FIRST DIVISION

[G.R. No. 115106. March 15, 1996.]

ROBERTO L. DEL ROSARIO , petitioner, vs . COURT OF APPEALS AND

JANITO CORPORATION , respondents.

Quisumbing Torres & Evangelista for petitioner.

J.P. Villanueva & Associates for private respondent.

SYLLABUS

1. REMEDIAL LAW; PROVISIONAL REMEDIES; INJUNCTION; ITS NATURE. — Injunction

is a preservative remedy for the protection of substantive rights or interests. It is not a
cause of action in itself but merely a provisional remedy, an adjunct to a main suit. The
controlling reason for the existence of the judicial power to issue the writ is that the court
may thereby prevent a threatened or continuous irremediable injury to some of the parties
before their claims can be thoroughly investigated and advisedly adjudicated. It is to be
resorted to only when there is a pressing necessity to avoid injurious consequences which
cannot be remedied under any standard of compensation. The application of the writ rests
upon an alleged existence for an emergency or of a special reason for such an order
before the case can be regularly heard, and the essential conditions for granting such
temporary injunctive relief are that the complaint alleges facts which appear to be
sufficient to constitute a cause of action for injunction and that on the entire showing from
both sides, it appears, in view of all the circumstances, that the injunction is reasonably
necessary to protect the legal rights of plaintiff pending the litigation.
2. ID.; ID.; ID.; WHEN INJUNCTION MAY BE GRANTED; REQUISITES FOR ITS ISSUANCE.
— A preliminary injunction may be granted at any time after the commencement of the
action and before judgment when it is established that the defendant is doing, threatens,
or is about to do, or is procuring or suffering to be done, some act probably in violation of
the plaintiff's rights. Thus, there are only two requisites to be satisfied if an injunction is to
issue, namely, the existence of the right to be protected, and that the facts against which
the injunction is to be directed are violative of said right. For the writ to issue the interest
of petitioner in the controversy or the right he seeks to be protected must be a present
right, a legal right which must be shown to be clear and positive.
3. COMMERCIAL LAW; THE PATENT LAW; WHEN A UTILITY MODEL IS NOT
CONSIDERED "NEW" UNDER SECTION 55 OF THE PATENT LAW. — Under Sec. 55 of The
Patent Law a utility model shall not be considered "new" if before the application for a
patent it has been publicly known or publicly used in this country or has been described in
a printed publication or publications circulated within the country, or if it is substantially
similar to any other utility model so known, used or described within the country.
4. ID.; ID.; WHEN ANY NEW MODEL OF IMPLEMENTS OR TOOLS IS ENTITLED TO A
PATENT FOR UTILITY MODEL. — The Patent Law expressly acknowledges that any new
model of implements or tools of any industrial product even if not possessed of the
quality of invention but which is of practical utility is entitled to a patent for utility model.
5. ID.; ID.; RIGHTS OF A PATENTEE UNDER SECTION 37 OF THE PATENT LAW. — The
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 rights of petitioner as a patentee have been sufficiently established, contrary to the
findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of
The Patent Law, petitioner as a patentee shall have the exclusive right to make, use and sell
the patented machine, article or product for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent, and such making,
using or selling by any person without authorization of the patentee constitutes
infringement of his patent.
6. ID.; ID.; WHAT CONSTITUTES AN INFRINGEMENT OF A PATENT. — It is elementary
that a patent may be infringed where the essential or substantial features of the patented
invention are taken or appropriated, or the device, machine or other subject matter alleged
to infringe is substantially identical with the patent invention. In order to infringe a patent, a
machine or device must perform the same function, or accomplish the same result by
identical or substantially identical means and the principle or mode of operation must be
substantially the same.
7. ID.; PETITIONER HAD SUFFICIENTLY ESTABLISHED A PRIMA FACIE PROOF OF
VIOLATION OF HIS RIGHTS AS PATENTEE. — It may be noted that respondent corporation
failed to present before the trial court a clear, competent and reliable comparison between
its own model and that of petitioner, and disregarded completely petitioner's Utility Model
No. 6237 which improved on his first patented model. Notwithstanding the differences
cited by respondent corporation, it did not refute and disprove the allegations of petitioner
before the trial court that: (a) both are used by a singer to sing and amplify his voice; (b)
both are used to sing with a minus-one or multiplex tapes, or that both are used to play
minus-one or standard cassette tapes for singing or for listening to; (c) both are used to
sing with a minus-one tape and multiplex tape and to record the singing and the
accompaniment; (d) both are used to sing with live accompaniment and to record the
same; (e) both are used to enhance the voice of the singer using echo effect, treble, bass
and other controls; (f) both are equipped with cassette tape decks which are installed with
one being used for playback and the other, for recording the singer and the
accompaniment, and both may also be used to record a speaker's voice or instrumental
playing, like the guitar and other instruments, (g) both are encased in box-like cabinets; and
(h) both can be used with one or more microphones. Clearly, therefore, both petitioner's
and respondent's models involve substantially the same modes of operation and produce
substantially the same if not identical results when used. In view thereof, we find that
petitioner had established before the trial court prima facie proof of violation of his rights
as patentee to justify the issuance of a writ of preliminary injunction in his favor during the
pendency of the main suit for damages resulting from the alleged infringement.

