherwise unlawful; in the
language of our law, these include force, intimidation, deceit, machination or any other unjust, oppressive or high-

handed method. The public injury or interest is a minor factor; the essence of the matter appears to be a private
wrong perpetrated by unconscionable means.
Here, both characteristics are present.
First, both parties are competitors or trade rivals, both being engaged in the manufacture of plastic-made
automotive parts. Second, the acts of the petitioner were clearly "contrary to good conscience" as petitioner
admitted having employed respondents former employees, deliberately copied respondents products and even
went to the extent of selling these products to respondents customers.
It is evident that petitioner is engaged in unfair competition as shown by his act of suddenly shifting his business
from manufacturing kitchenware to plastic-made automotive parts; his luring the employees of the respondent to
transfer to his employ and trying to discover the trade secrets of the respondent.
15 Manuel Espiritu et. Al. vs Petron Corporation and Carmen Doloiras
G.R. No. 170891
Nov 24, 2009
Facts:
Respondent Petron Corporation sold and distributed LPG in cylinder tanks that carried its trademark Gasul.
Respondent Carmen Doloiras owned and operated Kristina Patricia Enterprises (KPE), the exclusive distributor
of Gasul LPGs in the whole of Sorsogon. Bicol Gas was also in the business of selling and distributing LPGs in
Sorsogon but theirs carried the trademark Bicol Savers Gas.
On August 4, 2001 KPEs Jose saw a particular Bicol Gas truck on the Maharlika Highway. Jose followed the
truck and when it stopped at a store, he asked the driver and the Bicol Gas sales representative about the Gasul
tank in their truck. They said it was empty but, when Jose turned open its valve, he noted that it was not. They
then admitted that the Gasul and Shellane tanks on their truck belonged to a customer who had them filled up by
Bicol Gas.
KPE filed a complaint for violations of Sections 155 (infringement of trade marks) and 169.1 (unfair competition)
of the Intellectual Property Code.
Issue:
Whether or not Bicol Gas should be held liable for infringement of trademarks and unfair competition.
Ruling:
No. 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 to deceive its customers and cheat Petron. Essentially,
what the law punishes is 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. 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 truck full 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.
16 Levi Strauss vs. Tony Lim
G.R. No. 162311
Dec 4, 2008

Facts:
Petitioner Levi Strauss (Phils.), Inc. is a duly-registered domestic corporation. It is a wholly-owned subsidiary of
Levi Strauss & Co. (LS & Co.) a Delaware, USA company. In 1972, LS & Co. granted petitioner a non-exclusive
license to use its registered trademarks and trade names for the manufacture and sale of various garment
products in the Philippines. Presently, it is the only company that has authority to manufacture, distribute, and sell
products bearing the LEVIS trademarks or to use such trademarks in the Philippines.
Petitioner lodged a complaint alleging that a certain establishment in Metro Manila was manufacturing garments
using colorable imitations of the LEVIS trademarks. Thus, surveillance was conducted on the premises of
respondent Tony Lim, doing business under the name Vogue Traders Clothing Company. The investigation
revealed that respondent was engaged in the manufacture, sale, and distribution of products similar to those of
petitioner and under the brand name LIVES. Respondent alleged his products bearing the LIVES brand name are
not fake LEVIS garments; LIVES is a registered trademark and that his goods are not clothed with an
appearance which is likely to deceive the ordinary purchaser exercising ordinary care. Petitioner maintained that
there is likelihood of confusion between the competing products.
Issue:
Whether or not respondent is guilty of unfair competition.
Ruling:
Generally, unfair competition consists in employing deception or any other means contrary to good faith by which
any person shall pass off the goods manufactured by him or in which he deals, or his business, or services for
those of the one having established goodwill, or committing any acts calculated to produce such result.
All the elements of unfair competition under Article 189 (1) of RPC must be proven. In finding that probable
cause for unfair competition does not exist, the investigating prosecutor and Secretaries Guingona and Cuevas
arrived at the same conclusion that there is insufficient evidence to prove all the elements of the crime that would
allow them to secure a conviction.
17 Chester Uyco vs. Vicente Lo
GR No. 202423
Jan. 28, 2013
FACTS:
The disputed marks in this case are the "HIPOLITO & SEA HORSE & TRIANGULAR DEVICE," "FAMA," and
other related marks, service marks and trade names of Casa Hipolito S.A. Portugal appearing in kerosene
burners. Respondent Vicente Lo and Philippine Burners Manufacturing Corporation (PBMC) filed a complaint
against the officers of Wintrade Industrial SalesCorporation (Wintrade), including petitioners Chester Uyco,
Winston Uychiyong and Cherry Uyco-Ong, and of National Hardware, including Mario Sy Chua, for violation of
Section 169.1, in relation to Section 170, of RA 8293.
Lo claimed in his complaint that Gasirel-Industria de Comercio e Componentes para Gass, Lda. (Gasirel), the
owner of the disputed marks, executed a deed of assignment transferring these marks in his favor, to be used in
all countries except for those in Europe and America. In a test buy, Lo purchased from National Hardware
kerosene burners with the subject marks and the designations "Made in Portugal" and "Original Portugal" in the
wrappers. These products were manufactured by Wintrade. Lo claimed that as the assignee for the trademarks,
he had not authorized Wintrade to use these marks, nor had Casa Hipolito S.A. Portugal. While a prior authority

was given to Wintrades predecessor-in-interest, Wonder Project & Development Corporation (Wonder), Casa
Hipolito S.A. Portugal had already revoked this authority through a letter of cancellation dated May 31, 1993.
In their Answer, the petitioners stated that they are the officers of Wintrade which owns the subject trademarks
and their variants. To prove this assertion, they submitted as evidence the certificates of registration with the
Intellectual Property Office. They alleged that Gasirel, not Lo, was the real party-in-interest. They allegedly
derived their authority to use the marks from Casa Hipolito S.A. Portugal through Wonder, their predecessor-in-
interest.they also argued that the marks "Made in Portugal" and "Original Portugal" are merely descriptive and
refer to the source of the design and the history of manufacture.
After the preliminary investigation, the Chief State Prosecutor found probable cause to indict the petitioners for
violation of Section 169.1, in relation with Section 170, of RA 8293. This law punishes any person who uses in
commerce any false designation of origin which is likely to cause confusion or mistake as to the origin of the
product.
On appeal, the DOJ issued a resolution affirming the finding of probable case. It took note of the petitioners
admission that they used the words "Made in Portugal" when in fact, these products were made in the
Philippines. Had they intended to refer to the source of the design or the history of the manufacture, they should
have explicitly said so in their packaging. The CA found no grave abuse of discretion on the part of the DOJ and
affirmed the DOJs ruling.
Issue:
Whether or not the petitioners violated Section 169.1 of RA 8293.
RULING:
Yes the Court finds no reversible error on the part of the CA and the DOJ to merit reconsideration. Wintrades
decision to procure these burners from sources other than Portugal is certainly its management prerogative. The
presence of the words "made in Portugal" and "original Portugal" on the wrappings of the burners and on the
burners themselves which are manufactured by Wintrade is an allusion to the fact that the origin of the design of
said burners can be traced back to Casa Hipolito SA of Portugal, and that the history of the manufacture of said
burners are rooted in Portugal. These words were not intended to deceive or cause mistake and confusion in the
minds of the buying public.
Chua, the owner of National Hardware the place where the test buy was conducted admits that Wintrade
has been furnishing it with kerosene burners with the markings "Made in Portugal" for the past 20 years. Thus,
the evidence shows that petitioners, who are officers of Wintrade, placed the words "Made in Portugal" and
"Original Portugal" with the disputed marks knowing fully well because of their previous dealings with the
Portuguese company that these were the marks used in the products of Casa Hipolito S.A. Portugal. More
importantly, the products that Wintrade sold were admittedly produced in the Philippines, with no authority from
Casa Hipolito S.A. Portugal. The law on trademarks and trade names precisely precludes a person from profiting
from the business reputation built by another and from deceiving the public as to the origins of products.
18 Samson vs. Cabanos
GR No. 161693
June 28, 2005
FACTS:

