Taiwan Kolin Corporation, Ltd., Petitioner v. Kolin Electronics Co. Inc.
, Moreover, the Supreme Court stated that the products covered by petitioner’s
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
split-type air conditioners, electric fans and water dispensers. Application No. 4-1996-
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.
However, the same application was subsequently revived through Application Serial
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
audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets,
videophones, facsimile machines, teleprinters, cellular phones and automatic goods
vending machine.
On July 13, 2006, 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.
Issue: Whether or not petitioner is entitled to its trademark registration of “KOLIN”
over its specific goods of television sets and DVD players.
Ruling: The Supreme Court held that he petitioner’s trademark registration not only
covers unrelated good, but is also incapable of deceiving the ordinary intelligent buyer.
The ordinary purchaser must be thought of as having, and credited with, at least a
modicum of intelligence to be able to see the differences between the two trademarks
in question.
On the arguments that both their goods belong to Class 9 of the NCL, the Supreme
Court ruled that identical marks may be registered for products from the same
classification. The 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.
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.
The products of the contending parties are relatively luxury items not easily
considered affordable. Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over his purchase. Confusion
and deception, then, is less likely.
application and respondent’s registration are unrelated. It agreed with the
petitioner on the following:
 Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin
Electronics’ goods which are power supply and audio equipment accessories
 Taiwan Kolin’s television sets and DVD players perform distinct function and
purpose from Kolin Electronics’ power supply and audio equipment; and
 Taiwan Kolin sells and distributes its various home appliance products on
wholesale and to accredited dealers, whereas Kolin Electronics’ goods are sold
and flow through electrical and hardware stores.
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT V. DEVELOPERS GROUP
OF COMPANIES (G.R. NO. 159938)
Facts: Respondent DGCI applied for and was granted registration of the ‘Shangri-La’
mark and ‘S’ logo in its restaurant business. Petitioner Shangri-La, chain of hotels and
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
appropriated by respondents. Petitioner also moved to register the mark and logo in its
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
and the registered owner in the Philippines of said mark and logo. Petitioner Shangri-
La argued that respondent had no right to apply for the registration because it did not
have prior actual commercial use thereof. The trial court found for respondent. CA
affirmed.
Issue: Whether or not respondent’s prior use of the mark is a requirement for its
registration.
Ruling: YES. While the present law on trademarks has dispensed with the
requirement of prior actual use at the time of registration, the law in force at the time of
registration must be applied. Under the provisions of the former trademark law, R.A.
No. 166, as amended, hence, the law in force at the time of respondent’s application
for registration of trademark, the root of ownership of a trademark is actual use in
commerce. Section 2 of said law requires that before a trademark can be registered, it
must have been actually used in commerce and service for not less than two months
in the Philippines prior to the filing of an application for its registration. Trademark is a
creation of use and therefore actual use is a pre-requisite to exclusive ownership and
its registration with the Philippine Patent Office is a mere administrative confirmation
of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a
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
abroad, of which DGCI’s president was fully aware.
PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT
SA.
FACTS:
Respondent is a corporation and owner of trademark PYCNOGENOL, a food.
Respondent later discovered that petitioner was also distributing a similar food
supplement using the mark PCO-GENOLS since 1996. This prompted respondent to
demand that petitioner cease and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, in using the name PCO-GENOLS for being
confusingly similar. Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-
GENOLS have the same suffix "GENOL" which appears to be merely descriptive and
thus open for trademark registration by combining it with other words and concluded
that the marks, when read, sound similar, and thus confusingly similar especially since
they both refer to food supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate
court explained that under the Dominancy or the Holistic Test, PCO-GENOLS is
deceptively similar to PYCNOGENOL.
ISSUE:
Whether the names are confusingly similar.
RULING: Yes. There is confusing similarity and the petition is denied. Jurisprudence
developed two test to prove such.
The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing
label should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or to deceive
purchasers. Courts will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, quality, sales outlets,
and market segments.
The Holistic Test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Not
only on the predominant words should be the focus but also on the other features
appearing on both labels in order that the observer may draw his conclusion whether
one is confusingly similar to the other.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which
on evidence, appears to be merely descriptive and furnish no indication of the origin of
the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the
sound effects are confusingly similar not to mention that they are both described by
their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of
letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products’ name in
sounds as they were pronounced, clearly indicates that purchasers could be misled
into believing that they are the same and/or originates from a common source and
manufacturer.
