1. Bar Exam Venue: University of Sto. Tomas, Espana, Manila
2. Examination Dates: Four Sundays of October 2013:
8 a.m. - 12 noon - Political Law
2 p.m. - 6 p.m. - Labor Law
8 a.m. - 12 noon - Civil Law
2 p.m. - 6 p.m. – Taxation
8 a.m. - 12 noon - Commercial Law
2 p.m. - 6 p.m. - Criminal Law
8 a.m. - 12 noon - Remedial Law
2 p.m. - 6 p.m - Legal Ethics
3. Coverage: Questions shall strictly fall within the defined Syllabus for every subject. The Syllabi shall be released through a Bar Bulletin or before December 31, 2012.
The cut-off for Supreme Court decisions covered by the 2013 Bar Examinations shall be January 31, 2013. 2
4. Exam Structure and Format of Questions
a. The Examination shall consist of 20% Multiple Choice Questions (MCQ) and 80% Essay-type questions.
b. Whether MCQ or essay, the questions shall be based on a given set of facts, presented as briefly but as clearly and completely as possible, taking into account that every examinee needs reading, understanding, consideration of the applicable law, and answering time for every question.
The whole examination should be answerable by the average bar examinee within 3 .5 hours (210 minutes) to allow him or her 30 minutes of review time.
c. The basic elements of problem solving that the Examiners shall particularly look for are: the examinee's (1) proper understanding and appreciation of the facts, particularly of the components or details that can be material in resolving the given problem; (2) his or her appreciation of the applicable /awls that may come into play; (3) recognition of the issues posed; and the (4) resolution of the issues through the analysis and application of the law to the given facts. The examinee's presentation and articulation of his or her answer shall also be given weight.
d. The 20% MCQ portion of the examination shall be divided into 4 or 5 main fact situations from which the MCQ questions shall be asked.
The 80% essay portion of the exam shall be divided into eight (8) divisions of ten (10) points each, with a maximum of two facts per division from which question shall be drawn.
The corresponding weight of each question shall properly be indicated in the questionnaire, together with estimated answering time, to allow the examinee proper allotment of his or her exam time.
a. All administrative matters relating to the Bar Examinations shall be handled by and shall be coursed through the Supreme Court's Office of the Bar Confidant's (OBC). All communications should be addressed to the Office of the Bar Confidant c/o Atty. Tina Layusa, SC Bar Confidant.
b. The OBC can be reached at landline number 5257929; 5268122; 5268119; cellular phone number 09088864293; and by e-mail at firstname.lastname@example.org. It holds office at the Supreme Court, Padre Faura, Manila, and is open at regular office hours on regular working days. All inquiries regarding the Bar Examinations should be directed at the OBC. Interested parties are urged to first communicate with the OBC by phone or by email to determine if the need exists for them to personally go to the OBC.
c. The Bar Confidant shall act as Spokesperson for the Bar Examinations and shall handle all announcements and relations with the media, with the law schools, and with examinees. Public announcements shall be through Bar Bulletins issued by the OBC at the SC website:
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VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises vs. LEVI STRAUSS & CO., LEVI STRAUSS (PHIL.), INC.
Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally known clothing manufacturer, own the arcuate design trademark which was registered under US Trademark Registration No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and Venancio Sambar, without the consent and authority of private respondents and in infringement and unfair competition, sold and advertised, and despite demands to cease and desist, continued to manufacture, sell and advertise denim, pants under the brand name “Europress” with back pockets bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion on the buying public, prejudiced to private respondent’s goodwill and property right.
Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was issued to him, but he denied using it. He said he did not authorize anyone to use the copyrighted design.
Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing, advertising and selling pants with the arcuate design on their back pockets.
Private respondents moved for reconsideration praying for the cancellation of petitioner’s copyright registration.
Trial court granted the prayer.
Petitioner appealed to the Court of Appeals which affirmed the ruling of the trial court.
Whether petitioner infringe on private respondent’s arcuate design.
To be entitled to a copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another.
Both the trail court and the Court of Appeals found there was infringement.
Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office for his so-called invention of an improved adjustable plow with the use his own native plow. A certified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine Islands.
Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business in Iloilo City, was a manufacturer of plow parts. It produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.
Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged infringement of his U.S. Patent by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by reason of this infringement, to which the court issued the preliminary injunction prayed for.
The defendant denied the allegations and defended that the patent lacked novelty or invention, that there was no priority of ideas or device in the principle and construction of the plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had already been in public use for more than two years before the application of the plaintiff for his patent.
