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Kho vs CA


On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages with a
prayer for the issuance of a writ of preliminary injunction, against the respondents Summerville General
Merchandising and Company (Summerville, for brevity) and Ang Tiam Chay.

The petitioners complaint alleges that petitioner, doing business under the name and style of KEC
Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream
Container/Case; that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for
medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office on February 7, 1980; that respondent Summerville
advertised and sold petitioners cream products under the brand name Chin Chun Su, in similar containers
that petitioner uses, thereby misleading the public, and resulting in the decline in the petitioners business
sales and income; and, that the respondents should be enjoined from allegedly infringing on the
copyrights and patents of the petitioner.


W/N petitioner has right to exclusive use of the subject trade name and its container.


No. Petitioner has no right to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used
it before anybody else did. The petitioners copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a clear right over the said name and
container to the exclusion of others, not having proven that she has registered a trademark thereto or
used the same before anyone did.
Mirpuri vs CA


On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed
an application with the Bureau of Patents for the registration of the trademark "Barbizon" for use in
brassieres and ladies undergarments. Escobar alleged that she had been manufacturing and selling
these products under the firm name "L & BM Commercial" since March 3, 1970. Private respondent
Barbizon Corporation, a corporation organized and doing business under the laws of New York, U.S.A.,
opposed the application. This decision became final and on September 11, 1974, Lolita Escobar was
issued a certificate of registration for the trademark "Barbizon." The trademark was "for use in "brassieres
and lady's underwear garments like panties." In 1979, however, Escobar failed to file with the Bureau of
Patents the Affidavit of Use of the trademark required under Section 12 of Republic Act (R.A.) No. 166,
the Philippine Trademark Law. Due to this failure, the Bureau of Patents cancelled Escobar's certificate of
registration. On May 27, 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri filed
his own application for registration of Escobar's trademark. Escobar later assigned her application to
herein petitioner and this application was opposed by private respondent. CA Resolutions GRANTED the
petition and petitioner is declared the owner and prior user of the business name "BARBIZON
INTERNATIONAL" dated March 10, 1987 and issued in the name of respondent, is hereby ordered
revoked and cancelled.


Whether or not the treaty affords protection to a foreign corporation against a Philippine applicant for the
registration of a similar trademark.


Yes. The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris
Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade names and indications of source or
appellations of origin, and at the same time aims to repress unfair competition.

The Convention is essentially a compact among various countries which, as members of the Union, have
pledged to accord to citizens of the other member countries trademark and other rights comparable to
those accorded their own citizens by their domestic laws for an effective protection against unfair

In short, foreign nationals are to be given the same treatment in each of the member countries as that
country makes available to its own citizens. Nationals of the various member nations are thus assured of
a certain minimum of international protection of their industrial property.

The Philippines and the United States of America have acceded to the WTO Agreement. This Agreement
has revolutionized international business and economic relations among states, and has propelled the
world towards trade liberalization and economic globalization. Protectionism and isolationism belong to
the past. Trade is no longer confined to a bilateral system.
Pest Management Association of the Philippines (PMAP) vs. Fertilizer and Pesticide Authority
(FPA), 516 SCRA 360, February 21, 2007


1. Petitioner, a non-stock corporation duly organized and existing under the laws of the Philippines, is an
association of pesticide handlers duly licensed by respondent Fertilizer and Pesticide Authority (FPA). It
questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory Policies and Implementing

2. Petitioner argued that the specific provision on the protection of the proprietary data in FPAs Pesticide
Regulatory Policies and Implementing Guidelines is unlawful for going counter to the objectives of
Presidential Decree No. 1144 (P.D. No. 1144); for exceeding the limits of delegated authority; and for
encroaching on the exclusive jurisdiction of the Intellectual Property Office.

3. RTC dismissed the petition, hence the petition for review on certiori.





No. There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise
known as the Intellectual Property Code of the Philippines. Section 5 thereof enumerates the functions of
the IPO. Nowhere in said provision does it state nor can it be inferred that the law intended the IPO to
have the exclusive authority to protect or promote intellectual property rights in the Philippines. On the
contrary, paragraph (g) of said Section even provides that the IPO shall coordinate with other government
agencies and the private sector efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country.


Sec. 5. Functions of the Intellectual Property Office (IPO) provides that.

