056 Philip Morris V CA

PHILIP MORRIS V CA Whether of not there is a violation of the International Agreement on protection of
July 16, 1993 | MELO, J | Certiorari | Property trademarks. NO

PLAINTFFS-PETITIONERS: PHILIP MORRIS, INC., BENSON & HEDGES
(CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A. RULING: DISMISSED. CA Resolutions are AFFIRMED.
DEFENDANTS: COURT OF APPEALS AND FORTUNE TOBACCO
CORPORATION RATIO:
SUMMARY: Petitioners sue Fortune Tobacco for the manufacture and sale of 1. A fundamental principle of Philippine Trademark Law is that actual use in
MARK cigarettes. The RTC denied their prayer for preliminary injunction to commerce in the Philippines is a pre-requisite to the acquisition of ownership
prevent Fortune from continuing the use of such name pending resolution of their over a trademark or a tradename. Adoption alone of a trademark would not give
case. On appeal to the CA, the court reversed the RTC and granted the writ because exclusive right thereto. Such right grows out of their actual use. Adoption is not
the use of the name was confusingly similar to the trademark of the petitioners. use. One may make advertisements, issue circulars, give out price lists on
While Fortunes MR was denied, the court granted the motion to dissolve the writ by certain goods; but these alone would not give exclusive right of use. For
posting a counterbond to answer for whatever damage petitioners may suffer as a trademark is a creation of use.
result of the dissolution of the preliminary injunction. 2. The records show that the petitioner has never conducted business in the
DOCTRINE: In view of the explicit representation of petitioners in the complaint Philippines. It has never promoted its tradename of trademark in the Philippines.
that they are not engaged in business in the Philippines, it inevitably follows that no It is unknown to Filipinos except the very few who may have noticed it while
conceivable damage can be suffered by them not to mention the foremost travelling abroad. It has paid a single centavo of tax to the Philippine
consideration heretofore discussed on the absence of their "right" to be protected. government. Under the law, it has no right to the remedy it seeks.
FACTS: 3. In other words, petitioners may have the capacity to sue for infringement
1. Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and irrespective of lack of business activity in the Philippines on account of Section
Fabriques of Tabac Reunies, S.A., are ascribing grave abuse of discretion upon 21-A of the Trademark Law but the question of whether they have an exclusive
the Court of Appeals when it lifted the writ of preliminary injunction it earlier right over the symbol as to justify issuance of the controversial writ will depend
had issued against Fortune Tobacco Corporation, herein private respondent, on actual use of their trademarks in the Philippines in line with Sections 2 and 2-
from manufacturing and selling "MARK" cigarettes in the local market. Banking A of the same law. It is thus incongruous on petitioners to claim that when a
on the thesis that petitioners' respective symbols "MARK VII", 'MARK TEN", foreign corporation not licensed to do business in the Philippines files a
and "MARK", also for cigarettes, must be protected against unauthorized complaint for infringement, the entity need not be actually using its trademark in
appropriation. commerce in the Philippines.
2. Philip Morris, Incorporated is a corporation organized under the laws of the 4. In view of the explicit representation of petitioners in the complaint that they are
State of Virginia, USA, and does business at 100 Park Avenue, NYC, NY, USA, not engaged in business in the Philippines, it inevitably follows that no
not doing business in the Philippines. The two other plaintiff foreign conceivable damage can be suffered by them not to mention the foremost
corporations, which are wholly-owned subsidiaries of Philip Morris, Inc., are consideration heretofore discussed on the absence of their "right" to be
similarly not doing business in the Philippines but are suing on an isolated protected.
transaction as registered owners "MARK VII", "MARK TEN", and "LARK" per 5. Following universal acquiescence and comity, our municipal law on trademarks
certificates of registration issued by the Philippine Patent Office. regarding the requirement of actual use in the Philippines must subordinate an
3. Plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has international agreement inasmuch as the apparent clash is being decided by a
no right to manufacture and sell cigarettes bearing the allegedly identical or municipal tribunal. Withal, the fact that international law has been made part of
confusingly similar trademark' Plaintiffs admit in the complaint that "xxx they the law of the land does not by any means imply the primacy of international
are not doing business in the Philippines and are suing on an isolated transaction law over national law in the municipal sphere. Under the doctrine of
xxx'. This simply means that they are not engaged in the sale, manufacture, incorporation as applied in most countries, rules of international law are given a
importation, exportation and advertisement of their cigarette products in the standing equal, not superior, to national legislative enactments
Philippines.
ISSUE/S:
WoN there has been an invasion of plaintiffs' right of property to such trademark or
trade name NO

056 Philip Morris V CA

Uploaded by

Copyright:

Available Formats

056 Philip Morris V CA

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

056 Philip Morris V CA

Uploaded by

Copyright:

Available Formats

PHILIP MORRIS V CA Whether of not there is a violation of the International Agreement on protection of

July 16, 1993 | MELO, J | Certiorari | Property trademarks. NO

You might also like