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MIDTERMS Phil. Pharmawealth Inc. vs. Pfizer

Only final decision of BLA are subject to exclusive appellate jurisdiction of the Director
Mighty Corp. v. E. Gallo Winery General. RA 8293 is silent with respect to any remedy available to litigants who intend to
question an interlocutory order issued by the BLA-IPO. Hence, in the absence of such a
IPL is prospective in application. A law that is not yet effective cannot be considered as remedy, the provisions of the Rules of Court shall apply in a suppletory manner, as provided
conclusively known by the populace. To make the law binding even before it takes effect may under Section 3, Rule 1 of the same Rules and Regulations. The CA, and not the IPO Director
lead to the arbitrary exercise of the legislative power. General, has jurisdiction to determine whether the BLA-IPO committed grave abuse of
discretion in denying respondents' motion to extend the effectivity of the writ of preliminary
injunction which the said office earlier issued.
-OR-
Sasot v. Sasot
The exclusive right of a patentee to make, use and sell a patented product exists only during

the term of the patent.
A violation of Unfair Competition is a public crime punished under Art 168 of the RPC. It is

essentially an act against the State and it is the latter that stands as the injured party.

Therefore, the complainant’s capacity to sue becomes immaterial.

In-N-Out Burger v. Sehwani

The complaint, which seeks the cancellation of the disputed and damages for violation of
Elidad Kho v. CA
petitioner's intellectual property rights, falls within the jurisdiction of the IPO Director of

Legal Affairs. The IPO Director of Legal Affairs has jurisdiction to decide the petitioner's
Trademark, copyright and patents are different intellectual property rights that cannot be
administrative case against respondents and the IPO Director General had exclusive
interchanged with one another.
jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.




Pearl & Dean v. Shoemart
Roma Drug v. Glaxo SmithKline


No patent, no protection. To be able to legally preclude others from copying and profiting
Once the drugs and medicines were introduced(offered or sold for sale) in the Philippines or
from an invention, a patent is a primordial requirement. Ideas, once disclosed to the public
anywhere else in the world by the patent owner, the right to import the same shall be
without the protection of a valid patent, are subject to appropriation without significant
available to any government agency or any private third party.
restraint.




Smith Kline Beckman Corp. v. Court of Appeals
La Chemise Lacoste vs. Fernandez


Doctrine of Equivalents; provides that an infringement also takes place when a device
A certificate of registration in the Supplemental Register is not a prima facie evidence of the
appropriates a prior invention by incorporating its innovative concept and, although with
validity of registration, of the registrant's exclusive right to use the same in connection with
some modification and change, performs substantially the same function in substantially
the goods, business, or services specified in the certificate. Registration in the Supplemental
the same way to achieve substantially the same result.
Register, therefore, serves as notice that the registrant is using or has appropriated the

trademark. It would be deceptive for a party with nothing more than a registration in the

Supplemental Register to posture before courts of justice as if the registration is in the
Principal Register.
Birkenstock Orthopaedie GMBH And Co. KG v. Philippine Shoe Expo Marketing
-OR- Corporation
In upholding the right of the petitioner to maintain the present suit before our courts for
unfair competition or infringement of trademarks of a foreign corporation, we are moreover It is not the application or registration of a trademark that vests ownership thereof, but it is
recognizing our duties and the rights of foreign states under the Paris Convention for the the ownership of a trademark that confers the right to register the same. Registration merely
Protection of Industrial Property to which the Philippines and France are parties. We are creates a prima facie presumption: a) of the validity of the registration; b) of the registrant’s
simply interpreting and enforcing a solemn international commitment of the Philippines ownership of the trademark, and; c) of the exclusive right to the use thereof. The
embodied in a multilateral treaty to which we are a party and which we entered into because presumption of ownership accorded to a registrant must necessarily yield to superior
it is in our national interest to do so. evidence of actual and real ownership of trademark.

