Mirpuri v. CA (G.R. No. 114508) competition.

The Convention is essentially a compact among various

November 19, 1999 Puno J.: countries which, as members of the Union, have pledged to accord to citizens
of the other member countries trademark and other rights comparable to
Facts: those accorded their own citizens by their domestic laws for an effective
protection against unfair competition. Art. 6bis is a self-executing provision
Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her and does not require legislative enactment to give it effect in the member
products such as brassieres and ladies undergarments. Respondent Barbizon country. It may be applied directly by the tribunals and officials of each
Corporation, an American corporation, opposed alleging that petitioner’s mark member country by the mere publication or proclamation of the Convention,
is confusingly similar to its own trademark ‘Barbizon.’ Escobar’s application after its ratification according to the public law of each state and the order for
was given due course and her trademark was registered. Later, Escobar its execution.
assigned all her rights to petitioner Mirpuri who failed to file an Affidavit of The Philippines and the United States of America have acceded to the WTO
Use resulting in the cancellation of the trademark. Petitioner then applied for Agreement. Conformably, the State must reaffirm its commitment to the
registration of the trademark to which respondent Barbizon again opposed, global community and take part in evolving a new international economic
now invoking the protection under Article 6bis of the Paris Convention. The order at the dawn of the new millennium.
Director of Patents declaring respondent’s opposition was already barred,
petitioner’s application was given due course. CA reversed the judgment. Puma v IAC GR No. 75067

Feb. 26, 1988 Gutierrez Jr, J.

Issue:
Puma sued Mil-oro for trademark infringement, as the latter had been producing “Puma”
socks and belts. MTD filed for lack of capacity to sue. Denied and injunction issued.
Whether or not respondent may invoke the protection under Article 6bis of
the Paris Convention. SC upheld injunction. Puma had capacity to sue. A foreign corporation not doing business in
the Philippines which is a national of a country party to the Paris Convention need not have a
license in order to sue to protect its intellectual property.
Ruling: YES.
Facts:
The Convention of Paris for the Protection of Industrial Property, otherwise
Puma, a West German Corporation and producer of Puma products, filed a complaint for
known as the Paris Convention, is a multilateral treaty that seeks to protect patent or trademark infringement with a prayer for the issuance of a writ of prelim
industrial property consisting of patents, utility models, industrial designs, injunction against Mil-Oro Manufacturing Corp. Mil-Oro had been producing Puma socks and
trademarks, service marks, trade names and indications of source or belts.
appellations of origin, and at the same time aims to repress unfair
MTD filed for lack of capacity to sue. MTD denied, injunction granted. CA reversed. Hence bona fide or effective business or commercial establishment in any foreign country, which is
this petition for review on certiorari. a party to an international convention or treaty relating to marks or tradenames on the
represssion of unfair competition to which the Philippines may be party, shall be entitled to
Issues: the benefits and subject to the provisions of this Act ...
1. WON Puma has capacity to sue (Yes) Tradenames of persons described in the first paragraph of this section shall be protected
2. WON the case should be dismissed on the ground of lis
without the obligation of filing or registration whether or not they form part of marks.”
pendens (No)
3. WON injunction should issue. (Yes) Thus, Puma had the legal capacity to file the action.

Ratio: 2. There was no lis pendens. The civil action filed was different
from the administrative action filed. For a finding of lis
1. Puma had substantially complied with Sec. 21-A of RA 166.
pendens, the other case pending between the same parties
Its complaint specifically alleged that it is not doing business
and having the same cause must be a court action. Thus, the
in the Philippines and is suing under that law, which provides
Court of Appeals likewise erred in holding that the requisites
that "the country of which the said corporation or juristic
of lis pendens were present so as to justify the dismissal of
person is a citizen, or in which it is domiciled, by treaty,
the case below.
convention or law, grants a similar privilege to corporate or
3. Mil-oro intentionally refused to present counter-evidence
juristic persons of the Philippines." The Federal Republic of
against the issuance of the writ. Thus, the court reiterated its
Germany and the Philippines are both parties of the Paris
guidance to lower courts and administrative agencies found
Convention, which forms part of the law of the land.
in Lacoste:
As held in La Chemise Lacoste, S.A .v. Fernandez,, a foreign corporation not doing
CA reversed and set aside.
business in the Philippines needs no license to sue before Philippine courts for infringement
of trademark and unfair competition.

