Atty.

Mark Del Rosario

MACALE 2020 INTELLECTUAL PROPERTY LAW

2. Civil
a) Infringement 157.2. In regard to counterfeit goods, the simple removal of the
SECTION 155 trademark affixed shall not be sufficient other than in exceptional
Remedies; Infringement cases which shall be determined by the Regulations, to permit the
Any person who shall, without the consent of the owner of the release of the goods into the channels of commerce.
registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or SECTION 158
colorable imitation of a registered mark or the same container or Damages; Requirement of Notice.
a dominant feature thereof in connection with the sale, offering (GENERAL RULE) In any suit for infringement, the owner of the
for sale, distribution, advertising of any goods or services registered mark shall not be entitled to recover profits or
including other preparatory steps necessary to carry out the sale damages unless the acts have been committed with knowledge
of any goods or services on or in connection with which such use that such imitation is likely to cause confusion, or to cause
is likely to cause confusion, or to cause mistake, or to deceive; or mistake, or to deceive. Such knowledge is PRESUMED if the
registrant gives notice that his mark is registered by displaying
155.2. Reproduce, counterfeit, copy or colorably imitate a with the mark the words ‘”Registered Mark” or the letter R within
registered mark or a dominant feature thereof and apply such a circle or if the defendant had otherwise actual notice of the
reproduction, counterfeit, copy or colorable imitation to labels, registration. (® = Registered)
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the CAUSE OF ACTION
sale, offering for sale, distribution, or advertising of goods or WITH KNOWLEDGE WITHOUT KNOWLEDGE
services on or in connection with which such use is likely to cause 1) infringement 1) injunction
confusion, or to cause mistake, or to deceive, shall be liable in a 2) destruction
civil action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes place SECTION 159
at the moment any of the acts stated in Subsection 155.1 or this LIMITATIONS TO ACTIONS FOR INFRINGEMENT.
subsection are committed regardless of whether there is actual Notwithstanding any other provision of this Act, the remedies
sale of goods or services using the infringing material. given to the owner of a right infringed under this Act shall be
limited as follows:
SECTION 156
Actions, and Damages and Injunction for Infringement 159.1. Notwithstanding the provisions of Section 155 hereof, a
156.1. The owner of a registered mark may recover damages registered mark shall have no effect against any person who, in
from any person who infringes his rights, and the measure of the good faith, before the filing date or the priority date, was using
damages suffered shall be either the reasonable profit which the the mark for the purposes of his business or enterprise:
complaining party would have made, had the defendant not Provided, That his right may only be transferred or assigned
infringed his rights, or the profit which the defendant actually together with his enterprise or business or with that part of his
made out of the infringement, or in the event such measure of enterprise or business in which the mark is used.
damages cannot be readily ascertained with reasonable certainty,
then the court may award as damages a reasonable percentage 159.2. Where an infringer who is engaged solely in the business
based upon the amount of gross sales of the defendant or the of printing the mark or other infringing materials for others is an
value of the services in connection with which the mark or trade innocent infringer, the owner of the right infringed shall be
name was used in the infringement of the rights of the entitled as against such infringer only to an injunction against
complaining party. future printing.

156.2. On application of the complainant, the court may impound 159.3. Where the infringement complained of is contained in or
during the pendency of the action, sales invoices and other is part of paid advertisement in a newspaper, magazine, or other
documents evidencing sales. similar periodical or in an electronic communication, the
remedies of the owner of the right infringed as against the
156.3. In cases where actual intent to mislead the public or to publisher or distributor of such newspaper, magazine, or other
defraud the complainant is shown, in the discretion of the court, similar periodical or electronic communication shall be limited to
the damages may be doubled. an (REMEDY) injunction against the presentation of such
advertising matter in future issues of such newspapers,
156.4. The complainant, upon proper showing, may also be magazines, or other similar periodicals or in future transmissions
granted injunction. of such electronic communications. The limitations of this
subparagraph shall apply only to innocent infringers: Provided,
SECTION 157 That such injunctive relief shall not be available to the owner of
Power of Court to Order Infringing Material Destroyed. the right infringed with respect to an issue of a newspaper,
157.1 In any action arising under this Act, in which a violation of magazine, or other similar periodical or an electronic
any right of the owner of the registered mark is established, the communication containing infringing matter where restraining
court may order that goods found to be infringing be, without the dissemination of such infringing matter in any particular
compensation of any sort, disposed of outside the channels of issue of such periodical or in an electronic communication would
commerce in such a manner as to avoid any harm caused to the delay the delivery of such issue or transmission of such electronic
right holder, or destroyed; and all labels, signs, prints, packages, communication is customarily conducted in accordance with the
wrappers, receptacles and advertisements in the possession of sound business practice, and not due to any method or device
the defendant, bearing the registered mark or trade name or any adopted to evade this section or to prevent or delay the issuance
reproduction, counterfeit, copy or colorable imitation thereof, all of an injunction or restraining order with respect to such
plates, molds, matrices and other means of making the same, infringing matter; and
shall be delivered up and destroyed.

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

Section 2. The writ of search and seizure. - Where any delay is

159.4 There shall be no infringement of trademarks or likely to cause irreparable harm to the intellectual property right
tradenames of imported or sold drugs and medicines allowed holder or where there is demonstrable risk of evidence being
under Section 72.1 of this Act, as well as imported or sold off- destroyed, the intellectual property right holder or his duly
patent drugs and medicines: Provided, That said drugs and authorized representative in a pending civil action for
medicines bear the registered marks that have not been infringement or who intends to commence such an action may
tampered, unlawfully modified, or infringed upon as defined apply ex parte for the issuance of a writ of search and seizure
under Section 155 of this Code. directing the alleged infringing defendant or expected adverse
party to admit into his premises the persons named in the order
SECTION 161 and to allow the search, inspection, copying, photographing,
Authority to Determine Right to Registration. audio and audiovisual recording or seizure of any document and
In any action involving a registered mark, the court may article specified in the order.
determine the right to registration, order the cancellation of a
registration, in whole or in part, and otherwise rectify the Section 3. WHERE APPLICATION FILED. – (GENERAL RULE)
register with respect to the registration of any party to the action The application shall be filed with any of the Regional Trial
in the exercise of this. Judgment and orders shall be certified by Courts of the judicial region designated to try violations of
the court to the Director, who shall make appropriate entry upon intellectual property rights stationed at the place where the
the records of the Bureau, and shall be controlled thereby. alleged violation occurred or is to occur, or me place to be
searched, at the election of the applicant. (EXCEPTION) Provided,
SECTION 163 however, that where the complaint for infringement has already
JURISDICTION of Court been filed, the application shall be made in the court where the
All actions under Sections 150, 155, 164, and 166 to 169 shall be case is rending.
brought before the proper courts with appropriate jurisdiction Note: Another exception is under Section 2 of A.M.No. 10-3-10-
under existing laws. SC: “x x x the Special Commercial Courts in the judicial regions
Note: where the violation of intellectual property rights occurred shall
Administrative Infringement Bureau of Legal Affairs have concurrent jurisdiction to issue writs of search and seizure.
Civil Infringement Regular Courts (simply put, same judicial region)”

Q. Administrative and civil cases are basically the same, so why Section 6. GROUNDS FOR THE ISSUANCE OF THE ORDER. -
would you file an administrative case instead of a civil case? Before the Order can be issued, the evidence proffered by the
A. Administrative Infringement substantial evidence applicant and personally evaluated by the judge must show that:
Civil Infringement preponderance of evidence a. the applicant is the right holder or his duly authorized
representative;
SECTION 164 b. there is probable cause to believe that the applicant's right is
NOTICE OF FILING suit Given to the Director being infringed or that such infringement is imminent and
It shall be the duty of the clerks of such courts within 1 month there is a prima facie case for final relief against the alleged
after the filing of any action, suit, or proceeding involving a mark infringing defendant or expected adverse party;
registered under the provisions of this Act, to notify the Director c. damage, potential or actual, likely to be caused to the
in writing setting forth: the names and addresses of the litigants applicant is irreparable;
and designating the number of the registration or registrations d. there is demonstrable risk of evidence that the alleged
and within 1 month after the judgment is entered or an appeal is infringing defendant or expected adverse party may destroy,
taken, the clerk of court shall give notice thereof to the Office, and hide or remove the documents or articles before any
the latter shall endorse the same upon the filewrapper of the said application inter partes can be made; and
registration or registrations and incorporate the same as a part of e. the documents and articles to be seized constitute evidence
the contents of said filewrapper. of the alleged infringing defendant's or expected adverse
party's infringing activity or that they infringe upon the
SECTION 232 intellectual property right of the applicant or that they are
Appeals used or intended to be used as means of infringing the
232.1. Appeals from decisions of regular courts shall be applicant's intellectual property right.
governed by the Rules of Court. Unless restrained by a higher
court, the judgment of the trial court shall be executory even  FRUIT OF THE LOOM V. CA (1984)
pending appeal under such terms and conditions as the court FACTS: Fruit of the Loom, a corporation duly organized and
may prescribe. existing under the laws of the US, is the registrant of a trademark,
FRUIT OF THE LOOM. The classes of merchandise covered by
232.2. Unless expressly provided in this Act or other statutes, Registration Certificate are men's, women's and children's
appeals from decisions of administrative officials shall be underwear.
provided in the Regulations.
Private respondent, a domestic corporation, is the registrant of a
Q. What can you do if you think that there is infringement? trademark FRUIT FOR EVE covering garments similar to
A. Apply for a search warrant. petitioner's products like women's panties and pajamas.
Note: Power to issue is strictly judicial, IPO has no power to issue
search warrants Fruit of the Loom filed a complaint for infringement of trademark
and unfair competition against the herein private respondent,
A.M. No. 02-1-06-SC: alleging that General Garments’ trademark FRUIT FOR EVE is
Rule on Search and Seizure in Civil Actions for Infringement confusingly similar to its trademark FRUIT OF THE LOOM used
of Intellectual Property Rights also on women's panties and other textile products. Furthermore,
the color get-up and general appearance of private respondent's

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

hang tag consisting of a big red apple is a colorable imitation to apple at the center of each mark, We also find differences or
the hang tag of petitioner. dissimilarities which are glaring and striking to the eye such as:

General Garments argued that its registered trademark is not FRUIT OF THE LOOM FRUIT FOR EVE
confusingly similar to that of petitioner as the latter alleged. SHAPE round with a base that looks plain rectangle
Likewise, FRUIT FOR EVE is being used on ladies' panties and OF HANG like a paper rolled a few without any base
pajamas only whereas petitioner's trademark is used even on TAG inches in both ends
men's underwear and pajamas. DESIGN Trademark is written in Written in straight
almost semi-circle line in bigger
Petitioner are contends that the word FRUIT, being a generic letters than
word, is not capable of exclusive appropriation by petitioner and petitioner's
that the registrant of a trademark is not entitled to the exclusive TAG Has also clusters of grapes Has only an apple
use of every word of his mark. Otherwise stated, petitioner that surround the apple in in its center
argues that the respondent court committed an error in ruling the center
that petitioner cannot appropriate exclusively the word FRUIT in COLORS Light brown Pink with a white
its trademark FRUIT OF THE LOOM, and that there is no colored center
confusing similarity in sound and appearance between the two piece
trademarks in question. APPLES Dark red Light red