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Fredco Manufacturing Corp. v. President and Fellows of Harvard College FINALS

While under the territoriality principle a mark must be used in commerce in the Philippines
to be entitled to protection, internationally well-known marks are the exceptions to this rule. Mcdonald's Corp. v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004

The registered trademark owner may use his mark on the same or similar products, in
Ana Ang v. Teodoro (Ang Tibay Case) different segments of the market, and at different price levels depending on variations of the
products for specific segments of the market. The Court has recognized that the registered
Doctrine of Secondary Meaning: This doctrine is to the effect that a word or phrase trademark owner enjoys protection in product and market areas that are the normal
originally incapable of exclusive appropriation with reference to an article on the market, potential expansion of his business.
because geographically or otherwise descriptive, might nevertheless have been used so long
and so exclusively by one producer with reference to his article that, in that trade and to that Additional input: Modern law recognizes that the protection to which the owner of a
branch of the purchasing public, the word or phrase has come to mean that the article was trademark is entitled is not limited to guarding his goods or business from actual market
his product. competition with identical or similar products of the parties, but extends to all cases in
which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a
confusion of source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field or is in any way connected with the
activities of the infringer; or when it forestalls the normal potential expansion of his business.


McDonald's Corporation v. Macjoy Fastfood Corporation, G.R. No. 166115,

February 2, 2007



In determining similarity and likelihood of confusion, jurisprudence has developed two tests,

the dominancy test and the holistic test. The dominancy test focuses on the similarity of the

prevalent features of the competing trademarks that might cause confusion or deception. In

contrast, the holistic test requires the court to consider the entirety of the marks as applied

to the products, including the labels and packaging, in determining confusing

similarity. Under the latter test, a comparison of the words is not the only determinant

factor.






Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading Corp., G.R. No. 164321
(Resolution), March 28, 2011

The Dominancy Test focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the
mark sought to be registered suggests an effort to imitate. Given more consideration are the
aural and visual impressions created by the marks on the buyers of goods, giving little
weight to factors like prices, quality, sales outlets, and market segments.









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Asia Brewery, Inc. v. Court of Appeals, G.R. No. 103543, July 5, 1993 Fredco Manufacturing Corp. v. President and Fellows of Hardvard College, G.R.
No. 185917, June 1, 2011
According to Atty. Busmente: Infringement of marks are not limited to physical appearance
but may also apply to sound and spelling R.A. No. 8293 now categorically states that "a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in the Philippines,
Doctrine #1: The protection against imitation properly limited to nonfunctional features. whether or not it is registered here," cannot be registered by another in the Philippines.

Doctrine #2: A number of courts have held that to determine whether a trademark has been While under the territoriality rule that a mark musr be used in commerce in the Philippines
infringed, we must consider the mark as a whole and not as dissected. If the buyer is to be entitled to protection, internationally well-known marks are the exception to this rule.
deceived, it is attributable to the marks as a totality, not usually to any part of it.


Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 246 Corp. v. Daway, G.R. No. 157216, November 20, 2003 (ROLEX CASE)
180073, November 25, 2009
A junior user of a well-known mark on goods or services which are not similar to the goods
It is the element of "likelihood of confusion" that is the gravamen of trademark infringement. or services, and are therefore unrelated, to those specified in the certificate of registration of
But "likelihood of confusion" is a relative concept. The particular, and sometimes peculiar, the well-known mark is precluded from using the same on the entirely unrelated goods or
circumstances of each case are determinative of its existence. Thus, in trademark services, subject to the following requisites, to wit:
infringement cases, precedents must be evaluated in the light of each particular case. 1. The mark is well-known internationally and in the Philippines;
2. The use of the well-known mark on the entirely unrelated goods or services would
indicate a connection between such unrelated goods or services and those goods
Del Monte Corp. v. Court of Appeals, G.R. No. 78325, January 25, 1990 or services specified in the certificate of registration in the well known mark.
(Likelihood of confusion as the source of the product/ the producer)
Side-by-side comparison is not the final test of similarity. The question is not whether the 3. The interests of the owner of the well-known mark are likely to be damaged.
two articles are distinguishable by their label when set side by side but whether the general
confusion made by the article upon the eye of the casual purchaser who is unsuspicious and
off his guard, is such as to likely result in his confounding it with the original. Ecole de Cuisine Manille, Inc. v. Renaud Cointreau & Cie, G.R. No. 185830, June
5, 2013

