Rulings in Intellectual Property Laws

RULINGS OF THE CASES IN INTELLECTUAL PROPERTY

LAWS
Prepared by Glenn Rey Anino
University of Cebu

TAÑADA v. ANGARA, G.R. No. 118295. May 2, 1997; 272 SCRA

 Issue: WON the General Provisions and Basic Principles of the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) intrudes on the power of theSupreme
Court to promulgate rules concerning pleading, practice and procedures.
 Suffice it to say that the reciprocity clause more than justifies such intrusion, if any
actually exists. In the area of trade related aspects of intellectual property rights (TRIPS,
for brevity): Each Member shall accord to the nationals of other Members treatment no
less favorable than that it accords to its own nationals with regard to the protection of
intellectual property:
 a WTO Member is required to provide a rule of disputable (not the words "in the absence
of proof to the contrary") presumption that a product shown to be identical to one
produced with the use of a patented process shall be deemed to have been obtained by
the (illegal) use of the said patented process, (1) where such product obtained by the
patented product is new, or (2) where there is "substantial likelihood “that the identical
product was made with the use of the said patented process but the owner of the patent
could not determine the exact process used in obtaining such identical product. Hence,
the "burden of proof" contemplated by Article 34 should actually be understood as the
duty of the alleged patent infringer to overthrow such presumption. Such burden, properly
understood, actually refers to the "burden of evidence" (burden of going forward) placed
on the producer of the identical (or fake)product to show that his product was produced
without the use of the patented process. The foregoing notwithstanding, the patent owner
still has the "burden of proof" since, regardless of the presumption provided under
paragraph 1 of Article 34, such owner still has to introduce evidence of the existence of
the alleged identical product, the fact that it is "identical" to the genuine one produced by
the patented process and the fact of "newness" of the genuine product or the fact of
"substantial likelihood" that the identical product was made by the patented process.
Moreover, it should be noted that the requirement of Article 34 to provide a disputable
presumption applies only if (1) the product obtained by the patented process in NEW or
(2) there is a substantial likelihood that the identical product was made by the process
and the process owner has not been able through reasonable effort to determine the
process used. Where either of these two provisos does not obtain, members shall be free
to determine the appropriate method of implementing the provisions of TRIPS within their
own internal systems and processes.
 While the Constitution indeed mandates a bias in favor of Filipino goods, services, labor and
enterprises, at the same time, it recognizes the need for business exchange with the rest
of the world on the bases of equality and reciprocity and limits protection of Filipino
enterprises only against foreign competition and trade practices that are unfair. In other
words, the Constitution did not intend to pursue an isolationist policy. It did not shut out
 foreign investments, goods and services in the development of the Philippine
economy. While the Constitution does not encourage the unlimited entry of foreign
goods, services and investments into the country, it does not prohibit them either. In fact,
it allows an exchange on the basis of equality and reciprocity, frowning only on foreign
competition that is unfair.
 There is hardly therefore any basis for the statement that under the WTO, local industries
and enterprises will all be wiped out and that Filipinos will be deprived of control of the
economy. Quite the contrary, the weaker situations of developing nations like the
Philippines have been taken into account; thus, there would be no basis to say that in
joining the WTO, the respondents have gravely abused their discretion. True, they have
made a bold decision to steer the ship of state into the yet uncharted sea of economic
liberalization. But such decision cannot be set aside on the ground of grave abuse of
discretion, simply because we disagree with it or simply because we believe only in other
economic policies.
 Aside from envisioning a trade policy based on “equality and reciprocity,” the fundamental
law encourages industries that are “competitive in both domestic and foreign markets,”
thereby demonstrating a clear policy against a sheltered domestic trade environment, but
one in favor of the gradual development of robust industries that can compete with the
best in the foreign markets. Indeed, Filipino managers and Filipino enterprises have
shown capability and tenacity to compete internationally. And given a free trade
environment, Filipino entrepreneurs and managers in Hongkong have demonstrated the
Filipino capacity to grow and to prosper against the best offered under a policy of laissez
faire.
 Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles
of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
intrudes on the power of the Supreme Court to promulgate rules concerning pleading,
practice and procedures.xxx By and large, the arguments adduced in connection with our
disposition of the third issue -- derogation of legislative power - will apply to this fourth
issue also. Suffice it to say that the reciprocity clause more than justifies such intrusion,
if any actually exists. Besides, Article 34 does not contain an unreasonable burden,
consistent as it is with due process and the concept of adversarial dispute settlement
inherent in our judicial system. So too, since the Philippine is a signatory to most
international conventions on patents, trademarks and copyrights, the adjustment in
legislation and rules of procedure will not be substantial
 Hence, the “burden of proof” contemplated by Article 34 should actually be understood as
the duty of the alleged patent infringer to overthrow such presumption. Such burden,
properly understood, actually refers to the “burden of evidence” (burden of going forward)
placed on the producer of the identical (or fake) product to show that his product was
produced without the use of the patented process. The foregoing notwithstanding, the
patent owner still has the “burden of proof” since, regardless of the presumption provided
under paragraph 1 of Article 34, such owner still has to introduce evidence of the
existence of the alleged identical product, the fact that it is “identical” to the genuine one
produced by the patented process and the fact of “newness” of the genuine product or
the fact of “substantial likelihood” that the identical product was made by the patented
process.

MIRPURI vs. COURT OF APPEALS; 318 SCRA

 Definition of Trademark: This definition has been simplified in R.A. No. 8293, the Intellectual
Property Code of the Philippines, which defines a "trademark" as "any visible sign capable
of distinguishing goods." In Philippine jurisprudence, the function of a trademark is to point
out distinctly the origin or ownership of the goods to which it is affixed; to secure to him,
who has been instrumental in bringing into the market a superior article of merchandise,
the fruit of his industry and skill; to assure the public that they are procuring the genuine
article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product
 THREE DISTINCT FUNCTIONS OF TRADEMARKS: Modern authorities on trademark law
view trademarks as performing three distinct functions: (1) they indicate origin or
ownership of the articles to which they are attached; (2) theyguarantee that those articles
come up to a certain standard of quality; and (3) they advertise the articles they
symbolize.
 Today, the trademark is not merely a symbol of origin and goodwill; it is often the most
effective agent for the actual creation and protection of goodwill. It imprints upon the
public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for
further satisfaction. In other words, the mark actually sells the goods. The mark has
become the "silent salesman," the conduit through which direct contact between the
trademark owner and the consumer is assured. It has invaded popular culture in ways
never anticipated that it has become a more convincing selling point than even the quality
of the article to which it refers
 The Convention of Paris for the Protection of Industrial Property, otherwise known as the
Paris Convention, is a multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and at the same time aims to
repress unfair competition
 In short, foreign nationals are to be given the same treatment in each of the member
countries as that country makes available to its own citizens. Nationals of the various
member nations are thus assured of a certain minimum of international protection of their
industrial property.
 Article 6bis governs protection of well-known trademarks. Under the first paragraph, each
country of the Union bound itself to undertake to refuse or cancel the registration, and
prohibit the use of a trademark which is a reproduction, imitation or translation, or any
essential part of which trademark constitutes a reproduction, liable to create confusion,
of a mark considered by the competent authority of the country where protection is sought,
to be well-known in the country as being already the mark of a person entitled to the
benefits of the Convention, and used for identical or similar goods.
 Article 6bis of the Paris Convention is a self-executing provision and does not require
legislative enactment to give effect in the member country.
 The essential requirement under Article 6bis is that the trademark to be protected must be
"well-known" in the country where protection is sought. The power to determine whether
a trademark is well-known lies in the "competent authority of the country of registration or
use." This competent authority would be either the registering authority if it has the power
to decide this, or the courts of the country in question if the issue comes before a court.
 Intellectual and industrial property rights cases are not simple property
cases. Trademarks deal with the psychological function of symbols and the effect of
 these symbols on the public at large. Trademarks play a significant role in communication,
commerce and trade, and serve valuable and interrelated business functions, both
nationally and internationally. For this reason, all agreements concerning industrial
property, like those on trademarks and tradenames, are intimately connected with
economic development. Industrial property encourages investments in new ideas and
inventions and stimulates creative efforts for the satisfaction of human needs. They
speed up transfer of technology and industrialization, and thereby bring about social and
economic progress. These advantages have been acknowledged by the Philippine
government itself.
 Res judicata therefore does not apply to the instant case and respondent Court of
Appeals did not err in so ruling. IPC No. 2049 raised the issue of ownership of the
trademark, the first registration and use of the trademark in the United States and
other countries, and the international recognition and reputation of the trademark
established by extensive use and advertisement of private respondent's products
for over forty years here and abroad. These are different from the issues of confusing
similarity and damage in IPC No. 686. The issue of prior use may have been raised in
IPC No. 686 but this claim was limited to prior use in the Philippines only. Prior use in
IPC No. 2049 stems from private respondent's claim as originator of the word and symbol
"Barbizon," as the first and registered user of the mark attached to its products which
have been sold and advertised worldwide for a considerable number of years prior to
petitioner's first application for registration of her trademark in the Philippines. Indeed,
these are substantial allegations that raised new issues and necessarily gave private
respondent a new cause of action. Res judicata does not apply to rights, claims or
demands, although growing out of the same subject matter, which constitute separate or
distinct causes of action and were not put in issue in the former action.
 It is also noted that the oppositions in the first and second cases are based on different
laws. The opposition in IPC No. 686 was based on specific provisions of the Trademark
Law, i.e., Section 4 (d) on confusing similarity of trademarks and Section 8 on
the requisite damage to file an opposition to a petition for registration. The opposition in
IPC No. 2049 invoked the Paris Convention, particularly Article 6bis thereof, E.O. No. 913
and the two Memoranda of the Minister of Trade and Industry. This opposition also
invokedArticle 189 of the Revised Penal Code which is a statute totally different from the
Trademark Law.

SASOT v. PEOPLE
 A foreign corporation not engaged and licensed to do business in the Philippines may
maintain an action for unfair competition. Unfair completion punishable under Art. 189 of
the RPC is a public crime.

