25) Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No.

190065, August 16, 2010

Facts: Dermaline filed with the IPO an application to register the trademark Dermaline. Myra
opposed this alleging that the trademark resembles its trademark Dermalin and will cause
confusion, mistake and deception to the purchasing public. Dermalin was registered way back
1986 and was commercially used since 1977. Myra claims that despite attempts of Dermaline to
differentiate its mark, the dominant feature is the term Dermaline to which the first 8 letters
were identical to that of Dermalin. The pronunciation for both is also identical. Further, both
have 3 syllables each with identical sound and appearance.

Issue: W/N the IPO should allow the registration of the trademark Dermaline.

Held:NO. As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to
prevent third parties from using a trademark, or similar signs or containers for goods or services,
without its consent, identical or similar to its registered trademark, where such use would result
in a likelihood of confusion. In determining confusion, case law has developed two (2) tests, the
Dominancy Test and the Holistic or Totality Test.

Dermalines stance that its product belongs to a separate and different classification from Myras
products with the registered trademark does not eradicate the possibility of mistake on the part of
the purchasing public to associate the former with the latter, especially considering that both
classifications pertain to treatments for the skin.

26) ONG AI GUI vs. the Director of the Philippines Patent Office

Facts:On November 8, 1948, Ong Ai Gui alias Tan Ai Gui filed an application (No. 803) with
the Director of Patents for the registration of the following trade-name: "20th Century Nylon
Shirts Factory." The latter in a report dated August 18, 1950 held that the words "shirts factory"
are not registrable; so the applicant made a disclaimer of said words (shirts factory) inserting a
statement to that effect in his original application. On August 13, 1951 the Director ordered the
publication of the trade-name in the official Gazette.

Publication was made but before the expiration of the period for filing opposition, Atty. J. A.
Wolfson, on behalf of E. I. De Pont de Nemours and Company, presented on February 27, 1952,
an opposition on the ground that the word "nylon" was a name coined by E. I. Du Pont de
Nemours and Company as the generic name of a synthetic fabric material, invented, patented,
manufactured and sold by it and that this word is a generic term; and that "nylon" is not
distinctive of applicant's goods; business and manufactures and applicant does not claim that it
has so become.

The Director dismissed the opposition since counsel did not submit authority to file in the
corporate name and that subsequent authorization did not cure the general defect. However, the
Director ruled that the application must be disapproved unless the word nylon is also
disclaimed as it is a mere descriptive name of the business and that its registration is expressly
forbidden by subsection (e) of Sec. 4 of RA 166, as amended by Sec. 2 of RA 638. Hence, Ong
filed an appeal with the Supreme Court.

Issue: Whether the dismissal by the Director was correct

Held: The decision of the Director of Patents was affirmed. The legal question is put up by the
claim of Ong that while he admits that the generic term nylon is by itself alone descriptive and
generic what he desires to register is not nylon alone but the whole combination of
20thCentury Nylon Shirts Factory. It is to be noted in answer to this contention that the Director
has not completely denied the registration of the whole trade-name. He has made a conditional
denial only, permitting the registration of the name but with the disclaimer of the terms shirt
factory and nylon. The trade name may be registered, but applicant-appellant may not be
entitled to the exclusive use of the terms shirts factory and nylon as against any other who
may subsequently use the said terms, for the latter are merely descriptive or general terms, juris
publici, incapable of appropriation by any single individual to the exclusion of others.

La Chemise Lacoste vs. Fernandez

Sujanani vs. Ongpin and San Diego

Facts: La chemise Lacoste is a French corporation and the actual owner of the
trademarks Lacoste, Chemise Lacoste, Crocodile Device and a composite
mark consisting of the word Lacoste and are presentation of a crocodile/alligator,
used on clothing's and other goods sold in many parts of the world and which has
been marketed in the Philippines (notably by Rustans) since 1964.

