G.R. No.

161295 June 29, 2005

JESSIE G. CHING, petitioner,

vs.
WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y.
SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE PRODUCT CORPORATION), respondents.

DECISION

CALLEJO, SR., J.:

This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals
(CA) in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders3 of the
Regional Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos.
01-2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of
plastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of
Copyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing
for Automobile."4

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works.5

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against
William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product
Corporation. It was alleged that the respondents therein reproduced and distributed the said models
penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought
the seizure of the following:

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of
plastic polypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of
polyvinyl chloride plastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride
plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the
manufacture/fabrication of items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts.6
The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the
seizure of the aforecited articles.7 In the inventory submitted by the NBI agent, it appears that the
following articles/items were seized based on the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene

- C190 27 }

- C240 rear 40 }

- C240 front 41 } BAG 1

b) Polyvinyl Chloride Plastic

- C190 13 }

c) Vehicle bearing cushion

- center bearing cushion 11 }

Budder for C190 mold 8 }

Diesel Mold

a) Mold for spring eye bushing rear 1 set

b) Mold for spring eye bushing front 1 set

c) Mold for spring eye bushing for C190 1 set

d) Mold for C240 rear 1 piece of the set

e) Mold for spring eye bushing for L300 2 sets

f) Mold for leaf spring eye bushing C190 with metal 1 set

g) Mold for vehicle bearing cushion 1 set8

The respondents filed a motion to quash the search warrants on the following grounds:

2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground
that:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaning – there (sic)
are original parts that they are designed to replace. Hence, they are not original.9
The respondents averred that the works covered by the certificates issued by the National Library
are not artistic in nature; they are considered automotive spare parts and pertain to technology. They
aver that the models are not original, and as such are the proper subject of a patent, not copyright.10

In opposing the motion, the petitioner averred that the court which issued the search warrants was
not the proper forum in which to articulate the issue of the validity of the copyrights issued to him.
Citing the ruling of the Court in Malaloan v. Court of Appeals,11 the petitioner stated that a search
warrant is merely a judicial process designed by the Rules of Court in anticipation of a criminal case.
Until his copyright was nullified in a proper proceeding, he enjoys rights of a registered owner/holder
thereof.

On January 3, 2002, the trial court issued an Order12 granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance. The court ruled that the work
covered by the certificates issued to the petitioner pertained to solutions to technical problems, not
literary and artistic as provided in Article 172 of the Intellectual Property Code.

His motion for reconsideration of the order having been denied by the trial court’s Order of February
14, 2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no
jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by the
National Library. He insisted that his works are covered by Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner averred that the copyright certificates are prima
facie evidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife
Express Corporation v. Carol Wright Sales, Inc.13 The petitioner asserted that the respondents failed
to adduce evidence to support their motion to quash the search warrants. The petitioner noted that
respondent William Salinas, Jr. was not being honest, as he was able to secure a similar copyright
registration of a similar product from the National Library on January 14, 2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the
RTC did not commit any grave abuse of its discretion in issuing the assailed order, to wit:

It is settled that preliminarily, there must be a finding that a specific offense must have been
committed to justify the issuance of a search warrant. In a number of cases decided by the Supreme
Court, the same is explicitly provided, thus:

"The probable cause must be in connection with one specific offense, and the judge must, before
issuing the warrant, personally examine in the form of searching questions and answers, in writing
and under oath, the complainant and any witness he may produce, on facts personally known to
them and attach to the record their sworn statements together with any affidavit submitted.

"In the determination of probable cause, the court must necessarily resolve whether or not an
offense exists to justify the issuance or quashal of the search warrant."

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but
subsequently quashed, for the offense of Violation of Class Designation of Copyrightable Works
under Section 177.1 in relation to Section 177.3 of Republic Act 8293, when the objects subject of
the same, are patently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works
(Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing
Cushion fall on neither classification. Accordingly, if, in the first place, the item subject of the petition
is not entitled to be protected by the law on copyright, how can there be any violation?14
The petitioner’s motion for reconsideration of the said decision suffered the same fate. The petitioner
forthwith filed the present petition for review on certiorari, contending that the revocation of his
copyright certificates should be raised in a direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of
his copyright in a proceeding to quash a search warrant for allegedly infringing items, the RTC
committed a grave abuse of its discretion when it declared that his works are not copyrightable in the
first place. He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, which took effect on January 1, 1998, provides in no uncertain terms that copyright
protection automatically attaches to a work by the sole fact of its creation, irrespective of its mode or
form of expression, as well as of its content, quality or purpose.15 The law gives a non-inclusive
definition of "work" as referring to original intellectual creations in the literary and artistic domain
protected from the moment of their creation; and includes original ornamental designs or models for
articles of manufacture, whether or not registrable as an industrial design and other works of applied
art under Section 172.1(h) of R.A. No. 8293. lawphil.net

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to
which the petitioner’s utility designs were classified. Moreover, according to the petitioner, what the
Copyright Law protects is the author’s intellectual creation, regardless of whether it is one with
utilitarian functions or incorporated in a useful article produced on an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry of
an article eligible for patent bars or invalidates its registration under the Law on Copyright. The test
of protection for the aesthetic is not beauty and utility, but art for the copyright and invention of
original and ornamental design for design patents.16 In like manner, the fact that his utility designs or
models for articles of manufacture have been expressed in the field of automotive parts, or based on
something already in the public domain does not automatically remove them from the protection of
the Law on Copyright.17

The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same
presumption to an affidavit executed by an author who claims copyright ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search warrant
means merely a reasonable suspicion of the commission of the offense. It is not equivalent to
absolute certainty or a finding of actual and positive cause.18 He assists that the determination of
probable cause does not concern the issue of whether or not the alleged work is copyrightable. He
maintains that to justify a finding of probable cause in the issuance of a search warrant, it is enough
that there exists a reasonable suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright is
valid; hence, the burden of overturning this presumption is on the alleged infringers, the respondents
herein. But this burden cannot be carried in a hearing on a proceeding to quash the search warrants,
as the issue therein is whether there was probable cause for the issuance of the search warrant. The
petitioner concludes that the issue of probable cause should be resolved without invalidating his
copyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially a
technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e.,
from rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong
enough to endure pressure brought about by the vibration of the counter bearing and thus brings
bushings. Such work, the respondents assert, is the subject of copyright under Section 172.1 of R.A.
No. 8293. The respondents posit that a technical solution in any field of human activity which is
novel may be the subject of a patent, and not of a copyright. They insist that the certificates issued
by the National Library are only certifications that, at a point in time, a certain work was deposited in
the said office. Furthermore, the registration of copyrights does not provide for automatic protection.
Citing Section 218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if a
party categorically questions its existence and legality. Moreover, under Section 2, Rule 7 of the
Implementing Rules of R.A. No. 8293, the registration and deposit of work is not conclusive as to
copyright outlay or the time of copyright or the right of the copyright owner. The respondents
maintain that a copyright exists only when the work is covered by the protection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models
are copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears
stressing that upon the filing of the application for search warrant, the RTC was duty-bound to
determine whether probable cause existed, in accordance with Section 4, Rule 126 of the Rules of
Criminal Procedure:

SEC. 4. Requisite for issuing search warrant. – A search warrant shall not issue but upon probable
cause in connection with one specific offense to be determined personally by the judge after
examination under oath or affirmation of the complainant and the witnesses he may produce, and,
particularly, describing the place to be searched and the things to be seized.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in the
determination of probable cause, the court must necessarily resolve whether or not an offense exists
to justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed,
probable cause is deemed to exist only where facts and circumstances exist which could lead a
reasonably cautious and prudent man to believe that an offense has been committed or is being
committed. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant
may be issued for the search and seizure of personal property (a) subject of the offense; (b) stolen
or embezzled and other proceeds or fruits of the offense; or (c) used or intended to be used as the
means of committing an offense.

The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine
probable cause. The court cannot abdicate its constitutional obligation by refusing to determine
whether an offense has been committed.20 The absence of probable cause will cause the outright
nullification of the search warrant.21

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie
Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was
being copied and distributed by the respondents. Thus, the ownership of a valid copyright is
essential.22

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality

is meant that the material was not copied, and evidences at least minimal creativity; that it was
independently created by the author and that it possesses at least same minimal degree of
creativity.23 Copying is shown by proof of access to copyrighted material and substantial similarity
between the two works.24 The applicant must thus demonstrate the existence and the validity of his
copyright because in the absence of copyright protection, even original creation may be freely
copied.25
By requesting the NBI to investigate and, if feasible, file an application for a search warrant for
infringement under R.A. No. 8293 against the respondents, the petitioner thereby authorized the
RTC (in resolving the application), to delve into and determine the validity of the copyright which he
claimed he had over the utility models. The petitioner cannot seek relief from the RTC based on his
claim that he was the copyright owner over the utility models and, at the same time, repudiate the
court’s jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of
estoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work
or, in its absence, other evidence.26 A copyright certificate provides prima facie evidence of originality
which is one element of copyright validity. It constitutes prima facie evidence of both validity and
ownership27 and the validity of the facts stated in the certificate.28 The presumption of validity to a
certificate of copyright registration merely orders the burden of proof. The applicant should not
ordinarily be forced, in the first instance, to prove all the multiple facts that underline the validity of
the copyright unless the respondent, effectively challenging them, shifts the burden of doing so to
the applicant.29 Indeed, Section 218.2 of R.A. No. 8293 provides:

218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject matter to which the
action relates if the defendant does not put in issue the question whether copyright subsists
in the work or other subject matter; and

(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to
be the owner of the copyright if he claims to be the owner of the copyright and the defendant
does not put in issue the question of his ownership.

A certificate of registration creates no rebuttable presumption of copyright validity where other

evidence in the record casts doubt on the question. In such a case, validity will not be presumed.30

To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A.
No. 8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos.
2001-197 and 2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by
the National Library covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle
Bearing Cushion both classified under Section 172.1(h) of R.A. No. 8293, to wit:

SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works, hereinafter referred to as
"works," are original intellectual creations in the literary and artistic domain protected from the
moment of their creation and shall include in particular:

...

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as
an industrial design, and other works of applied art.

Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic
creation with utilitarian functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed by
the petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial bore that is centrally located and provided
with a perpendicular flange on one of its ends and a cylindrical metal jacket surrounding the
peripheral walls of said body, with the bushing made of plastic that is either polyvinyl chloride or
polypropylene.31 Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion
comprising a generally semi-circular body having a central hole to secure a conventional bearing
and a plurality of ridges provided therefore, with said cushion bearing being made of the same
plastic materials.32 Plainly, these are not literary or artistic works. They are not intellectual creations
in the literary and artistic domain, or works of applied art. They are certainly not ornamental designs
or one having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art.33 Works for applied art include
all original pictorials, graphics, and sculptural works that are intended to be or have been embodied
in useful article regardless of factors such as mass production, commercial exploitation, and the
potential availability of design patent protection.34

As gleaned from the description of the models and their objectives, these articles are useful articles
which are defined as one having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable, useful articles and works of industrial design
are not.35 A useful article may be copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of the utilitarian aspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the
author’s intellectual creation, regardless of whether it is a creation with utilitarian functions or
incorporated in a useful article produced on an industrial scale, is protected by copyright law.
However, the law refers to a "work of applied art which is an artistic creation." It bears stressing that
there is no copyright protection for works of applied art or industrial design which have aesthetic or
artistic features that cannot be identified separately from the utilitarian aspects of the
article.36Functional components of useful articles, no matter how artistically designed, have generally
been denied copyright protection unless they are separable from the useful article.37

In this case, the petitioner’s models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility
model as follows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent
pressure would eventually wore (sic) out that would cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for
automobile that is made up of plastic.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of
polyvinyl chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both
causes cushion to the leaf spring, yet strong enough to endure pressure brought about by the up
and down movement of said leaf spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
much longer life span than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a
very simple construction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is
supplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel
material of the leaf spring.

These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.

Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility
model;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and

Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designated
same parts throughout, there is shown a utility model for a leaf-spring eye bushing for automobile
generally designated as reference numeral 10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.

As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange
13 on one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said
body 11. When said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring
eye (not shown), which is also made of steel or cast steel. In effect, the bushing 10 will not be
directly in contact with steel, but rather the metal jacket, making the life of the bushing 10 longer than
those without the metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant
soft texture plastic or a hard polypropylene plastic, both are capable to endure the pressure applied
thereto, and, in effect, would lengthen the life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is
insertably provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17
accommodates or engages with the leaf-spring bolt (not shown) connecting the leaf spring and the
automobile’s chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and
cylindrical as to its construction. Said another embodiment is also made of polypropylene or
polyvinyl chloride plastic material. The steel tube 17 and metal jacket 14 may also be applied to this
embodiment as an option thereof.38
 VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent
pressure would eventually be worn out that would cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made
up of plastic.

Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride,
an oil resistant soft texture plastic material which causes cushion to the propeller’s center bearing,
yet strong enough to endure pressure brought about by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life
span than rubber bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple
construction and can be made using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Figure 2 is a sectional view thereof.

Referring now to the several views of the drawing, wherein like reference numeral designate same
parts throughout, there is shown a utility model for a vehicle-bearing cushion generally designated
as reference numeral 10.

Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to
house a conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a
plurality of ridges 13 which serves reinforcing means thereof.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant
plastic material which is strong, durable and capable of enduring severe pressure from the center
bearing brought about by the rotating movement of the propeller shaft of the vehicle.39

A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any
of the aforesaid.40Essentially, a utility model refers to an invention in the mechanical field. This is the
reason why its object is sometimes described as a device or useful object.41 A utility model varies
from an invention, for which a patent for invention is, likewise, available, on at least three aspects:
first, the requisite of "inventive step"42 in a patent for invention is not required; second, the maximum
term of protection is only seven years43 compared to a patent which is twenty years,44 both reckoned
from the date of the application; and third, the provisions on utility model dispense with its
substantive examination45 and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of the
components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not
ornamental. They lack the decorative quality or value that must characterize authentic works of
applied art. They are not even artistic creations with incidental utilitarian functions or works
incorporated in a useful article. In actuality, the personal properties described in the search warrants
are mechanical works, the principal function of which is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in
the catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A.
No. 8293. Applying the principle of ejusdem generis which states that "where a statute describes
things of a particular class or kind accompanied by words of a generic character, the generic word
will usually be limited to things of a similar nature with those particularly enumerated, unless there be
something in the context of the state which would repel such inference,"46 the Leaf Spring Eye
Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature
as the works enumerated in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion. Indeed, in Joaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v.
Shoemart, Incorporated,48 the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the
rights are only such as the statute confers, and may be obtained and enjoyed only with respect to
the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it
can cover only the works falling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated,50 the Court ruled that "these copyright and
patent rights are completely distinct and separate from one another, and the protection afforded by
one cannot be used interchangeably to cover items or works that exclusively pertain to the others."
The Court expounded further, thus:

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of
a problem in any field of human activity which is new, involves an inventive step and is industrially
applicable.

The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v.
Stein51 to buttress his petition. In that case, the artifacts involved in that case were statuettes of
dancing male and female figures made of semi-vitreous china. The controversy therein centered on
the fact that although copyrighted as "works of art," the statuettes were intended for use and used as
bases for table lamps, with electric wiring, sockets and lampshades attached. The issue raised was
whether the statuettes were copyright protected in the United States, considering that the copyright
applicant intended primarily to use them as lamp bases to be made and sold in quantity, and carried
such intentions into effect. At that time, the Copyright Office interpreted the 1909 Copyright Act to
cover works of artistic craftsmanship insofar as their form, but not the utilitarian aspects, were
concerned. After reviewing the history and intent of the US Congress on its copyright legislation and
the interpretation of the copyright office, the US Supreme Court declared that the statuettes were
held copyrightable works of art or models or designs for works of art. The High Court ruled that:

"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so
far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic
jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as
paintings, drawings and sculpture. …"

So we have a contemporaneous and long-continued construction of the statutes by the agency

charged to administer them that would allow the registration of such a statuette as is in question
here.52

The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and
utility but art for the copyright and the invention of original and ornamental design for design
patents." Significantly, the copyright office promulgated a rule to implement Mazer to wit:

… [I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and
attractively shaped will not qualify it as a work of art."

In this case, the bushing and cushion are not works of art. They are, as the petitioner himself
admitted, utility models which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The
assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED.
Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET
ASIDE. Costs against the petitioner.

SO ORDERED.

Puno, (Chairman), Austria-Martinez, Tinga, and Chico-Nazario, JJ., concur.

Footnotes

1Penned by Associate Justice Amelita G. Tolentino, with Associate Justices Eloy R. Bello,
Jr. (retired) and Arturo D. Brion, concurring; Rollo, pp. 17-24.

2 Rollo, pp. 31-32.

3 Penned by Acting Presiding Judge Antonio M. Eugenio, Jr.

4 CA Rollo, pp. 28-34.

5 Id. at 47.

6 CA Rollo, p. 54.

7 Id. at 54-61.
8 Id. at 68.

9 CA Rollo, p. 70.

10 Id. at 73-75.

11 G.R. No. 104879, 6 May 1994, 232 SCRA 249.

12 Rollo, pp. 22-23.

13 18 F.3d 502.

14 Rollo, p. 23.

15 Section 172.2, Republic Act No. 8293.

16Citing Amador, Vicente B., Copyright Under the Intellectual Property Code, 1998 ed., p.
128, citing Mazerv. Stein, 347 U.S. 201 (1954).

17Norma Ribbon & Trimming v. Little, United States Court of Appeals, Fifth Circuit, No. 94-
60389, 27 April 1995.

18Columbia Pictures, Inc. v. Court of Appeals, G.R. No. 110318, 28 August 1996, 261 SCRA
144.

19 G.R. No. 144309, 23 November 2001, 370 SCRA 491.

20 Ibid.

Republic of the Philippines v. Sandiganbayan, G.R. Nos. 112708-09, 29 March 1996, 255
21

SCRA 438.

22Feist Publications, Inc. v. Rural Telephone Service Company, 499 U.S. 340; 111 S.Ct.
1282 (1991).

23 Donald Bruce Company v. B.G. Multi-Comm. Corporation, 964 F.Supp. 265 (1997).

24 Apple Barrel Productions, Inc. v. R.D. Beard, 730 F.2d 384 (1984).

25 Durnham Industries, Inc. v. Tomy Corporation, 630 F.2d 905 (1980).

26 Apple Barrel Productions, Inc. v. R.D. Beard, supra.

27Midway Manufacturing Corporation v. Bandai-America, Inc., 546 F.Supp. 125

(1982); Lakedreams v. Steve Taylor, 932 F.2d 1103 (1991).

28 Durnham Industries, Inc. v. Tomy Corporation, supra.

29 Barnhart, Inc. v. Economy Cover Corporation, 773 F.2d 411 (1985).

30 Ibid; Midway Manufacturing Corporation v. Bandai-America, Inc., supra.

31 Rollo, p. 86.

32 Id. at 94.

33 Pivot Port International, Inc. v. Charlene Products, Inc., 372 F.2d 913 (2004).

34 Gay Toys, Inc. v. Buddy L. Corporation, 703 F.2d 970 (1983).

35 Pivot Port International, Inc. v. Charlene Products, Inc., supra.

36 Ibid; DBC of New York v. Merit Diamond Corporation, 768 F.Supp. 414 (1991).

37 Norris Industries, Inc. v. ITT Corporation, 696 F.2d 918 (1983).

38 Rollo, pp. 84-87.

39 Rollo, pp. 93-94.

40 Section 109.1(a) and (b) in relation to Section 21 of Republic Act No. 8293.

41 Amador, Vicente B., Patents Under The Intellectual Property Code, 2001 ed., p. 751.

42An invention involves an inventive step if, having regard to prior art, it is not obvious to a
person skilled in the art at the time of the filing date or priority date of the application claiming
the invention. (Section 26, Republic Act No. 8293).

43 Section 109.3, supra.

44 Section 54, supra.

45Sections 108 to 111 of Republic Act No. 8293 state the rule on utility models and grant of a
patent therefor:

SEC. 108. Applicability of Provisions Relating to Patents. –

108.1 Subject to Section 109, the provisions governing patents shall

apply, mutatis mutandis, to the registration of utility models.

108.2. Where the right to a patent conflicts with the right to a utility model
registration in the case referred to in Section 29, the said provisions shall
apply as if the word "patent" were replaced by the words "patent or utility
model registration." (Sec. 55, R.A. No. 165a)

SEC. 109. Special Provisions Relating to Utility Models. –

109.1. (a) An invention qualifies for registration as a utility model if it is new

and industrially applicable.
 (b) Section 21, "Patentable Inventions," shall apply except the
reference to inventive step as a condition of protection.

109.2. Sections 43 to 49 shall not apply in the case of applications for

registration of a utility model.

109.3. A utility model registration shall expire, without any possibility of

renewal, at the end of the seventh year after the date of the filing of the
application.

109.4. In proceedings under Sections 61 to 64, the utility model registration

shall be canceled on the following grounds:

(a) That the claimed invention does not qualify for registration as a
utility model and does not meet the requirements of registrability, in
particular having regard to Subsection 109.1 and Sections 22, 23, 24
and 27;

(b) That the description and the claims do not comply with the
prescribed requirements;

(c) That any drawing which is necessary for the understanding of the
invention has not been furnished;

(d) That the owner of the utility model registration is not the inventor
or his successor in title. (Secs. 55, 56 and 57, R.A. No. 165a)

SEC. 110. Conversion of Patent Applications or Applications for Utility Model

Registration. –

110.1 At any time before the grant or refusal of a patent, an applicant

for a patent may, upon payment of the prescribed fee, convert his
application into an application for registration of a utility model, which
shall be accorded the filing date of the initial application. An
application may be converted only once.

110.2 At any time before the grant or refusal of a utility model

registration, an applicant for a utility model registration may, upon
payment of the prescribed fee, convert his application into a patent
application, which shall be accorded the filing date of the initial
application. (Sec. 58, R.A. No. 165a)

SEC. 111. Prohibition against Filing of Parallel Applications. – An applicant

may not file two (2) applications for the same subject, one for utility model
registration and the other for the grant of a patent whether simultaneously or
consecutively. (Sec. 59, R.A. No. 165a)

See Kapisanan ng mga Manggagawa sa Government Service Insurance System (KMG) v.

46

Commission on Audit, G.R. No. 150769, 31 August 2004, 437 SCRA 371, citing Philippine
Basketball Association v. Court of Appeals, 337 SCRA 358 (2000); National Power
Corporation v. Angas, G.R. Nos. 60225-26, 8 May 1992, 208 SCRA 542; Cebu Institute of
 Technology v. Ople, G.R. No. L-58870, 18 December 1987, 156 SCRA 629; Ollada v. Court
of Tax Appeals, 99 Phil. 604 (1956); Murphy, Morris & Co. v. Collector of Customs, 11 Phil.
456 (1908).

47 G.R. No. 108946, 28 January 1999, 302 SCRA 225.

48 G.R. No. 148222, 15 August 2003, 409 SCRA 231.

49 G.R. No. 115758, 19 March 2002, 379 SCRA 410.

50 Supra.

51 74 S.Ct. 460; 347 U.S. 201.

52Great Northern Ry. Co. v. United States, 315 U.S. 262, 275, 62 S.Ct. 529, 534, 86 L.Ed.
836.

G.R. No. 150877 May 4, 2006

ELIDAD KHO and VIOLETA KHO, Petitioners,

vs.
HON. ENRICO LANZANAS, Presiding Judge of the Regional Trial Court of Manila – Branch 7
and SUMMERVILLE GENERAL MERCHANDISING, Respondents.

DECISION

CHICO-NAZARIO, J.:

Culled from the records are the following antecedent facts:

Shun Yih Chemistry Factory (SYCF), a business existing and operating in Taiwan and engaged in
the manufacture and sale of Chin Chun Su Creams/Cosmetics, appointed Young Factor Enterprises
in the Philippines, owned and operated by Quintin Cheng also known as Kho Seng Hiok, as its
distributor of Chin Chun Su products in the Philippines for a term of two years beginning
1978.1 Quintin Cheng registered with the Bureau of Food and Drugs (BFAD) as distributor of Chin
Chun Su products. Quintin Cheng subsequently secured a supplemental registration for Chin Chun
Su and device.2 This supplemental registration was ordered cancelled by the Bureau of Patents,
Trademarks and Technology Transfer3 on the ground of failure of the registrant to file the required
affidavit of non-use as required by Section 12 of Republic Act No. 166, as amended.4

Notwithstanding this cancellation, Quintin Cheng executed on 30 January 1990 an Assignment of a

Registered Trademark5 and a Supplementary Deed of Assignment6 dated 25 November 1991
wherein he sold all his right, title, interest and goodwill in the trademark Chin Chun Su and device to
petitioner Elidad Kho.

In the meantime, animosity arose between SYCF and Quintin Cheng resulting in the termination of
their distributorship agreement on 30 October 1990.7

Consequently, on 30 November 1990, SYCF appointed respondent Summerville General

Merchandising, represented by Ang Tiam Chay and Victor Chua, as its exclusive importer, re-packer
and distributor of Chin Chun Su products in the Philippines8 for a period of five years or until May
2005.

SYCF further executed a Special Power of Attorney dated 11 September 1991 in favor of
Summerville General Merchandising granting it the authority to file complaints against usurpers of
Chin Chun Su trademarks/tradename.9

From the foregoing incidents arose several judicial and quasi-judicial proceedings.

1) Civil Case No. Q-91-10926 before the Regional Trial Court (RTC) of Quezon City, Branch 90

On 20 December 1991, Elidad Kho/KEC Laboratory filed a Complaint for Injunction and Damages
against Ang Tiam Chay and Summerville General Merchandising before the RTC of Quezon City,
Branch 90, docketed as Civil Case No. Q-91-10926. Plaintiff therein Elidad Kho/KEC Laboratory
sought to enjoin defendants Ang Tiam Chay and Summerville General Merchandising from using the
name Chin Chun Su in their cream products.

On 22 January 1993, a decision in Civil Case No. Q-91-10926 was rendered, the dispositive portion
of which provides:

ACCORDINGLY, judgment is hereby rendered:

1. Declaring that plaintiff is not legally authorized to use the trademark "CHIN CHUN
SU" and upholding the right of defendant Summerville General Merchandising & Co.
to use said trademark as authorized by Shun Yih Chemistry Factory of Taiwan;

2. Declaring plaintiff to have the right to use the copyright claim on "OVAL FACIAL
CREAM CONTAINER/CASE" by virtue of Certificate of Copyright Registration No.
3687 issued by the National Library on May 23, 1991;

3. No award of damages;

4. Counsels for plaintiff and defendants are awarded P75,000.00 each as attorney’s
fees; and

5. Both parties to pay proportionate fees.10

Both parties appealed the RTC decision to the Court of Appeals, docketed as CA-G.R. CV NO.
48043 entitled, "Elidad C. Kho, doing business under the style of KEC Cosmetic Laboratory v.
Summerville General Merchandising and Co., et al." In a decision11 dated 22 November 1999, the
appellate court affirmed in toto the decision of the trial court.12 Elidad Kho elevated the case to this
Court, docketed as G.R. No. 144100. In a resolution dated 28 August 2000, we denied the petition.
We held that:

The issue is who, between petitioner Elidad C. Kho and respondent Summerville General
Merchandising and Company has the better right to use the trademark "Chin Chun Su" on their facial
cream product?

We agree with both the Court of Appeals and the trial court that Summerville General Merchandising
and Company has the better right to use the trademark "Chin Chun Su" on its facial cream product
by virtue of the exclusive importation and distribution rights given to it by Shun Yih Chemistry
Factory of Taiwan on November 20, 1990 after the latter cancelled and terminated on October 30,
1990 its Sole Distributorship Agreement with one Quintin Cheng, who assigned and transferred his
rights under said agreement to petitioner Elidad C. Kho on January 31, 1990.

As correctly held by the Court of Appeals, petitioner Kho is not the author of the trademark "Chin
Chun Su" and his only claim to the use of the trademark is based on the Deed of Agreement
executed in his favor by Quintin Cheng. By virtue thereof, he registered the trademark in his name.
The registration was a patent nullity because petitioner is not the creator of the trademark "Chin
Chun Su" and, therefore, has no right to register the same in his name. Furthermore, the authority of
Quintin Cheng to be the sole distributor of Chin Chun Su in the Philippines had already been
terminated by Shun Yih Chemistry of Taiwan. Withal, he had no right to assign or to transfer the
same to petitioner Kho.

WHEREFORE, the instant petition is hereby denied due course.13

2) BFAD Cosmetic Case No. CM-040-91

At the other end of the spectrum, due to the proliferation of fake Chin Chun Su products,
Summerville General Merchandising filed a Complaint14 before the BFAD against KEC Cosmetic
Laboratory owned by Elidad Kho.

In a resolution of the BFAD dated 4 February 1992, it ruled that:

WHEREFORE, the brand name clearance of CCS in favor of KEC is recalled and cosmetic
registration number DR-X6113-78 dtd 11/17/78 is TEMPORARILY CANCELLED until KEC applies
to change or amend the brand name CCS it is now using. For this purpose, KEC is hereby ordered
to retrieve all locally produced Chin Chun Su Pearl Cream for relabelling as soon as the amendment
of its brand name has been approved by this Bureau with the corresponding amended Certificate of
Registration.

Summerville’s application to register (renew or reinstate) CCS Medicated Cream under DR-X6113-
78 in the name of Shun Yih Chemistry Factory is herewith approved for processing at BFAD-Product
Services Division.15

3) Criminal Case No. 00-183261 before the RTC of Manila, Branch 1

This is the case filed before the RTC of Manila, Branch 1, entitled, "People of the Philippines v.
Elidad and Violeta Kho and Roger Kho," pursuant to the DOJ Resolution in I.S. No. 00A-02396 and
I.S. No. 00B-10973, ordering the filing of a criminal complaint against Elidad, Roger and Violeta
Kho.16

Prior to the filing of Criminal Case No. 00-183261 before the RTC of Manila, Branch 1, on 18
January 2000, Victor Chua, representing Summerville General Merchandising, filed a Complaint for
Unfair Competition, docketed as I.S. No. 00A-02396 entitled, "Summerville General Merchandising,
represented by Victor Chua v. Elidad and Violeta Kho," before the Office of the City Prosecutor of
Manila.

Elidad and Violeta Kho filed their counter-affidavit in the Complaint for Unfair Competition which
served as their countercharge against Ang Tiam Chay and Victor Chua, likewise for Unfair
Competition, docketed as I.S. No. OOB-10973.
On 29 March 2000, the Office of the City Prosecutor granted the consolidation of both I.S. No. 00A-
02396 and I.S. No. 00B-10973. On 25 April 2000, Assistant City Prosecutor Rector Macapagal
rendered a joint resolution dismissing both the Complaint and countercharge. This resolution of
dismissal was reversed by the review resolution17 dated 31 May 2000 issued by Assistant City
Prosecutor Elmer Calledo who directed the filing of an information against Elidad Kho, Roger Kho
and Violeta Kho for violation of Section 168.3(a) in relation to Sections 168 and 170, Republic Act
No. 8293 (The Intellectual Property Code).18 On 17 August 2000, Department of Justice (DOJ)
Undersecretary Regis Puno issued a resolution19 dismissing the petition for review filed by Elidad
and Violeta Kho and upholding the ruling of Assistant City Prosecutor Calledo, directing the filing of
charges against the Khos. Elidad and Violeta Kho filed a motion for reconsideration, and in a
complete turnabout, on 28 September 2001, a resolution20 was issued by then DOJ Secretary
Hernando Perez again dismissing the Complaint and countercharge in I.S. No. 00A-02396 and I.S.
No. 00B-10973 for lack of merit. Summerville General Merchandising accordingly filed a motion for
reconsideration of this DOJ resolution dated 20 September 2001.

In view of the latest DOJ resolution ordering the dismissal of the complaint of Summerville General
Merchandising against the Khos, the RTC of Manila, Branch 1, issued an Order dated 24 October
2001 directing the dismissal of the Complaint in Criminal Case No. 00-183261.21 Summerville
General Merchandising filed with the RTC of Manila, Branch 1, a motion for reconsideration of its
Order of dismissal of Criminal Case No. 00-183261. For their part, Elidad and Violeta Kho also filed
with the same court a supplemental motion insisting that the Order dismissing Criminal Case No. 00-
183261 cannot be set aside because to do so would, in effect, reinstate the said criminal case and
would already constitute double jeopardy. Acting on these motions, the RTC of Manila, Branch 1,
issued an Order dated 21 August 2002 resolving the motions in the following manner:

The foregoing duly established facts indubitably supports accused’s contention that a re-filing [o]f the
Information would put them in double jeopardy. As ruled by the Supreme Court in Marcelo v. Court
of Appeals, 235 SCRA 39, upon withdrawal of the Information, which is the logical consequence of
the grant of the Motion to Withdraw, there no longer remained any case to dismiss.

Accordingly, finding merit in the Motion for Reconsideration, the same is hereby granted.

The information against accused is hereby dismissed.

The Clerk of Court is hereby directed to return to the accused the cash bonds posted by the latter for
their provisional liberty upon presentation of the requisite receipts.

The ruling renders the remaining incidents moot and academic.22

Thereafter, on 17 September 2002, the DOJ Secretary, Hernando B. Perez, granted the pending
motion of Summerville General Merchandising for reconsideration of the DOJ resolution23 dated 28
September 2001, which dismissed the Complaint of movant Summerville General Merchandising in
I.S. No. 00A-02396, and accordingly issued another resolution vacating the questioned 28
September 2001 resolution and directing the City Prosecutor of Manila to continue with the criminal
prosecution of the Khos for Unfair Competition.

Elidad and Violeta Kho filed a motion for reconsideration of the resolution dated 17 September 2002
before the DOJ. The DOJ,24 thru the new Secretary Simeon A. Datumanong denied that double
jeopardy lies, in a resolution dated 17 July 2003, declared that:

After an evaluation of the record, we resolve to deny the motion for reconsideration. For double
jeopardy to attach, the following requirements must be present: (1) upon a valid indictment; (2)
before a competent court; (3) after arraignment; (4) when a valid plea has been entered; and (5)
when the defendant was convicted, acquitted, or the case was dismissed or otherwise terminated
without the express consent of the accused. (People v. Court of Appeals, 308 SCRA 687). In the
instant case, it appears that the case was terminated with the express consent of the respondent, as
the criminal case was dismissed upon the express application of the accused. Her action in having
the case dismissed constitutes a waiver of her constitutional prerogative against double jeopardy as
she thereby prevented the court from proceeding to trial on the merits and rendering a judgment of
conviction against her.25

At odds with the final DOJ resolution, the RTC of Manila, Branch 1, handling Criminal Case No. 00-
183261, held in its Order dated 2 April 2003 that:

Considering the tenors of the orders of dismissal, whatever maybe the merits of the Motion for
Reconsideration, revival of the case is now barred by the impregnable wall of double jeopardy.

ACCORDINGLY, the Motion for Reconsideration dated September 10, 2002 filed by the private
prosecutor and subject of the Motion to Resolve is hereby denied with finality.

The Clerk of Court is hereby directed to return to the accused the cash bond posted by them for their
provisional liberty upon presentation of the required receipts.26

Thus, Summerville General Merchandising raised its case to the Court of Appeals, docketed as CA-
G.R. SP No. 77180, assailing the Order dated 24 October 2001 of the RTC of Manila, Branch 1,
dismissing Criminal Case No. 00-183261, as well as the Orders dated 21 August 2002 and 2 April
2003 of the same court affirming its previous order of dismissal.

In a decision of the Court of Appeals dated 26 May 2004 in CA-G.R. SP No. 77180,27 the Court
denied due course to the petition of Summerville General Merchandising and affirmed the ruling of
the trial court that, indeed, double jeopardy has set in.

The decision of the Court of Appeals in CA-G.R. SP No. 77180 is now the subject of a Petition for
Review before this Court, docketed as G.R. No. 163741 entitled, Summerville General
Merchandising and Co., Inc. v. Elidad Kho."28

4) Search Warrant No. 99-1520 before the RTC of Manila, Branch 7

Shortly before instituting Criminal Case No. 00-183261 against the Khos, or on 7 January 2000,
Summerville General Merchandising applied for the issuance of a search warrant against the
Spouses Elidad and Violeta Kho and Roger Kho, since they persisted in manufacturing and selling
Chin Chun Su products despite the BFAD order directing them to refrain from doing so. The
application was docketed as Search Warrant No. 99-1520 before the RTC of Manila, Branch 7,
which was presided over by respondent herein, Judge Enrico A. Lanzanas. A hearing on the
application was held on 10 January 200029 and the search warrant was issued against Elidad,
Violeta and Roger Kho on the same day.30 Its enforcement led to the seizure of several Chin Chun
Su products.311avvphil.net

On 17 January 2000, Elidad, Violeta and Roger Kho filed before the RTC of Manila, Branch 7, a
motion to quash the search warrant and for the return of the items unlawfully seized. The motion was
opposed by Summerville General Merchandising.
In an Order32 dated 3 April 2000, the RTC of Manila, Branch 7, denied Elidad and Violeta Kho’s
motion to quash and to return the seized articles for lack of merit.33 Elidad and Violeta Kho filed a
motion for reconsideration and motion to transfer the proceedings in RTC of Manila, Branch 7, to
RTC of Manila, Branch 1, citing Supreme Court Administrative Order 113-9534 designating the RTC
of Manila, Branch 1, as an Intellectual Property Court. The RTC of Manila, Branch 7, denied these
motions in an Order dated 5 June 2000,35 explaining that:

Anent the Motion to Compel this Branch to transfer the case to Branch 1 of this Court, suffice it to
say that the cases for violation of Arts. 188 and 189 of the Revised Penal Code (now under the
Intellectual Property Law) are those that are already filed in court after the proper preliminary
investigation and not cases for application for search warrant involving probable violation of said law.
Supreme Court Administrative Circular No. 113-95 itself designates the alluded court or branch
thereof to try and decide which clearly excludes cases/applications for search warrant which
obviously does not involve trying and deciding case for violation of the Intellectual Property law.

On respondent’s Motion for Reconsideration, the Court finds their arguments therein a rehash of the
issues and arguments raised in their Motion to Quash.

WHEREFORE, for lack of merit, respondents’ Motion for Reconsideration and Motion to Transfer,
are hereby DENIED.36

Elidad and Violeta Kho filed a Petition for Certiorari and Preliminary Mandatory Injunction,37 docketed
as CA-G.R. SP No. 60084, before the Court of Appeals questioning the aforementioned Orders of
the RTC of Manila, Branch 7. A decision dated 6 August 200138 was rendered by the Court of
Appeals denying the petition. It upheld Search Warrant No. 99-1520 as having been validly issued
and properly executed and, thus, there is no basis for the return of the goods seized. A motion for
reconsideration filed by the Khos was denied by the Court of Appeals in an Order dated 16
November 2001.39

Elidad and Violeta Kho filed a supplement to their Motion for Reconsideration dated 20 November
200140 before the Court of Appeals in CA-G.R. SP No. 60084, reiterating their prayer for the quashal
of Search Warrant No. 99-1520 and the return of the seized items. The Court of Appeals, in a
resolution dated 4 December 2001,41 merely noted the motion in view of its earlier resolution
rendered on 16 November 2001 already denying Elidad and Violeta Kho’s Motion for
Reconsideration.

Pained by the decisions and orders of the trial court and appellate court, petitioners Elidad and
Violeta Kho filed the present petition praying that the decision of the Court of Appeals in CA-G.R. SP
No. 60084 dated 6 August 2001 be reversed and set aside, and a new decision be issued granting
the quashal of Search Warrant No. 99-1520 and ordering the return of the items unlawfully seized.42

In their Memorandum, petitioners raise the following issues for resolution:

WHETHER OR NOT THE COURT OF APPEALS ERRED IN DISREGARDING THE WITHDRAWAL

OF THE INFORMATION FOR UNFAIR COMPETITION AGAINST THE PETITIONERS IN BRANCH
1 OF RTC-MANILA AS A RESULT OF THE RESOLUTION OF THE DEPARTMENT OF JUSTICE
FINDING NO PROBABLE CAUSE.

WHETHER OR NOT THE COURT OF APPEALS ERRED IN FINDING THAT NO GRAVE ABUSE
OF DISCRETION WAS COMMITTED BY HONORABLE JUDGE ENRICO LANZANAS IN FINDING
THAT PROBABLE CAUSE EXISTED AGAINST THE PETITIONERS FOR THE ISSUANCE OF
SEARCH WARRANT NO. 99-1520.
WHETHER OR NOT THE COURT OF APPEALS ERRED IN FINDING THAT BRANCH 7 OF THE
REGIONAL TRIAL COURT OF MANILA HAD JURISDICTION TO ISSUE SEARCH WARRANT NO.
99-1520.

WHETHER OR NOT THE COURT OF APPEALS ERRED IN FINDING THAT NO GRAVE ABUSE
OF DISCRETION WAS COMMITTED BY HONORABLE JUDGE ENRICO LANZANAS IN RULING
THAT SEARCH WARRANT NO. 99-1520 WAS LAWFULLY EXECUTED.

WHETHER OR NOT THE COURT OF APPEALS ERRED IN FINDING THAT NO GRAVE ABUSE
OF DISCRETION WAS COMMITTED BY HONORABLE JUDGE ENRICO LANZANAS IN NOT
ORDERING THE RETURN OF THE ITEMS SEIZED UNDER SEARCH WARRANT NO. 99-1520.43

The petition is devoid of merit.

As to the first issue, it must be noted that the dismissal of Criminal Case No. 00-183261 by the RTC
of Manila, Branch 1, was initially by virtue of the resolution of the DOJ dated 28 September
200144 ordering the dismissal of the criminal case for unfair competition.

This order of dismissal, however, was again set aside by the DOJ in its resolution dated 17
September 200245directing that appropriate information for Unfair Competition be filed against the
Khos. The motion for reconsideration of Elidad and Violeta Kho was denied by the DOJ in its
resolution dated 17 July 2003.46 This is the latest existing resolution of the DOJ on the matter, dated
17 July 2003, which affirmed the resolution of the then DOJ Secretary Hernando B. Perez directing
the City Prosecutor of Manila to file the appropriate information against Elidad and Violeta Kho for
Unfair Competition as defined and penalized under Section 168.3(a), in relation to Sections 168 and
170 of Rep. Act No. 8293 or The Intellectual Property Code of the Philippines. Therefore, at the time
of the dismissal of Criminal Case No. 00-183261 by the RTC of Manila, Branch 1, on 24 October
2001, the DOJ resolution on I.S. No. 00A-02396 on which Criminal Case No. 00-183261 is based
has not been written finis as yet.

Taking into consideration these circumstances, the Court of Appeals did not err in affirming the
Order of the RTC of Manila, Branch 7, denying the motion to quash filed by the herein petitioners
because, subsequently, the DOJ still ordered the filing of charges against Elidad and Violeta Kho.

As to whether the RTC of Manila, Branch 1, properly dismissed the criminal case against the Khos
despite the resolution of the DOJ ordering their criminal prosecution, we cannot dwell more on the
issue because it is already the subject of G.R. No. 163741 before another division of this Court.

Issues two, three and four, on the other hand, boil down to the central issue of whether or not the
Court of Appeals erred in upholding the RTC of Manila, Branch 7, in its findings of probable cause to
issue a search warrant. Also resting on how we shall resolve the foregoing issue is the fifth and last
issue in the Petition at bar which questions the refusal by both the Court of Appeals and the RTC of
Manila, Branch 7, to return the seized items.

The issuance of Search Warrants is governed by Rule 126 of the Revised Rules of Court
reproduced below:

SECTION 1. Search warrant defined. – A search warrant is an order in writing issued in the name of
the People of the Philippines, signed by a judge and directed to a peace officer, commanding him to
search for personal property described therein and bring it before the court.
SEC. 2. Court where application for search warrant shall be filed. - An application for search warrant
shall be filed with the following:

a) Any court within whose territorial jurisdiction a crime was committed.

b) For compelling reasons stated in the application, any court within the judicial
region where the crime was committed if the place of the commission of the crime is
known, or any court within the judicial region where the warrant shall be enforced.

However, if the criminal action has already been filed, the application shall only be made in the court
where the criminal action is pending.

SEC. 3. Personal property to be seized. – A search warrant may be issued for the search and
seizure of personal property:

(a) Subject of the offense;

(b) Stolen or embezzled and other proceeds or fruits of the offense; or

(c) Used or intended to be used as the means of committing an offense.

SEC. 4. Requisites for issuing search warrant. – A search warrant shall not issue except upon
probable cause in connection with one specific offense to be determined personally by the judge
after examination under oath or affirmation of the complainant and the witnesses he may produce,
and particularly describing the place to be searched and the things to be seized which may be
anywhere in the Philippines.

SEC.5. Examination of complainant; record. – The judge must, before issuing the warrant,
personally examine in the form of searching questions and answers, in writing and under oath, the
complainant and the witnesses he may produce on facts personally known to them and attach to the
record their sworn statements together with the affidavits submitted.

SEC. 6. Issuance and form of search warrant. – If the judge is satisfied of the existence of facts upon
which the application is based or that there is probable cause to believe that they exist, he shall
issue the warrant, which must be substantially in the form prescribed by these Rules.

What constitutes "probable cause" is well settled. In Microsoft Corporation v. Maxicorp, Inc.,47 we
defined probable cause as follows:

Probable cause means "such reasons, supported by facts and circumstances as will warrant a
cautious man in the belief that his action and the means taken in prosecuting it are legally just and
proper." Thus, probable cause for a search warrant requires such facts and circumstances that
would lead a reasonably prudent man to believe that an offense has been committed and the objects
sought in connection with that offense are in the place to be searched.

xxxx

The determination of probable cause does not call for the application of rules and standards of proof
that a judgment of conviction requires after trial on the merits. As implied by the words themselves,
"probable cause" is concerned with probability, not absolute or even moral certainty. The prosecution
need not present at this stage proof beyond reasonable doubt. The standards of judgment are those
of a reasonably prudent man, not the exacting calibrations of a judge after a full-blown trial.

No law or rule states that probable cause requires a specific kind of evidence. No formula or fixed
rule for its determination exists. Probable cause is determined in the light of conditions obtaining in a
given situation. xxx

In Columbia Pictures, Inc. v. Court of Appeals,48 we explained further that:

Although the term "probable cause" has been said to have a well-defined meaning in the law, the
term is exceedingly difficult to define, in this case, with any degree of precision; indeed, no definition
of it which would justify the issuance of a search warrant can be formulated which would cover every
state of facts which might arise, and no formula or standard, or hard and fast rule, may be laid down
which may be applied to the facts of every situation. As to what acts constitute probable cause seem
incapable of definition. There is, of necessity, no exact test.

At best, the term "probable cause" has been understood to mean a reasonable ground of suspicion,
supported by circumstances sufficiently strong in themselves to warrant a cautious man in the belief
that the person accused is guilty of the offense with which he is charged; or the existence of such
facts and circumstances as would excite an honest belief in a reasonable mind acting on all the facts
and circumstances within the knowledge of the magistrate that the charge made by the applicant for
the warrant is true.

Probable cause does not mean actual and positive cause, nor does it import absolute certainty. The
determination of the existence of probable cause is not concerned with the question of whether the
offense charged has been or is being committed in fact, or whether the accused is guilty or innocent,
but only whether the affiant has reasonable grounds for his belief. The requirement is less than
certainty or proof, but more than suspicion or possibility.

In Philippine jurisprudence, probable cause has been uniformly defined as such facts and
circumstances which would lead a reasonable, discreet and prudent man to believe that an offense
has been committed, and that the objects sought in connection with the offense are in the place
sought to be searched. It being the duty of the issuing officer to issue, or refuse to issue, the warrant
as soon as practicable after the application therefor is filed, the facts warranting the conclusion of
probable cause must be assessed at the time of such judicial determination by necessarily using
legal standards then set forth in law and jurisprudence, and not those that have yet to be crafted
thereafter.

We also declared in People v. Chiu,49 citing Malaloan v. Court of Appeals,50 that a search warrant is
merely a judicial process designed by the Rules to respond only to an incident in the main case, if
one has already been instituted, or in anticipation thereof.

It bears repeating that the proceedings before the RTC of Manila, Branch 7, was solely for the
issuance of Search Warrant No. 99-1520, while the main case against Elidad and Violeta Kho for
violation of The Intellectual Property Code was instituted only later on as Criminal Case No. 00-
183261 before the RTC of Manila, Branch 1. What is before us in the Petition at bar is the validity of
the search warrant issued in the proceedings in Search Warrant No. 99-1520.

A perspicacious examination of the records reveal that the RTC of Manila, Branch 7, followed the
prescribed procedure for the issuance of Search Warrant No. 99-1520, namely, (1) the examination
under oath or affirmation of the Complainant and his witnesses and, in this case, Judge Enrico A.
Lanzanas personally examined complainant-policewoman SPO4 Nedita Alvario Balagbis, and Mr.
Victor Chua, the representative/officer of Summerville General Merchandising, at the hearing on the
application for Search Warrant No. 99-1520 held on 10 January 2000; (2) an examination personally
conducted by then Presiding Judge Lanzanas, in the form of searching questions and answers, in
writing and under oath, of the complainant and witnesses on facts personally known to them; and (3)
the taking of sworn statements, together with the affidavits submitted, which were duly attached to
the records.51

In determining probable cause in the issuance of a search warrant, the oath required must refer to
the truth of the facts within the personal knowledge of the applicant or his witnesses, because the
purpose thereof is to convince the committing magistrate, not the individual making the affidavit and
seeking the issuance of the warrant, of the existence of probable cause.52

From the affidavit dated 7 January 2000 of SPO4 Nedita Balagbis, in support of the application for
search warrant, she stated that Summerville General Merchandising represented by Mr. Victor Chua
sought the assistance of their police station in connection with the proliferation of fake Chin Chun Su
products. With Victor Chua, they made a surveillance of two places, namely 2407 Topacio Street
and 2412 Raymundo Street both in San Andres, Manila. Through this, they were able to verify that
plastic containers were being labeled with Chin Chun Su stickers filled with cream at 2407 Topacio
Street. On the other hand, in the affidavit dated 7 January 2000 of Victor Chua, he stated that
Summerville General Merchandising, being the exclusive importer, distributor and dealer of Chin
Chun Su products received reliable information that persons going by the name of Elidad, Violeta
and Roger Kho were engaged in the illegal manufacture and sale of these products. From the
surveillance conducted with the help of SPO4 Balagbis, they saw a tricycle full of containers taken to
a house at 2412 Raymundo Street, San Andres, Manila. It was at this address that Chin Chun Su
stickers were being affixed. The containers were thereafter taken to 2407 Topacio Street to be filled
with the cream product.

Clearly, probable cause existed for the issuance of the warrant as shown by the affidavits of the
above affiants who had personal knowledge of facts indicating that an offense involving violation of
intellectual property rights was being committed and that the objects sought in connection with the
offense are in the place sought to be searched. The surveillance conducted by SPO4 Nedita
Balagbis on the basis of reliable information that Elidad, Violeta and Roger Kho were engaged in the
illegal manufacture and sale of fake Chin Chun Su products enabled her to gain personal knowledge
of the illegal activities of the Khos.53 This fact was sufficient justification for the examining judge, in
this case Judge Lanzanas, to conclude that there was probable cause for the issuance of the search
warrant.

At the hearing conducted by Judge Lanzanas, SPO4 Nedita Balagbis and Victor Chua testified on
the affidavits they separately executed, and essentially stated therein upon inquiry by Judge
Lanzanas that indeed several fake Chin Chun Su products were loaded to a tricycle and brought to a
warehouse in Topacio Street.

In People v. Tee,54 this Court held that:

It is presumed that a judicial function has been regularly performed, absent a showing to the
contrary. A magistrate’s determination of probable cause for the issuance of a search warrant is paid
great deference by a reviewing court, as long as there was substantial basis for that determination.
Substantial basis means that the questions of the examining judge brought out such facts and
circumstances as would lead a reasonably discreet and prudent man to believe that an offense has
been committed, and the objects in connection with the offense sought to be seized are in the place
sought to be searched.
We cannot find any irregularity or abuse of discretion on the part of Judge Lanzanas for issuing the
assailed search warrant. On the contrary, we find that he had complied with the procedural and
substantive requirements for issuing a search warrant. We are, therefore, bound to respect his
finding of probable cause for issuing Search Warrant No. 99-1520.

After declaring that Search Warrant No. 99-1520 was validly issued by the RTC of Manila, Branch 7,
then there is no reason for us to order the return of the articles seized by virtue thereof.

WHEREFORE, the Decision of the Court of Appeals dated 6 August 2001 and Resolution dated 16
November 2001, denying the quashal of Search Warrant No. 99-1520 and the return of the seized
items, are hereby AFFIRMED. Costs against petitioners.

SO ORDERED.

MINITA V. CHICO-NAZARIO
Associate Justice

WE CONCUR:

ARTEMIO V. PANGANIBAN
Chief Justice
Chairperson

No part
CONSUELO YNARES-SANTIAGO MA. ALICIA AUSTRIA-MARTINEZ
Associate Justice Asscociate Justice

ROMEO J. CALLEJO, SR.

Associate Justice

CERTIFICATION

Pursuant to Article VIII, Section 13 of the Constitution, it is hereby certified that the conclusions in
the above Decision were reached in consultation before the case was assigned to the writer of the
opinion of the Court’s Division.

ARTEMIO V. PANGANIBAN
Chief Justice

Footnotes

1 Annex 2, rollo, pp. 322-323.

2 Annex 8, id., p. 331.

3 Annex 9-B, id., p. 334.

4REPUBLIC ACT No. 166. AN ACT TO PROVIDE FOR THE REGISTRATION AND
PROTECTION OF TRADE-MARKS, TRADE-NAMES, AND SERVICE-MARKS,
DEFINING UNFAIR COMPETITION AND FALSE MARKING AND PROVIDING
REMEDIES AGAINST THE SAME, AND FOR OTHER PURPOSES.

SEC. 12. Duration. – Each certificate of registration shall remain in force for
twenty years: Provided,That registrations under the provisions of this Act
shall be cancelled by the Director, unless within one year following the fifth,
tenth and fifteenth anniversaries of the date of issue of the certificate of
registration, the registrant shall file in the Patent Office an affidavit showing
that the mark or tradename is still in use or showing that its non-use is due to
special circumstances which excuse such non-use and is not due to any
intention to abandon the same, and pay the required fee.

5 Annex D, rollo, p. 70.

6 Annex E, id., pp. 71-72.

7 Annex 7, id., pp. 330-331.

8 Annexes 10, 11, and 12, id., pp. 334-336.

9 Annex 13, id., p. 337.

10 Penned by Judge Abraham P. Vera. Annex K, id., p. 106.

Penned by Associate Justice Hector L. Hofilena with Associate Justices Omar U.

11

Amin and Jose L. Sabio, Jr. concurring.

12 Annex L, rollo, pp. 107-119.

13 Annex 20, id., pp. 368-369.

14Captioned "In the matter of the Summerville Mfg. Request for the cancellation of
KEC registration of Chin Chun Su" docketed as BFAD COSMETIC CASE NO. CM-
040-91.

15 Annex 15, rollo, pp. 346-347.

16Except for the Order of dismissal dated 24 October 2001 of the RTC of Manila,
Branch 1, where Criminal Case No. 00-183261 was filed, no other document
pertaining to Criminal Case No. 00-183261 appears in the records of the present
petition so we could not state the exact date when the said criminal case was filed,
but it is safe to assume that the said criminal case was filed anytime after the 31 May
2000 resolution (p. 373, rollo) rendered by Assistant City Prosecutor Elmer M.
Calledo finding sufficient evidence against Elidad, Roger and Violeta Kho for violation
of The Intellectual Property Code.

17 Annex 2, rollo, pp. 370-373.

18Annex 21, id., p. 370. INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
(Republic Act No. 8293, As Amended) Section 168. Unfair Competition, Rights,
Regulation and Remedies. – x x x

168.3. In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair
competition:

(a) Any person, who is selling his goods and gives them the general
appearance of goods of another manufacturer or dealer, either as to
the goods themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or dealer,
or who otherwise clothes the goods with such appearance as shall
deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose; xxx

Section 170. Penalties. - Independent of the civil and administrative

sanctions imposed by law, a criminal penalty of imprisonment from two (2)
years to five (5) years and a fine ranging from Fifty Thousand Pesos
(P50,000) to Two Hundred Thousand Pesos (P200,000), shall be imposed on
any person who is found guilty of committing any of the acts mentioned in
Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised
Penal Code)

19 Annex 23, rollo, p. 375.

20 Annex AA, id., pp. 271-279.

21 Annex BB, id., p. 280.

22 Id., p. 465.

23 Annex A, id., p. 509.

24 Annex B, id., p. 518.

25 Id., p. 519.

26 Id., p. 466.

27 Id., p. 462.

28A motion for consolidation of G.R. No. 163741 (CA-G.R. No. 77180 before the
Court of Appeals) and G.R. No. 150877 was denied in a resolution dated 17
November 2004 on the ground that although both petitions involve the same parties,
the cause of action and issues are not the same.
29 Annex O, rollo, p. 123.

Presided by Judge Enrico A. Lanzanas , now Associate Justice of the Court of

30

Appeals, Annex P, id., p. 137.

31 Annex Q, id., p. 138.

32 Annex W, id., p. 205.

33 Judge Enrico A. Lanzanas.

SC ADMINISTRATIVE ORDER No. 113-95 dated 2 October 1995 "Re:

34

Designation of Special Courts for Intellectual Property Rights."

35 Annex X, rollo, pp. 211-212.

36 Id., pp. 211-212.

37 Docketed as CA-G.R. SP No. 60084, Annex Y, id., p. 213.

38Penned by Associate Justice Mercedes Gozo-Dadole with then Presiding Justice

Alicia Austria-Martinez (now Associate Justice of this Court) and Associate Justice
Portia Aliño- Hormachuelos, concurring. Rollo, p. 53.

39 Id., p. 66.

40 Annex CC, id., p. 281.

41 Annex DD, id., p. 284.

42 Rollo, p. 457.

43 Id., pp. 421-422.

44 Annex AA, rollo, pp. 271-279.

45 Annex A, id., p. 509.

46 Annex B, id., p. 518.

47 G.R. No. 140946, 13 September 2004, 438 SCRA 224, 234-237.

48 329 Phil. 875, 918-919 (1996).

49 G.R. Nos. 142915-16, 27 February 2004, 424 SCRA 72, 84.

50 G.R. No. 104879, 6 May 1994, 232 SCRA 249, 257.

51 Annexes M and N, rollo, pp. 121-122.

 52 Cupcupin v. People, 440 Phil. 712, 727 (2002).

53 Yu v. Honrado, G.R. No. 50025, 21 August 1980, 99 SCRA 273, 278.

54 443 Phil. 521, 539-540 (2003).

G.R. No. 158589 June 27, 2006

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., and FABRIQUES DE TABAC
REUNIES, S.A., (now known as PHILIP MORRIS PRODUCTS S.A.), Petitioners,
vs.
FORTUNE TOBACCO CORPORATION, Respondent.

DECISION

GARCIA, J.:

Via this petition for review under Rule 45 of the Rules of Court, herein petitioners Philip Morris, Inc.,
Benson & Hedges (Canada) Inc., and Fabriques de Tabac Reunies, S.A. (now Philip Morris
Products S.A.) seek the reversal and setting aside of the following issuances of the Court of Appeals
(CA) in CA-G.R. CV No. 66619, to wit:

1. Decision dated January 21, 20031 affirming an earlier decision of the Regional Trial Court
of Pasig City, Branch 166, in its Civil Case No. 47374, which dismissed the complaint for
trademark infringement and damages thereat commenced by the petitioners against
respondent Fortune Tobacco Corporation; and

2. Resolution dated May 30, 20032 denying petitioners’ motion for reconsideration.

Petitioner Philip Morris, Inc., a corporation organized under the laws of the State of Virginia, United
States of America, is, per Certificate of Registration No. 18723 issued on April 26, 1973 by the
Philippine Patents Office (PPO), the registered owner of the trademark "MARK VII" for cigarettes.
Similarly, petitioner Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the
registered owner of the trademark "MARK TEN" for cigarettes as evidenced by PPO Certificate of
Registration No. 11147. And as can be seen in Trademark Certificate of Registration No. 19053,
another subsidiary of Philip Morris, Inc., the Swiss company Fabriques de Tabac Reunies, S.A., is
the assignee of the trademark "LARK," which was originally registered in 1964 by Ligget and Myers
Tobacco Company. On the other hand, respondent Fortune Tobacco Corporation, a company
organized in the Philippines, manufactures and sells cigarettes using the trademark "MARK."

The legal dispute between the parties started when the herein petitioners, on the claim that an
infringement of their respective trademarks had been committed, filed, on August 18, 1982, a
Complaint for Infringement of Trademark and Damages against respondent Fortune Tobacco
Corporation, docketed as Civil Case No. 47374 of the Regional Trial Court of Pasig, Branch 166.

The decision under review summarized what happened next, as follows:

In the Complaint xxx with prayer for the issuance of a preliminary injunction, [petitioners] alleged that
they are foreign corporations not doing business in the Philippines and are suing on an isolated
transaction. xxx they averred that the countries in which they are domiciled grant xxx to corporate or
juristic persons of the Philippines the privilege to bring action for infringement, xxx without need of a
license to do business in those countries. [Petitioners] likewise manifested [being registered owners
of the trademark "MARK VII" and "MARK TEN" for cigarettes as evidenced by the corresponding
certificates of registration and an applicant for the registration of the trademark "LARK MILDS"]. xxx.
[Petitioners] claimed that they have registered the aforementioned trademarks in their respective
countries of origin and that, by virtue of the long and extensive usage of the same, these trademarks
have already gained international fame and acceptance. Imputing bad faith on the part of the
[respondent], petitioners claimed that the [respondent], without any previous consent from any of the
[petitioners], manufactured and sold cigarettes bearing the identical and/or confusingly similar
trademark "MARK" xxx Accordingly, they argued that [respondent’s] use of the trademark "MARK" in
its cigarette products have caused and is likely to cause confusion or mistake, or would deceive
purchasers and the public in general into buying these products under the impression and mistaken
belief that they are buying [petitioners’] products.

Invoking the provisions of the Paris Convention for the Protection of Industrial and Intellectual
Property (Paris Convention, for brevity), to which the Philippines is a signatory xxx, [petitioners]
pointed out that upon the request of an interested party, a country of the Union may prohibit the use
of a trademark which constitutes a reproduction, imitation, or translation of a mark already belonging
to a person entitled to the benefits of the said Convention. They likewise argued that, in accordance
with Section 21-A in relation to Section 23 of Republic Act 166, as amended, they are entitled to
relief in the form of damages xxx [and] the issuance of a writ of preliminary injunction which should
be made permanent to enjoin perpetually the [respondent] from violating [petitioners’] right to the
exclusive use of their aforementioned trademarks.

[Respondent] filed its Answer xxx denying [petitioners’] material allegations and xxx averred [among
other things] xxx that "MARK" is a common word, which cannot particularly identify a product to be
the product of the [petitioners] xxx

xxx
lawphil.net
xxx xxx.

Meanwhile, after the [respondent] filed its Opposition (Records, Vo. I, p. 26), the matter of the
[petitioners’] prayer for the issuance of a writ of preliminary injunction was negatively resolved by the
court in an Order xxx dated March 28, 1973. [The incidental issue of the propriety of an injunction
would eventually be elevated to the CA and would finally be resolved by the Supreme Court in its
Decision dated July 16, 1993 in G.R. No. 91332]. xxx.

xxx xxx xxx

After the termination of the trial on the merits xxx trial court rendered its Decision xxx dated
November 3, 1999 dismissing the complaint and counterclaim after making a finding that the
[respondent] did not commit trademark infringement against the [petitioners]. Resolving first the
issue of whether or not [petitioners] have capacity to institute the instant action, the trial court opined
that [petitioners’] failure to present evidence to support their allegation that their respective countries
indeed grant Philippine corporations reciprocal or similar privileges by law xxx justifies the dismissal
of the complaint xxx. It added that the testimonies of [petitioners’] witnesses xxx essentially declared
that [petitioners] are in fact doing business in the Philippines, but [petitioners] failed to establish that
they are doing so in accordance with the legal requirement of first securing a license. Hence, the
court declared that [petitioners] are barred from maintaining any action in Philippine courts pursuant
to Section 133 of the Corporation Code.

The issue of whether or not there was infringement of the [petitioners’] trademarks by the
[respondent] was likewise answered xxx in the negative. It expounded that "in order for a name,
symbol or device to constitute a trademark, it must, either by itself or by association, point distinctly
to the origin or ownership of the article to which it is applied and be of such nature as to permit an
exclusive appropriation by one person". Applying such principle to the instant case, the trial court
was of the opinion that the words "MARK", "TEN", "LARK" and the Roman Numerals "VII", either
alone or in combination of each other do not by themselves or by association point distinctly to the
origin or ownership of the cigarettes to which they refer, such that the buying public could not be
deceived into believing that [respondent’s] "MARK" cigarettes originated either from the USA,
Canada, or Switzerland.

Emphasizing that the test in an infringement case is the likelihood of confusion or deception, the trial
court stated that the general rule is that an infringement exists if the resemblance is so close that it
deceives or is likely to deceive a customer exercising ordinary caution in his dealings and induces
him to purchase the goods of one manufacturer in the belief that they are those of another. xxx. The
trial court ruled that the [petitioners] failed to pass these tests as it neither presented witnesses or
purchasers attesting that they have bought [respondent’s] product believing that they bought
[petitioners’] "MARK VII", "MARK TEN" or "LARK", and have also failed to introduce in evidence a
specific magazine or periodical circulated locally, which promotes and popularizes their products in
the Philippines. It, moreover, elucidated that the words consisting of the trademarks allegedly
infringed by [respondent] failed to show that they have acquired a secondary meaning as to identify
them as [petitioners’] products. Hence, the court ruled that the [petitioners] cannot avail themselves
of the doctrine of secondary meaning.

As to the issue of damages, the trial court deemed it just not to award any to either party stating that,
since the [petitioners] filed the action in the belief that they were aggrieved by what they perceived to
be an infringement of their trademark, no wrongful act or omission can be attributed to them.
xxx.3 (Words in brackets supplied)

Maintaining to have the standing to sue in the local forum and that respondent has committed
trademark infringement, petitioners went on appeal to the CA whereat their appellate recourse was
docketed as CA-G.R. CV No. 66619.

Eventually, the CA, in its Decision dated January 21, 2003, while ruling for petitioners on the matter
of their legal capacity to sue in this country for trademark infringement, nevertheless affirmed the trial
court’s decision on the underlying issue of respondent’s liability for infringement as it found that:

xxx the appellants’ [petitioners’] trademarks, i.e., "MARK VII", "MARK TEN" and "LARK", do not
qualify as well-known marks entitled to protection even without the benefit of actual use in the local
market and that the similarities in the trademarks in question are insufficient as to cause deception
or confusion tantamount to infringement. Consequently, as regards the third issue, there is likewise
no basis for the award of damages prayed for by the appellants herein.4 (Word in bracket supplied)

With their motion for reconsideration having been denied by the CA in its equally challenged
Resolution of May 30, 2003, petitioners are now with this Court via this petition for review essentially
raising the following issues: (1) whether or not petitioners, as Philippine registrants of trademarks,
are entitled to enforce trademark rights in this country; and (2) whether or not respondent has
committed trademark infringement against petitioners by its use of the mark "MARK" for its
cigarettes, hence liable for damages.

In its Comment,5 respondent, aside from asserting the correctness of the CA’s finding on its liability
for trademark infringement and damages, also puts in issue the propriety of the petition as it
allegedly raises questions of fact.

The petition is bereft of merit.

Dealing first with the procedural matter interposed by respondent, we find that the petition raises
both questions of fact and law contrary to the prescription against raising factual questions in a
petition for review on certiorari filed before the Court. A question of law exists when the doubt or
difference arises as to what the law is on a certain state of facts; there is a question of fact when the
doubt or difference arises as to the truth or falsity of alleged facts.6

Indeed, the Court is not the proper venue to consider factual issues as it is not a trier of
facts.7 Unless the factual findings of the appellate court are mistaken, absurd, speculative,
conflicting, tainted with grave abuse of discretion, or contrary to the findings culled by the court of
origin,8 we will not disturb them.

It is petitioners’ posture, however, that their contentions should

be treated as purely legal since they are assailing erroneous conclusions deduced from a set of
undisputed facts.

Concededly, when the facts are undisputed, the question of whether or not the conclusion drawn
therefrom by the CA is correct is one of law.9 But, even if we consider and accept as pure questions
of law the issues raised in this petition, still, the Court is not inclined to disturb the conclusions
reached by the appellate court, the established rule being that all doubts shall be resolved in favor of
the correctness of such conclusions.10

Be that as it may, we shall deal with the issues tendered and determine whether the CA ruled in
accordance with law and established jurisprudence in arriving at its assailed decision.

A "trademark" is any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt in by others.11 Inarguably, a trademark deserves
protection. For, as Mr. Justice Frankfurter observed in Mishawaka Mfg. Co. v. Kresge Co.:12

The protection of trademarks is the law’s recognition of the psychological function of symbols. If it is
true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a
merchandising short-cut which induces a purchaser to select what he wants, or what he has been
led to believe what he wants. The owner of a mark exploits this human propensity by making every
effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol.
Whatever the means employed, the aim is the same - to convey through the mark, in the minds of
potential customers, the desirability of the commodity upon which it appears. Once this is attained,
the trade-mark owner has something of value. If another poaches upon the commercial magnetism
of the symbol he has created, the owner can obtain legal redress.

It is thus understandable for petitioners to invoke in this recourse their entitlement to enforce
trademark rights in this country, specifically, the right to sue for trademark infringement in Philippine
courts and be accorded protection against unauthorized use of their Philippine-registered
trademarks.

In support of their contention respecting their right of action, petitioners assert that, as corporate
nationals of member-countries of the Paris Union, they can sue before Philippine courts for
infringement of trademarks, or for unfair competition, without need of obtaining registration or a
license to do business in the Philippines, and without necessity of actually doing business in the
Philippines. To petitioners, these grievance right and mechanism are accorded not only by Section
21-A of Republic Act (R.A.) No. 166, as amended, or the Trademark Law, but also by Article 2 of the
Paris Convention for the Protection of Industrial Property, otherwise known as the Paris Convention.
In any event, petitioners point out that there is actual use of their trademarks in the Philippines as
evidenced by the certificates of registration of their trademarks. The marks "MARK TEN" and "LARK"
were registered on the basis of actual use in accordance with Sections 2-A13 and 5(a)14 of R.A. No.
166, as amended, providing for a 2-month pre-registration use in local commerce and trade while the
registration of "MARK VII" was on the basis of registration in the foreign country of origin pursuant to
Section 37 of the same law wherein it is explicitly provided that prior use in commerce need not be
alleged.15

Besides, petitioners argue that their not doing business in the Philippines, if that be the case, does
not mean that cigarettes bearing their trademarks are not available and sold locally. Citing Converse
Rubber Corporation v. Universal Rubber Products, Inc.,16 petitioners state that such availability and
sale may be effected through the acts of importers and distributors.

Finally, petitioners would press on their entitlement to protection even in the absence of actual use of
trademarks in the country in view of the Philippines’ adherence to the Trade Related Aspects of
Intellectual Property Rights or the TRIPS Agreement and the enactment of R.A. No. 8293, or the
Intellectual Property Code (hereinafter the "IP Code"), both of which provide that the fame of a
trademark may be acquired through promotion or advertising with no explicit requirement of actual
use in local trade or commerce.

Before discussing petitioners’ claimed entitlement to enforce trademark rights in the Philippines, it
must be emphasized that their standing to sue in Philippine courts had been recognized, and rightly
so, by the CA. It ought to be pointed out, however, that the appellate court qualified its holding with a
statement, following G.R. No. 91332, entitled Philip Morris, Inc., et al. v. The Court of Appeals and
Fortune Tobacco Corporation,17 that such right to sue does not necessarily mean protection of their
registered marks in the absence of actual use in the Philippines.

Thus clarified, what petitioners now harp about is their entitlement to protection on the strength of
registration of their trademarks in the Philippines.

As we ruled in G.R. No. 91332,18 supra, so it must be here.

Admittedly, the registration of a trademark gives the registrant, such as petitioners, advantages
denied non-registrants or ordinary users, like respondent. But while petitioners enjoy the statutory
presumptions arising from such registration,19 i.e., as to the validity of the registration, ownership and
the exclusive right to use the registered marks, they may not successfully sue on the basis alone of
their respective certificates of registration of trademarks. For, petitioners are still foreign
corporations. As such, they ought, as a condition to availment of the rights and privileges vis-à-vis
their trademarks in this country, to show proof that, on top of Philippine registration, their country
grants substantially similar rights and privileges to Filipino citizens pursuant to Section 21-A20 of R.A.
No. 166.

In Leviton Industries v. Salvador,21 the Court further held that the aforementioned reciprocity
requirement is a condition sine qua non to filing a suit by a foreign corporation which, unless alleged
in the complaint, would justify dismissal thereof, a mere allegation that the suit is being pursued
under Section 21-A of R.A. No. 166 not being sufficient. In a subsequent case,22 however, the Court
held that where the complainant is a national of a Paris Convention- adhering country, its allegation
that it is suing under said Section 21-A would suffice, because the reciprocal agreement between the
two countries is embodied and supplied by the Paris Convention which, being considered part of
Philippine municipal laws, can be taken judicial notice of in infringement suits.23
As well, the fact that their respective home countries, namely, the United States, Switzerland and
Canada, are, together with the Philippines, members of the Paris Union does not automatically
entitle petitioners to the protection of their trademarks in this country absent actual use of the marks
in local commerce and trade.

True, the Philippines’ adherence to the Paris Convention24 effectively obligates the country to honor
and enforce its provisions25 as regards the protection of industrial property of foreign nationals in this
country. However, any protection accorded has to be made subject to the limitations of Philippine
laws.26 Hence, despite Article 2 of the Paris Convention which substantially provides that (1)
nationals of member-countries shall have in this country rights specially provided by the Convention
as are consistent with Philippine laws, and enjoy the privileges that Philippine laws now grant or may
hereafter grant to its nationals, and (2) while no domicile requirement in the country where protection
is claimed shall be required of persons entitled to the benefits of the Union for the enjoyment of any
industrial property rights,27 foreign nationals must still observe and comply with the conditions
imposed by Philippine law on its nationals.

Considering that R.A. No. 166, as amended, specifically Sections 228 and 2-A29 thereof, mandates
actual use of the marks and/or emblems in local commerce and trade before they may be registered
and ownership thereof acquired, the petitioners cannot, therefore, dispense with the element of
actual use. Their being nationals of member-countries of the Paris Union does not alter the legal
situation.

In Emerald Garment Mfg. Corporation v. Court of Appeals,30 the Court reiterated its rulings in Sterling
Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft,31 Kabushi Kaisha Isetan v.
Intermediate Appellate Court,32 and Philip Morris v. Court of Appeals and Fortune Tobacco
Corporation33 on the importance of actual commercial use of a trademark in the Philippines
notwithstanding the Paris Convention:

The provisions of the 1965 Paris Convention … relied upon by private respondent and Sec. 21-A of
the Trademark Law were sufficiently expounded upon and qualified in the recent case of Philip
Morris, Inc., et. al. vs. Court of Appeals:

xxx xxx xxx

Following universal acquiescence and comity, our municipal law on trademarks regarding the
requirements of actual use in the Philippines must subordinate an international agreement inasmuch
as the apparent clash is being decided by a municipal tribunal. Xxx. Withal, the fact that international
law has been made part of the law of the land does not by any means imply the primacy of
international law over national law in the municipal sphere. Under the doctrine of incorporation as
applied in most countries, rules of International Law are given a standing equal, not superior, to
national legislative enactments.

xxx xxx xxx

In other words, (a foreign corporation) may have the capacity to sue for infringement … but the
question of whether they have an exclusive right over their symbol as to justify issuance of the
controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections
2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a foreign
corporation not licensed to do business in the Philippines files a complaint for infringement, the entity
need not be actually using its trademark in commerce in the Philippines. Such a foreign corporation
may have the personality to file a suit for infringement but it may not necessarily be entitled to
protection due to absence of actual use of the emblem in the local market.
Contrary to what petitioners suggest, the registration of trademark cannot be deemed conclusive as
to the actual use of such trademark in local commerce. As it were, registration does not confer upon
the registrant an absolute right to the registered mark. The certificate of registration merely
constitutes prima facie evidence that the registrant is the owner of the registered mark. Evidence of
non-usage of the mark rebuts the presumption of trademark ownership,34 as what happened here
when petitioners no less admitted not doing business in this country.35

Most importantly, we stress that registration in the Philippines of trademarks does not ipso facto
convey an absolute right or exclusive ownership thereof. To borrow from Shangri-La International
Hotel Management, Ltd. v. Development Group of Companies, Inc.36 trademark is a creation of use
and, therefore, actual use is a pre-requisite to exclusive ownership; registration is only an
administrative confirmation of the existence of the right of ownership of the mark, but does not
perfect such right; actual use thereof is the perfecting ingredient.37

Petitioners’ reliance on Converse Rubber Corporation38 is quite misplaced, that case being cast in a
different factual milieu. There, we ruled that a foreign owner of a Philippine trademark, albeit not
licensed to do, and not so engaged in, business in the Philippines, may actually earn reputation or
goodwill for its goods in the country. But unlike in the instant case, evidence of actual sales of
Converse rubber shoes, such as sales invoices, receipts and the testimony of a legitimate trader,
was presented in Converse.

This Court also finds the IP Code and the TRIPS Agreement to be inapplicable, the infringement
complaint herein having been filed in August 1982 and tried under the aegis of R.A. No. 166, as
amended. The IP Code, however, took effect only on January 1, 1998 without a provision as to its
retroactivity.39 In the same vein, the TRIPS Agreement was inexistent when the suit for infringement
was filed, the Philippines having adhered thereto only on December 16, 1994.

With the foregoing perspective, it may be stated right off that the registration of a trademark
unaccompanied by actual use thereof in the country accords the registrant only the standing to sue
for infringement in Philippine courts. Entitlement to protection of such trademark in the country is
entirely a different matter.

This brings us to the principal issue of infringement.

Section 22 of R.A. No. 166, as amended, defines what constitutes trademark infringement, as
follows:

Sec. 22. Infringement, what constitutes. – Any person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or
tradename in connection with the sale, offering for sale, or advertising of any goods, business or
services on or in connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy of color ably imitate any such mark or tradename and
apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such
goods, business, or services, shall be liable to a civil action by the registrant for any or all of the
remedies herein provided.

Petitioners would insist on their thesis of infringement since respondent’s mark "MARK" for
cigarettes is confusingly or deceptively similar with their duly registered "MARK VII," "MARK TEN"
and "LARK" marks likewise for cigarettes. To them, the word "MARK" would likely cause confusion in
the trade, or deceive purchasers, particularly as to the source or origin of respondent’s cigarettes.
The "likelihood of confusion" is the gravamen of trademark infringement.40 But likelihood of confusion
is a relative concept, the particular, and sometimes peculiar, circumstances of each case being
determinative of its existence. Thus, in trademark infringement cases, more than in other kinds of
litigation, precedents must be evaluated in the light of each particular case.41

In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the
dominancy test and the holistic test.42 The dominancy test43 sets sight on the similarity of the
prevalent features of the competing trademarks that might cause confusion and deception, thus
constitutes infringement. Under this norm, the question at issue turns on whether the use of the
marks involved would be likely to cause confusion or mistake in the mind of the public or deceive
purchasers.44

In contrast, the holistic test45 entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity.

Upon consideration of the foregoing in the light of the peculiarity of this case, we rule against the
likelihood of confusion resulting in infringement arising from the respondent’s use of the trademark
"MARK" for its particular cigarette product.

For one, as rightly concluded by the CA after comparing the trademarks involved in their entirety as
they appear on the products,46 the striking dissimilarities are significant enough to warn any
purchaser that one is different from the other. Indeed, although the perceived offending word
"MARK" is itself prominent in petitioners’ trademarks "MARK VII" and "MARK TEN," the entire
marking system should be considered as a whole and not dissected, because a discerning eye
would focus not only on the predominant word but also on the other features appearing in the labels.
Only then would such discerning observer draw his conclusion whether one mark would be
confusingly similar to the other and whether or not sufficient differences existed between the
marks.47

This said, the CA then, in finding that respondent’s goods cannot be mistaken as any of the three
cigarette brands of the petitioners, correctly relied on the holistic test.

But, even if the dominancy test were to be used, as urged by the petitioners, but bearing in mind that
a trademark serves as a tool to point out distinctly the origin or ownership of the goods to which it is
affixed,48 the likelihood of confusion tantamount to infringement appears to be farfetched. The reason
for the origin and/or ownership angle is that unless the words or devices do so point out the origin or
ownership, the person who first adopted them cannot be injured by any appropriation or imitation of
them by others, nor can the public be deceived.49

Since the word "MARK," be it alone or in combination with the word "TEN" and the Roman numeral
"VII," does not point to the origin or ownership of the cigarettes to which they apply, the local buying
public could not possibly be confused or deceived that respondent’s "MARK" is the product of
petitioners and/or originated from the U.S.A., Canada or Switzerland. And lest it be overlooked, no
actual commercial use of petitioners’ marks in local commerce was proven. There can thus be no
occasion for the public in this country, unfamiliar in the first place with petitioners’ marks, to be
confused.

For another, a comparison of the trademarks as they appear on the goods is just one of the
appreciable circumstances in determining likelihood of confusion. Del Monte Corp. v. CA50 dealt with
another, where we instructed to give due regard to the "ordinary purchaser," thus:
The question is not whether the two articles are distinguishable by their label when set side by side
but whether the general confusion made by the article upon the eye of the casual purchaser who is
unsuspicious and off his guard, is such as to likely result in his confounding it with the original. As
observed in several cases, the general impression of the ordinary purchaser, buying under the
normally prevalent conditions in trade and giving the attention such purchasers usually give in
buying that class of goods is the touchstone.

When we spoke of an "ordinary purchaser," the reference was not to the "completely unwary
customer" but to the "ordinarily intelligent buyer" considering the type of product involved.51

It cannot be over-emphasized that the products involved are addicting cigarettes purchased mainly
by those who are already predisposed to a certain brand. Accordingly, the ordinary buyer thereof
would be all too familiar with his brand and discriminating as well. We, thus, concur with the CA
when it held, citing a definition found in Dy Buncio v. Tan Tiao Bok,52 that the "ordinary purchaser" in
this case means "one accustomed to buy, and therefore to some extent familiar with, the goods in
question."

Pressing on with their contention respecting the commission of trademark infringement, petitioners
finally point to Section 22 of R.A. No. 166, as amended. As argued, actual use of trademarks in local
commerce is, under said section, not a requisite before an aggrieved trademark owner can restrain
the use of his trademark upon goods manufactured or dealt in by another, it being sufficient that he
had registered the trademark or trade-name with the IP Office. In fine, petitioners submit that
respondent is liable for infringement, having manufactured and sold cigarettes with the trademark
"MARK" which, as it were, are identical and/or confusingly similar with their duly registered
trademarks "MARK VII," "MARK TEN" and "LARK".

This Court is not persuaded.

In Mighty Corporation v. E & J Gallo Winery,53 the Court held that the following constitute the
elements of trademark infringement in accordance not only with Section 22 of R.A. No. 166, as
amended, but also Sections 2, 2-A, 9-A54and 20 thereof:

(a) a trademark actually used in commerce in the Philippines and registered in the principal
register of the Philippine Patent Office,

(b) is used by another person in connection with the sale, offering for sale, or advertising of
any goods, business or services or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or such trademark is reproduced,
counterfeited, copied or colorably imitated by another person and such reproduction,
counterfeit, copy or colorable imitation is applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods,
business or services as to likely cause confusion or mistake or to deceive purchasers,

(c) the trademark is used for identical or similar goods, and

(d) such act is done without the consent of the trademark registrant or assignee. lawphil.net

As already found herein, while petitioners have registered the trademarks "MARK VII," "MARK TEN"
and "LARK" for cigarettes in the Philippines, prior actual commercial use thereof had not been
proven. In fact, petitioners’ judicial admission of not doing business in this country effectively belies
any pretension to the contrary.
Likewise, we note that petitioners even failed to support their claim that their respective marks are
well-known and/or have acquired goodwill in the Philippines so as to be entitled to protection even
without actual use in this country in accordance with Article 6bis55 of the Paris Convention. As
correctly found by the CA, affirming that of the trial court:

xxx the records are bereft of evidence to establish that the appellants’ [petitioners’] products are
indeed well-known in the Philippines, either through actual sale of the product or through different
forms of advertising. This finding is supported by the fact that appellants admit in their Complaint that
they are not doing business in the Philippines, hence, admitting that their products are not being sold
in the local market. We likewise see no cogent reason to disturb the trial court’s finding that the
appellants failed to establish that their products are widely known by local purchasers as "(n)o
specific magazine or periodical published in the Philippines, or in other countries but circulated
locally" have been presented by the appellants during trial. The appellants also were not able to
show the length of time or the extent of the promotion or advertisement made to popularize their
products in the Philippines.56

Last, but not least, we must reiterate that the issue of trademark infringement is factual, with both the
trial and appellate courts having peremptorily found allegations of infringement on the part of
respondent to be without basis. As we said time and time again, factual determinations of the trial
court, concurred in by the CA, are final and binding on this Court.57

For lack of convincing proof on the part of the petitioners of actual use of their registered trademarks
prior to respondent’s use of its mark and for petitioners’ failure to demonstrate confusing similarity
between said trademarks, the dismissal of their basic complaint for infringement and the concomitant
plea for damages must be affirmed. The law, the surrounding circumstances and the equities of the
situation call for this disposition.

