MIRPURI vs. CA G.R. No.

114508, November 19, 1999 Thursday, January 29, 2009 Posted by Coffeeholic Writes Labels: Case Digests, Commercial Law

substantial allegations that raised new issues and necessarily gave respondents a new cause of action.

Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to the second application. Facts: In 1970, Escobar filed an application with the oppose Bureau of Patents for the registration of the trademark Barbizon for use in horsiers and ladies undergarments It is also to be noted that the oppositions in the first and (IPC No. 686). Private respondent reported Barbizon second cases are based on different laws. Causes of Corporation, a corporation organized and doing action which are distinct and independent from each business under the laws of New York, USA, opposed the other, although out of the same contract, transaction, or application. It was alleged that its trademark is state of facts, may be sued on separately, recovery on confusingly similar with that of Escobar and that the one being no bar to subsequent actions on others. The registration of the said trademark will cause damage to mere fact that the same relief is sought in the its business reputation and goodwill. In 1974, the subsequent action will not render the judgment in the Director of Patents gave due course to the application. prior action operating as res judicata, such as where the Escobar later assigned all his rights and interest over the actions are based on different statutes. trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law. Due to Q. Cerveza Negra means Black Beer in Spanish, can it this failure, the Bureau cancelled Escobars certificate of be registered? registration. In 1981, Escobar and petitioner separately A. Yes, it has acquired secondary meaning filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed Arce Sons v. Selecta again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 Selecta Biscuit filed a petition for the registration of the bis of the Paris Convention, EO 913 and the two word Selecta as trademark to be used on its bakery Memoranda of the Minister of Trade and Industry and (3) products. Arce filed an opposition saying that it has that its use on the same class of goods amounts to a continuously used that word in its products. It used this violation of the Trademark Law and Art. 189 of the RPC. on its milk products and as the name of a bakery. Petitioner raised the defense of Res Judicata. Director granted trademark because the word as used by Arce points only to the place of business or location Issue: One of the requisites of res judicata is identical of its restaurant. causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action? Held: Arce has made use of Selecta not only as a tradename, indicative of the location of the restaurant but also as a trademark to indicate the goods it offers for Held: No. The issue of ownership of the trademark was sale to the public. The word Selecta is an ordinary or not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark common word but once adopted or coined in connection in the US and other countries, and the international with ones business as an emblem or as a badge of recognition of the trademark established by extensive authenticity, it may acquire a secondary meaning as to use and advertisement of respondents products for over be exclusively associated with its products and 40 years here and abroad. These are different from the business. issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 Q. Is premium a proper mark? but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents A. No. It is descriptive. claims originator of the word and symbol Barbizon, as the first and registered user of the mark attached to its Ana Ang v. Toribio Teodoro products which have been sold and advertised would arise for a considerable number of years prior to Teodoro used Ang Tibay for slippers and shoes since petitioners first application. Indeed, these are 1910. Ang registered Ang Tibay for shorts and shirts

on 1932. Teodoro filed a complaint to cancel the registration of the TM of Ana Ang. He claims that Ana Ang has not proven that she spent money for advertising Ang Tibay shirts and pants. Ana Ang claims that the term is descriptive and that there is no secondary meaning attached to the term, and that the goods are different and are not likely to mislead the general public as to their origin. Held: Ang Tibay is not a descriptive term but a fanciful or coined phrase which may be legally appropriated. Ang Tibay is an exclamation denoting admiration of strength, and can be translated to mean How strong! Ang Tibay has also acquired a secondary meaning because the exclusive use of the phrase for Teodoros product has allowed it to acquire a proprietary connotation. As to the argument that the goods are not similar, although two noncompeting articles may be classified under two different classes by the Patent office, nevertheless, if simultaneous use on them would be likely to cause confusion as to the source or origin, then there can be unfair competition. Also, it would prevent the natural expansion of his business and it would cause the business to be confused with the second user. Q. Is Ang Tibay descriptive? A. Court held that it is a fanciful or coined term. The Court says that the proper descriptive term is matibay and not Ang Tibay. Q. Is grammar important? A. No (?) Q. Is the use of famous marks on unrelated goods permissible? A. Although they are noncompeting, if simultaneous use will cause confusion, it will not be permissible. Q. What are the kinds of words? A. The words are classified to: 1. common words a. generic never capable of registration b. descriptive there is immediate association - not registrable except when there is secondary meaning, or used with other words c. suggestive requires imegination/deduction 2. fanciful/coined - e.g. Kodak 3. arbitrary - e.g. Apple Computer

