Republic of the
Supreme Court
SECOND DIVISION
|
PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., and FABRIQUES
DE TABAC REUNIES, S.A., (now known as PHILIP MORRIS PRODUCTS S.A.), Petitioners, -
versus - FORTUNE TOBACCO CORPORATION, Respondent. |
G.R.
No. 158589
Present:
PUNO, J., Chairperson, SANDOVAL-GUTIERREZ, AZCUNA,
and GARCIA,
JJ. Promulgated: |
x------------------------------------------------------------------------------------x
D E C I S I O N
GARCIA, J.:
Via
this petition
for review under Rule 45 of the Rules of Court, herein petitioners Philip
Morris, Inc., Benson & Hedges (Canada) Inc., and Fabriques de Tabac
Reunies, S.A. (now Philip Morris Products S.A.) seek the reversal and setting
aside of the following issuances of the Court of Appeals (CA) in CA-G.R. CV No. 66619, to wit:
1.
Decision dated January 21, 2003[1] affirming
an earlier decision of the Regional Trial Court of Pasig City, Branch 166, in its
Civil Case No. 47374, which dismissed the complaint for trademark infringement
and damages thereat commenced by the petitioners against respondent Fortune
Tobacco Corporation; and
2. Resolution dated
Petitioner Philip Morris, Inc., a
corporation organized under the laws of the State of
The legal dispute between the parties
started when the herein petitioners, on the claim that an infringement of their
respective trademarks had been committed, filed, on August 18, 1982, a Complaint for Infringement of Trademark and
Damages against respondent Fortune Tobacco Corporation, docketed as Civil Case No. 47374 of the
Regional Trial Court of Pasig, Branch
166.
The decision under review summarized
what happened next, as follows:
In the Complaint xxx with prayer for the issuance of a preliminary
injunction, [petitioners] alleged that they are foreign corporations not doing
business in the
Invoking the provisions of the Paris Convention for the Protection of
Industrial and Intellectual Property (Paris Convention, for brevity), to
which the Philippines is a signatory xxx, [petitioners] pointed out that upon
the request of an interested party, a country of the Union may prohibit the use
of a trademark which constitutes a reproduction, imitation, or translation of a
mark already belonging to a person entitled to the benefits of the said
Convention. They likewise argued that, in accordance with Section 21-A in
relation to Section 23 of Republic Act 166, as amended, they are entitled to
relief in the form of damages xxx [and]
the issuance of a writ of preliminary injunction which should be made permanent
to enjoin perpetually the [respondent] from violating [petitioners’] right to
the exclusive use of their aforementioned trademarks.
[Respondent] filed its Answer xxx denying [petitioners’] material allegations and xxx averred [among other things] xxx that “MARK” is a common word, which cannot particularly identify a product to be the product of the [petitioners] xxx
xxx xxx xxx.
Meanwhile, after the [respondent]
filed its Opposition (Records, Vo. I,
p. 26), the matter of the [petitioners’] prayer for the issuance of a writ of
preliminary injunction was negatively resolved by the court in an Order xxx dated
xxx xxx xxx
After
the termination of the trial on the merits xxx trial court rendered its Decision xxx dated
The issue of whether or not there
was infringement of the [petitioners’] trademarks by the [respondent] was
likewise answered xxx in the negative.
It expounded that “in order for a name, symbol or device to constitute a
trademark, it must, either by itself or by association, point distinctly to the
origin or ownership of the article to which it is applied and be of such nature
as to permit an exclusive appropriation by one person”. Applying such principle to the instant case,
the trial court was of the opinion that the words “MARK”, “TEN”, “LARK” and the
Roman Numerals “VII”, either alone or in combination of each other do not by
themselves or by association point distinctly to the origin or ownership of the
cigarettes to which they refer, such that the buying public could not be
deceived into believing that [respondent’s] “MARK” cigarettes originated either
from the USA, Canada, or Switzerland.
