MODULE 5

Trademark Infringement Cases

1. Prosource International, Inc. v. Horphag Research Management SA, G.R. No.

180073, November 25, 2009

Respondent Horphag Research is the owner of the trademark PCYNOGENOL registered with
the IPO which is used for food supplements. The controversy began when the respondent
discovered that the petitioner was using PCO-GENOLS as a mark for its food supplements
which the petitioner is likewise selling and distributing. This prompted the respondent to file a
complaint for trademark infringement against the petitioner claiming that petitioner’s mark is
confusingly similar with the respondent’s registered trademark.

Whether the complaint for trademark infringement will prosper?

Yes, it will prosper. The gravamen of trademark infringement is the likelihood of confusion and in
determining such likelihood of confusion, jurisprudence has developed two tests: dominancy
and holistic or totality test. In this case, the SC agreed with the lower courts’ application of the
dominancy test. Particularly, in applying the dominancy test, courts will consider more the aural
and visual impressions created by the marks in the public mind, giving little weight to factors
such as quality, sales, prices, among others. Applying the said test, indeed the two marks are
confusingly similar when the two are read and pronounced. Although the letters Y and N are
absent in petitioner’s PCO-GENOLS, it cannot be denied that this mark was likely to deceive the
purchasing public, especially that it refers to a similar product to which respondent’s
PYCNOGENOL refer–food supplement.

Notes:
● Elements of trademark infringement under RA 166 and under RA 8293
○ RA 166:
■ Trademark that is actually used in commerce and registered
■ Its use in connection with the sale or offering for sale of any identical or
similar goods
■ Such use is likely to cause confusion
■ Such use is without the consent of the registrant
○ RA 8293:
■ Trademark that is registered with the IPO; in case of tradename, the
same need not be registered
■ It is reproduced, counterfeited, copied, or colorably imitated
■ The infringing mark is used in connection with the sale or any goods or
services
■ Such use is likely to cause confusion
■ Done without the consent of the registrant
● Defense of petitioner: that it discontinued the use of the challenged mark

2. Ong v. People, G.R. No. 169440, November 23, 2011

PMPI is the registered owner of the trademark MARLBORO for its cigarette products being sold
in the Philippines. Unfortunately for PMPI, its cigarettes were being counterfeited and the
counterfeit cigarettes were being sold in Sta. Cruz, Binondo, among others. Due to this, an
investigation was conducted and following a reliable information and surveillance, petitioner was
eventually arrested and was found to be in possession of counterfeit Marlboro cigarette
products during a raid conducted by the Intellectual Property Rights Unit of the EIIB. It was then
discovered that the cigarettes seized from petitioner bore the mark MARLBORO and were
packed almost exactly as PMPI’s cigarettes.
Whether there is infringement in this case?

Yes, there is. 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." Of
these, it is the element of likelihood of confusion that is the gravamen of trademark infringement.
In this case, it would appear that there is no question as to the validity and ownership by the
PMPI of the trademark “MARLBORO”. As to the element of confusion, the Court is convinced
that the same is present. The cigarettes seized from petitioner’s possession were intended to
confuse the public as they not only bore PMPI’s trademark “MARLBORO” but they were also
packaged almost exactly as PMPI’s cigarette products.

3. Levi Strauss & Co. v. Sevilla, G.R. No. 219744, March 1, 2021

Petitioner Levi Strauss is the owner of the word mark “LeVI’S” since 1946 which it is using for its
product covered under Class 25 of the Nice Classification (mainly clothing). On the other hand,
respondents are the original registrant of the mark LIVe’s and transferee of the same
respectively which pertain to the same classification of product under the Nice Classification.
Prior to the controversy between these parties which was commenced before the IPO-BLA, the
petitioner had conducted a consumer survey called Project Cherokee 25 which revealed that
86% of its participants associated the LIVe’S mark with LeVI’S while 90% thereof read the
stylized LIVe’S mark as LeVI’S. This, therefore, prompted the petitioner to file a petition for
cancellation of the respondent’s mark LIVe’S. The IPO-BLA dismissed the petition finding that
there is no confusing similarity on the ground that the marks have different pronunciations,
spellings, meanings, designs, and prices. The finding of no confusing similarity was likewise
affirmed by the IPO-DG as well as the CA.

Whether the mark LIVe’s is confusingly similar with petitioner’s LeVI’S such that the former’s
registration should be canceled?