Further, a foreign corporation which has never done any business in the Philippines and
which is unlicensed and unregistered to do business here, but is widely and favorably known
in the Philippines through the use therein of its products bearing its corporate and
Pearl & Dean v.
tradename, has a legal right to maintain an action in the Philippines to restrain the residents
and inhabitants thereof from organizing a corporation therein bearing the same name as the
foreign corporation, when it appears that they have personal knowledge of the existence of
Shoemart GR No. 148222
such a foreign corporation, and it is apparent that the purpose of the proposed domestic 15 August 2003 Corona J.
corporation is to deal and trade in the same goods as those of the foreign corporation.

This is in accordance with Section 37 of RA No. 166, otherwise known as the Facts:
trademark Law, which provides that “Persons who are nationals of, domiciled in, or have a
Plaintiff P and D is engaged in manufacturing advertising display units D copyright. It further contends that “poster ads” is a generic name that
called as light boxes. These are specialty printed posters with plastic cannot be appropriated for a trademark and that P and D’s advertising
sheets and illuminated back lights that are mainly used as stationeries. display units contained no copyright notice in violation of Section 27 of
They secure copyright registration over these advertising light boxes P.D. 49. NEMI likewise repleaded the averments of SM and denied to
and marketed using the trademark “poster ads.” They applied for the have manufactured, installed or advertised the display units. The RTC
registration of trademark before the Bureau of Patents, Trademark and decided in favor of P and D but on appeal the Court of Appeals
Technology Transfer which was approved on September 12, 1988. P reversed its decision. In its judgment its stand is that the copyright of
and D negotiated with the defendant Shoemart for the lease and the plaintiff is limited to its technical drawings only and not the light
installation of the light boxes in SM City North Edsa but was given an boxes itself. When a drawing is technical, the copyright over the
alternative to have them leased to SM Makati and SM Cubao while the drawing does not extend to actual object. Thus the CA is constrained to
said branch was under construction. Only the contract with SM Makati adopt the view of the respondents that the “poster ads” is a generic
was returned with signature. In 1986 the counsel of Shoemart informed poster term ads and in the absence of convincing proof that such
P and D that it is rescinding its contract for SM Makati due to non- wording acquired secondary meaning, the P and D’s exclusive right to
performance of the terms thereof. Two years later, the Metro Industrial use “poster ads” is limited to what is written on its certificate of
Services, the same company contracted by the plaintiff to fabricate their registration which is stationaries.
display units offered to construct light boxes for the Shoemart chain of
stores wherein 10 light boxes were created for them. Upon the
termination of contract with Metro Industrial Service, SM hired EYD
Rainbow Advertising Co. to make light boxes. When P and D knew Issue:
about the exact copies of its light boxes installed at SM City branches in
1989, it investigated and found out that North Edsa Marketing Inc Whether or not there is patent infringement
(NEMI), sister company of SM was primarily selling ad space
in lighted display units. P and D sent letter to both NEMI and Ruling:
SM enjoining them to cease from using the subject light boxes and
remove them from SM establishments. It also demanded to discontinue It held that the petitioner never secured patent for the light boxes.
the use of its trademark “poster ads” with compensatory damages of Without any acquired rights to protect its invention it cannot legally
20M. SM suspended the lease of light boxes in its branches while NEMI prevent anyone from manufacturing the same. There can be no
took down its advertisement for poster ads. Claiming both failed to meet infringement of a patent until a patent has been issued, since whatever
its demand P and D filed a case for infringement of trademark, right one has to the invention covered by the patent arises alone from
copyright, unfair competition and damages. the grant of patent. Inventors have no common law right to monopoly of
his work. He has the right to invent but once he voluntarily discloses it
SM denied the charges against it and noted that the registration of mark the world is free to copy and use it. A patent gives the inventor the
“poster ads” is limited to stationeries like letterhead and envelope. It exclusive right to make, sell, use and exclude others from using his
further stresses that it independently develop its own poster panels invention. Assuming the petitioner’s ad units were patentable, he made
using techniques and available technology without notice to P and them public by submitting its engineering drawings to the National
Library. To legally preclude others from copying and profiting from one’s
invention, patent is a primary requirement. The ultimate goal of a patent
system is to bring new designs and technologies into the public domain
through disclosure. Ideas, once disclosed to the public without the
protection of a valid patent, are subject to appropriation without
significant restraint. Therefore, without any patent secured to protect
one’s work, there is no protection against its use by the public.
Petitioner mainly secured copyright in which its design is classified
as class “O” limited to box wraps, pictorial illustration, labels and tags.
Thus its copyright is covered only the works falling within this category.
Moreover, the term “poster ads” is generic and incapable to be used as
trademark thus the respondents are not held guilty of the charges
against them.