MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC.

, petitioner,
vs.
E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC., respondents.

Facts:
Respondent Gallo Winery is a foreign corporation not doing business in the Philippines but organized and
existing under the laws of the State of California, USA. Whose patent was registered in 1971 in the Philippines
Patent Office. but the records do not disclose if it was ever approved by the Director of Patents. 7

On the other hand, petitioners Mighty Corporation and La Campana and their sister company have been using
the GALLO cigarette trademark since 1973. Which was approved by the BIR.

Respondents claim that they first learned about the existence of GALLO cigarettes in the latter part of 1992
when an Andresons employee saw such cigarettes on display with GALLO wines in a Davao supermarket wine
cellar section. Forthwith, respondents sent a demand letter to petitioners asking them to stop using the GALLO
trademark, to no avail.

respondents sued petitioners in the Makati RTC for trademark and tradename infringement and unfair
competition, with a prayer for damages and preliminary injunction.

The use of petitioner’s GALLO trademark caused confusion, deception and mistake on the part of the purchasing
public.

The RTC denied respondent’s prayer for the issuance of preliminary injunction because petitioner and respondent’s
products were unrelated goods. The motion for reconsideration is as well denied by the RTC.

The CA likewise dismissed respondent’s petition for review. However, on 1988, the RTC reversed its decision holding
petitioners liable for committing trademark infringement and unfair competition.

Issue: WON petitioners should be liable for committing trademark infringement and unfair competition

Ruling: No.
petitioner’s use of the GALLO cigarette trademark is not likely to cause confusion or mistake, or to deceive the
"ordinarily intelligent buyer" of either wines or cigarettes or both as to the identity of the goods, their source and
origin, or identity of the business of petitioners and respondents.

under Article 6 of the Paris Convention, the following are the elements of trademark infringement:

(a) registration or use by another person of a trademark which is a reproduction, imitation or

translation liable to create confusion,

(b) of a mark considered by the competent authority of the country of registration or use to be well-
48 

known in that country and is already the mark of a person entitled to the benefits of the Paris
Convention, and

(c) such trademark is used for identical or similar goods.

For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's
use of its own mark and for failure to establish confusing similarity between said trademarks,
private respondent's action for infringement must necessarily fail. (Emphasis supplied.)

In view of the foregoing jurisprudence and respondents’ judicial admission that the actual commercial use of the
GALLO wine trademark was subsequent to its registration in 1971 and to Tobacco Industries’ commercial use of
the GALLO cigarette trademark in 1973, we rule that, on this account, respondents never enjoyed the exclusive
right to use the GALLO wine trademark to the prejudice of Tobacco Industries and its successors-in-interest,
herein petitioners, either under the Trademark Law or the Paris Convention.

the use of an identical mark does not, by itself, lead to a legal conclusion that there is trademark infringement:

The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration.
RA 166

SEC. 2. What are registrable. – Trademarks, tradenames, and servicemarks owned by persons, corporations,
partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or
associations domiciled in any foreign country may be registered in accordance with the provisions of this
Act; Provided, That said trademarks, tradenames, or service marks are actually in use in commerce and
services not less than two months in the Philippines before the time the applications for registration are
filed. And provided, further, That the country of which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified
true copy of the foreign law translated into the English language, by the government of the foreign country to the
Government of the Republic of the Philippines. (As amended by R.A. 865).

SEC. 2-A. Ownership of trademarks, tradenames and servicemarks; how acquired. – Anyone who lawfully
produces or deals in merchandise of any kind or engages in any lawful business, or who renders any lawful
service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered,
may appropriate to his exclusive use a trademark, a tradename, or a servicemark not so appropriated by
another, to distinguish his merchandise, business or service from the merchandise, business or service of
others. The ownership or possession of a trademark, tradename, servicemark heretofore or hereafter
appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same
extent as are other property rights known to the law. (As amended by R.A. 638).
E.I DUPONT DE NEMOURS AND CO vs. DIRECTOR EMMA C. FRANCISCO  and THERAPHARMA, INC.

Facts:

This case is about the Patent application by petitioner of their invention related to the treatment of hypertension
and congestive heart failure AKA Losartan.

Petitioner was not aware that their counsel Atty. Mapili died, and that their patent application has been abandoned,
and that it was not yet acted by the intellectual property office after 13 long year.

On 2002, petitioner submitted a power of attorney to prosecute and handle its patent applications and also filed a
Petition for Revival with Cost of Philippine Patent Application No. 35526. They argued that Atty. Makapili did not
inform them of the abandonment of their application.