According to petitioner, the prominent and dominant features in The similarities of the competing trademarks in this case are
both of petitioner's and private respondent's trademark are the completely lost in the substantial differences in the design and
word FRUIT and the big red apple design; that ordinary or general appearance of their respective hang tags.
average purchasers upon seeing the word FRUIT and the big red
apple in private respondent's label or hang tag would be led to We are impressed more by the dissimilarities than by the
believe that the latter's products are those of the petitioner. similarities appearing therein. WE hold that the trademarks
FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each
ISSUE: WON private respondent's trademark FRUIT FOR EVE other as to confuse or deceive an ordinary purchaser.
and its hang tag are confusingly similar to petitioner's trademark
FRUIT OF THE LOOM and its hang tag so as to constitute an The ordinary purchaser must be thought of as having, and
infringement of the latter's trademark rights and justify the credited with, at least a modicum of intelligence to be able to see
cancellation of the former (NO) the obvious differences between the two trademarks in question.
Furthermore, a person who buys petitioner's products and starts
Note: to have a liking for it, will not get confused and reach out for
o Best evidence  Label itself (hangtag) no likelihood of private respondent's products when she goes to a garment store
confusion
o Dominant mark  Fruit  DEL MONTE CORP. V. CA
FACTS: Del Monte Corporation is a foreign company organized
RULING: There is infringement of trademark when the use of the under the laws of the US, not engaged in business in the PH. Both
mark involved would be likely to cause confusion or mistake in the PH and the US are signatories to the Convention of Paris.
the mind of the public or to deceive purchasers as to the origin or Philpack is a domestic corporation.
source of the commodity. In cases of this nature, there can be no
better evidence as to whether there is a confusing similarity in Del Monte granted Philpack the right to manufacture, distribute
the contesting trademarks than the labels or hang tags and sell in the PH catsup, under the Del Monte trademark and
themselves. logo. Del Monte authorized Philpack to register the Del Monte
catsup bottle configuration, which was granted under the
In determining whether the trademarks are confusingly similar, a Supplemental Register. Del Monte also obtained two registration
comparison of the words is not the only determinant factor. The certificates for its trademark "DEL MONTE" and its logo.
trademarks in their entirety as they appear in their respective
labels or hang tags must also be considered in relation to the Having received reports that the Sunshine Sauce was using its
goods to which they are attached. The discerning eye of the exclusively designed bottles and a logo confusingly similar to Del
observer must focus not only on the predominant words but also Monte's, Philpack warned it to desist from doing so on pain of
on the other features appearing in both labels in order that he legal action. Thereafter, claiming that the demand had been
may draw his conclusion whether one is confusingly similar to ignored, Philpack and Del Monte filed a complaint against
the other. Sunshine Sauce for infringement of trademark and unfair
competition, with a prayer for damages and the issuance of a writ
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the of preliminary injunction.
lone similar word is FRUIT. By mere pronouncing the two marks,
it could hardly be said that it will provoke a confusion, as to Sunshine alleged that it had long ceased to use the Del Monte
mistake one for the other. Standing by itself, FRUIT OF THE bottle and that its logo was substantially different from the Del
LOOM is wholly different from FRUIT FOR EVE. WE do not agree Monte logo and would not confuse the buying public to the
with petitioner that the dominant feature of both trademarks is detriment of the petitioners.
the word FRUIT for even in the printing of the trademark in both
hang tags, the word FRUIT is not at all made dominant over the To arrive at a proper resolution of this case, it is important to
other words. bear in mind the following distinctions between infringement of
trademark and unfair competition
As to the design and coloring scheme of the hang tags, We believe
that while there are similarities in the two marks like the red

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

INFRINGEMENT UNFAIR
COMPETITION The ordinary buyer does not usually make such scrutiny nor does
DEFINITION unauthorized use of passing off of one's he usually have the time to do so. The average shopper is usually
a trademark goods as those of in a hurry and does not inspect every product on the shelf as if he
another were browsing in a library. Where the housewife has to return
FRAUDULENT NOT necessary ESSENTIAL home as soon as possible to her baby or the working woman has
INTENT to make quick purchases during her off hours, she is apt to be
confused by similar labels even if they do have minute
PRIOR prerequisite NOT necessary differences. The male shopper is worse as he usually does not
REGISTRATION OF bother about such distinctions.
TRADEMARK
The question is NOT whether the two articles are distinguishable
In the challenged decision, the respondent court held that there by their label when set side by side but whether the general
was no colorable imitation of the petitioners' trademark and logo confusion made by the article upon the eye of the casual
by the private respondent; it held that In determining whether purchaser who is unsuspicious and off his guard, is such as to
two trademarks are confusingly similar, the two marks in their likely result in his confounding it with the original. As observed
entirety as they appear in the respective labels must be in several cases, the general impression of the ordinary
considered in relation to the goods to which they are attached; purchaser, buying under the normally prevalent conditions in
the discerning eye of the observer must focus not only on the trade and giving the attention such purchasers usually give in
predorninant words but also on the other features appearing on buying that class of goods is the touchstone.
both labels.
In making purchases, the consumer must depend upon his
DEL MONTE SUNSHINE recollection of the appearance of the product which he intends to
SHAPE OF Semi-rectangular with Regular rectangle purchase. The buyer having in mind the mark/label of the
LABEL a crown or tomato respondent must rely upon his memory of the petitioner's mark.
shape design on top of Unlike the judge who has ample time to minutely examine the
the rectangle labels in question in the comfort of his sala, the ordinary shopper
does not enjoy the same opportunity.
BRAND Tomato catsup mark Fruit catsup
PRINTED The court therefore should be guided by its first impression, for a
ON LABEL buyer acts quickly and is governed by a casual glance, the value of
which may be dissipated as soon as the court assumes to analyze
carefully the respective features of the mark. It is the function of
WORDS OR Clearly indicated Sunshine fruit catsup
the court in cases of infringement and unfair competition to take
LETTERING words packed by Sysu is clearly indicated
their carelessness for granted, and to be ever conscious of the
ON LABEL International, Inc., "made in the PH by
fact that marks need not be identical. A confusing similarity will
Q.C., PH Sunshine Sauce
justify the intervention of equity. The judge must also be aware of
Manufacturing
the fact that usually a defendant in cases of infringement does not
Industries" No. 1 Del
normally copy but makes only colorable changes. Well has it been
Monte Avenue,
said that the most successful form of copying is to employ enough
Malabon, Metro Manila.
points of similarity to confuse the public with enough points of
difference to confuse the courts.
COLOR OF Combination of yellow White, light green and
LOGO and dark red, with light red, with words
Several factors would affect its conclusion, to wit:
words "Del Monte "Sunshine Brand" in
1) age, training and education of the usual purchaser,
Quality" in white. yellow.
2) the nature and cost of the article, whether the article is
bought for immediate consumption and also the conditions
SHAPE OF In the shape of a Entirely different in
under which it is usually purchased .
LOGO tomato shape
Among these, what essentially determines the attitude of the
purchaser, specifically his inclination to be cautious, is the cost of
LABEL Seal covering the cap There is a label below the goods. As a general rule, an ordinary buyer does not exercise
BELOW down to the neck of the cap which says
as much prudence in buying an article for which he pays a few
THE CAP the bottle, with picture "Sunshine Brand” centavos as he does in purchasing a more valuable thing.
of tomatoes with
Expensive and valuable items are normally bought only after
words "made from deliberate, comparative and analytical investigation. But mass
real tomatoes."
products, low priced articles in wide use, and matters of everyday
purchase requiring frequent replacement are bought by the
COLOR OF Darker red Lighter than Del casual consumer without great care. In this latter category is
PRODUCT Monte catsup.

Even if the labels were analyzed together it is not difficult to see

ISSUES: that the Sunshine label IS A COLORABLE IMITATION of the Del
1. WON there is infringement on label (YES) Monte trademark.
Side-by-side comparison is NOT the final test of similarity. Such o The predominant colors used in the Del Monte label are
comparison requires a careful scrutiny to determine in what green and redorange, the same with Sunshine.
points the labels of the products differ, as was done by the trial o The word "catsup" in both bottles is printed in white and
judge.
the style of the print/letter is the same.

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o Although the logo of Sunshine is not a tomato, the figure Corporation, Not to be Refilled" was embossed on the bottle, still
nevertheless approximates that of a tomato. opted to use the petitioners' bottle to market a product which
When a manufacturer prepares to package his product, he has Philpack also produces. This clearly shows the private
before him a boundless choice of words, phrases, colors and respondent's bad faith and its intention to capitalize on the
symbols sufficient to distinguish his product from the others. latter's reputation and goodwill and pass off its own product as
that of Del Monte.
When as in this case, Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by Regarding the fact of registration, it is to be noted that the
Del Monte though the field of its selection was so broad, the Sunshine label was registered not in the Principal Register but
inevitable conclusion is that it was done deliberately to deceive; only in the Supplemental Register where the presumption of the
in cases of grave doubt is the rule that as between a newcomer validity of the trademark, the registrant's ownership of the mark
who by the confusion has nothing to lose and everything to gain and his right to its exclusive use are all absent.
and one who by honest dealing has already achieved favor with
the public, any doubt should be resolved against the newcomer Anent the assumption that the Bureau of Patent had considered
inasmuch as the field from which he can select a desirable other existing patents, it is reiterated that since registration was
trademark to indicate the origin of his product is obviously a only in the Supplemental Register, this did not vest the registrant
large one. with the exclusive right (or protection) to use the label nor did it
give rise to the presumption of the validity of the registration.
As Sunshine's label is an infringement of the Del Monte's
trademark, law and equity call for the CANCELLATION of the Note: Use Holistic Test. Since the bottle was registered in the
private respondent's registration and WITHDRAWAL of all its supplemental register only, there is no protection. One element
products bearing the questioned label from the market. for infringement protection is it must be registered. In this case,
no damages since they did not present evidence
2. WON there is infringement on container/bottle (NO)
REGISTRATION IN THE REGISTER REGISTRATION IN 3. WON there is unfair competition (YES)
PRINCIPAL SUPPLEMENTAL REGISTER With regard to the use of Del Monte's bottle, the same constitutes
unfair competition; hence, the respondent should be
Gives rise to a presumption of Does not give rise to the same permanently enjoined from the use of such bottles.
the validity of the registration, presumption.
the registrant's ownership of Good faith is not a defense in unfair competition. If that is put
the mark and his right to the forward in a question, qualify that. That’s been a radical concept
exclusive use thereof. different from jurisprudence. Basis is the Administrative Order.
LIMITED to the actual owner of
the trademark and  MCDONALD’S CORP. V. L.C. BIG MAK (2004)
proceedings therein on the FACTS: McDonald's owns a family of marks including the "Big
issue of ownership which may Mac" mark for its "double-decker hamburger sandwich."
be contested through McDonald's registered this trademark with the United States
opposition or interference Trademark Registry. Based on this Home Registration,
proceedings or, after McDonald's applied for the registration of the same mark in the
registration, in a petition for Principal Register. Pending approval of its application,
cancellation. McDonald's introduced its "Big Mac" hamburger sandwiches in
In applications for registration This is not so in applications the Philippine market. PBPTT allowed registration of the "Big
in the Principal Register, for registrations in the Mac" mark in the Principal Register based on its Home
publication of the application Supplemental Register. Registration in the United States.Like its other marks, McDonald's
is necessary. displays the "Big Mac" mark in items and paraphernalia in its
Registration in the Principal Registration in the restaurants, and in its outdoor and indoor signages. McDonald's
Register is constructive notice Supplemental Register is spent P10.5 million in advertisement for "Big Mac" hamburger
of the registrant's claim of merely proof of actual use of sandwiches alone.
ownership. the trademark and notice that
the registrant has used or L.C. Big Mak Burger operates fast-food outlets and snack vans in
appropriated it. It is not Metro Manila and nearby provinces. Its menu includes
subject to opposition although hamburger sandwiches and other food items. It applied for the
it may be cancelled after the registration of the "Big Mak" mark for its hamburger sandwiches.
issuance.
Registration in the Principal Registration in the McDonald's opposed respondent corporation's application on the
Register is a basis for an action Supplemental Register is NOT ground that "Big Mak" was a colorable imitation of its registered
for infringement. a basis for an action for "Big Mac" mark for the same food products. McDonald's also
infringement. informed respondent corporation of its exclusive right to the "Big
Mac" mark and requested him to desist from using the "Big Mac"
It can be inferred from the foregoing that although Del Monte has mark or any similar mark. Having received no reply, petitioners
actual use of the bottle's configuration, the petitioners cannot sued respondents for trademark infringement and unfair
claim exclusive use thereof because it has not been registered in competition. RTC issued a TRO against respondents enjoining
the Principal Register. them from using the "Big Mak" mark in the operation of their
business. RTC issued a writ of preliminary injunction replacing
However, we find that Sunshine, despite the many choices the TRO.
available to it and notwithstanding that the caution "Del Monte

