La Chemise Lacoste v. Fernandez (G.R. No.

L-63796-97)
Facts:
P, is a foreign corporation, organized and existing under the laws of France and not doing
business in the Philippines. It is a well-known European manufacturer of clothings and
sporting apparels sold in the international market bearing the trademarks LACOSTE,
CHEMISE LACOSTE, CROCODILE DEVICE and a composite mark consisting of the
word LACOSTE and a representation of a crocodile/alligator.
Hemandas & Co, a duly licensed domestic firm applied for and was issued SR for the
trademark CHEMISE LACOSTE & CROCODILE DEVICE for use on T-shirts,
sportswear and other garment products of the company. It applied for the registration of
the same trademark under the PR which application was allowed. Thereafter, Hemandas
& Co. assigned to R all rights, title, and interest in the trademark CHEMISE LACOSTE &
DEVICE.
P filed its application for registration of the trademark CROCODILE DEVICE and
LACOSTE, the former being approved for publication while the latter was opposed by
Games and Garments. P also filed a petition for the cancellation of Rs SR.
P filed with the NBI a letter-complaint alleging therein the acts of UC being committed by
R and requesting their assistance in his apprehension and prosecution. The NBI
conducted an investigation and subsequently filed with R court 2 applications for the
issuance of SW which would authorize the search of the premises used and occupied by
the Lacoste Sports Center and Games and Garments both owned and operated by R. R
Court issued SW for violation of Article 189 of the RPC. The NBI agents executed the
SW and as a result of the search found and seized various goods and articles described
in the warrants.
R filed a motion to quash the SW alleging that the trademark used by him was different
from Ps trademark and that pending the resolution of the IPC, any criminal or civil action
on the same subject matter and between the same parties would be premature.
R Court was convinced that there was no probable cause to justify the issuance of the
SW, thus the SW were recalled and set aside and the NBI agents/officers in custody of
the seized items were ordered to return the same to R. Hence the petition.
Issue:
(1) Whether or not Ps trademark is a well-known mark; and
(2) Whether or not P can institute a case being a foreign corporation not doing
business in the Philippines.
Ruling:
(1) Pursuant to this obligation, the Ministry of Trade on November 20, 1980 issued a
memorandum addressed to the Director of the Patents Office directing the latter: to
reject all pending applications for Philippine registration of signature and other world
famous trademarks by applicants other than its original owners or users. The conflicting
claims over internationally known trademarks involve such name brands as Lacoste,
Jordache, Gloria Vanderbilt, Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de

la Renta, Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and Ted
Lapidus. It is further directed that, in cases where warranted, Philippine registrants of
such trademarks should be asked to surrender their certificates of registration, if any, to
avoid suits for damages and other legal action by the trademarks foreign or local owners
or original users.
We have carefully gone over the records of all the cases filed in this Court and find more
than enough evidence to sustain a finding that the petitioner is the owner of the
trademarks LACOSTE, CHEMISE LACOSTE, the crocodile or alligator device, and
the composite mark of LACOSTE and the representation of the crocodile or alligator. Any
pretensions of the private respondent that he is the owner are absolutely without basis.
Any further ventilation of the issue of ownership before the Patent Office will be a
superfluity and a dilatory tactic.
(2) In upholding the right of the petitioner to maintain the present suit before our courts
for unfair competition or infringement of trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights of foreign states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and France
are parties. We are simply interpreting and enforcing a solemn international commitment
of the Philippines embodied in a multilateral treaty to which we are a party and which we
entered into because it is in our national interest to do so.
By the same token, the petitioner should be given the same treatment in the Philippines
as we make available to our own citizens. We are obligated to assure to nationals of
countries of the Union an effective protection against unfair competition in the
same way that they are obligated to similarly protect Filipino citizens and firms.
The Court grants the 1st petition and the order of RTC is reversed and set aside. The
2nd petition is denied due course for lack of merit.

LEVITON INDUSTRIES, NENA DE LA CRUZ LIM, DOMINGO GO, and LIM KIAT vs.
HON. SERAFIN SALVADOR, Judge, Court of First Instance of Rizal, Caloocan City,
Branch XIV and LEVITON MANUFACTURING CO., INC.
G.R. No. L-40163 June 19, 1982
Facts: Private respondent Leviton Manufacturing Co. Inc. filed a complaint for unfair
competition against petitioners Leviton Industries before the CFI of Rizal (RTC), presided
by respondent Judge Serafin Salvador. The complaint substantially alleges that plaintiff
(Leviton Manufacturing) is a foreign corporation organized and existing under the laws of
the State of New York, United States of America with office located at 236 Greenpoint
Avenue, Brooklyn City, State of New York, U.S.A. That defendant Leviton Industries is a
partnership organized and existing under the laws of the Philippines with principal office
at 382 10th Avenue, Grace Park, Caloocan City; while defendants Nena de la Cruz Lim,
Domingo Go and Lim Kiat are the partners, with defendant Domingo Go acting as
General Manager of defendant Leviton Industries. That plaintiff, founded in 1906 by
Isidor Leviton, is the largest manufacturer of electrical wiring devices in the United States
under the trademark Leviton, which various electrical wiring devices bearing the
trademark Leviton and trade name Leviton Manufacturing Co., Inc. had been exported to
the Philippines since 1954; that due to the superior quality and widespread use of its
products by the public, the same are well known to Filipino consumers under the trade
name Leviton Manufacturing Co., Inc. and trademark Leviton; that long subsequent to the
use of plaintiffs trademark and trade name in the Philippines, defendants (Leviton
Industries) began manufacturing and selling electrical ballast, fuse and oval buzzer under
the trademark Leviton and trade name Leviton Industries Co.

