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* FIRST DIVISION.
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311
BERSAMIN, J.:
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3 Id., at pp. 7376; penned by Associate Justice Jose L. Sabio, Jr., with
Associate Justices Delilah VidallonMagtolis and Hakim S. Abdulwahid,
concurring.
4 Id., at p. 88.
5 Id., at pp. 112117 (G.R. No. 205972); penned by Associate Justice
Juan Q. Enriquez, Jr., with Associate Justices Apolinario D. Bruselas, Jr.
and Manuel M. Barrios, concurring.
6 Id., at pp. 120122.
313
items, among others. Its products are known for six core
trademarks, namely, “CATERPILLAR,” “CAT,”
“CATERPILLAR & DESIGN,” “CAT AND DESIGN,”
“WALKING MACHINES” and “TRACKTYPE TRACTOR
& DESIGN (Core Marks)”7 all of which are alleged as
internationally known. On the other hand, Samson, doing
business under the names and styles of Itti Shoes
Corporation, Kolm’s Manufacturing Corporation and
Caterpillar Boutique and General Merchandise, is the
proprietor of various retail outlets in the Philippines selling
footwear, bags, clothing, and related items under the
trademark “CATERPILLAR,” registered in 1997 under
Trademark Registration No. 64705 issued by the
Intellectual Property Office (IPO).8
G.R. No. 164352
On July 26, 2000, upon application of the National
Bureau of Investigation (NBI), the Regional Trial Court
(RTC), Branch 56, in Makati City issued Search Warrants
Nos. 00022 to 00032, inclusive, all for unfair competition,9
to search the establishments owned, controlled and
operated by Samson. The implementation of the search
warrants on July 27, 2000 led to the seizure of various
products bearing Caterpillar’s Core Marks.
Caterpillar filed against Samson several criminal
complaints for unfair competition in the Department of
Justice (DOJ), docketed as I.S. Nos. 20001354 to 2000
1364, inclusive.
Additionally, on July 31, 2000, Caterpillar commenced a
civil action against Samson and his business entities, with
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I.
THERE EXISTS PREJUDICIAL QUESTIONS PENDING
LITIGATION BEFORE THE REGIONAL TRIAL COURT OF
QUEZON CITY, BRANCH 90, IN CIVIL CASE NO. Q0041446
ENTITLED: “CATERPILLAR, INC., ET AL. V. ITTI SHOES
CORPORATION, ET AL.,” THE FINAL RESOLUTIONS OF
WHICH WILL DETERMINE THE OUTCOME OF THE
INSTANT CRIMINAL CASES.
II.
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In the meanwhile, on July 10, 2002, the DOJ, through
Secretary Hernando B. Perez, issued a resolution26 denying
Sam
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related to the issue in the case at bar for if the civil case will be
resolved sustaining the trademark registration of the accused for
the trademark CATERPILLAR, then the latter would have all the
authority to continue the use of the said trademark as a
consequence of a valid registration, and by reason of which there
may be no more basis to proceed with the instant criminal
action.28
After the RTC denied its motion for reconsideration29 on
December 5, 2002,30 Caterpillar elevated the matter to the
CA
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Acting Justice Secretary Gutierrez based her resolution
on the order dated June 26, 2001, whereby the RTC of
Valenzuela City, Branch 172, had quashed the 26 search
warrants upon motion of Samson.34 Consequently, the
goods seized and confiscated by virtue of the quashed
search warrants could no longer be admitted in evidence.
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35 Id., at p. 543.
36 Id., at p. 31.
37 Id., at pp. 578585.
38 Id., at pp. 653654 (G.R. No. 205972); reference to this affirmance
was also made in Samson v. Caterpillar, Inc., G.R. No. 169882, September
12, 2007, 533 SCRA 88, 95.
39 Id., at pp. 7376 (G.R. No. 164352).
320
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SO ORDERED.40
Caterpillar sought the reconsideration of the dismissal,
but the CA denied the motion on June 30, 2004.41
Hence, Caterpillar appealed the CA’s decision in C.A.
G.R. S.P. No. 75526 (G.R. No. 164352).
G.R. No. 205972
In the meanwhile, in August 2002, upon receiving the
information that Samson and his affiliate entities
continuously
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40 Id., at p. 75.
