TABLE OF CONTENTS

Trademarks and Trade name cases

1) La Chemise Lacoste vs. Hernandez
Gr. No. L-63796-97
May 2, 1984
pg 2
2) Fruit of the Loom, Inc vs. CA and Gen. Garments Corp. Gr. No. L-3274 Dec. 29,
1984
pg3
3) Del Monte Corporation vs. Court of Appeals Gr. No. L-78325 January 25, 1990
pg4
4) ASIA Brewery, Inc. vs. CA & San Miguel Corp. Gr. No. 103543 July 5, 1993
pg5
5) Emerald Garment MFG Corp. vs CA, Bureau of Patents Gr. No. 100098 Dec. 29,
1995
pg6
6) Shangri-La Intl. Hotel Management, LTD., vs. Makati Shangri-La Hotel & Resort.
G.R. No. 111580, June 21, 2001
pg8
7) Pearl and Dean, Inc. vs. Shoemart, Inc. and North Edsa MKTG. Gr. 148222 Aug.
15, 2003 pg8
8) 246 Corporation vs. Hon. Reynaldo Daway Gr. No. 157216 November 20, 2003
pg10
9) Mighty Corp. et al. vs. E. & J. Winery Gr. No. 154342 July 14, 2004
pg10
10)
Mc Donald Corp. vs. L. C. Big Mak Burger Gr. No. 143993 August 18, 2004
pg11
11)
IN-&-OUT Burger vs. SEHWANI, Incorporated Gr. No. 179127; December
24,2008
pg13
Law on Copyright Cases
1) Francisco G. Joaquin, Jr. vs. Hon. Franklin Drilon Gr. No. 108946
1999
pg14
2) Pacita Habana vs. Felicidad Robles Gr. No. 131522 July 19, 1999
pg15

January 28,

Trademark and Trade Name Cases

1. La Chemise Lacoste vs. Hernandez Gr. No. L-63796-97 May 2, 1984
Facts: La Chemise Lacoste is a foreign corporation, organized and
existing under the laws of France and not doing business in the Philippines. It
is undeniable from the records that it is the actual owner of the trademarks
LACOSTE, CHEMISE LACOSTE, CROCODILE DEVICE and a composite
mark consisting of the word LACOSTE and a representation of a
crocodile/alligator, used on clothings and other goods specifically sporting
apparels sold in many parts of the world and which have been marketed in
the Philippines since 1964. In 1975, Hemandas & Co., a duly licensed
domestic firm applied for and was issued Reg. SR-2225 (Supplemental
Register) for the trademark CHEMISE LACOSTE & CROCODILE DEVICE by
the Philippine Patent Office for use on T-shirts, sportswear and other garment
products of the company. Two years later, it applied for the registration of the
same trademark under the Principal Register. The Patent Office eventually
issued an order dated 3 March 1977 allowing the application and holding the
registrant to be presumed the owner of the mark until after the registration is
declared cancelled. Thereafter, Hemandas & Co. assigned to Gobindram
Hemandas all rights, title, and interest in the trademark CHEMISE LACOSTE
& DEVICE. On 21 November 1980, La Chemise Lacoste filed its application
for registration of the trademark Crocodile Device (Application Serial
43242) and Lacoste (Application Serial 43241). The former was approved
for publication while the latter was opposed by Games and Garments in Inter
Partes Case 1658. In 1982, La Chemise Lacoste filed a Petition for the
Cancellation of Reg. SR-2225 docketed as Inter Partes Case 1689.
On 21 March 1983, La Chemise Lacoste filed with the National Bureau
of Investigation (NBI) alleging therein the acts of unfair competition being
committed by Hemandas and requesting their assistance in his apprehension
and prosecution. The NBI conducted an investigation and subsequently filed
with the Manila trial court two applications for the issuance of search
warrants which would authorize the search of the premises used and
occupied by the Lacoste Sports Center and Games and Garments both owned
and operated by Hemandas. The court issued Search Warrant 83-128 and 832

129 for violation of Article 189 of the Revised Penal Code. The NBI agents
executed the two search warrants and as a result of the search found and
seized various goods and articles described in the warrants. Hemandas filed a
motion to quash the search warrants alleging that the trademark used by him
was different from La Chemise Lacostes trademark and that pending the
resolution of the case before the Patent Office, any criminal or civil action on
the same subject matter and between the same parties would be premature.
La Chemise Lacoste filed its opposition. The State Prosecutor likewise filed his
opposition. The court was, however, convinced that there was no probable
cause to justify the issuance of the search warrants. Thus, in its order dated
22 March 1983, the search warrants were recalled and set aside and the NBI
agents or officers in custody of the seized items were ordered to return the
same to Hemandas.
Issue:
whether or not Hermandas is the owner of the Lacoste
mark being the first to register the same before the Intellectual Property
Office.
Held: Registration in the Supplemental Register, therefore, serves as
notice that the registrant is using or has appropriated the trademark. By the
very fact that the trademark cannot as yet be entered in the Principal
Register, all who deal with it should be on guard that there are certain
defects, some obstacles which the user must still overcome before he can
claim legal ownership of the mark or ask the courts to vindicate his claims of
an exclusive right to the use of the same. It would be deceptive for a party
with nothing more than a registration in the Supplemental Register to posture
before courts of justice as if the registration is in the Principal Register.

