21 Mirpuri VS CA

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DEFINITION OF INTELLECTUAL PROPERTY

CONSTITUTION Filipino national culture based on the principle of unity in diversity in a climate
of free artistic and intellectual expression.
ARTICLE XII National Economy and Patrimony SECTION 15. Arts and letters shall enjoy the patronage of the State. The State shall
SECTION 6. The use of property bears a social function, and all economic agents conserve, promote, and popularize the nation’s historical and cultural heritage
shall contribute to the common good. Individuals and private groups, including and resources, as well as artistic creations.
corporations, cooperatives, and similar collective organizations, shall have the SECTION 16. All the country’s artistic and historic wealth constitutes the cultural
right to own, establish, and operate economic enterprises, subject to the duty of treasure of the nation and shall be under the protection of the State which may
the State to promote distributive justice and to intervene when the common good regulate its disposition.
so demands. SECTION 17. The State shall recognize, respect, and protect the rights of
indigenous cultural communities to preserve and develop their cultures,
SECTION 14. The sustained development of a reservoir of national talents traditions, and institutions. It shall consider these rights in the formulation of
consisting of Filipino scientists, entrepreneurs, professionals, managers, high- national plans and policies.
level technical manpower and skilled workers and craftsmen in all fields shall be SECTION 18. (1) The State shall ensure equal access to cultural opportunities
promoted by the State. The State shall encourage appropriate technology and through the educational system, public or private cultural entities, scholarships,
regulate its transfer for the national benefit. grants and other incentives, and community cultural centers, and other public
The practice of all professions in the Philippines shall be limited to Filipino venues.
citizens, save in cases prescribed by law.
(2) The State shall encourage and support researches and studies on the arts and
ARTICLE XIV Education, Science and Technology, Arts, Culture, and Sports culture.
Science and Technology
CIVIL CODE
SECTION 10. Science and technology are essential for national development and
progress. The
State shall give priority to research and development, invention, innovation, and BOOK III
their utilization; and to science and technology education, training, and services. DIFFERENT MODES OF ACQUIRING OWNERSHIP
It shall support indigenous, appropriate, and self-reliant scientific and
technological capabilities, and their application to the country’s productive Preliminary Provision
systems and national life.
SECTION 11. The Congress may provide for incentives, including tax deductions, Article 712. Ownership is acquired by occupation and by intellectual creation.
to encourage private participation in programs of basic and applied scientific
research. Scholarships, grants in aid, or other forms of incentives shall be Ownership and other real rights over property are acquired and transmitted by
provided to deserving science students, researchers, scientists, inventors, law, by donation, by testate and intestate succession, and in consequence of
technologists, and specially gifted citizens. certain contracts, by tradition.
SECTION 12. The State shall regulate the transfer and promote the adaptation of
technology from all sources for the national benefit. It shall encourage the widest They may also be acquired by means of prescription. (609a)
participation of private groups, local governments, and community-based
organizations in the generation and utilization of science and technology.
TITLE II
SECTION 13. The State shall protect and secure the exclusive rights of scientists,
Intellectual Creation
inventors, artists, and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people, for such period as may be
provided by law. Article 721. By intellectual creation, the following persons acquire ownership:
Arts and Culture
SECTION 14. The State shall foster the preservation, enrichment, and dynamic (1) The author with regard to his literary, dramatic, historical, legal,
evolution of a philosophical, scientific or other work;

1|I P L P ar t I
DEFINITION OF INTELLECTUAL PROPERTY
(2) The composer; as to his musical composition; Republic Act No. 8293 June 6, 1997

(3) The painter, sculptor, or other artist, with respect to the product of AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND
his art; ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR
ITS POWERS AND FUNCTIONS, AND FOR OTHER PURPOSES
(4) The scientist or technologist or any other person with regard to his
discovery or invention. (n) Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of:

Article 722. The author and the composer, mentioned in Nos. 1 and 2 of the a) Copyright and Related Rights;
preceding article, shall have the ownership of their creations even before the
publication of the same. Once their works are published, their rights are governed b) Trademarks and Service Marks;
by the Copyright laws.
c) Geographic Indications;
The painter, sculptor or other artist shall have dominion over the product of his
art even before it is copyrighted. d) Industrial Designs;

The scientist or technologist has the ownership of his discovery or invention even e) Patents;
before it is patented. (n)
f) Layout-Designs (Topographies) of Integrated Circuits; and
Article 723. Letters and other private communications in writing are owned by
the person to whom they are addressed and delivered, but they cannot be
published or disseminated without the consent of the writer or his heirs. g) Protection of Undisclosed Information (n, TRIPS).
However, the court may authorize their publication or dissemination if the public
good or the interest of justice so requires. (n) 4.2. The term "technology transfer arrangements" refers to contracts or
agreements involving the transfer of systematic knowledge for the manufacture
of a product, the application of a process, or rendering of a service including
Article 724. Special laws govern copyright and patent. (429a)
management contracts; and the transfer, assignment or licensing of all forms of
intellectual property rights, including licensing of computer software except
CHAPTER 3 computer software developed for mass market.
Trade-marks and Trade-names
4.3. The term "Office" refers to the Intellectual Property Office created by this Act.
Article 520. A trade-mark or trade-name duly registered in the proper
government bureau or office is owned by and pertains to the person, corporation,
or firm registering the same, subject to the provisions of special laws. (n) 4.4. The term "IPO Gazette" refers to the gazette published by the Office under
this Act. (n)
Article 521. The goodwill of a business is property, and may be transferred
together with the right to use the name under which the business is conducted.
(n)

Article 522. Trade-marks and trade-names are governed by special laws. (n)

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DEFINITION OF INTELLECTUAL PROPERTY
SECOND DIVISION manufacturing company authorized Summerville to register its trade name Chin
Chun Su Medicated Cream with the Philippine Patent Office and other appropriate
G.R. No. 115758 March 19, 2002 governmental agencies; that KEC Cosmetics Laboratory of the petitioner
obtained the copyrights through misrepresentation and falsification; and, that
ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS the authority of Quintin Cheng, assignee of the patent registration certificate, to
LABORATORY, petitioner, distribute and market Chin Chun Su products in the Philippines had already been
vs. terminated by the said Taiwanese Manufacturing Company.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents. After due hearing on the application for preliminary injunction, the trial court
granted the same in an Order dated February 10, 1992, the dispositive portion of
DE LEON, JR., J.: which reads:

Before us is a petition for review on certiorari of the Decision1 dated May 24, 1993 ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business
of the Court of Appeals setting aside and declaring as null and void the under the style of KEC Cosmetic Laboratory, for preliminary injunction,
Orders2 dated February 10, 1992 and March 19, 1992 of the Regional Trial Court, is hereby granted. Consequentially, plaintiff is required to file with the
Branch 90, of Quezon City granting the issuance of a writ of preliminary Court a bond executed to defendants in the amount of five hundred
injunction. thousand pesos (P500,000.00) to the effect that plaintiff will pay to
defendants all damages which defendants may sustain by reason of the
injunction if the Court should finally decide that plaintiff is not entitled
The facts of the case are as follows: thereto.

On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction SO ORDERED.3
and damages with a prayer for the issuance of a writ of preliminary injunction,
docketed as Civil Case No. Q-91-10926, against the respondents Summerville
General Merchandising and Company (Summerville, for brevity) and Ang Tiam The respondents moved for reconsideration but their motion for reconsideration
Chay. was denied by the trial court in an Order dated March 19, 1992.4

The petitioner's complaint alleges that petitioner, doing business under the name On April 24, 1992, the respondents filed a petition for certiorari with the Court of
and style of KEC Cosmetics Laboratory, is the registered owner of the Appeals, docketed as CA-G.R. SP No. 27803, praying for the nullification of the
copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by said writ of preliminary injunction issued by the trial court. After the respondents
Certificates of Copyright Registration No. 0-1358 and No. 0-3678; that she also filed their reply and almost a month after petitioner submitted her comment, or
has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream on August 14 1992, the latter moved to dismiss the petition for violation of
after purchasing the same from Quintin Cheng, the registered owner thereof in Supreme Court Circular No. 28-91, a circular prohibiting forum shopping.
the Supplemental Register of the Philippine Patent Office on February 7, 1980 According to the petitioner, the respondents did not state the docket number of
under Registration Certificate No. 4529; that respondent Summerville advertised the civil case in the caption of their petition and, more significantly, they did not
and sold petitioner's cream products under the brand name Chin Chun Su, in include therein a certificate of non-forum shopping. The respondents opposed
similar containers that petitioner uses, thereby misleading the public, and the petition and submitted to the appellate court a certificate of non-forum
resulting in the decline in the petitioner's business sales and income; and, that shopping for their petition.
the respondents should be enjoined from allegedly infringing on the copyrights
and patents of the petitioner. On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803
ruling in favor of the respondents, the dispositive portion of which reads:
The respondents, on the other hand, alleged as their defense that Summerville is
the exclusive and authorized importer, re-packer and distributor of Chin Chun WHEREFORE, the petition is hereby given due course and the orders of
Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese respondent court dated February 10, 1992 and March 19, 1992 granting

3|I P L P ar t I
DEFINITION OF INTELLECTUAL PROPERTY
the writ of preliminary injunction and denying petitioners' motion for conclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30, 1958,
reconsideration are hereby set aside and declared null and void. Unreported). One may be declared an unfair competitor even if
Respondent court is directed to forthwith proceed with the trial of Civil his competing trademark is registered (Parke, Davis & Co. v. Kiu
Case No. Q-91-10926 and resolve the issue raised by the parties on the Foo & Co., et al., 60 Phil 928; La Yebana Co. v. chua Seco & Co.,
merits. 14 Phil 534)."6

SO ORDERED.5 The petitioner filed a motion for reconsideration. This she followed with several
motions to declare respondents in contempt of court for publishing
In granting the petition, the appellate court ruled that: advertisements notifying the public of the promulgation of the assailed decision
of the appellate court and stating that genuine Chin Chun Su products could be
The registration of the trademark or brandname "Chin Chun Su" by KEC obtained only from Summerville General Merchandising and Co.
with the supplemental register of the Bureau of Patents, Trademarks and
Technology Transfer cannot be equated with registration in the principal In the meantime, the trial court went on to hear petitioner's complaint for final
register, which is duly protected by the Trademark Law.1âwphi1.nêt injunction and damages. On October 22, 1993, the trial court rendered a
Decision7 barring the petitioner from using the trademark Chin Chun Su and
xxx xxx xxx upholding the right of the respondents to use the same, but recognizing the
copyright of the petitioner over the oval shaped container of her beauty cream.
The trial court did not award damages and costs to any of the parties but to their
As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, respective counsels were awarded Seventy-Five Thousand Pesos (P75,000.00)
393: each as attorney's fees. The petitioner duly appealed the said decision to the
Court of Appeals.
"Registration in the Supplemental Register, therefore, serves as
notice that the registrant is using or has appropriated the On June 3, 1994, the Court of Appeals promulgated a Resolution8 denying the
trademark. By the very fact that the trademark cannot as yet be petitioner's motions for reconsideration and for contempt of court in CA-G.R. SP
on guard and there are certain defects, some obstacles which the
No. 27803.
use must still overcome before he can claim legal ownership of
the mark or ask the courts to vindicate his claims of an exclusive
right to the use of the same. It would be deceptive for a party Hence, this petition anchored on the following assignment of errors:
with nothing more than a registration in the Supplemental
Register to posture before courts of justice as if the registration I
is in the Principal Register.
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE
The reliance of the private respondent on the last sentence of ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN
the Patent office action on application Serial No. 30954 that FAILING TO RULE ON PETITIONER'S MOTION TO DISMISS.
'registrants is presumed to be the owner of the mark until after
the registration is declared cancelled' is, therefore, misplaced II
and grounded on shaky foundation. The supposed presumption
not only runs counter to the precept embodied in Rule 124 of RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE
the Revised Rules of Practice before the Philippine Patent Office ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN
in Trademark Cases but considering all the facts ventilated REFUSING TO PROMPTLY RESOLVE PETITIONER'S MOTION FOR
before us in the four interrelated petitions involving the RECONSIDERATION.
petitioner and the respondent, it is devoid of factual basis. As
even in cases where presumption and precept may factually be III
reconciled, we have held that the presumption is rebuttable, not

