1. Mejoff vs.

Director of Prisons

FACTS:

Petitioner: Boris Mejoff, a Russian national brought to the Philippines as a secret operative by the
Japanese during the Japanese Occupation
Yet another petition for habeas corpus (i.e. this was not the first case filed by Mejoff)
First petition denied by SC on July 30, 1949
[Now that were done with that, lets go back to the story]
Upon the liberation of the Philippines, Mejoff was arrested as a spy by the US Army Counter-Intelligence
Corps
The Peoples Court ordered Mejoffs release, but the Deportation Board then found out that he had no
travel documents and referred the matter to the immigration authorities
The Immigration Board declared Mejoff an illegal alien, having illegally entered the Philippines in 1944,
without inspection or admission by immigration officials, and ordered that he be deported to Russia come
the first available transport
Mejoff was then under custody, having been arrested on March 18, 1948
Repeated failures to ship Mejoff to Russia
Mejoff was moved to Bilibid where he has been confined for give or take two years; no ship or country
would take him, says the decision

ISSUE:

WON Mejoff should be released from prison pending his deportation

The protection against deprivation of liberty without due process of law, and except for crimes committed
against the laws of the land, is not limited to Philippine citizens but extends to all residents, except enemy
aliens, regardless of nationality
Sec. 3, Art. II of the 1935 Constitution adopts the generally accepted principles of international law as
part of the law of the Nation, which means that the incorporation doctrine holds sway here
The Universal Declaration Of Human Rights proclaims the right to life and liberty and all other
fundamental rights as applied to all human beings, stating that all human beings are born free and
equal in degree and rights (Art. 1); that everyone is entitled to all the rights and freedom set forth in
this Declaration, without distinction of any kind, such as race, color, sex, language, religion, political or
other opinion, nationality or social origin, property, birth, or other status (Art. 2); that every one has
the right to an effective remedy by the competent national tribunals for acts violating the fundamental
rights granted him by the Constitution or by law (Art. 8); that no one shall be subjected to arbitrary
arrest, detention or exile (Art. 9 ), etc.
The writ of habeas corpus will issue commanding the respondents to release the petitioner from custody
upon these terms: that the petitioner shall be placed under reasonable surveillance c/o the immigration

RULING:

authorities or their agents in such form and manner as may be deemed adequate to insure that he keep
peace and be available when the Government is ready to deport him

2. Kuroda vs. Jalandoni

Kuroda vs. Jalandoni

G.R. L-2662, March 26, 1949
Ponente: Moran, C.J.
Facts:
1. Petitioner Sheginori Kuroda was the former Lt. General of the Japanese Army and commanding
general of the Japanese forces during the occupation (WWII) in the country. He was tried before
the Philippine Military Commission for War Crimes and other atrocities committed against military
and civilians. The military commission was establish under Executive Order 68.
2. Petitioner assails the validity of EO 68 arguing it is unconstitutional and hence the military
commission did not have the jurisdiction to try him on the following grounds:
- that the Philippines is not a signatory to the Hague Convention (War Crimes)
3. Petitioner likewise assails that the US is not a party of interest in the case hence the 2 US
prosecutors cannot practice law in the Philippines.
Issue: Whether or not EO 68 is constitutional thus the military tribunal jurisdiction is valid
HELD:
1. EO 68 is constitutional hence the tribunal has jurisdiction to try Kuroda. EO 68 was enacted by
the President and was in accordance with Sec. 3, Art. 2 of Constitution which renounces war as an
instrument of national policy. Hence it is in accordance with generally accepted principles of
international law including the Hague Convention and Geneva Convention, and other international
jurisprudence established by the UN, including the principle that all persons (military or civilian)
guilty of plan, preparing, waging a war of aggression and other offenses in violation of laws and
customs of war. The Philippines may not be a signatory to the 2 conventions at that time but the
rules and regulations of both are wholly based on the generally accepted principles of international
law. They were accepted even by the 2 belligerent nations (US and Japan)
2. As to the participation of the 2 US prosecutors in the case, the US is a party of interest because
its country and people have greatly aggrieved by the crimes which petitioner was being charged of.
3. Moreover, the Phil. Military Commission is a special military tribunal and rules as to parties and
representation are not governed by the rules of court but the provision of this special law.

3. Agustin vs. Edu

Agustin v Edu (1979) 88 SCRA 195

Facts:
Leovillo Agustin, the owner of a Beetle, challenged the constitutionality of Letter
of Instruction 229 and its implementing order No. 1 issued by LTO Commissioner Romeo
Edu. His car already had warning lights and did not want to use this.
The letter was promulgation for the requirement of an early warning device installed on a vehicle
to reduce accidents between moving vehicles and parked cars.
The LTO was the issuer of the device at the rate of not more than 15% of the acquisition cost.
The triangular reflector plates were set when the car parked on any street or highway for 30
minutes. It was mandatory.
Petitioner: 1. LOI violated the provisions and delegation of police power, equal protection, and
due process/
2. It was oppressive because the make manufacturers and car dealers millionaires at the
expense f car owners at 56-72 pesos per set.
Hence the petition.
The OSG denied the allegations in par X and XI of the petition with regard to the
unconstitutionality and undue delegation of police power to such acts.
The Philippines was also a member of the 1968 Vienna convention of UN on road signs as a
regulation. To the petitioner, this was still an unlawful delegation of police power.

Issue:
Is the LOI constitutional? If it is, is it a valid delegation of police power?

Held: Yes on both. Petition dismissed.

Ratio:
Police power, according to the case of Edu v Ericta, which cited J. Taney, is nothing more or less
than the power of government inherent in every sovereignty.
The case also says that police power is state authority to enact legislation that may interfere with
personal liberty or property to promote the general welfare.
Primicias v Fulgoso- It is the power to describe regulations to promote the health, morals, peace,
education, good order, and general welfare of the people.