GEMMA ONG A.K.A. Maria Teresa Gemma Catacutan vs. PEOPLE OF THE
PHILIPPINES
Facts:
On September 10, 1998, the Senior Investigator III at the Intellectual Property Rights
(IPR) Unit of the Economic Intelligence and Investigation Bureau (EIIB), 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. A mission team formed by EIIB
conducted surveillance operation to verify the report. EIIB agents did a "test-buy" on
the different sari-sari stores of Manilalocated in Quiapo, Tondo, Sta. Cruz and
Blumentritt areas and took samples of "Marlboro" cigarettes sold therein. During the
surveillance, the container van delivering the "Marlboro" packed in black plastic bags
was seen parked at 1677 Bulacan corner Hizon Streets, Sta. Cruz, Manila. They
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
were indeed fake products unauthorized by the company. Senior Investigator filed an
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
Ong has in his possession/control in the premises located at 1675-1677 Bulacan St.
cor. M. Hizon St., Sta. Cruz, Manila, the following properties: “Substantial number of
fake locally made and imported fake cigarettes bearing the Marlboro brand, together
with the corresponding labels, cartons, boxes and other packaging as well as receipts,
invoices and other documents relative to the purchase, sale, and distribution of the
aforesaid fake Marlboro cigarettes. “On September 25, 1998, the EIIB team
implemented the search warrant. They proceeded to the subject premises but Jackson
Ong, the alleged owner was not there. It was the accused who entertained them. The
team was able to search the premises and 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. ”Thereafter, "Inventory" and "Certification in
the Conduct of Search" were duly accomplished and signed by the members of the
EIIB and the other representatives present during the actual search whereby the
accused signed her name in the said documents as "Gemma Ong," as the
Owner/Representative, while a certain employee, Girlie Cantillo, also signed as
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
Sherman Slagle, the Director of Operations of Philip Morris Malaysia,
And Philip Morris Philippines, Inc.’s (PMPI) product/brand security expert, to testify
that according to his examination, the products they seized at the subject premises
were counterfeit cigarettes, as well as those involved during the search operation. The
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
Gemma Ong, accused in this case and never 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. The defense claimed that there was a
mistaken identity of the accused.
Issues:
Whether or not Gemma’s guilt was proven beyond reasonable doubt in light of her
alleged mistaken identity.
Ruling:
Positive identification of a culprit is of great weight in determining whether an accused
is guilty or not. Gemma, in claiming the defense of mistaken identity, is in reality
denying her involvement in the crime. SC has held that the defense of denial is insipid
and weak as it is easy to fabricate and difficult to prove; thus, it cannot take
precedence over the positive testimony of the offended party. The defense of denial is
unavailing when placed astride the undisputed fact that there was positive
identification of the accused.
Gemma’s defense consists of her claim of mistaken identity, her denial of her
involvement in the crime, and her accusation against the prosecution witnesses of
allegedly giving false testimonies and committing perjury are all weak, unproven, and
unfounded claims, and will not stand against the strong evidence against her. Gemma
is guilty of violating Section 155 in relation to Section 170 of Republic Act No.
8293.WHEREFORE, SC DENIES the Petition. The Decision of the Court of Appeals in
CA-G.R. CR No.28308 is AFFIRMED.
Republic Gas Corporation vs Petron Corporation
Facts: Respondents Petron Corporation (PETRON) and Pilipinas Shell Petroleum
Corporation (SHELL) are two of the largest bulk suppliers and producers of liquefied
petroleum gas (LPG) in the Philippines. PETRON owns the trademark GASUL
cylinders used for its LPG products. Itis the sole entity authorized to allow refillers and
distributors to refill, use, sell and distribute GASUL LPG containers, products and its
trademarks. SHELL, on the other hand, is the authorized user of SHELLANE cylinders
in its production and distribution of SHELLANE LPGs. The case commenced when
LPG Dealers’ Association of which both respondents SHELL and PETRON belong
received reports that certain entities were engaged in unauthorized refilling, sale and
distribution of LPG cylinders, bearing their respective LPG cylinder trade names.