4|I P L P ar t I
DEFINITION OF INTELLECTUAL PROPERTY
IN DELAYING THE RESOLUTION OF PETITIONER'S MOTION FOR Trademark, copyright and patents are different intellectual property rights that
RECONSIDERATION, THE HONORABLE COURT OF APPEALS DENIED cannot be interchanged with one another. A trademark is any visible sign capable
PETITIONER'S RIGHT TO SEEK TIMELY APPELLATE RELIEF AND of distinguishing the goods (trademark) or services (service mark) of an
VIOLATED PETITIONER'S RIGHT TO DUE PROCESS. enterprise and shall include a stamped or marked container of goods.12 In
relation thereto, a trade name means the name or designation identifying or
IV distinguishing an enterprise.13 Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE and artistic domain protected from the moment of their creation. 14 Patentable
ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN inventions, on the other hand, refer to any technical solution of a problem in any
FAILING TO CITE THE PRIVATE RESPONDENTS IN CONTEMPT. 9 field of human activity which is new, involves an inventive step and is industrially
applicable.15
The petitioner faults the appellate court for not dismissing the petition on the
ground of violation of Supreme Court Circular No. 28-91. Also, the petitioner Petitioner has no right to support her claim for the exclusive use of the subject
contends that the appellate court violated Section 6, Rule 9 of the Revised trade name and its container. The name and container of a beauty cream product
Internal Rules of the Court of Appeals when it failed to rule on her motion for are proper subjects of a trademark inasmuch as the same falls squarely within its
reconsideration within ninety (90) days from the time it is submitted for definition. In order to be entitled to exclusively use the same in the sale of the
resolution. The appellate court ruled only after the lapse of three hundred fifty- beauty cream product, the user must sufficiently prove that she registered or
four (354) days, or on June 3, 1994. In delaying the resolution thereof, the used it before anybody else did. The petitioner's copyright and patent
appellate court denied the petitioner's right to seek the timely appellate relief. registration of the name and container would not guarantee her the right to the
Finally, petitioner describes as arbitrary the denial of her motions for contempt exclusive use of the same for the reason that they are not appropriate subjects of
of court against the respondents. 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
We rule in favor of the respondents. proven that she has registered a trademark thereto or used the same before
anyone did.
Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the
grounds for the issuance of a writ of preliminary injunction is a proof that the We cannot likewise overlook the decision of the trial court in the case for final
applicant is entitled to the relief demanded, and the whole or part of such relief
injunction and damages. The dispositive portion of said decision held that the
consists in restraining the commission or continuance of the act or acts
petitioner does not have trademark rights on the name and container of the
complained of, either for a limited period or perpetually. Thus, a preliminary
beauty cream product. The said decision on the merits of the trial court rendered
injunction order may be granted only when the application for the issuance of the the issuance of the writ of a preliminary injunction moot and academic
same shows facts entitling the applicant to the relief demanded. 10 This is the notwithstanding the fact that the same has been appealed in the Court of Appeals.
reason why we have ruled that it must be shown that the invasion of the right This is supported by our ruling in La Vista Association, Inc. v. Court of Appeals16,
sought to be protected is material and substantial, that the right of complainant
to wit:
is clear and unmistakable, and, that there is an urgent and paramount necessity
for the writ to prevent serious damage.11
Considering that preliminary injunction is a provisional remedy which may
be granted at any time after the commencement of the action and before
In the case at bar, the petitioner applied for the issuance of a preliminary
judgment when it is established that the plaintiff is entitled to the relief
injunctive order on the ground that she is entitled to the use of the trademark
demanded and only when his complaint shows facts entitling such reliefs
on Chin Chun Su and its container based on her copyright and patent over the xxx and it appearing that the trial court had already granted the issuance
same. We first find it appropriate to rule on whether the copyright and patent of a final injunction in favor of petitioner in its decision rendered after trial
over the name and container of a beauty cream product would entitle the on the merits xxx the Court resolved to Dismiss the instant petition having
registrant to the use and ownership over the same to the exclusion of others. been rendered moot and academic. An injunction issued by the trial court
after it has already made a clear pronouncement as to the plaintiff's right
5|I P L P ar t I
DEFINITION OF INTELLECTUAL PROPERTY
thereto, that is, after the same issue has been decided on the merits, the counter-manifestations from private respondents with the last one being filed on
trial court having appreciated the evidence presented, is proper, November 9, 1993. Nonetheless, it is well-settled that non-observance of the
notwithstanding the fact that the decision rendered is not yet final xxx. period for deciding cases or their incidents does not render such judgments
Being an ancillary remedy, the proceedings for preliminary injunction ineffective or void.17 With respect to the purported damages she suffered due to
cannot stand separately or proceed independently of the decision the alleged delay in resolving her motion for reconsideration, we find that the
rendered on the merit of the main case for injunction. The merit of the said issue has likewise been rendered moot and academic by our ruling that she
main case having been already determined in favor of the applicant, the has no right over the trademark and, consequently, to the issuance of a writ of
preliminary determination of its non-existence ceases to have any force preliminary injunction.1âwphi1.nêt
and effect. (italics supplied)
Finally, we rule that the Court of Appeals correctly denied the petitioner's several
La Vista categorically pronounced that the issuance of a final injunction renders motions for contempt of court. There is nothing contemptuous about the
any question on the preliminary injunctive order moot and academic despite the advertisements complained of which, as regards the proceedings in CA-G.R. SP
fact that the decision granting a final injunction is pending appeal. Conversely, a No. 27803 merely announced in plain and straightforward language the
decision denying the applicant-plaintiff's right to a final injunction, although promulgation of the assailed Decision of the appellate court. Moreover, pursuant
appealed, renders moot and academic any objection to the prior dissolution of a to Section 4 of Rule 39 of the Revised Rules of Civil Procedure, the said decision
writ of preliminary injunction. nullifying the injunctive writ was immediately executory.

The petitioner argues that the appellate court erred in not dismissing the petition WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court
for certiorari for non-compliance with the rule on forum shopping. We disagree. of Appeals dated May 24, 1993 and June 3, 1994, respectively, are
First, the petitioner improperly raised the technical objection of non-compliance hereby AFFIRMED. With costs against the petitioner.
with Supreme Court Circular No. 28-91 by filing a motion to dismiss the petition
for certiorari filed in the appellate court. This is prohibited by Section 6, Rule 66 SO ORDERED.
of the Revised Rules of Civil Procedure which provides that "(I)n petitions
for certiorari before the Supreme Court and the Court of Appeals, the provisions Bellosillo, Mendoza, Quisumbing, and Buena, JJ., concur.
of Section 2, Rule 56, shall be observed. Before giving due course thereto, the
court may require the respondents to file their comment to, and not a motion to
dismiss, the petition xxx (italics supplied)". Secondly, the issue was raised one
month after petitioner had filed her answer/comment and after private
respondent had replied thereto. Under Section 1, Rule 16 of the Revised Rules of
Civil Procedure, a motion to dismiss shall be filed within the time for but before
filing the answer to the complaint or pleading asserting a claim. She therefore
could no longer submit a motion to dismiss nor raise defenses and objections not
included in the answer/comment she had earlier tendered. Thirdly, substantial
justice and equity require this Court not to revive a dissolved writ of injunction
in favor of a party without any legal right thereto merely on a technical infirmity.
The granting of an injunctive writ based on a technical ground rather than
compliance with the requisites for the issuance of the same is contrary to the
primary objective of legal procedure which is to serve as a means to dispense
justice to the deserving party.

The petitioner likewise contends that the appellate court unduly delayed the
resolution of her motion for reconsideration. But we find that petitioner
contributed to this delay when she filed successive contentious motions in the
same proceeding, the last of which was on October 27, 1993, necessitating
6|I P L P ar t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Definition)
Republic Act No. 8293 June 6, 1997

AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND


ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR
ITS POWERS AND FUNCTIONS, AND FOR OTHER PURPOSES

PART III
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

Section 121. Definitions. - As used in Part III, the following terms have the
following meanings:

121.1. "Mark" means 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; (Sec. 38, R.A. No. 166a)

121.2. "Collective mark" means any visible sign designated as such in the
application for registration and capable of distinguishing the origin or any other
common characteristic, including the quality of goods or services of different
enterprises which use the sign under the control of the registered owner of the
collective mark; (Sec. 40, R.A. No. 166a)

121.3. "Trade name" means the name or designation identifying or distinguishing


an enterprise; (Sec. 38, R.A. No. 166a)

121.4. "Bureau" means the Bureau of Trademarks;

121.5. "Director" means the Director of Trademarks;

121.6. "Regulations" means the Rules of Practice in Trademarks and Service


Marks formulated by the Director of Trademarks and approved by the Director
General; and

121.7. "Examiner" means the trademark examiner. (Sec. 38, R.A. No. 166a)

7|I P L P ar t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Definition)
Republic of the Philippines After hearing the parties, the trial court rendered its decision, dated 03 December
SUPREME COURT 1991, holding against LTDI; viz:
Manila
WHEREFORE, premises considered, the complaint is hereby
FIRST DIVISION DISMISSED and plaintiff is ordered:

G.R. No. 120961 October 17, 1996 1. To return to defendant the 18,157 empty bottles seized by
virtue of the writ for the Seizure of Personal Property issued by
DISTILLERIA WASHINGTON, INC. or WASHINGTON DISTILLERY, this Court on November 6, 1987;
INC., petitioner,
vs. 2. In the event of failure to return said empty bottles, plaintiff is
THE HONORABLE COURT OF APPEALS and LA TONDEÑA DISTILLERS, ordered to indemnify defendant in the amount of P18,157.00
INC., respondents. representing the value of the bottles.

3. Costs against plaintiff. 1

LTDI appealed the decision to the Court of Appeals (CA-G.R. CV No. 36971). The
VITUG, J.:p appellate court reversed the court a quo and ruled against Washington; thus:

The initiatory suit was instituted on 02 November 1987 with the trial court WHEREFORE, the appealed decision is hereby REVERSED and
(docketed Civil Case No. 87-42639) for manual delivery with damages instituted SET ASIDE. The appellant, being the owner, is authorized to
by La Tondeña Distillers, Inc. ("LTDI"), against Distilleria Washington retain in its possession the 18,157 bottles registered in its name
("Washington"). LTDI, under a claim of ownership, sought to seize from delivered to it by the sheriff following their seizure from the
Distilleria Washington 18,157 empty "350 c.c. white flint bottles" bearing the appellee pursuant to the writ of replevin issued by the trial court
blown-in marks of "La Tondeña Inc." and "Ginebra San Miguel." The court, on on November 6, 1987. Costs against the appellee. 2
application of LTDI, issued an order of replevin on 05 November 1987 for the
seizure of the empty gin bottles from Washington. These bottles, it was averred, Washington is now before this Court assailing the reversal of the trial court's
were being used by Washington for its own "Gin Seven" products without the decision. In its petition, Washington points out that —
consent of LTDI.
4.00.a. Under the undisputed facts, petitioner is the lawful
LTDI asserted that, being the owner and registrant of the bottles, it was entitled owner of the personal properties (18,157 empty bottles)
to the protection so extended by Republic Act ("R.A.") No. 623, as amended, involved in the petition. Respondent LTDI is precluded by law
notwithstanding its sale of the Ginebra San Miguel gin product contained in said from claiming the same;
bottles.
4.00.b. The decision and resolution appealed from violate equity
Washington countered that R.A. No. 623, invoked by LTDI, should not apply to and applicable canons in the interpretation and construction of
gin, an alcoholic beverage which is unlike that of "soda water, mineral or aerated statutes; and
water, ciders, milks, cream, or other lawful beverages" mentioned in the law, and
that, in any case, ownership of the bottles should, considering the attendant facts 4.00.c. Liquor products are not covered by Republic Act. No. 623.
and circumstances, be held lawfully transferred to the buyers upon the sale of the The holding of the Court in Cagayan Valley Enterprises, Inc. vs.
gin and containers at a single price. Honorable Court of Appeals, 179 SCRA 218 [1989] should be

