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Taiwan Kolin Corporation, Ltd., Petitioner v. Kolin Electronics Co. Inc.

, Moreover, the Supreme Court stated that the products covered by petitioner’s
application and respondent’s registration are unrelated. It agreed with the
petitioner on the following:
Facts: On February 29, 1996, Taiwan Kolin filed with the Intellectual Property Office
(IPO), docketed as Application No. 4-1996-106310, for the use of “KOLIN” on a
combination of goods, including colored televisions, refrigerators, window-type and  Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin
split-type air conditioners, electric fans and water dispensers. Application No. 4-1996- Electronics’ goods which are power supply and audio equipment accessories
106310 would eventually be considered abandoned for Taiwan Kolin’s failure to
respond to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage.  Taiwan Kolin’s television sets and DVD players perform distinct function and
However, the same application was subsequently revived through Application Serial purpose from Kolin Electronics’ power supply and audio equipment; and
No. 4-2002-011002, with petitioner electing Class 9 as the subject of its application,
particularly: television sets, cassette recorder, VCD Amplifiers, camcorders and other  Taiwan Kolin sells and distributes its various home appliance products on
audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, wholesale and to accredited dealers, whereas Kolin Electronics’ goods are sold
videophones, facsimile machines, teleprinters, cellular phones and automatic goods and flow through electrical and hardware stores.
vending machine.
On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT V. DEVELOPERS GROUP
petitioner’s revived application arguing that the mark Taiwan Kolin seeks to register is OF COMPANIES (G.R. NO. 159938)
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 Facts: Respondent DGCI applied for and was granted registration of the ‘Shangri-La’
regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step- mark and ‘S’ logo in its restaurant business. Petitioner Shangri-La, chain of hotels and
down transformer, and PA amplified AC-DC. establishments owned by the Kuok family worldwide, moved to cancel the registration
of the mark on the ground that it was illegally and fraudulently obtained and
Issue: Whether or not petitioner is entitled to its trademark registration of “KOLIN” appropriated by respondents. Petitioner also moved to register the mark and logo in its
over its specific goods of television sets and DVD players. own name. Later, respondent DGCI filed before the trial court a complaint for
infringement against petitioner alleging that DGCI had been the prior exclusive user
Ruling: The Supreme Court held that he petitioner’s trademark registration not only and the registered owner in the Philippines of said mark and logo. Petitioner Shangri-
covers unrelated good, but is also incapable of deceiving the ordinary intelligent buyer. La argued that respondent had no right to apply for the registration because it did not
The ordinary purchaser must be thought of as having, and credited with, at least a have prior actual commercial use thereof. The trial court found for respondent. CA
modicum of intelligence to be able to see the differences between the two trademarks affirmed.
in question.
Issue: Whether or not respondent’s prior use of the mark is a requirement for its
On the arguments that both their goods belong to Class 9 of the NCL, the Supreme
registration.
Court ruled that identical marks may be registered for products from the same
classification. The mere uniformity in categorization, by itself, does not automatically
Ruling: YES. While the present law on trademarks has dispensed with the
preclude the registration of what appears to be an identical mark, if that be the case.
requirement of prior actual use at the time of registration, the law in force at the time of
While both competing marks refer to the word "KOLIN" written in upper case letters registration must be applied. Under the provisions of the former trademark law, R.A.
and in bold font, the Court at once notes the distinct visual and aural differences No. 166, as amended, hence, the law in force at the time of respondent’s application
between them: Kolin Electronics' mark is italicized and colored black while that of for registration of trademark, the root of ownership of a trademark is actual use in
Taiwan Kolin is white in pantone red color background. The differing features between commerce. Section 2 of said law requires that before a trademark can be registered, it
the two, though they may appear minimal, are sufficient to distinguish one brand from must have been actually used in commerce and service for not less than two months
the other. in the Philippines prior to the filing of an application for its registration. Trademark is a
creation of use and therefore actual use is a pre-requisite to exclusive ownership and
The products of the contending parties are relatively luxury items not easily its registration with the Philippine Patent Office is a mere administrative confirmation
considered affordable. Accordingly, the casual buyer is predisposed to be more of the existence of such right.
cautious and discriminating in and would prefer to mull over his purchase. Confusion While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a
and deception, then, is less likely. registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-
month actual use requirement. What is worse, DGCI was not even the owner of the
mark. For it to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of respondent DGCI’s
registration of the mark, the same was already being used by the petitioners, albeit SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which
abroad, of which DGCI’s president was fully aware. 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
PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT combination with another word or phrase. When the two words are pronounced, the
SA. 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
FACTS: consumers. And although there were dissimilarities in the trademark due to the type of
Respondent is a corporation and owner of trademark PYCNOGENOL, a food. letters used as well as the size, color and design employed on their individual
Respondent later discovered that petitioner was also distributing a similar food packages/bottles, still the close relationship of the competing products’ name in
supplement using the mark PCO-GENOLS since 1996. This prompted respondent to sounds as they were pronounced, clearly indicates that purchasers could be misled
demand that petitioner cease and desist from using the aforesaid mark. into believing that they are the same and/or originates from a common source and
manufacturer.
