CRESER PRECISION SYSTEMS,
INC., petitioner, vs COURT OF
APPEALS AND FLORO
INTERNATIONAL CORP., respondents
Facts
The Court of Appeals dated November 9,
1994 in C.A. -G.R. SP. No. 34425 entitled
Floro International Corp. Vs. Hon. Tirso
D.C Cruz and Creser Precision System,
Inc., the dispositive portion of which
reads:
WHEREFORE, THE PETITION IS
HEREBY GRANTED. THE
COMPLAINT FOR INJUNCTION AND
DAMAGEES, CIVIL CASE NO. 93-1856
BEFORE THE RESPONDENT JUDGE
IS HEREBY ORDERED DISMISSED
AND HIS ORDERS THEREIN OF
DECEMBER 29, 1993 AND MAY 11,
1994 ARE ORDERED SET ASIDE.
Private respondent is a domestic
corporation engaged in the manufacture,
production, distribution and sale of
military armaments, munitions,
ammunitions and other similar materials.
On January 23, 1990, private respondent
was granted by the Bureau of Patents,
Trademarks and Technology Transfer
(BPTTT), a Letters Patent No. UM-6938
[3] covering an aerial fuze which was
published in the September-October 1990,
Vol. III, No. 5 issue of the Bureau of
Patents Official Gazette.
Sometime in November 1993, private
respondent through its president, Mr.
Gregory Floro, Jr. Discovered that
petitioner submitted samples of its
patented aerial fuze to the Armed Forces
of the Philippines (AFP) for testing. He
learned that petitioner was claiming the
aforesaid aerial fuze as its own and
planning to bid and manufacture the same
commercially without license or authority
from private respondent. To protect its
right, private respondent on December 3,
1993, sent a letter to petitioner advising it
fro its existing patent and its rights
thereunder, warning petitioner of a
possible court action and/or application
for injunction, should it proceed with the
scheduled testing by the military in
December 7, 1993.
In response to private respondents
demand, petitioner filed on December 8,,
1993, a complaint for injunction and
damages arising from the alleged
infringement before the Regional Trial
Court of Quezon City, Branch 88. The
complaint alleged among others; that
petitioner is the first, true and actual
inventor of an aerial fuze denominated as
Fuze, PDR 77 CB4 which is developed as
early as December 1981 under the Self-
Reliance Defense Posture Program
(SRDP) of the AFP, that sometime in
1986, petitioner began supplying the AFP
with the said aerial fuze; that private
respondents aerial fuze is identical in
every respect to the petitioners fuze; and
that the only difference between the two
fuzes are mniscule and merely cosmetic in
nature.
Petitioner prayed that a temporary
restraining order and/or writ of
preliminary injunction be issued enjoining
private respondent including any and all
persons acting on its behalf from
manufacturing, marketing and/or profiting
therefrom, and/or from performing any
other act in connection therewith or
tending to prejudice and deprive it of any
rights, privileges and benefits to which it
is duly entitled as the first, true and acual
inventor of the aerial fuze.