We agree with petitioners that respondent Leviton Marketing Co., Inc. had failed to allege
the essential facts bearing upon its capacity to sue before Philippine courts. Private
respondents action is squarely founded on Section 21-A of Republic Act No. 166, as
amended, which we quote:

Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has
been registered or assigned under this Act may bring an action hereunder for
infringement, for unfair competition, or false designation of origin and false description,
whether or not it has been licensed to do business in the Philippines under Act numbered
Fourteen Hundred and Fifty-Nine, as amended, otherwise known as the Corporation
Law, at the time it brings the 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. (As amended by R.A. No. 638)
Undoubtedly, the foregoing section grants to a foreign corporation, whether or not
licensed to do business in the Philippines, the right to seek redress for unfair competition
before Philippine courts. But the said law is not without qualifications. Its literal tenor
indicates as a condition sine qua non the registration of the trade mark of the suing
foreign corporation with the Philippine Patent Office or, in the least, that it be an asignee
of such registered trademark. The said section further requires that the country, of which
the plaintiff foreign corporation or juristic person is a citizen or domicilliary, grants to
Filipino corporations or juristic entities the same reciprocal treatment, either thru treaty,
convention or law,
All that is alleged in private respondents complaint is that it is a foreign corporation. Such
That Domingo Go, partner and general manager of defendant partnership, had registered bare averment not only fails to comply with the requirements imposed by the aforesaid
with the Philippine Patent Office the trademarks Leviton Label and Leviton with respect to Section 21-A but violates as well the directive of Section 4, Rule 8 of the Rules of Court
ballast and fuse under Certificate of Registration Nos. SR-1132 and 15517, respectively, that facts showing the capacity of a party to sue or be sued or the authority of a party to
which registration was contrary to paragraphs (d) and (e) of Section 4 of RA 166, as sue or be sued in a representative capacity or the legal existence of an organized
amended, and violative of plaintiffs right over the trademark Leviton; that defendants not association of persons that is made a party, must be averred
only used the trademark Leviton but likewise copied the design used by plaintiff in
distinguishing its trademark; and that the use thereof by defendants of its products would
cause confusion in the minds of the consumers and likely to deceive them as to the In the case at bar, private respondent has chosen to anchor its action under the
source of origin, thereby enabling defendants to pass off their products as those of Trademark Law of the Philippines, a law which, as pointed out, explicitly sets down the
plaintiffs. Invoking the provisions of Section 21-A of Republic Act No. 166, plaintiff prayed conditions precedent for the successful prosecution thereof. It is therefore incumbent
for damages. It also sought the issuance of a writ of injunction to prohibit defendants upon private respondent to comply with these requirements or aver its exemption
from using the trade name Leviton Industries, Co. and the trademark Leviton.
therefrom, if such be the case. It may be that private respondent has the right to sue
Defendants moved to dismiss the complaint for failure to state a cause of action, drawing before Philippine courts, but our rules on pleadings require that the necessary qualifying
attention to the plaintiffs failure to allege therein its capacity to sue under Section 21-A of circumstances which clothe it with such right be affirmatively pleaded. And the reason
Republic Act No. 166, as amended. After the filing of the plaintiffs opposition and the therefor, as enunciated in Atlantic Mutual Insurance Co., et al. versus Cebu Stevedoring
defendants reply, the respondent judge denied the motion on the ground that the same Co., Inc. 4 is that
did not appear to be indubitable.
these are matters peculiarly within the knowledge of appellants alone, and it would be
The motion for reconsideration having likewise been denied, defendants instituted the unfair to impose upon appellees the burden of asserting and proving the contrary. It is
instant petition for certiorari and prohibition, charging respondent judge with grave abuse enough that foreign corporations are allowed by law to seek redress in our courts under
of discretion in denying their motion to dismiss.
certain conditions: the interpretation of the law should not go so far as to include, in
effect, an inference that those conditions had been met from the mere fact that the party
Issue: Whether or not the plaintiff (Leviton Manufacturing) herein respondents, sued is a foreign corporation.
failed to allege the essential facts bearing its capacity to sue before Philippine
courts.
It was indeed in the light of this and other considerations that this Court has seen fit to
amend the former rule by requiring in the revised rules (Section 4, Rule 8) that facts
Ruling: Yes.
showing the capacity of a party to sue or be sued or the authority of a party to sue or be

sued in a representative capacity or the legal existence of an organized association of

persons that is made a party, must be averred,
IN VIEW OF THE FOREGOING, the instant petition is hereby granted and, accordingly,
the order of the respondent judge dated September 27, 1974 denying petitioners motion
to dismiss is hereby set aside. The Court of First Instance of Rizal (Caloocan City), the
court of origin, is hereby restrained from conducting further proceedings in Civil Case No.
C-2891, except to dismiss the same. No costs.
SO ORDERED.