J. Carazo- government limitations to protect constitutional rights did not also intend to enable a
citizen to obstruct unreasonable the enactment of measures calculated to
insure communal peace.
There was no factual foundation on petitioner to refute validity.
Ermita Malate Hotel-The presumption of constitutionality must prevail in the absence of factual
record in over throwing the statute.
Brandeis- constitutionality must prevail in the absence of some factual foundation in overthrowing
the statute.
Even if the car had blinking lights, he must still buy reflectors. His claims that the statute was
oppressive was fantastic because the reflectors were not expensive.
SC- blinking lights may lead to confusion whether the nature and purpose of the driver is
concerned.
Unlike the triangular reflectors, whose nature is evident because its installed when parked for 30
minutes and placed from 400 meters from the car allowing drivers to see clearly.
There was no constitutional basis for petitioner because the law doesnt violate any constitutional
provision.
LOI 229 doesnt force motor vehicle owners to purchase the reflector from the LTO. It only
prescribes rge requirementfrom any source.
The objective is public safety.
The Vienna convention on road rights and PD 207 both recommended enforcement
for installation of ewds. Bother possess relevance in applying rules with the decvlaration of
principles in the Constitution.
On the unlawful delegation of legislative power, the petitioners have no settled legal doctrines.

4. JBL Reyes vs. Bagatsing

REYES VS. BAGATSING

J.B.L. REYES VS. BAGATSING
125 SCRA 553
Facts:
Justice JBL Reyes filed a petition on behalf of the Anti-Bases Coalition to compel the
issuance of a permit for a rally to be held at the Luneta and a subsequent march to the
U.S. Embassy on Roxas Boulevard. The petition was filed the day before the scheduled
assembly as no action had apparently been taken on the application, although it turned
out later that it had been rejected in a letter sent earlier by ordinary mail. The reasons
for the denial was the mayors fear that the assemblage might be infiltrated by
subversive elements to the prejudice of the public order, and thus the intended rally

would violate a city ordinance implementing the provisions of the Diplomatic Convention
requiring the receiving state to afford adequate protection to foreign embassies; hence
his suggestion that the rally be held at an enclosed place like Rizal Coliseum for better
security.
Issue: Whether the denial of the issuance and modification of the permit is meritorious
and is guaranteed under Article II, Section 3 of the Constitution.
Held:
The court set aside the denial or the modification of the permit sought and order the
respondent official to grant it. The choice of Luneta and U.S. Embassy for a public rally
cannot legally objected to in the absence of clear and present danger to life or property
of the embassy. The Philippines, being a signatory of Vienna Conventions which calls for
the protection of the premises of a diplomatic mission, adopts the generally accepted
principles of international law as part of the law of the land as cited in Article II, Section
3 of the Constitution.

5. Philip Morris vs. CA

G.R. No. 91332 July 16, 1993

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC
REUNIES, S.A.,petitioners
vs.
THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents.
Quasha, Asperilla, Ancheta, Pea & Nolasco Law Office for petitioners.
Teresita Gandionco-Oledan for private respondent.

MELO, J.:
In the petition before us, petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and
Fabriques of Tabac Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon
magistrates by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of
Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco
Corporation, herein private respondent, from manufacturing and selling "MARK" cigarettes in the
local market.
Banking on the thesis that petitioners' respective symbols "MARK VII", "MARK TEN", and
"LARK", also for cigarettes, must be protected against unauthorized appropriation, petitioners
twice solicited the ancillary writ in the course the main suit for infringement but the court of origin
was unpersuaded.
Before we proceed to the generative facts of the case at bar, it must be emphasized that
resolution of the issue on the propriety of lifting the writ of preliminary injunction should not be

construed as a prejudgment of the suit below. Aware of the fact that the discussion we are about
to enter into involves a mere interlocutory order, a discourse on the aspect infringement must
thus be avoided. With these caveat, we shall now shift our attention to the events which spawned
the controversy.
As averred in the initial pleading, Philip Morris, Incorporated is a corporation organized under the
laws of the State of Virginia, United States of America, and does business at 100 Park Avenue,
New York, New York, United States of America. The two other plaintiff foreign corporations,
which are wholly-owned subsidiaries of Philip Morris, Inc., are similarly not doing business in the
Philippines but are suing on an isolated transaction. As registered owners "MARK VII", "MARK
TEN", and "LARK" per certificates of registration issued by the Philippine Patent Office on April
26, 1973, May 28, 1964, and March 25, 1964, plaintiffs-petitioners asserted that defendant
Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the
allegedly identical or confusingly similar trademark "MARK" in contravention of Section 22 of the
Trademark Law, and should, therefore, be precluded during the pendency of the case from
performing the acts complained of via a preliminary injunction (p. 75, Court of Appeals Rollo in
AC-G.R. SP No. 13132).
For its part, Fortune Tobacco Corporation admitted petitioners' certificates of registration with the
Philippine Patent Office subject to the affirmative and special defense on misjoinder of party
plaintiffs. Private respondent alleged further that it has been authorized by the Bureau of Internal
Revenue to manufacture and sell cigarettes bearing the trademark "MARK", and that "MARK" is
a common word which cannot be exclusively appropriated (p.158, Court of Appeals Rollo in A.C.G.R. SP No. 13132). On March 28, 1983, petitioners' prayer for preliminary injunction was denied
by the Presiding Judge of Branch 166 of the Regional Trial Court of the National Capital Judicial
Region stationed at Pasig, premised upon the following propositions:
Plaintiffs admit in paragraph 2 of the complaint that ". . . they are
not doing business in the Philippines and are suing on an isolated transaction . .
.". This simply means that they are not engaged in the sale, manufacture,
importation, expor[t]ation and advertisement of their cigarette products in the
Philippines. With this admission, defendant asks: ". . . how could defendant's
"MARK" cigarettes cause the former "irreparable damage" within the territorial
limits of the Philippines?" Plaintiffs maintain that since their trademarks are
entitled to protection by treaty obligation under Article 2 of the Paris Convention
of which the Philippines is a member and ratified by Resolution No. 69 of the
Senate of the Philippines and as such, have the force and effect of law under
Section 12, Article XVII of our Constitution and since this is an action for a
violation or infringement of a trademark or trade name by defendant, such mere
allegation is sufficient even in the absence of proof to support it. To the mind of
the Court, precisely, this is the issue in the main case to determine whether or not
there has been an invasion of plaintiffs' right of property to such trademark or
trade name. This claim of plaintiffs is disputed by defendant in paragraphs 6 and
7 of the Answer; hence, this cannot be made a basis for the issuance of a writ of
preliminary injunction.
There is no dispute that the First Plaintiff is the registered owner of trademar[k]
"MARK VII" with Certificate of Registration No. 18723, dated April 26,1973 while
the Second Plaintiff is likewise the registered owner of trademark "MARK TEN"
under Certificate of Registration No. 11147, dated May 28, 1963 and the Third
Plaintiff is a registrant of trademark "LARK" as shown by Certificate of
Registration No. 10953 dated March 23, 1964, in addition to a pending
application for registration of trademark "MARK VII" filed on November 21, 1980
under Application Serial No. 43243, all in the Philippine Patent Office. In same
the manner, defendant has a pending application for registration of the trademark
"LARK" cigarettes with the Philippine Patent Office under Application Serial No.
44008. Defendant contends that since plaintiffs are "not doing business in the