WHEREFORE, the petition is hereby DENIED. Accordingly, the assailed decision and resolution of
the Court of Appeals are AFFIRMED.

Costs against the petitioners.

SO ORDERED.

CANCIO C. GARCIA
Associate Justice

WE CONCUR:

REYNATO S. PUNO
Associate Justice
Chairperson

ANGELINA SANDOVAL-GUTIERREZ RENATO C. CORONA

Associate Justice Asscociate Justice

ADOLFO S. AZCUNA
Associate Justice

ATTESTATION
I attest that the conclusions in the above decision were reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.

REYNATO S. PUNO
Associate Justice
Chairperson, Second Division

CERTIFICATION

Pursuant to Article VIII, Section 13 of the Constitution, and the Division Chairperson's Attestation, it
is hereby certified that the conclusions in the above decision were reached in consultation before the
case was assigned to the writer of the opinion of the Court.

ARTEMIO V. PANGANIBAN
Chief Justice

Footnotes

1Penned by Associate Justice Mercedes Gozo-Dadole (ret.) and concurred in by Associate

Justices Bennie Adefuin-Dela Cruz (ret.) and Mariano C. del Castillo; Rollo, pp. 9-34.

2 Id. at 36.

3
CA Decision; Id. at 10-19.

4 CA Decision; Id. at 33.

5 Id. at 228-296.

6Ramos v. Pepsi-Cola Bottling Co. of the Phils., L-22533, February 9, 1967, 19 SCRA 289,
292.

7Moomba Mining Exploration Co. v. CA, G.R. No. 108846, October 26, 99, 317 SCRA 388,
397.

8Smith Kline Beckman Corporation v. CA, G.R. No. 126627, August 14, 2003, 409 SCRA
33, 39.

9 F. D. Regalado, REMEDIAL LAW COMPENDIUM, Vol. 1, 1999 ed., p. 541.

10Ibid., citing Pilar Dev. Corp. v. IAC, et al., G.R. No. 72283, December 12, 1986, 146 SCRA
215.

11 Sec. 38 of R.A. No. 166.

316 U.S. 203, 53 USPQ 323 [1942] cited in Societe Des Produits Nestle, S.A. v. Court of
12

Appeals, G.R. No. 112012, April 4, 2001, 356 SCRA 207, 215.
13 Sec. 2-A. Ownership of trademarks, trade names and servicemarks; how acquired. –
Anyone who lawfully produces or deals in merchandise of any kind or who engages in any
lawful business, xxx, by actual use thereof in manufacture or trade, in business, xxx, may
appropriate to his exclusive use a trademark, a trade name, or a servicemark not so
appropriated by another, to distinguish his merchandise, [or] business xxx from the
merchandise, business or service of others. The ownership or possession of a trademark,
trade name, servicemark, heretofore or hereafter appropriated, as in this section provided,
shall be recognized and protected in the same manner and to the same extent as are other
property rights known to the law.

14 SEC. 5. Requirements of the application. – xxx

(a) Sworn statement of the applicant’s domicile and citizenship, the date of the
applicant’s first use of the mark or trade-name, the date of the applicant’s first use of
the mark or trade-name in commerce or business, the goods, business or services in
connection with which the mark or trade-name is used and the mode or manner in
which the mark is used in connection with such goods, business or services, and that
the person making the application believes himself, or the firm, corporation or
association on whose behalf he makes the verification, to be the owner of the mark
or trade-name sought to be registered, that the mark or trade-name is in use in
commerce or business, and that to be best of his knowledge no person, firm,
corporation or association has the right to use such mark or trade-name in commerce
or business either in the identical form thereof or in such near resemblance thereto
as might be calculated to deceive; xxx.

15 Sec. 37. Rights of Foreign Registrants-Persons who are nationals of, domiciled in, or have
a bona fide or effective business or commercial establishment in any foreign country, which
is a party to an international convention or treaty relating to marks or tradenames on the
repression of unfair competition to which the Philippines may be a party, shall be entitled to
the benefits and subject to the provisions of this Act . . . x x x

"Tradenames of persons described in the first paragraph of this section shall be

protected without the obligation of filing or registration (sic) whether or not they form
parts of marks."

16
G.R. No. L-27906, January 8, 1987, 147 SCRA 154.

17 Philip Morris, Inc., et al. vs. CA, et al., July 16, 1993, 224 SCRA 576, 595.

18 Superseded by R.A. No. 8293 which took effect on January 1, 1998.

19SEC. 20. Certificate of registration prima facie evidence of validity. - A certificate of

registration of a mark or trade name shall be prima facie evidence of the validity of the
registration, the registrant’s ownership of the mark xxx, and of the registrant’s exclusive right
to use the same xxx, subject to any conditions and limitations stated therein. (Superseded by
Sec. 138 of R.A. No. 8293).

20SECTION 21-A. Any foreign corporation or juristic person to which a mark or trade-name
has been registered or assigned under this Act may bring an action hereunder for
infringement, xxx, whether or not it has been licensed to do business in the Philippines under
Act [No. 1495] or the Corporation Law, at the time it brings complaint: Provided, That the
country of which the said foreign corporation or juristic person is a citizen or in which it is
domiciled, by treaty, convention or law, grants a similar privilege to corporate or juristic
persons of the Philippines. (Superseded by Section 160 of R.A. No. 8293)

21 G.R. No. L-40163, June 19, 1982, 114 SCRA 420.

22Puma Sportschufabriken Rudolf Dassler, K.G. v. IAC., G.R. No. 75067, February 26, 1988,
158 SCRA 233.

23Agpalo, The Law on Trademark, Infringement and Unfair Competition, 2000 ed., pp. 209-
210.

24The Paris Convention is essentially a compact among the various member countries to
accord in their own countries to citizens of the other contracting parties’ trademarks and
other rights comparable to those accorded their own citizens by their domestic laws. The
underlying principle is that foreign nationals should be given the same treatment in each of
the member countries as that country makes available to its own citizens. (La Chemise
Lacoste, S.A. v. Fernandez, G.R. No. L-63796-97, May 21, 1984, 129 SCRA 373.)

25 See La Chemise Lacoste S.A. v. Fernandez, supra at pp. 386-387.

26 Agpalo, The Law on Trademark, Infringement and Unfair Competition, supra at p. 199.

27 ART. 2. Nationals of each of the countries of the Union shall, as regards the protection of
industrial property, enjoy in all the other countries of the Union the advantages that their
respective laws now grant, or may hereafter grant, to nationals, without prejudice to the
rights specially provided by the present Convention. Consequently, they shall have the same
protection as the latter, and the same legal remedy against any infringement of their rights,
provided they observe the conditions and formalities imposed upon nationals.

28 Sec. 2. What are registrable. – Trademarks, tradenames and service marks owned by
persons, corporations, partnerships or associations domiciled in the Philippines and by
persons, corporations, partnerships or associations domiciled in any foreign country may be
registered in accordance with the provisions of this Act; Provided, That said trademarks,
tradenames, or service marks are actually in use in commerce and services not less than
two months in the Philippines before the time the applications for registration are filed; And
provided, further, That the country of which the applicant for registration is a citizen grants by
law substantially similar privileges to citizens of the Philippines, and such fact is officially
certified, …. (As amended by R.A. No. 865).

29Sec. 2-A. Ownership of trademarks, trade names and servicemarks; how acquired. –
Anyone who lawfully produces or deals in merchandise of any kind or who engages in any
lawful business, or who renders any lawful service in commerce, by actual use thereof in
manufacture or trade, in business, and in the service rendered, may appropriate to his
exclusive use a trademark, a trade name, or a servicemark not so appropriated by another,
to distinguish his merchandise, business or service from the merchandise, business or
service of others. The ownership or possession of a trademark, trade name, servicemark,
heretofore or hereafter appropriated, as in this section provided, shall be recognized and
protected in the same manner and to the same extent as are other property rights known to
the law. (Now Sec. 122 of R.A. No. 8293.)

30 G.R. No. 100098, December 29, 1995, 251 SCRA 600, 619-621.
31 L-19906, April 30, 1969, 27 SCRA 1214.

32 G.R. No. 75420, November 15, 1991, 203 SCRA 583.

33 Supra.

34 Emerald Garment Mfg. Corp. supra at p. 623.

35 Petitioners’ Complaint in the RTC; Rollo, p. 207.

36 G.R. No. 159938, March 31, 2006.

37 Supra note 32.

38 Supra note 16.

39 Sec. 241 of IP Code.

McDonald’s Corp. v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004, 437
40

SCRA 10.

41Emerald Garment Mfg. Corporation v. CA, supra, citing Esso Standard Eastern Inc. v. CA,
L-29971, August 31, 1982, 116 SCRA 336; also in Mighty Corporation v. E & J Gallo Winery,
G.R. No. 154342, July 14, 2004, 434 SCRA 473, 504.

42 Id. at p. 506.

43Applied in McDonald’s Corp. v. L.C. Big Mak Burger, Inc., supra; Asia Brewery, Inc. v. CA,
G.R. No. 103543, July 5, 1993, 224 SCRA 437; Converse Rubber Corp. v. Universal Rubber
Products, Inc., supra; Phil. Nut Industry Inc. v. Standard Brands, Inc., et al., L-23035, July
31, 1975, 65 SCRA 575.

44 Emerald Garment Mfg. Corporation v. Court of Appeals, supra at p. 615.

45 Applied in Emerald Garment Mfg. Corporation v. Court of Appeals, supra; Del Monte Corp.
v. CA, G.R. No. 78325, January 25, 1990, 181 SCRA 410; Fruit of the Loom, Inc. v. CA, et
al., L-32747, September 29, 1984, 133 SCRA 405; Bristol Myers Co. v. Dir. of Patents, et al.,
L-21587, May 19, 1966, 17 SCRA 128.

46
See CA Decision; Rollo, pp. 28-30.

47Mead Johnson & Co. v. N.V.J. Van Dorp. Ltd., et al., L-17501, April 27, 1963, 7 SCRA 768,
771.

48 Gabriel v. Perez, et al., L-24075, January 31, 1974, 55 SCRA 406.

49 74 Am. Jur. 2d, Trademarks and Tradenames, Sec. 5.

50 Supra at p. 417.
 51 Emerald Garment Mfg. Corp. v. CA, supra at p. 618.

52 42 Phil. 190 (1921).

53 G.R. No. 154342, July 14, 2004, 434 SCRA 473, 496-497.

54 Sec. 9-A. Equitable principles to govern proceedings. – In opposition proceedings and in

all other inter partes proceedings … under this Act, equitable principles of laches, estoppel,
and acquiescence where applicable, may be considered and applied. (As added by R.A. No.
638.)

55Art. 6bis provides: x x x the countries of the Union undertakes, either administratively if
their legislation so permits, or at the request of an interested party, to refuse or to cancel the
registration and to prohibit the use of a trademark which constitutes a reproduction, imitation
or translation, liable to create confusion, of a mark considered by the competent authority of
the country of registration or use to be well-known in that country as being already the mark
of a person entitled to the benefits of the present Convention and used for identical or similar
goods. These provisions shall also apply when the essential part of the mark constitutes a
reproduction of any of such well-known mark or an imitation liable to create confusion
therewith.

G.R. No. 159938 March 31, 2006

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD., SHANGRI-LA PROPERTIES,

INC., MAKATI SHANGRI-LA HOTEL & RESORT, INC., AND KUOK PHILIPPINES PROPERTIES,
INC., Petitioners,
vs.
DEVELOPERS GROUP OF COMPANIES, INC., Respondent.

DECISION

GARCIA, J.:

In this petition for review under Rule 45 of the Rules of Court, petitioners Shangri-La International
Hotel Management, Ltd. (SLIHM), et al. assail and seek to set aside the Decision dated May 15,
20031 of the Court of Appeals (CA) in CA-G.R. CV No. 53351 and its Resolution2 of September 15,
2003 which effectively affirmed with modification an earlier decision of the Regional Trial Court
(RTC) of Quezon City in Civil Case No. Q-91-8476, an action for infringement and damages, thereat
commenced by respondent Developers Group of Companies, Inc. (DGCI) against the herein
petitioners.

The facts:

At the core of the controversy are the "Shangri-La" mark and "S" logo. Respondent DGCI claims
ownership of said mark and logo in the Philippines on the strength of its prior use thereof within the
country. As DGCI stresses at every turn, it filed on October 18, 1982 with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) pursuant to Sections 2 and 4 of Republic Act (RA)
No. 166,3 as amended, an application for registration covering the subject mark and logo. On May
31, 1983, the BPTTT issued in favor of DGCI the corresponding certificate of registration
therefor, i.e., Registration No. 31904. Since then, DGCI started using the "Shangri-La" mark and "S"
logo in its restaurant business.
On the other hand, the Kuok family owns and operates a chain of hotels with interest in hotels and
hotel-related transactions since 1969. As far back as 1962, it adopted the name "Shangri-La" as part
of the corporate names of all companies organized under the aegis of the Kuok Group of Companies
(the Kuok Group). The Kuok Group has used the name "Shangri-La" in all Shangri-La hotels and
hotel-related establishments around the world which the Kuok Family owned.

To centralize the operations of all Shangri-la hotels and the ownership of the "Shangri-La" mark and
"S" logo, the Kuok Group had incorporated in Hong Kong and Singapore, among other places,
several companies that form part of the Shangri-La International Hotel Management Ltd. Group of
Companies. EDSA Shangri-La Hotel and Resort, Inc., and Makati Shangri-La Hotel and Resort, Inc.
were incorporated in the Philippines beginning 1987 to own and operate the two (2) hotels put up by
the Kuok Group in Mandaluyong and Makati, Metro Manila.

All hotels owned, operated and managed by the aforesaid SLIHM Group of Companies adopted and
used the distinctive lettering of the name "Shangri-La" as part of their trade names.

From the records, it appears that Shangri-La Hotel Singapore commissioned a Singaporean design
artist, a certain Mr. William Lee, to conceptualize and design the logo of the Shangri-La hotels.

During the launching of the stylized "S" Logo in February 1975, Mr. Lee gave the following
explanation for the logo, to wit:

The logo which is shaped like a "S" represents the uniquely Asean architectural structures as well as
keep to the legendary Shangri-la theme with the mountains on top being reflected on waters below
and the connecting centre [sic] line serving as the horizon. This logo, which is a bold, striking
definitive design, embodies both modernity and sophistication in balance and thought.

Since 1975 and up to the present, the "Shangri-La" mark and "S" logo have been used consistently
and continuously by all Shangri-La hotels and companies in their paraphernalia, such as
stationeries, envelopes, business forms, menus, displays and receipts.

The Kuok Group and/or petitioner SLIHM caused the registration of, and in fact registered, the
"Shangri-La" mark and "S" logo in the patent offices in different countries around the world.

On June 21, 1988, the petitioners filed with the BPTTT a petition, docketed as Inter Partes Case No.
3145, praying for the cancellation of the registration of the "Shangri-La" mark and "S" logo issued to
respondent DGCI on the ground that the same were illegally and fraudulently obtained and
appropriated for the latter's restaurant business. They also filed in the same office Inter Partes Case
No. 3529, praying for the registration of the same mark and logo in their own names.

Until 1987 or 1988, the petitioners did not operate any establishment in the Philippines, albeit they
advertised their hotels abroad since 1972 in numerous business, news, and/or travel magazines
widely circulated around the world, all readily available in Philippine magazines and newsstands.
They, too, maintained reservations and booking agents in airline companies, hotel organizations,
tour operators, tour promotion organizations, and in other allied fields in the Philippines.

It is principally upon the foregoing factual backdrop that respondent DGCI filed a complaint for
Infringement and Damages with the RTC of Quezon City against the herein petitioners SLIHM,
Shangri-La Properties, Inc., Makati Shangri-La Hotel & Resort, Inc., and Kuok Philippine Properties,
Inc., docketed as Civil Case No. Q-91-8476 and eventually raffled to Branch 99 of said court. The
complaint with prayer for injunctive relief and damages alleged that DGCI has, for the last eight (8)
years, been the prior exclusive user in the Philippines of the mark and logo in question and the
registered owner thereof for its restaurant and allied services. As DGCI alleged in its complaint,
SLIHM, et al., in promoting and advertising their hotel and other allied projects then under
construction in the country, had been using a mark and logo confusingly similar, if not identical, with
its mark and "S" logo. Accordingly, DGCI sought to prohibit the petitioners, as defendants a quo,
from using the "Shangri-La" mark and "S" logo in their hotels in the Philippines.

In their Answer with Counterclaim, the petitioners accused DGCI of appropriating and illegally using
the "Shangri-La" mark and "S" logo, adding that the legal and beneficial ownership thereof pertained
to SLIHM and that the Kuok Group and its related companies had been using this mark and logo
since March 1962 for all their corporate names and affairs. In this regard, they point to the Paris
Convention for the Protection of Industrial Property as affording security and protection to SLIHM's
exclusive right to said mark and logo. They further claimed having used, since late 1975, the
internationally-known and specially-designed "Shangri-La" mark and "S" logo for all the hotels in
their hotel chain.

Pending trial on the merits of Civil Case No. Q-91-8476, the trial court issued a Writ of Preliminary
Injunction enjoining the petitioners from using the subject mark and logo. The preliminary injunction
issue ultimately reached the Court in G.R. No. 104583 entitled Developers Group of Companies, Inc.
vs. Court of Appeals, et al. In a decision4 dated March 8, 1993, the Court nullified the writ of
preliminary injunction issued by the trial court and directed it to proceed with the main case and
decide it with deliberate dispatch.

While trial was in progress, the petitioners filed with the court a motion to suspend proceedings on
account of the pendency before the BPTTT of Inter Partes Case No. 3145 for the cancellation of
DGCI's certificate of registration. For its part, respondent DGCI filed a similar motion in that case,
invoking in this respect the pendency of its infringement case before the trial court. The parties'
respective motions to suspend proceedings also reached the Court via their respective petitions in
G.R. No. 114802, entitled Developers Group of Companies, Inc. vs. Court of Appeals, et al. and
G.R. No. 111580, entitled Shangri-La International Hotel Management LTD., et al. vs. Court of
Appeals, et al., which were accordingly consolidated.

In a consolidated decision5 dated June 21, 2001, the Court, limiting itself to the core issue of
whether, despite the petitioners' institution of Inter Partes Case No. 3145 before the BPTTT, herein
respondent DGCI "can file a subsequent action for infringement with the regular courts of justice in
connection with the same registered mark," ruled in the affirmative, but nonetheless ordered the
BPTTT to suspend further proceedings in said inter partes case and to await the final outcome of the
main case.

Meanwhile, trial on the merits of the infringement case proceeded. Presented as DGCI's lone
witness was Ramon Syhunliong, President and Chairman of DGCI's Board of Directors. Among
other things, this witness testified that:

1. He is a businessman, with interest in lumber, hotel, hospital, trading and restaurant

businesses but only the restaurant business bears the name "Shangri-La" and uses the
same and the "S-logo" as service marks. The restaurant now known as "Shangri-La Finest
Chinese Cuisine" was formerly known as the "Carvajal Restaurant" until December 1982,
when respondent took over said restaurant business.

2. He had traveled widely around Asia prior to 1982, and admitted knowing the Shangri-La
Hotel in Hong Kong as early as August 1982.
 3. The "S-logo" was one of two (2) designs given to him in December 1982, scribbled on a
piece of paper by a jeepney signboard artist with an office somewhere in Balintawak. The
unnamed artist supposedly produced the two designs after about two or three days from the
time he (Syhunliong) gave the idea of the design he had in mind.

4. On October 15, 1982, or before the unknown signboard artist supposedly created the
"Shangri-La" and "S" designs, DGCI was incorporated with the primary purpose of "owning
or operating, or both, of hotels and restaurants".

5. On October 18, 1982, again prior to the alleged creation date of the mark and logo, DGCI
filed an application for trademark registration of the mark "SHANGRI-LA FINEST CHINESE
CUISINE & S. Logo" with the BPTTT. On said date, respondent DGCI amended its Articles
of Incorporation to reflect the name of its restaurant, known and operating under the style
and name of "SHANGRI-LA FINEST CHINESE CUISINE." Respondent DGCI obtained
Certificate of Registration No. 31904 for the "Shangri-La" mark and "S" logo.

Eventually, the trial court, on the postulate that petitioners', more particularly petitioner SLIHM's, use
of the mark and logo in dispute constitutes an infringement of DGCI's right thereto, came out with its
decision6 on March 8, 1996 rendering judgment for DGCI, as follows:

WHEREFORE, judgment is hereby rendered in favor of [respondent DGCI] and against [SLIHM, et
al.] -

a) Upholding the validity of the registration of the service mark "Shangri-la" and "S-Logo" in
the name of [respondent];

b) Declaring [petitioners'] use of said mark and logo as infringement of [respondent's] right
thereto;

c) Ordering [petitioners], their representatives, agents, licensees, assignees and other

persons acting under their authority and with their permission, to permanently cease and
desist from using and/or continuing to use said mark and logo, or any copy, reproduction or
colorable imitation

thereof, in the promotion, advertisement, rendition of their hotel and allied projects and
services or in any other manner whatsoever;

d) Ordering [petitioners] to remove said mark and logo from any premises, objects, materials
and paraphernalia used by them and/or destroy any and all prints, signs, advertisements or
other materials bearing said mark and logo in their possession and/or under their control;
and

e) Ordering [petitioners], jointly and severally, to indemnify [respondent] in the amounts of

P2,000,000.00 as actual and compensatory damages, P500,000.00 as attorney's fee and
expenses of litigation.

Let a copy of this Decision be certified to the Director, Bureau of Patents, Trademarks and
Technology Transfer for his information and appropriate action in accordance with the provisions of
Section 25, Republic Act No. 166

Costs against [petitioners].

SO ORDERED. [Words in brackets added.]

Therefrom, the petitioners went on appeal to the CA whereat their recourse was docketed as CA
G.R. SP No. 53351.

As stated at the threshold hereof, the CA, in its assailed Decision of May 15, 2003,7 affirmed that of
the lower court with the modification of deleting the award of attorney's fees. The appellate court
predicated its affirmatory action on the strength or interplay of the following premises:

1. Albeit the Kuok Group used the mark and logo since 1962, the evidence presented shows
that the bulk use of the tradename was abroad and not in the Philippines (until 1987). Since
the Kuok Group does not have proof of actual use in commerce in the Philippi

G.R. No. 164324 August 14, 2009

TANDUAY DISTILLERS, INC., Petitioner,

vs.
GINEBRA SAN MIGUEL, INC., Respondent.

DECISION

CARPIO, J.:

The Case

Tanduay Distillers, Inc. (Tanduay) filed this Petition for Review on Certiorari1 assailing the Court of
Appeals’ Decision dated 9 January 20042 as well as the Resolution dated 2 July 20043 in CA-G.R.
SP No. 79655 denying the Motion for Reconsideration. In the assailed decision, the Court of Appeals
(CA) affirmed the Regional Trial Court’s Orders4 dated 23 September 2003 and 17 October 2003
which respectively granted Ginebra San Miguel, Inc.’s (San Miguel) prayer for the issuance of a
temporary restraining order (TRO) and writ of preliminary injunction. The Regional Trial Court of
Mandaluyong City, Branch 214 (trial court), enjoined Tanduay "from committing the acts complained
of, and, specifically, to cease and desist from manufacturing, distributing, selling, offering for sale,
advertising, or otherwise using in commerce the mark "Ginebra," and manufacturing, producing,
distributing, or otherwise dealing in gin products which have the general appearance of, and which
are confusingly similar with," San Miguel’s marks, bottle design, and label for its gin products.5

The Facts

Tanduay, a corporation organized and existing under Philippine laws, has been engaged in the
liquor business since 1854. In 2002, Tanduay developed a new gin product distinguished by its
sweet smell, smooth taste, and affordable price. Tanduay claims that it engaged the services of an
advertising firm to develop a brand name and a label for its new gin product. The brand name
eventually chosen was "Ginebra Kapitan" with the representation of a revolutionary Kapitan on
horseback as the dominant feature of its label. Tanduay points out that the label design of "Ginebra
Kapitan" in terms of color scheme, size and arrangement of text, and other label features were
precisely selected to distinguish it from the leading gin brand in the Philippine market, "Ginebra San
Miguel." Tanduay also states that the "Ginebra Kapitan" bottle uses a resealable twist cap to
distinguish it from "Ginebra San Miguel" and other local gin products with bottles which use the
crown cap or tansan.6
After filing the trademark application for "Ginebra Kapitan" with the Intellectual Property Office (IPO)
and after securing the approval of the permit to manufacture and sell "Ginebra Kapitan" from the
Bureau of Internal Revenue, Tanduay began selling "Ginebra Kapitan" in Northern and Southern
Luzon areas in May 2003. In June 2003, "Ginebra Kapitan" was also launched in Metro Manila.7

On 13 August 2003, Tanduay received a letter from San Miguel’s counsel. The letter informed
Tanduay to immediately cease and desist from using the mark "Ginebra" and from committing acts
that violate San Miguel’s intellectual property rights.8

On 15 August 2003, San Miguel filed a complaint for trademark infringement, unfair competition and
damages, with applications for issuance of TRO and Writ of Preliminary Injunction against Tanduay
before the Regional Trial Court of Mandaluyong. The case was raffled to Branch 214 and docketed
as IP Case No. MC-03-01 and Civil Case No. MC-03-073.9

On 25 and 29 August and 4 September 2003, the trial court conducted hearings on the TRO. San
Miguel submitted five affidavits, but only one affiant, Mercedes Abad, was presented for cross-
examination because the trial court ruled that such examination would be inconsistent with the
summary nature of a TRO hearing.10 San Miguel submitted the following pieces of evidence:11

1. Affidavit of Mercedes Abad, President and Managing Director of the research firm NFO
Trends, Inc. (NFO Trends), to present, among others, market survey results which prove that
gin drinkers associate the term "Ginebra" with San Miguel, and that the consuming public is
being misled that "Ginebra Kapitan" is a product of San Miguel;

2. Market Survey results conducted by NFO Trends to determine the brand associations of
the mark "Ginebra" and to prove that the consuming public is confused as to the
manufacturer of "Ginebra Kapitan";

3. Affidavit of Ramon Cruz, San Miguel’s Group Product Manager, to prove, among others,
the prior right of San Miguel to the mark "Ginebra" as shown in various applications for, and
registrations of, trademarks that contain the mark "Ginebra." His affidavit included
documents showing that the mark "Ginebra" has been used on San Miguel’s gin products
since 1834;

4. Affidavits of Leopoldo Guanzon, Jr., San Miguel’s Trade and Promo Merchandising Head
for North Luzon Area, and Juderick Crescini, San Miguel’s District Sales Supervisor for
South Luzon-East Area, to prove, among others, that Tanduay’s salesmen or distributors
misrepresent "Ginebra Kapitan" as San Miguel’s product and that numerous retailers of San
Miguel’s gin products are confused as to the manufacturer of "Ginebra Kapitan"; and

5. Affidavit of Jose Reginald Pascual, San Miguel’s District Sales Supervisor for the North-
Greater Manila Area, to prove, among others, that gin drinkers confuse San Miguel to be the
manufacturer of "Ginebra Kapitan" due to the use of the dominant feature "Ginebra."

Tanduay filed a Motion to Strike Out Hearsay Affidavits and Evidence, which motion was denied by
the trial court. Tanduay presented witnesses who affirmed their affidavits in open court, as follows:12

1. Ramoncito Bugia, General Services Manager of Tanduay. Attached to his affidavit were
various certificates of registration of trademarks containing the word "Ginebra" obtained by
Tanduay and other liquor companies, to prove that the word "Ginebra" is required to be
disclaimed by the IPO. The affidavit also attested that there are other liquor companies using
 the word "Ginebra" as part of their trademarks for gin products aside from San Miguel and
Tanduay.

2. Herbert Rosales, Vice President of J. Salcedo and Associates, Inc., the advertising and
promotions company hired by Tanduay to design the label of "Ginebra Kapitan." His affidavit
attested that the label was designed to make it "look absolutely different from the Ginebra
San Miguel label."

On 23 September 2003, the trial court issued a TRO prohibiting Tanduay from manufacturing, selling
and advertising "Ginebra Kapitan."13 The dispositive portion reads in part:

WHEREFORE, the application for temporary restraining order is hereby GRANTED and made
effective immediately. Plaintiff is directed to post a bond of ONE MILLION PESOS (Php
1,000,000.00) within five (5) days from issuance hereof, otherwise, this restraining order shall lose
its efficacy. Accordingly, defendant Tanduay Distillers, Inc., and all persons and agents acting for
and in behalf are enjoined to cease and desist from manufacturing, distributing, selling, offering for
sale and/or advertising or otherwise using in commerce the mark "GINEBRA KAPITAN" which
employs, thereon, or in the wrappings, sundry items, cartons and packages thereof, the mark
"GINEBRA" as well as from using the bottle design and labels for its gin products during the
effectivity of this temporary restraining order unless a contrary order is issued by this Court.14

On 3 October 2003, Tanduay filed a petition for certiorari with the CA.15 Despite Tanduay’s Urgent
Motion to Defer Injunction Hearing, the trial court continued to conduct hearings on 8, 9, 13 and 14
October 2003 for Tanduay to show cause why no writ of preliminary injunction should be
issued.16 On 17 October 2003, the trial court granted San Miguel’s application for the issuance of a
writ of preliminary injunction.17 The dispositive portion of the Order reads:

WHEREFORE, the plaintiff’s application for a writ of preliminary injunction is GRANTED. Upon
plaintiff’s filing of an injunctive bond executed to the defendant in the amount of ₱20,000,000.00
(TWENTY MILLION) PESOS, let a Writ of Preliminary Injunction issue enjoining the defendant, its
employees, agents, representatives, dealers, retailers or assigns, and any all persons acting on its
behalf, from committing the acts complained of, and, specifically, to cease and desist from
manufacturing, distributing, selling, offering for sale, advertising, or otherwise using in commerce the
mark "GINEBRA", and manufacturing, producing, distributing or otherwise dealing in gin products
which have the general appearance of, and which are confusingly similar with, plaintiff’s marks,
bottle design and label for its gin products.

SO ORDERED.18

On 22 October 2003, Tanduay filed a supplemental petition in the CA assailing the injunction order.
On 10 November 2003, the CA issued a TRO enjoining the trial court from implementing its
injunction order and from further proceeding with the case.19 On 23 December 2003, the CA issued a
resolution directing the parties to appear for a hearing on 6 January 2004 to determine the need for
the issuance of a writ of preliminary injunction.20

On 9 January 2004, the CA rendered a Decision dismissing Tanduay’s petition and supplemental
petition. On 28 January 2004, Tanduay moved for reconsideration which was denied in a Resolution
dated 2 July 2004.21

Aggrieved by the decision dismissing the petition and supplemental petition and by the resolution
denying the Motion for Reconsideration, Tanduay elevated the case before this Court.
 The Trial Court’s Orders

In the Order dated 23 September 2003, the trial court stated that during the hearings conducted on
25 and 29 August and on 4 and 11 September 2003, the following facts have been established:

1. San Miguel has registered the trademark "Ginebra San Miguel";

2. There is a close resemblance between "Ginebra San Miguel" and "Ginebra Kapitan";

3. The close similarity between "Ginebra San Miguel" and "Ginebra Kapitan" may give rise to
confusion of goods since San Miguel and Tanduay are competitors in the business of
manufacturing and selling liquors; and

"Ginebra," which is a well-known trademark, was adopted by Tanduay to benefit from the reputation
and advertisement of the originator of the mark "Ginebra San Miguel," and to convey to the public
the impression of some supposed connection between the manufacturer of the gin product sold
under the name "Ginebra San Miguel" and the new gin product "Ginebra Kapitan."22

Based on these facts, the trial court concluded that San Miguel had demonstrated a clear, positive,
and existing right to be protected by a TRO. Otherwise, San Miguel would suffer irreparable injury if
infringement would not be enjoined. Hence, the trial court granted the application for a TRO and set
the hearing for preliminary injunction.23

In the Order dated 17 October 2003, the trial court granted the application for a writ of preliminary
injunction. The trial court ruled that while a corporation acquires a trade name for its product by
choice, it should not select a name that is confusingly similar to any other name already protected by
law or is patently deceptive, confusing, or contrary to existing law.24

The trial court pointed out that San Miguel and its predecessors have continuously used "Ginebra"
as the dominant feature of its gin products since 1834. On the other hand, Tanduay filed its
trademark application for "Ginebra Kapitan" only on 7 January 2003. The trial court declared that
San Miguel is the prior user and registrant of "Ginebra" which has become closely associated to all
of San Miguel’s gin products, thereby gaining popularity and goodwill from such name.25

The trial court noted that while the subject trademarks are not identical, it is obviously clear that the
word "Ginebra" is the dominant feature in the trademarks. The trial court stated that there is a strong
indication that confusion is likely to occur since one would inevitably be led to conclude that both
products are affiliated with San Miguel due to the distinctive mark "Ginebra" which is readily
identified with San Miguel. The trial court concluded that ordinary purchasers would not examine the
letterings or features printed on the label but would simply be guided by the presence of the
dominant mark "Ginebra." Any difference would pale in significance in the face of evident similarities
in the dominant features and overall appearance of the products. The trial court emphasized that the
determinative factor was whether the use of such mark would likely cause confusion on the part of
the buying public, and not whether it would actually cause confusion on the part of the purchasers.
Thus, Tanduay’s choice of "Ginebra" as part of the trademark of "Ginebra Kapitan" tended to show
Tanduay’s intention to ride on the popularity and established goodwill of "Ginebra San Miguel."26

The trial court held that to constitute trademark infringement, it was not necessary that every word
should be appropriated; it was sufficient that enough be taken to deceive the public in the purchase
of a protected article.27
The trial court conceded to Tanduay’s assertion that the term "Ginebra" is a generic word; hence, it
is non-registrable because generic words are by law free for all to use. However, the trial court relied
on the principle that even if a word is incapable of appropriation as a trademark, the word may still
acquire a proprietary connotation through long and exclusive use by a business entity with reference
to its products. The purchasing public would associate the word to the products of a business entity.
The word thus associated would be entitled to protection against infringement and unfair
competition. The trial court held that this principle could be made to apply to this case because San
Miguel has shown that it has established goodwill of considerable value, such that its gin products
have acquired a well-known reputation as just "Ginebra." In essence, the word "Ginebra" has
become a popular by-word among the consumers and they had closely associated it with San
Miguel.28

On the other hand, the trial court held that Tanduay failed to substantiate its claim against the
issuance of the injunctive relief.29

The Ruling of the Court of Appeals

In resolving the petition and supplemental petition, the CA stated that it is constrained to limit itself to
the determination of whether the TRO and the writ of preliminary injunction were issued by the trial
court with grave abuse of discretion amounting to lack of jurisdiction.30

To warrant the issuance of a TRO, the CA ruled that the affidavits of San Miguel’s witnesses and the
fact that the registered trademark "Ginebra San Miguel" exists are enough to make a finding that
San Miguel has a clear and unmistakable right to prevent irreparable injury because gin drinkers
confuse San Miguel to be the manufacturer of "Ginebra Kapitan."31

The CA enumerated the requisites for an injunction: (1) there must be a right in esse or the
existence of a right to be protected and (2) the act against which the injunction is to be directed is a
violation of such right. The CA stated that the trademarks "Ginebra San Miguel" and "Ginebra
Kapitan" are not identical, but it is clear that the word "Ginebra" is the dominant feature in both
trademarks. There was a strong indication that confusion was likely to occur. One would be led to
conclude that both products are affiliated with San Miguel because the distinctive mark "Ginebra" is
identified with San Miguel. It is the mark which draws the attention of the buyer and leads him to
conclude that the goods originated from the same manufacturer.32

The CA observed that the gin products of "Ginebra San Miguel" and "Ginebra Kapitan" possess the
same physical attributes with reference to their form, composition, texture, or quality. The CA upheld
the trial court’s ruling that San Miguel has sufficiently established its right to prior use and
registration of the mark "Ginebra" as a dominant feature of its trademark. "Ginebra" has been
identified with San Miguel’s goods, thereby, it acquired a right in such mark, and if another infringed
the trademark, San Miguel could invoke its property right.33

The Issue

The central question for resolution is whether San Miguel is entitled to the writ of preliminary
injunction granted by the trial court as affirmed by the CA. For this reason, we shall deal only with
the questioned writ and not with the merits of the case pending before the trial court.

The Ruling of the Court

Clear and Unmistakable Right

Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an order granted at any
stage of a proceeding prior to the judgment or final order, requiring a party or a court, agency, or a
person to refrain from a particular act or acts.

A preliminary injunction is a provisional remedy for the protection of substantive rights and interests.
It is not a cause of action in itself but merely an adjunct to the main case. Its objective is to prevent a
threatened or continuous irreparable injury to some of the parties before their claims can be
thoroughly investigated and advisedly adjudicated. It is resorted to only when there is a pressing
need to avoid injurious consequences which cannot be remedied under any standard
compensation.34

Section 3, Rule 58 of the Rules of Court provides:

SECTION 3. Grounds for issuance of a writ of preliminary injunction.—A preliminary injunction may
be granted when it is established:

(a) That the applicant is entitled to the relief demanded, and the whole or part of such relief
consists in restraining the commission or continuance of the act or acts complained of, or in
requiring the performance of an act or acts, either for a limited period or perpetually;

(b) That the commission, continuance or non-performance of the act or acts complained of
during the litigation would probably work injustice to the applicant; or

(c) That a party, court, agency or a person is doing, threatening, or is attempting to do, or is
procuring or suffering to be done, some act or acts probably in violation of the rights of the
applicant respecting the subject of the action or proceeding, and tending to render the
judgment ineffectual.

Before an injunctive writ is issued, it is essential that the following requisites are present: (1) the
existence of a right to be protected and (2) the acts against which the injunction is directed are
violative of the right. The onus probandi is on the movant to show that the invasion of the right
sought to be protected is material and substantial, that the right of the movant is clear and
unmistakable, and that there is an urgent and paramount necessity for the writ to prevent serious
damage.35

San Miguel claims that the requisites for the valid issuance of a writ of preliminary injunction were
clearly established. The clear and unmistakable right to the exclusive use of the mark "Ginebra" was
proven through the continuous use of "Ginebra" in the manufacture, distribution, marketing and sale
of gin products throughout the Philippines since 1834. To the gin-drinking public, the word "Ginebra"
does not simply indicate a kind of beverage; it is now synonymous with San Miguel’s gin products.36

San Miguel contends that "Ginebra" can be appropriated as a trademark, and there was no error in
the trial court’s provisional ruling based on the evidence on record. Assuming that "Ginebra" is a
generic word which is proscribed to be registered as a trademark under Section 123.1(h)37 of
Republic Act No. 8293 or the Intellectual Property Code (IP Code),38 it can still be appropriated and
registered as a trademark under Section 123.1(j)39 in relation to Section 123.240 of the IP Code,
considering that "Ginebra" is also a mark which designates the kind of goods produced by San
Miguel.41 San Miguel alleges that although "Ginebra," the Spanish word for "gin," may be a term
originally incapable of exclusive appropriation, jurisprudence dictates that the mark has become
distinctive of San Miguel’s products due to its substantially exclusive and continuous use as the
dominant feature of San Miguel’s trademarks since 1834. Hence, San Miguel is entitled to a finding
that the mark is deemed to have acquired a secondary meaning.42 San Miguel states that Tanduay
failed to present any evidence to disprove its claims; thus, there is no basis to set aside the grant of
the TRO and writ of preliminary injunction.43

San Miguel states that its disclaimer of the word "Ginebra" in some of its registered marks is without
prejudice to, and did not affect, its existing or future rights over "Ginebra," especially since "Ginebra"
has demonstrably become distinctive of San Miguel’s products.44 San Miguel adds that it did not
disclaim "Ginebra" in all of its trademark registrations and applications like its registration for
"Ginebra Cruz de Oro," "Ginebra Ka Miguel," "Ginebra San Miguel" bottle, "Ginebra San Miguel,"
and "Barangay Ginebra."45

Tanduay asserts that not one of the requisites for the valid issuance of a preliminary injunction is
present in this case. Tanduay argues that San Miguel cannot claim the exclusive right to use the
generic word "Ginebra" for its gin products based on its registration of the composite marks "Ginebra
San Miguel," "Ginebra S. Miguel 65," and "La Tondeña Cliq! Ginebra Mix," because in all of these
registrations, San Miguel disclaimed any exclusive right to use the non-registrable word "Ginebra" for
gin products.46 Tanduay explains that the word "Ginebra," which is disclaimed by San Miguel in all of
its registered trademarks, is an unregistrable component of the composite mark "Ginebra San
Miguel." Tanduay argues that this disclaimer further means that San Miguel does not have an
exclusive right to the generic word "Ginebra."47 Tanduay states that the word "Ginebra" does not
indicate the source of the product, but it is merely descriptive of the name of the product itself and
not the manufacturer thereof.48

Tanduay submits that it has been producing gin products under the brand names Ginebra 65,
Ginebra Matador, and Ginebra Toro without any complaint from San Miguel. Tanduay alleges that
San Miguel has not filed any complaint against other liquor companies which use "Ginebra" as part
of their brand names such as Ginebra Pinoy, a registered trademark of Webengton Distillery;
Ginebra Presidente and Ginebra Luzon as registered trademarks of Washington Distillery, Inc.; and
Ginebra Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco & Co.,
Inc.49 Tanduay claims that the existence of these products, the use and registration of the word
"Ginebra" by other companies as part of their trademarks belie San Miguel’s claim that it has been
the exclusive user of the trademark containing the word "Ginebra" since 1834.

Tanduay argues that before a court can issue a writ of preliminary injunction, it is imperative that San
Miguel must establish a clear and unmistakable right that is entitled to protection. San Miguel’s
alleged exclusive right to use the generic word "Ginebra" is far from clear and unmistakable.
Tanduay claims that the injunction issued by the trial court was based on its premature conclusion
that "Ginebra Kapitan" infringes "Ginebra San Miguel."50

In Levi Strauss & Co. v. Clinton Apparelle, Inc.,51 we held:

While the matter of the issuance of a writ of preliminary injunction is addressed to the sound
discretion of the trial court, this discretion must be exercised based upon the grounds and in the
manner provided by law. The exercise of discretion by the trial court in injunctive matters is generally
not interfered with save in cases of manifest abuse. And to determine whether there was grave
abuse of discretion, a scrutiny must be made of the bases, if any, considered by the trial court in
granting injunctive relief. Be it stressed that injunction is the strong arm of equity which must be
issued with great caution and deliberation, and only in cases of great injury where there is no
commensurate remedy in damages.52

The CA upheld the trial court’s ruling that San Miguel has sufficiently established its right to prior use
and registration of the word "Ginebra" as a dominant feature of its trademark. The CA ruled that
based on San Miguel’s extensive, continuous, and substantially exclusive use of the word "Ginebra,"
it has become distinctive of San Miguel’s gin products; thus, a clear and unmistakable right was
shown.

We hold that the CA committed a reversible error. The issue in the main case is San Miguel’s right to
the exclusive use of the mark "Ginebra." The two trademarks "Ginebra San Miguel" and "Ginebra
Kapitan" apparently differ when taken as a whole, but according to San Miguel, Tanduay
appropriates the word "Ginebra" which is a dominant feature of San Miguel’s mark.

It is not evident whether San Miguel has the right to prevent other business entities from using the
word "Ginebra." It is not settled (1) whether "Ginebra" is indeed the dominant feature of the
trademarks, (2) whether it is a generic word that as a matter of law cannot be appropriated, or (3)
whether it is merely a descriptive word that may be appropriated based on the fact that it has
acquired a secondary meaning.

The issue that must be resolved by the trial court is whether a word like "Ginebra" can acquire a
secondary meaning for gin products so as to prohibit the use of the word "Ginebra" by other gin
manufacturers or sellers. This boils down to whether the word "Ginebra" is a generic mark that is
incapable of appropriation by gin manufacturers.

In Asia Brewery, Inc. v. Court of Appeals,53 the Court ruled that "pale pilsen" are generic words,
"pale" being the actual name of the color and "pilsen" being the type of beer, a light bohemian beer
with a strong hops flavor that originated in Pilsen City in Czechoslovakia and became famous in the
Middle Ages, and hence incapable of appropriation by any beer manufacturer.54 Moreover, Section
123.1(h) of the IP Code states that a mark cannot be registered if it "consists exclusively of signs
that are generic for the goods or services that they seek to identify."1avv phi 1

In this case, a cloud of doubt exists over San Miguel’s exclusive right relating to the word "Ginebra."
San Miguel’s claim to the exclusive use of the word "Ginebra" is clearly still in dispute because of
Tanduay’s claim that it has, as others have, also registered the word "Ginebra" for its gin products.
This issue can be resolved only after a full-blown trial.

In Ong Ching Kian Chuan v. Court of Appeals,55 we held that in the absence of proof of a legal right
and the injury sustained by the movant, the trial court’s order granting the issuance of an injunctive
writ will be set aside, for having been issued with grave abuse of discretion.

We find that San Miguel’s right to injunctive relief has not been clearly and unmistakably
demonstrated. The right to the exclusive use of the word "Ginebra" has yet to be determined in the
main case. The trial court’s grant of the writ of preliminary injunction in favor of San Miguel, despite
the lack of a clear and unmistakable right on its part, constitutes grave abuse of discretion
amounting to lack of jurisdiction.

Prejudging the Merits of the Case

Tanduay alleges that the CA, in upholding the issuance of the writ of preliminary injunction, has
prejudged the merits of the case since nothing is left to be decided by the trial court except the
amount of damages to be awarded to San Miguel.56

San Miguel claims that neither the CA nor the trial court prejudged the merits of the case. San
Miguel states that the CA did not rule on the ultimate correctness of the trial court’s evaluation and
appreciation of the evidence before it, but merely found that the assailed Orders of the trial court are
supported by the evidence on record and that Tanduay was not denied due process.57 San Miguel
argues that the CA only upheld the trial court’s issuance of the TRO and writ of preliminary injunction
upon a finding that there was sufficient evidence on record, as well as legal authorities, to warrant
the trial court’s preliminary findings of fact.58

The instructive ruling in Manila International Airport Authority v. Court of Appeals59 states:

Considering the far-reaching effects of a writ of preliminary injunction, the trial court should have
exercised more prudence and judiciousness in its issuance of the injunction order. We remind trial
courts that while generally the grant of a writ of preliminary injunction rests on the sound discretion of
the court taking cognizance of the case, extreme caution must be observed in the exercise of such
discretion. The discretion of the court a quo to grant an injunctive writ must be exercised based on
the grounds and in the manner provided by law. Thus, the Court declared in Garcia v. Burgos:

"It has been consistently held that there is no power the exercise of which is more delicate, which
requires greater caution, deliberation and sound discretion, or more dangerous in a doubtful case,
than the issuance of an injunction. It is the strong arm of equity that should never be extended
unless to cases of great injury, where courts of law cannot afford an adequate or commensurate
remedy in damages.

Every court should remember that an injunction is a limitation upon the freedom of action of the
defendant and should not be granted lightly or precipitately. It should be granted only when the court
is fully satisfied that the law permits it and the emergency demands it." (Emphasis in the original)

We believe that the issued writ of preliminary injunction, if allowed, disposes of the case on the
merits as it effectively enjoins the use of the word "Ginebra" without the benefit of a full-blown trial. In
Rivas v. Securities and Exchange Commission,60 we ruled that courts should avoid issuing a writ of
preliminary injunction which would in effect dispose of the main case without trial. The issuance of
the writ of preliminary injunction had the effect of granting the main prayer of the complaint such that
there is practically nothing left for the trial court to try except the plaintiff’s claim for damages.

Irreparable Injury

Tanduay points out that the supposed damages that San Miguel will suffer as a result of Tanduay’s
infringement or unfair competition cannot be considered irreparable because the damages are
susceptible of mathematical computation. Tanduay invokes Section 156.1 of the IP Code61 as the
basis for the computation of damages.62

San Miguel avers that it stands to suffer irreparable injury if the manufacture and sale of Tanduay’s
"Ginebra Kapitan" are not enjoined. San Miguel claims that the rough estimate of the damages63 it
would incur is simply a guide for the trial court in computing the appropriate docket fees. San Miguel
asserts that the full extent of the damage it would suffer is difficult to measure with any reasonable
accuracy because it has invested hundreds of millions over a period of 170 years to establish
goodwill and reputation now being enjoyed by the "Ginebra San Miguel" mark.64 San Miguel refutes
Tanduay’s claim that the injury which San Miguel stands to suffer can be measured with reasonable
accuracy as the legal formula to determine such injury is provided in Section 156.1 of the IP Code.
San Miguel reasons that if Tanduay’s claim is upheld, then there would never be a proper occasion
to issue a writ of preliminary injunction in relation to complaints for infringement and unfair
competition, as the injury which the owner of the mark suffers, or stands to suffer, will always be
susceptible of mathematical computation.65

In Levi Strauss & Co. v. Clinton Apparelle, Inc.,66 this Court upheld the appellate court’s ruling that
the damages Levi Strauss & Co. had suffered or continues to suffer may be compensated in terms
of monetary consideration. This Court, quoting Government Service Insurance System v.
Florendo,67 held:

x x x a writ of injunction should never issue when an action for damages would adequately
compensate the injuries caused. The very foundation of the jurisdiction to issue the writ of injunction
rests in the probability of irreparable injury, inadequacy of pecuniary compensation and the
prevention of the multiplicity of suits, and where facts are not shown to bring the case within these
conditions, the relief of injunction should be refused.

Based on the affidavits and market survey report submitted during the injunction hearings, San
Miguel has failed to prove the probability of irreparable injury which it will stand to suffer if the sale of
"Ginebra Kapitan" is not enjoined. San Miguel has not presented proof of damages incapable of
pecuniary estimation. At most, San Miguel only claims that it has invested hundreds of millions over
a period of 170 years to establish goodwill and reputation now being enjoyed by the "Ginebra San
Miguel" mark such that the full extent of the damage cannot be measured with reasonable accuracy.
Without the submission of proof that the damage is irreparable and incapable of pecuniary
estimation, San Miguel’s claim cannot be the basis for a valid writ of preliminary injunction.

Wherefore, we GRANT the petition. We SET ASIDE the Decision of the Court of Appeals dated 9
January 2004 and the Resolution dated 2 July 2004 in CA-G.R. SP No. 79655. We declare VOID the
Order dated 17 October 2003 and the corresponding writ of preliminary injunction issued by Branch
214 of the Regional Trial Court of Mandaluyong City in IP Case No. MC-03-01 and Civil Case No.
MC-03-073.

The Regional Trial Court of Mandaluyong City, Branch 214, is directed to continue expeditiously with
the trial to resolve the merits of the case.

SO ORDERED.

ANTONIO T. CARPIO
Associate Justice

WE CONCUR:

REYNATO S. PUNO
Chief Justice
Chairperson

RENATO C. CORONA TERESITA J. LEONARDO-DE CASTRO

Associate Justice Associate Justice

LUCAS P. BERSAMIN
Associate Justice

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, I certify that the conclusions in the above
Decision had been reached in consultation before the case was assigned to the writer of the opinion
of the Court’s Division.
REYNATO S. PUNO
Chief Justice

Footnotes

1 Under Rule 45 of the Rules of Court.

2Penned by Associate Justice Andres B. Reyes, Jr. with Associate Justices Buenaventura J.
Guerrero and Rosmari D. Carandang, concurring.

3Penned by Associate Justice Andres B. Reyes, Jr. with Associate Justices Buenaventura J.
Guerrero and Rosmari D. Carandang, concurring.

4 Penned by Judge Edwin D. Sorongon.

5 Rollo, Vol. I, p. 541.

6 Id. at 12-15.

7 Id.

8 Id. at 16.

9 Rollo, Vol. I, pp. 16-18; rollo, Vol. II, p. 1028.

10 Rollo, Vol. II, p. 1029.

11 Id. at 1029-1030.

12 Rollo, Vol. I, p. 20.

13 Id. at 19-21.

14 Id. at 227.

15 Id. at 21.

16 Id. at 22.

17 Id. at 25.

18 Id. at 541.

19 Id. at 25-26.

20 Id. at 26.
21 Id. at 126, 132.

22 Id. at 226.

23 Id. at 226-227.

24 Id. at 538.

25 Id.

26 Id. at 538-539.

27 Id. at 539.

28 Id. at 540.

29 Id. at 541.

30 Id. at 103-104.

31 Id. at 111.

32 Id. at 124-125.

33 Id. at 125-126.

34 Del Rosario v. Court of Appeals, 325 Phil. 424, 431 (1996).

35 Kho v. Court of Appeals, 429 Phil. 140, 150 (2002).

36 Rollo, Vol. II, p. 1487.

37 Section 123. Registrability. - 123.1. A mark cannot be registered if it:

xxx

(h) Consists exclusively of signs that are generic for the goods or services that they
seek to identify;

xxx

An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property
38

Office, Providing for its Powers and Functions, and for other Purposes. Approved on 6 June
1997 and took effect on 1 January 1998.

39 Section 123. Registrability. - 123.1. A mark cannot be registered if it:

xxx
 (j) Consists exclusively of signs or of indications that may serve in trade to designate
the kind, quality, quantity, intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or other characteristics of the
goods or services;

40Section 123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing
shall prevent the registration of any such sign or device which has become distinctive in
relation to the goods for which registration is requested as a result of the use that have been
made of it in commerce in the Philippines. The Office may accept as prima facie evidence
that the mark has become distinctive, as used in connection with the applicant’s goods or
services in commerce, proof of substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for five (5) years before the date on which the claim
of distinctiveness is made.

41 Rollo, Vol. II, pp. 1444-1445.

42 Id. at 1448-1449.

43 Id. at 1449.

44 Id. at 1463-1464.

45 Id. at 1465-1466.

46 Id. at 1508, 1514, 1610, 1614, 1617, 1620.

San Miguel’s Certificate of Registration No. 7484 for the mark "Ginebra San Miguel"
says, "The word "Ginebra" is disclaimed apart from the mark as shown." Certificate of
Registration No. 42568 for the trademark "Ginebra San Miguel" says: "Applicant
disclaimed the word "Ginebra" apart from the mark as shown." Certificate of
Registration No. 53688 for the mark "Ginebra S. Miguel 65" says: "The word Ginebra
65 is disclaimed." Certificate of Registration No. 4-1996-113597 for the mark "La
Tondeña Cliq! Ginebra Mix & Stylized Letters Ltd. With crown device inside a
rectangle" disclaimed the words "Ginebra Mix."

47 Id. at 1537.

48 Id. at 1579-1580.

49 Id. at 1510-1511.

50 Id. at 1581-1582.

51 G.R. No. 138900, 20 September 2005, 470 SCRA 236.

52 Id. at 253.

53 G.R. No. 103543, 5 July 1993, 224 SCRA 437, 448.

G.R. No. 190065 August 16, 2010

DERMALINE, INC., Petitioner,
vs.
MYRA PHARMACEUTICALS, INC. Respondent.

DECISION

NACHURA, J.:

This is a petition for review on certiorari1 seeking to reverse and set aside the Decision dated August
7, 20092 and the Resolution dated October 28, 20093 of the Court of Appeals (CA) in CA-G.R. SP
No. 108627.

The antecedent facts and proceedings—

On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the Intellectual Property
Office (IPO) an application for registration of the trademark "DERMALINE DERMALINE, INC."
(Application No. 4-2006011536). The application was published for Opposition in the IPO E-Gazette
on March 9, 2007.

On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified Opposition4 alleging
that the trademark sought to be registered by Dermaline so resembles its trademark "DERMALIN"
and will likely cause confusion, mistake and deception to the purchasing public. Myra said that the
registration of Dermaline’s trademark will violate Section 1235 of Republic Act (R.A.) No. 8293
(Intellectual Property Code of the Philippines). It further alleged that Dermaline’s use and registration
of its applied trademark will diminish the distinctiveness and dilute the goodwill of Myra’s
"DERMALIN," registered with the IPO way back July 8, 1986, renewed for ten (10) years on July 8,
2006. Myra has been extensively using "DERMALIN" commercially since October 31, 1977, and said
mark is still valid and subsisting.

Myra claimed that, despite Dermaline’s attempt to differentiate its applied mark, the dominant feature
is the term "DERMALINE," which is practically identical with its own "DERMALIN," more particularly
that the first eight (8) letters of the marks are identical, and that notwithstanding the additional letter
"E" by Dermaline, the pronunciation for both marks are identical. Further, both marks have three (3)
syllables each, with each syllable identical in sound and appearance, even if the last syllable of
"DERMALINE" consisted of four (4) letters while "DERMALIN" consisted only of three (3).

Myra also pointed out that Dermaline applied for the same mark "DERMALINE" on June 3, 2003 and
was already refused registration by the IPO. By filing this new application for registration, Dermaline
appears to have engaged in a fishing expedition for the approval of its mark. Myra argued that its
intellectual property right over its trademark is protected under Section 1476 of R.A. No. 8293.

Myra asserted that the mark "DERMALINE DERMALINE, INC." is aurally similar to its own mark
such that the registration and use of Dermaline’s applied mark will enable it to obtain benefit from
Myra’s reputation, goodwill and advertising and will lead the public into believing that Dermaline is, in
any way, connected to Myra. Myra added that even if the subject application was under
Classification 447 for various skin treatments, it could still be connected to the "DERMALIN" mark
under Classification 58 for pharmaceutical products, since ultimately these goods are very closely
related.

In its Verified Answer,9 Dermaline countered that a simple comparison of the trademark
"DERMALINE DERMALINE, INC." vis-à-vis Myra’s "DERMALIN" trademark would show that they
have entirely different features and distinctive presentation, thus it cannot result in confusion,
mistake or deception on the part of the purchasing public. Dermaline contended that, in determining
if the subject trademarks are confusingly similar, a comparison of the words is not the only
determinant, but their entirety must be considered in relation to the goods to which they are
attached, including the other features appearing in both labels. It claimed that there were glaring and
striking dissimilarities between the two trademarks, such that its trademark "DERMALINE
DERMALINE, INC." speaks for itself (Res ipsa loquitur). Dermaline further argued that there could
not be any relation between its trademark for health and beauty services from Myra’s trademark
classified under medicinal goods against skin disorders.

The parties failed to settle amicably. Consequently, the preliminary conference was terminated and
they were directed to file their respective position papers.10

On April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision No. 2008-7011 sustaining
Myra’s opposition pursuant to Section 123.1(d) of R.A. No. 8293. It disposed—

WHEREFORE, the Verified Opposition is, as it is, hereby SUSTAINED. Consequently, Application
Serial No. 4-2006-011536 for the mark ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’ for
Dermaline, Inc. under class 44 covering the aforementioned goods filed on 21 October 2006, is as it
is hereby, REJECTED.

Let the file wrapper of ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’ subject matter of this
case be forwarded to the Bureau of Trademarks (BOT) for appropriate action in accordance with this
Decision.

SO ORDERED.12

Aggrieved, Dermaline filed a motion for reconsideration, but it was denied under Resolution No.
2009-12(D)13 dated January 16, 2009.

Expectedly, Dermaline appealed to the Office of the Director General of the IPO. However, in an
Order14 dated April 17, 2009, the appeal was dismissed for being filed out of time.

Undaunted, Dermaline appealed to the CA, but it affirmed and upheld the Order dated April 17, 2009
and the rejection of Dermaline’s application for registration of trademark. The CA likewise denied
Dermaline’s motion for reconsideration; hence, this petition raising the issue of whether the CA erred
in upholding the IPO’s rejection of Dermaline’s application for registration of trademark.

The petition is without merit.

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others.15 Inarguably, it is an intellectual property
deserving protection by law. In trademark controversies, each case must be scrutinized according to
its peculiar circumstances, such that jurisprudential precedents should only be made to apply if they
are specifically in point.16

As Myra correctly posits, as a registered trademark owner, it has the right under Section 147 of R.A.
No. 8293 to prevent third parties from using a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its registered trademark, where such use would
result in a likelihood of confusion.
In determining likelihood of confusion, case law has developed two (2) tests, the Dominancy Test
and the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks
that might cause confusion or deception.17 It is applied when the trademark sought to be registered
contains the main, essential and dominant features of the earlier registered trademark, and
confusion or deception is likely to result. Duplication or imitation is not even required; neither is it
necessary that the label of the applied mark for registration should suggest an effort to imitate. The
important issue is whether the use of the marks involved would likely cause confusion or mistake in
the mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and therefore to
some extent familiar with, the goods in question.18 Given greater consideration are 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.19 The test of dominancy is now explicitly incorporated
into law in Section 155.1 of R.A. No. 8293 which provides—

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; (emphasis supplied)

On the other hand, the Holistic Test entails a consideration of the entirety of the marks as applied to
the products, including labels and packaging, in determining confusing similarity. The scrutinizing
eye of the observer must focus not only on the predominant words but also on the other features
appearing in both labels so that a conclusion may be drawn as to whether one is confusingly similar
to the other.20

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2)
types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he was purchasing the other;
and (2) confusion of business (source or origin confusion), where, although the goods of the parties
are different, the product, the mark of which registration is applied for by one party, is such as might
reasonably be assumed to originate with the registrant of an earlier product, and the public would
then be deceived either into that belief or into the belief that there is some connection between the
two parties, though inexistent.21

In rejecting the application of Dermaline for the registration of its mark "DERMALINE DERMALINE,
INC.," the IPO applied the Dominancy Test. It declared that both confusion of goods and service and
confusion of business or of origin were apparent in both trademarks. It also noted that, per Bureau
Decision No. 2007-179 dated December 4, 2007, it already sustained the opposition of Myra
involving the trademark "DERMALINE" of Dermaline under Classification 5. The IPO also upheld
Myra’s right under Section 138 of R.A. No. 8293, which provides that a certification of registration of
a mark is prima facie evidence of the validity of the registration, the registrant’s ownership of the
mark, and of the registrant’s exclusive right to use the same in connection with the goods and those
that are related thereto specified in the certificate.

We agree with the findings of the IPO. As correctly applied by the IPO in this case, while there are
no set rules that can be deduced as what constitutes a dominant feature with respect to trademarks
applied for registration; usually, what are taken into account are signs, color, design, peculiar shape
or name, or some special, easily remembered earmarks of the brand that readily attracts and
catches the attention of the ordinary consumer.22
Dermaline’s insistence that its applied trademark "DERMALINE DERMALINE, INC." had differences
"too striking to be mistaken" from Myra’s "DERMALIN" cannot, therefore, be sustained. While it is
true that the two marks are presented differently – Dermaline’s mark is written with the first
"DERMALINE" in script going diagonally upwards from left to right, with an upper case "D" followed
by the rest of the letters in lower case, and the portion "DERMALINE, INC." is written in upper case
letters, below and smaller than the long-hand portion; while Myra’s mark "DERMALIN" is written in
an upright font, with a capital "D" and followed by lower case letters – the likelihood of confusion is
still apparent. This is because they are almost spelled in the same way, except for Dermaline’s mark
which ends with the letter "E," and they are pronounced practically in the same manner in three (3)
syllables, with the ending letter "E" in Dermaline’s mark pronounced silently. Thus, when an ordinary
purchaser, for example, hears an advertisement of Dermaline’s applied trademark over the radio,
chances are he will associate it with Myra’s registered mark.

Further, Dermaline’s stance that its product belongs to a separate and different classification from
Myra’s products with the registered trademark does not eradicate the possibility of mistake on the
part of the purchasing public to associate the former with the latter, especially considering that both
classifications pertain to treatments for the skin.
1avv phi 1

Indeed, the registered trademark owner may use its mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations of the
products for specific segments of the market. The Court is cognizant that the registered trademark
owner enjoys protection in product and market areas that are the normal potential expansion of his
business. Thus, we have held –

Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited
to guarding his goods or business from actual market competition with identical or similar products of
the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or
trade-name is likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the field (see 148 ALR
56 et seq; 53 Am Jur. 576) or is in any way connected with the activities of the infringer; or when it
forestalls the normal potential expansion of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576,
577).23 (Emphasis supplied)

Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such
that, considering the current proliferation of health and beauty products in the market, the
purchasers would likely be misled that Myra has already expanded its business through Dermaline
from merely carrying pharmaceutical topical applications for the skin to health and beauty services.

Verily, when one applies for the registration of a trademark or label which is almost the same or that
very closely resembles one already used and registered by another, the application should be
rejected and dismissed outright, even without any opposition on the part of the owner and user of a
previously registered label or trademark. This is intended not only to avoid confusion on the part of
the public, but also to protect an already used and registered trademark and an established
goodwill.24

Besides, the issue on protection of intellectual property, such as trademarks, is factual in nature. The
findings of the IPO, upheld on appeal by the same office, and further sustained by the CA, bear
great weight and deserves respect from this Court. Moreover, the decision of the IPO had already
attained finality when Dermaline failed to timely file its appeal with the IPO Office of the Director
General.
WHEREFORE, the petition is DENIED. The Decision dated August 7, 2009 and the Resolution
dated October 28, 2009 of the Court of Appeals in CA-G.R. SP No. 108627 are AFFIRMED. Costs
against petitioner.

SO ORDERED.

ANTONIO EDUARDO B. NACHURA

Associate Justice

WE CONCUR:

ANTONIO T. CARPIO
Associate Justice
Chairperson

DIOSDADO M. PERALTA ROBERTO A. ABAD

Associate Justice Associate Justice

JOSE CATRAL MENDOZA

Associate Justice

ATTESTATION

I attest that the conclusions in the above Resolution were reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

ANTONIO T. CARPIO
Associate Justice
Chairperson, Second Division

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution and the Division Chairperson's Attestation, I
certify that the conclusions in the above Resolution had been reached in consultation before the
case was assigned to the writer of the opinion of the Court’s Division.

RENATO C. CORONA
Chief Justice

Footnotes

1 Rollo, pp. 3-18.

2Penned by Associate Justice Martin S. Villarama, Jr. (now a member of this Court), with
Associate Justices Vicente S.E. Veloso and Normandie B. Pizarro, concurring; id. at 19-32.

3 Id. at 32.
4 Id. at 78-86.

5 SEC. 123. Registrability. – 123.1. A mark cannot be registered if it:

xxx

(d) Is identical with a registered mark belonging to a different proprietor or a mark

with an earlier filing or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

x x x (Emphasis supplied.)

6 SEC. 147. Rights Conferred. — 147.1. The owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owner’s consent from using in the
course of trade identical or similar signs or containers for goods or services which are
identical or similar to those in respect of which the trademark is registered where such use
would result in a likelihood of confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed.

147.2. The exclusive right of the owner of a well-known mark defined in Subsection
123.1(e) which is registered in the Philippines, shall extend to goods and services
which are not similar to those in respect of which the mark is registered: Provided,
That use of that mark in relation to those goods or services would indicate a
connection between those goods or services would indicate a connection between
those goods or services and the owner of the registered mark: Provided further, That
the interests of the owner of the registered mark are likely to be damaged by such
use.

7"FACIAL, BACK CLEANING, ACNE TREATMENT AND CONTROL SKIN PEELING (FACE
BODY, ARMPIT, ARMS AND LEGS), SLIMMING, HAIR GROWER TREATMENT, SKIN
BLEACHING (FACE, BODY, ARMPIT, BODY & LEGS), DERMALIFT (FACE LIFTING,
BODY TONING, EYEBAG REMOVAL), EXCESSIVE SWEATING, BODY ODOR
TREATMENT AND CONTROL, OPEN PORES TREATMENT, STRETCH MARK
TREATMENT, BODY MASSAGE, EYELASH PERMING, TATTOO (EYEBROW, UPPER
AND LOWER LID, LIP), WOMEN’S HAIRCUT, MEN’S HAIRCUT, KID’S HAIRCUT, BLOW-
DRY SETTING, UP-STYLE (LADIES), PERMING, TINT (TOUCH UP), HIGHLIGHTS (CAP),
HIGHLIGHTS (FOIL), CELLOPHANE, HAIR COLOR, HAIR RELAXING, HAIR
TREATMENT/SPA, HOT OIL, FULL MAKE-UP, EYE MAKE-UP, FOOT SPA WITH
PEDICURE, FOOT SCRUB, MANICURE, EYEBROW THREADING, UPPER LIP
THREADING, FULL BODY MASSAGE, HALF BODY MASSAGE, SAUNA."

8"TOPICAL ANTIBACTERIAL, ANTIFUNGAL, ANTISCABIES PREPARATIONS FOR THE

TREATMENT OF SKIN DISORDERS."

9 Rollo, pp. 87-93.

 10Position Paper (For the Opposer), rollo, pp. 94-106; Position Paper for Dermaline, pp. 107-
119.

11 Id. at 37-50.

12 Id. at.26.

13 Id. at 52-53.

14 Id. at 34-35.

Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073,
15

November 25, 2009, 605 SCRA 523, 528; McDonald’s Corporation v. MacJoy Fastfood
Corporation, G.R. No. 166115, February 2, 2007, 514 SCRA 95, 107.

Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493
16

SCRA 333, 356.

17 Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 406 Phil. 905, 918 (2001).

18Philip Morris, Inc. v. Fortune Tobacco Corporation, supra at 359, citing Dy Buncio v. Tan
Tiao Bok, 42 Phil 190, 196-197 (1921).

19 McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 (2004).

20 Mighty Corporation v. E. & J. Gallo Winery, 478 Phil. 615, 659 (2004).

21McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 428, citing Sterling Products
International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al., 137 Phil 838,
852 (1969).

22 Rollo, p. 47.

McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 432, citing Sta. Ana v.
23

Maliwat, et al., 133 Phil. 1006, 1013 (1968).

24McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 406, citing Faberge
Incorporated v. Intermediate Appellate Court, G.R. No. 71189, November 4, 1992, 215
SCRA 316, 320 and Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapania, 108
Phil. 833, 836.

.R. No. 192294 November 21, 2012

GREAT WHITE SHARK ENTERPRISES, INC., Petitioner,

vs.
DANILO M. CARALDE, JR., Respondent.

DECISION

PERLAS-BERNABE, J.:
Assailed in this Petition for Review on Certiorari under Rule 45 of the Rules of Court is the
December 14, 2009 Decision1 of the Court of Appeals (CA) in CA-G.R. SP No. 105787, which
reversed and set aside the October 6, 2008 Decision2 of the Director General of the Intellectual
Property Office (IPO), and directed him to grant the application for the mark "SHARK & LOGO" filed
by respondent Danilo M. Caralde, Jr. (Caralde).

The Factual Antecedents

On July 31, 2002, Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark
application seeking to register the mark "SHARK & LOGO" for his manufactured goods under Class
25, such as slippers, shoes and sandals. Petitioner Great White Shark Enterprises, Inc. (Great White
Shark), a foreign corporation domiciled in Florida, USA, opposed3 the application claiming to be the
owner of the mark consisting of a representation of a shark in color, known as "GREG NORMAN
LOGO" (associated with apparel worn and promoted by Australian golfer Greg Norman). It alleged
that, being a world famous mark which is pending registration before the BLA since February 19,
2002,4 the confusing similarity between the two (2) marks is likely to deceive or confuse the
purchasing public into believing that Caralde's goods are produced by or originated from it, or are
under its sponsorship, to its damage and prejudice.

In his Answer,5 Caralde explained that the subject marks are distinctively different from one another
and easily distinguishable. When compared, the only similarity in the marks is in the word "shark"
alone, differing in other factors such as appearance, style, shape, size, format, color, ideas counted
by marks, and even in the goods carried by the parties.

Pending the inter partes proceedings, Great White Shark’s trademark application was granted and it
was issued Certificate of Registration No. 4-2002-001478 on October 23, 2006 for clothing,
headgear and footwear, including socks, shoes and its components.6

The Ruling of the BLA Director

On June 14, 2007, the BLA Director rendered a Decision7 rejecting Caralde's application,
ratiocinating, as follows:

Prominent in both competing marks is the illustration of a shark. The dominant feature in opposer's
1âwphi 1

mark is the illustration of a shark drawn plainly. On the other hand, the dominant feature in
respondent's mark is a depiction of shark shaded darkly, with its body designed in a way to contain
the letters "A" and "R" with the tail suggestive of the letter "K." Admittedly, there are some
differences between the competing marks. Respondent's mark contains additional features which
are absent in opposer's mark. Their dominant features, i.e., that of an illustration of a shark,
however, are of such degree that the overall impression it create [sic] is that the two competing
marks are at least strikingly similar to each another [sic], hence, the likelihood of confusion of goods
is likely to occur. x x x x

Moreover, the goods of the competing marks falls [sic] under the same Class 25. Opposer's mark
GREG NORMAN LOGO, which was applied for registration on February 19, 2002, pertains to
clothing apparel particularly hats, shirts and pants. Respondent, on the other hand, later applied for
the registration of the mark SHARK & LOGO on July 3, 2002 (should be July 31, 2002) for footwear
products particularly slippers, shoes, sandals. Clearly, the goods to which the parties use their marks
belong to the same class and are related to each other."8 (Italics ours)

The BLA Director, however, found no merit in Great White Shark's claim that its mark was famous
and well-known for insufficiency of evidence.
The Ruling of the IPO Director General

On appeal, the IPO Director General affirmed9 the final rejection of Caralde's application, ruling that
the competing marks are indeed confusingly similar. Great White Shark's mark is used in clothing
and footwear, among others, while Caralde's mark is used on similar goods like shoes and slippers.
Moreover, Great White Shark was first in applying for registration of the mark on February 19, 2002,
followed by Caralde on July 31, 2002. Furthermore, Great White Shark’s mark consisted of an
illustration of a shark while Caralde's mark had a composite figure forming a silhouette of a shark.
Thus, as to content, word, sound and meaning, both marks are similar, barring the registration of
Caralde's mark under Section 123.1(d) of Republic Act No. 8293, otherwise known as the Intellectual
Property Code (IP Code). Nonetheless, while Great White Shark submitted evidence of the
registration of its mark in several other countries, the IPO Director General considered its mark as
not well-known for failing to meet the other criteria laid down under Rule 10210 of the Rules and
Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers.

The Ruling of the Court of Appeals

However, on petition for review, the CA reversed and set aside the foregoing Decision and directed
the IPO to grant Caralde's application for registration of the mark "SHARK & LOGO." The CA found
no confusing similarity between the subject marks notwithstanding that both contained the shape of
a shark as their dominant feature. It observed that Caralde's mark is more fanciful and colorful, and
contains several elements which are easily distinguishable from that of the Great White Shark. It
further opined that considering their price disparity, there is no likelihood of confusion as they travel
in different channels of trade.11

Issues Before The Court

THE COURT OF APPEALS ERRED IN RULING THAT THE RESPONDENT'S MARK SUBJECT OF
THE APPLICATION BEING OPPOSED BY THE PETITIONER IS NOT CONFUSINGLY SIMILAR
TO PETITIONER'S REGISTERED MARK THE COURT OF APPEALS ERRED IN RULING THAT
THE COST OF GOODS COULD NEGATE LIKELIHOOD OF CONFUSION THE COURT OF
APPEALS ERRED IN REVERSING THE PREVIOUS RESOLUTIONS OF THE DIRECTOR
GENERAL AND THE BLA12

The Court's Ruling

In the instant petition for review on certiorari, Great White Shark maintains that the two (2)
competing marks are confusingly similar in appearance, shape and color scheme because of the
dominant feature of a shark which is likely to deceive or cause confusion to the purchasing public,
suggesting an intention on Caralde's part to pass-off his goods as that of Great White Shark and to
ride on its goodwill. This, notwithstanding the price difference, targets market and channels of trade
between the competing products. Hence, the CA erred in reversing the rulings of the IPO Director
General and the BLA Director who are the experts in the implementation of the IP Code.

The petition lacks merit.

A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable

of identifying and distinguishing the goods of one manufacturer or seller from those of another. Apart
from its commercial utility, the benchmark of trademark registrability is distinctiveness.13 Thus, a
generic figure, as that of a shark in this case, if employed and designed in a distinctive manner, can
be a registrable trademark device, subject to the provisions of the IP Code.
Corollarily, Section 123.1(d) of the IP Code provides that a mark cannot be registered if it is identical
with a registered mark belonging to a different proprietor with an earlier filing or priority date, with
respect to the same or closely related goods or services, or has a near resemblance to such mark as
to likely deceive or cause confusion.

In determining similarity and likelihood of confusion, case law has developed the Dominancy Test
and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the dominant
features of the competing trademarks that might cause confusion, mistake, and deception in the
mind of the ordinary purchaser, and gives more consideration to the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales
outlets, and market segments. In contrast, the Holistic or Totality Test considers the entirety of the
marks as applied to the products, including the labels and packaging, and focuses not only on the
predominant words but also on the other features appearing on both labels to determine whether
one is confusingly similar to the other14 as to mislead the ordinary purchaser. The "ordinary
purchaser" refers to one "accustomed to buy, and therefore to some extent familiar with, the goods
in question."15

Irrespective of both tests, the Court finds no confusing similarity between the subject marks. While
both marks use the shape of a shark, the Court noted distinct visual and aural differences between
them. In Great White Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with
the use of green, yellow, blue and red16lines/strokes, to wit:

In contrast, the shark in Caralde's "SHARK & LOGO" mark17 is illustrated in l et t er s outlined in the
form of a shark with the letter "S" forming the head, the letter "H" forming the fins, the letters "A" and
"R" forming the body, and the letter "K" forming the tail. In addition, the latter mark includes several
more elements such as the word "SHARK" in a different font underneath the shark outline, layers of
waves, and a tree on the right side, and liberally used the color blue with some parts in red, yellow,
green and white.18 The whole design is enclosed in an elliptical shape with two linings, thus:
As may be gleaned from the foregoing, the visual dissimilarities between the two (2) marks are
evident and significant, negating the possibility of confusion in the minds of the ordinary purchaser,
especially considering the distinct aural difference between the marks.

Finally, there being no confusing similarity between the subject marks, the matter of whether Great
White Shark’s mark has gained recognition and acquired becomes unnecessary.19 Besides, both the
BLA Director and the IPO Director General have ruled that Great White Shark failed to meet the
criteria under Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names
and Marked or Stamped Containers to establish that its mark is well-known, and the latter failed to
show otherwise.

WHEREFORE, the Court resolves to DENY the instant petition and AFFIRM the assailed December
14, 2009 Decision of the Court of Appeals (CA) for failure to show that the CA committed reversible
error in setting aside the Decision of the IPO Director General and allowing the registration of the
mark "SHARK & LOGO" by respondent Danilo M. Caralde, Jr.

SO ORDERED.

ESTELA M. PERLAS-BERNABE
Associate Justice

WE CONCUR:

ANTONIO T. CARPIO
Associate Justice
Chairperson

ARTURO D. BRION MARIANO C. DEL CASTILLO

Associate Justice Associate Justice

JOSE PORTUGAL PEREZ

Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

ANTONIO T. CARPIO
Associate Justice
Chairperson, Second Division

CERTIFICATION

Pursuant to Section 13, Article V Ill of the Constitution, and the Division Chairperson's Attestation, I
certify that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court's Division.

MARIA LOURDES P. A. SERENO

Chief Justice
Footnotes

1
Penned by Associate Justice Vicente S.E. Veloso, with Associate Justices Andres B.
Reyes, Jr. and Marlene Gonzales-Sison, concurring. Rollo, pp. 35-52.

2
Penned by Director General Adrian S. Cristobal, Jr. Id. at 406-413.

3
Notice of Opposition. Id. at 57-62.

4
Id. at 58.

5
Id. at 64-68.

6
Id. at 406.

7
Penned by Director Estrellita Beltran-Abelardo. Id. at 295-305.

8
Id. at 302-303.

9
Id. at 406-413.

RULE 102. Criteria in determining whether a mark is well-known. – In determining whether

10

a mark is well-known, the following criteria or any combination thereof, may be taken into
account:

(a) the duration, extent and geographical area of any use of the mark, in particular,
the duration, extent and geographical area of any promotion of the mark, including
advertising or publicity and the presentation, at fairs or exhibitions, of the goods
and/or services to which the mark applies;

(b) the market share, in the Philippines and in other countries, of the goods and/or
services to which the mark applies;

(c) the degree of the inherent or acquired distinction of the mark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent by which the mark has been registered in the world;

(f) the exclusivity of registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

 (j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether the mark is a well-
known mark; and

(l) the presence or absence of identical or similar marks validly registered for or used
on identical or similar goods or services owned by persons other than the person
claiming that his mark is a well-known mark.

11
Rollo, pp. 35-52.

12
Id. at 19.

See McDonald’s Corporation v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18,
13

2004, 437 SCRA 10, 26.

Berris Agricultural Co., Inc. v. Abyadang, G.R. No. 183404, October 13, 2010, 633 SCRA
14

196, 209-210.

Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010, 628
15

SCRA 356, 365, citing Philip Morris, Inc. v. Fortune Tobacco Corporation, 493 SCRA 333,
359 (2006).

16
Rollo, p. 49.

17
Id. at 187.

18
Id. at 49.

19
Under Section 13 L3 of the IP Code, the owner of a well-known mark may oppose the
registration, petition the cancellation of registration of sue for unfair competition against an
identical or confusingly similar mark, without prejudice to availing himself of other remedies
provided for under the law. (Italics supplied)

G.R. No. 164605 October 27, 2006

CATERPILLAR, INC., petitioner,

vs.
MANOLO P. SAMSON, respondent.

DECISION

CHICO-NAZARIO, J.:
This is a Petition For Review on Certiorari under Rule 45 of the 1997 Rules of Court, as amended,
seeking to set aside the Decision1 of the Court of Appeals dated 25 May 2004. The Court of Appeals
in its assailed Decision upheld the Order2 of the Regional Trial Court (RTC) of Mandaluyong City,
Branch 214, dated 16 May 2003, in Search Warrant Cases Nos. 02-044 to 02-048 directing the
immediate release of the articles seized pursuant to the search warrants issued therein; and the
Order3 dated 10 November 2003 denying the motion for reconsideration thereof.

Petitioner Caterpillar, Inc. is a foreign corporation engaged in the business of manufacturing shoes,
clothing items, among others. Upon the request of petitioner, the Regional Intelligence Investigation
Division-National Capital Region Police Office (RIID- NCRPO) filed on 22 August 2002 search
warrant applications against respondent Manolo P. Samson for violations of unfair competition,
provided under Section 168.3(a) in relation to Sections 131.3, 123(e) and 170 of Republic Act No.
8293, otherwise known as the Intellectual Property Code.4 On the same day, the trial court issued
five search warrants (Search Warrants Nos. 02-044 to 02-048) against respondent and his business
establishments, namely: Itti Shoes Corporation, Kolm’s Manufacturing, and Caterpillar Boutique and
General Merchandise. Pursuant to the aforementioned search warrants, various merchandise--
garments, footwear, bags, wallets, deodorant sprays, shoe cleaners and accessories-- all bearing
the trademarks "CAT," "CAT AND DESIGN," "CATERPILLAR," "CATERPILLAR AND DESIGN,"
"WALKING MACHINES" and/or "Track-type Tractor and Design" were seized on 27 August 2002.5

On 21 October 2002, respondent filed a Consolidated Motion to Quash Search Warrants Nos. 02-
044 to 02-048. Pending the resolution thereof, RIID-NCRPO filed five complaints against the
respondent and his affiliate entities before the Department of Justice (DOJ). On 16 May 2003, the
trial court issued an order denying the respondent’s motion to quash, but nevertheless directed the
release of the articles seized on the ground that no criminal action had been commenced against
respondent.6 The dispositive portion of the said Order7 is quoted hereunder:

WHEREFORE, all the foregoing considered, the consolidated motions (sic) to quash Search
Warrants (SW-02-044 to SW-02-048) is DENIED. However, since no criminal action has
been commenced yet, private complainant is directed to immediately return to respondent
the seized items, as (sic) per inventory submitted to this court, and now kept at the Nissan
Gallery, 138 Quezon Avenue, Quezon City with the undertaking from the latter that said
seized items be produced when required by the court.

The Motion for Partial Reconsideration filed by the petitioner on 30 May 2003 was denied by the trial
court in an Order dated 10 November 2003.8

The petitioner filed an appeal via certiorari under Rule 65 of the 1997 Rules of Court. In a Decision
dated 25 May 2004, the Court of Appeals denied the Petition for lack of merit ruling that there was
no arbitrariness in the way the trial court exercised its discretionary power to release the items
seized in the absence of a criminal action filed in court. The Court of Appeals also noted that the
criminal complaints filed before the DOJ that underwent preliminary investigation were all dismissed
by the investigating prosecutor. It further reasoned that even if the DOJ’s order of dismissal is
overturned, the respondent executed an undertaking to produce the said items in court, if so
ordered. Moreover, the respondent never denied the existence of the items and raised as his
defense his right as a prior registrant.9

Hence, this petition, where petitioner raised the following issues:

I.
 THE COURT OF APPEALS COMMITTED SERIOUS REVERSIBLE ERROR IN
UPHOLDING THE IMMEDIATE RETURN OF THE SEIZED ITEMS ON THE GROUND
THAT NO CRIMINAL ACTION HAD BEEN FILED IN COURT AGAINST THE PRIVATE
RESPONDENT.

II.

THE COURT OF APPEALS SERIOUSLY ERRED IN RULING THAT THE SUBSEQUENT

DISMISSAL BY THE INVESTIGATING STATE PROSECUTOR OF THE CRIMINAL
COMPLAINTS AGAINST RESPONDENT JUSTIFIES THE RETURN OF THE SEIZED
ITEMS.10

This petition must be denied.

Pending the disposition of this case, the Chief State Prosecutor, in a Joint Resolution11 dated 18
June 2004, denied the motion for reconsideration filed by the petitioner seeking to set aside the Joint
Resolution issued by the State Prosecutor12 dated 21 August 2003, dismissing the complaints filed
against the respondent. The respondent alleged this in his Comment dated 30 September
200413 and again in his Memorandum, filed on 4 May 2005.14 The records, however, show that the
petitioner failed to allege that it filed a petition for review before the Secretary of Justice to appeal the
aforementioned Joint Resolution, in accordance with the 2000 National Prosecution Service Rules
on Appeal. Thus, it may be reasonably concluded that the Joint Resolution of the DOJ has become
final, and no criminal case will be filed in connection with the five search warrants that were issued
by the trial court. Furthermore, no civil case was filed in connection with the articles seized. Since
there is no pending criminal and civil case in connection with the articles seized, the return of the
said articles to the respondent are, but, a matter of course.