8|I P L P ar t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Definition)
reviewed and reconsidered in light of the Constitution and casks, barrels, kegs, boxes, steel cylinders, tanks, flasks,
House Bill No. 20585. 3 accumulators or other similar containers, the same being duly
marked or stamped and registered as herein provided, shall give
It is a fact that R.A. No. 623 extends trademark protection in the use of containers rise to a prima facie presumption that such use or possession is
duly registered with the Philippine Patent Office. The pertinent provisions of R.A. unlawful. 4
623, as amended, so reads:
As the outset, the Court must state that is sees no cogent reason for either
Sec. 1. Persons engaged or licensed to engage in the departing from or changing the basic rule it laid down in Cagayan Valley
manufacture, bottling, or selling of soda water, mineral or Enterprises, Inc., vs. Court of Appeals. 5 The Court has there held:
aerated waters, cider, milk, cream or other lawful beverages in
bottles, boxes, casks, kegs, or barrels, and other similar The above-quoted provisions grant protection to a qualified
containers, or in the manufacture, compressing or selling of manufacturer who successfully registered with the Philippine
gases such as oxygen, acetylene, nitrogen, carbon dioxide, Patent Office its duly stamped or marked bottles, boxes, casks
ammonia, hydrogen, chloride, helium, sulphur dioxide, butane, and other similar containers. The mere use of registered bottles
propane, freon, methyl chloride or similar gases contained in or containers without the written consent of the manufacturer
steel cylinders, tanks, flasks, accumulators or similar containers, is prohibited, the only exceptions being when they are used as
with their names or the names of their principals or products, containers for "sisi," "bagoong," "patis" and similar native
or other marks of ownership stamped or marked thereon, may products.
register with the Philippine Patent Office a description of the
names or marks, and the purpose for which the containers so It is an admitted fact that herein petitioner Cagayan buys form
marked are used by them, under the same conditions, rules, and junk dealers and retailers bottles which bear the marks or
regulations, made applicable by law or regulation to the names "La Tondeña, Inc." and "Ginebra San Miguel" and uses
issuance of trademarks. them as containers for its own liquor products. The contention
of Cagayan that the aforementioned bottles without the words
Sec. 2. It shall be unlawful for any person, without the written "properly of" indicated thereon are not the registered bottles of
consent of the manufacturer, bottler, or seller, who has LTI, since they do not conform with the statement or description
successfully registered the marks of ownership in accordance in the supporting affidavits attached to the original registration
with the provisions of the next preceding section, to fill such certificate and renewal, is untenable.
bottles, boxes, kegs, barrels, steel cylinders, tanks, flasks,
accumulators, or other similar containers so marked or Republic Act No. 623 which governs the registration of marked
stamped, for the purpose of sale, or to sell, dispose of, buy or bottles and containers merely requires that the bottles, in order
traffic in, or wantonly destroy the same, whether filled or not to to be eligible for registration, must be stamped or marked with
use the same for drinking vessels or glasses or drain pipes, the names of the manufacturers or the names of their principals
foundation pipes, for any other purpose than that registered by or products, or other marks of ownership. No drawings or labels
the manufacturer, bottler or seller. Any violation of this section are required but, instead, two photographs of the container,
shall be punished by a fine of not more than one thousand pesos duly signed by the applicant, showing clearly and legibly the
or imprisonment of not more than one year or both. names and other marks of ownership sought to be registered
and a bottle showing the name or other mark or ownership,
Sec. 3. The use by any person other than the registered irremovably stamped or marked, shall be submitted.
manufacturer, bottler or seller, without written permission of
the latter of any such bottle, cask, barrel, keg, box, steel xxx xxx xxx
cylinders, tanks, flask, accumulators, or other similar
containers, or the possession thereof without written
permission of the manufacturer, by any junk dealer or dealer in
9|I P L P ar t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Definition)
The claim of petitioner that hard liquor is not included under the Sec. 5. No action shall be brought under this Act against any
term "other lawful beverages" as provided in Section 1 of person to whom the registered manufacturer, bottler or seller,
Republic Act No. 623, as amended by Republic Act No. 5700, is has transferred by way of sale, any of the containers herein
without merit. The title of the law itself, which reads "An Act to referred to, but the sale of the beverage contained in the said
Regulate the Use of Duly Stamped or Marked Bottles, Boxes, containers shall not include the sale of the containers unless
Casks, Kegs, Barrels and Other Similar Containers" clearly specifically so provided.
shows the legislative intent to give protection to all marked
bottles and containers of all lawful beverages regardless of the Sec. 6. The provisions of this Act shall not be interpreted as
nature of their contents. The words "other lawful beverages" is prohibiting the use of bottles as containers for "sisi," "bagoong,"
used in its general sense, referring to all beverages not "patis," and similar native products.
prohibited by law. Beverage is defined as a liquor or liquid for
drinking. Hard liquor, although regulated, is not prohibited by Scarcely disputed are certain and specific industry practices in the sale of gin: The
law, hence it is within the purview and coverage of Republic Act manufacturer sells the product in marked containers, through dealers, to the
No. 623, as amended. 6 public in supermarkets, grocery shops, retail stores and other sales outlets. The
buyer takes the item; he is neither required to return the bottle nor required to
Given the nature of the action in Cagayan, as well as its factual milieu, the Court make a deposit to assure its return to the seller. He could return the bottle and
indeed hardly has had a choice but to sustain the registrant's right to the get a refund. A number of bottles at times find their way to commercial users. It
injunctive writ against the unauthorized use of its containers. The case before us, cannot be gainsaid that ownership of the containers does pass on to the
however, goes beyond just seeking to have such use stopped but it so takes on consumer albeit subject to the statutory limitation on the use of the registered
even the ownership issue as well. Parenthetically, petitioner is not here being containers and to the trademark right of the registrant. The statement in Section
charged with a violation of Section 2 of R.A. No. 623 or of the Trademark Law. The 5 of R.A. 623 to the effect that the "sale of beverage contained in the said
instant suit is one for replevin (manual delivery) where the claimant must be able containers shall not include the sale of the containers unless specifically so
to show convincingly that he is either the owner or clearly entitled to the provided" is not a rule of proscription. It is a rule of construction that, in keeping
possession of the object sought to be recovered. Replevin is a possessory action with the spirit and intent of the law, establishes at best a presumption (of non-
the gist of which focuses on the right of possession that, in turn, is dependent on conveyance of the container) and which by no means can be taken to be either
a legal basis that, not infrequently, looks to the ownership of the object sought to interdictive or conclusive in character. Upon the other hand, LTDI's sales invoice,
be replevied. stipulating that the "sale does not include the bottles with the blown-in marks of
ownership of La Tondeña Distillers," cannot affect those who are not privies
It is to be pointed out that a trademark refers to a word, name, symbol, emblem, thereto.
sign or device or any combination thereof adopted and used by a merchant to
identify, and distinguish from others, his goods of commerce. It is basically an While it may be unwarranted then for LTDI to simply seize the empty containers,
intellectual creation that is susceptible to ownership 7 and, consistently this Court finds it to be legally absurd, however, to still allow petitioner to recover
therewith, gives rise to its own elements of jus posidendi, jus utendi, jus fruendi, jus the possession thereof. The fact of the matter is that R.A. 623, as amended, in
disponendi, and jus abutendi, along with the applicable jus lex, comprising that affording trademark protection to the registrant, has additionally expressed
ownership. The incorporeal right, however, is distinct from the property in the a prima facie presumption of illegal use by a possessor whenever such use or
material object subject to it. Ownership in one does not necessarily vest possession is without the written permission of the registered manufacturer, a
ownership in the other. Thus, the transfer or assignment of the intellectual provision that is neither arbitrary nor without appropriate rationale. Indeed, the
property will not necessarily constitute a conveyance of the thing it covers, nor appellate court itself has made a finding of such unauthorized use by petitioner.
would a conveyance of the latter imply the transfer or assignment of the The Court sees no other logical purpose for petitioner's insistence to keep the
intellectual right. 8 bottles, except for such continued use. The practical and feasible alternative is to
merely require the payment of just compensation to petitioner for the bottles
R.A. No. 623 evidently does not disallow the sale or transfer of ownership of the seized from it by LTDI. Conventional wisdom, along with equity and justice to
marked bottles or containers. In fact, the contrary is implicit in the law; thus — both parties, dictates it.

10 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Definition)
WHEREFORE, the decision of the appellate court is MODIFIED by ordering LTDI
to pay petitioner just compensation for the seized bottles. Instead, however, of
remanding the case to the Court of Appeals to receive evidence on, and thereafter
resolve, the assessment thereof, this Court accepts and accordingly adopts the
quantification of P18,157.00 made by the trial court. No costs.

SO ORDERED.

Padilla, Bellosillo, Kapunan and Hermosisima, Jr., JJ., concur.

11 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Right ogf Priority)
Republic Act No. 8293 June 6, 1997

AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND


ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR
ITS POWERS AND FUNCTIONS, AND FOR OTHER PURPOSES

Section 131. Priority Right. - 131.1. An application for registration of a mark filed
in the Philippines by a person referred to in Section 3, and who previously duly
filed an application for registration of the same mark in one of those countries,
shall be considered as filed as of the day the application was first filed in the
foreign country.

131.2. No registration of a mark in the Philippines by a person described in this


section shall be granted until such mark has been registered in the country of
origin of the applicant.

131.3. Nothing in this section shall entitle the owner of a registration granted
under this section to sue for acts committed prior to the date on which his mark
was registered in this country: Provided, That, notwithstanding the foregoing, the
owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not
registered in the Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of its registration or sue
for unfair competition, without prejudice to availing himself of other remedies
provided for under the law.

131.4. In like manner and subject to the same conditions and requirements, the
right provided in this section may be based upon a subsequent regularly filed
application in the same foreign country: Provided, That any foreign application
filed prior to such subsequent application has been withdrawn, abandoned, or
otherwise disposed of, without having been laid open to public inspection and
without leaving any rights outstanding, and has not served, nor thereafter shall
serve, as a basis for claiming a right of priority. (Sec. 37, R.A. No. 166a)