DECISION

BELLOSILLO , J : p

Roberto del Rosario petitions this Court to review the decision of the Court of Appeals 1
which set aside the order of the Regional Trial Court of Makati granting a writ of
preliminary injunction in his favor.
The antecedents: On 18 January 1993 petitioner filed a complaint for patent infringement
against private respondent Janito Corporation. 2 Roberto L. del Rosario alleged that he
was a patentee of an audio equipment and improved audio equipment commonly known
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 as the sing-along system or karaoke under Letters Patent No. UM-5269 dated 2 June 1983
as well as Letters Patent No. UM-6237 dated 14 November 1986 issued by the Director of
Patents. The effectivity of both Letters Patents was for five (5) years and was extended for
another five (5) years starting 2 June 1988 and 14 November 1991, respectively. He
described his sing-along system as a handy multi-purpose compact machine which
incorporates an amplifier speaker, one or two tape mechanisms, optional tuner or radio
and microphone mixer with features to enhance one's voice, such as the echo or reverb to
stimulate an opera hall or a studio sound, with the whole system enclosed in one cabinet
casing.
In the early part of 1990 petitioner learned that private respondent was manufacturing a
sing-along system bearing the trademark miyata or miyata karaoke substantially similar if
not identical to the sing-along system covered by the patents issued in his favor. Thus he
sought from the trial court the issuance of a writ of preliminary injunction to enjoin private
respondent, its officers and everybody elsewhere acting on its behalf, from using, selling
and advertising the miyata or miyata karaoke brand, the injunction to be made permanent
after trial, and praying for damages, attorney's fees and costs of suit.
On 5 February 1993 the trial court temporarily restrained private respondent from
manufacturing, using and/or selling and advertising the miyata sing-along system or any
sing-along system substantially identical to the sing-along system patented by petitioner
until further orders.
On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on
the basis of its finding that petitioner was a holder of a utility model patent for a sing-along
system and that without his approval and consent private respondent was admittedly
manufacturing and selling its own sing-along system under the brand name miyata which
was substantially similar to the patented utility model 3 of petitioner.
Private respondent assailed the order of 24 February 1993 directing the issuance of the
writ by way of a petition for certiorari with prayer for the issuance of a writ of preliminary
injunction and a temporary restraining order before respondent Court of Appeals.
On 15 November 1993 respondent appellate court granted the writ and set aside the
questioned order of the trial court. It expressed the view that there was no infringement of
the patents of petitioner by the fact alone that private respondent had manufactured the
miyata karaoke or audio system, and that the karaoke system was a universal product
manufactured, advertised and marketed in most countries of the world long before the
patents were issued to petitioner. The motion to reconsider the grant of the writ was
denied; 4 hence, the instant petition for review.
This petition alleges that: (a) it was improper for the Court of Appeals to consider
questions of fact in a certiorari proceeding; (b) the Court of Appeals erred in taking judicial
notice of private respondent's self-serving presentation of facts; (c) the Court of Appeals
erred in disregarding the findings of fact of the trial court; and, (d) there was no basis for
the Court of Appeals to grant a writ of preliminary injunction in favor of private respondent.
5

