G.R. No.

100098 December 29, 1995

EMERALD GARMENT MANUFACTURING CORPORATION, petitioner,
vs.
HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY
TRANSFER and H.D. LEE COMPANY, INC., respondents.

FACTS:
On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau
of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of
Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans,
blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class
25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing
Corporation.
Private respondent averred that petitioner's trademark "so closely resembled its own
trademark, 'LEE' as previously registered and used in thePhilippines cause confusion,
mistake and deception on the part of the purchasing public as to the origin of the goods.
On 19 July 1988, the Director of Patents rendered a decision granting private respondent's
petition for cancellation and opposition to registration. The Director of Patents, using the test
of dominancy, declared that petitioner's trademark was confusingly similar to private
respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and
leads him to conclude that the goods originated from the same manufacturer. It is undeniably
the dominant feature of the mark.
ISSUE:
Whether or not a trademark causes confusion and is likely to deceive the public is a
question of fact which is to be resolved by 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.
HELD:
The word "LEE" is the most prominent and distinctive feature of the appellant's
trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the
attention of the buyer and leads him to conclude that the goods originated from the same
manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of
confusion is further made more probable by the fact that both parties are engaged in the
same line of business.
Although the Court decided in favor of the respondent, the appellee has sufficiently
established its right to prior use and registration of the trademark "LEE" in
the Philippines and is thus entitled to protection from any infringement upon the same. The
dissenting opinion of Justice Padilla is more acceptable.
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Issue: WON the trademark Stylistic Mr. Lee tends to mislead or confuse the public and constitutes
an infringement of the trademark Lee.

Held: Negative for lack of adequate proof of actual use of its trademark in the Philippines prior to
Emeralds use of its own mark and for failure to establish confusing similarity between said
trademarks, HD Lee Cos action for infringement must necessarily fail.
Ratio:
Emeralds Stylistic Mr. Lee is not confusingly similar to private respondents "LEE trademark.
Colorable imitation DOES NOT APPLY because:
1. Petitioners trademark is the whole STYLISTIC MR. LEE. Although on its label the word LEE
is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and substantial enough to matter especially in
the light of the following variables that must be factored in, among others:
a. Expensive and valuable items are normally bought only after deliberate, comparative and analytical
investigation; and
b. The average Filipino consumer generally buys his jeans by brand.

2. LEE is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership
over and singular use of said term.
3. After a meticulous study of the records, the SC observes that the Director of Patents and the Court
of Appeals relied mainly on the registration certificates as proof of use by HD Lee Co of the
trademark LEE which are not sufficient.

***********************
Colorable imitation defined: such a close or ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an
ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase
the one supposing it to be the other.

G.R. No. 114508 November 19, 1999

PRIBHDAS J. MIRPURI, petitioner,
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.

Facts:
Barbizon Corp (foreign corp) has adopted the trademark Barbizon. Thus, upon finding that
Mirpuri (domiciled in the Phil) seeks to register the same trademark in the Philippines, Barbizon
Corp filed its opposition. Barbizon Corp alleges its trademark is qualified as well-known and is
therefore protected by the Convention of Paris for the Protection of Intellectual Property which
the Philippines has bound to enforce. The Director of Patents rendered a decision giving due
course to the patent application of Mirpuri. The CA, however, reversed this decision.

Issue: Whether or not the Convention of Paris for the Protection of Intellectual Property affords
protection to a foreign corporation against a Philippine applicant for the registration of a similar
trademark.

Held: Affirmative. The Philippines and the United States of America have acceded to the WTO
Agreement x x x Conformably, the State must reaffirm its commitment to the global community
and take part in evolving a new international economic order at the dawn of the new millennium.
Thus, the first paragraph of Article 6bis of the Paris Convention is applicable in the instant case:
This Article governs protection of well-known trademarks. Under the first paragraph, each
country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit
the use of a trademark which is a reproduction, imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable to create confusion, of a mark considered by
the competent authority of the country where protection is sought, to be well-known in the
country as being already the mark of a person entitled to the benefits of the Convention, and used
for identical or similar goods.
It is a self-executing provision and does not require legislative enactment to give it effect in the
member country.