12 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for
Republic of the Philippines
pants and shirts on April 11, 1932, and established a factory for the manufacture
SUPREME COURT
of said articles in the year 1937. In the following year (1938) her gross sales
Manila
amounted to P422,682.09. Neither the decision of the trial court nor that of the
Court of Appeals shows how much petitioner has spent or advertisement. But
EN BANC respondent in his brief says that petitioner "was unable to prove that she had
spent a single centavo advertising "Ang Tibay" shirts and pants prior to 1938. In
G.R. No. L-48226 December 14, 1942 that year she advertised the factory which she had just built and it was when this
was brought to the attention of the appellee that he consulted his attorneys and
ANA L. ANG, petitioner, eventually brought the present suit."
vs.
TORIBIO TEODORO, respondent. The trial court (Judge Quirico Abeto) presiding absolved the defendant from the
complaint, with costs against the plaintiff, on the grounds that the two
Cirilo Lim for petitioner. trademarks are dissimilar and are used on different and non-competing goods;
Marcial P. Lichauco and Manuel M. Mejia for respondent. that there had been no exclusive use of the trade-mark by the plaintiff; and that
there had been no fraud in the use of the said trade-mark by the defendant
because the goods on which it is used are essentially different from those of the
plaintiff. The second division of the Court of Appeals, composed of Justices
Bengson, Padilla, Lopez Vito, Tuason, and Alex Reyes, with Justice Padilla
as ponente, reversed that judgment, holding that by uninterrupted an exclusive
OZAETA, J.:
use since 191 in the manufacture of slippers and shoes, respondent's trade-mark
has acquired a secondary meaning; that the goods or articles on which the two
Petitioner has appealed to this Court by certiorari to reverse the judgment of the trade-marks are used are similar or belong to the same class; and that the use by
Court of Appeals reversing that of the Court of First Instance of Manila and petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No.
directing the Director of Commerce to cancel the registration of the trade-mark 666. The defendant Director of Commerce did not appeal from the decision of the
"Ang Tibay" in favor of said petitioner, and perpetually enjoining the latter from Court of Appeals.
using said trade-mark on goods manufactured and sold by her.
First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-
Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later hammer attack on the validity of respondent's trade-mark "Ang Tibay." He
as sole proprietor, has continuously used "Ang Tibay," both as a trade-mark and contends that the phrase "Ang Tibay" as employed by the respondent on the
as a trade-name, in the manufacture and sale of slippers, shoes, and indoor articles manufactured by him is a descriptive term because, "freely translate in
baseballs since 1910. He formally registered it as trade-mark on September 29, English," it means "strong, durable, lasting." He invokes section 2 of Act No. 666,
1915, and as trade-name on January 3, 1933. The growth of his business is a which provides that words or devices which related only to the name, quality, or
thrilling epic of Filipino industry and business capacity. Starting in an obscure description of the merchandise cannot be the subject of a trade-mark. He cites
shop in 1910 with a modest capital of P210 but with tireless industry and among others the case of Baxter vs. Zuazua (5 Phil., 16), which involved the trade-
unlimited perseverance, Toribio Teodoro, then an unknown young man making mark "Agua de Kananga" used on toilet water, and in which this Court held that
slippers with his own hands but now a prominent business magnate and the word "Kananga," which is the name of a well-known Philippine tree or its
manufacturer with a large factory operated with modern machinery by a great flower, could not be appropriated as a trade-mark any more than could the words
number of employees, has steadily grown with his business to which he has "sugar," "tobacco," or "coffee." On the other hand, counsel for the respondent, in
dedicated the best years of his life and which he has expanded to such an equally well-prepared and exhaustive brief, contend that the words "Ang
proportions that his gross sales from 1918 to 1938 aggregated P8,787,025.65. Tibay" are not descriptive but merely suggestive and may properly be regarded
His sales in 1937 amounted to P1,299,343.10 and in 1938, P1,133,165.77. His as fanciful or arbitrary in the legal sense. The cite several cases in which similar
expenses for advertisement from 1919 to 1938 aggregated P210,641.56. words have been sustained as valid trade-marks, such as "Holeproof" for
hosiery, 1 "ideal for tooth brushes, 2 and "Fashionknit" for neckties and sweaters. 3
13 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
We find it necessary to go into the etymology and meaning of the Tagalog words incapable of exclusive appropriation with reference to an article of the market,
"Ang Tibay" to determine whether they are a descriptive term, i.e., whether they because geographically or otherwise descriptive, might nevertheless have been
relate to the quality or description of the merchandise to which respondent has used so long and so exclusively by one producer with reference to his article that,
applied them as a trade-mark. The word "ang" is a definite article meaning "the" in that trade and to that branch of the purchasing public, the word or phrase has
in English. It is also used as an adverb, a contraction of the word "anong" (what come to mean that the article was his product. (G. & C. Merriam Co. vs. Salfield,
or how). For instance, instead of saying, "Anong ganda!" ("How beautiful!"), we 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neither
ordinarily say, "Ang ganda!" Tibay is a root word from which are derived the geographic nor descriptive, was originally capable of exclusive appropriation as
verb magpatibay (to strenghten; the nouns pagkamatibay (strength, a trade-mark. But were it not so, the application of the doctrine of secondary
durability), katibayan (proof, support, strength), katibay-tibayan (superior meaning made by the Court of Appeals could nevertheless be fully sustained
strength); and the adjectives matibay (strong, durable, because, in any event, by respondent's long and exclusive use of said phrase with
lasting), napakatibay (very strong), kasintibay or magkasintibay (as strong as, or reference to his products and his business, it has acquired a proprietary
of equal strength). The phrase "Ang Tibay" is an exclamation denoting connotation. (Landers, Frary, and Clark vs. Universal Cooler Corporation, 85 F.
administration of strength or durability. For instance, one who tries hard but fails [2d], 46.)
to break an object exclaims, "Ang tibay!" (How strong!") It may also be used in a
sentence thus, "Ang tibay ng sapatos mo!" (How durable your shoes are!") The Third. Petitioner's third assignment of error is, that the Court of Appeals erred in
phrase "ang tibay" is never used adjectively to define or describe an object. One holding that pants and shirts are goods similar to shoes and slippers within the
does not say, "ang tibay sapatos" or "sapatos ang tibay" is never used adjectively meaning of sections 3 and 7 of Act No. 666. She also contends under her fourth
to define or describe an object. One does not say, "ang tibay sapatos" or "sapatos assignment of error (which we deem convenient to pass upon together with the
ang tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na third) that there can neither be infringement of trade-mark under section 3 nor
matibay." unfair competition under section 7 through her use of the words "Ang Tibay" in
connection with pants and shirts, because those articles do not belong to the
From all of this we deduce that "Ang Tibay" is not a descriptive term within the same class of merchandise as shoes and slippers.
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. In this The question raised by petitioner involve the scope and application of sections
connection we do not fail to note that when the petitioner herself took the trouble 3,7, 11, 13, and 20 of the Trade-Mark Law (Act No. 666.) Section 3 provides that
and expense of securing the registration of these same words as a trademark of "any person entitled to the exclusive use of a trade-mark to designate the origin
her products she or her attorney as well as the Director of Commerce was or ownership of goods he has made or deals in, may recover damages in a civil
undoubtedly convinced that said words (Ang Tibay) were not a descriptive term actions from any person who has sold goods of a similar kind, bearing such trade-
and hence could be legally used and validly registered as a trade-mark. It seems mark . . . The complaining party . . . may have a preliminary injunction, . . . and
stultifying and puerile for her now to contend otherwise, suggestive of the story such injunction upon final hearing, if the complainant's property in the trade-
of sour grapes. Counsel for the petitioner says that the function of a trade-mark mark and the defendant's violation thereof shall be fully established, shall be
is to point distinctively, either by its own meaning or by association, to the origin made perpetual, and this injunction shall be part of the judgment for damages to
or ownership of the wares to which it is applied. That is correct, and we find that be rendered in the same cause." Section 7 provides that any person who, in selling
"Ang Tibay," as used by the respondent to designate his wares, had exactly his goods, shall give them the general appearance of the goods of another either
performed that function for twenty-two years before the petitioner adopted it as in the wrapping of the packages, or in the devices or words thereon, or in any
a trade-mark in her own business. Ang Tibay shoes and slippers are, by other feature of their appearance, which would be likely to influence purchasers
association, known throughout the Philippines as products of the Ang Tibay to believe that the goods offered are those of the complainant, shall be guilty of
factory owned and operated by the respondent Toribio Teodoro. unfair competition, and shall be liable to an action for damages and to an
injunction, as in the cases of trade-mark infringement under section 3. Section 11
Second. In her second assignment of error petitioner contends that the Court of requires the applicant for registration of a trade-mark to state, among others, "the
Appeals erred in holding that the words "Ang Tibay" had acquired a secondary general class of merchandise to which the trade-mark claimed has been
meaning. In view of the conclusion we have reached upon the first assignment of appropriated." Section 13 provides that no alleged trade-mark or trade name
error, it is unnecessary to apply here the doctrine of "secondary meaning" in shall be registered which is identical with a registered or known trade-mark
trade-mark parlance. This doctrine is to the effect that a word or phrase originally owned by another and appropriate to the same class of merchandise, or which to
14 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
nearly resembles another person's lawful trade-mark or trade-name as to be confusion in trade and that, therefore, there could be no objection to the
likely to cause confusion or mistake in the mind of the public, or to deceive use and registration of a well-known mark by a third party for a different
purchasers. And section 2 authorizes the Director of Commerce to class of goods. Since 1916 however, a growing sentiment began to arise
establish classes of merchandise for the purpose of the registration of trade-marks that in the selection of a famous mark by a third party, there was
and to determine the particular description of articles included in each class; it generally the hidden intention to "have a free ride" on the trade-mark
also provides that "an application for registration of a trade-mark shall be owner's reputation and good will. (Derenberg, Trade-Mark Protection &
registered only for one class of articles and only for the particular description of Unfair Trading, 1936 edition, p. 409.)
articles mentioned in said application."
In the present state of development of the law on Trade-Marks, Unfair
We have underlined the key words used in the statute: "goods of a similar kin," Competition, and Unfair Trading, the test employed by the courts to determine
"general class of merchandise," "same class of merchandise," "classes of whether noncompeting goods are or are not of the same class is confusion as to
merchandise," and "class of articles," because it is upon their implications that the origin of the goods of the second user. Although two noncompeting articles
the result of the case hinges. These phrases, which refer to the same thing, have may be classified under two different classes by the Patent Office because they
the same meaning as the phrase "merchandise of the same descriptive are deemed not to possess the same descriptive properties, they would,
properties" used in the statutes and jurisprudence of other jurisdictions. 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
The burden of petitioner's argument is that under sections 11 and 20 the confusion as to the origin, or personal source, of the second user's goods. They
registration by respondent of the trade-mark "Ang Tibay" for shoes and slippers would be considered as not falling under the same class only if they are so
is no safe-guard against its being used by petitioner for pants and shirts because dissimilar or so foreign to each other as to make it unlikely that the purchaser
the latter do not belong to the same class of merchandise or articles as the former; would think the first user made the second user's goods.
that she cannot be held guilty of infringement of trade-mark under section 3
because respondent's mark is not a valid trade-mark, nor has it acquired a Such construction of the law is induced by cogent reasons of equity and fair
secondary meaning; that pants and shirts do not possess the same descriptive dealing. The courts have come to realize that there can be unfair competition or
properties as shoes and slippers; that neither can she be held guilty of unfair unfair trading even if the goods are non-competing, and that such unfair trading
competition under section 7 because the use by her of the trade-mark "Ang can cause injury or damage to the first user of a given trade-mark, first, by
Tibay" upon pants and shirts is not likely to mislead the general public as to their prevention of the natural expansion of his business and, second, by having his
origin or ownership; and that there is now showing that she in unfairly or business reputation confused with and put at the mercy of the second user. Then
fraudulently using that mark "Ang Tibay" against the respondent. If we were noncompetitive products are sold under the same mark, the gradual whittling
interpreting the statute for the first time and in the first decade of the twentieth away or dispersion of the identity and hold upon the public mind of the mark
century, when it was enacted, and were to construe it strictly and literally, we created by its first user, inevitably results. The original owner is entitled to the
might uphold petitioner's contentions. But law and jurisprudence must keep preservation of the valuable link between him and the public that has been
abreast with the progress of mankind, and the courts must breathe life into the created by his ingenuity and the merit of his wares or services. Experience has
statutes if they are to serve their purpose. Our Trade-mark Law, enacted nearly demonstrated that when a well-known trade-mark is adopted by another even
forty years ago, has grown in its implications and practical application, like a for a totally different class of goods, it is done to get the benefit of the reputation
constitution, in virtue of the life continually breathed into it. It is not of merely and advertisements of the originator of said mark, to convey to the public a false
local application; it has its counterpart in other jurisdictions of the civilized world impression of some supposed connection between the manufacturer of the
from whose jurisprudence it has also received vitalizing nourishment. We have article sold under the original mark and the new articles being tendered to the
to apply this law as it has grown and not as it was born. Its growth or public under the same or similar mark. As trade has developed and commercial
development abreast with that of sister statutes and jurisprudence in other changes have come about, the law of unfair competition has expanded to keep
jurisdictions is reflected in the following observation of a well-known author: pace with the times and the element of strict competition in itself has ceased to
be the determining factor. The owner of a trade-mark or trade-name has a
This fundamental change in attitude first manifested itself in the year property right in which he is entitled to protection, since there is damage to him
1915-1917. Until about then, the courts had proceeded on the theory from confusion of reputation or goodwill in the mind of the public as well as from
that the same trade-mark, used on un-like goods, could not cause
15 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
confusion of goods. The modern trend is to give emphasis to the unfairness of the descriptive. These cases cites and relied upon by petitioner are obviously of no
acts and to classify and treat the issue as a fraud. decisive application to the case at bar.

A few of the numerous cases in which the foregoing doctrines have been laid We think reasonable men may not disagree that shoes and shirts are not as
down in one form or another will now be cited: (1) In Teodoro Kalaw Ng Khe vs. unrelated as fountain pens and razor blades, for instance. The mere relation or
Level Brothers Company (G.R. No. 46817), decided by this Court on April 18, 1941, association of the articles is not controlling. As may readily be noted from what
the respondent company (plaintiff below) was granted injunctive relief against we have heretofore said, the proprietary connotation that a trade-mark or trade-
the use by the petitioner of the trade-mark "Lux" and "Lifebuoy" for hair pomade, name has acquired is of more paramount consideration. The Court of Appeals
they having been originally used by the respondent for soap; The Court held in found in this case that by uninterrupted and exclusive use since 1910 of
effect that although said articles are noncompetitive, they are similar or belong respondent's registered trade-mark on slippers and shoes manufactured by him,
to the same class. (2) In Lincoln Motor Co. vs. Lincoln Automobile Co. (44 F. [2d], it has come to indicate the origin and ownership of said goods. It is certainly not
812), the manufacturer of the well-known Lincoln automobile was granted farfetched to surmise that the selection by petitioner of the same trade-mark for
injunctive relief against the use of the word "Lincoln" by another company as part pants and shirts was motivated by a desire to get a free ride on the reputation
of its firm name. (3) The case of Aunt Jemima Mills Co. vs. Rigney & Co. (247 F., and selling power it has acquired at the hands of the respondent. As observed in
407), involved the trade-mark "Aunt Jemima," originally used on flour, which the another case, 12 the field from which a person may select a trade-mark is
defendant attempted to use on syrup, and there the court held that the goods, practically unlimited, and hence there is no excuse for impinging upon or even
though different, are so related as to fall within the mischief which equity should closely approaching the mark of a business rival. In the unlimited field of choice,
prevent. (4) In Tiffany & Co., vs. Tiffany Productions, Inc. (264 N.Y.S., 459; 23 what could have been petitioner's purpose in selecting "Ang Tibay" if not for its
Trade-mark Reporter, 183), the plaintiff, a jewelry concern, was granted fame?
injunctive relief against the defendant, a manufacturer of motion pictures, from
using the name "Tiffany." Other famous cases cited on the margin, wherein the Lastly, in her fifth assignment of error petitioner seems to make a frantic effort
courts granted injunctive relief, involved the following trade-marks or trade- to retain the use of the mark "Ang Tibay." Her counsel suggests that instead of
names: "Kodak," for cameras and photographic supplies, against its use for enjoining her from using it, she may be required to state in her labels affixed to
bicycles. 4 "Penslar," for medicines and toilet articles, against its use for her products the inscription: "Not manufactured by Toribio Teodoro." We think
cigars; 5 "Rolls-Royce," for automobiles. against its use for radio tubes; 6 "Vogue," such practice would be unethical and unworthy of a reputable businessman. To
as the name of a magazine, against its use for hats; 7 "Kotex," for sanitary napkins, the suggestion of petitioner, respondent may say, not without justice though with
against the use of "Rotex" for vaginal syringes; 8 "Sun-Maid," for raisins, against a tinge of bitterness: "Why offer a perpetual apology or explanation as to the
its use for flour; 9 "Yale," for locks and keys, against its use for electric origin of your products in order to use my trade-mark instead of creating one of
flashlights; 10 and "Waterman," for fountain pens, against its use for razor your own?" On our part may we add, without meaning to be harsh, that a self-
blades. 11lawphil.net respecting person does not remain in the shelter of another but builds one of his
own.
Against this array of famous cases, the industry of counsel for the petitioner has
enabled him to cite on this point only the following cases: (1) Mohawk Milk The judgment of the Court of Appeals is affirmed, with costs against the petitioner
Products vs. General Distilleries Corporation (95 F. [2d], 334), wherein the court in the three instances. So ordered.
held that gin and canned milk and cream do not belong to the same class;
(2) Fawcett Publications, Inc. vs. Popular Mechanics Co. (80 F. [2d], 194), wherein Yulo, C.J., Moran, Paras and Bocobo, JJ., concur.
the court held that the words "Popular Mechanics" used as the title of a magazine
and duly registered as a trade-mark were not infringed by defendant's use of the
words "Modern Mechanics and Inventions" on a competitive magazine, because
the word "mechanics" is merely a descriptive name; and (3) Oxford Book Co. vs.
College Entrance Book Co. (98 F. [2d], 688), wherein the plaintiff unsuccessfully
attempted to enjoin the defendant from using the word "Visualized" in
connection with history books, the court holding that said word is merely