41 Id., at p. 78 (G.R. No. 164352).
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The CA opined that an appeal under Rule 43 to assail
the resolution by the Secretary of Justice determining the
existence or nonexistence of probable cause was an
improper remedy; and that while it could treat an appeal
as a special civil action for certiorari under Rule 65, it could
not do so therein because the allegations of the petition did
not sufficiently show grave abuse of discretion on the part
of the Secretary of Justice in issuing the assailed
resolutions.
Caterpillar filed a motion for reconsideration, but the
CA denied the motion for its lack of merit on February 12,
2013.49
Hence, Caterpillar commenced G.R. No. 205972.
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Issues
Caterpillar submits that the CA erred as follows:
G.R. No. 164352
A.
THE COURT OF APPEALS COMMITTED SERIOUS
REVERSIBLE ERROR IN DENYING DUE COURSE TO
CATERPILLAR INC.’S PETITION FOR CERTIORARI.
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46 Id., at p. 72.
47 Id., at pp. 112117.
48 Id., at p. 117.
49 Id., at pp. 120122.
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B.
THE COURT OF APPEALS COMMITTED SERIOUS
REVERSIBLE ERROR IN NOT HOLDING THAT THE ORDER
SUSPENDING PROCEEDINGS IN CRIMINAL CASES NOS. 02
238 TO 02243, ON THE BASIS OF AN ALLEGED
PREJUDICIAL QUESTION, WAS CONTRARY TO LAW AND
ESTABLISHED JURISPRUDENCE.
C.
THE HONORABLE COURT OF APPEALS COMMITTED
SERIOUS REVERSIBLE ERROR IN NOT HOLDING THAT A
CRIMINAL COMPLAINT FOR UNFAIR COMPETITION CAN
PROCEED INDEPENDENTLY OF, AND SIMULTANEOUS
WITH, THE CIVIL CASE FOR THE SAME.50
Caterpillar posits that the suspension of proceedings in
Criminal Cases Nos. 02238 to 02243 was contrary to Rule
111 of the Rules of Court, Article 33 of the Civil Code on
independent civil actions, and Section 170 of the IP Code,
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Caterpillar seeks the liberal interpretation of procedural
rules in order to serve the higher interest of substantial
justice following the denial by the CA of its petition for
being an incorrect remedy; and insists that it presented
substantial evidence to warrant a finding of probable cause
for unfair competition against Samson.
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54 Samson v. Daway, supra note 51 (Samson moved in the RTC for the
suspension of the arraignment and other proceedings in
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The elements of a prejudicial question are provided in
Section 7 of Rule 111, Rules of Court, to wit: (a) a
previously
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56 Ras v. Rasul, Nos. L5044142, September 18, 1980, 100 SCRA 125,
129130; Benitez v. Concepcion, Jr., No. L14646, May 30, 1961, 2 SCRA
178, 181; De Leon v. Mabanag, 70 Phil. 202 (1940)
57 No. L56995, August 30, 1982, 116 SCRA 303.
58 Id., at pp. 309310.
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68 Id., at p. 199.
69 Id.
70 Samson v. Daway, supra note 51.
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Relevantly, grave abuse of discretion means such
capricious or whimsical exercise of judgment that is
equivalent to lack of jurisdiction. The abuse of discretion
must be grave, as when the power is exercised in an
arbitrary or despotic manner by reason of passion or
personal hostility, and it must be so patent and gross as to
amount to an evasion of a positive duty or to a virtual
refusal to perform the duty enjoined, or to act at all, in
contemplation of law, as to be equivalent to having acted
without jurisdiction.73 Herein, Caterpillar did not show the
grave abuse of discretion on the part of the Secretary of
Justice.
WHEREFORE, the Court GRANTS the petition for
review in G.R. No. 164352; SETS ASIDE the decision
promulgated on January 21, 2004 in C.A.G.R. S.P. No.
75526; DIRECTS the Regional Trial Court in Muntinlupa
City to reinstate Criminal Cases Nos. Q0210804344 and
forthwith try and decide them without undue delay;
DENIES the petition for review on certiorari in G.R. No.
205972; and ORDERS respondent Manolo P. Samson to
pay the costs of suit.
SO ORDERED.
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