5.1. To administer and implement the State policies declared in this Act, there is hereby created the
Intellectual Property Office (IPO) which shall have the following functions:

[a] Examine applications for grant of letters patent for inventions and register utility models and industrial
[b] Examine applications for the registration of marks, geographic indication, integrated circuits;
[c] Register technology transfer arrangements and settle disputes involving technology transfer payments
covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement
strategies to promote and facilitate technology transfer;
[d] Promote the use of patent information as a tool for technology development;
[e] Publish regularly in its own publication the patents, marks, utility models and industrial designs,
issued and approved, and the technology transfer arrangements registered;
[f] Administratively adjudicate contested proceedings affecting intellectual property rights; and
[g] Coordinate with other government agencies and the private sector efforts to formulate and implement
plans and policies to strengthen the protection of intellectual property rights in the country.
Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)


Mauro Malalang Santos filed an action for damages for unauthorized use, adaptation and appropriation
by the MCCULLOUGH PRINTING COMPANY of the intellectual creation or artistic design of a Christmas
card by him (Mauro Maglalang Santos) based on Article 721 and 722 of the Civil Code of the Philippines.
The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri,
for his personal Christmas Card greetings for the year 1959, the artistic motif in question. The following
year the defendant McCullough Printing Company, without the knowledge and authority of plaintiff,
displayed the very design in its album of Christmas cards and offered it for sale, for a price. For such
unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it has
placed plaintiff's professional integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri.
The Christmas card depicts a Philippine rural Christmas time scene consisting of a woman and a child in a
nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath
which appears the plaintiff's pen name, Malang.
The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri,
for his personal Christmas Card greetings for the year 1959, the artistic motif in question. The following
year the defendant McCullough Printing Company, without the knowledge and authority of plaintiff,
displayed the very design in its album of Christmas cards and offered it for sale, for a price. For such
unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it has
placed plaintiff's professional integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri.
The lower court dismissed the complaint. Hence, this petition.


Whether or not the plaintiff is entitled to protection, notwithstanding the, fact that he has not
copyrighted his design?


NO. The Supreme Court found that plaintiff is not entitled to a protection, the provision of the Civil Code,
notwithstanding. Paragraph 33 of Patent Office Administrative Order No. 3 (as amended dated September 18,
1947) entitled "Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims"
promulgated pursuant to Republic Act 165, provides, among others, that an intellectual creation should be
copyrighted thirty (30) days after its publication, if made in Manila, or within sixty (60) day's if made elsewhere,
failure of which renders such creation public property. In the case at bar, even as of this moment, there is no
copyright for the design in question.


This is a petition seeking to nullify the Philippine ratification of the World Trade Organization (WTO)
Agreement. Petitioners question the concurrence of herein respondents acting in their capacities as
Senators via signing the said agreement.
The WTO opens access to foreign markets, especially its major trading partners, through the reduction of
tariffs on its exports, particularly agricultural and industrial products. Thus, provides new opportunities for
the service sector cost and uncertainty associated with exporting and more investment in the country.
These are the predicted benefits as reflected in the agreement and as viewed by the signatory Senators, a
free market espoused by WTO.
Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles of the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of the
Supreme Court to promulgate rules concerning pleading, practice and procedures and is a derogation of
legislative power.


Whether the provisions of the Agreement Establishing the World Trade Organization contravene the Philippine


NO. Suffice it to say that the reciprocity clause of WTO more than justifies such intrusion, if any actually
exists. Besides, Article 34 does not contain an unreasonable burden, consistent as it is with due process and the
concept of adversarial dispute settlement inherent in our judicial system. So too, since the Philippines is a
signatory to most international conventions on patents, trademarks and copyrights, the adjustment in legislation
and rules of procedure will not be substantial.

A WTO Member is required to provide a rule of disputable (note the words in the absence of proof to the
contrary) presumption that a product shown to be identical to one produced with the use of a patented process
shall be deemed to have been obtained by the (illegal) use of the said patented process, (1) where such product
obtained by the patented product is new, or (2) where there is substantial likelihood that the identical product
was made with the use of the said patented process but the owner of the patent could not determine the exact
process used in obtaining such identical product. Hence, the burden of proof contemplated by Article 34 should
actually be understood as the duty of the alleged patent infringer to overthrow such presumption. Such burden,
properly understood, actually refers to the burden of evidence (burden of going forward) placed on the producer
of the identical (or fake) product to show that his product was produced without the use of the patented process.

The Senate Act, after deliberation and voting, of voluntarily and overwhelmingly giving its consent to the
WTO Agreement thereby making it a part of the law of the land, is a legitimate exercise of its sovereign duty and
power. By the doctrine of incorporation, the country is bound by generally accepted principles of international law,
which are considered to be autom atically part of our own laws. One of the oldest and most fundamental rules in
international law is pacta sunt servandainternational agreements must be performed in good faith. A treaty
engagement is not a mere moral obligation but creates a legally binding obligation on the parties.

Lastly, notwithstanding objections against possible limitations on national sovereignty, the WTO remains
as the only viable structure for multilateral trading and the veritable forum for the development of international
trade law.


George Aiken's Chicken" is fast food restaurant in Pittsburgh, Pennsylvania, owned and operated by
George Aiken. Food can be purchased and consumed inside of the store or ordered and taken out. Inside
the store, radio station broadcasts are played over loud speakers that are audible to anyone in the
restaurant. On March 11, 1972, two songs copyrighted by Twentieth Century Music Corp. were played
over the radio and heard by customers in the restaurant. While the radio station broadcasting the songs
was licensed by the American Society of Composers, Authors and Publishers (ASCAP) to play them, Aiken's
establishment was not.