Petitioner was charged with the crime of unfair competition before the RTC of Antipolo City in Information that
states that Manolo P. Samson violated Sec. 168.3 (a) in relation to Secs. 123.1 (e), 131.3 and 170 of RA 8293
committed on or about the first week of November 1999 and sometime prior or subsequent thereto, in Cainta,
Rizal, Philippines, and within the jurisdiction of this Honorable Court, above-named accused, owner/proprietor of
ITTI Shoes Corporation located at F.P. Felix Avenue, Cainta, Rizal, did then and there willfully, unlawfully and
feloniously distribute, sell and/or offer for sale CATERPILLAR products such as footwear, garments, clothing,
bags, accessories and paraphernalia which are closely identical to and/or colorable imitations of the authentic
Caterpillar products and likewise using trademarks, symbols and/or designs as would cause confusion, mistake
or deception on the part of the buying public to the damage and prejudice of CATERPILLAR, INC.
Petitioner moved to quash the information on the ground that the court has no jurisdiction over the offense
charged in the Information. He argued that Section 170 of Republic Act (R.A.) No. 8293 provides that the penalty
for violation of Section 168 thereof is imprisonment from two (2) to five (5) years and a fine ranging from fifty
thousand pesos (P50,000.00) to two hundred thousand pesos (P200,000.00), and R.A. No. 7691 amending
Batas Pambansa (B.P.) Blg. 129 vested the Metropolitan Trial Courts (MTC) exclusive original jurisdiction over all
offenses punishable with imprisonment not exceeding six (6) years irrespective of the amount of the fine.
Presiding Judge Felix S. Caballes denied the motion for lack of merit in his order dated January 22, 2003.
Petitioner filed a motion for reconsideration which was likewise denied by Acting Presiding Judge Victoriano B.
Cabanos. Hence petitioner filed the instant petition for certiorari. He contends that as petitioner is charged with an
offense penalized by imprisonment not exceeding six (6) years, the jurisdiction to try the case lies with the MTC
and not the RTC. In addition, petitioner submits that the old Trademark Law, R.A. No. 166, conferring jurisdiction
on the Courts of First Instance (now RTC) over complaints for unfair competition, has been repealed by Section
239 of R.A. No. 8293.
Issue:
Whether or not the respondent Regional Trial Court has jurisdiction over the offenses charged in the subject
information.
Held:
Yes. We find no merit in the claim of petitioner that R.A. No. 166 was expressly repealed by R.A. No. 8293. The
repealing clause of R.A. No. 8293, reads -
SEC. 239. Repeals. - 239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No.
165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code;
Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed. (Emphasis
added)
The use of the phrases parts of Acts and inconsistent herewith only means that the repeal pertains only to
provisions which are repugnant or not susceptible of harmonization with R.A. No. 8293. Section 27 of R.A. No.
166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to
vest jurisdiction over violations of intellectual property rights with the Metropolitan Trial Courts, it would have
expressly stated so under Section 163 thereof. Moreover, the settled rule in statutory construction is that in case
of conflict between a general law and a special law, the latter must prevail. Jurisdiction conferred by a special law
to Regional Trial Courts must prevail over that granted by a general law to Municipal Trial Courts.
In the case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations of
intellectual property rights to the Regional Trial Court. They should therefore prevail over R.A. No. 7691, which is
a general law. Hence, jurisdiction over the instant criminal case for unfair competition is properly lodged with the

Regional Trial Court even if the penalty therefor is imprisonment of less than 6 years, or from 2 to 5 years and a
fine ranging from P50,000.00 to P200,000.00.
19 Pearl and Dean vs Shoemart Inc and North EDSA Mktg
G.R. No. 148222,
August 15, 2003
Facts: Pearl & Dean (P&D) is engaged in the manufacture of advertising display units referred to as light boxes.
These units utilize specially printed posters sandwiched between plastic sheets and illuminated with backlights. It
was able to secure registration over these illuminated display units and marketed under the trademark Poster
Ads.
In 1985, P&D negotiated with defendant Shoemart, Inc. (SMI) for the lease and installation of the light boxes in
SM North Edsa. Thereafter, respondent informed petitioner that they are rescinding the contract for SM
Makati due to non-performance.
Two years later, SMI engaged the services of EYD Rainbow Advertising to make the light boxes. Petitioner then
received reports that exact copy of its light boxes was installed by SMI. It further discovered that North Edsa
Marketing Inc. (NEMI), sister company of SMI, was set up primarily to sell advertising space in lighted display
units located in SMIs different branches.
Petitioner demanded respondent to cease from using the light boxes and the discontinue the use of the
trademark Poster Ads. Failing to meet its demand, petitioner filed a case for infringement of trademark and
copyright, unfair competition and damages. SMI denied the charges against it and noted that the
registration of mark poster ads is limited to stationeries like letterhead and envelope. It further stresses that it
independently develop its own poster panels using techniques and available technology without notice to P and
D copyright. It further contends that poster ads is a generic name that cannot be appropriated for a trademark
and that P and Ds advertising display units contained no copyright notice in violation of Section 27 of P.D. 49.
The RTC decided in favor of P and D but on appeal the Court of Appeals reversed its decision. In its judgment its
stand is that the copyright of the plaintiff is limited to its technical drawings only and not the light boxes itself.
When a drawing is technical, the copyright over the drawing does not extend to actual object. Thus the CA is
constrained to adopt the view of the respondents that the poster ads is a generic poster term ads and in the
absence of convincing proof that such wording acquired secondary meaning, the P and Ds exclusive right to use
poster ads is limited to what is written on its certificate of registration which is stationaries.
ISSUE:
1.) Whether or not technical drawings of an advertising display unit are granted copyright protection is the light
box depicted in such drawings ipso facto also protected by such copyright.
2.) Whether or not protection can be given for the light boxes under the patent law.
HELD:

1.) No. Copyright is purely statutory. As such, 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 the terms and conditions specified in
the statute. Accordingly, it can cover only the works falling within the statutory enumeration
or description. Petitioner secured copyright under classification class O work. Thus, copyright protection
extended only to the technical drawings and not to the light boxes itself because the latter was not
at all in the category of prints, pictorial illustrations, advertising copies, labels, tags and box wraps. 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. It must be noted that 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.
2.) No. Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which could
have protected its invention. N o p a t e n t , n o protection. The ultimate goal of a patent system is to bring new
designs and technologies into the public through disclosure. Ideas, once, disclosed to the public without
protection of a valid patent, are subject to appropriation without significant restraint. 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 there for the
free use of the public. It is only after an exhaustive examination by the patent office that patent is issued.
Therefore, not having gone through the arduous examination for patents, petitioner cannot exclude other s from
the manufacture, sale or commercial use of the light boxes on the sole basis of its copyright certificate over
the technical drawings.
20 Rosario Maguan vs. CA and Susana Luchan