However, the director of patents denied the Petition for Revival for having been filed out of time.

This was affirmed by the Director-General of the Intellectual Property Office on 2003. However, the CA made a
decision in favor of the petitioner and granted it some relief from the gross negligence of its former lawyer.

Therapharma, Inc. moved for leave to intervene. Alleging that on 2003, it filed before the Bureau of Food and Drugs
its own application for a losartan product “Lifezar,” a medication for hypertension, which the Bureau granted. CA
granted the motion to intervene by Therapharma, Inc. and reversed its former own decision. Hence the review on
certiorari under Rule 45.

ISSUE: Whether or not the patent application of losartan by Dupont should be revived.

Held:

No, the patent application for its revival was filed out of time.

Although it was in petitioner’s discretion as a foreign client to put its complete trust and confidence on its local
resident agent, there was a correlative duty on its part to be diligent in keeping itself updated on the progress of its
patent applications. Its failure to be informed of the abandonment of its patent application was caused by its own
lack of prudence. Petitioner issued a Power of Attorney and Appointment of Resident Agent in favor of Bito, Lozada,
Ortega & Castillo on March 25, 1996 but it only requested a status update of Philippine Patent Application No. 35526
on December 14, 2000, or four (4) years after it learned of Atty. Mapili’s death. The Power of Attorney shows that it
was only to inform the Bureau that all notices relating to its pending patent applications should be sent to it and
there was no request for specific status update. The four (4)-month period in Section 111 of the 1962 Revised Rules
of Practice is not counted from actual notice of abandonment but from mailing of the notice. Since it appears from
the Intellectual Property Office’s records that a notice of abandonment was mailed to petitioner’s resident agent on
July 19, 1988, the time for taking action is counted from this period.

United States and the Philippines are signatories to the Paris Convention for the Protection of Industrial Property, an
applicant who has filed a patent application in the United States may have a right of priority over the same invention
in a patent application in the Philippines. However, this right of priority does not immediately entitle a patent
applicant the grant of a patent. A right of priority is not equivalent to a patent. Otherwise, a patent holder of any
member-state of the Paris Convention need not apply for patents in other countries where it wishes to exercise its
patent.
The first-to-file system required citizens of foreign countries to register their patents in the Philippines before they
can sue for infringement.

An abandoned patent application may only be revived within four (4) months from the date of abandonment. No
extension of this period is provided by the 1962 Revised Rules of Practice.

IPO shortened the time for revival to 3 months

three-fold purpose

1. patent law seeks to foster and reward invention

2. it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the
invention once the patent expires

3. the stringent requirements for patent protection. seek to ensure that ideas in the public domain remain there for
the free use of the public.
"in rewarding a useful invention, the rights and welfare of the community must be fairly dealt with and effectively
guarded. To that end, the prerequisites to obtaining a patent are strictly observed and when a patent is issued,
the limitations on its exercise are equally strictly enforced.

a patent holder of inventions relating to food or medicine does not enjoy absolute monopoly over the patent.
Both Republic Act No. 165 and the Intellectual Property Code provide for compulsory licensing. Compulsory
licensing is defined in the Intellectual Property Code as the "grant a license to exploit a patented invention,
even without the agreement of the patent owner." -----GRANTED AFTER 3 YEARS AFTER THE GRANT OF A
PATENT RELATED TO FOOD OR MEDICINE INVENTIONS

RA 165-for the purpose of affording others an opportunity to provide the public with the patented product, and to
prevent the growth of MONOPOLIES.
Melbarose R. Sasot and Allandale R. Sasot V. People of the Philippines, et al.,
G.R. No. 143193, June 29, 2005

Facts:

The case subject of the present special civil action for certiorari is a criminal prosecution against petitioners for unfair
competition under Article 189 of the Revised Penal Code, filed before the Regional Trial Court.

NBA Properties, Inc., is a foreign corporation organized under the laws of the United States of
America, and is the registered owner of NBA trademarks 

Rick Welts, President of NBA Properties, Inc., executed a special power of attorney and was
notarized at the Supreme Court of New York. The Consulate general of the Philippines, New York,
authenticate the certification.

Thereafter, the prosecutor filed an information for the violation of Article 189 of the RPC.

Before arraignment, petitioners filed a motion to quash the information on the ground that the
facts do not constitute an offense and that the Honorable court has no Jurisdiction over the
offense charged or the person of the accused.

