IP Law Case Digest

8/12/2019 IP Law Case Digest

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CONSOLIDATED INTELLECTUAL PROPERTY LAW CASE DIGEST

SOCIETIES AND NESTLE VS CA

G.R. No. 112012 April 4, 2001

FACTS:On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for

the reistration of the trade!ar" #F$%&O' (%)T*'# for instant coffee, under )erial +o -.994 Theapplication, as a !atter of due course, was pu/lished in the July 18, 1988 issue of the BPTTT0s Officiala2ette

Petitioner )ociete 3es Produits +estle, )%, a )wiss co!pany reistered under )wiss laws anddo!iciled in )wit2erland, filed an unverified +otice of Opposition,clai!in that the trade!ar" ofprivate respondent0s product is #confusinly si!ilar to its trade!ar"s for coffee and coffee e5tracts, to

wit6 (%)T*' 'O%)T and (%)T*' B$*+3#

$i"ewise, a verified +otice of Opposition was filed /y +estle Philippines, 7nc, a Philippinecorporation and a licensee of )ociete 3es Produits +estle )%, aainst CFC0s application for reistration

of the trade!ar" F$%&O' (%)T*'4

+estle clai!ed that the use, if any, /y CFC of the trade!ar"F$%&O' (%)T*' and its reistration would li"ely cause confusion in the trade or deceive purchasersand would falsely suest to the purchasin pu/lic a connection in the /usiness of +estle, asthe dominant wordpresent in the three : trade!ar"s is #(%)T*'# or that the oods of CFC !iht /e!ista"en as havin oriinated fro! the latter

ISSUE:;O+ there is Trade!ar" 7nfrine!ent

ELD: the3o!inancy Test and the ?olistic Test1@The test of do!inancy focuses on the si!ilarity of the prevalentfeatures of the co!petin trade!ar"s which !iht cause confusion or deception and thus constituteinfrine!ent On the other side of the spectru!, the holistic test !andates that the entirety of the !ar"sin Auestion !ust /e considered in deter!inin confusin si!ilarity

The deter!ination of whether two trade!ar"s are indeed confusinly si!ilar !ust /e ta"en fro!the viewpoint of the ordinary purchasers who are, in eneral, undiscerninly rash in /uyin the !oreco!!on and less e5pensive household products li"e coffee, and are therefore less inclined to closelye5a!ine specific details of si!ilarities and dissi!ilarities /etween co!petin products

This Court cannot aree that totality test is the one applica/le in this case 'ather, this Court/elieves that the do!inancy test is !ore suita/le to this case in liht of its peculiar factual !ilieu

7f the ordinary purchaser is #undiscerninly rash# in /uyin such co!!on and ine5pensivehousehold products as instant coffee, and would therefore /e #less inclined to closely e5a!ine specificdetails of si!ilarities and dissi!ilarities# /etween the two co!petin products, then it would /e lessli"ely for the ordinary purchaser to notice that CFC0s trade!ar" F$%&O' (%)T*' carries the colorsorane and !ocha while that of +estle0s uses red and /rown The application of the totality or holistictest is i!proper since the ordinary purchaser would not /e inclined to notice the specific features,

si!ilarities or dissi!ilarities, considerin that the product is an ine5pensive and co!!on householdite!

TANADA VS ANGARA

G.R. No. 11!2"# $%& 2, 1""'

FACTS:

The e!erence on January 1, 199- of the ;orld Trade Orani2ation, a/etted /y the !e!/ershipthereto of the vast !a=ority of countries has revolutioni2ed international /usiness and econo!ic relations
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a!onst states 7t has irreversi/ly propelled the world towards trade li/erali2ation and econo!iclo/ali2ation $i/erali2ation, lo/ali2ation, dereulation and privati2ation, the third>!illenniu! /u22

words, are usherin in a new /orderless world of /usiness /y sweepin away as !ere historical relics theheretofore traditional !odes of pro!otin and protectin national econo!ies li"e tariffs, e5portsu/sidies, i!port Auotas, Auantitative restrictions, ta5 e5e!ptions and currency controls Findin !ar"etniches and /eco!in the /est in specific industries in a !ar"et>driven and e5port>oriented lo/al

scenario are replacin ae>old #/ear>thy>neih/or# policies that unilaterally protect wea" andinefficient do!estic producers of oods and services 7n the words of Peter 3ruc"er, the well>"nown!anae!ent uru, #7ncreased participation in the world econo!y has /eco!e the "ey to do!esticecono!ic rowth and prosperity#

ISSUE:;O+ the eneral Provisions and Basic Principles of the %ree!ent on Trade>'elated %spects of7ntellectual Property 'ihts T'7P): intrudes on the power of the )upre!e Court to pro!ulate rulesconcernin pleadin, practice and procedures

ELD:)uffice it to say that the reciprocity clause !ore than =ustifies such intrusion, if any actually

e5istsRATIO RECIDENDI:

In the area of trade related aspects of intellectual property rights (TRIPS, for brevity)6

Each ember shall accord to the nationals of other embers treatment no lessfavourable than that it accords to its own nationalswith reard to the protection ofintellectual property

a ;TO (e!/er is reAuired to provide a rule of disputa/le not the words #in the a/sence of proof to thecontrary#: presu!ption that a product shown to /e identical to one produced with the use of a patentedprocess shall /e dee!ed to have /een o/tained /y the illeal: use of the said patented process, 1: wheresuch product o/tained /y the patented product is new, or .: where there is #su/stantial li"elihood# thatthe identical product was !ade with the use of the said patented process /ut the owner of the patent

could not deter!ine the e5act process used in o/tainin such identical product ?ence, the #/urden ofproof# conte!plated /y %rticle 4 should actually /e understood as the duty of the alleed patentinfriner to overthrow such presu!ption )uch /urden, properly understood, actually refers to the#/urden of evidence# /urden of oin forward: placed on the producer of the identical or fa"e: productto show that his product was produced without the use of the patented process

The foreoin notwithstandin, the patent owner still has the #/urden of proof# since, reardlessof the presu!ption provided under pararaph 1 of %rticle 4, such owner still has to introduce evidenceof the e5istence of the alleed identical product, the fact that it is #identical# to the enuine one produced

/y the patented process and the fact of #newness# of the enuine product or the fact of #su/stantialli"elihood# that the identical product was !ade /y the patented process

(oreover, it should /e noted that the reAuire!ent of %rticle 4 to provide a disputa/lepresu!ption applies only if 1: the product o/tained /y the patented process in +*; or .: there is asu/stantial li"elihood that the identical product was !ade /y the process and the process owner has not

/een a/le throuh reasona/le effort to deter!ine the process used ;here either of these two provisosdoes not o/tain, !e!/ers shall /e free to deter!ine the appropriate !ethod of i!ple!entin theprovisions of T'7P) within their own internal syste!s and processes

CING VS SALINAS

G.R. No. 1(12"# )*+ 2", 200#

FACTS:

Jessie Chin is the owner and eneral !anaer of Jeshicris (anufacturin Co, the !a"er and!anufacturer of a tility (odel, descri/ed as #$eaf )prin *ye Bushin for %uto!o/ile# !ade up of

plastic

On )epte!/er 4, .@@1, Chin and Joseph


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are not artistic in nature they are considered auto!otive spare parts and pertain to technoloy Theyaver that the !odels are not oriinal, and as such are the proper su/=ect of a patent, not copyriht

ISSUE:;O+ the $eaf )prin *ye Bushin for %uto!o/ile is a wor" of art

ELD: +o copyriht ranted /y law can /e said to arise in favor of the petitioner despite the issuance ofthe certificates of copyriht reistration and the deposit of the $eaf )prin *ye Bushin and &ehicleBearin Cushion

RATIO RECIDENDI:

;e aree with the contention of the petitioner citin )ection 111@ of '% +o 8.9:, that theauthor0s intellectual creation, reardless of whether it is a creation with utilitarian functions orincorporated in a useful article produced on an industrial scale, is protected /y copyriht law ?owever,the law refers to a #wor" of applied art which is an artistic creation# 7t /ears stressin that there is nocopyriht protection for wor"s of applied art or industrial desin which have aesthetic or artistic featuresthat cannot /e identified separately fro! the utilitarian aspects of the article DFunctional co!ponents ofuseful articles, no !atter how artistically desined, have enerally /een denied copyriht protection

unless they are separa/le fro! the useful article

7n this case, the petitioner0s !odels are not wor"s of applied art, nor artistic wor"s They areutility !odels, useful articles, al/eit with no artistic desin or value

% utility !odel is a technical solution to a pro/le! in any field of hu!an activity which is new andindustrially applica/le 7t !ay /e, or !ay relate to, a product, or process, or an i!prove!ent of any of theaforesaid *ssentially, a utility !odel refers to an invention in the !echanical field This is the reason

why its o/=ect is so!eti!es descri/ed as a device or useful o/=ect % utility !odel varies fro! aninvention, for which a patent for invention is, li"ewise, availa/le, on at least three aspects6 first, thereAuisite of #inventive step# in a patent for invention is not reAuired second, the !a5i!u! ter! ofprotection is only seven years co!pared to a patent which is twenty years, /oth rec"oned fro! the date ofthe application and third, the provisions on utility !odel dispense with its su/stantive e5a!ination and

prefer for a less co!plicated syste!Bein plain auto!otive spare parts that !ust confor! to the oriinal structural desin of the

co!ponents they see" to replace, the $eaf )prin *ye Bushin and &ehicle Bearin Cushion are notorna!ental They lac" the decorative Auality or value that !ust characteri2e authentic wor"s of appliedart They are not even artistic creations with incidental utilitarian functions or wor"s incorporated in auseful article 7n actuality, the personal properties descri/ed in the search warrants are !echanical

wor"s, the principal function of which is utility sansany aesthetic e!/ellish!ent