Fruit of the Loom, Inc. v. Court of Appeals, G.R. No. L-32747, November 29, 1984 One may be an owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner's failure to use the same in the Philippines
In determining whether the trademarks are confusingly similar, a comparison of the words is for two (2) months prior to registration. Section 2-A of R.A. No. 266 does not require that the
not the only determinant factor. The trademarks in their entirety as they appear in their actual use of a trademark must be within the Philippines.
respective labels or hang tags must also be considered in relation to the goods to which they
are attached. The discerning eye of the observer must focus not only on the predominant Also, under our present law, R.A8293, the Philippines has already dispensed with the
words but also on the other features appearing in both labels in order that he may draw his requirement of prior actual use at the time of registration.
conclusion whether one is confusingly similar to the other.

Lyceum of the Philippines, Inc. v. Court of Appeals, G.R. No. 101897, March 5,
Berris Agricultural Co., Inc. v. Abyadang, G.R. No. 183404, October 13, 2010 1993

According to Atty. Busmente: The use of the two tests of infringement is not exclusive. Descriptive geographical terms are in the 'public domain.’ A word or phrase that is
Therefore, the use of one does not exclude the use of the other. geographically or otherwise descriptive is originally incapable of exclusive appropriation
with reference to an article on the market.

Exception: “Doctrine of Secondary meaning” wherein a word or phrase originally incapable
of exclusive appropriation with reference to an article on the market, because geographically
or otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product

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Asia Brewery, Inc. v. Court of Appeals, G.R. No. 103543, July 5, 1993 Levi Strauss & Co. v. Clinton Apparelle Inc., G.R. No. 138900, [September 20,
2005
Doctrine #1: The protection against imitation properly limited to nonfunctional features.
Doctrine: Subject to the principles of equity, the owner of a famous mark is entitled to an
Doctrine #2: A number of courts have held that to determine whether a trademark has been injunction "against another person's commercial use in commerce of a mark or trade name,
infringed, we must consider the mark as a whole and not as dissected. If the buyer is if such use begins after the mark has become famous and causes dilution of the distinctive
deceived, it is attributable to the marks as a totality, not usually to any part of it. quality of the mark.

Additional input: To be eligible for protection from dilution, there has to be a finding that:
Shang Properties Realty Corp. v. St. Francis Development Corp., G.R. No. (1) The trademark sought to be protected is famous and distinctive;
190706, July 21, 2014 (2) The use by respondent of mark began after the petitioners' mark became famous; and
(3) Such subsequent use defames petitioners' mark.
The "true test" of unfair competition has thus been "whether the acts of the defendant
have the intent of deceiving or are calculated to deceive the ordinary buyer making
his purchases under the ordinary conditions of the particular trade to which the
controversy relates. Hence, fraud must be proven. Failure of the petitioner to prove the Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc., G.R. No. 169504,
same would negate liability for unfair competition. March 3, 2010

A trade name need not be registered with the IPO before an infringement suit may be filed by
Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, its owner against the owner of an infringing trademark. All that is required is that the trade
2010 (?) name is previously used in trade or commerce in the Philippines.

In trademark controversies, each case must be scrutinized according to its peculiar RA 8293 has dispensed with the registration requirement. Section 165.2 of RA 8293
circumstances, such that jurisprudential precedents should only be made to apply if they are categorically states that trade names shall be protected, even prior to or without registration
specifically in point. with the IPO, against any unlawful act including any subsequent use of the trade name by a
third party, whether as a trade name or a trademark likely to mislead the public.

Roma Drug v. Glaxo SmithKline *repeated case*
Uyco v. Lo, G.R. No. 202423, January 28, 2013
Once the drugs and medicines were introduced (offered or sold for sale) in the Philippines or
anywhere else in the world by the patent owner, the right to import the same shall be The law on trademarks and trade names precisely precludes a person from profiting from
available to any government agency or any private third party. the business reputation built by another and from deceiving the public as to the origins of
products.