However, the RTC sustained the prosecution’s arguments and denied petitioners’ motion to quash.

Thereafter, petitioner filed a special civil action for certiorari with the CA which was dismissed by the said court as it
is the proper remedy in assailing a denial of a motion to quash.

The Motion for Reconsideration was denied by the CA, hence, the present petition.

Issue:

WON a foreign corporation not engage and licensed to do business in the Philippines may maintain a cause of action
for unfair completion.

Ruling: YES

Nowhere in the foregoing provision is there any mention of the defect in the complaint filed before
the fiscal and the complainant's capacity to sue as grounds for a motion to quash.

The Complaint- affidavit by Welts contains acknowledgement by the Notary public Nicole Brown of
the State of New York, the same has been duly authenticated by the Philippine consulate. It is apt
to state at this point that the prosecutor enjoys the legal presumption of regularity in the
performance of his duties and functions, which in turn gives his report the presumption of
accuracy.

In La Chemise Lacoste, S.A. v. Fernandez, If prosecution follows after the completion of the
preliminary investigation being conducted by the Special Prosecutor the information
shall be in the name of the People of the Philippines and no longer the petitioner which
is only an aggrieved party since a criminal offense is essentially an act against the
State. It is the latter which is principally the injured party although there is a private
right violated. Petitioner's capacity to sue would become, therefore, of not much
significance in the main case.
Elidad Kho V. Court of Appeals, G.R. No. 115758, March 19, 2002
Facts:

Petioner Kho is doing business under the KEC Cosmetics Laboratory, and that they are the registered owner of the
copy rights Chin Chun Su and Oval Facial Cream Container/Case. Petitioners alleged that they are as well the patent
owner of the said product after purchasing the same from Quintin Cheng.

Summerville on the other hand alleged that they are the exclusive and authorized importer, re-packer and
distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan. And that the same was authorized
to register the patent in the Philippine Patent Office.

Respondents averred that Petitioners obtained the copyrights through misrepresentation and falsification, and that
the authority of Cheng as the assignee of the patent registration certificate has been terminated already by the said
Taiwanese Manufacturing company.

The RTC granted the preliminary injunction in favor of petitioner Kho. However, reversed by the CA on a filed
petition for certiorari by respondents.

The CA ruled that the registration of the trademark or brandname "Chin Chun Su" by KEC with the supplemental
register of the Bureau of Patents, Trademarks and Technology Transfer cannot be equated with registration in
the principal register, which is duly protected by the Trademark Law. 1âwphi1.nêt

Issue: WON Kho has an exclusive right using the package of Chin Chun SU.

Ruling:

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one
another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or marked container of goods.12 In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.13 Meanwhile, the scope of a
copyright is confined to literary and artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation.14 Patentable inventions, on the other hand, refer to
any technical solution of a problem in any field of human activity which is new, involves an inventive step and is
industrially applicable.

Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The
name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls
squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream
product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioner's
copyright and patent registration of the name and container would not guarantee her the right to the exclusive
use of the same for the reason that they are not appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven
that she has a clear right over the said name and container to the exclusion of others, not having proven that she
has registered a trademark thereto or used the same before anyone did.

---violation of Section 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on her
motion for reconsideration within ninety (90) days from the time it is submitted for resolution. CA ruled after 354
days----SC ruled that petitioner contributed to the delay because she filed successive contentious motions in the
same proceeding.

SECTION 2, RULE 56 of the revised rules of Civil Procedure---- in petitions for certiorari, an answer/comment
should be file. A motion to dismiss is not proper in this case.
Pearl & Dean (Phil.), Inc. V. Shoemart, Inc. and North Edsa Marketing, Inc. G.R.
No. 148222,
Facts:
Pearl and Dean filed this instant case for infringement of trademark and copyright, unfair competition and damages.

Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units
simply referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and
illuminated with back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January
20, 1981 over these illuminated display units. The advertising light boxes were marketed under the trademark
"Poster Ads".

The application for registration of the trademark was filed with the Bureau of Patents, Trademarks and Technology
Transfer on 1983, but was approved only on 1988. From 1981 to about 1988, Pearl and Dean employed the services
of Metro Industrial Services to manufacture its advertising displays.

Petitioner P&D negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and installation of the light
boxes in SM City North Edsa. Since Since SM City North Edsa was under construction at that time, SMI offered as an
alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. However, the contract for the installation of
the light boxes in SM Cubao as well was not complied. And SMI did not bother to reply.

