Mighty Corporation v. E & J Gallo Winery, G.R. No.

154342, July 14, 2004

(1) The IP Code, repealing the Trademark Law, was approved on June 6, 1997. Section 241 thereof
expressly decreed that it was to take effect only on January 1, 1998, without any provision for retroactive
application. Thus, the lower courts should have limited the consideration of the present case within the
parameters of the Trademark Law and the Paris Convention, the laws in force at the time of the filing of
the complaint. what appears in the book as doctrine
WHAT SIR ASKED DURING RECITATION might be what he would look for as important doctrines
in the midterms:
(2) Wines and cigarettes are unrelated products because obviously, wines and cigarettes are not identical
or competing products. Neither do they belong to the same class of goods.
(3) The Court distinguished trademark infringement from unfair competition: (1) Infringement of
trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of one's
goods as those of another. (2) In infringement of trademark fraudulent intent is unnecessary, whereas in
unfair competition fraudulent intent is essential. (3) In infringement of trademark the prior registration of
the trademark is a prerequisite to the action, whereas in unfair competition registration is not necessary.
(4) In summary, the Paris Convention protects well-known trademarks only (to be determined by
domestic authorities), while the Trademark Law protects all trademarks, whether well-known or not,
provided that they have been registered and are in actual commercial use in the Philippines.
(5) The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks
which might cause confusion or deception, and thus infringement. Duplication or imitation is not
necessary; nor is it necessary that the infringing label should suggest an effort to imitate. On the other
hand, the Holistic Test requires that the entirety of the marks in question be considered in resolving
confusing similarity. 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.

Sasot v. People, G.R. No. 143193, June 29, 2005

The crime of Unfair Competition punishable under Article 189 of the Revised Penal Code is a public
crime. It is essentially an act against the State and it is the latter which principally stands as the injured
party. The complainants capacity to sue in such case becomes immaterial.

La Chemise Lacoste, S.A. v. Fernandez, 129 SCRA 373, 393

(1) Foreign corporations not doing business in the Philippines may sue in our courts for violations of
intellectual property rights laws. Moreover, the criminal offense of unfair competition is essentially an act
against the State. It is the latter which is principally the injured party although there is a private right
violated. Petitioner's capacity to sue would become, therefore, of not much significance in the main case.
(2) Unlike in the supplemental register, registration in the principal register is a prima facie evidence of
(a) the validity of registration; (b) registrant's ownership of the mark; and (c) registrant's exclusive right to
use the mark. It is not subject to opposition, although it may be cancelled after its issuance. Neither may it
be the subject of interference proceedings. In this case, the registration made by Hemandas is only in the
Supplemental Register.
Elidad Kho v. Court of Appeals, G.R. No. 115758, March 19, 2002
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition. The petitioners copyright and patent
registration of the trade name and container of the beauty cream product not guarantee to her the right to
the exclusive use of the same because they are not appropriate subjects of the said intellectual rights.

Pearl & Dean Philippines, Inc. v. Shoemart, Inc. and North EDSA Marketing, Inc., G.R. No. 148222,
August 15, 2003
(1) Copyright, being a mere statutory grant, can cover only the works falling within the statutory
enumeration or description. In this case, the copyright was limited to the drawings alone and not to the
light box itself. Besides, the light box is neither a literary not an artistic work but an engineering or
marketing invention.
(2) To be able to effectively and legally preclude others from copying and profiting from the invention, a
patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to
bring new designs and technologies into the public domain through disclosure. The patent law has a three-
fold purpose: first, patent law seeks to foster and reward invention; second, it promotes disclosures of
inventions to stimulate further innovation and to permit the public to practice the invention once the
patent expires; third, the stringent requirements for patent protection seek to ensure that ideas in the
public domain remain there for the free use of the public.
(3) What petitioner 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 petitioner 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 petitioner would be protected for 50 years.
This situation could not have been the intention of the law.
(4) The certificate of registration issued by the Director of Patents can confer (upon petitioner) the
exclusive right to use its own symbol only to those goods specified in the certificate. One who has
adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark
by others for products which are of a different description.