2. Fruit of the Loom vs. CA and Gen. Garments Corp GR L-32747, 29

November 1984
Facts: Fruit of the Loom Inc., a corporation duly organized and existing
under the laws of the State of Rhode Island, USA, is the registrant of a
trademark, FRUIT OF THE LOOM, in the Philippines Patent Office and was
issued two Certificates of Registration 6227 and 6680, on 29 November 1957
and 26 July 1958, respectively. The classes of merchandise covered by
Registration Certificate 6227 are, among others, mens, womens and
childrens underwear, which includes womens panties and which fall under
class 40 in the Philippine Patent Offices classification of goods. Registration
Certificate 6680 covers knitted, netted and textile fabrics. General Garments
Corporation, on the other hand, is a domestic corporation and is the
registrant of a trademark FRUIT FOR EVE in the Philippine Patent Office and

was issued a Certificate of Registration 10160, on 10 January 1963 covering

garments similar to petitioners products like womens panties and pajamas.
On 31 March 1965, Fruit of the Loom filed before the lower court, a
complaint for infringement of trademark and unfair competition against
General Garments. Fruit of the Loom principally alleged in the complaint that
private respondents trademark FRUIT FOR EVE is confusingly similar to its
trademark FRUIT OF THE LOOM used also on womens panties and other
textile products. Furthermore, it was also alleged therein that the color get-up
and general appearance of General Garments hang tag consisting of a big
red apple is a colorable imitation to the hang tag of Fruit of the Loom. After
trial, judgment was rendered by the lower court in favor of Fruit of the Loom,
ordering the Bureau of Patents to cancel the registration of the Trademark
Fruit for Eve, permanently enjoining General Garments from using the
trademark Fruit for Eve, ordering General Garments to pay Fruit of the
Loom the sum of P10,000.00 as attorneys fees and to pay the costs. Both
parties appealed to the former Court of Appeals.
On 8 October 1970, the former Court of Appeals rendered its decision
reversing the judgment of the lower court and dismissing Fruit of the Looms
complaint. Fruit of the Looms motion for reconsideration was likewise denied.
Hence, a petition for review was filed.
Issue: Whether or not the mark is confusingly similar to each other
which will result and likely deceive an ordinary purchaser.
Held: The Supreme Court in using the totality test examines both the
trade name and trademark used by both petitioner and respondent.
The dominant features of both trademarks is the word FRUIT. In
determining whether the trademarks are confusingly similar, a comparison of
the words is not the only determinant factor. The trademarks in their entirety
as they appear in their respective labels or hang tags must also be
considered in relation to the goods to which they are attached. The discerning
eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his
conclusion whether one is confusingly similar to the other. As to the design
and coloring scheme of the hang tags, while there are similarities in the two
marks like the red apple at the center of each mark, there are differences or
dissimilarities which are glaring and striking to the eye such as: (1) the
shape of Fruit of the Looms hang tag is round with a base that looks like a
paper rolled a few inches in both ends; while that of General Garments is
plain rectangle without any base; (2) The designs differ. Fruit of the Looms
trademark is written in almost semi-circle while that of General Garments is
written in straight line in bigger letters than Fruit of the Looms. General
4

Garments tag has only an apple in its center but that of Fruit of the Loom has
also clusters of grapes that surround the apple in the center; (3) The colors of
the hang tag are also very distinct from each other. Fruit of the Looms hang
tag is light brown while that of General Garment is pink with a white colored
centerpiece. The apples which are the only similarities in the hang tag are
differently colored. Fruit of the Looms apple is colored dark red, while that of
General Garments is light red. The similarities of the competing trademarks
are completely lost in the substantial differences in the design and general
appearance of their respective hang tags. Hence there was no violation of
Trademarks in the present case.

3. Del Monte Corporation vs. Court of Appeals

January 25, 1990

Gr. No. L-78325

Facts: Del Monte Corporation is a foreign company organized under

the laws of the United States and not engaged in business in the Philippines.
Both the Philippines and the United States are signatories to the Convention
of Paris of 27 September 1965, which grants to the nationals of the parties
rights and advantages which their own nationals enjoy for the repression of
acts of infringement and unfair competition. Philippine Packing Corporation is
a domestic corporation duly organized under the laws of the Philippines. On
11 April 1969, Del Monte granted Philpack the right to manufacture,
distribute and sell in the Philippines various agricultural products, including
catsup, under the Del Monte trademark and logo. On 27 October 1965, Del
Monte authorized Philpack to register with the Philippine Patent Office the Del
Monte catsup bottle configuration, for which it was granted Certificate of
Trademark Registration SR-913 by the Philippine Patent Office under the
Supplemental Register. On 20 November 1972, Del Monte also obtained two
registration certificates for its trademark DEL MONTE and its logo. On the
other hand, Sunshine Sauce Manufacturing Industries was issued a Certificate
of Registration by the Bureau of Domestic Trade on 17 April 1980, to engage
in the manufacture, packing, distribution and sale of various kinds of sauce,
identified by the logo Sunshine Fruit Catsup. This logo was registered in the
Supplemental Register on 20 September 1983. The product itself was
contained in various kinds of bottles, including the Del Monte bottle, which
Sunshine Sauce bought from the junk shops for recycling. Having received
reports that Sunshine Sauce was using its exclusively designed bottles and a
logo confusingly similar to Del Montes, Philpack warned it to desist from
doing so on pain of legal action.
Philpack and Del Monte filed a complaint against Sunshine Sauce for
infringement of trademark and unfair competition, with a prayer for damages
and the issuance of a writ of preliminary injunction. After trial, the RTC of
5