PEARL - DEAN PIL./, INCORPORATED,vs SOE$ART, INCORPORATED

FACTS:Plaintiff>appellant Pearl and 3ean Phil:, 7nc is a corporation enaed in the !anufacture of

advertisin display units si!ply referred to as liht /o5es These units utili2e specially printed posterssandwiched /etween plastic sheets and illu!inated with /ac" lihts Pearl and 3ean was a/le to secure aCertificate of Copyriht 'eistration dated January .@, 1981 over these illu!inated display units Theadvertisin liht /o5es were !ar"eted under the trade!ar" EPoster %ds The application forreistration of the trade!ar" was filed with the Bureau of Patents, Trade!ar"s and Technoloy Transferon June .@, 198

)o!eti!e in 198-, Pearl and 3ean neotiated with defendant>appellant )hoe!art, 7nc )(7: forthe lease and installation of the liht /o5es in )( City +orth *dsa )ince )( City +orth *dsa was underconstruction at that ti!e, )(7 offered as an alternative, )( (a"ati and )( Cu/ao, to which Pearl and3ean areed Only the contract for )( (a"ati, however, was returned sined On Octo/er 4, 198-,

&erara wrote %/ano inAuirin a/out the other contract and re!indin hi! that their aree!ent forinstallation of liht /o5es was not only for its )( (a"ati /ranch, /ut also for )( Cu/ao )(7 did not

/other to reply

7nstead, in a letter dated January 14, 198D, )(70s house counsel infor!ed Pearl and 3ean that itwas rescindin the contract for )( (a"ati due to non>perfor!ance of the ter!s thereof

Two years later, (etro 7ndustrial )ervices, the co!pany for!erly contracted /y Pearl and 3ean tofa/ricate its display units, offered to construct liht /o5es for )hoe!art0s chain of stores )(7 approvedthe proposal and ten 1@: liht /o5es were su/seAuently fa/ricated /y (etro 7ndustrial for )(7 %fter itscontract with (etro 7ndustrial was ter!inated, )(7 enaed the services of *


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)o!eti!e in 1989, Pearl and 3ean, received reports that e5act copies of its liht /o5es wereinstalled at )( City and in the fastfood section of )( Cu/ao pon investiation, Pearl and 3ean foundout that aside fro! the two .: reported )( /ranches, liht /o5es si!ilar to those it !anufactures werealso installed in two .: other )( stores 7t further discovered that defendant>appellant +orth *dsa(ar"etin 7nc +*(7:, throuh its !ar"etin ar!, Pri!e )pots (ar"etin )ervices, was set uppri!arily to sell advertisin space in lihted display units located in )(70s different /ranches 7t therefore

filed a case for infrine!ent of trade!ar" and copyriht, unfair co!petition and da!aes

)(7 !aintained that it independently developed its poster panels usin co!!only "nowntechniAues and availa/le technoloy, without notice of or reference to Pearl and 3ean0s copyriht )(7noted that the reistration of the !ar" EPoster %ds was only for stationeries such as letterheads,envelopes, and the li"e Besides, accordin to )(7, the word EPoster %ds is a eneric ter! which cannot

/e appropriated as a trade!ar"

The 'TC of (a"ati City decided in favor of P G 3 On appeal, however, the Court of %ppealsreversed the trial court0s rulin ?ence, this petition

ISSUES:

1: ;hether or not the liht /o5 depicted in such enineerin drawins is also protected /y suchcopyriht if the enineerin or technical drawins of an advertisin display unit liht /o5: are rantedcopyriht protection copyriht certificate of reistration: /y the +ational $i/rary

.: ;hether or not liht /o5 should /e reistered separately and protected /y a patent issued /ythe Bureau of Patents Trade!ar"s and Technoloy Transfer now 7ntellectual Property Office: H inaddition to the copyriht of the enineerin drawins

: ;hether or not the owner of a reistered trade!ar" leally prevent others fro! usin such trade!ar"if it is a !ere a//reviation of a ter! descriptive of his oods, services or /usiness

ELD: 1: +o.:


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petitioner0s president said was a contraction of Eposter advertisin P G 3 was a/le to secure a trade!ar"certificate for it, /ut one where the oods specified were Estationeries such as letterheads, envelopes,callin cards and newsletters Petitioner ad!itted it did not co!!ercially enae in or !ar"et theseoods On the contrary, it dealt in electrically operated /ac"lit advertisin units and the sale ofadvertisin spaces thereon, which, however, were not at all specified in the trade!ar" certificate

nder the circu!stances, the Court of %ppeals correctly cited Fa/ere 7nc vs 7nter!ediate%ppellate Court where the Court, invo"in )ection .@ of the old Trade!ar" $aw, ruled that Ethecertificate of reistration issued /y the 3irector of Patents can confer upon petitioner: the e5clusive rihtto use its own sy!/ol only to those oods specified in the certificate, su/=ect to any conditions andli!itations specified in the certificate 5 5 5 One who has adopted and used a trade!ar" on hisoods does not prevent the adoption and use of the sa!e trade!ar" /y others for products which are of adifferent description

%ssu!in aruendo that EPoster %ds could validly Aualify as a trade!ar", the failure of P G 3 tosecure a trade!ar" reistration for specific use on the liht /o5es !eant that there could not have /eenany trade!ar" infrine!ent since reistration was an essential ele!ent thereof

DEL $ONTE CORPORATION %+ PILIPPINE PACING CORPORATION,vsSUNSINE

FACTS:

Petitioner 3el (onte Corporation is a forein co!pany orani2ed under the laws of the nited)tates and not enaed in /usiness in the Philippines Both the Philippines and the nited )tates aresinatories to the Convention of Paris of )epte!/er ., 19D-, which rants to the nationals of the partiesrihts and advantaes which their own nationals en=oy for the repression of acts of infrine!ent andunfair co!petition

Petitioner Philippine Pac"in Corporation Philpac": is a do!estic corporation duly orani2edunder the laws of the Philippines On %pril 11, 19D9, 3el (onte ranted Philpac" the riht to!anufacture, distri/ute and sell in the Philippines various aricultural products, includin catsup, underthe 3el (onte trade!ar" and loo On Octo/er .,19D-, 3el (onte authori2ed Philpac" to reister withthe Philippine Patent Office the 3el (onte catsup /ottle confiuration, for which it was rantedCertificate of Trade!ar" 'eistration +o )'>91 /y the Philippine Patent Office under the )upple!ental'eister On +ove!/er .@, 19., 3el (onte also o/tained two reistration certificates for its trade!ar"#3*$ (O+T*# and its loo

'espondent )unshine )auce (anufacturin 7ndustries was issued a Certificate of 'eistration /ythe Bureau of 3o!estic Trade on %pril 1,198@, to enae in the !anufacture, pac"in, distri/ution andsale of various "inds of sauce, identified /y the loo )unshine Fruit Catsup This loo was reistered inthe )upple!ental 'eister on )epte!/er .@, 198 The product itself was contained in various "inds of

/ottles, includin the 3el (onte /ottle, which the private respondent /ouht fro! the =un" shops forrecyclin ?avin received reports that the private respondent was usin its e5clusively desined /ottlesand a loo confusinly si!ilar to 3el (onteIs, Philpac" warned it to desist fro! doin so on pain of lealaction Thereafter, clai!in that the de!and had /een inored, Philpac" and 3el (onte filed a co!plaint

aainst the private respondent for infrine!ent of trade!ar" and unfair co!petition, with a prayer forda!aes and the issuance of a writ of preli!inary in=unction 7n its answer, )unshine alleed that it hadlon ceased to use the 3el (onte /ottle and that its loo was su/stantially different fro! the 3el (onteloo and would not confuse the /uyin pu/lic to the detri!ent of the petitioners

The 'TC dis!issed the co!plaint This decision was affir!ed in toto /y the respondent court,which is now faulted in this petition for certiorari under 'ule 4- of the 'ules of Court

ISSUE:

;hether or not the private respondent is lia/le for infrine!ent of trade!ar" and of unfair co!petition

ELD:


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is not a to!ato, the fiure nevertheless appro5i!ates that of a to!ato The person who infrines a trade!ar" does not nor!ally copy out /ut only !a"es colora/le chanes, e!ployin enouh points ofsi!ilarity to confuse the pu/lic with enouh points of differences to confuse the courts ;hat isundenia/le is the fact that when a !anufacturer prepares to pac"ae his product, he has /efore hi! a

/oundless choice of words, phrases, colors and sy!/ols sufficient to distinuish his product fro! theothers ;hen as in this case, )unshine chose, without a reasona/le e5planation, to use the sa!e colors

and letters as those used /y 3el (onte thouh the field of its selection was so /road, the inevita/leconclusion is that it was done deli/erately to deceive

The )upre!e Court also ruled that 3el (onte does not have the e5clusive riht to use 3el (onte/ottles in the Philippines /ecause Philpac"0s patent was only reistered under the )upple!ental 'eisterand not with the Principal 'eister nder the law, reistration under the )upple!ental 'eister is not a

/asis for a case of infrine!ent /ecause unli"e reistration under the Principal 'eister, it does not rante5clusive use of the patent ?owever, the /ottles of 3el (onte do say in e!/ossed letters6 E3el (onteCorporation, +ot to /e 'efilled %nd yet )unshine )auce refilled these /ottles with its catsup productsThis clearly shows the )unshine )auce0s /ad faith and its intention to capitali2e on the 3el (onte0sreputation and oodwill and pass off its own product as that of 3el (onte

$CDONALDS CORPORATIONvsL.C. 3IG $A 3URGER,

FACTS:

Petitioner (c3onaldIs Corporation #(c3onaldIs#: is a corporation orani2ed under the laws of3elaware, nited )tates (c3onaldIs operates, /y itself or throuh its franchisees, a lo/al chain of fast>food restaurants (c3onaldIsowns a fa!ily of !ar"s includin the #Bi (ac# !ar" for its #dou/le>dec"erha!/urer sandwich# 7t applied for the reistration of the sa!e !ar" in the Principal 'eister of thethen Philippine Bureau of Patents, Trade!ar"s and Technoloy #PBPTT#:, now the 7ntellectual PropertyOffice #7PO#: Pendin approval of its application, (c3onaldIs introduced its #Bi (ac# ha!/urersandwiches in the Philippine !ar"et in )epte!/er 1981 On 18 July 198-, the PBPTT allowed reistrationof the #Bi (ac# !ar" in the Principal 'eister /ased on its ?o!e 'eistration in the nited )tates