Notwithstanding that the Joint Resolution, dated 18 June 2004, had rendered moot the issues raised
by the petitioner before this Court, the issue of whether the trial court acted arbitrarily when it denied
the motion to quash the Warrants of Search and Seizure and yet released the articles seized, would
still need to be resolved. The petitioner asserts that the seized articles can only be returned when a
criminal case can no longer possibly materialize since the seized articles are crucial to the eventual
prosecution of the respondent.15

The petitioner’s assertion is incongruent with the peculiar circumstances of this case. The articles
seized – the thousands of articles of clothing, footwear, and accessories, among others - had little, if
any, evidentiary value for the criminal action for unfair competition, which the petitioner expected to
file.

An action for unfair competition is based on the proposition that no dealer in merchandise should be
allowed to dress his goods in simulation of the goods of another dealer, so that purchasers desiring
to buy the goods of the latter would be induced to buy the goods of the former.16 The most usual
devices employed in committing this crime are the simulation of labels and the reproduction of form,
color and general appearance of the package used by the pioneer manufacturer or dealer.17

In this case, the petitioner specifically identified the device employed by the respondent in deceiving
the public into believing the goods that the latter sells are those manufactured by the former – the
imitation of the trademarks allegedly owned by the petitioner, namely, "CAT," "CATERPILLAR,"
"CATERPILLAR AND DESIGN," "WALKING MACHINES" and/or "Track-type Tractor and Design"
and the depictions of heavy machinery and equipment, which the petitioner uses to market its
products, as well as the statements "LICENSED MERCHANDISE CATERPILLAR, INC." and "WE
SHAPE THE THINGS WE BUILD, THEREAFTER THEY SHAPE US" found on the articles
themselves or on their packaging.

The respondent does not dispute the use of such trademarks and admitted that he owned the
articles seized. He even raises the defense that he is the registered owner of the aforementioned
trademarks, and that he had prior use of such trademarks for his line of products in the Philippines,
which he extensively marketed. He also claims that, even at present, petitioner markets its products
only in some Duty Free shops, therefore has not established any goodwill in the Philippines that will
enable the consumers to confuse the respondent’s products with those of the petitioner’s.18

The admissions of the respondent are sufficient to establish that he used such trademarks in order
to sell merchandise at a commercial scale, and that the actual products manufactured by the
respondent need not be presented to prove such fact. In addition, the Court of Appeals correctly
notes in its assailed Decision19 that:

Moreover, granting arguendo that the DOJ order of dismissal would be overturned, to
guarantee the return of the seized items, the public respondent required the execution of an
undertaking that the private respondent would produce the said items in court if so ordered. If
the private respondent would not comply with the court order, the petitioner could avail of
legal safeguards and remedies like having the private respondent be cited in contempt of
court. He could also move that the criminal court take judicial notice of the legal seizure or
consider the list of the seized items as secondary evidence thereof. Also in his favor is the
presumption that the seized items if (not) produced, would be adverse to the party
withholding them.

Should there have been a need to examine the actual merchandise sold by the respondent,
sufficient sample has already been obtained by the prosecution. It is alleged in the Affidavits that
were executed pursuant to the Application for the Search Warrants Nos. MC-02-044 to MC-02-
048,20 and in the Motion for Reconsideration (of the 21 August 2003 Joint Resolution),21 filed on 19
September 2003 before the DOJ, attached as Annex "J" of the petitioner’s Petitioner for Certiorari
before the Court of Appeals, that as part of the investigation was conducted by the RIID-NCRPO,
sample purchases were made of leather shoes, shoe conditioner, jeans, shirts, socks, belt, and a
wallet from various branches of stores owned by the respondent. The samples obtained from the
sample purchases are sufficient to represent the thousands of articles that were seized, making it
doubtful that the prosecution would have presented each and every article seized from the
respondent’s stores. More likely, the court would not have allowed the presentation of superfluous
evidence. The merchandise was also photographed, and more detailed photographs were taken of
the particular parts of the merchandise where the trademarks in dispute were attached or used.
These photographs were in fact attached to the aforementioned affidavits and Motion for
Reconsideration, and respondent had not denied that these were items bought from his store. Given
the availability of actual samples, as well as their photographs, there is no need for the court to take
custody of the countless articles seized.

Lastly, it should be noted that there is no law prohibiting the trial court from returning the articles
seized before a case is actually filed in court and even before the final determination of the
prosecutor or the DOJ on whether a case should be filed in court. In most cases, the release of the
articles seized would be unjustified. However, in the particular circumstances of this case, the return
of the items would better serve the purposes of justice and expediency.

There exists a constitutional safeguard against unreasonable searches and seizures,22 which refers
to the immunity of one’s person from interference by the government, included in which is his
residence, his papers and other possessions.23 The Constitution, however, does not provide a
blanket prohibition against all searches and seizures, rather the fundamental protection accorded by
the search and seizure clause is that between persons and the police, there must stand the
protective authority of a magistrate clothed with the power to issue or refuse such search
warrant.24 Yet, the responsibilities of the magistrate do not end with the granting of the warrant, but
extends to the custody of the articles seized. In exercising custody over these articles, the property
rights of the owner should be balanced with the social need to preserve evidence, which will be used
in the prosecution of a case.

In the instant case, no criminal action had been prosecuted for almost a year. Thus, the court had
been left with the custody of highly depreciable merchandise. More importantly, these highly
depreciable articles would have been superfluous if presented as evidence for the following reasons:
(1) the respondent had already admitted that he is the owner of the merchandise seized, which
made use of the trademarks in dispute; (2) the court required the respondent to execute an
undertaking to produce the articles seized when the court requires and had already in its possession
a complete inventory of the items seized as secondary evidence; (3) actual samples of the
respondent’s merchandise are in the possession of the police officers who had applied for the
search warrant, and photographs thereof had been made part of the records, and respondent did not
dispute that these were obtained from his stores. Where the purpose of presenting as evidence the
articles seized is no longer served, there is no justification for severely curtailing the rights of a
person to his property.

In ordering the return of the articles seized, the trial court had reasonably exercised its discretion in
determining from the circumstances of the case what constitutes a reasonable and unreasonable
search and seizure. The belief that to value the privacy of home and person and to afford its
constitutional protection against the long reach of the government is no less than to value human
dignity, and that this privacy must not be disturbed except in the overriding social need, and then
only under the stringent procedural rules.25

WHEREFORE, premises considered, this Court DENIES this petition, and AFFIRMS the Decision of
the Court of Appeals in CA-G.R. SP No. 80899, dated 25 May 2004. Costs against petitioner.

SO ORDERED.

Panganiban, C.J. (Chairperson), Ynares-Santiago, Austria-Martinez, and Callejo, Sr., JJ., concur.

Footnotes

1
Penned by Associate Justice Jose Catral Mendoza with Associate Justices Ruben T.
Reyes and Bienvenido L. Reyes, concurring; rollo, pp. 30-35.

2 CA rollo, pp. 26-29.

3 Id. at 30.

4168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
 a) Any person, who is selling his goods and gives them the general appearance of
goods of another manufacturer or dealer, either as to the goods themselves or in the
wrapping of the packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would be likely to
influence purchasers to believe that the goods offered are those of a manufacturer or
dealer, other than the actual manufacturer or dealer, or who otherwise clothes the
goods with such appearance as shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose.

131.3 Nothing in this section shall entitle the owner of a registration granted under
this section to sue for acts committed prior to the date on which his mark was
registered in this country: Provided, That, notwithstanding the foregoing, the owner of
a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in
the Philippines, may, against an identical or confusingly similar mark, oppose its
registration, or petition the cancellation of its registration or sue for unfair competition,
without prejudice to availing himself of other remedies provided for under the law.

123.1 A mark cannot be registered if it:

xxxx

e) Is identical with, or confusingly similar to, or constitutes a translation of a mark

which is considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for
identical or similar goods or services: Provided, That in determining whether a mark
is well-known, account shall be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including knowledge in the Philippines which
has been obtained as a result of the promotion of the mark;

5 Rollo, 5-6.

6 Id. at 31.

7 CA rollo, p. 29.

8 Id. at 30.

9 Rollo, p. 34-35.

10 Id. at 12-13.

11 Id. at 203-209.

12 Id. at 182-202.

13 Id. at 173.

14 Id. at 272-273.
 15 Rollo, p. 17.

16 Alhambra Cigar etc. Co. v. Compañia Gral. De Tobacos, 35 Phil 62, 72 (1916).

17 E. Spinner & Co. v. Neuss Hesslein Corporation, 54 Phil 224, 232 (1930).

18 Rollo, pp. 49-56.

19 Id. at 35

20 Records, Folders 1-5.

21 CA rollo, pp. 120-123.

22 Article III, Section 2, of the 1987 Constitution provides that:

The right of the people to be secure in their persons, houses, papers and effects against
unreasonable searches and seizures of whatever nature and for any purpose shall be
inviolable, and no search warrant or warrant of arrest shall issue except upon probable
cause to be determined personally by the judge after examination under oath or affirmation
of the complainant and the witnesses he may produce, and particularly describing the place
to be searched and the persons or things to be seized.

23 Villanueva v. Querubin , 150-C Phil 519, 524 (1972).

24 People v. Libnao, G.R. No. 136860, 20 January 2003, 395 SCRA 407, 413.

25 Villanueva v. Querubin, supra note 23 at 52

G.R. No. 138900 September 20, 2005

LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., Petitioners,
vs.
CLINTON APPARELLE, INC., Respondent.

DECISION

Tinga, J.:

Before us is a petition for review on certiorari1 under Rule 45 of the 1997 Rules of Civil Procedure
filed by Levi Strauss & Co. (LS & Co.) and Levi Strauss (Philippines), Inc. (LSPI) assailing the Court
of Appeals’ Decision2 and Resolution3 respectively dated 21 December 1998 and 10 May 1999. The
questioned Decision granted respondent’s prayer for a writ of preliminary injunction in
its Petition4 and set aside the trial court’s orders dated 15 May 19985 and 4 June 19986 which
respectively granted petitioners’ prayer for the issuance of a temporary restraining order (TRO) and
application for the issuance of a writ of preliminary injunction.

This case stemmed from the Complaint7 for Trademark Infringement, Injunction and Damages filed
by petitioners LS & Co. and LSPI against respondent Clinton Apparelle, Inc.* (Clinton Aparelle)
together with an alternative defendant, Olympian Garments, Inc. (Olympian Garments), before the
Regional Trial Court of Quezon City, Branch 90.8 The Complaint was docketed as Civil Case No. Q-
98-34252, entitled "Levi Strauss & Co. and Levi Strauss (Phils.), Inc. v. Clinton Aparelle, Inc. and/or
Olympian Garments, Inc."

The Complaint alleged that LS & Co., a foreign corporation duly organized and existing under the
laws of the State of Delaware, U.S.A., and engaged in the apparel business, is the owner by prior
adoption and use since 1986 of the internationally famous "Dockers and Design" trademark. This
ownership is evidenced by its valid and existing registrations in various member countries of the
Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in the Principal
Register for use of said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets
under Class 25.9

The "Dockers and Design" trademark was first used in the Philippines in or about May 1988, by
LSPI, a domestic corporation engaged in the manufacture, sale and distribution of various products
bearing trademarks owned by LS & Co. To date, LSPI continues to manufacture and sell Dockers
Pants with the "Dockers and Design" trademark.10

LS & Co. and LSPI further alleged that they discovered the presence in the local market of jeans
under the brand name "Paddocks" using a device which is substantially, if not exactly, similar to the
"Dockers and Design" trademark owned by and registered in the name of LS & Co., without its
consent. Based on their information and belief, they added, Clinton Apparelle manufactured and
continues to manufacture such "Paddocks" jeans and other apparel.

However, since LS & Co. and LSPI are unsure if both, or just one of impleaded defendants are
behind the manufacture and sale of the "Paddocks" jeans complained of, they brought this suit under
Section 13, Rule 311 of the 1997 Rules of Civil Procedure.12

The Complaint contained a prayer that reads as follows:

1. That upon the filing of this complaint, a temporary restraining order be immediately issued
restraining defendants, their officers, employees, agents, representatives, dealers, retailers or
assigns from committing the acts herein complained of, and, specifically, for the defendants, their
officers, employees, agents, representatives, dealers and retailers or assigns, to cease and desist
from manufacturing, distributing, selling, offering for sale, advertising, or otherwise using denims,
jeans or pants with the design herein complained of as substantially, if not exactly similar, to
plaintiffs’ "Dockers and Design" trademark.

2. That after notice and hearing, and pending trial on the merits, a writ of preliminary injunction be
issued enjoining defendants, their officers, employees, agents, dealers, retailers, or assigns from
manufacturing, distributing, selling, offering for sale, advertising, jeans the design herein complained
of as substantially, if not exactly similar, to plaintiffs’ "Dockers and Design" trademark.

3. That after trial on the merits, judgment be rendered as follows:

a. Affirming and making permanent the writ of preliminary injunction;

b. Ordering that all infringing jeans in the possession of either or both defendants as the evidence
may warrant, their officers, employees, agents, retailers, dealers or assigns, be delivered to the
Honorable Court of plaintiffs, and be accordingly destroyed;13
Acting on the prayer for the issuance of a TRO, the trial court issued an Order14 setting it for hearing
on 5 May 1998. On said date, as respondent failed to appear despite notice and the other defendant,
Olympian Garments, had yet to be notified, the hearing was re-scheduled on 14 May 1998.15

On 14 May 1998, neither Clinton Apparelle nor Olympian Garments appeared. Clinton Apparelle
claimed that it was not notified of such hearing. Only Olympian Garments allegedly had been issued
with summons. Despite the absence of the defendants, the hearing on the application for the
issuance of a TRO continued.16

The following day, the trial court issued an Order17 granting the TRO applied for, the pertinent
portions of which state:

…Considering the absence of counsel/s for the defendant/s during the summary hearing scheduled
on May 5, 1998 and also during the re-scheduled summary hearing held on May 14, 1998 set for the
purpose of determining whether or not a Temporary Restraining Order shall be issued, this Court
allowed the counsel for the plaintiffs to present on May 14, 1998 their arguments/evidences in
support of their application. After hearing the arguments presented by the counsel for the plaintiffs
during the summary hearing, this Court is of the considered and humble view that grave injustice
and irreparable injury to the plaintiffs would arise before the matter of whether or not the application
for the issuance of a Writ of Preliminary Injunction can be heard, and that, in the interest of justice,
and in the meantime, a Temporary Restraining Order be issued.

WHEREFORE, let this Temporary Restraining Order be issued restraining the defendants, their
officers, employees, agents, representatives, dealers, retailers or assigns from committing the acts
complained of in the verified Complaint, and specifically, for the defendants, their officers,
employees, agents, representatives, dealers and retailers or assigns, to cease and desist from
manufacturing, distributing, selling, offering for sale, advertising or otherwise using denims, jeans or
pants with the design complained of in the verified Complaint as substantially, if not exactly similar,
to plaintiffs’ "Dockers and Design" trademark; until after the application/prayer for the issuance of a
Writ of Preliminary Injunction is heard/resolved, or until further orders from this Court.

The hearing on the application for the issuance of a Writ of Preliminary Injunction as embodied in the
verified Complaint is set on May 26, 1998 (Tuesday) at 2:00 P.M. which setting is intransferable in
character considering that the lifetime of this Temporary Restraining Order is twenty (20) days from
date hereof.18

On 4 June 1998, the trial court issued another Order19 granting the writ of preliminary injunction, to
wit:

ORDER

This resolves the plaintiffs’ application or prayer for the issuance of a writ of preliminary injunction as
embodied in the verified complaint in this case. Parenthetically, this Court earlier issued a temporary
restraining order. (see Order dated May 15, 1998; see also Order dated May 26, 1998)

After a careful perusal of the contents of the pleadings and documents on record insofar as they are
pertinent to the issue under consideration, this Court finds that at this point in time, the plaintiffs
appear to be entitled to the relief prayed for and this Court is of the considered belief and humble
view that, without necessarily delving on the merits, the paramount interest of justice will be better
served if the status quo shall be maintained and that an injunction bond of ₱2,500,000.00 appears to
be in order. (see Sections 3 and 4, Rule 58, 1997 Rules of Civil Procedure)
IN VIEW OF THE FOREGOING, the plaintiffs’ prayer for the issuance of a writ of preliminary
injunction is GRANTED. Accordingly, upon the plaintiffs’ filing, within ten (10) days from their receipt
hereof, an injunction bond of ₱2,500,000.00 executed to the defendants to the effect that the
plaintiffs will pay all damages the defendants may sustain by reason of this injunction in case the
Court should finally decide that the plaintiffs are not entitled thereto, let a writ of preliminary
injunction issue enjoining or restraining the commission of the acts complained of in the verified
Complaint in this case, and specifically, for the defendants, their officers, employees, agents,
representatives, dealers and retailers or assigns or persons acting in their behalf to cease and desist
from manufacturing, distributing, selling, offering for sale, advertising, or otherwise using, denims,
jeans or pants with the design complained of in the verified Complaint in this case, which is
substantially, if not exactly, similar to plaintiffs’ "DOCKERS and DESIGN" trademark or logo as
covered by the Bureau of Patents, Trademarks and Technology Transfer Certificate of Registration
No. 46619, until after this case shall have been decided on the merits and/or until further orders from
this Court.20

The evidence considered by the trial court in granting injunctive relief were as follows: (1) a certified
true copy of the certificate of trademark registration for "Dockers and Design"; (2) a pair of
DOCKERS pants bearing the "Dockers and Design" trademark; (3) a pair of "Paddocks" pants
bearing respondent’s assailed logo; (4) the Trends MBL Survey Report purportedly proving that
there was confusing similarity between two marks; (5) the affidavit of one Bernabe Alajar which
recounted petitioners’ prior adoption, use and registration of the "Dockers and Design" trademark;
and (6) the affidavit of one Mercedes Abad of Trends MBL, Inc. which detailed the methodology and
procedure used in their survey and the results thereof.21

Clinton Apparelle thereafter filed a Motion to Dismiss22 and a Motion for Reconsideration23 of
the Order granting the writ of preliminary injunction. Meantime, the trial court issued
an Order24 approving the bond filed by petitioners.

On 22 June 1998, the trial court required25 the parties to file their "respective citation of authorities/
jurisprudence/Supreme Court decisions" on whether or not the trial court may issue the writ of
preliminary injunction pending the resolution of the Motion for Reconsideration and the Motion to
Dismiss filed by respondent.

On 2 October 1998, the trial court denied Clinton Apparelle’s Motion to Dismiss and Motion for
Reconsideration in an Omnibus Order,26 the pertinent portions of which provide:

After carefully going over the contents of the pleadings in relation to pertinent portions of the records,
this Court is of the considered and humble view that:

On the first motion, the arguments raised in the plaintiffs’ aforecited Consolidated Opposition
appears to be meritorious. Be that as it may, this Court would like to emphasize, among other things,
that the complaint states a cause of action as provided under paragraphs 1 to 18 thereof.

On the second motion, the arguments raised in the plaintiffs’ aforecited Consolidated Opposition
likewise appear to be impressed with merit. Besides, there appears to be no strong and cogent
reason to reconsider and set aside this Court’s Order dated June 4, 1998 as it has been shown so
far that the trademark or logo of defendants is substantially, if not exactly, similar to plaintiffs’
"DOCKERS and DESIGN" trademark or logo as covered by BPTTT Certificate of Registration No.
46619 even as the BPTTT Certificate of Registration No. 49579 of Clinton Apparelle, Inc. is only for
the mark or word "PADDOCKS" (see Records, p. 377) In any event, this Court had issued an Order
dated June 18, 1998 for the issuance of the writ of preliminary injunction after the plaintiffs filed the
required bond of ₱2,500,000.00.
IN VIEW OF THE FOREGOING, the aforecited Motion To Dismiss and Motion For Reconsideration
are both DENIED for lack of merit, and accordingly, this Court’s Order dated June 18, 1998 for the
issuance of the writ of preliminary injunction is REITERATED so the writ of preliminary injunction
could be implemented unless the implementation thereof is restrained by the Honorable Court of
Appeals or Supreme Court.

The writ of preliminary injunction was thereafter issued on 8 October 1998.27

Thus, Clinton Apparelle filed with the Court of Appeals a Petition28 for certiorari, prohibition and
mandamus with prayer for the issuance of a temporary restraining order and/or writ of preliminary
injunction, assailing the orders of the trial court dated 15 May 1998, 4 June 1998 and 2 October
1998.

On 20 October 1998, the Court of Appeals issued a Resolution29 requiring herein petitioners to file
their comment on the Petition and at the same time issued the prayed-for temporary restraining
order.

The appellate court rendered on 21 December 1998 its now assailed Decision granting Clinton
Apparelle’s petition. The Court of Appeals held that the trial court did not follow the procedure
required by law for the issuance of a temporary restraining order as Clinton Apparelle was not duly
notified of the date of the summary hearing for its issuance. Thus, the Court of Appeals ruled that the
TRO had been improperly issued.30

The Court of Appeals also held that the issuance of the writ of preliminary injunction is questionable.
In its opinion, herein petitioners failed to sufficiently establish its material and substantial right to
have the writ issued. Secondly, the Court of Appeals observed that the survey presented by
petitioners to support their contentions was commissioned by petitioners. The Court of Appeals
remarked that affidavits taken ex-parte are generally considered to be inferior to testimony given in
open court. The appellate court also considered that the injury petitioners have suffered or are
currently suffering may be compensated in terms of monetary consideration, if after trial, a final
judgment shall be rendered in their favor.31

In addition, the Court of Appeals strongly believed that the implementation of the questioned writ
would effectively shut down respondent’s business, which in its opinion should not be sanctioned.
The Court of Appeals thus set aside the orders of the trial court dated 15 May 1998 and 4 June
1998, respectively issuing a temporary restraining order and granting the issuance of a writ of
preliminary injunction.

With the denial of their Motion for Reconsideration,32 petitioners are now before this Court seeking a
review of the appellate court’s Decision and Resolution. LS & Co. and LSPI claim that the Court of
Appeals committed serious error in: (1) disregarding the well-defined limits of the writ of certiorari
that questions on the sufficiency of evidence are not to be resolved in such a petition; (2) in holding
that there was no confusion between the two marks; (3) in ruling that the erosion of petitioners’
trademark is not protectable by injunction; (4) in ignoring the procedure previously agreed on by the
parties and which was adopted by the trial court; and (5) in declaring that the preliminary injunction
issued by the trial court will lead to the closure of respondent’s business.

In its Comment,33 Clinton Apparelle maintains that only questions of law may be raised in an appeal
by certiorari under Rule 45 of the Rules of Court. It asserts that the question of whether the Court of
Appeals erred in: (1) disregarding the survey evidence; (2) ruling that there was no confusion
between the two marks; and (c) finding that the erosion of petitioners’ trademark may not be
protected by injunction, are issues not within the ambit of a petition for review on certiorari under
Rule 45. Clinton Apparelle also contends that the Court of Appeals acted correctly when it
overturned the writ of preliminary injunction issued by the trial court. It believes that the issued writ in
effect disturbed the status quo and disposed of the main case without trial.

There is no merit in the petition.

At issue is whether the issuance of the writ of preliminary injunction by the trial court was proper and
whether the Court of Appeals erred in setting aside the orders of the trial court.

Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an order granted at any
stage of an action prior to the judgment or final order requiring a party or a court, agency or a person
to refrain from a particular act or acts. Injunction is accepted as the strong arm of equity or a
transcendent remedy to be used cautiously as it affects the respective rights of the parties, and only
upon full conviction on the part of the court of its extreme necessity. An extraordinary remedy,
injunction is designed to preserve or maintain the status quo of things and is generally availed of to
prevent actual or threatened acts until the merits of the case can be heard.34 It may be resorted to
only by a litigant for the preservation or protection of his rights or interests and for no other purpose
during the pendency of the principal action.35 It is resorted to only when there is a pressing necessity
to avoid injurious consequences, which cannot be remedied under any standard compensation. The
resolution of an application for a writ of preliminary injunction rests upon the existence of an
emergency or of a special recourse before the main case can be heard in due course of
proceedings.36

Section 3, Rule 58, of the Rules of Court enumerates the grounds for the issuance of a preliminary
injunction:

SEC. 3. Grounds for issuance of preliminary injunction. – A preliminary injunction may be granted
when it is established:

(a) That the applicant is entitled to the relief demanded, and the whole or part of such relief consists
in restraining the commission or continuance of the act or acts complained of, or in requiring the
performance of an act or acts, either for a limited period or perpetually;

(b) That the commission, continuance, or non-performance of the act or acts complained of during
the litigation would probably work injustice to the applicant; or

(c) That a party, court, agency or a person is doing, threatening, or is attempting to do, or is
procuring or suffering to be done, some act or acts probably in violation of the rights of the applicant
respecting the subject of the action or proceeding, and tending to render the judgment ineffectual.

Under the cited provision, a clear and positive right especially calling for judicial protection must be
shown. Injunction is not a remedy to protect or enforce contingent, abstract, or future rights; it will not
issue to protect a right not in esse and which may never arise, or to restrain an act which does not
give rise to a cause of action. There must exist an actual right.37 There must be a patent showing by
the complaint that there exists a right to be protected and that the acts against which the writ is to be
directed are violative of said right.38

There are generally two kinds of preliminary injunction: (1) a prohibitory injunction which commands
a party to refrain from doing a particular act; and (2) a mandatory injunction which commands the
performance of some positive act to correct a wrong in the past.39
The Court of Appeals did not err in reviewing proof adduced by petitioners to support its application
for the issuance of the writ. While the matter of the issuance of a writ of preliminary injunction is
addressed to the sound discretion of the trial court, this discretion must be exercised based upon the
grounds and in the manner provided by law. The exercise of discretion by the trial court in injunctive
matters is generally not interfered with save in cases of manifest abuse.40 And to determine whether
there was abuse of discretion, a scrutiny must be made of the bases, if any, considered by the trial
court in granting injunctive relief. Be it stressed that injunction is the strong arm of equity which must
be issued with great caution and deliberation, and only in cases of great injury where there is no
commensurate remedy in damages.41

In the present case, we find that there was scant justification for the issuance of the writ of
preliminary injunction.

Petitioners anchor their legal right to "Dockers and Design" trademark on the Certificate of
Registration issued in their favor by the Bureau of Patents, Trademarks and Technology
Transfer.* According to Section 138 of Republic Act No. 8293,42 this Certificate of Registration
is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark and
of the exclusive right to use the same in connection with the goods or services and those that are
related thereto specified in the certificate. Section 147.1 of said law likewise grants the owner of the
registered mark the exclusive right to prevent all third parties not having the owner’s consent from
using in the course of trade identical or similar signs for goods or services which are identical or
similar to those in respect of which the trademark is registered if such use results in a likelihood of
confusion.

However, attention should be given to the fact that petitioners’ registered trademark consists of two
elements: (1) the word mark "Dockers" and (2) the wing-shaped design or logo. Notably, there is
only one registration for both features of the trademark giving the impression that the two should be
considered as a single unit. Clinton Apparelle’s trademark, on the other hand, uses the "Paddocks"
word mark on top of a logo which according to petitioners is a slavish imitation of the "Dockers"
design. The two trademarks apparently differ in their word marks ("Dockers" and "Paddocks"), but
again according to petitioners, they employ similar or identical logos. It could thus be said that
respondent only "appropriates" petitioners’ logo and not the word mark "Dockers"; it uses only a
portion of the registered trademark and not the whole.

Given the single registration of the trademark "Dockers and Design" and considering that respondent
only uses the assailed device but a different word mark, the right to prevent the latter from using the
challenged "Paddocks" device is far from clear. Stated otherwise, it is not evident whether the single
registration of the trademark "Dockers and Design" confers on the owner the right to prevent the use
of a fraction thereof in the course of trade. It is also unclear whether the use without the owner’s
consent of a portion of a trademark registered in its entirety constitutes material or substantial
invasion of the owner’s right.

It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
dominant or central feature of petitioners’ trademark—the feature that prevails or is retained in the
minds of the public—an imitation of which creates the likelihood of deceiving the public and
constitutes trademark infringement.43 In sum, there are vital matters which have yet and may only be
established through a full-blown trial.

From the above discussion, we find that petitioners’ right to injunctive relief has not been clearly and
unmistakably demonstrated. The right has yet to be determined. Petitioners also failed to show proof
that there is material and substantial invasion of their right to warrant the issuance of an injunctive
writ. Neither were petitioners able to show any urgent and permanent necessity for the writ to
prevent serious damage.

Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging that the
erosion or dilution of their trademark is protectable. They assert that a trademark owner does not
have to wait until the mark loses its distinctiveness to obtain injunctive relief, and that the mere use
by an infringer of a registered mark is already actionable even if he has not yet profited thereby or
has damaged the trademark owner.

Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner of
the famous mark and other parties; or (2) likelihood of confusion, mistake or deception. Subject to
the principles of equity, the owner of a famous mark is entitled to an injunction "against another
person’s commercial use in commerce of a mark or trade name, if such use begins after the mark
has become famous and causes dilution of the distinctive quality of the mark." This is intended to
protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or
disparage it.44

Based on the foregoing, to be eligible for protection from dilution, there has to be a finding that: (1)
the trademark sought to be protected is famous and distinctive; (2) the use by respondent of
"Paddocks and Design" began after the petitioners’ mark became famous; and (3) such subsequent
use defames petitioners’ mark. In the case at bar, petitioners have yet to establish whether "Dockers
and Design" has acquired a strong degree of distinctiveness and whether the other two elements are
present for their cause to fall within the ambit of the invoked protection. The Trends MBL Survey
Report which petitioners presented in a bid to establish that there was confusing similarity between
two marks is not sufficient proof of any dilution that the trial court must enjoin.

The Court also finds that the trial court’s order granting the writ did not adequately detail the reasons
for the grant, contrary to our ruling in University of the Philippines v. Hon. Catungal Jr., 45 wherein we
held that:

The trial court must state its own findings of fact and cite particular law to justify grant of preliminary
injunction. Utmost care in this regard is demanded.46

The trial court in granting the injunctive relief tersely ratiocinated that "the plaintiffs appear to be
entitled to the relief prayed for and this Court is of the considered belief and humble view that,
without necessarily delving on the merits, the paramount interest of justice will be better served if
the status quo shall be maintained." Clearly, this statement falls short of the requirement laid down
by the above-quoted case. Similarly, in Developers Group of Companies, Inc. v. Court of
Appeals,47 we held that it was "not enough" for the trial court, in its order granting the writ, to simply
say that it appeared "after hearing that plaintiff is entitled to the relief prayed for."

In addition, we agree with the Court of Appeals in its holding that the damages the petitioners had
suffered or continue to suffer may be compensated in terms of monetary consideration. As held
in Government Service Insurance System v. Florendo:48

…a writ of injunction should never have been issued when an action for damages would adequately
compensate the injuries caused. The very foundation of the jurisdiction to issue the writ of injunction
rests in the probability of irreparable injury, inadequacy of pecuniary estimation and the prevention of
the multiplicity of suits, and where facts are not shown to bring the case within these conditions, the
relief of injunction should be refused.49
We also believe that the issued injunctive writ, if allowed, would dispose of the case on the merits as
it would effectively enjoin the use of the "Paddocks" device without proof that there is basis for such
action. The prevailing rule is that courts should avoid issuing a writ of preliminary injunction that
would in effect dispose of the main case without trial.50 There would be a prejudgment of the main
case and a reversal of the rule on the burden of proof since it would assume the proposition which
petitioners are inceptively bound to prove.51

Parenthetically, we find no flaw in the Court of Appeals’ disquisition on the consequences of the
issued injunction. An exercise of caution, we believe that such reflection is necessary to weigh the
alleged entitlement to the writ vis-à-vis its possible effects. The injunction issued in the instant case
is of a serious nature as it tends to do more than to maintain the status quo. In fact, the assailed
injunction if sustained would bring about the result desired by petitioners without a trial on the merits.

Then again, we believe the Court of Appeals overstepped its authority when it declared that the
"alleged similarity as to the two logos is hardly confusing to the public." The only issue brought
before the Court of Appeals through respondent’s Petition under Rule 65 of the Rules of Court
involved the grave abuse of discretion allegedly committed by the trial court in granting the TRO and
the writ of preliminary injunction. The appellate court in making such a statement went beyond that
issue and touched on the merits of the infringement case, which remains to be decided by the trial
court. In our view, it was premature for the Court of Appeals to declare that there is no confusion
between the two devices or logos. That matter remains to be decided on by the trial court.

Finally, we have no contention against the procedure adopted by the trial court in resolving the
application for an injunctive writ and we believe that respondent was accorded due process. Due
process, in essence, is simply an opportunity to be heard. And in applications for preliminary
injunction, the requirement of hearing and prior notice before injunction may issue has been relaxed
to the point that not all petitions for preliminary injunction must undergo a trial-type hearing, it being a
hornbook doctrine that a formal or trial-type hearing is not at all times and in all instances essential
to due process. Due process simply means giving every contending party the opportunity to be
heard and the court to consider every piece of evidence presented in their favor. Accordingly, this
Court has in the case of Co v. Calimag, Jr.,52 rejected a claim of denial of due process where such
claimant was given the opportunity to be heard, having submitted his counter-affidavit and
memorandum in support of his position.53

After a careful consideration of the facts and arguments of the parties, the Court finds that petitioners
did not adequately prove their entitlement to the injunctive writ. In the absence of proof of a legal
right and the injury sustained by the applicant, an order of the trial court granting the issuance of an
injunctive writ will be set aside for having been issued with grave abuse of discretion.54 Conformably,
the Court of Appeals was correct in setting aside the assailed orders of the trial court.

WHEREFORE, the instant petition is DENIED. The Decision of the Court of Appeals dated 21
December 1998 and its Resolution dated 10 May 1999 are AFFIRMED. Costs against petitioners.

SO ORDERED.

DANTE O. TINGA Associate Justice

WE CONCUR:

REYNATO S. PUNO

Associate Justice
 Chairman

MA. ALICIA AUSTRIA-MARTINEZ, ROMEO J. CALLEJO, SR.

Associate Justice Associate Justice

MINITA V. CHICO-NAZARIO

Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision were reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.

REYNATO S. PUNO

Associate Justice
Chairman, Second Division

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, and the Division Chairman’s Attestation, it is
hereby certified that the conclusions in the above Decision had been reached in consultation before
the case was assigned to the writer of the opinion of the Court’s Division.

HILARIO G. DAVIDE, JR.

Chief Justice

Footnotes

1 Rollo, pp. 26-91; Dated 6 July 1999.

2Id. at 93-101; Penned by Associate Justice Eloy R. Bello, Jr. and concurred in by Associate
Justices Salome A. Montoya and Ruben T. Reyes.

3 Id. at 103.

4 Id. at 104-142.

5 RTC Records, p. 79.

6 CA Rollo, p. 42.

7 RTC Records, pp. 1-9; Dated 29 April 1998.

*It calls itself Clinton Apparel, Inc.

8 The case was filed on 30 April 1998; Rollo, pp. 41, 94.

9 Rollo, pp. 29-31.

10 Id. at 41-42.

SEC. 13. Alternative defendants. – Where the plaintiff is uncertain against who of several
11

persons he is entitled to relief, he may join any or all of them as defendants in the alternative,
although a right to relief against one may be inconsistent with a right of relief against the
other.

12
Rollo, p. 94.

13 RTC Records, pp. 7-8.

14 Rollo, p. 378; Dated 4 May 1998.

15 Id. at 727-728.

16 Id. at 95, 678.

17 RTC Records, p. 79.

18 Ibid.

19 RTC Records, p. 417.

20 Ibid.

21 Rollo, pp. 749-750.

22 RTC Records, 418-424; Dated 5 June 1998.

23 CA Rollo, pp. 66-71; Dated 5 June 1998.

24 RTC Records, p. 494; Dated 18 June 1998.

25 In an Order of even date; Id. at 495.

26 Id. at 576.

27 Id. at 577.

28 CA Rollo, pp. 2-40; Dated 12 October 1998.

29 Id. at 117-118.

30 Rollo, p. 98.
31 Id. at 99-100.

32 CA Rollo, pp. 1251-1268; Dated 11 January 1999.

33 Rollo, pp. 601-628; Dated 18 October 1999; In a Resolution dated 10 May 1999, id. at 103.

Toyota Motor Phils. Corporation Workers’ Association (TMPCWA) v. Court of Appeals,

34

G.R. No. 148924, 24 September 2003, 412 SCRA 69, 85-86.

Id.; Government Service Insurance System v. Florendo, G.R. No. 48603, 29 September
35

1989, 178 SCRA 76, 83-84.

Toyota Motor Phils. Corporation Workers’ Association (TMPCWA) v. Court of

36

Appeals; id. at 85-86.

37 Republic of the Philippines v. Judge Villarama, Jr., 344 Phil. 288, 302-303 (1997).

Government Service Insurance System v. Florendo, supra note 35; National Power
38

Corporation v. Vera, G.R. No. 83558, 27 February 1989, 170 SCRA 721, 727.

39 Herrera, Oscar M., Remedial Law (1999 Edition) 71.

40 Government Service Insurance System v. Florendo, supra note 35 at 89.

41 University of the Philippines v. Hon. Catungal, Jr., 338 Phil. 728, 743 (1997).

*Now called Intellectual Property Office.

42 Otherwise known as the "Intellectual Property Code of the Philippines."

43 See Co Tiong Sa v. Director of Patents, 95 Phil. 1, 5 (1954).

44 Toys "R" Us v. Akkaoui, 40 U.S. P.Q. 2d (BNA) 1836 (N.D. Cal. 1996).

45 338 Phil. 728, 743 (1997).

46 Id..

47 G.R. No. 104583, 8 March 1993, 219 SCRA 715, 721.

48 Government Service Insurance System v. Florendo, supra note 35.

Government Service Insurance System v. Florendo, supra note 35 at 87; See Golding v.
49

Balatbat, 36 Phil. 941, 947 (1917)

Searth Commodities Corp. v. Court of Appeals, G.R. No. 64220, 31 March 1992, 207
50

SCRA 622, 629.

51 Id. at 630.
 52 389 Phil. 389, 394-395 (2000).

Batangas Laguna Tayabas Bus Co., Inc. v. Bitanga, 415 Phil. 43, 55 (2001); See Co. v.
53

Judge Calimag, supra, citing NFL v. NLRC, 283 SCRA 275 (1997) and Ginete v. Court of
Appeals, 296 SCRA 38 (1998).

See Ong Ching Kian Chuan v. Court of Appeals, G.R. No. 130360, 15 August 2001, 363
54

SCRA 145, 154.

G.R. No. 221717

MANG INASAL PHILIPPINES, INC., Petitioner

vs.
IFP MANUFACTURING CORPORATION, Respondent

DECISION

VELASCO, JR., J.:

Before us is a Petition for Review on Certiorari under Rule 45 of the Rules of Court of the
Resolutions dated June 10, 2015 1 and December 2, 2015 2 of the Court of Appeals (CA) in CA-G.R.
SP No. 139020.

The Facts

The Trademark Application and the Opposition Respondent IFP Manufacturing Corporation is a local
manufacturer of snacks and beverages.

On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an application 3 for the
registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" (OK Hotdog Inasal mark) in
connection with goods under Class 30 of the Nice Classification.4 The said mark, which respondent
intends to use on one of its curl snack products, appears as follows:
The application of respondent was opposed 5 by petitioner Mang Inasal Philippines, Inc.

Petitioner is a domestic fast food company and the owner of the mark "Mang Inasal, Home of Real
Pinoy Style Barbeque and Device" (Mang Inasal mark) for services under Class 43 of the Nice
Classification. 6 The said mark, which was registered with the IPO in 2006 7 and had been used by
petitioner for its chain of restaurants since 2003, 8 consists of the following Insignia:
Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog Inasal mark is
prohibited under Section 123.l (d)(iii) of Republic Act No. (RA) 8293. 9 Petitioner averred that the OK
Hotdog Inasal mark and the Mang Inasal mark share similarities-both as to their appearance and as
to the goods or services that they represent which tend to suggest a false connection or association
between the said marks and, in that regard, would likely cause confusion on the part of the
public. 10 As petitioner explained:

1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the same
dominant element-i.e., the word "INASAL"-printed and stylized in the exact same manner, viz:

a. In both marks, the word "INASAL" is spelled using the same font style and red
color;

b. In both marks, the word "INASAL" is placed inside the same black outline and
yellow background; and

c. In both marks, the word "INASAL" is arranged in the same staggered format.

2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack products) are
also closely related to the services represented by the Mang Inasal mark (i.e., fast food restaurants).
Both marks cover inasal or inasal-flavored food products.

Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for hearing and
disposition.

Decisions of the IPO-BLA and the IPO-DG

On September 19, 2013, after due proceedings, the IPO-BLA issued a Decision 11 dismissing
petitioner's opposition. The dispositive portion of the Decision reads:
WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the
filewrapper [sic] of Trademark Application Serial No. 4-2011-006098 be returned, together with a
copy of this Decision, to the Bureau of Trademarks for further information and appropriate action.

SO ORDERED.

Aggrieved, petitioner appealed the Decision of IPO-BLA to the Director General (DG) of the IPO. 12

On December 15, 2014, the IPO-DG rendered a Decision 13 dismissing the appeal of petitioner.
The fallo of the Decision accordingly reads:

Wherefore, premises considered, the appeal is hereby dismissed. Let a copy of this Decision be
furnished to the Director of Bureau of Legal Affairs and the Director of Bureau of Trademarks for
their appropriate action and information. Further, let a copy of this Decision be furnished to the
library of the Documentation, Information and Technology Transfer Bureau for records purposes.

SO ORDERED.

Both the IPO-BLA and the IPO-DG were not convinced that the OK Hotdog Inasal mark is
confusingly similar to the Mang Inasal mark. They rebuffed petitioner's contention, thusly:

1. The OK Hotdog Inasal mark is not similar to the Mang !nasal mark. In terms of appearance, the
only similarity between the two marks is the word "INASAL." However, there are other words
like "OK," "HOTDOG," and "CHEESE' and images like that of curls and cheese that are found in the
OK Hotdog Inasal mark but are not present in the Mang Inasal mark. 14

In addition, petitioner cannot prevent the application of the word "INASAL" in the OK Hotdog Inasal
mark. No person or entity can claim exclusive right to use the word "INASAL" because it is merely a
generic or descriptive word that means barbeque or barbeque products. 15

Neither can the underlying goods and services of the two marks be considered as closely related.
The products represented by the two marks are not competitive and are sold in different channels of
trade. The curl snack products of the OK Hotdog Inasal mark are sold in sari-sari stores, grocery
stores and other small distributor outlets, whereas the food products associated with the Mang
Inasal mark are sold in petitioner's restaurants. 16

Undeterred, petitioner appealed to the CA.

Resolutions of the CA and the Instant Appeal

On June 10, 2015, the CA issued a Resolution 17 denying the appeal of petitioner. Petitioner filed a
motion for reconsideration, but this too was denied by the CA through its Resolution18 dated
December 2, 2015. The CA, in its Resolutions, simply agreed with the ratiocinations of the IPOBLA
and IPO-DG.

Hence, the instant appeal.

Here, petitioner prays for the reversal of the CA Resolutions. Petitioner maintains that the OK
Hotdog Inasal mark is confusingly similar to the Mang Inasal mark and insists that the trademark
application of respondent ought to be denied for that reason.
 Our Ruling

We have examined the OK Hotdog Inasal and Mang Inasal marks under the lens of pertinent law
and jurisprudence. And, through it, we have determined the justness of petitioner's claim. By our
legal and jurisprudential standards, the respondent's OK Hotdog Inasal mark is, indeed, likely to
cause deception or confusion on the part of the public. Hence, contrary to what the IPO-BLA, IPO-
DG, and the CA had ruled, the respondent's application should have been denied.

We, therefore, grant the appeal.

The Proscription: Sec. 123.l(d)(iii) of RA 8293

A mark that is similar to a registered mark or a mark with an earlier filing or priority date (earlier
mark) and which is likely to cause confusion on the part of the public cannot be registered with the
IPO. Such is the import of Sec. 123.l(d)(iii) of RA 8293:

SECTION 123. Registrability. –

123. 1. A mark cannot be registered if it:

xxxx

d. xxx:

1. x x x

11. x x x

iii. ... nearly resembles [a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date] as to be likely to deceive or cause confusion.

The concept of confusion, which is at the heart of the proscription, could either refer to confusion of
goods or confusion of business. In Skechers U.S.A., Inc. v. Trendworks International
Corporation, 19 we discussed and differentiated both types of confusion, as follows:

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2)
types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he was purchasing the other;
and (2) confusion of business (source or origin confusion), where, although the goods of the parties
are different, the product, the mark of which registration is applied for by one party, is such as might
reasonably be assumed to originate with the registrant of an earlier product, and the public would
then be deceived either into that belief or into the belief that there is some connection between the
two parties, though inexistent.

Confusion, in either of its forms, is, thus, only possible when the goods or services covered by
allegedly similar marks are identical, similar or related in some manner. 20
Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to deceive or cause
confusion upon the purchasing public, a prospective mark must be shown to meet two (2) minimum
conditions:

1. The prospective mark must nearly resemble or be similar to an earlier mark; and

2. The prospective mark must pertain to goods or services that are either identical, similar or
related to the goods or services represented by the earlier mark.

The rulings of the IPO-BLA, IPO-DG, and the CA all rest on the notion that the OK Hotdog Inasal
mark does not fulfill both conditions and so may be granted registration.

We disagree.

II

The OK Hotdog Inasal Mark Is Similar to the Mang Inasal Mark

The first condition of the proscription requires resemblance or similarity between a prospective mark
and an earlier mark. Similarity does not mean absolute identity of marks. 21 To be regarded as similar
to an earlier mark, it is enough that a prospective mark be a colorable imitation of the
former. 22 Colorable imitation denotes such likeness in form, content, words, sound, meaning, special
arrangement or general appearance of one mark with respect to another as would likely mislead an
average buyer in the ordinary course of purchase. 23

In determining whether there is similarity or colorable imitation between two marks, authorities
employ either the dominancy test or the holistic test.24 In Mighty Corporation v. E. & J. Gallo
Winery,25 we distinguished between the two tests as follows:

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks
which might cause confusion or deception, and thus infringement. If the competing trademark
contains the main, essential or 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 deceive purchasers.

On the other hand, the Holistic Test requires that the entirety of the marks in question be considered
in resolving confusing similarity. Comparison of words is not the only determining factor. The
trademarks in their entirety as they appear in their respective labels or hang tags must also be
considered in relation to the goods to which they are attached. The discerning eye of the observer
must focus not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to the other.
(citations omitted and emphasis supplied)

There are currently no fixed rules as to which of the two tests can be applied in any given
case. 26 However, recent case law on trademark seems to indicate an overwhelming judicial
preference towards applying the dominancy test. 27 We conform.

Our examination of the marks in controversy yielded the following findings:

1. The petitioner's Mang Inasal mark has a single dominant feature-the word "INASAL" written in a
bold red typeface against a black outline and yellow background with staggered design. The other
perceptible elements of the mark-such as the word "MANG" written in black colored font at the upper
left side of the mark and the phrase "HOME OF REAL PINOY STYLE BARBEQUF' written in a black
colored stylized font at the lower portion of the mark-are not as visually outstanding as the
mentioned feature.

2. Being the sole dominant element, the word "INASAL," as stylized in the Mang Inasal mark, is also
the most distinctive and recognizable feature of the said mark.

3. The dominant element "INASAL," as stylized in the Mang Inasal mark, is different from the
term "inasal' per se. The term "inasal" per se is a descriptive term that cannot be appropriated.
However, the dominant element "INASAL," as stylized in the Mang Inasal mark, is not. Petitioner, as
the registered owner of the Mang Inasal mark, can claim exclusive use of such element.

4. The respondent's OK Hotdog Inasal mark, on the other hand, has three (3) dominant features: (a)
the word "INASAL" written in a bold red typeface against a black and yellow outline with staggered
design; (b) the word "HOTDOG" written in green colored font; and (c) a picture of three pieces of
curls. Though there are other observable elements in the mark-such as the word "OK'' written in red
colored font at the upper left side of the mark, the small red banner overlaying the picture of the curls
with the words "CHEESE HOTDOG FLAVOR" written on it, and the image of a block of cheese
beside the picture of the curls-none of those are as prevalent as the two features aforementioned.

5. The dominant element "INASAL" in the OK Hotdog Inasal mark is exactly the same as the
dominant element "INASAL" in the Mang Inasal mark. Both elements in both marks are printed using
the exact same red colored font, against the exact same black outline and yellow background and is
arranged in the exact same staggered format.

6. Apart from the element "INASAL," there appear no other perceivable similarities between the two
marks.

Given the foregoing premises, and applying the dominancy test, we hold that the OK Hotdog Inasal
mark is a colorable imitation of the Mang Inasal mark.

First. The fact that the conflicting marks have exactly the same dominant element is key. It is
undisputed that the OK Hotdog Inasal mark copied and adopted as one of its dominant features
the "INASAL" element of the Mang Inasal mark. Given that the "INASAL" element is, at the same
time, the dominant and most distinctive feature of the Mang Inasal mark, the said element's
incorporation in the OK Hotdog Inasal mark, thus, has the potential to project the deceptive and false
impression that the latter mark is somehow linked or associated with the former mark.

Second. The differences between the two marks are I trumped by the overall impression created by
their similarity. The mere fact that there are other elements in the OK Hotdog Inasal mark that are
not present in the Mang Inasal mark actually does little to change the probable public perception that
both marks are linked or associated. It is worth reiterating that the OK Hotdog Inasal mark actually
1âwphi1

brandishes a literal copy of the most recognizable feature of the Mang Inasal mark. We doubt that an
average buyer catching a casual glimpse of the OK Hotdog Inasal mark would pay more attention to
the peripheral details of the said mark than it would to the mark's more prominent feature, especially
when the same invokes the distinctive feature of another more popular brand.

All in all, we find that the OK Hotdog Inasal mark is similar to the Mang Inasal mark.
 III

The Goods for which the Registration of the OK Hotdog Inasal Mark Is Sought Are Related to the
Services Being Represented by the Mang Inasal Mark

The second condition of the proscription requires that the prospective mark pertain to goods or
services that are either identical, similar or related to the goods or services represented by the
earlier mark. While there can be no quibble that the curl snack product for which the registration of
the OK Hotdog Inasal mark is sought cannot be considered as identical or similar to the restaurant
services represented by the Mang Inasal mark, there is ample reason to conclude that the said
product and services may nonetheless be regarded as related to each other.

Related goods and services are those that, though non-identical or non-similar, are so logically
connected to each other that they may reasonably be assumed to originate from one manufacturer
or from economically-linked manufacturers. 28 In determining whether goods or services are related,
several factors may be considered. Some of those factors recognized in our jurisprudence are: 29

1. the business (and its location) to which the goods belong;

2. the class of product to which the goods belong;

3. the product's quality, quantity, or size, including the nature of the package, wrapper or container;

4. the nature and cost of the articles;

5. the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality;

6. the purpose of the goods;

7. whether the article is bought for immediate consumption, that is, day-to-day household items;

8. the fields of manufacture;

9. the conditions under which the article is usually purchased, and

10. the channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

Relative to the consideration of the foregoing factors, however, Mighty Corporation 30 significantly
imparted:

The wisdom of this approach is its recognition that each trademark infringement case presents its
own unique set of facts. No single factor is preeminent, nor can the presence or absence of one
determine, without analysis of the others, the outcome of an infringement suit. Rather, the court is
required to sift the evidence relevant to each of the criteria. This requires that the entire panoply of
elements constituting the relevant factual landscape be comprehensively examined. It is a weighing
and balancing process. With reference to this ultimate question, and from a balancing of the
determinations reached on all of the factors, a conclusion is reached whether the parties have a right
to the relief sought.
A very important circumstance though is whether there exists a likelihood that an appreciable
number of ordinarily prudent purchasers will be misled, or simply confused, as to the source of the
goods in question. The "purchaser" is not the "completely unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of product involved he is accustomed to buy, and therefore to
some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in
the likelihood of the deception of some persons in some measure acquainted with an established
design and desirous of purchasing the commodity with which that design has been associated. The
test is not found in the deception, or the possibility of deception, of the person who knows nothing
about the design which has been counterfeited, and who must be indifferent between that and the
other. The simulation, in order to be objectionable, must be such as appears likely to mislead the
ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to
purchase. (citations omitted and emphasis supplied)

Mindful of the foregoing precepts, we hold that the curl snack product for which the registration of the
OK Hotdog Inasal mark is sought is related to the restaurant services represented by the Mang
!nasal mark, in such a way that may lead to a confusion of business. In holding so, we took into
account the specific kind of restaurant business that petitioner is engaged in, the reputation of the
petitioner's mark, and the particular type of curls sought to be marketed by the respondent, thus:

First. Petitioner uses the Mang Inasal mark in connection with its restaurant services that is
particularly known for its chicken inasal, i.e., grilled chicken doused in a
special inasal marinade. 31 The inasal marinade is different from the typical barbeque marinade and it
is what gives the chicken inasal its unique taste and distinct orange color. 32 Inasal refers to the
manner of grilling meat products using an inasal marinade.

Second. The Mang Inasal mark has been used for petitioner's restaurant business since 2003. The
restaurant started in Iloilo but has since expanded its business throughout the country. Currently, the
Mang Inasal chain of restaurants has a total of 464 branches scattered throughout the nation's three
major islands. 33 It is, thus, fair to say that a sizeable portion of the population is knowledgeable of the
Mang Inasal mark.

Third. Respondent, on the other hand, seeks to market under the OK Hotdog Inasal mark curl snack
products which it publicizes as having a cheese hotdog inasal flavor. 34

Accordingly, it is the fact that the underlying goods and services of both marks deal
with inasal and inasal-flavored products which ultimately fixes the relations between such goods and
services. Given the foregoing circumstances and the aforesaid similarity between the marks in
controversy, we are convinced that an average buyer who comes across the curls marketed under
the OK Hotdog Inasal mark is likely to be confused as to the true source of such curls. To our mind,
it is not unlikely that such buyer would be led into the assumption that the curls are of petitioner and
that the latter has ventured into snack manufacturing or, if not, that the petitioner has supplied the
flavorings for respondent's product. Either way, the reputation of petitioner would be taken
advantage of and placed at the mercy of respondent.

All in all, we find that the goods for which the registration of the OK Hotdog Inasal mark is sought are
related to the services being represented by the Mang Inasal mark. 1âwphi1

IV
Conclusion
The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec. 123.l(d)(iii) of
RA 8293. First, it is similar to the Mang Inasal mark, an earlier mark. Second, it pertains to goods
that are related to the services represented by such earlier mark. Petitioner was, therefore, correct;
and the IPO-BLA, IPO-DG, and the CA's rulings must be reversed. The OK Hotdog Inasal mark is
not entitled to be registered as its use will likely deceive or cause confusion on the part of the public
and, thus, also likely to infringe the Mang Inasal mark. The law, in instances such as this, must come
to the succor of the owner of the earlier mark.

WHEREFORE, premises considered, the petition is hereby GRANTED. We hereby render a

decision as follows:

1. REVERSING and SETTING ASIDE the Resolutions dated June 10, 2015 and December 2, 2015
of the Court of Appeals in CA-G.R. SP No. 139020;

2. SETTING ASIDE the Decision dated December 15, 2014 of the Director General of the
Intellectual Property Office in Appeal No. 14-2013-0052;

3. SETTING ASIDE the Decision dated September 19, 2013 of the Director of the Bureau of Legal
Affairs of the Intellectual Property Office in IPC No. 14-2012-00369; and

4. DIRECTING the incumbent Director General and Director of the Bureau of Legal Affairs of the
Intellectual Property Office to DENY respondent's Application No. 4-2011-006098 for the registration
of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark"

SO ORDERED.

PRESBITERO J. VELASCO, JR.

Associate Justice

WE CONCUR:

LUCAS P. BERSAMIN
Associate Justice

BIENVENIDO L. REYES FRANCIS H. JARDELEZA

Associate Justice Associate Justice

NOEL GIMINEZ TIJAM

Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

PRESBITER J. VELASCO, JR.

Associate Justice
Chairperson
 CERTIFICATION

Pursuant to the Section 13, Article VIII of the Constitution and the Division Chairperson’s Attestation,
I certify that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

MARIA LOURDES P.A. SERENO

Chief Justice

Footnotes

1
Rollo, pp. 854-857. Penned by Associate Justice Normandie B. Pizarro and concurred in by
Associate Justices Victoria Isabel A. Paredes and Zenaida T. Galapate-Laguilles.

2
Id. at 55-58.

3
Trademark Application No. 4-2011-006098. The application was published in the IPO E-
Gazette on July 16, 2012.

4
Otherwise known as the "International Classification of Goods."

5
Rollo, pp. 65-76. Via Notice of Opposition dated October 15, 2012. The Notice of
Opposition was docketed in the IPO as IPC No. 14-2012-00369.

6
Per Certificate of Registration No.4-2006-009050.

7
Rollo,p.122.The Mang Inasal mark was registered with the IPO on August17,
2006.See Certificate of Registration No.4-2006-009050,

8
Id.at25.

9
The provision reads:

SECTION123.Registrability.-

123.1.A mark cannot be registered if fit:

Xxxx

d.Is identical with are glistered mark belonging to a different proprietor or a mark with
an earlier filing or priority date, in respect of:

i.The same goods or services, or

ii.Closely related goods or services, or

 iii.If it nearly resembles such a mark as to be likely to deceive or cause
confusion.

10
Rollo, pp. 65-76

11
Id. at203-207.

12
The appeal was docketed as Appeal No. 14-2013-0052.

13
Rollo, pp. 408-411. Rendered by then Director General Ricardo R. Blancaflor.

14
Id. at 410.

15
Id. at 410-411.

16
Id. at 206-207; 411.

17
Id. at 854-857.

18
Id. at 55-58.

19
G.R. No. 164321, March 23, 2011, 646 SCRA 448.

See Faberge, Inc. v. Intermediate Appellate Court, G.R. No. 71189, November 4, 1992,
20

215 SCRA 316.

See Emerald Garment Manufacturing v. Court of Appeals, G.R. No. 100098, December 29,
21

1995, 251SCRA600.

22
Clark v. Manila Candy Company, 36 Phil. 100 (1917).

23
Emerald Garment Manufacturing, supra note 21.

Mighty Corporation v. E. &J. Gallo Winery, G.R. No. 154342, July 14, 2004, 434 SCRA
24

473.

25
Id.

See Diaz v. People of the Philippines, G.R. No. 180677, February 18, 2013, 691 SCRA
26

139.

27
See UFC Philippines, Inc. v. Fiesta Barrio Manufacturing Corporation, G.R. No. 198889,
January 20, 2016; Skechers U.S.A., Inc., supra note 19; Berris Agricultural Company, Inc. v.
Abyadang, G.R. No. 183404, October 13, 2010, 633 SCRA 196; Dermaline, Inc. v. Myra
Pharmaceuticals, G.R. No. 190065, August 16, 2010, 628 SCRA 356; Societe Des Produits
Nestle, S.A. v. Dy, Jr., G.R. No. 172276, August 8, 2010, 627 SCRA 223; Prosource
International, Inc. v. Horphag Research Management 5:4, G.R. No. 180073, November 25,
2009, 605 SCRA 523.
 See Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, No. L-
28

19906, April 30, 1969, 27 SCRA 1214.

29
Mighty Corporation, supra note 24.

30
Id.

31
Rollo, p. 25.

Gapultos, Marvin. The Adobo Road Cookbook: A Filipino Food Journey from Food Blog, to
32

Food Truck and Beyond (2013), p. 84.

G.R. No. 170891 November 24, 2009

MANUEL C. ESPIRITU, JR., AUDIE LLONA, FREIDA F. ESPIRITU, CARLO F. ESPIRITU,

RAFAEL F. ESPIRITU, ROLANDO M. MIRABUNA, HERMILYN A. MIRABUNA, KIM ROLAND A.
MIRABUNA, KAYE ANN A. MIRABUNA, KEN RYAN A. MIRABUNA, JUANITO P. DE CASTRO,
GERONIMA A. ALMONITE and MANUEL C. DEE, who are the officers and directors of BICOL
GAS REFILLING PLANT CORPORATION, Petitioners,
vs.
PETRON CORPORATION and CARMEN J. DOLOIRAS, doing business under the name
"KRISTINA PATRICIA ENTERPRISES," Respondents.

DECISION

ABAD, J.:

This case is about the offense or offenses that arise from the reloading of the liquefied petroleum
gas cylinder container of one brand with the liquefied petroleum gas of another brand.

The Facts and the Case

Respondent Petron Corporation (Petron) sold and distributed liquefied petroleum gas (LPG) in
cylinder tanks that carried its trademark "Gasul."1 Respondent Carmen J. Doloiras owned and
operated Kristina Patricia Enterprises (KPE), the exclusive distributor of Gasul LPGs in the whole of
Sorsogon.2 Jose Nelson Doloiras (Jose) served as KPE’s manager.

Bicol Gas Refilling Plant Corporation (Bicol Gas) was also in the business of selling and distributing
LPGs in Sorsogon but theirs carried the trademark "Bicol Savers Gas." Petitioner Audie Llona
managed Bicol Gas.

In the course of trade and competition, any given distributor of LPGs at times acquired possession of
LPG cylinder tanks belonging to other distributors operating in the same area. They called these
"captured cylinders." According to Jose, KPE’s manager, in April 2001 Bicol Gas agreed with KPE
for the swapping of "captured cylinders" since one distributor could not refill captured cylinders with
its own brand of LPG. At one time, in the course of implementing this arrangement, KPE’s Jose
visited the Bicol Gas refilling plant. While there, he noticed several Gasul tanks in Bicol Gas’
possession. He requested a swap but Audie Llona of Bicol Gas replied that he first needed to ask
the permission of the Bicol Gas owners. That permission was given and they had a swap involving
around 30 Gasul tanks held by Bicol Gas in exchange for assorted tanks held by KPE.
KPE’s Jose noticed, however, that Bicol Gas still had a number of Gasul tanks in its yard. He offered
to make a swap for these but Llona declined, saying the Bicol Gas owners wanted to send those
tanks to Batangas. Later Bicol Gas told Jose that it had no more Gasul tanks left in its possession.
Jose observed on almost a daily basis, however, that Bicol Gas’ trucks which plied the streets of the
province carried a load of Gasul tanks. He noted that KPE’s volume of sales dropped significantly
from June to July 2001.

On August 4, 2001 KPE’s Jose saw a particular Bicol Gas truck on the Maharlika Highway. While the
truck carried mostly Bicol Savers LPG tanks, it had on it one unsealed 50-kg Gasul tank and one 50-
kg Shellane tank. Jose followed the truck and when it stopped at a store, he asked the driver, Jun
Leorena, and the Bicol Gas sales representative, Jerome Misal, about the Gasul tank in their truck.
They said it was empty but, when Jose turned open its valve, he noted that it was not. Misal and
Leorena then admitted that the Gasul and Shellane tanks on their truck belonged to a customer who
had them filled up by Bicol Gas. Misal then mentioned that his manager was a certain Rolly
Mirabena.

Because of the above incident, KPE filed a complaint3 for violations of Republic Act (R.A.) 623
(illegally filling up registered cylinder tanks), as amended, and Sections 155 (infringement of trade
marks) and 169.1 (unfair competition) of the Intellectual Property Code (R.A. 8293). The complaint
charged the following: Jerome Misal, Jun Leorena, Rolly Mirabena, Audie Llona, and several John
and Jane Does, described as the directors, officers, and stockholders of Bicol Gas. These directors,
officers, and stockholders were eventually identified during the preliminary investigation.

Subsequently, the provincial prosecutor ruled that there was probable cause only for violation of R.A.
623 (unlawfully filling up registered tanks) and that only the four Bicol Gas employees, Mirabena,
Misal, Leorena, and petitioner Llona, could be charged. The charge against the other petitioners who
were the stockholders and directors of the company was dismissed.

Dissatisfied, Petron and KPE filed a petition for review with the Office of the Regional State
Prosecutor, Region V, which initially denied the petition but partially granted it on motion for
reconsideration. The Office of the Regional State Prosecutor ordered the filing of additional
informations against the four employees of Bicol Gas for unfair competition. It ruled, however, that
no case for trademark infringement was present. The Secretary of Justice denied the appeal of
Petron and KPE and their motion for reconsideration.

Undaunted, Petron and KPE filed a special civil action for certiorari with the Court of Appeals4 but the
Bicol Gas employees and stockholders concerned opposed it, assailing the inadequacy in its
certificate of non-forum shopping, given that only Atty. Joel Angelo C. Cruz signed it on behalf of
Petron. In its Decision5 dated October 17, 2005, the Court of Appeals ruled, however, that Atty.
Cruz’s certification constituted sufficient compliance. As to the substantive aspect of the case, the
Court of Appeals reversed the Secretary of Justice’s ruling. It held that unfair competition does not
necessarily absorb trademark infringement. Consequently, the court ordered the filing of additional
charges of trademark infringement against the concerned Bicol Gas employees as well.

Since the Bicol Gas employees presumably acted under the direct order and control of its owners,
the Court of Appeals also ordered the inclusion of the stockholders of Bicol Gas in the various
charges, bringing to 16 the number of persons to be charged, now including petitioners Manuel C.
Espiritu, Jr., Freida F. Espiritu, Carlo F. Espiritu, Rafael F. Espiritu, Rolando M. Mirabuna, Hermilyn
A. Mirabuna, Kim Roland A. Mirabuna, Kaye Ann A. Mirabuna, Ken Ryan A. Mirabuna, Juanito P. de
Castro, Geronima A. Almonite, and Manuel C. Dee (together with Audie Llona), collectively,
petitioners Espiritu, et al. The court denied the motion for reconsideration of these employees and
stockholders in its Resolution dated January 6, 2006, hence, the present petition for review6 before
this Court.

The Issues Presented

The petition presents the following issues:

1. Whether or not the certificate of non-forum shopping that accompanied the petition filed
with the Court of Appeals, signed only by Atty. Cruz on behalf of Petron, complied with what
the rules require;

2. Whether or not the facts of the case warranted the filing of charges against the Bicol Gas
people for:

a) Filling up the LPG tanks registered to another manufacturer without the latter’s
consent in violation of R.A. 623, as amended;

b) Trademark infringement consisting in Bicol Gas’ use of a trademark that is

confusingly similar to Petron’s registered "Gasul" trademark in violation of section
155 also of R.A. 8293; and

c) Unfair competition consisting in passing off Bicol Gas-produced LPGs for Petron-
produced Gasul LPG in violation of Section 168.3 of R.A. 8293.

The Court’s Rulings

First. Petitioners Espiritu, et al. point out that the certificate of non-forum shopping that respondents
KPE and Petron attached to the petition they filed with the Court of Appeals was inadequate, having
been signed only by Petron, through Atty. Cruz.

But, while procedural requirements such as that of submittal of a certificate of non-forum shopping
cannot be totally disregarded, they may be deemed substantially complied with under justifiable
circumstances.7 One of these circumstances is where the petitioners filed a collective action in which
they share a common interest in its subject matter or raise a common cause of action. In such a
case, the certification by one of the petitioners may be deemed sufficient.8

Here, KPE and Petron shared a common cause of action against petitioners Espiritu, et al., namely,
the violation of their proprietary rights with respect to the use of Gasul tanks and trademark.
Furthermore, Atty. Cruz said in his certification that he was executing it "for and on behalf of the
Corporation, and co-petitioner Carmen J. Doloiras."9Thus, the object of the requirement – to ensure
that a party takes no recourse to multiple forums – was substantially achieved. Besides, the failure of
KPE to sign the certificate of non-forum shopping does not render the petition defective with respect
to Petron which signed it through Atty. Cruz.10 The Court of Appeals, therefore, acted correctly in
giving due course to the petition before it.

Second. The Court of Appeals held that under the facts of the case, there is probable cause that
petitioners Espiritu, et al. committed all three crimes: (a) illegally filling up an LPG tank registered to
Petron without the latter’s consent in violation of R.A. 623, as amended; (b) trademark infringement
which consists in Bicol Gas’ use of a trademark that is confusingly similar to Petron’s registered
"Gasul" trademark in violation of Section 155 of R.A. 8293; and (c) unfair competition which consists
in petitioners Espiritu, et al. passing off Bicol Gas-produced LPGs for Petron-produced Gasul LPG in
violation of Section 168.3 of R.A. 8293.

Here, the complaint adduced at the preliminary investigation shows that the one 50-kg Petron Gasul
LPG tank found on the Bicol Gas’ truck "belonged to [a Bicol Gas] customer who had the same filled
up by BICOL GAS."11 In other words, the customer had that one Gasul LPG tank brought to Bicol
Gas for refilling and the latter obliged.

R.A. 623, as amended,12 punishes any person who, without the written consent of the manufacturer
or seller of gases contained in duly registered steel cylinders or tanks, fills the steel cylinder or tank,
for the purpose of sale, disposal or trafficking, other than the purpose for which the manufacturer or
seller registered the same. This was what happened in this case, assuming the allegations of KPE’s
manager to be true. Bicol Gas employees filled up with their firm’s gas the tank registered to Petron
and bearing its mark without the latter’s written authority. Consequently, they may be prosecuted for
that offense.

But, as for the crime of trademark infringement, Section 155 of R.A. 8293 (in relation to Section
17013 ) provides that it is committed by any person who shall, without the consent of the owner of the
registered mark:

1. Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered

mark or the same container or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or services including other preparatory
steps necessary to carry out the sale of any goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive; or

2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature

thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used in commerce
upon or in connection with the sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive.

KPE and Petron have to show that the alleged infringer, the responsible officers and staff of Bicol
Gas, used Petron’s Gasul trademark or a confusingly similar trademark on Bicol Gas tanks with
intent to deceive the public and defraud its competitor as to what it is selling.14 Examples of this
would be the acts of an underground shoe manufacturer in Malabon producing "Nike" branded
rubber shoes or the acts of a local shirt company with no connection to La Coste, producing and
selling shirts that bear the stitched logos of an open-jawed alligator.

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

As to the charge of unfair competition, Section 168.3 (a) of R.A. 8293 (also in relation to Section
170) describes the acts constituting the offense as follows:

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise
clothes the goods with such appearance as shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in
selling such goods with a like purpose;

Essentially, what the law punishes is the act of giving one’s goods the general appearance of the
goods of another, which would likely mislead the buyer into believing that such goods belong to the
latter. Examples of this would be the act of manufacturing or selling shirts bearing the logo of an
alligator, similar in design to the open-jawed alligator in La Coste shirts, except that the jaw of the
alligator in the former is closed, or the act of a producer or seller of tea bags with red tags showing
the shadow of a black dog when his competitor is producing or selling popular tea bags with red tags
showing the shadow of a black cat.

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

The only point left is the question of the liability of the stockholders and members of the board of
directors of Bicol Gas with respect to the charge of unlawfully filling up a steel cylinder or tank that
belonged to Petron. The Court of Appeals ruled that they should be charged along with the Bicol
Gas employees who were pointed to as directly involved in overt acts constituting the offense. 1avv phi 1

Bicol Gas is a corporation. As such, it is an entity separate and distinct from the persons of its
officers, directors, and stockholders. It has been held, however, that corporate officers or employees,
through whose act, default or omission the corporation commits a crime, may themselves be
individually held answerable for the crime.15

Jose claimed in his affidavit that, when he negotiated the swapping of captured cylinders with Bicol
Gas, its manager, petitioner Audie Llona, claimed that he would be consulting with the owners of
Bicol Gas about it. Subsequently, Bicol Gas declined the offer to swap cylinders for the reason that
the owners wanted to send their captured cylinders to Batangas. The Court of Appeals seized on
this as evidence that the employees of Bicol Gas acted under the direct orders of its owners and that
"the owners of Bicol Gas have full control of the operations of the business."16

The "owners" of a corporate organization are its stockholders and they are to be distinguished from
its directors and officers. The petitioners here, with the exception of Audie Llona, are being charged
in their capacities as stockholders of Bicol Gas. But the Court of Appeals forgets that in a
corporation, the management of its business is generally vested in its board of directors, not its
stockholders.17 Stockholders are basically investors in a corporation. They do not have a hand in
running the day-to-day business operations of the corporation unless they are at the same time
directors or officers of the corporation. Before a stockholder may be held criminally liable for acts
committed by the corporation, therefore, it must be shown that he had knowledge of the criminal act
committed in the name of the corporation and that he took part in the same or gave his consent to its
commission, whether by action or inaction.

The finding of the Court of Appeals that the employees "could not have committed the crimes without
the consent, [abetment], permission, or participation of the owners of Bicol Gas"18 is a sweeping
speculation especially since, as demonstrated above, what was involved was just one Petron Gasul
tank found in a truck filled with Bicol Gas tanks. Although the KPE manager heard petitioner Llona
say that he was going to consult the owners of Bicol Gas regarding the offer to swap additional
captured cylinders, no indication was given as to which Bicol Gas stockholders Llona consulted. It
would be unfair to charge all the stockholders involved, some of whom were proved to be
minors.19 No evidence was presented establishing the names of the stockholders who were charged
with running the operations of Bicol Gas. The complaint even failed to allege who among the
stockholders sat in the board of directors of the company or served as its officers.

The Court of Appeals of course specifically mentioned petitioner stockholder Manuel C. Espiritu, Jr.
as the registered owner of the truck that the KPE manager brought to the police for investigation
because that truck carried a tank of Petron Gasul. But the act that R.A. 623 punishes is the unlawful
filling up of registered tanks of another. It does not punish the act of transporting such tanks. And the
complaint did not allege that the truck owner connived with those responsible for filling up that Gasul
tank with Bicol Gas LPG.

WHEREFORE, the Court REVERSES and SETS ASIDE the Decision of the Court of Appeals in CA-
G.R. SP 87711 dated October 17, 2005 as well as its Resolution dated January 6, 2006, the
Resolutions of the Secretary of Justice dated March 11, 2004 and August 31, 2004, and the Order of
the Office of the Regional State Prosecutor, Region V, dated February 19, 2003. The Court
REINSTATES the Resolution of the Office of the Provincial Prosecutor of Sorsogon in I.S. 2001-
9231 (inadvertently referred in the Resolution itself as I.S. 2001-9234), dated February 26, 2002.
The names of petitioners Manuel C. Espiritu, Jr., Freida F. Espititu, Carlo F. Espiritu, Rafael F.
Espiritu, Rolando M. Mirabuna, Hermilyn A. Mirabuna, Kim Roland A. Mirabuna, Kaye Ann A.
Mirabuna, Ken Ryan A. Mirabuna, Juanito P. De Castro, Geronima A. Almonite and Manuel C. Dee
are ORDERED excluded from the charge.

SO ORDERED.

ROBERTO A. ABAD
Associate Justice

WE CONCUR:

ANTONIO T. CARPIO
Associate Justice

TERESITA J. LEONARDO-DE CASTRO ARTURO D. BRION

Associate Justice Associate Justice

MARIANO C. DEL CASTILLO

Associate Justice

ATTESTATION

I attest that the conclusions in the above decision were reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.

ANTONIO T. CARPIO
Associate Justice
Chairperson, Second Division
 CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution and the Division Chairperson’s Attestation, it is
hereby certified that the conclusions in the above Decision were reached in consultation before the
case was assigned to the writer of the opinion of the Court’s Division.

REYNATO S. PUNO
Chief Justice

Footnotes

1 The LPG cylinders and the trademark "Gasul" are registered under the name of Petron in
the Intellectual Property Office under Registration Nos. 142, 147, 57945 and 61920. CA rollo,
pp. 52-57.

2 As shown by a dealership agreement. Id. at 60-71.

3Docketed as I.S. 2001-9231 but was inadvertently referred to in subsequent documents

and proceedings as I.S. 2001-9234.

4 Docketed as CA-G.R. SP 87711.

5CA rollo, pp. 371-399. Penned by Associate Justice Renato C. Dacudao and concurred in
by Associate Justices Rodrigo V. Cosico and Lucas P. Bersamin (now a member of this
Court).

6 Under Rule 45 of the Rules of Court.

7Cavile v. Heirs of Cavile, 448 Phil. 302, 311 (2003); MC Engineering, Inc. v. National Labor
Relations Commission, 412 Phil. 614, 622-623 (2001).

8 San Miguel Corporation v. Aballa, G.R. No. 149011, June 28, 2005, 461 SCRA 392, 412.

9 CA rollo, p. 43.

See Toyota Motor Phils. Corp. Workers Association v. National Labor Relations
10

Commission, G.R. Nos. 158786 & 158789, October 19, 2007, 537 SCRA 171, 199.

11 Rollo, p. 54.

12Sec. 1. Persons engaged or licensed to engage in the manufacture, bottling, or selling of

soda water, mineral or aerated waters, cider, milk, cream or other lawful beverages in
bottles, boxes, casks, kegs, or barrels, and other similar containers, or in the manufacture,
compressing or selling of gases such as oxygen, acetylene, nitrogen, carbon dioxide,
ammonia, hydrogen, chloride, helium, sulphur dioxide, butane, propane, freon, methyl
chloride or similar gases contained in steel cylinders, tanks, flasks, accumulators or similar
containers, with their names or the names of their principals of products, or other marks of
 ownership stamped or marked thereon, may register with the Philippines Patent Office a
description of the names or marks, and the purpose for which the containers so marked are
used by them, under the same conditions, rules, and regulations, made applicable by law or
regulation to the issuance of trademarks.

Sec. 2. It shall be unlawful for any person, without the written consent of the
manufacturer, bottler, or seller, who has successfully registered the marks of
ownership in accordance with the provisions of the next preceding section, to fill such
bottles, boxes, kegs, barrels, steel cylinders, tanks, flasks, accumulators, or other
similar containers so marked or stamped, for the purpose of sale, or to sell, dispose
of, buy or traffic in, or wantonly destroy the same, whether filled or not to use the
same for drinking vessels or glasses or drain pipes, foundation pipes, for any other
purpose than that registered by the manufacturer, bottler or seller. Any violation of
this section shall be punished by a fine of not more than one thousand pesos or
imprisonment of not more than one year or both.

13 Sec. 170. Penalties. – Independent of the civil and administrative sanctions imposed by
law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging
from Fifty thousand pesos (₱50,000) to Two hundred thousand pesos (₱200,000), shall be
imposed on any person who is found guilty of committing any of the acts mentioned in
Section 155, Section 168 and Subsection 169.1.

14 McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 439 (2004).

15Ching v. Secretary of Justice, G.R. No. 164317, February 6, 2006, 481 SCRA 609, 635-
636.

16 CA rollo, pp. 396-397.

17 Section 23, P.D. 902-A.

18 CA rollo, p. 397.

19As shown by certified true copies of birth certificates of Carlo F. Espiritu, Rafael F. Espiritu,
Kim Roland A. Mirabuna, Kaye Ann A. Mirabuna, and Ken Ryan A. Mirabuna. Rollo, pp. 492-
496.

G.R. No. 169504 March 3, 2010

COFFEE PARTNERS, INC., Petitioner,

vs.
SAN FRANCISCO COFFEE & ROASTERY, INC., Respondent.

DECISION

CARPIO, J.:

The Case

This is a petition for review1 of the 15 June 2005 Decision2 and the 1 September 2005 Resolution3 of
the Court of Appeals in CA-G.R. SP No. 80396. In its 15 June 2005 Decision, the Court of Appeals
set aside the 22 October 2003 Decision4 of the Office of the Director General-Intellectual Property
Office and reinstated the 14 August 2002 Decision5 of the Bureau of Legal Affairs-Intellectual
Property Office. In its 1 September 2005 Resolution, the Court of Appeals denied petitioner’s motion
for reconsideration and respondent’s motion for partial reconsideration.

The Facts

Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and
maintaining coffee shops in the country. It registered with the Securities and Exchange Commission
(SEC) in January 2001. It has a franchise agreement6 with Coffee Partners Ltd. (CPL), a business
entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to
operate coffee shops in the Philippines using trademarks designed by CPL such as "SAN
FRANCISCO COFFEE."

Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered
with the SEC in May 1995. It registered the business name "SAN FRANCISCO COFFEE &
ROASTERY, INC." with the Department of Trade and Industry (DTI) in June 1995. Respondent had
since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willy’s, and
other coffee companies.

In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company
name Boyd Coffee Company Philippines, Inc. (BCCPI). BCCPI engaged in the processing, roasting,
and wholesale selling of coffee. Respondent later embarked on a project study of setting up coffee
carts in malls and other commercial establishments in Metro Manila.

In June 2001, respondent discovered that petitioner was about to open a coffee shop under the
name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioner’s
shop caused confusion in the minds of the public as it bore a similar name and it also engaged in the
business of selling coffee. Respondent sent a letter to petitioner demanding that the latter stop using
the name "SAN FRANCISCO COFFEE." Respondent also filed a complaint with the Bureau of Legal
Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition with claims
for damages.

In its answer, petitioner denied the allegations in the complaint. Petitioner alleged it filed with the
Intellectual Property Office (IPO) applications for registration of the mark "SAN FRANCISCO
COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000. Petitioner maintained its mark
could not be confused with respondent’s trade name because of the notable distinctions in their
appearances. Petitioner argued respondent stopped operating under the trade name "SAN
FRANCISCO COFFEE" when it formed a joint venture with Boyd Coffee USA. Petitioner contended
respondent did not cite any specific acts that would lead one to believe petitioner had, through
fraudulent means, passed off its mark as that of respondent, or that it had diverted business away
from respondent.

Mr. David Puyat, president of petitioner corporation, testified that the coffee shop in Libis, Quezon
City opened sometime in June 2001 and that another coffee shop would be opened in Glorietta Mall,
Makati City. He stated that the coffee shop was set up pursuant to a franchise agreement executed
in January 2001 with CPL, a British Virgin Island Company owned by Robert Boxwell. Mr. Puyat said
he became involved in the business when one Arthur Gindang invited him to invest in a coffee shop
and introduced him to Mr. Boxwell. For his part, Mr. Boxwell attested that the coffee shop "SAN
FRANCISCO COFFEE" has branches in Malaysia and Singapore. He added that he formed CPL in
1997 along with two other colleagues, Shirley Miller John and Leah Warren, who were former
managers of Starbucks Coffee Shop in the United States. He said they decided to invest in a similar
venture and adopted the name "SAN FRANCISCO COFFEE" from the famous city in California
where he and his former colleagues once lived and where special coffee roasts came from.

The Ruling of the Bureau of Legal Affairs-Intellectual Property Office

In its 14 August 2002 Decision, the BLA-IPO held that petitioner’s trademark infringed on
respondent’s trade name. It ruled that the right to the exclusive use of a trade name with freedom
from infringement by similarity is determined from priority of adoption. Since respondent registered
its business name with the DTI in 1995 and petitioner registered its trademark with the IPO in 2001
in the Philippines and in 1997 in other countries, then respondent must be protected from
infringement of its trade name.

The BLA-IPO also held that respondent did not abandon the use of its trade name as substantial
evidence indicated respondent continuously used its trade name in connection with the purpose for
which it was organized. It found that although respondent was no longer involved in blending,
roasting, and distribution of coffee because of the creation of BCCPI, it continued making plans and
doing research on the retailing of coffee and the setting up of coffee carts. The BLA-IPO ruled that
for abandonment to exist, the disuse must be permanent, intentional, and voluntary.

The BLA-IPO held that petitioner’s use of the trademark "SAN FRANCISCO COFFEE" will likely
cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial
impression of the words "SAN FRANCISCO" which is the dominant portion of respondent’s trade
name and petitioner’s trademark. It held that no significant difference resulted even with a diamond-
shaped figure with a cup in the center in petitioner's trademark because greater weight is given to
words – the medium consumers use in ordering coffee products.

On the issue of unfair competition, the BLA-IPO absolved petitioner from liability. It found that
petitioner adopted the trademark "SAN FRANCISCO COFFEE" because of the authority granted to it
by its franchisor. The BLA-IPO held there was no evidence of intent to defraud on the part of
petitioner.

The BLA-IPO also dismissed respondent’s claim of actual damages because its claims of profit loss
were based on mere assumptions as respondent had not even started the operation of its coffee
carts. The BLA-IPO likewise dismissed respondent’s claim of moral damages, but granted its claim
of attorney’s fees.

Both parties moved for partial reconsideration. Petitioner protested the finding of infringement, while
respondent questioned the denial of actual damages. The BLA-IPO denied the parties’ partial motion
for reconsideration. The parties appealed to the Office of the Director General-Intellectual Property
Office (ODG-IPO).

The Ruling of the Office of the Director General-

Intellectual Property Office

In its 22 October 2003 Decision, the ODG-IPO reversed the BLA-IPO. It ruled that petitioner’s use of
the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name. The ODG-
IPO found that respondent had stopped using its trade name after it entered into a joint venture with
Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it
opened its first coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade
name in good faith and a prior user who had stopped using such trade name, it would be inequitable
to rule in favor of the latter.
 The Ruling of the Court of Appeals

In its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003 decision of the
ODG-IPO in so far as it ruled that there was no infringement. It reinstated the 14 August 2002
decision of the BLA-IPO finding infringement. The appellate court denied respondent’s claim for
actual damages and retained the award of attorney’s fees. In its 1 September 2005 Resolution, the
Court of Appeals denied petitioner’s motion for reconsideration and respondent’s motion for partial
reconsideration.

The Issue

The sole issue is whether petitioner’s use of the trademark "SAN FRANCISCO COFFEE" constitutes
infringement of respondent’s trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if
the trade name is not registered with the Intellectual Property Office (IPO).