ANA L. ANG vs. TORIBIO TEODORO G.R. No. 48226. December 14, 194 Facts: Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a tradename, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933. Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. Teodoro filed a complaint against Ang RTC rendered decision in faor of Ang on the grounds that the two trade-marks are dissimilar and are used on different and non-competing goods CA reversed the RTC decision and ruled that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles on which the two trademarks are used are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. 666. Issue/Answer: WON the trademark and tradename Ang Tibay is a descriptive word which will bar its registration. / negative Ratio Decidendi: The phrase "Ang Tibay" is an exclamation denoting admiration of strength or durability. The phrase "ang tibay" is never used adjectively to define or describe an object. "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. Issue on who is the lawful registrant: Teodoro Doctrine of secondary meaning: This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase

has come to mean that the article was his product. the same trade-mark, used on unlike goods, could not cause confusion in trade and that, therefore, there could be no objection to the use and registration of a well-known mark by a third party for a different class of goods. Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. As observed in another case, 3 the field from which a person may select a trade-mark is practically unlimited, and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival. CRISANTA Y. GABRIEL vs. DR. JOSE R. PEREZ G.R. No. L-24075. January 31, 1974 Facts: Dr. Jose R. Perez filed with the Patents Office on February 23, 1961 an application for registration of the trademark "WONDER" in the Supplemental Register. On October 19, 1962, petitioner Crisanta Y. Gabriel claiming that he had been using the subject mark since 1959 filed with the Patent Office a petition for cancellation of the trademark "WONDER from the supplemental register alleging that the registrant was not entitled to register the said trademark at the time of his application for registration In support of her petition, she further alleged the written contract between her and the registrant (respondent) wherein,

according to her, the latter has recognized her right of use and ownership of said trademark; and that the labels submitted by the registrant are the very containers bearing the trademark "WONDER" which are owned by her and which she has been exclusively and continuously using in commerce after Dr. Perz had perfected his research and obtained a certificate of label, he made an agreement (January, 1959) with a certain company named 'Manserco' for the distribution of his soap. It was then being managed by Mariano S. Yangga who happens to be the brother of the Petitioner Crisanta Y. Gabriel "Because the corporation was allegedly going bankrupt and the members were deserting, the Respondent terminated the agreement in July, 1959, and thereafter he asked the Petitioner to become the distributor of his products Director of Patents rendered his decision denying the petition of Gabriel to cancel the certificate of registration Issue/Answer: WON Gabriel, as a mere distributor have the right to register the subject mark in her own name/ negative Ratio Decidendi: "Because the corporation was allegedly going bankrupt and the members were deserting, the Respondent terminated the agreement in July, 1959, and thereafter he asked the Petitioner to become the distributor of his products Crisanta Y. Gabriel appears to be a mere distributor of the product by contract with the manufacturer, respondent Dr. Jose R. Perez and the same was only for a term. Under Sections 2 and 2-A of the Trademark Law, Republic Act No. 166, as amended, the right to register trademark is based on ownership and a mere distributor of a product bearing a trademark, even if permitted to use said trademark, has no right to and cannot register the said trademark Petitioner urges that the agreement of exclusive distributorship executed by and between her and respondent vested in her the exclusive ownership of the trademark "WONDER". But a scrutiny of the provisions of said contract does not yield any right in favor of petitioner other than that expressly granted to her to be the sole and exclusive distributor of respondent Dr.

Perez' product. the agreement never mentioned transfer of ownership of the trademark. It merely empowers the petitioner as exclusive distributor to own the package and to create a design at her pleasure, but not the right to appropriate unto herself the sole ownership of the trademark so as to entitle her to registration in the Patent Office. The exclusive distributor does not acquire any proprietary interest in the principal's trademark. the trademark "WONDER" has long been identified and associated with the product manufactured and produced by the Dr. Jose R. Perez Cosmetic Laboratory. Petitioner's act in defraying substantial expenses in the promotion of the Respondent's goods and the printing of the packages are the necessary or essential consequences of Paragraph 6 of the agreement because, anyway, those activities are normal in the field of sale and distribution, as it would redound to her own benefit as distributor, and those acts are incumbent upon her to do. UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL MILLING CORPORATION G.R. No. L-28554. February 28, 1983 Facts: On December 11, 1962, respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" to be used in the sale of wheat flour. As the same trademark had been previously registered in favor of Unno, the Chief Trademark Examiner declared an interference proceeding between General Milling's application (Serial No. 9732), as Junior/Party-Applicant, and Unno's registration (Registration No. 9589), as Senior Party-Applicant to determine which party has previously adopted and used the trademark "All Montana. General Milling Corp's contention: alleged that it started using the trademark "All Montana" on August 31, 1955 and subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962. Unno Commercial Enterprise's contention: argued that the same trademark had been registered in its favor on March 8, 1962 asserting that it started using the trademark