'espondent $C Bi (a" Burer, 7nc #respondent corporation#: is a do!estic corporationwhich operates fast>food outlets and snac" vans in (etro (anila and near/y provinces 'espondentcorporationIs !enu includes ha!/urer sandwiches and other food ite!sOn .1 Octo/er 1988,respondent corporation applied with the PBPTT for the reistration of the #Bi (a"# !ar" for itsha!/urer sandwiches (c3onaldIs opposed respondent corporationIs application on the round that#Bi (a"# was a colora/le i!itation of its reistered #Bi (ac# !ar" for the sa!e food products Thelatter sued respondents for trade!ar" infrine!ent and unfair co!petition

7n their %nswer, respondents ad!itted that they have /een usin the na!e #Bi (a" Burer# fortheir fast>food /usiness 'espondents clai!ed, however, that (c3onaldIs does not have an e5clusiveriht to the #Bi (ac# !ar" or to any other si!ilar !ar" 'espondents point out that the 7saiyas roup ofCorporations #7saiyas roup#: reistered the sa!e !ar" for ha!/urer sandwiches with the PBPTT on

1 (arch 199 One 'odolfo Topacio #Topacio#: si!ilarly reistered the sa!e !ar" on .4 June198, prior to (c3onaldIs reistration on 18 July 198-%lternatively, respondents clai!ed that they arenot lia/le for trade!ar" infrine!ent or for unfair co!petition, as the #Bi (a"# !ar" they souht toreister does not constitute a colora/le i!itation of the #Bi (ac# !ar" 'espondents asserted that theydid not fraudulently pass off their ha!/urer sandwiches as those of petitionersI Bi (ac ha!/urers'espondents souht da!aes in their counterclai!

7n their 'eply, petitioners denied respondentsI clai! that (c3onaldIs is not the e5clusive ownerof the #Bi (ac# !ar" Petitioners asserted that while the 7saiyas roup and Topacio did reister the #Bi(ac# !ar" ahead of (c3onaldIs, the 7saiyas roup did so only in the )upple!ental 'eister of thePBPTT and such reistration does not provide any protection

The 'TC ruled that $C Bi (a" Burer,7nc is lia/le for trade!ar" infrine!ent and unfair co!petition)aid decision was reversed /y the Court of %ppeals ?ence, this petition

ISSUE: ;hether or not $C Bi (a" Burer,7nc is lia/le for trade!ar" infrine!ent and unfairco!petition

ELD:


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respondentsI ha!/urer sandwiches This li"ely caused confusion in the !ind of the purchasin pu/licon the source of the ha!/urers or the identity of the /usiness

To esta/lish trade!ar" infrine!ent, the followin ele!ents !ust /e shown6 1: the validity of plaintiffIs!ar" .: the plaintiffIs ownership of the !ar" and : the use of the !ar" or its colora/le i!itation /ythe alleed infriner results in #li"elihood of confusion# Of these, it is the ele!ent of li"elihood ofconfusion that is the rava!en of trade!ar" infrine!ent

% !ar" is valid if it is #distinctive# and thus not /arred fro! reistration under )ection 4 of '% 1DD#)ection 4#:?owever, once reistered, not only the !ar"Is validity /ut also the reistrantIs ownership ofthe !ar" is pri!a facie presu!ed

The #Bi (ac# !ar", which should /e treated in its entirety and not dissected word for word, isneither eneric nor descriptive #Bi (ac# falls under the class of fanciful or ar/itrary !ar"s as it /earsno loical relation to the actual characteristics of the product it represents %s such, it is hihly distinctiveand thus validPetitioners clai! that respondentsI use of the #Bi (a"# !ar" on respondentsIha!/urers results in confusion of oods, particularly with respect to petitionersI ha!/urers la/eled#Bi (ac# They also clai! that respondentsI use of the #Bi (a"# !ar" in the sale of ha!/urers, thesa!e /usiness that petitioners are enaed in, results in confusion of /usiness

'espondents assert that their #Bi (a"# ha!/urers cater !ainly to the low>inco!e roup whilepetitionersI #Bi (ac# ha!/urers cater to the !iddle and upper inco!e roups *ven if this is true, theli"elihood of confusion of /usiness re!ains, since the low>inco!e roup !iht /e led to /elieve that the#Bi (a"# ha!/urers are the low>end ha!/urers !ar"eted /y petitioners %fter all, petitioners havethe e5clusive riht to use the #Bi (ac# !ar"On the other hand, respondents would /enefit /yassociatin their low>end ha!/urers, throuh the use of the #Bi (a"# !ar", with petitionersI hih>end#Bi (ac# ha!/urers, leadin to li"elihood of confusion in the identity of /usiness

'espondents further clai! that petitioners use the #Bi (ac# !ar" only on petitionersI dou/le>dec"er ha!/urers, while respondents use the #Bi (a"# !ar" on ha!/urers and other products li"esiopao, noodles and pi22a 'espondents also point out that petitioners sell their Bi (ac dou/le>dec"ersin a styrofoa! /o5 with the #(c3onaldIs# loo and trade!ar" in red, /loc" letters at a price !oree5pensive than the ha!/urers of respondents 7n contrast, respondents sell their Bi (a" ha!/urers

in plastic wrappers and plastic /as 'espondents further point out that petitionersI restaurants are air>conditioned /uildins with drive>thru service, co!pared to respondentsI !o/ile vans

These and other factors respondents cite cannot neate the undisputed fact that respondents usetheir #Bi (a"# !ar" on ha!/urers, the sa!e food product that petitionersI sell with the use of theirreistered !ar" #Bi (ac# ;hether a ha!/urer is sinle, dou/le or triple>dec"er, and whether

wrapped in plastic or styrofoa!, it re!ains the sa!e ha!/urer food product *ven respondentsI use ofthe #Bi (a"# !ar" on non>ha!/urer food products cannot e5cuse their infrine!ent of petitionersIreistered !ar", otherwise reistered !ar"s will lose their protection under the law

7n deter!inin li"elihood of confusion, =urisprudence has developed two tests, the do!inancy testand the holistic test The do!inancy test focuses on the si!ilarity of the prevalent features of theco!petin trade!ar"s that !iht cause confusion 7n contrast, the holistic test reAuires the court toconsider the entirety of the !ar"s as applied to the products, includin the la/els and pac"ain,

in deter!inin confusin si!ilarity

%pplyin the do!inancy test, the Court finds that respondentsI use of the #Bi (a"# !ar" resultsin li"elihood of confusion First, #Bi (a"# sounds e5actly the sa!e as #Bi (ac# )econd, the first wordin #Bi (a"# is e5actly the sa!e as the first word in #Bi (ac# Third, the first two letters in #(a"# arethe sa!e as the first two letters in #(ac# Fourth, the last letter in #(a"# while a #"# sounds the sa!e as#c# when the word #(a"# is pronounced Fifth, in Filipino, the letter #"# replaces #c# in spellin, thus#Caloocan# is spelled #Kaloo"an#

7n short, aurally the two !ar"s are the sa!e, with the first word of /oth !ar"s phonetically thesa!e, and the second word of /oth !ar"s also phonetically the sa!e &isually, the two !ar"shave /oth two words and si5 letters, with the first word of /oth !ar"s havin the sa!e letters and thesecond word havin the sa!e first two letters 7n spellin, considerin the Filipino lanuae, even the last

letters of /oth !ar"s are the sa!eClearly, respondents have adopted in #Bi (a"# not only the do!inant /ut also al!ost all the

features of #Bi (ac# %pplied to the sa!e food product of ha!/urers, the two !ar"s will li"ely result inconfusion in the pu/lic !ind

Certainly, #Bi (ac# and #Bi (a"# for ha!/urers create even reater confusion, not onlyaurally /ut also visually

7ndeed, a person cannot distinuish #Bi (ac# fro! #Bi (a"# /y their sound ;hen one hears a#Bi (ac# or #Bi (a"# ha!/urer advertise!ent over the radio, one would not "now whether the #(ac#or #(a"# ends with a #c# or a #"#

PetitionersI aressive pro!otion of the #Bi (ac# !ar", as /orne /y their


8/24

advertise!ent e5penses, has /uilt oodwill and reputation for such !ar" !a"in it one of the easilyreconi2a/le !ar"s in the !ar"et today This increases the li"elihood that consu!ers will !ista"enlyassociate petitionersI ha!/urers and /usiness with those of respondentsI

'espondentsI ina/ility to e5plain sufficiently how and why they ca!e to choose #Bi (a"# fortheir ha!/urer sandwiches indicates their intent to i!itate petitionersI #Bi (ac# !ar" %/sent proofthat respondentsI adoption of the #Bi (a"# !ar" was due to honest !ista"e or was fortuitous, theinescapa/le conclusion is that respondents adopted the #Bi (a"# !ar" to #ride on the coattails# of the!ore esta/lished #Bi (ac# !ar" This saves respondents !uch of the e5pense in advertisin to create!ar"et reconition of their !ar" and ha!/urers

The essential ele!ents of an action for unfair co!petition are 1: confusin si!ilarity in theeneral appearance of the oods, and .: intent to deceive the pu/lic and defraud a co!petitor Theconfusin si!ilarity !ay or !ay not result fro! si!ilarity in the !ar"s, /ut !ay result fro! othere5ternal factors in the pac"ain or presentation of the oods The intent to deceive and defraud !ay /einferred fro! the si!ilarity of the appearance of the oods as offered for sale to thepu/lic %ctual fraudulent intent need not /e shown

nfair co!petition is /roader than trade!ar" infrine!ent and includes passin off oods withor without trade!ar" infrine!ent Trade!ar" infrine!ent is a for! of unfair co!petition Trade!ar"

infrine!ent constitutes unfair co!petition when there is not !erely li"elihood of confusion, /utalso actual or pro/a/le deception on the pu/lic /ecause of the eneral appearance of the oods There can

