Republic of the
Supreme Court
SUPERIOR COMMERCIAL ENTERPRISES, INC.,
Petitioner, -
versus - KUNNAN ENTERPRISES LTD. AND SPORTS CONCEPT & DISTRIBUTOR, INC., Respondents. -- - |
G.R. No. 169974
Present:
CARPIO, J.,
Chairperson,
BRION, ABAD, and PEREZ, JJ. Promulgated: April 20, 2010 |
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D E C I S I
O N
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BRION, J.: |
We
review in this petition for review on certiorari[1] the (1) decision[2] of
the Court of Appeals (CA) in CA-G.R.
CV No. 60777 that reversed the ruling of the Regional Trial Court of Quezon
City, Branch 85 (RTC),[3]
and dismissed the petitioner Superior Commercial Enterprises, Inc.’s (SUPERIOR) complaint for trademark
infringement and unfair competition (with prayer for preliminary injunction)
against the respondents Kunnan Enterprises Ltd. (KUNNAN) and Sports Concept and Distributor, Inc. (SPORTS CONCEPT); and (2) the CA
resolution[4] that
denied SUPERIOR’s subsequent motion for reconsideration. The RTC decision that the CA reversed found
the respondents liable for trademark infringement and unfair competition, and
ordered them to pay SUPERIOR P2,000,000.00 in damages, P500,000.00
as attorney’s fees, and costs of the suit.
THE FACTUAL ANTECEDENTS
On
February 23, 1993,
In support
of its complaint,
Whereas, KUNNAN intends to acquire the ownership of KENNEX trademark registered
by the [sic]
In
its defense, KUNNAN disputed
On
October 1, 1982, after the expiration of its initial distributorship agreement
with another company,[15]
KUNNAN appointed
Whereas, KUNNAN intends to acquire
ownership of KENNEX trademark registered by the
Now,
therefore, the parties hereto agree as follows:
1.
KUNNAN in accordance with this
Agreement, will appoint the sole distributorship right to Superior in the
Philippines, and this
Agreement could be renewed with the consent of both parties upon the time of
expiration.
2.
The Superior, in accordance with this
Agreement, shall assign the ownership of KENNEX trademark, under the
registration of Patent Certificate No. 4730 dated 23 May 1980 to KUNNAN on the
effects [sic] of its ten (10) years
contract of distributorship, and it is required that the ownership of the said trademark shall be
genuine, complete as a whole and without any defects.
3.
KUNNAN
will guarantee to the
4.
If
there is a necessity, the Superior will be appointed, for the protection of
interest of both parties, as the agent in the Philippines with full power to
exercise and granted the power of attorney, to pursue any case of Pirating,
Infringement and Counterfeiting the [sic]
KENNEX trade mark in the Philippine territory.
5.
The
6.
Without
KUNNAN’s permission, the
Even
though this Agreement clearly stated that SUPERIOR was obligated to assign the
ownership of the KENNEX trademark to KUNNAN, the latter claimed that the
Certificate of Registration for the KENNEX trademark remained with SUPERIOR
because Mariano Tan Bon Diong (Mr. Tan
Bon Diong), SUPERIOR’s President and General Manager, misled KUNNAN’s
officers into believing that KUNNAN was not qualified to hold the same due to
the “many requirements set by the
Philippine Patent Office” that KUNNAN could not meet.[17] KUNNAN further asserted that
1.
In consideration of the distributorship
relationship between KUNNAN and
Trademark Application Number Class
PROKENNEX 49999 28
PROKENNEX 49998 25
PROKENNEX 49997 18
2.
Superior shall acknowledge that KUNNAN
is still the real and truthful owner of the abovementioned trademarks, and
shall agree that it will not use the right of the abovementioned trademarks to
do anything which is unfavourable or harmful to KUNNAN.
3.
4.
5.