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In their Answer, respondents admitted that they have been using the validity of the registrant's exclusive right to use the mark on
the name "Big Mak Burger" for their fast-food business. the goods specified in the certificate.
Respondents claimed, however, that McDonald's does not have
an exclusive right to the "Big Mac" mark or to any other similar Section 22 covers two types of confusion arising from the use of
mark. similar or colorable imitation marks, namely, confusion of goods
(product confusion) and confusion of business (source or origin
Respondents point out that the Isaiyas Group registered the same confusion). (i) The first is the confusion of goods "in which event
mark for hamburger sandwiches with the PBPTT. Topacio the ordinarily prudent purchaser would be induced to purchase
similarly registered the same mark prior to McDonald's one product in the belief that he was purchasing the other." (ii)
registration. Alternatively, "Big Mak" does not constitute a The other is the confusion of business: "Here though the goods of
colorable imitation of the "Big Mac" mark. Respondents asserted the parties are different, the defendant's product is such as might
that they did not fraudulently pass off their hamburger reasonably be assumed to originate with the plaintiff, and the
sandwiches as those of petitioners' Big Mac hamburgers. public would then be deceived either into that belief or into the
belief that there is some connection between the plaintiff and
Respondents sought damages in their counterclaim. In their defendant which, in fact, does not exist."
Reply, petitioners denied respondents' claim that McDonald's is
not the exclusive owner of the "Big Mac" mark. Petitioners Under Act No. 666, the first trademark law, infringement was
asserted that while the Isaiyas Group and Topacio did register limited to confusion of goods only, when the infringing mark is
the "Big Mac" mark ahead of McDonald's, the Isaiyas Group did so used on "goods of a similar kind." Thus, no relief was afforded to
only in the Supplemental Register of the PBPTT and such the party whose registered mark or its colorable imitation is used
registration does not provide any protection. McDonald's on different although related goods. To remedy this situation,
disclosed that it had acquired Topacio's rights to his registration Congress enacted RA 166 on 20 June 1947. In defining trademark
in a Deed of Assignment. infringement, Section 22 of RA 166 deleted the requirement in
question and expanded its scope to include such use of the mark
Respondents contend that of the two words in the "Big Mac" or its colorable imitation that is likely to result in confusion on
mark, it is only the word "Mac" that is valid because the word "the source or origin of such goods or services, or identity of such
"Big" is generic and descriptive and thus "incapable of exclusive business." Thus, while there is confusion of goods when the
appropriation." products are competing, confusion of business exists when the
products are non-competing but related enough to produce
ISSUE: WON "Big Mak" is liable for trademark infringement and confusion of affiliation.
unfair competition. (YES, to both)
Respondents assert that their "Big Mak" hamburgers cater mainly
RULING: to the low-income group while petitioners' "Big Mac"
ELEMENTS TO ESTABLISH TRADEMARK INFRINGEMENT: hamburgers cater to the middle and upper income groups. Even if
1. Validity of plaintiff’s mark this is true, the likelihood of confusion of business remains, since
2. Plaintiff’s ownership of mark the lowincome group might be led to believe that the "Big Mak"
3. Use of the mark or of its colorably imitation results in hamburgers are the low-end hamburgers marketed by
likelihood of confusion  the essence and most important petitioners. After all, petitioners have the exclusive right to use
the "Big Mac" mark. On the other hand, respondents would
A mark is valid if it is "distinctive" and thus not barred from benefit by associating their low-end hamburgers, through the use
registration. However, once registered, not only the mark's of the "Big Mak" mark, with petitioners' high-end "Big Mac"
validity but also the registrant's ownership of the mark is prima hamburgers, leading to likelihood of confusion in the identity of
facie presumed. business.

The "Big Mac" mark, which should be treated in its entirety and Respondents further claim that petitioners use the "Big Mac"
not dissected word for word, is neither generic nor descriptive. mark only on petitioners' double-decker hamburgers, while
Generic marks are commonly used as the name or description of respondents use the "Big Mak" mark on hamburgers and other
a kind of goods, such as "Lite" for beer or "Chocolate Fudge" for products like siopao, noodles and pizza. Respondents also point
chocolate soda drink. Descriptive marks, on the other hand, out that petitioners sell their Big Mac double-deckers in a
convey the characteristics, functions, qualities or ingredients of a styrofoam box with the "McDonald's" logo and trademark in red,
product to one who has never seen it or does not know it exists, block letters at a price more expensive than the hamburgers of
such as "Arthriticare" for arthritis medication. respondents. In contrast, respondents sell their Big Mak
hamburgers in plastic wrappers and plastic bags. Respondents
On the contrary, "Big Mac" falls under the class of fanciful or further point out that petitioners' restaurants are air-conditioned
arbitrary marks as it bears no logical relation to the actual buildings with drive-thru service, compared to respondents'
characteristics of the product it represents. As such, it is highly mobile vans.
distinctive and thus valid. Petitioners have duly established
McDonald's exclusive ownership of the "Big Mac" mark. These and other factors respondents cite cannot negate the
undisputed fact that respondents use their "Big Mak" mark on
Although Topacio and the Isaiyas Group registered the "Big Mac" hamburgers, the same food product that petitioners' sell with the
mark ahead of McDonald's, Topacio, as petitioners disclosed, had use of their registered mark "Big Mac." Whether a hamburger is
already assigned his rights to McDonald's. The Isaiyas Group, on single, double or triple-decker, and whether wrapped in plastic
the other hand, registered its trademark only in the Supplemental or styrofoam, it remains the same hamburger food product. Even
Register. A mark which is not registered in the Principal Register, respondents' use of the "Big Mak" mark on nonhamburger food
and thus not distinctive, has no real protection; registration in products cannot excuse their infringement of petitioners'
the Supplemental Register is not even a prima facie evidence of registered mark, otherwise registered marks will lose their
protection under the law.

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 Atty. Mark Del Rosario
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consumers will mistakenly associate petitioners' hamburgers and

The registered trademark owner may use his mark on the same business with those of respondents'.
or similar products, in different segments of the market, and at
different price levels depending on variations of the products for Respondents' inability to explain sufficiently how and why they
specific segments of the market. The Court has recognized that came to choose "Big Mak" for their hamburger sandwiches
the registered trademark owner enjoys protection in product and indicates their intent to imitate petitioners' "Big Mac" mark.
market areas that are the normal potential expansion of his Contrary to the Court of Appeals' finding, respondents' claim that
business. Thus, the Court has declared: “Modern law recognizes their "Big Mak" mark was inspired by the first names of
that the protection to which the owner of a trademark is entitled respondent Dy's mother (Maxima) and father (Kimsoy) is not
is not limited to guarding his goods or business from actual credible. Absent proof that respondents' adoption of the "Big
market competition with identical or similar products of the Mak" mark was due to honest mistake or was fortuitous, the
parties, but extends to all cases in which the use by a junior inescapable conclusion is that respondents adopted the "Big
appropriator of a trade-mark or trade-name is likely to lead to a Mak" mark to "ride on the coattails" of the more established "Big
confusion of source, as where prospective purchasers would be Mac" mark. This saves respondents much of the expense in
misled into thinking that the complaining party has extended his advertising to create market recognition of their mark and
business into the field or is in any way connected with the hamburgers.
activities of the infringer; or when it forestalls the normal
potential expansion of his business.” Thus, we hold that confusion is likely to result in the public mind.
We sustain petitioners' claim of trademark infringement.
This Court has relied on the dominancy test rather than the
holistic test. The dominancy test considers the dominant features elements of an action for unfair competition:
in the competing marks in determining whether they are 1. confusing similarity in the general appearance of the goods,
confusingly similar. Under the dominancy test, courts give 2. intent to deceive the public and defraud a competitor.
greater weight to the similarity of the appearance of the product
arising from theadoption of the dominant features of the The confusing similarity may or may not result from similarity in
registered mark, disregardingminor differences. Courts will the marks, but may result from other external factors in the
consider more the aural and visual impressions created by the packaging or presentation of the goods. The intent to deceive and
marks in the public mind, giving little weight to factors like defraud may be inferred from the similarity of the appearance of
prices, quality, sales outlets and market segments. the goods as offered for sale to the public. Actual fraudulent
intent need not be shown.
The test of dominancy is now explicitly incorporated into law in
Section 155.1 of the Intellectual Property Code which defines Unfair competition is broader than trademark infringement and
infringement as the "colorable imitation of a registered mark xxx includes passing off goods with or without trademark
or a dominant feature thereof." infringement. Trademark infringement is a form of unfair
competition. (not accurate)
Applying the dominancy test, the Court finds that respondents'
use of the "Big Mak" mark results in likelihood of confusion. Trademark infringement constitutes unfair competition when
(i) Big Mak sounds exactly the same as "Big Mac." there is not merely likelihood of confusion, but also actual or
(ii) The first word in "Big Mak" is exactly the same as the probable deception on the public because of the general
first word in "Big Mac." appearance of the goods.
(iii) The first two letters in "Mak" are the same as the first
two letters in "Mac." There can be trademark infringement without unfair competition
(iv) The last letter in "Mak" while a "k" sounds the same as as when the infringer discloses on the labels containing the mark
"c" when the word "Mak" is pronounced. that he manufactures the goods, thus preventing the public from
(v) In Filipino, the letter "k" replaces "c" in spelling. being deceived that the goods originate from the trademark
In short, aurally the two marks are the same, with the first word owner.
of both marks phonetically the same, and the second word of
both marks also phonetically the same. Visually, the two marks To support their claim of unfair competition, petitioners allege
have both two words and six letters, with the first word of both that respondents fraudulently passed off their hamburgers as
marks having the same letters and the second word having the "Big Mac" hamburgers. Petitioners add that respondents'
same first two letters. In spelling, considering the Filipino fraudulent intent can be inferred from the similarity of the marks
language, even the last letters of both marks are the same. in question.