On December 27, 1993, private
respondent submitted its memorandum
alleging that petitioner has no cause of
action to file a complaint of infringement
against it since it has no patent for the
aerial fuze which it claims to have
invented; that petitioners available remedy
is to file a petition for cancellation of
patent before the Bureau of Patents; that
private respondent as the patent holder
cannot be stripped of its property over the
patented aerial fuze consisting of the
exclusive right to manufacture, use and
sell the same and that it stands to suffer
irreparable damage and injury if it is
enjoined from te exercise of its property
rights over its patent.
RULING
SECTION 42. Civil Action for
infringement. Any patentee, or anyone
possessing any right, title or interest in
and to the patented invention, whose
rights have been infringed, may bring a
civil action before the proper Court of
First Instance (now Regional Trial Court),
to recover from the infringer damages
sustained by reason of the infringement
and to secure an injunction for the
protection of his right. X x x
Under the aforequoted law, only the
patentee or his successors-in-interest may
file an action for infringement. The phrase
anyone possessing any right, title or
interest in and to the patented invention
upon which petitioner maintain its present
suit, refers only to the patentees
successors-in-interest, assignees or
grantees since actions for infringement of
patent may be brought in the name of the
person or persons interested, whether as
patentee, assignees or grantees, of the
exclusive right. Moreover, there can be no
infringement of a patent until a patent has
been issued, since whatever right one has
to the invention covered by the patent
arises alone from grant of patent. In short,
a person or entity who has not been
granted letters patent over an invention
and has not acquired by any right to
maintain an infringement suit depends on
the existence of the patent.
Petitioner admits it has no patent over its
aerial fuze. Therefore, it has no legal basis
or cause of action to institute the petition
for injunction and damages arising from
alleged infringement by private
respondent. While petitioner claims to be
the first inventor of the aerial fuze, still it
has no right of property over the same
upon which it can maintain a suit unless it
obtains a patent therefor. Under American
jurisprudence, and inventor has no
common-law right to a monopoly of his
invention. He has the right to make, use
and vend his own invention, but if he
voluntarily discloses it, such as by
offering it for sale, the world is free to
copy and use it with impunity. A patent,
however, gives the inventor the right to
exclude all others. As a patentee, he has
the exclusive right of making, using or
selling the invention.
ROMA DRUG AND ROMEO
RODRIGUEZ, AS PROPRIETOR OF
ROMA DRUG VS THE REGIONAL
TRIAL COURT GUAGUA,
PAMPANGA, ET. AL., G.R NO. 149907,
APRIL 16, 2009
FACTS
On 14 August 2000, a team composed of
the National Bureau of Investigation
(NBI) operatives and inspectors of the
Bureau of Food and Drugs (BFAD)
conducted a raid on petitioner Roma
Drug, a duly registered sole proprietorship
of petitioner Romeo Rodriguez
(Rodriguez) operating a drug store located
at San Matias, Guagua, Pampanga. The
raid was conducted pursuant to a search
warrant issued by the Regional Trial Court
(RTC), Branch 57, Angeles City. The
raiding team seized several imported
medicines, including Augmentin (375mg.)
tablets, Orbenin (500mg.) capsules,
Amoxil (250mg.)
It appears that Roma Drug is one of six
drug stores which were raided on or
around the same time upon request of
Smithkline Beecham Research Limited
(Smithkline), a duly registered corporation
which is the local distributor of
pharmaceutical products manufactured by
its parent, London-based corporation. The
local Smithkline has since merge with
Glaxo Wellcome Phil. Inc to form Glaxo
SmithKline, private respondent in this
case. The seixed medicines, which were
manufactured by SmithKline, were
imported directly from abroad and not
purchased through the local SmithKline,
the authorized Philippine distributor of
these products.
In this case, there is no doubt that the
subject seized drugs are identical in
content with their Philippine-registered
counterparts. There is no claim that they
were adulterated in any way or misabled
at least. Their classification as counterfeit
is based solely on the fact that they were
imported from abroad and not purchased
from the Philippine-registered owner of
the patent or trademark of the drugs.
During preliminary investigation,
Rodriguez challenged the constitutionality
of the SLCD. However, Assistant
Provincial Prosecutor Celerina C. Pineda
skirted the challenge and issued a
Resolution dated 17 August 2001
recommending that Rodriguez be charged
with violation of Section 4 (a) of the
SLCD. The recommendation was
approved by Provincial Prosecutor Jesus
Y. Manarang approved the
recommendation.
Hence, the present Petition for Prohibition