Thus, they filed a complaint before the NBI for an investigation regarding the illegal
trading of petroleum products. An investigation was then conducted which
showed that several persons and establishments, including petitioner Republic Gas
Corporation (REGASCO) were suspected of violating B.P. 33, or the law against
illegal trading of petroleum products. Surveillance then revealed that REGASCO
unlawfully engaged in refilling the sale of LPG cylinders bearing the marks and
trademarks owned by PETRON and SHELL .During the course of the trial, the Court
of Appeals held the corporation as well as the individual petitioners guilty of the crimes
of unfair competition and trademark infringement; to which the corporate officers deny
based on the fact that REGASCO is a separate juridical entity from that of the
corporate officers. Hence, this petition
Issue: Whether or not the individual petitioners namely: Arnel Uy, Mari Antonette Uy,
Orlando Reyes, Ferrer Suazo and Alvin Uy should also be held liable for trademark
infringement and unfair competition, given that they are separate personalities from
that of the REGASCO
Ruling: The Court ruled in favor of respondents PETRON and SHELL, and held
REGASCO guilty of trademark infringement and unfair competition. However, with
respect to the above-stated issue, the
Courtalsoheld theindividual petitionersguilty based on the premise that
“corporate officers, who, through their act, default and omission, also committed a
crime, may themselves beheld individually liable for the crime”. In the case at bar, the
Court based its proposition on the sole fact that that these corporate officers
(individual petitioners in this case), being in direct control and supervision in the
management and conduct of the affairs of the REGASCO, must have known or should
have been aware that the corporation itself is engaged in the act of refilling LPG
cylinders bearing the marks SHELLANE and GASUL from both trademark owners
SHELL and PETRON. The existence of corporate entity does not shield from
prosecution the corporate agents who knowingly and intentionally caused the
corporation itself to commit a crime. (In this case, the crime committed was trademark
infringement and unfair competition). Further, a corporate officer cannot hide behind
the cloak of separate corporate personality of the corporation to escape criminal
liability .A corporate officer cannot protect himself behind a corporation where he is the
actual, present and efficient actor.
SANRIO COMPANY LIMITED V. LIM
Facts: Petitioner Sanrio Company, a Japanese corporation, is the copyright owner of
various animated characters sold locally by its exclusive distributor, Gift Gate
Incorporated, which allowed local entities to manufacture petitioner’s products. A search
warrant was issued against respondent Lim alleged to be selling imitations of petitioner’s
products. Thereafter, petitioner filed a complaint for copyright infringement with the
Task-Force on Anti-Intellectual Property Piracy (TAPP) of the DOJ. Respondent
asserted that he obtained his merchandise from petitioner’s authorized manufacturers.
The complaint was dismissed. CA affirmed and further held that the offense had already
prescribed.
Issues:
(1) Whether or not the action had prescribed.
(2) Whether or not there is copyright infringement.
Ruling:
(1) NO. Section 2 of Act 3326 provides that the prescriptive period for violation of special
laws starts on the day such offense was committed and is interrupted by the institution
of proceedings against respondent (i.e., the accused). Petitioner in this instance filed its
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
immediately filed in court, respondent’s alleged violation had not yet prescribed. In the
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
responsibility. Thus, the prescriptive period for the prosecution of the alleged violation
of the IPC was tolled by petitioner’s timely filing of the complaint-affidavit before the
TAPP.
(2) NO. To be criminally liable for violation of Section 217.3 of the IPC, the following
requisites must be present:
Possession of the infringing copy and
Knowledge or suspicion that the copy is an infringement of the genuine article.
The prosecutors in this case consistently found that no probable cause existed against
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
that some of the items seized during the search are not among those products which
[GGI] authorized these establishments to produce, the fact remains that respondent
bought these from the above cited legitimate sources. At this juncture, it bears stressing
that respondent relied on the representations of these manufacturers and distributors
that the items they sold were genuine. As such, it is not incumbent upon respondent to
verify from these sources what items [GGI] only authorized them to produce. Thus, as
far as respondent is concerned, the items in his possession are not infringing copies of
the original [petitioner’s] products.