*****************
Trademark in R.A. No. 8293, the Intellectual Property Code of the Philippines: defines as "any
visible sign capable of distinguishing goods. In Philippine jurisprudence, the function of a
trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to
secure to him, who has been instrumental in bringing into the market a superior article of
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merchandise, the fruit of his industry and skill; to assure the public that they are procuring the
genuine article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product.
G.R. No. 113388 September 5, 1997
ANGELITA MANZANO, petitioner,
vs.
COURT OF APPEALS, and MELECIA MADOLARIA, as Assignor to NEW UNITED FOUNDRY
MANUFACTURING CORPORATION, respondents.
The primary purpose of the patent system is not the reward of the individual but the
advancement of the arts and sciences. The function of a patent is to add to the sum of useful
knowledge and one of the purposes of the patent system is to encourage dissemination of
information concerning discoveries and inventions.
FACTS:
Angelita Manzano filed PPO an action for the cancellation of Letters Patent for a gas burner
registered in the name of respondent Melecia Madolaria who subsequently assigned the letters
patent to New United Foundry and Manufacturing Corporation (UNITED FOUNDRY, for brevity).
Petitioner alleged that (a) the utility model covered by the letters patent, in this case, an LPG gas
burner, was not inventive, new or useful; (b) the specification of the letters patent did not comply
with the requirements of Sec. 14, RA No. 165, as amended; (c) respondent Melecia Madolaria was
not the original, true and actual inventor nor did she derive her rights from the original, true and
actual inventor of the utility model covered by the letters patent; and, (d) the letters patent was
secured by means of fraud or misrepresentation.
Testifying for herself petitioner narrated that her husband Ong Bun Tua worked as a helper
in the UNITED FOUNDRY where respondent Melecia Madolaria used to be affiliated with from 1965
to 1970; that Ong helped in the casting of an LPG burner which was the same utility model of a
burner and that after her husbands separation from the shop she organized Besco Metal
Manufacturing (BESCO METAL, for brevity) for the casting of LPG burners one of which had the
configuration, form and component parts similar to those being manufactured by UNITED
FOUNDRY.
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun Tua and Fidel
Francisco.
Private respondent, on the other hand, presented only one witness, Rolando Madolaria, who
testified, among others, that he was the General Supervisor of the UNITED FOUNDRY.
Director of Patents Cesar C. Sandiego denied the petition for cancellation and holding that
the evidence of petitioner was not able to establish convincingly that the patented utility model of
private respondent was anticipated.
Petitioner elevated the decision of the Director of Patents to the Court of Appeals which
affirmed the decision of the Director of Patents. Hence, this petition for review on certiorari.

ISSUE:
Whether the dismissal is proper where the patent applied for has no substantial difference
between the model to be patented and those sold by petitioner.

HELD:
The element of novelty is an essential requisite of the patentability of an invention or discovery. If
a device or process has been known or used by others prior to its invention or discovery by the
applicant, an application for a patent therefor should be denied; and if the application has been
granted, the court, in a judicial proceeding in which the validity of the patent is drawn in question,
will hold it void and ineffective. It has been repeatedly held that an invention must possess the
essential elements of novelty, originality and precedence, and for the patentee to be entitled to the
protection the invention must be new to the world.
However, The validity of the patent issued by the Philippine Patent Office in favor of private
respondent and the question over the inventiveness, novelty and usefulness of the improved model
of the LPG burner are matters which are better determined by the Patent Office. The technical staff
of the Philippine Patent Office composed of experts in their field has by the issuance of the patent
in question accepted private respondents model of gas burner as a discovery. There is a
presumption that the Office has correctly determined the patentability of the model and such
action must not be interfered with in the absence of competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially when
affirmed by the Court of Appeals, are conclusive on this Court when supported by substantial
evidence. Petitioner has failed to show compelling grounds for a reversal of the findings and
conclusions of the Patent Office and the Court of Appeals. Petition DISMISSED.

G.R. No. 115758

March 19, 2002

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS
LABORATORY, petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents.

