G.R. No.

100098, December 29, 1995 The term "Lee" undoubtedly constituted the most significant aspect of the
EMERALD GARMENT MANUFACTURING CORPORATION, petitioner, trademark.
vs.
HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS
and TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC., Issue:
respondents
Whether or not the trademark “STYLISTIC MR. LEE” is confusingly
Facts: similar to the trademark “LEE”.

Held:
On September 18, 1981, H.D. Lee Co, Inc., the party being referred to as the
private respondent, submitted a Petition for the Cancellation of Registration
No. SR 5054 for the trademark "STYLISTIC MR. LEE." This trademark was STYLIC MR. LEE is distinctly different from and does not possess any
being used on various clothing items like skirts, jeans, blouses, socks, briefs, confusing similarity to the private respondent's LEE trademark. Section 22 of
jackets, jogging suits, dresses, shorts, shirts, and lingerie, all falling under Class R.A. No. 166 (Trademark Law) states that any individual who employs,
25. The initial registration had taken place on October 27, 1980, and it was held without the agreement of the registrant, any reproduction, counterfeit,
by Emerald Garment Manufacturing Corporation, the petitioner in this case. duplicate, or an imitation resembling a registered mark or trade name in
The latter is a domestic corporation operating under the laws of the conjunction with the sale, promotion, or advertising of goods, businesses, or
Philippines. services in a manner that is likely to induce confusion, misunderstanding, or
deceive buyers or others regarding the origin of such goods or services, or the
The private respondent alleged that the petitioner's trademark bore a striking identification of such business, or who reproduces, counterfeits, duplicates, or
resemblance to their own previously registered and utilized trademark, "LEE." creates an imitable imitation of such mark or trade name and employs such
This similarity had led to confusion, errors, and deceit among consumers imitation on labels, signs, prints, packaging, wrappers, containers, or
regarding the origin of the products. advertisements meant to be utilized with such goods, businesses, or services,
shall be subject to legal action by the registrant, with all applicable remedies.
Ultimately, on July 19, 1988, the Director of Patents issued a decision in favor
of the private respondent's request for the cancellation of registration and their Applying these principles to the current dispute and considering the factual
opposition to further registration. The Director acknowledged the private context of this matter, we have assessed the involved trademarks as a whole
respondent as the earlier registrant of the "LEE" trademark in the Philippines and concluded that petitioner's STYLIC MR. LEE is not confusingly similar to
and confirmed their ongoing use of this mark. Employing the principle of the private respondent's LEE trademark.
dominancy, the Director determined that the petitioner's trademark was
confusingly akin to the private respondent's mark. This was attributed to the
fact that the word "Lee" prominently caught the attention of buyers and led
them to conclude that the goods were sourced from the same manufacturer.
G.R. No. 114508, November 19, 1999 registration and recognized the respondent as the owner and previous user of
PRIBHDAS J. MIRPURI, petitioner the business name "BARBIZON INTERNATIONAL."
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON Simultaneously, both parties presented evidence to the Director of Patents. The
CORPORATION, respondents Director made a decision in which he declared the respondent's opposition to
be barred by res judicata and granted approval to the petitioner's application.
Facts: The respondent contested this decision in the Court of Appeals (CA), which
subsequently overturned the Director of Patents' ruling. As a result, this legal
action is a response to that reversal by the CA.
The Convention of Paris for the Protection of Industrial Property is a multi-
lateral treaty to which the Philippines has committed to adhere and enforce
Issue:
within its jurisdiction. In light of this commitment, the following events
transpired:
Whether or not respondent may invoke the protection under Article 6 of the
Paris Convention.
Lolita Escobar, who is the predecessor-in-interest of petitioner Mirpuri,
submitted an application to the Bureau of Patents for the registration of the
Ruling:
"Barbizon" trademark. She asserted that she had been involved in the
manufacturing and sale of these products under the business name "L & BM Yes. The Convention of Paris for the Protection of Industrial Property,
Commercial." Barbizon Corporation, a corporation operating under the laws otherwise known as the Paris Convention, is a multilateral treaty that seeks to
of New York, opposed this application, contending that the mark BARBIZON protect industrial property consisting of patents, utility models, industrial
was confusingly similar to their own trademark BARBIZON, which they designs, trademarks, service marks, trade names and indications of source or
hadn't abandoned. Despite the opposition, the Director of Patents approved appellations of origin, and at the same time aims to repress unfair competition.
Escobar's application. In short, foreign nationals are to be given the same treatment in each of the
member countries as that country makes available to its own citizens.
Subsequently, Escobar transferred all her rights and claims to the trademark Nationals of the various member nations are thus assured of a certain
to petitioner Mirpuri. Nonetheless, Escobar failed to submit the required minimum of international protection of their industrial property.
affidavit of use of the trademark to the Bureau of Patents. Consequently, in In R.A. No. 8293, the Intellectual Property Code of the Philippines, "trademark"
1981, Escobar reapplied for registration while Mirpuri submitted his own has been defined as "any visible sign capable of distinguishing goods." In
application. The respondent opposed these applications. Philippine jurisprudence, the function of a trademark is to point out distinctly
the origin or ownership of the goods to which it is affixed.
As petitioner Mirpuri registered the name with the Department of Trade and
Industry (DTI), the respondent filed a petition to cancel the petitioner's
registration. In response, the DTI annulled the petitioner's certificate of
G.R. No. 154342, July 14, 2004 The respondents accused the petitioners of violating Article 6 of the Paris
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, Convention for the Protection of Industrial Property (Paris Convention) and
INC., petitioners, vs. E. & J. GALLO WINERY and THE ANDRESONS RA 166 (Trademark Law), specifically addressing Sections 22 and 23
GROUP, INC., respondents. (pertaining to trademark infringement), 29 and 30 (relating to unfair
competition and false representation of origin), as well as 37 (concerning trade
Facts: name).

Procedural Posture:
The foreign corporation, Gallo Winery, is not conducting business in the
Philippines but is established and operational under the regulations of the In 1993, the Makati RTC rejected the respondents' motion for reconsideration
State of California. Gallo Winery is involved in the production of various types on the grounds of lack of merit. The court restated that the wines produced by
of wines and brandy products, marketing them under diverse registered the respondents and the cigarettes manufactured by the petitioners were not
trademarks, which include the GALLO and ERNEST & JULIO GALLO wine associated goods, as the probability of confusion or deception among the
trademarks, across several countries. consuming public was highly unlikely.

