Willaware ProCorp. vs Jesichris ManuCorp.

G.R. No. 195549 September 3, 2014

Facts:

Jesichris Manufacturing Company, the respondent filed a complaint for damages for unfair
competition against Jesichris Manufacturing Company, petitioner. Respondent alleged that in view of the
physical proximity of petitioner’s office to respondent’s office, and in view of the fact that some of the
respondent’s employees had transferred to petitioner, petitioner had developed familiarity with
respondent’s products, especially its plastic-made automotive parts. Respondent 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 respondent’s plastic-made
automotive parts and to the same customers. Petitioner’s manufacture of the same automotive parts with
plastic material was taken from respondent’s idea of using plastic for automotive parts. Also, petitioner
deliberately copied respondent’s products all which acts constitute unfair competition, is and are contrary
to law, morals, good customs and public policy and have caused respondent damages in terms of lost and
unrealized profits in the amount of 2,000,000 as of the date of respondent’s complaint.

Issue: Whether there is unfair competition under human relations when the parties are not competitors
and there is no damage on the part of Jesichris?

Ruling:

Yes. Article 28 of the Civil Code provides that "unfair competition in agricultural, commercial or
industrial enterprises or in labor through the use of force, intimidation, deceit, machination or any other
unjust, oppressive or high-handed method shall give rise to a right of action by the person who thereby
suffers damage." 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. 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
respondent’s former employees, deliberately copied respondent’s products and even went to the extent of
selling these products to respondent’s customers.
PILIPINAS SHELL PETROLEUM CORPORATION AND PETRON
CORPORATION, Petitioners, v.ROMARS INTERNATIONAL GASES
CORPORATION, Respondent.

G.R. No. 189669, February 16, 2015

Facts:
Petitioners received information that respondent was 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. Petron then obtained the services of a
paralegal investigation team who sent their people to investigate in respondent’s premises located in San
Juan, Baao, Camarines Sur, bringing along bringing along four empty cylinders of Shellane, Gasul, Total
and Superkalan and asked that the same be refilled. Respondent's employees then refilled said empty
cylinders at respondent's refilling station. Petitioners then requested NBI to further investigate the
activities that led to the filing of search warrant against the respondent on behalf of the petitioner with the
RTC of Naga City. Respondent filed a Motion to Quash which the RTC Naga denied. Respondent new
counsel filed a Motion for Reconsideration raising for the first time the issue of impropriety of the filing
of the Application for Search Warrant in the RTC Naga when the alleged crime was committed in the
territorial jurisdiction of RTC Iriga. There was no compelling reason to justify the filing of the same
which is required by Sec. 2 (b), Rule 126 of the ROC.

Issue: Whether the venue in the application of search warrant is jurisdictional?

Ruling:

Yes. Section 2, Rule 126 of the Revised Rules of Criminal Procedure provides thus: (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 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.
CATERPILLAR, INC., Petitioner, v. MANOLO P. SAMSON, Respondent.

G.R. No. 205972, November 09, 2016

G.R. NO. 164352, November 09, 2016

Facts:

Caterpillar which was engaged in the manufacture and distribution of footwear, clothing and
known for six core trademarks, namely, "CATERPILLAR", "CAT", "CATERPILLAR & DESIGN",
"CAT AND DESIGN", "WALKING MACHINES" and "TRACK-TYPE TRACTOR & DESIGN (Core
Marks filed several criminal complaints for unfair competition in the Department of Justice (DOJ) against
Samson, the proprietor of various retail outlets in the Philippines selling footwear, bags, clothing, and
related items under the trademark "CATERPILLAR", registered in 1997 under Trademark Registration
No. 64705 issued by the Intellectual Property Office for violation of Intellectual Property Code of the
Philippines (IP Code). It also commenced a civil action for Unfair Competition, Damages and
Cancellation of Trademark with Application for Temporary Restraining Order (TRO) and/or Writ of
Preliminary Injunction. Samson filed a Motion to Suspend Arraignment on the ground that there exists a
prejudicial question. The RTC granted the motion stating that since the determination of who is really
the lawful or registered user of the trademark "CATERPILLAR" will ultimately determine whether the
instant criminal action shall proceed.

Issue: Whether the determination of who is the lawful or registered user of trademark “CATERPILLAR”
is a prejudicial question?

