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MCDONALD'S CORPORATION VS. L.C. BIG MAK BURGER, INC.

Core controversy: use of “Big Mac/Big Mak” mark in hamburger sandwiches

L.C. Big Mak Burger, Inc. - a domestic corporation which operates fast-food outlets and snack vans in Metro
Manila and nearby provinces, applied with the PBPTT for the registration of the "Big Mak" mark for its hamburger
sandwiches, which was opposed by Mcdonald’s on the ground that "Big Mak" was a colorable imitation of its
registered "Big Mac" mark for the same food products.

Mcdonald’s – Having received no reply from respondent Dy (chairman of the Board of Directors of respondent
corporation) on its request to desist from using the mark, sued LC Big Mak Burger Inc. with the RTC of Makati for
unfair competition and trademark infringement of its “Big Mac” mark on its hamburger sandwiches, which was
registered in US in 1979 and in the Philippines in 1985.

RTC – ruled that colorable imitation exists in the case.

CA – reversed the decision of the RTC.

LC Big Mak is guilty of trademark infringement and unfair competition.

a. Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in likelihood of
confusion. First, "Big Mak" sounds exactly the same as "Big Mac." Second, the first word in "Big Mak"
is exactly the same as the first word in "Big Mac." Third, the first two letters in "Mak" are the same as the first
two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds the same as "c" when the word "Mak" is
pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is spelled "Kalookan."

b. In short, 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. In spelling, considering the Filipino language, even the last letters of both marks are the same.

c. Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of "Big
Mac." Applied to the same food product of hamburgers, the two marks will likely result in confusion of the goods
in the public mind.

DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION VS. COURT OF APPEALS and
SUNSHINE SAUCE MANUFACTURING INDUSTRIES

Core controversy: similar logo and reusing of Del Monte’s and other catsup bottles bought from the junk shop

Del Monte and Philpack - filed a complaint against Sunshine Sauce for infringement of trademark and unfair
competition on the ground that the latter was using its exclusively designed and registered logo and catsup bottles
and thereafter distributing them, without the former’s consent.

Sunshine Sauce – alleged, in its answer, that it had long ceased to use the Del Monte bottle and that its logo was
substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the
petitioners.

RTC and CA - dismissed the complaint, holding that there were substantial differences between the logos or
trademarks of the parties; that the defendant had ceased using the petitioners' bottles; and that in any case the
defendant became the owner of the said bottles upon its purchase thereof from the junk yards. Furthermore, the
complainants had failed to establish the defendant's malice or bad faith, which was an essential element of
infringement of trademark or unfair competition.

Sunshine Sauce is guilty of trademark infringement or unfair competition.

a. To arrive at a proper resolution of this case, it is important to bear in mind the following distinctions between
infringement of trademark and unfair competition: (1) Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of one's goods as those of another; (2) In infringement
of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential; and
(3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action, whereas
in unfair competition registration is not necessary.

b. As to the infringement of logo. The question in infringement of trademark is not whether the two articles are
distinguishable by their label when set side by side but whether the general confusion made by the article upon
the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his
confounding it with the original. As a general rule, an ordinary buyer does not exercise as much prudence in
buying an article for which he pays a few centavos as he does in purchasing a more valuable thing.

c. At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable
imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green and red-
orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the style of the
print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato.

d. As to unfair competition in the use of Del Monte’s Bottles. Although Del Monte has actual use of the bottle's
configuration, the petitioners cannot claim exclusive use thereof because it has not been registered in the
Principal Register. However, we find that Sunshine, despite the many choices available to it and notwithstanding
that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the
petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's
bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as
that of Del Monte.

PHILIP MORRIS VS. FORTUNE TABACCO

Core controversy: use of the trademark “Mark”

Philip Morris (US), Benson & Hedges (Canada), and Fabriques (Switzerland) – the registered owners in the PH
of the trademarks MARK VII, MARK TEN, and LARK for cigarettes, respectively, filed a Complaint for Infringement
of Trademark and Damages against Fortune Tobacco on the ground that the latter manufactures and sells cigarettes
using the trademark MARK (unregistered).