062 Puma v IAC

Feb. 26, 1988
Gutierrez Jr, J.
Short Version:
Puma sued Mil-oro for trademark infringement, as the latter had been producing Puma
socks and belts. MTD filed for lack of capacity to sue. Denied and injunction issued.
SC upheld injunction. Puma had capacity to sue. A foreign corporation not doing
business in the Philippines which is a national of a country party to the Paris Convention
need not have a license in order to sue to protect its intellectual property.
Facts:
Puma, a West German Corporation and producer of Puma products, filed a complaint for
patent or trademark infringement with a prayer for the issuance of a writ of prelim
injunction against Mil-Oro Manufacturing Corp. Mil-Oro had been producing Puma socks
and belts.
MTD filed for lack of capacity to sue. MTD denied, injunction granted. CA reversed.
Hence this petition for review on certiorari.
Issues:
1.
WON Puma has capacity to sue (Yes)
2.
WON the case should be dismissed on the ground of lis pendens (No)
3.
WON injunction should issue. (Yes)
Ratio:
1.
Puma had substantially complied with Sec. 21-A of RA 166. Its complaint
specifically alleged that it is not doing business in the Philippines and is suing under that
law, which provides that "the country of which the said 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." The Federal Republic of Germany and
the Philippines are both parties of the Paris Convention, which forms part of the law of
the land.
As held in La Chemise Lacoste, S.A .v. Fernandez,, a foreign corporation not doing
business in the Philippines needs no license to sue before Philippine courts for
infringement of trademark and unfair competition.
Further, a foreign corporation which has never done any business in the Philippines and
which is unlicensed and unregistered to do business here, but is widely and favorably
known in the Philippines through the use therein of its products bearing its corporate and
tradename, has a legal right to maintain an action in the Philippines to restrain the
residents and inhabitants thereof from organizing a corporation therein bearing the same
name as the foreign corporation, when it appears that they have personal knowledge of
the existence of such a foreign corporation, and it is apparent that the purpose of the
proposed domestic corporation is to deal and trade in the same goods as those of the
foreign corporation.
This is in accordance with Section 37 of RA No. 166, otherwise known as the
trademark Law, which provides that 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 represssion of unfair competition to which the Philippines may be party, shall be
entitled to the benefits and subject to the provisions of this Act ...
Tradenames of persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form part of marks.
Thus, Puma had the legal capacity to file the action.
2.
There was no lis pendens. The civil action filed was different from the
administrative action filed. For a finding of lis pendens, the other case pending between
the same parties and having the same cause must be a court action. Thus, the Court of
Appeals likewise erred in holding that the requisites of lis pendens were present so as to
justify the dismissal of the case below.
3.
Mil-oro intentionally refused to present counter-evidence against the issuance of
the writ. Thus, the court reiterated its guidance to lower courts and administrative
agencies found in Lacoste:
One final point. It is essential that we stress our concern at the seeming inability of law
enforcement officials to stem the tide of fake and counterfeit consumer items flooding the
Philippine market or exported abroad from our country. The greater victim is not so much
the manufacturer whose product is being faked but the Filipino consuming public and in
the case of exportations, our image abroad. No less than the President, in issuing
Executive Order No. 913 dated October 7, 1983 to strengthen the powers of the Minister
of Trade and Industry for the protection of consumers, stated that, among other acts, the
dumping of substandard, imitated, hazardous, and cheap goods, the infringement of
internationally known tradenames and trademarks, and the unfair trade Practices of
business firms have reached such proportions as to constitute economic sabotage. We
buy a kitchen appliance, a household tool, perfume, face powder, other toilet articles,
watches, brandy or whisky, and items of clothing like jeans, T-shirts, neckties, etc. the
list is quite lengthy pay good money relying on the brand name as guarantee of its
quality and genuine nature only to explode in bitter frustration and helpless anger
because the purchased item turns out to be a shoddy imitation, albeit a clever looking
counterfeit, of the quality product. Judges all over the country are well advised to
remember that court processes should not be used as instruments to, unwittingly or
otherwise, aid counterfeiters and intellectual pirates, tie the hands of the law as it seeks
to protect the Filipino consuming public and frustrate executive and administrative
implementation of solemn commitments pursuant to international conventions and
treaties.
CA reversed and set aside.

35.
G.R. No. L-18289. March 31, 1964.]
ANDRES ROMERO, petitioner, vs. MAIDEN FORM BRASSIERE CO., INC. and THE
DIRECTOR OF PATENTS, respondents.
Facts:
On February 12, 1957, Maiden Form Brassiere Co., Inc., respondent company, a foreign
corporation filed with respondent director of patents an application for registration
pursuant to RA No.166 of the trademark Adagio for the brassieres manufactured by it,
and was granted by the Director of Patents. Petitioner Andres Romero filed with the
Director a petition for cancellation if said trademark arguing that Adagio has become a
common descriptive name of a particular style of brassiere and is, therefore,
unregistrable, and that the said trademark had been used by local brassiere
manufacturers since 1948 without objection on the part of respondent company.
Issue:
WON the trademark Adagio has become a common descriptive name of a particular
style of brassiere and is therefore unregistrable.
Held:
No. The trademark Adagio is a musical term, which means slowly or in an easy manner
and was used as a trademark by the owners thereof because they are musically inclined.
Being a musical term, it is used in an arbitrary (fanciful) sense as a trade mark for
brassieres manufactured by respondent company. It also appears that respondent
company has likewise adopted other musical terms to identify, as a trademark, the
different styles or types of brassieres. As respondent director pointed out, the fact that
said mark is used also to designate a particular style of brassiere, does not affect its
registrability as a trademark.

Shangri-La International Hotel Management v. CA

G.R. No. 111580, June 21, 2001
Facts: On June 21, 1988, the Shangri-La International Hotel Management filed with the
Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for
the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to
the Developers Group of Companies, Inc., on the ground that the same was illegally and
fraudulently obtained and appropriated for the latter's restaurant business. The ShangriLa Group alleged that it is the legal and beneficial owners of the subject mark and logo;
that it has been using the said mark and logo for its corporate affairs and business since
March 1962 and caused the same to be specially designed for their international hotels in
1975, much earlier than the alleged first use thereof by the Developers Group in 1982. It
also filed with the BPTTT its own application for registration of the subject mark and logo.
The Developers Group filed an opposition to the application, which was docketed as Inter
Partes Case No. 3529. Almost 3 years later, or on April 15, 1991, the Developers Group
instituted with the RTC of Quezon City a complaint for infringement and damages with
prayer for injunction.
On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings
in the infringement case on account of the pendency of the administrative proceedings
before the BPTTT. This was denied by the trial court in a Resolution issued on January
16, 1992.
Issue: Whether, despite the institution of an Inter Partes case for cancellation of a mark
with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one
party, the adverse party can file a subsequent action for infringement with the regular
courts of justice in connection with the same registered mark.
Held: Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual
Property Code, provides, as follows
Section 151.2. Notwithstanding the foregoing provisions, the court or the administrative
agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to
a registered mark shall likewise exercise jurisdiction to determine whether the registration
of said mark may be cancelled in accordance with this Act. The filing of a suit to enforce
the registered mark with the proper court or agency shall exclude any other court or
agency from assuming jurisdiction over a subsequently filed petition to cancel the same
mark. On the other hand, the earlier filing of petition to cancel the mark with the
Bureau of Legal Affairs shall not constitute a prejudicial question that must be
resolved before an action to enforce the rights to same registered mark may be
decided. (Emphasis provided)
Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides to
wit
Section 7. Effect of filing of a suit before the Bureau or with the proper court. - The filing
of a suit to enforce the registered mark with the proper court or Bureau shall exclude any
other court or agency from assuming jurisdiction over a subsequently filed petition to
cancel the same mark. On the other hand, the earlier filing of petition to cancel the
mark with the Bureau shall not constitute a prejudicial question that must be
resolved before an action to enforce the rights to same registered mark may be
decided. (Emphasis provided)
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the
Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with