questioning the RTC-Guagua Pampanga
and the Provincial Prosecutor to desist
from further prosecuting Rodriguez, and
that Sections 3 (b) (3), 4 and 5 of the
SLCD be declared unconstitutional. In
gist, contravene three provisions of the
Constitution. The first is the equal
protection clause of the Bill of Rights. The
two other provisions are Section 11,
Article XIII, which mandates that the
State make essential goods, health and
other social services available to all the
people at affordable cost; and Section 15,,
Article II, which states that it is the policy
of the State to protect and promote the
right to health of the people and instill
health consciousness among them.
Glaxo SmithKline and the Office of the
Solicitor General (OSG) have opposed the
petition, the latter in behalf of public
respondents RTC, Provincial Prosecutor
and Bureau of Food and Drugs (BFAD).
On the Constitutional issue, Glaxo
SmithKline asserts the rule that the SLCD
is presumed constitutional, arguing that
both Section 15, Article II and Section 11,
Article XIII are not self-executing
provisions, the disregard of which can
give rise to a cause of action in the courts.
It adds that Section 11, Article XIII in
particular cannot be work to the
oppression and unlawful of the property
rights of the legitimate manufacturers,
importers or distributors, who take pains
in having imported drug products
registered before the BFAD, Glaxo
SmithKline further claims that SLCD does
not in fact conflict with the
aforementioned constitutional provisions
and in fact are in accord with
Constitutional precepts in favor of the
peoples right to health.
RULING
The constitutional aspect of this petition
raises obviously interesting questions.
However, such questions have in fact been
mooted with the passage in 2008 of
Republic Act No. 9502, also known as the
Universally Accessible Cheaper and
Quality Medicines Act of 2008.
Sectio 7 of Rep. Act No. 9502 amends
Section 72 of the Intellectual Property
Code in that the later law unequivocally
grants third persons the right to import
drugs or medicines whose patent were
registered in the Philippines by the owner
of the product:
Sec. 7, Section 72 of Republic Act No.
8293, otherwise known as the Intellectual
Property Code of the Philippines, is
hereby amended to read as follows:
Sec. 72. Limitations of Patent Rights. The
owner of a patent has no right to prevent
third parties from performing, without his
authorization, the acts referred to in
Section 71 hereof in the following
circumstances:
72.1. Using patented products which has
been put on the market in the Philippines
by the owner of the product, or with his
express consent, insofar as such use is
performed after that product has been so
put on the said market: Provided, That,
with regard to drugs and medicines, the
limitation on patent rights shall apply
after a drug or medicine has been
introduced in the Philippines or
anywhere else in the world by the
patent owner, or by any party
authorized t use the invention:
Provided, further, That the right to
import the drugs ad medicines
contemplated in this section shall be
available to any government agency or
any private third party;
The unqualified right of private third
parties sich as petitioner to import or
possess unregistered imported drugs in the
Philippines is further confirmed by the
Implementing Rules to Republic Act No.
9502 promulgated on 4 November 2008.
The relevant provisions thereof read:
Rule 9. Limitations on Patent Rights.
The owner of a patent has no right to
prevent third parties from performing
without his authorization, the acts referred
to in Section 71 of the IP Code as
enumerated hereunder.
(i) Introduction in the Philippines or
anywhere Else in the World
It my be that Rep. Act No. 9503 did not
expressly repeal any provision of the
SLCD. However, it is clear that the
SLCDs classification of unregistered
imported drugs as counterfeit drugs, and
of corresponding criminal penalies
therefore are irreconciliably in the
imposition conflict with Rep. Act No.
9502 since the latter indubitably grants
private third persons the unqualified right
to import otherwise use such drugs. Where
a statute of later date, such as Rep. Act
No. 9502, clearly reveals an intention on
the part of the legislature to abrogate a
prior act on the subject that intention must
be given effect. When subsequent
enactment covering a field of operation
coterminus with a prior statute cannot by
any reasonable construction be given
effect while the prior law remains in
operative existence because of
irreconcilable conflict between the two
acts, the latest legislative expression
prevails and the prior law yields to the
extent of the conflict. Irreconcilable
inconsistency between two laws
embracing the same subject may exist
when the later law nullifies the reason or
purpose of the earlier act, so that the latter
loses all meaning and function. Legis
posteriors priores contraria abrogant.
For the reasons above-stated, the
prosecution of petitioner is no longer
warranted and the quested writ of
