Elidad C. Kho vs.

Court of Appeals, Summerville General Merchandising

Company and Ang Tiam Chay (G.R. No. 115758, March 19, 2002, 379 SCRA 410)
FACTS:
Petitioners allegations are that they are doing business under the name and style of KEC Cosmetics Laboratory, registered owner of Chin Chun Su
and oval facial cream container/case, and alleges that she also has patent rights on Chin Chun Su and Device and Chin Chun Su Medicated Cream
after purchasing the same from Quintin Cheng, the registered owner thereof in the supplemental register of the Philippine Patent Office and that
Summerville advertised and sold petitioners cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby
misleading the public, and resulting in the decline in the petitioners business sales and income; and, that the respondents should be enjoined from
allegedly infringing on the copyrights and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that (1) Summerville is the exclusive and authorized importer, re-packer and distributor of
Chin Chun Su products manufactured by Shun Yi factory of Taiwan, (2) that the said Taiwanese manufacturing company authorized Summerville to
register its trade name Chin Chun Cu Medicated Cream with the Philippine Patent office and Other appropriate governmental agencies; (3) that KEC
Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification; and, (4) that the authority of Quintin Cheng,
assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already terminated by the said
Taiwanese manufacturing company.
ISSUE:
Whether or not Kho has the sole right using the package of Chin Chun Su products
RULING:
Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty
cream product are proper subjects of a trademark in as much as the same falls squarely within its definition. In order to be entitled to exclusively
use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else
did. The petitioners copyright and patent registration of the name and container would not guarantee her the right to exclusive use of the
same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the same before anyone did.
NOTE:
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
goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope
of 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 industrial applicable.

SMITHKLINE v CA
409 SCRA 33 Intellectual Property Law Law on Patents Doctrine of Equivalents
Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued to it for its invention entitled
Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.
The invention is a means to fight off gastrointestinal parasites from various cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains a drug called
Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and
goats.
Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same as methyl 5 propylthio-2benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. And
that Albendazole is actually patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that Albendazole is present but even if it were, the same
is unpatentable.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances substantially do the same function in
substantially the same way to achieve the same results, thereby making them truly identical for in spite of the fact that the word
Albendazole does not appear in Tryco Paharmas letters of patent, it has ably shown by evidence its sameness with methyl 5
propylthio-2-benzimidazole carbamate.
ISSUE: Whether or not there is patent infringement in this case

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere in the patent
is the word Albendazole found. When the language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. Further, there was a separate patent for Albendazole given by the US which implies that Albendazole
is indeed separate and distinct from the patented compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented compound and Albendazole. While both
compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless
Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it
performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or
substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show
that all three components of such equivalency test are met.

Issue:
Whether or not respondent is guilty of patent infringement?
Ruling:
The Supreme Court held that it did not. When the language of the claim is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. The language of the Letter of Patents issued to the petitioner failed to yield anything that it includes
Albendazole. The doctrine of equivalents does not apply in the case at bar because it requires that for infringement to take place, the device
should appropriate a prior invention by incorporating its innovative concept and although there are some modifications and change they
perform substantially the same results. The petitioners evidence failed to adduce that substantial sameness on both the chemicals they
used. While both compounds produce the same effects of neutralizing parasites in animals, the identity of result does not amount to
infringement. The petitioner has the burden to show that it satisfies the function-means-and-result-test required by the doctrine of
equivalents. Nothing has been substantiated on how Albendazole can weed the parasites out from animals which is similar to the manner
used by the petitioner in using their own patented chemical compound.

Ching v. Salinas, Sr. (G.R. No. 161295)

Facts:
P is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as Leaf Spring Eye Bushing for
Automobile made up of plastic, which was issued by the National Library
Certificates of Copyright Registration and Deposit.
P requested the NBI for police/investigative assistance for the apprehension and
prosecution of illegal manufacturers, producers and/or distributors of the works. After
due investigation, the NBI filed applications for SWs against R alleging that the latter
therein reproduced and distributed the said models penalized under R.A. No. 8293.
RTC granted the application and issued SWs for the seizure of the aforecited articles.
R filed a motion to quash the search warrants averring that the works covered by the
certificates issued by the National Library are not artistic in nature; they are
considered automotive spare parts and pertain to technology. They aver that the
models are not original, and as such are the proper subject of a patent, not copyright.