The local corporation, Andersons, operates as Gallo Winery's exclusive The trial court underscored its inability to rely on foreign judgments cited by
importer and distributor of wines in the Philippines since 1991. They sell these the respondents. It explained that these cases had been decided by foreign
products under their own name and for their own account. courts based on specific and unfamiliar facts peculiar to each case or on factual
circumstances limited to their respective jurisdictions. Furthermore, there was
Contrastingly, the petitioners, Mighty Corporation and La Campana, along no demonstration that these cases had undergone testing or had been deemed
with their affiliated company, Tobacco Industries of the Philippines (Tobacco applicable within the local jurisdiction.
Industries), are engaged in the cultivation, manufacturing, distribution, and
sale of tobacco products. They have been utilizing the GALLO cigarette In 1995, the Court of Appeals (CA) similarly dismissed the respondents'
trademark since 1973. request for a review on certiorari, designated as CA-G.R. No. 32626. This
upheld the Makati RTC's refusal to grant a preliminary injunction against the
Subsequently, on March 12, 1993, the respondents filed a lawsuit against the petitioners.
petitioners in the Makati RTC (Regional Trial Court). The charges included
claims of trademark and trade name infringement, alongside allegations of However, following a full trial on the merits, the Makati RTC ruled in 1998 that
unfair competition, all with a request for damages and a preliminary the petitioners were indeed accountable for trademark infringement and
injunction. unfair competition in relation to the GALLO trademark. Consequently, the
court issued a permanent injunction against them.

Issue: Whether the Trademark Law and the Paris Convention are the
applicable laws and not the Intellectual Property Code. ( effective January 1,
1998)
 within the parameters of the Trademark Law and the Paris Convention, the
Ruling: laws in force at the time of the filing of the complaint.

The Supreme Court ruled in the affirmative. Respondents sued petitioners on

March 12, 1993 for trademark infringement and unfair competition committed
during the effectivity of the Paris Convention and the Trademark Law.

In the Makati RTC decision of November 26, 1998, petitioners were held liable
not only under the aforesaid governing laws but also under the IP Code which
took effect only on January 1, 1998, or about five years after the filing of the
complaint.

The Court of Appeals apparently did not notice the error and affirmed the
Makati RTC decision:

In the light of its finding that appellants’ use of the GALLO trademark
on its cigarettes is likely to create confusion with the GALLO
trademark on wines previously registered and used in the Philippines
by appellee E & J Gallo Winery, the trial court thus did not err in
holding that appellants’ acts not only violated the provisions of the our
trademark laws but also Article 6 of the Paris Convention.

The Supreme Court therefore ruled that the courts a quo erred in retroactively
applying the IP Code in this case. It is a fundamental principle that the validity
and obligatory force of a law proceed from the fact that it has first been
promulgated. A law that is not yet effective cannot be considered as
conclusively known by the populace. To make a law binding even before it
takes effect may lead to the arbitrary exercise of the legislative power.

The IP Code, repealing the Trademark Law, was approved on June 6, 1997.
Section 241 thereof expressly decreed that it was to take effect only on January
1, 1998, without any provision for retroactive application. Thus, the Makati
RTC and the CA should have limited the consideration of the present case
Tañada vs. Angara, 272 SCRA 18,
G.R. No. 118295, May 2, 1997 Ruling:

Facts: Declaration of Principles Not Self-Executing

This case pertains to a petition led by Senator Wigberto Tanada, along with On the other hand, Secs. 10 and 12 of Article XII, apart from merely laying
other legislators, taxpayers, and various non-governmental organizations down general principles relating to the national economy and patrimony,
(NGOs), seeking the annulment of the Philippines' ratification of the World should be read and understood in relation to the other sections in said article,
Trade Organization (WTO) Agreement. especially Secs. 1 and 13

All told, while the Constitution indeed mandates a bias in favor of Filipino
The petitioners are of the opinion that this decision could have negative goods, services, labor and enterprises, at the same time, it recognizes the need
consequences on the advancement of the national economy and goes against for business exchange with the rest of the world on the bases of equality and
the "Filipino First" policy. The WTO agreement offers increased access to reciprocity and limits protection of
foreign markets, particularly with major trading partners, by lowering tariffs
on exports, especially agricultural and industrial products. Consequently, this Filipino enterprises only against foreign competition and trade practices that
presents fresh avenues for the service sector, decreases the challenges and are unfair.
uncertainties tied to exporting, and encourages more investment within the Hence, poor countries can protect their common interests more effectively
country. These projected advantages are outlined in the agreement and align through the WTO than through one-on-one negotiations with developed
with the perspective of the signing Senators, promoting a "free market" countries.
ideology endorsed by the WTO.

Additionally, the petitioners argue that the WTO Agreement contradicts the
provisions of the country's constitution. This is because the Agreement is seen
as a challenge to the sovereign powers of the Philippines, as it implies that
Congress cannot enact legislation that serves the national interest and general
welfare if such legislation does not align with the WTO Agreement.

Issue:

Whether or not the Philippine Constitution prohibit Philippine participation

in worldwide trade liberalization and economic globalization?
Melbarose R. Sasot and Allandale R. Sasot v. People of the Philippines, et. dismissed Welts's complaint, as it is required to be sworn before the
Al., G.R. No. 143193, June 29, 2005 prosecutor, and the copy on record seems to be a fax transmittal.
Facts: In response, the prosecutor submitted a Comment/Opposition to the motion
to quash, asserting that he possesses the original copy of the complaint, and
In May 1997, the National Bureau of Investigation (NBI) initiated an
that the complainant has a legal representative to stand on its behalf. The
investigation based on a complaint by NBA Properties, Inc. against the
prosecutor also argued that the State has the right to prosecute the offense even
petitioners for possible violation of Article 189 of the Revised Penal Code
in the absence of the private offended party's participation, given that the
concerning unfair competition. The NBA Properties, Inc. is a foreign
charged crime is considered a public offense.
corporation established under the laws of the United States of America and
holds registered ownership of NBA trademarks and names associated with The trial court upheld the prosecutor's arguments and denied the petitioners'
NBA basketball teams like the Chicago Bulls. These names are utilized on motion to quash.
various garment products including hosiery, footwear, t-shirts, sweatshirts,
Issue:
tank tops, pajamas, and sport shirts. The NBI's investigation found that the
petitioners were engaged in producing, printing, selling, and distributing Whether or not a foreign corporation not doing business in the Philippines and
counterfeit NBA garment products. Consequently, the NBI recommended the not licensed to do business in the Philippines have the right to sue for unfair
prosecution of the petitioners for unfair competition under Article 189 of the competition
Revised Penal Code.