SMI informed P&D to rescind the contract due to non-performance of the terms thereof.

Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to make its display
units, offered to construct light boxes for Shoemart’s chain of stores. SMI approved the proposal and ten (10) light
boxes were subsequently fabricated by Metro Industrial for SMI. After its contract with Metro Industrial was
terminated, SMI engaged the services of EYD Rainbow Advertising Corporation to make the light boxes.

It was discovered by petitioners that their light boxes were fabricated and then demanded petitioners to cease using
the subject light boxes and to remove the same from SMI’s establishment. Petitioners also demanded to discontinue
the use of the trademark “Poster Ads”.

The RTC favored petitioner P&D, and found defendants jointly and severally liable for infringement of copyright.

The CA, however, reversed the decision of the RTC. It agreed that what SMI copyrighted were the technical drawings
only, and not the light boxes themselves. It as well classified that the light boxes were copyrightable class “O” work
under Section 2 (O) of PD 49.

Issue: WON Respondents are liable for infringement of copyright.

Ruling: NO.

P & D secured its copyright under the classification class "O" work. This being so, petitioner’s copyright protection
extended only to the technical drawings and not to the light box itself because the latter was not at all in the
category of "prints, pictorial illustrations, advertising copies, labels, tags and box wraps."
P & D indeed owned a valid copyright, the same could have referred only to the technical drawings within the
category of "pictorial illustrations."

What the law does not include, it excludes, even if petitioners copyright certificate was entitled "Advertising
Display Units”, it is still copyrightable since the provision in Section 2 is only limited to "prints, pictorial
illustrations, advertising copies, labels, tags and box wraps."

Respondents cannot be held liable for Patent Infringement as well because petitioner never secured a patent for the
light boxes.  And because it had no patent, petitioner could not legally prevent anyone from manufacturing or
commercially using the contraption.
The ultimate goal of a patent system is to bring new designs and technologies into the public domain through
disclosure. Ideas, once disclosed to the public without the protection of a valid patent, are subject to
appropriation without significant restraint.

TRADEMARK INFRINGEMENT

P & D was able to secure a trademark certificate for it, but one where the goods specified were "stationeries
such as letterheads, envelopes, calling cards and newsletters."

Section 20 of the old Trademark Law - the exclusive right to use its own symbol only to those goods specified
in the certificate, subject to any conditions and limitations specified in the certificate

ON THE ISSUE OF UNFAIR COMPETITION

RTC also cited unfair competition, the trial court did not find private respondents liable therefor. Petitioner
did not appeal this particular point; hence, it cannot now revive its claim of unfair competition.
Baker v. Selden (101 U.S. 841 [1879])
Facts. 
Selden (Plaintiff-author) copyrighted a book in which he used in introductory essay explaining his system of
bookkeeping followed by forms to put the system to use.  He had arranged the columns and headings so
that the entire operation of a day, week or month was on a single page or on two pages facing each other. 
Baker (Defendant) then began selling forms with columns and headings arranged differently to achieve the
same result.  When Plaintiff successfully sued for copyright infringement, Defendant appealed. He argued
that the forms were non-copyrightable.
Issue. Does copyright protection for a book explaining an art or system prevent others from using the
system or the forms incidentally used?
Held. (Bradley, J.)
No.  The copyright protection for a book explaining an art or system extends only to the author’s unique
explanation of it and does not prevent others from using the system or the forms incidentally used.  To find
that a copyright protected against use of the system itself or the forms necessary to such use would be to
grant protection similar to a patent without requiring a showing of novelty. Copyright is based on originality,
not novelty, and protects the explanation of the system and not the use of the system.  In this case,
therefore, the copyright Selden (Plaintiff-auathor) obtained could not give him the exclusive right to use the
bookkeeping system or the forms necessary to such use.
Copyright---- only secures the exclusive right of printing and publishing a book.
Muller V. Triborough Bridge Authority
Facts:

Plaintiff brings this action for an infringement of a copyright of an unpublished work, described in the
application for the copyright as "Bridge Approach” The drawing shows a novel bridge approach to unsnarl
traffic congestion".
The application for the copyright was filed, pursuant to Section 11 of the Copyright Act, as an unpublished
work, that is, a work of which "copies are not reproduced for sale". 
Plaintiff alleges that the defendant "wrongfully and unlawfully appropriated and used said copyrighted
design and plan in the design, plan, construction and operation of the Approach to Cross Bay Parkway
Bridge, which was designed, planned and constructed by defendant and which is maintained by defendant
and for the use of which defendant charges a toll".
It is also alleged that the plan and design is of great value, worth at least $100,000, and that defendant's
actions damaged the plaintiff in the sum of $10,000. 
Defendant denies any use of plaintiff's drawing or design in the construction of the Approach to Cross Bay
Parkway Bridge and pleads the defense that the complaint is insufficient in law on the face thereof and
fails to state a claim against defendant on which relief can be granted.