the BPTTT cannot effectively bar the subsequent filing of an infringement case by
registrant Developers Group. The law and the rules are explicit.
The rationale is plain: Certificate of Registration No. 31904, upon which the infringement
case is based, remains valid and subsisting for as long as it has not been cancelled by
the Bureau or by an infringement court. As such, Developers Group's Certificate of
Registration in the principal register continues as "prima facie evidence of the validity of
the registration, the registrant's ownership of the mark or trade-name, and of the
registrant's exclusive right to use the same in connection with the goods, business or
services specified in the certificate." Since the certificate still subsists, Developers Group
may thus file a corresponding infringement suit and recover damages from any person
who infringes upon the former's rights.

G.R. No. L-23035. July 31, 1975.]

PHILIPPINE NUT INDUSTRY, INC., petitioner, vs. STANDARD BRANDS
INCORPORATED and TIBURCIO S. EVALLE, as Director of Patents, respondents.
FACTS:
Philippine Nut, a domestic corporation, obtained from the Patent Office on August 10,
1961, Certificate of Registration No. SR-416 covering the trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts.
RESPONDENTS CLAIM:
On May 14, 1962, Standard Brands a foreign corporation, filed with the Director of
Patents asking for the cancellation of Philippine Nut's certificate of registration on the
ground that:

"the registrant was not entitled to register the mark at the time of its
application for registration thereof" for the reason that it (Standard
Brands) is the owner of the trademark "PLANTERS COCKTAIL
PEANUTS" covered by Certificate of Registration No. SR-172, issued
by the Patent Office on July 28, 1958.

that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL

PEANUTS" closely resembles and is confusingly similar to its
trademark "PLANTERS COCKTAIL PEANUTS" used also on salted
peanuts, and that the registration of the former is likely to deceive the
buying public and cause damage to it.
PETITIONERS CLAIM:

PLANTERS cannot be considered as the dominant feature of the trademarks in

question because it is a mere descriptive term, an ordinary word which is
defined in Webster International Dictionary as "one who or that which plants or
sows, a farmer or an agriculturist."

Respondent Director should not have based his decision simply on the use of
the term PLANTERS, and that what he should have resolved is whether there is
a confusing similarity in the trademarks of the parties.

there are differences between the two trademarks, such as, the presence of the
word "Philippine" above PLANTERS on its label, and other phrases, to wit: "For
Quality and Price, Its Your Outstanding Buy", the address of the manufacturer in
Quezon City, etc., plus a pictorial representation of peanuts overflowing from a
tin can, while in the label of Standard Brands it is stated that the product is
manufactured in San Francisco, California, and on top of the tin can is printed
"Mr. Peanut" and the representation of a "humanized peanut".

It was error for respondent Director to have enjoined it from using PLANTERS in
the absence of evidence showing that the term has acquired secondary
meaning.
ISSUE:Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"
used by Philippine Nut on its label for salted peanuts confusingly similar to the trademark
"PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product so as to
constitute an infringement of the latter's trademark rights and justify its cancellation.
HELD:
YES. Applying the "TEST OF DOMINANCY", meaning, if the competing trademark
contains the main or essential or dominant features of another by reason of which
confusion and deception are likely to result, then infringement takes place; that
duplication or imitation is not necessary, a similarity in the dominant features of the
trademarks would be sufficient.