GR No. L-45101
November 28, 1986
FACTS:
Petitioner is a patent holder of powder puff. Petitioner informed private respondent that the powder puffs the latter
is manufacturing and selling to various enterprises particularly those in the cosmetics industry, resemble Identical
or substantially Identical powder puffs of which the former is a patent holder; petitioner explained such production
and sale constitute infringement of said patents and therefore its immediate discontinuance is demanded,
otherwise it will be compelled to take judicial action.
Private respondent replied stating that her products are different and countered that petitioner's patents are void
because the utility models applied for were not new and patentable, saying that powder puffs of the kind applied
for were then already existing and publicly being sold in the market; both in the Philippines and abroad; and
applicants claim were but a complicated and impractical version of an old, simple one which has been well
known to the cosmetics industry since years previous to her filing of applications, and which belonged to no one
except to the general public.
Private respondent, filed with the Philippine Patent Office petitions for cancellation of patents registered in the
name of Rosario Tan. Petitioner then filed a complaint for damages with injunction and preliminary injunction

against private respondent with CFI of Rizal, Pasig Branch.
Trial court granted the preliminary injunction prayed for by petitioner and issued a writ enjoining the herein private
respondent. Private respondent filed a petition for certiorari with the respondent court. Finding no merit in the
herein petition, respondent court dismissed the case and the preliminary injunction previously issued was set
aside.
ISSUE:
Whether or not the evidence introduced by private respondent herein is sufficient to overcome prima
facie presumption correctness and validity of a registered patent on the ground of lack of novelty.
HELD:
Yes. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by
competent evidence this legal presumption.
After a careful review of the evidence, respondent Court of Appeals was satisfied that there is a prima
facie showing of a fair question of invalidity of petitioner's patents on the ground of lack of novelty.
It has been repeatedly held that an invention must possess the essential elements of novelty , originality and
precedence and for the patentee to be entitled to protection, the invention must be new to the world. Accordingly,
a single instance of public use of the invention by a patentee for more than one year only under Sec. 9 of the
Patent Law before the date of his application for his patent, will be fatal to, the validity of the patent when issued.
21 Domiciano Aguas vs. CA and Conrado de Leon
G.R. No. L-32160
January 30, 1982
FACTS:
Respondent, De Leon filed a complaint for infringement of Patent in CFI Rizal against petitioner, Aguas.
Respondent asserted that he was the original first and sole inventor of certain new and useful improvements in
the process of making mosaic pre-cast tiles, that he filed and prosecuted an application for Philippine patent
which was granted. He further alleged that petitioner infringed patent by making and furnishing the engravings,
castings and devices designed and intended of tiles embodying plaintiff's patented invention; and despite request
to desist the infringement still continued causing irreparable damage to de Leon. Aguas denied the allegations
and alleged that de Leon is neither the original first nor sole inventor of the improvements in the process of
making mosaic pre-cast tiles, the same having been used by several tile-making factories in the Philippines and
abroad years before the alleged invention by de Leon; and that de Leopn unlawfully acquired the patent. The
trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon.
ISSUE:
Whether or not the alleged invention or discovery of respondent is patentable.
HELD:
YES. De Leon does not claim to be the discoverer or inventor of the old process of tile-making. He only claims to
have introduced an improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine

Patent Office to the private respondent Conrado G. De Leon, to protect his rights as the inventor of an alleged
new and useful improvement in the process of making pre-cast tiles. Indeed, section 7, Republic Act No. 165, as
amended provides: Any invention of a new and useful machine, manufactured product or substance, process,
or an improvement of the foregoing, shall be patentable. The respondent's improvement is indeed inventive and
goes beyond the exercise of mechanical skill. He has introduced a new kind of tile for a new purpose. He has
improved the old method of making tiles and pre-cast articles which were not satisfactory because of an
intolerable number of breakages, especially if deep engravings are made on the tile.
22 Smithkline Beckman vs. CA and Tryco Pharma

G. R. No. 126627
August 14, 2003
FACTS:
Petitioner, a corporation existing by virtue of the law of the state of Pennsylvania, USA and licensed to do
business in the Philippines, filed before Philippine Patent Office on October 8, 1976 an application for patent over
an invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate. Patent application was granted for term of 17 years. Respondent is a
domestic corporation that manufactures veterinary products. Petitioner sued respondent for alleged infringement
of patent and unfair competition. Petitioner claimed that its patent covers substance(Albendazole) used in
the product manufactured by respondent. Private respondent averred that Patent does not cover the substance
for nowhere in its does that word appear; and that such substance is unpatentable. Trial court rendered decision
in favor of respondent and declared patent to be null and void. On appeal, CA ruled that there's was no
infringement however, it sustained the validity of patent.
ISSUE:
Whether or not respondent committed patent infringement?
HELD:
NO. The claims of Patent made no mention of the compound Albendazole. When the language of its claims is
clear and distinct, the patentee is bound thereby and may not claim anything beyond them. The language of
Patent fails to yield anything at all regarding Albendazole. Under the doctrine of equivalents provides that an
infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept
and, although with some modification and change, performs substantially the same function in substantially the
same way to achieve substantially the same result. However, petitioners evidence fails to convince this Court of
the substantial sameness of petitioners patented compound and Albendazole. While both compounds have the
effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless
Albendazole operates in substantially the same way or by substantially the same means as the patented
compound, even though it performs the same function and achieves the same result. In other words, the
principle or mode of operation must be the same or substantially the same.
23 Pascual Godines vs. CA
GR No. 97343
September 13, 1993
FACTS

The patent involved in this case was issued by the Philippine Patent Office to one Magdalena S. Villaruz on July
15, 1976 covering a utility model for a hand tractor or power tiller. The patented hand tractor was acquired by
respondent SV-Agro Industries Enterprises, Inc. from Magdalena Villaruz by virtue of a Deed of Assignment
executed by the latter in its favor. SV-Agro Industries caused the publication of the patent in Bulletin Today, a
newspaper of general circulation.
In accordance with the patent, respondent manufactured and sold the patented power tillers with the patent
imprinted on them. Subsequently, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to those patented by
respondent were being manufactured and sold by petitioner herein. Consequently, private respondent notified
Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar
power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the RTC a
complaint for infringement of patent and unfair competition. The RTC held Pascual Godines liable for
infringement of patent and unfair competition. The decision was affirmed by the appellate court, hence this
petition. Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he
was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of
his customers who gave their own specifications; hence, he could not be liable for infringement of patent and
unfair competition; and that those made by him were different from those being manufactured and sold by private
respondent.
ISSUE
1. WON petitioner was manufacturing and selling power tillers
2. WON petitioner's product infringe upon the patent of respondent
HELD
1. YES. The fact that petitioner herein manufactured and sold power tillers without patentee's authority has
been established by the courts despite petitioner's claims to the contrary.
2. YES. Tests have been established to determine infringement. These are (a) literal infringement; and (b)
the doctrine of equivalents. In using literal infringement as a test, . . . resort must be had, in the first
instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made
out and that is the end of it." To determine whether the particular item falls within the literal meaning of
the patent claims, the court must juxtapose the claims of the patent and the accused product within the
overall context of the claims and specifications, to determine whether there is exact identity of all material
elements. In operation, the floating power tiller of the defendant operates also in similar manner as the
turtle power tiller of plaintiff. This was admitted by the defendant himself in court that they are operating
on the same principles. Moreover, it is also observed that petitioner also called his power tiller as a
floating power tiller. The patent issued by the Patent Office referred to a "farm implement but more
particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in
place, the operating handle, the harrow housing with its operating handle and the paddy wheel protective
covering." It appears that these claims of the patent and the features of the patented utility model were
copied by petitioner. Thus, according to this doctrine, "(a)n infringement also occurs when a device
appropriates a prior invention by incorporating its innovative concept and, albeit with some modification
and change, performs substantially the same function in substantially the same way to achieve
substantially the same result." The reason for the doctrine of equivalents is that to permit the imitation of