The trial judge rendered judgment in favor of the defendant, declaring null and without effect the patent in question and dismissing the suit with costs against the plaintiff. Hence, the plaintiff appealed said judgment.
1. Whether the patented invention is void for lack of novelty and invention?
2. Whether the patent is invalid considering that the plow had already been in public use for over two years prior to the application for a patent.
1. Yes, the patent if void. The Supreme Court affirmed the trial court’s conclusion that the plow of the plaintiff is not different from the native plow, except in the material, in the form, in the weight and the grade of the result, the said differences giving it neither a new function nor a new result distinct from the function and the result obtained from the native plow. Also, its production does not presuppose the exercise of the inventive faculty but merely of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law.
2. Yes, the patent is void. Under the provisions of the statute, an inventor's creation must not have been in public use or on sale in the United States (and the Philippine Islands) for more than two years prior to his application.
Further, it was proved that the invention was used in public at Iloilo by others than Vargas, the inventor, more than two years before the application for the patent thus, the patent is invalid.
This is an appeal from the order of the Securities and Exchange Commission granting a petition by the respondent to have the petitioner’s corporate name be changed as it is “confusingly and deceptively similar” to that of the former.
On January 8, 1954, respondent Universal Textile Mills was issued a certificate of Corporation as a textile manufacturing firm. On the other hand, petitioner, which deals in the production of hosieries and apparels, acquired its current name by amending its articles of incorporation, changing its name from Universal Hosiery mills Corporation to Universal Mills corporation.
Whether or not petioner’s trade name is confusingly similar with that of respondent’s.
Yes. The corporate names in question are not identical, but they are indisputably so similar that even under the test of reasonable care and observation as the public generally are capable of using and may be expected to exercise” invoked by appellant. We are apprehensive confusion will usually arise, considering that x x x appellant included among its primary purposes the manufacturing, dyeing, finishing and selling of fabrics of all kinds” which respondent had been engaged for more than a decade ahead of petitioner.
KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by GEMMA DEMORAL-SAVAGE 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 SOSMEÑA
G.R. No. 134217, May 11, 2000
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 Savage’s 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 effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then RPC provisions must be applied.
This is an appeal from a decision of the Director of Patents denying the petition for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Felipe Tarroza for his Side Tilting-Dumping Wheelbarrow.
Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent No. 27 for a Dumping and Detachable Wheelbarrow, which he claims to have been infringed by the respondent, they being neighbors.
Whether or not respondent’s Utility Model Patent deserves cancellation.
No. There is an express recognition under the Patent Law that any new model of implements or tools or 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 a utility model: From the description of the side of tilting-dumping wheelbarrow, the product of ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers to as “practical utility.”
PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as Director of Patents
G.R. No. L-23035 July 31, 1975
Facts: Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office on August 10, 1961, a certificate covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts. On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the Director of Patent, asking for the cancellation of Philippine Nut's certificate of registration on the ground that "the registrant was not entitled to register the mark at the time of its application for registration thereof" for the reason that it (Standard Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172, issued by the Patent Office on July 28, 1958. Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered label is not confusingly similar to that of Standard Brands as the latter alleges. Respondent Director of Patents gave due course to Standard Brand's petition, ordering the cancellation of Philippine Nut's Certificate of Registration. Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review, seeking the reversal of the Director of Patents’ decision. Issue: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine Nut on its label for salted peanuts with the same coloring scheme and the same lay-out of words, confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product. Ruling: Yes. As to appearance and general impression of the two trademarks, the Supreme Court said it found a very confusing similarity. The word PLANTERS printed across the upper portion of the label in bold letters easily attracts and catches the eye of the ordinary consumer and it is that word and none other that sticks in his mind when he thinks of salted peanuts. The Supreme Court also held that although it is true that no producer or manufacturer may have a monopoly of any color scheme or form of words in a label, but when a competitor adopts a distinctive or dominant mark or feature of another's trademark and with it makes use of the same color ensemble, employs similar words written in a style, type and size of lettering almost identical with those found in the other trademark, the intent to pass to the public his product as that of the other is quite obvious. It deceives the public. Hence, the decision of respondent Director of Patents was affirmed.
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E.J. GALLO WINERY and THE ANDRESONS GROUP, INC.
On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark and trade name infringement and unfair competition, with a prayer for damages and preliminary injunction.
They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.
In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:
1.Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;
2.GALLO cigarettes and GALLO wines were sold through different channels of trade;
3.the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo cigarette buyers were farmers, fishermen, laborers and other low-income workers;
4.the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;
On April 21, 1993, the Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary injunction.