Emphasizing that the test in an
infringement case is the likelihood of confusion or deception, the trial court
stated that the general rule is that an infringement exists if the resemblance
is so close that it deceives or is likely to deceive a customer exercising
ordinary caution in his dealings and induces him to purchase the goods of one
manufacturer in the belief that they are those of another. xxx.
The trial court ruled that the [petitioners] failed to pass these tests
as it neither presented witnesses or purchasers attesting that they have bought
[respondent’s] product believing that they bought [petitioners’] “MARK VII”,
“MARK TEN” or “LARK”, and have also failed to introduce in evidence a specific
magazine or periodical circulated locally, which promotes and popularizes their
products in the Philippines. It,
moreover, elucidated that the words consisting of the trademarks allegedly
infringed by [respondent] failed to show that they have acquired a secondary
meaning as to identify them as [petitioners’] products. Hence, the court ruled that the [petitioners]
cannot avail themselves of the doctrine of secondary meaning.
As to the issue of damages, the trial
court deemed it just not to award any to either party stating that, since the [petitioners]
filed the action in the belief that they were aggrieved by what they perceived
to be an infringement of their trademark, no wrongful act or omission can be
attributed to them. xxx.[3] (Words
in brackets supplied)
Maintaining to have the standing to sue in
the local forum and that respondent has committed trademark infringement,
petitioners went on appeal to the CA whereat their appellate recourse was
docketed as CA-G.R. CV No. 66619.
Eventually, the
CA, in its Decision dated
xxx the appellants’ [petitioners’] trademarks,
i.e., “MARK VII”, “MARK TEN” and “LARK”, do not qualify as well-known marks
entitled to protection even without the benefit of actual use in the local
market and that the similarities in the trademarks in question are insufficient
as to cause deception or confusion tantamount to infringement. Consequently, as regards the third issue,
there is likewise no basis for the award of damages prayed for by the
appellants herein.[4] (Word in
bracket supplied)
With their motion
for reconsideration having been denied by the CA in its equally challenged Resolution of May 30, 2003, petitioners
are now with this Court via this petition for review essentially raising
the following issues: (1) whether or not petitioners, as Philippine registrants
of trademarks, are entitled to enforce trademark rights in this country; and (2)
whether or not respondent has committed trademark infringement against
petitioners by its use of the mark “MARK” for its cigarettes, hence liable for
damages.
In its Comment,[5] respondent,
aside from asserting the correctness of the CA’s finding on its liability for
trademark infringement and damages, also puts in issue the propriety of the petition
as it allegedly raises questions of fact.
The petition is
bereft of merit.
Dealing first with
the procedural matter interposed by respondent, we find that the petition raises both
questions of fact and law contrary to the prescription against raising factual questions
in a petition for review on certiorari filed before the Court. A question of law exists when the doubt or
difference arises as to what the law is on a certain state of facts; there is a
question of fact when the doubt or difference arises as to the truth or falsity
of alleged facts.[6]
Indeed, the Court
is not the proper venue to consider factual issues as it is not a trier of
facts.[7] Unless the factual findings of the appellate
court are mistaken, absurd, speculative, conflicting, tainted with grave abuse
of discretion, or contrary to the findings culled by the court of origin,[8] we will not disturb them.
It is petitioners’
posture, however, that their contentions should
be treated as
purely legal since they are assailing erroneous
conclusions deduced from a set of undisputed facts.
Concededly, when
the facts are undisputed, the question of whether or not the conclusion drawn
therefrom by the CA is correct is one of law.[9] But,
even if we consider and accept as pure questions of law the issues raised in
this petition, still, the Court is not inclined to disturb the conclusions
reached by the appellate court, the established rule being that all doubts shall be resolved in favor of the
correctness of such conclusions.[10]
Be that as it may, we shall deal with
the issues tendered and determine whether the CA ruled in accordance with law
and established jurisprudence in arriving at its assailed decision.