prohibition should accordingly be issued.
HON NE CHAN, ET.AL VS HONDA
MOTOR CO. LTD AND HONDA PHIL.,
INC., G.R. NO. 172775 DECEMBER 19,
2007
FACTS
On 14 November 2003, the National
Bureau of Investigation (NBI),. through
Special Investigator (SI) Glenn Lacaran,
applied for search warrants with the RTC
against petitioners for alleged violation of
Section 168 in relation to Section 170 of
Republic Act No. 8293 or the Intellectual
Property Code of the Philippines.
On the same date, RTC Judge Artemio S.
Tipon issued two search warrants. The
first warrant, Search Warrant No. 03-4438,
was directed against petitioner Hon Ne
Chan and John Does, operating under the
name and style Dragon Spirit Motorcycle
Center, located at No. 192 M.H. Del Pilar
Street corner 10th Avenue, Grace Park,
Caloocan City, Metro Manila.
Search Warrant
It appearing to the satisfaction of the
undersigned, after examining under oath
the applicant Special Investigator Glenn
M. Lacaran of the National Bureau of
Investigation, and his witnesses Atty.
Elmer NA Cadano and Mr. Rene C.
Baltazar, that there are good and sufficient
reasons to believe that a violation of Sec.
168 in relation to Sec. 170 of R.A. No.
8293 has been committed and that there
are good and sufficient reasons to believe
that the following:
 Motorcycles bearing the model names
and/or markings DS-110, DSM-110,
SUPER WAVE, DS-125, WAVE R,
and WAVE and the engines,
moldings, spare parts, tires and
accessories for the manufacture and
assembly of such motorcycles.
 Papers, documents, brochures,
documents, receipts, invoices,
ledgers, books of accounts, labels,
materials, paraphernalia, effects,
computer software, computer
systems, central processing units,
hard disks, floppy disks, diskettes,
data storage and retrieval devices,
monitors and vehicles used or
intended to be used in importing,
producing, manufacturing,
assembling, selling, marketing,
distributing, dealing with and/or
markings DS-110, DSM-110, SUPER
WAVE, DS-125, WAVE R, and
WAVE, are in the possession and
control of respondents HON NE
CHAN and JOHN DOES, operating
under the name and style DRAGON
SPIRIT MOTORCYCLY
CENTER, located at No. 192 M.H.
Del Pilar Street corner 10th Avenue,
Grace Park, Caloocan City, Metro
Manila, and are being kept and
concealed at the said address.
On 1 December 2003, petitioners filed
with the RTC a Joint Motion to Quash
Search Warrants and to Return Illegally
Seize Items, averring therein that the
search warrants were issued despite the
absence of probable cause and that they
were in the nature of general search
warrants. Respondents filed their
Opposition thereto on 7 January 2004 but
despite this, the trial court still issued an
Order dated 20 February 2004 which
quashed both Warrants No. 03-4438 and
03-4439 and ordered the NBI to return to
petitioners the articles seized. In quashing
the Search Warrants, the trial court held tat
the return of the twenty-two WAVE CX
110 motorcycle units was proper for they
were never specifically mentioned therein.
As regards the rest of the items seized by
the NBI agents, the trial court decreed that
their return to petitioners was justified due
to lack of probable cause in the issuance
of the search warrants.
ISSUE
Whether there existed an offensse to
which the issuance of the search warrants
was connected.
RULING
Anent petitioners contention that the
search warrants were issued in relation to
no particular offence, they rely on the
holding of this Court in Savage v. Judge
Taypin, where it was held that:
Ther is evidently no mention of any
crime of unfair competition involving
design patents in the controlling
provisions on Unfair Competition. It is
therefore unclear whether the crime exists
at all, for the enactment of RA 8293 did
not result in the reenactment of Art. 189 of
the Revised Penal Code. In the face of this
ambiguity, we must strictly construe the
statute against the State and Liberally in
favor of the accused, for penal statutes
cannot be enlarged or extended by
intendment, implication or any equitable
consideration.
A reading of said case readily exposes its
stark inapplicability to the instant Petition.
To be sure, the search warrant in Savage
was issued in the face of possible
violation of Republic Act No. 8293. The
acts complained of in said case were the
alleged manufacture and fabrication of
wrought iron furniture similar to that
patented by private respondent therein
sans any license or patent for the same, for
the purpose of deceiving or defrauding
private respondent and buying public.
In making the above-quoted declaration in
said case, this Court recognized that
paragraph 3 of Article 189 of the Revised
Penal Code stating that
3. Any person who, by means of false or
fraudulent representations or declarations, orally or
in writing, or by other fraudulent means shall
procure from the patent office or from any other
office which may hereafter be established by law
for the purposed, the registration of a tradename,
trademark, or service mark, or of himself as the