Prosource International, Inc. v. Horphag Research Management SA, G.R. No.
180073, November 25, 2009 *repeated case* Willaware Products Corp. v. Jesichris Manufacturing Corp., G.R. No. 195549,
September 3, 2014
It is the element of "likelihood of confusion" that is the gravamen of trademark infringement.
But "likelihood of confusion" is a relative concept. Although there were dissimilarities in the In order to qualify the competition as "unfair" under Article 28 of NCC, it must have two
trademark due to the type of letters used as well as the size, color and design employed on characteristics: (1) it must involve an injury to a competitor or trade rival, and (2) it must
their individual packages/bottles, still the close relationship of the competing products’ involve acts which are characterized as "contrary to good conscience," or "shocking to
name in sounds as they were pronounced, clearly indicates that purchasers could be misled judicial sensibilities," or otherwise unlawful; in the language of our law, these include force,
into believing that they are the same and/or originates from a common source and intimidation, deceit, machination or any other unjust, oppressive or high-handed method.
manufacturer. The public injury or interest is a minor factor; the essence of the matter appears to be a
private wrong perpetrated by unconscionable means.

Doctrine #2: When a person starts an opposing place of business, not for the sake of profit
to himself, but regardless of loss and for the sole purpose of driving his competitor out of
business so that later on he can take advantage of the effects of his malevolent purpose, he is
guilty of wanton wrong.

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Batistis v. People, G.R. No. 181571, December 16, 2009 NBI - Microsoft Corp. v. Hwang, G.R. No. 147043, June 21, 2005

When the respondent exerted the effort to make the counterfeit products look genuine to The gravamen of copyright infringement is not merely the unauthorized "manufacturing" of
deceive the unwary public into regarding the products as genuine, such act constituted intellectual works but rather the unauthorized performance of any of the acts covered by
infringement of trademark as set forth in Section 155 of Intellectual Property Law. Section 5 of PD 49. Hence, any person who performs any of the acts under Section 5 without
obtaining the copyright owner's prior consent renders himself civilly and criminally liable
for copyright infringement.
Joaquin, Jr. v. Drilon, G.R. No. 108946, January 28, 1999

Doctrine #1: Copyright, in the strict sense of the term, is purely a statutory right. It is a new Manly Sportwear Mfg. Inc. v. Dadodette Enterprises, G.R. No. 165306,
or independent right granted by the statute, and not simply a pre-existing right regulated by September 20, 2005
the statute. Being a statutory grant, the rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the subjects and by the persons, and on terms At most, the certificates of registration and deposit issued by the National Library and the
and conditions specified in the statute. Supreme Court Library serve merely as a notice of recording and registration of the work but
do not confer any right or title upon the registered copyright owner or automatically put his
Doctrine #2: The format of a show is not copyrightable. The format or mechanics of a work under the protective mantle of the copyright law; it is not a conclusive proof of
television show is not included in the list of protected works in Section 2 of P.D. No. 49. For copyright ownership. Hence, when there is sufficient proof that the copyrighted products are
this reason, the protection afforded by the law cannot be extended to cover them. not original creations but are readily available in the market under various brands, as in this
case, validity and originality will not be presumed.

ABS-CBN Broadcasting Corp. v. Philippine Multi-Media System, Inc., G.R. Nos.
175769-70, January 19, 2009


Under Sec. 184.1 (h), the use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or professional institutions
where such use is in the public interest and is compatible with fair use will not constitute
copyright infringement. The carriage of ABS-CBN’s signals by virtue of the must-carry rule is
under the direction and control of the government through the NTC. The imposition of the
must-carry rule is within the NTC’s power to promulgate rules and regulations, as public
safety and interest may require, to encourage a larger and more effective use of
communications, radio and television broadcasting facilities, and to maintain effective
competition among private entities in these activities whenever the Commission finds it
reasonably feasible.


Habana v. Robles, G.R. No. 131522, July 19, 1999

Doctrine #1: When is there a substantial reproduction of a book? It does not necessarily
require that the entire copyrighted work, or even a large portion of it, be copied. If so much is
taken that the value of the original work is substantially diminished, there is an infringement
of copyright and to an injurious extent, the work is appropriated.

Doctrine #2: In cases of infringement, copying alone is not what is prohibited. The copying
must produce an "injurious effect."






LIP Doctrines | Atty. Busmente
ITG 2017-2018