a patented invention which does not copy any literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such imitation would leave room for indeed encourage
the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent
which, though adding nothing, would be enough to take the copied matter outside the claim, and hence
outside the reach of the law.
24 Smithkline and French Laboratories vs. CA
G.R. No. 121267
October 23, 2001
FACTS:
In August 1989, Danlex Research Laboratories petitioned before Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) that it may be granted a compulsory license for the use and manufacture of the pharmaceutical
product Cimetidine. Cimetidine is useful as an antihistamine and in the treatment of ulcers. Cimetidine is
originally patented to Smith Kline and French Laboratories, Ltd. in 1978, and the said patent is still in force at the
time of application by Danlex Research.
The BPTTT granted the application of Danlex Research together with a provision that Danlex Research should
be paying 2.5% of the net wholesale price as royalty payment to Smith Kline. This was affirmed by the Court of
Appeals.
Smith Kline assailed the grant as it argued, among others, that the same is an invalid exercise of police power
because there is no overwhelming public necessity for such grant considering that Smith Kline is able to provide
an adequate supply of it to satisfy the needs of the Philippine market; that a provision in the Philippine Patent
Laws is violative of the Paris Convention to which the Philippines is a signatory.
To explain the second contention, Smith Kline states that the Paris Convention only allows compulsory licensing
if the original licensee (patent holder) has failed to work on the patent; that therefore, the provision in the
Philippine Patent Laws which adds other grounds for the granting of compulsory license i.e. monopoly, is invalid
and contrary to the Paris Convention.
ISSUE: WON Smith Klines arguments should be granted merit
HELD: No. The granting is a valid exercise of police power. Cimetidine is medicinal in nature, and therefore
necessary for the promotion of public health and safety.
On the second contention, Section A(2) of Article 5 [of the Paris Convention] unequivocally and explicitly respects
the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to
prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. An example
provided of possible abuses is failure to work; however, as such, is merely supplied by way of an example, it is
plain that the treaty does not preclude the inclusion of other forms of categories of abuses. The legislative intent
in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the
quantity of the patented product, but also to prevent the growth of monopolies. Certainly, the growth of
monopolies was among the abuses which Section A, Article 5 of the Convention foresaw, and which our
Congress likewise wished to prevent in enacting.
25 Creser Precision Systems vs. CA

GR. 118708
Feb.2, 1998
FACTS:
Private respondent is a domestic corporation engaged in the manufacture, production, distribution and sale of
military armaments, munitions, airmunitions and other similar materials.[2]
On January 23, 1990, private respondent was granted by the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT), a Letters Patent No. UM-6938[3]covering an aerial fuze which was published in the September-
October 1990, Vol. III, No. 5 issue of the Bureau of Patents Official Gazette.[4]
Sometime in November 1993, private respondent, through its president, Mr. Gregory Floro, Jr., discovered that
petitioner submitted samples of its patentedaerial fuze to the Armed Forces of the Philippines (AFP) for testing.
He learned that petitioner was claiming the aforesaid aerial fuze as its own and planning to bid and manufacture
the same commercially without license or authority from private respondent.
Private respondent filed a complaint and in his memorandum he alleged, among others that, petitioner has no
cause of action to file a complaint of infringement against it since it has no patent for the aerial fuze which it
claims to have invented.
It is petitioners contention that it can file, under Section 42 of the Patent Law (R.A. 165), an action for
infringement not as a patentee but as an entity in possession of a right, title or interest in and to the patented
invention.
ISSUE:
Whether or not petitioner can file an action for infringement despite not having a patent license.
HELD:
No. SECTION. 42. Civil action for infringement. Any patentee, or anyone possessing any right, title or interest in
and to the patented invention, whose rights have been infringed, may bring a civil action before the proper Court
of First Instance (now Regional Trial court), to recover from the infringer damages sustained by reason of the
infringement and to secure an injunction for the protection of his right. x x x
Under the aforequoted law, only the patentee or his successors-in-interest may file an action for infringement.
The phrase anyone possessing any right, title or interest in and to the patented invention upon which petitioner
maintains its present suit, refers only to the patentees successors-in-interest, assignees or grantees since actions
for infringement of patent may be brought in the name of the person or persons interested, whether as patentee,
assignees or grantees, of the exclusive right.[12] Moreover, there can be no infringement of a patent until a patent
has been issued, since whatever right one has to the invention covered by the patent arises alone from the grant
of patent.[13] In short, a person or entity who has not been granted letters patent over an invention and has not
acquired any right or title thereto either as assignee or as licensee, has no cause of action for infringement
because the right to maintain an infringement suit depends on the existence of the patent.
26 Angelita Manzano vs. CA
GR. No. 113388
Sept. 5, 1997

FACTS:
Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the
cancellation of Letters Patent No. UM-4609 for a gas burner registered in the name of respondent Melecia
Madolaria who subsequently assigned the letters patent to New United Foundry and Manufacturing Corporation
(UNITED FOUNDRY, for brevity). Petitioner alleged among others that (a) the utility model covered by the letters
patent, in this case, an LPG gas burner, was not inventive, new or useful; (b) the specification of the letters patent
did not comply with the requirements of Sec. 14, RA No. 165, as amended
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper in the UNITED
FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965 to 1970; that Ong helped in
the casting of an LPG burner which was the same utility model of a burner for which Letters Patent No. UM-4609
was issued, and that after her husbands separation from the shop she organized Besco Metal Manufacturing
(BESCO METAL, for brevity) for the casting of LPG burners one of which had the configuration, form and
component parts similar to those being manufactured by UNITED FOUNDRY. Petitioner presented in evidence
an alleged model of an LPG burner marked Exh. K and covered by the Letters Patent of respondent, and testified
that it was given to her in January 1982 by one of her customers who allegedly acquired it from UNITED
FOUNDRY. Petitioner also presented in evidence her own model of an LPG burner called Ransome burner
marked Exh. L, which was allegedly manufactured in 1974 or 1975 and sold by her in the course of her business
operation in the name of BESCO METAL. Petitioner claimed that this Ransome burner (Exh. L) had the same
configuration and mechanism as that of the model which was patented in favor of private respondent Melecia
Madolaria. Also presented by petitioner was a burner cup of an imported Ransome burner marked Exh M which
was allegedly existing even before the patent application of private respondent.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who testified, among
others, that he was the General Supervisor of the UNITED FOUNDRY in the foundry, machine and buffing
section; that in his early years with the company, UNITED FOUNDRY was engaged in the manufacture of
different kinds of gas stoves as well as burners based on sketches and specifications furnished by customers;
that the company manufactured early models of single-piece types of burners where the mouth and throat were
not detachable; that in the latter part of 1978 respondent Melecia Madolaria confided in him that complaints were
being brought to her attention concerning the early models being manufactured; that he was then instructed by
private respondent to cast several experimental models based on revised sketches and specifications; that
private respondent again made some innovations; that after a few months, private respondent discovered the
solution to all the defects of the earlier models and, based on her latest sketches and specifications, he was able
to cast several models incorporating the additions to the innovations introduced in the models. Various tests were
conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained
perfect results. Rolando Madolaria testified that private respondent decided to file her application for utility model
patent in December 1979.
ISSUE: Whether or not respondent has satisfied the element of novelty for her patent to be registrable.
HELD: YES.
The element of novelty is an essential requisite of the patentability of an invention or discovery. If a device or
process has been known or used by others prior to its invention or discovery by the applicant, an application for a
patent therefor should be denied; and if the application has been granted, the court, in a judicial proceeding in
which the validity of the patent is drawn in question, will hold it void and ineffective. It has been repeatedly held