Philippines" coupled the fact that the Director of Patents has not denied their
pending application for registration of its trademark "MARK", the grant of a writ of
preliminary injunction is premature. Plaintiffs contend that this act(s) of defendant
is but a subterfuge to give semblance of good faith intended to deceive the public
and patronizers into buying the products and create the impression that
defendant's goods are identical with or come from the same source as plaintiffs'
products or that the defendant is a licensee of plaintiffs when in truth and in fact
the former is not. But the fact remains that with its pending application, defendant
has embarked in the manufacturing, selling, distributing and advertising of
"MARK" cigarettes. The question of good faith or bad faith on the part of
defendant are matters which are evidentiary in character which have to be proven
during the hearing on the merits; hence, until and unless the Director of Patents
has denied defendant's application, the Court is of the opinion and so holds that
issuance a writ of preliminary injunction would not lie.
There is no question that defendant has been authorized by the Bureau of
Internal Revenue to manufacture cigarettes bearing the trademark "MARK"
(Letter of Ruben B. Ancheta, Acting Commissioner addressed to Fortune
Tobacco Corporation dated April 3, 1981, marked as Annex "A", defendant's
"OPPOSITION, etc." dated September 24, 1982). However, this authority is
qualified . . . that the said brands have been accepted and registered by the
Patent Office not later than six (6) months after you have been manufacturing the
cigarettes and placed the same in the market." However, this grant ". . . does not
give you protection against any person or entity whose rights may be prejudiced
by infringement or unfair competition in relation to your indicated
trademarks/brands". As aforestated, the registration of defendant's application is
still pending in the Philippine Patent Office.
It has been repeatedly held in this jurisdiction as well as in the United States that
the right or title of the applicant for injunction remedy must be clear and free from
doubt. Because of the disastrous and painful effects of an injunction, Courts
should be extremely careful, cautious and conscionable in the exercise of its
discretion consistent with justice, equity and fair play.
There is no power the exercise of which is more delicate which
requires greater caution, deliberation, and sound discretion, or
(which is) more dangerous in a doubtful case than the issuing of
an injunction; it is the strong arm of equity that never ought to be
extended unless to cases of great injury, where courts of law
cannot afford an adequate or commensurate remedy in damages.
The right must be clear, the injury impending or threatened, so as
to be averted only by the protecting preventive process of
injunction. (Bonaparte v. Camden, etc. N. Co., 3 F. Cas. No. 1,
617, Baldw. 205, 217.)
Courts of equity constantly decline to lay down any rule which
injunction shall be granted or withheld. There is wisdom in this
course, for it is impossible to foresee all exigencies of society
which may require their aid to protect rights and restrain wrongs.
(Merced M. Go v. Freemont, 7 Gal. 317, 321; 68 Am. Dec. 262.)
It is the strong arm of the court; and to render its operation begin
and useful, it must be exercised with great discretion, and when
necessary requires it. (Attorney-General v. Utica Inc. Co., P. John
Ch. (N.Y.) 371.)

Having taken a panoramic view of the position[s] of both parties as viewed from
their pleadings, the picture reduced to its minimum size would be this: At the
crossroads are the two (2) contending parties, plaintiffs vigorously asserting the
rights granted by law, treaty and jurisprudence to restrain defendant in its
activities of manufacturing, selling, distributing and advertising its "MARK"
cigarettes and now comes defendant who countered and refused to be restrained
claiming that it has been authorized temporarily by the Bureau of Internal
Revenue under certain conditions to do so as aforestated coupled by its pending
application for registration of trademark "MARK" in the Philippine Patent Office.
This circumstance in itself has created a dispute between the parties which to the
mind of the Court does not warrant the issuance of a writ of preliminary
injunction.
It is well-settled principle that courts of equity will refuse an
application for the injunctive remedy where the principle of law on
which the right to preliminary injunction rests is disputed and will
admit of doubt, without a decision of the court of law establishing
such principle although satisfied as to what is a correct conclusion
of law upon the facts. The fact, however, that there is no such
dispute or conflict does not in itself constitute a justifiable ground
for the court to refuse an application for the injunctive relief.
(Hackensack Impr. Commn. v. New Jersey Midland P. Co., 22
N.J. Eg. 94.)
Hence, the status quo existing between the parties prior to the filing of this case
should be maintained. For after all, an injunction, without reference to the parties,
should be violent, vicious nor even vindictive. (pp. 338-341, Rollo in G.R. No.
91332.)
In the process of denying petitioners' subsequent motion for reconsideration of the order denying
issuance of the requested writ, the court of origin took cognizance of the certification executed on
January 30, 1984 by the Philippine Patent Office attesting to the fact that private respondent's
application for registration is still pending appropriate action. Apart from this communication,
what prompted the trial court judge to entertain the idea of prematurity and untimeliness of
petitioners' application for a writ of preliminary injunction was the letter from the Bureau of
Internal Revenue date February 2, 1984 which reads:
MRS. TERESITA GANDIONGCO OLEDAN
Legal Counsel
Fortune Tobacco Corporation
Madam:
In connection with your letter dated January 25, 1984, reiterating your query as to
whether your label approval automatically expires or becomes null and void after
six (6) months if the brand is not accepted and by the patent office, please be
informed that no provision in the Tax Code or revenue regulation that requires an
applicant to comply with the aforementioned condition order that his label
approved will remain valid and existing.
Based on the document you presented, it shows that registration of this particular
label still pending resolution by the Patent Office. These being so , you may
therefore continue with the production said brand of cigarette until this Office is
officially notified that the question of ownership of "MARK" brand is finally
resolved.