Clearly, respondents have adopted in "Big Mak" not only the Passing off (or palming off) takes place where the defendant, by
dominant but also almost all the features of "Big Mac." Applied to imitative devices on the general appearance of the goods,
the same food product of hamburgers, the two marks will likely misleads prospective purchasers into buying his merchandise
result in confusion in the public mind. under the impression that they are buying that of his
competitors. Thus, the defendant gives his goods the general
Indeed, a person cannot distinguish "Big Mac" from "Big Mak" by appearance of the goods of his competitor with the intention of
their sound. When one hears a "Big Mac" or "Big Mak" hamburger deceiving the public that the goods are those of his competitor.
advertisement over the radio, one would not know whether the
"Mac" or "Mak" ends with a "c" or a "k." Respondents point to these dissimilarities as proof that they did
not give their hamburgers the general appearance of petitioners'
Petitioners' aggressive promotion of the "Big Mac" mark, as "Big Mac" hamburgers. The dissimilarities in the packaging are
borne by their advertisement expenses, has built goodwill and minor compared to the stark similarities in the words that give
reputation for such mark making it one of the easily recognizable respondents' "Big Mak" hamburgers the general appearance of
marks in the market today. This increases the likelihood that petitioners' "Big Mac" hamburgers. Section 29(a) expressly

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

provides that the similarity in the general appearance of the ISSUE: WON ABI, by manufacturing and selling its BEER PALE
goods may be in the "devices or words" used on the wrappings. PILSEN in 320 ML amber colored steinie bottles with a white
Respondents have applied on their plastic wrappers and bags painted rectangular label has committed trademark infringement
almost the same words that petitioners use on their styrofoam and unfair competition against SMC (NO)
box. What attracts the attention of the buying public are the
words "Big Mak" which are almost the same, aurally and visually, RULING: The fact that BEER PALE PILSEN like SAN MIGUEL
as the words "Big Mac." PALE PILSEN is bottled in ambercolored steinie bottles of 320 ml.
capacity and is also advertised in print, broadcast, and television
The dissimilarities in the material and other devices are media, does not necessarily constitute unfair competition.
insignificant compared to the glaring similarity in the words used
in the wrappings. Unfair competition is the employment of deception or any other
means contrary to good faith by which a person shall pass off the
Section 29(a) also provides that the defendant gives "his goods goods manufactured by him or in which he deals, or his business,
the general appearance of goods of another manufacturer." or services, for those of another who has already established
Respondents' goods are hamburgers which are also the goods of goodwill for his similar goods, business or services, or any acts
petitioners. If respondents sold egg sandwiches only instead of calculated to produce the same result.
hamburger sandwiches, their use of the "Big Mak" mark would
not give their goods the general appearance of petitioners' "Big In this case, the question to be determined is whether ABI is
Mac" hamburgers. In such case, there is only trademark using a name or mark for its beer that has previously come to
infringement but no unfair competition. However, since designate SMC's beer, or whether ABI is passing off its BEER
respondents chose to apply the "Big Mak" mark on hamburgers, PALE PILSEN as SMC's SAN MIGUEL PALE PILSEN.
just like petitioner's use of the "Big Mac" mark on hamburgers, o The universal test question is whether the public is likely to
respondents have obviously clothed their goods with the general be deceived.
appearance of petitioners' goods. o Nothing less than conduct tending to pass off one man's
goods or business as that of another will constitute unfair
Moreover, there is no notice to the public that the "Big Mak" competition. Actual or probable deception and confusion on
hamburgers are products of "L.C. Big Mak Burger, Inc." the part of the customers by reason of defendant's practices
Respondents introduced during the trial plastic wrappers and must always appear.
bags with the words "L.C. Big Mak Burger, Inc." to inform the o The use of ABI of the steinie bottle, similar but not identical
public of the name of the seller of the hamburgers. However, to the SAN MIGUEL PALE PILSEN bottle, is not unlawful. As
petitioners introduced during the injunctive hearings plastic pointed out by ABI's counsel, SMC did not invent but merely
wrappers and bags with the "Big Mak" mark without the name borrowed the steinie bottle from abroad and it claims
"L.C. Big Mak Burger, Inc." Respondents' belated presentation of neither patent nor trademark protection for that bottle
plastic wrappers and bags bearing the name of "L.C. Big Mak shape and design.
Burger, Inc." as the seller of the hamburgers is an after-thought o There is no infringement of plaintiff's bottle, firstly, because
designed to exculpate them from their unfair business conduct. according to plaintiff's witness Deogracias Villadolid, it is a
As earlier stated, we cannot consider respondents' evidence since standard type of bottle called steinie, and it is not a San
petitioners' complaint was based on facts existing before and Miguel Corporation design but a design originally developed
during the injunctive hearings. in the United States by the Glass Container Manufacturer's
Institute and therefore lacks exclusivity.
Thus, there is actually no notice to the public that the "Big Mak" o Secondly, the shape was never registered as a trademark.
hamburgers are products of "L.C. Big Mak Burger, Inc." and not o Thirdly, the neck of defendant's bottle is much larger and
those of petitioners who have the exclusive right to the "Big Mac" has a distinct bulge in its uppermost part.
mark. This clearly shows respondents' intent to deceive the
public. Had respondents' placed a notice on their plastic The petitioner's contention that bottle size, shape and color may
wrappers and bags that the hamburgers are sold by "L.C. Big Mak not be the exclusive property of any one beer manufacturer is
Burger, Inc.", then they could validly claim that they did not well taken.
intend to deceive the public. In such case, there is only trademark o Nobody can acquire any exclusive right to market articles
infringement but no unfair competition. Respondents, however,
supplying simple human needs in containers or wrappers of
did not give such notice. We hold that as found by the RTC,
the general form, size and character commonly and
respondent corporation is liable for unfair competition.
immediately used in marketing such articles.
o Protection against imitation should be properly confined to
 ASIA BREWERY V. CA (SUPRA)
nonfunctional features.
FACTS: Respondent San Miguel Corporation with the trademark SAN
MIGUEL PALE PILSEN filed a complaint for infringement of trademark
and unfair competition on account of Asia Brewery’s BEER PALE ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI
PILSEN or BEER NA BEER product which has been competing for a share makes its own steinie bottle which has a fat bulging neck to
of the local beer market. differentiate it from SMC's bottle.
o The amber color is a functional feature of the beer bottle. As
RTC - dismissed SMC's complaint because ABI "has not committed pointed out by ABI, all bottled beer produced in the
trademark infringement or unfair competition against" SMC Philippines is contained and sold in amber-colored bottles
CA - ruled that ABI is GUILTY of infringement of trademark and unfair
because amber is the most effective color in preventing
competition
CA - reversed the decision rendered by the trial court, finding the transmission of light and provides the maximum protection
defendant Asia Brewery Incorporated GUILTY of infringement of to beer.
trademark and unfair competition. ABI then filed a petition for certiorari. o A merchant cannot be enjoined from using a type or color of
bottle where the same has the useful purpose of protecting
the contents from the deleterious effects of light rays.

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

o Moreover, no one may have a monopoly of any color. Not o In supermarkets and tiendas, beer is ordered by brand, and
only beer, but most medicines, whether in liquid or tablet the customer surrenders his empty replacement bottles or
form, are sold in ambercolored bottles. pays a deposit to guarantee the return of the empties. In
sari-sari stores, beer is also ordered from the tindera by
That the ABI bottle has a 320 ml. capacity is not due to a desire to brand. The same is true in restaurants, pubs and beer
imitate SMC's bottle because that bottle capacity is the standard gardens — beer is ordered from the waiters by brand.
prescribed under Metrication Circular No. 778, of the Department
of Trade, Metric System Board. Considering further that SAN MIGUEL PALE PILSEN has virtually
monopolized the domestic beer market for the past hundred
With regard to the white label of both beer bottles, ABI explained years, those who have been drinking no other beer but SAN
that it used the color white for its label because white presents MIGUEL PALE PILSEN these many years certainly know their
the strongest contrast to the amber color of ABI's bottle; it is also beer too well to be deceived by a newcomer in the market. If they
the most economical to use on labels, and the easiest to "bake" in gravitate to ABI's cheaper beer, it will not be because they are
the furnace. confused or deceived, but because they find the competing
o No one can have a monopoly of the color amber for bottles, product to their taste.
nor of white for labels, nor of the rectangular shape which is
the usual configuration of labels. There is no confusing similarity between the competing beers for
o Needless to say, the shape of the bottle and of the label is the name of one is "SAN MIGUEL" while the competitor is plain
unimportant. What is all important is the name of the "BEER" and the points of dissimilarity between the two
product written on the label of the bottle for that is how one outnumber their points of similarity.
beer may be distinguished form the others.
Petitioner ABI has neither infringed SMC's trademark nor
In order that there may be deception of the buying public in the committed unfair competition with the latter's SAN MIGUEL
sense necessary to constitute unfair competition, it is necessary PALE PILSEN product. While it’s BEER PALE PILSEN admittedly
to suppose a public accustomed to buy, and therefore to some competes with the latter in the open market, that competition is
extent familiar with, the goods in question. The test of fraudulent neither unfair nor fraudulent. Hence, we must deny SMC's prayer
simulation is to be found in the likelihood of the deception of to suppress it.
persons in some measure acquainted with an established design
and desirous of purchasing the commodity with which that  SUPERIOR COMMERCIAL ENT. V. KUNNAN ENT. LTD.,
design has been associated. The test is not found in the deception, (2010)
or possibility of the deception, of the person who knows nothing FACTS:
about the design which has been counterfeited, and who must be
indifferent as between that and the other. The simulation, in ISSUE:
order to be objectionable, must be such as appears likely to
mislead the ordinarily intelligent buyer who has a need to supply RULING:
and is familiar with the article that he seeks to purchase.
 CONRAD V. CA
When as in this case, the names of the competing products are FACTS: FITRITE and VICTORIA BISCUIT are engaged in the
clearly different and their respective sources are prominently business of manufacturing, selling and distributing biscuits and
printed on the label and on other parts of the bottle, mere cookies bearing the trademark "SUNSHINE" in the Philippines.
similarity in the shape and size of the container and label, does CONRAD is also engaged in the business of importing, selling and
not constitute unfair competition. distributing biscuits and cookies in the Philippines.
o The steinie bottle is a standard bottle for beer and is
universally used. SMC did not invent it nor patent it. FITRITE filed applications for registration of the trademark
o The fact that SMC's bottle is registered under R.A. No. 623 "SUNSHINE," both in the Supplemental and Principal Registers, to
simply prohibits manufacturers of other foodstuffs from the be used on biscuits and cookies. Since 1981 FITRITE had
unauthorized use of SMC's bottles by refilling these with exclusively used this trademark in the concept of owner on its
their products. biscuits and cookies. FITRITE's application for this trademark in
o It was not uncommon then for products such as patis (fish the Supplemental Register and in the Principal Registration was
sauce) and toyo (soy sauce) to be sold in recycled SAN approved for a term of 20 years. FITRITE authorized VICTORIA
MIGUEL PALE PILSEN bottles. Registration of SMC's beer BISCUIT to use this trademark on its biscuits and cookies, as well
bottles did not give SMC a patent on the steinie or on bottles as to manufacture, promote, sell and distribute products bearing
of similar size, shape or color. said trademark.
o Most containers are standardized because they are usually
made by the same manufacturer. FITRITE assigned its trademark "SUNSHINE AND DEVICE
o Just as no milk producer may sue the others for unfair LABEL," together with its interest and business goodwill to said
VICTORIA BISCUIT. From the time FITRITE was issued the
competition because they sell their milk in the same size and
Certificate of Registration for this trademark up to the filing of
shape of milk can which he uses, neither may SMC claim
the complaint, FITRITE and VICTORIA BISCUIT have been
unfair competition arising from the fact that ABI's BEER
manufacturing, selling and distributing on a massive scale
PALE PILSEN is sold, like SMC's SAN MIGUEL PALE PILSEN
biscuits and cookies bearing this trademark; so that through the
in amber steinie bottles.
years of extensive marketing of plaintiffs' biscuits and cookies
with this trademark, their products have become popularly
The record does not bear out SMC's apprehension that BEER
known and enjoyed wide acceptability in Metro Manila and in the
PALE PILSEN is being passed off as SAN MIGUEL PALE PILSEN.
provinces.
o This is unlikely to happen for consumers or buyers of beer
generally order their beer by brand.