PEARL & DEAN v. SHOEMART, 409 SCRA 231

 NO COPYRIGHT INFRINGEMENT: Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights are limited to what the statute
confers. It may be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute. Accordingly, it can cover
only the works falling within the statutory enumeration or description. 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.” Stated otherwise, even as we find that P & D indeed owned
a valid copyright, the same could have referred only to the technical drawings within the
category of “pictorial illustrations.” It could not have possibly stretched out to include the
underlying light box.
 NO PATENT INFRINGEMENT: There can be no infringement of a patent until a patent has
been issued since whatever right one has to the invention covered by the patent arises
alone from the grant of patent. An inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, selling or using the invention. On the
assumption that petitioner’s advertising units were patentable inventions, petitioner
revealed them fully to the public by submitting the engineering drawings thereof to the
National Library.
 To be able to effectively and legally preclude others from copying and profiting from the
invention, a patent is a primordial requirement. No patent, no protection. 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
 The patent law has a three-fold purpose: “first, patent law seeks to foster and reward
invention; second, it promotes disclosures of inventions to stimulate further innovation
and to permit the public to practice the invention once the patent expires; third, the
stringent requirements for patent protection seek to ensure that ideas in the public domain
remain there for the free use of the public
 One who has adopted and used a trademark on his goods does not prevent the adoption
and use of the same trademark by others for products which are of a different
description.” The certificate of registration issued by the Director of Patents can
confer 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.
 By the nature of things, there can be no unfair competition under the law on copyrights
although it is applicable to disputes over the use of trademarks. Even a name or phrase
incapable of appropriation as a trademark or tradename may, by long and exclusive use
by a business (such that the name or phrase becomes associated with the business or
product in the mind of the purchasing public), be entitled to protection against unfair
competition.[27] In this case, there was no evidence that P & D’s use of “Poster Ads” was
distinctive or well-known. As noted by the Court of Appeals, petitioner’s expert witnesses
himself had testified that “ ‘Poster Ads’ was too generic a name. So it was difficult to
identify it with any company, honestly speaking.”[28] This crucial admission by its own
expert witness that “Poster Ads” could not be associated with P & D showed that, in the
mind of the public, the goods and services carrying the trademark “Poster Ads” could not
be distinguished from the goods and services of other entities.
 KHO v. COURT OF APPEALS, GR NO. 11578, MARCH 19, 2002; 379 SCRA
 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.
In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise.
 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.
 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
 Issue: WON the copyright and patent over the name and container of a beauty cream product
would entitle the registrant to the use and ownership over the same to the exclusion of
others.
 No. 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.
 The dispositive portion of said decision held that the petitioner does not have trademark
rights on the name and container of the beauty cream product. The said decision on the
merits of the trial court rendered the issuance of the writ of a preliminary injunction moot
and academic notwithstanding the fact that the same has been appealed in the Court of
Appeals.
 Finally, we rule that the Court of Appeals correctly denied the petitioner ’s several motions
for contempt of court. There is nothing contemptuous about the advertisements
complained of which, as regards the proceedings in CA-G.R. SP No. 27803 merely
announced in plain and straightforward language the promulgation of the assailed
Decision of the appellate court. Moreover, pursuant to Section 4 of Rule 39 of the Revised
Rules of Civil Procedure, the said decision nullifying the injunctive writ was immediately
executory.

PHIL PHARMAWEALTH, INC. v. PFIZER (PHIL.), INC., G.R. No. 167715,

NOVEMBER 17, 2010, 635 SCRA 140
 Issue: WON an injunctive relief be issued based on an action of patent infringement when
the patent allegedly infringed has already lapsed.
  No. The exclusive right of a patentee to make, use and sell a patented product, article
or process exists only during the term of the patent. It is clear from the above-quoted
provision of law that the exclusive right of a patentee to make, use and sell a patented
product, article or process exists only during the term of the patent. In the instant case,
Philippine Letters Patent No. 21116, which was the basis of respondents in filing their
complaint with the BLA-IPO, was issued on July 16, 1987. This fact was admitted by
respondents themselves in their complaint. They also admitted that the validity of the said
patent is until July 16, 2004, which is in conformity with Section 21 of RA 165, providing
that the term of a patent shall be seventeen (17) years from the date of issuance thereof.
Section 4, Rule 129 of the Rules of Court provides that an admission, verbal or written,
made by a party in the course of the proceedings in the same case, does not require proof
and that the admission may be contradicted only by showing that it was made through
palpable mistake or that no such admission was made. In the present case, there is no
dispute as to respondents' admission that the term of their patent expired on July 16,
2004. Neither is there evidence to show that their admission was made through palpable
mistake. Hence, contrary to the pronouncement of the CA, there is no longer any need to
present evidence on the issue of expiration of respondents' patent.
 What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs
of the Intellectual Property Office?
 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.

IN-N-OUT BURGER, INC. v. SEHWANI, INCORPORATED and/or BBENITA’S

FRITES, INC., GR No. 179127, 575 SCRA 535
 Issue: WON the IPO (administrative bodies) have jurisdiction to cases involving unfair
competition.
 Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the
concurrent jurisdiction of civil courts and the IPO over unfair competition cases.
Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the petitioner's
administrative case against respondents and the IPO Director General have exclusive
jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.
 JURISDICTION: Petitioner’s complaint, which seeks the cancellation of the disputed mark in
the name of respondent Sehwani, Incorporated, and damages for violation of petitioner’s
intellectual property rights, falls within the jurisdiction of the IPO Director of Legal
Affairs. The Intellectual Property Code also expressly recognizes the appellate
jurisdiction of the IPO Director General over the decisions of the IPO Director of Legal
Affairs.
 The Court of Appeals incorrectly concluded that all actions involving trademarks, including
charges of unfair competition, are under the exclusive jurisdiction of civil courts. Such
 interpretation is not supported by the provisions of the Intellectual Property Code. 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. On the contrary, 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.
 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.
 WON respondent Sehwani is liable of unfair competition.
 Yes. The evidence on record shows that the respondents were not using their registered
trademark but that of the petitioner. Further, respondents are giving their products the
general appearance that would likely influence purchasers to believe that these products
are those of the petitioner. The intention to deceive may be inferred from the similarity of
the goods as packed and offered for sale, and, thus, action will lie to restrain such unfair
competition. Also, respondent’s use of IN-N-OUT BURGER in busineses signages
reveals fraudulent intent to deceive purchasers.

FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO

 Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether
alone or as part of a compilation, are not original and therefore may not be copyrighted.
A factual compilation is eligible for copyright if it features an original selection or
arrangement of facts, but the copyright is limited to the particular selection or
arrangement. In no event may copyright extend to the facts themselves.
 To qualify for copyright protection, a work must be original to the author, which means
that the work was independently created by the author, and it possesses at least
some minimal degree of creativity. A work may be original even thought it closely
resembles other works so long as the similarity is fortuitous, not the result of copying.
 WON the names, addresses, and phone numbers in a telephone directory able to be
copyrighted.
 No. Facts cannot be copyrighted, however compilations of facts can generally be
copyrighted.
 To qualify for copyright protection, a work must be original to the author, which means
that the work was independently created by the author, and it possesses at least some
minimal degree of creativity. A work may be original even thought it closely resembles
other works so long as the similarity is fortuitous, not the result of copying.
 Facts are not original. The first person to find and report a particular fact has not created
the fact; he has merely discovered its existence. Facts may not be copyrighted and are
part of the public domain available to every person.
  Factual compilations may possess the requisite originality. The author chooses what
facts to include, in what order to place them, and how to arrange the collected date so
they may be effectively used by readers. Thus, even a directory that contains no written
expression that could be protected, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement. But, even though
the format is original, the facts themselves do not become original through association.
The copyright on a factual compilation is limited to formatting. The copyright does not
extend to the facts themselves.
 To establish copyright infringement, two elements must be proven: ownership of
a valid copyright and copying of constituent elements of the work that are
original. The first element is met in this case because the directory contains some
forward text. As to the second element, the information contains facts, which cannot be
copyrighted. They existed before being reported and would have continued to exist if a
telephone directory had never been published. There is no originality in the formatting, so
there is no copyrightable expression. Thus, there is no copyright infringement.
 The primary objective of copyright is not to reward the labor of authors, but "to promote the
Progress of Science and useful Arts."

Joaquin v. Drilon G.R No. 108946, 28 Jan 1999), 302 SCRA 225
 The format of a show is not a copyrightable under Section 2 of P.D. 49--- To begin with, the
format of a show is not copyrightable. Section 2 of P.D. No. 49,[10] otherwise known as
the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled
to copyright protection, to wit: Section 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories, and
gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and
entertainments in dumb shows, the acting form of which is fixed in writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other
works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture, whether or not
patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process analogous to photography;
lantern slides;
(M) Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;
 (P) Dramatizations, translations, adaptations, abridgements, arrangements and other
alterations of literary, musical or artistic works or of works of the Philippine government
as herein defined, which shall be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9
of this Decree which by reason of the selection and arrangement of their contents
constitute intellectual creations, the same to be protected as such in accordance with
Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES (R.A. No. 8293)
 The format or mechanics of a television show is not included in the list of protected works in
§2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended
to cover them. Copyright, in the strict sense of the term, is purely a statutory right. It is a
new or independent right granted by the statute, and not simply a pre-existing right
regulated by 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 and conditions specified in the statute. Since . . . copyright in
published works is purely a statutory creation, a copyright may be obtained only for a
work falling within the statutory enumeration or description. Regardless of the historical
viewpoint, it is authoritatively settled in the United States that there is no copyright
except that which is both created and secured by act of Congress.
 Copyright, in a strict sense, is purely a statutory right. P.D. No. 49, §2, in enumerating what
are subject to copyright, refers to finished works and not to concepts. The copyright does
not extend to an idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work. Thus, the new INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES provides: Sec. 175. Unprotected Subject Matter. -
Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under
this law, to any idea, procedure, system, method or operation, concept, principle,
discovery or mere data as such, even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other miscellaneous facts having the character
of mere items of press information; or any official text of a legislative, administrative or
legal nature, as well as any official translation thereof.
 The copyright does not extend to the general concept or format of its dating game
show. What then is the subject matter of petitioners’ copyright? This Court is of the
opinion that petitioner BJPI’s copyright covers audio-visual recordings of each episode of
Rhoda and Me, as falling within the class of works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works produced by a process analogous to cinematography
or any process for making audio-visual recordings; The copyright does not extend to the
general concept or format of its dating game show. Accordingly, by the very nature of the
subject of petitioner BJPI’s copyright, the investigating prosecutor should have the
opportunity to compare the videotapes of the two shows.
 Mere description by words of the general format of the two dating game shows is insufficient;
the presentation of the master videotape in evidence was indispensable to the
determination of the existence of probable cause. As aptly observed by respondent
Secretary of Justice: A television show includes more than mere words can describe
 because it involves a whole spectrum of visuals and effects, video and audio, such that
no similarity or dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.

