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G.R. No.

75067 February 26, 1988


PUMA SPORTSCHUHFABRIKEN RUDOLF
DASSLER, K.G., petitioner
vs.
THE INTERMEDIATE APPELLATE COURT and
MIL-ORO MANUFACTURING
CORPORATION, respondents.
GUTIERREZ, JR., J .:
On July 25, 1985, the petitioner, a foreign corporation
duly organized and existing under the laws of the
Federal Republic of Germany and the manufacturer
and producer of "PUMA PRODUCTS," filed a
complaint for infringement of patent or trademark with
a prayer for the issuance of a writ of preliminary
injunction against the private respondent before the
Regional Trial Court of Makati.
Prior to the filing of the said civil suit, three cases
were pending before the Philippine Patent Office.
On July 31, 1985, the TRIAL COURT ISSUED A
TEMPORARY RESTRAINING ORDER, restraining
the private respondent and the Director of Patents
from using the trademark "PUMA' or any
reproduction, counterfeit copy or colorable imitation
thereof, and to withdraw from the market all products
bearing the same trademark.
On August 9, 1985, the private respondent filed a
motion to dismiss on the grounds that the petitioners'
complaint states no cause of action, petitioner has no
legal personality to sue, and litis pendentia.
On August 19, 1985, the trial court denied the motion
to dismiss and at the same time granted the
petitioner's application for a writ of injunction. The
private respondents appealed to the Court of
Appeals.
In reversing the order of the trial court, the COURT
OF APPEALS ruled that the requisites of lis
pendens as ground for the motion to dismiss have
been met.
In this petition for review, the petitioner contends that
the Court of appeals erred in holding that: (1) it had
no legal capacity to sue; (2) the doctrine of lis
pendens is applicable as a ground for dismissing the
case and (3) the writ of injunction was improperly
issued.
Petitioner maintains that it has substantially complied
with the requirements of Section 21-A of Republic Act
R.A. No. 166, as amended. According to the
petitioner, its complaint specifically alleged that it is
not doing business in the Philippines and is suing
under the said Repulbic Act; that Section 21-A
thereof provides that "the country of which the said
corporation or juristic person is a citizen, or in which it
is domiciled, by treaty, convention or law, grants a
similar privilege to corporate or juristic persons of the
Philippines" but does not mandatorily require that
such reciprocity between the Federal Republic of
Germany and the Philippines be pleaded; that such
reciprocity arrangement is embodied in and supplied
by the Union Convention for the Protection of
Industrial Property Paris Convention) to which both
the Philippines and Federal Republic of Germany are
signatories and that since the Paris 'Convention is a
treaty which, pursuant to our Constitution, forms part
of the law of the land, our courts are bound to take
judicial notice of such treaty, and, consequently, this
fact need not be averred in the complaint.
We agree.
In the leading case of La Chemise Lacoste, S.A .v.
Fernandez, (129 SCRA 373), we ruled:
Thus, in Western Equipment and
Supply Co. v. Reyes (51 Phil. 11
5), this Court held that a foreign
corporation which has never
done any business in the
Philippines and which is
unlicensed and unregistered to
do business here, but is widely
and favorably known in the
Philippines through the use
therein of its products bearing its
corporate and tradename, has a
legal right to maintain an action
in the Philippines to restrain the
residents and inhabitants thereof
from organizing a corporation
therein bearing the same name
as the foreign corporation, when
it appears that they have
personal knowledge of the
existence of such a foreign
corporation, and it is apparent
that the purpose of the proposed
domestic corporation is to deal
and trade in the same goods as
The object of the Convention is
to accord a national of a member
nation extensive protection
'against infringement and other
types of unfair competition
[Vanity Fair Mills, Inc. v. T. Eaton
Co., 234 F. 2d 633]." (at p. 165)
The mandate of the
aforementioned Convention finds
implementation in Section 37 of
RA No. 166, otherwise known as
the trademark Law:
Rights of Foreign Registrants.
Persons who are nationals of,
domiciled in, or have a bona fide
or effective business or
commercial establishment in any
foreign country, which is a party
to an international convention or
treaty relating to marks or
tradenames on the represssion
of unfair competition to which the
Philippines may be party, shall
be entitled to the benefits and
subject to the provisions of this
Act ...
Tradenames of persons
described in the first paragraph
of this section shall be protected
without the obligation of filing or
registration whether or not they
form part of marks.
We, therefore, hold that the petitioner had the legal
capacity to file the action below.
Anent the issue of lis pendens as a ground for a
motion to dismiss, the petitioner submits that the
relief prayed for in its civil action is different from the
relief sought in the Inter Partes cases. More
important, however, is the fact that for lis pendens to
be a valid ground for the dismissal of a case, the
other case pending between the same parties and
having the same cause must be a court action.
Thus, the Court of Appeals likewise erred in holding
that the requisites of lis pendens were present so as
to justify the dismissal of the case below.
As regards the propriety of the issuance of the writ of
preliminary injunuction, the records show that herein
private respondent was given the opportunity to
present its counter-evidence against the issuance
thereof but it intentionally refused to do so to be
consistent with its theory that the civil case should be
dismissed in the first place.
Considering the fact that "PUMA" is an internationally
known brand name, it is pertinent to reiterate the
directive to lower courts, which equally applies to
administrative agencies, found in La Chemise
Lacoste, S.A. v. Fernandez, supra):
The greater victim is not so
much the manufacturer whose
product is being faked but the
Filipino consuming public and in
the case of exportations, our
image abroad. Judges all over
the country are well advised to
remember that court processes
should not be used as
instruments to, unwittingly or
otherwise, aid counterfeiters and
intellectual pirates, tie the hands
of the law as it seeks to protect
the Filipino consuming public
and frustrate executive and
administrative implementation of
solemn commitments pursuant
to international conventions and
treaties. (at p. 403)
WHEREFORE, the appealed decision of the Court of
Appeals dated June 23, 1986 is REVERSED and
SET ASIDE and the order of the Regional Trial Court
of Makati is hereby Reinstated.
SO ORDERED.