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

Then plaintiffs discovered that CONRAD had been importing, technical matters. This rule, evidently, did not escape the
selling and distributing biscuits and cookies, and other food items appellate court for it likewise decreed that for "good cause
bearing this trademark in the Philippines. Although CONRAD had shown, the lower court, in its sound discretion, may suspend the
never before been engaged in the importation, sale and action pending outcome of the cancellation proceedings" before
distribution of products similar to those of plaintiffs, CONRAD BPTTT.
was suddenly designated exclusive importer and dealer of the
products of "Sunshine Biscuits, Inc." for sale in the Philippine Thus, having the exclusive right over said trademark, FITRITE
market; and CONRAD made its first importation. should be protected in the use thereof; and considering that it is
apparent that the invasion of the right FITRITE sought to protect
Those acts of CONRAD, done without plaintiffs' consent, were is material and substantial; that such right of FITRITE is clear and
deliberately calculated to mislead and deceive the purchasers by unmistakable; and that there is an urgent necessity to prevent
making them believe that its (CONRAD'S) "Sunshine" products serious damage to FITRITE's business interest, goodwill and
had originated from plaintiffs and thereby inducing them to profit, thus under the authority of Sec. 23 of said Republic Act No.
patronize those products, all to the damage and prejudice of both 166, as amended, a preliminary injunction may be issued in favor
the purchasing public and plaintiffs. of FITRITE to maintain the status quo pending trial of the action a
quo on the merits without prejudice to the suspension of such
Plaintiffs demanded Conrad to cease and desist from continuing action if the aforesaid cancellation proceeding before the BPTTT
with those acts, but the demand was ignored. Being acts of has not been concluded.
infringement and unfair competition in violation of plaintiffs'
rights, plaintiffs can validly avail themselves of the remedies The appellate court's finding that there is an urgent necessity for
against infringement, as well as of the remedies against unfair the issuance of the writ of preliminary injunction pending
competition. resolution by BPTTT of the petition for cancellation filed by
Sunshine USA in Inter Partes Case No. 3397 would indeed appear
In seeking the dismissal of the complaint, CONRAD invoked litis to have merit.
pendentia, the doctrine of primary jurisdiction and failure to
state a cause of action. The allegations of the complaint, perforced hypothetically
deemed admitted by petitioner, would here justify the issuance
Petitioner contends that the "Petitions for Cancellation" of by appellate court of its injunction order. Petitioner, itself, does
Fitrite's Certificate of Registration in the Supplemental Register not even appear to be a party in the administrative case. The
and the Principal Register, which Sunshine Biscuits filed with averment that Sunshine USA is petitioner's principal, and that it
BPTTT (BLA now) cast a cloud of doubt on private respondents' has a prior foreign registration that should be respected
claim of ownership and exclusive right to the use of the conformably with the Convention of the Union of Paris for the
trademark "Sunshine." Considering that this matter is at issue Protection of Industrial Property are mere asseverations in the
before the BPTTT, which has primary jurisdiction over the case, motion to dismiss which, along with some other factual
petitioner argues, an injunctive relief from any court would be assertions, are yet to be established.
precipitate and improper.
Note:
ISSUE: WON the trial court can proceed with the case for BPTT  cancellation
"injunction with damages" filed by private respondents Civil court  infringement; will not lose jurisdiction even if there
notwithstanding the pendency of an administrative case for the is a pending cancellation in the BPTT
cancellation of the former's trademark filed by supposedly
"petitioner's principal" (YES) Q. What if both infringement in BLA & Civil court? (NO)
A. that would be forum shopping.
RULING: While an application for the administrative cancellation
of a registered trademark falls under the exclusive cognizance of In a case where civil court also ruled on the cancellation, BLA
BPTTT, an action, however, for infringement or unfair loses jurisdiction since it was not exclusive jurisdiction on BLA.
competition, as well as the remedy of injunction and relief for
damages, is explicitly and unquestionably within the competence  MIGHTY CORP. V. E. & J. GALLO WINERY (2004)
and jurisdiction of ordinary courts. FACTS:
Gallo for cigarettes v. Gallo for wines
Private respondents are the holder of Certificate of Registration
in the Principal Registerfor the questioned trademark. ISSUE:
Registration in the Principal Register gives rise to a presumption
of validity of the registration and of the registrant's ownership RULING:
and right to the exclusive use of the mark. It is precisely such a In the context of the Paris Convention, Gallo wine is not well-
registration that can serve as the basis for an action for known in the PH. In fact, it is sold in US bases only. Hence, not
infringement. An invasion of this right entitles the registrant to competing.
court protection and relief.
 EMERALD GARMENT MFG. V. CA (SUPRA)
Surely, an application with BPTTT for an administrative FACTS: H.D. Lee, a US corporation filed with the Bureau of
cancellation of a registered trade mark cannot per se have the Patents, a Petition for Cancellation of Registration (Supplemental
effect of restraining or preventing the courts from the exercise of Register) for the trademark "STYLISTIC MR. LEE" used on
their lawfully conferred jurisdiction. A contrary rule would clothing under Class 25, issued in the name of petitioner Emerald
unduly expand the doctrine of primary jurisdiction which, simply Garment, a domestic corporation.
expressed, would merely behoove regular courts, in
controversies involving specialized disputes, to defer to the HD Lee, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and
findings of resolutions of administrative tribunals on certain Art. VIII of the Paris Convention for the Protection of Industrial

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

Property, averred that Emerald Garment’s trademark "so closely any such mark or trade-name and apply such reproduction,
resembled its own trademark, 'LEE' as previously registered and counterfeit, copy, or colorable imitation to labels, signs, prints,
used in the Philippines, and not abandoned, as to be likely, when packages, wrappers, receptacles or advertisements intended to
applied to or used in connection with petitioner's goods, to cause be used upon or in connection with such goods, business or
confusion, mistake and deception on the part of the purchasing services; shall be liable to a civil action by the registrant for any
public as to the origin of the goods." or all of the remedies herein provided.

Emerald Garment contended that its trademark was entirely and The credibility placed on a certificate of registration of one's
unmistakably different from that of private respondent and that trademark, or its weight as evidence of validity, ownership and
its certificate of registration was legally and validly granted. exclusive use, is qualified. A registration certificate serves merely
Then, Emerald caused the publication of its application for as prima facie evidence. It is not conclusive but can and may be
registration of the trademark "STYLISTIC MR. LEE" in the rebutted by controverting evidence. Moreover, the aforequoted
Principal Register. HD Lee filed a notice of opposition to provision applies only to registrations in the principal register.
petitioner's application for registration also on grounds that
petitioner's trademark was confusingly similar to its "LEE" Registrations in the supplemental register do not enjoy a similar
trademark. privilege. A supplemental register was created precisely for the
registration of marks which are not registrable on the principal
Director of Patents - granted. Using the test of dominancy, declared that register due to some defects. x The Director of Patents and the CA
petitioner's trademark was confusingly similar to private respondent's relied mainly on the registration certificates as proof of use by
mark because "it is the word 'Lee' which draws the attention of the buyer private respondent of the trademark "LEE" which, as we have
and leads him to conclude that the goods originated from the same
previously discussed are not sufficient
manufacturer. It is undeniably the dominant feature of the mark.

 SKECHERS V. INTER PACIFIC INDUSTRIAL TRADING

CA - affirmed
(2011)
FACTS:
Petitioner - alleges that it has been using its trademark
"STYLISTIC MR. LEE" since 1975, yet, it was only on 1981 that
ISSUE:
private respondent filed a petition for cancellation of petitioner's
certificate of registration for the said trademark. Similarly, HD
RULING:
Lee’s notice of opposition to Emerald’s application for
General appearance = the consumer will be deceived
registration in the principal register was belatedly filed on 1984.
 AMIGO V. CLUETT PEABODY (2001)
ISSUE: WON HD Lee is barred by estoppel to file the present case
FACTS:
for infringement (NO)
Cluett Peabody (a New York corporation) filed the present case
against Amigo Manufacturing Inc. (a Philippine corporation) for
RULING: Petitioner's trademark is registered in the
cancellation of trademark is Cluett’s claim of exclusive ownership
supplemental register.
(as successor in interest of Great American Knitting Mills, Inc.) of
the following trademark and devices, as used on men's socks: (1)
The Trademark Law (R.A. No. 166): "marks and tradenames for
GOLD TOE (2) DEVICE, representation of a sock and magnifying
the supplemental register shall not be published for or be subject
glass on the toe of a sock, (3) DEVICE, consisting of a 'plurality of
to opposition, but shall be published on registration in the Official
gold colored lines arranged in parallel relation within a triangular
Gazette."
area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking' (4)
The reckoning point, therefore, should not be the date of alleged
LINENIZED.
use by petitioner of its assailed trademark but the date the
certificate of registration was published in the Official Gazette
On the other hand, Amigo’s trademark and device 'GOLD TOP,
and issued to petitioner.
Linenized for Extra Wear' has the dominant color 'white' at the
center and a 'blackish brown' background with a magnified
It was only on the date of publication and issuance of the
design of the sock's garter, and is labeled 'Amigo Manufacturing
registration certificate that private respondent may be
Inc., Mandaluyong, Metro Manila, Made in the Philippines'.
considered "officially" put on notice that petitioner has
appropriated or is using said mark, which, after all, is the function
CA held that there is hardly any variance in the appearance of the
and purpose of registration in the supplemental register. The
marks 'GOLD TOP' and 'GOLD TOE' since both show a
record is bereft of evidence that private respondent was aware of
representation of a man's foot wearing a sock, and the marks are
petitioner's trademark before the date of said publication and
printed in identical lettering. Amigo’s mark is a combination of
issuance. Hence, when private respondent instituted cancellation
the different registered marks owned by Cluett.
proceedings on 18 September 1981, less than a year had passed.
As held in Del Monte Corporation v. Court of Appeals, the
Section 22. Infringement, what constitutes. — x x x Any person
question is not whether the two articles are distinguishable by
who shall use, without the consent of the registrant, any
their label when set aside but whether the general confusion
reproduction, counterfeit, copy or colorable imitation of any
made by the article upon the eye of the casual purchaser who is
registered mark or trade-name in connection with the sale,
unsuspicious and off his guard, is such as to likely result in
offering for sale, or advertising of any goods, business or services
confounding it with the original. 'The most successful form of
on or in connection with which such use is likely to cause
copying is to employ enough points of similarity to confuse the
confusion or mistake or to deceive purchasers or others as to the
public with enough points of difference to confuse the courts.'
source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy or colorably imitable