A “trademark” is any
distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof adopted and used by a manufacturer or merchant on his goods to identify
and distinguish them from those manufactured, sold, or dealt in by others.[11] Inarguably,
a trademark deserves protection. For, as
Mr. Justice Frankfurter observed in Mishawaka
Mfg. Co. v. Kresge Co.:[12]
The protection of trademarks is the law’s recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe what he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same - to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.
It is thus
understandable for petitioners to invoke in this recourse their entitlement to
enforce trademark rights in this country, specifically, the right to sue for
trademark infringement in Philippine courts and be accorded protection against
unauthorized use of their Philippine-registered trademarks.
In support of
their contention respecting their right of action, petitioners assert that, as corporate nationals
of member-countries of the Paris Union,
they can sue before Philippine courts
for infringement of trademarks, or for unfair competition, without need of obtaining registration or a license to do business in
the
In any event,
petitioners point out that there is actual use of their trademarks in the
Besides,
petitioners argue that their not doing business in the
Finally, petitioners would press on their
entitlement to protection even in the absence of actual use of trademarks in
the country in view of the Philippines’ adherence to the Trade Related Aspects of Intellectual Property Rights or the TRIPS
Agreement and the enactment of R.A. No. 8293, or the Intellectual Property Code
(hereinafter the “IP Code”), both of which provide that the fame of a trademark may
be acquired through promotion or advertising with no explicit requirement of
actual use in local trade or commerce.
Before discussing petitioners’
claimed entitlement to enforce trademark rights in the
Thus clarified, what
petitioners now harp about is their entitlement to protection on the strength of registration of their
trademarks in the
As we ruled in G.R. No. 91332,[18] supra,
so it must be here.
Admittedly,
the registration of a trademark gives the registrant,
such as petitioners, advantages denied non-registrants
or ordinary users, like respondent. But
while petitioners enjoy the statutory presumptions arising from such
registration,[19]
i.e., as to the validity of the
registration, ownership and the exclusive right to use the registered marks,
they may not successfully sue on the basis alone of their respective certificates
of registration of trademarks. For, petitioners are still foreign corporations.
As such, they ought, as a condition to availment of the rights and privileges vis-à-vis their trademarks in this
country, to show proof that, on top of Philippine
registration, their country grants substantially similar rights and privileges
to Filipino citizens pursuant to Section 21-A[20]
of R.A. No. 166.
In Leviton Industries v. Salvador,[21] the Court further held that the aforementioned
reciprocity requirement is a condition sine
qua non to filing a suit by a foreign corporation which, unless alleged in
the complaint, would justify dismissal thereof, a mere allegation that the suit
is being pursued under Section 21-A of R.A. No. 166 not being sufficient. In a
subsequent case,[22] however, the Court
held that where the complainant is a national of a Paris Convention- adhering country,
its allegation that it is suing under said Section 21-A would suffice, because
the reciprocal agreement between the two countries is embodied and supplied by
the Paris Convention which, being considered part of Philippine municipal laws, can be
taken judicial notice of in infringement suits.[23]
As well, the fact
that their respective home countries, namely, the United States, Switzerland
and Canada, are, together with the Philippines, members of the Paris Union does
not automatically entitle petitioners to the protection of their trademarks in
this country absent actual use of the
marks in local commerce and trade.
True, the
Considering that R.A. No. 166, as
amended, specifically Sections 2[28] and
2-A[29] thereof, mandates actual use of the marks and/or emblems
in local commerce and trade before they may be registered and ownership thereof
acquired, the petitioners cannot, therefore, dispense with the element of
actual use. Their being nationals of member-countries of the Paris Union does not
alter the legal situation.