Ruling:

No. there is no prejudicial question if the civil and the criminal action can, according to law,
proceeds independently of each other. Under Rule 111, Section 3 of the Revised Rules on Criminal
Procedure, in the cases provided in Articles 32, 33, 34 and 2176 of the Civil Code, the independent civil
action may be brought by the offended party. It shall proceed independently of the criminal action and
shall require only a preponderance of evidence.
In the case at bar, the common element in the acts constituting unfair competition under Section
168 of R.A. No. 8293 is fraud. Pursuant to Article 33 of the Civil Code, in cases of defamation, fraud, and
physical injuries, a civil action for damages, entirely separate and distinct from the criminal action, may
be brought by the injured party. Hence, Civil Case No. Q-00-41446, which as admitted by private
respondent also relate to unfair competition, is an independent civil action under Article 33 of the Civil
Code. As such, it will not operate as a prejudicial question that will justify the suspension of the criminal
cases at bar.
An action for the cancellation of trademark like Civil Case No. Q-00-41446 is a remedy available
to a person who believes that he is or will be damaged by the registration of a mark. On the other hand,
the criminal actions for unfair competition (Criminal Cases Nos. Q-02-108043-44) involved the
determination of whether or not Samson had given his goods the general appearance of the goods of
Caterpillar, with the intent to deceive the public or defraud Caterpillar as his competitor. In the suit for the
cancellation of trademark, the issue of lawful registration should necessarily be determined, but
registration was not a consideration necessary in unfair competition. Indeed, unfair competition is
committed if the effect of the act is "to pass off to the public the goods of one man as the goods of
another;" it is independent of registration.
JUNO BATISTIS vs PEOPLE
G.R. No. 181571 December 16, 2009

Facts:
Allied Domecq Philippines, Inc., a Philippine corporation exclusively
authorized todistribute Fundador brandy products imported from Spain wholly in finished form, initiated
this case against Batistis. Upon its request, agents of the National Bureau of Investigation (NBI)
conducted a test-buy in the premises of Batistis, and thereby confirmed that he was actively engaged in
the manufacture, sale and distribution of counterfeit Fundador brandy products. Upon application of the
NBI agents based on the positive results of the test-buy, Judge Antonio M. Eugenio, Jr. of the Manila
RTC issued on December 20, 2001 Search Warrant No. 01-2576, authorizing the search of the premises
of Batistis located at No.1664 Onyx St., San Andres Bukid, Sta. Ana, Manila. The search yielded 20
empty Carlos I bottles, 10 empty bottles of Black Label whiskey, two empty bottles of Johnny Walker
Swing, an empty bottle of Remy Martin XO, an empty bottle of Chabot, 241 empty Fundador bottles, 163
boxes of Fundador, a half sack of Fundador plastic caps, two filled bottles of Fundador brandy, and eight
cartons of empty Jose Cuervo bottles. The Office of the City Prosecutor of Manila formally charged
Batistis in the RTC in Manila with two separate offenses, namely, infringement of trademark and unfair
competition.
Batistis contends that the only direct proofs of his guilt were the self-serving testimonies of the
NBI raiding team; that he was not present during the search; that one of the NBI raiding agents failed to
immediately identify him in court; and that aside from the two bottles of Fundador brandy, the rest of the
confiscated items were not found in his house.

Issue: Whether Batistis is guilty of trademark infringement?