Santos vs. McCullough Printing Co., GR No. 19439, October 31, 1964, 12 SCRA
321
 An intellectual creation should be copyrighted
within the periods provided by law, failure of which renders such creation public
property.
 For there to be a limited publications or prohibition, such fact must appear on the face of the
design. When the purpose is a limited publication, but
the effect is a general publication, irrevocable rights thereon become vested in the
general public. Exclusive right of owner to publish limited to first publication unless
copyrighted.-- The author of a literary composition has a right to the first publication
thereof. He has a right to determine whether it shall be published at
all, and if published, when, where, by whom, and in what form. This exclusive right is
confined to the first publication. Once published, it is dedicated to the public, and the
author loses, the exclusive right to control subsequent publication by others, unless the
work is placed under the protection of the copyright law.

Filipino Society of Composers v. Tan, G.R. No. L-36402, March 16, 1987, 148
SCRA 461
 Music provided by a combo in a restaurant constitutes public performance for profit within
the meaning of the Copyright Law. In the case at bar, it is admitted that the patrons of the
restaurant in question pay only for the food and drinks and apparently not for listening to
the music. As found by the trial court, the music provided is for the purpose of entertaining
and amusing the customers in order to make the establishment more attractive and
desirable. It will be noted that for the playing and singing the musical compositions
involved, the combo was paid as independent contractors by the appellant . It is therefore
obvious that the expenses entailed thereby are added to the overhead of the restaurant
which are either eventually charged in the price of the food and drinks or to the overall
total of additional income produced by the bigger volume of business which the
entertainment was programmed to attract. Consequently, it is beyond question that the
playing and singing of the combo in defendant-appellee's restaurant constituted
performance for profit contemplated by the Copyright Law. (Act 3134 amended by
P.D. No. 49, as amended).
 If the general public has made use of the object sought to be copyrighted within 30 days prior
to the copyright application, the law deems the object to have been donated to the public
domain and can no longer be copyrighted as in the case of the songs at bar. The Supreme
Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as
amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent
Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic
Act 165, provides among other things that an intellectual creation should be copyrighted
 thirty (30) days after its publication, if made in Manila, or within the (60) days if made
elsewhere, failure of which renders such creation public property." (Santos v. McCullough
Printing Company, 12 SCRA 324-325 [1964]. Indeed, if the general public has made use
of the object sought to be copyrighted for thirty (30) days prior to the copyright application
the law deems the object to have been donated to the public domain and the same can
no longer be copyrighted.
 A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on
April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long
before registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of
You" registered on January 14, 1955 (Brief for Appellant, p. 10) had become popular
twenty five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN, May 28,
1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao
Lamang" both registered on July 10, 1966, appear to have been known and sang by the
witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of
the witnesses at the hearing of this case on this subject were unrebutted by the appellant.
(Ibid, pp. 28; 29 and 30). Under the circumstances, it is clear that the musical
compositions in question had long become public property, and are therefore beyond the
protection of the Copyright Law.

Ching vs. Salinas, GR No. 161295, June 29, 2005, 462 SCRA 241
 The RTC had jurisdiction to delve into and resolve the issue whether the petitioner ’s utility
models are copyrightable and, if so, whether he is the owner of a copyright over the said
models.
 For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged
in an application is committed, the petitioner-applicant was burdened to prove that (a)
respondents Jessie Ching and Joseph Yu were the owners of copyrighted material; and
(b) the copyrighted material was being copied and distributed by the respondents. Thus,
the ownership of a valid copyright is essential.
 Ownership of copyrighted material is shown by proof of originality and copyrightability. By
originality is meant that the material was not copied, and evidence s at least minimal
creativity; that it was independently created by the author and that it possesses at least
same minimal degree of creativity.
 Copying is shown by proof of access to copyrighted material and substantial similarity
between the two works.
 It bears stressing that the focus of copyright is the usefulness of the artistic design, and not
its marketability. The central inquiry is whether the article is a work of art.] Works for
applied art include all original pictorials, graphics, and sculptural works that are intended
to be or have been embodied in useful article regardless of factors such as mass
production, commercial exploitation, and the potential availability of design patent
protection.
 As gleaned from the description of the models and their objectives, these articles are useful
articles which are defined as one having an intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey information. Indeed, while works of
applied art, original intellectual, literary and artistic works are copyrightable, useful articles
and works of industrial design are not. A useful article may be copyrightable only if and
only to the extent that such design incorporates pictorial, graphic, or sculptural features
 that can be identified separately from, and are capable of existing independently of the
utilitarian aspects of the article.
 In this case, the petitioner’s models are not works of applied art, nor artistic works. They are
utility models, useful articles, albeit with no artistic design or value.
 A utility model is a technical solution to a problem in any field of human activity which is new
and industrially applicable. It may be, or may relate to, a product, or process, or an
improvement of any of the aforesaid. Essentially, a utility model refers to an invention in
the mechanical field. This is the reason why its object is sometimes described as a device
or useful object.
 UTILITY MODEL v. INVENTION: first, the requisite of “inventive step” in a patent for invention
is not required; second, the maximum term of protection is only seven years compared to
a patent which is twenty years, in a patent for both reckoned from the date of the
application; and third, the provisions on utility model dispense with its substantive
examination and prefer for a less complicated system.
 No copyright granted by law can be said to arise in favor of the petitioner despite the issuance
of the certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing
and Vehicle Bearing Cushion.
 That the works of the petitioner may be the proper subject of a patent does not entitle him to
the issuance of a search warrant for violation of copyright laws. In Kho v. Court of
Appeals[49] and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,[50] the
Court ruled that “these copyright and patent rights are completely distinct and separate
from one another, and the protection afforded by one cannot be used interchangeably to
cover items or works that exclusively pertain to the others.
 In this case, the bushing and cushion are not works of art. They are, as the petitioner himself
admitted, utility models which may be the subject of a patent.

Manly Sportwear Manufacturing Inc.vs. Dadodette, GR No. 165306, September 20,

2005, 470 SCRA 384
 Where the copyrighted products do not appear to be original creations and are not among
the classes of work enumerated under Section 172 of RA 8293, trial court may not be
faulted for overturning its initial assessment that there was probable cause in view of its
inherent power to issue search warrants and to quash the same. In the instant case, we
find that the trial court did not abuse its discretion when it entertained the motion to quash
considering that no criminal action has yet been instituted when it was filed. The trial
court also properly quashed the search warrant it earlier issued after finding upon
reevaluation of the evidence that no probable cause exists to justify its issuance in the
first place. As ruled by the trial court, the copyrighted products do not appear to be
original creations of MANLY and are not among the classes of work enumerated under
Section 172 of RA 8293. The trial court, thus, may not be faulted for overturning its initial
assessment that there was probable cause in view of its inherent power to issue search
warrants and to quash the same. No objection may be validly posed to an order quashing
a warrant already issued as the court must be provided with the opportunity to correct
itself of an error unwittingly committed, or, with like effect, to allow the aggrieved party the
chance to convince the court that its ruling is erroneous.
 The order quashing a search warrant is not res judicata on the issue of copyright
infringement- the applicant for a search warrant could still file a separate copyright
infringement suit against the respondents. As correctly observed by the Court of Appeals,
 the trial court’s finding that the seized products are not copyrightable was merely
preliminary as it did not finally and permanently adjudicate on the status and character of
the seized items. MANLY could still file a separate copyright infringement suit against the
respondents because the order for the issuance or quashal of a warrant is not res judicata.
Thus, in Vlasons Enterprises Corporation v. Court of Appeals[14] we held that: The
proceeding for the seizure of property in virtue of a search warrant does not end with the
actual taking of the property by the proper officers and its delivery, usually constructive,
to the court. The order for the issuance of the warrant is not a final one and cannot
constitute res judicata. Such an order does not ascertain and adjudicate the permanent
status or character of the seized property. By its very nature, it is provisional,
interlocutory. It is merely the first step in the process to determine the character and title
of the property. That determination is done in the criminal action involving the crime or
crimes in connection with which the search warrant was issued. Hence, such a criminal
action should be prosecuted, or commenced if not yet instituted, and prosecuted. The
outcome of the criminal action will dictate the disposition of the seized property…
 Further, the copyright certificates issued in favor of MANLY constitute merely prima facie
evidence of validity and ownership. However, no presumption of validity is created where
other evidence exist that may cast doubt on the copyright validity. Hence, where there is
sufficient proof that the copyrighted products are not original creations but are readily
available in the market under various brands, as in this case, validity and originality will
not be presumed and the trial court may properly quash the issued warrant for lack of
probable cause.
 At most, the certificates of registration and deposit issued by the National Library and
the 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 work under the protective mantle of the copyright law. It is
not a conclusive proof of copyright ownership. As it is, non-registration and deposit
of the work within the prescribed period only makes the copyright owner liable to pay a
fine.

UNILEVER Philippines vs. CA and Procter and Gamble, Phils Inc., G.R. No.
119280, (August 10, 2006), 498 SCRA 334
 Injunction is resorted to only when there is a pressing necessity to avoid injurious
consequences which cannot be remedied under any standard compensation.[7] As
correctly ruled by the CA, there was an extreme urgency to grant the preliminary injunction
prayed for by P&GP considering that TV commercials are aired for a limited period of time
only. In fact, this Court takes note of the fact that the TV commercial in issue ― the Kite
TV advertisement ― is no longer aired today, more than 10 years after the injunction was
granted on September 16, 1994.