/e trade!ar" infrine!ent without unfair co!petition as when the infriner discloses on the la/elscontainin the !ar" that he !anufactures the oods, thus preventin the pu/lic fro! /ein deceived thatthe oods oriinate fro! the trade!ar" owner

Passin off or pal!in off: ta"es place where the defendant, /y i!itative devices on the eneralappearance of the oods, !isleads prospective purchasers into /uyin his !erchandise under thei!pression that they are /uyin that of his co!petitors Thus, the defendant ives his oods the eneralappearance of the oods of his co!petitor with the intention of deceivin the pu/lic that the oods arethose of his co!petitor

The 'TC descri/ed the respective !ar"s and the oods of petitioners and respondents in this

wise6The !ar" #BLiM (LacM# is used /y plaintiff (c3onaldIs to identify its dou/le dec"er ha!/urer

sandwich The pac"ain !aterial is a styrofoa! /o5 with the (c3onaldIs loo and trade!ar" in redwith /loc" capital letters printed on it %ll letters of the #BLiM (LacM# !ar" are also in red and /loc"capital letters On the other hand, defendantsI #BLiM (La"M# script print is in orane with only the letter#B# and #(# /ein capitali2ed and the pac"ain !aterial is plastic wrapper 5555 Further, plaintiffsI looand !ascot are the u!/rella #(# and #'onald (c3onaldIs#, respectively, co!pared to the !ascot ofdefendant Corporation which is a chu//y /oy called #(ac"y# displayed or printed /etween the words#Bi# and #(a"#

'espondents point to these dissi!ilarities as proof that they did not ive their ha!/urers theeneral appearance of petitionersI #Bi (ac# ha!/urers

The dissi!ilarities in the pac"ain are !inor co!pared to the star" si!ilarities in the words that iverespondentsI #Bi (a"# ha!/urers the eneral appearance of petitionersI #Bi (ac# ha!/urers)ection .9a: e5pressly provides that the si!ilarity in the eneral appearance of the oods !ay /e in the#devices or words# used on the wrappins 'espondents have applied on their plastic wrappers and /asal!ost the sa!e words that petitioners use on their styrofoa! /o5 ;hat attracts the attention of the

/uyin pu/lic are the words #Bi (a"# which are al!ost the sa!e, aurally and visually, as the words #Bi(ac# The dissi!ilarities in the !aterial and other devices are insinificant co!pared to the larinsi!ilarity in the words used in the wrappins

)ection .9a: also provides that the defendant ives #his oods the eneral appearance of oods ofanother !anufacturer# 'espondentsI oods are ha!/urers which are also the oods of petitioners 7frespondents sold e sandwiches only instead of ha!/urer sandwiches, their use of the #Bi (a"# !ar"

would not ive their oods the eneral appearance of petitionersI #Bi (ac# ha!/urers 7n such case,

there is only trade!ar" infrine!ent /ut no unfair co!petition ?owever, since respondents chose toapply the #Bi (a"# !ar" on ha!/urers, =ust li"e petitionerIs use of the #Bi (ac# !ar" onha!/urers, respondents have o/viously clothed their oods with the eneral appearance of petitionersIoods

Thus, there is actually no notice to the pu/lic that the #Bi (a"# ha!/urers are products of #$CBi (a" Burer, 7nc# and not those of petitioners who have the e5clusive riht to the #Bi (ac# !ar"This clearly shows respondentsI intent to deceive the pu/lic ?ad respondentsI placed a notice on theirplastic wrappers and /as that the ha!/urers are sold /y #$C Bi (a" Burer, 7nc#, then they could

validly clai! that they did not intend to deceive the pu/lic 7n such case, there is only trade!ar"infrine!ent /ut no unfair co!petition 'espondents, however, did not ive such notice ;e hold that asfound /y the 'TC, respondent corporation is lia/le for unfair co!petition


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E$ERALD GAR$ENT $ANUFACTURING CORPORATION,vs.D. LEE CO$PANY, INC.,

FACTS:

On 18 )epte!/er 1981, private respondent ?3 $ee Co, 7nc, a forein corporation orani2edunder the laws of 3elaware, )%, filed with the Bureau of Patents, Trade!ar"s G Technoloy TransferBPTTT: a Petition for Cancellation of 'eistration +o )' -@-4 )upple!ental 'eister: for thetrade!ar" #)T


10/24

over and sinular use of said ter!

7n addition to the foreoin, the Court is constrained to aree with petitionerIs contention that privaterespondent failed to prove prior actual co!!ercial use of its #$**# trade!ar" in the Philippines /eforefilin its application for reistration with the BPTTT and hence, has not acAuired ownership over said!ar"

%ctual use in co!!erce in the Philippines is an essential prereAuisite for the acAuisition ofownership over a trade!ar" pursuant to )ec . and .>% of the Philippine Trade!ar" $aw '% +o1DD:ndisputa/ly, private respondent is the senior reistrant, havin o/tained several reistrationcertificates for its various trade!ar"s #$**,# #$**'73*'),# and #$**)'*)# in /oth the supple!entaland principal reisters, as early as 19D9 to 19?owever, reistration alone will not suffice

The credi/ility placed on a certificate of reistration of oneIs trade!ar", or its weiht as evidenceof validity, ownership and e5clusive use, is Aualified % reistration certificate serves !erely as prima

facie evidence 7t is not conclusive /ut can and !ay /e re/utted /y controvertin evidence

(oreover, the aforeAuoted provision applies only to reistrations in the principalreister 'eistrations in the supple!ental reister do not en=oy a si!ilar privilee % supple!entalreister was created precisely for the reistration of !ar"s which are not reistra/le on the principalreister due to so!e defects

24( CORPORATION, 56&l o7 ROLE8 $USIC LOUNGEvsROLE8 CENTRE PIL.LI$ITED

FACTS:

On +ove!/er .D, 1998, respondents (ontres 'ole5 )% and 'ole5 Centre Phil, $i!ited,ownersproprietors of 'ole5 and Crown 3evice, filed aainst petitioner .4D Corporation the instant suitfor trade!ar" infrine!ent and da!aes with prayer for the issuance of a restrainin order or writ ofpreli!inary in=unction They alleed that so!eti!e in July 199D, petitioner adopted and, since then, has

/een usin without authority the !ar" #'ole5# in its /usiness na!e #'ole5 (usic $oune# as well as in

its newspaper advertise!ents as N #'ole5 (usic $oune, KT&, 3isco G Party Clu/#

7n its answer raisin special affir!ative defenses, petitioner arued that respondents have nocause of action /ecause no trade!ar" infrine!ent e5ist that no confusion would arise fro! the use /ypetitioner of the !ar" #'ole5# considerin that its entertain!ent /usiness is totally unrelated to theite!s catered /y respondents such as watches, cloc"s, /racelets and parts thereof

On July .1, .@@@, petitioner filed a !otion for preli!inary hearin on its affir!ative defenses)u/seAuently, on !otion of petitioner, the trial court issued a su/poena ad testificandumreAuirin %tty

%lon2o %ncheta to appear at the preli!inary hearin 'espondents, in the !eanti!e, filed a Co!!entand Opposition to the !otion for preli!inary hearin and a !otion to Auash the su/poenaad testificandum

7n an Order dated Octo/er ., .@@@, the trial court Auashed the su/poena ad testificandumand

denied petitioner0s !otion for preli!inary hearin on affir!ative defenses with !otion to dis!iss

;ith the denial of the !otion for reconsideration on (arch 1D, .@@1, petitioner filed a petition forcertiorari with the Court of %ppeals contendin that the trial court ravely a/used its discretion in issuinthe Octo/er ., .@@@ and (arch 1D, .@@1 orders

On +ove!/er .8, .@@., the Court of %ppeals dis!issed the petition The !otion forreconsideration filed /y petitioner was denied ?ence, the instant petition

ISSUES:

1: ;hether or not the trial court denied not only petitioner0s !otion for preli!inary hearin on itsaffir!ative defenses /ut its !otion to dis!iss as well

.: 7f the answer is in the affir!ative, whether or not the trial court ravely a/used its discretion indenyin said !otions and

: ;hether the trial court ravely a/used its discretion in Auashin the su/poena ad testificandumissuedaainst %tty %ncheta

ELD :1:


11/24

said order shows that the trial court neither Aualified its denial nor held in a/eyance the rulin onpetitioner0s !otion to dis!iss

7n issuin the assailed order, the trial court ruled on the !erits of petitioner0s (otion to3is!iss vis"#"vis respondents0 Co!!ent and Opposition which clearly traversed the affir!ative defensesraised /y petitioner

(oreover, it is presu!ed that all !atters within an issue raised in a case were passed upon /y thecourt 7n the a/sence of evidence to the contrary, the presu!ption is that the court a $uodischared itstas" properly

nder the old Trade!ar" $aw where the oods for which the identical !ar"s are used areunrelated, there can /e no li"elihood of confusion and there is therefore no infrine!ent in the use /y the

=unior user of the reistered !ar" on the entirely different oods This rulin, however, has /een to so!ee5tent, !odified /y )ection 1.1f: of the 7ntellectual Property Code 'epu/lic %ct +o 8.9:, whichtoo" effect on January 1, 1998

% =unior user of a well>"nown !ar" on oods or services which are not si!ilar to the oods orservices, and are therefore unrelated, to those specified in the certificate of reistration of the well>"nown!ar" is precluded fro! usin the sa!e on the entirely unrelated oods or services, su/=ect to the certainreAuisites)ection 1.1f: is clearly in point /ecause the (usic $oune of petitioner is entirely unrelatedto respondents0 /usiness involvin watches, cloc"s, /racelets, etc ?owever, the Court cannot yet resolvethe !erits of the present controversy considerin that the reAuisites for the application of )ection1.1f:, which constitute the "ernel issue at /ar, clearly reAuire deter!ination facts of which need to /eresolved at the trial courtThe sa!e is true with respect to the issue of whether %tty %lon2o %ncheta wasproperly authori2ed to sin the verification and certification aainst foru! shoppin in /ehalf ofrespondents Considerin that the trial court correctly denied petitioner0s !otion for preli!inary hearinon its affir!ative defenses with !otion to dis!iss, there e5ists no reason to co!pel %tty %ncheta totestify ?ence, no a/use of discretion was co!!itted /y the trial court in Auashin the su/poena adtestificandumissued aainst %tty %ncheta