While it is true that PLANTERS is an ordinary word, nevertheless it is used in the labels
not to describe the nature of the product, but to project the source or origin of the salted
peanuts contained in the cans. The word PLANTERS printed across the upper portion of
the label in bold letters easily attracts and catches the eye of the ordinary consumer and
it is that word and none other that sticks in his mind when he thinks of salted peanuts. It
is true that there are other words used such as "Cordial" in petitioner's can and "Cocktail"
in Standard Brands', which are also prominently displayed, but these words are mere
adjectives describing the type of peanuts in the labeled containers and are not sufficient
to warn the unwary customer that the two products come form distinct sources. As a
whole it is the word PLANTERS which draws the attention of the buyer and leads him to
conclude that the salted peanuts contained in the two cans originate from one and the
same manufacturer.
Petitioner also used in its label the same coloring scheme of gold, blue, and white, and
basically the same lay-out of words such as "salted peanuts" and "vacuum packed" with
similar type and size of lettering as appearing in Standard Brands' own trademark, all of
which result in a confusing similarity between the two labels. As a matter of fact, the
capital letter "C" of petitioner's "Cordial" is alike to the capital "C" of Standard's "Cocktail",
with both words ending with a "1".
The court finds the alleged differences insignificant in the sense that they are not
sufficient to call the attention of the ordinary buyer that the labeled cans come from
distinct and separate sources. The word "Philippine" printed in small type in petitioner's
label may simply give to the purchaser the impression that that particular can of
PLANTERS salted peanuts is locally produced or canned but that what he is buying is
still PLANTERS canned salted peanuts and nothing else. As regards "Mr. Peanut" on
Standard Brands' label, the same appears on the top cover and is not visible when the
cans are displayed on the shelves, aside from the fact that the figure of "Mr. Peanut" is
printed on the tin cover which is thrown away after opening the can, leaving no lasting
impression on the consumer. It is also for this reason that We do not agree with petitioner
that it is "Mr. Peanut and the Humanized Peanut" which is the trademark of Standard
Brands salted peanuts, it being a mere descriptive pictorial representation of a peanut
not prominently displayed on the very body of the label covering the can, unlike the term
PLANTERS which dominates the label.
With regards to the doctrine of secondary meaning, the Court held that the doctrine is to
the effect that a word or phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product.
The applicability of the doctrine of secondary meaning to the situation now before the
Court is appropriate because there is oral and documentary evidence showing that the
word PLANTERS has been used by and closely associated with Standard Brands for its
canned salted peanuts since 1938 in this country. Not only is that fact admitted by
petitioner in the amended stipulation of facts, but the matter has been established by
testimonial and documentary evidence consisting of invoices covering the sale of
"PLANTERS cocktail peanuts". In other words, there is evidence to show that the term
PLANTERS has become a distinctive mark or symbol insofar as salted peanuts are
concerned, and by priority of use dating as far back as 1938, respondent Standard
Brands has acquired a preferential right to its adoption as its trademark warranting
protection against its usurpation by another.

1 G.R. No. 78298. January 30, 1989.]

WOLVERINE WORLDWIDE, INC., petitioner, vs. HONORABLE COURT OF APPEALS
AND LOLITO P. CRUZ, respondents.
FACTS: On February 8, 1984, the petitioner, a foreign corporation organized and existing
under the laws of the United States, brought a petition before the Philippine Patent Office
the cancellation of Certificate of Registration of the trademark HUSH PUPPIES and DOG
DEVICE issued to the private respondent, a Filipino citizen.
In support of its petition for cancellation, the petitioner alleged, inter alia, that it is the
registrant of the internationally known trademark HUSH PUPPIES and the DEVICE of a
Dog in the United States and in other countries which are members of the Paris
Convention for the Protection of Industrial Property, that the goods sold by the private
respondent, on the one hand, and by the petitioner, on the other hand, belong to the
same class such that the private respondents use of the same trademark in the
Philippines (which is a member of said Paris Convention) in connection with the goods
he sells constitutes an act of unfair competition, as denied in the Paris Convention.
Subsequently, the private respondent moved to dismiss the petition on the ground of res
judicata, averring that in 1973, or more than ten years before this petition was filed, the
same petitioner filed two petitions for cancellation, all of which involved the trademark
HUSH PUPPIES and DEVICE, before the Philippine Patent Office. The Director of
Patents had ruled in all three inter parties cases in favor of the private respondents
predecessor-in-interest. The CA affirmed these decisions.
Consequently, the Director of Patents denied the petition for cancellation. On appeal, the
Court of Appeals at first set aside the Directors decision, however, upon reconsideration
the latter was revived.
ISSUE: Is the present petition for cancellation barred by res judicata?
HELD: Yes. The Court has repeatedly held that for a judgment to be a bar to a
subsequent case, the following requisites must concur: (1) it must be a final judgment; (2)
the court which rendered it had jurisdiction over the subject matter and the parties; (3) it
must be a judgment on the merits; and (4) there must be Identity between the two cases,
as to parties, subject matter, and cause of action.
Contrary to the petitioners assertion, the judgment in the previous cases involving
respondents trademark registration had long since become final and executor. That Sec.
17 of Republic Act 166, also known as the Trademark Law, allows the cancellation of a
registered trademark is not a valid premises for the petitioners proposition that a
decision granting registration of a trademark cannot be imbued with the character of
absolute finality as is required in res judicata. A judgment or order is final, as to give it the
authority of res judicata, if it can no longer be modified by the court issuing it or by any
other court.
In the case at bar, the decision of the Court of Appeals affirming that of the Director of
Patents, in the cancellation cases filed in 1973, was never appealed to us. Consequently,
when the period to appeal from the Court of Appeals to this Court lapsed, with no appeal
having been perfected, the foregoing judgment denying cancellation of registration in the
name of private respondents predecessor-in-interest but ordering cancellation of

registration in the name of the petitioners predecessor-in-interest, became the settled

law in the case.
It must be stressed anew that, generally, the fundamental principle of res judicata applies
to all cases and proceedings in whatever form they may be. We now expressly affirm that
this principle applies, in the appropriate cases, to proceedings for cancellation of
trademarks before the Philippine Patent.
Undoubtedly, final decision, orders and resolutions, of the Director of Patents are clothed
with a judicial character as they are, in fact, reviewable by the Court of Appeals and by
the SC.