The Court’s Ruling

The petition has no merit.

Petitioner contends that when a trade name is not registered, a suit for infringement is not available.
Petitioner alleges respondent has abandoned its trade name. Petitioner points out that respondent’s
registration of its business name with the DTI expired on 16 June 2000 and it was only in 2001 when
petitioner opened a coffee shop in Libis, Quezon City that respondent made a belated effort to seek
the renewal of its business name registration. Petitioner stresses respondent’s failure to continue the
use of its trade name to designate its goods negates any allegation of infringement. Petitioner claims
no confusion is likely to occur between its trademark and respondent’s trade name because of a
wide divergence in the channels of trade, petitioner serving ready-made coffee while respondent is
in wholesale blending, roasting, and distribution of coffee. Lastly, petitioner avers the proper noun
"San Francisco" and the generic word "coffee" are not capable of exclusive appropriation.

Respondent maintains the law protects trade names from infringement even if they are not
registered with the IPO. Respondent claims Republic Act No. 8293 (RA 8293)7 dispensed with
registration of a trade name with the IPO as a requirement for the filing of an action for infringement.
All that is required is that the trade name is previously used in trade or commerce in the Philippines.
Respondent insists it never abandoned the use of its trade name as evidenced by its letter to
petitioner demanding immediate discontinuation of the use of its trademark and by the filing of the
infringement case. Respondent alleges petitioner’s trademark is confusingly similar to respondent’s
trade name. Respondent stresses ordinarily prudent consumers are likely to be misled about the
source, affiliation, or sponsorship of petitioner’s coffee.

As to the issue of alleged abandonment of trade name by respondent, the BLA-IPO found that
respondent continued to make plans and do research on the retailing of coffee and the
establishment of coffee carts, which negates abandonment. This finding was upheld by the Court of
Appeals, which further found that while respondent stopped using its trade name in its business of
selling coffee, it continued to import and sell coffee machines, one of the services for which the use
of the business name has been registered. The binding effect of the factual findings of the Court of
Appeals on this Court applies with greater force when both the quasi-judicial body or tribunal like the
BLA-IPO and the Court of Appeals are in complete agreement on their factual findings. It is also
settled that absent any circumstance requiring the overturning of the factual conclusions made by
the quasi-judicial body or tribunal, particularly if affirmed by the Court of Appeals, the Court
necessarily upholds such findings of fact.8
Coming now to the main issue, in Prosource International, Inc. v. Horphag Research Management
SA,9 this Court laid down what constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended
to be used upon or in connection with such goods, business, or services;

(4) The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to
the source or origin of such goods or services or the identity of such business; and

(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.10 (Emphasis supplied)

Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed
by its owner against the owner of an infringing trademark. All that is required is that the trade name
is previously used in trade or commerce in the Philippines.11

Section 22 of Republic Act No. 166,12 as amended, required registration of a trade name as a
condition for the institution of an infringement suit, to wit:

Sec. 22. Infringement, what constitutes. – Any person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark or trade
name in connection with the sale, offering for sale, or advertising of any goods, business or services
on or in connection with which such use is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy, or colorably imitate any such mark or trade name and
apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in connection with such
goods, business, or services, shall be liable to a civil action by the registrant for any or all of the
remedies herein provided. (Emphasis supplied)

However, RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected,
even prior to or without registration with the IPO, against any unlawful act including any subsequent
use of the trade name by a third party, whether as a trade name or a trademark likely to mislead the
public. Thus:
1avvph!1

SEC. 165.2 (a) Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or without registration,
against any unlawful act committed by third parties.
(b) In particular, any subsequent use of a trade name by a third party, whether as a trade name or a
mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public,
shall be deemed unlawful. (Emphasis supplied)

It is the likelihood of confusion that is the gravamen of infringement. But there is no absolute
standard for likelihood of confusion. Only the particular, and sometimes peculiar, circumstances of
each case can determine its existence. Thus, in infringement cases, precedents must be evaluated
in the light of each particular case.13

In determining similarity and likelihood of confusion, our jurisprudence has developed two tests: the
dominancy test and the holistic test. 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 occurs. Exact duplication or
imitation is not required. The question is whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or to deceive consumers.14

In contrast, the holistic test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity.15 The discerning
eye of the observer must focus not only on the predominant words but also on the other features
appearing on both marks in order that the observer may draw his conclusion whether one is
confusingly similar to the other.16

Applying either the dominancy test or the holistic test, petitioner’s "SAN FRANCISCO COFFEE"
trademark is a clear infringement of respondent’s "SAN FRANCISCO COFFEE & ROASTERY, INC."
trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant
features of respondent’s trade name. Petitioner and respondent are engaged in the same business
of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the
business of one corporation is the same or substantially the same as that of another corporation. In
this case, the consuming public will likely be confused as to the source of the coffee being sold at
petitioner’s coffee shops. Petitioner’s argument that "San Francisco" is just a proper name referring
to the famous city in California and that "coffee" is simply a generic term, is untenable. Respondent
has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC." since the registration of the business name with the DTI in 1995. Thus,
respondent’s use of its trade name from then on must be free from any infringement by similarity. Of
course, this does not mean that respondent has exclusive use of the geographic word "San
Francisco" or the generic word "coffee." Geographic or generic words are not, per se, subject to
exclusive appropriation. It is only the combination of the words "SAN FRANCISCO COFFEE," which
is respondent’s trade name in its coffee business, that is protected against infringement on matters
related to the coffee business to avoid confusing or deceiving the public.

In Philips Export B.V. v. Court of Appeals,17 this Court held that a corporation has an exclusive right
to the use of its name. The right proceeds from the theory that it is a fraud on the corporation which
has acquired a right to that name and perhaps carried on its business thereunder, that another
should attempt to use the same name, or the same name with a slight variation in such a way as to
induce persons to deal with it in the belief that they are dealing with the corporation which has given
a reputation to the name.18

This Court is not just a court of law, but also of equity. We cannot allow petitioner to profit by the
name and reputation so far built by respondent without running afoul of the basic demands of fair
play. Not only the law but equity considerations hold petitioner liable for infringement of respondent’s
trade name.
The Court of Appeals was correct in setting aside the 22 October 2003 Decision of the Office of the
Director General-Intellectual Property Office and in reinstating the 14 August 2002 Decision of the
Bureau of Legal Affairs-Intellectual Property Office.

WHEREFORE, we DENY the petition for review. We AFFIRM the 15 June 2005 Decision and 1
September 2005 Resolution of the Court of Appeals in CA-G.R. SP No. 80396.

Costs against petitioner.

SO ORDERED.

ANTONIO T. CARPIO
Associate Justice

WE CONCUR:

PRESBITERO J. VELASCO, JR.*

Associate Justice

MARIANO C. DEL CASTILLO ROBERTO A. ABAD

Associate Justice Associate Justice

JOSE P. PEREZ
Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

ANTONIO T. CARPIO
Associate Justice
Chairperson

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, and the Division Chairperson’s Attestation, I
certify that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

REYNATO S. PUNO
Chief Justice

Footnotes

* Designated additional member per Raffle dated 15 February 2010.

 1 Under Rule 45 of the Rules of Court.

2Rollo, pp. 71-98. Penned by Associate Justice Arturo D. Brion, with Associate Justices
Eugenio S. Labitoria and Eliezer R. Delos Santos, concurring.

3 Id. at 100-101.

4 Id. at 195-212.

5 Id. at pp. 149-161.

6 Id. at 128-140.

7 Otherwise known as the Intellectual Property Code. Took effect on 1 January 1998.

8 New City Builders, Inc. v. NLRC, 499 Phil. 207 (2005).

9 G.R. No. 180073, 25 November 2009.

10 Id.

11Philips Export B.V. v. Court of Appeals, G.R. No. 96161, 21 February 1992, 206 SCRA
457.

12 Otherwise known as the Trademark Law. Took effect on 20 June 1947.

Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, 27 June 2006, 493
13

SCRA 333.

14 Id.

15 Id.

16 Prosource International, Inc. v. Horphag Research Management SA, supra note 9.

17 Supra note 11.

G.R. No. 172276 August 8, 2010

SOCIETE DES PRODUITS NESTLE, S.A., Petitioner,

vs.
MARTIN T. DY, JR., Respondent.

DECISION

CARPIO, J.:

The Case
This is a petition for review on certiorari under Rule 45 of the Rules of Court. The petition challenges
the 1 September 2005 Decision and 4 April 2006 Resolution of the Court of Appeals in CA-G.R. CV
No. 62730, finding respondent Martin T. Dy, Jr. (Dy, Jr.) not liable for trademark infringement. The
Court of Appeals reversed the 18 September 1998 Decision of the Regional Trial Court (RTC),
Judicial Region 7, Branch 9, Cebu City, in Civil Case No. CEB-19345.

The Facts

Petitioner Societe Des Produits Nestle, S.A. (Nestle) is a foreign corporation organized under the
laws of Switzerland. It manufactures food products and beverages. As evidenced by Certificate of
Registration No. R-14621 issued on 7 April 1969 by the then Bureau of Patents, Trademarks and
Technology Transfer, Nestle owns the "NAN" trademark for its line of infant powdered milk products,
consisting of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. NAN is classified under Class 6 — "diatetic
preparations for infant feeding."

Nestle distributes and sells its NAN milk products all over the Philippines. It has been investing
tremendous amounts of resources to train its sales force and to promote the NAN milk products
through advertisements and press releases.

Dy, Jr. owns 5M Enterprises. He imports Sunny Boy powdered milk from Australia and repacks the
powdered milk into three sizes of plastic packs bearing the name "NANNY." The packs weigh 80,
180 and 450 grams and are sold for ₱8.90, ₱17.50 and ₱39.90, respectively. NANNY is is also
classified under Class 6 — "full cream milk for adults in [sic] all ages." Dy, Jr. distributes and sells
the powdered milk in Dumaguete, Negros Oriental, Cagayan de Oro, and parts of Mindanao.

In a letter dated 1 August 1985, Nestle requested Dy, Jr. to refrain from using "NANNY" and to
undertake that he would stop infringing the "NAN" trademark. Dy, Jr. did not act on Nestle’s request.
On 1 March 1990, Nestle filed before the RTC, Judicial Region 7, Branch 31, Dumaguete City, a
complaint against Dy, Jr. for infringement. Dy, Jr. filed a motion to dismiss alleging that the complaint
did not state a cause of action. In its 4 June 1990 order, the trial court dismissed the complaint.
Nestle appealed the 4 June 1990 order to the Court of Appeals. In its 16 February 1993 Resolution,
the Court of Appeals set aside the 4 June 1990 order and remanded the case to the trial court for
further proceedings.

Pursuant to Supreme Court Administrative Order No. 113-95, Nestle filed with the trial court a motion
to transfer the case to the RTC, Judicial Region 7, Branch 9, Cebu City, which was designated as a
special court for intellectual property rights.

The RTC’s Ruling

In its 18 September 1998 Decision, the trial court found Dy, Jr. liable for infringement. The trial court
held:

If determination of infringement shall only be limited on whether or not the mark used would likely
cause confusion or mistake in the minds of the buying public or deceive customers, such in [sic] the
most considered view of this forum would be highly unlikely to happen in the instant case. This is
because upon comparison of the plaintiff’s NAN and defendant’s NANNY, the following features
would reveal the absence of any deceptive tendency in defendant’s NANNY: (1) all NAN products
are contained tin cans [sic], while NANNY are contained in plastic packs; (2) the predominant colors
used in the labels of NAN products are blue and white, while the predominant colors in the plastic
packings of NANNY are blue and green; (3) the labels of NAN products have at the bottom portion
an elliptical shaped figure containing inside it a drawing of nestling birds, which is overlapped by the
trade-name "Nestle", while the plastic packs of NANNY have a drawing of milking cows lazing on a
vast green field, back-dropped with snow covered mountains; (4) the word NAN are [sic] all in large,
formal and conservative-like block letters, while the word NANNY are [sic] all in small and irregular
style of letters with curved ends; and (5) all NAN products are milk formulas intended for use of [sic]
infants, while NANNY is an instant full cream powdered milk intended for use of [sic] adults.

The foregoing has clearly shown that infringement in the instant case cannot be proven with the use
of the "test of dominancy" because the deceptive tendency of the unregistered trademark NANNY is
not apparent from the essential features of the registered trademark NAN.

However, in Esso Standard Eastern, Inc. vs. Court of Appeals, et al. L-29971, Aug. 31, 1982, the
Supreme Court took the occasion of discussing what is implied in the definition of "infringement"
when it stated: "Implicit in this definition is the concept that the goods must be so related that there is
likelihood either of confusion of goods or business. x x x But as to whether trademark infringement
exists depends for the most part upon whether or not the goods are so related that the public may
be, or is actually, deceived and misled that they came from the same maker or manufacturer. For
non-competing goods may be those which, though they are not in actual competition, are so related
to each other that it might reasonably be assumed that they originate from one manufacturer. Non-
competing goods may also be those which, being entirely unrelated, could not reasonably be
assumed to have a common source. In the former case of related goods, confusion of business
could arise out of the use of similar marks; in the latter case of non-related goods, it could not."

Furthermore, in said case the Supreme Court as well discussed on when goods may become so
related for purposes of infringement when it stated: "Goods are related when they belong to the
same class or have same descriptive properties; when they possess the same physical attributes or
essential characteristics with reference to their form, composition, texture or quality. They may also
be related because they serve the same purpose or are sold in grocery stores. x x x

Considering that defendant’s NANNY belongs to the same class as that of plaintiff’s NAN because
both are food products, the defendant’s unregistered trade mark NANNY should be held an
infringement to plaintiff’s registered trademark NAN because defendant’s use of NANNY would imply
that it came from the manufacturer of NAN. Furthermore, since the word "nanny" means a "child’s
nurse," there might result the not so remote probability that defendant’s NANNY may be confused
with infant formula NAN despite the aparent [sic] disparity between the features of the two products.

Dy, Jr. appealed the 18 September 1998 Decision to the Court of Appeals.

The Court of Appeals’ Ruling

In its 1 September 2005 Decision, the Court of Appeals reversed the trial court’s 18 September 1998
Decision and found Dy, Jr. not liable for infringement. The Court of Appeals held:

[T]he trial court appeared to have made a finding that there is no colorable imitation of the registered
mark "NAN" in Dy’s use of "NANNY" for his own milk packs. Yet it did not stop there. It continued on
applying the "concept of related goods."

The Supreme Court utlilized the "concept of related goods" in the said case of Esso Standard
Easter, Inc. versus Court of Appeals, et al. wherein two contending parties used the same trademark
"ESSO" for two different goods, i.e. petroleum products and cigarettes. It rules that there is
infringement of trademark involving two goods bearing the same mark or label, even if the said
goods are non-competing, if and only if they are so related that the public may be, or is actually,
deceived that they originate from the one maker or manufacturer. Since petroleum products and
cigarettes, in kind and nature, flow through different trade channels, and since the possibility of
confusion is unlikely in the general appearances of each mark as a whole, the Court held in this case
that they cannot be so related in the context of infringement.

In applying the concept of related goods in the present case, the trial court haphazardly concluded
that since plaintiff-appellee’s NAN and defendant-appellant’s NANNY belong to the same class
being food products, the unregistered NANNY should be held an infringement of Nestle’s NAN
because "the use of NANNY would imply that it came from the manufacturer of NAN." Said court
went on to elaborate further: "since the word "NANNY" means a "child’s nurse," there might result
the not so remote probability that defendant’s NANNY may be confused with infant formula NAN
despite the aparent (sic) disparity between the features of the two products as discussed above."

The trial court’s application of the doctrine laid down by the Supreme Court in the Esso Standard
case aforementioned and the cases cited therein is quite misplaced. The goods of the two
contending parties in those cases bear similar marks or labels: "Esso" for petroleum products and
cigarettes, "Selecta" for biscuits and milk, "X-7" for soap and perfume, lipstick and nail polish. In the
instant case, two dissimilar marks are involved — plaintiff-appellee’s "NAN" and defendant-
appellant’s "NANNY." Obviously, the concept of related goods cannot be utilized in the instant case
in the same way that it was used in the Esso Standard case.

In the Esso Standard case, the Supreme Court even cautioned judges that in resolving infringement
or trademark cases in the Philippines, particularly in ascertaining whether one trademark is
confusingly similar to or is a colorable imitation of another, precedent must be studied in the light of
the facts of the particular case. Each case must be decided on its own merits. In the more recent
case of Societe Des Produits Nestle S.A. Versus Court of Appeals, the High Court further stressed
that due to the peculiarity of the facts of each infringement case, a judicial forum should not readily
apply a certain test or standard just because of seeming similarities. The entire panoply of elements
constituting the relevant factual landscape should be comprehensively examined.

While it is true that both NAN and NANNY are milk products and that the word "NAN" is contained in
the word "NANNY," there are more glaring dissimilarities in the entirety of their trademarks as they
appear in their respective labels and also in relation to the goods to which they are attached. The
discerning eye of the observer must focus not only on the predominant words but also on the other
features appearing in both labels in order that he may draw his conclusion whether one is
confusingly similar to the other. Even the trial court found these glaring dissimilarities as above-
quoted. We need not add more of these factual dissimilarities.

NAN products, which consist of Pre-NAN, NAN-H-A, NAN-1 and NAN-2, are all infant preparations,
while NANNY is a full cream milk for adults in [sic] all ages. NAN milk products are sold in tin cans
and hence, far expensive than the full cream milk NANNY sold in three (3) plastic packs containing
80, 180 and 450 grams and worth ₱8.90, ₱17.50 and ₱39.90 per milk pack. The labels of NAN
products are of the colors blue and white and have at the bottom portion an elliptical shaped figure
containing inside it a drawing of nestling birds, which is overlapped by the trade-name "Nestle." On
the other hand, the plastic packs NANNY have a drawing of milking cows lazing on a vast green
field, back-dropped with snow-capped mountains and using the predominant colors of blue and
green. The word NAN are [sic] all in large, formal and conservative-like block letters, while the word
NANNY are [sic] all in small and irregular style of letters with curved ends. With these material
differences apparent in the packaging of both milk products, NANNY full cream milk cannot possibly
be an infringement of NAN infant milk. 1avvphi1

Moreover, NAN infant milk preparation is more expensive than NANNY instant full cream milk. The
cheaper price of NANNY would give, at the very first instance, a considerable warning to the
ordinary purchaser on whether he is buying an infant milk or a full cream milk for adults. A cursory
examination of the packaging would confirm the striking differences between the products in
question.

In view of the foregoing, we find that the mark NANNY is not confusingly similar to NAN. Dy
therefore cannot be held liable for infringement.

Nestle filed a motion for reconsideration. In its 4 April 2006 Resolution, the Court of Appeals denied
the motion for lack of merit. Hence, the present petition.

Issue

The issue is whether Dy, Jr. is liable for infringement.

The Court’s Ruling

The petition is meritorious.

Section 22 of Republic Act (R.A.) No. 166, as amended, states:

Infringement, what constitutes. — Any person who shall use, without the consent of the registrant,
any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in
connection with the sale, offering for sale, or advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or services, or identity of such business; or
reproduce, counterfeit, copy or colorably imitate any such mark or trade-name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods, business
or services, shall be liable to a civil action by the registrant for any or all of the remedies herein
provided.

Section 155 of R.A. No. 8293 states:

Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered
mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall
be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the acts stated in Subsection
155.1 or this subsection are committed regardless of whether there is actual sale of goods or
services using the infringing material.
In Prosource International, Inc. v. Horphag Research Management SA, the Court laid down the
elements of infringement under R.A. Nos. 166 and 8293:

In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20 thereof, the
following constitute the elements of trademark infringement:

"(a) A trademark actually used in commerce in the Philippines and registered in the principal
register of the Philippine Patent Office[;]

(b) [It] is used by another person in connection with the sale, offering for sale, or advertising
of any goods, business or services or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or such trademark is reproduced,
counterfeited, copied or colorably imitated by another person and such reproduction,
counterfeit, copy or colorable imitation is applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods,
business or services as to likely cause confusion or mistake or to deceive purchasers[;]

(c) [T]he trademark is used for identical or similar goods[;] and

(d) [S]uch act is done without the consent of the trademark registrant or assignee."

On the other hand, the elements of infringement under R.A. No. 8293 are as follows:

·The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

·The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by

the infringer;

·The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended
to be used upon or in connection with such goods, business or services;

·The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to
the source or origin of such goods or services or the idenity of such business; and

·It is without the consent of the trademark or trade name owner or the assignee thereof.

Among the elements, the element of likelihood of confusion is the gravamen of trademark
infringement. There are two types of confusion in trademark infringement: confusion of goods and
confusion of business. In Sterling Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft, the Court distinguished the two types of confusion:

Callman notes two types of confusion. The first is the confusion of goods "in which event the
ordinarily prudent purchaser would be induced to purchase one product in the belief that he was
purchasing the other." In which case, "defendant’s goods are then bought as the plaintiff’s, and the
poorer quality of the former reflects adversely on the plaintiff’s reputation." The other is the confusion
of business: "Here though the goods of the parties are different, the defendant’s product is such as
might reasonably be assumed to originate with the plaintiff, and the public would then be deceived
either into that belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist."

There are two tests to determine likelihood of confusion: the dominancy test and holistic test. The
dominancy test focuses on the similarity of the main, prevalent or essential features of the competing
trademarks that might cause confusion. Infringement takes place when the competing trademark
contains the essential features of another. Imitation or an effort to imitate is unnecessary. The
question is whether the use of the marks is likely to cause confusion or deceive purchasers.

The holistic test considers the entirety of the marks, including labels and packaging, in determining
confusing similarity. The focus is not only on the predominant words but also on the other features
appearing on the labels.

In cases involving trademark infringement, no set of rules can be deduced. Each case must be
decided on its own merits. Jurisprudential precedents must be studied in the light of the facts of each
particular case. In McDonald’s Corporation v. MacJoy Fastfood Corporation, the Court held:

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to

another, no set rules can be deduced because each case must be decided on its merits. In such
cases, even more than in any other litigation, precedent must be studied in the light of the facts of
the particular case. That is the reason why in trademark cases, jurisprudential precedents should be
applied only to a case if they are specifically in point.

In the light of the facts of the present case, the Court holds that the dominancy test is applicable. In
recent cases with similar factual milieus, the Court has consistently applied the dominancy test.
In Prosource International, Inc., the Court applied the dominancy test in holding that "PCO-
GENOLS" is confusingly similar to "PYCNOGENOL." The Court held:

The trial and appellate courts applied the Dominancy Test in determining whether there was a
confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test, the trial
court found, and the CA affirmed, that:

"Both the word[s] PYCNOGENOL and PCO-GENOLS 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 such as PYCNOGENOL, Exhibits "A" to "A-3." Furthermore, although the letters "Y" between
P and C, "N" between O and C and "S" after L are missing in the [petitioner’s] mark PCO-GENOLS,
nevertheless, 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 product’s name is 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."

We find no cogent reason to depart from such conclusion.

This is not the first time the Court takes into account the aural effects of the words and letters
contained in the marks in determining the issue of confusing similarity. In Marvex Commercial Co.,
Inc. v. Petra Hawpia & Co., et al., cited in McDonald’s Corporation v. L.C. Big Mak Burger, Inc., the
Court held:
"The following random list of confusingly similar sounds in the matter of trademarks, culled from
Nims, Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce our view that "SALONPAS"
and "LIONPAS" are confusingly similar in sound: "Gold Dust" and ""Gold Drop"; "Jantzen" and "Jass-
Sea"; "Silver Flash" and Supper Flash"; "Cascarete" and "Celborite"; "Celluloid" and "Cellonite";
"Chartreuse" and Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and "Meje"; "Kotex" and "Femetex";
"Zuso" and Hoo Hoo." Leon Amdur, in his book "Trade-Mark Law and Practice," pp. 419-421, cities
[sic], as coming within the purview of the idem sonans rule, "Yusea" and "U-C-A," "Steinway Pianos"
and "Steinberg Pianos," and "Seven-Up" and "Lemon-Up." In Co Tiong vs. Director of Patents, this
Court unequivocally said that "Celdura" and "Condura" are confusingly similar in sound; this Court
held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name "Lusolin" is an infringement of the
trademark "Sapolin," as the sound of the two names is almost the same."

In McDonald’s Corporation v. MacJoy Fastfood Corporation, the Court applied the dominancy test in
holding that "MACJOY" is confusingly similar to "MCDONALD’S." The Court held:

While we agree with the CA’s detailed enumeration of differences between the two (2) competing
trademarks herein involved, we believe that the holistic test is not the one applicable in this case, the
dominancy test being the one more suitable. In recent cases with a similar factual milieu as here, the
Court has consistently used and applied the dominancy test in determining confusing similarity or
likelihood of confusion between competing trademarks.

xxxx

Applying the dominancy test to the instant case, the Court finds that herein petitioner’s
"MCDONALD’S" and respondent’s "MACJOY" marks are are confusingly similar with each other that
an ordinary purchaser can conclude an association or relation between the marks.

To begin with, both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as
dominant features. x x x

For sure, it is the prefix "Mc," and abbreviation of "Mac," which visually and aurally catches the
attention of the consuming public. Verily, the word "MACJOY" attracts attention the same way as did
"McDonalds," "MacFries," "McSpaghetti," "McDo," "Big Mac" and the rest of the MCDONALD’S
marks which all use the prefixes Mc and/or Mac.

Besides and most importantly, both trademarks are used in the sale of fastfood products.
Indisputably, the respondent’s trademark application for the "MACJOY & DEVICE" trademark covers
goods under Classes 29 and 30 of the International Classification of Goods, namely, fried chicken,
chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner’s trademark registration for
the MCDONALD’S marks in the Philippines covers goods which are similar if not identical to those
covered by the respondent’s application.

In McDonald’s Corporation v. L.C. Big Mak Burger, Inc., the Court applied the dominancy test in
holding that "BIG MAK" is confusingly similar to "BIG MAC." The Court held:

This Court x x x has relied on the dominancy test rather than the holistic test. The dominancy test
considers the dominant features in the competing marks in determining whether they are confusingly
similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of
the product arising from the adoption of the dominant features of the registered mark, disregarding
minor differences. 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.
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled:

x x x It has been consistently held that the question of infringement of a trademark is to be

determined by the test of dominancy. Similarity in size, form and color, while relevant, is not
conclusive. If the competing trademark contains the main or essential or dominant features of
another, and confusion and 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. (G. Heilman Brewing Co. vs. Independent Brewing Co., 191 F., 489, 495, citing Eagle White
Lead Co. vs. Pflugh (CC) 180 Fed. 579). The question at issue in cases of infringement of
trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes
in the mind of the public or deceive purchasers. (Auburn Rubber Corporation vs. Honover Rubber
Co., 107 F. 2d 588; x x x)

xxxx

The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual
Property Code which defines infringement as the "colorable imitation of a registered mark x x x or
a dominant feature thereof."

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

In Societe Des Produits Nestle, S.A v. Court of Appeals, the Court applied the dominancy test in
holding that "FLAVOR MASTER" is confusingly similar to "MASTER ROAST" and "MASTER
BLEND." The Court held:

While this Court agrees with the Court of Appeals’ detailed enumeration of differences between the
respective trademarks of the two coffee products, this Court cannot agree that totality test is the one
applicable in this case. Rather, this Court believes that the dominancy test is more suitable to this
case in light of its peculiar factual milieu.

Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks
and unfair competition that confusing similarity is to be determined on the basis of visual, aural,
connotative comparisons and overall impressions engendered by the marks in controversy as they
are encountered in the realities of the marketplace. The totality or holistic test only relies on visual
comparison between two trademarks whereas the dominancy test relies not only on the visual but
also on the aural and connotative comparisons and overall impressions between the two
trademarks.

For this reason, this Court agrees with the BPTTT when it applied the test of dominancy and held
that:

From the evidence at hand, it is sufficiently established that the word MASTER is the dominant
feature of opposer’s mark. The word MASTER is printed across the middle portion of the label in
bold letters almost twice the size of the printed word ROAST. Further, the word MASTER has always
been given emphasis in the TV and radio commercials and other advertisements made in promoting
the product. x x x In due time, because of these advertising schemes the mind of the buying public
had come to learn to associate the word MASTER with the opposer’s goods.
x x x. It is the observation of this Office that much of the dominance which the word MASTER has
acquired through Opposer’s advertising schemes is carried over when the same is incorporated into
respondent-applicant’s trademark FLAVOR MASTER. Thus, when one looks at the label bearing the
trademark FLAVOR MASTER (exh. 4) one’s attention is easily attracted to the word MASTER, rather
than to the dissimilarities that exist. Therefore, the possibility of confusion as to the goods which
bear the competing marks or as to the origins thereof is not farfetched.

Applying the dominancy test in the present case, the Court finds that "NANNY" is confusingly similar
to "NAN." "NAN" is the prevalent feature of Nestle’s line of infant powdered milk products. It is written
in bold letters and used in all products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-
2. Clearly, "NANNY" contains the prevalent feature "NAN." The first three letters of "NANNY" are
exactly the same as the letters of "NAN." When "NAN" and "NANNY" are pronounced, the aural
effect is confusingly similar.

In determining the issue of confusing similarity, the Court takes into account the aural effect of the
letters contained in the marks. In Marvex Commercial Company, Inc. v. Petra Hawpia & Company,
the Court held:

It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar in
sound.

Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to the
body with curative powers. "PAS," being merely descriptive, furnishes no indication of the origin of
the article and therefore is open for appropriation by anyone (Ethepa vs. Director of Patents, L-
20635, March 31, 1966) and may properly become the subject of a trademark by combination with
another word or phrase.

xxxx

The following random list of confusingly similar sounds in the matter of trademarks, culled from
Nims, Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce our view that "SALONPAS"
and "LIONPAS" are confusingly similar in sound: "Gold Dust" and ""Gold Drop"; "Jantzen" and "Jass-
Sea"; "Silver Flash" and Supper Flash"; "Cascarete" and "Celborite"; "Celluloid" and "Cellonite";
"Chartreuse" and Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and "Meje"; "Kotex" and "Femetex";
"Zuso" and Hoo Hoo." Leon Amdur, in his book "Trade-Mark Law and Practice," pp. 419-421, cities
[sic], as coming within the purview of the idem sonans rule, "Yusea" and "U-C-A," "Steinway Pianos"
and "Steinberg Pianos," and "Seven-Up" and "Lemon-Up." In Co Tiong vs. Director of Patents, this
Court unequivocally said that "Celdura" and "Condura" are confusingly similar in sound; this Court
held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name "Lusolin" is an infringement of the
trademark "Sapolin," as the sound of the two names is almost the same.

The scope of protection afforded to registered trademark owners is not limited to protection from
infringers with identical goods. The scope of protection extends to protection from infringers with
related goods, and to market areas that are the normal expansion of business of the registered
trademark owners. Section 138 of R.A. No. 8293 states:

Certificates of Registration. — A certificate of registration of a mark shall be prima facie evidence of

validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive
right to use the same in connection with the goods or services and those that are related
thereto specified in the certificate. (Emphasis supplied)
In Mighty Corporation v. E. & J. Gallo Winery, the Court held that, "Non-competing goods may be
those which, though they are not in actual competition, are so related to each other that it can
reasonably be assumed that they originate from one manufacturer, in which case, confusion of
business can arise out of the use of similar marks." In that case, the Court enumerated factors in
determining whether goods are related: (1) classification of the goods; (2) nature of the goods; (3)
descriptive properties, physical attributes or essential characteristics of the goods, with reference to
their form, composition, texture or quality; and (4) style of distribution and marketing of the goods,
including how the goods are displayed and sold.

NANNY and NAN have the same classification, descriptive properties and physical attributes. Both
are classified under Class 6, both are milk products, and both are in powder form. Also, NANNY and
NAN are displayed in the same section of stores — the milk section.

The Court agrees with the lower courts that there are differences between NAN and NANNY: (1)
NAN is intended for infants while NANNY is intended for children past their infancy and for adults;
and (2) NAN is more expensive than NANNY. However, as the registered owner of the "NAN" mark,
Nestle should be free to use its mark on similar products, in different segments of the market, and at
different price levels. In McDonald’s Corporation v. L.C. Big Mak Burger, Inc., the Court held that the
scope of protection afforded to registered trademark owners extends to market areas that are the
normal expansion of business:

xxx

Even respondent’s use of the "Big Mak" mark on non-hamburger food products cannot excuse their
infringement of petitioners’ registered mark, otherwise registered marks will lose their protection
under the law.

The registered trademark owner may use his mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations of the
products for specific segments of the market. The Court has recognized that the registered
trademark owner enjoys protection in product and market areas that are the normal potential
expansion of his business. Thus, the Court has declared:

Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited
to guarding his goods or business from actual market competition with identical or similar products of
the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or
trade-name is likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the field (see 148 ALR
56 et sq; 53 Am. Jur. 576) or is in any way connected with the activities of the infringer; or when it
forestalls the normal potential expansion of his business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577).
(Emphasis supplied)

WHEREFORE, we GRANT the petition. We SET ASIDE the 1 September 2005 Decision and 4 April
2006 Resolution of the Court of Appeals in CA-G.R. CV No. 62730 and REINSTATE the 18
September 1998 Decision of the Regional Trial Court, Judicial Region 7, Branch 9, Cebu City, in
Civil Case No. CEB-19345.

SO ORDERED.

ANTONIO T. CARPIO
Associate Justice
WE CONCUR:

ANTONIO EDUARDO B. NACHURA

Associate Justice

DIOSDADO M. PERALTA ROBERTO A. ABAD

Associate Justice Associate Justice

JOSE C. MENDOZA
Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

ANTONIO T. CARPIO
Associate Justice

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, and the Division Chairperson’s Attestation, I
certify that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

RENATO C. CORONA
Chief Justice

G.R. No. 180677 February 18, 2013

VICTORIO P. DIAZ, Petitioner,

vs.
PEOPLE OF THE PHILIPPINES AND LEVI STRAUSS [PHILS.], INC., Respondents.

DECISION

BERSAMIN, J.:

It is the tendency of the allegedly infringing mark to be confused with the registered trademark that is
the gravamen of the offense of infringement of a registered trademark. The acquittal of the accused
should follow if the allegedly infringing mark is not likely to cause confusion. Thereby, the evidence
of the State does not satisfy the quantum of proof beyond reasonable doubt.

Accused Victorio P. Diaz (Diaz) appeals the resolutions promulgated on July 17, 20071 and
November 22, 2007,2whereby the Court of Appeals (CA), respectively, dismissed his appeal in C.A.-
G.R. CR No. 30133 for the belated filing of the appellant's brief, and denied his motion for
reconsideration. Thereby, the decision rendered on February 13, 2006 in Criminal Case No. 00-0318
and Criminal Case No. 00-0319 by the Regional Trial Court, Branch 255, in Las Pifias City (RTC)
convicting him for two counts of infringement of trademark were affirmed.3
 Antecedents

On February 10, 2000, the Department of Justice filed two informations in the RTC of Las Piñas City,
charging Diaz with violation of Section 155, in relation to Section 170, of Republic Act No. 8293, also
known as the Intellectual Property Code of the Philippines (Intellectual Property Code), to wit:

Criminal Case No. 00-0318

That on or about August 28, 1998, and on dates prior thereto, in Las Pinas City, and within the
jurisdiction of this Honorable Court, the abovenamed accused, with criminal intent to defraud Levi’s
Strauss (Phil.) Inc. (hereinafter referred to as LEVI’S), did then and there, willfully, unlawfully,
feloniously, knowingly and intentionally engaged in commerce by reproducing, counterfeiting,
copying and colorably imitating Levi’s registered trademarks or dominant features thereof such as
the ARCUATE DESIGN, TWO HORSE BRAND, TWO HORSE PATCH, TWO HORSE LABEL WITH
PATTERNED ARCUATE DESIGN, TAB AND COMPOSITE ARCUATE/TAB/TWO HORSE PATCH,
and in connection thereto, sold, offered for sale, manufactured, distributed counterfeit patches and
jeans, including other preparatory steps necessary to carry out the sale of said patches and jeans,
which likely caused confusion, mistake, and /or deceived the general consuming public, without the
consent, permit or authority of the registered owner, LEVI’S, thus depriving and defrauding the latter
of its right to the exclusive use of its trademarks and legitimate trade, to the damage and prejudice of
LEVI’S.

CONTRARY TO LAW.4

Criminal Case No. 00-0319

That on or about August 28, 1998, and on dates prior thereto, in Las Pinas City, and within the
jurisdiction of this Honorable Court, the abovenamed accused, with criminal intent to defraud Levi’s
Strauss (Phil.) Inc. (hereinafter referred to as LEVI’S), did then and there, willfully, unlawfully,
feloniously, knowingly and intentionally engaged in commerce by reproducing, counterfeiting,
copying and colorably imitating Levi’s registered trademarks or dominant features thereof such as
the ARCUATE DESIGN, TWO HORSE BRAND, TWO HORSE PATCH, TWO HORSE LABEL WITH
PATTERNED ARCUATE DESIGN, TAB AND COMPOSITE ARCUATE/TAB/TWO HORSE PATCH,
and in connection thereto, sold, offered for sale, manufactured, distributed counterfeit patches and
jeans, including other preparatory steps necessary to carry out the sale of said patches and jeans,
which likely caused confusion, mistake, and /or deceived the general consuming public, without the
consent, permit or authority of the registered owner, LEVI’S, thus depriving and defrauding the latter
of its right to the exclusive use of its trademarks and legitimate trade, to the damage and prejudice of
LEVI’S.

CONTRARY TO LAW.5

The cases were consolidated for a joint trial. Diaz entered his pleas of not guilty to each information
on June 21, 2000.6

1.

Evidence of the Prosecution

Levi Strauss and Company (Levi’s), a foreign corporation based in the State of Delaware, United
States of America, had been engaged in the apparel business. It is the owner of trademarks and
designs of Levi’s jeans like LEVI’S 501, the arcuate design, the two-horse brand, the two-horse
patch, the two-horse patch with pattern arcuate, and the composite tab arcuate. LEVI’S 501 has the
following registered trademarks, to wit: (1) the leather patch showing two horses pulling a pair of
pants; (2) the arcuate pattern with the inscription "LEVI STRAUSS & CO;" (3) the arcuate design that
refers to "the two parallel stitching curving downward that are being sewn on both back pockets of a
Levi’s Jeans;" and (4) the tab or piece of cloth located on the structural seam of the right back
pocket, upper left side. All these trademarks were registered in the Philippine Patent Office in the
1970’s, 1980’s and early part of 1990’s.7

Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information
that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las
Piñas City, Levi’s Philippines hired a private investigation group to verify the information.
Surveillance and the purchase of jeans from the tailoring shops of Diaz established that the jeans
bought from the tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501. Levi’s
Philippines then sought the assistance of the National Bureau of Investigation (NBI) for purposes of
applying for a search warrant against Diaz to be served at his tailoring shops. The search warrants
were issued in due course. Armed with the search warrants, NBI agents searched the tailoring shops
of Diaz and seized several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed that it did
not authorize the making and selling of the seized jeans; that each of the jeans were mere imitations
of genuine LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate
design, the tab, and the leather patch; and that the seized jeans could be mistaken for original
LEVI’S 501 jeans due to the placement of the arcuate, tab, and two-horse leather patch.8

2.

Evidence of the Defense

On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal
liability.

Diaz stated that he did not manufacture Levi’s jeans, and that he used the label "LS Jeans Tailoring"
in the jeans that he made and sold; that the label "LS Jeans Tailoring" was registered with the
Intellectual Property Office; that his shops received clothes for sewing or repair; that his shops
offered made-to-order jeans, whose styles or designs were done in accordance with instructions of
the customers; that since the time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily recognizable because the
label "LS Jeans Tailoring," and the names of the customers were placed inside the pockets, and
each of the jeans had an "LSJT" red tab; that "LS" stood for "Latest Style;" and that the leather patch
on his jeans had two buffaloes, not two horses.9

Ruling of the RTC

On February 13, 2006, the RTC rendered its decision finding Diaz guilty as charged, disposing thus:

WHEREFORE, premises considered, the Court finds accused Victorio P. Diaz, a.k.a. Vic Diaz,
GUILTY beyond reasonable doubt of twice violating Sec. 155, in relation to Sec. 170, of RA No.
8293, as alleged in the Informations in Criminal Case Nos. 00-0318 & 00-0319, respectively, and
hereby sentences him to suffer in each of the cases the penalty of imprisonment of TWO (2) YEARS
of prision correcional, as minimum, up to FIVE (5) YEARS of prision correcional, as maximum, as
well as pay a fine of ₱50,000.00 for each of the herein cases, with subsidiary imprisonment in case
of insolvency, and to suffer the accessory penalties provided for by law.
Also, accused Diaz is hereby ordered to pay to the private complainant Levi’s Strauss (Phils.), Inc.
the following, thus:

1. ₱50,000.00 in exemplary damages; and

2. ₱222,000.00 as and by way of attorney’s fees.

Costs de officio.

SO ORDERED.10

Ruling of the CA

Diaz appealed, but the CA dismissed the appeal on July 17, 2007 on the ground that Diaz had not
filed his appellant’s brief on time despite being granted his requested several extension periods.

Upon denial of his motion for reconsideration, Diaz is now before the Court to plead for his acquittal.

Issue

Diaz submits that:

THE COURT OF APPEALS VIOLATED EXISTING LAW AND JURISPRUDENCE WHEN IT

APPLIED RIGIDLY THE RULE ON TECHNICALITIES AND OVERRIDE SUBSTANTIAL JUSTICE
BY DISMISSING THE APPEAL OF THE PETITIONER FOR LATE FILING OF APPELLANT’S
BRIEF.11

Ruling

The Court first resolves whether the CA properly dismissed the appeal of Diaz due to the late filing of
his appellant’s brief.

Under Section 7, Rule 44 of the Rules of Court, the appellant is required to file the appellant’s brief in
the CA "within forty-five (45) days from receipt of the notice of the clerk that all the evidence, oral
and documentary, are attached to the record, seven (7) copies of his legibly typewritten,
mimeographed or printed brief, with proof of service of two (2) copies thereof upon the appellee."
Section 1(e) of Rule 50 of the Rules of Court grants to the CA the discretion to dismiss an appeal
either motu proprio or on motion of the appellee should the appellant fail to serve and file the
required number of copies of the appellant’s brief within the time provided by the Rules of Court.12

The usage of the word may in Section 1(e) of Rule 50 indicates that the dismissal of the appeal upon
failure to file the appellant’s brief is not mandatory, but discretionary. Verily, the failure to serve and
file the required number of copies of the appellant’s brief within the time provided by the Rules of
Court does not have the immediate effect of causing the outright dismissal of the appeal. This
means that the discretion to dismiss the appeal on that basis is lodged in the CA, by virtue of which
the CA may still allow the appeal to proceed despite the late filing of the appellant’s brief, when the
circumstances so warrant its liberality. In deciding to dismiss the appeal, then, the CA is bound to
exercise its sound discretion upon taking all the pertinent circumstances into due consideration.

The records reveal that Diaz’s counsel thrice sought an extension of the period to file the appellant’s
brief. The first time was on March 12, 2007, the request being for an extension of 30 days to
commence on March 11, 2007. The CA granted his motion under its resolution of March 21, 2007.
On April 10, 2007, the last day of the 30-day extension, the counsel filed another motion, seeking an
additional 15 days. The CA allowed the counsel until April 25, 2007 to serve and file the appellant’s
brief. On April 25, 2007, the counsel went a third time to the CA with another request for 15 days.
The CA still granted such third motion for extension, giving the counsel until May 10, 2007.
Notwithstanding the liberality of the CA, the counsel did not literally comply, filing the appellant’s brief
only on May 28, 2007, which was the 18th day beyond the third extension period granted.

Under the circumstances, the failure to file the appellant’s brief on time rightly deserved the outright
rejection of the appeal. The acts of his counsel bound Diaz like any other client. It was, of course,
only the counsel who was well aware that the Rules of Court fixed the periods to file pleadings and
equally significant papers like the appellant’s brief with the lofty objective of avoiding delays in the
administration of justice.

Yet, we have before us an appeal in two criminal cases in which the appellant lost his chance to be
heard by the CA on appeal because of the failure of his counsel to serve and file the appellant’s brief
on time despite the grant of several extensions the counsel requested. Diaz was convicted and
sentenced to suffer two indeterminate sentences that would require him to spend time in detention
for each conviction lasting two years, as minimum, to five years, as maximum, and to pay fines
totaling ₱100,000.00 (with subsidiary imprisonment in case of his insolvency). His personal liberty is
now no less at stake. This reality impels us to look beyond the technicality and delve into the merits
of the case to see for ourselves if the appeal, had it not been dismissed, would have been worth the
time of the CA to pass upon. After all, his appellant’s brief had been meanwhile submitted to the CA.
While delving into the merits of the case, we have uncovered a weakness in the evidence of guilt
that cannot be simply ignored and glossed over if we were to be true to our oaths to do justice to
everyone.

We feel that despite the CA being probably right in dismissing the excuses of oversight and
excusable negligence tendered by Diaz’s counsel to justify the belated filing of the appellant’s brief
as unworthy of serious consideration, Diaz should not be made to suffer the dire consequence. Any
accused in his shoes, with his personal liberty as well as his personal fortune at stake, expectedly
but innocently put his fullest trust in his counsel’s abilities and professionalism in the handling of his
appeal. He thereby delivered his fate to the hands of his counsel. Whether or not those hands were
efficient or trained enough for the job of handling the appeal was a learning that he would get only in
the end. Likelier than not, he was probably even unaware of the three times that his counsel had
requested the CA for extensions. If he were now to be left to his unwanted fate, he would surely
suffer despite his innocence. How costly a learning it would be for him! That is where the Court
comes in. It is most important for us as dispensers of justice not to allow the inadvertence or
incompetence of any counsel to result in the outright deprivation of an appellant’s right to life, liberty
or property.13

We do not mind if this softening of judicial attitudes be mislabeled as excessive leniency. With so
much on the line, the people whose futures hang in a balance should not be left to suffer from the
incompetence, mindlessness or lack of professionalism of any member of the Law Profession. They
reasonably expect a just result in every litigation. The courts must give them that just result. That
assurance is the people’s birthright. Thus, we have to undo Diaz’s dire fate.

Even as we now set aside the CA’s rejection of the appeal of Diaz, we will not remand the records to
the CA for its review. In an appeal of criminal convictions, the records are laid open for review. To
avoid further delays, therefore, we take it upon ourselves to review the records and resolve the issue
of guilt, considering that the records are already before us.
Section 155 of R.A. No. 8293 defines the acts that constitute infringement of trademark, viz:

Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered
mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall
be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the acts stated in Subsection
155.1 or this subsection are committed regardless of whether there is actual sale of goods or
services using the infringing material.

The elements of the offense of trademark infringement under the Intellectual Property Code are,
therefore, the following:

1. The trademark being infringed is registered in the Intellectual Property Office;

2. The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;

3. The infringing mark is used in connection with the sale, offering for sale, or advertising of
any goods, business or services; or the infringing mark is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services;

4. The use or application of the infringing mark is likely to cause confusion or mistake or to
deceive purchasers or others as to the goods or services themselves or as to the source or
origin of such goods or services or the identity of such business; and

5. The use or application of the infringing mark is without the consent of the trademark owner
or the assignee thereof.14

As can be seen, the likelihood of confusion is the gravamen of the offense of trademark
infringement.15 There are two tests to determine likelihood of confusion, namely: the dominancy test,
and the holistic test. The contrasting concept of these tests was explained in Societes Des Produits
Nestle, S.A. v. Dy, Jr., thus:

x x x. The dominancy test focuses on the similarity of the main, prevalent or essential features of the
competing trademarks that might cause confusion. Infringement takes place when the competing
trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary.
The question is whether the use of the marks is likely to cause confusion or deceive purchasers.
The holistic test considers the entirety of the marks, including labels and packaging, in determining
confusing similarity. The focus is not only on the predominant words but also on the other features
appearing on the labels.16

As to what test should be applied in a trademark infringement case, we said in McDonald’s

Corporation v. Macjoy Fastfood Corporation17 that:

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to

another, no set rules can be deduced because each case must be decided on its merits. In such
cases, even more than in any other litigation, precedent must be studied in the light of the facts of
the particular case. That is the reason why in trademark cases, jurisprudential precedents should be
applied only to a case if they are specifically in point.

The case of Emerald Garment Manufacturing Corporation v. Court of Appeals,18 which involved an
alleged trademark infringement of jeans products, is worth referring to. There, H.D. Lee Co., Inc.
(H.D. Lee), a corporation based in the United States of America, claimed that Emerald Garment’s
trademark of "STYLISTIC MR. LEE" that it used on its jeans products was confusingly similar to the
"LEE" trademark that H.D. Lee used on its own jeans products. Applying the holistic test, the Court
ruled that there was no infringement.

The holistic test is applicable here considering that the herein criminal cases also involved trademark
infringement in relation to jeans products. Accordingly, the jeans trademarks of Levi’s Philippines
and Diaz must be considered as a whole in determining the likelihood of confusion between them.
The maong pants or jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were
very popular in the Philippines. The consuming public knew that the original LEVI’S 501 jeans were
under a foreign brand and quite expensive. Such jeans could be purchased only in malls or
boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diaz’s as
well as not acquired on a "made-to-order" basis. Under the circumstances, the consuming public
could easily discern if the jeans were original or fake LEVI’S 501, or were manufactured by other
brands of jeans. Confusion and deception were remote, for, as the Court has observed in Emerald
Garments:

First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not
your ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong
pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception,
then, is less likely. In Del Monte Corporation v. Court of Appeals, we noted that:

.... Among these, what essentially determines the attitudes of the purchaser, specifically his
inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies
will not exercise as much care as one who buys an expensive watch. As a general rule, an ordinary
buyer does not exercise as much prudence in buying an article for which he pays a few centavos as
he does in purchasing a more valuable thing. Expensive and valuable items are normally bought
only after deliberate, comparative and analytical investigation. But mass products, low priced articles
in wide use, and matters of everyday purchase requiring frequent replacement are bought by the
casual consumer without great care....

Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not
ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is,
therefore, more or less knowledgeable and familiar with his preference and will not easily be
distracted.
Finally, in line with the foregoing discussions, more credit should be given to the "ordinary
purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely unwary
consumer" but is the "ordinarily intelligent buyer" considering the type of product involved.

The definition laid down in Dy Buncio v. Tan Tiao Bok is better suited to the present case. There, the
"ordinary purchaser" was defined as one "accustomed to buy, and therefore to some extent familiar
with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the
deception of some persons in some measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been associated. The test is not found in the
deception, or the possibility of deception, of the person who knows nothing about the design which
has been counterfeited, and who must be indifferent between that and the other. The simulation, in
order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer
who has a need to supply and is familiar with the article that he seeks to purchase.19

Diaz used the trademark "LS JEANS TAILORING" for the jeans he produced and sold in his tailoring
shops. His trademark was visually and aurally different from the trademark "LEVI STRAUSS & CO"
appearing on the patch of original jeans under the trademark LEVI’S 501. The word "LS" could not
be confused as a derivative from "LEVI STRAUSS" by virtue of the "LS" being connected to the word
"TAILORING", thereby openly suggesting that the jeans bearing the trademark "LS JEANS
TAILORING" came or were bought from the tailoring shops of Diaz, not from the malls or boutiques
selling original LEVI’S 501 jeans to the consuming public.

There were other remarkable differences between the two trademarks that the consuming public
would easily perceive. Diaz aptly noted such differences, as follows:

The prosecution also alleged that the accused copied the "two horse design" of the petitioner-
private complainant but the evidence will show that there was no such design in the seized jeans.
Instead, what is shown is "buffalo design." Again, a horse and a buffalo are two different animals
which an ordinary customer can easily distinguish. x x x.

The prosecution further alleged that the red tab was copied by the accused. However, evidence will
show that the red tab used by the private complainant indicates the word "LEVI’S" while that of the
accused indicates the letters "LSJT" which means LS JEANS TAILORING. Again, even an ordinary
customer can distinguish the word LEVI’S from the letters LSJT.

xxxx

In terms of classes of customers and channels of trade, the jeans products of the private
complainant and the accused cater to different classes of customers and flow through the different
channels of trade. The customers of the private complainant are mall goers belonging to class A and
B market group – while that of the accused are those who belong to class D and E market who can
only afford Php 300 for a pair of made-toorder pants.20 x x x.

Moreover, based on the certificate issued by the Intellectual Property Office, "LS JEANS
TAILORING" was a registered trademark of Diaz. He had registered his trademark prior to the filing
of the present cases.21 The Intellectual Property Office would certainly not have allowed the
registration had Diaz’s trademark been confusingly similar with the registered trademark for LEVI’S
501 jeans.

Given the foregoing, it should be plain that there was no likelihood of confusion between the
trademarks involved. Thereby, the evidence of guilt did not satisfy the quantum of proof required for
a criminal conviction, which is proof beyond reasonable doubt. According to Section 2, Rule 133 of
the Rules of Court, proof beyond a reasonable doubt does not mean such a degree of proof as,
excluding possibility of error, produces absolute certainty. Moral certainty only is required, or that
degree of proof which produces conviction in an unprejudiced mind. Consequently, Diaz should be
acquitted of the charges.

WHEREFORE, the Court ACQUITS petitioner VICTORIO P. DIAZ of the crimes of infringement of
trademark charged in Criminal Case No. 00-0318 and Criminal Case No. 00-0319 for failure of the
State to establish his guilt by proof beyond reasonable doubt.

No pronouncement on costs of suit.

SO ORDERED.

LUCAS P. BERSAMIN
Associate Justice

WE CONCUR:

MARIA LOURDES P. A. SERENO

Chief Justice

TERESITA J. LEONARDO-DE CASTRO MARTIN S. VILLARAMA, JR.

Associate Justice Associate Justice

BIENVENIDO L. REYES
Associate Justice

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, I certify that the conclusions in the above
decision had been reached in consultation before the case was assigned to the writer of the opinion
of the Court's Division.

MARIA LOURDES P. A. SERENO

Chief Justice

Footnotes

1Rollo, pp. 29-32; penned by Associate Justice Ramon M. Bato, Jr., with Associate Justice
Andres B. Reyes, Jr. (now Presiding Justice) and Associate Justice Jose C. Mendoza (now a
Member of the Court) concurring.

2 Id. at 34-36.

3 Id. at 37-56.

4 Records, p. 3.
 5 Id. at 9.

6 Id. at 192.

7 Id. at 26-101.

8 Id. at 98-148.

9 TSN, November 11, 2004, pp. 1-30.

10 Rollo, p. 56.

11 Id. at 10-11.

12 Section 1(e), Rule 50, Rules of Court, states:

Section 1. Grounds for dismissal of appeal. – An appeal may be dismissed by the

Court of Appeals, on its own motion or on that of the appellee, on the following
grounds:

xxxx

(e) Failure of the appellant to serve and file the required number of copies of his brief
or memorandum within the time provided by these Rules.

xxxx

13See, e.g., The Government of the Kingdom of Belgium v. Court of Appeals, G.R. No.
164150, April 14, 2008, 551 SCRA 223, 242.

14Societe Des Produits Nestle, S.A. v. Dy, Jr., G.R. No. 172276, August 9, 2010, 627 SCRA
223, 233-234; citing Prosource International, Inc. v. Horphag Research Management SA,
G.R. No. 180073, November 25, 2009, 605 SCRA 523, 530.

15 Societe Des Produits Nestle, S.A. v. Dy, Jr., id.

16 Id. at 235.

17 G.R. No. 166115, February 2, 2007, 514 SCRA 95, 107.

18 G.R. No. 100098, December 29, 1995, 251 SCRA 600.

19 Id. at 616-617.

20 Rollo, pp. 19-20.

21 Records, p. 696.

G.R. No. 194062 June 17, 2013

REPUBLIC GAS CORPORATION, ARNEL U. TY, MARI ANTONETTE N. TY, ORLANDO REYES,
FERRER SUAZO and ALVIN U. TV, Petitioners,
vs.
PETRON CORPORATION, PILIPINAS SHELL PETROLEUM CORPORATION, and SHELL
INTERNATIONAL PETROLEUM COMPANY LIMITED, Respondents.

DECISION

PERALTA, J.:

This resolves the Petition for Review on Certiorari under Rule 45 of the Rules of Court filed by
petitioners seeking the reversal of the Decision1 dated July 2, 2010, and Resolution2 dated October
11, 2010 of the Court of Appeals (CA) in CA-G.R. SP No. 106385.

Stripped of non-essentials, the facts of the case, as summarized by the CA, are as follows:

Petitioners Petron Corporation ("Petron" for brevity) and Pilipinas Shell Petroleum Corporation
("Shell" for brevity) are two of the largest bulk suppliers and producers of LPG in the Philippines.
Petron is the registered owner in the Philippines of the trademarks GASUL and GASUL cylinders
used for its LGP products. It is the sole entity in the Philippines authorized to allow refillers and
distributors to refill, use, sell, and distribute GASUL LPG containers, products and its trademarks.

Pilipinas Shell, on the other hand, is the authorized user in the Philippines of the tradename,
trademarks, symbols or designs of its principal, Shell International Petroleum Company Limited,
including the marks SHELLANE and SHELL device in connection with the production, sale and
distribution of SHELLANE LPGs. It is the only corporation in the Philippines authorized to allow
refillers and distributors to refill, use, sell and distribute SHELLANE LGP containers and products.
Private respondents, on the other hand, are the directors and officers of Republic Gas Corporation
("REGASCO" for brevity), an entity duly licensed to engage in, conduct and carry on, the business of
refilling, buying, selling, distributing and marketing at wholesale and retail of Liquefied Petroleum
Gas ("LPG").

LPG Dealers Associations, such as the Shellane Dealers Association, Inc., Petron Gasul Dealers
Association, Inc. and Totalgaz Dealers Association, received reports that certain entities were
engaged in the unauthorized refilling, sale and distribution of LPG cylinders bearing the registered
tradenames and trademarks of the petitioners. As a consequence, on February 5, 2004, Genesis
Adarlo (hereinafter referred to as Adarlo), on behalf of the aforementioned dealers associations, filed
a letter-complaint in the National Bureau of Investigation ("NBI") regarding the alleged illegal trading
of petroleum products and/or underdelivery or underfilling in the sale of LPG products.

Acting on the said letter-complaint, NBI Senior Agent Marvin E. De Jemil (hereinafter referred to as
"De Jemil") was assigned to verify and confirm the allegations contained in the letter-complaint. An
investigation was thereafter conducted, particularly within the areas of Caloocan, Malabon,
Novaliches and Valenzuela, which showed that several persons and/or establishments, including
REGASCO, were suspected of having violated provisions of Batas Pambansa Blg. 33 (B.P. 33). The
surveillance revealed that REGASCO LPG Refilling Plant in Malabon was engaged in the refilling
and sale of LPG cylinders bearing the registered marks of the petitioners without authority from the
latter. Based on its General Information Sheet filed in the Securities and Exchange Commission,
REGASCO’s members of its Board of Directors are: (1) Arnel U. Ty – President, (2) Marie Antoinette
Ty – Treasurer, (3) Orlando Reyes – Corporate Secretary, (4) Ferrer Suazo and (5) Alvin Ty
(hereinafter referred to collectively as private respondents).
De Jemil, with other NBI operatives, then conducted a test-buy operation on February 19, 2004 with
the former and a confidential asset going undercover. They brought with them four (4) empty LPG
cylinders bearing the trademarks of SHELLANE and GASUL and included the same with the
purchase of J&S, a REGASCO’s regular customer. Inside REGASCO’s refilling plant, they witnessed
that REGASCO’s employees carried the empty LPG cylinders to a refilling station and refilled the
LPG empty cylinders. Money was then given as payment for the refilling of the J&S’s empty
cylinders which included the four LPG cylinders brought in by De Jemil and his companion. Cash
Invoice No. 191391 dated February 19, 2004 was issued as evidence for the consideration paid.

After leaving the premises of REGASCO LPG Refilling Plant in Malabon, De Jemil and the other NBI
operatives proceeded to the NBI headquarters for the proper marking of the LPG cylinders. The LPG
cylinders refilled by REGASCO were likewise found later to be underrefilled.

Thus, on March 5, 2004, De Jemil applied for the issuance of search warrants in the Regional Trial
Court, Branch 24, in the City of Manila against the private respondents and/or occupants of
REGASCO LPG Refilling Plant located at Asucena Street, Longos, Malabon, Metro Manila for
alleged violation of Section 2 (c), in relation to Section 4, of B.P. 33, as amended by PD 1865. In his
sworn affidavit attached to the applications for search warrants, Agent De Jemil alleged as follows:

"x x x.

"4. Respondent’s REGASCO LPG Refilling Plant-Malabon is not one of those entities authorized to
refill LPG cylinders bearing the marks of PSPC, Petron and Total Philippines Corporation. A
Certification dated February 6, 2004 confirming such fact, together with its supporting documents,
are attached as Annex "E" hereof.

6. For several days in the month of February 2004, the other NBI operatives and I conducted
surveillance and investigation on respondents’ REGASCO LPG refilling Plant-Malabon. Our
surveillance and investigation revealed that respondents’ REGASCO LPG Refilling Plant-Malabon is
engaged in the refilling and sale of LPG cylinders bearing the marks of Shell International, PSPC
and Petron.

x x x.

8. The confidential asset and I, together with the other operatives of the NBI, put together a test-buy
operation. On February 19, 2004, I, together with the confidential asset, went undercover and
executed our testbuy operation. Both the confidential assets and I brought with us four (4) empty
LPG cylinders branded as Shellane and Gasul. x x x in order to have a successful test buy, we
decided to "ride-on" our purchases with the purchase of Gasul and Shellane LPG by J & S, one of
REGASCO’s regular customers.

9. We proceeded to the location of respondents’ REGASCO LPG Refilling Plant-Malabon and asked
from an employee of REGASCO inside the refilling plant for refill of the empty LPG cylinders that we
have brought along, together with the LPG cylinders brought by J & S. The REGASCO employee,
with some assistance from other employees, carried the empty LPG cylinders to a refilling station
and we witnessed the actual refilling of our empty LPG cylinders.

10. Since the REGASCO employees were under the impression that we were together with J & S,
they made the necessary refilling of our empty LPG cylinders alongside the LPG cylinders brought
by J & S. When we requested for a receipt, the REGASCO employees naturally counted our LPG
cylinders together with the LPG cylinders brought by J & S for refilling. Hence, the amount stated in
Cash Invoice No. 191391 dated February 19, 2004, equivalent to Sixteen Thousand Two Hundred
Eighty-Six and 40/100 (Php16,286.40), necessarily included the amount for the refilling of our four
(4) empty LPG cylinders. x x x.

11. After we accomplished the purchase of the illegally refilled LPG cylinders from respondents’
REGASCO LPG Refilling Plant-Malabon, we left its premises bringing with us the said LPG
cylinders. Immediately, we proceeded to our headquarters and made the proper markings of the
illegally refilled LPG cylinders purchased from respondents’ REGASCO LPG Refilling Plant-Malabon
by indicating therein where and when they were purchased. Since REGASCO is not an authorized
refiller, the four (4) LPG cylinders illegally refilled by respondents’ REGASCO LPG Refilling Plant-
Malabon, were without any seals, and when weighed, were underrefilled. Photographs of the LPG
cylinders illegally refilled from respondents’ REGASCO LPG Refilling Plant-Malabon are attached as
Annex "G" hereof. x x x."

After conducting a personal examination under oath of Agent De Jemil and his witness, Joel Cruz,
and upon reviewing their sworn affidavits and other attached documents, Judge Antonio M. Eugenio,
Presiding Judge of the RTC, Branch 24, in the City of Manila found probable cause and
correspondingly issued Search Warrants Nos. 04-5049 and 04-5050.

Upon the issuance of the said search warrants, Special Investigator Edgardo C. Kawada and other
NBI operatives immediately proceeded to the REGASCO LPG Refilling Station in Malabon and
served the search warrants on the private respondents. After searching the premises of REGASCO,
they were able to seize several empty and filled Shellane and Gasul cylinders as well as other allied
paraphernalia.

Subsequently, on January 28, 2005, the NBI lodged a complaint in the Department of Justice against
the private respondents for alleged violations of Sections 155 and 168 of Republic Act (RA) No.
8293, otherwise known as the Intellectual Property Code of the Philippines.

On January 15, 2006, Assistant City Prosecutor Armando C. Velasco recommended the dismissal of
the complaint. The prosecutor found that there was no proof introduced by the petitioners that would
show that private respondent REGASCO was engaged in selling petitioner’s products or that it
imitated and reproduced the registered trademarks of the petitioners. He further held that he saw no
deception on the part of REGASCO in the conduct of its business of refilling and marketing LPG.
The Resolution issued by Assistant City Prosecutor Velasco reads as follows in its dispositive
portion:

"WHEREFORE, foregoing considered, the undersigned finds the evidence against the respondents
to be insufficient to form a well-founded belief that they have probably committed violations of
Republic Act No. 9293. The DISMISSAL of this case is hereby respectfully recommended for
insufficiency of evidence."

On appeal, the Secretary of the Department of Justice affirmed the prosecutor’s dismissal of the
complaint in a Resolution dated September 18, 2008, reasoning therein that:

"x x x, the empty Shellane and Gasul LPG cylinders were brought by the NBI agent specifically for
refilling. Refilling the same empty cylinders is by no means an offense in itself – it being the
legitimate business of Regasco to engage in the refilling and marketing of liquefied petroleum gas. In
other words, the empty cylinders were merely filled by the employees of Regasco because they
were brought precisely for that purpose. They did not pass off the goods as those of complainants’
as no other act was done other than to refill them in the normal course of its business.
"In some instances, the empty cylinders were merely swapped by customers for those which are
already filled. In this case, the end-users know fully well that the contents of their cylinders are not
those produced by complainants. And the reason is quite simple – it is an independent refilling
station.

"At any rate, it is settled doctrine that a corporation has a personality separate and distinct from its
stockholders as in the case of herein respondents. To sustain the present allegations, the acts
complained of must be shown to have been committed by respondents in their individual capacity by
clear and convincing evidence. There being none, the complaint must necessarily fail. As it were,
some of the respondents are even gainfully employed in other business pursuits. x x x."3

Dispensing with the filing of a motion for reconsideration, respondents sought recourse to the CA
through a petition for certiorari.

In a Decision dated July 2, 2010, the CA granted respondents’ certiorari petition. The fallo states:

WHEREFORE, in view of the foregoing premises, the petition filed in this case is hereby GRANTED.
The assailed Resolution dated September 18, 2008 of the Department of Justice in I.S. No. 2005-
055 is hereby REVERSED and SET ASIDE.

SO ORDERED.4

Petitioners then filed a motion for reconsideration. However, the same was denied by the CA in a
Resolution dated October 11, 2010.

Accordingly, petitioners filed the instant Petition for Review on Certiorari raising the following issues
for our resolution:

Whether the Petition for Certiorari filed by RESPONDENTS should have been denied outright.

Whether sufficient evidence was presented to prove that the crimes of Trademark Infringement and
Unfair Competition as defined and penalized in Section 155 and Section 168 in relation to Section
170 of Republic Act No. 8293 (The Intellectual Property Code of the Philippines) had been
committed.

Whether probable cause exists to hold INDIVIDUAL PETITIONERS liable for the offense charged.5

Let us discuss the issues in seriatim.

Anent the first issue, the general rule is that a motion for reconsideration is a condition sine qua non
before a certiorari petition may lie, its purpose being to grant an opportunity for the court a quo to
correct any error attributed to it by re-examination of the legal and factual circumstances of the
case.6

However, this rule is not absolute as jurisprudence has laid down several recognized exceptions
permitting a resort to the special civil action for certiorari without first filing a motion for
reconsideration, viz.:

(a) Where the order is a patent nullity, as where the court a quo has no jurisdiction;
 (b) Where the questions raised in the certiorari proceedings have been duly raised and
passed upon by the lower court, or are the same as those raised and passed upon in the
lower court.

(c) Where there is an urgent necessity for the resolution of the question and any further delay
would prejudice the interests of the Government or of the petitioner or the subject matter of
the petition is perishable;

(d) Where, under the circumstances, a motion for reconsideration would be useless;

(e) Where petitioner was deprived of due process and there is extreme urgency for relief;

(f) Where, in a criminal case, relief from an order of arrest is urgent and the granting of such
relief by the trial court is improbable;

(g) Where the proceedings in the lower court are a nullity for lack of due process;

(h) Where the proceeding was ex parte or in which the petitioner had no opportunity to
object; and,

(i) Where the issue raised is one purely of law or public interest is involved.7

In the present case, the filing of a motion for reconsideration may already be dispensed with
considering that the questions raised in this petition are the same as those that have already been
squarely argued and passed upon by the Secretary of Justice in her assailed resolution.

Apropos the second and third issues, the same may be simplified to one core issue: whether
probable cause exists to hold petitioners liable for the crimes of trademark infringement and unfair
competition as defined and penalized under Sections 155 and 168, in relation to Section 170 of
Republic Act (R.A.) No. 8293.

Section 155 of R.A. No. 8293 identifies the acts constituting trademark infringement as follows:

Section 155. Remedies; Infringement. – Any person who shall, without the consent of the owner of
the registered mark:

155.1 Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered
mark of the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

155.2 Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall
be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the acts stated in Subsection
155.1 or this subsection are committed regardless of whether there is actual sale of goods or
services using the infringing material.8
From the foregoing provision, the Court in a very similar case, made it categorically clear that the
mere unauthorized use of a container bearing a registered trademark in connection with the sale,
distribution or advertising of goods or services which is likely to cause confusion, mistake or
deception among the buyers or consumers can be considered as trademark infringement.9

Here, petitioners have actually committed trademark infringement when they refilled, without the
respondents’ consent, the LPG containers bearing the registered marks of the respondents. As
noted by respondents, petitioners’ acts will inevitably confuse the consuming public, since they have
no way of knowing that the gas contained in the LPG tanks bearing respondents’ marks is in reality
not the latter’s LPG product after the same had been illegally refilled. The public will then be led to
believe that petitioners are authorized refillers and distributors of respondents’ LPG products,
considering that they are accepting empty containers of respondents and refilling them for resale.

As to the charge of unfair competition, Section 168.3, in relation to Section 170, of R.A. No. 8293
describes the acts constituting unfair competition as follows:

Section 168. Unfair Competition, Rights, Regulations and Remedies. x x x.

168.3 In particular, and without in any way limiting the scope of protection against unfair competition,
the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise
clothes the goods with such appearance as shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in
selling such goods with a like purpose;

xxxx

Section 170. Penalties. Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty
thousand pesos (₱50,000) to Two hundred thousand pesos (₱200,000), shall be imposed on any
person who is found guilty of committing any of the acts mentioned in Section 155, Section 168 and
Subsection 169.1.

From jurisprudence, unfair competition has been defined as the passing off (or palming off) or
attempting to pass off upon the public of the goods or business of one person as the goods or
business of another with the end and probable effect of deceiving the public.10

Passing off (or palming off) takes place where the defendant, by imitative devices on the general
appearance of the goods, misleads prospective purchasers into buying his merchandise under the
impression that they are buying that of his competitors. Thus, the defendant gives his goods the
general appearance of the goods of his competitor with the intention of deceiving the public that the
goods are those of his competitor.11

In the present case, respondents pertinently observed that by refilling and selling LPG cylinders
bearing their registered marks, petitioners are selling goods by giving them the general appearance
of goods of another manufacturer.
What's more, the CA correctly pointed out that there is a showing that the consumers may be misled
into believing that the LPGs contained in the cylinders bearing the marks "GASUL" and
"SHELLANE" are those goods or products of the petitioners when, in fact, they are not. Obviously,
the mere use of those LPG cylinders bearing the trademarks "GASUL" and "SHELLANE" will give
the LPGs sold by REGASCO the general appearance of the products of the petitioners.

In sum, this Court finds that there is sufficient evidence to warrant the prosecution of petitioners for
trademark infringement and unfair competition, considering that petitioner Republic Gas Corporation,
being a corporation, possesses a personality separate and distinct from the person of its officers,
directors and stockholders.12Petitioners, being corporate officers and/or directors, through whose act,
default or omission the corporation commits a crime, may themselves be individually held
answerable for the crime.13 Veritably, the CA appropriately pointed out that petitioners, being in direct
control and supervision in the management and conduct of the affairs of the corporation, must have
known or are aware that the corporation is engaged in the act of refilling LPG cylinders bearing the
marks of the respondents without authority or consent from the latter which, under the
circumstances, could probably constitute the crimes of trademark infringement and unfair
competition. The existence of the corporate entity does not shield from prosecution the corporate
agent who knowingly and intentionally caused the corporation to commit a crime. Thus, petitioners
cannot hide behind the cloak of the 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.14

WHEREFORE, premises considered, the petition is hereby DENIED and the Decision dated July 2,
2010 and Resolution dated October 11, 2010 of the Court of Appeals in CA-G.R. SP No. 106385 are
AFFIRMED.

SO ORDERED.

DIOSDADO M. PERALTA
Associate Justice

WE CONCUR:

PRESBITERO J. VELASCO, JR.

Associate Justice
Chairperson

ROBERTO A. ABAD JOSE CATRAL MENDOZA

Associate Justice Associate Justice

MARVIC MARIO VICTOR F. LEONEN

Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

PRESBITERO J. VELASCO, JR.

Associate Justice
Chairperson, Third Division
 CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution and the Division Chairperson's Attestation, l
certify that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court's Division.

MARIA LOURDES P. A. SERENO

Chief Justice

Footnotes

1Penned by Associate Justice Isaias Dicdican, with Associate Justices Andres B. Reyes, Jr.
(now Presiding Justice) and Stephen Cruz, concurring; rollo, pp. 7-24.

2 Id. at 26-27.

3 Id. at 8-13.

4 Id. at 24. (Emphasis in the original.)

5 Id. at 38.

6Medado v. Heirs of the Late Antonio Consing, G.R. No. 186720, February 8, 2012, 665
SCRA 534, 547.

7HPS Software and Communication Corporation, et al. v. Philippine Long Distance

Telephone Company (PLDT), et. al., G.R. Nos. 170217 & 170694, December 10, 2012.
(Emphasis supplied.)

8 (Emphasis and underscoring supplied.)

9 Ty v. De Jemil, G.R. No. 182147, December 15, 2010, 638 SCRA 671, 689.

10 Superior Commercial Enterprises, Inc. v. Kunnan Enterprises Ltd. and Sports Concept &

Distributor, Inc., G.R. No. 169974, April 20, 2010, 618 SCRA 531, 555.

11McDonald’s Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger, Inc.,
et al., 480 Phil. 402, 440 (2004).

12Kukan International Corporation v. Hon. Amor Reyes. et. a!., G.R. No. 182729, September
29, 2010.631 SCRA 596,617-618.

13 Ching v. Secretary of Justice, 517 Phil. 151, 178 (2006).

G.R. No. 212705 September 10, 2014

ROBERTO CO, Petitioner,
vs.
KENG HUAN JERRY YEUNG and EMMA YEUNG, Respondents.

RESOLUTION

PERLAS-BERNABE, J.:

Before the Court is a petition for review on certiorari1 assailing the Decision2 dated September 16,
2013 and the Resolution3 dated May 29, 2014 of the Court of Appeals (CA) in CA-G.R. CV No.
93679 which affirmed the Decision4 dated October 27, 2008 of the Regional Trial Court of Quezon
City, Branch 90 (RTC), finding petitioner Roberto Co (Co), among others, guilty of unfair competition
and, thus, liable for damages to respondents Keng Huan Jerry Yeung and Emma Yeung (Sps.
Yeung).

The Facts

At the core of the controversy isthe product Greenstone Medicated Oil Item No. 16 (Greenstone)
which is manufactured by Greenstone Pharmaceutical, a traditional Chinese medicine manufacturing
firm based in Hong Kong and owned by Keng HuanJerry Yeung (Yeung), and is exclusively imported
and distributed in the Philippines by Taka Trading owned by Yeung’s wife, Emma Yeung (Emma).5

On July 27, 2000, Sps. Yeung filed a civil complaint for trademark infringement and unfair
competition before the RTC against Ling Na Lau, her sister Pinky Lau (the Laus), and Cofor
allegedly conspiring in the sale of counterfeit Greenstone products tothe public. In the complaint,
Sps. Yeung averred that on April 24, 2000, Emma’s brother, Jose Ruivivar III (Ruivivar), bought a
bottle of Greenstone from Royal Chinese Drug Store (Royal) in Binondo, Manila, owned by Ling Na
Lau.However, when he used the product, Ruivivar doubted its authenticity considering that it had a
different smell, and the heat it producedwas not as strong as the original Greenstone he frequently
used. Having been informed by Ruivivar of the same, Yeung, together with his son, John Philip, went
to Royal on May 4, 2000 to investigate the matter, and, there, found seven (7) bottles of counterfeit
Greenstone on display for sale. He was then told by Pinky Lau (Pinky) – the store’s proprietor –
thatthe items came from Co of Kiao An Chinese Drug Store. According to Pinky, Co offered the
products on April 28, 2000 as "Tienchi Fong Sap Oil Greenstone" (Tienchi) which she eventually
availed from him. Upon Yeung’s prodding, Pinky wrote a note stating these events.6

In defense, Co denied having supplied counterfeit items to Royal and maintained that the stocks of
Greenstone came only from Taka Trading. Meanwhile, the Laus denied selling Greenstone and
claimed that the seven (7) items of Tienchi were left by an unidentified male person at the counter of
their drug store and that when Yeung came and threatened to report the matter to the authorities,
the items were surrendered to him. As to Pinky’s note, it was claimed that she was merely forced by
Yeung to sign the same.7

The RTC Ruling

In a Decision8 dated October 27, 2008, the RTC ruled in favor of Sps. Yeung, and accordingly
ordered Co and the Laus to pay Sps. Yeung: (a) ₱300,000.00 as temperate damages; (b)
₱200,000.00 as moral damages; (c) ₱100,000.00 as exemplary damages; (d) ₱100,000.00 as
attorney’s fees; and (e) costs of suit.9

It found that the Sps. Yeung had proven by preponderance of evidence that the Laus and Co
committed unfair competition through their conspiracy to sell counterfeit Greenstone products that
resulted in confusion and deception not only to the ordinary purchaser, like Ruivivar, but also to the
public.10 It, however, did not find the Laus and Co liable for trademark infringement as there was no
showing that the trademark "Greenstone" was registered at the time the acts complained of
occurred, i.e., in May 2000.11 Dissatisfied, the Laus and Co appealed to the CA. The CA Ruling

In a Decision12 dated September 16, 2013, the CA affirmed the RTC Decision, pointing out that in the
matter of credibility of witnesses, the findings of the trial court are given great weight and the highest
degree of respect.13Accordingly, it sustained the RTC’s finding of unfair competition, considering that
Sps. Yeung’s evidence preponderated over that of the Laus and Co which was observed to be
shiftyand contradictory. Resultantly, all awards of damages in favor of Sps. Yeung were upheld.14

The Laus and Co respectively moved for reconsideration but were, however, denied in a
Resolution15 dated May 29, 2014, hence, Co filed the instant petition. On the other hand, records are
bereft of any showing that the Laus instituted any appeal before this Court.

The Issue Before the Court

The sole issue for the Court’s resolution is whether or not the CA correctly upheld Co’s liability for
unfair competition.

The Court’s Ruling

The petition is without merit.

The Court’s review of the present case is via a petition for review under Rule 45 of the Rules of
Court,which generally bars any question pertaining to the factual issues raised. The well-settled rule
is that questions of fact are not reviewable in petitionsfor review under Rule 45, subject only to
certain exceptions, among them, the lack of sufficient support in evidence of the trial court’s
judgment or the appellate court’s misapprehension of the adduced facts.16

Co, who mainly interposes a denialof the acts imputed against him, fails to convince the Court that
any of the exceptions exists so as to warrant a review of the findings of facts in this case. Factual
findings of the RTC, when affirmed by the CA, are entitled to great weight and respect by the Court
and are deemed final and conclusive when supported by the evidence on record.17 The Court finds
that both the RTC and the CA fully considered the evidence presented by the parties, and have
adequately explained the legal and evidentiary reasons in concluding that Co committed acts of
unfair competition.

Unfair competition is defined as the passing off (or palming off) or attempting to pass off upon the
public of the goods or business of one person as the goods or business of another with the end and
probable effect of deceiving the public. This takes place where the defendant gives his goods the
general appearance ofthe goods of his competitor with the intention of deceiving the public that the
goods are those of his competitor.18

Here, it has been established that Coconspired with the Laus in the sale/distribution of counterfeit
Greenstone products to the public, which were even packaged in bottles identical to that of the
original, thereby giving rise to the presumption of fraudulent intent.19 In light of the foregoing
definition, it is thus clear that Co, together with the Laus, committed unfair competition, and should,
consequently, beheld liable therefor. To this end, the Court finds the award of ₱300,000.00 as
temperate damages to be appropriate in recognition of the pecuniary loss suffered by Sps. Yeung,
albeit its actual amount cannot, from the nature of the case, as it involves damage to goodwill, be
proved with certainty.20 The awards of moral and exemplary damages, attorney's fees, and costs of
suit are equally sustained for the reasons already fully-explained by the courts a quo in their
decisions.

Although liable for unfair competition, the Court deems it apt to clarify that Co was properly
exculpated from the charge of trademark infringement considering that the registration of the
trademark "Greenstone" – essential as it is in a trademark infringement case – was not proven to
have existed during the time the acts complained of were committed, i.e., in May 2000. In this
relation, the distinctions between suits for trademark infringement and unfair competition prove
useful: (a) the former is the unauthorized use of a trademark, whereas the latter is the passing off of
one's goods as those of another; (b) fraudulent intent is unnecessary in the former, while it is
essential in the latter; and (c) in the former, prior registration of the trademark is a pre-requisite to the
action, while it is not necessary in the latter.21

WHEREFORE, the petition is DENIED. The Decision dated September 16, 2013 and the Resolution
dated May 29, 2014 of the Court of Appeals in CA-G.R. CV No. 93679 are hereby AFFIRMED.

SO ORDERED.

ESTELA M. PERLAS-BERNABE
Associate Justice

WE CONCUR:

PRESBITERO J. VELASCO, JR.*

Associate Justice

TERESITA J. LEONARDO-DE CASTRO**

LUCAS P. BERSAMIN
Associate Justice
Associate Justice
Acting Chairperson

JOSE PORTUGAL PEREZ

Associate Justice

ATTESTATION

I attest that the conclusions in the above Resolution had been reached in consultation before the
case was assigned to the writer of the opinion of the Court's Division.

TERESITA J. LEONARDO-DE CASTRO

Associate Justice
Acting Chairperson, First Division

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, and the Division Acting Chairperson's
Attestation, I certify that the conclusions in the above Resolution had been reached in consultation
before the case was assigned to the writer of the opinion of the Court's Division.

ANTONIO T. CARPIO
Acting Chief Justice
Footnotes

* Designated Acting Member per Special Order No. 1772 dated August 28, 2014.

** Per Special Order No. 1771 dated August 28, 2014.

1
Rollo, pp. 8-33.

2
Id. at 36-55. Penned by Associate Justice Ramon A. Cruz with Associate Justices Noel G.
Tijam and Romeo F. Barza, concurring.

3
Id. at 57-58. Fenned by Associate Justice Ramon A. Cruz with Associate Justices Noel G.
Tijam and Socorro B. Inting, concurring.

4
Id. at 75-78. Penned by Presiding Judge Reynaldo B. Daway.

5
Id. at 37.

6
See id. at 37-38.

7
See id. at 38-39.

8
Id. at 75-78.

9
Id. at 78.

10
Id. at 77.

11
Id.

12
Id. at 36-55.

13
Id. at 47.

14
See id. at 45-53.

15
Id. at 57-58.

16
See Guevarra v. People, G.R. No. 170462, February 5, 2014.

17
See id.

Republic Gas Corporation v. Petron Corporation, G.R. No. 194062, June 17, 2013, 698
18

SCRA 666, 680-681; citations omitted.

Section 6, Rule 18 of A.M. No. 10-3-10-SC, or the "Rules of Procedure for Intellectual
19

Property Rights Cases," provides:

 SEC. 6. Intent to defraud or deceive. – In an action for unfair competition, the intent
to defraud or deceive the public shall be presumed:

a) when the defendant passes off a product as his by using imitative devices, signs
or marks on the general appearance of the goods, which misleads prospective
purchasers into buying his merchandise under the impression that they are buying
that of his competitors;

b) when the defendant makes any false statement in the course of trade to discredit
the goods and business of another; or

c) where the similarity in the appearance of the goods as packed and offered for sale
is so striking.

20
Article 2224 of the Civil Code provides:

Art. 2224. Temperate or moderate damages, which are more than nominal but less
than compensatory damages, may be recovered when the court finds that some
pecuniary loss has been suffered but its amount can not, from the nature of the case,
be proved with certainty.

21
Del Monte Corporation v. Court of Appeals, 260 Phil. 435, 439-440 (1990).

G.R. No. 190706 July 21, 2014

SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND TOWER

CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES HOLDINGS,
INC.), Petitioners,
vs.
ST. FRANCIS DEVELOPMENT CORPORATION, Respondent.

DECISION

PERLAS-BERNABE, J.:

Assailed in this petition for review on certiorari1 is the Decision2 dated December 18, 2009 of the
Court of Appeals (CA) in CA-G.R. SP No. 105425 which affirmed with modification the
Decision3 dated September 3, 2008 of the Intellectual Property Office (IPO) Director-General. The
CA: (a) affirmed the denial of the application for registration of the mark "ST. FRANCIS TOWERS"
filed by petitioners Shang Properties Realty Corporation and Shang Properties, Inc. (petitioners); ( b)
found petitioners to have committed unfair competition for using the marks "THE ST. FRANCIS
TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"; (c) ordered petitioners to cease and
desist from using "ST. FRANCIS" singly or as part of a composite mark; and (d) ordered petitioners
to jointly and severally pay respondent St. Francis Square Development Corporation (respondent) a
fine in the amount of ₱200,000.00.