Respondent filed a Complaint for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, in using the name PCO-GENOLS for being GEMMA ONG A.K.A. Maria Teresa Gemma Catacutan vs. PEOPLE OF THE
confusingly similar. Petitioner appealed otherwise. PHILIPPINES

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO- Facts:
GENOLS have the same suffix "GENOL" which appears to be merely descriptive and On September 10, 1998, the Senior Investigator III at the Intellectual Property Rights
thus open for trademark registration by combining it with other words and concluded (IPR) Unit of the Economic Intelligence and Investigation Bureau (EIIB), received
that the marks, when read, sound similar, and thus confusingly similar especially since reliable information that counterfeit "Marlboro “cigarettes were being distributed and
they both refer to food supplements. sold by two (2) Chinese nationals, Johnny Sia and Jessie Concepcion, in the areas of
Tondo, Binondo, Sta. Cruz and Quiapo, Manila. A mission team formed by EIIB
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate conducted surveillance operation to verify the report. EIIB agents did a "test-buy" on
court explained that under the Dominancy or the Holistic Test, PCO-GENOLS is the different sari-sari stores of Manilalocated in Quiapo, Tondo, Sta. Cruz and
deceptively similar to PYCNOGENOL. Blumentritt areas and took samples of "Marlboro" cigarettes sold therein. During the
surveillance, the container van delivering the "Marlboro" packed in black plastic bags
ISSUE: was seen parked at 1677 Bulacan corner Hizon Streets, Sta. Cruz, Manila. They
Whether the names are confusingly similar. learned that the place is owned by Mr. Jackson Ong. Initial examination made
by Philip Morris, Inc. on those random sample purchases revealed that the cigarettes
RULING: Yes. There is confusing similarity and the petition is denied. Jurisprudence were indeed fake products unauthorized by the company. Senior Investigator filed an
developed two test to prove such. application for search warrant before the RTC of Dasmariñas, Cavite, Branch 90. Said
court issued a search warrant after finding probable cause to believe that Mr. Jackson
The Dominancy Test focuses on the similarity of the prevalent features of the Ong has in his possession/control in the premises located at 1675-1677 Bulacan St.
competing trademarks that might cause confusion and deception, thus constituting cor. M. Hizon St., Sta. Cruz, Manila, the following properties: “Substantial number of
infringement. If the competing trademark contains the main, essential and dominant fake locally made and imported fake cigarettes bearing the Marlboro brand, together
features of another, and confusion or deception is likely to result, infringement takes with the corresponding labels, cartons, boxes and other packaging as well as receipts,
place. Duplication or imitation is not necessary; nor is it necessary that the infringing invoices and other documents relative to the purchase, sale, and distribution of the
label should suggest an effort to imitate. The question is whether the use of the marks aforesaid fake Marlboro cigarettes. “On September 25, 1998, the EIIB team
involved is likely to cause confusion or mistake in the mind of the public or to deceive implemented the search warrant. They proceeded to the subject premises but Jackson
purchasers. Courts will consider more the aural and visual impressions created by the Ong, the alleged owner was not there. It was the accused who entertained them. The
marks in the public mind, giving little weight to factors like prices, quality, sales outlets, team was able to search the premises and found Marlboro cigarettes stocked in
and market segments. several boxes containing fifty (50) reams inside each box which were packed in black
plastic sacks like in "balikbayan boxes. ”Thereafter, "Inventory" and "Certification in
The Holistic Test entails a consideration of the entirety of the marks as applied to the the Conduct of Search" were duly accomplished and signed by the members of the
products, including the labels and packaging, in determining confusing similarity. Not EIIB and the other representatives present during the actual search whereby the
only on the predominant words should be the focus but also on the other features accused signed her name in the said documents as "Gemma Ong," as the
appearing on both labels in order that the observer may draw his conclusion whether Owner/Representative, while a certain employee, Girlie Cantillo, also signed as
one is confusingly similar to the other. witness. The EIIB filed a case for Violation of Sections 155 and 168in relation to
Section 170 of Republic Act No. 8293 against Jackson Ong who is not an authorized
distributor of Marlboro products in the Philippines. The prosecution presented Roger trademarks owned by PETRON and SHELL .During the course of the trial, the Court
Sherman Slagle, the Director of Operations of Philip Morris Malaysia, of Appeals held the corporation as well as the individual petitioners guilty of the crimes
And Philip Morris Philippines, Inc.’s (PMPI) product/brand security expert, to testify of unfair competition and trademark infringement; to which the corporate officers deny
that according to his examination, the products they seized at the subject premises based on the fact that REGASCO is a separate juridical entity from that of the
were counterfeit cigarettes, as well as those involved during the search operation. The corporate officers. Hence, this petition
defense filed a Demurrer to Evidence but the RTC denied and thereafter, moved for
are consideration but the same was denied. The accused denied that she is the Issue: Whether or not the individual petitioners namely: Arnel Uy, Mari Antonette Uy,
Gemma Ong, accused in this case and never having engaged in the manufacture and Orlando Reyes, Ferrer Suazo and Alvin Uy should also be held liable for trademark
sale of any kind of cigarettes and claimed that she could not even distinguish between infringement and unfair competition, given that they are separate personalities from
a fake and a genuine Marlboro cigarette. The defense claimed that there was a that of the REGASCO
mistaken identity of the accused.