Prior to and during the pendency of the
infringement and unfair competition case before the RTC, KUNNAN filed with the
now defunct Bureau of Patents, Trademarks and Technology Transfer[19] separate Petitions
for the Cancellation of Registration Trademark Nos. 41032, SR 6663, 40326,
39254, 4730 and 49998, docketed as Inter Partes Cases Nos. 3709, 3710,
3811, 3812, 3813 and 3814, as well as
Opposition to Application Serial Nos. 84565 and 84566, docketed as Inter
Partes Cases Nos. 4101 and 4102 (Consolidated
Petitions for Cancellation) involving the KENNEX and PRO KENNEX trademarks.[20] In essence, KUNNAN filed the Petition for
Cancellation and Opposition on the ground that SUPERIOR fraudulently registered
and appropriated the disputed trademarks; as mere distributor and not as lawful
owner, it obtained the registrations and assignments of the disputed trademarks
in violation of the terms of the Distributorship Agreement and Sections 2-A and
17 of Republic Act No. 166, as amended.[21]
On
December 3, 1991, upon the termination of its distributorship agreement with
The RTC Ruling
On March 31, 1998, the RTC issued its
decision[23] holding KUNNAN liable for
trademark infringement and unfair competition.
The RTC also issued a writ of preliminary injunction enjoining KUNNAN
and SPORTS CONCEPT from using the disputed trademarks.
The RTC found that SUPERIOR
sufficiently proved that it was the first user and owner of the disputed
trademarks in the Philippines, based on the findings of the Director of Patents
in Inter Partes Case No. 1709 and 1734 that SUPERIOR was “rightfully entitled
to register the mark ‘KENNEX’ as user and owner thereof.” It also considered the “Whereas clause” of
the Distributorship Agreement, which categorically stated that “KUNNAN intends
to acquire ownership of [the] KENNEX trademark registered by
KUNNAN and SPORTS CONCEPT appealed the RTC’s decision to the
CA where the appeal was docketed as CA-G.R. CV No. 60777. KUNNAN maintained that
Intervening
Developments:
The IPO and CA Rulings
In the course of its appeal to the CA, KUNNAN filed on December 19, 2003 a Manifestation and Motion
praying that the decision of the Bureau
of Legal Affairs (BLA) of the
Intellectual Property Office (IPO),
dated October 30, 2003, in the Consolidated Petitions for Cancellation be made of record and be considered by the CA
in resolving the case.[25] The BLA ruled in this decision –
In the case at bar, Petitioner-Opposer (Kunnan) has overwhelmingly and convincingly established its rights to the mark “PRO KENNEX”. It was proven that actual use by Respondent-Registrant is not in the concept of an owner but as a mere distributor (Exhibits “I”, “S” to “S-1”, “P” and “P-1” and “Q” and “Q-2”) and as enunciated in the case of Crisanta Y. Gabriel vs. Dr. Jose R. Perez, 50 SCRA 406, “a mere distributor of a product bearing a trademark, even if permitted to use said trademark has no right to and cannot register the said trademark.”
WHEREFORE, there being sufficient evidence to prove that the Petitioner-Opposer (KUNNAN) is the prior user and owner of the trademark “PRO-KENNEX”, the consolidated Petitions for Cancellation and the Notices of Opposition are hereby GRANTED. Consequently, the trademark “PRO-KENNEX” bearing Registration Nos. 41032, 40326, 39254, 4730, 49998 for the mark PRO-KENNEX issued in favor of Superior Commercial Enterprises, Inc., herein Respondent-Registrant under the Principal Register and SR No. 6663 are hereby CANCELLED. Accordingly, trademark application Nos. 84565 and 84566, likewise for the registration of the mark PRO-KENNEX are hereby REJECTED.
Let the file wrappers of PRO-KENNEX subject matter of these cases be forwarded to the Administrative Finance and Human Resources Development Services Bureau (AFHRDSB) for appropriate action in accordance with this Decision and a copy thereof be furnished the Bureau of Trademarks (BOT) for information and update of its record.[26]
On February 4, 2005, KUNNAN again filed another Manifestation
requesting that the IPO Director General’s
decision on appeal dated December 8, 2004, denying
WHEREFORE, premises considered, there is no cogent reason to disturb Decision No. 2003-35 dated 30 October 2003 rendered by the Director of the Bureau of Legal Affairs. Accordingly, the instant appeal is DENIED and the appealed decision is hereby AFFIRMED.
