1. Sasot vs. People GR No.

143193 (June 29,2005)

FACTS:

The National Bureau of Investigation conducted an investigation pursuant to a

complaint filed by the NBA Properties, Inc. against petitioners for possible violation of Article
189 of the Revised Penal Code on unfair competition. Based on the report from the NBI,
they have conducted two investigations due to the petitioners alleged participation in the
manufacture, printing, sale and distribution of counterfeit NBA garment products, which led
to the search and seizure of several items from petitioners establishment.

Before arraignment, petitioners filed a Motion to Quash on the ground that, the facts
charged do not constitute an offense and that the court did not have jurisdiction over the
offense charged or the person of the accused. Petitioners contend that since the
complainant is a foreign corporation not doing business in the Philippines, and cannot be
protected by Philippine patent laws since it is not a registered patentee. Petitioners aver that
they have been using the business name ALLANDALE SPORTSLINE, INC. since 1972, and
their designs are original and do not appear to be similar to complainants, and they do not
use complainants logo or design.

In the Comment/Opposition filed by the trial prosecutor of Manila RTC Branch 1, it

stated that the State is entitled to prosecute the offense even without the participation of the
private offended party, as the crime charged is a public crime, as provided for in the
Revised Penal Code.

The trial court sustained the prosecutions arguments and denied petitioners motion
to quash which lead to the filing of a special civil action for Certiorari with the CA. According
to the CA, the petition is not the proper remedy in assailing the denial of the quashal
motion, and that the grounds raised therein should be raised during the trial of the case on
the merits.

Petitioners sought for the reconsideration of the Decision, but was denied by the CA,
hence this petition.

ISSUE: Whether or not a foreign corporation not doing business in the Philippines and not
licensed to do business in the Philippines have the right to sue for unfair competition.

HELD: The petition must be denied.

 While petitioners raise in their motion to quash the grounds that the facts charged do
not constitute an offense and that the trial court has no jurisdiction over the offense charged
or the person of the accused, their arguments focused on an alleged defect in the complaint
filed before the fiscal, complainants capacity to sue and petitioners exculpatory defenses
against the crime of unfair competition.

More importantly, the crime of Unfair Competition punishable under Article 189 of the
Revised Penal Code is a public crime. It is essentially an act against the State and it is the
latter which principally stands as the injured party. The complainants capacity to sue in
such case becomes immaterial.

2. PEARL & DEAN (PHIL.), INC. vs SHOEMART, INC GR No. 148222 (August 15,2003)
Posted on May 12, 2017
FACTS:

Pearl and Dean is a corporation engaged in the manufacture of advertising display

units referred to as light boxes and these light boxes were marketed under the trademark
Poster Ads. Pearl and Dean entered into a contract with Shoemart, Inc. for the lease and
installation of the light boxes in SM North Edsa. However, due to construction constraints,
Shoemart, Inc offered as an alternative SM Makati and SM Cubao.

After Pearl and Deans contract was rescinded, exact copies of its light boxes were
installed in various SM malls, fabricated by Metro Industrial Services and later by EYD
Rainbow Advertising Corporation. Pearl and Dean sent a letter to Shoemart and its sister
company, North Edsa Marketing to cease using the light boxes and to remove them from
the malls, and demanded the discontinued used of the trademark Poster Ads.

Unsatisfied with the compliance of its demands, Pearl and Dean sued Shoemart
which was ruled by the trial court in their favor. On appeal, however, the Court of Appeals
reversed the trial courts decision.

ISSUE:

Whether Pearl and Deans copyright registration for its light boxes and the trademark
registration of Poster Ads preclude Shoemart and North Edsa Marketing from using the
same.

HELD:
 No, Pearl and Dean secured its copyright under the classification class o work. This
being so, its protection extended only to the technical drawings and not to the light box
itself. Pearl and Dean cannot exclude others from the manufacture, sale and commercial
use over the light boxes on the sole basis of its copyright, certificated over the technical
drawings. It cannot be the intention of the law that the right of exclusivity would be granted
for a longer time through the simplified procedure of copyright registration with the National
Library, without the rigor of defending the patentability of its invention before the IPO and
the public.

On the other hand, there has been no evidence that Pearl and Deans use of Poster
Ads was distinctive or well known. Poster Ads was too generic a name to identify it to a
specific company or entity. Poster Ads was generic and incapable of being used as a
trademark because it was used in the field of poster advertising, the very business engaged
by Pearl and Dean. Furthermore, Pearl and Deans exclusive right to the use of Poster
Ads is limited to what is written in its certificate of registration. Shoemart cannot be held
liable for the infringement of the trademark.