Defendant pointed out that the physical structure such as the bridge approach complained of cannot be made the
subject of copyright, that plaintiff should have sought protection under the Patent law if he did invented such
method.

Issue: WON defendant is liable for copyright infringement for applying the system of traffic separation therein set
forth.

Ruling:

Baker v. Selden, "To give to the author of the book an exclusive property in the art described therein, when
no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the
public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an
art or manufacture must be subjected to the examination of the Patent Office before an exclusive right
therein can be obtained; and it can only be secured by a patent from the government.
In the case at bar plaintiff's copyright of a drawing, showing a novel bridge approach to unsnarl traffic
congestion, does not prevent anyone from using and applying the system of traffic separation therein set
forth. The complaint is dismissed on the merits.
Imperial Homes Corp. V. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc, V.
Maddox
Facts:
The plaintiff-appellant, Imperial Homes Corporation, is a merchant-builder engaged in the
business of designing, constructing and selling residential dwellings. Imperial developed
architectural plans for a residence it named "Chateau". 
In the course of advertising its business, it claimed a copyright right on the floor plan, but no
effort was made to copyright the advertising brochure. Imperial gave this brochure to any
person who expressed an interest in having Imperial build this home for them.
The defendants, Mr. and Mrs. Lamont, became interested in acquiring a home of the Chateau
design. The evidence was conflicting as to whether the Lamonts obtained a copy of this
brochure and as to whether they copied it in developing their own set of drawings for a
duplicative residential dwelling. 
The Lamonts were never shown the complete architectural plans for which a copyright had
been issued and there was no direct or circumstantial evidence that either Mr. or Mrs. Lamont
had access to Imperial's full set of copyrighted plans for the "Chateau" model home. The court
found that they did not copy these plans.
The Lamonts did proceed to develop a set of drawings illustrating the manner of constructing a
residential dwelling, intended to be substantially similar to Imperial's model home which they
had visited and measured. They next proceeded to construct this home for themselves, hiring
their own contracting force and purchasing their own materials. 
After the duplicate home was built, Imperial brought this action against the Lamonts seeking
injunctive relief against further dissemination or use of the allegedly infringing plans, damages,
return of profits and attorneys' fees.
Issue:
1. WON the reproduction of the floor plan from the copyrighted set of architectural
drawings in an advertising brochure waive or abandon the copyright right.
2. WON copying this reproduction constitute an infringement of the copyright right.
Ruling:
1. NO. Under Article I, Section 8, Clause 8 of the Constitution a part of the rights which the
very first sentence of the copyright act confers upon a statutory copyright owner is the
right to make and to publish copies of his protected work. Abandonment can only be
shown by proving the copyright proprietor intended to surrender the rights in a work he
so deliberately perfected. Because in the brochure Imperial expressly claimed that the
floor plan design was the subject of a copyright.
2. That if copyrighted architectural drawings of the originator of such plans are imitated or
transcribed in whole or in part, infringement occurs.
 The exclusive right to copy what is copyrighted belongs to the architect, even though the
plans give him no unique claim on any feature of the structure they detail. If it is
determined upon remand that the Lamonts copied the floor plan set forth in the
promotional booklet distributed by Imperial, then this copying would constitute an
infringement of Imperial's copyright privileges.