LEVIS STRAUSS V. VOGUE TRADING

G.R. No. 132993
June 29, 2005
Petitioner:
LEVI
STRAUSS
Respondent: VOGUE TRADERS CLOTHING COMPANY
Topic: Jurisdiction, Infringement and Remedies

(PHILS.),

INC

SUMMARY: Levis sought the cancellation of the certificates of registration of Vogue for
being too confusingly similar with their trademark (LEVIs V. LIVES). It also filed an
application for search warrant for items which the RTC approved thus, they goods
bearing the imitations of the trademark were seized. Vogue meanwhile filed a complaint
for damages in the RTC against Levis stating that they already have registration for their
trademarks which did not have any semblance with Levis products. RTC however
granted a writ of preliminary injunction and enjoined the respondent from manufacturing,
producing, selling, etc its goods. RTC also denied respondents MR stating that the
preliminary injunction was not a prejudgment on the case. On appeal to CA however, it
reversed the decisions of the RTC. There were four issues here:
Primary Jurisdiction: While an administrative cancellation of a registered trademark,
on any of the grounds under Section 17 of R.A. No. 166, is within the ambit of the
BPTTT, an action for infringement or any other incidental remedy sought is within the
jurisdiction of the ordinary courts. An action for infringement or unfair competition,
including the available remedies of injunction and damages, in the regular courts can
proceed independently or simultaneously with an action for the administrative
cancellation of a registered trademark in the BPTTT. AS applied here, just because an
interpartes case was filed beforehand in the BPTTT does not preclude Levis from filing a
counterclaim of copyright infringement in the case for damages with the RTC filed by
Vogue.
Defective CNFS with CA: It was indeed defective since the lawyer of Vogue did not
have authority to execute the same.
Waiver of right to present evidence: The argument that the respondents lawyer
thought that the hearing was on another day is not sufficient reason.
Effect of Preliminary Injunction: The writ did not have the effect of prejudging or
disposing of the merits of the case, but merely enjoined the respondents acts of
manufacturing, distributing, selling, or offering for sale the jeans which had allegedly
incorporated exact or colorable imitations of the products of Levis. It was merely an
interlocutory order to preserve status quo.

FACTS:

1972: Per "Trademark, Technical Data, and Technical Assistance Agreement,"

Levi Strauss & Co., the principal based in Delaware, United States of America,
granted petitioner Levi Strauss (Phils.) a non-exclusive license to use LEVIS
trademark, design, and name in the manufacturing, marketing, distribution, and
sale of its clothing and other goods.

Licensing agreement was renewed several times, Levi Strauss & Co. obtained
certificates of registration from the BPTTT for the following trademarks:
"LEVIS"; "501"; "Two Horse Design"; "Two Horse Label"; "Two Horse Patch";
"Two Horse Label with Patterned Arcuate Design"; "Arcuate Design"; and the
composite trademarks, namely, "Arcuate," "Tab," and "Two Horse Patch."

Petitioner discovered the existence of some trademark registrations belonging

to respondent (Vogue Traders) which, in its view, were confusingly similar to its
trademarks.
Leviss instituted two cases before the BPTTT for the cancellation of
respondents trademark registrations.
o Inter Partes Case No. 4216: a petition for cancellation of Certificate of
Registration No. 53918 (for "LIVES")
o Inter Partes Case No. 4217, a petition for cancellation of Certificate of
Registration No. 8868 (for "LIVES" Label Mark).
Petitioner then applied for the issuance of a search warrant on the premises of
respondent Vogue Traders Clothing Company, owned by one Tony Lim, with the
RTC of Manila. RTC issued the search warrants based on its finding of
probable cause that the respondent had violated Article 189 of the Revised
Penal Code in manufacturing, selling, and incorporating designs or marks in its
jeans which were confusingly similar to petitioners "LEVIs jeans." Search
warrants commanded the seizure of certain goods bearing copies or imitations
of the trademarks which belonged to petitioner.
December 13, 1995: Search warrants were enforced and several goods
belonging to respondent were seized. Meanwhile, the criminal case against
Tony Lim were dismissed.
February 1, 1996: Vogue filed a complaint for damages in the RTC Manila
(Branch 50) against petitioner.
o Complaint alleged that since January 1, 1988, respondent, through
Antonio Sevilla, (located in Tondo Manila) had been a lawful assignee
and authorized user of both the the trademark "LIVES" and "LIVES
LABEL MARK" and of their have Certificate of Registrations. It also
held the copyright registrations of "LIVES ORIGINAL JEANS," its
pocket design, and hand tag.
o That the goods, articles, and effects seized from respondents
establishment were manufactured and used in its legitimate business
of manufacturing and selling of the duly registered trademark "LIVES"
and "LIVES ORIGINAL JEANS.
o Trademarks of respondent did not have any deceptive resemblance
with the trademarks of petitioner.
Respondent sought to recover the seized assorted sewing materials,
equipment, and finished products or the value thereof, in case the same had
been destroyed or impaired as a result of the seizure. It also prayed that for
compensatory damages (320K + 11,000/day until items were restored),
exemplary damages and attorneys fees.
Levis meanwhile answered that respondents brand LIVEs infringed upon its
licensed brand name LEVIs. It sought to cancel respondents Copyright
Registration No. I-3838 and enjoin the respondent from further manufacturing,
selling, offering for sale, and advertising the denim jeans or slacks by using a
design substantially, if not exactly similar to, or a colorable imitation of the
trademarks of petitioner.
RTC MANILAS (Branch 23) DECISION: Forwarded the case to the Executive
Judge (RTC of Manila, Branch 23) for re-raffle among the courts designated as
Special Courts to try and decide cases involving violations of Intellectual
Property Rights. Case was eventually raffled to Branch 1 .