Yes, it is confusingly similar and, thus, should be canceled. The Rules of Procedure for
Intellectual Property Rights cases instruct that in determining whether one trademark is
confusingly similar to another, the court must consider the general impression of the ordinary
purchaser buying under normally prevalent conditions and giving the attention that such buyers
usually give in buying that particular class of goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks as they are encountered in the realities of the
marketplace must be taken into account. Where there are both similarities and differences,
these must be weighed against one another to determine which predominates.

Further, the SC had taken into consideration the abandonment of the holistic test in the case of
Kolin Electronics v. Kolin Philippines. Thus, in this case, the SC had given more weight to the
dominancy test which focuses not only on the visual but also on the aural and connotative
comparisons and overall impressions of the competing trademarks.

Taking into consideration the Rules of Procedure and the dominancy test which focus on the
aural and connotative comparisons and overall impressions of the marks in question, the SC
found that the same are indeed confusingly similar with one another, finding that, respondent’s
LIVe’S is but a mere anagram of petitioner’s LeVI’S, the only difference being the positioning of
the letters E and I in their marks. Thus, to the Court’s mind, it would not be far fetched that a
buyer would be led to confuse one with the other.

Notes:
● IPO-BLA, IPO-DG, and the CA also cited the ruling of the Court in Levi Strauss v. Lim
which apparently found that there is no confusing similarity
○ Note, however, that this finding was only made with reference to the issue
whether the DOJ exercised grave abuse of discretion in finding that there is lack
of probable cause to indict the respondents therein for unfair competition.
● Even under the Holistic Test, the Court is of the opinion that the marks are confusingly
similar, considering that:
○ They refer to competing goods
○ Their use in the product label themselves are almost the same
○ Respondent’s use of the number 105 as juxtaposed to petitioner’s 501 supports
the view that respondent’s LIVe’S is a mere colorable imitation of petitioner’s
LeVI’S
● The SC also noted the evidence on record showing actual confusion

Unfair Competition Cases

1. Pilipinas Shell Petroleum v. Romars Int’l, G.R. No. 189669, February 16, 2015
The petitioners sought the assistance of NBI to investigate the alleged illegal refilling by the
respondents of the cylinders owned by herein petitioner and which likewise bear their
trademarks. During the investigation, the NBI bought cylinders from Edrich Enterprises located
in Iriga City (one of the stores to which herein respondent deliver refilled Gasul and Shellane
cylinders). Thereafter, the petitioners filed two separate applications for search warrant for
violation of Sec. 155 in relation to Sec. 170 of RA 8293 before the RTC of Naga City. These
applications were eventually granted and enforced which resulted in the seizure of the cylinders
from the Edrich Enterprises. For its part, the respondent filed a motion to quash on the ground
that (a) there is no probable cause (2) there had been a lapse from the date of the test-buy to
the search and seizure operations, (3) that most of the cylinders seized were not owned by the
respondent, and that (4) Edrich is an authorized outlet of Gasul. This motion was then denied.
Notably, later, the new counsel of the respondent filed an appearance with motion for
reconsideration, raising for the first time the impropriety of the venue where the search warrant
applications were filed.

Whether the venue for the application for search warrants is jurisdictional such that the belated
raising of the issue of impropriety of venue can still be given due course?

No, it is not jurisdictional. The issuance of a search warrant is merely a process, generally
issued by a court in the exercise of its ancillary jurisdiction and not a criminal action to be
entertained by a court pursuant to its original jurisdiction. Thus, the belated raising of the issue
of impropriety of venue should not have been given due course. Considering, therefore, that the
motion to quash initially filed did not raise the impropriety of venue, said issue must have been
considered waive.

Notes:
● In other words, if you are seeking for search warrants in connection with Intellectual
Property Rights violation, you must file the same with either:
○ a. the court within whose territorial jurisdiction the crime was committed; or
○ b. for compelling reasons, the court within whose judicial region the crime was
committed if the place of commission was known or the court within whose
judicial region the warrant shall be enforced; or
○ c. if the criminal case is already filed, with the court before whom the criminal
case is pending
● And if you are going to quash the search warrant, you should raise all available
objections at the time of the filing of the motion to quash. Otherwise, these objections or
grounds for quashal will be deemed waived.