Sambar vs. Levi Strauss & Co./, GR No. 132604, ( March 6, 2002), 378 SCRA 364
 Did petitioner infringe on private respondents’ arcuate design?
  We find no reason to disturb the findings of the Court of Appeals that Europress’ use of
the arcuate design was an infringement of the Levi’s design.
 Must we hold petitioner solidarily liable with CVS Garments Industrial Corporation? Both the
courts below found that petitioner had a copyright over Europress’ arcuate design and
that he consented to the use of said design by CVSGIC. We are bound by this finding,
especially in the absence of a showing that it was tainted with arbitrariness or palpable
error.[7] It must be stressed that it was immaterial whether or not petitioner was connected
with CVSGIC. What is relevant is that petitioner had a copyright over the design and that
he allowed the use of the same by CVSGIC.

 To be entitled to copyright, the thing being copyrighted must be original, created by the author
through his own skill, labor and judgment, without directly copying or evasively imitating
the work of another. From the foregoing discussion, it is clear that the matters raised by
petitioner in relation to the last issue are purely factual, except the matter of nominal and
temperate damages. Petitioner claims that damages are not due private respondents
and his copyright should not be cancelled because he had not infringed on Levi’s
trademark. Both the trial court and the Court of Appeals found there was
infringement. Thus, the award of damages and cancellation of petitioner’s
copyright are appropriate. Award of damages is clearly provided in Section 23 of
the Trademark law, while cancellation of petitioner’s copyright finds basis on the
fact that the design was a mere copy of that of private respondents’ trademark. To
be entitled to copyright, the thing being copyrighted must be original, created by the author
through his own skill, labor and judgment, without directly copying or evasively imitating
the work of another
 However, we agree with petitioner that it was error for the Court of Appeals to affirm the
award of nominal damages combined with temperate damages by the Regional Trial
Court of Makati. What respondents are entitled to is an award for temperate damages,
not nominal damages. For although the exact amount of damage or loss can not be
determined with reasonable certainty, the fact that there was infringement means they
suffered losses for which they are entitled to moderate damages. We find that the award
of P50,000.00 as temperate damages fair and reasonable, considering the circumstances
herein as well as the global coverage and reputation of private respondents Levi Strauss
& Company and Levi Strauss (Phil.), Inc.

Bayanihan Music vs. BMG, Jose Mari Chan, GR No. 166337, March 7, 2005, 452
scra
 A court should, as much as possible, avoid issuing the writ which would effectively dispose
of the main case without trial.
 (1) there must be a right in esse or the existence of a right to be protected; and (2) the act
against which the injunction is to be directed is a violation of such right,[5]cralaw the trial
court threaded the correct path in denying petitioner's prayer therefor. For, such a writ
should only be granted if a party is clearly entitled thereto.
 Of course, while a clear showing of the right to an injunctive writ is necessary albeit its
existence need not be conclusively established,[7]cralaw as the evidence required
therefor need not be conclusive or complete, still, for an applicant, like petitioner
Bayanihan, to be entitled to the writ, he is required to show that he has the ostensible
 right to the final relief prayed for in its complaint.[8]cralaw Here, the trial court did not find
ample justifications for the issuance of the writ prayed for by petitioner.
 respondent Chan, being undeniably the composer and author of the lyrics of the two (2)
songs, is protected by the mere fact alone that he is the creator thereof
 An examination of petitioner's verified complaint in light of the two (2) contracts sued upon
and the evidence it adduced during the hearing on the application for preliminary
injunction, yields not the existence of the requisite right protectable by the provisional
relief but rather a lingering doubt on whether there is or there is no such right. xxx It would
thus appear that the two (2) contracts expired on October 1, 1975 and March 11, 1978,
respectively, there being neither an allegation, much less proof, that petitioner Bayanihan
ever made use of the compositions within the two-year period agreed upon by the parties
 Anent the copyrights obtained by petitioner on the basis of the selfsame two (2) contracts,
suffice it to say 'that such purported copyrights are not presumed to subsist in accordance
with Section 218[a] and [b], of the Intellectual Property Code,[10]cralaw because
respondent Chan had put in issue the existence thereof.
 It is noted that Chan revoked and terminated said contracts, along with others, on July 30,
1997, or almost two years before petitioner Bayanihan wrote its sort of complaint/demand
letter dated December 7, 1999 regarding the recent "use/recording of the songs 'Can We
Just Stop and Talk A While' and 'Afraid for Love to Fade,'" or almost three (3) years before
petitioner filed its complaint on August 8, 2000, therein praying, inter alia, for injunctive
relief.

Habana vs. Robles GR No. 131522, July 19, 1999, 310 SCRA 511
 We believe that respondent Robles’ act of lifting from the book of petitionerssubstantial
portions of discussions and examples, and her failure to acknowledge the same in her
book is an infringement of petitioners’ copyrights. 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.
 In determining the question of infringement, the amount of matter copied from the copyrighted
work is an important consideration. To constitute infringement, it is not necessary that
the whole or even a large portion of the work shall have been copied. If so much is taken
that the value of the original is sensibly diminished, or the labors of the original author are
substantially and to an injurious extent appropriated by another, that is sufficient in point
of law to constitute piracy. The essence of intellectual piracy should be essayed in
conceptual terms in order to underscore its gravity by an appropriate understanding
thereof. Infringement of a copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore, protected by law, and infringement
of copyright, or piracy, which is a synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of the copyright, of anything the
sole right to do which is conferred by statute on the owner of the copyright.
 Even if two authors were of the same background in terms of teaching experience and
orientation, it is not an excuse for them to be identical even in examples contained in their
books. The respondents claim that their similarity in style can be attributed to the fact that
both of them were exposed to the APCAS syllabus and their respective academic
 experience, teaching approach and methodology are almost identical because they were
of the same background. However, we believe that even if petitioners and respondent
Robles were of the same background in terms of teaching experience and orientation, it
is not an excuse for them to be identical even in examples contained in their books. The
similarities in examples and material contents are so obviously present in this case. How
can similar/identical examples not be considered as a mark of copying?
 In cases of infringement, copying alone is not what is prohibited. The copying must
produce an “injurious effect”. Here, the injury consists in that respondent Robles lifted
from petitioners’ book materials that were the result of the latter’s research work and
compilation and misrepresented them as her own. She circulated the book DEP for
commercial use and did not acknowledge petitioners as her source.
 Hence, there is a clear case of appropriation of copyrighted work for her benefit that
respondent Robles committed. Petitioners’ work as authors is the product of their long
and assiduous research and for another to represent it as her own is injury enough. In
copyrighting books the purpose is to give protection to the intellectual product of an
author. This is precisely what the law on copyright protected, under Section 184.1
(b). Quotations from a published work if they are compatible with fair use and only to the
extent justified by the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries are allowed provided that the source and the
name of the author, if appearing on the work, are mentioned.
 In the case at bar, the least that respondent Robles could have done was to acknowledge
petitioners Habana et. al. as the source of the portions of DEP. The final product of an
author’s toil is her book. To allow another to copy the book without appropriate
acknowledgment is injury enough.

Microsoft Corp.vs. Maxicorp Inc.,GR No. 140946, Sept. 13, 2004

 WHETHER THE PETITION RAISES QUESTIONS OF LAW; Indeed, this case falls under
one of the exceptions because the findings of the Court of Appeals conflict with the
findings of the RTC.[16] Since petitioners properly raised the conflicting findings of the
lower courts, it is proper for this Court to resolve such contradiction.
 WHETHER PETITIONERS HAVE LEGAL PERSONALITY TO FILE THE PETITION: We
ruled in Columbia Pictures Entertainment, Inc. v. Court of Appeals[18] that the petitioner-
complainant in a petition for review under Rule 45 could argue its case before this Court
in lieu of the Solicitor General if there is grave error committed by the lower court or lack
of due process. This avoids a situation where a complainant who actively participated in
the prosecution of a case would suddenly find itself powerless to pursue a remedy due to
circumstances beyond its control. The circumstances in Columbia Pictures Entertainment
are sufficiently similar to the present case to warrant the application of this doctrine.
 WHETHER THERE WAS PROBABLE CAUSE TO ISSUE THE SEARCH WARRANTS:
The Court of Appeals based its reversal on two factual findings of the RTC. First, the fact
that the sales receipt presented by NBI Agent Samiano as proof that he bought counterfeit
goods from Maxicorp was in the name of a certain “Joel Diaz.” Second, the fact that
petitioners’ other witness, John Benedict Sacriz, admitted that he did not buy counterfeit
 goods from Maxicorp. We rule that the Court of Appeals erred in reversing the RTC’s
findings.
 The offense charged against Maxicorp is copyright infringement under Section 29 of PD 49
and unfair competition under Article 189 of the RPC. To support these charges,
petitioners presented the testimonies of NBI Agent Samiano, computer technician Pante,
and Sacriz, a civilian. The offenses that petitioners charged Maxicorp contemplate several
overt acts. The sale of counterfeit products is but one of these acts. Both NBI Agent
Samiano and Sacriz related to the RTC how they personally saw Maxicorp commit acts
of infringement and unfair competition.
 During the preliminary examination, the RTC subjected the testimonies of the witnesses to
the requisite examination. NBI Agent Samiano testified that he saw Maxicorp display and
offer for sale counterfeit software in its premises. He also saw how the counterfeit
software were produced and packaged within Maxicorp’s premises. NBI Agent Samiano
categorically stated that he was certain the products were counterfeit because Maxicorp
sold them to its customers without giving the accompanying ownership manuals, license
agreements and certificates of authenticity.
 Sacriz testified that during his visits to Maxicorp, he witnessed several instances when
Maxicorp installed petitioners’ software into computers it had assembled. Sacriz also
testified that he saw the sale of petitioners’ software within Maxicorp’s
premises. Petitioners never authorized Maxicorp to install or sell their software.
 The testimonies of these two witnesses, coupled with the object and documentary evidence
they presented, are sufficient to establish the existence of probable cause. From what
they have witnessed, there is reason to believe that Maxicorp engaged in copyright
infringement and unfair competition to the prejudice of petitioners. Both NBI Agent
Samiano and Sacriz were clear and insistent that the counterfeit software were not only
displayed and sold within Maxicorp’s premises, they were also produced, packaged and
in some cases, installed there.
 For purposes of determining probable cause, the sales receipt is not the only proof that the
sale of petitioners’ software occurred. During the search warrant application
proceedings, NBI Agent Samiano presented to the judge the computer unit that he
purchased from Maxicorp, in which computer unit Maxicorp had pre-installed
petitioners’ software.[27] Sacriz, who was present when NBI Agent Samiano
purchased the computer unit, affirmed that NBI Agent Samiano purchased the
computer unit.[28] Pante, the computer technician, demonstrated to the judge the
presence of petitioners’ software on the same computer unit.[29] There was a
comparison between petitioners’ genuine software and Maxicorp’s software pre-
installed in the computer unit that NBI Agent Sambiano purchased.[30] Even if we
disregard the sales receipt issued in the name of “Joel Diaz,” which petitioners explained
was the alias NBI Agent Samiano used in the operation, there still remains more than
sufficient evidence to establish probable cause for the issuance of the search warrants.
 The fact that Sacriz did not actually purchase counterfeit software from Maxicorp does not
eliminate the existence of probable cause. Copyright infringement and unfair competition
are not limited to the act of selling counterfeit goods. They cover a whole range of acts,
from copying, assembling, packaging to marketing, including the mere offering for sale of
the counterfeit goods. The clear and firm testimonies of petitioners’ witnesses on such
other acts stand untarnished
 WHETHER THE SEARCH WARRANTS ARE “GENERAL WARRANTS.”: However, we find
paragraph (c) of the search warrants lacking in particularity. Paragraph (c) states:
c) Sundry items such as labels, boxes, prints, packages, wrappers, receptacles,
advertisements and other paraphernalia bearing the copyrights and/or trademarks owned
by MICROSOFT CORPORATION;
 The scope of this description is all-embracing since it covers property used for personal or
other purposes not related to copyright infringement or unfair competition. Moreover, the
description covers property that Maxicorp may have bought legitimately from Microsoft or
its licensed distributors. Paragraph (c) simply calls for the seizure of all items bearing
the Microsoft logo, whether legitimately possessed or not. Neither does it limit the seizure
to products used in copyright infringement or unfair competition.
 All articles seized under paragraph (c) of the search warrants, not falling under paragraphs
a, b, d, e or f, are ordered returned to Maxicorp, Inc. immediately.