Ruling: The Court ruled in favor of respondents PETRON and SHELL, and held
Issues: REGASCO guilty of trademark infringement and unfair competition. However, with
Whether or not Gemma’s guilt was proven beyond reasonable doubt in light of her respect to the above-stated issue, the
alleged mistaken identity. Courtalsoheld theindividual petitionersguilty based on the premise that
“corporate officers, who, through their act, default and omission, also committed a
Ruling: crime, may themselves beheld individually liable for the crime”. In the case at bar, the
Positive identification of a culprit is of great weight in determining whether an accused Court based its proposition on the sole fact that that these corporate officers
is guilty or not. Gemma, in claiming the defense of mistaken identity, is in reality (individual petitioners in this case), being in direct control and supervision in the
denying her involvement in the crime. SC has held that the defense of denial is insipid management and conduct of the affairs of the REGASCO, must have known or should
and weak as it is easy to fabricate and difficult to prove; thus, it cannot take have been aware that the corporation itself is engaged in the act of refilling LPG
precedence over the positive testimony of the offended party. The defense of denial is cylinders bearing the marks SHELLANE and GASUL from both trademark owners
unavailing when placed astride the undisputed fact that there was positive SHELL and PETRON. The existence of corporate entity does not shield from
identification of the accused. prosecution the corporate agents who knowingly and intentionally caused the
Gemma’s defense consists of her claim of mistaken identity, her denial of her corporation itself to commit a crime. (In this case, the crime committed was trademark
involvement in the crime, and her accusation against the prosecution witnesses of infringement and unfair competition). Further, a corporate officer cannot hide behind
allegedly giving false testimonies and committing perjury are all weak, unproven, and the cloak of separate corporate personality of the corporation to escape criminal
unfounded claims, and will not stand against the strong evidence against her. Gemma liability .A corporate officer cannot protect himself behind a corporation where he is the
is guilty of violating Section 155 in relation to Section 170 of Republic Act No. actual, present and efficient actor.
8293.WHEREFORE, SC DENIES the Petition. The Decision of the Court of Appeals in
CA-G.R. CR No.28308 is AFFIRMED. SANRIO COMPANY LIMITED V. LIM

Republic Gas Corporation vs Petron Corporation Facts: Petitioner Sanrio Company, a Japanese corporation, is the copyright owner of
various animated characters sold locally by its exclusive distributor, Gift Gate
Facts: Respondents Petron Corporation (PETRON) and Pilipinas Shell Petroleum Incorporated, which allowed local entities to manufacture petitioner’s products. A search
Corporation (SHELL) are two of the largest bulk suppliers and producers of liquefied warrant was issued against respondent Lim alleged to be selling imitations of petitioner’s
petroleum gas (LPG) in the Philippines. PETRON owns the trademark GASUL products. Thereafter, petitioner filed a complaint for copyright infringement with the
cylinders used for its LPG products. Itis the sole entity authorized to allow refillers and Task-Force on Anti-Intellectual Property Piracy (TAPP) of the DOJ. Respondent
distributors to refill, use, sell and distribute GASUL LPG containers, products and its asserted that he obtained his merchandise from petitioner’s authorized manufacturers.
trademarks. SHELL, on the other hand, is the authorized user of SHELLANE cylinders The complaint was dismissed. CA affirmed and further held that the offense had already
in its production and distribution of SHELLANE LPGs. The case commenced when prescribed.
LPG Dealers’ Association of which both respondents SHELL and PETRON belong Issues:
received reports that certain entities were engaged in unauthorized refilling, sale and (1) Whether or not the action had prescribed.
distribution of LPG cylinders, bearing their respective LPG cylinder trade names. (2) Whether or not there is copyright infringement.