NBI, Microsoft Corporation vs Judy Hwang
Facts: In May 1993, Microsoft Corporation and Beltron Computer Philippines, Inc.
entered into a Licensing Agreement. Under Section 2(a) of the Agreement, Microsoft
authorized Beltron, for a fee, to:
1. Reproduce and install no more than one copy of Windows on each Customer System
hard disk;
2. Distribute directly or indirectly and license copies of Windows (reproduced as per
Section 2 of the Agreement and/or acquired from an Authorized Replicator or Authorized
Distributor.
Their agreement allowed either party to terminate if one fails to comply with their
respective obligations. Microsoft terminated the Agreement in June 1995 by reason of
Beltron’s non-payment of royalties. Later, Microsoft learned that Beltron was illegally
copying and selling copies of Windows. Microsoft then sought the assistance of the
National Bureau of Investigation. NBI agents made some purchase from Beltron where
they acquired a computer unit pre-installed with Windows, 12 windows installer CDs
packed as Microsoft products. The agents were not given the end-user license
agreements, user manuals, and certificates of authenticity for the products purchased.
They were given a receipt which has a header of “T.M.T.C. (Phils) Inc. BELTRON
COMPUTER”. TMTC stands for Taiwan Machinery Display and Trade Center.
A search warrant was subsequently issued where 2,831 CDs of Windows installers,
among others, were seized. Based on the items seized from Beltron, Microsoft filed a
case of copyright infringement against Beltron and TMTC as well as their officers (Judy
Hwang et al) before the Department of Justice (DOJ). Beltron, in its counter-affidavit,
argued the following:
1. That Microsoft’s issue with Beltron was really just to have leverage in forcing Beltron
to pay the unpaid royalties; and that Microsoft should have filed a collection suit.
2. That the computer unit allegedly purchased by the NBI agents from them cannot be
decisively traced as coming from Beltron because the receipt issued to the agents did
not list the computer unit as one of the items bought.
3. That the 12 installers purchased by the agents which are actually listed in the receipt
were not manufactured by Beltron but rather they were genuine copies purchased by
TMTC from an authorized Microsoft seller in Singapore.
4. That the 2,831 installers seized from them were not a property of Beltron but rather
they were left to them by someone for safekeeping.
The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled
that the issue of the authority of Beltron to copy and sell Microsoft products should first
be resolved in a civil suit. Microsoft appealed the decision of the DOJ secretary before
the Supreme Court. Meanwhile, Beltron filed a motion to quash the search warrant
before the RTC that issued the same. The RTC partially granted the quashal. The Court
of Appeals reversed the RTC. Hwang et al did not appeal the CA decision.
Issue: Whether or not the DOJ Secretary is correct.
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
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 owner’s prior consent renders himself civilly and criminally liable for copyright
infringement.
Infringement of a copyright is a trespass on a private domain owned and occupied by
the owner of the copyright, and, therefore, protected by law, and infringement of
copyright, or piracy, which is a synonymous term in this connection, consists in the doing
by any person, without the consent of the owner of the copyright, of anything the sole
right to do which is conferred by statute on the owner of the copyright.
Being the copyright and trademark owner of Microsoft software, Microsoft acted well
within its rights in filing the complaint before DOJ on the incriminating evidence obtained
from Beltron. Hence, it was highly irregular for the DOJ to hold that Microsoft sought
the issuance of the search warrants and the filing of the complaint merely to pressure
Beltron to pay its overdue royalties to Microsoft.
There is no basis for the DOJ to rule that Microsoft must await a prior “resolution from
the proper court of whether or not the Agreement is still binding between the parties.”
Beltron has not filed any suit to question Microsoft’s termination of the Agreement.
Microsoft can neither be expected nor compelled to wait until Beltron decides to sue
before Microsoft can seek remedies for violation of its intellectual property rights.
Furthermore, the articles seized from Beltron are counterfeit per se because Microsoft
does not (and could not have authorized anyone to) produce such CD installers The
copying of the genuine Microsoft software to produce these fake CDs and their
distribution are illegal even if the copier or distributor is a Microsoft licensee. As far as
these installer CD-ROMs are concerned, the Agreement (and the alleged question on
the validity of its termination) is immaterial to the determination of Beltron’s liability for
copyright infringement and unfair competition. Beltron’s defense that the box of CD
installers found in their possession was only left to them for safekeeping is not tenable.