A3I 9 S$C

G.R. No. 10#4 )*l& #, 1""

FACTS:

On )epte!/er 1-, 1988, )an (iuel Corporation )(C: filed a co!plaint aainst %sia Brewery7nc %B7: for infrine!ent of trade!ar" and unfair co!petition on account of the latterIs B**' P%$*P7$)*+ or B**' +% B**' product which has /een co!petin with )(CIs )%+ (7*$ P%$* P7$)*+for a share of the local /eer !ar"et

The trial court dis!issed )(C0s co!plaint On appeal, it was reversed /y the Court of %ppeals

7n due ti!e, %B7 appealed /y a petition for certiorari under 'ule 4- of the 'ules of Court

ISSUE:;hether or %B7 infrines )(CIs trade!ar"6 )an (iuel Pale Pilsen with 'ectanular ?ops and(alt 3esin, and there/y co!!its unfair co!petition aainst the latter

ELD: +o

RATIO DECIDENDI:

7nfrine!ent of trade!ar" is a for! of unfair co!petition Clar"e vs (anila Candy Co, D Phil1@@, 1@D: )ec .. of 'epu/lic %ct +o 1DD, otherwise "nown as the Trade!ar" $aw, defines whatconstitutes infrine!ent Fro! the definition, it i!plies that only reistered trade !ar"s, trade na!esand service !ar"s are protected aainst infrine!ent or unauthori2ed use /y another or others The useof so!eone elseIs reistered trade!ar", trade na!e or service !ar" is unauthori2ed, hence, actiona/le, ifit is done #without the consent of the reistrant#

7nfrine!ent is deter!ined /y the #test of do!inancy# rather than /y differences or variations in thedetails of one trade!ar" and of another

There is hardly any dispute that the do!inant feature of )(CIs trade!ar" is the na!e of the product6)%+ (7*$ P%$* P7$)*+, written in white othic letters with ela/orate serifs at the /einnin andend of the letters #)# and #(# on an a!/er /ac"round across the upper portion of the rectanulardesin

On the other hand, the do!inant feature of %B7Is trade!ar" is the na!e6 B**' P%$* P7$)*+,with the word #Beer# written in lare a!/er letters, larer than any of the letters found in the )(C la/el


12/24

The trial court perceptively o/served that the word #B**'# does not appear in )(CIs trade!ar",=ust as the words #)%+ (7*$# do not appear in %B7Is trade!ar" ?ence, there is a/solutely nosi!ilarity in the do!inant features of /oth trade!ar"s

+either in sound, spellin or appearance can B**' P%$* P7$)*+ /e said to /e confusinlysi!ilar to )%+ (7*$ P%$* P7$)*+ +o one who purchases B**' P%$* P7$)*+ can possi/ly /edeceived that it is )%+ (7*$ P%$* P7$)*+ +o evidence whatsoever was presented /y )(C provinotherwise

Besides the dissi!ilarity in their na!es, the followin other dissi!ilarities in the trade dress orappearance of the co!petin products a/ound6

1: The )%+ (7*$ P%$* P7$)*+ /ottle has a slender tapered nec"

The B**' P%$* P7$)*+ /ottle has a fat, /ulin nec"

.: The words #pale pilsen# on )(CIs la/el are printed in /old and laced letters alona diaonal /and, whereas the words #pale pilsen# on %B7Is /ottle are half the si2e and printed in slender

/loc" letters on a straiht hori2ontal/and )ee *5hi/it #8>a#:

: The na!es of the !anufacturers are pro!inently printed on their respective /ottles

)%+ (7*$ P%$* P7$)*+ is #Bottled /y the )an (iuel Brewery, Philippines,# whereas B**' P%$*P7$)*+ is #*specially /rewed and /ottled /y %sia Brewery 7ncorporated, Philippines#

4: On the /ac" of %B7Is /ottle is printed in /i, /old letters, under a row of flower /uds andleaves, its copyrihted sloan6 #B**' +% B**'# ;hereas )(CIs /ottle carries no sloan

-: The /ac" of the )%+ (7*$ P%$* P7$)*+ /ottle carries the )(C loo, whereas the B**'P%$* P7$)*+ /ottle has no loo

D: The )%+ (7*$ P%$* P7$)*+ /ottle cap is sta!ped with a coat of ar!s and the words#)an (iuel Brewery Philippines# encirclin the sa!e

The B**' P%$* P7$)*+ /ottle cap is sta!ped with the na!e #B**'# in the center, surrounded /y thewords #%sia Brewery 7ncorporated Philippines#

: Finally, there is a su/stantial price difference /etween B**' P%$* P7$)*+ currently atP4.- per /ottle: and )%+ (7*$ P%$* P7$)*+ currently at P@@ per /ottle:

The words #pale pilsen# !ay not /e appropriated /y )(C for its e5clusive use even if they are partof its reistered trade!ar"6 )%+ (7*$ P%$* P7$)*+ +o one !ay appropriate eneric or descriptive

words They /elon to the pu/lic do!ain

The circu!stance that the !anufacturer of B**' P%$* P7$)*+, %sia Brewery 7ncorporated, hasprinted its na!e all over the /ottle of its /eer product6 on the la/el, on the /ac" of the /ottle, as well as onthe /ottle cap, disproves )(CIs chare that %B7 dishonestly and fraudulently intends to pal! off itsB**' P%$* P7$)*+ as )(CIs product 7n view of the visi/le differences /etween the two products, theCourt /elieves it is Auite unli"ely that a custo!er of averae intellience would !ista"e a /ottle of B**'P%$* P7$)*+ for )%+ (7*$ P%$* P7$)*+

The fact that B**' P%$* P7$)*+ li"e )%+ (7*$ P%$* P7$)*+ is /ottled in a!/er>colored steinie/ottles of .@ !l capacity and is also advertised in print, /roadcast, and television !edia, does notnecessarily constitute unfair co!petition

nfair co!petition is the e!ploy!ent of deception or any other !eans contrary to ood faith /ywhich a person shall pass off the oods !anufactured /y hi! or in which he deals, or his /usiness, orservices, for those of another who has already esta/lished oodwill for his si!ilar oods, /usiness orservices, or any acts calculated to produce the sa!e result )ec .9, 'epu/lic %ct +o 1DD, as a!ended:

7n this case, the Auestion to /e deter!ined is whether %B7 is usin a na!e or !ar" for its /eerthat has previously co!e to desinate )(CIs /eer, or whether %B7 is passin off its B**' P%$* P7$)*+as )(CIs )%+ (7*$ P%$* P7$)*+

The petitionerIs contention that /ottle si2e, shape and color !ay not /e the e5clusive property ofany one /eer !anufacturer is well ta"en )(CIs /ein the first to use the steinie /ottle does not ive )(Ca vested riht to use it to the e5clusion of everyone else Bein of functional or co!!on use, and not thee5clusive invention of any one, it is availa/le to all who !iht need to use it within the industry +o/odycan acAuire any e5clusive riht to !ar"et articles supplyin si!ple hu!an needs in containers or

wrappers of the eneral for!, si2e and character co!!only and i!!ediately used in !ar"etin sucharticles

%B7 does not use )(CIs steinie /ottle +either did %B7 copy it %B7 !a"es its own steinie /ottlewhich has a fat /ulin nec" to differentiate it fro! )(CIs /ottle The a!/er color is a functional featureof the /eer /ottle %s pointed out /y %B7, all /ottled /eer produced in the Philippines is contained andsold in a!/er>colored /ottles /ecause a!/er is the !ost effective color in preventin trans!ission ofliht and provides the !a5i!u! protection to /eer


13/24

That the %B7 /ottle has a .@ !l capacity is not due to a desire to i!itate )(CIs /ottle /ecausethat /ottle capacity is the standard prescri/ed under (etrication Circular +o 8, dated 4 3ece!/er199, of the 3epart!ent of Trade, (etric )yste! Board

;ith reard to the white la/el of /oth /eer /ottles, %B7 e5plained that it used the color white forits la/el /ecause white presents the stronest contrast to the a!/er color of %B7Is /ottle it is also the!ost econo!ical to use on la/els, and the easiest to #/a"e# in the furnace p 1D, T)+ of )epte!/er .@,1988: +o one can have a !onopoly of the color a!/er for /ottles, nor of white for la/els, nor of therectanular shape which is the usual confiuration of la/els +eedless to say, the shape of the /ottle andof the la/el is uni!portant ;hat is all i!portant is the na!e of the product written on the la/el of the

/ottle for that is how one /eer !ay /e distinuished fro! the others

The !ain thrust of )(CIs co!plaint if not infrine!ent of its trade!ar", /ut unfair co!petitionarisin for! the alleedly #confusin si!ilarity# in the eneral appearance or trade dress of %B7Is B**'P%$* P7$)*+ /eside )(CIs )%+ (7*$ P%$* P7$)*+ p .@9, 'ollo:

)(C clai!s that the #trade dress# of B**' P%$* P7$)*+ is #confusinly si!ilar# to its )%+ (7*$P%$* P7$)*+ /ecause /oth are /ottled in .@ !l steinie type, a!/er>colored /ottles with whiterectanular la/els

?owever, when as in this case, the na!es of the co!petin products are clearly different and theirrespective sources are pro!inently printed on the la/el and on other parts of the /ottle, !ere si!ilarityin the shape and si2e of the container and la/el, does not constitute unfair co!petition The steinie /ottleis a standard /ottle for /eer and is universally used )(C did not invent it nor patent it