Petitioner argues that in a certiorari proceeding, questions of fact are not generally
permitted the inquiry being limited essentially to whether the tribunal has acted without or
in excess of jurisdiction or with grave abuse of discretion; that respondent court should
not have disturbed but respected instead the factual findings of the trial court; that the
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 movant has a clear legal right to be protected and that there is a violation of such right by
private respondent. Thus, petitioner herein claims, he has satisfied the legal requisites to
justify the order of the trial court directing the issuance of the writ of injunction. On the
other hand, in the absence of a patent to justify the manufacture and sale by private
respondent of sing-along systems, it is not entitled to the injunctive relief granted by
respondent appellate court.
The crux of the controversy before us hinges on whether respondent Court of Appeals
erred in finding the trial court to have committed grave abuse of discretion in enjoining
private respondent from manufacturing, selling and advertising the miyata karaoke brand
sing-along system for being substantially similar if not identical to the audio equipment
covered by letters patent issued to petitioner.
Injunction is a preservative remedy for the protection of substantive rights or interests. It
is not a cause of action in itself but merely a provisional remedy, an adjunct to a main suit.
The controlling reason for the existence of the judicial power to issue the writ is that the
court may thereby prevent a threatened or continuous irremediable injury to some of the
parties before their claims can be thoroughly investigated and advisedly adjudicated. It is
to be resorted to only when there is a pressing necessity to avoid injurious consequences
which cannot be remedied under any standard of compensation. The application of the
writ rests upon an alleged existence of an emergency or of a special reason for such an
order before the case can be regularly heard, and the essential conditions for granting
such temporary injunctive relief are that the complaint alleges facts which appear to be
sufficient to constitute a cause of action for injunction and that on the entire showing from
both sides, it appears, in view of all the circumstances, that the injunction is reasonably
necessary to protect the legal rights of plaintiff pending the litigation. 6
A preliminary injunction may be granted at any time after the commencement of the action
and before judgment when it is established that the defendant is doing, threatens, or is
about to do, or is procuring or suffering to be done, some act probably in violation of the
plaintiff's rights. Thus, there are only two requisites to be satisfied if an injunction is to
issue, namely, the existence of the right to be protected, and that the facts against which
the injunction is to be directed are violative of said right. 7
For the writ to issue the interest of petitioner in the controversy or the right he seeks to be
protected must be a present right, a legal right which must be shown to be clear and
positive.
In this regard Sec. 55 of R.A. 165 as amended, known as The Patent Law, provides —
Sec. 55. Design patents and patents for utility models. — (a) Any new,
original, and ornamental design for an article of manufacture and (b) new model
of implements or tools or of any industrial product or of part of the same, which
does not possess the quality of invention but which is of practical utility by
reason of its form, configuration, construction or composition, may be protected
by the author thereof, the former by a patent for a design and the latter by a
patent for a utility model, in the same manner and subject to the same provisions
and requirements as relate to patents for inventions insofar as they are
applicable, except as otherwise herein provide . . .

Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued
for a term of five (5) years from the grant of a Utility Model herein described —
The construction of an audio equipment comprising a substantially cubical
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 casing having a window at its rear and upper corner fitted with a slightly inclined
control panel, said cubical (casing) having a vertical partition wall therein defining
a rear compartment and a front compartment, and said front compartment
serving as a speaker baffle; a transistorized amplifier circuit having an echo
section and writhed in at least the printed circuit boards placed inside said rear
compartment of said casing and attached to said vertical partition wall, said
transistorized amplifier circuit capable of being operated from outside, through
various controls mounted on said control panel of such casing; a loud speaker
fitted inside said front compartment of said casing and connected to the output
of the main audio amplifier section of said transistorized amplifier circuit and a
tape player mounted on the top wall of said casing and said tape player being
connected in conventional manner to said transistorized amplifier circuit. 8

Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-6237 for a
term of five (5) years from the grant of a Utility Model described as —
In an audio equipment consisting of a first cubical casing having an opening at
its rear and upper rear portion and a partition therein forming a rear compartment
and a front compartment serving as a loud speaker baffle, a control panel formed
by vertical and horizontal sections, a transistorized amplifier circuit wired in at
least two printed circuit boards attached at the back of said control panel, a first
loud speaker fitted inside said first compartment of such first casing and
connected to the output of said transistorized amplifier circuit; the improvement
wherein said control panel being removably fitted to said first cubical casing and
further comprises a set of tape recorder and tape player mounted on the vertical
section of said control panel and said recorder and player are likewise connected
to said transistorized amplifier circuit; a second cubical casing having an opening
at its rear, said second cubical casing having (being ?) provided with a vertical
partition therein defining a rear compartment and a front compartment, said rear
compartment being provided with a door and enclosing therein a set of tape racks
and said front compartment serving as loud speaker baffle, said second cubical
casing being adapted to said first cubical casing so that said first and second
casings are secured together in compact and portable form; and a second loud
speaker fitted inside said front compartment of said casing and connected to the
output of said amplifier circuit. 9

The terms of both Letters Patents were extended for another five (5) years each, the first
beginning 2 June 1988 and the second, 14 November 1991.
The Patent Law expressly acknowledges that any new model of implements or tools of
any industrial product even if not possessed of the quality of invention but which is of
practical utility is entitled to a patent for utility model. 1 0 Here, there is no dispute that the
letters patent issued to petitioner are for utility models of audio equipment.
In issuing, reissuing or withholding patents and extensions thereof, the Director of Patents
determines whether the patent is new and whether the machine or device is the proper
subject of patent. In passing on an application, the Director decides not only questions of
law but also questions of fact, i.e. whether there has been a prior public use or sale of the
article sought to be patented. 11 Where petitioner introduces the patent in evidence, if it is
in due form, it affords a prima facie presumption of its correctness and validity. The
decision of the Director of Patents in granting the patent is always presumed to be correct,
and the burden then shifts to respondent to overcome this presumption by competent
evidence. 1 2

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 Under Sec. 55 of The Patent Law a utility model shall not be considered "new" if before the
application for a patent it has been publicly known or publicly used in this country or has
been described in a printed publication or publications circulated within the country, or if it
is substantially similar to any other utility model so known, used or described within the
country. Respondent corporation failed to present before the trial court competent
evidence that the utility models covered by the Letters Patents issued to petitioner were
not new. This is evident from the testimony of Janito Cua, President of respondent Janito
Corporation, during the hearing on the issuance of the injunction, to wit —
Q. Mr. Cua, you testified that there are (sic) so many other companies which
already have (sic) the sing-along system even before the patent application
of Mr. del Rosario and as a matter of fact you mentioned Sanyo, Sony and
Sharp, is that right?

A. Musicmate and Asahi.

Q. Now do you recall that your lawyer filed with this Honorable Court an
Urgent Motion to Lift Temporary Restraining Order of this Honorable Court.
I am sure you were the one who provided him with the information about
the many other companies selling the sing-along system, is that right?
These 18 which you enumerated here.
A. More than that because . . .
Q. Now you will agree with me that in your statement Sharp you put the date
as 1985 agreed?
A. No.
Q. You mean your lawyer was wrong when he put the word Sharp 1985?
A. Maybe I informed him already.

xxx xxx xxx

Q. You mean your lawyer was wrong in alleging to this Court that Sharp
manufactured and sold (in) 1985 as found in the Urgent Motion?
A. Since it is urgent it is more or less.
Q. The same also with Sanyo 1985 which you put, more or less?
A. Sanyo is wrong.
Q. It is not 1985?

A. Sanyo is 1979 I think.

Q. So this is also wrong. Panasonic 1986 is also wrong?
A. Panasonic I think.
Q. So you don't think this is also correct.

A. The date?
Q. So you don't think also that this allegation here that they manufacture in
1986 is correct?
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 A. Wrong. Earlier.