MANLY SPORTWEAR MANUFACTURING V. DADODETTE ENTERPRISES
Facts: On the basis of information that respondent Dadodette Enterprises were in
possession of sporting goods or articles, the copyright of which belonged to petitioner
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
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
over the same goods issued earlier than that of petitioner negating its claim that the
goods were original works entitled to copyright protection. CA affirmed.
Issue: Whether or not the certificates of registration issued to petitioner is proof of its
ownership.
Ruling: NO. Besides, no copyright accrues in favor of MANLY despite issuance of the
certificates of registration and deposit pursuant to Section 2, Rule 7 of the Copyrights
Safeguards and Regulations which states:
Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the
work is purely for recording the date of registration and deposit of the work and shall not
be conclusive as to copyright ownership or the term of the copyrights or the rights of the
copyright owner, including neighboring rights.
At most, the certificates of registration and deposit issued by the National Library and
the Supreme Court Library serve merely as a notice of recording and registration of the
work but do not confer any right or title upon the registered copyright owner or
automatically put his work under the protective mantle of the copyright law. It is not a
conclusive proof of copyright ownership. As it is, non-registration and deposit of the
work within the prescribed period only makes the copyright owner liable to pay a fine.
The copyright certificates issued in favor of MANLY constitute a prima facie evidence
of validity and ownership. However, presumption of validity is not created when a
sufficient proof or evidence exist that may cast a doubt on the copyright validity. In the
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
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
copyright ownership as provided in Sec. 2, Rule 7 of the Copyrights Safeguards and
Regulations.
Pacita Habana vs Felicidad Robles
Facts: Pacita Habana and two others were the authors of College English for Today
Series 1 and 2 (CET). While they were researching for books to assist them in updating
their own book, they chanced upon the book of Felicidad Robles entitled Developing
English Proficiency Books 1 and 2 (DEP). They discovered further that the book of
Robles was strikingly similar to the contents, scheme of presentation, illustrations and
illustrative examples of CET. They then sued Robles and her publisher (Goodwill
Trading Co.) for infringement and/or unfair competition with damages.
Robles, in her defense, alleged that her sources were from foreign books; that in their
field, similarity in styles cannot be avoided since they come from the same background
and orientation. The trial court as well as the Court of Appeals ruled in favor of Robles.
Issue: Whether or not the Court of Appeals is correct.
Ruling: No. A perusal of the records yields several pages of the book DEP that are
similar if not identical with the text of CET. In several other pages the treatment and
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
this case. How can similar/identical examples not be considered as a mark of copying?
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
of Habana et al’s copyrights.
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
constitute infringement, it is not necessary that the whole or even a large portion of the
work shall have been copied. If so much is taken that the value of the original is sensibly
diminished, or the labors of the original author are substantially and to an injurious
extent appropriated by another, that is sufficient in point of law to constitute piracy.
Francisco Joaquin, Jr. vs Franklin Drilon
Facts: BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and
Me. It holds rights over the show’s format and style of presentation. In 1991, BJPI’s
president Francisco Joaquin saw on TV – RPN 9’s show It’s a Date, a show which is
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
Zosa. Zosa later sought a review of the prosecutor’s resolution before the Secretary of
Justice (Franklin Drilon). Drilon reversed the findings of the fiscal and directed him to
dismiss the case against Zosa.
Issue: Whether or not the order of Drilon finding no probable cause is valid.
Ruling: Yes. The essence of copyright infringement is the copying, in whole or in part,
of copyrightable materials as defined and enumerated in Section 2 of PD. No. 49
(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.
Further, BJPI should have presented the master videotape of the show in order to show
the linkage between the copyright show (Rhoda and Me) and the infringing show (It’s a
Date). This is based on the ruling in 20th Century Fox vs CA (though this has been
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
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
no similarity or dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., vs.
BENJAMIN TAN
Facts: Plaintiff-appellant: *is the owner of certain musical compositions among which
are the songs entitled: "Dahil SaIyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."*filed a complaint with the lower court for
infringement of copyright against defendant-appellee for allowing the playing in
defendant-appellee's restaurant of said songs copyrighted in the name of the former.