In Emerald Garment Mfg. Corporation v. Court of
Appeals,[30]
the Court reiterated its rulings in Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft,[31]
Kabushi Kaisha Isetan v. Intermediate Appellate Court,[32]
and Philip Morris v. Court of Appeals
and Fortune Tobacco Corporation[33] on
the importance of actual commercial use of
a trademark in the
The provisions of the 1965 Paris Convention … relied upon by private respondent and Sec. 21-A of the Trademark Law were sufficiently expounded upon and qualified in the recent case of Philip Morris, Inc., et. al. vs. Court of Appeals:
xxx xxx xxx
Following
universal acquiescence and comity, our municipal law on trademarks regarding
the requirements of actual use in the
xxx xxx xxx
In other words, (a foreign corporation) may have the capacity to sue for infringement … but the question of whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement, the entity need not be actually using its trademark in commerce in the Philippines. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market.
Contrary to what petitioners
suggest, the registration of trademark cannot be deemed conclusive as to the
actual use of such trademark in local commerce. As it were, registration does
not confer upon the registrant an absolute right to the registered mark. The
certificate of registration merely constitutes prima facie evidence that the registrant is the owner of the
registered mark. Evidence of non-usage of the mark rebuts the presumption of
trademark ownership,[34] as
what happened here when petitioners no less admitted not doing business in this
country.[35]
Most importantly, we
stress that registration in the
Petitioners’ reliance
on Converse Rubber Corporation[38] is quite misplaced, that case being cast
in a different factual milieu. There, we
ruled that a foreign owner of a Philippine trademark, albeit not licensed to
do, and not so engaged in, business in the
This Court also
finds the IP Code and the TRIPS Agreement to be inapplicable, the infringement complaint
herein having been filed in August 1982 and tried under the aegis of R.A. No. 166,
as amended. The IP Code, however, took effect only on
With the foregoing perspective, it may be
stated right off that the registration of a trademark unaccompanied by actual
use thereof in the country accords the registrant only the standing to sue for
infringement in Philippine courts. Entitlement to protection of such trademark in
the country is entirely a different matter.
This brings us to the principal issue of
infringement.
Section 22 of R.A.
No. 166, as amended, defines what constitutes trademark infringement, as
follows:
Sec. 22. Infringement,
what constitutes. – Any person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which
such use is likely to cause confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or services, or identity of
such business; or reproduce, counterfeit, copy of color ably imitate any such
mark or tradename and apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods,
business, or services, shall be liable to a civil action by the registrant for
any or all of the remedies herein provided.
Petitioners would insist
on their thesis of infringement since respondent’s mark “MARK” for cigarettes
is confusingly or deceptively similar with
their duly registered
“MARK VII,” “MARK TEN” and “LARK” marks
likewise for cigarettes. To them, the word “MARK” would likely cause confusion
in the trade, or deceive purchasers, particularly as to the source or origin of
respondent’s cigarettes.
The “likelihood of
confusion” is the gravamen of trademark infringement.[40] But likelihood of confusion is a relative
concept, the particular, and sometimes peculiar, circumstances of each case being
determinative of its existence. Thus, in trademark infringement cases, more
than in other kinds of litigation, precedents must be evaluated in the light of
each particular case.[41]
In determining similarity
and likelihood of confusion, jurisprudence has developed
two tests: the
dominancy
test and the holistic
test.[42] The
dominancy test[43] sets
sight on the similarity of the prevalent features of the competing
trademarks that might cause confusion and deception, thus constitutes infringement. Under this norm, the question at issue turns on
whether the use of the marks involved would be likely to cause confusion or
mistake in the mind of the public or deceive purchasers.[44]
In contrast, the
holistic test[45]
entails a consideration of the entirety
of the marks as applied to the products, including the labels and packaging, in
determining confusing similarity.
Upon consideration
of the foregoing in the light of the peculiarity of this case, we rule against
the likelihood of confusion resulting in infringement arising from the respondent’s
use of the trademark “MARK” for its particular cigarette product.