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(p. 348, Rollo.)
It appears from the testimony of Atty. Enrique Madarang, Chief of the Trademark Division of the
then Philippine Patent Office that Fortune's application for its trademark is still pending before
said office (p. 311, Rollo).
Petitioners thereafter cited supervening events which supposedly transpired since March 28,
1983, when the trial court first declined issuing a writ of preliminary injunction, that could alter the
results of the case in that Fortune's application had been rejected, nay, barred by the Philippine
Patent Office, and that the application had been forfeited by abandonment, but the trial court
nonetheless denied the second motion for issuance of the injunctive writ on April 22, 1987, thus:
For all the prolixity of their pleadings and testimonial evidence, the plaintiffsmovants have fallen far short of the legal requisites that would justify the grant of
the writ of preliminary injunction prayed for. For one, they did not even bother to
establish by competent evidence that the products supposedly affected adversely
by defendant's trademark now subject of an application for registration with the
Philippine Patents Office, are in actual use in the Philippines. For another, they
concentrated their fire on the alleged abandonment and forfeiture by defendant of
said application for registration.
The Court cannot help but take note of the fact that in their complaint plaintiffs
included a prayer for issuance preliminary injunction. The petition was duly heard,
and thereafter matter was assiduously discussed lengthily and resolved against
plaintiffs in a 15-page Order issued by the undersigned's predecessor on March
28, 1983. Plaintiffs' motion for reconsideration was denied in another well-argued
8 page Order issued on April 5, 1984,, and the matter was made to rest.

However, on the strength of supposed changes in the material facts of this case,
plaintiffs came up with the present motion citing therein the said changes which
are: that defendant's application had been rejected and barred by the Philippine
Patents Office, and that said application has been deemed abandoned and
forfeited. But defendant has refiled the same.
Plaintiffs' arguments in support of the present motion appear to be a mere rehash
of their stand in the first above-mentioned petition which has already been ruled
upon adversely against them. Granting that the alleged changes in the material
facts are sufficient grounds for a motion seeking a favorable grant of what has
already been denied, this motion just the same cannot prosper.
In the first place there is no proof whatsoever that any of plaintiffs' products which
they seek to protect from any adverse effect of the trademark applied for by
defendant, is in actual use and available for commercial purposes anywhere in
the Philippines. Secondly as shown by plaintiffs' own evidence furnished by no
less than the chief of Trademarks Division of the Philippine Patent Office, Atty.
Enrique Madarang, the abandonment of an application is of no moment, for the
same can always be refiled. He said there is no specific provision in the rules
prohibiting such refiling (TSN, November 21, 1986, pp. 60 & 64, Raviera). In fact,
according to Madarang, the refiled application of defendant is now pending
before the Patents Office. Hence, it appears that the motion has no leg to stand
on. (pp. 350-351, Rollo in G. R. No. 91332.)
Confronted with this rebuff, petitioners filed a previous petition for certiorari before the Court,
docketed as G.R. No. 78141, but the petition was referred to the Court of Appeals.
The Court of Appeals initially issued a resolution which set aside the court of origin's order dated
April 22, 1987, and granted the issuance of a writ of preliminary injunction enjoining Fortune, its
agents, employees, and representatives, from manufacturing, selling, and advertising "MARK"
cigarettes. The late Justice Cacdac, speaking for the First Division of the Court of Appeals in CAG.R. SP No. 13132, remarked:
There is no dispute that petitioners are the registered owners of the trademarks
for cigarettes "MARK VII", "MARK TEN", and "LARK".(Annexes B, C and D,
petition). As found and reiterated by the Philippine Patent Office in two (2) official
communications dated April 6, 1983 and January 24, 1984, the trademark
"MARK" is "confusingly similar" to the trademarks of petitioners, hence
registration was barred under Sec. 4 (d) of Rep. Act. No. 166, as amended (pp.
106, 139, SCA rollo). In a third official communication dated April 8, 1986, the
trademark application of private respondent for the "MARK" under Serial No.
44008 filed on February 13, 1981 which was declared abandoned as of February
16, 1986, is now deemed forfeited, there being no revival made pursuant to Rule
98 of the Revised Rules of Practitioners in Trademark Cases." (p. 107, CA rollo).
The foregoing documents or communications mentioned by petitioners as "the
changes in material facts which occurred after March 28, 1983", are not also
questioned by respondents.
Pitted against the petitioners' documentary evidence, respondents pointed to (1)
the letter dated January 30, 1979 (p. 137, CA rollo) of Conrado P. Diaz, then
Acting Commissioner of Internal Revenue, temporarily granting the request of
private respondent for a permit to manufacture two (2) new brands of cigarettes
one of which is brand "MARK" filter-type blend, and (2) the certification dated
September 26, 1986 of Cesar G. Sandico, Director of Patents (p. 138, CA rollo)
issued upon the written request of private respondents' counsel dated September
17, 1986 attesting that the records of his office would show that the "trademark