Phil. Pharmawealth, Inc. vs. Pfizer, Inc. and Pfizer Philippines, Inc., G.R. No. 167715, November 17,
2010
(1) The exclusive rights of a patentee to make, use and sell a patented product, article or process exists
only during the term of the patent. Hence, the TRO should not have been issued by the CA.
(2) It is true that under Section 7(b) of RA 8293, otherwise known as the Intellectual Property Code of
the Philippines, which is the presently prevailing law, the Director General of the IPO exercises exclusive
appellate jurisdiction over all decisions rendered by the Director of the BLA-IPO. However, what is being
questioned before the CA is not a decision, but an interlocutory order of the BLA-IPO denying
respondents' motion to extend the life of the preliminary injunction issued in their favor. RA 8293 is silent
with respect to any remedy available to litigants who intend to question an interlocutory order issued by
the BLA-IPO. Hence, in the absence of such a remedy, the provisions of the Rules of Court shall apply in
a suppletory manner. Hence, in the present case, respondents correctly resorted to the filing of a special
civil action for certiorari with the CA to question the assailed Orders of the BLA-IPO, as they cannot
appeal therefrom and they have no other plain, speedy and adequate remedy in the ordinary course of law.

In-N-Out Burger, Inc. vs. Sehwani, Incorporated and/or Benitas Frites, Inc., G.R. No. 179127,
December 24, 2008
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, Section 10 of the Intellectual Property Code
specifically identifies the functions of the Bureau of Legal Affairs, which include the power to hear and
decide opposition to the application for registration of marks; cancellation of trademarks; and exercise
original jurisdiction in administrative complaints for violations of laws involving intellectual property
rights. Likewise, the IP Code expressly recognizes the appellate jurisdiction of the IPO Director General
over the decisions of the IPO Director of Legal Affairs, in Section 7 thereof. Sections 160 and 170
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.

Roma Drug and Romeo Rodriguez v. RTC of Guagua, Pampanga, Provincial Prosecutor of Pampanga,
BFAD, and Glaxo SmithKline, G.R. No. 149907, April 16, 2009
Republic Act No. 9502, also known as the Universally Accessible Cheaper and Quality Medicines Act of
2008, impliedly repeals the Special Law on Counterfeit Drugs by reason of irreconcilable inconsistencies
in their provisions. Section 7 of Rep. Act No. 9502 unequivocally grants to private third parties the
unqualified right to import drugs or medicines whose patent were registered in the Philippines by the
owner of the product.

Smith Kline Beckman Corp. v. Court of Appeals and Tryco Pharma, G.R. No. 126627, August 14, 2003
(1) The doctrine of equivalents provides that an infringement also takes place when a device appropriates
a prior invention by incorporating its innovative concept and, although with some modification and
change, performs substantially the same function in substantially the same way to achieve substantially
the same result. It thus requires satisfaction of the function-means-and-result test, the patentee having the
burden to show that all three components of such equivalency test are met.
(2) As for the concept of divisional applications proffered by petitioner, it comes into play when two or
more inventions are claimed in a single application but are of such a nature that a single patent may not be
issued for them. The applicant thus is required to divide, that is, to limit the claims to whichever invention
he may elect, whereas those inventions not elected may be made the subject of separate applications
which are called divisional applications.

Jessie Ching v. William Salinas, et al, G.R. No. 161295, June 29, 2005
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. 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. 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 in a patent for invention is not required; second, the maximum term of protection is only
seven years compared to a patent which is twenty years, both reckoned from the date of the application;
and third, the provisions on utility model dispense with its substantive examination and prefer for a less
complicated system.

Del Monte Corp. v. Court of Appeals, G.R. No. 78325, January 25, 1990
Side-by-side comparison is not the final test of similarity. The ordinary buyer does not usually make a
careful scrutiny to determine in what points the labels of the products differ, nor does he usually have the
time to do so. It is not the function of the court in cases of infringement and unfair competition to educate
purchasers but rather to take their carelessness for granted, and to be ever conscious of the fact that marks
need not be identical. A trademark infringer 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.

