Wednesday, May 17, 2006

Intellectual Property Law

Samson vs Daway
(GR No 160054-55, July 21, 2004)

The petitioner allegedly sold or offers the sale of garment product using the trademark “Caterpillar” to the prejudice of its previous user, private respondent in this case. The respondent filed the case to the RTC. The petitioner contended that the case should be filed with the MTC because violation of unfair competition is penalized with an imprisonment not exceeding 6 years under RA 7691.

Where do you file a suit for unfair competition?

The SC held that under Sec 163 of the IPC, actions for unfair competition shall be brought before the proper courts with appropriate jurisdiction under existing laws. The law contemplated in Sec 163 of IPC is the Trademark Law. Sec 27 of Trademark Law states that action for unfair competition shall be filed with the CFI (now RTC). Since RA 7691 is a general law and IPC in relation to Trademark law is a special law, the latter shall prevail. Actions for unfair competition therefore should be filed with the RTC.

Mighty Corporation vs ENJ Gallo Winers
(GR No 154342, July 14, 2004, Corona)

Respondent manufacture wines and uses the trademark “Gallo” for its product. On the other hand, the petitioner is a manufacturer of cigarette and also uses “Gallo” in its products.

Is there infringement?

At the time the cause of action accrued in this case, the IPC was not yet enacted so the relevant laws used were the Trademark Law and the Paris Convention.
The SC held that there was no infringement. The use of the respondent of the mark “Gallo” for its wine products was exclusive in nature. The court mentioned two types of confusion in Trademark Infringement:

Confusion of Goods – when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case defendant’s goods are then brought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation.
Confusion of Business – wherein the goods of the parties are different but the defendant’s product can reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection between the plaintiff and defendant which, in fact, does not exist.

In determining the likelihood of confusion, the Court must consider:
(a) the resemblance between the trademarks;
(b) the similarity of the goods to which the trademark is attached;
(c) the likely effect on the purchaser; and
(d) the registrant’s express or implied consent and other fair and equitable considerations.

In this case, the SC employing the dominancy test, concluded that there is no likelihood of confusion. They materially differ in color scheme, art works and markings. Further, the two goods are not closely related because he products belong to different classifications, form, composition and they have different intended markets or consumers.

Mc Donalds Corp vs LC Big Mak Burger Inc.
(GR No 143993, Aug 18, 2004)

The SC held that the respondent is liable for infringement because it violated Sec 155.1 of the IPC which stated that any person who shall, without the consent of the owner of the registered mark use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

1) Dominancy Test – consists in seeking out the main, essential or dominant features of a mark.
2) Holistic Test – takes stock of the other features of a mark, taking into consideration the entirety of the marks.

1) Cause of action: in infringement, the cause of action is the unauthorized use of a registered trademark; in unfair competition, it is the passing off of one’s goods as those of another merchant.
2) Fraudulent intent is not necessary in infringement, but necessary in UC.
3) Registration of trademarks: in infringement, it is a pre-requisite; in UC, it is not required.
4) Class of goods involved: in infringement, the goods must be of similar class; in UC, the goods need not be of the same class.

v infringement is a form of unfair competition

a) Sue for damages (Sec. 156.1);
b) Have the infringing goods impounded (Sec. 156.2);
c) Ask for double damages (Sec. 156.3)
d) Ask for injunction (156.4)
e) Have the infringing goods disposed of outside the channels of commerce (Sec. 157.1)
f) Have the infringing goods destroyed (Sec. 157.1)
g) File criminal action (Sec. 170);
h) Administrative Sanctions

Smithklein Beckman vs CA
(Aug 14, 2003)

Petitioner in this case filed an application for a patent of a drug used to kill parasites in animals. Tyco Pharma opposed the application for patent contending that the product of the petitioner proposed to be patented is substantially the same as their product. The only difference is the use of one ingredient. Tyco then contended that there is infringement of patent due to violation of doctrine of equivalents.

Is there infringement?

The SC in defining the “Doctrine of Equivalents” stated that infringement also takes place when a particular devise appropriates a prior invention by incorporating its innovative concept and although with some modification and changes performs substantially the same function in substantially the same way to achieve substantially the same result.

The SC held that this doctrine does not apply in the instant case because Tyco Pharma failed to substantiate its claim that the two products works the same way in fighting parasites in animals. Therefore, there was no infringement.

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