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Finally, the Philippines and the United States are parties to the register, prima facie evidence of (1) the validity of registration;
Paris Convention. By virtue of the Philippines' membership to the (2) registrant's ownership of the mark; and (3) registrant's
Paris Union, trademark rights in favor of the Cluett were created. exclusive right to use the mark. It is not subject to opposition,
The object of the Convention is to accord a national of a member although it may be cancelled after its issuance. Neither may it be
nation extensive protection against infringement and other types the subject of interference proceedings. Registration [i]n the
of unfair competition. supplemental register is not constructive notice of registrant's
claim of ownership. A supplemental register is provided for the
Amigo claims that it started the actual use of the trademark "Gold registration because of some defects (conversely, defects which
Top and Device" in 1956, while respondent began using the make a mark unregistrable on the principal register, yet do not
trademark "Gold Toe" only in 1962. It contends that the claim of bar them from the supplemental register.)
respondent that it had been using the "Gold Toe" trademark at an
earlier date was not substantiated. The latter's witnesses As to the actual date of first use by respondent of the four marks
supposedly contradicted themselves as to the date of first actual it registered, the seeming confusion may have stemmed from the
use of their trademark, coming up with different dates such as fact that the marks have different dates of first use. Clearly,
1952, 1947 and 1938. however, these dates are indicated in the Certificates of
Registration.
Petitioner points out that the director of patents erred in its
application of the idem sonans rule, claiming that the two In any case, absent any clear showing to the contrary, this Court
trademarks "Gold Toe" and "Gold Top" do not sound alike and are accepts the finding of the Bureau of Patents that it was
pronounced differently. It avers that since the words gold and toe respondent which had prior use of its trademark, as shown in the
are generic, respondent has no right to their exclusive use. various Certificates of Registration issued in its favor. Verily,
administrative agencies' findings of fact in matters falling under
Bureau of Patents: there is confusing similarities on (1) totality, their jurisdiction are generally accorded great respect, if not
(2) Idem sonans/sounds alone finality.

ISSUE: WON there’s confusing similarity? (NO) Admittedly, the pronunciations of the two do not, by themselves,
WON there is infringement (YES) create confusion. The Bureau of Patents, however, did not rely on
the idem sonans test alone in arriving at its conclusion. The
RULING: Not just idem sonans, but also the drawings, labels, difference in sound occurs only in the final letter at the end of the
appearances are similar. marks. For the same reason, hardly is there any variance in their
appearance. 'GOLD TOE' and 'GOLD TOP' are printed in identical
Based on the evidence presented, this Court concurs in the lettering. Both show [a] representation of a man's foot wearing a
findings of the Bureau of Patents that respondent had actually sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED'
used the trademark and the devices in question prior to which by itself is a registered mark.
petitioner's use of its own. During the hearing at the Bureau of
Patents, respondent presented Bureau registrations indicating The Bureau considered the drawings and the labels, the
the dates of first use in the Philippines of the trademark and the appearance of the labels, the lettering, and the representation of a
devices. man's foot wearing a sock. Obviously, its conclusion is based on
the totality of the similarities between the parties' trademarks
The registration of the above marks in favor of respondent and not on their sounds alone. HOLISTIC TEST.
constitutes prima facie evidence, which petitioner failed to
overturn satisfactorily, of respondent's ownership of those In the present case, a resort to either the Dominancy Test or the
marks, the dates of appropriation and the validity of other Holistic Test shows that colorable imitation exists between
pertinent facts stated therein. respondent's "Gold Toe" and petitioner's "Gold Top." A glance at
petitioner's mark shows that it definitely has a lot of similarities
Moreover, the validity of the Certificates of Registration was not and in fact looks like a combination of the trademark and devices
questioned. Neither did petitioner present any evidence to that respondent has already registered; namely, "Gold Toe," the
indicate that they were fraudulently issued. Consequently, the representation of a sock with a magnifying glass, the "Gold Toe"
claimed dates of respondent's first use of the marks are representation and "linenized."
presumed valid. Clearly, they were ahead of petitioner's claimed
date of first use of "Gold Top and Device" in 1958. Admittedly, there are some minor differences between the two
sets of marks. The similarities, however, are of such degree,
The fact that the marks were indeed registered by respondent number and quality that the overall impression given is that the
shows that it did use them on the date indicated in the Certificate two brands of socks are deceptively the same, or at least very
of Registration.’ similar to each another.

On the other hand, petitioner failed to present proof of the date of An examination of the products in question shows that their
alleged first use of the trademark "Gold Top and Device". Thus, dominant features are gold checkered lines against a
even assuming that respondent started using it only on May 15, predominantly black background and a representation of a sock
1962, we can make no finding that petitioner had started using it with a magnifying glass. In addition, both products use the same
ahead of respondent. type of lettering. Both also include a representation of a man's
foot wearing a sock and the word "linenized" with arrows printed
Furthermore, petitioner registered its trademark only with the on the label. Lastly, the names of the brands are similar -- "Gold
supplemental register. Registration with the supplemental Top" and "Gold Toe." Moreover, it must also be considered that
register gives no presumption of ownership of the trademark. petitioner and respondent are engaged in the same line of
Said the Court: "The registration of a mark upon the business.
supplemental register is not, as in the case of the principal

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Petitioner cannot therefore ignore the fact that, when compared, marked and used by them, under the same conditions, rules, and
most of the features of its trademark are strikingly similar to regulations, made applicable by law or regulation to the issuance
those of respondent. In addition, these representations are at the of trademarks.
same location, either in the sock itself or on the label. Petitioner Section. 2. It shall be unlawful for any person, without the
presents no explanation why it chose those representations, written consent of the manufacturer, bottler, or seller, who has
considering that these were the exact symbols used in succesfully registered the marks of ownership in accordance with
respondent's marks. Thus, the overall impression created is that the provisions of the next preceding section, to fill such bottles,
the two products are deceptively and confusingly similar to each boxes, kegs, barrels, steel cylinders, tanks, flasks, accumulators or
other. Clearly, petitioner violated the applicable trademark other similar containers so marked or stamped, for the purpose
provisions during that time. of sale, or to sell, disposed of, buy or traffic in, or wantonly
destroy the same, whether filled or not, to use the same, for
Let it be remembered that duly registered trademarks are drinking vessels or glasses or drain pipes, foundation pipes, for
protected by law as intellectual properties and cannot be any other purpose than that registered by the manufacturer,
appropriated by others without violating the due process clause. bottler or seller. Any violation of this section shall be punished by
An infringement of intellectual rights is no a fine of not more than one thousand pesos or imprisonment of
not more than one year or both.
On bottles and containers: Section. 3. The use by any person other than the registered
 CAGAYAN VALLEY ENT. V. CA* manufacturer, bottler or seller, without written permission of the
FACTS: La Tondeñ a registered the 350 c.c. white flint bottles it latter of any such bottle, cask, barrel, keg, box, steel cylinders,
has been using for its gin popularly known as "Ginebra San tanks, flask, accumulators, or other similar containers, or the
Miguel". LTI filed case for injunction and damages against possession thereof without written permission of the
Cagayan Valley for using the 350 c.c., white flint bottles with the manufacturer, by any junk dealer or dealer in casks, barrels, kegs
mark "La Tondeñ a Inc." and "Ginebra San Miguel" stamped or boxes, steel cylinders, tanks, flasks, accumulators or other similar
blown-in therein by filling the same with Cagayan's liquor containers, the same being duly marked or stamped and
product bearing the label "Sonny Boy" for commercial sale and registered as herein provided, shall give rise to a prima facie
distribution, without LTI's written consent and in violation of presumption that such use or possession is unlawful.
Section 2 of Republic Act No. 623, and for the issuance of a writ of
preliminary injunction. The above-quoted provisions grant protection to a qualified
manufacturer who successfully registered with the Philippine
The court a quo issued a temporary restraining order against Patent Office its duly stamped or marked bottles, boxes, casks
Cagayan and its officers and employees from using the 350 c.c. and other similar containers. The mere use of registered bottles
bottles with the marks "La Tondeñ a" and "Ginebra San Miguel." or containers without the written consent of the manufacturer is
prohibited, the only exceptions being when they are used as
Cagayan, in its answer, alleged the following defenses: containers for "sisi," bagoong," "patis" and similar native
1) LTI has no cause of action due to its failure to comply with products.
the giving of notice that its aforesaid marks are registered by
displaying and printing the words "Registered in the Phil. It is an admitted fact that herein petitioner Cagayan buys from
Patent Office" or "Reg Phil. Pat. Off.," hence no suit, civil or junk dealers and retailers bottles which bear the marks or names
criminal, can be filed against Cagayan; La Tondeñ a Inc." and "Ginebra San Miguel" and uses them as
2) LTI is not entitled to any protection because its products, containers for its own liquor products.
consisting of hard liquor, are not among those contemplated
therein. The contention of Cagayan that the aforementioned bottles
3) No reservation of ownership on its bottles was made by LTI without the words "property of" indicated thereon are not the
in its sales invoices nor does it require any deposit for the registered bottles of LTI, since they do not conform with the
retention of said bottles; and statement or description in the supporting affidavits attached to
4) There was no infringement of the goods or products of LTI the original registration certificate and renewal, is untenable.
since Cagayan uses its own labels and trademark on its
product Republic Act No. 623 which governs the registration of marked
bottles and containers merely requires that the bottles, in order
RULING: “Name” and not the words “Property of” is what the law to be eligible for registration, must be stamped or marked with
requires the names of the manufacturers or the names of their principals
or products, or other marks of ownership. No drawings or labels
R.A. No. 623, as amended by R.A. No. 5700, provides: are required but, instead, two photographs of the container, duly
(Law on use of bottles) signed by the applicant, showing clearly and legibly the names
Section 1. Persons engaged or licensed to engage in the and other marks of ownership sought to be registered and a
manufacture, bottling, or selling of soda water, mineral or bottle showing the name or other mark or ownership,
aerated waters, cider, milk, cream or other lawful beverages in irremovably stamped or marked, shall be submitted.
bottles, boxes, casks, kegs, or barrels and other similar
containers, or in the manufacturing, compressing or selling of The term "Name or Other Mark of Ownership" means the name of
gases such as oxygen, acytelene, nitrogen, carbon dioxide the applicant or the name of his principal, or of the product, or
ammonia, hydrogen, chloride, helium, sulphur, dioxide, butane, other mark of ownership. The second set of bottles of LTI without
propane, freon, melthyl chloride or similar gases contained in the words "property of" substantially complied with the
steel cylinders, tanks, flasks, accumulators or similar containers, requirements of Republic Act No. 623, as amended, since they
with the name or the names of their principals or products, or bear the name of the principal, La Tondeñ a Inc., and of its
other marks of ownership stamped or marked thereon, may product, Ginebra San Miguel. The omitted words "property of"
register with the Philippine Patent Office a description of the are not of such vital indispensability such that the omission
names or marks, and the purpose for which the containers so thereof will remove the bottles from the protection of the law.

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MACALE 2020 INTELLECTUAL PROPERTY LAW

The owner of a trade-mark or tradename, and in this case the bottles) involved in the petition. Respondent LTDI is
marked containers, does not abandon it by making minor precluded by law from claiming the same;
modifications in the mark or name itself. With much more reason 2) (b) 4.00.b. The decision and resolution appealed from violate
will this be true where what is involved is the mere omission of equity and applicable canons in the interpretation and
the words "property of" since even without said words the construction of statutes; and
ownership of the bottles is easily Identifiable. The words "La 3) (c) 4.00.c. Liquor products are not covered by Republic Act.
Tondeñ a Inc." and "Ginebra San Miguel" stamped on the bottles, No. 623. The holding of the Court in Cagayan Valley Ent. vs.
even without the words "property of," are sufficient notice to the CA should be reviewed and reconsidered in light of the
public that those bottles so marked are owned by LTI. Constitution and House Bill No. 20585.