Whether or not Aiken infringed on petitioners exclusive right.


NO. Respondent did not infringe upon petitioners' exclusive right, under the Copyright Act, "[t]o perform
the copyrighted work publicly for profit," since the radio reception did not constitute a "performance" of the
copyrighted songs.


Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up of
On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright
Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushing for Automobile."
After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William
Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation. It
was alleged that the respondents therein reproduced and distributed the said models penalized under
Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293.
The respondents averred that the works covered by the certificates issued by the National Library are not
artistic in nature; they are considered automotive spareparts and pertain to technology. They aver that
the models are not original, and assuch are the proper subject of a patent, not copyright.


WON the Leaf Spring Eye Bushing for Automobile is a work of art.


NO. We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the
authors intellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a
useful article produced on an industrial scale, is protected by copyright law. However, the law refers to a work of
applied art which is an artistic creation. It bears stressing that there is no copyright protection for works of applied
art or industrial design which have aesthetic or artistic features that cannot be identified separately from the
utilitarian aspects of the article. Functional components of useful articles, no matter how artistically designed,
have generally been denied copyright protection unless they are separable from the useful article

In this case, the petitioners models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value.

A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the
aforesaid.[40] Essentially, a utility model refers to an invention in the mechanical field. This is the reason why its
object is sometimes described as a device or useful object.[41] A utility model varies from an invention, for which a
patent for invention is, likewise, available, on at least three aspects: first, the requisite of inventive step[42] in a
patent for invention is not required; second, the maximum term of protection is only seven years[43] compared to
a patent which is twenty years,[44] both reckoned from the date of the application; and third, the provisions on
utility model dispense with its substantive examination[45] and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of the components
they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the
decorative quality or value that must characterize authentic works of applied art. They are not even artistic
creations with incidental utilitarian functions or works incorporated in a useful article. In actuality, the personal
properties described in the search warrants are mechanical works, the principal function of which is utility sans any
aesthetic embellishment.


Microsoft Corporation ("Microsoft"), a Delaware, United States corporation, owns the copyright and
trademark to several computer software. Beltron Computer Philippines, Inc. ("Beltron") and Taiwan
Machinery Display & Trade Center, Inc. ("TMTC") are domestic corporations.
In May 1993, Microsoft and Beltron entered into a Licensing Agreement ("Agreement"). Under Section
2(a) of the Agreement, as amended in January 1994, Microsoft authorized Beltron, for a fee, to:

(1) reproduce and install no more than one (1) copy of Microsoft software on each Customer System
hard disk or Read Only Memory ("ROM")
(2) distribute directly or indirectly and license copies of the Product in object code form to end users
The Agreement also authorized Microsoft and Beltron to terminate the contract if the other fails to
comply with any of the Agreements provisions. Microsoft terminated the Agreement effective 22 June
1995 for Beltrons non-payment of royalties.
Afterwards, Microsoft learned that Beltron were illegally copying and selling Microsoft software.
Consequently, Microsoft, through its Philippine agent, hired the services of Pinkerton Consulting Services
("PCS"), a private investigative firm. Microsoft also sought the assistance of the National Bureau of
Investigation ("NBI").
On 10 November 1995, a PCS employee and an NBI agent posing as representatives of a computer shop,
bought computer hardware (central processing unit ("CPU") and computer monitor) and software (12
computer disks ("CDs") in read-only memory ("ROM") format) from Beltron. The CPU contained pre-
installed Microsoft Windows 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic containers
with Microsoft packaging, also contained Microsoft software. At least two of the CD-ROMs were
"installers," so-called because they contain several software (Microsoft only or both Microsoft and non-
Microsoft). The PCS employee and the NBI agent were not given the Microsoft end-user license
agreements, users manuals, registration cards or certificates of authenticity for the articles they
purchased. The receipt issued to them for the CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC.
The NBI searched the premises of Beltron and TMTC and seized several computer-related hardware,
software, accessories, and paraphernalia based on the search warrant applied by Microsoft.
Based on the articles obtained from Beltron and TMC, Microsoft and a certain Lotus Development
Corporation ("Lotus Corporation") charged Beltron and TMC before the Department of Justice ("DOJ")
with copyright infringement under Section 5(A) in relation to Section 29 of Presidential Decree No. 49, as
amended, ("PD 49") and with unfair competition under Article 189(1) of the Revised Penal Code.
Microsoft alleged that respondents illegally copied and sold Microsoft software.


Whether or not Beltron and TMC are liable for copyright infringement and unfair competition?