We take judicial notice that
The CA Ruling
On June 22, 2005, the CA issued its decision in CA-G.R. CV
No. 60777, reversing and setting aside the RTC’s decision of March 31, 1998.[30] It dismissed
The CA stressed that SUPERIOR’s
possession of the aforementioned Certificates of Principal Registration does
not conclusively establish its ownership of the disputed trademarks as
dominion over trademarks is not acquired
by the fact of registration alone;[31]
at best, registration merely raises a presumption of ownership that can be
rebutted by contrary evidence.[32]
The CA further emphasized that the Certificates of Supplemental Registration
issued in SUPERIOR’s name do not even enjoy the presumption of ownership
accorded to registration in the principal register; it does not amount to a prima facie evidence of the validity of
registration or of the registrant’s exclusive right to use the trademarks in
connection with the goods, business, or services specified in the certificate.[33]
In contrast with the failure of
First, the CA found that the
Distributorship Agreement, considered in its entirety, positively confirmed
that
(1) that
(2) that “KUNNAN
will appoint the sole
distributorship right to
(3) that “no third parties will be
permitted to supply KENNEX PRODUCTS in the
The CA thus emphasized that
the RTC erred in unduly relying on the first whereas clause, which states that “KUNNAN intends to acquire ownership
of [the] KENNEX trademark registered by SUPERIOR in the Philippines” without
considering the entirety of the Distributorship Agreement indicating that
SUPERIOR had been merely appointed by KUNNAN as its distributor.
Second, the CA also noted that
Third, the CA also took note of
Based on these reasons, the CA ruled that
The CA denied
THE PETITION
In the present petition,
I.
WHETHER OR NOT THE COURT OF APPEALS ERRED IN HOLDING
THAT PETITIONER
II.
WHETHER OR NOT THE HONORABLE COURT OF APPEALS ERRED IN
HOLDING THAT PETITIONER
III.
WHETHER OR NOT THE HONORABLE COURT OF APPEALS ERRED IN
REVERSING AND SETTING ASIDE THE DECISION OF THE REGIONAL TRIAL COURT OF QUEZON CITY
IN CIVIL CASE NO. Q-93-14888, LIFTING THE PRELIMINARY INJUNCTION ISSUED AGAINST
RESPONDENTS KUNNAN AND SPORTS CONCEPT AND DISMISSING THE COMPLAINT FOR
INFRINGEMENT OF TRADEMARK AND UNFAIR COMPETITION WITH PRELIMINARY INJUNCTION
THE COURT’S RULING
We do not find the petition
meritorious.
On
the Issue of Trademark Infringement
We first consider
the effect of the final and executory decision in the Registration Cancellation
Case on the present case. This decision
- rendered after the CA decision for trademark infringement and unfair
competition in CA-G.R. CV No. 60777 (root of the present case) - states:
As to whether respondent Kunnan was able
to overcome the presumption of ownership in favor of
While
In fine, We
see no error in the decision of the Director General of the IPO which affirmed
the decision of the Director of the Bureau of Legal Affairs canceling the
registration of the questioned marks in the name of petitioner Superior and
denying its new application for registration, upon a finding that Superior is
not the rightful owner of the subject marks.
WHEREFORE,
the foregoing considered, the petition is DISMISSED.
The CA decided
that the registration of the “KENNEX” and “PRO KENNEX” trademarks should be
cancelled because
Section 22 of Republic Act No. 166, as amended (“RA
166”),[36]
the law applicable to this case, defines trademark infringement as
follows:
Section 22. Infringement, what constitutes. — Any person who [1] shall
use, without the consent of the registrant,
any reproduction, counterfeit, copy or colorable
imitation of any
registered mark or trade-name 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 [2] reproduce, counterfeit, copy,
or colorably imitate any such mark or trade-name
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. [Emphasis supplied]
Essentially, Section 22 of RA 166 states that only a
registrant of a mark can file a case for infringement. Corollary to this, Section 19 of RA 166
provides that any right conferred upon the registrant under the provisions of
RA 166[37]
terminates when the judgment or order of cancellation has become final, viz:
Section 19. Cancellation of registration.