Ruling:
Yes. Harvey Tan, Operations Manager of Pedro Domecq, S.A. whose task involved the detection
of counterfeit products in the Philippines, testified that the seized Fundador brandy, when compared with
the genuine product, revealed several characteristics of counterfeiting, namely: (a) the Bureau of Internal
Revenue (BIR) seal label attached to the confiscated products did not reflect the word tunay when he
flashed a black light against the BIR label; (b) the tamper evident ring on the confiscated item did not
contain the word Fundador; and (c) the word Fundador on the label was printed flat with sharper edges,
unlike the raised, actually embossed, and finely printed genuine Fundador trademark. There is no
question, therefore, that Batistis exerted the effort to make the counterfeit products look genuine to
deceive the unwary public into regarding the products as genuine. The buying public would be easy to fall
for the counterfeit products due to their having been given the appearance of the genuine products,
particularly with the difficulty of detecting whether the products were fake or real if the buyers had no
experience and the tools for detection, like black light. He thereby infringed the
registered Fundador trademark by the colorable imitation of it through applying the dominant features of
the trademark on the fake products, particularly the two bottles filled with Fundador brandy. His acts
constituted infringement of trademark as set forth in Section 155 of the Intellectual Property Code.
Taiwan Kolin vs Kolin Electronics
GR 209843 March 25 2015
Facts:
Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the following
combination of goods: television sets, cassette recorder, VCD Amplifiers, camcorders and other
audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile
machines, teleprinters, cellular phones and automatic goods vending machine.Kolin Electronics opposed
the application on the ground that the trademark “KOLIN” is identical, if not confusingly similar; with its
registered trademark “KOLIN” which covers the following products under Class 9 of the Nice
Classification (NCL): automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated
power supply, step-down transformer, and PA amplified AC-DC. Kolin Electronics argued that the
products are not only closely-related because they fall under the same classification, but also because they
are inherently similar for being electronic products and are plugged into electric sockets and perform a
useful function.
Issue: Whether the products are closely-related?
Ruling:
No. The products are not related and the use of the trademark KOLIN on them would not likely
cause confusion. To confer exclusive use of a trademark, emphasis should be on the similarity or
relatedness of the goods and/or services involved and not on the arbitrary classification or general
description of their properties or characteristics.
First, products classified under Class 9 can be further classified into five categories. Accordingly, the
goods covered by the competing marks between Taiwan Kolin and Kolin Electronics fall under different
categories. Taiwan Kolin’s goods are categorized as audio visual equipments, while Kolin Electronics’
goods fall under devices for controlling the distribution and use of electricity. Thus, it is erroneous to
assume that all electronic products are closely related and that the coverage of one electronic product
necessarily precludes the registration of a similar mark over another.
Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and aural
differences between the two trademarks “KOLIN”, although appear to be minimal, are sufficient to
distinguish between one brand or another. The casual buyer is predisposed to be more cautious,
discriminating, and would prefer to mull over his purchase because the products involved are various kind
of electronic products which are relatively luxury items and not considered affordable. They are not
ordinarily consumable items such as soy sauce, ketchup or soap which are of minimal cost. Hence,
confusion is less likely.
Microsoft Corporation vs. Rolando Manansala
GR No. 1666391 October 21, 2015
Facts:
Petitioner (Microsoft Corporation) is the copyright and trademark owner of all rights relating to
all versions and editions of Microsoft software (computer programs) such as, but not limited to, MS-DOS
(disk operating system), Microsoft Encarta, Microsoft Windows, Microsoft Word, Microsoft Excel,
Microsoft Access, Microsoft Works, Microsoft Powerpoint, Microsoft Office, Microsoft Flight Simulator
and Microsoft FoxPro, among others, and their user's guide/manuals. Private Respondent-Rolando
Manansala is doing business under the name of DATAMAN TRADING COMPANY and/or COMIC
ALLEY. Private Respondent Manansala, without authority from petitioner, was engaged in distributing
and selling Microsoft computer software programs. Mr. John Benedict A. Sacriz, a private investigator
accompanied by an agent from the National Bureau of Investigation (NBI) was able to purchase six (6)
CD-ROMs containing various computer programs belonging to petitioner. As a result of the test-
purchase, the agent from the NBI applied for a search warrant to search the premises of the private
respondent. The search warrant was served on the private respondent's premises and yielded several
illegal copies of Microsoft programs.
Issue:
Whether printing or copying was not essential in the commission of the crimeof copyright infringement
under Section 29 of Presidential Decree No. 49?

Ruling:
Yes. The commission of any of the acts mentioned in Section 5 of Presidentia l Decree No. 49
without the copyright owner's consent constituted actionable copyright
infringement. The Court has emphatically declared that 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.
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. The mere sale of the illicit copies of the software programs was enough by itself to show
the existence of probable cause for copyright infringement. There was no need for the petitioner to still
prove who copied, replicated or reproduced the software programs. Indeed, the public prosecutor and the
DOJ gravely abused their discretion in dismissing the petitioner's charge for copyright infringement
against the respondents for lack of evidence.