The court held that construction of a substantially identical residential dwelling is not prohibited by the
existence of a copyright in the architectural drawings for the original dwelling, but the court held that if the
builders of the substantially identical structure copied the floor plan set forth in a promotional booklet
distributed by the builder of the original, then this copying would constitute infringement of the original
builder's copyright privileges. (Maddox case)

The architect who originates a set of blueprints for a dwelling is as much an author for
copyright purposes as the writer who creates an original novel or the dramatist who pens a
new play. This authorship concept is no more than one facet of the essence of that which
merits copyright protection — originality. However, while such originality is the test for
copyrightability, it does not extend so far as to require that novelty or invention, which is the
sine qua non for patent protection, be present.
Scholtz Homes, Inc, V. Maddox
Facts:
Scholz Homes, Inc., held a copyright on plans for a split-level house which it marketed as its
"Southern Shore" model. Scholz displayed this house at builders' conventions, and publicized it
in a widely-distributed copyrighted booklet entitled "The Famed Scholz Design Collection."
Maddox, who stated by affidavit that he may have seen the Southern Shore model displayed at
a Chicago convention, took a rough sketch of a house similar to the Southern Shore to a
draftsman employed by Boland-Maloney Lumber Company so that he could prepare plans to
be used by Maddox in constructing it. Maddox proceeded with the construction upon receipt
of the Boland-Maloney drawings.
Issue:
WON Maddox is liable for copyright infringement for copying the plan given during the
convention.
Ruling:
The court held that construction of a substantially identical residential dwelling is not prohibited by the
existence of a copyright in the architectural drawings for the original dwelling, but the court held that if the
builders of the substantially identical structure copied the floor plan set forth in a promotional booklet
distributed by the builder of the original, then this copying would constitute infringement of the original
builder's copyright privileges.
 Faberge, Inc. vs. Intermediate Appellate
Court, et al.
Facts:
The Director of Patents authorized herein private respondent Co Beng Kay to register the trademark
"BRUTE" for the briefs manufactured and sold by his Corporation in the domestic market.
Petitioner opposed for their mark have similarities with petitioner’s own symbol. Thereafter, respondent
court, was initially persuaded by petitioner's plea for reversal directed against the permission granted by the
Director of Patents.
Petitioner averred that his trademark, and respondent’s trademark creates confusion to the public, and,
thus, may would either make respondent profit from its brand, or may would destroy petitioner’s brand in
case respondent’s product is not of good quality.
Respondent on the other hand contends that their trademarks don’t create any confusion because they are
not having the same goods, where petitioner’s products are of that shave lotion, shaving cream, deodorant,
talcum powder, and toilet soap. While respondent’s products are briefs.
The lower court affirms on the basis of controlling doctrine. However, the CA reversed the decision of the
CFI and dismissing the complaint file by herein petitioner against private respondent for trade
infringement.

Issue:
WON private respondent should be held liable for trademark infringement, and
that WON the trademarks create confusion to the public.
Ruling:
No.
Paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by
petitioner, the certificate of registration issued by the Director of Patents can confer upon petitioner the
exclusive right to use its own symbol only to those goods specified in the certificate, subject to any
conditions and limitations stated therein.
It is not difficult to discern from the foregoing statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave
lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not ventured
in the production of briefs, an item which is not listed in its certificate of registration, petitioner cannot and
should not be allowed to feign that private respondent had invaded petitioner's exclusive domain. 
The protective mantle of the Trademark Law extends only to the goods used by the first user as specified in
the certificate of registration following the clear message conveyed by section 20.
It would seem that Section 4(d) RA 166 does not require that the goods manufactured by the second user be
related to the goods produced by the senior user while Section 20 limits the exclusive right of the senior
user only to those goods specified in the certificate of registration.
Creser Precision Systems, Inc. v. Court of Appeals
Facts:
Private respondent is a domestic corporation engaged in the manufacture, production, distribution
and sale of military armaments, munitions, airmunitions and other similar materials.

private respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT), covering an aerial fuze which was published in the Bureau of Patent's Official Gazette.

private respondent, through its president, Mr. Gregory Floro, Jr., discovered that petitioner
submitted samples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for
testing. He learned that petitioner was claiming the aforesaid aerial fuze as its own and planning
to bid and manufacture the same commercially without license or authority from private
respondent. To protect its right, private respondent sent a letter to petitioner advising it of its
existing patent and its rights thereunder, warning petitioner of a possible court action and/or
application for injunction, should it proceed with the scheduled testing by the military on
December 7, 1993.

In response, petitioner however file a complaint for injunction and damages arising from the
alleged infringement before the RTC.

Petitioner alleged that he is the first, true and actual inventor of an aerial fuze denominated as
"Fuze, PDR 77 CB4" which it developed as early as December 1981 under the Self-Reliance
Defense Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner began supplying
the AFP with the said aerial fuze; that private respondent's aerial fuze is identical in every respect
to the petitioner's fuze; and that the only difference between the two fuzes are miniscule and
merely cosmetic in nature.