MARK" for cigarettes is now the subject of a pending application under Serial No.
59872 filed on September 16, 1986.
Private respondent's documentary evidence provides the reasons neutralizing or
weakening their probative values. The penultimate paragraph of Commissioner
Diaz' letter of authority reads:
Please be informed further that the authority herein granted does
not give you protection against any person or entity whose rights
may be prejudiced by infringement or unfair competition in relation
to your above-named brands/trademark.
while Director Sandico's certification contained similar conditions as follows:
This Certification, however, does not give protection as against
any person or entity whose right may be prejudiced by
infringement or unfair competition in relation to the aforesaid
trademark nor the right to register if contrary to the provisions of
the Trademark Law, Rep. Act No. 166 as amended and the
Revised Rules of Practice in Trademark Cases.
The temporary permit to manufacture under the trademark "MARK" for cigarettes
and the acceptance of the second application filed by private respondent in the
height of their dispute in the main case were evidently made subject to the
outcome of the said main case or Civil Case No. 47374 of the respondent Court.
Thus, the Court has not missed to note the absence of a mention in the Sandico
letter of September 26, 1986 of any reference to the pendency of the instant
action filed on August 18, 1982. We believe and hold that petitioners have shown
a prima facie case for the issuance of the writ of prohibitory injunction for the
purposes stated in their complaint and subsequent motions for the issuance of
the prohibitory writ. (Buayan Cattle Co. vs. Quintillan, 125 SCRA 276)
The requisites for the granting of preliminary injunction are the existence of the
right protected and the facts against which the injunction is to be directed as
violative of said right. (Buayan Cattle Co. vs. Quintillan, supra; Ortigas & Co. vs.
Ruiz, 148 SCRA 326). It is a writ framed according to the circumstances of the
case commanding an act which the Court regards as essential to justice and
restraining an act it deems contrary to equity and good conscience (Rosauro vs.
Cuneta, 151 SCRA 570). If it is not issued, the defendant may, before final
judgment, do or continue the doing of the act which the plaintiff asks the court to
restrain, and thus make ineffectual the final judgment rendered afterwards
granting the relief sought by the plaintiff (Calo vs. Roldan, 76 Phil. 445).
Generally, its grant or denial rests upon the sound discretion of the Court except
on a clear case of abuse (Belish Investment & Finance Co. vs. State House, 151
SCRA 636). Petitioners' right of exclusivity to their registered trademarks being
clear and beyond question, the respondent court's denial of the prohibitive writ
constituted excess of jurisdiction and grave abuse discretion. If the lower court
does not grant preliminary injunction, the appellate court may grant the same.
(Service Specialists, Inc. vs. Sheriff of Manila, 145 SCRA 139). (pp. 165167, Rollo in G.R. No. 91332.)
After private respondent Fortune's motion for reconsideration was rejected, a motion to dissolve
the disputed writ of preliminary injunction with offer to post a counterbond was submitted which
was favorably acted upon by the Court of Appeals, premised on the filing of a sufficient
counterbond to answer for whatever perjuicio petitioners may suffer as a result thereof, to wit:

The private respondent seeks to dissolve the preliminary injunction previously

granted by this Court with an offer to file a counterbond. It was pointed out in its
supplemental motion that lots of workers employed will be laid off as a
consequence of the injunction and that the government will stand to lose the
amount of specific taxes being paid by the
private respondent. The specific taxes being paid is the sum total of P120,120,
295.98 from January to July 1989.
The petitioners argued in their comment that the damages caused by the
infringement of their trademark as well as the goodwill it generates are incapable
of pecuniary estimation and monetary evaluation and not even the counterbond
could adequately compensate for the damages it will incur as a result of the
dissolution of the bond. In addition, the petitioner further argued that doing
business in the Philippines is not relevant as the injunction pertains to an
infringement of a trademark right.
After a thorough re-examination of the issues involved and the arguments
advanced by both parties in the offer to file a counterbond and the opposition
thereto, WE believe that there are sound and cogent reasons for US to grant the
dissolution of the writ of preliminary injunction by the offer of the private
respondent to put up a counterbond to answer for whatever damages the
petitioner may suffer as a consequence of the dissolution of the preliminary
injunction.
The petitioner will not be prejudiced nor stand to suffer irreparably as a
consequence of the lifting of the preliminary injunction considering that they are
not actually engaged in the manufacture of the cigarettes with the trademark in
question and the filing of the counterbond will amply answer for such damages.
While the rule is that an offer of a counterbond does not operate to dissolve an
injunction previously granted, nevertheless, it is equally true that an injunction
could be dissolved only upon good and valid grounds subject to the sound
discretion of the court. As WE have maintained the view that there are sound and
good reasons to lift the preliminary injunction, the motion to file a counterbond is
granted. (pp. 53-54, Rollo in G.R. No. 91332.)
Petitioners, in turn, filed their own motion for re-examination geared towards reimposition of the
writ of preliminary injunction but to no avail (p. 55, Rollo in G.R. No. 91332).
Hence, the instant petition casting three aspersions that respondent court gravely abused its
discretion tantamount to excess of jurisdiction when:
I. . . . it required, contrary to law and jurisprudence, that in order that petitioners
may suffer irreparable injury due to the lifting of the injunction, petitioners should
be using actually their registered trademarks in commerce in the Philippines;
II. . . . it lifted the injunction in violation of section 6 of Rule 58 of the Rules of
Court; and
III. . . . after having found that the trial court had committed grave abuse of
discretion and exceeded its jurisdiction for having refused to issue the writ of
injunction to restrain private respondent's acts that are contrary to equity and
good conscience, it made a complete about face for legally insufficient grounds
and authorized the private respondent to continue performing the very same acts
that it had considered contrary to equity and good conscience, thereby ignoring
not only the mandates of the Trademark Law, the international commitments of