2. Willaware Products Corp v. Jesichris Mfg. Corp., G.R. No. 195549, September 3,
2014

Petitioner Willaware was initially engaged in the business of manufacturing and selling
kitchenware. Sometime in November 2000, petitioner hired the former employees of respondent
Jesichris Manufacturing, an enterprise located near the petitioner and is engaged in the
business of manufacturing and selling plastic-made automotive parts. As petitioner acquired
familiarity with the process of manufacturing plastic-made automotive parts through the
respondent’s former employees, petitioner started to manufacture said parts and offer the same
at a lower price. Arguing that the petitioner committed acts amounting to unfair competition, the
respondent therefore filed a complaint for damages for unfair competition. For its part, the
petitioner argued that since there is no intellectual property protecting the goods in question,
considering that the automotive parts being made by the respondent are not covered by patent
registrations, the copying and selling of the same do not amount to unfair competition.

Whether there can be unfair competition despite the absence of a registration?

Yes, there can be unfair competition which is covered by the unfair competition under Art. 28 of
the Civil Code. Said Article covers a broader concept of unfair competition which includes,
among others, discovery of trade secrets, bribery of employees, or any malicious interference in
the business of a competitor. Needless to say, the law does not prohibit competition. What it
prohibits is unfair competition. Relevantly, for a competition to qualify as unfair, it must have
these two characteristics: (1) it must involve an injury to a trade rival and (2) that it must involve
acts contrary to good conscience which include force, intimidation, deceit, machination, or any
other unjust, oppressive, or high-handed method.
In this case, both of these characteristics are present. First, the issue involved an injury to a
trade rival, herein respondent who is likewise engaged in the business of manufacturing and
selling automotive parts. Second, the acts of the petitioner are acts contrary to good conscience
and this may be inferred from its physical proximity, its developed familiarity with the
respondent’s business by hiring the latter’s former employees, and from the fact that it was
never engaged in the business in which the respondent was so engaged until after acquiring
familiarity with the respondent’s processes.

3. Espiritu v. Petron Corporation, G.R. No. 170891, November 24, 2009

Kristina Patricia Enterprises (KPE) is the exclusive distributor of respondent’s Petron Gasul in
Sorsogon, an LPG contained in gas cylinders bearing the mark Gasul. On the other hand, Bicol
Gas Refilling Plant is likewise engaged in the business of distributing and selling LPG products
contained in cylinders. Notably, in the course of trade, there were instances where distributors
would acquire possession of the LPG cylinders of the other distributors in which case, these
cylinders are called captured cylinders. This is why KPE and Bicol Gas had an agreement to
swap LPG cylinders. The issue between the two enterprises began, however, when KPE’s
manager, Jose, observed that there were still Gasul LPG cylinders in the possession of Bicol
Gas which the latter had declined to swap with those of the KPE. At one point, Jose followed
one of the trucks of Bicol Gas after noticing that it is carrying a Gasul gas tank. Thereafter, he
discovered that the said gas tank was actually loaded with LPG. This precipitated the filing of
the complaint for violations of RA 623 for illegally filling up registered cylinder tanks, for
trademark infringement, and for unfair competition under the IP Code.

Whether the complaint for unfair competition will prosper?

No, it will not prosper. Essentially, what the law punishes as unfair competition under the IP
Code is the act of giving one’s goods the general appearance of the goods of another which
would likely mislead the buyer into believing that such goods belong to the latter. Here, there is
no showing that Bicol gas has been giving its LPG tanks the general appearance of the tanks of
Petron’s Gasul. As may be gleaned from the records, the truck which Jose had arrested on a
road just happened to have mixed up with them one Gasul tank belonging to Petron.

4. Coca-Cola Bottlers Philippines, Inc. Naga Plant v. Gomez, G.R. No. 154491,
November 14, 2008

Petitioner Coca-Cola Bottlers in Naga Plant applied for a search warrant against Pepsi for
allegedly hoarding empty Coke bottles in its yard in order to withdraw the said bottles from
circulation and impede the bottling business of petitioner. According to petitioner, said act of
“hoarding” constituted as unfair competition which rather falls under the catch-all phrase “who
shall commit any other act contrary to good faith of a nature calculated to discredit the goods,
business, or services of another.

Whether “hoarding of empty Coke bottles” to withdraw the same from circulation and impede the
bottling business of petitioner falls within the coverage of unfair competition under the IP Code?

No, it does not fall within the coverage of unfair competition under the IP Code. A careful
reading of the provisions of the IP Code, particularly Secs. 168.1-168.3, the law clearly do not
cover every unfair act committed in the course of business. Rather, it covers only acts
characterized by deception or contrary to good faith in the passing off of goods and services as
those of another who had established goodwill in relation with these goods or services, or any
other act calculated to produce the same result. In other words, deception, passing off, and
fraud upon the public are still the key elements for unfair competition to exist, under the IP
Code. In this case, the “hoarding” complained of by the petitioner, if true, would constitute an
unfair act. Nonetheless, the same cannot be considered as falling within the coverage of unfair
competition as contemplated by the IP Code. At any rate, this complained act may have
involved the application of another law which however was not charged by the petitioner in its
application Pepsi.