For one, as
rightly concluded by the CA after comparing the trademarks involved in their
entirety as they appear on the products,[46]
the striking dissimilarities are significant enough to warn any purchaser that
one is different from the other. Indeed,
although the perceived offending word “MARK” is itself prominent in
petitioners’ trademarks “MARK VII” and “MARK TEN,” the entire marking system
should be considered as a whole and not dissected, because a discerning eye
would focus not only on the predominant word but also on the other features appearing
in the labels. Only then would such discerning observer draw his conclusion
whether one mark would be confusingly similar to the other and whether or not sufficient
differences existed between the marks.[47]
This said, the CA then, in finding that
respondent’s goods cannot be mistaken as any of the three cigarette brands of
the petitioners, correctly relied on the holistic test.
But, even if the
dominancy test were to be used, as urged by the petitioners, but bearing in
mind that a trademark serves as a tool to point out distinctly the origin or
ownership of the goods to which it is affixed,[48] the
likelihood of confusion tantamount to infringement appears to be farfetched. The reason for the origin and/or ownership angle
is that unless the words or devices do so point out the origin or ownership,
the person who first adopted them cannot be injured by any appropriation or
imitation of them by others, nor can the public be deceived.[49]
Since the word
“MARK,” be it alone or in combination with the word “TEN” and the Roman numeral
“VII,” does not point to the origin or ownership of the cigarettes to which
they apply, the local buying public could not possibly be confused or deceived
that respondent’s “MARK” is the product of petitioners and/or originated from
the U.S.A., Canada or Switzerland. And
lest it be overlooked, no actual commercial use of petitioners’ marks in local
commerce was proven. There can thus be no occasion for the public in this
country, unfamiliar in the first place with petitioners’ marks, to be confused.
For another, a
comparison of the trademarks as they appear on the goods is just one of the appreciable
circumstances in determining likelihood of confusion. Del
Monte Corp. v. CA[50] dealt with another, where we instructed to give
due regard to the “ordinary purchaser,” thus:
The
question is not whether the two articles are distinguishable by their label
when set side by side but whether the general confusion made by the article
upon the eye of the casual purchaser who is unsuspicious and off his guard, is
such as to likely result in his confounding it with the original. As observed in several cases, the general
impression of the ordinary purchaser, buying under the normally prevalent conditions
in trade and giving the attention such purchasers usually give in buying that
class of goods is the touchstone.
When we spoke of an “ordinary purchaser,” the
reference was not to the “completely unwary customer” but to the “ordinarily
intelligent buyer” considering the type of product involved.[51]
It cannot be
over-emphasized that the products involved are addicting cigarettes purchased
mainly by those who are already predisposed to a certain brand. Accordingly, the ordinary buyer thereof would
be all too familiar with his brand and discriminating
as well. We, thus, concur with the CA
when it held, citing a definition found in Dy
Buncio v. Tan Tiao Bok,[52]
that the “ordinary purchaser” in this case means “one accustomed to buy, and therefore to some extent familiar with, the
goods in question.”
Pressing on with their contention respecting
the commission of trademark infringement, petitioners finally point to Section
22 of R.A. No. 166, as amended. As argued, actual use of trademarks in local
commerce is, under said section, not a requisite before an aggrieved trademark
owner can restrain the use of his trademark upon goods manufactured or dealt in
by another, it being sufficient that he had registered the trademark or trade-name
with the IP Office. In fine, petitioners submit that respondent is liable for
infringement, having manufactured and sold cigarettes with the trademark “MARK”
which, as it were, are identical and/or confusingly similar with their duly
registered trademarks “MARK VII,” “MARK TEN” and “LARK”.
This Court is not
persuaded.
In Mighty Corporation v. E & J Gallo Winery,[53] the
Court held that the following constitute the elements of trademark infringement
in accordance not only with Section 22 of R.A. No. 166, as amended, but also Sections 2, 2-A, 9-A[54]
and 20 thereof:
(a) a
trademark actually used in commerce in the
(b) is used by another person in connection with the sale, offering for sale, or advertising of any goods, business or services or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or such trademark is reproduced, counterfeited, copied or colorably imitated by another person and such reproduction, counterfeit, copy or colorable imitation is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services as to likely cause confusion or mistake or to deceive purchasers,
(c) the trademark is used for identical or similar goods, and
(d) such
act is done without the consent of the trademark registrant or assignee.