The RTC issued a TRO, thereafter both parties presented their evidence, and were directed both
parties to submit their respective memoranda.

In its memorandum, private respondent alleged that petitioner has no cause of action to file a
complaint for infringement against it since it has no patent for the aerial fuze which it claims to
have invented.

The RTC granted the issuance of the preliminary injunction against private respondent, the MR
was denied by the RTC.

Upon appeal, CA reversed the decision of the RTC, and dismissed the complaint filed by petitioner.

Issue:

WON petitioner can file an action for infringement not as a patentee but as an entity in possession
of a right, title or interest in and to the patented invention.

Ruling:

NO.

RA 165, Sec. 42. Civil action for infringement. - Any patentee, or anyone possessing any right,
title or interest in and to the patented invention, whose rights have been infringed, may bring a
civil action before the proper Court of First Instance (now Regional Trial court), to recover from
the infringer damages sustained by reason of the infringement and to secure an injunction for the
protection of his right.

Under the aforequoted law, only the patentee or his successors-in-interest may file an action for
infringement. The phrase "anyone possessing any right, title or interest in and to the patented
invention" upon which petitioner maintains its present suit, refers only to the patentee's
successors-in-interest, assignees or grantees since actions for infringement of patent may be
brought in the name of the person or persons interested, whether as patentee, assignees, or as
grantees, of the exclusive right.

In short, a person or entity who has not been granted letters patent over an invention and has not
acquired any light or title thereto either as assignee or as licensee, has no cause of action for
infringement because the right to maintain an infringement suit depends on the existence of the
patent.
Bauer & Cie v. O’Donnel
Facts:

Petitioner being the assignees of letters patent of the United States,  covering a certain water
soluble albumenoid known as 'Sanatogen,' and the process of manufacturing the same,
about July, 1907, entered into an agreement with F. W. Hehmeyer, doing business in the
city of New York, under the trade name of the Bauer Chemical Company, whereby
Hehmeyer became and has since been the sole agent and licensee for the sale of said
product in the United States, the agreement contemplating that Hehmeyer should have
power to fix the price of sale to wholesalers or distributors and to retailers, and to the public.
The agreement further contemplated that said product should be furnished Hehmeyer at
manufacturing cost, the net profits obtained by him to be shared equally by the parties to
the agreement. Since April, 1910, this product has been uniformly sold and supplied to the
trade and to the public by the appellants and their licensees in sealed packages bearing the
name 'Sanatogen,'.
The appellee is the proprietor of a retail drug store. He purchased of the Bauer Chemical
Company for his retail trade original packages of said Sanatogen bearing the aforesaid
notice. These packages he sold at retail at less than $1 and, persisting in such sales,
appellants, in March, 1911, severed relations with him.

Thereupon appellee, without the license or consent of the appellants, purchased from
jobbers within the District of Columbia, said jobbers having purchased from appellants,
original packages of said product, bearing the aforesaid notice, sold said packages at retail
at less than the price fixed in said notice, and avers that he will continue such sales.'

Issue: WON may a patentee, by notice, limit the price at which future retail sales of the patented article may be
made, such article being in the hands of a retailer by purchase from a jobber who has paid to the agent of the
patentee the full price asked for the article sold.

Ruling:

A patentee may not by notice limit the price at which future retail sales of the patented article may
be made, such article being in the hands of a retailer by purchase from a jobber who has paid to
the agent of the patentee the full price asked for the article sold. Henry v. Dick Co., 224 U. S. 1,
distinguished.

The patent law differs from the copyright law in that it not only confers the right to make and sell,
but also the exclusive right to use the subject matter of the patent.

The patentee has argued "that the notice in this case deals with the use of the invention, because
the notice states that the package is licensed 'for sale and use at a price not less than $1,' [and]
that a purchase is an acceptance of the conditions. . ." But, the Court insisted:

It is a perversion of terms to call the transaction in any sense a license to use the invention. The
jobber from whom the appellee [O'Donnell] purchased had previously bought, at a price which
must be deemed to have been satisfactory, the packages of Sanatogen afterwards sold to the
appellee. The patentee had no interest in the proceeds of the subsequent sales, no right to any
royalty thereon, or to participation in the profits thereof. The packages were sold with as full and
complete title as any article could have when sold in the open market, excepting only the attempt
to limit the sale or use when sold for not less than $1. In other words, the title transferred was
full and complete, with an attempt to reserve the right to fix the price at which subsequent sales
could be made. . . There was no transfer of a limited right to use this invention, and to call the
sale a license to use is a mere play upon words.