16 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
Republic of the Philippines that the validity of a cause for infringement is predicated upon colorable
SUPREME COURT imitation. The phrase "colorable imitation" denotes such a "close or
Manila ingenious imitation as to be calculated to deceive ordinary persons, or
such a resemblance to the original as to deceive an ordinary purchaser,
EN BANC giving such attention as a purchaser usually gives, and to cause him to
purchase the one supposing it to be the other."4
G.R. No. L-20635 March 31, 1966
2. That the word "tussin" figures as a component of both trademarks is
ETEPHA, A.G., petitioner, nothing to wonder at. The Director of Patents aptly observes that it is
vs. "the common practice in the drug and pharmaceutical industries to
DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, 'fabricate' marks by using syllables or words suggestive of the ailments
INC., respondents. for which they are intended and adding thereto distinctive prefixes or
suffixes".5 And appropriately to be considered now is the fact that,
concededly, the "tussin" (in Pertussin and Atussin) was derived from the
McClure, Salas and Gonzalez, for petitioner. Latin root-word "tussis" meaning cough.6
Sycip, Salazar, Manalo, Luna and Associates, for respondent.
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no
SANCHEZ, J.: indication of the origin of the goods; it is open for appropriation by
anyone. It is accordingly barred from registration as trademark. With
To the question: May trademark ATUSSIN be registered, given the fact that jurisprudence holding the line, we feel safe in making the statement that
PERTUSSIN, another trademark, had been previously registered in the Patent any other conclusion would result in "appellant having practically a
Office? — the Director of Patents answered affirmatively. Hence this appeal. monopoly"7 of the word "tussin" in a trademark.8

On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York While "tussin" by itself cannot thus be used exclusively to identify one's
corporation, sought registration of trademark "Atussin" placed on its "medicinal goods, it may properly become the subject of a trademark "by
preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid combination with another word or phrase".9 And this union of words is
(Vitamin C) used in the treatment of cough". The trademark is used exclusively in reflected in petitioner's Pertussin and respondent's Atussin, the first with
the Philippines since January 21, 1959.1 prefix "Per" and the second with Prefix "A".1äwphï1.ñët

Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. 3. A practical approach to the problem of similarity or dissimilarity is to
Petitioner claims that it will be damaged because Atussin is so confusedly similar go into the whole of the two trademarks pictured in their manner of
to its Pertussin (Registration No. 6089, issued on September 25, 1957) used on a display. Inspection should be undertaken from the viewpoint of a
preparation for the treatment of coughs, that the buying public will be misled into prospective buyer. The trademark complained of should be compared
believing that Westmont's product is that of petitioner's which allegedly enjoys and contrasted with the purchaser's memory (not in juxtaposition) of
goodwill. the trademark said to be infringed. 10 Some such factors as "sound;
appearance; form, style, shape, size or format; color; ideas connoted by
1. The objects of a trademark are "to point out distinctly the origin or marks; the meaning, spelling, and pronunciation, of words used; and the
ownership of the articles to which it is affixed, to secure to him who has setting in which the words appear" may be considered. 11 For, indeed,
been instrumental in bringing into market a superior article or trademark infringement is a form of unfair competition. 12
merchandise the fruit of his industry and skill, and to prevent fraud and
imposition."2 Our over-all task then is to ascertain whether or not We take a casual look at the two labels — without spelling out the details
Atussin so resembles Pertussin "as to be likely, when applied to or used — bearing in mind the easy-to-remember earmarks thereof.
in connection with the goods ... of the applicant, to cause confusion or Respondent's label underscores the trademark Atussin in bold, block
mistake or to deceive purchasers".3 And, we are to be guided by the rule
17 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
letters horizontally written. In petitioner's, on the other hand, Pertussin 5. As we take up Pertussin and Atussin once again, we cannot escape
is printed diagonally upwards and across in semiscript style with notice of the fact that the two words do not sound alike — when
flourishes and with only the first letter "P" capitalized. Each label plainly pronounced. There is not much phonetic similarity between the two. The
shows the source of the medicine: petitioner's at the foot bears "Etepha Solicitor General well-observed that in Pertussin the pronunciation of
Ltd. Schaan Fl", and on top, "Apothecary E. Taeschner's"; respondent's the prefix "Per", whether correct or incorrect, includes a combination of
projects "Westmont Pharmaceuticals, Inc. New York, USA" at the three letters P, e and r; whereas, in Atussin the whole starts with the
bottoms, and on the lower left side the word "Westmont" upon a white single letter A added to suffix "tussin". Appeals to the ear are disimilar.
diamond shaped enclosure and in red ink — a color different from that And this, because in a word combination, the part that comes first is
of the words above and below it. Printed prominently along the left, the most pronounced. An expositor of the applicable rule here is the
bottom and right edges of petitioner's label are indications of the use: decision in the Syrocol-Cheracol controversy. 15 There, the ruling is that
"for bronchial catarrh — whopping-cough — coughs and asthma". trademark Syrocol (a cough medicine preparation) is not confusedly
Respondent's for its part briefly represents what its produce actually is similar to trademark Cheracol (also a cough medicine preparation).
- a "cough syrup". The two labels are entirely different in colors, contents, Reason: the two words "do not look or sound enough alike to justify a
arrangement of words thereon, sizes, shapes and general appearance. holding of trademark infringement", and the "only similarity is in the last
The contrasts in pictorial effects and appeals to the eye is so pronounced syllable, and that is not uncommon in names given drug compounds".
that the label of one cannot be mistaken for that of the other, not even by
persons unfamiliar with the two trademarks. 13 6. In the solution of a trademark infringement problem, regard too
should be given to the class of persons who buy the particular product
On this point the following culled from a recent decision of the United and the circumstances ordinarily attendant to its acquisition. 16 The
States Court of Customs and Patent Appeals (June 15, 1956) is medicinal preparation clothed with the trademarks in question, are
persuasive: 14 unlike articles of everyday use such as candies, ice cream, milk, soft
drinks and the like which may be freely obtained by anyone, anytime,
Confusion is likely between trademarks, however, only if anywhere. Petitioner's and respondent's products are to be dispensed
their over-all presentations in any of the particulars of upon medical prescription. The respective labels say so. An intending
sound, appearance, or meaning are such as would lead the buyer must have to go first to a licensed doctor of medicine; he receives
purchasing public into believing that the products to which the instructions as to what to purchase; he reads the doctor's prescription;
marks are applied emanated from the same source. In testing he knows what he is to buy. He is not of the incautious, unwary,
this issue, fixed legal rules exist — if not in harmony, certainly unobservant or unsuspecting type; he examines the product sold to him;
in abundance — but, in the final analysis, the application of he checks to find out whether it conforms to the medical prescription.
these rules in any given situation necessarily reflects a matter of The common trade channel is the pharmacy or the drugstore. Similarly,
individual judgment largely predicated on opinion. There is, the pharmacist or druggist verifies the medicine sold. The margin of
however, and can be no disagreement with the rule that the error in the acquisition of one for the other is quite remote.
purchaser is confused, if at all, by the marks as a whole.
We concede the possibility that buyers might be able to obtain Pertussin or
4. We now consider exclusively the two words — Pertussin and Atussin Attusin without prescription. When this happens, then the buyer must be one
— as they appear on the respective labels. As previously adverted to, throughly familiar with what he intends to get, else he would not have the
these words are presented to the public in different styles of writing and temerity to ask for a medicine — specifically needed to cure a given ailment. In
methods of design. The horizontal plain, block letters of Atussin and the which case, the more improbable it will be to palm off one for the other. For a
diagonally and artistically upward writing of Pertussin leave distinct person who purchases with open eyes is hardly the man to be deceived.
visual impressions. One look is enough to denude the mind of that
illuminating similarity so essential for a trademark infringement case to For the reasons given, the appealed decision of the respondent Director of
prosper. Patents — giving due course to the application for the registration of trademark
ATTUSIN is hereby affirmed. Costa against petitioner. So ordered.

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Bengzon, C.J., Bautista Angelo, Concepcion, Reyes, J.B.L., Barrera, Regala,
Makalintal, Bengzon, J. P., and Zaldivar, JJ., concur.
Dizon, J., took no part.

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Republic of the Philippines That the respondent-applicant's use of the said mark BARBIZON
SUPREME COURT which resembles the trademark used and owned by opposer,
Manila constitutes an unlawful appropriation of a mark previously used
in the Philippines and not abandoned and therefore a statutory
FIRST DIVISION violation of Section 4 (d) of Republic Act No. 166, as amended. 1

This was docketed as Inter Partes Case No. 686 (IPC No. 686). After filing
of the pleadings, the parties submitted the case for decision.
G.R. No. 114508 November 19, 1999
On June 18, 1974, the Director of Patents rendered judgment dismissing the
PRIBHDAS J. MIRPURI, petitioner, opposition and giving due course to Escobar's application, thus:
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON WHEREFORE, the opposition should be, as it is hereby,
CORPORATION, respondents. DISMISSED. Accordingly, Application Serial No. 19010 for the
registration of the trademark BARBIZON, of respondent Lolita
R. Escobar, is given due course.

PUNO, J.: IT IS SO ORDERED. 2

The Convention of Paris for the Protection of Industrial Property is a multi-lateral This decision became final and on September 11, 1974, Lolita Escobar
treaty which the Philippines bound itself to honor and enforce in this country. As was issued a certificate of registration for the trademark "Barbizon." The
to whether or not the treaty affords protection to a foreign corporation against a trademark was "for use in "brassieres and lady's underwear garments
Philippine applicant for the registration of a similar trademark is the principal like panties." 3
issue in this case.
Escobar later assigned all her rights and interest over the trademark to petitioner
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri who, under his firm name then, the "Bonito Enterprises," was
Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the the sole and exclusive distributor of Escobar's "Barbizon" products.
registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments. Escobar alleged that she had been manufacturing and selling In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit
these products under the firm name "L & BM Commercial" since March 3, 1970. of Use of the trademark required under Section 12 of Republic Act (R.A.) No. 166,
the Philippine Trademark Law. Due to this failure, the Bureau of Patents
Private respondent Barbizon Corporation, a corporation organized and doing cancelled Escobar's certificate of registration.
business under the laws of New York, U.S.A., opposed the application. It claimed
that: On May 27, 1981, Escobar reapplied for registration of the cancelled trademark.
Mirpuri filed his own application for registration of Escobar's trademark. Escobar
The mark BARBIZON of respondent-applicant is confusingly later assigned her application to herein petitioner and this application was
similar to the trademark BARBIZON which opposer owns and opposed by private respondent. The case was docketed as Inter Partes Case No.
has not abandoned. 2049 (IPC No. 2049).

That opposer will be damaged by the registration of the mark In its opposition, private respondent alleged that:
BARBIZON and its business reputation and goodwill will suffer
great and irreparable injury.