The claim of petitioner that hard liquor is not included under the It is a fact that R.A. No. 623 extends trademark protection in the
term "other lawful beverages" as provided in Section I of use of containers duly registered with the Philippine Patent
Republic Act No. 623, as amended by Republic Act No. 5700, is Office. The pertinent provisions of R.A. 623, as amended, so
without merit. he words "other lawful beverages" is used in its reads:
general sense, referring to all beverages not prohibited by law. Section 1. Persons engaged or licensed to engage in the
Beverage is defined as a liquor or liquid for drinking. Hard liquor, manufacture, bottling, or selling of soda water, mineral or
although regulated, is not prohibited by law, hence it is within the aerated waters, cider, milk, cream or other lawful beverages in
purview and coverage of Republic Act No. 623, as amended. bottles, boxes, casks, kegs, or barrels, and other similar
containers, or in the manufacture, compressing or selling of gases
The failure to give notice of registration will not deprive the such as oxygen, acetylene, nitrogen, carbon dioxide, ammonia,
aggrieved party of a cause of action against the infringer but, at hydrogen, chloride, helium, sulphur dioxide, butane, propane,
the most, such failure may bar recovery of damages but only freon, methyl chloride or similar gases contained in steel
under the provisions of Republic Act No. 166. cylinders, tanks, flasks, accumulators or similar containers, with
their names or the names of their principals or products, or other
Section 3 of Republic Act No. 623 creates a prima facie marks of ownership stamped or marked thereon, may register
presumption against Cagayan for its unlawful use of the bottles with the Philippine Patent Office a description of the names or
registered in the name of LTI. Corollarily, the writ of injunction marks, and the purpose for which the containers so marked are
directing petitioner to desist from using the subject bottles was used by them, under the same conditions, rules, and regulations,
properly issued by the trial court. Hence, said writ could not be made applicable by law or regulation to the issuance of
simply disregarded by Cagayan without adducing proof sufficient trademarks.
to overcome the aforesaid presumption. Also, petitioner can be Section 2. It shall be unlawful for any person, without the written
adjudged guilty of contempt and imposed a sanction in this consent of the manufacturer, bottler, or seller, who has
appeal since it is a cherished rule of procedure for this Court to successfully registered the marks of ownership in accordance
always strive to settle the entire controversy in a single with the provisions of the next preceding section, to fill such
proceeding, We so impose such penalty concordant with the bottles, boxes, kegs, barrels, steel cylinders, tanks, flasks,
preservative principle and as demanded by the respect due the accumulators, or other similar containers so marked or stamped,
orders, writs and processes of the courts of justice. for the purpose of sale, or to sell, dispose of, buy or traffic in, or
wantonly destroy the same, whether filled or not to use the same
 DISTILLERIA WASHINGTON V. CA (SUPRA) for drinking vessels or glasses or drain pipes, foundation pipes,
FACTS: The initiatory suit was instituted for manual delivery for any other purpose than that registered by the manufacturer,
with damages by La Tondeñ a, against Distilleria Washington. bottler or seller. Any violation of this section shall be punished by
LTDI, under a claim of ownership, sought to seize from Distilleria a fine of not more than one thousand pesos or imprisonment of
Washington 18,157 empty "350 c.c. white flint bottles" bearing not more than one year or both.
the blown-in marks of "La Tondeñ a Inc." and "Ginebra San Section 3. The use by any person other than the registered
Miguel." manufacturer, bottler or seller, without written permission of the
latter of any such bottle, cask, barrel, keg, box, steel cylinders,
The court issued an order of replevin for the seizure of the empty tanks, flask, accumulators, or other similar containers, or the
gin bottles from Washington. These bottles, it was averred, were possession thereof without written permission of the
being used by Washington for its own "Gin Seven" products manufacturer, by any junk dealer or dealer in casks, barrels, kegs,
without the consent of LTDI. boxes, steel cylinders, tanks, flasks, accumulators or other similar
containers, the same being duly marked or stamped and
LTDI asserted that, being the owner and registrant of the bottles, registered as herein provided, shall give rise to a prima facie
it was entitled to the protection so extended by R.A. 623, presumption that such use or possession is unlawful.
notwithstanding its sale of the Ginebra San Miguel gin product
contained in said bottles. ISSUE: WON the buyer can use the bottles (NO)

Washington countered that R.A. No. 623, invoked by LTDI, should RULING: There’s already transfer of ownership, but you cannot
not apply to gin, an alcoholic beverage which is unlike that of use the bottles.
"soda water, mineral or aerated water, ciders, milks, cream, or Court sees no cogent reason for either departing from or
other lawful beverages" mentioned in the law, and that, in any changing the basic rule it laid down in Cagayan Valley Ent., vs. CA:
case, ownership of the bottles should, considering the attendant “The above-quoted provisions grant protection to a qualified
facts and circumstances, be held lawfully transferred to the manufacturer who successfully registered with the Philippine
buyers upon the sale of the gin and containers at a single price. Patent Office its duly stamped or marked bottles, boxes, casks and
1) Washington is now before this Court assailing the reversal of other similar containers. The mere use of registered bottles or
the trial court's decision. In its petition, Washington points containers without the written consent of the manufacturer is
out that (a) 4.00.a. Under the undisputed facts, petitioner is prohibited, the only exceptions being when they are used as
the lawful owner of the personal properties (18,157 empty

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containers for "sisi," "bagoong," "patis" and similar native registered manufacturer, bottler or seller, has transferred by way
products.” of sale, any of the containers herein referred to, but the sale of the
beverage contained in the said containers shall not include the
It is an admitted fact that herein petitioner Cagayan buys form sale of the containers unless specifically so provided. The
junk dealers and retailers bottles which bear the marks or names provisions of this Act shall not be interpreted as prohibiting the
"La Tondeñ a, Inc." and "Ginebra San Miguel" and uses them as use of bottles as containers for "sisi," "bagoong," "patis," and
containers for its own liquor products. The contention of Cagayan similar native products.
that the aforementioned bottles without the words "properly of"
indicated thereon are not the registered bottles of LTI, since they Scarcely disputed are certain and specific industry practices in
do not conform with the statement or description in the the sale of gin: The manufacturer sells the product in marked
supporting affidavits attached to the original registration containers, through dealers, to the public in supermarkets,
certificate and renewal, is untenable. grocery shops, retail stores and other sales outlets. The buyer
takes the item; he is neither required to return the bottle nor
Republic Act No. 623 which governs the registration of marked required to make a deposit to assure its return to the seller. He
bottles and containers merely requires that the bottles, in order could return the bottle and get a refund. A number of bottles at
to be eligible for registration, must be stamped or marked with times find their way to commercial users.
the names of the manufacturers or the names of their principals
or products, or other marks of ownership. No drawings or labels It cannot be gainsaid that ownership of the containers does pass
are required but, instead, two photographs of the container, duly on to the consumer albeit subject to the statutory limitation on
signed by the applicant, showing clearly and legibly the names the use of the registered containers and to the trademark right of
and other marks of ownership sought to be registered and a the registrant.
bottle showing the name or other mark or ownership,
irremovably stamped or marked, shall be submitted. The statement in Section 5 of R.A. 623 to the effect that the "sale
of beverage contained in the said containers shall not include the
The claim of petitioner that hard liquor is not included under the sale of the containers unless specifically so provided" is not a rule
term "other lawful beverages” is without merit. Beverage is of proscription. It is a rule of construction that, in keeping with
defined as a liquor or liquid for drinking. Hard liquor, although the spirit and intent of the law, establishes at best a presumption
regulated, is not prohibited by law, hence it is within the purview (of nonconveyance of the container) and which by no means can
and coverage of Republic Act No. 623, as amended. be taken to be either interdictive or conclusive in character. Upon
the other hand, LTDI's sales invoice, stipulating that the "sale
Given the nature of the action in Cagayan, as well as its factual does not include the bottles with the blown-in marks of
milieu, the Court indeed hardly has had a choice but to sustain ownership of La Tondeñ a Distillers," cannot affect those who are
the registrant's right to the injunctive writ against the not privies thereto.
unauthorized use of its containers.
While it may be unwarranted then for LTDI to simply seize the
The case before us, however, goes beyond just seeking to have empty containers, this Court finds it to be legally absurd,
such use stopped but it so takes on even the ownership issue as however, to still allow petitioner to recover the possession
well. Parenthetically, petitioner is not here being charged with a thereof. The fact of the matter is that R.A. 623, as amended, in
violation of Section 2 of R.A. No. 623 or of the Trademark Law. affording trademark protection to the registrant, has additionally
The instant suit is one for replevin (manual delivery) where the expressed a prima facie presumption of illegal use by a possessor
claimant must be able to show convincingly that he is either the whenever such use or possession is without the written
owner or clearly entitled to the possession of the object sought to permission of the registered manufacturer, a provision that is
be recovered. Replevin is a possessory action the gist of which neither arbitrary nor without appropriate rationale. Indeed, the
focuses on the right of possession that, in turn, is dependent on a appellate court itself has made a finding of such unauthorized use
legal basis that, not infrequently, looks to the ownership of the by petitioner. The Court sees no other logical purpose for
object sought to be replevied. petitioner's insistence to keep the bottles, except for such
continued use. The practical and feasible alternative is to merely
It is to be pointed out that a trademark refers to a word, name, require the payment of just compensation to petitioner for the
symbol, emblem, sign or device or any combination thereof bottles seized from it by LTDI. Conventional wisdom, along with
adopted and used by a merchant to identify, and distinguish from equity and justice to both parties, dictates it.
others, his goods of commerce. It is basically an intellectual
creation that is susceptible to ownership and, consistently  DISTILLERIA WASHINGTON V. LA TONDENA (SUPRA)
therewith, gives rise to its own elements of jus posidendi, jus FACTS: Motion for Reconsideration
utendi, jus fruendi, jus disponendi, and jus abutendi, along with To recall, La Tondeñ a Distillers filed for the recovery, under its
the applicable jus lex, comprising that ownership. claim of ownership, of possession or replevin against Distilleria
Washington of 18,157 empty "350 c.c. white flint bottles" bearing
The incorporeal right, however, is distinct from the property in the blown-in marks of "La Tondeñ a Inc." and "Ginebra San
the material object subject to it. Ownership in one does not Miguel," averring that Distilleria Washington was using the
necessarily vest ownership in the other. Thus, the transfer or bottles for its own "Gin Seven" products without the consent of
assignment of the intellectual property will not necessarily Distilleria Washington in violation of Republic Act 623.
constitute a conveyance of the thing it covers, nor would a
conveyance of the latter imply the transfer or assignment of the The trial court in its decision dismissed the complaint, upholding
intellectual right. Distilleria Washington's contention that a purchaser of liquor
pays only a single price for the liquor and the bottle and is not
R.A. No. 623 evidently does not disallow the sale or transfer of required to return the bottle at any time. CA reversed, ruling that
ownership of the marked bottles or containers. In fact, no action the use of marked bottles by any person other than the
shall be brought under this Act against any person to whom the manufacturer, bottler or seller, without the latter's written