Makati dismissed the complaint, holding that there were substantial

differences between the logos or trademarks of the parties; that Sunshine
Sauce had ceased using Del Monte bottles; and that in any case Sunshine
Sauce became the owner of the said bottles upon its purchase thereof from
the junk yards.; besides the fact that Philpack and Del Monte had failed to
establish the defendants malice or bad faith, which was an essential element
of infringement of trademark or unfair competition. This decision was
affirmed in toto by the Court of Appeals, a motion for reconsideration was
filed by del monte but was likewise dismiss hence a petition for certiorari
was filed.
Issue: whether or not Sunshine Sauce usage of the empty bottles of
Del Monte amounts to infringement of trademark.
Held: The predominant colors used in the Del Monte label are green
and red-orange, the same with Sunshine. The word catsup in both bottles is
printed in white and the style of the print/letter is the same. Although the
logo of Sunshine is not a tomato, the figure nevertheless approximates that
of a tomato. The person who infringes a trade mark does not normally copy
out but only makes colorable changes, employing enough points of similarity
to confuse the public with enough points of differences to confuse the courts.
When a manufacturer prepares to package his product, he has before him a
boundless choice of words, phrases, colors and symbols sufficient to
distinguish his product from the others. When as in this case, Sunshine chose,
without a reasonable explanation, to use the same colors and letters as those
used by Del Monte though the field of its selection was so broad, the
inevitable conclusion is that it was done deliberately to deceive.

4. Asia Brewery vs. CA (GR 103543, 5 July 1993)

Facts: On 15 September 1988, San Miguel Corporation (SMC) filed a
complaint against Asia Brewery Inc. (ABI) for infringement of trademark and
unfair competition on account of the latters BEER PALE PILSEN or BEER NA
BEER product which has been competing with SMCs SAN MIGUEL PALE
PILSEN for a share of the local beer market. On 27 August 1990, a decision
was rendered by the trial Court, presided over by Judge Jesus O. Bersamira,
dismissing SMCs complaint because ABI has not committed trademark
infringement or unfair competition against SMC.
SMC appealed to the Court of Appeals (CA-GR CV 28104). On 30
September 1991, the Court of Appeals (Sixth Division composed of Justice
Jose C. Campos, Jr., chairman and ponente, and Justices Venancio D. Aldecoa
Jr. and Filemon H. Mendoza, as members) reversed the trial court. It held the
ABI was guilty of infringement of trademark and unfair competition, and thus
(1) permanently enjoining and restraining ABI, its officers, agents, servants
6

and employees from manufacturing, putting up, selling, advertising, offering

or announcing for sale, or supplying Beer Pale Pilsen, or any similar
preparation, manufacture or beer in bottles and under labels substantially
identical with or like the said bottles and labels of SMC employed for that
purpose, or substantially identical with or like the bottles and labels now
employed by ABI for that purpose, or in bottles or under labels which are
calculated to deceive purchasers and consumers into the belief that the beer
is the product of SMC or which will enable others to substitute, sell or palm off
the said beer of ABI as and for the beer of SMC, (2) ordered ABI to render an
accounting and pay the SMC double any and all the payments derived by the
former from operations of its business and sale of goods bearing the mark
Beer Pale Pilsen estimated at approximately P5,000,000.00; to recall all its
products bearing the mark Beer Pale Pilsen from its retailers and deliver
these as well as all labels, signs, prints, packages, wrappers, receptacles
and advertisements bearing the infringing mark and all plates, molds,
materials and other means of making the same to the Court authorized to
execute this judgment for destruction, (3) ordered ABI to pay SMC the sum of
P2,000,000.00 as moral damages and P500,000.00 by way of exemplary
damages, and further ordered ABI to pay the SMC attorneys fees in the
amount of P250,000.00 plus costs of this suit. Upon a motion for
reconsideration filed by ABI, the dispositive portion of the decision was
modified by the separate opinions of the Special Sixth Division, deleting the
order to account for all payments derived from operations of business and
sale of goods bearing the mark Beer Pale Pilsen. In due time, ABI appealed
to the Supreme Court by a petition for certiorari.
Issue: Whether or not the Word Pale Pilsen is susceptible for
appropriation.
Held: The words pale pilsen may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark: SAN MIGUEL
PALE PILSEN, any more than such descriptive words as evaporated milk,
tomato ketchup, cheddar cheese, corn flakes and cooking oil may be
appropriated by any single manufacturer of these food products, for no other
reason than that he was the first to use them in his registered trademark. The
words are merely descriptive and it would be unjust to deprive other dealers
in leather shoes of the right to use the same words with reference to their
merchandise. No one may appropriate generic or descriptive words. They
belong to the public domain.
5. Emerald Garment Manufacturing Corp. vs. CA (GR 100098, 29
December1995)
Facts: HD Lee Co. Inc., a foreign corporation organized under the laws
of Delaware, U.S.A., obtained several registration certificates for its various
trademarks LEE, LEE RIDERS, and LEESURES in both the supplemental
and principal registers, as early as 1969 to 1973. On 18 September 1981, HD
Lee filed with the Bureau of Patents, Trademarks & Technology Transfer
(BPTTT) a Petition for Cancellation of Registration SR 5054 (Supplemental
7