The Facts

Respondent – a domestic corporation engaged in the real estate business and the developer of the
St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center,
Mandaluyong City, Metro Manila (Ortigas Center)4 – filed separate complaints against petitioners
before the IPO - Bureau of Legal Affairs (BLA), namely: (a) an intellectual property violation case for
unfair competition, false or fraudulent declaration, and damages arising from petitioners’ use and
filing of applications for the registration of the marks "THE ST. FRANCIS TOWERS" and "THE ST.
FRANCIS SHANGRI-LA PLACE," docketed as IPV Case No. 10-2005-00030 (IPV Case); and (b) an
inter partes case opposing the petitioners’ application for registration of the mark "THE ST.
FRANCIS TOWERS" for use relative to the latter’s business, particularly the construction of
permanent buildings or structures for residential and office purposes, docketed as Inter PartesCase
No. 14-2006-00098 (St. Francis Towers IP Case); and (c) an inter partes case opposing the
petitioners’ application for registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE,"
docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP Case).5

In its complaints, respondent alleged that it has used the mark "ST. FRANCIS" to identify its
numerous property development projects located at Ortigas Center, such as the aforementioned St.
Francis Square Commercial Center, a shopping mall called the "St. Francis Square," and a mixed-
use realty project plan thatincludes the St. Francis Towers. Respondent added that as a result of its
continuous use of the mark "ST. FRANCIS" in its real estate business,it has gained substantial
goodwill with the public that consumers and traders closely identify the said mark with its property
development projects. Accordingly, respondent claimed that petitioners could not have the mark
"THE ST. FRANCIS TOWERS" registered in their names, and that petitioners’ use of the marks
"THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" in their own real
estate development projects constitutes unfair competition as well as false or fraudulent declaration.6

Petitioners denied committing unfair competition and false or fraudulent declaration, maintaining that
they could register the mark "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA
PLACE" under their names. They contended that respondent is barred from claiming ownership and
exclusive use ofthe mark "ST. FRANCIS" because the same is geographically descriptive ofthe
goods or services for which it is intended to be used.7 This is because respondent’s as well as
petitioners’ real estate development projects are locatedalong the streets bearing the name "St.
Francis," particularly, St. FrancisAvenue and St. Francis Street (now known as Bank Drive),8 both
within the vicinity of the Ortigas Center.

The BLA Rulings

On December 19, 2006, the BLA rendered a Decision9 in the IPV Case, and found that petitioners
committed acts of unfair competition against respondent by its use of the mark "THE ST. FRANCIS
TOWERS" but not with its use of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." It, however,
refused to award damages in the latter’s favor, considering that there was no evidence presented to
substantiate the amount of damages it suffered due to the former’s acts. The BLA found that "ST.
FRANCIS," being a name of a Catholic saint, may be considered as an arbitrary mark capable of
registration when used in real estate development projects as the name has no direct connection or
significance when used in association with real estate. The BLA neither deemed "ST. FRANCIS" as
a geographically descriptive mark, opiningthat there is no specific lifestyle, aura, quality or
characteristic that the real estate projects possess except for the fact that they are located along St.
Francis Avenueand St. Francis Street (now known as Bank Drive), Ortigas Center. In this light, the
BLA found that while respondent’s use of the mark "ST. FRANCIS" has not attained exclusivity
considering that there are other real estate development projects bearing the name "St. Francis" in
other areas,10 it must nevertheless be pointed out that respondent has been known to be the only
real estate firm to transact business using such name within the Ortigas Center vicinity. Accordingly,
the BLA considered respondent to have gained goodwill and reputation for its mark, which therefore
entitles it to protection against the use by other persons, at least, to those doing business within the
Ortigas Center.11
Meanwhile, on March 28, 2007, the BLA rendered a Decision12 in the St. Francis Towers IP Case,
denying petitioners’ application for registration of the mark "THE ST. FRANCIS TOWERS."
Excluding the word "TOWERS" in view of petitioners’ disclaimer thereof, the BLA ruled that
petitioners cannot register the mark "THE ST. FRANCIS" since it is confusingly similar to
respondent’s"ST. FRANCIS" marks which are registered with the Department of Trade and
Industry(DTI). It held that respondent had a better right over the use of the mark "ST. FRANCIS"
because of the latter’s appropriation and continuous usage thereof for a long period of time.13 A little
over a year after, or on March 31, 2008, the BLA then rendered a Decision14 in the St. Francis
Shangri-La IP Case, allowing petitioners’ application for registration of the mark "THE ST. FRANCIS
SHANGRI-LA PLACE." It found that respondent cannot preclude petitioners from using the mark
"ST. FRANCIS" as the records show that the former’s use thereof had not been attended with
exclusivity. More importantly, it found that petitioners had adequately appended the word "Shangri-
La" to its composite mark to distinguish it from that of respondent, in which case, the former had
removed any likelihood of confusion that may arise from the contemporaneous use by both parties of
the mark "ST. FRANCIS."

Both parties appealed the decision in the IPV Case, while petitioners appealed the decision in the St.
Francis Towers IP Case. Due to the identity of the parties and issues involved, the IPO Director-
General ordered the consolidation of the separate appeals.15 Records are, however, bereft of any
showing that the decision in the St. Francis Shangri-La IP Casewas appealed by either party and,
thus, is deemed to have lapsed into finality.

The IPO Director-General Ruling

In a Decision16 dated September 3, 2008, then IPO Director-General Adrian S. Cristobal, Jr.
affirmedthe rulings of the BLA that: (a) petitioners cannot register the mark "THEST. FRANCIS
TOWERS"; and (b) petitioners are not guilty of unfair competition in its use of the mark "THE ST.
FRANCIS SHANGRI-LA PLACE." However, the IPO DirectorGeneral reversed the BLA’s findingthat
petitioners committed unfair competition through their use of the mark "THE ST. FRANCIS
TOWERS," thus dismissing such charge. He foundthat respondent could not be entitled to the
exclusive use of the mark "ST. FRANCIS," even at least to the locality where it conducts its
business, because it is a geographically descriptive mark, considering that it was petitioners’ as well
as respondent’s intention to use the mark "ST. FRANCIS"in order to identify, or at least associate,
their real estate development projects/businesses with the place or location where they are
situated/conducted, particularly, St. Francis Avenue and St. Francis Street (now known as Bank
Drive), Ortigas Center. He further opined that respondent’s registration of the name "ST. FRANCIS"
with the DTI is irrelevant since what should be controlling are the trademark registrations with the
IPO itself.17 Also, the IPO Director-General held that since the parties are both engaged in the real
estate business, it would be "hard to imagine that a prospective buyer will be enticed to buy, rent or
purchase [petitioners’] goods or servicesbelieving that this is owned by [respondent] simply because
of the name ‘ST. FRANCIS.’ The prospective buyer would necessarily discuss things with the
representatives of [petitioners] and would readily know that this does not belong to [respondent]."18

Disagreeing solely with the IPO Director-General’s ruling on the issue of unfair competition (the bone
of contention in the IPV Case), respondent elevated the sameto the CA.

In contrast, records do not show that either party appealed the IPO Director-General’s ruling on the
issue ofthe registrability of the mark "THE ST. FRANCIS TOWERS" (the bone of contention in the
St. Francis Towers IP Case). As such, said pronouncement isalso deemed to have lapsed into
finality.

The CA Ruling
In a Decision19 dated December 18, 2009, the CA found petitioners guilty of unfair competition not
only withrespect to their use of the mark "THE ST. FRANCIS TOWERS" but alsoof the mark "THE
ST. FRANCIS SHANGRI-LA PLACE." Accordingly, itordered petitioners to cease and desist from
using "ST. FRANCIS" singly or as part of a composite mark, as well as to jointly and severally pay
respondent a fine in the amount of ₱200,000.00.

The CA did not adhere to the IPO Director-General’s finding that the mark "ST. FRANCIS" is
geographically descriptive, and ruled that respondent – which has exclusively and continuously used
the mark "ST. FRANCIS" for more than a decade, and,hence, gained substantial goodwill and
reputation thereby – is very muchentitled to be protected against the indiscriminate usage by other
companies of the trademark/name it has so painstakingly tried to establish and maintain. Further, the
CA stated that even on the assumption that "ST. FRANCIS" was indeed a geographically descriptive
mark, adequateprotection must still begiven to respondent pursuant to the Doctrine of Secondary
Meaning.20

Dissatisfied, petitioners filed the present petition.

The Issue Before the Court

With the decisions in both Inter PartesCases having lapsed into finality, the sole issue thus left for
the Court’s resolution is whether or not petitioners are guilty of unfair competition in using the marks
"THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE."

The Court’s Ruling

The petition is meritorious.

Section 168 of Republic Act No. 8293,21 otherwise known as the "Intellectual Property Code of the
Philippines" (IP Code), provides for the rules and regulations on unfair competition.

To begin, Section 168.1 qualifies who is entitled to protection against unfair competition. It states
that "[a]person who has identified in the mind of the public the goods he manufacturesor deals in, his
business or services from those of others, whether or not a registered mark is employed, has a
property right in the goodwill of the said goods, business or services so identified, which will be
protected inthe same manner as other property rights."

Section 168.2proceeds to the core of the provision, describing forthwith who may be found guilty of
and subject to an action of unfair competition – that is, "[a]ny person who shall employ deception or
any other means contrary to good faith by which he shall pass off the goods manufactured by him or
in which he deals, or his business, or services for those of the one having established such goodwill,
or who shall commit any acts calculated to produce said result x x x."

Without limiting its generality, Section 168.3goes on to specify examples of acts which are
considered as constitutive of unfair competition, viz.:

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:

(a) Any person who is selling his goods and gives them the general appearance of goods of
another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other
 feature of their appearance, which would be likely to influence purchasers to believe that the
goods offered are those of a manufacturer or dealer, other than the actual manufacturer or
dealer, or who otherwise clothes the goods with such appearance as shall deceive the public
and defraud another of his legitimate trade, or any subsequent vendor ofsuch goods or any
agent of any vendor engaged in selling such goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to
induce the false belief that such person is offering the service of another who has identified
such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or who shall
commit any other act contrary to good faith of a nature calculated to discredit the goods,
business or services of another.

Finally, Section 168.4 dwells on a matter of procedure by stating that the "[t]he remedies provided by
Sections 156,22157,23 and 16124 shall apply mutatis mutandis."

The statutory attribution of the unfair competition concept is wellsupplemented by jurisprudential

pronouncements. In the recent case of Republic Gas Corporation v. Petron Corporation,25 the Court
has echoed the classic definition of the term which is "‘the passing off (or palming off) or attempting
to pass off upon the public of the goods or business of one person as the goods or business of
another with the end and probable effect of deceiving the public.’ Passing off (or palming off) takes
place where the defendant, by imitative devices on the general appearance of the goods, misleads
prospective purchasers into buying his merchandise under the impression that they are buying that
of his competitors. [In other words], the defendant gives his goods the general appearance of the
goods of his competitor with the intention of deceiving the publicthat the goods are those of his
competitor."26The "true test" of unfair competition has thus been "whether the acts of the defendant
have the intent of deceiving or are calculated to deceive the ordinary buyer making his purchases
under the ordinary conditions of theparticular trade to which the controversy relates." Based on the
foregoing, it is therefore essential to prove the existence of fraud, or the intent to deceive, actual or
probable,27 determined through a judicious scrutiny of the factual circumstances attendant to a
particular case.28

Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair competition.
The CA’scontrary conclusion was faultily premised on its impression that respondenthad the right to
the exclusive use of the mark "ST. FRANCIS," for which the latter had purportedly established
considerable goodwill. What the CA appears to have disregarded or been mistaken in its
disquisition, however, is the geographicallydescriptive nature of the mark "ST. FRANCIS" which thus
bars its exclusive appropriability, unless a secondary meaning is acquired. As deftly explained in the
U.S. case of Great Southern Bank v. First Southern Bank:29 "[d]escriptive geographical terms are
inthe ‘public domain’ in the sense that every seller should have the right to inform customers of the
geographical origin of his goods. A ‘geographically descriptive term’ is any noun or adjective that
designates geographical location and would tend to be regarded by buyers as descriptive of the
geographic location of origin of the goods or services. A geographically descriptive term can indicate
any geographic location on earth, such as continents, nations, regions, states, cities, streets and
addresses, areas of cities, rivers, and any other location referred to by a recognized name. In order
to determine whether or not the geographic term in question is descriptively used, the following
question is relevant: (1) Is the mark the name of the place or region from which the goods actually
come? If the answer is yes, then the geographic term is probably used in a descriptive sense, and
secondary meaning is required for protection."30
In Burke-Parsons-Bowlby Corporation v. Appalachian Log Homes, Inc.,31 it was held that secondary
meaningis established when a descriptive mark no longer causes the public to associate the goods
with a particular place, but to associate the goods with a particular source.In other words, it is not
enough that a geographically-descriptive mark partakes of the name of a place known generally to
the public to be denied registration as it is also necessary to show that the public would make a
goods/place association – that is, to believe that the goods for which the mark is sought to be
registered originatein that place. To hold sucha belief, it is necessary, of course, that the purchasers
1âwphi 1

perceive the mark as a place name, from which the question of obscurity or remoteness then comes
to the fore.32The more a geographical area is obscure and remote, it becomes less likely that the
public shall have a goods/place association with such area and thus, the mark may not be deemed
as geographically descriptive. However, where there is no genuine issue that the geographical
significance of a term is its primary significanceand where the geographical place is neither obscure
nor remote, a public association of the goods with the place may ordinarily be presumed from the
fact that the applicant’s own goods come from the geographical place named in the mark.33

Under Section 123.234 of the IP Code, specific requirements have to be met in order to conclude that
a geographically-descriptive mark has acquired secondary meaning, to wit: (a) the secondary
meaning must have arisen as a result of substantial commercial use of a mark in the Philippines; (b)
such use must result in the distinctiveness of the mark insofar as the goods or theproducts are
concerned; and (c) proof of substantially exclusive and continuous commercial use in the Philippines
for five (5) years beforethe date on which the claim of distinctiveness is made. Unless secondary
meaning has been established, a geographically-descriptive mark, dueto its general public domain
classification, is perceptibly disqualified from trademark registration. Section 123.1(j) of the IP Code
states this rule as follows:

SEC. 123. Registrability. –

123.1 A mark cannot be registered if it:

xxxx

(j) Consists exclusively of signs orof indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time or production of the goods or rendering
of the services, or other characteristics of the goods or services; (Emphasis supplied) x x x x

Cognizant of the foregoing, the Court disagrees with the CA that petitioners committed unfair
competition due to the mistaken notion that petitioner had established goodwill for the mark "ST.
FRANCIS" precisely because said circumstance, by and of itself, does not equateto fraud under the
parameters of Section 168 of the IP Code as above-cited. In fact, the records are bereft of any
showing thatpetitioners gave their goods/services the general appearance that it was respondent
which was offering the same to the public. Neither did petitioners employ any means to induce the
public towards a false belief that it was offering respondent’s goods/services. Nor did petitioners
make any false statement or commit acts tending to discredit the goods/services offered by
respondent. Accordingly, the element of fraud which is the core of unfair competition had not been
established.

Besides, respondent was not able toprove its compliance with the requirements stated in Section
123.2 of the IP Code to be able to conclude that it acquired a secondary meaning – and, thereby, an
exclusive right – to the "ST. FRANCIS" mark, which is, as the IPO Director-General correctly pointed
out, geographically-descriptive of the location in which its realty developments have been built, i.e.,
St. Francis Avenue and St. Francis Street (now known as "Bank Drive"). Verily, records would reveal
that while it is true that respondent had been using the mark "ST. FRANCIS" since 1992, its use
thereof has been merely confined to its realty projects within the Ortigas Center, as specifically
mentioned.As its use of the mark is clearly limited to a certain locality, it cannot be said thatthere
was substantial commercial use of the same recognizedall throughout the country. Neither is there
any showing of a mental recognition in buyers’ and potential buyers’ minds that products connected
with the mark "ST. FRANCIS" are associated with the same source35 – that is, the enterprise of
respondent. Thus, absent any showing that there exists a clear goods/service-association between
the realty projects located in the aforesaid area and herein respondent as the developer thereof, the
latter cannot besaid to have acquired a secondary meaning as to its use of the "ST. FRANCIS"
mark.

In fact, even on the assumption that secondary meaning had been acquired, said finding only
accords respondents protectional qualification under Section 168.1 of the IP Code as above quoted.
Again, this does not automatically trigger the concurrence of the fraud element required under
Section 168.2 of the IP Code, as exemplified by the acts mentioned in Section 168.3 of the same.
Ultimately, as earlier stated, there can be no unfair competition without this element. In this respect,
considering too the notoriety of the Shangri-La brand in the real estate industry which dilutes
petitioners' propensity to merely ride on respondent's goodwill, the more reasonable conclusion is
that the former's use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS
SHANGRI-LA PLACE" was meant only to identify, or at least associate, their real estate project/s
with its geographical location. As aptly observed by the IPO DirectorGeneral:36

In the case at hand, the parties are business competitors engaged in real estate or property
development, providing goods and services directly connected thereto. The "goods" or "products" or
"services" are real estate and the goods and the services attached to it or directly related to it, like
sale or lease of condominium units, offices, and commercial spaces, such as restaurants, and other
businesses. For these kinds of goods or services there can be no description of its geographical
origin as precise and accurate as that of the name of the place where they are situated. (Emphasis
and underscoring supplied)

Hence, for all the reasons above-discussed, the Court hereby grants the instant petition, and, thus,
exonerates petitioners from the charge of unfair competition in the IPV Case. As the decisions in the
Inter Partes Cases were not appealed, the registrability issues resolved therein are hereby deemed
to have attained finality and, therefore, are now executory.

WHEREFORE, the petition is GRANTED. The Decision dated December 18, 2009 of the Court of
Appeals in CA-G.R. SP No. 105425 is hereby REVERSED and SET ASIDE. Accordingly, the
Decision dated September 3, 2008 of the Intellectual Property Office-Director General is
REINSTATED.

SO ORDERED.

ESTELA M. PERLAS-BERNABE
Associate Justice

WE CONCUR:

ANTONIO T. CARPIO
Associate Justice
Chairperson
 ARTURO D. BRION DIOSDADO M. PERALTA*
Associate Justice Associate Justice

JOSE PORTUGAL PEREZ

Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court's Division.

ANTONIO T. CARPIO
Associate Justice
Chairperson, Second Division

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, and the Division Chairperson's Attestation, I
certify that the conclusions in the above Decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court's Division.

MARIA LOURDES P. A. SERENO

Chief Justice

Footnotes

* Designated Additional Member per Raffle dated July 16, 2014.

1
Rollo, pp. 3-33.

2
Id. at 68-95. Penned by Associate Justice Jane Aurora C. Lantion, with Associate Justices
Mario L. Guariña Ill and Mariflor P. Punzalan Castillo, concurring.

3
Id. at 98-114. Penned by IPO Director-General Adrian S. Cristobal, Jr.

4
Rollo, pp. 69-70.

5
Id. at 99; See also CA rollo, pp. 341-349.

6
See id. at 69-72 and 99-101.

7
See id. at 99-100.

8
See id. at 104.

9
CA rollo, pp. 244-266. Penned by Director Estrellita Beltran-Abelardo.
10
The following were stated as examples in the BLA’s Decision dated December 19, 2006 in
the IPV Case: Emmaus II St. Francis Village Condominium located at Moonwalk Subdivision,
Parañaque City, St. Francis Village Phase I-B/St. Francis Village Rolling Meadow Phase I
and II located at San Bartolome, Novaliches, Quezon City, and St. Francis Condominium
located at Xavier St., Greenhills, San Juan City. (Id. at 262.)

11
See id. at 259-263.

12
Id. at 559-567.

13
Id. at 564-566.

14
Id. at 341-349.

15
Rollo, p. 78.

16
Id. at 98-114.

17
Id. at 103-106 and 111-112.

18
Id. at 112.

19
Id. at 68-95.

20
See id. at 91-93.

Entitled "AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND

21

ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS

POWERS AND FUNCTIONS,AND FOR OTHER PURPOSES."

22
SECTION 156. Actions, and Damages and Injunction for Infringement. —

156.1. The owner of a registered mark may recover damages from any person who
infringes his rights, and the measure of the damages suffered shall be either the
reasonable profit which the complaining party would have made, had the defendant
not infringed his rights, or the profit which the defendant actually made out of the
infringement, or in the event such measure of damages cannot be readily
ascertained with reasonable certainty,then the court may award as damages a
reasonable percentage based upon the amount of gross sales of the defendant or
the value of the services in connection with which the mark or trade name was used
in the infringement of the rights of the complaining party.

156.2. On application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing sales.

156.3. In cases where actual intent to mislead the public or to defraud the
complainant is shown, in the discretion of the court, the damages may be doubled.

156.4. The complainant, upon proper showing, may also be granted injunction.
23
SECTION 157. Power of Court to Order Infringing Material Destroyed. —

157.1. In any action arising under this Act, in which a violation of any right of the
owner of the registered mark is established, the court may order that goods found to
be infringing be, without compensation of any sort, disposed of outside the channels
ofcommerce in such a manner as to avoid any harm caused to the right holder, or
destroyed; and all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the registered mark or
trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all
plates, molds, matrices and other means of making the same, shall be delivered up
and destroyed.

157.2. In regard to counterfeit goods, the simple removal of the trademark affixed
shall not be sufficient other than in exceptional cases which shall be determined by
the Regulations, to permit the release of the goods into the channels of commerce.

24
SECTION 161. Authority to Determine Right to Registration. — In any action involving a
registered mark, the court may determine the right to registration, order the cancellation of a
registration, in whole or in part, and otherwise rectify the register with respect to the
registration of any party to the action in the exercise of this. Judgment and orders shall be
certified by the court to the Director, who shall make appropriate entry upon the records of
the Bureau, and shall be controlled thereby.

25
G.R. No. 194062, June 17, 2013, 698 SCRA 666.

26
Id. at 680-681.

Superior Commercial Enterprises, Inc. v. Kunnan Enterprises Ltd., G.R. No. 169974, April
27

20, 2010, 618 SCRA 531, 556.

See Levi Strauss (Phils.), Inc. v. Lim, 593 Phil. 435, 457 (2008). See also Co Tiong Sa v.
28

Director of Patents, 95 Phil. 1, 4 (1954).

29
625 So.2d 463 (1993).

30
Id.; emphases and underscoring supplied; brackets and citations omitted.

31
871 F.2d 590 (1989).

32
In re Societe Generale Des Eaux Minerales de Vittel, S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987). See also In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB
1988).

In re California Pizza Kitchen, Inc., id., citing In re Handler Fenton Westerns, Inc., 214
33

USPQ 848 (TTAB 1982).

34
123.2 As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or device which has become distinctive in relation to
the goods for which the registration is requested as a result of the use that have been made
of it in commerce in the Philippines. The Office may accept as prima facie evidencethat the
mark has become distinctive, as used in connection with the applicant’s goods or services in
 commerce, proof of substantially exclusive and continuoususe thereof by the applicant in
commerce in the Philippines for five (5) years before the date on which the claim of
distinctiveness is made. (Emphases and underscoring supplied)

See Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866 (2002); Self-
35

Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 35

USPQ2d 1342 (Fed Cir. 1995); Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 208
USPQ 713 (Fed Cir. 1980).

36
Rollo, p. 104.

G.R. No. 119280 August 10, 2006

UNILEVER PHILIPPINES (PRC), INC., Petitioner,

vs.
THE HONORABLE COURT OF APPEALS and PROCTER AND GAMBLE PHILIPPINES,
INC., Respondents.

DECISION

CORONA, J.:

In this petition for review under Rule 45 of the Rules of Court, petitioner assails the February 24,
1995 decision 1 of the Court of Appeals (CA) in CA-G.R. SP No. 35242 entitled "Unilever Philippines
(PRC), Inc. v. Honorable Fernando V. Gorospe, Jr. and Procter and Gamble Philippines, Inc.
(P&GP)" which affirmed the issuance by the court a quo of a writ of preliminary injunction against it.
The writ enjoined petitioner from using and airing, until further orders of the court, certain television
commercials for its laundry products claimed to be identical or similar to its "double tug" or "tac-tac"
key visual. 2

Petitioner alleges that the writ of preliminary injunction was issued by the trial court (and affirmed by
the CA) without any evidence of private respondent’s clear and unmistakable right to the writ.
Petitioner further contends that the preliminary injunction issued against it already disposed of the
main case without trial, thus denying petitioner of any opportunity to present evidence on its behalf.

The antecedents show that on August 24, 1994, private respondent Procter and Gamble Phils., Inc.
filed a complaint for injunction with damages and a prayer for temporary restraining order and/or writ
of preliminary injunction against petitioner Unilever, alleging that:

1.5. As early as 1982, a P&G subsidiary in Italy used a key visual in the advertisement of its laundry
detergent and bleaching products. This key visual known as the "double-tug" or "tac-tac"
demonstration shows the fabric being held by both hands and stretched sideways.

1.6. The "tac-tac" was conceptualized for P&G by the advertising agency Milano and Gray of Italy in
1982. The "tac-tac" was used in the same year in an advertisement entitled "All aperto" to
demonstrate the effect on fabrics of one of P&GP’s products, a liquid bleach called "Ace."

xxxxxxxxx

1.7. Since then, P&G has used the "tac-tac" key visual in the advertisement of its products. In fact, in
1986, in Italy, the "tac-tac" key visual was used in the television commercial for "Ace" entitled "Kite."
1.8. P&G has used the same distinctive "tac-tac" key visual to local consumers in the Philippines.

xxxxxxxxx

1.10. Substantially and materially imitating the aforesaid "tac-tac" key visual of P&GP and in blatant
disregard of P&GP’s intellectual property rights, Unilever on 24 July 1993 started airing a 60 second
television commercial "TVC" of its "Breeze Powerwhite" laundry product called "Porky." The said
TVC included a stretching visual presentation and sound effects almost [identical] or substantially
similar to P&GP’s "tac-tac" key visual.

xxxxxxxxx

1.14. On July 15, 1994, P&GP aired in the Philippines, the same "Kite" television advertisement it
used in Italy in 1986, merely dubbing the Italian language with Filipino for the same produce "Ace"
bleaching liquid which P&GPnow markets in the Philippines.

1.15. On August 1, 1994, Unilever filed a Complaint with the Advertising Board of the Philippines to
prevent P&GP from airing the "Kite" television advertisement. 3

On August 26, 1994, Judge Gorospe issued an order granting a temporary restraining order and
setting it for hearing on September 2, 1994 for Unilever to show cause why the writ of preliminary
injunction should not issue. During the hearing on September 2, 1994, P&GP received Unilever’s
answer with opposition to preliminary injunction. P&GP filed its reply to Unilever’s opposition to a
preliminary injunction on September 6, 1994.

During the hearing on September 9, 1994, Judge Gorospe ordered petitioner to submit a sur-
rejoinder. P&GP received Unilever’s rejoinder to reply on September 13, 1994. The following day, on
September 14, 1994, P&GP filed its sur-reply to Unilever’s rejoinder.

On September 19, 1994, P&GP received a copy of the order dated September 16, 1994 ordering the
issuance of a writ of preliminary injunction and fixing a bond of P100,000. On the same date, P&GP
filed the required bond issued by Prudential Guarantee and Assurance, Inc.

On September 21, 1994, petitioner appealed to the CA assigning the following errors allegedly
committed by the court a quo, to wit:

PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS OF JURISDICTION AND WITH

GRAVE ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN ISSUING THE
WRIT OF PRELIMINARY INJUNCTION IN VIOLATION OF THE RULES ON EVIDENCE AND
PROCEDURE, PARTICULARLY OF SEC. 3 (a), RULE 58 OF THE REVISED RULES OF COURT
AND OF THE PREVAILING JURISPRUDENCE.

PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED SEPTEMBER 16, 1994, HAD, IN
EFFECT, ALREADY PREJUDGED THE MERITS OF THE MAIN CASE.

PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER ACCORDING RELIEF TO A NON-
PARTY IN CIVIL CASE NO. 94-2434 WITHOUT JURISDICTION.

PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD DEPRIVED PETITIONER OF

SUBSTANTIVE AND PROCEDURAL DUE PROCESS; PUBLIC RESPONDENT HAD
FORECLOSED PETITIONER’S RIGHT AND THE OPPORTUNITY TO CROSS-EXAMINE
PROCTER’S WITNESSES ABAD AND HERBOSA. 4

On February 24, 1995, the CA rendered its decision finding that Judge Gorospe did not act with
grave abuse of discretion in issuing the disputed order. The petition for certiorari was thus dismissed
for lack of merit.

After a careful perusal of the records, we agree with the CA and affirm its decision in toto:

Petitioner does not deny that the questioned TV advertisements are substantially similar to P&GP’s
"double tug" or "tac-tac" key visual. However, it submits that P&GP is not entitled to the relief
demanded, which is to enjoin petitioner from airing said TV advertisements, for the reason that
petitioner has Certificates of Copyright Registration for which advertisements while P&GP has none
with respect to its "double-tug" or "tac-tac" key visual. In other words, it is petitioner’s contention that
P&GP is not entitled to any protection because it has not registered with the National Library the
very TV commercials which it claims have been infringed by petitioner.

We disagree. Section 2 of PD 49 stipulates that the copyright for a work or intellectual creation
subsists from the moment of its creation. Accordingly, the creator acquires copyright for his work
right upon its creation.… Contrary to petitioner’s contention, the intellectual creator’s exercise and
enjoyment of copyright for his work and the protection given by law to him is not contingent or
dependent on any formality or registration. Therefore, taking the material allegations of paragraphs
1.3 to 1.5 of P&GP’s verified Complaint in the context of PD 49, it cannot be seriously doubted that
at least, for purposes of determining whether preliminary injunction should issue during the
pendency of the case, P&GP is entitled to the injunctive relief prayed for in its Complaint.

The second ground is likewise not well-taken. As adverted to earlier, the provisional remedy of
preliminary injunction will not issue unless it is shown in the verified complaint that plaintiff is
probably entitled to the relief demanded, which consists in whole or in part in restraining the
commission or continuance of the acts complained of. In view of such requirement, the court has to
make a tentative determination if the right sought to be protected exists and whether the act against
which the writ is to be directed is violative of such right. Certainly, the court’s determination as to the
propriety of issuing the writ cannot be taken as a prejudgment of the merits of the case because it is
tentative in nature and the writ may be dissolved during or after the trial if the court finds that plaintiff
was not entitled to it….

xxxxxxxxx

Obviously, the determination made by the court a quo was only for purposes of preliminary
injunction, without passing upon the merits of the case, which cannot be done until after a full-blown
hearing is conducted.

The third ground is patently unmeritorious. As alleged in the Complaint P&GP is a subsidiary of
Procter and Gamble Company (P&G) for which the "double tug" or "tac-tac" key visual was
conceptualized or created. In that capacity, P&GP used the said TV advertisement in the Philippines
to promote its products. As such subsidiary, P&GP is definitely within the protective mantle of the
statute (Sec. 6, PD 49).

Finally, We find the procedure adopted by the court a quo to be in order….

The record clearly shows that respondent Judge followed the (procedure provided for in Section 5,
Rule 58, as amended by BP 224, and Paragraph A(8) of the Interim Rules). In fact, the court a
quo set the incident for hearing on September 2, 1994, at which date petitioner was ordered to show
cause why the writ should not be issued. Petitioner filed an Opposition to the application for
preliminary injunction. The same incident was again set for hearing on September 9, 1994, during
which the parties made some manifestations in support of their respective positions. Subsequent to
such hearing petitioner filed a Reply to P&GP’s Rejoinder to its Opposition. Under the foregoing
circumstances, it is absurd to even suggest that petitioner was not given its day in court in the matter
of the issuance of the preliminary injunctive relief.

xxxxxxxxx

There was of course extreme urgency for the court a quo to act on plaintiff’s application for
preliminary injunction. The airing of TV commercials is necessarily of limited duration only. Without
such temporary relief, any permanent injunction against the infringing TV advertisements of which
P&GP may possibly succeed in getting after the main case is finally adjudicated could be illusory if
by then such advertisements are no longer used or aired by petitioner. It is therefore not difficult to
perceive the possible irreparable damage which P&GP may suffer if respondent Judge did not act
promptly on its application for preliminary injunction. 5

Preliminary injunction is a provisional remedy intended to provide protection to parties for the
preservation of their rights or interests during the pendency of the principal action. 6 Thus, Section1,
Rule 58 of the Rules of Court provides:

Section 1. Preliminary injunction defined; classes. — A preliminary injunction is an order granted at

any stage of an action or proceeding prior to the judgment or final order, requiring a party or a court,
agency or a person to refrain from a particular act or acts. It may also require the performance of a
particular act or acts, in which case it shall be known as a preliminary mandatory injunction.

Injunction is resorted to only when there is a pressing necessity to avoid injurious consequences
which cannot be remedied under any standard compensation. 7 As correctly ruled by the CA, there
was an extreme urgency to grant the preliminary injunction prayed for by P&GP considering that TV
commercials are aired for a limited period of time only. In fact, this Court takes note of the fact that the TV
commercial in issue ― the Kite TV advertisement ― is no longer aired today, more than 10 years after the
injunction was granted on September 16, 1994.

The sole objective of a writ of preliminary injunction is to preserve the status quo until the merits of
the case can be heard fully. 8 A writ of preliminary injunction is generally based solely on initial and
incomplete evidence. 9 Thus, it was impossible for the court a quo to fully dispose of the case, as
claimed by petitioner, without all the evidence needed for the full resolution of the same. To date, the
main case still has to be resolved by the trial court.

The issuance of a preliminary injunction rests entirely on the discretion of the court and is generally
not interfered with except in cases of manifest abuse. 10 There was no such abuse in the case at bar,
especially because petitioner was given all the opportunity to oppose the application for injunction.
The fact was, it failed to convince the court why the injunction should not be issued. Thus, in Santos
v. Court of Appeals, 11 we held that no grave abuse of discretion can be attributed to a judge or body
issuing a writ of preliminary injunction where a party has not been deprived of its day in court as it
was heard and it exhaustively presented all its arguments and defenses.

WHEREFORE, the petition is hereby DENIED.

Costs against petitioner.

SO ORDERED.

RENATO C. CORONA
Associate Justice

WE CONCUR:

REYNATO S. PUNO

Associate Justice
Chairperson

ANGELINA SANDOVAL-GUTIERREZ, ADOLFO S. AZCUNA

Associate Justice Associate Justice

(No Part)
CANCIO C. GARCIA
*
Associate Justice

ATTESTATION

I attest that the conclusions in the above decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

REYNATO S. PUNO

Associate Justice
Chairperson, Second Division

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, and the Division Chairperson’s Attestation, I
certify that the conclusions in the above decision had been reached in consultation before the case
was assigned to the writer of the opinion of the Court’s Division.

ARTEMIO V. PANGANIBAN
Chief Justice

Footnotes

* No part.

1Penned by Associate Justice Godardo A. Jacinto and concurred in by Associate Justice

Artemon D. Luna (retired) and Associate Justice Cancio C. Garcia (now an Associate Justice
of the Supreme Court) of the Special Fifth Division of the Court of Appeals; rollo, pp. 52-62.
 2See description/explanation of advertisement in paragraphs 1.5 and 1.6 of respondent
P&GP’s complaint. See footnote 3 of this decision.

3 Rollo, pp. 53-54.

4 Id., pp. 56-57.

5 CA decision, id., pp. 57-62.

6 Republic v. Court of Appeals, 383 Phil. 398 (2000).

7 Unionbank of the Philippines v. Court of Appeals, 370 Phil. 837 (1999).

8 Heirs of Joaquin Asuncion v. Gervacio, 363 Phil. 666 (1999).

9 La Vista Association, Inc. v. Court of Appeals, 344 Phil. 30 (1997).

10 Reyes v. Court of Appeals, 378 Phil. 984 (1999).

11 G.R. No. 61218, 23 September 1992, 214 SCRA 162.

THIRD DIVISION SISON OLANO, SERGIO T. ONG, MARILYN 0. GO, and JAPFUKHAI, Petitioners, - versus - G
.R. No. 195835 Present: VELASCO, JR, J., Chairperson, PERALTA, PEREZ, REYES, and JARDELEZA, JJ
Promulgated: LIM ENG CO, March 14, 2016 x------------------------------~~~~~~~~-~~~--------~¥--•-'-:;;j-%'-~--
-x DECISION REYES, J.: This is a petition for review on certiorari1 under Rule 45 of the Rules of Court,
assailing the Decision2 dated July 9, 2010 and Resolution3 dated February 24, 2011 of the Court of
Appeals (CA) in CA-G.R. SP No. 95471, which annulled the Resolutions dated March 10, 20064 and May
25, 20065 of the Department of Justice (DOJ) in LS. No. 2004-925, finding no probable cause for
copyright infringement against Sison Olafio, Sergio Ong, Marilyn Go and J ap Fuk Hai (petitioners) and
directing the withdrawal of the criminal information filed against them. Rollo, pp. 3-42. Penned by
Associate Justice Rodil V. Zalameda, with Associate Justices Mario L. Guarifla III and Apolinario D.
Bruselas, Jr. concurring; id. at 45-58. 3 Id. at 60-65. 4 Issued by Secretary Raul M. Gonzalez; id. at 145-
148. Id. at 149-150. f_ Decision 2 G.R. No. 195835 The Antecedents The petitioners are the officers
and/or directors of Metrotech Steel Industries, Inc. (Metrotech).6 Lim Eng Co (respondent), on the other
hand, is the Chairman of LEC Steel Manufacturing Corporation (LEC), a company which specializes in
architectural metal manufacturing.7 Sometime in 2002, LEC was invited by the architects of the
Manansala Project (Project), a high-end residential building in Rockwell Center, Makati City, to submit
design/drawings and specifications for interior and exterior hatch doors. LEC complied by submitting on
July 16, 2002, shop plans/drawings, including the diskette therefor, embodying the designs and
specifications required for the metal hatch doors.8 After a series of consultations and revisions, the final
shop plans/drawings were submitted by LEC on January 15, 2004 and thereafter copied and transferred
to the title block of Ski-First Balfour Joint Venture (SKI-FB), the Project’s contractor, and then stamped
approved for construction on February 3, 2004.9 LEC was thereafter subcontracted by SKI-FB, to
manufacture and install interior and exterior hatch doors for the 7th to 22nd floors of the Project based
on the final shop plans/drawings.10 Sometime thereafter, LEC learned that Metrotech was also
subcontracted to install interior and exterior hatch doors for the Project’s 23rd to 41st floors.11 On June
24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech,
however, insisted that no copyright infringement was committed because the hatch doors it
manufactured were patterned in accordance with the drawings provided by SKI-FB.12 6 Id. at 73. 7 Id. at
66. 8 Id. at 66, 97. 9 Id. at 66, 97-98. 10 Id. at 98. 11 Id. at 47. 12 Id. at 98. Decision 3 G.R. No. 195835 On
July 2, 2004, LEC deposited with the National Library the final shop plans/drawings of the designs and
specifications for the interior and exterior hatch doors of the Project.13 On July 6, 2004, LEC was issued
a Certificate of Copyright Registration and Deposit showing that it is the registered owner of
plans/drawings for interior and exterior hatch doors under Registration Nos. I-2004-13 and I-2004-14,
respectively.14 This copyright pertains to class work “I” under Section 172 of Republic Act (R.A.) No.
8293, The Intellectual Property Code of the Philippines, which covers “illustrations, maps, plans,
sketches, charts and three-dimensional works relative to geography, topography, architecture or
science.” On December 9, 2004, LEC was issued another Certificate of Copyright Registration and
Deposit showing that it is the registered owner of plans/drawings for interior and exterior hatch doors
under Registration Nos. H-2004-566 and H-2004-56715 which is classified under Section 172(h) of R.A.
No. 8293 as “original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art.” When Metrotech still refused to stop
fabricating hatch doors based on LEC’s shop plans/drawings, the latter sought the assistance of the
National Bureau of Investigation (NBI) which in turn applied for a search warrant before the Regional
Trial Court (RTC) of Quezon City, Branch 24. The application was granted on August 13, 2004 thus
resulting in the confiscation of finished and unfinished metal hatch doors as well as machines used in
fabricating and manufacturing hatch doors from the premises of Metrotech.16 On August 13, 2004, the
respondent filed a Complaint-Affidavit17 before the DOJ against the petitioners for copyright
infringement. In the meantime or on September 8, 2004, the RTC quashed the search warrant on the
ground that copyright infringement was not established.18 Traversing the complaint, the petitioners
admitted manufacturing hatch doors for the Project. They denied, however, that they committed
copyright infringement and averred that the hatch doors they manufactured were functional inventions
that are proper subjects of patents and that the records of the Intellectual Property Office 13 Id. 14 Id.
at 105. 15 Id. 16 Id. 17 Id. at 66-68. 18 Id. at 69-72. Decision 4 G.R. No. 195835 reveal that there is no
patent, industrial design or utility model registration on LEC’s hatch doors. Metrotech further argued
that the manufacturing of hatch doors per se is not copyright infringement because copyright protection
does not extend to the objects depicted in the illustrations and plans. Moreover, there is no artistic or
ornamental expression embodied in the subject hatch doors that would subject them to copyright
protection.19 Resolutions of the DOJ In a Resolution20 dated August 18, 2005, the investigating
prosecutor dismissed the respondent’s complaint based on inadequate evidence showing that: (1) the
petitioners committed the prohibited acts under Section 177 of R.A. No. 8293; and (2) the interior and
exterior hatch doors of the petitioners are among the classes of copyrightable work enumerated in
Sections 172 and 173 of the same law.21 Adamant, the respondent filed a petition for review before the
DOJ but it was also denied due course in the Resolution22 dated November 16, 2005. Upon the
respondent’s motion for reconsideration, however, the Resolution23 dated January 27, 2006 of the DOJ
reversed and set aside the Resolution dated August 18, 2005 and directed the Chief State Prosecutor to
file the appropriate information for copyright infringement against the petitioners.24 The DOJ reasoned
that the pieces of evidence adduced show that the subject hatch doors are artistic or ornamental with
distinctive hinges, door and jamb, among others. The petitioners were not able to sufficiently rebut
these allegations and merely insisted on the non-artistic nature of the hatch doors. The DOJ further held
that probable cause was established insofar as the artistic nature of the hatch doors and based thereon
the act of the petitioners in manufacturing or causing to manufacture hatch doors similar to those of the
respondent can be considered as unauthorized reproduction; hence, copyright infringement under
Section 177.1 in relation to Section 216 of R.A. No. 8293.25 19 Id. at 76-78. 20 Rendered by Senior State
Prosecutor Rosalina P. Aquino; id. at 97-113. 21 Id. at 113. 22 Id. at 139-140 23 Id. at 141-144. 24 Id. at
143. 25 Id. at 142. Decision 5 G.R. No. 195835 Aggrieved, the petitioners moved for reconsideration. This
time, the DOJ made a complete turn around by granting the motion, vacating its Resolution dated
January 27, 2006 and declaring that the evidence on record did not establish probable cause because
the subject hatch doors were plainly metal doors with functional components devoid of any aesthetic or
artistic features. Accordingly, the DOJ Resolution26 dated March 10, 2006 disposed as follows:
WHEREFORE, finding cogent reason to reverse the assailed resolution, the motion for reconsideration is
GRANTED finding no probable cause against the [petitioners]. Consequently, the City Prosecutor of
Manila is hereby directed to cause the withdrawal of the information, if any has been filed in court, and
to report the action taken thereon within TEN (10) DAYS from receipt hereof. SO ORDERED.27 The
respondent thereafter filed a motion for reconsideration of the foregoing resolution but it was denied28
on May 25, 2006. The respondent then sought recourse before the CA via a petition for certiorari29
ascribing grave abuse of discretion on the part of the DOJ. In its assailed Decision30 dated July 9, 2010,
the CA granted the petition. The CA held that the vacillating findings of the DOJ on the presence or lack
of probable cause manifest capricious and arbitrary exercise of discretion especially since its opposite
findings were based on the same factual evidence and arguments. The CA then proceeded to make its
own finding of probable cause and held that: [F]or probable cause for copyright infringement to exist,
essentially, it must be shown that the violator reproduced the works without the consent of the owner
of the copyright. In the present case before Us, [the petitioners] do not dispute that: (1) LEC was issued
copyrights for the illustrations of the hatch doors under Section 171.i, and for the hatch doors
themselves as ornamental design or model for articles of manufacture pursuant to Section 171.h of R.A.
[No.] 8293; and (2) they manufactured hatch doors based on drawings and design furnished by SKI-FB,
which consists of LEC works subject of copyrights. These two (2) circumstances, taken together, are
sufficient to excite the belief in a reasonable mind that [the petitioners] are probably guilty of copyright
26 Id. at 145-148. 27 Id. at 147. 28 Id. at 149-150. 29 Id. at 151-164. 30 Id. at 45-58. Decision 6 G.R. No.
195835 infringement. First, LEC has indubitably established that it is the owner of the copyright for both
the illustrations of the hatch doors and [the] hatch doors themselves, and second, [the petitioners]
manufactured hatch doors based on LEC’s works, sans LEC’s consent. x x x x [T]he fact that LEC enjoys
ownership of copyright not only on the illustrations of the hatch doors but on the hatch doors itself and
that [the petitioners] manufactured the same is sufficient to warrant a finding of probable cause for
copyright infringement. x x x.31 The CA further ruled that any allegation on the non-existence of
ornamental or artistic values on the hatch doors are matters of evidence which are best ventilated in a
full-blown trial rather than during the preliminary investigation stage. Accordingly, the CA disposed as
follows: WHEREFORE, considering the foregoing premises, the present Petition is GRANTED, and
accordingly, the assailed Resolutions dated 10 March 2006 and 25 May 2006 are ANNULLED and SET
ASIDE. The Resolution of the Secretary of Justice dated 27 January 2006 finding probable cause against
[the petitioners], is REINSTATED. SO ORDERED. 32 The CA reiterated the above ruling in its Resolution33
dated February 24, 2011 when it denied the petitioners’ motion for reconsideration. Hence, the present
appeal, arguing that: I. There was no evidence of actual reproduction of the hatch doors during the
preliminary investigation that would lead the investigating prosecutor to declare the existence of
probable cause;34 II. Even assuming that the petitioners manufactured hatch doors based on the
illustrations and plans covered by the respondent’s Certificate of Registration Nos. I-2004-13 and I-2004-
14, the petitioners could not have committed copyright infringement. Certificate of Registration Nos. I-
2004-13 and I-2004-14 are classified under Section 172(i) which pertains to “illustrations, maps, plans,
sketches, charts and three-dimensional works 31 Id. at 53-55. 32 Id. at 58. 33 Id. at 60-65. 34 Id. at 17.
Decision 7 G.R. No. 195835 relative to geography, topography, architecture or science.” Hence the
original works that are copyrighted are the illustrations and plans of interior hatch doors and exterior
hatch doors. Thus, it is the reproduction of the illustrations and plans covered by the copyright
registration that amounts to copyright infringement. The petitioners did not reproduce the illustrations
and plans covered under Certificate of Registration Nos. I-2004-13 and I-2004-14. The manufacturing of
hatch doors per se does not fall within the purview of copyright infringement because copyright
protection does not extend to the objects depicted in the illustrations and plans;35 and III. LEC’s
copyright registration certificates are not conclusive proofs that the items covered thereby are
copyrightable. The issuance of registration certificate and acceptance of deposit by the National Library
is ministerial in nature and does not involve a determination of whether the item deposited is
copyrightable or not. Certificates of registration and deposit 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.36 Ruling of the Court It is a
settled judicial policy that courts do not reverse the Secretary of Justice’s findings and conclusions on
the matter of probable cause. Courts are not empowered to substitute their judgment for that of the
executive branch upon which full discretionary authority has been delegated in the determination of
probable cause during a preliminary investigation. Courts may, however, look into whether the exercise
of such discretionary authority was attended with grave abuse of discretion.37 Otherwise speaking,
“judicial review of the resolution of the Secretary of Justice is limited to a determination of whether
there has been a grave abuse of discretion amounting to lack or excess of jurisdiction.”38 35 Id. at 17-
18. 36 Id. at 20-21. 37 Spouses Aduan v. Chong, 610 Phil. 178, 183-184 (2009), citing First Women’s
Credit Corporation v. Hon. Perez, 524 Phil. 305, 308-309 (2006). 38 Spouses Aduan v. Chong, id. at 184,
citing United Coconut Planters Bank v. Looyuko, 560 Phil. 581, 591 (2007). Decision 8 G.R. No. 195835
The CA anchored its act of reversing the DOJ Resolution dated March 10, 2006 upon the foregoing
tenets. Thus, the Court’s task in the present petition is only to determine if the CA erred in concluding
that the DOJ committed grave abuse of discretion in directing the withdrawal of any criminal
information filed against the petitioners. Grave abuse of discretion has been defined as “such capricious
and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The abuse of discretion must
be grave as where the power is exercised in an arbitrary or despotic manner by reason of passion or
personal hostility and must be so patent and gross as to amount to an evasion of positive duty or to a
virtual refusal to perform the duty enjoined by or to act at all in contemplation of law.”39 ‘“Capricious,’
usually used in tandem with the term ‘arbitrary,’ conveys the notion of willful and unreasoning
action.”40 According to the CA, the DOJ’s erratic findings on the presence or absence of probable cause
constitute grave abuse of discretion. The CA explained: This, to Our minds, in itself creates a nagging,
persistent doubt as to whether [the DOJ Secretary] issued the said resolutions untainted with a
whimsical and arbitrary use of his discretion. For one cannot rule that there is reason to overturn the
investigating prosecutor’s findings at the first instance and then go on to rule that ample evidence exists
showing that the hatch doors possess artistic and ornamental elements at the second instance and
proceed to rule that no such artistry can be found on the purely utilitarian hatch doors at the last
instance. x x x.41 The Court disagrees. It has been held that the issuance by the DOJ of several
resolutions with varying findings of fact and conclusions of law on the existence of probable cause, by
itself, is not indicative of grave abuse of discretion.42 Inconsistent findings and conclusions on the part
of the DOJ will denote grave abuse of discretion only if coupled with gross misapprehension of facts,43
which, after a circumspect review of the records, is not attendant in the present case. 39 Spouses Aduan
v. Chong; id. at 185. 40 Spouses Balangauan v. The Hon. CA, Special 19th Division, et al., 584 Phil. 183,
197-198 (2008). 41 Rollo, p. 57. 42 Tan, Jr. v. Matsuura, et al., 701 Phil. 236, 250 (2013). 43 Id. at 260.
Decision 9 G.R. No. 195835 The facts upon which the resolutions issued by the investigating prosecutor
and the DOJ were actually uniform, viz: (a) LEC is the registered owner of plans/drawings for interior and
exterior hatch doors under Certificate of Registration Nos. I-2004-13 and I-2004-14 classified under
Section 172(i) of R.A. No. 8293 as pertaining to “illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography, architecture or science”; (b) LEC is also the
registered owner of plans/drawings for interior and exterior hatch doors under Certificate of
Registration Nos. H-2004-566 and H-2004-567 classified under Section 172(h) of R.A. No. 8293 as to
“original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art”; (c) LEC as the subcontractor of SKI-FB in the Project
first manufactured and installed the interior and exterior hatch doors at the Manansala Tower in
Rockwell Center, Makati City, from the 7th to 22nd floors. The hatch doors were based on the
plans/drawings submitted by LEC to SKI-FB and subject of the above copyright registration numbers; and
(d) thereafter, Metrotech fabricated and installed hatch doors at the same building’s 23rd to 41st floor
based on the drawings and specifications provided by SKI-FB.44 The positions taken by the DOJ and the
investigating prosecutor differed only in the issues tackled and the conclusions arrived at. It may be
observed that in the Resolution dated August 18, 2005 issued by the investigating prosecutor, the
primary issue was whether the hatch doors of LEC fall within copyrightable works. This was resolved by
ruling that hatch doors themselves are not covered by LEC’s Certificate of Registration Nos. I-2004-13
and I-2004-14 issued on the plans/drawing depicting them. The DOJ reversed this ruling in its Resolution
dated January 27, 2006 wherein the issue w Decision 10 G.R. No. 195835 This situation does not amount
to grave abuse of discretion but rather a mere manifestation of the intricate issues involved in the case
which thus resulted in varying conclusions of law. Nevertheless, the DOJ ultimately pronounced its
definite construal of copyright laws and their application to the evidence on record through its
Resolution dated March 10, 2006 when it granted the petitioners’ motion for reconsideration. Such
construal, no matter how erroneous to the CA’s estimation, did not amount to grave abuse of discretion.
“[I]t is elementary that not every erroneous conclusion of law or fact is an abuse of discretion.”45 More
importantly, the Court finds that no grave abuse of discretion was committed by the DOJ in directing the
withdrawal of the criminal information against the respondents because a finding of probable cause
contradicts the evidence on record, law, and jurisprudence. “Probable cause has been defined as the
existence of such facts and circumstances as would excite the belief in a reasonable mind, acting on the
facts within the knowledge of the prosecutor, that the person charged was guilty of the crime for which
he was prosecuted. It is a reasonable ground of presumption that a matter is, or may be, well-founded
on such a state of facts in the mind of the prosecutor as would lead a person of ordinary caution and
prudence to believe, or entertain an honest or strong suspicion, that a thing is so.”46 “The term does
not mean actual and positive cause nor does it import absolute certainty. It is merely based on opinion
and reasonable belief. Thus, a finding of probable cause does not require an inquiry into whether there
is sufficient evidence to procure a conviction. It is enough that it is believed that the act or omission
complained of constitutes the offense charged.”47 “In order that probable cause to file a criminal case
may be arrived at, or in order to engender the well-founded belief that a crime has been committed, the
elements of the crime charged should be present. This is based on the principle that every crime is
defined by its elements, without which there should be – at the most – no criminal offense.”48 45 First
Women’s Credit Corporation v. Hon. Perez, supra note 37, at 310. 46 Hasegawa v. Giron, G.R. No.
184536, August 14, 2013, 703 SCRA 549, 559. 47 United Coconut Planters Bank v. Looyuko, supra note
38, at 596-597. 48 Ang-Abaya, et al. v. Ang, 593 Phil. 530, 542 (2008). Decision 11 G.R. No. 195835 A
copyright refers to “the right granted by a statute to the proprietor of an intellectual production to its
exclusive use and enjoyment to the extent specified in the statute.” 49 Under Section 177 of R.A. No.
8293, the Copyright or Economic Rights consist of the exclusive right to carry out, authorize or prevent
the following acts: 177.1 Reproduction of the work or substantial portion of the work; 177.2
Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3 The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership; 177.4 Rental of the original or a copy of an audiovisual or cinematographic work,
a work embodied in a sound recording, a computer program, a compilation of data and other materials
or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the
subject of the rental; 177.5 Public display of the original or a copy of the work; 177.6 Public performance
of the work; and 177.7 Other communication to the public of the work. Copyright infringement is thus
committed by any person who shall use original literary or artistic works, or derivative works, without
the copyright owner’s consent in such a manner as to violate the foregoing copy and economic rights.
For a claim of copyright infringement to prevail, the evidence on record must demonstrate: (1)
ownership of a validly copyrighted material by the complainant; and (2) infringement of the copyright by
the respondent.50 While both elements subsist in the records, they did not simultaneously concur so as
to substantiate infringement of LEC’s two sets of copyright registrations. The respondent failed to
substantiate the alleged reproduction of the drawings/sketches of hatch doors copyrighted under
Certificate of Registration Nos. I-2004-13 and I-2004-14. There is no proof that the respondents
reprinted the copyrighted sketches/drawings of LEC’s hatch doors. The raid conducted by the NBI on
Metrotech’s premises yielded no copies or reproduction of LEC’s copyrighted sketches/drawings of
hatch 49 Habana v. Robles, 369 Phil. 764, 787 (1999). 50 Ching v. Salinas, Sr., 500 Phil. 628, 639 (2005).
Decision 12 G.R. No. 195835 doors. What were discovered instead were finished and unfinished hatch
doors. Certificate of Registration Nos. I-2004-13 and I-2004-14 pertain to class work “I” under Section
172 of R.A. No. 8293 which covers “illustrations, maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or science.” 51 As such, LEC’s copyright
protection there under covered only the hatch door sketches/drawings and not the actual hatch door
they depict.52 As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart,
Incorporated: 53 Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers. It may be obtained and enjoyed only
with respect to the subjects and by the persons, and on terms and conditions specified in the statute.
Accordingly, it can cover only the works falling within the statutory enumeration or description. 54
(Citations omitted and italics in the original) Since the hatch doors cannot be considered as either
illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science, to be properly classified as a copyrightable class “I” work, what was
copyrighted were their sketches/drawings only, and not the actual hatch doors themselves. To
constitute infringement, the usurper must have copied or appropriated the original work of an author or
copyright proprietor, absent copying, there can be no infringement of copyright.55 “Unlike a patent, a
copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the
idea — not the idea itself.”56 The respondent claimed that the petitioners committed copyright
infringement when they fabricated/manufactured hatch doors identical to those installed by LEC. The
petitioners could not have manufactured such hatch doors in substantial quantities had they not
reproduced the copyrighted plans/drawings submitted by LEC to SKI-FB. This insinuation, without 51
Rollo, p. 107. 52 Id. at 109. 53 456 Phil. 474 (2003). 54 Id. at 489. 55 Habana v. Robles, supra note 49, at
790. 56 Mazer v. Stein, 347 U.S. 201 (1954). Decision 13 G.R. No. 195835 more, does not suffice to
establish probable cause for infringement against the petitioners. “[A]lthough the determination of
probable cause requires less than evidence which would justify conviction, it should at least be more
than mere suspicion.”57 Anent, LEC’s Certificate of Registration Nos. H-2004-566 and H-2004-567, the
Court finds that the ownership thereof was not established by the evidence on record because the
element of copyrightability is absent. “Ownership of copyrighted material is shown by proof of
originality and copyrightability.” 58 While it is true that where the complainant presents a copyright
certificate in support of the claim of infringement, the validity and ownership of the copyright is
presumed. This presumption, however, is rebuttable and it cannot be sustained where other evidence in
the record casts doubt on the question of ownership, 59 as in the instant case. Moreover, “[t]he
presumption of validity to a certificate of copyright registration merely orders the burden of proof. The
applicant should not ordinarily be forced, in the first instance, to prove all the multiple facts that
underline the validity of the copyright unless the respondent, effectively challenging them, shifts the
burden of doing so to the applicant.”60 Here, evidence negating originality and copyrightability as
elements of copyright ownership was satisfactorily proffered against LEC’s certificate of registration. The
following averments were not successfully rebuffed by LEC: [T]he hinges on LEC’s “hatch doors” have no
ornamental or artistic value. In fact, they are just similar to hinges found in truck doors that had been in
common use since the 1960’s. The gaskets on LEC’s “hatch doors”, aside from not being ornamental or
artistic, were merely procured from a company named Pemko and are not original creations of LEC. The
locking device in LEC’s “hatch doors” are ordinary drawer locks commonly used in furniture and office
desks.61 57 Tan, Jr. v. Matsuura, et al., supra note 42, at 256. 58 Ching v. Salinas, Sr., supra note 50. 59
Id. at 640. 60 Id. at 640-641. 61 CA rollo, p. 84. Decision 14 G.R. No. 195835 In defending the
copyrightability of its hatch doors’ design, LEC merely claimed: LEC’s Hatch Doors were particularly
designed to blend in with the floor of the units in which they are installed and, therefore, appeal to the
aesthetic sense of the owner of units or any visitors thereto[;] LEC’s Hatch Doors have a distinct set of
hinges, a distinct door a distinct jamb, all of which are both functional or utilitarian and artistic or
ornamental at the same time[;] and Moreover, the Project is a high-end residential building located in
the Rockwell Center, a very prime area in Metro Manila. As such, the owner of the Project is not
expected to settle for Hatch Doors that simply live up to their function as such. The owner would
require, as is the case for the Project, Hatch Doors that not only fulfill their utilitarian purposes but also
appeal to the artistic or ornamental sense of their beholders.62 From the foregoing description, it is
clear that the hatch doors were not artistic works within the meaning of copyright laws. A copyrightable
work refers to literary and artistic works defined as original intellectual creations in the literary and
artistic domain.63 A hatch door, by its nature is an object of utility. It is defined as a small door, small
gate or an opening that resembles a window equipped with an escape for use in case of fire or
emergency. 64 It is thus by nature, functional and utilitarian serving as egress access during emergency.
It is not primarily an artistic creation but rather an object of utility designed to have aesthetic appeal. It
is intrinsically a useful article, which, as a whole, is not eligible for copyright. A “useful article” defined as
an article “having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information” is excluded from copyright eligibility.65 The only instance when a
useful article may be the subject of copyright protection is when it incorporates a design element that is
physically or conceptually separable from the underlying product. This means that the utilitarian article
can function without the design element. In such an instance, the design element is eligible for copyright
protection.66 62 Id. at 63. 63 Ching v. Salinas, Sr., supra note 50, at 650, citing Pearl and Dean
(Philippines), Incorporated v. Shoemart, Incorporated, supra note 53, at 490. 64 See WEBSTER’S THIRD
NEW INTERNATIONAL DICTIONARY (Unabridged), pp. 1037, 2613, (1986 edition). 65 Chosun Int’l, Inc. v.
Chrisha Creations, Ltd., 413 F.3d 324 (2d. Cir. 2005). 66 Id. Decision 15 G.R. No. 195835 The design of a
useful article shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent
that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately
from, and are capable of existing independently of, the utilitarian aspects of the article.67 A belt, being
an object utility with the function of preventing one’s pants from falling down, is in itself not
copyrightable. However, an ornately designed belt buckle which is irrelevant to or did not enhance the
belt’s function hence, conceptually separable from the belt, is eligible for copyright. It is copyrightable as
a sculptural work with independent aesthetic value, and not as an integral element of the belt’s
functionality.68 A table lamp is not copyrightable because it is a functional object intended for the
purpose of providing illumination in a room. The general shape of a table lamp is likewise not
copyrightable because it contributes to the lamp’s ability to illuminate the reaches of a room. But, a
lamp base in the form of a statue of male and female dancing figures made of semi vitreous china is
copyrightable as a work of art because it is unrelated to the lamp’s utilitarian function as a device used
to combat darkness.69 In the present case, LEC’s hatch doors bore no design elements that are
physically and conceptually separable, independent and distinguishable from the hatch door itself. The
allegedly distinct set of hinges and distinct jamb, were related and necessary hence, not physically or
conceptually separable from the hatch door’s utilitarian function as an apparatus for emergency egress.
Without them, the hatch door will not function. More importantly, they are already existing articles of
manufacture sourced from different suppliers. Based on the records, it is unrebutted that: (a) the hinges
are similar to those used in truck doors; (b) the gaskets were procured from a company named Pemko
and are not original creations of LEC; and (c) the locking device are ordinary drawer locks commonly
used in furniture and office desks. Being articles of manufacture already in existence, they cannot be
deemed as original creations. As earlier stated, valid copyright ownership denotes originality of the
copyrighted material. Originality means that the material was not copied, evidences at least minimal
creativity and was 67 Id., citing 17 U.S.C. §101. 68 Id., citing Kieselstein-Cord v. Accessories by Pearl, Inc.,
632 F.2d 989 (2d Cir. 1980). 69 Id., citing Mazer v. Stein, supra note 56. Decision 16 G.R. No. 195835
independently ~reated by the author. 70 It connotes production as a result of independent labor. 71 LEC
did not produce the door jambs and hinges; it bought or acquired them from suppliers and thereafter
affixed them to the hatch doors. No independent original creation can be deduced from such acts. The
same is true with respect to the design on the door's panel. As LEC has stated, the panels were
"designed to blend in with the floor of the units in which they [were] installed. " 72 Photos of the panels
indeed show that their color and pattern design were similar to the wooden floor parquet of the
condominium units. 73 This means that the design on the hatch door panel was not a product of LEC' s
independent artistic judgment and discretion but rather a mere reproduction of an already existing
design. Verily then, the CA erred in holding that a probable cause for copyright infringement is
imputable against the petitioners. Absent originality and copyrightability as elements of a valid copyright
ownership, no infringement can subsist. WHEREFORE, premises considered, the petition is hereby
GRANTED. The Decision dated July 9, 2010 and Resolution dated February 24, 2011 of the Court of
Appeals in CA-G.R. SP No. 95471 are REVERSED and SET ASIDE. The Resolutions dated March 10, 2006
and May 25, 2006 of the Department of Justice in LS. No. 2004-925 dismissing the complaint for
copyright infringement are REINSTATED. 70 71 72 73 SO ORDERED. Associate Justice Ching v. Salinas, Sr.,
supra note 50. Jones Bros. Co. v. Underkoffler, 16 F. Supp. 729 (M.D. Pa. 1936). Rollo, p. 24. Id. at 209-
210. Decision 17 G.R. No. 195835 WE CONCUR: PRESBITER~ J. VELASCO, JR. Ass6ciate Justice J I~ ,.....
FRANCISH. Associate Justice ATTESTATION I attest that the conclusions in the above Decision had be

A.M. No. 10-7-17-SC February 8, 2011

IN THE MATTER OF THE CHARGES OF PLAGIARISM, ETC., AGAINST ASSOCIATE JUSTICE

MARIANO C. DEL CASTILLO.

RESOLUTION

PER CURIAM:

Petitioners Isabelita C. Vinuya, et al., all members of the Malaya Lolas Organization, seek
reconsideration of the decision of the Court dated October 12, 2010 that dismissed their charges of
plagiarism, twisting of cited materials, and gross neglect against Justice Mariano Del Castillo in
connection with the decision he wrote for the Court in G.R. No. 162230, entitled Vinuya v. Romulo.1

Mainly, petitioners claim that the Court has by its decision legalized or approved of the commission
of plagiarism in the Philippines. This claim is absurd. The Court, like everyone else, condemns
plagiarism as the world in general understands and uses the term.

Plagiarism, a term not defined by statute, has a popular or common definition. To plagiarize, says
Webster, is "to steal and pass off as one’s own" the ideas or words of another. Stealing implies
malicious taking. Black’s Law Dictionary, the world’s leading English law dictionary quoted by the
Court in its decision, defines plagiarism as the "deliberate and knowing presentation of another
person's original ideas or creative expressions as one’s own."2 The presentation of another person’s
ideas as one’s own must be deliberate or premeditated—a taking with ill intent.

There is no commonly-used dictionary in the world that embraces in the meaning of plagiarism
errors in attribution by mere accident or in good faith.

Certain educational institutions of course assume different norms in its application. For instance, the
Loyola Schools Code of Academic Integrity ordains that "plagiarism is identified not through intent
but through the act itself. The objective act of falsely attributing to one’s self what is not one’s work,
whether intentional or out of neglect, is sufficient to conclude that plagiarism has occurred. Students
who plead ignorance or appeal to lack of malice are not excused."3

But the Court’s decision in the present case does not set aside such norm. The decision makes this
clear, thus:
To paraphrase Bast and Samuels, while the academic publishing model is based on the originality of
the writer’s thesis, the judicial system is based on the doctrine of stare decisis, which encourages
courts to cite historical legal data, precedents, and related studies in their decisions. The judge is not
expected to produce original scholarship in every respect. The strength of a decision lies in the
soundness and general acceptance of the precedents and long held legal opinions it draws from.4

Original scholarship is highly valued in the academe and rightly so. A college thesis, for instance,
should contain dissertations embodying results of original research, substantiating a specific
view.5 This must be so since the writing is intended to earn for the student an academic degree,
honor, or distinction. He earns no credit nor deserves it who takes the research of others, copies
their dissertations, and proclaims these as his own. There should be no question that a cheat
deserves neither reward nor sympathy.

But the policy adopted by schools of disregarding the element of malicious intent found in
dictionaries is evidently more in the nature of establishing what evidence is sufficient to prove the
commission of such dishonest conduct than in rewriting the meaning of plagiarism. Since it would be
easy enough for a student to plead ignorance or lack of malice even as he has copied the work of
others, certain schools have adopted the policy of treating the mere presence of such copied work in
his paper sufficient objective evidence of plagiarism. Surely, however, if on its face the student’s
work shows as a whole that he has but committed an obvious mistake or a clerical error in one of
hundreds of citations in his thesis, the school will not be so unreasonable as to cancel his diploma.

In contrast, decisions of courts are not written to earn merit, accolade, or prize as an original piece of
work or art. Deciding disputes is a service rendered by the government for the public good. Judges
issue decisions to resolve everyday conflicts involving people of flesh and blood who ache for
speedy justice or juridical beings which have rights and obligations in law that need to be protected.
The interest of society in written decisions is not that they are originally crafted but that they are fair
and correct in the context of the particular disputes involved. Justice, not originality, form, and style,
is the object of every decision of a court of law.

There is a basic reason for individual judges of whatever level of courts, including the Supreme
Court, not to use original or unique language when reinstating the laws involved in the cases they
decide. Their duty is to apply the laws as these are written. But laws include, under the doctrine of
stare decisis, judicial interpretations of such laws as are applied to specific situations. Under this
doctrine, Courts are "to stand by precedent and not to disturb settled point." Once the Court has "laid
down a principle of law as applicable to a certain state of facts, it will adhere to that principle, and
apply it to all future cases, where facts are substantially the same; regardless of whether the parties
or property are the same."6

And because judicial precedents are not always clearly delineated, they are quite often entangled in
apparent inconsistencies or even in contradictions, prompting experts in the law to build up
regarding such matters a large body of commentaries or annotations that, in themselves, often
become part of legal writings upon which lawyers and judges draw materials for their theories or
solutions in particular cases. And, because of the need to be precise and correct, judges and
practitioners alike, by practice and tradition, usually lift passages from such precedents and writings,
at times omitting, without malicious intent, attributions to the originators.

Is this dishonest? No. Duncan Webb, writing for the International Bar Association puts it succinctly.
When practicing lawyers (which include judges) write about the law, they effectively place their
ideas, their language, and their work in the public domain, to be affirmed, adopted, criticized, or
rejected. Being in the public domain, other lawyers can thus freely use these without fear of
committing some wrong or incurring some liability. Thus:
The tendency to copy in law is readily explicable. In law accuracy of words is everything. Legal
disputes often centre round the way in which obligations have been expressed in legal documents
and how the facts of the real world fit the meaning of the words in which the obligation is contained.
This, in conjunction with the risk-aversion of lawyers means that refuge will often be sought in
articulations that have been tried and tested. In a sense therefore the community of lawyers have
together contributed to this body of knowledge, language, and expression which is common property
and may be utilized, developed and bettered by anyone.7

The implicit right of judges to use legal materials regarded as belonging to the public domain is not
unique to the Philippines. As Joyce C. George, whom Justice Maria Lourdes Sereno cites in her
dissenting opinion, observed in her Judicial Opinion Writing Handbook:

A judge writing to resolve a dispute, whether trial or appellate, is exempted from a charge of
plagiarism even if ideas, words or phrases from a law review article, novel thoughts published in a
legal periodical or language from a party’s brief are used without giving attribution. Thus judges are
free to use whatever sources they deem appropriate to resolve the matter before them, without fear
of reprisal. This exemption applies to judicial writings intended to decide cases for two reasons: the
judge is not writing a literary work and, more importantly, the purpose of the writing is to resolve a
dispute. As a result, judges adjudicating cases are not subject to a claim of legal plagiarism.8

If the Court were to inquire into the issue of plagiarism respecting its past decisions from the time of
Chief Justice Cayetano S. Arellano to the present, it is likely to discover that it has not on occasion
acknowledged the originators of passages and views found in its decisions. These omissions are
true for many of the decisions that have been penned and are being penned daily by magistrates
from the Court of Appeals, the Sandiganbayan, the Court of Tax Appeals, the Regional Trial Courts
nationwide and with them, the municipal trial courts and other first level courts. Never in the
judiciary’s more than 100 years of history has the lack of attribution been regarded and demeaned
as plagiarism.

This is not to say that the magistrates of our courts are mere copycats. They are not. Their decisions
analyze the often conflicting facts of each case and sort out the relevant from the irrelevant. They
identify and formulate the issue or issues that need to be resolved and evaluate each of the laws,
rulings, principles, or authorities that the parties to the case invoke. The decisions then draw their
apt conclusions regarding whether or not such laws, rulings, principles, or authorities apply to the
particular cases before the Court. These efforts, reduced in writing, are the product of the judges’
creativity. It is here—actually the substance of their decisions—that their genius, originality, and
honest labor can be found, of which they should be proud.

In Vinuya, Justice Del Castillo examined and summarized the facts as seen by the opposing sides in
a way that no one has ever done. He identified and formulated the core of the issues that the parties
raised. And when he had done this, he discussed the state of the law relevant to their resolution. It
was here that he drew materials from various sources, including the three foreign authors cited in the
charges against him. He compared the divergent views these present as they developed in history.
He then explained why the Court must reject some views in light of the peculiar facts of the case and
applied those that suit such facts. Finally, he drew from his discussions of the facts and the law the
right solution to the dispute in the case. On the whole, his work was original. He had but done an
honest work.

The Court will not, therefore, consistent with established practice in the Philippines and elsewhere,
dare permit the filing of actions to annul the decisions promulgated by its judges or expose them to
charges of plagiarism for honest work done.
This rule should apply to practicing lawyers as well. Counsels for the petitioners, like all lawyers
handling cases before courts and administrative tribunals, cannot object to this. Although as a rule
they receive compensation for every pleading or paper they file in court or for every opinion they
render to clients, lawyers also need to strive for technical accuracy in their writings. They should not
be exposed to charges of plagiarism in what they write so long as they do not depart, as officers of
the court, from the objective of assisting the Court in the administration of justice.

As Duncan Webb said:

In presenting legal argument most lawyers will have recourse to either previous decisions of the
courts, frequently lifting whole sections of a judge’s words to lend weight to a particular point either
with or without attribution. The words of scholars are also sometimes given weight, depending on
reputation. Some encyclopaedic works are given particular authority. In England this place is given
to Halsbury’s Laws of England which is widely considered authoritative. A lawyer can do little better
than to frame an argument or claim to fit with the articulation of the law in Halsbury’s. While in many
cases the very purpose of the citation is to claim the authority of the author, this is not always the
case. Frequently commentary or dicta of lesser standing will be adopted by legal authors, largely
without attribution.

xxxx

The converse point is that originality in the law is viewed with skepticism. It is only the arrogant fool
or the truly gifted who will depart entirely from the established template and reformulate an existing
idea in the belief that in doing so they will improve it. While over time incremental changes occur, the
wholesale abandonment of established expression is generally considered foolhardy.9

The Court probably should not have entertained at all the charges of plagiarism against Justice Del
Castillo, coming from the losing party. But it is a case of first impression and petitioners, joined by
some faculty members of the University of the Philippines school of law, have unfairly maligned him
with the charges of plagiarism, twisting of cited materials, and gross neglect for failing to attribute
lifted passages from three foreign authors. These charges as already stated are false, applying the
meaning of plagiarism as the world in general knows it.

True, Justice Del Castillo failed to attribute to the foreign authors materials that he lifted from their
works and used in writing the decision for the Court in the Vinuya case. But, as the Court said, the
evidence as found by its Ethics Committee shows that the attribution to these authors appeared in
the beginning drafts of the decision. Unfortunately, as testified to by a highly qualified and
experienced court-employed researcher, she accidentally deleted the same at the time she was
cleaning up the final draft. The Court believed her since, among other reasons, she had no motive
for omitting the attribution. The foreign authors concerned, like the dozens of other sources she cited
in her research, had high reputations in international law.1aw phi 1

Notably, those foreign authors expressly attributed the controversial passages found in their works to
earlier writings by others. The authors concerned were not themselves the originators. As it
happened, although the ponencia of Justice Del Castillo accidentally deleted the attribution to them,
there remained in the final draft of the decision attributions of the same passages to the earlier
writings from which those authors borrowed their ideas in the first place. In short, with the remaining
attributions after the erroneous clean-up, the passages as it finally appeared in the Vinuya decision
still showed on their face that the lifted ideas did not belong to Justice Del Castillo but to others. He
did not pass them off as his own.
With our ruling, the Court need not dwell long on petitioners’ allegations that Justice Del Castillo had
also committed plagiarism in writing for the Court his decision in another case, Ang Ladlad v.
Commission on Elections.10 Petitioners are nit-picking. Upon close examination and as Justice Del
Castillo amply demonstrated in his comment to the motion for reconsideration, he in fact made
attributions to passages in such decision that he borrowed from his sources although they at times
suffered in formatting lapses.

Considering its above ruling, the Court sees no point in further passing upon the motion of the
Integrated Bar of the Philippines for leave to file and admit motion for reconsideration-in-intervention
dated January 5, 2011 and Dr. Peter Payoyo’s claim of other instances of alleged plagiarism in the
Vinuya decision.

ACCORDINGLY, the Court DENIES petitioners’ motion for reconsideration for lack of merit.

SO ORDERED.

RENATO C. CORONA
Chief Justice

ANTONIO T. CARPIO CONCHITA CARPIO MORALES

Associate Justice Associate Justice

PRESBITERO J. VELASCO, JR. ANTONIO EDUARDO B. NACHURA

Associate Justice Associate Justice

TERESITA J. LEONARDO-DE CASTRO ARTURO D. BRION

Associate Justice Associate Justice

DIOSDADO M. PERALTA LUCAS P. BERSAMIN

Associate Justice Associate Justice

MARIANO C. DEL CASTILLO ROBERTO A. ABAD

Associate Justice Associate Justice

MARTIN S. VILLARAMA, JR. JOSE PORTUGAL PEREZ

Associate Justice Associate Justice

JOSE CATRAL MENDOZA MARIA LOURDES P. A. SERENO

Associate Justice Associate Justice

Footnotes

1 April 28, 2010.

2 Black’s Law Dictionary (8th Edition, 2004).

 3 Available at http://www.admu.edu.ph/index.php?p=120&type=2&sec=25&aid=9149.

4In the Matter of the Charges of Plagiarism, etc., Against Associate Justice Mariano C. Del
Castillo, A.M. No. 10-7-17-SC, October 12, 2010.

5 Webster’s Third New International Dictionary, p. 2374.

6 Black’s Law Dictionary (6th Edition, 1990), p. 1406.

7Duncan Webb, Plagiarism: A Threat to Lawyers’ Integrity? Published by the International

Bar Association, available online
at http://www.ibanet.org/Article/Detail.aspx?ArticleUid=bc2ef7cd-3207-43d6-9e87-
16c3bc2be595.

8Joyce C. George, Judicial Opinion Writing Handbook (2007), p. 725, cited by Justice Maria
Lourdes Sereno in her dissenting opinion.

9 Supra note 7.

10 G.R. No. 190582, April 8, 2010.

The Lawphil Project - Arellano Law Foundation

DISSENTING OPINION

CARPIO, J.:

I dissent on two grounds. First, this Court has no jurisdiction to decide in an administrative
case whether a sitting Justice of this Court has committed misconduct in office as this power
belongs exclusively to Congress. Second, in writing judicial decisions a judge must comply with the
Law on Copyright1 as the judge has no power to exempt himself from the mandatory requirements of
the law.

I. Disciplining Authority of Impeachable Officers

Under the Constitution, the sole disciplining authority of all impeachable officers, including Justices
of this Court, is Congress. Section 3(1), Article XI of the Constitution provides that, "The House of
Representatives shall have the exclusive power to initiate all cases of impeachment." Likewise,
Section 3(6) of the same Article provides that, "The Senate shall have the sole power to try and
decide cases of impeachment." These provisions constitute Congress as the exclusive authority to
discipline all impeachable officers for any impeachable offense, including "betrayal of public
trust," a "catchall phrase"2 to cover any misconduct involving breach of public trust by an
impeachable officer.

While impeachment is often described as a political process, it also functions as the equivalent of
administrative disciplinary proceedings against impeachable officers. Impeachable officers are not
subject to administrative disciplinary proceedings either by the Executive or Judicial branch, in the
same manner that non-impeachable officers are subject. Thus, impeachment by Congress takes
the place of administrative disciplinary proceedings against impeachable officers as there is
no other authority that can administratively discipline impeachable officers.3 Removal from
office and disqualification to hold public office,4 which is the penalty for an impeachable offense,5 is
also the most severe penalty that can be imposed in administrative disciplinary proceedings.

Impeachment is not a criminal proceeding because conviction in an impeachment complaint is not a

bar to criminal prosecution for the same act.6 An impeachable offense, like betrayal of public trust,
may not even constitute a criminal act. Like in an administrative proceeding, proof beyond
reasonable doubt is not required for conviction in impeachment. If an impeachable officer is charged
of a crime, as distinguished from an administrative charge, the proper court has jurisdiction to try
such impeachable officer because the proceeding is criminal, not administrative. However, neither
the conviction nor acquittal of such impeachable officer in the criminal case constitutes a bar to his
subsequent impeachment by Congress. There is no double jeopardy because impeachment is not a
criminal proceeding.7

Only Congress, as the exclusive disciplining authority of all impeachable officers, can decide in a
non-criminal, non-civil proceeding8 whether a sitting Justice of this Court has committed plagiarism.
Plagiarism is a betrayal of public trust because, as the majority puts it, to plagiarize is "‘to steal and
pass off as one’s own’ the ideas of another."9 However, in writing judicial decisions a judge is
liable for plagiarism only if the copying violates the moral rights of the author under the Law on
Copyright.

This Court may conduct an investigation of an administrative complaint against a sitting Justice to
determine if there is basis in recommending to the House of Representatives the initiation of an
impeachment complaint against the sitting Justice. This Court may also conduct an investigation of
an administrative complaint against a sitting Justice to determine if the complaint constitutes
contempt of this Court. However, this Court has no power to decide on the guilt or innocence of
a sitting Justice in the administrative complaint because such act is a usurpation of the
exclusive disciplinary power of Congress over impeachable officers under the Constitution.
Any decision by this Court in an administrative case clearing a sitting Justice of an impeachable
offense is void for want of jurisdiction and for violation of an express provision of the Constitution.

Such a decision will put this Court on a collision course with Congress if subsequently an
impeachment complaint for plagiarism is filed with Congress against the sitting Justice. Incidentally,
an impeachment complaint has already been filed in the House of Representatives involving the
same complaint subject of this administrative case. If the House of Representatives decides to take
cognizance of the complaint and initiates an impeachment based on the same administrative
complaint that this Court had already dismissed as baseless, then this Court would have created a
constitutional crisis that could only weaken the public’s faith in the primacy of the Constitution.

The Supreme Court cannot assume jurisdiction over an administrative complaint against a sitting
Justice of this Court by invoking Section 6, Article VIII of the Constitution. This provision states that
the "Supreme Court shall have administrative supervision over all courts and the personnel thereof."
This provision refers to the administrative supervision that the Department of Justice used to
exercise over the courts and their personnel, as shown by the folowing exchange during the
deliberations of the Constitutional Commission:

MR. GUINGONA: xxx.

The second question has reference to Section 9, about the administrative supervision over all courts
to be retained in the Supreme Court. I was wondering if the Committee had taken into consideration
the proposed resolution for the transfer of the administrative supervision from the Supreme Court to
the Ministry of Justice. But as far as I know, none of the proponents had been invited to explain or
defend the proposed resolution.

Also, I wonder if the Committee also took into consideration the fact that the UP Law Constitution
Project in its Volume I, entitled: Annotated Provision had, in fact, made this an alternative proposal,
the transfer of administrative supervision from the Supreme Court to the Ministry of Justice.

Thank you.

MR. CONCEPCION: May I refer the question to Commissioner Regalado?

THE PRESIDING OFFICER (Mr. Sarmiento): Commissioner Regalado is recognized.

MR. REGALADO: Thank you, Mr. Presiding Officer.

We did invite Minister Neptali Gonzales, who was the proponent for the transfer of supervision of the
lower courts to the Ministry of Justice. I even personally called up and sent a letter or a short note
inviting him, but the good Minister unfortunately was enmeshed in a lot of official commitments. We
wanted to hear him because the Solicitor General of his office, Sedfrey Ordoñez, appeared before
us, and asked for the maintenance of the present arrangement wherein the supervision over lower
courts is with the Supreme Court. But aside from that, although there were no resource persons, we
did further studies on the feasibility of transferring the supervision over the lower courts to the
Ministry of Justice. All those things were taken into consideration motu proprio.10

For sure, the disciplinary authority of the Supreme Court over judges is expressly govened by
another provision, that is, Section 11, Article VIII of the Constitution. Section 11 provides:

Section 11. xxx The Supreme Court en banc shall have the power to discipline judges of lower
courts, or order their dismissal by a vote of a majority of the Members who actually took part in the
deliberations on the issues in the case and voted thereon. (Emphasis supplied)

Clearly, the disciplinary authority of the Supreme Court over judges is found in Section 11 of Article
VIII. However, this disciplinary authority is expressly limited to lower court judges, and does not
incude Supreme Court Justices, precisely because the Constitution expressly vests exclusively on
Congress the power to discipline Supreme Court Justices. By excluding Supreme Court Justices,
Section 11 withholdsfrom the Supreme Court en banc the power to discipline its own members.

The Judicial Conduct and Disability Act of 1980 of the United States, which gives judicial
councils composed of federal judges the power to discipline federal judges short of removal from
office, does notapply to Justices of the United States Supreme Court who are subject to discipline
only by the United States Congress. Morever, a similar law cannot be enacted in the Philippines
bacause all lower court judges are subject to discipline by the Supreme Court en banc under Section
11, Article VIII of the Constitution. Thus, reference to the Judicial Conduct and Disability Act of
1980 is inappropriate in this jurisdiction.

I submit that this Court recall the Resolution of 12 October 2010 subject of the present motion for
reconsideration for lack of jurisdiction to decide the administrative complaint against Justice Mariano
C. Del Castillo.