On August 19, 1993, respondent’s motion for reconsideration was denied.
On February 20, 1995, the CA likewise dismissed respondent’s petition for review on certiorari.
After the trial on the merits, however, the Makati RTC, on November 26, 1998, held petitioners liable for, permanently enjoined from committing trademark infringement and unfair competition with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration.
Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they were purportedly forms of vice.
Wines and cigarettes are not identical, similar, competing or related goods.
In resolving whether goods are related, several factors come into play:
·the business (and its location) to which the goods belong
·the class of product to which the good belong
·the product’s quality, quantity, or size, including the nature of the package, wrapper or container
·the nature and cost of the articles
·the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality
·the purpose of the goods
·whether the article is bought for immediate consumption, that is, day-to-day household items
·the field of manufacture
·the conditions under which the article is usually purchased and
·the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order to be objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.
The petitioners are not liable for trademark infringement, unfair competition or damages.
FRANCISCO G. JOAQUIN, JR. and BJ PRODUCTIONS, INC. vs. HONORABLE RANKLIN M. DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO
Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show’s format and style of presentation.
Upon complaint of petitioners, information for violation of PD No. 49 was filed against private respondent Zosa together with certain officers of RPN 9 for airing It’s a Date. It was assigned to Branch 104 of RTC Quezon City.
Zosa sought review of the resolution of the Assistant City Prosecutor before the Department of Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City Prosecutor’s findings and directed him to move for the dismissal of the case against private respondents.
Petitioner Joaquin filed motion for reconsideration but such was denied.
Whether the format or mechanics or petitioner’s television show is entitled to copyright protection.
The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No. 49, otherwise known as the Decree on Intellectual Property, enumerates the classes of work entitled to copyright protection. The provision is substantially the same as Sec. 172 of the Intellectual Property Code of the Philippines (RA 8293). The format or mechanics of a television show is not included in the list of protected works in Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot be extended to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new independent right granted by the statute and not simply a pre-existing right regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the person and on terms and conditions specified in the statute.
The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the class of works mentioned in PD 49.
The copyright does not extend to the general concept or format of its dating game show.
Mere description by words of the general format of the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the determination of the existence of a probable cause.
A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright / format of both dating game shows.
INDUSTRIAL REFRACTORIES CORPORATION OF THE PHILIPPINES vs. COURT OF APPEALS, SECURITIES AND EXCHANGE COMMISSION and REFRACTORIES CORPORATION OF THE PHILIPPINES
G.R. No. 122174, October 3, 2002
Facts: Respondent Refractories Corporation of the Philippines (RCP) is a corporation duly organized on October 13, 1976. On June 22, 1977, it registered its corporate and business name with the Bureau of Domestic Trade. Petitioner IRCP was incorporated on August 23, 1979 originally under the name "Synclaire Manufacturing Corporation". It amended its Articles of Incorporation on August 23, 1985 to change its corporate name to "Industrial Refractories Corp. of the Philippines". Both companies are the only local suppliers of monolithic gunning mix. Respondent RCP then filed a petition with the Securities and Exchange Commission to compel petitioner IRCP to change its corporate name. The SEC rendered judgment in favor of respondent RCP. Petitioner appealed to the SEC En Banc. The SEC En Banc modified the appealed decision and the petitioner was ordered to delete or drop from its corporate name only the word "Refractories". Petitioner IRCP filed a petition for review on certiorari to the Court of Appeals and the appellate court upheld the jurisdiction of the SEC over the case and ruled that the corporate names of petitioner IRCP and respondent RCP are confusingly or deceptively similar, and that respondent RCP has established its prior right to use the word "Refractories" as its corporate name. Petitioner then filed a petition for review on certiorari Issue:
Are corporate names Refractories Corporation of the Philippines (RCP) and "Industrial Refractories Corp. of the Philippines" confusingly and deceptively similar?
Yes, the petitioner and respondent RCP’s corporate names are confusingly and deceptively similar. Further, Section 18 of the Corporation Code expressly prohibits the use of a corporate name which is "identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws". The policy behind said prohibition is to avoid fraud upon the public that will have occasion to deal with the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration and supervision over corporation. The Supreme Court denied the petition for review on certiorari due for lack of merit.
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999
FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For Today (CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency (DEP). Petitioners found that several pages of the respondent's book are similar, if not all together a copy of petitioners' book. Habana et al. filed an action for damages and injunction, alleging respondent’s infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially familiar with the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed certain portions of their book CET.