on June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm. various shipments, documents, invoices and other correspondence of Centennial Mills, Inc., shipping thousand of bags of wheat flour bearing the trademark "All Montana" were shown by petitioner and maintained that anyone, whether he is only an importer, broker or indentor can appropriate, use and own a particular mark of its own choice although he is not the manufacturer of the goods he deals with. Director of Patents' decision the Junior Party-Applicant is adjudged prior user of the trademark ALL MONTANA, but because it is primarily geographically descriptive, the application is remanded to the Chief Trademark Examiner for proper proceeding before issuance of the certificate of registration. Issue/Answer: WON Unno, as a mere indentor can apply for the registration of the trademark of its principal / negative. Only owners of the trademark can apply for its registration. Ratio Decidendi: The right to register trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. A local importer, however, may make application for the registration of a foreign trademark, trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. The Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's ownership of the trademark "All Montana," showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. and the absolute and registered owner of several trademarks for wheat flour all of which were assigned by it to respondent General Milling

Corporation. Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana wheat flour in the Philippines. Only the owner of a trademark, trade name or service mark may apply for its registration and an importer, broker, indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark. Inasmuch as it was not the owner of the trademark, the Senior Party could not be regarded as having used and adopted it, and had no right to apply for its registration. a mere importer and distributor acquires no rights in the mark used on the imported goods by the foreign exporter in the absence of an assignment of any kind Trademarks used and adopted on goods manufactured or packed in a foreign country in behalf of a domestic importer, broker, or indentor and distributor are presumed to be owned by the manufacturer or packer, unless there is a written agreement clearly showing that ownership vests in the importer, broker, indentor or distributor. ownership of a trademark is not acquired by the mere fact of registration alone. Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right. The Court affirms respondent Director of Patent's decision declaring respondent General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial Enterprises, Under Rule 178 of the Rules of the Patent Office in Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case, such as the interference proceeding at bar. provision in question: Section 2-A of the Trademarks Law (Republic Act 166)

Ong Ai Gui v. Director Ong Ai Gui filed an application for the registration of the tradename, 20th Century Nylon Shirts Factory. E. I. Du Pont filed an opposition on the ground that the word nylon was a name coined by Du Pont as a generic name of a synthetic fabric and is a generic term, the use of which is descriptive and the use would cause confusion in trade. Opposition was dismissed but director asked the word nylon be disclaimed. Ong appeals. Held: The tradename may be registered, but it may not be entitled to exclusive use of the terms shirt factory and nylon because the terms are merely descriptive or general terms, incapable of appropriation by any single individual to the exclusion of others. This is because all persons have an equal right to produce and vend similar articles and they also have the right to describe them properly and to use appropriate language. Q. Can generic terms be appropriated by long use? A. no. Only descriptive words can be appropriated by long use. Q. Xerox is descriptive or generic? A. Seems to be generic, since it is found in the dictionary as a verb. (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; Q. Is a name denoting geographical location registrable as a trademark? A. General rule: Cant be used when 1. It induces public to believe that it is manufactured in a place where it is not really manufactured there, e.g. Champagne is a sparkling wine from a particular city in France; no other wine can be called Champagne. 2. If that place is known for the goods, you cant register, e.g. Batangas is known for its coffee Exception: If that place is not particularly known for products of that kind, e.g. Baguio Oil, Seattles Best (k) shapes