Fortune Tobacco - denied the allegations and said that MARK is a common word.

Fortune did not infringe petitioners’ mark.

a. The Court adopted the holistic test as applied by the CA. After comparing the trademarks involved in their
entirety as they appear on the products, the striking dissimilarities are significant enough to warn any purchaser
that one is different from the other.

b. Indeed, although the perceived offending word MARK is itself prominent in petitioners trademarks MARK VII
and MARK TEN, the entire marking system should be considered as a whole and not dissected, because a
discerning eye would focus not only on the predominant word but also on the other features appearing in the
labels. Only then would such discerning observer draw his conclusion whether one mark would be confusingly
similar to the other and whether or not sufficient differences existed between the marks.
c. But, even if the dominancy test were to be used, as urged by the petitioners, but bearing in mind that a trademark
serves as a tool to point out distinctly the origin or ownership of the goods to which it is affixed, the likelihood of
confusion tantamount to infringement appears to be farfetched. The reason for the origin and/or ownership
angle is that unless the words or devices do so point out the origin or ownership, the person who first adopted
them cannot be injured by any appropriation or imitation of them by others, nor can the public be deceived.

d. The view of an ordinary purchaser must be considered. The ordinary purchaser in this case means one
accustomed to buy, and therefore to some extent familiar with, the goods in question. It cannot be over-
emphasized that the products involved are addicting cigarettes purchased mainly by those who are already
predisposed to a certain brand. Accordingly, the ordinary buyer thereof would be all too familiar with his brand
and discriminating as well.

TAIWAN KOLIN CORPORATION VS. KOLIN ELECTRONICS CO.

Core controversy: certificate of trademark registration of the mark “Kolin”

Taiwan Kolin (Petitioner) - filed with the Intellectual Property Office (IPO), then Bureau of Patents, Trademarks,
and Technology Transfer, a trademark application for the use of “KOLIN” on a combination of goods, including
colored televisions, refrigerators, window-type and split-type air conditioners, electric fans and water dispensers.
Although such application was eventually abandoned, it was subsequently revived, with petitioner electing Class 9
as the subject of its application.
Respondent Kolin Electronics Co., Inc. (Kolin Electronics) - opposed petitioner’s revived application arguing
that the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its “KOLIN” mark registered
on November 23, 2003, covering the following products under Class 9 of the NCL: automatic voltage regulator,
converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-
DC.
BLA-IPO - denied petitioner’s application and held that according to Sec. 123 (d) of the IP Code, a mark cannot be
registered if it is identical with a registered mark belonging to a different proprietor in respect of the same or closely-
related goods. Accordingly, respondent, as the registered owner of the mark “KOLIN” for goods falling under Class
9 of the NCL, should then be protected against anyone who impinges on its right, including petitioner who seeks to
register an identical mark to be used on goods also belonging to Class 9 of the NCL.
IPO Director General - reversed the BLA-IPO decision.
CA - found for Kolin Electronics, on the strength of the following premises: (a) the mark sought to be registered by
Taiwan Kolin is confusingly similar to the one already registered in favor of Kolin Electronics; (b) there are no other
designs, special shape or easily identifiable earmarks that would differentiate the products of both competing
companies; and (c) the intertwined use of television sets with amplifier, booster and voltage regulator bolstered the
fact that televisions can be considered as within the normal expansion of Kolin Electronics, and is thereby deemed
covered by its trademark as explicitly protected under Sec. 138 of the IP Code. Thus, the present petition.