Q. National by Precision Electronic 1986 this is also wrong?

A. I think earlier.
Q. So that means all your allegations here from 2 to 5 are wrong? OK. By
Philipps Philippines 1986, this is also correct or wrong?
A. More or less. We said more or less.
Q. Nakabutshi by Asahi Electronics that is also wrong?
A. No, that is 1979.

Q. Electone by DICO 1989 is this correct or wrong?

A. Correct. More or less.
Q. Skylers 1985 is that correct or wrong?
A. It is more or less because it is urgent. We don't have time to exact the date.
Q. Musicmate of G.A. Yupangco 1981 this is more or less? You are not also
sure?
A. 95% sure.

Q. Now you are sure 1981.

A. This one because . . .
Q. Mr. Witness so you are now trying to tell this Honorable Court that all your
allegations here of the dates in this Urgent Motion except for Musicmate
which you are only 95% sure they are all wrong or they are also more or
less or not sure, is that right?
A. More or less.

Q. Now do you have any proof, any advertisement, anything in writing that
would show that all these instruments are in the market, do you have it?

A. No, I don't have it because . . .

Q. No. I am satisfied with your answer. Now Mr. Witness, you don't also have
a proof that Akai instrument that you said was also in the market before
1982? You don't have any written proof, any advertisement?
A. I have the product.

Q. But you have not brought the product in (sic) this Honorable Court, right?
A. No. 1 3

As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently
established, contrary to the findings and conclusions of respondent Court of Appeals.
Consequently, under Sec. 37 of The Patent Law, petitioner as a patentee shall have the
exclusive right to make, use and sell the patented machine, article or product for the
purpose of industry or commerce, throughout the territory of the Philippines for the term
of the patent, and such making, using or selling by any person without authorization of the
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 patentee constitutes infringement of his patent.
Petitioner established before the trial court that respondent Janito Corporation was
manufacturing a similar sing-along system bearing the trademark miyata which infringed
his patented models. He also alleged that both his own patented audio equipment and
respondent's sing-along system were constructed in a casing with a control panel, the
casing having a vertical partition wall defining the rear compartment from the front
compartment, with the front compartment consisting of a loud speaker baffle, both
containing a transistorized amplifier circuit capable of being operated from outside
through various controls mounted on the control panel, and that both had loud speakers
fitted inside the front compartment of the casing and connected to the output of the main
audio amplifier section both having a tape recorder and a tape player mounted on the
control panel with the tape recorder and tape player being both connected to the
transistorized amplifier circuit. 1 4
Respondent Janito Corporation denied that there was any violation of petitioner's patent
rights, and cited the differences between its miyata equipment and petitioner's audio
equipment. But, it must be emphasized, respondent only confined its comparison to the
first model, Utility Model No. 5269, and completely disregarded Utility Model No. 6237
which improved on the first. As described by respondent corporation, 1 5 these differences
are —
First. Under Utility Model 5269, the unit is a substantially cubical casing with a
window at its rear and upper corner fitted with slightly inclined control panel,
while the miyata equipment is a substantially rectangular casing with panel
vertically positioned.
Second. Under Utility Model 5269, the cubical casing has a vertical partition wall
defining a rear compartment and a front compartment serving as a speaker
baffle, while the miyata equipment has no rear compartment and front
compartment in its rectangular casing; it has only a front compartment
horizontally divided into 3 compartments like a 3-storey building, the 1st
compartment being a kit, the 2nd also the speaker, and the 3rd are kits.
Third. Under Utility Model No. 5269, a transistorized amplifier circuit with an echo
section wired in at least 2 printed circuit boards is placed inside the rear
compartment of the casing and attached to the vertical partition wall, the printed
circuit board having 1 amplifier and 1 echo, while in the miyata equipment the
amplifier is mainly IC (Integrated Circuit) — powered with 8 printed circuit boards
almost all of which are IC controlled, with 1 amplifier with power supply, 1 main
tuner, 1 equalizer (3-band), 1 IC controlled volume control, 1 echo IC, 1 tape pream,
1 instrument and 1 wireless microphone.

Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the
compartment of its casing attached to the vertical partition wall, while in the
miyata, the 7 printed circuit boards (PCB) are attached to the front panel and 1
attached to the horizontal divider.
Fifth. Under Utility Model 5269, there are various controls mounted on the control
panel of the casing, while in miyata, the various controls are all separated from
the printed circuit boards and the various controls are all attached thereto.

Sixth. Under Utility Model 5269, a loud speaker fitted inside the front
compartment of the casing is connected to the output of the main audio amplifier
section of the transistorized amplifier circuit, while in miyata, there is no other
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 way but to use 2 loud speakers connected to the amplifier.
Seventh. Under Utility Model 5269, a tape player is mounted on the top wall of the
casing, while in miyata, 2 tape players are used mounted side by side at the front.

It is elementary that a patent may be infringed where the essential or substantial features
of the patented invention are taken or appropriated, or the device, machine or other subject
matter alleged to infringe is substantially identical with the patented invention. In order to
infringe a patent, a machine or device must perform the same function, or accomplish the
same result by identical or substantially identical means and the principle or mode of
operation must be substantially the same. 1 6
It may be noted that respondent corporation failed to present before the trial court a clear,
competent and reliable comparison between its own model and that of petitioner, and
disregarded completely petitioner's Utility Model No. 6237 which improved on his first
patented model. Notwithstanding the differences cited by respondent corporation, it did
not refute and disprove the allegations of petitioner before the trial court that: (a) both are
used by a singer to sing and amplify his voice; (b) both are used to sing with a minus-one
or multiplex tapes, or that both are used to play minus-one or standard cassette tapes for
singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex
tape and to record the singing and the accompaniment; (d) both are used to sing with live
accompaniment and to record the same; (e) both are used to enhance the voice of the
singer using echo effect, treble, bass and other controls; (g) both are equipped with
cassette tape decks which are installed with one being used for playback and the other, for
recording the singer and the accompaniment, and both may also be used to record a
speaker's voice or instrumental playing, like the guitar and other instruments; (h) both are
encased in a box-like cabinets; and (i) both can be used with one or more microphones. 1 7
Clearly, therefore, both petitioner's and respondent's models involve substantially the
same modes of operation and produce substantially the same if not identical results when
used.
In view thereof, we find that petitioner had established before the trial court prima facie
proof of violation of his rights as patentee to justify the issuance of a writ of preliminary
injunction in his favor during the pendency of the main suit for damages resulting from the
alleged infringement.
WHEREFORE, the Decision of the Court of Appeals dated 15 November 1993 is REVERSED
and SET ASIDE and the Order of the trial court dated 24 February 1993 granting petitioner
the writ of injunction is REINSTATED.
The trial court is directed to continue with the proceedings on the main action pending
before it in order to resolve with dispatch the issues therein presented.
SO ORDERED.
Padilla, Vitug, Kapunan, and Hermosisima, Jr., JJ., concur.
Footnotes

1. Rollo, p. 52.
2. Complaint was filed before the Regional Trial Court of Makati, Br. 57.
3. Rollo, pp. 252-253.

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 4. Rollo, p. 65.
5. Rollo, p. 22.
6. Francisco, Vicente J., The Revised Rules of Court in the Philippines, 1985 ed., Rules 57-
61, pp. 174-175.
7. Araneta v. Gatmaitan, 101 Phil. 328 (1957).
8. Rollo, p. 78.
9. Rollo, pp. 99-100.
10. Samson v. Tarroza, No. L-20354, 28 July 1969, 28 SCRA 792.
11. Philippine Lawyers' Association v. Agrava, 105 Phil. 173.
12. Vargas v. F.M. Yaptico and Co., Ltd., 40 Phil. (1919).
13. TSN, 16 February 1993, Rollo, pp. 165-167.

14. Rollo, pp. 199-200.

15. Rollo, pp. 243-244.
16. Jarencio, Hilarion U., Torts and Damages in Philippine Law, 1977 ed., pp. 453-454,
citing 69 C.J.S., pp. 851-860.
17. Rollo, pp. 200-201 and 225-251.

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