Register) for the trademark STYLISTIC MR. LEE used on skirts, jeans,
blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and
lingerie under Class 25, issued on 27 October 1980 in the name of Emerald
Garment Manufacturing Corporation, a domestic corporation organized and
existing under Philippine laws. The petition was docketed as Inter Partes Case
1558. On 20February 1984, Emerald Garments caused the publication of its
application for registration of the trademark STYLISTIC MR. LEE in the
Principal Register. On 27 July 1984, HD Lee Co. filed a notice of opposition to
Emerald Garments application for registration also on grounds that the
latters trademark was confusingly similar to its LEE trademark. The case
was docketed as Inter Partes Case 1860. On 21 June 1985, the Director of
Patents consolidated Inter Partes Cases 1558 and 1860, and on 19 July 1988,
the Director of Patents rendered a decision granting HD Lee Co.s petition for
cancellation and opposition to registration, holding that HD Lee Co. to be the
prior registrant of the trademark LEE in the Philippines and that it had been
using said mark in the Philippines.
On 3 August 1988, Emerald Garments appealed to the Court of Appeals
and on 8 August 1988, it filed with the BPTTT a Motion to Stay Execution of
the 19 July 1988 decision of the Director of Patents on grounds that the same
would cause it great and irreparable damage and injury. HD Lee submitted its
opposition on 22 August 1988. On 23 September 1988, the BPTTT issued
Resolution 88-33 granting Emerald Garments motion to stay execution
subject to the following terms and conditions: (1) that under the resolution,
Emerald Garments is authorized only to dispose of its current stock using the
mark STYLISTIC MR. LEE; (2) that it is strictly prohibited from further
production, regardless of mode and source, of the mark in question
(STYLISTIC MR. LEE) in addition to its current stock; and (3) that the relief
Order shall automatically cease upon resolution of the Appeal by the Court of
Appeals and, if the Emerald Garments appeal loses, all goods bearing the
mark STYLISTIC MR. LEE shall be removed from the market, otherwise such
goods shall be seized in accordance with the law. On 29 November 1990, the
Court of Appeals promulgated its decision affirming the decision of the
Director of Patents dated 19 July 1988 in all respects. On 19 December 1990,
Emerald Garments filed a motion for reconsideration of the decision of the
Court of Appeals. On 17 May 1991, the Court of Appeals issued a resolution
rejecting Emerald Garments motion for reconsideration. Hence, the petition
for review on certiorari.
Issue: Whether or not the name LEE is susceptible for appropriation as a
brand name.
Whether or not the name LEE would likely create a confusion between
the competing product.
Held: LEE is primarily a surname. HD Lee cannot, therefore, acquire
exclusive ownership over and singular use of said term. It has been held that
a personal name or surname may not be monopolized as a trademark or
tradename as against others of the same name or surname. For in the

absence of contract, fraud, or estoppel, any man may use his name or
surname in all legitimate ways.
The products involved are various kinds of jeans. These are not
ordinary household tems like catsup, soy sauce or soap which are of minimal
cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer
is predisposed to be more cautious and discriminating in and would prefer to
mull over his purchase. Confusion and deception, then, is less likely.
6. Shangri-La Intl. Hotel Management, LTD., vs. Makati Shangri-La Hotel
& Resort. G.R. No. 111580, June 21, 2001
Facts:
On June 21, 1988, the Shangri-La International Hotel
Management, Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and
Resort, Inc. and Kuok Philippine Properties, Inc. (hereinafter collectively
referred as the "Shangri-La Group"), filed with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) a petition, docketed as Inter
Partes Case No. 3145, praying for the cancellation of the registration of the
"Shangri-La" mark and "S" device/logo issued to the Developers Group of
Companies, Inc., on the ground that the same was illegally and fraudulently
obtained and appropriated for the latter's restaurant business. The Shangri-La
Group alleged that it is the legal and beneficial owners of the subject mark
and logo; that it has been using the said mark and logo for its corporate
affairs and business since March 1962 and caused the same to be specially
designed for their international hotels in 1975, much earlier than the alleged
first use thereof by the Developers Group in 1982.
Issue: whether, despite the institution of an Inter Partes case for
cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs,
Intellectual Property Office) by one party, the adverse party can file a
subsequent action for infringement with the regular courts of justice in
connection with the same registered mark.
Held: in the case at bar, the earlier institution of an Inter Partes case
by the Shangri-La Group for the cancellation of the "Shangri-La" mark and "S"
device/logo with the BPTTT cannot effectively bar the subsequent filing of an
infringement case by registrant Developers Group. The law and the rules are
explicit. The rationale is plain: Certificate of Registration No. 31904, upon
which the infringement case is based, remains valid and subsisting for as
long as it has not been cancelled by the Bureau or by an infringement court.
As such, Developers Group's Certificate of Registration in the principal
register continues as "prima facie evidence of the validity of the registration,
the registrant's ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods, business or
services specified in the certificate." Since the certificate still subsists,
Developers Group may thus file a corresponding infringement suit and
recover damages from any person who infringes upon the former's rights.
Furthermore, the issue raised before the BPTTT is quite different from that
9