The products covered by petitioner’s application and respondent’s registration are unrelated.

a. A certificate of trademark registration confers upon the trademark owner the exclusive right to sue those who
have adopted a similar mark not only in connection with the goods or services specified in the certificate, but
also with those that are related thereto.

b. The goods should be tested against several factors before arriving at a sound conclusion on the question of
relatedness. Among these are: (a) the business (and its location) to which the goods belong; (b) the class of
product to which the goods belong; (c) the product’s quality, quantity, or size, including the nature of the
package, wrapper or container; (d) the nature and cost of the articles; (e) the descriptive properties, physical
attributes or essential characteristics with reference to their form, composition, texture or quality; (f) the purpose
of the goods; (g) whether the article is bought for immediate consumption, that is, day-to-day household items;
(h) the fields of manufacture; (i) the conditions under which the article is usually purchased; and (j) the channels
of trade through which the goods flow, how they are distributed, marketed, displayed and sold.

c. The classification of the products under the NCL is merely part and parcel of the factors to be considered in
ascertaining whether the goods are related. It is not sufficient to state that the goods involved herein are
electronic products under Class 9 in order to establish relatedness between the goods, for this only accounts
for one of many considerations enumerated: Mere uniformity in categorization, by itself, does not automatically
preclude the registration of what appears to be an identical mark, if that be the case.

d. Finally, the ordinarily intelligent buyer is not likely to be confused. In this case, while both competing marks
refer to the word “KOLIN” written in upper case letters and in bold font, the Court at once notes the distinct visual
and aural differences between them: Kolin Electronics’ mark is italicized and colored black while that of Taiwan
Kolin is white in pantone red color background. The differing features between the two, though they may appear
minimal, are sufficient to distinguish one brand from the other.

MIGHTY CORP VS. E. & J. GALLO WINERY

Core controversy: Rights Conferred by Registration

Gallo Winery - a foreign corporation organized in California, USA, which produces different kinds of wines and
brandy products and sells them in many countries under different registered trademarks, including the GALLO AND
ERNEST & JULIO GALLO wine trademarks, filed a case before the RTC Makati for Trademark and Tradename
infringement and unfair competition against Mighty Corp. and La Campana, and their sister company Tobacco
Industries of the Philippines on the ground that the latter used their mark “Gallo” for the latter’s cigarette products.

Mighty Corp. and La Campana, and their sister company Tobacco Industries of the Philippines - are engaged
in the cultivation, manufacture, distribution and sale of tobacco products for which they have been using the GALLO
cigarette trademark since 1973. The BIR approved Tobacco Indsutries’ use of GALLO 100’s cigarette mark on Sept.
14,1973 and GALO filter. Tobacco industries applied for but eventually did not pursue its registration with then
Philippine Patent Office. Tobacco Industries assigned to La Campana the GALLO cigarette trademark, which then
on July 16, 1985, applied for trademark registration in the Philippine Patent Office. LA Campana authorized Mighty
Corp. to manufacture and sell cigarette bearing the GALLO trademark. BIR approved Mighty Corp.’s use of GALLO
100’s cigarette brand. Petitioners claim that GALLO cigarettes have been sold in the Philippines since 1973.

RTC Makati - held Mighty Corp. liable for and permanently enjoined from committing trademark infringement and
unfair competition with respect to the GALLO trademark.

Mighty Corp. is not guilty of trademark infringement and unfair competition, as it is engaged in the sale of
cigarettes and not wines.

a. The GALLO trademark registration certificates in the Philippines and in other countries expressly state that they
cover wines only, without any evidence or indication that registrant Gallo Winery expanded or intended to
expand its business to cigarettes. Thus, by strict application of Section 20 of the Trademark Law, Gallo Winery’s
exclusive right to use the GALLO trademark should be limited to wines, the only product indicated in its
registration certificates.

b. For items not listed in its certificate of registration, one cannot and should not be allowed to feign that private
respondent had invaded petitioner's exclusive domain. Section 20 of the Trademark Law provides that the
certificate of registration issued by the Director of Patents can confer upon petitioner the exclusive right to
use its own symbol only to those goods specified in the certificate, subject to any conditions and
limitations stated therein. One who has adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others for products which are of a different description.
c. If the certificate of registration were to be deemed as including goods not specified therein, then a situation may
arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may
conceive even if he had never intended to use the trademark for the said goods.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT (SIHM) VS. DEVELOPERS GROUP OF COMPANIES,