RTC quashed the SW. Ps MR having been denied; he filed a petition for certiorari in
the CA. The petition was dismissed.
Issues:
(1) Whether or not Ps certificate of copyright registration over said utility models are
valid; and
(2) Whether or not Ps utility models can be considered literary and artistic works
subject to copyright protection.
Ruling:
(1) The petition has no merit. To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its absence, other evidence. A
copyright certificate provides prima facie evidence of originality which is one element
of copyright validity. It constitutes prima facie evidence of both validity and
ownership and the validity of the facts stated in the certificate. The presumption of
validity to a certificate of copyright registration merely orders the burden of
proof. The applicant should not ordinarily be forced, in the first instance, to prove all
the multiple facts that underline the validity of the copyright unless the respondent,
effectively challenging them, shifts the burden of doing so to the applicant.
A certificate of registration creates no rebuttable presumption of copyright validity
where other evidence in the record casts doubt on the question. In such a case, validity
will not be presumed. No copyright granted by law can be said to arise in favor of the
petitioner despite the issuance of the certificates of copyright registration and the
deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
(2) We agree with the contention of the petitioner (citing Section 171.10 of R.A. No.
8293), that the authors intellectual creation, regardless of whether it is a creation with
utilitarian functions or incorporated in a useful article produced on an industrial scale,
is protected by copyright law. However, the law refers to a work of applied art which
is an artistic creation. It bears stressing that there is no copyright protection for
works of applied art or industrial design which have aesthetic or artistic features that
cannot be identified separately from the utilitarian aspects of the article. Functional
components of useful articles, no matter how artistically designed, have generally
been denied copyright protection unless they are separable from the useful article.
In this case, the petitioners models are not works of applied art, nor artistic works.
They are utility models, useful articles, albeit with no artistic design or value. Being
plain automotive spare parts that must conform to the original structural design of the

components they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion are not ornamental. They lack the decorative quality or value that must
characterize authentic works of applied art. They are not even artistic creations with
incidental utilitarian functions or works incorporated in a useful article. In actuality,
the personal properties described in the search warrants are mechanical works, the
principal function of which is utility sans any aesthetic embellishment.
In this case, the bushing and cushion are not works of art. They are, as the petitioner
himself admitted, utility models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for
lack of merit. The assailed Decision and Resolution of the CA are AFFIRMED.
Philip Morris vs. Court of Appeals
Facts:
Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac
Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by
Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the
writof preliminary injunction it earlier had issued against Fortune Tobacco Corporation,
herein private respondent, from manufacturing and selling "MARK" cigarettes in the local
market. Banking on the thesis that petitioners' respective symbols "MARK VII", 'MARK TEN",
and "MARK", also for cigarettes, must be protected against unauthorized appropriation,
Philip Morris, Incorporated is a corporation organized under the laws of the State of
Virginia ,United States of America, and does business at 100 Park Avenue, New York, New
York, United States of America. The two other plaintiff foreign corporations, which are whollyowned subsidiaries of Philip Morris, Inc., are similarly not doing business in the Philippines
but are suing on an isolated transaction. Plaintiffs-petitioners asserted that defendant
Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the
allegedly identical or confusingly similar trademark' Plaintiffs admit in the complaint that
"xxx they are not doing business in the Philippines and are suing on an isolated transaction
xxx'. This simply means that they are not engaged in the sale, manufacture, importation,
exportation and advertisement of their cigarette products in the Philippines.
Issue:
Whether or not there has been an invasion o plaintiffs' right of property to such trademark or
tradename.Whether of not there is a violation of the International Agreement on protection
of trademarks.
Held:
There is no proof whatsoever that any of plaintiffs products which they seek to protect from
any adverse effect of the trademark applied for by defendant, is in actual use and available
for commercial purposes anywhere in the Philippines. To sustain a successful prosecution of
their suit for infringement, petitioners, as foreign corporations not engaged in local
commerce, rely on Section 21-A of the Trademark Law reading as follows: SECTION 21-A. Any
foreign corporation or juristic person to which a mark or trade-name has been registered or
assigned under this act may bring an action hereunder for infringement, for unfair
competition, or false designation of origin and false description, whether or not it has been
licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty

nine, as amended, otherwise known as the Corporation Law, at the time it brings complaint:
Provided, That the country of which the said foreign corporation or juristic person is a citizen
or in which it is domiciled, by treaty, convention or law, grants a similar privilege to
corporate or juristic persons of the Philippines. (As inserted by Sec. 7 of Republic Act No.
638.) to drive home the point that they are not precluded from initiating a cause of action in
the Philippines on account of the principal perception that another entity is pirating their
symbol without any lawful authority to do so.
CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
G.R. No. 120900, July 20, 2000
FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation filed an application
for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition
alleging that it will be damaged by the registration of the trademark CANON in the name of
private respondent since they were using the same trademark for their footwear line of
products. The private respondent will also use the name Canon for its footwear products.
Based on the records, the evidence presented by petitioner consisted of its
certificates of registration for the mark CANON in various countries covering goods
belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also
submitted in evidence its Philippine Trademark Registration No. 39398, showing its
ownership over the trademark CANON.
The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the trademark
CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually
affirmed the decision of the BPTTT.
ISSUE:
Is the use of trademark, CANON, by the private respondent affects the business of
Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as
CANON?
HELD:
The Supreme Court says that ordinarily, the ownership of a trademark or tradename
is a property right that the owner is entitled to protect as mandated by the Trademark Law.
However, when a trademark is used by a party for a product in which the other party does
not deal, the use of the same trademark on the latter's product cannot be validly objected
to.
The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals).
Clearly, there is a world of difference between the paints, chemical products, toner, and
dyestuff of petitioner and the sandals of private respondent.

