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Case Title: BIRKENSTOCK v. PHILIPPINE SHOE EXPO

Petitioners Claim: The mark Birkenstock should be allowed to be registeredunder them being the lawful and rightful owner.

Respondents Claim: the said mark belongs to them being the first to register suchmark in the Philippines.

Issue/s: Whether the subject marks should be allowed registration in the name of

petitioner.

Ruling:Yes. The registration of a trademark, by itself, is not a mode of acquiring

ownership. If the applicant is not the owner of the trademark, he has no right toapply for its registration. Registration merely creates a prima facie presumption of

the validity of the registration, of the registrants ownership of the trademark, andof the exclusive right to the use thereof. Such presumption, just like the

presumptive regularity in the performance of official functions, is rebuttable andmust give way to evidence to the contrary.

Case Title: CENTURY CHINESE MEDICINE v. PEOPLE

Petitioners Claim: Respondent is not the owner of the mark and a pending case

involving the same mark exists between respondent and another party hence aquashal of the warrant and seizure order is proper.

Respondents Claim: Petitioner is guilty of unfair competition and infringement

by selling counterfeited products bearing the same marks of "TOP-GEL", "T.G."& "DEVICE OF A LEAF".

Issue/s: Whether the CA erred in reversing the RTC's quashal of the assailedsearch warrants.

Ruling:No. A.M. No. 02-1-06-SC, which provides for the Rules on the Issuance

of the Search and Seizure in Civil Actions for Infringement of Intellectual PropertyRights, is not applicable in this case as the search warrants were not applied basedthereon, but in anticipation of criminal actions for violation of intellectual propertyrights under RA 8293.

https://www.dropbox.com/sh/n4funcu8oko9ib9/AACUorZecMbTGxOPZ38m7oQwa/Birkenstock%20v%20Phil%20Shoe%20Expo.pdf?dl=0

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Case Title: DIAZ v. PEOPLE

Petitioners Claim: He did not manufacture Levis jeans, and that he used the

label "LS Jeans Tailoring" in the jeans that he made and sold and that the label "LS

Jeans Tailoring" was registered with the IPO.

Respondents Claim: Petitioner infringed on its LEVIS 501 trademark byselling fake imitation on its shops.

Issue/s: Whether there was an infringement of respondents trademark.

Ruling:No. It is the tendency of the allegedly infringing mark to be confused withthe registered trademark that is the gravamen of the offense of infringement of a

registered trademark. The acquittal of the accused should follow if the allegedly

infringing mark is not likely to cause confusion. Thereby, the evidence of the Statedoes not satisfy the quantum of proof beyond reasonable doubt.

Case Title: ECOLE DE CUISINE MANILLE v. COINTREAU

Petitioners Claim: Respondents application for trademark registration of "LECORDON BLEU & DEVICE" would create confusion, mistake, and deception to

the buying public with its registered mark "LE CORDON BLEU, ECOLE DE

CUISINE MANILLE."

Respondents Claim: It is the true and lawful owner of the mark "LE CORDON

BLEU & DEVICE" and thus, is entitled to register the same under its name.

Issue/s: Whether the CA was correct in upholding the IPO Director Generals

ruling that Cointreau is the true and lawful owner of the subject mark and thus,

entitled to have the same registered under its name.

Ruling: Yes. As correctly mentioned by the CA, under R.A. No. 166, one may be

an owner of a mark due to its actual use but may not yet have the right to registersuch ownership here due to the owners failure to use the same in the Philippines

for two (2) months prior to registration. Nevertheless, foreign marks which are notregistered are still accorded protection against infringement and/or unfair

competition. At this point, it is worthy to emphasize that the Philippines andFrance, Cointreaus country of origin, are both signatories to the Paris Conventionfor the Protection of Industrial Property.

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Case Title: REPUBLIC GAS v. PETRON

Petitioners Claim: There is no infringement in the refilling of the cylinders

brought to its plant by its customers.

Respondents Claim: Petitioner violated Sections 155 and 168 of Republic Act(RA) No. 8293 for illegally refilling its branded LPG cylinders.

Issue/s: Whether probable cause exists to hold petitioners liable for the crimes of

trademark infringement and unfair competition.

Ruling: Yes. The Court in a very similar case, made it categorically clear that the

mere unauthorized use of a container bearing a registered trademark in connection

with the sale, distribution or advertising of goods or services which is likely tocause confusion, mistake or deception among the buyers or consumers can beconsidered as trademark infringement.

Case Title: SONIC STEEL v. CHUA

Petitioners Claim: Respondent misled the Court and DOJ in issuing the warrant

by stating that STEELCORP is the exclusive licensee of Philippine Patent No.

16269, which in fact already lapsed.

Respondents Claim: He merely reserved the right to present the trademark

license exclusively licensed to STEELCORP by BIEC International, Inc. which iscomposed of the technical information and the patent used to produce

GALVALUME metal sheet products, the same technology being utilized by

complainant without authority from STEELCORP.

Issue/s: Whether respondent should be suspended for dishonesty.

Ruling: Yes. It is clear that respondent violated his duties as a lawyer to avoiddishonest and deceitful conduct, (Rule 1.01, Canon 1) and to act with candor,

fairness and good faith (Rule 10.01, Canon 10). Also, respondent desecrated thesolemn oath he took before this Court when he sought admission to the bar, i.e.,

not to do any falsehood nor consent to the doing of any in Court. Thus, even at therisk of jeopardizing the probability of prevailing on STEELCORPs application for

a search warrant, respondent should have informed the court of the patents

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expiration so as to allow the latter to make an informed decision given all availableand pertinent facts.

Case Title: UYCO v. LO

Petitioners Claim: The marks "Made in Portugal" and "Original Portugal" are

merely descriptive and refer to the source of the design and the history of

manufacture.

Respondents Claim: Petitioner violated Section 169.1, in relation to Section 170,

of RA 8293 for false designation of origin.

Issue/s: Whether petitioner is guilty of false designation.

Ruling: Yes. Thus, the evidence shows that petitioners, who are officers of

Wintrade, placed the words "Made in Portugal" and "Original Portugal" with thedisputed marks knowing fully wellbecause of their previous dealings with the

Portuguese companythat these were the marks used in the products of CasaHipolito S.A. Portugal. More importantly, the products that Wintrade sold were

admittedly produced in the Philippines, with no authority from Casa Hipolito S.A.Portugal. The law on trademarks and trade names precisely precludes a person

from profiting from the business reputation built by another and from deceiving the

public as to the origins of products.