CASE DIGEST: Philippine Nut Industry vs. Standards Brands

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.

CASE DIGEST: Joaquin vs. Drilon

FRANCISCO G. JOAQUIN, JR. and BJ PRODUCTIONS, INC. vs. HONORABLE RANKLIN M. DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY FRANCISCO

FACTS:

            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.

ISSUE:

            Whether the format or mechanics or petitioner’s television show is entitled to copyright protection.

HELD:

            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.

CASE DIGEST: Habana vs. Robles

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.

CASE DIGEST: La Yebana vs. Alhambra Cigar

LA YEBANA COMPANY, INC. vs. ALHAMBRA CIGAR and CIGARETTE MANUFACTURING CO., ET AL. 

G.R. No. 34497, September 12, 1931

FACTS:

            On October 6, 1904, a label forming the wrapper for cigarette packages and containing the words "Alhambra 25 Chorritos" was registered with the Government by the Alhambra Fabrica de Tabacos, Cigarrillos y Picadura of Manila, P.I. On February 23, 1922, another label forming the wrapper for cigarette packages and containing the words "20 Chorritos de Gamu" was registered by Enrique Ga. Caruana. On March 3, 1925, La Yebana Company, Inc., secured the registration of a trade-mark as La Yebana Chorritos. On August 21, 1928, the Alhambra Cigar and Cigarette Mfg. Company, the successor of the Alhambra Fabrica de Tabacos, Cigarrillos y Picadura, presented to the Bureau of Commerce and Industry an application to register a trade-mark consisting of the words "Alhambra Chorritos" with a design for cigarettes. La Yebana Company filed an opposition to this application. Thereupon, the chief of the Bureau of Commerce and Industry decided to accept the application of the Alhambra Cigar and Cigarette Mfg. Company and to overrule the opposition thereto.

ISSUE:

            Is there any infringement of the right of La Yebana when the Bureau of Commerce and Industry granted the registration made by Alhambra when it registered a trade-mark having the word Chorritos in it?

HELD:

            The registration of the trade-mark of the appellee does not constitute an infringement of appellant's trade-mark. The word "Chorritos" has come to be a local name given to a special kind of cigarettes the tobacco of which is rolled in sweetened black paper.

CASE DIGEST: Emerald Garment vs. CA

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

G.R. No. 100098, December 29, 1995

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 the Philippines 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.

CASE DIGEST: Canon vs. CA

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.

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CASE DIGEST: Asia Brewery vs. CA

ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION

G.R. 103543 July 5, 1993 

Facts: 

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI then filed a petition for certiorari.

Issue:

Are the words PALE PILSEN as part of ABI’s trademark constitute infringement of SMC’s trademark?

Ruling:

No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of ABI’s trademark, are generic words descriptive of the color (“pale“), of a type of beer (“pilsen”), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen, Czechislovakia and became famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark. No one may appropriate generic or descriptive words. They belong to the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE PILSEN product.

CASE DIGEST: Ana Ang vs. Toribio Teodoro

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G.R. No. L-48226

December 14, 1942

Facts:

Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. On September 29, 1915, he formally registered it as trade-mark and as trade-name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937.

The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds that the two trademarks are dissimilar and are used on different and non-competing goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and perpetually enjoining the latter from using said trade-mark on goods manufactured and sold by her.

Thus, this case, a petition for certiorari.

Issue:

Are the goods or articles or which the two trademarks are used similar or belong to the same class of merchandise? 

Ruling:

Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to the same class of merchandise as shoes and slippers. They are closely related goods.

The Supreme Court affirmed the judgment of the Court of Appeals and added that “although two non-competing articles may be classified under to different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trademarks would be likely to cause confusion as to the origin, or personal source, of the second user’s goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think that the first user made the second user’s goods”. 

CASE DIGEST: Aguas vs. De Leon

111 SCRA 238 (1982)

FACTS:

            This is a petition for certiorari to review the decision of the Court of Appeals.

            On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of patent against petitioner Domiciano Aguas and F.H. Aquino and Sons alleging among others that being the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles, and thereafter lawfully acquired from the Philippine Patent Office, Patent No. 658, the latter infringed the same by making, using and selling tiles embodying said patent invention. A writ of Preliminary Injuction was subsequently issued.

            Petitioner Aguas, in his answer, denied the allegations and instead averred inter alia that respondent De Leon is neither the original first nor sole inventor of the improvements in the process of making mosaic pre-cast tiles, the same having been used by several tile-making factories both here and abroad years before the alleged invention by De Leon; hence, it is not patentable.

            The trial court and the Court of Appeals, upon appeal rendered judgment in favor of respondent de Leon. Thus, this petition.

ISSUE:

            Whether or not the alleged invention or discovery of respondent is patentable.

HELD:

            Yea. x x x It should be noted that the private respondent does not claim to be the discoverer or inventor of the old process of tile-making. He only claims to have introduced an improvement of said process. In fact, Letters Patent No. 658 was issued by the Philippine Patent Office to the private respondent Conrado G. De Leon, to protect his rights as the inventor of “ an alleged new and useful improvement in the process of making pre-cast tiles.” Indeed, section 7, Republic Act No. 165, as amended provides: “ Any invention of a new and useful machine, manufactured product or substance, process, or an improvement of the foregoing, shall be patentable.”