Thus, they filed a complaint before the NBI for an investigation regarding the illegal
trading of petroleum products. An investigation was then conducted which Ruling:
showed that several persons and establishments, including petitioner Republic Gas (1) NO. Section 2 of Act 3326 provides that the prescriptive period for violation of special
Corporation (REGASCO) were suspected of violating B.P. 33, or the law against laws starts on the day such offense was committed and is interrupted by the institution
illegal trading of petroleum products. Surveillance then revealed that REGASCO of proceedings against respondent (i.e., the accused). Petitioner in this instance filed its
unlawfully engaged in refilling the sale of LPG cylinders bearing the marks and complaint-affidavit 1 year, 10 months and 4 days after the NBI searched respondent’s
premises and seized Sanrio merchandise therefrom. Although no information was 1. That Microsoft’s issue with Beltron was really just to have leverage in forcing Beltron
immediately filed in court, respondent’s alleged violation had not yet prescribed. In the to pay the unpaid royalties; and that Microsoft should have filed a collection suit.
recent case of Brillantes v. Court of Appeals, we affirmed that the filing of the complaint
for purposes of preliminary investigation interrupts the period of prescription of criminal 2. That the computer unit allegedly purchased by the NBI agents from them cannot be
responsibility. Thus, the prescriptive period for the prosecution of the alleged violation decisively traced as coming from Beltron because the receipt issued to the agents did
of the IPC was tolled by petitioner’s timely filing of the complaint-affidavit before the not list the computer unit as one of the items bought.
TAPP. 3. That the 12 installers purchased by the agents which are actually listed in the receipt
(2) NO. To be criminally liable for violation of Section 217.3 of the IPC, the following were not manufactured by Beltron but rather they were genuine copies purchased by
requisites must be present: TMTC from an authorized Microsoft seller in Singapore.
Possession of the infringing copy and
Knowledge or suspicion that the copy is an infringement of the genuine article. 4. That the 2,831 installers seized from them were not a property of Beltron but rather
The prosecutors in this case consistently found that no probable cause existed against they were left to them by someone for safekeeping.
respondent for violation of the IPC. The TAPP found that: Evidence on record would
show that respondent bought his merchandise from legitimate sources. While it appears The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled
that some of the items seized during the search are not among those products which that the issue of the authority of Beltron to copy and sell Microsoft products should first
[GGI] authorized these establishments to produce, the fact remains that respondent be resolved in a civil suit. Microsoft appealed the decision of the DOJ secretary before
bought these from the above cited legitimate sources. At this juncture, it bears stressing the Supreme Court. Meanwhile, Beltron filed a motion to quash the search warrant
that respondent relied on the representations of these manufacturers and distributors before the RTC that issued the same. The RTC partially granted the quashal. The Court
that the items they sold were genuine. As such, it is not incumbent upon respondent to of Appeals reversed the RTC. Hwang et al did not appeal the CA decision.
verify from these sources what items [GGI] only authorized them to produce. Thus, as Issue: Whether or not the DOJ Secretary is correct.
far as respondent is concerned, the items in his possession are not infringing copies of
the original [petitioner’s] products. Ruling: No. Section 5 of Presidential Decree 49 enumerates the rights vested
exclusively on the copyright owner. Contrary to the DOJ’s ruling, the gravamen of
NBI, Microsoft Corporation vs Judy Hwang 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.
Facts: In May 1993, Microsoft Corporation and Beltron Computer Philippines, Inc. Hence, any person who performs any of the acts under Section 5 without obtaining the
entered into a Licensing Agreement. Under Section 2(a) of the Agreement, Microsoft copyright owner’s prior consent renders himself civilly and criminally liable for copyright
authorized Beltron, for a fee, to: infringement.
1. Reproduce and install no more than one copy of Windows on each Customer System
hard disk; 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
2. Distribute directly or indirectly and license copies of Windows (reproduced as per copyright, or piracy, which is a synonymous term in this connection, consists in the doing
Section 2 of the Agreement and/or acquired from an Authorized Replicator or Authorized by any person, without the consent of the owner of the copyright, of anything the sole
Distributor. right to do which is conferred by statute on the owner of the copyright.
Their agreement allowed either party to terminate if one fails to comply with their Being the copyright and trademark owner of Microsoft software, Microsoft acted well
respective obligations. Microsoft terminated the Agreement in June 1995 by reason of within its rights in filing the complaint before DOJ on the incriminating evidence obtained
Beltron’s non-payment of royalties. Later, Microsoft learned that Beltron was illegally from Beltron. Hence, it was highly irregular for the DOJ to hold that Microsoft sought
copying and selling copies of Windows. Microsoft then sought the assistance of the the issuance of the search warrants and the filing of the complaint merely to pressure
National Bureau of Investigation. NBI agents made some purchase from Beltron where Beltron to pay its overdue royalties to Microsoft.
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 There is no basis for the DOJ to rule that Microsoft must await a prior “resolution from
agreements, user manuals, and certificates of authenticity for the products purchased. the proper court of whether or not the Agreement is still binding between the parties.”
They were given a receipt which has a header of “T.M.T.C. (Phils) Inc. BELTRON Beltron has not filed any suit to question Microsoft’s termination of the Agreement.