INC. (DGCI)

Core controversy: use of the Shangri-La mark and S logo

SIHM – operated by the Kuok Group since 1962, filed with the Bureau of Patents a cancellation of the registration
of the Shangri-La mark and S logo issued to respondent DGCI on the ground that the same were illegally and
fraudulently obtained and appropriated for the latter's restaurant business. While the mark and logo were only used
in the Philippines in 1987 with the establishment of EDSA Shangri-La Hotel and Resort, Inc., and Makati Shangri-
La Hotel and Resort, Inc., they were consistently and continuously used by all Shangri-La hotels and companies
around the world in their paraphernalia, such as stationeries, envelopes, business forms, menus, displays and
receipts, since 1975, from its design by William Lee.

DGCI – filed complaint for Infringement and Damages with the RTC of Quezon City against SIHM and Kuok
Philippine Properties, alleging that DGCI has, for the last eight (8) years, been the prior exclusive user in
the Philippines of the mark and logo in question and the registered owner thereof since its registration with the
Bureau of Patents in 1982 under RA No.166, as amended.

RTC and CA – ruled in favor of DGCI, stating that respondent's supposed use of the identical Shangri-La mark and
S logo of the petitioners was not evident bad faith and can actually ripen into ownership, much less registration.

SIHM is not guilty of trademark infringement

a. RA No. 166, as amended, which was in effect up to December 31, 1997, must be used in this case. 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.
Section 2-A thereof also provides that ownership of a mark is founded by actual use thereof, without
appropriation by another.

b. Since DGCI only opened its restaurant in December 1982, two and a half months after its registration in October,
said registration is void for lacking the requirement of prior use.

c. Contrary to what the CA said, The S logo appears nothing like the Old English print that the CA makes it out to
be, but is obviously a symbol with oriental or Asian overtones. At any rate, it is ludicrous to believe that the
parties would come up with the exact same lettering for the word Shangri-La and the exact same logo to boot,
if there was no intent by respondent to take advantage of the goodwill of petitioners' mark and logo.

d. One who has imitated the trademark of another cannot bring an action for infringement, particularly against the
true owner of the mark, because he would be coming to court with unclean hands. Priority is of no avail to the
bad faith plaintiff. Good faith is required in order to ensure that a second user may not merely take advantage
of the goodwill established by the true owner.

COFFEE PARTNERS, INC. VS. SAN FRANCISCO COFFEE & ROASTERY, INC.

Core controversy: use of the trademark San Fancisco Coffee


San Francisco Coffee & Roastery Inc. – filed a filed complaint with the BLA-IPO for infringement and/or unfair
competition with claims for damages against Coffee Partners Inc., alleging that the latter’s shop which was just
opened caused confusion in the minds of the public as it bore a similar name and it also engaged in the business of
selling coffee.

Coffee Partners Inc. – a local corporation engaged in the business of establishing and maintaining coffee shops
in the country, which has a has a franchise agreement with Coffee Partners Ltd., a business entity organized and
existing under the laws of British Virgin Islands for a non-exclusive right to operate coffee shops in the Philippines
using trademarks designed by CPL such as "San Francisco Coffee”, maintained that its mark could not be
confused with respondent’s trade name because of the notable distinctions in their appearances. CPI even argued
that respondent stopped operating under the said trade name when it formed a joint venture with Boyd Coffee
USA.

BLA-IPO – held that petitioner’s trademark infringed on respondent’s trade name, and that the respondent did not
abandon the use of the same.

Director General – on appeal reversed the said decision, ruling that petitioner’s use of the trademark "San Francisco
Coffee" did not infringe on respondent's trade name upon founding that respondent had stopped using its trade
name after it entered into a joint venture in 1998. It ruled that between a subsequent user of a trade name in good
faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the latter.

CA – reinstated the BLA-IPO decision.