CASE DIGEST: Parke Davis vs. Doctors Pharmaceuticals

PARKE DAVIS and COMPANY vs. DOCTORS' PHARMACEUTICALS, INC., ET AL. 

G.R. No. L-22221, August 31, 1965

FACTS:

Parke Davies and Company is an owner of a Patent entitled "Process for the Manufacturing of Antibiotics" (Letters Patent No. 50) which was issued by the Philippine Patent Office on February 9, 1950. The patent relates to a chemical compound represented by a formula commonly called chloramphenicol. The patent contains ten claims, nine of which are process claims, and the other is a product claim to the chemical substance chloramphenicol.

Doctors’ Pharmaceuticals Inc. requested that it be granted a voluntary license to manufacture and produce our own brand of medicine, containing chloramphenicol, and to use, sell, distribute, or otherwise dispose of the same in the Philippines under such terms and conditions as may be deemed reasonable and mutually satisfactory, which Parke Davies declined.

Doctors’ Pharmaceuticals Inc. filed a petition with the Director of Patents requesting the Director to grant a compulsory license. After careful evaluation and hearings, the Director granted the request of Doctors’ Pharmaceuticals.

ISSUE:

Is the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license to use the substance chloramphenicol, valid?

HELD:

Yes the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license to use the substance chloramphenicol is valid. The Supreme Court says that patents issued to foods and medicines are not exclusive so as not to prevent the building up of patent monopolies. Public benefit is foremost. The Court dismissed the contention of Parke Davies that the Director of Patents erred in granting compulsory license. The decision appealed from is affirmed, with costs against petitioner.

‘The Buzz’ staff charged for copyright infringement

By Julie M. Aurelio
Philippine Daily Inquirer
First Posted 00:48:00 03/16/2011
Filed Under: Television, Entertainment (general), Patents and Copyright and Trademarks, Conflicts (general)

MANILA, Philippines—The Quezon City prosecutors’ office has charged eight staff members of an ABS-CBN showbiz talk show for allegedly violating copyright laws after using footage of a GMA 7 soap opera without the network’s consent.

In a resolution dated 2008 but released only early this month, eight production staff of showbiz talk show “The Buzz” were charged in court for violating the Republic Act 8293 or the Intellectual Property Code.

Named in the indictment were Nancy Yabut, executive producer; Gia Nina Suyao, production manager; Jonathan Diaz, director; and Roxy Liquigan, supervising producer and creative consultant.

Assistant City Prosecutor Vesta Victoria Villamor indicted the ABS-CBN employees on charges of violation of Section 177 and 211 of the Intellectual Property Code.

Also charged were Lani Gutierrez, associate producer for technical matters; Jenny Ingalia, associate producer; Romer Gonzales, head writer and Roldeo Endrinal, reportedly of the show's executive management.

Villamor said in her six-page resolution that she found probable cause to charge them in court as there was no merit to their defense of ignorance.

She, however, dismissed the case against ABS-CBN executives Eugenio Lopez III, Luis Alejandro, Ma. Rosario Santos-Concio and Ma. Socorro Vidanes for insufficiency of evidence.

Villamor, in indicting the eight staff members of “The Buzz,” noted that each episode was a product of their meeting and brainstorming, and that there was no merit to their defense of ignorance.

“Human experience and logic would dictate that these respondents who are experienced employees in the field of broadcasting knew beforehand that a news item about Jopay Paguia would be tackled in their program. This fact should have put them on guard instead of making it appear that they were ignorant of the intended airing of the footage of “Daisy Siete” without the consent and authority of FOCUS or GMA.”

Ms. Paguia is a mainstay of GMA-7 afternoon program, “Daisy Siete.”

The assistant prosecutor recommended a bail of P6,000 each for the respondents’ provisional liberty.

The case has then been raffled to Regional Trial Court Branch 90.

The case stemmed from a complaint filed by GMA Network Inc through its counsel Dick Perez, and Focus Entertainment, Inc., which produced the soap opera “Daisy Siete.”

The two entities claimed that the unauthorized airing of footages from “Daisy Siete” happened during the Feb. 13, 2005 broadcast of “The Buzz.”

In their complaint, GMA 7 and Focus alleged that the portion included in “The Buzz’s” opening billboard or OBB was the scene of Jopay Paguia walking beside and mounting a jeepney while holding a yellow flower with the text “Jopay Paguia” at the bottom of the screen.

The afternoon soap opera features the Sexbomb dancers, of which Paguia is a member.

The rival of ABS-CBN, GMA 7 claimed that the respondents allegedly used the footage after rumors circulated that Paguia was quitting the group.

In their defense, the respondents maintained they didn’t violate any copyright laws as the airing of the footage was just for a few seconds and was intended as part of a report on current events.

They added that under the Intellectual Property Code’s Article 185, the reproduction of a material has been allowed under the “Fair Use” principle.