COMPUTER”. TMTC stands for Taiwan Machinery Display and Trade Center. 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.
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 Furthermore, the articles seized from Beltron are counterfeit per se because Microsoft
case of copyright infringement against Beltron and TMTC as well as their officers (Judy does not (and could not have authorized anyone to) produce such CD installers The
Hwang et al) before the Department of Justice (DOJ). Beltron, in its counter-affidavit, copying of the genuine Microsoft software to produce these fake CDs and their
argued the following: 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 Beltron’s liability for English Proficiency Books 1 and 2 (DEP). They discovered further that the book of
copyright infringement and unfair competition. Beltron’s defense that the box of CD Robles was strikingly similar to the contents, scheme of presentation, illustrations and
installers found in their possession was only left to them for safekeeping is not tenable. illustrative examples of CET. They then sued Robles and her publisher (Goodwill
Trading Co.) for infringement and/or unfair competition with damages.
MANLY SPORTWEAR MANUFACTURING V. DADODETTE ENTERPRISES
Robles, in her defense, alleged that her sources were from foreign books; that in their
Facts: On the basis of information that respondent Dadodette Enterprises were in field, similarity in styles cannot be avoided since they come from the same background
possession of sporting goods or articles, the copyright of which belonged to petitioner and orientation. The trial court as well as the Court of Appeals ruled in favor of Robles.
Manly, the NBI applied for search warrant before the trial court which ruled on its
issuance. Thereafter, respondent moved to quash the warrant on the ground that Issue: Whether or not the Court of Appeals is correct.
petitioner’s goods are ordinary and not among the works protected under the IP Code.
The trial court annulled the warrant holding that there were certificates of registration Ruling: No. A perusal of the records yields several pages of the book DEP that are
over the same goods issued earlier than that of petitioner negating its claim that the similar if not identical with the text of CET. In several other pages the treatment and
goods were original works entitled to copyright protection. CA affirmed. manner of presentation of the topics of DEP are similar if not a rehash of that contained
in CET. The similarities in examples and material contents are so obviously present in
Issue: Whether or not the certificates of registration issued to petitioner is proof of its this case. How can similar/identical examples not be considered as a mark of copying?
ownership. Robles’ act of lifting from the book of Habana et al substantial portions of discussions
and examples, and her failure to acknowledge the same in her book is an infringement
Ruling: NO. Besides, no copyright accrues in favor of MANLY despite issuance of the of Habana et al’s copyrights.
certificates of registration and deposit pursuant to Section 2, Rule 7 of the Copyrights
Safeguards and Regulations which states: The Supreme Court also elucidated that in determining the question of infringement, the
amount of matter copied from the copyrighted work is an important consideration. To
Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the constitute infringement, it is not necessary that the whole or even a large portion of the
work is purely for recording the date of registration and deposit of the work and shall not work shall have been copied. If so much is taken that the value of the original is sensibly
be conclusive as to copyright ownership or the term of the copyrights or the rights of the diminished, or the labors of the original author are substantially and to an injurious
copyright owner, including neighboring rights. extent appropriated by another, that is sufficient in point of law to constitute piracy.
At most, the certificates of registration and deposit issued by the National Library and Francisco Joaquin, Jr. vs Franklin Drilon
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 Facts: BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and
automatically put his work under the protective mantle of the copyright law. It is not a Me. It holds rights over the show’s format and style of presentation. In 1991, BJPI’s
conclusive proof of copyright ownership. As it is, non-registration and deposit of the president Francisco Joaquin saw on TV – RPN 9’s show It’s a Date, a show which is
work within the prescribed period only makes the copyright owner liable to pay a fine. basically the same as Rhoda and Me. He eventually sued Gabriel Zosa, the manager
of the show It’s a Date. The investigating prosecutor found probable cause against
The copyright certificates issued in favor of MANLY constitute a prima facie evidence Zosa. Zosa later sought a review of the prosecutor’s resolution before the Secretary of
of validity and ownership. However, presumption of validity is not created when a Justice (Franklin Drilon). Drilon reversed the findings of the fiscal and directed him to
sufficient proof or evidence exist that may cast a doubt on the copyright validity. In the dismiss the case against Zosa.
case at bar, validity and originality will not be presumed since the copyrighted
products of MANLY are not original creations considering that these products are Issue: Whether or not the order of Drilon finding no probable cause is valid.
readily available in the market under various brands. Moreover, no copyright accrues
in favor of MANLY despite the issuance of the copyright certificate this purely serves
as a notice of recording and registration of the work and is not a conclusive proof of Ruling: Yes. The essence of copyright infringement is the copying, in whole or in part,
copyright ownership as provided in Sec. 2, Rule 7 of the Copyrights Safeguards and of copyrightable materials as defined and enumerated in Section 2 of PD. No. 49
Regulations. (Copyright Law). Apart from the manner in which it is actually expressed, however, the
idea of a dating game show is a non-copyrightable material. Ideas, concepts, formats,
or schemes in their abstract form clearly do not fall within the class of works or
materials susceptible of copyright registration as provided in PD. No. 49. What is
covered by BJPI’s copyright is the specific episodes of the show Rhoda and Me.