raised in the trial court. The issue raised before the BPTTT was whether the
mark registered by Developers Group is subject to cancellation, as the
Shangri-La Group claims prior ownership of the disputed mark. On the other
hand, the issue raised before the trial court was whether the Shangri-La
Group infringed upon the rights of Developers Group within the
contemplation of Section 22 of Republic Act 166.

7. Pearl and Dean (Phil.) Inc. vs. Shoemart Inc. (GR 148222, 15 August
2003)
Facts: Pearl and Dean (Phil.), Inc. is a corporation engaged in the
manufacture of advertising display units simply referred to as light boxes.
These units utilize specially printed posters sandwiched between plastic
sheets and illuminated with back lights. Pearl and Dean was able to secure a
Certificate of Copyright Registration dated 20 January 1981 over these
illuminated display units. The advertising light boxes were marketed under
the trademark Poster Ads. The application for registration of the trademark
was filed with the Bureau of Patents, Trademarks and Technology Transfer on
20 June 1983, but was approved only on September 12, 1988, per
Registration 41165. From 1981 to about 1988, Pearl and Dean employed the
services of Metro Industrial Services to manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with Shoemart, Inc. (SMI) for
the lease and installation of the light boxes in SM City North Edsa. Since SM
City North Edsa was under construction at that time, SMI offered as an
alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. On 11
September 1985, Pearl and Deans General Manager, Rodolfo Vergara,
submitted for signature the contracts covering SM Cubao and SM Makati to
SMIs Advertising Promotions and Publicity Division Manager, Ramonlito
Abano. Only the contract for SM Makati, however, was returned signed. On 4
October 1985, Vergara wrote Abano inquiring about the other contract and
reminding him that their agreement for installation of light boxes was not
only for its SM Makati branch, but also for SM Cubao. SMI did not bother to
reply. Instead, in a letter dated 14 January 1986, SMIs house counsel
informed Pearl and Dean that it was rescinding the contract for SM Makati
due to nonperformance of the terms thereof. In his reply dated 17 February
1986, Vergara protested the unilateral action of SMI, saying it was without
basis. In the same letter, he pushed for the signing of the contract for SM
Cubao. Two years later, Metro Industrial Services, the company formerly
contracted by Pearl and Dean to fabricate its display units, offered to
construct light boxes for Shoemarts chain of stores. SMI approved the
proposal and 10 light boxes were subsequently fabricated by Metro Industrial
for SMI. After its contract with Metro Industrial was terminated, SMI engaged
the services of EYD Rainbow Advertising Corporation to make the light boxes.
Some 300 units were fabricated in 1991. These were delivered on a
staggered basis and installed at SM Megamall and SM City. Sometime in
1989, Pearl and Dean, received reports that exact copies of its light boxes
were installed at SM City and in the fastfood section of SM Cubao. Upon
10

investigation, Pearl and Dean found out that aside from the 2 reported SM
branches, light boxes similar to those it manufactures were also installed in 2
other SM stores. It further discovered that North Edsa Marketing Inc. (NEMI),
through its marketing arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units located in SMIs
different branches. Pearl and Dean noted that NEMI is a sister company of
SMI. In the light of its discoveries, Pearl and Dean sent a letter dated 11
December 1991 to both SMI and NEMI enjoining them to cease using the
subject light boxes and to remove the same from SMIs establishments. It also
demanded the discontinued use of the trademark Poster Ads, and the
payment to Pearl and Dean of compensatory damages in the amount of
P20,000,000.00. Upon receipt of the demand letter, SMI suspended the
leasing of 224 light boxes and NEMI took down its advertisements for Poster
Ads from the lighted display units in SMIs stores.
Issue: Whether or not the copyright protection of the technical
drawings also grants protection to the light box.
Held: Not having gone through the arduous examination for patents,
P&D cannot exclude others from the manufacture, sale or commercial use of
the light boxes on the sole basis of its copyright certificate over the technical
drawings. What P&D seeks is exclusivity without any opportunity for the
patent office (IPO) to scrutinize the light boxs eligibility as a patentable
invention. The irony here is that, had P&D secured a patent instead, its
exclusivity would have been for 17 years only. But through the simplified
procedure of copyright-registration with the National Library without
undergoing the rigor of defending the patentability of its invention before the
IPO and the public the P&D would be protected for 50 years. This situation
could not have been the intention of the law.
8. 246 Corporation vs. Daway (GR 157216, 20 November 2003)
Facts: On 26 November 1998, Montres Rolex S.A. and Rolex Centre
Phil., Limited, owners/proprietors of Rolex and Crown Device, filed against
246 Corporation (doing business under the name and style of Rolex Music
Lounge) a suit for trademark infringement and damages with prayer for the
issuance of a restraining order or writ of preliminary injunction before the RTC
Quezon City, Branch 90. Montres Rolex and Rolex Centre Phil. alleged that
sometime in July 1996, 246 Corp. adopted and, since then, has been using
without authority the mark Rolex in its business name Rolex Music
Lounge as well as in its newspaper advertisements as Rolex Music
Lounge, KTV, Disco & Party Club. On 21 July 2000, 246 Corp. filed a motion
for preliminary hearing on its affirmative defenses. Subsequently, on motion
of 246 Corp., the trial court issued a subpoena ad testificandum requiring
Atty. Alonzo Ancheta to appear at the preliminary hearing. Montres Rolex and
Rolex Centre Phil., in the meantime, filed a Comment and Opposition to the
motion for preliminary hearing and a motion to quash the subpoena ad
testificandum. In an Order dated 27 October 2000, the trial court quashed the
subpoena ad testificandum and denied 245 Corp.s motion for preliminary
11