that an invention must possess the essential elements of novelty, originality and precedence, and for the
patentee to be entitled to the protection the invention must be new to the world.
In issuing Letters Patent No. UM-4609 to Melecia Madolaria for an LPG Burner on 22 July 1981, the
Philippine Patent Office found her invention novel and patentable. The issuance of such patent creates a
presumption which yields only to clear and cogent evidence that the patentee was the original and first
inventor. The burden of proving want of novelty is on him who avers it and the burden is a heavy one which is
met only by clear and satisfactory proof which overcomes every reasonable doubt. Hence, a utility model shall
not be considered new if before the application for a patent it has been publicly known or publicly used in this
country or has been described in a printed publication or publications circulated within the country, or if it is
substantially similar to any other utility model so known, used or described within the country.
27 Smithkline and French Laboratories vs. CA and Doctors Pharmaceuticals
G.R. No. 121867. July 24, 1997
Facts:
Petitioner Smith Kline & French Laboratories owns Philippine Letters Patent No. 12207 issued by the BPTTT for
the patent of the drug Cimetidine. On 30 March 1987, private respondent Doctors Pharmaceuticals filed a petition
for compulsory licensing with the BPTTT for authorization to manufacture its own brand of medicine from the drug
Cimetidine and to market the resulting product in the Philippines pursuant to the provisions of Section 34 of
Republic Act No. 165, which provides for the compulsory licensing of a particular patent after the expiration of two
years from the grant of the latter if the patented invention relates to medicine or that which is necessary for public
health or public safety.
Petitioner opposed, arguing that private respondent had no cause of action and lacked the capability to work the
patented product; the petition failed to specifically divulge how private respondent would use or improve the
patented product; and that private respondent was motivated by the pecuniary gain attendant to the grant of a
compulsory license. Petitioner also maintained that it was capable of satisfying the demand of the local market in
the manufacture and marketing of the medicines covered by the patented product.
The BPTTT granted the petition for compulsory licensing thus prompting petitioner to assail, on certiorari, the
grant maintaining that RA 165 is contrary to the Paris Convention and is an invalid exercise of police power.
Issue:Whether or not compulsory licensing under RA 165 is contrary to the Paris Convention
Held:
No. It is thus clear that Section A(2) of Article 5 of the Paris Convention unequivocally and explicitly respects the
right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent
abuses which might result from the exercise of the exclusive rights conferred by the patent. Certainly, the growth
of monopolies was among the abuses which Section A, Article 5 of the Convention foresaw, and which our
Congress likewise wished to prevent in enacting R.A. No. 165 which provides for a system of compulsory
licensing under a particular patent.
The case at bar refers more particularly to subparagraph (e) of paragraph 1 of Section 34 -- the patented
invention or article relates to food or medicine or manufactured products or substances which can be used as
food or medicine, or is necessary for public health or public safety. And it may not be doubted that the
aforequoted provisions of R.A. No. 165, as amended, are not in derogation of, but are consistent with, the
recognized right of treaty signatories under Article 5, Section A(2) of the Paris Convention.
It cannot be claimed that petitioner was unduly deprived of its property rights, as R.A. No. 165 not only grants the
patent holder a protective period of two years to enjoy his exclusive rights thereto; but subsequently, the law
recognizes just compensation in the form of royalties as was provided in this case.

28 Roberto del Rosario vs. CA

G.R. No. 115106
March 15, 1996
Facts:
Roberto Del Rosario was granted a patent for his innovation called the Minus One karaoke. The patent was
issued in June 1988 for five years and was renewed in November 1991 for another five years as there were
improvement introduced to his minus one karaoke. In 1993, while the patent was still effective, Del Rosario
sued Janito Corporation, a Japanese company owned by Janito Cua, for allegedly infringing upon the patent of
Del Rosario. Del Rosario alleged that Janito was manufacturing a sing-along system under the brand miyata
karaoke which is substantially, if not identical, the same to his minus one karaoke. The lower court ruled in
favor of Del Rosario but the Court of Appeals ruled that there was no infringement because the karaoke system
was a universal product manufactured, advertised, and marketed all over the world long before Del Rosario was
issued his patents.
Respondent Janito Corporation denied that there was any violation of petitioners patent rights, and cited the
differences between its miyata equipment and petitioners audio equipment. It expressed the view that there was
no infringement of the patents of petitioner by the fact alone that private respondent had manufactured the miyata
karaoke or audio system, and that the karaoke system was a universal product manufactured, advertised and
marketed in most countries of the world long before the patents were issued to petitioner.
Issue:
Whether or not the Court of Appeals erred in its ruling.
Held:
Yes. The Patent Law expressly acknowledges that any new model of implements or tools of any industrial
product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for
utility model. Here, there is no dispute that the letters patent issued to Del Rosario are for utility models of audio
equipment. It is elementary that a patent may be infringed where the essential or substantial features of the
patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is
substantially identical with the patented invention. In order to infringe a patent, a machine or device must perform
the same function, or accomplish the same result by identical or substantially identical means and the principle or
mode of operation must be substantially the same. In the case at bar, miyata karaoke was proven to have
substantial if not identical functionality as that of the minus one karaoke which was covered by the second patent
issued to Del Rosario. Further, Janito failed to present competent evidence that will show that Del Rosarios
innovation is not new.
29 Gerardo Samson vs Felipe Tarroza
28 SCRA 792
July 28, 1969
FACTS:
This is an appeal from a decision of the Director of Patents denying the petition for the cancellation of Utility
Model Letters Patent No. 62 in favor of respondent Felipe Tarroza for his Side Tilting-Dumping Wheelbarrow.

Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent No. 27 for a Dumping and
Detachable Wheelbarrow, which he claims to have been infringed by the respondent, they being neighbors.
ISSUE:
Whether or not respondents Utility Model Patent deserves cancellation.
HELD:
No. There is an express recognition under the Patent Law that any new model of implements or tools or of any
industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a
patent for a utility model: From the description of the side of tilting-dumping wheelbarrow, the product of
ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers
to as practical utility.
30 Pearl and Dean vs Shoemart Inc

G.R. No. 148222
August 15, 2003
Facts:
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM City North Edsa but the same was unilaterally rescinded by SM.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricate its
display units, offered to construct light boxes for Shoemarts chain of stores.
Petitioner P & Ds complaint was that SMI infringed on its copyright over the light boxes when SMI had the units
manufactured by Metro and EYD Rainbow Advertising for its own account. Petitioner's position was premised on
its belief that its copyright over the engineering drawings extended ipso facto to the light boxes depicted or
illustrated in said drawings. The RTC ruled in favor of petitioner.
In ruling that there was no copyright infringement, the Court of Appeals held that the copyright was limited to the
drawings alone and not to the light box itself.
Issue:
Is the copyright limited to the drawings alone?
HELD: Yes. 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, petitioners copyright protection
extended only to the technical drawings and not to the light box itself because the latter was not at all in the
category of prints, pictorial illustrations, advertising copies, labels, tags and box wraps.