On the other hand, Robles contends that the book DEP is the product of her own intellectual creation, and was not a copy of any existing valid copyrighted book and that the similarities may be due to the authors' exercise of the "right to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving them of any liability. Later, the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.
Issue: Whether Robles committed infringement in the production of DEP.
Held: A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. The court finds that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights.
In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow another to copy the book without appropriate acknowledgment is injury enough.
PATRICK HENRY FRANK and WILLIAM HENRY GOHN vs. CONSTANCIO BENITO
G.R. No. L-27793, March 15, 1928
FACTS: Plaintiffs are the owners of a patent covering hemp-stripping machine No. 1519579 issued to them by the United States Patent Office and duly registered in the Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235
Plaintiffs allege that the defendant manufactured a hemp-stripping machine in which, without authority from the plaintiffs, and has embodied and used such spindles and their method of application and use, and is exhibiting his machine to the public for the purpose of inducing its purchase. Frank and Gohn stress that use by the Benito of such spindles and the principle of their application to the stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions and specifications.
Plaintiffs assert the violation of infringement upon the patent granted to Frank & Gohn, and requested that an action for injunction and damages be instituted against Benito.
Respondent on the other hand contends that it had no prior knowledge of the prior existence of the hemp-stripping invention of the plaintiffs nor had any intent to imitate the Frank’s product. Likewise, the defendant contended that the facts alleged therein do not constitute a cause of action, that it is ambiguous and vague. The lower court rendered judgment in favor of the plaintiffs, to which was later affirmed by the appellate court.
HELD: As a rule, the burden of proof to substantiate a charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. The burden the shifts to the defendant to overcome by competent evidence this legal presumption.
The patent in the case at bar, having been introduced in evidence, affords a prima facie presumption of its correctness and validity. Hence, this is not a case of a conflict between two different patents. In the recent of Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United States ruled “an improper cannot appropriate the basic patent of another, and if he does so without license is an infringer, and may be used as such. It is well established that an improver cannot appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such.”
On April 23, 1959, private respondent Westmont Pharmaceuticals, Inc. sought registration of trademark “Atussin” This was objected to by petitioner Etepha, A.G. alleging that it will be detrimental on their part as it is confusingly similar to its Pertussin. Both products deal with the treatment of cough.
Whether or not Attusin may be registered as a trademark.
Yes. x x x The validity of a cause for infringment is predicated upon colorable imitation. The phrase “colorable imitaion” denotes such a “close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance 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.”
While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by combination with another word or phrase.”
The two labels are entirely different in colors, contents, arrangement of words theeon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar with the two trademarks.
We cannot escape notice of the fact that the two words do not sound alike – when pronounced.
THE EAST PACIFIC MERCHANDISING CORPORATION vs. THE DIRECTOR OF PATENTS and LUIS P. PELLICER
G.R. No. L-14377, December 29, 1960
FACTS: Marcelo T. Pua filed with the Office of the Director of Commerce an application for the registration under Act 666 of the composite trademark consisting of the word "Verbena" and representation of a Spanish lady, with specific evident set of designs. Respondent Luis P. Pellicer filed an opposition to the application on the following grounds: (a) that the picture of a lady is common in trade and the name "Verbena" is the generic name of a flower and, therefore, neither may be exclusively appropriated or registered by the applicant.
The Director of Patents favored the Pellicer, alleging that the term "Verbena" is "generically descriptive or misdescriptive of the products, namely lotion, face powder, hair pomade and brillantine, while the representation of a Spanish lady is not only deceptively misdescriptive of the source or origin, but also common in trade," and, resulting to the denial of East Pacific’s registration.
Issue:Whether or not the term “Verbena” is registerable.
Held: The term "Verbena" is descriptive of a whole genus of garden plants with fragrant flowers used in connection with cosmetic products. Regardless of other connotations of the word, the use of the term cannot be denied to other traders using such extract or oils in their own products. It follows that the Director of Patents correctly held the term to be non-registerable in the sense that petitioner company would be entitled to appropriate its use to the exclusion of others legitimately entitled, such as oppositor Pellicer.
In a leading case, Caswell vs. Davis, 17 Am. Rep. 233, 241, 242, the court, on a similar issue, said:
There is no principle more firmly settled in the law of trademarks, than that words or phrases which have been in common use and which indicate the character, kind, quality and composition of the thing, may not be appropriated by any one to his exclusive use. In the exclusive use of them the law will not protect. . . .