hearing on affirmative defenses with motion to dismiss. With the denial of the
motion for reconsideration on 16 March 2001, 245 Corp. filed a petition for
certiorari with the Court of Appeals contending that the trial court gravely
abused its discretion in issuing its orders.
Issue: whether or not trademark infringement exist for noncompeting
goods and service bearing the same trade name.
Held: Section 123.1(f) of the Intellectual Property Code, as to
Registrability, reads a mark cannot be registered if it: xxx (f) 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. However under the old Trademark
Law where the goods for which the identical marks are used are unrelated,
there can be no likelihood of confusion and there is therefore no infringement
in the use by the junior user of the registered mark on the entirely different
goods.
9. Mighty Corp. et al. vs. E. & J. Winery

Gr. No. 154342 July 14, 2004

Facts: Respondent Gallo Winery is a foreign corporation not doing

business in the Philippines but organized and existing under the laws of the
State of California, United States of America (U.S.), where all its wineries are
located. Gallo Winery produces different kinds of wines and brandy products
and sells them in many countries under different registered trademarks,
including the GALLO and ERNEST & JULIO GALLO wine trademarks.
Respondent domestic corporation, Andresons, has been Gallo Winerys
exclusive wine importer and distributor in the Philippines since 1991, selling
these products in its own name and for its own account.
Gallo Winerys GALLO wine trademark was registered in the principal
register of the Philippine Patent Office (now Intellectual Property Office) on
November 16, 1971 under Certificate of Registration No. 17021 which was
renewed on November 16, 1991 for another 20 years. Gallo Winery also
applied for registration of its ERNEST & JULIO GALLO wine trademark on
October 11, 1990 under Application Serial No. 901011-00073599-PN but the
records do not disclose if it was ever approved by the Director of Patents.
On the other hand, petitioners Mighty Corporation and La Campana
and their sister company, Tobacco Industries of the Philippines (Tobacco
Industries), are engaged in the cultivation, manufacture, distribution and sale

12

of tobacco products for which they have been using the GALLO cigarette
trademark since 1973.
Issue: whether or not there is infringement.
Held: At the time the cause of action accrued in this case, the IPC was
not yetenacted so the relevant laws used were the Trademark Law and the
ParisConvention.The SC held that there was no infringement. The use of the
respondent of the mark Gallo for its wine products was exclusive in nature.
The
courtmentioned
two
types
of
confusion
in
Trademark
Infringement:Confusion of Goods when an otherwise prudent purchaser is
induced topurchase one product in the belief that he is purchasing another, in
whichcase defendants goods are then brought as the plaintiffs and its
poorquality reflects badly on the plaintiffs reputation.Confusion of Business
wherein the goods of the parties are different butthe defendants product can
reasonably (though mistakenly) be assumed tooriginate from the plaintiff,
thus deceiving the public into believing that thereis some connection
between the plaintiff and defendant which, in fact, doesnot exist.In
determining the likelihood of confusion, the Court must consider:(a) the
resemblance between the trademarks;(b) the similarity of the goods to which
the trademark is attached;(c) the likely effect on the purchaser; and(d) the
registrants express or implied consent and other fair and equitable
considerations. In this case, the SC employing the dominancy test, concluded
that there is no likelihood of confusion. They materially differ in color scheme,
art works and markings. Further, the two goods are not closely related
because the products belong to different classifications, form, composition
and they have different intended markets or consumers.

10.
Mc Donald Corp. vs. L. C. Big Mak Burger
August 18, 2004

Gr. No. 143993

Facts: Petitioner McDonald's Corporation ("McDonald's") is a

corporation organized under the laws of Delaware, United States. McDonald's
operates, by itself or through its franchisees, a global chain of fast-food
restaurants. McDonald's owns a family of marks including the "Big Mac" mark
for its "double-decker hamburger sandwich." McDonald's registered this
trademark with the United States Trademark Registry on 16 October 1979.
Based on this Home Registration, McDonald's applied for the registration
of the same mark in the Principal Register of the then Philippine Bureau of
Patents, Trademarks and Technology ("PBPTT"), now the Intellectual Property
Office ("IPO"). Pending approval of its application, McDonald's introduced its
"Big Mac" hamburger sandwiches in the Philippine market in September
13