II. The Judge Must Follow the Law on Copyright

a. Copying from Works of the Government

In writing judicial decisions, a judge should make the proper attribution in copying passages from
any judicial decision, statute, regulation, or other Works of the Government. The Manual of
Judicial Writing adopted11 by this Court provides how such attribution should be made.

However, the failure to make such attribution does not violate the Law on Copyright.12 The law
expressly provides that Works of the Government are not subject to copyright.13 This means that
there is neither a legal right by anyone to demand attribution, nor any legal obligation from anyone to
make an attribution, when Works of the Government are copied. The failure to make the proper
attribution of a Work of the Government is not actionable but is merely a case of sloppy writing.
Clearly, there is no legal obligation, by a judge or by any person, to make an attribution when
copying Works of the Government.

However, misquoting or twisting, with or without attribution, any judicial decision, statute, regulation
or other Works of the Government in judicial writing, if done to mislead the parties or the public,
is actionable. Under Canon 3 of the Code of Judicial Conduct, a judge "should perform official
duties honestly."14 Rule 3.01]15 and Rule 3.0216 of the Code provide that a judge must be faithful to
the law, maintain professional competence, and strive diligently to ascertain the facts and the
applicable law.

The foregoing applies to any non-copyrightable work, and any work in the public domain, whether
local or foreign.

b. Copying from Pleadings of Parties

In writing judicial decisions, the judge may copy passages from the pleadings of the parties with
proper attribution to the author of the pleading. However, the failure to make the proper attribution is
not actionable.

Pleadings are submitted to the court precisely so that the pleas, or the arguments written on the
pleadings, are accepted by the judge. There is an implied offer by the pleader that the judge
may make any use of the pleadings in resolving the case. If the judge accepts the pleader’s
arguments, he may copy such arguments to expedite the resolution of the case. In writing his
decision, the judge does not claim as his own the arguments he adopts from the pleadings of the
parties. Besides, the legal arguments in the pleadings are in most cases merely reiterations of
judicial precedents, which are Works of the Government.

However, misquoting or twisting, with or without attribution, any passage from the pleadings of the
parties, if done to mislead the parties or the public, is actionable. Under Canon 3 of the Code of
Judicial Conduct, a judge "should perform official duties honestly." Rule 3.01 and Rule 3.02 of the
Code provide that a judge must be faithful to the law, maintain professional competence, and strive
diligently to ascertain the facts and the applicable law.

c. Copying from Textbooks, Journals and other Non-Government Works

In writing judicial decisions, the judge may copy passages from textbooks, journals and other non-
government works with proper attribution. However, whether the failure to make the proper
attribution is actionable or not depends on the nature of the passages copied.
If the work copied without proper attribution is copyrighted, the failure to make such attribution
violates Section 193 of the Intellectual Property Code, which provides:

Section 193. Scope of Moral Rights. The author of a work shall, independently of the economic
rights in Section 177 or the grant of an assignment or license with respect to such right, have the
right:

193.1. To require that the authorship of the works be attributed to him, in particular, the right
that his name, as far as practicable, be indicated in a prominent way on the copies, and in
connection with the public use of his work;

xxxx

193.3 To object to any distortion, mutilation or other modification of, or other derogatory action in
relation to his work which would be prejudicial to his honor or reputation;

x x x x. (Emphasis supplied)

Section 184(k) of the Intellectual Property Code expressly allows, as a limitation on the copyright or
economic rights of the author, "any use made of a work for the purpose of any judicial
proceedings x x x."17 Section 184(k) clearly authorizes a judge to copy copyrighted works for "any
use" in judicial proceedings, which means the judge, in writing his decision, can copy passages
beyond the quantitative limitations of "fair-use" under Section 184(b). This is the significance of
Section 184(k), allowing the judge to copy lengthy passages of copyrighted work even beyond what
is required by fair-use. Section 184(k) is silent on the obligation of the judge to make the proper
attribution, unlike Section 184(b) on fair-use by the public which expressly requires a proper
attribution.

However, Section 193 nevertheless requires anyone, including a judge writing a judicial decision, to
make the proper attribution to show respect for the moral rights of the author. Thus, while the author
has no right to demand economic compensation from the judge or the government for the unlimited
and public use of his work in a judicial decision, the law requires that "the authorship of the works
be attributed to him x x x in connection with the public use of his work." In short, the judge is
legally obligated to make the proper attribution because Section 193 protects the moral rights of the
author.

The moral rights under Section 193 of the Intellectual Property Code arise only if the work of an
author is copyrighted. If the work is not copyrighted, then there are no moral rights to the work. If the
passages in a textbook, journal article, or other non-work of the government are merely quotations
from Works of the Government, like sentences or paragraphs taken from judicial decisions, then
such passages if copied by a judge do not require attribution because such passages, by
themselves, are Works of the Government. The same is true for works in the public domain.

However, the arrangement or presentation of passages copied from Works of the Government may
be subject to copyright,18 and a judge copying such arrangement or presentation, together with the
passages, may have to make the proper attribution. If the passages are those of the author himself,
and not copied from Works of the Government or from works in the public domain, then clearly there
is a legal obligation on the part of the judge to make the proper attribution. Failure by the judge to
make such attribution violates not only Section 193 of the Intellectual Property Code, but also Canon
3 of the Code of Judicial Conduct.
The moral rights of an author are independent of the author’s economic rights to his work in the
sense that even if the author assigns his work, the moral rights to the work remain with him, being
inalienable.19 Any violation of an author’s moral rights entitles him to the same remedies as a
violation of the economic rights to the work,20 whether such economic rights are still with him or have
been assigned to another party. Thus, while called "moral rights," these rights are legally
enforceable.

Two essential elements of an author’s moral rights are the right to attribution and the right to
integrity. The right to attribution or paternity21 is the right of the author to be recognized as the
originator or father of his work, a right expressly recognized in Section 193.1 of the Intellectual
Property Code. The right to integrity is the right of the author to prevent any distortion or
misrepresentation of his work, a right expressly recognized in Section 193.3 of the Code. The
Legislature incorporated the moral rights of an author in the Intellectual Property Code in compliance
with the treaty obligations of the Philippines under the Berne Convention, which requires treaty
states to enact legislation protecting the moral rights of authors.22

The rationale behind moral rights is explained in a local intellectual property textbook, citing
American jurisprudence:

The term moral rights has its origins in the civil law and is a translation of the French le droit moral,
which is meant to capture those rights of a spiritual, non-economic and personal nature. The rights
spring from a belief that an artist in the process of creation injects his spirit into the work and that the
artist’s personality, as well as the integrity of the work, should therefore be protected and preserved.
Because they are personal to the artist, moral rights exist independently of an artist’s copyright in his
or her work. While the rubric of moral rights encompasses many varieties of rights, two are
protected in nearly every jurisdiction recognizing their existence: attribution and integrity.
The right of attribution generally consists of the right of an artist to be recognized by name as
the author of his work or to publish anonymously or pseudonymously, the right to prevent
the author’s work from being attributed to someone else, and to prevent the use of the
author’s name on works created by others, including distorted editions of the author’s
original work. The right of integrity allows the author to prevent any deforming or mutilating
changes to his work, even after title of the work has been transferred. In some jurisdictions, the
integrity right also protects artwork from destruction. Whether or not a work of art is protected from
destruction represents a fundamentally different perception of the purpose of moral rights. If integrity
is meant to stress the public interest in preserving a nation’s culture, destruction is prohibited; if the
right is meant to emphasize the author’s personality, destruction is seen as less harmful than the
continued display of deformed or mutilated work that misrepresents the artist and destruction may
proceed.23 (Emphasis supplied)

When a judge respects the right to attribution and integrity of an author, then the judge observes
intellectual honesty in writing his decisions. Writing decisions is the most important official duty of a
judge, more so of appellate court judges. Conversely, if a judge fails to respect an author’s right to
attribution and integrity, then the judge fails to observe intellectual honesty in the performance of his
official duties, a violation of Canon 3 of the Code of Judicial Conduct.

The duty of a judge to respect the moral rights of an author is certainly not burdensome on the
performance of his official duties. All the reference materials that a judge needs in writing judicial
decisions are either Works of the Government or works in the public domain. A judge must base
his decision on the facts and the law,24 and the facts and the law are all in the public
domain. There is no need for a judge to refer to copyrighted works. When a judge ventures to
refer to copyrighted works by copying passages from such works, he immediately knows he is
treading on protected works, and should readily respect the rights of the authors of those works. The
judge, whose most important function is to write judicial decisions, must be the first to respect the
rights of writers whose lives and passions are dedicated to writing for the education of humankind.

Besides, Section 184(k) of the Intellectual Property Code already generously allows the judge
unlimited copying of copyrighted works in writing his judicial decisions. The Code, however, does not
exempt the judge from recognizing the moral rights of the author. The basic rule of human relations,
as embodied in Article 19 of the Civil Code, requires that the judge should give to the author of the
copyrighted work what is due him. Thus, Article 19 states: "Every person must, in the exercise of his
rights and in the performance of his duties, act with justice, give everyone his due, and observe
honesty and good faith."

d. Difference from the Academe

Academic writing, such as writing dissertations or articles in academic journals, is governed by

standards different from judicial decision writing. The failure to make the proper attribution for
passages copied from Works of the Government is not actionable against a judge when writing a
judicial decision. However, the same failure by a student or a faculty member may be deemed
plagiarism in the academe, meriting a severe administrative penalty. Nevertheless, the Judiciary
and the academe should have the same rule when it comes to copyrighted works. In every case,
there is a legal duty to make the proper attribution when copying passages from copyrighted
works because the law expressly requires such attribution without exception.

The academe requires that passages copied from Works of the Government, works in the public
domain, and non-copyrighted works should be properly attributed in the same way as copyrighted
works. The rationale is to separate the original work of the writer from the works of other authors in
order to determine the original contribution of the writer to the development of a particular art or
science. This rationale does not apply to the Judiciary, where adherence to jurisprudential
precedence is the rule. However, if a judge writes an article for a law journal, he is bound by the
same rules governing academic writing.25

ACCORDINGLY, I vote to RECALL the Resolution of 12 October 2010 subject of the present motion
for reconsideration as this Court’s jurisdiction extends only to a determination whether the
administrative complaint against Justice Mariano C. Del Castillo constitutes contempt of this Court.

ANTONIO T. CARPIO
Associate Justice

Footnotes

1 Part IV, Intellectual Property Decree (Republic Act No. 8293).

2Volume II, Records of the Constitutional Commission, p. 272. The following exchange took
place during the deliberations of the Constitutional Commission:

MR. REGALADO: Thank you, Madam President.

xxx
 First, this is with respect to Section 2, on the grounds for impeachment, and I quote:

. . . culpable violation of the Constitution, treason, bribery, other high crimes, graft
and corruption or betrayal of public trust.

Just for the record, what would the Committee envision as a betrayal of the public
trust which is not otherwise covered by the other terms antecedent thereto?

MR. ROMULO: I think, if I may speak for the Committee and subject to further
comments of Commissioner de los Reyes, the concept is that this is a catchall
phrase. Really, it refers to his oath of office, in the end that the idea of a public trust
is connected with the oath of office of the officer, and if he violates that oath of office,
then he has betrayed that trust.

MR. REGALADO: Thank you.

MR. MONSOD: Madam President, may I ask Commissioner de los Reyes to perhaps
add to those remarks.

THE PRESIDENT: Commissioner de los Reyes is recognized.

MR. DE LOS REYES: The reason I proposed this amendment is that during the
Regular Batasang Pambansa when there was a move to impeach then President
Marcos, there were arguments to the effect that there is no ground for impeachment
because there is no proof that President Marcos committed criminal acts which are
punishable, or considered penal offenses. And so the term "betrayal of public
trust," as explained by Commissioner Romulo, is a catchall phrase to include
all acts which are not punishable by statutes as penal offenses but,
nonetheless, render the officer unfit to continue in office. It includes betrayal of
public interest, inexcusable negligence of duty, tyrannical abuse of power,
breach of official duty by malfeasance or misfeasance cronyism, favoritism,
etc. to the prejudice of public interest and which tend to bring the office into
disrepute. That is the purpose, Madam President. Thank you.

MR. ROMULO: If I may add another example, because Commissioner Regalado

asked a very good question. This concept would include, I think, obstruction of justice
since in his oath he swears to do justice to every man; so if he does anything that
obstructs justice, it could be construed as a betrayal of the public trust. Thank you.
(Emphasis supplied)

3
The 1993 Report of the National Commission on Judicial Discipline & Removal of the
United States (http://judicial-discipline-
reform.org/judicial_complaints/1993_Report_Removal.pdf, pp. 17-18) concluded
that impeachment is the exclusive mode of removing federal judges from office, thus:

Nevertheless, the Commission concludes that Congress may not provide for removal
as a criminal penalty. If removal may lawfully follow on conviction for a federal judge,
then it may do so for the Vice President of the United States or perhaps even the
President. But if the constitutional grant of a term of office to the Vice President and
President prevails against any provision for removal in the criminal law, the same
should be true of the tenure the Constitution grants to judges. The Constitution quite
explicitly separates impeachment and removal from the ordinary criminal process.
 The Commission does not believe that Congress's power to punish crimes is an
exception to judicial life tenure, or alternatively a way in which good behavior may be
inquired into, in the way that the impeachment process clearly is.

xxxx

The Commission concludes that a statute providing for the removal from office of
judges who serve on good behavior under Article III by means other than
impeachment and conviction would be unconstitutional. (Emphasis supplied;
citations omitted)

4Section 3(7), Article XI of the Constitution provides: "Judgment in cases of impeachment

shall not extend further than removal from office and disqualification to hold any office under
the Republic of the Philippines, but the party convicted shall nevertheless be liable and
subject to prosecution, trial, and punishment according to law."

5
There are those who, with good reason, believe that removal from office is the maximum
penalty in impeachment and thus there can be lesser penalties like censure. See Joseph
Isenbergh, Impeachment and Presidential Immunity from Judicial Process, 18 Yale Law &
Policy Review 53 (1999).

6 See note 4.

7Professor Laurence H. Tribe writes: "The independence of the process of impeachment and
criminal prosecution is highlighted by the case of Judge Alcee Hastings, who was acquitted
of bribery by a federal jury in 1983, but was subsequently impeached by the House and
convicted by the Senate for the same offense – and for testifying falsely about it under oath
at his federal criminal trial. Similarly, Judge Walter Nixon was impeached by the House and
convicted by the Senate in 1989 for falsely testifying under oath before a federal grand jury
investigating Judge Nixon’s improper discussions with a state prosecutor in a case involving
a business acquaintance’s son, despite an earlier acquittal in a federal prosecution for
bribery arising out of those very events. And, although this precise sequence is not
addressed by Article I, Section 3, clause 7, it should also be possible for an official to be
acquitted by the Senate in an impeachment trial but subsequently convicted of the same
underlying acts in a federal court. The Senate’s acquittal, after all, could well represent a
determination merely that the charged offenses were not impeachable, or that the nation
would be harmed more than protected by pronouncing the official guilty." American
Constitutional Law, Volume 1 (3rd edition), pp. 159-160.

8An author whose moral rights under the Law on Copyright are infringed by a judge in his
judicial decision may file a civil case in court against such judge. See discussion on The
Judge Must Follow the Law on Copyright, infra.

9 Quoting Black’s Law Dictionary.

10 Volume I, Records of the Constitutional Commission, pp. 456-457.

11 Approved by the En Banc on 15 November 2005.

Part IV of RA No. 8293, otherwise known as the "Intellectual Property Code of the
12

Philippines."
 Section 176 of RA No. 8293 provides: "Works of the Government. No copyright shall
13

subsist in any work of the Government of the Philippines. xxx."

Canon 3 of the Code of Judicial Conduct provides: "A judge should perform official duties
14

honestly, and with impartiality and diligence."

Rule 3.01 of the Code of Judicial Conduct provides: "A judge shall be faithful to the law and
15

maintain professional competence."

16Rule 3.02 of the Code of Judicial Conduct provides: "In every case, a judge shall
endeavour diligently to ascertain the facts and the applicable law, unswayed by partisan
interests, public opinion or fear of criticism."

17
Section 184 (k) of RA No. 8293 provides: "Limitations on Copyright. 184.1. Notwithstanding
the provisions of Chapter V [on copyright and economic rights], the following acts shall not
constitute infringement of copyright:

(a) x x x x

xxxx

(k) Any use made of a work for the purpose of any judicial proceedings or for the
giving of professional advice by a legal practitioner."

18 Section173.1 (b), Intellectual Property Code.

Section 198.1 of the Intellectual Property Code provides that the "[moral] rights of an author
19

x x x shall not be assignable or subject to license."

20 Section 119, Intellectual Property Code.

21 Roger E. Schechter and John R. Thomas, Intellectual Property (2003), p. 19.

22 Vicente B. Amador, Copyright under the Intellectual Property Code (1998), p. 570.

Id. p. 569, citing John Carter, John Swing and John Veronis v. Helmsley-Spear, Inc. and
23

Associates, U.S. Court of Appeals for 2nd Circuit, 1 December 1995.

24Article 8 of the Civil Code provides: "Judicial decisions applying or interpreting the laws or
the Constitution shall form part of the legal system of the Philippines."

25In the Matter of Hon. Thomas E. Brennan, Jr., Judge, 55th District, Mason, Michigan, 433
Mich. 1204, 447 N.W.2d 712 (6 November 1989) . In this case, Judge Brennan, Jr. submitted
an article to a law review for publication. The article failed to acknowledge several passages
copied from law journal articles of two other authors. The Michigan Judicial Tenure
Commission recommended to the Supreme Court of Michigan that Judge Brennan, Jr. be
publicly censured for misconduct. Interestingly, Judge Brennan, Jr. (a state judge) admitted
his misconduct and made the following manifestation:

Respondent Thomas E. Brennan, Jr., of the 55th District Court, Ingham County,
Michigan, acknowledges notice and receipt of the Judicial Tenure Commission's
 Decision and Recommendation for Order of Discipline dated September 12, 1989,
and stipulates to the Judicial Tenure Commission's findings as recited in paragraphs
one (1) through six (6) thereof;

Respondent further affirmatively acknowledges the impropriety of his conduct

as set forth in the Decision and Recommendation for Order of Discipline, and
pursuant to MCR 9.221(C), consents to the Commission's recommendation that
he be publicly censured.

Respondent further concurs in the request of the Judicial Tenure Commission that an
order embodying the foregoing disciplinary action be entered immediately by the
Michigan Supreme Court. (Emphasis supplied)

The Lawphil Project - Arellano Law Foundation

DISSENTING OPINION

SERENO, J.:

Judges need not strain themselves to meet inapplicable standards of research and attribution of
sources in their judicial opinions, nor seek to achieve the scholarly rigidity or thoroughness observed
in academic work. They need to answer to only two standards – diligence and honesty. By honesty
here is meant that good faith attempt to attribute to the author his original words and analysis.

Even if a judge has to rely in large part on the drafts of his legal researchers, the work of a diligent
and honest judge will never display the severe plagiarism evident in the Vinuya Decision published
under the name of Justice Mariano C. del Castillo. A judge will only find himself in the same
predicament as Justice del Castillo if two situations coincide: (1) the judge wittingly or unwittingly
entrusts a legal researcher with the task of drafting his judicial opinion, and the legal researcher
decides to commit severe plagiarism; and (2) the judge: (a) does not read and study the draft
decision himself; (b) even if he does read and study the same, the "red flags" that are self-evident in
the draft decision completely escape him; or (c) despite having seen the red flags, he ignores them.

We use the words "severe plagiarism" here deliberately because not only were three (3) works of the
four (4) complaining authors1 plagiarized in Vinuya, text from the following copyrighted works was
copied without attribution as well: essays contributed by Robert McCorquodale and Phoebe Okowa
to the book International Law, edited by Malcolm Evans; an article written by Mariana Salazar
Albornoz, entitled Legal Nature and Legal Consequences of Diplomatic Protection: Contemporary
Challenges; an article written by Elizabeth Prochaska, entitled Testing the Limits of Diplomatic
Protection: Khadr v. The Prime Minister of Canada; a report by Larry Niksch, entitled Japanese
Military’s Comfort Women; and an article by James Ladino, entitled Ianfu: No Comfort Yet for Korean
Comfort Women and the Impact of House Resolution 121. In addition, incorporated into Vinuya were
excerpts from a decision of an international tribunal without any signal given to the reader that the
words were not those of Justice del Castillo of the Philippine Supreme Court but the words of
another tribunal. While there are views that a judge cannot be guilty of plagiarism for failure to
recognize foreign decisions as source materials in one’s judicial writing – as when Justice Antonio C.
Carpio opines that a judge cannot be guilty on this score alone – it is beyond debate that there is a
duty of care to attribute to these foreign and international judicial decisions properly, and that one
should never present these materials as if they are one’s own.

An estimate of the extent of the plagiarism in the Vinuya Decision has been made by my office. The
best approximation available to us, using the "word count" feature of Microsoft Word, reveals that
52.9% of the words used in the VinuyaDecision’s discussion on international law, which begins in
page 24 and continues to the end (2,869 out of 5,419 words), are copied without attribution from
other works.

The Vinuya Decision, therefore, because of the severity of the plagiarism attending it, is the worst
possible context for the Majority to draw, in its Decision dated 12 October 2010 and in its Resolution
denying the Motion for Reconsideration, the following conclusions:

1. that plagiarism requires the element of "malicious intent";

2. that – calibrating its ruling in response to the outcry of the academic community after the
Majority Decision was issued – the rules against plagiarism applicable to the academic
community do not apply to judicial decisions;

3. that the standard of attribution applicable to judicial decisions is effectively, no standard at

all – a judge cannot be guilty of plagiarism as understood by the academic world, and neither
is he liable for copying without attribution, even from copyrighted materials;

4. that this lack of liability extends as well to benefit lawyers in the submission of their
pleadings before courts; and

5. that on the whole, the Vinuya Decision is the product of hard, honest, original work.

In the course of the resolution of the Motion for Reconsideration, I have found myself counter-
accused of having copied the works of others without attribution. I have debunked each of these
claims and lay them bare in this Dissent. I have even proven that it was one of my co-authored
works that was copied without attribution being given to me and to my co-authors. The theory
propounded against me is that I cannot conclude that the Vinuya Decision is partly a product of
plagiarism unless I am willing to call myself a plagiarist as well. I emphasize, however, my original
thesis – that a diligent and honest judge or researcher will never find himself to have plagiarized,
even unwittingly, to the same extent that plagiarism occurred in the Vinuya Decision. Herein lies the
safety of a researcher – a habit of trying to give recognition where recognition is due. Should any of
my works, wherein I failed to make proper attribution, surface, I will do what I have recommended
that the author of the Vinuya Decision do: acknowledge the wrong, apologize to the wronged, and
correct the work. See pages 58 to 75 herein for a discussion on the counter-accusations leveled
against me.

Irrespective of the outcome of my analysis, let it be stated that this Dissent does not make any
pronouncement regarding the jurisdiction of this Court over the complaint for plagiarism against
Justice del Castillo. My esteemed colleague Justice Carpio is convinced that Congress is the sole
disciplining authority of all impeachable officers, including Justices of the Supreme Court. He
characterizes plagiarism as a betrayal of public trust, and thus, "impeachment by Congress takes the
place of administrative disciplinary proceedings against impeachable officers as there is no other
power that can administratively discipline impeachable officers."2

I. The Flow of the Analysis in This Dissent

A. Parameters

To allay any concern from members of the judiciary, I have been very careful to underscore the
limitations of my analysis of the Vinuya Decision. My Dissent of 12 October 2010 is very clear:

In a certain sense, there should have been less incentive to plagiarize law review articles because
the currency of judges is stare decisis. One wonders how the issue should have been treated had
what was plagiarized been a court ruling, but that is not at issue here. The analysis in this opinion
is therefore confined to the peculiar situation of a judge who issues a decision that
plagiarizes law review articles, not to his copying of precedents or parts of the pleadings of
the parties to a case.3

To be categorical, a judge or legal researcher cannot be guilty for using doctrines that have been
incorporated into the mainstream and are standard terms of trade. Neither is a judge required to use
quotation marks or blockquotes every time there is a reference to allegations in the pleadings of
parties, or when he is discussing legal arguments using already accepted legal doctrines. It is when
he ventures into using the original words of others, especially those of legal scholars, that he must
be particularly careful. He cannot write to pass off the words of others, especially those of others’
pioneering works, as his own. To do so is dishonest. It has also been suggested that Justice del
Castillo cannot be guilty of plagiarism as he never read the work of Mariana Salazar Albornoz. That
argument is neither here nor there. At the very least, the words he copied were those of another in
an important original analysis of the state of international law on rape.

B. Structure of the Technical Analysis in This Dissent

The structure and rigidity of the Technical Analysis in this Dissent is necessary to fulfill two
purposes: (1) to enable the reader to examine whether I have scientific and objective basis to
conclude that severe plagiarism characterizes the Vinuya Decision; and (2) to examine whether I am
willing to subject my work to the same standards to which I have subjected the Vinuya Decision.

One interesting note. My professional record had been vetted by the Judicial and Bar Council prior to
my appointment to this Court. My previous works – those of an academic and those of a pleader –
are presently being, and, I expect will continue to be, thoroughly scrutinized. While those previous
works form part of the basis of my appointment, inasmuch as they are proof of my competence and
expertise, they cannot serve as a basis to determine whether I am now performing my duties as a
judge satisfactorily. One can view the scrutiny as an unwarranted collateral attack on my record.
This did not happen until my Dissent of 12 October 2010.

The first part of the Technical Analysis consists of new tables of comparison presenting more
instances of plagiarism as they occur in the Vinuya Decision. Two of these tables deal with copied
works that previously appeared in my earlier Dissent: A Fiduciary Theory of Jus Cogens, by Evan J.
Criddle and Evan Fox-Decent, and Breaking the Silence: Rape as an International Crime by Mark
Ellis; however, the entries for these tables present instances of plagiarism not discussed or
presented in my Dissent of 12 October 2010. Following the tables are lists of violations of rules
against plagiarism, each list item corresponding to one table entry.

Following the presentation of the tables, the process whereby plagiarism could have been committed
in Vinuya is examined. The severe extent of plagiarism, which is already evident in the tables, is
discussed further, followed by an analysis of the systematic commission of plagiarism in Vinuya.
This analysis consists of the detailed dissection of specific parts of the Vinuya decision: the text of
the body in pages 31-32, and the first paragraph of footnote 65. The research process purportedly
used by the legal researcher of Vinuya is then broken down into separate steps that illustrate the
decision points at which an honest and diligent researcher would have ensured that proper
attribution to sources be given. This is then followed by a closer examination of the deletion of
existing citations and the features of Microsoft Word relevant to the deletion of footnotes.

II. Technical Analysis of Plagiarism in Vinuya

A. More Plagiarism

Below are new tables of comparison – excluding materials in tables already discussed in my
earlier Dissent to the majority Decision in AM 10-7-17-SC – of excerpts from the Decision in Vinuya
vis-a-vis text from one (1) book on international law, five (5) foreign law journal articles, and a
copyrighted report of the United States Congressional Research Service. While the degree of
seriousness of the offense of unattributed copying varies with the kind of material copied, the extent
of the copying conveys the level of honesty or dishonesty of the work done with respect to the
Vinuya Decision. The extent of copying enumerated in these tables also renders incredible the claim
of mechanical failure, as well as the alleged lack of intent on the part of the researcher to not give
proper attribution.

The materials for comparison were first identified in the Motion for Reconsideration and in the letter
of Dr. Peter B. Payoyo, a Filipino legal scholar residing in the Netherlands, addressed to the Chief
Justice dated 28 October 2010. These excerpts were independently verified, and compared with the
corresponding portions from the original works. In the course of independent verification, we came
across three more unattributed copied works.

TABLES OF COMPARISON

To aid an objective analysis of the extent and manner of the plagiarism committed in
the Vinuya Decision, below are tables of comparison that will compare three written works: (1) the
plagiarized work; (2) the Vinuya Decision; and (3) the purported "original" source analyzed or cited
by the concerned authors and by the Vinuya Decision. The left column pertains to the literary works
allegedly plagiarized by the legal researcher in the Vinuya Decision. The middle column refers to the
pertinent passage in the Vinuya Decision that makes unattributed use of the copied work. According
to the Majority Resolution, these citations made to original sources (e.g. to the international law
cases being referenced to support a certain point) in the Vinuya Decision are sufficient to refute the
charges of non-attribution. To address this claim, I have chosen to add a third column to present the
text of the source referred to in the nearest (location-wise and/or context-wise) citation or attribution
made in the Vinuya Decision. This will allow us to determine whether the analysis, reference and/or
collation of original sources were those of the allegedly plagiarized authors or are Vinuyaoriginals. In
addition, this three-column presentation will also allow us to examine the claim being made by
Justice del Castillo that at least two of the authors whose works are allegedly plagiarized in
the Vinuya Decision themselves violated academic scholarship rules against plagiarism.

TABLE A: Comparison of Evan J. Criddle & Evan Fox-Decent’s article in the Yale Journal of
International Law, entitled A Fiduciary Theory of Jus Cogens (2009) and the Supreme Court’s 28
April 2010 Decision in Vinuya v. Executive Secretary.

The Allegedly International

The Decision
Plagiarized Work Source Being
Analyzed by
Evan J. Criddle & Evan Fox- Vinuya v. Executive Secretary, Criddle and Fox-
Decent, A Fiduciary Theory of G.R. No. 162230, 28 April 2010. Decent
 Jus Cogens, 34 Yale J. Int'l L.
331 (2009).

1. ...judges on the Permanent ...Judges on the Permanent ...It is an

Court of International Justice Court of International Justice essential
affirmed the existence of affirmed the existence of principle of any
peremptory norms in peremptory norms in international court, whether
international law by referencing law by referencing treaties contra national or
treaties contra bonos mores bonos mores (contrary to public international,
(contrary to public policy) in a policy) in a series of individual that the judges
series of individual concurring concurring and dissenting may only
and dissenting opinions.[10] opinions. (For example, in the recognize legal
1934 Oscar Chinn Case, Judge rules which they
[10] For example, in the 1934 Schücking's influential dissent hold to be valid.
Oscar Chinn Case, Judge stated that neither an There is nothing
Schücking's influential dissent international court nor an arbitral to show that it
stated that neither an tribunal should apply a treaty was intended to
international court nor an arbitral provision in contradiction to disregard that
tribunal should apply a treaty bonos mores. Oscar Chinn Case, legal principle
provision in contradiction to 1934 P.C.I.J. (ser. A/B) No. 63, at when this Court
bonos mores. Oscar Chinn 149-50 (Dec. 12) (Schücking, J., was instituted,
Case, 1934 P.C.I.J. (ser. A/B) dissenting). or that it was to
No. 63, at 149-50 (Dec. 12) be obliged to
(Schücking, J., dissenting). (p. 31, footnote 71 of Vinuya) found its
decisions on the
(p. 335 of Criddle and Fox- ideas of the
Decent) parties–which
may be entirely
wrong–as to the
law to be
applied in a
given case….
The Court would
never, for
instance, apply
a convention the
terms of which
were contrary to
public morality.
But, in my view,
a tribunal finds
itself in the
same position if
a convention
adduced by the
parties is in
reality null and
void, owing to a
flaw in its origin.
The attitude of
the tribunal
should, in my
opinion, be
 governed in
such a case by
considerations
of international
public policy,
even when
jurisdiction is
conferred on the
Court by virtue
of a Special
Agreement.

Source:

The Oscar
Chinn Case
(U.K. v. Belg.),
1934 P.C.I.J.
(ser. A/B) No.
63, at 149-50
(Dec. 12)
(separate
opinion of Judge
Schücking).

2. While the ICJ recently endorsed While the ICJ recently endorsed [64]....The Court
the jus cogens concept for the the jus cogens concept for the observes,
first time in its 2006 Judgment first time in its 2006 Judgment on however, as it
on Preliminary Objections in Preliminary Objections in Armed has already had
Armed Activities on the Territory Activities on the territory of the occasion to
of the Congo (Congo v. Congo (Congo v. Rwanda), it emphasize, that
Rwanda), it declined to clarify jus declined to clarify jus cogens’s "the erga
cogens's legal status or to legal status or to specify any omnes character
specify any criteria for identifying criteria for identifying peremptory of a norm and
peremptory norms.[67] norms. (Armed Activities on the the rule of
Territory of the Congo, consent to
[67] Armed Activities on the Jurisdiction of the Court and jurisdiction are
Territory of the Congo, Admissibility of the Application two different
Jurisdiction of the Court and (Dem. Rep. Congo v. Rwanda) things"..., and
Admissibility of the Application (Judgment of February 3, 2006), that the mere
(Dem. Rep. Congo v. Rwanda) at 31-32, available at fact that rights
(Judgment of Feb. 3, 2006), at http://www.icj- and
31-32, available at cij.org/docket/files/126/10435.pdf. obligations erga
http://www.icj- omnes may be
cij.org/docket/files/126/10435.pdf (p. 32, footnote 77 of Vinuya) at issue in a
(last visited Mar. 31, 2009). dispute would
not give the
(p. 346, footnote 67 of Criddle Court jurisdiction
and Fox-Decent) to entertain that
dispute.
 The same
applies to the
relationship
between
peremptory
norms of
general
international
law (jus
cogens) and the
establishment of
the Court’s
jurisdiction: the
fact that a
dispute relates
to compliance
with a norm
having such a
character, which
is assuredly the
case with regard
to the prohibition
of genocide,
cannot of itself
provide a basis
for the
jurisdiction of
the Court to
entertain that
dispute. Under
the Court’s
Statute that
jurisdiction is
always based on
the consent of
the parties.

Source:

Armed Activities
on the Territory
of the Congo
(Dem. Rep.
Congo v.
Rwanda), 2006
I.C.J. 6, 31-32
(Feb. 3).

3. Similarly, the European Court of [77] Similarly, the European [61] While the
Human Rights has addressed Court of Human Rights has Court accepts,
jus cogens only once, in Al- addressed jus cogens only once, on the basis of
Adsani v. United Kingdom, when in Al-Adsani v. United Kingdom, these
it famously rejected the when it famously rejected the authorities, that
argument that jus cogens argument that jus cogens the prohibition of
violations would deprive a state violations would deprive a state torture has
of sovereign immunity.[75] of sovereign immunity. Al-Adsani achieved the
v. United Kingdom, 2001-XI Eur. status of a
[75] Shelton, supra note 3, at Ct. H.R. 79, ¶ 61) peremptory
309 (discussing Al-Adsani v. norm in
United Kingdom, 2001-XI Eur. (p. 32, footnote 77 of Vinuya) international
Ct. H.R. 79, ¶ 61). law, it observes
that the present
(p. 347 of Criddle and Fox- case concerns…
Decent) the immunity of
a State in a civil
suit for damages
in respect of
acts of torture
within the
territory of that
State.
Notwithstanding
the special
character of the
prohibition of
torture in
international
law, the Court is
unable to
discern in the
international
instruments,
judicial
authorities or
other materials
before it any firm
basis for
concluding that,
as a matter of
international
law, a State no
longer enjoys
immunity from
civil suit in the
courts of
another State
where acts of
torture are
alleged….

Source:

Al-Adsani v
United Kingdom,

TABLE B: Comparison of Mark Ellis’s article entitled Breaking the Silence: Rape as an International
Crime (2006-2007) and the Supreme Court’s 28 April 2010 Decision in Vinuya v. Executive
Secretary.
The Allegedly
Copied Work
Mark Ellis’s article entitled
Breaking the Silence:
Rape as an International
Crime 38 Case W. Res. J.
Int’l. L. 225(2006-2007).
1. A major step in this legal
development came in
1949, when rape and
sexual assault were
included in the Geneva
Conventions.... Rape is
included in the following
acts committed against
persons protected by the
1949 Geneva
Conventions: "wilful killing,
torture or inhuman
treatment, including
biological experiments;
wilfully causing great
suffering or serious injury
to body or health."
[65] Fourth Geneva
Convention, supra note
23, art. 147.
(p. 236 of Ellis)
The Decision
Vinuya v. Executive
Secretary, G.R. No.
162230, 28 April 2010.
[65] …A major step in this
legal development came in
1949, when rape and
sexual assault were
included in the Geneva
Conventions. Rape is
included in the following
acts committed against
persons protected by the
1949 Geneva
Conventions: "willful
killing, torture or inhuman
treatment, including
biological experiments;
willfully causing great
suffering or serious injury
to body or health."…
(See Geneva Convention
for the Amelioration of the
Condition of the Wounded
and Sick in Armed Forces
in the Field, art. 3(1)(c), 75
U.N.T.S. 31; Geneva
Convention for the
Amelioration of the
Condition of Wounded,
Sick and Shipwrecked
Members of Armed Forces
at Sea, art. 3(1)(c), 75
U.N.T.S. 85; Geneva
Convention Relative to the
Treatment of Prisoners of
App. No.
35763/97, 34
Eur. H.R. Rep.
11, par. 61
(2002)(21 Nov.
2001).
International Source Being
Analyzed by Ellis
[Article 50/51/147]
Grave breaches to which
the preceding Article
relates shall be those
involving any of the
following acts, if
committed against
persons… protected by
the Convention: willful
killing, torture or inhuman
treatment, including
biological experiments,
wilfully causing great
suffering or serious injury
to body or health….
Source:
Geneva Convention (I) for
the Amelioration of the
Condition of the Wounded
and Sick in Armed Forces
in the Field, 75 U.N.T.S.
31; Geneva Convention
(II) for the Amelioration of
the Condition of Wounded,
Sick and Shipwrecked
Members of Armed Forces
at Sea, 75 U.N.T.S. 85;
Geneva Convention (III)

2. Rape as a violation of the
laws or customs of war
generally consists of
violations of Article 3 of
the 1949 Geneva
Conventions, which, in
part, prohibits "violence to
life and person, in
particular mutilation, cruel
treatment and torture;
outrages upon personal
dignity, in particular
humiliating and degrading
treatment."[66]
66 See Geneva
Convention for the
Amelioration of the
Condition of the Wounded in the Field, art. 3(1)(c), 75
and Sick in Armed Forces U.N.T.S. 31; Geneva
in the Field, art. 3(1)(c), 75 Convention for the
U.N.T.S. 31; Geneva
Convention for the
Amelioration of the
Condition of Wounded,
Sick and Shipwrecked
Members of Armed Forces U.N.T.S. 85; Geneva
at Sea, art. 3(1)(c), 75
U.N.T.S. 85; Geneva
Convention Relative to the War, art. 3(1)(c), 75
Treatment of Prisoners of
War, art. 3(1)(c), 75
U.N.T.S. 973; Fourth
Geneva Convention, supra
note 23, art. 3(1)(c)....
(p. 236 of Ellis)
3. Article 27 of the Fourth
Geneva Convention,
directed at protecting
civilians during time of
war, states that "women
War, art. 3(1)(c), 75
U.N.T.S. 973; Fourth
Geneva Convention, supra
note 23, art. 3(1)(c).
(p. 28, footnote 65 of
Vinuya)
[65] …Rape as a violation
of the laws or customs of
war generally consists of
violations of Article 3 of
the 1949 Geneva
Conventions, which, in
part, prohibits "violence to
life and person, in
particular mutilation, cruel
treatment and torture;
outrages upon personal
dignity, in particular
humiliating and degrading
treatment." (SeeGeneva
Convention for the
Amelioration of the
Condition of the Wounded
and Sick in Armed Forces
Amelioration of the
Condition of Wounded,
Sick and Shipwrecked
Members of Armed Forces
at Sea, art. 3(1)(c), 75
Convention Relative to the
Treatment of Prisoners of
U.N.T.S. 973; Fourth
Geneva Convention, supra
note 23, art. 3(1)(c).
(p. 28, footnote 65 of
Vinuya)
[65] …Article 27 of the
Fourth Geneva
Convention, directed at
protecting civilians during
time of war, states that
Relative to the Treatment
of Prisoners of War, 75
U.N.T.S. 973; Geneva
Convention (IV) Relative
to the Protection of Civilian
Persons in Time of War,
75 U.N.T.S. 287.
Article 3
…
(a) violence to life and
person, in particular
murder of all kinds,
mutilation, cruel treatment
and torture;
(b) taking of hostages;
(c) outrages upon
personal dignity, in
particular humiliating and
degrading treatment; …
Source:
Geneva Convention (I) for
the Amelioration of the
Condition of the Wounded
and Sick in Armed Forces
in the Field, 75 U.N.T.S.
31; Geneva Convention
(II) for the Amelioration of
the Condition of Wounded,
Sick and Shipwrecked
Members of Armed Forces
at Sea, 75 U.N.T.S. 85;
Geneva Convention (III)
Relative to the Treatment
of Prisoners of War, 75
U.N.T.S. 973; Geneva
Convention (IV) Relative
to the Protection of Civilian
Persons in Time of War,
75 U.N.T.S. 287.
Article 27
Women shall be especially
protected against any
attack on their honour, in
 shall be especially
protected against any
attack on their honour, in
particular against rape,
enforced prostitution, or
any form of indecent
assault."[67]
[67] Fourth Geneva
Convention, supra note
23, art. 27.
(pp. 236 of Ellis)
4. Protocol I of the Geneva
Conventions continues to
expand the protected
rights by providing that
"women shall be the object
of special respect and
shall be protected in
particular against rape,
forced prostitution and any
form of indecent
assault."[68]
[68] Protocol Additional to
the Geneva Conventions
of 12 August 1949, and
Relating to the Protection
of Victims of International
Armed Conflicts (Protocol
I), Article 76(1), 1125
U.N.T.S. 4.
(pp. 236-237 of Ellis)
TABLE C: Comparison of Robert McCorquodale’s work, entitled The Individual and the International
Legal System,4and Phoebe Okowa’s work, entitled Issues of Admissibility and the Law on
International Responsibility,5 both of which were published in Malcolm Evans’s book (International
Law), and the Supreme Court’s Decision in Vinuya v. Executive Secretary, G.R. No. 162230, 28
April 2010.
The Allegedly
Copied Work
Essays published in
Malcolm Evans,
International Law (ed.,
2006).
"women shall be
especially protected
against any attack on their
honour, in particular
against rape, enforced
prostitution, or any form of
indecent assault."
(p. 28, footnote 65 of
Vinuya)
[65] …Protocol I of the
Geneva Conventions
continues to expand the
protected rights by
providing that "women
shall be the object of
special respect and shall
be protected in particular
against rape, forced
prostitution and any form
of indecent assault."
(Protocol Additional to the
Geneva Conventions of
August 12, 1949, and
Relating to the Protection
of Victims of International
Armed Conflicts (Protocol
I), Article 76(1), 1125
U.N.T.S. 4).
(p. 28, footnote 65 of
Vinuya)
The Decision
Vinuya v. Executive
Secretary, G.R. No.
162230, 28 April 2010.
particular against rape,
enforced prostitution, or
any form of indecent
assault.
Source:
Geneva Convention (IV)
Relative to the Protection
of Civilian Persons in Time
of War, 75 U.N.T.S. 287.
Article 76.-Protection of
women
1. Women shall be the
object of special respect
and shall be protected in
particular against rape,
forced prostitution and any
other form of indecent
assault.
Source:
Protocol Additional to the
Geneva Conventions of 12
August 1949, and relating
to the Protection of Victims
of International Armed
Conflicts (Protocol I), 1125
U.N.T.S. 3.
International Source
Being Analyzed and
Used by McCorquodale
/ Okowa
1. Traditionally, the only
means available for
individuals to bring a claim
within the international
legal system has been
when the individual is able
to persuade a government
to bring a claim on the
individual’s behalf. Even
then, it is not the
individual’s international
rights that are being
asserted but the State’s
own rights….
(p. 315-16 of Evans’s
International Law book,
essay written
by McCorquodale)
…traditionally, the only
means available for
individuals to bring a claim
within the international
legal system has been
when the individual is able
to persuade a government
to bring a claim on the
individual’s behalf.[55]
Even then, it is not the
individual’s rights that are
being asserted, but rather,
the state’s own rights.
[55] …Appeal from a
Judgment of the
Hungaro/Czeochoslovak
Mixed Arbitral Tribunal,
Judgment, 1933, PCIJ,
Ser. A/B No. 61, p. 208 at
231.
(p. 24, Body of Vinuya)
Note:
Page 231 of the Appeal
from a Judgment of the
Hungaro-Czechoslovak
Mixed Arbitral Tribunal
case – the citation
nearest in location and in
context to the passage –
does not contain a
discussion on
"persuad[ing] a
government to bring a
claim on the individual’s
behalf."
The reference to Appeal
from a Judgment of the
Hungaro-Czechoslovak
Mixed Arbitral Tribunal
case occurs
in McCorquodale as
footnote 14, four
sentences before the
passage copied by
Vinuya, and is made
following the quote, ‘it is
scarcely necessary to
point out that the capacity
to possess civil rights
does not necessarily
imply the capacity to
exercise those rights
oneself’.
In McCorquodale, the
citation following the
discussion on how "it is
not the individual’s
international rights that
are being asserted but
the State’s own rights" is
written thus in footnote
16: [16] Panevezeys-
Saldutiskis Railway,
Judgment, PCIJ, Ser A/B,
No 76, p 4. Cf LaGrand
(Germany v United States
of America), Merits,
Judgment, ICJ Reports
2001, p 466, para 42.
2. The conceptual
understanding that
individuals have rights and
responsibilities in the
international legal system
does not automatically
mean that they have the
ability to bring international
claims to assert their rights
or are able to claim an
immunity to prevent their
responsibilities being
enforced (Hohfeld, above).
Thus the PCIJ declared
that ‘it is scarcely
necessary to point out that
the capacity to possess
civil rights does not
necessarily imply the
capacity to exercise those
rights oneself’.[14]
[14] Appeal from a
Judgment of the
Hungaro/Czechoslovak
Mixed Arbitral Tribunal,
Judgment, 1933, PCIJ,
Ser A/B, No 61, p 208 at p
231
(p. 315 of Evans’s
International Law book,
essay written
by McCorquodale)
3. The decisions of national
courts on these
constitutional provisions
nevertheless support the
thesis that general
international law as it
stands does not mandate
an enforceable legal duty
of diplomatic
protection.[17]
[17] Kaunda and others v
President of the Republic
of South Africa and others,
Case CCCT23/04. In
the Hess
Decision BverfGE, 55,
[55] The conceptual
understanding that
individuals have rights and
responsibilities in the
international arena does
not automatically mean
that they have the ability to
bring international claims
to assert their rights. Thus,
the Permanent Court of
International Justice
declared that "it is scarcely
necessary to point out that
the capacity to possess
civil rights does not
necessarily imply the
capacity to exercise those
rights oneself." Appeal
from a Judgment of the
Hungaro/Czeochoslovak
Mixed Arbitral Tribunal,
Judgment, 1933, PCIJ,
Ser. A/B No. 61, p. 208 at
231.
(p. 24, footnote 55 of
Vinuya)
Even decisions of national
courts support the thesis
that general international
law as it stands does not
mandate an enforceable
legal duty of diplomatic
protection.
(p. 26, footnote 63
of Vinuya)
Again, it is scarcely
necessary to point out
that the capacity to
possess civil rights does
not necessarily imply the
capacity to exercise those
rights oneself. No
argument against the
University's personality in
law can therefore be
deduced from the fact
that it did not enjoy the
free disposal of the
property in question....
Source:
Appeal from a Judgment
of the Hungaro-
Czechoslovak Mixed
Arbitral Tribunal (Peter
Pázmány University v.
Czechoslovakia), 1933
P.C.I.J. 208, (ser. A/B)
No. 61, at 231 (Dec. 15).
Note:
In Okowa’s essay, this
statement follows a
paragraph in which she
discusses Kaunda in the
context of discretionary
diplomatic protection.
Thus, for the pertinent
passages
of Kaundaplease see
entry 5 of this table.
 349, 90 ILR 386, the
German Federal
Constitutional Court
upheld the existence of a
federal constitutional right
to diplomatic protection but
denied that it was required
by customary international
law. See also Abbasi v
Sec of Foreign and
Commonwealth Affairs
and Sec of Home
Office [2002] EWCA Civ
1598, 6 November 2002.
(p. 484 of
Evans’s International
Law book, essay written
by Okowa)
4. This position was been
challenged in the UK in a
case arising from the
clearly internationally
unlawful detention by the
US of prisoners in
Guantanamo Bay from the
time of the Afghanistan
conflict in 2001. In Abassi
v Secretary of State for
Foreign and
Commonwealth Affairs[19]
the applicant (a British
national) sought judicial
review of the adequacy of
the diplomatic actions of
the British government
with the US government….
(p. 316 of Evans’s
International Law book,
essay written
by McCorquodale)
[63] …has been
challenged in the UK in a
case arising from the
unlawful detention by the
US of prisoners in
Guantanamo Bay from the
time of the Afghanistan
conflict in 2001. In Abbasi
v Secretary of State for
Foreign and
Commonwealth Affairs
([2002] EWCA Civ 1316,
19 September 2002) the
applicant (a British
national) sought judicial
review of the adequacy of
the diplomatic actions of
the British government
with the US government….
(p. 26, footnote 63 of
Vinuya)
1. Feroz Ali Abbasi, the
first claimant, is a British
national.... They seek, by
judicial review, to compel
the Foreign Office to
make representations on
his behalf to the United
States Government or to
take other appropriate
action or at least to give
an explanation as to why
this has not been done.
...
107. ...On no view would
it be appropriate to order
the Secretary of State to
make any specific
representations to the
United States, even in the
face of what appears to
be a clear breach of a
fundamental human right,
as it is obvious that this
would have an impact on
the conduct of foreign
policy….
Source:

5. The South African
Constitutional Court in
Kaunda and others v
President of the Republic
of South Africa and
others[16] recognized the
constitutional basis of the
right of diplomatic
protection as enshrined in
the South African
constitution, but went on to
hold that the nature and
extent of his obligation
was an aspect of foreign
policy within the discretion
of the executive.
[16] Kaunda and others v.
President of the Republic (p. 27, footnote 63 of
of South Africa and others, Vinuya)
Case CCCT23/04.
(p. 484 of Evans’s
International Law book,
essay written by Okowa)
[63] …The South African
Constitutional Court
in Kaunda and others v.
President of the Republic
of South Africa and
others (Case CCCT23/04)
recognized the
constitutional basis of the
right of diplomatic
protection as enshrined in
the South African
Constitution, but went on
to hold that the nature and
extent of this obligation
was an aspect of foreign
policy within the discretion
of the executive.
Abbasi v. Secretary of
State for Foreign and
Commonwealth Affairs,
42 I.L.M. 358, 359-383
(2003)(Nov. 6)(U.K.).
[65] The founding values
of our Constitution
include human dignity,
equality and the
advancement of human
rights and freedoms….
…
[69] There may thus be a
duty on government,
consistent with its
obligations under
international law, to take
action to protect one of its
citizens against a gross
abuse of international
human rights norms....
…
[73] A court cannot tell
the government how to
make diplomatic
interventions for the
protection of its
nationals….
[77] A decision as to
whether, and if so, what
protection should be
given, is an aspect of
foreign policy which is
essentially the function of
the executive. The timing
of representations if they
are to be made, the
language in which they
should be couched, and
the sanctions (if any)
which should follow if
such representations are
rejected are matters with
 which courts are ill
equipped to deal….

Source:

Kaunda v. President of
the Republic of South
Africa, 44 I.L.M. 173,
pars. 65-77 (2005) (C. Ct.
S. Afr.).

TABLE D: Comparison of Mariana Salazar Albornoz’s article, Legal Nature and Legal
Consequences of Diplomatic Protection: Contemporary Challenges, and the Supreme Court’s
Decision in Vinuya et. al. v. Executive Secretary, G.R. No. 162230, 28 April 2010.

The Allegedly
The Decision
Copied Work

Mariana Salazar Albornoz, Vinuya v. Executive

Legal Nature and Legal Secretary, G.R. No. The Purported "Original"
Consequences of 162230, 28 April 2010. Source Cited by the
Diplomatic Protection: Concerned Authors and
Contemporary Challenges, in the Vinuya Decision
6 Anuario Mexicano de
Derecho Internacional 377
(2006)

1. Nowhere is this position Nowhere is this position By taking up the case of

more clearly reflected than
in the dictum of the
Permanent Court of
International Justice
(PCIJ) in the 1924
Mavrommatis Palestine
Concessions Case:
By taking up the case of
one of its subjects and by
resorting to diplomatic
action or international
judicial proceedings on his
behalf, a State is in reality
asserting its own right to
ensure, in the person of its
subjects, respect for the
rules of international law.
The question, therefore,
whether the present
dispute originates in an
injury to a private interest,
which in point of fact, is
more clearly reflected than
in the dictum of the
Permanent Court of
International Justice
(PCIJ) in the 1924
Mavrommatis Palestine
Concessions Case:
By taking up the case of
one of its subjects and by
resorting to diplomatic
action or international
judicial proceedings on his
behalf, a State is in reality
asserting its own right to
ensure, in the person of its
subjects, respect for the
rules of international law.
The question, therefore,
whether the present
dispute originates in an
injury to a private interest,
which in point of fact, is
one of its subjects and by
resorting to diplomatic
action or international
judicial proceedings on
his behalf, a State is in
reality asserting its own
right to ensure, in the
person of its subjects,
respect for the rules of
international law.
The question, therefore,
whether the present
dispute originates in an
injury to a private interest,
which in point of fact, is
the case in many
international disputes, is
irrelevant from this
standpoint. Once a State
has taken up a case on
behalf of one of its
subjects before an
the case in many
international disputes, is
irrelevant from this
standpoint. Once a State
has taken up a case on
behalf of one of its
subjects before an
international tribunal, in
the eyes of the latter the
State is sole claimant.[85]
[85] Mavrommatis
Palestine Concessions
case, supra note 9, p. 12.
The emphasis is ours. This
traditional view was
repeated by the PCIJ in
the Panevezys-Saldutiskis
Railway Case, the Case
Concerning the Payment
of Various Serbian Loans
issued in France,
Judgment of July 12,
1929, PCIJ Reports,
Series A No. 20; and in the
Case Concerning the
Factory at Chorzow,
Judgment of September
13, 1928, Merits, PCIJ
Reports, Series A No. 17.
The ICJ has adopted it in
the Reparation for injuries
suffered in the service of
the United Nations
Advisory Opinion: ICJ
Reports 1949, p. 174; the
Nottebohm Case (second
phase) Judgment of April
6th, 1955: ICJ Reports
1955, p. 4 at p. 24; the
Interhandel Case
(Judgment of March 21st,
1959: ICJ Reports 1959, p.
6 at p. 27) and the
Barcelona Traction Light
and Power Company,
Limited case, supra note
6, at p. 32 par. 33. It has
also been recognized by
other international
tribunals: see, for
example, Administrative
the case in many international tribunal, in
international disputes, is the eyes of the latter the
irrelevant from this State is sole claimant.
standpoint. Once a State The fact that Great Britain
has taken up a case on and Greece are the
behalf of one of its opposing Parties to the
subjects before an dispute arising out of the
international tribunal, in Mavrommatis
the eyes of the latter the concessions is sufficient
State is sole claimant.[56] to make it a dispute
between two States
[56] PCIJ, Ser. A, No. 2, p. within the meaning of
11, at 16. This traditional Article 26 of the Palestine
view was repeated by the Mandate.
PCIJ in the Panevezys-
Saldutiskis Railway Case, Source:
the Case Concerning the
Payment of Various Mavrommatis Palestine
Serbian Loans issued in Concessions (Greece v.
France, Judgment of July Gr. Brit.), 1924 P.C.I.J.
12, 1929, PCIJ Reports, (ser. A) No. 2, at 12 (Aug.
Series A No. 20; and in the 30).
Case Concerning the
Factory at Chorzow,
Judgment of September
13, 1928, Merits, PCIJ
Reports, Series A No. 17.
The ICJ has adopted it in
the Reparation for injuries
suffered in the service of
the United Nations
Advisory Opinion: ICJ
Reports 1949, p. 174; the
Nottebohm Case (second
phase) Judgment of April
6th, 1955: ICJ Reports
1955, p. 4 at p. 24; the
Interhandel Case
(Judgment of March 21st,
1959: ICJ Reports 1959, p.
6 at p. 27) and the
Barcelona Traction Light
and Power Company,
Limited case, (Belg. V.
Spain), 1970 I.C.J. 3, 32
(Feb. 5).
(p. 24 Body of Vinuya)
 Decision No. V of the US-
German Claims
Commission.
(p. 397 of Albornoz)
2. Under this view, the
considerations underlying
the decision to exercise or
not diplomatic protection
may vary depending on
each case and may rely
entirely on policy
considerations regardless
of the interests of the
directly-injured individual,
and the State is not
required to provide
justification for its
decision.[90]
[90] See in this sense,
Borchard E., Diplomatic
Protection of Citizens (p. 25, footnote 57 of
Abroad, New York, The Vinuya)
Banks Law Publishing Co.,
1915, at VI. Also: G.
Berlia, op. cit. (note 86),
pp. 63 y 64.
(p. 398 of Albornoz)
3. The ILC’s First Reading
Draft Articles on diplomatic
protection have fully
attached to the traditional
view on the legal nature of
such institution. In this
sense, (i) they expressly
state that "the right of
diplomatic protection
belongs to or vests in the
State", a statement which
"gives recognition to the
Vattelian notion that an
injury to a national is an
indirect injury to the
State";[96] (ii) they affirm
[57] See Borchard, E.,
Diplomatic Protection of
Citizens Abroad at VI
(1915). Under this view,
the considerations
underlying the decision to
exercise or not diplomatic
protection may vary
depending on each case
and may rely entirely on
policy considerations
regardless of the interests
of the directly-injured
individual, and the State is
not required to provide
justification for its decision.
The International Law
Commission’s (ILC’s) Draft
Articles on Diplomatic
Protection fully support
this traditional view. They
(i) state that "the right of
diplomatic protection
belongs to or vests in the
State,"[59] (ii) affirm its
discretionary nature by
clarifying that diplomatic
protection is a "sovereign
prerogative" of the
State;[60] and (iii) stress
that the state "has the right
to exercise diplomatic
…The citizen abroad has
no legal right to require
the diplomatic protection
of his national
government. Resort to
this remedy of diplomatic
protection is solely a right
of the government, the
justification and
expediency of its
employment being a
matter for the
government’s unrestricted
discretion. This protection
is subject in its grant to
such rules of municipal
administrative law as the
state may adopt, and in
its exercise internationally
to certain rules which
custom has recognized.
Source:
Edwin M. Borchard, The
Diplomatic Protection of
Citizens Abroad or the
Law of International
Claims, vi (1914).
60. The texts of the draft
articles on diplomatic
protection with
commentaries thereto
adopted on first reading
by the Commission at its
fifty-sixth session, are
reproduced below.
…
Article 2 stresses that the
right of diplomatic
protection belongs to or
vests in the State. It gives
recognition to the
 its discretionary nature by
clarifying that diplomatic
protection is a "sovereign
prerogative" of the
State;[97] and stressing
that the state "has the right
to exercise diplomatic
protection on behalf of a
national. It is under no
duty or obligation to do
so."[98]
[96] ILC First Reading
Draft Articles on
Diplomatic Protection,
supra note 13, par. 60,
Commentary to Draft
Article 2, par. (1); see also,
Commentary to Draft
Article 1, par. (3), and text
of Draft Article 2.
[97] Report of the
International Law
Commission on the work
of its 50th session, supra
note 13, par. 77.
[98] ILC First Reading
Draft Articles on
Diplomatic Protection,
supra note 2, commentary
to Draft Article 2, par. (2).
(p. 400 of Albornoz)
4. …Special Rapporteur
Dugard proposed that the
ILC adopt in its Draft
Articles a provision under
which States would be
internationally obliged to
exercise diplomatic
protection in favour of their
nationals injured abroad
by grave breaches to their
jus cogens norms, if the
national so requested and
if he/she was not afforded
direct access to an
international tribunal.[116
protection on behalf of a
national. It is under no
duty or obligation to do
so."[61]
[59] ILC First Reading
Draft Articles on
Diplomatic Protection,
U.N. Doc. A/CN.4/484, ILC
Report, A/53/10 (F), par.
60, Commentary to Draft
Article 2, par. (1); see also,
Commentary to Draft
Article 1, par. (3), and text
of Draft Article 2.
[60] Report of the
International Law
Commission on the work
of its 50th session, supra
note 60, par. 77.
[61] ILC First Reading
Draft Articles on
Diplomatic Protection,
supra note 60,
commentary to Draft
Article 2, par. (2).
(p. 25-26 Body of Vinuya)
[62] …Special Rapporteur
Dugard proposed that the
ILC adopt in its Draft
Articles a provision under
which States would be
internationally obliged to
exercise diplomatic
protection in favor of their
nationals injured abroad
by grave breaches to jus
cogens norms, if the
national so requested and
if he/she was not afforded
direct access to an
international tribunal. The
Vattelian notion that an
injury to a national is an
indirect injury to the
State.[25]…
...
A State has the right to
exercise diplomatic
protection on behalf of a
national. It is under no
duty or obligation to do
so. The internal law of a
State may oblige a State
to extend diplomatic
protection to a
national,[29] but
international law imposes
no such obligation....
Source:
Text of the Draft Articles
on Diplomatic Protection
Adopted by the
Commission on First
Reading, Rep. of the Int'l.
Law Comm'n, 56th Sess.,
3 May-4 June and 5 July-
6 August 2004, U.N. Doc.
A/59/10 at 22-28, par. 60;
GAOR, 59th Sess., Supp.
10 (2004).
74. The discretionary
power of the State to
intervene on behalf of its
national is considered in
the commentary on article
4.
Article 4
1. Unless the injured
person is able to bring a
claim for such injury
before a competent
international court or
tribunal, the State of
his/her nationality has a
[116] The proposed article
read as follows: "Article [4]
1. Unless the injured
person is able to bring a
claim for such injury before
a competent international
court or tribunal, the State
of his/her nationality has a
legal duty to exercise
diplomatic protection on
behalf of the injured
person upon request, if the
injury results from a grave
breach of a jus cogens
norm attributable to
another State. 2. The state
of nationality is relieved of
this obligation if: (a) The
exercise of diplomatic
protection would seriously
endanger the overriding
interests of the State
and/or its people ; (b)
Another State exercises
diplomatic protection on
behalf of the injured
person; (c) The injured
person does not have the
effective and dominant
nationality of the State.
States are obliged to
provide in their municipal
law for the enforcement of
this right before a
competent domestic court
or other independent
national authority."
Dugard, J. First report on
diplomatic protection,
supra note 13, par. 74.
(p. 404 of Albornoz)
proposed article reads as
follows:
Article [4] 1. Unless the
injured person is able to
bring a claim for such
injury before a competent
international court or
tribunal, the State of
his/her nationality has a
legal duty to exercise
diplomatic protection on
behalf of the injured
person upon request, if the
injury results from a grave
breach of a jus cogens
norm attributable to
another State. 2. The state
of nationality is relieved of
this obligation if: (a) The
exercise of diplomatic
protection would seriously
endanger the overriding
interests of the State
and/or its people ; (b)
Another State exercises
diplomatic protection on
behalf of the injured
person; (c) The injured
person does not have the
effective and dominant
nationality of the State.
States are obliged to
provide in their municipal
law for the enforcement of
this right before a
competent domestic court
or other independent
national authority." Special
Rapporteur John Dugard,
appointed in 1999, First
Report on Diplomatic
Protection, par. 74 (UN
Doc A/CN.4/506 (March 7,
2000) and Corr. 1 (June 7,
2000) and Add. 1 (April 20,
2000).
(p. 26, footnote 62 of
Vinuya)
legal duty to exercise
diplomatic protection on
behalf of the injured
person upon request, if
the injury results from a
grave breach of a jus
cogens norm attributable
to another State.
2. The State of nationality
is relieved of this
obligation if:
(a) The exercise of
diplomatic protection
would seriously endanger
the overriding interests of
the State and/or its
people;
(b) Another State
exercises diplomatic
protection on behalf of
the injured person;
(c) The injured person
does not have the
effective and dominant
nationality of the State.
3. States are obliged to
provide in their municipal
law for the enforcement
of this right before a
competent domestic court
or other independent
national authority.
Source:
Special Rapporteur on
Diplomatic Protection,
First Rep. on Diplomatic
Protection, Int’l. Law
Comm’n, UN Doc.
A/CN.4/506, at 27, par.
74 (7 March 2000) (by
John R. Dugard).
5. …the proposal was not
accepted by the ILC, as
"the question was still not
ripe for treatment"
because "the State
practice and their opinio
juris still hadn’t evolved in
such direction."[120]
[120] Official Records of
the
General Assembly: 55th
session, Supplement No.
10, Doc. A/55/10 (2000),
Report of the ILC on the
work of its 52nd session,
p. 131.
(p. 405 of Albornoz)
6. ...some States have,
indeed, incorporated in
their municipal law a duty
to exercise diplomatic
[62] …the proposal was
not accepted by the ILC,
as "the question was still
not ripe for treatment"
because "the State
practice and their opinio
juris still hadn’t evolved in
such direction." Official
Records of the
General Assembly: 55th
session, Supplement No.
10, Doc. A/55/10 (2000),
Report of the ILC on the
work of its 52nd session,
p. 131.
(p.26, footnote 62 of
Vinuya)
[62] …some States have,
indeed, incorporated in
their municipal law a duty
to exercise diplomatic
456. The Special
Rapporteur recognized
that he had introduced
article 4 de lege ferenda.
As already indicated, the
proposal enjoyed the
support of certain writers,
as well as of some
members of the Sixth
Committee and of ILA; it
even formed part of some
constitutions. It was thus
an exercise in the
progressive development
of international
law. But the general view
was that the issue was
not yet ripe for the
attention of the
Commission and that
there was a need for
more State practice and,
particularly, more opinio
juris before it could be
considered.
Note:
p. 131 of the Report does
not refer to the topic of
diplomatic protection.
Rather, the heading of
the page reads "Other
Decisions and
Conclusions of the
Commission."
Source:
Rep. of the Int’l. Law
Comm’n, 52nd Sess., 1
May - 9 June and 10 July
- 18 August 2000, U.N.
Doc. A/55/10 at 78-79,
par. 456; GAOR, 55th
Sess., Supp. 10 (2000).
80. …Constitutional
provisions in a number of
States… recognize the
right of the individual to
 protection in favor of their protection in favor of their receive diplomatic
nationals…. Various other nationals. (Dugard protection for injuries
States have also included identifies this "obligation to suffered abroad. These
such a "duty to exercise exist in the Constitutions of include: Albania, Belarus,
diplomatic protection" Albania, Belarus, Bosnia Bosnia and Herzegovina,
under their domestic and Herzegovina, Bulgaria, Cambodia,
laws,[130 ]but their Bulgaria, Cambodia, China,
enforceability is also, to China, Croatia, Estonia,
say the least, questionable Georgia, Guyana, Croatia, Estonia, Georgia,
(in many cases there are Hungary, Italy, Guyana, Hungary, Italy,
not even courts competent Kazakhstan, Lao People’s Kazakhstan, Lao
to review the decision). Democratic Republic, People’s
Latvia, Lithuania, Poland,
[130] Dugard identifies this Portugal, Republic of Democratic Republic,
"obligation to exist in the Korea, Romania, Russian Latvia, Lithuania, Poland,
Constitutions of Albania, Federation, Spain, the Portugal, Republic of
Belarus, Bosnia and former Yugoslav Republic Korea,
Herzegovina, Bulgaria, of Macedonia, Turkey,
Cambodia, China, Croatia, Ukraine, Viet Nam and Romania, Russian
Estonia, Georgia, Guyana, Yugoslavia, albeit with Federation, Spain, the
Hungary, Italy, different reaches. J.
former Yugoslav Republic
Kazakhstan, Lao People’s Dugard, First Report on of Macedonia, Turkey,
Democratic Republic, diplomatic protection,
Ukraine, Viet Nam and
Latvia, Lithuania, Poland, supra note 13, par. 80.)
Yugoslavia….
Portugal, Republic of
Korea, Romania, Russian (p. 26, footnote 62 of
Source:
Federation, Spain, the Vinuya)
former Yugoslav Republic
of Macedonia, Turkey, Special Rapporteur on
Ukraine, Viet Nam and Diplomatic Protection,
Yugoslavia, albeit with First Rep. on Diplomatic
different reaches. J. Protection, Int’l. Law
Dugard, First Report on Comm’n, UN Doc.
diplomatic protection, A/CN.4/506, at 30, par.
supra note 13, par. 80. 80 (7 March 2000) (by
John R. Dugard).
(p. 406 of Albornoz)
7. …but their enforceability is [62] ..., but their (2) A State has the right
also, to say the least, enforceability is also, to to exercise diplomatic
questionable (in many say the least, questionable protection on behalf of a
cases there are not even (in many cases there are national. It is under no
courts competent to review not even courts competent duty or obligation to do
the decision). Moreover, to review the decision). so. The internal law of a
their existence in no way Moreover, their existence State may oblige a State
implies that international in no way implies that to extend diplomatic
law imposes such an international law imposes protection to a
obligation,[131] simply such an obligation, simply national,[29] but
suggesting "that certain suggesting "that certain international law imposes
States consider diplomatic States consider diplomatic no such obligation. The
protection for their protection for their position was clearly
nationals abroad to be stated by the International
 nationals abroad to be
desirable."[132
[131] ILC First Reading
Draft Articles on
Diplomatic Protection,
supra note 2, Commentary (p. 26, footnote 62 of
to Draft Article 2, par (2). Vinuya)
This was recognized
expressly in the Barcelona
Traction case, supra note
6.
[132] Dugard, J. First
report on diplomatic
protection, supra note 13,
par. 81….
(p. 406-407 of Albornoz)
desirable" (ILC First Court of Justice in the
Reading Draft Articles on Barcelona Traction case:
Diplomatic Protection,
supra note 2, Commentary …
to Draft Article 2, par (2)).
A proposal that a limited
duty of protection be
imposed on the State of
nationality was rejected
by the Commission as
going beyond the
permissible limits of
progressive development
of the law.[31]
Source:
Commentary to the Text
of the Draft Articles on
Diplomatic Protection
Adopted by the
Commission on First
Reading, Rep. of the Int'l.
Law Comm’n, 56th Sess.,
3 May-4 June and 5 July-
6 August 2004, U.N. Doc.
A/59/10 at 28, par. 60;
GAOR, 59th Sess., Supp.
10 (2004).

TABLE E: Comparison of Elizabeth Prochaska’s article, Testing the Limits of Diplomatic Protection:
Khadr v. The Prime Minister of Canada,6 and the Supreme Court’s Decision in Vinuya v. Executive
Secretary, G.R. No. 162230, 28 April 2010.

The Allegedly
The Decision
Copied Work

Elizabeth Prochaska, Vinuya v. Executive International Source

Testing the Limits of Secretary, G.R. No. Being Analyzed By
Diplomatic Protection: 162230, 28 April 2010. Prochaska
Khadr v. The Prime
Minister of Canada (2009).
Instead, Draft Article 19, [62] …Official Records of Note:
entitled ‘Recommended the General Assembly:
Practice,’ suggests that 55th session, Supplement The Report of the
states should be No. 10, Doc. A/55/10 International Law
encouraged to exercise (2000), Report of the ILC Commission on the Work
diplomatic protection on the work of its 52nd of its Fifty-Second
‘especially when session, p. 131. Instead, Session, and the Special
significant injury occurred Draft Article 19, entitled Rapporteur’s First on
 to the national. Drafted in
soft language, the Article
does not purport to create
any binding obligations on
the state.
(p. 397 of Prochaska)
‘Recommended Practice,'
suggests that states
should be encouraged to
exercise diplomatic
protection ‘especially when
significant injury occurred
to the national. Drafted in
soft language, the Article
does not purport to create
any binding obligations on
the state.
Diplomatic Protection,
which are the nearest in
location and in context to
the passage, does not
contain a discussion on
Draft Article 19. See pp.
72-85 and 27-34
respectively.

(Footnote 62 of Vinuya)

TABLE F: Comparison of Larry Niksch’s Report, Japanese Military’s Comfort Women, 10 April
2006,7 and the Supreme Court’s Decision in Vinuya et. al. v. Executive Secretary, G.R. No. 162230,
28 April 2010.

The Allegedly
The Decision
Copied Work
Larry Niksch, Vinuya v. Executive Source Being Used By Niksch
Japanese Military’s Secretary, G.R. No.
Comfort Women, 10 162230, 28 April 2010.
April 2006.
1. The Asian Women’s The AWF announced The projects of atonement
Fund announced three three programs for involved providing former comfort
programs for former former comfort women women with 2 million yen per
comfort women who who applied for person as atonement money
applied for assistance: assistance: (1) an donated by Japanese citizens,
(1) an atonement fund atonement fund paying delivering a letter of apology from
that paid two million ¥2 million the Japanese Prime Minister,
yen (approximately (approximately and offering goods and services
$20,000) to each $20,000) to each under medical and welfare
former comfort woman; woman; (2) medical support projects financed by the
(2) medical and welfare and welfare support Japanese government.
support programs for programs, paying ¥2.5-
former comfort women, 3 million ($25,000- Note:
paying 2.5-3 million $30,000) for each
yen ($25,000- $30,000) woman; and (3) a letter The passage in Vinuya does not
for each former comfort of apology from the contain a footnote. The following
woman; and (3) a letter Japanese Prime source is the nearest citation that
of apology from the Minister to each may reasonably be taken as
Japanese Prime woman. within the context of the
Minister to each discussion in Vinuya.
recipient woman.[8] (p. 17, Body of Vinuya)
http://web.archive.org/web/20060
[FN8]. From the Asian 301213211/http://www.awf.or.jp/e
Women’s Fund nglish/project_atonement.html
 website, March 16,
2006.

(paragraph 11 of
Niksch)

2. ...As of March 2006, ...As of March 2006, In order to fulfill its moral
the Asian Women’s the AWF provided responsibility in all sincerity, the
Fund provided 700 ¥700 million yen Japanese government decided to
million yen (approximately $7 disburse about 700 million yen
(approximately $7 million) for these over a five-year period for
million) for these programs in South medical and welfare support
programs in South Korea, Taiwan, and the projects aiding former comfort
Korea, Taiwan, and the Philippines; ¥380 women in the Philippines, the
Philippines; 380 million million yen Republic of Korea and Taiwan.
yen (approximately (approximately $3.8
$3.8 million) in million) in Indonesia; ...
Indonesia; and 242 and ¥242 million yen
million yen (approximately $2.4 Note:
(approximately $2.4 million) in the
million) in the Netherlands.
The passage in Vinuya does not
Netherlands. [9]
contain a footnote. The following
(p. 17, Body of Vinuya) source is the nearest citation that
(paragraph 12 may reasonably be taken as
of Niksch) within the context of the
discussion in Vinuya.

http://web.archive.org/web/20060
301213211/http://www.awf.or.jp/e
nglish/project_atonement.html

3. On January 15, 1997 On January 15, 1997 The government of the

the Asian Women’s the AWF and the Philippines and the Asian
Fund and the Philippine government Women’s Fund signed a
Philippine government signed a Memorandum Memorandum of Understanding
signed a Memorandum of Understanding for on January 15, 1997….
of understanding for medical and welfare
medical and welfare support programs for The Philippine government’s
support programs for former comfort women. Department of Social Welfare
former comfort women. Over the next five and Development implemented
Over the next five years, these were the projects over a period of five
years, these were implemented by the years….
implemented by the Department of Social
Philippine Welfare and Note:
government’s Development.
Department of Social
The passage in Vinuya does not
Welfare and (p. 17, Body of Vinuya) contain a footnote. The following
Development.
source is the nearest citation that
may reasonably be taken as
(paragraph 19 of
Niksch)
 within the context of the
discussion in Vinuya.

http://web.archive.org/web/20060
301213211/http://www.awf.or.jp/e
nglish/project_atonement.html

TABLE G: Comparison of James Ladino’s article, Ianfu: No Comfort Yet for Korean Comfort Women
and the Impact of House Resolution 121 and the Supreme Court’s Decision in Vinuya v. Executive
Secretary, G.R. No. 162230, 28 April 2010.

The Allegedly
The Decision
Copied Work
James Ladino, Ianfu: No Vinuya v. Executive
Comfort Yet for Korean Secretary, G.R. No. 162230, Source Being Analyzed and/or
Comfort Women and the 28 April 2010. Used by Ladino
Impact of House Resolution
121, 15 Cardozo J.L. &
Gender 333 (2009).

1 In 1992, the Korean Council
. for the Women Drafted for
Military Sexual Slavery by
Japan ("KCWS"), submitted a
petition to the United Nations
Human Rights Commission
("UNHRC"), asking for their
assistance in investigating
crimes committed by Japan
against Korean women and
pressuring Japan to pay
reparations to the women
who had filed lawsuits.[96]
The UNHRC formally placed
the issue on its agenda and
appointed Radhika
Coomaraswamy as the
issue’s special
investigator.[97] Issued in
1996, the UNHRC’s report
reaffirmed Japan’s guilt in
forcing Korean women to act
as sex slaves for the imperial
army.[98]
[96] Soh, supra note 7
[Chunghee Sarah Soh, The
Korean "Comfort Women":
Movement for Redress, 36
In 1992, the Korean Council
for the Women Drafted for
Military Sexual Slavery by
Japan (KCWS), submitted a
petition to the UN Human
Rights Commission
(UNHRC), asking for
assistance in investigating
crimes committed by Japan
against Korean women and
seeking reparations for
former comfort women.[29]
The UNHRC placed the issue
on its agenda and appointed
Radhika Coomaraswamy as
the issue's special
investigator. In 1996,
Coomaraswamy issued a
Report reaffirming Japan's
responsibility in forcing
Korean women to act as sex
slaves for the imperial army,
and made the
following recommendations:
[29] Soh, The Comfort
Women Project, San
Francisco State University
(1997-2001),
http://online.sfsu.edu/~soh/co
...In her report to the U.N.
Human Rights Commission,
Radhika Coomaraswamy, the
U.N. special investigator into
violence against women,
concluded that Japan must
admit its legal responsibility....
...
...Lee Hyo-chae, as a co-chair
of the KCWS submitted a
petition to the U.N. Human
Rights Commission, dated
March 4, 1992, requesting that
the Commission investigate
Japanese atrocities committed
against Korean women during
World War Two, and help
pressure the Japanese
government to pay reparations
to individual women who have
filed suit. The UNHRC
responded by placing the
issue on the official agenda for
its August 1992 meeting in
Geneva….
Source:
 Asian Survey 1226,], at 1234- mf ortwomen.html, at 1234-
35. 35.
[97] Id. at 1226.
[98] Id.
(p. 344 of Ladino)
2 The Women's International
. War Crimes Tribunal
(WIWCT) was a "people's
tribunal" established by a
number of Asian women,
human rights organizations,
and supported by an
international coalition of non-
governmental organizations
("NGOs").[101] First proposed
in 1998, the WIWCT
convened in Tokyo in 2000 to
discuss the issue of comfort
women.[102] Specifically, the
WIWCT aimed to "adjudicate
Japan's military sexual
violence, in particular the
enslavement of comfort
women, to bring those
responsible for it to justice,
and to end the ongoing cycle
of impunity for wartime sexual
violence against women."
[101] Christine M.
Chinkin, Women’s
International Tribunal on
Japanese Sexual Slavery, 95
Am. J. Int’l. L. 335 (2001)
[102] Violence Against
Women in War-Network
Japan, What is the Women’s
Tribunal?
http.//www1.jca.apc.org/vaww
-net -
japan/English/womenstribunal
200 0/whatstribunal.html (last
visited Oct. 16, 2008).
(p. 345 of Ladino)
(p. 9-10, Body of Vinuya)
The Women's International
War Crimes Tribunal
(WIWCT) was a "people's
tribunal" established by a
number of Asian women and
human rights organizations,
supported by an international
coalition of non-governmental
organizations.[31] First
proposed in 1998, the
WIWCT convened in Tokyo in
2000 in order to "adjudicate
Japan's military sexual
violence, in particular the
enslavement of comfort
women, to bring those
responsible for it to justice,
and to end the ongoing cycle
of impunity for wartime sexual
violence against women."
[31] Chinkin, Women’s
International Tribunal on
Japanese Sexual Slavery, 95
Am. J. Int’l. L. 335 (2001).
(p. 12, Body of Vinuya)
Chunghee Sarah Soh, The
Korean "Comfort Women":
Movement for Redress, 36
Asian Survey 1226, 1234-35
(1996).
From December 8 to 12, 2000,
a peoples' tribunal, the
Women's International War
Crimes Tribunal 2000, sat in
Tokyo, Japan. It was
established to consider the
criminal liability of leading
high-ranking Japanese military
and political officials and the
separate responsibility of the
state of Japan for rape and
sexual slavery as crimes
against humanity arising out of
Japanese military activity in
the Asia Pacific region in the
1930s and 1940s.
...
…The tribunal arose out of the
work of various women's
nongovernmental
organizations (NGOs) across
Asia….
Source:
Chinkin, Women’s
International Tribunal on
Japanese Sexual Slavery, 95
Am. J. Int’l. L. 335 (2001).
3 A large amount of evidence
. was presented to the tribunal
for examination. Sixty-four
former comfort women from
Korea and other surrounding
territories in the Asia-Pacific
region testified before the
court.[104] Testimony was
also presented by historical
scholars, international law
scholars, and two former
Japanese soldiers.[105]
Additional evidence was
submitted by the prosecution
teams of ten different
countries, including: North
and South Korea, China,
Japan, the Philippines,
Indonesia, Taiwan, Malaysia,
East Timor, and the
Netherlands.[106]
[104] Id. [Violence Against
Women in War-Network
Japan, What is the Women's
Tribunal?,
http://www1.jca.apc.org/vaww
-net -
japan/english/womenstribunal
200 0/whatstribunal.html (last
visited Oct. 16, 2008).]
[105] Id.
[106] Chinkin, supra note
101, at 336.
(p. 345 of Ladino)
After examining the evidence
for more than a year, the
tribunal issued its final verdict
on December 4, 2001, finding
the former Emperor Hirohito
and the State of Japan guilty
of crimes against humanity
for the rape and sexual
slavery of women.[107]
…
[32] A large amount of
evidence was presented to
the tribunal for examination.
Sixty-four former comfort
women from Korea and other
surrounding territories in the
Asia-Pacific region testified
before the court. Testimony
was also presented by
historical scholars,
international law scholars,
and two former Japanese
soldiers. Additional evidence
was submitted by the
prosecution teams of ten
different countries, including:
North and South Korea,
China, Japan, the Philippines,
Indonesia, Taiwan, Malaysia,
East Timor, and the
Netherlands. Id. [Chinkin] at
336.
(p. 12, footnote 32 of Vinuya)
After examining the evidence
for more than a year, the
"tribunal" issued its verdict on
December 4, 2001, finding
the former Emperor Hirohito
and the State of Japan guilty
of crimes against humanity
for the rape and sexual
slavery of women.[32] It
bears stressing, however,
that although the tribunal
included prosecutors,
witnesses, and judges, its
…Prosecution teams from ten
countries presented
indictments.[6] North and
South Korea, China, Japan,
the Philippines, Indonesia,
Taiwan, Malaysia, East Timor,
and the Netherlands…. Two
lead prosecutors (Patricia
Viseur Sellers[7] and Ustinia
Dolgopol[8]) joined the
separate-country prosecutors
and presented a common
indictment.
Source:
Chinkin, Women’s
International Tribunal on
Japanese Sexual Slavery, 95
Am. J. Int’l. L. 335, 336 (2001).
The preliminary judgment
indicated that the judges had
found Emperor Hirohito guilty
of the charges on the basis of
command responsibility, that
he knew or should have
known of the offenses…. The
judges also indicated that they
had determined Japan to be
responsible under international
law applicable at the time of
the events for violation of its
treaty obligations and
 Although the tribunal included
prosecutors, witnesses, and
judges, its judgment was not
legally binding since the
tribunal itself was organized
by private citizens….
[107] Violence Against
Women in War-Network
Japan, supra note 102.
(p. 345 of Ladino)
4 On January 31, 2007, United
. States Representative
Michael Honda of California,
along with six co-sponsor
representatives, introduced
House Resolution 121. The
resolution called for Japanese
action in light of the ongoing
struggle for closure by former
comfort women. The House
of Representatives formally
passed the resolution on July
30, 2007.[110] The resolution
also makes four distinct
demands:
[110] Press Release,
Congressman Mike Honda,
Rep. Honda Calls on Japan
to Apologize for World War II
Exploitation of "Comfort
Women" (Jan. 31, 2007),
available at
http://www.house.gov/list/
press/ca15_honda/
COMFORTWOMEN.html.
(p. 346 of Ladino)
judgment was not legally
binding since the tribunal
itself was organized by
private citizens.
[32] …Id. [Chinkin] at 336.
(p. 12, Body of Vinuya)
On January 31, 2007, US
Representative Michael
Honda of California, along
with six co-sponsor
representatives, introduced
House Resolution 121 which
called for Japanese action in
light of the ongoing struggle
for closure by former comfort
women. The Resolution was
formally passed on July 30,
2007,[33] and made four
distinct demands:
[33] Press Release,
Congressman Mike Honda,
Rep. Honda Calls on Japan
to Apologize for World War II
Exploitation of "Comfort
Women" (January 31, 2007).
(p. 12, Body of Vinuya)
principles of customary
international law relating to
slavery, trafficking, forced
labor, and rape, amounting to
crimes against humanity….
What was the value of this
exercise? Lacking legal
authority, was the tribunal no
more than a mock trial of little
concern to serious
international lawyers?
Source:
Chinkin, Women’s
International Tribunal on
Japanese Sexual Slavery, 95
Am. J. Int’l. L. 335 (2001).
Today, Representative
Michael M. Honda (CA – 15)
introduced a bipartisan
resolution before the U.S.
House of Representatives
calling on the government of
Japan to formally and
unambiguously apologize for
and acknowledge the tragedy
that comfort women endured
at the hands of its Imperial
Army during World War II….
…
The resolution is cosponsored
by: Representatives Edward
R. Royce (CA – 40),
Christopher H. Smith (NJ - 4),
Diane E. Watson (CA - 33),
David Wu ()R - 1), Phil Hare
(IL - 17), and Delegate
Madaleine Bordallo (GU).
Source:
Press Release of
Congressman Mike Honda,
Rep. Honda Calls on Japan to
Apologize for World War II
Exploitation of "Comfort

5 …The resolution also makes
. four distinct demands:
[I]t is the sense of the House
of Representatives that the
Government of Japan (1)
should formally acknowledge,
apologize, and accept
historical responsibility in a
clear and unequivocal
manner for its Imperial Armed
Forces' coercion of young
women into sexual slavery,
known to the world as
"comfort women", during its
colonial and wartime
occupation of Asia and the
Pacific Islands from the
1930s through the duration of
World War II; (2) would help
to resolve recurring questions
about the sincerity and status
of prior statements if the
Prime Minister of Japan were
to make such an apology as a
public statement in his official
capacity; (3) should clearly
and publicly refute any claims
that the sexual enslavement
and trafficking of the "comfort
women" for the Japanese
Imperial Army never
occurred; and (4) should
educate current and future
generations about this
horrible crime while following
the recommendations of the
international community with
respect to the "comfort
women."[111
111] H.R. Res. 121, 110th
Cong. (2007) (enacted).
(p. 346 of Ladino)
The Resolution was formally
passed on July 30, 2007,[33]
and made four distinct
demands:
[I]t is the sense of the House
of Representatives that the
Government of Japan (1)
should formally acknowledge,
apologize, and accept
historical responsibility in a
clear and unequivocal
manner for its Imperial Armed
Forces' coercion of young
women into sexual slavery,
known to the world as
"comfort women", during its
colonial and wartime
occupation of Asia and the
Pacific Islands from the
1930s through the duration of
World War II; (2) would help
to resolve recurring questions
about the sincerity and status
of prior statements if the
Prime Minister of Japan were
to make such an apology as a
public statement in his official
capacity; (3) should clearly
and publicly refute any claims
that the sexual enslavement
and trafficking of the "comfort
women" for the Japanese
Imperial Army never
occurred; and (4) should
educate current and future
generations about this
horrible crime while following
the recommendations of the
international community with
respect to the "comfort
women."[34
34] H.R. Res. 121, 110th
Cong. (2007) (enacted).
Women," 31 Jan. 2007,
available at
http://www.house.gov/list/
press/ca15_honda/
COMFORTWOMEN.html
Resolved, That it is the sense
of the House of
Representatives that the
Government of Japan—
(1) should formally
acknowledge, apologize, and
accept historical responsibility
in a clear and unequivocal
manner for its Imperial Armed
Force’s coercion of young
women into sexual slavery,
known to the world as "comfort
women", during its colonial
and wartime occupation of
Asia and the Pacific Islands
from the 1930s through the
duration of World War II;
(2) should have this official
apology given as a public
statement presented by the
Prime Minister of Japan in his
official capacity;
(3) should clearly and publicly
refute any claims that the
sexual enslavement and
trafficking of the "comfort
women" for the Japanese
Imperial Armed Forces never
occurred; and
(4) should educate current and
future generations about this
horrible crime while following
the recommendations of the
international community with
respect to the "comfort
women".
Source cited:
H.R. Res. 121, 110th Cong.
(2007) (enacted), available at
http://www.gpo.gov/fdsys/pkg/

6 In December 2007, the
. European Parliament, the
governing body of the
European Union, drafted a
resolution similar to House
Resolution 121.[130] …
Entitled, "Justice for Comfort
Women," the resolution
demanded: (1) a formal
acknowledgment of
responsibility by the
Japanese government; (2) a
removal of the legal obstacles
preventing compensation;
and (3) unabridged education
of the past.[132] The
resolution also stresses the
urgency with which Japan
should act on these issues,
stating: "the right of
individuals to claim
reparations against the
government should be
expressly recognized in
national law, and cases for
reparations for the survivors
of sexual slavery, as a crime
under international law,
should be prioritized, taking
into account the age of the
survivors."[133]…
[130] European Parliament,
Human rights: Chad,
Women's Rights in Saudi
Arabia, Japan's Wartime Sex
Slaves, Dec. 17, 2007,
http://www.europarl.europa.e
u/
sides/getDoc.do?language=E
N& type=IM-
PRESS&reference=
20071210BRI14639&second
Ref= ITEM-008-EN.
[132] Id.
(p. 12, Body of Vinuya)
In December 2007, the
European Parliament, the
governing body of the
European Union, drafted a
resolution similar to House
Resolution 121.[35] Entitled,
"Justice for Comfort Women,"
the resolution demanded: (1)
a formal acknowledgment of
responsibility by the
Japanese government; (2) a
removal of the legal obstacles
preventing compensation;
and (3) unabridged education
of the past. The resolution
also stressed the urgency
with which Japan should act
on these issues, stating: "the
right of individuals to claim
reparations against the
government should be
expressly recognized in
national law, and cases for
reparations for the survivors
of sexual slavery, as a crime
under international law,
should be prioritized, taking
into account the age of the
survivors."
[35] European Parliament,
Human rights: Chad,
Women's Rights in Saudi
Arabia, Japan's Wartime Sex
Slaves, Dec. 17, 2007,
http://www.europarl.europa.e
u/
sides/getDoc.do?language=E
N& type=IM-
PRESS&reference=
20071210BRI14639&second
Ref= ITEM-008-EN.
(p. 13, Body of Vinuya)
BILLS-
110hres121ih/pdf/BILLS-
110hres121ih.pdf (U.S.)
A resolution on the 'comfort
women' (sex slaves) used by
Japan in World War II calls for
a change of official attitudes in
modern-day Japan, a right for
survivors or families to apply
for compensation and
measures to educate people
about these historical events.
…
Call for formal
acknowledgment of
responsibility by government
…
Legal obstacles to
compensation must be
removed
…
Education about the past
…
Source cited:
European Parliament, Human
rights: Chad, Women's Rights
in Saudi Arabia, Japan's
Wartime Sex Slaves, (17 Dec.
2007) available at
http://www.europarl.europa.eu/
sides/getDoc.do?language=
EN&type=IM-
PRESS&reference=
20071210BRI14639&secondR
ef= ITEM-008-EN
 [133] Id.