FACTS:
The petitioner alleged that she is the registered owner of the copyrights Chin
Chun Su and Oval Facial Cream Container/Case as evidenced by certificates
of copyright registrations and patent rights on Chun Chun Su & Device and Chin
Chun Su (medicated cream) after she purchased it from Quintin Cheng (previous
registered owner in the Philippine Patent Office [PPO]).
Meanwhile, there was a decline in the petitioners business income due to the
advertisement and sale made by Summerville on petitioners products under the
same brand name and in similar containers. According to Summerville, they are
the exclusive and authorized importer, re-packer and distributor of Chin Chun Su
products manufactured by Shun Yi Factory of Taiwan and that said company
authorized them to register its trade name Chin Chun Su Mediated Cream with
the PPO.
The application for preliminary injunction filed by petitioner was granted. Hence,
respondents moved for reconsideration, which was denied. The respondents
then moved for nullification of said preliminary injunction with the CA. The latter
granted its petition.
5

ISSUE: WON the copyright and patent over the name and container of the
beauty cream product entitle the registrant to its EXCLUSIVE use and ownership .

HELD: NO. The petitioner has no right for the EXCLUSIVE use of the trade name
and its container. In order to be entitled to its exclusive use, the user must
sufficiently prove that she registered or used it before anybody else did. This,
petitioner failed to do.

Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual creations in the literary
and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in
any field of human activity which is new, involves an inventive step and is
industrially applicable.

G.R. L-45101 November 28, 1986

ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
vs.
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN, respondents.
FACTS:
Petitioner is doing business under the firm name and style of SWAN
MANUFACTURING" while private respondent is likewise doing business under the firm
name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING. And holder
petitioner informed private respondent that the powder puffs the latter is
manufacturing and selling to various enterprises particularly those in the cosmetics
industry, resemble Identical or substantially Identical powder puffs of which the former is
a patent holder under Registration Certification Nos. Extension UM-109, Extension UM110 and Utility Model No. 1184; petitioner explained such production and sale constitute
infringement of said patents and therefore its immediate discontinuance is demanded,
otherwise it will be compelled to take judicial action
Private respondent replied stating that her products are different and countered
that petitioner's patents are void because the utility models applied for were not new and

patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author.
Petitioner filed a complaint for damages with injunction and preliminary injunction
against private respondent with the then Court of First Instance of Rizal
The trial court issued an Order granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently issued.
In challenging these Orders private respondent filed a petition for certiorari with
the respondent court but was denied. Hence this petition.

ISSUE:
(1) Whether or not in an action for infringement the Court a quo had jurisdiction to
determine the invalidity of the patents at issue which invalidity was still pending
consideration in the patent office.
(2) Whether or not the Court a quo committed grave abuse of discretion in the issuance
of a writ of preliminary injunction.
(3) Whether or not certiorari is the proper remedy.

HELD:
1) The first issue has been laid to rest in a number of cases where the Court ruled that
"When a patent is sought to be enforced, the questions of invention, novelty or prior use,
and each of them, are open to judicial examination."
Under the present Patent Law, there is even less reason to doubt that the trial
court has jurisdiction to declare the patents in question invalid. A patentee shall have the
exclusive right to make, use and sell the patented article or product and the making,
using, or selling by any person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
infringed upon may bring an action before the proper CFI now (RTC) and to secure an
injunction for the protection of his rights.

2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But
where the plaintiff introduces the patent in evidence, and the same is in due form, there
is created a prima facie presumption of its correctness and validity. The decision of the
Commissioner (now Director) of Patent in granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence) then shifts to the
defendant to overcome by competent evidence this legal presumption.
The question then in the instant case is whether or not the evidence introduced
by private respondent herein is sufficient to overcome said presumption.
After a careful review of the evidence consisting of 64 exhibits and oral
testimonies of five witnesses presented by private respondents before the Court of First
Instance before the Order of preliminary injunction was issued as well as those presented