The gravamen of copyright infringement is not merely the unauthorized "manufacturing" of intellectual
works but rather the unauthorized performance of any of the acts covered by Section 5. Hence, any person who
performs any of the acts under Section 5 without obtaining the copyright owners prior consent renders himself
civilly and criminally liable for copyright infringement.

Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term
in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of
anything the sole right to do which is conferred by statute on the owner of the copyright.

Significantly, under Section 5(A), a copyright owner is vested with the exclusive right to "copy, distribute,
multiply, [and] sell" his intellectual works.

The elements of unfair competition under Article 189(1)43 of the Revised Penal Code are:

(a) That the offender gives his goods the general appearance of the goods of another manufacturer or
(b) That the general appearance is shown in the
(1) goods themselves, or in the
(2) wrapping of their packages, or in the
(3) device or words therein, or in
(4) any other feature of their appearance
(c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to
do the same with a like purpose[; and]
(d) That there is actual intent to deceive the public or defraud a competitor.


Pearl and Dean is a corporation in the manufacture of advertising display units also known as light boxes,
which were manufactured by Metro Industrial Services. A copyright Registration was obtained in 1981.
These were marketed in the name of "Poster Ads". They also applied for a registration of trademark with
the Bureau of Patents in 1983, but was only approved in 19988.
In 1985, petitioner had an agreement with respondent Shoemart Inc (SMI) to install these light boxes in
their Makati and Cubao branch, Only the Makati branch was able to sigh the agreement.
In 1986, the contract was rescinded unilaterally by SMI, and instead contracted with Metro Industrial
Services. They installed these lightboxes in different SM city branches, including Cubao and Makati, with
association with North Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and
NEMI to put down their installations of the light boxes, and payment of compensatory damages worth
P20M. Claiming that respondents failed to comply, they filed a case for infringement of trademark and
copyright, unfair competition and damages. RTC ruled in favor of petitioner, but CA reversed.
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 ten (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.
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 investigation, Pearl and Dean found out that aside
from the two (2) reported SM branches, light boxes similar to those it manufactures were also installed in
two (2) other SM stores. It further discovered that defendant-appellant 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. It therefore filed a case for infringement of
trademark and copyright, unfair competition and damages.
SMI maintained that it independently developed its poster panels using commonly known techniques and
available technology, without notice of or reference to Pearl and Deans copyright. SMI noted that the
registration of the mark Poster Ads was only for stationeries such as letterheads, envelopes, and the
like. Besides, according to SMI, the word Poster Ads is a generic term which cannot be appropriated as a
The RTC of Makati City decided in favor of P & D. On appeal, however, the Court of Appeals reversed the
trial courts ruling. Hence, this petition.


(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement

(3) Whether there was a trademark infringement

(4) Whether there was unfair competition



(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute. Therefore, it
can only cover the works falling within the statutory enumeration or description. Since the copyright was classified
under class "O" works, which includes "prints, pictorial illustrations, advertising copies, labels, tags and box wraps,"
and does not include the light box itself. A lightbox, even admitted by the president of petitioner company, was
neither a literary nor an artistic work but an engineering or marketing invention, thus not included under a

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent anyone from
manufacturing or commercially using the same. Patent has a three-fold purpose: a) to foster and reward invention;
b) promotes disclosures of invention and permit public to use the same upon expiration; c) stringent requirements
for patent protection to ensure in the public domain remain there for free use of the public. Since petitioner was
not able to go through such examination, it cannot exclude others from manufacturing, or selling such lightboxes.
No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right to use its own
symbol only to the description specified in the certificate. It cannot prevent others to use the same trademark with
a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean, thus it cannot
be considered to use such term to be unfair competition against the petitioner.


Private respondent files with the Phil. Patent Office and application for registration of the trademark
CAMIA for his product ham which falls under Class 47(Foods and Ingredients of Food) of the Rules of
Practice of the Patent Office, while certificate of registration No. 1353-S applies to abrasive detergents,
polishing materials and soap of all kinds (Class 4).
The trademark "CAMIA" was first used ill the Philippines by petitioner on its products in 1922.
On November 25, 1960, respondent Ng Sam, a citizen residing in Iloilo City, filed an application with the
Philippine Patent office for registration of the Identical trademark "CAMIA" for his product, ham, which
likewise falls under Class 47. Alleged date of first use of the trademark by respondent was on February 10,
Director of Patents rendered a decision allowing registration of the trademark CAMIAin favor of Ng Sam
finding that the goods of the parties are not of a character which purchasers would be likely to attribute
to a common origin.


Whether or not the product of the respondent and those of the petitioner are so related that the use of the same
trademark CAMIA on said goods would likely result in confusion as to their source.


NO. The right to a trademark is a limited one, in the sense that others may used the same mark on
unrelated goods.