3. Elidad C. Kho vs. Court of Appeals GR No. 115758 (March 19, 2002)
Posted on May 12, 2017
FACTS:

Petitioners allegations are that they are doing business under the name and style of KEC
Cosmetics Laboratory, registered owner of Chin Chun Su and oval facial cream
container/case, and alleges that she also has patent rights on Chin Chun Su and Device
and Chin Chun Su Medicated Cream after purchasing the same from Quintin Cheng, the
registered owner thereof in the supplemental register of the Philippine Patent Office and that
Summerville advertised and sold petitioners cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses, thereby misleading the public, and
resulting in the decline in the petitioners business sales and income; and, that the
respondents should be enjoined from allegedly infringing on the copyrights and patents of
the petitioner.

The respondents, on the other hand, alleged as their defense that (1) Summerville is
the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi factory of Taiwan, (2) that the said Taiwanese manufacturing
company authorized Summerville to register its trade name Chin Chun Cu Medicated
Cream with the Philippine Patent office and Other appropriate governmental agencies; (3)
that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through
misrepresentation and falsification; and, (4) that the authority of Quintin Cheng, assignee of
the patent registration certificate, to distribute and market Chin Chun Su products in the
Philippines had already terminated by the said Taiwanese manufacturing company.

ISSUE:

Whether or not Kho has the sole right using the package of Chin Chun Su products.

HELD:

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 in as much 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 petitioners
copyright and patent registration of the name and container would not guarantee her the
right to 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.

4. Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17
November 2010

Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is

marketed under the brand name Unasyn. Sometime in January and February 2003, Pfizer
discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to
several hospitals without the Pfizers consent. Pfizer then demanded that the hospitals
cease and desist from accepting such bids. Pfizer also demanded that Pharmawealth
immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the
hospitals ignored the demands.

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction
and forfeiture of the infringing products. A preliminary injunction effective for 90 days was
granted by the IPOs Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for
extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the
Court of Appeals (CA) assailing the denial.
While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati
(RTC) a complaint for infringement and unfair competition, with a prayer for injunction. The
RTC issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum
shopping. Nevertheless, the CA issued a temporary restraining order. Pharmawealth again
filed a motion to dismiss, alleging that the patent, the main basis of the case, had already
lapsed, thus making the case moot, and that the CA had no jurisdiction to review the order
of the IPO-BLA because this was granted to the Director General. The CA denied all the
motions. Pharmawealth filed a petition for review on Certiorari with the Supreme Court.

Issues:

a) Can an injunctive relief be issued based on an action of patent infringement when the
patent allegedly infringed has already lapsed?
b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the
Intellectual Property Office?
c) Is there forum shopping when a party files two actions with two seemingly different
causes of action and yet pray for the same relief?

Held:

a) No. The provision of R.A. 165, from which the Pfizers patent was based, clearly states
that "[the] patentee shall have the exclusive right to make, use and sell the patented
machine, article or product, and to use the patented process for the purpose of industry or
commerce, throughout the territory of the Philippines for the term of the patent; and such
making, using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent."

Clearly, the patentees exclusive rights exist only during the term of the patent. Since the
patent was registered on 16 July 1987, it expired, in accordance with the provisions of R.A.
165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed
the exclusive right to make, use, and sell the products covered by their patent. The CA was
wrong in issuing a temporary restraining order after the cut-off date.

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction
over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and
not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy
regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply
the Rules and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is
the proper remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

c) Yes. Forum shopping is defined as the act of a party against whom an adverse judgment
has been rendered in one forum, of seeking another (and possibly favorable) opinion in
another forum (other than by appeal or the special civil action of certiorari), or the institution
of two (2) or more actions or proceedings grounded on the same cause on the supposition
that one or the other court would make a favorable disposition.

The elements of forum shopping are: (a) identity of parties, or at least such parties that
represent the same interests in both actions; (b) identity of rights asserted and reliefs
prayed for, the reliefs being founded on the same facts; (c) identity of the two preceding
particulars, such that any judgment rendered in the other action will, regardless of which
party is successful, amount to res judicata in the action under consideration. This instance
meets these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the rights
allegedly violated and the acts allegedly violative of such rights are identical, regardless of
whether the patents on which the complaints were based are different. In both cases, the
ultimate objective of Pfizer was to ask for damages and to permanently prevent
Pharmawealth from selling the contested products. Relevantly, the Supreme Court has
decided that the filing of two actions with the same objective, as in this instance, constitutes
forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a
decision in one case will necessarily amount to res judicata in the other action.

5. In-N-Out Burger, Inc. vs. Sehwani Inc., et. Al

G.R. 179127 Decenver 24, 2008

Facts:
Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of
California. It is a signatory to the Convention of Paris on Protection of Industrial Property
and the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has never
engaged in business in the Philippines.

Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in
the Philippines. Sometime in 1991, Sehwani filed with the BPTTT an application for the
registration of the mark IN N OUT (the inside of the letter O formed like a star). Its
application was approved and a certificate of registration was issued in its name on 1993. In
2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing Agreement,
wherein the former entitled the latter to use its registered mark, IN N OUT.

Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the
Bureau of Trademarks for the IN-N-OUT and IN-N-OUT Burger & Arrow Design. In 2000,
In-N-Out Burger found out that Sehwani, Incorporated had already obtained Trademark
Registration for the mark IN N OUT (the inside of the letter O formed like a star). Also in
2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to cease and desist
from claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark
registration. Sehwani Inc. did not accede to In-N-Out Burgers demand but it expressed its
willingness to surrender its registration for a consideration.

In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint
against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and cancellation of
trademark registration.

Issues:
Whether or not the Intellectual Property Office (an administrative body) have
jurisdiction of cases involving provisions of the IPC (e.g. unfair competition).[1]
Whether or not there was unfair competition.
Held:
FIRST ISSUE: Yes, the IPO (an administrative body) has jurisdiction in cases involving
provisions of the IPC (e.g. unfair competition) due to the following reasons:
Section 10 of the Intellectual Property Code specifically identifies the functions
of the Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.The Bureau of Legal Affairs shall have the
following functions:
10.1 Hear and decide opposition to the application for registration of marks; cancellation
of trademarks; subject to the provisions of Section 64, cancellation of patents and utility
models, and industrial designs; and petitions for compulsory licensing of patents;
10.2 (a) Exercise original jurisdiction in administrative complaints for violations of
laws involving intellectual property rights; Provided, That its jurisdiction is limited to
complaints where the total damages claimed are not less than Two hundred
thousand pesos (P200,000): Provided, futher, That availment of the provisional
remedies may be granted in accordance with the Rules of Court. Xxx
Xxx
(vi) The cancellation of any permit, license, authority, or registration which may have
been granted by the Office, or the suspension of the validity thereof for such period of time
as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year;
Xxx

(viii) The assessment of damages;

Unquestionably, petitioners complaint, which seeks the cancellation of the disputed
mark in the name of respondent Sehwani, Incorporated, and damages for violation of
petitioners intellectual property rights, falls within the jurisdiction of the IPO Director
of Legal Affairs.

While Section 163 thereof vests in civil courts jurisdiction over cases of unfair
competition, nothing in the said section states that the regular courts have
sole jurisdiction over unfair competition cases, to the exclusion of
administrative bodies.
Sections 160 and 170, which are also found under Part III of the Intellectual
Property Code, recognize the concurrent jurisdiction of civil courts and the
IPO over unfair competition cases.
These two provisions read:

Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark

Enforcement Action. Any foreign national or juridical person who meets the requirements
of Section 3 of this Act and does not engage in business in the Philippines may bring a civil
or administrative action hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description, whether or not it is licensed
to do business in the Philippines under existing laws.
Section 170. Penalties. Independent of the civil and administrative sanctions imposed by
law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine
ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000),
shall be imposed on any person who is found guilty of committing any of the acts mentioned
in Section 155, Section168, and Subsection169.1.
Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction
to decide the petitioners administrative case against respondents and the IPO
Director General had exclusive jurisdiction over the appeal of the judgment of the IPO
Director of Legal Affairs.

SECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita Frites
were not using their registered trademark but that of In-n-Out Burger. Sehwani and Benita
Frites are also giving their products the general appearance that would likely influence the
purchasers to believe that their products are that of In-N-Out Burger. The intention to
deceive may be inferred from the similarity of the goods as packed and offered for sale,
and, thus, an action will lie to restrain unfair competition. The respondents frauduulent
intention to deceive purchasers is also apparent in their use of the In-N-Out Burger in
business signages.
The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to deceive the public and defraud a
competitor. The confusing similarity may or may not result from similarity in the marks, but
may result from other external factors in the packaging or presentation of the goods. The
intent to deceive and defraud may be inferred from the similarity of the appearance of the
goods as offered for sale to the public. Actual fraudulent intent need not be shown.

6. ROMA DRUG v. RTC. G.R. No. 149907. April 16, 2009

FACTS:

Roma Drug was raided by the NBI and BFAD and seized several important medicines. It
appears that Roma Drug is one of six drug stores which were raided on or around the same
time upon the request of SmithKline which was the duly registered corporation to distribute
such medicines. The medicines of Roma Drug was purchased directly from abroad and not
through SmithKline.

During preliminary investigation, Rodriguez challenged the constitutionality of the law

on Special Law on Counterfeit Drugs (SLCD) regarding the distribution of their medicine that
were considered counterfeit although they only bought it directly and not from SmithKline.

ISSUE: Whether the contention of Roma Drug is correct.