Coffee Partners Inc. is guilty of infringement

a. A trade name, unlike a trademark, need not be registered with the IPO before an infringement suit may be filed
by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously
used in trade or commerce in the Philippines. Sec. 165.2(a) states that: “Notwithstanding any laws or regulations
providing for any obligation to register trade names, such names shall be protected, even prior to or without
registration, against any unlawful act committed by third parties…”

b. Applying either the dominancy test or the holistic test, petitioner’s "San Francisco Coffee" trademark is a clear
infringement of respondent’s "San Francisco Coffee & Roastery, Inc." trade name. The descriptive words "San
Francisco Coffee" are precisely the dominant features of respondent’s trade name. Petitioner and respondent
are engaged in the same business of selling coffee, whether wholesale or retail. The likelihood of confusion
is higher in cases where the business of one corporation is the same or substantially the same as that
of another corporation.

c. Of course, this does not mean that respondent has exclusive use of the geographic word "San Francisco" or
the generic word "coffee." Geographic or generic words are not, per se, subject to exclusive appropriation. It is
only the combination of the words "San Francisco Coffee," which is respondent’s trade name in its coffee
business, that is protected against infringement on matters related to the coffee business to avoid confusing or
deceiving the public.

ONG VS. PEOPLE

Core controversy: counterfeiting of Marlboro cigarettes

Jesse S. Lara - Senior Investigator III at the Intellectual Property Rights (IPR) Unit of the Economic Intelligence and
Investigation Bureau (EIIB), Department of Finance, received reliable information that counterfeit Marlboro cigarettes
were being distributed and sold by two (2) Chinese nationals, Johnny Sia and Jessie Concepcion, in the areas of
Tondo, Binondo, Sta. Cruz and Quiapo, Manila.

EIIB mission team – upon Lara’s order, did a test-buy on the different sari-sari stores of Manila located in Quiapo,
Tondo, Sta. Cruz and Blumentritt areas, during which, they saw a container van delivering the Marlboro packed in
black plastic bags at the premises owned by one Jackson Ong. Upon approval of its application for search warrant,
EIIB searched the said premises with the presence of Jackson’s common law wife, Gemma Ong/Gemma Catacutan
wherein they found Marlboro cigarettes stocked in several boxes containing fifty (50) reams inside each box which
were packed in black plastic sacks like in balikbayan boxes. On the basis of such, EIIB filed a case for Violations of
Sections 155 and 168 in relation to Section 170 of Republic Act No. 8293 against Jackson and Gemma Ong who
are not an authorized distributor of Marlboro products in the Philippines.

Gemma Ong – said that she is married to Co Yok Piao, a Chinese national, but she still uses her maiden name
Catacutan. She denied that she is the Gemma Ong accused in this case. She alleged that she did not know Jackson
Ong and that the prosecution witnesses, whom she first saw during her trial. Gemma denied ever having engaged
in the manufacture and sale of any kind of cigarettes and claimed that she could not even distinguish between a
fake and a genuine Marlboro cigarette.

RTC and CA – conviction of Gemma for trademark infringement under Section 155 of Republic Act No. 8293, as
the counterfeit goods seized by the EIIB were not only found in her possession and control, but also in the building
registered under her business, Fascinate Trading.

Gemma is guilty of violating Section 155 in relation to Section 170 of Republic Act No. 8293

a. To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiffs 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.

b. The prosecution was able to establish that the trademark Marlboro was not only valid for being neither generic
nor descriptive, it was also exclusively owned by PMPI, as evidenced by the certificates of registration issued
by the Intellectual Property Office of the Department of Trade and Industry.

c. Anent the element of confusion, both the RTC and the Court of Appeals have correctly held that the counterfeit
cigarettes seized from Gemma’s possession were intended to confuse and deceive the public as to the origin
of the cigarettes intended to be sold, as they not only bore PMPIs mark, but they were also packaged almost
exactly as PMPIs products.