As already found herein,
while petitioners have registered the trademarks “MARK VII,”
“MARK TEN” and “LARK” for cigarettes in
the Philippines, prior actual commercial use thereof had not been proven. In fact, petitioners’ judicial admission of not
doing business in this country effectively belies any pretension to the
contrary.
Likewise, we note
that petitioners even failed to support their claim that their respective marks
are well-known and/or have acquired goodwill in the
xxx
the records are bereft of evidence to establish that the appellants’ [petitioners’]
products are indeed well-known in the Philippines, either through actual sale
of the product or through different forms of advertising. This finding is supported by the fact that
appellants admit in their Complaint
that they are not doing business in the
Last, but not
least, we must reiterate that the issue of trademark
infringement is factual,
with both the trial
and appellate courts having peremptorily found allegations of infringement on
the part of respondent to be without basis. As we said time and time again, factual
determinations of the trial court, concurred in by the CA, are final and
binding on this Court.[57]
For lack of
convincing proof on the part of the petitioners of actual use of their
registered trademarks prior to respondent’s use of its mark and for petitioners’
failure to demonstrate confusing similarity between said trademarks, the
dismissal of their basic complaint for infringement and the concomitant plea
for damages must be affirmed. The law, the surrounding circumstances and the
equities of the situation call for this disposition.
WHEREFORE, the petition is hereby DENIED. Accordingly, the assailed decision
and resolution of the Court of Appeals are AFFIRMED.
Costs against the
petitioners.
SO ORDERED.
CANCIO C. GARCIA
Associate Justice
WE CONCUR:
REYNATO S. PUNO
Associate Justice
Chairperson
|
ANGELINA SANDOVAL-GUTIERREZ Associate Justice |
RENATO C. CORONA Associate Justice |
ADOLFO S. AZCUNA
Associate Justice
A T T E S T A T I O N
I attest that the conclusions in the
above decision were reached in consultation before the case was assigned to the
writer of the opinion of the Court’s Division.
REYNATO S. PUNO
Associate Justice
Chairperson, Second Division
C E R T I F I C A T I O N
Pursuant to Article VIII, Section 13 of
the Constitution, and the Division Chairperson's Attestation, it is hereby
certified that the conclusions in the above decision were reached in
consultation before the case was assigned to the writer of the opinion of the
Court.
ARTEMIO V. PANGANIBAN
Chief Justice
[1] Penned by Associate Justice
Mercedes Gozo-Dadole (ret.) and concurred in by Associate Justices Bennie Adefuin-Dela
Cruz (ret.) and Mariano C. del Castillo; Rollo, pp. 9-34.
[2]
[3] CA Decision;
[4] CA Decision;
[5]
[6] Ramos v. Pepsi-Cola Bottling
[7] Moomba Mining Exploration Co. v. CA, G.R. No. 108846,
[8] Smith Kline Beckman Corporation v. CA, G.R. No. 126627,
[9] F. D. Regalado, REMEDIAL LAW
COMPENDIUM, Vol. 1, 1999 ed., p. 541.
[10] Ibid.,
citing Pilar Dev. Corp. v. IAC, et al., G.R. No.
72283,
[11] Sec. 38 of R.A. No. 166.
[12] 316 U.S. 203, 53 USPQ 323 [1942]
cited in Societe Des Produits Nestle,
S.A. v. Court of Appeals, G.R. No. 112012, April 4, 2001, 356 SCRA 207,
215.
[13] Sec. 2-A. Ownership
of trademarks, trade names and servicemarks; how acquired. – Anyone who
lawfully produces or deals in merchandise of any kind or who engages in any
lawful business, xxx, by actual use thereof in manufacture or trade, in
business, xxx, may appropriate to his exclusive use a trademark, a trade name,
or a servicemark not so appropriated by another, to distinguish his
merchandise, [or] business xxx from the merchandise, business or service of
others. The ownership or possession of a
trademark, trade name, servicemark, heretofore or hereafter appropriated, as in
this section provided, shall be recognized and protected in the same manner and
to the same extent as are other property rights known to the law.