the Philippines, the judicial admission of private respondent that it will have no
more right to use the trademark "MARK" after the Director of Patents shall have
rejected the application to register it, and the admonitions of the Supreme Court.
(pp. 24-25, Petition; pp. 25-26, Rollo.)
To sustain a successful prosecution of their suit for infringement, petitioners, as foreign
corporations not engaged in local commerce, rely on section 21-A of the Trademark Law reading
as follows:
Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has been registered or assigned under this act may bring an action
hereunder for infringement, for unfair competition, or false designation of origin
and false description, whether or not it has been licensed to do business in the
Philippines under Act Numbered Fourteen hundred and fifty-nine, as amended,
otherwise known as the Corporation Law, at the time it brings complaint:
Provided, That the country of which the said foreign corporation or juristic person
is a citizen or in which it is domiciled, by treaty, convention or law, grants a similar
privilege to corporate or juristic persons of the Philippines. (As inserted by Sec. 7
of Republic Act No. 638.)
to drive home the point that they are not precluded from initiating a cause of
action in the Philippines on account of the principal perception that another entity
is pirating their symbol without any lawful authority to do so. Judging from a
perusal of the aforequoted Section 21-A, the conclusion reached by petitioners is
certainly correct for the proposition in support thereof is embedded in the
Philippine legal jurisprudence.
Indeed, it was stressed in General Garments Corporation vs. Director of Patents (41 SCRA 50
[1971]) by then Justice (later Chief Justice) Makalintal that:
Parenthetically, it may be stated that the ruling in the Mentholatum case was
subsequently derogated when Congress, purposely to "counteract the effects" of
said case, enacted Republic Act No. 638, inserting Section 21-A in the
Trademark Law, which allows a foreign corporation or juristic person to bring an
action in Philippine courts for infringement of a mark or tradename, for unfair
competition, or false designation of origin and false description, "whether or not it
has been licensed to do business in the Philippines under Act Numbered
Fourteen hundred and fifty-nine, as amended, otherwise known as the
Corporation Law, at the time it brings complaint."
Petitioner argues that Section 21-A militates against respondent's capacity to
maintain a suit for cancellation, since it requires, before a foreign corporation may
bring an action, that its trademark or tradename has been registered under the
Trademark Law. The argument misses the essential point in the said provision,
which is that the foreign corporation is allowed thereunder to sue "whether or not
it has been licensed to do business in the Philippines" pursuant to the
Corporation Law (precisely to counteract the effects of the decision in the
Mentholatum case). (at p. 57.)
However, on May, 21, 1984, Section 21-A, the provision under consideration, was qualified by
this Court in La Chemise Lacoste S.A. vs. Fernandez (129 SCRA 373 [1984]), to the effect that a
foreign corporation not doing business in the Philippines may have the right to sue before
Philippine Courts, but existing adjective axioms require that qualifying circumstances necessary
for the assertion of such right should first be affirmatively pleaded (2 Agbayani Commercial Laws
of the Philippines, 1991 Ed., p. 598; 4 Martin, Philippine Commercial Laws, Rev. Ed., 1986, p.
381). Indeed, it is not sufficient for a foreign corporation suing under Section 21-A to simply

allege its alien origin. Rather, it must additionally allege its personality to sue. Relative to this
condition precedent, it may be observed that petitioners were not remiss in averring their
personality to lodge a complaint for infringement (p. 75,Rollo in AC-G.R. SP No. 13132)
especially so when they asserted that the main action for infringement is anchored on an isolated
transaction (p. 75, Rollo in AC-G.R. SP No. 13132; Atlantic Mutual Ins. Co. vs. Cebu Stevedoring
Co., Inc., 17 SCRA 1037 (1966), 1 Regalado, Remedial Law Compendium, Fifth Rev. Ed., 1988,
p. 103).
Another point which petitioners considered to be of significant interest, and which they desire to
impress upon us is the protection they enjoy under the Paris Convention of 1965 to which the
Philippines is a signatory. Yet, insofar as this discourse is concerned, there is no necessity to
treat the matter with an extensive response because adherence of the Philippines to the 1965
international covenant due to pact sunt servanda had been acknowledged in La
Chemise (supra at page 390).
Given these confluence of existing laws amidst the cases involving trademarks, there can be no
disagreement to the guiding principle in commercial law that foreign corporations not engaged in
business in the Philippines may maintain a cause of action for infringement primarily because of
Section 21-A of the Trademark Law when the legal standing to sue is alleged, which petitioners
have done in the case at hand.
In assailing the justification arrived at by respondent court when it recalled the writ of preliminary
injunction, petitioners are of the impression that actual use of their trademarks in Philippine
commercial dealings is not an indispensable element under Article 2 of the Paris Convention in
that:
(2) . . . . no condition as to the possession of a domicile or establishment in the
country where protection is claimed may be required of persons entitled to the
benefits of the Union for the enjoyment of any industrial property of any industrial
property rights. (p. 28, Petition; p. 29, Rollo in G.R. No. 91332.)
Yet petitioners' perception along this line is nonetheless resolved by Sections 2 and 2-A of the
Trademark Law which speak loudly, about necessity of actual commercial use of the trademark
in the local forum:
Sec. 2. What are registrable. Trademarks, tradenames and service marks
owned by persons, corporations, partnerships or associations domiciled in the
Philippines and by persons, corporations, partnerships or associations domiciled
in any foreign country may be registered in accordance with the provisions of this
Act; Provided, That said trademarks, tradenames, or service marks are actually in
use in commerce and services not less than two months in the Philippines before
the time the applications for registration are filed; And provided, further, That the
country of which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines, and such fact is
officially certified, with a certified true copy of the foreign law translated into the
English language, by the government of the foreign country to the Government of
the Republic of the Philippines. (As amended by R.A. No. 865).
Sec. 2-A. Ownership of trademarks, tradenames and service marks; how
acquired. Anyone who lawfully produces or deals in merchandise of any kind
or who engages in any lawful business, or who renders any lawful service in
commerce, by actual use thereof in manufacture or trade, in business,and in the
service rendered, may appropriate to his exclusive use a trademark, a
tradename, or a service mark not so appropriated by another, to distinguish his
merchandise, business or service from the merchandise, business or service of
others. The ownership or possession of a trademark, tradename, service mark,