- If the Director finds that a case for cancellation has been made out he shall
order the cancellation of the registration. The order shall not become
effective until the period for appeal has elapsed, or if appeal is taken, until
the judgment on appeal becomes final. When
the order or judgment becomes final, any right conferred by such registration
upon the registrant or any person in interest of record shall terminate.
Notice of cancellation shall be published in the Official Gazette. [Emphasis
supplied.]
Thus, we have previously held that the cancellation of
registration of a trademark has the effect of depriving the registrant of protection
from infringement from the moment judgment or order of cancellation has become
final.[38]
In the present case, by operation of law, specifically
Section 19 of RA 166, the trademark infringement aspect of
Even assuming
that
As a mere distributor, petitioner
In addition, we also note that the doctrine of res judicata bars
In the present case, the second concept – conclusiveness of
judgment – applies. Under the concept of
res judicata by conclusiveness of judgment, a final judgment or decree on the
merits by a court of competent jurisdiction is conclusive of the rights of the
parties or their privies in all later suits on points and matters
determined in the former suit.[41]
Stated differently, facts and issues actually and directly resolved in a former
suit cannot again be raised in any future case between the same parties, even
if the latter suit may involve a different cause of action.[42] This second branch of the principle of res judicata bars the re-litigation of
particular facts or issues in another litigation between the same parties on a
different claim or cause of action.[43]
Because the Registration Cancellation Case and the present
case involve the same parties, litigating with respect to and disputing the
same trademarks, we are bound to examine how one case would affect the other.
In the present case, even if the causes of action of the Registration
Cancellation Case (the cancellation of trademark registration) differs from
that of the present case (the improper or unauthorized use of trademarks), the
final judgment in the Registration Cancellation Case is nevertheless conclusive
on the particular facts and issues that are determinative of the present
case.
To
establish trademark
infringement, the following elements
must be proven: (1) the validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its colorable
imitation by the alleged infringer results in “likelihood of confusion.”[44]
Based
on these elements, we find it immediately obvious that the second element – the
plaintiff’s ownership of the mark – was what the Registration Cancellation Case
decided with finality. On this element
depended the validity of the registrations that, on their own, only gave rise
to the presumption of, but was not conclusive on, the issue of ownership.[45]
In
no uncertain terms, the appellate court
in the Registration Cancellation Case ruled that
On the
Issue of Unfair Competition
Our review of the records shows that the neither the RTC nor the
CA made any factual findings with respect to the issue of unfair
competition. In its Complaint,
17. In January 1993, the plaintiff learned that
the defendant Kunnan Enterprises, Ltd., is intending to appoint the defendant
Sports Concept and Distributors, Inc. as its alleged distributor for sportswear
and sporting goods bearing the trademark “PRO-KENNEX.” For this reason, on January 20, 1993, the
plaintiff, through counsel, wrote the defendant Sports Concept and
Distributor’s Inc. advising said defendant that the trademark “PRO-KENNEX” was
registered and owned by the plaintiff herein.
18. The above information was affirmed by an
announcement made by the defendants in The Manila Bulletin issue of January 29,
1993, informing the public that defendant Kunnan Enterprises, Ltd. has
appointed the defendant Sports Concept and Distributors, Inc. as its alleged
distributor of sportswear and sporting goods and equipment bearing the
trademarks “KENNEX and “PRO-KENNEX” which trademarks are owned by and
registered in the name of plaintiff herein as alleged hereinabove.
x x x x
27. The
acts of defendants, as previously complained herein, were designed to and are
of the nature so as to create confusion with the commercial activities of
plaintiff in the Philippines and is liable to mislead the public as to the
nature and suitability for their purposes of plaintiff’s business and the
defendant’s acts are likely to discredit the commercial activities and future
growth of plaintiff’s business.