False Designation
Uyco v. Lo, G.R. No. 202423, January 28, 2013
The controversy between the parties in this case arose from the petitioners’ use of the marks
HIPOLITO & SEA HORSE, among others for its kerosene burners. According to the petitioners,
their authority to use these marks were derived from its predecessor-in-interest which had an
agreement with Casa Hipolito SA Portugal. On the other hand, respondent claimed that he is
the owner of the disputed marks by virtue of an assignment made in his favor.

During a test buy, respondent purchased kerosene burners with the designations “Made in
Portugal” and “Original Portugal” in the wrappers allegedly manufactured by the petitioners. This
led to the respondent’s filing of a complaint against the petitioners for false designation of origin
under Sec. 169.1 in relation to Sec. 170 of the IP Code. Notably, the petitioners admitted their
use of such designations but argued that the same were merely descriptive and refer to the
source of the design and the history of manufacture.

Whether there is probable cause to charge the petitioners with false designation of origin?

Yes, there is probable cause. The IP Code punishes any person who uses in commerce any
false designation of origin which is likely to cause confusion or mistake as to the origin of the
product. Here, there is evidence that the petitioners placed the words Made in Portugal and
Original Portugal knowing fully well that these were the marks used in the products of Casa
Hipolito—because of their previous dealings with the Portuguese company. Taking these into
consideration, there is thus probable cause to charge petitioners with false designation of origin

Penalties
Century Chinese Medicine Co. v. People, G.R. No. 188526, November 11, 2013

MODULE 4
Well-Known Marks Cases
In-N-Out Burger, Inc. v. Sehwani, Incorporated and/or Benita’s Frites, Inc., G.R. No.
179127, December 24, 2008

Petitioner is a business entity incorporated under the laws of California, US–a country that is a
signatory to the Paris Convention. Petitioner is engaged mainly in the restaurant business but it
has never engaged in business here in the Philippines. Nevertheless, its marks had been
registered in the US Intellectual Property Office and in other countries and that these marks had
been made a part of numerous advertisements in various publications and even in the internet.

The controversy between the parties started when the petitioner sought for the registration of its
marks in the Philippines sometime in June 1997. At that time, the petitioner discovered that
respondent Sehwani was able to register its mark IN N OUT (with the inside of the O formed like
a star) and had sought its registration in connection with its restaurant business. Notably, this
prompted the petitioner to file an administrative complaint before the IPO for the cancellation of
the respondent’s trademark registration for IN N OUT.

Eventually, this case reached the Supreme Court docketed as GR No. 171053 (decided a year
before this present case) which affirmed the factual finding that the marks of the petitioner are
internationally well-known. The only reason why this case, involving the same parties, reached
the SC again was due to a petition filed before the CA by the respondents assailing the finding
that they are guilty of unfair competition.

Issue:
To limit the issue to the relevant topic at hand, the question to be resolved is: Whether the
petition for the cancellation of respondent’s IN N OUT trademark registration will prosper?

Ruling:
Yes, it will prosper. The Intellectual Property Code is clear in that marks that are considered
internationally well-known by competent authority in the Philippines, whether registered or not,
shall not be registrable. Here, by reason of the doctrine of conclusiveness of judgment, the
Court deciding this case found it proper not to disturb the finding that the petitioner’s marks are
internationally well-known and by virtue of which, the petitioner had been declared as having the
right to use the questioned marks to the exclusion of others.

Note:
 1. Even if petitioner is not doing business in the Philippines, it has a legal capacity to sue
before the Philippine courts to protect its trademarks pursuant to the provisions of Secs.
3 and 160 of the Intellectual Property Code.
2. Sec. 3 of the IP Code gives a person who is a national or who is domiciled or has a real
and effective industrial establishment in a country, which is a party to any convention
relating to intellectual property rights to which the Philippines is also a party, the benefits
to the extent necessary to give effect to any provision of such convention. Thus, in Sec.
160, the IP Code further provides that any foreign national or juridical person who meets
the requirements of Section 3 and does not engage in business in the Philippines may
bring a civil or administrative action for, among others, cancellation of trademark,
whether or not such a national or juridical person is licensed to do business in the
Philippines.