Defendant-appellee, *countered that the complaint states no cause of action. While not
denying the playing of said copyrighted compositions in his establishment, appellee
maintains that the mere singing and playing of songs and popular tunes even if they are
copyrighted do not constitute an infringement under the provisions of Section 3 of the
Copyright Law.
Issue: Whether or not the playing and signing of musical compositions which have been
copyrighted under the provisions of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a public performance for profit within
the meaning and contemplation of the Copyright Law of the Philippines; and assuming
that there were indeed public performances for profit, whether or not appellee can be
held liable therefor.
Ruling: NO. It has been held that "The playing of music in dine and dance establishment
which was paid for by the public in purchases of food and drink constituted "performance
for profit" within a Copyright Law." Thus, it has been explained that while it is possible
in such establishments for the patrons to purchase their food and drinks and at the same
time dance to the music of the orchestra, the music is furnished and used by the
orchestra for the purpose of inducing the public to patronize the establishment and pay
for the entertainment in the purchase of food and drinks. The defendant conducts his
place of business for profit, and it is public; and the music is performed for profit.
Nevertheless, appellee cannot be said to have infringed upon the Copyright Law.
Appellee's allegation that the composers of the contested musical compositions waived
their right in favor of the general public when they allowed their intellectual creations to
become property of the public domain before applying for the corresponding copyrights
for the same is correct. The Supreme Court has ruled that "Paragraph 33 of Patent
Office Administrative Order No. 3(as amended, dated September 18, 1947) entitled
'Rules of Practice in the Philippines Patent Office relating to the Registration of
Copyright Claims' promulgated pursuant to Republic Act165, provides among other
things that an intellectual creation should be copyrighted thirty (30)days after its
publication, if made in Manila, or within the (60) days if made elsewhere, failure of which
renders such creation public property." Indeed, if the general public has made use of
the object sought to be copyrighted for thirty (30) days prior to the copyright application
the law deems the object to have been donated to the public domain and the same can
no longer be copyrighted. Under the circumstances, it is clear that the musical
compositions in question had long become public property, and are therefore beyond
the protection of the Copyright Law.
ABS-CBN Broadcasting Corporation vs Philippine Multi-Media System, Inc.
Facts: Philippine Multi-Media System, Inc. (PMSI) is a signal provider which has cable
and satellite services. It is providing its satellite services through Dream Broadcasting
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,
etc which were paid by subscribers before such channels can be transmitted as feeds
to a subscriber’s TV set which has been installed with a Dream satellite.
ABS-CBN is a television and broadcasting corporation. It broadcasts television
programs by wireless means to Metro Manila and nearby provinces, and by satellite to
provincial stations through Channel 2 and Channel 23. The programs aired over
Channels 2 and 23 are either produced by ABS-CBN or purchased from or licensed by
other producers. ABS-CBN also owns regional television stations which pattern their
programming in accordance with perceived demands of the region. Thus, television
programs shown in Metro Manila and nearby provinces are not necessarily shown in
other provinces.
In May 2002, ABS-CBN sued PMSI for allegedly engaging in rebroadcasting and
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
programming for the said provinces. PMSI argued that it is not infringing upon ABS-
CBN’s copyrights because it is operating under the “Must-Carry Rule” outlined in NTC
(National Telecommunications Commission) Circular No. 4-08-88.
Issue: Whether or not PMSI infringed upon the copyrights of ABS-CBN.
Ruling: No. The “Must-Carry Rule” under NTC Circular No. 4-08-88 falls under the
limitations on copyright. The Filipino people must be given wider access to more
sources of news, information, education, sports event and entertainment programs
other than those provided for by mass media and afforded television programs to attain
a well-informed, well-versed and culturally refined citizenry and enhance their socio-
economic growth. The very intent and spirit of the NTC Circular will prevent a situation
whereby station owners and a few networks would have unfettered power to make time
available only to the highest bidders, to communicate only their own views on public
issues, people, and to permit on the air only those with whom they agreed – contrary to
the state policy that the (franchise) grantee like ABS-CBN, and other TV station owners
and even the likes of PMSI, shall provide at all times sound and balanced programming
and assist in the functions of public information and education.
PMSI was likewise granted a legislative franchise under Republic Act No. 8630, Section
4 of which similarly states that it “shall provide adequate public service time to enable
the government, through the said broadcasting stations, to reach the population on
important public issues; provide at all times sound and balanced programming; promote
public participation such as in community programming; assist in the functions of public
information and education.