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(a) The Opposer has adopted the trademark BARBIZON (word), least 40 years and has enjoyed international reputation and
sometime in June 1933 and has then used it on various kinds of good will for their quality. To protect its registrations in
wearing apparel. On August 14, 1934, Opposer obtained from countries where the goods covered by the registrations are
the United States Patent Office a more recent registration of the being sold, Opposer has procured the registration of the
said mark under Certificate of Registration No. 316,161. On trademark BARBIZON in the following countries: Australia,
March 1, 1949, Opposer obtained from the United States Patent Austria, Abu Dhabi, Argentina, Belgium, Bolivia, Bahrain,
Office a more recent registration for the said trademark under Canada, Chile, Colombia, Denmark, Ecuador, France, West
Certificate of Registration No. 507,214, a copy of which is Germany, Greece, Guatemala, Hongkong, Honduras, Italy, Japan,
herewith attached as Annex "A." Said Certificate of Registration Jordan, Lebanon, Mexico, Morocco, Panama, New Zealand,
covers the following goods — wearing apparel: robes, pajamas, Norway, Sweden, Switzerland, Syria, El Salvador, South Africa,
lingerie, nightgowns and slips; Zambia, Egypt, and Iran, among others;

(b) Sometime in March 1976, Opposer further adopted the (f) To enhance its international reputation for quality goods and
trademark BARBIZON and Bee design and used the said mark in to further promote goodwill over its name, marks and products,
various kinds of wearing apparel. On March 15, 1977, Opposer Opposer has extensively advertised its products, trademarks
secured from the United States Patent Office a registration of the and name in various publications which are circulated in the
said mark under Certificate of Registration No. 1,061,277, a copy United States and many countries around the world, including
of which is herein enclosed as Annex "B." The said Certificate of the Philippines;
Registration covers the following goods: robes, pajamas,
lingerie, nightgowns and slips; (g) The trademark BARBIZON was fraudulently registered in
the Philippines by one Lolita R. Escobar under Registration No.
(c) Still further, sometime in 1961, Opposer adopted the 21920, issued on September 11, 1974, in violation of Article 189
trademark BARBIZON and a Representation of a Woman and (3) of the Revised Penal Code and Section 4 (d) of the Trademark
thereafter used the said trademark on various kinds of wearing Law. Herein respondent applicant acquired by assignment the
apparel. Opposer obtained from the United States Patent Office "rights" to the said mark previously registered by Lolita
registration of the said mark on April 5, 1983 under Certificate Escobar, hence respondent-applicant's title is vitiated by the
of Registration No. 1,233,666 for the following goods: wearing same fraud and criminal act. Besides, Certificate of Registration
apparel: robes, pajamas, nightgowns and lingerie. A copy of the No. 21920 has been cancelled for failure of either Lolita Escobar
said certificate of registration is herewith enclosed as Annex "C." or herein respondent-applicant, to seasonably file the statutory
affidavit of use. By applying for a re-registration of the mark
(d) All the above registrations are subsisting and in force and BARBIZON subject of this opposition, respondent-applicant
Opposer has not abandoned the use of the said trademarks. In seeks to perpetuate the fraud and criminal act committed by
fact, Opposer, through a wholly-owned Philippine subsidiary, Lolita Escobar.
the Philippine Lingerie Corporation, has been manufacturing
the goods covered by said registrations and selling them to (h) Opposer's BARBIZON as well as its BARBIZON and Bee
various countries, thereby earning valuable foreign exchange Design and BARBIZON and Representation of a Woman
for the country. As a result of respondent-applicant's trademarks qualify as well-known trademarks entitled to
misappropriation of Opposer's BARBIZON trademark, protection under Article 6bis of the Convention of Paris for the
Philippine Lingerie Corporation is prevented from selling its Protection of Industrial Property and further amplified by the
goods in the local market, to the damage and prejudice of Memorandum of the Minister of Trade to the Honorable
Opposer and its wholly-owned subsidiary. Director of Patents dated October 25, 1983 [sic], 4 Executive
Order No. 913 dated October 7, 1963 and the Memorandum of
(e) The Opposer's goods bearing the trademark BARBIZON have the Minister of Trade and Industry to the Honorable Director of
been used in many countries, including the Philippines, for at Patents dated October 25, 1983.
21 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
(i) The trademark applied for by respondent applicant is SO ORDERED. 7
identical to Opposer's BARBIZON trademark and constitutes the
dominant part of Opposer's two other marks namely, Private respondent questioned this decision before the Court of Appeals in CA-
BARBIZON and Bee design and BARBIZON and a Representation G.R. SP No. 28415. On April 30, 1993, the Court of Appeals reversed the Director
of a Woman. The continued use by respondent-applicant of of Patents finding that IPC No. 686 was not barred by judgment in IPC No. 2049
Opposer's trademark BARBIZON on goods belonging to Class 25 and ordered that the case be remanded to the Bureau of Patents for further
constitutes a clear case of commercial and criminal piracy and if proceedings, viz:
allowed registration will violate not only the Trademark Law
but also Article 189 of the Revised Penal Code and the WHEREFORE, the appealed Decision No. 92-13 dated June 18,
commitment of the Philippines to an international treaty. 5 1992 of the Director of Patents in Inter Partes Case No. 2049 is
hereby SET ASIDE; and the case is hereby remanded to the
Replying to private respondent's opposition, petitioner raised the Bureau of Patents for further proceedings, in accordance with
defense of res judicata. this pronouncement. No costs. 8

On March 2, 1982, Escobar assigned to petitioner the use of the business name In a Resolution dated March 16, 1994, the Court of Appeals denied
"Barbizon International." Petitioner registered the name with the Department of reconsideration of its decision. 9 Hence, this recourse.
Trade and Industry (DTI) for which a certificate of registration was issued in
1987. Before us, petitioner raises the following issues:

Forthwith, private respondent filed before the Office of Legal Affairs of the DTI a 1. WHETHER OR NOT THE DECISION OF THE DIRECTOR OF
petition for cancellation of petitioner's business name. PATENTS IN INTER PARTES CASE NO. 686 RENDERED ON JUNE
18, 1974, ANNEX C HEREOF, CONSTITUTED RES JUDICATA IN
On November 26, 1991, the DTI, Office of Legal Affairs, cancelled petitioner's SO FAR AS THE CASE BEFORE THE DIRECTOR OF PATENTS IS
certificate of registration, and declared private respondent the owner and prior CONCERNED;
user of the business name "Barbizon International." Thus:
2. WHETHER OR NOT THE DIRECTOR OF PATENTS
WHEREFORE, the petition is hereby GRANTED and petitioner is CORRECTLY APPLIED THE PRINCIPLE OF RES JUDICATA IN
declared the owner and prior user of the business name DISMISSING PRIVATE RESPONDENT BARBIZON'S OPPOSITION
"BARBIZON INTERNATIONAL" under Certificate of Registration TO PETITIONER'S APPLICATION FOR REGISTRATION FOR THE
No. 87-09000 dated March 10, 1987 and issued in the name of TRADEMARK BARBIZON, WHICH HAS SINCE RIPENED TO
respondent, is [sic] hereby ordered revoked and cancelled. . . . . 6 CERTIFICATE OF REGISTRATION NO. 53920 ON NOVEMBER
16, 1992;
Meanwhile, in IPC No. 2049, the evidence of both parties were received by the
Director of Patents. On June 18, 1992, the Director rendered a decision declaring 3. WHETHER OR NOT THE REQUISITE THAT A "JUDGMENT ON
private respondent's opposition barred by res judicata and giving due course to THE MERITS" REQUIRED A "HEARING WHERE BOTH PARTIES
petitioner's application for registration, to wit: ARE SUPPOSED TO ADDUCE EVIDENCE" AND WHETHER THE
JOINT SUBMISSION OF THE PARTIES TO A CASE ON THE BASIS
WHEREFORE, the present Opposition in Inter Partes Case No. OF THEIR RESPECTIVE PLEADINGS WITHOUT PRESENTING
2049 is hereby DECLARED BARRED by res judicata and is TESTIMONIAL OR DOCUMENTARY EVIDENCE FALLS WITHIN
hereby DISMISSED. Accordingly, Application Serial No. 45011 THE MEANING OF "JUDGMENT ON THE MERITS" AS ONE OF
for trademark BARBIZON filed by Pribhdas J. Mirpuri is GIVEN THE REQUISITES TO CONSTITUTE RES JUDICATA;
DUE COURSE.

22 | I P L P a r t I
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4. WHETHER A DECISION OF THE DEPARTMENT OF TRADE In the Middle Ages, the use of many kinds of marks on a variety of goods was
AND INDUSTRY CANCELLING PETITIONER'S FIRM NAME commonplace. Fifteenth century England saw the compulsory use of identifying
"BARBIZON INTERNATIONAL" AND WHICH DECISION IS STILL marks in certain trades. There were the baker's mark on bread, bottlemaker's
PENDING RECONSIDERATION NEVER OFFERED IN EVIDENCE marks, smith's marks, tanner's marks, watermarks on paper, etc. 18 Every guild
BEFORE THE DIRECTOR OF PATENTS IN INTER PARTES CASE had its own mark and every master belonging to it had a special mark of his own.
NO. 2049 HAS THE RIGHT TO DECIDE SUCH CANCELLATION The marks were not trademarks but police marks compulsorily imposed by the
NOT ON THE BASIS OF THE BUSINESS NAME LAW (AS sovereign to let the public know that the goods were not "foreign" goods
IMPLEMENTED BY THE BUREAU OF DOMESTIC TRADE) BUT smuggled into an area where the guild had a monopoly, as well as to aid in tracing
ON THE BASIS OF THE PARIS CONVENTION AND THE defective work or poor craftsmanship to the artisan. 19 For a similar reason,
TRADEMARK LAW (R.A. 166) WHICH IS WITHIN THE merchants also used merchants' marks. Merchants dealt in goods acquired from
ORIGINAL AND EXCLUSIVE JURISDICTION OF THE DIRECTOR many sources and the marks enabled them to identify and reclaim their goods
OF PATENTS. 10 upon recovery after shipwreck or piracy. 20