TRADEMARK

UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL MILLING

CORPORATION
 The right to register trademark is based on ownership. When the applicant is not the owner
of the trademark being applied for, he has no right to apply for the registration of the same.
Under the Trademark Law only the owner of the trademark, trade name or service mark
used to distinguish his goods, business or service from the goods, business or service of
others is entitled to register the same.
 An importer, broker, indentor or distributor acquires no rights to the trademark of the goods
he is dealing with in the absence of a valid transfer or assignment of the trade mark.
 SCOPE: The term owner does not include the importer of the goods bearing the trademark,
trade name, service mark, or other mark of ownership, unless such importer is actually
the owner thereof in the country from which the goods are imported. Thus, this Court has
on several occasions ruled that where the applicant's alleged ownership is not shown in
any notarial document and the applicant appears to be merely an importer or distributor
of the merchandise covered by said trademark, its application cannot be granted.
 DEED OF ASSIGNMENT; PROOF OF OWNERSHIP: The Director of Patents correctly found
that ample evidence was presented that Centennial Mills, Inc. was the owner and prior
user in the Philippines of the trademark "All Montana" through a local importer and
broker. The Deed of Assignment itself constitutes sufficient proof of its ownership of the
trademark "All Montana, "showing that Centennial Mills was a corporation duly organized
and existing under and by virtue of the laws of the State of Oregon, U.S.A. with principal
place and business at Portland, Oregon, U.S.A. and the absolute and registered owner
of several trademarks for wheat fl our, i.e. (I mperial, White Lily, Duck, General, Swan,
White Horse, Vinta, El Paro, Baker's J oy, Choice, Red Bowl, All Montana and Dollar) all
of which were assigned by it to respondent General Milling Corporation.
 Ownership of a trademark is not acquired by the mere fact of registration alone. Registration
merely creates a prima facie presumption of the validity of the registration, of the
registrant's ownership of the trademark and of the exclusive right to the use thereof.
 Registration does not perfect a trademark right. As conceded itself by petitioner, evidence
may be presented to overcome the presumption. Prior use by one will controvert a claim
of legal appropriation by subsequent users.
 Under Rule 178 of the Rules of the Patent Office in Trademark Cases, the Director of Patents
is expressly authorized to order the cancellation of a registered mark or trade name or
name or other mark of ownership in an inter partes case, such as the interference
proceeding at bar.

KABUSHI KAISHA ISETAN ISETAN CO., LTD., vs. IAC, ISETANN DEPARTMENT
STORE, INC.
 A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the
Philippines is a prerequisite to the acquisition of ownership over a trademark or a trade
name.
 A prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.
 The records show that the petitioner has never conducted any business in the Philippines. I
t has never promoted its tradename or trademark in the Philippines. It has absolutely no
business goodwill in the Philippines. I t is unknown to Filipinos except the very few who
may have noticed it while travelling abroad. I t has never paid a single centavo of tax to
the Philippine government. Under the law, it has no right to the remedy it seeks. There
can be no question from the records that the petitioner has never used its tradename or
trademark in the Philippines. The mere origination or adoption of a particular tradename
without actual use thereof in the market is insufficient to give any exclusive right to its
use, even though such adoption is publicly declared, such as by use of the name in
advertisements, circulars, price lists, and on signs and stationery.
 The Paris Convention for the Protection of Industrial Property does not automatically exclude
all countries of the world that have signed it from using a trade name which happens to
be used in one country.
 Conditions which must exist before any trademark owner can claim and be afforded rights:
1. the mark must be internationally known or well 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.

PHILIP MORRIS, INC. v. FORTUNE TOBACCO CORPORATION

 RECIPROCITY: While petitioners enjoy the statutory presumptions arising from such
registration, i.e., as to the validity of the registration, ownership and the exclusive right to
use the registered marks, they may not successfully sue on the basis alone of their
respective certificates of registration of trademarks. For, petitioners are still foreign
corporations. As such, they ought, as a condition to availment of the rights and privileges
vis-à-vis their trademarks in this country, to show proof that, on top of Philippine
registration, their country grants substantially similar rights and privileges to Filipino
citizens pursuant to Section 21-A20 of R.A. No. 166.
 ID: The aforementioned reciprocity requirement is a condition sine qua non to filing a suit by
a foreign corporation which, unless alleged in the complaint, would justify dismissal
thereof, a mere allegation that the suit is being pursued under Section 21-A of R.A. No.
166 not being sufficient.
 REGISTRATION VERSUS ACTUAL USE: True, the Philippines’ adherence to the Paris
Convention24 effectively obligates the country to honor and enforce its provisions as
regards the protection of industrial property of foreign nationals in this country. However,
any protection accorded has to be made subject to the limitations of Philippine laws.
 Considering that R.A. No. 166, as amended, specifically Sections 228 and 2-A29 thereof,
mandates actual use of the marks and/or emblems in local commerce and trade before
they may be registered and ownership thereof acquired, the petitioners cannot, therefore,
dispense with the element of actual use. Their being nationals of member-countries of the
Paris Union does not alter the legal situation.
 Withal, the fact that international law has been made part of the law of the land does NOT by
any means imply the primacy of international law over national law in the municipal
sphere. Under the DOCTRINE OF INCORPORATION as applied in most countries, rules
of International Law are given a standing EQUAL, not superior, to national legislative
enactments.
 Such a foreign corporation may have the personality to file a suit for infringement but it may
not necessarily be entitled to protection due to absence of actual use of the emblem in
the local market.
 The registration of trademark cannot be deemed conclusive as to the actual use of such
trademark in local commerce. As it were, registration does not confer upon the registrant
an absolute right to the registered mark. The certificate of registration merely constitutes
prima facie evidence that the registrant is the owner of the registered mark. Evidence of
non-usage of the mark rebuts the presumption of trademark ownership, as what
happened here when petitioners no less admitted not doing business in this country.
 Shangri-La International Hotel Management, Ltd. v. Development Group of Companies, Inc.:
trademark is a creation of use and, therefore, actual use is a pre-requisite to exclusive
ownership; registration is only an administrative confirmation of the existence of the right
of ownership of the mark, but does not perfect such right; actual use thereof is the
perfecting ingredient.
 With the foregoing perspective, it may be stated right off that the registration of a trademark
unaccompanied by actual use thereof in the country accords the registrant only the
standing to sue for infringement in Philippine courts. Entitlement to protection of such
trademark in the country is entirely a different matter.
 For lack of convincing proof on the part of the petitioners of actual use of their registered
trademarks prior to respondent’s use of its mark and for petitioners’ failure to demonstrate
confusing similarity between said trademarks, the dismissal of their basic complaint for
infringement and the concomitant plea for damages must be affirmed. The law, the
surrounding circumstances and the equities of the situation call for this disposition.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD v. DEVELOPERS

GROUP OF COMPANIES, INC.,
 Shangri-la Hotel did not infringe on the logo of DGCI. The applicable law at the time is RA
166, which requires that there must be at least 2 months actual use prior to registration.
The registration by DGCI is invalid for want of the actual use requirement. Based on the
facts & testimonies of the chairman of DGCI, the logo was designed in December 1982;
yet, the application was filed as early as October 1982. There could be no actual use
considering the foregoing facts; thus, invalidating DGCI’s registration.
 Ownership of a mark or trade name may be acquired not necessarily by registration but by
adoption and use in trade or commerce. As between actual use of a mark without
registration, and registration of the mark without actual use thereof, the former prevails
over the latter. For a rule widely accepted and firmly entrenched, because it has come
down through the years, is that actual use in commerce or business is a pre-requisite to
the acquisition of the right of ownership.
 Even if registration was valid, it is not enough to confer ownership of the trademark. As
already held, registration merely creates a prima facie presumption ①of the validity of the
registration, ② of the registrant's ownership of the trademark and③of the exclusive right
to the use thereof. This presumption is rebuttable & must give way to evidence on the
contrary.
 Under RA 166, any person may appropriate to his exclusive use a trademark, trade name,
or a service mark not so appropriated by another. The exclusion did not require that the
prior appropriation of another must be in the Philippines; hence, it was interpreted to cover
also appropriation outside the country. Shangri-la Hotel has been continuously using their
mark & logo since 1975, while DGCI began using theirs towards the end of 1982.
 While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant,
neither did respondent DGCI , since the latter also failed to fulfill the 2month actual use
requirement. What is worse, DGCI was not even the owner of the mark. For it to have
been the owner, the mark must not have been already appropriated (i.e., used) by
someone else. At the time of respondent DGCI 's registration of the mark, the same was
already being used by the petitioners, albeit abroad, of which DGCI 's president was fully
aware.
 A person or entity who is not the owner of a trademark could not bring an action of
infringement. Decision of the CA was set aside, complaint of DGCI was dismissed.
 NEW LAW: The new Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly
shows the firm resolve of the Philippines to observe and follow the Paris Convention by
incorporating the relevant portions of the Convention such that persons who may question
a mark (that is, oppose registration, petition for the cancellation thereof, sue for unfair
competition) include persons whose internationally well-known mark, whether or not
registered, is identical with or confusingly similar to or constitutes a translation of a mark
that is sought to be registered or is actually registered