owner of such tradename, trademarks or service
mark or an entry respecting a tradename,
trademark, or servicemark.
Was not included in the enactment of
Section 168 of Republic Act No. 8293.
On the other hand, in the application for
Search Warrant filed by NBI SI Lacaran, it
is clearly stated that what respondents are
complaining about was the alleged
violation of the goodwill they have
established with respect to their
motorcycle models WAVE 110 S and
WAVE 125 S and which goodwill is
entitled to protection in the same manner
as other property rights. It is quite obvious
then that their cause of action arose out of
the intrusion into their established
goodwill involving the two motorcycle
models and not patent infringement, as
what existed in Savage.
Trademarks and Tradenames
Definition [Sec. 121]
1. Trademark - any visible sign capable
of distinguishing the goods of an
enterprise.
2. Service mark - any visible sign capable
of distinguishing services of an enterprise
3. Trade name - the name or designation
identifying or distinguishing an enterprise.
Rule 103. Trade Names or Business
Names. -
 (a) A name or designation may not be
used as a trade name, if by its nature
or the use to which such bane or
designation may be put, it is contrary
to public order or morals and if, in
particular, it is liable to deceive trade
circles or the public as to the nature of
the business identified by that name.
 (b) Notwithstanding any laws or
regulations providing for any
obligation to register trade names,
such name shall be protected even
prior to or without registration,
against any unlawful act committed
by third parties. In particular, any
subsequent use of the trade name by a
third party, whether as a trade name or
a mark or collective mark, or any such
use of a similar trade name or mark,
likely to mislead the public, shall be
deemed unlawful.
 (c) The remedies provided for
cancellation and infringement of
marks in Section 153 to 156 and
Sections 166 and 167 of the IP Code
shall apply to trademarks mutatis
mutandis.
 (d) Any change in the ownership of a
trade name shall be made with the
transfer of the enterprise or part
thereof indentified by that name.
However, such transfer or assignment
shall be null and void if it is liable to
mislead the public particularly as
regards the nature, source,
manufacturing process,
characteristics, or suitability for their
purpose of the goods or services to
which the mark is applied.
Trademarks and Tradenames
Q. How a can a mark be acquired?
A: The rights in a mark shall be acquired
through registration made validly in
accordance with the provisions of this law
[Sec. 122]
Rule 300. The Applicant. -
(a) Applicants may be a person or
juridical person.
(b) Unless modified by this Chapter, all
applications for a mark should be in the
name of the appplicant(s) who may sign
the application. If there are more than one
applicant, all of them should be named as
applicant but anyone may sign the
application for and in behalf of all the
applicants.
Trademarks and Tradenames
Q: What is the objective of the law in
protecting trademarks? [Bar 1982]
A: To give to their registered owners the
full benefit accruing to them from the
goodwill earned by them from the use of
said registered trademark. A trademark is
an incorporeal right which is entitled to be
protected from any illegal use by any
person without the authority of its owner.
Trademarks and Tradenames
Sec. 123. What CANNOT be Registered
A mark cannot be registered if it:
1. Consists of Immoral, deceptive or
scandalous matter or matter which may
disparage or falsely suggest a connection
with persons, living or dead, institutions,
beliefs or national symbols, or bring them
into contempt or disrepute;
2. Consists of the flag or coat of arms or
other insignia of the RP or any of its
political subdivisions, or of any foreign
nation, or any simulation thereof;
3. Consists of a name, portrait or
signature;
A. Indentifying a living individual
except by his written consent,
B. Of a deceased President of the
RP, during the life of his widow, if any,
except by written consent of the widow;
4. Is identical with a registered mark
belonging to a different proprietor or a
mark with an earlir filing of priority date,
in respect of:
A. The same goods or services, or
B. B, Closely related goods or
services, or
C. If it nearly resembles such a mark
as to be likely to deceive or cause
confusion;
5. Is identical with, or confusingly
similar to, or constitutes a translation of
a mark which is considered by the
competent authority of the RP to be well-
known internationally and in the RP:
A. Whether or not it is registered
here, as being already the mark of a
person other than the applicant for
registration, and
B. Used for identical or similar
goods or services:
Provided, That in determining whether a
mark is well-known, account shall be
taken of the knowledge of the relevant
sector of the public rather than of the
public at large, including knowledge in the
RP which has been obtained as a result of