Arce Sons and Company v. Selecta Biscuit Company, G.R. No. 14761, January 28, 1961
A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular
producer or manufacturer may be distinguished from that of others, and its sole function is to designate
distinctively the origin of the products to which it is attached." (Reynolds & Reynolds Co. v. Nordic, et.
al., 114F 2d, 278)

Societe Des Produits Nestl v. Court of Appeals, G.R. No. 112012, April 4, 2001
A trademark has been generally defined as "any word, name, symbol or device adopted and used by a
manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold
by others." (Bass Buster, Inc. v. Gapen Mfg. Co., 420 F. Supp. 144, 156, 191 USPQ 315, 325 (W.D. Mo.
1976))

Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc. G.R. No. 139300, March 14, 2001
Let it be remembered that duly registered trademarks are protected by law as intellectual properties and
cannot be appropriated by others without violating the due process clause. An infringement of intellectual
rights is no less vicious and condemnable as theft of material property, whether personal or real.

Birkenstock Orthopaedie GMBH and Co. Kg v. Philippine Shoe Expo Marketing Corporation, G.R. No.
194307, November 20, 2013
(1) Failure to file the DAU within the requisite period results in the automatic cancellation of registration
of a trademark. In turn, such failure is tantamount to the abandonment or withdrawal of any right or
interest the registrant has over his trademark. Section 236 of the IP Code cannot be invoked to applyt to
intellectual property rights obtained under previous intellectual property laws, e.g., RA 166, precisely
because it already lost any right or interest over the said mark.
(2) It is not the application or registration of a trademark that vests ownership thereof, but it is the
ownership of a trademark that confers the right to register the same. A trademark cannot be appropriated
by unscrupulous entities that happen to register such trademark ahead of its true and lawful owner. The
presumption of ownership accorded to a registrant must then necessarily yield to superior evidence of
actual and real ownership of a trademark.
Mirpuri v. Court of Appeals, G.R. No. 114508, November 19, 1999
Trademarks perform three distinct functions: (1) they indicate origin or ownership of the articles to which
they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3)
they advertise the articles they symbolize. Today, the trademark is not merely a symbol of origin and
goodwill; it is often the most effective agent for the actual creation and protection of goodwill. It imprints
upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further
satisfaction. In other words, the mark actually sells the goods. The mark has become the "silent
salesman," the conduit through which direct contact between the trademark owner and the consumer is
assured.

Fredco Manufacturing Corp. v. President and Fellows of Harvard College, G.R. No. 185917, June 1,
2011
Fredcos registration of the mark Harvard and its identification of origin as Cambridge, Massachusetts
falsely suggest that Fredco or its goods are connected with Harvard University, which uses the same mark
Harvard and is also located in Cambridge, Massachusetts. Under Article 8 of the Paris Convention, as
well as Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its
trade name Harvard even without registration of such trade name in the Philippines. This means that no
educational entity in the Philippines can use the trade name Harvard without the consent of Harvard
University. There is no question, and the Court so declares, that Harvard is a well-known name and mark
not only in the United States but also internationally, including the Philippines. The mark Harvard is rated
as one of the most famous marks in the world. It has established a considerable goodwill worldwide since
the founding of Harvard University more than 350 years ago.

Ana Ang v. Toribio Teodoro, G.R. No. L-48226, December 14, 1942
(1) The phrase "Ang Tibay" is an exclamation denoting administration of strength or durability. "Ang
Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined
phrase which may properly and legally be appropriated as a trade-mark or trade-name.
(3) Shoes and shirts are not as unrelated as fountain pens and razor blades, for instance. The mere relation
or association of the articles is not controlling. The proprietary connotation that a trade-mark or trade-
name has acquired is of more paramount consideration. The Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of respondent's registered trade-mark on slippers and shoes
manufactured by him, it has come to indicate the origin and ownership of said goods. Ang Tibay shoes
and slippers are, by association, known throughout the Philippines as products of the Ang Tibay factory
owned and operated by the respondent Toribio Teodoro. It is certainly not farfetched to surmise that the
selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free
ride on the reputation and selling power it has acquired at the hands of the respondent.