Doctrines Intellectual Property Law Cases

Valdez, Maia Chiara Halmen Reina A. IPL Atty. Clara

Functions of Trademarks

Philips Export v. CA

Corporation's right to use its corporate and trade name is a property right, a right in rem, which it may assert and
protect against the world in the same manner as it may protect its tangible property, real or personal, against trespass
or conversion. It is regarded, to a certain extent, as a property right and one which cannot be impaired or defeated by
subsequent appropriation by another corporation in the same field.

Lyceum of the Philippines v. CA

Petitioner institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate
name and that other institutions may use "Lyceum" as part of their corporate names. To determine whether a given
corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name, it is not
enough to ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate corporate names in their
entirety and when the name of petitioner is juxtaposed with the names of private respondents, they are not reasonably
regarded as "identical" or "confusingly or deceptively similar" with each other.

Arce Sons and Company v. Selecta Biscuit Company

To allow the defendant here to use the word "Selecta" in spite of the fact that this word has already been adopted and
exploited by Ramon Arce and by his family thru the organization of Arce Sons and Company, for the maintenance of its
goodwill, for which said plaintiff and its predecessor have spent time, effort and fortune, is to permit business pirates
and buccaneers to appropriate for themselves and to their profit and advantage the trade names and trade marks of
well established merchants with all their attendant good will and commercial benefit. Certainly, this cannot be allowed,
and it becomes the duty of the court to protect the legitimate owners of said trade-names and trade-marks, for under
the law, the same constitute one kind of property right entitled to the necessary legal protection.

Ownership of Trademarks

Gabriel v. Perez and Heirs of Gabriel v. CA

The purpose of the law protecting a trademark cannot be overemphasized. They are to point out distinctly the origin of
ownership of the article to which it is affixed, to secure to him, who has been instrumental in bringing into market a
superior article of merchandise, the fruit of his industry and skill, and to prevent fraud and imposition.

Unno Commercial Enterprises v. General Milling Corp.

Thus, petitioner's contention that it is the owner of the mark "All Montana" because of its certificate of registration
issued by the Director of Patents, must fail, since 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. 10 Registration does not perfect a
trademark right.

Test of Registrability

Ang v. Teodoro
Even if 'AngTibay', therefore, were not capable of exclusive appropriation as a trade-mark, the application of the
doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondent's long and
exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and 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 article was his product.

Bata Industries v. CA

Any slight goodwill generated by the Czechoslovakian product during the Commonwealth years was completely
abandoned and lost in the more than 35 years that have passed since the liberation of Manila from the Japanese troops.

Emerald Garment v. CA

The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no
dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in
trade or business in the Philippines the subject mark; it did not present proof to invest it with exclusive, continuous
adoption of the trademark which should consist among others, of considerable sales since its first use.

Asia Brewery v. CA

In this case, the names of the competing products are clearly different and their respective sources are prominently
printed on the label and on other parts of the bottle, mere similarity in the shape and size of the container and label,
does not constitute unfair competition. The steinie bottle is a standard bottle for beer and is universally used. SMC did
not invent it nor patent it.

Ong Ai Gui v. Director

A word or a combination of words which is merely descriptive of an article of trade, or of its composition, characteristics,
or qualities, cannot be appropriated and protected as a trademark to the exclusion of its use by others.

Lim Hoa v. Director

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.

Marvex Commercial v. Petra Hawpia

"SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of sound is sufficient ground for this Court
to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties.

Sta. Ana v. Maliwat

Whether or not shirts and shoes have the same descriptive properties, or whether or not it is the prevailing practice or
the tendency of tailors and haberdashers to expand their business into shoes making, are not controlling. The meat of
the matter is the likelihood of confusion, mistake or deception upon purchasers of the goods of the junior user of the
mark and the goods manufactured by the previous user. Here, the resemblance or similarity of the mark FLORMANN and
the name FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior adopter,
respondent Maliwat, has the better right to the use of the mark.

Acoje Mining v. DOP

The determinative factor in a contest involving registration of trade mark is not whether the challenging mark would
actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion
or mistake on the part of the buying public. In short, to constitute an infringement of an existing trade-mark patent and
warrant a denial of an application for registration, the law does not require that the competing trademarks must be so
identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the similarity
between the two labels, is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the
newer brand for it.

Puma Sportschufabriken v. IAC

Puma is an internationally known name; or a well known mark which by reason of IP treaties we acceded to, deserves
protection. The requisites of litis pendentia are also not met, since the inter partes case was within an administrative
case, and the civil case was filed in the RTC.