From jurisprudence, unfair
competition has been defined as the passing off (or palming
off) or attempting to pass off upon the public of the goods or business of one
person as the goods or business of another with the end and probable effect of
deceiving the public. The
essential elements of unfair
competition[47] are (1)
confusing similarity in the general appearance of the goods; and (2) intent to
deceive the public and defraud a competitor.[48]
Jurisprudence
also formulated the following “true test” of unfair competition: whether the acts of the defendant
have the intent of deceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions of the particular trade to
which the controversy relates. One of the essential requisites in an action to
restrain unfair competition is proof of fraud; the intent to deceive, actual or
probable must be shown before the right to recover can exist.[49]
In the present
case, no evidence exists showing that KUNNAN ever attempted to pass off the
goods it sold (i.e. sportswear,
sporting goods and equipment) as those of
NOTICE
AND WARNING
Kunnan
Enterprises Ltd. is the owner and first user of the internationally-renowned
trademarks KENNEX and PRO KENNEX for sportswear and sporting goods and
equipment. Kunnan Enterprises Ltd. has
registered the trademarks KENNEX and PRO KENNEX in the industrial property
offices of at least 31 countries worldwide where KUNNAN Enterprises Ltd. has
been selling its sportswear and sporting goods and equipment bearing the KENNEX
and PRO KENNEX trademarks.
Kunnan
Enterprises Ltd. further informs the public that it had terminated its
Distributorship Agreement with Superior Commercial Enterprises, Inc. on
December 31, 1991. As a result, Superior Commercial Enterprises, Inc. is no
longer authorized to sell sportswear and sporting goods and equipment
manufactured by Kunnan Enterprises Ltd. and bearing the trademarks KENNEX and
PRO KENNEX.
x x x x
In its place,
KUNNAN has appointed SPORTS CONCEPT AND DISTRIBUTORS, INC. as its exclusive Philippine
distributor of sportswear and sporting goods and equipment bearing the
trademarks KENNEX and PRO KENNEX. The public is advised to buy sporting goods
and equipment bearing these trademarks only from SPORTS CONCEPT AND
DISTRIBUTORS, INC. to ensure that the products they are buying are manufactured
by Kunnan Enterprises Ltd. [Emphasis supplied.]
Finally,
with the established ruling that KUNNAN is the rightful owner of the trademarks
of the goods that SUPERIOR asserts are being unfairly sold by KUNNAN under
trademarks registered in SUPERIOR’s name, the latter is left with no effective
right to make a claim. In other words,
with the CA’s final ruling in the Registration Cancellation Case,
WHEREFORE, premises considered, we DENY
SO ORDERED.
ARTURO D. BRION
Associate Justice
WE CONCUR:
ANTONIO T. CARPIO
Associate Justice Chairperson |
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MARIANO C. Associate
Justice |
ROBERTO A.
ABAD Associate Justice |
JOSE
Associate Justice
ATTESTATION
I attest that the conclusions in the
above Decision had been reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.
ANTONIO
T. CARPIO
Associate Justice
Chairperson
CERTIFICATION
REYNATO S. PUNO
Chief Justice
[1] Under Rule 45 of the RULES OF COURT.
[2] Dated June 22, 2005; penned by Associate Justice Japar B. Dimaampao and concurred in by Associate Justice Renato C. Dacudao and Associate Justice Edgardo F. Sundiam (both retired); rollo, pp. 33-50.
[3] CA rollo, pp. 11-22.
[4] Dated October 4, 2005; rollo, pp. 51-52.
[5]
[6] KUNNAN is foreign corporation organized under the laws of Taiwan, Republic of China, doing business in the Philippines; id.
[7] SPORTS CONCEPT is a domestic corporation organized under Philippine laws; id.