The record does not /ear out )(CIs apprehension that B**' P%$* P7$)*+ is /ein passed off as)%+ (7*$ P%$* P7$)*+ This is unli"ely to happen for consu!ers or /uyers of /eer enerally ordertheir /eer /y /rand %s pointed out /y %B7Is counsel, in super!ar"ets and tiendas, /eer is ordered /y

/rand, and the custo!er surrenders his e!pty replace!ent /ottles or pays a deposit to uarantee thereturn of the e!pties 7f his e!pties are )%+ (7*$ P%$* P7$)*+, he will et )%+ (7*$ P%$*P7$)*+ as replace!ent 7n sari>sari stores, /eer is also ordered fro! the tindera /y /rand The sa!e istrue in restaurants, pu/s and /eer ardens H /eer is ordered fro! the waiters /y /rand

G.R. No. 10!"4( )%+*%r& 2!, 1"""

)o%;*i+ 95 Drilo+

FACTS:

Petitioner BJ Productions, 7nc BJP7: is the holderrantee of Certificate of Copyriht +o (9..,dated January .8, 191, ofRhoda and e, a datin a!e show aired fro! 19@ to 19On June .8, 19,it su/!itted to the +ational $i/rary an addendu! to its certificate of copyriht specifyin the showIsfor!at and style of presentation

On July 14, 1991, while watchin television, petitioner Francisco JoaAuin, Jr, president of BJP7, saw on'P+ Channel 9 an episode ofIt%s a &ate, which was produced /y 7$ Productions, 7nc 7$:

On July 18, 1991, he wrote a letter to private respondent a/riel ( Qosa, president and eneral!anaer of 7$, infor!in Qosa that BJP7 had a copyriht to Rhoda and e and de!andin that 7$discontinue airinIt%s a &ate

(eanwhile, private respondent Qosa souht to reister 7$Is copyriht to the first episode of 7tIs a3ate for which it was issued /y the +ational $i/rary a certificate of copyriht %uust 14, 1991

pon co!plaint of petitioners, an infor!ation for violation of P3 +o 49 was filed aainstprivate respondent Qosa toether with certain officers of 'P+ Channel 9 ?owever, private respondentQosa souht a review of the resolution of the %ssistant City Prosecutor /efore the 3epart!ent of Justice

On %uust 1., 199., respondent )ecretary of Justice Fran"lin ( 3rilon reversed the %ssistantCity ProsecutorIs findins and directed hi! to !ove for the dis!issal of the case aainst private

respondentsPetitioner JoaAuin filed a !otion for reconsideration, /ut his !otion denied /y respondent

)ecretary of Justice on 3ece!/er , 199. ?ence, this petition

ISSUE:;hether or not petitioner0s T& show is entitled to copyriht protection

ELD: +o

RATIO DECIDENDI:

Petitioners assert that the for!at ofRhoda and eis a product of inenuity and s"ill and is thus


14/24

entitled to copyriht protection 7t is their position that the presentation of a point>/y>point co!parisonof the for!ats of the two shows clearly de!onstrates the ne5us /etween the shows and hence esta/lishesthe e5istence of pro/a/le cause for copyriht infrine!ent )uch /ein the case, they did not have toproduce the !aster tape

To /ein with the for!at of a show is not copyrihta/le )ection . of P3 +o 49, otherwise"nown as the 3*C'** O+ 7+T*$$*CT%$ P'OP*'T.>Ben2i!ida2ole Car/a!ate The invention is a !eans to fihtoff astrointestinal parasites fro! various cattles and pet ani!als

Tryco Phar!a is a local corporation enaed in the sa!e /usiness as )!ith Kline

)!ith Kline sued Tryco Phar!a /ecause the latter was sellin a veterinary product called7!preon which contains a dru called %l/enda2ole which fihts off astro>intestinal roundwor!s,lunwor!s, tapewor!s and flu"e infestation in cara/aos, cattle and oats

)!ith Kline is clai!in that %l/enda2ole is covered in their patent /ecause su/stantially the sa!eas !ethyl - propylthio>.>/en2i!ida2ole car/a!ate covered /y its patent since /oth of the! are !eant to

co!/at wor! or parasite infestation in ani!als %nd that %l/enda2ole is actually patented under )!ithKline /y the )

Tryco Phar!a averred that nowhere in 7!preon0spac"aindoes it !ention that %l/enda2oleis present /ut even if it were, the sa!e is Eunpatenta/le

)!ith Kline thus invo"ed the doctrine of eAuivalents, which i!plies that the two su/stancessu/stantially do the sa!e function in su/stantially the sa!e way to achieve the sa!e results, there/y!a"in the! truly identical for in spite of the fact that the word %l/enda2ole does not appear inpetitioner0s letters patent, it has a/ly shown /y evidence its sa!eness with !ethyl - propylthio>.>

/en2i!ida2ole car/a!ate


15/24

ISSUE6 ;hether or not there is patent infrine!ent in this case

ELD:+o

RATIO RECIDENDI:

)!ith Kline failed to prove that %l/enda2ole is a co!pound inherent in the patented invention+owhere in the patent does the word %l/enda2ole found ;hen the lanuae of its clai!s is clear and

distinct, the patentee is /ound there/y and !ay not clai! anythin /eyond the! Further, there was aseparate patent for %l/enda2ole iven /y the ) which i!plies that %l/enda2ole is indeed separate anddistinct fro! the patented co!pound here

% scrutiny of )!ith Kline0s evidence fails to prove the su/stantial sa!eness ofthe patented co!pound and %l/enda2ole ;hile /oth co!pounds have the effect ofneutrali2in parasites in ani!als,identityof result does not a!ount to infrine!ent of patent unless

%l/enda2ole operates in su/stantially the sa!e way or /y su/stantially the sa!e !eans asthe patented co!pound, even thouh it perfor!s the sa!e function and achieves the sa!e result 7nother words, the principle or !ode of operation !ust /e the sa!e or su/stantially the sa!e The doctrineof eAuivalents thus reAuires satisfaction of the function>!eans>and>result test, the patentee havin the

/urden to show that all three co!ponents of such eAuivalency test are !et

$>DONALD?S CORPORATIONv $AC)OY FASTFOOD CORPORATION

*R* +o* --. /ebruary 0, 0112

FACTS:

On 14 (arch 1991, respondent (acJoy Fastfood Corporation, a do!estic corporation enaed inthe sale of fast food products in Ce/u City, filed with the then Bureau of Patents, Trade!ar"s andTechnoloy Transfer BPTT:, now the 7ntellectual Property Office 7PO:, an application for thereistration of the trade!ar" #(%CJO< G 3*&7C*# for fried chic"en, chic"en /ar/eAue, /urers, fries,spahetti, pala/o", tacos, sandwiches, halo>halo and stea"s under classes .9 and @ of the 7nternational

Classification of oodsPetitioner (c3onald0s Corporation, filed a verified +otice of Opposition aainst the respondent0s

application clai!in that the trade!ar" #(%CJO< G 3*&7C*# so rese!/les its corporate loo, otherwise"nown as the olden %rches or #(# desin, and its !ar"s #(c3onalds,# (cChic"en,# #(acFries,# etchereinafter (C3O+%$30) !ar"s: such that when used on identical or related oods, the trade!ar"applied for would confuse or deceive purchasers into /elievin that the oods oriinate fro! the sa!esource or oriin

%lso, petitioner alleed that the respondent0s use and adoption in /ad faith of the #(%CJO< G3*&7C*# !ar" would falsely tend to suest a connection or affiliation with petitioner0s restaurantservices and food products, thus, constitutin a fraud upon the eneral pu/lic and further cause thedilution of the distinctiveness of petitioner0s reistered and internationally reconi2ed (C3O+%$30)!ar"s to its pre=udice and irrepara/le da!ae

7PO ruled that the predo!inance of the letter #(,# and the prefi5es #(ac(c# in /oth the#(%CJO


16/24

7n recent cases with a si!ilar factual !ilieu as here, the Court has consistently used and appliedthe do!inancy test in deter!inin confusin si!ilarity or li"elihood of confusion /etween co!petintrade!ar"s

nder the do!inancy test, courts ive reater weiht to the si!ilarity of the appearance of theproduct arisin fro! the adoption of the do!inant features of the reistered !ar", disreardin !inordifferences Courts will consider !ore the aural and visual i!pressions created /y the !ar"s in the pu/lic!ind, ivin little weiht to factors li"e prices, Auality, sales outlets and !ar"et se!ents

%pplyin the do!inancy test to the instant case, the Court finds that herein petitioner0s#(C3O+%$30)# and respondent0s #(%CJOli"e, capitali2ed and styli2ed !anner

7t is the prefi5 #(c,# an a//reviation of #(ac,# which visually and aurally catches the attention of

the consu!in pu/lic

Both trade!ar"s are used in the sale of fastfood products 7ndisputa/ly, the respondent0strade!ar" application for the #(%CJO< G 3*&7C*# trade!ar" covers oods under Classes .9 and @ ofthe 7nternational Classification of oods, na!ely, fried chic"en, chic"en /ar/eAue, /urers, fries,spahetti, etc (c3onald0s reistered trade!ar" covers oods si!ilar if not identical to those covered /ythe respondent0s application

Predo!inant features such as the #(,# #(c,# and #(ac# appearin in /oth (c3onald0s !ar"s andthe (%CJO< G 3*&7C*# easily attract the attention of would>/e custo!ers *ven non>reular custo!ersof their fastfood restaurants would readily notice the predo!inance of the #(# desin, #(c(ac# prefi5esshown in /oth !ar"s )uch that the co!!on awareness or perception of custo!ers that the trade!ar"s(c3onalds !ar" and (%CJO< G 3*&7C* are one and the sa!e, or an affiliate, or under the sponsorship

of the other is not far>fetchedBy reason of the respondent0s i!plausi/le and insufficient e5planation as to how and why out of

the !any choices of words it could have used for its trade>na!e andor trade!ar", it chose the word#(%CJO' )P +O -.4, are '*&*')*3 and )*T %)73* and the3ecision of the 7ntellectual Property Office in 7nter Partes Case +o 8D1 is '*7+)T%T*3