ANG v. TORIBIO
 That petitioner's registration of the trade-mark "Ang Tibay" should be cancelled, and that she
should be perpetually enjoined from using said trade-mark on goods manufactured and
sold by her.
 The term “Ang Tibay”, not being a geographic or descriptive word, is capable of exclusive
appropriation as trademark. An inquiry into the etymology and meaning of the Tagalog
 words "Ang Tibay," made in the decision, shows that the phrase is never used adjectively
to define or describe an object. I t is, therefore, not a descriptive term within the meaning
of the Trade-mark Law but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trade-mark or trade-name. Hence, it was originally capable
of exclusive appropriation as a trade-mark by the respondent.
 FUNCTIONS OF TRADEMARK; DOCTRINE OF SECONDARY MEANING: The function of
a trade-mark is to point distinctively, either by its own meaning or by association, to the
origin or ownership of the wares to which it is applied. "Ang Tibay," as used by the
respondent to designate his wares, had exactly performed that function for twenty-two
years before the petitioner adopted it as a trade-mark in her own business. "Ang Tibay"
shoes and slippers are, by association, known throughout the Philippines as products of
the "Ang Tibay" factory owned and operated by the respondent. Even if "Ang Tibay,"
therefore, were not capable of exclusive appropriation as a trade-mark, the
application of the doctrine of secondary meaning could nevertheless be fully
sustained because, in any event, by respondent's long and exclusive use of said
phrase with reference to his products and his business, it has acquired a
proprietary connotation. This doctrine is to the effect that 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.
 Although two noncompeting articles may be classified under two different classes by the
Patent Office because they are deemed not to possess the same descriptive properties,
they would nevertheless be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trade- marks would be likely to
cause confusion as to the origin, or personal source, of the second user's goods. They
would be considered as not falling under the same class only if they are so dissimilar or
so foreign to each other as to make it unlikely that the purchaser would think the first user
made the second user's goods. Such construction of the law is induced by cogent reasons
of equity and fair dealing discussed in the decision.
 The courts have come to realize that there can be unfair competition or unfair trading even if
the goods are non competing, and that such unfair trading can cause injury or damage to
the first user of a given trademark. First, by prevention of natural expansion of the
business and second, by having his business reputation confused with and put at the
mercy of the 2nd user. When noncompetitive products are sold under the same mark, the
gradual whittling away or dispersion of the identity and hold upon the public mind of the
mark created by its first user, inevitably results. The original owner is entitled to the
preservation of the valuable link between him and the public that has been created by his
ingenuity and merit of his wares and services.”

Philip Morris, Inc. v. CA (224 SCRA 624, Dissenting Opinion; Justice Feliciano
 In the trial court, both J udge Reyes and J udge Galing took the position that until the Director
of Patents shall have finally acted on private respondent's application for registration of
"MARK," petitioners cannot be granted the relief of preliminary injunction. I t is respectfully
submitted that this position is both erroneous and unfortunate.
 The pendency of the application before the Director of Patents is not in itself a reason
for denying preliminary injunction. Our courts have jurisdiction and authority to determine
whether or not "MARK" is an infringement on petitioners' registered trademarks. Under
our case law, the issuance of a Certificate of Registration of a trademark in the Principal
Register by the Director of Patents would not prevent a court from ruling on whether or
not the trademark so granted registration is confusingly similar with a previously
registered trademark, where such issue is essential for resolution of a case properly
before the court.
 "MARK" has taken over the dominant word in "MARK VI I " and "MARK TEN." These
circumstances, coupled with private respondent's failure to explain how or why it chose,
out of all the words in the English language, the word "mark" to refer to its cigarettes, lead
me to the submission that there is a prima facie basis for holding, as the Patent Office
has held and as the Court of Appeals did hold originally, that private respondent's "MARK"
infringes upon petitioners' registered trademarks.
 There is thus no question as to the legal rights of petitioners as holders of trademarks
registered in the Philippines. Private respondent, however, resists and assails petitioners'
effort to enforce their legal rights by heavily underscoring the fact that petitioners are not
registered to do business in the Philippines and are not in fact doing business in the
Philippines.
 Foreign corporations and corporations domiciled in a foreign country are not disabled
from bringing suit in Philippine courts to protect their rights as holders of trademarks
registered in the Philippines PROVIDED that the country of which the said foreign
corporation or juristic person is a citizen or in which it is domiciled by treaty, convention
or law, grants similar privilege to corporate or juristic persons of the Philippines."
 EFFECT: A corporate national of a member country of the Paris Union is entitled to
bring in Philippine courts an action for infringement of trademarks, or for unfair
competition, without necessity for obtaining registration or a license to do business in the
Philippines, and without necessity of actually doing business in the Philippines.
 The very fact that the appropriate Philippine Government office issued the Certificates
of Registration necessarily gave rise to the presumption that such pre-registration use
had in fact been shown to the satisfaction of the Philippines Patent Office (now the Bureau
of Patents, Trademarks and Technology Transfer ["BPTTT"]). I t is important to note that
respondent Fortune has not purported to attack the validity of the trademarks "Mark Ten"
and "Lark" by pretending that no pre-registration use in commerce in the Philippines had
been shown.
 In the case at bar, again, respondent Fortune has not explicitly pretended that the
petitioners' trademarks have been abandoned by non-use in trade and commerce in the
Philippines although it appears to insinuate such non-use and abandonment by stressing
that petitioners are not doing business in the Philippines.
 The circumstance that the foreign owner of a Philippine trademark is not licensed to do
business and is not doing business in the Philippines, does not mean that petitioner's
goods (that is, goods bearing petitioner's trademark) are not sold in the Philippines. For
 cigarettes bearing petitioners' trademarks may in fact be imported into and be available
for sale in the Philippines through the acts of importers or distributors. Petitioners have
stated that their "Mark VI I ," "Mark Ten" and "Lark" cigarettes are in fact brought into the
country and available for sale here in, e.g., duty-free shops, though not imported into or
sold in the Philippines by petitioners themselves.
 Here again, a basic argument of private respondent was that petitioners had not shown any
damages because they are not doing business in the Philippines.
 That petitioners are not doing business and are not licensed to do business in the
Philippines, does not necessarily mean that petitioners are not in a position to sustain,
and do not in fact sustain, damage through trademark infringement on the part of a local
enterprise. Such trademark infringement by a local company may, for one thing, affect
the volume of importation into the Philippines of cigarettes bearing petitioners' trademarks
by independent or third party traders.
 That a registered trademark has value in itself apart from the trade physically
accompanying its use, has been recognized by our Court. I n Ang v. Teodoro.
 STA ANA v. MALIWAT: Modern law recognizes that the protection to which the owner
of a trademark is entitled is not limited to guarding his goods or business from actua
market competition with identical or similar products of the parties, but extends to all cases
in which the use by a junior appropriator of a trademark or trade-name is likely to lead to
a confusing 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
 I next turn to private respondent's claim that issuance of an injunction would impose heavy
damage upon itself and upon the Government.
 Petitioners seek only the reinstatement of the original injunction issued by the Court of
Appeals, i.e., one that restrains private respondent from using the trademark "MARK" on
its cigarettes. There is nothing to prevent private respondent from continuing to
manufacture and sell cigarettes under any of its already existing and registered
trademarks, of which it has several, or under some new and specially created
trademark(s). Realistically, private respondent, if enjoined, would lose only the value of
the cigarettes already branded with "MARK," the value of the packaging material
imprinted with the same trademark (which cigarettes and material may well be amenable
to re-cycling) and the cost of past advertisements of "MARK" in media, if any.

VICTORIAS MILLING CO v. ONG SU

 The contention of petitioner that the diamond design in its trademark is an index of origin has
no merit. The petitioner has not shown that the design portion of the mark has been so
used that purchasers recognize the design, standing alone, as indicating goods coming
from the registrant. As correctly stated by the Director of Patents, common geometric
shapes such as diamonds ordinarily are not regarded as indicia of origin for goods to
which the remarks are applied unless they have acquired a secondary meaning. And
there is no evidence that the diamond design in the trademark of the petitioner has
acquired a secondary meaning with respect to its sugar business. The word "Victorias" is
 what Identifies the sugar contained in the bag as the product of the petitioner. Indeed, the
petitioner has advertised its sugar in bags marked "Victorias" with oval, hexagor. and
other designs.
 It seems clear that the words "Valentine" and "Victorias" and the names and places of
business of Victorias Milling Company, Inc. and Ong Su are the dominant features of the
trademarks in question. The petitioner has not established such a substantial similarity
between the two trademarks in question as to warrant the cancellation of the trademark
'Valentine'of the respondent Su.
 The Director of Patents correctly ruled that he has no jurisdiction over the issue of unfair
competition.
 It seems immaterial whether or not Ong Su has judicial authority to use Mariano Ang as an
alias. There is evidence that even before the last World War, the trademark 'Valentine'
and design had been used under the name of either Ong Su or Mariano Ang.

 The words "Victorias" and "Valentine" are not similar in spelling and do not have a similar
sound when pronounced. Even the diamond designs are different. The diamond design
of the trademark "Valentine" has protruding fines at the comers. Even an illiterate person
can see the difference between the two diamond designs.