(p. 360 of Ladino)

7 The Canadian and Dutch The Canadian and Dutch Note:

. parliaments have each
followed suit in drafting
resolutions against Japan.
Canada's resolution demands
the Japanese government to
issue a formal apology, to
admit that its Imperial Military
coerced or forced hundreds
of thousands of women into
sexual slavery, and to restore
references in Japanese
textbooks to its war
crimes.[134] The Dutch
parliament's resolution simply
calls for the Japanese
government to uphold the
1993 declaration of remorse
made by Chief Cabinet
Secretary Yohei Kono.[135]
parliaments have each
followed suit in drafting On the issue of comfort
resolutions against Japan. women, the website only
Canada's resolution demands refers to the attitude and
the Japanese government to reaction of the following
issue a formal apology, to governments: Taiwan, South
admit that its Imperial Military Korea, North Korea,
coerced or forced hundreds Philippines, China, Indonesia,
of thousands of women into Malaysia, and Japan.
sexual slavery, and to restore
references in Japanese Source cited:
textbooks to its war
crimes.[36] The Dutch
http://taiwan.yam.org.tw/wome
parliament's resolution calls
nwe
for the Japanese government
b/conf_women/index_e.html
to uphold the 1993
declaration of remorse made
by Chief Cabinet Secretary
Yohei Kono.

[134] The Comfort Women--A [36] The Comfort Women--A

History of Trauma, History of Trauma,

http://taiwan.yam.org.tw/ http:// taiwan.yam.org.tw/

womenweb/conf_women/
index_e.html. (last visited
Mar. 26, 2009).
[134] Id.
womenweb/conf_women/
index_e.html.
(p. 13, Body of Vinuya)

(p. 360 of Ladino)

Violations of Rules Against Plagiarism in the Vinuya Decision

Below are violations of existing rules against plagiarism as can be found in the Vinuya Decision, in
addition to violations earlier enumerated in my Dissent:

A.1 A passage from the article of Criddle and Fox-Decent was copied verbatim, including the
footnote. There are no quotation marks to indicate that this important conclusion from the article and
the example to illustrate it, which were discussed in the corresponding footnote, are not
the ponente’s own. No attribution to Criddle and Fox-Decent was made.

A.2 Similar to A.1, Criddle and Fox-Decent’s conclusion was copied word for word, including the
corresponding footnote, which was enclosed by parentheses and placed immediately after the
sentence to which it corresponds. No attribution to Criddle and Fox-Decent was made.
A.3 Similar to A.1 and A.2, this sentence from the article was copied verbatim, including its
corresponding footnote. No attribution to Criddle and Fox-Decent was made.

B.1 Save for a few words which were intentionally rearranged, the entire paragraph was lifted
verbatim from Ellis’s discussion on rape as an international crime. Two citations of cases from Ellis
were omitted. No attribution to Ellis was made.

B.2 Ellis’s identification of Article 3 of the 1949 Geneva Conventions as a general authority on rape
as a violation of the laws of war, and his summation thereof, was lifted word for word. His footnote
was also copied, including the intratext reference "supra note 23," enclosed in parentheses and
inserted after the corresponding text. No attribution to Ellis was made.

B.3 Ellis’s summary and analysis of Article 27 of the Fourth Geneva Convention was lifted word for
word. No attribution to Ellis was made.

B.4 Ellis’s conclusion regarding Protocol I of the Geneva Convention was appropriated, without any
attribution to Ellis. Ellis’s footnote was again copied. No attribution to Ellis was made.

C.1 McCorquodale’s analysis of individual claims within the international legal system was copied
word for word and inserted after the introductory clause "In the international sphere" in Vinuya. The
footnote McCorquodale appended to his analysis of individual claims (i.e. the sentences copied in
C.1.) is not present. No attribution to McCorquodale was made.

C.2 This item refers to the footnote attached to the copied sentence in C.1. It is composed of two
instances of copying stitched together: two sentences of McCorquodale, taken from the paragraph
directly preceding his analysis of individual claims in the international legal system, and the footnote
corresponding to the PCIJ Decision quoted in the second of the said two sentences. No attribution to
McCorquodale was made.

C.3 The conclusion Okowa reached was copied in footnote 63 of Vinuya, but Okowa’s reference to
the cases she cited in her analysis was omitted and the context of her conclusion (on the current
standing of general international law with regard an enforceable legal duty of diplomatic protection)
was removed. No attribution to Okowa was made.

C.4 McCorquodale’s discussion of the case Abassi v. Secretary of State was copied without any
citation of his essay or the international law book in which it was published. No attribution to
McCorquodale was made.

C.5 The order of sentences were reversed, but the conclusion in Okowa’s essay was copied, and as
well as her discussion of the case Kaunda v. President of the Republic of South Africa. No attribution
to Okowa was made.

D.1 Albornoz’s summary and analysis was copied word for word in the body of the Decision on page
24. No indication was given that this was not the ponente’s original analysis, and no attribution to
Albornoz was made.

D.2 The elucidation of Albornoz regarding what she calls the traditional view on the discretion of
states in the exercise of diplomatic protection was copied into footnote 57 of the Vinuya Decision.
Albornoz’s citation of Borchard was used as a reference in the same footnote, but Albornoz was
bypassed completely.
D.3 Albornoz’s summation of the ILC’s First Reading Draft Articles on diplomatic protection was
copied with some modifications: the second half of the first sentence from Albornoz was removed
and instead replaced with "fully support this traditional view" in an apparent effort to link this
summary to the previous instance of copying (table entry D.2.). Minor edits were made to Albornoz’s
summary to streamline the flow of the second copied sentence. No attribution to Albornoz was
made.

D.4 Albornoz’s summation of Dugard’s proposal was lifted word for word and used in footnote 62
of Vinuya. The footnote Albornoz attached to this summation, a quotation of Albornoz’s cited source,
was inserted directly after the copied summation. No attribution to Albornoz was made.

D.5 The conclusion reached by Albornoz regarding the rejection of Dugard’s proposal was copied
exactly, even with regard to the portions of the Official Records of the General Assembly that
Albornoz quoted. No attribution to Albornoz was made.

D.6 The major part of a sentence from Albornoz was copied and attached to the transition phrase "In
addition" to continue the pastiche of copied sentences in footnote 62 of Vinuya. The footnote of
Albornoz regarding Dugard was inserted immediately after and enclosed in parentheses. Note that
the inline text citation, "supra note 13, par. 80" in Albornoz’s footnote 130 was copied as well. No
attribution to Albornoz was made.

D.7 Continuing from the instance of copying in D.6., the second half of a sentence in Albornoz was
used as what is apparently an incomplete sentence (beginning with: ", but their enforceability...") in
footnote 62 of Vinuya. The next sentence was also copied, and its corresponding footnote enclosed
in parentheses and inserted immediately after it. While the Decision cites one of the same sources
Albornoz cited (ILC First Reading Draft Articles on Diplomatic Protection), no attribution is made to
Albornoz for the excerpt, or to Dugard, whom Albornoz cited for the quoted portion.

E.1 An excerpt from the third paragraph of Prochaska is reproduced verbatim in footnote 62 of page
26 of the Decision. There were no quotation marks or attribution to Prochaska to indicate that such
was not the ponente’s analysis, but Prochaska’s.

F.1 A sentence from paragraph 11 of Niksch was reproduced verbatim without quotation marks in
page 17 of the body of the Decision. No attribution to Niksch was made.

F.2 An excerpt from paragraph 12 of Niksch was reproduced verbatim without quotation marks in
page 17 of the body of the Decision. No attribution to Niksch was made.

F.3 An excerpt from paragraph 19 of Niksch was reproduced verbatim without quotation marks in
page 17 of the body of the Decision. No attribution to Niksch was made.

G.1 An excerpt from page 344 of Ladino was reproduced without quotation marks in pages 9 to 10 of
the body of the Decision. The phrase "women who had filed" was changed to "comfort women."

G.2 An excerpt from page 345 of Ladino was reproduced without quotation marks in page 12 of the
body of the Decision. The two sentences in the footnote from Ladino were combined, but the words
were reproduced verbatim.

G.3 An excerpt from page 345 of Ladino is reproduced verbatim in page 12 of the body of the
Decision. Part of Ladino’s discussion was reproduced verbatim in footnote 32 of the Vinuya
Decision, with no attribution to Ladino.
G.4 The first part of the paragraph in page 345 of Ladino was reproduced verbatim. However, the
latter part of Ladino’s explanation, (stating that while the judgment against Japan was not legally
binding, it still "cast Japan in the shadow of moral reproach") was omitted. There was no attribution
to Ladino.

G.5 An excerpt from page 346 of Ladino, along with two footnotes, was reproduced verbatim in page
12 of the Decision. No attribution to Ladino was made.

G.6 Ladino’s discussion in page 350 and the corresponding footnotes were reproduced verbatim in
page 13 of the Decision. No attribution to Ladino was made.

B. The Process of the Commission of Plagiarism in the Vinuya Decision

A careful reading of the Vinuya Decision reveals that it is unlike other decisions issued by this Court,
except perhaps for the case of Ang Ladlad LGBT Party v. Commission on Elections, which Justice
del Castillo likewise penned. The footnotes in Vinuya read like those found in theses of international
law scholars, where one discursive footnote can be so extensive as to occupy three-fourths of a
page (see footnotes 62, 63, and 65). An honest researcher for a Philippine judge, after painstakingly
developing a perspective on an international legal issue by reading the works of scholars who have
documented the debate, would deliberately refer to the works of such scholars, and not transform
their works into his own.

Justice del Castillo’s researcher not only contends that accidental deletion is the sole reason for the
missing footnotes, but also that their office subsequently went over the Decision "sentence by
sentence" and concluded that no plagiarism was committed at all. However, the rearrangement of
the sentences lifted from the original work, the mimicking of the original work’s use of footnotes, the
subsequent back and forth copying and pasting of such footnotes – these acts belie mere
negligence. The following analysis shows objective plagiarism viewed through three lenses: extent,
deliberateness, and effect.

The massiveness and frequency with which instances of unattributed copying occur in Vinuya
highlight the extent of the plagiarism. Clever transpositions of excerpts to make them flow according
to the researcher’s transition phrases are clearly devices of a practiced plagiarist, which betray the
deliberateness of every single act. The plagiarism in Vinuyawill also be scrutinized on the basis of
its effect, especially in light of its commission in a judicial decision. The rationale for such a thematic
presentation will then be discussed in a succeeding section, which deals with evaluating plagiarism.

1. The extent of unattributed copying belies inadvertence.

In the tables outlined above, as well as in the analysis in my Dissent dated 12 October 2010, it can
be seen that the researcher of Justice del Castillo failed to make the necessary attribution twenty-
three (23) times in the body of the Vinuya Decision; the works whose texts were used without
attribution include several copyrighted journal articles, essays from a book on international law, and
one congressional report of the United States. There were thirty-six (36) missing citations in the
footnotes, including twelve (12) citations missing from footnote 65 alone. This adds up to a total of
fifty-nine (59) missing citations. The sheer number of missing citations is related to the length and
volume of the footnotes and discussions, some of which Justice del Castillo himself admitted to be
unnecessary.

The quantity of text copied without attribution is most concentrated in pages 12 to 13, which deal
with actions taken in the pursuit of justice for the comfort women, and in pages 24 to 32, which
appear under the section heading The Philippines is not under any international obligation to
espouse petitioners’ claims. In the latter section, the discussion and analysis appearing on pages
24 (insofar as the section after the start of the international law discussion is concerned), 28 and 31
in particular would be significantly impaired were the unattributed portions of texts to be removed:
there would be no words left in the instance of page 24; the entirety of the discursive footnote on
page 28 would be reduced to one sentence and its attendant citations; three sentence fragments,
and no footnotes, would remain on page 31.

In pages 24 to 32, out of a total of thirteen (13) discursive footnotes, eleven (11) of these are
comprised wholly of material copied without attribution, and yet another one – footnote 69 – contains
text that was copied without attribution as well. The writer of the Vinuya Decision displayed
meticulous attention to detail in reproducing the citations to international judicial decisions,
publications, and other such references in these footnotes – citations that originally appeared in the
copied works – but completely bypassed the copied works themselves, thereby appropriating the
analysis, processing, and synthesizing of information, as well as the words, of the writers whose
works were copied.

On its face, the sheer volume of portions copied, added to the frequency with which citations to the
plagiarized works were omitted while care was taken to retain citations to the sources cited by the
plagiarized works, reveal that the plagiarism committed cannot logically be anything other than
deliberate.

2. Systematic commission of plagiarism demonstrates deliberateness.

In pages twelve (12) to thirteen (13) of Vinuya, sentences from the body of Ladino’s article were
interspersed with Ladino’s footnotes, without a single attribution to Ladino (please refer to Table G).
Sentences from Ladino’s article were copied into footnote 32 of Vinuya, while the immediately
succeeding sentence was again copied to form part of the body of Vinuya. The cutting of sentences
from Ladino’s work and the patching together of these pieces to form a mishmash of sentences
negate the defense of inadvertence, and give the reader the impression that the freshly crafted
argument was an original creation.

The work of Criddle and Fox-Decent was subjected to a similar process. This process is dissected in
the following list of instances ordered according to how they appear in pages 31 to 32 of the body of
the Decision:

a. Detailed analysis of ‘patchwork plagiarism’ in the body of Vinuya, pp. 31-32:

1. Page 31, par. 2: Early strains of the jus cogens doctrine have existed since the 1700s,[71] but
peremptory norms began to attract greater scholarly attention with the publication of Alfred von
Verdross's influential 1937 article, Forbidden Treaties in International Law.[72]

[72] Verdross argued that certain discrete rules of international custom had come to be recognized
as having a compulsory character notwithstanding contrary state agreements. At first, Verdross's
vision of international jus cogensencountered skepticism within the legal academy. These voices of
resistance soon found themselves in the minority, however, as the jus cogens concept gained
enhanced recognition and credibility following the Second World War. (See Lauri Hannikainen,
Peremptory Norms (Jus cogens) in International Law: Historical Development, Criteria, Present
Status 150 (1988) (surveying legal scholarship during the period 1945-69 and reporting that "about
eighty per cent [of scholars] held the opinion that there are peremptory norms existing in
international law").
This sentence, together with footnote 72 in Vinuya, is part of one continuous discussion by Criddle
and Fox Decent, and copied verbatim. The two authors rightfully attributed the historical data to Lauri
Hannikainen, but the conclusion on established jus cogens principles is wholly their own.

2. Page 31, par. 2: The recognition of jus cogens gained even more force in the 1950s and 1960s
with the ILC’s preparation of the Vienna Convention on the Law of Treaties (VCLT).[73] Though
there was a consensus that certain international norms had attained the status of jus cogens…[74]

The first sentence and its subsequent clause are lifted verbatim from the article. Footnotes 73 and
74 are Criddle and Fox-Decent’s analysis of how international "minimum requirements" form
evidence of jus cogens. The paragraph was broken down, then rearranged in Vinuya.

3. Page 31, par. 2: Though there was a consensus that certain international norms had attained the
status of jus cogens,[74] the ILC was unable to reach a consensus on the proper criteria for
identifying peremptory norms.

Aside from copying the first clause in the sentence, which forms part of the premise, the conclusion
of Criddle and Fox-Decent was likewise copied.

4. Page 32, par. 1: After an extended debate over these and other theories of jus cogens, the ILC
concluded ruefully in 1963 that "there is not as yet any generally accepted criterion by which to
identify a general rule of international law as having the character of jus cogens."[75]

After copying the sentence and footnote in No. 4 above, three sentences were omitted from the
article, then this sentence in No. 5 was also copied. In the body of the work, the two sentences
immediately following this statement pertaining to the conclusion of the International Law
Commission were again omitted.

5. Page 32, par. 1: In a commentary accompanying the draft convention, the ILC indicated that "the
prudent course seems to be to x x x leave the full content of this rule to be worked out in State
practice and in the jurisprudence of international tribunals."[76]

This sentence was conjoined with the sentence above; footnotes 75 and 76 were also copied. The
net effect is that this paragraph was spliced together, sentence by sentence, from Criddle and Fox-
Decent’s work.

A similar method of splicing was used extensively in the footnotes of the Decision as well. It is most
evident in footnote 65, the longest discursive footnote in Vinuya. This portion copied heavily from the
article of Dr. Mark Ellis entitled "Breaking the Silence: Rape as an International Crime." To illustrate,
the first paragraph of footnote 65 is broken down and scrutinized by sentence, following the original
sequence in the Decision.

b. Detailed analysis of ‘patchwork plagiarism’ in paragraph 1, footnote 65 of Vinuya:

1. Sentences 1 and 2: The concept of rape as an international crime is relatively new. This is not to
say that rape has never been historically prohibited, particularly in war.

These are the opening sentences from the second paragraph on page 227 of the journal article. Ellis
cites the treaty between the United States and Prussia as his own example, in a footnote. In Vinuya,
this particular citation is copied, enclosed in parentheses, and became the sixth and seventh
sentences of footnote 65.
2. Sentence 3: But modern-day sensitivity to the crime of rape did not emerge until after World War
II.

This is the sixth sentence in the same paragraph in Ellis’ article as discussed above. It is transposed
verbatim, and became the second sentence in Vinuya.

3. Sentences 4 and 5: In the Nuremberg Charter, the word rape was not mentioned. The article on
crimes against humanity explicitly set forth prohibited acts, but rape was not mentioned by name.

The clauses "After World War II, when the Allies established the Nuremberg Charter…" was deleted.
This particular sentence is Ellis’ own conclusion regarding the "Agreement for the Prosecution and
Punishment of the Major War Criminals of the European Axis," but there was no attribution to Ellis,
only a citation of the agreement, along with Ellis’s other footnotes, at the end of the paragraph.

4. Sentences 6 and 7: (For example, the Treaty of Amity and Commerce between Prussia and the
United States provides that in time of war all women and children "shall not be molested in their
persons." The Treaty of Amity and Commerce, Between his Majesty the King of Prussia and the
United States of America, art. 23, Sept. 10, 1785, U.S.-Pruss., 8 Treaties & Other Int'l Agreements
Of The U.S. 78, 85.

This is the citation originally corresponding to the first and second sentences on page 227 of Ellis’s
article. This portion was copied in Vinuya, this time placed at the end of the paragraph and enclosed
in parentheses.

5. Sentence 8: The 1863 Lieber Instructions classified rape as a crime of "troop discipline."

Originally the second sentence in Ellis’s paragraph, this was transposed to the eighth. Its
corresponding footnote in Ellis was lifted verbatim, enclosed in parentheses, then inserted into the
paragraph in Vinuya, as the ninth sentence: "(Mitchell, The Prohibition of Rape in International
Humanitarian Law as a Norm of Jus cogens: Clarifying the Doctrine, 15 Duke J. Comp. Int’l. L. 219,
224)."

6. Sentence 10: It specified rape as a capital crime punishable by the death penalty.

Originally the fourth sentence in Ellis’ article, this was transposed, and its corresponding footnote
was copied: "(Id. at 236)."

7. Sentence 11: The 1907 Hague Convention protected women by requiring the protection of their
"honour."

The sentence was copied, and its corresponding footnote was lifted verbatim, enclosed in
parentheses, and placed at the end of the paragraph. Ellis’s attribution to the Yale Law website
where the pertinent law may be found was omitted, leaving only the following: ("Family honour and
rights, the lives of persons, and private property, as well as religious convictions and practice, must
be respected." Convention (IV) Respecting the Laws & Customs of War on Land, art. 46, Oct. 18,
1907. General Assembly resolution 95 (I) of December 11, 1946 entitled, "Affirmation of the
Principles of International Law recognized by the Charter of the Nürnberg Tribunal"; General
Assembly document A/64/Add.1 of 1946".

8. Sentence 13: See Agreement for the Prosecution and Punishment of the Major War Criminals of
the European Axis, Aug. 8, 1945, 59 Stat. 1544, 82 U.N.T.S. 279.
This is originally Ellis’s citation, used to support his observation that there was no express mention of
"rape" in the Nuremberg Charter. It was enclosed in parentheses and relegated to the end of the
paragraph in Vinuya.

9. Sentence 14: Article 6(c) of the Charter established crimes against humanity as the following:

CRIMES AGAINST HUMANITY: namely, murder, extermination, enslavement, deportation, and

other inhumane acts committed against any civilian population, before or during the war, or
persecutions on political, racial or religious grounds in execution of or in connection with any crime
within the Jurisdiction of the Tribunal, whether or not in violation of the domestic law of the country
where perpetrated.

This was lifted from page 227 of Ellis’s work. Pages 227 to 228 of the said work, pertaining to the
discussion on rape were substantially copied. Insertions were made for Ellis’s own footnotes.

The conscious thought required for the act of cutting and pasting the original author’s footnotes onto
the precise spot where the copied sentences ended contradicts the account of inadvertence. There
is consistent correspondence between the sentences copied to the footnote copied. In the example
above, the act of encapsulating Ellis’ footnotes in parentheses show further that in Vinuya there was
a conscious appropriation of Ellis’s sources in a usage that is substantially similar to what appears in
his article. This allegedly inadvertent copying of Ellis’s footnotes occurred no less than twelve (12)
times in footnote 65 alone.

3. Research steps purportedly followed in the drafting of Vinuya cast doubt on inadvertence.

The following is a recreation of the step-by-step research procedure followed by many offices in the
research and crafting of judicial decisions. It is based on the account given by the researcher of
the Vinuya Decision of her own experiences while working on the case. This detailed breakdown is
made in order to show the exact number of actions which must be made in order to input a citation, if
indeed it was intentionally inputted. A recreation of the steps necessary to delete a citation is also
made to show that the aggregate number of actions needed to erase each and every citation
missing in Vinuya is so high that the underlying cause could not have been mere inadvertence.

Step 1:

a. First, using an internet-based search engine, which could be a free search service like
Google’s, or a paid service like Westlaw’s, the researcher would have typed in key phrases
like "erga omnes," "sexual slavery," or other such terms relevant to the subject matter.

b. For some researchers, this is just a preliminary step, as they would then pick and choose
which articles to read and which to discard. The researcher in Vinuya, however, claimed that
she purposely read all the materials available through this search.8

Step 2:

a. The search engine would have generated a list of documents containing the search terms
and topics relevant to the subject matter. The search engine would also have linked the
items on this list to the corresponding online locations where these documents may be
accessed.
 b. In Vinuya, the researcher used the Westlaw legal research service (which is made
available to offices of all the Justices), and perused the generated list.9 A possible item on
this list would be the article entitled "Breaking the Silence: Rape as an International Crime,"
by one of the complaining authors, Dr. Mark Ellis.

Step 3:

The researcher would read articles from the generated list and identify the portions she planned to
incorporate into the draft. For this example, she would have scrolled through the work of Mark Ellis
and found the selection she wanted. The level of scrutiny invested into each of the chosen articles
would vary; some researchers make cursory readings and incorporate as many portions from
different works and authors as they can.

Step 4:

a. The researcher can either save the articles in their entirety, or save the selections in one
document. The researcher in Vinuya claimed that she did the latter and used the Microsoft
Word program for this purpose.

b. If the researcher chose to save only pertinent selections, then ideally the attributions
would have to be made at his point.

Now, this step is critical. I know of no software in the world, especially not Microsoft Word, that will
generate the citation to the work of Ellis on its own, without the appropriate action of the user. An
honest researcher would immediately copy and paste the citation references of Ellis into the copied
portions, or type a reference or label in, even if it were only a short form placeholder of the proper
citation. If she did neither, she may be sloppy, incompetent or downright dishonest.

During the deliberations of the Ethics Committee, the researcher explained this crucial step: "So I
would cut and paste relevant portions, at least portions which I find relevant into what turns out to be
a large manuscript which I can then whittle and edit and edit further."10 Adhering to this account,
there would be an additional step in the process:

Step 5

If an existing draft or "manuscript" has already been created, the next step would be to incorporate
the selections from the articles into the draft. This is a second opportunity to ensure that the proper
attributions are made. If the researcher is diligent, she would already have tried to follow the correct
form as prescribed by the Manual of Judicial Writing.11

If a "manuscript" or outline has already been formulated, then incorporating the selections would
require her to be conscious that these ideas and arguments are not her own. The process ideally
alerts any researcher that extraneous sources are being added. It allows her to make the following
considerations: Does this portion sufficiently discuss the historical context of a particular conclusion?
Do I need this literature as support for my arguments? Am I including it to support my arguments, or
merely to mimic the author’s? Corollarily, the researcher would initially assess if such argument
made by the author is adequately supported as well. She would check the author’s footnotes.
In Vinuya, the copying of the footnotes was so extensive, such that it practically used the uncited
works as blueprint for the Decision’s footnotes.
4. The frequency of instances of missing citations and actions required for deletion betray
deliberateness.

To purposefully input citations would require many key strokes and movements of the computer’s
"mouse." If the attributions had indeed been made already, then the deletions of such attributions
would not simply happen without a specific sequence of key strokes and mouse movements. The
researcher testified that the necessary attributions were made in the earlier drafts, but that in the
process of cutting and pasting the various paragraphs, they were accidentally dropped. She makes it
sound as if something like a long reference citation can just easily fall by the wayside. Not so.

The reference required under the Manual of Judicial Writing for the work of Ellis reads like this:
"Mark Ellis, Breaking the Silence: Rape as an International Crime, 38 Case W. Res. J. Int'l L. 225
(2006-2007)."

The researcher in Vinuya explained that footnotes were deleted along with headings of certain
portions, and with the deletion of the note reference mark in the body of the text, the citations in the
document’s footers disappeared also. For this scenario to happen with the same frequency as the
number of missing citations, the following steps must have been followed:

1. First movement: Using hand and eye coordination, consciously move cursor to the
location of target footnote and/or heading, using either the mouse or arrow keys.

2. Second movement: Select the "note reference mark" by highlighting the target footnote
number. Note that unlike in normal characters or texts wherein a single press of the "delete"
or "backspace" button would suffice, a footnote number must be highlighted before it can be
deleted. This means that either the particular footnote and/or heading must have been
"double-clicked" or it must have been specifically highlighted by a precise horizontal motion
of the cursor while pressing on a mouse button – both of which require two movements
(either two "clicks", or a "click" and a "swipe").

3. Third movement: Press "delete" or "backspace" key.

Note that in the case wherein the note reference mark was not highlighted by a mouse movement,
the "delete" or "backspace" key must have been pressed twice, as pressing it only once will merely
highlight the note reference mark without deleting the same.

Hence, even accommodating the explanation given by the researcher, at least four movements must
have been accomplished to delete one footnote or reference. Multiply this with the number of
references that were "dropped" or "missing," and you have a situation wherein the researcher
accomplished no less than two hundred thirty-six (236) deliberate steps to be able to drop the fifty-
nine (59) citations that are missing in Vinuya. If by some chance the cursor happened to be at the
precise location of the citations, and the citations were subsequently deleted by an accidental click of
the mouse, this would still have necessitated a total of one hundred seventy seven (177) clicks. It is
understandable if a researcher accidentally deleted one, two or even five footnotes. That a total of
59 footnotes were erased by mere accident is inconceivable.

To make a conservative estimate, we can deduct the number of times that a footnote number in the
body of the Decision could simply have been deleted inadvertently. Our analysis indicates that this
could have happened a third of the time, or an estimate of twenty times, when short footnotes
containing "supra" or "id." could have been easily forgotten or omitted. This would still have yielded
sixty deliberate steps or movements, and would alert the researcher either that: 1) too much of the
body comprises ideas which are not his own, or 2) too many of the sources in his "main manuscript"
were getting lost. Subsequently, if more than half of the attributions in the International Law
discussion went missing, the simple recourse would have been either to review his or her first draft,
or simply delete his lengthy discursive footnotes precisely because he cannot remember which
articles he might have lifted them from.

On Microsoft Word features that alert the user to discrepancies in footnote deletions

The researcher took pains to deliberately cut and paste the original sources of the author, thereby
making it appear that she was the one who collated and processed this material. What she should
have done was simply to cite the author from whom she took the analysis and summarization of the
said sources in the first place. The latter would have been the simple, straightforward, not to mention
honest path. Instead, the effect is that the Vinuya Decision also appropriated the author’s analysis.
Actually, it would have been easier to cite the author’s copied work considering the availability of
short citation forms commonly used as reference tools in legal articles such as "supra" or "id."

Microsoft Word may not have an automatic alarm each time a footnote or citation is deleted, but it
does contain built-in features to help raise "red flags" to signal that a particular passage was copied,
or is attached to a particular citation – if indeed such citation exists. For example, the researcher in
Vinuya, in describing her own process of drafting the Decision, stated that portions containing
footnotes from the first Vinuya draft were lifted and transformed into the contents of a separate
footnote. In short, during revisions of the draft, substantial footnoted portions which used to be in the
body were relegated to footnotes. This does not result, however, in the automatic erasure of the
original footnotes within the new footnote. A simple recreation of this process reveals that this
"footnote within a footnote" retains a number symbol in superscript, albeit one altered due to the
redundancy in the functionality of "footnotes within footnotes." Any reasonably prudent researcher
would thus be alerted to the fact that something was amiss with the citations in that particular
selection because the footnote would have abnormal numeric superscripts. This glaring abnormality
in itself is a warning.

Another notable feature is that when a cursor, as seen on the screen in an open document, is placed
over a footnote reference mark, Microsoft Word automatically supplies that footnote’s citation in a
popup text box. The popup box hovers over the numerical superscript, unmistakably indicating the
source.12 In addition, no single action can cause a footnote to be deleted; once the cursor is beside
it, either the "delete" or "backspace" key must be pressed twice, or it must be deliberately highlighted
and then erased with a stroke of either the "delete" or the "backspace" key. This functionality of
footnote deletion in Microsoft Word thus decreases the likelihood of footnotes being deleted without
the knowledge or intention of the researcher.

As to the claim of the researcher that the footnotes in the headings were accidentally deleted, there
was a failure on the part of the Ethics Committee to thoroughly investigate the matter when they
relied on a presentation of what, according to the researcher, happened during her research for and
drafting of the Vinuya Decision. Instead of asking her to re-create the various situations of
"inadvertent dropping," the Ethics Committee satisfied itself with a "before" and "after" Microsoft
PowerPoint presentation which could not, by any stretch of the imagination, have recreated the
whole process of researching and drafting that happened in Vinuya unless every step were to be
frozen through screenshots using the "Print Screen" command in tandem with a common image
management program. To simply present the "before" and "after" scenario through PowerPoint has
no bearing on the reality of what happened. Had the Ethics Committee required that the presentation
made before them be through recreation of the drafting process using Microsoft Word alone, without
"priming the audience" through a "before" and "after" PowerPoint presentation, they would have
seen the footnotes themselves behaving strangely, alerting the researcher that something was
seriously wrong. The Committee would then have found incredible the claim that the accidental
deletion of a footnote mark attached to a heading – and the subsequent transposition of text under
that heading to another footnote – could have occurred without the researcher being reminded that
the text itself came from another source. Proof of deliberate action is found in the Vinuya Decision
itself – the care with which the researcher included citations of the sources to which the authors of
the copied works referred, while conveniently neglecting attribution to the copied works themselves.

It is therefore impossible to conclude that such gross plagiarism, consisting of failure to attribute to
nine (9) copyrighted works, could have been the result of anything other than failure to observe the
requirements of the standard of conduct demanded of a legal researcher. There is also no basis to
conclude that there was no failure on the part of Justice del Castillo to meet the standard of
supervision over his law clerk required of incumbent judges.

III. On Evaluating Plagiarism

A. Posner’s Standards for Evaluating the Characterization of Incidents of Plagiarism

To be generous to my colleagues in this part of my analysis, I have referred to one of the scholars
who hold the most liberal views on plagiarism, Judge Richard A. Posner. The three guideposts by
which I structured my technical analysis of the instances of plagiarism in the Vinuya Decision come
from his breakdown of certain key issues in his work, The Little Book of Plagiarism. In his "cook’s
tour" of the key issues surrounding plagiarism, wherein he is more liberal than most academics in
speaking of the sanctions the act may merit – he is against the criminalization of plagiarism, for
instance, and believes it an act more suited to informal sanctions13 – Judge Posner characterizes
plagiarism thus:

Plagiarism is a species of intellectual fraud. It consists of unauthorized copying that the copier claims
(whether explicitly or implicitly, and whether deliberately or carelessly) is original with him and the
claim causes the copier's audience to behave otherwise than it would if it knew the truth. This
change in behavior, as when it takes the form of readers' buying the copier's book under the
misapprehension that it is original, can harm both the person who is copied and the competitors of
the copier. But there can be plagiarism without publication, as in the case of student plagiarism. The
fraud is directed in the first instance at the teacher (assuming that the student bought rather than
stole the paper that he copied). But its principal victims are the plagiarist's student competitors, who
are analogous to authors who compete with a plagiarist.14

Posner then goes on to neatly sum up, in the form of three "keys," major considerations that need to
be taken into account when evaluating an occurrence of plagiarism. His book’s last paragraph reads:

In the course of my cook’s tour of the principal issues that have to be addressed in order to form a
thoughtful response to plagiarism in modern America, I have challenged its definition as "literary
theft" and in its place emphasizedreliance, detectability, and the extent of the market for
expressive works as keys to defining plagiarism and calibrating the different types of
plagiarism by their gravity. I have emphasized the variety of plagiarisms, argued for the adequacy
of the existing, informal sanctions, pointed out that the "fair use" doctrine of copyright law should not
protect a plagiarist, noted the analogy between plagiarism and trademark infringement (a clue to the
entwinement of the modern concept of plagiarism with market values)–and warned would-be
plagiarists that the continuing advance of digitization may soon trip them up. (Emphasis supplied.)

It is in this spirit that the three questions – of extent, an analogue of reliance, as extensive plagiarism
correlates to the reliance of the text on the copied work; deliberateness; and effect, an analogue of
what Posner called "extent of the market for expressive works", used here in the context of the effect
of plagiarism in the Vinuya Decision – were put to the text being scrutinized. The first two questions
have been discussed in preceding sections. To examine the effect, one must first make the
distinction between the effect of copying a copyrighted work without attribution, and between the
effect of copying without attribution a work in the public domain. Using these three guideposts, we
can them come to a conclusion whether the plagiarism is relatively harmless and light or something
severe and harmful. In the case of the Vinuya Decision, we have come to conclude that the
plagiarism is severe; and because judicial decisions are valuable to the Philippine legal system, that
the plagiarism harms this institution as well.

1. The distinction between the effect of appropriating copyrighted works and works in the
public domain

The infringement of copyright necessitates a framework for characterizing the expression of ideas as
property. It thus turns on a question of whether there exists resultant harm in a form which is
economically quantifiable. Plagiarism, on the other hand, covers a much wider range of acts. In
defining copyright infringement, Laurie Stearns points out how it is an offense independent from
plagiarism, so that an action for violation of copyright – which may take on either a criminal and a
civil aspect, or even both – does not sufficiently remedy the broader injury inherent in plagiarism.

Plagiarism is not necessarily copyright infringement, nor is copyright infringement necessarily

plagiarism…In some ways the concept of plagiarism is broader than infringement, in that it can
include the copying of ideas, or of expression not protected by copyright, that would not constitute
infringement, and it can include the copying of small amounts of material that copyright law would
disregard.15

Plagiarism, with its lack of attribution, severs the connection between the original author's name and
the work. A plagiarist, by falsely claiming authorship of someone else's material, directly assaults the
author's interest in receiving credit. In contrast, attribution is largely irrelevant to a claim of copyright
infringement…infringement can occur even when a work is properly attributed if the copying is not
authorized–for example, a pirated edition of a book produced by someone who does not own the
publication rights.16

The recognition of plagiarism as an offense that can stand independently of copyright infringement
allows a recognition that acts of plagiarism are subject to reproof irrespective of whether the work is
copyrighted or not. In any case, the scenario presented before the Court is an administrative matter
and deals with plagiarism, not infringement of copyright.

2. On judicial plagiarism and the sanctions therefor

The majority Resolution quotes from the Judicial Opinion Writing Handbook written by Joyce George
– which I cited in my earlier Dissent – thusly:

The implicit right of judges to use legal materials regarded as belonging to the public domain is not
unique to the Philippines. As Joyce C. George, whom Justice Maria Lourdes Sereno cites in her
dissenting opinion, observed in her Judicial Opinion Writing Handbook:

A judge writing to resolve a dispute, whether trial or appellate, is exempted from a charge of
plagiarism even if ideas, words or phrases from a law review article, novel thoughts
published in a legal periodical or language from a party’s brief are used without giving
attribution. Thus judges are free to use whatever sources they deem appropriate to resolve
the matter before them, without fear or reprisal. This exemption applies to judicial writings
intended to decide cases for two reasons: the judge is not writing a literary work and, more
importantly, the purpose of the writing is to resolve a dispute. As a result, judges
adjudicating cases are not subject to a claim of legal plagiarism.

The use of this excerpt to justify the wholesale lifting of others’ words without attribution as an
"implicit right" is a serious misinterpretation of the discussion from which the excerpt was taken.
George wrote the above-quoted passage in the context of a nuanced analysis of
possible sanctions for judicial plagiarism, not in the context of the existence of plagiarism in judicial
opinions. (I had candidly disclosed the existence of this liberal view even in my 12 October 2010
Dissent.) The sections preceding the text from which this passage was taken are, in fact,
discussions of the following: ethical issues involving plagiarism in judicial writing, with regard to both
the act of copying the work of another and the implications of plagiarism on the act of adjudication;
types of judicial plagiarism, the means by which they may be committed, and the venues in and
through which they can occur; and recent cases of judicial plagiarism.

In no wise does George imply that the judicial function confers upon judges the implicit right
to use the writing of others without attribution. Neither does George conflate the possible
lack of sanctions for plagiarism with the issue of whether a determination of judicial
plagiarism can be made. Rather, George is careful to make the distinction between the issue of
whether judicial plagiarism was committed and the issue of whether a sanction can be imposed for
an act of judicial plagiarism. In George’s terminology, the latter issue may also be framed as a
question of whether judicial plagiarism is "subject to a claim of legal [that is, actionable] plagiarism",
and it has no bearing whatsoever on the former issue. Thus, George writes:
1av vphi1

The intentional representation of another person’s words, thoughts, or ideas as one’s own without
giving attribution is plagiarism. "Judicial plagiarism" is the copying of words or ideas first written
down by another judge, advocate, legal writer or commentator without giving credit to the originator
of that work. It can include such things as a judge’s copying of another’s judges opinion, the
adoption verbatim of an advocate’s findings of fact and conclusions of law, the wholesale adoption of
an advocate’s brief, or the copying of a portion of a law review article and representing it as the
judge’s own thoughts. The lack of attribution makes this activity "judicial plagiarism," but without legal
sanctions.17

Indeed, my previous Dissent stated that inasmuch as sanctions for judicial plagiarism are concerned,
"there is no strictly prevailing consensus regarding the need or obligation to impose sanctions on
judges who have committed judicial plagiarism." Yet the absence of a definite answer to the question
of liability does not grant judges carte blanche to use the work of others without attribution, willy-nilly,
in their judicial opinions. As George puts it, "the judge is ethically bound to give proper credit to law
review articles, novel thoughts published in legal periodicals, newly handed down decisions, or even
a persuasive case from another jurisdiction."18 Plainly, George is of the opinion that though a judge
may not be held liable for an act of judicial plagiarism, he should still attribute.

A note about "intentional representation." A careful reading of George’s writing on judicial plagiarism
will make it clear that she does not consider "inadvertent" or "unintentional"
plagiarism not plagiarism; indeed, she makes the distinction between "intentional" and
"unintentional" plagiarism several times, treating both as types of plagiarism:

Using another’s language verbatim without using quotation marks or a block quote is intentional, as
opposed to unintentional, plagiarism.19

...
The lack of proper attribution may be unintentional and due to sloppy note taking, either by the law
clerk or the judge.20

...

Judicial plagiarism may also arise from the use of law clerks performing research and writing of draft
decisions and who may not accurately reflect the source. The plagiarized material may be included
within the draft resulting from the law clerk’s poor research skills.21

...

The commission of unintended judicial plagiarism is unethical, but it is not sanctionable.22

The intentional representation of which George speaks, then, may be considered as the intent to
represent a work as one’s own – already embodied in claiming a work by, for instance, affixing one’s
name or byline to it – in which case the inadvertence, or lack thereof, by which an act of plagiarism
was committed is irrelevant to a finding of plagiarism.

While George is perhaps not as exacting in her valuation of the penalties for plagiarism as others
may be, she still emphasizes that her view on the exemption of judicial plagiarism from sanctions –
among which she evidently counts social stigma, censure, and ostracism – does not negate the
judge’s ethical obligation to attribute. She writes:

In conclusion, this author believes that a judicial writer cannot commit legal plagiarism because the
purpose of his writing is not to create a literary work but to dispose of a dispute between parties.
Even so, a judge is ethically bound to give proper credit to law review articles, novel thoughts
published in legal periodicals, newly handed down decisions, or even a persuasive case from
another jurisdiction. While the judge may unwittingly use the language of a source without attribution,
it is not proper even though he may be relieved of the stigma of plagiarism.23

As I wrote in my previous Dissent:

In so fulfilling her obligations, it may become imperative for the judge to use "the legal reasoning and
language [of others e.g. a supervising court or a law review article] for resolution of the dispute."
Although these obligations of the judicial writer must be acknowledged, care should be taken to
consider that said obligations do not negate the need for attribution so as to avoid the commission of
judicial plagiarism. Nor do said obligations diminish the fact that judicial plagiarism "detracts directly
from the legitimacy of the judge's ruling and indirectly from the judiciary's legitimacy" or that it falls far
short of the high ethical standards to which judges must adhere.24

It must not be forgotten, however, that George’s view tends toward the very liberal. There are other
writings, and actual instances of the imposition of sanctions, that reveal a more exacting view of the
penalties merited by judicial plagiarism.25

B. On the Countercharges Made by Justice Abad

In his Concurring Opinion in A.M. No. 10-7-17-SC, Justice Abad alleged that I myself have "lifted
from works of others without proper attribution," having written "them as an academician bound by
the high standards" that I espouse.

Regarding this allegation, let us recall my Dissent promulgated on 12 October 2010. I stated:
Plagiarism thus does not consist solely of using the work of others in one’s own work, but of the
former in conjunction with the failure to attribute said work to its rightful owner and thereby, as in the
case of written work, misrepresenting the work of another as one’s own. As the work is another’s
and used without attribution, the plagiarist derives the benefit of use form the plagiarized work
without expending the requisite effort for the same – at a cost (as in the concept of "opportunity
cost") to its author who could otherwise have gained credit for the work and whatever compensation
for its use is deemed appropriate and necessary.26

Allow me to analyze the allegations of Justice Robert C. Abad point by point using the same
standard I propounded in my 12 October 2010 Dissent.

1. The alleged non-attribution to the Asian Development Bank’s Country Governance Assessment
Report for the Philippines (2005).

TABLE H: Comparison of Justice Abad’s allegations, the 2001 and 2007 versions of the article co-
authored with Drs. De Dios and Capuno, and the ADB Country Governance Assessment of 2005.

Excerpt from the Article Excerpt from the ADB

Co-Authored with Drs.
De Dios and Capuno:
Reproduction of
J. Abad’s Allegations Justice and the Cost of
Doing Business: The
Philippines, report
submitted to the World
Bank, 2001.
Country Governance
Assessment:
Philippines
Asian Development Bank
Country Governance
Assessment: Philippines,
2005.

1. Cost refers to both
monetary and
nonmonetary opportunities
that a litigant has to forego
in pursuing a case. Direct
cost refers not only to fees
paid to the courts but also
to out-of-pocket costs
arising from litigation itself
(e.g., lawyers’ fees and
compensation, transcript
fees for stenographic
notes, etc.). Indirect costs
refer to lost opportunities
arising from delays in the
resolution of cases and the
time spent by a litigant
attending and following up
a case.
[Asian Development Bank
Country Governance
Costs, on the other hand,
refer to both the monetary
and nonmonetary
opportunities that business
people forego as a result
of making use of the
judicial system itself.
Direct costs refer not only
to the fees paid the courts
but also to out-of-pocket
costs arising from litigation
itself (e.g., lawyers’ fees
and documentation).
Indirect costs also
inevitably arise, of which
the most important are
those arising from delays
in the resolution of cases,
and the failure to come up
with timely decisions.
Excerpt from the Article
Co-Authored with Drs.
De Dios and Capuno:
Cost refers to both
monetary and
nonmonetary
opportunities that a
litigant has to forego in
pursuing a case. Direct
cost refers not only to
fees paid to the courts but
also to out-of-pocket
costs arising from
litigation itself (e.g.,
lawyer’s fees and
compensation, transcript
fees for stenographic
notes, etc.). Indirect costs
refer to lost opportunities
arising from delays in the
resolution of cases and
the time spent by a
litigant attending and
following up a case.
 Assessment (Philippines)
2005, page 103] Justice and the Cost of
Doing Business: The
Philippines, UP School of
Economics Discussion
Paper 0711, October
2007.
Costs, on the other hand,
refer to both the monetary
and nonmonetary
opportunities that business
people forego as a result
of making use of the
judicial system itself.
Direct costs refer not only
to the fees paid the courts
but also to out-of-pocket
costs arising from litigation
itself (e.g., lawyers’ fees
and documentation).
Indirect costs also
inevitably arise, of which
the most important are
those arising from delays
in the resolution of cases,
and the failure to come up
with timely decisions.

Justice Abad accuses Dr. Emmanuel S. De Dios, Dr. Joseph J. Capuno, and me of copying, without
attribution, three sentences from the Asian Development Bank’s 2005 Outlook Report for the
Philippines, and incorporating them into our 2007 paper entitled "Justice and the Cost of Doing
Business." 27

I thank Justice Abad for alerting me to this particular ADB publication; otherwise I would not have
noticed ADB’s failure to attribute the same to my co-authored work produced in 2001. Were it not
for his charges, I would not have learned of such inadvertent error from the ADB. I have thus called
the attention of my co-authors, Drs. De Dios and Capuno, to this matter. Below is a reproduction of
the contents of my letter to Drs. De Dios and Capuno:

Hon. Maria Lourdes P.A. Sereno

Associate Justice
Supreme Court of the Philippines

February 4, 2011

Dr. Emmanuel C. De Dios

Dr. Joseph D. Capuno
School of Economics
University of the Philippines
Dear Drs. De Dios and Capuno

Greetings!

I have been recently alerted to a possible plagiarism that we are suspected to have committed with
respect to the 2005 Asian Development Bank Outlook Report, specifically three sentences in page
103 that reads:

... Cost refers to both monetary and nonmonetary opportunities that a litigant has to forego in
pursuing a case. Direct cost refers not only to fees paid to the courts but also to out-of-pocket costs
arising from litigation itself (e.g. lawyer’s fees and compensation, transcript fees for stenographic
notes, etc.) Indirect costs refer to lost opportunities arising from delays in the resolution of cases and
the time spent by a litigant attending and following up a case.

On examination, I discovered that it is the ADB that failed to attribute those sentences to the report
we submitted in August 2001 to the World Bank entitled "Justice and the Cost of Doing Business:
The Philippines," specifically found in the third paragraph of our 2001 report. May I suggest that
perhaps you could alert our friends at the ADB regarding the oversight. It would be nice if our small
study, and the World Bank support that made it possible, were appropriately recognized in this ADB
publication.

Warmest regards always.

Sincerely,

Maria Lourdes P.A. Sereno

A proper reading of the ADB publication will immediately convey the fact that the ADB considers one
of my writings as a resource on the topic of Philippine judicial reform. My name is quoted four (4)
times in the text. A reading of the references listed one of my 2001 papers, which I wrote singly as
the source. Note the following references to my writing:

... It is incumbent upon the courts to harmonize these laws, and often they would find the absence of
constitutional standards to guide them (Sereno 2001). at page 98

...

... Critics pointed out that the Supreme Court should not have made factual declarations on whether
a property belongs to the national patrimony in the absence of an operative law by which a factual
determination can be made (Sereno 2001). at page 99

... As Sereno pointed out, if this tension between the three branches is not resolved satisfactorily, it
will create a climate of unpredictability as a result of the following: at page 99

...

(iii) a court that will continually have to defend the exercise of its own powers against the criticism of
the principal stakeholders in the process of economic policy formulation: the executive and
legislative branches and the constituencies consulted on the particular economic issues at hand
(Sereno 2001).
Had Justice Abad or his researcher taken the time to go through the ADB material, it would have
been immediately apparent to either of them that ADB was merely collating the thoughts of several
authors on the subject of Philippine judicial reform, and that I was one of those considered as a
resource person. He would not then have presumed that I copied those sentences; rather, it might
have struck him that more likely than not, it was the ADB echoing the thoughts of one or some of the
authors in the reference list when it used those quoted sentences, and that the pool of authors being
echoed by ADB includes me. The reference list of the ADB report with the relevant reference is
quoted herein:

REFERENCES

...

Sereno, Ma. Lourdes. 2001. The Power of Judicial Review and Economic Policies: Achieving
Constitutional Objectives. PHILJA-AGILE-USAID Project on Law and Economics." at page 158.

What is more unfortunate is that I was immediately accused of having copied my sentences from
ADB when a simple turn of the page after the cover page of our 2007 paper would reveal that the
2007 paper is but a re-posting of our 2001 work. The notice on page 2 of the paper that is found in
the asterisked footnote of the title reads:

This paper was originally submitted in August 2001 as project report to the World Bank. During
and since the time this report was written, the Supreme Court was engaged in various projects in
judicial reform. The authors are grateful to J. Edgardo Campos and Robert Sherwood for stimulating
ideas and encouragement but take responsibility for remaining errors and omissions. The Asian
Institute of Journalism and Communication provided excellent support to the study in the actual
administration of the survey questionnaire and conduct of focus group discussions.

This charge is made even more aggravating by the fact that the Supreme Court itself, through the
Project Management Office, has a copy of my 2001 paper. In July 2003, a "Project Appraisal
Document on a Proposed Loan in the Amount of US$21.9 Million to the Republic of the Philippines
for a Judicial Reform Support Project" was officially filed by the World Bank as Report No.
25504.28 The applicant Supreme Court’s representative is named as Chief Justice Hilario Davide.
The project leader is named as Evelyn Dumdum. The Report lists the technical papers that form the
basis for the reform program. Among the papers listed is our 2001 paper.

What is worse, from the point of view of research protocols, is that a simple internet search would
have revealed that this 2001 co-authored paper of mine has been internationally referred to at least
four (4) times – in three (3) English language publications and one (1) Japanese- or Chinese-
language publication; two of these are prior to the year 2005 when the relevant ADB Outlook Report
came out. The authors of the English-language works are all scholars on judicial reform, and they
cite our work as one of the pioneering ones in terms of measuring the relationship between
dysfunctions in the judicial system and the cost to doing business of such dysfunctions. It would
have then struck any researcher that in all probability, the alleged plagiarized sentences originated
from my co-authors and me.

The references to my 2001 paper appear in the following international publications:

a) Sherwood, Robert. Judicial Performance: Its Economic Impact in Seven Countries; at

page 20. (http://www.molaah.com/Economic%20Realities/Judicial%20Performance.pdf)
 b) Messick, Richard. Judicial Reform and Economic Growth: What a Decade of Experience
Teaches; at pages 2 and 16. (2004).
http://www.cato.org/events/russianconf2004/papers/messick2.pdf

c) Herro, Alvaro and Henderson, Keith. Inter-American Development Bank. The Cost of
Resolving Small-Business Conflicts in Sustainable Development Department Best Practices
Series; at page 46. (2004)
http://www.ifes.org/~/media/Files/Publications/White%20PaperReport/2003/258/SME_Peru_
Report_final_EN.pdf

d) World Development Report 2005 (Japanese language); at page 235 (2005) ("url" in
Japanese characters)

2. The purported non-attribution of the "Understanding on the Rules and Procedures Governing the
Settlement of Disputes, Annex 2 to the General Agreement on Tariffs and Trade 1994."29

I will spare the reader the tedium of reading twenty pages of treaty rules and working procedures,
and thus omit the three-column table I have used in other sections of this Dissent. The rules and
procedures may be accessed online at the following locations:

1. Marrakesh Declaration of 15 April 1994

<http://www.wto.org/english/docs_e/legal_e/marrakesh_decl_e.pdf> (Last accessed on 16
February 2011)

2. Understanding on Rules and Procedures Governing the Settlement of Disputes

<http://www.wto.org/english/docs_e/legal_e/28-dsu.pdf> (Last accessed on 16 February
2011)

3. Working Procedures for Appellate Review

<http://www.wto.org/english/tratop_e/dispu_e/ab_e.htm#20> (Last accessed on 16 February
2011)

Justice Abad himself provides evidence of the attribution I made when he says:

Justice Sereno said that ‘this section is drawn from Article XX and XXII of the GATT
1994, Understanding on Dispute Settlement and Working Procedures.

I think the problem lies in the fact that neither Justice Abad nor his researcher is aware that the
phrase "Understanding on Dispute Settlement" is the short title for the "Understanding on the Rules
and Procedures Governing the Settlement of Disputes", which is formally known also as Annex 2 of
the Marakkesh Agreement Establishing the World Trade Organization (short form of treaty name:
WTO Treaty). A quick visit to the WTO website will show that the WTO itself uses any of the terms
"DSU," "Dispute Settlement Understanding" or "Understanding on Dispute Settlement" (UDS) as
short forms for the said Annex. The WTO webpage30 shows that "Understanding on Dispute
Settlement" is the first short way they call the long set of rules covered by Annex 2 of the WTO
Treaty.

More importantly, the WTO documents that were cited here are public international documents and
rules governing the relations of states. In page 6 of my article, "Toward the Formulation of a
Philippine Position in Resolving Trade and Investment Dispute in APEC," I explain the modes of
resolving trade and investment disputes by APEC countries, and one of these modes is the WTO
dispute settlement mechanism governed by the WTO rules themselves.

This is therefore a meaningless charge.

Assuming that Justice Abad knows that the above treaty titles are interchangeable, then his charge
is akin to complaining of my supposed failure for having simply written thus: "The following are the
requirements for filing a complaint under the Rules of Court" and then for having immediately
discussed the requirements under the Rules of Court without quotation marks in reference to each
specific rule and section. If this is the case, then it appears that in Justice Abad’s view I should have
written: "the following are the requirements provided for under the 1997 Rules of Civil Procedure
(Bar Matter No. 803) for filing a complaint" and then used quotation marks every time reference to
the law is made. Nothing can be more awkward than requiring such a tedious way of explaining the
Rules of Court requirements. I have made no such comparable charge of violation against Justice
del Castillo in the Dissent to the main Decision and I am not making any such claim of violation in my
Dissent to the Resolution denying the Motion for Reconsideration, because that would be a
meaningless point.

Regarding the phrase allegedly coming from Professor Oppenheim on good offices and mediation,
this is a trite, common, standard statement – with nothing original at all about it – that can be found
in any international dispute settlement reference book, including those that discuss WTO dispute
settlement systems. The phrase is a necessary, cut-and-dried statement on the use of good offices
and mediation, which take place alongside the formal dispute settlement system in major
international dispute settlement systems. The system is provided for expressly in Article 5.5 and 5.6
of the DSU. A quick view of the WTO website makes this point very apparent.31

3. The supposed non-attribution of a phrase from Baker v. Carr.

TABLE I: Comparison of Justice Abad’s allegations, the legal memorandum in Province of North
Cotabato v. Peace Panel, and the decision of the U.S. Supreme Court in Baker v. Carr, cited in the
legal memorandum.

Excerpt from the Legal

Memorandum Prepared Excerpt from the
by J. Sereno: Source Cited by J.
Reproduction of Sereno:
J. Abad’s Allegations Petitioners-Intervenors’
Memorandum, Province of Baker v. Carr, 369 U.S.
North Cotabato v. Peace 186 (1962).
Panel

Prominent on the surface 3.4 The power to Prominent on the surface

of any case held to involve
a political question is
found a textually
demonstrable
constitutional commitment
of the issue to a
coordinate political
department; or a lack of
judicially discoverable and
determine whether or not a
governmental act is a
political question, is solely
vested in this Court, and
not with the Respondents.
This Honorable Court had
firmly ruled that Article VIII,
Section 1 of the
Constitution, as rejected
of any case held to
involve a political
question is found a
textually demonstrable
constitutional
commitment of the issue
to a coordinate political
department; or a lack of
judicially discoverable
manageable standards for the prudential approach
resolving it; or the taken by courts as
impossibility of deciding described in Baker v. Carr.
without an initial policy Indeed, it is a duty, not
determination of a kind discretion, of the Supreme
clearly for non-judicial Court, to take cognizance
discretion x x x of a case and exercise the
power of judicial review
[Baker v. Carr, 169 U.S. whenever a grave abuse
186] of discretion has been
prima facie established, as
in this instance.
and manageable
standards for resolving it;
or the impossibility of
deciding without an initial
policy determination of a
kind clearly for non-
judicial discretion….
Source cited:
Baker v. Carr

3.5 In this case,

Respondents cannot hide
under the political question
doctrine, for two
compelling reasons.

3.6 First, there is no

resolute textual
commitment in the
Constitution that accords
the President the power to
negotiate with the MILF….

3.13 Second, there is no

lack of a judicially
discoverable and
manageable standard for
resolving the question, nor
impossibility of deciding
the question without an
initial policy determination
of a kind clearly for non-
judicial discretion. On the
contrary, the negotiating
history with Muslim
secessionist groups easily
contradict any pretense
that this Court cannot set
down the standards for
what the government
cannot do in this case.

(pp. 47-50 of the

Memorandum)
A simple upward glance nine paragraphs above the phrase that Justice Abad quoted from my post-
hearing Memorandum in the GRP-MILF MOA-AD case would show that Baker v. Carr was aptly
cited. For quick reference, I have reproduced the pertinent parts of my legal memorandum in the
middle column of the above table.

Baker v. Carr was discussed in the context of my argument that Marcos v. Manglapus has adopted a
more liberal approach to the political question jurisdictional defense, and has rejected the prudential
approach taken in Baker v. Carr. The offending paragraph that Justice Abad quoted was meant to
demonstrate to the Court then hearing the GRP-MILF MOA-AD case that even if we apply Baker v.
Carr, the Petition has demonstrated satisfaction of its requirement: the presence of a judicially-
discoverable standard for resolving the legal question before the Court. Justice Abad’s charge bears
no similarity to the violations of the rules against plagiarism that I enumerated in pages 16 to 19 of
my Dissent dated 12 October 2010. I have made no similar complaint against the work in Vinuya.

4. The alleged plagiarism of the internet-based World Trade Organization factsheet.

TABLE J: Comparison of Justice Abad’s allegations, the article, entitled Uncertainties Beyond the
Horizon: The Metamorphosis of the WTO Investment Framework in the Philippine Setting, and the
WTO Factsheet cited in the article.

Excerpt from the

Excerpt from the Work of J. Sereno:
Source Citedby J.
Sereno:
Reproduction of Sereno, Uncertainties Beyond the Horizon:
J. Abad’s Allegations The Metamorphosis of the WTO
http://www.fas.usda.gov
Investment Framework in the Philippine
/
Setting, 52 U.S.T. L. Rev. 259 (2007-2008)
info/factsheets/wto.html

The World Trade This reticence, to link investment Source cited:

Organization (WTO), regulation with the legal disciplines in the
established on January WTO, compared to the eagerness with The World Trade
1, 1995, is a multilateral which other issues are linked to trade Organization (WTO),
institution charged with rules, was evident even in the precursor to established on January
administering rules for the Marakkesh Agreement.[2] 1, 1995, is a multilateral
trade among member institution charged with
countries. Currently, [2] Marakkesh Agreement established the administering rules for
there are 145 official World Trade Organization and replaced trade among member
member countries. The GATT as an international organization. It countries. Currently,
United States and other was signed by ministers from most of the there are 145 official
countries participating in 123 participating governments at a member countries. The
the Uruguay Round of meeting in Marrakesh, Morocco on April United States and other
Multilateral Trade 15, 1994…. countries participating in
Negotiations (1986- the Uruguay Round of
1994) called for the The World Trade Organization (WTO) was Multilateral Trade
formation of the WTO to established on January 1, 1995. It is a Negotiations (1986-
embody the new trade multilateral institution charged with 1994) called for the
disciplines adopted administering rules for trade among formation of the WTO to
during those member countries. The WTO functions as embody the new trade
negotiations. the principal international body concerned disciplines adopted
with multilateral negotiations on the
The WTO functions as reduction of trade barriers and other
the principal
 international body measures that distort competition. The during those
concerned with WTO also serves as a platform for negotiations.
multilateral negotiations countries to raise their concerns regarding
on the reduction of trade the trade policies of their trading partners. The WTO functions as
barriers and other The basic aim of the WTO is to liberalize the principal
measures that distort world trade and place it on a secure basis, international body
competition. The WTO thereby contributing to economic growth concerned with
also serves as a and multilateral negotiations
platform for countries to development. http://www.fas.usda.gov/info on the reduction of trade
raise their concerns / barriers and other
regarding the trade measures that distort
policies of their trading factsheets/wto.html (last accessed competition. The WTO
partners. The basic aim February 13, 2008).(Emphasis supplied.) also serves as a
of the WTO is to platform for countries to
liberalize world trade (p. 260-261, footnote 2 of J. Sereno’s raise their concerns
and place it on a secure work) regarding the trade
basis, thereby policies of their trading
contributing to economic partners. The basic aim
growth and of the WTO is to
development. liberalize world trade
and place it on a secure
[WTO FACTSHEET basis, thereby
http://www.fas.usda.gov contributing to economic
/ growth and
info/factsheets/wto.html, development.
last accessed February
13, 2008.] Source cited:

http://www.fas.usda.gov
/
info/factsheets/wto.html

Justice Abad has likewise pointed out that I made it appear that the description of the WTO in my
article entitled "Uncertainties Beyond the Horizon: The Metamorphosis of the WTO Investment
Framework in the Philippine Setting" was my own original analysis. Again, a cursory reading of the
article will show that the paragraph in question was actually the second footnote in page 2 of the
article. The footnote was made as a background reference to the Marrakesh Agreement, which, as I
explained earlier in the article, established the WTO. The footnote thus further provided background
information on the WTO. Contrary, however, to Justice Abad’s allegation, I clearly attributed the
source of the information at the end of the footnote by providing the website source of this
information and the date I accessed the information. Thus, should one decide to follow the website
that I cited, one would immediately see the information contained in the article was lifted from this
direct source.

5. The purported non-attribution to Judge Richard A. Posner’s seminal work in his

book Economic Analysis of Law.

TABLE K: Comparison of Justice Abad’s allegations, the article entitled Lawyers’ Behavior and
Judicial Decision-Making, and Judge Richard A. Posner’s book Economic Analysis of Law, cited in
the article.
 Excerpt from the Work of Excerpt from the
J. Sereno: Source Cited by J.
Sereno:
Reproduction of
J. Abad’s Allegations Sereno, Lawyers’ Behavior
and Judicial Decision- Richard A. Posner,
Making, 70(4) Phil. L. J. Economic Analysis of
476 (1996). Law, (2nd ed. 1977).
...We could deal with this
problem later. What I
would propose to evaluate
at this point is the
preconditions that Judge
Richard Posner theorizes
as dictating the likelihood
of litigating...

… As with any contract, a

necessary (and usually—
Posner’s model is but a why not always?—
simple mathematical sufficient) conditions for
illustration or validation of negotiations to succeed is
what we as laymen have that there be a price at
always believed to be true, which both parties would
[S]ettlement negotiations although how to prove it to feel that agreement would
will fail and litigation be true has always increase their welfare.
ensue, only if the minimum remained a problem to us. Hence settlement
price that the plaintiff is We have always known negotiations should fail,
willing to accept in that the decision on and litigation ensue, only
compromise of his claim is whether to settle or not is if the minimum price that
greater than the maximum dictated by the size of the the plaintiff is willing to
price the defendant is stakes in the eyes of the accept in compromise of
willing to pay in parties, the costs of his claim is greater than
satisfaction of the claim. litigation and the the maximum price that
probability which each side the defendant is willing to
[Posner, p. 434] gives to his winning or pay in satisfaction of that
losing. But until now, we claim; ….
have only been intuitively
dealing with a formula for Source cited:
arriving at an estimation of
the "settlement range" or Richard A. Posner,
its existence in any given Economic Analysis of
controversy. Simply, the Law, 435 (2nd ed. 1977).
settlement range is that
range of prices in which
both parties would be
willing to settle because it
would increase their
welfare. Settlement
negotiations will fail, and
litigation will ensue, if the
minimum price that plaintiff

Presumably judges,
like the rest of us, seek to
maximize a utility
function that includes both
monetary and
nonmonetary elements.
[Posner, p. 415]
[T]he rules of the judicial
process have been
carefully designed both to
the prevent the judge from
receiving a monetary
payoff from deciding a
particular case one way or
the other and to minimize
the influence of politically
effective interest group in
his decisions.
[Posner, 415]
It is often argued, for
example, that the judge
who owns land will decide
in favor of landowners, the
judge who walks to work
will be in favour of
pedestrians.
[Posner, 415]
A somewhat more
plausible case can be
made that judges might
slant their decisions in
favour of powerful interest
groups in order to
increase the prospects of
is willing to accept in
compromise of his claim is
greater than the maximum
price that the defendant is
willing to pay in
satisfaction of that claim.
(pp. 481-483 of Lawyers’
Behavior and Judicial
Decision-Making)
What the Judge
Maximizes
In understanding judicial
behavior, we have to
assume, that judges, like
all economic actors
maximize a utility function.
This function in all
probability includes
material as well as non-
material factors. In
American literature, they
have come up with several
theories on what judges
maximize.
The first is that the
American judicial system
have rules designed to
minimize the possibilities
of a judge maximizing his
financial interest by
receiving a bribe from a
litigant of from acceding to
a politically powerful
interest group by making
the rules work in such a
manner as to create
disincentives for the judge
ruling in such a manner.
The second, proceeding
from the first is that the
judge maximizes the
interest of the group to
which he belongs. If he
belongs to the landowning
class, he will generally
favor landowners, and if
he walks to work, he will
§19.7 WHAT DO
JUDGES MAXIMIZE?
…This section attempts
to sketch a theory of
judicial incentives that will
reconcile these
assumptions.
Presumably judges, like
the rest of us, seek to
maximize a utility function
that includes both
monetary and
nonmonetary elements
(the latter including
leisure, prestige, and
power). As noted earlier,
however, the rules of the
judicial process have
been carefully designed
both to prevent the judge
from receiving a
monetary payoff from
deciding a particular case
one way or the other and
to minimize the influence
of politically effective
interest groups on his
decisions. To be sure, the
effectiveness of these
insulating rules is
sometimes questioned. It
is often argued, for
example, that the judge
who owns land will decide
in favor of landowners,
the judge who walks to
work in favor of
pedestrians, the judge
who used to be a
 promotion to higher office, generally favor corporate lawyer in favor
judicial or otherwise. pedestrians. of corporations....

[Posner, p. 416] The third is that the judge A somewhat more

[J]udges seek to impose
their preferences, tastes,
values, etc. on society.
[Posner, 416]
maximizes the prospects plausible case can be
of his promotion to a made that judges might
higher office by slanting slant their decisions in
his decisions in favor of favor of powerful interest
powerful interest groups. groups in order to
increase the prospects of
The last is that judges promotion to higher
maximize their influence office, judicial or
on society by imposing otherwise....
their values, tastes and
preferences thereon. It would seem, therefore,
that the explanation for
Depending on one’s judicial behavior must lie
impressions and elsewhere than in
experiences (since there is pecuniary or political
no empirical data on which factors. That most judges
a more scientific are leisure maximizers is
conclusion can be reached an assumption that will
on which of the above four not survive even casual
theories are correct), we observation of judicial
can see the relation of this behavior. A more
utility-maximizing behavior attractive possibility, yet
on both our probability still one thoroughly
estimate function consistent with the
and Posner’sprecondition ordinary assumptions of
inequality for litigation. economic analysis, is that
Although more research is judges seek to impose
required in this area, if we their preferences, tastes,
believe Posner’s function values etc. on society....
to be true….
Source:
(Emphasis supplied.)
Richard A. Posner,
(pp. 489 of Lawyers’ Economic Analysis of
Behavior and Judicial Law, 415-16 (2nd ed.
Decision-Making) 1977).

May I invite the reader to read my entire article entitled "Lawyers’ Behavior and Judicial Decision-
Making," accessible online at
<http://law.upd.edu.ph/plj/images/files/PLJ%20volume%2070/PLJ%20volume%2070%20number%2
04%20-02-%20Ma.%20Lourdes%20A.%20Sereno%20-%20Lawyers%20Behavior.pdf>, so that the
alleged copying of words can be taken in the proper context.

It must first be emphasized that the whole article was largely a presentation and discussion of Judge
Posner’s economic models of litigation and settlement, applying what he had written to the context of
the Philippines. An examination of the article will show that Posner’s work was referred to no less
than fourteen (14) times throughout the article, excluding the use of pronouns that also refer to
Posner, such as "he" and "him." A diligent reading of the full text of the article will reveal that I have
intentionally and heavily used Posner’s opinions, analyses, models, and conclusions while crediting
him with the same.

Furthermore, the passages cited in the table of counter-charges use what one may call the "terms of
the trade" in the field of law and economics, or indeed in the field of economics itself. The
maximization of an individual’s utility is one of the core principles on which the study of an
individual’s choices and actions are based. The condition for the success/failure of settlement
bargaining is practically a definition, as it is also a fundamental principle in the study of bargaining
and negotiation that the minimum price of one of the parties must not exceed the maximum price the
other party is willing to pay; that particular passage, indeed, may be regarded as a re-statement, in
words instead of numbers, of a fundamental mathematical condition as it appears in Posner’s model
and in many similar models.

To allow industry professionals to have their say on the matter, I have written a letter to Dr. Arsenio
M. Balisacan, the Dean of the University of the Philippines School of Economics, requesting that my
paper, Lawyers’ Behavior and Judicial Decision-Making, be examined by experts in the field to
determine whether the allegations of plagiarism leveled against me have basis. I am reproducing the
contents of the letter below.

Hon. Maria Lourdes P.A. Sereno

Associate Justice

Supreme Court of the Philippines

February 11, 2011

Dr. Arsenio M. Balisacan

Dean
School of Economics
University of the Philippines

Dear Dr. Balisacan:

Greetings! I hope this letter finds you in the best of health.

I write because I have a request to make of your highly-respected institution. I have been recently
accused of plagiarizing the work of Judge Richard Posner in one of the articles on law and
economics that I have written and that was published in the Philippine Law Journal entitled "Lawyers’
Behavior and Judicial Decision-Making", 70 Phil L. J. 475-492 (June 1996). The work of Posner that
I am accused of having plagiarized is the second edition of the book entitled "Economic Analysis of
Law", published in 1977 by Little, Brown and Company.

May I ask you for help in this respect – I wish to submit my work to the evaluation of your esteemed
professors in the UP School of Economics. My work as an academic has been attacked and I would
wish very much for a statement from a panel of your choosing to give its word on my work.

I am attaching a table showing which part of Posner’s work I am alleged to have plagiarized in my
Philippine Law Journal article.

Thank you very much. I will be much obliged for this kind favor.
Very truly yours,

Maria Lourdes P.A. Sereno

The problem with the majority approach is that it refuses to face the scale of the plagiarism in the
Vinuya Decision. If only that were the starting point for the analysis of the majority, then some of my
colleagues would not have formed the impression that I was castigating or moralizing the majority.
No court can lightly regard a ponencia, as in Vinuya, where around 53% of the words used for an
important section were plagiarized from sources of original scholarship. Judges and their legal
researchers are not being asked to be academics; only to be diligent and honest.

IV. The Role of the Judiciary in Society

On more than one occasion, this Court has referred to one of its functions as the symbolic or
educative function, the competence to formulate guiding principles that may enlighten the bench and
the bar, and the public in general.32 It cannot now backpedal from the high standards inherent in the
judicial role, or from the standards it has set for itself.

The need to cement ethical standards for judges and justices is intertwined with the democratic
process. As Lebovits explained:

The judiciary's power comes from its words alone–judges command no army and control no purse.
In a democracy, judges have legitimacy only when their words deserve respect, and their words
deserve respect only when those who utter them are ethical. Opinion writing is public writing of the
highest order; people are affected not only by judicial opinions but also by how they are written.
Therefore, judges and the opinions they write–opinions scrutinized by litigants, attorneys, other
judges, and the public–are held, and must be held, to high ethical standards. Ethics must constrain
every aspect of the judicial opinion. 33

Justice George Rose Smith once pointed to the democratic process as a reason to write opinions:
"Above all else to expose the court's decision to public scrutiny, to nail it up on the wall for all to see.
In no other way can it be known whether the law needs revision, whether the court is doing its job,
whether a particular judge is competent." Justice Smith recognized that judges are not untouchable
beings. Judges serve their audience. With this service comes the need for judges to be trusted.
Writing opinions makes obtaining trust easier; it allows an often opaque judicial institution to become
transparent.34

Judges cannot evade the provisions in the Code of Judicial Conduct.35

A judge should participate in establishing, maintaining and enforcing high standards of conduct, and
shall personally observe those standards so that the integrity and independence of the judiciary will
be preserved. The drafters of the Model Code were aware that to be effective, the judiciary must
maintain legitimacy –and to maintain legitimacy, judges must live up to the Model Code's moral
standards when writing opinions. If the public is able to witness or infer from judges' writing that
judges resolve disputes morally, the public will likewise be confident of judges' ability to resolve
disputes fairly and justly.36 (Citations omitted)

Canon 1 of the Code of Judicial Conduct states that a judge should uphold the integrity and
independence of the judiciary. Rule 1.01 in particular states that a judge should be the embodiment
of competence, integrity, and independence.
Canon 3 then focuses on the duty of honesty in the performance of official duties, as well as on the
supervision of court personnel:

Rule 3.09. A judge should organize and supervise the court personnel to ensure the prompt and
efficient dispatch of business, and require at all times the observance of high standards of public
service and fidelity.

Rule 3.10. A judge should take or initiate appropriate disciplinary measures against lawyers or court
personnel for unprofessional conduct of which the judge may have become aware.

Paragraph 17 of the Code of Judicial Ethics37 focuses on the writing of judicial opinions:

In disposing of controversial cases, judges should indicate the reasons for their action in opinions
showing that they have not disregarded or overlooked serious arguments of counsel. They should
show their full understanding of the case, avoid the suspicion of arbitrary conclusion, promote
confidence in their intellectual integrity and contribute useful precedents to the growth of the law.
(Emphasis supplied)

Paragraph 31, "a summary of judicial obligations," contains a more general statement regarding the
behavioral norms required of judges and justices alike, stating:

A judge’s conduct should be above reproach and in the discharge of his judicial duties, he should be
conscientious, studious, thorough, courteous, patient, punctual, just, impartial, fearless of public
clamor, and regardless of private influence should administer justice according to law and should
deal with the patronage of the position as a public trust; and he should not allow outside matters or
his private interests to interfere with the prompt and proper performance of his office.

That judges and justices alike are subject to higher standards by virtue of their office has been
repeatedly pronounced by the Supreme Court:

Concerned with safeguarding the integrity of the judiciary, this Court has come down hard and
wielded the rod of discipline against members of the judiciary who have fallen short of the exacting
standards of judicial conduct. This is because a judge is the visible representation of the law and of
justice. He must comport himself in a manner that his conduct must be free of a whiff of impropriety,
not only with respect to the performance of his official duties but also as to his behavior outside his
sala and as a private individual. His character must be able to withstand the most searching public
scrutiny because the ethical principles and sense of propriety of a judge are essential to the
preservation of the people’s faith in the judicial system.38

Thus, being the subject of constant public scrutiny, a judge should freely and willingly accept
restrictions on conduct that might be viewed as burdensome by the ordinary citizen.39 A judge should
personify integrity and exemplify honest public service. The personal behavior of a judge, both in the
performance of his official duties and in private life should be above suspicion.40 Concerned with
safeguarding the integrity of the judiciary, this Court has come down hard on erring judges and
imposed the concomitant punishment.41

As held by the Court in Teban Hardware and Auto Supply Co. v. Tapucar:42

The personal and official actuations of every member of the Bench must be beyond reproach and
above suspicion. The faith and confidence of the public in the administration of justice cannot be
maintained if a Judge who dispenses it is not equipped with the cardinal judicial virtue of moral
integrity, and if he obtusely continues to commit an affront to public decency. In fact, moral integrity
is more than a virtue; it is a necessity in the Judiciary.

The inherent value of judicial decisions goes beyond the resolution of dispute between two parties.
From the perspective of the judge, he has fulfilled his minimum burden when he has disposed of the
case. Yet from the perspective of the public, it is only through publicized decisions that the public
experiences the nearest approximation of a democratic experience from the third branch of
Government.

Decisions and opinions of a court are of course matters of public concern or interest for these are
the authorized expositions and interpretations of the laws, binding upon all citizens, of which every
citizen is charged with knowledge. Justice thus requires that all should have free access to the
opinions of judges and justices, and it would be against sound public policy to prevent, suppress or
keep the earliest knowledge of these from the public.43

The clearest manifestation of adherence to these standards is through a Justice’s written opinions.
In the democratic framework, it is the only way by which the public can check the performance of
such public officer’s obligations. Plagiarism in judicial opinions detracts directly from the legitimacy of
the judge's ruling and indirectly from the judiciary's legitimacy.44 It is objectionable not only because
of its inherent capacity to harm, but the overarching damage it wreaks on the dignity of the Court as
a whole.

The Court’s Educative Function

The Court’s first Decision in this case hinged on the difference between the academic publishing
model on the one hand, and the judicial system on the other. It proceeded to conclude that courts
are encouraged to cite "historical legal data, precedents, and related studies" in their decisions, so
that "the judge is not expected to produce original scholarship in every respect."

This argument presents a narrower view of the role of the courts than what this country’s history
consistently reveals: the judiciary plays a more creative role than just traditional scholarship. No
matter how hesitantly it assumes this duty and burden, the courts have become moral guideposts in
the eyes of the public.

Easily the most daunting task which confronts a newly appointed judge is how to write decisions. It is
truly a formidable challenge considering the impact of a court’s judgment reverberates throughout
the community in which it is rendered, affecting issues of life, liberty, and property in ways that are
more pervasive and penetrating than what usually appears on the surface – or under it.45

The impact of judicial decisions has even been codified in paragraph 2 of the Canon of Judicial
Ethics: "Every judge should at all times be alert in his rulings and in the conduct of the business of
his court, so far as he can, to make it useful to litigants and to the community."

The error in the contention of the majority that judicial writing does not put a premium on originality is
evident. In the words of Daniel Farber, stare decisis has become an oft-repeated catchphrase to
justify an unfounded predisposition to repeating maxims and doctrines devoid of renewed evaluation.

In reviewing the Court's work, we saw a fixation on verbal formulas; likewise, race scholarship
frequently seems to suffer from a similar fixation on stylized rhetoric. Yet Holmes' adage defines the
problem a bit too narrowly–suggesting that we mostly need less abstraction and more concreteness.
This deficiency actually is part of the problem; we could surely benefit from more empirical research
and sensitivity to concrete factual situations. Yet, the problem goes beyond that.46
The consistent resort to stare decisis fails to take into account that in the exercise of the Court’s self-
proclaimed symbolic function, its first accountability is to its audience: the public. Its duty of guiding
the bench and the bar comes a close second.