by the petitioner, respondent Court of Appeals was satisfied that there is a prima facie
showing of a fair question of invalidity of petitioner's patents on the ground of lack of
novelty. As pointed out by said appellate court said evidence appeared not to have been
considered at all by the court a quo for alleged lack of jurisdiction, on the mistaken
notion that such question in within the exclusive jurisdiction of the patent office.
It has been repeatedly held that an invention must possess the essential elements
of novelty , originality and precedence and for the patentee to be entitled to protection,
the invention must be new to the world. Accordingly, a single instance of public use of
the invention by a patentee for more than two years (now for more than one year only
under Sec. 9 of the Patent Law) before the date of his application for his patent, will be
fatal to, the validity of the patent when issued.
It will be noted that the validity of petitioner's patents is in question for want of
novelty. Private respondent contends that powder puffs Identical in appearance with that
covered by petitioner's patents existed and were publicly known and used as early as
1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo, pp.
194-199). As correctly observed by respondent Court of Appeals, "since sufficient proofs
have been introduced in evidence showing a fair question of the invalidity of the patents
issued for such models, it is but right that the evidence be looked into, evaluated and
determined on the merits so that the matter of whether the patents issued were in fact
valid or not may be resolved." (Rollo, pp. 286-287).
All these notwithstanding, the trial court nonetheless issued the writ of
preliminary injunction which under the circumstances should be denied.
For failure to determine first the validity of the patents before aforesaid issuance
of the writ, the trial court failed to satisfy the two requisites necessary if an injunction is
to issue, namely: the existence of the right to be protected and the violation of said right.
(Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial court
committed a grave abuse of discretion which makes certiorari the appropriate remedy.
As found by respondent Court of Appeals, the injunctive order of the trial court is
of so general a tenor that petitioner may be totally barred from the sale of any kind of
powder puff. Under the circumstances, respondent appellate court is of the view that
ordinary appeal is obviously inadequate.

G.R. No. 118708 February 2, 1998

CRESER PRECISION SYSTEMS, INC., petitioner,
vs.
COURT OF APPEALS AND FLORO INTERNATIONAL CORP., respondents.

Facts:
Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner submitted samples of its patented aerial fuze to the
AFP for testing claiming to be his own. To protect its right, respondent sent letter of warning
8

to petitioner on a possible court action should it proceed its testing by the AFP. In response
the petitioner filed a complaint for injunction and damages arising from alleged
infringement before the RTC asserting that it is the true and actual inventor of the aerial fuze
which it developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It
has been supplying the military of the aerial fuze since then and that the fuze of the
respondent is similar as that of the petitioner. Petitioner prayed for restraining order and
injunction from marketing, manufacturing and profiting from the said invention by the
respondent. The trial court ruled in favor of the petitioner citing the fact that it was the first
to develop the aerial fuze since 1981 thsu it concludes that it is the petitioners aerial fuze that
was copied by the respondent. Moreover, the claim of respondent is solely based on
its letter of patent which validity is being questioned. On appeal, respondent argued that the
petitioner has no cause of action since he has no right to assert there being no patent issued
to his aerial fuze. The Court of Appeals reversed the decision of the trial court dismissing the
complaint of the petitioner. It was the contention of the petitioner that it can file under
Section 42 of the Patent Law an action for infringement not as a patentee but as an entity in
possession of a right, title or interest to the patented invention. It theorizes that while the
absence of a patent prevents one from lawfully suing another for infringement of said patent,
such absence does not bar the true and actual inventor of the patented invention from suing
another in the same nature as a civil action for infringement.
Issue:
Whether or not the petitioner has the right to assail the validity of the patented work of the
respondent?
Ruling:
The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent
(RA 165) provides that only the patentee or his successors-in-interest may file an action
against infringement. What the law contemplates in the phrase anyone possessing any right,
title or interest in and to the patented invention refers only to the patentees successors-ininterest, assignees or grantees since the action onpatent infringement may be brought only
in the name of the person granted with the patent. There can be no infringement of a patent
until a patent has been issued since the right one has over the invention covered by the
patent arises from the grant of the patent alone. Therefore, a person who has not been
granted letter of patent over an invention has not acquired right or title over the invention
and thus has no cause of action for infringement. Petitioner admitted to have no patent over
his invention. Respondents aerial fuze is covered byletter of patent issued by the Bureau of
Patents thus it has in his favor not only the presumption of validity of its patent but that of a
legal and factual first and true inventor of the invention.