heretofore or hereafter appropriated, as in this section provided, shall be

recognized and protected in the same manner and to the same extent as are
other property rights known to the law. (As amended by R.A. No. 638). (Kabushi
Kaisha Isetan vs. Intermediate Appellate Court, 203 SCRA 583 [1991], at pp.
589-590; emphasis supplied.)
Following universal acquiescence and comity, our municipal law on trademarks regarding the
requirement of actual use in the Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen vs. Peters,
Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras, International Law
and World Organization, 1971 Ed., p. 20). Withal, the fact that international law has been made
part of the law of the land does not by any means imply the primacy of international law over
national law in the municipal sphere. Under the doctrine of incorporation as applied in most
countries, rules of international law are given a standing equal, not superior, to national
legislative enactments (Salonga and Yap, Public International Law, Fourth ed., 1974, p. 16).
The aforequoted basic provisions of our Trademark Law, according to Justice Gutierrez, Jr.,
in Kabushi Kaisha Isetan vs. Intermediate Appellate Court (203 SCRA 583 [1991]), have been
construed in this manner:
A fundamental principle of Philippine Trademark Law is that actual use in
commerce in the Philippines is a pre-requisite to the acquisition of ownership
over a trademark or a tradename.
xxx xxx xxx
These provisions have been interpreted in Sterling Products International, Inc. v.
Farbenfabriken Bayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way:
A rule widely accepted and firmly entrenched because it has
come down through the years is that actual use in commerce or
business is a prerequisite to the acquisition of the right of
ownership over a trademark.
xxx xxx xxx
. . . Adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use. Adoption is not
use. One may make advertisements, issue circulars, give out
price lists on certain goods; but these alone would not give
exclusive right of use. For trademark is a creation of use. The
underlying reason for all these is that purchasers have come to
understand the mark as indicating the origin of the wares. Flowing
from this is the trader's right to protection in the trade he has built
up and the goodwill he has accumulated from use of the
trademark. . . .
In fact, a prior registrant cannot claim exclusive use of the trademark unless it
uses it in commerce.
We rule[d] in Pagasa Industrial Corporation v. Court of Appeals (118 SCRA 526
[1982]):
3. The Trademark law is very clear. It requires actual commercial use of the mark
prior to its registration. There is no dispute that respondent corporation was the
first registrant, yet it failed to fully substantiate its claim that it used in trade or

business in the Philippines the subject mark; it did not present proof to invest it
with exclusive, continuous adoption of the trademark which should consist among
others, of considerable sales since its first use. The invoices (Exhibits 7, 7-a, and
8-b) submitted by respondent which were dated way back in 1957 show that the
zippers sent to the Philippines were to be used as "samples" and "of no
commercial value". The evidence for respondent must be clear, definite and free
from inconsistencies. (Sy Ching v. Gaw Lui, 44 SCRA 148-149) "Samples" are
not for sale and therefore, the fact of exporting them to the Philippines cannot be
considered to be equivalent to the "use" contemplated by the law. Respondent
did not expect income from such "samples". There were no receipts to establish
sale, and no proof were presented to show that they were subsequently sold in
the Philippines. (Pagasa Industrial Corp. v. Court of Appeals, 118 SCRA 526
[1982]; Emphasis Supplied)
The records show that the petitioner has never conducted any business in the
Philippines. It has never promoted its tradename or trademark in the Philippines.
It is unknown to Filipino except the very few who may have noticed it while
travelling abroad. It has never paid a single centavo of tax to the Philippine
government. Under the law, it has no right to the remedy it seeks. (at pp. 589591.)
In other words, petitioners may have the capacity to sue for infringement irrespective of lack of
business activity in the Philippines on account of Section 21-A of the Trademark Law but the
question whether they have an exclusive right over their symbol as to justify issuance of the
controversial writ will depend on actual use of their trademarks in the Philippines in line with
Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a
foreign corporation not licensed to do business in Philippines files a complaint for infringement,
the entity need not be actually using its trademark in commerce in the Philippines. Such a foreign
corporation may have the personality to file a suit for infringement but it may not necessarily be
entitled to protection due to absence of actual use of the emblem in the local market.
Going back to the first assigned error, we can not help but notice the manner the ascription was
framed which carries with it the implied but unwarranted assumption of the existence of
petitioners' right to relief. It must be emphasized that this aspect of exclusive dominion to the
trademarks, together with the corollary allegation of irreparable injury, has yet to be established
by petitioners by the requisite quantum of evidence in civil cases. It cannot be denied that our
reluctance to issue a writ of preliminary injunction is due to judicial deference to the lower courts,
involved as there is mere interlocutory order (Villarosa vs. Teodoro, Sr., 100 Phil. 25 [1956]). In
point of adjective law, the petition has its roots on a remedial measure which is but ancillary to
the main action for infringement still pending factual determination before the court of origin. It is
virtually needless to stress the obvious reality that critical facts in an infringement case are not
before us more so when even Justice Feliciano's opinion observes that "the evidence is scanty"
and that petitioners "have yet to submit copies or photographs of their registered marks as used
in cigarettes" while private respondent has not, for its part, "submitted the actual labels or
packaging materials used in selling its "Mark" cigarettes." Petitioners therefore, may not be
permitted to presume a given state of facts on their so called right to the trademarks which could
be subjected to irreparable injury and in the process, suggest the fact of infringement. Such a
ploy would practically place the cart ahead of the horse. To our mind, what appears to be the
insurmountable barrier to petitioners' portrayal of whimsical exercise of discretion by the Court of
Appeals is the well-taken remark of said court that:
The petitioner[s] will not be prejudiced nor stand to suffer irreparably as a
consequence of the lifting of the preliminary injunction considering that they are
not actually engaged in the manufacture of the cigarettes with the trademark in
question and the filing of the counterbond will amply answer for such damages.
(p. 54. Rollo in G.R. No. 91332.)