The “Must-Carry Rule” favors both broadcasting organizations and the public. It
prevents cable television companies from excluding broadcasting organization
especially in those places not reached by signal. Also, the rule prevents cable television
companies from depriving viewers in far-flung areas the enjoyment of programs
available to city viewers.
CHESTER UYCO vs. VICENTE LO
Facts: Petitioner: they are the officers of Wintrade which owns the subject trademarks
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
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
be given effect, particularly because the agreement was not notarized Lo failed to
sufficiently prove that the burners bought from National Hardware were those that they
manufactured. But at the same time, they also argued that the marks "Made in Portugal"
and "Original Portugal" are merely descriptive and refer to the source of the design and
the history of manufacture. Respondent: Respondent Vicente Lo and Philippine Burners
Manufacturing Corporation (PBMC) filed a complaint against the officers of Wintrade
Industrial Sales Corporation (Wintrade), including petitioners Chester Uyco, Winston
Uychiyong and Cherry Uyco-Ong, and of National Hardware, including Mario Sy Chua,
for violation of Section 169.1, in relation to Section 170, of RA 8293. Lo claimed that as
the assignee for the trademarks, he had not authorized Wintrade to use these marks,
nor had Casa Hipolito S.A. Portugal. The kerosene burners manufactured by Wintrade
have caused confusion, mistake and deception on the part of the buying public. Lo
stated that the real and genuine burners are those manufactured by its agent, PBMC
Issue: WON CA committed grave abuse of discretion in affirming the ruling of DOJ
Ruling: No. They allege that the words "Made in Portugal" and "Original Portugal" refer
to the origin of the design and not to the origin of the goods. The admission in the
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
with Casa Hipolito S.A. Portugal; to their decision to produce the burners in the
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
and trade names precisely precludes a person from profiting from the business
reputation built by another and from deceiving the public as to the origins of products.
These facts support the consistent findings of the State Prosecutor, the DOJ and the
CA that probable cause exists to charge the petitioners with false designation of origin.
The argument that the words "Made in Portugal" and "Original Portugal" refer to the
origin of the design and not to the origin of the goods does not negate the finding of
probable cause; at the same time, it is an argument that the petitioners are not barred
by this Resolution from raising as a defense during the hearing of the case.
CENTURY CHINESE MEDICINE CO., et. al vs. PEOPLE OF THE PHILIPPINES and
LING NALAU
Facts:
PETITIONER’S CLAIMS
: Petitioners contend that the products seized from their respective stores cannot be
the subject of the search warrants and seizure as those Top Gel products are not
fruits of any crime, infringed product nor intended to be used in any crime; that they
are legitimate distributors who are authorized to sell the same, since those genuine
top gel products bore the original trademark/trade name of TOP GEL MCA,
owned and distributed by Yu. Petitioners also claim that despite the RTC's order to
release the seized TOP GEL products, not one had been returned; that one or two
samples from each petitioner's' drugstore would have sufficed in case there is a
need to present them in a criminal prosecution, and that confiscation of thousands of
these products was an overkill. Petitioners also argue that the issue that the RTC
erred in applying the rules on search and seizure in anticipation of a civil action was
never raised in the RTC.
RESPONDENT’S CLAIMS
: Respondent Ling Na Lau, doing business under the name and style Worldwide
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
investigation, which led to seizures of the petitioner's products because the NBI
ruled that it was counterfeit.
Issue: WON the CA erred in reversing the RTC's quashal of the assailed search
warrants
Ruling: The applications for the issuance of the assailed search warrants were for
violations of Sections 155 and168, both in relation to Section 170 of Republic Act (RA)
No. 8293, otherwise known as the Intellectual Property Code of the Philippines. Section
155, in relation to Section 170, punishes trademark infringement; while Section 168, in
relation to Section 170, penalizes unfair competition. The SC agrees with the CA that
A.M. No. 02-1-06-SC, which provides for the Rules on the Issuance of the Search and
Seizure in Civil Actions for Infringement of Intellectual Property Rights, is not applicable
in this case as the search warrants were not applied based thereon, but in anticipation
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.