CASE DIGEST: Vargas vs. FM Yaptico

ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.)

G.R. No. 14101, September 24, 1919

Facts:

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.

Issues:

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.

Ruling:

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.

CASE DIGEST: Kenneth Roy Savege vs. Taypin

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.

CASE DIGEST: Samson vs. Tarroza

28 SCRA 792 (1969)

FACTS:

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.

ISSUE:

Whether or not respondent’s Utility Model Patent deserves cancellation.

HELD:

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.”

CASE DIGEST: Frank vs. Benito

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.”

CASE DIGEST: East Pacific vs. Director of Patents

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".

CASE DIGEST: CARLOS GSELL vs. VALERIANO VELOSO YAP-JUE

FACTS:

            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.

ISSUE:

            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.

HELD:

            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.

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.