In a Special Power of Attorney, Rick Welts, the President of NBA Properties,

Inc., authorized the law firm of Ortega, Del Castillo, Bacorro, Odulio, Calma & Held:
Carbonell to act as the company's attorney-in-fact for filing criminal, civil, and Yes. Under Section 3, Rule 112 of the 1985 Rules of Criminal Procedure, a
administrative complaints. This document was notarized by Nicole Brown of complaint is substantially sufficient if it states the known address of the
New York County and certified by Norman Goodman, County Clerk and respondent, it is accompanied by complainants affidavit and his witnesses and
Clerk of the Supreme Court of the State of New York. Consul Cecilia B. Rebong supporting documents, and the affidavits are sworn to before any fiscal, state
of the Consulate General of the Philippines in New York authenticated the prosecutor or government official authorized to administer oath, or in their
certification. Furthermore, Welts executed a Complaint-Affidavit on February absence or unavailability, a notary public who must certify that he personally
12, 1998, before Notary Public Nicole J. Brown of the State of New York. examined the affiants and that he is satisfied that they voluntarily executed
Before the arraignment, the petitioners lodged a Motion to Quash the and understood their affidavits. All these have been duly satisfied in the
Information based on two grounds: (1) the facts stated do not amount to an complaint filed before Prosecution Attorney Aileen Marie S. Gutierrez. It must
offense and (2) the court lacks jurisdiction over the alleged offense or the be noted that even the absence of an oath in the complaint does not necessarily
individuals accused. The petitioners asserted that the prosecutor should have render it invalid. Want of oath is a mere defect of form, which does not affect
the substantial rights of the defendant on the merits.
In this case, Weltss Complaint-Affidavit contains an acknowledgement by
Notary Public Nicole Brown of the State of New York that the same has been
subscribed and sworn to before her on February 12, 1998, duly authenticated
by the Philippine Consulate. While the copy on record of the complaint-
affidavit appears to be merely a photocopy thereof, Prosecution Attorney
Gutierrez stated that complainants representative will present the
authenticated notarized original in court, and Prosecutor Guray manifested
that the original copy is already on hand. It is apt to state at this point that the
prosecutor enjoys the legal presumption of regularity in the performance of his
duties and functions, which in turn gives his report the presumption of
accuracy.

Moreover, records show that there are other supporting documents from
which the prosecutor based his recommendation.

Consequently, if the information is valid on its face, and there is no showing

of manifest error, grave abuse of discretion and prejudice on the part of public
prosecutor, as in the present case, the trial court should respect such
determination.

More importantly, the crime of Unfair Competition punishable under Article

189 of the Revised Penal Code is a public crime. It is essentially an act against
the State and it is the latter which principally stands as the injured party. The
complainants capacity to sue in such case becomes immaterial.
Elidad Kho v. Court of Appeals, G.R. No. 115758, March 19, 2002 (379 SCRA involves an inventive step and is industrially applicable. Petitioner has no right
410) to support her claim for the exclusive use of the subject trade name and its
container. The name and container of a beauty cream product are proper
Facts:
subjects of a trademark inasmuch as the same falls squarely within its
The petitioner, operating under the business name KEC Cosmetics Laboratory, definition.
claims to be the holder of copyright and patent registration for the Chin Chun
In order to be entitled to exclusively use the same in the sale of the beauty
Su container and medicated cream. Based on this claim, the petitioner filed a
cream product, the user must sufficiently prove that she registered or used it
lawsuit to restrain the respondent Summerville Company from promoting and
before anybody else did. The petitioner’s copyright and patent registration of
vending cream products using the same brand name, Chin Chun Su. The
the name and container would not guarantee her right to the exclusive use of
petitioner contended that such actions by the respondent would lead to
the same for the reason that they are not appropriate subjects of the said
confusion among the public and harm the petitioner's business interests. The
intellectual rights. Consequently, a preliminary injunction order cannot be
trial court initially granted the requested injunction. However, on appeal, the
issued for the reason that the petitioner has not proven that she has a clear
injunction was revoked, and the trial court ruled that the petitioner should be
right over the said name and container to the exclusion of others, not having
prohibited from utilizing the Chin Chun Su trademark.
proven that she has registered a trademark thereto or used the same before
Issue: anyone did.

Whether or not petitioner is entitled to the exclusive use of the trademark Chin
Chun Su based on her copyright and patent registration over the product.

Ruling:

NO. Trademark, copyright and patents are different intellectual property

rights that cannot be interchanged with one another. A trademark is any
visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope
of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity which is new,
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, and North SMI's defense centered on the argument that they independently developed
Edsa Marketing, Incorporated, GR No. 148222, 15 August 2003 their poster panels without knowledge of or reference to PDI's copyright. SMI
contended that the registration of the "Poster Ads" mark was limited to
TOPICS: Intellectual Property Law, Copyright, Infringement, Patents
stationery items like letterheads and envelopes. Additionally, SMI claimed
that the term "Poster Ads" is generic and cannot be exclusively used as a
trademark. Consequently, SMI not only sought the dismissal of the case but
FACTS:
also counterclaimed for moral, actual, and exemplary damages. They also
Pearl and Dean (Phil.), Inc. (PDI) is a company involved in producing requested the cancellation of PDI's Copyright Registration and Trademark
advertising display units known as light boxes. PDI obtained a Certificate of Registration.
Copyright Registration for these light boxes and marketed them under the
The Regional Trial Court (RTC) of Makati City ruled in favor of PDI,
trademark "Poster Ads."
determining that both SMI and NEMI were jointly and severally liable for
In 1985, PDI engaged in discussions with defendant-appellant Shoemart, Inc. infringing PDI's copyright and trademark rights.On appeal, however, the
(SMI) to lease and install these light boxes in specific SM Makati and SM Cubao
Court of Appeals reversed the trial court.
locations. While contracts for both stores were prepared, only the contract for
SM Makati was signed and returned. Later on, SMI informed PDI of its
decision to rescind the contract for SM Makati due to alleged non-compliance
ISSUES:
with the terms.
1. Whether the light box depicted in such engineering drawings ipso facto
Subsequently, PDI discovered that identical copies of its light boxes were
also protected by such copyright.
installed in various SM stores. It was also revealed that SMI's sister company,
2. Whether there was a patent infringement.
North Edsa Marketing Inc. (NEMI), was selling advertising space in
3. Whether the owner of a registered trademark legally prevent others
illuminated display units situated in SMI's different branches. PDI sent letters
from using such trademark if it is a mere abbreviation of a term
to both SMI and NEMI, instructing them to cease using the light boxes, remove
descriptive of his goods, services or business?
them from SMI's establishments, discontinue the use of the "Poster Ads"
trademark, and provide compensation for damages.
RULING:
As neither SMI nor NEMI complied with PDI's demands, PDI initiated legal
proceedings, alleging infringement of trademark and copyright, unfair ON THE ISSUE OF COPYRIGHT INFRINGEMENT
competition, and claiming damages.
The Court of Appeals correctly held that the copyright was limited to the
drawings alone and not to the light box itself.
Although petitioner’s copyright certificate was entitled “Advertising Display preclude others from copying and profiting from the invention, a patent is a
Units” (which depicted the box-type electrical devices), its claim of copyright primordial requirement. No patent, no protection.
infringement cannot be sustained.

