Kagandahan Corporation

Kagandahan Corporation (KC) has been manufacturing medicated facial creams
with the brand name “Kutis” since 2010. The facial creams are contained in pink,
oval-shaped containers. However, KC did not secure a trademark registration for
the brand name and the packaging. Later, upon discovering that there is no
existing trademark registration in favor of KC, Bighani Corporation (BC)
manufactured its own facial creams using different ingredients and procedure but
under the trademark “Kutis” and sold the facial creams in pink, oval-shaped
containers similar to those sold by KC. However, the label of BC specifically
indicates that it is manufactured by BC. Is BC liable for Unfair Competition?
Discuss your answer.
13.Atty. Matalas prepared a deed of sale which contains all the elements necessary
to perfect the contract, particularly a statement of the agreement to transfer in an
absolute manner the parcel of land that was specifically described as well as the
price certain. Impressed by his own draft deed of sale, Atty. Matalas wants to use
the deed that he prepared as a template and to secure a copyright registration for
the same. Can Atty. Matalas secure a copyright registration for the template?
Discuss your answer.
14.Julio secured a copyright registration for a drawing of a light box. Julio used the
drawing for his advertisements indicating the new internal electronic design
features of the light box. Ten years after the registration of the copyright, Julian
decided to manufacture and sell a light box with the same internal electric design
features as the light box drawing created by Julio. However, the physical
appearance of the light box manufactured by Julian is different. Julio objected to
the manufacture by Julian of the light box on the ground that he (Julio) is the
inventor of the light box design. Is the objection of Julio valid? Discuss.
[This item has two questions.] Zui Cheneris Corp. is a pharmaceutical company operating in the
Philippines since 1999. One of its products is a drug called carbamazepine under the brand name
“CHENAPS”, which is an anticonvulsant used to control all types of seizure disorders of varied
causes like epilepsy.
Nutty Pharma, also a pharmaceutical company in the Philippines, sells citicoline under the mark
“CHENAPSE”, which is indicated for the treatment of cerebrovascular disease or stroke.
“CHENAPSE” was registered as a trademark by Nutty Pharma with the Intellectual Property Office of
the Philippines (IPO) on September 24, 2017.
On November 29, 2017, Nutty Pharma filed with the Regional Trial Court (RTC) a Complaint against
Zui Cheneris for Injunction, Trademark Infringement, Damages and Destruction with Prayer for
Temporary Restraining Order and/or Preliminary Injunction, alleging that Zui Cheneris’ “CHENAPS”
is confusingly similar to its registered trademark “CHENAPSE” and the resulting likelihood of
confusion is dangerous because the marks cover medical drugs intended for different types of
illnesses.
Zui Cheneris, in its Answer, countered that: (i) it has been selling carbamazepine under the brand
name “CHENAPS” since 2004; (ii) it was impossible for Nutty Pharma not to have known the
existence of “CHENAPS” before the latter's registration of “CHENAPSE” because Nutty Pharma had
promoted its products in the same publications where Zui Cheneris had advertised “CHENAPS”; (iii)
despite its knowledge of prior use by Zui Cheneris of “CHENAPS”, Nutty Pharma had fraudulently
appropriated the “CHENAPSE” mark by registering the same with the IPO; and, (iv) as the prior
user, Zui Cheneris is the owner of “CHENAPS” and the continued use by Nutty Pharma of
“CHENAPSE” will cause it grave and irreparable damage. Thus, Zui Cheneris prayed for the
cancellation of the trademark registration of Nutty Pharma’s “CHENAPSE”.
(a) As the RTC judge, will you enjoin Zui Cheneris from further using the mark
“CHENAPS”? Explain briefly.
(b) Is Zui Cheneris’ prayer for cancellation of Nutty Pharma’s trademark registration tenable?
Explain briefly.
(5 points)
The question is lifted from the actual trademark infringement case filed by Zuneca
Pharmaceutical Inc. against Natrapharm Inc. (GR 211850, September 08, 2020).
The IP Code conveys the rule that ownership of a mark is acquired through registration with the
exception created by Section 159.1 on prior use.
Prior users in good faith are protected in the sense that they will not be made liable for trademark
infringement even if they are using a mark that was subsequently registered by another person.
Even if a mark was previously used and not abandoned by another person, a good faith applicant
may still register the same and thus become the owner thereof, and the prior user cannot ask for
the cancellation of the latter’s registration.
A prior user in good faith may continue to use its mark even after the registration of the mark by
the first-to-file registrant in good faith, subject to the condition that any transfer or assignment of
the mark by the prior user in good faith should be made together with the enterprise or business
or with that part of his enterprise or business in which the mark is used.
While the IP Code mandates that the applicant or registrant of a mark must prove continued
actual use of such mark, this does not imply that actual use is still a recognized mode of
acquisition of ownership. Rather, this requirement is put in place in order for the registered
owner of a mark to maintain his ownership.
While Natrapharm is the owner of the “ZYNAPSE” mark, this does not, however, automatically
mean that its complaint against Zuneca’s “ZYNAPS” is with merit.
Since Natrapharm was not shown to have been in bad faith, it was considered to have acquired
all the rights of a trademark owner upon the registration of the “ZYNAPSE” mark.
The Supreme Court found that Zuneca was exempted from liability for trademark infringement
for being a prior user in good faith.

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Kagandahan Corporation (KC) has been manufacturing medicated facial creams

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