Wolverine Worldwide v. CA

Contrary to the petitioner's assertion, the judgment in Inter Partes Cases Nos. 700, 701, and 709 had long since become
final and executory. That Sec. 17 of Republic Act 166, also known as the Trademark Law, allows the cancellation of a
registered trademark is not a valid premise for the petitioner's proposition that a decision granting registration of a
trademark cannot be imbued with the character of absolute finality as is required in res judicata. A judgment or order is
final, as to give it the authority of res judicata, if it can no longer be modified by the court issuing it or by any other
court.

Esso Standard v. CA

There can be no confusing similarity if the goods involved are non-competitive and non-related is the appellate court's
finding that they flow through different channels of trade, thus: "The products of each party move along and are
disposed through different channels of distribution. The (petitioner's) products are distributed principally through
gasoline service and lubrication stations, automotive shops and hardware stores. On the other hand, the (respondent's)
cigarettes are sold in sari-sari stores, grocery stores, and other small distributor outlets. (Respondent's) cigarettes are
even peddled in the streets while (petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oil
and tobacco, as well as between petroleum and cigarettes. Evidently, in kind and nature the products of (respondent)
and of (petitioner) are poles apart.

Sterling Products v. Farbenfabriken Bayer

Defendants' claim is stale; it suffers from the defect of non-use.While it is conceded that FBA's predecessors first
introduced medical products with the BAYER trademarks in the Philippine market, it is equally true that, after World War
I, no definite evidence there is that defendants or their professors traded in the Philippines in medicines with the BAYER
trademarks thereafter. FBA did not seasonably voice its objection. Lack of protest thereto connoted acquiescence. And
this; notwithstanding the fact that the 1923 and 1926 agreements were set aside in the anti-trust suits. Defendants did
use the marks; but it was much later, i.e., in 1958 — and on chemicals and insecticides — not on medicines. FBA only
bestirred itself and challenged plaintiff's right to the trademarks on medicines when this suit was filed.

Amigo Manufacturing v. Cluett Peabody

In the present case, a resort to either the Dominancy Test or the Holistic Test shows that colorable imitation exists
between respondent's "Gold Toe" and petitioner's "Gold Top." A glance at petitioner's mark shows that it definitely has
a lot of similarities and in fact looks like a combination of the trademark and devices that respondent has already
registered; namely, "Gold Toe," the representation of a sock with a magnifying glass, the "Gold Toe" representation and
"linenized." Petitioner cannot therefore ignore the fact that, when compared, most of the features of its trademark are
strikingly similar to those of respondent. In addition, these representations are at the same location, either in the sock
itself or on the label. Petitioner presents no explanation why it chose those representations, considering that these were
the exact symbols used in respondent's marks. Thus, the overall impression created is that the two products are
deceptively and confusingly similar to each other. Clearly, petitioner violated the applicable trademark provisions during
that time.

246 Corp. v. Daway

A mark cannot be registered if it is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect
to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of
the mark in relation to those goods or services would indicate a connection between those goods or services, and the
owner of the registered mark: Provided, further, That the interest of the owner of the registered mark are likely to be
damaged by such use

Capacity to Sue Foreign Entities

General Garments v. DOP

A foreign corporation may file a suit under isolated transaction rule , the purpose of such a suit is to protect its
reputation, corporate name and goodwill which has been established, through the natural development of its trade for a
long period of years, in the doing of which it does not seek to enforce any legal or contract rights arising from, or
growing out of any business which it has transacted in the Philippine Islands.

La Chemise Lacoste v. Fernandez

The purpose of the law protecting a trademark cannot be overemphasized. They are to point out distinctly the origin of
ownership of the article to which it is affixed, to secure to him, who has been instrumental in bringing into market a
superior article of merchandise, the fruit of his industry and skill, and to prevent fraud and imposition.

A Foreign Corporation not doing business in the Philippines, may sue under the isolated transaction rule.

Kabushi Haisha Isetan v. IAC

A foreign corporation may sue under isolated transaction rule, generally if the mark is well know. Kabushi Haisha Isetan
brand is not a well known mark. Also, the Trademark Law is very clear. It requires actual commercial use of the mark
prior to its registration. - There is no dispute that respondent corporation was the first registrant, yet it failed to fully
substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not present proof to
invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales
since its first use.

Philip Morris v. CA

The concept of actual use cannot be dispensed with in infringement cases. Trademark infringement requires- (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.

Protection of Trademarks

Trademark Infringement v. Unfair Competition

Converse Rubber v. Jacinto Rubber

Priority in registration in the Philippines of a trademark is not material in an action for unfair competition as
distinguished from an action for infringement of trademark. The basis of an action for unfair competition is confusing
and misleading similarity in general appearance, not similarity of trademarks.