1981. On 18 July 1985, the PBPTT allowed registration of the "Big Mac" mark
in the Principal Register based on its Home Registration in the United States.
Like its other marks, McDonald's displays the "Big Mac" mark in
items and paraphernalia in its restaurants, and in its outdoor and indoor
signages. From 1982 to 1990, McDonald's spent P10.5 million in
advertisement for "Big Mac" hamburger sandwiches alone. Petitioner
McGeorge Food Industries ("petitioner McGeorge"), a domestic corporation, is
McDonald's Philippine franchisee.
Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a
domestic corporation which operates fast-food outlets and snack vans in
Metro Manila and nearby provinces. Respondent corporation's menu includes
hamburger sandwiches and other food items. Respondents Francis B. Dy,
Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and
Grace Huerto ("private respondents") are the incorporators, stockholders and
directors of respondent corporation. On 21 October 1988, respondent
corporation applied with the PBPTT for the registration of the "Big Mak" mark
for its hamburger sandwiches. McDonald's opposed respondent corporation's
application on the ground that "Big Mak" was a colorable imitation of its
registered "Big Mac" mark for the same food products. McDonald's also
informed respondent Francis Dy ("respondent Dy"), the chairman of the Board
of Directors of respondent corporation, of its exclusive right to the "Big Mac"
mark and requested him to desist from using the "Big Mac" mark
or any similar mark.
Issue: whether respondents used the words "Big Mak" not only as part
of the corporate name "L.C. Big Mak Burger, Inc." but also as a trademark for
their hamburger products, and whether respondent corporation is liable for
trademark infringement and unfair competition..
Held: Petitioners base their cause of action under the first part of
Section 22, i.e. respondents allegedly used, without petitioners' consent, a
colorable imitation of the "Big Mac" mark in advertising and selling
respondents' hamburger sandwiches. This likely caused confusion in the mind
of the purchasing public on the source of the hamburgers or the identity of
the business. To establish trademark infringement, the following elements
must be shown: (1) the validity of plaintiff's mark; (2) the plaintiff's ownership
of the mark; and (3) the use of the mark or its colorable imitation by
the alleged infringer results in "likelihood of confusion." Of these, it is
the element of likelihood of confusion that is the gravamen of trademark
infringement.

14

A mark is valid if it is "distinctive" and thus not barred from registration

under Section 4 of RA 166 ("Section 4").However, once registered, not only
the mark's validity but also the registrant's ownership of the mark is prima
facie presumed. Respondents contend that of the two words in the "Big Mac"
mark, it is only the word "Mac" that is valid because the word "Big" is generic
and descriptive (proscribed under Section 4[e]), and thus "incapable of
exclusive appropriation." The contention has no merit. The "Big Mac" mark,
which should be treated in its entirety and not dissected word for word, is
neither generic nor descriptive. Generic marks are commonly used as the
name or description of akind of goods, such as "Lite" for beer or "Chocolate
Fudge" for chocolate soda drink. Descriptive marks, on the other hand,
convey the characteristics, functions, qualities or ingredients of a product to
one who has never seen it or does not know it exists, such as "Arthriticare"
for
arthritis
medication. On
the
contrary,
"Big
Mac"
falls
under the class of fanciful or arbitrary marks as it bears no logical relation to
the actual characteristics of the product it represents. As such, it is highly
distinctive and thus valid. Significantly, the trademark "Little Debbie" for
snack cakes was found arbitrary or fanciful.
The Court also finds that petitioners have duly established McDonald's
exclusive ownership of the "Big Mac" mark. Although Topacio and the Isaiyas
Group registered the "Big Mac" mark ahead of McDonald's, Topacio, as
petitioners disclosed, had already assigned his rights to McDonald's. The
Isaiyas Group, on the other hand, registered its trademark only in the
Supplemental
Register.
A
mark
which
is
not
registered
in
the PrincipalRegister, and thus not distinctive, has no real protection. Indeed,
we have held that registration in the Supplemental Register is not even a
prima facie evidence of the validity of the registrant's exclusive right to use
the mark on the goods specified in the certificate.

11.
IN-&-OUT Burger vs. SEHWANI, Incorporated
December 24,2008

Gr.

No. 179127;

Facts: Petitioner IN-N-OUT BURGER, INC., a business entity

incorporated under the laws of California, United States (US) of America,
which is a signatory to the Convention of Paris on Protection of Industrial
Property and the Agreement on Trade Related Aspects of Intellectual Property
Rights (TRIPS). Respondents Sehwani, Incorporated and Benita Frites, Inc. are
corporations organized in the Philippines. On 2 June 1997, petitioner filed
trademark and service mark applications with the Bureau of Trademarks
(BOT) of the IPO for "IN-N-OUT" and "IN-N-OUT Burger & Arrow Design."
Petitioner later found out, through the Official Action Papers issued by the IPO
on 31 May 2000, that respondent Sehwani, Incorporated had already
15