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

consent, is unlawful. It emphasized that the marks of La of, buy or traffic in, or wantonly destroy the same, whether filled
Tondeñ a's ownership stamped or blown-in to the bottles are or not to use the same for drinking vessels or glasses or drain
sufficient notice to the public that the bottles are La Tondeñ a's pipes, foundation pipers, for any other purpose than that
property; hence, Distilleria Washington cannot be considered a registered by the manufacturer, bottler or seller. Any violation of
purchaser in good faith. this section shall be punished by a fine of not more than one
thousand pesos or imprisonment of not more than one year or
While our decision affirmed with modification the Court of both.
Appeals' decision, we at least implicitly acknowledged that there Section 3. The use by any person other than the registered
was a valid transfer of the bottles to Distilleria Washington, manufacturer, bottler or seller, without written permission of the
except that its possession of the bottles without the written latter (emphasis supplied) of any such bottle, cask, barrel, keg,
consent of La Tondeñ a gives rise to a prima facie presumption of box, steel cylinders, tanks, flask, accumulators, or other similar
illegal use under R.A. 623. containers, or the possession thereof without written permission
of the manufacturer, by any junk dealer or dealer in casks,
In seeking reconsideration of the decision of this Court, petitioner barrels, keg, boxes, steel cylinders, tanks, flask, accumulators or
advances, among others, the following arguments: other similar containers, the same being duly marked or stamped
1) Since the right of ownership over the bottles gives rise, and registered as herein provided, shall give rise to a prima facie
according to the Court's own language, to its own elements presumption that such use or possession is unlawful.
of jus posidendi, jus utendi, jus fruendi, jus disponendi, and Section 5. No action shall be brought under this Act (emphasis
jus abutendi, along with the applicable jus lex, to allow La supplied) against any person to whom the registered
Tondeñ a to keep the bottles is to deny Distilleria manufacturer, bottler or seller, has transferred by way of sale,
Washington, the very attributes or elements of its (emphasis supplied) any of the containers herein referred to, but
ownership. the sale of the beverage contained in the said containers shall not
2) It is absurd to hold the buyer such as Distilleria Washington, include the sale of the containers unless specifically so provided.
liable for the possession and use of its own bottles without
the written consent of La Tondeñ a who is no longer the In resolving that petitioner is the owner of the bottles, this Court
owner thereof and for which it has received payment in full. applied Section 5 of R.A. 623; and in withholding possession of
3) To hold the buyer liable under Sections 2 and 3 would grant the bottles from the petitioner and in concluding that use or
La Tondeñ a the extraordinary right not only of possession possession thereof without the written permission of the
and use of the bottles which it has sold and no longer owns, registered owner would constitute prima facie presumption of
but also to sell said bottles ad infinitum, thus enriching itself illegal use, this Court invoked Sections 2 and 3 of the same law.
unjustly.
4) It is manifestly unjust and unconscionable that millions of A careful reading of Sections 2, 3 and 5 of R.A. 623 would lead to
buyers of Ginebra San Miguel, who pay not only for the gin the conclusion that they contemplate situations separate and
but also for the bottles containing it should run the risk of distinct from each other. Section 2 prohibits any person from
criminal prosecution by the mere fact of possession of the using, selling or otherwise disposing of registered containers
empty bottles after consuming the liquor. without the written consent of the registrant. Such rights belong
exclusively to the registrant. Under Section 3, mere possession of
ISSUE: WON the buyer can use the bottles (YES) such registered containers without the written consent of the
registrant isprima facie presumed unlawful.
RULING: With the transfer of ownership, you can also use it. This
is consistent with the rights of ownership. If not, it will open It appears — and this is the critical point — that Sections 2 and 3
many criminal suits to all those who bought it. apply only when the "filling" up of the bottle or the "use" of the
bottle is "without the written permission" of the "registered
La Tondeñ a not only sold its gin products but also the marked manufacturer, bottler, or seller," who has registered the marks of
bottles or containers, as well. And when these products were "ownership" of the bottles. It is thus implicit that Sections 2 and 3
transferred by way of sale, then ownership over the bottles and apply only when the "registered manufacturer, bottler, or seller"
all its attributes (jus utendi, jus abutendi, just fruendi, jus retain ownership of the bottles. Upon the other hand, when the
disponendi) passed to the buyer. It necessarily follows that the bottles have been "transferred by way of sale," Section 5 applies,
transferee has the right to possession of the bottles unless he thereby precluding the institution of any action "under this Act,"
uses them in violation of the original owner's registered or meaning to say, any action under Sections 2 and 3.
incorporeal rights.
The general rule on ownership, therefore, must apply and
After practically saying that La Tondeñ a has surrendered petitioner be allowed to enjoy all the rights of an owner in regard
ownership and consequently, possession of the marked bottles or the bottles in question, to wit:
container, it is incongruous and, certainly, it does not seem fair a. the jus utendi or the right to receive from the thing what it
and just to still allow La Tondeñ a, citing the prima facie produces;
presumption of illegal use under Sec. 3 of R.A. 623., to retain b. the jus abutendi or the right to consume the thing by its use;
possession of the seized bottles by simply requiring payment of c. the jus disponendi or the power of the owner to alienate,
just compensation to petitioner. The pertinent provisions of R.A. encumber, transform and even destroy the thing owned; and
623 are as follows: d. the jus vindicandi or the right to exclude from the possession
Section 2. It shall be unlawful for any person, without the written of the thing owned any other person to whom the owner has
consent of the manufacturer, bottler, or seller(emphasis not transmitted such thing.
supplied) who has successfully registered the marks of What is proscribed is the use of the bottles in infringement of
ownership in accordance with the provisions of the next another's trademark or incorporeal rights. Since the Court has
preceding section, to fill such bottles, boxes, kegs, barrels, steel found that the bottles have been transferred by way of sale, then
cylinders, tanks, flasks, accumulators, or other similar containers La Tondeñ a has relinquished all its proprietary rights over the
so marked or stamped, for the purpose of sale, or to sell, dispose bottles in favor of Distilleria Washington who has obtained them

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 Atty. Mark Del Rosario
MACALE 2020 INTELLECTUAL PROPERTY LAW

in due course. Now as owner, it can exercise all attributes of Private respondent, on the other hand, contends that petitioner's
ownership over the bottles. bottles used as containers for hard liquor are not protected by RA
No. 623. But even assuming the applicability of the law,
This is the import of the decision that La Tondeñ a had LORENZANA invokes the exemption granted in Sec. 6 thereof.
transferred ownership over its marked bottles or containers
when it sold its gin products to the public. While others may ISSUE: WON the contention is correct? (NO)
argue that Section 5 is applicable only to the immediate
transferee of the marked bottles or container, this matter is best RULING: Hard liquor, although regulated, is not prohibited by
discussed where the applicability of Sec. 5, R.A. 623 is squarely law, hence, still within the purview of the phrase "other lawful
raised. It must be recalled, however, that this is a case of replevin, beverages" protected by RA No. 623, as amended. But while we
not a violation of the "trademark protection of the registrant" adopt the foregoing precedent, we will not decide this case in
under R.A. 623 or of the Trademark Law. favor of petitioner because it is quite clear that respondent falls
within the exemption granted in Sec. 6 which states: "The
We cannot also be oblivious of the fact that if La Tondeñ a's thesis provisions of this Act shall not be interpreted as prohibiting the
that every possession of the bottles without the requisite written use of bottles as containers for "sisi," "bagoong," "patis," and
consent is illegal, thousands upon thousands of buyers of Ginebra similar native products."
San Miguel would be exposed to criminal prosecution by the
mere fact of possession of the empty bottles after consuming the Obviously, the contention of TWIN ACE that the exemption refers
content. only to criminal liability but not to civil liability is without merit.
It is inconceivable that an act specifically allowed by law, in other
 TWIN ACE HOLDINGS V. CA (SUPRA) words legal, can be the subject of injunctive relief and damages.
FACTS: TWIN ACE is a manufacturer, distiller and bottler of Besides, the interpretation offered by petitioner defeats the very
distillery products, e.g., rhum, gin, brandy, whiskey, vodka, liquor purpose for which the exemption was provided.
and cordial under the name and style of Tanduay Distillers, Inc.
(TANDUAY). Republic Act No. 623 was meant to protect the intellectual
property rights of the registrants of the containers and prevent
Lorenzana, on the other hand, manufactures and exports unfair trade practices and fraud on the public. However, the
processed foods and other related products, e.g., patis, toyo, exemption granted in Sec. 6 thereof was deemed extremely
bagoong, vinegar and other food seasonings. necessary to provide assistance and incentive to the backyard,
cottage and small-scale manufacturers of indigenous native
TWIN ACE filed a complaint for replevin to recover 380,000 products such as patis, sisi and toyo who do not have the capital
bottles of 350 ml., 375 ml, and 750 ml. allegedly owned by it but to buy brand new bottles as containers nor afford to pass the
detained and used by LORENZANA as containers for native added cost to the majority of poor Filipinos who use the products
products without its express permission, in violation of RA No. as their daily condiments or viands.
623. This law prohibits the use of registered bottles and other
containers for any purpose other than that for which they were If the contention of petitioner is accepted, i.e., to construe the
registered without the express permission of the owner. exemption as to apply to criminal liability only but not to civil
liability, the very purpose for which the exemption was granted
LORENZANA moved to dismiss the complaint on the ground that will be defeated. None of the small-scale manufacturers of the
RA No. 623 could not be invoked by TWIN ACE because the law indigenous native products protected would possibly wish to use
contemplated containers of non-alcoholic beverages only. But, the registered bottles if they are vulnerable to civil suits. The
assuming arguendo that the law applied in TWIN ACE's favor, the effect is a virtual elimination of the clear and unqualified
right of LORENZANA to use the bottles as containers for its patis exemption embodied in Sec. 6.
and other native products was expressly sanctioned by Sec. 6 3 of
the same law. Petitioner cannot seek refuge in Sec. 5 12 of RA No. 623 to
support its claim of continuing ownership over the subject
RTC dismissed the complaint. TWIN ACE appealed but CA bottles. Since the purchaser at his discretion could either retain
affirmed the action of the trial court. It held that while bottles and or return the bottles, the transaction must be regarded as a sale
containers of alcoholic beverages were indeed covered within the of the bottles when the purchaser actually exercised that
protective mantle of RA No. 623, as correctly argued by TWIN discretion and decided not to return them to the vendor.
ACE, nevertheless the Supreme Court expressly recognized the
exception granted in Sec. 6 thereof to those who used the bottles We also take judicial notice of the standard practice today that
as containers for sisi, bagoong, patis and other native products. the cost of the container is included in the selling price of the
Hence, no injunctive relief and damages could be obtained product such that the buyer of liquor or any such product from
against LORENZANA for exercising what was precisely allowed any store is not required to return the bottle nor is the liquor
by the law. placed in a plastic container that possession of the bottle is
retained by the store.
TWIN ACE contends that Sec. 6 notwithstanding, respondent
LORENZANA is obliged to pay just compensation for the use of GENERAL RULE: You cannot use registered bottles to sell other
the subject bottles because Sec. 6 exempts the user from criminal products.
sanction only but does not shield him from civil liability arising EXCEPTION: Patis, bagging, and other similar native products -
from the use of the registered bottles without the express
consent of the registered owner. Such civil liability arises from
the fact that Sec. 5 of RA No 623 expressly reserves for the
registered owner the ownership of the containers
notwithstanding the sale of the beverage contained therein.

MACALE 2020 | INTELLECTUAL PROPERTY LAW 17