CANON KABUSHIKI KAISHAvs. CA & NSR RUBBER CORPORATION

 We reiterated the principle that 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.[11] Thus, the exclusive
right of petitioner in this case to use the trademark CANON is limited to the products
covered by its certificate of registration.
 Ordinarily, the ownership of a trademark or tradename is a property right that the owner is
entitled to protect[4] as mandated by the Trademark Law.[5] 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.
 In Faberge, Incorporated vs. Intermediate Appellate Court,[9] the Director of patents
allowed the junior user to use the trademark of the senior user on the ground that the
briefs manufactured by the junior user, the product for which the trademark BRUTE was
sought to be registered, was unrelated and non-competing with the products of the senior
user consisting of after shave lotion, shaving cream, deodorant, talcum powder, and toilet
soap. The senior user vehemently objected and claimed that it was expanding its
trademark to briefs and argued that permitting the junior user to register the same
trademark would allow the latter to invade the senior user’s exclusive domain. In
sustaining the Director of Patents, this Court said that since "(the senior user) has not
ventured in the production of briefs, an item which is not listed in its certificate of
registration, (the senior user), cannot and should not be allowed to feign that (the junior
user) had invaded (the senior user’s) exclusive domain.
 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.[19] They may also be related
because they serve the same purpose or are sold in grocery stores.
 Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the
trademark CANON are unrelated to sandals, the product of private respondent. We agree
with the BPTTT, following the Esso doctrine, when it noted that the two classes of
products in this case flow through different trade channels. The products of petitioner are
sold through special chemical stores or distributors while the products of private
respondent are sold in grocery stores, sari-sari stores and department stores.[23] Thus,
the evident disparity of the products of the parties in the case at bar renders unfounded
the apprehension of petitioner that confusion of business or origin might occur if private
respondent is allowed to use the mark CANON.
 Tradename is defined by the 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
 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.
 The Paris Convention for the Protection of Industrial Property does not automatically exclude
all countries of the world which have signed it from using a tradename which happens to
be used in one country. To illustrate – if a taxicab or bus company in a town in the United
Kingdom or India happens to use the tradename "Rapid Transportation", it does not
necessarily follow that "Rapid" can no longer be registered in Uganda, Fiji, or the
Philippines.
 Guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris:
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. 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
 Petitioner failed to comply with the third requirement of the said memorandum that is the
mark must be for use in the same or similar kinds of goods. The Petitioner is using the
mark "CANON" for products belonging to class 2 (paints, chemical products) while the
Respondent is using the same mark for sandals (class 25). Hence, Petitioner’s contention
that its mark is well-known at the time the Respondent filed its application for the same
mark should fail. "

WESC, WESTERN ELECTRIC COMPANY, INC., vs. REYES

 The plaintiff, Western Electric Company, Inc., has been in existence as a corporation for over
fifty years, during which time it has established a reputation all over the world including
the Philippine Islands, for the kind and quality of its manufactured articles, and it is very
apparent that the whole purpose and intent of Herman and his associates in seeking to
incorporate another corporation under the identical name of Western Electric Company,
Inc., and for the same identical purpose as that of the plaintiff, is to trespass upon and
profit by its good name and business reputation. The very fact that Herman and his
 associates have sought the use of that particular name for that identical purpose is
conclusive evidence of the fraudulent intent with which it is done.
 The judgment of the lower court is affirmed, with costs. So ordered.

STERLING PRODUCTS INTERNATIONAL, INCORPORATED v. FARBENFABRIKEN

BAYER
AKTIENGESELLSCHAFT and ALLIED MANUFACTURING AND
TRADING CO., INC.

 Accordingly, the 1927 registration in the United States of the BAYER trademark would not of
itself afford plaintiff protection for the use by defendants in the Philippines of the same
trademark for the same or different products.
 Defendant cannot delist plaintiff’s BAYER trademark for medicine claiming right thereto for
said use. While it is conceded that FBA's predecessors first introduced medical products
with the BAYER trademarks in the Philippine market, it is equally true that, after World
War I , no definite evidence there is that defendants or their predecessors traded in the
Philippines in medicines with the BAYER trademarks thereafter. FBA did not seasonably
voice its objections. Lack of protest thereto connoted acquiescence.
 The net result is that, as the trial court aptly observed, plaintiff may hold on to its BAYER
trademarks for medicines. And defendants may continue using the same trademarks for
insecticides and other chemicals, not medicines.

ASIA BREWERY v. CA
 There is hardly any dispute that the dominant feature of SMC's trademark is the name of the
product: SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs
at the beginning and end of the letters "S" and "M" on an amber background across the
upper portion of the rectangular design.
 On the other hand, the dominant feature of ABI's trademark is the name: BEER PALE
PILSEN, with the word "Beer" written in large amber letters, larger than any of the letters
found in the SMC label.
 The trial court perceptively observed that the word "BEER" does not appear in SMC's
trademark, just as the words "SAN MIGUEL" do not appear in ABI's trademark. Hence,
there is absolutely no similarity in the dominant features of both trademarks.
 Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly
similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can
possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was
presented by SMC proving otherwise
 GENERI C OR DESCRI PTI VE AND PRI MARI LY GEOGRAPHI CALLY DESCRI PTI VE
WORDS NON-REGI STRABLE AND NOT APPROPRI ABLE; REASON THEREFOR;
CASE AT BAR.---
 The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are
generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light
 bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages
 Pilsen" is a "primarily geographically descriptive word," (Sec. 4, subpar. [e] Republic
Act No. 166, as inserted by Sec. 2 of R.A. No. 638) hence, non-registerable and not
appropriable by any beer manufacturer.
 The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than
such descriptive words as "evaporated milk," "tomato ketchup," "cheddar cheese," "corn
flakes" and "cooking oil" may be appropriated by any single manufacturer of these food
products, for no other reason than that he was the first to use them in his registered
trademark. In Masso Hermanos, S.A. vs. Director of Patents, 94 Phil. 136, 139 (1953), it
was held that a dealer in shoes cannot register "Leather Shoes" as his trademark because
that would be merely descriptive and it would be unjust to deprive other dealers in leather
shoes of the right to use the same words with reference to their merchandise. No one
may appropriate generic or descriptive words. They belong to the public domain.

 PROTECTI ON AGAI NST I MI TATI ON PROPERLY LI MI TED TO NONFUNCTI ONAL
FEATURES; CASE AT BAR.
 The petitioner's contention that bottle size, shape and color may not be the exclusive
property of any one beer manufacturer is well taken. SMC's being the first to use the
steinie bottle does not give SMC a vested right to use it to the exclusion of everyone
else. Being of functional or common use, and not the exclusive invention of any
one, it is available to all who might need to use it within the industry. Nobody can
acquire any exclusive right to market articles supplying simple human needs in containers
or wrappers of the general form, size and character commonly and immediately used in
marketing such articles
 ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI makes its own steinie
bottle which has a fat bulging neck to differentiate it from SMC's bottle. The amber color
is a functional feature of the beer bottle. As pointed out by ABI, all bottled beer produced
in the Philippines is contained and sold in amber-colored bottles because amber is the
most effective color in preventing transmission of light and provides the maximum
protection to beer.
 That the ABI bottle has a 320 ml. capacity is not due to a desire to imitate SMC's bottle
because that bottle capacity is the standard prescribed under Metrication Circular No.
778, dated 4 December 1979, of the Department of Trade, Metric System Board.
 With regard to the white label of both beer bottles, ABI explained that it used the color
white for its label because white presents the strongest contrast to the amber color of
ABI's bottle; it is also the most economical to use on labels, and the easiest to "bake" in
the furnace (p. 16, TSN of September 20, 1988). No one can have a monopoly of the
color amber for bottles, nor of white for labels, nor of the rectangular shape which is the
usual configuration of labels. Needless to say, the shape of the bottle and of the label is
unimportant. What is all important is the name of the product written on the label of the
bottle for that is how one beer may be distinguished form the others.
 TRADEMARK ALLEGEDLY I NFRI NGED CONSI DERED AS A WHOLE ANDNOT AS DI
SSECTED; DOCTRI NE ENUNCI ATED I N DEL MONTE CORPORATI ON vs. COURT
 OF APPEALS AND SUNSHI NE SAUCE MANUFACTURI NG I NDUSTRI ES, 181 SCRA
410, 419, NOT APPLI CABLE TO CASE AT BAR.
 Del Monte Corporation vs. Court of Appeals and Sunshine Sauce Manufacturing
Industries," 181 SCRA 410, 419, 3 that: to determine whether a trademark has been
infringed, we must consider the mark as a whole and not as dissected. If the buyer is
deceived, it is attributable to the marks as a totality, not usually to any part of it.
 That ruling may not apply to all kinds of products. Our ruling in Del Monte would not
apply to beer which is not usually picked from a store shelf but ordered by brand by the
beer drinker himself from the storekeeper or waiter in a pub or restaurant.
 Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's
mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes its own bottle with a
bulging neck to differentiate it from SMC's bottle, and prints ABI's name in three (3) places
on said bottle (front, back and bottle cap) to prove that it has no intention to pass of its
"BEER" as "SAN MIGUEL."
 There is no confusing similarity between the competing beers for the name of one is "SAN
MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the
two outnumber their points of similarity.
 Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with
the latter's SAN MIGUEL PALE PILSEN product. While its BEER PALE PILSEN
admittedly competes with the latter in the open market, that competition is neither unfair
nor fraudulent. Hence, we must deny SMC's prayer to suppress it.

DISSENTING: JUSTICE CRUZ

 A number of courts have held that to determine whether a trademark has been infringed, we
must consider the mark as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it. The court therefore
should be guided by its first impression, for a buyer acts quickly and is governed by a
casual glance, the value of which may be dissipated as soon as the court assumes to
analyze carefully the respective features of the mark.