The mere fact that one person has adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others on articles of a different description

Where no confusion is likely to arise, as in this case, registration of a similar or even Identical mark may be

A trademark is designed to Identify the user. But it should be so distinctive and sufficiently original as to
enable those who come into contact with it to recognize instantly the Identity of the user. " It must be affirmative
and definite, significant and distinctive, capable to indicate origin.

if a mark is so commonplace that it cannot be readily distinguished from others, then it is apparent that it
cannot Identify a particular business; and he who first adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will not be deceived.


Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines and doing business at
543 M. de Santos (Botica Divisoria), Manila (hereinafter referred to as the applicant), on October 14, 1958
filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster, with the
Philippine Patent Office, asserting its continuous use in the Philippines since June 9, 1958. 1 The Marvex
Commercial Co., Inc., a corporation also duly organized under the laws of the Philippines (hereinafter
referred to as the oppositor), on July 24, 1959 filed an opposition thereto, alleging that the registration of
such trademark would violate its right to and interest in the trademark "SALONPAS" used on another
medicated plaster, which is registered in its name under Certificate of Registration 5486, issued by the
Director of Patents on September 29, 1956, and that both trademarks when used on medicated plaster
would mislead the public as they are confusingly similar.
After due hearing, the Director of Patents in his decision of August 18, 1961 dismissed the opposition and
gave due course to the petition, stating in part that "confusion, mistake, or deception among the
purchasers will not likely and reasonably occur" when both trademarks are applied to medicated plaster.


Is the trademark "LIONPAS" confusingly similar to the trade mark "SALONPAS"


YES. In the case at bar, "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

The "SALONPAS" mark is not before this Court. Our meticulous examination of the entire record has failed to yield
a sample of such mark. We have therefore proceeded to analyze the two marks, vis-a-vis each other, on the basis
of what we can derive from the record for a comparative study. And our conclusion, in disagreement with that of
the Director of Patents, is not based on a comparison of the appearance, form, style, shape, size or format of the
trademarks, which we can not make because, as we have already observed, the "SALONPAS" mark is not before us,
but on a comparison of the spelling, sound and pronunciation of the two words.

It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound.

Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to the body with
curative powers. "PAS," being merely descriptive, furnishes no indication of the origin of the article and therefore
is open for appropriation by anyone (Ethepa v. Director of Patents, L-20635, March 31, 1966) and may properly
become the subject of a trademark by combination with another word or phrase.

Two letters of "SALONPAS" are missing in "LIONPAS" : the first letter a and the letter s. Be that as it may, when the
two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the
radio, similarity in sound is of especial significance (Co Tiong Sa v. Director of Patents, 95 Phil. I, citing Nims, The
Law of Unfair Competition and Trademarks, 4th ed., Vol. 2, pp. 678-679). "The importance of this rule is
emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend

The petitioner was a business entity engaged in restaurant industry and incorporated in the US which is a signatory
to the Convention of Paris and the Agreement on Trade Related Aspects of the Intellectual Property Rights. The
respondents were corporation organized in the Philippines.

The petitioner filed a 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. It was later found out by the petitioner that respondent SEHWANI had
already obtained Trademark Registration for the mark IN N OUT (Inside of letter O formed like a star). By virtue of
licensing agreement, Benita Fries was able to use the registered mark of SEHWANI.

Petitioner filed an administrative complain before the Bureau of Legal Affairs against the respondents for unfair
competition and cancellation of trademark registration. According to the petitioner, the trademarks IN-N-OUT, IN-N-
OUT Burger and Arrow Design, and IN-N-OUT Burger were registered with the Trademark Office of the US and in
various parts in the world, are internationally well-known and have become distinctive of its business and goods
through its long and exclusive commercial use.

On the other hand, the respondents averred that they had been using the mark IN N OUT since 1982. In 1991,
SEHWANI INC filed with the Bureau of Patents, Trademarks, and Technology Transfer an application for the
registration of the disputed mark. Later on, Benita Fries entered into a Licensing Agreement with SEHWANI, wherein
the former entitled to use its registered mark.

The IPO Director of Legal Affairs rendered a decision in favor of the petitioner. Based on the decision, petitioner had
the legal capacity to sue in the Philippines, since its country of origin or domicile was a member of and a signatory to
the Convention of Paris on Protection of Industrial Property. And although petitioner had never done business in the
Philippines, it was widely known in this country through the use herein of products bearing its corporate and trade
name. Thus, the respondents registration of the mark was cancelled. Hence, two cases arose from this petition.

GR No. 171053
In this case, the respondents appealed the decision to the IPO Director General but it was dismissed for failure to file
within the 15-day reglementary period to appeal. They appealed it further to the Court of Appeals, challenging the
dismissal of their appeal by the IPO Director General and affirmed the decision of the IPO Director of Legal Affairs.

The appellate court dismissed the respondents petition and affirmed the decision of the IPO Director General and
IPO Director of Legal Affairs. It confirmed that respondents appeal before the IPO Director General was filed out of
time and that it was only proper to cancel the registration of the disputed trademark in the name of respondent
Sehwani, Incorporated and to permanently enjoin respondents from using the same.