RTC MANILAS (Branch 1) DECISION: Vogue failed to appear and declared

their right to present evidence has been waived. Trial court found that the
respondent intended to appropriate, copy, and slavishly imitate the genuine
appearance of authentic LEVIs jeans and pass off its LIVEs jeans as genuine
LEVIs jeans.
o Vogue did not present any evidence that obtained Certificates of
Registration for the trademarks "LIVES," "LIVES LABEL MARK,"
"LIVES ORIGINAL JEANS" as well as for the patch pocket design and
hand tag.
o Vogues backpocket design is not copyrightable, as it is neither an
original work nor a novel design. It is a copy of LS & Co./LSPIs
Arcuate trademark (first used by LS & Co. worldwide in 1873) and the
Philippines Registration of which is based on LS & Co.s US Certificate
of Registration registered in 1943. Thus, no rights attendant to a
copyright can ever attach to plaintiffs infringing backpocket design.
o It could not have been coincidence that Vogues LIVES jeans use a
trademark, symbol or design which is substantially, if not exactly similar
to, or a colorable imitation of LS & CO./LSPI trademarks, since there is
a practically limitless array of other marks, words, numbers, devices,
symbols and designs which plaintiff could have used on its products to
identify and distinguish them from those of defendant and other
manufacturers.
o Through more than a centurys use and continuous substantial
promotions and advertising of the LEVIs TRADEMARKS on its
products on jeans and trousers in particular LS & Co. has
cultivated, gained and established an invaluable goodwill in its name
"LEVIs STRAUSS & COMPANY" and in the products which carry such
name and the LEVIs TRADEMARKS.
o If Vogue continues to manufacture and use the trademark or a
colorable imitation of it, it will continue to have a free ride on, and
erode such invaluable goodwill and reputation by the mere effortless
expedient of imitating the overall visual impression of genuine LEVIs
JEANS on its own design.
o In consonance with Section 3 (a), (b) and (c), Rule 58 of the Rules,
Levis is thus entitled to the ancillary relief (preliminary injunction
to restrain Vogue from manufacturing, distributing, selling etc.)
demanded either for a limited period or perpetually. Vogue is
directed to execute a bond (500,000) to the party enjoined to the
effect that defendant will pay to plaintiff all damages it may
sustain by reason of the injunction if the court should finally
decide that defendant is not entitled thereto.
RTC denied the motion for reconsideration considering that the injunctive order
sought to be reconsidered is merely provisional and does not dispose of the
case on the merits. It would not amount to a prejudgment considering that the
defendant still has the burden of proving during trial on the merits that it is
entitled to protection and that confusion does, in fact, or likely to exist.
CA Decision: Reversed RTC. Levis MR also denied.

ISSUES:
1 Whether or not CA erred in holding that the doctrine of primary
jurisdiction operates to suspend any and all proceedings in the civil case,

2
3
4

particularly the ability of the RTC to issue preliminary injunctive relief and
whether judge committed abuse of discretion in granting such relief.
Whether or not CA erred in failing to hold that the Ceritificate against forum
shopping filed by Vogue to its petition for certiotari is defective.
Whether or not there was GADALEJ when the trial court held that respondent
waived its right to adduce evidence in support of the preliminary injunctive relief.
Whether or not the preliminary injunctive order prejudges the case

HELD: WHEREFORE, the petition is GRANTED and the Decision of the Court of
Appeals dated August 13, 1997 and its Resolution dated March 5, 1998 are REVERSED
and SET ASIDE. The Regional Trial Court of Manila, Branch 1 is ORDERED to proceed
with the hearing of Civil Case No. 96-76944 with dispatch.
No costs.
First Issue: Primary Jurisdiction (most important)

Petitioners Contention: It erred in applying the "doctrine of primary

jurisdiction." The appeals court declared that the trial court never had the
authority to hear and grant petitioners prayer for injunctive relief nor to proceed
with the hearing of the case in view of the pendency of the two inter partes
cases.

Petitioner is a holder of Certificate of Registration No. 1379-A for its Levis

trademarks. The registration gives rise to a presumption of its validity and the
right to the exclusive use of the same.

As set forth in Section 17 of Republic Act (R.A.) No. 166 or "The Trademark
Law," an entity having a duly registered trademark can file a suit against another
entity for the protection of its right. Sec. 17 enumerates the grounds for
cancellation which include the tradename being already a common descriptive
name, abandonment, registration was fraudulently obtained, misrepresentation
of the source of goods, and cancellation was provided in the Act.

Section 27 thereof states that the proper Regional Trial Court shall have
jurisdiction over the damage suits.

Conrad and Company, Inc. v. Court of Appeals, (as reiterated in the case of
Shangri-La International Hotel Management Ltd. v. Court of Appeals): the Court
clarified that while an administrative cancellation of a registered trademark,
on any of the grounds under Section 17 of R.A. No. 166, is within the ambit
of the BPTTT, an action for infringement or any other incidental remedy
sought is within the jurisdiction of the ordinary courts.
o An application with BPTTT for an administrative cancellation of a
registered trade mark cannot per se have the effect of restraining or
preventing the courts from the exercise of their lawfully conferred
jurisdiction. A contrary rule would unduly expand the doctrine of
primary jurisdiction which, simply expressed, would merely behoove
regular courts, in controversies involving specialized disputes, to defer
to the findings or resolutions of administrative tribunals on certain
technical matters.

The passage of Republic Act No. 8293, otherwise known as the "Intellectual
Property Code of the Philippines," expanded the rights accorded to an owner of
a registered trademark. Sections 151 (2), 156, and 161 (did not include the
excerpt since it is included in our readings)

Finally, Rule 8, Section 7 of the Regulations on Inter Partes Proceedings,

provides that the filing of a suit to enforce the registered mark with the proper

court or Bureau shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark. On the Fourth: Pre-judgment of the case
other hand, the earlier filing of petition to cancel the mark with the Bureau shall

Petitioner claims that the assailed orders of the trial court did not prejudge the
not constitute a prejudicial question that must be resolved before an action to
case. On the other hand, respondent counters that the trial courts order dated
enforce the rights to same registered mark may be decided. (Emphasis
December 10, 1996 amounted to a prejudgment of the case, to wit: that its
supplied)
LIVEs backpocket design was not copyrightable because it was neither an

An action for infringement or unfair competition, including the available

original work nor a novel design; that it was a copy or slavish imitation of
remedies of injunction and damages, in the regular courts can proceed
petitioners LEVIs Arcuate trademark; and that no rights attendant to a copyright
independently or simultaneously with an action for the administrative
can ever attach to respondents backpocket design
cancellation of a registered trademark in the BPTTT.