SA$SON VS DAWAY

G.R. No5. 1(00#4@## )*l& 21, 2004

FACTS:

The undisputed facts show that on (arch , .@@., two infor!ations for unfair co!petition under)ection 1D8 a:, in relation to )ection 1@, of the 7ntellectual Property Code 'epu/lic %ct +o 8.9:,si!ilarly worded save for the dates and places of co!!ission, were filed aainst petitioner (anolo P

)a!son, the reistered owner of 7TT7 )hoes The accusatory portion of said infor!ations read6That on or a/out the first wee" of +ove!/er 1999 and so!eti!e prior or su/seAuent thereto, in

ue2on City, Philippines, and within the =urisdiction of this ?onora/le Court, a/ove>na!ed accused,ownerproprietor of 7TT7 )hoes(ano )hoes (anufactuirn Corporation located at 'o/inson0s alleria,*3)% corner Ortias %venue, ue2on City, did then and there willfully, unlawfully and feloniouslydistri/ute, sell andor offer for sale C%T*'P7$$%' products such as footwear, ar!ents, clothin, /as,accessories and paraphernalia which are closely identical to andor colora/le i!itations of the authenticCaterpillar products and li"ewise usin trade!ar"s, sy!/ols andor desins as would cause confusion,!ista"e or deception on the part of the /uyin pu/lic to the da!ae and pre=udice of C%T*'P7$$%',7+C, the prior adopter, user and owner of the followin internationally6 #C%T*'P7$$%'#, #C%T#,


17/24

#C%T*'P7$$%' G 3*)7+#, #C%T %+3 3*)7+#, #;%$K7+ (%C?7+*)# and #T'%CK>T


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protected wor"s in )ec . of P3 +o 49 For this reason, the protection afforded /y the law cannot /ee5tended to cover the!

Copyriht, in the strict sense of the ter!, is purely a statutory riht 7t is a new independent rihtranted /y the statute and not si!ply a pre>e5istin riht reulated /y the statute Bein a statutory

rant, the rihts are only such as the statute confers, and !ay /e o/tained and en=oyed only with respectto the su/=ects and /y the person and on ter!s and conditions specified in the statute

The Court is of the opinion that petitioner BJP70s copyriht covers audio>visual recordins of eachepisode of 'hoda and (e, as fallin within the class of wor"s !entioned in P3 49

The copyriht does not e5tend to the eneral concept or for!at of its datin a!e show

(ere description /y words of the eneral for!at of the two datin a!e shows is insufficient thepresentation of the !aster videotape in evidence was indispensa/le to the deter!ination of the e5istence

of a pro/a/le cause

% television show includes !ore than !ere words can descri/e /ecause it involves a whole spectru! ofvisuals and effects, video and audio, such that no si!ilarity or dissi!ilarity !ay /e found /y !erelydescri/in the eneral copyriht for!at of /oth datin a!e shows

@ @ @ . @ @ .

SPONSORED ADS

Intellectual Property 3 !aw on 4opyright 3 ust"4arry Rule

Philippine (ulti>(edia )yste! 7nc P()7: is a sinal provider which has ca/le and satellite services 7t isprovidin its satellite services throuh 3rea! Broadcastin )yste! P()7 has its EFree T& andEPre!iu! Channels The Free T& includes %B)>CB+, (%> and other local networ"s The pre!iu!channels include %+, Jac" T&, etc which are paid /y su/scri/ers /efore such channels can /e

trans!itted as feeds to a su/scri/er0s T& set which has /een installed with a 3rea! satellite%B)>CB+ is a television and /roadcastin corporation 7t /roadcasts television prora!s /y wireless!eans to (etro (anila and near/y provinces, and /y satellite to provincial stations throuh Channel .and Channel . The prora!s aired over Channels . and . are either produced /y %B)>CB+ orpurchased fro! or licensed /y other producers %B)>CB+ also owns reional television stations whichpattern their prora!!in in accordance with perceived de!ands of the reion Thus, televisionprora!s shown in (etro (anila and near/y provinces are not necessarily shown in other provinces

7n (ay .@@., %B)>CB+ sued P()7 for alleedly enain in re/roadcastin and there/y infrinin on%B)>CB+0s copyrihts that the trans!ission of Channels . and . to the provinces where these twochannels are not usually shown altered %B)>CB+0s prora!!in for the said provinces P()7 aruedthat it is not infrinin upon %B)>CB+0s copyrihts /ecause it is operatin under the E(ust>Carry 'uleoutlined in +TC +ational Teleco!!unications Co!!ission: Circular +o 4>@8>88

ISSUE:;hether or not P()7 infrined upon the copyrihts of %B)>CB+

ELD: +o The E(ust>Carry 'ule under +TC Circular +o 4>@8>88 falls under the li!itations oncopyriht The Filipino people !ust /e iven wider access to !ore sources of news, infor!ation,education, sports event and entertain!ent prora!s other than those provided for /y !ass !edia andafforded television prora!s to attain a well infor!ed, well>versed and culturally refined citi2enry andenhance their socio>econo!ic rowth The very intent and spirit of the +TC Circular will prevent asituation where/y station owners and a few networ"s would have unfettered power to !a"e ti!eavaila/le only to the hihest /idders, to co!!unicate only their own views on pu/lic issues, people, andto per!it on the air only those with who! they areed N contrary to the state policy that the franchise:rantee li"e %B)>CB+, and other T& station owners and even the li"es of P()7, shall provide at all ti!es
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sound and /alanced prora!!in and assist in the functions of pu/lic infor!ation and education

P()7 was li"ewise ranted a leislative franchise under 'epu/lic %ct +o 8D@, )ection 4 of whichsi!ilarly states that it Eshall provide adeAuate pu/lic service ti!e to ena/le the overn!ent, throuh thesaid /roadcastin stations, to reach the population on i!portant pu/lic issues provide at all ti!es soundand /alanced prora!!in pro!ote pu/lic participation such as in co!!unity prora!!in assist inthe functions of pu/lic infor!ation and education

The E(ust>Carry 'ule favors /oth /roadcastin orani2ations and the pu/lic 7t prevents ca/le televisionco!panies fro! e5cludin /roadcastin orani2ation especially in those places not reached /y sinal

%lso, the rule prevents ca/le television co!panies fro! deprivin viewers in far>flun areas theen=oy!ent of prora!s availa/le to city viewers

A3S@C3N 95. P$SI, G.R. No. 1'#'("@'0 1" )%+ 200"/

Post under case diests,Political $awat;ednesday, January .-, [email protected] /y )chi2ophrenic (ind

F%>65:%B)>CB+ is enaed in television and radio /roadcastin throuh wireless and satellite !eans

while Philippine (ulti>(edia )yste!s 7nc EP()7 for /revity:, the operator of 3rea!Broadcastin)yste! provides direct>to>ho!e 3T?: television via satellite to its su/scri/ers all over the Philippines

P()7 was ranted leislative franchise under '% 8D@ to install, operate and !aintain a nationwide3T? satellite service and is o/liated under /y +TC (e!orandu! Circular +o 4>@8>88, )ection D. of

which reAuires all ca/le television syste! operators operatin in a co!!unity within rade E% or EBcontours to carry the television sinals of the authori2ed television /roadcast stations E!ust>carryrule:

%B)>CB+ filed a co!plaint with 7ntellectual Property Office 7PO: for violation of laws involvinproperty rihts 7t alleed that P()70s unauthori2ed re/roadcastin of Channels . and . infrined on its

/roadcastin rihts and copyriht and that the +TC circular only covers ca/le television syste! operatorsand not 3T? satellite television operators (oreover, +TC Circular 4>@8>88 violates )ec 9 of %rt 777of the Constitution /ecause it allows the ta"in of property for pu/lic use without pay!ent of =ustco!pensation

P()7 arued that its re/roadcastin of Channels . and . is sanctioned /y (e!orandu! Circular +o@4>@8>88 that the !ust>carry rule under the (e!orandu! Circular is a valid e5ercise of police power

7PO and Court of %ppeals ruled in favor of P()7

I55*5:

1: wn P()7 infrined on %B)>CB+0s /roadcastin rihts and copyriht

.: wn P()7 is covered /y the +TC Circular E!ust>carry rule:

: ;hether +TC Circular 4>@8>88 violates )ec 9 of %rt 777 of the Constitution /ecause it allows theta"in of property for pu/lic use without pay!ent of =ust co!pensation or it is a valid e5ercise of police

power

l:

1: +O P()7 does not infrine on %B)>CB+0s /roadcastin rihts under the 7P Code as P()7 is notenaed in re/roadcastin of Channels . and . 'e/roadcastin, which is prohi/ited /y the 7P Code, isEthe si!ultaneous /roadcastin /y one /roadcastin orani2ation of the /roadcast of another

/roadcastin orani2ation %B)>CB+ creates and trans!its its own sinals P()7 !erely carries such
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sinals which the viewers receive in its unaltered for! P()7 does not produce, select, or deter!ine theprora!s to /e shown in Channels . and . $i"ewise, it does not pass itself off as the oriin or author ofsuch prora!s 7nsofar as Channels . and . are concerned, P()7 !erely retrans!its the sa!e inaccordance with +TC (e!orandu! Circular @4>@8>88

.: eneral of the 7PO and the Court of %ppealscorrectly found that P()70s servicesare si!ilar to a ca/le televisionsyste! /ecause the services it renders fall under ca/le Eretrans!issionThus, P()7, /ein a 3T? )atellite T& operator is covered /y the +TC Circular

: The carriae of %B)>CB+0s sinals /y virtue of the !ust>carry rule in (e!orandu! Circular +o @4>@8>88 is under the direction and control of the overn!ent thouh the +TC which is vested withe5clusive =urisdiction to supervise, reulate and control teleco!!unications and /roadcastservicesfacilities in the Philippines The i!position of the !ust>carry rule is within the +TC0s power topro!ulate rules and reulations, as pu/lic safety and interest !ay reAuire, to encourae a larer and!ore effective use of co!!unications, radio and television /roadcastin facilities, and to !aintaineffective co!petition a!on private entities