obtained Trademark Registration for the mark "IN N OUT (the inside of the
letter "O" formed like a star)." By virtue of a licensing agreement, Benita
Frites, Inc. was able to use the registered mark of respondent Sehwani,
Incorporated. Petitioner eventually filed on 4 June 2001 before the Bureau of
Legal Affairs (BLA) of the IPO an administrative complaint against
respondents for unfair competition and cancellation of trademark registration.
Petitioner averred in its complaint that it is the owner of the trade name IN-NOUT and the following trademarks: (1) "IN-N-OUT"; (2) "IN-N-OUT Burger &
Arrow Design"; and (3) "IN-N-OUT Burger Logo." These trademarks are
registered with the Trademark Office of the US and in various parts of the
world, are internationally well-known, and have become distinctive of its
business and goods through its long and exclusive commercial use.
The IPO Director of legal affairs ruled that respondent was precluded to
use the IN N OUT mark but is not guilty of infringement being a user in good
faith. The court of Appeals reversed the decision citing the IPO has no
jurisdiction over administrative proceedings on issue of unfair competition
since it is cognizable on regular courts, hence a petition for certiorari was
filed.
Issue: whether or not the IPO has jurisdiction to rule on the issue of
unfair competition and impose administrative sanction.
Held: Section 10 of the Intellectual Property Code specifically identifies
the functions of the Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.The Bureau of Legal
Affairs shall have the following functions:
10.1 Hear and decide opposition to the application for
registration of marks; cancellation of trademarks; subject to
the provisions of Section 64, cancellation of patents and utility
models, and industrial designs; and petitions for compulsory
licensing of patents;
10.2
(a) Exercise
original
jurisdiction
in
administrative complaints for violations of laws involving
intellectual
property
rights; Provided,
That
its
jurisdiction is limited to complaints where the total
damages claimed are not less than Two hundred
thousand
pesos
(P200,000): Provided, futher,
That
availment of the provisional remedies may be granted in
accordance with the Rules of Court. The Director of Legal
Affairs shall have the power to hold and punish for contempt all

16

those who disregard orders or writs issued in the course of the

proceedings.

Copyright law cases

1. Francisco G. Joaquin, Jr. vs. Hon. Franklin Drilon

January 28, 1999

Gr. No. 108946

Facts: BJ Productions Inc. (BJPI) was the holder of copyright over the
show Rhoda and Me. It holds rights over the shows format and style of
presentation. In 1991, BJPIs president Francisco Joaquin saw on TV RPN 9s
show Its a Date, which isbasically the same as Rhoda and Me. He eventually
sued Gabriel Zosa, the manager of the show Its a Date. Zosa later sought a
review of the prosecutors resolution before the Secretary of Justice (Drilon).
Drilon reversed the findings of the fiscal and directed him to dismiss the case
against Zosa.

Issue: Whether or not the decision of Drilon is valid.

Held: Yes. The essence of copyright infringement is the copying, in

whole or in part, of copyrightable materials as defined and enumerated in
Section 2 of PD. No. 49 (Copyright Law). Apart from the manner in which it is
actually expressed, however, the idea of a dating game show is a noncopyrightable material. Ideas, concepts, formats, or schemes in their abstract
form clearly do not fall within the class of works or materials susceptible of
copyright registration as provided in PD. No. 49. What is covered by BJPIs
copyright is the specific episodes of the show Rhoda and Me. Further, BJPI
should have presented the master videotape of the show in order to show the
linkage between the copyright show (Rhoda and Me) and the infringing show
(Its a Date). This is based on the ruling in 20 th Century Fox vs CA (though this
17

has been qualified by Columbia Pictures vs CA, this is still good law). Though
BJPI did provide a lot of written evidence and description to show the linkage
between the shows, the same were not enough. A television show includes
more than mere words can describe because it involves a whole spectrum of
visuals and effects, video and audio, such that non similarity or dissimilarity
may be found by merely describing the general copyright/format of both
dating game shows.

2. Pacita Habana vs. Felicidad Robles

Gr. No. 131522

July 19, 1999

Facts: Petitioners are authors and copyright owners of duly issued

certificates of copyright registration covering their published works, produced
through their combined resources and efforts, entitled COLLEGE ENGLISH
FOR TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE
FRESHMAN ENGLISH, Series 1. Respondent Felicidad Robles and Goodwill
Trading Co., Inc. are the author/publisher and distributor/seller of another
published work entitled DEVELOPING ENGLISH PROFICIENCY (DEP for
brevity), Books 1 and 2 (1985 edition) which book was covered by copyrights
issued to them. In the course of revising their published works, petitioners
scouted and looked around various bookstores to check on other textbooks
dealing with the same subject matter. By chance they came upon the book of
respondent Robles and upon perusal of said book they were surprised to see
that the book was strikingly similar to the contents, scheme of presentation,
illustrations and illustrative examples in their own book, CET.
After an itemized examination and comparison of the two books (CET
and DEP), petitioners found that several pages of the respondents book are
similar, if not all together a copy of petitioners book, which is a case of
plagiarism and copyright infringement. Petitioners 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 respondent Robles works. However, respondents ignored the demands,
hence, on July 7, 1988; petitioners filed with the Regional Trial Court, Makati,
a complaint for Infringement and/or unfair competition with damages.
Issue: whether or not, despite the apparent textual, thematic and
sequential similarity between DEP and CET, respondents committed no
copyright infringement.

18

Held: We believe that respondent 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. 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.

19