Copyright, in the strict sense of the term, is purely a statutory right.

ON THE ISSUE OF TRADEMARK INFRINGEMENT
Accordingly, it can cover only the works falling within the statutory
enumeration or description. On the issue of trademark infringement, the petitioner’s president said “Poster
Ads” was a contraction of “poster advertising.” P & D was able to secure a
Even as we find that P & D indeed owned a valid copyright, the same could
trademark certificate for it, but one where the goods specified were
have referred only to the technical drawings within the category of “pictorial
“stationeries such as letterheads, envelopes, calling cards and
illustrations.” It could not have possibly stretched out to include the
newsletters.”Petitioner admitted it did not commercially engage in or market
underlying light box. The light box was not a literary or artistic piece which
these goods. On the contrary, it dealt in electrically operated backlit
could be copyrighted under the copyright law.
advertising units which, however, were not at all specified in the trademark
The Court reiterated the ruling in the case of Kho vs. Court of Appeals, certificate.
differentiating patents, copyrights and trademarks, namely:
Assuming arguendo that “Poster Ads” could validly qualify as a trademark,
A trademark is any visible sign capable of distinguishing the goods the failure of P & D to secure a trademark registration for specific use on the
(trademark) or services (service mark) of an enterprise and shall include a light boxes meant that there could not have been any trademark infringement
stamped or marked container of goods. In relation thereto, a trade name means since registration was an essential element thereof.
the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works
which are original intellectual creations in the literary and artistic domain ON THE ISSUE OF UNFAIR COMPETITION
protected from the moment of their creation. Patentable inventions, on the
other hand, refer to any technical solution of a problem in any field of human There was no evidence that P & D’s use of “Poster Ads” was distinctive or
activity which is new, involves an inventive step and is industrially applicable. well-known. As noted by the Court of Appeals, petitioner’s expert witnesses
himself had testified that ” ‘Poster Ads’ was too generic a name. So it was
difficult to identify it with any company, honestly speaking.”This crucial
admission that “Poster Ads” could not be associated with P & D showed that,
ON THE ISSUE OF PATENT INFRINGEMENT
in the mind of the public, the goods and services carrying the trademark
Petitioner never secured a patent for the light boxes. It therefore acquired no “Poster Ads” could not be distinguished from the goods and services of other
patent rights which and could not legally prevent anyone from manufacturing entities.
or commercially using the contraption. To be able to effectively and legally
“Poster Ads” was generic and incapable of being used as a trademark because
it was used in the field of poster advertising, the very business engaged in by
petitioner. “Secondary meaning” means that a word or phrase originally
incapable of exclusive appropriation with reference to an article in the market
might nevertheless have been used for so long and so exclusively by one
producer with reference to his article that, in the trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article
was his property.

