Ong vs. People of the Philippines, GR. No. 169440, Nov.

23, 2011, the Supreme Court held that: “To establish trademark
infringement, the following elements must be shown: 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.’” The
element of confusion is the most important. In that case, it was ruled that the counterfeit cigarettes seized from the
accused “were intended to confuse and deceive the public as to the origin of the cigarettes intended to be sold, as they
not only bore (the “Marlboro” trademark), but they were also packaged almost exactly as (Marlboro) products. The
accused was then convicted for selling counterfeit “Marlboro” cigarettes.

Trademark Infringement. To establish trademark infringement under R.A. 8293 or the Intellectual Property Code, the
following elements must be shown: (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.” Of these, it is the
element of likelihood of confusion that is the gravamen of trademark infringement. Gemma Ong a.k.a. Ma. Theresa
Gemma Catacutan v. People of the Philippines, G.R. No. 169440, November 23, 2011.

Trademark Infringement. A mark is valid if it is distinctive and not barred from registration. Once registered, not only the
mark’s validity, but also the registrant’s ownership of the mark is prima facie presumed. The prosecution was able to
establish that the trademark “Marlboro” was not only valid for being neither generic nor descriptive, it was also exclusively
owned by PMPI, as evidenced by the certificates of registration issued by the Intellectual Property Office of the
Department of Trade and Industry. Anent the element of confusion, the counterfeit cigarettes seized from Gemma’s
possession were intended to confuse and deceive the public as to the origin of the cigarettes intended to be sold, as they
not only bore PMPI’s mark, but they were also packaged almost exactly as PMPI’s products. Gemma Ong a.k.a. Ma.
Theresa Gemma Catacutan v. People of the Philippines, G.R. No. 169440, November 23, 2011.

There are rare occasions by which a criminal case is filed for violation of the Intellectual Property Code of the Philippines
(Republic Act No. 8293). But in those rare occasions, the Philippine courts do not hesitate to sink their teeth in deeply and
put the counterfeiter behind bars. After more than a decade of legal battle in the case of Gemma Ong aka Maria Teresa
Gemma Catacutan v. People of the Philippines, GR No. 169440, the Supreme Court of the Philippines upheld the
conviction of the accused for selling counterfeit Marlboro cigarettes, a crime she was charged with on July 28, 2000.

Marlboro cigarettes are exclusively manufactured and distributed in the Philippines by Telengtan Brothers and Sons, Inc
(doing business as La Suerte Cigar and Cigarettes Factory) under license by Philip Morris Products, Inc (PMPI ). PMPI is
the registered owner of the trademark Marlboro Label.

Based on reliable information, the Economic Intelligence and Investigation Bureau (EIIB) conducted surveillance and test-
buy operations in different sari-sari stores in Manila in September 1998. A sari-sari store is a small-scale privately owned
convenience store usually operated within the shopkeeper’s residence. During the surveillance operations, a container
van discovered to be delivering Marlboro cigarette packs in black plastic bags was seen parked at a house in Manila’s
Santa Cruz district. The property is believed to be owned by a certain Jackson Ong. The random sample purchases
gathered during the surveillance and test buy operations were confirmed to be counterfeit Marlboro cigarettes.

On the strength of these findings, a Search Warrant was issued and served upon the premises of Jackson Ong. The
owner was not present during the raid, and remains at-large up to the present time. However, it was the accused, the
spouse or common-law wife of Jackson Ong, that met with the officers. She signed her name in the “Inventory” and
“Certification in the Conduct of the Search” documents as Gemma Ong, Owner/Representative. Boxes containing 50
reams, or cartons, of counterfeit Marlboro cigarettes were seized from the premises.

During trial, the accused raised the defense of mistaken identity. She denied that she is the Gemma Ong accused in this
case. The accused posits that while she is married to a certain Co Yok Piao, she continues to use her maiden name Maria
Teresa Gemma Catacutan. She is a dentist by profession and a business woman, and owns Fascinate Trading, which
has a registered address in the premises where the counterfeit cigarettes were seized. She claims that the arresting
officer did not ask her name when she was arrested. When she pleaded to be released, she was instructed to post a cash
bond which she did under her maiden name. The accused claims that she was not able to bring up the defense of
mistaken identity early on as she did not know when was the proper time to raise said information.

The Regional Trial Court (RTC) was not persuaded by the defense and convicted the accused of the crime of
Infringement and sentenced her to imprisonment of two years and a fine of P50,000 (US$1,136).

In resolving the case, the RTC ruled that the accused Gemma Ong and Maria Teresa Gemma Catacutan is one and the
same person. It is unusual for the accused, a professional dentist and business woman, to have remained meek and
silent through-out her arrest and posting of bail bond. The RTC said that the accused should have taken it upon herself to
reveal her true identity, if she was indeed innocent, and that such opportunity was presented on several occasions —
when she was arrested, when she posted her bail bond and during arraignment. However, the accused never raised the
issue of her true identity until it was too late during the trial.

The Supreme Court, in its decision, further noted that contrary to the accused’s allegations, she was positively identified
by the EIIB operatives during enforcement of the search warrant to be one and the same person as the accused in Court.
The Court ruled that “the defense of denial is insipid and weak as it is easy to fabricate and difficult to prove; thus, it
cannot take precedence over the positive testimony of the offended party. The defense of denial is unavailing when
placed astride the undisputed fact that there was positive identification of the accused.”

This decision was brought on appeal to the Court of Appeals and thereafter, the Supreme Court. In both instances, the
appeal was denied and the conviction of accused upheld. The Supreme Court’s decision was promulgated on November
23, 2011. This case illustrates the Philippine government’s firm resolve to enforce intellectual property rights and bring
those who violate the law to justice. Indeed, the Court will not be swayed by flimsy contentions raised by the accused and
their lawyers to run afoul of the Intellectual Property Code.