The Supreme Court promulgated a decision in GR. No. 171053, finding that herein respondents failed to file their
Appeal Memorandum before the IPO Director General within the period prescribed by law and, consequently, they
lost their right to appeal. The Court further affirmed the decision of the IPO Director of Legal Affairs holding that
herein petitioner had the legal capacity to sue for the protection of its trademarks, even though it was not doing
business in the Philippines, and ordering the cancellation of the registration obtained by herein respondent Sehwani.

GR. No. 179127

The respondents were able to file a timely appeal before the IPO Director General. During the pendency of the
appeal, the Court of Appeals rendered a decision dismissing the respondents petition. Later on, the IPO Director
General rendered a decision and found the respondents guilty of unfair competition. Aggrieved of the decision, they
appealed to the Court of Appeals.

Ruling of the CA:

The Court of Appeals reversed the decision of the Court of Appeals on the grounds that the IPO Director General had
no jurisdiction over the case. The appellate court declared that Section 163 of the Intellectual Property Code
specifically confers upon the regular courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases involving
provisions of the Intellectual Property Code, particularly trademarks. Consequently, the IPO Director General had no
jurisdiction to rule in its Decision dated 23 December 2005 on supposed violations of these provisions of the
Intellectual Property Code.

Hence, the present petition.

Whether or not the Intellectual Property Office has jurisdiction over administrative cases for intellectual property rights

The Supreme Court did not agree with the decision of the Court of Appeals. Under Section 10 of the Intellectual
Property Code, it specifically identifies the functions of the Bureau of Legal Affairs, to wit:

Hear and decide opposition to the application for registration of marks;

cancellation of trademarks;
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 cancellation of any permit, license, authority, or registration which may have been granted by
the Office;
The assessment of damages

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair competition, nothing in the said section
states that the regular courts have sole jurisdiction over unfair competition cases, to the exclusion of administrative
bodies. On the contrary, Sections 160 and 170, which are also found under Part III of the Intellectual Property Code,
recognize the concurrent jurisdiction of civil courts and the IPO over unfair competition cases.

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to decide the petitioners
administrative case against respondents and the IPO Director General had exclusive jurisdiction over the appeal of
the judgment of the IPO Director of Legal Affairs.

BJ Productions was the holder of Certificate of Copyright of Rhoda and Me, a dating game show aired from 1970 to
1977. While watching television, the petitioner, president of the BJPI, saw on RP Channel 9 an episode of Its a
Date, produced by IXL Productions Inc,. So, he wrote a letter to private respondent, Gabriel M. Zosa, president and
general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and demanding the IXL to
discontinue airing Its a Date.

Zosa apologized to Joaquin thru a letter and requested a meeting to discuss a possible settlement. However, IXL
continued to air Its a Date, prompting the petitioner to send a second letter wherein he demanded and warned that
if IXL did not comply, he would endorse the matter to his attorneys for proper legal action.

An information for violation of P.D. No. 49 was filed against the private respondent and several officers of RP
Channel 9 in the RTC. However, private respondent Zosa sought a review of the resolution of the Assistant City
Prosecutor before the Department of Justice.

The Secretary of Justice (Franklin Drilon) reversed the findings of the Assistant Prosecutor and directed him to move
for the dismissal of the case against private respondents. Petitioner filed for a motion for reconsideration but it was

Hence this petition.

Whether or not the audio-visual recordings of each episode of Rhoda and Me, fall within the class of work
mentioned in P.D. 49 , Section 2 (m).

The Court dismissed the case.

P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The
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.[15] Thus,

Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no
protection shall extend, under this law, to any idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a
work; news of the day and other miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal nature, as well as any official
translation thereof.

According to the court, petitioner BJPIs copyright covers audio-visual recordings of each episode of Rhoda and Me,
as falling within the class of works mentioned in P.D. 49, 2(M), to wit:
Cinematographic works and works produced by a process analogous to cinematography or any process for
making audio-visual recordings;
The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the very
nature of the subject of petitioner BJPIs copyright, the investigating prosecutor should have the opportunity to
compare the videotapes of the two shows.

Mere description by words of the general format of the two dating game shows is insufficient; the presentation of the
master videotape in evidence was indispensable to the determination of the existence of probable cause. As aptly
observed by respondent Secretary of Justice:
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 no similarity or dissimilarity may be found by merely
describing the general copyright/format of both dating game shows.
and GOODWILL TRADING CO., INC., respondents.

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.

The petitioners came upon the book of Respondent Robles when they scouted and looked around different
bookstores to check on textbooks dealing with the same subject matter. After itemized and closer examination, they
found out that several pages of book were similar to the contents, illustration, and illustrative examples in their book,
CET. According to the petitioners, it constituted plagiarism and copyright infringement.