Fredco Manufacturing Corporation v. President and Fellows of Harvard College, G.R. No.
185917, June 1, 2011

Rights Conferred Cases

Taiwan Kolin Corp. v. Kolin Electronics, Co., G.R. No. 209843, March 25, 2015
Taiwan Kolin (Petitioner) filed with the Intellectual Property Office (IPO), then Bureau of Patents,
Trademarks, and Technology Transfer, a trademark application for the use of “KOLIN” on a
combination of goods, including colored televisions, refrigerators, window-type and split-type air
conditioners, electric fans and water dispensers. Such application would eventually be
considered abandoned but the same application was subsequently revived with petitioner
electing Class 9 as the subject of its application.

Respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived
application arguing that the mark Taiwan Kolin seeks to register is identical, if not onfusingly
similar, with its “KOLIN” mark registered on November 23, 2003. In answer to respondent’s
petitioner argued that it should be accorded the benefits of a foreign- registered mark under
Secs. 3 and 131.1 of Republic Act No. 8293, otherwise known as the Intellectual Property Code
of the Philippines (IP Code); that it has already registered the “KOLIN” mark in the People’s
Republic of China, Malaysia and Vietnam.

The BLA-IPO denied petitioner’s application and held that according to Sec. 123 (d) of the IP
Code, a mark cannot be egistered if it is identical with a registered mark belonging to a
different proprietor in respect of the same or closely-related goods.

Accordingly, respondent, as the registered owner of the mark “KOLIN” for goods falling under
Class 9 of the NCL, should then be protected against anyone who impinges on its right,
including petitioner who seeks to register an identical mark to be used on goods also belonging
to Class 9 of the NCL. The IPO Director General rendered a Decision reversed the BLAIPO
decision: In so ruling, the IPO Director General ratiocinated that product classification alone
cannot serve as the decisive factor in the resolution of whether or not the goods are related and
that emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their properties or characteristics.

In its assailed Decision, the CA found for Kolin Electronics, on the strength of the following
premises: (a) the mark sought to be registered by Taiwan Kolin is confusingly similar to the one
already registered in favor of Kolin Electronics; (b) there are no other designs, special shape or
easily identifiable earmarks that would differentiate the products of both competing companies;
and (c) the intertwined use of television sets with amplifier, booster and voltage regulator
bolstered the fact that televisions can be considered as within the normal expansion of Kolin
Electronics, and is thereby deemed covered by its trademark as explicitly protected under Sec.
138 of the IP Code. Thus, the present petition.

Mighty Corporation v. E & J. Gallo Winery, G.R. No. 154342, July 14, 2004
Respondent Gallo Winery registered its trademark GALLO in 1971 for its wine products as
appearing in its certificate of registration. Although the same was registered in 1971, respondent
Gallo only started selling the same in 1974. On the other hand, petitioners Mighty Corporation,
La Campana, and Tobacco Industries have been using the trademark GALLO for its cigarette
products since 1973. The controversy between the respondents and petitioners started when
the latter learned about the existence of GALLO cigarette products sometime in 1992. Hence,
the respondents filed a complaint for trademark infringement against the petitioners in March
1993.

Whether the complaint for trademark infringement will prosper?

No, it will not prosper. Section 20 of the Trademark Law confers upon the registrant, among
others, the exclusive right to use the registered mark in connection with the goods, business or
services specified in the certificate, subject to any conditions and limitations stated therein. In
this case, the certificate of registration issued in favor of the respondent only specifies therein
wine products for which the mark was registered.

Note:
Apart from Sec. 20 of RA 166, there are other reasons why the case was decided against the
respondents, to wit:
1. The actual commercial use in the Philippines of the Gallo cigarette trademark preceded
that of the Gallo wine trademark. This is important as the complaint was filed during the
advent of RA 166 which requires actual commercial use of a trademark in the Philippines
prior to its registration. (notwithstanding the Paris Convention)
2. Under the Trademark Law, the protection of a registered trademark is limited only to
goods identical or similar to those in respect of which such trademark is registered and
only when there is likelihood of confusion. The SC found that wine and cigarettes are not
identical or similar goods so as to likely cause confusion, deception, or mistake. As to
consumption and packaging, wines are bottled and consumed by drinking; cigarettes are
packed in cartons and consumed by smoking. As to channels of trade, the big difference
between the prices at which Gallo wines and Gallo cigarettes play an important role in
that they target different classes of consumers. Gallo wines attract middle to high income
earners while Gallo cigarettes attract simple folks like farmers, fishermen, laborers, and
other low-income workers.