In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the
trademark Chemise Lacoste and Q Crocodile Device "both in the supplemental and
Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the
Crocodile device and Lacoste. Games and Garments (Gobindram Hemandas,
assignee of Hemandas Q.Co.) opposed the registration of Lacoste.

In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of
unfair competition committed by Hemandas and requesting the agencys assistance
for investigation and prosection.

A search warrant was issued by the trial court. Various goods and articles were
seized upon the execution of the warrants.

Hemandas filed motion to quash the warrants, which the court granted. The search
warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste
filed a petition for certiorari. The defendant argued that the petitioner has no
capacity to sue being a foreign corporation not doing business in the Philippines.
Issue: Whether or not La Chemise Lacoste has capacity to sue.

Ruling: Yes. As early as 1927, this Court was, and it still is, of the view that a foreign
corporation not doing business in the Philippines needs no license to sue before
Philippine courts for infringement of trademark and unfair competition. Thus, in
Western Equipment and Supply Co. v. Reyes (51 Phil.115), this Court held that a
foreign corporation which has never done any business in thePhilippines and which
is unlicensed and unregistered to do business here, but is widely andfavorably
known in the Philippines through the use therein of its products bearing its
corporateand tradename, has a legal right to maintain an action in the Philippines to
restrain the residentsand inhabitants thereof from organizing a corporation therein
bearing the same name as theforeign corporation, when it appears that they have
personal knowledge of the existence of sucha foreign corporation, and it is apparent
that the purpose of the proposed domestic corporation isto deal and trade in the
same goods as those of the foreign corporation.

SONY COMPUTER ENTERTAINMENT, INC., vs Super Green

G.R. No. 161823 March 22, 2007

Facts: The case stemmed from the complaint filed with the National Bureau of
Investigation (NBI) by petitioner Sony Computer Entertainment, Inc., against
respondent Supergreen, Incorporated. The NBI found that respondent engaged in
the reproduction and distribution of counterfeit PlayStation game software,
consoles and accessories in violation of Sony Computers intellectual property
rights.

Issues: Whether or not Supergreen, Incorporated committed a transitory or

continuing offense of unfair competition.

Ruling: Nonetheless, we agree with petitioner that this case involves a transitory or
continuing offense of unfair competition under Section 168 of Republic Act No. 8293

Pertinent to is Article 189 (1) of the Revised Penal Code that enumerates the
elements of unfair competition.

Respondents imitation of the general appearance of petitioners goods was done

allegedly in Cavite. It sold the goods allegedly in Mandaluyong City, Metro Manila.
The alleged acts would constitute a transitory or continuing offense. Thus, clearly,
under Section 2 (b) of Rule 126, Section 168 of Rep. Act No. 8293 and Article 189 (1)
of the Revised Penal Code, petitioner may apply for a search warrant in any court
where any element of the alleged offense was committed, including any of the
courts within the National Capital Region (Metro Manila).
SAMSON V. CABANOS 2005

FACTS: Petitioner was charged with the crime of unfair competition before the RTC of
Antipolo City in an Information that states: - The undersigned Senior State
Prosecutor of the Department of Justice hereby accuses MANOLO P. SAMSON for
violation of Sec. 168.3 (a) in relation to Secs. 123.1 (e), 131.3 and 170 of RA 8293
otherwise known as the Intellectual Property Code of the Philippines

Petitioner moved to quash the information on the ground that the court has no
jurisdiction over the offense charged in the Information.

As petitioner is charged with an offense penalized by imprisonment not exceeding

six (6) years, the jurisdiction to try the case lies with the MTC and not the RTC. In
addition, petitioner submits that the old Trademark Law, R.A. No. 166, conferring
jurisdiction on the Courts of First Instance (now RTC) over complaints for unfair
competition, has been repealed by Section 239 of R.A. No. 8293.

ISSUE: Whether or not petitioner is correct in his contention that the court has no
jurisdiction of the matter.