Petitioners made demands for damages against the 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,
the respondents ignored the demands. Thus, the petitioner filed a complaint to the Regional Trial Court. The trial
court dismissed the case based on the merits. The petitioners filed their notice of appeal but the court directed its
secretary to forward all the records to the Court of Appeals.

On appeal, petitioners argued that the trial court completely disregarded their evidence and fully subscribed to the
arguments of respondent Robles that the books in issue were purely the product of her researches and studies and
that the copied portions were inspired by foreign authors and as such not subject to copyright. Petitioners also
assailed the findings of the trial court that they were animated by bad faith in instituting the complaint.

The Court of Appeals affirmed the ruling of the trial court. According also to the appellate court, that similarity of the
allegedly infringed work to the authors or proprietors copyrighted work does not of itself establish copyright
infringement, especially if the similarity results from the fact that both works deal with the same subject or have the
same common source, as in this case. Hence, this petition.

1. Whether or not despite the apparent textual, thematic and sequential similarity between DEP and CET,
respondents committed no copyright infringement;
2. Whether or not respondent Robles abused a writers right to fair use, in violation of Section 11 of
Presidential Decree No. 49.

The Court granted the petition.
On the first issue, the court answered it in affirmative that respondents indeed had committed infringement. Upon
looking at the examination of the evidence, the court believed 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.
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.

In cases of infringement, copying alone is not what is prohibited. The copying must produce an injurious effect. Here,
the injury consists in that respondent Robles lifted from petitioners book materials that were the result of the latters
research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial
use and did not acknowledge petitioners as her source.

On the second issue, the court found that the respondent really abused the writers right to fair use under Sec. 11 of
PD. 45. Since, the complaint was filed at the time Presidential Decree No. 49 was in force. At present, all laws
dealing with the protection of intellectual property rights have been consolidated under RA 8293, in which, the same
rule would apply. According to the court, the law provides that:
The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording
of film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use:
Provided, That the source and the name of the author, if appearing in the work is mentioned.

Therefore, respondent Robles should be made liable for infringement.


The respondent, Sunshine Home Video Inc, a video establishment, owned and operated by Pelindario in Makati,
Metro Manila. The petitioner sought the assistance of the NBI for violation of PD 49, as amended. The NBI made
discreet surveillance on various video establishments in Metro Manila including the respondent. The NBI Senior
Agent applied for a search warrant against Sunshine seeking the seizure, among others, of pirated video tapes of
copyrighted films all of which were enumerated in a list attached to the application; and, television sets, video
cassettes and/or laser disc recordings equipment and other machines and paraphernalia used or intended to be used
in the unlawful exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the premises
above described. After the queries made by the court a quo, a search warrant was issued. On December 16, 1987, a
Return of Search Warrant was filed with the Court. A Motion To Lift the Order of Search Warrant was filed but was
later denied for lack of merit.

A Motion for reconsideration of the Order of denial was filed. The court a quo granted the said motion for
reconsideration and justified it in this manner:
It is undisputed that the master tapes of the copyrighted films from which the pirated films were allegedly
copies, were never presented in the proceedings for the issuance of the search warrants in question. The
orders of the Court granting the search warrants and denying the urgent motion to lift order of search
warrants were, therefore, issued in error. Consequently, they must be set aside.

The Petitioner appealed the decision to the Court of Appeals. However, the court appeals affirmed the decision of the
lower court, quashing the search warrant for violation of the Presidential Decree 49.

Hence this petition.

Whether or not absence such registration, as in this case, there was no right created, hence, no infringement under
PD 49 as amended?

As correctly pointed out by private complainants-oppositors, the Department of Justice has resolved this legal
question as far back as December 12, 1978 in its Opinion No. 191 of the then Secretary of Justice Vicente Abad
Santos which stated that Sections 26 and 50 do not apply to cinematographic works and PD No. 49 had done away
with the registration and deposit of cinematographic works and that even without prior registration and deposit of a
work which may be entitled to protection under the Decree, the creator can file action for infringement of its rights.
He cannot demand, however, payment of damages arising from infringement. The same opinion stressed that the
requirements of registration and deposit are thus retained under the Decree, not as conditions for the acquisition of
copyright and other rights, but as prerequisites to a suit for damages. The statutory interpretation of the Executive
Branch being correct, is entitled (to) weight and respect.

Furthermore, a closer review of Presidential Decree No. 49 reveals that even with respect to works which are
required under Section 26 thereof to be registered and with copies to be deposited with the National Library, such as
books, including composite and cyclopedic works, manuscripts, directories and gazetteers; and periodicals, including
pamphlets and newspapers; lectures, sermons, addresses, dissertations prepared for oral delivery; and letters, the
failure to comply with said requirements does not deprive the copyright owner of the right to sue for infringement.
Such non-compliance merely limits the remedies available to him and subjects him to the corresponding sanction.