PAG-ASA INDUSTRIAL COPORATION v. COURT OF APPEALS

 An unreasonable length of time had already passed before respondent asserted its right to
the trademark. There is a presumption of neglect already amounting to "abandonment"
of a right after a party had remained silent for quite a long time during which petitioner
had been openly using the trademark in question. Such inaction on the part of respondent
entitles petitioner to the equitable principle of laches.
 Respondent wanted goodwill and a wide market established at the expense of the petitioner
but for its benefit. It is precisely the intention of the law, including a provision on equitable
principle to protect only the vigilant, not those guilty of laches.
STA. ANA v. MALIWAT
 In the case at bar, the proof of date of first use (1953), earlier than that alleged in respondent
Maliwat's application (1962), can be no less than clear and convincing because the fact
was stipulated and no proof was needed. (JUDICIAL ADMISSION)
 EXTENT OF THE PROTECTI ON TO THE TRADEMARK OWNER. — Modern law
recognizes that the protection to which the owner of a trademark is entitled is not limited
to guarding his goods or business from actual market 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.
 POSSESSI ON OF THE SAME DESCRI PTI VE PROPERTI ES NOT REQUI RED; CASE
AT BAR. — Sec. 4, Rep. Act No. 166 does not require that the articles of manufacture of
the previous user and the late user of the mark should possess the same descriptive
properties or should fall into the same categories as to bar the latter from registering his
mark in the principal register.
 Therefore, whether or not shirts and shoes have the same descriptive properties or whether
or not it is the prevailing practice or the tendency of tailors and haberdashers to expand
their business into shoe-making are not controlling. The meat of the matter is the
likelihood of confusion, mistake or deception upon purchaser of the goods of the junior
user of the mark and the goods manufactured by the previous user. Here, the
resemblance or similarity of the mark "FLORMANN and the name FLORMEN and the
likelihood of confusion, one to the other, is admitted; therefore, the prior adopter,
respondent Maliwat, has the better right to the use of the mark.

Phil. Refining Co. vs. Ng Sam[G.R.No. L-26676.July 30, 1982]

 A rudimentary precept in trademark protection is that "the right to a trademark is a limited
one, in the sense that others may used the same mark on unrelated goods.
 A trademark is designed to Identify the user. But it should be so distinctive and sufficiently
original as to enable those who come into contact with it to recognize instantly the Identity
of the user. " It must be affirmative and definite, significant and distinctive, capable to
indicate origin
 APPROPRI ATI ON OR I MI TATI ON OF TRADEMARK "CAMIA” CANNOT I NJ URE PETI
TI ONER I N CASE AT BAR FOR BEI NG A GENERIC ANDCOMMON TERM. Being a
generic and common term, its appropriation as a trademark, albeit in a fanciful manner in
that it bears no relation to the product it Identifies, is valid.
 It has been held that if a mark is so commonplace that it cannot be readily distinguished from
others, then it is apparent that it cannot Identify a particular business; and he who first
adopted it cannot be injured by any subsequent appropriation or imitation by others, and
the public will not be deceived.
 WHERE BUSI NESSES OF PARTI ES I N CASE AT BAR ARE NONCOMPETITI VE AND
THEIR PRODUCTS UNRELATED, THE USE OF I DENTI CAL TRADEMARKS ON
PRODUCTS UNDER THE SAME CLASSI FI CATI ON CANNOT CONFUSE
CONSUMERS AS TO THEI R SOURCE.

MIGHTY CORPORATION v. E.J. GALLO WINERY

 DISTINCTIONS BETWEEN TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION:
The l aw on unfair competition is broader and more inclusive than the law on trademark
infringement. The latter is more limited but it recognizes a more exclusive right derived
from the trademark adoption and registration by the person whose goods or business is
first associated with it. The law on trademarks is thus a specialized subject distinct from
the law on unfair competition. Hence, even if one fails to establish his exclusive property
right to a trademark, he may still obtain relief on the ground of his competitor's unfairness
or fraud.
 In Del Monte Corporation vs. Court of Appeals,[45] we distinguished trademark infringement
from unfair competition:
1. Infringement of trademark is the unauthorized use of a trademark, whereas unfair
competition is the passing off of one's goods as those of another.
2. In infringement of trademark fraudulent intent is unnecessary, whereas in unfair
competition fraudulent intent is essential.
3. In infringement of trademark the prior registration of the trademark is a prerequisite to the
action, whereas in unfair competition registration is not necessary.
 Thus, under Article 6bis 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-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.
 In summary, the Paris Convention protects well-known trademarks only (to be determined
by domestic authorities), while the Trademark Law protects all trademarks, whether well-
known or not, provided that they have been registered and are in actual commercial use
in the Philippines.\
 Under both the Paris Convention and the Trademark Law, the protection of a registered
trademark is limited only to goods identical or similar to those in respect of which such
trademark is registered and only when there is likelihood of confusion. Under both laws,
the time element in commencing infringement cases is material in ascertaining the
registrant’s express or implied consent to another’s use of its trademark or a colorable
imitation thereof. This is why acquiescence, estoppel or laches may defeat the
registrant’s otherwise valid cause of action.
 NO LIKELIHOOD OF CONFUSION, MISTAKE OR DECEIT AS TO THE IDENTITY OR
SOURCE OF PETITIONERS’ AND RESPONDENTS’ GOODS OR BUSINESS.
 There are two types of confusion in trademark infringement. The first is “confusion of goods”
when an otherwise prudent purchaser is induced to purchase one product in the belief
that he is purchasing another, in which case defendant’s goods are then bought as the
plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation. The other is
“confusion of business” wherein the goods of the parties are different but the defendant’s
product can reasonably (though mistakenly) be assumed to originate from the plaintiff,
thus deceiving the public into believing that there is some connection between the plaintiff
and defendant which, in fact, does not exist
 In determining the likelihood of confusion, the Court must consider: [a] the resemblance
between the trademarks; [b] the similarity of the goods to which the trademarks are
attached; [c] the likely effect on the purchaser and [d] the registrant’s express or implied
consent and other fair and equitable considerations.
 The many different features like color schemes, art works and other markings of both
products drown out the similarity between them – the use of the word “GALLO” ― a family
surname for the Gallo Winery’s wines and a Spanish word for rooster for petitioners’
cigarettes.
 WINES AND CIGARETTES ARE NOT IDENTICAL, SIMILAR, COMPETING OR RELATED
GOODS
 RELATED GOODS: Simply stated, when goods are so related that the public may be, or is
actually, deceived and misled that they come from the same maker or manufacturer,
trademark infringement occurs
 In this regard, we adopted the Director of Patents’ finding in Philippine Refining Co., Inc. vs.
Ng Sam and the Director of Patents:
 GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO wines are
patronized by middle-to-high-income earners while GALLO cigarettes appeal only to
simple folks like farmers, fishermen, laborers and other low-income workers.
 GALLO cigarettes and GALLO wines are not sold through the same channels of
trade. GALLO cigarettes are Philippine-made and petitioners neither claim nor pass off
their goods as imported or emanating from Gallo Winery. GALLO cigarettes are
distributed, marketed and sold through ambulant and sidewalk vendors, small local sari-
sari stores and grocery stores in Philippine rural areas, mainly in Misamis Oriental,
Pangasinan, Bohol, and Cebu.[118] On the other hand, GALLO wines are imported,
distributed and sold in the Philippines through Gallo Winery’s exclusive contracts with a
domestic entity, which is currently Andresons. By respondents’ own testimonial evidence,
GALLO wines are sold in hotels, expensive bars and restaurants, and high-end grocery
stores and supermarkets, not through sari-sari stores or ambulant vendors.
 THE GALLO WINE TRADEMARK IS NOT A WELL-KNOWN MARK IN THE CONTEXT OF
THE PARIS CONVENTION IN THIS CASE SINCE WINES AND CIGARETTES ARE NOT
IDENTICAL OR SIMILAR GOODS
 “Regarding the applicability of Article 8 of the Paris Convention, this Office believes that 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.

PUMA v. IAC
 A FOREIGN CORPORATI ON NOT DOING BUSI NESS IN THE PHI LI PPINE CAN SUE
IN PHI LI PPINE COURT FOR INFRI NGEMENT----
 I n the leading case of La Chemise Lacoste, S.A. v. Fernandez, (129 SCRA 373), we
ruled: "But even assuming the truth of the private respondent's allegation that the
petitioner failed to allege material facts in its petition relative to capacity to sue, the
petitioner may still maintain the present suit against respondent Hemandas. As early as
1927, this Court was, and it still is, of the view that a foreign corporation not doing
business in the Philippines needs no license to sue before Philippine courts for
infringement of trademark and unfair competition."
  I n the case of Converse Rubber Corporation v. Universal Rubber Products, I nc. (147
SCRA 165), we likewise re-affirmed our adherence to the Paris Convention: "The ruling
in the aforecited case is in consonance with the Convention of the Union of Paris for the
Protection of I ndustrial Property to which the Philippines became a party on September
27, 1965. Article 8 thereof provides that 'a trade name [corporation name] shall be
protected in all the countries of the Union without the obligation of filing or registration,
whether or not it forms part of the trademark.'
 LIS PENDENS; PRI NCI PLE NOT APPLICABLE TO ADMI NI STRATI VE CASES.
 As regards the propriety of the issuance of the writ of preliminary injunction, the records show
that herein private respondent was given the opportunity to present its counter-evidence
against the issuance thereof but it intentionally refused to do so to be consistent with its
theory that the civil case should be dismissed in the first place. Considering the fact that
"PUMA" is an internationally known brand name, it is pertinent to reiterate the directive to
lower courts, which equally applies to administrative agencies. Judges all over the country
are well advised to remember that court processes should not be used as instruments to,
unwittingly or otherwise, aid counterfeiters and intellectual pirates, tie the hands of the
law as it seeks to protect the Filipino consuming public and frustrate executive and
administrative implementation of solemn commitments pursuant to international
conventions and treaties."
LA CHEMISE LACOSTE v. HERNANDEZ (Art. 152. 2)
 Whether the proceedings before the patent office is a prejudicial question that need to be
resolved before the criminal action for unfair competition may be pursued.
 No. The proceedings pending before the Patent Office do not partake of the nature of a
prejudicial question which must first be definitely resolved. The case which suspends
the criminal action must be a civil case, not a mere administrative case, which is
determinative of the innocence or guilt of the accused. The issue whether a trademark
used is different from another’s trademark is a matter of defense and will be better
resolved in the criminal proceedings before a court of justice instead of raising it
as a preliminary matter in an administrative proceeding.
 Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even
before 1964, Hemandas cannot be allowed to continue the trademark
“Lacoste” for the reason that he was the first registrant in the Supplemental Register
of a trademark used in international commerce. Registration in the Supplemental
Register cannot be given a posture as if the registration is in the Principal Register. It
must be noted that one may be declared an unfair competitor even if his competing
trademark is registered. La Chemise Lacoste is world renowned mark, and by virtue of
the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in
compliance with the Paris Convention for the protection of industrial property, effectively
cancels the registration of contrary claimants to the enumerated marks, which include
“Lacoste.”