differences between the copyright statute and the patent statute,

copyright statute can limit the price of copyrighted books for sale at retail by a notice on each book, fixing
the price at one dollar and stating that no dealer was licensed to sell it for less, and that a sale at a less
price would be treated as an infringement of the copyright.
Patent statute The right to vend conferred by the patent law has been exercised, and the added restriction
is beyond the protection and purpose of the act. This being so, the case is brought within that line of cases
in which this Court, from the beginning, has held that a patentee who has parted with a patented machine
by passing title to a purchaser has placed the article beyond the limits of the monopoly secured by the
patent act.

Canon Kabushiki Kaisha v. Court of Appeals

Facts:

FACTS: NSR Rubber Corp., filed an application for registration of the mark CANON for sandals
(Class 25) in the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). The
application was opposed by Canon Kabushiki Kaisha (CKK), a foreign corp. under the laws of
Japan.

NSR was declared in default upon motion of CKK. CKK presented as its evidence certificates of
registration for the mark CANON in various countries and in the Philippines covering goods
belonging to Class 2 (paints, chemical products, toner and dyestuff).

Ruling of the BPTTT: denied the opposition of CKK and granted the application of NSR Rubber
Corp.

CA: affirmed

Both lower courts ruled that there is a dissimilarity between the products of CKK and NSR, i.e.
CKK: paints, chemical products, toner and dyestuff; while NSR: sandals

ISSUE/S:

1. WON CKK trademark is violated. NO.

2. WON CKK can exclusively use ‘CANON’ as protected by the Paris Convention. NO.

Ruling:

Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as
mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the
other party does not deal, the use of the same trademark on the latter’s product cannot be validly objected to.

The certificates of registration for the trademark CANON in other countries and in the Philippines clearly showed
that said certificates cover goods belonging to class 2 (paints, chemical products, toner, dyestuff). As such, NSR
t\ can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of
difference between the paints, chemical products, toner, and dyestuff and sandals.

The certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to
those goods specified in the certificate, subject to the conditions and limitations stated therein. Thus, the
exclusive right of CKK to use the trademark CANON is limited to the products covered by its certificate of
registration.
The likelihood of confusion of goods or business is a relative concept, to be determined only according to the
particular, and sometimes peculiar, circumstances of each case. Indeed, in trademark law cases, even more
than in other litigation, precedent must be studied in the light of the facts of the particular case.

Here, the products involved are so unrelated that the public will not be misled that there is the slightest nexus
between petitioner and the goods of private respondent.

Goods are related when they belong to the same class or have the same descriptive properties; when they
possess the same physical attributes or essential characteristics with reference to their form, composition,
texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores.

Here, the paints, chemical products, toner and dyestuff of CKK that carry the trademark CANON are unrelated to
sandals, the product of NSR. The two classes of products in this case flow through different trade channels. The
products of CKK are sold through special chemical stores or distributors while the products of NSR are sold in
grocery stores, sari-sari stores and department stores.

A tradename refers to the business and its goodwill while a trademark refers to the goods.

Regarding the applicability of Article 8 of the Paris Convention (“A tradename shall be protected in all the
countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.),
there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through
the use of that name as a trademark by a local entity. However, the then Minister of Trade and Industry, the Hon.
Roberto V. Ongpin, issued a memorandum dated 25 October 1983 to the Director of Patents, a set of guidelines
in the implementation of Article 6bis (sic) of the Treaty of Paris.

These conditions are:

1.) the mark must be internationally known;

2.) the subject of the right must be a trademark, not a patent or copyright or anything else;

3.) the mark must be for use in the same or similar kinds of goods; and

4.) the person claiming must be the owner of the mark

CKK failed to comply with the third requirement of the said memorandum. CKK is using the mark “CANON” for
products belonging to class 2 (paints, chemical products) while NSR is using the same mark for sandals (class
25).

The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name, symbol,
emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify
his goods and distinguish them for those manufactured, sold or dealt in by others." Tradename is defined by the
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same law as including "individual names and surnames, firm names, tradenames, devices or words used by
manufacturers, industrialists, merchants, agriculturists, and others to identify their business, vocations, or
occupations; the names or titles lawfully adopted and used by natural or juridical persons, unions, and any
manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or
commerce." Simply put, a trade name refers to the business and its goodwill; a trademark refers to the goods.
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