The reason for this is expressed in Section 2 of the decree which prefaces its enumeration of copyrightable works
with the explicit statement that the rights granted under this Decree shall, from the moment of creation, subsist with
respect to any of the following classes of works. This means that under the present state of the law, the copyright for
a work is acquired by an intellectual creator from the moment of creation even in the absence of registration and
deposit. As has been authoritatively clarified:
The registration and deposit of two complete copies or reproductions of the work with the National Library
within three weeks after the first public dissemination or performance of the work, as provided for in Section
26 (P.D. No. 49, as amended), is not for the purpose of securing a copyright of the work, but rather to avoid
the penalty for non-compliance of the deposit of said two copies and in order to recover damages in an
infringement suit.

Respondent NSR Rubber Corp filed an application for the registration of the mark CANON for sandal in the Bureau of
Patents, Trademarks, Technology Transfer. This was opposed by the petitioner, a foreign corporation duly organized
and existing under the laws of Japan, alleging that it would be damaged by the registration of trademark Canon in the
name of the petitioner.

Petitioner presented evidence consist of certificates of registration for the mark CANON in various countries covering
goods like paints, chemical products, toner, and dye stuff. BPTTT dismissed the opposition of the petitioner and gave
due course to private respondents application for the registration of the trademark Canon. The decision was
appealed to the Court of Appeals which eventually affirmed the decision of the BPTTT. Hence, the instant petition.

Whether or not petitioner may be afforded protection of its trade name.

The term trademark is defined by RA 166, the Trademark Law, as including any word, name, symbol, emblem,
sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and
distinguish them for those manufactured, sold or dealt in by others. Tradename is defined by the same law as
including individual names and surnames, firm names, tradenames, devices or words used by manufacturers,
industrialists, merchants, agriculturists, and others to identify their business, vocations, or occupations; the names or
titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing, industrial,
commercial, agricultural or other organizations engaged in trade or commerce. Simply put, a trade name refers to
the business and its goodwill; a trademark refers to the goods.

The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, of which
both the Philippines and Japan, the country of petitioner, are signatories, is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names
and indications of source or appellations of origin, and at the same time aims to repress unfair competition. We agree
with public respondents that the controlling doctrine with respect to the applicability of Article 8 of the Paris
Convention is that established in Kabushi Kaisha Isetan vs. IAC. As pointed out by the BPTTT: Regarding the
applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an
entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local
entity. To illustrate if a taxicab or bus company in a town in the United Kingdom or India happens to use the
tradename Rapid Transportation, it does not necessarily follow that Rapid can no longer be registered in Uganda,
Fiji, or the Philippines.

Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office for registration of
the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers. Petitioner filed
its opposition in the Bureau of Patents on the grounds that it was confusingly similar to the word CONVERSE and it
would cause great and irreparable injury to the business reputation and goodwill of the petitioner in the Philippines.
On the other hand, the respondent answered that the petitioner was not licensed to do business in the Philippines
and it manufactured rubber shoes and used the trademarks CHUCK TAYLOR and ALL STAR AND DEVICE.

The Director of Patents dismissed the opposition of the petitioner and gave due course to respondents application.
According to him, the only question for determination is whether or not the applicant's partial appropriation of the
Opposer's [petitioner'] corporate name is of such character that in this particular case, it is calculated to deceive or
confuse the public to the injury of the corporation to which the name belongs.

Petitioner filed for a motion for reconsideration but it was denied. Hence, the instant petition.

Whether or not the respondent's partial appropriation of petitioner's corporate name is of such character that it is
calculated to deceive or confuse the public to the injury of the petitioner to which the name belongs.

The Court granted the petition and the decision of the Director of Patents was set aside. The Respondents
registration was denied.

According to the court, the similarity y in the general appearance of respondent's trademark and that of petitioner
would evidently create a likelihood of confusion among the purchasing public. But even assuming, arguendo, that the
trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the likelihood
of confusion would still subsists, not on the purchaser's perception of the goods but on the origins thereof. By
appropriating the word "CONVERSE," respondent's products are likely to be mistaken as having been produced by
petitioner. "The risk of damage is not limited to a possible confusion of goods but also includes confusion of
reputation if the public could reasonably assume that the goods of the parties originated from the same source.

It is unfortunate that respondent Director of Patents has concluded that since the petitioner is not licensed to do
business in the country and is actually not doing business on its own in the Philippines, it has no name to protect in
the forum and thus, it is futile for it to establish that "CONVERSE" as part of its corporate name identifies its rubber
shoes. That a foreign corporation has a right to maintain an action in the forum even if it is not licensed to do
business and is not actually doing business on its own therein has been enunciated many times by this Court.

This was with accord to the Convention of the Union of Paris. The object of the Convention is to accord a national of
a member nation extensive protection "against infringement and other types of unfair competition".