[14] SEC.
5. Requirements
of the application. – xxx
(a) Sworn
statement of the applicant’s domicile and citizenship, the date of the
applicant’s first use of the mark or trade-name, the date of the applicant’s
first use of the mark or trade-name in commerce or business, the goods,
business or services in connection with which the mark or trade-name is used
and the mode or manner in which the mark is used in connection with such goods,
business or services, and that the person making the application believes
himself, or the firm, corporation or association on whose behalf he makes the
verification, to be the owner of the mark or trade-name sought to be
registered, that the mark or trade-name is in use in commerce or business, and
that to be best of his knowledge no person, firm, corporation or association
has the right to use such mark or trade-name in commerce or business either in
the identical form thereof or in such near resemblance thereto as might be
calculated to deceive; xxx.
[15] Sec.
37. Rights of Foreign Registrants-Persons
who are nationals of, domiciled in, or have a bona fide or effective business
or commercial establishment in any foreign country, which is a party to an
international convention or treaty relating to marks or tradenames on the
repression of unfair competition to which the Philippines may be a party, shall
be entitled to the benefits and subject to the provisions of this Act . . . x x
x
“Tradenames of persons described in the first
paragraph of this section shall be protected without the obligation of filing
or registration (sic) whether or not
they form parts of marks.”
[16] G.R. No. L-27906,
[17] Philip Morris, Inc., et al. vs. CA, et al.,
[18] Superseded
by R.A. No. 8293 which took effect on
[19] SEC.
20. Certificate of registration prima
facie evidence of validity. - A certificate of registration of a mark or
trade name shall be prima facie
evidence of the validity of the registration, the registrant’s ownership of the
mark xxx, and of the registrant’s exclusive right to use the same xxx, subject
to any conditions and limitations stated therein. (Superseded by Sec. 138 of
R.A. No. 8293).
[20] SECTION
21-A. Any foreign corporation or
juristic person to which a mark or trade-name has been registered or assigned
under this Act may bring an action hereunder for infringement, xxx, whether or
not it has been licensed to do business in the Philippines under Act [No. 1495]
or the Corporation Law, at the time it
brings complaint: Provided, That the country of which the said foreign
corporation or juristic person is a citizen or in which it is domiciled, by
treaty, convention or law, grants a similar privilege to corporate or juristic
persons of the Philippines. (Superseded
by Section 160 of R.A. No. 8293)
[21] G.R. No. L-40163,
[22] Puma
Sportschufabriken Rudolf Dassler, K.G. v. IAC., G.R. No. 75067,
[23] Agpalo, The Law on Trademark, Infringement
and Unfair Competition, 2000 ed., pp. 209-210.
[24] The Paris Convention is essentially
a compact among the various member countries to accord in their own countries
to citizens of the other contracting parties’ trademarks and other rights
comparable to those accorded their own citizens by their domestic laws. The underlying principle is that foreign
nationals should be given the same treatment in each of the member countries as
that country makes available to its own citizens. (La
Chemise Lacoste, S.A. v. Fernandez, G.R. No. L-63796-97,
[25] See La Chemise Lacoste S.A. v. Fernandez, supra at pp. 386-387.
[26] Agpalo, The
Law on Trademark, Infringement and Unfair Competition, supra at p. 199.
[27] ART. 2. Nationals of each of the countries of the
[28] Sec. 2. What
are registrable. – Trademarks, tradenames and service marks owned by
persons, corporations, partnerships or associations domiciled in the
Philippines and by persons, corporations, partnerships or associations
domiciled in any foreign country may be registered in accordance with the
provisions of this Act; Provided, That
said trademarks, tradenames, or service marks are actually in use in commerce
and services not less than two months in
the Philippines before the time the applications for registration are
filed; And provided, further, That the country of which the applicant for
registration is a citizen grants by law substantially similar privileges to
citizens of the Philippines, and such fact is officially certified, …. (As amended by R.A. No. 865).