Before ruling on the issues of the case, there is need for a brief background on the With constant use, the mark acquired popularity and became voluntarily
function and historical development of trademarks and trademark law. adopted. It was not intended to create or continue monopoly but to give the
customer an index or guarantee of quality. 21 It was in the late 18th century when
A "trademark" is defined under R.A. 166, the Trademark Law, as including "any the industrial revolution gave rise to mass production and distribution of
word, name, symbol, emblem, sign or device or any combination thereof adopted consumer goods that the mark became an important instrumentality of trade and
and used by a manufacturer or merchant to identify his goods and distinguish commerce. 22 By this time, trademarks did not merely identify the goods; they
them from those manufactured, sold or dealt in by others. 11 This definition has also indicated the goods to be of satisfactory quality, and thereby stimulated
been simplified in R.A. No. 8293, the Intellectual Property Code of the Philippines, further purchases by the consuming public. 23 Eventually, they came to symbolize
which defines a "trademark" as "any visible sign capable of distinguishing the goodwill and business reputation of the owner of the product and became a
goods." 12 In Philippine jurisprudence, the function of a trademark is to point out property right protected by law. 24 The common law developed the doctrine of
distinctly the origin or ownership of the goods to which it is affixed; to secure to trademarks and tradenames "to prevent a person from palming off his goods as
him, who has been instrumental in bringing into the market a superior article of another's, from getting another's business or injuring his reputation by unfair
merchandise, the fruit of his industry and skill; to assure the public that they are means, and, from defrauding the public." 25 Subsequently, England and the United
procuring the genuine article; to prevent fraud and imposition; and to protect the States enacted national legislation on trademarks as part of the law regulating
manufacturer against substitution and sale of an inferior and different article as unfair trade. 26 It became the right of the trademark owner to exclude others from
his product. 13 the use of his mark, or of a confusingly similar mark where confusion resulted in
diversion of trade or financial injury. At the same time, the trademark served as
Modern authorities on trademark law view trademarks as performing three a warning against the imitation or faking of products to prevent the imposition of
distinct functions: (1) they indicate origin or ownership of the articles to which fraud upon the public. 27
they are attached; (2) they guarantee that those articles come up to a certain
standard of quality; and (3) they advertise the articles they symbolize. 14 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
Symbols have been used to identify the ownership or origin of articles for several upon the public mind an anonymous and impersonal guaranty of satisfaction,
centuries. 15 As early as 5,000 B.C., markings on pottery have been found by creating a desire for further satisfaction. In other words, the mark actually sells
archaeologists. Cave drawings in southwestern Europe show bison with symbols the goods. 28 The mark has become the "silent salesman," the conduit through
on their flanks. 16 Archaeological discoveries of ancient Greek and Roman which direct contact between the trademark owner and the consumer is assured.
inscriptions on sculptural works, paintings, vases, precious stones, glassworks, It has invaded popular culture in ways never anticipated that it has become a
bricks, etc. reveal some features which are thought to be marks or symbols. These more convincing selling point than even the quality of the article to which it
marks were affixed by the creator or maker of the article, or by public authorities refers. 29 In the last half century, the unparalleled growth of industry and the
as indicators for the payment of tax, for disclosing state monopoly, or devices for rapid development of communications technology have enabled trademarks,
the settlement of accounts between an entrepreneur and his workmen. 17 tradenames and other distinctive signs of a product to penetrate regions where
23 | I P L P a r t I
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the owner does not actually manufacture or sell the product itself. Goodwill is no Neither party took testimony nor adduced documentary
longer confined to the territory of actual market penetration; it extends to zones evidence. They submitted the case for decision based on the
where the marked article has been fixed in the public mind through pleadings which, together with the pertinent records, have all
advertising. 30 Whether in the print, broadcast or electronic communications been carefully considered.
medium, particularly on the Internet, 31 advertising has paved the way for growth
and expansion of the product by creating and earning a reputation that crosses Accordingly, the only issue for my disposition is whether or not
over borders, virtually turning the whole world into one vast marketplace. the herein opposer would probably be damaged by the
registration of the trademark BARBIZON sought by the
This is the mise-en-scene of the present controversy. Petitioner brings this action respondent-applicant on the ground that it so resembles the
claiming that "Barbizon" products have been sold in the Philippines since 1970. trademark BARBIZON allegedly used and owned by the former
Petitioner developed this market by working long hours and spending to be "likely to cause confusion, mistake or to deceive
considerable sums of money on advertisements and promotion of the trademark purchasers."
and its products. Now, almost thirty years later, private respondent, a foreign
corporation, "swaggers into the country like a conquering hero," usurps the On record, there can be no doubt that respondent-applicant's
trademark and invades petitioner's market. 32 Justice and fairness dictate that sought-to-be-registered trademark BARBIZON is similar, in fact
private respondent be prevented from appropriating what is not its own. Legally, obviously identical, to opposer's alleged trademark BARBIZON,
at the same time, private respondent is barred from questioning petitioner's in spelling and pronunciation. The only appreciable but very
ownership of the trademark because of res judicata. 33 negligible difference lies in their respective appearances or
manner of presentation. Respondent-applicant's trademark is
Literally, res judicata means a matter adjudged, a thing judicially acted upon or in bold letters (set against a black background), while that of the
decided; a thing or matter settled by judgment. 34 In res judicata, the judgment in opposer is offered in stylish script letters.
the first action is considered conclusive as to every matter offered and received
therein, as to any other admissible matter which might have been offered for that It is opposer's assertion that its trademark BARBIZON has been
purpose, and all other matters that could have been adjudged therein. 35 Res used in trade or commerce in the Philippines prior to the date of
judicata is an absolute bar to a subsequent action for the same cause; and its application for the registration of the identical mark BARBIZON
requisites are: (a) the former judgment or order must be final; (b) the judgment by the respondent-applicant. However, the allegation of facts in
or order must be one on the merits; (c) it must have been rendered by a court opposer's verified notice of opposition is devoid of such
having jurisdiction over the subject matter and parties; (d) there must be material information. In fact, a reading of the text of said verified
between the first and second actions, identity of parties, of subject matter and of opposition reveals an apparent, if not deliberate, omission of the
causes of action. 36 date (or year) when opposer's alleged trademark BARBIZON
was first used in trade in the Philippines (see par. No. 1, p. 2,
The Solicitor General, on behalf of respondent Director of Patents, has joined Verified Notice of Opposition, Rec.). Thus, it cannot here and
cause with petitioner. Both claim that all the four elements of res judicata have now be ascertained whether opposer's alleged use of the
been complied with: that the judgment in IPC No. 686 was final and was rendered trademark BARBIZON could be prior to the use of the identical
by the Director of Patents who had jurisdiction over the subject matter and mark by the herein respondent-applicant, since the opposer
parties; that the judgment in IPC No. 686 was on the merits; and that the lack of attempted neither to substantiate its claim of use in local
a hearing was immaterial because substantial issues were raised by the parties commerce with any proof or evidence. Instead, the opposer
and passed upon by the Director of Patents. 37 submitted the case for decision based merely on the pleadings.

The decision in IPC No. 686 reads as follows: On the other hand, respondent-applicant asserted in her
amended application for registration that she first used the
xxx xxx xxx. trademark BARBIZON for brassiere (or "brasseire") and ladies
underwear garments and panties as early as March 3, 1970. Be
that as it may, there being no testimony taken as to said date of
24 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
first use, respondent-applicant will be limited to the filing date, prior use in the Philippines, and the fraudulent registration of the mark in
June 15, 1970, of her application as the date of first use (Rule violation of Article 189 of the Revised Penal Code. Private respondent also cited
173, Rules of Practice in Trademark Cases). protection of the trademark under the Convention of Paris for the Protection of
Industrial Property, specifically Article 6bis thereof, and the implementation of
From the foregoing, I conclude that the opposer has not made Article 6bis by two Memoranda dated November 20, 1980 and October 25, 1983
out a case of probable damage by the registration of the of the Minister of Trade and Industry to the Director of Patents, as well as
respondent-applicant's mark BARBIZON. Executive Order (E.O.) No. 913.

WHEREFORE, the opposition should be, as it is hereby, The Convention of Paris for the Protection of Industrial Property, otherwise
DISMISSED. Accordingly, Application Serial No. 19010, for the known as the Paris Convention, is a multilateral treaty that seeks to protect
registration of the trademark BARBIZON of respondent Lolita R. industrial property consisting of patents, utility models, industrial designs,
Escobar, is given due course.38 trademarks, service marks, trade names and indications of source or appellations
of origin, and at the same time aims to repress unfair competition. 41 The
The decision in IPC No. 686 was a judgment on the merits and it was error for the Convention is essentially a compact among various countries which, as members
Court of Appeals to rule that it was not. A judgment is on the merits when it of the Union, have pledged to accord to citizens of the other member countries
determines the rights and liabilities of the parties based on the disclosed facts, trademark and other rights comparable to those accorded their own citizens by
irrespective of formal, technical or dilatory objections. 39 It is not necessary that their domestic laws for an effective protection against unfair competition. 42 In
a trial should have been conducted. If the court's judgment is general, and not short, foreign nationals are to be given the same treatment in each of the member
based on any technical defect or objection, and the parties had a full legal countries as that country makes available to its own citizens. 43 Nationals of the
opportunity to be heard on their respective claims and contentions, it is on the various member nations are thus assured of a certain minimum of international
merits although there was no actual hearing or arguments on the facts of the protection of their industrial property. 44
case. 40 In the case at bar, the Director of Patents did not dismiss private
respondent's opposition on a sheer technicality. Although no hearing was The Convention was first signed by eleven countries in Paris on March 20,
conducted, both parties filed their respective pleadings and were given 1883. 45 It underwent several revisions — at Brussels in 1900, at Washington in
opportunity to present evidence. They, however, waived their right to do so and 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958, 46 and at
submitted the case for decision based on their pleadings. The lack of evidence did Stockholm in 1967. Both the Philippines and the United States of America, herein
not deter the Director of Patents from ruling on the case, particularly on the issue private respondent's country, are signatories to the Convention. The United
of prior use, which goes into the very substance of the relief sought by the parties. States acceded on May 30, 1887 while the Philippines, through its Senate,
Since private respondent failed to prove prior use of its trademark, Escobar's concurred on May 10, 1965. 47 The Philippines' adhesion became effective on
claim of first use was upheld. September 27, 1965, 48 and from this date, the country obligated itself to honor
and enforce the provisions of the Convention. 49
The judgment in IPC No. 686 being on the merits, petitioner and the Solicitor
General allege that IPC No. 686 and IPC No. 2049 also comply with the fourth In the case at bar, private respondent anchors its cause of action on the first
requisite of res judicata, i.e., they involve the same parties and the same subject paragraph of Article 6bis of the Paris Convention which reads as follows:
matter, and have identical causes of action.
Article 6bis
Undisputedly, IPC No. 686 and IPC No. 2049 involve the same parties and the
same subject matter. Petitioner herein is the assignee of Escobar while private (1) The countries of the Union undertake, either
respondent is the same American corporation in the first case. The subject matter administratively if their legislation so permits, or at the request
of both cases is the trademark "Barbizon." Private respondent counter-argues, of an interested party, to refuse or to cancel the registration and
however, that the two cases do not have identical causes of action. New causes of to prohibit the use, of a trademark which constitutes a
action were allegedly introduced in IPC No. 2049, such as the prior use and reproduction, an imitation, or a translation, liable to create
registration of the trademark in the United States and other countries worldwide, confusion, of a mark considered by the competent authority of

25 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
the country of registration or use to be well-known in that Pursuant to the Paris Convention for the Protection of Industrial
country as being already the mark of a person entitled to the Property to which the Philippines is a signatory, you are hereby
benefits of this Convention and used for identical or similar directed to reject all pending applications for Philippine
goods. These provisions shall also apply when the essential part registration of signature and other world-famous trademarks
of the mark constitutes a reproduction of any such well-known by applicants other than its original owners or users.
mark or an imitation liable to create confusion therewith.
The conflicting claims over internationally known trademarks
(2) A period of at least five years from the date of registration involve such name brands as Lacoste, Jordache, Vanderbilt,
shall be allowed for seeking the cancellation of such a mark. The Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la
countries of the Union may provide for a period within which Renta, Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene,
the prohibition of use must be sought. Lanvin and Ted Lapidus.

(3) No time limit shall be fixed for seeking the cancellation or It is further directed that, in cases where warranted, Philippine
the prohibition of the use of marks registered or used in bad registrants of such trademarks should be asked to surrender
faith. 50 their certificates of registration, if any, to avoid suits for
damages and other legal action by the trademarks' foreign or
This Article governs protection of well-known trademarks. Under the local owners or original users.
first paragraph, each country of the Union bound itself to undertake to
refuse or cancel the registration, and prohibit the use of a trademark You are also required to submit to the undersigned a progress
which is a reproduction, imitation or translation, or any essential part of report on the matter.
which trademark constitutes a reproduction, liable to create confusion,
of a mark considered by the competent authority of the country where For immediate compliance. 55
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 Three years later, on October 25, 1983, then Minister Roberto Ongpin issued
for identical or similar goods. another Memorandum to the Director of Patents, viz:

Art. 6bis was first introduced at The Hague in 1925 and amended in Lisbon in Pursuant to Executive Order No. 913 dated 7 October 1983
1952. 51 It is a self-executing provision and does not require legislative enactment which strengthens the rule-making and adjudicatory powers of
to give it effect in the member country. 52 It may be applied directly by the the Minister of Trade and Industry and provides inter alia, that
tribunals and officials of each member country by the mere publication or "such rule-making and adjudicatory powers should be
proclamation of the Convention, after its ratification according to the public law revitalized in order that the Minister of Trade and Industry can
of each state and the order for its execution. 53 . . . apply more swift and effective solutions and remedies to old
and new problems . . . such as infringement of internationally-
The essential requirement under Article 6bis is that the trademark to be known tradenames and trademarks . . ." and in view of the
protected must be "well-known" in the country where protection is sought. The decision of the Intermediate Appellate Court in the case of LA
power to determine whether a trademark is well-known lies in the "competent CHEMISE LACOSTE, S.A., versus RAM SADWHANI [AC-G.R. SP
authority of the country of registration or use." This competent authority would NO. 13359 (17) June 1983] 56 which affirms the validity of the
be either the registering authority if it has the power to decide this, or the courts MEMORANDUM of then Minister Luis R. Villafuerte dated 20
of the country in question if the issue comes before a court. 54 November 1980 confirming our obligations under the PARIS
CONVENTION FOR THE PROTECTION OF INDUSTRIAL
Pursuant to Article 6bis, on November 20, 1980, then Minister Luis Villafuerte of PROPERTY to which the Republic of the Philippines is a
the Ministry of Trade issued a Memorandum to the Director of Patents. The signatory, you are hereby directed to implement measures
Minister ordered the Director that: necessary to effect compliance with our obligations under said

26 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
Convention in general, and, more specifically, to honor our 4. The Philippine Patent Office shall give due course to the Opposition in cases
commitment under Section 6bis 57 thereof, as follows: already or hereafter filed against the registration of trademarks entitled to
protection of Section 6bis of said PARIS CONVENTION as outlined above, by
1. Whether the trademark under consideration is well- remanding applications filed by one not entitled to such protection for final
known in the Philippines or is a mark already belonging disallowance by the Examination Division.
to a person entitled to the benefits of the CONVENTION,
this should be established, pursuant to Philippine Patent 5. All pending applications for Philippine registration of signature and other
Office procedures in inter partes and ex parte cases, world-famous trademarks filed by applicants other than their original owners or
according to any of the following criteria or any users shall be rejected forthwith. Where such applicants have already obtained
combination thereof: registration contrary to the abovementioned PARIS CONVENTION and/or
Philippine Law, they shall be directed to surrender their Certificates of
(a) a declaration by the Minister of Trade and Industry that the trademark being Registration to the Philippine Patent Office for immediate cancellation
considered is already well-known in the Philippines such that permission for its proceedings.
use by other thanits original owner will constitute a reproduction, imitation,
translation or other infringement; xxx xxx xxx. 58