Pacita Habana vs Felicidad Robles
Further, BJPI should have presented the master videotape of the show in order to show
Facts: Pacita Habana and two others were the authors of College English for Today the linkage between the copyright show (Rhoda and Me) and the infringing show (It’s a
Series 1 and 2 (CET). While they were researching for books to assist them in updating Date). This is based on the ruling in 20th Century Fox vs CA (though this has been
their own book, they chanced upon the book of Felicidad Robles entitled Developing qualified by Columbia Pictures vs CA, this is still good law). Though BJPI did provide a
lot of written evidence and description to show the linkage between the shows, the same ABS-CBN Broadcasting Corporation vs Philippine Multi-Media System, Inc.
were not enough. 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 Facts: Philippine Multi-Media System, Inc. (PMSI) is a signal provider which has cable
no similarity or dissimilarity may be found by merely describing the general and satellite services. It is providing its satellite services through Dream Broadcasting
copyright/format of both dating game shows. System. PMSI has its “Free TV” and “Premium Channels”. The Free TV includes ABS-
CBN, GMA-7, and other local networks. The premium channels include AXN, Jack TV,
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., vs. etc which were paid by subscribers before such channels can be transmitted as feeds
BENJAMIN TAN to a subscriber’s TV set which has been installed with a Dream satellite.
Facts: Plaintiff-appellant: *is the owner of certain musical compositions among which ABS-CBN is a television and broadcasting corporation. It broadcasts television
are the songs entitled: "Dahil SaIyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao programs by wireless means to Metro Manila and nearby provinces, and by satellite to
Lamang" and "The Nearness Of You."*filed a complaint with the lower court for provincial stations through Channel 2 and Channel 23. The programs aired over
infringement of copyright against defendant-appellee for allowing the playing in Channels 2 and 23 are either produced by ABS-CBN or purchased from or licensed by
defendant-appellee's restaurant of said songs copyrighted in the name of the former. other producers. ABS-CBN also owns regional television stations which pattern their
programming in accordance with perceived demands of the region. Thus, television
Defendant-appellee, *countered that the complaint states no cause of action. While not programs shown in Metro Manila and nearby provinces are not necessarily shown in
denying the playing of said copyrighted compositions in his establishment, appellee other provinces.
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 In May 2002, ABS-CBN sued PMSI for allegedly engaging in rebroadcasting and
Copyright Law. thereby infringing on ABS-CBN’s copyrights; that the transmission of Channels 2 and
23 to the provinces where these two channels are not usually shown altered ABS-CBN’s
Issue: Whether or not the playing and signing of musical compositions which have been programming for the said provinces. PMSI argued that it is not infringing upon ABS-
copyrighted under the provisions of the Copyright Law (Act 3134) inside the CBN’s copyrights because it is operating under the “Must-Carry Rule” outlined in NTC
establishment of the defendant-appellee constitute a public performance for profit within (National Telecommunications Commission) Circular No. 4-08-88.
the meaning and contemplation of the Copyright Law of the Philippines; and assuming
that there were indeed public performances for profit, whether or not appellee can be Issue: Whether or not PMSI infringed upon the copyrights of ABS-CBN.
held liable therefor.
Ruling: No. The “Must-Carry Rule” under NTC Circular No. 4-08-88 falls under the
Ruling: NO. It has been held that "The playing of music in dine and dance establishment limitations on copyright. The Filipino people must be given wider access to more
which was paid for by the public in purchases of food and drink constituted "performance sources of news, information, education, sports event and entertainment programs
for profit" within a Copyright Law." Thus, it has been explained that while it is possible other than those provided for by mass media and afforded television programs to attain
in such establishments for the patrons to purchase their food and drinks and at the same a well-informed, well-versed and culturally refined citizenry and enhance their socio-
time dance to the music of the orchestra, the music is furnished and used by the economic growth. The very intent and spirit of the NTC Circular will prevent a situation
orchestra for the purpose of inducing the public to patronize the establishment and pay whereby station owners and a few networks would have unfettered power to make time
for the entertainment in the purchase of food and drinks. The defendant conducts his available only to the highest bidders, to communicate only their own views on public
place of business for profit, and it is public; and the music is performed for profit. issues, people, and to permit on the air only those with whom they agreed – contrary to
Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. the state policy that the (franchise) grantee like ABS-CBN, and other TV station owners
Appellee's allegation that the composers of the contested musical compositions waived and even the likes of PMSI, shall provide at all times sound and balanced programming
their right in favor of the general public when they allowed their intellectual creations to and assist in the functions of public information and education.