The claim that the petitioner is entitled to registration because the term "Verbena" has already acquired a secondary significance is without merit. The provisions of law (Rep. Act No. 166, sec. 4) require that the trademark applied for must have "become distinctive of the applicant's goods", and that a prima facie proof of this fact exists when the applicant has been in the "substantially exclusive and continuous use thereof as a mark or tradename, for five years next preceding the date of the filing of the application for its registration".
DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES
G.R. No. L-78325 January 25, 1990
FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and manufacturer, PhilPack filed an infringement of copyright complaint against respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the petitioner, to which is deceiving and misleading to the public.
In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners.
The Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties nor on the continued use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.
Issue: Whether or not SSMI committed infringement against Del Monte in the use of its logos and bottles.
Held: Yes. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached; the discerning eye of the observer must focus not only on the precognizant words but also on the other features appearing on both labels. It has been correctly held that side-by-side comparison is not the final test of similarity. In determining whether a trademark has been infringed, we must consider the mark as a whole and not as dissected.
The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this case. The Sunshine label is a colorable imitation of the Del Monte trademark. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive.
With regard to the bottle use, Sunshine despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte.
It is admitted that plaintiff’s trade name as evidenced by the certificate issued under the Spanish regime, consists solely of the words “La Flor de la Isabela”. Plaintiff does not claim that the word “Isabela” has been registered by it as a trade name or that it has a title from any source conferring on it the exclusive right to use that word.
Defendant began the manufacture of cigarettes, offering them to the public in packages on the front side of each of which appeared the words “Alhambra Isabelas”.
Action is brought to enjoin the defendant from using the word “Isabelas”.
The exclusive right to use this name, plaintiff claim arises from two causes: First, the contraction of the phrase “La Flor de la Isabela” into the word “Isabela” by popular expression and use; and second, the use for more than twenty years of the word “Isabela”.
Judgment was for plaintiff and defendant appealed.
Whether defendant’s use of the word “Alhambra Isabela” is an infringement to the use of trade name.
The statute prohibits the registration of a trade name when the trade name represents the geographical place of production or origin of the products or goods to which the trade name refers, or when it is merely the name, quality or description of the merchandise with respect to which the trade name is to be used. In such cases, therefore, no trade name can exist.
The two claims of the plaintiff are identical; for, there could have been no contraction brought about by popular expression except after long lapse of time. The contraction of the phrase in to the word would create no rights, there being no registration, unless it resulted from long use.
The opinion of the plaintiff must fail. It shows that in not a single instance in the history of the plaintiff corporation, so far as is disclosed by the record, has a package of its cigarettes gone into the market, either at wholesale or retail with the word “Isabela” alone on the package as a separate or distinct word or name.
Even admitting that the word “Isabela” may have been appropriable by plaintiff as a trade name at the time it began to use it, the evidence showing that it had been exclusively appropriated by the plaintiff would have to be very strong to establish the fact of appropriation and the right to exclusive use. The law as it stands and has stood since the Royal Decree of 1888 prohibits the use of a geographical name as a trade name.
The principal case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process for manufacture of curved handles for canes, parasols, and umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question, and obtained against this defendant a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by this Court on appeal. The order was couched in the following terms:
“It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell”.
Thereafter the defendant continued to manufacture curved cane handles for walking sticks and umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol.
The trial court found the defendant “not guilty” of contempt as charged; and this court, on appeal, held that “The violation, if there has been any, was not of such a character that it could be made patent by the mere annunciation of the acts performed by the defendant, which are alleged to constitute the said violation. Consequently, the contempt with which the accused is charged has not been fully and satisfactorily proved, and the order appealed from should accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt.
Substantially, the same question is submitted in these new proceedings as that submitted in the former case.
Whether the use of a patented process by a third person, without license or authority therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part of the patented process a well-known mechanical equivalent.
Counsel for plaintiff invokes the doctrine of “mechanical equivalents” in support of his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded upon sound rules of reason and logic, and unless restrained or modified by law in particular jurisdiction, is of universal application, so that it matters not whether a patent be issued by one sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of a substitution of some part of his invention by some well-known mechanical equivalent.
The use of a process in all respects identical with a process protected by a valid patent, save only that a well-known mechanical equivalent is substituted in lieu of some particular part of the patented process is an infringement upon the rights of the owner of the patent, which will be enjoined in appropriate proceeding, and the use of such process, after the order enjoining its use has been issued, is a “contempt”, under the provision of section 172 of the Code of Civil Procedure.