Shangri-La International Hotel Management, LTD., Shangri-La

Properties Inc., Makati Shangri-La Hotel & Resort Inc., and Kuok
Philippines Properties, Inc vs Developers Group of Companies, Inc.
GR 159938, March 31, 2006
Facts:
Respondent claims ownership over the Shangri-La mark and s logo on the
strength of its prior use within the country. It filed with the bureau of patents,
trademarks and technology transfer an application for registration covering
the subject mark and logo.
BPTTT issued the corresponding certificate of registration.
The Kuok family on the other hand owns a chain of hotels since 1969 and
adopted the name Shangri-La. The Kuok Family has opened EDSA Shangri-La
and Makati Shangri-La in the Philippines. Both hotels are incorporated in the
Philippines.
The hotels owned by the Kuok family used the distinct marks of Shangri-La
as part of their trade name.
The Kuok Family filed with the BPTTT a petition for cancellation of the
registration of the Shangri-La mark used by respondent.The case was
thereafter heard before the RTC.
After trial on the merits, the RTC ruled in favor of DGCIOn appeal, the CA
affirmed the ruling of the RTC.On appeal to the SC, petitioner alleged that
respondent cannot file an application for registration of the Shangri-La mark
because it did not have prior actual commercial use as required by RA 166.
Issue:
Whether or not the trademark by DGCI cannot be registered?
Held:
Under RA 166 before a trademark can be registered, it must have been
actually used in commerce for not less than two months in the Philippines
prior the filing of the application for registration.
Registration does not confer upon the registrant an absolute right to the
registered mark. It is merely a prima facie proof that the registrant is the
owner. Evidence of a prior and continuous use by another can overcome such
presumption.
Ownership of a mark or trade name may be acquired not by registration but
by adoption and use in trade and commerce.
Respondents own witness testified that the jeepney signboard artist
commissioned to create the mark and logo submitted his designs only two
and a half months after the filing of the trademark application. Hence

respondent cannot claim that the certificate of registration is proof that the
two months prior use was complied with.
Also it was found that respondents president Ramon Syhunliong has been a
guest in one of the petitioners hotel. Hence there was a possibility that he
may have copied the idea there.
CA still gave him the benefit of the doubt; however upon scrutiny of the
questioned logos, it appears that the respondents logo has oriental
overtones. By copying even the exact font and lettering, there arises a
certainty that the adoption was deliberate, malicious, and in bad faith.
MCDONALDS CORPORATION VS. MACJOY FASTFOOD CORPORATION
G.R. NO. 166115, FEB. 2, 2007
Facts:
On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic
corporation engaged in the sale of Fast food products in Cebu city, filed with
BPTT, now IPO, an application for registration of the trademark MACJOY &
DEVICE for fried chicken, chicken barbeque, burgers, fries, spaghetti,
palabok, tacos, sandwiches, halo-halo and steaks. Petitioner McDonalds
Corporation, filed a verified Notice of Opposition against the respondents
application claiming that the trademark MACJOY & DEVICE so resembles
its corporate logo otherwise known as the Golden Arches or M design, and
its
marks

McDonalds,
McChicken,MacFries,
BigMac,McDo,McSpaghetti,McSnack, and Mc, such that when used
on identical or related goods, the trademark applied for would confuse or
deceive purchasers into believing that the goods originate from the same
source or origin. On Dec. 28, 1998, the IPO sustained the petitioners
opposition and rejected the respondents application. CA reversed.
Issue:
Whether or not respondents McJoy and Device marks are confusingly similar
to petitioners McDonalds marks?
Held:
Yes. In determining similarity and likelihood of confusion, jurisprudence has
developed two test-the dominancy test and the holistic test: The dominancy
test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception; the holistic test
requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging. Applying the dominancy test,
McDonalds and MACJOY marks are confusingly similar with each other
such that an ordinary purchaser can conclude an association or relation
between the marks.

Respondent alleged that the word MACJOY is based on the name of its
presidents niece, Scarlett Yu Carcell. By its implausible and insufficient
explanation as to how and why out of the many choices of words if could
have used for its trade name and/or trademark, it chose the word MACJOY,
the only logical conclusion deducible therefrom is that the respondent would
want to ride high on the establish reputation and goodwill of the
MCDONALDS marks, which, as applied to petitioners restaurant business
and food products, is undoubtedly beyond question.