P%C7T% 7 ?%B%+%, %$7C7% $ C7+CO and JO&7T% + F*'+%+3O vs F*$7C73%3 C 'OB$*) andOO3;7$$ T'%37+ CO, 7+C

' +o 11-.., July 19, 1999

FACTS: Pacita ?a/ana et al, are authors and copyriht owners of duly issued of the /oo", Collee*nlish For Today C*T: 'espondent Felicidad 'o/les was the author of the /oo" 3evelopin *nlishProficiency 3*P: Petitioners found that several paes of the respondentIs /oo" are si!ilar, if not alltoether a copy of petitionersI /oo" ?a/ana et al filed an action for da!aes and in=unction, alleinrespondent0s infrine!ent of copyrihts, in violation of P3 49 They allee respondent Felicidad C'o/les /ein su/stantially fa!iliar with the contents of petitionersI wor"s, and without securin their

per!ission, lifted, copied, plaiari2ed andor transposed certain portions of their /oo" C*T

On the other hand, 'o/les contends that the /oo" 3*P is the product of her own intellectual creation,and was not a copy of any e5istin valid copyrihted /oo" and that the si!ilarities !ay /e due to theauthorsI e5ercise of the #riht to fair use of copyrihted !aterials, as uides#

The trial court ruled in favor of the respondents, a/solvin the! of any lia/ility $ater, the Court of%ppeals rendered =ud!ent in favor of respondents 'o/les and oodwill Tradin Co, 7nc 7n this appeal,petitioners su/!it that the appellate court erred in affir!in the trial courtIs decision

ISSUE6 ;hether 'o/les co!!itted infrine!ent in the production of 3*P

ELD:% perusal of the records yields several paes of the /oo" 3*P that are si!ilar if not identical withthe te5t of C*T The court finds that respondent 'o/lesI act of liftin fro! the /oo" of petitionerssu/stantial portions of discussions and e5a!ples, and her failure to ac"nowlede the sa!e in her /oo" isan infrine!ent of petitionersI copyrihts

7n the case at /ar, the least that respondent 'o/les could have done was to ac"nowlede petitioners?a/ana et al as the source of the portions of 3*P The final product of an authorIs toil is her /oo" To


21/24

allow another to copy the /oo" without appropriate ac"nowled!ent is in=ury enouh

CING VS SALINAS

G.R. No. 1(12"# )*+ 2", 200#FACTS:

Jessie Chin is the owner and eneral !anaer of Jeshicris (anufacturin Co, the !a"er and!anufacturer of a tility (odel, descri/ed as #$eaf )prin *ye Bushin for %uto!o/ile# !ade up ofplastic

On )epte!/er 4, .@@1, Chin and Joseph


22/24

Ci6%6io+.-4- ) 91, 1.- ) Ct .D4, 1D. $ *d .d 81, - )P.d 1@@1, 18 7$'3 9, .@@- 7$'C.@1, (ed $ 'ptr 18D- .@@-:

3ri7 F%>6 S*infrine!ent uses for this software that theyshouldn0t /e stopped fro! distri/utin the software The standard in )ony should not /e adapted as wedid it here to add induce!ent

Di5>*55io+. ;hen a distri/utor ta"es affir!ative steps to foster infrine!ent throuh the use of itsproduct, the distri/utor will /e lia/le for that infrine!ent
http://www.bloomberglaw.com/s/opinion/9e3a1cc5ee2adb39b06ea127d7543e9f/document/X12G2NM003?search32=C9P6UQR5E9FN6PB1E9HMGNRKCLP6QF98CTP6UQRJEHIN481641PN8SJ5C5MM6OBJEGKJMERJEHIMQRB5CHFN6PB1E9HMGFB6C5M76P8&ORIGINATION_CODE=00344http://www.bloomberglaw.com/s/opinion/9e3a1cc5ee2adb39b06ea127d7543e9f/document/X12G2NM003?search32=C9P6UQR5E9FN6PB1E9HMGNRKCLP6QF98CTP6UQRJEHIN481641PN8SJ5C5MM6OBJEGKJMERJEHIMQRB5CHFN6PB1E9HMGFB6C5M76P8&ORIGINATION_CODE=00344http://www.bloomberglaw.com/s/opinion/9e3a1cc5ee2adb39b06ea127d7543e9f/document/X12G2NM003?search32=C9P6UQR5E9FN6PB1E9HMGNRKCLP6QF98CTP6UQRJEHIN481641PN8SJ5C5MM6OBJEGKJMERJEHIMQRB5CHFN6PB1E9HMGFB6C5M76P8&ORIGINATION_CODE=00344http://www.bloomberglaw.com/http://www.bloomberglaw.com/s/opinion/9e3a1cc5ee2adb39b06ea127d7543e9f/document/X12G2NM003?search32=C9P6UQR5E9FN6PB1E9HMGNRKCLP6QF98CTP6UQRJEHIN481641PN8SJ5C5MM6OBJEGKJMERJEHIMQRB5CHFN6PB1E9HMGFB6C5M76P8&ORIGINATION_CODE=00344http://www.bloomberglaw.com/s/opinion/9e3a1cc5ee2adb39b06ea127d7543e9f/document/X12G2NM003?search32=C9P6UQR5E9FN6PB1E9HMGNRKCLP6QF98CTP6UQRJEHIN481641PN8SJ5C5MM6OBJEGKJMERJEHIMQRB5CHFN6PB1E9HMGFB6C5M76P8&ORIGINATION_CODE=00344


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)O+< CO'P v +7&*')%$ C7T< )T37O)

F%>65 o7 6= C%5

)ony Corporation of %!erica !anufactured and sold the #Beta!a5# ho!e video tape recorder &T':

niversal City )tudios owned the copyrihts to television prora!s /roadcast on pu/lic airwavesniversal sued )ony for copyriht infrine!ent, allein that /ecause consu!ers used )onyIs Beta!a5 torecord niversalIs copyrihted wor"s, )ony was lia/le for the copyriht infrine!ent alleedlyco!!itted /y those consu!ers in violation of the Copyriht %ct niversal souht !onetary da!aes, aneAuita/le accountin of profits, and an in=unction aainst the !anufacturin and !ar"etin of the &T'IsThe 3istrict Court denied all relief, holdin that the nonco!!ercial ho!e use recordin of !aterial

/roadcast over the pu/lic airwaves was a fair use of copyrihted wor"s and did not constitute copyrihtinfrine!ent (oreover, the court concluded that )ony could not /e held lia/le as contri/utory infrinerseven if the ho!e use of a &T' was considered an infrinin use 7n reversin, the Court of %ppeals held)ony lia/le for contri/utory infrine!ent

7))*6 3oes )onyIs sale of #Beta!a5# video tape recorders to the eneral pu/lic constitute contri/utoryinfrine!ent of copyrihted pu/lic /roadcasts under the Copyriht %ctS

Co+>l*5io+

+o 7n a ->4 opinion delivered /y Justice John Paul )tevens, the Court held that #LtMhe sale of the &T'Isto the eneral pu/lic does not constitute contri/utory infrine!ent of LniversalIsM copyrihts# TheCourt concluded that there was a sinificant li"elihood that a su/stantial nu!/er of copyriht holders

who license their wor"s for free pu/lic /roadcasts would not o/=ect to havin their /roadcasts ti!e>shifted /y private viewers and that niversal failed to show that ti!e>shiftin would cause non>!ini!alhar! to the potential !ar"et for, or the value of, their copyrihted wor"s Justice )tevens wrote for theCourt that #LtMhe sale of copyin eAuip!entdoes not constitute contri/utory infrine!ent if the productis widely used for leiti!ate, uno/=ectiona/le purposes, or, indeed, is !erely capa/le of su/stantialnoninfrinin uses# For the dissentin !inority, Justice Blac"!un e5pressed the views that tapin acopyrihted television prora! is infrine!ent and that the recorder !anufacturers were uilty ofinducin and !aterially contri/utin to the infrine!ent

P?7$7P) *PO'T &) CO'T OF %PP*%$)> CO'PO'%T* T'%3* +%(*

7 corporation8s right to use its corporate and trade name is a property right, a right in rem, which itmay assert and protect against the whole world*

F%CT)6

Philips *5port B& P*B&: filed with the )*C for the cancellation of the word EPhilips the corporatena!e of )tandard Philips Corporation in view of its prior reistration with the Bureau of Patents and the

)*C ?owever, )tandard Philips refused to a!end its %rticles of 7ncorporation so P*B& filed with the)*C a petition for the issuance of a ;rit of Preli!inary 7n=unction, however this was denied rulin that itcan only /e done when the corporate na!es are identical and they have at least . words different This

was affir!ed /y the )*C en /anc and the Court of %ppeals thus the case at /ar

7))*6

;hether or not )tandard Philips can /e en=oined fro! usin Philips in its corporate na!e

'$7+6


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e5istin law

;ith reard to the 1st reAuisite, P*B& adopted the na!e EPhilips part of its na!e .D years /efore)tandard Philips %s reards the .nd, the test for the e5istence of confusin si!ilarity is whether thesi!ilarity is such as to !islead a person usin ordinary care and discri!ination )tandard Philips onlycontains one word, E)tandard, different fro! that of P*B& The . co!panies0 products are also thesa!e, or cover the sa!e line of products %lthouh P*B& pri!arily deals with electrical products, it hasalso shipped to its su/sidiaries !achines and parts which fall under the classification of Echains, rollers,

/elts, /earins and cuttin saw, the oods which )tandard Philips also produce %lso, a!on )tandardPhilips0 pri!ary purposes are to /uy, sell trade 5 5 5 electrical wirin devices, electrical co!ponent,electrical supplies iven these, there is nothin to prevent )tandard Philips fro! dealin in the sa!e lineof /usiness of electrical devices The use of EPhilips /y )tandard Philips tends to show its intention toride on the popularity and esta/lished oodwill of P*B&

Documents

IP Law Case Digest