The Court is not impressed by defendants' good faith in claiming that they have the right to continue manufacturing
"Custombuilt" of Identical design and appearance as "Chuck Taylor". While it is true that the licensing agreement
between plaintiff Converse and defendant did not materialize, the execution of the documents by the defendants
constitute an admission on the part of plaintiff Converse Rubber's property right in design and appearance of "Chuck
Taylor".

Del Monte Corp. v. CA

Application of Holistic Test- To determine whether a trademark has been infringed, we must consider the mark as a
whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of
it.

Bristol Myers Co. v. CA

Application of totality rule. The totality rule states that "the test is not simply to take their words and compare the
spelling and pronunciation of said words. In determining whether two trademarks are confusingly similar, the two marks
in their entirety as they appear in the respective labels must 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 on both labels. (holistic test)

Mc Donalds Corp v. LC Big Mak Burger

Unfair Competition-Any conduct may be said to constitute unfair competition if the effect is to pass off on the public the
goods of one man as the goods of another. The choice of "Big Mak” as tradename by defendant corporation is not
merely for sentimental reasons but was clearly made to take advantage of the reputation, popularity and the
established goodwill of plaintiff McDonald's.

Shangrila v. CA

The infringement case can and should proceed independently from the cancellation case with the Bureau so as to afford
the owner of certificates of registration redress and injunctive writs. In the same light, so must the cancellation case with
the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) continue independently from the infringement
case so as to determine whether a registered mark may ultimately be cancelled. However, the Regional Trial Court, in
granting redress in favor of Developers Group, went further and upheld the validity and preference of the latter's
registration over that of the Shangri-La Group.

Tests of Confusion- Dominancy v. Holistic Test

Societe des Produits Nestle v. CA

Application of Dominancy Test- 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. This can be gleaned from the fact that
Robert Jaworski and Atty. Ric Puno Jr.., the personalities engaged to promote the product, are given the titles Master of
the Game and Master of the Talk Show, respectively. 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.

Etepha v. DOP

Confusion is likely between trademarks, however, only if their over-all presentations in any of the particulars of sound,
appearance, or meaning are such as would lead the purchasing public into believing that the products to which the
marks are applied emanated from the same source. In testing this issue, fixed legal rules exist — if not in harmony,
certainly in abundance — but, in the final analysis, the application of these rules in any given situation necessarily
reflects a matter of individual judgment largely predicated on opinion. There is, however, and can be no disagreement
with the rule that the purchaser is confused, if at all, by the marks as a whole. Confusion is likely to happen in this case
since the medicines involved are prescription drugs.

Philippine Nut Industry v. Standard Brands

Respondent Standard Brands has priority of adoption and use of the label with PLANTERS as the dominant feature and
the same has acquired secondary meaning in relation to salted peanuts. Where a trade-mark contains a dominating or
distinguishing word, and purchasing public has come to know and designate the article by such dominating word, the
use of such word by another in marking similar goods may constitute Infringement though the marks aside from such
dominating word may be dissimilar.

Copyright

Kho v. CA

The scope of 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.

Pearl and Dean Inc v. Shoemart

There can be no infringement of a patent until a patent has been issued since whatever right one has to the invention
conferred by the patent arises alone from a grant of patent.

Joaquin Jr. v. Drilon

Copyright does not extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery
regardless of the form in which it is described, explained, illustrated or embodied in such work.

Habana v. Robles

If so much is taken that the value of the work is substantially diminished, there is an infringement of copyright and to an
injurious extent, the work is appropriated.

20th Century Fox Films v. CA

The linkage of copyrighted films to the copies must first be determined, in order to establish the existence of probable
cause.

Columbia Pictures v. CA

The lower court could not have expected more evidence from petitioners in their application for search warrant other
than what the law and jurisprudence , then existing and judicially accepted, required with respect of finding probable
cause. The difference between the 20 th Century Fox case and Columbia Pictures is that in the latter, personal knowledge
was established.

NBI Microsoft v. Hwang

The concept of fair use extends to the injuries that may be suffered by the registrant with respect to his economic right if
the the copied good is also accessible in the market where the original is available. The exclusive right to copy,
distribute, multiply belongs to the copyright holder.

Ching v. Salinas

Copyright and patent rights are completely distinct and separate from one another. The protection afforded by one
cannot be used interchangeably to cover items or works that exclusively pertain to the others.

Manly Sportswear v. Dadodette Enterprises

Where there is sufficient proof that the copyrighted products are not original creations but are readily available in the
market under various brands, validity and originality will not be presumed and the trial court may properly quash the
issued warrant for lack of probable cause.

Patents

Boothe v. DOP

Respondent Director of Patents did not err in converting petitioner’s application into an ordinary application filed on
April 14, 1954, not only for their having failed to complete their application within the 4 month period provided by Rules
47 and 48, Revise Rules of Practice in Patent Cases, and as required of them in Paper number 6, but also for having failed
to file a complete application within 12 months from March 16, 1953, the date of foreign application. For, to be entitled
to the filing date of the patent application, an invention disclosed in a previously filed application must be described
within the instant application in such a manner as to enable one skilled in the art to use the same as legally adequate
utility.