ESPIRITU VS. PETRON

Core controversy: captured Gasul cylinders

Kristinia Patricia Enterprises (KPE) and Bicol Gas Refilling Plant Corp. (Bicol Gas) – distributors of Gasul (LPG
cylinder tanks) in Sorsogon entered into an agreement to swap their captured cylinders (cylinder tanks belonging to
other corporations) back.

Jose Doloiras – a manager of KPE, saw a Bicol Gas truck carrying mostly Bicol Gas tanks and 1 unsealed 50-kg
Gasul tank and 1 50-kg Shellane tank. The truck was asked to stop and KPE discovered that the Gasul tank was
filled up by Bicol Gas with its own LPG. The driver of the truck, in defense, said that the tank belonged to a customer
who requested that the same tank be refilled and be delivered back.

KPE –filed against Bicol Gas complaints for RA 623 (illegal filling up of tanks), Section 155(infringement) of the
IPC, and Section 169.1 of the same (unfair competition).

Provincial Prosecutor – found probable cause only for RA 623.

Regional State Prosecutor – on appeal, said that there was probable cause for RA 623 and unfair competition,
but not trademark infringement

CA – found probable cause for all three complaints.


There are no probable cause for trademark infringement and unfair competition, only for the violation of
RA 623.

a. As to the charge on trademark infringement, KPE and Petron have to show that the alleged infringer, the
responsible officers and staff of Bicol Gas, used Petrons Gasul trademark or a confusingly similar trademark on
Bicol Gas tanks with intent to deceive the public and defraud its competitor as to what it is selling. (Nike and La
Coste examples)

b. Here, however, the allegations in the complaint do not show that Bicol Gas painted on its own tanks Petron’s
Gasul trademark or a confusingly similar version of the same to deceive its customers and cheat Petron. Indeed,
in this case, the one tank bearing the mark of Petron Gasul found in a truck full of Bicol Gas tanks was a genuine
Petron Gasul tank, more of a captured cylinder belonging to competition. No proof has been shown that Bicol
Gas has gone into the business of distributing imitation Petron Gasul LPGs.

c. As to the charge on unfair competition, 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. (La Coste example)

d. Here, there is no showing that Bicol Gas has been giving its LPG tanks the general appearance of the tanks of
Petrons Gasul. As already stated, the truckfull of Bicol Gas tanks that the KPE manager arrested on a road in
Sorsogon just happened to have mixed up with them one authentic Gasul tank that belonged to Petron.

WILLAWARE PRODUCTS CORPORATION VS. JESICHRIS MANUFACTURING CORPORATION

Core controversy: manufacture and distribution of the same automotive parts

Jesichris Manufacturing Company – a duly registered partnership engaged in the manufacture and distribution of
plastic and metal products, specifically automotive parts, filed a complaint for damages for unfair competition against
Willaware Products Corporation on the ground that the latter 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.

Willaware - engaged in the production of plastic kitchenware previous to its manufacturing of plastic automotive
spare parts, engaged the services of the then mold setter and maintenance operator of respondent, De Guzman,
while he was employed by the latter and also hired Yabut who used to be a warehouse and delivery man of
respondent after the latter was fired by Jesichris as he was allegedly spying in favor of petitioner.

RTC and CA – ruled in favor of respondent Jesichris.

Willaware is guilty of unfair competition under Art. 28 of the Civil Code.

a. The instant case falls under Article 28 of the Civil Code on human relations, and not unfair competition under
Republic Act No. 8293, as the present suit is a damage suit and the products are not covered by patent
registration. 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, which follows the extended concept of “unfair competition” in American jurisdictions, the term
covers even cases of discovery of trade secrets of a competitor, bribery of his employees, misrepresentation
of all kinds, interference with the fulfilment of a competitor’s contracts, or any malicious interference with the
latter’s business.

b. 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.

c. 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. Moreover, when a person
starts an opposing place of business, not for the sake of profit to himself, but regardless of loss and for the sole
purpose of driving his competitor out of business so that later on he can take advantage of the effects of his
malevolent purpose, he is guilty of wanton wrong.

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