The petition is DENIED

Phil Pharmawealth, Inc. vs. Pfizer, Inc. While the case was pending before the CA, Pfizer filed an infringement and
G.R. No. 167715, November 17, 2010 unfair competition complaint with the Regional Trial Court (RTC) of Makati
City against the petitioner. The RTC ordered the issuance of a preliminary
injunction, prohibiting petitioner and its agents from importing, distributing,
Facts:
or selling Sulbactam Ampicillin products in the Philippines.
The case at hand originated from a patent infringement complaint brought
Meanwhile, on November 16, 2004, petitioner filed a Motion to Dismiss the
against Phil Pharmawealth, Inc. (petitioner) by Pfizer, Inc. and Pfizer (Phil.),
petition with the CA, alleging forum shopping. The CA rendered a Resolution
Inc. (respondent companies) before the Bureau of Legal Affairs of the
on April 11, 2005, denying the Motion to Dismiss, which is the subject of the
Intellectual Property Office (BLA-IPO).
current challenge.
Pfizer, Inc. owns Philippine Letters Patent No. 21116 (referred to as the
Issue:
"Patent"), issued on July 16, 1987, which remains valid until July 16, 2004. In
January and February 2003, Pfizer discovered that petitioner had submitted Whether the exclusive right of a patentee to make, use and sell a patented
bids to supply Sulbactam Ampicillin to various hospitals without Pfizer's product, article or process exists only during the term of the patent?
consent, thereby infringing on Pfizer's intellectual property rights. Pfizer
Ruling:
sought a permanent injunction, damages, and the seizure of the allegedly
infringing products. The Supreme Court ruled in the affirmative.
Procedural Sequence: The exclusive right of a patentee to make, use and sell a patented product,
article or process exists only during the term of the patent. In the instant case,
The BLA-IPO issued a preliminary injunction on July 15, 2003, effective for
Philippine Letters Patent No. 21116, which was the basis of respondents in
ninety days from petitioner's receipt of the Order. Before the ninety-day period
filing their complaint with the BLA-IPO, was issued on July 16, 1987. This fact
concluded, Pfizer requested an extension of the preliminary injunction, which
was admitted by respondents themselves in their complaint. They also
the BLA-IPO rejected in an Order dated October 15, 2003. Pfizer's Motion for
admitted that the validity of the said patent is until July 16, 2004, which is in
Reconsideration was also denied in a Resolution dated January 23, 2004.
conformity with Section 21 of RA 165, providing that the term of a patent shall
Subsequently, Pfizer filed a special civil action for certiorari with the Court of
be seventeen (17) years from the date of issuance thereof. Section 4, Rule 129
Appeals (CA) to challenge the October 15, 2003, and January 23, 2004
of the Rules of Court provides that an admission, verbal or written, made by a
Resolutions of the BLA-IPO. Pfizer also sought a preliminary mandatory
party in the course of the proceedings in the same case, does not require proof
injunction to reinstate and extend the preliminary injunction granted by the
and that the admission may be contradicted only by showing that it was made
BLA-IPO.
through palpable mistake or that no such admission was made.
IN-N-OUT BURGER v. SEHWANI, These trademarks are registered with the Trademark Office of the US and in
GR No. 179127, 2008-12-24 various parts of the world, are internationally... well-known, and have become
distinctive of its business and goods through its long and exclusive commercial
use.
Facts:
petitioner sent... a demand letter directing respondent Sehwani, Incorporated
IN-N-OUT BURGER, INC., a business entity incorporated under the laws of
to cease and desist from claiming ownership of the mark "IN-N-OUT" and to
California, United States... signatory to the Convention of Paris on Protection
voluntarily cancel its trademark registration.
of Industrial Property and the Agreement on Trade Related Aspects of
Intellectual Property Rights respondents refused to accede to petitioner' demand, but expressed
willingness to surrender the registration of respondent Sehwani, Incorporated
Petitioner is engaged mainly in the restaurant business, but it has never
of the "IN N OUT" trademark for a fair and reasonable consideration.
engaged in business in the Philippines.
Respondents asserted therein that they had been using the mark "IN N OUT"
Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the
in the Philippines since 15 October 1982.
Philippines.
respondent Sehwani,... Incorporated filed with BPTTT... application for the
petitioner filed trademark and service mark applications with the Bureau of
registration of the mark "IN N OUT
Trademarks (BOT) of the IPO for "IN-N-OUT" and "IN-N-OUT Burger &
Arrow Design." Upon approval of its application, a certificate of registration of... the said mark
was issued in the name of respondent Sehwani
Petitioner later found out, through the Official Action Papers issued by the
IPO Respondents asserted that respondent Sehwani, Incorporated, being the
registered owner of the mark "IN N OUT," should be accorded the
Sehwani, Incorporated had already obtained Trademark Registration for the
presumption of a valid registration of its mark with the exclusive right to use
mark "IN N OUT
the same.
Benita Frites, Inc. was able to use the... registered mark of respondent Sehwani,
IPO Director of Legal Affairs, Estrellita Beltran-Abelardo, rendered a
Incorporated.
Decision... in favor of petitioner.
Petitioner... filed... administrative complaint against respondents for unfair
The petitioner had the legal capacity to sue in the Philippines, since its...
competition and cancellation of trademark registration.
country of origin or domicile was a member of and a signatory to the
Petitioner averred in its complaint that it is the owner of the... trade name IN- Convention of Paris on Protection of Industrial Property.
N-OUT and the following trademarks: (1) "IN-N-OUT"; (2) "IN-N-OUT Burger
& Arrow Design"; and (3) "IN-N-OUT Burger Logo."
And although petitioner had never done business in the Philippines, it was Court disagrees with the Court of Appeals.
widely known in this country through the use herein of products bearing its...
Section 10 of the Intellectual Property Code specifically identifies the functions
corporate and trade name.
of the Bureau of Legal Affairs
petitioner had the right to use its tradename and mark "IN-N-OUT" in the
Exercise original jurisdiction in administrative complaints for violations of
Philippines to the exclusion of others, including the respondents. However, laws involving intellectual property rights; Provided, That its jurisdiction is
respondents used the mark "IN N OUT" in good faith and were not guilty of limited to complaints where the total damages claimed are not less than Two
unfair competition, since respondent Sehwani, Incorporated did not evince hundred thousand pesos
any intent to ride upon petitioner's goodwill by... copying the mark "IN-N-
The cancellation of any permit, license, authority, or registration which may
OUT Burger" exactly.
have been granted by the Office... assessment of damages;... petitioner's
Upon the denial of its Partial Motion for Reconsideration of the Decision dated complaint, which seeks the cancellation of the disputed mark in the name of
22 December 2003 of the IPO Director for Legal Affairs, petitioner was able to respondent Sehwani, Incorporated, and damages for violation of petitioner's
file a timely appeal before the IPO Director General intellectual property rights, falls within the jurisdiction of the IPO Director of
Legal
IPO Director General Adrian Cristobal, Jr. found petitioner's appeal
meritorious and modified the Decision Affairs.

Intellectual Property Code also expressly recognizes the appellate jurisdiction

of the IPO Director General over the decisions of the IPO Director of Legal
Issues:
Affairs
The Jurisdiction of the IPO
The Court of Appeals erroneously reasoned that Section 10(a) of the
Intellectual Property Code, conferring upon the BLA-IPO jurisdiction over
administrative complaints for violations of intellectual property rights, is a
Ruling:
general provision, over which the specific provision of
Court of Appeals adjudged that the IPO Director for Legal Affairs and the IPO
Section 163 of the same Code
Director General... had no jurisdiction over the administrative proceedings
below to rule on issue of unfair competition... because Section 163 of the Such interpretation is not supported by the provisions of the Intellectual
Intellectual Property Code confers jurisdiction over particular provisions in Property Code. While Section 163 thereof vests in civil courts jurisdiction over
the law on trademarks on regular courts exclusively. cases of unfair competition, nothing in the said section states that the regular
courts have sole jurisdiction over... unfair competition cases, to the exclusion
of administrative bodies.
Any foreign national or juridical person who meets the requirements of Section
3 of this Act and does not engage in business in the Philippines may bring a
civil... or administrative action hereunder for opposition, cancellation,
infringement, unfair competition, or false designation of origin and false
description, whether or not it is licensed to do business in the Philippines
under existing laws.

IPO Director of Legal Affairs had jurisdiction to decide the petitioner's

administrative case against respondents and the IPO Director General had
exclusive jurisdiction over the appeal of the judgment of the IPO Director of
Legal

Affairs.
VARGAS vs. CHUA, seeks for the simple reason that his plow, Exhibit F, does not constitute an
G.R. No. L-36650, January 27, 1933 invention in the legal sense, and because, according to the evidence, the same
type of plows had been manufactured in this country and had been in
use in many parts of the Philippine Archipelago, especially in the
Facts: Province of Iloilo, long before he obtained his last patent.