G.R. No. 97343 September 13, 1993

PASCUAL GODINES, petitioner,
vs.
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO
ENTERPRISES, INC.,respondents.

Scribd.

ROBERTO L. DEL ROSARIO, petitioner,

vs.
COURT OF APPEALS AND JANITO CORPORATION, respondents.

Roberto Del Rosario was granted a patent for his innovation called the Minus One
karaoke. The patent was issued in June 1988 for five years and was renewed in
November 1991 for another five years as there were improvement introduced to his
minus one karaoke. In 1993, while the patent was still effective, Del Rosario sued
Janito Corporation, a Japanese company owned by Janito Cua, for allegedly infringing
upon the patent of Del Rosario. Del Rosario alleged that Janito was manufacturing a
sing-along system under the brand miyata karaoke which is substantially, if not
identical, the same to his minus one karaoke. The lower court ruled in favor of Del
Rosario but the Court of Appeals ruled that there was no infringement because the
karaoke system was a universal product manufactured, advertised, and marketed all
over the world long before Del Rosario was issued his patents.
ISSUE: Whether or not the Court of Appeals erred in its ruling.
HELD: Yes. The Patent Law expressly acknowledges that any new model of implements
or tools of any industrial product even if not possessed of the quality of invention but
which is of practical utility is entitled to a patent for utility model. Here, there is no dispute
that the letters patent issued to Del Rosario are for utility models of audio equipment. It
is elementary that a patent may be infringed where the essential or substantial features
of the patented invention are taken or appropriated, or the device, machine or other
subject matter alleged to infringe is substantially identical with the patented invention. In
order to infringe a patent, a machine or device must perform the same function, or
accomplish the same result by identical or substantially identical means and the principle
or mode of operation must be substantially the same. In the case at bar, miyata karaoke
was proven to have substantial if not identical functionality as that of the minus one
karaoke which was covered by the second patent issued to Del Rosario. Further, Janito
failed to present competent evidence that will show that Del Rosarios innovation is not
new.

10

KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by

GEMMA DEMORAL-SAVAGE,petitioners,
vs.
JUDGE APRONIANO B. TAYPIN, Presiding Judge, RTC-BR. 12, Cebu City, CEBU
PROVINCIAL PROSECUTOR'S OFFICE, NATIONAL BUREAU OF INVESTIGATION,
Region VII, Cebu City, JUANITA NG MENDOZA, MENDCO DEVELOPMENT
CORPORATION, ALFREDO SABJON and DANTE SOSMEA, respondents.
FACTS: Petitioners Savage, seek to nullify the search warrant issued by respondent Judge
Aproniano B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the
seizure of certain pieces of wrought iron furniture from the factory of petitioners located in
Biasong, Talisay, Cebu.
The complaint was lodged by private respondent Eric Ng Mendoza, president and general
manager of Mendco Development Corporation (MENDCO), alleging that Savages products
are the object of unfair competition involving design patents, punishable under Art. 189 of the
Revised Penal Code as amended. Savage contends however, that there was no existence of
offense leading to the issuance of a search warrant and eventual seizure of its products.
ISSUE: Whether or not unfair competition involving design patents are punishable under
Article 189 of the Revised Penal Code.
HELD: To provide a clear view, the Intellectual Property Code took effect on January 1,
1998. The repealing clause of the IPC provides that Articles 188 and 189 of the Revised
Penal Code (RPC), Presidential Decree No. 49, are hereby repealed The issue involving the
existence of "unfair competition" as a felony involving design patents, referred to in Art. 189
of the Revised Penal Code, has been rendered moot and academic by the repeal of the
article. Hence, the search warrant cannot even be issued by virtue of a possible violation of
the IPR Code.
There is no mention of any crime of "unfair competition" involving design patents in the
controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the
crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189
of the Revised Penal Code.
The court is are prevented from applying these principles, along with the new provisions on
Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts
constitute patent infringement as defined by the same Code
Although the case traces its origins to the year 1997 or before the enactment of the IPR
Code, Article 22 of the Revised Penal Code provides that penal laws shall be applied
retrospectively, if such application would be beneficial to the accused. Since the IPR Code
11

effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then
RPC provisions must be applied.

12