become property of the public domain before applying for the corresponding copyrights
for the same is correct. The Supreme Court has ruled that "Paragraph 33 of Patent PMSI was likewise granted a legislative franchise under Republic Act No. 8630, Section
Office Administrative Order No. 3(as amended, dated September 18, 1947) entitled 4 of which similarly states that it “shall provide adequate public service time to enable
'Rules of Practice in the Philippines Patent Office relating to the Registration of the government, through the said broadcasting stations, to reach the population on
Copyright Claims' promulgated pursuant to Republic Act165, provides among other important public issues; provide at all times sound and balanced programming; promote
things that an intellectual creation should be copyrighted thirty (30)days after its public participation such as in community programming; assist in the functions of public
publication, if made in Manila, or within the (60) days if made elsewhere, failure of which information and education.
renders such creation public property." Indeed, if the general public has made use of The “Must-Carry Rule” favors both broadcasting organizations and the public. It
the object sought to be copyrighted for thirty (30) days prior to the copyright application prevents cable television companies from excluding broadcasting organization
the law deems the object to have been donated to the public domain and the same can especially in those places not reached by signal. Also, the rule prevents cable television
no longer be copyrighted. Under the circumstances, it is clear that the musical companies from depriving viewers in far-flung areas the enjoyment of programs
compositions in question had long become public property, and are therefore beyond available to city viewers.
the protection of the Copyright Law.
CHESTER UYCO vs. VICENTE LO CENTURY CHINESE MEDICINE CO., et. al vs. PEOPLE OF THE PHILIPPINES and
LING NALAU
Facts: Petitioner: they are the officers of Wintrade which owns the subject trademarks Facts:
and their variants. 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 PETITIONER’S CLAIMS
through Wonder, their predecessor-in-interest. Moreover, PBMC had already ceased to
be a corporation and, thus, the licensing agreement between PBMC and Lo could not : Petitioners contend that the products seized from their respective stores cannot be
be given effect, particularly because the agreement was not notarized Lo failed to the subject of the search warrants and seizure as those Top Gel products are not
sufficiently prove that the burners bought from National Hardware were those that they fruits of any crime, infringed product nor intended to be used in any crime; that they
manufactured. But at the same time, they also argued that the marks "Made in Portugal"
are legitimate distributors who are authorized to sell the same, since those genuine
and "Original Portugal" are merely descriptive and refer to the source of the design and
top gel products bore the original trademark/trade name of TOP GEL MCA,
the history of manufacture. Respondent: Respondent Vicente Lo and Philippine Burners
Manufacturing Corporation (PBMC) filed a complaint against the officers of Wintrade owned and distributed by Yu. Petitioners also claim that despite the RTC's order to
Industrial Sales Corporation (Wintrade), including petitioners Chester Uyco, Winston release the seized TOP GEL products, not one had been returned; that one or two
Uychiyong and Cherry Uyco-Ong, and of National Hardware, including Mario Sy Chua, samples from each petitioner's' drugstore would have sufficed in case there is a
for violation of Section 169.1, in relation to Section 170, of RA 8293. Lo claimed that as need to present them in a criminal prosecution, and that confiscation of thousands of
the assignee for the trademarks, he had not authorized Wintrade to use these marks, these products was an overkill. Petitioners also argue that the issue that the RTC
nor had Casa Hipolito S.A. Portugal. The kerosene burners manufactured by Wintrade erred in applying the rules on search and seizure in anticipation of a civil action was
have caused confusion, mistake and deception on the part of the buying public. Lo never raised in the RTC.
stated that the real and genuine burners are those manufactured by its agent, PBMC
RESPONDENT’S CLAIMS
: Respondent Ling Na Lau, doing business under the name and style Worldwide
Issue: WON CA committed grave abuse of discretion in affirming the ruling of DOJ Pharmacy, is the sole distributor and registered trademark owner of TOP GEL T.G. &
DEVICE OF A LEAF papaya whitening soap for a period of ten years from 2003.
Respondent claims that the petitioners in this case were selling counterfeit whitening
papaya soaps bearing the general appearance of their products. There was an
Ruling: No. They allege that the words "Made in Portugal" and "Original Portugal" refer
investigation, which led to seizures of the petitioner's products because the NBI
to the origin of the design and not to the origin of the goods. The admission in the
ruled that it was counterfeit.
petitioners' Joint Affidavit is not in any way hypothetical, as they would have us believe.
They narrate incidents that have happened. They refer to Wintrade's former association Issue: WON the CA erred in reversing the RTC's quashal of the assailed search
with Casa Hipolito S.A. Portugal; to their decision to produce the burners in the
warrants
Philippines; to their use of the disputed marks; and to their justification for their use.