Aguas v. De Leon

Where the improvement in tile making is inventive and different from the old process of tile making, improvement is
patentable.

Maguan v. CA

An invention must possess the essential elements of novelty, originality, and precedence and for the patentee to be
entitled to protection, the invention must be new to the world. A single instance of public use of the invention by a
patentee for more than two years(now more than 1 year under Sec.9 of Patent Law) before the date of application for
his patent will be fatal to the validity of the patent when issued.

Price v. Unilab
There is no error in granting compulsory license over the entire patented invention for there is no law requiring that the
license be limited to a specific embodiment of the invention or, to a particular claim. Petitioner cannot complain of
deprivation of property rights without just compensation, because the Director of Patents has set the minimum
percentage for royalty fee.

Cresser Precision Systems v. CA

Only the patentee may file for infringement. There can be no infringement of a patent until a patent has been issued
since whatever right one has to the invention conferred by the patent arises alone from a grant of patent.

Smith Kline v. CA

Article 5 of the Paris Convention unequivocally and explicitly respects the right of the member countries to adopt
legislative measures to provide for grant of compulsory licenses to prevent abuses which might result from the exercise
of the exclusive rights conferred by the patent.

Parke Davis v. Doctors Pharmaceuticals

Fact of existence of 2 different substances of medicine of which the court could not take judicial notice of nor competent
to so find in the absence of evidence, and the existence of two patents require presentation of evidence to show
whether the substances are the same or not.

Godinez v. CA

Tests to determine infringement are; 1) Doctrine of Literal Infringement 2) Doctrine of Equivalents. The reason for the
doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detail
would be to convert the protection of the patent grant into hollow and useless thing.

Smith Kline Beckman v. CA

The doctrine of equivalents thus requires satisfaction of the functions-means-and-result test, the patentee having the
burden to show that all three components of such equivalency test are met.

Manzano v. CA

There is a presumption that the Philippine Patent Office has correctly determined the patentability of the model and
such action must not be interfered with, in the absence of competent evidence to the contrary.
Bata Industries v. CA

Facts:

The New Olympian Rubber Products. Co, sought the registration of the mark Bata for casual rubber shoes. In its
application it alleged that it has used the mark since July 1, 1970 for products made available in the Philippines. The
registration was opposed by Bata Industries Limited, a Canadian Company which alleged that it owns such trademark,
for shoes made by Gerbec and Hrdina of Czechoslovakia prior to World War 2 until 1948. The trademark Bata was never
registered by any foreign entity. Based on evidence gathered, the Philippine Patent Office concluded that oppose has,
“for all intents and purposes technically abandoned its trademark BATA in the Philippines.” It dismissed the opposition
and ordered the registration of BATA in New Olymipan’s name. This decision was reversed by the CA.

Issue:

Whether of not the foreign corporation may seek protection and whether or not, the goodwill built in Bata’s name prior
world war shall be considered abandoned.

Held:

Reversed. Yes, the corporation may seek refuge in out Philippine laws as a foreign corporation not doing business in the
Philippines. However, there is no goodwill that would be damaged by the registration of another company in
Philippines for such trademark has been constructively abandoned.

Puma Sportschufabriken v. IAC

Facts:

Petitioner Puma, a foreign corporation duly organized and existing under the laws of Germany; the manufacturer and
producer of Puma Products filed a complaint for patent or trademark infringement with a prayer of the issuance of a
writ of preliminary injunction against the private respondent before RTC Makati. The RTC issued the TRO, restraining
restraining the private respondent and DOP from using the trademark Puma or any reproduction, counterfeit copy or
colorable imitation thereof, and to withdraw from the market all products bearing such trademark. Private respondent
filed motion to dismiss on the grounds that the petitioner’s complaint states no cause of action, petitioner has no legal
personality to sue and litis pendentia. The RTC ruled in favor of PUMA; and granted writ of injunction. The CA reversed
the case and ordered the civil case to be dismissed on the grounds of litis pendentia. It based its decision on the inter
partes decision of PPO on March 31, 1986 concluding that Mil-Oro Corporation is the prior and actual adoptor of the
trademark PUMA.

Issue:

Whether or not the inter partes case adjudged by PPO in favor or Mil-Oro Corporation constitutes litis pendentia.

Held:

Reversed in favor of Puma. Puma is an internationally known name; or a well known mark which by reason of IP treaties
we acceded to, deserves protection. The requisites of litis pendentia are also not met, since the inter partes case was
within an administrative case, and the civil case was filed in the RTC.