ANDRES ROMERO vs. MAIDEN FORM BRASSIERE CO., INC G.R. No. L-18289. March 31, 1964 Facts: On February 12, 1957, respondent company, a foreign corporation, filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. 166) of the trademark 'Adagio" for the Brassieres manufactured by it. In its application, respondent company alleged that said trademark was first used by it in the United States on October 26, 1937, and in the Philippines on August 31, 1946 Director, on August 13, 1957, approved for publication in the Official Gazette said trademark of respondent company, in accordance with Section 7 of Republic Act No. 166 (Trademark Law), having found, inter alia, that said trademark is "a fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its product; that it is neither a surname nor a geographical term, nor any that comes within the purview of Section 4 of Republic Act No. 166; petitioner filed with respondent Director a petition for cancellation of said trademark, on the grounds that it is a common descriptive name of an article or substance on which the patent has expired Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is, therefore, unregistrable. It is urged that said trademark had been used by local brassiere manufacturers since 1948, without objection on the part of respondent company. Director of Patents (of January 17, 1961) dismissed Romero's petition for cancellation of the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere Co., Inc. Issue/Answer: WON Adagio is a descriptive word incapable of registration / negative Ratio Decidendi: The evidence shows that the trademark "Adagio" is a musical term, which means slowly or in an easy manner, and was used as a trademark by the owners thereof (the Rosenthals of Maiden Form Co., New York) because they are musically inclined. Being a musical term, it is used in an

arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent company. It also appears that respondent company has, likewise, adopted other musical terms such as "Etude", "Chansonette", "Prelude", "Over-ture", and "Concerto", to identify, as a trademark, the different styles or types of its brassieres. On the other hand, respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. On abandonment of trademark by private defendant: "To work an abandonment, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even compulsory. There must be a thoroughgoing discontinuance of any trade-mark use of the mark in question" "Non-use because of legal restrictions is not evidence of an intent to abandon. respondent Director of Patents did not err in dismissing the present petition for cancellation of the registered trademark of appellee company, and the decision appealed from is therefore hereby affirmed, with costs against the appellant. Provisions in question: Section 2 of Republic Act No. 166 as amended by Section 1 of Republic Act 865 PHILIPPINE REFINING CO., INC.vs. NG SAM G.R. No. L-26676. July 30, 1982 Facts: Private respondent filed with the Philippine Patent Office an application for registration of the trademark "CAMIA" for his product, ham, which falls under Class 47 (Foods and Ingredients of Food). Petitioner opposed the application claiming that it first used said trademark on his products: lard, butter, cooking oil, abrasive detergents, polishing materials and soap of all kinds, some of which are likewise classified under Class 47. The trademark "CAMIA" was first used in the Philippines by petitioner on its products in 1922 and registered the same in 1949 On November 25, 1960, respondent Ng Sam, a Chinese citizen residing in Iloilo City, filed an application with the Philippine Patent Office for registration of the identical trademark "CAMIA" for his product, ham, which likewise falls under Class 47. Alleged

date of first use of the trademark by respondent was on February 10, 1959. Director of Patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam.finding that `the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin. Issue/Answer: WON the product of respondent Ng Sam, which is ham, and those of petitioner consisting of lard, butter, cooking oil and soap are so related that the use of the same trademark "CAMIA'' on said goods would likely result in confusion as to their source or origin. / negative Ratio Decidendi: the right to a trademark is a limited one, in the sense that others may use the same mark on unrelated goods. the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description. where no confusion is likely to arise, as in this case, registration of a similar or even identical mark may be allowed. The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. A trademark is designed to identify the user. But it should be so distinctive and sufficiently original as to enable those who come into contact with it to recognize instantly the identity of the user. "It must be affirmative and definite, significant and distinctive, capable to indicate origin. if a mark is so commonplace that it cannot be readily distinguished from others, then it is apparent that it cannot identify a particular business; and he who first adopted it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived." While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food), this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. Opposer's products are ordinary day-to-day household items whereas ham is not

necessarily so. Thus, the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin." the business of the parties are non-competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion, much less cause damage to petitioner. provision: Section 4(d) of Trademark law "a mark which consists of or comprises a mark or tradename which so resembles a mark or tradename registered in the Philippines or a mark or tradename previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business services of the applicant, to cause confusion or mistake or to deceive purchasers." Dermaline v Myra Dermaline applied to the IPO to register the Dermaline Dermaline, Inc trademark in international class 33 for various skin treatments. Myra, the registrant of Dermalin for pharmaceutical products in international class 5, opposed the application The Supreme Court sustained the opposition. Applying the dominancy test, the court found that, while the two marks are presented differently, the likelihood of confusion is still apparent, as both marks are spelled in almost the same way and pronounced in the same manner in three syllables. In addition, although the products of each of the contending marks belong to separate and different classes, this does not remove the likelihood that the purchasing public will associate bot marks with each other, especially considering that the covered classes similarly pertain to treatments for the skin. As in the Nestle case, the Supreme Court stated that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. Prosource internation v Horphag Horphag discovered that prosource was distributin a food supplement bearing the pco-genols mark, similar to one sold by zuellig pharma corporation bearing horphags pycnogenol mark. This prompted horphag to demand that prosource cease and desist from using pco-genols