(b) that the trademark is used in commerce internationally, supported by proof In the Villafuerte Memorandum, the Minister of Trade instructed the Director of
that goods bearing the trademark are sold on an international scale, Patents to reject all pending applications for Philippine registration of signature
advertisements, the establishment of factories, sales offices, distributorships, and and other world-famous trademarks by applicants other than their original
the like, in different countries, including volume or other measure of owners or users. The Minister enumerated several internationally-known
international trade and commerce; trademarks and ordered the Director of Patents to require Philippine registrants
of such marks to surrender their certificates of registration.
(c) that the trademark is duly registered in the industial property office(s) of
another country or counties, taking into consideration the date of such In the Ongpin Memorandum, the Minister of Trade and Industry did not
registration; enumerate well-known trademarks but laid down guidelines for the Director of
Patents to observe in determining whether a trademark is entitled to protection
(d) that the trademark has long been established and obtained goodwill and as a well-known mark in the Philippines under Article 6bis of the Paris
international consumer recognition as belonging to one owner or source; Convention. This was to be established through Philippine Patent Office
procedures in inter partes and ex parte cases pursuant to the criteria enumerated
(e) that the trademark actually belongs to a party claiming ownership and has the therein. The Philippine Patent Office was ordered to refuse applications for, or
right to registrtion under the provisions of the aforestated PARIS CONVENTION. cancel the registration of, trademarks which constitute a reproduction,
translation or imitation of a trademark owned by a person who is a citizen of a
member of the Union. All pending applications for registration of world-famous
2. The word trademark, as used in this MEMORANDUM, shall include tradenames,
trademarks by persons other than their original owners were to be rejected
service marks, logos, signs, emblems, insignia or other similar devices used for forthwith. The Ongpin Memorandum was issued pursuant to Executive Order No.
identification and recognition by consumers. 913 dated October 7, 1983 of then President Marcos which strengthened the rule-
making and adjudicatory powers of the Minister of Trade and Industry for the
3. The Philippine Patent Office shall refuse all applications for, or cancel the effective protection of consumers and the application of swift solutions to
registration of, trademarks which constitute a reproduction, translation or problems in trade and industry. 59
imitation of a trademark owned by a person, natural or corporate, who is a citizen
of a country signatory to the PARIS CONVENTION FOR THE PROTECTION OF Both the Villafuerte and Ongpin Memoranda were sustained by the Supreme
INDUSTRIAL PROPERTY. Court in the 1984 landmark case of La Chemise Lacoste, S.A. v. Fernandez. 60 This
court ruled therein that under the provisions of Article 6bis of the Paris

27 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
Convention, the Minister of Trade and Industry was the "competent authority" to In the instant case, the issue of ownership of the trademark "Barbizon" was not
determine whether a trademark is well-known in this country. 61 raised in IPC No. 686. Private respondent's opposition therein was merely
anchored on:
The Villafuerte Memorandum was issued in 1980, i.e., fifteen (15) years after the
adoption of the Paris Convention in 1965. In the case at bar, the first inter (a) "confusing similarity" of its trademark with that of
partes case, IPC No. 686, was filed in 1970, before the Villafuerte Memorandum Escobar's;
but five (5) years after the effectivity of the Paris Convention. Article 6bis was
already in effect five years before the first case was instituted. Private (b) that the registration of Escobar's similar trademark will
respondent, however, did not cite the protection of Article 6bis, neither did it cause damage to private respondent's business reputation and
mention the Paris Convention at all. It was only in 1981 when IPC No. 2049 was goodwill; and
instituted that the Paris Convention and the Villafuerte Memorandum, and,
during the pendency of the case, the 1983 Ongpin Memorandum were invoked (c) that Escobar's use of the trademark amounts to an unlawful
by private respondent. appropriation of a mark previously used in the Philippines
which act is penalized under Section 4 (d) of the Trademark
The Solicitor General argues that the issue of whether the protection of Article Law.
6bis of the Convention and the two Memoranda is barred by res judicata has
already been answered in Wolverine Worldwide, Inc. v. Court of In IPC No. 2049, private respondent's opposition set forth several issues
Appeals. 62 In this case, petitioner Wolverine, a foreign corporation, filed with the summarized as follows:
Philippine Patent Office a petition for cancellation of the registration certificate
of private respondent, a Filipino citizen, for the trademark "Hush Puppies" and
"Dog Device." Petitioner alleged that it was the registrant of the internationally- (a) as early as 1933, it adopted the word "BARBIZON" as
trademark on its products such as robes, pajamas, lingerie,
known trademark in the United States and other countries, and cited protection
under the Paris Convention and the Ongpin Memorandum. The petition was nightgowns and slips;
dismissed by the Patent Office on the ground of res judicata. It was found that in
1973 petitioner's predecessor-in-interest filed two petitions for cancellation of (b) that the trademark "BARBIZON" was registered with the
the same trademark against respondent's predecessor-in-interest. The Patent United States Patent Office in 1934 and 1949; and that
Office dismissed the petitions, ordered the cancellation of registration of variations of the same trademark, i.e., "BARBIZON" with Bee
petitioner's trademark, and gave due course to respondent's application for design and "BARBIZON" with the representation of a woman
registration. This decision was sustained by the Court of Appeals, which decision were also registered with the U.S. Patent Office in 1961 and
was not elevated to us and became final and 1976;
executory. 63
(c) that these marks have been in use in the Philippines and in
Wolverine claimed that while its previous petitions were filed under R.A. No. 166, many countries all over the world for over forty years.
the Trademark Law, its subsequent petition was based on a new cause of "Barbizon" products have been advertised in international
action, i.e., the Ongpin Memorandum and E.O. No. 913 issued in 1983, after publications and the marks registered in 36 countries
finality of the previous decision. We held that the said Memorandum and E.O. did worldwide;
not grant a new cause of action because it did "not amend the Trademark Law," .
. . "nor did it indicate a new policy with respect to the registration in the (d) Escobar's registration of the similar trademark "BARBIZON"
Philippines of world-famous trademarks." 64 This conclusion was based on the in 1974 was based on fraud; and this fraudulent registration
finding that Wolverine's two previous petitions and subsequent petition dealt was cancelled in 1979, stripping Escobar of whatsoever right
with the same issue of ownership of the trademark. 65 In other words, since the she had to the said mark;
first and second cases involved the same issue of ownership, then the first case
was a bar to the second case. (e) Private respondent's trademark is entitled to protection as a
well-known mark under Article 6bis of the Paris Convention,
28 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
Executive Order No. 913, and the two Memoranda dated registration. The opposition in IPC No. 2049 invoked the Paris Convention,
November 20, 1980 and October 25, 1983 of the Minister of particularly Article 6bis thereof, E.O. No. 913 and the two Memoranda of the
Trade and Industry to the Director of Patents; Minister of Trade and Industry. This opposition also invoked Article 189 of the
Revised Penal Code which is a statute totally different from the Trademark
(f) Escobar's trademark is identical to private respondent's and Law. 72 Causes of action which are distinct and independent from each other,
its use on the same class of goods as the latter's amounts to a although arising out of the same contract, transaction, or state of facts, may be
violation of the Trademark Law and Article 189 of the Revised sued on separately, recovery on one being no bar to subsequent actions on
Penal Code. others. 73 The mere fact that the same relief is sought in the subsequent action
will not render the judgment in the prior action operative as res judicata, such as
IPC No. 2049 raised the issue of ownership of the trademark, the first where the two actions are based on different statutes. 74 Res judicata therefore
registration and use of the trademark in the United States and other does not apply to the instant case and respondent Court of Appeals did not err in
countries, and the international recognition and reputation of the so ruling.
trademark established by extensive use and advertisement of private
respondent's products for over forty years here and abroad. These are Intellectual and industrial property rights cases are not simple property cases.
different from the issues of confusing similarity and damage in IPC No. Trademarks deal with the psychological function of symbols and the effect of
686. The issue of prior use may have been raised in IPC No. 686 but this these symbols on the public at large. 75 Trademarks play a significant role in
claim was limited to prior use in the Philippines only. Prior use in IPC No. communication, commerce and trade, and serve valuable and interrelated
2049 stems from private respondent's claim as originator of the word business functions, both nationally and internationally. For this reason, all
and symbol "Barbizon," 66 as the first and registered user of the mark agreements concerning industrial property, like those on trademarks and
attached to its products which have been sold and advertised worldwide tradenames, are intimately connected with economic development. 76 Industrial
for a considerable number of years prior to petitioner's first application property encourages investments in new ideas and inventions and stimulates
for registration of her trademark in the Philippines. Indeed, these are creative efforts for the satisfaction of human needs. They speed up transfer of
substantial allegations that raised new issues and necessarily gave technology and industrialization, and thereby bring about social and economic
private respondent a new cause of action. Res judicata does not apply to progress. 77 These advantages have been acknowledged by the Philippine
rights, claims or demands, although growing out of the same subject government itself. The Intellectual Property Code of the Philippines declares that
matter, which constitute separate or distinct causes of action and were "an effective intellectual and industrial property system is vital to the
not put in issue in the former action. 67 development of domestic and creative activity, facilitates transfer of technology,
it attracts foreign investments, and ensures market access for our
Respondent corporation also introduced in the second case a fact that did not products." 78 The Intellectual Property Code took effect on January 1, 1998 and
exist at the time the first case was filed and terminated. The cancellation of by its express provision, 79 repealed the Trademark Law, 80 the Patent
petitioner's certificate of registration for failure to file the affidavit of use arose Law, 81 Articles 188 and 189 of the Revised Penal Code, the Decree on Intellectual
only after IPC No. 686. It did not and could not have occurred in the first case, and Property, 82 and the Decree on Compulsory Reprinting of Foreign
this gave respondent another cause to oppose the second application. Res Textbooks. 83 The Code was enacted to strengthen the intellectual and industrial
judicata extends only to facts and conditions as they existed at the time judgment property system in the Philippines as mandated by the country's accession to the
was rendered and to the legal rights and relations of the parties fixed by the facts Agreement Establishing the World Trade Organization (WTO). 84
so determined. 68 When new facts or conditions intervene before the second suit,
furnishing a new basis for the claims and defenses of the parties, the issues are The WTO is a common institutional framework for the conduct of trade relations
no longer the same, and the former judgment cannot be pleaded as a bar to the among its members in matters related to the multilateral and plurilateral trade
subsequent action. 69 agreements annexed to the WTO Agreement. 85 The WTO framework ensures a
"single undertaking approach" to the administration and operation of all
It is also noted that the oppositions in the first and second cases are based on agreements and arrangements attached to the WTO Agreement. Among those
different laws. The opposition in IPC No. 686 was based on specific provisions of annexed is the Agreement on Trade-Related Aspects of Intellectual Property
the Trademark Law, i.e., Section 4 (d) 70 on confusing similarity of trademarks Rights or TRIPs. 86 Members to this Agreement "desire to reduce distortions and
and Section 8 71 on the requisite damage to file an opposition to a petition for impediments to international trade, taking into account the need to promote
29 | I P L P a r t I
THE LAW ON TRADEMARKS, TRADENAMES, AND SERVICE MARKS (Functions of Trademarks)
effective and adequate protection of intellectual property rights, and to ensure
that measures and procedures to enforce intellectual property rights do not
themselves become barriers to legitimate trade." To fulfill these objectives, the
members have agreed to adhere to minimum standards of protection set by
several Conventions. 87 These Conventions are: the Berne Convention for the
Protection of Literary and Artistic Works (1971), the Rome Convention or the
International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organisations, the Treaty on Intellectual Property
in Respect of Integrated Circuits, and the Paris Convention (1967), as revised in
Stockholm on July 14, 1967. 88

A major proportion of international trade depends on the protection of


intellectual property rights. 89 Since the late 1970's, the unauthorized
counterfeiting of industrial property and trademarked products has had a
considerable adverse impact on domestic and international trade
revenues. 90 The TRIPs Agreement seeks to grant adequate protection of
intellectual property rights by creating a favorable economic environment to
encourage the inflow of foreign investments, and strengthening the multi-lateral
trading system to bring about economic, cultural and technological
independence. 91

The Philippines and the United States of America have acceded to the WTO
Agreement. This Agreement has revolutionized international business and
economic relations among states, and has propelled the world towards trade
liberalization and economic globalization. 92 Protectionism and isolationism
belong to the past. Trade is no longer confined to a bilateral system. There is now
"a new era of global economic cooperation, reflecting the widespread desire to
operate in a fairer and more open multilateral trading system." 93 Conformably,
the State must reaffirm its commitment to the global community and take part in
evolving a new international economic order at the dawn of the new millenium.

IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of the
Court of Appeals in CA-G.R. SP No. 28415 are affirmed.

SO ORDERED.

Davide, Jr., C.J., Kapunan, Pardo and Ynares-Santiago, JJ., concur

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31 | I P L P a r t I

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