The plaintiff, Angel Vargas, initiated this legal action to enjoin the appellants, ANGELITA MANZANO vs. CA
along with another defendant entity named Cham Sanco and Sons, their G.R. No. 113388, September 5, 1997
agents, and representatives, from continuing the production and sale of plows
that closely resemble his patented plow as described in his patent No. 1,507,530
granted by the United States Patent Office on September 2, 1924. The plaintiff Facts:
seeks to compel all of the mentioned defendants to provide an account of the
profits earned through the sale of these plows from September 2, 1924. Petitioner Angelita Manzano initiated legal proceedings with the Philippine
Furthermore, the plaintiff is seeking damages, which are to be double the Patent Office to cancel Letters Patent for a gas burner that were registered in
amount of the aforementioned profits. the name of respondent Melecia Madolaria, who later transferred the patent to
New United Foundry and Manufacturing Corporation (referred to as UNITED
FOUNDRY).
Issue:
Petitioner's allegations included the claims that (a) the gas burner covered by
Whether or not the plow constitutes a real invention or an improvement for the patent lacked inventiveness, novelty, and usefulness; (b) the patent's
which a patent may be obtained? specifications didn't comply with the requirements of Sec. 14, RA No. 165, as
amended; (c) Melecia Madolaria wasn't the true inventor and didn't derive
rights from the actual inventor of the gas burner; and (d) the patent was
Ruling: obtained through fraudulent means.

No. The Court arrived at the conclusion that not only is there no fundamental During the proceedings, petitioner presented various documents as exhibits,
difference between the two plows but no improvement whatever has been including an affidavit discussing prior art, brochures from Manila Gas
made on the latest model, for the same working and movement of the beam Corporation and Esso Gasul depicting similar burners, and models of gas
existed in the original model with the advantage, perhaps, that its graduation burners allegedly connected to the case.
could be carried through with more certainty by the use of the bolt which as
has already been stated, was adjustable and movable. In view of the foregoing,
we are firmly convinced that the appellee is not entitled to the protection he
Testifying for herself, petitioner explained that her husband worked at creates a presumption which yields only to clear and cogent evidence that the
UNITED FOUNDRY where respondent Melecia Madolaria had been affiliated. patentee was the original and first inventor. The burden of proving want of
She claimed that her husband helped cast an LPG burner identical to the one novelty is on him who avers it and the burden is a heavy one which is met only
covered by the patent and that she later formed BESCO METAL, which by clear and satisfactory proof which overcomes every reasonable doubt.
produced similar burners.
As found by the Director of Patents, the standard of evidence sufficient to
Petitioner also provided witnesses, including her husband and another overcome the presumption of legality of the issuance of letters patent to
individual, who testified about their experiences and knowledge related to the respondent Madolaria was not legally met by petitioner in her action for the
gas burners in question. cancellation of the patent. The findings and conclusions of the Director of
Patent were reiterated and affirmed by the Court of Appeals. The rule is settled
In response, respondent presented Rolando Madolaria as a witness, who that the findings of fact of the Director of Patents, especially when affirmed by
testified about his role at UNITED FOUNDRY. the Court of Appeals, are conclusive on this Court when supported by
substantial evidence.
The Director of Patents denied the cancellation petition, stating that
petitioner's evidence didn't convincingly prove that respondent's patented The validity of the patent issued by the PPO in favor of private respondent and
utility model was anticipated. This decision was upheld by the Court of the question over the inventiveness, novelty and usefulness of the improved
Appeals. model of the LPG burner are matters which are better determined by the PPO.
The technical staff of the Philippine Patent Office composed of experts in their
Now, the petitioner seeks a review of this decision through a petition for field has by the issuance of the patent in question accepted private respondents
review on certiorari. model of gas burner as a discovery. There is a presumption that the Office has
correctly determined the patentability of the model and such action must not
be interfered with in the absence of competent evidence to the contrary.
Issue:

Whether of not CA erred in upholding the decision of the Director of Patents.

Ruling

NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the
PPO found her invention novel and patentable. The issuance of such patent
DOMINCIANO A. AGUAS vs. CONRADO G. DE LEON
G.R. No. L-32160, January 30, 1982 Issue:

Whether or not the alleged invention or discovery of respondent is patentable.

Facts:

This is a petition for certiorari seeking to review a decision made by the Court Ruling:
of Appeals.
Yes. It should be noted that the private respondent does not claim to be the
On April 14, 1962, respondent Conrado de Leon initiated legal proceedings in discoverer or inventor of the old process of tile-making. He only claims to have
the Court of First Instance (CFI) of Rizal at Quezon City by filing a complaint introduced an improvement of said process. In fact, Letters Patent No. 658 was
against petitioner Domiciano Aguas and F.H. Aquino and Sons. The complaint issued by the Philippine Patent Office to the private respondent Conrado G.
alleged infringement of a patent, claiming that De Leon was the original first De Leon, to protect his rights as the inventor of “ an alleged new and useful
and sole inventor of certain improvements in the process of creating mosaic improvement in the process of making pre-cast tiles.” Indeed, section 7,
pre-cast tiles. De Leon had lawfully acquired Patent No. 658 from the Republic Act No. 165, as amended provides: “ Any invention of a new and
Philippine Patent Office, and he argued that the defendants, Aguas and F.H. useful machine, manufactured product or substance, process, or an
Aquino and Sons, violated his patent rights by producing and selling tiles that improvement of the foregoing, shall be patentable.”
utilized the patented invention. As a result of the complaint, a writ of
Preliminary Injunction was issued against the defendants. ROMA DRUG & ROMEO RODRIGUEZ vs. REGIONAL TRIAL COURT
G.R. No. 149907, April 16, 2009
In response, petitioner Aguas, through his answer, refuted the allegations. He
denied that De Leon was the original first or sole inventor of the improvements
in the process of making mosaic pre-cast tiles. Aguas contended that this Facts:
process had already been used by numerous tile-making factories both
domestically and internationally before De Leon's alleged invention. As a On August 14, 2000, a team comprised of operatives from the National Bureau
result, he argued that the improvements were not eligible for patent protection. of Investigation (NBI) and inspectors from the Bureau of Food and Drugs
(BFAD) conducted a raid on the premises of petitioner Roma Drug, which is a
The trial court and the Court of Appeals, upon appeal rendered judgment in legally registered sole proprietorship owned by petitioner Romeo Rodriguez.
favor of respondent de Leon. Thus, this petition. The drug store was situated in San Matias, Guagua, Pampanga. This raid was
part of a coordinated effort involving the simultaneous inspection of six drug
stores, all prompted by a request from SmithKline Beecham Research Limited
(SmithKline), a duly registered corporation responsible for distributing
pharmaceutical products manufactured by its parent corporation based in
London. Issue:

Following the raid, the NBI filed a complaint against Rodriguez. The complaint Whether Section 7 of Republic Act No. 9502 amended Section 72 of the
alleged that Rodriguez had violated Section 4 of Republic Act No. 8203, which Intellectual Property Code.
is commonly referred to as the Special Law on Counterfeit Drugs (SLCD). This
violation was cited in relation to Sections 3 and 5 of the same law. The
complaint was lodged with the Office of the Provincial Prosecutor in San Ruling:
Fernando, Pampanga.
The Supreme Court ruled in the affirmative. Section 7 of Rep. Act No. 9502
In the course of the preliminary investigation, Rodriguez raised the issue of amended Section 72 of the Intellectual Property Code in that the later law
the constitutionality of the Special Law on Counterfeit Drugs (SLCD). unequivocally grants third persons the right to import drugs or medicines
However, Assistant Provincial Prosecutor Celerina C. Pineda did not address whose patents were registered in the Philippines by the owner of the product.
this constitutional challenge and instead issued a Resolution on August 17, The unqualified right of private third parties such as petitioner to import or
2001, recommending that Rodriguez be charged with violating Section 4(a) of possess “unregistered imported drugs” in the Philippines is further confirmed
the SLCD. by the “Implementing Rules to Republic Act No. 9502” promulgated on 4
November 2008.
This recommendation was subsequently approved by Provincial Prosecutor
Jesus Y. Manarang. In response to this, Rodriguez filed a Petition for
Prohibition, seeking to prevent the Regional Trial Court (RTC) in Guagua,
Pampanga, and the Provincial Prosecutor from continuing to prosecute him.
The petition also sought a declaration of the unconstitutionality of Sections
3(b)(3), 4, and 5 of the SLCD.

The Court, through a Resolution dated October 15, 2001, issued a temporary
restraining order that prohibited the RTC from proceeding with the trial
against Rodriguez. This order also barred the Bureau of Food and Drugs
(BFAD), the National Bureau of Investigation (NBI), and Glaxo Smithkline (the
local distributor of the pharmaceutical products involved) from prosecuting
the petitioners.
GRESER PRECISION SYSTEMS vs. CA, The grounds for the petition include arguments related to the trial court's
G.R. No. 118708, February 2, 1998 findings and the constitutionality of certain provisions. The petitioner
contends that the Court of Appeals erred in reversing the trial court's decision,
and it seeks a reconsideration of the dismissal of its complaint.
Facts:

This petition for review on certiorari challenges the decision of the Court of Issue:
Appeals. The decision was authored by Justice Gloria C. Paras and was
concurred in by Justice Salome A. Montoya and Justice Hector L. Hofileña. Whether Petitioner can file an action for infringement not as a patentee but as
an entity in possession of a right, title or interest in and to the patented
The private respondent in this case is a domestic corporation engaged in the invention?
manufacture, production, distribution, and sale of military armaments,
munitions, airmunitions, and similar materials. On January 23, 1990, the
private respondent was granted a Letters Patent No. UM-6938 by the Bureau Ruling:
of Patents, Trademarks and Technology Transfer (BPTTT) for an aerial fuze.
NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly
In November 1993, the private respondent discovered that the petitioner had provides:
submitted samples of its patented aerial fuze to the Armed Forces of the Sec. 42. Civil action for infringement. — Any patentee, or anyone possessing
Philippines (AFP) for testing. The private respondent sent a letter to the any right, title or interest in and to the patented invention, whose rights have
petitioner warning them of possible legal action if they proceeded with the been infringed, may bring a civil action before the proper Court of First
testing. In response, the petitioner filed a complaint for injunction and Instance (now Regional Trial court), to recover from the infringer damages
damages against the private respondent, alleging that they were the true sustained by reason of the infringement and to secure an injunction for the
inventor of the aerial fuze and that the private respondent's fuze was identical protection of his right.
to theirs.
There can be no infringement of a patent until a patent has been issued, since
The trial court issued a temporary restraining order and later a writ of whatever right one has to the invention covered by the patent arises alone
preliminary injunction against the private respondent. However, the Court of from the grant of patent. In short, a person or entity who has not been granted
Appeals reversed the trial court's decision and dismissed the petitioner's letters patent over an invention and has not acquired any light or title thereto
complaint. The petitioner filed this present petition seeking a review of the either as assignee or as licensee, has no cause of action for infringement
Court of Appeals' decision. because the right to maintain an infringement suit depends on the existence of
the patent.
Petitioner admits it has no patent over its aerial fuze. Therefore, it has no legal
basis or cause of action to institute the petition for injunction and damages
arising from the alleged infringement by private respondent. While petitioner
claims to be the first inventor of the aerial fuze, still it has no right of property
over the same upon which it can maintain a suit unless it obtains a patent
therefor.
MAGUAN vs. COURT OF APPEALS, 146 SCRA 107, Issue:
G.R. No. L-45101, November 28, 1986
Whether or not Maguan has a right to file an action before the CFI for
injunction due to infringement of her patent?
Facts:

In this case, Maguan is conducting business under the name "SWAN Ruling:
MANUFACTURING," while Luchan is engaged in business under the name
"SUSANA LUCHAN POWDERPUFF MANUFACTURING." Maguan Yes. When a patent is sought to be enforced, the questions of invention, novelty
informed Luchan that the powder puffs Luchan is producing and selling are or prior use, and each of them, are open to judicial examination. Under the
similar to or identical to the powder puffs for which Maguan holds patents. present Patent Law, there is even less reason to doubt that the trial court has
Maguan asserted that Luchan's actions constituted patent infringement and jurisdiction to declare the patents in question invalid.
demanded that Luchan cease production and sales.
A patentee shall have the exclusive right to make, use and sell the patented
Luchan responded by claiming that her products were different and article or product and the making, using, or selling by any person without the
contended that Maguan's patents were invalid. Luchan argued that the utility authorization of the patentee constitutes infringement of the patent (Sec. 37,
models for which Maguan obtained patents were not new or patentable. RA 165). Any patentee whose rights have been infringed upon may bring an
Luchan further alleged that the patents were issued to someone who was not action before the proper CFI now (RTC) and to secure an injunction for the
the true and actual inventor, and she challenged the legitimacy of the rights protection of his rights.
derived from such inventor.
The burden of proof to substantiate a charge of infringement is with the
In response to the dispute, Maguan filed a complaint for damages along with Maguan. But where she introduces the patent in evidence, and the same is due
a request for an injunction and preliminary injunction against Luchan in the form, there is created a prima facie presumption of its correctness and validity.
Court of First Instance (CFI) of Rizal. The trial court granted the preliminary The decision of the Commissioner (now Director) of Patent in granting the
injunction that Maguan requested, and a subsequent writ was issued in line patent is presumed to be correct. The burden of going forward with the
with this order. The injunction aimed to restrain Luchan from continuing the evidence (burden of evidence) then shifts to the defendants to overcome by
activities that Maguan alleged constituted patent infringement, until the competent evidence this legal presumption.
matter could be fully resolved in a court proceeding
GODINES vs. CA, Industries' claim of patent infringement and upheld Godines' liability for such
G.R. No. 97343, September 13, 1993 infringement.