the promotion of the mark.
6. Is identical with, or confusingly
similar to, or constitutes a translation of
a mark which is considered well-known
in accordance with the preceding
paragraph, which is registered in the RP
with respect to goods or services which
are not similar to those with respect to
which registration is applied for, provided
that:
A. The 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
B. The interests of the owner of the
registered mark are likely to be damaged
by such use;
What Cannot be Registered
One that is identical or confusingly
similar to
Par. 4 Par. 5 Par. 6
A A well a well
registered known known
mark in the internation internation
RP ally mark ally mark in
 [w/n registered
registered in RP
here]
For For for goods or
identical or identical or services not
similar similar necessarily
goods or goods or identical or
services services similar
Rule 102. Criteria for determining
whether a mark is well-known.
- in determining whether a mark is well-
known, the following criteria or
combination thereof may be taken into
account.
(a) the duration, extent and geographical
area of any use of the mark, in particular,
the duration, extent and geographical area
of any promotion of the mark, including
advertising or publicity and the
presentation, at fairs or exhibitions, of the
goods and/or services to which the mark
applies;
(b) The market share in the philippines
and in other countries, of the goods and/or
services to which the mark applies;
(c) The degree of the inherent or acquired
distinction of the mark;
(d) The quality-image or reputation
acquired by the mark;
(e) The extent to which the mark has
been registered in the world'
(f) The exclusivity of registration
attained by the mark in the world;
(g) The extent to which the mark has
been used in the world;
(h) The exclusivity of use attained by the
marked in the world;
(i) The commercial value attributed to
the mark in the world;
(j) The record of successful protection to
the rights in the mark;
(k) The outcome of litigations dealing
with the issue of whether the mark is a
well-known mark;
(l) The presence or absence of identical
or similar marks validly registered for or
used on identical or similar goods or
services and owned by persons other than
the person claiming that his mark is a
well-known mark.
7. Is likely to mislead the public,
particularly as to the nature, quality,
characteristics or geographical origin of
the goods or services;
8. Consists exclusively of signs that are
generic for the goods or services that they
seek to identify;
9. Consists exclusively of signs or of
indications that have become customary
or usual to designate the goods or
services in everyday language or bona fide
and established trade practice,
10. Consists exclusively of signs or of
indications that may serve in trade to
designate the kind, quality, quantity,
intended purpose, value, geographical
origin, time or production of the goods
or rendering of the services, or other
characteristics of the goods or services;
11. Consists of shapes that may be
necessitated by technical factors or by the
nature of the goods themselves or factors
that affect their intrinsic value;
12. Consists of color alone, unless defined
by a given form; or
13. Is contrary to public order or
morality.
Sec. 123.2 Doctrine of Secondary
Meaning
As regards sign or devices in # 10,11 and
12, nothing shall prevent the registration
of any such sign or device which has
become distinctive in relation to the goods
for which registration is requested as a
result of the use that have been made of it
in commerce in RP.
The IPO may accept as prima facie
evidence that the mark has become
distinctive, as used in connection with the
applicant's goods or services in commerce A: Any person who believes that he would
in the RP for five (5) years before the date be damaged by the registration of a mark
on which the claim of distinctiveness is [Sec. 134]
made.
Doctrine of Secondary Meaning or
Doctrine of Distinctiveness of
Trademark

A doctrine where in a word or phrase:

Originally incapable of exclusive
appropriation with reference to an article
in the market, because geographical or
otherwise descriptive, might nevertheless
have been used for so long and so
exclusively by one producer with
reference to this article that, in that trade
and to that group of the purchasing public,
the word or phrase has come to mean that
the article was his product.

A doctrine wherein a long time exclusive

and continuous use of a mark or name
which is unregistered for being:
[1] geographical
[2] descriptive, or
[3] a surname.
Such that the mark or name has lost its
primary meaning and it becomes
associated in the public mind with the
particular goods, entitles the user to have
such name registered.

Q: What case can be filed against an

applicant for a mark?

A: a case for opposition to the application

for Registration of a Trademark, service
mark or trade name

Q: Where?

A: Bureau of Legal Affairs

Q: Who may file an opposition to the

registration of a mark?