[8]
[9] SUPERIOR alleged that it first used the mark “KENNEX” in the Philippines on March 15, 1978 and registered the mark in its name under Supplemental Registration No. 34478 dated May 31, 1985 to be used for the following goods, namely: “tennis racket, pelota racket, pingpong racket, goal net, volleyball net and tennis shoulder bags;” id at 12.
[10] SUPERIOR also claimed that it first used the mark “KENNEX & DEVICE OF LETTER ‘K” INSIDE A CIRCLE OF THORNS” in the Philippines on March 15, 1978; the mark was registered in its name under Supplemental Registration No. 4730 dated May 23, 1980 to be used for the following goods: “tennis racket, pelota racket, pingpong, squash racket, badminton racket, basketball, tennis ball, soccer ball, foot ball, badminton shuttlecock, sports clothing, head ban, wrist band, basketball goal net, tennis net, volleyball net, tennis shoulder bag, handbag and sport rubber shoes, tennis string;” id.
[11] SUPERIOR also alleged that the trademark “PROKENNEX” was first used in the Philippines by KUNNAN on August 1, 1982 and was registered under the former’s name as assignee under Principal Certificate of Registration No. 39254 dated July 13, 1988 for the following goods: “handbags, travelling bags and trunks;” id at 13.
[12]
[13]
[14] KUNNAN alleged that it has manufactured products bearing the KENNEX and PRO KENNEX trademarks and sold them in the Philippines, initially through the importation by independent outlets and the subsequently through agreements with local distributors; id. at 90-91.
[15] KUNNAN also alleged that its initial distributorship agreement was with Bonmark Sportsmasters, Inc. from August 21, 1982 to January 3, 1983; id. at 91.
[16]
[17]
[18]
[19] On
January 1, 1998, Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the
[20]
[21]
[22]
[23] The dispositive portion of the decision reads:
WHEREFORE, it is
hereby ordered that it appearing from the established facts that great and
irreparable damage and injury has resulted and will continue to result to the
Plaintiff, let a writ of preliminary injunction be issued enjoining the
defendants KUNNAN ENTERPRISES LIMITED, and SPORTS CONCEPT AND DISTRIBUTOR INC.,
their officers, employees, agents, representatives, or assigns and other
persons acting for and in their behalf, from using, in connection with its
business the trademarks KENNEX, PRO-KENNEX AND KENNEX and DEVICE OF LETTER “K”
INSIDE A CIRCLE OF THORNS and the like and any other marks and trade names
which are identical or confusingly similar to plaintiff’s marks and trade
names.
a.)
All infringing matter in the possession of defendants, its officers,
employees, agents, representatives, or assigns should be delivered to this
Court or the plaintiff and be accordingly destroyed;
b.)
Defendants are hereby ordered to render an accounting of the sales
from the time it commenced using the marks and trade names of the plaintiff up
to the time of judgment, including the profits derived from said sales;
c.)
Defendants are hereby ordered to pay plaintiff the amount of
P2,000,000.00 which is the reasonable profit which plaintiff could have made,
had not defendant infringed the plaintiff’s trademarks;
d.)
Defendants are likewise ordered to pay plaintiff’s attorney’s fees and
expenses of litigation in the amount of P500,000.00;
e.)
Defendants should pay the cost of the suit.
SO ORDERED.
[24] CA rollo, pp. 11-22.
[25] Rollo, p. 39.
[26]
[27] Supra note 23.
[28]
[29] Decision penned by Guevara-Salonga, J., with Roxas and Garcia, JJ., concurring.
[30] The dispositive portion of which states:
WHEREFORE, the Appeal is
GRANTED. The Decision dated 31 March
1998 of the Regional Trial Court of
SO ORDERED. Rollo, p. 49.
[31] Citing Phillip Morris v. Court of Appeals, G.R. No. 91332, July 16, 1993, 224 SCRA 576, 596.
[32] Citing Emerald Garment Manufacturing Corp. v. Court of Appeals, G.R. No. 100098, December 29, 1995, 251 SCRA 600, 622-623.