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 Ruling: The applications for the issuance of the assailed search warrants were for
and trade names precisely precludes a person from profiting from the business violations of Sections 155 and168, both in relation to Section 170 of Republic Act (RA)
reputation built by another and from deceiving the public as to the origins of products. No. 8293, otherwise known as the Intellectual Property Code of the Philippines. Section
These facts support the consistent findings of the State Prosecutor, the DOJ and the 155, in relation to Section 170, punishes trademark infringement; while Section 168, in
CA that probable cause exists to charge the petitioners with false designation of origin. relation to Section 170, penalizes unfair competition. The SC agrees with the CA that
The argument that the words "Made in Portugal" and "Original Portugal" refer to the A.M. No. 02-1-06-SC, which provides for the Rules on the Issuance of the Search and
origin of the design and not to the origin of the goods does not negate the finding of Seizure in Civil Actions for Infringement of Intellectual Property Rights, is not applicable
probable cause; at the same time, it is an argument that the petitioners are not barred in this case as the search warrants were not applied based thereon, but in anticipation
by this Resolution from raising as a defense during the hearing of the case. of criminal actions for violation of intellectual property rights under RA 8293.- It was
established that respondent had asked the NBI for assistance to conduct investigation
and search warrant implementation for possible apprehension of several drugstore
owners selling imitation or counterfeit TOP GEL T.G. & DEVICE OF A LEAF papaya
whitening soap. Also, in his affidavit to support his application for the issuance of the
search warrants, NBI Agent Furing stated that "the items to be seized will be used as
relevant evidence in the criminal actions that are likely to be instituted." Hence, Rule
126of the Rules of Criminal Procedure applies.- The affidavits of NBI Agent Furing and
his witnesses, Esmael and Ling, clearly showed that they are seeking protection for the
trademark "TOP GEL T.G. and DEVICE OF A LEAF" registered to respondent by the
IPO on 2003. While petitioners claim that the product they are distributing was owned
by Yu with the trademark TOP GEL MCA and MCA DEVISE, it was different from the
trademark TOP GEL T.G. and DEVICEOF A LEAF subject of the application
COCA-COLA BOTTLERS PHILS. NAGA PLANT V. GOMEZ

Facts: Petitioner Coca-Cola applied for a search warrant against Pepsi for hoarding
empty Coke bottles in Pepsi’s yard, an act allegedly penalized as unfair competition
under the IP Code. MTC issued the search warrants and the local police seized the
goods. Later, a complaint against respondents was filed for violation of the IP Code.
Respondent contended that the hoarding of empty Coke bottles did not involve fraud
and deceit for them to be liable for unfair competition. MTC upheld the validity of the
warrants. RTC voided the warrant for lack of probable cause of the commission of unfair
competition.

Issue: Whether or not respondent’s hoarding of Coke bottles constitute unfair


competition.

Ruling: NO. From jurisprudence, unfair competition has been defined as the passing
off (or palming off) or attempting to pass off upon the public the goods or business of
one person as the goods or business of another with the end and probable effect of
deceiving the public. One of the essential requisites in an action to restrain unfair
competition is proof of fraud; the intent to deceive must be shown before the right to
recover can exist. The advent of the IP Code has not significantly changed these rulings
as they are fully in accord with what Section 168 of the Code in its entirety
provides. Deception, passing off and fraud upon the public are still the key elements
that must be present for unfair competition to exist.
As basis for this interpretative analysis, we note that Section 168.1 speaks of a person
who has earned goodwill with respect to his goods and services and who is entitled to
protection under the Code, with or without a registered mark. Section 168.2, as
previously discussed, refers to the general definition of unfair competition. Section
168.3, on the other hand, refers to the specific instances of unfair competition,
with Section 168.3(a) referring to the sale of goods given the appearance of the goods
of another; Section 168.3(b), to the inducement of belief that his or her goods or
services are that of another who has earned goodwill; while the disputed Section
168.3(c) being a “catch all” clause whose coverage the parties now dispute.
Under all the above approaches, we conclude that the “hoarding” – as defined and
charged by the petitioner – does not fall within the coverage of the IP Code and of
Section 168 in particular. It does not relate to any patent, trademark, trade name or
service mark that the respondents have invaded, intruded into or used without proper
authority from the petitioner. Nor are the respondents alleged to be fraudulently “passing
off” their products or services as those of the petitioner. The respondents are not also
alleged to be undertaking any representation or misrepresentation that would confuse
or tend to confuse the goods of the petitioner with those of the respondents, or vice
versa. What in fact the petitioner alleges is an act foreign to the Code, to the concepts
it embodies and to the acts it regulates; as alleged, hoarding inflicts unfairness by
seeking to limit the opposition’s sales by depriving it of the bottles it can use for these
sales. In this light, hoarding for purposes of destruction is closer to what another law,
R.A. No. 623 covers.