Facts: Issue:

In this case, respondent SV-Agro Industries obtained a letter patent for a utility Whether or not petitioner’s products infringe upon the patent of respondent
model related to a hand tractor or power tiller. The patent was originally SV-Agro.
issued to Magdalena Villaruz. SV-Agro Industries acquired the patent through
a deed of assignment from Magdalena Villaruz. However, SV-Agro Industries
experienced a decline in sales of the patented power tillers and subsequently Ruling:
conducted an investigation.
Yes. Tests have been established to determine infringement. These are (a)
During the investigation, SV-Agro Industries discovered that petitioner literal infringement; and (b) the doctrine of equivalents. In using literal
Godines was manufacturing power tillers that were identical or similar to the infringement as a test, “. . . resort must be had, in the first instance, to the words
patented ones they held. As a result, SV-Agro Industries filed a legal complaint of the claim. If accused matter clearly falls within the claim, infringement is
against petitioner Godines, alleging patent infringement and unfair made out and that is the end of it.” To determine whether the particular item
competition. falls within the literal meaning of the patent claims, the court must juxtapose
the claims of the patent and the accused product within the overall context of
After trial proceedings, the trial court found petitioner Godines liable for the claims and specifications, to determine whether there is exact identity of
patent infringement, indicating that the manufacturing of the power tillers by all material elements. It appears from the observation of the trial court that
petitioner was an infringement of the patent held by SV-Agro Industries. The these claims of the patent and the features of the patented utility model were
trial court held Godines responsible for violating the rights associated with the copied by petitioner: In appearance and form, both the floating power tillers
patented invention. The Court of Appeals upheld the trial court's decision on of the defendant and the turtle power tiller of the plaintiff are virtually the
appeal, affirming Godines' liability for patent infringement. same. Viewed from any perspective or angle, the power tiller of the defendant
is identical and similar to that of the turtle power tiller of plaintiff in form,
In this context, SV-Agro Industries, as the holder of the patent, had the configuration, design and appearance. The parts or components thereof are
exclusive right to produce, use, and sell the patented invention. The court virtually the same. In operation, the floating power tiller of the defendant
determined that Godines' manufacturing and selling of similar power tillers operates also in similar manner as the turtle power tiller of plaintiff.
constituted an infringement on SV-Agro Industries' patent rights. The decision
of both the trial court and the Court of Appeals thus affirmed SV-Agro
Petitioner’s argument that his power tillers were different from private
respondent’s is that of a drowning man clutching at straws. Recognizing that
the logical fallback position of one in the place of defendant is to aver that his
product is different from the patented one, courts have adopted the doctrine
of equivalents. Thus, according to this doctrine, “(a)n infringement also occurs
when a device appropriates a prior invention by incorporating its innovative
concept and, albeit with some modification and change, performs substantially
the same function in substantially the same way to achieve substantially the
same result.” In this case, the trial court observed: But a careful examination
between the two power tillers will show that they will operate on the same
fundamental principles.
SMITH KLINE BECKMAN CORP. Vs. CA, findings. The Court of Appeals agreed with the trial court that petitioner failed
G.R. No. 126627, August 14, 2003 to establish that Albendazole was the same as the compound in the patent.
Additionally, the Court of Appeals concurred that private respondent did not
engage in unfair competition by advertising and selling Impregon.
Facts:
In summary, the trial court and the Court of Appeals both ruled against
In this case, Smith Kline Beckman Corporation (petitioner), a U.S. corporation petitioner's claims of patent infringement and unfair competition, citing lack
licensed to do business in the Philippines, filed an application for a patent with of evidence to establish the alleged violations.
the Philippine Patent Office for an invention titled "Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl
Propylthio-2-Benzimidazole Carbamate." The patent, with Serial No. 18989, Issue:
was granted on September 24, 1981, as Letters Patent No. 145611.
Whether Petitioner is correct when it argued that under the doctrine of
Petitioner initiated a lawsuit against the private respondent, alleging patent equivalents for determining patent infringement, Albendazole, the active
infringement and unfair competition. Petitioner claimed that its patent ingredient it alleges was appropriated by private respondent for its drug
included a substance known as Albendazole, and that private respondent, by Impregon, is substantially the same as methyl 5 propylthio-2- benzimidazole
manufacturing, selling, and using the drug Impregon without authorization, carbamate covered by its patent.
infringed upon certain claims of Letters Patent No. 145614. Petitioner also
asserted that private respondent engaged in unfair competition by advertising
and selling the drug Impregon as its own, even though it contained petitioner's Ruling:
patented Albendazole.
The Supreme Court ruled in the negative. The doctrine of equivalents provides
The trial court, after considering the evidence presented, issued a decision on that an infringement also takes place when a device appropriates a prior
July 23, 1991, dismissing petitioner's complaint. The trial court concluded that invention by incorporating its innovative concept and, although with some
private respondent was not liable for patent infringement due to petitioner's modification and change, performs substantially the same function in
failure to demonstrate that Albendazole was the same as the compound substantially the same way to achieve substantially the same result. Yet again,
covered by the patent. The court also found that private respondent did not a scrutiny of petitioner’s evidence fails to convince this Court of the substantial
deceive the public by misrepresenting Impregon as its product. sameness of petitioner’s patented compound and Albendazole.

Petitioner appealed the trial court's decision to the Court of Appeals. On April While both compounds have the effect of neutralizing parasites in animals,
21, 1995, the Court of Appeals issued a decision upholding the trial court's identity of result does not amount to infringement of patent unless
Albendazole operates in substantially the same way or by substantially the
same means as the patented compound, even though it performs the same
function and achieves the same result. In other words, the principle or mode
of operation must be the same or substantially the same. The doctrine of
equivalents thus requires satisfaction of the function-means-and-result test,
the patentee having the burden to show that all three components of such
equivalency test are met.