The trial court granted petitioners prayer for the issuance of a writ of preliminary

As applied to the present case, petitioners prior filing of two inter partes cases
injunction in its answer with counterclaim (to respondents complaint for
against the respondent before the BPTTT for the cancellation of the latters
damages). The writ did not have the effect of prejudging or disposing of
trademark registrations, namely, "LIVES" and "LIVES Label Mark," does not
the merits of the case, but merely enjoined the respondents acts of
preclude petitioners right (as a defendant) to include in its answer (to
manufacturing, distributing, selling, or offering for sale the jeans which
respondents complaint for damages in RTC Case in Branch 50) a counterclaim
had allegedly incorporated exact or colorable imitations of the products
for infringement with a prayer for the issuance of a writ of preliminary injunction.
belonging to petitioner.

The Order denying the respondents motion for reconsideration categorically

Second: CFNS (CrimPro issue so short only)
stated that the said Order did not amount to a prejudgment of the case.

Note every initiatory pleading must be accompanied by a CNFS executed by a

Petitioner has yet to establish during the trial that it is entitled to a permanent
duly authorized person. Failure to comply with the requirements in ROC shall
injunction by reason of respondents confusingly similar LIVES products.
not be curable by mere amendment of the complaint or other initiatory pleading
Otherwise, the trial court could declare that the LIVES trademark belonging to
but shall be cause for the dismissal of the case without prejudice.
respondent was not confusingly similar with the LEVIs trademark of petitioner.

The requirement of certification against forum shopping under the Rules is to be

A writ of preliminary injunction is generally based solely on initial and incomplete

executed by the petitioner, or in the case of a corporation, its duly authorized
evidence adduced by the applicant (herein petitioner). The evidence submitted
director or officer, but not petitioners counsel whose professional services have
during the hearing of the incident is not conclusive, for only a "sampling"
been engaged to handle the subject case. The reason is that it is the petitioner
is needed to give the trial court an idea of the justification for its issuance
who has personal knowledge whether there are cases of similar nature pending
pending the decision of the case on the merits.
with the other courts, tribunals, or agencies.

As such, the findings of fact and opinion of a court when issuing the writ of

Thus, in the present case, CA should have outrightly dismissed the petition for
preliminary injunction are interlocutory in nature. Moreover, the sole object of a
certiorari filed by the respondent (as therein petitioner in the appeals court) due
preliminary injunction is to preserve the status quo until the merits of the
to the defective certification of non-forum shopping.
case can be heard.

The certification made by Atty. Soriano, counsel for the respondent, who is not

Section 4 of Rule 58 of the Rules of Civil Procedure gives the trial courts
one of its duly authorized directors or officers, is defective. Even if Atty. Soriano
sufficient discretion to evaluate the conflicting claims in an application for a
was the "in-house counsel," the fact remains that no board resolution, or even a
provisional writ which often involves a factual determination, the appellate
Secretarys Certificate containing the board resolution, was submitted to show
courts generally will not interfere in the absence of manifest abuse of such
that he was indeed authorized to file the said petition in the Court of Appeals.
discretion. A writ of preliminary injunction would become a prejudgment of
a case only when it grants the main prayer in the complaint or responsive
Third Issue: Waiver of right
pleading, so much so that there is nothing left for the trial court to try

The records show that respondent, through its former counsel, Atty. Alfonso R.
except merely incidental matters. Such fact does not obtain in the present
Yatco, was present during the hearing on November 6, 1996. The counsels for
case.
both parties had been duly notified in open court. However, on December 4,
1996, Atty. Yatco failed to appear without proferring any valid reason which
prompted the trial court to issue an order that respondent was deemed to have
waived its right to present evidence.

Respondent explained to the trial court that its former counsel, Atty. Yatco, had
honestly thought that the December 4, 1996 hearing had been rescheduled to
December 11, 1996 per agreement with the petitioners counsel. This is not a
sufficient ground. It was correct for the trial court, upon motion of petitioner, to
consider the matter submitted for resolution on the basis of petitioners
evidence. Respondent cannot find solace in its lame excuse of honest mistake
which was, in fact, negligence and lack of vigilance.

Bata Industries v CA Digest

G.R. No. L-53672, May 31, 1982
Facts:
The respondent New Olympian Rubber Products sought to register the mark "BATA" for
casual rubber shoe products, alleging it had used the said mark since the 1970s. The
petitioner, a Canadian corporation opposed with its allegations that it owns and has not
abandoned said trademark. The petitioner has no license to do business in the
Philippines and the trademark has never been registered in the Philippines by any
foreign entity. Bata Industries does not sell footwear under the said trademark in the
Philippines nor does it have any licensing agreement with any local entity to sell its
product.
Evidence show that earlier, even before the World War II, Bata shoes made by Gerbec
and Hrdina (Czech company) were already sold in the country. Some shoes made by the
petitioner may have been sold in the Philippines ntil 1948. On the other hand, respondent
spent money and effort to popularize the trademark "BATA" since the 70's. Moreover, it
also secures 3 copyright registrations for the word "BATA". The Philippine Patent Office
(PPO) dismissed the opposition by the petitioner while the Court of Appeals (CA)
reversed said decision. However, a 2nd resolution by the CA affirmed the PPO decision.
Issue: Does the petitioner have the right to protect its goodwill alleged to be
threatened with the registration of the mark?
NO. Bata Industries has no Philippine goodwill that would be damaged by the registration
of the mark.
Any slight goodwill obtained by the product before World War II was completely
abandoned and lost in the more than 35 years that passed since Manila's liberation from
Japan. The petitioner never used the trademark either before or after the war. It is also
not the successor-in-interest of Gerbec & Hrdina and there there was no privity of interest
between them, Furthermore, the Czech trademark has long been abandoned in
Czechoslovakia.