Without notifying horphag, prosource discontinued the Manly Sportswear v. Dadodette Enterprises use of pco-genols and withdrew the products bearing the Where there is sufficient proof that the copyrighted pco-genols mark. It alswo changed its mark romp coproducts are not original creations but are readily genols to pco-plus. available in the market under various brands, validity Horphag filed a tgrademark infringement complaint and originality will not be presumed and the trial court against proscource, demanding that it cease and desist may properly quash the issued warrant for lack of from using the brand pco-genols for being confusingly probable cause. similar to its trademark pycnogenol. La Chemise Lacoste vs. Fernandez The trial court decided in favour of horphag. Pycnogenol GR 63796-97, 21 May 1984; First Division, Gutierrez Jr. and pco-genols have the same suffix which is genol, (J) which appears to be merely descriptive and so open for trademark registration by combining it with other words. Facts: La chemise Lacoste is a French corporation and The marks when read, sound confusingly similar, the actual owner of the trademarks Lacoste, Chemise Lacoste, Crocodile Device and a composite mark especially since they both refer to food supplements. consisting of the word Lacoste and a representation of Prosources liability was not limited by withdrawing a crocodile/alligator, used on clothings and other goods products bearing the pco-genols mark for the market, sold in many parts of the world and which has been because from 1996 until june 2000, it infringed marketed in the Philippines (notably by Rustans) since horphags product by using the trademark. 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark Chemise Both the Supreme Court and the Court of Appeals Lacoste and Q Crocodile Device both in the affirmed the lower courts decision, stating that the supplemental and Principal Registry. In 1980, La likelihood of confusion is the gravamen of trademark Chemise Lacoste SA filed for the registration of the infringement. Crocodile device and Lacoste. Games and Garments (Gobindram Hemandas, assignee of Norvy A. Abyadang v. Berris Agricultural Co. Hemandas Q.Co.) opposed the registration of Lacoste. (Appeal No. 14-06-13), 20 July 2007 In this case, the contending marks are Berris Agricultural Co.s (Berris, for brevity) D-10 80 WP and Norvy Abyadangs NS D-10 PLUS, both covering fungicides. Berris claims that the element D-10 is the dominant feature of the contending marks. Abyadang, on the other hand, claims that he is entitled to the registration of the mark NS D-10 PLUS as he was able to secure a registration for the same from the Fertilizer and Pesticide Authority (FPA, for brevity) prior to Berris. In sustaining the Berris claims, the IPO-ODG applied the dominancy test. After examining the contending marks, the IPOODG ruled that the element D-10 is undeniably the dominant features of both marks; as such, Abyadangs mark NS D-10 PLUS is confusingly similar to Berris D-10 80WP mark. Abyadangs FPA registration for his mark is of no moment while he is the first to register his brand with the FPA, the FPA is another administrative agency the function of which is to regulate the fertilizer industry. FPAs mandate does not include the determination of rightful ownership of a trademark, which function properly belongs to the IPO. In 1983, La Chemise Lacoste filed with the NBI a lettercomplaint alleging acts of unfair competition committed by Hemandas and requesting the agencys assistance. A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed motion to quash the warrants, which the court granted. The search warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari. Issue: Whether the proceedings before the patent office is a prejudicial question that need to be resolved before the criminal action for unfair competition may be pursued. Held: No. The proceedings pending before the Patent Office do not partake of the nature of a prejudicial question which must first be definitely resolved. The case which suspends the criminal action must be a civil case, not a mere administrative case, which is determinative of the innocence or guilt of the accused. The issue whether a trademark used is different from anothers trademark is a matter of defense and will be better resolved in the criminal proceedings before a

court of justice instead of raising it as a preliminary matter in an administrative proceeding. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964, Hemandas cannot be allowed to continue the trademark Lacoste for the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce. Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register. It must be noted that one may be declared an unfair competitor even if his competing trademark is registered. La Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which include Lacoste. FILSCAP v. Tan [L-36402, Mar. 16, 1987] The principal issues in this case are whether or not the playing and singing of musical compositions which have been copyrighted under the provisions of the Copyright Law inside the establishment of the defendant-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines; and assuming that there were indeed public performances for profit, whether or not appellee can be held liable therefor. In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the food and drinks and apparently not for listening to the music. As found by the trial court, the music provided is for the purpose of entertaining and amusing the customers in order to make the establishment more attractive and desirable. It will be noted that for the playing and singing the musical compositions involved, the combo was paid as independent contractors by the appellant. It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of additional income produced by the bigger volume of business which the entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee's restaurant constituted performance for profit contemplated by the Copyright Law. Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested musical compositions