RULING: Jurisdiction conferred by a special law to Regional Trial Courts must prevail
over that granted by a general law to Municipal Trial Courts. - In the case at bar,
R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over
violations of intellectual property rights to the Regional Trial Court. They should
therefore prevail over R.A. No. 7691, which is a general law.

Hence, jurisdiction over the instant criminal case for unfair competition is properly
lodged with the Regional Trial Court even if the penalty therefor is imprisonment of
less than 6 years, or from 2 to 5 years and a fine ranging from P50,000.00 to
P200,000.00.

In fact, to implement and ensure the speedy disposition of cases involving violations
of intellectual property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-
11-SC dated February 19, 2002 designating certain Regional Trial Courts as
Intellectual Property Courts.

On June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to
hear and decide Intellectual Property Code and Securities and Exchange
Commission cases in specific Regional Trial Courts designated as Special
Commercial Courts.

La Chemise Lacoste vs. Fernandez

 GR 63796-97, 21 May 1984

Facts:

La Chemise Lacoste is a French corporation and the actual owner of the trademarks
Lacoste, Chemise Lacoste, Crocodile Device and a composite mark consisting of
the word Lacoste and a representation of a crocodile/alligator, used on clothings and
other goods sold in many parts of the world and which has been marketed in the
Philippines since 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of
registration for the trademark Chemise Lacoste and Q Crocodile Device both in the
supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the
registration of the Crocodile device and Lacoste. Games and Garments (Gobindram
Hemandas, assignee of Hemandas Q.Co.) opposed the registration of Lacoste. In
1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair
competition committed by Hemandas and requesting the agencys assistance. By virtue
of search warrant, various goods and articles were seized from Hemandas but such
warrants were recalled.

Issue: Whether or not defendant was guilty of unfair competition

Held:

Yes. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date
back even before 1964, Hemandas cannot be allowed to continue the trademark
Lacoste for the reason that he was the first registrant in the Supplemental Register of
a trademark used in international commerce. Registration in the Supplemental Register
cannot be given a posture as if the registration is in the Principal Register. It must be
noted that one may be declared an unfair competitor even if his competing trademark is
registered. La Chemise Lacoste is world renowned mark, and by virtue of the 20
November 1980 Memorandum of the Minister of Trade to the director of patents in
compliance with the Paris Convention for the protection of industrial property, effectively
cancels the registration of contrary claimants to the enumerated marks, which include
Lacoste.

U.S. vs. Vicente Manuel

G.R. No. L-1999, December 27, 1906

Facts:

Defendant was charged with unfair competition under Act No. 666. Private petitioner
A.S. Watson & Co. is a British corporation duly registered in the Philippine Islands and
engaged in the manufacture and sale of aerated waters such as soda, lemonade, ginger
ale and others.
In 1903, A.S. Watson and Co., Limited registered with the Bureau Patents a trademark
containing the words A.S. Watson and Company, Limited along with the figure of a
unicorn and dragon on either side of a Chinese pagoda, a long-time mark associate with
the company.

Accused Manuel sold soda water and bottles of aerated waters bearing the same form
and appearance with those used by private petitioner. The difference was that accused
posted different labels bearing his name and the quality of the beverage sold by Manuel
were distinctly of inferior quality than that sold by the company. The trial court convicted
Manuel of unfair competition and sentenced him to pay a fine and gold.

Issue: Whether or not defendant committed unfair competition.

Held:

Yes. The true test of unfair competition is whether certain goods have been intentionally
clothed with an appearance which is likely to deceive the ordinary purchases exercising
ordinary care, and not whether a certain limited class of purchasers with special
knowledge not possessed by the ordinary purchases could avoid mistake by the
exercise of this special knowledge. In this case, Manuel gave his goods the general
appearance of aerated waters manufactured by A.S. Watson and thus intended to
deceive the public and defraud A.S. Watson.