Stated otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only
to the technical drawings within the category of pictorial illustrations. It could not have possibly stretched out to
include the underlying light box.
31 Kho vs CA
G.R. No. 115758
March 19, 2002
FACTS:
Elidad Kho is doing business under the name and style of KEC Cosmetics Laboratory and she was also the
holder of copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She also bought the patent
rights over the Chin Chun Su & Device and Chin Chun Su for medicated cream from one Quintin Cheng, who
was the assignee of Shun Yi Factory a Taiwanese factory actually manufacturing Chin Chun Su products.
Petitioner 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 (Summerville) and Ang
Tiam Chay. She alleged 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 had already been terminated by the said Taiwanese Manufacturing Company.
ISSUE:
Whether or not Kho has the exclusive right to use the trade name Chin Chun Su and its container.
HELD:
No. 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 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.
32 Ching vs Salinas
G.R. No. 161295
June 29, 2005

FACTS:
Jessie Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a
Utility Model, described as "Leaf Spring Eye Bushing for Automobile." Ching and Joseph Yu were issued by the
National Library Certificates of Copyright Registration and Deposit of the said work. Ching requested the National
Bureau of Investigation (NBI) for police/investigative assistance for the apprehension and prosecution of illegal
manufacturers, producers and/or distributors of the works. After due investigation, the NBI filed applications for
search warrants in the RTC of Manila against William Salinas, Sr. and the officers and members of the Board of
Directors of Wilaware Product Corporation. It was alleged that the respondents therein reproduced and
distributed the said models penalized under Sections 177.1 and 177.3 of R.A. 8293. The RTC granted the
application and issued Search Warrants. The respondents filed a motion to quash the search warrants. In
opposing the motion, the petitioner averred that the court which issued the search warrants was not the proper
forum in which to articulate the issue of the validity of the copyrights issued to him. Until his copyright was
nullified in a proper proceeding, he enjoys rights of a registered owner/holder thereof.
The trial court issued an Order granting the motion, and quashed the search warrant on its finding that there was
no probable cause for its issuance. His motion for reconsideration of the order having been denied by the trial,
the petitioner filed a petition for certiorari in the CA. The CA rendered judgment dismissing the petition. Hence,
this petition for review on certiorari.
ISSUE:
Whether or not Petitioners utility models can be considered literary and artistic works subject to copyright
protection.
RULING:
As gleaned from the specifications appended to the application for a copyright certificate filed by the petitioner,
the said Leaf Spring Eye Bushing for Automobile and the Vehicle Bearing Cushion are merely a utility models.
Plainly, these are not literary or artistic works. They are not intellectual creations in the literary and artistic
domain, or works of applied art. They are certainly not ornamental designs or one having decorative quality or
value.
The Court agreed with the contention of the petitioner, that the authors intellectual creation, regardless of
whether it is a creation with utilitarian functions or incorporated in a useful article produced on an industrial scale,
is protected by copyright law. However, the law refers to a "work of applied art which is an artistic creation." It
bears stressing that there is no copyright protection for works of applied art or industrial design which have
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of the article.
Functional components of useful articles, no matter how artistically designed, have generally been denied
copyright protection unless they are separable from the useful article. In this case, the petitioners models are not
works of applied art, nor artistic works. They are utility models, useful articles, albeit with no artistic design or
value.
33 Unilever vs CA
GR No. 119280
Aug. 10, 2006
Facts:
Petitioner assails validity of the writ of preliminary injunction against it. The writ enjoined petitioner from using and

airing, until further orders of the court, certain television commercials for its laundry products claimed to be
identical or similar to its double tug or tac-tac key visual. Petitioner does not deny that the questioned TV
advertisements are substantially similar to P&GPs double tug or tac-tac key visual. However, it submits that
P&GP is not entitled to the relief demanded, which is to enjoin petitioner from airing said TV advertisements, for
the reason that petitioner has Certificates of Copyright Registration for which advertisements while P&GP has
none with respect to its double-tug or tac-tac key visual. In other words, it is petitioners contention that P&GP is
not entitled to any protection because it has not registered with the National Library the very TV commercials
which it claims have been infringed by petitioner.
Issue:
Whether or not a Certificate of Copyright Registration is essential before any protection would be afforded to an
intellectual creation.
Held:
No. Section 2 of PD 49 stipulates that the copyright for a work or intellectual creation subsists from the moment of
its creation. Accordingly, the creator acquires copyright for his work right upon its creation. Contrary to petitioners
contention, the intellectual creators exercise and enjoyment of copyright for his work and the protection given by
law to him is not contingent or dependent on any formality or registration. Therefore, taking the material
allegations of paragraphs 1.3 to 1.5 of P&GPs verified Complaint in the context of PD 49, it cannot be seriously
doubted that at least, for purposes of determining whether preliminary injunction should issue during the
pendency of the case, P&GP is entitled to the injunctive relief prayed for in its Complaint.
34 Sambar vs. Levi Strauss
G.R. No. 132604
March 6, 2002
FACTS:
Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally known
clothing manufacturer, own the arcuate design trademark which was registered under US Trademark Registration
No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and Venancio Sambar, without the
consent and authority of private respondents and in infringement and unfair competition, sold and advertised, and
despite demands to cease and desist, continued to manufacture, sell and advertise denim, pants under the brand
name Europress with back pockets bearing a design similar to the arcuate trademark of private respondents,
thereby causing confusion on the buying public, prejudiced to private respondents goodwill and property right.
Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was issued to him, but he
denied using it. He said he did not authorize anyone to use the copyrighted design.
Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing, advertising
and selling pants with the arcuate design on their back pockets.
Private respondents moved for reconsideration praying for the cancellation of petitioners copyright registration.
Trial court granted the prayer. Petitioner appealed to the Court of Appeals which affirmed the ruling of the trial