waived their right in favor of the general public when they allowed their intellectual creations to become property of the public domain before applying for the corresponding copyrights for the same is correct. Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted. Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law. Habana vs. Robles G.R. No. 131522, July 19, 1999 Facts Habana is the author of the copyrighted book entitled College English for Today (CET). Robles and GoodWill is the author and publisher of the book entitled Developing English Proficiency (DEP). When Habana et al. try to revise their work they encountered by chance that the work of Robles (DEP) is similar of the contents, scheme of presentation, illustrations and illustrative examples in their own book. After an itemized examination and comparison of the two books (CET and DEP), Habana found that several pages of the Robles book are similar, if not all together a copy of Habanas book, which is a case of plagiarism and copyright infringement. Habana then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of Robles works. However, Robles ignored the demands, hence, Habana et al. filed with the Regional Trial Court, Makati, a complaint for Infringement and/or unfair competition with damages against private respondents. Issues Whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, Robles committed no copyright infringement? Held No, Robles still committed copyright infringement. Robles act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners copyrights. In cases of infringement, copying alone is not what is prohibited. The copying must produce an injurious effect. Here, the injury consists in that Robles lifted from Habanas book materials that were the result of the latters research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use and did not acknowledge Habana as her source.

Hence, there is a clear case of appropriation of copyrighted work for her benefit that Robles committed. Habanas work as authors is the product of their long and assiduous research and for another to represent it as her own is injury enough. In copyrighting books the purpose is to give protection to the intellectual product of an author. This is precisely what the law on copyright protected, under Section 184.1 (b). Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author, if appearing on the work, are mentioned. Notes When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated. In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. Piracy A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. (c) Work of Architecture Sec. 186 Section 186. Work of Architecture. - Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original: Provided, That the copyright in any such work shall not include the right to control the reconstruction or

rehabilitation in the same style as the original of a building to which that copyright relates. (n) (d) Reproduction of Published Work Sec. 187- 187.2 Section 187. Reproduction of Published Work. - 187.1. Notwithstanding the provision of Section 177, and subject to the provisions of Subsection 187.2, the private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for

research and private study, shall be permitted, without the authorization of the owner of copyright in the work. 187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction of: (a) A work of architecture in the form of building or other construction; (b) An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means; (c) A compilation of data and other materials; (d) A computer program except as provided in Section 189; and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. (n) (e) Reprographic Reproduction by Libraries Sec. 188 Section 188. Reprographic Reproduction by Libraries. - 188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction: (a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form; (b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and (c) Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher.

188.2. Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock: Provided, That every library which, by law, is entitled to receive copies of a printed work, shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. (Sec. 13, P.D. 49a) (f) Reproduction of Computer Program Sec. 189 Section 189. Reproduction of Computer Program. - 189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a computer program, by the lawful owner of that computer program: Provided, That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and (b) Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable. 189.2. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section, and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. 189.3. This provision shall be without prejudice to the application of Section 185 whenever appropriate. (n) (g) Importation for Personal Purposes Sec. 190 Section 190. Importation for Personal Purposes. - 190.1. Notwithstanding the provision of Subsection 177.6, but subject to

the limitation under the Subsection 185.2, the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances: (a) When copies of the work are not available in the Philippines and: (i) Not more than one (1) copy at one time is imported for strictly individual use only; or (ii) The importation is by authority of and for the use of the Philippine Government; or (iii) The importation, consisting of not more than three (3) such copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines. (b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, That such copies do not exceed three (3). 190.2. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act, and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor's right of action. 190.3. Subject to the approval of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. (Sec. 30, P.D. No. 49) (9) Registration and Deposit with National Library and Supreme Court Library

Sec. 191; 192; 227; 228 CHAPTER IX DEPOSIT AND NOTICE Section 191. Registration and Deposit with National Library and the Supreme Court Library. - After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of the National Library and the Supreme Court Library, within three (3) weeks, be registered and deposited with it, by personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a) Section 192. Notice of Copyright. - Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creator's death, the year of such death. (Sec. 27, P.D. No. 49a)