RULING:

Yes. Section 7 of Rep. Act No. 9502 unequivocally grants third persons the right to import
drugs or medicines whose patent were registered in the Philippines by the owner of the
product. The unqualified right of private third parties such as petitioner to import or possess
unregistered imported drugs in the Philippines is further confirmed by the Implementing
Rules to Republic Act No. 9502 promulgated on November 4, 2008.

It may be that Rep. Act No. 9502 did not expressly repeal any provision of the SLCD.
However, it is clear that the SLCOs classification of unregistered imported drugs as
counterfeit drugs, and of corresponding criminal penalties therefore are irreconcilably in
the imposition conflict with Rep. Act No. 9502 since the latter indubitably grants private third
persons the unqualified right to import or otherwise use such drugs. Where a statute of later
date, such as Rep. Act No. 9502, clearly reveals an intention on the part of the legislature to
abrogate a prior act on the subject that intention must be given effect.

The prosecution of petitioner is no longer warranted.

7. Smith Kline Beckman Corporation vs. The Hon. Court of Appeals, et al.
G.R. No. 126627, 14 August 2003
Facts:
Petitioner Smith Kline Beckman is an American corporation licensed to do business in the
Philippines. In1976 it filed with the Philippine Patent Office a patent application
over methyl 5 propylthio-2-benzimidazolecarbamate, a chemical compound that
fought infections caused by gastrointestinal parasites in farm and petanimals. In
1981 the PPO issued Letters Patent No. 14561 for the said invention for a term of 17
years.Private respondent Tryco Pharma is a domestic corporation that dealt in veterinary
products. It manufactured andsold Impregon, a drug which fought gastrointestinal parasites
in farm animals, and which contained the compoundAlbendazole as active
ingredient.Claiming that Letters Patent No. 14561 covered the substance Albendazole,
Smith Kline filed before the CaloocanCity Regional Trial Court a complaint against Tyco
Pharma for patent infringement, and for unfair competitionunder Article 189 of the Revised
Penal Code and Section 29 of the Trademark Law.In its Decision the RTC dismissed Smith
Klines complaint, and ordered the cancellation of Letters Patent No.14561 for being null
and void. Smith Kline appealed to the Court of Appeals.The CA affirmed that Tyco Pharma
was not liable for patent infringement, but reversed the RTCs finding thatLetters Patent No.
14561 was void. Smith Kline filed a petition for review with the Supreme Court.

Issue:

Whether Tyco Pharma committed patent infringement to the prejudice of Smith Kline.

Held:
No, Tyco Pharma did not
1.The claims of Letters Patent No. 14561 do not mention the compound Albendazole. All
that the claimsdisclose are: the covered invention, i.e., the compound methyl 5 propylthio-2-
benzimidazole carbamate; thecompounds ability to destroy parasites
without harming the host animals; and the patented methods,compositions or
preparations involving the compound to maximize its efficacy against certain
kinds of parasites infecting specified animals.When the language of its claims is
clear and distinct, the patentee is bound thereby and may not claimanything
beyond them. The courts are similarly bound: they may not add to or detract from the
claims mattersnot expressed or necessarily implied, nor may they enlarge the
patent beyond the scope of that which theinventor claimed and the patent office
allowed, even if the patentee may have been entitled to something morethan the words it
had chosen would include.The mere absence of the word Albendazole in the patent is not
determinative of Albendazoles non-inclusionin its claims. While Albendazole is admittedly a
chemical compound that exists by a name different from thatcovered in the patent, the
language of the patent fails to yield anything at all regarding Albendazole.
Noextrinsic evidence had been adduced to prove that Albendazole inheres in Smith Kleins
patent in spite of itsomission therefrom, or that the meaning of the claims of the patent
embraces Albendazole.
2.
Smith Klein has not met the requirements for the application of the doctrine
of equivalents.The doctrine of equivalents provides that an infringement also takes place
when a device appropriates a prior invention by incorporating its innovative concept and,
although with some modification and change, performssubstantially the same function in
substantially the same way to achieve substantially the same result. Thedoctrine thus
requires satisfaction of the function-means-and-result test, the patentee having
the burden toshow that all three components of such equivalency test are met.While both
compounds have the effect of neutralizing parasites in animals, identity of result does not
amountto infringement of patent unless Albendazole operates in substantially the same way
or by substantially thesame means as the patented compound, even though it
performs the same function and achieves the sameresult. In other words, the
principle or mode of operation must be the same or substantially the same.Apart from the
fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-
benzimidazolecarbamate, nothing more is asserted and accordingly substantiated
regarding the method or means by
whichA l b e nd a z o l e w e e ds o ut p a r a s it e s i n a n im a ls , t h us g iv i ng n o i nf o r m
a t io n o n w h et h er t h a t m et h o d is substantially the same as the manner by which
Smith Kleins compound works.