court.
ISSUE:
Whether petitioner infringe on private respondents arcuate design.
HELD:
No. To be entitled to a copyright, the thing being copyrighted must be original, created by the author through his
own skill, labor and judgment, without directly copying or evasively imitating the work of another.
35 Sanrio Co., LTD vs Edgar Lim
G.R. No. 168662
Feb. 19, 2008
FACTS:
Petitioner , a Japanese corporation, owns the copyright of various animated characters such as Hello Kitty,
Little Twin Stars, My Melody, Tuxedo Sam and Zashikibuta among others. While it is not engaged in
business in the Philippines, its products are sold locally by its exclusive distributor, Gift Gate Incorporated (GGI).
As such, GGI entered into licensing agreements with local entities which were allowed to manufacture certain
products (bearing Ps copyrighted animated characters) for the local market.
Due to the deluge of counterfeit Sanrio products, GGI asked IP Manila Associates (IPMA) to conduct a market
research to identify those factories, department stores and retail outlets manufacturing and/or selling fake Sanrio
items. After conducting several test-buys in various commercial areas, IPMA confirmed that Respondent was
selling imitations of Ps products.
Consequently, IPMA agents executed a joint affidavit attesting to the aforementioned facts and forwarded the
same to the NBI, which thereafter filed an application for the issuance of a search warrant . A search warrant
being issued, NBI agents searched the premises of Respondent and were able to seize various Sanrio products.
Petitioner then filed a complaint-affidavit with the Task-Force on Anti-Intellectual Property Piracy (TAPP) of the
DOJ against Respondent for violation of Section 217 (in relation to Sections 177 and 178) of the IPC. TAPP
found that Respondent bought his merchandise from legitimate sources, as shown by official receipts. Thus, it
dismissed the complaint.
Petitioner moved for reconsideration but it was denied. Hence, it filed a petition for review with the DOJ, which
affirmed the TAPP resolution. Aggrieved, Petitioner filed a petition for certiorari in the CA, which dismissed the
petition on the ground of prescription. Petitioner moved for reconsideration but it was denied. Hence, this petition.
Issue:
Whether or not respondent has committed copyright infringement; and
Ruling: On the merits of the case, the CA concluded that the DOJ did not commit grave abuse of discretion in
dismissing the petition for review. To be criminally liable for violation of Section 217.3 of the IPC, the following
requisites must be present:

1. possession of the infringing copy and 2. knowledge or suspicion that the copy is an infringement of the genuine
article.
The Court agreed with the DOJ that petitioner failed to prove that respondent knew that the merchandise he sold
was counterfeit. Respondent, on the other hand, was able to show that he obtained these goods from legitimate
sources.
36 NBI-Microsoft vs Judy Hwang

G.R. No. 147043
June 21, 2005
FACTS: Microsoft Corporation and Beltron Computer Philippines, Inc. entered into a Licensing Agreement. Under
Section 2(a) of the Agreement, Microsoft authorized Beltron, for a fee, to:
1. Reproduce and install no more than one copy of Windows on each Customer System hard disk;
2. Distribute directly or indirectly and license copies of Windows (reproduced as per Section 2 of the Agreement
and/or acquired from an Authorized Replicator or Authorized Distributor.
Their agreement allowed either party to terminate if one fails to comply with their respective obligations. Microsoft
terminated the Agreement by reason of Beltrons non-payment of royalties. Later, Microsoft learned that Beltron
was illegally copying and selling copies of Windows. Microsoft then sought the assistance of the National Bureau
of Investigation. NBI agents made some purchase from Beltron where they acquired a computer unit pre-installed
with Windows, 12 windows installer CDs packed as Microsoft products. The agents were not given the end-user
license agreements, user manuals, and certificates of authenticity for the products purchased. They were given a
receipt which has a header of T.M.T.C. (Phils) Inc. BELTRON COMPUTER. TMTC stands for Taiwan
Machinery Display and Trade Center.
A search warrant was subsequently issued where 2,831 CDs of Windows installers, among others, were seized.
Based on the items seized from Beltron, Microsoft filed a case of copyright infringement against Beltron and
TMTC as well as their officers (Judy Hwang et al) before the Department of Justice (DOJ).
The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled that the issue of the
authority of Beltron to copy and sell Microsoft products should first be resolved in a civil suit. Microsoft appealed
the decision of the DOJ secretary before the Supreme Court. Meanwhile, Beltron filed a motion to quash the
search warrant before the RTC that issued the same. The RTC partially granted the quashal. The Court of
Appeals reversed the RTC. Hwang et al did not appeal the CA decision.
ISSUE: Whether or not the DOJ Secretary is correct.
HELD: No. Section 5 of Presidential Decree 49 enumerates the rights vested exclusively on the copyright owner.
Contrary to the DOJs ruling, the gravamen of copyright infringement is not merely the unauthorized
manufacturing of intellectual works but rather the unauthorized performance of any of the acts covered by
Section 5. Hence, any person who performs any of the acts under Section 5 without obtaining the copyright
owners prior consent renders himself civilly and criminally liable for copyright infringement.
Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright,

and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this
connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the copyright. Being the copyright and
trademark owner of Microsoft software, Microsoft acted well within its rights in filing the complaint before DOJ on
the incriminating evidence obtained from Beltron. Hence, it was highly irregular for the DOJ to hold that Microsoft
sought the issuance of the search warrants and the filing of the complaint merely to pressure Beltron to pay its
overdue royalties to Microsoft.
There is no basis for the DOJ to rule that Microsoft must await a prior resolution from the proper court of whether
or not the Agreement is still binding between the parties. Beltron has not filed any suit to question Microsofts
termination of the Agreement. Microsoft can neither be expected nor compelled to wait until Beltron decides to
sue before Microsoft can seek remedies for violation of its intellectual property rights. Furthermore, the articles
seized from Beltron are counterfeit per se because Microsoft does not (and could not have authorized anyone to)
produce such CD installers The copying of the genuine Microsoft software to produce these fake CDs and their
distribution are illegal even if the copier or distributor is a Microsoft licensee. As far as these installer CD-ROMs
are concerned, the Agreement (and the alleged question on the validity of its termination) is immaterial to the
determination of Beltrons liability for copyright infringement and unfair competition. Beltrons defense that the box
of CD installers found in their possession was only left to them for safekeeping is not tenable.
37 Manly Sportswear vs. Dadodette Enterprise

GR No. 165306
Sept. 20, 2005
Facts:
NBI applied for a Search Warrant before the RTC based on the information that Respondent were in possession
of goods, the copyright of which belonged to Petitioner. After finding reasonable grounds that a violation of
Sections 172 and 217 of RA No. 8293 has been committed, a Search Warrant was issued.
Respondent thereafter moved to quash and annul the Search Warrant contending that the same is invalid since
the requisites for its issuance have not been complied with. Respondent insisted that the sporting goods
manufactured by and/or registered in the name of P are ordinary and common hence, not among the classes of
work protected under RA 8293.
RTC granted the motion to quash and declared the Search Warrant null and void based on its finding that the
copyrighted products of Petitioner do not appear to be original creations and were being manufactured and
distributed by different companies locally and abroad under various brands, and therefore unqualified for
protection under RA 8293. Moreover, Petitioners certificates of registrations were issued only recently, whereas
there were certificates of registrations for the same sports articles which were issued earlier than Petitioners,
thus further negating the claim that its copyrighted products were original creations.
RTC denied Petitioners MR. Hence it filed a petition for certiorari before the CA which was denied for lack of
merit. Petitioner filed the instant petition for review on certiorari.

