PHILIPPINE SUMMARY REPORT

(to the APAA Trademark Committee) From the middle of the year 2006 up to September 2007, there has been no significant change or development in the laws, rules and regulations on Trademarks, Tradename and Service Name in the Philippines, and in the legal practice related thereto. However, in the area of jurisprudence, there are five (5) noteworthy cases which are accordingly summarized hereunder for your guidance: (1) McDonalds Corporation vs. MacJoy Fastfood Corporation G.R. No. 166115 2 February 2007 1. In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no set of 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. 2. Applying the dominancy test, the Supreme Court found that petitioners and respondents marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. Both marks use the M design logo and the prefixes Mc and /or Mac as dominant features. The first letter M in both marks puts emphasis on the prefixes Mc and/or Mac by the similar way in which they are depicted. It is the prefix Mc, an abbreviation of Mac, which visually and aurally catches the attention of the consuming public. The word MCJOY attracts attention the same way as MCDONALDS, MacFries, McSpaghetti, McDo, Big Mac and the rest of the McDonaldss marks which all use the prefixes Mc and/or Mac. Most importantly, both trademarks are used in the sale of fastfood products. (2) Skechers U.S.A. vs. Inter Pacific Industrial Trading Corp. G.R. No. 164321 30 November 2006 The court was acting reasonably when it went into a discussion of whether or not there was trademark infringement, this is so because in the determination of the existence of probable cause for the issuance or quashal of a warrant, it is inevitable that the court may touch on issues properly threshed out in a regular proceeding. This finding that there was no colorable imitation of petitioners trademark is merely preliminary and did

Philippine Summary Report

not finally determine the merits of the possible criminal proceedings that may be instituted by petitioner. (3) Sony Computer Entertainment, Inc. vs. Supergreen, Inc. G.R. NO. 161823 22 MARCH 2007 Respondents imitation of the general appearance of petitioners goods was done allegedly in Cavite. It sold the goods allegedly in Mandaluyong City, Metro Manila. The alleged acts would constitute a transitory or continuing offense of unfair competition. Thus, clearly, under the law, petitioner may apply for a search warrant in any court where any element of the alleged offense was committed, including any of the courts within the National Capital Region (Metro Manila). (4) Manolo P. Samson vs. Caterpillar, Inc. G.R. 169882 12 September 2007 The withdrawal of the criminal informations filed against petitioner, predicated on the quashal by the court of the search warrants, was a manifest error. The earlier finding of probable cause against petitioner for trademark infringement by the investigating officer was not affected by the quashal of the warrants since independent evidence gathered by the National Bureau of Investigation from the test-buy operations it conducted is sufficient to support such finding. (5) Summerville General Merchandising Co. vs. Hon. Court of Appeals , Hon. Judge Antonio Eugenio, Vhang Yu Shui and Juliet Lopez G.R. No. 158767 26 June 2007 Petitioner does not dispute that the design and/or mark of such Crown brand playing cards is owned by private respondents. In fact, there is no allegation that the design and/or mark of such Crown brand playing cards is a reproduction, counterfeit, copy, or colorable imitation of another registered mark legally owned by another; hence, no crime of trademark infringement appears to have been committed or perpetrated to warrant the inference that the Crown brand playing cards are subject of the offense as contemplated by the Rules of Court. All the more telling is the contention of petitioner that it is the plastic container/case and its marking that bear the reproduction, counterfeit, copy, or colorable imitation of its registered mark. In other words, it is the design of the plastic container/case that is alleged to have been utilized by private respondents to deceive the public into believing that their Crown brand playing cards are the same as those manufactured by petitioner.