More telling are the allegations of petitioners in their complaint (p. 319, Rollo G.R. No. 91332) as
well as in the very petition filed with this Court (p. 2, Rollo in G.R. No. 91332) indicating that they
are not doing business in the Philippines, for these frank representations are inconsistent and
incongruent with any pretense of a right which can breached (Article 1431, New Civil Code;
Section 4, Rule 129; Section 3, Rule 58, Revised Rules of Court). Indeed, to be entitled to an
injunctive writ, petitioner must show that there exists a right to be protected and that the facts
against which injunction is directed are violative of said right (Searth Commodities Corporation
vs. Court of Appeals, 207 SCRA 622 [1992]). It may be added in this connection that albeit
petitioners are holders of certificate of registration in the Philippines of their symbols as admitted
by private respondent, the fact of exclusive ownership cannot be made to rest solely on these
documents since dominion over trademarks is not acquired by the mere fact of registration alone
and does not perfect a trademark right (Unno Commercial Enterprises, Inc. vs. General Milling
Corporation, 120 SCRA 804 [1983]).
Even if we disregard the candid statements of petitioners anent the absence of business activity
here and rely on the remaining statements of the complaint below, still, when these averments
are juxtaposed with the denials and propositions of the answer submitted by private respondent,
the supposed right of petitioners to the symbol have thereby been controverted. This is not to
say, however, that the manner the complaint was traversed by the answer is sufficient to tilt the
scales of justice in favor of private respondent. Far from it. What we are simply conveying is
another basic tenet in remedial law that before injunctive relief may properly issue, complainant's
right or title must be undisputed and demonstrated on the strength of one's own title to such a
degree as to unquestionably exclude dark clouds of doubt, rather than on the weakness of the
adversary's evidence, inasmuch as the possibility of irreparable damage, without prior proof of
transgression of an actual existing right, is no ground for injunction being mere damnum absque
injuria (Talisay-Silay Milling Co., Inc. vs. CFI of Negros Occidental, 42 SCRA 577 [1971];
Francisco, Rules of Court, Second ed., 1985, p. 225; 3 Martin, Rules of Court, 1986 ed., p. 82).
On the economic repercussion of this case, we are extremely bothered by the thought of having
to participate in throwing into the streets Filipino workers engaged in the manufacture and sale of
private respondent's "MARK" cigarettes who might be retrenched and forced to join the ranks of
the many unemployed and unproductive as a result of the issuance of a simple writ of preliminary
injunction and this, during the pendency of the case before the trial court, not to mention the
diminution of tax revenues represented to be close to a quarter million pesos annually. On the
other hand, if the status quo is maintained, there will be no damage that would be suffered by
petitioners inasmuch as they are not doing business in the Philippines.
With reference to the second and third issues raised by petitioners on the lifting of the writ of
preliminary injunction, it cannot be gainsaid that respondent court acted well within its
prerogatives under Section 6, Rule 58 of the Revised Rules of Court:
Sec. 6. Grounds for objection to, or for motion of dissolution of injunction. The
injunction may be refused or, if granted ex parte, may be dissolved, upon the
insufficiency of the complaint as shown by the complaint itself, with or without
notice to the adverse party. It may also be refused or dissolved on other grounds
upon affidavits on the part of the defendants which may be opposed by the
plaintiff also by affidavits. It may further be refused or, if granted, may be
dissolved, if it appears after hearing that although the plaintiff is entitled to the
injunction, the issuance or continuance thereof, as the case may be, would cause
great damage to the defendant while the plaintiff can be fully compensated for
such damages as he may suffer, and the defendant files a bond in an amount
fixed by the judge conditioned that he will pay all damages which the plaintiff may
suffer by the refusal or the dissolution of the injunction. If it appears that the
extent of the preliminary injunction granted is too great, it must be modified.
Under the foregoing rule, injunction may be refused, or, if granted, may be dissolved, on the
following instances:

(1) If there is insufficiency of the complaint as shown by the allegations

therein. Refusal or dissolution may be granted in this case with or without notice
to the adverse party.
(2) If it appears after hearing that although the plaintiff is entitled to the injunction,
the issuance or continuance thereof would cause great damage to the defendant,
while the plaintiff can be fully compensated for such damages as he may suffer.
The defendant, in this case, must file a bond in an amount fixed by the judge
conditioned that he will pay all damages which plaintiff may suffer by the refusal
or the dissolution of the injunction.
(3) On the other grounds upon affidavits on the part of the defendant which may
be opposed by the plaintiff also affidavits.
Modification of the injunction may also be ordered by the court if it appears that
the extent of the preliminary injunction granted is too great. (3 Martin, Rules of
Court, 1986 ed., p. 99; Francisco,supra, at p. 268.)
In view of the explicit representation of petitioners in the complaint that they are not engaged in
business in the Philippines, it inevitably follows that no conceivable damage can be suffered by
them not to mention the foremost consideration heretofore discussed on the absence of their
"right" to be protected. At any rate, and assuming in gratia argumenti that respondent court
erroneously lifted the writ it previously issued, the same may be cured by appeal and not in the
form of a petition for certiorari (Clark vs. Philippine Ready Mix Concrete Co., 88 Phil. 460 [1951]).
Verily, and mindful of the rule that a writ of preliminary injunction is an interlocutory order which is
always under the control of the court before final judgment, petitioners' criticism must fall flat on
the ground, so to speak, more so when extinction of the previously issued writ can even be made
without previous notice to the adverse party and without a hearing (Caluya vs. Ramos, 79 Phil.
640 [1974]; 3 Moran, Rules of Court, 1970 ed., p. 81).
WHEREFORE, the petition is hereby DISMISSED and the Resolutions of the Court of Appeals
dated September 14, 1989 and November 29, 1989 are hereby AFFIRMED.
SO ORDERED.
Bidin, J., concurs.
Davide, Jr., concurs in the result.
Romero, J. took no part.