[29] Sec. 2-A. Ownership
of trademarks, trade names and servicemarks; how acquired. – Anyone who
lawfully produces or deals in merchandise of any kind or who engages in any
lawful business, or who renders any lawful service in commerce, by actual use
thereof in manufacture or trade, in business, and in the service rendered, may
appropriate to his exclusive use a trademark, a trade name, or a servicemark
not so appropriated by another, to distinguish his merchandise, business or
service from the merchandise, business or service of others. The ownership or possession of a trademark,
trade name, servicemark, heretofore or hereafter appropriated, as in this
section provided, shall be recognized and protected in the same manner and to
the same extent as are other property rights known to the law. (Now Sec. 122 of R.A. No. 8293.)
[30] G.R. No. 100098,
[31] L-19906,
[32] G.R. No. 75420,
[33] Supra.
[34] Emerald
Garment Mfg. Corp. supra at p. 623.
[35] Petitioners’ Complaint in the RTC;
Rollo, p. 207.
[36] G.R. No. 159938,
[37] Supra note 32.
[38] Supra note 16.
[39] Sec. 241 of IP Code.
[40] McDonald’s
Corp. v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004, 437
SCRA 10.
[41] Emerald
Garment Mfg. Corporation v. CA, supra, citing Esso Standard Eastern Inc. v. CA, L-29971, August 31, 1982, 116
SCRA 336; also in Mighty Corporation v. E
& J Gallo Winery, G.R. No. 154342, July 14, 2004, 434 SCRA 473, 504.
[42]
[43] Applied
in McDonald’s Corp. v. L.C. Big Mak Burger, Inc., supra; Asia Brewery, Inc. v. CA, G.R. No.
103543, July 5, 1993, 224 SCRA 437; Converse Rubber Corp. v. Universal Rubber
Products, Inc., supra; Phil. Nut
Industry Inc. v. Standard Brands, Inc., et
al., L-23035, July 31, 1975, 65 SCRA 575.
[44] Emerald
Garment Mfg. Corporation v. Court of Appeals, supra at p. 615.
[45] Applied in Emerald Garment Mfg. Corporation v. Court of Appeals, supra; Del Monte
Corp. v. CA, G.R. No. 78325, January 25, 1990,
181 SCRA 410; Fruit
of the Loom, Inc. v. CA, et al., L-32747, September
29, 1984, 133
SCRA 405; Bristol Myers Co.
v. Dir. of Patents, et al., L-21587,
[46] See CA Decision; Rollo, pp. 28-30.
[47] Mead
Johnson & Co. v. N.V.J. Van Dorp. Ltd., et al., L-17501,
[48] Gabriel
v. Perez, et al., L-24075,
[49] 74 Am. Jur. 2d, Trademarks and
Tradenames, Sec. 5.
[50] Supra
at p. 417.
[51] Emerald
Garment Mfg. Corp. v. CA, supra at p. 618.
[52] 42 Phil. 190 (1921).
[53] G.R. No. 154342,
[54] Sec. 9-A. Equitable
principles to govern proceedings. – In opposition proceedings and in all
other inter partes proceedings …
under this Act, equitable principles of laches, estoppel, and acquiescence
where applicable, may be considered and applied. (As added by R.A. No. 638.)
[55] Art. 6bis provides: x x x the
countries of the Union undertakes, either administratively if their legislation
so permits, or at the request of an interested party, to refuse or to cancel
the registration and to prohibit the use of a trademark which constitutes a
reproduction, imitation or translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use to
be well-known in that country as being already the mark of a person entitled to
the benefits of the present Convention and used for identical or similar
goods. These provisions shall also apply
when the essential part of the mark constitutes a reproduction of any of such
well-known mark or an imitation liable to create confusion therewith.
[56] Rollo, p. 179.
[57] Sambar
v. Levi Strauss & Co., G.R. No. 132604,