ISSUE:
Whether or not registration with the National Library and Supreme Court Library is a condition for copyright
protection.
RULING:
We deny the petition.
Further, the copyright certificates issued in favor of MANLY constitute merely prima facie evidence of validity and
ownership. However, no presumption of validity is created where other evidence exist that may cast doubt on the
copyright validity. Hence, where there is sufficient proof that the copyrighted products are not original creations
but are readily available in the market under various brands, as in this case, validity and originality will not be
presumed and the trial court may properly quash the issued warrant for lack of probable cause.
Besides, no copyright accrues in favor of MANLY despite issuance of the certificates of registration and deposit
pursuant to Section 2, Rule 7 of the Copyrights Safeguards and Regulations which states:
Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the work is purely for
recording the date of registration and deposit of the work and shall not be conclusive as to copyright ownership or
the term of the copyrights or the rights of the copyright owner, including neighboring rights.
At most, the certificates of registration and deposit issued by the National Library and the Supreme Court Library
serve merely as a notice of recording and registration of the work but do not confer any right or title upon the
registered copyright owner or automatically put his work under the protective mantle of the copyright law. It is not
a conclusive proof of copyright ownership. As it is, non-registration and deposit of the work within the prescribed
period only makes the copyright owner liable to pay a fine.
WHEREFORE, the petition is DENIED. The Decision and Resolution of the CA, are AFFIRMED.
38 Pacita Habana vs. Felicidad Robles
GR. No. 131522
July 19, 1999
FACTS:
Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For Today
(CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency (DEP).
Petitioners found that several pages of the respondent's book are similar, if not all together a copy of petitioners'
book. Habana et al. filed an action for damages and injunction, alleging respondents infringement of copyrights,
in violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially familiar with the contents
of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed certain
portions of their book CET.
On the other hand, Robles contends that the book DEP is the product of her own intellectual creation, and was
not a copy of any existing valid copyrighted book and that the similarities may be due to the authors' exercise of
the "right to fair use of copyrighted materials, as guides."

The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of Appeals
rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this appeal, petitioners
submit that the appellate court erred in affirming the trial court's decision.
ISSUE:
Whether Robles committed infringement in the production of DEP.
HELD:
A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET.
The court finds that respondent Robles' act of lifting from the book of petitioners substantial portions of
discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners'
copyrights.
In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habana et.
al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow another to copy
the book without appropriate acknowledgment is injury enough.
39 Francisco Joaquin vs. Franklin Drilon
G.R. No. 108946
January 28, 1999
FACTS:
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright of Rhoda and Me a
dating game show aired from 1970 to 1977. BJPI submitted to the National Library an addendum to its certificate
of copyright specifying the shows format and style of presentation. Upon filing petitioners complaint, an
information was filed for violation of PD No. 49 against private respondent Gabriel M. Zosa, president and
general manager of IXL Productions, Inc. for airing its episode Its a Date. Zosa sought review of the resolution
of the Assistant City Prosecutor before the Department of Justice. Respondent Secretary of Justice Franklin M.
Drilon reversed the Assistant City Prosecutors findings and directed him to move for the dismissal of the case
against private respondents. Petitioners contend that public respondent gravely abused his discretion amounting
to lack of jurisdiction when he invoked non-presentation of the master tape as being fatal to the existence of
probable cause to prove infringement. Both public and private respondents maintain that petitioners failed to
establish the existence of probable cause due to their failure to present the copyrighted master videotape of
Rhoda and Me. They contend that petitioner BJPIs copyright covers only a specific episode of Rhoda and Me
and that the formats or concepts of dating game shows are not covered by copyright protection under P. D. No.
49.
ISSUE:
Whether the format or mechanics or petitioners television show is entitled to copyright protection.
HELD:
The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise known as the
Decree on Intellectual Property, enumerates the classes of work entitled to copyright protection. The provision is
substantially the same as Sec. 172 of the Intellectual Property Code of the Philippines (RA 8293). The format or
mechanics of a television show is not included in the list of protected works in Sec. 2 of PD No. 49. For this

reason, the protection afforded by the law cannot be extended to cover them.
The copyright does not extend to the general concept or format of its dating game show. Mere description by
words of the general format of the two dating game shows is insufficient; the presentation of the master videotape
in evidence was indispensable to the determination of the existence of a probable cause. A television show
includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video
and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright /
format of both dating game shows.
40 Filipino Society of Composers vs. Benjamin Tan

G.R. No. L-36402.
March 16, 1987
FACTS:
Petitioner filed a complaint with the lower court for infringement of copyright against respondent for allowing the
playing in respondents restaurant songs copyrighted in the name of the former. Respondent while not denying
the playing of said copyrighted compositions in his establishment, maintains that the mere singing and playing of
songs and popular tunes even if they are copyrighted do not constitute an infringement under the provisions of
Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature). The lower court dismissed the complaint.
On appeal, the case was certified before the SC.
ISSUE:
Whether or not the playing and signing of musical compositions which have been copyrighted under the
provisions of the Copyright Law (Act 3134) inside the establishment of respondent constitute a public
performance for profit within the meaning and contemplation of the Copyright Law of the Philippines; and
assuming that there were indeed public performances for profit, whether or not respondent can be held liable
therefor.
HELD:
Under Section 3(c) of the Copyright Law, to exhibit, perform, represent, produce, or reproduce the copyrighted
work in any manner or by any method whatever for profit or otherwise; if not reproduced in copies for sale, to sell
any manuscripts or any record whatsoever thereof. Playing or singing a musical composition is universally
accepted as performing the musical composition and that playing and singing of copyrighted music in the soda
fountain and restaurant of the respondent for the entertainment of the customers although the latter do not pay
for the music but only for the food and drink constitute performance for profit under the Copyright Law.
Respondent cannot be said to have infringed upon the Copyright Law. Respondent's allegation that the
composers of the contested musical compositions waived their right in favor of the general public when they
allowed their intellectual creations to become property of the public domain before applying for the corresponding
copyrights for the same is correct. Under Republic Act 165, an intellectual creation should be copyrighted thirty
(30) days after its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which
renders such creation public property." Under the circumstances, it is clear that the musical compositions in
question had long become public property, and are therefore beyond the protection of the Copyright Law.

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1 CASE DIGESTS: LAWS ON INTELLECTUAL PROPERTY

1 Birkenstock GMBH vs. Philippine Shoe Mktg.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 1

2 Asia Brewery Inc vs. CA

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 2

3 Mcdonald's Corporation vs. LC Big Mak Burgers

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 3

4 Societes De Produits Nestle vs. Court of Appeals

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 4

5 Mcdonald's Corporation vs. Macjoy Fastfood Corp.

Whether or not there is confusing similarity between the contending marks.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 5

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 6

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 7

1. Two horse design against his buffalo design

9 In-n-out Burgers vs. Sehwani

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 8

10 Shangrila Hotel Management vs. Developers Group of Companies

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 9

Whether or not prior use of a mark is a requirement for registration.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 10

ISSUE: Whether the names are confusingly similar.

12 Coffee Partners Inc. vs. San Francisco Coffee

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 11

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 12

13 Pilipinas Shell Petroleum vs. Romars International

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 13

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 14

Here, both characteristics are present.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 15

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 16

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 17

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 18

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 19

20 Rosario Maguan vs. CA and Susana Luchan

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 20

against private respondent with CFI of Rizal, Pasig Branch.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 21

22 Smithkline Beckman vs. CA and Tryco Pharma

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 22

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 23

25 Creser Precision Systems vs. CA

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 24

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 25

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 26

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 27

28 Roberto del Rosario vs. CA

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 28

Whether or not respondents Utility Model Patent deserves cancellation.

30 Pearl and Dean vs Shoemart Inc

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 29

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 30

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 31

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 32

Whether or not respondent has committed copyright infringement; and

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 33

36 NBI-Microsoft vs Judy Hwang

ISSUE: Whether or not the DOJ Secretary is correct.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 34

37 Manly Sportswear vs. Dadodette Enterprise

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 35

We deny the petition.

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 36

INTELLECTUAL PROPERTY OF 3B A.Y. 2016-2017 Page 37