Consider first the judge. A key weakness of current Supreme Court opinions seems to be that judges
have sometimes lost track of whom they are addressing or what they are trying to accomplish. Of
course, they have no literal clients, but they seek to advance a set of values and perspectives that
might serve as the basis for identifying metaphorical clients…The purpose, then, is to help the
system work as well as possible according to its own norms and goals…

Often, the purpose is to guide other courts to advance the client's interests in their own decisions. In
this respect, the important part of the opinion is that portion speaking to future cases–though as we
have seen, judges sometimes fail to focus their energies there. Additionally, the opinion, if it is to
elicit more than the most grudging obedience, must appeal to the values and goals of those judges
as well as to the author's.47

The Court seemingly views the issuance of opinions to be an end in itself, as if the text of the opinion
had some autonomous value unrelated to its ability to communicate to an audience. At a deeper
level, the intellectual flaw in the statutory-interpretation opinions is similar. The Court often treats
statutes as free-standing texts, with little attention to their historical and social contexts or what their
drafters were trying to achieve.48

Thus, the value of ethical judicial writing vis-à-vis the role that courts are called upon to play cannot
be underestimated.

Worrying about the ethical status of judicial opinions seems pointless at first. Complaints about
decisions and the opinions that explain them have been around as long as judges have been
judging. As technology has lowered the cost of research, and of cutting and pasting earlier work,
opinions often seem to be formal exercises that do not suggest deep judicial engagement. Other
opinions do show the hand of a deeply engaged judge, though these can be worse than the cut-and-
pasted kind. What then is to be gained by trying to make an ethical issue of judicial writing? …
Professor Llewellyn said it is in part because the judicial office acts as "a subduer of self and self-
will, as an engine to promote openness to listen and to understand, to quicken evenhandedness,
patience, sustained effort to see and judge for All-of-Us." 49

The lessons taught our country by its singular experience in history has given rise to a more defined
place for our courts. With the constitutional mandate that the Supreme Court alone can exercise
judicial review, or promulgate rules and guidelines for the bench and the bar, or act as the arbiter
between the two branches of government, it is all the more evident that standards for judicial
behavior must be formulated. After all, "the most significant aspect of the court's work may lie in just
this method and process of decision: by avoiding absolutes, by testing general maxims against
concrete particulars, by deciding only in the context of specific controversies, by finding
accommodations between polar principles, by holding itself open to the reconsideration of dogma,
the court at its best, provides a symbol of reconciliation."50

According to Paul Freund, the great fundamental guarantees of our Constitution are in fact, moral
standards wrapped in legal commands. It is only fitting that the Court, in taking on the role of a public
conscience, accept the fact that the people expect nothing less from it than the best of faith and
effort in adhering to high ethical standards.

I affirm my response to the dispositive portion of the majority Decision in this case as stated in my
Dissent of 12 October 2010, with the modification that more work of more authors must be
appropriately acknowledged, apologies must be extended, and a more extensively corrected
Corrigendum must be issued. Again, I make no pronouncement on liability, not only because the
process was erroneously cut short by the majority when it refused to proceed to the next step of
determining the duty of diligence that a judge has in supervising the work of his legal research, and
whether, in this instance, Justice del Castillo discharged such duty, but also because of the view
expressed by Justice Carpio that this Court had best leave the matter of clearing Justice del Castillo
to Congress, the body designated by the Constitution for such matters. It seems now that the
process of determining the degree of care required in this case may never be undertaken by this
Court. One thing is certain, however: we cannot allow a heavily plagiarized Decision to remain in our
casebooks – it must be corrected. The issues are very clear to the general public. A wrong must be
righted, and this Court must move forward in the right direction.

MARIA LOURDES P. A. SERENO

Associate Justice

Footnotes

1Mark Ellis, Breaking the Silence: Rape as an International Crime, 38 Case W. Res. J. Int’l
L. 225 (2006-2007); Christian J. Tams, Enforcing Erga Omnes Obligations in International
Law (2005); Evan J. Criddle and Evan Fox-Decent, A Fiduciary Theory of Jus Cogens, 34
Yale J. Int’l L. 331 (2009)

2Justice Antonio T. Carpio, Dissenting Opinion, In the Matter of the Charges of Plagiarism,
etc. against Associate Justice Mariano C. del Castillo, A.M. No. 10-7-17-SC.

3Justice Maria Lourdes P. A. Sereno, Dissenting Opinion, In the Matter of the Charges of
Plagiarism, etc. against Associate Justice Mariano C. del Castillo, AM 10-7-17-SC,
promulgated 12 October 2010, at 31.

4Robert McCorquodale, The Individual and the International Legal System, in International
Law, 307-332 (Malcolm Evans ed., 2006).

5 Phoebe Okowa, Issues of Admissibility and the Law on International Responsibility, in

International Law (Malcolm Evans ed., 2006).

6Published in the blog of the European Journal of International Law, accessed

at http://www.ejiltalk.org/testing-the-limits-of-diplomatic-protection-khadr-versus-the-prime-
minister-of-canada. Last visited 24 January 2011, 1:47 p.m.

7 From the Congressional Report Services Memorandum, by Larry Niksch, Specialist in

Asian Affairs, Foreign Affairs, Defense and Trade Division, accessible
at http://www.awf.or.jp/pdf/h0076.pdf. This document is covered by a copyright notice from
the United States Congressional Research Service posted at the website of the Asian
Women’s Fund: http://www.awf.or.jp/e4/un-05.html#etc. Last accessed 24 January 2011,
2:35 p.m.

8"So in the process, my practice, which may not be shared by other researchers, my own
practice as to doing research for decisions is to basically review all the material that is
available insofar as I can. So I review everything, I take notes, I do my own research and
then after one has reviewed as much as I am able to, then one starts writing." TSN at 28,
Hearing of 26 August 2010, Deliberations of the Committee on Ethics and Ethical Standards.

9 "So what happens, Your Honors, is basically, one does an initial review, sorry, I do an initial
review on this…all of these goes for the most articles, Law Journal articles. So one does
initial review on these articles and if there is an article that immediately strikes one as
relevant or as important or as useful in the course of writing a decision, you can click on it,
the blue portion, you can click on this and the article will actually appear. And then you can
read the whole article, you can skim through the article, if again it seems relevant, it’s
possible to e-mail the article to yourself, which makes it easier because…so at least I have,
for instance, all of the articles available like in my home." TSN at 28, Hearing of 26 August
2010, Deliberations of the Committee on Ethics and Ethical Standards.

10TSN at 29, Hearing of 26 August 2010, Deliberations of the Committee on Ethics and
Ethical Standards.

11 Approved by the court en banc on 15 November 2005.

12A case in which the popup text box would not appear is that in which a block of text
containing the note reference mark is selected; the popup text box will only appear if the
cursor is hovered near the note reference mark.

13 Richard A. Posner, The Little Book of Plagiarism, 38 (2007).

14 Id. at 106.

15Laurie Stearns, Copy Wrong: Plagiarism, Property, and the Law, 80 Cal. L. Rev. 513, 518
(1992).

16 Id. at 522.

17Joyce C. George, Judicial Plagiarism, Judicial Opinion Writing Handbook, accessed at

<http://books.google.com.ph/books?id=7jBZ4yjmgXUC&lpg=PR1&hl=en&pg=PR1#v=onepa
ge&q&f=false> on February 8, 2011, at 715.

18 Id. at 726.

19 Id. at 715.

20 Id. at 718.

21 Id.

22 Id. at 726.

23 Id.

24 Supra note 3 at 29.

25See: In re Widdison, 539 N.W.2d 671 (S.D. 1995) at 865 (as cited in Jaime S. Dursht,
Judicial Plagiarism: It May Be Fair Use but Is It Ethical?, 18 Cardozo L. Rev. 1253); Rebecca
Moore Howard, Plagiarisms, Authorships, and the Academic Death Penalty, 57 College
English 7 (Nov., 1995), at 788-806, as cited in the JSTOR,
http://www.jstor.org./stable/378403; Klinge v. Ithaca College, 634 N.Y.S.2d 1000 (Sup. Ct.
1995), Napolitano v. Trustees of Princeton Univ., 453 A.2d 279, 284 (N.J. Super. Ct. Ch. Div.
1987), and In re Brennan, 447 N.W.2d 712, 713-14 (Mich. 1949), as cited in Gerald Lebovits,
Alifya V. Curtin & Lisa Solomon, Ethical Judicial Opinion Writing, 21 The Georgetown Journal
of Legal Ethics 264, note 190; Apotex Inc. v. Janssen-Ortho Inc. 2009, as cited in Emir Aly
Crowne-Mohammed, 22 No. 4 Intell. Prop. & Tech. L. J. 15, 1 – as cited in page 28 and
footnotes 24, 25, 27 to 29 of my 12 October 2010 Dissent.

26 Id. at 26.

27 Discussion Paper No. 07011, October 2007, UP School of Economics.

28World Bank, Project Appraisal Document on a Proposed Loan in the Amount of US$21.9
Million to the Republic of the Philippines for a Judicial Reform Support Project (Report No:
25504) (2003), available at http://www-
wds.worldbank.org/external/default/WDSContentServer/WDSP/IB/2003/07/31/
000012009_20030731101244/Rendered/PDF/255040PH0PAD.pdf (accessed on February
5, 2011).

29A minor correction is in order. The "Understanding on the Rules and Procedures
Governing the Settlement of Disputes" is Annex 2 to the Marakkesh Agreement Establishing
the World Trade Organization. There is no Annex 2 to the General Agreement on Tariffs and
Trade 1994. Please see paragraphs 1 to 4 of said GATT 1994 for a list of all its component
parts.

30Understanding on Dispute Settlement, available at http://www.inquit.com/

iqebooks/WTODC/Webversion/ prov/eigteen.htm (accessed on February 5, 2011).

31World Trade Organization, Dispute Settlement System Training Module: Chapter 8 –

Dispute Settlement Without Recourse to Panels and the Appellate Body, available at
http://www.wto.org/english/tratop_e/dispu_e/disp_settlement_cbt_e/c8s1p2_e.htm (accessed
on February 5, 2011).

32 Salonga v. Cruz Paño, G.R. No. 59525, 18 February 1985, 134 SCRA 438.

33Gerald Lebovits, Alifya V. Curtin, & Lisa Solomon, Ethical Judicial Opinion Writing, 21 Geo.
J. Legal Ethics 264 (2008).

34 Id. at 269.

35 Promulgated 5 September 1989, took effect 20 October 1989.

36 Supra note 33 at 240-241.

37 Administrative Order No. 162.

38 In Re Letter of Judge Augustus C. Diaz, A.M. No. 07-7-17-SC, 19 September 2007.

 39 A.M. No. RTJ-90-447, 199 SCRA 75, 12 July 1991, 83-84.

40 Junio v. Rivera, A.M. No. MTJ-91-565. August 30, 1993.

41 Castillo v. Calanog, Jr., A.M. No. RTJ-90-447, 16 December 1994, 239 SCRA 268

Teban Hardware and Auto Supply Co. v. Tapucar, A.M. No. 1720, 31 January 1981, 102
42

SCRA 492, 504.

43 Ex Parte Brown, 166 Ind. 593, 78 N.E. 553 (1906).

44 Supra note 33 at 282.

45Foreword of Justice Ameurfina A. Melencio Herrera, "Fundamentals of Decision Writing for

Judges," (2009).

46 Daniel Farber, Missing the Play of Intelligence, 6 Wm. & Mary L. Rev. 147, (1994).

47 Id. at 170.

48 Id. at footnote 40.

49David McGowan, Judicial Writing and the Ethics of the Judicial Office, 14 Geo. J. Legal
Ethics 509, 509. (2001).

50 Paul A. Freund, "The Supreme Court" in Talks on American Law 81-94 (rev. ed., 1972).

The Lawphil Project - Arellano Law Foundation

SEPARATE DISSENTING OPINION

CARPIO MORALES, J.:

I join Justice Antonio T. Carpio’s thesis in his Dissenting Opinion on the commission of plagiarism or
violation of intellectual property rights in the Vinuya decision. I join him too on his other thesis that
this Court has no jurisdiction to decide an administrative case where a sitting Justice of this Court
has committed misconduct in office, with qualification.

I submit that the Court may wield its administrative power against its incumbent members on
grounds other thanculpable violation of the Constitution, treason, bribery, graft and corruption, other
high crimes, or betrayal of public trust, AND provided the offense or misbehavior does not carry
with it a penalty, the service of which would amount to removal from office either on a permanent or
temporary basis such as suspension.

The President, the Vice President, the members of the Supreme Court, the Members of the
Constitutional Commissions, and the Ombudsman may be removed from office, on impeachment
for, and conviction of, culpable violation of the Constitution, treason, bribery, graft and corruption,
other high crimes, or betrayal of public trust. All other public officers and employees may be
removed from office as provided by law, but not by impeachment.1 (underscoring supplied)

In 1988, the Court dismissed the complaint for disbarment against Justice Marcelo Fernan for lack of
merit. Aside from finding the accusations totally baseless, the Court, by per curiam Resolution,2 also
stated that to grant a complaint for disbarment of a member of the Court during the member’s
incumbency would in effect be to circumvent and hence to run afoul of the constitutional mandate
that members of the Court may be removed from office only by impeachment.

In the subsequent case of In Re Raul M. Gonzales,3 this principle of constitutional law was succinctly
formulated in the following terms which lay down a bar to the institution of certain actions against an
impeachable officer during his or her incumbency.

x x x A public officer who under the Constitution is required to be a Member of the Philippine Bar as
a qualification for the office held by him and who may be removed from office only by
impeachment, cannot be charged with disbarment during the incumbency of such public officer.
Further, such public officer, during his incumbency, cannot be charged criminally before
the Sandiganbayan or any other court with any offense which carries with it the penalty of removal
from office, or any penalty service of which would amount to removal from office.4 (emphasis
and underscoring supplied; italics in the original)

The Court clarified, however, that it is not saying that its members are entitled to immunity from
liability for possible criminal acts or for alleged violations of the canons of judicial ethics or codes of
judicial conduct. It stressed that there is a fundamental procedural requirement that must be
observed before such liability may be determined and enforced.

x x x A Member of the Supreme Court must first be removed from office via the constitutional route
of impeachment under Sections 2 and 3 of Article XI of the 1987 Constitution. Should the tenure of
the Supreme Court Justice be thus terminated by impeachment, he may then be held to answer
either criminally or administratively (by disbarment proceedings) for any wrong or misbehaviour that
may be proven against him in appropriate proceedings.5(underscoring supplied)

The Court declared the same principle in Jarque v. Desierto6 by Resolution of December 5, 1995.

The rule that an impeachable officer cannot be criminally prosecuted for the same offenses which
constitute grounds for impeachment presupposes his continuance in office. Hence, the moment he is
no longer in office because of his removal, resignation, or permanent disability, there can be no bar
to his criminal prosecution in the courts.

Nor does retirement bar an administrative investigation from proceeding against the private
respondent, given that, as pointed out by the petitioner, the former’s retirement benefits have been
placed on hold in view of the provisions of Sections 12 and 13 of the Anti-Graft and Corrupt
Practices Act.7 (underscoring supplied)

The immediately-quoted pronouncement implies that the administrative investigation must be

initiated during the incumbency of the respondent.

That the Supreme Court has overall administrative power over its members and over all members of
the judiciary has been recognized.8 Moreover, the Internal Rules of the Supreme Court
(2010)9 expressly included, for the first time, "cases involving the discipline of a Member of the
Court"10 as among those en banc matters and cases. Elucidating on the procedure, Section 13, Rule
2 of the Court’s Internal Rules provides:
SEC. 13. Ethics Committee. – In addition to the above, a permanent Committee on Ethics and
Ethical Standardsshall be established and chaired by the Chief Justice, with following membership:

a) a working Vice-Chair appointed by the Chief Justice;

b) three (3) members chosen among themselves by the en banc by secret vote; and

c) a retired Supreme Court Justice chosen by the Chief Justice as a non-voting observer-
consultant.

The Vice-Chair, the Members and the Retired Supreme Court Justice shall serve for a term of one
(1) year, with the election in the case of elected Members to be held at the call of the Chief Justice.

The Committee shall have the task of preliminarily investigating all complaints involving graft and
corruption and violations of ethical standards, including anonymous complaints, filed against
Members of the Court, and of submitting findings and recommendations to the en banc. All
proceedings shall be completely confidential. The Committee shall also monitor and report to the
Court the progress of the investigation of similar complaints against Supreme Court officials and
employees, and handle the annual update of the Court’s ethical rules and standards for submission
to the en banc. (emphasis and underscoring supplied)

The Court acknowledged its power to take cognizance of complaints against its incumbent
Members. It is circumscribed, however, by the abovementioned principle of constitutional law11 in
terms of grounds and penalties.

In at least two recent instances, the Court had conducted administrative proceedings against its
incumbent Members.

In the controversy surrounding the 1999 Bar Examinations, the Court, by Resolution of March 22,
2000 in Bar Matter No. 979, censured then incumbent Justice Fidel Purisima for his failure to
disclose on time his relationship to an examinee and for breach of duty and confidence, and
declared forfeited 50% of the fees due him as chairperson of the 1999 Bar Examinations
Committee. The impositions did not, however, douse the clamor for stiffer penalties on Justice
Purisima in case he were found liable after a full, thorough and formal investigation by an
independent and impartial committee, which some quarters urged the Court to form.

Meanwhile, Justice Purisima retired from the Court on October 28, 2000. By Resolution of November
28, 2000, the Court ruled that "[h]is retirement makes it untenable for this Court to further impose
administrative sanctions on him as he is no longer a member of the Court" and referred the bar
matter to the Special Study Group on Bar Examination Reforms for report and recommendation.

The implication that the Court could have imposed further administrative sanctions on Justice
Purisima had he not retired is a recognition that the Court may discipline one of its sitting members.

Further, the Court did not explain why the "further" imposition of administrative sanctions was
untenable except for the fact that Justice Purisima was no longer a member of the Court. Could it be
that the earlier imposed penalties (i.e., censure and partial forfeiture of fees) were already
considered sufficient? Could it be that the proper administrative case (arising from the earlier bar
matter) was not instituted before Justice Purisima retired? Or could it be that Justice Purisima’s
retirement benefits were already released to him, leaving the Court with nothing more to go after to
or impose (except, perhaps, disqualification to hold any government office)?
I thus submit that the failure to initiate an administrative proceeding prior to Justice Purisima’s
retirement made it untenable for the Court to further impose administrative sanctions on him.
What was confirmed by the Purisima case, nonetheless, for purposes of pertinent discussion, is that
the Court has jurisdiction to take cognizance of a complaint against an incumbent Justice.

Then there was the case In re: Undated Letter of Mr. Louis Biraogo12 where Justice Ruben Reyes
was, inter alia, "held liable for GRAVE MISCONDUCT for leaking a confidential internal document of
the Court" for which he was "FINED ₱500,000.00, to be charged against his retirement benefits, and
disqualified to hold any office or employment in any branch or instrumentality of the government
including government-owned or controlled corporations."13 The question in Biraogo was not so much
on the Court’s jurisdiction over the case but on the effect of Justice Reyes’ subsequent retirement
during the pendency of the case.

Unlike the present case, however, impeachment proceedings against Justices Purisima and Reyes
did not see the light of day as they eventually retired, which mandatory retirement either foreclosed
the initiation of further administrative proceedings or directed the imposable sanctions to the
retirement benefits.

In view of the impeachment complaint filed with the House of Representatives involving the same
subject matter of the case, which denotes that a co-equal branch of government found the same act
or omission grievous as to present a ground for impeachment and opted to exercise its constitutional
function, I submit that the Court cannot proceed with the administrative complaint against Justice Del
Castillo for it will either (i) take cognizance of an impeachable offense which it has no jurisdiction to
determine, or (ii) downplay the questioned conduct and preempt the impeachment proceedings.

I thus join the call of Justice Carpio to recall the Court’s October 15, 2010 Resolution, but only
insofar as Justice Del Castillo is concerned. All related administrative concerns and issues involving
non-impeachable officers therein should still be considered effectual.

In Biraogo, the unauthorized release of the unpromulgated ponencia of Justice Reyes in the
consolidated Limkaichongcases spawned an investigation to determine who were responsible for the
leakage of the confidential internal document of the Court. The investigation led to the disciplining of
not just Justice Reyes but also two members of his staff, who were named without hesitation by the
Court, viz., Atty. Rosendo B. Evangelista and Armando Del Rosario, and who were held liable
for SIMPLE NEGLECT OF DUTY and ordered to pay FINE in the amount
of ₱10,000.00 and ₱5,000.00, respectively.14

Why, in the present case, the legal researcher who is hiding behind her credentials appears to be
held a sacred cow, I cannot fathom. Hers is a new (or better) specie of initialed personification (e.g.,
"xxx") under the likes of Cabalquinto15which should apply only to cases involving violence against
women and children.16

The unjustified non-disclosure of her identity is unfair to Atty. Evangelista who, aside from having his
own credentials to protect, had to be mentioned as a matter of course in the committee report
adopted by the Court in In re: Undated Letter of Mr. Louis Biraogo, after similarly cooperating with
and explaining his side before the investigating committee.

Atty. Evangelista was eventually found by the Court to be wanting in care and diligence in securing
the integrity and confidentiality of a document. In the present case, the Court’s October 15, 2010 per
curiam Decision cleared the name of the unnamed legal researcher.
While what was at stake in Biraogo was the "physical integrity" of a ponencia, what is at stake in the
present case is the "intellectual integrity" of a ponencia. The Court is committing a disservice to its
judicial function if it values the physical form of a decision more than what a decision substantially
contains.

Moreover, the liability of Justice Reyes did not save the day for Atty. Evangelista who, as the judicial
staff head, was tasked to secure and protect the copies of the Limkaichong Decision. Similarly in the
present case, independently of Justice Del Castillo’s "shortcomings," the legal researcher, who was
the lone drafter, proofreader and citechecker, was tasked like any other Court Attorney to secure
and ensure the substance and legal reasoning of the Vinuya Decision. Like Justice Reyes, Justice
Del Castillo can only do so much in claiming responsibility and full control of his office processes and
shielding the staff under the mantle of his impeachable wings.

Notably, Rule 10.2 of Canon 10 of the Code of Professional Responsibility states that lawyers shall
"not knowingly misquote or misrepresent the contents of a paper, the language or the argument of
opposing counsel, or the text of a decision or authority, or knowingly cite as law a provision already
rendered inoperative by repeal or amendment, or assert as a fact that which has not been proved."
While the provision presupposes knowledge or willful intent, it does not mean that negligent acts or
omissions of the same nature by lawyers serving the government go scot-free.

Simple neglect of duty is defined as the failure to give proper attention to a task expected of an
employee resulting from either carelessness or indifference.17

I submit that the legal researcher was remiss in her duties of re-studying the sources or authorities
invoked in the Vinuya Decision and checking the therein citations or, at the very least, those whose
authors’ rights to attribution and integrity are protected under Intellectual Property Law. While it is
incumbent upon her to devise ways and means of legal research, her admitted method or process
as shown in the Vinuya case reflects a disregard of a duty resulting from carelessness or
indifference. She failed to exercise the required degree of care to a task expected of a lawyer-
employee of the Supreme Court.

While the Court recognizes that there were indeed lapses in the editorial work in the drafting of
the Vinuya Decision, it easily attributed them to "accidental deletions." It conveniently assigned such
human errors to the realm of accidents, without explaining whether it could not have been foreseen
or avoided.

I, therefore, posit that the legal researcher, who must hitherto be named, is liable for Simple Neglect
of Duty and must be ordered to pay a Fine in the amount of, following Biraogo, ₱10,000.00, with
warning of more severe sanctions for future similar conduct.

Whether liability attaches to what the October 15, 2010 per curiam Decision finds to be deletion or
omission of citation "unquestionably due to inadvertence or pure oversight," the fact remains,
nonetheless, that there is a need for a textual correction of the Vinuya Decision. This Court should
cause the issuance of a corrected version in the form of, what Justice Ma. Lourdes P. A. Sereno
suggests as, a "corrigendum."

The matter of making corrections in judicial issuances is neither novel nor something beneath the
Court. As early as February 22, 2000, the Court already accepted the reality of human error. In A.M.
No. 00-2-05-SC, "In the Matter of Correction of Typographical Errors in Decisions and Signed
Resolutions," the Court provided a simple procedure in making proper corrections:
Inadvertent typographical errors in decisions and signed resolutions of the Court may occur every
now and then. As these decisions and signed resolutions are published and preserved for posterity
in the Philippine Reports, the Supreme Court Reports Annotated, and other publications as well as in
the Supreme Court website, the need for making them free of typographical errors cannot be
overemphasized. Care should, therefore, be taken in proofreading them before they are submitted
for promulgation and/or publication.

Nevertheless, should typographical errors be discovered after the promulgation and/or publication of
decisions and resolutions, the following procedure should be observed to the end that unauthorized
corrections, alterations, or intercalations in what are public and official documents are not made.

1. In case of decisions and signed resolutions with the author[’s] names indicated, the
Reporter and the Chief of the Management Information Systems Office of the Supreme Court
should secure the authority of the author concerned to make the necessary correction of
typographical errors. In case of per curiam decisions and unsigned resolutions, authority to
make corrections should be secured from the Chief Justice.

2. The correction of typographical errors shall be made by crossing out the incorrect word
and inserting by hand the appropriate correction immediately above the cancelled word.
Such correction shall be authenticated by the author by signing his initials immediately below
the correction. In per curiam decisions and unsigned resolutions, and in cases where the
author is no longer a member of the Court, the authentication shall be made by the Chief
Justice.

3. The Reporter and the Chief of the Management Information Systems Office shall submit to
the Court, through the Clerk of Court, a quarterly report of decisions and resolutions in which
corrections have been made. The Clerk of Court must thereafter include the report in the
agenda of the Court en banc.

This resolution takes effect immediately.

Despite the avowals of "slip in attribution," "bad footnoting," and "editorial error" in the Court’s
October 15, 2010 per curiam Decision, to date no effort has been made to correct
the Vinuya Decision in conformity with A.M. No. 00-2-05-SC, which only implies that the lapses are
not typographical in nature. The corrections of the Vinuya Decision cannot simply be made by
crossing out the incorrect word and inserting by hand the appropriate correction immediately above
the cancelled word, with authentication by the ponente or writer.

CONCHITA CARPIO MORALES

Associate Justice

Footnotes

1 Constitution, Art. XI, Sec. 2.

2Cuenco v. Fernan, Adm. Case No. 3135, February 17, 1988, 158 SCRA 29; vide also the
Resolution of April 15, 1988 (160 SCRA 778) where the complainant was severely
reprimanded and warned.
3 A.M. No. 88-4-5433, April 15, 1988, 160 SCRA 771.

4 Id. at 774.

5 Id. at 776-777.

6 A.C. No. 4509, December 5, 1995, 250 SCRA xi.

7Office of the Ombudsman v. Court of Appeals, G.R. No. 146486, March 4, 2005, 452 SCRA
714, 734-735.

8 In discussing the word "incapacitated," Bernas said that the power to determine incapacity
is part of the overall administrative power which the Supreme Court has over its
members and over all members of the judiciary [Bernas, The 1987 Constitution of the
Republic of the Philippines: A Commentary (2003), p. 988].

9 A.M. No. 10-4-20-SC (May 4, 2010).

10 Id., Rule 2, Sec. 3, par. (h).

11This framework of constitutional law likewise explains why incumbent Justices of the
Supreme Court, by virtue of their being impeachable officers, are not included from the
operation of A.M. No. 02-9-02-SC on the "Automatic Conversion of Some Administrative
Cases Against Justices of the Court of Appeals and the Sandiganbayan, Judges of Regular
and Special Courts, and Court Officials Who Are Lawyers as Disciplinary Proceedings
Against Them Both as Officials and as Members of the Philippine Bar" (September 17,
2002). The rule provides that when the said administrative case is based on grounds which
are likewise grounds for a disciplinary action of members of the Bar, the administrative case
shall also be considered a disciplinary action against the respondent justice, judge or court
official concerned as a member of the Bar [as applied in Avancena v. Liwanag, A.M. No.
MTJ-01-1383, March 5, 2003, 398 SCRA 541 and July 17, 2003, 406 SCRA 300 where the
judge was dismissed from service and disbarred from the practice of law. See also Juan de
la Cruz (Concerned Citizen of Legazpi City) v. Carretas, A.M. No. RTJ-07-2043, September
5, 2007, 532 SCRA 218; Cañada v. Suerte, A.M. No. RTJ-04-1884, February 22, 2008, 546
SCRA 414]. Its application to a particular administrative action is not dependent on the date
of commission of the offense but on the date of filing of the case. There is no automatic
conversion when the administrative case was filed before October 1, 2002 or prior to the
date of effectivity of A.M. No. 02-9-02-SC (vide Office of the Court Administrator v. Morante,
A.M. No. P-02-1555, April 16, 2004, 428 SCRA 1, 35-36; J. King and Sons Company, Inc., v.
Hontanosas, Jr., A.M. No. RTJ-03-1802, February 28, 2006 Resolution) and the respondent
has already been required to comment on the complaint (Heck v. Santos, A.M. No. RTJ-01-
1657, 23 February 2004, 423 SCRA 329, 341).

12 A.M. No. 09-2-19-SC, February 24, 2009, 580 SCRA 106.

13 Id. at 164.

14 Id. The Court explained:

Liability of Atty. Rosendo B. Evangelista

 The Committee finds that Atty. Evangelista, Justice Reyes’ Judicial Staff Head, was
remiss in his duties, which includes the supervision of the operations of the office,
particularly with respect to the promulgation of decisions. While it is incumbent upon
him to devise ways and means to secure the integrity of confidential documents, his
actuations reflected above evinced "a disregard of a duty resulting from carelessness
or indifference."

Atty. Evangelista was admittedly unmindful of the responsible safekeeping of draft

ponencias in an unlocked drawer of a member of the staff. He failed to make sure
that the unused portion of confidential documents like the second signatory page of
the ponencia in Gilbert form had been properly disposed of or shredded. He was not
on top of things that concerned the promulgation of ponencias, for he failed to
ascertain the status and procedural implication of an "on hold" order after having
been apprised thereof by his subordinate, Del Rosario, on July 17, 2008. Despite his
awareness that the Limkaichong case would eventually be called again, he admitted
that he was not privy to the preparation of the copy of the ponencia for the
subsequent session on July 29, 2008.

With these findings, the Court finds him liable for SIMPLE NEGLECT OF DUTY.

Liability of Armando Del Rosario

The committee likewise finds Del Rosario administratively liable for failing to exercise
the required degree of care in the custody of the Gilbert copy. Del Rosario admittedly
kept the Gilbert copy in an unlocked drawer from July 16, 2008 to December 10,
2008 when he should have known that, by the nature of the document in his custody,
he should have kept it more securely. His carelessness renders him
administratively liable for SIMPLE NEGLECT OF DUTY, defined as the failure to
give proper attention to a task expected of an employee resulting from either
carelessness or indifference.

Time and again, the Court has emphasized the heavy burden and responsibility
which court officials and employees are mandated to carry. They are constantly
reminded that any impression of impropriety, misdeed or negligence in the
performance of official functions must be avoided. The Court will never countenance
any conduct, act or omission on the part of all those involved in the administration of
justice which would violate the norm of public accountability and diminish the
people’s faith in the judiciary.

Under Section 23, Rule XIV of the Omnibus Civil Service Rules and Regulations,
(simple) neglect of duty is punishable by suspension of one month and one day to six
months for the first offense. Under Sec. 19, Rule XIV of the same Rules, the penalty
of fine (instead of suspension) may also be imposed in the alternative. Following the
Court's ruling in several cases involving (simple) neglect of duty, we find the penalty
of fine on Atty. Evangelista and Del Rosario in the amount of ₱10,000 and P5,000,
respectively, just and reasonable. (Id. at 161-163; emphasis, italics and underscoring
in the original).

15 People v. Cabalquinto, G.R. No. 167693, September 19, 2006, 502 SCRA 419.

Vide Republic Act No. 7610 (Special Protection of Children against Child Abuse,
16

Exploitation and Discrimination Act); Republic Act No. 9262 (Anti-Violence Against Women
 and Their Children Act of 2004); A.M. No. 04-10-11-SC of November 14, 2004 (Rule on
Violence against Women and their Children); and A.M. No. 99-7-06-SC, In Re Internet Web
page of the Supreme Court, Resolution of February 14, 2006.

17In Re: Undated Letter of Mr. Louis Biraogo, supra at 162, citing Rivera v. Buena, A.M. No.
P-07-2394, February 19, 2008, 546 SCRA 222.

The Lawphil Project - Arellano Law Foundation

SEPARATE CONCURRING OPINION

BRION, J.:

Background Facts

The present administrative disciplinary case against Supreme Court Associate Justice Mariano C.
del Castillo stemmed from the decision he penned for the Court in G.R. No. 162230,
entitled Isabelita C. Vinuya, et al. v. Executive Secretary. The Vinuya Decision was promulgated on
April 28, 2010 with 13 justices of this Court concurring with the ruling to dismiss the case.

On July 19, 2010, Attys. Harry Roque and Rommel Bagares, counsels for petitioners Vinuya, et al.,
filed a Supplemental Motion for Reconsideration raising, among others, the plagiarism allegedly
committed by Justice del Castillo for using the works of three foreign legal authors in his ponencia.
They alleged that the use was without proper attribution and that Justice del Castillo twisted the
foreign authors’ works to support the Decision. They considered it "highly improper for x x x the
Court x x x to wholly lift, without proper attribution, from at least three sources – an article published
in 2009 in the Yale Law Journal of International Law,1 a book published by the Cambridge University
Press in 2005,2 and an article published in the Case Western Reserve Journal of International
Law3 – and to make it appear that these sources support the assailed Judgment’s arguments for
dismissing [their] petition[,] when in truth, the plagiarized sources even make a strong case for the
Petition’s claims[.]"4

In reply to the accusation, Justice del Castillo wrote and circulated a letter dated July 22, 2010 to the
members of this Court. On July 27, 2010, the Court decided to refer the letter to the Ethics and
Ethical Standards Committee (the "Ethics Committee" or "committee") which docketed it as an
administrative matter. The committee required Attys. Roque and Bagares to comment on Justice del
Castillo’s letter, after which it heard the parties. After the parties’ memoranda, the committee
submitted its findings and recommendations to the Court.

The Court’s Decision on the Plagiarism Charge against Justice del Castillo

In a Decision dated October 12, 2010, the Court resolved to dismiss the plagiarism charges against
Justice del Castillo. It recognized that indeed certain passages of the foreign legal article were lifted
and used in the Vinuya Decision and that "no attributions were made to the x x x authors in [its]
footnotes."5 However, the Court concluded that the failure to attribute did not amount to plagiarism
because no malicious intent attended the failure; the attributions (present in Justice del Castillo’s
original drafts) were simply accidentally deleted in the course of the drafting process. Malicious
intent was deemed an essential element, as "plagiarism is essentially a form of fraud where intent to
deceive is inherent." Citing Black’s Law Dictionary’s definition of plagiarism – the deliberate and
knowing presentation of another person’s original ideas or creative expressions as one’s own – the
Court declared that "plagiarism presupposes intent and a deliberate, conscious effort to steal
another’s work and pass it off as one’s own." In fact, the Court found that by citing the foreign
author’s original sources, Justice del Castillo never created the impression that he was the original
author of the passages claimed to have been lifted from the foreign law articles:

The Court also adopts the Committee’s finding that the omission of attributions to Criddle-Descent
and Ellis did not bring about an impression that Justice Del Castillo himself created the passages
that he lifted from their published articles. That he merely got those passages from others remains
self-evident, despite the accidental deletion. The fact is that he still imputed the passages to the
sources from which Criddle-Descent and Ellis borrowed them in the first place.

As to the charge that Justice del Castillo twisted the meaning of the works of the foreign authors, the
Court ruled that it was impossible for him to have done so because:

first, since the attributions to Criddle-Descent and Ellis were accidentally deleted, it is impossible for
any person reading the decision to connect the same to the works of those authors as to conclude
that in writing the decision Justice Del Castillo "twisted" their intended messages. And, second, the
lifted passages provided mere background facts that established the state of international law at
various stages of its development. These are neutral data that could support conflicting theories
regarding whether or not the judiciary has the power today to order the Executive Department to sue
another country or whether the duty to prosecute violators of international crimes has attained the
status of jus cogens.

The Court, thus, declared that "only errors [of judges] tainted with fraud, corruption, or malice are
subject of disciplinary action" and these were not present in Justice del Castillo’s case; the failure
was not attended by any malicious intent not to attribute the lifted passages to the foreign authors.

Justice Maria Lourdes P. A. Sereno dissented from the Court’s October 12, 2010 Decision based
mainly on her disagreement with the majority’s declaration that malicious intent is required for a
charge of plagiarism to prosper.

On November 15, 2010, Attys. Roque and Bagares filed a motion for reconsideration of the Court’s
October 12, 2010 Decision. This motion was the subject of the Report/Resolution submitted to the
Court for consideration. Incidentally, the same counsels filed an impeachment complaint for betrayal
of public trust against Justice del Castillo with the House of Representatives on December 14, 2010.

The Court’s Action on the

Motion for Reconsideration

The Court referred the motion for reconsideration to the Ethics Committee and its Report
recommended the dismissal of the motion for reconsideration. The Report differentiated academic
writing from judicial writing, declaring that originality of ideas is not required of a judge writing
decisions and resolving conflicts because he is bound by the doctrine of stare decisis – the legal
principle of determining points in litigation according to precedents.

The Report likewise declared that the foreign authors, whose works were claimed to have been
plagiarized, were not themselves the originators of the ideas cited in the Vinuya Decision. While the
Vinuya Decision did not mention their names, it did attribute the passages to the original authors
from whom these foreign authors borrowed the ideas. There was, thus, no intent on the part of
Justice del Castillo to appropriate the ideas or to claim that these ideas originated from him; in short,
he did not pass them off as his own.

Justice Antonio T. Carpio dissented from the Report, based on two grounds:

a. the Court has no jurisdiction over the administrative case as it involves a sitting Supreme Court
Justice, for alleged misconduct committed in office; and

b. the judge, when writing judicial decisions, must comply with the law on copyright and respect the
moral right of the author to have the work copied attributed to him.

My Position

I fully support the conclusions of the Ethics Committee. I likewise take exception to Justice Carpio’s
Dissenting Opinion, specifically on his position that the Court has no jurisdiction to discipline its
Members as the only means to discipline them is through impeachment proceedings that the
Congress has the sole prerogative to undertake. Impeachment, he declares, functions as the
equivalent of administrative disciplinary proceedings. Since the Congress is given the exclusive
power to initiate,6 try, and decide7 all cases of impeachment, Justice Carpio posits that the Congress
serves as the exclusive disciplining authority over all impeachable officers. He warns that for the
Supreme Court to hear the present administrative disciplinary case would be to usurp this exclusive
power of Congress.

Jurisdiction of the Supreme Court to Discipline its Members

A given in the discipline of Members of the Supreme Court is that they can only be "removed from
office" through impeachment, as provided under Article XI of the Constitution, on the specified
grounds of culpable violation of the Constitution, treason, bribery, graft and corruption, other high
crimes, or betrayal of the public trust. The purpose of impeachment and the constitutional interest
sought is to protect the people and the State from official delinquencies and other
malfeasances.8 The Constitution, however, is not a single-purpose document that focuses on one
interest alone to the exclusion of related interests; impeachment was never intended by the
Constitution to be the totality of the administrative actions or remedies that the public or the Court
may take against an erring Justice of the Court. Other related constitutional interests exist touching
on other facets of the Judiciary and public accountability. They are, by themselves, equally
compelling and demanding of recognition.

Among the compelling interests that the Constitution zealously guards is judicial independence
because it is basic to the meaning and purposes of the Judiciary. This interest permeates the
provisions of Article VIII of the Constitution.9

Another interest to consider is the need for judicial integrity – a term not expressly mentioned in the
Article on the Judiciary (Article VIII), but is a basic concept found in Article XI (on Accountability of
Public Officers) of the Constitution. It is important as this constitutional interest underlies the
independent and responsible Judiciary that Article VIII establishes and protects. To be exact, it
complements judicial independence as integrity and independence affect and support one another;
only a Judiciary with integrity can be a truly independent Judiciary. Judicial integrity, too, directly
relates to public trust and accountability that the Constitution seeks in the strongest terms. The same
Article XI contains the impeachment provisions that provide for the removal of Justices of the
Supreme Court. Notably, a common thread that runs through all the grounds for impeachment is the
lack of integrity of the official impeached on these grounds.
Still another unavoidable consideration on impeachment and its limited grounds is that it cannot, by
itself, suffice to protect the people and foster the public accountability that the Constitution speaks of.
While it is a powerful weapon in the arsenal of public accountability and integrity, it is not a complete
weapon that can address and fully achieve its protective purposes. As discussed more fully below,
not all complaints and grievances can be subsumed under the defined constitutional grounds for
impeachment. Members of the Court can commit other offenses not covered by the impeachable
offenses, for which other offenses they should equally be held accountable. These other offenses
must of course be administratively addressed elsewhere if they cannot be similarly addressed
through impeachment; the people will not accept an interpretation that these are offenses that fell
through the constitutional cracks and can no longer be administratively addressed.

These considerations, taken together, dictate against the position of Justice Carpio that the
Congress alone, through impeachment and to the exclusion of this Court, can proceed against the
Members of the Court.

Protection of Judicial Integrity

For the purpose of preserving judicial integrity, the Supreme Court has as much (and in fact, should
have more) interest as the public or as any other branch of the government in overseeing the
conduct of members of the Judiciary, including its own Members. This is precisely the reason for the
Judiciary’s Code of Judicial Conduct and the lawyers’ Code of Professional Responsibility. Judicial
integrity is not only a necessary element in the orderly and efficient administration of justice; it is
almost literally the lifeblood of the Judiciary. A Judiciary, dissociated from integrity and the public
trust that integrity brings, loses its rightful place in the constitutional democratic scheme that puts a
premium on a reliable and respected third branch of government that would balance the powers of
the other two branches.

To ensure the maintenance and enhancement of judicial integrity, the Constitution has given the
Judiciary, mainly through the Supreme Court, a variety of powers. These powers necessarily begin
with the power to admit and to discipline members of the bar10 who are officers of the courts and who
have the broadest frontline interaction with the courts and with the public. Courts in general have the
power to cite for contempt11 that proceeds, not only from the need to maintain orderly procedures,
but also from the need to protect judicial integrity in the course of the courts’ exercise of judicial
power. The Supreme Court has the power to discipline and remove judges of lower courts.12 In this
role, the Court hears administrative disciplinary cases against lower court judges for purposes of
redress against erring judges and, more importantly, to "[preserve] the integrity of the judicial system
and public confidence in the system and x x x [to safeguard] the bench and the public from those
who are unfit."13

As concrete legal basis, the Supreme Court is expressly granted the general power of administrative
supervision over all courts and the personnel thereof.14 By its plain terms, the power extends not only
to the authority to supervise and discipline lower court judges but to exercise the same powers over
the Members of the Court itself. This is the unavoidable meaning of this grant of authority if its main
rationale – i.e., to preserve judicial integrity – is to be given full effect. The Supreme Court must
ensure that the integrity of the whole Judiciary, its own Members included, is maintained as any taint
on any part of the Judiciary necessarily taints the whole. To state the obvious, a taint in or
misconduct by any Member of the Supreme Court – even if only whispered about for lack of
concrete evidence and patriotic whistleblowers – carries greater adverse impact than a similar event
elsewhere in the Judiciary.

Independent of the grant of supervisory authority and at a more basic level, the Supreme Court
cannot be expected to play its role in the constitutional democratic scheme solely on the basis of the
Constitution’s express grant of powers. Implied in these grants are the inherent powers that every
entity endowed with life (even artificial life) and burdened with responsibilities can and must exercise
if it is to survive. The Court cannot but have the right to defend itself to ensure that its integrity and
that of the Judiciary it oversees are kept intact. This is particularly true when its integrity is attacked
or placed at risk by its very own Members – a situation that is not unknown in the history of the
Court. To be sure, judicial integrity cannot be achieved if the Court can police the ranks of the lower
court judges but not its own ranks. From this perspective view, it is unthinkable that the Supreme
Court can only watch helplessly – for the reason that the power to act is granted only to Congress
under the terms of the Constitution – as its own Members prostitute its integrity as an institution.

Impeachment Grounds are Limited

That an impeachment partakes of the nature of an administrative disciplinary proceeding confined to

the defined and limited grounds of "culpable violation of the Constitution, treason, bribery, graft and
corruption, other high crimes, and betrayal of public trust"15 cannot be disputed. However, it cannot
likewise be disputed that these grounds, as defined, refer only to those serious "offenses that strike
at the very heart of the life of the nation."16 Thus, for "betrayal of public trust" to be a ground for
impeachment, the "manner of commission must be of the same severity as ‘treason’ and
‘bribery.’"17 With respect to members of the High Court, impeachment is considered "as a response
to serious misuse of judicial power"18 no less equivalent to treason or bribery.

Directly implied from these established impeachment principles is that "removal from office (the
imposable penalty upon impeachment and conviction) is not the price exacted for every incident of
judicial misconduct."19 Otherwise stated, that impeachment administratively addresses only serious
offenses committed by impeachable officers cannot imply that the Constitution condones
misdemeanors and misconduct that are not of equal gravity.

For, side by side with the constitutional provision on impeachment is the constitutional policy that
"public office is a public trust" and that "public officers and employees must, at all times, be
accountable to the people."20 Even impeachable officials, despite the nature and level of their
positions, must be administratively accountable for misconduct and misdemeanors that are of lesser
gravity than the defined impeachable offenses. Only this approach and reconciled reading with the
provision on impeachment can give full effect to the constitutional policy of accountability. If this were
not the case, then the public would be left with no effective administrative recourse against Supreme
Court Justices committing less than grave misconduct. One American writer, Brent D. Ward, writes
on this point that:

It would be a serious weakness in our system to place systematic judicial misconduct beyond the
reach of any remedy save impeachment. There are limits beyond which no person – even a federal
judge – should be allowed to go with impunity. The courts themselves have the power and the duty
to curtail the effect of repeated contrary and erratic actions of a judge that occur too frequently to
permit effective appellate supervision in the run of cases.

xxxx

[The] Constitution does x x x shield [judges] from corrective action by other judges designed to
ensure that the law is effectively administered. The appellate courts have the power to prevent
action so obviously improper as to place it beyond established rules of law.21

Adverse Effects of Expansive View of Impeachment Grounds

If impeachment were to be the only administrative proceeding to hold Justices of this Court
accountable, then the grounds for impeachment may arguably carry a definition beyond the
traditionally grave or serious character these offenses have always carried. An expanded definition,
however, is no different from the remedy of burning a house to kill a rat. While such definition in the
long run may kill more rats or assuredly do away with a particularly obnoxious rat, it will at the same
time threaten and adversely affect a more valuable constitutional interest – the independence of the
Judiciary that allows magistrates to conscientiously undertake their duties, guided only by the
dictates of the Constitution and the rule of law.

It needs no elaborate demonstration to show that the threat of impeachment for every perceived
misconduct or misdemeanor would open Justices of the Court to harrassment. A naughty effect – if
administrative redress can only be secured from Congress to the exclusion of this Court under an
expanded definition of impeachment grounds – is to encourage every litigant with a perceived
grievance against a Justice of this Court to run to his congressman for the filing of an impeachment
complaint.

Undoubtedly, this kind of scenario will be a continuing threat to judges and justices, with
consequential adverse effects on the Judiciary, on inter-branch relationship, and on the respect the
public may give the Judiciary, the Legislature, and even of the government itself. Worse, this kind of
scenario may ultimately trivialize the impeachment process and is thus best avoided.

An expansive interpretation of the grounds for impeachment must also affect Congress which acts
on impeachment complaints but whose main task under our structure of government is to legislate,
not to police the Supreme Court and other impeachable officers. To say the least, a deluge of
impeachment complaints may prove to be impractical for Congress because impeachment is both an
arduous and a time consumming process that will surely divert congressional time and other
resources from the principal function of lawmaking.

The US Practice

In the United States (US) federal courts, "the impeachment process has not been the only check on
federal judges [who are removable through impeachment] who may have abused their
independence, or the only assurance of their accountability."22 The US National Commission on
Judicial Discipline and Removal has posited that there must be "a power in the judiciary to deal with
certain kinds of misconduct [as this will further] both the smooth functioning of the judicial branch
and the broad goal judicial independence."

Along this line, the US Congress created a system enforcing an internal judicial self-discipline
through the judicial councils under their Judicial Councils Reform and Judicial Conduct and Disability
Act of 1980 (the US 1980 Act). The judicial council (composed of the federal judges within a specific
judicial circuit) is considered as a "formal and credible supplement to the impeachment process for
resolving complaint of misconduct or disability against federal judges."23The judicial council of a
federal circuit, through the chief judge, is authorized to receive and to act on complaints about the
conduct of judges who are removable only through impeachment. If there is merit to a complaint, the
judicial council can "take appropriate action, which may include censure, reprimand, temporary
suspension, and transfer of cases, but not removal from office. If the judicial council believes that it
has uncovered grounds for impeachment, the council is empowered to report its findings to the
Judicial Conference of the United States, which after an investigation, may report its findings to the
House of Representatives."24

Arguably, the existence of a judicial council as an additional or supplemental check on US federal

judges is statutory and no equivalent statute has been enacted in our jurisdiction specifically
establishing in our Supreme Court a system of internal judicial self-discipline. This argument,
however, loses sight of the constitutional authority of our Supreme Court to govern the conduct of its
members under its power of general administrative supervision over all courts – a power that the
Philippine Constitution expressly grants to our Supreme Court to the exclusion of remedies outside
of the Judiciary except only for impeachment. Interestingly, even in the US, the view has been taken
that the enactment of a statute conferring disciplinary power to the Court over its own members may
be unnecessary as the Supreme Court itself may assume this power. This is implied from the
following recommendation of the US National Commission on Judicial Discipline and Removal which
states:

[I]t may be in the [US Supreme] Court’s best interest, as contributing to the public’s perception of
accountability, to devise and adopt some type of formal procedure for the receipt and disposition of
conduct and disability complaints.

The Commission recommends that the Supreme Court may wish to consider the adoption of policies
and procedures for the filing and disposition fo complaints alleging misconduct against Justices of
the Supreme Court.25

Note should be taken in these regards that the Philippine Supreme Court has already put in place
various Codes governing ethical rules for the bar and for the Judiciary. The Code of Judicial Conduct
applies to all members of the Judiciary, including the Members of the Supreme Court. The Code of
Professional Responsibility applies to all lawyers, thus, necessarily to Members of the Court for
whom membership in the bar is an essential qualification. The Court as well has codified the Internal
Rules of the Supreme Court. A Rule on Whistleblowing is presently under consideration by the Court
en banc.

What is crucial in the establishment of the judicial council system in the US is the implication that no
inherent incompatibility exists between the existence of Congress’ power to impeach and the
Supreme Court’s power to discipline its own members; the two powers can co-exist and, in fact,
even supplement each other. The constitutionality of recognizing disciplinary power in the courts
over their own impeachable members (as provided in the US 1980 Act), vis-à-vis the Congress’
power to remove the same officials by impeachment, has been addressed before the US Court of
Appeals in the case of McBryde v. Commission to Review Circuit Council Conduct and Disability
Orders of the Judicial Conference of the US26:

Judge McBryde frames his separation of powers claim as whether the Constitution "allocates the
power to discipline federal judges and, if so, to which branches of government." Finding that it
allocates the power to Congress in the form of impeachment, he concludes that it excludes all other
forms of discipline. But Judge McBryde's attempt to fudge the distinction between impeachment and
discipline doesn't work. The Constitution limits judgments for impeachment to removal from office
and disqualification to hold office. It makes no mention of discipline generally. The Supreme Court
recently observed that it accepted the proposition that "[w]hen a statute limits a thing to be done in a
particular mode, it includes a negative of any other mode." But application of the maxim depends on
the "thing to be done." Here the thing to be done by impeachment is removal and disqualification, not
"discipline" of any sort.

Thus, when the conduct of a member of the Supreme Court is improper but is not of such gravity to
be considered as an impeachable offense, the Court – to protect its integrity – may address the
misconduct through an administrative disciplinary case against the erring member.

Conclusion: Court can hear the case against Justice del Castillo as an Administrative Matter
What the impeachment provisions of the Constitution guarantee is simply the right to be removed
from office only through the process of impeachment and not by any other means; it does not
preclude the imposition of disciplinary sanctions short of removal on the impeachable official.
Impeachment is the sole means of removal, but it is certainly not the sole means of disciplining
Members of the Supreme Court or, for that matter, public officials removable by impeachment.

Accordingly, I believe that the Court has the authority to hear the present administrative disciplinary
case against Associate Justice Mariano del Castillo; in case of a finding of misconduct, it can impose
penalties that are not the functional equivalent of removal or dismissal from service. If, in the
exercise of its prerogative as interpreter of the Constitution, it determines that an act complained of
falls within the defined grounds for impeachment, then the Court should say so and forthwith forward
its recommendations to Congress as the body constitutionally mandated to act in impeachment
cases.

Court’s Interpretation of Plagiarism - limited to its Concept as an Ethical violation of Members of the
Judiciary.

The dissatisfaction with the Court’s October 12, 2010 Decision (resolving the plagiarism charge
against Justice del Castillo or the "plagiarism Decision") primarily lies with the Court’s declaration
that malicious intent is a necessary element in committing plagiarism. In the plagiarism Decision, the
Court said:

[P]lagiarism presupposes intent and a deliberate, conscious effort to steal another’s work and pass it
off as one’s own.

Why we deemed malicious intent as a necessary element for judicial plagiarism can be explained by
our repeated pronouncement that:

not every error or mistake committed by judges in the performance of their official duties renders
them administratively liable. In the absence of fraud, dishonesty or deliberate intent to do an
injustice, acts done in their official capacity, even though erroneous, do not always constitute
misconduct.

Only errors that are tainted with fraud, corruption or malice may be the subject of disciplinary action.
For administrative liability to attach, respondent must be shown to have been moved by bad faith,
dishonesty, hatred or some other motive. Indeed, judges may not be held administratively liable for
any of their official acts, no matter how erroneous, as long as they acted in good faith.27

The term plagiarism does not have a precise statutory definition as it is not a matter covered by
present Philippine statutes.28 What the Intellectual Property Code (Republic Act 8283)29 defines and
punishes is "copyright infringement." However, these terms are not legally interchangeable. Laurie
Stearns, copyright lawyer and author of the article "Copy Wrong: Plagiarism, Process, Property, and
the Law" aptly observes the distinctions between the two in this wise:

Plagiarism is not necessarily copyright infringement, nor is copyright infringement necessarily

plagiarism. The two concepts diverge with respect to three main aspects of the offense: copying,
attribution and intent. In some ways the concept of plagiarism broader than infringement, in that it
can include the copying of ideas or of expression not protected by copyright, that would not
constitute infringement and it can include copying of small amounts of material that would be
disregarded under copyright law. In other ways the concept of infringement is broader, in that it can
include both properly attributed copying and unintentional copying that would be excused from being
called plagiarism.
The divergence between plagiarism’s popular definition and copyright’s statutory framework
suggests an essential contradiction between what is at stake in plagiarism – the creative process –
and what is at stake in copyright infringement – the creative result.30

Separately from these distinctions, the matter before the Court is Justice del Castillo’s alleged
plagiarism or failure to make attributions as an ethical violation, not a copyright violation under the
Intellectual Property Code. Given these distinctions, I see no reason to quibble over the definition of
plagiarism – a term that, in the absence of any statutory limitation, the Court can define and interpret
for purposes of its administrative authority over all courts and the personnel thereof.

From the point of view of ethical rules, what are important are the intent in undertaking an act and
the concepts of integrity, propriety, honesty and impartiality for purposes of dispensing justice by an
independent Judiciary. It is in this sense, and in light of the nature of the present case as an
administrative disciplinary charge against a Member of this Court, that the pronouncement of this
Court on plagiarism and on the merits of the ethical charge should be understood.

In this light, I find it misplaced for Justice Sereno to describe the Court’s Decision as:

[creating] unimaginable problems for Philippine academia, which will from now on have to find a
disciplinary response to plagiarism committed by students and researchers on the justification of the
majority Decision.

It has also undermined the protection of copyrighted work by making available to plagiarists "lack of
malicious intent" as a defense to a charge of violation of copy or economic rights of the copyright
owner committed through lack of attribution.

xxxx

Because the majority Decision has excused the lack of attribution to the complaining authors in the
Vinuya decision to editorial errors and lack of malicious intent to appropriate ─ and that therefore
there was no plagiarism ─ lack of intent to infringe copyright in the case of lack of attribution may
now also become a defense, rendering the above legal provision meaningless.31

When the Supreme Court acts on complaints against judges under its supervision and control, it acts
as an administrator imposing discipline and not as a court passing upon justiciable controversies.32 It
is precisely for this reason that disciplinary cases are docketed as "Administrative Matters" or
"A.M."33 Hence, any interpretation by the Court of "plagiarism" is limited to this context and cannot be
held to bind the academe in undertaking its educational functions, particularly its own power to
define plagiarism in the educational context. It likewise cannot bind Congress in its role as the sole
authority to determine what constitutes an impeachable offense, subject to what I stated above on
the established scope of impeachable offenses and the power of the Court to act in grave abuse of
discretion situations under the Constitution. Specifically, a finding by this Court that plagiarism was
or was not committed cannot preclude Congress from determining whether the failure or omission to
make an attribution, intentionally or unintentionally, amounts to a "betrayal of public trust."

For these reasons, I support the conclusion of the Ethics and Ethical Standards Committee that
Justice Mariano C. del Castillo’s attribution lapses did not involve any ethical violation. I vote for the
approval of the Committee’s Report and for the denial of the petitioners’ Motion for Reconsideration.

ARTURO D. BRION
Associate Justice
Footnotes

1 A Fiduciary Theory of Jus Cogens by Evan J. Criddle and Evan Fox-Decent.

2 Enforcing Erga Omnes Obligations in International Law by Christian J. Tams.

3 Breaking the Silence: On Rape as an International Crime by Mark Ellis.

4Petitioners Vinuya, et al.’s Supplemental Motion for Reconsideration dated July 18, 2010, p.
2.

5Specifically, the Court referred to the article A Fiduciary Theory of Jus Cogens written by
Criddle-Decent and Fox.

6CONSTITUTION, Article XI, Section 3(1). The House of Representatives shall have the
exclusive power to initiate all cases of impeachment.

7Id., Section 3(6). The Senate shall have the sole power to try and decide all cases of
impeachment.

8 See De Leon, Philippine Constitutional Law, Vol. II, 2004 Ed., p. 831.

9 See, among others, security of tenure at Section 1; fiscal autonomy under Section 2;
defined jurisdiction that Congress cannot touch without concurrence from the Supreme
Court; administrative supervision over all courts under Section 6; a Judicial and Bar Council
that renders recourse to the Commission on Appointments unnecessary; and the guarantee
of strict focus on judicial duties under Section 12.

10 CONSTITUTION, Article VIII, Section 5(5); RULES OF COURT, Rules 138 and 139-B.

11 RULES OF COURT, Rule 71.

12 CONSTITUTION, Article VIII, Section 11; RULES OF COURT, Rule 140.

13Cynthia Gray, A Study of State Judicial Discipline Sanctions, American Judicature Society
(2002), at <www.ajs.org/ethics/pdfs/Sanctions.pdf>, last visited February 9, 2011. The article
also cites other reasons: impressing upon the judge the severity and significance of the
misconduct; deterring similar conduct by the judge and others; reassuring the public that
judicial misconduct is not tolerated or condoned; and fostering public confidence in the self-
policing system.

14See Joaquin G. Bernas, S.J., The 1987 Constitution of the Republic of the Philippines: A
Commentary (2009 ed.), p. 1012, and Hector S. De Leon, Philippine Constitutional Law:
Principles and Cases, Volume 2 (2004 ed.), p. 595.

15 CONSTITUTION, Article XI, Section 2.

16 See Bernas, supra, note 14, p. 1113.

17 Ibid.

18Robert W. Kastenmeier, Report of the National Commission on Judicial Discipline and

Removal (March 1994), 152 F.R.D. 265, at <judicial-discipline-reform.org/judicial-
complaints/1993-Report-Removal.pdf>, last visited on February 9, 2011.

Cynthia Gray, supra note 13, citing In re Lowery, 999 S.W.2d 639, 661 (Special Court of
19

Review Appointed by Texas Supreme Court, 1998).

20 CONSTITUTION, Article XI, Section 1.

21
Brent D. Ward, Can the Federal Courts Keep Order in Their Own House? Appellate
Supervision through Mandamus and Orders of Judicial Councils, 233 Bringham Young
University Law Review 233, 237 and 253 (1980), at
<heinonline.org/HOL/LandingPage?collection=journals&handle=

hein.journals/byulr1980&div=177ID=&page=>, last visited on February 9, 2011.

22 Robert W. Kastenmeier, supra note 18.

23 Ibid.

24Michael J. Gerhardt, The Constitutional Limits to Impeachment and Its Alternatives, 68

Texas Law Review 1, 73-74 (November 1989).

25 Robert W. Kastenmeier, supra note 18.

26 264 F.3d 52 (2001).

27 Cruz v. Iturralde, A.M. RTJ No. 03-1775, April 30, 2003, 402 SCRA 65.

28George, Joyce J. "Judicial Opinion Writing Handbook." 5th edition. William S. Hein & Co.,
Inc., 2007, page 715, defines plagiarism as "the intentional representation of another
person’s words, thoughts or ideas as one’s own without giving attribution."

AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND ESTABLISHING

29

THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND

FUNCTIONS, AND FOR OTHER PURPOSES

30Stearns, Laurie. "Copy Wrong: Plagiarism, Process, Property and the Law." Perspectives
on Plagiarism and Intellectual Property in a Postmodern World. Ed. Lise Buranen and Alice
M. Roy. Albany, New York State University of New York Press. 1999. 5-6.

31 Dissenting Opinion of Justice Sereno in the Plagiarism decision.

32 Icasiano v. Sandiganbayan, G.R. No. 95642, May 28, 1992, 209 SCRA 377.
 See: Rule 4, Internal Rules of the Supreme Court, in relation with Section 4, Rule 6 on
33

Docket Number and Entry in Logbook. Administrative cases are not listed as G.R. (General
Register) cases as they are not acted upon in the exercise of the Court’s judicial function.

The Lawphil Project - Arellano Law Foundation

SEPARATE CONCURRING OPINION

ABAD, J.:

I fully concur in the majority opinion and would like to react to the separate dissenting opinions of
Justices Antonio T. Carpio and Maria Lourdes P.A. Sereno.

Justice Carpio has again graced the Court’s rulings in this case with his typically incisive dissenting
opinion. Still, I cannot agree with his views. He asserts that the sole disciplining authority of all
impeachable officers, including the Justices of this Court, lies in Congress. This is quite true but only
with respect to impeachable offenses that consist in "culpable violation of the Constitution, treason,
bribery, graft and corruption, other high crimes, or betrayal of public trust,"1 all offenses that warrant
the removal of such officers and disqualification for holding any office in the government.2 The
Supreme Court has no intention of exercising the power of impeachment that belongs to Congress
alone.

Certainly, however, the Supreme Court has the administrative authority to investigate and discipline
its members for official infractions that do not constitute impeachable offenses. This is a
consequence of the Court’s Constitutional power of "administrative supervision over all courts and
the personnel thereof."3 When the Court decided earlier the plagiarism charge filed against Justice
Mariano Del Castillo by the petitioners in Vinuya, it was under a belief that "plagiarism," which is not
even a statutory offense, is an administrative infraction. The petitioners in that case did not
themselves object to the proceedings conducted by the Court’s Ethics Committee.

Subsequently, a complaint for impeachment was filed against Justice Del Castillo before the House
of Representatives based on the same charge of plagiarism. The Court cannot do anything about
that but it is not the Court, denying the motion for reconsideration filed in the present case, which will
provoke a constitutional crisis; if ever, it is the House of Representatives that will do so, seeing that
the Court has already acted on such a charge under an honest belief that plagiarism is an
administrative rather than an impeachable offense.

Whether plagiarism is an administrative or an impeachable offense need not be decided by the

Court in this case since no actual dispute has arisen between Congress and the Court regarding it.

As for the alleged violation of the copyright law in this case, it should be sufficient to point out that no
such charge has been lodged against Justice Del Castillo. What is more, the Court has no original
jurisdiction over copyright law violations. I reserve in the appropriate case my view on whether or not
lifting from copyrighted articles, without attribution, solely for the purpose of rendering a decision,
constitutes violation of the copyright law.

Justice Sereno castigates the majority in the Court for lowering the standards for judicial scholarship,
negating the educative and moral directional value in the writing and publishing of decisions,
bending over backwards to deny the objective existence of gross plagiarism, and condoning
dishonesty in the exercise of a function central to the role of the courts.

But our courts are in the business, not of "judicial scholarship," but of deciding fairly and honestly the
disputes before them, using precedents and legal literature that, according to American scholars,
belong to the public domain. If this is not honest work for a judge, I do not know what is.

And Justice Sereno has no right to preach at the expense of the majority about "educative and moral
directional value" in writing published articles. For one thing, her standards are obviously for work
done in the academe, not for the judge plodding at his desk to perform government work. For
another, I note that on occasions she has breached those very standards, lifting from works of others
without proper attribution.

Take Justice Sereno’s article, Toward the Formulation of a Philippine Position in Resolving Trade
and Investment Disputes in APEC."4 Under the section subtitled "The WTO Dispute Settlement
Mechanism," she said in the footnote that "[t]his section is drawn from Article XX and XXIII of the
GATT 1994, Understanding on Dispute Settlement, and Working Procedures." To me, this means
that in writing the section, she drew ideas from these four GATT issuances.

I am reproducing below the beginning portions of Justice Sereno’s work that are relevant to this
discussion. I underline what she copied verbatim from Annex 2 of the General Agreement on Tariffs
and Trade (GATT) 1994, entitled "Understanding on Rules and Procedures Governing the
Settlement of Disputes," or "Understanding on Dispute Settlement" for short.

The WTO Dispute Settlement Mechanism

Dispute settlement under the WTO mechanism is the prompt settlement of situations in which a
member considers that any benefit accruing to it directly or indirectly under the WTO Agreement is
being impaired by measures taken by another member. A dispute settlement mechanism aims to
secure a positive solution to a dispute. Thus, a solution mutually acceptable to the parties to a
dispute is preferred. However, in the absence of a mutually agreed solution, the first objective is
usually to secure the withdrawal of measures concerned. A measure is any internal act, whether a
law, an administrative action, or a judicial decision of a member.

The DSB is the WTO organ that is mandated to administer the rules and procedures that govern the
settlement of disputes. It is made up of the representatives of all the members of the WTO. Each
member is entitled to one vote.

The DSB has the following powers and functions: (a) to establish panels, (b) to adopt or reject panel
and Appellate Body reports, (c) to maintain surveillance of the implementation of rulings and
recommendations, and (d) to authorize the suspension of concessions and other obligations. It is
understood that requests for conciliation and the use of the dispute settlement procedures should
not be viewed as contentious acts. Members engage in this procedure to resolve disputes. [copied]

If a measure adopted by a country (A) within its territory impinges on, for example, the exports of
another country (B), the first step in dispute settlement is the filing of a request for consultation by
the complainant. In this case, B is the complainant.

If B requests consultation with A, then A must consider the complaint of B. A must reply to the
request within 10 days after its receipt and enter into consultations with B in good faith within a
period of 30 days from the date of the request, with a view to reaching a mutually satisfactory
solution. If A does not respond within 10 days, does not enter into consultations within a period of 30
days from the filing of the request, and if the consultation fails to settle a dispute within 60 days after
the request for consultation, then B may proceed to request the establishment of a panel.

Good offices, conciliation, and mediation may be requested at any time by any party to a dispute.
They may begin and be terminated at any time. Once they are terminated, the complaining party can
then request the establishment of a panel.

If the complaining party so requests, a panel may be established by the DSB. The function of the
panel is to assist the DSB in discharging its responsibilities. Accordingly, a panel should make an
objective assessment of the matter before it, including the facts of the case and the applicability and
conformity of the measure with the relevant agreements. It should also make other findings that will
assist the DSB in making the recommendations or in giving the rulings provided for in the covered
agreements, besides consulting regularly with the parties to the dispute and giving them adequate
opportunity to develop a mutually satisfactory solution. [Copied]

The request for the establishment of a panel should be made in writing, indicate whether
consultations were held, identify the specific measures at issue, and provide a brief summary of the
legal basis of the complaint. [Copied]

xxxx

Notably, Justice Sereno began her above discussion with ideas presumably from her four sources,
which she put together and fashioned into her own sentences and paragraphs. The ideas were from
GATT but the presentation was original Sereno. Down the line, however, without introduction or
preamble, she copied verbatim into her work portions from Understanding on Dispute Settlement,
without citing this specific source. More, she did not use quotation marks to identify the copied
portions. She thus made ordinary readers like me believe that she also crafted those portions. To
borrow a word from the civil code, she "co-mingled" the work of others with hers, erasing the identity
of the lifted work.

Justice Sereno’s explanation is that, since she was drawing from the rules embodied in GATT’s
Understanding on Dispute Settlement, she did not have to make attributions to those rules at each
turn of her writing. She may be correct if she in fact properly cited those rules the first time she
copied from it and, further, indicated a clear intent to do further copying down the line. But she did
not. Properly, she could have written:

xxxx

The DSB has the following powers and functions: (a) to establish panels, (b) to adopt or reject panel
and Appellate Body reports, (c) to maintain surveillance of the implementation of rulings and
recommendations, and (d) to authorize the suspension of concessions and other obligations.
GATT’s Understanding on Dispute Settlement has a lot to say about the subject and some are
mentioned here. For one it says, "It is understood that requests for conciliation and the use of the
dispute settlement procedures should not be … as contentious acts. Members engage in …
procedure to resolve disputes."

xxxx

Further, she did not identify the portions she copied verbatim in order to set them apart from her own
writing. Under the rule that she foists on Justice Del Castillo, quotation marks must be used
whenever verbatim quotes are made.5 This requirement is all the more important since, unlike
domestic rules, the rules of GATT are unfamiliar terrain to most readers. Thus, at the next turn, she
could have at least enclosed in quotation marks the other portions she copied verbatim from her
source like this:

If the complaining party so requests, a panel may be established by the DSB. "The function of the
panel is to assist the DSB in discharging its responsibilities. Accordingly, a panel should make an
objective assessment of the matter before it, including the facts of the case and the applicability and
conformity of the measure with the relevant agreements. It should also make other findings that will
assist the DSB in making the recommendations or in giving the rulings provided for in the covered
agreements … consul … regularly with the parties to the dispute and giving them adequate
opportunity to develop a mutually satisfactory solution."

"The request for the establishment of a panel should be made in writing, indicate whether
consultations were held, identify the specific measures at issue, and provide a brief summary of the
legal basis of the complaint."

What is more, learned lawyers would always set apart the laws or rules that they cite or invoke in
their work since these are expressions of a higher grade than their comments or opinions. A lawyer’s
opinion can persuade but a rule or a law is binding. I have yet to see a Supreme Court decision that
copies verbatim a specific rule or law, which it invokes to support such decision, without distinctly
calling it what it is or citing its source.

Below is the rest of the verbatim copying that she made from Understanding on Dispute Settlement
in the section she wrote without attribution or quotation marks.

Original work - GATT Annex 2,

Sereno, J.
Understanding on Dispute Settlement

After receipt of comments from the
parties, the panel shall issue an interim
report to them, including both the
descriptive sections and the panel’s
findings and conclusions. The parties may
submit written requests for the panel to
review precise aspects of the interim
report for which the panel shall meet with
the parties. If no comments are received
from any party within the comment period,
the interim report shall be considered the
final panel report and circulated promptly
to the members. (page 7)
Following the expiration of the set period of
time for receipt of comments from the
parties to the dispute, the panel shall issue
an interim report to the parties, including
both the descriptive sections and the
panel’s findings and conclusions. Within a
period of time set by the panel, a party
may submit a written request for the panel
to review precise aspects of the interim
report prior to circulation of the final report
to the Members. At the request of a party,
the panel shall hold a further meeting with
the parties on the issues identified in the
written comments. If no comments are
received from any party within the
comment period, the interim report shall be
considered the final panel report and
circulated promptly to the Members.

[Article 15.2, GATT Annex 2]

When a panel or the AB concludes that a Where a panel or the Appellate Body
measure is inconsistent with a covered concludes that a measure is inconsistent
agreement, it shall recommend that the with a covered agreement, it shall
member concerned bring the measure into recommend that the Member concerned
conformity with that agreement. In addition
to its recommendations, the panel or AB
may suggest ways by which the member
concerned could implement the
recommendations. (page 8)
bring the measure into conformity with that
agreement. In addition to its
recommendations, the panel or Appellate
Body may suggest ways in which the
Member concerned could implement the
recommendations.

[Article 19.1, GATT Annex 2]

The DSB shall adopt the report within 60
days of the issuance of a panel report to
the members, unless one of the parties to
the dispute formally notifies the DSB of its
decision to appeal, or the DSB decides by
consensus not to adopt the report. If the
panel report is on appeal, the panel report
shall not be considered for adoption by the
DSB until the completion of the
appeal. (page 7-8)
Within 60 days after the date of circulation
of a panel report to the Members, the
report shall be adopted at a DSB meeting
unless a party to the dispute formally
notifies the DSB of its decision to appeal or
the DSB decides by consensus not to
adopt the report. If a party has notified its
decision to appeal, the report by the panel
shall not be considered for adoption by the
DSB until after completion of the appeal.

[Article 16.4, GATT Annex 2]

It may uphold, modify, or reverse the legal The Appellate Body may uphold, modify or
findings and conclusions of the panel. ( reverse the legal findings and conclusions
page 8) of the panel.

[Article 17.13, GATT Annex 2]

Note that the AB reviews only issues of law An appeal shall be limited to issues of law
covered in the panel report and legal
interpretation developed by the panel.
(page 8)
The DSB shall keep under surveillance the
implementation of adopted
recommendation or rulings. Any member
may raise the issue of implementation of
the recommendations or rulings at the DSB
anytime following their adoption. (page 8)
covered in the panel report and legal
interpretations developed by the panel.
[Article 17.6, GATT Annex 2]
The DSB shall keep under surveillance the
implementation of adopted
recommendations or rulings. The issue of
implementation of the recommendations or
rulings may be raised at the DSB by any
Member at any time following their
adoption.

[Article 21.6, GATT Annex 2]

Going to another item in the same article, Justice Sereno copies significant lines from Oppenheim’s
Treatise without making an attribution to that work.

Sereno, J. Original work – Oppenheim’s Treatise

In mediation, the third party facilitates the The difference between [good offices and
negotiations between the parties mediation] is that, whereas good offices
concerned. It involves direct conduct of consist in various kinds of action tending to
 negotiations between the parties at issue
on the basis of proposals made by the
mediator.
On the other hand, good offices are a
friendly offer by a third party, which tries to
induce disputants to negotiate among
themselves. Such efforts may consist of
various kinds of actions tending to call
negotiations between conflicting states into
existence. (page 11)
call negotiations between the conflicting
States into existence, mediation consists in
a direct conduct of negotiations between
the differing parties on the basis of
proposals made by the mediator.
[Oppenheim, International Law, A Treatise
volume 2 page 11 (1920)]

Justice Sereno explains that "trite, common, standard statement[s]" like the ones she copied from
Oppenheim has "nothing original at all about [them]" and need no citation or quotation marks. This is
true. Indeed, the Court acknowledged in its October 12, 2010 decision that no plagiarism could be
committed respecting "common definitions and terms, abridged history of certain principles of law,
and similar frequently repeated phrases that, in the world of legal literature, already belong to the
public realm." But I cite the above because Justice Sereno would not grant to Justice Del Castillo the
liberty to use common definitions and terms in his ponencia without the correct attribution.

In the original draft of this concurring opinion that I circulated among the members of the Court, I
mentioned an article published in 2007 that Justice Sereno wrote with two others entitled Justice and
the Cost of Doing Business.6 I found that a portion of this article appeared to have been reproduced
without attribution from a 2005 publication, the Asian Development Bank Country Governance
Assessment (Philippines) 2005.7 Justice Sereno has since explained to my satisfaction that such
portion came from the three co-authors’ earlier 2001 report submitted to the World Bank (WB). I am
dropping it as a case of omission of attribution.

Parenthetically, however, in the academic model, "dual and overlapping submissions" is a thesis
writer’s sin. It simply means that the same academic work is submitted to gain credit for more than
one academic course.8 In the publishing world, while not prohibited across the board, law journals
and reviews frown upon authors who submit manuscripts which have been previously published
elsewhere, since the purpose of publication is the circulation and distribution of original scholarship
and the practice would permit the author to be credited twice for the same work.

Notably, from the papers she furnished the members of the Court, it would seem that the WB Danish
Trust Fund commissioned and paid for the 2001 study that Justice Sereno and her co-authors
undertook. Indeed, the cover page of the WB paper she also provided shows that it was part of the
"Document of the World Bank." I would assume, however, that Justice Sereno obtained WB
authorization for the subsequent publication of the report in 2007.

Next, in her memorandum for petitioners-intervenors Franklin M. Drilon and Adel A. Tamano in
Province of North Cotabato, et al. v. Government of the Republic of the Philippines Peace and Panel
on Ancestral Domain, et al.,9 Justice Sereno lifted a famous phrase from the United States’ case of
Baker v. Carr, 169 U.S. 180, without making attribution to her source.

J. Sereno Original Work – Baker v. Carr

Second, there is no lack of a Prominent on the surface of any case held to

judicially discoverable and involve a political question is found a textually
manageable standard for resolving demonstrable constitutional commitment of the
 the question, nor impossibility of
deciding the question without an
initial policy determination of a kind
clearly for non-judicial discretion.
issue to a coordinate political department; or a
lack of judicially discoverable and manageable
standards for resolving it; or the impossibility of
deciding without an initial policy determination of
a kind clearly for non-judicial discretion x x x

[Baker v. Carr, 169 U.S. 186]

Justice Sereno explains that, since she earlier cited Baker v. Carr in her memorandum, it would be
utterly pointless to require her to repeat her citation as often as excerpts from the case appear down
the line. It is not quite pointless because one who copies from the work of another has an obligation,
she insists in her dissent, to make an attribution to his source. Otherwise, a writer can simply say at
the start of his article that he is copying from a list of named cases and it would be up to the reader
to guess where the copied portions are located in that article. An explanation like this from an
academician is disheartening.

In another article, Uncertainties Beyond The Horizon: The Metamorphosis of the WTO Investment
Framework In The Philippine Setting,10 Justice Sereno also copied from the World Trade
Organization fact sheet on line (prepared by the United States Department of Agriculture) without
using quotation marks, and made the material appear to be her own original analysis. Thus:

J. Sereno Original Work – WTO Factsheet

The World Trade Organization The World Trade Organization (WTO),

(WTO) was established on January
1, 1995. It is a multilateral institution
charged with administering rules for
trade among member countries. The
WTO functions as the principal
international body concerned with
multilateral negotiations on the
reduction of trade barriers and other
measures that distort competition.
The WTO also serves as a platform
for countries to raise their concerns
regarding the trade policies of their
trading partners. The basic aim of
the WTO is to liberalize world trade
and place it on a secure basis,
thereby contributing to economic
growth and development.
established on January 1, 1995, is a multilateral
institution charged with administering rules for
trade among member countries. x x x
The WTO functions as the principal international
body concerned with multilateral negotiations on
the reduction of trade barriers and other
measures that distort competition. The WTO also
serves as a platform for countries to raise their
concerns regarding the trade policies of their
trading partners. The basic aim of the WTO is to
liberalize world trade and place it on a secure
basis, thereby contributing to economic growth
and development.
[WTO FACTSHEET http://www.fas.usda.
gov/info/factsheets/wto.html (last accessed
February 13, 2008)]

Here again, Justice Sereno ignores her unbendable rule that one commits plagiarism by his "[f]ailure
to use quotation marks to indicate that the entire paragraph in the body of the decision…was not the
ponente’s original paragraph, but was lifted verbatim from [another’s] work."

In his book entitled Economic Analysis of Law (2nd edition, 1977), Judge Richard A. Posner wrote:
xxx Hence, settlement negotiations will fail, and litigation ensue, only if the minimum price that the
plaintiff is willing to accept in compromise of his claim is greater than the maximum price the
defendant is willing to pay in satisfaction of that claim. (At p. 435)

Justice Sereno copied the above verbatim in her article entitled Lawyers’ Behavior and Judicial
Decision-Making11published in the Philippine Law Journal, without quotation marks or attribution to
Judge Posner. Thus, she wrote:

xxx [S]ettlement negotiations will fail and litigation will ensue if the minimum price that plaintiff is
willing to accept in compromise of his claim is greater than the maximum price that the defendant is
willing to pay in satisfaction of that claim. (At page 483)

In other sections of the same article that Justice Sereno wrote, she either copied verbatim from
Judge Posner or mimicked his ideas without attributing these to him. Thus:

Judge Posner wrote --

A somewhat more plausible case can be made that judges might slant their decisions in favour of
powerful interest groups in order to increase the prospects of promotion to higher office, judicial or
otherwise. xxx (At p. 416)

Justice Sereno mimicked --

The third is that the judge maximizes the prospects of his promotion to a higher office by slanting his
decisions in favor of powerful interest groups. (page 489)

Judge Posner wrote --

Presumably judges, like the rest of us, seek to maximize a utility function that includes both
monetary and non-monetary elements xxx. (At p. 415)

Justice Sereno mimicked --

In understanding judicial behaviour we have to assume that judges like all economic actors
maximize a utility function. This function in all probability includes material as well as non-material
factors. xxx (At page 489)

Judge Posner wrote --

[T]he rules of the judicial process have been carefully designed both to prevent the judge from
receiving a monetary payoff from deciding a particular case one way or the other and to minimize the
influence of politically effective interest groups in his decisions. [At p. 415]

Justice Sereno mimicked --

The first is that the American judicial system have rules designed to minimize the possibilities of a
judge maximizing his financial interest by receiving a bribe from a litigant or from acceding to a
politically powerful interest group by making the rules work in such a manner as to create
disincentives for the judge ruling in such a manner (page 489)

Judge Posner wrote --

It is often argued, for example, that the judge who owns land will decide in favor of landowners, the
judge who walks to work will be in favour of pedestrians. Posner, 415]

Justice Sereno mimicked --

The second proceeding from the first is that the judge maximizes the interest of the group to which
he belongs. If he belongs to the landowning class he will generally favor landowners and if he walks
to work, he will generally favor pedestrians. (page 489)

Judge Posner wrote --

[J]udges seek to impose their preferences, tastes, values, etc. on society. [Posner, 416]

Justice Sereno mimicked--

The last is that judges maximize their influence on society by imposing their values, tastes and
preferences thereon. (page 489)

Using the severe standards she sets for Justice Del Castillo in Vinuya, i.e., "objective existence of
plagiarism," I am afraid that any explanation of good faith or lack of malicious intent on Justice
Sereno’s part in copying without proper attribution from the work of Judge Posner would not be
acceptable.

Still I can concede that Justice Sereno may not have intended to plagiarize the work of others even if
she copied verbatim from them without proper attribution or quotation marks. Her above articles
were, taken as whole, essentially hers. I regret, however, that since she wrote them as an
academician bound by the high standards that she and the University of the Philippines where she
taught espouse, she may have failed, borrowing her own phrase, to set the correct "educative and
moral directional value" for the young.

Justice Del Castillo, who did not write as an academician but as a judge, is at least entitled to the
liberties granted judges in writing decisions.

I vote to DENY the motion for reconsideration filed in this case.

ROBERTO A. ABAD
Associate Justice

Footnotes

1 Section 2, Article XI, 1987 Constitution of the Philippines.

2 Section 3 (7), id.

3 Section 6, Article VIII, 1987 Constitution of the Philippines.

4Sereno, Toward the Formulation of a Philippine Position in Resolving Trade and Investment
Disputes in APEC, Philippine APEC Study Center Network (PASCN) Discussion Paper No.
2001-15 (2001). [available online at http://pascn.pids.gov.ph/DiscList/d01/s01-15.pdf]

5Harvey writes that "[w]ords you use verbatim from a source must be put in quotation marks,
even if you use only two or three words; it’s not enough simply to cite." Harvey, Writing with
Sources: A Guide for Harvard Students 10 (2008).

6Ma Lourdes A. Sereno, Emmanuel S. De Dios, and Joseph J. Capuno, Justice and the
Cost of Doing Business: The Philippines (2007) published by the Philippine Institute for
Development Studies.

online at http://www.econ.upd.ude.ph/respub/dp/pdf/DP2007-11.pdf or

http://publications.pids.gov.ph/details.phtml?pid=4180

7 At p. 103.

8 The Harvard Plagiarism Policy states:

It is the expectation of every course that all work submitted to it will have been done
solely for that course. If the same or similar work is to be submitted to any other
course, the prior written permission of the instructor must be obtained. If the same or
similar work is to be submitted to more than one course during the same term, the
prior written permission of all instructors involved must be obtained. A student
submits the same or similar work to more than one course without such prior
permission is subject to disciplinary action, and ordinarily will be required to withdraw
from the College. (available online at
http://isites.harvard.edu/icb/icb.do?keyword=k70847&pageid=icb.page355322)

9 G.R. Nos. 183591, 183752, 183893, 183951, September 18, 2008.

10Sereno, Uncertainties Beyond The Horizon: The Metamorphosis Of The WTO Investment
Framework In The Philippine Setting, 52 UST LAW REVIEW 259 (2007-2008). Available
online at http:// ustlawreview.com/pdf/vol.LII/Uncertainties_ Beyond_the_Horizon.pdf

11Sereno, Lawyer’s Behavior and Judicial Decision-Making, 70 Phil. L. J. 472-492 (vol 4,

June 1996) [available online at http://law.upd.edu.ph/plj/ images/files/PLJ%20volume%
2070/PLJ%20 volume%2070%20number %204%20-02-%20Ma.%20Lourdes%20A.
%20Sereno%20-%20Lawyers%20 Behavior.pdf]