[33] Citing La Chemise Lacoste, S.A. v. Fernandez, G.R. Nos. L-63796-97 and L-65659, May 21, 1984, 129 SCRA 373, 392.
[34] The provision states:
x x x The owner of a trademark, a trade-name or service mark used to distinguish his goods, business or services from the goods, business or services of other shall have the right to register the same. x x x
[35] See Marvex Commercial Co. Inc. v. Petra Hawpia & Milling Co., G.R. No. L-19297, December 22, 1966, 18 SCRA 1178, 1180; Unno Commercial Enterprises, Inc. v. General Milling Corporation, G.R. No. L-28554, Ferbuary 28, 1983, 120 SCRA 804, 808-809; Gabriel v. Perez, G.R. No. L-24075, January 31, 1974, 55 SCRA 406.
[36] An Act To Provide For the Registration and Protection of Trademarks, Trade-Names, and Service-Marks, Defining Unfair Competition and False Marking And Providing Remedies Against The Same, And For Other Purposes.
[37] Section 20 of RA 166 considers the trademark registration certificate as prima facie evidence of the validity of the registration, the registrant’s ownership and exclusive right to use the trademark in connection with the goods, business or services as classified by the Director of Patents and as specified in the certificate, subject to the conditions and limitations stated therein. See Mighty Corporation v. E. & J. Gallo Winery, G.R. No. 154342, July 14, 2004, 434 SCRA 473, 495.
[38] See Heirs of Crisanta Y. Gabriel-Almoradie v. Court of Appeals, G.R. No. 91385, January 4, 1994, 229 SCRA 15, 32-33.
[39] Western Equipment & Supply Co. v. Reyes, 51 Phil. 115 (1927).
[40] Gabriel v. Perez, G.R. No. L-24075, January 31, 1974, 55 SCRA 406.
[41] Rules of
Court, Section 47(c),
Rule 39 – Effect of judgments or final orders. – The effect of a judgment or
final order rendered by a court of the
x x x x
(c) In any other litigation between the same
parties or their successors in interest, that only is deemed to have been
adjudged in a former judgment or final order which appears upon its face to
have been so adjudged, or which was actually and necessarily included therein
or necessary thereto.
See also Gutierrez v. Court of Appeals, 193 SCRA 437 (1991).
[42] Tan v. Court of Appeals, G.R. No. 142401, August 20, 2001.
[43] Mata v. Court of Appeals, 376 Phil. 525 (1999).
[44] McDonald’s Corporation v. L.C. Big Mak Burger, Inc., G. R. No. 143993, August 18, 2004, 437 SCRA 10.
[45] Supra note
31.
[46] Original Records, pp. 5-8.
[47] Under Section 29 of RA 166, any person who employs deception or any other means contrary to good faith by which he passes off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who commits any acts calculated to produce said result, is guilty of unfair competition. Unfair competition include the following acts:
a) Any person, who in selling his goods shall give them the
general appearance of goods of another manufacturer or dealer, either as to
the goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words
thereon, or in any feature of their appearance, which would be likely to influence purchasers to
believe that the goods offered are those of a manufacturer or dealer, other
than the actual manufacturer or dealer, or who otherwise clothes the
goods with such appearance as shall deceive the public and defraud
another of his legitimate trade, or any subsequent vendor of such goods
or any agent of any vendor engaged in selling such goods with a
like purpose;
(b) Any person who by any
artifice, or device, or who employs any other means calculated to
induce the false belief that such person is offering the services of another
who has identified such services in the mind of the public; or
(c) Any person who shall
make any false statement in the course of trade or who shall
commit any other act contrary to good faith of a nature calculated to
discredit the goods, business or services of another. [Emphasis supplied.]
[48] Supra note 42.
[49] Coca-Cola Bottlers, Inc.v. Quintin J. Gomez, G.R. No. 154491, November 14, 2008.
[50] G. R. No. 143993, August 18, 2004, 437 SCRA 10.
[51] Original Records, p. 14.